The opinion of the court was delivered by: JAMES FRANCIS, Magistrate Judge
This is a patent infringement case involving two corporations engaged
in the production and sale of pre-knotted neckties. The parties submitted
a Joint Pre-Trial Order to the Honorable Richard M. Berman on September
15, 2003, listing their trial exhibits and including the direct testimony
of their trial witnesses. Each party subsequently submitted a motion
in limine to exclude portions of witness testimony and various
documents. The defendant, Eastern Creative Industries, Inc. ("Eastern"),
has moved to exclude nine of the plaintiff's exhibits and to strike a
portion of the testimony of the president of B&G Plastics, Inc.
("B&G"), Chester Kolton. (Defendant Eastern's Motion to Not Admit
Into Evidence Nine of Plaintiff's Exhibits and to Strike a Portion of the
Testimony of Chester Kolton ("Def. Motion")). The plaintiff has
cross-moved to exclude testimony of Eastern's president, John Najarian.
(Plaintiff's Cross Motion in Limine to Exclude John Najarian's Hearsay
and Opinion Trial Testimony ("Pl. Motion")). For the following reasons,
both motions are denied.
The plaintiff and defendant are both New Jersey corporations that
produce and sell pre-knotted ties and the hangers that display those
ties. On February 6, 1998, B&G filed a complaint against Eastern,
alleging patent infringement of U.S. Patent No. 5,556,014 ("the `014
patent"), and tortious interference with business relations. (Complaint
("Compl."), ¶¶ 6, 16). The `014 patent was issued to B&G on
September 17, 1996, and is entitled "Hanger Composite for Display of
Neckties with Preformed Knots." (United States Patent Number 5,556,014,
attached as Exh. 1 to Compl.). B&G claimed that a competing hanger
marketed by Eastern infringed the `014 patent. B&G argued that
Eastern had modified one of its clips to enable that clip to be used with
a B&G hanger. The plaintiff claimed that using this modified clip
with a B&G hanger constituted direct infringement of the `014 patent.
In a Report and Recommendation that was later adopted by Judge Berman, I
found that there were disputed issues of material fact with regard to the
validity of the `014 patent, and recommended against granting summary
judgment on that issue. B&G Plastics, Inc. v. Eastern Creative
Industries, Inc., 269 F. Supp.2d 450, 471 (S.D.N.Y. 2003).
B&G's summary judgment motion for tortious interference with
business relations related to a different set of patents. The defendant
owns two patents, U.S. Patent No. 4,337,539 ("the `539 patent") and U.S.
Design Patent No. 267,289 ("the `289 patent"). B&G
Plastics, 269 F. Supp.2d at 465. The plaintiff's claim
involved a series of communications initiated by Eastern regarding
its `289 and `539 patents, which it believed were being infringed by
B&G. In March 1995, the defendant came to believe that B&G was
manufacturing and selling a neck-tie support clip that infringed the `289
and `539 patents. Id. at 466. After seeking the advice of
counsel, Eastern sent a letter dated March 29, 1995 ("the March letter"),
informing B&G that its clip "appears to be substantially identical"
to the clip covered by the `289 and `539 patents. Id. The
letter further stated that if B&G continued to make or sell the
infringing article, it and others involved "will all be named as party
defendants." Id. The defendant provided a copy of this letter
to Steinberg Neckwear, a customer of both B&G and Eastern, on April
3, 1995. Id.
In response to Eastern's letter, B&G sought opinion of its own
patent counsel and was informed that the B&G clip did not infringe
Eastern's patents, and furthermore that the `289 patent was invalid and
therefore B&G was unable to infringe it. Id. at 467.
B&G's counsel then shared this information with Eastern's attorney by
letter on April 11, 1995. Id. Despite the opinion of its
counsel that there was no infringement, B&G decided to issue a "hold
harmless" letter to its customers on April 13, 1995 (the "hold harmless
letter"). This letter informed customers that B&G would take
responsibility for paying "any and all monetary damages" that could
potentially arise if a judgment were entered against B&G "for
infringement of [the `539 or `289 patents]." Id.
