Polaris IP, LLC v. Google Inc. et al

Filing 573

RESPONSE to Motion re 446 SEALED MOTION in Limine 9 (joint) (Supplemental Brief In Support Of Its Response) filed by Bright Response LLC. (Attachments: # 1 Affidavit Wiley Decl, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Wiley, Elizabeth)

Polaris IP, LLC v. Google Inc. et al

Doc. 573 Att. 4

EXHIBIT C

Dockets.Justia.com

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going to be reference to patent trolls, pirates, or playing the lawsuit lottery or corporate shell game, but it's denied otherwise. 23 is granted. 24 is granted. 25 is granted. 26 is granted. 27 is granted. 28 is granted. 29 is granted. 30 is granted. 31 is granted. I'll hear argument on 32, and argument on Plaintiff's 33. Defendant's Joint Motion No. 1 is denied. No. 2 is denied. No. 3 is denied. 4 is denied. 5 is granted. 6 is denied. 7, I'm going to hear argument on the prior settlement agreements. 8, likewise, I'm going to hear argument on that issue. 9 is granted as agreed. That deals with

would -- would preclude that. 10 is denied. 11 is -- is that agreed as to all parties, the -- with respect to induced and contributory infringement? MR. FENSTER: Yes, it is, Your Honor. THE COURT: All right. That's granted as agreed. 12 is granted as agreed. 13, you will -- I'm going to deny it as a motion in limine, but you're going to get an order on summary judgment that answers that question, okay? Google and AOL's additional motions in limine, I'll hear argument on No. 1. I'm granting No. 2 with respect to overall size and revenue. You need to tailor your testimony to revenues and profitability of the accused systems. 3 is granted as to discovery, any conduct in discovery. If you've got certain things you want to offer in front of the jury, you need to approach the bench before you -- you launch into discovery misconduct, okay? MR. FENSTER: Yes. Can that be mutual, Your Honor? THE COURT: It's going to be, yes, sir.

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re-examinations. Is there any -- as I read the papers, the defendant wants to offer certain portions of the re-exam or the defendants do, as well as the plaintiff; is that correct? MR. FENSTER: That's my understanding, Your Honor. MR. VERHOEVEN: Yes, Your Honor. THE COURT: All right. Well, then I'm going to leave it to y'all to object to the extent you think that side or the other is going beyond what's relevant, and I'll just take up relevancy objections at the time of trial, okay, but I'm not going to grant it -- I'm -in other words, I'm not going to grant a motion in limine barring introduction of re-examination proceedings, okay? If either side goes too far, since y'all both want parts of it in, then y'all just need to object at the time of trial, okay? MR. FENSTER: Yes, Your Honor. Just to clarify, nobody has moved, neither side, to exclude or bar any testimony. THE COURT: I understand. I just want the record to be clear in light of what I'm sure is out there in other cases, okay? MR. FENSTER: Thank you. THE COURT: Because I, you know, typically

MR. FENSTER: Thank you, Your Honor. THE COURT: No. 4, with respect to the expert's analysis in the Function Media case, I'm denying that motion in limine. I'm going to allow you to use the conversion of the Stanford-Google agreement, okay? Otherwise, it's granted with respect to references to any other litigation. Yahoo!'s motion in limine, total revenue, that's granted to the same extent as it was against Google. You can use revenues of the accused products and systems and profitability insofar as damages calculations are concerned, but you're not going to launch into what their -- their total revenues are, even at the time of the hypothetical negotiation. You need to instruct your damages expert that I'm not going to allow that, okay? I mean, I think the jury is going to have a fair understanding of the relative bargaining power between the parties, all right? No. 2, I'll hear argument on the admissibility of the Stanford license against Yahoo!. 3, I'll hear argument on. 4 is granted. 5 is granted as agreed. Go back to the plaintiff's motions in limine. Let's talk about this fact -- Branting as a

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to grant the motions in limine. I think there's a companion one from Yahoo! to avoid using the Google agreement as part of the computation of damages against Yahoo!. I'm going to -- those types of licenses need to be directed toward the respective parties that entered into them for purposes of supporting those damages award. I'll give a limiting instruction to the jury to consider them only for that purpose, but it's -- I'm, you know -- it's going to be incumbent upon the defendants to give me a limiting instruction that they want me to read to the jury, okay? MS. CANDIDO: Yes, Your Honor. THE COURT: That takes care of No. 2 on Yahoo!'s, I believe, and No. 3. MR. ROOKLIDGE: Your Honor, No. 3 -Yahoo!'s Motion in Limine No. 3, we can -- we can focus -- sharpen the focus to what's it about, and plaintiff identified correctly what it was about in their opposition, and that's Yahoo!'s/Overture portfolio patent licenses. Their expert relies upon Yahoo! and its predecessor, Overture's, out licensing of a large portfolio of patents. There are about 20 U.S. patents and some 50 published applications, foreign -- foreign applications that make up a portfolio of patents. That

