ORIBEL PTE LTD. v. CARTERS INC.

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ORIBEL PTE. LTD.,
Plaintiff,
v.
CARTER’S RETAIL, INC. ET AL.,
Defendants.
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CIVIL ACTION NO. 2:24-CV-00977-JRG
MEMORANDUM OPINION AND ORDER
The Court held a Pretrial Conference in the above-captioned case on September 8, 2026.
At the conference, the Court ruled on several pending pretrial motions and motions in limine
(“MILs”) filed by Plaintiff Oribel Pte. Ltd. (“Plaintiff”) and Defendants Carter’s Retail, Inc., The
William Carter Company, and Skip Hop (collectively, “Defendants”) (collectively, the “Parties”)
(Dkt. Nos. 181, 107, 106, 108, 105, 99, 100, 104, 172, and 174). This Order memorializes the
Court’s rulings on the pretrial motions and MILs 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 hearing, this Order in no
way limits or constrains such rulings from the bench. 	Accordingly, it is hereby ORDERED as
follows:
1. 	Defendants’ Opposed Motion to Continue Trial Date (Dkt. No. 181)
The Court released this case from September and October trial dates. Accordingly, the motion
was DENIED AS MOOT.
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2. 	Defendants’ Motion to Exclude Certain Opinions and Testimony of Dr. Kimberly
Cameron (Dkt. No. 107)
The motion was DENIED.
The portion of the motion regarding secondary considerations of non-obvious was denied as
moot. The Parties agree this issue is moot in light of Defendants withdrawing their invalidity
defenses.
The remaining portions of the motion regarding Dr. Camron’s opinions on seat testing and
meeting claim limitations were denied.
3. 	Plaintiff’s Motion to Strike Portions of Joel Delman’s Expert Reports (Dkt. No. 106)
The motion was GRANTED IN PART.
Regarding Mr. Delman’s non-infringement opinions, the Court granted the motion in part.
Specifically, the Court struck paragraphs 106 and 116 in their entirety but otherwise denied that
portion of the motion.
The Parties agree the remaining portions of the motion—undisclosed references, motivations
to combine, conclusory opinions about prior art references, and improper and irrelevant opinions
under controlling law—are moot. Accordingly, the remainder of the motion is denied as moot.
4. 	Defendants’ Motion to Exclude Certain Opinions and Testimony of Dr. Matthew
Farber (Dkt. No. 108)
The motion was DENIED in its entirety.
5. 	Plaintiff’s Motion to Exclude Certain Opinions of Garrett Glover (Dkt. No. 105)
The motion was GRANTED IN PART.
Regarding design-around costs, the motion was denied.
Regarding Defendants practicing their own patents, the motion was granted.
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6. 	Plaintiff’s Motion for Partial Summary Judgment on Defendants’ Fourth, Fifth,
Sixth, Eighth, and Eleventh Affirmative Defenses (Dkt. No. 99)
The motion was GRANTED.
Regarding Defendants’ fourth, fifth, sixth, and eleventh defenses, the Parties agree Defendants
do not oppose these parts of the motion. Accordingly, this portion of the motion was granted as
unopposed.
Regarding Defendants’ defense of prosecution history estoppel, the Parties agree Defendants
do not oppose this part of the motion. Accordingly, this portion of the motion was granted as
unopposed.
Regarding Defendants’ defense of disclaimer, this portion of the motion was granted. As of
the hearing there were no live claim construction issues before the Court. The Court instructed the
Parties that prosecution disclaimer is not an affirmative defense in a trial on the merits before the
jury.
7. 	Defendants’ Partial Motion for Summary Judgment of Noninfringement (Dkt. No.
100)
The motion was DENIED.
Regarding non-infringement of claim 1 and its dependent claims, the motion was denied as
moot in view of Plaintiff’s removal of claim 1 from its final election of amended claims.
Regarding non-infringement of claim 18 and its dependent claims, the motion was denied.
8. 	Defendants’ Motion for Summary Judgment of No Pre-Suit Damages, No Pre-Suit
Willful Infringement, and No Lost Profits (Dkt. No. 104)
The motion was GRANTED IN PART.
Regarding pre-suit damages, the motion was granted. The Court found that Plaintiff failed to
show reasonable efforts to ensure substantial compliance for marking. The only evidence
Plaintiff put forth as to reasonable efforts was that Plaintiff told its manufacturer, Meiban, to tell
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Plaintiff’s packaging entity to make sure the products were marked. Plaintiff did not represent
that it had any contract or line of communication beyond its original statement to Meiban to
instruct the packaging entity to mark appropriately. As a result, Plaintiff failed to mark sixty-one
percent of patent practicing units between 2021 and 2023. The Court found such failure to be a
lack of substantial compliance that was probative of the lack of reasonable efforts.
