Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 1 of 10 PageID #: 32534
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`WI-LAN INC.,
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`
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`v.
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`HTC CORP., et al.,
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`
`
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`
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`Plaintiff,
`
`Defendants.
`
`
`
`The Court held pretrial hearings on September 26, October 1, 2013, and October 10, and
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`heard argument on Defendants’ Motion to Strike Portions of the Expert Reports of Alexander
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`Haimovich, Ph.D. and Geoffrey Orsak, Ph.D. (Dkt. No. 457), Defendants’ Joint Motion to Strike
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`the Testimony of and Preclude the Opinion of Plaintiff’s Expert Jeffrey T. Prince Regarding His
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`Surveys on Consumer Preference (Dkt. No. 495), Wi-LAN’s Daubert Motion to Exclude the
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`Report and Testimony of Matthew B. Shoemake Regarding Issues Related to the IEEE 802.11
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`Standards Process (Dkt. No. 497), Plaintiff Wi-LAN’s Daubert Motion to Exclude the Report and
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`Testimony of Matthew B. Shoemake Regarding patents Relevant, Related, or Essential to the
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`IEEE 802.11n Standard and Patent Search Related Thereto (Dkt. No. 498), Plaintiff’s Motion to
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`Exclude and Strike Portions of the Expert Report and Testimony of Dr. Kevin J. Negus on
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`FCC-related Issues (Dkt. No. 499), Defendants’ Joint Motion to Strike and Preclude the Expert
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`Reports and Testimony of Dr. Michael P. Akemann, Dr. David J. Teece, and Richard J. Holleman
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`on FRAND (Dkt. No. 500), Defendants’ Daubert Motion to Exclude the Report and Testimony of
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`Michael P. Akemann Regarding Damages (Dkt. No. 501), Plaintiff’s Motion to Exclude and Strike
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`1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
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` CASE NO. 2:11-CV-68-JRG
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` CONSOLIDATED WITH
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` CASE NO. 2:12-cv-600-JRG
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`§§§§§§§§§§
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`PRETRIAL ORDER
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`
`
`WI-LAN INC.,
`
`
`
`v.
`
`HTC CORP., et al.,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`The Court held pretrial hearings on September 26, October 1, 2013, and October 10, and
`
`heard argument on Defendants’ Motion to Strike Portions of the Expert Reports of Alexander
`
`Haimovich, Ph.D. and Geoffrey Orsak, Ph.D. (Dkt. No. 457), Defendants’ Joint Motion to Strike
`
`the Testimony of and Preclude the Opinion of Plaintiff’s Expert Jeffrey T. Prince Regarding His
`
`Surveys on Consumer Preference (Dkt. No. 495), Wi-LAN’s Daubert Motion to Exclude the
`
`Report and Testimony of Matthew B. Shoemake Regarding Issues Related to the IEEE 802.11
`
`Standards Process (Dkt. No. 497), Plaintiff Wi-LAN’s Daubert Motion to Exclude the Report and
`
`Testimony of Matthew B. Shoemake Regarding patents Relevant, Related, or Essential to the
`
`IEEE 802.11n Standard and Patent Search Related Thereto (Dkt. No. 498), Plaintiff’s Motion to
`
`Exclude and Strike Portions of the Expert Report and Testimony of Dr. Kevin J. Negus on
`
`FCC-related Issues (Dkt. No. 499), Defendants’ Joint Motion to Strike and Preclude the Expert
`
`Reports and Testimony of Dr. Michael P. Akemann, Dr. David J. Teece, and Richard J. Holleman
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`on FRAND (Dkt. No. 500), Defendants’ Daubert Motion to Exclude the Report and Testimony of
`
`Michael P. Akemann Regarding Damages (Dkt. No. 501), Plaintiff’s Motion to Exclude and Strike
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`
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
` CASE NO. 2:11-CV-68-JRG
`
` CONSOLIDATED WITH
`
` CASE NO. 2:12-cv-600-JRG
`
`§§§§§§§§§§
`
`PRETRIAL ORDER
`
`
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 2 of 10 PageID #: 32535
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`Portions of the Expert Report of W. Christopher Bakewell and to Preclude Expert Testimony (Dkt.
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`No. 504), Plaintiff’s Daubert Motion to Exclude Certain Portions of the Invalidity Reports of
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`Matthew Shoemake and Anthony Acampora (Dkt. No. 505), Defendants’ Motion for Partial
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`Summary Judgment on the Invention Dates of the Patents-in-Suit (Dkt. No. 502), Plaintiff’s
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`Motions in Limine (Dkt. No. 518), Defendants’ Motions in Limine (Dkt. No. 513), and the parties
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`October 9, 2013 Joint Notice of Outstanding Exhibits (Dkt. No. 607). The Court announced its
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`rulings and reasoning into the record. Any clarification and/or modification to such motions, as
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`stated by the Court during such hearing, fully applies to the rulings as stated below, and the ruling
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`set forth herein do not exclude or supplant any clarification, reasoning, and/or modification as
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`stated in the record.