MR. ROOKLIDGE: Thank you, Your Honor. THE COURT: Yes, sir? MR. FENSTER: Your Honor, may I ask for the opportunity -- you've given us your ruling with respect to one motion in limine, and I would like to ask for the opportunity to argue Motion in Limine No. 5 for plaintiff, and that's the only one. THE COURT: Forgive me, I don't have those memorized. MR. FENSTER: Your Honor, that is to preclude defendants on relying on the CBR manuals -THE COURT: Right. MR. FENSTER: -- that were recently discovered. THE COURT: Right. MR. FENSTER: Your Honor, the basis for this is we discovered last week in the deposition of Bradley Allen, who is a prior art inventor retained by defendants, that these CBR manuals were -- became known to defendants in March of 2010. And, specifically, Mr. Allen didn't have them but he referred the defense counsel to Mr. -- to Bruce Clayton, who is the person who we believe supplied the CBR manuals. Mr. Allen testified that he disclosed Bruce Clayton, who was the head of documents at

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is the patents that was foundation to -- or that covered the technology that was foundation to a company called Overture. Overture was the company that was supplying to Yahoo! the sponsored search service. Yahoo! eventually acquired Overture and its sponsor search service, and then later that sponsored search service became the service that is -- is what is accused of infringement here today. There was a large portfolio of patents that were related to that sponsored search service, and Overture and now Yahoo! have been very successful in licensing out that large portfolio. Because it is a large portfolio of patents that are fundamental to an entire business, we believe that that is completely noncomparable, although the technology may be much closer because of the fact of the place of Overture, the place of its patent portfolio in the industry, and the number of those patents, it cannot be comparable, and it's not been demonstrated to be comparable, and, therefore, they shouldn't be able to rely on those. THE COURT: I'm probably going to get a little better handle on exactly what's licensed on that on Monday after jury selection, okay? I'm going to carry this -- this, as well.

Inference, which is the company in which they worked and -THE COURT: Listen, I don't mean to cut you off, but this is one of those issues, it's just not a motion in limine. I'll take it up Monday after jury selection whether or not they're allowed to use the CBR manuals. I'm not ruling definitively one way or the other on whether they're going to be allowed to do that. I'm just -- I mean, it seems to me going through the motions that it was -- I mean, it's just one that I can handle as -- as part of the evidentiary hearing, okay? I'm -MR. FENSTER: Very well, Your Honor. THE COURT: All right? MR. FENSTER: May I just narrow the case for you? THE COURT: Of course. MR. FENSTER: Your Honor, in light of the motions in limine, plaintiffs will not be pursuing Claims 28 and 38, and we will -- we're also -- in light of -- in order to minimize -- to streamline the case for trial and in light of the small damages associated with defendant AOL, we're seeking to dismiss AOL. We're trying to work that out with the defendant -- with defendant AOL, but we are trying to -- to accomplish

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that. THE COURT: 28 and 38? MR. FENSTER: Yes, Your Honor. So the claims at issue will be 30, 31, and 33. THE COURT: All right. MR. FENSTER: Thank you, Your Honor. THE COURT: All right. I want to hear some argument on the -- yes. MR. VERHOEVEN: I was just going to say, Your Honor, this is the very first time we've ever heard this, and I don't understand, I sat here through the whole hearing, how dropping those relate to your rulings on motions in limine. However, we'll -- if they're dropping certain claims, the reason I'm standing up is we need to go back and evaluate how that may affect -- you were asking questions about how long we need for trial and whatnot, and so we would need to go back and look at that, Your Honor. THE COURT: Okay. MR. ROOKLIDGE: Your Honor, it also relates to a motion that I believe you granted earlier, which is not being able to refer to claims that have been dropped. What this does is dramatically narrows the

MR. VERHOEVEN: As I'm reading what they've done, knowing the re-exam, they've just dropped the claims in which the examiner has said that Allen anticipates. THE COURT: Okay. MR. VERHOEVEN: And so that changes the ball -- that changes the ballpark for us in terms of re-exams. You know, we had a situation before where there was something helpful for them they wanted to put in. There's something that we wanted to point out. Now they've dropped that part of their case at the last second for the stuff that we want to point out, and that would make entering the re-exams prejudicial for us. I haven't even talked to my client about that, Your Honor, but I just wanted to highlight that. That may be something that -- I know Your Honor's normal course is to not allow re-exams. Here we had a stipulation based on an understanding that they were asserting these claims. Well, now they're not, and so we don't have a stipulation anymore. MR. FENSTER: And -THE COURT: Well, are y'all going to assert invalidity of these claims over references -MR. VERHOEVEN: We certainly have

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scope of their claims, and now we've got to go back and look at the design-arounds that our experts have talked about because design-around suddenly becomes a lot simpler in view of narrowing the claims of infringement. So it's certainly kind of thrown us into a -- into a quandary, particularly not being able to refer to the -- the dropping of those claims. THE COURT: Okay. MR. FENSTER: Your Honor, none of the design-arounds relate to any of those claims. The design-arounds that Mr. Rooklidge is referring to relate to the classifying step of Claim 28. All of the asserted Claims, 30, 31, 32, they're -THE COURT: Still have the classifying step in them. MR. FENSTER: Yes, Your Honor, because they're dependent on 28. THE COURT: Right. MR. FENSTER: Thank you. MR. VERHOEVEN: There is one thing -- sorry to bother you, Your Honor, but there is one thing that just did occur to me off the top of my head, and that is on the motion in limine relating to the re-exam, Your Honor. THE COURT: Uh-huh.

