Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`Case No. 6:19-CV-00513-ADA
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`JURY TRIAL DEMANDED
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`CloudofChange, LLC,
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`
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`Plaintiff,
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`v.
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`NCR Corporation,
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`Defendant.
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`CLOUDOFCHANGE’S MOTIONS IN LIMINE
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`Plaintiff CloudofChange, LLC hereby moves the Court for an order in limine to preclude
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`any attorney or witness from (1) making any reference, mention, statement, suggestion, or
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`allusion to, (2) giving any testimony or argument concerning, or (3) introducing any exhibits
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`before the jury or panel concerning any of the following matters:
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`1
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`Microchip et al. Ex. 1014-1
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 2 of 24
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`Motion in Limine 1: REFERENCES TO CLOUDOFCHANGE AS A NON-PRACTICING
`ENTITY AND PATENT TROLL SHOULD BE EXCLUDED
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`The Court should exclude reference to CloudofChange’s business activities and structure,
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`including the use of any derogatory, disparaging, and/or pejorative references to CloudofChange as
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`a patent troll, patent assertion entity, and/or a non-practicing entity. The Court should similarly
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`preclude arguments suggesting that it is improper for CloudofChange to assert patent rights
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`without practicing the patent, or suggestions that CloudofChange was assigned patent rights by its
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`inventors Wayne Barrata and Quentin Olson for the purpose of pursuing this litigation. Any such
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`references should be precluded on the basis that they have no relevance to the claims at issue,
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`because whether CloudofChange practices the patent by making and/or selling products has no
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`relevance to questions of infringement. FED. R. EVID. 402. To the extent that such issues are
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`relevant, the probative value is substantially outweighed by the risk of unfair prejudice, confusion
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`of the issues, and/or misleading the jury. FED. R. EVID. 403. Courts customarily exclude the use of
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`similarly pejorative terms to refer to a patent owner. See ContentGuard Holdings, Inc. v.
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`Amazon.com, Inc., No. 2:13-CV-01112-JRG, 2015 WL 11089489, at *2 (E.D. Tex. Aug. 24, 2015)
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`(precluding the parties from making any argument, reference, insinuation, or presenting evidence
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`implying that plaintiffs are “patent trolls,” “patent pirates,” non-practicing entities, or other
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`pejorative terms, or otherwise disparaging plaintiffs’ business model); Parthenon Unified Memory
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`Architecture LLC v. Apple Inc., No. 2:15-CV-621-JRG-RSP, 2016 WL 7743510, at *1 (E.D. Tex.
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`Sept. 21, 2016) (precluding the use of pejorative terms such as “patent troll,” “pirate,” “bounty
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`hunter,” “privateer,” “bandit,” “paper patent,” “submarine patent,” “stick up,” “hold up,”
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`“shakedown,” and “playing the lawsuit lottery”); Rembrandt Wireless Techs., LP v. Samsung
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`Elecs. Co., No. 2:13-CV-213-JRG-RSP, 2015 WL627430, at *1 (E.D. Tex. Jan. 31, 2015)
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`(prohibiting defendants from making derogatory, disparaging, and/or pejorative references to
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`2
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`Microchip et al. Ex. 1014-2
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 3 of 24
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`Rembrandt including, inter alia, “patent troll”); Datatreasury Corp. v. Wells Fargo & Co., No.
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`2:06-CV-72 DF, 2010 WL 11468934, at *4 (E.D. Tex. Oct. 5, 2010) (granting motion to preclude
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`the term “patent troll” and other pejorative characterizations of plaintiff); Freeny v. Murphy Oil
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`Corp., No. 2:13-CV-791-RSP, 2015 WL11108703, at *1 (E.D. Tex. May 29, 2015) (same); Core
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`Wireless Licensing S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963, at
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`*2 (E.D. Tex. July 12, 2016) (precluding references to plaintiff as a “patent troll,” “troll,” “patent
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`pirate,” “shell company,” “litigation shop,” “lawsuit factory,” “submarine patents,” “litigious,”
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`“shakedown,” “extortionist,” and similar).
