Case 3:18-cv-00347-CAB-MDD Document 342-11 Filed 10/29/21 PageID.31456 Page 1 of 5
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`EXHIBIT 10
`TO TRENT TANNER DECLARATION ISO
`NUVASIVE’S COMBINED MOTIONS IN LIMINE
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`Case 3:18-cv-00347-CAB-MDD Document 342-11 Filed 10/29/21 PageID.31457 Page 2 of 5
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`Case: 1:10-cv-00715 Document #: 2101 Filed: 08/26/21 Page 1 of 2 PageID #:111830
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`UNITED STATES DISTRICT COURT
`FOR THE Northern District of Illinois − CM/ECF LIVE, Ver 6.3.3
`Eastern Division
`
`Trading Technologies International, Inc.
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`v.
`
`BCG Partners, Inc., et al.
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`Plaintiff,
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`Defendant.
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`Case No.: 1:10−cv−00715
`Honorable Virginia M. Kendall
`
`NOTIFICATION OF DOCKET ENTRY
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`This docket entry was made by the Clerk on Thursday, August 26, 2021:
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` MINUTE entry before the Honorable Virginia M. Kendall. Before the Court is
`TT's motion to reconsider this Court's Order permitting Bernard Donefer to use
`demonstrative slides containing explanatory quotes from caselaw. (Dkt. [2090], [2096]).
`"Motions for reconsideration serve a limited function: to correct manifest errors of law or
`fact or to present newly discovered evidence." Caisse Nationale de Credit Agricole v. CBI
`Indus., 90 F.3d 1264, 1269 (7th Cir. 1996) (internal quotations and citation omitted). The
`party seeking the Court's reconsideration must give the Court "a reason for changing its
`mind." Ahmed v. Ashcroft, 388 F.3d 247, 249 (7th Cir. 2004). The Court ruled on TT's
`motion to exclude Donefer's demonstrative slides without the benefit of the caselaw TT
`now cites in support of reconsideration. Having reviewed those cases, the Court grants
`TT's motion for reconsideration and excludes Donefer's demonstrative slides discussing
`and quoting opinions by courts. Donefer's slides discuss dicta from caselaw that goes
`beyond the applicable claim constructions in this case. Claim construction is a question of
`law and exclusively within the province of the Court. Markman v. Westview Instruments,
`Inc., 517 U.S. 370, 372 (1996). While Donefer relied on these cases in reaching his
`conclusions, discussion of those cases in front of the Jury is likely to confuse and mislead
`the jury. See e.g., CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed.
`Cir. 2005) (trial court erred in allowing parties to present expert testimony regarding claim
`constructions observing that "[t]he risk of confusing the jury is high when experts opine
`on claim construction before the jury even when, as here, the district court makes it clear
`to the jury that the district court's claim constructions control."); MLC Intell. Prop., LLC
`v. Micron Tech., Inc., No. 14−CV−03657−SI, 2019 WL 2493379, at *1 (N.D. Cal. June
`14, 2019) (precluding expert witness from testifying about dicta from claim construction
`orders); France Telecom S.A. v. Marvell Semiconductor Inc., No. 12−CV−04967−WHO,
`2014 WL 4272771, at *1 (N.D. Cal. Aug. 28, 2014) ("Reference to the claim construction
`order, including the Court's reasoning, is precluded, except for references to the actual
`constructions."); Sunny Fresh Foods, Inc. v. Michael Foods, Inc., 130 F. App'x 459,
`464−65 (Fed. Cir. 2005) (trial court did not err in excluding dicta from claim construction
`order in claim constructions accompanying jury instructions). Similarly, Donefer
`discusses judgments in prior lawsuits where the term "static" was applied to different
`products. Discussion of these opinions relating to different products is also likely to
`confuse and mislead the Jury. See e.g., Clipco, Ltd. v. Ignite Design, LLC, No. 04 C 5043,
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`EXHIBIT 10, Page 147 of 150
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`2005 WL 2861032, at *2 (N.D. Ill. Oct. 28, 2005) ("In the jury's presence, neither party
`shall refer to the court's summary judgment ruling, its factual findings, or rulings of
`law."). For these reasons, TT's motion for reconsideration [2096] is granted. Mailed
`notice(lk, )
`
`ATTENTION: This notice is being sent pursuant to Rule 77(d) of the Federal Rules of
`Civil Procedure or Rule 49(c) of the Federal Rules of Criminal Procedure. It was
`generated by CM/ECF, the automated docketing system used to maintain the civil and
`criminal dockets of this District. If a minute order or other document is enclosed, please
`refer to it for additional information.
`
`For scheduled events, motion practices, recent opinions and other information, visit our
`web site at www.ilnd.uscourts.gov.
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`EXHIBIT 10, Page 148 of 150
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`UNITED STATES DISTRICT COURT
`FOR THE Northern District of Illinois − CM/ECF LIVE, Ver 6.3.3
`Eastern Division
`
`Trading Technologies International, Inc.
`
`v.
`
`BCG Partners, Inc., et al.
