Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 1 of 29 PageID #: 10015
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`VB ASSETS, LLC,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC., AMAZON.COM LLC,
`AMAZON WEB SERVICES, INC., A2Z
`DEVELOPMENT CENTER, INC. d/b/a LAB126,
`RAWLES LLC, AMZN MOBILE LLC, AMZN
`MOBILE 2 LLC, AMAZON.COM SERVICES, INC.
`f/k/a AMAZON FULFILLMENT SERVICES, INC.,
`and AMAZON DIGITAL SERVICES LLC,
`
`Defendants.
`
`C.A. No. 1:19-cv-01410-MN
`
`[PUBLIC VERSION]
`
`PROPOSED JOINT PRETRIAL ORDER
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Jason Z. Miller (No. 6310)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`
`Attorneys for Plaintiff
`VB Assets, LLC
`
`ASHBY & GEDDES, P.A.
`Steven J. Balick (#2114)
`Andrew C. Mayo (#5207)
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`sbalick@ashbygeddes.com
`amayo@ashbygeddes.com
`Telephone: (302) 654-1888
`
`Attorneys for Defendants Amazon.com, Inc.,
`Amazon.com LLC, Amazon Web Services,
`Inc., A2Z Development Center, Inc. d/b/a
`Lab126, Rawles LLC, AMZN Mobile LLC,
`AMZN Mobile 2 LLC, Amazon.com Services,
`Inc. f/k/a Amazon Fulfillment Services, Inc.,
`and Amazon Digital Services LLC
`
`Dated: September 28, 2023
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`[PUBLIC VERSION]
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`

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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 2 of 29 PageID #: 10016
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`
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`TABLE OF CONTENTS
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`Page
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`I.
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`Nature & stage of the proceedings ...........................................................................1
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`A.
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`B.
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`C.
`
`D.
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`E.
`
`F.
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`Nature of the Action.....................................................................................1
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`Pleadings ......................................................................................................3
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`Claim Construction ......................................................................................4
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`Discovery .....................................................................................................4
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`Summary Judgment and Daubert Motions ..................................................5
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`Pending Motions ..........................................................................................5
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`G.
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`Trial ..............................................................................................................5
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`II.
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`Federal Jurisdiction ..................................................................................................5
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`III. Uncontested Facts ....................................................................................................6
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`IV.
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`Issues of Fact that Remain to be Litigated ...............................................................6
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`V.
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`Issues of Law that Remain to be Litigated ...............................................................6
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`VI.
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`Exhibits ....................................................................................................................6
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`VII. Witnesses..................................................................................................................8
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`VIII. Deposition designations ...........................................................................................8
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`IX.
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`The Parties’ Statements of Intended Proofs .............................................................9
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`A.
`
`B.
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`VB Assets’s Statement of Intended Proof ...................................................9
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`AMAZON'S STATEMENT OF INTENDED PROOF .............................10
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`X.
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`AMENDMENTS OF THE PLEADINGS .............................................................10
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`XI.
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`CERTIFICATION OF GOOD-FAITH SETTLEMENT EFFORTS .....................11
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`XII. MOTIONS IN LIMINE .........................................................................................11
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`XIII. Other Matters .........................................................................................................11
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`A.
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`Trial Presentations .....................................................................................11
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`
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`
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`B.
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`C.
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`D.
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`E.
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`F.
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`Length of Trial ...........................................................................................11
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`Jurors ..........................................................................................................12
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`Motions for Judgment as a Matter of Law .................................................12
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`Agreed Motions in Limine .........................................................................13
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`Verdict Forms ............................................................................................14
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`G.
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`Miscellaneous Stipulations ........................................................................14
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`XIV. Stipulations and Trial Disclosures .........................................................................15
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`A.
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`B.
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`Identification of Live Witnesses ................................................................15
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`Identification of Exhibits and Demonstratives ..........................................16
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`XV.
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`Identification of Deposition Testimony and Exhibits ............................................20
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`XVI. Objections to Expert Testimony .............................................................................23
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`XVII. Disclosures for Opening Statements ......................................................................23
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`XVIII. Sealing Courtroom and Transcripts .......................................................................23
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 4 of 29 PageID #: 10018
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`
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`This Final Pretrial Order contains all the materials required pursuant to this Court’s
`
`Standing Order and Local Rule 16.3(c). Where the parties have competing proposals or statements,
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`such language is preceded by bolded text.
`
`I.
