Mass Engineered Design, Inc. et al v. Ergotron, Inc. et alMOTION in Limine Plaintiffs' Motions in LimineE.D. Tex.October 20, 2008IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MASS ENGINEERED DESIGN, INC. And JERRY MOSCOVITCH Plaintiffs, Counter-defendants, Cross-claima¡ts vs. ERGOTRON, INC., DELL INC., DELL MARKETING L.P., and TECH DATA CORPORATION Defendants, Counterclaimants, and CDW CORPORATION, Counterclaimant and Third-Paty Plaintiff and A.B, DISTRIBUTING, INC., D&H DISTRIBUTING COMPANY, EIZO NANO TECHNOLOGIES INC., INGRAM MICRO INC., INTERNATIONAL AUDIO VISUAL INC., S\I\INEX CORPORATION, TECH DATA CORPORATION, CSAV, INC., GLOBAL MARKETING PARTNERS, INC., SEA LAND, INC., PEERLESS INDUSTRIES, INC., DOUBLESIGHT DISPLAYS, LLC, AND BRETFORD MANUFACTURING, INC. JUDGE: LED Civil Action No. 02-06CV -272 JURY TRIAL DEMANDED Third-Partv Defendants. PLAINTIF'F'S' MOTIONS IN ¿IMINE Plaintiffs Mass Engineered Design, Inc., and Jerry Moscovitch (collectively, Mass), move in limine for lhe following relief. Mass requests that the named defendants, and their respective attomeys and witnesses be instructed not to mention or aver to, in the presence of the jury, either directly or indirectly, upon Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 1 of 33 PageID #: 19102 voir dire, statement of the case, interrogation of the witnesses, argument, objections before the jury, or in any other means or manner inform the jury, or bring to the jury's attention any of the matters set forth below, unless and until such matters have been first called to the Couf's attention, out of the presence of the jury, and a favorable ruling received as to the admissibility of those matters. Mass further requests that Defendants' attomeys be specifically instructed to inform all of its witnesses not to volunteer, inject, disclose, state or mention in the presence ofthe jury any of the matters enumerated beiow, unless specifically questioned thereon and after prior ruling by the Court. Mass maintains that the following matters are generally inadmissible, irreleva¡t, and prejudicial to its right to a fair and impanial trial. The violations of any, or all, of these instructions will constitute harm to Mass, deprive Mass of a fair and impartial trial, and Mass requests that the Court instruct all counsel that the failure to abide by such Order of the Court may constitute contempt, conceming the following: ***** 1. Reference to Motions In liz¿iz¿: Any reference or testimony to the fact that Mass filed the instant motions in limine, in particular or in general, or that the Court granted or denied any such relief. FRE 401-403. GRANTED: DENIED: 2. Reference to Motions or Prior Rulings Bv This Court: Unless specifically authorized, any reference or testimony to the fact or contents of any motion or brief Mass filed or opposed with thìs court in this case, or ruling by this court on any such motion, including but not limited to ary discovery motion, sanctions motion, or dispositive motion. FRE 401-403. Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 2 of 33 PageID #: 19103 GRANTED: DENIED: 3. Requests for Stipulation and Documents: Any requests by counsel for Defendants for any stipulations from counsel for Mass, or any request that Mass's counsel produce any documents from their files. Making such requests in the presence of the jury or jury panel is improper. FRE 401-403. GRANTED: DENIED: 4. Reference to I)ocument Production or Missing Documents: Unless specifrcally authorized otherwise by this Court, any reference to any failure to produce documents or missing documents by or from any pafty. S¿e Fed. R. Civ. P. 26(a), 37 (c)(2); FRX 40 1 -403. GRANTED: DENIED: 5. Reference to Claims of Privileee: Any reference or testimony to the fact that any party has made claims of privilege regarding documents and/or testimony, in particular or in general. Any such reference or evidence would be irrelevant, FRE 402, and/or more prejudicial than probative, FRE 403. See also FRE 501, 502. GRANTED: DENIED: 6. Reference to Privileged Subiect Matter: Any reference or testimony regarding subject matter that is privileged and has not been waived. In particular, counsel for Defendants may not ask questions that will or would reasonably be known to elicit testimony on privileged subject matter. Any such reference or evidence would be inelevalt, FRE 402, and/or more prejudicial than probative, FRE 403. See also FRE 501, 502. Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 3 of 33 PageID #: 19104 GRANTED: DENIED: '7 . Any Reference to Obiections Durine the Playins of Deposition Testimony: Both parties made objections to form to preselve their rights during deposition testimony. When such video or transcript is displayed to the jury, this Court should order all parties to remove all objections, comments, side bars, or responses to objections, to the extent practicable. This Court will rule on the objections in due course, and playing them in front of the jury is irrelevant and unduly prejudicial under Rules 401, 402, and 403. GRANTED: DENIED: 8. The Nature of Any Fact Witness's Preparation for Trial or for Deposition Testimonv with That Witness' Counsel: Details about a fact witness's preparation with his or her counsel either to testifr at trial or to prepare for deposition testimony is protected by the attomey-client and work product privileges. Neither pafy should be permitted to question witnesses about these matters in front of the jury because it will result in prejudicing the ¡ury. ,S¿¿ Rule 403. Accordingly, Plaintiffs request this Courl to prevent any party from asking any witness represented by counsel about the nature of his or her preparation ',/vith that counsel for trial or deposition testimony. FRE 401-403, 501-502. GRANTED: DENIED: 9. The Nature of Anv Expert Witness's Preparation for Trial with That Party's Counsel: All parties previousiy have agreed that communications in preparation for trial between an expert and the pafy and/or party's counsel who hired him or her would be privileged. Accordingly, Mass requests this Court to prevent either party from asking any expert Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 4 of 33 PageID #: 19105 about the nature ofhis or her preparation with counsel for trial or deposition testimony because it will result in prejudicing the jury. See FRE 401-403. GRANTED: DENIED: 10. Reference to Fee Aqreements: Any reference to Mass's counsel's fee agreement in this case, including the terms thereof e.g, hourly versus contingent, and including the fees that Mass's counsel would eam depending upon any outcome ofthis case. FRE 401-403. GRANTED: DENIED: 11. References to Law tr'irms or Lawvers Representinq Anv Parfy: Any reference to or testimony about the law firms or lawyers representing aîy parly including, without limitation, references to the size of the law firm, the