The opinion
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
MGMTL, LLC CIVIL ACTION
VERSUS NO. 20-2138-WBV-MBN
STRATEGIC TECHNOLOGY SECTION: D (5)
ORDER AND REASONS
Before the Court is Defendant’s Motion in Limine to Preclude Evidence,
Testimony, or References Related to Other Alleged Wrongdoing, filed by Strategic
Technology Institute, Inc. (“STI”).1 MGMTL, LLC (“MGMTL”) opposes the Motion,2
and STI has filed a Reply.3
After careful consideration of the parties’ memoranda and the applicable law,
the Motion is GRANTED in part, and DENIED in part.
I. FACTUAL AND PROCEDURAL BACKGROUND4
This is copyright infringement case concerning MGMTL’s Security
Management and Reporting Tool (“SMART”), a “computer software application
designed to streamline and efficiently manage the complex tasks and requirements
1 R. Doc. 128.
2 R. Doc. 139. On June 14, 2021, MGMTL moved for leave to file under seal its Memorandum in
Support and several exhibits thereto because “STI has produced information related to the computer
software programs at issue that it has designated as confidential pursuant to the protective order.” R.
Doc. 141. The Court granted the Motion on June 15, 2021. R. Doc. 144.
3 R. Doc. 156.
4 In the interest of judicial economy, and because the Court set forth the factual and procedural
background of this matter in great detail in its February 16, 2022 Order and Reasons regarding
Defendant’s Motion In Limine to Preclude Opinion Testimony of Jorge Menes (R. Doc. 173), the Court
will limit its recitation of the factual and procedural background to matters relevant to the instant
Motion.
of United States Department of Defense security managers, government contracting
companies, and other industries for which the management of personnel and their
security clearance is a priority.”5 In the instant Motion, STI asserts that this case
concerns breach of contract, copyright infringement, and trade secret
misappropriation claims, all in connection with STI’s creation of a web-based software
called PASS. 6 Although MGMTL alleges that STI created PASS by copying
MGMTL’s SMART software, STI contends that while the software programs perform
similar functions, PASS is not a copy of the SMART software.7 STI asserts that at
some point in this litigation, MGMTL realized several critical facts, including that
STI never sold PASS, rendering MGMTL’s damages minimal, and that MGMTL’s
software expert opined that STI did not copy the SMART source code.8 STI alleges
that, instead of dismissing this case or attempting to negotiate a reasonable
settlement, MGMTL “attempted to pressure STI through allegations that STI had
engaged in unlawful conduct unrelated to the core issues in this lawsuit.”9
On June 7, 2021, STI filed the instant Motion, seeking to preclude MGMTL
from introducing evidence and testimony at trial concerning the following five
allegations of unlawful conduct: (1) the ongoing criminal investigation conducted by
the Naval Criminal Investigative Service (“NCIS”) involving STI, including but not
limited to the existence of the investigation and any testimony or evidence related to
5 R. Doc. 22 at ¶¶ 2 & 8.
6 R. Doc. 128-1 at p. 1.
7 Id.
8 Id.
9 Id.
communications with NCIS or the Government in connection with the investigation;
(2) that STI has improperly employed family members of Marine Forces Reserve
officials, including but not limited to MGMTL’s Exhibit Nos. 241 and 294, the
responses to Interrogatory No. 23 in MGMTL’s Exhibit Nos. 304 and 306, and any
testimony discussing the issue; (3) that STI misstated its sales information in
submissions to the United States Government General Services Administration
(“GSA”), including but not limited to MGMTL’s Exhibit Nos. 247 and 250 and any
testimony, including from James Fontana, or argument on this issue; (4) that any STI
official, particularly STI’s CEO, had security clearance issues; and (5) that loading
software developed in a foreign country (such as India) onto a military computer is
illegal, and implying that STI’s demonstration of PASS for the Marine Forces Reserve
office in New Orleans, Louisiana (sometimes referred to as “MARFORRES”) was
illegal.10 STI argues that the foregoing evidence is not relevant and that any
probative value of the evidence is substantially outweighed by the risk of prejudice
and jury confusion if it is introduced at trial.
MGMTL argues that all of the foregoing evidence is relevant, highly probative,
and admissible in this case.11 MGMTL further asserts that any risk of prejudice from
the introduction of this evidence is outweighed by the significant probative value of
the evidence. As such, MGMTL argues that STI’s Motion should be denied. In its
Reply brief, MGMTL maintains that the evidence at issue is not relevant to the claims
or defenses in this case, and that MGMTL failed to address the substantial prejudice
10 R. Doc. 128 at p. 1.
11 R. Doc. 139-16 at pp. 6-24.
that STI will suffer if MGMTL is permitted to insinuate that STI has engaged in
criminal conduct.12 STI also maintains that any probative value of the evidence is
substantially outweighed by its risk of prejudice to STI.
II. LEGAL STANDARD
According to the Fifth Circuit, the purpose of a motion in limine is to prohibit
opposing counsel “from mentioning the existence of, alluding to, or offering evidence
on matters so highly prejudicial to the moving party that a timely motion to strike or
an instruction by the court to the jury to disregard the offending matter cannot
overcome its prejudicial influence on the jurors’ minds.”13 Under Federal Rule of
Evidence 401, evidence is relevant if it has any tendency to make a fact more or less
probable than it would be without the evidence, or if the fact it seeks to prove is of
consequence in determining the action.14 While all relevant evidence is admissible,
the Court may exclude relevant evidence if its probative value is substantially
outweighed by danger of “unfair prejudice, confusing the issues, misleading the jury,
undue delay, wasting time, or needlessly presenting cumulative evidence.” 15
However, the Fifth Circuit has held that, “The exclusion of evidence under Rule 403
should occur only sparingly.”16 District courts are afforded wide discretion in
determining the relevance and admissibility of evidence under Fed. R. Evid. 401 and
12 R. Doc. 156 at pp. 1-2.
13 O’Rear v. Fruehauf Corp., 554 F.2d 1304, 1306 n.1 (5th Cir. 1977) (quotation and internal quotation
marks omitted).
