Case 6:21-cv-00898-ADA Document 216 Filed 09/28/23 Page 1 of 14
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`UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF TEXAS
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`WACO DIVISION
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`Plaintiff,
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`v.
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`Case No. 6:21-cv-00898-ADA
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`JURY TRIAL DEMANDED
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`ALMONDNET, INC.,
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`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
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`Defendants.
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`PLAINTIFF’S OPPOSITIONS TO DEFENDANTS’ MOTIONS IN LIMINE
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`Case 6:21-cv-00898-ADA Document 216 Filed 09/28/23 Page 2 of 14
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`TABLE OF CONTENTS
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`I. DEFENDANTS’ MOTION IN LIMINE NO. 1: Defendants’ motion concerning
`“Amazon’s overall advertising revenue” should be denied to the extent that it prevents
`AlmondNet and its damages expert from discussing Amazon’s
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`revenue and conveying that such revenue is not all of Amazon’s advertising revenue..........1
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`II. DEFENDANTS’ MOTION IN LIMINE NO. 2: Defendants’ motion to preclude any
`mention of AlmondNet’s affiliate operating companies should be denied, as both
`parties rely on agreements with these companies and Amazon can identify no prejudice
`except to its plans to smear AlmondNet. ................................................................................3
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`III. DEFENDANTS’ MOTION IN LIMINE NO. 3: The Court should deny Amazon’s
`motion attempting to conceal the fact that one of its witnesses changed his testimony
`during deposition based on discussions with counsel. ............................................................5
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`IV. DEFENDANTS’ MOTION IN LIMINE NO. 4: Defendants’ motion to preclude
`arguments and evidence relating to enhancement and an exceptional case finding
`should be denied as overbroad and not tailored to the prejudice Amazon seeks to
`prevent.....................................................................................................................................8
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`Case 6:21-cv-00898-ADA Document 216 Filed 09/28/23 Page 3 of 14
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`TABLE OF AUTHORITIES
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`Cases
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`Bryant v. Mattel, Inc.,
`573 F. Supp. 2d 1254 (C.D. Cal. 2007) ..................................................................................... 7
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`City of El Paso v. El Paso Entm’t, Inc.,
`464 F. App’x 366 (5th Cir. 2012) .............................................................................................. 5
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`Geders v. United States,
`425 U.S. 80 (1976) .................................................................................................................... 7
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`Moore v. State Farm Mut. Auto. Ins. Co.,
`520 F. Supp. 2d 815 (E.D. La. 2007) ........................................................................................ 6
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`United States v. Rhynes,
`218 F.3d 310 (4th Cir. 2000) ..................................................................................................... 7
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`Statutes
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`35 U.S.C. § 285 ............................................................................................................................. 8
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`I.
`DEFENDANTS’ MOTION IN LIMINE NO. 1: Defendants’ Motion Concerning
`“Amazon’s Overall Advertising Revenue” Should Be Denied to the Extent that It Prevents
`AlmondNet and its Damages Expert From Discussing Amazon’s
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`Revenue and Conveying that Such Revenue Is Not All of Amazon’s Advertising Revenue.
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`AlmondNet made clear during conferences of counsel and in written communications that
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`it does not intend “to tell the jury about Amazon’s total advertising revenue, profits, and other
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`related indicators of financial success in Amazon’s advertising business, such as its overall relative
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`place in the digital advertising market.” See Mot. (Dkt. No. 171) at 1; Hayden Decl. ¶¶4, 6, 9, 10;
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`Ex. A. Rather, AlmondNet indicated to Amazon, in writing, it was willing to stipulate as follows:
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`“No argument, evidence, or testimony regarding Amazon’s overall advertising revenue,” so long
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`as “Amazon will not oppose AlmondNet’s use of overall
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` advertising revenue as well
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`as AlmondNet stating the fact that Amazon’s overall
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` advertising revenue is not all of
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`Amazon’s advertising revenue.” Hayden Decl. ¶9; Ex. A at 1-2. Amazon indicated by email
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`“Amazon will not oppose AlmondNet’s use of overall
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` advertising revenue.” Ex. A at 1.