geographic location of the law firm's off,rces, other matters handled by the law firm, other matters handled by the lawyer, other clients or types of clients represented by the law firm or lawyers, any disciplinary action or investigation into the law firm or lawyer representing any parfy, the wealth of any attomey or law f,rrm, is ineleva¡t and would be unduly prejudicial. Accordingly, any such references should be excluded under Rules 401, 402, and, 403. GRANTED: DENIED: 12. References to Courtroom Attendees: Any references, allegations or evidence regarding the presence in the courtroom of any persons other than: witnesses, counsel, corporate ¡epresentatives, and court personnel. FRE 401-403. GRANTED: DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 5 of 33 PageID #: 19106 13. References to Jury Consultants and/or Shadow Jurors: Any reference to any party's use, if any, ofjury consultants or jury study or focus groups to assist with trial preparation, jury selection, or trial. A party's use ofjury consultants is not relevant to any issue in this litigation and any reference to this fact should be prohibited under Rules 401,402, and 403. GRANTED: DENIED: 74. Connections to Texas: Any reference to Plaintiffs connection to Texas, or lack thereof, including but not limited to the amount or type of business conducted in Texas or the length of time Mass has had activities existed in Texas. Such information is irrelevant to any issue in this case a¡d is designed to cause unwarranted bias against Mass as well as mislead the jury, and is therefore inadmissible under FRE 401-403. GRANTED: DENIED: 15. References to Foreiqn Countries: Any disparaging references to the fact that Plaintiffs a¡e from Canada or any disparaging references about Canada. FRE 401-403" GRANTED: DENIED: 16. Testimony From Any Witness Not Timely Disclosed: Any testimony at all from witnesses not timely disclosed included in Defendants' witness lists as required by the schedule for this case. Defendants should not be permitted to surprise Mass with previously unidentif,red witnesses. FRCP 26; Local Rule 26; Docket No. 439. GRANTED: DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 6 of 33 PageID #: 19107 17. Testimony From Anv Witness Not disclosed in Defendants' Rule 26 disclosures. Defendants should not be þermitted to benefit from testimonv from anv individuals not identified as required by Fed. R. Civ. P. 26. GRANTED: DENIED: 18. Fact Witnesses As Experts: Testimony from a fact witness including but not limited to Scott Gill, Dan Schwab, Pete Segar, and Bob Fluhrer (none of whom has been disclosed as a¡ expert witness)-comparing a device to the claims in the pafent. Any such testimony would be improper expert testimony. FRE 701; see also FRE 403; FRCP 26; Local Rule 26; Docket No. 439. GRANTED: DENIED: 19. Surprise or Untimely Expert Opinions: Unless otherwise authorized, any expert opinion testimony not disclosed previously pursuant to the appropriate deadline(s), with the exception of any new evidence that is simply confirmatory. Docket No. 439; FRCP 26; Local Rule 26. GRANTED: DENIED: 20. Claims or Defenses Not Pleaded: Any testimony, statement, opinion or argument offered to suppofi an unpleaded claim or defense. It would be highly prejudicial to Mass to allow Defendants to "sandbag" Mass at trial with a claim or defense that was not pleaded within the timeline required bv this Court's Docket Control Order. Se¿ FRCP 8 & 15. GRANTED: DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 7 of 33 PageID #: 19108 21. Plaintiffs' Selection of Potential Defendants: Any reference to Plaintiffs' inclusion or exclusion of potential parties or Mass's choice of which Defendants to bring suit against in this case. Such information is ir¡elevant to any issue in this case and is likely to cause jury confusion of the issues, and is therefore inadmissible under FRE,401-403. GRANTED: DENIED: 22. Anv Reference to Any Prior Claims. Causes of Action. or Forms of Relief Asserted bv Plaintiffs In This Lawsuit That Have Been Dismissed or Abandoned. Any such patent claims or causes of action, by virtue of being dropped, are irrelevant to the case before the jury. Any reference to those claims or causes of action would be solely for improper purposes. FRE 401-403. GRANTED: DENIED: 23. Reference to whether an expert has been excluded in a prior case: Any reference to or testimony about whether any party's hired experts have had testimony challenged or excluded in any other case. Reviewing past opinion-testimony from any expert, including any determinations made by a judge or jury on that experl's past opinions, has no bearing on the merits ofthis case or ofany experl's opinions in this particular case. FRE 401-403;703. GRANTED: DENIED: 24. Reference to Anvthins Excluded bv D¿¿ó¿rl Motion or Motion to Strike: Any reference to or evidence about subject matter that this Court has otherwise excluded by granting a Daubert motion or a motion to strike. GRANTED: DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 8 of 33 PageID #: 19109 25. Statements Bv Counsel Reqarding Their Personal Beliefs or Opinions About the Case: The jury may not make findings by weighing the statements of counsel regarding counsel's evaluation of the case. Such statements would be improper, and more prejudicial than probative. FRE 401-403. GRANTED: DENIED: 26. Representations Contradictinq Cor¡rorate Representative Testimonv: Any evidence, testimony, opinion, or argument that contradicts in any way the 30(bX6) deposition testimony of a Defenda¡t witness. Such testimony is binding on the producing Defendant, and, as such, Defendants should be bound to the testimony oftheir corporate representafives. FRCP 30(bX6). GRANTED: DENIED: 27. References to the E.I). Tex. as Venue: Any reference to or evidence suggesting that the Eastem District of Texas is an improper or unusual venue in which to try this case. FRE 401- 403- GRANTED: DENIED: 28. Reference to Religious Preference: Any reference to or evidence about the religious preference ofany person, including any party or witness. FRE 401, 610. GRANTED: DENIED: 29. Reference to Equitable Issues: Any reference or testimony exclusively relevant to equitable issues-such as but not limited to, inequitable conduct, equitable estoppel, defective Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 9 of 33 PageID #: 19110 reissue, or laches-which are reserved for the Court and not the jrrry. Atry such reference or evidence would be irrelevant, FRE 402, and/or more prejudicial than probative, FRE 403. GRANTED: DENIED: 30. Criticisms of the Patent Office or Its Em¡rlovees: Any testimony, statement, opimon or argument suggesting that the PTO and its examiners lack c¡edentials, are overworked, or are not diligent or are prone to error. Such evidence is not relevant and contravenes the statutory presumption that an issued patent is valid and enforceable. 