`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`
`HUAWEI DEVICE USA INC. ET AL.,
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`
`Defendants.
`
`
`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`FILED UNDER SEAL
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`APPLE, INC.,
`
`
`Defendant.
`
`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`
`
`AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTIONS IN LIMINE
`FOR THE AGIS SOFTWARE DEVELOPMENT LLC V. APPLE INC. TRIAL
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”) hereby submits its
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`Motions in Limine to prevent Defendant Apple Inc. (“Apple” or “Defendant”) from introducing
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`improper evidence and characterizations at trial.
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`1.
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`MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`TESTIMONY OR EVIDENCE RELATED TO AGIS’S FINANCES
`
`AGIS moves for an order precluding Apple from introducing any argument, reference,
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`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
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`regarding Plaintiff’s finances, or the finances of its parent company, predecessors-in-interest, or
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`related entities. Testimony, evidence, and argument regarding Plaintiff’s financial condition
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`(such as the revenues, expenses, profits, losses, assets, liabilities, and stockholders’ equity of
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`AGIS or its affiliated companies), other than a financial valuation of the asserted patents, are
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`irrelevant and should be prohibited under Federal Rules of Evidence 401 and 402. Such
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 2 of 18 PageID #: 19079
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`evidence should also be excluded under Federal Rule of Evidence 403, as any relevance would
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`be substantially outweighed by the dangers of misleading and confusing the jury, and of unfair
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`prejudice to AGIS.
`
`2.
`
`MOTION IN LIMINE TO PRECLUDE THE USE OF DEROGATORY,
`DISPARAGING, AND/OR PEJORATIVE REFERENCES ABOUT NON-
`PRACTICING ENTITIES INCLUDING AGIS SOFTWARE DEVELOPMENT
`LLC AND AGIS, INC.
`
`Only terms whose probative value outweighs unfair prejudicial implications should be
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`permitted to be used at trial. See, e.g., Personalized User Model, L.L.P. v. Google Inc., No. 09-
`
`525-LPS, 2014 WL 807736, at *3 (D. Del. Feb. 27, 2014) (granting motion in limine to preclude
`
`use of “the term ‘patent troll’ or other similar pejorative terms”); Intellectual Ventures I LLC v.
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`Symantec Corp., No. 10-1067-LPS, 2015 WL 82052, at *1 (D. Del. Jan. 6, 2015) (holding
`
`defendant may not refer to plaintiff as a “patent troll . . . as such disparagement is irrelevant”);
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`Rembrandt Wireless Techs. LP v. Samsung Electrs. Co., Ltd., No. 2:13-CV-213-JRG-RSP, 2015
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`WL 627430, at *1 (E.D. Tex. Jan. 31, 2015) (precluding defendants from making derogatory,
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`disparaging, and/or pejorative references to plaintiff, including “patent troll” or other similar
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`terms); Mobile Telecomms. Techs., LLC v. Zte (USA) Inc., No. 2:13-CV-946-JRG, 2016 WL
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`8260584, at *3 (E.D. Tex. July 22, 2016). Accordingly, AGIS moves for an order precluding
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`Apple from making prejudicial statements at trial about AGIS Software Development LLC and
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`AGIS, Inc. as non-practicing entities. Non-exhaustive examples of such references include the
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`terms (1) “patent troll,” (2) “pirate,” (3) “patent assertion entity,” (4) “non-practicing entity,”
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`(5) “NPE,” (6) “shell corporation,” (7) “privateer,” (8) “bounty hunter,” (9) “bandit,” (10) “paper
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`patent,” (11) “stick up,” (12) “shakedown,” (13) “playing the lawsuit lottery,” (14) “corporate
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`shell game,” (15) “company that doesn’t make anything,” (16) “company that doesn’t sell
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`anything,” (17) “company that doesn’t do anything,” (18) “toll collector,” (19) “being in the
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`2
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 3 of 18 PageID #: 19080
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`business of filing lawsuits,” (20) “engaging in a litigation-based licensing program,”
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`(21) “litigious,” or any other suggestion that it is inappropriate for AGIS to bring its patent
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`claims in Court. See, e.g., Rembrandt, 2015 WL 627430, at *1 (precluding “patent troll,”
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`“pirate,” “bandit,” “paper patent,” “stick up,” “shakedown,” “playing the lawsuit lottery,”
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`“patent assertion entity,” “company that doesn’t make anything,” and “company that doesn’t sell
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`anything,” among other pejorative terms); Mobile Telecomms., 2016 WL 8260584, at *3
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`(precluding “toll collector,” “being in the business of filing lawsuit,” and “any other ad hominem
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`attack on the business practices of MTel or any pejorative reference to MTel or its
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`representatives, affiliates or employees”).