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`3
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`Microchip et al. Ex. 1014-3
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 4 of 24
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`Motion in Limine 2: DISPARAGING REMARKS OR ARGUMENTS IMPLYING THAT
`IT IS IMPROPER TO ASSERT PATENTS WITHOUT PRACTICING THEM SHOULD
`BE EXCLUDED
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`NCR should be precluded from making any disparaging remarks or arguments implying
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`that it is improper to assert patents without practicing them. Like other types of property, a patent
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`is legally assignable; an assignment grants the assignee all rights of the assignor. See 35 U.S.C. §
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`261. Moreover, there is no legal requirement that a patent owner must practice the claimed
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`invention to assert the patent in litigation. Courts have prohibited derogatory references to a patent
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`owner’s business model to imply impropriety or diminished patent value, and such references
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`should likewise be excluded in this action in accordance with this policy. See, e.g. Intellectual
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`Ventures II LLC v. FedEx Corp., Case No. 2:16-cv-00980, Dkt. 505, Order at 6-7 (E.D. Tex. April
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`26, 2018); Summit Data Sys. v. EMC Corp., No. 10-749-GMS, 2014 WL 4955689, at *4 (D. Del.
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`Sept. 25, 2014) (“Non-practicing entities…are entitled to enforce their patent rights through
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`litigation”); Helicos Biosciences v. Illumina, Inc., 858 F. Supp. 2d 367, 373 (D. Del. 2012)
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`(rejecting view that “patent enforcement companies[] should be treated as second-class citizens”).
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`4
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`Microchip et al. Ex. 1014-4
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 5 of 24
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` REFERENCES TO PRIOR LITIGATIONS INVOLVING
`in Limine 3:
`Motion
`CLOUDOFCHANGE WITNESSES SHOULD BE EXCLUDED
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`The Court should preclude reference to prior litigations involving CloudofChange
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`witnesses including, but not limited to, Wayne Barrata, Quentin Olson, Ambreen Salters, or Greg
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`Crouse. Whether any of CloudofChange’s witnesses have been a party to any legal action outside
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`of the present action has no bearing on the infringement claims at issue or any of NCR’s defenses.
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`FED. R. EVID. 402. To the extent that a witness’s involvement in a separate legal action has any
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`probative value, it would be minimal as none of these witnesses have been involved in litigation
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`relating to patent infringement or the Patent Office—much less the Asserted Patents. Thus, any
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`reference to unrelated litigation risks unfair prejudice, confusing the issues, and/or misleading the
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`jury. FED. R. EVID. 403; see Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-401-JRG-RSP,
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`2014 WL 11515642, at *1 (E.D. Tex. Dec. 10, 2014) (granting motion to “preclude Defendants
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`from offering any argument, evidence, testimony, or reference to previous legal investigations of
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`witnesses”); see also EVM Sys., LLC v. Rex Med., L.P., No. 6:13-CV-184, 2015 WL 11089476, at
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`*2 (E.D. Tex. June 10, 2015) (precluding any reference to “unrelated legal proceedings involving
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`EVM”); Mars, Inc. v. TruRX LLC, No. 6:13-CV-526-RWS-KNM, 2016 WL 4055675, at *2-3
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`(E.D. Tex. Apr. 29, 2016) (precluding any reference to “any pending or prior litigation other than
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`this case involving either of the parties”); ContentGuard Holdings, Inc., 2015 WL 11089489, at *1
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`(precluding reference to any “litigations, rulings, or accusations against Defendant in unrelated
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`legal proceedings or unrelated disputed matters between Defendant and any third party”).
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`5
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`Microchip et al. Ex. 1014-5
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 6 of 24
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`Motion in Limine 4 : REFERENCES TO NOTICE LETTERS SENT TO THIRD PARTIES
`OTHER THAN NCR SHOULD BE EXCLUDED
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`The Court should preclude reference to notice letters sent to third parties other than NCR
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`including, but not limited to, ShopKeep, Square, LivePOS, Revention, Comcash, Linga POS, Epos
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`Now, Cin7, Clover Network, Lau, Toast, Ordyx, Oracle Corporation, Revel Systems, ECi Software
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`Solutions, Upserve, Erply, Queztal POS, Harbortouch of Lighthouse Network, eHopper, Cegid,
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`Franpos, e-Nabler, Kounta, COMBASE USA, and Vend, or any other argument, evidence,
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`testimony, insinuation, or reference to CloudofChange’s infringement investigations of parties or
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`entities other than NCR, or whether they do or do not infringe the claims of the Asserted Patents.