35 U.S.C. $ 282. See also EZ Dock, Inc. v. Schafer Systems, lnc.,2003 U.S. Dist. LEXIS 3634 (D. Minn. Ma¡ch 8,2003). GRANTED: DENIED: 31. Relative Importance of Claim Elements: Any evidence, testimony, argument, ot other reference to any testimony relating to the alleged relative importance of the claim elements of any of the claims of the patent-in-suit. The Court should not allow any statements ot testimony asserting that any particular claim element of any claim of the patent-in-suit such as means for adjusting is more important than any ofthe other claim elements. The claims define the invention as a whole. See, e.g., Ilarner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) ("Each element contained in a patent claim is deemed material to defining the scope of the patented invention...."); Radio Steel & Mfg. Co. v. MTD Products, Inc., 788 F.2d 1554, 1556 (Fed. Cir. 1986). Any such statements would be an incorrect assertion of law and would pose a significant danger of ireversible prejudice, confusion of the issues, and misleading the jury that could not be corrected by instruction from Courl. FRE 403. Accordingly, Mass requests that the Court preclude Defendants from offering or eliciting testimony that any particular claim element ofthe patent-in-suit is more important than any other claim elements 10 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 10 of 33 PageID #: 19111 GRANTED: DENIED: 32. Untimely or Improper Prior Art: Any reference to or evidence regarding any prior art that was not properiy disclosed in the Defendants' invalidity contentions, including but not limited to the prior art discussed by Dr. Stoil regarding a "person of ordinary skill." This includes any prior art not disclosed in accordance with 35 U.S.C. $ 282, not specifically charted as required by Local P.R. 3-3, and/or not timely disclosed pursuant to the relevant deadlines for this particular case. See also Plaintiffs' Motion to Strike Stoll, Docket No. 405. DENIED: 33. Reference to an Incorrect or Altered Obviousness Standard: Any evidence, testimony, or reference suggesting that the patent-in-suit issued under the wrong obviousness standard or that the obviousness standard has changed. Defendants should not be allowed to argue that the patents-in-suit were issued under the wrong obviousness standard. While KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007), rejected the rigid application of the "teaching/suggestion/motivation" test, that holding is irrelevant to any issue to be decided by the jury. Defendants should not be allowed to use this decision to improperly attack the PTO on the patent-in-suit or to argue or advise the jury that the obviousness standard has changed. The patent-in-suit is still presumed valid. 35 U.S.C. S 282; Fromson v. Advance Offset Plate, Inc., 7 55 F -2d 1549, 1555 (Fed. Cir. 1985) (holding that the presumption of validity is "static" and can neither be strengthened nor destroyed). It is solely within the Court's purwiew to instruct the jury on obviousness. It would therefore be improper for Defendants to instruct thejury otherwise. Fed. R. Civ. P.51; see Bales tt. Uptergrove, No. 00-7009, 2001 U.S. App. LEXIS 3101, at *5 (10th Cir. Mar. 1, 2001) ("It is GRANTED: 11 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 11 of 33 PageID #: 19112 the province of the district court to instruct the jury conceming the law applicable to a case, not that of the litigants' attomeys."); Bensen v. Am. Ultramar, No. 92 Civ. 4420, 1996 U.S. Dist. LEXIS 10647, *38-+42 (S.D.N.Y. July 26, 1996) (excluding documents containing the legal opinions of a foreign law firm because "the proffered legal opinions will invade the province of the court to determine the applicable law and to instruct the jury as to that law."). Any contradictory argument implying that the PTO used the wrong sta¡dard in untrue, unfairly prejudicial, and misleading to the jury. Allowing the parties to attack the PTO by suggesting that it may have applied the wrong obviousness standard would be unduly prejudicial and would certainly confuse the jury. FRE 401-403. GRANTED: DENIED: 34. Matters Related to the Mørkman Order: Any evidence, testimony, argument, or other references contrary to the Court's Marlçnan Order or the claim construction process involved in the same. Defendants should be precluded from offering testimony about or referring to the parties' arguments and positions relating to fhe Marlønan process or this Court's reasoning or thought processes underlying its claim constructions. Testimony or argument relating to these subjects is not relevant. FRE 401 & 402.'fhe prejudice, confusion, and waste of time associated with introducing to the jury evidence regarding the claim construction process (with the exception of the Courl's jury instructions that will include its claim constructions) substantially outweighs the probative value ofsuch evidence, ifany. Fed. R. Evid 403. For the same reason, Defendants should not be permitted to offer testimony regarding this Court not adopting any parlicular claim constructions proposed by Mass during the Markman process. The Courl's decision not to adopt any particular claim construction proposed by Mass should not be presented to the jury in an effort to suggest that the Court found against Mass.,See, 12 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 12 of 33 PageID #: 19113 e.9., Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) ("We hold that the constructions of a patent, including terms of art within its claim, is exclusively within the province of the court."); Eolas Techs., 270 F. Supp. 2d at 1008 (prohibiting expert from testifting on interpretations and issues of law as "assessments ofthe law are the province ofthis cour|"); Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 288 F. Supp. 2d 562, 584 (S.D.N.Y. 2003) ("Claim construction is a matter exclusively within the province of the court and is determination made as a matter of law."); Desert Aire Corp. v. AAON, Inc., 461 F. Supp.2d 369,313 (D. Md. 2006) ("The first step in infringement analysis, known as claim constructions, is a matter of law and the providence ofthe court."). GRANTED: DENIED: 35. Reference to Alleeed Misrepresentations to or withholdins from the PTO: Any reference to or evidence about alleged misleading ofor lying to the PTO or intending to deceive the PTO such as by withholding information. Such evidence is relevant to inequitable conduct, only, which is an equitable issue reserved for the Court and not the jury. FRE 401-403; see e.9., z4 Techs., Inc. v Microsoft Cory., No. 6:06-CY-142 (Hon. Leonard Davis), 2006 U.S. Dist. LEXIS 58374, at *60 (E.D. Tex. Aug. 18, 2006) (hereafter, "24") ("The Court reserved the issue of Colvin's inequitable conduct in obtaining the patents-in-suit for itself and heard evidence related to this issue