`
`EVOLVED WIRELESS, LLC,
`
`
`
`
`
`APPLE INC.,
`
`Defendant.
`
`
`
`EVOLVED WIRELESS, LLC,
`
`
`
`
`
`SAMSUNG ELECTRONICS CO, LTD.
`and SAMSUNG ELECTRONCS
`AMERICA, INC.,
`
`
`
`Plaintiff,
`
`Plaintiff,
`
`
`
`v.
`
`
`
`v.
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`
`
`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 1 of 31 PageID #: 23760
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
`
`
`
`
`C.A. No. 15–cv–542–JFB-SRF
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`C.A. No. 15–cv–545–JFB-SRF
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`)
`)
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`)
`)
`)
`)
`)
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`
`
`Defendants.
`
`PLAINTIFF EVOLVED WIRELESS, LLC’S OPENING BRIEF IN SUPPORT OF
`MOTIONS IN LIMINE
`
`
`
`Dated: August 30, 2018
`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market Street, 12th Floor
`Wilmington, Delaware 19801
`(302) 777–0300
`(302) 777–0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Christopher K. Larus (admitted pro hac vice)
`Marla R. Butler (admitted pro hac vice)
`Ryan M. Schultz (admitted pro hac vice)
`John K. Harting (admitted pro hac vice)
`Benjamen C. Linden (admitted pro hac vice)
`Anthony F. Schlehuber (admitted pro hac vice)
`Rajin S. Olson (admitted pro hac vice)
`
`1
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 2 of 31 PageID #: 23761
`
`ROBINS KAPLAN LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, Minnesota 55402
`Telephone: (612) 349–8500
`Facsimile: (612) 339–4181
`clarus@robinskaplan.com
`mbutler@robinskaplan.com
`rschultz@robinskaplan.com
`jharting@robinskaplan.com
`blinden@robinskaplan.com
`aschlehuber@robinskaplan.com
`rolson@robinskaplan.com
`
`Annie Huang (admitted pro hac vice)
`ROBINS KAPLAN LLP
`399 Park Avenue, Suite 3600
`New York, NY 10022
`Telephone: (212) 980–7400
`Facsimile: (212) 980–7499
`ahuang@robinskaplan.com
`
`Counsel For Plaintiff Evolved Wireless, LLC
`
`
`
`
`
`
`2
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 3 of 31 PageID #: 23762
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ....................................................................................................... i 
`
`TABLE OF AUTHORITIES ............................................................................................... iii 
`
`I. 
`
`Evolved Wireless’s Motion in Limine No. 1 to Exclude Evidence and Argument
`
`Related to Sales of Unaccused Products or Accused Products Outside the United States. .. 1 
`
`II. 
`
`Evolved Wireless’s Motion in Limine No. 2 to Exclude Evidence and Argument
`
`Related to Alleged Royalty Stacking. ................................................................................... 3 
`
`III. 
`
`Evolved Wireless’s Motion in Limine No. 3 to Exclude Evidence and Argument
`
`Related to Defendants Being “Locked-In” or to “Patent Hold-Up.” .................................... 5 
`
`IV. 
`
`Evolved Wireless’s Motion in Limine No. 4 to Exclude Evidence and Argument
`
`Related to a Lump Sum Damages Award That Would Provide Unfettered Rights to
`
`Practice the Asserted Patents. ............................................................................................... 7 
`
`V. 
`
`Evolved Wireless’s Motion in Limine No. 5 to Exclude Evidence and Argument
`
`Related to a Potential Injunction. .......................................................................................... 8 
`
`VI. 
`
`Evolved Wireless’s Motion in Limine No. 6 to Exclude Evidence and Argument
`
`Related to Patent Trial and Appeal Board Final Written Decisions. .................................. 10 
`
`VII.  Evolved Wireless’s Motion in Limine No. 7 to Exclude Redacted Versions of
`
`
`
`. ............................................................................................. 13 
`
`VIII.  Evolved Wireless’s Motion in Limine No. 8 to Exclude Evidence and Argument
`
`Related to U.S. Patent No. 8,219,097. ................................................................................ 15 
`
`IX. 
