Prism Technologies v. AT&T et al

Filing 427

MEMORANDUM AND ORDER granting in part and denying in part 388 Motion in Limine; granting in part and denying in part 391 Motion in Limine. Ordered by Senior Judge Lyle E. Strom. (ADB)

IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES LLC,

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

This matter is before the Court on cross motions in
limine from both the plaintiff (Filing No. 388) and the defendant
(Filing No. 391).

After review of the motions, briefs, submitted

evidence, oral arguments, and relevant law,
IT IS ORDERED:
I.

PLAINTIFF’S MOTION
1. Preclude argument that the accused

Femtocells/Microcells, Metrocells, and WiFi do not use an
untrusted IP Network.
Denied.
2. Exclude argument from AT&T’s non-infringement expert
regarding the validity of the Prism Patents.
Deferred until trial.

The parties have stipulated that

its experts would not testify beyond the scope of their expert
reports.

Courts often preclude expert opinions which exceed the

scope of corresponding expert report.

However, the Court finds

no reason to limit the contents of AT&T’s experts’ testimony so
long as that testimony is within the scope of that expert’s
report.

In its opposition brief, AT&T did not dispute Prism’s

claim that its non-infringement expert did not offer validity
opinions in his report.

However, the Court will reserve its

ruling until it arises in context at trial.

The Court will limit

the experts’ testimony to their reports.
3. Exclude argument from AT&T’s invalidity expert
regarding infringement of the accused systems.
Deferred until trial.
4. Exclude arguments of a non-infringing alternative
because neither AT&T during discovery, nor the reports of AT&T’s
experts, disclosed any such non-infringing alternative.
Deferred until trial.

Like the previous in limine

motions, this motion concerns AT&T’s expert reports.

Prism

claims AT&T’s experts did not provide non-infringing
alternatives, and they should be precluded from offering opinions
beyond their reports.

AT&T claims their experts have the right

to testify regarding their expert reports and to rebut Prism’s
experts’ non-infringement alternatives.

The Court will reserve

ruling until it arises in context at trial, where the parties can
clearly show whether AT&T’s experts’ reports contain non-

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infringing alternative opinions.

The Court will limit the

experts’ testimony to their reports.
5. Preclude AT&T from presenting argument or evidence
regarding Prism’s prior settlement agreements, or settlement
agreements, including negotiations and unaccepted licensing
offers.
Denied as moot.

Prism’s primary concern is the use of

settlements in the calculations of AT&T’s damages expert;
however, that expert was excluded following a Daubert motion.
Also, the Court has ruled that the prior settlements may
constitute the basis of a reasonable royalty.
6. Exclude argument that AT&T’s accused systems are
licensed under the Prism-Microsoft Agreement.
Denied as moot.

In its previous orders, the Court has

excluded testimony and opinions of both parties’ damages experts
and excluded a late-disclosed spreadsheet which contemplated a
Prism-Microsoft Agreement.
argument to be moot.

Therefore, the Court believes this

If AT&T seeks to argue at trial that part

of the accused system is licensed under the Prism-Microsoft
Agreement, the Court will consider it in that context.
7. Preclude AT&T’s invalidity expert, Dr. Houh, from
presenting an obviousness analysis with respect to the CDPD prior
art reference, beyond the specific combination with Fox that he
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proposed with Fox for certain claim limitations in his invalidity
report.
Denied.
8. Exclude argument that AT&T does not infringe because
the claims are allegedly invalid.
Granted on the basis that this theory will confuse the
jury as to the nature of the law.

Applera Corp. v. MJ Research

Inc., No. 3:98-CV-1201, 2004 WL 367616, at *1 (D. Conn. Feb. 24,
2004)

(“[A] patent can be infringed notwithstanding that it may

also be invalid or unenforceable, and counsel will be expected to
refrain from arguing or eliciting testimony to the contrary.”)
9. Preclude AT&T from arguing that the asserted claims
are invalid for lack of written description of or failure to
enable cellular technology.
Denied.
10. Preclude AT&T from presenting arguments or offering
evidence from the named inventors that they are not experts in
cellular technology and did not invent cellular technology.
Denied.
11. Neither party may refer to changes to the parties’
infringement and/or invalidity contentions, for example, claims,
accused elements and prior art that is no longer asserted.

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Denied.

See Commil USA, LLC v. Cisco Sys., Inc., 720

F.3d 1361, 1367-68 (Fed. Cir. 2013) and Carnegie Mellon Univ. v.
Marvell Tech. Grp., Ltd., No. 09-290, 2012 WL 5463669, at *2
(W.D. Pa. Nov. 7, 2012).
12. Exclude disparaging remarks or references to the
patent system or patents.
Granted.
13. Preclude AT&T from arguing that Prism failed to
test AT&T’s accused systems.
Granted.
14. Prism as a “patent troll” (non-practicing entity).
The motion is moot because the parties have reconciled
their disagreement on this subject.

AT&T shall not refer to

Prism as a patent troll; however, it may refer “to Prism’s
origins as a practicing company and to the fact that Prism is no
longer a practicing company.”

Filing No. 405, at 23.

15. Exclude references to Prism’s motives for filing
the current (and related) action.
Granted.
16. Preclude reference to Prism’s prior patent
infringement lawsuits or current affiliated entities and their
current business or litigation activities.

