Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 1 of 17 PageID #: 25424
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`)
`
`
`EVOLVED WIRELESS, LLC,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`Plaintiff,
`)
`
`
`
`
`
`
`
`) Civil Action No. 15-542-JFB-SRF
`
`
`
`V.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`APPLE INC.,
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Defendant.
`______________________________________
`
`)
`
`
`EVOLVED WIRELESS, LLC,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`Plaintiff,
`)
`
`
`
`
`
`
`
`) Civil Action No. 15-543-JFB-SRF
`
`
`
`V.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`HTC CORPORATION and
`)
`
`
`HTC AMERJCA, INC.,
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Defendants.
`______________________________________
`
`)
`
`
`EVOLVED WIRELESS, LLC,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`Plaintiff,
`)
`
`
`
`
`
`
`
`) Civil Action No. 15-544-JFB-SRF
`
`
`
`V.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`LENOVO GROUP LTD., LENOVO
`)
`
`(UNITED STATES) INC., and
`
`)
`
`MOTOROLA MOBILITY,
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Defendants.
`______________________________________
`
`
`EVOLVED WIRELESS, LLC,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`V.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`) Civil Action No. 15-545-JFB-SRF
`
`
`
`1
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 2 of 17 PageID #: 25425
`
`)
`
`
`
`
`
`
`
`)
`SAMSUNG ELECTRONICS CO., LTD.
`)
`and SAMSUNG ELECTRONICS
`
`)
`AMERICA, INC.
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`Defendants.
`
`_____________________________________ )
`
`)
`
`
`EVOLVED WIRELESS, LLC,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`Plaintiff,
`)
`
`
`
`
`
`
`
`) Civil Action No. 15-546-JFB-SRF
`
`
`
`V.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`ZTE (USA) INC.,
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Defendant.
`_____________________________________ )
`
`
`EVOLVED WIRELESS, LLC,
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`V.
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY and
`
`NOKIA INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`Defendants.
`
`
`)
`)
`)
`)
`) Civil Action No. 15-547-JFB-SRF
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`This matter is before the Court on the following motions in limine: defendant Apple
`
`MEMORANDUM AND ORDER
`
`Inc.’s (“Apple”) motion in Limine No. 1 to exclude irrelevant and prejudicial unrelated
`
`matters involving Apple (D.I. 409 in 1:15cv542); defendants Apple Inc.’s, Samsung
`
`Electronics America Inc.’s, and Samsung Electronics Co. Ltd.’s (“Samsung”) joint motion
`
`
`
`2
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 3 of 17 PageID #: 25426
`
`in limine (D.I. 411 in Evolved Wireless, LLC (“Evolved”) v. Apple, 1:15cv542 and D.I. 403
`
`in Evolved v. Samsung, 1:15cv545); and plaintiff Evolved’s motion in limine (D.I. 415).1
`
`I.
`
`
`
`LAW
`
`Although the motion in limine is an important tool available to the trial judge to
`
`ensure the expeditious and evenhanded management of the trial proceedings, performing
`
`a gatekeeping function and sharpening the focus for later trial proceedings, some
`
`evidentiary submissions, cannot be evaluated accurately or sufficiently by the trial judge
`
`in such a procedural environment. Jonasson v. Lutheran Child and Family Servs., 115
`
`F.3d 436, 440 (7th Cir. 1997). A motion in limine is appropriate for “evidentiary
`
`submissions that clearly ought not be presented to the jury because they clearly would
`
`be inadmissible for any purpose.” Id. In other instances, it is necessary to defer ruling
`
`until during trial, when the trial judge can better estimate the impact of the evidence. Id.
`
`
`
`“Evidentiary rulings made by a trial court during motions in limine are preliminary
`
`and may change depending on what actually happens at trial.” Walzer v. St. Joseph State
`
`Hosp., 231 F.3d 1108, 1113 (8th Cir. 2000); see also Leonard v. Stemtech Health Scis.,
`
`Inc., 981 F. Supp. 2d 273, 276 (D. Del. 2013) (noting that evidentiary rulings, especially
`
`those that encompass broad classes of evidence, should generally be deferred until trial
`
`to allow for the resolution of questions of foundation, relevancy, and potential prejudice in
`
`proper context).
