Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 1 of 21 PageID #: 14879
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HTC CORPORATION,
`
`
`Defendant.
`
`
`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`LG ELECTRONICS INC.,
`
`
`Defendant.
`
`§
`§
`§
`§
`
`
`AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTIONS IN LIMINE
`FOR THE AGIS SOFTWARE DEVELOPMENT LLC V. LG ELECTRONICS INC. TRIAL
`
`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”) hereby submits its
`
`Opposed Motions in Limine to prevent Defendant LG Electronics Inc. (“LG” or “Defendant”)
`
`from introducing improper evidence and characterizations at trial.
`
`1.
`
`MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING TESTIMONY
`OR EVIDENCE RELATED TO AGIS’S FINANCES
`
`AGIS moves for an order precluding LG from introducing any argument, reference,
`
`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
`
`regarding Plaintiff’s finances, or the finances of its parent company, predecessors-in-interest, or
`
`related entities. Testimony, evidence, and argument regarding Plaintiff’s financial condition
`
`(such as the revenues, expenses, profits, losses, assets, liabilities, and stockholders’ equity of
`
`AGIS or its affiliated companies), other than a financial valuation of the asserted patents, are
`
`irrelevant and should be prohibited under Federal Rules of Evidence 401 and 402. Such
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 2 of 21 PageID #: 14880
`
`evidence should also be excluded under Federal Rule of Evidence 403, as any relevance would
`
`be substantially outweighed by the dangers of misleading and confusing the jury, and of unfair
`
`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
`
`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.
`
`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”);
`
`Rembrandt Wireless Techs. LP v. Samsung Electrs. Co., Ltd., No. 2:13-CV-213-JRG-RSP, 2015
`
`WL 627430, at *1 (E.D. Tex. Jan. 31, 2015) (precluding defendants from making derogatory,
`
`disparaging, and/or pejorative references to plaintiff, including “patent troll” or other similar
`
`terms); Mobile Telecomms. Techs., LLC v. Zte (USA) Inc., No. 2:13-CV-946-JRG, 2016 WL
`
`8260584, at *3 (E.D. Tex. July 22, 2016). Accordingly, AGIS moves for an order precluding LG
`
`from making prejudicial statements at trial about AGIS Software Development LLC and AGIS,
`
`Inc. as non-practicing entities. Non-exhaustive examples of such references include the terms
`
`(1) “patent troll,” (2) “pirate,” (3) “patent assertion entity,” (4) “non-practicing entity,”
`
`(5) “NPE,” (6) “shell corporation,” (7) “privateer,” (8) “bounty hunter,” (9) “bandit,” (10) “paper
`
`patent,” (11) “stick up,” (12) “shakedown,” (13) “playing the lawsuit lottery,” (14) “corporate
`
`shell game,” (15) “company that doesn’t make anything,” (16) “company that doesn’t sell
`
`anything,” (17) “company that doesn’t do anything,” (18) “toll collector,” (19) “being in the
`
`2
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 3 of 21 PageID #: 14881
`
`business of filing lawsuits,” (20) “engaging in a litigation-based licensing program,”
`
`(21) “litigious,” or any other suggestion that it is inappropriate for AGIS to bring its patent
`
`claims in Court. See, e.g., Rembrandt, 2015 WL 627430, at *1 (precluding “patent troll,”
`
`“pirate,” “bandit,” “paper patent,” “stick up,” “shakedown,” “playing the lawsuit lottery,”
`
`“patent assertion entity,” “company that doesn’t make anything,” and “company that doesn’t sell
`
`anything,” among other pejorative terms); Mobile Telecomms., 2016 WL 8260584, at *3
`
`(precluding “toll collector,” “being in the business of filing lawsuit,” and “any other ad hominem
`
`attack on the business practices of MTel or any pejorative reference to MTel or its
`
`representatives, affiliates or employees”).
`
`3.
`
`MOTION IN LIMINE TO PRECLUDE DISPARAGING THE UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`AGIS moves for an order preventing LG from disparaging the United States Patent and
`
`Trademark Office (“PTO”), suggesting that the PTO is prone to error, not diligent, or not
`
`competent, and from arguing that the U.S. patent system is flawed and requires reform.
