United States District Court, D. Nebraska
F. BATAILLON, SENIOR UNITED STATES DISTRICT JUDGE
matter is before the Court on the parties' motions in
limine, Briggs & Stratton Corporation's
(“Briggs”) Filing Nos. 789, and Exmark
Manufacturing Company Inc.'s (“Exmark”)
motions in Limine Filing No. 794 and No. 5 Filing No. 864.
the motion in limine is an important tool available to the
trial judge to ensure the expeditious and evenhanded
management of the trial proceedings, performing a gatekeeping
function and sharpening the focus for later trial
proceedings, some evidentiary submissions, cannot be
evaluated accurately or sufficiently by the trial judge in
such a procedural environment. Jonasson v. Lutheran Child
and Family Servs., 115 F.3d 436, 440 (7th Cir. 1997). A
motion in limine is appropriate for “evidentiary
submissions that clearly ought not be presented to the jury
because they clearly would be inadmissible for any
purpose.” Id. In other instances, it is
necessary to defer ruling until during trial, when the trial
judge can better estimate the impact of the evidence on the
jury. Id. The Eighth Circuit has noted that
“[e]videntiary rulings made by a trial court during
motions in limine are preliminary and may change depending on
what actually happens at trial.” Walzer v. St.
Joseph State Hosp., 231 F.3d 1108, 1113 (8th Cir. 2000).
To the extent that a party challenges the probative value of
the evidence, an attack upon the probative sufficiency of
evidence relates not to admissibility but to the weight of
the evidence and is a matter for the trier of fact to
resolve. United States v. Beasley, 102 F.3d 1440,
1451 (8th Cir. 1996).
Briggs's Motion in Limine (Filing No. 789)
Motion in Limine to Exclude References to, Evidence of, and
Argument regarding the MTD, Husqvarna, and Schiller
moves to preclude three sets of settlement and license
agreements-a November 25, 2015 Settlement Agreement between
Exmark and Briggs's former co-defendant Schiller (Filing
No. 792-2, Exhibit (“Ex.”) 1); a January 1, 2018
Settlement and License Agreements between Toro/Exmark and MTD
(Filing No. 792-3, Filing No. 792-4, Exs. 2-3), and April 1,
2018 Settlement and License Agreements between Toro/Exmark
and Husqvarna (Filing No. 792-5, Filing No. 792-6, Exs. 4-5)
(together, the “Agreements”). The Court is
advised that the parties have reached an agreement with
respect to the MTD and Husqvarna agreements and the motion
will be denied as moot with respect to those agreements.
respect to the Schiller agreement, Briggs argues that the
Schiller agreement was premised on the jury verdict award
from the 2015 trial, which in turn was premised on expert
testimony that was later rejected by the Court of Appeals for
the Federal Circuit (“Federal Circuit”). Further,
it contends the Schiller agreement was entered into under
threat of bankruptcy and sixteen years after the hypothetical
negotiation at issue. It argues the agreement has little, if
any, probative value and will unfairly prejudice Briggs.
opposes the motion saying there is evidence that the
settlement was not, in fact, based on the 2015 verdict. It
also contends the evidence is probative and argues that
Briggs intends to rely on the Scag agreement which was also
entered into years after the hypothetical negotiation and
covers patents beyond the '863 patent. It argues that
similarities and differences between the Schiller agreement
and the circumstances of the hypothetical negotiation go to
the weight of the agreement in the jury's damages
analysis, not its admissibility.
on the circumstances, a license agreement entered into in
settling an earlier patent suit sometimes is admissible in a
later patent suit involving the value of the patented
technology, and sometimes is not. Prism Techs. LLC v.
Sprint Spectrum L.P., 849 F.3d 1360, 1368-69 (Fed.
Cir.), cert. denied, 138 S.Ct. 429 (2017). Rule 403
provides for the exclusion of otherwise relevant evidence
when the probative value of that evidence is substantially
outweighed by the danger of unfair prejudice, confusing the
issues, or misleading the jury. LaserDynamics, Inc. v.
Quanta Computer, Inc., 694 F.3d 51, 77 (Fed. Cir. 2012).
The particulars of the case that was settled and the
settlement, as well as of the case in which the settlement is
offered as evidence, matter to the Rule 403 balance.
Prism Techs., 849 F.3d at 1370. The Federal Circuit
has approved reliance on licenses, which often will not be in
identical circumstances, as long as reasonable adjustments
for differences in contexts are made. Chrimar Holding
Co., LLC v. ALE USA Inc., 732 Fed.Appx. 876, 887 (Fed.
Cir. 2018); see, e.g., Prism Techs., 849 F.3d at
1368-70 (noting a strong showing in favor of admission).
Circumstances that weigh in favor of admission of a
settlement agreement include a showing of comparable uses of
the patent's technology, that the agreement was reached
after the litigation was far enough along that the record was
fully developed (enhancing the reliability of the basis on
which the parties were assessing the likely outcome); the
timing of the agreement is such that a large share of
litigation costs is already spent (reducing the role of
litigation-cost avoidance in the settlement decision), and
absence of a risk of enhanced damages. See, e.g., Prism
Techs., 849 F.3d at 1369-71. The formulation of the
normal settlement calculus for litigants-"enumerating
‘the cost of the predicted judgment,' ‘its
probability,' and ‘costs of further
litigation'- helps identify why and when a district
court, conducting the inquiry required by Rule 403, can find
earlier patent-suit settlements admissible in valuing a
patented technology.” Id. at 1369 (quoting
Evans v. Jeff D., 475 U.S. 717, 734 (1986)).
Court is unable to assess the probative value of the
challenged agreement in the context of a pretrial motion.
Accordingly, the motion will be denied at this time without
prejudice to reassertion at trial.
Motion in Limine to Exclude References to, Evidence of, and
Argument regarding Constructions of Claim Terms that Deviate
from the Court's Constructions
argues that other claim constructions are improper because
they are irrelevant under Federal Rule of Civil Procedure
401, unfairly prejudicial, confusing, and misleading pursuant
to Rule 403, and would rely on different constructions than
those used to find infringement in contravention of Federal
Circuit precedent. Exmark agrees that the parties should not
deviate from the Court's constructions, and contends that
an order to that effect is necessary. Accordingly, the Court
finds the motion should be granted.
Motion in Limine to Exclude Argument that Mulching Mowers are
not Prior Art
argues that mulching mowers are relevant to damages to show
the nominal or incremental value of the baffle claimed in the
‘863 patent, which Exmark argues was a big advance over
the prior art and is a market differentiator. Exmark contends
the evidence is relevant only to the invalidity defense and
is now moot.
the first trial, the Federal Circuit affirmed this
Court's evidentiary ruling limiting prior art evidence on
damages to side-discharge mowers, finding that Claim 1 of the
'863 patent was directed only to side-discharge mowers.
SeeExmark Mfg. Co. v. Briggs & Stratton
Power Prods. Grp, LLC, 879 F.3d 1332, 1352 (Fed. Cir.
2018). The Court sees no reason to depart from its prior
ruling but will reserve ruling to see how the evidence
develops. The proponent of the evidence will be required to
establish relevance and ...