`
`II.
`
`DISCUSSION
`
`A.
`
`Apple’s Motion in Limine To Exclude Irrelevant and Prejudicial Unrelated
`Matters Involving Apple (D.I. 409)
`
`__________________________
`1 All docket items (“D.I.”) refer to Civil Action No. 15-542-JFB-SRF unless otherwise stated.
`
`
`
`3
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 4 of 17 PageID #: 25427
`
`
`
`Apple seeks exclusion of evidence of alleged past misconduct and the alleged poor
`
`character of Apple or Steve Jobs as irrelevant and unfairly prejudicial. Defendants state
`
`that Apple’s motion is specific to an exhibit produced in this litigation—an excerpt of a
`
`PBS documentary titled “Triumph of the Nerds” featuring Apple’s co-founder Steve Jobs.
`
`In the documentary, Mr. Jobs states that “[Apple] ha[s] always been shameless about
`
`stealing great ideas.” Apple also seeks exclusion of prior unrelated litigations,
`
`investigations or accusations involving Apple or Mr. Jobs, arguing the evidence is
`
`irrelevant, unfairly prejudicial and may confuse the jury. The court grants the defendant’s
`
`motion in limine to the PBS documentary excerpt.
`
`
`
`Regarding other unspecified evidence characterized as “Apple-bashing,”
`
`evidentiary rulings “that encompass broad classes of evidence should generally be
`
`deferred until trial to allow for the resolution of questions of foundation, relevancy, and
`
`potential prejudice in proper context.” Hologic, No. 15-1031-JFB-SRF, D.I. 452 at 1.
`
`Apple’s failure to specify the evidence or testimony to be excluded means deny without
`
`prejudice to reassertion.
`
`In regards of reputation for litigiousness – it will be necessary to introduce
`
`evidence of Apple’s prior litigation to explain the risk-adjusted purchase price, as
`
`contemplated by Dr. Putnam. That risk included the possibility that Evolved Wireless
`
`would be unable to license the asserted patents to Apple absent a finding of infringement
`
`and validity following lengthy and costly litigation.
`
`
`
`
`
`
`
`
`
`4
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 5 of 17 PageID #: 25428
`
`III.
`
`DEFENDANTS' JOINT MOTION IN LIMINE (D.I. 411)
`
`A.
`
`Motion In Limine No. 1: To Preclude Evolved From Offering
`Evidence Regarding How Evolved Arrived At Its $0.25 Per-Device
`Figure
`
`
`
`
`Defendants seek an order precluding Evolved from offering evidence as to the
`
`derivation of its $0.25 royalty rate in pre-suit licensing negotiations. This topic was the
`
`subject of a motion to compel and two Federal Rule of Civil Procedure 30(b)(6)
`
`depositions. Defendants contend Evolved’s two designated witnesses provided no or
`
`limited meaningful information about Evolved’s derivation of the $0.25 figure. Evolved
`
`asserted privilege as to much of the information about a previously-undisclosed,
`
`purported “starting-point rate.” The record shows the defendants moved to compel
`
`answers after the first 30(b)(6) deposition and the magistrate judge granted the motion.
`
`Evolved designated a different 30(b)(6) witness in response to the magistrate judge’s
`
`order. The defendants contend that the second witness gave a few limited answers
`
`beyond what the first witness had provided, but still failed to provide adequate testimony
`
`on the issue of the $0.25 figure. Defendants argue that Evolved again asserted privilege
`
`and work product instructions to selectively shield from discovery most aspects of
`
`Evolved’s formulation of the amount. Defendants also deposed Matt DelGiorno, counsel
`
`for Evolved who had engaged in the pre-suit negotiations with the defendants, but he too
`
`refused to answer numerous questions regarding the $0.25 figure. There is no indication
`
`that the defendants moved to compel after the second 30(b)(6) deposition DelGiorno
`
`deposition.
`
`
`
`5
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 6 of 17 PageID #: 25429
`
`
`
`In response, Evolved states it will not offer or rely on privileged communications.
`
`Also, it argues the defendants’ motion should be denied for failing to specifically identify
`
`the evidence they seek to exclude.
`
`
`
`The Court finds Evolved’s statement, that it will not elicit testimony or present
`
`evidence on the challenged topic essentially renders the defendants’ motion, moot.