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`3.
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`MOTION IN LIMINE TO PRECLUDE DISPARAGING THE UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`AGIS moves for an order preventing Apple from disparaging the United States Patent
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`and Trademark Office (“PTO”), suggesting that the PTO is prone to error, not diligent, or not
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`competent, and from arguing that the U.S. patent system is flawed and requires reform.
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`Generalized, unsupported indictments of the PTO and the patent system are irrelevant, serve no
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`legitimate purpose at trial, confuse juries, are highly prejudicial, and should be excluded.
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`Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-401-JRG-RSP, 2014 WL 11515642, at *1
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`(E.D. Tex. Dec. 10, 2014) (granting motion “to preclude Defendants from offering any
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`argument, evidence, testimony, insinuation, or reference regarding the workload of the PTO (or
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`its examiners), any attempt to disparage the PTO (or its examiners)”); DNT, LLC v. Sprint
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`Spectrum, LP, No. 3:09-CV-21, 2010 WL 582164, at *4 (E.D. Va. Feb. 12, 2010) (excluding
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`from trial as inappropriate, anything tending to disparage the patent and trademark office “which
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`the court took to mean either a negative, direct, or individualized attack on the patent examiner,
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`performance, or a generalized attack on the entire PTO.”); Bright Response, LLC v. Google Inc.,
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`3
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 4 of 18 PageID #: 19081
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`No. 2:07-CV-371-CE, 2010 WL 11057072, at *1 (E.D. Tex. Jul. 30, 2010) (“Defendants may not
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`speculate about the time spent reviewing the ’947 patent’s application or discuss the average
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`time the PTO spends reviewing patent applications. Further, the parties may not state or imply
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`the PTO examiners were incompetent.”); EZ Dock, Inc. v. Schafer Sys., Inc., No. 98-2364
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`(RHK/AJB), 2003 WL 1610781, at *13 (D. Minn. Mar. 8, 2003) (“As for assertions that the PTO
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`and its examiners are not diligent or are prone to error, the Court can find no relevance in either
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`evidence to that effect or argument.”); Tap Pharm. Prods., Inc. v. Owl Pharms., LLC, No. 1:99-
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`CV-2715, 2003 WL 25695241, at *1 (N.D. Ohio Feb. 18, 2003) (“Testimony . . . about the
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`relative shortage of patent examiners at the PTO is inadmissible. The only purpose such
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`testimony would serve would be to undermine the presumption of validity about the patents-in-
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`suit.”) (internal citation omitted); Bausch & Lomb, Inc. v. Alcon Labs., Inc., 79 F. Supp. 2d 252,
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`255–56 (W.D.N.Y. 2000) (the only purpose served by offering disparaging evidence about the
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`PTO is to “invit[e] the jury to speculate about the possible defects, errors or omissions in the
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`application process that led to the issuance of the patent[s]-in-suit,” thereby undermining the
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`patents’ presumption of validity; “generalized testimony about ‘problems’ in the PTO is not
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`admissible”); Fed. R. Evid. 401, 402, 403.
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`4.
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`MOTION IN LIMINE TO PRECLUDE APPLE FROM REFERENCING
`PENDING INTER PARTES REVIEW PROCEEDINGS OR SUCCESS RATES OF
`SUCH PROCEEDINGS
`
`AGIS moves for an Order precluding Apple from introducing any argument, reference,
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`evidence, testimony (including expert testimony), or eliciting any testimony concerning (1) the
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`IPR proceedings filed by Apple and Google (regardless of whether they have been denied or
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`granted), (2) the percentages of patents that are invalidated in re-exams or inter partes review, or
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`(3) the quality of the PTO’s examination process. The mention of IPR proceedings would be
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`prejudicial because a jury would be influenced by the existence of the pending proceedings when
`4
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 5 of 18 PageID #: 19082
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`making its own validity determination. See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331,
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`1343 (Fed. Cir. 2009) (“The non-final re-examination determinations were of little relevance to
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`the jury’s independent deliberations of the factual issues underlying the question of obviousness.