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`Therefore, the only remaining possible1 dispute is whether AlmondNet and its damages expert
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`may state the simple fact that Amazon’s
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` advertising revenue is not all of Amazon’s
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`advertising revenue. Presentation of this fact does not bring any prejudice to Amazon.
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`Taking a step back, Amazon correctly states that
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` Mot. at 1. Amazon also correctly states that “AlmondNet’s damages
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`expert, Mr. Jim Bergman, does not use [Amazon’s total advertising revenue] for a calculation of
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`1 AlmondNet has never gotten a response concerning whether Amazon takes issue with
`AlmondNet and its damages expert stating this fact, despite following up numerous times; Amazon
`has also provided no reason for why it believes this fact should be excluded from the trial. Ex. A
`at 1-2; Ex. B; Hayden Decl. ¶¶7, 10, 12; see Mot. at 1-3.
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`damagesin this case.” Jd. Indeed, Mr. Bergman “used Amazon’si advertising
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`financials as the starting point for [his] analysis, as it represented the revenue mostclosely tied to
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`the patents-in-suit,” excluded non-accused products, and further apportioned from that Jy
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`HE starting point. Ex. C 4228; see generallyid. 4228-264, 417-437. Of course,
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`AlmondNet and Mr. Bergman needto be able to explain to the jury what revenue underlies the
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`damages calculation, and Amazon does not appear to oppose presentation of such argument,
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`evidence, and testimony. Ex. A at 1.
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`In addition, AlmondNet and Mr. Bergman need to makeclear to the jury that this yyy
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`BEE starting pointis, in fact, not all of Amazon’s overall advertising revenue, at least
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`in response to criticisms from Amazon and its damages expert W. Christopher Bakewell. For
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`example, Mr. Bakewell alleges that “lls
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`aN
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`S 1.397; see also Dkt. No.
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`126 at 5. AlmondNetand Mr. Bergman thus need to explain whyhis starting point was appropriate,
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`and a key reason is that he did not start with Amazon’s overall advertising revenue as Mr. Bakewell
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`claims, but rather a portion of that revenue moreclosely tied to infringement.
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`Critically, Amazon notonly failed to address any prejudice that it would face from this fact
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`being conveyed, but it also failed to address this issue at all; rather, it only addresses alleged
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`prejudice from presentation of, for example, the amounts ofAmazon’s overall advertising revenue
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`and the ratio of the overall revenue to theJ revenue. See Mot. at 1-3. As AlmondNet
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`has already agreedthat it will not present the information that is the subject of Amazon’s motion,
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`and has already made clear that it is willing to include a stipulation to that effect in the parties’
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`Joint Pre-Trial Order, Amazon’s motion should be denied.
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`II.
`DEFENDANTS’ MOTION IN LIMINE NO. 2: Defendants’ Motion to Preclude Any
`Mention of AlmondNet’s Affiliate Operating Companies Should Be Denied, as Both Parties
`Rely on Agreements with These Companies and Amazon Can Identify No Prejudice Except
`to Its Plans to Smear AlmondNet.
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`AlmondNet subsidiaries Intent IQ and Datonics are highly relevant to both parties’
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`damages cases. As Amazon points out, AlmondNet’s damages expert relies on Intent IQ
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`agreements. But Amazon does not mention that Amazon’s own damages case is based on licenses
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`to which Intent IQ and Datonics are parties. One would think Amazon would identify some
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`extreme prejudice to justify exclusion of not only this relevant evidence but of any mention of
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`these companies, but instead Amazon admits that wants to exclude any mention of Intent IQ and
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`Datonics because it wants to be able to falsely represent, without contradiction, that AlmondNet
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`does not, as Amazon puts it, “conduct[] a bona-fide business.” Mot. at 5. Amazon’s motion should
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`be denied.
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`Both Parties’ Damages Experts Rely on Intent IQ and Datonics Agreements
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`Intent IQ and Datonics
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`E at 23:10-24:6.
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` Id. at 265:4-266:8, 268:8-22.
