Prism Technologies v. T-Mobile USA, Inc.

Filing 462

ORDER - This matter is before the Court on cross motions in limine from both the plaintiff Prism Technologies, LLC (Prism)(Filing No. 358 ) and defendant T-Mobile USA, Inc. (TMobile)(Filing No. 362 ). After review of the motions, briefs, indices of evidence, and relevant case law, IT IS ORDERED as set forth in this order. Ordered by Senior Judge Lyle E. Strom. (LAC)

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

)
)
Plaintiff,
)
)
v.
)
)
T-MOBILE USA INC.,
)
)
Defendant.
)
______________________________)

8:12CV124

ORDER

This matter is before the Court on cross motions in
limine from both the plaintiff Prism Technologies, LLC
(“Prism”)(Filing No. 358) and defendant T-Mobile USA, Inc. (“TMobile)(Filing No. 362).

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 make disparaging remarks or
references to the patent system or patents.
Granted.
2) T-Mobile may not make any reference regarding any
motives for filing the current (and related) actions.
Granted.
3) Neither party may refer to whether testimony from
any expert witness was excluded.
Granted.

4) 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 and for secondary considerations of
nonobviousness.
Deferred until trial.
5) T-Mobile may not disparage or use derogatory terms
about Prism or its parent or related entities. Such disparaging
or derogatory terms include “patent troll,” “patent assertion
entity,” “shake down,” “hold-up,” “stick up,” “ringing the bell,”
“blackmailers,” “greenmailers,” “pirate,” “bounty hunter,”
“privateer,” “bandit,” “paper patent,” “submarine patent,”
“playing the lawsuit lottery,” “a company that doesn't make
anything,” “a company that doesn't sell anything,” “litigation
assertion entity” or “nonpracticing entity.” The parties may,
however, refer to Prism’s origins as a practicing company and to
the fact that Prism is no longer a practicing company.
Granted in part, denied in part.
use the following terms about Prism:

T-Mobile shall not

“patent troll,” “patent

assertion entity,” “shake down,” “hold-up,” “stick up,” “ringing
the bell,” “blackmailers,” “greenmailers,” “pirate,” “bounty
hunter,” “privateer,” “bandit,” “paper patent,” “submarine
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patent,” “playing the lawsuit lottery,” or “litigation assertion
entity.”

However, T-Mobile may use the following terms

“a

company that doesn't make anything,” “a company that doesn't sell
anything,”or “nonpracticing entity.”
6) T-Mobile may not argue that Prism has committed
inequitable conduct or failed to disclose prior art to the Patent
Office as T-Mobile has not asserted inequitable conduct as
defense.

T-Mobile may argue that certain references were not

reviewed or considered by the Patent Office.
Granted.
7) T-Mobile may not argue that Prism is trying to
prevent or interfere with T-mobile’s customers receiving data
services, as Prism does not seek an injunction.
Granted.
8) T-Mobile may not introduce any argument, testimony,
evidence or expert opinion that a damages award may increase the
price of T-Mobile’s wireless data services, put T-Mobile out of
business, cause jobs to be lost or negatively impact the quality
and/or price of T-Mobile’s wireless data services.
Granted.
9) T-Mobile cannot present an argument that, because an
unasserted claim was rejected by the PTO during examination, one
or more asserted claim(s) would also be invalid.
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This does not

preclude T-Mobile from referencing the prosecution history of the
asserted claims.
Granted.
10) T-Mobile may not argue that it respects the
intellectual property rights of others and Prism will not refer
to the fact that T-Mobile is often sued for and settles patent
infringement lawsuits.
Deferred until trial.
11) T-Mobile 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.
12) Neither party may present testimony, argument,
evidence or expert opinion regarding pleadings, contentions or
orders from Prism’s other actions against the wireless carriers,
including Prism Technologies, LLC v. AT&T (8:12CV122); Prism
Technologies, LLC v. Sprint Spectrum L.P. d/b/a Sprint PCS
(8:12CV123); Prism Technologies, LLC v. U.S. Cellular Corp.
(8:12CV125); and Prism Technologies, LLC v. Cellco Partnership
d/b/a Verizon Wireless (8:12CV126), with the exception that the
parties may provide context to interpret the AT&T Settlement
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Agreement, such as the damages contentions of the parties to the
AT&T action.
Denied.

