Motion in Limine Denied as Improper – Whether Prosecution History Estoppel Precludes Use of Doctrine of Equivalents is an Issue for Summary Judgment

Witness Systems, Inc. v. Nice Systems, Inc. et al., No. 1:06-cv-126 (N.D. Ga. May, 10, 2007) (Batten, J.)

The Defendants filed a Motion in Limine seeking to preclude the Plaintiff from relying on the doctrine of equivalents due to prosecution history estoppel. On a recommendation from the Special Master, Judge Batten concluded that whether prosecution history applies is an issue of law that should have been raised in a motion for summary judgment. The Court explained that “[m]otions in limine address evidentiary questions and are inappropriate devices for resolving substantive issues.” (Order at 3 (citation and quotations omitted).) The Court also cited a decision from the Eastern District of Missouri where that court denied a similar motion in limine after construing it as a “disguised” motion for summary judgment. (Order at 4.) As a result, the Court denied the Defendants’ Motion as untimely and improper.