outside the presence of the jury."). GRANTED: DENIED: 36. Reference to Patentee's Attorney Disclosures to the PTO: Any reference to or testimony about what prior art MASS's former iawyers (includìng but not limited to Mirek 13 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 13 of 33 PageID #: 19114 Waraksa or Mark Elchuk) would have disclosed to the PTO, as it ¡elates solely to inequitable conduct, and in any event is irrelevant even to that issue. FRE 401-403; z4 at*60. GRANTED: DENIED: 37. Infringer's Datent as a defense to infringement: Any argument that a patent is a general defense to infringement. Defendants should not be allowed to argue that owning their own patent precludes infringement ofthe '978 patent. The grant ofa patent is a right to exclude, not to right to make, use, or sell. Atlas Powder Co. v. E.L du Ponf De Nemours,750F.2d1569, 1580-81 (Fed.Cir.1984) ("The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and can¡ot be practiced unless by license thereunder."). Accordingly, Mass requests that the Couft preclude Defendants from arguing that their o\tr'n patents are a defense to infringement of the '978 patent. GRANTED: DENIED: 38. Anv Reference to a Claim's De{initeness: Any reference to or evidence about whether any of the patent-in-suit is indefinite. Dell moved for summary judgment on this issue and lost. Docket No. 156. To the extent that there are any issues still remaining, the parlies have agreed expressly that such issues should be decided by the Court-not the jury. GRANTED: 14 DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 14 of 33 PageID #: 19115 39. Any reference to or testimonv from the Waraksa deposition: Defendants violated Mass's privilege during the deposition of Mr. Waraksa, a former lawyer for Mass. Defendants' counsel even met surreptitiously with Mr. Waraksa prior to his deposition. Docket No. 528. The proper remedy for such a violation is to exclude any testimony from Mr. Waraksa, and references thereto. ,S¿¿ Plaintiffs' Motion to Compel the Waraksa Interview Notes, Docket No. 466; Plaintiffs' Response to Ergotron's Motion for Summary Judgment on invalidity and Inequitable Conduct, Docket No. 494. GRANTED: DENIED: 40. Waraksa or Elchuck Testimony: Any testimony from or references to the testimony of Messrs. Waraksa or Elchuk. Any such testimony would be relevant to allegations of inequitable conduct, only, or other equitable issues properly reserved for the Court and not the jury. ,See FRE 401-403; z4 at *60. GRANTED: DENIED: 41- Knowledee or Disclosures of Moscovitch to the PTO Regarding Pre-Cricitial-Sales Date Sales. Uses or Publications: Ail refe¡ences or testimony going to knowledge or disclosure to the PTO by Jeny Moscovitch (the named inventor of the patent-in-suìt) ofalleged pre-critical- date sales, uses, or publications conceming the alleged eBook, XGA, LO2, LOX, or any other alleged prior art. Such material is relevant to allegations of inequitable conduct, only, which is an equitable issue reserved for the Court and not the jury. See 401-403; z4 aI*60. GRANTED: DENIED: _tJ Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 15 of 33 PageID #: 19116 42. Reference to Alter Eqo or Piercinq the Corporate Veil: Any reference to or evidence about piercing the veil or alter ego regarding Mass Engineered Design, Inc., or any predecessor of the same. Defendant Dell neve¡ raised its "alter ego" theory until its Response to Mr. Moscovitch's Summary Judgment Motion of Non-Infringement during dispositive motion- practice on October 6, 2008. Docket No. 469. Dell furthermore never specifically never pleaded this defense or theory. For that reason alone, it should be stricken. Furthermore, the issue is an equitable one and thus is reserved for the Courl, not the jury. GRANTED: DENIED: 43. Reference to or Testimony by Susan Calzone. Ed Duffv. and Sean Roarty as to Alleged Invention bv Bloomberg Representatives. or Misnaminq of Inventors on the '978 patenf. or Bloombers's Allesed Ownership ofthe Patents: For the reasons stated in Plaintiffs' Motion for Pafial Summary Judgment That No Bloomberg, L.P., Employee Was a Co-Inventor, see Docket No. 400, ajury should not hear any evidence of any alleged invention by Bloomberg employees because Defendants have not provided sufficient collaboration as a matter of law. FF.n 402 t 403. GRANTED: DENIED: 44. Reference to Moscovitch infringement of the '170 patent: Any reference to or evidence about whether Plaintiff Jerry Moscovitch personally infringes the '170 patent-which belongs to Dell Marketing, L.P. (DMLP), as the¡e is no evidence on this point nor did DMLP include this in their infringement contentions. Local P.R. 3-3. See also Docket #402 (Moscovitch Motion for Summary Judgmenf of Non-Infringement on the 'i70 patent). GRANTED: l6 DENIED: Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 16 of 33 PageID #: 19117 45. Reference to Fraud by Moscovitch: Any reference to or testimony about any fraud (including tax evasion, fraud on investors, or other issue) allegedly committed by Jeny Moscovitch or MASS, as it is not relevant to any issue in the case and/or the prejudicial effect outweights the probative value. FRE 401 -403. GRANTED: DENIED: 46. Testimonv From or About Justin Nelson: Defendants placed the name of Justin Nelson on their witness list submitted in the Pretrial Order, presumably refening to Plaintiffs' litigation counsel in this case, the attomey Justin A. Nelson. This name not on the Defendants' Witness List or Rebuttal Witness List as required by this Court's Docket Control Order and therefore excludable for that reason alone. This name also $/as not on the Defendants' Rule 26 disclosures and therefore excludable for that reason alone. Moreover, assuming that Defendants intend to call a Plaintiffs' attomey, they have not stated their reason why and this testimony is ir¡elevant. Even assuming some relevance, it is excludable under Rule 403. See a/so FRE 501. GRANTED: DENIED: 47. The Prosecution File of Mr. Waraksa for U.S. Patent Application No. 638.158: Any testimony, statement, opinion, or other references to Mr. Waraksa patent prosecution file for U.S. Patent Application No. 638,158 (the "'158 Application"), which issued as U.S. Patent No. 5,687,939 (the "'939 Patent"). The prosecution file of the '939 Patent and its contents once maintained by Mr. Waraksa is not relevant to any issue in this case and are therefore irrelevant and inadmissible. The '939 patent issued in 1997. The present lawsuit was filed in 2006, nine years later. There is no requirement to preserve a patent prosecution file. The complete file 17 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 17 of 33 PageID #: 19118 history of the'939 Patent is maintained with the U.S. Patent & Trademark Office and constitutes a compiete history of the prosecution of the '939 Patent and is the official public record