Dethmers Mfg. Co. v. Automatic Equipment Mfg.
| Decision Date | 13 October 1999 |
| Docket Number | No. C 96-4061-MWB.,C 96-4061-MWB. |
| Citation | 73 F.Supp.2d 997 |
| Parties | DETHMERS MANUFACTURING COMPANY, INC., Plaintiff, v. AUTOMATIC EQUIPMENT MFG. CO., Defendant. |
| Court | U.S. District Court — Northern District of Iowa |
David Tank of Davis, Brown, Koehn, Shors & Roberts, P.C., Des Moines, Iowa, Brian J. Laurenzo of Dorsey & Whitney, LLP, Des Moines, Iowa, for plaintiff.
Tim Engler of Harding, Shultz & Downs, Lincoln, Nebraska, for defendant.
TABLE OF CONTENTS
I. INTRODUCTION AND BACKGROUND .................................................999
II. LEGAL ANALYSIS .............................................................1000
A. Relevancy And Prejudice .................................................1000
B. Dethmers's Motions In Limine ............................................1001
1. Evidence about the Johnson reissue patent ............................1001
2. Evidence of the Parent '851 patent ...................................1002
3. Name change evidence .................................................1003
4. Evidence of dismissed counterclaims ..................................1004
5. Evidence of the value of the original Johnson patent .................1005
6. Evidence of the October 4, 1994, letter ..............................1006
C. Evidence Of The Measure Of Damages ...................................1006
1. Damages available on the claims asserted .............................1007
a. Breach of contract ................................................1008
b. Promissory estoppel ...............................................1009
c. Unjust enrichment .................................................1010
2. The admissibility of evidence of Automatic's profits .................1011
3. On what items is evidence of damages calculations admissible? ........1013
4. Summary ..............................................................1013
III. CONCLUSION ................................................................1013
Trial is set to begin in this matter on October 18, 1999, and the case is now before the court pursuant to plaintiff Dethmers Manufacturing Company's September 27, 1999, and October 12, 1999, motions in limine, and pursuant to defendant Automatic Equipment Manufacturing Company's October 12, 1999, motion in limine. Courtesy copies of the latter two motions were sent to the court by facsimile transmission on October 8, 1999. At the court's request, the court also received supplemental letter briefs by facsimile on October 12, 1999. The court heard oral arguments on the motions in limine on October 13, 1999, and finds that the motions are now fully submitted.
At the oral arguments, plaintiff Dethmers Manufacturing Company, Inc., was represented by David Tank of Davis, Brown, Koehn, Shors & Roberts, P.C., in Des Moines, Iowa, and Brian J. Laurenzo of Dorsey & Whitney, LLP, also in Des Moines, Iowa. Defendant Automatic Equipment Manufacturing Company was represented at the oral arguments by Tim Engler of Harding, Shultz & Downs in Lincoln, Nebraska. The court was impressed not only with the cogency of counsels' oral arguments, but with the expeditiousness and coherence with which counsel for both parties marshaled authority and facts to address the various issues that arose quite suddenly in the course of final trial preparations. This case has been very contentious, but counsel have been models of civility and professionalism in their presentations to the court. The court has little doubt that this high level of professionalism will continue through trial of this matter.
The parties to this lawsuit are both makers of tow bars used to tow an automobile behind a recreational vehicle (R.V.). The principal claims and counterclaims in this lawsuit originally concerned infringement, validity, and enforceability of the parties' patents for such tow bars.1 However, as a result of this court's rulings on summary judgment motions, see Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co., 23 F.Supp.2d 974 (N.D.Iowa 1998) (Dethmers I); Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co., 70 F.Supp.2d 944 (N.D.Iowa 1999) (Dethmers II) (publication pending), no patent claims, and none of Automatic's counterclaims, remain at issue here. Furthermore, Dethmers notified the court that it was dismissing five of its remaining state-law claims. Thus, the present action is proceeding to trial only on Dethmers's claims of breach of contract, unjust enrichment, and promissory estoppel.
All of these remaining claims involve the so-called "Parent Invention." The "Parent Invention" was an idea developed by Richard A. Parent for a new type of tow bar that involved a swivel or universal joint and folding tow bar arms. The tow bar could also be folded up on the back of an R.V. for storage when not in use. All of the remaining claims involve the assertion that Automatic has wrongfully used the "Parent Invention" in the design and manufacture of its tow bars without properly compensating Parent. Dethmers asserts these claims as Parent's assignee. The court determined in its ruling on the first round of summary judgment motions that, in this diversity action, these claims are governed by Nebraska law. See Dethmers I, 23 F.Supp.2d at 1002-05.
