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`Amini Innovation Corp. v. Anthony California Inc.
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`CASE NO.: CV 03-8749
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`UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF
`CALIFORNIA
`
`2006 U.S. Dist. LEXIS 100800
`
`September 21, 2006, Decided
`September 25, 2006, Docketed
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`[*1] COUNSEL PRESENT FOR
`COUNS EL:
`
`PLAINTIFF(S): Not Present.
`
`COUNSEL PRESENT FOR DEFENDANT(S): Not
`Present.
`
`JUDGES: THE HONORABLE S. JAMES OTERO,
`UNITED STATES DISTRICT JUDGE.
`
`OPINION BY: S. JAMES OTERO
`
`OPINION
`
`CIVIL MINUTES - GENERAL
`
`PROCEEDINGS (in chambers): Order re Motions in
`Limine
`
`Plaintiff's Motion in Limine #1
`Plaintiff moved to exclude the report and testimony
`of Defendants' witness Daniel McConaughy under FRE
`702. Mr. McConaughy was offered as a rebuttal expert
`witness under FRCP 26(a)(2)(B), 1 to explain to the jury
`flaws with the methodology he perceives in Plaintiff's
`expert reports. Plaintiff argues that Mr. McConaughy's
`report is deficient for failing to contain its own damage
`calculations, and that Mr. McConaughy testified that "he
`could not find anything incorrect with Plaintiff's damages
`expert['s] ... opinion." Mot. page 2. Plaintiff further criti-
`cizes Mr. McConaughy for not being a specialist in
`econometrics.
`
`
`
`
`1 "(B) Except as otherwise stipulated or di-
`rected by the court, this disclosure shall, with re-
`
`spect to a witness who is retained or specially
`employed to provide expert testimony in the case
`or whose duties as an employee of the party reg-
`ularly involve giving expert testimony, be ac-
`companied by a written report [*2] prepared and
`signed by the witness. The report shall contain a
`complete statement of all opinions to be ex-
`pressed and the basis and reasons therefor; the
`data or other information considered by the wit-
`ness in forming the opinions; any exhibits to be
`used as a summary of or support for the opinions;
`the qualifications of the witness, including a list
`of all publications authored by the witness within
`the preceding ten years; the compensation to be
`paid for the study and testimony; and a listing of
`any other cases in which the witness has testified
`as an expert at trial or by deposition within the
`preceding four years."
`These criticis ms are off the mark. Defendants are
`entitled to provide a rebuttal expert under the FRCP, and
`as Mr. McConaughy's report and testimony are "intended
`solely to contradict or rebut" the Plaintiff's report it was
`not necessary for Mr. McConaughy to conduct its own
`damage calculations. FRCP 26(a)(2)(C). 2
`
`
`2 "(C) These disclosures shall be made at the
`times and in the sequence directed by the court.
`In the absence of other directions from the court
`or stipulation by the parties, the disclosures shall
`be made at least 90 days before the trial date or
`the date the [*3] case is to be ready for trial or,
`if the evidence is intended solely to contradict or
`rebut evidence on the same subject matter identi-
`fied by another party under paragraph (2)(B),
`
`AVS EXHIBIT 2031
`Toyota Inc. v. American Vehicular Sciences LLC
`IPR2013-00417
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 2
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`within 30 days after the disclosure made by the
`other party. The parties shall supplement these
`disclosures when required under subdivision
`(e)(1)."
`The Court finds upon reviewing the deposition tran-
`scripts that Mr. McConaughy did not testify that "he
`could not find anything wrong with Plaintiff's ... opin-
`ion." Rather, Mr. McConaughy stated that Plaintiff's
`opinion was conclusory and therefore that it was impos-
`sible to determine the appropriateness of the methods or
`results contained in Plaintiff's opinion.
`While Mr. McConaughy may or may not be an ex-
`pert in econometrics, he is an expert in damages calcula-
`tions. He has testified many times on damages, has a
`Ph.D. in finance, and teaches and publishes on the sub-
`ject. These amply demonstrate his qualifications under
`Daubert. Plaintiff's argument that an econometrics expert
`is necessary to critique Plaintiff's expert report assumes
`that the methodology of Plaintiff's report is appropriate
`for use in damages calculations. This very assumption is
`what Defendants [*4] intend for the report and testi-
`mony of Mr. McConaughy, an expert in damages calcu-
`lations, to rebut.