of the prosecutionofthe'939Patent.,S¿¿StandardOilCo.v.AmericanCyanimidCo.,Tl4F.2d44S, 452 (Fed. Cir. 1985) ("[T]he prosecution history (sometimes called 'fi1e wrapper and contents') of the patent consists of the entire record of proceedings in the Patent and Trademark Office."); 37 C.F.R. $ 1.11 (after a patent issues, the prosecution history (file wrapper) is open to public inspection). Even if any such matter may be of marginal relevance, its probative value is substantially outweighed by the danger of unfair prejudice to Mass, confusion ofthe issues, and misleading the jury, which would arise from Defendants' a"rgument or suggestion that something sinister was in the file or that the file has been destroyed for some improper purpose. As such they should be excluded pursuant to FRE 402, 403. Moreover, to fhe extent the issue goes to any issue - which it does not - it goes to inequitable conduct or other equitable issue, and such rssues are not properly before the jury in any event. GRANTED: DENIED: 48. Arqument or Susqestion That Bloombers. L.P. Pavinq for Desiqn Transferred Rights to the Invention to Bloombere. L.P.: Any testimony, statement, opinion, or other references implying or suggesting that Bloomberg paying MASS Engineered Design, Inc. or Jerry Moscovitch to design, manufacture, and/or supply a product transfers rights in the design or invention to Bloomberg, L.P. Such testimony, statements, opinions or references suggesting that Bloomberg, L.P. has any rights in U.S. Patent No. RE 36,9'78 or the design created by Mr. Moscovitch or Mass in providing product to Bloomberg, L.P. is not relevant to any issue in this case and are there for irrelevant an inadmissible. It is a bedrock tenet of patent law that "an invention presumptively belongs to its creator." Israel Bio-Engineering Project v. Amgen, Inc., 18 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 18 of 33 PageID #: 19119 415 F.3d 1256, 1263 (Fed. Cir. 2007). By contract, patent o\ 7ners may assign or transfe¡ their ownership interests in the patent as personal property. 35 U.S.C. $ 261. However, patent rights vest in the inventor unless there ìs a contract to the contrary. Mr. Moscovitch did not assign any patent or patent application rights to Bloomberg, L.P. Therefore, Bloomberg, L.P.'s paynents to Mr. Moscovitch to design, manufacture, and/or supply products to Bloomberg, L.P. did not transfer any rights in the designs or inventions of Mr. Moscovitch during or after his relationship with Bloomberg, L.P. This subject matter is outside the general knowledge ofjurors, such that arguments that Bloomberg, L.P. should own the '978 Patent or design created by Moscovitch or Mass has the danger of unfair prejudice to Mass, confusion of the issues, and misleading the jury. As such, arguments that Bloomberg, L.P. owns any rights in the '978 Patent or the designs or inventions created by Mr. Moscovitch or in products he provided to Bloomberg, L.P. should be excluded pursuant to FRE 402 and 403. GRANTED: DENIED: 49. CSAV's Own Patents As a Defense to Patent Infrinqement: Defendant CSAV's U.S. Patent Nos. 7 ,028,961 and,7 ,380,7 60 should be excluded from evidence enfirely because there is no evidence or expefi testimony to demonstrate their relevance to equivalence of any element of fhe '978 patent claims. For an alleged infringer's patent to be relevant to whether structure in fhe alleged infringer's accused device is a structural equivalent under $112, fl6, the alleged infringer must establish that (1) the allegedly equivalent structure is covered by the claims ofthe alleged infringer's patent and (2) the alleged equivalent structure was a patentable difference between the alleged infringer's claims and the patentee's claims in suit, 1.e., the accused structu¡e is the reason why the alleged infringer's claims were novel and non-obvious over the patentee's claims. Atlas PowderCo.v. E.L duPontDe Nemours &Co.,750F.2d1569,1580-81 (Fed. Cir. 19 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 19 of 33 PageID #: 19120 1984) ("where defendant has appropriated the material features of the patent in suit, infringement will be found 'even when those features have been supplemented and modified to such an extent that the defendant may be entitled to a patent for the improvement."') (quoting Bendix Corp. v. United States, 199 USPQ 203,221-22 (Ct.Cl. Trial Div. 1978), aff d, 600 F.2d 1364 (1979)). The '760 and'961 patents should be excluded because there is no admissible evidence that will establish that (1) the allegedly equivalent structure is covered by the claims of the alleged infringer's patents and (2) the alleged equivalent structure was a patentable difference bet\'r'een the alleged infringer's claims and the patentee's claims in suit. CSAV's technical expert, Mr. Bristow, did not opine on this issue. For example, who wiìl testify about the frle history of the CSAV patents, the reasons the CSAV claims were allowed, and that such reasons show that the USPTO considered those reasons as a basis for overcoming the 978 Patent? No one will. Even assuming lay testimony would be sufficient, CSAV's initial disclosures fail to identify any person who will testifl' on this issue. Thus, CSAV is left with attomey argument, which is inadmissible. FRE 401. a. The'760 patent should be excluded because there is no evidence to suggest that the claims were allowed based on substitution for, rather than improvements on, the mounting means recited in the '978 patent claims. Atlas Powder at 1580. A basic reading of the claims of the '760 patent clearly demonstrates that patentability lies with the friction adjustment mechanism, which is able to increase friction between the frusto-spherical pofion (half of a ball) and the first bearing portion (a cup) by tuming the retaining portion (a shaft). The importance of the friction adjustment mechanism to the'760 patent is further demonstrated by the title: Self-Balancing Adjustable Mounting System with Friction Adjustment. In light of the patentable differences being from addition, not substitution, the 20 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 20 of 33 PageID #: 19121 '760 paTen| should be excluded from evidence as not relevant to the issue of inlingement. b. The '961 patent should be excluded also because the '978 patent, nor any other patent obtained by Plaintiffs, is ofrecord in the prosecution ofthe '961 patent. To have separate patentability consìdered with respect to infringement, the asserted patent must have been cited and considered as prior art during the prosecution of the alieged infringer's paten|. Zygo Corp. v. Wyko Corp.,79 F.3¿, 1563, 1570 (Fed. Cir. 1996); see also Roton Barrier Inc. v. Stanley Works, 79 F.3d 1112, 1128 (Fed. Cir. 1996) (Nies, J., concurring). Lacking any consideration of the '978 patent during prosecution, the '961 patent should be excluded from evidence as being inelevant to infringement of the '978 patent claims. FRE 401 . GRANTED: DENIED: 50. Testimony of Brett Reed: Any testimony or argument regarding the effect of the '170 patent on the damages owed Mass for infringement ofthe'978 patent. Defendants should not be allowed to argue that the 'i70 patent can be used as leverage in reducing the damages owed Mass for infringement of the '978 patent. Such a scenario has no basis in law and violates the basic premise that reasonable royalties must compensate the patent owner for infringement of its paterfi. Mqxwell v. J. Baker, Inc., 86 F.3d 1098, 1 109 (Fed.Cir.1996) ("The objective of [a] reasonable royalty calculation is to determine the amount necessary to adequately compensate for an infringement."). Mr. Reed's testimony on the damages Mass should pay to Dell for alleged infringement of the Dell '170 patent already compensates Dell for its supposed value as a blocking patent. 