`
`Evolved Wireless should be permitted to testify as to non-privileged information consistent
`
`with the deposition testimony and evidence already given in this case. The defendant’s
`
`argument for a more expansive order of preclusion is unavailing because the defendants
`
`failed to move to compel at the time or to challenge the assertions of privilege. Without
`
`knowing specifically what the evidence is and what it is proffered for, the Court cannot
`
`make a determination as to the precise parameters of the admission of this evidence, if
`
`any. Accordingly, the motion will be denied at this time, without prejudice to reassertion
`
`at trial.
`
`B.
`
`Motion In Limine No. 2: Preclude Dr. Cooklev and Evolved From
`Arguments, Evidence, and Testimony Regarding Infringement Under
`the Doctrine of Equivalents
`
`
`The defendants assert that Evolved did not articulate a theory of infringement
`
`
`
`under the Doctrine of Equivalents (“DOE”) during fifteen months of fact discovery and two
`
`rounds of infringement contentions other than to state that the defendants infringe “either
`
`by literal infringement or infringement under the doctrine of equivalents” in their final
`
`infringement contentions. It asserts that Evolved for the first time asserted a DOE theory
`
`for the “dedicated preamble” limitation of U.S. Patent No. 7,809,373 (“the ‘373 Patent”) in
`
`the Infringement Report of Dr. Todor Cooklev (“Cooklev Report”) on May 22, 2017—more
`
`
`
`6
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 7 of 17 PageID #: 25430
`
`than a month after the close of fact discovery and nearly three months after Defendants
`
`had served their Final Invalidity Contentions.
`
`
`
`In response, Evolved contends that consistent with its Final Infringement
`
`Contentions, Evolved Wireless included an express, substantial analysis of DOE
`
`infringement in Dr. Cooklev’s opening expert report, and the defendants’ experts rebutted
`
`Dr. Cooklev’s analysis in their responsive reports. Also, the defendants also deposed Dr.
`
`Cooklev on this issue.
`
`
`
`This issue is addressed in the Court’s order on the defendants’ motion for a
`
`summary judgment of noninfringement. The Court finds Evolved sufficiently put the
`
`defendants on notice of its theories of infringement under the doctrine of equivalents. The
`
`defendants have not demonstrated prejudice as a result of any untimely disclosure. The
`
`Court finds the defendants’ motion to preclude argument and evidence on the theory
`
`should be denied.
`
`C.
`
`Motion In Limine No. 3: To Exclude Any Testimony Regarding
`Evidence of, or Reference to, the PTAB’S Decision Not to Institute
`IPR Proceedings against the ’373 Patent
`
`
`
`Defendants expect Evolved to reference the Patent Trial and Appeal Board’s
`
`(“PTAB”) decision not to institute inter partes review (“IPR”) proceedings against the
`
`’373 patent as evidence of validity of the ’373 patent. The Court should exclude any
`
`reference to the PTAB decisions regarding the ’373 patent because it is not relevant.
`
`
`
`Evolved contends the fact the PTAB declined to institute IPR proceedings—a
`
`finding that the defendants failed to demonstrate a reasonable likelihood of invalidity
`
`under the lower standard applied by the PTAB is highly probative of validity and should
`
`be heard by the jury. It also argues the evidence is relevant to willfulness.
`
`
`
`7
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 8 of 17 PageID #: 25431
`
`
`
`Because willfulness is no longer at issue Evolved’s argument that the IPR denial
`
`is relevant to intent and state of mind is unavailing. Generally, the Court is inclined to find
`
`that because the patent office’s proceeding and decision are not binding and are on
`
`appeal, the prejudicial and confusing effect of the evidence almost certainly outweighs
`
`any probative value, at least with respect to the merits. The denial to institute proceedings
`
`has no estoppel effect and the minimal probative value it may have to the validity issue is
`
`substantially outweighed by the potential for prejudice and confusion to the jury.
`
`Accordingly, the Court finds the defendants’ motion in limine should be granted.
`
`D.