declaratory relief -THE COURT: -- that were addressed in the -well, hold on a second there. MR. VERHOEVEN: Sorry, Your Honor. THE COURT: Are you asserting invalidity over references that were asserted in the re-exam? MR. VERHOEVEN: We're asserting invalidity on the -- one reference, the Allen reference. It wasn't cited in the re-exam, Your Honor, but in the spec -- I'm sorry, it was cited in the re-exam. It wasn't cited in the original patent. I may have misunderstood the question, Your Honor. What was the question? THE COURT: Well, my question is are you going to -- are you going to argue that these are invalid based on references that were -- that the PTO considered during the re-exam and confirmed these claims to be patentable over? MR. VERHOEVEN: What we were intending to do, Your Honor, was when Claims 28 and by dependent upon that with 26 or dependent upon 26, so 26, 28, and 38, which depended upon those, the examiner found in the re-exam that those -- that 28 and 26 were anticipated, okay? And so the plaintiff wants to talk about

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re-exams, and we thought, well, if they want to talk about re-exams, there's stuff in the re-exams that actually is helpful for us, and so when that -- when those claims were in the case, Your Honor -THE COURT: Well, y'all filed a motion to admit evidence of re-exam, as I remember, and they agreed to it. MR. VERHOEVEN: We filed a motion based on the -- but we assumed that they were asserting these claims, Your Honor, and all I'm pointing out is these claims are no longer asserted. Now, we have declaratory relief claims on those very claims. We have to go back and talk to our client about that, but I just wanted to highlight, that changes the background for that particular motion in limine. THE COURT: I understand. I understand. I'm going to grant -- well, y'all tell me what you want to do before jury selection, if you want to -MR. VERHOEVEN: I will, Your Honor. Thank you. THE COURT: Yeah. And if -- well, Mr. -- is your decision, abandon those claims, contingent on allowing evidence of re-exam? MR. FENSTER: Yes, sir. Yes, Your Honor. If you're going to keep -- if Your Honor is inclined to

I mean, you need to limit his testimony in front of the jury as I've indicated in connection with the motions in limine. He's not entitled to testify in front of the jury that his rate against Google is derived from the royalty agreements that were entered into with you and vice versa, okay? MR. FENSTER: I understand. MR. ROOKLIDGE: And, Your Honor, that just makes clear -- or, excuse me. MR. FENSTER: Excuse me. MR. ROOKLIDGE: The Court isn't allowing a new damages report from Dr. Becker. He's just -- he's just not able to -- to consider those pieces of evidence and testify about those; is that correct? THE COURT: Well, he's not able to testify in front of the jury that his rate is founded or derived or relies on the royalty agreements that were entered by the -- by the other defendant. MR. ROOKLIDGE: Thank you, Your Honor. THE COURT: Okay. Now, I don't know what you're going to do with him on cross, but, I mean, that's up to you. MR. ROOKLIDGE: Thank you. THE COURT: So... MR. FENSTER: In light of Your Honor's

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exclude the re-exam, then we'll keep 28 and 38 in. I do want to answer the Court's question posed to Mr. Verhoeven, and that is, yes, we think it's still relevant because defendants are seeking to invalidate the claims at issue in light of prior art that's been considered in the re-exam. THE COURT: You want to show what the -that the PTO actually considered those references -MR. FENSTER: That's right. THE COURT: -- at least once and maybe twice? MR. FENSTER: That's right, three times, actually. THE COURT: Okay. Well, maybe. Okay. All right. Well, I'll -- I'll let him tell me what they're -- what they want to do, and I'll decide that on Monday. MR. VERHOEVEN: Thank you, Your Honor. MR. FENSTER: Your Honor, in light of the Court's rulings with respect to damages, you did change the scope of what Dr. Becker relied on. Can we revise Dr. Becker's opinion to accord with the Court's ruling relying only on the Yahoo! information and Google and so forth? THE COURT: Yes. Yeah, I mean, well, you --

rulings on the motion in limine, can we assume that the motion to strike is moot? I think that the defendants have filed a motion to strike Dr. Becker's report because of issues similar to -THE COURT: It's moot. MR. FENSTER: Thank you, Your Honor. THE COURT: I want to hear some argument on the production of this -- two things, this affidavit. What is the status of the other two affidavits that -- I think it's Angotti refers to in his declaration. MR. SPANGLER: Yes, Your Honor. As to your direct question, we're still seeking those other two declarations. We contacted Latham and Watkins and Mr. Spangenberg specifically who was the attorney that first worked with Angotti when Latham and Watkins took over and became outside counsel of record. He and Mr. Sean Pak were the lawyers handling the day-to-day. We contacted him. We asked for what he had. We said, "Keep looking." He said he's going to continue to keep looking, but he has not provided it to us to date. THE COURT: Here's my problem, is, you know, I accept your representations that this was unintentional, but if the shoe was on the other foot, I know sure as I am sitting here, you would be up in arms

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