TransPerfect Global, Inc. et al v. MotionPoint Corporation

Filing 331

ORDER by Judge Claudia WilkenRESOLVING ( 289 , 290 ) MOTIONS IN LIMINE. (ndr, COURT STAFF) (Filed on 6/10/2013)

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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 5 TRANSPERFECT GLOBAL, INC., TRANSPERFECT TRANSLATIONS INT’L, INC., and TRANSLATIONS.COM, INC., 6 Plaintiffs, 7 ORDER RESOLVING MOTIONS IN LIMINE (Docket Nos. 288, 290) v. 8 MOTIONPOINT CORP., 9 Defendant. ________________________________/ 10 United States District Court For the Northern District of California No. C 10-2590 CW 11 On June 5, 2013, the Court held a pretrial conference and 12 heard arguments regarding the parties’ motions in limine. 13 considering the parties’ oral argument and submissions, the Court 14 now issues the following rulings: 15 I. 16 After TransPerfect’s Motions in Limine No. 1 - Unopposed Motion To Exclude References to the Expert 17 Opinions of Martin Haeberli: This motion is GRANTED. 18 response to Haeberli is also excluded. 19 Dr. Chase’s No. 2 - Motion to Exclude Evidence of Infringement Based On 20 Comparisons Between the Parties’ Respective Products and Services: 21 This motion is GRANTED. 22 product-comparison evidence to support its invalidity defenses. 23 MotionPoint may, however, present No. 3 - Motion to Exclude Evidence or Argument that 24 MotionPoint’s Invention Requires a “Turnkey” System, Avoidance of 25 “Client-Side IT Work,” or Similar Characterizations: This motion 26 is DENIED. 27 of its patent claims, it is not precluded from using the terms, 28 “turnkey,” “avoidance of client-side IT work,” or similar Although MotionPoint may not misrepresent the nature 1 characterizations to describe the alleged benefits of its 2 inventions at trial. 3 No. 4 - Motion to Exclude Evidence or Argument of 4 Infringement Based on the Doctrine of Equivalents Under the 5 Doctrines of Prosecution History Estoppel and Claim Vitiation: 6 This motion is GRANTED. 7 and evidence of literal infringement. MotionPoint may still present argument No. 5 - Motion to Exclude Evidence or Argument That 9 TransPerfect’s Patents Are Less Valuable, Valid, or Legitimate 10 United States District Court For the Northern District of California 8 Because TransPerfect Did Not Apply for the Patents Itself: This 11 motion is DENIED. 12 patents are invalid because of the manner in which TransPerfect 13 acquired them. 14 relating to TransPerfect’s purchase of the patents -- such as the 15 price TransPerfect paid -- for other purposes, including proof of 16 damages. 17 MotionPoint may not argue that TransPerfect’s MotionPoint may, however, present evidence No. 6 - Motion to Exclude the Testimony of William Fleming as 18 Inadmissible Hearsay: This motion is GRANTED. 19 testify about what MotionPoint’s clients and prospective clients 20 said to him about MotionPoint’s products or services. 21 testify about any comments that TransPerfect employees allegedly 22 made to MotionPoint employees, who subsequently relayed those 23 comments to Fleming. 24 expressed their doubts about the validity of TransPerfect’s 25 patents to Fleming directly, those comments may be admissible as 26 statements against interest. 27 28 Fleming may not Nor may he If any TransPerfect representatives No. 7 - Motion to Exclude Evidence or Argument Regarding NonObviousness Based on Secondary Indicia Due to a Lack of a Nexus: 2 1 This motion is DENIED. 2 fact. The existence of a nexus is a question of 3 No. 8 - Motion to Exclude Evidence or Argument That Material 4 Added to a Patent Application Is Effective as Prior Art Against a 5 Patent with an Earlier Filing Date: This motion is DENIED. 6 involves questions of fact. 7 8 This No. 9 - Motion to Exclude Evidence or Argument Based on Third-Party Websites: This motion is DENIED. No. 10 - Motion to Exclude Evidence or Argument About 10 United States District Court For the Northern District of California 9 MotionPoint’s State of Mind Concerning the Alleged Infringement 11 and Invalidity of TransPerfect’s Patents: This motion is GRANTED. 12 MotionPoint’s state of mind regarding the alleged infringement and 13 invalidity of TransPerfect’s patents is not relevant in light of 14 TransPerfect’s decision to abandon its willful infringement 15 claims. 16 No. 11 - Motion to Exclude Evidence or Argument Regarding 17 MotionPoint’s “Price Erosion” Theory of Damages: This motion is 18 DENIED as moot. 19 that it will not seek price erosion damages. 20 MotionPoint stated at the pretrial conference No. 12 - Motion to Exclude Evidence or Argument That 21 MotionPoint Is Entitled to Damages Based on a Theory of 22 Infringement for Which it Disclosed No Quantification of Damages: 23 This motion is GRANTED. 