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`Whether other third parties infringe the Asserted Patents outside of the scope of the present action
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`has no bearing on the infringement claims at issue or any of NCR’s defenses and is thus not
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`relevant. FED. R. EVID. 402. Even if these notice letters are relevant, which they are not, the
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`letters should be excluded because their probative value is substantially outweighed by the danger
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`of undue prejudice, confusion of the issues, or misleading the jury. FED. R. EVID. 403.
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`6
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`Microchip et al. Ex. 1014-6
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 7 of 24
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`Motion in Limine 5 : REFERENCES TO ANY PRIO R ART AND ANY THEORY OF
`INVALIDITY NOT SET FORTH IN NCR’S FINAL INVALIDITY CONTENTIONS AS
`NARROWED SHOULD BE EXCLUDED
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`The Court should exclude any evidence or argument based on non-elected prior art. In an
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`attempt to circumvent the Court’s Order (Dkt. 76) requiring the Parties to meet and confer to
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`discuss narrowing the number of claims asserted and prior art references at issue, NCR expert Dr.
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`Sandeep Chatterjee proposes to argue, based on material outside the prior art references that NCR
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`elected, that certain ‟concepts” were known in the prior art. In making these arguments, NCR’s
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`expert repeatedly relies on non-elected prior art. See Dkt. 79, pp. 1-2. Moreover, when combined
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`with the remainder of the expert’s invalidity arguments against the same claims, these arguments
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`rely on combinations of prior art that NCR did not elect. NCR should be precluded from
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`mentioning these references, absent a specific expression of any motivation to combine the
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`different references. Allowing this would thwart the entire purpose of the Court’s Order and
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`patent rules. CloudofChange has complied with that order, and NCR should not be permitted to
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`take the benefits of the Order while failing to comply with the reciprocal restrictions on its use of
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`prior art. NCR’s effort to make arguments about non-elected prior art would be fundamentally
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`unfair and prejudicial to CloudofChange, and would confuse the jury as to what prior art is being
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`asserted and what arguments they are properly allowed to consider. See FED. R. EVID. 401-403.
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`Surely NCR would not want CloudofChange to show up at trial and assert patent claims that
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`CloudofChange had not elected under the corresponding portions of the same Court Order.
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`Courts regularly exclude such matter. See Core Wireless Licensing S.A.R.L., 2016
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`WL718963, at *2 (precluding LG from introducing ‟evidence or argument that non-elected prior
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`art invalidates any claim" or introducing "any non-elected prior art as an exhibit”); Intellectual
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`Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG, 2018 WL 10638138, at *2 (E.D. Tex.
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`Apr. 26, 2018) (excluding non-asserted prior art and requiring Defendants to obtain leave before
`7
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`Microchip et al. Ex. 1014-7
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 8 of 24
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`using ‟prior art that is outside of the previously elected prior art invalidity case in order to show
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`relevant background information at trial”); Metaswitch Networks Ltd. v. Genband US LLC, No.
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`2:14-cv-744, 2016 WL 3618831, at *4 (E.D. Tex. Mar. 1, 2016) (granting motion to “[e]xclude
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`any argument, testimony, evidence, or reference to prior art or prior art combinations that were not
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`included in invalidity contentions or elected”); Nobelbiz, Inc. v. Global Connect, L.L.C., No. 6:12-
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`CV-244, 2015 WL 11072170, at *3 (E.D. Tex. Sept. 2, 2015) (‟Dr. Perry can talk about the state
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`of the art, but must avoid citing references that were not elected as prior art in his invalidity
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`analysis.”).
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`8
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`Microchip et al. Ex. 1014-8
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 9 of 24
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`Motion in Limine 6 : COMPARISON OF THE ACCUSED PRODUCTS TO PRIOR ART
`SHOULD BE EXCLUDED
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`NCR’s expert reports and deposition testimony confirm that they intend to confuse and
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`mislead the jury with legally irrelevant arguments that NCR does not infringe or should not be held
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`liable for infringement because its accused products somehow practice the prior art. But the
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`attempted comparison of the accused products to the prior art is legally improper, and the Court
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`should preclude such evidence and argument.