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`I.
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`Daubert Motions and Motions for Summary Judgment
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`Defendants’ Motion to Strike Portions of the Expert Reports of Alexander Haimovich,
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`Ph.D. and Geoffrey Orsak, Ph.D. (Dkt. No. 457) is DENIED, pursuant to the Court’s reasoning as
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`fully set forth in the record.
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`Defendants’ Joint Motion to Strike the Testimony of and Preclude the Opinion of
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`Plaintiff’s Expert Jeffrey T. Prince Regarding His Surveys on Consumer Preference (Dkt. No.
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`495) is DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Wi-LAN’s Daubert Motion to Exclude the Report and Testimony of Matthew B.
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`Shoemake Regarding Issues Related to the IEEE 802.11 Standards Process (Dkt. No. 497) is
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`DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Plaintiff Wi-LAN’s Daubert Motion to Exclude the Report and Testimony of Matthew B.
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`Shoemake Regarding patents Relevant, Related, or Essential to the IEEE 802.11n Standard and
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`2
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 3 of 10 PageID #: 32536
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`Patent Search Related Thereto (Dkt. No. 498) is DENIED, pursuant to the Court’s reasoning as
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`fully set forth in the record.
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`Plaintiff’s Motion to Exclude and Strike Portions of the Expert Report and Testimony of
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`Dr. Kevin J. Negus on FCC-related Issues (Dkt. No. 499) is DENIED, except that Dr. Negus may
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`not engage in speculation regarding the technological or commercial success or failure of
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`Wi-LAN, pursuant to the Court’s reasoning as fully set forth in the record.
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`Defendants’ Joint Motion to Strike and Preclude the Expert Reports and Testimony of Dr.
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`Michael P. Akemann, Dr. David J. Teece, and Richard J. Holleman on FRAND (Dkt. No. 500) is
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`DENIED-AS-MOOT, pursuant to the Court’s reasoning as fully set forth in the record.
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`Defendants’ Daubert Motion to Exclude the Report and Testimony of Michael P.
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`Akemann Regarding Damages (Dkt. No. 501) is DENIED, pursuant to the Court’s reasoning as
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`fully set forth in the record.
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`Plaintiff’s Motion to Exclude and Strike Portions of the Expert Report of W. Christopher
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`Bakewell and to Preclude Expert Testimony (Dkt. No. 504) is GRANTED-IN-PART to exclude
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`Mr. Bakewell’s analysis of the Trip Report, but otherwise DENIED, pursuant to the Court’s
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`reasoning as fully set forth in the record.
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`Plaintiff’s Daubert Motion to Exclude Certain Portions of the Invalidity Reports of
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`Matthew Shoemake and Anthony Acampora (Dkt. No. 505) is DENIED, pursuant to the Court’s
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`reasoning as fully set forth in the record.
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`Defendants’ Motion for Partial Summary Judgment on the Invention Dates of the
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`Patents-in-Suit (Dkt. No. 502) is DENIED, pursuant to the Court’s reasoning as fully set forth in
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`the record.
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`3
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 4 of 10 PageID #: 32537
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`II.
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`Plaintiff’s Motions in Limine (Dkt. No. 518) and Defendants’ Motions in Limine (Dkt.
`No. 513).
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`The Court reminds the parties that its ruling on a motion in limine is not a definitive ruling
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`on the admissibility of evidence. An order granting a motion in limine is an order requiring the
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`offering party to approach the bench and seek leave from the Court prior to mentioning the matter
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`covered by the order to the jury or the jury panel during voir dire. Similarly, an order denying a
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`motion in limine does not relieve a party from making an objection at trial.
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`Plaintiff’s Motion in Limine No. 1 (Private lives: religion, politics, marital status, family
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`lives, recreation, spending or finances) is GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 2 (Profane, sexual, inflammatory, off-color or offensive
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`statements in exhibits or testimony) is GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 3 (Testimony or evidence from or about a putative fact
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`witness who was not timely disclosed) is DENIED-AS-MOOT, pursuant to the parties’
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`agreement as stated on the record.
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`Plaintiff’s Motion in Limine No. 4 (Court orders, argument, evidence or testimony that is
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`contrary to the Court’s claim constructions or in support of a position previously rejected by the
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`Court) is DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Plaintiff’s Motion in Limine No. 5 (Outcome-oriented payments from prior litigations
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`received by any Wi-LAN witness) is GRANTED, pursuant to the Court’s reasoning as fully set
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`forth in the record.
