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`Case 1:20-cv-00393-LO-TCB Document 972-7 Filed 02/11/22 Page 1 of 4 PagelD# 27525
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`EXHIBIT G
`EXHIBIT G
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`

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`
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`Patent Case Management
`Judicial Guide
`Third Edition
`
`Peter S. Menell
`Koret Professor of Law
`Berkeley Center for Law & Technology
`University of California, Berkeley School of Law
`
`James Pooley
`Orrick, Herrington &
`Sutcliffe LLP
`
`Matthew D. Powers
`Tensegrity Law Group LLP
`
` Lynn H. Pasahow
` Fenwick & West LLP
`
`
`
`
` Steven C. Carlson
`Kasowitz, Benson, Torres
` & Friedman LLP
`
` Carolyn Chang
` Fenwick & West LLP
`
`Anita Choi
`
`Morrison & Foerster LLP
`
`
`
`
` Allison A. Schmitt
`University of California,
`
`Berkeley
`
`
`Jeffrey G. Homrig
`Latham & Watkins LLP
`
`George F. Pappas
`Covington & Burling LLP
`
`Colette Reiner Mayer
`Marc David Peters
`Morrison & Foerster LLP Morrison & Foerster LLP
`
`in collaboration with
`John Fargo
`U.S. Department of
`Justice
`
`
`Michael Sawyer
`Covington & Burling LLP
`
`Michael R. Ward
`Morrison & Foerster LLP
`
`Patricia Young
`Latham & Watkins LLP
`
`Federal Judicial Center 2016
`This Federal Judicial Center publication was undertaken in furtherance of the Center’s statu-
`tory mission to develop educational materials for the judicial branch. While the Center re-
`gards the content as responsible and valuable, it does not reflect policy or recommendations
`of the Board of the Federal Judicial Center.
`
`

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`Patent Case Management Judicial Guide, Third Edition
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`known only to a few artisans. In this example, the inconsistency—and the blow to
`credibility—has nothing to do with the ultimate conclusion that the expert reached
`about claim construction; the testimony is simply inconsistent. As a result, the court
`should consider allowing the use of such prior opinions based on a case-by-case bal-
`ancing of probative value and potential prejudice. In some instances, the court
`should consider deferring decision on the motion until the direct examination of the
`expert is complete so as to better appreciate the import of the alleged inconsistency.
`
`7.5.4.3 Motion to Bar Evidence/Argument About Dropped
`Claims/Patents
`This motion is brought by the patentee and seeks to preclude any reference to
`the fact that the patentee initially asserted more claims or patents than it is pursuing
`at trial. Typically, the patentee argues that the claims/patents were dropped for effi-
`ciency and that this change does not reflect the merits of the liability arguments con-
`cerning those claims/patents in any way. As a result, the argument goes, this fact has
`no probative value. Moreover, there is a substantial risk of prejudice because the jury
`is likely to assume that the claims were dropped because the patentee believed them
`to be invalid or not infringed.
`Accused infringers typically argue that the fact that the patentee dropped claims
`or patents does have probative value, at least when willful infringement or an anti-
`trust counterclaim is asserted. In the former situation, the fact that the patentee ini-
`tially asserted additional/different patents or claims before pursuing the pa-
`tents/claims asserted at trial may affect the reasonableness of the accused infringer’s
`response. Therefore, as the argument goes, this fact is relevant to whether the ac-
`cused infringer reasonably believed that it had a right to continue its allegedly in-
`fringing conduct. In the antitrust counterclaim scenario, the counterclaim plaintiff
`may seek to show that the patentee has engaged in an unwarranted campaign to in-
`still fear, uncertainty, and doubt into the marketplace by falsely asserting patent in-
`fringement.
`There is no clear-cut way to resolve this motion. The outcome is highly fact-
`dependent. The accused infringer may in some cases legitimately seek to use the in-
`formation to rebut willfulness or for some other purpose. Even so, this motion
`should be decided before opening statements. In most cases, waiting for testimony to
`be elicited during trial will not provide additional clarity about which side has the
`better argument. For antitrust counterclaims, this issue weighs in favor of bifurcating
`the trial (affirmative patent infringement claims tried first; antitrust counterclaims
`addressed in a second trial phase) so as to avoid confusing the jury.
`
`7.5.4.4 Motion to Bar Disclosure that the Patentee Seeks an
`Injunction
`This motion is brought by the patentee and seeks to preclude any evidence or
`argument to the jury disclosing that the patentee seeks an injunction. Because a re-
`quest for an injunction seeks equitable relief, it is decided by the court, rather than
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`Chapter 7: Pretrial Case Management
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`by the jury. Typically, the patentee argues that disclosing the request for an injunc-
`tion has no probative value and would prejudice the plaintiff by potentially generat-
`ing sympathy that could affect the jury’s decision on liability. The accused infringer
`often responds that mentioning the possibility of an injunction is no more prejudi-
`cial than disclosing the size of the damages award sought (which, of course, is dis-
`closed, unless the case is bifurcated), and that the information may be relevant to
`other issues in the case, such as the accused infringer’s state of mind for willfulness
`(e.g., that the accused infringer evaluated the patent seriously because it knew the
`plaintiff would be seeking an injunction). If the relevance to an issue before the jury
`is shown, the motion should generally be denied. But the court should evaluate the
`motion carefully to discern whether, given the specific facts of the case, the risk of
`prejudice trumps the probative value of the argument or evidence.
`
`7.5.4.5 Motion to Preclude Reference to Related Proceedings in
`the Patent Office
`This motion is often, although not always, brought by the patentee who seeks to
`preclude any reference to a pending reexamination or reissue involving the patent-
`in-suit. Typically, the argument is that the parallel proceedings have no relevance
`until they are completed—when the claims are ultimately issued intact, modified, or
`rejected. Moreover, there is considerable risk that the jury will misunderstand the
`significance of the proceedings and will inappropriately weigh this evidence. In re-
`sponse, the opposing party typically counters that the parallel proceeding has sub-
`stantial probative value concerning invalidity or inequitable conduct. For example, if
`the Patent Office decides to reexamine the patent-in-suit because of a particular pri-
`or art reference, that fact supports the argument that the reference is material, which
`is relevant to inequitable conduct. Conversely, if the Patent Office reissued a patent
`over a prior art reference, this supports the argument that the reference is not mate-
`rial. See, e.g., Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226,
`1237 (Fed. Cir. 2003).
`One common dispute that has arisen since the passage of the AIA concerns the
`admissibility of Patent Trial and Appeal Board (PTAB) decisions to institute, or not
`institute, an inter partes review (IPR) or covered business method review (CBMR).
`In this context, a patentee typically argues that a non-institution decision is proba-
`tive of the patent’s validity because the standard for institution (effectively, more
`likely than not that one or more claims is invalid) is lower than the burden for prov-
`ing invalidity at trial (clear and convincing evidence of invalidity). While this argu-
`ment has some surface appeal, its ultimate persuasiveness depends on the specific
`positions being advanced before the district court in comparison with those ad-
`vanced in the IPR/CBMR petition. It is strongest where the prior art and positions
`being advanced at trial overlap exactly with those made in the IPR/CBMR petition; it
`is weakest where the prior art and positions do not overlap at all. Where, as in most
`cases, there is some but not complete overlap, the district court should conduct typi-
`cal Rule 403 balancing based on the specific facts. Weighing the factors, district
`courts have come down on both sides of admissibility. Some permitted the patentee
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