`
`Generalized, unsupported indictments of the PTO and the patent system are irrelevant, serve no
`
`legitimate purpose at trial, confuse juries, are highly prejudicial, and should be excluded.
`
`Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-401-JRG-RSP, 2014 WL 11515642, at *1
`
`(E.D. Tex. Dec. 10, 2014) (granting motion “to preclude Defendants from offering any
`
`argument, evidence, testimony, insinuation, or reference regarding the workload of the PTO (or
`
`its examiners), any attempt to disparage the PTO (or its examiners)”); DNT, LLC v. Sprint
`
`Spectrum, LP, No. 3:09-CV-21, 2010 WL 582164, at *4 (E.D. Va. Feb. 12, 2010) (excluding
`
`from trial as inappropriate, anything tending to disparage the patent and trademark office “which
`
`the court took to mean either a negative, direct, or individualized attack on the patent examiner,
`
`performance, or a generalized attack on the entire PTO”); Bright Response, LLC v. Google Inc.,
`
`3
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 4 of 21 PageID #: 14882
`
`No. 2:07-CV-371-CE, 2010 WL 11057072, at *1 (E.D. Tex. Jul. 30, 2010) (“Defendants may not
`
`speculate about the time spent reviewing the ’947 Patent’s application or discuss the average
`
`time the PTO spends reviewing patent applications. Further, the parties may not state or imply
`
`the PTO examiners were incompetent.”); EZ Dock, Inc. v. Schafer Sys., Inc., No. 98-2364
`
`(RHK/AJB), 2003 WL 1610781, at *13 (D. Minn. Mar. 8, 2003) (“As for assertions that the PTO
`
`and its examiners are not diligent or are prone to error, the Court can find no relevance in either
`
`evidence to that effect or argument.”); Tap Pharm. Prods., Inc. v. Owl Pharms., LLC, No. 1:99-
`
`CV-2715, 2003 WL 25695241, at *1 (N.D. Ohio Feb. 18, 2003) (“Testimony . . . about the
`
`relative shortage of patent examiners at the PTO is inadmissible. The only purpose such
`
`testimony would serve would be to undermine the presumption of validity about the patents-in-
`
`suit.”) (internal citation omitted); Bausch & Lomb, Inc. v. Alcon Labs., Inc., 79 F. Supp. 2d 252,
`
`255–56 (W.D.N.Y. 2000) (the only purpose served by offering disparaging evidence about the
`
`PTO is to “invit[e] the jury to speculate about the possible defects, errors or omissions in the
`
`application process that led to the issuance of the patent[s]-in-suit,” thereby undermining the
`
`patents’ presumption of validity; “generalized testimony about ‘problems’ in the PTO is not
`
`admissible”); Fed. R. Evid. 401, 402, 403.
`
`4.
`
`MOTION IN LIMINE TO PRECLUDE LG FROM REFERENCING PENDING
`INTER PARTES REVIEW PROCEEDINGS OR SUCCESS RATES OF SUCH
`PROCEEDINGS
`
`AGIS moves for an Order precluding LG from introducing any argument, reference,
`
`evidence, testimony (including expert testimony), or eliciting any testimony concerning (1) the
`
`IPR proceedings filed by HTC and ZTE, Apple, and Google (regardless of whether they have
`
`been denied or granted), (2) the percentages of patents that are invalidated in re-exams or inter
`
`partes review, or (3) the quality of the PTO’s examination process. The mention of IPR
`
`proceedings would be prejudicial because a jury would be influenced by the existence of the
`
`4
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 5 of 21 PageID #: 14883
`
`pending proceedings when making its own validity determination. See Callaway Golf Co. v.
`
`Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009) (“The non-final re-examination
`
`determinations were of little relevance to the jury’s independent deliberations of the factual
`
`issues underlying the question of obviousness. In contrast, the risk of jury confusion if evidence
`
`of the non-final [PTAB] proceedings were introduced was high.”). HTC and ZTE have filed 3
`
`petitions for IPR against the Patents-in-Suit. In 2018, Apple and Google cumulatively filed 15
`
`IPRs against the Patents-in-Suit.1 While 11 of those petitions have been denied institution, with
`
`all five petitions filed against the ’251 Patent denied in full, reference to either the denials or the
`
`grants of IPR petitions would be confusing to a jury and the prejudicial potential of this evidence
`
`substantially outweighs any probative value it may have. Fed. R. Evid. 403. See also Ivera Med.
