United States District Court, W.D. Wisconsin
U.S. WATER SERVICES, INC. and ROY JOHNSON, Plaintiffs,
NOVOZYMES A/S and NOVOZYMES NORTH AMERICA, INC., Defendants.
FINAL PRETRIAL CONFERENCE ORDER
D. PETERSON District Judge
court has reviewed the parties' submissions concerning
outstanding disputes that require resolution before trial,
particularly their objections to exhibits proposed to be used
in opening statements. Dkt. 737, Dkt. 740, Dkt. 741. To get
the parties a prompt response, I provide the court's
rulings with only a succinct explanation.
Novozymes's objections to U.S. Water's opening
sustain Novozymes's objection relating to Novozymes's
unsuccessful attempts to get samples of pHytOUT. Novozymes
did not actually get samples (until after this litigation
started), so the attempt to get samples is not evidence of
copying. Accordingly, U.S. Water may not use PTX 476 in
opening. PTX 86 will have to be redacted to remove the
reference on the first page to the request for a phytase
sample. PTX 86 is otherwise admissible.
sustain Novozymes's objection to exclude PTX 208, which
concerns a request for indemnification from Novozymes. U.S.
Water contended that Novozymes's indemnification of its
customers shows a potential for bias on the part of Novozymes
customers as witnesses. But a mere request for
indemnification, if the request is not fulfilled, does not
show any potential bias. Accordingly, U.S. Water may not use
PTX 208 in opening.
objections are otherwise overruled. I am persuaded that
Novozymes's internal communications, and the documents
attached or referred to in them, are likely admissible as
admissions of a party opponent, business records, or for
non-hearsay purposes. Thus, U.S. Water may use these
documents in opening. I will allow PTX 730 in opening as an
illustration of what fouling looks like; I will admit it as
evidence if an appropriate foundation is laid during trial.
Evidence of plant operations and Novozymes's conduct
before the issuance of the patents-in-suit is allowed.
Novozymes does not contend that it changed its conduct in any
way after the issuance of the patents-in-suit, and thus
pre-issuance conduct is circumstantial evidence of
post-issuance conduct. Of course, the post-trial instructions
will make clear that the jury cannot find infringement on the
basis conduct that occurred only before the patents-in-suit
not persuaded that Novozymes faces any unfair prejudice from
the exclusion of its freedom to operate opinion, even though
U.S. Water will be allowed to introduce evidence that
Novozymes was aware of the patents-in-suit. Novozymes can try
to show that the patents-in-suit are actually invalid, as the
freedom to operate opinion suggests. And Novozymes will be
allowed to introduce the freedom to operate opinion in the
damages phase, if we get there.
U.S. Water's objections to Novozymes's opening
sustain U.S. Water's objection to DTX 2283, a letter from
Novozymes's counsel responding to U.S. Water, attempting
to explain that statements by Novozymes's employees were
not about the validity of the '244 patent, but about the
relationship between Novozymes's product and its earlier
patent filing. DTX 2283 is yet another manifestation of
Novozymes's freedom to operate opinion, which I have
already ruled is an opinion as to invalidity, and thus
inadmissible in this phase of the trial.
Water's objections are otherwise overruled. I am not
persuaded that Novozymes's Opening Demonstrative 9 is
argumentative. It lays out what Novozymes believes that
evidence will show. Nor is the court persuaded that the
demonstrative delves into an irrelevant subject. I understand
U.S. Water's argument that acid reduction is not a claim
element. But a pH level above 4.5 is, and the two concepts
are closely related. I will allow Novozymes to present its
case that U.S. Water's maintaining acid reduction as
trade secret is relevant to the written description of the pH
Designations of the deposition of Paul Young
asks the court to bar U.S. Water from making any objections
or counter-designations to Novozymes's designations of
Paul Young's deposition. That request is denied. The
court will not penalize U.S. Water for streamlining the trial
by eliminating a witness. If Novozymes thinks that Young
nevertheless has admissible evidence, the court will allow
U.S. Water to lodge objections and make counter-designations.
Revision to the introductory instructions
light of the court's ruling that Dr. Kohl's opinions
about enablement are too conclusory to be admitted, the court
will eliminate the enablement-related language (“or how
someone could perform the ...