14 Fed. R. Evid. 401.
15 Fed. R. Evid. 403.
16 United States v. Pace, 10 F.3d 1106, 1115-16 (5th Cir. 1993); See United States v. Powers, 168 F.3d
741, 749 (5th Cir. 1999) (same).
402.17 A district court’s ruling on evidentiary issues is reviewed by an appellate court
for an abuse of discretion.18 Thus, when the district court conducts “a carefully
detailed analysis of the evidentiary issues and the court’s own ruling, appellate courts
are chary about finding an abuse of discretion.”19
III. ANALYSIS
A. Evidence and Testimony Regarding the Ongoing NCIS Criminal
Investigation.
STI asserts that Jorge Menes, the co-creator of SMART, testified during his
deposition regarding conversations between himself and NCIS, and that MGMTL’s
counsel asked questions about the NCIS criminal investigation during the deposition
of STI’s employees.20 STI argues that MGMTL cannot demonstrate that the criminal
investigation is relevant because there is no testimony from the government on the
issue, Menes testified that NCIS could not tell him whether its investigation is about
software, and Menes claims to “know very little to nothing about any kind of
investigation into STI on the federal side.”21 STI claims that the existence of this
investigation does not assist MGMTL in proving any of its claims, as there is no
evidence of any final conclusions or findings from the investigation.22 STI contends
that any probative value in this evidence is substantially outweighed by the danger
17 Sprint/United Management Co. v. Mendelsohn, 552 U.S. 379, 384, 128 S.Ct. 1140, 1144-45, 170
L.Ed.2d 1 (2008).
18 Kelly v. Boeing Petroleum Services, Inc., 61 F.3d 350, 356 (5th Cir. 1995).
19 Id.
20 R. Doc. 128-1 at p. 4 (citing R. Doc. 128-2 at pp. 3, 10-12, 13-18, & 19-20; R. Doc. 128-3 at p. 5; R.
Doc. 128-7 at pp. 71-72; R. Doc. 128-8 at p. 3).
21 R. Doc. 128-1 at pp. 4-5 (quoting R. Doc. 128-2 at pp. 11-12) (internal quotation marks omitted).
22 R. Doc. 128-1 at p. 5 (citing Park West Galleries, Inc. v. Global Fine Art Registry, LLC, Civ. A. Nos.
2:08-cv-12247, 2:08-cv-12274, 2010 WL 848689, at *1 (E.D. Mich. Mar. 8, 2010) (Zatkoff, J.)).
of unfair prejudice, confusing the issues, and misleading the jury, since the jury is
likely to attach great significance to the mere existence of the investigation and
believe that it supports MGMTL’s claims.23 STI further asserts that the alleged
statement by an NCIS agent to Menes that STI “f*cked” MGMTL, and any other
alleged communication with Menes, is inadmissible hearsay under Fed. R. Evid.
801(c).24 STI claims that it is not aware of any reason MGMTL could offer this
statement other than for its truth, but if it does, its minimal probative value is
substantially outweighed by the risk of unfair prejudice, confusion of the issues, and
misleading the jury, for the same reasons set forth above and because the jury is
likely to consider the statement for its truth.25
MGMTL asserts that evidence regarding the NCIS criminal investigation is
relevant to STI’s statute of limitations defense, asserted in STI’s Motion for Summary
Judgment, and to MGMTL’s defense thereto. 26 MGMTL claims that NCIS’s
investigation is what confirmed for MGMTL that STI had stolen its software and
prompted MGMTL to file this suit.27 MGMTL points out that STI previously argued
that all communications between MGMTL and NCIS were relevant and that
Magistrate Judge Michael B. North agreed with STI, such that, “The relevance of
communications with NCIS has already been decided.”28 MGMTL further asserts
that communications with NCIS explains what MGMTL learned and when it learned
23 R. Doc. 128-1 at p. 5.
24 Id.
25 Id.
26 R. Doc. 139-16 at pp. 6-7.
27 Id. at p. 6.
28 Id. (citing R. Docs. 73 & 82).
about STI’s conduct, which contributed to the triggering of the accrual of MGMTL’s
claims against STI and prompted the filing of this suit.29 Finally, MGMTL contends
that the NCIS investigation is relevant because it explains why the computer
containing PASS could not be located at MARFORRES during discovery, as NCIS
had seized it.30 MGMTL asserts this fact is relevant because STI will try to argue to
the jury, as it has throughout the litigation, that MARFORRES ran a search for PASS
and could not locate PASS or a computer containing PASS.31
In response, STI disputes MGMTL’s assertion that evidence regarding the
NCIS investigation is relevant to the accrual of its claims because MGMTL alleged
in the Amended Complaint that it first learned about the alleged infringement from
a colleague, later identified as John Zimmer, in November 2017, and that MGMTL
was unaware of STI’s infringing conduct until “at the very earliest November 2017.”32
STI reiterates that Menes stated during his deposition that NCIS told him “little to
nothing” about its investigation, and that MGMTL did not provide any statements
from the government, during discovery or in its Opposition brief, supporting its
position that what MGMTL learned through the conversations and when even
pertained to PASS, “much less details of infringement.”33 As such, STI argues that
MGMTL’s argument for relevance is a post hac justification unsupported by the
evidence.
29 R. Doc. 139-16 at pp. 6-7.
30 Id. at p. 7.
31 Id. (citing R. Doc. 49 at ¶¶ 10-11).
32 R. Doc. 156 at p. 2 (citing R. Doc. 22 at ¶ 35; quoting R. Doc. 101-22 at p. 12) (internal quotation
marks omitted).