`
`Evolved Wireless’s Motion in Limine No. 9 to Exclude any Non-Produced
`
`Evidence and Argument Regarding Licenses or License Negotiations. ............................. 17 
`
`i
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 4 of 31 PageID #: 23763
`
`X. 
`
`Evolved Wireless’s Motion in Limine No. 10 to Exclude Evidence and Argument
`
`Related to Defendants’ Own Specific Patents Related to LTE Technology. ..................... 18 
`
`XI. 
`
`Evolved Wireless’s Motion in Limine No. 11 to Exclude Evidence and Argument
`
`that Qualcomm is or Should be the Correct Defendant. ..................................................... 20 
`
`XII.  Evolved Wireless’s Motion in Limine No. 12 to Exclude Evidence and Argument
`
`Referring to Evolved Wireless with Pejorative, Derogative, or Negative Terms. .............. 22 
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 5 of 31 PageID #: 23764
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Abbott Point of Care, Inc. v. Epocal, Inc.,
`868 F. Supp. 2d 1310 (N.D. Ala. 2012) ........................................................................ 22
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007)......................................................................................... 8
`
`British Telecomms. PLC v. Google Inc.,
`No. 11-cv-1249, D.I. 382 (D. Del. Jan. 23, 2014) ........................................................ 23
`
`CIENA Corp. v. Corvis Corp.,
`352 F. Supp. 2d 526 (D. Del. 2005) ................................................................................ 9
`
`Commonwealth Sci. & Indus. Research Organisation v. Cisco Sys.,
`809 F.3d 1295 (Fed. Cir. 2015)....................................................................................... 5
`
`Continental Paper Bag Co. v. Eastern Paper Bag Co.,
`210 U.S. 405 (1908) ...................................................................................................... 24
`
`Cordis Corp. v. Medtronic Vascular, Inc.,
`No. 97-cv-550, 2005 U.S. Dist. LEXIS 6583 (D. Del. Feb. 28, 2005) ......................... 19
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) ................................................................................................ 17, 20
`
`eBay Inc. v. MercExchange, LLC,
`547 U.S. 388 (2006) ........................................................................................................ 8
`
`Eidos Display, LLC v. Chi Mei Innolux Corp.,
`No. 6:11-cv-00201, 2017 U.S. Dist. LEXIS 157062
`(E.D. Tex. May 26, 2017) ............................................................................................... 7
`
`Ericsson, Inc. v. D-Link Sys.,
`773 F.3d 1201 (Fed. Cir. 2014)....................................................................... 3, 4, 5, 6, 7
`
`GuideTech, Inc. v. Brilliant Instruments, Inc.,
`No. 09-cv-5517, D.I. 276 (N.D. Cal. Mar. 25, 2014) ..................................................... 9
`
`Hologic, Inc. v. Minerva Surgical, Inc.,
`No. 1:15-cv-1031, 2018 U.S. Dist. LEXIS 113051
`(D. Del. July 6, 2018).................................................................................................... 12
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`No. 10-cv-1067, D.I. 615 (D. Del. Jan. 6, 2015) .......................................................... 24
`iii
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 6 of 31 PageID #: 23765
`
`Interdigital Commc’ns Inc. v. Nokia Corp.,
`No. 13-cv-00010, D.I. 339 (D. Del. Aug. 28, 2014) ..................................................... 23
`
`Kirouac v. Donahoe,
`No. 2:11-cv-00423-NT, 2013 U.S. Dist. LEXIS 158716
`(D. Me. Nov. 6, 2013) ................................................................................................... 15
`
`LifeNet Health v. LifeCell Corp.,
`93 F. Supp. 3d 477 (E.D. Va. 2015) ............................................................................. 21
`
`Markman v. Westview Instruments,
`517 U.S. 370 (1996) ................................................................................................ 17, 20
`
`Microsoft v. Motorola,
`795 F.3d 1024 (9th Cir. 2015) ........................................................................................ 9
`
`Network-1 Techs. Inc. v. Alcatel-Lucent USA, Inc.,
