Cirba Inc. et al v. VMware, Inc.

Filing 460

MEMORANDUM ORDER re rulings on motions in limine and other trial related issues. Signed by Judge Leonard P. Stark on 1/6/20. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CIRBA INC. (d/b/a DENSIFY
and CIRBA IP, INC.,
Plaintiffs,
C.A. No. 19-742-LPS

V.

VMware, INC. ,
Defendant.

MEMORANDUM ORDER
Having reviewed the proposed final pretrial order (D.I. 439, 440) ("PTO"), filed by
Plaintiffs Cirba Inc. and Cirba IP, Inc. (hereinafter collectively referred to as "Cirba," "Densify,"
or "Plaintiffs") and Defendant VMware, Inc. ("VMware" or "Defendant"), 1 IT IS HEREBY
ORDERED that:
1.

Densify's motion in limine ("MIL") No. 1, seeking to preclude VMware from

calling its Chief Executive Officer, Pat Gelsinger, as a live witness at the forthcoming jury trial,
is DENIED. There have been important, material changes in circumstances since the time
VMware represented that Gelsinger would not be a witness at trial: the Court overruled
VMware's vehement objection to producing Gelsinger for a deposition, denied VMware' s
subsequent motion for reconsideration, and ordered Gelsinger to appear for a deposition, which
he did, and "now, with its exhibits and deposition designations, [Densify] itself [has] decided to

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Also pending before the Court are numerous other disputes and motions, including those
relating to claim construction, summary judgment, and Daubert. The Court will address those
issues, by separate orders or otherwise, before, during, or subsequent to tomorrow's pretrial
conference ("PTC").
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put Mr. Gelsinger's testimony at issue" (PTO Ex. 1 lA Def. Br. at 1). The Court is not persuaded
that Plaintiffs - who are seeking hundreds of millions of dollars in damages from Defendant in a
public, jury trial - would be "severely prejudiced" and "subject to ambush" if Defendant's CEO
(despite previously purporting to be too busy for a deposition) is now available to appear at trial.
(PTO Ex. 1lA Pl. Br. at 3) Any prejudice to Densify is further reduced because, if Gelsinger
testifies live at trial, Densify may (subject to the Federal Rules of Evidence ("F.R.E.") and the
Court' s procedures) play the Gelsinger deposition testimony and may also cross-examine him.
2.

Densify' s MIL No. 2, to preclude VMware from relying on what Densify

incorrectly characterizes as "summary charts" of telemetry data whose admissibility is governed
by F.R.E. 1006, is DENIED. The Court agrees with VMware: " [The] telemetry data is not
survey data. It is not questioning or polling customers; it is merely reporting data that was
collected contemporaneously as part of VMware ' s regular course of business." (PTO Ex. 1 IB
Def. Br. at 1; see also id. at 2 ("VMware collects all telemetry data in the ordinary course of
business, and it produced all relevant data to Cirba as output from the telemetry database in
repsonse to VMware's disclosed queries.")) Densify has repeatedly (and now again) failed to
persuade the Court that VMware has not adequately produced its telemetry data. Just as the
Court previously found no basis to exclude VMware' s telemetry data as a discovery sanction
(see, e.g. , Dec. 17, 2019 Hearing Tr. at 65-68), the Court is not persuaded that VMware ' s

challenged trial exhibits are inadmissible summaries (to the contrary, the exhibits appear to
summarize what has been produced) or that the risk of unfair prejudice or jury confusion
substantially outweighs the probative value of such data. The data is important evidence of the
amount of use of the allegedly-infringing functionality, which is highly probative of damages.
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Densify's concerns about the unrepresentativeness of the data can be argued and tried to the jury.
Nor does the Court believe that VMware is seeking to offer improper lay opinion; instead, it
appears that VMware intends to offer Mr. Prathuri (whom Densify has deposed) to provide
factual testimony within his experience regularly using the telemetry data in the regular course of
business.
3.