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`Plaintiff’s Motion in Limine No. 6 (Other litigations not involving the patents-in-suit, or
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`foreign counterparts) is GRANTED, pursuant to the Court’s reasoning as fully set forth in the
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`4
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 5 of 10 PageID #: 32538
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`record.
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`Plaintiff’s Motion in Limine No. 7 (Interpretive evidence from authors or sponsors of
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`prior art references) is DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`However, the parties are reminded that fact witnesses are prohibited from offering opinion
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`testimony within the purview of an expert witness pursuant to Federal Rule of Evidence 702.
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`Plaintiff’s Motion in Limine No. 8 (Wi-LAN being alleged to be an “NPE” or other
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`derogatory or misleading term) is GRANTED-IN-PART as to preventing Defendants from
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`characterizing Plaintiff as a “shell company” or other pejorative term that attempts to slur or
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`negatively characterize any of the named parties or witnesses. The motion is DENIED-IN-PART
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`with respect to factual statements, including statements that Plaintiff is a non-manufacturer or a
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`non-practicing entity (a/k/a an “NPE”).
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`Plaintiff’s Motion in Limine No. 9 (The Sunlight Report, TechIPm Report or Patent Café
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`valuation) is DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Plaintiff’s Motion in Limine No. 10 (The Qualcomm “patent wall”) is GRANTED,
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`pursuant to the Court’s reasoning as fully set forth in the record. The parties are prohibited from
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`publishing the photograph or picture of the “patent wall” to the jury, but may identify Qualcomm
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`as an owner of many patents.
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`Plaintiff’s Motion in Limine No. 11 (Patents other than the patents-in-suit) is DENIED,
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`pursuant to the Court’s reasoning as fully set forth in the record.
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`Plaintiff’s Motion in Limine No. 12 (Reference in the jury’s presence to the pending
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`reexamination proceedings) is GRANTED, pursuant to the Court’s reasoning as fully set forth in
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`the record.
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`5
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 6 of 10 PageID #: 32539
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`Plaintiff’s Motion in Limine No. 13 (Letters of assurance, FRAND commitments,
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`obligations, or conduct relating to any industry standard not asserted here, e.g., 802.11(b)) is
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`GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 14 (Sworn testimony from other litigations for any
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`purpose other than impeachment) is GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 15 (Prior testimony of Dr. David Teece, Wi-LAN’s
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`FRAND expert, regarding any Georgia-Pacific damages analysis) is GRANTED, pursuant to the
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`Court’s reasoning as fully set forth in the record.
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`Plaintiff’s Motion in Limine No. 16 (The royalty rates or terms of any patent pool) is
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`DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Plaintiff’s Motion in Limine No. 17 has been WITHDRAWN.
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`Plaintiff’s Motion in Limine No. 18 (Wi-LAN licensing activity not directed to wireless
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`standards, e.g., V-chip or DSL) is GRANTED, pursuant to the Court’s reasoning as fully set forth
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`in the record.
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`Plaintiff’s Motion in Limine No. 19 (No argument, evidence, reference or testimony by
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`any expert witness about the demeanor, state of mind or credibility of any fact witness) is
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`GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 20 (Negus’s interactions with McKool Smith prior to
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`this case) is GRANTED as agreed.
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`Plaintiff’s Motion in Limine No. 21 (Allegedly acceptable non-infringing alternatives
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`that were not identified in discovery) is DENIED, pursuant to the Court’s reasoning as fully set
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`forth in the record.
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`6
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 7 of 10 PageID #: 32540
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`Plaintiff’s Motion in Limine No. 22 has been WITHDRAWN.
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`Defendants’ Motion in Limine No. A (Preclude References to the Clear and Convincing
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`Standard of Proof in Texas Family Code) is GRANTED as agreed.
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`Defendants’ Motion in Limine No. B (Preclude Evidence and Argument Related to
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`Defendants’ Total Product and Non-Accused Component Prices and Revenues and Other Unfairly
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`Prejudicial Numbers) is DENIED, pursuant to the Court’s reasoning as fully set forth in the
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`record.
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`Defendants’ Motion in Limine No. C has been WITHDRAWN.
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`Defendants’ Motion in Limine No. D has been WITHDRAWN.
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`Defendants’ Motion in Limine No. E (Preclude References to Uncorroborated Invention
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`Dates) is GRANTED as agreed.
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`Defendants’ Motion in Limine No. F (Preclude References to Any Alleged Defendants’
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`Joint Defense Agreement) is GRANTED, pursuant to the Court’s reasoning as fully set forth in
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`the record.
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`Defendants’ Motion in Limine No. G (Preclude In-Court References to a Statement
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`Concerning the ’222 Patent in the 1999 Agreement Between Wi-LAN and Non-party Philips
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`Semiconductors, Inc.) is DENIED. This ruling is made consistent with the Court’s disposition of
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`Defendants’ objections regarding Plaintiff’s exhibit PX378, which has been pre-admitted without
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`redactions.
