Grace v. Apple, Inc.

          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 ...