Opinion
No. 05-CV-2045-LRR.
October 18, 2007
ORDER
I. INTRODUCTION
The matter before the court is Plaintiff/Counterclaim-Defendant ProBatter Sports, LLC's ("ProBatter") "Motions in Limine" ("Motion") (docket no. 203-1).
II. RELEVANT PRIOR PROCEEDINGS A. Complaint
Considerable procedural context is necessary to resolve portions of the Motion.
On May 17, 2005, ProBatter filed a Complaint and Jury Demand ("Complaint") (docket no. 1-1) against Defendant/Counterclaim-Plaintiff Joyner Technologies, Inc. ("Joyner"). 1. General allegations
ProBatter also sued The University of Northern Iowa ("UNI"). ProBatter and UNI later settled. See Consent Decree (docket no. 99).
According to the Complaint, ProBatter sells the ProBatter Simulator, a baseball video pitching simulator. Complaint at ¶ 11. The ProBatter Simulator is comprised of a three-wheel pitching machine, a computer control and a video display. Id. at ¶ 9. Owing to a unique power head, the ProBatter Simulator is able to throw different types of pitches at varying speeds and locations, while displaying a video image of a life-sized baseball pitcher on a projection screen. Id. The video image of the pitcher and the release of the baseball are synchronized so it appears as if the pitcher is throwing the ball. Id. The ProBatter Simulator features a computer touch screen for selecting a specific pitch or a preprogrammed sequence of pitches. Id. A number of Major League Baseball teams, including the Boston Red Sox, Cleveland Indians and New York Mets, use the ProBatter Simulator to train their players. Id. at ¶ 10. The retail price of the ProBatter Simulator is $75,000. Id. at ¶ 21.
The ProBatter Simulator is the subject of a number of patents that ProBatter owns by assignment, including "the '134 Patent" and "the '512 Patent." Id. at ¶¶ 12-13. These two patents each claim a pitching machine that is synchronized to work in conjunction with a video display. Id. at ¶ 11-12.
Pitching System with Video Display Means, U.S. Patent No. 6,186,134 (filed Dec. 9, 1999) (issued Feb. 13, 2001).
Pitching System with Video Display Means, U.S. Patent No. 6,513,512 (filed Feb. 8, 2001) (issued Feb. 4, 2003).
ProBatter alleges that "Joyner has created, is selling and has sold . . . a video pitching display system referred to as the 'ALLSTAR [ACE] 5000[,]' . . . which is adapted to be used in conjunction with a HomePlate programmable pitching machine [("HomePlate")] marketed by Sports Tutor, Inc. [("Sports Tutor")]". Id. at ¶ 13. Joyner sells the ALLSTAR [ACE] for $9,995.00 with discounts for high schools and colleges. Id. at ¶ 21. Joyner advertises the ALLSTAR [ACE] 5000 on its website as an "Affordable Professional System" that compares to "[a] professional batter training system . . . [that] would cost somewhere around $75,000." Id. 2. Causes of action
At the time the Complaint was filed, Joyner's product was known as the "ALLSTAR PRO 5000." It is now known as the "ALL STAR ACE 5000."
The Complaint contains three causes of action. First, ProBatter alleges that Joyner is contributorily infringing and actively inducing the infringement of the '134 Patent and the '512 Patent, in violation of 35 U.S.C. § 271(b) and (c). Id. at ¶¶ 25-28. Second, ProBatter alleges that Joyner has literally infringed the same two patents, in violation of 35 U.S.C. § 271(a). Id. at ¶¶ 29-33. Third, ProBatter alleges that Joyner's actions "constitute unfair competition and an unfair trade practice under the common law." Id. at ¶¶ 34-37. ProBatter seeks injunctive relief, compensatory damages, punitive damages, attorneys' fees and costs. Id. at ¶¶ 28.A-.E, 33.A.-.E and 37.A-.E.
B. Second Amended Counterclaim
Joyner denies the substance of ProBatter's Complaint and asserts eleven affirmative defenses. In Count I of its Answer, Affirmative Defenses and Second Amended Counterclaim ("Second Amended Counterclaim") (docket no. 71), Joyner seeks a declaratory judgment of non-infringement, invalidity and unenforceability of the '134 Patent and the '512 Patent. Second Amended Counterclaim at ¶¶ 19-24. In Count III, Joyner alleges abuse of process under Iowa common law. Id. at ¶¶ 29-35. Joyner seeks compensatory damages. Id. at ¶ 35.A.
