Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 1 of 12 PageID #: 13643
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:19-cv-00209-JRG
`(LEAD CASE)
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`Civil Action No. 2:20-cv-00070-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`REDACTED VERSION OF
`DOCUMENT FILED UNDER SEAL
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`))))))))))
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`THE HILLMAN GROUP, INC.
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`Plaintiff,
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`v.
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`KEYME, LLC
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`Defendant.
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`DEFENDANT KEYME LLC’S MOTIONS IN LIMINE
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`i
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`Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 2 of 12 PageID #: 13644
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`EXHIBIT LIST
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`Exhibit
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`Document
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`HGTX00260715
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`HGTX00590545
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`HGTX00590404
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`HGTX00590506
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`HGTX00590540
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`Excerpted Transcript from the Deposition of Richard Caretsky
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`HGTX00226835
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`KEYME-053152
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`Excerpted Transcript from the Deposition of Greg Marsh (12/21/2020)
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`KEYME-302503
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`KEYME-302504
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`ii
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`Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 3 of 12 PageID #: 13645
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`Defendant KeyMe LLC (“KeyMe”) respectfully requests that the Court grant its Motions
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`in Limine identified below.
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`I.
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`MIL NO. 1: TO PRECLUDE EVIDENCE OR ARGUMENT REGARDING
`ALLEGATIONS OF SAFETY OR SECURITY CONCERNS MADE AGAINST
`KEYME’S
`UNACCUSED MOBILE
`APPLICATION
`AND
`RFID
`FUNCTIONALITY
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`Plaintiff The Hillman Group, Inc. (“Hillman”) should be precluded from offering any
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`testimony (including expert opinions), evidence, or argument regarding any past or current
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`allegations as to the safety or security of KeyMe’s unaccused mobile application—including as
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`to long-since disabled functionality for ordering a key based on images captured through a user’s
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`mobile device—or to unaccused RFID functionality. For example, Hillman’s trial exhibit list
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`includes
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`See Ex. 1 (HGTX00260715). Similarly, Hillman’s
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`trial exhibit list also includes a reproduction of a news article referencing security concerns
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`related to the purported ease with which KeyMe kiosk could allow users to duplicate RFID
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`“proximity cards” commonly used to gain access to secure buildings.1 See Ex. 2
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`(HGTX00590545). As a preliminary matter, these references are inadmissible hearsay. Fed. R.
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`Evid. 802. Moreover, allegations related to negative press and security concerns are not
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`probative to any issue in this case and would be unduly prejudicial. Fed. R. Evid. 401, 402, 403;
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`see also ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13-CV-01112-JRG, 2015 WL
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`11089489, at *3 (E.D. Tex. Aug. 24, 2015) (excluding any reference or press concerning
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`unrelated issues as to Apple’s manufacturers or assertions concerning the payment of taxes).
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`These alleged security concerns relate to KeyMe’s mobile application and RFID duplication
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`1 Notably, Hillman does not accuse this RFID duplication functionality of infringement.
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`1
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`functionality, neither of which is accused here, and are unrelated to the accused functionality in
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`this case.2 They should be excluded because they are irrelevant, and serve no other purpose than
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`to prejudice KeyMe in the eyes the jury.
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`II.
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`MIL NO. 2: TO PRECLUDE EVIDENCE OR ARGUMENT REGARDING TO
`PREVIOUS CLASS ACTION LITIGATION RELATING TO KEYME’S
`ALLEGED COLLECTION OF BIOMETRIC INFORMATION
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`Pursuant to Federal Rules of Evidence 402, 403, and 802 the Court should preclude
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`Hillman from referencing the completely unrelated litigation and settlement in the case of
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`Rafidia v. KeyMe, Inc. That case, which was promptly settled in 2018, involved unproven
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`allegations that KeyMe had improperly collected biometric information without users’ written
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`consent. Hillman’s exhibit list contains at least three documents referencing this unrelated
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`litigation—two news articles and a copy of the class action settlement webpage. See Ex. 3
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`(HGTX00590404), Ex. 4 (HGTX00590506), Ex. 5 (HGTX00590540). The allegations from the
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`Rafidia case related to the purported collection of biometric information, which is unrelated to
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`any of Hillman’s asserted claims here. Thus, that litigation is cannot be used to support any
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`claims or defenses in this action, and will unduly prejudice KeyMe due to the nature of the
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`allegations in that case. Courts in this District—including this Court—routinely exclude
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`reference to this kind of wholly unrelated litigation. See ContentGuard, 2015 WL 11089489, at
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`*1 (excluding “any argument, evidence, testimony, insinuation, reference, or assertion relating to
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`any litigations, rulings, or accusations against Defendant in unrelated legal proceedings”);
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`Mobile Telecoms. Techs., LLC v. Zte (USA) Inc., No. 2:13-CV-946-JRG, 2016 WL 8260584, at
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`*2 (E.D. Tex. July 22, 2016) (excluding “any references, evidence, testimony (including expert
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`testimony), or argument regarding unrelated litigations, investigations, or accusations involving
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`2 Indeed, the security concerns alleged as to KeyMe’s unaccused mobile application relate to
`functionality that was disabled long before the start of this litigation.