In the first of its motions in limine, Dethmers seeks to exclude six categories of evidence on relevancy and potential prejudice grounds pursuant to Federal Rules of Evidence 401, 402, and 403. In its second motion in limine, Dethmers formalized objections first raised in preparation of the final pretrial order to the admissibility of an October 4, 1994, letter from attorney Brian Laurenzo for Dethmers to Jay Hesse, Automatic's President. Dethmers's objections to this evidence are also on the grounds of relevancy and potential prejudice. Automatic's motion in limine seeks to exclude evidence from Dethmers's expert on the measure and calculation of Dethmers's damages, on the ground that those calculations are incorrect under applicable law, and therefore irrelevant.
As noted just above, the parties principally challenge the admissibility of evidence on the grounds of relevancy and potential for prejudice. Rule 402 of the Federal Rules of Evidence provides generally that "[a]ll relevant evidence is admissible," while "[e]vidence which is not relevant is not admissible." FED. R. EVID. 402. Rule 403, however, provides that even some relevant evidence may be excluded:
Although relevant, evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue delay, waste of time, or needless presentation of cumulative evidence.
FED. R. EVID 403. As the Eighth Circuit Court of Appeals recently explained,
Relevant testimony is assumed admissible, Fed.R.Evid. 402, unless its probative value is "substantially outweighed" by the possibility of unfair prejudice. Fed.R.Evid. 403. Once a party has demonstrated the relevance and probative value of the evidence, the role of the district court is simply to determine whether admission of the exhibit [or other evidence] would create an "undue tendency to suggest decision on an improper basis." Notes of Advisory Committee, Fed.R.Evid. 403. A district court may exclude relevant evidence if the probative value of the evidence is substantially outweighed by the danger of unfair prejudice. Fed.R.Evid. 403.
United States v. Mulder, 147 F.3d 703, 707 (8th Cir.1998); see also United States v. Molina, 172 F.3d 1048, 1055-1056 (8th Cir. 1999) ( ). The court's discretion to admit or exclude evidence "is broad where, as here, the district court must balance the evidence's probative value against the danger of unfair prejudice, confusion of the issues, or misleading the jury." Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1117 (8th Cir.1999) . The court will consider seriatim the categories of evidence the parties seek to exclude to determine whether Rule 403 or some other rule of evidence or legal principle should bar their admission.
In its motions in limine, Dethmers seeks to exclude seven categories of evidence: (1) evidence related to the Johnson reissue patent (the Re482 patent); (2) evidence related to the Parent patent (the '851 patent); (3) evidence related to reasons for the change in name of one of Dethmers's tow bars; (4) evidence related to Automatic's dismissed counterclaims; (5) evidence related to the value of the original Johnson patent (the '240 patent); (6) the testimony of Automatic's expert concerning the measure of damages; and (7) the evidence challenged in Dethmers's second motion in limine, the October 4, 1994, letter from attorney Brian Laurenzo for Dethmers to Jay Hesse, Automatic's President. The court will consider in this section the admissibility of all of this evidence with the exception of category six. In a subsequent section, the court will combine its discussion of the admissibility of Dethmers's sixth category of evidence with its discussion of Automatic's motion in limine, as both motions go to...
To continue reading
Request your trial
-
Innovation Ventures, LLC v. Custom Nutrition Labs., LLC
...Corp. v. Microsoft Corp. , No. C06-0703, 2008 WL 7404617, at *2–3 (W.D. Wash. Feb. 26, 2008) ; Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co. , 73 F. Supp. 2d 997, 999, 1007–08 (N.D. Iowa 1999). In others, the experts worked from established royalty rates between the parties. See Loftness S......
-
Dethmers Mfg. Co. v. Automatic Equipment Mfg. Co., C 96-4061-MWB.
...Inc. v. Automatic Equipment Mfg. Co., 70 F.Supp.2d 944 (N.D.Iowa 1999) (Dethmers II), and Dethmers Mfg. Co., Inc. v. Automatic Equipment Mfg. Co., 73 F.Supp.2d 997 (N.D.Iowa 1999) (Dethmers III), this court entered final judgment pursuant to its rulings under Rule 54(b) of the Federal Rules......
-
Scott v. City of Sioux City
...or contributed to, a prejudicial conclusion” 96 F.Supp.3d 881by the jury); Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co., 73 F.Supp.2d 997, 1002–03 (N.D.Iowa 1999) (concluding that evidence that was only marginally relevant to remaining claims should be excluded pursuant to Rule 403,......