Ultratec, Inc. et al v. Sorenson Communications, Inc. et al
Filing
546
ORDER granting #394 Motion in Limine ; granting in part and staying in part #395 Motion in Limine ; denying as moot #399 Motion in Limine ; denying #404 Motion in Limine ; denying #411 Motion in Limine ; granting in part and denying in part #413 Motion in Limine ; denying #418 Motion in Limine ; denying as unnecessary #420 Motion in Limine ; granting #422 Motion in Limine ; reserving #424 Motion in Limine ; granting #426 Motion in Limine ; granting #428 Motion in Limine ; denying #435 Motion in Limine ; denying #437 Motion in Limine ; granting #439 Motion in Limine ; granting #441 Motion in Limine ; denying #442 Motion in Limine ; granting #446 Motion in Limine ; granting in part and denying in part #453 Motion in Limine ; granting in part and denying in part #456 Motion in Limine ; denying #470 Motion in Limine ; granting #471 Motion in Limine ; denying #478 Motion Requesting Claims Construction. Signed by District Judge Barbara B. Crabb on 9/29/14. (rep)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - ULTRATEC, INC. and CAPTEL, INC.,
OPINION AND ORDER
Plaintiffs,
13-cv-346-bbc
v.
SORENSON COMMUNICATIONS, INC.
and CAPTIONCALL, LLC,
Defendants.
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - This civil action involving claims of patent infringement and counterclaims of
invalidity is scheduled for trial beginning on October 14, 2014. This order addresses
defendants’ motion for claim construction, dkt. #478; plaintiffs’ motions in limine nos. 111, 13 and 18-19; all four of defendants’ Daubert motions, dkt. ##411, 413, 441 and 456;
and defendants’ motions in limine nos. 1-2, 6 and 11. Defendants’ motion no. 9 will be
addressed in a separate order with defendants’ motion to correct apparent errors in the
summary judgment order, dkt. #535. The remaining motions in limine (plaintiffs’ motions
nos. 12, 14, 15, 16 and 17 and defendants’ motions nos. 3, 4, 5 and 10) relate to the issues
of induced infringement, willfulness and damages and will be addressed in separate orders.
1
OPINION
I. DEFENDANTS’ MOTION FOR CLAIM CONSTRUCTION, dkt. #478
Defendants have moved for claim construction of the term “captioned telephone
display device” in claim 1 of the ‘346 patent, arguing that construction is necessary to
determine infringement. Dkt. #478. Plaintiffs raised construction of this term with respect
to both the ‘346 and ‘835 patents in their brief in support of their motion for partial
summary judgment.
Dkt. #121 at 38-41 and 47-51.
See also dkt. #148 at 30-35
(defendants’ response); dkt. #192 at 27-34 (plaintiffs’ reply). Because plaintiffs withdrew
their motion with respect to the ‘835 patent and neither infringement nor validity of the
‘346 patent was before the court on summary judgment, it was unnecessary to construe this
term at that time.
Asserted claim 1 of the ‘346 patent reads:
1. A method of operating a relay system using a call assistant to facilitate
communication between a hearing user and an assisted user by telephone, the
hearing user speaking words in voice, the method comprising the steps of
transmitting the voice of the hearing user when speaking to the ear of
the call assistant;
the call assistant speaking in voice the same words that the call
assistant hears spoken by the hearing user into a microphone
connected to a digital computer;
the digital computer using voice recognition computer software trained
to the voice of the call assistant to translate the words of the voice
spoken by the call assistant into a digital text message stream
containing the words spoken by the call assistant;
transmitting both the digital text message stream and the voice of the
hearing user by telephone connection to the assisted user;
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displaying the digital text message stream to a captioned telephone
display device within sight of the assisted person; and
transmitting the voice of the hearing user to the assisted user.
Defendants have asked the court to construe “captioned telephone display device” to mean
“a device configured to be connected to a conventional telephone that filters out and displays
text signals sent with a voice signal and passes the filtered voice signal to the conventional
telephone.” Plaintiffs argue that the term should be given its plain and ordinary meaning
or in the alternative, be defined as “a telephone device that is connected to convey both a
voice communication and a text transcription of the voice communication to the user.”
Defendants contend that the ‘346 patent discloses only a “stand-alone display device
that receives and displays captions and then passes the voice signal to a connected
telephone.” Dkt. #478 at 2. According to defendants, the claim does not disclose a single,
integrated device having both the caption telephone display and conventional telephone
functionality. Id. As plaintiffs pointed out in their summary judgment briefing, however,
the claim does not require a connection to a conventional telephone or the filtering of text
signals. The claim language requires only that voice and text be transmitted to the assisted
user over a telephone connection (which I have not limited to a physical land line), the text
be displayed to the device within sight of the assisted user and the voice of the hearing user
be transmitted to the assisted user. Although defendants cite language from the specification
discussing an embodiment using a conventional telephone to transmit the hearing user’s
voice to the assisted user, nothing in the patent claim or specification says that this must be
the case or that the device cannot perform that function in addition to displaying the text.
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‘346 patent, col. 8, ln. 63 to col. 9, ln. 3. Similarly, defendants cite a single-telephone-line
embodiment in which filtering occurs. Although the cited specification language expressly
states that “appropriate filtering” is important, it does so only in reference to one particular
embodiment. ‘346 patent, col. 8, lns. 4-13. Nothing in claim 1 requires filtering.
Accordingly, I find that the term “captioned telephone display device” is not limited
to a device that is connected to or integrated with a conventional telephone or that filters
out text signals. I decline to adopt plaintiffs’ alternative construction because it adds no
clarity to the plain and ordinary meaning of the term. As a final matter, I note that this
construction is not inconsistent with my previous construction of the preamble to claim 1
of the ‘082 patent. In the summary judgment order, I found that the preamble in that
patent did not require the “captioned telephone device” itself to convey both the voice of the
hearing user and text to the assisted user. Although the terms “captioned telephone device”
and “captioned telephone display device” may be analogous, they are used differently in the
‘082 and ‘346 patents and the parties’ dispute addressed separate issues. In any event, it
appears that both patents disclose a device that can be either a single, stand-alone unit or a
unit used in conjunction with a conventional telephone.
II. PLAINTIFFS’ MOTIONS IN LIMINE
A. Plaintiffs’ Motion in Limine No. 1 to Exclude the Yamamoto Reference, dkt. #418
Plaintiffs ask the court to exclude the “Yamamoto reference,” a paper presented at a
conference in Japan in March 1996 that plaintiffs believe defendants will rely on to argue
4
invalidity. The parties argue over whether the reference qualifies as a “printed publication”
under 35 U.S.C. § 102. “In order to qualify as a printed publication within the meaning of
§ 102, a reference ‘must have been sufficiently accessible to the public interested in the art.’”
In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158,
1160 (Fed. Cir. 1989)). “A reference is publicly accessible ‘upon a satisfactory showing that
such document has been disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art exercising reasonable diligence,
can locate it.’” Kyocera Wireless Corp. v. International Trade Commission, 545 F.3d 1340,
1350 (Fed. Cir. 2008) (quoting SRI International, Inc. v. Internet Security Systems Inc.,
511 F.3d 1186, 1194 (Fed. Cir. 2008)).
The Yamamoto reference was presented at the Acoustical Society of Japan conference
attended by 100 to 150 individuals; the paper was published in a book of all the conference
papers that was available to the conference attendees; and after the conference the paper was
submitted to the Japan Science and Technology Agency where it was available for review by
the public. Neither side says whether the Japan Science and Technology Agency marketed,
distributed or indexed the paper, so I must assume that it did not. When references are not
distributed to the public or indexed for searching by the public, the court
must consider several factors relevant to the facts of [the] case before
determining whether or not [the publication] was sufficiently publicly
accessible in order to be considered a “printed publication” under § 102(b).