`
`Motion In Limine No. 4: Exclude Any Testimony Or Declarations
`From Any LG Electronics Witness
`
`The defendants move to preclude certain evidence that relates to the 1993
`
`licensing agreement as amended between LGE and Qualcomm that is the subject to the
`
`Court’s memorandum and order on affirmative defenses. The defendants argue it should
`
`be precluded in light of Evolved’s alleged failure to produce the agreements and Evolved
`
`argues that if the Court allows the defendants to present parol evidence regarding the
`
`agreements, the Court should allow LGE’s testimony to rebut Defendants’ flawed theory
`
`that they are entitled to a covenant not to sue on the ’373 patent.
`
`
`
`The Court finds the motion is premature at this time as it relates to issues that will
`
`be determined by the Court at a bench trial following the trial to the jury of infringement
`
`and invalidity issues.
`
`E.
`
`Motion In Limine No. 5: To Exclude Irrelevant Evidence of Financial
`Resources and Size, as Well as Unfairly Prejudicial Dollar Amounts
`of Sales of Accused Products
`
`
`
`Defendants seek to exclude information that relates to the defendants’ net worth,
`
`revenues, and market capitalization. They contend such evidence is largely irrelevant
`
`
`
`8
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 9 of 17 PageID #: 25432
`
`and its probative value is outweighed by the danger of prejudice to the defendants.
`
`
`
`Evolved contends that the defendants’ financial information, such as relative size,
`
`net worth, volume of sales, and market capitalization, are factors that would have been
`
`relevant to the parties at any hypothetical negotiation. Moreover, such information is
`
`relevant to calculating a lump sum royalty, which the defendants contend is an
`
`appropriate damages award. Evolved states it will not seek to introduce evidence of the
`
`defendants’ total profits or revenue, unless the defendants open the door by arguing for
`
`a lump sum damages award.
`
`
`
`The Court is inclined to agree with the defendants that the probative value of the
`
`evidence is outweighed by the danger that the jury might set damages on ability to pay
`
`rather than proper evidence of damages. The dismissal of the willfulness claim lessens
`
`the probative value of the evidence. That said, the evidence may be relevant to issues
`
`relating to the hypothetical negotiation, depending on the expert testimony. However,
`
`without a full record before it, the Court is unable to evaluate the merit of the defendants’
`
`motion in the context. The motion will nevertheless be granted at this time, but the court
`
`may reconsider the motion on an appropriate showing of foundation and relevance, as
`
`balanced against prejudice.
`
`F.
`
`Motion In Limine No. 6: Preclude Evolved from Relying on
`Documents Produced and Fact Testimony Disclosed More Than a
`Year after the Close of Fact Discovery
`
`
`
`Defendants move to preclude Evolved from relying on any documents that Evolved
`
`produced more than a year after discovery closed. A certification document signed by J.
`
`Brad Berkshire is related to this motion and is the subject of an issue identified as an
`
`additional matter in the parties proposed pretrial order. D.I. 448, Proposed Pretrial Order
`
`at 36. Apple contends Berkshire was not identified in Evolved’s fact witness disclosure
`
`
`
`9
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 10 of 17 PageID #: 25433
`
`served on September 25, 2017 but was included in the trial witness list attached to the
`
`Proposed Pretrial Order. Id. at Ex. 8.
`
`
`
`In response, Evolved states that Mr. Berkshire’s testimony would be limited to
`
`authenticating some of the documents that are the subject of Apple’s Motion in Limine
`
`No. 6. If Apple is willing to stipulate to the authenticity of such documents, without waiving
`
`its other objections, then Evolved Wireless would withdraw Mr. Berkshire as a witness.
`
`
`
`Evolved argues the defendants’ position fails to acknowledge Evolved’s continuing
`
`duty to supplement discovery under the Federal Rules and misapplies the Third Circuit’s
`
`“Pennypack factors” to determine prejudice. It argues that the defendants have taken no
`
`efforts to cure any prejudice occasioned by the allegedly tardy disclosure in the time since
`
`the supplemental disclosure.
`
`
`
`It appears to the Court that this motion may be mooted by proceedings presently
`
`pending before the Magistrate Judge on various discovery issues. The Court cannot
`
`define the relevance of the challenged evidence to the remaining issues in the litigation
`
`in the context of a pretrial motion. Further, the Court is unable to assess the relative
`
`levels of gamesmanship that may have occurred with respect to this disputed evidence.
