Impulse Technology Ltd. v. Nintendo of America, Inc. et al

Filing 133

Order and Opinion: Denying Nintendo's motion to strike 104 , and denying as moot Impulse's motion to compel [Doc. 119 ]. This court also grants the parties' 124 motion to seal Docs. 106-2 and 106-5. Judge James S. Gwin on 10/1/2012. (P,G)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
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IMPULSE TECHNOLOGY LTD.,
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Plaintiff,
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vs.
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NINTENDO OF AMERICA, INC., et al.
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Defendants.
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CASE NO. 1:11-CV-2519

ORDER & OPINION
[Resolving Docs. Nos. 104, 119 & 124]

JAMES S. GWIN, UNITED STATES DISTRICT JUDGE:
Defendant Nintendo of America, Inc. (“Nintendo”) moves this Court to strike portions of
Edward Gussin’s declaration. [Doc. 104.] Plaintiff Impulse Technology (“Impulse”) moves this
Court to compel Nintendo’s production of confidential non-party document. [Doc. 119.] For the
reasons discussed below, this Court DENIES Nintendo’s motion to strike and DENIES AS MOOT
Impulse’s motion to compel. This Court also GRANTS the parties’ motion to seal Docs. 106-2 and
106-5. [Doc. 124.]
I. Nintendo’s Motion to Strike
Nintendo asks this Court to strike portions of the declaration of Edward Gussin. Impulse
submitted Gussin’s declaration in support of its claim construction brief. Nintendo contends that
Gussin is qualified to discuss claim terms concerning his specialty, electrical engineering, but not
claim terms concerning physiology.
Impulse responds with two main arguments. First, it argues that evidentiary rules that limit
the scope of an expert’s testimony are specific to those situations in which the testimony is used to
prove the existence of a fact. Impulse maintains that because claim construction is a question of law,

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Gwin, J.
Federal Rule of Evidence 702, along with Daubert and its progeny, are inapplicable. Second,
Impulse argues that if Rule 702 is applicable to Gussin’s declaration, then the declaration’s content
was within his expertise.
It appears that Impulse’s first argument is correct. See Pitney-Bowles, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1308 n.2 (Fed. Cir. 1999) (“[R]ule 702’s gatekeeper function, as
discussed in Kumho Tire, relates solely to the admissibility of evidence—a separate issue to claim
construction.”). Indeed, the Federal Circuit’s discussions of Rule 702 in the context of claim
construction seem to relate to the rule’s applicability of expert testimony at trial. See, e.g., i4i
P’ship v. Microsoft Corp., 598 F.3d 831, 853 (Fed. Cir. 2010) (“At trial, the parties hotly disputed
the correctness [of the expert’s testimony].”); Micro Chem. v. Lextron, Inc., 317 F.3d 1387, 1392
(Fed. Cir. 2003) (“The defendants contend that the district court in this case failed to perform its
gatekeeping duties when it allowed Fiorito to testify.”).
As Impulse points out, Nintendo cites no supporting precedent for its contention that Rule
702 is applicable to a declaration in support of a claim construction brief. Rather, Nintendo simply
states that “[t]he rule is common sense.” [Doc. 104 at 2.] This Court disagrees.
II. Impulse’s Motion to Compel
Impulse moves this Court to compel Nintendo to produce “Non-Party Confidential
Documents, including, but not limited to, the MPEG-4 Patent License Agreement between Nintendo
Co., Ltd. and VIA Technologies, Inc. (“VIA”).” Impulse contends that it needs such documents in
order to accurately assess its damages. It also asks that any order that this Court grants should
extend to other Defendants who refuse to produce third party licenses.
This Court need not reach this issue, because as pointed out in Nintendo’s response, VIA has
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Gwin, J.
granted consent and Nintendo has produced the license. The question is therefore moot.
III. Conclusion
For the reasons discussed below, this Court DENIES Nintendo’s motion to strike [Doc. 104],
and DENIES AS MOOT Impulse’s motion to compel [Doc. 119]. This Court also GRANTS the
parties’ motion to seal Docs. 106-2 and 106-5. [Doc. 124.]
IT IS SO ORDERED.

Dated: September 26, 2012

s/
James S. Gwin
JAMES S. GWIN
UNITED STATES DISTRICT JUDGE

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