. . . The factors relevant to the facts of this case are: the length of time the
display was exhibited, the expertise of the target audience, the existence (or
lack thereof) of reasonable expectations that the material displayed would not
5
be copied, and the simplicity or ease with which the material displayed could
have been copied.
In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
In this case, the Yamamoto paper has been available since May 1, 1996 until the
present, so it was “on display” for more than a year before the filing date for the earliest
patent in suit, September 8, 1997, which is significantly longer than the reference in In re
Klopfenstein, 380 F.3d at 1350, which was displayed for three days at a conference. The
target audience, like the one in Klopfenstein, was experts (Acoustical Society members) who
are likely to have ordinary skill in the art and who are more likely to retain information on
the subject matter. Neither side suggests there were any expectations of confidentiality, but
the conference book was not free, so I can infer that there was some expectation that the
conference book would not be copied for free distribution. However, this factor is most
important when the display is temporary, rather than enduring as is the case for the
Yamamoto reference. Id. at 1351 (“Where parties have taken steps to prevent the public
from copying temporarily posted information, the opportunity for others to appropriate that
information and assure its widespread public accessibility is reduced.”) (Emphasis added).
Similarly, the ease with which something may be copied is less important if the publication
may be purchased because then retention by memory is less critical. Id. (“The simpler a
display is, the more likely members of the public could learn it by rote or take notes
adequate enough for later reproduction.”). The Yamamoto reference was available for
purchase at and after the conference and available for review after the conference, May 1996
and onward. Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109
6
(Fed. Cir. 1985) (concluding that prior art was “printed publication” when “between 50 and
500 persons interested and of ordinary skill in the subject matter were actually told of the
existence of the paper and informed of its contents by the oral presentation, and the
document itself was actually disseminated without restriction to at least six persons”).
Therefore, I conclude that the Yamamoto reference is a “printed publication” under 35
U.S.C. § 102 and may be considered by the jury for the purpose of determining invalidity.
B. Plaintiffs’ Motion in Limine No. 2 to Preclude Any Defense Witnesses
Not Properly Disclosed under Rule 26, dkt. #420
Plaintiffs point out that defendants failed to disclose any employees as expert
witnesses in accordance with Fed. R. Civ. P. 26 and ask that the court not allow any
witnesses to testify who have not been disclosed properly under Rule 26. Because plaintiffs
have not identified any specific witnesses to whom they object and defendants confirm that
they will not be calling any undisclosed witnesses at trial, plaintiffs’ motion in limine no. 2
will be denied as unnecessary.
C. Plaintiffs’ Motion in Limine No. 3 to Exclude Evidence or Argument on Workload or
Disparagement of U.S. Patent and Trademark Office, dkt. #422
The parties agree that generalized, negative remarks about the patent office would be
inappropriate, as well as irrelevant. Evidence or arguments to the effect that the patent
office has particular experience and skill in considering patents would be equally
inappropriate. This ruling does not prohibit defendants from adducing evidence that a
7
particular prior art reference was not before the patent office when it reviewed plaintiffs’
applications for patents or that a patent has obvious errors.
D. Plaintiffs’ Motion in Limine No. 4 to Exclude Evidence Related to Quarles &
Brady LLP’s Prosecution of Patents in Suit, dkt. #424
Plaintiffs want the court to bar defendants from telling the jury that Quarles & Brady
LLP prosecuted the patents at issue in this lawsuit. It is not clear what the purpose of such
a ruling might be. After all, the patents show that the firm prosecuted them. However,
defendants have failed to make it clear what relevance there might be in identifying the firm,
although they oppose the motion vigorously. They do confirm that they do not intend to
argue inequitable conduct, so that is not an issue.
I will not rule on the motion at this time. If at trial either side believes it needs a
ruling on a particular witness or a particular line of questioning, it can request one from the
court.
E. Plaintiffs’ Motion in Limine No. 5 to Preclude Evidence or Argument Concerning
Injunctive Relief, Treble Damages, and Attorney’s Fees, dkt. #426
Plaintiffs ask the court to exclude evidence “advising the jury of Plaintiffs’ requests
for an injunction, treble damages, and attorneys’ fees.”
Plts.’ Br., dkt. #427, at 1.
Defendants agree that they will not submit evidence in front of the jury that refers to
plaintiffs’ requests for injunctive relief, treble damages or attorneys’ fees, but they point out
that some evidence may be relevant to other issues in the trial that pertain to these requests.
8
Defendants do not explain what those might be, but I agree that to the extent such evidence
exists, its admissibility must be determined on a case-by-case basis at trial. To the extent
evidence is submitted purely for the purpose of disclosing plaintiffs’ requests for injunctive
relief, treble damages and attorneys’ fees, it must be excluded.
F. Plaintiffs’ Motion in Limine No. 6 to Preclude Evidence or Argument Concerning
Plaintiffs’ Duty of Candor or Any Claim of Equitable Conduct, dkt. #428
Plaintiffs ask the court to exclude evidence related to their duty of candor and any
allegations of inequitable conduct before the Patent and Trademark Office because
defendants have not asserted any claims or defenses related to this issue and the evidence
would unduly prejudice plaintiffs. Defendants contend that they intend to introduce such
evidence for the purpose of arguing that certain prior art was not before the Patent Office
when plaintiffs’ patents were prosecuted. Introduction of the evidence for that purpose is
permissible because it bears on the validity of the patent. Accordingly, I am granting
plaintiffs’ motion but will allow defendants to introduce evidence related to what prior art
was or was not before the patent office.
G. Plaintiffs’ Motion in Limine No. 7 to Limit the Prior Art Defendants
May Assert at Trial, dkt. #435
Plaintiffs have asked the court to limit defendants to asserting no more than three
invalidating prior art references for each asserted patent and to identify the specific
obviousness combinations that they intend to pursue at trial.
9
They point out that
defendants have identified 63 references in their 35 U.S.C. § 282 notice, many of which
were not included in Occhiogrosso’s expert report on invalidity. The request is rendered
moot in part by the fact that defendants have disclosed in their proposed jury instructions
a total of 13 references on which they intend to rely at trial, nine of which will be asserted
against the ‘482 and ‘314 patents. For the sake of efficiency and fairness, I will require
defendants to identify any possible obviousness contentions that they have not identified
previously to plaintiffs. Defendants shall provide that list within three days of the date of
this order.
To the extent that plaintiffs are asking that defendants pare down the
combination of references to be used for obviousness or identify exactly which combinations
they will rely on at trial, that request will be denied.
H. Plaintiffs’ Motion in Limine No. 8 to Exclude Declaration of
Conan Gregar, dkt. #437
Plaintiffs ask the court to exclude the declaration of Conan Gregar, a finance manager
for Intel Corporation, because it does not show that Gregar has personal knowledge of
several facts concerning the public availability of certain Intel products. Dkt. #337, exh. A.
However, in a stipulation dated August 18, 2014, the parties agreed to the following:
The parties agree that the declaration from Intel Corporation attached as
Exhibit A will be treated the same as sworn U.S. deposition testimony in the
Western District of Wisconsin Case Nos. 13-cv-346 and 14-cv-66. Plaintiffs
specifically reserve all other objections to the testimony contained within
Exhibit A. The use and admissibility of Exhibit A in any other proceedings will
be governed by the rules in effect with respect to such other proceeding, and
the parties reserve any and all objections to the same.