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`The law is well-established that an accused infringer may not argue it does not infringe or
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`should not be liable because it purportedly practices the prior art. The Federal Circuit has held
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`repeatedly: “It is well established, however, that ‘practicing the prior art’ is not a defense to
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`infringement.” In re Omeprazole Patent Litig., 536 F.3d 1361, 1377 (Fed. Cir. 2008) (rejecting
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`defendant’s argument that it did not infringe because “its manufacturing process merely practices
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`the prior art”); see also Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d
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`1357, 1365-69 (Fed. Cir. 2020) (improper for Defendant to claim it practiced prior art or obvious
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`variations of the prior art); Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1583 (Fed.
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`Cir. 1995) (improper for Defendants to argue the accused devices use only combined teachings of
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`prior art). Indeed, “the fact that the patentee happens to be practicing the prior art is irrelevant” to
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`an infringement analysis. Tate Access, 279 F.3d at 1367.
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`In determining infringement, the jury compares the accused device and the claims of the
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`asserted patent, not the prior art. As stated in Tate Access, “[t]hus, our decision in Baxter directly
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`forecloses [Defendant]’s ‘practicing the prior art’ argument…The discussion in Baxter cited above
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`makes clear that literal infringement is determined by construing the claims and comparing them to
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`the accused device, not by comparing the accused device, not by comparing the accused device to
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`the prior art.” Tate Access, 279 F.3d at 1366; see also Baxter, 49 F.3d at 1583 (“There is no
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`9
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`Microchip et al. Ex. 1014-9
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 10 of 24
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`requirement that the accused device be nonobvious in light of the prior art, or otherwise be itself
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`patentable. Literal infringement exists if each of the limitations of the asserted claim(s) read on,
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`that is, are found in, the accused device.”). Accordingly, courts routinely grant motions in limine
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`precluding such improper comparisons. See, e.g., Packet Intelligence LLC v. Netscout Sys., Inc.,
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`No. 2:16-cv-230-JRG, ECF No. 228, at 3 (E.D. Tex. Sept. 29, 2017); see also Semcon IP Inc. v.
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`Huawei Device USA Inc., No. 2:16-cv-00437-JRG-RSP, ECF No. 290, slip op. at 3 (E.D. Tex.
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`Dec. 15, 2017); Parthenon Unified Memory Architecture LLC v. Apple, Inc., No. 2:15-cv-621-
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`JRG-RSP, ECF No. 246, at 3 (E.D. Tex. Sept. 21, 2016); Rembrandt Wireless Techs., No. 2:13-
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`CV-213-JRG-RSP, ECF No. 248, at *8.
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`NCR also may not argue this testimony is relevant to validity. The cases make clear that
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`such an argument is impermissible and conflates non-infringement and invalidity, causing
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`substantial jury confusion on these important, and distinct, issues. “[A]ccused infringers are not
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`free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a
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`‘practicing prior art’ defense to literal infringement under the less stringent preponderance of the
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`evidence standard.” Tate Access, 279 F.3d at 1367. Moreover, the Federal Circuit foreclosed
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`“practicing the prior art” as an invalidity argument. Zenith Electronics Corp. v. PDI Commc’n Sys.,
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`Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (“[A]nticipation cannot be proven by merely
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`establishing that one ‘practices the prior art.’”).
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`Evidence or argument from NCR or its experts comparing the accused devices to the prior
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`art is highly likely to confuse and mislead the jury and should be excluded under Rule 402, 403,
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`and the applicable law.
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`10
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`Microchip et al. Ex. 1014-10
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 11 of 24
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`Motion in Limine 7: REFERENCES TO FORUM SHOPPING, LITIGATION ABUSE, OR
`THE WESTERN DISTRICT OF TEXAS AS A POPULAR VENUE FOR PATENT
`LITIGATION OR AS AN IMPROPER VENUE SHOULD BE EXCLUDED
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`The Court should preclude any reference to CloudofChange allegedly engaging in forum
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`shopping or litigation abuse by selecting the Western District of Texas as the venue for this action.