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`In contrast, the risk of jury confusion if evidence of the non-final [PTAB] proceedings were
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`introduced was high.”). Apple and Google cumulatively filed 15 IPRs against the Patents in
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`Suit. While 11 of those IPRs have been denied institution, with all five petitions filed against the
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`’251 Patent denied in full, reference to either the denials or the grants of IPRs would be
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`confusing to a jury and the prejudicial potential of this evidence substantially outweighs any
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`probative value it may have. Fed R. Evid. 403. See also Ivera Med. Corp. v. Hospira, No. 14-
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`cv-1345-H-RBB, 2015 WL 11529819, at *1 (S.D. Cal. July 21, 2015).
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`Statements regarding the percentages of patents that are invalidated in re-examinations or
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`inter partes review or the quality of the USPTO’s examination process are irrelevant and unfairly
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`prejudicial or distracting from the relevant standard. See Applied Materials, Inc. v. Advanced
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`Semiconductor Materials Am., Inc., No. C 92-20643 RMW, 1995 WL 261407, at *3 (N.D. Cal.
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`Apr. 25, 1995) (finding irrelevant and inappropriate testimony about “overwork, quotas, awards
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`or promotions at the Patent Office . . . or insinuating that the Patent Office does not do its job
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`properly”); Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL
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`12622055, at *2 (N.D. Cal. Mar. 19, 2015) (“Motorola will not be allowed to make generalized
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`comments about the quality of the PTO’s examination process or otherwise insinuate that, as a
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`general matter, the PTO does not do its job properly.”). The law mandates that patents are
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`presumed valid, but may be found invalid if proved by clear and convincing evidence. 35 U.S.C.
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`§ 282; Microsoft Corp. v. l4l Ltd. P’ship, 564 U.S. 91, 102 (2011); NetAirus Techs., LLC v.
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`Apple, Inc., No. LA CV10-03257 JAK (Ex), 2012 WL 12884837, at *2 (C.D. Cal. Feb. 27,
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`5
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 6 of 18 PageID #: 19083
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`2012); Ryko Mfg. Co. v. Nu-Star, Inc., No. 4-89-669, 1990 WL 290148, at *2 (D. Minn. Sept. 19,
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`1990). Accordingly, Apple should be precluded from mentioning any pending IPRs and from
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`otherwise commenting on the success rates of PTO proceedings or the quality of the examination
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`process.
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`5.
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`MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`EVIDENCE OR TESTIMONY REGARDING UNRELATED LITIGATION
`INCLUDING VERDICTS
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`
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`In the present Action, Apple seeks to introduce evidence regarding an unrelated case,
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`Advanced Ground Information Systems, Inc. v. LIFE360, Inc., that took place in the Southern
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`District of Florida (the “Life360 Litigation”), and involved a different plaintiff, different asserted
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`patents, different accused products, and an unrelated defendant. Specifically, Apple has
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`designated deposition and trial testimony from that case, as well as included pleadings from that
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`case on its exhibit list. . The Life360 Litigation evidence and testimony are wholly irrelevant to
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`the present Action. Even if the Court should determine that evidence regarding the Life360
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`Litigation had some relevance here, it still should be excluded because its admission would be
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`unfairly prejudicial to AGIS and would also likely confuse and/or mislead the jury. Moreover,
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`Apple had a full and fair opportunity to pursue discovery from Life360, but did not conduct any
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`depositions of anyone related to Life360. Accordingly, all testimony, evidence, or argument
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`from the Life360 Litigation, including the evidence identified in Apple’s pretrial disclosures,
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`should be excluded under Rules 402 and 403 of the Federal Rules of Evidence.
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`a. The testimony, evidence, arguments, and results of the LIFE360 Litigation are not
`relevant to the issues in this Action.
