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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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 GUIDETECH, INC., 5 Plaintiff, 6 7 United States District Court For the Northern District of California 10 ORDER ON MOTIONS IN LIMINE AND TRIAL BRIEFS v. BRILLIANT INSTRUMENTS, INC. 8 9 No. C 09-5517 CW (Re: Docket Nos. 251, 260, 261, 262, 267) Defendant. ________________________________ AND ALL RELATED COUNTERCLAIMS / 11 12 On March 19, 2014, the Court held a pretrial conference and 13 heard arguments regarding the parties’ motions in limine and other 14 pretrial motions. 15 I. The Court issues the following rulings: Motions in Limine 16 a. 17 No. 1 - Motion to exclude Dr. West’s testimony that “a Brilliant’s Motions 18 processor circuit configured to receive said time signals . . . to 19 determine a time interval,” or its equivalent: DENIED. 20 inconsistencies in Dr. West’s testimony go to its weight, not to 21 its relevance and reliability and may be explored by Brilliant 22 through cross-examination. 23 Any No. 2 - Motion to exclude reasonable royalty theory: GRANTED. 24 At the hearing, GuideTech represented that it would not be 25 pursuing a reasonable royalty theory of damages. 26 27 28 Nos. 3, 4, 5, 6, 7 - Motion to exclude lost profits theory: DENIED. Because GuideTech produced some evidence of its lost 1 profits theory during discovery, it would be inappropriate to 2 exclude all evidence supporting this theory. 3 present evidence it has disclosed to Brilliant and must cite 4 before trial where such evidence was disclosed. 5 GuideTech may only No. 8 - Motion to exclude testimony that the relevant market 6 is a two-supplier market: DENIED. 7 including Ronen Sigura, may offer their percipient knowledge of 8 the relevant market. 9 somewhat inconsistent statement that GuideTech investigated United States District Court For the Northern District of California 10 11 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: 12 GRANTED. 13 of the ‘231, ‘671, and ‘649 patents, but not one concerning 14 infringement; Tabatabaei may not testify as an expert on 15 infringement. 16 personal knowledge based on his employment with GuideTech during 17 the time Brilliant was allegedly infringing. 18 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 19 injunction: DENIED. 20 has disclosed to Brilliant that supports its request for a 21 permanent injunction. 22 issues it may be presented to the jury; if relevant only to the 23 injunction request it may be presented to the Court alone. 24 request for an injunction will not be alluded to before the jury. 25 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 26 proceedings: GRANTED. 27 involving the same parties are not relevant to the patent 28 infringement issues in this case. Proceedings in the state court action See Fed. R. Evid. 401, 403. 2 1 No. 12 - Motion to exclude documents produced after February 2 19, 2014: DENIED. 3 fashion and any disorganization was substantially harmless. 4 GuideTech also may use Dr. West’s demonstratives at trial, so long 5 as they are disclosed before trial and are within the scope of Dr. 6 West’s expert report, as GuideTech represents. GuideTech produced these documents in a timely 7 b. 8 No. 1 - Motion to exclude reference to Court’s claim 9 construction and summary judgment order: GRANTED IN PART. GuideTech’s Motions The United States District Court For the Northern District of California 10 Court’s claim constructions will of course be available for 11 purposes of instructing the jury. 12 However, the Court’s summary judgment order on infringement 13 may not be shared with the jury because any probative value is 14 outweighed by the prejudicial effect and danger of confusing the 15 issues. 16 order is relevant for determining willfulness, i.e., whether “the 17 infringer acted despite an objectively high likelihood that its 18 actions constituted infringement of a valid patent.” 19 Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en 20 banc). 21 disputed issue regarding literal infringement of the ‘671 and ‘649 22 patents, which was affirmed by the Federal Circuit, might be 23 probative of whether Brilliant acted willfully. 24 jury may decide factual questions underlying the willfulness 25 inquiry, the objective aspects of willfulness, which is where the 26 Court’s summary judgment order is relevant, is a question that 27 must be decided by the Court. 