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EKO Brands, LLC v. Adrian Rivera Maynez Enterprises Inc.

United States District Court, W.D. Washington, Seattle

March 28, 2018

EKO BRANDS, LLC, Plaintiff,
v.
ADRIAN RIVERA MAYNEZ ENTERPRISES, INC. and ADRIAN RIVERA, Defendants.

          ORDER GRANTING IN PART AND DENYING IN PART THE PARTIES' MOTIONS IN LIMINE

          James P. Donohue, United States Magistrate Judge

         This matter comes before the Court on the parties' motions in limine. Dkt. 166; Dkt. 169. The parties are advised that the findings and conclusions regarding the motions in limine, like all rulings in limine, are preliminary and can be revisited at trial based on the facts and evidence as they are actually presented. Subject to these principles, the Court rules as follows for the guidance of the parties:

         I. PLAINTIFF'S MOTIONS IN LIMINE

         1. Preclude ARM from Putting Forth Any Evidence of Invalidity with Respect to the Sylvan and Taylor Patents.

         GRANTED. Plaintiff Eko Brands, LLC (“Eko”) argues that defendants Adrian Rivera Maynez Enterprises, Inc. and Adrian Rivera (collectively “ARM”) failed to fully comply with Local Patent Rule (“LPR”) 121(c) and (d) with respect to the Sylvan and Taylor patents identified in ARM's LPR 121 (Non-Infringement and Invalidity) Contentions. See Dkt. 170 (Billick Decl.), Ex. A. Eko contends that ARM's failure to meet the requirements of LPR 121(c) or (d) justifies precluding any evidence or argument of ‘855 patent invalidity on the basis of the Sylvan and Taylor patents. Dkt. 169 at 4.

         ARM does not oppose Eko's motion. Dkt. 173 at 2. Accordingly, Eko's motion is GRANTED, and ARM is precluded from introducing references to the Sylvan or Taylor patents or providing any evidence seeking to apply these references to invalidate the ‘855 patent.

         2. Preclude Defendants from Arguing that the ‘855 Patent was Held Invalid.

         GRANTED IN PART AND DENIED IN PART. Eko argues that ARM should be precluded from arguing that the ‘855 patent has been held invalid by any tribunal, as “the patentability [of claim 8] was later confirmed, and the other claims because they are no longer at issue in the case and reference thereto would only create confusion and cause undue prejudice.” Dkt. 169 at 6-7. Specifically, Eko contends that ARM should not be permitted to discuss the PTO's initial grant of a request for reexamination, or the PTO's preliminary rejection of various claims that are irrelevant to amended claim 8, the only claim at issue in this case. Dkt. 169 at 6. Eko argues that if ARM can assert that the PTO invalidated any claim of the ‘855 patent, even at the preliminary stage, the jury would be confused as to the different standards to invalidate a patent in U.S. District Court versus the PTO. Moreover, Eko contends that permitting ARM to state that the ‘855 patent was held invalid would be “extraordinarily prejudicial to Eko, ” even on the issue of willfulness. Id. at 6-7 (citing Acoustical Design, Inc. v. Control Elecs. Co, 932 F.2d 939, 942 (Fed. Cir.), cert. denied, 502 U.S. 863, 112 S.Ct. 185, 116 L.Ed.2d 146 (1991) (noting that the “initial rejection by the [PTO] of original claims that later were confirmed on reexamination hardly justifies a good faith belief in the invalidity of the claims.”).

         ARM responds that “claim 8 of the patent was found invalid by the Patent Office, and that is why Eko had to amend it during reexamination.” Dkt. 173 at 2. ARM asserts that this is the reason the Reexamination Certificate states that “Claim 8 is determined to be patentable as amended, ” because amended claim 8 additionally requires first and second outlet probe receptacles that are spaced substantially 180 degrees apart. Id.; Dkt. 174 (Kundu Decl.), Ex. A at Col. 1, line 16 (Reexamination Certificate showing in italics the subject matter added to claim 8). ARM responds that Eko cannot preclude discussion of the fact that the PTO found claim 8 invalid, and instead tell the jury that the PTO upheld the validity of claim 8, as this would be misleading and prejudicial to ARM and is also relevant evidence for the jury to consider on the issue of willfulness. Dkt. 173 at 2, 6. ARM is concerned that Eko will misrepresent the scope of the ‘855 patent by arguing that amended claim 8 broadly covers reusable capsules for Keurig machines, instead of a more narrow claim directed to a beverage brewing device for Keurig machines requiring first and second outlet probe receptacles that are spaced substantially 180 degrees apart with at least one being “fluidly isolated.” Id. at 3. ARM asserts that “the simple step of taking one so-called outlet problem receptacle away renders the ‘855 patent irrelevant, ” and ARM should be allowed to inform the jury that the PTO invalidated claim 8 and required Eko to amend it, which narrowed the claim. Id. at 4.

         Eko's motion is GRANTED IN PART and DENIED IN PART. Eko will not be permitted to misrepresent the scope of the ‘855 patent to the jury. Similarly, however, ARM may not advise the jury that claim 8 of the ‘855 has been “invalidated” or “held invalid” by the PTO. See Acoustical Design, 932 F.2d at 942 (the “initial rejection by the [PTO] of original claims that later were confirmed on reexamination hardly justifies a good faith belief in the invalidity of those claims.”). ARM may, of course, advise the jury that claim 8 was amended by the PTO, or advance its argument that amended claim 8 has made a “minor improvement” over the prior art. Given that amended claim 8 is the only remaining claim at issue in this case, some limited explanation of the reexamination proceedings would not unnecessarily waste time or confuse the jury.

         3. Restrict Mr. Rivera/ARM from Testifying as to the Scope of the Claims of the ‘320 Patent.

         DENIED. Eko moves to preclude Mr. Rivera, in either his individual capacity or as a corporate representative, from testifying as to any evidence supporting ARMs arguments of non-invalidity of the ‘320 patent and/or the invalidity of the ‘855 patent at trial. Dkt. 180 at 6.

         However, how Mr. Rivera developed the technology in the ‘320 patent is relevant evidence on the state of the art that existed at the time, as well as the process by which Mr. Rivera developed the technology in the ‘320 patent. His testimony can also inform the jury on what existed before Eko's ‘855 patent application was filed. To the extent Mr. Rivera's trial testimony regarding the scope and content of the prior art of the ‘320 and ‘855 patents contradicts his own prior deposition testimony, Eko may use his 30(b)(6) deposition testimony to impeach him, as appropriate.

         4. Preclude Mr. Rivera/ARM from Providing Additional Testimony Concerning Early Designs and Prototyping

         GRANTED. Eko asserts that at his deposition, Mr. Rivera was unable to identify any people, documents, or models to corroborate his purported design, development and prototyping of the structures disclosed in the ‘320 patent, but instead stated that early prototypes of his devices were developed by him personally and possibly another entity in China. Dkt. 169 at 8. As a result, Eko argues that only Mr. Rivera should be permitted to testify regarding early development of any of the embodiments of the alleged invention depicted in the ‘320 patent to avoid unfair prejudice and surprise to Eko. Id. at 9. ARM does ...


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