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United States District Court for the District of Delaware
August 4, 2021, Decided; August 4, 2021, Filed
C.A. No. 16-706-LPS (Consolidated)
Having reviewed the proposed pretrial order ("PTO") filed by Plaintiffs SZ DJI Technology Co., Ltd. and DJI Europe B.V. (together, "DJI" or "Plaintiffs") and Defendants Autel Robotics [*6] USA LLC and Autel Aerial Technology Co., Ltd. (together, "Autel" or "Defendants") (D.I. 590),
IT IS HEREBY ORDERED that:
1. DJI's motion in limine ("MIL") No. 1, to preclude trial testimony from Randall Warnas and Joseph O'Hearn, is GRANTED. Exclusion is appropriate because these witnesses were not timely disclosed, and Autel's delay is neither substantially justified nor harmless. See Fed. R. Civ. P. 37(c)(1). That Autel refuses to disclose the substance of the anticipated testimony from Mr. Warnas, its current CEO and a former employee of DJI, raises substantial concern that DJI would be surprised and unfairly prejudiced by hearing his testimony for the first time at trial. The Pennypack factors1 fully support the Court's conclusion: (i) the evidence that Autel evidently seeks to present cannot be that important, given how long it took Autel to disclose these witnesses, and there is no indication that other timely-disclosed witnesses could not provide the same evidence; (ii) DJI will be surprised and prejudiced at trial by the testimony, as it has not had an opportunity to depose the new witnesses, which will be disruptive to trial, for reasons including that "DJI will be forced to spend its valuable trial [*7] time asking the very questions it would have (and could have) asked in a deposition had these individuals been timely disclosed" (D.I. 590-3 at p. 33 of 136); (iii) there is not sufficient time in the 12 remaining days before trial to cure this prejudice; and (iv) while the Court does not find bad faith, Autel's violation of the Court's deadlines appears to have been willful, and the explanations given are unpersuasive.2
2. DJI's MIL No. 2, to preclude reference to other legal proceedings in the United States, Germany, and China in Phase 1 and to limit those references in Phase 2, is GRANTED IN PART and DENIED IN PART. With respect to Phase 1, the motion is not contested, so both sides will be precluded in Phase 1 from making any reference to the other legal proceedings.3 In Phase 2, however, evidence of these other proceedings is relevant to Autel's state of mind and alleged subjective willfulness. See generally BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1223 (Fed. Cir. 1993) ("[A]lthough it had no bearing on validity proceedings in this country, the invalidation of [the defendant's] British patent served to strengthen further [the plaintiff's] belief that the claimed invention was obvious in light of prior art."). In Phase 2, [*8] the Court will not limit the parties' ability to reference and rely on such evidence, although the jury will be properly instructed that different laws apply in other countries and that jurors are not to defer to any other determination in any other proceeding. As the Court previously held, "[D]efendants understandably want to present their evidence that they could not have intended in bad faith to infringe DJI's U.S. patents given, among other things, the results of the litigation . . . against plaintiffs in China. So it seems almost certain that all of this evidence is going to have to come in at trial . . . ." (D.I. 590-3 at p. 52 of 136)
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2021 U.S. Dist. LEXIS 145721 *; 2021 WL 3403930
SZ DJI TECHNOLOGY CO., LTD. and DJI EUROPE B.V., Plaintiffs, v. AUTEL ROBOTICS USA LLC and AUTEL AERIAL TECHNOLOGY CO., LTD., Defendants.AUTEL ROBOTICS USA LLC and AUTEL AERIAL TECHNOLOGY CO., LTD., Counterclaim Plaintiffs, v. SZ DJI TECHNOLOGY CO., LTD. and DJI EUROPE B.V., and DJI TECHNOLOGY, INC., Counterclaim Defendants.
Prior History: SZ DJI Tech. Co. v. Autel Robotics USA LLC, 2021 U.S. Dist. LEXIS 144796 (D. Del., Aug. 3, 2021)
infringement, witnesses, patent, invalidity, parties, willful, prior art, products, damages