Case 5:19-cv-00036-RWS Document 666 Filed 03/17/21 Page 1 of 5 PageID #: 33344
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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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`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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`On March 10, 2021, the Court held a pretrial conference in this matter and heard argument
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`on the parties’ outstanding disputes. The Court ORDERS as follows:
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`Agreed Motions in Limine (Docket No. 637)
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`The Court GRANTS-AS-AGREED the following motions in limine contained within the
`parties’ proposed final pretrial order:
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` Agreed MIL #1: Preclude references to discovery disputes, suggestions of discovery
`deficiencies or alleged litigation misconduct.
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` Agreed MIL #2: Preclude references, suggestion or argument disparaging Japanese
`companies, people or products due to nationality or ethnicity, and preclude evidence or
`argument regarding choice to testify in native language.
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` Agreed MIL #3: Preclude evidence or argument regarding choice to testify remotely.
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` Agreed MIL #4: Preclude evidence or argument relating to any pretrial motion practice,
`and the Court’s ruling on any motions, or the fact that any party has attempted to exclude
`evidence on a particular matter.
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` Agreed MIL #5: Preclude evidence or argument regarding dropped claims of infringement
`and invalidity.
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` Agreed MIL #6: Preclude any reference to IPRs or EPRs filed against the asserted patents
`or IPRs or EPRs filed against any patents owned by Maxell or Apple, including any
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`I.
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`Case 5:19-cv-00036-RWS Document 666 Filed 03/17/21 Page 2 of 5 PageID #: 33345
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`II.
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`decisions to institute or not institute IPR or EPR proceedings, as well as any reasons
`provided by the PTAB for such denials or institutions.
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` Agreed MIL #7: Preclude references to the expert report drafting process and
`communications between experts and trial teams.
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` Agreed MIL #8: Preclude evidence or argument regarding witness compensation for
`expert witnesses.
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` Agreed MIL #9: Preclude any comment, argument, testimony or evidence stating,
`suggesting or implying that the conduct of the other is responsible or the cause for (1) the
`timing of the trial as it relates to the specific date of the trial; (2) jurors having to come to
`the courthouse and/or serve on the jury during the pandemic; (3) any risk to health or safety
`of the jurors, their families, members of the community or anyone else; or (4) any burden
`or inconvenience to the jurors as it relates to the pandemic or the specific date of the trial.
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`Remaining MIL Issues (Docket No. 648)
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` Maxell’s MIL #3: GRANTED AS AGREED.
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` Maxell’s MIL #4: GRANTED AS AGREED.
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` Maxell’s MIL #5: GRANTED AS AGREED.
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` Maxell’s MIL #8: GRANTED AS AGREED.
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` Apple’s MIL #1: GRANTED AS AGREED via stipulation. See Docket No. 653.
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` Apple’s MIL #6: GRANTED AS AGREED.
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` Apple’s MIL #8: GRANTED-IN-PART AS AGREED, but Maxell may ask Apple’s
`employee witnesses if they own Apple stock.
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`III. Exhibit Objections (Docket No. 651)
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`Maxell’s Objections to Apple’s Proposed Trial Exhibits (Docket No. 639, Ex. A)
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` DX 67, 69, 70: OVERRULED. Maxell may object at trial if Apple does not lay a proper
`foundation.
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` DX 130, 131, 134, 135, 470: Objections WITHDRAWN.
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` DX 311–316: OVERRULED. Apple may present the exhibits at trial as demonstratives.
`The Court will determine whether to admit them into evidence upon Apple’s motion at
`trial.
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`Case 5:19-cv-00036-RWS Document 666 Filed 03/17/21 Page 3 of 5 PageID #: 33346
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` DX 472: Exhibit WITHDRAWN.
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`Apple’s Objections to Maxell’s Proposed Trial Exhibits (Docket No. 639, Ex. C)
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` PX 56: Redacted; objections WITHDRAWN.
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` PX 63–65, 67–68, 70: Objections WITHDRAWN except objections pursuant to FRE 602
`(lack of personal knowledge of sponsoring witness). Objections CARRIED to trial.
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` PX 78: WITHDRAWN by agreement of the parties.
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` PX 57, 58, 59: Objections WITHDRAWN except objections pursuant to FRE 602 (lack
`of personal knowledge of sponsoring witness). Objections CARRIED to trial.
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` PX 73, 74: Objections WITHDRAWN.
