Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 1 of 15 PageID #:
`7955
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`Exhibit 2
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 2 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 1 of 14 Page ID
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`7956
`#:12177
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`Case No. 8:20-cv-00993-MCS-ADS
`
`ORDER RE: MOTIONS IN LIMINE
`(ECF NOS. 200, 202–04, 211) AND
`PROCEEDINGS AT FINAL
`PRETRIAL CONFERENCE
`
`NETLIST INC.,
`
`
`Plaintiff,
`
`v.
`
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`SAMSUNG ELECTRONICS CO.,
`LTD.,
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`Defendant.
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`1
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`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 2 of 14 Page ID
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`7957
`#:12178
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`Plaintiff Netlist Inc. moves in limine: (1) to exclude argument and evidence of
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`Netlist’s intent to terminate the Joint Development and Licensing Agreement
`(“JDLA”); (2) to exclude argument and evidence of Netlist’s creditworthiness and
`payment history with Defendant Samsung Electronics Co., Ltd.; (3) to exclude
`argument and evidence of impracticability or impossibility due to industry shortages
`and other market conditions; (4) to exclude argument and evidence of sales practices
`between the parties before and after the effective period of the JDLA; and (5) to exclude
`the testimony of Samsung’s industry practices expert, Joseph McAlexander. (Pl.’s
`MILs, ECF No. 211.) Samsung opposes the motions. (Opp’n to Pl.’s MILs, ECF No.
`221.)
`Samsung moves in limine: (1) to exclude the testimony of Plaintiff’s damages
`
`expert, Dr. Michael Akemann, (Def.’s MIL No. 1, ECF No. 202);1 and (2) to exclude
`evidence and argument on consequential damages, (Def’s MIL No. 2, ECF No. 203.)2
`Netlist opposes the motions. (Opp’n to Def.’s MIL No. 1, ECF No. 217; Opp’n to Def.’s
`MIL No. 2, ECF No. 218.)
`
`The parties’ pretrial filings presented a dispute over whether Samsung’s
`affirmative defenses may proceed to trial. (E.g., Proposed FPTCO 7–8, 16, ECF No.
`225-1.) The Court ordered supplemental briefing on the issue. (Order Requiring
`Briefing, ECF No. 227.) The parties submitted responses. (Pl.’s Br., ECF No. 234;
`Def.’s Br., ECF No. 233.)
`
`The Court heard argument on the motions and the affirmative defenses at the final
`pretrial conference on November 15, 2021.
`
` Samsung filed an application to seal Akemann’s unredacted expert report, which
`Netlist designated as confidential. (Appl., ECF No. 200.) For the compelling reasons
`stated in Netlist’s response to the application, (LaMagna Decl., ECF No. 216), the
`application is granted. Samsung shall file the expert report under seal pursuant to Local
`Rule 79-5.2.2(c). In the interest of judicial economy, the Court has considered the
`provisionally sealed expert report in deciding the motion.
`2 Samsung filed a third motion in limine, (ECF No. 204), which it subsequently
`withdrew, (ECF No. 235).
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 4 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 3 of 14 Page ID
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`7958
`#:12179
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`BACKGROUND
`I.
`This is a contract dispute between two sophisticated parties. On November 12,
`
`2015, the parties entered the JDLA, which obliges Samsung to “supply NAND and
`DRAM products to Netlist on Netlist’s request at a competitive price,” to pay Netlist $8
`million in nonrefundable, non-recurring engineering (“NRE”) fees less any withholding
`taxes due or payable under the laws of Korea, and to “reasonably cooperate with Netlist
`in any lawful efforts to claim a credit or refund or exemption with respect to any such
`withholding taxes.”
`
`After entering the JDLA, Samsung deducted $1.32 million (16.5%) of the NRE
`fees to pay to the Korean tax authority. The parties dispute whether Samsung reasonably
`cooperated with Netlist in its efforts to seek a refund of the withheld amount from the
`Korean tax authority. The tax authority ultimately determined that the NRE fees were
`not subject to tax withholding. Beginning in 2017, Samsung declined to fulfill all of
`Netlist’s forecasts, requests, and orders for NAND and DRAM products, putting some
`on backlog and rejecting others. On May 27, 2020, Netlist sent a letter to Samsung
`claiming Samsung materially breached the JDLA. On July 15, 2020, Netlist sent another
`letter to Samsung terminating the JDLA.
