throbber
Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 1 of 12 PageID #: 13576
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`SOLAS OLED LTD.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG DISPLAY CO., LTD.,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`CIVIL ACTION NO. 2:19-CV-00152-JRG
`
`ORDER ON PRETRIAL MOTIONS AND MOTIONS IN LIMINE
`
`The Court held two Pretrial Conferences in the above-captioned matter on Tuesday,
`
`September 8, 2020 (the “First Pretrial Conference”), and Wednesday, September 9, 2020 (the
`
`“Second Pretrial Conference”), regarding motions in limine (“MILs”) and other pending pretrial
`
`motions filed by Plaintiff Solas OLED Ltd. (“Solas”) and Defendants Samsung Display Co., Ltd.,
`
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. (together, “Samsung”)
`
`(collectively, “the Parties”). (Dkt. Nos. 142, 143, 137, 140, 139, 141, 117, 138, 135, 250, 251,
`
`136, 225, 224, 226). This Order memorializes the Court’s rulings on the aforementioned MILs
`
`and motions as announced into the record, including additional instructions that were given to the
`
`Parties. While this Order summarizes the Court’s rulings as announced into the record during the
`
`pretrial hearing, this Order in no way limits or constrains such rulings from the bench and as
`
`reflected in the record. Accordingly, it is hereby ORDERED as follows:
`
`SAMSUNG EX. 1027 - 1/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 2 of 12 PageID #: 13577
`
`MOTIONS IN LIMINE
`
`
`
`It is ORDERED that the Parties, their witnesses, and counsel shall not raise, discuss, or
`
`argue the following before the venire panel or the jury without prior leave of the Court:
`
`1. Agreed Motions in Limine (Dkt. No. 225)
`
`The following MILs are GRANTED-BY-AGREEMENT OF THE PARTIES.
`
`• Agreed MIL No. 1: Solas shall not introduce any testimony or argument concerning the
`
`unaccused i7110 product. Solas shall also withdraw any trial exhibits from its exhibit list
`
`that pertain specifically to the i7110 product.
`
`• Agreed MIL No. 2: The parties shall not introduce any argument or evidence emphasizing
`
`the nationality or place of residence of any party or witness.
`
`• Agreed MIL No. 3: The parties shall not introduce any argument or evidence regarding a
`
`witness’s choice to testify in his or her native language.
`
`• Agreed MIL No. 4: The parties shall not make any reference to, attempt to read, or show
`
`to the jury any nonrelevant exchanges between counsel during depositions, including
`
`attorney objections.
`
`• Agreed MIL No. 5: Solas shall not analogize the burdens of proof in this case to situations
`
`arising in the context of family law or criminal law.
`
`• Agreed MIL No. 6: Solas shall not introduce any evidence or argument concerning the
`
`overall capitalization, overall revenues, or overall profits of any of the Defendants.
`
`2. Plaintiff Solas’s Opposed Motions in Limine (Dkt. No. 226)
`
`• Solas MIL No. 1: Evidence of no-longer-asserted claims, products, and/or non-asserted
`
`infringement theories.
`
`
`
`2
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`SAMSUNG EX. 1027 - 2/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 3 of 12 PageID #: 13578
`
`This MIL was GRANTED. (Dkt. No. 265 at 49:14-18). Defendants may present those
`
`non-infringing alternatives that are no longer asserted products, however, Defendants may not
`
`characterize non-infringing alternatives as previously asserted and now dropped products. (Id. at
`
`49:19-50:3). With regard to willfulness, the Court will exercise its gatekeeping authority and
`
`require prior leave of Court before the assertion of previously asserted but now dropped claims is
`
`raised before the jury. (Id. at 50:4-8).
`
`• Solas MIL No. 2: Evidence of “background” prior art not properly disclosed in invalidity
`
`contentions.
`
`This MIL was DENIED. (Dkt. No. 265 at 57:11-16). However, Plaintiff may object to
`
`improper obviousness references. (Id. at 57:17-58:14).
`
`• Solas MIL No. 3: Evidence and argument based on Defendants’ patents and patent
`
`applications.
`
`This MIL was GRANTED. (Dkt. No. 265 at 67:4-6). However, Samsung must seek leave
`
`to introduce such evidence as it relates to willfulness. (Id. at 67:7-9).