Parties may use the prior testimony of an

expert witness from the AT&T or Sprint trials to cross-examine
the same witness in this trial.
13) T-Mobile may not present testimony, argument,
evidence or expert opinion regarding a non-infringing
alternative.
Deferred until Court’s ruling on pending motions
(Filing No. 355 and Filing No. 369).
14) T-Mobile’s damages expert, Christopher Bakewell,
may not present trial testimony or an opinion regarding any noninfringing alternatives.
Deferred until the Court’s ruling on pending motions
(Filing No. 355 and Filing No. 369).
15) T-Mobile’s non-infringement expert, Mr. James
Proctor, may not present trial testimony or an opinion regarding
any non-infringing alternatives.
Deferred until the Court’s ruling on pending motion
(Filing No. 355).

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16) T-Mobile will not call Cameron Byrne or Kirti
Krishnan as witnesses at trial.
Denied as moot.

The Court has ruled on this issue

(Filing No. 447 and Filing No. 457).
17) T-Mobile experts may not present trial testimony or
opinions regarding discussions with Cameron Byrne or Kirti
Kirshnan.
Deferred until trial.
18) T-Mobile’s non-infringement expert, Mr. James
Proctor, may not present trial testimony or an opinion regarding
discussions with T-Mobile engineers that were not disclosed as
individuals likely to have discoverable information during the
fact discovery period.
Deferred until trial.
19) T-Mobile’s non-infringement expert, Mr. James
Proctor, may not present trial testimony or an opinion regarding
discussions with T-Mobile engineers for which he cannot remember
the individual he spoke with or the details of the conversation.
Deferred until trial.
20) Neither party’s fact witnesses will offer expert
testimony under FRE 702.

The parties may offer fact testimony

under FRE 701.
Granted.
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21) T-Mobile may not rely on declarations and/or
affidavits served after the close of fact discovery, including
JDG_PRISM_INV_0022640 - JDG_PRISM_INV_0026487, except for
purposes of authentication.
Granted.
22) T-Mobile cannot refer to or present any evidence of
its own patents, the patents of its experts (beyond as background
to establish the expert’s qualifications), or attempt to use its
invalidity expert, Mr. Proctor, as living prior art.
Deferred until trial.
23) T-Mobile may not present testimony, evidence,
opinion or argument that multiple GSM documents are collectively
an anticipatory reference.
Denied.
24) T-Mobile may not present testimony, evidence,
opinion or argument that the Digital cellular telecommunications
system (Phase 2+) GSM 03.60, European Telecommunications
Standards Institute reference was publicly available before
January 31, 1997.
Denied.

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25) T-Mobile may not present testimony, evidence,
opinion or argument that GSM was in public use within the United
States prior to June 11, 1996.
Denied.
26) T-Mobile may not present testimony, evidence,
opinion or argument that the systems described in the J-STD-0071997 or J-STD-023-1997 (the “PCS 1900 References”) were in public
use within the United States prior to June 11, 1996.
Denied.
27) T-Mobile may not present testimony, evidence,
opinion or argument that a patent must describe every possible
application of its claimed inventions in order to satisfy the
written description or enablement requirements of 35 U.S.C. 112.
Denied.
28) T-Mobile may not introduce, offer testimony, other
evidence, expert opinion, or argument relating to production
documents bearing Bates number TMUS-PRISM0240084 through TMUSPRISM0240671, produced August 19, 2015.
Deferred until the Court’s ruling on pending motion
(Filing No. 355).
29) The parties will not offer testimony, other
evidence, or argument regarding the opposing party’s failure to

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have any other entity appear at trial or call any witness from
any other related entity.
Granted.
II. T-MOBILE’S MOTIONS IN LIMINE
1) Preclude testimony, evidence, or argument regarding
the Sprint verdict.
Denied as moot.

