Delta T, LLC v. Dan's Fan City, Inc.

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

TAMPA DIVISION

DELTA T, LLC d/b/a

BIG ASS FAN COMPANY,

Plaintiff,

v. Case No. 8:19-cv-1731-VMC-SPF

DAN’S FAN CITY, INC., and

TROPOSAIR, LLC,

Defendants.

______________________________/

ORDER

This matter comes before the Court pursuant to Plaintiff

Delta T, LLC’s Motion in Limine (Doc. # 163) and Defendants

Dan’s Fan City, Inc., and TroposAir, LLC’s Motion in Limine

(Doc. # 165), both filed on April 13, 2021. The parties

responded to each Motion on April 27, 2021. (Doc. ## 166;

168). With leave of Court, Defendants replied to their Motion

on May 4, 2021 (Doc. # 171), and Delta T sur-replied on May

7, 2021. (Doc. # 180). For the reasons set forth below, both

Motions are granted in part and denied in part.

I. Background

This is a patent case that arose out of Defendants’

alleged infringement of three of Delta T’s patented designs

of a modern residential ceiling fan. (Doc. # 65 at ¶¶ 8, 20).

Delta T initiated this suit in the District of Maryland on

December 14, 2018. (Doc. # 1). Following transfer to this

Court on July 17, 2019, the case proceeded through discovery.

(Doc. # 30). The case is currently scheduled for trial during

the June 2021 trial term. (Doc. # 99 at 3).

Now, all parties move to exclude the introduction of

various arguments and evidence at trial. (Doc. ## 163; 165).

All parties have responded. (Doc. ## 166; 168). Defendants

replied to their Motion (Doc. # 171), and Delta T filed a

sur-reply. (Doc. # 180). The Motions are now ripe for review.

II. Legal Standard

“A motion in limine presents a pretrial issue of

admissibility of evidence that is likely to arise at trial,

and as such, the order, like any other interlocutory order,

remains subject to reconsideration by the court throughout

the trial.” In re Seroquel Prods. Liab. Litig., Nos. 6:06–

md–1769–ACC-DAB, 6:07–cv–15733–ACC-DAB, 2009 WL 260989, at *1

(M.D. Fla. Feb. 4, 2009). “The real purpose of a motion in

limine is to give the trial judge notice of the movant’s

position so as to avoid the introduction of damaging evidence

which may irretrievably effect the fairness of the trial.”

Id. (internal quotation marks omitted). “A court has the power

to exclude evidence in limine only when evidence is clearly

inadmissible on all potential grounds.” Id. (internal

quotation marks omitted).

“A motion in limine is not the proper vehicle to resolve

substantive issues, to test issues of law, or to address or

narrow the issues to be tried.” LSQ Funding Grp. v. EDS Field

Servs., 879 F. Supp. 2d 1320, 1337 (M.D. Fla. 2012) (citing

Royal Indem. Co. v. Liberty Mut. Fire Ins. Co., No. 07–80172–

CIV, 2008 WL 2323900, at *1 (S.D. Fla. June 5, 2008)). “Denial

of a motion in limine does not necessarily mean that all

evidence contemplated by the motion will be admitted at

trial.” In re Seroquel, 2009 WL 260989, at *1 (internal

quotation marks omitted). “Instead, denial of the motion

means the court cannot determine whether the evidence in

question should be excluded outside the trial context.” Id.

“The court will entertain objections on individual proffers

as they arise at trial, even though the proffer falls within

the scope of a denied motion in limine.” Id.

District courts have broad discretion in determining the

admissibility of evidence, and the appellate court will not

disturb this Court’s judgment absent clear abuse of

discretion. United States v. McLean, 138 F.3d 1398, 1403 (11th

Cir. 1998); see also United States v. Jernigan, 341 F.3d 1273,

1285 (11th Cir. 2003) (“Inherent in this standard is the firm

recognition that there are difficult evidentiary rulings that

turn on matters uniquely within the purview of the district

court, which has first-hand access to [] evidence and is

physically proximate to testifying witnesses and the jury.”).

III. Analysis

Both Delta T and Defendants move to exclude certain

evidence and arguments from trial. (Doc. ## 163; 165). The

Court will address each Motion in turn.