`
`• Solas MIL No. 4: Evidence and argument regarding trial counsel’s involvement in Solas’s
`
`acquisition of the patents-in-suit as well as any purported contingent fee arrangement.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 68:6-7). The Parties agreed
`
`that Defendants will not present evidence or argument regarding Russ August & Kabat’s
`
`involvement in Solas’s acquisition of the patents-in-suit, including any contingent fee agreement,
`
`possible role as buyer, or ownership interest. (Id. at 67:20-24). Defendants may present evidence
`
`and argument that Solas was represented by experienced patent counsel in the patent acquisition
`
`process. (Id. at 67:25-68:2).
`
`
`
`3
`
`SAMSUNG EX. 1027 - 3/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 4 of 12 PageID #: 13579
`
`• Solas MIL No. 5: Evidence and argument regarding purported backing or financing of
`
`Solas by a “hedge fund” or related investment vehicle.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 68:22-24). The Parties agreed
`
`that Defendants will not introduce evidence or argument calling Magnetar Capital or any entity
`
`involved with Solas a hedge fund or similar investment vehicle, e.g., private equity or investor
`
`fund. (Id. at 68:11-14). References of this type will be redacted from pre-admitted documents and
`
`deposition designations. (Id. at 68:15-16). Defendants are not precluded from introducing evidence
`
`that Solas has investors and/or partners generally. (Id. at 68:16-18).
`
`• Solas MIL No. 6: Dr. Sierros’s “clarification” errata, which rewrites his testimony.
`
`This MIL was WITHDRAWN. (Dkt. No. 265 at 68:25-69:3).
`
`• Solas MIL No. 7: Evidence or argument referring to Solas as litigious or its business model
`
`being focused on filing lawsuits.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 69:18-20). The Parties agreed
`
`that Defendants will not use the terms “troll,” “pirate,” “NPE,” “non-practicing entity,” or “patent
`
`assertion entity” to refer to Solas. (Id. at 69:7-10). Defendants may raise argument, evidence, or
`
`testimony that Solas does not manufacture or sell products and also may disclose Solas’s business
`
`model. (Id. at 69:10-14).
`
`• Solas MIL No. 8: Evidence of non-comparable licenses.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 70:18-20). The lump-sum
`
`amounts contained in the licenses will be redacted and Solas will not insinuate that those lump-
`
`sum amounts were large, but the licenses will come in to show that they were lump-sum licenses.
`
`(Id. at 70:2-5, 15-17).
`
`• Solas MIL No. 9: Late-produced, manufactured component cost document.
`
`
`
`4
`
`SAMSUNG EX. 1027 - 4/12
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`

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`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 5 of 12 PageID #: 13580
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 70:21-71:5). The Parties
`
`agreed that the MIL should be granted based on the Court’s earlier rulings on dispositive motions.
`
`(Id.).
`
`• Solas MIL No. 10: Evidence related to unavailable non-infringing alternatives.
`
`This MIL was WITHDRAWN. Solas withdrew this MIL from consideration. (Dkt. No.
`
`265 at 71:6-9).
`
`• Solas MIL No. 11: Evidence and argument regarding Defendants’ equitable defenses.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 72:1-2). Defendants will not
`
`present evidence or testimony before the jury related solely to any of their equitable defenses. (Id.
`
`at 71:19-22).
`
`3. Defendants’ Opposed Motions in Limine (Dkt. No. 224)
`
`• Samsung MIL No. 1: Expert testimony by Mr. Credelle or related evidence or argument
`
`concerning non-infringing alternatives.
`
`This MIL was DENIED. (Dkt. No. 265 at 77:22-23). Expert witnesses on both sides are
`
`constrained by the contents of their expert reports in testifying before the jury. (Id. at 77:23-78-1).
`
`• Samsung MIL No. 2: Expert testimony by Mr. Credelle or related evidence or argument
`
`that the accused products include a holding transistor which holds a voltage between the
`
`gate and source of the driving transistor in a light emission period.
`
`This MIL was WITHDRAWN. Samsung withdrew this MIL from consideration. (Dkt.
`
`No. 265 at 78:4-6).
`
`• Samsung MIL No. 3: Evidence or argument regarding secondary considerations of non-
`
`obviousness.