`
`Accordingly, the motion will be denied at this time without prejudice to reassertion at trial.
`
`The evidence will not be admitted absent a showing of proper foundation and relevance.
`
`IV.
`
`PLAINTIFF EVOLVED WIRELESS, LLC’S (“EVOLVED”) MOTION IN LIMINE
`(D.I. 415)
`
`
`
`
`
`A.
`
`Motion in Limine No. 1: To Exclude Evidence and Argument
`Related to Sales of Unaccused Products or Accused Products
`Outside the United States
`
`10
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 11 of 17 PageID #: 25434
`
`
`
`Evolved moves to preclude the defendants’ experts from relying on third-party
`
`forecasted worldwide sales data for products compatible with LTE networks, arguing that
`
`certain of their opinions should thereby be precluded.
`
`
`
`In response, the defendants argue that Evolved’s motion is based on an erroneous
`
`assumption. They state their experts’ opinions on damages for alleged infringement of
`
`the patents-in-suit are properly based only on actual domestic sales of accused products.
`
`The defendants agree with Evolved that it is statutorily limited to recovering damages only
`
`for infringement that occurs in the United States and that concerns the accused products.
`
`It also states, however, that the evidence Evolved seeks to preclude relates solely to the
`
`defendants’ experts’ opinions concerning the affirmative defenses and counterclaims of
`
`breached of the FRAND commitment.
`
`
`
`The defendants’ concession as to opinions on infringement damages makes the
`
`motion effectively moot. To the extent the parties’ dispute these issues with respect to
`
`breach of FRAND agreement damages, the Court finds the motion is premature at this
`
`time. The breach of FRAND obligation issue will be tried to the Court at, or after, the
`
`conclusion of the jury trial and the court will address the motion at that time.
`
`B.
`
`Motion in Limine No. 2: To Exclude Evidence and Argument Related
`to Alleged Royalty Stacking
`
`
`
`
`Evolved moves to exclude evidence and argument related to any alleged “royalty
`
`stack,” contending that the defendants have not presented specific evidence to support
`
`an argument that they are actually faced with a royalty stack problem. It argues that under
`
`controlling Federal Circuit precedent, evidence or argument regarding a royalty stack is
`
`irrelevant and should be excluded. See 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
`
`
`
`11
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 12 of 17 PageID #: 25435
`
`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”).
`
`
`
`In response, the defendants argue that the plaintiff’s motion is a Daubert motion
`
`masquerading as a motion in limine. The defendants argue their experts discuss royalty
`
`stacking only as context for the hypothetical negotiation, not as the basis for any particular
`
`royalty.
`
`
`
`The Court finds the Evolved’s motion is largely mooted by the Court’s ruling on the
`
`parties’ Daubert motions. To the extent the motion has any merit, Evolved’s concerns
`
`can be a matter for cross-examination, appropriate objection at trial and limiting or
`
`cautionary instructions. The Court will instruct the jury on stacking only if there is actual
`
`evidence that supports such an instruction. Accordingly, the motion will be denied at this
`
`time without prejudice to reassertion.
`
`C.
`
`To Exclude Evidence and Argument
`Motion in Limine No. 3:
`Related to Defendants Being “Locked-In” or to “Patent Hold-Up”
`
`
`
`Evolved moves to exclude evidence and argument that it purportedly seeks to
`
`extort an unreasonable royalty from the defendants by virtue of their being “locked in” to
`
`complying with the LTE standard—a theory referred to by the defendants and their
`
`experts as “patent hold up.” Evolved contends that the defendants have not presented
`
`any evidence to support being “locked in” or to support an allegation of patent “hold up.”
`
`
`
`The defendants again charge that the plaintiff asserts an improper Daubert motion
`
`in the guise of a motion in limine. They contend that courts have recognized that these
`
`concepts are important to consider in cases involving SEP patents because the trier-of-
`
`fact must separate the value of the asserted patent from the value of the technology
`
`
`
`12
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 13 of 17 PageID #: 25436
`
`standard when calculating an appropriate FRAND rate. See, e.g., In re Innovatio IP
`
`Ventures, LLC Patent Litig., C.A. No. 11 C 9308, 2013 WL 5593609, at *9 (N.D. Ill. Oct.