`
`Netlist alleged three claims: (1) breach of Samsung’s NAND and DRAM supply
`obligation; (2) breach of Samsung’s obligations to (a) pay the NRE fees without
`withholding taxes and (b) reasonably cooperate with Netlist’s efforts to recover the
`withheld amount from the Korean tax authority; and (3) declaratory relief confirming
`Netlist terminated the JDLA. The Court granted summary judgment in Netlist’s favor
`on Claim 3, and partial summary judgment as to liability on Claims 1 and 2(a). (See
`generally XMSJ Order, ECF No. 186.)
`
`Samsung asserts four affirmative defenses: (1) acquiescence, (2) estoppel,
`(3) waiver, and (4) failure to mitigate. (Proposed FPTCO 7; Def.’s Br. 1–4.)3
`
` The Court deems any other affirmative defenses abandoned. (See Def.’s MCFL 7, ECF
`3
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 5 of 15 PageID #:
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`II. AFFIRMATIVE DEFENSES
`
`The parties dispute whether Samsung’s acquiescence, estoppel, and waiver
`affirmative defenses may be presented at trial. (See Proposed FPTCO 7–8, 16; see also
`Pl.’s Br. 14 n.6 (acknowledging that Samsung’s failure-to-mitigate defense may be
`presented at trial).) Samsung did not assert these affirmative defenses in response to
`Netlist’s motion for partial summary judgment as to liability on the breach claims or in
`its own motion for summary judgment. (See PMSJ Opp’n, ECF No. 168.)4
`
`There is no binding law from the Ninth Circuit as to whether an affirmative
`defense timely asserted in an answer but omitted in a summary judgment opposition
`may be allowed to proceed to trial. Nonetheless, the Court finds persuasive the analysis
`of several courts that “allowing . . . defenses to lay dormant and then resurface at trial,
`after liability has been determined, would undermine judicial economy, efficiency, and
`fairness to the opposing party.” Duarte Nursery, Inc. v. U.S. Army Corps of Eng’rs, No.
`2:13-cv-02095-KJM-DB, 2017 U.S. Dist. LEXIS 128182, at *8–9 (E.D. Cal. Aug. 10,
`2017); accord, e.g., Diversey Lever, Inc. v. Ecolab, Inc., 191 F.3d 1350, 1353 (Fed. Cir.
`1999) (“[A]n affirmative defense must be raised in response to a summary judgment
`motion, or it is waived.”); Milo & Gabby LLC v. Amazon.com, Inc., 693 F. App’x 879,
`884 (Fed. Cir. 2017) (citing Diversey Lever with approval for the proposition that “a
`party cannot revisit theories that it raises but abandons at summary judgment” (quoting
`USA Petroleum Co. v. Atl. Richfield Co., 13 F.3d 1276, 1284 (9th Cir. 1994))); Groves
`v. Am. Family Mut. Ins. Co., S.I., 479 F. Supp. 3d 796, 802 (E.D. Wis. 2020) (“Summary
`judgment is the ‘put up or shut up’ moment in a lawsuit. [Defendant h]aving failed to
`raise such a defense or explain its inability to do so, [the defense] must be considered
`waived.” (citation omitted)); Kaffaga v. Steinbeck, No. CV 14-08699 TJH (FFMx),
`
`
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`No. 208 (asserting laches defense); Pl.’s MCFL 4, ECF No. 209 (indicating Samsung
`identified other affirmative defenses at Local Rule 16-2 conference of counsel).)
`4 Samsung asserted waiver as a defense to the declaratory judgment claim only. (PMSJ
`Opp’n 30–31; DMSJ 32–33.)