On September 15, 2005, Joyner filed an Answer, Affirmative Defenses and Counterclaim (docket no. 25). On March 1, 2006, Joyner filed an Answer, Affirmative Defenses and Amended Counterclaim (docket no. 54). On June 26, 2006, Joyner filed the Second Amended Counterclaim (docket no. 71).
On October 2, 2007, the court dismissed Count II of the Second Amended Counterclaim. See Order (docket no. 244).
C. Connecticut Lawsuit
On December 28, 2005, ProBatter sued Sports Tutor in the United States District Court for the District Court of Connecticut ("Connecticut Lawsuit"). In the Connecticut Lawsuit, ProBatter alleges that Sports Tutor infringed two other patents that ProBatter holds on the ProBatter Simulator by marketing and selling HomePlate. These two patents are "the '649 Patent" and "the '924 Patent."
ProBatter Sports, LLC v. Sports Tutor, Inc., No. 05-CV-1975-VLB (D. Conn. Dec. 28, 2005).
Ball-Throwing Machine, U.S. Patent No. 6,182,649 (filed Mar. 1, 1999) (issued (Feb. 6, 2001).
Ball Throwing Machine and Method for Profiling Pitches, U.S. Patent No. 6,546,924 (filed Feb. 5, 2001) (issued Apr. 15, 2003).
D. Motion to Intervene
On February 2, 2006, Sports Tutor filed a motion to intervene in the instant lawsuit. A magistrate judge ultimately denied the motion on March 10, 2006. See Order (docket no. 58), at 1. The magistrate judge concluded that "[a]dding parties and patents to this case will needlessly complicate this already complicated case." Id. at 6. Sports Tutor did not appeal the magistrate judge's order to the undersigned pursuant to Federal Rule of Civil Procedure 72.E. Motion
On August 29, 2007, ProBatter filed the Motion. On October 9, 2007, Joyner filed a Resistance (docket no. 247). On October 12, 2007, ProBatter filed a Reply.
Joyner originally filed its resistance on September 9, 2007. Because the resistance did not comply with the Local Rules, the court struck the resistance with leave to refile on or before October 9, 2007. See Order (docket no. 245), at 1 (citing LR 7.1.e).
On September 13, 2007, the court heard oral argument on the Motion. Attorneys Stephen J. Holtman and Susan M. Schlesinger represented ProBatter. Attorneys Quentin G. Cantrell, John C. McNett and James S. Zmuda represented Joyner. The Motion is fully submitted and ready for decision.
III. ARGUMENTS
In the Motion, ProBatter asks the court to (1) prevent Mr. Dennis Thomas from testifying, either as an expert witness or as one skilled in the art; (2) exclude all evidence of Mr. Thomas's activities involving pitching machines; (3) prohibit Joyner from asserting an "Attorneys' Eyes Only" designation for exhibits and testimony; (4) bar any reference to Dr. Richard Schile; (5) bar any reference to Mr. James Cobb; (6) exclude the '649 Patent and the '924 Patent; (7) prevent Joyner from arguing that Mr. Johnnie Floyd and Mr. Jack Scott commercialized United States Patent Nos. 4,442,823 ("the '823 Patent") and 5,649,523 ("the 523 Patent"), respectively; (8) exclude the testimony of Messrs. John Henderson, Eric Griffin, Jim Hill, Larry Gallagher, Daryle Doden, Eric Doden, Jim Scott and Bill Green; (9) exclude five affidavits filed in the Connecticut Lawsuit; (10) exclude all videotapes; and (11) bar any reference to Mr. Jim Joyner's work with MIR Corporation ("MIR") and Video Baseball of America, Inc. ("VBA"). Joyner resists most, but not all, of the Motion. The court considers each category of evidence, in turn, and applies the law of the Eighth Circuit Court of Appeals. See, e.g., Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003) ("Whether proffered evidence should be admitted in a trial is a procedure issue not unique to patent law, and therefore we review the district court's decision . . . under the law of the regional circuit. . . .").
Ball Throwing Machine and System Having Three Individually Controllable Wheel Speeds and Angles, U.S. Patent No. 4,442,823 (filed Mar. 8, 1982) (issued Apr. 17, 1984).
Ball Throwing Apparatus, U.S. Patent No. 5,649,523 (filed Apr. 21, 1995) (issued July 22, 1997).
IV. DENNIS THOMAS
ProBatter "objects to Joyner's reliance on [Mr.] Dennis Thomas as an expert or even as one skilled in the art." Motion (docket no. 203-1), at 1. The court considers these two arguments separately.
