United States District Court, N.D. California, San Jose Division
VIA TECHNOLOGIES, INC. A CALIFORNIA CORPORATION, et al., Plaintiffs,
ASUS COMPUTER INTERNATIONAL, et al., Defendants.
ORDER REGARDING MOTIONS IN LIMINE
LABSON FREEMAN United States District Judge
VIA Technologies, Inc., VIA Technologies, Inc., and VIA Labs,
Inc., (collectively, “VIA” or
“Plaintiffs”) bring this lawsuit against
Defendants ASMedia Technology Inc., ASUSTeK Computer Inc.,
and ASUS Computer International (collectively,
“ASUS” or “Defendants”), currently
alleging trade secret misappropriation in violation of Cal.
Civ. Code §§ 3426 et seq. (“CUTSA”) and
18 U.S.C. §§ 1836 et seq. (“DTSA”).
This Order addresses the parties' motions in
limine. For the reasons explained below and on the
record at the July 13, 2017 pretrial conference, the motions
are decided as follows:
Plaintiffs' Motion in Limine No. 1: GRANTED IN
PART and DENIED IN PART.
Plaintiffs' Motion in Limine No. 2: GRANTED.
Plaintiffs' Motion in Limine No. 3: GRANTED IN
PART and DENIED IN PART.
Plaintiffs' Motion in Limine No. 4: DENIED.
Defendants' Motion in Limine No. 1: DENIED.
Defendants' Motion in Limine No. 2: GRANTED IN
PART and DENIED IN PART.
Defendants' Motion in Limine No. 3: DENIED.
PLAINTIFFS' MOTIONS IN LIMINE
Plaintiffs' Motion in Limine No. 1 to Exclude
Evidence and Argument Relating to Intellectual Property of
ASUS and Theories of Liability that are No Longer at
move to exclude evidence or argument relating to: (1)
intellectual property (such as patents and trade secrets)
belonging to Defendants, and/or (2) dropped or dismissed
theories of liability, such as claims that Defendants
misappropriated designs for PCIE and infringed United States
Patent No. 8, 476, 747 (“the '747 patent”).
ECF 266. Plaintiffs argue that this evidence is irrelevant
and would confuse the jury, result in undue delay, and waste
respond that they do not intend to use evidence of their own
intellectual property as a defense to patent infringement or
trade secret misappropriation. ECF 286. However, Defendants
argue that they should be permitted to introduce evidence of
their own intellectual property to show lack of malicious
theft of trade secrets. Id. Defendants argue this
evidence is relevant because it suggests a corporate culture
of creativity and respect for others' creativity.
Id. at 2-3.
Court agrees with Defendants that general evidence of their
corporate culture, including that they own intellectual
property, is relevant rebuttal evidence to malicious theft of
trade secrets. Accordingly, the Court DENIES Plaintiffs'
motion with respect to evidence relating to the intellectual
property of ASUS.
Court, however, agrees with Plaintiffs that evidence relating
to dropped or dismissed theories of liability, in general,
should be excluded. However, it may be the case that, even if
such evidence is not allowed to be introduced in the first
instance, it may be proper rebuttal. Accordingly, the Court
GRANTS Plaintiffs' motion with respect to evidence
relating to dropped or dismissed theories of liability.
Defendants may, however, move for modification of this order
if such evidence become relevant to a defense.
Plaintiffs' Motion in Limine No. 2 to Preclude
Defendants from Misrepresenting at Trial that VIA's Trade
Secret Claims Only Concern 29 Analog Schematics
move to preclude Defendants from representing at trial that
Plaintiffs' trade secret claims as to analog circuit
schematics are limited to only 29 schematics. ECF 267. On
October 12, 2016, Magistrate Judge Lloyd issued an order
“limit[ing] the scope of [Plaintiffs'] requested
[trade secret] discovery to 24 analog schematics of its
choice, in addition to those schematics included in the power
efficiency combination trade secret, ” as well as the
“list of 39 digital designs” (i.e., Verilog
source code) identified in its May 27, 2016 Second Amended
Trade Secret Disclosures. ECF 182.
argue that, even though discovery proceeded on this limited
basis, they should not be precluded from arguing the full
scope of their analog circuit schematics trade secret claims
at trial, which, according to Plaintiffs, consist of 1, 116
schematics relating to certain subcomponents of technologies
in USB 3.0. ECF 267 at 2. Plaintiffs argue this is the case
because Magistrate Judge Lloyd's order only concerned
discovery, not dispositive issues, and in fact Magistrate
Judge Lloyd lacked jurisdiction under 28 U.S.C. §
636(b)(1)(A) to render a dispositive order that would
foreclose Plaintiffs from proceeding on any trade secret
claims. Id. at 2-3. Plaintiffs also argue that trade
secret misappropriation and misuse can be proven
circumstantially, and they should be allowed to use the 29
schematics to prove by way of example that Defendants
misappropriated the full 1, 116 schematics. Id. at
respond that the purpose of Magistrate Judge Lloyd's
order was to limit the scope of the trade secret case, and
the Court should continue to enforce its boundaries at trial.
ECF 287. Defendants argue that Plaintiffs' jurisdictional
arguments are waived because they did not, pursuant to 28
U.S.C. § 636(b)(1) and Fed.R.Civ.P. 72(a), object to
Magistrate Judge Lloyd's order within 14 days.
Id. at 2. Defendants also argue that Plaintiffs'
jurisdictional arguments are incorrect because courts have an
inherent power to control their dockets. Id. at 3.
Defendants additionally disagree that Plaintiffs can prove
trade secret misappropriation by example, arguing that
Plaintiffs must specifically identify the precise aspects of
the analog circuit schematics (which are a hybrid of trade
secrets and publicly known ...