Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 1 of 11 PageID #: 9341
`Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 1 of 11 PagelD #: 9341
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`
`EXHIBIT B
`EXHIBIT B
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`

`

`
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`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 1 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 2 of 11 PageID #: 9342
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`MV3 PARTNERS LLC,
` Plaintiff
`
`-v-
`
`ROKU, INC.,
` Defendant
`
`
`
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`W-18-CV-00308-ADA
`
`
`
`ORDER REGARDING MOTIONS IN LIMINE,
`MOTIONS FOR SUMMARY JUDGMENT, AND DAUBERT MOTIONS
`
`
`
`Before the Court are the parties’ respective motions in limine, motions for summary
`
`judgment, and Daubert motions. The Court held a hearing concerning these motions on June 4,
`
`2020. During that hearing, the Court provided oral rulings on each of the motions. The Court
`
`now enters those motions.
`
`
`
`SIGNED this 29th day of September, 2020.
`
`
`
`
`
`
`
`
`
`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
`
`
`
`1
`
`

`

`
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`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 2 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 3 of 11 PageID #: 9343
`
`
`
`MV3’s Motions in Limine
`
`Motion
`
`Ruling
`
`MV3’s Motion in Limine No. 1 to exclude
`references to:
`
`
`
`
`(i) MV3 as a Non-Practicing Entity and Patent
`Owner
`
`(ii) MV3’s Prior Litigations Involving MV3
`Witnesses
`
`
`(iii) MV3’s Attorney Fee Agreements or
`Payments and/or Non-Payments to its Counsel
`
`
`(iv) How or to Whom a Damages Award to
`MV3 may be Distributed,
`Including
`its
`Members’ Ownership Interests
`
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`
`
`
`2
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 3 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 4 of 11 PageID #: 9344
`
`Motion
`
`Ruling
`
`(v) Forum Shopping, Litigation Abuse, or the
`Western District of Texas as a Popular Venue
`for Patent Litigation or as an Improper Venue
`
`
`GRANTED
`
`
`MV3’s Motion in Limine No. 2 to exclude
`references to:
`
`
`
`
`(i) Suggestions that a Damages Award may
`Increase the Price of Roku’s Products, put
`Roku’s Manufacturers Out of Business, or
`Lead to the Loss of Jobs
`
`
`(ii) Licenses for which no Expert has Provided
`an Opinion that such Licenses are Comparable
`to a Hypothetical License to the Patent-in-Suit
`
`
`(iii) Prior Judicial Opinions Pertaining to
`MV3’s Expert Witnesses
`
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`GRANTED.
`
`MV3’s Motion in Limine No. 2 was
`granted as it pertains to voir dire and
`opening arguments.
` Use of evidence
`pertaining to these topics during trial is
`carried over.
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic.
`
`
`MV3’s Motion in Limine No. 3 to exclude
`References to:
`
`
`
`
`(i) The Duty of Candor to the U.S. Patent
`Office or the Issue of Inequitable Conduct
`
`
`GRANTED
`
`Roku is precluded from using evidence
`related to the duty of candor or inequitable
`conduct but is not precluded from offering
`relevant evidence to an issue unrelated to
`the duty of candor or inequitable conduct
`but related to infringement, invalidity, or
`damages in its case-in-chief.
`
`
`
`3
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 4 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 5 of 11 PageID #: 9345
`
`Motion
`
`Ruling
`
`(ii) Disparaging Comments Regarding the
`Patent Office and its Examiners
`
`(iii) Unified Patents’ Inter Partes Review
`Concerning the Patent-in-Suit.
`
`
`(iv) Comparisons of Roku’s Accused Devices
`to Any Prior Art
`
`(v) Demonstrations of and/or References to
`Software as “Prior Art” that was Created or
`Modified after the Filing of the Patent-in-Suit
`
`(vi) Non-Elected or Non-Identified Prior Art
`
`(vii) Narrowed Claims (Infringement Claims
`that were Asserted but Later Dropped)
`
`
`
`GRANTED
`
`
`GRANTED.
`
`Roku is precluded from making any
`references to a parallel proceeding.
`
`DENIED and carried over to trial.
`
`
`DENIED and carried over to trial.
`
`
`DENIED and carried over to trial.
`
`GRANTED
`
`MV3’s Motion in Limine No. 4 to exclude
`references to:
`
`
`
`
`(i) Allegations that any of Roku’s Patents are
`Related to and/or Cover the Accused Products
`
`
`(ii) Unreliable Expert Opinions by Drs. Russ
`and Bovik, and any New Infringement and
`Invalidity Opinions that were not Disclosed in
`their Expert Reports
`
`
`(iii) Information that Roku Failed to Disclose
`in Response to a Contention Interrogatory
`regarding Infringement Defenses
`
`
`
`4
`
`GRANTED.
`
`Roku is precluded from raising this topic
`during voir dire and opening arguments. If
`Roku seeks to put on evidence about this
`topic at trial, Roku needs to notify the
`Court in advance for the Court’s ruling on
`the topic; Roku is restricted from putting in
`evidence of its patents during trial until the
`Court can hear the question and make sure
`the Court approves of it.
`
`GRANTED-in-part subject to ruling on
`MV3’s Motion to Exclude the Opinions in
`Dr. Samuel Russ’s Rebuttal Expert Report
`and Dr. Alan Bovik’s Opening and
`Rebuttal Expert Reports.
`
`The issue of whether either party is
`precluded from making an argument in
`view of alleged discovery deficiencies is
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 5 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 6 of 11 PageID #: 9346
`
`Motion
`
`Ruling
`
`
`
`(iv) Dr. Bovik’s Testimony Regarding how the
`Roku Products Operate
`
`
`(v) Suggestions that the Roku TV Products and
