Prism Technologies v. Sprint Spectrum L.P.

Filing 417

MEMORANDUM AND ORDER - This matter is before the Court on cross motions in limine from both the plaintiff Prism Technologies, L.L.C. (Prism) (Filing No. 357 ) and defendant Sprint Spectrum, doing business as Sprint PCS (Sprint) (Filing No. 361 , Filing No. 362 , Filing No. 363 ). After review of the motions, briefs, indices of evidence, and relevant case law, IT IS ORDERED as set forth is this order. Ordered by Senior Judge Lyle E. Strom. (GJG)

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

)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P., D/B/A
)
SPRINT PCS,
)
)
Defendant.
)
______________________________)

8:12CV123

MEMORANDUM AND ORDER

This matter is before the Court on cross motions in
limine from both the plaintiff Prism Technologies, L.L.C.
(“Prism”) (Filing No. 357) and defendant Sprint Spectrum, doing
business as Sprint PCS (“Sprint”) (Filing No. 361, Filing No.
362, Filing No. 363).

After review of the motions, briefs,

indices of evidence, and relevant case law,
IT IS ORDERED:
I.

PRISM’S MOTIONS IN LIMINE

1) Neither party may refer to Prism’s prior patent
infringement lawsuits or current affiliated entities and their
current business or litigation activities, except that the
parties may discuss Prism’s settlement agreements to establish
reasonable damages.
Deferred until trial.
2) Sprint may not argue that Prism failed to test
Sprint’s systems.
Granted as to Sprint’s systems.

3) Neither party may refer to whether testimony from
any expert witness was excluded in a prior case.
Granted.
4) Neither party may present testimony from prospective
damages experts concerning whether the other party’s expert
complied with applicable law. This does not exclude the experts
from providing testimony regarding the legal standard applied.
Denied.
5) Sprint may not argue that it respects the
intellectual property rights of others and Prism will not refer
to the fact that Sprint is often sued for and settles patent
infringement lawsuits.
Deferred until trial.
8)1 Sprint may not present evidence or argument that
Mr. Minor has served as an expert for individuals accused of
sexual assault. The parties may note that Mr. Minor has served
as an expert for the prosecution and defense in capital murder
cases and in civil actions.
Granted.
10) Sprint may not present argument that multiple GSM
documents are anticipatory references.
Denied.
11) The parties may not rely on transcripts from the
trial testimony of the parties’ experts or AT&T’s fact witnesses
from the trial in the matter of Prism Techs., LLC v. AT&T
Mobility, LLC, (8:12CV122).

1

Prism originally asserted twenty-one motions but later
resolved six of those motions. Compare Filing No. 358, at 2-3,
with Filing No. 378 (withdrawing motions in limine 6, 7, 9, 20),
and Filing No. 379 (same), and Filing No. 392 (withdrawing
motions in limine 13 and 14), and Filing No. 393 (same). This
opinion uses the original numeration of the motions in Filing No.
357 and related filings.
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Denied. Parties may use the prior testimony of an
expert witness from the AT&T trial to cross-examine the same
witness in this trial.
12) The parties may not rely on deposition transcripts
of Prism’s expert witnesses from the matter of Prism Techs., LLC
v. AT&T Mobility, LLC, 8:12CV122 (D. Neb.).
Denied. Parties may use the prior testimony of an
expert witness from depositions in the AT&T matter to crossexamine the same witness in this trial.
15) Sprint’s expert, Scott D. Hampton, may not rely on
technical documents contained in Exhibit K to his expert report
that were not disclosed during fact discovery or cited in the
reports of Sprint’s technical expert.
Denied.
16) Sprint’s expert, Scott D. Hampton, may not present
trial testimony or an opinion that Prism and/or AT&T manipulated
the AT&T Settlement Agreements to attribute the entire settlement
amount to a license for the asserted patents in order to
influence Sprint’s and the other carriers’ litigations.
Denied.
17) Sprint may not present argument, testimony,
evidence or expert opinion regarding a smallest salable patent
practicing unit.
Denied as moot. The Court has ruled on this issue in a
concurrent order related to Filing Nos. 329, 230, and 333.
18) Sprint may not present argument, testimony,
evidence or expert opinion regarding the cost of SIM cards or
non-volatile memory as the basis for a damages calculation.
Denied as moot. The Court has ruled on this issue in a
concurrent order related to Filing Nos. 329, 230, and 333.