A. Delta T’s Motion in Limine

Delta T seeks to exclude seven categories of evidence or

argument from trial, some stipulated to by the parties, and

others disputed. (Doc. # 163).

1. Double Patenting Invalidity Defense

First, Delta T argues that “Defendants should be

precluded from claiming invalidity as they have no witnesses

competent to testify in that regard.” (Doc. # 163 at 3).

Specifically, Delta T contends that Defendants have no expert

designer capable of testifying as to their double patenting

defense. (Id. at 3-4). In reply to their own Motion in Limine,

Defendants now state that they are “no longer pursuing [their]

double patenting defense.” (Doc. # 171 at 2). Therefore, the

Motion is granted as to this requested relief and Defendants

are precluded from making a double patenting defense.

2. Expert Testimony

Next, the parties stipulate that the Court exclude the

following two categories of evidence, both relating to expert

testimony: (1) “all experts from offering any direct

testimony that is not contained within the four corners of

their respective reports,” and (2) “introduction or offering

[of] expert opinion testimony from any witness who has not

provided a written report required by Federal Rule of Civil

Procedure 26(a)(2)(B).” (Doc. # 163 at 4-5; Doc. # 166 at 3).

In accordance with Rule 26 and the parties’

stipulations, the Motion is granted as to this requested

relief. All experts required to provide written reports under

Rule 26 are “precluded from providing any direct testimony as

to opinions, and any facts or evidence in support of those

opinions . . . not expressly included in their reports.” (Doc.

# 163 at 4; Doc. # 166 at 3). The Court also excludes the

“introduction or offering [of] expert opinion testimony from

any witness who has not provided a written report required by

[Rule] 26(a)(2)(B).” (Doc. # 163 at 5; Doc. # 166 at 3).

3. Expense Deductions

Next, Delta T moves to preclude Defendants’ witnesses

Mark Topolski and Stephen Oscher “from testifying about

expense deductions from net profits [that] are not tied

specifically to Vogue fan sales.” (Doc. # 163 at 5).

Defendants intend to calculate the amount of fixed costs

associated with the sale of the Vogue fan by multiplying their

total fixed costs by the ratio of Defendants’ Vogue fan sales

to their total sales. (Id. at 5-8). Delta T argues that this

“across-the-board” calculation is inadmissible because

Defendants have not demonstrated that their “overhead (or

other comparable expenses) would have been any different had

they not been selling the infringing goods.” (Id. at 6, 8

(emphases omitted)). Defendants respond that it is for “the

jury [to] decide which expenses should be considered in

determining [Defendants’] net profits” and that Delta T may

challenge the calculation at trial. (Doc. # 166 at 5).

Design patent infringers are “liable to the [patent]

owner to the extent of his [or her] total profit[.]” 35 U.S.C.

§ 289. The patent owner bears the burden of proving damages.

BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d

1214, 1217 (Fed. Cir. 1993). “If the plaintiff satisfies this

burden of production, the burden of production then shifts to

the defendant to come forward with evidence . . . of a

different profit calculation, including any deductible

costs.” Apple Inc. v. Samsung Elecs. Co., No. 11-CV-01846-

LHK, 2017 WL 4776443, at *12 (N.D. Cal. Oct. 22, 2017).

However, “[n]either case law nor logic provides a clear

rule for the proper treatment of fixed expenses in computing

an award for profits.” Chico’s Fas, Inc. v. Clair, No. 2:13-

cv-792-SPC-DNF, 2015 WL 2455501, at *5 (M.D. Fla. May 24,

2015) (quoting Schnadig Corp. v. Gaines Mfg. Co., 620 F.2d

1166, 1172 (6th Cir. 1980)). Delta T has provided no authority

requiring that Defendants’ calculation of fixed costs be

excluded because it is based on an “across-the-board”

calculation, and the Court does not find this calculation

prejudicial, confusing, or misleading at this juncture.

Accordingly, the Motion is denied as to this requested relief.

