CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP, LTD. et al

Filing 614

MEMORANDUM ORDER indicating that Plaintiff's Motion in Limine No. 2 to Preclude Irrelevant or Highly Prejudicial Evidence or Argument, 496 is DENIED. Signed by Judge Nora Barry Fischer on 11/7/12. (lks)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
CARNEGIE MELLON UNIVERSITY,

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Plaintiff,
vs.
MARVELL TECHNOLOGY GROUP, LTD.
et al.,
Defendants.

Civil Action No. 09-290
Judge Nora Barry Fischer

MEMORANDUM ORDER

This patent infringement action is set to commence jury selection and trial on November
26, 2012. The parties have filed a number of motions in limine seeking pretrial rulings on the
admissibility of certain evidence at trial. Presently pending before the Court is Plaintiff Carnegie
Mellon University (CMU)’s “Motion in Limine No. 2 to Preclude Irrelevant or Highly
Prejudicial Evidence or Argument,” (Docket No. 496). CMU argues that evidence regarding
dropped or changed claims or accused products, Defendant’s Kavcic email exhibit, Mr.
Hoffman’s testimony regarding DSSC agreements not produced, invalidity testimony of Dr.
Kryder, and whether the inventors withheld prior art are all irrelevant evidence and issues that
would unfairly prejudice CMU and create confusion for the jury. (Docket No. 497). Defendant
Marvell Technology Group (“Marvell”) opposes this motion, arguing that changed claims, the
Kavcic email, and the withholding of prior art are relevant to the issue of willfulness/copying,
and that Dr. Kryder is technically competent. (Docket No. 568). The Court heard argument on
the motion during its hearing on October 17 and 18, 2012. (Docket Nos. 579, 590, 591). For the
following reasons, CMU’s motion [496] is DENIED.

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Here throughout this case, CMU alleges that Marvell has infringed two of its patents,
U.S. Patent Nos. 6,201,839 (the “‘839 Patent”) and 6,438,180 (the “‘180 Patent”) (collectively,
the “CMU Patents”).1 The patents-in-suit are generally directed to sequence detection in high
density magnetic recording devices, and more specifically, to high density magnetic recording
sequence detectors. See ‘839 Patent 1:20-23. Both patents claim priority to a May 9, 1997
provisional application. See ‘839 Patent; ‘180 Patent. The ‘180 Patent is a continuation-in-part
of the ‘839 Patent. See ‘180 Patent. CMU intends to prove that Marvell’s infringement was
willful. (Docket No. 461)
Previously, in Marvell’s “Motion in Limine No. D3 Re: Precluding CMU from
Introducing Evidence of Willfulness”, it argued all evidence of willfulness should not be
presented to the jury unless the Court rules that CMU has met an objective showing of willful
infringement. (Docket No. 485, 486). The Court denied the Motion while reserving its ruling on
the issue of objective willfulness. (Docket No. 601).
CMU in this Motion, attempts to preclude Marvell from offering evidence regarding (1)
dropped or changed claims or accused products; (2) Defendants’ Exhibit 189 (an email from Dr.
Kavcic) (3) testimony from Mr. Hoffman or other Marvell witnesses regarding additional DSSC
agreements that allegedly were not produced; (4) testimony of Dr. Kryder as it relates to validity
of the CMU Patents; and (5) whether the inventors withheld prior art from the PTO. (Docket
No. 496). CMU contends that reference to changes to the accused products or asserted claims are
not probative of invalidity or infringement and would be prejudicial to CMU in the eyes of the
jury. (Docket No. 497 at 2). Next, since the Court found Dr. Kavcic’s email2 irrelevant at claim
1

As the parties are well aware of the factual and procedural background of this case, the Court

2

Both parties are well aware of the contents of the Kavcic email in question. The email is a
discussion between Dr. Kavcic and Gregory Silvus of Seagate in 2001, in which Dr. Kavcic
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construction, CMU moves to have this email precluded at trial as well.3 (Id. at 2-3). Third,
CMU argued that Marvell’s damages expert Mr. Hoffman should be precluded from stating that
CMU had failed to produce all relevant DSSC agreements. 4 (Id. at 3). Fourth, CMU contends
Dr. Kryder’s testimony is inadmissible under Fed. R. Evid. 701, since he is not a digital signal
processing expert and was not designated to testify regarding validity. (Docket Nos. 497 at 4-5,.
590 at 142). Fifth, CMU maintains evidence and argument regarding Dr. Kavcic’s failure to
disclose certain prior art references to the Patent Office, is irrelevant in light of the dismissal of
Marvell’s inequitable conduct claims and defenses. (Id. at 5).
In reply, Marvell initially argues that dropped or changed claims and/or products, rebut
CMU’s claims of copying and willfulness, specifically in regards to the objective prong of the
willfulness test under Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1310-1311. (Fed.
Cir. 2011). (Docket No. 556 at 1). Second, it proffers that Dr. Kavcic’s email is relevant to its
defenses of lack of written description and enablement, and as contrary evidence to use during
cross examination of the inventors. (Id. at 2). As noted in footnote 4, Marvell and CMU agree,
CMU’s third point is moot. Fourth, Marvell argues Dr. Kryder, while not an “expert”, he can be
questioned on the inventions and prior art as a lay witness, since those subjects are rationally
within his perception given his background and position, and his testimony may be helpful to the
states his patent does not use a post processor. The exhibit has been labeled several different
ways, but for the purposes of this motion it is Docket No. 497 Ex. 2.
3