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`Amazon’s damages expert Mr. Bakewell, bases his reasonable royalty opinion on
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`For example,
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`2 See Dkt. No. 129 at 2, 4 (summarizing Mr. Bakewell’s opinion).
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`F at 270 (underlining added). The agreement further provides for
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`” Ex.
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`. Id. at 274 (Section 3.5).
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`AlmondNet’s damages expert Mr. Bergman relies on a different set of Intent IQ
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`agreements. In his report, Mr. Bergman determines the incremental benefit of Amazon’s use of the
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`infringing features, and then analyzes how the parties to the hypothetical negotiation would divide
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`this incremental benefit. Mr. Bergman finds Intent IQ’s contracts informative because these
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`agreements are
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`. Ex. C ¶¶ 426, 428-429; Ex. G at
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`2775 (exemplary Intent IQ
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` cited by Mr. Bergman stating:
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`). Moreover, both Intent IQ’s
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` product and Amazon’s
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`accused product “
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`.” Ex. C ¶427. While Intent IQ would
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`not be a party to the hypothetical negotiation, Mr. Bergman opines that because it is
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`, it
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`would have been reasonable for the parties to the hypothetical negotiation to look, under the book
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`of wisdom, to later Intent IQ agreements that specifically address the issue of
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`. Id. ¶¶ 125-126, 426-429.
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`The Only Real Prejudice Amazon Identifies Is to Its Ability to Smear AlmondNet
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` The fact that both parties’ damages experts rely on Intent IQ and Datonics agreements
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`illustrates the relevance of these AlmondNet Group operating companies to this case. The only
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`prejudice Amazon can articulate requiring the exclusion of not only this evidence but any mention
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`of Intent IQ and Datonics is that “any such evidence will [(a)] incorrectly affect the jury’s
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`understanding of the hypothetical negotiation as between operating companies conducting a bona-
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`fide business, rather than a non-practicing entity” or (b) “give the false impression that Amazon
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`harmed AlmondNet’s thriving business and that such hypothetical negotiation should compensate
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`AlmondNet for that alleged harm.” Mot. at 5. The latter alleged prejudice is simply speculation,
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`and assumes the jury will ignore this Court’s instructions to the jury on damages. The former
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`alleged prejudice gives Amazon’s real goal away, as it makes clear that Amazon wants to tell the
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`jury that AlmondNet’s research and licensing business is not a good faith line of business, and
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`does not want the facts regarding the businesses making up the AlmondNet Group getting in the
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`way.
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` None of the grab-bag of cases cited by Amazon support this requested relief (see Mot. at
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`4 n.1), as all stand only for the principle that the Court may exclude irrelevant evidence or
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`evidence that is actually prejudicial or likely to confuse the jury, neither of which is true here.
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`For example, the Fifth Circuit in City of El Paso v. El Paso Entertainment, Inc. excluded a third
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`party that had no relevant knowledge from testifying, not relevant party testimony and evidence
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`relating to affiliated third parties. 464 F. App’x 366, 379 (5th Cir. 2012). Amazon’s motion
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`should be denied.
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`III. DEFENDANTS’ MOTION IN LIMINE NO. 3: The Court Should Deny Amazon’s
`Motion Attempting to Conceal the Fact that One of its Witnesses Changed His Testimony
`During Deposition Based on Discussions with Counsel.
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`Amazon wishes to hide from the jury the fact that its counsel instructed a fact witness to
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`change his testimony during a deposition, and seeks the Court’s blessing in this attempt. Amazon’s
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`MIL should be rejected because (1) privilege is not applicable to Amazon’s behavior, (2) Amazon
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`has waived any otherwise-applicable privilege, and (3) in any event, AlmondNet can at least
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`introduce the fact that Daniel Jaye communicated with counsel during the deposition recess
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`without addressing the substance of that communication.
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`By way of factual background, Mr. Jaye is a
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`. Ex. H at 13:21-24. Amazon
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` One critical issue in this litigation is whether Engage
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` At the questioning of AlmondNet’s counsel, Mr. Jaye testified that Engage did not
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`. Id. at 62:19-16 (“Q. So is it fair to say that when the Engage Knowledge
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`? A. I wouldn’t think that’s fair to say ….”).