`The motion is DENIED.
`
`
`Plaintiffs Motion in Limine #2
`Plaintiff moves to preclude Defendants from relying
`on a § 112 patent invalidity defense, which was not spe-
`cifically pleaded in the First Amended Answer. Plaintiff
`implicitly relies on FRCP 12(b) and 15 and FRE 402.
`Compared to Defendants' Motion in Limine #4, the par-
`ties' arguments and their justifications for their actions
`are mirror images of each other. Because § 112 defenses
`were not pled and discovery was not conducted, De-
`fendants are precluded from introducing evidence or
`making arguments referring to § 112.
`The motion is GRANTED.
`
`
`Plaintiffs Motion in Limine #3
`Plaintiff moves to preclude Defendants from relying
`on an "advice of counsel" defense. Plaintiff implicitly
`relies on FRCP 12(b) and FRE 402 in addition to FRCP
`33 and 34. In response to an interrogatory asking wheth-
`er Defendants had sought advice of counsel, Defendants
`answered in the negative. Plaintiff asserts, and Defend-
`ants do not deny, that Defendants have not subsequently
`produced an opinion of counsel. In the First Amended
`Answer, Defendants denied infringing willfully [*5] but
`did not set forth reliance on an opinion of counsel as an
`affirmative defense. Vector Research, Inc. v. Howard &
`Howard Attorneys P.C., 76 F.3d 692 (6th Cir. 1996).
`
`Contrary to what Plaintiff urges through its mis-
`placed reliance on a Sixth Circuit state law tort case,
`reliance on the advice of counsel is not an affirmative
`defense in patent law. Rather, it is one factor in deter-
`mining whether
`infringement,
`if found,
`is willful.
`Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v.
`Dana Corp., 383 F.3d 1337, 1347 (Fed.Cir. 2004).
`Therefore, Defendants need not have listed advice of
`counsel as an affirmative defense in the First Amended
`Answer in order to raise the issue at trial.
`Questions of privilege and discoverability that arise
`from willfulness based on advice of counsel necessarily
`involve issues of substantive patent law, and are there-
`fore controlled by Federal Circuit precedent. In re Spal-
`ding Sports Worldwide, Inc., 203 F.3d 800, 803-804
`(Fed.Cir. 2000). Defendants who announce that they will
`rely on advice of counsel to preclude a finding of willful
`infringement waive attorney-client privilege with respect
`to all communications on that subject matter. In re
`Echostar, 448 F.3d 1294, 1299 (Fed.Cir. 2006). [*6]
`Those communications must therefore, be produced if
`requested.
`For this reason, Defendants cannot rely on the de-
`fense of advice of counsel at trial. Although requested by
`Plaintiff, no such advice of counsel was produced by
`Defendants during discovery. Under FRCP 37(c)(1) and
`the rule of Echostar the advice must have been produced
`in order to rely on it at trial. Zhang v. American Gem
`Seafoods, Inc., 339 F.3d 1020, 1028 (9th Cir. 2003). The
`Court observes that it appears from Defendants' interrog-
`atory response that no such advice of counsel exists.
`Therefore, any legal prohibition against the Defendants
`introducing advice of counsel would appear to be an
`empty one.
`In the present case, it appears that Plaintiff will ar-
`gue, under the Knorr-Bremse standard, that Defendants
`should be found to have infringed willfully, based in part
`on the Defendants' failure to obtain an opinion of coun-
`sel. Defendants must be permitted to rebut this argument,
`for example by arguing to the jury that little weight
`should be put on the absence of an. opinion of counsel,
`or by allowing Defendants to testify why an opinion of
`counsel was not sought. The Plaintiff's motion that De-
`fendants be "barred from referring [*7] to, presenting
`any testimony on, or making any argument concerning
`advice of counsel at trial" is over-broad, because it would
`preclude Defendants from rebutting an argument con-
`cerning the absence of, as well as the presence of advice
`of counsel.
