Personalized User Model LLP v. Google Inc.
MEMORANDUM ORDER re rulings on the motions in limine; 552 Defendant Google, Inc.'s Daubert Motion to Exclude Certain Opinions of Dr. Michael Pazzani is Granted in part and Denied in part; 555 MOTION TO EXCLUDE PORTIONS OF DR. EDWARD FOX'S NON-INFRINGEMENT REPORT FOR FAILURE TO APPLY THE COURT'S CLAIM CONSTRUCTION filed by Personalized User Model LLP is Granted in part and Denied in part; each side is allocated 17 hours for their trial presentations. Signed by Judge Leonard P. Stark on 2/27/14. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P .,
C.A. No. 09-525-LPS
Pending before the Court are:
Personalized User Model, L.L.P.'s ("PUM") Motion to Exclude Portions ofDr.
Edward Fox's Non-Infringement Report for Failure to Apply the Court's Claim
Constructions (D.I. 555);
Google Inc.'s ("Google") Motion to Exclude Certain Opinions ofDr. Michael
Pazzani (D.I. 552);
PUM' s Motion in Limine to Preclude Google from Presenting Argument or
Evidence that it is an Owner of the Patents-in-Suit or on other Related Legal and
Equitable Issues (D.I. 588 Ex. 12);
PUM's Motion in Limine to Exclude Evidence of Reexamination Proceedings at
Trial (ld. at Ex. 13);
PUM's Motion in Limine to Preclude Google from Characterizing it as a Troll or
Otherwise Presenting Derogatory Comments (ld. at Ex. 14);
Google's Motion in Limine No. 1 to Preclude Evidence or Arguments on Copying
or Pre-Suit Knowledge (Id. at Ex. 15);
Google's Motion in Limine No.2 to Preclude Evidence or Arguments Regarding
Google' s Revenues or Acquisition of Kaltix (Id. at Ex. 16);
Google's Motion in Limine No.3 to Preclude Evidence Regarding the Meaning of
"Conceived" (ld. at Ex. 17); and
Various miscellaneous issues raised by the parties in the Proposed Pretrial Order.
(Id. at Exs. 19-20)
The Court heard oral argument on these various motions and issues during the pretrial
conference on February 26,2014. A jury trial on infringement, invalidity, and breach of contract
will begin on March 10,2014.
After reviewing the materials submitted, and having heard argument, IT IS HEREBY
ORDERED as follows:
PUM's Motion to Exclude Portions of Dr. Edward Fox's Non-Infringement
Report for Failure to Apply the Court's Claim Constructions (D.I. 555)
PUM requests that the Court exclude portions of Dr. Fox's non-infringement report
because he disregarded the Court's claim constructions. In particular, PUM argues that in
offering his non-infringement opinion, Dr. Fox did not apply the Court's constructions of the
terms (i) "specific" or "specific to the user," (ii) "estimating," and (iii) "probability." (See D.I.
556 at 1-2)
During claim construction, Google argued that "specific" meant "unique," such that "each
individual user has a different User Model that is unique to that individual user." (D.I. 347 at 25)
The Court disagreed with Google and explained that in the context of the patents-in-suit multiple
users can have the same User Model. (Id. at 27) The Court expressly noted that different users
may share each others' User Models. (Id.) ("Elsewhere, the patent notes that these prototype
users are called 'hats,' and that users can choose to try on different 'hats' in certain
circumstances.") Thus, the Court rejected the argument that "specific" to a user meant
"exclusive" to a user. The Court also determined that the specificity of a User Model stems from
differences in "numerical values" as opposed to "variables." (!d.)
In his expert report, Dr. Fox opines that "the Court did not address whether each user has
his own learning machine ... or whether users might share the same learning machine .... "
(D.I. 557 Ex. 1 at~ 317) The Court has already held that "user-specific" did not mean exclusive
to a particular user. In various other parts of his report, Dr. Fox opines that "specific" must be
"exclusive" to a user. As expert testimony inconsistent with the Court's claim construction is
unreliable and unhelpful to the finder of fact, all of these portions of Dr. Fox's non-infringement
report are stricken. PUM's motion with respect to this first issue is GRANTED.
PUM argues that Dr. Fox also misapplies the Court's construction of the "estimating"
term. The Court construed "estimating" to mean "approximating or roughly calculating." (D.I.