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`2
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`the parties”); Realtime Data LLC v. Echostar Corp., No. 6:17-CV-00084-JDL, 2018 WL
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`10466786, at *2 (E.D. Tex. Dec. 17, 2018) (same).
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`III. MIL NO. 3: TO PRECLUDE EVIDENCE OR ARGUMENT REGARDING ANY
`ALLEGATIONS THAT FORMER MINUTE KEY EMPLOYEES WHO JOINED
`KEYME VIOLATED ANY CONFIDENTIALITY OBLIGATIONS OWED TO
`MINUTE KEY
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from presenting any allegations that former Minute Key and Hillman employee Richard Caretsky
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`violated any terms of any confidentiality or non-disclosure agreement with Minute Key or
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`Hillman after he began employment at KeyMe.
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`See, e.g., Ex. 6
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`(Caretsky Tr.) at 99:16-108:4, 176:11-186:15. Hillman has indicated that it may pursue these
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`irrelevant and prejudicial allegations at trial by including on its trial exhibit list at least two of the
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`documents used exclusively in this line of questioning at Mr. Caretsky’s deposition. See Ex. 7
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`(HGTX00226835), Ex. 8 (KEYME-053152). These allegations are not relevant to any of the
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`issues in this case. Hillman does not assert—and has never even alleged—that either KeyMe or
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`Mr. Caretsky engaged in any unfair business practices or that they otherwise misappropriated
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`any Minute Key or Hillman confidential information. Pursuing or referencing these allegations
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`at trial would serve no purpose other than to unfairly malign KeyMe’s image before the jury. It
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`would therefore be unfairly prejudicial under Federal Rule of Evidence 403 to permit Hillman to
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`make any allegations or argument that Mr. Caretsky communicated confidential Hillman
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`information to KeyMe.
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`3
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`IV. MIL NO. 4: TO PRECLUDE EVIDENCE OR ARGUMENT REGARDING ANY
`EXCLUSION OF THE TESTIMONY OF ANY TESTIFYING EXPERT IN ANY
`UNRELATED PROCEEDING
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from presenting evidence or argument related to any prior order excluding the testimony of
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`KeyMe’s experts in any prior litigation. Hillman has not challenged the admissibility of any
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`opinion offered by KeyMe’s experts in this case. Any reference to prior exclusion orders from
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`other cases would serve only to distract from the testimony of KeyMe’s experts and would be
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`unduly prejudicial. See Whirlpool Corp. v. TST Water, LLC, No. 2:15-CV-1528-JRG, 2017 WL
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`2931403, at *4 (E.D. Tex. Mar. 3, 2017) (granting motion in limine to exclude all evidence and
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`argument regarding expert witness’s exclusion in prior cases); Radware, Ltd. v. F5 Networks,
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`Inc., No. 13-CV-02024-RMW, 2016 WL 590121, at *16 (N.D. Cal. Feb. 13, 2016), (excluding
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`evidence of prior Daubert challenges for all expert witnesses).
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`V.
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`MIL NO. 5: TO PRECLUDE EVIDENCE, ARGUMENT, OR REFERENCE TO
`THE DISQUALIFICATION OF PREVIOUS COUNSEL
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from referencing or arguing—in any manner—the disqualification of KeyMe’s prior counsel.
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`See Dkt. 119. The disqualification of KeyMe’s prior counsel is completely irrelevant to any
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`substantive issue in this case and came about through no fault of KeyMe’s. See id. Any
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`argument regarding or reference to the disqualification would only serve to prejudice KeyMe
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`before jury through implication and should be precluded. Fed. R. Evid. 403.
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`VI. MIL NO. 6: TO PRECLUDE ANY CHARACTERIZATION OF KEYME AS
`HAVING ENGAGED IN STEALING, COPYING, PIRATING, OR TRESPASSING
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from characterizing any KeyMe actions as “stealing,” “copying,” “pirating,” or any other
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`pejorative words suggesting that KeyMe improperly took Hillman or Minute Key property or
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`4
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`technology. See Intellectual Ventures II LLC v. FedEx Corporation, No. 2:16-CV-00980-JRG,
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`2018 WL 10638138, at *6 (E.D. Tex. April 26, 2018) (excluding the use of “any derogatory or
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`pejorative terms” including “stealing,” “copying,” “pirating,” “or any other charged words
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`suggesting an improper taking from [plaintiff].”).
