United States District Court, N.D. California, San Jose Division
FIRST ORDER RE: MOTIONS IN LIMINE RE: DKT. NOS. 255,
270, 271, 275, 278, 280, 281, 282, 283, 284, 288,
J. DAVILA United States District Judge.
before the Court are certain motions in limine and
other pre-trial motions filed by both parties. Dkt. Nos. 255,
269, 270, 271, 275, 278, 279, 280, 281, 282, 283, 284, 285,
288, 313, 317. The Court finds certain of these matters
suitable for decision without oral argument. Thus, having
considered the parties' moving and responding papers, the
Court rules as follows as to Plaintiffs' motions:
Plaintiffs' second motion to exclude any argument,
testimony or evidence to Personal Web's standing to sue
(Dkt. No. 270) is GRANTED IN PART and DENIED IN PART.
Defendants may not mention “prudential standing,
” attempt to re-litigate the prudential standing issue,
or make any argument or reference to the Court's Motion
to Dismiss order (Dkt. No. 245) or the reasoning contained.
Defendants may, however, introduce evidence and argument
relating to facts underlying the prudential standing issue,
including the parties' licensing history and its impact
on Defendants' subjective belief as to whether it was
infringing the '420 patent.
Federal Rule of Evidence 401, evidence is relevant if:
“(a) it has any tendency to make a fact more or less
probable than it would be without the evidence; and (b) the
fact is of consequence in determining the action.”
Under Federal Rule of Evidence 403, relevant evidence can be
excluded “if its probative value is substantially
outweighed by a danger of . . . unfair prejudice, confusing
the issues, misleading the jury, undue delay, wasting time,
or needlessly presenting cumulative evidence.” The
Court finds that, because it has already been resolved, the
issue of prudential standing is not relevant to the issues
that remain to be tried. For this same reason, the
Court's ruling and reasoning in its Motion to Dismiss
order (Dkt. No. 245) are also not relevant. Moreover, even if
this evidence was relevant, the probative value of such
evidence would be outweighed by its potential to cause undue
delay and to waste time. Prudential standing has already been
litigated, so it would be a waste of time for the jury to
hear evidence or argument which seeks to re-litigate this
the Court finds that the history of licensing and IBM's
subjective belief, in light of this history, as to whether it
was infringing the '420 patent are relevant to the issue
of willfulness. Such evidence regarding IBM's state of
mind will assist the fact finder in determining whether its
infringement was “egregious.” See Halo
Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct. 1923,
1933, 195 L.Ed.2d 278 (2016) (“Awards of enhanced
damages . . . are . . . designed . . . for egregious
infringement behavior. . . . [C]ulpability is generally
measured against the knowledge of the actor at the time of
the challenged conduct.”). The Court also does not find
that its probative value is substantially outweighed by the
danger of unfair prejudice or confusing the issues.
Plaintiffs' third motion to preclude any argument,
evidence, or testimony of non- accused features of the Tivoli
Storage Manager (“TSM”) product as evidence that
the TSM residing on a computer does not infringe (Dkt. No.
271) is DENIED.
Court finds that such evidence, including evidence relating
to the server-side deduplication feature, is relevant to
issues of infringement. Plaintiffs' arguments go to the
weight of this evidence, which is the proper subject of cross
examination. Further, the Court does not find that the
probative value is substantially outweighed by the danger of
misleading the jury or confusing the issues. It is evident
from the briefing that the parties know how to distinguish
server-side deduplication from client-side deduplication, and
these clarifications can be drawn out through
Plaintiffs' motion to exclude portions of the rebuttal
expert report and proposed testimony of Dr. James Kearl (Dkt.
No. 275) is DENIED.
Rule of Evidence 702 permits an expert to testify if: (a) the
expert's scientific, technical, or other specialized
knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony
is based on sufficient facts or data; (c) the testimony is
the product of reliable principles and methods; and (d) the
expert has reliably applied the principles and methods to the
facts of the case. Read together, Rule 702 and Daubert v.
Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993),
broadly require that an expert not only be qualified, but
also that the expert's testimony be reliable and
faced with a challenge to an expert, “[t]he trial judge
must perform a gatekeeping function to ensure that the
expert's proffered testimony” meets this standard.
United States v. Redlightning, 624 F.3d 1090, 1111
(9th Cir. 2010). The role is a flexible one, such that the
judge is afforded “considerable leeway in deciding in a
particular case how to go about determining whether
particular expert testimony is reliable.” Kumho
Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 152 (1999).
do not challenge Dr. Kearl's expertise or argue that his
testimony is unhelpful to the jury. Instead, Plaintiffs argue
Dr. Kearl's testimony should be limited or excluded
because (1) he used forward citation analysis to apportion
the value of the '420 patent; and (2) he relied on the
Fair survey to discount the value of the '420 patent.
Dkt. No. 275 at 8-14. Specifically, Plaintiffs complain that
use of the Fair survey was improper because (a) Dr. Kearl
discounted based on whether client-side deduplication is
enabled; (b) Dr. Kearl did not account for use by IBM; and
(c) Dr. Kearl failed to link the survey period to the damages
period. Id. at 10-14.
first argument questions whether Dr. Kearl's methodology
was reliable. Plaintiffs do not dispute that forward citation
analysis is itself an accepted and reliable methodology for
apportioning the value of a particular patent in a portfolio;
instead, they take issue with its application here.
See Dkt. No. 275 at 8-10; Dkt. No. 324-3 at 1-4.
According to Plaintiffs, when a portfolio involves related
patents that share the same specification and drawings, the
citations to the related patents should be summed, and the
total should be attributed to each patent in ranking them
against others in the portfolio. Dkt. No. 275 at 8-9. This is
because, Plaintiffs argue, patents are cited for their
disclosure, so a citation need only refer to one patent in a
bundle of related patents. Id. Because Dr. Kearl
does not do this, Plaintiffs contend, his opinion is
unreliable. Id. at 8-10. The Court finds that
Plaintiff's complaint goes to the weight and credibility
of Dr. Kearl's opinion, not its reliability.
Specifically, Plaintiffs hone in on a factual assumption-that
the patents in the portfolios relied on by Dr. Kearl are
sufficiently distinct (despite their shared specification and
drawings) that a citation to one does not suffice as a
citation to all. Whether this assumption was accurate in
light of the particular patents in those portfolios is
something that Plaintiffs can explore on cross-examination.
second argument faults Dr. Kearl for relying on the survey
and report prepared by Ms. Fair. As an initial matter, Dr.
Kearl's reliance on this survey evidence does not make
his opinion unreliable because experts in his field would
reasonably rely on that type of data in forming an opinion.
Fed.R.Evid. 703. With respect to the specific complaints that
Plaintiffs raise, the Court finds that each raise issues for
cross-examination that go to the weight, not the
admissibility of Dr. Kearl's opinion. First, the extent
of use of client-side deduplication is at least relevant to
the Georgia-Pacific factor regarding “the
nature of the patented invention, its character in the
commercial embodiment owned and produced by the licensor, and
the benefits to those who use it.” Second, it was
appropriate for Dr. Kearl, as a rebuttal expert, to not
explicitly account for use by IBM because Dr. Akemann,
Plaintiffs' expert, did not opine on use by IBM. Third,
Ms. Fair provided reasons in her report for why she believed
it was more accurate to select a survey period that was
different from the damages period, and Dr. Kearl was entitled
to rely on this expert assessment. Thus, none of these bases
render Dr. Kearl's opinion unreliable.
Plaintiffs' motion to strike Mr. Jacob Drew from
IBM's witness ...