Case 3:14-cv-02235-DMS-BLM Document 448 Filed 07/21/18 PageID.21989 Page 1 of 3
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`Mike McKool
`Direct Dial: (214) 978-4002
`mmckool@McKoolSmith.com
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`300 Crescent Court
`Suite 1500
`Dallas, TX 75201
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`July 21, 2018
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`Telephone: (214) 978-4000
`Facsimile: (214) 978-4044
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`The Honorable Dana M. Sabraw
`United States District Court
`Southern District of California
`333 West Broadway, Suite 1310
`San Diego, CA 92101
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`RE:
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`Wi-LAN Inc. v. Apple Inc., No. 3:14-cv-1507-DMS-BLM; (Lead Case No.
`3:14-cv-2235-DMS-BLM)
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`Dear Judge Sabraw,
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`Wi-LAN respectfully submits this letter to make an offer that hopefully will allow the
`Court to reconsider its decision denying Wi-LAN’s Motion in Limine No. 3 precluding the
`parties from offering evidence or argument about prior cases between Wi-LAN and Apple. Wi-
`LAN strongly believes that the parties’ litigation history is not relevant to willfulness for the
`reasons set forth in the briefing and at oral argument. However, in the interest of receiving a fair
`trial on these patents, which the parties have never previously litigated, Wi-LAN offers to
`withdraw both its willfulness and inducement allegations if the Court will preclude any
`evidence or argument regarding the parties’ prior litigation history.
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`This offer has precedent. A district court confronted with precisely this situation granted
`a motion in limine to exclude evidence of prior litigation upon the plaintiff’s agreement to drop
`willfulness and inducement. Akamai Techs., Inc. v. Limelight Networks, Inc., No. CIV.A. 06-
`11109-RWZ, 2008 WL 364401, at *2 (D. Mass. Feb. 8, 2008).
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`Allowing Apple to argue to the jury that it has won multiple previous lawsuits against
`Wi-LAN on different patents will create prejudice that could well be impossible to recover from.
`In addition, Wi-LAN will be required to respond to the allegations about what was involved in
`the previous cases, and the trial will devolve into re-litigation of the parties’ prior cases,
`distracting from the patents and products at issue here. Under these circumstances, we believe
`Wi-LAN will not be afforded a fair trial.
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`It is for this reason that courts routinely exclude evidence of prior lawsuits. See, e.g.,
`AVM Techs LLC v. Intel Corp., No. 15-33-RGA, 2017 WL 2938191, at *1 (D. Del. Apr. 19,
`2017) (granting motion in limine to exclude reference to another lawsuit, finding that the
`outcome “is irrelevant to his bargaining position at the date of the hypothetical negotiation,” and
`whatever probative value “is substantially outweighed by the danger of unfair prejudice”);
`Retractable Techs. Inc. v. Becton, Dickinson & Co., No. 2:07-CV-250, 2009 WL 8725107, at *2
`McKool Smith
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`Case 3:14-cv-02235-DMS-BLM Document 448 Filed 07/21/18 PageID.21990 Page 2 of 3
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`July 21, 2018
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`(E.D. Tex. Oct. 8, 2009) (rejecting argument that “‘the fact that the parties were in litigation
`simultaneously with the hypothetical negotiation would have a material effect on such
`negotiation.’ . . . . [explaining that] ‘[o]n balance, evidence of other litigation offered to prove
`Defendant's liability or the extent of damages should be excluded pursuant to at least Federal
`Rules of Evidence 403, 404, and 408.’”); Realtek Semiconductor Corp. v. LSI Corp., No. C-12-
`03451-RMW, 2014 WL 46997, at *7 (N.D. Cal. Jan. 6, 2014); ICU Med., Inc. v. RyMed Techs.,
`Inc., 752 F. Supp. 2d 486, 490–91 (D. Del. 2010).
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`Apple cited two cases where a court allowed a party to discuss failed prior lawsuits, but
`both are complete outliers that have no bearing here.1 In Finjan, the plaintiff sought to admit
`some prior litigation but exclude other prior litigation. ECF No. 419, Apple Opp. to MIL 3 at 12.
`See Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 2016 WL 4560071, at *9, *15 (N.D.
`Cal. Aug. 22, 2016). Here, Wi-LAN has no intention of admitting any prior litigation, and
`Apple’s representation that Wi-LAN’s damages expert “justified his damages opinion with
`multiple ‘upwards’ royalty rates adjustments because Apple stood up to Wi-LAN’s previous
`patent assertions rather than taking a license” is demonstrably false. ECF No. 419 at 11-12; see
`Ex. A (portion of Kennedy report cited in Apple’s opposition, making no mention of the parties’
`prior cases). For the avoidance of doubt, Mr. Kennedy will say nothing about prior litigations at
`trial. Donnelly Corp. v. Gentex Corp., 918 F. Supp. 1126 (W.D. Mich. 1996) is also irrelevant,
`as that case involved two parties alleged to infringe each other’s patents and a dispute as to
`which was entitled to the profits. Id. at 1134. Apple cites no other case showing that evidence of
`prior litigation was admitted at trial.
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`Accepting Apple’s position that the parties’ prior disputes on different patents and
`products is relevant to damages would be a boon for all patent defendants. By Apple’s
`reasoning, if a defendant wins just one case, then its win will be admissible as relevant to
`damages in every future proceeding against that party, effectively immunizing it from any future
`claim by the failed plaintiff. This cannot be the law. See, e.g., ECF No 96 at 5 (denying Apple’s
`attempt to render Wi-LAN’s patents unenforceable due to the parties’ prior litigation history).
`To the extent the Court finds the prior cases are tangentially relevant, their probative value is far
`outweighed by the prejudice Wi-LAN will suffer when Apple tells the jury that Wi-LAN lost
`four previous lawsuits.
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`Wi-LAN respectfully requests that the Court reconsider its denial of Wi-LAN’s Motion
`in Limine No. 3 in light of Wi-LAN’s offer to drop its willfulness and inducement allegations if
`evidence of the prior litigation is excluded. As noted, the offer Wi-LAN makes here has
`precedent, and we hope the Court will consider it.
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`1 Apple also cited Amini Innovation Corp. v. McFerran Home Furnishings, Inc., 301 F.R.D. 487,
`491 (C.D. Cal. 2014), for the proposition that “[t]he history of litigation between the Parties may
`certainly be relevant to the issue of willfulness and damages” (ECF No. 419 at 12-13), but failed
`to mention that this opinion denied a motion to strike a complaint. This case settled one year
`after it was filed, and no evidence of prior litigation was admitted at trial. Amini Innovation
`Corp.,No. 2:14-cv-02464-JAK-SS, ECF No. 66.
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`Sincerely,
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`/s/ Mike McKool
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`Mike McKool
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 21, 2018, I electronically transmitted the attached document
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`to the Clerk’s Office using the CM/ECF System for filing and transmittal of a Notice of
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`Electronic Filing to the CM/ECF registrants.
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`/s/ Mike McKool
`Mike McKool
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