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`VII. MIL NO. 7: TO PRECLUDE REFERENCE TO ANALOGIES AS TO THE CLEAR
`AND CONVINCING EVIDENCE STANDARD IN OTHER LEGAL SITUATIONS
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from referencing the Texas Family Code when discussing the “clear and convincing” standard
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`for invalidity. The Texas Family Code employs a “clear and convincing” standard, including at
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`Chapter 161.001(b), which permits the court to “order termination of the parent-child
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`relationship if the court finds by clear and convincing evidence” that a parent has committed
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`certain acts. The Family Code defines “clear and convincing evidence” at Section 101.007 as
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`“the measure or degree of proof that will produce in the mind of the trier of fact a firm belief or
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`conviction as to the truth of the allegations sought to be established.” It would be highly
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`prejudicial to permit Hillman to invoke the Family Code in a federal patent litigation, and to do
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`so would be inflammatory. See also Implicit, LLC v. NetScout Sys., Inc., No. 2:18-CV-00053-
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`JRG, 2019 WL 6873030, at *2 (E.D. Tex. Nov. 21, 2019) (granting agreed motion in limine that
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`the parties “will not refer to the Texas Family Code when referencing or describing any clear and
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`convincing burden of proof.”).
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`VIII. MIL NO. 8: TO PRECLUDE EVIDENCE, ARGUMENT, OR REFERENCES
`CONCERNING THE RELIGIOUS OR POLITICAL BELIEFS OF ANY PARTY
`OR WITNESS
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`Pursuant to Federal Rules of Evidence 402, 403, and 802 the Court should preclude
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`Hillman from referencing the religious or political beliefs of any KeyMe expert, employee, or
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`witness. A person’s religious or political beliefs have no relevance to any claim or defense in
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`5
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`this case. The introduction of such evidence could only serve to improperly prejudice the jury,
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`and would not cast any probative evidence on any disputed issue relating to any claim or
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`defense. See also Whirlpool Corp. v. TST Water, LLC, No. 2:15-CV-1528-JRG, 2017 WL
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`2931403, at *4 (E.D. Tex. Mar. 3, 2017) (parties agreed not to “introduce evidence or testimony
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`or make arguments, insinuations, references, or assertions concerning the religious or political
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`beliefs, or sexual orientation of any party or witness.”).
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`IX. MIL NO. 9: TO PRECLUDE EVIDENCE, ARGUMENT, OR REFERENCE THAT
`DEFENDANT HAD A DUTY TO OBTAIN AN OPINION OF COUNSEL, OR TO
`THE RESULTS OF ANY SUCH OPINION
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`Pursuant to Federal Rule of Evidence 502, the Court should preclude Hillman from
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`presenting argument or evidence that KeyMe had a duty to obtain an opinion of counsel, or any
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`speculation of the results of any infringement opinion. Hillman has indicated that Hillman
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`intends to raise KeyMe’s decision not to raise an opinion-of-counsel defense to support its
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`willfulness claims. In its opposition to KeyMe’s motion for summary judgment of no willful
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`infringement, Hillman argued, in support of its willfulness allegation, that “
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`1. Similarly, Hillman argued that while “
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`” See Dkt. 249 at
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`” Id. at 14. However, under 35 U.S.C. § 298, the “failure of an infringer to obtain the
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`advice of counsel with respect to any allegedly infringed patent … may not be used to prove that
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`the accused infringer willfully infringed the patent or that the infringer intended to induce
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`infringement of the patent.” Likewise, Hillman should be precluded from offering any
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`speculation on why KeyMe did not seek an opinion of counsel or offer an opinion-of-counsel
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`6
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`defense, or speculative evidence concerning what the opinion of counsel would have been. See,
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`e.g., Contentguard, 2015 WL 12915561, at *1 (granting a motion in limine that the defendant “is
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`precluded from presenting any argument, evidence, testimony, insinuation, reference, or
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`assertion (1) that Defendant had a duty to obtain opinion of counsel, or (2) speculating as to the
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`results of any infringement opinion”); Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs.
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`Co., No. 4:14-CV-371, 2016 WL 3902447, at *1 (E.D. Tex. Feb. 1, 2016) (“Plaintiff is not to
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`present any argument, evidence, or testimony regarding Defendants' decision to not obtain an
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`opinion of counsel with respect to willfulness.”).