`
`4
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`

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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 6 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 5 of 14 Page ID
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`7960
`#:12181
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`2017 WL 5989039, at *1 (C.D. Cal. Aug. 25, 2017) (rejecting argument that defendant
`could litigate affirmative defenses to breach of contract claim “despite the fact that the
`Court granted partial summary judgment in favor of Plaintiffs on the issue of liability”
`because “[a]ffirmative defenses not raised in opposition to a motion for partial summary
`judgment as to liability are deemed abandoned”). In line with these cases, allowing
`Samsung to resurrect its affirmative defenses would “unravel the court’s prior
`dispositive liability decisions.” Duarte Nursery, 2017 U.S. Dist. LEXIS 128182, at *10.
`The Court deems Samsung’s failure to raise the waiver, estoppel, and acquiescence
`defenses at summary judgment as its abandonment of those defenses.
`
`The Court briefly addresses two points Samsung made at oral argument. First,
`Samsung’s counsel argued that according to the revised text of Rule 56(a), a movant
`must identify each claim and defense the movant intends the court to adjudicate in a
`motion for summary judgment. Accordingly, Samsung argues that if a movant fails to
`identify a specific affirmative defense in a summary judgment motion, that defense may
`be pressed at trial despite a dispositive court ruling on the underlying claim. Samsung
`believes the cases cited above are fundamentally flawed in that they are or rely upon
`decisions predating Rule 56(a)’s substantive amendment in 2010. Rule 56(a) has no
`bearing on the doctrine of abandonment applicable here. Samsung’s argument speaks
`to whether the Court adjudicated (or could have adjudicated) Samsung’s affirmative
`defenses at summary judgment—not to whether a party abandons defenses by failing to
`raise them in summary judgment proceedings. In any event, Samsung supports its Rule
`56(a) argument with virtually no authority. As stated in the advisory committee’s note,
`the 2010 amendment was designed to “make clear . . . that summary judgment may be
`requested not only as to an entire case but also as to a claim, defense, or part of a claim
`or defense.” Fed. R. Civ. P. 56(a) advisory committee’s note to 2010 amendment. That
`purpose has no bearing on abandonment of defenses.
`
`Second, Samsung encouraged the Court to adopt the reasoning of United States
`v. Innovative BioDefense, Inc., No. SA CV 18-0996-DOC (JDEx), 2019 U.S. Dist.
`5
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`

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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 7 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 6 of 14 Page ID
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`7961
`#:12182
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`LEXIS 222668, at *23–24 (C.D. Cal. Nov. 15, 2019), and Meridian Project Systems,
`Inc. v. Hardin Construction Co., 426 F. Supp. 2d 1101, 1110 (E.D. Cal. 2006), in which
`district courts found that affirmative defenses survived motions for summary judgment
`because the plaintiffs did not specifically request summary judgment on the defenses.
`Neither court was presented with the abandonment issue described here. In both cases,
`the defendant raised and preserved its affirmative defenses in its opposition to the
`plaintiff’s motion for summary judgment, unlike the situation here. See Innovative
`BioDefense, 2019 U.S. Dist. LEXIS 222668, at *23 (citing defendant’s opposition
`brief); Def. Hardin’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J. 15–18, Meridian
`Project Sys., Inc. v. Hardin Constr. Co., No. 204CV02728, 2006 WL 5986588 (E.D.
`Cal. filed Feb. 3, 2006).
`
`The Court deems Samsung’s acquiescence, estoppel, and waiver affirmative
`defenses abandoned.5 Samsung may not present these defenses at trial. The Court will
`enter a final pretrial conference order consistent with this Order.
`III. MOTIONS IN LIMINE
`
`A. Netlist’s Motions In Limine Nos. 1–4
`
`Netlist moves to preclude Samsung from presenting evidence and argument on
`four broad topics. (Pl.’s MILs 1–7.) The Court expressly informed the parties that
`motions in limine “should address specific issues.” (Order Re: Jury Trial § II(A)(1),
`ECF No. 41.) Netlist’s motions fail to identify specific evidence and argument it
`
`
` The Court rejects the acquiescence defense for the additional reason that Samsung
`fails to show it is a cognizable affirmative defense to a breach of contract claim under
`New York law. In support of its position, Samsung cites two 25 year old nonbinding
`federal district court cases. Neither recounts an affirmative defense to a breach of
`contract claim. Dial-A-Mattress Operating Corp. v. Mattress Madness, 841 F. Supp.
