Willis Electric Co., Ltd. v. Polygroup Limited

U.S. District Court, District of Minnesota January 5, 2024

Trial Court Opinion

                 UNITED STATES DISTRICT COURT                            
                    DISTRICT OF MINNESOTA                                


Willis Electric Co., Ltd.,              Case No. 15-cv-3443 (JNE/DTS)    

                   Plaintiff,

ORDER

     v.                                                                  

Polygroup Limited et al,                                                 

                   Defendants.                                           


    This matter is before the Court on the motions in limine filed by Plaintiff Willis 
Electric  Co.,  Ltd.  (“Willis  Electric”)  and  Defendants  Polygroup  Limited  (Macao 
Commercial  Offshore),  Polygroup  Macau  Limited  (BVI),  Polytree  (H.K.)  Co.  Ltd., 
Polygroup Trading Limited (collectively, “Defendants” or “Polygroup”).  (Dkts. 802, 807, 
816, 829, 828, 849, 854, 857, 861, 864.)  For the reasons addressed below, the Court grants 
in part and denies in part the motions.                                   
                         BACKGROUND                                      
    Willis Electric brings this case pursuant to

35 U.S.C. § 271

et seq., alleging that
Polygroup infringed four patents related to artificial trees owned by Willis Electric.
Polygroup denies infringement and contends that Willis Electric’s patents are invalid. The
parties now move for an order excluding certain evidence at trial.
ANALYSIS
I. Plaintiff’s Motions in Limine
Willis Electric filed several motions in limine seeking to preclude or limit certain
evidence and arguments by Polygroup. Specifically, Willis Electric moved to preclude

Polygroup from: (1) presenting evidence or arguments related to unasserted patent claims,
withdrawn patents, or withdrawn causes of action; (2) presenting evidence or arguments
on advice of counsel while maintaining privilege, or presenting executive testimony on
beliefs about infringement or validity; (3) introducing 2020 and later sales data not
produced in discovery; (4) presenting inequitable conduct or duty of candor evidence or
arguments; and (5) referencing the parties’ prior litigation history. The Court addresses

each motion in turn.
A. Unasserted Claims, Withdrawn Patents, and Causes Not at Issue
Willis Electric moves to exclude any evidence or argument related to unasserted
claims, arguing such evidence is irrelevant under Fed. R. Evid. 402 and any marginal
relevance is outweighed by the danger of unfair prejudice, confusion of the issues, and

wasting time under Fed. R. Evid. 403. Glaros v. H.H. Robertson Co.,

797 F.2d 1564

 (Fed. 
Cir. 1986); Bombardier Recreational Prods., Inc. v. Arctic Cat, Inc., No. 12-2706,

2017 WL 5256741

 (D. Minn. Nov. 11, 2017).  Willis Electric contends each claim must be 
evaluated independently, differences in burden of proof and claim construction between 
PTAB proceedings and district court would require counter-evidence, and the case has 

already been substantially narrowed.                                      
    Polygroup opposes the motion as overbroad, arguing evidence related to the eight 
underlying independent claims is highly relevant to the obviousness analysis for the still-
asserted dependent claims.

35 U.S.C. § 112

(d); Electro-Mech. Corp. v. Power Distrib. 
Prods., No. 1:11CV00071,

2013 WL 1859229

 (W.D. Va. Mar. 13, 2013).  Polygroup cites 
authority that the validity status of  independent claims can simplify the obviousness 

analysis  for  dependent  claims,  especially  as  to  secondary  considerations  of  non-
obviousness.  Princeton Digit. Image Corp. v. Konami Digit. Entm’t Inc., No. CV 12-1461-
LPS-CJB,

2015 WL 219019

 (D. Del. Jan. 14, 2015).  It distinguishes the cases cited by 
Willis Electric.  Polygroup also argues excluding this evidence would confuse the jury and 
cause unfair prejudice, citing Adams v. Fuqua Indus., Inc.,

820 F.2d 271, 273

 (8th Cir. 
1987) and Fed. R. Evid. 403.                                              

    Polygroup argues Willis Electric’s motion is overbroad in seeking to exclude all 
evidence and arguments related to unasserted claims.  Polygroup agrees certain unasserted 
claim evidence should be excluded, such as details of the inter partes review proceedings 
and  causes  of  action  previously  dismissed.    However,  Polygroup  contends  the  eight 
underlying independent claims are highly relevant as the still-asserted dependent claims 

incorporate their limitations by reference.

35 U.S.C. § 112

(d); Electro-Mech. Corp.,

2013 WL 1859229

, at *2.                                                        
    Polygroup emphasizes dependent claims necessarily incorporate all limitations from 
the independent claims under

35 U.S.C. § 112

(d).  Thus, excluding any reference to the 
independent  claims  would  preclude  presenting  the  full  scope  of  limitations  for  the 

dependent asserted claims.                                                
    Additionally, Polygroup argues the invalidity status of the independent claims is 
directly relevant to evaluating the obviousness of the dependent asserted claims.  Princeton 
Digit. Image,

2015 WL 219019

, at *3; Ceiva Logic Inc. v. Frame Media Inc., No. SACV 
08-00636-JVS (RNBx),

2009 WL 10673158

, at *8.  In particular, Polygroup contends the 
point of novelty for any secondary considerations evidence must arise from the additional 

limitations in the dependent claims, not the now-invalid independent claims.  Ormco Corp. 
v. Align Tech., Inc.,

463 F.3d 1299, 1311-13

 (Fed. Cir. 2006).            
    Polygroup goes on to argue the cases cited by Willis Electric are distinguishable and 
inapposite to this situation involving asserted dependent claims with underlying invalid 
independent claims.  Cordis Corp. v. Medtronic, Inc.,

511 F.3d 1157, 1183-84

 (Fed. Cir. 
2008); Bombardier Rec. Prod.,

2017 WL 5256741

, at *3.  Polygroup notes Cordis involved 

claims with “differing language and scope,” while here the claims substantially overlap.  It 
also  distinguishes  the  Bombardier  unasserted  claims  as  not  involving  underlying 
independent claims, and differentiates the other cited cases factually.   
    Polygroup further argues excluding evidence about the invalidity status of the 
underlying independent claims would confuse the jury and unfairly prejudice Polygroup.  

Adams,

820 F.2d at 273

; Fed. R. Evid. 403.  Because the asserted claims incorporate 
limitations from the independent claims, failing to reference the independent claims would 
itself prove confusing.  Additionally, without the context that the independent claims are 
invalid, Polygroup contends it would be hampered in its ability to argue the dependent 
claims’ point of novelty must arise from the additional limitations in those claims.   

    Polygroup notes that while the different standards between the inter partes review 
and district court may not be relevant, the mere status of the independent claims as invalid 
and freely available to practice remains pertinent to the obviousness evaluation.  Cuozzo 
Speed Techs., LLC v. Lee,

579 U.S. 261, 278

(2016).
In light of these arguments regarding relevance to the obviousness analysis and
potential jury confusion, Polygroup urges the Court to deny Willis Electric’s motion in

limine and allow reference to the underlying independent claims and their invalidity at trial.
While the Court recognizes merit to the arguments on both sides, it agrees with
Polygroup that excluding all evidence related to the eight underlying independent claims
would impose an undue straightjacket on the invalidity arguments at trial. Given the
asserted claims’ dependency on the independent claims for their limitations, and the
relevance of the independent claims’ status to evaluating secondary considerations, some

reference is permissible.
However, the Court also acknowledges Willis Electric’s concerns about jury
confusion given the differing standards between PTAB proceedings and district court
litigation. Details of the specific analyses would risk diverting the issues into an
unnecessary foray into administrative law. As such, a middle ground is appropriate to

allow relevance while minimizing these Rule 403 risks.
Accordingly, the parties may reference the existence of the underlying independent
claims and may note their ultimate determination to be invalid and freely available to
practice. However, the parties should refrain from in-depth discussion of the details in the
Patent Office proceedings themselves. The focus should remain on how this status impacts

the obviousness arguments, not relitigating the minutiae of the IPR decisions.
Additionally, to avoid confusing timelines, the parties should take care to note these
underlying claims were invalidated after the filing of the present lawsuit.
With these limitations, Polygroup may reference the bare status of the underlying
independent claims without reference to burdens of proof or standards unique to IPR

proceedings. Discussion should center on how their present invalidity impacts the asserted
dependent claims. This balances the relevance against potential jury confusion and waste
of time under Rule 403.
Willis Electric’s motion is therefore granted in part as to prevention of detailed IPR
evidence and denied in part as to exclusion of any reference to the invalid underlying
independent claims.