A. As an Expert
ProBatter asks the court to prevent Mr. Thomas from testifying as an expert, pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). ProBatter points out that Mr. Thomas (1) works in "log procurement," (2) has only a high-school education; (3) cannot write a computer program; (4) cannot add video to a pitching machine; (5) has never manufactured or sought a patent on a pitching machine; (6) has not worked or consulted for any companies that manufacture or sell pitching machines; (7) has never sought a patent on a pitching machine and (8) admitted in his deposition that he is not an expert "in terms of an expert as college educated and stuff." Motion (docket no. 203-1), at 5 (quoting Thomas Depo. (docket no. 203-2), at 12). ProBatter challenges Mr. Thomas's qualifications but not his methodology.
Joyner resists this portion of the Motion. Joyner argues that (1) ProBatter's argument that Mr. Thomas "can't be an expert in pitching machines because he has had a day job in the lumber industry" is "a non-sequitur"; (2) many experts require the assistance of others to build things; (3) Mr. Thomas started building video pitching machines in 1994; (4) Mr. Thomas has owned his own business, in which he has manufactured, installed and repaired pitching machines, since 1995; and (5) Mr. Thomas has performed consulting work regarding pitching machines, is familiar with the prior art, and "has personally discussed the pitching machines of many of the most relevant pitching machine patents with their inventors, or others in the field." Resistance (docket no. 247), at 3-4.
Federal Rule of Evidence 702 provides:
If scientific, technical or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training or education may testify thereto in the form of opinion or otherwise.
Fed.R.Evid. 702. "Rule 702 was amended in 2000 in response to Daubert and its progeny." Robinson v. GEICO Gen. Ins. Co., 447 F.3d 1096, 1100 (8th Cir. 2006) (citing Fed.R.Evid. advisory committee's note). " Daubert charged trial judges with acting as gatekeepers to exclude unreliable expert testimony." Id. (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999)). Under Rule 702 and Daubert, district courts now have "the discretion necessary to close the courtroom door to 'junk science' and to admit reliable expert testimony that will aid the trier of fact.'" Id. (citing Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002)). In other words, "[d]istrict courts have wide latitude in determining whether an expert's testimony is reliable." Olson v. Ford Motor Co., 481 F.3d 619, 626 (8th Cir. 2007).
The proponent of an expert witness bears the burden of establishing that his or her testimony is admissible by a preponderance of the evidence. See Advisory Committee Notes to Fed.R.Evid. 702. However, any doubts regarding the admissibility of expert testimony should be resolved in favor of admission. Marmo v. Tyson Fresh Meats, Inc., 457 F.3d 748, 758 (8th Cir. 2006). "A review of the caselaw after Daubert shows that the rejection of expert testimony is the exception rather than the rule.'" Robinson, 447 F.3d at 1100 (quoting Fed.R.Evid. advisory committee's note).
The court declines to exclude Mr. Thomas from testifying as an expert. The gist of ProBatter's arguments is that Mr. Thomas is not "a witness qualified as an expert by knowledge, skill, experience, training or education," Fed.R.Evid. 702, because he is not an engineer or computer programmer by education or trade. Rule 702 does not require a person to have a formal degree or training in a relevant field to qualify as an expert — knowledge, skill or experience is sufficient. Id.; see also Daubert, 509 U.S. at 594 (stating that Rule 702 is a "flexible" rule). At this juncture, every indication is that Mr. Thomas has experience manufacturing, installing and repairing pitching machines. See Expert Report of Dennis M. Thomas (docket no. 203-3), passim. Any "gaps" in Mr. Thomas's qualifications "generally go to the weight of [his] testimony, not its admissibility." Robinson, 447 F.3d at 1100 (citations and internal quotation marks omitted); Holbrook v. Lykes Bros. S.S. Co., 80 F.3d 777, 782 (3d. Cir. 1996) ("[I]t is an abuse of discretion to exclude testimony simply because the trial court does not deem the proposed expert to be the best qualified or because the proposed expert does not have the specialization that the court considers most appropriate."). ProBatter's objections to Mr. Thomas qualifications are fodder for cross-examination and should be left to the jury for resolution. As the Eighth Circuit Court of Appeals recently stated:
Neither Rule 702 nor [ Daubert] permits a district court to invade the province of the jury. Rule 702 does not permit a judge to . . . admit the testimony that . . . she personally believes, and exclude the testimony that . . . she does not personally believe. Nor does Rule 702 permit a judge to exclude expert testimony just because it seems doubtful or tenuous. The Supreme Court has been clear about how infirmities in expert testimony should be exposed: "Vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence." Daubert, 509 U.S. at 596.Olson, 481 F.3d at 626.