4. Size, Finances, and Location of the Parties

Next, Delta T moves to preclude Defendants “from

presenting any argument, evidence, testimony, or suggestion

of a ‘David and Goliath’ nature, such as comparing the

relative size, financial strength, or geographical locale of

the companies.” (Doc. # 163 at 8). Defendants respond that

they intend to introduce such facts relating to Dan’s Fan

City and TroposAir, although they do not expect “[a]t this

point” to “make an argument that the jury should find in

[Defendants’] favor because Delta T is significantly larger

than [Defendants].” (Doc. # 166 at 5).

The Court agrees with Defendants that it cannot decide

at this stage whether evidence relating to the parties’ size,

finances, or location is inadmissible. Where the parties are

located may very well be relevant to the case. Or, Defendants’

finances may be relevant to determining their profits.

Accordingly, the Motion is denied at this juncture insofar as

it seeks to exclude evidence of the parties’ sizes, finances,

or geographic locations.

Still, “the relative wealth of the parties should not be

the focus of the trial,” and to the extent Defendants attempt

to compare the parties’ wealth or size to make a “David and

Goliath” argument, Delta T may re-raise this objection at

trial. Unicolors, Inc. v. H & M Hennes & Mauritz L.P., 2:16-

cv-02322-AB (SKx), 2017 WL 11489792, at *7 (C.D. Cal. Nov.

15, 2017). The Court makes the same determination with regard

to the parties’ geographic locations. See Pappas v. Middle

Earth Condo. Ass’n, 963 F.2d 534, 539 (2d Cir. 1992) (“There

is no doubt whatever that appeals to the regional bias of a

jury are completely out of place in a federal courtroom.”).

5. Dr. Rene Befurt’s Expert Testimony

Next, Delta T seeks to preclude Defendants’ expert, Dr.

Rene Befurt from testifying “in contravention of Delta T’s

expert’s testimony as it relates to infringement.” (Doc. #

163 at 10). Specifically, Delta T argues that Dr. Befurt

should not be permitted “to testify regarding the ultimate

issues of the validity of the patents in suit or their

infringement.” (Id.). Dr. Befurt’s testimony was subject to

a separate Daubert motion, which was granted in part and

denied in part. (Doc. ## 164; 188). There, the Court excluded

Dr. Befurt’s expert opinion and testimony “to the extent he

opines that [Delta T’s expert, Charles] Mauro’s surveys are

faulty because of the specific prior art included in the

surveys or because they did not include specific prior art.”

(Doc. # 188 at 15). However, the Court determined that “Dr.

Befurt may testify as to survey design methodologies

generally, as well as the other purported design flaws in Mr.

Mauro’s surveys.” (Id.).

Given that Defendants concede that Dr. Befurt will only

opine on the flaws in Mr. Mauro’s surveys, the Motion is

granted as to this requested relief. (Doc. # 166 at 6-8). Dr.

Befurt’s expert testimony is excluded to the extent he opines

on the validity of Delta T’s patents, or on the ultimate legal

issue of Defendants’ infringement.

6. Affirmative Defenses

Lastly, Delta T moves to preclude Defendants “from

testifying or presenting proof as to certain affirmative

defenses.” (Doc. # 163 at 11). Delta T argues that “Defendants

should not be permitted to argue or testify or submit any

evidence beyond their equitable defenses of waiver,

acquiescence, laches and/or estoppel.” (Doc. # 163 at 12).

Defendants do not appear to challenge this but argue in

response to Delta T’s Motion that they should also be able to

present evidence as to double patenting. (Id.; Doc. # 163 at

8-10). However, as previously noted, in reply to their own

Motion in Limine, Defendants shift their position, stating

they are “longer pursuing [their] double patenting defense at

trial.” (Doc. # 171 at 2). Accordingly, the Motion is granted

to the extent Defendants seek to present evidence of a double

patenting defense.

Regarding Defendants’ equitable defenses, Delta T also

moves to exclude “any testimony or evidence . . . beyond what

was testified to by Topolski in his 30(b)(6) deposition.”

(Doc. # 163 at 12). Defendants respond that “a Rule 30(b)(6)

witness is not required to testify as to the facts supporting

a party’s legal contention.” (Doc. # 166 at 9).

Federal Rule of Civil Procedure 30(b)(6) requires a

corporate party to designate one or more representatives “who

consent to testify on its behalf; and it may set out the

matters on which each person designated will testify.” Fed.