`
`NATURE & STAGE OF THE PROCEEDINGS
`
`A.
`
`1.
`
`Nature of the Action
`
`The parties are Plaintiff VB Assets, LLC (“VB Assets” or “Plaintiff”) and
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`Defendants Amazon.com, Inc., Amazon.com LLC, Amazon Web Services, Inc., A2Z
`
`Development Center, Inc. d/b/a Lab126, Rawles LLC, AMZN Mobile LLC, AMZN Mobile 2
`
`LLC, Amazon.com Services, Inc. f/k/a Amazon Fulfillment Services, Inc., and Amazon Digital
`
`Services LLC (collectively, “Amazon” or “Defendants”).1
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`2.
`
`VB Assets brings this civil action for patent infringement under 35 U.S.C. § 271 et
`
`seq. against Amazon for infringement of the following patents (collectively, the “Asserted
`
`Patents”):
`
`• U.S. Patent No. 8,073,681 (“the ’681 patent”), entitled “System and Method for a
`Cooperative Conversational Voice User Interface”;
`
`• U.S. Patent No. 9,626,703 (“the ’703 patent”), entitled “Voice Commerce”;
`
`• U.S. Patent No. 7,818,176 (“the ’176 patent”), entitled “System and Method for
`Selecting and Presenting Advertisements Based on Natural Language Processing
`of Voice-Based Input”;
`
`• U.S. Patent No. 8,886,536 (“the ’536 patent”), entitled “System and Method for
`Delivering Targeted Advertisements and Tracking Advertisement Interactions in
`Voice Recognition Contexts”; and
`
`
`1 Amazon’s Position: The parties are working in good faith to negotiate a stipulation to address
`certain non-existent entities and to substitute Amazon.com Services LLC for defendants
`Amazon.com, Inc., Amazon.com LLC, Amazon Web Services, Inc., A2Z Development Center,
`Inc. d/b/a Lab 126, AMZN Mobile LLC, AMZN Mobile 2 LLC, Amazon.com Services, Inc. f/k/a
`Amazon Fulfillment Services, Inc., and Amazon Digital Services, LLC as a defendant in-suit.
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 5 of 29 PageID #: 10019
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`
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`• U.S. Patent No. 9,269,097 (“the ’097 patent”), entitled “System and Method for
`Delivering Targeted Advertisements and/or Providing Natural Language
`Processing Based on Advertisements.”
`
`3.
`
`The ’681 patent stems from a patent application filed on October 16, 2006, which
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`issued as the ’681 patent on December 6, 2011.
`
`4.
`
`The ’703 patent stems from a provisional patent application filed on September 16,
`
`2014, which issued as the ’703 patent on April 18, 2017.
`
`5.
`
`The ’176, ’536, and ’097 patents stem from a common patent application filed on
`
`February 6, 2007. These patents issued on October 19, 2010, November 11, 2014, and February
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`23, 2019, respectively.
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`6.
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`VB Assets alleges that Amazon infringes the following claims of the Asserted
`
`Patents (collectively, “the Asserted Claims”):
`
`Asserted Patent
`
`Asserted Claims
`
`’681 Patent
`
`1, 13, 25, and 29
`
`’703 Patent
`
`15 and 25
`
`’176 Patent
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`40 and 46
`
`’536 Patent
`
`’097 Patent
`
`38
`
`23
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`7.
`
`VB Assets alleges that Amazon infringes the Asserted Claims of the Asserted
`
`Patents by making and using Alexa and further by making, selling, and offering for sale Amazon’s
`
`Alexa Products.2
`
`
`2 “Accused Products” collectively refers to Amazon’s Alexa Voice Service and devices that
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`2
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`8.
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`Amazon disputes that the Accused Products infringe any of the Asserted Claims
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`and that VB Assets is entitled to any damages.
`
`9.
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`Amazon also contends that the Asserted Claims are invalid for failure to satisfy one
`
`or more requirements of patentability under 35 U.S.C. §§ 101, 103, and 112.
`
`B.
`
`Pleadings
`
`10.
`
`VB Assets filed suit against Amazon on July 29, 2019, accusing Amazon of
`
`infringing six patents, including the Asserted Patents and U.S. Patent No. 9,015,049, which VB
`
`Assets voluntarily dismissed.
`
`11.