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`Further, the Court should exclude any reference concerning the Western District of Texas as a
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`popular venue for patent litigation generally, or as being an improper or inconvenient venue for
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`this action in particular. Such references are wholly irrelevant to the infringement claims at issue,
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`amount to improper character evidence, and run the high risk of unfair prejudice, confusion of the
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`issues, wasting time, and/or misleading the jury. FED. R. EVID. 402, 403, 404; see Droplets, Inc.,
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`2014 WL 11515642, at *1 (precluding defendants from arguing or presenting evidence that
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`“Droplets filed in Marshall, Texas for an improper or underhanded purpose or that the EDTX is a
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`popular patent venue”); see also Datatreasury Corp., 2010 WL 11468934, at *3-4 (precluding
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`evidence or argument that (1) plaintiff relocated its headquarters “in an attempt to engage in forum
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`shopping or for establishing venue for this litigation,” (2) there was any impropriety in plaintiff’s
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`right to select the forum, and (3) the jurors in the district are “plaintiff-oriented,” “hostile towards
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`defendants,” or the district is the “patent lawsuit capital of the world” or similar statements).
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`11
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`Microchip et al. Ex. 1014-11
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 12 of 24
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`Motion in Limine 8 : REFERENCES TO NCR’S 414 PATENTS SHOULD BE EXCLUDED
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`The Court should exclude any reference to NCR’s patents, which are outside the scope of its
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`invalidity case and not elected by NCR as prior art to the asserted patents. Settled law establishes
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`that NCR’s patents are not relevant to CloudofChange’s infringement claims. Bio-Tech. Gen. Copr.
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`v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (“The existence of one’s own patent does
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`not constitute a defense to infringement of someone else’s patent.”); Advanced Cardiovascular Sys.,
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`Inc. v. Medtronic, Inc., 265 F.3d 1294, 1309 (Fed. Cir. 2001) (“The fact that [accused infringer’s]
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`patent might read on the [accused device] is totally irrelevant to the question of whether [the
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`accused infringer] willfully infringed another patent.”); Retractable Techs. Inc. v. Becton, Dickinson
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`& Co., 2009 WL 8725107, at *7 (E.D. Tex. Oct. 8, 2009) (granting motion to exclude “any
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`argument by Defendant that it does not infringe because the accused product is purportedly covered
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`by patents that Defendant owns or licenses”). Further, NCR’s designated Rule 30(b)(6)
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`representative, Kristin Schoonover, has admitted that none of NCR’s patents are related to or
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`relevant to the accused product (NCR Silver). Schoonover Depo., 79:17-21. NCR should not be
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`able to argue the Accused Products are covered by any NCR patent(s).
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`Nor are NCR’s patents relevant to calculating damages here. Other than the unreliable
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`testimony and damages report of Dr. Ikizler, NCR has not provided any evidence linking its patents
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`to any damages issue.1 For example, NCR does not calculate its damages based in any way on its
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`patents, attempt to quantify its patents’ value, or quantify their contribution to it its products
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`separate and apart from the patented inventions’ contributions. See Georgia Pacific Corp. v. U.S.
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`Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y 1970).
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`1 CloudofChange concurrently filed its Daubert Motion to Exclude the Damages Opinions and
`Testimony of Dr. Ikizler on April 2, 2021 (Dkt. 89).