`The motion is therefore GRANTED IN PART,
`WITH RESPECT TO PROVING THE PRESENCE OF
`ADVICE OF COUNSEL, AND DENIED IN PART,
`WITH RESPECT TO REBUTTING PLAINTIFF'S
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`

`

`2006 U.S. Dist. LEXIS 100800, *
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`Page 3
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`WILLFULNESS ARGUMENTS WITH RESPECT TO
`THE ABSENCE OF ADVICE OF COUNSEL.
`
`Plaintiff's Motion in Limine #4
`Plaintiff moves to exclude as hearsay under FRE
`802 Defendants' Exhibits 229 and 328, which according
`to Defendants are photographs taken from "published
`furniture catalogs and the like." Opp'n page 4.
`The words appearing with the photographs are hear-
`say for the proposition that they represent "examples of
`furniture available in the marketplace." Mot. page 1.
`Similarly the exhibits are hearsay for proving the truth of
`any other assertion in the exhibits, such as the price or
`description of the goods in the catalogs.
`Defendants rely on FRE 803(17) as an exception to
`the hearsay rule: "Market quotations, tabulations, lists,
`directories, or other published compilations, generally
`used and relied [*8] upon by the public or by persons in
`to FRE
`particular occupations." The commentary
`803(17) explains that this exception is intended to allow
`the admission of information from lists of information
`which are generally reliable and contain information
`which is hard to prove another way, such as commodity
`prices printed in newspapers, or telephone numbers
`printed in telephone directories. Defendants cite no case
`for the proposition that this rule should be expanded to
`encompass catalogs of goods for sale.
`However, the photographs may be admissible for
`other purposes, such as prior art for the design patents or
`to show that certain purportedly copyrighted elements
`were in the public domain. These uses of the exhibits do
`not seek the prove the truth of what is asserted. Thus, so
`long as foundation is laid and the exhibits are not used
`for an improper purpose and the words appearing with
`the photographs are redacted, the exhibits are admissible.
`The key issue in using the photographs as prior art
`for the design patents or to show that certain purportedly
`copyrighted elements were in the public domain is prov-
`ing when the catalogs were published. Defendant Chang
`presumably can testify about when [*9] he acquired the
`catalogs. If he can testify that he acquired the catalogs
`before the "critical date," and testify how he made the
`copies from the catalogs, then the photographs are ad-
`missible. (If the exhibits are offered for these limited
`purposes, it is not important whether the photographs in
`the catalogs accurately depict anything, because a
`"printed publication" discloses to the public the ideas
`which are contained within it.)
`Regarding the FRE 901 authentication objection, the
`issue again depends on what the exhibits are offered to
`prove. While the Defendants may be able to authenticate
`that the photographs came from the catalogs, they have
`
`not offered to authenticate that the photographs in the
`catalog accurately represent what they purport to depict.
`Thus, the exhibits are not admissible to prove that the
`photographs accurately represent particular pieces of
`furniture.
`However, if the exhibits are offered to prove that
`certain designs were published and made known to the
`public before the filing of the design patent, the Defend-
`ants' offer of authentication is sufficient.
`The motion is GRANTED IN PART, THE WORDS
`APPEARING ON THE PHOTOGRAPHS ARE TO BE
`[*10]
`REDACTED. ASSUMING DEFENDANTS
`
`CAN ESTABLISH THAT THE CATALOGS WERE
`ACQUIRED BEFORE THE CRITICAL DATA, THEY
`ARE ADMISSIBLE TO SHOW THAT PURPORT-
`EDLY COPYRIGHTED ELEMENTS W ERE IN THE
`PUBLIC DOMAIN. PLAINTIFF MAY OFFER AN
`INSTRUCTION TO ESTABLISH THAT THE EX-
`HIBITS ARE RECEIVED FOR A LIMITED PUR-
`POSE. The motion is OTHERWISE DENIED.
