Case 5:19-cv-00036-RWS Document 634 Filed 02/26/21 Page 1 of 21 PageID #: 32150
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`
`
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`Plaintiff,
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`Defendant.
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`CIVIL ACTION NO. 5:19-CV-00036-RWS
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`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`ORDER
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`
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`Before the Court are Plaintiff Maxell, Ltd.’s Motions in Limine (Docket No. 547),
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`Defendant Apple Inc.’s Motions in Limine (Docket No. 548) and Maxell’s Additional Motion in
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`Limine (Docket No. 602). The Court heard argument on all but the additional motion on November
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`12, 2020.1 For the following reasons, the motions are GRANTED-IN-PART and DENIED-IN-
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`PART. The Court takes each dispute in turn.
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`I.
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`Maxell’s MIL #1
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`Maxell asks the Court to preclude Apple from “entering into evidence, or offering
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`testimony based upon, unauthenticated Sony MVC-FD83 and MVC-FD88 cameras” under Federal
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`Rules of Evidence 901, 401–02, and 403. Docket No. 547 at 1. Maxell submits that Apple’s
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`expert intends to offer invalidity opinions for the ’493 patent based on these cameras, as well as
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`related product manuals, magazine advertisements and Sony sales data. Id. Maxell contends that
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`1 The parties presented argument on the initial motions in limine at the pretrial conference on November 12, 2020.
`Docket No. 582. Due to the COVID-19 global pandemic, jury trial in this matter was reset to March 22, 2021. Docket
`No. 593. Maxell filed its additional motion in limine (Docket No. 602) on December 21, 2020, and supplemental
`authority for its motion on January 8, 2021 (Docket No. 611). Apple has filed a response (Docket No. 616).
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`“Apple has not presented evidence establishing that the manual, advertisements, and sales data are
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`tied to the specific camera samples” and has not provided any other evidence of the cameras’
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`authenticity. Id. at 2–3. Maxell argues that the cameras must be excluded as unauthenticated
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`evidence under FRE 901, as irrelevant under FRE 402 and as prejudicial and confusing under FRE
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`403. Id. at 4.
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`Maxell’s MIL #1 is DENIED. In substance, this motion is duplicative of Maxell’s motion
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`for summary judgment of no invalidity regarding the ’493 patent (Docket No. 370), which the
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`Court denied. See Docket No. 586. Further, Maxell’s objections to the cameras under the Federal
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`Rules of Evidence are not appropriate as a motion in limine. To the extent that Maxell objects to
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`the authenticity or relevance of the Sony cameras, it may submit an exhibit objection.
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`II. Maxell’s MIL #2
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`Maxell moves to exclude “improper expert testimony or supplementation of facts from Dr.
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`Gregory Abowd.” Docket No. 547 at 5. Maxell submits that Dr. Abowd, as author of the prior art
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`Cyberguide system, must confine his testimony to facts in evidence only and may not be portrayed
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`by Apple as “someone knowledgeable in the art, an expert in his field, or anything of the like.” Id.
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`at 6. Maxell argues that “even presenting his background and experience will suggest to the jury
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`that Dr. Abowd must be listened to with particular care given his particularized knowledge.” Id.
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`Apple responds that Dr. Abowd is a fact witness who will testify as to the “bounds” of the prior
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`art Cyberguide system based on his personal knowledge of that system and will not offer any
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`expert opinions. Docket No. 563 at 3–6.
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`Maxell’s MIL #2 is GRANTED-IN-PART and DENIED-IN-PART. Apple has agreed
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`that Dr. Abowd is a fact witness only and will not provide any expert testimony or opinions. Dr.
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`Abowd may provide facts regarding prior art Cyberguide systems “that he personally perceived,”
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`provide facts regarding the prior art Abowd article, including “why, when, where, and to whom it
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`was published,” and testify as the “bounds” of the Cyberguide system as a topic within his personal
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`knowledge. Docket No. 563 at 6–7. Apple shall not refer to Dr. Abowd as an expert witness and
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`he may not provide any opinions that deviate from his personal knowledge or would require an
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`expert report under FRE 702. FED. R. EVID. 701.
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`But Dr. Abowd may testify regarding his background and experience in order to provide
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`an appropriate foundation for his fact testimony. See FED. R. EVID. 602 (a witness must lay a
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`foundation establishing personal knowledge of the facts forming the basis of his or her testimony).