`the Roku Streaming Media Players Allegedly
`Operate Differently with Respect to the Query
`Limitation
`
`(vi) Alleged Non-Infringing Alternatives that
`are not Acceptable or were not Available
`
`(vii) Testimony or Arguments Contrary to or
`Unsupported
`by
`the Court’s Claim
`Construction Order
`
`
`
`
`carried over to trial.
`
`GRANTED-in-part subject to ruling on
`MV3’s Motion to Exclude the Opinions in
`Dr. Samuel Russ’s Rebuttal Expert Report
`and Dr. Alan Bovik’s Opening and
`Rebuttal Expert Reports.
`
`GRANTED to the extent the Court granted
`any applicable Daubert motion on this
`topic.
`
`
`DENIED.
`
`
`GRANTED.
`
`
`5
`
`
`
`
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 6 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 7 of 11 PageID #: 9347
`
`
`
`Roku’s Motions in Limine
`
`Motion
`
`Ruling
`
`Roku’s Motion in Limine No. 1 to exclude Mr.
`Jared Abbruzzese’s testimony on the content
`of the patent
`
`Roku’s Motion in Limine No. 2 to exclude
`evidence or argument by Jared Abbruzzese,
`Wayne Barr, and David Marshack about the
`factual basis and motivation for filing the
`lawsuit
`
`Roku’s Motion in Limine No. 3 to exclude
`testimony about what MV3
`intended the
`patent to cover.
`
`Roku’s Motion in Limine No. 4 to exclude
`testimony and arguments that mischaracterize
`claim construction outcomes.
`
`
`Roku’s Motion in Limine No. 5 to exclude
`evidence or argument by Dr. Dan Schonfeld
`about what happens in the network during the
`DIAL operation.
`
`Roku’s Motion in Limine No. 6 to exclude
`documents, testimony, and evidence regarding
`indirect infringement prior to the filing date of
`the complaint.
`
`
`Roku’s Motion in Limine No. 7 to exclude
`documents, testimony, and evidence regarding
`direct infringement of Roku TVs
`
`
`
`6
`
`DENIED
`
`
`DENIED
`
`
`GRANTED
`
`
`GRANTED-in-part, DENIED-in-part
`subject to ruling on MV3’s Motion to
`Exclude the Opinions in Dr. Samuel Russ’s
`Rebuttal Expert Report and Dr. Alan
`Bovik’s Opening and Rebuttal Expert
`Reports.
`
`Undecided and carried forward to trial
`
`
`GRANTED-in-part.
`
`MV3 is precluded from raising this topic
`during voir dire and opening arguments. If
`MV3 seeks to put on evidence about this
`topic at trial, MV3 needs to notify the
`Court in advance for the Court’s ruling on
`the topic. MV3 disputes Roku’s assertion
`that MV3
`is precluded
`from using
`documents prior to the date of the lawsuit
`for
`purposes
`related
`to
`indirect
`infringement liability.
`
`DENIED.
`
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 7 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 8 of 11 PageID #: 9348
`
`
`
`MV3’s Daubert Motions
`
`Motion
`
`Ruling
`
`MV3’s Motion to Exclude the Opinions in Dr.
`Samuel Russ’s Rebuttal Expert Report and
`Dr. Alan Bovik’s Opening and Rebuttal
`Expert Reports
`
`
`
`
`(i) Set Top Box.
`
`(ii) Docking port.
`
`(iii) Multicast.
`
`(iv) Adaptive Circuitry
`
`(v) Dr. Bovik’s Opinions that Criticize the
`Schonfeld Opening Report Without Explaining
`Why Dr. Schonfeld is Wrong Render His
`Opinion Unreliable.
`
`
`MV3’s Motion to Exclude Certain Opinions in
`the Expert Report of Lauren R. Kindler
`Regarding Roku’s Licensing History and
`Preferences
`
`
`MV3’s Motion to Exclude Certain Portions in
`Dr. Samuel Russ’s Opening Expert Report
`Regarding Patent Invalidity
`
`
`MV3’s Motion to Exclude Certain Opinions in
`the Expert Report of Robert L. Stoll Relating
`to Inequitable Conduct
`
`
`
`7
`
`GRANTED-in-part. The Court struck the
`following opinions of Dr. Russ: That a set
`top box requires the device to be used only
`with a network that provides the set top
`box; that a set top box act as an interface to
`a television; and that a set top box be self-
`contained.
`
`GRANTED-in-part. The Court ruled that
`Dr. Russ cannot opine that a docking port
`requires a docking station.
`
`GRANTED-in-part. The Court ruled that
`Dr. Russ cannot opine that a multicast
`broadcast is limited to a single sender.
`
`GRANTED-in-part. The Court struck the
`entirety of Dr. Russ’s and Dr. Bovik’s
`opinions related to adaptive circuitry.
`
`DENIED.
`
`
`DENIED
`
`DENIED
`
`DENIED
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 8 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 9 of 11 PageID #: 9349
`
`
`
`Roku’s Daubert Motions
`
`Motion
`
`Ruling
`
`Roku’s Motion to preclude MV3 and Dr. Dan
`Schonfeld from relying on the doctrine of
`equivalents for the “querying the display
`device” limitation
`
`Roku’s Motion to exclude the opinions and
`testimony of Mr. Roy Weinstein with respect
`to:
`
`
`GRANTED
`
`
`
`(i) The survey approach, based on an
`overbroad survey that did not test the accused
`functionality
`
`(ii) Revenue streams unrelated to the patented
`features
`
`(iii) Third-party app approach not based on any
`scientifically valid methodology
`
`(iv) Bases of the APPU approach led to flawed
`and overstated royalty rates
`
`(v) Lump sum damages figures that are not
`compensatory measures
`
`
`
`
`Denied without prejudice to renew at trial.
`MV3 to segregate and cordon off trial
`testimony regarding the survey in question.
`
`DENIED
`
`
`GRANTED
`
`
`DENIED
`
`
`DENIED
`
`
`8
`
`
`
`
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 9 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 10 of 11 PageID #: 9350
`
`MV3’s Motions for Summary Judgment
`
`
`
`Motion
`MV3’s Motion For Partial Summary
`Judgment Dismissing Roku’s
`Inequitable
`Conduct Counterclaim and Striking Roku’s
`Inequitable Conduct Affirmative Defense
`
`MV3’s Motion For Partial Summary
`Judgment Finding that the Patent-in-Suit is
`Valid for Satisfying the Written Description
`Requirement
`
`
`
`
`
`Ruling
`
`DENIED
`
`
`DENIED without prejudice.
`
`
`
`
`9
`
`

