Case 1:19-cv-01937-MFK-JLH Document 304 Filed 02/07/23 Page 1 of 5 PageID #: 41731
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`EXPRESS MOBILE, INC.
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`Plaintiff and Counterclaim
`Defendant,
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`v.
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`GODADDY.COM, LLC
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`Defendant and
`Counterclaimant.
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`C.A. No. 1:19-cv-01937-MFK
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`JURY TRIAL DEMANDED
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`JOINT STATUS REPORT
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`Pursuant to the Court’s instructions during the Pretrial Conference, the Parties hereby
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`provide this joint status report.
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`1. With respect to Defendant’s Motion in Limine No. 8 (regarding GoDaddy’s
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`Website Builder Version 6 code), the parties have conferred and reached agreement that Dr.
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`Almeroth and Mr. Bratic will say “no” if asked whether Dr. Almeroth reviewed WSB V6 Code,
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`and they will not say “GoDaddy refused to produce the V6 Code.” By virtue of this agreement
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`the parties respectfully report that Defendant’s Motion in Limine No. 8 is resolved and no longer
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`in dispute.
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`2. With respect to the Federal Judicial Center Patent video (proposed
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`Preliminary Jury Instruction No. 9), the parties’ positions are below.
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`a.
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`Express Mobile’s position is that playing the FJC video, which is neutral and
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`unbiased, reflects common practice in this district, and beneficially breaks up the oral
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`instructions with a video. Playing the FJC video is standard for Judge Andrews and other judges
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`Case 1:19-cv-01937-MFK-JLH Document 304 Filed 02/07/23 Page 2 of 5 PageID #: 41732
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`in this District.1 Former Chief Judge Robinson stated that “[i]n all cases before me, the jury is
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`shown a Federal Judicial Center video about patent law.” Syngenta Seeds, Inc. v. Monsanto Co.,
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`No. 02-1331-SLR, 2004 U.S. Dist. LEXIS 18712 *4 (D. Del. Sept. 8, 2004). Judge Gilliam
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`stated, recently in 2021, that the “Federal Judicial Center video [is] routinely shown in patent
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`cases.” Plexxikon Inc. v. Novartis Pharms. Corp., No. 17-cv-04405-HSG, 2021 U.S. Dist.
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`LEXIS 58463 *2 (D. Del. Mar. 26, 2021). As this Court has previously noted the FJC video is
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`“neutral” and not biased as suggested by GoDaddy. See Illinois Computer Research, LLC v.
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`Harpo Productions, Inc., No. 08 C7322-MFK, Slip Op. at 2 (N.D. Ill. June 7, 2010). GoDaddy
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`asserts this case predates the current video, but as the Court noted at the pretrial conference “I
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`don’t think it’s slanted in the way that you’re [GoDaddy] describing. I really don’t. I think it’s
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`neutral and, you know, that’s what I think.” PTC Tr. at 56-57. Consistent with that
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`characterization, Judge Goldberg (visiting from E.D. Va) recently characterized the video as
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`“neutrally-presented.” See Shire ViroPharma Inc. v. CSL Behring LLC, No. 17-414, 2021 U.S.
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`Dist. LEXIS 61551 *53, n.11 (D. Del. Mar. 31, 2021). Even GoDaddy’s proposed written
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`instructions note that the Court may consider playing the FJC video in addition to those written
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`instructions. For all the reasons set forth herein and in the Pretrial Order, Express Mobile
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`submits the video should be played.
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`1 Exemplary cases from Judge Andrews include: Shopify Inc. and Shopify (USA), Inc. v. Express
`Mobile, Inc., 19-cv-00439-RGA, D.I. 408, Preliminary Jury Instructions at 10; TQ Delta, LLC v.
