TRANSPERFECT GLOBAL, INC., TRANSPERFECT TRANSLATIONS INT'L, INC., and TRANSLATIONS.COM, INC., Plaintiffs,
MOTIONPOINT CORP., Defendant.
ORDER RESOLVING MOTIONS IN LIMINE (Docket Nos. 288, 290)
CLAUDIA WILKEN, District Judge.
On June 5, 2013, the Court held a pretrial conference and heard arguments regarding the parties' motions in limine. After considering the parties' oral argument and submissions, the Court now issues the following rulings:
I. TransPerfect's Motions in Limine
No. 1 - Unopposed Motion To Exclude References to the Expert Opinions of Martin Haeberli: This motion is GRANTED. Dr. Chase's response to Haeberli is also excluded.
No. 2 - Motion to Exclude Evidence of Infringement Based On Comparisons Between the Parties' Respective Products and Services: This motion is GRANTED. MotionPoint may, however, present product-comparison evidence to support its invalidity defenses.
No. 3 - Motion to Exclude Evidence or Argument that MotionPoint's Invention Requires a "Turnkey" System, Avoidance of "Client-Side IT Work, " or Similar Characterizations: This motion is DENIED. Although MotionPoint may not misrepresent the nature of its patent claims, it is not precluded from using the terms, "turnkey, " "avoidance of client-side IT work, " or similar characterizations to describe the alleged benefits of its inventions at trial.
No. 4 - Motion to Exclude Evidence or Argument of Infringement Based on the Doctrine of Equivalents Under the Doctrines of Prosecution History Estoppel and Claim Vitiation: This motion is GRANTED. MotionPoint may still present argument and evidence of literal infringement.
No. 5 - Motion to Exclude Evidence or Argument That TransPerfect's Patents Are Less Valuable, Valid, or Legitimate Because TransPerfect Did Not Apply for the Patents Itself: This motion is DENIED. MotionPoint may not argue that TransPerfect's patents are invalid because of the manner in which TransPerfect acquired them. MotionPoint may, however, present evidence relating to TransPerfect's purchase of the patents - such as the price TransPerfect paid - for other purposes, including proof of damages.
No. 6 - Motion to Exclude the Testimony of William Fleming as Inadmissible Hearsay: This motion is GRANTED. Fleming may not testify about what MotionPoint's clients and prospective clients said to him about MotionPoint's products or services. Nor may he testify about any comments that TransPerfect employees allegedly made to MotionPoint employees, who subsequently relayed those comments to Fleming. If any TransPerfect representatives expressed their doubts about the validity of TransPerfect's patents to Fleming directly, those comments may be admissible as statements against interest.
No. 7 - Motion to Exclude Evidence or Argument Regarding Non-Obviousness Based on Secondary Indicia Due to a Lack of a Nexus: This motion is DENIED. The existence of a nexus is a question of fact.
No. 8 - Motion to Exclude Evidence or Argument That Material Added to a Patent Application Is Effective as Prior Art Against a Patent with an Earlier Filing Date: This motion is DENIED. This involves questions of fact.
No. 9 - Motion to Exclude Evidence or Argument Based on Third-Party Websites: This motion is DENIED.
No. 10 - Motion to Exclude Evidence or Argument About MotionPoint's State of Mind Concerning the Alleged Infringement and Invalidity of TransPerfect's Patents: This motion is GRANTED. MotionPoint's state of mind regarding the alleged infringement and invalidity of TransPerfect's patents is not relevant in light of TransPerfect's decision to abandon its willful infringement claims.
No. 11 - Motion to Exclude Evidence or Argument Regarding MotionPoint's "Price Erosion" Theory of Damages: This motion is DENIED as moot. MotionPoint stated at the pretrial ...