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19) Sprint may not introduce as evidence or present any
argument, testimony or expert opinion regarding the document
bearing Bates-number SPRINTPR00091538-539.
Denied as moot. The Court has ruled on this issue in a
concurrent order related to Filing Nos. 329, 230, and 333.
21) Consistent with F.R.E. 408, the parties will not
offer testimony, evidence or argument regarding settlement
communications between Prism and any of the wireless carriers
(i.e., AT&T, Sprint, T-Mobile, USCC and Verizon).
Granted as to Sprint, T-Mobile, USCC, and Verizon.
Deferred until trial as to AT&T.
II.

SPRINT’S MOTIONS IN LIMINE

1) Prism will not provide testimony, other evidence, or
argument regarding the Prism v. AT&T Settlement and License
Agreement or testimony, other evidence, or argument revealing the
identity of AT&T as the licensee to the agreement.
Denied.
2) Prism will not offer lay opinion testimony from Mr.
Duman that Prism would have offered Sprint a license to the
Asserted Patents equal to five percent of Sprint’s cost savings
achieved by leasing as opposed to buying its backhaul networks;
and Prism will not offer expert opinion testimony from Mr. Duman
that Prism would have offered Sprint a license to the Asserted
Patents equal to five percent of Sprint’s cost savings achieved
by leasing as opposed to buying its backhaul networks.
Denied.
3) Prism will not offer testimony, other evidence, or
argument regarding any documents filed with the Securities and
Exchange Commission authored by anyone other than Sprint and its
affiliates or Prism and its affiliates.
Granted.
4) With the exception of documents specifically
referenced in the body of the parties’ expert reports, the
parties will not offer testimony, other evidence, or argument
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regarding any contract between any backhaul provider and any
party.2
Denied.
5) Prism will not offer testimony, other evidence, or
argument regarding any statement to the Federal Communications
Commission authored by anyone other than Sprint.
Granted.
6) Prism will not offer testimony, other evidence, or
argument regarding Sprint’s data revenue, voice revenue, overall
revenues, overall profits, or market value.
Deferred until trial. The Court will allow Prism to
use revenue-based information only in the event that Sprint
relies upon specific revenue-based theories.
7) Prism will not offer testimony, other evidence, or
argument speculating that potentially-relevant Sprint documents
exist but were not produced by Sprint in this case.
Granted as to both parties.
8) Prism will not offer testimony, other evidence, or
argument regarding the opinions or statements made or reports
served in the Carrier Defendant Cases by any expert.
Granted as to both parties.
9) Prism will not offer testimony, other evidence, or
argument regarding the technical operation of the accused
networks in Prism’s Carrier Defendant Cases not of record in this
case.
Deferred until trial.

2

The Court has reworded the language of this motion. The
original text read as follows: Prism will not offer testimony,
other evidence, or argument regarding any contract between any
backhaul provider and any party other than Sprint and Prism’s
experts may only rely on documents specifically referenced in the
body of their expert reports. Filing No. 363, at 3.
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10) Prism will not offer testimony, other evidence, or
argument regarding any settlement discussions, or lack thereof,
between Prism and Sprint or the other remaining defendants in the
Carrier Defendant Cases.
Deferred until trial.
11) Prism will not offer testimony, other evidence, or
argument regarding reexaminations of the ‘288 patent by the
United States Patent and Trademark Office.
Denied.
DATED this 8th day of June, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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