Accordingly, the court shall deny this portion of the Motion and permit Mr. Thomas to testify at trial as an expert. Fed.R.Evid. 702.
B. As One Skilled in the Art
Assuming that the court would not permit Mr. Thomas to testify at trial as an expert, ProBatter argues that Mr. Thomas "doesn't even qualify as 'a person skilled in the art' of video pitching machines." Motion (docket no. 203-1), at 3. Because the court held that Mr. Thomas may testify at trial as an expert, it need not consider this alternative argument and denies this portion of the Motion.
V. DENNIS THOMAS'S ACTIVITIES WITH PITCHING MACHINES
ProBatter asks the court to exclude all evidence of Mr. Thomas's activities involving pitching machines. ProBatter states that "Joyner should not be allowed to present any evidence, testimony, videos, photographs or other documents with respect to the alleged dabbling activities of Mr. Thomas, insofar as those activities do not involve the patentable features of ProBatter's invention." Motion (docket no. 203-1), at 7-8. ProBatter states that Mr. Thomas admitted in his deposition that his activities with pitching machines "did not involve the invention covered by the patents-in-suit." Id. at 7. ProBatter asks the court to exclude all evidence of Mr. Thomas's activities involving pitching machines pursuant to Federal Rules of Evidence 402 and 403, because "introduction of [such evidence] will confuse the jury and prejudice ProBatter." Motion (docket no. 203-1), at 6.
ProBatter also relies on Federal Rule of Evidence 702, presumably to reiterate its position that Mr. Thomas should not be permitted to testify as an expert.
Joyner argues that Mr. Thomas's activities with pitching machines are relevant prior art. Joyner intends to show at trial that "there are no patentable features of the asserted claims [and] . . . the recited elements of the asserted claims, or their equivalents, can be found in Mr. Thomas's work[.]" Resistance (docket no. 247), at 5. In the alternative, Joyner intends to argue "that the asserted claims are either anticipated or rendered obvious under 35 U.S.C. § 103 in view of Mr. Thomas'[s] work and other prior art." Id.
Evidence is relevant if it has "any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence." Fed.R.Evid. 401. Relevant evidence is generally admissible. Fed.R.Evid. 402. Relevant "evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue delay, waste of time, or needless presentation of cumulative evidence." Fed.R.Evid. 403. Irrelevant evidence is inadmissible. Fed.R.Evid. 402.
ProBatter has not explained to the court with sufficient particularity why Mr. Thomas's activities do not involve the patentable features of ProBatter's invention. Further, the court does not possess and has not seen any videos or photographs that ProBatter seeks to exclude. With respect to ProBatter's argument of "prejudice," ProBatter misstates the governing legal standard. "Rule 403 is concerned only with 'unfair prejudice, that is, an undue tendency to suggest decision on an improper basis.'" United States v. Gabe, 237 F.3d 954, 960 (8th Cir. 2001). Evidence that is prejudicial for the same reason that it is probative is not unfairly prejudicial. Id.
Accordingly, the court shall deny this portion of the Motion. Fed.R.Evid. 402; Fed.R.Evid. 403.
VI. ATTORNEYS' EYES ONLY DESIGNATION
ProBatter represents to the court that Joyner has designated certain documents in its exhibit list as "Attorneys' Eyes Only," i.e., documents that only ProBatter's outside attorneys are permitted to view. ProBatter makes two related arguments with respect to such documents. First, Joyner contends that, "if Joyner is going to rely on these documents as exhibits in open court, Joyner should not be allowed to maintain an "Attorneys' Eyes Only" status for such documents." Motion (docket no. 203-1), at 9. ProBatter states that it would be inconvenient and "unduly prejudicial" to enforce an "Attorneys' Eyes Only" designation at trial. Id. (citing Abourzek v. Reagan, 785 F.2d 1043, 1061 (D.C. Cir. 1986) (explaining that no party should "be faced . . . with a decision against him based on evidence he was never permitted to see and to rebut")). Second, ProBatter argues that Joyner should be precluded from "discussing or relying on" at trial any documents that heretofore have contained the "Attorneys' Eyes Only" designation. Id. ProBatter points out that the parties are in the midst of preparing for trial, ProBatter's counsel has not had the opportunity to discuss the documents with ProBatter's principals and, "[a]ccordingly, Joyner should be precluded under [Rule 403] from discussing or relying upon these documents." Motion (docket no. 203-1), at 10.