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`Defendants’ Motion in Limine No. H (Preclude Expert Testimony of Michael Akemann
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`With Regard to Surveys) is GRANTED as agreed.
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`Defendants’ Motion in Limine No. I has been WITHDRAWN.
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`7
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 8 of 10 PageID #: 32541
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`Defendants’ Motion in Limine No. J (Preclude References to Defendants’ Alleged
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`Failure to Obtain Opinion of Counsel) is DENIED, pursuant to the Court’s reasoning as fully set
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`forth in the record.
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`Defendants’ Motion in Limine No. K has been WITHDRAWN.
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`Defendants’ Motion in Limine No. L has been WITHDRAWN.
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`Defendants’ Motion in Limine No. M (Preclude Opinion of Plaintiff’s Expert Jeffrey
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`Prince Regarding His Surveys on Consumer Preferences) is DENIED, pursuant to the Court’s
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`reasoning as fully set forth in the record.
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`Defendants’ Motion in Limine No. N has been WITHDRAWN.
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`Defendants’ Motion in Limine No. O (Preclude Opinion of Plaintiff’s Expert Witnesses
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`Alexander Haimovich and Geoffrey Orsak Relating
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`to Secondary Considerations of
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`Non-obviousness) is DENIED, pursuant to the Court’s reasoning as fully set forth in the record.
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`Defendants’ Motion in Limine No. P has been WITHDRAWN.
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`III. Counterclaims and Affirmative Defenses of FRAND
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`Defendants have voluntarily elected to drop their counterclaims and affirmative defenses
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`as to the issue of FRAND. Nonetheless, the parties continue to dispute the impact of such, namely
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`whether Defendants may continue to assert FRAND as a non-affirmative defense in their
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`reasonable royalty analysis or as a “business” defense in the hypothetical negotiation scenario in
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`response to Plaintiff’s evidence on damages.
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`As announced on the record, the Court finds that Defendants have the affirmative burden of
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`proof in this regard and FRAND is not a purely defensive response to Plaintiff’s damages case.
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`Accordingly, the Court finds that the issue of FRAND is an affirmative defense which, in light of
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`8
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 9 of 10 PageID #: 32542
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`Defendants having voluntarily dropped their counterclaims and affirmative defenses as to
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`FRAND, is now out of this case for all purposes. Defendants may not raise the issue of FRAND in
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`response to Wi-LAN’s damages case or for any other purpose in this trial.
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`IV. October 9, 2013 Joint Notice of Outstanding Exhibits (Dkt. No. 607)
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`The Court heard argument on the disputed exhibits listed in the parties’ October 9, 2013
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`Joint Notice of Outstanding Exhibits (Dkt. No. 607) and announced its rulings and reasoning in the
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`record. Any disputed exhibit for which the Court has overruled the opposing party’s objection is
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`deemed pre-admitted. Any exhibit on each side’s exhibit list not specifically objected to at the
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`October 10, 2013 hearing and otherwise contained within the parties’ October 9, 2013 Joint Notice
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`of Outstanding Exhibits is also deemed pre-admitted. As the Court informed the parties at the
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`pretrial hearing, a pre-admitted exhibit will not become part of the record in this case unless it is
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`introduced, published, or otherwise used before the jury at trial. Further, objections not made
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`during the pre-admission process are considered waived and may not be raised during trial.
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`Objections overruled during the pre-admission process are preserved for appeal without being
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`re-urged during the case in chief in the event the underlying exhibit is utilized at trial.
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`V.
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`Trial Procedure
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`Jury Selection is scheduled for 9:00 am on October 15, 2013. The parties each have 30
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`minutes per side for voir dire, and up to 3 minutes of such voir dire time may be used for general
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`high-level background or case introduction purposes. The parties are expressly instructed to
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`refrain from argument during voir dire.
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`Trial is scheduled to begin immediate following jury selection. As the Court has previously
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`instructed, the parties will have 14 hours per side to present their evidence, not including opening
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`9
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`Case 2:11-cv-00068-JRG Document 608 Filed 10/11/13 Page 10 of 10 PageID #: 32543
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`and closing statements. The parties each have 35 minutes per side for opening statements and 40
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`minutes per side for closing statements. Court will use its best efforts to be in chambers and
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`available by 7:30 am each day before the start of evidence to take up any housekeeping matters or
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`late-arriving disputes that might come up during trial. Any deposition clip objections must be
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`brought to the Court’s attention on a rolling basis during the morning hour on the day before such
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`clip is expected to be played at trial. In addition, pre-admitted exhibits used before the jury each
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`day will be identified and their exhibit numbers read into the record the next morning before the
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`jury is brought into the Courtroom.
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`10
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