2l Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 21 of 33 PageID #: 19122 Accordingly, lowering the damages owed Mass for Dell's infringement of Mass' '978 patent in hypothetical negotiations based on the '170 patent is impermissible as it does not "adequately compensate" Mass for the infringement of the 978 patent. Mr. Reed's testimony on the alleged effect of the '170 patent on the hypothetical licensing negotiations for the '978 patent improperly blends hypothetical negotiations that would have taken place years apart, based on different products, and on different patents and thus is improper. The Federal Circuit has recognized that t¡io separate acts of infringement of the same patent by two different products commencing on different dates each requires its own and separate reasonable royalty analysis. Applied Medical Resources Corp. v. U.S. Surgical Corp.,435 F.3d 1356, 1363-64 (Fed. Cir. 2006). This holding results in part from the principle that "a reasonable royalty determination for purposes of making a damages evaluation must relate to the time infiingement occurred." Applied Medical Resources Corp. v. U.S. Surgícal Corp.,435 F.3d 1356, 1361 (Fed. Cir. 2006) (citing Hanson v. Alpine Valley Ski Area, lnc.,718 F.2d 1075, 1079 (Fed.Cir.1983) ("The key element in setting a reasonable royalty . . . is the necessity for return to the date when the infringement began.") (citations omitted)) . If two different products infringing the same patent years aparl requires separate analysis, as held by the Federal Circuit, cerlainly the reasonable royalty for two separate products infringing two different patents must also be separately and distinctly evaluated. Applied Medical Resources Corp.,435 F.3d at 1363. it is further improper to use Dell's hypothetìcal threat of revoking a hypothetical license for the '170 patent, which already compensated Dell for the value of the '170 patent. Dell's hypothetical strong arm tactic of threatening to revoke a license for the 'i70 Patent is exactly the 'Jungle mentality" that is "intended to be replaced, not served, by the law." Fromson v. Ø/estern Litho Plate & Supply Co.,853 F.2d 1568, 1575 (Fed.Cir.1988). Deli's scenario of economrc coercion using the '170 patent is exactly the sort of abuse by large infringers against small 22 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 22 of 33 PageID #: 19123 patentees that Judge Clark did not believe was proper in the hypothetical reasonable royaity negotiation, even ifthat went on in the real world. Ariba, Inc. v. Emptoris, [nc.,567 F.Supp.2d 914,917, n.2 (E.D. Tex.2008). Accordingly, Defendants should be precluded from using Mr. Reed's testimony regarding any alleged effect ofthe '170 patent on the reasonable royalties due to Plaintiffs for infringement of the '978 patent. GRANTED: DENIED: 51 . E-Book is not prior art: Any argument or evidence that, in the "ready for patenting" analysis for determining something's status as possible "prior art," the E-Book worked for the intended purpose of an invention other than the purpose for the ebook -- Le. improperly comparing the functionality, completeness or readiness for patenting of the eBook to the alleged purpose of the invention defined in claims 16 and 17 ofthe '978 paTent. For the prior public use or sale ofa device more than a year before the hling date of a later claimed invention to constitute "prior art" under $ 102(b) and $ 103, the device must be ready for patenting at the time of the prior use or sale. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-67 (1998); Invitrogen Corp. v. Biocrest Mfg., L.P., 424F.3d1374, 1319 (Fed. Cir.2005). Something is ready for patenting if it was (a) reduced to practice before the critical date, or (b) prior to the critical date the inventor had prepared drawings or other descriptions ofthe invention that were sufficiently specific to enable a person skilled in the art to practice the invention. Pfqff,525 U.S. at 66-67 (1998). To demonsfate a reduction to practice, a party must prove that the inventor "determined that the invention would work for its intended purpose." Inre Omeprazole Patent Litigatíon,536 F.3d 1361, 1373 (Fed. Cir. 2008) (citations omitted). In particular, at the time of the prior use or sale, the inventor(s) must have determined thaÍ the device that wcts oubliclv used or sold would work for its intended 23 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 23 of 33 PageID #: 19124 purpose. Id. af 1373-'14 (holding that the formulation aileged to be publicly used prior to the critical date of the later-patented invention was qI reduced to practice because the evidence showed that at the time of the alleged publìc use, the inventors had not determined that the formulation would work for its intended purpose). Thus, for purposes of evaluating whether or not the E-Book was reduced to practice, the proper inquiry is whether the inventor of the E-Book, Mr. Moscovitch, had determined the E- Book would work for its intended purpose at the time of the alleged public use and/or sale. The legal test is not whether the E-Book worked for the intended purpose of a later claimed invention, i.e. the subj ect matter of claims 16 and 17 ofthe '978 patent. To allow argument that the E-Book was ready for patenting and thus was "prior art" by comparing it to the intended purpose of a later-claimed invention would be to apply the wrong legal test. As such, it would be irrelevant and highly prejudicial and must be excluded. FRE 401-403 GRANTED: DENIED: 52. Jerry Moscovitch's views on obviousness: Any evidence or testimony that the invention is obvious because the inventor himself came up with it quickly or that it was obvious to him should be excluded from trial. "The issue of obviousness is determined entirely with reference to a hypothetical 'person having ordinary skill in the art.'