`
`Amazon filed a motion to dismiss for failure to state a claim on September 18, 2019
`
`(D.I. 16). VB Assets amended the complaint on October 9, 2019 (D.I. 22), and the Court denied
`
`Amazon’s motion as moot (D.I. 23). Amazon filed its Answer to the Complaint on September 3,
`
`2020 (D.I. 55). The operative pleadings are VB Assets’s First Amended Complaint (D.I. 22) and
`
`Amazon’s Answer to VB Assets’s First Amended Complaint (D.I. 38).
`
`12.
`
`This action does not involve any counterclaims or crossclaims, though Amazon
`
`asserts affirmative defenses, including inter alia, non-infringement and invalidity of all Asserted
`
`Patents.
`
`
`connect to Alexa, including the Echo product line (such as Echo 1st Gen., Echo 2nd Gen., Echo
`Dot 1st Gen., Echo Dot 2nd Gen., Echo Dot 3rd Gen., Echo Dot Kids Edition, Echo Show 1st
`Gen., Echo Show 2nd Gen., Echo Show 5, Echo Spot, Echo Plus 1st Gen., Echo Plus 2nd Gen.,
`Echo Auto, and Echo Look), Amazon’s Alexa apps, Music apps, and Shopping apps on a
`smartphone or other mobile device, Amazon’s Alexa cloud, Alexa Voice Services, and
`Amazon.com website, and any other device, app, or instrumentality that includes, provides access
`to, or works with Alexa (such as Amazon Tap, Amazon Dash Wand, Echo Wall Clock,
`AmazonBasics Microwave, Amazon SmartPlug, Amazon Fire TV Sticks, Amazon Fire TVs,
`Amazon Fire TV Cubes, and Amazon Fire and Fire HD tablets) as well as software, hardware, and
`cloud infrastructure associated with any of the foregoing that implement Amazon’s Alexa cloud-
`based voice service.
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 7 of 29 PageID #: 10021
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`
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`C.
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`13.
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`Claim Construction
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`The Court held a Markman hearing on June 9, 2021, and issued its claim
`
`construction opinion and order on June 23, 2021 (D.I. 90).
`
`14.
`
`The Court’s order stated the following related to the Asserted Claims still at issue:
`
`• “model” (’176 patent, claims 45 and 46) means “an approximation, representation, or
`
`idealization of selected aspects of the structure, behavior, operation, or other characteristics
`
`of a real-world process, concept, or system”;
`
`• “short-term shared knowledge” / “short-term knowledge” (’681 patent, claims 1, 13, 25)—
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`no construction necessary;3
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`• “speech recognition engine” / “speech recognition” (’703 patent, claims 15, 25; ’176
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`patent, claim 40) means “software or hardware that recognizes the words or phrases in the
`
`natural language utterance”;
`
`• “long-term shared knowledge” / “long-term knowledge” (’681 patent, claims 1, 13, 25)—
`
`no construction necessary.4
`
`D.
`
`Discovery
`
`15.
`
`Fact discovery closed on June 24, 2022 (D.I. 143; May 20, 2022 Minute Order),
`
`and expert discovery closed on December 12, 2022 (D.I. 179; November 10, 2022 Minute Order).
`
`
`3 VB Assets agreed that “the claims of the ’681 . . . patent[] require “short-term [shared]
`knowledge” to be about the current conversation as opposed to just any conversation.” (D.I. 80-2,
`Ex. 8 at 1 (Exhibits to Joint Claim Construction Chart (D.I. 78) and Joint Claim Construction Brief
`(D.I. 79)).
`4 “These terms ‘do not require construction beyond the clarification that both have the same
`meaning and are a type of shared knowledge.’” (D.I. 90 at 2.)
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`
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`E.
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`16.
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`Summary Judgment and Daubert Motions
`
`Amazon filed summary judgment motions on February 3, 2023 for invalidity (D.I.
`
`184) and non-infringement (D.I. 185). The Court denied summary judgment at a hearing held on
`
`July 7, 2023. (July 7, 2023 Minute Entry.)
`
`17.
`
`On February 3, 2023, Amazon filed a Daubert motion to exclude certain testimony
`
`and opinions of VB Assets’s damages expert, Brett Reed, as based on unreliable methodology.
`
`(D.I. 181). The Court heard oral arguments on the motion at hearings on July 7 and September 27,
`
`2023. (July 7 and Sept. 27, 2023 Minute Entries.) On September 27, 2023, the Court entered an
`
`Oral Order granting the motion in part and denying the motion in part with leave to renew. (D.I.
`
`238).
`
`18.
`
`The pretrial conference is currently set for October 5, 2023. (See Sept. 12, 2023
`
`Oral Order.)
`
`F.
`
`Pending Motions
`
`19.
`
`The parties’ motions in limine are being filed as part of this Pretrial Order, as set
`
`forth in Section VIII.E below.
`
`G.
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`Trial
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`20.
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`A jury trial of up to five days is scheduled to begin November 2, 2023. (See Sept.
`
`12, 2023 Oral Order Resetting Scheduling Order Deadlines.)
`
`II.
`
`FEDERAL JURISDICTION
`
`21.
`
`This Court has federal-question jurisdiction over this action because it arises under
`
`the patent laws of the United States, 35 U.S.C. § 271 et seq.
`
`22.
`
`The subject matter jurisdiction of this Court is not disputed and is based on 28
`
`U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`23.
`
`No party contests personal jurisdiction for purposes of this action.
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`24.
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`No party contests venue for purposes of this action in this District pursuant to 28
`
`U.S.C. §§ 1391 and 1400(b).
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`III. UNCONTESTED FACTS
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`25.
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`A joint statement of uncontested facts for purposes of this trial is set forth in
`
`Schedule A. These uncontested facts shall require no proof at trial and will become part of the
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`evidentiary record in this case once read to the jury. Any party may read any or all of the
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`uncontested facts to the jury or Court, and will be charged for the time used to do so.
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`IV.
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`ISSUES OF FACT THAT REMAIN TO BE LITIGATED
`
`26.
`
`VB Assets’s Statement of Factual Issues Remaining to be Litigated is attached
`
`hereto as Schedule B1.
`
`27.
`
`Amazon’s Statement of Factual Issues Remaining to be Litigated is attached hereto
`
`as Schedule B2.
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`V.
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`ISSUES OF LAW THAT REMAIN TO BE LITIGATED
`
`28.
`
`VB Assets’s Statement of the Issues of Law that Remain to be Litigated is set forth
`
`in Schedule C1.
`
`29.
`
`Amazon’s Statement of the Issues of Law that Remain to be Litigated is set forth
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`in Schedule C2.
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`VI.
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`EXHIBITS
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`30.
`
`VB Assets’s list of trial exhibits that it may offer at trial, including Amazon’s
`
`objections, is attached as Schedule D1.
`
`31.
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`Amazon’s list of trial exhibits that it may offer at trial, including VB Assets’s
`
`objections, is attached as Schedule D2.
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`32.
`
`Joint trial exhibits will be marked with “JTX” numbers. The parties joint list of trial
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`exhibits they may offer at trial, is attached as Schedule D3.
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`33.
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`The parties shall provide a completed AO Form 187 exhibit list to the Court on the
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`first day of trial.
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`34.
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`This Pretrial Order contains the maximum universe of exhibits (with the exception
`
`of demonstrative exhibits) to be used by a party at trial, as well as all objections to the admission
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`of such exhibits, neither of which shall be supplemented without approval of all parties or leave of
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`the Court, on good cause shown. Exhibits not listed by the parties other than demonstratives will
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`not be admitted into evidence unless good cause is shown.
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`35.
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`The parties agree that exhibits to be used solely for impeachment need not be
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`included on the lists of trial exhibits. Exhibits that are used solely for impeachment and are not on
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`a party’s trial exhibit list will not be entered into evidence.
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`36.
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`The exhibit lists indicate whether each trial exhibit has previously been marked as
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`a deposition exhibit. To remove duplicates and improve legibility of the exhibits used at trial, the
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`parties agree that the trial exhibit shall be treated as identical to the indicated deposition exhibit
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`regardless of whether it bears a deposition exhibit sticker.
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`37.
`
`The parties will exchange electronic copies of their respective pre-marked exhibits
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`in searchable (OCR) PDF file format by 5:00 P.M. on October 31, 2023. VB Assets shall be
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`responsible for serving on Amazon pre-marked, searchable (OCR), PDF copies of any joint trial
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`exhibits.
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`38.
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`The parties will provide physical copies of documents (witness binders for direct
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`and cross examination, copies of exhibits, demonstratives, deposition transcripts, etc.) to the
`
`witnesses prior to a direct or cross-examination. At the beginning of each trial day, the parties will
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`provide to the Courtroom Deputy and the opposing party electronic copies of witness folders
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`containing the exhibits and demonstratives (if any) to be used on direct examination of any witness
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`
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`expected to be called that day. The parties will also provide to the Courtroom Deputy (but not the
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`opposing party) electronic copies of witness folders containing the exhibits and demonstratives (if
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`any) to be used on direct and cross-examination by 7:00 a.m., including any deposition transcripts
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`or expert reports, of any witnesses expected to be called that day.