Densify' s MIL No. 3, to exclude testimony of Carl Waldspurger which VMware

contends supports its§ 102(g) defense, is DENIED. The Court disagrees with Densify' s
contention that VMware has failed to produce any evidence of corroboration. (See, e.g. , PTO Ex.
l lC Def. Br. at 2-3) (citing evidence)2 Densify' s motion is more akin to a motion for summary
judgment, as it contends that there is not sufficient evidence from which a reasonable jury could
find corroboration. But Densify did not seek to file a motion for summary judgment and it will
have an opportunity at trial to move for judgment as a matter of law should it believe that
VMware has failed to present sufficient evidence. Densify' s Rule 403 arguments are all based on
the premise (which the Court at this time is not accepting) that VMware cannot sustain its burden
on its§ 102(g) defense. Moreover, VMware timely disclosed that Waldspurger had pertinent
evidence and Densify has deposed him. (See, e.g., D.I. 386 at 2-3)
4.

The parties shall be prepared to address VMware' s MIL No. 1, to exclude

evidence and argument ofVMware's and Densify' s revenue and profits, at the PTC tomorrow.
5.

VMware' s MIL No. 2, relating to VMware' s modification of an accused product

during this litigation to eliminate an allegedly-infringing functionality, is GRANTED to the

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The Court does not address Densify' s request (raised only in its reply brief) to exclude
one ofVMware's documents as having been untimely produced under "highly suspicious
circumstances." (PTO Ex. l lC Rep. Br. at 1)
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extent that Densify will not be permitted to argue that VMware' s actions are probative of
culpability for infringement or willful infringement. 3 F.R.E. 407 provides: "When measures are
taken that would have made an earlier injury or harm less likely to occur, evidence of the
subsequent measures is not admissible to prove: .. . culpable conduct .... But the Court may
admit this evidence for another purpose, such as impeachment .. .. " See, e.g., Johns Hopkins

Univ. v. Alcon Labs. Inc., 2018 WL 4178159, at *19 (D. Del. Aug. 30, 2018) (finding Rule 407
applies in patent cases to remedial measures actually taken) ; Deflecto, LLC v. Dundas Jafine Inc.,
2015 WL 9413148, at *2 (W.D. Mo. Dec. 22, 2015) (same). Densify may make other, proper
arguments from the evidence, including arguments relating to impeachment or damages.
6.

VMware's MIL No. 3, to exclude evidence or argument related to pre-suit

knowledge of the asserted patents and willful infringement, is DENIED. The parties' 2015 nondisclosure agreement (''NDA") only precludes the parties from using as evidence "the disclosure
of the patents, the patent applications, or any related Confidential Information" that was
exchanged "in connection with Recipient's due diligence analysis" in 2015. (PTO Ex. 1 lF Def.
Br. at 1) (emphasis added) VMware vastly overreads its rights under the NDA, citing it as a
basis to exclude all evidence of its pre-suit knowledge of the asserted patents and all evidence of
how VMware responded to what was disclosed to it pursuant to the NDA (including, for
example, VMware internal discussions). VMware ' s citations to other cases - including IBM

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VMware seems to intend its motion to be directed only to argument, and not to the
admissibility of evidence. VMware' s briefing is somewhat confusing on this point (see, e.g.,
PTO Ex. 1 lE Def. Br. at 2) ("It would be unfair, highly prejudicial, and against established
public policy if Cirba were permitted to present evidence or argument concerning VMware's
removal of the dashboard to show infringement or willfulness.") (emphasis added)), and Densify
understandably reads the motion as being directed to evidence as well as argument.
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Corp. v. Groupon, Inc., C.A. No. 16-122-LPS D.I. 314 at 2-3 (D. Del. June 15, 2018) (enforcing
very different agreement providing that party would "not seek to enhance ... damages by
asserting willful patent infringement") - and reliance on F .R.E. 403 are unavailing (as the
probative value of acquisition discussion evidence is not substantially outweighed by the risk of
unfair prejudice). To the extent VMware is also seeking exclusion of all evidence and argument
relating to willful and indirect infringement (based on the view that Densify lacks sufficient
evidence to prevail on these claims), VMware ' s motion is akin to an untimely and unpermitted
summary judgment motion and/or a premature motion for judgment as a matter of law.
Having identified additional disputes in the PTO, IT IS FURTHER ORDERED that:
7.