With respect to ProBatter's first argument, Joyner concedes that "now that the summary judgment motion has been decided, ProBatter's in house counsel should have access [to the Attorneys' Eyes Only documents]." Resistance (docket no. 247), at 6 (emphasis omitted). Joyner contends, however, that the information "should remain confidential, preserving Joyner's right to argue for it to be handled at trial in camera, or that only pertinent portions of it be published, if necessary." Id. (emphasis omitted).
With respect to ProBatter's second argument, Joyner argues that there is nothing sinister about "Attorneys' Eyes Only" evidence: ProBatter's outside counsel has had access to such evidence all along. Joyner then states:
Given that this case has not been resolved by summary judgment as had been hoped, Joyner recognizes Judge Linda Reade's desire to have opposing counsel all have access to information that may be offered into evidence. While this may well create problems for ProBatter in the future should it later adopt Joyner's confidential features in its own products, ProBatter is the Plaintiff in this case, and so has chosen to create this situation. Joyner, on the other hand, is trying to defend its right to continue its business, without having to share with ProBatter, its chief competitor, Jim Joyner's keen insights and the fruits of his years of labor in this field. The balance of these hardships plainly tips heavily in favor of Joyner to maintain the "confidential" designation, and the option to only admit pertinent portions, if even that becomes necessary, should be retained. Fed.R.Evid. 403.
Resistance (docket no. 247), at 7.
With respect to ProBatter's first argument, the court shall enforce Joyner's concession. Joyner shall immediately redesignate all of its "Attorneys' Eyes Only" documents as "confidential" documents, if it has not already done so. In other words, ProBatter's in-house counsel should be immediately permitted to see such documents. With respect to ProBatter's second argument, the court declines to exclude such "confidential" documents from trial pursuant to Rule 403 simply because they were previously designated as "Attorneys' Eyes Only" documents. There is no unfair prejudice to ProBatter here. ProBatter's outside counsel has had the opportunity to view such documents all along and it is common practice that "Attorneys' Eyes Only" designations are left in place until trial. See, e.g., Ehrlich v. Incorporated Village of Sea Cliff, No. CV04-4025 (LDW) (AKT), 2007 WL 1593241, *4 (E.D.N.Y. June 1, 2007).
At the Hearing, Attorney Schlesinger indicated that the documents were redesignated in late August of 2007. Trial is set for November 1, 2007.
Accordingly, the court shall grant in part and deny in part this portion of the Motion. Fed.R.Evid. 403.
VII. DR. RICHARD SCHILE
ProBatter asks the court to bar Joyner from referring to or relying on Dr. Richard Schile. ProBatter argues that Dr. Schile "had nothing whatsoever to do with ProBatter's development of the video component which is the subject of the patents[-]in[-]suit." Motion (docket no. 203-1), at 11. ProBatter states that "[u]ndaunted, however, Joyner persists in continuing to try to involve Dr. Schile, a gentleman who is in his 70's." Id. ProBatter asks the court to bar any reference to Dr. Schile at the trial pursuant to Federal Rules of Evidence 402 and 403.
Joyner responds that Dr. Schile is a named inventor on the '649 Patent and the '924 Patent. Joyner represents to the court that
Dr. Schile participated in the development of the machine depicted in the drawings of the patents in suit. Dr. Schile gave testimony as to the Floyd and Sanders prior art relevant to this litigation. According to his own testimony, Dr. Schile developed the means for actuating the power head, including, in particular, the center pivot. . . . [T]he center pivot feature is recited in Claim 2 of the '134 Patent.
Resistance (docket no. 247), at 8. Joyner also represents to the court that it plans to argue to the jury that the patents-in-suit are invalid and unenforceable, because ProBatter deliberately omitted Dr. Schile from the patent applications that resulted in the patents-in-suit.
The court declines to bar all reference to or reliance upon Dr. Schile at trial. ProBatter has not convinced the court that all testimony from Dr. Schile would be irrelevant, Fed.R.Evid. 402, or that any relevant testimony would be substantially outweighed by undue prejudice or waste of time, Fed.R.Evid. 403. It may be relevant to a fact of consequence to the determination of this action that Dr. Schile is a named inventor on the '649 Patent and the '924 Patent but not the patents-in-suit. First, as a named inventor on '649 Patent and the '924 Patent, Dr. Schile is uniquely qualified to explain many facets of the patents-in-suit to the jury. As the court explains in Part IX infra, the '649 Patent and the '924 Patent are intimately related to the patents-in-suit. Second, if Joyner can show by clear, convincing and corroborated evidence that ProBatter withheld Dr. Schile's inventorship of the patents-in-suit with an intent to deceive, the patents-in-suit are invalid. See 35 U.S.C. § 256; see, e.g., C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352-53 (Fed. Cir. 1998); Iowa State Univ. Research Found., Inc. v. Sperry Rand Corp., 444 F.2d 406, 408 (4th Cir. 1971).