33 R. Doc. 156 at p. 2 (citing R. Doc. 128-2 at pp. 11-12) (internal quotation marks omitted).
To the extent MGMTL asserts that Judge North has already determined that
evidence regarding the NCIS investigation is relevant, it is clear that MGMTL
misunderstands the broader nature of relevance during discovery as opposed to
trial.34 As this Court previously explained, “The threshold for relevance at the
discovery stage is lower than the threshold for relevance of admissibility of evidence
at the trial stage.”35 Thus, “what might be relevant as to discovery leading up to trial
is not the standard for determining relevancy and admissibility at trial.” 36
Importantly, Federal Rule of Civil Procedure 26 specifies that, “Information within
the scope of discovery need not be admissible in evidence to be discoverable.”37 While
Judge North concluded that information and documents regarding, “All
communications between the Government and MGMTL, Menes, Himel, or MGMTL’s
attorneys regarding STI,” was relevant for purposes of discovery,38 the Magistrate
Judge made no ruling on whether the evidence is relevant and admissible at trial.
The Court therefore rejects MGMTL’s argument that the relevance of its
communications with NCIS has already been decided in this case.
While MGMTL asserts that evidence regarding the NCIS investigation is
relevant because the investigation prompted MGMTL to file this suit,39 that position
34 Tomlinson v. Allstate Indemn. Co., Civ. A. No. 06-617, 2007 WL 430642, at * 2 (E.D. La. Feb. 5, 2007)
(Roby, M.J.).
35 Banks v. St. James Parish School Board, Civ. A. No. 65-16173, 2021 WL 2070132, at *3 (E.D. La.
May 14, 2021) (Currault, M.J.) (citing Rangel v. Gonzalez Mascorro, 274 F.R.D. 585, 590 (S.D. Tex.
2011)).
36 Brown v. Wal-Mart Louisiana, LLC, Civ. A. No. 10-1402, 2012 WL 31098785, at *8 (W.D. La. July
2, 2012) (Doherty, J.) (emphasis in original).
37 Fed. R. Civ. P. 26(b)(1).
38 See, R. Doc. 73 at p. 1; R. Doc. 82.
39 R. Doc. 139-16 at pp. 6 & 9.
is contradictory to the allegations in its Amended Complaint. In the Amended
Complaint, MGMTL alleges that it first learned that STI may have copied its SMART
software in November 2017, when Menes was informed by a colleague that he
believed he saw STI install “a repackaged or altered version of MGMTL’s SMART
software” at the Marine Forces Reserve office in New Orleans.40 MGMTL then
alleges that Menes “independently heard about STI’s altering, repackaging, and
renaming of MGMTL’s software when he received an anonymous email dated
September 6, 2018, from an individual identified as an ‘STI employee.’”41 The
Amended Complaint contains no reference to the NCIS investigation. Thus, the
Court is not persuaded that the NCIS communications are what prompted MGMTL
to file this suit. The arguments raised in opposition to STI’s Motion for Summary
Judgment likewise belie MGMTL’s assertion that the NCIS communications
triggered this suit.42 In that pleading, MGMTL argued that its copyright and trade
secret claims are not time-barred because it first learned of STI’s alleged
infringement in November 2017 and “MGMTL timely sued in July 2020, well within
three years of having learned of STI’s misconduct with respect to distribution to
MARFORRES.” 43 Based on this evidence, the Court finds that the NCIS
investigation has minimal relevance to MGMTL’s defense regarding the timeliness of
its claims.
40 R. Doc. 22 at ¶ 35.
41 Id. at ¶ 36.
42 See, R. Doc. 101-22.
43 R. Doc. 101-22 at p. 12 (citing R. Doc. 1 at ¶¶ 30 & 37).
The Court further finds that MGMTL has failed to show how the NCIS
communications “explain what MGMTL learned and when about STI’s conduct.”44
MGMTL has not provided the Court with those details, despite asserting that the
communications “are critical to MGMTL’s effort to refute the allegations that its
claims are untimely.”45 In fact, the evidence before the Court indicates just the
opposite – that Menes’s communications with NCIS regarding the investigation did
not provide Menes or MGMTL with any information regarding STI’s conduct. During
his deposition, Menes testified as follows:
A I mean NCIS never told me anything.
. . . .
A [I]t was never offered to me why they were asking me these questions.
I was never brought in on any kind of -- I have -- I still to this day don’t
know what they want with me. I know it’s not about software or
recouping any kind of losses but, again, like, he can’t tell me whether
it’s about software, not about software. I know very little to nothing
about any kind of investigation into STi on the federal side. I just know
that Brent Schroeder from NCIS asked me a bunch of questions. And
as an intelligence analyst in the Marine Corps, I’m able to sort of
understand when someone is trying to solicit information from me.46
Although STI specifically referenced this testimony in its Motion,47 MGMTL did not
address it in its Opposition brief.48 While MGMTL claims that NCIS’s statement to
Menes that STI had “f*cked” MGMTL is relevant to rebut STI’s statute of limitations
defense and will be offered to show only that the statement was made,49 the Court
44 R. Doc. 139-16 at pp. 6-7.
45 Id. at p. 7.
46 R. Doc. 128-2 at p. 11.
47 R. Doc. 128-1 at pp. 4-5.
48 See, R. Doc. 139-16 at pp. 6-13.
49 R. Doc. 139-16 at pp. 11-12.
finds this argument disingenuous. The Court agrees with STI that the only purpose
of introducing this statement is to show the truth of the matter asserted and, as such,
it constitutes inadmissible hearsay under Fed. R. Evid. 801(c).
