Willis Electric Co., Ltd. v. Polygroup Limited

Background

Willis Electric brought a patent-infringement case under 35 U.S.C. § 271 and related provisions, alleging that Polygroup Limited (Macao Commercial Offshore), Polygroup Macau Limited (BVI), Polytree (H.K.) Co. Ltd., and Polygroup Trading Limited infringed four patents concerning artificial trees. Polygroup denied infringement and argued that Willis Electric’s patents were invalid. The order addressed the parties’ motions in limine, which are requests to decide before trial whether particular evidence or arguments may be presented.

Willis Electric’s Motions

1. Unasserted claims, withdrawn patents, and withdrawn causes of action — granted in part and denied in part. The court allowed the parties to refer to the existence and invalid status of eight underlying independent claims because the still-asserted dependent claims incorporate their limitations and the status of the independent claims bears on obviousness and secondary considerations. The parties may not discuss the details of the inter partes review proceedings themselves, including their distinctive burdens of proof and standards. The parties should explain that the independent claims were invalidated after this lawsuit was filed and focus on how that status affects the dependent claims’ obviousness analysis.

2. Advice-of-counsel privilege and testimony about Polygroup’s beliefs — denied. Polygroup stated that it would not rely on advice-of-counsel evidence and that a privileged email was included in its exhibits inadvertently and replaced. The court allowed evidence and testimony about Polygroup’s subjective beliefs, state of mind, and independent investigation concerning infringement and patent validity because that evidence bears on willful infringement. Willis Electric may renew specific objections at trial.

3. Late sales data for unaccused products — denied. The court found that the discovery requests identified in the record sought financial information about accused products, not unaccused trees. It also found that the 2020 data did not exist before discovery closed, that Polygroup reasonably produced the data with a rebuttal expert report responding to Willis Electric’s damages expert, and that Willis Electric waited about 18 months before objecting. Polygroup may introduce the sales data concerning non-infringing alternatives.

4. Inequitable conduct and duty of candor — granted in part and denied in part. Polygroup may not introduce evidence aimed solely at proving inequitable conduct or misconduct before the Patent Office. It may, however, reference undisclosed prior art—including the GKI Tree and Wesley Pine references—for obviousness or other invalidity defenses, without accompanying allegations that Willis Electric failed to disclose the art. The court reserved objections to particular cross-examination questions about witness credibility and truthfulness for trial.

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

Polygroup’s Motions

1. Patent Trial and Appeal Board analysis of secondary considerations — denied. Willis Electric may introduce evidence related to the Board’s analysis of secondary considerations of non-obviousness. The order notes that Willis Electric would not ask the jury to apply issue preclusion directly but intended to preserve the issue for later motions and appeal.

2. Evidence about the inter partes review proceedings — denied. The court found meaningful overlap between the prior art considered in the inter partes reviews and Polygroup’s current invalidity arguments. It also found the proceedings relevant to willful-infringement allegations because Polygroup continued sales after final written decisions rejecting its invalidity grounds. The court will give a limiting instruction addressing the different burdens of proof and the different prior art asserted at trial.

3. Legal testimony by patent prosecutor John Fonder — denied as premature. Fonder may testify about factual matters within his personal knowledge concerning the patents. The court declined to broadly exclude unspecified testimony because Polygroup had not identified particular improper opinions or legal instructions. Specific objections may be made at trial.

4. Hal Poret’s opinions, survey, and online comments — denied, with the online-comments ruling deferred until trial. Because Willis Electric stated that Poret would not testify live due to serious health issues, the court excluded analysis of his potential live testimony from its pretrial decisions. It allowed references to his survey because experts relied on it and it may be used in cross-examination. The court denied categorical exclusion of anonymous consumer comments in exhibits P683 and P693, but deferred the ultimate admissibility decision until the comments are presented in context at trial.

5. Late-disclosed testimony, witnesses, and evidence — granted as to three items and otherwise denied. The court excluded Ada Luk’s inter partes review deposition transcript, Luk’s live testimony, and the license agreement between Willis Electric and Botanex because of disclosure and prejudice problems. It did not exclude Beverly Rodgers’s testimony because Willis Electric properly disclosed Rodgers as a potential witness. The amended order removed Rodgers from the list of excluded inter partes review deposition transcripts.

Disposition

The court’s order states that Plaintiff’s Motions Nos. 1 and 4 were GRANTED IN PART and DENIED IN PART; Plaintiff’s Motions Nos. 2 and 3 were DENIED; and Plaintiff’s Motion No. 5 was GRANTED. Defendants’ Motions Nos. 1, 2, 3, and 4 were DENIED, with the online-comments ruling deferred until trial for Motion No. 4. Defendants’ Motion No. 5 was GRANTED as to Luk’s inter partes review deposition transcript, Luk’s live testimony, and the Luk Agreement, and was otherwise denied. Judge Joan N. Ericksen signed the amended order.