`
`
`
`5
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`SAMSUNG EX. 1027 - 5/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 6 of 12 PageID #: 13581
`
`This MIL was DENIED. (Dkt. No. 265 at 81:18-19). This MIL was in effect a late and
`
`improper Daubert motion. (Id. at 81:16-18).
`
`• Samsung MIL No. 4: Evidence, argument, or suggestion relating to discovery disputes with
`
`Defendants.
`
`This MIL was GRANTED. (Dkt. No. 265 at 84:3-4). There will be no evidence, argument,
`
`or suggestion relating to the parties’ discovery obligations, discovery disputes, or discovery
`
`deficiencies. (Id. at 83:25-84:2).
`
`• Samsung MIL No. 5: Improper argument regarding burden of proof.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 85:18-20). The Parties agreed
`
`that the Parties shall not make reference to the clear and convincing burden of proof in a different
`
`area of the law, e.g., the burden of proof required to commit an individual to an institution, revoke
`
`parental rights, or terminate life support during opening, closing, or the presentation of evidence.
`
`(Id. at 84:14-19). With respect to voir dire, a party may only inquire whether a potential juror’s
`
`life experience in another area of law would interfere with the ability to apply the clear and
`
`convincing evidence standard, as the Court has instructed them, if and only if a party establishes
`
`that either: (1) a potential juror served as a juror previously and that case involved a clear and
`
`convincing standard; or (2) a potential juror has been involved in litigation, i.e., either as a party
`
`or as a witness, close family member, or friend of a party or witness to a litigation that involved
`
`the clear and convincing standard. (Id. at 84:20-85:6). A party may inquire generally whether
`
`members of the panel have experience in cases involving family law, divorce, or civil commitment.
`
`(Id. at 85:6-9). If any member of the panel answers affirmatively, the party may then inquire as to
`
`whether there was anything about that prior experience that would interfere with the venire
`
`
`
`6
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`SAMSUNG EX. 1027 - 6/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 7 of 12 PageID #: 13582
`
`member’s ability to follow and apply the Court’s instructions as to the burden of proof. (Id. at
`
`85:9-13).
`
`• Samsung MIL No. 6: Argument, evidence, testimony, insinuation, reference, or assertion
`
`of infringement or willful infringement based on documents not tied to the accused
`
`products.
`
`This MIL was GRANTED. (Dkt. No. 265 at 91:1-2). With respect to Samsung charts
`
`mapped to other products, non-asserted patents and other Samsung patent documents, and non-
`
`accused Apple and Sony products, leave from the Court in advance is required before counsel
`
`inquires as to those subjects. (Id. at 90:3-91:8).
`
`• Samsung MIL No. 7: Evidence or argument about a relationship or business dealings
`
`between Atmel and Samsung Display or any copying of Atmel devices.
`
`This MIL was DENIED. (Dkt. No. 265 at 97:10-11). The Court found that such should
`
`have been properly raised in a Daubert motion. (Id. at 97:11-13).
`
`• Samsung MIL No. 8: Evidence or argument about the alleged invention of the ‘311 Patent
`
`inconsistent with the Court’s claim construction.
`
`This MIL was WITHDRAWN. Samsung withdrew the MIL from consideration. (Dkt. No.
`
`265 at 97:21-23).
`
`• Samsung MIL No. 9: Evidence or arguments regarding the Universal Display Patent
`
`Portfolio License Agreements.
`
`This MIL was DENIED. (Dkt. No. 265 at 100:14). The Court found that such should have
`
`been properly raised in a Daubert motion. (Id. at 100:6-13).
`
`
`
`7
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`SAMSUNG EX. 1027 - 7/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 8 of 12 PageID #: 13583
`
`• Samsung MIL No. 10: Evidence or argument concerning Defendants’ overall size, wealth,
`
`and total revenues or profits from sales of end-user products, including products not
`
`accused in this case.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 101:7-9). Solas will not
`
`discuss Defendants’ overall size, wealth, number of employees, and the total revenues or profits
`
`from Defendants’ sale of end user mobile phone products that are not accused in this case,
`
`including non-accused Galaxy mobile phone products. (Id. at 100:23-101:3).