`
`Corp. v. Hospira, No. 14-cv-1345-H-RBB, 2015 WL 11529819, at *1 (S.D. Cal. July 21, 2015).
`
`Statements regarding the percentages of patents that are invalidated in re-examinations or
`
`inter partes review or the quality of the USPTO’s examination process are irrelevant and unfairly
`
`prejudicial or distracting from the relevant standard. See Applied Materials, Inc. v. Advanced
`
`Semiconductor Materials Am., Inc., No. C 92-20643 RMW, 1995 WL 261407, at *3 (N.D. Cal.
`
`Apr. 25, 1995) (finding irrelevant and inappropriate testimony about “overwork, quotas, awards
`
`or promotions at the Patent Office . . . or insinuating that the Patent Office does not do its job
`
`properly”); Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL
`
`12622055, at *2 (N.D. Cal. Mar. 19, 2015) (“Motorola will not be allowed to make generalized
`
`comments about the quality of the PTO’s examination process or otherwise insinuate that, as a
`
`general matter, the PTO does not do its job properly.”). The law mandates that patents are
`
`presumed valid, but may be found invalid if proved by clear and convincing evidence. 35 U.S.C.
`
`
`1 Additional IPR petitions have been filed by Google, Apple, and HTC and ZTE since the
`beginning of this year.
`
`5
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 6 of 21 PageID #: 14884
`
`§ 282; Microsoft Corp. v. l4l Ltd. P’ship, 564 U.S. 91, 102 (2011); NetAirus Techs., LLC v.
`
`Apple, Inc., No. LA CV10-03257 JAK (Ex), 2012 WL 12884837, at *2 (C.D. Cal. Feb. 27,
`
`2012); Ryko Mfg. Co. v. Nu-Star, Inc., No. 4-89-669, 1990 WL 290148, at *2 (D. Minn. Sept. 19,
`
`1990). Accordingly, LG should be precluded from mentioning any pending IPRs or petitions
`
`and from otherwise commenting on the success rates of PTO proceedings or the quality of the
`
`examination process.
`
`5.
`
`MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING EVIDENCE
`OR TESTIMONY REGARDING UNRELATED LITIGATION INCLUDING
`VERDICTS
`
`
`
`In the present Action, LG seeks to introduce evidence regarding an unrelated case,
`
`Advanced Ground Information Systems, Inc. v. LIFE360, Inc., that took place in the Southern
`
`District of Florida (the “Life360 Litigation”), and involved a different plaintiff, different asserted
`
`patents, different accused products, and an unrelated defendant. Specifically, LG has included
`
`pleadings, deposition transcripts, and trial transcripts from that case on its exhibit list. The
`
`Life360 Litigation evidence and testimony are wholly irrelevant to the present Action. Even if
`
`the Court should determine that evidence regarding the Life360 Litigation had some relevance
`
`here, it still should be excluded because its admission would be unfairly prejudicial to AGIS and
`
`would also likely confuse and/or mislead the jury. Moreover, LG had a full and fair opportunity
`
`to pursue discovery from Life360, but did not conduct any depositions of anyone related to
`
`Life360. Accordingly, all evidence, testimony, or argument from the Life360 Litigation,
`
`including the evidence identified in LG’s pretrial disclosures, should be excluded under Rules
`
`402 and 403 of the Federal Rules of Evidence.
`
`6
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 7 of 21 PageID #: 14885
`
`a. The evidence, testimony, arguments, and results of the Life360 Litigation are not
`relevant to the issues in this Action.