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`Maxell may raise an objection at trial to any testimony it feels is unduly prejudicial, and the Court
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`will entertain proposals for a limiting instruction regarding Dr. Abowd’s role as a fact witness, if
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`necessary.
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`III. Maxell’s MIL #3
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`Maxell moves to exclude “[a]ll references, evidence, testimony (including expert
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`testimony), or argument regarding, or inquiries about or eliciting any testimony suggesting that
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`Google Maps is a non-infringing alternative to the asserted patents.” Docket No. 547 at 7. While
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`Maxell has not specifically accused Google Maps of infringing the asserted patents, Maxell
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`submits that this does not mean that it is a non-infringing alternative, as Apple’s experts claim. Id.
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`at 8. Apple responds that Maxell’s motion is baseless, as its experts do not intend to provide any
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`opinions regarding Google Maps and have not referenced Google Maps in their expert reports.
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`Docket No. 563 at 7.
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`At the pretrial conference, the parties appeared to have reached agreement on the substance
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`of this motion. See Docket No. 590 at 26:22–30:16. The parties are ordered to meet and confer
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`and file a joint status report confirming their agreement with the Court or briefly describing the
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`nature of any remaining dispute no later than Monday, March 8, 2021, at 5 p.m. CST.
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`IV. Maxell’s MIL #4
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`Maxell moves to prohibit Apple from introducing “any references, evidence, testimony
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`(including expert testimony), or argument regarding, or inquir[ing] about or elicit[ing] any
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`testimony comparing any accused instrumentality to any purported prior are device, prior art
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`patent, or any other prior art.” Docket No. 547 at 8. Apple responds that none of its experts intend
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`to assert a “practicing the prior art” defense, and that, to the extent that Maxell takes issue with its
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`experts invalidity theories, those disputes are untimely Daubert challenges. Docket No. 563 at 7–
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`8. Apple contends that its experts will apply the asserted claims to the prior art references under
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`Maxell’s experts’ reading of the claims and the Court’s claim construction, and that it will argue
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`based on this evidence “that were the claims broad enough to be infringed as Maxell asserts, they
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`are invalid.” Id. at 7. This, Apple argues, is a permissible, “limitation-by-limitation anticipation
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`analysis.” Id. (citing HSM Portfolio LLC v. Elpida Memory Inc., No. 11-770-RGA, 2016 WL
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`561179, at *13 (D. Del. Feb. 11, 2016)).
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`At the pretrial conference, counsel for Maxell informed the Court that the parties had
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`reached agreement on this motion. Docket No. 590 at 31:4–6 (“I’ll let [Apple’s counsel] confirm
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`that to be sure, but I think we have reached agreement on this MIL.”). Apple’s counsel then
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`indicated that the parties had reached agreement that Apple’s expert would not be offering a
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`“practicing the prior art” defense. Id. at 31:14-18 (“I think as long as the agreement is limited to
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`that, then I think there’s no dispute here.”). The parties are ordered to meet and confer and file a
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`joint status report confirming their agreement with the Court or briefly describing the nature of
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`any remaining dispute no later than Monday, March 8, 2021, at 5 p.m. CST.
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`V. Maxell’s MIL #5
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`Maxell moves to exclude any evidence, testimony or argument “concerning the quality of
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`the United States Patent and Trademark Office’s (“USPTO”) examination process or its examiners
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`or the percentages of patents that are invalidated in re-examinations or Inter Partes Review.”
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`Docket No. 547 at 10. Maxell submits that any testimony regarding overwork, quotas, awards or
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`promotions at the USPTO would be irrelevant and unfairly prejudicial. Id. Because “[t]he law
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`mandates that patents are presumed valid,” Maxell argues that any testimony that attempts to cast
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`doubt on that presumption should be excluded. Id. at 11. Apple responds that it has “no intention
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`of ‘attacking’ the Patent Office or its examiners.” Docket No. 563 at 9. Apple does intend to
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`argue that the Patent Office did not have the opportunity to consider its prior art references asserted
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`in this case and make “generalizations that the examiner was in error.” Docket No. 563 at 9. Apple
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`also contends that if Maxell argues that the Patent Office “got it right” after “years” of analyzing
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`Maxell’s patent applications, then Apple is entitled to a rebuttal. Id. at 10.
