SynQor Inc. v. Vicor Corporation

Filing 606

Preliminary ORDER on Motions in Limine granting in part and denying in part 538 Sealed Motion; granting in part and denying in part 546 Sealed Motion; granting 552 Sealed Motion. Signed by Magistrate Judge James Boone Baxter on 09/09/2022. (nlp, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SYNQOR, INC.
V.
VICOR CORPORATION

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No. 2:14-CV-287-RWS-JBB

PRELIMINARY ORDER ON MOTIONS IN LIMINE
In advance of the pretrial conference set for October 6, 2022 at 10:00 a.m., the Court issues
the following order on the parties’ pending motions in limine (Dkt. Nos. 538, 546) and the joint
agreed motion in limine (Dkt. No. 552). All rulings on the motions in limine are preliminary and
are not final evidentiary rulings. To the extent the Court grants an in limine item, the parties are
instructed to approach the bench before addressing the issue in front of the jury. To the extent an
in limine item is denied, the parties must make their objection for the record at trial.
SYNQOR’S MOTION IN LIMINE (Dkt. No. 538)
1)

Preclude Vicor from offering evidence concerning any alleged good faith belief in
invalidity or non-infringement, including by suggesting that any alleged good faith
belief is bolstered by Vicor’s filing of its Complaint For Declaratory Judgment,
Vicor’s positions in this suit, or any positions it took in reexaminations
The Court, having considered the parties’ positions, is of the opinion this in limine item

should be, and is therefore, GRANTED-IN-PART and DENIED-IN-PART as follows.

SynQor offers two reasons in support of this in limine item: (1) Vicor has not disclosed an
opinion of counsel defense (Vicor served a privilege log listing an opinion of counsel dated August
22, 2011, but Vicor listed no related documents and produced no documents subject to a claim oF
privilege); and (2) lay testimony from Vicor’s principal and CEO, Patrizio Vinciarelli, as to
Vicor’s allege good faith beliefs in invalidity or non-infringement would be improper because Dr.
Vinciarelli did not submit an expert report and his intended testimony uses privilege as a sword
and shield. Dkt. No. 538 at 1-2. On the first issue, Vicor represents it does not intend to rely upon
an opinion of counsel at trial because it previously withheld this opinion on the grounds of
attorney-client privilege and work product protection. Dkt. No. 574 at 1. For this reason, Vicor
asserts the Court should also preclude SynQor from mentioning Vicor’s opinion of counsel to the
jury, presenting documents to the jury concerning the opinion of counsel, or making any argument
regarding Vicor’s opinion of counsel or a lack of an opinion of counsel.
On the second issue, Vicor asserts Dr. Vinciarelli’s firsthand knowledge regarding Vicor’s
good faith belief in non-infringement and invalidity is squarely within his personal knowledge and
relevant to Vicor’s defense to the indirect liability and willfulness issues. Dkt. No. 574 at 1-2.
The first part of SynQor’s in limine item is GRANTED as modified. Given Vicor’s
decision to make no disclosure pursuant to Patent Rule 3-7, Vicor is precluded from arguing or
suggesting to the jury that, based on advice or input from counsel, it had a good faith belief in noninfringement or invalidity, including through the testimony of Dr. Vinciarelli. Additionally, as set
forth in the Court’s ruling on Vicor’s in limine request 6, SynQor is permitted to introduce evidence
or arguments regarding the fact that Vicor is not relying on an opinion of counsel at trial, but
SynQor cannot indicate Vicor had an affirmative duty to seek an opinion of counsel, that any

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adverse inference should be drawn as to what the content of an opinion of counsel is/would have
been, or that Vicor withheld an opinion of counsel on privilege grounds.
The second part of SynQor’s in limine item is GRANTED-IN-PART and DENIED-INPART. Dr. Vinciarelli may not provide any invalidity or non-infringement analysis or opinions
that would require an expert report under FED. R. EVID. 702. Maxell, Ltd. v. Apple Inc., Civil Action
No. 5:19-CV-00036-RWS, 2021 WL 3021253, at *3 (E.D. Tex. Feb. 26, 2021). However, Dr.
Vinciarelli is allowed to testify as to issues within his personal knowledge – separate and apart
from any advice of counsel (or any other testimony related to subjects to which he claimed any
privilege) – regarding the design and development process of Vicor’s products, what actions Vicor
took upon learning of these patents, and how and why Vicor formed its alleged good faith belief
that the patents were not infringed. This would include Vicor’s decision to file its declaratory
judgment action in January 2011. Dkt. No. 383-20.
SynQor may raise an objection at trial to any testimony it feels is unduly prejudicial, and
the Court will entertain proposals for a limiting instruction, if necessary.
2)