28 W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed. Cir. 3 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. 1 2012). 2 willfulness, there is no need to present the summary judgment 3 order to the jury. 4 of GuideTech’s infringement case may confuse the jury. 5 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 6 Circuit opinion: GRANTED. 7 Federal Circuit’s opinion would be prejudicial and would confuse 8 the jury. 9 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 10 ‘959, ‘767, ‘382, and ‘610 patents: GRANTED. 11 originally asserted these patents in the present case, at summary 12 judgment GuideTech chose not to pursue them further. 13 that GuideTech dropped these patents is not relevant to willful 14 infringement of the patents remaining in the suit and further 15 would be confusing and unfairly prejudicial. 16 Although GuideTech The fact No. 4 - Motion to exclude any reference to the invalidity of 17 the ‘231, ‘649, and ‘671 patents: GRANTED. 18 at summary judgment that Brilliant’s invalidity case was barred by 19 assignor estoppel. 20 to defend against GuideTech’s doctrine of equivalents case. 21 Access Floors, Inc. v. Interface Architectural Res., Inc., 279 22 F.3d 1357, 1367, 1369 (Fed. Cir. 2002). 23 The Court determined Brilliant may nevertheless utilize prior art Tate No. 5 - Motion to exclude any mention of previously-excluded 24 prior art references: DENIED. 25 Dr. Kaliski’s report to the extent that it relied on certain prior 26 art references for its invalidity opinion expressly stated that 27 Dr. Kaliski may rely on the references for other purposes. 28 No. 85 at 4. The Court’s previous order striking As discussed previously, Dr. Kaliski may only 4 Docket 1 present opinions that he has properly disclosed in an expert 2 report. 3 II. Pretrial Motions 4 a. 5 As the declaratory judgment defendant, GuideTech moves to Motion to Realign Parties 6 realign the parties so that it is the plaintiff and proceeds first 7 at trial. 8 "primary purpose" of the litigation to determine, in their 9 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 10 primary dispute in controversy. 11 Datamize, LLC, 2003 WL 25841157, at *3 (N.D. Cal.) (citing 12 Prudential Real Estate Affiliates, Inc. v. PPR Realty, Inc., 204 13 F.3d 867, 873 (9th Cir. 2000)). 14 at issue, GuideTech is the sole party bearing the burden of proof 15 in this case. 16 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 17 b. 18 Brilliant moves to bifurcate the issue of willfulness from Motion to Bifurcate Willfulness from Liability 19 the issue of infringement. 20 no special risk of prejudice here. Bifurcation would not serve 21 the interests of judicial economy. The motion is DENIED. Fed. R. Civ. P. 42(b). The Court sees 22 c. 23 At claim construction, the Court construed “defined within a Motion to Clarify Claim Construction 24 signal channel” as “contained within a signal channel.” 25 No. 137 at 8. 26 constructions on appeal and the Federal Circuit accepted the 27 Court’s claim constructions in finding a disputed issue of 28 infringement based on the above-referenced term. 5 Docket Neither party challenged the Court’s claim Brilliant 1 Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1345 (Fed. 2 Cir. 2013). 3 claim construction does not include “an embodiment that has a 4 measurement circuit that is present in more than one channel.” 5 Brilliant contends the Federal Circuit did not consider this 6 Court’s reasoning rejecting GuideTech’s proposed construction on 7 the basis that it “captures an embodiment that has a measurement 8 circuit that is present in more than one channel, which is not 9 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 10 Docket No. 137 at 7-8. 11 however, the Federal Circuit did consider Brilliant’s present 12 argument. 13 (“Brilliant argues that it cannot infringe because the district 14 court, as a matter of claim construction, rejected GuideTech’s 15 argument that ‘defined within’ allowed a measurement circuit to be 16 present in more than one channel.”). 17 nevertheless found a disputed issue as to infringement because 18 GuideTech’s evidence showed that, when the accused products 19 operate in “One-Channel-Two-Edge mode,” “the only active signal 20 path flows from the input to two measurement circuits.” 21 Court thus declines to adopt Brilliant’s proposed change because 22 it contradicts the Federal Circuit’s application of the Court’s 23 claim construction. 24 25 26 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 27 28 6

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