347 at 33) In coming to this conclusion, the Court also found that "estimating" is a
"measurement that is not entirely precise." (Jd.) Dr. Fox's opinion regarding "estimating"
relates to whether a calculation is too precise to be an estimate. His opinion does not contradict
the Court's claim construction. Instead, it goes to a fact dispute that will be a proper subject of
the infringement trial. PUM's motion with respect to this second issue is DENIED.
PUM's final argument related to "probability" was rendered moot by Google's response
brief and the parties' representations at the pretrial conference. (See, e.g., D.l. 576 at 11-12)
PUM's motion with respect to this third issue is DENIED.
Accordingly, PUM's Motion to Exclude Portions of Dr. Edward Fox's Non-Infringement
Report for Failure to Apply the Court's Claim Constructions (D.I. 555) is GRANTED IN PART
and DENIED IN PART.
Google's Motion to Exclude Certain Opinions of Dr. Michael Pazzani (D.I.
In arguing this motion at the pretrial conference, PUM stated that it would not elicit an
opinion from Dr. Pazzani on any legal issue, such as an interpretation of California law and
whether patent rights transferred to Dr. Konig's former employer. PUM also agreed that portions
of Dr. Pazzani's expert report should be stricken. To the extent there remains a dispute on these
points, the Court agrees with Google that Dr. Pazzani shall not provide testimony on legal issues,
including his experience at Rutgers with assignment and transfer of patent rights.
Dr. Pazzani will be permitted to provide technical evidence, including opinion, from the
perspective of one of skill in the art of the patents-in-suit, including whether Dr. Konig's work
"related" to SRI's work and "resulted" in the patented technology. Google's criticisms of this
testimony, including evidence Dr. Pazzani did or did not consider and Dr. Pazzani's statement
regarding December as opposed to August 1999, are matters that can be explored on crossexamination and go to the weight and not admissibility of the evidence.
Accordingly, Google's motion is GRANTED IN PART and DENIED IN PART. The
parties shall, no later than Monday, March 3 at 10:00 a.m., submit a proposed order indicating
precisely which portions of Dr. Pazzani's expert report are stricken, consistent with this Order.
Motions in Limine
PUM's Motion in Limine to Preclude Google from Presenting Argument or
Evidence that it is an Owner of the Patents-in-Suit or on other Related Legal
and Equitable Issues
The parties agree that Google' s claims for a declaration of co-ownership, lack of
standing, and constructive trust are not jury issues. PUM has requested that Google be
"precluded from mentioning the [equitable] relief it seeks" because that may "unfairly sway the
jury on the breach of contract claims." (D.I. 588 Ex. 12) At the pretrial conference, PUM agreed
that it is appropriate for Google to elicit evidence and make arguments to the effect that PUM' s
inventors may have had an incentive to change their position as to the date of conception of the
inventions due to concern that PUM may otherwise lose ownership of the patents-in-suit. It
appears to the Court that the parties are in agreement on this aspect of PUM' s motion. The
parties shall, no later than Monday, March 3 at 10:00 a.m., submit a proposed order
memorializing their agreement on this issue. This portion ofPUM's motion is DENIED AS
The portion ofPUM's motion that remains in dispute is whether Google's claim for
"conversion" should be tried before the jury at the upcoming trial. This portion ofPUM's
motion is GRANTED.
The Court agrees with Google that it has a Seventh Amendment right to a jury trial for its
conversion claim. See Ross v. Bernhard, 396 U.S. 531,533-34 (1970) ("The Seventh
Amendment, for example, entitle[ s] the parties to a jury trial in actions for damages to a person
or property, for libel and slander, for recovery ofland, and for conversion ofpersonal
property.") (emphasis added). In its Amended Complaint, Google demanded "[a]n award of
compensatory and punitive damages to Google for Konig's and PUM's conversion ofGoogle's
property" as well as a "trial by jury on all issues so triable." (D.I. 185 at 18) Thus, even though
the parties hotly dispute ownership ofthe patents, Google has a right at some point to have its
conversion claim tried by a jury.