10
Dkt. #337. Defendants argue that they subpoened Intel Corporation pursuant to Rule
30(b)(6), dkt. #492, exh. 6, and that as the corporation’s designated witness, Gregar could
testify to “matters known or reasonably available” to the organization. PPM Finance, Inc.
v. Norandal USA, Inc., 392 F.3d 889, 894-95 (7th Cir. 2004) (Rule 30(b)(6) witness
authorized to testify to matters within his personal knowledge and matters known or
reasonably available to organization). A district court in this circuit has noted that “[w]hen
it comes to using Rule 30(b)(6) depositions at trial, strictly imposing the personal knowledge
requirement would only recreate the problems that Rule 30(b)(6) was created to solve.” Sara
Lee Corp. v. Kraft Foods Inc., 276 F.R.D. 500, 503 (N.D. Ill. 2011).
I agree with defendants that the stipulation makes clear that Gregar’s declaration
would substitute for his testimony as Intel’s designee under Rule 30(b)(6).
Although
plaintiffs reserved “other” objections to the testimony, they agreed to accept Gregar as a Rule
30(b)(6) witness, meaning they agreed that Gregar could speak on matters reasonably
available to the corporation. The dates on which Intel made certain products publicly
available and the publication date of one of its product handbooks are matters known by
Intel or reasonably available to it. Accordingly, plaintiffs’ motion will be denied.
I. Plaintiffs’ Motion in Limine No. 9 to Exclude Evidence Contradicting this Court’s
Summary Judgment Rulings, dkt. #439
Plaintiffs ask the court to exclude evidence that conflicts with this court’s summary
judgment opinion on defendants’ contract counterclaim (dkt. #352). Plaintiffs contend that
the holdings from that opinion are
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(1) the purported contract between Ultratec and the Federal Communications
Commission (“FCC”) did not obligate Plaintiffs to license their patents to
Defendants; (2) that Defendants were not third party beneficiaries of the
purported contract; (3) that Ultratec did not promise it would license its
patents to the Defendants; (4) that Ultratec did not promise it would license
its patents on a nondiscriminatory basis; and (5) that Defendants have no
basis for contending they were misled or that their purported reliance was
justified.
Plts.’ Br., dkt. #440, at 1-2. Defendants argue that plaintiffs’ request is too broad and
would exclude evidence that is relevant for other reasons. Specifically, they say
The FCC’s declaratory ruling approving IP CTS for reimbursement from the
TRS Fund is an excellent example of the type of evidence Plaintiffs would
apparently seek to exclude for purposes other than proving breach of contract.
That Declaratory Ruling and related evidence, including public FCC filings
and interpretations of the Ruling, are indisputably relevant to live issues in the
case including (but not limited to) the FCC’s creation of the IP CTS market,
product inception and development, secondary considerations, induced
infringement, willfulness, damages (including non-infringing alternatives and
relative competitive position of the parties), and various affirmative defenses.
Dfts.’ Br., dkt. #493, at 2-3. Both parties paint with too broad a brush, but I agree with
plaintiffs to the extent that I see no reason why evidence about these issues would be
relevant to issues that will be decided by the jury, especially given that any issues relating to
injunctive relief will be tried to the court outside the presence of the jury. I will not allow
defendants to submit this evidence unless they can show it is submitted for a relevant reason
other than contradicting this court’s ruling and is otherwise admissible.
J. Plaintiffs’ Motion in Limine No. 10 to Preclude Technical Publications on Which
Occhiogrosso Did Not Rely in his Expert Report, dkt. #442
Plaintiffs seek to prevent defendants from introducing as evidence at trial more than
30 technical references related to enablement of certain prior art references. Dkt. #443, exh.
12
A (identifying documents). Although Occhiogrosso identified eight of the publications in
the appendix to his expert report on invalidity, he did not expressly rely on any of the
publications in his expert report.
Plaintiffs seek both to prevent Occhiogrosso from
testifying about the contents of the documents and to prevent defendants from introducing
the publications into evidence.
As explained in the section addressing whether Occhiogrosso will be permitted to
testify about enablement (plaintiffs’ motion in limine no. 19), Occhiogrosso may discuss the
eight references he identified in his report, so long as they meet the conditions set forth
below. With respect to the other reports, plaintiffs argue that they are (1) impermissible
expert testimony under Fed. R. Evid. 702 because defendants failed to name the authors as
expert witnesses; (2) inadmissible hearsay under Rules 801 and 802; and (3) unfairly
prejudicial and misleading under Rules 403 and 703.
Defendants assert, correctly, that any publication dated October 1994 or before
would be subject to the hearsay exception for ancient documents under Rule 803(16)
(hearsay exception for statement in authenticated document that is at least 20 years old).
I note, however, that certain conditions apply. First, if these publications contain more than
one level of hearsay, an appropriate exception must be found for each level of hearsay.
United States v. Bronislaw Hajda, 135 F.3d 439, 444 (7th Cir. 1998); Rule 805 (no hearsay
within hearsay). Second, the author of the publication must have personal knowledge of the
statement that is to be admitted. Columbia First Bank, FSB v. United States, 58 Fed. Cl.
333, 337-38 (2003) (citing advisory committee note to Fed. R. Evid. 803 and Fed. R. Evid.
13
602); 5 Jack B. Weinstein & Margaret A. Berger, Weinstein’s Federal Evidence § 803.18
(2014 ed.). Third, if at the time the publication was written, a motive for misrepresentation
already existed, the document may be excluded under Rule 403 as unfairly prejudicial. 5
Weinstein’s Federal Evidence § 803.18.
Defendants also argue that because these publications have “independent legal
significance” as enabling references, they are not being offered for the truth of the matter
asserted. Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1379
(Fed. Cir. 2001) (enablement of an anticipatory reference may be demonstrated by a later
reference); Rule 803(c) (statements not hearsay if not offered for truth of matter asserted).
A few district courts have held that prior art references offered as printed publications under
35 U.S.C. § 102(a) or (b) are not hearsay because they are not offered to prove the truth of
any statements within the reference. 7 Annotated Patent Digest § 44:96 (citing Freeman v.
Minnesota Mining and Manufacturing Co., 675 F. Supp. 877, 884 n.5 (D. Del. 1987); Joy
Technologies, Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), judgment aff'd,
959 F.2d 226, 22 U.S.P.Q.2d 1153 (Fed. Cir. 1992)).
These courts reason that the
publications were offered to show only that the claimed subject matter was in the public’s
possession and not that the actual description of the invention was true. The same reasoning
would apply in this case. Bristol-Myers Squibb, 246 F.3d at 1379 (noting that court has
looked to enabling references “only to show that the claimed subject matter . . . was in the
public's possession”). For similar reasons, these publications are not necessarily expert
opinions, as plaintiffs suggest. Although some of the publications may contain opinion
14
evidence, they are not necessarily “expert opinions” merely because they contain technical
or scientific information, as plaintiffs suggest. For example, the publications may contain
factual information showing what products or features were available in the mid-1990s.
In sum, I will not exclude the enabling references as a general matter. If defendants
are able to show that the particular statements that they intend to introduce at trial meet an
exception to the hearsay rule, the statement may be admitted if introduced through a proper
witness.
K. Plaintiffs’ Motion in Limine No. 11, to Preclude Evidence or Argument Regarding
Alleged Copying by Plaintiffs, dkt. #446
In an order dated August 28, 2014, dkt. #350, deciding plaintiffs’ partial motion for
summary judgment, I concluded that defendants’ ‘801 patent was invalid as obvious. Now
plaintiffs have moved to bar defendants from introducing any evidence or arguing that
plaintiffs copied the features of the ‘801 patent on the ground that the issue is irrelevant in
light of the dismissal of the claims under the ‘801 patent. Dkt. #447. I will grant the
motion.