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`Based on counsels’ presentations at the pretrial conference, the parties generally agree on
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`the substance of this motion. Apple agreed not to elicit testimony implying that the Patent Office
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`or its examiners are overworked or overburdened, refer to quotas or promotions, or otherwise
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`“attack” the USPTO or its examiners. Docket No. 563 at 9–10; Docket No. 590 at 35:13–20. But
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`if Maxell attempts to bolster the USPTO or its examiners or imply that the USPTO always issues
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`patents correctly, Apple intends to contradict that testimony. Docket No. 563 at 10; Docket No.
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`590 at 35:13–36:2 (“But if Mr. Stoll gets up on the stand and says that the Patent Office is great,
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`they take a long time to examine patents—in this particular instance, they spent three, four, five
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`years examining the patent, then we have to cross-examine him on the basis of those statements.”).
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`Maxell indicated that Mr. Stoll’s testimony would not bolster the USPTO or its examiners, and
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`agreed that bolstering would “open the door” for Apple to rebut that testimony on cross-
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`examination. Docket No. 590 at 36:12–22. Accordingly, the parties are ordered to meet and confer
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`and file a joint status report confirming their agreement with the Court or briefly describing the
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`nature of any remaining dispute no later than Monday, March 8, 2021, at 5 p.m. CST.
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`VI. Maxell’s MIL #6
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`Maxell moves to exclude any negative references to Maxell as a Japanese company, “patent
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`troll, troll, toll-collector, non-practicing entity or NPE, patent assertion company, litigious” or as
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`being “in the business of filing lawsuits.” Docket No. 547 at 11. Maxell argues that these terms
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`are routinely excluded as prejudicial and irrelevant. Id. Apple agrees not to use the terms “troll,”
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`“patent troll,” “toll collector” or refer in any derogatory way to Maxell as a Japanese company.
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`Docket No. 563 at 10. But Apple argues that the term “non-practicing entity” is neutral, accurate
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`and relevant to the jury’s damages analysis. Id. at 10–11. Apple also contends that Maxell’s
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`motion is overbroad and precludes Apple from even referring to Maxell as a Japanese company.
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`Id. at 11.
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`Maxell’s MIL #6 is GRANTED. This motion does not prohibit Apple from factually
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`asserting that Maxell is a Japanese company, but rather precludes “nefarious or derogatory
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`references to the fact that Maxell is a Japanese company.” Docket No. 547 at 11; Docket No. 590
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`at 45:19–46:1. Apple may provide facts regarding Maxell’s background or business model but
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`may not use the terms “non-practicing entity” or “NPE” or refer to Maxell as “litigious” or as being
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`“in the business of filing lawsuits.” See FED. R. EVID. 403; see also Maxell, Ltd. v. ZTE Corp., et
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`al., No. 5:16-cv-00179-RWS, Docket No. 176 at 1 (E.D. Tex. June 6, 2018).
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`VII. Maxell’s MIL #7
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`Maxell moves to exclude “any lay witness references, evidence, testimony, or argument
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`regarding” infringement and invalidity opinions. Docket No. 547 at 12. Maxell submits that lay
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`witnesses should not be permitted to “testify as to why specific claim language in the asserted
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`patents is not met by the accused products or use claim language while describing the features of
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`prior art products,” as these opinions would constitute expert testimony. Id. Maxell also argues
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`that lay witnesses should be precluded from testifying about any specialized backgrounds or
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`experience that would lend them credibility properly reserved for experts. Id. at 13. Apple
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`responds that its engineers’ testimony regarding infringement is necessary to rebut Maxell’s willful
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`infringement claim. Docket No. 563 at 12. In Apple’s view, testimony regarding its subjective
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`belief that it did not infringe the asserted patents or that they were invalid is best provided by
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`Apple’s engineers. Id. Apple also argues that there is no basis to preclude a fact witness from
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`testifying about his or her relevant background and experience. Id. at 13.