However, the Court does not believe that Google is entitled to have conversion tried now,
to the same jury that is deciding infringement and validity of the patents as well as breach of
contract. Adding conversion to the forthcoming trial would increase the risk of confusing the
jury and unfairly prejudicing PUM, for reasons including that the inclusion of this claim would
expressly confront the jury with the reality that if Google prevails, it (Google) will own the
patents-in-suit. Under the circumstances, including that damages and willfulness have been
bifurcated, this is inappropriate and unnecessary. Consistent with the concerns ofFederal Rule
of Evidence 403, the Court finds that the risk of confusion and unfair prejudice substantially
outweighs the probative value of the conversion evidence. Google's conversion claim can be
tried to a jury along with the issues of damages and willfulness.
PUM's Motion in Limine to Exclude Evidence of Reexamination Proceedings
PUM requests that the Court bar "any mention of, argument, or evidence regarding, the
reexamination proceedings." (D.I. 588 at Ex. 13) This request is GRANTED. Given the nonfinality of the reexamination proceedings (appeal rights have not been exhausted) and the
different standards applicable to reexaminations and litigation, the probative value of the
reexamination evidence is substantially outweighed by the risk of unfair prejudice and the risk of
confusing the jury. The parties may request the opportunity to use as evidence statements made
or evidence proffered during the reexaminations so long as this is done without referencing either
the reexamination or the rejections.
PUM's Motion in Limine to Preclude Google from Characterizing It as a
Troll or Other Derogatory Comments
PUM requests that the Court preclude Google from using the terms "patent troll," "nonpracticing entity," and "paper patent" or otherwise indicating that PUM does not practice the
asserted patents at trial. (D.I. 588 at Ex. 14) Google has agreed not to use the term "patent troll"
or other similar pejorative terms. To that extent, PUM's motion is GRANTED.
Google argues that it should be allowed to (i) clarify to the jury that PUM is not Utopy,
the operating company and predecessor-in-interest to PUM whose name appears on the patent
and (ii) rebut the argument that the patents were a commercial success. During the pretrial
conference, PUM explained that at trial it will be "necessary background for the jury to
understand what the invention is ... the background of when it was developed, how it was
developed." (Tr. at 46) lfPUM is going to present its evidence as to the background and
development history of the patent, in fairness Google must also be given the opportunity to do so,
which here can include proof of the distinction between Utopy and PUM.
Additionally, Google may attempt to rebut PUM's effort to show commercial success of
the patents-in-suit by presenting evidence that the patents were not commercial successes for
Utopy or PUM. Although showing lack of commercial success is not indicative of obviousness,
see, e.g., Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 878 (Fed. Cir. 1993), a lack of
commercial success may be probative evidence to rebut a showing of commercial success.
Evidence showing that Utopy and PUM were not successful at the times they owned the patentsin-suit is probative of Google' s contention that its own commercial success is in no way due to
its alleged practice of the patented technology. Evidence ofUtopy's financial state prior to
selling the patents-in-suit and the "tax-consequences" and circumstances surrounding the sale of
the patents is relevant to rebutting PUM' s contentions that the patents are commercially
successful; any unfair prejudice to PUM from introduction of this evidence does not substantially
outweigh its probative value.
PUM requests that Google be precluded from referring to Levino as a foreign company.
PUM's request is GRANTED. However, if relevant admissible evidence happens to contain a
foreign address, that evidence will not be excluded solely based on the foreign address.
Finally, PUM seeks to preclude (i) evidence that named inventor Michael Berthold felt
threatened by PUM's attorneys, (ii) evidence regarding Jack Banks' prior criminal charges, and
(iii) evidence regarding his company's role in the ownership ofthe patents-in-suit. Given the
parties' representations as to the unlikelihood of these witnesses being called to testify live at
trial, the Court deems these disputes unripe and/or moot. Either side may at trial again raise any
of the three issues discussed in this paragraph, should circumstances warrant.
Accordingly, PUM's motion is DENIED except to the extent expressly noted above.
Google's Motion in Limine No.1 to Preclude Evidence or Arguments on
Copying or Pre-Suit Knowledge
Google requests that the Court preclude any evidence of copying or pre-suit knowledge
that PUM may offer in this trial. (D.I. 588 at Ex. 15) Because inducement and willfulness are
not parts of this case, the Court will GRANT Google' s request. The evidence of pre-suit
knowledge- including PUM's pre-suit letters and Mr. Konig's speech- are irrelevant to this
phase of the trial. As for evidence relating to the citation of the '040 patent-in-suit in a Google
patent application, the minimal probative value is substantially outweighed by the risk of unfair
prejudice to Google, including the risk that the jury will believe Google is guilty of willful
infringement or copying, issues that are not the subject of this trial.