Accordingly, the court shall deny this portion of the Motion.
VIII. MR. JAMES COBB
The parties' arguments with respect to Mr. James Cobb mirror their arguments with respect to Dr. Schile. Accordingly, the court shall deny this portion of the Motion.
IX. THE '649 PATENT AND THE '924 PATENT
ProBatter "objects to the introduction of and any reference whatsoever to" the '649 Patent and the '924 Patent from trial, pursuant to Federal Rules of Evidence 402 and 403. Motion (docket no. 203-1), at 13. ProBatter points out that, earlier in this lawsuit, the magistrate judge denied Sports Tutor's motion to intervene. If the magistrate judge had granted the motion to intervene, the '649 Patent and the '924 Patent would have become two additional patents-in-suit. Further, ProBatter points out that the parties entered into an agreement whereby ProBatter agreed not to sue Joyner over the '649 Patent and the '924 Patent, which resulted in Joyner amending a previously filed counterclaim that sought a declaratory judgment on the '649 Patent and '924 Patent. ProBatter contends the '649 Patent and the '924 Patent are irrelevant and admission of such patents would only confuse the jury "as to what patents and patent claims are really at issue in this case." Id. at 14.
As a threshold matter, the court notes that ProBatter has again misstated the Rule 403 standard and thus declines to consider such argument. With respect to ProBatter's Rule 402 argument, the court declines to wholly exclude the '649 Patent and the '924 Patent on relevance grounds. As indicated in Part VII supra, the four patents are intimately related. The patents-in-suit are continuations-in-part of the '649 Patent, and the '924 Patent is a continuation of the '649 Patent. In other words, all four patents are derived, at least in part, from a single patent application. All four patents concern three-wheel pitching machines and are in the same class and subclass. Indeed, all of the drawings in the '649 Patent are identical to the first eleven drawings of the '134 Patent.
"A continuation-in-part application is an application that has some subject matter in common with the parent but also has new subject matter." Herbert F. Schwartz, Patent Law Practice 26 (5th ed. 2006) (emphasis and footnote omitted). Id. A continuation-in-part is entitled to the parent's filing date as to any subject matter in common, but only to its own filing date as to the new matter." Id.
"A continuation application is an application whose specification is the same as that of the parent application, but whose claims may be the same as or different from those of the parent application." Herbert F. Schwartz, Patent Law Practice 26 (5th ed. 2006) ("Schwartz") (emphasis and footnote omitted); see, e.g., Monsanto Co. v. Scruggs, 459 F.3d 1328, 1337 (Fed. Cir. 2006) ("The patents are continuations or divisionals of a common parent application and therefore necessarily have almost identical specifications."), cert denied, 127 S. Ct. 2062 (2007). "A continuation application is entitled to the parent's filing date as to all subject matter contained in it." Schwartz at 26; see, e.g., Broad. Innovation, LLC v. Charter Commc'ns, Inc., 420 F.3d 1364, 1367-68 (Fed. Cir. 2005) (holding that a patent was entitled to the filing date of one of its parents), cert. denied, 547 U.S. 1113 (2006).
Throughout these proceedings, ProBatter has attempted to demarcate a firm line between what it has described in the past as "the video patents," i.e., the '134 Patent and the '512 Patent, and "the pitching machine patents," i.e., the '649 Patent and the '924 Patent. The court is not convinced that the distinction is as bright or as neat as ProBatter asserts. For example, the '134 Patent and the '512 Patent, the so-called "video patents," are entitled "Pitching System with Video Display Means" and include a claim for a pitching machine. Fundamentally, this fight appears to be about the ProBatter Simulator and whether Joyner and Sports Tutor are offering for sale a combined product that infringes upon all four patents. The fight has two fronts — Iowa and Connecticut — but it is nonetheless one fight. ProBatter's choice to litigate this dispute in two different fora against two different companies does not change this fact.