Regarding no willful pre-suit infringement, the motion was granted. Failure to comply with
the marking statute prohibits recovery of pre-suit damages.
Regarding recovery of non-party Oribel Inc.’s lost profits, the motion was denied.
Regarding recovery of Plaintiff’s own lost profits, the motion was denied.
9. 	Parties’ Opposed Motions in Limine (Dkt. Nos. 172, 174)
a. 	Plaintiff’s Motion in Limine 1: any argument, evidence, testimony regarding, or
references to, Plaintiff’s “waiting to file” or “taking too long to file” suit against
Defendants, or any other similarly derogatory or pejorative commentary or testimony
on the timing of Plaintiff’s filing suit.
This MIL was DENIED.
b. 	Plaintiff’s Motion in Limine 2: any argument, evidence, or testimony regarding or
references to, any planned or anticipated redesigns or design-arounds of the Accused
Products that Defendants did not timely disclose during the discovery period, or
otherwise withheld discovery about on the basis of privilege.
This MIL was GRANTED.
c. 	Plaintiff’s Motion in Limine 3: Any argument, evidence, or testimony regarding, or
references to, the profitability or commercial success of Plaintiff as a company overall,
or any of Plaintiff’s products other than the PortaPlay activity centers.
This MIL was GRANTED AS AMENDED. The Parties agree Defendants are precluded
from advancing any argument, evidence, or testimony regarding or references to the profitability
or commercial success of Plaintiff as a company overall on any of Plaintiff’s products other than
the PortaPlay activity centers. The Parties agree this limine does not preclude Defendants from
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arguing to the jury that Oribel Inc., instead of Oribel Pte. Ltd., sells activity centers in the United
States.
d. 	Plaintiff’s Motion in Limine 4: Any argument, evidence, or testimony regarding, or
references to, Defendants’ practice of their own patents as a defense to infringement.
This MIL was GRANTED AS UNOPPOSED.
e. 	Plaintiff’s Motion in Limine 5: Any argument, evidence, or testimony that compares
the Accused Products to prior art.
This MIL was GRANTED AS AGREED.
f. 	Defendants’ Motion in Limine 1: To preclude all evidence and testimony suggesting
that Skip Hop had knowledge of the ’437 Patent, or that Skip Hop withheld information
from the USPTO, based on the prosecution history or list of references cited in Skip
Hop’s patents or applications.
This MIL was GRANTED IN PART but otherwise denied.
Regarding introducing evidence and testimony suggesting that Skip Hop withheld
information from the USPTO, the MIL was granted as agreed.
Regarding introducing evidence and testimony suggesting Skip Hop had knowledge of the
’437 Patent, the MIL was denied.
g. 	Defendants’ Motion in Limine 2: To preclude all evidence and testimony regarding
Skip Hop’s benchmarking.
This MIL was GRANTED IN PART.
Regarding the term “copying,” the MIL was granted.
Regarding the terms “benchmarking” and “reverse engineering,” the MIL was denied.
h. 	Defendants’ Motion in Limine 3: To preclude all evidence, testimony, and argument
regarding Skip Hop’s alleged offer to purchase the PortaPlay concept from Oribel.
This MIL was GRANTED.
i. 	Defendants’ Motion in Limine 4: To Preclude Evidence or Argument Concerning the
Identity of Oribel’s Packaging Supplier or Any Information Relating to That Supplier
Not Disclosed During Discovery.
This MIL was WITHDRAWN.
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j. 	Defendants’ Motion in Limine 5: No evidence, argument, or inference suggesting that
employees or corporate representatives lack knowledge that is outside of their personal
knowledge or the scope of 30(b)(6) topics for which they were designated.
This MIL was GRANTED.
10. Parties’ Exhibit Disputes
Defendants’ exhibits in categories 1, 2, 3, 4, 5, 6, 7, 8, and 10 were PRE-ADMITTED.
Plaintiff’s exhibits in categories 1, 2, 3, and 4 were PRE-ADMITTED.
The Parties are ORDERED to jointly produce a list of all pre-admitted exhibits and promptly
send the same to the Court via the Courtroom Deputy. Such list shall accurately reflect the results
of the Court’s rulings during this portion of the pre-trial process.
.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
So ORDERED and SIGNED this 9th day of October, 2026.
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