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`Maxell’s MIL #7 is GRANTED-IN-PART and DENIED-IN-PART. Apple’s lay
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`witnesses, including Apple engineers, may not compare the accused Apple products to Maxell’s
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`infringement contentions, nor provide any noninfringement analysis that would require an expert
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`report under FRE 702. FED. R. EVID. 701. Apple’s lay witnesses may provide facts within their
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`personal knowledge about the structure, function or operation of the accused products. Id. These
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`witnesses may also testify as to their background and experience to provide an appropriate
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`foundation for their testimony. See FED. R. EVID. 602 (a witness must lay a foundation establishing
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`personal knowledge of the facts forming the basis of his or her testimony). Maxell may raise an
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`objection at trial to any testimony it feels is unduly prejudicial, and the Court will entertain
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`proposals for a limiting instruction, if necessary.
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`VIII. Maxell’s MIL #8
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`Maxell moves to exclude evidence and testimony regarding Apple’s COVID-19 response
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`efforts as irrelevant and prejudicial. Docket No. 547 at 14. Maxell argues that Apple’s COVID-
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`19 response efforts bear no relevance to any claim or defense at issue in this lawsuit, and would
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`“only be used by Apple to attempt to paint itself in a positive light for the jury.” Id. Apple responds
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`that its damages expert, Lance Gunderson, relies on Apple’s COVID-related features in iOS 13.5
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`to explain the flaws in Maxell’s damages expert’s allocation methodology of her income approach
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`with respect to the ’438 patent. Docket No. 563 at 13. Apple therefore argues that precluding any
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`mention of Apple’s COVID-19 response efforts would wrongly prohibit portions of that testimony.
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`Id.
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`At the pretrial conference, the parties indicated that there was some agreement on this
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`motion, but that the parties could not fully agree on the degree to which Apple should be allowed
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`to discuss its COVID-19 response efforts. Docket No. 590 at 56:14–70:11. The parties are ordered
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`to meet and confer and file a joint status report confirming their agreement with the Court or briefly
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`describing the nature of any remaining dispute no later than Monday, March 8, 2021, at 5 p.m.
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`CST.
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`IX. Maxell’s MIL #9
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`Maxell moves to exclude any references, evidence, testimony or argument regarding the
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`value and propriety of patents acquired from others. Docket No. 547 at 14–15. Maxell submits
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`that Apple should not be allowed to make “any disparaging remarks or arguments implying that
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`(1) it is improper to assert patents acquired from others; (2) it is improper to assert patents without
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`practicing them; and (3) acquired patents are less valuable than other patents.” Id. at 15. Apple
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`responds that it does not intend to offer any of the above-listed statement or arguments, but that
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`precluding the parties from mentioning the “value” of Maxell’s patents is overbroad and vague, as
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`the value of Maxell’s patents is central to the issue of damages. Docket No. 563 at 14.
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`Maxell’s MIL #9 is GRANTED-AS-AGREED. The parties indicated at the pretrial
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`conference that they had reached agreement on this motion. Docket No. 590 at 71:8–14 (“So my
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`understanding is we have agreement on this and I’ll let Apple confirm . . . yes, we have
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`agreement.”).
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`X. Maxell’s MIL #10
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`Maxell asks the Court to prohibit Apple from introducing evidence or arguments based on
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`prior art beyond the 20 prior art references it elected to rely upon at trial in response to the Court’s
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`Focusing Order.2 Docket No. 602 at 1. On November 6, 2020, Apple served its notice under 35
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`U.S.C. § 282(c) disclosing all the prior art references it intends to use at trial to demonstrate
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`“anticipation” and to show “the state of the art.” Docket No. 602-3, Ex. 2. Maxell argues that this
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`notice, which lists 54 patents, 35 printed publications, articles and documents, six prior art systems,
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`and incorporates by reference many others, including “any prior art cited during [the patents’]
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`prosecution,” “Apple’s invalidity contentions and the references cited therein,” “invalidity
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`contentions served on Maxell, Ltd. by any other company . . . and the references cited therein,”
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`“[e]ach IPR petition . . . and the references cited therein,” and “all prior art patents, publications,
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`or products” cited in Apple’s expert reports, and any invalidity expert reports in any other case
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`involving Maxell and the asserted patents, violates the Local Patent Rules and the Court’s Focusing
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`Order. Docket No. 602 at 1–2; Docket No. 602-3, Ex. 2.
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`Apple responds that its § 282 notice complies with the Local Patent Rules, courts in this
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`district routinely allow a defendant to rely on unelected prior art references to show the state of
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`2 Since Maxell’s motion regarding this prior art was filed, Maxell has further narrowed its asserted claims and Apple
`has narrowed its elected prior art references. See Docket Nos. 619, 624.