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`After a recess, when counsel for Amazon asked Mr. Jaye the same thing, however, he
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`testified precisely the opposite. Id. at 93:24-94:5, 95:24-96:7 (testifying that “Engage Knowledge
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`”); see also id. at 98:9-13. Mr. Jaye refused to answer whether
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`his revised testimony was “based off of instructions from counsel,” following his counsel’s
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`privilege instruction. Id. at 97:15-98:13.
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`While attorneys may consult with and prepare witnesses for deposition, they may not use
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`privilege to block inquiries as to whether witness coaching occurred during a deposition. See
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`Moore v. State Farm Mut. Auto. Ins. Co., 520 F. Supp. 2d 815, 826 (E.D. La. 2007) (“[T]he Court
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`finds that whether or not the witness was coached is a matter to be explored on cross-examination
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`and ultimately weighed by the finder of fact.”). Thus, exploration of whether a witness’ testimony
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`was coached is proper, as the Supreme Court has expressly addressed. See Geders v. United States,
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`425 U.S. 80, 89 (1976) (“A prosecutor may cross-examine a defendant as to the extent of any
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`‘coaching’ during a recess, subject of course, to the control of the court. Skillful cross-
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`examination could … raise[e] questions as to the defendant’s credibility, if it developed that
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`defense counsel had in fact coached the witness as to how to respond on the remaining direct
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`examination and cross-examination.”) (emphases added); see also United States v. Rhynes, 218
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`F.3d 310, 320 (4th Cir. 2000) (endorsing Geders).3 Thus, Amazon cannot claim privilege over
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`whether Mr. Jaye’s testimony as a fact witness was influenced by counsel during the deposition,
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`and Amazon does not provide any authority even allegedly supporting such a claim of privilege.
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`Second, even if any privilege did apply, Amazon waived any such privilege by using the
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`allegedly privileged communications to support its motion. Specifically, Amazon stated that “Mr.
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`Jaye clarified his previous answer because the question posed by counsel was not clear as to the
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`specific meaning of certain terms used in the asserted patents.” Mot. at 6 n.3. But Mr. Jaye did not
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`provide those reasons during his deposition. The allegation in Amazon’s third footnote, to the
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`extent true, is based on communications between counsel for Amazon and Mr. Jaye regarding his
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`testimony, and any privilege otherwise applicable to those communications is now waived.
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`Finally, even if privilege were proper and not waived, AlmondNet should at very least be
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`able to present evidence, including through cross-examination at trial, that Mr. Jaye spoke with his
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`attorneys during the break (as he must have done for counsel to assert privilege), without
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`addressing the substance of those discussions. See Bryant v. Mattel, Inc., 573 F. Supp. 2d 1254,
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`1274 (C.D. Cal. 2007) (“Questions that do not seek the substance of attorney-client
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`3 The prohibition on improper coaching during a deposition is consistent with the OGP, which
`prevents influencing witness testimony during a deposition through the use of improper speaking
`objections. OGP 4.3 at General Issue 3. Of course, witness coaching in secret, off-the-record
`discussions (i.e., the type of coaching Amazon purports to shield with claims of privilege) is even
`more prone to abuse than witness coaching on the record that the OGP explicitly prohibits.
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`communications generally do not implicate the attorney-client privilege.”) (emphasis added).
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`IV. DEFENDANTS’ MOTION IN LIMINE NO. 4: Defendants’ Motion to Preclude
`Arguments and Evidence Relating to Enhancement and an Exceptional Case Finding Should
`Be Denied as Overbroad and Not Tailored to the Prejudice Amazon Seeks to Prevent.