The magistrate judge's prior ruling with respect to Sports Tutor's motion to intervene does not inform or bind the undersigned's determination of relevance. The issues are much different and, although the law-of-the-case doctrine "precludes litigation of matters that are decided implicitly," UniGroup, Inc. v. Winokur, 45 F.3d 1208, 1211 (8th Cir. 1995) (citation omitted), the magistrate judge did not implicitly hold that the '649 Patent and the '924 Patent were irrelevant to the instant action. To the contrary, the magistrate judge made clear that he was only addressing the issue squarely before him. See, e.g., Order (docket no. 58), at 6 ("[T]he court is confident that, should the court retain jurisdiction over [the '649 Patent and the '924 Patent] claims, Sports Tutor's interests will be adequately protected. . . ."). In any event, to the extent the magistrate judge made an implicit holding, the court sets aside such holding. A district court judge retains the authority to review de novo any aspect of a magistrate judge's ruling on a nondispositive matter in a civil case, even if neither party files a timely objection. See Thomas v. Arn, 474 U.S. 140, 154 (1985) (discussing authority of magistrate judges); cf. Fed.R.Crim.P. 59 advisory committee's note ("[T]he district judge retains the authority to review any magistrate judge's decision or recommendation whether or not objections are timely filed.").
Accordingly, the court shall deny this portion of the Motion. The court warns Joyner, however, that the court's ruling in this regard should not be viewed as an invitation to conduct a trial within a trial on the '649 Patent and the '924 Patent. The court reserves the right to exclude evidence pursuant to Federal Rule of Evidence 403.
X. THE '823 PATENT AND THE '523 PATENT
ProBatter asks the court to prevent Joyner from arguing that Mr. Floyd and Mr. Scott commercialized the '823 Patent and the '523 Patent. ProBatter argues that the '823 Patent and '523 Patent are thus inadmissible, because there is no evidence that Mr. Floyd or Mr. Scott commercialized them. In the alternative, ProBatter asks the court to exclude the two patents, "both of which relate to non-video pitching machines, [because they] have no relevancy to the issues before the Court [and] could be prejudicial to ProBatter and would potentially confuse the jury." Motion (docket no. 203-1), at 14. Joyner resists this portion of the Motion, on the ground that the '823 Patent and the '523 Patent are relevant prior art.
The court declines to exclude the '823 Patent and the '523 Patent for lack of commercialization. An invention may be part of the relevant prior art even if it was never commercialized. See, e.g., McNeil-PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362, 1369-70 (Fed. Cir. 2003); Loral Fairchild Corp. v. Matsushita Elec., 266 F.3d 1358, 1363 (Fed. Cir. 2001); Trojan, Inc. v. Shat-R-Shield, Inc., Nos. 88-1528 and 88-1529, 1989 WL 128622, *2 (Fed. Cir. Oct. 31, 1989) (unpublished table disposition). Further, ProBatter has not explained to the court with sufficient particularity exactly how and why the '823 Patent and the '523 Patent are irrelevant, unduly prejudicial and confusing.
Accordingly, the court shall deny this portion of the Motion.
XI. EIGHT MEN OUT?
ProBatter asks the court to exclude the testimony of eight men: Messrs. John Henderson, Eric Griffin, Jim Hill, Larry Gallagher, Daryle Doden, Eric Doden, Jim Scott and Bill Green. ProBatter argues that "[t]he introduction of these witnesses will be a waste of time for the [c]ourt and the jury and needlessly prolong the trial," and it asks the court to exclude such witnesses pursuant to Federal Rules of Evidence 402 and 403. Although ProBatter makes vague references to the Connecticut Lawsuit in connection with the witnesses in question, it does not explain with any particularity how their testimony would be irrelevant or a waste of time.
Accordingly, the court shall deny this portion of the Motion.
XII. CONNECTICUT LAWSUIT AFFIDAVITS
ProBatter asks the court to exclude five affidavits filed in the Connecticut Lawsuit. ProBatter claims that (1) papers filed in the Connecticut Lawsuit are irrelevant and a waste of time; (2) the affidavits "are nothing more than self-serving affidavits which ProBatter cannot cross-examine at trial," Motion (docket no. 203-1), at 15, and violate the Confrontation Clause of the Sixth Amendment to the United States Constitution as stated in Crawford v. Washington, 541 U.S. 36 (2004) and Davis v. Washington, 126 S. Ct. 2266 (2005); and (3) Joyner failed to produce the affidavits during discovery despite repeated requests to do so.
Joyner responds that the papers filed in the Connecticut Lawsuit are not necessarily irrelevant or a waste of time; (2) the Confrontation Clause does not bar the affidavits, because ProBatter has had the opportunity to cross-examine the affiants and in Davis the Supreme Court stated that the Confrontation Clause is no bar to testimony if "the defendant had a prior opportunity for cross-examination," Resistance (docket no. 247), at 13; (3) Federal Rule of Civil Procedure 32 permits the use of deposition testimony at trial, and the affidavits were attached to some depositions; (4) one of the affidavits addresses only "ministerial" issues and therefore ProBatter's motion is "moot," id.; and (5) Joyner disclosed the affidavits to ProBatter in the Connecticut Lawsuit and, therefore, it was not obliged to "produce duplicative copies of this evidence under the caption of this suit," id. at 14 (citation omitted), and ProBatter suffered no prejudice.
