IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

TYCO HEALTHCARE GROUP LP,

MALLINCKRODT INC. and LIEBEL-
FLARSHEIM COMPANY,
Plaintiffs,
CIVIL ACTION NO. 2:07-CV-262 (TJW)
v.

E-Z-EM, INC. and ACIST MEDICAL
SYSTEMS, INC.,
Defendants.

ORDER

Before the Court are the parties Motions in Limine. [Dkt. Nos. 586, 601, 605] The Court

conducted a pretrial hearing on May 28, 2010 during which the Court heard arguments about

these motions. The Court ruled from the bench as follows:

I. Plaintiffs Motions in limine

1. Preclude defendants from calling Innovasafe, Inc. as a witness at

trial

If a party fails to provide information or identify a witness as required by Rule 26(a) or

(e), the party is not allowed to use that information or witness to supply evidence . . . at a trial,

unless the failure was substantially justified or harmless. Fed. R. Civ. P. 37(c)(1). This motion

is GRANTED.

2. Preclude testimony from Lyn Driskill

The parties have AGREED to this motion. This motion is GRANTED.

3. Preclude examination of third party witnesses based upon documents

that defendants marked Confidential or Highly Confidential

Mallinckrodt argues that E-Z-EM revealed to third-party witnesses documents that were

marked Confidential but then would not allow Mallinckrodt to cross-examine those witnesses
with other similarly marked documents. For example, during the deposition of Stephen

Bellofatto who is a product developer by an outside company that implements the use-related

features of E-Z-EMs Empower injectors, Mr. Ruttenberg attempted to question Mr. Bellofatto

about a design document. Mr. Bennett allegedly refused to allow Mr. Bellofatto look at the

document.

To the extent that either party hindered the cross-examination of a witness on a topic, the

Court will not allow that party to present the witness testimony on that topic at trial. The Court

GRANTS this motion in part.

4. Preclude admission of the dollar amounts in settlement agreements

made under the threat of litigation

Mallinckrodt argues that the evidence of the amounts of prior settlements made under the

threat of litigation raises an unreasonable risk of unfair prejudice under Fed. R. Evid. 403. The

general rule is that royalties paid to avoid litigation are not a reliable indicator of the value of a

patent. See Automation Corp. v. Microsoft Corp., 587 F.Supp.2d 794, 801 (E.D. Tex. 2007).

However, where a settlement agreement involves the same patent or technology, they may be

highly relevant, notwithstanding their origins. See ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d

860 (Fed.Cir.2010); Datatreasury Corp. v. Wells Fargo & Co., 2010 WL 903259 (E.D. Tex.

2010).

This motion is GRANTED as to all licenses except those that are sufficiently similar.

5. Preclude evidence and argument concerning product liability lawsuits

and judgments

This motion is GRANTED per Rule 403.

6. Preclude evidence of reexamination proceedings of the patent-in-suit

The fact that there are reexamination proceedings and a decision has been made by the

PTO is not probative of any element regarding any claim of invalidity. Procter & Gamble Co. v.
Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed.Cir. 2008) (a requestor's burden to show that

a reexamination order should issue from the PTO is unrelated to a defendant's burden to prove

invalidity by clear and convincing evidence at trial). This motion is GRANTED.

7. Preclude evidence and argument concerning Tycos former CEO

The parties have AGREED to this motion. This motion is GRANTED.

8. Preclude evidence or testimony regarding any design-around of the

patent-in-suit or claim that such design-around is a non-infringing
alternative

Mallinckrodt sought and E-Z-EM obstructed discovery regarding E-Z-EMs design-around

efforts. E-Z-EM is not permitted to introduce evidence that it declined to produce as requested.

See Fed. R. Civ. P. 37(c)(1). This motion is GRANTED as to actual design-around efforts. This

motion is denied as to possible non-infringing alternatives.

9. Preclude testimony or evidence regarding alleged spoliation

This motion is DENIED. The parties are permitted to present evidence of spoliation.

10. Preclude testimony or evidence to the jury relating to the defenses of

laches, equitable estoppel, and inequitable conduct

This motion is GRANTED with a narrow exception. E-Z-EM is entitled to present

evidence for the purpose of overcoming the presumption of validity and to rebut the claim of

willfulness.

11. Preclude reference to Kirklands representation of high-profile clients

The parties have AGREED to this motion.

12. Preclude defendants experts from testifying beyond the scope of their
expert reports

The parties have AGREED to this motion.

13. Preclude defendants from presenting evidence or argument

comparing their accused devices with plaintiffs products
 This motion is GRANTED with a narrow exception for limited comparison. Mallinckrodt

is seeking lost profits. The parties may present evidence comparing the accused products to the

embodying product for the limited purpose of demonstrating (or rebutting) their similarity. The

parties may not engage in a claim element-by-claim element comparison of the products.

Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, 2010 WL

1644062, at * 1518 (Fed. Cir. 2010) (allowing product-to-product comparison for the limited

purpose of demonstrating lost profits). E-Z-EM is also permitted to show that Plaintiffs

products do not practice the invention for the purpose of showing the value of the patent.

14. Preclude any experts beyond the maximum number permitted in the
Courts discovery order

This motion is GRANTED. The parties are permitted to rely upon the opinions of the first

five designated experts.

II. E-Z-EMs Motions in Limine

1. Preclude infringement theories beyond the scope of Mallinckrodts

infringement contentions

This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1).

