Dolby's MIL
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Requested Relief and Basis for Relief
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MIL 1:
Fourth “AdobeOfferings Chart”
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Dolby need not offer the Fourth Adobe Offerings
Chart into evidence with the prior versions, and
that version is excluded, because Adobe should not
be permitted to take back facts that were
undisputed until the very end of discovery.
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The motion is DENIED. The fourth offerings chart is
admissible evidence in this case, as are all prior
versions of the chart, the deadline for the close of
fact discovery, and Adobe's purported
representations about what Dolby technology was in
Adobe's products. The jury may afford as much
weight to the fourth offerings chart as it deems
appropriate in light of all the evidence.
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MIL 2:
Evidence of Adobe Software Provided for Dolby
Employees' “Personal Use”
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Documents and other evidence regarding versions of
Adobe software products allegedly provided to
certain Dolby employees for “personal
use” are not relevant or admissible evidence.
(Fed. R. Evid. 401, 403.)
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The motion is DENIED. The proffered evidence is
circumstantial evidence regarding the knowledge of
Dolby employees who, at the time they purportedly had
access to Adobe products for “personal use,
” were representing Dolby in its business
relationship with Adobe. Insofar as the evidence may
be prejudicial to Dolby, it is not unduly so, and
thus, exclusion of all such evidence is not
warranted.
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MIL 3:
Christian Tregillis Testimony Regarding the Audit
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Mr. Tregillis' testimony regarding third-party
Connor Consulting's attempted audit of
Adobe's royalty payments to Dolby is based on
“observations” only; because he has no
opinions regarding the subject, he cannot provide
admissible testimony. (Fed. R. Evid. 401, 402,
702.)
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As an initial matter, the parties may not violate
this Court's standing order by stipulating to
reserve arguments for motions in limine that should
be brought in Daubert motions. Dolby should have
raised the arguments set forth in this motion in
Dolby's Daubert motion regarding Mr. Tregillis.
Thus, on this basis alone, Court is inclined to deny
the motion as untimely. Further, to the extent this
motion raises arguments already raised in Dolby's
Daubert motion, this motion is an improper motion for
reconsideration. That said, the motion appears to
have some measure of merit and, accordingly, is
DENIED IN PART, AND GRANTED IN PART.
As this Court held in its order on the Daubert
motions and has previously articulated, reports
themselves are not admissible. Insofar as Mr.
Tregillis summarizes Mr. Meyer's opinions or
other admissible evidence in paragraphs 160-164 of
his rebuttal report, he is permitted to testify to
those opinions to the extent they actually rebut
opinions offered by Mr. Meyer during trial.
Further, insofar as the evidence referenced in
paragraphs 190-206 is admitted through an
appropriate source, Mr. Tregillis can rely on the
same for his opinion in paragraphs 207-208. He
himself though cannot attest to the same. The same
is true of the evidence referenced in paragraphs
209-220 and 223-237.Mr. Tregillis' opinion
testimony may be solicited by way of hypotheticals
(i.e. assuming certain testimony exists or is found
to be true) or by establishing the foundation for
an expert opinion on a particular topic (i.e. how
royalty audits are performed and the standards that
govern such audits) and then soliciting the opinion
on the same with reference to the basis (again,
assuming the evidence is in the record).
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MIL 4:
Evidence of Over payments by Adobe Before Proof of
Certain Preliminary Facts
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Adobe cannot introduce evidence of alleged
overpayments unless and until Adobe provides that
it requested a refund or took other action to
obtain a credit before the next quarterly payment
was due which is a required precondition under the
contract. (Fed. R. Evid. 401, 104(b).)
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The motion is DENIED. The Court is not persuaded that
there was a “condition precedent” to the
refund of any overpayment. Even if there was,
however, the proffered evidence is relevant to the
issue of damages. The jury is entitled hear such
relevant evidence, which may support Adobe's
position regarding overpayment, and weigh that in
light of the totality of the evidence.