The Court has ruled on this issue

(Filing No. 398).
2) Preclude testimony, evidence, or argument regarding
the AT&T Settlement and License.
Denied as moot.

The Court has ruled on this issue

(Filing No. 278).
3) Preclude testimony, evidence, or argument that the
AT&T Settlement represents an “undiscounted” value of $183
million.
Granted.
4) Preclude testimony, evidence, or argument that AT&T
received a “discount” in connection with the AT&T settlement and
license.
Denied.
5) If the AT&T Settlement and License is mentioned, no
witness should be permitted to testify that all of the

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consideration paid by AT&T related to only two of the 61 patents
for which AT&T obtained licenses.
Denied.
6) Preclude any evidence, argument, or testimony
regarding competitors’ documents or statements made by wireless
carriers other than T-Mobile, to any governmental or nongovernmental organization.
Deferred until trial.
7) Preclude testimony, evidence, or argument regarding
other wireless carriers’ statements about cellular or backhaul
networks, whether with respect to network security or otherwise.
Deferred until trial.
8) Bifurcate the Wi-Fi case from the 3G/4G case.
Denied.
9) Limit plaintiff’s presentation on the macrocellular
network to either 3G or 4G systems through bifurcation.
Denied.
10) Preclude cumulative questioning on infringement.
Deferred until trial.
11) Preclude Lyon from offering multiple, mutually
exclusive infringement theories.
Deferred until trial.

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12) Preclude any expert witness from referring to the
report of another expert witness.
Denied.
13) Preclude any reference to the “infringement” of a
claim element or limitation, thus limiting questions or testimony
regarding “infringement” to the entirety of an asserted claim.
Deferred until trial.
14) Preclude any evidence, argument, or testimony
characterizing T-Mobile’s or any AAV’s backhaul as “infringing.”
Deferred until trial.
15) Preclude Minor from referring to or offering any
opinion on “infringement.”
Deferred until trial.
16) Preclude Minor from offering opinions that T-Mobile
uses IP networks “to provide protected computer resources.”
Deferred until trial.
17) Preclude Minor from offering opinions on T-Mobile’s
roaming network other than with respect to the exchange network
provided by Syniverse.
Denied as moot.

The parties have stipulated to this

issue (See Filing No. 404).

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18) Preclude any evidence, argument, or testimony
that the cost of building, buying, or exclusively leasing
backhaul would exceed two times the cost of leasing backhaul.
Deferred until trial.
19) Preclude any opinion testimony or argument that
the parties would have agreed to a running royalty at a
hypothetical negotiation in February 2012.
Deferred until trial.
20) Preclude statements that a specific entity (as
opposed to a system or network) is part of the Internet.
Denied.
21) Preclude testimony or evidence regarding hacking,
or any argument that networks that are subject to “hacking
attacks” are untrusted.
Denied.
22) Preclude any reference to any specific network,
including the U.S. Military’s or T-Mobile’s networks, having ever
been hacked.
Denied.

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23) Preclude any evidence, argument, or testimony
that whether the “path to access the network” is undefined
depends on the location of the user device or the pathway between
a user device and the accused untrusted network.
Denied.
24) Preclude any evidence, argument, or testimony
that the Court’s claim construction for the Internet Protocol
network terms requires no “single” controlling organization.
Denied.
25) Preclude evidence, argument, or testimony that
the provision of Internet access is a protected resource.
Denied.
26) Precluding any reference during opening statements
to any exhibits that are the subject of dispute regarding
admissibility, to the extent objections to such exhibits have not
been resolved in advance of trial.
Deferred until trial.
27) Preclude Prism from making arguments during opening
statement, including anticipating and rebutting T-Mobile’s
presumed defenses.
Denied.

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28) Preclude reference to any document being
confidential or highly confidential, to the extent those legends
were placed on the documents for production in this litigation.
Deferred until trial.
29) Preclude Prism’s counsel from making introductory
comments to characterize or describe a witness or the testimony
being provided when showing video clips of T-Mobile employees’
deposition testimony.
Granted.
DATED this 5th day of October, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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