`
`• Samsung MIL No. 11: Argument, testimony, insinuation, reference, or assertion that
`
`Defendants failed to obtain opinions of counsel against Solas’s claim of willful
`
`infringement.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 101:22-24). Solas cannot
`
`create any negative inferences or imply that Defendants were willful because they did not obtain
`
`an opinion of counsel letter. (Id. at 101:11-14). Solas cannot present any argument, evidence,
`
`testimony, insinuation, reference, or assertion that Defendants had a duty to obtain opinion of
`
`counsel but it is not precluded from mentioning that Defendants did not seek opinion of counsel.
`
`(Id. at 101:14-18).
`
`• Samsung MIL No. 12: Argument, evidence, testimony, insinuation, reference, or assertion
`
`relating to any litigations, rulings, or accusations against Defendants in unrelated legal
`
`proceedings or unrelated disputed matters between a Defendant and any third party.
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 102:9-11). No party shall refer
`
`to another as litigious or refer to the number of lawsuits brought by or against any party or any
`
`prior jury verdict for or against a party without first approaching the bench.. (Id. at 102:2-5).
`
`• Samsung MIL No. 13: Evidence or argument for the presumption of validity.
`
`
`
`8
`
`SAMSUNG EX. 1027 - 8/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 9 of 12 PageID #: 13584
`
`This MIL was GRANTED-AS-AGREED. (Dkt. No. 265 at 102:19-21). Solas will not be
`
`precluded from mentioning the presumption of validity of issued patents but may not make
`
`repetitive references to such presumption. (Id. at 102:13-15).
`
`PRETRIAL MOTIONS
`
`1. Samsung’s Motion for Summary Judgment of Noninfringement of the ‘311 Patent
`
`and No Actual Reduction to Practice of the ‘311 Patent (Dkt. No. 142)
`
`This Motion was DENIED as to noninfringement and no actual reduction to practice of
`
`the ‘311 Patent. (Dkt. No. 263 at 87:22-88:2). There were genuine issues of material fact as to both
`
`grounds that precluded its granting under Federal Rule of Civil Procedure 56. (Id. at 88:2-7).
`
`2. Samsung’s Motion to Exclude and Motion to Strike Certain Opinions Offered by
`
`Thomas L. Credelle (Dkt. No. 143)
`
`This Motion was DENIED-IN-PART and GRANTED-IN-PART. The Court DENIED
`
`the Motion as it related to Mr. Credelle’s opinions on reduction to practice. (Dkt. No. 263 at 88:8-
`
`11). However, the Court GRANTED the Motion as it related to Mr. Credelle’s opinions on claim
`
`construction and the Court struck ¶ 221 of Mr. Credelle’s report. (Id. at 88:11-17).
`
`3. Solas’s Partial Motion for Summary Judgment Regarding Status of Alleged Prior Art
`
`to U.S. Patent No. 9,256,311 (Dkt. No. 137)
`
`This Motion was DENIED. The Court found that there were genuine issues of material
`
`fact that precluded the Motion being granted under Federal Rule of Civil Procedure 56. (Dkt. No.
`
`263 at 88:18-25).
`
`4. Samsung’s Motion for Summary Judgment of Noninfringement and Invalidity of the
`
`‘450 Patent (Dkt. No. 140)
`
`
`
`9
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`SAMSUNG EX. 1027 - 9/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 10 of 12 PageID #: 13585
`
`This Motion was CARRIED-IN-PART and DENIED-IN-PART. The Court carried the
`
`Motion as to noninfringement at the First Pretrial Conference to address a claim construction
`
`dispute as to the terms “said active elements” and “cover.” (Dkt. No. 263 at 150:11-151:12, 152:6-
`
`8). This dispute was resolved at the Second Pretrial Conference by means of a Supplemental Claim
`
`Construction Order of the Court. (Dkt. No. 265 at 23:5-24:15; Dkt. No. 262).
`
`The Court DENIED AS MOOT the Motion as it related to invalidity of the ‘450 Patent.
`
`The argument of invalidity based on anticipation of Claim 1 of the ‘450 Patent was rendered moot
`
`because the Plaintiff no longer asserts Claim 1. (Dkt. No. 263 at 151:13-152:5).