`1339, 1356 (E.D.N.Y. 1994) (discussing acquiescence defense to trademark claim);
`Allen & Co. v. Occidental Petroleum Corp., 382 F. Supp. 1052, 1060–61 (S.D.N.Y.
`1974) (finding that plaintiff “acquiesced in or consented to the termination of the
`agreement” upon which plaintiff brought a breach claim—in other words, finding that
`the existence-of-a-contract element of plaintiff’s claim was not met).
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 8 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 7 of 14 Page ID
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`7962
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`anticipates Samsung will present at trial. The Court declines to enter the broad
`preclusion orders Netlist seeks without more detailed information about the subjects of
`the evidence and argument. The motions are denied on this basis.
`
`Nonetheless, in the interest of judicial economy, the Court will provide some
`guidance on the issues presented in the parties’ briefs. Nothing in this guidance prevents
`the parties from presenting or objecting to specific evidence at trial.
`
`Netlist seeks to preclude argument and evidence that it terminated or desired to
`terminate the JDLA so it could pursue patent litigation, or that Samsung initiated
`litigation against Netlist in the District of Delaware. (Pl.’s MILs 1–2.) Samsung agrees
`that that evidence and argument regarding the District of Delaware lawsuit is not
`appropriate in this action. Samsung argues, however, that the remainder of this topic is
`relevant to the reasonableness of the position it took in the tax proceedings and to the
`waiver defense. (Opp’n to Pl.’s MILs 1–3.) As stated above, the waiver defense will not
`be presented to the jury. And while Netlist’s reasons for terminating the JDLA in 2020
`may be minimally relevant to whether Samsung reasonably cooperated with Netlist in
`the tax proceeding years before, the risk of undue prejudice and confusion would
`substantially outweigh the minimal probative value of this evidence.
`
`Netlist asks the Court to preclude Samsung from discussing Netlist’s
`creditworthiness, credit rating or limit, or payment history with Samsung. (Pl.’s MILs
`2–4.) Netlist also argues that Samsung should be precluded from offering evidence that
`performing its supply obligation was impracticable or impossible due to industry chip
`shortages, demands by other customers, or other considerations. (Id. at 4–6.) Samsung
`confirms that it is not asserting impracticability or impossibility as affirmative defenses.
`(Opp’n to Pl.’s MILs 7.) Samsung claims that evidence of Netlist’s creditworthiness
`“goes to whether Samsung had grounds to refuse requests for product or to limit
`Netlist’s allocation,” and that evidence of industry shortages and product allocation is
`relevant to show “its allocations of product to Netlist were reasonable and non-
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 9 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 8 of 14 Page ID
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`7963
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`discriminatory.” (Id. at 5–6.) 6 These reasons for introducing the evidence are not
`relevant to any remaining issue to be decided by the jury. The reasonableness of
`Samsung’s decision to breach its supply obligation has no bearing on the measure of
`damages resulting from the breach. Further, Samsung’s arguments are inconsistent with
`the position it took in discovery. Samsung maintained that it elected not to honor
`Netlist’s requests “based on overall market conditions”—that is, not based on any
`conditions particular to Netlist or its product orders. (Def. Samsung’s 2d Suppl. Resps.
`to Pl. Netlist’s 1st Set of Interrogatories 6, ECF No. 236-3.) As Samsung’s counsel
`acknowledged, this position “put it[] in a lane . . . that’s quite favorable to” Netlist. (Tr.
`of Informal Disc. Conf. 17, ECF No. 236-4.)
`
`At the pretrial conference, Samsung argued that the supply obligation should be
`limited to what was commercially reasonable to provide to Netlist. Samsung proffers
`that Netlist “admits . . . that it was only entitled to a commercially reasonable amount”
`of NAND and DRAM products. (Opp’n to Pl.’s MILs 6.) The argument lacks merit.