In the August 28 order, I concluded that defendants had not adduced any evidence
of copying by plaintiffs, but plaintiffs do not point to that as a reason for excluding the
evidence. Further, defendants point to new evidence of alleged copying in their response
brief, so I will assume for the purpose of resolving this motion that defendants have
admissible evidence that plaintiffs copied features included in the ‘801 patent. However,
15
even with the benefit of that assumption, defendants have not shown that allegations about
copying the ‘801 patent are relevant.
All of defendants’ arguments relate to rebutting evidence that they anticipate
plaintiffs will offer at trial.
First, defendants say that plaintiffs intend to rely on the
commercial success of their own patented products as evidence that their patents are not
obvious. If so, defendants argue, plaintiffs’ alleged copying of features disclosed in the ‘801
patent is evidence that any commercial success was related to the copied features rather than
the inventive features of plaintiffs’ patents. The inference defendants seem to be drawing
is that, if plaintiffs believed that the unpatented features were worth copying, it follows that
plaintiffs’ sales increased at least in part because of those patented features. However,
defendants do not develop an argument or cite any authority in support of a view that it is
reasonable to an infer from the act of copying itself that the copied features rather than other
new features caused an increase in sales. Of course, defendants are free to point to any
admissible evidence that nonpatented features led to any commercial success, but that does
require defendants to allege that plaintiffs copied those nonpatented features from
defendants.
Defendants cite Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314, 1327 (Fed.
Cir. 2012), in which the court affirmed a decision denying injunctive relief on the ground
that the plaintiff “failed to show that it would likely be irreparably harmed by the
infringement because it failed to demonstrate that consumer purchasing decisions were based
on the presence of the [patented] feature.” In asking for the injunction, the plaintiff argued
16
that the defendants’ “employees themselves believed that [they] needed the [patented]
feature to compete with” the plaintiff. Id. The court stated that “the evidence that [the
defendants’] employees believed it to be important to incorporate the patented feature into
[the defendant’s] products is certainly relevant to the issue of nexus between the patent and
market harm, [but] it is not dispositive. That is because the relevant inquiry focuses on the
objective reasons as to why the patentee lost sales, not on the infringer's subjective beliefs
as to why it gained them (or would be likely to gain them).” Id. at 1327-28. Defendants
rely on the court’s statement that a party’s belief about the importance of a feature is
“relevant to the issue of nexus between the patent and market harm.”
Apple provides little guidance. For one thing, it involved a ruling on injunctive relief
rather than evidence of obviousness. This is important because an injunction necessarily
requires some speculation about future sales. The court said nothing about using a party’s
belief about the importance of a feature as evidence of the reason for sales that already have
occurred. More important, Apple had nothing to do with copying, but rather addressed the
extent to which a party’s subjective beliefs about the importance of a feature could be
relevant to showing the relationship between sales and that feature. Because plaintiffs did
not file a motion in limine about the potential relevance of their subjective beliefs, I need not
resolve the more general question whether defendants could use those beliefs (rather than
the specific act of copying) to rebut plaintiffs’ evidence regarding the reasons for the
commercial success of their patented products.
17
Defendants’ second argument is more difficult to follow, but it seems to be that
evidence that plaintiffs copied defendants’ products is evidence that defendants did not copy
plaintiffs’ products. This argument is not persuasive because the two are not mutually
exclusive. Even if plaintiffs were copying some of the nonpatented features of defendants’
products, the copying sheds no light on whether defendants were copying other, patented
features of plaintiffs’ products.
Defendants are concerned that plaintiffs will point to the similarity of the unpatented
features as evidence that defendants copied plaintiffs’ patented features, but that concern
is unfounded. To the extent that plaintiffs are permitted to offer evidence of any copying
by defendants, I see no reason at this point why that evidence would extend beyond the
patented features of plaintiffs’ products.
Third, defendants say that plaintiffs’ alleged copying is relevant to a determination
of a reasonable royalty in the event that the jury finds that defendants are liable.
Defendants are correct that plaintiffs are not entitled to a royalty for unpatented features,
but that is true regardless whether plaintiffs copied those features, so any alleged copying is
not relevant to a royalty rate. Defendants do not need to put in evidence of alleged copying
to argue that unpatented features should not be part of the royalty.
Finally, I note that it would be prejudicial to allow allegations of copying against
plaintiffs related to a patent that has been dismissed from the case.
Thus, even if
defendants’ evidence of copying had some marginal probative value, I would exclude the
18
evidence under Fed. R. Evid. 403 because the probative value would be substantially
outweighed by the danger of unfair prejudice.
L. Plaintiffs’ Motion in Limine No. 13 to Preclude Dr. Gregg C. Vanderheiden from
Offering Any Expert Testimony, dkt. #453
Plaintiffs ask the court to preclude Gregg C. Vanderheiden from testifying as an
expert because defendants did not designate him as an expert or produce an expert report
for him and because Vanderheiden has testified that he has not read plaintiffs’ patents.
Defendants argue that Vanderheiden should be allowed to testify as a fact witness,
specifically so that he may explain the contents of the memorandum he drafted for the FCC,
which the FCC published. In the memorandum, Vanderheiden states that, in his opinion,
there are noninfringing alternatives to plaintiffs’ patents that fit the definition of the
technology approved for FCC funding. Defendants argue that they should be able to call
Vanderheiden so that he can establish whether what he wrote in the memorandum was
truthful and to show defendants’ state of mind because they say they relied on this
memorandum when deciding to enter into the marketplace. Defendants’ state of mind is
relevant to plaintiff’s arguments on willful blindness and willfulness.
Defendants argue that the memorandum may be introduced into evidence for the
purpose of establishing the existence of noninfringing alternatives because, they argue, the
memorandum is a statement by a party opponent. Defendants say that plaintiffs adopted
the memorandum under Fed. R. Evid. 801(d)(2) by “tacitly approving” Vanderheiden’s final
draft after plaintiffs and Vanderheiden exchanged drafts and discussions on the subject.
19
Defendants do not say what words plaintiffs used that make defendants believe that
plaintiffs “approved” Vanderheiden’s memorandum. The mere fact that Vanderheiden sent
plaintiffs drafts of the memorandum and both parties discussed its contents does not suggest
that plaintiffs “manifested that [they] adopted or believed [the statement] to be true.”
Defendants cannot transform Vanderheiden’s expert opinion into fact testimony by asserting
simply that plaintiffs discussed his opinion with him. Therefore, Vanderheiden will not be
permitted to testify as to the truth of the opinions in his memorandum.
However, defendants’ reliance on those opinions is evidence of their state of mind at
the time they entered the marketplace with their allegedly infringing products. Accordingly,
Vanderheiden’s testimony and memorandum are admissible, with a curative instruction
explaining the limited purpose of the evidence. The parties should submit proposed curative
instructions on this issue to the court prior to the final pretrial conference scheduled for
October 2, 2014.
M. Plaintiffs’ Motion in Limine No. 18 to Preclude Arguments that Conflict with
Court’s Summary Judgment Rulings or Were Previously Undisclosed, dkt. #471
Plaintiffs have asked the court to limit defendants’ non-infringement arguments to
those that are contained in Occhiogrosso’s expert report and still viable after the court’s
ruling on summary judgment. This request is overly broad and vague. Without knowing
exactly what evidence defendants intend to introduce at trial, it would be impossible to give
a definitive ruling on plaintiffs’ motion at this time. However, it is possible to rule that
neither party will be allowed to introduce improperly disclosed expert opinions or to argue
20
or present evidence on the existence of claim elements that are inconsistent with the court’s
claim constructions.