In its claims construction opinion, the Court gave “no weight to this email as it is of the type of
extrinsic evidence that the PHOSITA could not be aware of since it is a personal email and it
post-dates the filing and issuance of the ‘839 Patent. Furthermore, the email is contradicted by
the intrinsic evidence, as discussed below, therefore even if the PHOSITA were aware of the
contents of the email, it would be disregarded in favor of the conclusions that would be drawn
from the intrinsic record.” (Docket No. 175).
4
Marvell in its opposition brief states it does not intend to argue that CMU had not produced all
DSSC agreements (Docket No. 556 at 3), therefore, CMU did not argue this at the October 1718, 2012 hearing. (Docket No. 590 at 132-133).
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jury in determining invalidity. See Fed. R. Evid. 701. (Docket Nos. 556 at 4; 590 at 154). Fifth,
Marvell states that while it will not allege any deceptive intent, the decision by Dr. Kavcic not to
disclose certain prior art goes to the inventor’s understanding of the patent and to the issues of
infringement, willfulness, written description and enablement. (Docket No. 556 at 5).
Pursuant to Federal Rule of Evidence 401, district courts are instructed to generally admit
all evidence having “any tendency” to make the existence of a material fact “more probable or
less probable than it would be without the evidence.” FED. R. EVID. 401;5 United States v.
Friedman, 658 F.3d 342, 355 (3d Cir. 2011); Moyer v. United Dominion Industries, Inc., 473
F.3d 532 (3d Cir. 2007) (quoting Gibson v. Mayor & Council of Wilmington, 355 F.3d 215, 232
(3d Cir. 2004) (“The definition of relevant evidence is very broad and that Rule 401 does not
raise a high standard.”). Further, a district court may reject the evidence only if the probative
value of the evidence is substantially outweighed by its tendency to prejudice a party or cause
delay at trial. FED. R. EVID. 403;6 Toledo Mack Sales & Service, Inc. v. Mack Trucks, Inc., 386
F.App’x. 214, 218 (3d Cir. 2010) (“A district court is accorded wide discretion in determining
the admissibility of evidence under the Federal Rules.”).
First, the Court agrees with Marvell that evidence of dropped or changed claims or
products shows the reasonableness of its infringement “defenses”. Such evidence is relevant to
the objective prong of willful infringement wherein CMU must prove whether the infringer acted
despite an objectively high likelihood that its actions constituted infringement of a valid patent.”

“Relevant evidence” means “evidence having any tendency to make the existence of any fact that is of
consequence to the determination of the action more probable or less probable than it would be without
the evidence.” FED. R. EVID. 401.
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“Although relevant, evidence may be excluded if its probative value is substantially outweighed by the
danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue
delay, waste of time, or needless presentation of cumulative evidence.” FED. R. EVID. 403.
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4

Bard 682 F.3d at 1005 (quoting In re Seagate Technology LLC, 497 F.3d 1360, 1368-71 (Fed.
Cir. 2007)(en banc) (see Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d 150, 176-179
(D.R.I. 2009), aff’d in relevant part, 632 F.3d 1292, 1310-1311 (Fed. Cir. 2011))7. The Court’s
ruling on Marvell’s Motion D3 allows the parties to present evidence of alleged willful
infringement to the jury. (Docket No. 601). Therefore, CMU’s motion will be denied to the
extent that it seeks to exclude evidence of dropped or changed claims.
Second, in regards to the Kavcic’s email, the Court finds this email relevant given that
the Plaintiff, CMU, intends to call Dr. Kavcic as a witness to testify regarding his invention and
his opinions on same. (Docket No. 461 at 2, 12). To the extent CMU presents argument
regarding the invention and the inventor’s understanding of the patent, this email is relevant
“since it has a tendency to make the existence of any fact that is of consequence to the
determination of the action more probable or less probable than it would be without the
evidence.” FED. R. EVID. 401. Therefore, CMU’s motion will be denied to the extent that it
seeks to exclude Dr. Kavcic’s email (Docket No. 497 Ex. 2).
Third, both parties have agreed that CMU’s third argument is moot. (Docket No. 556 at
3; 590 at 132-133). Therefore, CMU’s motion will be denied as moot to the extent that it seeks
to exclude testimony from Mr. Hoffman or other Marvell witnesses regarding additional DSSC
agreements that allegedly were not produced.