B. Advice of Counsel Privilege and Testimony on Beliefs
Polygroup clearly states in its opposition brief that it “has not sought to, and does
not intend to, rely on advice of counsel at trial.” Polygroup explains that the inclusion of
one privileged email in its exhibits was inadvertent and it provided Willis Electric with a
corrected exhibit. Because Polygroup will not offer evidence about reliance on advice of

counsel, it argues that issues regarding waiver of privilege or using privilege as a sword
and shield are irrelevant.
Willis Electric argues in its motion in limine that under the “fundamental fairness
consideration underlying the sword-shield rule,” the Court should preclude Polygroup from
offering evidence or argument that it obtained legal advice about Willis Electric’s patents

before this lawsuit while Polygroup withholds communications with counsel on that
subject. Willis Electric relies on authority like Advanced Cardiovascular Sys., Inc. v.
Medtronic, Inc.,

265 F.3d 1294, 1309

 (Fed. Cir. 2001) to contend Polygroup cannot use 
attorney-client privilege as both a sword and a shield.                   
    Polygroup argues that under the Supreme Court’s 2016 decision in Halo Elecs., Inc. 
v. Pulse Elecs., Inc.,

579 U.S. 93, 105

, the question of willful infringement now depends 

entirely on the infringer's subjective beliefs.  Polygroup cites the Halo case to contend that 
its understanding of whether its products infringe a valid patent is highly relevant to willful 
infringement.                                                             
    Polygroup points to factual exhibits and deposition testimony showing that years 
before Willis Electric’s patents, Polygroup independently investigated patent landscape 
developments and made efforts to avoid infringement.  Polygroup argues these efforts 

occurred wholly separate from any privileged communications.              
    Relying on Omega Patents, LLC v. CalAmp Corp.,

920 F.3d 1337, 1352

 (Fed. Cir. 
2019), Polygroup contends its lay witnesses can testify about the company’s subjective 
beliefs and results of its “independent investigations.”  Polygroup argues Omega Patents 
confirms this testimony would be about Polygroup’s state of mind rather than improper 

expert testimony.                                                         
    Willis Electric cites Lewis Cheng’s deposition testimony to argue Polygroup’s non-
infringement “opinion” is intertwined with and dominated by privileged communications 
with counsel.  Willis Electric contends Polygroup cannot separate non-attorney discussions 
from attorney advice received.                                            

    Willis Electric also argues testimony from Polygroup’s non-attorneys would be 
irrelevant under Fed. R. Evid. 402 and 403 because they lack qualifications on patent law 
or technology.  Willis Electric contends cases like SSL Servs., LLC v. Citrix Sys., Inc.,

769 F.3d 1073, 1092

 (Fed. Cir. 2014) confirm this testimony has little probative value.   
    After reviewing the parties’ briefing and considering the arguments presented, the 
Court finds that Polygroup has the more compelling position regarding the admissibility of 

evidence concerning its subjective beliefs and state of mind.             
    As Polygroup correctly notes, the Supreme Court’s decision in Halo emphasizes 
that the question of willful infringement turns on the subjective beliefs and knowledge of 
the accused infringer.  See Halo Elecs., 579 U.S. at 105.  Consequently, evidence speaking 
to Polygroup’s subjective understanding and analysis of infringement and validity issues 
is highly probative.                                                      

    Additionally,  Polygroup  cites  to  Federal  Circuit  precedent  in  Omega  Patents 
affirming that accused infringers may introduce testimony from key business personnel 
regarding their “independent investigation” and conclusions about the scope of asserted 
patent rights.  See Omega Pats.,

920 F.3d at 1352

. Polygroup has come forward with
exhibits and deposition citations confirming it performed such independent inquiries into

the patent landscape.
Finally, Polygroup plainly states it does not intend to rely on advice of counsel
evidence that could give rise to privilege waiver or sword-and-shield concerns. This
averment substantially blunts a key basis for Willis Electric’s motion.
In light of the controlling authority and facts regarding Polygroup’s apparent

independent development and analysis efforts, the Court finds that the evidence bears
directly on Polygroup’s state of mind and willful infringement allegations. Accordingly,
the potential prejudice to Willis Electric does not warrant wholesale exclusion under Rule
403. Willis Electric’s objections may be reasserted at trial as necessary.
C. Late Sales Data Not Produced
A key dispute raised in Willis Electric’s motion in limine is whether Polygroup’s

disclosure of previously unseen sales data for unaccused products was improperly late and
should be excluded. Polygroup argues the disclosure was timely and justified, while Willis
Electric claims it was unfairly surprising and prejudicial. The evidence presented supports
Polygroup’s position when the specific timeline and scope of the data requests are
considered.
Regarding whether Polygroup refused to provide the sales data during discovery,

the record does not support Willis Electric’s contention. Willis Electric bases this claim
on an email exchange towards the end of discovery discussing supplementation of
Interrogatory Number 1. However, Polygroup shows that Willis Electric’s original
interrogatory and the discussed supplementation were explicitly limited to financial
information on accused products. The communications do not show a request

encompassing data on unaccused trees. Polygroup cannot have refused a request that was
never made. The Court agrees with Polygroup that Willis Electric fails to demonstrate
Polygroup denied discovery of information it knew Willis Electric sought.
For similar reasons, the unaccused product sales data also appears to fall outside the
scope of Willis Electric’s discovery demands based on the record. As Polygroup notes,

Interrogatory Number 1 sought details on accused trees only. Willis Electric’s
supplementation request reiterated this limitation. The undisclosed sales figures thus do
not seem to be within the information Willis Electric asked Polygroup to provide originally
or as a supplement. With no request encompassing the now-challenged sales numbers,
their omission earlier was justified.

Additionally, Polygroup contends the 2020 sales information did not exist until after
discovery closed in December 2020, as commonsense would dictate. Willis Electric does
not dispute or rebut this factual point. The Court finds no evidence showing Polygroup
could have produced data before it was available. This provides further justification for
the data first appearing with Polygroup’s 2022 rebuttal expert report.
Polygroup argues that even if the unaccused sales data is considered responsive to

Willis Electric’s discovery requests, its disclosure was substantially justified as rebuttal to
the expert opinion of Willis Electric’s damages expert, Michele Riley. Ms. Riley opined
that Polygroup’s redesigned products were not an acceptable non-infringing alternative to
consumers. Polygroup’s expert, Ms. Davis, requested the sales data during expert
discovery in order to directly rebut this opinion and show market acceptance of the

alternative design. Polygroup asserts it produced the data at Ms. Davis’s request in
conjunction with her rebuttal report, as permitted by Rule 26(e).
Willis Electric does not directly address whether the sales data was properly
produced as rebuttal evidence. The Court concludes Polygroup presents a reasonable
explanation for why the data was requested and produced with Ms. Davis’s report - to rebut

opinions that Willis Electric itself introduced through its expert. Using rebuttal expert
evidence to challenge affirmative opinions is justified and commonplace. Polygroup’s
production of data to support its rebuttal opinions appears substantially justified, even if
technically late in the overall litigation.
Furthermore, Polygroup notes that Willis Electric waited 18 months after receiving
the disputed sales data before filing this motion in limine. This significant delay undercuts

Willis Electric’s claims of prejudice from the late disclosure. Polygroup argues that any
surprise or prejudice that may have existed has “evaporated” over this time. The Court
again agrees with Polygroup on this point. If Willis Electric required additional discovery
to address the late-produced sales figures, it had ample time to raise that issue or seek a
continuance. Instead Willis Electric remained silent until the eve of trial. This dilatory
conduct suggests a lack of actual prejudice. The late disclosure therefore appears harmless

as well as substantially justified.
For these reasons, Polygroup’s rebuttal expert reliance on previously-undisclosed
sales data for unaccused products, while technically falling outside the discovery period,
was reasonably explained and responsive to opinions presented by Willis Electric itself.
Any delay or surprise was mitigated by the passage of time before Willis Electric raised

objections. Exclusion of the evidence under FRCP 37(c) would therefore be an unduly
harsh result. Willis Electric’s motion is accordingly denied and Polygroup permitted to
introduce the sales data regarding non-infringing alternatives. This will allow for a full
presentation of the disputed issues and evidence before the jury.
D. Inequitable Conduct Evidence