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`the art, and the Court’s Focusing Order was not intended to prohibit Apple’s ability to show the
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`state of the art using unelected prior art. Docket No. 616 at 1. Apple argues that the state of the
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`art is “a foundational factual inquiry underlying both motivation to combine and § 101 patent
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`eligibility,” and nothing in this district’s Local Patent Rules limit a party’s state-of-the-art evidence
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`to only prior art disclosed in a party’s invalidity contentions under LPR 3-3. Id. at 1–2. To the
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`extent that Maxell is asking the Court to prohibit Apple’s experts from testifying regarding any
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`unelected prior art to show the state of the art, Apple argues that this request is untimely. Id. at 4.
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`Maxell’s MIL #10 is GRANTED-IN-PART and DENIED-IN-PART. Maxell states in
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`its motion that Apple “will use the references solely for the purpose of showing the ‘state of the
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`art’ and/or to pursue invalidity under § 101.” Docket No. 602 at 3. In arguing that this is not a
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`permissible use of prior art, Maxell cites no case from this district. See id.; see also Docket No.
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`611. Maxell instead relies on cases from the Western District of Pennsylvania, the Northern
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`District of Illinois and the Northern District of California. Those districts each have local patent
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`rules that require parties to disclose in their invalidity contentions a detailed explanation of any
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`grounds of invalidity under § 101. See W.D. Penn. LPR 3-4(c)(5); N.D. Ill. LPR 2.3(b)(5); N.D.
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`Cal LR 3-3(d). The Local Patent Rules of this district do not contain such a requirement. Indeed,
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`“courts in the Eastern District have permitted defendants to rely on references that were not
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`included in their invalidity contentions when the references were not proposed as invalidating prior
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`art, but were directed to other purposes, such as showing the state of the art at the time of the
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`invention or rebutting the patentee’s secondary consideration evidence.” Allergan, Inc. v. Teva
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`Pharm. USA, Inc., et al., No. 2:15-cv-1455-WCB, Docket No. 395 at 7 (E.D. Tex. Aug. 3, 2017).
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`That is precisely what Apple seeks to do here.
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`Maxell points to the Focusing Order as its basis for limiting Apple to only its 20 elected
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`prior art references at trial. Docket No. 602 at 1. In Allergan, the plaintiff asked the court to
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`exclude three journal articles that were cited in the defendants’ invalidity contentions but not
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`among the 11 references listed by the defendants as part of the parties’ agreement to narrow the
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`case. No. 2:15-cv-1455-WCB, Docket No. 395 at 16. In rejecting the plaintiff’s request, Judge
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`Bryson found that the “best interpretation” of the parties’ agreement was “that it limits the
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`defendants to asserting the 11 specified prior art references as invalidating references, either alone
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`or in combination, but it does not prohibit the use of other references, in particular those cited in
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`[an expert] report, as supportive evidence indicative of the state of the art.” Id. at 17. That analysis
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`applies here. Neither the Court’s Focusing Order (Docket No. 602) nor its order narrowing the
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`case (Docket No. 619) prohibits Apple’s use of prior art references to show the state of the art.
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`Indeed, the Court’s order narrowing the parties’ contentions explicitly exempts Apple’s § 101
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`challenges from the prior art limitations. Docket No. 619 at 1.
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`Further, limiting Apple’s use of prior art discussed and referenced in its expert reports
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`would be improper at this stage. Many of the cases that Maxell cites involve motions to strike
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`portions of expert reports that discuss unelected prior art references. See, e.g., Medline Indus. Inc.
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`v. C.R. Bard, Inc., No. 1:17-cv-7216 (N.D. Ill. Jan. 5, 2021). To the extent that Maxell is objecting
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`to portions of Apple’s expert reports that rely on unelected prior art references to describe the state
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`of the art, Maxell could have filed a motion to strike on that basis. Maxell did not do so. A motion
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`in limine is not the appropriate remedy for such an objection. There is “even less prejudice” to
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`Maxell where the disputed prior art references are discussed in expert reports that Maxell has
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`known about for months. Allergan, No. 2:15-cv-1455-WCB, Docket No. 395 at 17.