`12
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`Microchip et al. Ex. 1014-12
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 13 of 24
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`Any limited relevance NCR may assert its patent have under generalized damages principles
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`is outweighed by the very serious risk of prejudice and confusion. Fed. R. Evid. 403. For example,
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`if admitted, this evidence could cause the jurors to mistakenly conclude that the existence of NCR’s
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`patents weighs against a finding of infringement, even though that conclusion clearly would
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`contradict the law. For these reasons, an infringer’s own patents are frequently excluded as
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`prejudicial. E.g., Hochstein v. Microsoft Corp., 2009 WL 2022815, at *2 (E.D. Mich. July 7, 2009)
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`(“The Court will exclude evidence of Microsoft’s patents to rebut Plaintiffs’ expected argument that
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`the ‘125 patent drove the commercial success of the Xbox. Microsoft may argue that its own ‘later
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`and greater’ specific features drove the commercial success of the Xbox, but Microsoft cannot use
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`the terms ‘patents’ or ‘patented’ in discussing the features. Use of the term ‘patent,’ in this context,
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`is irrelevant, prejudicial, and will cause jury confusion.”); Cook Inc. v. Endologix, Inc., 2012 WL
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`4514036, at *5-6 (S.D. Ind. Oct. 1, 2012) (“[T]he Court disagrees that Endologix will be
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`independently prejudiced if it is not allowed to present evidence of its patent history. Cook is
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`asserting its patents, and the background of those patents is clearly relevant. While Endologix
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`understandably wants to present evidence of its own development history of the accused products,
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`evidence of its patents specifically is not necessary… Engologix may not present general evidence
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`about the history of its own patents….”). The same result should follow here.
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`13
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`Microchip et al. Ex. 1014-13
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 14 of 24
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` REFERENCES TO THE SUMMER INTERN WEIGHTS
`in Limine 9 :
`Motion
`DOCUMENT AND ANY ANALYSIS CONTAINED THEREIN SHOULD BE EXCLUDED
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`NCR should be precluded from introducing evidence or making reference to NCR’s Excel
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`“spreadsheet of features” which provides “high-level features that point-of-sale solutions in the
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`industry have” (NCR006345). Schoonover Deposition, 160:16-23. This document was admittedly
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`prepared by a “summer intern” and was not used by NCR in its business according to the testimony
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`of its Rule 30(b)(6) witness. See id. at 161:2-4, 163:21-164:4 (NCR006345 was prepared by “a
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`summer intern” and was not used in her work at NCR in connection with NCR Silver. As such, the
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`document is irrelevant to NCR’s the present case. FED. R. EVID. 402. Additionally, allow NCR to
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`introduce and adduce evidence which has no pertinence to the case and was prepared by a summer
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`intern would only serve to confuse the jury by improperly providing “weighted factors” of different
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`POS product features. See FED R. EVID. 403.
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`14
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`Microchip et al. Ex. 1014-14
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 15 of 24
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`Motion in Limine 1 0 : REFERENCES TO ALLEGATIONS THAT INDIVIDUAL CLAIM
`ELEMENTS WERE IN THE PRIOR ART SHOULD BE EXCLUDED
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`NCR should be precluded from introducing evidence or argument that individual claim
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`elements were known in the prior art separate from an opinion that it would be obvious to combine
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`elected references in NCR’s invalidity report together to yield the full invention of at least one
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`challenged patent claim. Such an analysis is improper because as a matter of patent law, a
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`combination of previously known elements can be patentable. In re Kahn, 441 F.3d 977, 986 (Fed.
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`Cir. 2006) ("[M]ere identification in the prior art of each element is insufficient to defeat the
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`patentability of the combined subject matter as a whole."); In re NTP, Inc., 654 F.3d 1279, 1299
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`(Fed. Cir. 2011) (piecemeal analysis is precisely the type of obviousness inquiry that must not be
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`conducted). The question is not whether individual elements in isolation were known, but whether
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`the combination in the claimed invention as a whole was obvious. Kahn, 441 F.3d at 986.
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`15
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`Microchip et al. Ex. 1014-15
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 16 of 24
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`in Limine 1 1 : DISPARAGING REFERENCES TO THE PTO AND ITS
`Motion
`EXAMINERS SHOULD BE EXCLUDED
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`NCR should be precluded from making disparaging remarks regarding the quality of the
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`PTO and its examiners, including that examiners are overworked or that the PTO is prone to error.
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`The PTO's examination process and resources are not relevant to the infringement allegations at
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`issue in this matter, and permitting disparaging comments regarding the Patent Office and its
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`examiners risks unfair prejudice, confusion of the issues, and/or misleading the jury. FED. R. EVID.