Preclude Vicor from offering testimony from non-expert witness Dr. Stiegerwald on
the scope and content of the prior art
This in limine item is GRANTED-IN-PART and DENIED-IN-PART as follows. Non-

expert witness Dr. Steigerwald, the named inventor on asserted prior art patents, may not opine on
what the prior art references would teach a hypothetical person skilled in the art, what a person of
ordinary skill would have been motivated to do or could have done based on that teaching, what
the meaning of any claim terms are (even if they appear in his own patents), or what is disclosed

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by the claims of the patents. 1 However, he may provide facts regarding his own patents and prior
art as topics within his personal knowledge. Maxell, Ltd. v. Apple Inc., Civil Action No. 5:19-CV00036-RWS, 2021 WL 3021253, at *1–2 (E.D. Tex. Feb. 26, 2021). Dr. Steigerwald may testify
regarding his background and experience in order to provide an appropriate foundation for his fact
testimony. Id. (citing FED. R. EVID. 602 (a witness must lay a foundation establishing personal
knowledge of the facts forming the basis of his or her testimony)). Vicor shall not refer to Dr.
Steigerwald as an expert witness, and Dr. Steigerwald may not provide any opinions that deviate
from his personal knowledge or would require an expert report under FED. R. EVID. 702. Id. (citing
FED. R. EVID. 701).
SynQor may raise an objection at trial to any testimony it feels is unduly prejudicial, and
the Court will entertain proposals for a limiting instruction regarding Dr. Steigerwald’s role as a
fact witness, if necessary.
3)

Preclude Vicor from offering testimony from non-expert witness Dr. Vinciarelli on
the scope and content of the prior art
This in limine item is GRANTED-IN-PART and DENIED-IN-PART. Dr. Vinciarelli

may not offer opinion testimony regarding the prior art disclosures as they relate to the asserted
claims in the context of Vicor’s belief that the patents-in-suit are invalid or the meaning of claim
terms. However, as noted above, Dr. Vinciarelli may testify as a lay witness based on his personal
knowledge regarding the power converter technology at issue and the relevant state of the art at
the time of the claimed inventions. Dr. Vinciarelli may testify regarding his background and
experience in order to provide an appropriate foundation for his fact testimony. See FED. R. EVID.

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According to Vicor, Dr. Steigerwald does not compare the prior art to SynQor’s asserted patents or otherwise offer
expert invalidity opinions. Dkt. No. 574 at 9.

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602 (a witness must lay a foundation establishing personal knowledge of the facts forming the
basis of his or her testimony). Dr. Vinciarelli may not provide any opinions that deviate from his
personal knowledge or would require an expert report under FED. R. EVID. 702. FED. R. EVID. 701.
SynQor may raise an objection at trial to any testimony it feels is unduly prejudicial, and
the Court will entertain proposals for a limiting instruction regarding Dr. Vinciarelli’s role as a
fact witness, if necessary.
4)

Preclude argument and evidence regarding reexamination proceedings
This in limine item is GRANTED-IN-PART and DENIED-IN-PART as follows.
Vicor seeks to present evidence and argument regarding the reexamination proceedings