`
`Courts routinely exclude references to prior lawsuits on relevance grounds. See, e.g.,
`
`
`
`
`Respironics, Inc. v. Invacare Corp., 303 F. App’x 865, 877 (Fed. Cir. 2008) (affirming District
`
`Court’s exclusion of evidence related to one device on relevance grounds under FRE 402
`
`because the sole issue at trial was infringement by a separate device which operated differently);
`
`Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1307-08 (Fed. Cir. 2011)
`
`(upholding District Court’s exclusion under FRE 403 of evidence and references during trial to
`
`prior litigation, even though the prior litigation allegedly involved related infringement claims);
`
`Stafford v. Lamorak Ins. Co., No. 18-60160, 2018 WL 5099628, at *3 (5th Cir. Oct. 18, 2018)
`
`(upholding trial court’s decision to grant motion in limine that excluded evidence of a second
`
`lawsuit because such evidence was “not relevant to the instant litigation and could mislead or
`
`confuse the jury and unduly prejudice Plaintiff”); Brumley Estate v. Iowa Beef Processors, Inc.,
`
`704 F.2d 1351, 1356-57 (5th Cir. 1983) (upholding district court’s decision to exclude evidence
`
`of two related prior judgments because “the transactions involved in the prior decisions were
`
`distinguishable from the transactions involved in this case” and accordingly, introduction of the
`
`prior judgments “could quite possibly have led to confusing considerations essentially irrelevant
`
`to the task of the present jury: to decide on the facts before it” the issue in the present case).
`
`
`
`Here, the evidence LG seeks to introduce is not relevant to the present litigation. The
`
`prior litigation involved (a) different parties; (b) different patents; and (c) different accused
`
`products. Evidence and testimony related to different products and different patents is irrelevant
`
`to the task that will be presented to the jury in the current case -- to decide the issues relating to
`
`whether LG infringed the patents-in-suit here. See Brumley, 704 F.2d at 1356-57 (noting
`
`evidence of prior judgments that related to transactions that “were distinguishable from the
`
`7
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 8 of 21 PageID #: 14886
`
`transactions involved in this case” was “irrelevant to the task of the present jury: to decide on the
`
`facts before it . . . . ”; see also ICU Med., Inc. v. RyMed Techs., Inc., 752 F. Supp. 2d 486, 490-91
`
`(D. Del. 2010) (holding in a patent infringement action that telling the jury a prior court found
`
`certain of plaintiff’s patent claims to be invalid “would introduce irrelevant evidence” and would
`
`risk unduly prejudicing plaintiff, as the jury was required to make that very same assessment
`
`with respect to a different claim of the same asserted patent). LG’s attempt to introduce
`
`irrelevant evidence from a prior litigation that has no bearing on the patents, products, or parties
`
`at issue should be rejected by this Court.
`
`b. The evidence, testimony, arguments, or results of Life360 Litigation would be
`highly prejudicial and result in confusion if presented to a jury in this Action.
`
`Even if this Court determines that the proffered evidence is relevant, it should still be
`
`
`
`
`excluded on the grounds that its probative value is substantially outweighed by the significant
`
`risk of unfair prejudice to AGIS and confusing or misleading the jury. See Fed. R. Evid. 403.
`
`As discussed above, the prior litigation involved different parties, products, and patents. The
`
`probative value of such evidence with regard to the separate products and patents at issue in this
`
`case, if it exists at all, is low. See, e.g., Brumley, 704 F.2d at 1356 (noting the “questionable
`
`probative value” of prior judgments that related to transactions that “were distinguishable from
`
`the transactions involved in this case.”). The risk of unfair prejudice or confusing the jury, on
`
`the other hand, is high. See id. at 1356-57; see also VirnetX Inc. v. Apple Inc., No. 6:12-CV-855,
`
`2016 WL 4063802, at *5 (E.D. Tex. July 29, 2016) (noting that the similarity and complexity of
`
`issues between two cases “magnified the risk of deference to Apple I [the prior case] because of
`
`jury confusion.”) (italics in original).