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`401, 402, 403. Such allegations invite the jury to speculate inappropriately about the prosecution of
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`the patents-in-suit instead of recognizing the legal presumptions that the PTO did its job properly
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`and the patents were validly issued. 35 U.S.C. § 282; Siemens Med. Sols. USA, Inc. v. Saint-
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`Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1284 (Fed. Cir. 2011). For these reasons,
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`motions in limine on this issue are regularly granted. See e.g., MV3 Partners, slip op. at 4 (granting
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`motion precluding Disparaging Comments Regarding the Patent Office and its Examiners")
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`(Albright, J.); Weatherford Tech. Holdings, LLC v. Tesco Corp., No. 2:17-cv-00456-JRG, Dkt. 166
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`at 3 (E.D. Tex. Nov. 14, 2018); Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-CV-744-
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`JRG-RSP, 2016 WL 3618831, at *1 (E.D. Tex. Mar. 1, 2016) ("[n]o party will offer criticism of
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`the performance, reliability or credibility of the USPTO or the examiners that work at the USPTO,
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`refer to the existence of any 'backlog' at the USPTO, refer to the issuance of 'bad patents,' or offer
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`other similar evidence or remarks"); Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-401-JRG-
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`RSP, 2014 WL 11515642, at *1 (E.D. Tex. Dec. 10, 2014) (granting motion to preclude defendants
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`from "offering any argument, evidence, testimony, insinuation, or reference regarding the
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`workload of the PTO (or its examiners), any attempt to disparage the PTO (or its examiners)");
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`Rembrandt Wireless Techs., LP v. Samsung Electronics Co., No. 2:13-CV-213-JRG-RSP, ECF No.
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`248, at *2 (E.D. Tex. Jan. 30. 2015)(precluding testimony "suggesting that the PTO – or its
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`16
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`Microchip et al. Ex. 1014-16
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 17 of 24
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`examiners – are overburdened, incompetent, or overlook references, as well as any reference to
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`'bad' patents or any similar pejorative term"); EVM Sys., LLC v. Rex Med., L.P., No. 6:13-CV-184,
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`2015 WL 11089476, at *2 (E.D. Tex. June 10, 2015) (precluding "[d]enigration of the Patent
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`Office or its employees or denigrating the patent system"); SimpleAir, Inc. v. AWS Convergence
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`Techs., Inc., No. 2:09-cv-289, 2012 WL 13207358, at *2 (E.D. Tex. April 3, 2012) ("Defendants
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`are precluded from introducing evidence relating to the reexamination proceedings or making
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`arguments that disparage the Patent Office or its performance of its duties during the original
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`prosecution."); Core Wireless Licensing S.A.R.L. v. LG Elecs. Inc., No. 2:14-cv-911-JRG-RSP,
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`2016 WL 4718963, at *2 (E.D. Tex. July 12, 2016) ("LG may not disparage the PTO and its
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`examiners, such as by arguing that examiners are overworked or that the PTO is prone to error").
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`17
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`Microchip et al. Ex. 1014-17
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 18 of 24
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`Motion in Limine 1 2 : REFERENCES TO EVIDENCE OR ARGUMENT THAT IS
`INCONSISTENT WITH THE COURT'S CLAIM CONSTRUCTIONS SHOULD BE
`EXCLUDED
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`NCR should not be permitted to present evidence or argument that is inconsistent with the
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`Court's claim constructions and, to the extent that the Court did not construe claim terms, evidence
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`or argument that is inconsistent with the plain and ordinary meaning of such terms to a person
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`skilled in the art.
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`It is well established, of course, that ‟the court determines the scope and meaning of the
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`patent claims asserted.” Transclean Corp. v. Bridgewood Servs., 290 F.3d 1364, 1370 (Fed. Cir.
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`2002). ‟[T]he parties are not entitled to ‘construe’ the Court's claim construction … [to] argue that
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`… the inventors ‘really’ invented something other than what the trial court has construed the
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`claims to mean … [or argue] that the Court's claim construction is ‘open to interpretation’ by the
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`jury.” EZ Dock, Inc. v. Schafer Sys., No. CIV.98-2364(RHK/AJB), 2003 WL 1610781, at *12 (D.