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`VII. WITNESSES
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`39.
`
`The fact and expert witnesses that VB Assets intends to call to testify at trial is
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`attached as Schedule E1. The fact and expert witnesses that Amazon intends to call to testify at
`
`trial is attached as Schedule E2.
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`40.
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`Any witnesses not listed in Schedules E1 and E2 will be precluded from testifying
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`absent good cause shown and leave of the Court.
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`41.
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`The inclusion of a witness on this list does not require a party to call that witness to
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`testify, and does not imply or establish that the party has the power to compel the live testimony
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`of that witness or make that witness available to the opposing party.
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`42.
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`The parties expressly reserve the right to call any witness identified by the other
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`party at any point before or during trial. The parties also reserve the right to change or modify
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`these lists for good cause shown and with leave of the Court.
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`VIII. DEPOSITION DESIGNATIONS
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`43.
`
`VB Assets’s designations of deposition testimony that it may offer into evidence,
`
`with Amazon’s objections and counter-designations, are identified in Schedule F1. Amazon’s
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`designations of deposition testimony that it may offer into evidence, with VB Assets’s objections
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`and counter-designations, are identified in Schedule F2.
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`44.
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`This Pretrial Order contains the universe of deposition designations, counter-
`
`designations, and objections to deposition testimony currently contemplated by the parties. None
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`of the foregoing shall be supplemented without approval of all parties and leave of the Court, on
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`good cause show, by disclosing such supplemental testimony in accordance with the schedule
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`below.
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`IX.
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`THE PARTIES’ STATEMENTS OF INTENDED PROOFS
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`45.
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`Below are the parties’ respective statements of intended proofs provided by each
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`respective party. Each party does not agree with the other parties’ statements and positions.
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`A.
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`46.
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`47.
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`VB Assets’s Statement of Intended Proof
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`By way of summary, VB Assets intends to prove the following at trial.
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`VB Assets intends to prove that Amazon has directly infringed and continues to
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`infringe the Asserted Claims by making and using Alexa and further by making, using, selling,
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`offering for sale, and/or importing into the United States Alexa Products, which embody or use
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`the Asserted Claims in violation of 35 U.S.C. § 271(a).
`
`48.
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`VB Assets intends to prove that Amazon has been and continues inducing
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`infringement of the Asserted Claims of the Asserted Patents by inducing others to make and use
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`Alexa and further to make, use, sell, offer for sale, or import Alexa Products that include Alexa
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`and embody or use the inventions claimed in the Asserted Patents in violation of 35 U.S.C.
`
`§ 271(b).5
`
`49.
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`VB Assets intends to prove that Amazon has been and continues contributorily
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`infringing the Asserted Claims by selling or offering to sell Alexa Products, knowing them to be
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`especially made or especially adapted for practicing the invention of the ’681 patent and not a
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`staple article or commodity of commerce suitable for substantial non-infringing use in violation of
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`35 U.S.C. § 271(c).6
`
`
`5 Amazon’s Position: Amazon objects to inclusion of or any reference to inducing infringement
`in this Pretrial Order or at trial.
`6 Amazon’s Position: Amazon objects to inclusion of or any reference to contributory
`infringement in this Pretrial Order or at trial.
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`50.
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`VB Assets intends to prove that Amazon’s infringement of the Asserted Claims
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`was knowing, intentional, and willful in violation of 35 U.S.C. § 284.
`
`51.
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`Amazon’s acts of infringement of the Asserted Claims have caused and will
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`continue to cause VB Assets damages for which VB Assets is entitled to compensation pursuant
`
`to 35 U.S.C. § 284. VB Assets intends to prove that damages should be awarded to VB Assets
`
`due to Amazon’s infringement of the Asserted Claims. Further, VB Assets intends to prove the
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`amount of a reasonable royalty that should be awarded for Amazon’s acts of infringement of the
`
`Asserted Claims.
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`52.
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`VB Assets should be awarded its costs and reasonable attorneys’ fees under at least
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`35 U.S.C. § 285; and VB Assets is entitled to an ongoing royalty through the expiration of the
`
`Asserted Patents.