R. Civ. P. 30(b)(6). “The persons designated must testify

about information known or reasonably available to the

organization.” Id. “A corporation has an affirmative duty to

provide a witness who is able to provide binding answers on

behalf of the corporation.” QBE Ins. v. Jorda Enters., Inc.,

277 F.R.D. 676, 688 (S.D. Fla. 2012). However, “absolute

perfection is not required of a [Rule] 30(b)(6) witness.”

Jarvis v. Carnival Corp., No. 16-CV-23727-MORENO/TURNOFF,

2017 WL 6987754, at *4 (S.D. Fla. Aug. 29, 2017) (citing QBE

Insurance, 277 F.R.D. at 691). “The mere fact that a designee

could not answer every question on a certain topic does not

necessarily mean that the corporation failed to comply with

its obligation.” Id. “The rule provides for a variety of

sanctions for a party’s failure to comply with its Rule

30(b)(6) obligations,” including “preclusion of testimony.”

QBE Insurance, 277 F.R.D. at 690.

Here, Delta T argues that Defendants should be precluded

from introducing any testimony or evidence regarding their

equitable affirmative defenses other than the testimony

offered at Mr. Topolski’s Rule 30(b)(6) deposition. (Doc. #

163 at 11-12). However, the Court is not in a position to

make such a determination at this juncture. “[A]lthough a

corporation is ‘bound’ by Rule 30(b)(6) testimony, it is not

precluded from offering additional – perhaps even

contradictory – testimony at trial.” Am. K-9 Detection

Servs., Inc. v. Rutherfoord Int’l, Inc., No. 6:14-cv-1988-

RBD-TBS, 2016 WL 7183365, at *5 (M.D. Fla. May 16, 2016)

(citation omitted); see also In re: 3M Combat Arms Earplug

Prods. Liab. Litig., No. 3:19-md-2885, 2021 WL 918214, at *7

(N.D. Fla. Mar. 10, 2021) (“The Eleventh Circuit has not

addressed whether the testimony of a Rule 30(b)(6)

representative constitutes a judicial admission, with

conclusive effect, or merely an evidentiary admission, which

can be contradicted or explained at trial. . . . Every other

circuit to consider the issue has treated 30(b)(6) testimony

as an evidentiary admission that is binding in the sense that

it can be used against the corporation, but not in the sense

that it precludes the [corporation] from [later] correcting,

explaining, or supplementing that testimony.” (internal

quotation marks and citations omitted)).

The Court will be in a much better position to rule on

such objections in the trial context, with the benefit of

knowing precisely what testimony Delta T is objecting to.

Therefore, the Motion is denied without prejudice as to this

relief.

B. Defendants’ Motion in Limine

Defendants seek to exclude two categories of evidence or

testimony from trial. (Doc. # 165).

1. Commercial Embodiments of Delta T’s Patents

First, Defendants move to exclude “[a]ny evidence or

testimony concerning Delta T’s alleged commercialization of

the patents in suit,” arguing that the fans embodying the

patents are irrelevant, “potentially prejudicial,” might

confuse the jury, and are precluded by Delta T’s conduct

during the course of discovery. (Doc. # 165 at 2-7). However,

Defendants concede there should be one exception to this

exclusion as some of the commercial embodiments are included

in the file history of the ‘004 Patent. (Id. at 8). Delta T

responds that Defendants are “incorrect in arguing [that]

commercial embodiments cannot be used in infringement

analysis” and that “there is no discovery bar to relying on

the embodiments.” (Doc. # 168 at 3, 5).

Under Federal Rule of Evidence 402, “[i]rrelevant

evidence is not admissible.” Fed. R. Evid. 402. “Evidence is

relevant if: (a) it has any tendency to make a fact more or

less probable than it would be without the evidence; and (b)

the fact is of consequence in determining the action.” Fed.

R. Evid. 401. But not all relevant evidence is admissible.

“The court may exclude relevant evidence if its probative

value is substantially outweighed by a danger of one or more

of the following: unfair prejudice, confusing the issues,

misleading the jury, undue delay, wasting time, or needlessly

presenting cumulative evidence.” Fed. R. Evid. 403.

