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