Free Motion for Miscellaneous Relief - District Court of Arizona - Arizona

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BRYAN CAVE, LLP (00145700) George C. Chen (019704) Two North Central Avenue, Suite 2200 Phoenix, AZ 85004-4406 Telephone: (602) 364-7000 WATSON & ROUNDS Michael D. Rounds (admitted pro hac vice) 5371 Kietzke Lane Reno, NV 89511 Telephone: (775) 324-4100 Attorneys for Plaintiff Reno A & E, Inc.
UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

EBERLE DESIGN, INC., Plaintiff, -vsRENO A & E, Defendant. ___________________________ RENO A & E, Counter-claimant -vsEBERLE DESIGN, INC., and ELECTRONIC DEVICES, INC., Counter-defendants

) CIV 02 2575 PHX DGC (LEAD) ) CIV 03-883 PHX DGC ) (Consolidated) ) ) RENO A & E'S MOTION TO ADMIT ) THE DECLARATION OF ALAIN ) LAMOUREUX ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

Reno A & E hereby moves to admit the Declaration of Alain Lamoureux pursuant to the Federal Rules of Evidence, Rules 801(c) and 807. In the alternative, Reno A & E moves this Court to allow Thomas Potter to provide testify regarding his conversations with Mr. Lamoureux.
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I. BACKGROUND Alain Lamoureux was disclosed in the Pretrial Order as a fact witness who will testify at trial regarding Electromega's relationship with Detector Systems and Reno A & E, as well as purchases of Model C. Mr. Lamoureux's testimony will be offered to show there was no offer for sale of the Model C to Electromega until four months after the critical date of April 24, 1996. More specifically, Mr. Lamoureux would provide testimony that Electromega's February 1996 purchase orders were for the 222C and 292 models, which were products sold by Mr. Potter's former company, Detector Systems. Mr. Lamoureux provided a declaration laying out these facts in support of Reno A & E's Opposition to Eberle's Partial Motion for Summary Judgment, which is attached hereto as Exhibit A. Eberle did not depose Mr. Lamoureux during discovery despite having more than a year of discovery to do so. Two weeks ago Mr. Lamoureux was hospitalized due to severe intestinal bleeding and is scheduled to be operated upon this week. Counsel for Reno A & E promptly informed Eberle and made arrangements to take his testimony through videoconference. Counsel learned over the weekend that Mr. Lamoureux's condition had deteriorated and that he would no longer be able to have his testimony taken under any circumstances during the entirety of trial. Mr. Lamoureux was previously available for trial in May 2005, which was postponed due to medical complications faced by a family member of Eberle's counsel. II. ANALYSIS Under Rule 801(c), statements are not excluded from evidence as hearsay unless they are offered to prove the truth of the matter asserted. Fed. R. Evid. 801(c); Gibbs v. State Farm Mut. Ins. Co., 544 F.2d 423, 428 (9th Cir. 1976) (letters to insurance carrier and its attorney were not hearsay when used to show that based on receipt of certain information carrier lacked bad faith); Cameron v. Community Aid for Retarded Children, 335 F.3d 60, 66 (2nd Cir. 2003) (reports on employee performance used to establish director's state of mind regarding whether employee was disabled were not hearsay because the reports were not offered to prove actual disability). Eberle has accused Mr. Potter of inequitable conduct for the failure to disclose an alleged offer for sale of the Model C to Electromega prior to the
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critical date. To establish inequitable conduct, Eberle must prove that Mr. Potter intended to mislead the Patent Office, which necessarily involves Mr. Potter's knowledge and state of mind in light of all the surrounding facts and circumstances. Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1259 (Fed. Cir. 2000); Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1362 (Fed. Cir. 2003). Mr. Potter has testified that he did not disclose any precritical date offer for sale because, based on his personal knowledge, there was no such offer until four months after the critical date. He has further testified that Electromega's February 1996 purchase orders were for products other than the Model C. Mr. Lamoureux's statements are admissible to show that Mr. Potter, based on his state of mind, lacked the requisite intent necessary for inequitable conduct. Fed. R. Evid. 801(c). The declaration of Mr. Lamoureux is properly offered to show the effect of his discussions with Reno A & E on Mr. Potter's knowledge and good faith belief that there was no precritical date offer or sale of the Model C. Gibbs, 544 F.2d at 428; Cameron, 335 F.3d at 66. Mr. Lamoureux's testimony is not being offered to prove or disprove that a sale or offer occurred. Accordingly, Mr. Lamoureux's declaration is not hearsay and thus, should be admitted. On alternative grounds, Mr. Lamoureux's declaration is admissible under the hearsay exception for statements having circumstantial guarantees of trustworthiness. Fed. R. Evid. 807. The court balances the requirements of this exception based on need and To be admissible, the evidence must fulfill five requirements: "(1)