Polygroup acknowledges that “questions of inequitable conduct will not be tried in
January 2024 and, therefore, they do not intend to offer evidence, testimony, or argument
regarding inequitable conduct or violations of the duty of candor as to the prosecution of
the asserted patents during trial.” Thus, the issue of inequitable conduct itself is moot.
Willis Electric seeks a broad order excluding any “evidence, argument, or
implication about inequitable conduct, the duty of candor to the Patent Office, or

suggesting any impropriety by Willis Electric or its attorneys or agents before the Patent
Office.” However, Polygroup cites case law stating that undisclosed prior art can “carry
more weight” in proving invalidity because it reflects information the PTO lacked.
Microsoft Corp. v. i4i Ltd. P’ship,

564 U.S. 91, 110-11

 (2011).  A blanket prohibition could 
preclude Polygroup from making arguments concerning prior art references GKI Tree and 
Wesley Pine, which are probative of validity but were not disclosed.  Thus, a wholesale 

exclusion would sweep too broadly here given the posture of the case.     
    An order limiting the exclusion solely to evidence offered to prove inequitable 
conduct directly would appropriately balance plaintiff’s concerns about prejudice with 
defendant’s interests in presenting its defenses.  See BioMerieux, S.A. v. Hologic, Inc., No. 
18-21-LPS,

2020 WL 583917

, at *1 (D. Del. Feb. 6, 2020) (allowing undisclosed prior art

so long as no reference to duties of disclosure). This permits evidence to be considered on
the merits while avoiding tangents into improper conduct.
Polygroup seeks to introduce evidence concerning the scope of prior art before the
alleged invention date to help establish obviousness, separate and apart from any
suggestion that Willis Electric violated disclosure duties. Polygroup has a legitimate

interest in demonstrating the level of skill and knowledge in the art at the time through such
evidence. So long as there is no accompanying allegation regarding candor or misconduct
in prosecution, allowing reference to this art for validity defenses is permissible and Willis
Electric’s concerns of prejudice can be alleviated through an instruction to the jury on
limited use.

Polygroup also argues it should be permitted under Rule 608(b) to cross-examine
Willis Electric’s patent prosecution attorney John Fonder on prior allegations he violated
the duty of candor to probe his general character for truthfulness. Willis Electric has
indicated it intends to call Fonder to testify at trial. Cross-examination relating to
credibility has some probative value and should not be categorically prohibited, so long as
the questioning focuses only on truthfulness and not on assertions of inequitable conduct

itself. However, specific objections may be warranted depending on the form of questions
posed. Ruling on those is better reserved for trial.
So for the foregoing reasons, while a blanket exclusion order would be improper
given the issues presented at this stage, limitations crafted to allow relevant evidence only
for purposes other than proving misconduct, paired with an instruction against any

implications or arguments on that topic, appropriately balances the parties’ respective
positions.
Based on the foregoing discussion, an order precluding any evidence or reference
concerning undisclosed prior art or the duty of candor would be overbroad given
Polygroup’s stated intent not to pursue an inequitable conduct defense at trial. As

Polygroup notes, there is probative value to certain evidence concerning Willis Electric’s
alleged inventor’s awareness of undisclosed prior art references for purposes of assessing
the scope of the prior art and obviousness arguments. A blanket exclusion could impair
Polygroup’s ability to present its defenses.
At the same time, it remains improper for Polygroup to introduce evidence aiming
only to establish misconduct before the Patent Office when that issue is not being asserted.

Willis Electric is justified in seeking to avoid such tangents. Hence, while a total bar goes
too far, evidence offered solely on inequitable conduct itself will still be prohibited.
The appropriate balance is to permit reference to prior art not disclosed during
prosecution, but only for other legitimate ends such as demonstrating the state of the art for
obviousness arguments and not as a means of alleging improper conduct. This allows
Polygroup to introduce helpful evidence while preventing straying into inflammatory

implications against Willis Electric’s candor before the Patent Office. Appropriate jury
instructions can reinforce this delineation.
Similarly, cross-examination related to general witness truthfulness may be
permissible if focused squarely on credibility. However, the door to allegations of
misconduct should remain closed absent further developments. Individual objections to

specific questions posed at trial can help police that line and exclude any improper
implications.
Willis Electric’s motion is granted in part and denied in part. Specifically,
Polygroup may not introduce evidence aimed solely at establishing inequitable conduct.
Allegations of misconduct before the Patent Office are not at issue in this case and evidence

offered solely for that improper purpose will be excluded.
However, Polygroup may introduce undisclosed prior art references, such as the
GKI Tree or Wesley Pine, for purposes of demonstrating obviousness or other invalidity
defenses. Using such references to show the state of the art at the time of the alleged
invention, without accompanying allegations regarding failure to disclose, will be
permitted. This balances Willis Electric’s valid concerns about prejudice with Polygroup’s

interests in supporting its defenses.
Finally, this ruling is made without prejudice to any objections Willis Electric may
make to specific questions posed on cross-examination relating to general witness
credibility and truthfulness. Some probing may be proper but depending on the framing
and implications further restrictions may be warranted. Ruling on individual questions will
be reserved for trial.

In summary, Polygroup may not introduce evidence solely aimed at inequitable
conduct, but may reference undisclosed prior art for its defenses. Rulings on the
permissible scope of witness credibility cross-examination will be made during trial.
E. Prior Litigation History
Willis Electric moves to exclude under Federal Rules of Evidence 402, 403 and

404(b) any evidence or references to prior litigation between the parties unrelated to the
present dispute. Willis Electric argues that the multiple prior lawsuits spanning several
years and courts, including patent infringement claims and consent judgments, have no
relevance to the instant claims regarding willful infringement, damages, and invalidity
defenses. Willis Electric further contends that any minimal relevance would be

substantially outweighed by the dangers of unfair prejudice, jury confusion and wasted
time on collateral “mini-trials” under Rule 403 regarding the prior disputes. Finally, it
argues use of the lawsuits would constitute improper character evidence under Rule 404(b).
In opposition, Polygroup contends that the motion should be denied as moot and
premature since it does not currently intend to present evidence on the prior lawsuits.

However, Polygroup argues that if Willis Electric opens the door by presenting evidence
or testimony that Polygroup copies other companies’ products, it should be permitted to
reference the prior lawsuits to rebut such evidence. It further asserts that Rule 403 should
not act as a bar if the evidence becomes relevant.
Polygroup opposes the motion in limine as both premature and overbroad. It does
not presently intend to introduce evidence regarding the prior lawsuits. However,

Polygroup argues that if Willis Electric opens the door by eliciting testimony or evidence
claiming that Polygroup copies other companies’ products while Willis Electric respects
intellectual property rights, the prior lawsuits may become relevant to contradict such
claims. In that event, Polygroup asserts Rules 403 and 404(b) should not preclude
admission. Polygroup cites cases holding that a party may open the door to otherwise

irrelevant evidence and disputes that mini-trials regarding prior lawsuits are inherently
prejudicial. See Slidell, Inc. v. Millennium Inorganic Chemicals, Inc., No. 02-213,

2005 WL 6009982

, at *1 (D. Minn. Jan. 7, 2005); Transclean Corp. v. Bridgewood Servs.,

101 F. Supp. 2d 788, 792

 (D. Minn. 2000).  It further argues any ruling under Rule 404(b) is 
premature absent the context of particular objections.                    