Google's Motion in Limine No. 2 to Preclude Evidence or Arguments
Regarding Google's Revenues or Acquisition of Kaltix
Google seeks to preclude PUM from introducing evidence or arguments regarding
Google revenue or its acquisition ofKaltix Corp. (D.I. 588 at Ex. 16) Allowing the jury to learn,
through financial information, that Google is a very successful company is not unduly prejudicial
to Google. Google may effectively challenge the weight the jury should give this evidence
through cross-examination. Similarly, the value Go ogle placed on its acquisition of Kaltix is at
least probative of commercial success. The extent to which, if any, Kaltix's personalization
technology is within the scope of the patents-in-suit and contributes to Google's success, is a
disputed issue. Accordingly, Google's motion is DENIED.
Google's Motion in Limine No.3 to Preclude Evidence Regarding the
Meaning of "Conceived"
Google's final motion in limine seeks to preclude evidence that "conceived" should be
given its patent law meaning, based on Google's contention that PUM failed to timely disclose
any such evidence in its responses to interrogatories. This motion is DENIED. There is no
indication that Google relied on PUM' s interrogatory responses or that Google has had any lack
of adequate notice of PUM' s evidence on this point, particularly given the extensive litigation
there has been in this case with respect to conception of the patents.
The parties submitted extensive lists of"Miscellaneous Issues," the discussion ofwhich
consumed 14 pages of attachments to the pre-trial order. The Court heard argument on these
issues during the pretrial conference. To the extent not otherwise resolved at the pretrial
conference, the Court exercises its discretion to resolve these issues as follows:
Go ogle shall not be permitted to rely on two articles authored by PUM' s
infringement expert, Dr. Pazzani, as part of Go ogle's obviousness case. The scope of this case
must be narrowed and, under the circumstances, Go ogle's disclosure of its intentions with
respect to these articles is untimely and unfairly prejudicial to PUM.
Google shall not be permitted to call Matthew Montebello as one of its prior art
witnesses. It is unclear whether Mr. Montebello has any relevant testimony to provide. The
scope of this case must be narrowed and, under the circumstances, Google's disclosure of its
intentions with respect to Mr. Montebello is untimely and unfairly prejudicial to PUM.
PUM is granted leave to file a motion in limine to preclude Google from referring
to any purported recent changes in its technology. PUM's motion, which shall not exceed three
be filed by Sunday, March 2 at 10:00 a.m. Google's response, which shall not
exceed three pages, shall be filed by Tuesday, March 4 at 10:00 a.m. PUM's reply, which
shall not exceed one page, shall be filed by Wednesday, March 5 at 10:00 a.m.
The parties shall advise the Court of their proposal(s) for the order of proof, and
how to handle the examination(s) of witnesses both sides seek to call (i.e., cross may exceed
scope of direct or witness will be called multiple times) by joint letter to be submitted no later
than Wednesday, March 5 at 10:00 a.m.
Equitable issues will be addressed at a separate proceeding. The Court will
discuss with the parties the timing of such separate proceeding after receiving the jury verdict at
the March trial.
PUM is granted leave to file a motion relating to the legal framework governing
the statute oflimitations applicable to Google' s breach of contract claim. PUM' s motion, if any,
and opening brief not to exceed ten pages, shall be filed by Sunday, March 2 at 10:00 a.m.
Google's responsive brief, not to exceed ten pages, shall be filed by Wednesday, March 5 at
10:00 a.m. PUM's reply brief, which not to exceed three pages, shall be filed by Thursday,
March 6 at 10:00 a.m.
The Court has previously provided notice to the parties that it would allocate a
maximum of22 hours per side for their trial presentations. (D.I. 537) Decisions announced
during the pretrial conference and in this Order have eliminated portions of each side's case.
Additionally, the Court believes that substantial further narrowing of the issues and focus is
required in order for both sides to receive a fair trial and for the jury to evaluate the evidence and
render a verdict. Accordingly, each side will be given a maximum of 17 hours for its trial
presentation, with time calculated in the manner explained during the pretrial conference.
February 27, 2014
UNITED STATES DISTRICT JUDGE
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