BillFloat Inc. v. Collins Cash Inc.

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 BILLFLOAT INC., Case No. 20-cv-09325-EMC

8 Plaintiff, FINAL PRETRIAL CONFERENCE 9 v. ORDER

10 COLLINS CASH INC., et al., 11 Defendants.

12 13 14 I. TRIAL DATE & LENGTH OF TRIAL 15 The Court will hold a hearing at 1:00 p.m. on Wednesday, November 9, 2022, to discuss 16 the completed jury questionnaires. At that hearing, the Court will discuss whether any potential 17 jurors should be excused in advance of live voir dire on November 14, 2022. The Court intends to 18 impose a vaccination requirement on jurors. The jurors will be socially distanced. All trial 19 participants, including jurors and counsel, will be required to wear masks except for the testifying 20 witness and questioner. The parties and their counsel shall certify they and their witnesses are 21 either fully vaccinated or have tested negative on a rapid COVID test immediately before entering 22 the courtroom. The hearing on November 9, 2022 shall be conducted via Zoom. 23 Jury selection is set for 8:30 a.m. on November 14, 2022. Counsel shall be present in the 24 Courtroom at 8:00 a.m. to discuss any anticipated disputes. The Court strongly discourages side 25 bars. The Court intends to seat eight jurors. 26 The jury trial is set for November 14, 15, 16, 18, and possibly 21. Trial shall last from 27 8:30 a.m. to 2:00 p.m. on each day. On all trial days, counsel shall be present in the Courtroom at 1 Each session will last 90 minutes. Breaks will be 15-20 minutes. The plaintiff (“Plaintiff”) shall 2 have nine hours and the defendants (“Defendants”) shall have seven hours to present their cases, 3 respectively. This includes opening statements, time on direct and cross-examination, and closing 4 arguments, but does not include jury voir dire. 5 II. ADVANCED NOTICE OF WITNESSES AND EXHIBITS 6 Each party shall provide two court days (48 hours) in advance for notice of witnesses and 7 exhibits to be called each trial day. The Court reserves the authority to exclude witness for non- 8 compliance. 9 All objections to witnesses and exhibits must be filed with the Court at least one court day 10 (24 hours) before the witness is scheduled to testify. The Court will address objections at 8:00 11 a.m. on the following day. All objections should be provided in writing and filed with the Court, 12 and a courtesy copy should be given to chambers immediately. 13 Should a party fail to have enough witnesses to complete the trial day, the Court shall 14 charge the surplus time remaining on that day against the party’s total allotted time. For instance, 15 if a party concludes a witness’s examination with an hour remaining in the day and is not prepared 16 to call another witness, then the Court will subtract that hour from the party’s allotted hours. 17 III. WITNESSES 18 A. Plaintiff 19 Plaintiff has identified the following individuals as witnesses it may call: 20 (1) Evan Singer 21 (2) Abraham Cohen 22 (3) Stan Smith 23 (4) Melissa Pittaoulis 24 (5) Brian Greiner 25 B. Defendants 26 Defendants have identified the following individuals as witnesses they may call: 27 (1) Evan Singer 1 (3) Mark Keegan 2 (4) Murray Steinman 3 IV. MOTIONS IN LIMINE 4 A. Plaintiff 5 1. Motion in Limine No. 1 (Docket No. 86) 6 Plaintiff seeks to preclude all testimony and attorney argument that (1) Plaintiff could 7 have, but did not, conduct its own market survey, and that (2) the jury should draw an adverse 8 inference from the absence of such survey. (Docket No. 86 at 6.1) It argues that a consumer 9 survey is not required to show likelihood of confusion between marks, particularly when it plans 10 to offer evidence of actual confusion. (Id. at 4–5.) Courts have generally declined to draw 11 adverse inference from the lack of survey evidence. (Id. at 5.) 12 Although the absence of a survey does not create a negative inference per se, Defendants 13 argue that “the contrast of one party producing a survey and the other failing to do so” is not 14 improper. (Docket No. 86 at 8 (emphasis in original).) Further, the exclusion of attorney 15 argument—which is not “evidence” subject to Rule 403—would be overbroad. (Id. at 10.) It is 16 not uncommon for an attorney to point out holes and omissions in the evidence put on by the 17 opponent. 