    Willis Electric’s motion is granted.  The Court concludes that the series of prior 
lawsuits spanning several years and courts between these parties regarding different claims 
and patents are irrelevant under Rule 402 and would lead to confusion of the issues, wasted 
time, and unfair prejudice that substantially outweighs any probative value under Rule 403.  
See Cosmos Granite (W.), LLC v. Minagrex Corp., No. 19-cv-1697,

2021 WL 5140226

, at 
*2 (W.D. Wash. Nov. 4, 2021); CellTrust Corp. v. Ionlake, LLC, No. 19-cv-2855,

2023 WL 3052733

, at *4-6 (D. Minn. Apr. 23, 2023). While parties may open the door to
otherwise irrelevant evidence in some circumstances, the Court finds the dangers presented
here are too significant.
Accordingly, Polygroup is precluded from presenting any evidence or argument
regarding the prior lawsuits, even if Willis Electric references intellectual property issues,
under Federal Rules of Evidence 402, 403 and 404(b). This order does not preclude

Polygroup from objecting to specific testimony presented by Willis Electric at trial.
II. Defendants’ Motions in Limine
Polygroup filed several motions in limine seeking to limit or exclude certain
evidence and arguments by Willis Electric. Specifically, Polygroup seeks to preclude
Willis Electric from: (1) introducing evidence, testimony, or arguments related to the

Board’s prior analysis of secondary considerations; (2) presenting evidence, testimony or
arguments about the IPR proceedings themselves; (3) having Fonder offer improper
opinion or legal testimony; (4) entering Hal Poret’s survey, online comments, and related
opinions offered in the IPR, on relevance, hearsay, and disclosure grounds; and (5) offering
late-disclosed testimony, witnesses, and other evidence that Polygroup argues violates

FRCP 26 and causes prejudice. The Court addresses each motion in turn.
A. Board Analysis on Secondary Considerations
Polygroup seeks to preclude any evidence, testimony, or argument relating to the
PTAB’s findings regarding secondary considerations of non-obviousness based on their
contention that collateral estoppel does not apply. Specifically, Polygroup makes several
arguments against giving the PTAB decisions preclusive effect on the issue of secondary

considerations.
First, Polygroup points out that the PTAB’s initial 2018 findings crediting Willis
Electric’s evidence on secondary considerations were made in connection with
independent claims that were subsequently vacated and remanded by the Federal Circuit
in 2019. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd,

759 F. App’x 934

, 943 (Fed. Cir. 
2019).  Because those claims were vacated, Polygroup argues the associated findings on 

secondary considerations cannot have collateral estoppel effect.          
    Additionally,  Polygroup  contends  that  the  PTAB’s  findings  on  secondary 
considerations were not “essential” to the judgment with respect to the asserted claims that 
ultimately survived the IPRs.  See also B&B Hardware, Inc. v. Hargis Indus.,

569 F.3d 383, 388

 (8th Cir. 2009) (to have preclusive effect, determination must be “essential to the 

prior judgment”).  In particular, Polygroup notes that on remand in 2020, the PTAB upheld 
the  surviving  claims  based  on  deficiencies  in  the  asserted  prior  art  rather  than 
considerations of secondary evidence indicia of non-obviousness.  Polygroup Ltd. MCO 
v.Willis Elec. Co., Ltd., No. IPR2016-01610,

2020 WL 5985472

, at *9 (P.T.A.B. Oct. 8,
2020).

Finally, Polygroup highlights that the specific grounds of invalidity asserted at the
upcoming trial are different than those actually litigated before the PTAB during the IPR
proceedings. Polygroup argues this distinction defeats collateral estoppel because the
PTAB’s findings were limited to the particular prior art combinations raised in the IPRs,
which are not at issue in the present litigation.

In response, Willis Electric appropriately concedes it will not actively argue to the
jury that collateral estoppel directly applies to prevent relitigation of the secondary
considerations issues. However, Willis Electric maintains that collateral estoppel
principles should still apply issue preclusion to prevent Polygroup from disputing the
PTAB’s underlying factual findings that secondary indications of non-obviousness exist.
Polygroup has understated the breadth of those findings, which Willis Electric showed

were not as strictly limited to the precise IPR grounds as Polygroup portrays. Thus,
Polygroup should be estopped from disputing those findings, even if full collateral estoppel
effect does not apply to completely prevent Polygroup from making other arguments
against non-obviousness.
While Willis Electric will not ask the jury to decide collateral estoppel applicability,

Willis Electric appropriately intends to preserve the issue for judgment as a matter of law
motions and appeal, which is properly a question of law for the Court. Because Willis
Electric shows the PTAB’s findings on secondary considerations have preclusive effect
under issue preclusion principles, at minimum, Polygroup’s motion to wholly exclude
evidence related to the PTAB’s analysis of secondary considerations is denied.

B. Evidence Regarding Separate IPR Proceedings
Polygroup first argues that the Board’s findings on the surviving claims are
irrelevant because different prior art is asserted for invalidity at trial. Specifically,
Polygroup contends that the IPR decisions finding certain claims not unpatentable have no
relevance since the prior art combinations presented to the PTAB differ from what
Polygroup will assert at trial.

Additionally, Polygroup asserts that discussion of the IPR proceedings would risk
confusing the issues, misleading the jury, and causing undue prejudice. In support,
Polygroup argues that admitting evidence about the IPR proceedings poses a danger of
misleading the jury about the differing standards of proof applied in those proceedings
versus at trial. Polygroup posits this risk substantially outweighs any probative value under
Fed. R. Evid. 403.

Lastly, Polygroup argues the Board’s denial of institution on the ‘617 patent is
likewise irrelevant and admission poses a risk of prejudice. Specifically, Polygroup
contends the decision to deny institution of an IPR regarding the ‘617 patent should be
excluded as irrelevant. Additionally, Polygroup asserts that allowing evidence on the
denial risks confusing the issues and misleading the jury.

Contrary to Polygroup, Willis Electric first contends the IPR decisions are relevant
to Polygroup’s invalidity defense and Willis Electric’s willfulness allegations. Willis
Electric argues the IPR decisions are highly relevant to weigh against Polygroup’s
obviousness defense, given Polygroup relied on similar prior art combinations that were
rejected by the PTAB. Additionally, Willis Electric asserts the decisions are relevant to

willful infringement based on Polygroup’s continued sales after the adverse IPR rulings
regarding validity.
Next, Willis Electric argues any risk of confusion can be mitigated through limiting
jury instructions. Willis Electric maintains that courts routinely allow IPR evidence while
crafting jury instructions to address differences in claim construction standards and burdens
of proof applied in the proceedings. Willis Electric posits Polygroup’s case law is

inapposite or comprises outlier decisions.
Finally, Willis Electric contends the denial of institution is relevant evidence
regarding willfulness. Willis Electric argues denial of institution has been found relevant
and admissible in other cases. Willis Electric further asserts that any differences in legal
standards can be addressed through a limiting instruction to the jury.
The Court first examines whether the IPR decisions are relevant to the invalidity

and willfulness issues to be determined by the jury. The Court agrees with Willis Electric
that there is meaningful overlap with the prior art asserted in the IPR proceedings and what
Polygroup relies on now for its invalidity defense. Specifically, Polygroup continues to
assert the GKI tree references and Otto patent in combination, which closely tracks what
was considered and rejected by the PTAB. This provides a legally meaningful basis for

the jury to weigh against Polygroup’s invalidity case. See, e.g., Microsoft Corp.,

564 U.S. at 111

; Tokai Corp. v. Easton Enters., Inc.,

632 F.3d 1358, 1367

 (Fed. Cir. 2011). 
    Additionally, the Court finds the IPR history pertinent for the jury to assess the 
allegations of Polygroup’s willful infringement.  Courts routinely allow IPR evidence as 
relevant for the willful infringement analysis.  See Illumina, Inc. v. BGI Genomics Co., 

Ltd., No. 19-cv-03770,

2021 WL 4979799

, at *9 (N.D. Cal. Oct. 27, 2021); Contour IP 
Holding LLC v. GoPro, Inc., No. 17-cv-04738,

2021 WL 75666

, at *8 (N.D. Cal. Jan. 8, 
2021).  Here, Polygroup continued sales activity even after final written decisions rejecting 
its invalidity grounds.  The jury should be permitted to weigh this as part of the totality of 
the circumstances in assessing willful infringement.                      

