Willis Electric Co., Ltd. v. Polygroup Limited

Background

Willis Electric sued Polygroup Limited (Macao Commercial Offshore), Polygroup Macau Limited (BVI), Polytree (H.K.) Co. Ltd., and Polygroup Trading Limited under 35 U.S.C. § 271 et seq., alleging infringement of four patents related to artificial trees. Polygroup denies infringement and argues that the patents are invalid. The order addresses the parties’ motions in limine, which are pretrial motions seeking to exclude or limit evidence and arguments.

Willis Electric’s Motions

1. Evidence about unasserted claims and withdrawn matters. The court granted in part and denied in part Willis Electric’s motion. Polygroup may refer to the existence and invalid status of the eight underlying independent claims because the remaining asserted dependent claims incorporate their limitations and the independent claims’ status may be relevant to obviousness. The parties may not discuss the details of the inter partes review proceedings involving those claims, including proceeding-specific burdens or standards. They must also explain that the claims were invalidated after this lawsuit was filed.

2. Advice of counsel and Polygroup’s beliefs. The court denied the motion. Polygroup stated that it would not rely on advice of counsel at trial. The court nevertheless allowed evidence and testimony about Polygroup’s subjective beliefs and independent investigations concerning infringement and patent validity because that evidence bears on willful infringement and Polygroup’s state of mind. Willis Electric may renew specific objections at trial.

3. Late sales data. The court denied the motion. The challenged data concerned sales of unaccused products and was produced with Polygroup’s rebuttal expert report to respond to opinions from Willis Electric’s damages expert about whether redesigned products were acceptable non-infringing alternatives. The court found the production reasonably explained and substantially justified, and found that Willis Electric’s 18-month delay in objecting weakened its claim of prejudice. Polygroup may introduce the data concerning non-infringing alternatives.

4. Inequitable conduct and duty of candor. The court granted in part and denied in part the motion. Polygroup may not introduce evidence aimed solely at proving that Willis Electric or its representatives engaged in inequitable conduct or violated disclosure duties before the Patent Office. Polygroup may, however, use undisclosed prior-art references, including GKI Tree and Wesley Pine, to support obviousness or other invalidity defenses, without arguing that the references show misconduct. The court reserved objections to particular credibility questions for trial.

5. Prior litigation history. The court granted the motion. Polygroup is precluded from presenting evidence or arguments about prior lawsuits between the parties, even if Willis Electric refers to intellectual-property issues. Polygroup may still object to specific testimony at trial.

Polygroup’s Motions

1. The Patent Trial and Appeal Board’s secondary-considerations analysis. The court denied the motion. Willis Electric may introduce evidence related to the Board’s analysis of secondary considerations of non-obviousness. The court reasoned that the findings had preclusive effect under issue-preclusion principles, at least sufficient to prevent wholesale exclusion of the evidence. The order does not state that the jury itself will decide whether issue preclusion applies.

2. Evidence about inter partes review proceedings. The court denied the motion. The court found meaningful overlap between the prior art considered in the inter partes reviews and the prior art Polygroup relies on for its invalidity defense at trial. The proceedings were also relevant to willful-infringement allegations because Polygroup continued sales after final written decisions rejecting its invalidity grounds. The court will give the jury a limiting instruction explaining the different burdens of proof and the differences between the prior art asserted in the proceedings and at trial.

3. John Fonder’s testimony. The court denied the motion as premature. Fonder may testify about factual matters concerning the patents-in-suit that are within his personal knowledge. The court rejected Polygroup’s broad request to exclude undefined “legal opinion” testimony because Polygroup had not identified particular objectionable testimony. Specific objections may be made at trial.

4. Hal Poret’s survey and online comments. Because Willis Electric represented that Poret would not testify live due to serious health issues, the court excluded analysis of his potential live testimony from its pretrial rulings. The court allowed references to Poret’s survey because experts relied on it in forming their opinions and it could be used to cross-examine experts. The court denied the request to exclude anonymous consumer comments in exhibits P683 and P693 as premature, deferring the ultimate admissibility decision until trial.

5. Late-disclosed materials. The court granted the motion as to the inter partes review deposition transcripts of Ada Luk and Beverly Rodgers, live testimony from Ada Luk, and the license agreement between Willis Electric and Botanex known as the Luk Agreement. The court found that the delayed disclosure of the transcripts affected Polygroup’s ability to prepare, that Willis Electric had not shown a sufficient justification or harmlessness for failing to disclose Luk as a trial witness, and that Willis Electric had not adequately justified its delayed production of the agreement. The motion was otherwise denied.

Disposition

The court granted in part and denied in part Willis Electric’s first and fourth motions, denied Willis Electric’s second and third motions, and granted Willis Electric’s fifth motion. It denied Polygroup’s first, second, third, and fourth motions, with the fourth motion’s ruling on the online comments deferred until trial. It granted Polygroup’s fifth motion as to the specified transcripts, Luk’s live testimony, and the Luk Agreement, and otherwise denied that motion. This pretrial order did not decide the ultimate patent-infringement or patent-validity questions.