`Nothing in the JDLA or the Court’s order on summary judgment limits Samsung’s
`supply obligation to a “commercially reasonable amount.” The Court declines to read a
`new term into the JDLA to limit the obligation. See Quadrant Structured Prods. Co.,
`Ltd. v. Vertin, 23 N.Y.3d 549, 560 (2014) (“[I]f parties to a contract omit terms[,] . . . the
`inescapable conclusion is that the parties intended the omission.”). In any event,
`Samsung admitted in discovery that it declined to fulfill Netlist’s product orders due to
`“overall market conditions”—not because any particular order was unreasonable. (Def.
`Samsung’s 2d Suppl. Resps. to Pl. Netlist’s 1st Set of Interrogatories 6.)
`
`Finally, Netlist seeks an order precluding Samsung from offering evidence of its
`
`
` Although oral argument focused on these issues, Samsung also submits that evidence
`of Netlist’s creditworthiness and payment history with Samsung may inform “whether
`Netlist would have been able to complete” NAND and DRAM purchases and whether
`it could have mitigated the price premium it paid for cover purchases. (Opp’n to Pl.’s
`MILs 4–5.) The evidence may be relevant for these purposes.
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 10 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 9 of 14 Page ID
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`7964
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`sales practices with Netlist before and after the JDLA was effective. (Pl.’s MILs 6–7.)
`In the abstract, the Court agrees with Samsung that such evidence may tend to show
`whether Netlist’s purported cover purchases during the effective period of the JDLA
`were part of Netlist’s regular course of business and not caused by Samsung’s failure
`to meet its supply obligation. (Opp’n to Pl.’s MILs 7–8.)
`
`B. Netlist’s Motion In Limine No. 5
`
`Netlist seeks to preclude Samsung’s expert on industry practice, Joseph
`McAlexander, from testifying at trial. (Pl.’s MILs 7–10.) Samsung submits that
`McAlexander would offer testimony that “will help the jury to decide whether
`Samsung’s allocations of product to Netlist were commercially reasonable in light of
`industry custom and practice.” (Opp’n to Pl.’s MILs 9.) As discussed above, whether
`Samsung’s product allocations were commercially reasonable is not relevant to the
`measure of damages for Samsung’s breach of its supply obligation. Samsung had an
`obligation to fulfill all of Netlist’s requests, and Samsung has not placed the
`reasonableness of Netlist’s product orders at issue.
`
`Samsung has not identified a basis upon which McAlexander’s testimony would
`be relevant, so the Court will preclude him from testifying. Fed. R. Evid. 402. The Court
`declines to address Netlist’s other arguments for excluding McAlexander.
`
`C.
`Samsung’s Motion In Limine No. 1
`
`Samsung asks the Court to preclude Netlist’s damages expert, Michael Akemann,
`on the basis that his testimony lacks foundation, relies on faulty methodology, and
`presents unhelpful qualitative opinions. (Def.’s MIL No. 1, at 6–12.)
`
`Federal Rule of Evidence 702 authorizes “[a] witness who is qualified as an
`expert by knowledge, skill, experience, training, or education” to provide an opinion if
`the expert’s specialized knowledge “will help the trier of fact to understand the evidence
`or to determine a fact in issue.” For an expert’s opinion to be admissible, the expert’s
`opinion must be “based on sufficient facts or data,” the testimony must be the “product
`of reliable principles and methods,” and the expert must have “applied the principles
`9
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 11 of 15 PageID #:
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`7965
`#:12186
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`and methods reliably to the facts of the case.” Fed. R. Evid. 702; see also Waymo LLC
`v. Uber Techs., Inc., No. C 17-00939 WHA, 2017 U.S. Dist. LEXIS 183688, at *21–22
`(N.D. Cal. Nov. 2, 2017) (excluding expert opinion under Rules 702 and 403 because
`expert’s opinion did not rely on specialized knowledge). Federal courts have a
`gatekeeping responsibility to engage in objective screening to ensure that evidence “is
`not only relevant, but reliable.” Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
`589 (1993); Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141 (1999) (clarifying that
`the gatekeeping obligation “applies not only to testimony based on ‘scientific
`knowledge,’ but also to testimony based on ‘technical’ and ‘other specialized’
`knowledge”). The proponent of the expert testimony bears the burden of proving its
`admissibility. United States v. 87.98 Acres of Land, 530 F.3d 899, 904 (9th Cir. 2008).