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The Court finds i4i Ltd. P'ship v. Microsoft Corp., unpersuasive on this point, since the
evidence was only irrelevant since Microsoft does not argue (and did not argue to the jury) “that
any of these “defenses” would have been apparent and considered by a reasonable person in
Microsoft's position prior to its infringing activity”. 670 F. Supp. 2d 568, 582 (E.D. Tex. 2009)
aff'd as modified, 589 F.3d 1246 (Fed. Cir. 2009) opinion withdrawn and superseded on reh'g,
598 F.3d 831 (Fed. Cir. 2010) aff'd, 131 S. Ct. 2238, 180 L. Ed. 2d 131 (U.S. 2011). Marvell
does not plan to waive such argument at trial. (Docket 590 at 149).

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Fourth, in regards to the testimony of Dr. Kryder, the Federal Rules of Evidence state that
“if the witness is not testifying as an expert, the witness' testimony in the form of opinions or
inferences is limited to those opinions or inferences which are (a) rationally based on the
perception of the witness, (b) helpful to a clear understanding of the witness' testimony or the
determination of a fact in issue, and (c) not based on scientific, technical, or other specialized
knowledge within the scope of Rule 702.” Fed. R. Evid. 701. The Court finds Dr. Kryder’s
testimony is admissible given the Third Circuit has recognized that “[t]he modern trend favors
the admission of [lay] opinion testimony, provided that it is well founded on personal knowledge
and susceptible to specific cross-examination.” Autoforge, Inc. v. Am. Axle & Mfg., Inc., 2008
WL 65603 (W.D. Pa. Jan. 4, 2008) (citing Teen-Ed, Inc. v. Kimball Int'l, Inc., 620 F.2d 399, 403
(3d Cir.1980)).

The Court finds Dr. Kryder’s opinions regarding the patents-in-suit to be

founded on personal knowledge, given that he was named on the CMU Technology Transfer
Office Disclosure of Invention Form as a “professional from the CMU community who would be
best suited to evaluate the technical and commercial merits of this technology” by the inventors.
(Docket No. 556 Ex. 2). The credibility and persuasiveness of Dr. Kryder's testimony will be an
issue for trial where “vigorous cross-examination, presentation of contrary evidence, and careful
instruction as to burden of proof are the traditional and appropriate means of attacking shaky but
admissible evidence.” Simon v. Weissmann, 301 F. App'x 107, 116 (3d Cir. 2008) (quoting
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993)).

Further , the Court will

not evaluate at this stage the impact, if any, of Dr. Kryder's testimony, because generally a
motion in limine is to decide the admissibility of evidence, not argue the weight of evidence. See
Emcore Corp. v. Optium Corp., No. 07-236, 2009 WL 3381809 at *1 (W.D. Pa. Oct. 16, 2009)
(“[p]urpose of such motion is to avoid injection into trial of matters which are irrelevant,

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inadmissible, and prejudicial....”)(quoting BLACK'S LAW DICTIONARY 1013 (6th ed.1990)).
Therefore, CMU’s motion will be denied to the extent that it seeks to exclude Dr. Kryder’s
testimony.
Fifth, in regards to evidence of prior art not disclosed to the PTO by Dr. Kavcic, the
Court notes again that CMU, intends to call Dr. Kavcic as a witness to testify to his invention
and his opinions on same. (Docket No. 461 at 2, 12). To the extent, CMU presents argument
regarding the invention and the inventor’s understanding of the patent, this evidence is relevant
“since it has a tendency to make the existence of any fact that is of consequence to the
determination of the action more probable or less probable than it would be without the
evidence.” FED. R. EVID. 401. Further, the Court finds little danger of unfair prejudice or
confusion to the jury since Marvell has stated through its counsel that it will not assert deceptive
intent. (Docket 556 at 5).
CMU’s motion (Docket No. 496) is therefore DENIED.
s/ Nora Barry Fischer
Nora Barry Fischer
U.S. District Judge
Date: November 7, 2012
cc/ecf: All counsel of record.

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