24 seek damages that it has not quantified. 25 MotionPoint represents that it will not No. 13 - Motion to Exclude Evidence or Argument Concerning 26 Past Discussions Between the Parties Regarding the Possible sale 27 of MotionPoint to TransPerfect: This motion is DENIED. 28 3 1 No. 14 - Motion to Exclude Evidence or Argument Regarding 2 TransPerfect’s Trademarks, Which Are Not the Subject of This 3 Litigation: This motion is GRANTED. 4 II. 5 MotionPoint’s Motions in Limine No. 1 - Motion to Exclude References to the Ongoing Re- 6 examinations of MotionPoint’s Patents: This motion is DENIED. 7 Federal Circuit has held that “non-final re-examination 8 determinations are of little relevance to the jury’s independent 9 deliberations on the factual issues underlying the question of The United States District Court For the Northern District of California 10 obviousness.” 11 1343 (Fed. Cir. 2009) (upholding district court decision to 12 exclude evidence from parallel re-examination proceedings at 13 trial); see also Oracle Am., Inc. v. Google Inc., 2012 WL 1189898, 14 at *3 (N.D. Cal.) (excluding evidence from non-final re- 15 examination proceedings because the “probative value is outweighed 16 by the time and confusion that would be involved”). 17 the pending re-examinations of MotionPoint patents has resulted in 18 a final action by the U.S. Patent and Trademark Office (PTO).1 19 Thus, evidence from these re-examinations must be excluded. 20 Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, Here, none of No. 2 - Motion to Preclude All References to the Alleged 21 Trespass on TransPerfect’s Property by Unknown Persons: This 22 motion is GRANTED. 23 24 1 25 26 27 28 Although TransPerfect characterizes the recent Action Closing Prosecution issued in the ‘216 patent re-examination as a final action, the PTO’s Manual of Patent Examining Procedure makes clear that it is not. See Manual of Patent Examining Procedure § 2671.02 (8th ed.) (“Although an Action Closing Prosecution (ACP) has many attributes similar to a ‘final rejection’ made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action.” (emphasis added)). 4 1 No. 3 - Motion to Exclude Evidence Suggesting that 2 MotionPoint Attempted to Learn About its Competitors through 3 Subterfuge: This motion is GRANTED in part. 4 present evidence that MotionPoint employees or agents posed as 5 prospective TransPerfect customers to investigate the possible 6 infringement of patents asserted in this litigation. 7 8 TransPerfect may not No. 4 - Motion to Exclude Evidence and Argument Regarding the WizTom White Paper: This motion is DENIED. 9 No. 5 - Motion to Exclude Evidence and Argument Concerning United States District Court For the Northern District of California 10 the Jujitsu Presentation Because It Does Not Constitute Prior Art 11 under 35 U.S.C. § 102: This motion is DENIED. 12 No. 7 - Motion to Exclude Evidence and Argument relating to 13 WizTom and WebBudget Because They Do Not Qualify As Prior Art 14 under 35 U.S.C. § 102(g): This motion is DENIED. 15 dispute whether WizTom and WebBudget were available for use in the 16 United States before MotionPoint’s invention was conceived. 17 Because this is a factual question, it must be resolved by the 18 jury. 19 20 21 The parties No. 8 - Motion to Exclude Evidence and Argument Relating to Idiom WorldServer: This motion is DENIED. No. 9 - Motion in Limine to Exclude Unauthenticated Printouts 22 from an Archive Website: This motion is DENIED. 23 shall produce authentication for the thirteen new printouts within 24 three days of this order. 25 TransPerfect No. 10 - Motion to Preclude TransPerfect from Relying on the 26 Doctrine of Equivalents to Prove its Infringement Claims: This 27 motion is GRANTED. 28 5 1 No. 12 - Motion to Exclude Evidence or Argument Regarding 2 Non-Obviousness Based on Secondary Indicia Due to a Lack of a 3 Nexus: This motion is DENIED. 4 No. 15 - Motion to Exclude All References or Evidence Related 5 to TransPerfect’s Co-Founder and Co-CEO: This motion is DENIED. 6 III. Remaining Motions in Limine 7 At the pretrial conference, the parties indicated that they 8 had reached an agreement as to the resolution of several of 9 MotionPoint’s motions in limine, specifically Nos. 6, 11, 13, 14, United States District Court For the Northern District of California 10 and 16. 11 stipulation within three days of this order detailing their 12 agreement. 13 Accordingly, the parties are directed to file a IT IS SO ORDERED. 14 15 16 Dated: 6/10/2013 CLAUDIA WILKEN United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28 6

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