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Granted; however, AT&T may discuss settlements to
establish reasonable damages.
17. Exclude any reference to any fee arrangement or
interest in the litigation held by Kramer Levin Naftalis &
Frankel LLP or Bentham Capital.
Granted.
18. Preclude AT&T from relying on declarations and/or
affidavits served after the close of fact discovery, except for
purposes of authentication.
Granted.
19. Neither party may offer the testimony of Syniverse
or of Syniverse employee Byron Neal beyond playing Mr. Neal’s
deposition testimony.
See Filing No. 421.
20. Preclude AT&T’s experts from relying upon
information from employees who were not disclosed in its initial
disclosures.
See Filing No. 421.
II.

DEFENDANT’S MOTION
1. Preclude Prism from offering testimony, other

evidence, or argument regarding AT&T’s overall revenues, overall
profits, “deep pockets,” size (e.g., “huge,” “giant,” or
“large”), or market value, or anything similar.
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Granted.

The Court excluded both damages experts and

believes this motion may be moot.

However, to the extent that

Prism seeks to introduce damages evidence, it should disclose
only those figures and descriptions necessary for the jury to
determine damages.
2. Preclude Prism from offering testimony, other
evidence, or argument regarding AT&T’s decision not to call any
particular witness who AT&T does not control at trial.
Granted.
3. Preclude Prism from offering testimony, other
evidence, or argument regarding AT&T’s failure to call any senior
executives as a witness or have them present at trial.
Granted.
4. Preclude Prism from offering testimony, other
evidence, or argument regarding AT&T’s failure to have any other
AT&T entity appear at trial or to call any witness from any other
AT&T-related entity.
Granted.
5. Preclude Prism from offering testimony, other
evidence, or argument regarding reexaminations of the ’288 patent
by the United States Patent and Trademark Office.
Denied.

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6. Preclude Prism from offering testimony, other
evidence, or argument regarding any pending patent applications,
continuations, divisionals, or continuation-in-part applications
from the patents-in-suit.
Granted.
7. Preclude Prism from offering testimony, other
evidence, or argument regarding any of Prism’s unasserted
patents.
Denied.

The questions of the priority and effective

dates are unresolved and Prism may introduce relevant evidence to
resolve those questions.
8. Preclude Prism from offering testimony, other
evidence, or argument regarding any presumption of validity of
any claim of the patents-in-suit.
Granted.

Chiron Corp. v. Genentech, Inc., 363 F.3d

1247, 1258-59 (Fed. Cir. 2004) (“Therefore, the district court
did not err in declining to include a jury instruction on the
presumption of validity because the jury applied the correct
‘clear and convincing evidence’ standard.”) (quoting

Am. Hoist &

Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir.
1984); Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Avia Group Int'l Inc. v. L.A. Gear Cal.,
Inc., 853 F.2d 1557, 1562 (Fed. Cir. 1988)).
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9. Preclude Prism from offering testimony, other
evidence, or argument regarding its recognition as the 1997
Nebraska Technology Company of the Year by the Applied
Information Management (AIM) Institute.
Denied.
10. Preclude Prism from offering testimony, other
evidence, or argument that the patents-in-suit are necessary or
essential to comply with an industry standard.
Granted.
11. Preclude Prism from offering testimony, other
evidence, or argument regarding Akin Gump’s retention of Mr.
James E. Malackowski as an expert in prior cases.
Granted.
12. Preclude Prism from offering testimony, other
evidence, or argument speculating that potentially-relevant AT&T
documents exist but were not produced by AT&T in this case.
Granted.
13. Preclude Prism from offering or eliciting
testimony, other evidence, or argument from Mr. Minor regarding
any AAV agreement or relationship other than the agreement
between CenturyLink and AT&T.
Denied.

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14. Preclude Prism from offering testimony, other
evidence, or argument that AT&T was aware, had notice of, or
knowledge of the patents-in-suit before Prism filed this case.
Granted.
15. Preclude Prism from offering testimony, other
evidence, or argument that AT&T has indirectly infringed the
patents-in-suit.
Denied.

See 8:12CV123, Filing No. 111, at 10-11

(citing Walker Digital, L.L.C. v. Facebook, Inc., 852 F. Supp. 2d
559, 565-56 n.11 (D. Del. 2012); Xpoint Techs., Inc. v. Microsoft
Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010); Proxyconn Inc. v.
Microsoft Corp., No. SACV 11-1681 DOC ANx, 2012 WL 1835680, at *7
(C.D. Cal. May 16, 2012)).
16. Preclude Prism from offering testimony, other
evidence, or argument regarding any alleged lack of opinion of
counsel in support of willfulness or any other issue.
Granted.
17. Preclude Prism from offering testimony, other
evidence, or argument suggesting that AT&T has copied the
invention described in the claims of the patents-in-suit.
Granted.
18. Preclude Prism from offering testimony, other
evidence, or argument regarding any lawsuits filed by any other
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companies or individuals against AT&T or any of its current,
past, or future affiliates, including by way of any anticipated
merger or acquisition.
Granted.
19. Preclude Prism from offering testimony, other
evidence, or argument regarding the opinions or statements made
or reports served in the companion cases by any expert, who is
not designated in this case.
Granted.
20. Preclude Prism from offering testimony, other
evidence, or argument regarding any settlement discussions, or
lack thereof, between Prism and AT&T or the other remaining
defendants in the companion cases.
The motion is moot because the parties have come to a
resolution to this issue and mutually agree that neither party
shall divulge settlement discussions between the parties at
trial.

To the extent that Prism attempts to extend this motion

in limine beyond this agreement, the Court denies Prism request.
DATED this 6th day of October, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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