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MIL 5:
Evidence of Dolby's Annual Licensing Revenues
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Dolby's annual revenues from its overall
licensing program have no relevance to this case
and the monetary consequences of Adobe's
breaches of contract and infringement. (Fed. R.
Evid. 401, 402, 403.)
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The motion is GRANTED WITHOUT PREJUDICE to Adobe
introducing this evidence on cross-examination after
asking for and receiving permission from the Court at
the time of trial. Although evidence that Dolby
receives a portion of its revenue from licensing may
be relevant to the issues in this case, the Court
anticipates that the likelihood of prejudice from
introducing specific revenue figures may outweigh any
relevance. The balancing of these issues depends on
the parties' positions at trial and the testimony
of their witnesses, hence the need to discuss the
issue in advance with the Court.
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MIL 6:
Evidence of Prejudgment Interest
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The Court should exclude any reference during the
jury trial to prejudgment interest as this will be
applied to the judgment by the Court after the jury
enters its verdict. (Fed. R. Evid. 401, 402, 403.)
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The motion is DENIED. At the Pretrial Conference,
Dolby represented that it was seeking prejudgment
interest based on a contractual, rather than
statutory, rate. As such, evidence of prejudgment
interest is relevant and admissible.
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MIL 7:
Evidence of Other Audits
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Dolby's audits of other third-party licensees
are entirely irrelevant to this case where the only
relevant audit is the audit of Adobe. (Fed. R.
Evid. 401, 402, 403.)
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The motion is DENIED WITHOUT PREJUDICE to Dolby
reasserting the objection at the time of trial on the
basis of relevance or under Rule 403. Although the
minute details of Dolby's audits of third-party
licensees appear irrelevant to this case, depending
on the parties' positions at trial and the
testimony offered by their witnesses, aspects of the
proffered evidence may be relevant to the credibility
of the persons testifying and whether Dolby breached
the covenant of good faith and fair dealing when
performing its audit of Adobe in 2015.
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MIL 1:
Adobe's Revenues and Form 10-Ks
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Motion to exclude any evidence, inquiry, or
argument regarding Adobe's Form 10-Ks,
including Dolby's use of the securities filings
as a vehicle to discuss either Adobe's revenues
or profits. (Fed. R. Evid. 402, 403.)
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The motion is GRANTED IN PART and DENIED IN PART.
Adobe's Form 10-Ks can be admitted without an
authenticating witness. Whether the Form 10-Ks
ultimately are admitted at trial, however, depends on
their relevance, which, in turn, depends on
Adobe's posture at trial. That is, portions of
the proffered evidence are potentially relevant to a
defense that the alleged damages are unreasonable and
to the use of the words “consumer” and
“professional.” As such, the motion is
GRANTED. The motion is otherwise DENIED WITHOUT
PREJUDICE to Adobe reasserting the objection at the
time of trial on the basis of relevance. Further, for
purposes of trial, Dolby shall sub-designate only
those portions of the Form 10-Ks that it intends to
use. Unless the Court is convinced otherwise, the
Form-10Ks will not be admitted in their entirety and
should used to address issues specifically raised
during the trial.
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MIL 2:
Extrinsic Evidence to Construe the Creative Cloud
Letter
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Motion to prohibit Dolby from introducing or
relying on any extrinsic evidence to support its
position on the meaning of the Creative Cloud
Letter. (Fed. R. Evid. 401, 403; Court's
instruction at the Pre-Summary Judgment Conference
on July 8, 2019.)
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The motion is DENIED. Under California law, if a
Court decides, “after considering th[e]
evidence, that the language of a contract, in light
of all the circumstances, is ‘fairly
susceptible of either one of the two interpretations
contended for,' extrinsic evidence relevant to
prove either of such meanings is admissible.”