`
`
`
`LG’s proffered evidence will not only introduce irrelevant and confusing information that
`
`relates to different products and patents, but it will also open the door for LG to reference the
`
`8
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 9 of 21 PageID #: 14887
`
`outcome of the prior litigation, which was adverse to AGIS on infringement. References to a
`
`prior, adverse jury verdict will be unfairly prejudicial2 for AGIS, especially when the prior case
`
`dealt with different products and patents. Such evidence would have a prejudicial and confusing
`
`effect. See, e.g., Mendenhall, 5 F.3d at 1575 (upholding trial court’s decision to exclude
`
`evidentiary record from related case involving the same patents-in-suit because the “possibility
`
`of prejudice to the defendant and confusion of the jury was very high it . . . . ”); Datatreasury
`
`Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 WL 11468934, at *19 (E.D. Tex. Oct. 5,
`
`2010) (granting defendants’ motion in limine to exclude any discussion surrounding the outcome
`
`of prior litigation because it would be “unfairly prejudicial” regardless of “the similarities
`
`between accused instrumentalities”); Coleman Motor Co. v. Chrysler Corp., 525 F.2d 1338,
`
`1351 (3d Cir. 1975) (holding that references to a prior verdict were prejudicial because the
`
`“admission of a prior verdict creates the possibility that the jury will defer to the earlier result
`
`and thus will, effectively, decide a case on evidence not before it” and that a jury is likely to give
`
`a prior verdict “more weight than it warrants”); VirnetX, 2016 WL 4063802, at *7 (finding that
`
`the “confusion and unfair prejudice associated with” prior jury verdicts relating to two products
`
`“spilled over into the jury’s finding of infringement of iMessage” even though “iMessage was
`
`not part of Apple I [the prior case]”).
`
`
`2 The Advisory Committee Notes to Federal Rule of Evidence 403 provide that “‘[u]nfair
`prejudice’ within its context means an undue tendency to suggest decision on an improper
`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 “[h]ere 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
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 10 of 21 PageID #: 14888
`
`
`
`Accordingly, even if this Court determines that the proffered evidence is relevant, it
`
`should still be excluded. Its probative value is substantially outweighed by the significant risk of
`
`confusing or misleading the jury because the products and patents at issue here are different than
`
`those from the prior litigation. The evidence’s probative value is further outweighed by the
`
`significant risk of unfair prejudice to AGIS that will stem from LG’s references to a prior,
`
`adverse jury verdict related to different patents and different accused products. This Court
`
`should exclude such prejudicial and confusing evidence.
`
`6.
`
`MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING
`TESTIMONY, EVIDENCE, OR ARGUMENT RELATED TO LITIGATION
`FUNDING
`
`AGIS moves for an order precluding LG from introducing any argument, reference,
`
`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
`
`regarding litigation funding, fees incurred by either party, the retention or fee agreements of any
`
`party’s counsel in this case, and any fees obtained or potentially obtained by counsel as a result
`
`of this case. Fed. R. Evid. 401, 402, 403; CardSoft, Inc. v. Verifone Sys., Inc., No. 2:08-CV-
`
`00098-RSP, 2012 WL 1995302, at *1 (E.D. Tex. Jun. 4, 2012) (Payne, J.) (preventing
`
`introduction of evidence, testimony, or reference to attorneys representing plaintiff on a
`
`contingent-fee basis). Introduction of such evidence is irrelevant and would be unfairly
`
`prejudicial. See SSL Services, LLC v. Citrix Systems, Inc., No. 2:08-cv-158-JRG, 2012 WL
`
`12906091 at *1 (May 24, 2012) (Gilstrap, J.) (precluding parties from “any reference to investors
`
`in the litigation, litigation financing or attorney’s fee arrangements”); Rembrandt Wireless v.
`
`Samsung Elec., Case No. 2:13-CV-213-JRG-RSP, 2015 WL 627430, at *2 (Payne, J.) (granting
`
`similar motion in limine).
`
`10
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 11 of 21 PageID #: 14889
`
`7.
`
`MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING
`TESTIMONY, EVIDENCE, OR ARGUMENT RELATED TO POTENTIAL
`TARGETS FOR LITIGATION
`
`AGIS moves for an order precluding LG from introducing any argument, reference,
`
`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony for
`
`the purpose of showing that AGIS sued or did not sue any other parties, the number of entities
`
`AGIS did or did not sue, or which entities AGIS did or did not sue on the Patents-in-Suit. Such
`
`statements are irrelevant, would be unfairly prejudicial to AGIS, and would mislead the jury into
`
`resolving this case based on factors other than the evidence and the law. See Fed. R. Evid. 402,
`
`403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei Device USA Inc., No. 2:16-
`
`cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 2.
`
`8.
`
`MOTION IN LIMINE TO PRECLUDE LG 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 LG from introducing any argument, reference,
`
`evidence, suggestion, testimony (including expert testimony), or elicitation of any testimony
`
`regarding AGIS’s efforts to monetize patents or engage in litigation other than the present
`
`lawsuit. Such evidence and argument has no bearing on the claims and defenses in this case.