Under Federal Rule of Civil Procedure 26(e), “[a] party

who has made a disclosure under Rule 26(a) – or who has

responded to an interrogatory, request for production, or

request for admission – must supplement or correct its

disclosure or response . . . in a timely manner if the party

learns that in some material respect the disclosure or

response is incomplete or incorrect, and if the additional or

corrective information has not otherwise been made known to

the other parties during the discovery process or in writing.”

Fed. R. Civ. P. 26(e). “The burden of establishing that [a

party] failed to provide information pursuant to Rule 26(e)

rests with . . . the party seeking the . . . exclusion.”

Johnson v. R.J. Reynolds Tobacco Co., No. 2:12-cv-618-JES-

CM, 2014 WL 1930392, at *2 (M.D. Fla. May 14, 2014). “If a

party fails to provide information . . . as required by Rule

[26(e)], the party is not allowed to use that information .

. . to supply evidence . . . at trial, unless the failure was

substantially justified or is harmless.” Fed. R. Civ. P.

37(c)(1). “The burden of establishing that a failure to

disclose was substantially justified or harmless rests on the

nondisclosing party.” Mitchell v. Ford Motor Co., 318 F. App’x

821, 824 (11th Cir. 2009).

Here, Delta T made clear during discovery that it would

not seek to introduce the physical fans: “Finally, presenting

samples of the actual Haiku fans to the finder of fact would

be inappropriate since comparing Haiku products to Vogue

products is not the proper test for design patent

infringement.” (Doc. # 168-1 at 3). Delta T should not now be

able to introduce the physical fans. Additionally, the

physical Haiku and L-Series fans are not pertinent to the

issue of infringement. As Delta T concedes, “[i]nfringement

is to be determined by comparing the asserted claims to the

accused device, and not by comparing the accused device to a

preferred or commercial embodiment of the patentee’s claimed

invention.” Orthoarm, Inc. v. Forestadent USA, Inc., 682 F.

Supp. 2d 978, 981 (E.D. Mo. 2008) (citing Martin v. Barber,

755 F.2d 1564, 1567 (Fed. Cir. 1985)); (Doc. # 168 at 3).

Given the test for patent infringement, introduction of

the physical fans for this purpose would likely confuse the

jury, thereby unduly prejudicing Defendants. Orthoarm, 682 F.

Supp. 2d at 981 (“[T]he Court believes that allowing admission

of the commercial embodiment in this case creates too great

a potential for jury confusion and improper comparison

between the commercial embodiment and the accused device.”).

Contrary to Delta T’s position, the Court does not find that

these issues are remedied by the fact that Defendants could

have purchased the fans in question, or that they possibly

previously possessed said fans. (Doc. # 180 at 3 (“[A]lthough

Delta T does not currently have explicit evidence that

Defendants . . . had a physical Haiku fan in their possession,

this can be inferred from the email correspondence between

Furn Fan and Defendants[.] . . . Indeed, Delta T purchased

Defendants’ Vogue Fan in 2016. Further, Delta T’s Fans are

widely available in the marketplace.” (emphases omitted))).

Therefore, the Motion is granted to the extent that Delta

T seeks to introduce the physical Haiku and L-Series fans at

trial. See Hako-Med USA, Inc. v. Axiom Worldwide, Inc., No.

8:06-cv-1790-VMC-AEP, 2009 WL 10671312, at *4-5 (M.D. Fla.

Aug. 26, 2009) (“A plaintiff’s commercial embodiment of its

patent cannot be relied on to determine whether a defendant’s

product infringes the patent. The patent case requires

comparison between only the allegedly infringing product and

the subject patent. . . . To the extent Plaintiffs wish to

introduce the Exhibits to compare Plaintiffs’ product to

Defendants’ product in support of the patent claims,

Defendants’ Motion is valid. However, determining whether

commercial embodiments are relevant to explain the patent, to

rebut possible claims, or to establish a timeline requires a

factual context not currently available.”).

However, with regard to other forms of the commercial

embodiments, such as photographs, the Court is not in a

position to determine whether such evidence is admissible.

The parties do not specifically brief the admissibility of

other forms of commercial embodiment of the patents, nor is

the Court certain within what context or for what purpose

such evidence would be introduced.1

The Court does note, however, that there does not appear

to be discovery-related or other potential unfair prejudice

as to the discussion of commercial embodiments generally.