As a threshold matter, the court holds that ProBatter's Confrontation Clause argument fails, because the Confrontation Clause does not apply to civil cases. Malghan v. Evans, 118 F.App'x 731, 734 (4th Cir. 2004) (citing in part Crawford). However, the court shall nonetheless exclude the affidavits as a discovery sanction, because it is undisputed that Joyner failed to disclose the affidavits to ProBatter in this action. Joyner is not permitted to unilaterally suspend this court's discovery rules simply because its counsel had disclosed the same evidence in another case. ProBatter has a right to know what documentary evidence will be used against it in this action and need not be forced to guess that any document in the Connecticut Lawsuit would be admissible here.
In any event, the affidavits are inadmissible hearsay. Fed.R.Evid. 801. Joyner may not simply rely upon the affidavits at trial. Fed.R.Evid. 802 (stating general rule that hearsay is inadmissible); see, e.g., Spivey v. United States, 912 F.2d 80, 85 (4th Cir. 1990) (vacating damages award, because of district court's "grievous error" in admitting affidavit). If Joyner wants the substance of the testimony in the affidavits to come in at trial, Joyner needs to call the affiants as witnesses.
Accordingly, the court shall grant this portion of the Motion.
XIII. VIDEOTAPES
In the Motion, ProBatter asked the court to exclude a number of videotapes. At the Hearing, ProBatter indicated that it would be better if the court waited until trial to rule on the admissibility of the videotapes. Accordingly, the court shall deny this portion of the Motion. However, in order that the court may rule on the admissibility of the videotapes in an expeditioius matter at trial, Joyner shall immediately send the court via express mail copies of all videotapes it wishes to introduce at trial.
XIV. MR. JOYNER'S WORK WITH MIR AND VBA
Lastly, ProBatter "objects to the introduction of and reliance upon any alleged prior work of Joyner in connection with video pitching machines in conjunction with [MIR] or [VBA]." Motion (docket no. 203-1), at 19. ProBatter states that, "[d]espite repeated requests . . ., Joyner failed to produce any tangible evidence during discovery that a machine with Joyner's alleged early work ever existed or worked." Id. "No tangible evidence exists as to exactly what, if anything, [Mr.] Joyner was doing with MIR and/or [VBA]." Id. Joyner asks the court to exclude the evidence, pursuant to Federal Rules of Evidence 402 and 403.Joyner claims that the evidence will show that Mr. Joyner developed a video pitching machine for MIR in the early 1990s that is relevant prior art to the patents-in-suit and will support its contention that the patents-in-suit are obvious and invalid. Joyner does not respond to ProBatter's argument with respect to VBA.
The court is not convinced that Mr. Joyner's work with MIR is irrelevant or that its relevancy is substantially outweighed by undue prejudice. Accordingly, the court shall deny this portion of the Motion. Fed.R.Evid. 402; Fed.R.Evid. 403. The court shall grant the motion with respect to VBA, because Joyner failed to resist the same.
XV. CONCLUSION
The court shall grant in part and deny in part the Motion. The court reserves the right, however, to limit the quantity of admissible evidence discussed in the instant Order pursuant to Federal Rule of Evidence 403. Needless presentation of cumulative evidence will not be permitted at trial.
IT IS THEREFORE ORDERED:
IT IS SO ORDERED.
(1) The Motion (docket no. 203-1) is GRANTED IN PART AND DENIED IN PART;
(2) The parties must not directly or indirectly refer to or elicit answers from witnesses on the prohibited subjects. Each party is charged with the responsibility of cautioning its witnesses as to the substance of this Order; and
(3) Joyner is directed to immediately send the court via express mail copies of all videotapes it wishes to introduce at trial. The parties shall consult with one another and attempt to resolve any problems with the videotapes. If any disputes remain after such consultation, the parties shall file briefs to the court specifying ProBatter's remaining objections to the videotapes and Joyner's response thereto. ProBatter's objections are due on or before October 22, 2007. Joyner's response is due October 25, 2007. Due to time constraints, ProBatter is not permitted to file a reply brief. The failure to cite legal authority in a brief may constitute waiver of the arguments in such brief.