initiated by Vicor and ’497 defendant Murata Corp. against any patent claim that is or was asserted
against Vicor in this case. Although the probative value of evidence relating to an ongoing
reexamination can be substantially outweighed by its prejudicial effect, all of the ’702 patent
reexaminations are complete. Similarly, certain claims of the ’190 patent were found anticipated
by the Federal Circuit. See SynQor, Inc. v. Vicor Corp., No. 2019-1704 (Fed. Cir. Feb. 22, 2021).
According to Vicor, while other issues regarding the ’190 patent have been remanded and are still
under reexamination, the anticipatory finding of certain claims of the ’190 patent have resulted in
those claims being cancelled once and for all. Vicor claims the extensive reexaminations, resulting
in the cancellation of many previously asserted claims and one entire patent, are also highly
relevant to SynQor’s willfulness allegations, consideration of nonobviousness for all the remaining
patent claims, and damages. Dkt. No. 574 at 15-16 (citing Dkt. No. 574-9 (Magistrate Judge
Everingham allowing in the ‘497 case certain of defendants’ exhibits related to the reexamination
materials, but limiting their use to willful infringement); also citing Dkt. No. 579-10 (SynQor’s
motion to dismiss its willfulness claim and exclude evidence of reexaminations based on concerns
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of jury confusion and undue prejudice)). Only after SynQor dropped its claim of willful
infringement were the reexaminations ultimately excluded.
The Court does not find, as urged by SynQor, that any probative value of the
reexaminations is now outweighed by the risk of jury confusion. However, for the reasons stated
below regarding SynQor’s in limine item 5, the Court does preclude Vicor from presenting
evidence and argument regarding the reexamination proceedings initiated by Vicor and Murata
against any patent claim SynQor was formally, but is no longer, asserting against Vicor in this
case.
5)

Preclude argument and evidence regarding the validity of unasserted patents and
claims
The Court, having considered the parties’ positions, is of the opinion this in limine item

should be, and is therefore, GRANTED. To the extent willfulness remains in the case, Vicor may
approach the bench to seek leave to address the invalidation of any unasserted claims.
6)

Preclude argument and evidence that the asserted claims require “cross-coupled”
controlled rectifiers
The Court reserves its ruling on this in limine request following oral argument at the pretrial

conference.
7)

Preclude argument and evidence that the asserted claims exclude “resonant
converters”
The Court reserves its ruling on this in limine request following oral argument at the pretrial

conference.
8)

Preclude Vicor from presenting arguments and evidence directed to the allegations
set forth in Vicor’s state law counterclaims
The Court reserves its ruling on this in limine request following oral argument at the pretrial

conference.
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9)

Preclude evidence relating to, and arguments regarding, SynQor not assigning value
to the ’54 case
The Court, having considered the parties’ positions, is of the opinion this in limine item

should be, and is therefore, GRANTED.
VICOR’S MOTION IN LIMINE (Dkt. No. 546)
1)

Preclude evidence, argument, or testimony regarding non-comparable litigation
results
Pursuant to Federal Rule of Evidence 401 through 403, Vicor requests the Court preclude

SynQor from referencing non-comparable litigation results, including (1) the damages award from
Civil Action No. 2:07-CV-00497-TJW-CE (“the ‘497 case”), (2) the May 17, 2011 settlement
agreement with Ericsson, Inc., (3) post-litigation authorization agreements, and (4) the Cisco
settlement if the Court grants Vicor’s motion to exclude SynQor’s damages expert’s “unreliable
use of it.” Dkt. No. 546 at 1-5. The Court will address the first subsection – the damages award
from the ‘497 case – in conjunction with Vicor’s in limine item 2, which the Court is reserving its
ruling on pending oral arguments from the parties at the pretrial conference.
Regarding the remaining three subsections, this in limine item is GRANTED-IN-PART
and DENIED-IN-PART as follows. Regarding the Ericsson settlement, Vicor’s motion is
granted in part. SynQor may not refer to the settlement agreement, but may discuss how
Ericsson’s absence affected the market. However, to the extent Vicor cites at trial the preliminary
injunction proceedings and argues it had a good faith belief in non-infringement because SynQor
withdrew its request for a preliminary injunction, SynQor may reference evidence, argument, or
testimony explaining that at the time it withdrew its request for preliminary injunction, an
important reason for the withdrawal was because, after filing, Ericsson stipulated to a settlement
with a permanent injunction, giving SynQor most of what it wanted.
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The remaining two subsections are denied at this time, subject to reconsideration in the
event the Court grants Vicor’s Daubert motion directed to the use of these agreements to calculate
damages.
2)

Preclude evidence, argument, or testimony regarding certain aspects of the prior ‘497
case
The Court reserves its ruling on this in limine request following oral argument at the pretrial

conference.
3)

Preclude evidence, argument, or testimony regarding any alleged copying or
competitive analysis of unclaimed or unaccused features
The Court reserves its ruling on the first part of this in limine request (related to copying

by Vicor of the alleged patented inventions based on evidence related to unclaimed or unaccused
features) following oral argument at the pretrial conference.
The second part of this in limine (related to the non-accused product line) is DENIED.
4)

Preclude evidence, argument, or testimony regarding Vicor’s foreign sales under 35
U.S.C. § 271(f)
This in limine item is DENIED.