    While  the  Court  agrees  there  are  different  legal  standards  between  the  IPR 
proceedings and the present litigation, the Court believes it can craft an appropriate limiting 
instruction to mitigate any risk of confusion for the jury.  The instruction will explain the 
different burden of proof applied by the PTAB, as well as note that different prior art is 
asserted at present compared to the IPRs.  This is the consensus approach taken by district 
courts allowing IPR evidence while cautioning the jury on these key differences.  See 

Illumina,

2021 WL 4979799

, at *9; L.C. Eldridge Sales Co. v. Azen Mfg. Ltd., No. 6:11-
cv-599,

2013 WL 7964028

, at *3 (E.D. Tex. Nov. 14, 2013).                 
    Finally,  having  found  meaningful  probative  value  and  ability  to  address  the 
prejudice concerns through a limiting instruction, the Court concludes that exclusion under 
Rule 403 is not warranted.  On balance, the risk of confusion or misleading the jury does 

not substantially outweigh the highly probative nature of the IPR evidence.  For these 
reasons, Polygroup’s motion is denied.                                    
    C.   Extraneous Legal Testimony by Witness                           
    Willis Electric intends to call patent prosecutor John Fonder to testify regarding 
factual  matters  within  his  personal  knowledge,  not  as  a  technical  expert  opining  on 

infringement or validity.  Rule 701 of the Federal Rules of Evidence allows testimony to 
be admitted that is rationally based on the witness’s perception, helpful to determining a 
fact in issue, and not based on specialized knowledge within the scope of Rule 702.  Fed. 
R. Evid. 701; see United States v. Shah,

84 F.4th 190, 236, 252

 (5th Cir. 2023).  This allows 
testimony by witnesses with personal knowledge of facts at issue in the case.  At the same 
time, Rule 701(c) prohibits lay witness testimony that is based on “scientific, technical, or 

other specialized knowledge within the scope of Rule 702.”  Fed. R. Evid. 701(c).  If the 
witness has specialized knowledge and his testimony requires that knowledge, he must be 
qualified as an expert under Rule 702 and disclose opinions under Rule 26(a)(2)(C).  
Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2:13-cv-07228,

2015 WL 774046

, at *1 (C.D. 
Cal. Feb. 24, 2015).                                                      
    Additionally, it is established that witnesses generally cannot instruct the jury as to 

the applicable law or testify as to the governing legal standards.  See Furnituredealer.net, 
Inc. v. Amazon.com, Inc., No. 18-232,

2022 WL 891462

, at *8 (D. Minn. Mar. 25, 2022); 
United States v. Palkowitsch, No. 19-cr-0013,

2019 WL 5854059

, at *2 (D. Minn. Nov. 8, 
2019).    Furthermore,  ultimate  issues  such  as  infringement  and  invalidity  are  factual 
questions for the jury to decide; witness testimony cannot impinge on those determinations.  

See Matthews v. Stolier, No. 13-6638,

2015 WL 13544570

, at *2 (E.D. La. Dec. 23, 2015).  
Courts allow factual testimony from patent attorneys regarding prosecution history and 
related topics that are within their personal knowledge.  See, e.g., Keystone Retaining Wall 
Sys. Inc. v. Rockwood Retaining Wall, Inc., No. 00-496,

2001 WL 36102284

, at *10 (D.
Minn. Oct. 9, 2001).

In contrast, Polygroup seeks to broadly exclude unspecified testimony from Fonder
about “legal matters” and opinions, based chiefly on potential prejudice concerns without
identifying particular objectionable testimony. This vagueness works against Polygroup.
The testimony Willis Electric intends to elicit appears permissible under the standards
above, and Polygroup can make objections during trial if truly improper opinions or legal
instructions are offered. A sweeping limine exclusion is not justified on this record.

Based on the foregoing, Polygroup’s motion in limine lacks sufficient justification
at this stage to exclude testimony from patent prosecutor John Fonder. Fonder should be
allowed to testify to factual matters regarding the patents-in-suit that are within his personal
knowledge, subject to appropriate objections at trial. A broad exclusion of undefined “legal
opinion” testimony would be premature and unfounded.

D. Hal Poret Opinions and Internet Evidence
During the pre-trial conference, counsel for Willis Electric stated that Hal Poret will
not be testifying at trial due to serious health issues that preclude him from appearing.
Given this representation that Poret is unavailable to provide live testimony, the Court will
exclude any analysis or consideration of Poret’s potential testimony from its pre-trial
decisions and trial rulings.

Willis Electric disclosed Poret as an expert witness before the Court’s deadline,
producing his 68-page expert report from the IPR proceedings. This report qualifies as a
complete statement of Poret’s opinions and basis for them as required by Rule 26. Willis
Electric also expressly identified Poret by name and included a pinpoint citation to his
expert report in its June 11, 2019 response to Polygroup’s Prior Art Statement. Between

disclosing the full report and expressly naming Poret as a witness who addressed secondary
considerations of non-obviousness, Willis Electric complied with its obligations under
Rule 26.
Additionally, the record undercuts any claim of unfair prejudice by Polygroup.
Polygroup previously deposed Poret about the content of his expert report. Polygroup also

submitted a rebuttal expert report criticizing Poret’s survey methodology from Dr.
Simonson. Allowing references to a report Polygroup long ago received and managed to
rebut does not constitute an unfair surprise or prejudice. The Court rejects Polygroup’s
timeliness and prejudice arguments as contrary to the factual record.
While Polygroup seeks to exclude evidence of Poret’s survey conducted for the IPR
proceedings as irrelevant or hearsay, the Rules do not support a wholesale exclusion.

Experts are expressly allowed under Rule 703 to rely upon and testify regarding otherwise
inadmissible evidence, if reliance thereon accords with reasonable industry practice. Here,
damages expert Michele Riley and Polygroup’s own experts all relied upon and considered
Poret’s survey. Reliance by damages experts on consumer surveys performed by others
has been permitted by courts over similar objections. See, e.g., Fujifilm Corp. v. Motorola

Mobility LLC, No. 12-cv-03587-WHO,

2015 WL 1737951

 (N.D. Cal. Apr. 8, 2015); 
Banhazl v. Am. Ceramic Soc’y,

602 F.Supp.3d 198

 (D. Mass. 2021).  As proper testimony 
under Rule 703, Poret’s survey evidence should remain admissible.         
    Additionally, Poret’s survey may properly be used as cross-examination material 
for Polygroup’s experts.  All assessed the survey in forming opinions.  Such surveys may 

be presented to question the knowledge or biases of expert assumptions.  See Jensen v. 
EXC, Inc.,

82 F.4th 835, 848

 (9th Cir. 2023).  Total exclusion goes too far given permissible 
expert reliance and cross-examination uses.  The Court allows references to Poret’s survey 
under Rules 703 and 607.                                                  
    While  Polygroup  broadly  seeks  exclusion  of  anonymous  consumer  comments 
referenced  in  exhibits  P683  and  P693  as  irrelevant  or  hearsay,  applicable  case  law 

demonstrates consumer comments are not always excludable on such bases.  Specifically, 
comments may demonstrate customer or public notice about features of a product, relevant 
to  secondary  considerations  of  non-obviousness  assessments and  market perspectives 
considered in hypothetical negotiation determinations.  See Guild v. Gen. Motors Corp.,

53 F. Supp. 2d 363

 (W.D.N.Y. 1999); Auraria Student Hous. at the Regency, LLC v. 
Campus Vill. Apartments, LLC, No. 10-cv-02516-WJM-KLM,

2014 WL 4651643

, at *7

(D. Colo. Sept. 18, 2014). Here, the comments go to public notice regarding ease-of-
assembly benefits in Willis Electric’s One Plug trees.
Willis Electric also rightly argues assessment of the specific comments is premature
at the in limine stage and would benefit from additional context at trial. Deferring any
ruling on the comments until they are presented in context, subject to appropriate limiting

instructions if necessary, ensures a properly informed decision can be made. Categorical
exclusion without such context is inappropriate. The Court denies the motion as premature
regarding the consumer comments in P683 and P693 while deferring any ultimate
admissibility decision until trial.
E. Extra Materials with Approaching Trial Date

Polygroup moves to exclude certain late-disclosed testimony, witnesses, and
evidence pursuant to the Court’s inherent authority and Federal Rule of Civil Procedure 37.
Polygroup and Willis Electric have litigated the asserted patents over eight years in this
Court and parallel inter partes review (IPR) proceedings. The case was previously stayed
pending conclusion of the IPRs. Third party witnesses Ada Luk, Beverly Rodgers, Brian
Stone, and Winston Tan submitted declarations in the IPRs and were deposed by Polygroup.