`2Wire, Inc., 1:13-cv-01835-RGA (D. Del.), D.I. 1618 at 3; In re Chanbond, LLC, 1:15-cv-00842-
`RGA (D. Del.), D.I. 564 at 2; TC Tech. LLC, v. Sprint Corp., et al., 1:16-cv-00153-RGA (D. Del.),
`D.I. 467 at 1; Vectura Ltd. v. Glaxosmithkline LLC, et al., 1:16-cv-00638-RGA (D. Del.), D.I. 307
`at 10; Zimmer Surgical, Inc., et al., v. Stryker Corp., et al., 1:16-cv-00679-RGA (D. Del.), D.I.
`452 at 12; Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, et al.,
`1:17-cv-01390-RGA (D. Del.), D.I. 730 at 9; Sprint Comms, Co., L.P. v. CSC Holdings, LLC d/b/a
`OptimumCableVision, 1:18-cv-01752-RGA (D. Del.), D.I. 384 at 1; First Quality Tissue, LLC v.
`Irving Consumer Prods. Ltd., et al., 1:19-cv-00428-RGA (D. Del.), D.I. 362 at 10; Nexstep, Inc.
`v. Comcast Cable Comms., LLC, 1:19-cv-1031-RGA (D. Del.), D.I. 307 at 10, D.I. 325 at 10; RSB
`Spine, LLC v. Depuy Synthes Sales, Inc., et al., 1:19-cv-01515-RGA (D. Del.), D.I. 250 at 3.
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`Case 1:19-cv-01937-MFK-JLH Document 304 Filed 02/07/23 Page 3 of 5 PageID #: 41733
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`b.
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`GoDaddy’s position is that the attached jury instruction should be read instead of
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`playing the FJC video. The question is not whether it is standard for a particular court to play the
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`video; it is whether the video is neutral. At least one court’s expressed concerns regarding the
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`bias of the video is instructive. See TecSec Inc. v Adobe Inc., 10-cv-00115-PTG-WEF, D.I. 1321
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`at 3:22-4:1 (E.D.Va. December 9, 2018) (The Court: “The video. I am not going to play the
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`video. I have looked at it a lot, and I still think it is not completely unbiased. I think that the FJC
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`has done a pretty good job of attempting to make it as neutral as possible, but I don't think it is.
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`So I am not going to play the video.”). XMO’s effort to distinguish TecSec is unavailing, as
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`Shire ViroPharma involved a dispute over deciding between an expert describing the work of the
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`Patent Office versus the FJC video, and not the assessment of potential bias as discussed by
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`Judge Giles in TecSec. Moreover, XMO’s quotation to Your Honor’s previous considerations of
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`neutrality predate the 2013 update to the video. This new version of the video quantitatively
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`devotes the largest share of its time to patent examination and issuance, and qualitatively
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`dramatizes invention and patent issuance with imagery involving the U.S. Constitution, the
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`Edison light bulb invention, and an official, ribboned copy of a patent, concepts that XMO will
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`expectedly include in its Opening. The Court requested GoDaddy to file alternative instructions
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`to the FJC video, which the proposed instructions state are just that, an alternative to the video.
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`This is not a reason to reject them.
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`3. With respect to deposition designations, the parties’ proposed procedure for any
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`objections is set forth in the Pretrial Order at paragraph 59. Given the Court’s rulings on the
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`parties’ motions in limine and the parties’ disclosure of revised witness lists next Monday, the
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`parties anticipate significantly reducing the depositions designations and objections thereto. The
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`parties believe the vast majority of objections will be resolved without Court intervention and
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`Case 1:19-cv-01937-MFK-JLH Document 304 Filed 02/07/23 Page 4 of 5 PageID #: 41734
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`any remaining objections that cannot be resolved would be raised one day before the deposition
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`designation at issue is played. Id. The parties believe this procedure would greatly reduce or
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`eliminate the need for the Court to review and rule on all of the deposition designations and
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`objections now. If, however, the Court would prefer to rule on all deposition designations before
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`trial, the parties respectfully request time to reduce the deposition designations and objections to
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`reduce the amount of designations and objections the Court must rule on.
