Unreported / Non-Citable
Background
SlumberPod and Keezio Group approached trial in a patent dispute involving competing products. Their motions in limine—requests for advance evidentiary rulings—targeted noninfringing alternatives, SlumberPod’s damages expert, royalty database documents, and a Shark Tank video. Keezio argued in part that SlumberPod had not adequately disclosed reasonable-royalty, price-erosion, and advertising-cost theories in its patent damages contentions.
The record showed, however, that SlumberPod requested a reasonable royalty in its counterclaims and interrogatory answers, its expert disclosed the analysis, Keezio’s expert rebutted it, and Keezio deposed the expert about it. Lost profits had also been disclosed, and Federal Circuit law treats price erosion and increased expenditures as forms of lost-profit damage. Earlier summary-judgment and expert rulings had rejected some of Keezio’s methodological attacks.
The Court’s Holding
Magistrate Judge Peter Kang declined categorical exclusions. Rule 37(c)(1) does not automatically bar evidence for every disclosure deficiency when the omission was substantially justified or harmless. Although SlumberPod’s formal damages contentions were not best practice, the broader discovery record gave Keezio notice and a full chance to respond. Challenges to the expert’s assumptions and credibility belonged in cross-examination rather than a renewed pretrial attempt to relitigate prior rulings.
The court likewise refused to preadmit or categorically exclude the royalty-source documents and Shark Tank video. Authentication, foundation, hearsay purpose, and Rule 403 prejudice depended on how the evidence would be offered at trial. The video’s absence from a Bates-numbered production did not itself cause surprise because both sides knew of it and it had surfaced in discovery. SlumberPod’s own broad request concerning acceptable noninfringing alternatives was also denied without prejudice as insufficiently specific.
Key Takeaways
- Patent damages contentions should separately identify reasonable royalty and each material lost-profit component, even when later discovery may cure an omission.
- Harmlessness under Rule 37 turns on practical notice and opportunity to respond, including pleadings, interrogatories, expert reports, rebuttal work, and depositions.
- A motion in limine should target concrete evidence or argument; courts disfavor broad requests untethered to a specific trial use.
- Expert reliance and substantive admissibility are different questions. Materials considered under Rule 703 may still need foundation and a nonhearsay route before reaching the jury.
Why It Matters
Northern District patent practitioners should treat local damages contentions as an early roadmap, not a placeholder. This ruling allowed the theories, but expressly criticized the disclosure approach. A cleaner contention can avoid expensive motion practice and reduce the risk that a different record or judge will find prejudice.
The order also favors context-sensitive trial objections. Lawyers should prepare witnesses who can authenticate database material and media, identify the purpose for which each item is offered, and propose limiting instructions where necessary. Prior awareness may defeat surprise, but it does not automatically establish authenticity, overcome hearsay, or satisfy Rule 403.
The reasonable-royalty ruling turned on the accumulated record, not a conclusion that formal contentions never matter. SlumberPod had mentioned royalties in pleadings and interrogatories; its expert gave a developed opinion; the rebuttal expert answered it; and deposition questioning tested it. Price erosion and increased advertising expenditure were similarly tied to disclosed lost profits. A party seeking exclusion should show a concrete lost opportunity—such as unavailable discovery, an expert unable to respond, or a changed trial strategy—rather than point only to an imperfect label in one disclosure document.