Indeed, in an April 27, 2020, response to Defendants’ second

set of interrogatories, Delta T stated: “Delta T admits that

the ‘757 patent protects the Haiku. . . . Delta T admits that

the ‘027 patent protects the L-Series fan.” (Doc. # 168-1 at

1-2). And, Delta T’s expert included in his report: “I have

1. One such context may be Defendants’ concession as to the

commercial embodiments allegedly referenced as prior art in

the file history of the ‘004 Patent, which the parties do not

appear to dispute. (Doc. # 165 at 8).

been asked to provide my opinions concerning whether Delta

T’s design patents, identified below, covering their Haiku

and Haiku L-series ceiling fans are infringed by

[Defendants’] Vogue ceiling fan.” (Doc. # 153 at 3 (emphasis

added)). Thus, Defendants were on notice of Delta T’s position

that the Haiku and L-Series fans constituted the commercial

embodiments of Delta T’s patents. Accordingly, the Motion is

denied without prejudice to the extent Defendants seek to

introduce any and all evidence of the commercial embodiment

of the patents, and they may re-raise this objection at trial.

2. Promotion or Sales of Delta T’s Products

Second, Defendants move to exclude “[a]ny evidence or

testimony concerning Delta T’s promotion or sales of products

allegedly embodying the designs of the patents in suit,

including Delta T’s Haiku and L-Series fans.” (Doc. # 165 at

2). Defendants argue that such evidence is “wholly

irrelevant” because the parties have stipulated that “Delta

T is not seeking lost profits on sales of the Haiku and L-

Series fans” and because Defendants “will not raise the

defense of patent invalidity based on obviousness,” the test

of which includes a weighing of commercial success. (Doc. #

165 at 8-9). Defendants also argue that such evidence would

be highly prejudicial and confusing to the jury. (Id. at 9).

Delta T responds that Delta T’s “advertising, marketing, and

marketplace sales success” are “relevant to, at least,

whether this is an exceptional case or not for attorney’s

fees.” (Doc. # 168 at 6). And, they contend they are relevant

to Defendants’ double patenting defense. (Id. at 8).

To the extent that Delta T argues this evidence is

relevant to an award of attorney’s fees, the Court agrees

with Defendants that the determination of attorney’s fees is

a question for the judge, not the jury. See AIA Am., Inc. v.

Avid Radiopharmaceuticals, 866 F.3d 1369, 1373-74 (Fed. Cir.

2017) (“[R]equests for attorney’s fees under [Section] 285

are equitable and do not invoke the Seventh Amendment right

to a jury trial. . . . [T]he district court was not foreclosed

from making additional findings about AIA’s state of mind,

intent, and culpability.”); see also Elan Pharms., LLC v.

Sexton, 421 F. Supp. 3d 1119, 1125 (D. Kan. 2019) (“Thus, an

award of attorneys’ fees under [Section] 285 is a post-trial

decision for the judge rather than an element of damages to

be proved at trial.”). None of the cases cited by Delta T

require a court to present the issue of willfulness to the

jury when it goes only toward fees and not damages. (Doc. ##

168; 180). Therefore, the Motion is granted insofar as Delta

T seeks to introduce evidence of Delta T’s promotion or sales

to demonstrate that this constitutes an exceptional case

warranting attorney’s fees.

Regarding Delta T’s argument that this evidence is

relevant to rebut Defendants’ double patenting defense,

Defendants state that they are “no longer pursuing” this

defense. (Doc. # 171 at 2). In the event that Plaintiffs seek

to introduce this information for another purpose, the Court

will be in a better position to determine its admissibility

within the trial context.

Accordingly, it is now

ORDERED, ADJUDGED, and DECREED:

(1) Plaintiff Delta T, LLC’s Motion in Limine (Doc. # 163)

is GRANTED in part and DENIED in part.

(2) Defendants Dan’s Fan City, Inc., and TroposAir, LLC’s

Motion in Limine (Doc. # 165) is GRANTED in part and

DENIED in part.

DONE and ORDERED in Chambers in Tampa, Florida, this

27th day of May, 2021.

VIRGINIA M. HERNANDEZ’COVINGTON

UNITED STATES DISTRICT JUDGE

20