United States District Court, N.D. California
ORDER ON MOTIONS IN LIMINE AND OTHER PRETRIAL MOTIONS
RE: DKT. NOS. 613, 614, 615, 617, 624, 625, 626, 627, 628,
631, 637, AND 657
ILLSTON UNITED STATES DISTRICT JUDGE
16, 2019, the Court held a final pretrial conference in the
above-captioned matter. The following motions were resolved:
Motions in Limine
parties both filed five motions in limine (MIL).
Dkt. Nos. 613, 614, 615, 617, 624, 625, 626, 627, 628, and
631. After consideration of the arguments made in the briefs,
the Court rules as follows:
MIL No. 1 (Dkt. No. 613) to preclude references to
prior litigation firm or counsel. GRANTED. The Court finds
that reference to prior litigation firms or counsel, and
specifically to Mr. Freitas, is not relevant to the issue of
liability or damages and is unduly prejudicial to MLC.
MIL No. 2 (Dkt. No. 617) to preclude arguments
regarding claim construction. GRANTED. The parties are
precluded from arguing claim construction to the jury.
Further, testimony that contradicts the Court's Claim
Construction Order or that comments on the reasoning behind
the Court's construction will not be allowed. However,
the parties are permitted to give context to claim language
to assist the jury in its understanding of the claim
MIL No. 3 (Dkt. No. 615) to exclude derogatory
characterizations of plaintiff or its representatives.
GRANTED. MLC seeks to exclude Micron from introducing
evidence or seeking testimony related to: (1) Mr.
Hinckley's status with the California State Bar and (2)
any reference to MLC as a “patent troll” or
similar derogatory term. Micron will not be allowed to seek
testimony as to Mr. Hinckley's status with the California
State Bar, nor will it be allowed to refer to MLC as a
“patent troll” or similar pejorative term. The
Court finds both categories of testimony to have little
probative value and to be unduly prejudicial to MLC. However,
Micron will be permitted to use more neutral terms such as
“non-practicing entity” when referring to MLC.
MIL No. 4 (Dkt. No. 631) to exclude evidence and
argument that the accused products practice, embody or use
Micron and/or third-party patents, or are otherwise licensed.
DENIED. The Court finds that evidence of Micron's
practice of their own patents and third-party patents to be
helpful to the trier of fact because they will be tasked with
assessing the value of what is covered by the asserted claim
relative to what is not in the Accused Products. The Court is
not convinced that permitting such testimony would result in
jury confusion. The burden is on MLC to show that the Accused
Products have features that infringe the '571 patent
despite its also having features that do not infringe and
that may be covered by other patents.
MIL No. 5 (Dkt. No. 614) to exclude a practicing the
prior art defense. DENIED. Micron concedes that
“practicing the prior art” is not a permissible
defense to infringement and Micron does not intend to raise
it at trial. Dkt. No. 651 at 1. In particular, Micron agrees
not to argue “that (1) it does not infringe because the
accused product practices the prior art or that (2) the
patent is invalid because the prior art is identical to the
accused product.” Id. Micron will be permitted
to discuss the prior art (e.g., the VLSI and Connolly
references) to show, for example, that the Accused Products
do not satisfy a specific element of the asserted claim.
MIL No. 1 (Dkt. No. 624) to preclude mention of PTO
challenges. GRANTED. Neither party will be allowed to mention
any post-issuance proceedings at the USPTO, past or pending,
for risk of jury confusion. See Dkt. No. 600
(excluding Mr. McAlexander from testifying about the pending
ex parte reexamination of the '571). However,
MLC is permitted to offer testimony of prior art considered
by the USPTO after issuance of the '571 patent and of
communications to and from the USPTO incident to such
consideration, but there will be no mention of particular
proceedings to the jury.
MIL No. 2 (Dkt. No. 625) to preclude Mr.
Epstein's factual testimony. DENIED IN PART. Mr. Epstein
may not testify to communications or activities during the
period of the NDA. The Court notes is doubtful that Mr.
Epstein's pre- and post-NDA communications would be
admissible at trial. Therefore, if MLC wishes to introduce
any testimony relating to Mr. Epstein's communication
with Micron, it must seek Court approval with an offer of
proof before doing so.
MIL No. 3 (Dkt. No. 626) to preclude certain
irrelevant and prejudicial evidence. GRANTED in part and
DENIED in part. With respect to evidence of discovery
disputes and insinuation or allegations of spoliation, the
motion is GRANTED. With respect to evidence of the size of
Micron's business, the motion is DENIED. The size of
Micron's business may be relevant to, inter
alia, a reasonable royalty analysis. However, the Court
will require MLC to make an offer of proof regarding this
aspect of testimony. With respect to referencing multi-level
memory products as “MLC” products, the motion is
MIL No. 4 (Dkt. No. 627) to preclude certain aspects
of Dr. Lee's testimony. DENIED. The Court finds the
statements Dr. Lee made in his declaration in support
MLC's Opposition to Micron's Motion for Summary
Judgment (Dkt. No. 565-9) to be sufficiently supported by his
expert report and deposition testimony.
MIL No. 5 (Dkt. No. 628) to preclude certain
irrelevant, prejudicial, and improper testimony. GRANTED. The
Court excludes from trial (1) Mr. Fisher's deposition
testimony in an unrelated case, (2) Mr. Muir's
declaration concerning communications to Micron, and (3)
testimony of Mr. Epstein and Mr. Hinckley regarding pre-suit
notice as inadmissible hearsay. Further, the Court finds the