...The actual inventor's skill is irelevant to the inquiry." Standard Oil Co. v. American Cyanamid Co.,774 F.2d 448, 454 (Fed.Cir.i985) (emphasis in original). "[T]he path that leads an inventor to the invention is expressly made irrelevant to patentability by statute." Life Technologies, Inc. v. Clontech Laboratoríes, Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000); see also 35 U.S.C. $103(a) ("Patentability shall not be negated by the manner in which the invention was made."). Thus, any 24 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 24 of 33 PageID #: 19125 such testimony or evidence would be contr¿ry to law and irrelevant, and would be confusìng for the jury and unfairly prejudicial. FRE 401-403. GRANTED: DENIED: 53. Anv Arqument or Evidence that the Intended Purpose of the E-Book Was a Purpose Other Than That of the Inventor: This Court should exclude any argument or evidence about the intended purpose of the E-Book other than that of Jerry Moscovitch, the inventor of the eBook. Such an analysis is improper as a matter of law. Only the inventor's intended purpose is relevant to determine whether the invention was reduced to practice. In re Omeprazole, 536 F.3d 1361, 13'73 (Fed. Cir. 2008) (citing 24 Technologies, Inc. v. Microsofi Corp.,507 F.3d 1340, 1352 (Fed. Cir. 2007)); see also UMC Electronics Co. v. U.5.,816 F.2d 647,657 (Fed. Cir. 1987) (holding claims invalid because the items sold "had been sufficiently tested to demonstrate to the satisfaction of the inventor that the invention as ultimately claimed would work for its intended purpose"). GRANTED: DENIED: 54. Arsuments that the Erqotron DS100 Series stands (includine the DS100 Dual Monitor Desk Stand and DS100 Quad Horizontal Desk Stand) do not infringe because a user may place the device in a "noninfringing mode" or that that the vertical tiltinq arranqement is a "substantial non-infrinqing use": Any evidence, testimony, opinion, or argument that the Ergotron DS100 Series stands do not infringe because they may be put into a mode that allows vertical but not horizontal tilting such that, according to Defendants' argument, they are noninfringing and have a substantial non-infringing use. These arguments a.re contrary to law. FRE 401. 25 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 25 of 33 PageID #: 19126 Mass' patent claims are apparatus claims. Infringement of an apparatus claim occurs "when the claimed combination has been assembled and is used or is available for use." Lemelson v. United States, 752 F.2d 1538, 1548 (Fed. Cir. l985)(emphasis added). It is not necessary that the accused device actually be performing the functions specified by the claim. Hîlgraeve Corp. v. Synantec Corp.,265 F.3d 1336, 1343 (Fed. Cir. 2001)("[A]n accused device may be found to infringe if it is reasonably capable of satisfiing the claim limitations, even though it may also be capable of non-infringing modes of operation."); Cyrix Corp. v. Intel Corp.,846 F Supp.522,536 (8.D. Tex. 1994),aff'd,42F.3d1411 (Fed. Cir. 1994);Applicatíon of Bozek, 416 F.2d 1385, 1390 (CCPA 1969X"It seems to us that the only rational way in which 35 U.S.C. $ 112 can be interpreted is to require that the 'means for performing a specified function', in order to be accorded structural significance, be a means which possesses a presently existing fllnction or a presently existing capabiliôl to perform a function." (emphasis and deletion in original). "All that is required is that the device have the claimed structüe, and that this structure in the device have the capability of functioning as described by the claim." Cyrix, 846 F. Supp. at 536. Moreover, "[i]f a device is designed to be altered or assembled before operation, the manufacturer may be held liable for infringement if the device, as alte¡ed or assembled, infringes a valid patent." High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc.,49F.3d 1551, 1556 (Fed. Cir. i995). Mass' apparatus claims 16 and 17 include the elements of a "means for adjusting the angular orientation ofeach ofthe displays ... to thereby permit said displays to be angled toward [or relative to] each other to a desired degree." Thus, if the DS100 Series stand has structure equivalent to the structure presented in the '978 patent that permits the monitors "to be angled toward each other to a desired degree," then the combination of DS100 Series stand with monitors infringes Mass' claims even if it is capable of also being placed in a configuration that zo Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 26 of 33 PageID #: 19127 allows vertical tilting but not horizontal and Defendants' argument is contrary to law and inelevant. For this reason, allowing the Defendants to suggest that putting the DS100 Series stands in vertical tilting arrangement is not infringing or a that it creates a substantial non- infringing use even if the DS100 Series Stand is found infringing if put in a horizontal panning arrangement would be to make a¡ argument that is wrong as a mater of law and thus irrelevant, and would be prejudicial and would certainly confuse the jury. Fed. R. Evid. 401, 403. GRANTED: DENIED: 55. Litigation SetUement Asreements: Any reference to Defendants' prior licenses and/or settlement agreements that \were entered into as a result of litigation between the parties. See FRE 402, 403, 408. This motion specifically does not include Plaintiffs' licenses with companies such as Doublesight, Eizo, Peerless, and Moview, where there was no litigation between the parlies. GRANTED: DENIED: 56. Any Reference or Evidence to Experts' Hours Worked or Time Billed. or Hourlv þ'1þ: The parties have agreed not to request the expeds' bills in this case. As such, any testimony about this subject is irrelevant and prejudicial. FRE401-403,601. GRANTED: DENIED: 57. Shipping and Assemblv Procedures of Infrinsins Products: Any evidence or argument about separating shipments of components that make up the alleged infringing product as being a defense to infringement. Shipping procedures for products that have been sold is irreleva¡t to direct infringement because direct infringement under 35 U.S.C. $ 271(a) includes 27 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 27 of 33 PageID #: 19128 "selling" and "offering for sale" an infringing product. Defendants' argument that it does not infringe because it ships in separate containers the various components that are ultimately assembled together to make up the infringing unit was legislativeiy closed off with amendments to 35 U.S.C. $ 27i(a) to include "offers to sell." The Federal Circuit had previously closed the potential loophole of separately shipping components of an infringing product to avoid direct infringement. Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 19 (Fed.Cir. 1984) (components of a machine held to infringe when components are ready for assembly and serye "no useful noninfringing purpose"); High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc.,49 F.3d 1551, 1556 (Fed. Cir. i995) (cìting Paper Converting Mach. Co.,745 F.2d at 19). Regardless of how a product is divided for shipment, the product infringes if it was previously offered or sold as a complete unit. Accordingly, Defendants should be precluded from attempting to confuse the jury on direct infüngement by introducing evidence or argument that they do not infringe because the components are shipped separately and not shipped as a complete unit. Such argument or evidence is directed to the u[ong legal test. As such, it would be irelevant and highly confusing and prejudicial and must be excluded. FRE 401-403. GRANTED: DENIED: 58. All evidence of a defective reissue from the iury: Any evidence, testimony, opinion, or algument regarding the mistake that led to the Reissue of Mass' '978 patent being made with deceptive intent should be heard by the Courl because this issue is an inequitable-conduct issue. The Federal Circuit has squarely held that subjective intent of an inventor and his attomey is inelevant to this reissue: Subjective intent is not determinative of whether the applicants erred in claiming less than they had a right to claim. "lntent to claim" is not the criterion for reissue, and has been well described as "but judicial shoflha¡d, signifying a means of measuring whether the statutorily required enor is present." In re LVeiler,790 F.2d 1576, 1581,229 USPQ 28 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 28 of 33 PageID #: 19129 673,616 (Fed.Cir.1986) (emphasis in original). The statutory standard ofreissuable enor is objective, and does not require proof of subjective state of mind. Scripps Clìnic & Research Foundation v. Genentech, lnc.,927 F.2d1565,1575 (Fed. Cir. 1991). Rather, case after case has held that where there is a failure to claim the invention sufficiently broadly or understand the full scope of the invention, reissue is proper. "Failure of the attomey to claim the invention sufficiently broadly 'is one of the most common sources of defects."' Scripps Clinic, 927 F.2d at 1575 (Fed. Cir. 1991) (quoting In re IVilder, 736 F.2d 1516 (Fed.Cir.1984)). Indeed, Scripps Clinic further elaborates that "'[t]he fact that the error could have been discovered at the time of prosecution with a mo¡e thorough patentability search or with improved communication between fhe inventors and the attomey does not, by itself, preclude a patent owner from corecting defects through reissue."' 1d, (quoting Wilder,136F.2ð, at 1519) (emphasis added); In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)( "One of the most commonly asserted 'errors' in supporl of a broadening reissue is the failure of the patentee's attomey to appreciate the fu1l scope of the invention during the prosecution of the original patent application . . .. This form of error has generally been accepted as sufficient to satisfy the 'error' requirement of $ 25 i .") The issue whether error was committed is equitable in nature and thus more appropriate for a judge rather than a jura. See Hester Indus., Inc. v. Stein, Inc.,142F.3d 1472, 1479 (Fed Cir. 1998) ("In considering the 'error' requirement, we keep in mind that the reissue statute is 'based on fundamental principles of equity and faimess'[.]"). For these reasons, allowing the Defendants to suggest that the error requirement of reissue was improper based upon Mr. Waraksa or Mr. Moscovitch's intent would be contrary to law and irrelevant, and would be unduly prejudicial and would certainly confuse the jury. Fed. R. Evid. 401, 403. Finally, as discussed in more detail in Plaintiffs' Response to Ergotron's Summary Judgment Motion for Invalidity, see Docket No. 494, a reissue application is proper if the 29 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 29 of 33 PageID #: 19130 attomey failed to appreciate the scope of the claim. Here, Mr. Moscovitch's atfomey Mirek Waraksa specifically stated that he failed to appreciate the scope ofthe claims. Therefore, there is no factual dispute about any deceptive reissue, and for this reason alone, this Court should not allow a jury to hear these arguments, especially considering the risk of undue prejudice to MASS. S¿e Fed. R. Evid. 401.403. GRANTED: DENIED: Respectfully submitted, /s/ Justin A. Nelson Max L. Tribble, Jr., State Bar No .20213950 SUSMAN GoDFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002 Telephone: (7 13) 651 -9366 Facsimile: (713) 654-6666 mtribble@susmangodfrey.com Lead Attomey for Jery Moscovitch and MASS Engineered Design, Inc. OF COUNSEL: Justin A. Nelson, State Bar No. 240347 66 Susnrax GoonnEY L.L.P. 120lThird Avenue, Suite 3800 Seattle, Washington 98 1 0 1 -3000 Telephone: (206) 516-3880 Facsimile: (206) 516-3883 jnselson@susmangodfrey.com Stephen F. Schlather, State Bar No. 24007993 SUSMAN GoDFREY L.L.P. 1000 Louisiana Street, Suite 5 100 Houston, Texas 77002 Telephone: (7 13) 651 -9366 Facsimile: (713) 654-6666 sschlather@susmangodfrey. com 30 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 30 of 33 PageID #: 19131 Otis W. Canoll Srate Bar No. 03895700 IRELAND, CÄRRoLL & KELLEY, P.C. 6101 S. B¡oadway, Suite 500 P. O. Box 7879 Tyler, Texas 75711 Telephone: (903) 56i -1600 Facsimile: (903) 561- 1071 nancy@icklaw.com Franklin Jones, Jr., State Bar No. 00000055 JoNEs & JoNEs, INc., P.C. 201 West Houston Street P. O. Drawer 1249 Marshall, Texas 7 56'1 1-1249 Telephone: (903) 938-4395 Facsimile: (903) 938-3360 maizieh@millerfirm. com Gregory L. Maag, State Bar No. 127 48500 Jonathan M. Harris, State Bar No. 00796713 CoNLEY RosE, P.C. 600 Travis Street, Suite 7100 Houston, Texas 77002 Telephone: (713) 238-8000 Facsimile: (713) 238-8088 gmaag@conleyrose.com jharris@conleyrose.com S. Calvin Capshaw, State Bar No. 03783900 ElizabelhL. DeRieur, State Bar No. 05770585 CAPSHAW DERIEUX, LLP 1 127 Judson Road, Suite 220 P. O. Box 3999 Longview, Texas 75601-5 157 Telephone: (903) 236-9800 Facsimile: (903) 236-8787 ccapshaw@capshawlaw.com ederieux@capshawlaw.com Robert M. Parker, State Bar No. 15498000 Ckistopher Bunt, State Bar No. 00787165 Charles Ainsworth, State Bar No. 00783521 PARKER, BUNT & ArNswoRTH, P.C. 100 E. Ferguson, Suite 1 1 14 Tyler, Texas 75702 Telephone: (903) 531-3535 rmparker@pbatyler. com 31 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 31 of 33 PageID #: 19132 rcbunt@pbatyler.com charley@pbatyler.com Attomeys for Jerry Moscovitch and MASS Engineered Design. Inc. JZ Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 32 of 33 PageID #: 19133 CERTIFICATE OF SERVICE I hereby ceúiô/ that all counsel of record, who are deemed to have consented to electronic service are being served this 20th day of October, 2008 with a copy of this document via the Court's CMÆCF system per Local Rule CD-5(a)(3). /s/ Justin A. Nelson Justin A. Nelson 33 Case 2:06-cv-00272-LED Document 582 Filed 10/20/08 Page 33 of 33 PageID #: 19134