`
`Plaintiff's Motion in Limine #5
`Plaintiff moves to exclude as hearsay under FRE
`802 exhibits 239 and 284-286, which "consist of down-
`loaded internet web pages describing the physical char-
`acteristics of cat's/lion's paws." Opp'n page 2. These web
`pages are hearsay to prove the statements asserted with-
`in, e.g., the physical characteristics of paws.
`Insofar as the web pages could be admissible as pri-
`or art, Plaintiff asserts, and Defendants do not deny, that
`the web pages are newer than the design patent's filing
`date and therefore the web pages are not prior art. Simi-
`larly, the web pages are too new to show that certain
`elements are found in the public domain.
`The motion is therefore GRANTED.
`
`
`Sua Sponte Judicial Notice
`To dispense with the continuing dispute over
`whether cats have five toes on their forepaws: ADDI-
`TIONALLY, UNDER FEDERAL RULE OF EVIDENCE
`201 THE COURT TAKES JUDICIAL NOTICE THAT
`MANY [*11] CATS, INCLUDING LIONS, HAVE
`FIVE TOES ON THE FOREPAWS AND FOUR ON
`THE BACK. One of the five toes on the forepaw is a
`"dew claw" not in the same plane as the other four toes.
`IF PARTIES CAN STIPULATE TO ONE OR TWO
`IMAGES OF LION OR CAT PAW ANATOMY TO
`SHOW THE JURY, THEY ARE PERMITTED TO DO
`SO.
`
`See footnote two of summary judgment order. For
`toes
`specifically,
`see
`
`lion
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 4
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`(excerpt
`http://natureinstitute.org/txt/ch/horselion.htm
`from Goethe's Way of Science: A Phenomenology of Na-
`ture, edited by David Seamon and Arthur Zajonc) ("The
`lion's front feet have five toes, the back feet four.").
`
`Cat toes visible in photograph at:
`http://biology.kenyon.edu/heithausp/cat-tutorial/fore
`limb/radius-ulna.htm
`
`
`
`
`
`
`Plaintiff's Motion in Limine #6
`Plaintiff moves to exclude certain other photo-
`graphs, exhibits 228 and 261-271 as lacking relevance
`under FRE 402 and authentication under FRE 901.
`Plaintiff also objects to these exhibits based on prejudice
`under FRE 403 and hearsay under FRE 802. The photo-
`graphs show details of elements in Plaintiff's and De-
`fendants' designs. Plaintiff argues
`that an ele-
`ment-by-element comparison is prejudicial and irrelevant
`to a design patent infringement claim, and therefore
`photographs [*12] of design elements are irrelevant.
`While an element by element comparison of the
`claimed design and the product which is alleged to be
`infringing would be improper, see Amini Innovation
`Corp. v. Anthony California, Inc., 439 F.3d 1365, 1372
`(Fed.Cir. 2006), detailed photographs of the elements are
`not per se improper. Detailed photographs can aid the
`jury in understanding the similarities and differences
`between the designs, even as the jury determines in-
`fringement under the proper "design as a whole" test set
`out in Gorham Co. v. White, 81 U.S. 511, 528, 20 L. Ed.
`731 (1871). See Black & Decker, Inc. v. North American
`Philips Corp., 632 F. Supp. 185, 228 U.S.P.Q. 659, 661
`(D. Conn. 1986). For example, juries are permitted (and
`in fact required) to view hidden features of the designs, if
`the features are visible at some point in the article's life.
`Contessa Food Prods. Inc. v. Conagra, Inc., 282 F.3d
`1370, 1379-80 (Fed.Cir. 2000). This is because the ordi-
`nary observer test is based upon normal use, and normal
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 5
`
`use is not limited to one glance at the time of sale. Ra-
`ther, normal use extends from the time when the article is
`manufactured to the time when the article is destroyed or
`lost. Id. Thus, by illuminating features [*13] to the jury
`which may not be visible at the time of sale, the photo-
`graphs can be useful.
