Unreported / Non-Citable
Background
SlumberPod, LLC sued Keezio Group for infringing SlumberPod’s patents covering a portable privacy/sleep pod, with Keezio countering that the patents were invalid and that its own accused “DayDreamer” product did not infringe. As the case neared a jury trial before Magistrate Judge Peter H. Kang in the Northern District of California, the parties filed a Joint Notice of Outstanding Objections identifying dozens of trial exhibits each side wanted to use but the other side opposed.
The exhibits spanned eleven categories: undisclosed prior-art references, evidence about competing (non-infringing) products relevant to damages, materials pulled from expert reports, damages contentions filed under the Patent Local Rules, evidence of Keezio’s knowledge and alleged copying, pleadings and the court’s claim-construction order, royalty and licensing data, product photos and videos (including a Shark Tank clip), expert CVs and reports, a news article touted as industry praise, and a corporate-assignment document establishing SlumberPod’s ownership of the patents. The court resolved each category exhibit-by-exhibit at the final pretrial conference and in this written order.
The Court’s Holding
The most generalizable ruling involves prior art Keezio never disclosed in its Patent Local Rule invalidity contentions: a patent and three annotated tent photographs. Keezio argued these materials were admissible anyway because they merely explained the “scope, content, and breadth” of the prior art rather than being offered to prove invalidity. Judge Kang rejected that framing, holding that using undisclosed references to inform an obviousness analysis is itself an invalidity use, and that courts have repeatedly refused to let parties evade Patent Local Rule disclosure deadlines by rebranding omitted prior art as mere “background” or “context.” Citing Life Technologies Corp. v. Biosearch Technologies and Volterra Semiconductor Corp. v. Primarion, the court held the undisclosed references were excluded outright, and separately noted Keezio had not shown it satisfied 35 U.S.C. § 282(c)’s independent requirement to disclose state-of-the-art references by a statutory deadline.
On several other recurring evidentiary issues, the court applied settled but frequently litigated rules. Full written expert reports (and expert-drafted charts lifted wholesale from those reports) are inadmissible hearsay even when portions of the same report will be covered by the expert’s live testimony; citing Hunt v. City of Portland, the court held no hearsay exception rescues an entire report, though specific exhibits or data can still be used as trial demonstratives or as a Rule 1006 summary. The court also repeatedly held that exhibits bundling unrelated documents, photographs, or screenshots into one combined exhibit number create a Rule 403 risk of jury confusion and ordered the offering parties to disaggregate them into individually numbered exhibits before trial, with short deadlines for renewed objections.
On narrower points, the court allowed e-mails authored by a party’s own counsel to come in as opposing-party statements under Federal Rule of Evidence 801(d)(2), permitted the moving party’s pleadings and a prior patent not asserted in the case to remain provisionally excluded or deferred pending trial foundation, and excluded photographs that had argumentative captions or annotations added by counsel or an expert, holding that such additions are not themselves evidence under Rule 401.
Key Takeaways
- A party cannot escape Patent Local Rule invalidity-contention disclosure deadlines by recharacterizing an undisclosed prior-art reference as mere “background” or “context” if it will actually be used in an obviousness argument — courts treat that as the invalidity use the local rules require to be disclosed.
- 35 U.S.C. § 282(c) imposes its own independent statutory deadline for disclosing prior art offered to show the state of the art, separate from the Patent Local Rules’ invalidity-contention deadlines.
- Full expert reports are inadmissible hearsay at trial regardless of the expert’s live testimony; only specific facts, opinions actually elicited live, or properly authenticated Rule 1006 summaries can be offered as exhibits.
- Exhibits that aggregate unrelated documents, photos, or screenshots under one exhibit number risk exclusion under Rule 403 for jury confusion; parties should disaggregate composite exhibits into individually numbered documents well before trial.
- Photographs altered with attorney- or expert-added captions or annotations are not admissible in that annotated form — the annotations are argument, not evidence.
Why It Matters
This order is a practical primer on the kinds of pretrial exhibit fights that recur in nearly every patent case headed to trial, and its clearest holding — that a party cannot launder undisclosed prior art into evidence by calling it “background” — gives litigators citable authority (via Life Technologies and Volterra Semiconductor) for enforcing Patent Local Rule and Section 282(c) disclosure deadlines against a common workaround argument. The order’s treatment of expert-report hearsay and composite-exhibit aggregation is also broadly useful: it is a reminder that trial exhibits must be built around testimony and individually admissible documents, not wholesale report dumps or combined packets, and that courts will order exhibits reworked rather than simply excluded when the underlying material might otherwise be admissible in proper form.