5)

Preclude evidence, argument, or testimony regarding Vicor’s total revenues, profits,
or sales or SynQor’s total licensing revenue or revenue from its patents
The first part of Vicor’s motion asks the Court to exclude references to Vicor’s total

revenues, profits, or sales. Dkt. No. 546 at 11. In the second part, which SynQor asserts goes
beyond the dispute on which the parties conferred and attempts to capture two discrete topics into
a single item, Vicor also seeks to preclude SynQor’s total licensing, litigation, or settlement
revenue from its patents. According to Vicor, permitting SynQor to argue that its royalty or lost
profits demands are modest compared to Vicor’s total revenues would be prejudicial. SynQor
asserts the overall financial health of a company is relevant to reasonable royalty.
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The Court reserves its ruling on the first part of this in limine request following oral
argument at the pretrial conference.
The second part of this in limine request (related to SynQor’s total licensing, litigation, or
settlement revenue from its patents) is DENIED at this time, to be revisited in the event the Court
grants Vicor’s Daubert motion directed at Mr. Reed.
6)

Preclude evidence, argument, or testimony concerning opinions of counsel
This in limine request is GRANTED, consistent with the Court’s ruling on SynQor’s in

limine item 1.
SynQor is permitted to introduce evidence or arguments regarding the fact that Vicor is not
relying on an opinion of counsel at trial, but SynQor cannot indicate Vicor had an affirmative duty
to seek an opinion of counsel, that any adverse inference should be drawn as to what the content
of an opinion of counsel is/would have been, or that Vicor withheld an opinion of counsel on
privilege grounds.
7)

Preclude evidence, argument, or testimony regarding personal wealth of the witnesses
This in limine item is GRANTED, as modified. The Court orders this item to be mutual

as to SynQor’s witnesses. Both sides are precluded from introducing evidence of the personal
wealth, income, and/or net worth of fact witnesses. This does not preclude SynQor from showing
the jury relevant evidence regarding the specific financial relationship between Mr. Vinciarelli and
Vicor, including specifically his history and ownership of Vicor, in order to establish bias.
8)

Preclude evidence, argument, or testimony regarding unauthenticated third-party
evidence
The Court reserves its ruling on this in limine request following oral argument at the pretrial

conference.

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9)

Preclude evidence, argument, or testimony regarding SynQor’s claim of inventing
synchronous rectifiers or Intermediate Bus Architecture (“IBA”)
This in limine item is DENIED.

10)

Preclude evidence, argument, or testimony regarding the prices of end products
incorporating the accused bus converters and customers’ profit margins on those
products
This in limine item is DENIED.
JOINT AGREED MOTION IN LIMINE (Dkt. No. 552)

1)

Preclude any evidence or argument by either party regarding settlement
communications between the parties, and the parties’ non-disclosure agreement
relating to settlement communications, including any evidence or argument
regarding facts disclosed only through settlement communications, as set forth in the
parties’ motion
This motion is GRANTED, as agreed to by the parties.
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Based on the foregoing, it is
ORDERED that this Order shall be applicable to all stages of the proceedings in this

action, including voir dire and closing argument.
The Court reminds the parties that its ruling on a motion in limine is not a definitive ruling
on the admissibility of evidence. An order granting a motion in limine is an order requiring the
offering party to approach the bench and seek leave from the Court prior to mentioning the matter
covered by the order to the jury or the jury panel during voir dire. Similarly, an order denying a
motion in limine does not relieve a party from making an objection at trial.
SIGNED this the 30th day of September, 2022.

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J. Boone Baxter
UNITED STATES MAGISTRATE JUDGE
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