`Moreover, the comparison photographs can be use-
`ful in the design patent case because "even though the
`court compares [the patented item with the alleged in-
`fringing item] through the eyes of the ordinary observer,
`it must nevertheless, to find infringement, attribute their
`similarity to the novelty which distinguishes the patented
`[item] from the prior art." Lawman Armor v. Winner
`Int'l, 437 F.3d 1383, 1386 (Fed.Cir. 2006) (quoting Lit-
`ton Systems v. Whirlpool, 728 F.2d 1423 (Fed.Cir.
`1984)). The Federal Circuit indicated in this litigation
`that this is the correct standard for design patent in-
`fringement, when it cited Bernhardt, LLC. v. Collezione
`Europa USA, Inc., 386 F.3d 1371, 1377 (Fed.Cir. 2004)
`(citing Litton Systems). Thus, it is necessary to determine
`the "points of similarity" between the two designs in or-
`der to find design patent infringement, and the photo-
`graphs can assist in this respect.
`Defendants have offered to authenticate the exhibits,
`which overcomes Plaintiff's objection of lacking authen-
`tication.
`Plaintiff concedes that the element by element ex-
`hibits may be useful for the copyright [*14] infringe-
`ment claim especially if many of the elements in Amini's
`works came from the public domain. Apple Computer,
`Inc. v. Microsoft Corp., 35 F.3d 1435, 1442-43 (9th Cir.
`1994). The jury will be instructed on the proper stand-
`ards to apply for finding design patent and copyright
`infringement, and therefore the use of the photographs
`will not prejudice the design patent part of the case.
`Assuming proper foundation is laid at trial, the mo-
`tion is DENIED. PLAINTIFF MAY SEEK A LIMIT-
`ING INSTRUCTION.
`
`Plaintiff's Motion in Limine #7
`Plaintiff moves to foreclose Defendants from chal-
`lenging Amini's ownership of the copyrights-in-suit, as
`well as the validity of the copyrights-in-suit, under the
`"law of the case" doctrine. Plaintiff points to the sentence
`in the appellate opinion of this case, "the parties do not
`disagree that Amini owns the disputed copyrights and
`that they are valid." Amini Innovation Corp. v. Anthony
`California Inc., 439 F.3d 1365, 1368 (Fed.Cir. 2006).
`Plaintiff argues that this statement of the Federal Circuit
`means that Amini owns the copyrights and that they are
`valid, and that the law of the case doctrine precludes
`further litigation on the matter. Plaintiff further asserts,
`[*15] without offering any support, that Defendants
`
`conceded on appeal that Amini owns valid copyrights on
`the designs.
`The statement by the Federal Circuit is not a finding
`that Amini owns the disputed copyrights and that they
`are valid. Nor could it be, as the issue was not reached by
`this Court in the summary judgment order, which was
`the basis for the appeal. The statement by the Federal
`Circuit is simply that the issue was not before the appeals
`court for review.
`The Court has reviewed Defendants' appellate brief
`and does not find support for Plaintiff's unsupported as-
`sertion that Defendant conceded the validity of Amini's
`copyrights on appeal.
`Regarding Plaintiff's new argument in the reply that
`Defendants have failed to exhaust their administrative
`remedies before cancelling a copyright, Defendan'ts have
`not sought to invalidate Plaintiff's copyrights. Rather,
`Defendants are seeking to avoid liability by contesting
`ownership and validity.
`The motion is DENIED.
`
`
`Plaintiffs Motion in Limine #8
`Plaintiff moves to exclude Defendants' Exhibits 297
`and 305-325. The exhibits are photocopies of books,
`mostly in the personal library of Jack Schmitt, the de-
`signer of the '218 patent.
`Plaintiff argues [*16] that the photocopies have not
`been authenticated under FRE 901. However the De-
`fendant has offered to authenticate them. The parties
`should also stipulate to the authenticity unless Plaintiff
`has specific reasons to believe they are not authentic.
`(Initial Standing Order at 15.)
`Plaintiff argues, implicitly under FRE 402 and
`FRCP 12(b), that Defendants did not make, in either the
`Answer or the First Amended Answer, the affirmative
`defense of inequitable conduct before the patent office. 3
`Thus, Plaintiff argues, the exhibits are not admissible to
`show inequitable conduct. This is true. However, the
`exhibits are admissible for another purpose.