`
`Samsung contends that Akemann improperly assumes without sufficient factual
`basis that Samsung’s breach of its supply obligation resulted in all of Netlist’s purchases
`of NAND and DRAM products from resellers. (Def.’s MIL No. 1, at 6–7.) Akemann’s
`assumption is not a product of mere speculation: Akemann predicates his opinion on
`facts Netlist submits will be presented at trial. (Akemann Report ¶¶ 81–82, ECF No.
`201-2 (providing factual bases for assumption “that liability will be established such
`that all reseller purchases by Netlist were caused by the alleged breach of contract”);
`see Opp’n to Def.’s MIL No. 1, at 2 (promising to present evidence at trial).) Akemann
`may assume that Netlist will prove at trial that its purchases from third parties are cover
`purchases.
`
`Samsung takes umbrage with Akemann’s methodological decision to use 90-day
`price windows to estimate price premiums for cover purchases. (Def.’s MIL No. 1, at
`8–11.) Although Samsung claims the decision was arbitrary, Akemann offers a cogent
`explanation for the 90-day price window. (See Akemann Report ¶ 87 (“A 90-day time
`frame is consistent with the economic evidence in this case, which I understand
`indicates that Samsung typically adjusts its pricing on a quarterly basis.”).) Samsung’s
`disagreement with Akemann’s methodology presents a basis for cross-examining him,
`10
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 12 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 11 of 14 Page ID
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`7966
`#:12187
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`not for excluding the opinion. See Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010)
`(“Shaky but admissible evidence is to be attacked by cross examination, contrary
`evidence, and attention to the burden of proof, not exclusion.”).
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`Finally, Samsung argues that Akemann’s report provides unsupported opinions
`on (1) the value of Netlist’s patent rights, (2) the value of the supply agreement to
`Netlist, and (3) other consequential harm to Netlist. (Def.’s MIL No. 1, at 11–12.)
`Netlist agrees that the third purported opinion should not be presented given the Court’s
`order at summary judgment precluding Netlist from seeking consequential damages.
`Netlist submits that Akemann has not conducted any valuation of Netlist’s patent rights
`and the JDLA. (Opp’n to Def.’s MIL No. 1, at 6–7.) The report is consistent with
`Netlist’s position; Akemann recites facts from records he reviewed without rendering
`an opinion on valuation. (E.g., Akemann Report ¶¶ 107 (recounting “economic
`evidence on the value of Netlist’s patent rights” to support his opinion on the value of
`supply assurance).) Akemann’s report does not present any improper qualitative
`opinion on these topics.
`
`D.
`Samsung’s Motion In Limine No. 2
`
`Defendant seeks an order precluding Netlist from introducing evidence and
`argument concerning
`three categories of damages Samsung categorizes as
`consequential damages: (1) future loss profits and business opportunities; (2) damages
`incurred from selling shares to fund ongoing operations, and (3) expenses Netlist
`incurred hiring PricewaterhouseCoopers (“PwC”) to help it obtain a refund of the
`withheld portion of the NRE fees. (Def.’s MIL No. 2, at 5.) Netlist agrees that it will
`not claim consequential damages at trial, but it disagrees that the third category of costs
`constitutes consequential damages. (Opp’n to Def.’s MIL No. 2, at 1–4.)
`
`The Court warned that “[m]otions in limine should not be disguised motions for
`summary adjudication of issues.” (Order Re: Jury Trial § II(A)(1).) Motions in limine
`should not be used “as a sweeping means of testing issues of law.” 75 Am. Jur. 2d Trial
`§ 42. To resolve Samsung’s motion would require the Court to decide whether the PwC
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 13 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 12 of 14 Page ID
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`7967
`#:12188
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`expenses are properly categorized as consequential damages. The Court declines to
`summarily adjudicate this issue. Accordingly, the Court will not preclude Netlist from
`putting forth evidence of its expenses in hiring PwC.