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`Minn. Mar. 8, 2003). For this reason, courts, including this Court, routinely exclude evidence or
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`argument to the jury to support an interpretation of a claim term that is different than the meaning
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`given to that term by the court. See, e.g., MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308-
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`ADA, ECF No. 332, slip op. at 5 (W.D. Tex. Sep. 29, 2020) (granting motion precluding reference
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`to ‟Testimony or Arguments Contrary to or Unsupported by the Court's Claim Construction
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`Order”) (Albright, J.); Dentsply, 1-17-cv-01041 at 10 (‟The Court will not permit the parties to
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`contradict the court's construction. Therefore, the Court grants this motion in limine.”); Paice LLC
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`v. Hyundai Motor Co., No. CIV.A. MJG-12-499, 2015 WL 5158727, at *2 (D. Md. Sept. 1, 2015)
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`(‟There shall be no argument, evidence, or testimony inconsistent with the Court's claim
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`constructions”); Linear Grp. Servs., LLC v. Attica Automation, Inc., No. 13-10108, 2014 WL
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`4206871, at *4 (E.D. Mich. Aug. 25, 2014) (granting motion in limine to preclude party ‟from
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`raising additional claim Constructions”); Toshiba Corp. v. Imation Corp., No. 09-CV-305-SLC,
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`18
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`Microchip et al. Ex. 1014-18
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 19 of 24
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`2013 WL 1248633, at *5 (W.D. Wis. Mar. 26, 2013), supplemented, No. 09-CV-305-SLC, 2013
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`WL 7157854 (W.D. Wis. Apr. 5, 2013) (‟Accordingly, Toshiba's motion in limine to exclude from
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`trial any non-infringement argument or evidence inconsistent with the Federal Circuit's claim
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`construction for the '966 patent, including evidence relating to the operations of bits b6, b5, and
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`b24 in non-accused double-sided discs, is GRANTED.”); Eaton Corp. v. Parker-Hannifin Corp.,
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`No. CIV.A. 00-751-SLR, 2003 WL 179992, at *1 (D. Del. Jan. 24, 2003) (‟Defendant's motion in
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`limine to preclude certain testimony of Dr. Edward M. Caulfield (D.I.100) is granted to the extent
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`that Dr. Caulfield may not give testimony that is inconsistent with the court's claim construction.”);
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`Avocent Huntsville Corp. v. ClearCube Tech., Inc., No. CV-03-S-2875-NE, 2006 WL 7132021, at
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`*1 (N.D. Ala. July 28, 2006) (‟Avocent's motion in limine to preclude ClearCube ‛from
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`introducing at trial any argument and/or evidence based on claim constructions for the '919 patent
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`or the '997 patent that is different from those adopted by the Court in its March 15, 2006 Markman
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`claim construction order’ (doc. no. 218) is GRANTED”); Transcript of Proceedings at 3:19-22,
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`Microscan Sys., Inc. v. Cognex Corp., No. 1-14-cv-06952-JSR (S.D.N.Y. Apr. 28, 2015) (No. 164)
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`(‟With respect to the motion to preclude evidence or argument that contravenes the Court's claim
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`construction … that motion is granted.”).
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`‟Claim terms that are not construed have their ordinary meaning.” Music Choice v.
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`Stingray Digital Grp. Inc., No. 2:16-cv-00586-JRG-RSP, 2019 WL 8110069, at *4 (E.D. Tex.
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`Nov. 19, 2019) (quoting Ericsson Inc. v. TCL Commc'n Tech. Holdings, Ltd., No. 2:15-CV-00011-
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`RSP, 2017 WL 5137401, at *17 (E.D. Tex. Nov. 4, 2017)). ‟The ordinary meaning of a claim term
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`is given after reading the entire patent and from the perspective of one of ordinary skill in the art at
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`the time of the invention.” MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-CV-5341
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`YGR, 2014 WL 971765, at *2 (N.D. Cal. Mar. 5, 2014); see Phillips, 415 F.3d at 1312. Therefore,
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`if the Court did not construe a term, the Court should preclude NCR’s witnesses from construing
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`19
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`Microchip et al. Ex. 1014-19
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`Case 6:19-cv-00513-ADA Document 91 Filed 04/02/21 Page 20 of 24
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`the claim terms or from offering any interpretation other than the ordinary meaning from the
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`perspective of a person of ordinary skill in the art at the time the inventions were made. See Ziilabs
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`Inc., Ltd. v. Sams