`
`Accordingly, it has no probative value and would only serve to confuse the jury and prejudice
`
`AGIS. Fed. R. Evid. 402, 403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei
`
`Device USA Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 3.
`
`11
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 12 of 21 PageID #: 14890
`
`9.
`
`MOTION IN LIMINE TO PRECLUDE ANY REFERENCES, EVIDENCE,
`SUGGESTION, TESTIMONY, OR ELICITATION OF ANY TESTIMONY BY
`LG COMPARING ANY ACCUSED PRODUCT TO ANY PURPORTED PRIOR
`ART DEVICE, A PRIOR ART PATENT, OR ANY OTHER PRIOR ART
`
`
`
`LG should be precluded from any reference, evidence, suggestion, testimony, or
`
`elicitation of any testimony comparing any Accused Product or alleged commercial embodiment
`
`to any purported prior art device, a prior art patent, or any other prior art. It is a fundamental
`
`tenet of United States patent law that the claims of a patent, not an accused product, are to be
`
`compared to the prior art when analyzing validity. See Zenith Elecs. Corp. v. PDI Commc’n.
`
`Sys., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (quoting Tate Access Floors, Inc. v Interface
`
`Architectural Res., Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)). Accordingly, any purported
`
`defense of “practicing the prior art” is not a legitimate defense under United States patent law:
`
`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.
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Id. (emphasis added) (citing Tate Access Floors, 279 F.3d at 1367).
`
`Such references have no relevance to any claim or defense in this case. Fed. R. Evid.
`
`402. If relevant and/or admissible, the probative value of any such matter would be greatly
`
`outweighed by the danger of unfair prejudice, confusion of the issues, and/or misleading the jury.
`
`Fed. R. Evid. 403; see also Order on Motions in Limine, Semcon IP Inc. v. Huawei Device USA
`
`Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex. Dec. 15, 2017), ECF 490 at p. 3.
`
`12
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 13 of 21 PageID #: 14891
`
`10. MOTION IN LIMINE TO PRECLUDE ANY REFERENCE, EVIDENCE,
`SUGGESTION, TESTIMONY, OR ELICITATION OF ANY TESTIMONY BY
`LG REGARDING AGIS’S ELECTION OF PATENT CLAIMS TO STREAMLINE
`THIS LITIGATION
`
`LG should be precluded from any reference, evidence, suggestion, testimony, or
`
`elicitation of any testimony regarding Plaintiff’s election to streamline this litigation for ease of
`
`presentation to the jury, or in light of the Court’s time limits for trial, by dismissing any claims
`
`prior to or during trial. The fact that AGIS may elect to simplify the issues and evidence to be
`
`presented to the jury has no impact on whether LG infringes any remaining claim and is
`
`therefore irrelevant. Fed. R. Evid. 402, 403.
`
`11. MOTION IN LIMINE TO PRECLUDE ANY REFERENCE, EVIDENCE,
`SUGGESTION, TESTIMONY, OR ELICITATION OF ANY TESTIMONY BY
`LG THAT PLAINTIFF ENGAGED IN “FORUM SHOPPING” OR
`“LITIGATION ABUSE,” OR THAT THIS DISTRICT IS A POPULAR VENUE
`FOR PATENT HOLDERS
`
`AGIS requests that LG be precluded from any reference, evidence, suggestion, testimony,
`
`or elicitation of any testimony alleging that AGIS engaged in “forum shopping” or “litigation
`
`abuse,” or that the Eastern District of Texas is a popular venue for patent holders. Any
`
`allegations of forum shopping or litigation abuse constitute irrelevant posturing and, if conveyed
`
`to the jury, are baseless accusations intended to paint AGIS as a bad actor. Because those
`
`assertions are irrelevant and prejudicial, LG should be ordered to refrain from making any such
`
`allegations in front of the jury. Any reference to forum shopping, motivations to file in the
`
`Eastern District of Texas, litigation abuse, or similar allegations should be excluded under
`
`Federal Rules of Evidence 402 and 403. In addition, any reference to the fact that the Eastern
`
`District of Texas is a popular venue for patent holders would be unduly prejudicial and would be
`
`distracting to the jury. See, e.g., Droplets, 2014 WL 11515642, at *1; Order on Motions in
`
`13
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 14 of 21 PageID #: 14892
`
`Limine, Semcon IP Inc. v. Huawei Device USA Inc., No. 2:16-cv-00437-JRG-RSP (E.D. Tex.