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`Courts routinely exclude references to prior lawsuits on relevance grounds. See, e.g.,
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`
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`Respironics, Inc. v. Invacare Corp., 303 F. App’x 865, 877 (Fed. Cir. 2008) (affirming District
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`Court’s exclusion of evidence related to one device on relevance grounds under FRE 402
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`6
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 7 of 18 PageID #: 19084
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`because the sole issue at trial was infringement by a separate device which operated differently);
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`Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1307-08 (Fed. Cir. 2011)
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`(upholding District Court’s exclusion under FRE 403 of evidence and references during trial to
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`prior litigation, even though the prior litigation allegedly involved related infringement claims);
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`Stafford v. Lamorak Ins. Co., No. 18-60160, 2018 WL 5099628, at *3 (5th Cir. Oct. 18, 2018)
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`(upholding trial court’s decision to grant motion in limine that excluded evidence of a second
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`lawsuit because such evidence was “not relevant to the instant litigation and could mislead or
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`confuse the jury and unduly prejudice Plaintiff”); Brumley Estate v. Iowa Beef Processors, Inc.,
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`704 F.2d 1351, 1356-57 (5th Cir. 1983) (upholding district court’s decision to exclude evidence
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`of two related prior judgments because “the transactions involved in the prior decisions were
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`distinguishable from the transactions involved in this case” and accordingly, introduction of the
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`prior judgments “could quite possibly have led to confusing considerations essentially irrelevant
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`to the task of the present jury: to decide on the facts before it” the issue in the present case).
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`Here, the prior testimony Apple seeks to introduce is not relevant to the present litigation.
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`The prior litigation involved (a) different parties; (b) different patents; and (c) different accused
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`products. Evidence and testimony related to different products and different patents is irrelevant
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`to the task that will be presented to the jury in the current case -- to decide the issues relating to
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`whether Apple infringed the patents-in-suit here. See Brumley, 704 F.2d at 1356-57 (noting
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`evidence of prior judgments that related to transactions that “were distinguishable from the
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`transactions involved in this case” was “irrelevant to the task of the present jury: to decide on the
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`facts before it . . . . ”; see also ICU Med., Inc. v. RyMed Techs., Inc., 752 F. Supp. 2d 486, 490-91
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`(D. Del. 2010) (holding in a patent infringement action that telling the jury a prior court found
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`certain of plaintiff’s patent claims to be invalid “would introduce irrelevant evidence” and would
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`7
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 8 of 18 PageID #: 19085
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`risk unduly prejudicing plaintiff, as the jury was required to make that very same assessment
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`with respect to a different claim of the same asserted patent). Apple’s attempt to introduce
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`irrelevant evidence from a prior litigation that has no bearing on the patents, products, or parties
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`at issue should be rejected by this Court.
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`b. The testimony, evidence, arguments, or results of Life360 Litigation would be
`highly prejudicial and result in confusion if presented to a jury in this Action.
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`Even if this Court determines that the proffered testimony is relevant, it should still be
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`
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`excluded on the grounds that its probative value is substantially outweighed by the significant
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`risk of unfair prejudice to AGIS and confusing or misleading the jury. See Fed. R. Evid. 403.
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`As discussed above, the prior litigation involved different parties, products, and patents. The
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`probative value of such evidence with regard to the separate products and patents at issue in this
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`case, if it exists at all, is low. See, e.g., Brumley, 704 F.2d at 1356 (noting the “questionable
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`probative value” of prior judgments that related to transactions that “were distinguishable from
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`the transactions involved in this case.”). The risk of unfair prejudice or confusing the jury, on
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`the other hand, is high. See id. at 1356-57; see also VirnetX Inc. v. Apple Inc., No. 6:12-CV-855,
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`2016 WL 4063802, at *5 (E.D. Tex. July 29, 2016) (noting that the similarity and complexity of
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`issues between two cases “magnified the risk of deference to Apple I [the prior case] because of
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`jury confusion.”) (italics in original).