trustworthiness.

materiality; (2) most probative evidence available after reasonable efforts; (3) maximum accommodation of the general purposes of the Rules of Evidence and interests of justice; (4) sufficient guarantees of trustworthiness; and (5) adequate notice to opposing party of intended use of statement." United States v. Friedman, 593 F.2d 109, 118 (9th Cir. 1979).1 Here, ample evidence establishing the circumstantial guarantees of trustworthiness exists. Mr. Lamoureux is a person of good character and made his declaration under penalty
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Rules 803 (24) and 804(b)(5) were combined and amended as Rule 807.
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of perjury. United States v. White, 611 F.2d 531, 537 (5th Cir. 1980) (declarant's oath was an indicia of trustworthiness). Mr. Lamoureux, the owner of Electromega, personally placed Electromega's orders with Reno A & E. Thus, Mr. Lamoureux's testimony is necessary as the most probative evidence regarding the February 1996 purchase orders placed for the 222C and 292, and the first purchase order of the Model C in August 1996. Further, Mr.

Lamoureux's declaration will corroborate and be corroborated by the testimony of Mr. Potter as well as documents offered to show that Mr. Potter had no duty of on-sale disclosure. Friedman, 593 F.2d at 119 (evidence of corroboration a factor favoring reliability). Eberle has been fully aware that Reno A & E intended to rely on the statements in Mr. Lamoureux's declaration. Reno A & E disclosed Mr. Lamoureux in its Rule 26 Initial Disclosures and in the Pretrial Order as a witness to be called at trial. Mr. Lamoureux's grave and unexpected medical condition now renders him unable to attend. Mr. Lamoureux, however, was

available to attend the May 2005 trial, which was postponed due to the illness of a family member of Eberle's counsel. In the interests of justice, Reno A & E should be permitted to present Mr. Lamoureux's testimony, which goes directly to rebut Eberle's allegations of inequitable conduct and the on-sale bar. Upon consideration of these factors, Mr. Lamoureux's statements have the circumstantial guarantees of trustworthiness required under Rule 807. Accordingly, Mr. Lamoureux's declaration should be admitted into evidence. III. CONCLUSION Reno A & E respectfully requests the Court admit the declaration of Alain Lamoureux, or in the alternative, Mr. Potter should be allowed to testify regarding his conversations with Mr. Lamoureux pursuant to Rules 801(c) and 807 of Federal Rules of Evidence.

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DATED this 6th day of September, 2005.
BRYAN CAVE LLP

By:
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s/ George C. Chen George C. Chen Two North Central Avenue, Suite 2200 Phoenix, AZ 85004-4406 WATSON & ROUNDS Michael D. Rounds 5371 Kietzke Lane Reno, NV 89511 Attorneys for Plaintiff Reno A & E, Inc.

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the foregoing was served on all counsel of record on September 6, 2005 via the Court's CM/ECF System, including: Charles F. Hauff Michael K. Kelly Daniel R. Pote Snell & Wilmer One Arizona Center 400 East Van Buren Phoenix, AZ 85004

Dated:

September 6, 2005

s/ Denise M. Aleman

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