`No. 6:11-cv-00492, 2017 U.S. Dist. LEXIS 154435
`(E.D. Tex. Sept. 21, 2017) .............................................................................................. 5
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................... 17
`
`Personalized User Model, LLP v. Google Inc.,
`No. 09-cv-525, 2014 U.S. Dist. LEXIS 25356 (D. Del. Feb. 27, 2014) ................. 12, 24
`
`Sanofi-Aventis Deutschland GmbH v. Glenmark Pharm., Inc., USA,
`No. 07-cv-5855, 2011 U.S. Dist. LEXIS 10512 (D.N.J. Feb. 3, 2011) ........................ 10
`
`Skyhook Wireless, Inc. v. Google, Inc.,
`No. 10-11571-RWZ, 2015 U.S. Dist. LEXIS 176164
`(D. Mass. Feb. 27, 2015)............................................................................................... 11
`
`Tinnus Enters., LLC v. Telebrands Corp.,
`846 F.3d 1190 (Fed. Cir. 2017)..................................................................................... 21
`
`United States v. Soures,
`736 F.2d 87 (3rd Cir. 1984) .......................................................................................... 15
`
`Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA,
`944 F.2d 870 (Fed. Cir. 1991)................................................................................. 19, 22
`
`Wonderland Nurserygoods Co., Ltd. v. Thorley Indus., LLC,
`No. 12-cv-196, 2014 U.S. Dist. LEXIS 23255 (W.D. Pa. Feb. 24, 2014) .................... 13
`
`Statutes
`
`35 U.S.C. § 271 ......................................................................................................... 2, 21, 24
`
`iv
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 7 of 31 PageID #: 23766
`
`Rules
`
`Federal Rule of Civil Procedure 14(a)(1) ........................................................................... 22
`
`Federal Rule of Evidence 106 ....................................................................................... 15, 16
`
`Federal Rule of Evidence 402 .......................................... 1, 2, 6-8, 10, 12-13, 17, 19, 21, 23
`
`Federal Rule of Evidence 403 ............................................ 1, 2, 6, 7, 8, 10-17, 19, 21, 23-24
`
`v
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 8 of 31 PageID #: 23767
`
`Evolved Wireless respectfully brings the following motions in limine against each
`
`Defendant in the above-captioned cases.1 Evolved Wireless notes that it has not yet received
`
`Defendants’ exhibit lists, deposition designations, or proposed statements of disputed issues of
`
`fact or law. See D.I. 399. Accordingly, Evolved Wireless reserves the right to seek leave of the
`
`Court to file additional motions in limine should Defendants’ pre-trial materials generate
`
`unforeseen evidentiary issues, or to object as necessary at trial to issues raised therein.
`
`The parties met and conferred on August 20, 2018 and then again on August 28 to narrow
`
`the issues in dispute. As a result of the meet and confer, the parties agreed to stipulate to the
`
`exclusion of certain categories of evidence. The parties will include those stipulations in their
`
`joint pre-trial submissions. Agreement was not reached as to all other issues addressed herein.
`
`I. Evolved Wireless’s Motion in Limine No. 1 to Exclude Evidence and Argument
`Related to Sales of Unaccused Products or Accused Products Outside the United
`States.
`
`Evolved Wireless respectfully moves to exclude evidence and argument related to sales
`
`of (1) unaccused products or (2) accused products sold outside the United States. Such evidence
`
`is irrelevant and will only serve to mislead and confuse the jury, and therefore should be
`
`excluded under Federal Rules of Evidence 402, and 403.
`
`In reaching her ultimate damages opinion, the damages expert for Apple relies on
`
`information regarding worldwide sales of LTE mobile devices. Specifically, she directly relies on
`
`“worldwide” sales figures, provided by third parties such as International Data Corporation
`
`(“IDC”) or GSM Association (“GSMA”), as variables in her damages calculations. Ex. 12
`
`
`1 Citations to the record in this brief refer to docket entries in the Apple case, 15-cv-542. See also
`Evolved Wireless, LLC v. Samsung Elecs. Co, Ltd. et al, 15-cv-545.