`
`53.
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`VB Assets intends to rebut Amazon’s allegations that there is clear and convincing
`
`evidence that any of the Asserted Claims of the Asserted Patents are invalid under 35 U.S.C.
`
`§§ 101, 103, and/or 112.
`
`B.
`
`54.
`
`AMAZON'S STATEMENT OF INTENDED PROOF
`
`Amazon intends to prove that the Accused Products do not infringe any of the
`
`Asserted Claims of the Asserted Patents. Amazon also intends to prove that the Asserted Patents
`
`are invalid under 35 U.S.C. §§ 101, 103 and 112. Amazon also intends to prove that this is an
`
`exceptional case warranting an award of Amazon’s attorneys’ fees and expenses under 35 U.S.C.
`
`§ 285 or the Court’s equitable power.
`
`X.
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`AMENDMENTS OF THE PLEADINGS
`
`55.
`
`Neither party intends to request an amendment to its pleadings at the present time.
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 14 of 29 PageID #: 10028
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`XI. CERTIFICATION OF GOOD-FAITH SETTLEMENT EFFORTS
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`56.
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`The parties hereby certify that they have engaged in a good-faith effort to explore
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`resolution of the controversy by settlement. The parties participated in good-faith in an in-person
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`mediation on July 14, 2023.
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`XII. MOTIONS IN LIMINE
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`57.
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`VB Assets’s contested motion in limine, Amazon’s opposition, and VB Assets’s
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`reply are attached as Schedule G1.
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`58.
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`Amazon’s contested motions in limine, VB Assets’s oppositions, and Amazon’s
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`replies are attached as Schedules H1, H2, and H3.
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`XIII. OTHER MATTERS
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`A.
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`59.
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`Trial Presentations
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`The presentation at the jury trial will occur in the following order:
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`Phase I
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`VB Assets’s affirmative case on infringement and damages
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`Phase II
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`Amazon’s responsive case on non-infringement and damages, and
`Amazon’s affirmative case on invalidity
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`Phase III VB Assets’s rebuttal to Amazon’s invalidity case
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`60.
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`Notwithstanding the foregoing, the parties agree that fact witnesses may testify only
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`once.
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`61.
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`Each side will use its best efforts to give the other party at least twenty-four hours’
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`notice before concluding each of the Phases listed above.
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`B.
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`Length of Trial
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`62.
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`The trial will be timed. The parties request thirteen (13) hours per side. Unless
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`otherwise noted, time will be charged to a party for its opening statement, direct and redirect
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`examination of witnesses it calls, cross-examination of witnesses called by any other party, closing
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 15 of 29 PageID #: 10029
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`argument, its argument on any motions for judgment as a matter of law, and all sides’ arguments
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`on objections a party raises (outside the presence of the jury) to another party’s exhibits and
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`demonstrative exhibits.
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`63.
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`The Courtroom Deputy will keep a running total of trial time used by counsel. If a
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`party uses all of its allotted trial time, the Court will terminate that party’s trial presentation.
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`C.
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`Jurors
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`64.
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`There shall be eight jurors. The Court will conduct jury selection through the
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`“struck juror” method, beginning with the Court reading voir dire to the jury panel in the
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`courtroom, continuing by meeting with jurors individually or at sidebar and then addressing any
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`challenge for cause, and concluding with preemptory strikes.
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`65.
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`Subject to the Court’s permission, the parties shall be allowed to provide a joint
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`jury notebook to each of the jurors, which shall contain only the Asserted Patents, a face book of
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`the witnesses with a photo of each witness and the witness’s title on blank notebook paper. The
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`jury will be permitted to bring these notebooks and handwritten notes into the deliberation room.
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`VB Assets is responsible for putting these juror notebooks together. VB Assets is to disclose the
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`contents of the notebook to defendants no later than 72 hours before trial begins. The parties shall
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`exchange digital photographs for each of its witnesses five days before the start of trial. Any
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`objections to the notebooks are to be resolved by the parties in good faith effort.
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`D. Motions for Judgment as a Matter of Law
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`66.
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`The parties propose that motions for judgment as a matter of law be made and
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`argued during breaks when the jury is out of the courtroom or at the end of the day after the jury
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`has been dismissed. The parties agree that such motions will be raised with the Court at the first
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`break after the appropriate point during trial so that the Court may inform the parties when such
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`motions will be heard and whether the Court wishes to receive briefing.