`
`
`3 Inequitable conduct is the intentional con-
`cealment from the patent office of information
`material to patentability. A finding of inequitable
`conduct results in the patent being unenforceable,
`and often results in the institution of disciplinary
`proceedings against the original patent attorney
`by the patent office.
`Plaintiff argues that the exhibits are not probative.
`However, they are probative to novelty. Defendants were
`able to establish in deposition that the books predated the
`filing of the application of the patent at issue. Although
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 6
`
`Plaintiff [*17] argues that the books are insufficient to
`show non-novelty, such an argument appropriately made
`at trial.
`Plaintiff argues that the exhibits are not probative to
`obviousness, as the Defendants have not shown a moti-
`vation to combine the references. Plaintiff cites several
`cases requiring a motivation to combine in order to prove
`that a patent is obvious. Yet it is inappropriate to make
`exclude obviousness-type evidence before Defendants
`have had an opportunity to present a motivation to com-
`bine.
`More importantly, a motivation to combine may not
`be necessary to show non-infringement of the design
`patent. (Plaintiff cited cases requiring a motivation to
`combine for invalidity of utility patents.) Determining
`infringement of a design patent involves determining
`similarity according to an "ordinary observer," then test-
`ing whether the similarity can be attributed to the novelty
`which distinguishes the patented item from the prior art.
`Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386
`F.3d 1371, 1377 (Fed.Cir. 2004). According to a unani-
`mous Federal Circuit panel this year, a new combination
`of features found in the prior art is not a point of novelty.
`Lawman Armor Corp. v. Winner Intern., LLC, 437 F.3d
`1383, 1385-86 (Fed.Cir. 2006). [*18] Thus, assuming
`Lawman Armor represents the current state of Federal
`Circuit jurisprudence, Defendants may be able to prove
`non-infringement with these exhibits, even without
`showing a motivation to combine. Compare Lawman
`Armor Corp. v. Winner-Intern., LLC, 449 F.3d 1192,
`1194 (Fed.Cir. 2006) (Newman, J., dissenting from de-
`nial of petition for rehearing en banc) (there is doubt
`about Lawman Armor's consistency with other Federal
`Circuit cases). Thus the exhibits are relevant, and there-
`fore admissible.
`Plaintiff argues that the exhibits should be excluded
`as prejudicial under FRE 403, but to the extent there is a
`danger of confusing the jury, an instruction can cure the
`problem.
`Assuming proper foundation is laid at trial, the mo-
`tion is DENIED. PLAINTIFF MAY SEEK A LIMIT-
`ING INSTRUCTION.
`
`Plaintiff's Motion in Limine #9
`Plaintiff moves to exclude Exhibits 274-278 and
`281-283 on the basis of hearsay under FRE 802 and lack
`of authentication under FRE 901. These Exhibits are
`photocopies from books. Exhibit 274 purports to date
`from 1957. Exhibit 275 purports to date from 1959. Ex-
`hibit 276 purports to date from 2000. Exhibit 277 pur-
`ports to date from 1997. Exhibit 278 purports to date
`from 1998. [*19] Exhibit 281 purports to date from
`
`1981. Copies of Exhibits 282 and 283 were not provided
`to the Court in advance.
`These documents are hearsay for their own publica-
`tion dates. Without knowing the publication dates, the
`documents are not admissible as prior art.
`However, all of these exhibits, according to the De-
`fendants, were supplied by Defendant James Chang. He
`will be able to authenticate these documents at trial.
`Opp'n page 4. The Court assumes that Defendant Chang
`will be able to testify that he acquired these books before
`the filing date of the patent, thereby making the books
`prior art without needing to rely on the books' statements
`of their own publication dates.
`Accordingly, the court reserves ruling until trial.
`
`
`Plaintiffs Motion in Limine #10
`the Defendants'
`Plaintiff moves
`to exclude
`self-prepared statement of costs as untimely produced
`under FRCP 37(c)(1) and Zhang.
