Tosoh Corporation v. Dental Direkt GmbH, No. 2:24-cv-00138 (E.D. Tex. Aug. 31, 2026)

The Court held a Pretrial Conference in the above-captioned case on May 27, 2026 regarding pending pretrial motions, motions in limine (“MILs”), and disputed exhibits between Plaintiff Tosoh Corporation (“Tosoh”) and Defendant Dental Direkt GmbH (“Dental Direkt”) (together, the “Parties”). (Dkt. Nos. 90, 105, 114-19, 135, 163, 164.) This Order memorializes the Court’s rulings on the pretrial motions, MILs, and disputed exhibits as announced from the bench and read into the record, including additional instructions that were given to the Parties. While this Order summarizes the Court’s rulings as announced into the record during the Pretrial Conference, this Order in no way limits or constrains such rulings from the bench. Accordingly, it is hereby ORDERED as follows:

1. Dental Direkt’s Opposed Motion to Strike Plaintiff’s Infringement Contentions (Dkt.

No. 90)

The Motion was DENIED.

2. Tosoh’s Opposed Motion for Leave to Amend Infringement Contentions (Dkt. No.

105)

The Motion was GRANTED.

23. Tosoh’s Motion to Strike Certain Testimony of Dental Direkt’s Technical and

Damages Experts (Dkt. No. 116)

The portion of the Motion regarding § 112 invalidity opinions is GRANTED, in light of the fact that the defenses of lack of enablement and lack of written description are no longer in the case. Accordingly, the Court struck all mentions of § 112 invalidity opinions in ¶¶ 3, 22, 158-169, 189, 193, 219, 222, 243, 244, 246, 249, 250, 272, 273, 275, 278, 279 of Dr. Griggs’s report and from his accompanying claim charts.

The portion of the Motion regarding Dr. Griggs’s uncharted references was GRANTED IN PART and DENIED IN PART. The Court struck all express references to Yamashita ’630, Young, Fujisaki ’742, and Tsuyoshi ’450, as well as ¶¶ 349, 355, 359, 375, 389, 393, 404, 463, 465, 474, 476, 477, 479, and 481. Additionally, the Court made the following partial strikes: for ¶ 348, everything after “set forth in other prior art references” in the third sentence; for ¶ 355, everything after the first sentence; for ¶ 404, everything after the first sentence.

For the portion of the Motion regarding Mr. Chase’s reasonable royalty opinion, the Court GRANTED leave to amend Mr. Chase’s report, solely to include the specific undisputed dates which had not been included.

The portion of the Motion regarding non-infringing alternatives (“NIAs”) was GRANTED. The Court struck ¶¶ 70-99 of Dr. Griggs’ rebuttal report, and ¶¶ 88 n.90, 105, 122-36, 140, 161, 184, 185, 188, 194, and 204-06 (as well as attachments 200-02, 360, and 361) of Mr. Chase’s rebuttal report.

The remaining portions of the Motion—regarding comparable licenses, Dr. Griggs’ obviousness opinions, and Mr. Chase’s rebuttal opinion on lost profits—were DENIED.

34. Dental Direkt’s Motion to Exclude Improper Opinions and Testimony of Dr. Alan

Goedde (Dkt. No. 117)

The Motion was DENIED. Dr. Goedde may not provide a lost profits analysis but may opine as to what potential lost sales would be considered as part of the hypothetical negotiation

5. Dental Direkt’s Motion to Exclude Improper Opinions and Testimony of Dr. Gary

Fischman (Dkt. No. 118)

The Motion was DENIED in its entirety. 6. Dental Direkt’s Motion for Partial Summary Judgment of Invalidity of Claims 1, 2,

4-6, 9, 17, and 18 of U.S. Patent No. 11,548,825 (Dkt. No. 114)

The Motion was DENIED AS MOOT by agreement of the Parties. 7. Dental Direkt’s Motion for Partial Summary Judgment of No Objective Indicia of

Nonobviousness (Dkt. No. 115)

The Motion was DENIED. 8. Dental Direkt’s Motion for Partial Summary Judgement of No Infringement (Dkt.

No. 119)

The Motion was DENIED. 9. Dental Direkt’s Motion to Compel Plaintiff to Produce Rule 12(a)(2)(B) Test Results

(Dkt. No. 135)

The Motion was DENIED as untimely. The Motion was filed April 10, 2026, despite the deadline for discovery dispute motions in the above-captioned case being March 25, 2026.

10. Parties Opposed Motions in Limine (Dkt. No. 163, 164)

a. Tosoh’s Motion in Limine 1: preclude evidence, testimony, or argument regarding

Tosoh’s infringement contentions, or unaccused products.

This MIL was DENIED, as the Court found that the relief Tosoh sought via this MIL is already covered by the Court’s standing Limine Order No. 1, which precludes reference to dropped claims,4 products, and other matters not at issue. The Court advised that Dental Direkt may approach the bench and seek leave to raise such evidence if Tosoh opens the door to such.

b. Tosoh’s Motion in Limine 2: preclude evidence, testimony, or argument regarding

physical samples of Ivoclar products.

This MIL was GRANTED AS AGREED.

c. Tosoh’s Motion in Limine 3: preclude evidence, testimony, or argument regarding lost

profits as a damages theory.

This MIL was GRANTED as to lost profits as a theory for damages, but the Court noted that it should not be construed as an outright exclusion of substantive evidence regarding lost sales.

d. Tosoh’s Motion in Limine 4: preclude evidence, testimony, or argument regarding a

party’s or its counsel’s retention of the same expert in other matters.

This MIL was GRANTED AS AGREED.

e. Dental Direkt’s Motion in Limine 1: exclude evidence, argument, and testimony

regarding objective indicia of nonobviousness.

This MIL was DENIED.

f. Dental Direkt’s Motion in Limine 2: exclude evidence, argument, and testimony

regarding Tosoh’s pre-suit testing of accused products.

This MIL was DENIED.

g. Dental Direkt’s Motion in Limine 3: exclude Tosoh’s experts from testifying regarding

undisclosed opinions relating to “full density” and “0% porosity.”

This MIL was DENIED.

h. Dental Direkt’s Motion in Limine 4: exclude evidence, argument, and testimony

regarding willful blindness.

This MIL was DENIED.

i. Dental Direkt’s Motion in Limine 5: exclude Tosoh’s undisclosed theory of inducement

according to which the accused products necessarily infringe.

This MIL was DENIED.

511. Parties’ Exhibit Disputes

Tosoh’s exhibits in all disputed buckets except bucket number 2 were PRE-ADMITTED without objection, subject to any conditions the Parties read into the record.

Dental Direkt’s exhibits in disputed buckets 1, 3, 4, 6, 7, 8, 9, and 10 were PRE-ADMITTED without objection, subject to any conditions the Parties read into the record.

Tosoh’s disputed exhibit PTX 63 (bucket number 2) was PRE-ADMITTED but exclusively . for use by Dr. Fischman.

The disputed exhibits in Dental Direkt’s bucket number 2 were PRE-ADMITTED for use by expert witnesses. The Court directed that if these exhibits are to be used with non-expert witnesses, counsel will first have to approach the bench and seek leave to publish before the jury.

The disputed exhibits in Dental Direkt’s bucket number 5 were PRE-ADMITTED, subject to the redactions ordered by the Court.

So ORDERED and SIGNED this 31st day of August, 2026.

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE