Paone v. Microsoft Corporation

Filing 256

MEMORANDUM OF DECISION AND ORDER - It is hereby ORDERED that the Defendant Microsofts 230 motion for reconsideration of its Motion in Limine No. 4 and the Plaintiff Paones Motions in Limine Nos. 4 and 5 is denied. So Ordered by Judge Arthur D. Spatt on 8/9/2013. (Coleman, Laurie)

FILED 
CLERK 

8/9/2013 2:52 pm

U.S. DISTRICT COURT 
EASTERN DISTRICT OF NEW YORK 
LONG ISLAND OFFICE 

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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LUCIANO F. PAONE,
MEMORANDUM OF
DECISIONAND ORDER
Plaintiff,
No. 07-CV-2973 (ADS)
V.
MICROSOFT CORPORATION,
Defendant.
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APPEARANCES:
Kirkland & Ellis LLP
Attorneys for the Plaintiff
153 East 53rd Street
New York, NY 10022
By: Andrew Gordon Heinz, Esq.
Jeanne M. Heffernan, Esq.
John Michael Desmarais, Esq.
Jon Todd Hohenthaner, Esq.
Benjamin Adam Lasky, Esq.
Ryan Charles Micallef, Esq.
Elizabeth Theresa Bernard, Esq.
Jonathan Ross Carter, Esq.
Kenneth R. Adamo, Esq.
Gianni L. Cutri, Esq. of Counsel
Woodcock and Washburn LLP
Attorneys for the Defendant
2929 Arch Street, 12th Floor
Philadelphia, PA 19104-2891
By: Dale M. Heist, Esq.
Daniel J. Goettle, Esq.
John E. McGlynn, Esq.
John F. Murphy, Esq.
Steven J. Rocci, Esq., of Counsel
Westerman, Ball, Ederer, Miller & Sharfstein, LLP
Attorneys for the Defendant
1201 RXR Plaza
Uniondale, NY 11556
By: Greg S. Zucker, Esq.
Jeffrey A. Miller, Esq., of Counsel

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SPATT, District Judge.
In this patent infringement case, the Plaintiff Luciano F. Paone (the “Plaintiff” or
“Paone”) alleges that the Defendant Microsoft Corporation (“Microsoft”) has infringed
United States Patent 6,259,789 (the “#789 Patent”), which Paone holds. Presently before
the Court is a motion by Microsoft for an order pursuant to Local Rule 6.3 for
reconsideration of this Court’s rulings on Plaintiff’s Motions in Limine Nos. 4 and 5, and
Defendant’s Motion in Limine No. 4.
I. BACKGROUND
A. Background of the Invention
On July 10, 2001, the United States Patent and Trademark Office (“PTO”) to
Paone the #789 Patent, entitled “Computer Implemented Secret Object Key Block Cipher
Encryption and Digital Signature Device and Method,” to Paone. The #789 Patent
describes a method of translating (or “encrypting”) ordinary data (called “plaintext”) into
encoded data (called “ciphertext”), so that the plaintext may not be viewed by an
unintended reader. In cryptography, which is the science of encryption, such a method is
called a “cipher.” Generally, encrypted ciphertext is later decoded, or “decrypted,” into
plaintext, so that the data is again usable.
There are several ways to encrypt computer data, but the #789 Patent deals
exclusively with “symmetric key” encryption of computer data, which requires that the
encryptor and decryptor share knowledge of both a cipher and a key. Computer based
symmetric key ciphers divide roughly into two types: block ciphers and stream ciphers.
As a general matter, a stream cipher employs its key to encrypt data one bit at a time,

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while a block cipher employs its key to encrypt bits in groups. The #789 Patent describes
a block cipher.
Computer implemented block ciphers have been in wide use in the United States
since at least 1976, when a block cipher called the “Data Encryption Standard” or “DES”
was adopted by the United States government for general use. As of 1997, when Paone
filed his patent application, dozens of additional block encryption algorithms had been
published. However, most of those inventions used a single key to encrypt successive
blocks of data. Paone’s innovation – in the most general terms – was to change the
encryption key for each data block, based on additional, randomly generated data.
B. Procedural History
On December 12, 1997, Paone filed his application for the #789 Patent.
Following the initial application, the PTO rejected Paone’s claims as unpatentable in
three successive office actions, dated September 29, 1999, March 16, 2000, and October
30, 2000. In response to each of these rejections, Paone modified his claims and
provided additional argument. Then, on July 10, 2001, the PTO deemed the described
invention patentable, and issued the #789 Patent.
On July 23, 2007, Paone commenced the present action against Microsoft,
alleging that Microsoft was infringing the #789 Patent. Specifically, Paone asserts that
two components of Microsoft’s flagship computer operating system, Windows, infringe
the #789 Patent.
The parties proceeded with discovery, during which time Microsoft requested that
the PTO reexamine the #789 Patent. In early 2009, with the reexamination proceeding
still pending, the parties briefed claim construction motions. However, before holding a

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Markman hearing, on April 5, 2009, the Court stayed the case pending the resolution of
the reexamination proceeding. Then, before the stay was lifted, Microsoft filed two more
reexamination requests, dated June 29, 2009, and July 17, 2009. The three reexamination
proceedings as a whole resulted in the cancellation of claims 1, 3, 23, and 32 of the #789
Patent, but also a ruling that several claims, including claims 2, 24, 33, and 34, were
patentable. After certain amendments, a number of other claims were also found to be
patentable.
After the reexamination proceedings had been finalized, on March 3, 2010, the
Court lifted its stay. Partly as a result of the reexamination proceedings, Paone modified
his position to assert that Microsoft was infringing claims 2, 24, 33, and 34 of the #789
Patent, all of which had been ruled patentable by the PTO.
It is crucial to note that claims 2 and 33 in the ‘789 Patent are method claims. See
In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002) (“the distinction between a claim to a
product, device, or apparatus, all of which are tangible items, and a claim to a process,
which consists of a series of acts or steps.”); see also NTP, Inc. v. Research In Motion,
Ltd., 418 F.3d 1282, 1322 (Fed. Cir. 2005) (“The invention recited in a method claim is
the performance of the recited steps.”). In the Federal Circuit, it is “axiomatic that a
method claim is directly infringed only if each step of the claimed method is performed.”
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008).
Paone alleges that both of the method claims are infringed by both TKIP and
BitLocker. On the other hand, 24 and 34 are system claims, and not method claims.
Paone asserts that both of these claims are infringed, but only by TKIP and not by
BitLocker.

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Upon the lifting of the stay, the parties resumed their claim construction motions.
Then, on the consent of the parties, on April 23, 2010, the Court appointed Gale R.
Peterson, Esq., an experienced and well-regarded patent attorney, as a special master for
the limited purpose of conducting a Markman hearing and issuing a report and
recommendation to the Court on claim construction.
Prior to the Markman hearing, the parties presented nine claim terms for
construction. However, after meeting and conferring at the suggestion of the Special
Master, the parties agreed on meanings for three of those terms.
On June 23, 2010, Special Master Peterson conducted a non-evidentiary Markman
hearing, at which the parties’ attorneys presented their arguments on claim construction.
On August 11, 2010, Special Master Peterson issued an extensive and detailed Report
and Recommendation on claim construction (the “Special Master’s Report”). Thereafter,
both Paone and Microsoft filed objections to the Special Master’s Report.
On February 9, 2011, the Court, adopting in part and rejecting in part the Special
Master’s Report, issued a decision construing these six claim terms (the “Markman
Order”).
1. As to the Motion for Summary Judgment
On December 21, 2011, Microsoft filed a motion for summary judgment
requesting a determination of non-infringement. Microsoft alleged that neither of its
accused technologies – TKIP and BitLocker – fell within the claim boundaries of the
#789 Patent set by the Court’s previous Markman Order. Microsoft’s arguments centered
on three claim limitations; two of the limitations are found in all four claims, one of the
limitations is found in only two claims.

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On July 30, 2012, the Court (1) granted the motion for summary judgment
requesting a finding of no literal infringement as to the block and block cipher limitation
in all the claims; (2) denied the motion for summary judgment requesting a finding of no
infringement as to the block and block cipher limitation in all claims under the doctrine
of equivalents; (3) denied the motion for summary judgment requesting a finding of no
infringement as to the object key limitation in all the claims; and (4) granted the motion
for summary judgment as to claims 2 and 33.
With respect to part (1) of the summary judgment decision, the Court noted that,
in order for Microsoft to literally infringe the relevant claims of the #789 Patent, the
blocks in TKIP’s encryption would need to have a fixed length that does not vary from
block-to-block. The Court found that where one MAC Protocol Data Unit (“MPDU”) is
not the same length as every other MPDU, TKIP would not be infringing. The Court
reasoned that when all but one of the MPDUs are of uniform length, they are not fixed
with respect to the length of each block, as the #789 Patent claims have been construed to
mean.
However, the Court recognized two scenarios which TKIP allows: one in which
the MPDU blocks are all of equal length, and one in which the MPDU blocks are not of
equal length. The Court addressed whether the potential permutation of the TKIP
encryption protocol, in which the data file has a length that is an exact multiple of the
fragmentation constraint, resulting in MPDUs of equal length, would be infringing. This
issue required the Court to determine whether capability alone of TKIP to result in blocks
of uniform equal length would be sufficient for a finding of infringement, since the
Plaintiff failed to demonstrate a single instance of this actually happening. In this regard,

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the Court found that Paone failed to satisfy the minimal burden that TKIP was in reality
even capable of meeting the “blocks” limitation, and that Paone thus failed to establish a
genuine issue of material fact regarding literal infringement with respect to TKIP.
Accordingly, the Court granted the Defendant’s motion for summary judgment as to the
literal infringement of the four claims.
With respect to part (2) of the summary judgment decision, the Court noted that,
in order to meet the block limitation under the doctrine of equivalents, it would have to
find that the accused method or system contains each limitation of the claim or its
equivalent. The Court stated that it could not determine whether the differences between
the “block” limitation and the MPDUs were insubstantial as a matter of law. The Court
found that the question of whether the doctrine of equivalents is applicable to the MPDUs
in the TKIP component was properly left to the jury, and thus did not impose vitiation.
Therefore, the Court denied the Defendant’s motion for summary judgment on this
ground.
With respect to part (3) of the summary judgment decision, the Court stated that it
could not resolve technical questions as matters of law, and thus concluded that the
Defendant had not met its burden in demonstrating that there were no issues of material
fact pertaining to whether TKIP contains an “object key.”
With respect to part (4) of the summary judgment decision, the Court explained
that prosecution history estoppel might limit the range of equivalents covered by a
particular patent claim when that claim has been distinguished from prior art during
prosecution and thus potentially narrowed in scope. The Court noted that such has been
the case with the #789 Patent, whose original claim 1, upon rejection by the Patent Office

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for failing to distinguish itself over prior art, was amended to include five additional
steps, including the “repeating step.” The Court found that Paone added the “repeating
step” to narrow the claim’s scope in order to secure his patent, and thus there was a
presumption against the availability of the doctrine of equivalents.
Nevertheless, the Court noted that Paone could rebut this presumption by showing
that the rationale for the narrowing amendment was not directly relevant to the alleged
equivalent. However, the Court found that Paone did not meet this burden because he
added the additional steps to distinguish the claimed invention from prior art, and did not
make apparent that his additional arguments were made for a peripheral purpose. Thus,
the Court held that Paone was barred by prosecution history estoppel from asserting
infringement under the doctrine of equivalents as to the “repeating step” limitation.
2. As to Motions in Limine
On January 25, 2013, the Plaintiff filed motions in limine to (1) exclude evidence
or testimony regarding claim constructions other than the final constructions; (2) exclude
evidence or testimony concerning any alleged investigation by Microsoft in response to
Paone’s pre-suit letter; (3) preclude Microsoft from presenting any invalidity theories
outside those explicitly disclosed in Dr. Dan Boneh’s March 11, 2011 supplemental
invalidity report; (4) exclude evidence or testimony concerning unasserted, dismissed, or
cancelled claims; (5) exclude argument, evidence, and/or testimony regarding BitLocker;
(6) exclude correspondence with Microsoft in which they sought identification of at least
one product and algorithm that is being charged with infringement; (7) exclude Dr.
Boneh’s testimony regarding indirect infringement under “incorrect” legal standards; (8)
exclude the misstatement by Dr. Boneh that the Patent Examiner’s failure to mention a

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particular claim element in the Reasons for Patentability on reexamination implies that
the Examiner found that claim element to be disclosed in the prior art; (9) exclude Dr.
Boneh’s testimony regarding Microsoft’s sales and distribution practices; (10) prevent
Microsoft from communicating to the jury that it had noninfringing substitutes for TKIP;
(11) exclude testimony of Dr. Boneh concerning the comparative testing of the
encryption speed of Paone’s “SafeCourrier” software and other encryption tools;
(12) exclude Microsoft from presenting its patent portfolio for purposes other than to
demonstrate its pre-suit knowledge of the #789 Patent; (13) exclude the memorandum
and testimony of Bruce Schneier, the author of a prior art reference relied upon by
Microsoft for invalidity purposes, regarding his perceived value of ciphers; and (14)
preclude Microsoft from presenting at trial any argument, evidence, and/or testimony that
Paone could have, but did not, sue other entities that sell TKIP technologies.
On January 25, 2013, the Defendant filed motions in limine to (1) preclude Paone
from presenting evidence, argument, or testimony of direct infringement by Microsoft;
(2) preclude Paone from presenting evidence of contributory infringement with respect to
any Microsoft Windows client and server software; (3) preclude any expert from
testifying outside the scope of any expert report; (4) preclude evidence, argument, or
testimony regarding Microsoft’s decision not to rely on an exculpatory opinion of
counsel; (5) preclude evidence, argument, or testimony of any antitrust or European
Union competition litigations involving Microsoft; (6) preclude as irrelevant and
misleading Paone’s technical expert Dr. Michael Blaze’s report entitled “Two Practical
and Provably Secure Block Ciphers: Bear and Lion;” (7) preclude Paone and his damages
expert from presenting evidence, argument, or testimony regarding Georgia-Pacific Corp.

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v. United States Plywood Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970), modified
and aff'd, 446 F.2d 295 (2d Cir. 1971), factors 2, 6, and 8; (8) preclude Paone from
presenting evidence, argument, or testimony suggesting that Microsoft copied Paone’s
invention; (9) exclude testimony of Paone’s damages expert Wayne Hoeberlein; (10)
strike or exclude the testimony Dr. Blaze.
On February 26, 2013, the Court granted the Plaintiff’s (1) first motion in limine
to exclude evidence or testimony regarding other nonfinal claim constructions, subject to
any event or condition during trial, which may call for the introduction of such evidence;
(2) second motion in limine to exclude evidence or testimony from Microsoft concerning
any investigative steps that Microsoft allegedly took in response to the pre-suit letter
from Paone; (3) third motion in limine to exclude Microsoft from presenting any
invalidity theories outside those explicitly disclosed in Dr. Boneh’s March 11, 2011
supplemental invalidity report; (4) fourth motion in limine to exclude evidence or
testimony concerning unasserted, dismissed, or cancelled claims; (5) fifth motion in
limine to exclude evidence or testimony regarding BitLocker because it was no longer a
remaining issue; (6) sixth motion in limine to exclude correspondence with Microsoft in
which they sought identification of at least one product and algorithm that is being
charged with infringement; (7) tenth motion in limine, in part, to exclude testimony or
evidence that Microsoft had noninfringing substitutes for TKIP and that it could have
avoided infringement by offloading TKIP functionality in products to third parties;
(8) thirteenth motion in limine to exclude Bruce Schneier’s memorandum and testimony
regarding his perceived value of ciphers; and (9) fourteenth motion in limine to preclude

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Microsoft from presenting argument, evidence, and/or testimony concerning Paone’s lack
of suit against other TKIP technologies.
The Court denied the Plaintiff’s (1) eighth motion to exclude the misstatement by
Dr. Boneh of reasons for patentability on reexamination; and (2) eleventh motion to
exclude testimony by Dr. Boneh concerning the comparative testing of the “SafeCourier”
Software.
The Court reserved decision on the Plaintiff’s (1) seventh motion to exclude Dr.
Boneh’s testimony regarding indirect infringement; (2) ninth motion to exclude Dr.
Boneh’s testimony regarding Microsoft’s sales and distribution practices; (3) tenth
motion, in part, as to evidence or testimony concerning alleged noninfringing substitutes
for TKIP; and (3) twelfth motion to exclude Microsoft from presenting its own patents
except as relevant to its pre-suit knowledge of the #789 Patent.
With respect to the Defendant’s Motions in Limine, the Court granted in part the
Defendant’s fifth motion to preclude evidence, argument, or testimony of any antitrust or
European Union competition litigations involving Microsoft. However, the Court also
found that the Plaintiff should be entitled to present evidence or testimony concerning
Microsoft’s prior domestic litigation in the context of its expert’s report on damages.
With regard to the United States litigation, the Court found that the Plaintiff should be
entitled to present agreements in the Microsoft Communications Protocol Program
(“MCPP”) itself, but that there is no need to explain that the MCPP was developed as a
result of Microsoft’s antitrust litigation.
The Court denied the Defendant’s (1) first motion to preclude Paone from
presenting evidence, argument, or testimony of direct infringement by Microsoft; (2)

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second motion to preclude Paone from presenting evidence of contributory infringement
with respect to any Microsoft Windows client and server software; (3) fourth motion to
preclude evidence, argument, or testimony regarding Microsoft’s decision not to rely on
an exculpatory opinion of counsel; (4) sixth motion to preclude as irrelevant and
misleading Dr. Blaze’s report (5) seventh motion to preclude Paone and Hoeberlein, from
presenting evidence, argument, or testimony about the Georgia-Pacific factors 2, 6, and 8;
(6) eighth motion to preclude Paone from presenting evidence, argument, or testimony
suggesting that Microsoft copied Paone’s invention; (7) ninth motion to strike/exclude
the testimony by Hoeberlein; and (8) tenth motion to strike/exclude the testimony of Dr.
Blaze.
The Court reserved decision on the Defendant’s third motion to preclude any
expert from testifying outside the scope of any expert report on the basis that the precise
scope of Dr. Blaze’s expert testimony was something that could not be determined at the
time of the decision.
On March 12, 2013, the Defendant Microsoft filed the instant motion for
reconsideration of Plaintiff’s Motions in Limine Nos. 4 and 5 and Defendant’s Motion in
Limine No. 4.
II. DISCUSSION
A. Legal Standard on a Motion for Reconsideration
A motion for reconsideration is governed by Local Rule 6.3 and Federal Rule of
Civil Procedure 59(e) (“Fed. R. Civ. P.”). Reconsideration is “narrowly construed and
strictly applied so as to avoid repetitive arguments on issues that have been considered
fully by the Court.” Dellefave v. Access Temps., Inc., No. 99 Civ. 6090, 2001 U.S. Dist.

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LEXIS 3165, at *1 (S.D.N.Y. Mar. 22, 2001). Thus, “a motion for reconsideration
should be granted only where the moving party demonstrates that the Court has
overlooked factual matters or controlling precedent that were presented to it on the
underlying motion and that would have changed its decision.” In re Worldcom, Inc.
Securities Litigation, 308 F. Supp. 2d 214, 224 (S.D.N.Y. 2004); Colodney v. Continuum
Health Partners, Inc., No. 03-7276, 2004 WL 1857568, at *1 (S.D.N.Y. Aug 18, 2004).
B. Microsoft’s Motion for Reconsideration
1. As to Plaintiff’s Motions in Limine Nos. 4 and 5
The Defendant contends that evidence or testimony concerning cancelled,
unasserted, or dismissed claims (Motion in Limine No. 4) is relevant with respect to
Microsoft’s defense of Paone’s willfulness allegations. The Defendant further contends
that the exclusion of evidence or testimony regarding BitLocker (Motion in Limine No. 5)
prevents it from introducing evidence at the trial of the Plaintiff’s numerous infringement
theories that have been unsuccessful. The Defendant believes that the Plaintiff will
attempt to persuade the Court that Microsoft knew or should have known of the
likelihood that Microsoft’s TKIP infringed claims 24 and 34 of the #789 Patent. In this
regard, the Defendant assumes the Plaintiff will introduce letters to Microsoft suggesting
licensing of the #789 Patent. Consequently, Microsoft believes it should be able to
introduce evidence that the Plaintiff’s infringement allegations did not initially focus on
TKIP; have changed over time; and that the Court rejected certain relevant allegations
during summary judgment, leaving the Plaintiff with only two doctrine of equivalents
claims.

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In opposition, Paone contends that Microsoft, in an attempt to seek
reconsideration of the Court’s decisions, has presented new arguments, supported by new
authority, not presented in its original motion. Paone asserts that this action is improper
on a motion for reconsideration, and provides ample precedent to that effect. See Gayle v.
Harry’s Nurses Registry, Inc., No. 07-CV-4672, 2010 WL 5477727, at *3 (E.D.N.Y. Dec
20, 2010) (“Further, reconsideration is not appropriate because all of the arguments and
evidence that Defendants now wish to submit was available to them at the time of the
Liability Decision.”). Furthermore, Microsoft contends that, on the merits, Paone makes
allegations irrelevant to the issue of willfulness, including the objective and subjective
willfulness prongs.
In the Court’s view, if Paone seeks to present evidence of Microsoft’s inability to
mount a substantial defense, Microsoft would want to point to the rulings that have
limited Paone to the two doctrine of equivalents claims. However, the Court has held
that prior assertions of infringement against BitLocker, and any evidence of unasserted,
dismissed, or cancelled claims is not relevant to the remaining claims. The Court’s grant
of summary judgment with respect to claims 2 and 33 does not bear on the
reasonableness of Microsoft’s defenses with respect to the different and unrelated TKIP
technology that remains in this suit. Accordingly, the Court adheres to its prior
determination that the aforementioned evidence be excluded under Federal Rule of
Evidence 402.
2. As to Defendant’s Motion in Limine No. 4
With respect to the denial of Defendant’s Motion in Limine No. 4, the Defendant
contends that admitting evidence, argument, or testimony regarding its decision not to

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rely on an exculpatory opinion of counsel, rather than assert an advice-of-counsel defense
to willful infringement, would invite a jury to draw an improper adverse inference from
this decision. The Defendant relies on en banc decisions of the Federal Circuit to show
that asserting privilege to maintain client confidentiality may not lead to an adverse
inference with respect to the nature of that advice. Knorr-Bremse v. Dana Corp., 383
F.3d 1337, 1344-45 (Fed. Cir. 2004) (“However, the assertion of attorney-client and/or
work-product privilege and the withholding of the advice of counsel shall no longer entail
an adverse inference as to the nature of that advice.”); Aspex Eyewear Inc. v. Clariti
Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010) (“The district court stated that this court’s
ruling in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), made clear that
there is no automatic obligation to obtain or present an exculpatory opinion of counsel in
order to avoid ‘willful’ infringement.”). The Defendant further points out that when an
opinion of counsel is not used as a defense to willful infringement, it does not follow that
there is a presumption that the party knew it was infringing a valid patent. This is
precisely what Microsoft asserts the denial of Motion in Limine No. 4 allows Paone to do.
Microsoft thus contends that Paone should be precluded from suggesting that Microsoft
failed to obtain an opinion of counsel, or is failing to disclose it because it is unfavorable.
In opposition, the Plaintiff contends that Microsoft made the same arguments, and
has relied on the same authorities, as it did when the Court previously rejected
Microsoft’s Motion in Limine No. 4. Paone contends that the Defendant simply seeks a
second chance to present the same three arguments that the: (1) Court’s previous ruling
allows Paone to invite a jury to draw an impermissible inference; (2) In re Seagate
Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), which held that there is no affirmative

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obligation to obtain an opinion of counsel, forecloses the Court’s previous ruling; and (3)
Spectralytics, Inc. v. Norman Noble, Inc., 649 F.3d 1336 (Fed. Cir. 2009), which held
that a failure to obtain an opinion of counsel was not probative of willfulness, but could
be considered by the Court after willful infringement is established, is at odds with the
Court’s prior ruling.
In denying Microsoft’s Motion in Limine No. 4, the Court acknowledged In re
Seagate, which stands for the proposition that there must be “objective recklessness” on
the part of an alleged infringer before failure to obtain an exculpatory opinion of counsel
can establish willful infringement. In that case, the Court set forth a new process for
determining whether an infringer’s conduct was objectively willful. First, the patentee
must show by clear and convincing evidence that the infringer acted despite an
objectively high likelihood that its actions constituted infringement of a valid patent.
Second, the patentee must also demonstrate that this objectively-defined risk was either
known or so obvious that it should have been known to the accused infringer. Thus, the
failure to obtain an opinion of counsel is only relevant to the second prong of the willful
infringement analysis.
Here, the Court previously held that the failure to produce an exculpatory opinion
of counsel may be considered, in the totality of the circumstances, as relevant to the issue
of willful infringement. In so holding, the Court relied on Aspex Eyewear Inc. v. Clariti
Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010), a patent infringement case where the
court held that the patentee Aspex was equitably estopped from bringing an infringement
claim after it was silent for a period of three years and five months after Clariti denied

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infringement. The Aspex Court further reasoned that timely consultation with counsel
may be evidence that an infringer did not engage in objectively reckless behavior.
In its motion for reconsideration, Microsoft merely repeats the arguments that the
Court previously rejected. For this reason, the Court declines to disturb its earlier
determination and the Defendant’s motion for reconsideration on its Motion in Limine
No. 4 is denied.
III. CONCLUSION
For the foregoing reasons, it is hereby
ORDERED that the Defendant Microsoft’s motion for reconsideration of its
Motion in Limine No. 4 and the Plaintiff Paone’s Motions in Limine Nos. 4 and 5 is
denied.

SO ORDERED.
Dated: Central Islip, New York
August 9, 2013
Arthur D. Spatt
Arthur D. Spatt
United States District Judge

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