A review of plaintiffs’ arguments suggests that they have a few specific concerns to
which defendants have responded. Therefore I will address those issues that have been
properly developed by the parties.
Plaintiffs’ first concern relates to whether defendants’ expert, Benedict Occhiogrosso,
improperly supplemented his expert report.
In an order dated July 17, 2014, I gave
defendants limited permission to have Occhiogrosso supplement his report in response to
Ludwick’s discussion of the modem (or its substantial equivalent) allegedly present in
defendants’ service. Dkt. #286. Plaintiffs contend that Occhiogrosso took advantage of this
opportunity to add new opinions on the following issues: the level of skill in the art and his
relevant qualifications, dkt. #300 at ¶¶ 4-11 and 28; claim construction, id. at ¶ 34; rebuttal
to Ludwick’s equivalency arguments on the terms “telephone line” and “telephone system,”
id. at ¶¶ 52-58; and a rebuttal to the declaration of Kevin Colwell, dkt. #184, relating to
telephone and internet protocol connections in CapTel service, Id. at ¶¶ 66-69. Defendants
say that even though Occhiogrosso added opinions to his supplemental report in addition
to what the court specifically authorized in its July order, he was allowed to do so because
defendants filed the supplemental report three weeks before his August 20, 2014 deposition
on non-infringement and because the supplemental opinions addressed matters raised in his
initial report.
21
Occhiogrosso’s supplementation with respect to his qualifications and the level of skill
in the art is addressed in the discussion of plaintiffs’ motion no. 19.
Occhiogrosso’s
discussion of the telephone terms in his supplemental report appears to relate only to
whether “telephone system” in the ‘314 patent includes internet protocol technologies, a
matter he discussed at length in his original report on non-infringement, dkt. #135 at p. 1924, § VIII.B. Although this topic may be a proper subject for supplementation, I agree with
plaintiffs that these opinions are unnecessary and irrelevant because I have concluded that
the use of the word “telephone” in the ‘482 and ‘314 patents does not exclude internet
protocol connections. Occhiogrosso’s supplemental discussion of Colwell’s declaration,
which plaintiffs submitted for the first time on summary judgment, is improper because it
specifically rebuts Colwell’s opinion, which was not the subject of Occhiogrosso’s initial
report. Although the general subject matter may relate to issues raised in Occhiogrosso’s
initial report and to Ludwick’s opinions for which the court allowed Occhiogrosso to provide
supplementation (the presence of modems or their equivalents in CaptionCall call centers),
paragraphs 66 through 69 of Occhiogrosso’s supplemental report specifically address
Colwell’s arguments for the first time and therefore are improper.
Plaintiffs’ concern with respect to the summary judgment ruling is that defendants
will attempt to make additional claim construction arguments related to terms that the court
already construed but that also appear in asserted claims that were not before the court on
summary judgment. They argue that because Occhiogrosso did not testify previously that
the same term appearing in multiple patents should be construed differently, defendants
22
cannot now change course and attempt to argue new constructions of the same terms
disclosed in claims that were not before the court on summary judgment. Defendants deny
that they intend to do this but point out that the court did not construe the term
“telecommunication device for the deaf” in claim 1 of the ‘314 patent and that there may
be additional disputes concerning the term “modem.” The court has not construed the term
“telecommunication device for the deaf” because the parties did not present any dispute with
respect to this term when they had the opportunity to do so. Therefore, any arguments
made with respect to that term will not be inconsistent with the court’s ruling on claims
construction. With respect to “modem,” defendants state that Occhiogrosso should be
allowed to testify that the accused technology in the CaptionCall call center does not
modulate a signal as a modem requires and is not “connected” to the call assistant
workstations as the ‘314 patent requires. I agree that neither of these arguments conflicts
with the court’s finding that a “modem” need not convert a signal to audio tones.
N. Plaintiffs’ Motion in Limine No. 19 to Preclude Certain Testimony from
Benedict Occhiogrosso, dkt. #470 and
Defendants’ Motion to Exlude Argument and Testimony Analyzing Invalidity from
Perspective of Limited Art, dkt. #441
These two motions can be addressed in one order because both are directed to
plaintiffs’ contention that defendants’ expert witness, Benedict Occhiogrosso, is unqualified
to testify as an expert witness. (In the second motion, plaintiffs assert reasons in addition
to his alleged lack of qualifications for barring his testimony; I will discuss those at the end
of this section.) Plaintiffs take the position that the person of ordinary skill in the art must
23
have specific experience with telecommunications relay services for the deaf and hard of
hearing; defendants argue that such specialization is not necessary and that the person would
meet the definition if he had ordinary skill in the art of “telecommunication systems and
methods in which an intermediary facilitates voice to text transcription.”
I am persuaded that defendants have the better of the argument, that the proper
definition of a person of ordinary skill in the art would be a person with experience and skill
in the technical art of telecommunications and voice-to-text transcription. (Because I agree
with plaintiffs that the phrase “methods in which an intermediary facilitates voice-to-text
transcription” improperly adds features that I rejected on claims construction, I have used
“voice-to-text transcription.”) “In determining the relevant art for purposes of addressing
issues of patent validity, the court must look to the problem confronting the inventor.”
Bancorp Services, L.L.C. v. Hartford Life Insurance Co., 359 F.3d 1367, 1375 (Fed. Cir.
2004); see also Roberts v. Sears, Roebuck & Co., 723 F.2d 1324, 1334 (7th Cir. 1983)
(“Pertinent art has been defined as the art to which one can reasonably be expected to look
for a solution to a problem that the patented device attempts to solve.”). In this instance,
the field of telecommunication is the one to which a person of ordinary skill in the art would
look for methods of improving telecommunication for deaf and hard of hearing users and,
in particular, voice-to-text transcription.
Defendants’ proposed definition encompasses a person with experience and skill in
the field of telecommunication services for the deaf and hard of hearing but is not limited
to persons working only in that particular area. It defines the art to which an inventor would
24
look to solve particular problems of telecommunication and voice to text transcription,
whether the inventor is trying to solve a problem for a deaf or hard of hearing user, for a
person looking for language interpretation services or for others seeking means of converting
speech to text.
The definition is also supported by the patents in suit, many of which include a
statement explaining that the inventions disclosed in them are not limited to problems of
the deaf and hard of hearing, but may solve problems of the kind that arise in many areas
of telecommunication as well as in voice-to-text transcription. E.g., ‘314 and ’482 patents
(“The improvements to the relay system and method of operating the relay described herein
are applicable to the broad TDD [telecommunication device for the deaf] community and
to all the applications in which a relay is normally used,” col. 3, lns. 16-20); ‘104 patent
(“Relay voice to text service might also be useful for any application in which it is desired to
supplement voice communications by a text transcription of the voice spoken on the
telephone,” col. 3, lns. 42-45 and “the “assisted user,” described in patent “may be deaf or
hard of hearing, but . . . may also be a normally hearing person who simply wants text
assistance for some reason”); and ‘346 patent (“Relay voice to text service might also be
useful for any application in which it is desired to supplement voice communications by a
text transcription of the voice spoken on the telephone.” Col. 3, lns. 39-42).
Insofar as plaintiffs’ assertions of Occhiogrosso’s lack of qualifications relate to his
alleged lack of experience with deaf and hard of hearing users, they need no further
discussion in light of the determination that the relevant art is broader than plaintiffs’
25
proposed definition.