To the extent MGMTL asserts that evidence of the NCIS investigation is
relevant to show why PASS could not be located on a computer at MARFORRES
during discovery – because NCIS had seized it – the Court agrees that the evidence
is relevant for that narrow purpose. As previously discussed, MGMTL has alleged in
the Amended Complaint that it first learned of STI’s alleged infringement of its
SMART software when a former colleague advised Menes in November 2017 that he
saw STI install security management software at MARFORRES, which he believed
was a repackaged version of SMART.50 MGMTL has also alleged that Menes received
an anonymous email in September 2018 from an “STI employee” who advised that
STI had repackaged SMART as PASS and had sold it to the Marine Forces Reserve,
and that PASS had been installed “on 5 standalone machines at the security office at
MFR [Marine Forces Reserve] . . . .”51 Additionally, MGMTL has provided the Court
with a portion of the deposition transcript of Donald Washington who seemed to
testify that PASS was loaded onto an STI computer in the “security office” of the
Marine Forces Reserve, but that PASS could not be located on any of their computers
because the computer had been seized by NCIS.52 Thus, if STI argues at trial that
the Marine Forces Reserve office in New Orleans ran a search for PASS and could
50 R. Doc. 22 at ¶ 35.
51 Id. at ¶ 36.
52 R. Doc. 139-7 at pp. 2-5.
not locate PASS or a computer containing PASS, as it has argued in at least one prior
pleading,53 evidence of the NCIS’s seizure of the computer allegedly containing PASS
will be relevant to MGMTL’s defense to that argument.
The Court turns to whether the probative value of evidence regarding the NCIS
investigation, including NCIS communications with Menes and the NCIS’s seizure of
a computer containing PASS, is substantially outweighed by the potential for
prejudice.54 Admitting evidence regarding the NCIS investigation of these claims and
the NCIS investigator’s communications with Menes will undoubtedly confuse the
issues and mislead the jury, as the jury is likely to attach significance to the mere
existence of a criminal investigation even though Menes testified that he knows “very
little to nothing about the investigation into STI,” and, more importantly, that he,
“know[s] it’s not about software.”55 The Court agrees with STI that the case cited by
MGMTL, Price v. PCS Nitrogen Fertilizer, is distinguishable from the facts of this
case, as that case involved a claim for retaliation and the criminal investigation was
relevant to establishing an element of that claim.56 Unlike in Price, none of MGMTL’s
claims, which include copyright infringement, breach of contract, and
misappropriation of trade secrets, 57 require proof of a criminal investigation.
Further, the court in Price found that there was little risk of jury confusion because,
“The proceedings concern two very distinct issues – the first concerns criminal
53 See, R. Doc. 49 at ¶¶ 10-11. See also, R. Doc. 166 at pp. 15-16, 28, & 29.
54 Harrell v. DCS Equipment Leasing Corp., 951 F.2d 1453 (5th Cir. 1992).
55 R. Doc. 128-2 at pp. 11-12.
56 R. Doc. 139-16 at p. 8, n.26 (citing Price, Civ. A. No. 03-153-RET-DLD, 2010 WL 11538362, at *2
(M.D. La. Feb. 17, 2010) (Tyson, C.J.); See, R. Doc. 156 at p. 3.
57 R. Doc. 22 at ¶¶ 41-61.
violations of environmental regulations, and the second concerns alleged employment
retaliation. The jury will be instructed in such a manner that there will be little to
no risk of unfair prejudice, confusion of the issues, or misleading the jury.”58 The
same cannot be said of the NCIS investigation in this matter, as MGMTL claims that
the investigation arose as a direct result of Menes forwarding the 2018 whistleblower
email to the Inspector General of the United States Marine Corps.59 Thus, the NCIS
investigation in this matter is not a distinct issue. The Court further finds that
evidence regarding the NCIS investigation should be excluded because there is a real
risk that it will create a trial within a trial and confuse the issues or mislead the jury
that any findings of the investigation are relevant, or even necessary, to address these
claims.60 Finally, the Court finds that evidence regarding the NCIS investigation,
without context or clarification from any witness, may create unfair prejudice to STI.
The Court finds differently in the event that STI “opens the door” on the failure
to find PASS on the MARFORRES computers. While the Court has determined that
introduction of the relevant evidence of the NCIS investigation and testimony
regarding what an NCIS investigator may have communicated to Menes may lead to
jury confusion and misleading the jury, and thus should be excluded, the Court finds
that precluding evidence that the computers were seized as part of an investigation
in an effort to explain the failure to find PASS on the computers, should that issue be
raised, is also misleading and confusing. In one case cited by STI in support of its
58 Price, Civ. A. No. 03-153-RET-DLD, 2010 WL 11538362 at *2.
59 R. Doc. 139-16 at p. 3 (citing R. Doc. 73-4).
60 In re Oil Spill by Oil Rig DEEPWATER HORIZON in Gulf of Mexico, on April 20, 2010, MDL No.
2179, 2012 WL 413860, at *3 (E.D. La. Feb. 9, 2012) (Barbier, J.) (citation omitted)
motion, the court excluded evidence that one of the named defendants was the subject
of an ongoing criminal investigation.61 Such is not the case here. In the other case
cited by STI, the court excluded evidence of criminal investigations based on finding
that that evidence did not assist the defendants in their truth defense.62 MGMTL
asserts that allowing STI to argue that PASS was not found on any MARFORRES
computer gives “an incomplete picture.”63 The Court agrees. That said, the Court also
stresses and agrees with MGMTL’s acknowledgement that this evidence would only
come in if STI “opens the door.”64 In its reply brief, STI does not address MGMTL’s
acknowledgement that this evidence would come in only if STI opens the door. The
Court finds that, should STI open the door and claim that PASS could not be located
on any MARFORRES computer, MGMTL will be allowed to introduce evidence of the
NCIS seizure of the computers explaining why PASS could not be found on the
computers.65 Such a holding recognizes that the basis of any introduction of evidence
should be to aid in the search of the truth. Allowing STI to open the door and
introduce evidence that PASS was not located on the MARFORRES computers,
without allowing introduction of evidence explaining why, would be an affront to this
basic premise.
61 Fidelity Nat. Title Ins. Co. of New York v. Intercounty Nat. Title Ins. Co., No. 00C5658, ooC7086,
2003 WL 2005233 (N.D. Ill. Apr. 30, 2003).
62 Park West Galleries, Inc. v. Global Fine Art Registry, LLC, Civ. A. Nos. 2:08-cv-12247, 2:08-cv-
12274, 2010 WL 848689, at *1 (E.D. Mich. Mar. 8, 2010) (Zatkoff, J.).