2. Preclude expert testimony beyond the expert reports or about

documents or materials that would not otherwise be admissible

This motion is GRANTED in part. See Fed. R. Evid. 703 (Facts or data that are otherwise

inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless

the court determines that their probative value is assisting the jury to evaluate the experts

opinion substantially outweighs their prejudicial effect.); 803 (not excluded from the hearsay

rule are statements contained in published treatises, periodicals, or pamphlets on a subject of . . .

science . . . , established as a reliable authority by the testimony or admission of the witness or by

other expert testimony).

 3. Preclude testimony about jury consultants and other trial consultants

This motion is AGREED and GRANTED.

4. Preclude testimony about counsels clients.

This motion is AGREED and GRANTED.

5. Preclude testimony about counsel for E-Z-EM and counsel for third-
party witnesses

This motion is GRANTED in PART. To the extent that parties are seeking to introduce

evidence tending to show bias, the motion is DENIED.

6. Preclude testimony about counsels clients.

This motion is AGREED.

7. Preclude testimony about motions in limine, pretrial objections, and

objections during depositions

This motion is GRANTED per rule 402. The Court refers this motion to Judge
Everingham for case-by-case ruling.

8. Preclude evidence not previously produced or disclosed pursuant to

discovery obligations

This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1). The Court refers this motion to

Judge Everingham for case-by-case ruling.

9. Preclude questions calculated to invoke assertion of the

attorney/client privilege or the work-product doctrine in the presence
of the jury

This motion should be DENIED. It is unclear how E-Z-EM would establish that suspect

questions were calculated to achieve an inappropriate result.

10. Preclude testimony about claim constructions that are different from
or contrary to the Courts rulings

This motion is GRANTED per the Courts claim construction order.

11. Preclude testimony about prior legal positions and arguments taken
by the parties
 As to briefs, pleadings, infringement or invalidity questions and the like, this motion is

GRANTED. As to prior depositions, requests for admissions, interrogatories, et cetera, this

motion is DENIED.

12. Preclude evidence regarding claims or contentions previously asserted

by a party but have been dropped

This motion is GRANTED per rule 402 and 403. To allow such evidence would

discourage parties from streamlining issues for trial purposes.

13. Preclude evidence regarding E-Z-EMs reliance on any opinion of

counsel to rebut willful infringement

This motion is DENIED per the Courts order of May 25, 2010. Even if E-Z-EM elects

not to pursue the advice-of-counsel defense to the willful infringement claims, it has already

waived privilege.

14. Preclude evidence that E-Z-EM is owned by a foreign company

This motion is GRANTED with a limited exception. The parties are entitled to voir dire on

whether jurors own stock in publicly-traded companies.

15. Preclude evidence regarding fee arrangements of the parties

This motion is GRANTED pursuant to rule 402.

16. Preclude evidence regarding correspondence between or among

counsel

This is GRANTED as it relates to improper evidence of offers of settlement under rule 408.

17. Preclude evidence of E-Z-EMs knowledge of the patent prior to the

lawsuit

This motion is DENIED.

18. Preclude evidence that the named inventors advised Plaintiffs patent
prosecution counsel about the existence and relevance of prior art to
the 710 patent application

This motion is GREANTED. To the extent a witness asserted a claim of privilege during a
deposition, the witness is not entitled to testify about the withheld topic on the stand. To allow

the witness to testify on those subjects would be allowing a party to use privilege as a sword and

shield. See Cunningham v. Chapel Hill, ISD, 438 F.Supp.2d 718, 724 (E.D. Tex. 2006)

([Defendant] should not be allowed to prevent Mosely or other trustees from being deposed

with regard to the Boards motivations for denying Cunningham's Level III grievance and then

call a trustee at trial to testify about these motivations.).

19. Preclude testimony that Mr. Humphrey asked the inventors of their
awareness of prior art.

This motion is GRANTED as to Mr. Humphrey. This motion is DENIED as to all others.

20. Preclude testimony regarding diligence in reduction to practice

This motion is GRANTED as to Mr. Humphrey and DENIED as to all others, except to the

extent it is covered by a previous ruling.

21. Preclude testimony that draft documents represent the accused

products

This motion is DENIED. To the extent that a document introduced does not reflect the

accused product, E-Z-EM can demonstrate as much during cross-examination. This testimony

shows product development and would be relevant to infringement and potentially damages.

22. Exclude deposition testimony of any witness who is to give live

testimony at trial except for the limited purpose of impeachment

This motion is DENIED provided that the deposition use conforms with the requirements

of Fed. R. Civ. P. 32. Permissible uses include: impeachment, deposition of a 30(b)(6) witness,

and to present testimony of an unavailable witness. See Fed. R. Civ. P. 32(2)(4).

23. Preclude reference to prior claims of infringement against E-Z-EM

This motion is GRANTED pursuant to rule 402.

24. Preclude evidence of unsigned agreements

 The Court refers this motion to Judge Everingham for a case-by-case ruling.

25. Exclude the rebuttal report of Arthur J. Helmicki regarding validity

This motion is DENIED.

26. Preclude objections to introduction of metadata

This motion is DENIED. The Court refers this to Judge Everingham for a case-by-case

ruling.

SIGNED this 7th day of June, 2010.

__________________________________________
T. JOHN WARD
UNITED STATES DISTRICT JUDGE