Insofar as plaintiffs contend that Occhiogrosso’s training and
experience are insufficient even under the proper definition, their contention has no basis.
Occhiogrosso’s initial and supplemental expert reports list his experience in a number of
areas: traditional relay systems, including a system in which an audio signal is routed first
to interpreters who revoice what they hear in another language, after which the translated
audio signal is routed to those in need of it; captioning systems for public meetings; the
design and implementation of custom telecommunications systems, including routing and
switching of voice and text over different combinations of telephone lines and IP
connections; the implementation of medical transcription systems; the use of speech
recognition and error correction techniques; the design of a system for transcribing voicemail
messages; the application of speaker-dependent speech recognition to recorded voicemail
messages; and voice digitization, using circuit, packet and hybrid integrated switching
systems, including comparing cost, expandability, complexity, performance and reliability.
As mentioned earlier, plaintiffs object to Occhiogrosso’s supplementation of his report
to add more details about his experience in the relevant art, after the court had given
defendants limited permission to supplement the report to discuss Ludwick’s discussion of
the modem. However, Occhiogrosso’s supplementation in respect to his prior experience
and skill level merely adds detail to information he supplied in his initial expert reports on
non-infringement, dkt. #135, invalidity, dkts. ##134 and 133, and infringement, dkt.
#140. Plaintiffs had three weeks to review the new material before the August deposition,
so I will allow it. Occhiogrosso’s experience supports a finding that he is a person of
26
ordinary skill in the relevant art, as I have defined it, and he will be allowed to testify as an
expert.
Plaintiffs have two additional challenges to Occhiogrosso’s testimony: they want him
barred from testifying about enablement as it relates to the Ryan patent, which defendants
contend is prior art, and they do not want him to testify about a figure that allegedly depicts
the teachings of McLaughlin. Plaintiffs point out, correctly, that Occhiogrosso did not say
anything about enablement in his expert report on invalidity, dkt. #133, and that
defendants gave no indication that they intended to submit an expert report on enablement.
Instead, defendants waited until one business day before Occhiogrosso’s May 8 and 9, 2014
deposition to serve plaintiffs the documents on which Occhiogrosso relied to reach an
opinion about enablement. Moreover, defendants never questioned Occhiogrosso on the
issue until the second day of the deposition, but plaintiffs had an opportunity to cross
examine him on those opinions at length during that second day of the deposition.
Occhiogrosso Dep., dkt. #173, 296-324.
Defendants should have provided plaintiffs written materials from Occhiogrosso more
than one day before his deposition. However, in light of plaintiffs’ opportunity to cross
examine him at his deposition and question him about the late-produced documents, I will
not bar him from testifying at trial about his beliefs that Ryan was enabled. The fact that
Occhiogrosso did not discuss the factors in In re Wands, 838 F.2d 731, 737 (Fed. Cir.
1988), at his deposition is not a reason to bar his testimony, particularly since his
counterpart, plaintiffs’ expert, Paul Ludwick did not do so either.
27
Plaintiffs also want Occhiogrosso barred from providing evidence or testimony about
a figure that allegedly depicts the teaching of the McLaughlin patent because he did not
submit a declaration including this figure until May 12, 2014. This was three days after he
had been deposed on May 8-9, and three months after he had submitted his expert report
on invalidity. As plaintiffs point out, Occhiogrosso never supplemented his report to include
the figure. Plaintiffs contend that this failure to produce “a complete statement of all
opinions the witness will express and the basis and reasons for them” mandates exclusion
under Fed. R. Civ. P. 26(a)(2)(B) and NutraSweet Co. v. X-L Engineering Co., 227 F.3d
776, 785-86 (7th Cir. 2000) (failure to file supplemental report hampered opposing party’s
ability to examine expert witness; sanction of exclusion was not abuse of discretion).
Defendants’ view of the situation is much different. They say that the “figure” is
nothing more than a “single demonstrative figure of an opinion disclosed and discussed in
Mr. Occhiogrosso’s expert report,” Dfts.’ Opp. to Plts.’ Mot. to Strike, dkt. #214 at 13, and
that plaintiffs had a full opportunity to depose Occhiogrosso on the same opinion at his
deposition on May 8-9. Id. at 14-15. Without having a copy of the figure, I cannot fully
assess its significance, but unless it is something more than the kind of demonstrative figure
a witness might scribble on a white board at trial to illustrate a concept, I will not strike it.
If plaintiffs think it is, they can raise the issue at the final pretrial conference, so long as they
have a copy of the figure for the court’s review.
28
III. DEFENDANTS’ MOTIONS IN LIMINE
A. Defendants’ Motion in Limine No. 1 to Exclude Reference to
Defendants’ Ownership Interests, dkt. #394
Defendants contend that the jury should not hear any evidence or argument regarding
the private equity ownership of either defendant. Plaintiffs seem to agree, arguing only that
such evidence is relevant to whether defendants will be able to avoid satisfying a monetary
judgment and the question of irreparable harm with respect to monetary relief. Therefore,
I will grant defendants’ motion to the extent that plaintiffs may not make any reference to
defendants’ ownership interests to the jury.
B. Defendants’ Motion in Limine No. 2 to Exclude Reference to
Defendants’ Overall Revenues, Dkt. #395
Defendants ask that the court not allow the jury to hear any evidence or argument
related to (1) defendants’ overall revenues during the infringement phase of the trial and (2)
defendant Sorenson’s size, wealth, revenues and market share during the damages phase of
trial. Plaintiffs agree that Sorenson’s overall revenues are not relevant during the liability
phase of trial but argue that Sorenson’s revenues related to the accused products and services
and all of CaptionCall’s revenues are relevant to plaintiffs’ claim of induced infringement.
Plaintiffs contend that the fact that defendants were able to establish a large revenue stream
is circumstantial evidence of their motive to continue inducing infringement.
I find that any probative value defendants’ revenue stream may have with respect to
their intent to induce infringement is significantly outweighed by the potential prejudice that
29
it may have on the jury during the liability phase of trial. The parties’ remaining arguments
relating to the damages phase of trial will be addressed in a separate order.
C. Defendants’ Motion in Limine No. 6 to Exclude Evidence and Argument Related to
Sorenson’s Video Relay Services, dkt. #399
Defendants ask that the court not permit the jury to hear evidence or argument about
any complaints or comments made by Kelby Brick (former chief of the Disability Rights
Office) or the Federal Communications Commission with respect to defendant Sorenson’s
video relay services. Plaintiffs have made clear in their response brief that they consider such
evidence and argument relevant only to their request for a permanent injunction. Because
any issues relating to injunctive relief will be tried to the court outside the presence of the
jury, defendants’ motion is moot.
D. Defendants’ Motion No. 11 to Exclude Secondary Considerations of
Honors and Awards, dkt. #404
This motion relates to secondary considerations of obviousness for the three features
that plaintiffs allegedly claimed in their inventions: revoicing, nearly simultaneous voice and
text and two-line captioned telephone service. Defendants seek to preclude testimony about
any awards and honorary degrees given to plaintiffs or patent inventors Robert Engelke and
Kevin Colwell because plaintiffs have not shown that there is any nexus between such
evidence and the merits of the asserted claims. Defendants mention only two awards by
name and do not provide any further information: Engelke’s honorary degree from the
30
University of Wisconsin and Colwell’s Andrew Saks Engineering Award.
Plaintiffs
responded by providing information concerning the purpose and nature of the awards. A
review of these submissions indicates that the honorary degree and award are relevant both
to establishing the witnesses’ qualifications as employee experts and as evidence of secondary
considerations. The jury will be allowed to hear such evidence and weigh it accordingly.