63 R. Doc. 139 at p. 7.
64 R. Doc. 139 at p. 10.
65 If and when appropriate, the Court will discuss with counsel issuing a limiting instruction to the
jury.
Accordingly, the Court finds that evidence and testimony regarding the NCIS
investigation, including communications between Menes and NCIS, are inadmissible
under Fed. R. Evid. 403 except under the limited circumstances as described above.
B. Evidence or Testimony Regarding Allegations that STI Has
Improperly Employed Family Members of Marine Forces Reserve
Officials.
STI next seeks to preclude evidence or testimony at trial regarding STI’s
employment of family members of Marine Forces Reserve officials, elicited by Menes
during his deposition, on the basis that such evidence is based upon hearsay and
Menes’s speculation regarding the NCIS investigation.66 STI argues the evidence is
irrelevant and unfairly prejudicial under Fed. R. Evid. 403. STI further asserts that
MGMTL cannot prove that STI improperly hired family members of any Marine
Forces Reserve officials for “no show jobs,” as MGMTL relies on hearsay and rumor.67
MGMTL asserts that it is undisputed that STI employed the wife of Donald
Washington, the former deputy security manager for the Marine Forces Reserve, and
the son of Ed Maguire, the deputy chief of staff for facilities.68 According to MGMTL,
STI provided Washington access to PASS and corresponded with him about PASS
and its use at the Marine Forces Reserve, and STI corresponded with Maguire “via
exchanging proposed statements of work in contemplation of STI’s providing products
and services (including PASS) to MARFORRES.”69 MGMTL argues that Judge North
has already determined that this evidence is relevant in ruling on its prior motion to
66 R. Doc. 128-1 at p. 6 (citing R. Doc. 128-2 at pp. 4, 6, 7, 8, 9, & 10-12 ).
67 R. Doc. 128-1 at p. 7.
68 R. Doc. 139-16 at p. 13 (citing R. Doc. 139-10).
69 R. Doc. 139-16 at p. 13 (citing R. Docs. 139-11 & 139-12).
compel.70 MGMTL next assert that the evidence is not hearsay or speculation
because it will come from STI’s witnesses and records produced by STI as business
records in this case.71 On the issue of undue prejudice, MGMTL asserts that STI
would not be prejudiced by this evidence under Fed. R. Evid. 404(b)(1) because
MGMTL does not intend to use it as character evidence.72 Finally, MGMTL repeats
an argument made in its prior motion to compel that, “The circumstances of STI
providing PASS to MARFORRES and the exchange of any payment in relation to
providing MARFORRES with PASS (or to turn a blind eye to STI’s use of MGMTL’s
copyrighted intellectual property and, instead, favor STI’s PASS) are relevant to the
allegations in the complaint.”73
The Court fails to see how evidence regarding STI’s alleged employment of
family members of Marine Forces Reserve officials is relevant to MGMTL’s claims for
copyright infringement, breach of contract, and misappropriation of trade secrets.
MGMTL’s sole argument regarding relevance is that, “the issue has already been
decided: it is relevant,”74 relying solely upon Judge North’s prior order requiring the
production of this information during discovery. As previously explained, the
threshold for relevance at the discovery stage is lower than the threshold for
relevance at the trial stage,75 and evidence is not relevant and admissible at trial
70 R. Doc. 139-16 at pp. 13-14 (citing R. Doc. 62). See, R. Doc. 45.
71 R. Doc. 139-16 at p. 14 (citing Fed. R. Evid. 803(6)).
72 R. Doc. 139-16 at pp. 14-15.
73 R. Doc. 139-16 at p. 15 (quoting R. Doc. 45-1 at p. 16) (internal quotation marks omitted).
74 R. Doc. 139-16 at p. 13.
75 Banks v. St. James Parish School Board, Civ. A. No. 65-16173, 2021 WL 2070132, at *3 (E.D. La.
May 14, 2021) (Currault, M.J.) (citing Rangel v. Gonzalez Mascorro, 274 F.R.D. 585, 590 (S.D. Tex.
2011)).
merely because it is relevant for discovery purposes. The Court therefore rejects, as
meritless, MGMTL’s argument regarding the relevance of this evidence.
To the extent MGMTL asserts that this evidence is relevant to whether STI
provided PASS to MARFORRES for any exchange of payment, which is “relevant to
the allegations in the complaint,” MGMTL fails to explain how such evidence is
relevant to the allegations in its Amended Complaint. The Court is cognizant of
arguments asserted by MGMTL in a prior motion to compel that information
regarding whether STI had ever directly or indirectly paid Washington or Maguire,
or their respective spouses or children, any sum of money is relevant based on the
2018 whistleblower email that MGMTL received.76 MGMTL also argued that the
letter stated that STI had repackaged SMART as PASS and sold it to the Marine
Forces Reserve, that Maguire and Washington allegedly funded STI’s conduct, and
that, as a result, STI allegedly awarded them by hiring family members.77 The Court
notes that MGMTL referenced the 2018 email in its Opposition brief,78 but not in the
section addressing STI’s request to exclude evidence regarding its employment of
family members of Marine Forces Reserve officials.79 The Court agrees with MGMTL
that the jury is entitled to hear that STI pitched PASS to Washington and Maguire,80
as that information is relevant to MGMTL’s allegation that STI sold PASS to the
Marine Forces Reserve81 and MGMTL’s claims for copyright infringement82 and
76 R. Doc. 45-1 at pp. 16-17.
77 Id.
78 R. Doc. 139-16 at p. 3, n.6 (citing R. Doc. 134-2 “anonymous email”).
79 See, R. Doc. 139-16 at pp. 13-15.
80 R. Doc. 139-16 at p. 15.
81 R. Doc. 22 at ¶ 36.
82 Id. at ¶¶ 44, 46, & 48.
breach of contract.83 The Court concludes, however, that MGMTL has failed to show
that evidence regarding STI’s alleged employment of family members of Marine
Forces Reserve officials has any relevance to its claims or defenses in this matter. As
such, MGMTL is precluded from introducing at trial evidence or testimony related to,
and from otherwise referencing or alleging that, STI improperly employed family
members of Marine Forces Reserve officials.