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`X.
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`MIL NO. 10: TO PRECLUDE EVIDENCE, ARGUMENT, OR REFERENCE TO
`THE ALLEGATIONS THAT KEYME (1) ENCOURAGED EMPLOYEES,
`FRIENDS, AND FAMILY TO SUBMIT POSITIVE REVIEWS OF THE KEYME
`APP IN THE APPLE OR ANDROID APP STORES OR (2) UPDATED THE APP
`TO CLEAR NEGATIVE REVIEWS
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`Pursuant to Federal Rules of Evidence 402 and 403, the Court should preclude Hillman
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`from presenting any testimony, evidence, or argument regarding allegations that KeyMe, out of
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`concern for negative reviews its unaccused mobile application had received in the Apple and/or
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`Android app stores, either (1) encouraged employees, friends, or family to write positive reviews
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`of the app, or (2) upgraded the app to a new version to affect the display of pre-existing negative
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`reviews. During KeyMe CEO Greg Marsh’s deposition in this case, counsel for Hillman pursued
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`irrelevant and argumentative lines of questioning regarding
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`. See Ex. 9 (Marsh Tr.
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`(12/21/2020)) at 220:7-8, 11-18; 222:20-223:7; 223:20-224:2; 226:1-5, 7-10; 227:18-228:12;
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`228:14-19; 228:21-229:2; 229:4-5; 229:7-230:8; 231:13-15; 232:8-233:7; 233:10-:13; 235:16-22;
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`236:2-3; 238:17-20; 239:1-3. Hillman has indicated that it may pursue these irrelevant and
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`prejudicial allegations at trial by designating Mr. Marsh’s testimony cited above in its initial
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`7
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`Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 10 of 12 PageID #: 13652
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`deposition designations.3 Hillman also included on its trial exhibit list one of the documents
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`used exclusively in this line of questioning at Mr. Marsh’s deposition. See Ex. 10 (KEYME-
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`302503).4 These allegations are not relevant to, nor probative of, any of the issues in this case.
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`Fed. R. Evid. 402, 403. Hillman has not accused KeyMe’s mobile application of infringement
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`nor based its damages theories on the mobile application. None of Hillman’s experts referenced
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`the Marsh documents or testimony in their reports. Pursuing or referencing these allegations at
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`trial would serve no purpose other than to tarnish KeyMe in the eyes of the jury based on
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`irrelevant facts that will confuse the jury. It would therefore be unduly prejudicial to permit
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`Hillman to make any allegations or argument that Mr. Marsh or KeyMe sought to affect the
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`mobile application’s overall review positivity by encouraging the posting of positive reviews for
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`or by making updates to the application. Fed. R. Evid. 403.
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`3 In response, KeyMe counter-designated lines 224:3-225:22; 226:12-227:5; and 230:9-231:12.
`4 A similar document was also used during Hillman’s questioning of Mr. Marsh (Ex. 11
`(KEYME-302504)) but was not included on Hillman’s trial exhibit list.
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`8
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`Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 11 of 12 PageID #: 13653
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`DATED: March 1, 2021
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`David A. Nelson
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`191 N. Wacker Drive, Suite 2700
`Chicago, IL 60606-1881
`Telephone: (312) 705-7400
`Facsimile: (312) 705-7401
`davenelson@quinnemanuel.com
`
`Eric Hui-chieh Huang
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010-1601
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`erichuang@quinnemanuel.com
`
`By /s/ Sean S. Pak
`Deron R. Dacus (Bar No. 00790553)
`The Dacus Firm, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel. 903.705.1177
`Fax 903.581.2543
`ddacus@dacusfirm.com
`
`Sean S. Pak
`Jeffrey W. Nardinelli
`Zachary C. Flood
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111-4788
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`seanpak@quinnemanuel.com
`jeffnardinelli@quinnemanuel.com
`zackflood@quinnemanuel.com
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`Attorneys for Defendant KeyMe, LLC
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`Case 2:19-cv-00209-JRG Document 262 Filed 03/03/21 Page 12 of 12 PageID #: 13654
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who have consented to
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`electronic service are being served with a copy of this document via electronic mail on March 1,
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`2021. I also hereby certify that all counsel of record who have consented to electronic service are
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`being served with a notice of filing of this document, under seal, pursuant to L.R. CV-5(a)(7) on
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`March 1, 2021.
`
` /s/ Samantha Cutler
`Samantha Cutler
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I hereby certify that the foregoing document and all supporting declarations and exhibits
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`thereto are being filed under seal pursuant to the terms of the Protective Order (Dkt. 94).
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` /s/ Samantha Cutler
`Samantha Cutler
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`10
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