`

`
`
`Case 6:18-cv-00308-ADA Document 332 Filed 09/29/20 Page 10 of 10Case 2:21-cv-00040-JRG Document 195-3 Filed 01/10/22 Page 11 of 11 PageID #: 9351
`
`Roku’s Motions for Summary Judgment
`
`
`
`Motion
`Roku’s motion for summary judgment that:
`
`
`
`
`Ruling
`
`(i) Roku TVs do not have a display device that
`is separate from a mobile set top box
`
`(ii) Roku TVs do not query a display device
`
`(iii) Roku streaming devices and Roku TVs do
`not authenticate a user
`
`Roku’s Request to Strike MV3’s request for
`Enhanced Damages under 35 U.S.C § 284 in
`the pretrial order as not having been
`previously and properly pled
`
`
`Roku’s motion to exclude the survey opinions
`and testimony of Dr. Marais and the Marais
`and Wecker report
`
`
`DENIED
`
`DENIED
`
`DENIED
`
`GRANTED-in-part, DENIED-in-part.
`
`The Court did not strike MV3’s claim for
`enhanced damages.
` The Court will
`consider enhanced damages with respect to
`conduct
`throughout
`the course of the
`litigation.
`
`DENIED.
`
`MV3 will partition off Mr. Roy
`Weinstein’s testimony regarding the survey
`question.
`
`
`
`
`
`
`10
`
`