United States District Court, N.D. California, San Jose Division
ORDER RE: MOTIONS IN LIMINE RE: DKT. NOS. 334, 335,
336, 337, 338, 339
LUCY
H. KOH UNITED STATES DISTRICT JUDGE.
Before
the Court are the motions in limine of Apple, Inc.
(“Apple”), [1] ECF Nos. 334, 335, 336; and the motions
in limine of Plaintiffs, ECF No. 337, 338, 339. After
reviewing the parties' briefing, the case law, and the
record in this case, and balancing the considerations set
forth in Federal Rule of Evidence 403, the Court rules as
follows:
Apple's
Motions in Limine (“MIL”)
MIL
# 1: Apple seeks to exclude all evidence and testimony
regarding prior patent infringement lawsuits and verdicts
against Apple.[2] ECF No. 334. Plaintiffs oppose. ECF No.
345.
RULING:
GRANTED. Specifically, the Court rules as follows.
Apple
argues that evidence and testimony concerning prior patent
infringement lawsuits and verdicts against Apple should be
excluded. The only patent infringement lawsuits and verdicts
that Plaintiffs suggest are relevant consist of a previous
patent infringement lawsuit filed by VirnetX, Inc.
(“VirnetX Action”) in the Eastern District of
Texas on August 11, 2010, VirnetX, Inc. v. Apple,
Inc., No. 10-cv-00417 (E.D. Tex.). ECF No. 334 at 5.
However, if Plaintiffs open the door to this litigation, then
Apple will be allowed to respond with all of the patent
disputes between the parties. Id. According to
Apple, evidence and testimony concerning the VirnetX Action
is not “necessary to relate the allegations that form
the basis of [Plaintiffs'] claims.” Id.
Further, Apple claims that the parties' patent disputes
include four district court trials and three appeals, as well
as inter partes reexaminations by the United States
Patent and Trademark Office and appeals from those
proceedings (the “VirnetX Litigation”).
Id. Moreover, the 2012 trial verdict on which
Plaintiffs are focused was vacated by the Federal Circuit,
and some of the appeals between the parties are still
pending, which further undermines the probative value of the
VirnetX Litigation information. Id. at 4. Thus,
delving into the VirnetX Litigation would require a
“side trial.” Id. Such a side trial
would risk “misleading and confusing the jury.”
Id. Plaintiffs, by contrast, assert that Apple need
not delve into the procedural history of the VirnetX
Litigation because the ultimate resolution of the appeals
does nothing to negate Apple's motives in breaking
FaceTime or lessen the harm Apple caused to its own
customers. ECF No. 345 at 3.
Under
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.”
Fed.R.Evid. 401. Under this standard, evidence and testimony
concerning the VirnetX Litigation may be relevant, but only
as background information.
Plaintiffs
themselves concede that the VirnetX Action would only serve
as background information: Plaintiffs “do[] not assert
any patent or patent-based claims against Apple (or anyone
else), nor does this action require any review,
reconsideration or re-litigation of the patent claims at
issue in the VirnetX Action. Further, the findings in the
VirnetX Action with respect to Apple's patent
infringement in no way dictate the outcome of this
action. Rather, the findings of patent infringement
referred to herein merely constitute background
facts comprising part of the sequence of events that
caused Apple to break FaceTime for users running iOS 6 and
earlier operating systems.” ECF No. 36 ¶ n.16
(emphasis added).
“Evidence
which is essentially background in nature . . . is
universally offered and admitted as an aid to
understanding” pursuant to Federal Rule of Evidence
401. Fed.R.Evid. 401 (advisory committee notes). However,
evidence that is primarily background in nature may still be
excluded “on the basis of such considerations as waste
of time and undue prejudice, ” under Federal Rule of
Evidence 403. Id. Federal Rule of Evidence 403
allows the Court to exclude relevant evidence if its
probative value is “substantially outweighed by the
danger of unfair prejudice, confusion of the issues, or
misleading the jury.” Fed.R.Evid. 403.
In the
instant case, evidence and testimony concerning the VirnetX
Litigation is of minimum probative value because it merely
constitutes “background facts” that underlie the
instant case. ECF No. 36 ¶ n.16; United States v.
Boros, 668 F.3d 901, 908 (7th Cir. 2012) (“Yet
because background evidence about ancillary matters has only
marginal relevance, it is more susceptible to exclusion under
Rule 403's balancing of prejudice and probative
value.”); Williams v. Sec. Nat'l Bank, 358
F.Supp.2d 782, 801 (N.D. Iowa 2005) (noting that evidence has
“slight probative value as background
information”); see also Kakkis v. Provident Mut.
Life Ins. Co. of Phil., No. CV 00-08297 DDP (JWJx), 2002
WL 34357203, at *2 (C.D. Cal. Oct. 7, 2002) (excluding
“evidence of verdicts or judgments in other
cases” when evidence had “minimum probative
value” under Federal Rule of Evidence 403).
On the
other hand, the VirnetX Litigation “would likely have a
significant improper influence on the jury's
determination of the issues in this case.”
Whitewater West Indus., Ltd. v. Pac. Surf Designs,
Inc., 3:17-cv-01118-BEN-BLM, 2019 WL 2211897, at *4
(S.D. Cal. May 22, 2019). Indeed, a “jury is likely to
give a prior verdict against the same defendant more weight
than it warrants. The admission of a prior verdict creates
the possibility that the jury will defer to the earlier
result and thus will, effectively, decide a case on evidence
not before it.” United States v. Kealoha, CR.
NO. 17-00582 JMS-WRP, 2019 WL 2620004, at *5 (D. Haw. June
26, 2019) (internal quotation marks and citation omitted);
see also Engquist v. Or. Dep't of Agr., 478 F.3d
985, 1009 (9th Cir. 2007) (“Commentators agree that
most courts forbid the mention of verdicts or damage amounts
obtained in former or related cases.” (citations
omitted)).
Moreover,
evidence and testimony concerning the VirnetX Litigation
“is likely to give rise to time-consuming tangents
about the merits of those trials.” Marez v.
Bassett, CV 06-0118 ABC (RCx), 2011 WL 13213813, at *3
(C.D. Cal. Oct. 3, 2011). This is particularly so in light of
the fact that the procedural history of the VirnetX
Litigation, which involves four district court trials and
three appeals, as well as inter partes
reexaminations by the United States Patent and Trademark
Office and appeals of those proceedings, is complex and
long-running. Moreover, the 2012 trial verdict on which
Plaintiffs are focused was vacated by the Federal Circuit,
and some of the appeals between the parties are still
pending, which further undermines the probative value of the
VirnetX Litigation information.
The
Court finds that the probative value of the prior patent
infringement lawsuits and verdicts is minimal and is
substantially outweighed by a danger of unfair prejudice,
confusing the issues, misleading the jury, undue delay, and
wasting time. The Court will not have a side trial on patent
infringement and validity proceedings. Therefore, the Court
GRANTS Apple's request to exclude all evidence and
testimony regarding prior patent infringement lawsuits and
verdicts against Apple. Instead, Plaintiffs may argue that
Apple allegedly “broke” FaceTime to reduce
Apple's patent royalty payments.
MIL
# 2: Apple seeks to exclude all evidence or argument
concerning the content of Apple's advertising and
marketing of its FaceTime product. ECF No. 335. Plaintiffs
oppose. ECF No. 346.
RULING:
DENIED. Specifically, the ...