Brilliant Instruments, Inc. v. GuideTech, Inc.

Filing 276

ORDER by Judge Claudia Wilken ON ( 251 , 260 ) MOTIONS IN LIMINE AND TRIAL BRIEFS. (ndr, COURT STAFF) (Filed on 3/25/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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GUIDETECH, INC.,

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Plaintiff,

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United States District Court
For the Northern District of California

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ORDER ON MOTIONS
IN LIMINE AND
TRIAL BRIEFS

v.
BRILLIANT INSTRUMENTS, INC.

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No. C 09-5517 CW

(Re: Docket Nos.
251, 260, 261,
262, 267)

Defendant.
________________________________
AND ALL RELATED COUNTERCLAIMS
/

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On March 19, 2014, the Court held a pretrial conference and

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heard arguments regarding the parties’ motions in limine and other

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pretrial motions.

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I.

The Court issues the following rulings:

Motions in Limine

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a.

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No. 1 - Motion to exclude Dr. West’s testimony that “a

Brilliant’s Motions

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processor circuit configured to receive said time signals . . . to

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determine a time interval,” or its equivalent: DENIED.

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inconsistencies in Dr. West’s testimony go to its weight, not to

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its relevance and reliability and may be explored by Brilliant

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through cross-examination.

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Any

No. 2 - Motion to exclude reasonable royalty theory: GRANTED.

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At the hearing, GuideTech represented that it would not be

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pursuing a reasonable royalty theory of damages.

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Nos. 3, 4, 5, 6, 7 - Motion to exclude lost profits theory:
DENIED.

Because GuideTech produced some evidence of its lost

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profits theory during discovery, it would be inappropriate to

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exclude all evidence supporting this theory.

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present evidence it has disclosed to Brilliant and must cite

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before trial where such evidence was disclosed.

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GuideTech may only

No. 8 - Motion to exclude testimony that the relevant market

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is a two-supplier market: DENIED.

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including Ronen Sigura, may offer their percipient knowledge of

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the relevant market.

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somewhat inconsistent statement that GuideTech investigated

United States District Court
For the Northern District of California

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GuideTech’s witnesses,

Brilliant can impeach Sigura with his

whether a third company was a competitor in the relevant market.
No. 9 - Motion to exclude Tabatabaei as an expert witness:

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GRANTED.

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of the ‘231, ‘671, and ‘649 patents, but not one concerning

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infringement; Tabatabaei may not testify as an expert on

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infringement.

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personal knowledge based on his employment with GuideTech during

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the time Brilliant was allegedly infringing.

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Tabatabaei served an expert report only on the validity

However, he may testify about facts of which he has

No. 10 - Motion to exclude evidence supporting permanent

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injunction: DENIED.

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has disclosed to Brilliant that supports its request for a

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permanent injunction.

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issues it may be presented to the jury; if relevant only to the

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injunction request it may be presented to the Court alone.

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request for an injunction will not be alluded to before the jury.

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GuideTech may present any evidence that it

If the evidence is also relevant to jury

The

No. 11 - Motion to exclude evidence of pending or prior legal

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proceedings: GRANTED.

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involving the same parties are not relevant to the patent

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infringement issues in this case.

Proceedings in the state court action

See Fed. R. Evid. 401, 403.
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No. 12 - Motion to exclude documents produced after February

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19, 2014: DENIED.

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fashion and any disorganization was substantially harmless.

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GuideTech also may use Dr. West’s demonstratives at trial, so long

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as they are disclosed before trial and are within the scope of Dr.

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West’s expert report, as GuideTech represents.

GuideTech produced these documents in a timely

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b.

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No. 1 - Motion to exclude reference to Court’s claim

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construction and summary judgment order: GRANTED IN PART.

GuideTech’s Motions

The

United States District Court
For the Northern District of California

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Court’s claim constructions will of course be available for

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purposes of instructing the jury.

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However, the Court’s summary judgment order on infringement

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may not be shared with the jury because any probative value is

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outweighed by the prejudicial effect and danger of confusing the

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issues.

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order is relevant for determining willfulness, i.e., whether “the

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infringer acted despite an objectively high likelihood that its

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actions constituted infringement of a valid patent.”

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Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en

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banc).

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disputed issue regarding literal infringement of the ‘671 and ‘649

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patents, which was affirmed by the Federal Circuit, might be

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probative of whether Brilliant acted willfully.

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jury may decide factual questions underlying the willfulness

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inquiry, the objective aspects of willfulness, which is where the

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Court’s summary judgment order is relevant, is a question that

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must be decided by the Court.

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W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed. Cir.
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Fed. R. Evid. 403.

Brilliant argues the summary judgment

In re

Indeed, the Court’s summary judgment order finding no

But, while the

Bard Peripheral Vascular, Inc. v.

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2012).

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willfulness, there is no need to present the summary judgment

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order to the jury.