`IV. OTHER MATTERS
`
`Given the Court’s rulings on the affirmative defenses and motions in limine, the
`Court orders the following:
`(cid:120) The Court estimates trial will take 2–3 days. Voir dire should conclude by lunch
`on the first day of trial. Each party will have 5.5 hours to present its case
`(including opening, direct examination, cross examination, and closing). Each
`party must reserve at least 30 minutes for closing argument.
`(cid:120) The Court directs the parties to confer on appropriate revisions to Samsung’s
`proposed verdict form, the parties’ witness lists, and the joint exhibit list in light
`of the decisions made in this Order.
`(cid:120) The Court rejects Disputed Instruction Nos. 9–11.
`The Court provides the following guidance on the remaining disputes in the jury
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`instructions:
`(cid:120) The parties agree on the text of Joint Instruction No. 16 (Breach of Contract—
`Damages) and 17 (Breach of Contract—Failure to Mitigate) but dispute when the
`instructions should be presented. (ECF No. 223, at iii.) The Court will give these
`instructions before closing argument.
`(cid:120) The Court orders the parties to confer further on Disputed Instruction No. 1
`(Claims and Defenses). The parties should reach an agreement on a neutral
`statement of the remaining claims and defenses and the effect of the Court’s
`summary judgment ruling.
`(cid:120) Instead of Disputed Instruction No. 2 (Elements of Breach of Contract), the Court
`will read New York Pattern Jury Instruction No. 4:1 without modification. Any
`additional clarifying information can be presented in the Claims and Defenses
`instruction and the parties’ argument.
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 14 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 13 of 14 Page ID
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`7968
`#:12189
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`(cid:120) The Court rejects Disputed Instruction Nos. 3–8 (Breach of Contract—Damages)
`as submitted. The instructions deviate from the model instruction and its
`commentary, borrow from inapposite California law, provide propositions from
`case law, and are argumentative as presented. If the parties agree on statements
`of law provided in the commentary to New York Pattern Jury Instruction No.
`4:20, the Court will read those statements as a single damages instruction,
`appended to Joint Instruction No. 16. Substantive modifications to the
`commentary text will not be permitted.
`(cid:120) The Court takes Disputed Instruction No. 12 (Impeachment Evidence—Witness)
`under advisement. The Court will not read this instruction unless an applicable
`impeachment issue arises at trial.
`The Court orders the parties to meet and confer and submit a revised joint verdict
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`form, revised witness lists, a revised exhibit list, and revised disputed jury instructions
`by November 23, 2021.
`V. CONCLUSION
`
`The Court orders as follows:
`
`Netlist’s Motion In Limine No. 5 is granted. Samsung is precluded from
`introducing the testimony of Joseph McAlexander. The other motions in limine are
`denied subject to the guidance in this Order. All decisions on motions in limine are
`subject to reevaluation at trial. See Fed. R. Evid. 103 advisory committee’s note to 2000
`amendment (“Even where the court’s ruling is definitive, nothing . . . prohibits the court
`from revisiting its decision when the evidence is to be offered.”); Luce v. United States,
`469 U.S. 38, 41–42 (1984) (“[E]ven if nothing unexpected happens at trial, the district
`judge is free, in the exercise of sound judicial discretion, to alter a previous in limine
`ruling.”).
`
`The Court deems abandoned Samsung’s acquiescence, estoppel, and waiver
`affirmative defenses. The Court will enter a final pretrial conference order consistent
`with this decision.
`
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`Case 2:21-cv-00072-JRG-RSP Document 242-2 Filed 12/06/21 Page 15 of 15 PageID #:
`Case 8:20-cv-00993-MCS-ADS Document 243 Filed 11/17/21 Page 14 of 14 Page ID
`7969
`#:12190
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`The parties shall submit a revised joint verdict form, revised witness lists, a
`revised exhibit list, and revised disputed jury instructions by November 23, 2021.
`
`IT IS SO ORDERED.
`
`Dated: November 17, 2021
`
`MARK C. SCARSI
`MARK C SCARSI
`UNITED STATES DISTRICT JUDGE
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