18 Thus, as explained at the hearing, the Court will allow attorney arguments as to absence of 19 survey conducted by Plaintiff. The Court, however, will not allow evidence on that topic 20 particularly where the intended cross of Plaintiff’s rebuttal expert would exceed the proper scope 21 of direct. 22 2. Motion in Limine No. 2 (Docket No. 87) 23 Plaintiff moves to preclude Defendants from introducing any testimony or attorney 24 argument that the U.S. Patent and Trademark Office’s (“PTO”) publication of Defendants’ mark 25 after receiving Plaintiff’s letter of protest suggests no likelihood of confusion between the parties’ 26 marks. Defendants argue that the evidence is relevant to willfulness, especially given Plaintiff’s 27 1 assertion of willful infringement even after Defendants received the PTO’s notice of publication. 2 As noted at the hearing, the Court will not permit evidence of the PTO’s administrative 3 action to prove the merits of Defendants’ position on the likelihood of confusion. The PTO’s 4 action was not final, was predicated on a different standard (du Pont versus Sleekcraft factors), 5 and involved evidence different from that which will be presented to the jury at trial. The risk of 6 the jury placing undue weight on the PTO’s action substantially outweighs the probative value of 7 this evidence. However, Defendants are correct that the 2020 PTO publication decision is relevant 8 to their state of mind on the issue of willfulness. 9 The risk, of the jury placing undue weight on the PTO action may be addressed by the two 10 options the Court suggested at the hearing. First, the Court can admit the evidence but give a 11 limiting jury instruction that the jury shall only consider the evidence for the purpose of evaluating 12 willfulness and not for the purpose of determine the risk of confusion. Second, the parties can 13 stipulate to no willful infringement after Defendants received the PTO’s notice of publication. 14 This would moot the relevance of the 2020 action. The parties shall meet and confer and report 15 back to the Court regarding their decision by October 26, 2022. 16 3. Motion in Limine No. 3 (Docket No. 88) 17 Plaintiff seeks to preclude evidence and arguments to the jury relating to Defendants’ 18 laches defense because it is an equitable affirmative defense irrelevant to any issue that the jury 19 will need to consider. (Docket No. 88 at 1–2.) Other affirmative defenses that may overlap with 20 laches, such as estoppel, waiver, and acquiescence, are all equitable in nature. 21 As stated at the hearing, the Court has decided to permit the jury to render an advisory 22 opinion on Defendants’ laches defense because of overlapping issues with other claims and 23 defenses and overlapping testimony from witnesses. See Fed. R. Civ. P. 39(c) (“In an action not 24 triable of right by a jury, the court, on motion or on its own . . . may try any issue with an advisory 25 jury.”); Ormco Corp. v. Align Tech., 2009 U.S. Dist. LEXIS 140363, at *44 (C.D. Cal. May 12, 26 2009) (seeking advisory opinion from jury on equitable issues for which evidence may overlap 27 with legal claims). The Court thus denies this motion. 1 B. Defendants 2 1. Motion in Limine No. 1 (Docket No. 80) 3 At the hearing, the parties agreed that this motion is moot. 4 2. Motion in Limine No. 2 (Docket No. 81) 5 Defendants “seek to exclude any and all evidence or testimony at trial from plaintiff 6 contradicting the testimony provided in the 30(b)(6) deposition of Plaintiff.” (Docket No. 81 at 3 7 (“Evidence to Be Excluded”).) The Court denies this motion. To the extent that any evidence is 8 contrary to Plaintiff’s witness’s deposition testimony, Defendants may cross-examine and seek to 9 impeach that witness on it. Inconsistency, however, is not a basis for total exclusion. 10 3. Motion in Limine No. 3 (Docket No. 82) 11 Under Federal Rule of Evidence 403, “Defendants seek to exclude any evidence or 12 testimony regarding prior surveys or testimony by Defendants’ designated expert Mark Keegan 13 that was excluded.” (Docket No. 82 at 3.) Defendants’ expert, Mr. Keegan, conducted a survey to 14 show that consumers are not likely to confuse the parties’ subject trademarks. (Id.) Mr. Keegan 15 has designed and executed over 1,000 consumer research studies over his two-decade long career. 