Willis Electric produced many of their IPR deposition transcripts and declarations in this
litigation and identified reliance on these witnesses in written discovery responses.
At the pre-trial conference, Willis Electric represented that it no longer intends to
designate deposition testimony from Stone and Tan as evidence. As a result, the Court will
not discuss Stone and Tan’s depositions in its analysis.
Polygroup moves to exclude deposition transcripts from Luk and Rodgers’s IPR

proceedings produced by Willis Electric as affirmative deposition designations on
November 14, 2023. Polygroup argues the transcripts are inadmissible hearsay not within
any exception. See Fed. R. Evid. 802. It contends it lacked similar motive or opportunity
to examine the witnesses as it does in this infringement litigation, given more limited
discovery in IPRs. See In re Protegrity Corp., No. 15-0482,

2015 WL 4734938

, at *5 (N.D. 

Cal. Aug. 10, 2015);

37 C.F.R. § 42.51

(b)(1).  Polygroup further asserts Willis Electric’s 
late disclosure violates Fed. R. Civ. P. 26(a)(3)(ii).  In response, Willis Electric notes 
Polygroup’s extensive prior knowledge of the transcripts and participation in the IPR 
depositions.    However,  Polygroup  shows  its  ability  to  prepare  for  these  witnesses’ 
testimony at trial was impacted by the delayed disclosure.  Under Fed. R. Evid. 802 and 

assessment of the four Rule 37(c) factors, see Watkins Inc. v. McCormick & Co., No. 15-
cv-2688,

2023 WL 1777474

, at *2 (D. Minn. Feb. 6, 2023), the IPR deposition transcripts 
are excluded.                                                             
    In addition, Polygroup moves to exclude live testimony from Ada Luk as Luk was 
never disclosed by Willis Electric as a trial witness under Fed. R. Civ. P. 26(a)(1)(A)(i).  

Willis Electric failed to show its non-disclosure was substantially justified or harmless, 
resulting in prejudice to Polygroup’s ability to depose or conduct discovery on this witness.  
Fed. R. Civ. P. 37(c)(1) warrants excluding Luk’s testimony.              
    Finally,  Polygroup  moves  to  exclude  a  license  agreement  produced  by  Willis 
Electric  months  after  its  execution  between  Willis  Electric  and  Botanex  (“Luk 
Agreement”).  Willis Electric failed to substantiate any reasonable justification for the 

delayed disclosure under Fed. R. Civ. P. 26(e).  Allowing late production of the agreement 
would impose further delays and expenses.  Therefore, the Luk Agreement is excluded 
pursuant to Fed. R. Civ. P. 37(c).                                        
    In light of the foregoing analysis, Polygroup’s motion is granted as to: (1) the IPR 
deposition transcripts; (2) live testimony from Luk; and (3) the Luk Agreement.  The 

motion is otherwise denied.

ORDER

Based on the foregoing analysis and all the files, records and proceedings herein, IT

IS HEREBY ORDERED that:
1. Plaintiff’s Motion in Limine No. 1 is GRANTED IN PART and DENIED
IN PART. Defendants may reference the existence and invalid status of the eight
underlying independent claims, but should avoid details of the inter partes review
proceedings themselves. Discussion should focus on how the invalidity of the independent
claims impacts the obviousness analysis for the still-asserted dependent claims.

2. Plaintiff’s Motion in Limine No. 2 is DENIED. Defendants may introduce
evidence and testimony regarding its subjective beliefs and independent investigation into
infringement and validity issues.
3. Plaintiff’s Motion in Limine No. 3 is DENIED. The sales data for unaccused
products was properly produced as rebuttal evidence and its admission is justified.

4. Plaintiff’s Motion in Limine No. 4 is GRANTED IN PART and DENIED
IN PART. Defendants may not introduce evidence solely aimed at establishing inequitable
conduct but may reference undisclosed prior art for invalidity defenses.
5. Plaintiff’s Motion in Limine No. 5 is GRANTED. Defendants are precluded
from presenting evidence or arguments regarding the prior lawsuits.

6. Defendants’ Motion in Limine No. 1 is DENIED. Plaintiff may introduce
evidence related to the PTAB’s analysis of secondary considerations.
7. Defendants’ Motion in Limine No. 2 regarding evidence of the IPR
proceedings themselves is DENIED. The Court will provide an appropriate limiting

instruction to the jury.
8. Defendants’ Motion in Limine No. 3 regarding legal testimony by Fonder is
DENIED as premature without identification of particular objectionable testimony.
9. Defendants’ Motion in Limine No. 4 regarding online comments is
DENIED. The online comments may be admissible depending on context. Ruling is
deferred until trial.

10. Defendants’ Motion in Limine No. 5 is GRANTED as to the IPR deposition
transcripts, live testimony from Luk, and the Luk Agreement. The motion is otherwise
DENIED.

Dated: January 5, 2024 s/Joan N. Ericksen
Joan N. Ericksen
United States District Judge

Trial Court Opinion

                 UNITED STATES DISTRICT COURT                            
                    DISTRICT OF MINNESOTA                                


Willis Electric Co., Ltd.,              Case No. 15-cv-3443 (JNE/DTS)    

                   Plaintiff,

ORDER

     v.                                                                  

Polygroup Limited et al,                                                 

                   Defendants.                                           


    This matter is before the Court on the motions in limine filed by Plaintiff Willis 
Electric  Co.,  Ltd.  (“Willis  Electric”)  and  Defendants  Polygroup  Limited  (Macao 
Commercial  Offshore),  Polygroup  Macau  Limited  (BVI),  Polytree  (H.K.)  Co.  Ltd., 
Polygroup Trading Limited (collectively, “Defendants” or “Polygroup”).  (Dkts. 802, 807, 
816, 829, 828, 849, 854, 857, 861, 864.)  For the reasons addressed below, the Court grants 
in part and denies in part the motions.                                   
                         BACKGROUND                                      
    Willis Electric brings this case pursuant to

35 U.S.C. § 271

wasting time under Fed. R. Evid. 403. Glaros v. H.H. Robertson Co.,

797 F.2d 1564

 (Fed. 
Cir. 1986); Bombardier Recreational Prods., Inc. v. Arctic Cat, Inc., No. 12-2706,

2017 WL 5256741

 (D. Minn. Nov. 11, 2017).  Willis Electric contends each claim must be 
evaluated independently, differences in burden of proof and claim construction between 
PTAB proceedings and district court would require counter-evidence, and the case has 

already been substantially narrowed.                                      
    Polygroup opposes the motion as overbroad, arguing evidence related to the eight 
underlying independent claims is highly relevant to the obviousness analysis for the still-
asserted dependent claims.

35 U.S.C. § 112

(d); Electro-Mech. Corp. v. Power Distrib. 
Prods., No. 1:11CV00071,

2013 WL 1859229

 (W.D. Va. Mar. 13, 2013).  Polygroup cites 
authority that the validity status of  independent claims can simplify the obviousness 

analysis  for  dependent  claims,  especially  as  to  secondary  considerations  of  non-
obviousness.  Princeton Digit. Image Corp. v. Konami Digit. Entm’t Inc., No. CV 12-1461-
LPS-CJB,

2015 WL 219019

 (D. Del. Jan. 14, 2015).  It distinguishes the cases cited by 
Willis Electric.  Polygroup also argues excluding this evidence would confuse the jury and 
cause unfair prejudice, citing Adams v. Fuqua Indus., Inc.,

820 F.2d 271, 273

 (8th Cir. 
1987) and Fed. R. Evid. 403.                                              

    Polygroup argues Willis Electric’s motion is overbroad in seeking to exclude all 
evidence and arguments related to unasserted claims.  Polygroup agrees certain unasserted 
claim evidence should be excluded, such as details of the inter partes review proceedings 
and  causes  of  action  previously  dismissed.    However,  Polygroup  contends  the  eight 
underlying independent claims are highly relevant as the still-asserted dependent claims 

incorporate their limitations by reference.