`
`5. Samsung’s Motion for Summary Judgment of Noninfringement of the ‘338 Patent
`
`(Dkt. No. 139)
`
`This Motion was DENIED. The Court determined there were genuine issues of material
`
`fact as to whether the Accused Products meet the “driving transistor, one of the source and drain
`
`of which is connected the pixel electrode,” “holding transistor which holds the voltage between
`
`the gate and source of the driving transistor in a light emission period,” and “switch transistor
`
`which makes a write current flow between the drain and source of the driving transistor”
`
`limitations of the ‘338 Patent. (Dkt. No. 263 at 169:23-170:10). The Court further determined that
`
`there was no case or controversy as to the doctrine of equivalents, non-accused Apple products,
`
`and dropped Samsung products. (Id. at 170:11-17).
`
`6. Samsung’s Motion for Summary Judgment of No Willfulness (Dkt. No. 141)
`
`This Motion was DENIED. The Parties rested on the papers at the First Pretrial
`
`Conference. (Dkt. No. 263 at 149:17-150:4). The Court subsequently found at the Second Pretrial
`
`Conference that there were genuine issues of material fact that precluded granting the Motion.
`
`(Dkt. No. 265 at 40:18-41:9).
`
`
`
`10
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`SAMSUNG EX. 1027 - 10/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 11 of 12 PageID #: 13586
`
`7. Samsung’s Motion to Strike Portions of Solas’s Amended Infringement Contentions
`
`(Dkt. No. 117)
`
`This Motion was DENIED-IN-PART and GRANTED-IN-PART. The Court DENIED
`
`the Motion to Strike and did not find that there was surprise or unacceptable prejudice to
`
`Defendants. (Dkt. No. 263 at 195:24-196:10). Further, the Court GRANTED Solas leave to amend
`
`its infringement contentions. (Id. at 196:10-13).
`
`8. Samsung’s Motion to Exclude Damages Opinions of Stephen E. Dell (Dkt. No. 138)
`
`This Motion was DENIED. The Court found that any matters raised by Defendants could
`
`properly be addressed through cross-examination and did not rise to the level of exclusion. (Dkt.
`
`No. 263 at 200:24-201:7).
`
`9. Solas’s Motion to Strike Portions of the Expert Report of Christopher Martinez (Dkt.
`
`No. 136)
`
`This Motion was DENIED-IN-PART and GRANTED-IN-PART. The Court
`
`GRANTED the Motion to the extent Mr. Martinez’s opinions relied upon an Excel spreadsheet
`
`containing purported component cost data, finding that the underlying data was suspiciously absent
`
`and Mr. Martinez’s opinions were therefore unreliable under Daubert. (Dkt. No. 265 at 39:25-40-
`
`6). The Court therefore struck ¶ 198 and Schedule 11 from Mr. Martinez’s expert report. (Id. at
`
`40:7-9). The Court DENIED the Motion on all other asserted grounds. (Id. at 40:10-14).
`
`10. Solas’s Motion to Strike Expert Opinions Concerning Non-infringing Alternatives
`
`(Dkt. No. 135)
`
`This Motion was DENIED. The Parties rested on the papers at the First Pretrial
`
`Conference. (Dkt. No. 263 at 149:17-150:4). The Court subsequently found at the Second Pretrial
`
`
`
`11
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`SAMSUNG EX. 1027 - 11/12
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`

`

`Case 2:19-cv-00152-JRG Document 279 Filed 09/30/20 Page 12 of 12 PageID #: 13587
`
`Conference that there were no challenges to the opinions that rose to the level of being struck, and
`
`could adequately be addressed through vigorous cross-examination. (Dkt. No. 265 at 41:10-20).
`
`11. Claim Construction as related to “said active elements” and “cover” (Dkt. Nos. 250,
`
`251)
`
`In light of a claim construction dispute brought to the Court’s attention for the first time at
`
`the First Pretrial Conference, and both parties’ assertions on the record that additional claim
`
`construction was necessary before the case could fairly proceed to trial, the Court underwent a
`
`targeted claim construction for the term “cover,” construing that term to mean “lie over the surface
`
`of,” not “cover entirety of active element.” (Dkt. No. 265 at 24:7-15). The Court further found
`
`that the term “said active elements” was not in need of construction, reaffirming the Court’s prior
`
`construction of “active elements” and allowing Plaintiff to map the claim to a subset of active
`
`elements. (Id. at 23:21-24:6). The Court issued an order addressing this subject in more detail. (See
`
`Dkt. No. 262).
`
`
`
`
`
`12
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 30th day of September, 2020.
`
`SAMSUNG EX. 1027 - 12/12
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`

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