Pac. Gas & Elec. Co. v. G. W. Thomas Drayage
& Rigging Co., 69 Cal. 2d 33, 40 (1968) (en banc)
(citations omitted). Here, in its order on the
parties' cross-motions for summary judgment, the
Court found that the Creative Cloud Letter is
ambiguous. Thus, extrinsic evidence of its meaning is
admissible.
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MIL 3:
Adobe's IP Licenses and Audits of Adobe's
Licensees
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Motion to exclude Dolby from referencing or
offering any evidence regarding Adobe's IP
licenses, including Adobe's terms of use for
purposes of interpreting the license agreements and
audit clause at issue here, and Adobe's audits
of its licensees, including any testimony on these
topics by Mr. Conroy Shum and Mr. Joe Perry, for
the purpose of arguing whether Adobe complied with
its contractual obligations to provide the
information called for by the Dolby audit at issue
in this case. (Fed. R. Evid. 401, 403.)
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The motion is DENIED WITHOUT PREJUDICE to Adobe
reasserting the objection at the time of trial on the
basis of relevance or under Rule 403. The Court's
decision with respect to this motion parallels its
decision with respect to Dolby's motion in limine
number 7. Although the minute details of third-party
licenses and audits appear irrelevant to this case,
depending on the parties' positions at trial and
the testimony offered by their witnesses, aspects of
the proffered evidence may be relevant to Adobe's
credibility and consistency with respect it being
audited by Dolby in 2015. The Court is not persuaded
that admission of this evidence, including Mr.
Shum's or Mr. Perry's testimony, would be so
confusing to the jury as to warrant exclusion.
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MIL 4:
Extrinsic Evidence Regarding Meaning of Terms
“Professional” and
“Consumer”
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Motion to exclude Dolby from offering extrinsic
evidence regarding the meaning of the terms
“professional” and
“consumer” in the parties'
contracts, including from Adobe's Forms 10-K.
(Fed. R. Evid. 402, 403.)
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The motion is GRANTED IN PART and DENIED IN PART for
the same reasons as Adobe's motion in limine
number 1, with which there is significant overlap.
Specifically, Adobe's Form 10-Ks cannot be
admitted in their entirety, but relevant portions can
be admitted, without an authenticating witness, as
extrinsic evidence regarding the meaning of ambiguous
terms in the parties' contracts. Insofar as the
Court DENIES the motion, however, it does so WITHOUT
PREJUDICE to Adobe reasserting the objection at the
time of trial on the basis of relevance. Further, the
Court again advises Dolby that any portions of
Adobe's securities filings that it intends to use
at trial must be sub-designated.
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MIL 6:
Testimony by Undisclosed Witnesses and Documents
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Motion to exclude (1) testimony by Dolby witness
James Cowdery, (2) testimony by an unidentified
“Representative of Main Concept GmbH”
or “Representative of Brambles NSD,
Inc.”;and(3)written materials concerning Main
Concept that Dolby failed to produce in discovery,
including emails and documentary evidence. (Fed. R.
Civ. P. 26, 37.)
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The motion is GRANTED IN PART and DENIED IN PART.
Insofar as the motion seeks to exclude the proffered
witnesses based upon alleged delay in disclosure, it
is denied because Adobe's own litigation strategy
resulted in any delayed rebuttal testimony.
Relatedly, with respect to the purportedly
undisclosed documents related to Main Concept, the
motion is DENIED. Without a clear articulation of
one's legal position, a party is not required to
disclose that which is does not know is relevant.
Further, Adobe did not pursue discovery of document
produced by Dolby pursuant to Request for Production
No. 24.
However, Dolby misinterprets this Court's order
requiring identification of trial witnesses.
Surprises at trial are not welcome. If a witness is
anticipated, regardless of whether a trial subpoena
may need to issue, the witness should be
identified. Failure to do so risks exclusion. The
Court will grant a motion to exclude a witness who
is not identified according to the schedule set
forth at the Pretrial Order No. 3.