C. Evidence or Testimony Related To STI’s Application For a GSA
Schedule for PASS.
STI next seeks to preclude MGMTL from introducing evidence or testimony
related to, or from otherwise referencing or raising, allegations that STI has made
inconsistent representations regarding its sales of PASS and has possibly
misrepresented such sales to the GSA, including MGMTL’s Exhibit Nos. 247 and
250.84 While MGMTL argues that STI misrepresented to the GSA that it sold PASS,
STI contends that MGMTL’s argument is based on a false premise, as MGMTL’s
expert, James Fontana, testified that the GSA submission does not show that STI
sold PASS.85 STI further asserts that the probative value of this incorrect evidence
is minimal and that it should be excluded because it will confuse and mislead the jury
and unfairly prejudice STI.86
MGMTL argues that in its submissions to list PASS on the GSA Schedule
(STI’s CSP-1 form), which STI submitted three years ago, STI represented that it had
83 Id. at ¶¶ 52 & 55.
84 R. Doc. 128-1 at pp. 8-9 (citing R. Doc. 90 at p. 20).
85 R. Doc. 128-1 at p. 8 (citing R. Doc. 101-27 at p. 7).
86 R. Doc. 128-1 at p. 8.
past sales of $7.9 million.87 MGMTL claims that in the heat of litigation, after
MGMTL’s government contract expert offered deposition testimony harmful to STI’s
position, STI sent correspondence to the federal government asserting that its prior
representation to the government was “inadequately supported.”88 MGMTL argues
that there is no basis to exclude this evidence because the document is an STI
business record that was submitted to the federal government, and the significance
of STI’s representation in getting PASS listed on its GSA Schedule has not been
proven false.89 MGMTL further asserts that STI took Fontana’s testimony out of
context, pointing out that while he testified that the CSP-1 submission entry of $7.8
million could have related to PASS and two other STI products, Fontana also testified
that the CSP-1 suggests that there were past sales of PASS.90 MGMTL points out
that the day after Fontana’s deposition, STI “scrambled to write the GSA” regarding
its prior CSP-1 submission. MGMTL contends that the jury should decide whether
STI was candid to the government when it submitted its CSP-1 form and listed $7.8
million91 in historical sales or in April 2021, when it told the government that its
submission was unsupported.92 MGMTL further argues that this evidence is
relevant to rebut STI’s allegation that MGMTL has suffered no damages in this
case.93 MGMTL asserts that the CSP-1 form should not be excluded from trial
87 R. Doc. 139-16 at pp. 15-16.
88 Id. at p. 16 (quoting R. Doc. 139-13) (internal quotation marks omitted).
89 R. Doc. 139-16 at p. 16 (citation omitted).
90 R. Doc. 139-16 at pp. 17-18 (quoting R. Doc. 139-3 at pp. 3-4, 5, & 6-7).
91 The Court notes that the parties refer to the CSP-1 form as including $7.8 million in sales and $7.9
million in sales. The distinction does not matter for purposes of this analysis.
92 R. Doc. 139-16 at p. 18.
93 Id. at p. 19.
because STI intends to introduce it as a trial exhibit, and MGMTL has agreed to its
introduction as a joint/unobjected-to trial exhibit.94
In response, STI reiterates the arguments made in its Motion, and further
asserts that, “This is not an issue of fact but rather an issue of rampant speculation
for which MGMTL has no foundation.”95
The Court agrees with MGMTL that evidence and testimony regarding STI’s
application to list PASS on a GSA Schedule is relevant to the claims and defenses in
this matter, including MGMTL’s alleged damages. Further, STI has failed to
demonstrate that the evidence should be excluded on the basis that it is “incorrect.”96
For the same reason, the Court finds that STI has failed to show that the probative
value of this “incorrect evidence” is substantially outweighed by the risk of prejudice
or jury confusion, or that it should otherwise be excluded under Fed. R. Evid. 403.97
The Court agrees with MGMTL that the jury must be able to consider and weigh this
evidence and make credibility determinations regarding Fontana’s testimony.
Accordingly, STI’s Motion is denied to the extent that it seeks to exclude evidence or
testimony, including MGMTL’s Exhibit Nos. 247 and 250 and the testimony of
Fontana, regarding STI’s application for a GSA Schedule.
94 Id. (citing R. Doc. 87 at p. 6 (Exh. No. 66)).
95 R. Doc. 156 at p. 3.
96 R. Doc. 128-1 at p. 8.
97 Id.
D. Evidence or Testimony Related to Allegations that any STI Official,
Including Its CEO, Had Security Clearance Issues.
STI next seeks to preclude MGMTL from introducing evidence at trial or
otherwise referencing the security clearances of STI employees.98 STI claims that
MGMTL has, on several occasions, alleged and sought to elicit testimony about
security clearances, but that such evidence has no relevance in this case.99 STI claims
that there is no allegation, much less evidence, that STI’s employees had a security
clearance revoked or temporarily suspended in connection with the SMART
software.100 Because the evidence has no probative value, STI contends the potential
for prejudice substantially outweighs any probative value in this evidence. STI
further asserts that this evidence should be excluded because it is likely to distract
the jury, inject extraneous issues into the trial, and prejudice the jury against STI.101
MGMTL first points out that members of STI’s staff, including former
employee, Anil Augustin, and CEO, Rakesh Chopra, hold United States security
clearances that allow access to classified information.102 MGMTL then asserts that
Augustin testified that he believed he was fired from STI because he refused to install
the PASS software at MARFORRES, believing that doing so could jeopardize his
security clearance.103 MGMTL claims this testimony has “significant relevance and
probative value” because it “is linked to the core issues in this case where the
98 R. Doc. 128-1 at pp. 9-10.
99 Id. (citing R. Doc. 128-3 at pp. 3-4; R. Doc. 128-4 at p. 4).
100 R. Doc. 128-1 at p. 9.
101 R. Doc. 128-1 at p. 9 (quoting Jones v. S. Pacific R.R., 962 F.2d 447, 449-50 (5th Cir. 1992)) (internal
quotation marks omitted).