`2 Exhibits are attached to the declaration of Ryan M. Schultz, filed concurrently herewith.
`Confidential Defendant-specific exhibits are filed only in each Defendant’s case, as detailed in
`the Schultz Declaration for each case.
`
`
`1
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 9 of 31 PageID #: 23768
`
`(Webster Op. Rep.) at 56-59; Ex. 2 (Webster Dep. Tr.) at 258:16-259:17, 261:10-262:11.3 This
`
`information includes alleged sales by parties that are not defendants in these cases, and products
`
`manufactured and sold outside the United States.
`
`Evolved Wireless is statutorily limited to recovering damages only for infringement that
`
`occurs in the United States. See 35 U.S.C. § 271. Evidence or argument regarding alleged
`
`worldwide sales of LTE devices, which by definition includes sales outside the United States and
`
`sales of unaccused products, are irrelevant and should be excluded under Federal Rule of
`
`Evidence 402.
`
`Even if the Court were to find that such evidence is minimally relevant, the evidence will
`
`confuse the jury, is unfairly prejudicial to Evolved Wireless, and should be excluded under
`
`Federal Rule of Evidence 403. The jury will likely not understand that Evolved Wireless is
`
`unable to recover in this Court for infringement that takes place outside of the United States, has
`
`differing patent coverage in countries outside of the United States, and may never be able to
`
`assert patent claims in every geographic region in which sales of infringing products take place.
`
`Therefore, evidence of sales of non-accused products or of accused products sold outside the
`
`United States risks unfairly prejudicing Evolved Wireless by creating the false impression that
`
`this lawsuit will result in a damages award for all products sold worldwide. As a result, the jury
`
`may award a lower royalty to Evolved Wireless under the belief that the award will be multiplied
`
`by a larger number of products such that the net award will be higher.
`
`
`3 While only Apple’s damages expert expressly relies on evidence of sales of unaccused products
`and/or products made and sold outside the United States, during the meet-and-confer process
`Samsung did not agree that it would not rely on such evidence at trial. As such, Evolved
`Wireless files this motion commonly against both Defendants.
`2
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 10 of 31 PageID #: 23769
`
`Any such evidence or argument should also be excluded because Defendants did not
`
`produce actual financial data showing sales of their own products outside the United States
`
`during discovery. Rather, Apple’s expert relies on third party data from IDC and GSMA. Ex. 1
`
`(Webster Op. Rep.) at 57-58. Defendants should only be permitted to present evidence or
`
`argument related to the domestic infringement at issue in these cases.
`
`Accordingly, Evolved Wireless requests that evidence or argument relating to sales of
`
`non-accused products, or of accused products made and sold outside of the United States, be
`
`excluded.
`
`II. Evolved Wireless’s Motion in Limine No. 2 to Exclude Evidence and Argument
`Related to Alleged Royalty Stacking.
`
`Evolved Wireless respectfully moves to exclude evidence and argument related to any
`
`alleged “royalty stack.” No Defendant has presented specific evidence to support an argument
`
`that they are actually faced with a royalty stack problem. As such, under controlling Federal
`
`Circuit precedent, evidence or argument regarding a royalty stack is irrelevant and should be
`
`excluded. Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201, 1234 (Fed. Cir. 2014). (“The district
`
`court need not instruct the jury on hold-up or stacking unless the accused infringer presents
`
`actual evidence of hold-up or stacking. Certainly something more than a general argument that
`
`these phenomena are possibilities is necessary.”).
`
`Defendants’ damages experts have offered opinions, devoid of factual support, that
`
`“royalty stacking” is a problem facing Defendants, using the argument as a justification for a
`
`lower damages opinion. Ex. 1 (Webster Op. Rep.) at 54; Ex. 3 (Lynde Op. Rep.) ¶¶ 18-25, 49-
`
`51; Ex. 4 (Lynde Reb. Rep.) ¶¶ 4, 42, 49, 83, 94-98. Because these opinions are not based on
`
`specific facts in these cases, any argument or evidence related to an alleged “royalty stack”
`
`should be excluded.