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`
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`Apple’s proffered testimony will not only introduce irrelevant and confusing evidence
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`that relates to different products and patents, but it will also open the door for Apple to reference
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`the outcome of the prior litigation, which was adverse to AGIS on infringement. References to a
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`prior, adverse jury verdict will be unfairly prejudicial1 for AGIS, especially when the prior case
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`1 The Advisory Committee Notes to Federal Rule of Evidence 403 provide that “‘Unfair
`prejudice’ within its context means an undue tendency to suggest decision on an improper
`8
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 9 of 18 PageID #: 19086
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`dealt with different products and patents. Such evidence would have a prejudicial and confusing
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`effect. See, e.g., Mendenhall, 5 F.3d at 1575 (upholding trial court’s decision to exclude
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`evidentiary record from related case involving the same patents-in-suit because the “possibility
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`of prejudice to the defendant and confusion of the jury was very high it . . . . ”); Datatreasury
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`Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 WL 11468934, at *19 (E.D. Tex. Oct. 5,
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`2010) (granting defendants’ motion in limine to exclude any discussion surrounding the outcome
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`of prior litigation because it would be “unfairly prejudicial” regardless of “the similarities
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`between accused instrumentalities”); Coleman Motor Co. v. Chrysler Corp., 525 F.2d 1338,
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`1351 (3d Cir. 1975) (holding that references to a prior verdict were prejudicial because the
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`“admission of a prior verdict creates the possibility that the jury will defer to the earlier result
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`and thus will, effectively, decide a case on evidence not before it” and that a jury is likely to give
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`a prior verdict “more weight than it warrants”); VirnetX, 2016 WL 4063802, at *7 (finding that
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`the “confusion and unfair prejudice associated with” prior jury verdicts relating to two products
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`“spilled over into the jury’s finding of infringement of iMessage” even though “iMessage was
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`not part of Apple I [the prior case].”).
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`Accordingly, even if this Court determines that the proffered testimony is relevant, it
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`should still be excluded. Its probative value is substantially outweighed by the significant risk of
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`confusing or misleading the jury as the products and patents at issue here are different than those
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`from the prior litigation. The testimony’s probative value is further outweighed by the
`
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`basis . . . .” See Fed. R. Evid. 403, Advisory Committee Notes. One such “improper basis”
`is when a jury bases its decision on other than the facts and evidence in the case before it --
`such as evidence or a verdict from a prior case. See, e.g., Mendenhall v. Cedarapids, Inc., 5
`F.3d 1557, 1568 (Fed. Cir. 1993) (noting that “Here the improper basis and the undue
`tendency to suggest a decision on that basis is the prior decision by the federal district court
`in Tennessee and affirmance of that decision by the federal circuit, and the jury’s tendency to
`follow those decisions on the validity and infringement issues.”).
`9
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 10 of 18 PageID #: 19087
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`significant risk of unfair prejudice to AGIS that will stem from Apple’s references to a prior,
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`adverse jury verdict related to different patents and different accused products. This Court
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`should exclude such prejudicial and confusing evidence.
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`6.
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`MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`TESTIMONY, EVIDENCE, OR ARGUMENT RELATED TO LITIGATION
`FUNDING
`AGIS moves for an order precluding Apple from introducing any argument, reference,
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`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
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`regarding litigation funding, fees incurred by either party, the retention or fee agreements of any
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`party’s counsel in this case, and any fees obtained or potentially obtained by counsel as a result
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`of this case. Fed. R. Evid. 401, 402, 403; CardSoft, Inc. v. Verifone Sys., Inc., No. 2:08-CV-
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`00098-RSP, 2012 WL 1995302, at *1 (E.D. Tex. Jun. 4, 2012) (Payne, J.) (preventing
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`introduction of evidence, testimony, or reference to attorneys representing plaintiff on a
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`contingent-fee basis). Introduction of such evidence is irrelevant and would be unfairly
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`prejudicial. See SSL Services, LLC v. Citrix Systems, Inc., No. 2:08-cv-158-JRG, 2012 WL
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`12906091 at *1 (May 24, 2012) (Gilstrap, J.) (precluding parties from “any reference to investors
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`in the litigation, litigation financing or attorney’s fee arrangements”); Rembrandt Wireless v.
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`Samsung Elec., 2015 WL 627430, at *2 (Payne, J.) (granting similar motion in limine).
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`7.