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 16 of 29 PageID #: 10030
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`67.
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`Unless the Court sets alternative deadlines, all oppositions to motions filed pursuant
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`to Fed. R. Civ. P. 50(b) must be filed within 28 days of the filing of the motion. All replies in
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`support of the motions must be filed within 21 days of service of any oppositions. The parties
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`reserve their right to seek reasonable extensions of these deadlines, subject to the Court’s approval.
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`E.
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`68.
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`69.
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`Agreed Motions in Limine
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`No argument, evidence, or testimony regarding a party’s total revenue and profits.
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`No argument, evidence, or testimony contending that VB Assets, VoiceBox, or any
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`licensee has made any products, technologies, or services that at any time have practiced or
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`embodied any claim of the asserted patents.
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`70.
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`No argument, evidence, or testimony regarding settlement communications
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`between the parties since the filing of this Action.
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`71.
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`No argument and evidence relating to the ’049 patent, which was previously
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`asserted but has been dismissed.
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`72.
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`No argument, evidence, or testimony regarding personal information of witnesses
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`or executives for the parties (e.g., their marriage, politics, personal life, etc.); discussion about
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`Amazon’s labor disputes, unionization, or warehouse conditions; payment of taxes; Alexa privacy
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`issues or suggestion that Amazon is spying on its customers; Congressional reports implying
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`Amazon is a bad actor or otherwise addressing Amazon; or general antitrust issues, including any
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`related enforcement activity or litigation.
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`73.
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`No arguments or evidence relating to unrelated litigation including a pending state
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`court litigation relating to the acquisition of VoiceBox and patent lawsuits against Amazon and
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`others involving other patents formerly owned by VoiceBox, including complaints or other
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`grievances of VoiceBox’s investors.
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 17 of 29 PageID #: 10031
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`74.
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`No argument, evidence, or testimony regarding pretrial proceedings or issues
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`including but not limited to discovery disputes or motion practice.
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`F.
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`Verdict Forms
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`75.
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`The parties have submitted separate verdict forms.7
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`G. Miscellaneous Stipulations
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`76.
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`Plaintiff will prepare the Court’s preferred Federal Judicial Counsel video (dated
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`January 1, 2013, available at https://www.fjc.gov/publications/patent-process-overview-jurors) to
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`play for the jury once empaneled.
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`77.
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`Neither party will introduce at trial evidence, testimony, or argument that the other
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`party did not produce or rely on opinions of counsel.
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`7 Amazon’s Position: The Court should adopt Amazon’s verdict form because VB Assets’s
`proposal is unsound in several respects.
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`First, VB Assets’ question regarding willfulness is prejudicial and so is its placement after the first
`question on infringement. The jury need not answer a question on willfulness if it finds the asserted
`claims to be invalid. Further, willfulness should be considered after the damages question to avoid
`any confusion over whether willfulness should inform the jury’s damages award, if any. See, e.g.,
`TrackTime, LLC v. Amazon.com Services LLC, D. Del. No. 1:18-cv-01518, D.I. 307, 308 at 8
`(Sept. 19, 2023).
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`Second, Amazon’s wording at Question 3—Patent Ineligibility reflects the correct test regarding
`conventionality as it relates to patent ineligibility under Section 101, i.e. from the point of view of
`one skilled in the art and at the time of the invention. The Court submitted the same language
`Amazon proposes to the jury in a recent trial, including Amazon’s proposed “as of the time of the
`invention” language. See TrackTime, LLC v. Amazon Services LLC et al., D. Del. No. 1:18-cv-
`01518-MN, D.I. 307, 308 (Sept. 19, 2023). It should do the same here.
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`Third, VB Assets’s damages expert advances a running royalty opinion. Amazon’s damages
`expert advances a lump sum opinion. The jury must therefore be instructed on the difference and
`respond to a question explaining the damages it awards. Amazon’s Question 4(A) on Damages is
`what the Court recently read in TrackTime. See TrackTime, LLC v. Amazon Services LLC et al.,
`D. Del. No. 1:18-cv-01518-MN, D.I. 307, 308 at 7 (Sept. 19, 2023).
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`Case 1:19-cv-01410-MN Document 249 Filed 10/12/23 Page 18 of 29 PageID #: 10032
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`78.
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`Neither party will reference at trial a person’s race, religion, national origin, sexual
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`orientation, or sexual activities.
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`79.
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`Neither party will reference at trial the role or pres