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MIL 7:
Rebuttal Experts in Dolby's Case-In-Chief
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Motion prohibiting Dolby from introducing any
testimony or evidence from its designated rebuttal
experts, John. M. Strawn and Lorin M. Hitt, during
its case in chief. (Fed. R. Evid. 611.)
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The motion is DENIED as to Dr. Strawn. Any delay in
Dolby's disclosure of Dr. Strawn as its technical
expert in large part was due to Adobe's own
litigation strategy. Moreover, as the Court found in
its order on the parties' Daubert motions,
“Adobe has had a full and fair opportunity to
rebut [Dr. Strawn's] opinions through Ronald
Schnell's expert report.”
At the Pretrial Conference on December 20, 2019,
both parties stipulated to withdraw their
respective industry experts: Dr. Kursh for Adobe,
and Dr. Hitt for Dolby. Accordingly, this portion
of the motion is DEEMED WITHDRAWN.
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MIL 8:
Metrics Relating to Dolby Digital Plus Technology
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Motion excluding any evidence, inquiry, or argument
relating to the use of metrics relating to Dolby
Digital Plus technology (including metrics such as
royalty rates and revenues) as a basis for
calculating metrics, including royalty rates or
hypothetical royalty rates, relating to Dolby
Digital technology. (Fed. R. Evid. 403.)
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The motion is DENIED as untimely. With this motion,
Adobe challenges the basis for the calculations
performed by Dolby's damages expert, Mr. Meyer.
This argument should have been raised at the Daubert
motion stage when Adobe sought to exclude portions of
Mr. Meyer's expert testimony on related grounds.
Moreover, Adobe's arguments go to the weight the
jury may afford to Mr. Meyer's testimony and are
not grounds for exclusion of the proffered evidence.
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MIL 9:
Dolby Digital Patents Not Disclosed During
Discovery
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Motion excluding any evidence or argument about any
Dolby patents that were not disclosed during
discovery. (Fed. R. Evid. 403; Fed.R.Civ.P. 37.)
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The motion is DENIED WITHOUT PREJUDICE to Adobe
reasserting the objection at the time of trial on the
basis of relevance and under Rule 403. Adobe has not
substantiated its argument for exclusion based on
Dolby's alleged failure to disclose during
discovery. Further, although the Court cannot
determine the relevance of the proffered evidence at
this juncture, depending on the parties'
positions at trial, the evidence may be relevant to
rebut an argument by Adobe regarding the expiration
of certain Dolby patents.
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MIL 10:
Testimony from Chris Choi on AICPA Standards,
Adobe's Provision of Information, and the
Parties' State of Mind.
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Motion to exclude any references, evidence,
inquiry, or argument from Dolby's expert
witness, Chris Choi, on(1) Conner Consulting's
performance of its audit pursuant to AICPA
standards, (2) Adobe's alleged failure to
provide certain information during the audit, and
(3) the parties' state of mind as to the audit.
(Fed. R. Evid. 401, 402, 403, 701, 702.)
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The motion is GRANTED IN PART and DENIED IN PART. As
discussed with respect to Dolby's motion in
limine number 3, the parties may not violate this
Court's standing order by stipulating to reserve
arguments for motions in limine that should be
brought in Daubert motions. Although the motion
therefore is untimely, given that the parties
essentially challenge the admissibility of all expert
testimony regarding auditing, the Court nevertheless
addresses the motion on the merits.
Specifically, the motion is GRANTED with respect to
Mr. Choi's testimony regarding the parties'
state of mind, which generally is not an
appropriate subject for expert testimony. The
motion is DENIED, however, with respect to Mr.
Choi's testimony regarding AICPA standards and
Adobe's alleged failure to cooperate during the
audit. Mr. Choi's testimony on these topics
goes to the weight of the evidence and therefore is
admissible.
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MIL 11:
Copyright Damages from Extraterritorial
Infringement or Exploitation of Asserted Works
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Motion to exclude any references, evidence,
inquiry, or argument, in connection with
Dolby's claim for copyright damages, relating
to any Adobe offerings licensed outside the United
States or for use outside the United States. (Fed.
