Pact XPP Technologies, AG v. Xilinx, Inc., et al

Filing 440

MEMORANDUM ORDER - Signed by Magistrate Judge Roy S. Payne on 8/27/2013. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PACT XPP TECHNOLOGIES, AG
v.
XILINX, INC., et al.

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Case No. 2:07-CV-563-RSP

MEMORANDUM ORDER
Before the Court is Defendants’ Motion for a New Trial (Dkt. No. 398, filed June 25,
2012). Defendants request a new trial on the issues of infringement, willful infringement, and
invalidity on the grounds that the Defendants were substantially prejudiced by the improper
exclusion of evidence. (Mot. at 2.) PACT argues that Defendants are not entitled to a new trial
because the evidence was properly excluded and Defendants cannot demonstrate any prejudice
resulting from the evidence’s exclusion. (Resp. at 1-2.)
APPLICABLE LAW
After a jury trial, the Court may grant a new trial on all or some issues “for any reason for
which a new trial has heretofore been granted in an action at law in federal court.” Fed. R. Civ.
P. 59(a). “A new trial may be granted, for example, if the district court finds the verdict is
against the weight of the evidence, the damages awarded are excessive, the trial was unfair, or
prejudicial error was committed in its course.” Smith v. Transworld Drilling Co., 773 F.2d 610,
612-13 (5th Cir. 1985). “Any error in the admission or exclusion of evidence ‘should not be the
basis for setting aside the judgment’ unless ‘the substantial rights of the parties were affected.’”
Retractable Tech., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296 (Fed. Cir. 2011) (quoting
EEOC v. Manville Sales Corp., 27 F.3d 1089, 1093 (5th Cir. 1994)).

DISCUSSION
1. Exclusion of Statements from the Reexamination History
Defendants sought to introduce statements made by the patentee during reexamination
that they contend demonstrate the meaning of the term “permanent,” and illustrate how the
patent was allowed over the prior art at issue in the reexamination. (Mot. at 2-7.) “Permanent”
is a term that the parties included in their agreed upon construction for the claim term “interface”
and “interface unit,” and the terms appear in all of the asserted claims.
The Court has considered the parties’ arguments and finds that the evidence was properly
excluded. Defendants concede that the entire reexamination history was admitted into evidence.
Therefore, Defendants are seeking a new trial on the basis that some questions and
demonstratives based on the reexamination history were excluded. During the trial, the Court
found that the relevance of the excluded demonstratives and evidence was substantially
outweighed by the danger of misleading the jury to consider whether the patentee disclaimed
certain meanings of the term “permanent.”

However, whether statements made during

prosecution had the effect of disclaiming claim scope is a claim construction issue for the Court
to decide, and disputes over the proper scope and construction of the claims should not be
presented to a jury for resolution in the first instance. O2 Micro Int’l Ltd. v. Beyond Innov. Tech.
Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
Although Defendants had notice of how PACT intended to prove that the agreed claim
construction was met by the accused products,1 Defendants did not present the alleged dispute
over the meaning of the agreed construction to the Court for resolution, and instead sought to
argue its position directly to the jury. In these circumstances, any prejudice from the exclusion
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For example, PACT’s expert was asked questions directed to his understanding of the
meaning of “interface unit” and its application to the accused products at his deposition.

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of its claim construction argument resulted from Defendants’ failure to seek timely and proper
relief from the Court.
2. Exclusion of DX48 and DX912
Defendants object to the exclusion of DX48, and the English-language translation of the
exhibit, DX912. The exhibit is an internal PACT email sent by Markus Weinhardt to Martin
Vorbach. Defendants offered the exhibit to impeach the following portion of Mr. Vorbach’s
testimony during cross-examination:
Q. Okay. And you’re denying you sent [the DSP48 manual] to one
of your engineers to be examined?
A. I recall it differently.
(5/14 p.m. Trial Tr. 98:10-12.) PACT objected to admitting the exhibit on the grounds that it
was not proper impeachment.
The Court has reviewed DX48/912 and finds that it is not proper impeachment evidence.
DX48/912 does not indicate that Mr. Vorbach sent the manual to the engineer.

At trial,

Defendants failed to identify any other proper purpose for its admission. (See 5/14 p.m. Trial Tr.
98:1-102:21 (bench argument).)

Therefore, the Court finds that DX48/912 was properly

excluded. Even if DX48/912 was improperly excluded, Defendants were not prejudiced from its
exclusion because Defendants were permitted to impeach Mr. Vorbach using his deposition
testimony, where he admitted to sending the DSP48 manual to the engineer. (Id. at 103:8104:18.)
3. Exclusion of DX484
DX484 is a copy of U.S. Patent No. 5,594,367, which issued to Xilinx engineer and trial
witness Dr. Stephen Trimberger. Defendants included the ‘367 patent as a prior art reference in
Dr. McAlexander’s expert report regarding invalidity. PACT moved to strike the ‘367 patent

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from the report on the grounds that it was not timely disclosed in Defendants’ invalidity
contentions. The Court considered all of the arguments advanced by Defendants to justify the
late disclosure of the ‘367 patent and other references, and concluded that Defendants failed to
show good cause to justify their failure to timely disclose the ‘367 patent and the other
references. (Order, Dkt. No. 169 at 2-3.) Accordingly, the Court ordered that “Defendants are
also precluded from introducing or relying upon these references as prior art invalidating the
asserted patents.” (Id.)
Defendants also argued that they timely disclosed the ‘367 patent in their disclosure
pursuant to Federal Rule of Civil Procedure 26(a)(2)(C) for Dr. Trimberger.

Defendants

represented to the Court that the ‘367 patent would be used as “background art . . . for other
purposes, such as evidence of Xilinx’s history of innovation and its independent research and
development of products, or as evidence to rebut allegations by Plaintiff regarding secondary
considerations of non-obviousness, willful infringement, and copying.” (Id. at 4.) The Court
agreed to permit only these uses for the ‘367 patent. (Id. at 4-5.)
During the course of Dr. Trimberger’s testimony, PACT objected to the continued use of
the ‘367 patent because it was being presented as prior art. After overruling several of PACT’s
objections, it became apparent to the Court that the ‘367 patent was “being used for invalidity,
which is a purpose for which it has already been disallowed, and its other uses have simply
proven too confusing to the jury.” (5/16 p.m. Trial Tr. 3:9-15.)
The Court has considered the parties’ arguments and finds that the ‘367 patent was
properly excluded. Defendants did not, at the time of trial or in the present motion, demonstrate
to the Court that the probative value of the ‘367 patent was not substantially outweighed by the
danger of the jury using the ‘367 patent for an improper purpose. The Court agrees with PACT

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that the ‘367 patent is only marginally relevant, if at all, to the issue of infringement because the
law requires that the jury compare the accused products to the properly construed claims of the
asserted patents. With respect to willfulness, PACT never alleged that Defendants copied, and
PACT’s closing argument specifically mentioned that PACT did not allege any copying. With
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respect to invalidity, Defendants do not offer any explanation of how their presentation of the
DeHon and PCI Standard (the only prior art presented to the jury) was prejudiced by the
exclusion of further testimony regarding the ‘367 patent. With respect to Xilinx’s history of
innovation and independent research, there was certainly more than ample evidence that Xilinx
has introduced many technical innovations of its own.
CONCLUSION
Having failed to demonstrate that the complained of evidence was improperly excluded
or that Defendants were prejudiced by the improper exclusion of evidence, Defendants’ Motion
for a New Trial (Dkt. No. 398) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 27th day of August, 2013.

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ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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