Abbott Point of Care, Inc. v. Epocal, Inc.
2012 U.S. Dist. LEXIS 54434
N.D. Ala.2012Background
- Abbott Point of Care, Inc. (“Abbott”) filed eight motions in limine in a patent case against Epocal, Inc. regarding its EPOC system.
- The court discusses whether equitable defenses (unclean hands and equitable estoppel) should be allowed before a jury or reserved for a bench proceeding, given overlapping facts with willfulness and infringement claims.
- Abbott moved to preclude Epocal from presenting equitable defenses to the jury; Epocal sought to present them with a jury advisory verdict and a court decision on the merits.
- Abbott sought to bar evidence of Abbott’s alleged litigation misconduct as part of Epocal’s unclean-hands defense; the court analyzes Rule 11 and privilege concerns.
- Abbott sought to bar Epocal from appealing to the jury’s pecuniary interests, while Epocal argued for limited cost- and business-model context relevant to defenses and issues.
- The court also addresses Epocal’s ability to present evidence about corporate size/assets and Epocal’s patents, and whether Epocal’s two experts’ testimony is cumulative.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether equitable defenses should be heard by the jury | Abbott argues for non-jury handling to avoid prejudice and confusion. | Epocal contends that overlapping facts require a unified jury trial with advisory verdicts on defenses. | Denied; defenses may be heard with advisory jury and court will decide on equitable issues. |
| Whether Abbott’s alleged litigation misconduct evidence is admissible | Abbott argues Rule 11 precludes reliance on misconduct claims and privilege concerns apply. | Epocal contends misconduct evidence supports unclean hands and remains admissible with appropriate safeguards. | Denied to exclude evidence; evidence may be admitted with protective limits and context. |
| Whether Epocal may appeal to the jury’s pecuniary interests | Abbott argues such appeals are irrelevant and prejudicial. | Epocal seeks background on its business model and lower-cost product relevance, not mere costs. | Partially granted; direct appeals to pecuniary interest barred; cost-related evidence may be allowed if relevant to other issues with trial‑court safeguards. |
| Whether evidence on corporate size/assets is admissible | Abbott argues such evidence is irrelevant and prejudicial. | Epocal argues size/assets are background for unclean hands and estoppel defenses and related tort defenses. | Partially granted; allowed where relevant to defenses or other issues, with safeguards against improper bias. |
| Whether Epocal may introduce evidence of its patents | Abbott says Epocal’s patents are irrelevant to infringement and would mislead the jury. | Epocal contends patents may be probative for willfulness and defenses like estoppel/unclean hands. | Denied; Epocal may present patent evidence to support willfulness and defenses, with limiting instructions to avoid misdirection. |
Key Cases Cited
- Cabinet Vision v. Cabnetware, 129 F.3d 595 (Fed.Cir.1997) (when to try issues with jury or court; blends of interwoven issues)
- AC Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed.Cir.1992) (estoppel/unclean hands standards and discretion)
- King Instrument Corp. v. Otari Corp., 767 F.2d 853 (Fed.Cir.1985) (evidence of defendant’s patent may bear on willfulness)
- In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir.2007) (objective standard for willfulness; state of mind not required)
- Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery, 324 U.S. 806 (Supreme Court 1945) (equitable defenses and court’s discretion in allowing defenses)
- Bio-Technology General Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed.Cir.1996) (patent defenses and infringement context)
- Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (Supreme Court 1959) (separate trials and advisory verdicts considerations)
- Johnson v. United States, 780 F.2d 902 (11th Cir.1986) (differences in cumulative expert testimony considerations)
- Tran v. Toyota Motor Corp., No official reporter listed here (11th Cir. 2005) (cumulative expert testimony discretion and timing)