16 (Docket No. 82 at 4.) Among those studies, defendants anticipate Plaintiff to introduce “a self- 17 serving sample of Mr. Keegan’s prior unrelated surveys that were excluded to confuse and mislead 18 the jury as to the one and only survey conducted in this case.” (Id. at 3.) In particular, Plaintiff 19 seeks to elicit testimony from Mr. Keegan and possibly documentary evidence of cases where 20 judges have found his survey unreliable and subject to exclusion. 21 Plaintiff argues that “evidence of Mr. Keegan’s import of the same errors in his present 22 market survey after multiple courts had admonished Mr. Keegan for applying the same errors in 23 surveys he conducted for other cases should be admissible because it: (1) is highly relevant to Mr. 24 Keegan’s credibility; (2) is not unfairly prejudicial; and (3) is highly probative of the flaws with 25 Mark Keegan’s survey methodology.” (Docket No. 82 at 8.) In its Daubert motion, Plaintiff 26 argued that Mr. Keegan’s survey was unreliable in part because his similar surveys were very 27 recently excluded in other cases. (Id. at 7 (citing Kudos Inc. v. Kudoboard LLC, No. 20-cv-01876- 1 3d 437, 454–55 (D.S.C. 2019)).) Although the Court found “substantial bases for challenging the 2 merits of Mr. Keegan’s methodology,” it ultimately denied the Daubert motion and held that 3 Plaintiff’s arguments “go to the weight of the evidence.” (Docket No. 65 at 12.) 4 Plaintiff may vigorously cross-examine (and elicit rebuttal testimony against) Mr. Keegan 5 on the merits of his survey, including on the kinds of bases other courts have considered. But 6 eliciting evidence of how other judges in other cases have ruled raises grave FRE 403 concerns. 7 No doubt, Mr. Keegan will attempt to distinguish those other cases; Plaintiffs will then try to 8 demonstrate those decisions are not distinguishable. This will inevitably entail a deep dive into 9 the weeds of each case, invoking the proverbial trail within a trial on a collateral point FRE 403 is 10 designed to prevent. It also risks allowing the jury to place undue weight on ruling by another 11 judge in another case, particularly inappropriate where, as here, this Court has already rejected a 12 Daubert challenge. The motion to exclude is thus granted. 13 C. Stipulated Motion in Limine (Docket No. 89) 14 The parties stipulate (1) that neither party (including counsel and witnesses) shall refer to 15 the Court’s summary judgment and Daubert order or its substance and, (2) that Defendants’ 16 expert, Mr. Keegan, shall not opine that there is no likelihood of confusion. The Court grants the 17 stipulation. 18 V. EXHIBITS 19 The parties each submitted a list of bellwether objections to up to fifteen proposed exhibits. 20 See Docket No. 100 (“Bellwether Objections”). The Court’s rulings on these bellwether 21 objections follow in the attached chart. 22 VI. USE OF DISCOVERY RESPONSES 23 The parties have stated that they do not contemplate presenting discovery responses or 24 deposition testimony to the jury. (Jt. PTC St. at 10.) 25 VII. PRELIMINARY STATEMENT TO THE JURY AND JURY INSTRUCTIONS 26 The parties submitted joint jury instructions. The Court, having considered the parties 27 comments, has made modifications. The parties shall meet and confer and attempt to resolve any 1 October 26, 2022. 2 VIII. JURY VERDICT FORM 3 The parties have submitted a joint jury verdict form. The Court tentatively approves the 4 verdict form with footnote 1 removed. 5 IX. VOIR DIRE AND QUESTIONNAIRE 6 In addition to the Court’s default voir dire questions, the parties submitted a joint list of 7 case-specific questions to be included in the Court’s electronic voir dire questionnaire. The Court 8 has added those questions. The completed questionnaires should be available before the hearing 9 on November 9, 2022. 10 X. OTHER MATTERS 11 As noted above, all lawyers, clients and client representatives, and witnesses must be fully 12 vaccinated and boosted or test negative before entering the courtroom. Additionally, anyone 13 present in the courtroom who is not speaking must wear a mask. 14 15 IT IS SO ORDERED. 16 17 Dated: October 19, 2022 18 19 ______________________________________ EDWARD M. CHEN 20 United States District Judge 21 22 23 24 25 26 27