102 R. Doc. 139-16 at p. 19.
103 R. Doc. 139-16 at p. 20 (citing R. Doc. 139-8 at pp. 2-3, 4, & 5).
allegations are that STI copied SMART, created PASS, and distributed PASS to
MARFORRES.”104 MGMTL asserts that evidence regarding security clearances is
also relevant under Fed. R. Evid. 608 and MGMTL’s ability to cross-examine STI’s
president and CEO, Chopra, regarding a revocation of his security clearance
premised on misrepresentations to the government.105 MGMTL contends that
Chopra’s deposition testimony, in which he could not recall whether his security
clearance had previously been withdrawn or whether he had ever submitted false or
fraudulent information to the government, is probative of Chopra’s character for
truthfulness or untruthfulness in a case that centers on allegations of STI’s
misappropriation and deceit.106 MGMTL further asserts that any prejudice claimed
by STI is outweighed by the significant probative value of this testimony.107
In response, STI asserts that MGMTL’s reliance on Rule 608 fails because it
only authorizes inquiry into instances of misconduct that is “clearly probative of
truthfulness or untruthfulness, such as perjury, fraud, swindling, forgery, bribery
and embezzlement.108 STI argues that testimony regarding whether its employees
faced investigations pertaining to their security clearance or “felt” that their security
clearance was jeopardized does not clear this hurdle.109
104 R. Doc. 139-16 at p. 20.
105 Id. at pp. 20-21.
106 Id. at p. 22.
107 Id.
108 R. Doc. 156 at p. 4 (quoting United States v. Crinel, Crim. A. No. 15-61, 2017 WL 490635 (E.D. La.
Feb. 7, 2017) (Morgan, J.) (internal quotation marks omitted).
109 R. Doc. 156 at p. 4 (citing EEOC v. Bobrich Enterprises, No. 08-10162, 2009 WL 577738 (5th Cir.
Mar. 6, 2009)).
Although STI is correct that the Amended Complaint contains no allegations
regarding the security clearances of STI employees, the Court finds that such
evidence, including Augustin’s testimony, is relevant to MGMTL’s allegation that STI
repackaged its software, sold it to the Marine Forces Reserve, and installed it on a
computer at the Marine Forces Reserve office in New Orleans.110 While Augustin did
not install PASS on a Marine Forces Reserve computer, the Court finds that his
testimony regarding his refusal to do so is relevant to MGMTL’s assertion that STI
sold PASS to the Marine Forces Reserve.
The Court further finds that evidence regarding STI’s security clearance issues
is relevant and admissible under Fed. R. Evid. 608(b) for purposes of MGMTL’s cross-
examination of STI’s CEO, Chopra, regarding a revocation of his security clearance
premised on misrepresentations to the government. Rule 608(b) “permit[s] inquiry
on cross-examination into specific instances of conduct which may bear on a witness’
credibility in order to impeach the credibility of the witness.”111 The Fifth Circuit has
clarified that to be admissible under Rule 608(b), “the alleged bad act must have a
basis in fact and . . . the incidents inquired about must be relevant to the character
traits at issue in the trial.”112 MGMTL claims that STI’s former CEO’s veracity is at
issue in this matter as the case centers on STI’s misrepresentations to MGMTL and
intentional and secretive infringment and misappropriation of MGMTL’s software.113
110 R. Doc. 22 at ¶¶ 44 & 46.
111 United States v. Skelton, 514 F.3d 433, 443 (5th Cir. 2008) (quoting United States v. Farias-Farias,
925 F.2d 805, 809 (5th Cir. 1991)) (internal quotation marks omitted).
112 Skelton, 514 F.3d at 444 (quoting United States v. Nixon, 777 F.2d 958, 970 (5th Cir. 1985)) (internal
quotation marks omitted).
113 R. Doc. 139-1.
To bolster its argument, it has provided excerpts from Chopra’s deposition in which
it alleges that questions regarding the former CEO’s truthfulness are raised.114 The
Court concludes that MGMTL’s cross-examination of Chopra regarding a prior
revocation of his security clearance based upon his misrepresentations to the
government satisfy these requirements of having a basis in fact and relevance to the
character trait of truthfulness and that the jury is entitled to consider the evidence
in assessing Chopra’s credibility.
Although STI argues in its Reply brief that the prior incident does not fall
within the parameters of Rule 608(b) because it does not constitute “perjury, fraud,
swindling, forgery, bribery and embezzlement,”115 at least two courts in this Circuit,
including this one, have held that, “The classic example of a permissible inquiry
would be an incident in which the witness had lied.”116 As explained by the Fifth
Circuit, “federal evidence law allows questioning on collateral instances of
misconduct that go to credibility,” subject to the balancing of Fed. R. Evid. 403.117
The Court finds that STI has failed to show that the probative value of this evidence
is substantially outweighed by the risk of unfair prejudice, jury confusion, misleading
the jury, or delay. The Court, exercising its “substantial discretion in determining
114 R. Doc. 139-9.
115 R. Doc. 156 at p. 4 (quoting United States v. Crinel, Crim. A. No. 15-61, 2017 WL 490635 (E.D. La.
Feb. 7, 2017).
116 United States v. Wen Chyu Liu, Crim. A. No. 05-85-C, 2011 WL 62542, at *2 (M.D. La. Jan. 7, 2011)
(Tyson, C.J.) (quoting Skelton, 514 F.3d at 443-44) (internal quotation marks omitted); King v.
University Healthcare System, L.C., Civ. A. No. 08-1060, 2009 WL 2222700, at *1 (E.D. La. July 24,
2009) (Wilkinson, M.J.) (quoting Skelton, 514 F.3d at 443-44) (internal quotation marks omitted). The
Court notes that while both Wen Chyu Liu and King quote Skelton for this assertion, that language is
not contained anywhere in the Skelton opinion. See, Skelton, 514 F.3d 433.