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`This does not mean, however, that Apple can use all of the prior art listed in its § 282 notice
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`at trial. “[T]he Court has often barred parties from using unelected references when the use of
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`those references risks juror confusion. The risk can rise to high levels when the unelected
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`references are patents and patent applications.” Better Mouse Co. v. SteelSeries ApS, No. 2:14-cv-
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`198, 2016 WL 3611560, at *1 (E.D. Tex. Jan. 5, 2016); see also Allergan, No. 2:15-cv-1455-
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`WCB, Docket No. 395 at 13. The use of unelected patent and patent applications “gives rise to
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`the substantial risk that jurors will perceive those patents and patent applications as similar to the
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`elected patent and patent applications and thus as unrebutted evidence of invalidity.” Better
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`Mouse, 2016 WL 3611560, at *1. Depending on the nature of the prior art reference and the
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`specific purpose for which it will be used, this risk may be mitigated. Allergan, No. 2:15-cv-1455-
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`WCB, Docket No. 395 at 12–13 (finding that the proposed prior art references were “clearly
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`offered for . . . limited purposes.”). Exclusion is appropriate where “it appears that the real purpose
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`for offering the prior art reference is to . . . invite the jury to consider the reference for an improper
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`purpose.” Id.
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`Apple specifically lists 54 patents in its § 282 notice and incorporates by reference
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`potentially hundreds more. Docket No. 602-3, Ex. 2. Each of these patents and patent applications,
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`considered alone, carry a substantial risk of jury confusion; the sheer number of patents listed only
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`heightens that risk. The Court is unable to determine a specific, limited purpose for which more
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`than 50 patents and patent applications may be used other than to invite the jury to improperly
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`consider them as evidence of invalidity. Any prejudice to Apple in excluding the use of these
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`references is minimal. Apple is free to use the myriad other prior art publications, articles,
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`documents, products and systems identified in its § 282 notice as evidence of the state of the art.
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`Case 5:19-cv-00036-RWS Document 634 Filed 02/26/21 Page 13 of 21 PageID #: 32162
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`Accordingly, Maxell’s additional motion in limine is GRANTED-IN-PART and
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`DENIED-IN-PART. Apple and its experts may rely on unelected prior art contained in its § 282
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`notice, excluding patents and patent applications, for the limited purpose of providing evidence
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`regarding state of the art in its § 101 challenges, but may not rely on any unelected references as
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`invalidating prior art.
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`XI. Apple’s MIL #1
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`Apple asks the Court to exclude references to Apple’s size, financial resources, market
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`power, or overall financial numbers, including overall revenues and profits earned by Apple from
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`selling the accused products. Docket No. 548 at 1. Maxell agrees not to refer to market
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`capitalization, stock price, cash reserves, revenues associated with unaccused products and
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`Apple’s ability to pay Maxell’s alleged damages, but contends that Apple’s market share and
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`volume of sales is directly relevant to the hypothetical negotiation framework and availability of
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`non-infringing alternatives. Docket No. 564 at 1–2.
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`Apple’s MIL #1 is GRANTED-IN-PART as agreed. At the pretrial conference, the parties
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`discussed the possibility of stipulating to average sales price of each accused device, obviating the
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`need for Maxell to refer to Apple’s volume of sales. Docket No. 590 at 82:12–17, 84:15–17,
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`85:22–86:4 (“[I]f they stipulate to the average selling price, the revenue won’t come in.”). The
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`parties also discussed agreeing to referring to Apple’s market share as a percentage or relative size
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`rather than a total number of sales. Id. at 84:20–85:17. Accordingly, the parties are ordered to
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`meet and confer and file a joint status report confirming their agreement with the Court or briefly
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`describing the nature of any remaining dispute no later than Monday, March 8, 2021, at 5 p.m.
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`CST.
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`Case 5:19-cv-00036-RWS Document 634 Filed 02/26/21 Page 14 of 21 PageID #: 32163
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`XII. Apple’s MIL #2
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`Apple asks the Court to exclude references “about other litigations, administrative
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`proceedings, investigations, or accusations, including other U.S. and foreign proceedings between
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`Maxell and Apple, the prior litigation between Maxell and ZTE (including its outcome), or any
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`other litigations or accusations involving Apple and its counsel.” Docket No. 548 at 3. Maxell
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`responds that it does not oppose Apple’s motion with respect to other litigations between it and
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`Apple, but that granting Apple’s motion as written would prevent Maxell from introducing any
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`licenses to the asserted patents that bear connection to previous litigations. Docket No. 564 at 3.