35 U.S.C. § 112

(d); Electro-Mech. Corp.,

2013 WL 1859229

, at *2.                                                        
    Polygroup emphasizes dependent claims necessarily incorporate all limitations from 
the independent claims under

35 U.S.C. § 112

(d).  Thus, excluding any reference to the 
independent  claims  would  preclude  presenting  the  full  scope  of  limitations  for  the 

dependent asserted claims.                                                
    Additionally, Polygroup argues the invalidity status of the independent claims is 
directly relevant to evaluating the obviousness of the dependent asserted claims.  Princeton 
Digit. Image,

2015 WL 219019

, at *3; Ceiva Logic Inc. v. Frame Media Inc., No. SACV 
08-00636-JVS (RNBx),

2009 WL 10673158

, at *8.  In particular, Polygroup contends the 
point of novelty for any secondary considerations evidence must arise from the additional 

limitations in the dependent claims, not the now-invalid independent claims.  Ormco Corp. 
v. Align Tech., Inc.,

463 F.3d 1299, 1311-13

 (Fed. Cir. 2006).            
    Polygroup goes on to argue the cases cited by Willis Electric are distinguishable and 
inapposite to this situation involving asserted dependent claims with underlying invalid 
independent claims.  Cordis Corp. v. Medtronic, Inc.,

511 F.3d 1157, 1183-84

 (Fed. Cir. 
2008); Bombardier Rec. Prod.,

2017 WL 5256741

, at *3.  Polygroup notes Cordis involved 

claims with “differing language and scope,” while here the claims substantially overlap.  It 
also  distinguishes  the  Bombardier  unasserted  claims  as  not  involving  underlying 
independent claims, and differentiates the other cited cases factually.   
    Polygroup further argues excluding evidence about the invalidity status of the 
underlying independent claims would confuse the jury and unfairly prejudice Polygroup.  

Adams,

820 F.2d at 273

; Fed. R. Evid. 403.  Because the asserted claims incorporate 
limitations from the independent claims, failing to reference the independent claims would 
itself prove confusing.  Additionally, without the context that the independent claims are 
invalid, Polygroup contends it would be hampered in its ability to argue the dependent 
claims’ point of novelty must arise from the additional limitations in those claims.   

    Polygroup notes that while the different standards between the inter partes review 
and district court may not be relevant, the mere status of the independent claims as invalid 
and freely available to practice remains pertinent to the obviousness evaluation.  Cuozzo 
Speed Techs., LLC v. Lee,

579 U.S. 261, 278

(2016).
In light of these arguments regarding relevance to the obviousness analysis and
potential jury confusion, Polygroup urges the Court to deny Willis Electric’s motion in

before this lawsuit while Polygroup withholds communications with counsel on that
subject. Willis Electric relies on authority like Advanced Cardiovascular Sys., Inc. v.
Medtronic, Inc.,

265 F.3d 1294, 1309

 (Fed. Cir. 2001) to contend Polygroup cannot use 
attorney-client privilege as both a sword and a shield.                   
    Polygroup argues that under the Supreme Court’s 2016 decision in Halo Elecs., Inc. 
v. Pulse Elecs., Inc.,

579 U.S. 93, 105

, the question of willful infringement now depends 

entirely on the infringer's subjective beliefs.  Polygroup cites the Halo case to contend that 
its understanding of whether its products infringe a valid patent is highly relevant to willful 
infringement.                                                             
    Polygroup points to factual exhibits and deposition testimony showing that years 
before Willis Electric’s patents, Polygroup independently investigated patent landscape 
developments and made efforts to avoid infringement.  Polygroup argues these efforts 

occurred wholly separate from any privileged communications.              
    Relying on Omega Patents, LLC v. CalAmp Corp.,

920 F.3d 1337, 1352

 (Fed. Cir. 
2019), Polygroup contends its lay witnesses can testify about the company’s subjective 
beliefs and results of its “independent investigations.”  Polygroup argues Omega Patents 
confirms this testimony would be about Polygroup’s state of mind rather than improper 

expert testimony.                                                         
    Willis Electric cites Lewis Cheng’s deposition testimony to argue Polygroup’s non-
infringement “opinion” is intertwined with and dominated by privileged communications 
with counsel.  Willis Electric contends Polygroup cannot separate non-attorney discussions 
from attorney advice received.                                            

    Willis Electric also argues testimony from Polygroup’s non-attorneys would be 
irrelevant under Fed. R. Evid. 402 and 403 because they lack qualifications on patent law 
or technology.  Willis Electric contends cases like SSL Servs., LLC v. Citrix Sys., Inc.,

769 F.3d 1073, 1092

 (Fed. Cir. 2014) confirm this testimony has little probative value.   
    After reviewing the parties’ briefing and considering the arguments presented, the 
Court finds that Polygroup has the more compelling position regarding the admissibility of 

evidence concerning its subjective beliefs and state of mind.             
    As Polygroup correctly notes, the Supreme Court’s decision in Halo emphasizes 
that the question of willful infringement turns on the subjective beliefs and knowledge of 
the accused infringer.  See Halo Elecs., 579 U.S. at 105.  Consequently, evidence speaking 
to Polygroup’s subjective understanding and analysis of infringement and validity issues 
is highly probative.                                                      

    Additionally,  Polygroup  cites  to  Federal  Circuit  precedent  in  Omega  Patents 
affirming that accused infringers may introduce testimony from key business personnel 
regarding their “independent investigation” and conclusions about the scope of asserted 
patent rights.  See Omega Pats.,

920 F.3d at 1352

. Polygroup has come forward with
exhibits and deposition citations confirming it performed such independent inquiries into

564 U.S. 91, 110-11

 (2011).  A blanket prohibition could 
preclude Polygroup from making arguments concerning prior art references GKI Tree and 
Wesley Pine, which are probative of validity but were not disclosed.  Thus, a wholesale 

exclusion would sweep too broadly here given the posture of the case.     
    An order limiting the exclusion solely to evidence offered to prove inequitable 
conduct directly would appropriately balance plaintiff’s concerns about prejudice with 
defendant’s interests in presenting its defenses.  See BioMerieux, S.A. v. Hologic, Inc., No. 
18-21-LPS,

2020 WL 583917

, at *1 (D. Del. Feb. 6, 2020) (allowing undisclosed prior art

irrelevant evidence and disputes that mini-trials regarding prior lawsuits are inherently
prejudicial. See Slidell, Inc. v. Millennium Inorganic Chemicals, Inc., No. 02-213,

2005 WL 6009982

, at *1 (D. Minn. Jan. 7, 2005); Transclean Corp. v. Bridgewood Servs.,

101 F. Supp. 2d 788, 792

 (D. Minn. 2000).  It further argues any ruling under Rule 404(b) is 
premature absent the context of particular objections.                    

    Willis Electric’s motion is granted.  The Court concludes that the series of prior 
lawsuits spanning several years and courts between these parties regarding different claims 
and patents are irrelevant under Rule 402 and would lead to confusion of the issues, wasted 
time, and unfair prejudice that substantially outweighs any probative value under Rule 403.  
See Cosmos Granite (W.), LLC v. Minagrex Corp., No. 19-cv-1697,

2021 WL 5140226

, at 
*2 (W.D. Wash. Nov. 4, 2021); CellTrust Corp. v. Ionlake, LLC, No. 19-cv-2855,

2023 WL 3052733

759 F. App’x 934

, 943 (Fed. Cir. 
2019).  Because those claims were vacated, Polygroup argues the associated findings on 

secondary considerations cannot have collateral estoppel effect.          
    Additionally,  Polygroup  contends  that  the  PTAB’s  findings  on  secondary 
considerations were not “essential” to the judgment with respect to the asserted claims that 
ultimately survived the IPRs.  See also B&B Hardware, Inc. v. Hargis Indus.,

569 F.3d 383, 388

 (8th Cir. 2009) (to have preclusive effect, determination must be “essential to the 

prior judgment”).  In particular, Polygroup notes that on remand in 2020, the PTAB upheld 
the  surviving  claims  based  on  deficiencies  in  the  asserted  prior  art  rather  than 
considerations of secondary evidence indicia of non-obviousness.  Polygroup Ltd. MCO 
v.Willis Elec. Co., Ltd., No. IPR2016-01610,

2020 WL 5985472

, at *9 (P.T.A.B. Oct. 8,
2020).

the jury to weigh against Polygroup’s invalidity case. See, e.g., Microsoft Corp.,

564 U.S. at 111

; Tokai Corp. v. Easton Enters., Inc.,

632 F.3d 1358, 1367

 (Fed. Cir. 2011). 
    Additionally, the Court finds the IPR history pertinent for the jury to assess the 
allegations of Polygroup’s willful infringement.  Courts routinely allow IPR evidence as 
relevant for the willful infringement analysis.  See Illumina, Inc. v. BGI Genomics Co., 

Ltd., No. 19-cv-03770,

2021 WL 4979799

, at *9 (N.D. Cal. Oct. 27, 2021); Contour IP 
Holding LLC v. GoPro, Inc., No. 17-cv-04738,

2021 WL 75666

, at *8 (N.D. Cal. Jan. 8, 
2021).  Here, Polygroup continued sales activity even after final written decisions rejecting 
its invalidity grounds.  The jury should be permitted to weigh this as part of the totality of 
the circumstances in assessing willful infringement.                      