`Plaintiff alleges, and Defendant does not disagree,
`that the "profit-loss" summary document attached as Ex-
`hibit G to the Nielsen declaration was produced after the
`close of discovery. Plaintiff requested "all documents
`relating to profits made from sale of the Accused Prod-
`ucts," and Defendant does not argue that [*20] the re-
`quest was untimely. Therefore, the "profit-loss" summary
`is excluded at trial. See Initial Standing Order ¶ 15;
`Zhang v. American Gem Seafoods, Inc., 339 F.3d 1020,
`1028 (9th Cir. 2003).
`Defendants argue that it had assumed that Plaintiff
`was seeking to recover actual damages, not the profits of
`the alleged infringers. However, this imprudent assump-
`tion was not verified with the Plaintiff in the form of a
`letter. Further, while Defendants stated in their opposi-
`tion that "Plaintiff is well aware of the language of 17
`U.S.C. § 504(b)" which allows for recovery of the copy-
`right holder's actual damages as well as the infringer's
`profits, Opp'n page 5, the same is true of the Defendants.
`As the Defendants also knew of the second theory of
`recovery, the Defendants cannot claim to have limited
`their discovery production response in good faith.
`Plaintiff's other arguments are moot.
`The motion is GRANTED.
`
`
`Plaintiff's Motion in Limine #11
`Plaintiff moves to exclude the expert reports and
`opinion of Brian Considide, on the grounds of his alleg-
`edly not meeting the Daubert standard of qualification of
`FRE 702, relying on unauthenticated evidence, and not
`being relevant under FRE 402 to the copyrights [*21]
`or patent at issue.
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 7
`
`Mr. Considine is qualified to testify, given his pro-
`fessional experience at the J. Paul Getty Museum in Los
`Angeles. To the extent Plaintiff argues that Mr. Con-
`sidine is unqualified for his lack of familiarity with ordi-
`nary consumers, Plaintiff has the standard backwards. It
`is the jury's role to decide as an ordinary observer, and to
`have an expert testify in this respect would invade the
`realm of the jury. Conversely, Mr. Considine's testimony
`will aid the jury in the aspects of the two part patent test
`and the two part copyright test which require expert tes-
`timony, as explained above in reference to Plaintiff's
`Motion in Limine #6.
`In forming his opinions, Mr. Considine is permitted
`to rely on inadmissible evidence. FRE 703. Assuming
`the proper foundation is laid, Mr. Considine can refer-
`ence the monographs, surveys, and books he relied on in
`formulating his opinions that Plaintiff's designs lack
`originality or novelty. The expert report and attachment,
`however, will not necessarily be received into evidence.
`Plaintiff may reserve its objections for trial.
`
`
`Defendants' Motion in Limine #1
`Defendants move to exclude, under FRCP 37(c)(1)
`and Zhang, an assignment signed [*22] by Jack
`Schmitt, author of the copyrights-in-suit. Defendants
`allege, and Plaintiff does not contest, that the only as-
`signment produced before the close of discovery was an
`employment agreement, where Mr. Schmitt agreed to
`assign his copyrights for any designs he created to Plain-
`tiff. At the summary judgment stage, after the close of
`discovery, Defendants argued that Plaintiff did not own
`the copyrights-in-suit, based on the absence of an actual
`assignment, rather than the mere promise to assign which
`was in the employment agreement. In response, Plaintiff
`provided an actual assignment, which Plaintiff claims
`had been found at the Long Beach office of counsel for
`Plaintiff.
`Defendants argue that the assignment was produced
`late. However, Defendants have not shown that it was
`produced late In response to a demand for production
`pre-dating the discovery cut-off. Plaintiff apparently had
`produced the copyright registration, which itself is prima
`facie evidence of standing, and Defendants do not allege
`that they had asked for the assignment during discovery.
`Thus there was no need to produce the actual assignment
`paper before the close of discovery, either to prove
`standing or to respond [*23] to a request.
`Defendants argue that the assignment has not been
`authenticated. That much appears to be true at present.
`However, Mr. Schmitt will undoubtedly testify at trial,
`and he can be asked then if he signed the assignment
`paper. The Defendants' reliance on a deposition of Mr.