`
`3, 2013) (“The court’s RAND rate therefore must, to the extent possible, reflect only the
`
`value of the underlying technology and not the hold-up value of standardization”);
`
`Microsoft Corp. v. Motorola, Inc., C.A. No. C10-1823JLR, 2013 WL 2111217, at *12 (W.D.
`
`Wash. Apr. 25, 2013) (“In the context of a dispute concerning whether or not a given
`
`royalty is RAND, a proper methodology used to determine a RAND royalty should
`
`therefore recognize and seek to mitigate the risk of patent hold-up that RAND
`
`commitments are intended to avoid”).
`
`
`
`The Court addressed this issue in connection with ruling on the parties’ Daubert
`
`motions. The Court found generally that the challenges to the testimony went to the
`
`weight and not the admissibility. Accordingly, the Court finds the motion should be denied
`
`as moot. Evolved has not shown that categorical exclusion of such evidence or argument
`
`is appropriate. Accordingly, the motion will be denied.
`
`D.
`
`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 contends 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 and moves to exclude it under Federal Rule of Evidence
`
`403. It asserts that the 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.
`
`
`
`The defendants again assert that Evolved is unabashedly raising a Daubert
`
`motion. The Court agrees and finds the issues were resolved in the ruling on the parties’
`
`
`
`13
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 14 of 17 PageID #: 25437
`
`Daubert motions. Further, the defendants again assert that the plaintiff’s objections to
`
`consideration of product sales outside
`
`the United States are based on a
`
`misunderstanding of the defendants’ experts’ positions. The Court finds Evolved’s motion
`
`should be denied.
`
`E.
`
`Motion in Limine No. 5: To Exclude Evidence and Argument Related
`to a Potential Injunction
`
`
`
`The fact that Evolved has sought injunctive relief against Defendants is central to
`
`Defendants’ counterclaims and affirmative defenses
`
`that Evolved breached
`
`its
`
`contractual FRAND obligation. That evidence is relevant to issues that will be tried to the
`
`court. Accordingly, the motion will be granted at this time.
`
`F.
`
`Motion in Limine No. 6: To Exclude Evidence and Argument Related
`to Patent Trial and Appeal Board Final Written Decisions
`
`
`
`This issue is relevant only to issues that will be argued to the Court. The matter is
`
`addressed in the Court’s earlier order. Injunctive relief is an equitable remedy and is
`
`irrelevant to issues before the jury. The nature and extent of its relevance to breach of
`
`FRAND issues can be addressed at a later time, in conjunction with the bench trial.
`
`Accordingly, the Court finds Evolved’s motion should be granted with respect to
`
`proceedings before the jury and denied without prejudice to reassertion in the bench trial.
`
`G. Motion in Limine No. 7: To Exclude Redacted Versions of any
`LGE/Qualcomm Agreements
`
`
`
`
`This matter is relevant only to issues that will be tried to the Court. The Court finds
`
`the motion should be granted with respect to the jury trial and denied as premature as to
`
`the bench trial.
`
`
`
`
`
`
`
`14
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 15 of 17 PageID #: 25438
`
`H.
`
`Motion in Limine No. 8: To Exclude Evidence and Argument Related
`to U.S. Patent No. 8,219,097
`
`
`
`This relates to the issue of the “dedicated preamble” language. The Court has
`
`declined to amend or to perform additional claim construction. The Court is inclined to
`
`believe that the ‘097 patent is a red herring and should be excluded as irrelevant. The
`
`Court also agrees that any relevance is outweighed by potential confusion. Nevertheless,
`
`it is difficult to rule on the motion in a pretrial motion. The Court addressed the issue in
`
`other orders and finds the motion in limine should be denied at this time without prejudice
`
`to reassertion regarding evidence that is in conformity with the court’s claim construction.
`
`I.
`
`Motion in Limine No. 9: To Exclude any Non-Produced Evidence
`and Argument Regarding Licenses or License Negotiations
`
`
`
`This motion also relates to issues that will be tried to the Court. It will be granted
`
`with respect to the jury trial and denied as premature in connection with the bench trial.
`
`The motion is also related to the submission of additional evidence regarding the licensing
`
`agreements that can be taken up at a later date.
`
`J.