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`Maxell’s damages expert, Dr. Carla Mulhern, relies on prior licenses in calculating a reasonable
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`royalty in this case. Id. Further, Maxell contends that the ZTE verdict is necessary to rebut Apple’s
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`arguments challenging Maxell’s secondary considerations of non-obviousness for the asserted
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`patents. Id. at 4.
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`Apple’s MIL #2 is GRANTED. Neither party will be permitted to refer to other litigations
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`or parallel proceedings, including any other litigations between Maxell and Apple or the ZTE jury
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`verdict. Evidence of prior verdicts “can be prejudicial and must be treated with great care,” but
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`“it is admissible if it is relevant to a material issue in the case and its use is limited to the purpose
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`for which it is relevant.” Sprint Communications Co. v. Time Warner Cable, Inc., 760 F. App’x
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`977, 980 (Fed. Cir. 2019). Maxell argues that the ZTE verdict is relevant to rebutting Apple’s
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`challenges to its secondary considerations of non-obviousness. Docket No. 564 at 4.
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`“The [ZTE] verdict may be relevant, but it is unfairly prejudicial and confusing.” VirnetX
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`Inc., et al. v. Apple Inc., No. 6:12-cv-00855-RWS, Docket No. 937, at 8 (E.D. Tex. Sept. 1, 2020).
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`While the prior verdict involved some of the same patents asserted here, its probative value is
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`minimal, as the ZTE case involved different parties, accused products, witnesses and prior art.
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`And admitting the ZTE verdict would unfairly prejudice Apple by “invit[ing] the jury here to defer
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`to the [ZTE] jury’s verdict, rather than discharging their duty to resolve the current dispute.” Id.
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`Such a result would be inappropriate and constitutes unfair prejudice. FED. R. EVID. 403.
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`At the pretrial conference, Apple indicated that it was not opposed to allowing references
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`to licenses or settlement agreements, and that this motion was not intended to prohibit such
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`references. See Docket No. 590 at 86:14–22 (“[T]o the extent that our motion suggested it, we’re
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`not at all seeking to exclude settlement agreements. The ZTE settlement agreement, I think both
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`experts talk about it.”); 89:15–21 (“Maxell’s expert . . . will say these patents have value, look at
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`all the people who have taken licenses to them, including ZTE, and that is not something we’re
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`seeking to prevent, obviously.”). This order therefore does not prohibit references to licenses or
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`settlement agreements resulting from previous litigations.
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`XIII. Apple’s MIL #3
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`Apple asks the Court to prohibit Maxell from presenting evidence or argument about
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`Hitachi’s history, licensing practices and discussions between Hitachi and Apple to which Maxell
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`was not a party. Docket No. 548 at 4. Maxell responds that it is not relying on “hearsay
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`statements,” but rather documents and materials held by both Apple and Hitachi in the ordinary
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`course of business and produced by both parties in this case. Docket No. 564 at 4–5. Regarding
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`Hitachi’s history and licensing practices, Maxell responds that it is not “placing itself in Hitachi’s
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`shoes,” but relying on Maxell’s direct knowledge of Hitachi’s history based on its experience—
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`and that of its predecessor HMX—working with Hitachi. Id. at 6. Further, any evidence of
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`Hitachi’s licensing practices is not offered to prove Hitachi’s standard rate or licensing practices,
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`but rather to explain how Maxell arrived at its own standard license rate for the smartphone patent
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`portfolio. Id.
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`Apple’s MIL #3 is DENIED. The documents detailing the discussion between Hitachi and
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`Apple that Apple seeks to prohibit have been produced by Apple in this case, and there is no
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`genuine dispute as to their authenticity. See Docket No. 590 at 93:25–94:10. These documents,
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`used to prove notice, do not implicate issues of hearsay, and Maxell agrees that it will not offer
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`any details regarding this discussion beyond what is reflected in those documents. Docket No.
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`564 at 4–5. Maxell has also agreed that it will not place itself in Hitachi’s shoes or tout Hitachi’s
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`accomplishments as its own, but rather refer to Hitachi, when necessary, as the previous owner of
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`the asserted patents. Id. at 6. Maxell shall limit its discussion of Hitachi’s licensing practices to
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`on