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of GuideTech’s infringement case may confuse the jury.

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Because the Court will make the ultimate finding on

Additionally, presenting the Court’s opinion

No. 2 - Unopposed motion to exclude reference to the Federal

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Circuit opinion: GRANTED.

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Federal Circuit’s opinion would be prejudicial and would confuse

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the jury.

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Both parties agree that admitting the

No. 3 - Motion to exclude mention of non-infringement of the

United States District Court
For the Northern District of California

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‘959, ‘767, ‘382, and ‘610 patents: GRANTED.

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originally asserted these patents in the present case, at summary

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judgment GuideTech chose not to pursue them further.

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that GuideTech dropped these patents is not relevant to willful

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infringement of the patents remaining in the suit and further

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would be confusing and unfairly prejudicial.

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Although GuideTech

The fact

No. 4 - Motion to exclude any reference to the invalidity of

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the ‘231, ‘649, and ‘671 patents: GRANTED.

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at summary judgment that Brilliant’s invalidity case was barred by

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assignor estoppel.

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to defend against GuideTech’s doctrine of equivalents case.

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Access Floors, Inc. v. Interface Architectural Res., Inc., 279

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F.3d 1357, 1367, 1369 (Fed. Cir. 2002).

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The Court determined

Brilliant may nevertheless utilize prior art
Tate

No. 5 - Motion to exclude any mention of previously-excluded

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prior art references: DENIED.

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Dr. Kaliski’s report to the extent that it relied on certain prior

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art references for its invalidity opinion expressly stated that

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Dr. Kaliski may rely on the references for other purposes.

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No. 85 at 4.

The Court’s previous order striking

As discussed previously, Dr. Kaliski may only
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Docket

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present opinions that he has properly disclosed in an expert

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report.

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II.

Pretrial Motions

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a.

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As the declaratory judgment defendant, GuideTech moves to

Motion to Realign Parties

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realign the parties so that it is the plaintiff and proceeds first

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at trial.

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"primary purpose" of the litigation to determine, in their

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discretion, whether to realign the parties in accordance with the

In the Ninth Circuit, district courts look to the

United States District Court
For the Northern District of California

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primary dispute in controversy.

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Datamize, LLC, 2003 WL 25841157, at *3 (N.D. Cal.) (citing

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Prudential Real Estate Affiliates, Inc. v. PPR Realty, Inc., 204

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F.3d 867, 873 (9th Cir. 2000)).

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at issue, GuideTech is the sole party bearing the burden of proof

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in this case.

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so that GuideTech is the plaintiff and Brilliant is the defendant.

Plumtree Software, Inc. v.

Because invalidity is no longer

The motion is GRANTED and the parties are realigned

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b.

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Brilliant moves to bifurcate the issue of willfulness from

Motion to Bifurcate Willfulness from Liability

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the issue of infringement.

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no special risk of prejudice here.

Bifurcation would not serve

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the interests of judicial economy.

The motion is DENIED.

Fed. R. Civ. P. 42(b).

The Court sees

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c.

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At claim construction, the Court construed “defined within a

Motion to Clarify Claim Construction

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signal channel” as “contained within a signal channel.”

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No. 137 at 8.

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constructions on appeal and the Federal Circuit accepted the

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Court’s claim constructions in finding a disputed issue of

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infringement based on the above-referenced term.
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Docket

Neither party challenged the Court’s claim

Brilliant

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Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1345 (Fed.

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Cir. 2013).

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claim construction does not include “an embodiment that has a

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measurement circuit that is present in more than one channel.”

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Brilliant contends the Federal Circuit did not consider this

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Court’s reasoning rejecting GuideTech’s proposed construction on

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the basis that it “captures an embodiment that has a measurement

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circuit that is present in more than one channel, which is not

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supported by the claim language, the specification or Figure 1.”

Brilliant now moves to “clarify” that the Court’s

United States District Court
For the Northern District of California

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Docket No. 137 at 7-8.

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however, the Federal Circuit did consider Brilliant’s present

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argument.

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(“Brilliant argues that it cannot infringe because the district

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court, as a matter of claim construction, rejected GuideTech’s

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argument that ‘defined within’ allowed a measurement circuit to be

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present in more than one channel.”).

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nevertheless found a disputed issue as to infringement because

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GuideTech’s evidence showed that, when the accused products

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operate in “One-Channel-Two-Edge mode,” “the only active signal

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path flows from the input to two measurement circuits.”

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Court thus declines to adopt Brilliant’s proposed change because

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it contradicts the Federal Circuit’s application of the Court’s

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claim construction.

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Contrary to Brilliant’s assertion,

See Brilliant Instruments, Inc., 707 F.3d at 1345

The Federal Circuit

Id.

The

IT IS SO ORDERED.
Dated:

3/25/2014

CLAUDIA WILKEN
United States District Judge

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