`
`3
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 11 of 31 PageID #: 23770
`
`Before a royalty stacking argument can be put forth at trial, Defendants bear the burden
`
`to come forward with specific evidence of royalty stacking. Ericsson, 773 F.3d at 1234. The fact
`
`that Defendants’ accused products may incorporate thousands of declared standard essential
`
`patents (“SEPs”) does not ipso facto mean royalties must be paid—much less actually are paid—
`
`on each patent. Id. Instead, a defendant must put forth actual, specific evidence of a potential
`
`royalty stack by producing, for example, evidence of “the actual amount of royalties” the
`
`defendant is currently paying for other SEPs, “evidence of other licenses it has taken” on SEPs,
`
`or otherwise show evidence of “royalty demands on its [standards] enabled products.” Id.
`
`Defendants in these cases have not done so.
`
`Though Defendants have each produced some licenses covering SEPs (D.I. 113 at 2), no
`
`Defendant has produced evidence demonstrating the amount per unit they are paying for all
`
`licenses to LTE technology. To the contrary, Defendants represented to this Court that “most, if
`
`not all” of the licenses they produced “are broad patent portfolio licenses where the parties have
`
`licensed hundreds, if not thousands, of patents—often both standard-essential patents and non-
`
`standard-essential patents—across a wide spectrum of technologies.” D.I. 113 at 2. In short,
`
`Defendants themselves professed the breadth of technology covered by their licenses, and have
`
`not offered any evidence apportioning the value of any specific licenses for products utilizing
`
`LTE standard technology. Nor have the Defendants put forth evidence of other LTE licensing
`
`demands they are facing. Put simply, Defendants have produced no specific evidence of a royalty
`
`stack related to their use of technologies practicing the LTE standard.
`
`“[A]bstract recitations of royalty stacking theory, and qualitative testimony that an
`
`invention is valuable—without being anchored to a quantitative market valuation—are
`
`insufficiently reliable.” Commonwealth Sci. & Indus. Research Organisation v. Cisco Sys., 809
`
`4
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 12 of 31 PageID #: 23771
`
`F.3d 1295, 1302 (Fed. Cir. 2015). At best, Defendants’ experts offer only “abstract recitations”
`
`of alleged royalty stacking.
`
`They have simply multiplied the number of SEPs times Evolved Wireless’s offered
`
`royalty rate, and concluded that such calculations would result in Defendant paying more in
`
`royalties on SEP patents than the baseband chip used in its infringing products. See, e.g., Ex. 3
`
`(Lynde Op. Rep.) ¶ 50. And Defendants’ experts merely recite general theories regarding royalty
`
`stacking and/or general propositions found in Judge Robart’s opinion in Microsoft Corp. v.
`
`Motorola, Inc. Ex. 1 (Webster Op. Rep.) at 39-48; Ex. 4 (Lynde Reb. Rep.) at ¶¶ 44-71.
`
`The arguments of Defendants’ experts are not “anchored to a quantitative market
`
`valuation,” Commonwealth Sci. & Indus. Research Organisation, 809 F.3d at 1302, or supported
`
`by any facts in these cases. Therefore, any evidence or argument regarding royalty stacking
`
`should be excluded. See Ericsson, 773 F.3d at 1234; Network-1 Techs. Inc. v. Alcatel-Lucent
`
`USA, Inc., No. 6:11-cv-00492, 2017 U.S. Dist. LEXIS 154435, at *9-11 (E.D. Tex. Sept. 21,
`
`2017) (excluding “opinions that discuss ‘royalty stacking’” where defendant failed to come
`
`forward with evidence of “stacked royalties on the accused technology[,] . . . that it has received
`
`requests for multiple royalties, or that it considers royalty stacking in real-world licensing
`
`negotiations”).