`Schmitt to show that the assignment paper is unauthentic
`
`is misplaced. In that deposition, Mr. Schmitt was appar-
`ently shown the employment agreement and the copy-
`right registration and asked if he signed any other as-
`signment, to which he said that he did not recall. This is
`not the same as showing him the assignment paper, ask-
`ing him if that is his signature on the assignment paper,
`and failing to elicit an affirmative answer. Moreover, the
`parties are to stipulate to authenticity unless the Defend-
`ant has specific reasons to believe that the assignment is
`not authentic. (Initial Standing Order at 15.)
`Assuming proper foundation is laid at trial, the mo-
`tion is DENIED.
`
`Defendants' Motion in Limine #2
`Defendants move to exclude under FRE 404(a) evi-
`dence of another infringement suit against Defendants,
`the "Thomasville litigation."
`The motion is GRANTED pursuant to FRE 403 and
`404(a).
`
`Defendants' Motion in Limine [*24] #3
`Defendants move to exclude the supplemental dam-
`age analysis report and testimony of Robert Trout, pro-
`duced at the deposition of Robert Trout. Plaintiff states
`that "the supplemental damages analysis they complain
`about will not be utilized at the trial in this matter."
`Accordingly, the motion is GRANTED. If Plaintiff
`offers another report which Defendants wish to exclude,
`they may object at trial.
`
`Defendants' Motion in Limine #4
`Defendants move to exclude a new theory of in-
`fringement liability based on the assertion that the works
`are original compilations, Such a motion is inappropriate.
`Motions in limine are used to exclude evidence, not legal
`theories. However, the motion will be understood in the
`same fashion as Plaintiff's motion #2, as a proper motion
`in limine to exclude evidence under FRE 402 and FRCP
`12(b) and 15.
`Defendants' citation to Coleman v. Quaker Oats Co.,
`232 F.3d 1271, 1291-1294 (9th Cir. 2000) is apt. In
`Quaker Oats, the plaintiffs alleged one legal theory of
`liability for discrimination and then added another legal
`theory of liability at the summary judgment phase after
`discovery had closed. The judge held that the lack of
`notice made it hard, if not impossible, [*25] for Quaker
`to defend itself, and refused to allow the defendants to
`amend their complaint to add the second legal theory.
`Thus, the plaintiffs were unable to pursue the second
`legal theory at summary judgment. The 9th Circuit af-
`firmed.
`
`

`

`2006 U.S. Dist. LEXIS 100800, *
`
`Page 8
`
`In this case, where the copyright registrations pro-
`vide notice about the nature and scope of the copy-
`rights-in-suit, Plaintiff's copyright registrations do not
`cover original compilations. Thus, at this stage, Plaintiff
`cannot be allowed to pursue a legal theory of liability
`based on a compilation copyright. As Defendants point
`out, compilation copyrights are sufficiently different that
`substantial preparation would be required to defend
`against a new compilation copyright legal theory.
`Plaintiff's citation to Open Source Yoga Unity v.
`Choudhury, 2005 U.S. Dist. LEXIS 10440 at *5-6 (N.D.
`Cal. 2005) is correct insofar as U.S. law allows supple-
`menting copyright registrations to cover material which
`was previously disclosed in a copyrighted work but not
`covered by the work's original copyright registration. But
`the issue raised by the Defendants is not whether Plain-
`tiff can supplement its copyright registration to include a
`compilation copyright, because [*26] of course it can.
`Rather, the issue is whether, after close of discovery,
`Plaintiff can pursue a new theory of liability at trial. The
`answer is no, after Quaker Oats, if prejudice would be-
`fall Defendant.
`Plaintiff's remark that Defendants had time to move
`to re-open discovery is off the mark, because it reinforc-
`es the point that Plaintiff is attempting to add a legal the-
`ory after the close of discovery. It also assumes, rather
`brashly, that the Court would have granted the motion to
`re-open discovery. See Initial Standing Order. ¶ 15.
`Moreover, if Plaintiff indeed gave notice informally
`to Defendants long ago about its plan to pursue an addi-
`tional legal theory, then Plaintiff had the opportunity at
`that