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`MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`TESTIMONY, EVIDENCE, OR ARGUMENT RELATED TO POTENTIAL
`TARGETS FOR LITIGATION
`
`AGIS moves for an order precluding Apple from introducing any argument, reference,
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`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony for
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`the purpose of showing that AGIS sued or did not sue any other parties, the number of entities
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`AGIS did or did not sue, or which entities AGIS did or did not sue on the Patents-in-Suit. Such
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`statements are irrelevant, would be unfairly prejudicial to AGIS, and would mislead the jury into
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`10
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 11 of 18 PageID #: 19088
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`resolving this case based on factors other than the evidence and the law. See Fed. R. Evid. 402,
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`403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei Device USA Inc., No. 2:16-
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`cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 2.
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`8.
`
`MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`TESTIMONY OR EVIDENCE RELATED TO AGIS’S INTELLECTUAL
`PROPERTY MONETIZATION OR LITIGATION EFFORTS UNRELATED TO
`THE CURRENT LAWSUIT
`
`AGIS moves for an order precluding Apple from introducing any argument, reference,
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`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
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`regarding AGIS’s efforts to monetize patents or engage in litigation other than the present
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`lawsuit. Such evidence and argument has no bearing on the claims and defenses in this case.
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`Accordingly, it has no probative value and would only serve to confuse the jury and prejudice
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`AGIS. Fed. R. Evid. 402, 403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei
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`Device USA Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 3.
`
`9.
`
`MOTION IN LIMINE TO PRECLUDE ANY REFERENCES, EVIDENCE,
`SUGGESTION, TESTIMONY OR ELICITATION OF ANY TESTIMONY BY
`APPLE COMPARING ANY ACCUSED PRODUCT TO ANY PURPORTED
`PRIOR ART DEVICE, A PRIOR ART PATENT, OR ANY OTHER PRIOR ART
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`Apple should be precluded from any reference, evidence, suggestion, testimony, or
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`elicitation of any testimony comparing any Accused Product or alleged commercial embodiment
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`to any purported prior art device, a prior art patent, or any other prior art. It is a fundamental
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`tenet of United States patent law that the claims of a patent, not an accused product, are to be
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`compared to the prior art when analyzing validity. Accordingly, any purported defense of
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`“practicing the prior art” is not a legitimate defense under United States patent law:
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`Our law requires patent challengers to prove invalidity by clear and convincing
`evidence. Where an accused infringer is clearly practicing only that which was in
`the prior art, and nothing more, and the patentee’s proffered construction reads on
`the accused device, meeting this burden of proof should not prove difficult.
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`11
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 12 of 18 PageID #: 19089
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`Nevertheless, accused infringers are not free to flout the requirement of
`proving invalidity by clear and convincing evidence by asserting a
`‘practicing prior art’ defense to literal infringement under the less stringent
`preponderance of the evidence standard. Likewise, mere proof that the prior art
`is identical, in all material respects, to an allegedly infringing product cannot
`constitute clear and convincing evidence of invalidity. Anticipation requires a
`showing that each element of the claim at issue, properly construed, is found in a
`single prior art reference. [I]t is the presence of the prior art and its relationship to
`the claim language that matters for invalidity.
`
`Zenith Elecs. Corp. v. PDI Commc’n. Sys., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (citing Tate
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`Access Floors, Inc. v Interface Architectural Res., Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002))
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`(emphasis added).
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`Such references have no relevance to any claim or defense in this case. Fed. R. Evid.
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`402. If relevant and/or admissible, the probative value of any such matter would be greatly
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`outweighed by the danger of unfair prejudice, confusion of the issues, and/or misleading the jury.
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`Fed. R. Evid. 403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei Device USA
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`Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 3.
`
`10. MOTION IN LIMINE TO PRECLUDE ANY REFERENCE, EVIDENCE,
`SUGGESTION, TESTIMONY, OR ELICITATION OF ANY TESTIMONY BY
`APPLE REGARDING AGIS’S ELECTION OF PATENT CLAIMS TO
`STREAMLINE THIS LITIGATION
`
`Apple should be precluded from any reference, evidence, suggestion, testimony, or
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`elicitation of any testimony regarding Plaintiff’s election to streamline this litigation for ease of
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`presentation to the jury, or in light of the Court’s time limits for trial, by dismissing any claims
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`prior to or during trial. The fact that AGIS may elect to simplify the issues and evidence to be
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`presented to the jury has no impact on whether Apple infringes any remaining claim and is
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`therefore irrelevant. Fed. R. Evid. 402, 403.