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`4. The parties also wanted to bring to the Court’s attention that there are disputed
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`issues in the Pretrial Order that have not been resolved. Specifically, the parties dispute:(a)
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`the order of presentation (PTO at paragraph 73); and (b) GoDaddy’s request to bifurcate
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`willfulness (PTO at paragraph 73 fns. 10 and 11). GoDaddy contends bifurcation is particularly
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`critical given the Court’s allowance of XMO to proceed to trial on willfulness based solely on
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`post-suit notice; the jury will inevitably conflate defense of the strict liability claim of
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`infringement with subjective intent to infringe. As proposed by GoDaddy, it should be able to
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`present its good faith defenses at trial in phase one, and separately defend willfulness if
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`necessary in a second phase before the same jury, avoiding conflation of the two issues. Express
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`Mobile contends GoDaddy’s request to bifurcate willfulness, which is the exception not the rule,
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`through a footnote in the pretrial order is improper and should be summarily denied. GoDaddy
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`has failed to even articulate how willfulness would be bifurcated (other than disclosing for the
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`first time today it would be the same jury), or when and how such a trial would take place given
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`the Court’s limited time for trial. GoDaddy has also failed to show any alleged “conflation”
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`exists much less outweighs the duplication of evidence and waste of time bifurcation would
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`necessarily require in this case.
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`Case 1:19-cv-01937-MFK-JLH Document 304 Filed 02/07/23 Page 5 of 5 PageID #: 41735
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`The parties are available for a brief status conference or hearing at the Court’s
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`convenience if the Court would like to discuss these or any other issues.
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`Dated: February 7, 2023
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`DEVLIN LAW FIRM LLC
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`/s/ Timothy Devlin
`Timothy Devlin (#4241)
`1526 Gilpin Avenue
`Wilmington, DE 19806
`(302) 449-9010
`tdevlin@devlinlawfirm.com
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`OF COUNSEL:
`James R. Nuttall (pro hac vice)
`John L. Abramic (pro hac vice)
`Michael Dockterman (pro hac vice)
`Katherine H. Tellez (pro hac vice)
`Robert F. Kappers (pro hac vice)
`Tron Fu (pro hac vice)
`Daniel F. Gelwicks (pro hac vice pending)
`STEPTOE & JOHNSON LLP
`227 West Monroe, Suite 4700
`Chicago, IL 60606
`(312) 577-1300
`jnuttall@steptoe.com
`jabramic@steptoe.com
`mdockterman@steptoe.com
`ktellez@steptoe.com
`rkappers@steptoe.com
`tfu@steptoe.com
`dgelwicks@steptoe.com
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`Christopher A. Suarez (pro hac vice)
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`(202) 429-3000
`csuarez@steptoe.com
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`Attorneys for Plaintiff Express Mobile, Inc.
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`BALLARD SPAHR LLP
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`/s/ Brian SS. Auerbach
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`Beth Moskow-Schnoll (#2900)
`Brittany M. Giusini (#6034)
`Brian SS. Auerbach (#6532)
`919 N. Market Street, 11th Floor
`Wilmington, DE 19801-3034
`(302) 252-4465
`moskowb@ballardspahr.com
`giusinib@ballardspahr.com
`auerbachb@ballardspahr.com
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`OF COUNSEL:
`Brian W. LaCorte
`Jonathon A. Talcott
`Andrew Michael Hensley
`1 East Washington Street, Suite 2300
`Phoenix, AZ 85004-2555
`(602) 798-5400
`lacorteb@ballardspahr.com
`talcottj@ballardspahr.com
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`Lawrence Nodine
`Kyle Ceuninck
`999 Peachtree Street, NE, Suite 1600
`Atlanta, GA 30309-3915
`(678) 420-9362
`nodinel@ballardspahr.com
`ceuninckk@ballardspahr.com
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`Attorneys for Defendant GoDaddy.com, LLC
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