Ironburg Inventions Ltd. v. Valve Corporation

Filing 353

MINUTE ORDER granting in part, denying in part and deferring in part Defendant's 326 Motion in Limine; granting in part, denying in part and deferring in part Plaintiff's 328 Motion in Limine. Authorized by Judge Thomas S. Zilly.(MW)

1
2
3
4
5
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

6
7
8

IRONBURG INVENTIONS LTD.,

9

Plaintiff,
C17-1182 TSZ

10
11

v.
MINUTE ORDER
VALVE CORPORATION,
Defendant.

12
13

The following Minute Order is made by direction of the Court, the Honorable
14 Thomas S. Zilly, United States District Judge:
15 (1)
16

Plaintiff’s motion in limine, docket no. 328, is GRANTED in part, DENIED in
part, and DEFERRED in part as follows:
II.

Motion to exclude at trial all evidence and argument of unenforceability,
invalidity, prior invention and prior art is GRANTED in part as to
invalidity and unforceability. The motion is DENIED as to prior invention
and prior art.

III.

Motion to exclude at trial all evidence and argument of irrelevant
proceedings and patent claims is GRANTED as to the outcome of any IPR
proceeding or decision issued by the PTAB, or settlement in other
litigation. Except as granted, the motion is DEFERRED to the pretrial
conference.

IV.

Motion to exclude at trial all testimony, evidence, or argument relating to:
(1) Valve’s actions after receiving the cease and desist letter is DENIED;
(2) Valve’s decision to continue to produce the products is DENIED; and

17
18
19
20
21
22
23

MINUTE ORDER - 1

1

(3) the witnesses’ beliefs about infringement and validity formed after
consultation with counsel is GRANTED in part as to any advice of counsel
defense; and DEFERRED to trial as to any unprivileged factual testimony.

2
V.

Motion to exclude at trial all testimony, evidence, or argument of noninfringement based on the intended use specified for the hand-held
controller invention set forth in the preamble of Claim 1 is DENIED.

VI.

Motion to exclude at trial all testimony, evidence, or argument related to
inventor Simon Burgess or patent counsel for Ironburg and the inventors is
DENIED as to Simon Burgess and DEFERRED to the pretrial conference
as to patent counsel and other inventors.

VII.

3

Motion to preclude at trial all use of derogatory or misleading
characterizations of Ironburg’s business is GRANTED except as to any
reference to Ironburg as a “non-practicing entity.”

4
5
6
7
8
9

VIII. Motion to exclude evidence and argument concerning noninfringing
alternatives and design arounds is DENIED.

10
IX.

Motion to exclude at trial all testimony, evidence, or argument related to
prosecution history estoppel and ensnarement is GRANTED. Valve agrees
to this exclusion if the Doctrine of Equivalents theory is also excluded.

X.

Motion to preclude defendant’s experts from opining on any theories of
non-infringement, unenforceability, or validity that are not contained within
their expert reports is GRANTED. This ruling will also apply to plaintiff’s
experts.

15

XI.

Motion to preclude defendant’s expert Dezmelyk from opining on the ‘525
patent application, patent office practice and procedures is DENIED.

16 (2)

Defendant’s motion in limine, docket no. 326, is GRANTED in part, DENIED in
part, and DEFERRED in part as follows:

11
12
13
14

17
18
19
20
21
22

1.

Motion to preclude Ironburg from presenting any evidence or argument
regarding the existence or outcome of IPR proceedings is GRANTED.

2.

Motion to preclude Ironburg from presenting any evidence or argument that
Valve infringes the ‘525 Patent under the Doctrine of Equivalents is
GRANTED. Local Patent Rule (“LPR”) 120(e) requires that parties
disclose within fifteen (15) days of the scheduling conference “[w]hether
each element of each asserted claim is claimed to be literally present and/or
present under the doctrine of equivalents in the Accused Device.” Pursuant
to LPR 124, amendment of the infringement contentions may be made by
order of the Court upon a timely showing of good cause. Ironburg neither

23
MINUTE ORDER - 2

1

disclosed their intent to rely on the doctrine of equivalents pursuant to LPR
120(e), nor moved the Court to amend its infringement contentions
pursuant to LPR 124. Instead, Ironburg’s technical expert, Mr. Garry
Kitchen, provided two sentences referencing the doctrine’s application to
claim 6 in his July 6, 2018 report. 1 To support a finding of infringement
under the doctrine of equivalents, a patentee must provide particularized
testimony as to the insubstantiality of the differences between the claimed
invention and the accused device, or with respect to the function, way,
result test. Texas Instruments Inc. v. Cypress Semiconductor Corp., 90
F.3d 1558, 1567 (Fed. Cir. 1996). Generalized testimony as to the overall
similarity between the claims and the accused device is insufficient. Id.
Because Ironburg did not assert claims under the doctrine of equivalents in
its infringement contentions and has not provided particularized testimony
sufficient to assert claims under the doctrine of equivalents, it is precluded
from asserting them at trial. MEMC Elec. Materials v. Mitsubishi
Materials Silicon Corp., 2004 WL 5363616, at *5 (N.D. Cal. Mar. 2, 2004)
(precluding patentee from asserting claims under the doctrine of equivalents
where it was omitted from the infringement contentions and where patentee
failed to provide the requisite particularized testimony).

2
3
4
5
6
7
8
9
10
3.

12

Motion to preclude Ironburg from mentioning or discussing the Microsoft
Elite Controller is DENIED.

4.

11

Motion to preclude Ironburg from offering evidence or argument of Valve’s
total or company-wide revenue and profit is DEFERRED to the pretrial
conference.

13
14 (3)

The Clerk is directed to send a copy of this Minute Order to all counsel of record.

15

Dated this 4th day of March, 2020.

16

William M. McCool
Clerk

17
s/Karen Dews
Deputy Clerk

18
19
20
1

See Ex. 1 to Schafer Decl., docket no. 256-1 at ¶ 103 (“[A]lthough the Valve members

21 are joined by additional plastic, they directly correspond to the claims and perform substantially
the same control function as the claimed element in substantially the same way to achieve

22 substantially the same results. The middle finger of the user is positioned to flex and activate the
back controls in the same manner as described in the patent, and the controls return to the
23 unloaded position as described above.”)
MINUTE ORDER - 3