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 13 of 18 PageID #: 19090
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`11. MOTION IN LIMINE TO PRECLUDE ANY REFERENCE, EVIDENCE,
`SUGGESTION, TESTIMONY, OR ELICITATION OF ANY TESTIMONY BY
`APPLE THAT PLAINTIFF ENGAGED IN “FORUM SHOPPING” OR
`“LITIGATION ABUSE,” OR THAT THIS DISTRICT IS A POPULAR VENUE
`FOR PATENT HOLDERS
`
`AGIS requests that Apple be precluded from any reference, evidence, suggestion,
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`testimony, or elicitation of any testimony alleging that AGIS engaged in “forum shopping” or
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`“litigation abuse,” or that the Eastern District of Texas is a popular venue for patent holders.
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`Any allegations of forum shopping or litigation abuse constitute irrelevant posturing and, if
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`conveyed to the jury, are baseless accusations intended to paint AGIS as a bad actor. Because
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`those assertions are irrelevant and prejudicial, Apple should be ordered to refrain from making
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`any such allegations in front of the jury. Any reference to forum shopping, motivations to file in
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`the Eastern District of Texas, litigation abuse, or similar allegations should be excluded under
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`Federal Rules of Evidence 402 and 403. In addition, any reference to the fact that the Eastern
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`District of Texas is a popular venue for patent holders would be unduly prejudicial and would be
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`distracting to the jury. See, e.g., Droplets, 2014 WL 11515642, at *1; Order on Motions in
`
`Limine, Semcon IP Inc. v. Huawei Device USA Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex.
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`Dec. 15, 2017), ECF 490 at p. 4.
`
`12. MOTION IN LIMINE TO PRECLUDE APPLE FROM INTRODUCING
`EVIDENCE OF PRIOR ART NOT INCLUDED IN APPLE’S FINAL ELECTION
`OF PRIOR ART.
`
`AGIS requests that Apple be precluded from any reference, evidence, suggestion,
`
`
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`testimony, or elicitation of any testimony relating to prior art that was not included in Apple’s
`
`final election. During the parties’ meet and confer, Apple indicated that it may seek to introduce
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`evidence of prior art for purposes of showing the state of the art of the invention. However, such
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`evidence would be highly prejudicial to AGIS because a jury could easily mistake the evidence
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 14 of 18 PageID #: 19091
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`as invalidating prior art rather than state of the art evidence. Accordingly, such evidence should
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`be precluded pursuant to Federal Rule of Evidence 403. Indeed, for this reason, similar motions
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`in limine have routinely been granted in this district. See, e.g., Smartflash LLC v. Apple Inc., No.
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`6:13-CV-447-JRG-KNM, 2015 WL 11089593, at *1 (E.D. Tex. Jan. 29, 2015) (granting motion
`
`in limine to preclude evidence of prior art not included in Apple’s final election); Core Wireless
`
`Licensing S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963, at *2
`
`(E.D. Tex. July 12, 2016), report and recommendation adopted sub nom. Core Wireless
`
`Licensing S.A.R.L v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4719791 (E.D. Tex.
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`Sept. 8, 2016); Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-CV-744-JRG-RSP,
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`2016 WL 3618831, at *4 (E.D. Tex. Mar. 1, 2016) (granting motion in limine to exclude “any
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`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”). Evidence relating to any such non-elected prior
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`art should be precluded.
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`For the foregoing reasons, Plaintiff’s Motions in Limine should be granted.
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`CONCLUSION
`
`Dated: January 14, 2019
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`BROWN RUDNICK LLP
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`
`
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 15 of 18 PageID #: 19092
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`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
`
`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 16 of 18 PageID #: 19093
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`CERTIFICATE OF CONFERENCE
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`This is to certify that counsel for Plaintiff AGIS Software Development LLC met and
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`conferred with counsel for Defendant Apple Inc. in compliance with LR CV-7(h) in regards to its
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`Motions in Limine. While the parties have reached an impasse, the parties have agreed to meet
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`and confer again prior to the deadline for responses to Motions in Limine in order to attempt to
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`come to an agreement regarding certain of the parties’ respective motions.
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`
`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`Case 2:17-cv-00513-JRG Document 293 Filed 01/14/19 Page 17 of 18 PageID #: 19094
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`The undersig