Most judges in the District of Delaware limit the parties to three motions in limine per side. Visiting judges sometimes permit more, but I get the sense that this limit is something native D. Del. judges generally don't want the parties to change when submitting a proposed scheduling order.
But I can't recall a patent case where the parties did not use all of their motions in limine, and want more (even if they didn't ask the Court). These evidentiary issues can just have a large effect on trial. Plus, with a mountain of work bearing down on you in the leadup to trial, it's great to think you might knock out some opposing trial themes, theories, or even some claims before the trial starts.
So it's not uncommon to see parties combine closely related issues into a single MIL, arguing (for example) that the testimony of witnesses A, B, and C should be excluded as lay opinion testimony, or that the Court should preclude reference to a prior case, an IPR, and all prior proceedings, all in one motion—and so on.
But what happens if you push it too far, and combine motions that shouldn't be combined? We got the answer this week, at least as far as Judge Williams: the Court will split up your motions by distinct issue, decide the first three issues, and deny the rest:
With respect to Natera's motion in limine number 1 . . . Natera requests that the Court preclude ArcherDX "from mentioning, introducing, or otherwise relying on Natera scientists' testimony to support Defendants' invalidity defenses under (1) 35 U.S.C. § 112, paragraph 2 for failure to claim what the applicants regarded as their invention and indefiniteness; and (2) 35 U.S.C. § 102(e) for improper inventorship." . . . Natera's motion in limine number 1 can be fairly characterized as two distinct in limine requests couched as one motion in limine. The Scheduling Order states that "[e]ach SIDE shall be limited to three (3) in limine requests, unless otherwise permitted by the Court." . . . Accordingly, the Court treats Natera's motion in limine number 1 as two separate in limine requests. Any motions in limine that exceeds the limits imposed in the Scheduling Order will be denied without prejudice.
That was for plaintiff's motions. The Court split plaintiff's first MIL into two, granted it in part as to the first issue, denied it as to the second, and granted plaintiff's third issue (their second MIL). As to plaintiff's third MIL, the Court denied it as exceeding the scheduling order's limit:
With respect to Natera's motion in limine number 3 . . . , Natera requests the Court preclude ArcherDX "from presenting to the jury any testimony, documents, or arguments concerning any alleged delay by Natera in filing and prosecuting the claims of the four of the five Patents-in-Suit . . . or any alleged impropriety by Natera in filing a patent application to encompass a competitor's products." . . . This motion in limine is effectively Natera's fourth in limine request. The Court DENIES WITHOUT PREJUDICE this motion in limine for exceeding the number of in limine requests permitted in the Scheduling Order.
The Court did hold that the issue is not waived entirely, and the plaintiff could still object at trial:
This Court's ruling does not preclude Natera from raising evidentiary objections related to the subject matter of this motion in limine during trial.
The Court gave the defendants the exact same treatment. He denied their first MIL, found that the second MIL included three issues, split it up, and addressed only the first two issues:
With respect to ArcherDX's motion in limine number 2 . . . ArcherDX requests the Court preclude (1) Dr. Quackenbush's testimony regarding primer melting temperatures; (2) Dr. Spellman's purportedly legal improper opinions regarding the meaning of "comprising" ; and (3) testimony regarding a reference incorporated by reference in U.S. Patent No. 10,597,708 ("the '708 patent"). Like Natera, see infra . . . ArcherDX attempts to circumvent the number of in limine requests permitted by the Court's Scheduling Order. . . . ArcherDX's motion in limine number 2 can be fairly characterized as three distinct motions in limine. Accordingly, the Court will only address the first two issues on the merits and deny without prejudice the third issue.
He went on to deny the third MIL on the same grounds.
On Sorting Things
Some thoughts, from looking at this order:
- Make sure not to combine unrelated MILs (obviously).
- Consider ranking my MILs to make sure that, if one gets split up, only the least important ones are passed over.
When making multiple motions in any context, it's not a bad idea to put some thought into the order of your motions. It's human nature to treat the first thing in a series as the most important, and sometimes it can feel a bit odd when a party brings five summary judgment motions, for example, and then gets up and spends 90% of its time arguing motion number 4.
In fact, the same considerations apply to claim terms for construction. Parties often brief the terms one way, then fight about which order they should be argued. It doesn't hurt to think ahead and rank or sort your terms in the order you'd like to argue them when filing your joint claim chart and claim construction briefing. Later on, when the parties have a dispute about the order of argument, the briefing order or the joint claim chart order can often become the default.
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