    While  the  Court  agrees  there  are  different  legal  standards  between  the  IPR 
proceedings and the present litigation, the Court believes it can craft an appropriate limiting 
instruction to mitigate any risk of confusion for the jury.  The instruction will explain the 
different burden of proof applied by the PTAB, as well as note that different prior art is 
asserted at present compared to the IPRs.  This is the consensus approach taken by district 
courts allowing IPR evidence while cautioning the jury on these key differences.  See 

Illumina,

2021 WL 4979799

, at *9; L.C. Eldridge Sales Co. v. Azen Mfg. Ltd., No. 6:11-
cv-599,

2013 WL 7964028

, at *3 (E.D. Tex. Nov. 14, 2013).                 
    Finally,  having  found  meaningful  probative  value  and  ability  to  address  the 
prejudice concerns through a limiting instruction, the Court concludes that exclusion under 
Rule 403 is not warranted.  On balance, the risk of confusion or misleading the jury does 

not substantially outweigh the highly probative nature of the IPR evidence.  For these 
reasons, Polygroup’s motion is denied.                                    
    C.   Extraneous Legal Testimony by Witness                           
    Willis Electric intends to call patent prosecutor John Fonder to testify regarding 
factual  matters  within  his  personal  knowledge,  not  as  a  technical  expert  opining  on 

infringement or validity.  Rule 701 of the Federal Rules of Evidence allows testimony to 
be admitted that is rationally based on the witness’s perception, helpful to determining a 
fact in issue, and not based on specialized knowledge within the scope of Rule 702.  Fed. 
R. Evid. 701; see United States v. Shah,

84 F.4th 190, 236, 252

 (5th Cir. 2023).  This allows 
testimony by witnesses with personal knowledge of facts at issue in the case.  At the same 
time, Rule 701(c) prohibits lay witness testimony that is based on “scientific, technical, or 

other specialized knowledge within the scope of Rule 702.”  Fed. R. Evid. 701(c).  If the 
witness has specialized knowledge and his testimony requires that knowledge, he must be 
qualified as an expert under Rule 702 and disclose opinions under Rule 26(a)(2)(C).  
Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2:13-cv-07228,

2015 WL 774046

, at *1 (C.D. 
Cal. Feb. 24, 2015).                                                      
    Additionally, it is established that witnesses generally cannot instruct the jury as to 

the applicable law or testify as to the governing legal standards.  See Furnituredealer.net, 
Inc. v. Amazon.com, Inc., No. 18-232,

2022 WL 891462

, at *8 (D. Minn. Mar. 25, 2022); 
United States v. Palkowitsch, No. 19-cr-0013,

2019 WL 5854059

, at *2 (D. Minn. Nov. 8, 
2019).    Furthermore,  ultimate  issues  such  as  infringement  and  invalidity  are  factual 
questions for the jury to decide; witness testimony cannot impinge on those determinations.  

See Matthews v. Stolier, No. 13-6638,

2015 WL 13544570

, at *2 (E.D. La. Dec. 23, 2015).  
Courts allow factual testimony from patent attorneys regarding prosecution history and 
related topics that are within their personal knowledge.  See, e.g., Keystone Retaining Wall 
Sys. Inc. v. Rockwood Retaining Wall, Inc., No. 00-496,

2001 WL 36102284

, at *10 (D.
Minn. Oct. 9, 2001).

Mobility LLC, No. 12-cv-03587-WHO,

2015 WL 1737951

 (N.D. Cal. Apr. 8, 2015); 
Banhazl v. Am. Ceramic Soc’y,

602 F.Supp.3d 198

 (D. Mass. 2021).  As proper testimony 
under Rule 703, Poret’s survey evidence should remain admissible.         
    Additionally, Poret’s survey may properly be used as cross-examination material 
for Polygroup’s experts.  All assessed the survey in forming opinions.  Such surveys may 

be presented to question the knowledge or biases of expert assumptions.  See Jensen v. 
EXC, Inc.,

82 F.4th 835, 848

 (9th Cir. 2023).  Total exclusion goes too far given permissible 
expert reliance and cross-examination uses.  The Court allows references to Poret’s survey 
under Rules 703 and 607.                                                  
    While  Polygroup  broadly  seeks  exclusion  of  anonymous  consumer  comments 
referenced  in  exhibits  P683  and  P693  as  irrelevant  or  hearsay,  applicable  case  law 

demonstrates consumer comments are not always excludable on such bases.  Specifically, 
comments may demonstrate customer or public notice about features of a product, relevant 
to  secondary  considerations  of  non-obviousness  assessments and  market perspectives 
considered in hypothetical negotiation determinations.  See Guild v. Gen. Motors Corp.,

53 F. Supp. 2d 363

 (W.D.N.Y. 1999); Auraria Student Hous. at the Regency, LLC v. 
Campus Vill. Apartments, LLC, No. 10-cv-02516-WJM-KLM,

2014 WL 4651643

, at *7

2015 WL 4734938

, at *5 (N.D. 

Cal. Aug. 10, 2015);

37 C.F.R. § 42.51

(b)(1).  Polygroup further asserts Willis Electric’s 
late disclosure violates Fed. R. Civ. P. 26(a)(3)(ii).  In response, Willis Electric notes 
Polygroup’s extensive prior knowledge of the transcripts and participation in the IPR 
depositions.    However,  Polygroup  shows  its  ability  to  prepare  for  these  witnesses’ 
testimony at trial was impacted by the delayed disclosure.  Under Fed. R. Evid. 802 and 

assessment of the four Rule 37(c) factors, see Watkins Inc. v. McCormick & Co., No. 15-
cv-2688,

2023 WL 1777474

, at *2 (D. Minn. Feb. 6, 2023), the IPR deposition transcripts 
are excluded.                                                             
    In addition, Polygroup moves to exclude live testimony from Ada Luk as Luk was 
never disclosed by Willis Electric as a trial witness under Fed. R. Civ. P. 26(a)(1)(A)(i).  

Willis Electric failed to show its non-disclosure was substantially justified or harmless, 
resulting in prejudice to Polygroup’s ability to depose or conduct discovery on this witness.  
Fed. R. Civ. P. 37(c)(1) warrants excluding Luk’s testimony.              
    Finally,  Polygroup  moves  to  exclude  a  license  agreement  produced  by  Willis 
Electric  months  after  its  execution  between  Willis  Electric  and  Botanex  (“Luk 
Agreement”).  Willis Electric failed to substantiate any reasonable justification for the 

delayed disclosure under Fed. R. Civ. P. 26(e).  Allowing late production of the agreement 
would impose further delays and expenses.  Therefore, the Luk Agreement is excluded 
pursuant to Fed. R. Civ. P. 37(c).                                        
    In light of the foregoing analysis, Polygroup’s motion is granted as to: (1) the IPR 
deposition transcripts; (2) live testimony from Luk; and (3) the Luk Agreement.  The 

motion is otherwise denied.

ORDER

Based on the foregoing analysis and all the files, records and proceedings herein, IT

10. Defendants’ Motion in Limine No. 5 is GRANTED as to the IPR deposition
transcripts, live testimony from Luk, and the Luk Agreement. The motion is otherwise
DENIED.

Dated: January 5, 2024 s/Joan N. Ericksen
Joan N. Ericksen
United States District Judge

Reference

Status: Unknown