117 Sanchez v. Davis, 888 F.3d 746, 750 & n.1 (5th Cir. 2018).
the admissibility of impeachment evidence under Rule 608(b),”118 finds that the
evidence is relevant and admissible under Rule 608(b). As such, STI’s Motion is
denied to the extent that STI seeks to exclude evidence and testimony regarding
allegations that any STI official, particularly its CEO, had security clearance
issues.119
E. Evidence and Testimony Regarding Allegations that Loading
Software Developed in a Foreign Country, Such as India, Onto a
Military Computer Is Illegal.
Finally, STI seeks to exclude from trial any evidence or testimony regarding
MGMTL’s allegations that loading software developed in a foreign country,
specifically India, onto a military computer is illegal and implying that STI’s
demonstration of PASS for the Marine Forces Reserve was, therefore, illegal.120 STI
claims that such evidence is irrelevant, unduly prejudicial and will confuse the issues.
STI argues the legality of using a developer in India to develop software is irrelevant
to whether the software was copied or violates MGMTL’s other contractual rights.121
STI asserts that it is also undisputed that PASS was never loaded onto any
government computer and that the STI computer on which STI demonstrated PASS
for the Marine Forces Reserve was never connected to the government’s network.122
STI further claims that MGMTL’s theory of illegality is incorrect, relying upon
testimony from a former STI employee regarding the approval process for using
118 EEOC v. Bobrich Enterprises, No. 08-10162, 2009 WL 577738, at *4 (5th Cir. Mar. 6, 2009) (quoting
Skelton, 514 F.3d at 443-44) (internal quote and quotation marks omitted).
119 R. Doc. 128 at p. 1.
120 Id.; R. Doc. 128-1 at p. 10 (citing R. Doc. 128-2 at pp. 19-20; R. Doc. 128-6 at pp. 3-5 & 6; R. Doc.
128-4 at p. 3; R. Doc. 128-5 at pp. 3-7).
121 R. Doc. 128-1 at p. 10.
122 Id. (citing R. Doc. 128-9 at pp. 3 & 4-5; R. Doc. 128-7 at p. 73).
software developed abroad on military computers.123 Finally, STI asserts that the
evidence should be excluded because its probative value is substantially outweighed
by the risk of prejudice “because MGMTL would confuse the jury with a side issue
and make it more likely that the jury would find against STI in this case.”124
MGMTL asserts that STI’s argument is partially moot because it will not elicit
testimony or suggest, generally, that it is illegal to develop software in a foreign
country. 125 MGMTL further claims, however, that evidence regarding STI’s
development of PASS in India is relevant to its breach of contract claim because the
software evaluation agreement entered into by MGMTL and STI specifically
prohibited STI from disclosing the SMART software to any persons outside of STI.126
MGMTL points out that the STI executive who signed the agreement, Barry Levin,
testified that nothing in the agreement allowed STI to share the SMART software
with a non-employee like the Indian software developer, Gokul Palani.127 Thus,
MGMTL argues STI’s provision of its SMART software to an Indian software
developer is relevant to its breach of contract claim.128 MGMTL then seeks to clarify
that it does not view STI’s Motion as seeking to broadly exclude all evidence or
testimony related to STI’s use of the Indian software developer, and seeks only to
exclude testimony suggesting that it is unlawful to develop or present software
developed in a foreign country.129 In a footnote, MGMTL claims that evidence and
123 R. Doc. 128-1 at p. 11 (citing R. Doc. 128-5 at pp. 3-4).
124 R. Doc. 128-1 at p. 11.
125 R. Doc. 139-16 at p. 23.
126 Id. (citing R. Doc. 139-1 at ¶ 2).
127 R. Doc. 139-16 at p. 23 (citing R. Doc. 139-26 at pp. 2, 3-4 & 5).
128 R. Doc. 139-16 at pp. 23-24.
129 Id. at p. 24.
testimony regarding STI’s use of an Indian software developer is clearly relevant to
its claims for breach of contract and copyright infringement because they “go to the
core tenants of proving MGMTL’s case” and STI’s efforts to copy, repackage, and
rename the SMART software.130
As an initial matter, the Court notes that MGMTL does not contest STI’s
request to exclude evidence or testimony regarding allegations that it was unlawful
for STI to load software developed in India onto a military computer.131 The Court
therefore concludes that such evidence and testimony will be excluded at trial. The
Court further finds, however, that evidence and testimony regarding STI providing
an Indian software developer with MGMTL’s SMART software is directly relevant to
MGMTL’s breach of contract claims, for the reasons asserted by MGMTL in the
Opposition brief. The Court is not persuaded by STI’s conclusory statement that the
probative value of this evidence is substantially outweighed by any risk of prejudice
or jury confusion, or that such confusion could not be cured with a limiting jury
instruction, if necessary. Accordingly, the Court finds that evidence and testimony
regarding whether STI provided the SMART software to an Indian software
developer is relevant and admissible at trial.
IV. CONCLUSION
For the foregoing reasons, IT IS HEREBY ORDERED that Defendant’s
Motion in Limine to Preclude Evidence, Testimony, or References Related to Other
130 Id. at n. 83.
131 See, generally, R. Doc. 139-16 at pp. 23-24.
Alleged Wrongdoing!*2 is GRANTED in part and DENIED in part. The Motion is
GRANTED to the extent that STI seeks to exclude evidence and testimony
regarding: (1) the ongoing NCIS criminal investigation except in the limited
circumstances as described herein; (2) allegations that STI has improperly employed
family members of Marine Forces Reserve officials; and (3) allegations that loading
software developed in a foreign country onto a military computer is illegal, and
MGMTL is precluded from introducing such evidence or testimony at trial. The
Motion is otherwise DENIED.
New Orleans, Louisiana, February 28, 2022.
WENDY B. is
United States District Judge
182 R, Doc. 128.
28