The Court will permit Plaintiffs to refer to themselves collectively as "Densify,"

and may itself at times refer to Plaintiffs collectively as "Densify," as Plaintiffs request. One
Plaintiff, Cirba Inc., does business as Densify. While the other Plaintiff, Cirba IP, Inc. , does not
do business as Densify, for simplicity it will frequently be necessary for the Court, counsel, and
witnesses to refer to Plaintiffs collectively, and the Court finds that "Densify" is a reasonable and
appropriate shorthand term. As the asserted marks at issue in Plaintiffs' trademark infringement
claim are variants of the word "Densify," the Court will (ifrequested) include in its instructions
to the jury an instruction to the effect that there are two Plaintiffs, only one of which uses the
name "Densify" in doing business, and that the jury should not attach evidentiary weight to the
use at trial, for simplification, of the name "Densify" to refer to the two Plaintiffs collectively.
8.

The parties shall be prepared to discuss at the PTC tomorrow all objections and

disputes as to which witnesses will or may be called at trial. (See, e. g. , PTO ,r,r 15, 16)
9.

The parties shall be prepared to discuss at the PTC VMware' s proposal that once

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cross-examination of a witness is concluded and the witness is passed for re-direct examination,
the offering party may discuss with the witness his or her testimony on re-direct examination.
(See PTO 1 15)

10.

The Court ADOPTS VMware ' s proposal on the disputed issue at PTO 126, and

will allow objections to impeachment with prior testimony for incompleteness and/or lack of
inconsistency. Nonetheless, the parties are advised that, in the Court' s experience, such
objections are rarely sustained.
11.

The Court ADOPTS Densify' s proposal on the disputed issue at PTO 133

(supplementation of exhibit list may only be with party approval or leave of the Court, on good
cause shown).
12.

The Court ADOPTS VMware ' s proposal on the disputed issue at PTO p. 25 n.10

and 1 35 (Rule 1006 exhibits will be produced at least one day in advance of anticipated use,
timing for objections).
13.

With respect to the dispute at PTO 1163, 75, 80, the Court ADOPTS VMware' s

position and will not permit the presentation of any evidence that pertains only to Plaintiffs'
request for a permanent injunction. Introduction of such evidence substantially risks being
unfairly prejudicial to VMware and could confuse the jury, risks that are not warranted given the
complete lack of probative value of evidence that pertains solely to an issue the jury will not be
asked to decide.
14.

The parties shall be prepared to discuss at the PTC their request for 18 hours per

side for trial (see PTO 1 66), particularly given that the Court continues to believe that no more
than 14-17 hours per side are required to allow each side to fully and fairly present its case. (See
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D.I. 406)
15.

With respect to the dispute at PTO ,r 67, no written submissions relating to

motions for judgment as a matter of law will be permitted until after trial.
16.

With respect to the dispute at PTO ,r 68, the Court ADOPTS Densify' s position

and will consider, if necessary, any dispute as to the standing of one of the two Plaintiffs only
after trial.
17.
(see

VMware will not be permitted to present its patent eligibility defense to the jury

PTO ,r 74), as the Court has already ruled on and found no merit to that defense (see D.I.

137).
18.

The parties' "Additional Matters" (PTO ,r,r 69-88) identify what might accurately

be characterized as up to dozens more motions. Time permitting, the parties may raise any of
those issues (if still ripe after the Court's recent rulings, and if judicial assistance is truly believed
to be required) at the PTC.

l

LA-~~ =

HONdRABLE LEONARD Y.sTARK
UNITED STATES DISTRICT JUDGE

January 6, 2020
Wilmington, Delaware

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