`
`Plaintiff,
`
`Defendant.
`
`Case No.: 1:10−cv−00715
`Honorable Virginia M. Kendall
`
`NOTIFICATION OF DOCKET ENTRY
`
`This docket entry was made by the Clerk on Thursday, August 26, 2021:
`
` MINUTE entry before the Honorable Virginia M. Kendall. TT moves to exclude
`certain demonstrative slides accompanying Brett Reed's expert testimony [2092].
`Specifically, TT seeks to exclude slides mentioning (1) new opinions not disclosed in
`Reed's expert report; (2) quotations of caselaw; and (3) noncomparable license
`agreements. As to the first category of slides, "[a]n expert witness may not testify to
`subject matter beyond the scope of the witness's expert report unless the failure to include
`that information in the report was "substantially justified or harmless." Rembrandt Vision
`Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 725 F.3d 1377, 1381 (Fed. Cir.
`2013) (quoting Fed. R. Civ. P. 37(c)(1)). Slide 46 supports an opinion that none of the
`agreements Lawton relied on to reach her damages opinion contain provisions regarding
`payment for download software. Although Reed discussed these agreements in detail in
`his report, this observation regarding the agreements was not disclosed in the report and is
`thus excluded. Slide 67 mentions that PatSystems, Strategy Runner, and NinjaTrader all
`implemented non−infringing alternatives. This fact is discussed in Reed's report, so the
`slide is admitted. (See Dkt. [2099] at 23−42, 176−86). Slide 68 merely explains what a
`non−infringing alternative is and whether IB could have switched to one, a topic discussed
`in Reed's report. (See Dkt. [2099] at 178−185, 203, 207−210, 214−16, 222−223, 243). It
`is admitted. Slide 69 discusses a non−infringing alternative outside the United States.
`Although Reed discussed this in his report, IB indicated it has since abandoned this theory
`of non−infringing alternatives. (See Dkt. [2020] at 1). Slide 69 is accordingly excluded.
`Slides 70−72 assert that the PatSystems, Strategy Runner, and NinjaTrader agreements
`had a larger scope than IB's hypothetical negotiation with TT. Reed discussed the terms of
`the agreements as well as their scope in his report. (See Dkt. [2099] at 247−248, Tab T1).
`Slides 70 through 72 are admitted. Finally, Slides 93 and 95 discuss various royalty
`amounts premised on various royalty rates (2 cents, 5 cents, and 10 cents). Reed
`concluded a 5 cent royalty applies and to the extent the remaining amounts are merely
`provided as a comparison, the slides are admissible. Next, as this Court ruled with respect
`to Bernard Donefer's testimony, statements of law from other cases is likely to confuse
`and mislead the Jury as to the law they are required to apply in this case. (Dkt. [2101]);
`see also Clipco, Ltd. v. Ignite Design, LLC, No. 04 C 5043, 2005 WL 2861032, at *2
`(N.D. Ill. Oct. 28, 2005) (precluding expert from discussing summary judgment opinion or
`ruling in jury's presence). "It is the role of the judge, not an expert witness, to instruct the
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`EXHIBIT 10, Page 149 of 150
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`jury on the applicable principles of law." Jimenez v. City of Chicago, 732 F.3d 710, 721
`(7th Cir. 2013). Slides 34 and 49 are accordingly excluded. Finally, TT argues Reed
`cannot rely on noncomparable licensing agreements, i.e., those other than the PatSystems,
`Strategy Runner, and NinjaTrader agreements, to support his reasonable royalty
`assessment. As a threshold matter, this issue should have been raised in a Daubert motion,
`the deadline for which has long passed. Regardless, Reed does not use the agreements to
`support his ultimate reasonable royalty assessment. Rather, the agreements are used to
`show that the $50 minimum and 10 cent royalty Lawton used in her royalty assessment
`are flawed. TT also argues that the manner in which Reed seeks to rely on the agreements
`was not disclosed in his report. Reed's demonstrative slides indicate he will use the
`agreements to show that other competitors did not agree to pay a $50 minimum/monthly
`fee or a 10 cent royalty. These opinions were adequately disclosed in Reed's report. (See
`Dkt. 2099−2 at 194−196). Two slides, however, indicate Reed will opine that other
`competitors did not agree to pay $1,000 per month for TWS poached traders. (See
`DDX−11 Slides 26−27). This opinion was not disclosed in his report and is excluded.
`TT's motion [2092] is granted in part and denied in part. Mailed notice(lk, )
`
`ATTENTION: This notice is being sent pursuant to Rule 77(d) of the Federal Rules of
`Civil Procedure or Rule 49(c) of the Federal Rules of Criminal Procedure. It was
`generated by CM/ECF, the automated docketing system used to maintain the civil and
`criminal dockets of this District. If a minute order or other document is enclosed, please
`refer to it for additional information.
`
`For scheduled events, motion practices, recent opinions and other information, visit our
`web site at www.ilnd.uscourts.gov.
`
`EXHIBIT 10, Page 150 of 150
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