TVIIM, LLC v. McAfee, Inc.

Filing 239

PRETRIAL ORDER by Judge Haywood S. Gilliam, Jr. (terminating 167 Motion in Limine; 233 Stipulation) (ndr, COURT STAFF) (Filed on 7/9/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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TVIIM, LLC,

Case No. 13-cv-04545-HSG
Plaintiff,

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PRETRIAL ORDER

v.

Re: Dkt. Nos. 167, 233

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MCAFEE, INC.,
Defendant.

United States District Court
Northern District of California

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The Court held a pretrial conference in this case on June 30, 2015. The parties

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subsequently filed supplemental briefs and a stipulation regarding outstanding issues, which the

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Court rules on as described below.
Jury Instruction Regarding The Term “Vulnerability.”

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A.

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The Court has reviewed the parties’ briefs regarding their proposed approaches to

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explaining the term “vulnerability” to the jury. See Dkt. Nos. 229, 231. Defendant McAfee, Inc.

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argues that the Court should instruct the jury using specific language from the Court’s claim

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construction order. Dkt. No. 231 at 3. Plaintiff TVIIM, LLC argues that the Court should instruct

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the jury on the plain and ordinary meaning of the term and concedes that the plain and ordinary

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meaning is “exploitable weakness in a computer system,” as advocated by Defendant’s expert Dr.

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Aviel Rubin. Dkt. No. 229 at 1. However, Plaintiff further argues that the Court should exclude

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“discrepancies” from the scope of the meaning of the term “vulnerabilities.” Id.

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The Court agrees with the parties that the jury should be instructed on the plain and

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ordinary meaning of the term “vulnerability,” and further agrees with both parties that this plain

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and ordinary meaning is “exploitable weakness in a computer system.” See Dkt. No. 229 at 1

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(“Plaintiff is amenable to the Court instructing the jury that a ‘vulnerability’ is an ‘exploitable

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weakness,’ as proposed by Defendant[’s] expert Dr. Rubin.”); Dkt. No. 138 at 2-3 (Defendant’s

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Reply in Support of Motion for Summary Judgment of Invalidity) (“As Dr. Rubin’s declaration

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demonstrated, the plain meaning of vulnerability to a person of ordinary skill in the art at the time

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of the claimed invention—in light of the intrinsic evidence—is any ‘exploitable weakness in a

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computer system.’”).

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The Court rejects Plaintiff’s contention that the Court should instruct the jury that the term
“vulnerability” necessarily excludes “discrepancies.” Plaintiff did not raise this point in its claim

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construction arguments. Moreover, the Court finds that the intrinsic evidence does not clearly

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exclude “discrepancies” from the scope of the claim term “vulnerability.” The term “discrepancy”

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does not appear in any of the ’168 Patent claims. And the specification at times uses the terms

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interchangeably, or indicates that a “discrepancy” is a subset of the general category of security

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United States District Court
Northern District of California

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“vulnerabilities.” See, e.g., ’168 Patent 1:11-18 (“The invention described herein relates to a

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method and apparatus for analyzing a computer system and identifying security vulnerabilities,

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and more specifically to a method and apparatus for performing a series of procedures which

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identify security vulnerabilities and discrepancies in the computer system and in some cases

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suggesting and implementing corrective action.”), 3:42-44 (“The system identifies vulnerable

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configurations and, in some situations, provides instruction on how to repair particular

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discrepancies or detected breaches.”) (emphases added).

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Accordingly, the Court is strongly inclined to include the following in both the preliminary

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and concluding jury instructions: “The term ‘vulnerability’ means an exploitable weakness in a

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computer system, and is not limited in scope to pre-existing security problems.” If the parties

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object to this instruction, they must file a one-page statement by July 10, 2015 articulating the

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reasons for any such objection. Plaintiff need not reiterate its claim construction arguments, as

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any objection based on those arguments is deemed preserved for the record.

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B.

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The Court has reviewed the parties’ supplemental briefs regarding the testimony of Eric

Testimony of Eric Knight

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Knight, who will be testifying both as a fact witness and as an expert witness at trial. At the

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pretrial conference, Plaintiff alluded to the potential burden on Mr. Knight resulting from having

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to stay in San Francisco for the duration of the four-day trial at the pretrial conference, see Tr. at
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24:10-13, but Plaintiff does not identify any specific burden in its supplemental brief. See Dkt.

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No. 235. Instead, Plaintiff argues that Defendant’s proposed trial structure is “wildly impractical.”

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Id. at 1.

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The Court finds within its discretion that trial is most effectively structured according to

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the parties’ respective burdens of proof. See Amado v. Microsoft Corp., 517 F.3d 1353, 1358

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(Fed. Cir. 2008) (“District courts . . . are afforded broad discretion to control and manage their

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dockets, including the authority to decide the order in which they hear and decide issues pending

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before them.”). Therefore, trial will proceed as follows:

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First, Plaintiff will present its case-in-chief on infringement and damages. Mr.
Knight would likely be called during this phase of the trial as a fact witness.

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Second, Defendant will present its rebuttal case on infringement and damages, and
its affirmative case on invalidity and inequitable conduct.

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Finally, Plaintiff will present its rebuttal case on invalidity and inequitable conduct.
Mr. Knight would likely be called during this phase of the trial as a fact witness.

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United States District Court
Northern District of California

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The parties will not present reply evidence.
In its motion in limine No. 3, Defendant requests that the Court specifically instruct the

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jury on the distinction between Mr. Knight’s testimony as a fact witness and his testimony as an

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expert witness. As stipulated by the parties, the Court will instruct the jury on expert testimony in

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general. If the need arises during trial, the Court will consider any proposed additional

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instructions regarding Mr. Knight’s dual role as both fact witness and expert witness.

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C.

Jury Materials

On the first day of trial, the parties shall bring ten paper copies of (1) the sample patent

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referenced in the Federal Judicial Center’s (“FJC”) “The Patent Process: An Overview for Jurors”

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video; and (2) asserted U.S. Patent No. 6,889,168. The parties shall also be responsible for

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providing and showing the FJC video on the first day of trial. A jury notebook will be provided to

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the jurors at the conclusion of the trial, for use during deliberations. The specific contents of that

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notebook will be decided at the charging conference.

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D.

Joint Stipulation

The Court otherwise approves the parties’ stipulation filed July 6, 2015. See Dkt. No. 233.
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E.

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Plaintiff shall disclose, by 7:00 p.m. one day in advance, any testimony or evidence it

Potential Sealing of Trial Exhibits and Testimony

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intends to present at trial that refers to (1) the details of the source code for the accused

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functionality in Defendant’s products; or (2) Defendant’s non-public financial information,

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including licensing terms. Plaintiff’s disclosure shall be of sufficient specificity to enable

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Defendant to determine whether it must request the sealing of the testimony or evidence. The

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parties shall make all efforts to present evidence so as to minimize the need to seal the courtroom

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or specific exhibits.

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United States District Court
Northern District of California

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F.

Expert Reports

The parties shall lodge courtesy copies of all expert reports with the Court by close of
business on July 10, 2015.

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G.

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The parties shall appear before the Court at 8:00 a.m. on July 16, 2015 to discuss any

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Trial Schedule

remaining outstanding issues before jury selection begins.
IT IS SO ORDERED.
Dated: July 9, 2015
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

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