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`During multiple conferences of counsel and follow-on communications, the parties
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`discussed the substance and intent of Amazon’s fourth motion. Hayden Decl. ¶¶3, 5, 6, 8, 9, 11;
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`Ex. A at 1, 4, 6, 9. To address Amazon’s concerns, AlmondNet proposed the following three
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`stipulations, which are tailored to mitigate the risk of unfairly tainting the jury with arguments
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`about enhanced damages or an exceptional case finding and fees, and make clear that AlmondNet
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`has no intention to present arguments and evidence relevant only to enhanced damages and an
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`exceptional case finding to the jury (Hayden Decl. ¶¶9, 11):
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`1. No argument or suggestion by any party that any party is seeking, intends
`to seek, or will seek enhanced damages or a finding that this case is
`exceptional under 35 U.S.C. § 285
`2. No testimony, argument, or evidence that relates only to enhanced damages
`3. No testimony, argument, or evidence that relates only to whether or not the
`case is exceptional under 35 U.S.C. § 285
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`Amazon has neither agreed to nor declined these three proposed stipulations. Id. ¶¶10-12;
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`Ex. B. Nor has Amazon identified any additional issue that would be otherwise unresolved by the
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`adoption of AlmondNet’s three proposed stipulations. In any event, Amazon’s motion should not
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`be granted because it imposes an overbroad restriction on evidence and argument that is not
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`commensurate to any reasonable need for avoiding prejudice or unfairness at trial.
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`In particular, Amazon, during meet and confer, refused to agree that the requested relief of
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`this motion would not preclude AlmondNet from making arguments and presenting evidence
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`relevant to jury trial issues. For example, its motion states that the “Court should preclude any
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`reference to issues directed to whether this is an ‘exceptional case,’ under § 285.” Mot. at 9.
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`Amazon’s language here is broad enough to preclude arguments and evidence about “issues,”
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`properly before the jury, which could also be considered by the Court on a request for an
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`exceptional case finding, such as the strength and weaknesses of Amazon’s invalidity and non-
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`infringement positions. Importantly, Amazon did not agree that its MIL would not preclude
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`AlmondNet from arguing about the weakness of Amazon’s invalidity and non-infringement
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`positions to the jury, which is both a proper jury argument and relevant to jury decisions like
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`]infringement, validity, and willfulness. See Hayden Decl. ¶11. And without either agreement or
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`clarification from Amazon on the intended scope of its motion, AlmondNet obviously cannot
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`stipulate to it where it could be later used by Amazon to unfairly prevent AlmondNet from making
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`arguments proper for a jury to hear and necessary to prove its case.
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`Separately, it makes no sense to find, as Amazon also argues, a separate pleading
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`requirement for a patentee plaintiff to, at the outset of a case, to specifically use the magic words
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`“enhanced damages” in its request for relief. AlmondNet properly demanded “monetary damages
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`in an amount adequate to compensate for Defendant’s infringement.” See, e.g., Dkt. No. 68 ¶60.
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`This is sufficient to support a request for enhanced damages by AlmondNet after willful
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`infringement is determined. This issue is also inappropriate to raise pre-trial, as enhanced damages
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`is undisputedly not a jury issue; if Amazon wants to raise it, it should do so in post-trial briefing.
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`Finally, AlmondNet agrees that the parties should not make arguments or introduce
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`evidence solely related to and in support of issues which will not be decided by the jury. This
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`includes arguments the parties may make specifically concerning enhanced damages or requesting
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`an exceptional case finding from the Court. This is why AlmondNet proposed the three above-
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`listed stipulations to Amazon, and, despite Amazon’s refusal to agree or even respond to
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`AlmondNet’s proposal, AlmondNet remains willing to agree to its three proposed stipulations to
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`obviate the parties’ dispute about concerning this motion. Otherwise, the Court should deny
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`Amazon’s motion, as it is overbroad and would exclude evidence that is properly before the jury.
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`Date: September 22, 2023
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`Respectfully submitted,
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`By: /s/ Amy E. Hayden
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`Reza Mirzaie
`Marc A. Fenster
`Benjamin T. Wang
`Adam Hoffman
`James A. Milkey
`Amy E. Hayden
`James S. Tsuei
`Jonathan Ma
`Daniel B. Kolko
`Jason M. Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bwang@raklaw.com
`ahoffman@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`jma@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
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`Counsel for Plaintiff ALMONDNET, INC.
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on September 22, 2023, counsel of record who have appeared in this case are being served
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`with a copy of the foregoing via email.
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`/s/ Amy E. Hayden
` Amy E. Hayden
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