`
`Dec. 15, 2017), ECF 490 at p. 4.
`
`12. MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING EVIDENCE
`OF PRIOR ART NOT INCLUDED IN LG’S FINAL ELECTION OF PRIOR ART
`
`
`
`AGIS requests that LG be precluded from any reference, evidence, suggestion, testimony,
`
`or elicitation of any testimony relating to prior art that was not included in LG’s final election.
`
`Any attempt to offer evidence of prior art for another purpose, such as showing the state of the
`
`art of the invention, would be highly prejudicial to AGIS because a jury could easily mistake the
`
`evidence as invalidating prior art rather than state of the art evidence. Accordingly, such
`
`evidence should be precluded pursuant to Federal Rule of Evidence 403. Indeed, for this reason,
`
`similar motions in limine have routinely been granted in this district. See, e.g., Smartflash LLC
`
`v. Apple Inc., No. 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. Sept. 8, 2016); Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-
`
`CV-744-JRG-RSP, 2016 WL 3618831, at *4 (E.D. Tex. Mar. 1, 2016) (granting motion in
`
`limine to exclude “any argument, testimony, evidence, or reference to prior art or prior art
`
`combinations that were not included in invalidity contentions or elected”). Evidence relating to
`
`any such non-elected prior art should be precluded.
`
`14
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 15 of 21 PageID #: 14893
`
`13. MOTION IN LIMINE TO PRECLUDE LG FROM INTRODUCING
`CORRESPONDENCE RELATED TO DISCOVERY DISPUTES
`
`
`
`AGIS requests that LG be precluded from introducing testimony, evidence, or argument
`
`related to the parties’ correspondence regarding discovery disputes. Any correspondence
`
`between counsel regarding discovery disputes is irrelevant to the trial on the merits. Moreover,
`
`even if the Court found such correspondence to be relevant, it would be confusing to a jury and
`
`the prejudicial potential of this evidence substantially outweighs whatever probative value it may
`
`have. Fed. R. Evid. 403.
`
`14. MOTION IN LIMINE TO PRECLUDE LG EXPERT FROM TESTIFYING
`REGARDING FACTS AS TO THE FBCB2 SYSTEM AS PRIOR ART
`
`
`
`LG expert Scott Andrews should be precluded from testifying with respect to the FBCB2
`
`system as prior art.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` An expert cannot testify regarding information outside of his or her firsthand
`
`experiences. Virnetx Inc. v. Apple Inc., No. 6:10-CV-417, 2016 WL 7177541, at *3 (E.D. Tex.
`
`Sept. 15, 2016) (“[The expert] cannot testify regarding information outside of his firsthand
`
`experiences.”); see also Nunn v. State Farm Mut. Auto. Ins. Co., No. 3:08-CV-1486-D, 2010 WL
`
`
`3 Mr. Andrews has not yet been deposed in this case.
`4 Excerpts from the Expert Report of Scott Andrews Regarding Invalidity of U.S. Patent Nos.
`8,213,970, 9,408,055, 9,445,251, and 9,467,838 (“Andrews Report”) are attached hereto as
`Exhibit A.
`
`15
`
`

`

`Case 2:17-cv-00514-JRG Document 167 Filed 02/13/19 Page 16 of 21 PageID #: 14894
`
`2540754, at *11 (N.D. Tex. June 22, 2010) (excluding testimony by expert as to facts where “he
`
`has no first-hand knowledge of these facts”). Mr. Andrews does not have firsthand knowledge
`
`of the FBCB2 System. Therefore, Mr. Andrews’ testimony regarding the facts relevant to the
`
`FBCB2 system as prior art must be excluded.
`
`15. MOTION IN LIMINE TO EXCLUDE TESTIMONY OF LG’S LATE-
`DISCLOSED WITNESSES
`
`
`
`LG should be precluded from calling late-disclosed, non-party Google witnesses William
`
`Luh and Micah Mason to testify. LG failed to disclose Luh and Mason at all duri