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` PX 80, 81, 83, 84, 86: SUSTAINED. Maxell argues that the Court should admit these
`licenses as evidence rebutting Mr. Gunderson’s reliance on Apple’s preference for lump
`sum payments as opposed to running royalties in rendering his damages opinion.
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Case No. 2:13-cv-213-JRG-RSP,
`2015 WL 627430, at *5 (E.D. Tex. Jan. 31, 2015). But evidence of non-comparable
`licenses that will not be considered in the jury’s damages assessment carries a high risk of
`prejudice and juror confusion. FED. R. EVID. 403. Maxell may not present evidence of
`these licenses unless Apple opens the door by arguing its preference for lump sum
`payments. See Rembrandt, 2015 WL 627430, at *5. In that event, the license amount shall
`be redacted, and Maxell may rely on the licenses only as rebuttal evidence of Apple’s lump-
`sum preference. Id.
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` PX 87–89, 90, 97–102: Maxell is ORDERED to submit briefing (no more than five (5)
`pages) on the relevance of the disputed exhibits by 3 p.m. on Friday, March 19, 2021,
`including whether the patents-in-suit are covered by the disputed license clauses contained
`within PX 88. Apple may respond by 3 p.m. on Sunday, March 21, 2021.
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` PX 226: Objection OVERRULED.
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` PX 794: The parties indicated that they would meet and confer on this objection on
`alternative methods for entering the relevant information that does not include use of the
`trial transcript.
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`IV. Additional Issues (Docket No. 637, Section N)
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`Exclusion of Dr. Erdem’s Testimony (Maxell ¶ 8, Apple ¶ 5). Apple argues that Dr.
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`Erdem’s “relative importance” survey opinions are no longer relevant to any issue that remains for
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`trial because Maxell’s damages expert, Carla Mulhern, only uses Dr. Erdem’s results in
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`conjunction with valuation opinions based on “estimated selling price” that the Court struck. See
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`Docket No. 586 at 30–31. Maxell argues that Dr. Erdem’s relative importance results provide
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`qualitative evidence relevant to Ms. Mulhern’s damages analysis.
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`The Court has reviewed the reports of both Dr. Erdem and Ms. Mulhern. Ms. Mulhern
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`discusses Dr. Erdem’s survey results in tandem with her now-stricken quantitative analysis.
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`Mulhern Rpt. ¶¶ 215–223. Dr. Erdem’s “relative importance” survey results, in the absence of
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`Ms. Mulhern’s quantitative analysis, are only peripherally relevant to Maxell’s damages model.
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`The Court therefore GRANTS-AS-MODIFIED Apple’s request to exclude the testimony of Dr.
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`Erdem as irrelevant and confusing to the jury. FED. R. EVID. 403. Maxell may call Dr. Erdem
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`during its rebuttal case if Apple opens the door by arguing that the accused features are not
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`valuable.
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`Apple’s Request for Relief from Maxell’s MIL #10 (Maxell ¶ 10, Apple ¶ 7). In its
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`order on the parties’ motions in limine (Docket No. 634), the Court prohibited Apple from using
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`patents or patent applications to show the state of the art for its § 101 challenges. Id. at 12–13.
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`Apple now asks for limited relief from that order for two patents: Ikeda and Akiyama. “Depending
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`on the nature of the prior art reference and the specific purpose for which it will be used, [the] risk
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`[of jury confusion] may be mitigated.” Allergan, Inc. v. Teva Pharm. USA, Inc., et al., No. 2:15-
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`cv-1455-WCB, Docket No. 395 at 12–13 (E.D. Tex. Aug. 3, 2017). The Court has reviewed the
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`two prior art patents, as well as the expert report, and finds that the references are sufficiently
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`limited in scope as to allow their admissibility for the purpose of demonstrating state of the art
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`under § 101.
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`The Court therefore GRANTS Apple limited relief from its order prohibiting Apple’s
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`experts from referring to patents or patent applications in demonstrating the state of the art for
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`Case 5:19-cv-00036-RWS Document 666 Filed 03/17/21 Page 5 of 5 PageID #: 33348
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`Apple’s § 101 challenges. Dr. Paradiso may testify regarding Ikeda and Akiyama to show the state
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`of the art as to the walking navigation patents (the ’317, ’999 and ’498 patents), but may not refer
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`to Ikeda or Akiyama as evidence of invalidity.
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`.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`SIGNED this 17th day of March, 2021.
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