`
`Motion in Limine No. 10: To Exclude Evidence and Argument
`Related to Defendants’ Own Specific Patents Related to LTE
`Technology
`
`
`
`Evolved contends that evidence of the defendant’s own specific LTE patents is
`
`irrelevant to any issues the jury is to decide in these cases. Also, it asserts that even if
`
`there is any probative value, the risk of misleading the jury and unfairly prejudicing
`
`Evolved Wireless substantially outweighs the probative value of Defendants’ patents—
`
`none of which are asserted as prior art in these cases.
`
`
`
`Defendants contend they are not asserting that their ownership of LTE patents is
`
`relevant to infringement or validity, but they argue that their ownership of LTE patents that
`
`relate to Evolved patents is directly relevant to damages to rebut any suggestion that the
`
`
`
`15
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 16 of 17 PageID #: 25439
`
`patents-in-suit cover a large portion of the LTE patent space, such as handovers, leading
`
`the jury to overvalue the patents, or to rebut any suggestion that Evolved’s patents cover
`
`all or most of the LTE handover field.
`
`
`
`The existence of one’s own patent is not a defense to infringement. It is irrelevant
`
`to the issue of infringement. Whether it may be relevant to rebut certain damages
`
`evidence depends on the evidence adduced at trial. The Court cannot make that
`
`determination at this time. The evidence would almost certainly warrant a limiting
`
`instruction, but the Court cannot determine the ambit of any such instruction at this time.
`
`Accordingly, the Court finds the motion should be denied at this time, without prejudice to
`
`reassertion.
`
`K.
`
`Motion in Limine No. 11: To Exclude Evidence and Argument that
`Qualcomm Is or Should Be the Correct Defendant
`
`
`
`In its motion, Evolved asks the Court to exclude evidence and argument that
`
`Qualcomm is the proper defendant in these cases, that Evolved Wireless should have
`
`accused Qualcomm of infringing the patents-in-suit, or that Qualcomm’s patents insulate
`
`Defendants from liability. The evidence and argument that Evolved seeks to preclude
`
`goes to issues of affirmative defenses that are to be tried to the Court. This evidence is
`
`not relevant to this issues for the jury. The court will grant the motion as it relates to the
`
`jury trial.
`
`L.
`
`Motion in Limine No. 12: To Exclude Evidence and Argument
`Referring to Evolved Wireless with Pejorative, Derogative, or
`Negative Terms.
`
`
`
`The defendants do not oppose this motion as it pertains to truly pejorative terms
`
`like “troll,” “patent troll,” or “playing the litigation lottery.” They contend, however, that they
`
`should not be precluded from using neutral terms like “non-practicing entity.” The Court
`
`
`
`16
`
`

`

`Case 1:15-cv-00545-JFB-SRF Document 468 Filed 03/07/19 Page 17 of 17 PageID #: 25440
`
`agrees with defendant’s concession. The motion is granted as it relates to pejorative
`
`terms but not for neutral terms.
`
`M. Motion in Limine 13: To Exclude Evidence and Argument Related to
`Damages Allegedly Suffered as a Result of Evolved Wireless’s
`Alleged Breach of “FRAND” Obligations.
`
`
`
`This motion relates to matters that are to be tried to the Court. It will be granted
`
`as to the jury trial and denied as premature in connection with the bench trial.
`
`IT IS ORDERED:
`
`
`
`1.
`
`Defendant Apple Inc.’s (“Apple”) motion in Limine No. 1 to Exclude
`
`Irrelevant and Prejudicial Unrelated Matters Involving Apple (D.I. 409) is granted in part
`
`and denied in part as set forth in this memorandum and order.
`
`
`
`
`
`2.
`
`Apple’s Joint motion in limine (D.I. 411) is granted in part and denied in part
`
`as set forth in this memorandum and order.
`
`3.
`
`Plaintiff Evolved Wireless, LLC’s (“Evolved”) motion in limine (D.I. 415) is
`
`granted in part and denied in part as set forth in this memorandum and order.
`
`
`
`DATED this 7th day of March, 2019.
`
`BY THE COURT:
`
`s/ Joseph F. Bataillon
`Senior United States District Judge
`
`
`
`17
`
`
`
`
`
`
`
`
`
`