`
`III. Evolved Wireless’s Motion in Limine No. 3 to Exclude Evidence and Argument
`Related to Defendants Being “Locked-In” or to “Patent Hold-Up.”
`
`Evolved Wireless respectfully moves to exclude evidence and argument that Evolved
`
`Wireless is purportedly seeking to extort an unreasonable royalty from Defendants by virtue of
`
`Defendants being “locked in” to complying with the LTE standard—a theory referred to by
`
`Defendants and their experts as “patent hold up.” Defendants have not come forth with any
`
`actual evidence to support being “locked in” or to support a claim of patent “hold up.” As such,
`
`5
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 13 of 31 PageID #: 23772
`
`evidence or argument regarding any alleged “hold up” or of Defendants being “locked in” should
`
`be excluded under Federal Rule of Evidence 402. See Ericsson, 773 F.3d at 1234 (“The district
`
`court need not instruct the jury on hold-up or stacking unless the accused infringer presents
`
`actual evidence of hold-up or stacking. Certainly something more than a general argument that
`
`these phenomena are possibilities is necessary.”).
`
`This evidence and argument should also be excluded under Rule 403. Defendants’ expert
`
`reports provide only discussions of hypothetical scenarios involving patent hold-up and the effect
`
`of being locked in to the LTE standard, and/or recitations of legal holdings from other courts. Ex.
`
`1 (Webster Op. Rep.) at 54; Ex 3 (Lynde Op. Rep.) ¶¶ 17-28; Ex. 4 (Lynde Reb. Rep.) at ¶¶ 67-
`
`68, 100-102. Defendants do not tie these theories to any facts in these cases—because no such
`
`facts exist. More specifically, none of Defendants’ experts actually apply the concepts of being
`
`“locked in” or of “patent hold-up” to Evolved Wireless’s licensing activities.
`
`Because there is no factual support for a claim of being “locked in” or of “patent hold
`
`up,” any testimony or argument regarding these issues may mislead the jury into incorrectly
`
`believing—without a factual basis—that Evolved Wireless is unfairly leveraging its LTE patents
`
`to demand a larger royalty rate.
`
`Accordingly, any evidence or argument regarding alleged “patent hold-up” or Defendants
`
`being “locked in” should be excluded because it is irrelevant and would create the risk of
`
`misleading the jury. Fed. R. Evid. 402, 403; Eidos Display, LLC v. Chi Mei Innolux Corp., No.
`
`6:11-cv-00201, 2017 U.S. Dist. LEXIS 157062, at *4 (E.D. Tex. May 26, 2017) (excluding
`
`reference to Eidos or its business activities as engaging in “stick up” or “hold up”); see also
`
`Ericsson, 773 F.3d at 1234 (“Certainly something more than a general argument that [this]
`
`phenomenon [is a] possibilit[y] is necessary”).
`
`6
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 420 Filed 09/06/18 Page 14 of 31 PageID #: 23773
`
`IV. Evolved Wireless’s Motion in Limine No. 4 to Exclude Evidence and Argument
`Related to a Lump Sum Damages Award That Would Provide Unfettered Rights to
`Practice the Asserted Patents.
`
`Evolved Wireless respectfully moves to exclude evidence and argument related to the
`
`calculation of a lump sum damages award that would provide a freedom to operate for any and
`
`all products for the life of the asserted patents – and would extend to products not specifically
`
`accused of infringement in these cases. Evidence involving lump sum licenses covering all future
`
`sales of LTE compliant, and therefore infringing, products is highly speculative and would
`
`confuse and mislead the jury. As such, it should be excluded under Federal Rule of Evidence
`
`403. Defendants’ experts opine that the preferences of the parties at a hypothetical negotiation
`
`would have been to negotiate a lump sum agreement, where that lump sum agreement would
`
`give Defendants freedom to operate for the life of the patents.4 See Ex. 6 (Webster Reb. Rep.) at
`
`46-47; Ex. 4 (Lynde Reb. Rep.) at ¶¶ 85-86, 97-98, 100-03.