Defendants’ motion no. 11 will be denied.
E. Defendants’ Motion to Exclude Certain Testimony of
Plaintiffs’ Expert James Steel, dkt. #411
Defendants ask that this court preclude Steel from offering an expert opinion on nonobviousness of the ‘082, ‘740 and ‘104 patents because Steel testified at his deposition that
he analyzed obviousness to a person of ordinary skill in the art in 1997 rather than in 2001,
the priority date of the three patents. Steel did testify at one point that he considered
September 8, 1997, the filing date of the ‘482 patent, when conducting his invalidity
analysis of the three patents. Steel Dep. Tr., dkt. #367, at 14-15. However, as plaintiffs
point out, he states in his report and other portions of his deposition testimony that he
evaluated obviousness for the three patents as of 2001. Steel Dep. Tr., dkt. #367 at 14 and
30-31; Steel Expert Rep., dkt. #96 at 184. Although defendants admit that Steel refers to
2001 in his report, they argue that those particular opinions are inconsistent with plaintiffs’
own admissions of the state of the art in 2001. They also contend that Steel based his
analysis of the Ryan and Yamamoto references on the mid-1990s.
31
A review of Steel’s report suggests that defendants have interpreted Steel’s statements
incorrectly. Even if defendants are correct, however, their criticisms show only that Steel
provided inconsistent testimony and that his opinion contradicts some evidence of the state
of the art in 2001. These facts do not make his report unreliable; they go to the weight that
the jury should give to Steel’s opinion and are fodder for cross examination at trial.
Accordingly, defendants’ motion will be denied.
F. Defendants’ Motion to Exclude Certain Testimony from Plaintiffs’ Expert
Paul Ludwick, dkt. #413
Defendants ask the court to bar Ludwick from testifying on whether speech
recognition technology was enabled in the prior art (specifically the Ryan reference) or the
asserted patents and whether internet protocol connections constitute other types of
communication connections or are equivalent to them. Defendants argue that Ludwick
admitted in his deposition that he did not consider himself an expert in either speech
recognition or internet protocol technologies and stated that his opinions regarding
enablement of speech recognition were based on “internet research” of an unknown source.
Dkt. #139 at 155 and 209; dkt. #359 at 77, 83, 157-58.
Ludwick’s testimony is not inadmissible as unreliable merely because he testified that
he was not an expert in certain areas not directly related to the technology at issue in this
case or because he performed research on the internet.
Plaintiffs point to relevant
experiences and projects on which Ludwick has worked in incorporating both internet
protocol and speech recognition software in relay services. I am satisfied that Ludwick is
32
qualified to talk about the use (or lack of use) of speech recognition software and internet
protocol in relay services on the basis of his personal experience in designing and managing
relay services and assessing whether speech recognition software could have been used in
relay services in the 1990s. However, defendants raise a valid concern about his statements
related to the basis for the following opinion: “[m]any speech recognition experts agree that
a computer with a minimum processing speed of 200 megahertz is required for continuous
speech recognition applications.” Dkt. #278, exh. 2 at 9. At his deposition, he said that he
reached this opinion by “simply [doing] some research on the internet at speech recognition
websites to find out some more information.” Dkt. #139 at p. 209-10. He also said that
he had no other basis for this opinion. Ludwick appears to have no personal knowledge of
the particular computing power needed to run speech recognition software and plaintiffs
have not identified the specific source or sources of that opinion. Accordingly, Ludwick will
not be allowed to testify on this specific issue.
With respect to internet protocol connections, plaintiffs correctly point out that there
should not be a need for Ludwick or any other expert to testify about the equivalency of
those connections to telephone connections because I have construed the “telephone” terms
as not excluding internet protocol connections.
In sum, although Ludwick is not qualified to testify about the technical aspects of
speech recognition software, he will be allowed to state an opinion on what he observed with
respect to its performance and function within a relay service. The same applies to internet
protocol connections. Ludwick is sufficiently qualified to discuss how internet protocol
33
connections function within a relay system to offer opinions about functional equivalence
or non-infringing alternatives. Defendants will be free to cross examine Ludwick on the
extent of his experience and knowledge with respect to both areas of technology.
G. Defendants’ Motion to Exclude Evidence Regarding Secondary Conditions of
Nonobviousness, dkt. #456
In attempting to rebut evidence that a patent claim is invalid because it is obvious
under 35 U.S.C. § 103, a patent owner may submit evidence of objective factors that
indicate that the invention is not obvious. Source Search Technologies, LLC v. LendingTree,
LLC, 588 F.3d 1063, 1069 (Fed. Cir. 2009). This motion relates to the extent to which
plaintiffs may submit evidence at trial on those objective, or “secondary” factors. I am
granting defendants’ motion with respect to their arguments that (1) plaintiffs are not
entitled to a presumption that the commercial success of their products was the result of the
patents in this case; and (2) plaintiffs may not argue that their products met an unfelt need
for “nearly simultaneous” captions. I am denying the motion in all other respects.
1. Commercial success
“Commercial value is indeed one of the indicia of nonobviousness . . . because an
invention that has commercial value is likely to come on the market very shortly after the
idea constituting the invention . . . became obvious; if the invention did not appear so soon
despite its value in the market, this is some evidence that it wasn't obvious after all.” Ritchie
v. Vast Resources, Inc., 563 F.3d 1334, 1336 (Fed. Cir. 2009) (Posner, J.). However,
34
because “[t]he commercial success of a product can have many causes unrelated to
patentable inventiveness,” id., “[e]vidence of commercial success . . . is only significant if
there is a nexus between the claimed invention and the commercial success.” Ormco Corp.
v. Align Technology, Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
The first issue in dispute is whether plaintiffs are entitled to a presumption of a nexus.
Plaintiffs say that they are because their products “perform the elements of the asserted
claims,” Plts.’ Br., dkt. #519, at 2, but that is not the test. Rather, the question is whether
plaintiffs’ products are “coextensive” with the patent claims. Brown & Williamson Tobacco
Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Defendants argue that
plaintiffs’ products are not coextensive with the claims because the products include many
features that are not included in plaintiffs’ patents. Because it is plaintiffs’ burden to show
that they are entitled to a presumption, Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392 (Fed. Cir. 1988), and plaintiffs have not developed an argument under
the correct standard, I conclude that they are not entitled to a presumption.
The next issue is whether plaintiffs may present any evidence regarding the
commercial success of their products as evidence of nonobviousness. Defendants argue that
plaintiffs have not presented sufficient evidence to allow a reasonable jury to find a link
between plaintiffs’ inventions and the commercial success of their products, but that is a
thinly-veiled motion for summary judgment, not a proper motion in limine. Accordingly,
I conclude that both sides may put in whatever admissible evidence they have regarding the
reasons for the commercial success of plaintiffs’ products. If defendants believe that the
35
evidence at trial shows as a matter of law that plaintiffs’ patents are invalid despite their
commercial success, defendants will be free to file a motion under Fed. R. Civ. P. 50 at the
appropriate time.
2. Long-felt need
“The existence of an enduring, unmet need is strong evidence that the invention is
novel, not obvious, and not anticipated. If people are clamoring for a solution, and the best
minds do not find it for years, that is practical evidence . . . of the state of knowledge.”
Matter of Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation, 831 F. Supp.
1354, 1378 (N.D. Ill. 1993) (Easterbrook, J.).
Defendants assert two arguments about this factor. First, they say that plaintiffs do
not have sufficient evidence to support it, but again, I decline to consider that argument
because defendants should have raised it in a motion for summary judgment.