After receiving the opinion of B&G's counsel, Eastern obtained
a second patent counsel, who advised it that B&G's clips did
not likely infringe on Eastern's patents. Id. After hearing
this, Eastern stopped pursuing an infringement claim against B&G.
Eastern also claimed that it advised Joseph Steinberg of Steinberg
Neckwear that it would not be bringing any infringement action against
Although it was satisfied that B&G's clips did not infringe its
patents, Eastern still believed that other companies were infringing.
Eastern therefore sent a letter to all of its customers on June 16, 1995
("the June letter"), stating that "[i]t is our understanding that one or
more companies are selling pretied neckties having a knot support
assembly which copies and infringes on the patented knot support assembly
of the ['539] patent." Id. The letter went on to state that
Eastern was "aware of another pre-tied necktie available in the
market-place having a different knot support assembly which does not
infringe on the ['539] patent." Id. According to Eastern, this
last paragraph was included to "cover  the units sold by B&G
Plastics and reduce  the likelihood of a claim being asserted against
[Eastern] by B&G that [Eastern's] notice letter implies that all
third-party units infringe on [its] patent." Id.*fn1
In its summary judgment motion, B&G claimed that the `289 patent
was invalid and that its business relationship with Steinberg Neckwear
was compromised when Eastern shared a copy of
the infringement letter with Steinberg. B&G asserted that
Eastern made the allegations in bad faith and that the letters
constituted tortious interference. Id. Additionally, B&G
asserted that after receiving the June letter from Eastern, customers
would assume that the infringing goods were made by B&G because of
the hold harmless letter B&G had issued to its customers earlier.
Id. In considering this claim, I found that there was not
sufficient evidence from which a reasonable jury could conclude that
Eastern had alleged patent infringement in bad faith. Without bad faith,
a requirement for a claim of tortious interference, B&G could not
support this claim. The plaintiff's motion for summary judgment on the
tortious interference claim was therefore denied. Id. at
Eastern, in turn, moved for summary judgment with respect to B&G's
patent infringement claim and the tortious interference claim. The
defendant claimed that there was no direct infringement of the `014
patent because of the existence of an implied license. Because the
validity of the `014 patent was a threshold consideration for determining
Eastern's motion i.e., if the `014 patent was found to be
invalid, it would follow as a matter of law that Eastern's use of its own
clip with B&G's hanger did not infringe it summary judgment
was denied on this claim. Id. at 471. Finally, I found that
B&G was not able to demonstrate that Eastern had acted in bad faith
in informing the industry of potential infringement of its patent, nor
was it able to show that it suffered any damages as a result.
Id. at 470-71. Accordingly,
the defendant's motion for summary judgment on the tortious
interference claim was granted. Id. at 471.
The purpose of a motion in limine is to allow the trial court
to rule in advance of trial on the admissibility and relevance of certain
anticipated evidence. See Luce v. United States, 469 U.S. 38,
41 n.4 (1984); Palmieri v. Defaria, 88 F.3d 136, 141 (2d Cir.
1996); United States v. Paredes, 176 F. Supp.2d 192, 193
(S.D.N.Y. 2001). Evidence should be excluded on a motion in
limine only when the evidence is clearly inadmissible on all
potential grounds. See Baxter Diagnostics, Inc. v. Novatek Medical,
Inc., No. 94 Civ. 5220, 1998 WL 665138, at *3 (S.D.N.Y. Sept. 25,
1998). To be admissible, evidence must be both relevant and reliable.
Evidence "having any tendency to make the existence of any fact that is
of consequence to the determination of the action more probable or less
probable than it would be without the evidence" is relevant.
Fed.R.Evid. 401; see Amorgianos v. National Railroad Passenger Corp.,
303 F.3d 256, 265 (2d Cir. 2002).
1. Chester Kolton's Testimony
The defendant first moves to strike some of the testimony of Chester
Kolton on the ground that it is no longer relevant to the case. The
defendant has identified several portions of Mr. Kolton's testimony that
allegedly relate solely to the tortious interference claim that was
previously dismissed. Eastern reasons that it would be "an unnecessary
burden" to "have to ...