`
`These cases, however, are limited to only specific accused products, and to only domestic
`
`infringement. Consistent with the scope of these cases, Defendants have produced discovery only
`
`on the specific accused products in these cases and only on sales of those products in the United
`
`States. Defendants have not produced discovery on sales of all of their LTE-enabled or LTE-
`
`compliant mobile devices world-wide. Such additional, unproduced evidence would be necessary
`
`to properly calculate a freedom to operate lump sum license. Allowing Defendants to argue for
`
`
`4 While Evolved Wireless’s damages expert Dr. Putnam also calculated a lump sum model as an
`alternative to a running royalty structure, he had to do so based on third party projections. Ex. 5
`(Putnam Op. Rep.) ¶ 30, Exhibit 6. Moreover, this calculation was only provided in anticipation
`of Defendants’ proffered opinions regarding lump sum licenses covering all future sales of
`infringing products. Evolved Wireless maintains a running royalty rate is the correct approach
`based on both the facts of the case and based on the scope of discovery produced during the case.
`Accordingly, Evolved Wireless will not offer Dr. Putnam’s lump sum opinion at trial if the Court
`grants this motion in limine excluding evidence or argument relating to a lump sum license
`covering all future sales of infringing products.
`
`
`7
`
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`such an award could lead to a jury confusion and an award that is unsupported by the facts in
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`these cases.
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`Accordingly, evidence or argument relating to a lump sum license providing a freedom to
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`operate and/or covering world-wide sales of unaccused products should be excluded.
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`V. Evolved Wireless’s Motion in Limine No. 5 to Exclude Evidence and Argument
`Related to a Potential Injunction.
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`Evolved Wireless respectfully moves to exclude evidence and argument related to a
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`potential injunction, including the effect any finding of infringement could have on the issuance
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`of an injunction or an injunction’s impact on any Defendant’s ability to manufacture and market
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`its accused products. Such evidence is irrelevant, will waste time, and is unfairly prejudicial to
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`Evolved Wireless. It should therefore be excluded under Federal Rules of Evidence 402 and 403.
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`Following a finding of patent infringement, “[t]he decision to grant or deny permanent
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`injunctive relief is an act of equitable discretion by the district court.” Acumed LLC v. Stryker
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`Corp., 483 F.3d 800, 811 (Fed. Cir. 2007) (quoting eBay Inc. v. MercExchange, LLC, 547 U.S.
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`388, 391 (2006)). As such, the jury plays no part in deciding whether to issue a permanent
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`injunction.
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`In these cases, Defendants may argue that Evolved Wireless’ prayer for injunctive relief
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`is relevant to their claim for damages for Evolved Wireless’s alleged breach of its FRAND
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`obligations. Specifically, Defendants will likely argue that they are entitled to damages for
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`having to defend against Evolved Wireless’s efforts to seek an injunction in these cases.
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`However, such damages are not recoverable. See Microsoft v. Motorola, 795 F.3d 1024, 1049-50
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`(9th Cir. 2015) (holding that “same-suit fees [are] generally banned by the American Rule” and
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`affirming that only “losses independent of the current litigation” are recoverable) (emphasis
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`added).5 In addition, Evolved Wireless has not sought any preliminary injunctive relief and has
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`asserted a claim for a permanent injunction only to preserve its rights to seek an injunction at the
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`end of the case, if there is good cause to do so. Therefore, Defendants have not had to defend
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`against an injunction.
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`Any evidence or argument from Defendants relating to Evolved Wireless’s right to seek
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`injunctive relief is irrelevant as to the jury, and should be excluded as such. CIENA Corp. v.
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`Corvis Corp., 352 F. Supp. 2d 526, 529 (D. Del. 2005) (“The Court’s Order only required Corvis
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`not to refer to the injunctive remedy in the presence of the jury.”); GuideTech, Inc. v. Brilliant
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`Instruments, Inc., No. 09-cv-5517, D.I. 276 at *2 (N.D. Cal. Mar. 25, 2014) (“The request for an
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`injunction will not be alluded to before the jury.”).