R. Evid. 401, 402.)
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The motion is DENIED. As with motion in limine number
8, Adobe's motion presents arguments regarding
extraterritorial damages that it should have raised
in its Daubert motion with respect to Dolby's
damages expert, Mr. Meyer. The motion therefore is
untimely. Additionally, Dolby argues that it cannot
allocate damages for enterprise term license
agreements including non-U.S. licenses because only
Adobe has the necessary information to perform such
an allocation. At the Pretrial Conference, Adobe
failed to rebut this argument.
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MIL 12:
Exhibits from the Expert Rebuttal Report of John
Strawn
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Motion to exclude attachments to the Expert
Rebuttal Report of John Strawn. (Fed. R. Evid. 801,
802, 402, 403.)
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The motion is GRANTED IN PART and DENIED IN PART.
With respect to exhibits that summarize Dr.
Strawn's analysis of Adobe's products for
evidence that Dolby's copyrighted source code was
contained therein, namely Dolby1765 and Dolby1766,
are admissible insofar as they present, in list form,
a list of Dr. Strawn's technical findings.
However, other portions of those documents that do
not serve this purpose, such as the first paragraphs
of Dolby1765, are inadmissible. Dolby may either
sub-designate two new exhibits or replace the
exhibits with annotated versions. With respect to
exhibits that contain publicly-available third-party
source code, namely Dolby1767, Dolby1768, Dolby1769,
Dolby1770, Dolby1771, Dolby1772, and Dolby1773are
admissible as long as Dr. Strawn authenticates and
lays a foundation for each. The publicly-available
research materials, namely Dolby1764 and Dolby1774,
do not appear admissible as exhibits themselves
although it is possible that Dr. Strawn may have
relied upon them for purposes of his analysis.
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MIL 13:
“May-Call” Witnesses in Case-In-Chief
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Motion prohibiting Dolby from calling
“may-call” witnesses listed on its
pre-trial fact witness disclosures in its
case-in-chief. (Fed. R. Evid. 403, 611.)
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The motion is GRANTED IN PART and DENIED IN PART,
largely for the same reasons as Adobe's motion in
limine number 6. Specifically, Dolby appears to have
complied with the Court's standing order insofar
as it sets a deadline for disclosure of
“likely” witnesses.
However, as discussed, if a witness is anticipated,
regardless of whether a trial subpoena may need to
issue, the witness should be identified based on
the schedule set forth at the Pretrial Order No. 3.
Failure to timely identify any witness to be called
risks exclusion.
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MIL 14:
Schedules Appended to Dolby's Damages
Expert's Reports
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Motion to exclude the schedules appended to
Dolby's damages expert's opening and
rebuttal reports, plus updates, revisions, and
other appendices and attachments to such damages
reports, on the ground that they are not admissible
under Fed.R.Evid. 1006.
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The motion is DENIED WITHOUT PREJUDICE to Adobe
renewing the objection at the time of trial on the
basis of a lack of foundation. The schedules Adobe
seeks to exclude summarize and provide the underlying
data for the opinions of Dolby's damages expert,
Mr. Meyer, and thus may be admissible under Federal
Rule of Evidence 1006, which permits use of a
“summary, chart, or calculation to prove the
content of voluminous writings[.]” The
alternative, that is, requiring the jury to note or
remember all of the data underlying Mr. Meyer's
damages calculation, would impede the fair, orderly,
and efficient trial of the case. See Davis & Cox
v. Summa Corp., 751 F.2d 1507, 1516 (9th Cir. 1985)
(purpose of FRE 1006 is to “allow the use of
summaries when the documents are unmanageable or when
the summaries would be useful to the judge and
jury”). Insofar as the schedules are
admissible, the underlying data for the schedules
also is admissible because it is necessary to
authenticate the numbers set forth in the schedules.
For the documents to be admitted, however, Mr. Meyer
must lay a proper foundation for their admission.
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