Second, defendants assert a narrower argument that plaintiffs’ experts should not be
permitted to testify that there was a long-felt need for “nearly simultaneous” revoiced
captions and voice because plaintiffs’ patents in this case do not include that requirement.
Defendants rely on a passage in the summary judgment opinion that “none of the claims at
issue require real-time revoicing or any other temporal limitation regarding the speed at
which the claimed steps must be performed.” Dkt. #351 at 66.
In response, plaintiffs do not argue explicitly that any of their patents include a
temporal limitation. Instead, they cite Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
36
776 F.2d 281, 306 n.42 (Fed. Cir. 1985), for the proposition that “[c]ase law requires that
a nexus be established between the merits of the claimed invention and the evidence
prof[f]erred on secondary considerations.” Under Ashland, plaintiffs say, it is enough if the
“asserted claims result in the assisted user receiving the revoiced captions and voice of the
hearing user substantially simultaneously.”
Plts.’ Br., dkt. #519, at 12 (emphasis in
original). However, even if I accept plaintiffs’ interpretation of the standard, the passage of
the expert report they cite is simply a conclusion without any accompanying explanation to
support a view that the claimed inventions necessarily lead to “nearly simultaneous”
captions. Id. (quoting Ludwick Validity Rep., dkt. #98, at 258 (asserted claims “include
elements that result in the assisted user receiving the revoiced captions and voice of the
hearing [user] substantially simultaneously”)). In their brief, plaintiffs state that “use of the
term ‘caption’ or other description of voice and text both going to the user, implies
synchronicity between the voice and text.” Id. at 11-12. However, that appears to be an
argument about claim construction, an argument that is both undeveloped and inconsistent
with the summary judgment opinion. Because plaintiffs have not supported their position
with an expert opinion or a developed legal argument, I am granting this aspect of
defendants’ motion.
3. Praise
Plaintiffs wish to rely on praise they received from their customers and from Sprint
and Hamilton as evidence of nonobviousness. Defendants argue that “industry praise” may
37
be evidence of nonobviousness, Apple Inc. v. International Trade Commission, 725 F.3d
1356, 1366 (Fed. Cir. 2013), but praise from customers and “resellers” such as Sprint and
Hamilton are not.
The parties debate whether Sprint and Hamilton are “competitors” or “resellers” of
plaintiffs, but I need not resolve that issue for the purpose of this motion. Although praise
from a competitor might be more indicative of nonobviousness than a praise from a reseller,
defendants cite no authority for the view that praise from “friendlier” sources is inadmissible.
Defendants are free to point out any reasons to question the praise on cross-examination.
I reach the same conclusion with respect to the customers. Praise from customers is not as
compelling as praise from experts in the industry but, again, defendants do not cite any
authority for the view that plaintiffs’ evidence is inadmissible. Accordingly, I am denying
this part of defendants’ motion in limine.
ORDER
IT IS ORDERED that
1. Defendants’ motion to adopt their proposed claim construction, dkt. #478, is
DENIED. The term “captioned telephone display device” in claim 1 of the ‘346 patent is
construed as not being limited to a device that is connected to or integrated with a
conventional telephone or that filters out text signals.
2. Plaintiffs’ motion in limine no. 1, dkt. #418, is DENIED.
3. Plaintiffs’ motion in limine no. 2, dkt. #420, is DENIED as unnecessary.
38
4. Plaintiffs’ motion in limine no. 3, dkt. #422, is GRANTED except that this ruling
does not prohibit defendants from introducing evidence that a particular prior art reference
was not before the patent office when it reviewed plaintiffs’ applications for patents or that
a patent has obvious errors.
5. The ruling on plaintiffs’ motion in limine no. 4, dkt. #424, is RESERVED. If at
trial either side believes it needs a ruling on a particular witness or a particular line of
questioning, it can request one from the court.
6. Plaintiffs’ motion in limine no. 5, dkt. #426, is GRANTED with respect to
evidence submitted purely for the purpose of disclosing plaintiffs’ requests for injunctive
relief, treble damages and attorneys’ fees.
7. Plaintiffs’ motion in limine no. 6, dkt. #428, is GRANTED except that defendants
may introduce evidence related to what prior art was or was not before the patent office.
8. Plaintiffs’ motion in limine no. 7, dkt. #435, is DENIED. However, within three
days of the date of this order, defendants shall identify any possible obviousness contentions
that they have not identified previously to plaintiffs.
9. Plaintiffs’ motion in limine no. 8, dkt. #437, is DENIED.
10. Plaintiffs’ motion in limine no. 9, dkt. #439, is GRANTED to the extent that
defendants cannot show that such evidence is submitted for a relevant reason other than
contradicting this court’s summary judgment rulings.
11. Plaintiffs’ motion in limine no. 10, dkt. #442, is DENIED on the condition that
defendants must show that the particular statements that they intend to introduce at trial
meet the conditions outlined in § II.J of this opinion.
39
12. Plaintiffs’ motion in limine no. 11, dkt. #446, is GRANTED.
13. Plaintiffs’ motion in limine no. 13, dkt. #453, is GRANTED in part and
DENIED in part.
Although defendants may not introduce the testimony of Gregg
Vanderheiden for the truth of his opinions, defendants may introduce his testimony as
evidence of their state of mind. The parties shall submit a proposed curative instruction by
12 noon on Wednesday, October 1, 2014.
14. Plaintiffs’ motion in limine no. 18, dkt. #471, is GRANTED to the extent that
neither party will be allowed to introduce improperly disclosed expert opinions or to argue
or present evidence on the existence of claim elements that are inconsistent with the court’s
claim constructions. This ruling is subject to the conditions set forth in § II.M of this
opinion.
15. Plaintiffs’ motion in limine no. 19, dkt. #470, is DENIED.
16. Defendants’ motion to exclude argument and testimony analyzing invalidity from
the perspective of limited art, dkt. #441, is GRANTED.
The relevant art is that of
telecommunications and voice-to-text transcription.
17. Defendants’ motion in limine no. 1, dkt. #394, is GRANTED to the extent that
plaintiffs may not make any reference to defendants’ ownership interests to the jury.
18. Defendants’ motion in limine no. 2, dkt. #395, is GRANTED with respect to
references to either of the defendants’ overall revenues during the liability phase of trial. The
motion is STAYED with respect to references to defendant Sorenson’s size, wealth, revenues
and market share during the damages phase of trial.
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19. Defendants’ motion in limine no. 6, dkt. #399, is DENIED as moot.
20. Defendants’ motion in limine no. 11, dkt. #404, is DENIED.
21. Defendants’ Daubert motion to exclude testimony of James Steel, dkt. #411, is
DENIED.
22. Defendants’ motion to exclude certain testimony from plaintiffs’ expert Paul
Ludwick, dkt. #413, is GRANTED with respect to Ludwick’s opinions about the technical
aspects of speech recognition software and DENIED in all other respects. Ludwick may
discuss what he observed with respect to the performance and function of speech recognition
and internet protocol connection technology within a relay service. He also may state an
opinion on whether internet protocol connections constitute or are equivalent to other types
of telecommunications connections.
23. Defendants’ motion to exclude evidence of secondary considerations, dkt. #456,
is GRANTED with respect to defendants’ arguments that (1) plaintiffs are not entitled to
a presumption that the commercial success of their products was the result of the patents in
this case; and (2) plaintiffs may not argue that their products met an unfelt need for “nearly
simultaneous” captions. The motion is DENIED in all other respects.
Entered this 29th day of September, 2014.
BY THE COURT:
/s/
BARBARA B. CRABB
District Judge
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