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`In addition to being irrelevant, evidence related to a permanent injunction would be
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`unfairly prejudicial to Evolved Wireless. Hearing irrelevant evidence of a potential injunction
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`may improperly influence the jury to find that Defendant does not infringe the patents-in-suit out
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`of concern that the jury’s finding may affect the market availability of Defendant’s accused
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`products. See Sanofi-Aventis Deutschland GmbH v. Glenmark Pharm., Inc., USA, No. 07-cv-
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`5855, 2011 U.S. Dist. LEXIS 10512, at *8-10 (D.N.J. Feb. 3, 2011) (granting plaintiff’s motion
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`in limine excluding evidence of potential injunctive relief under Federal Rules of Evidence 402
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`and 403 because “the jurors could be prejudiced if they are aware their decision at trial could
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`prevent the sales of generic drugs”). Moreover, evidence regarding a request for injunctive relief
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`5 To the extent Defendants were to also attempt to rely on legal costs incurred in defending
`against Evolved Wireless’s allegations in the complaint, such evidence is not admissible for
`purposes of proving Breach of FRAND damages and should likewise be excluded. See
`Microsoft, 795 F.3d at 1049-50.
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`9
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`would be confusing to the jury without a context for assessing the likelihood that such injunctive
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`relief would ultimately be granted—an equitable remedy in the province of the Judge.
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`For these reasons, evidence or argument related to a potential injunction should be
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`excluded.
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`VI. Evolved Wireless’s Motion in Limine No. 6 to Exclude Evidence and Argument
`Related to Patent Trial and Appeal Board Final Written Decisions.
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`Evolved Wireless respectfully moves to exclude evidence and argument related to the
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`Patent Trail and Appeal Board’s (“PTAB”) final written decisions (“FWD”) from the inter
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`partes review (“IPR”) proceedings of the patents-in-suit. See IPR2016-00757, Paper 42 (Nov.
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`30, 2017), Paper 47 (Mar. 26, 2018); IPR2016-00758, Paper 48 (Mar. 12, 2018); IPR2016-
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`00981, Paper 19 (Mar. 12, 2018); IPR2016-01177, Paper 27 (Dec. 20, 2017); IPR2016-01208,
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`Paper 30 (Dec. 14, 2017); IPR2016-01209, Paper 28 (Dec. 14, 2017); IPR2016-01228, Paper 27
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`(Nov. 30, 2017), Paper 32 (Mar. 26, 2018); IPR2016-01229, Paper 27 (Nov. 30, 2017), Paper 32
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`(Mar. 26, 2018); IPR2016-01277, Paper 13 (Dec. 14, 2017); IPR2016-01280, Paper 12 (Dec. 14,
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`2017); IPR2016-01310, Paper 11 (Dec. 20, 2017); IPR2016-01342, Paper 19 (Mar. 12, 2018);
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`IPR2016-01345, Paper 14 (Nov. 30, 2017); IPR2016-01349, Paper 19 (Mar. 12, 2018); IPR2017-
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`00068, Paper 15 (Mar. 12, 2018); IPR2017-00106, Paper 18 (Mar. 12, 2018); IPR2017-00927,
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`Paper 10 (Mar. 12, 2018). Evidence or argument regarding the PTAB’s FWDs would be unfairly
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`prejudicial and will confuse the jury under Federal Rule of Evidence 403.
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`In these cases, Evolved Wireless originally asserted five patents: the ’916, ’481, ’965,
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`’236, and ’373 patents. D.I. 1 ¶¶ 67-121. A total of 19 IPR petitions were filed challenging the
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`asserted claims of all five patents. See D.I. 86, Exs. 1-6. The PTAB issued final non-appealable
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`orders denying institution on the ’373 patent. The PTAB did, however, grant institution of
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`certain petitions on the remaining patents, and FWDs in those instituted proceedings. Decisions
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`10
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`concerning patents no longer at issue shoul