InterDigital Inc (IDCC)

[olddog967]

Ghors: Here is the order on Motions in Limine. I like the response to IDCC's #2.


Each side has filed three motions in limine. (D.I. 330, Exs. 13 & 14). They are resolved
as follows.

Plaintiffs MIL #1 cannot be decided in advance of trial. Inequitable conduct is not a
matter for the jury to decide, and the jury should not hear any of that evidence unless it is
independently admissible for some other purpose. Plaintiff1 has inventors on its witness list, and
witnesses may be cross-examined about matters relating to their credibility. Thus, one other
purpose is that instances of dishonesty may be admissible to show credibility. Rule 608(b ). A
second purpose may concern obviousness. What Interdigital employees or others of ordinary
skill in the art understood from a reference may be relevant to testing expert testimony about
what a person of ordinary skill would have understood. What such people did as a result of that
understanding, to the extent it has the natural effect of making non-testifying witnesses look
dishonest, has little or no probative value, and would be substantially outweighed, in all
likelihood, by its unfair prejudicial effect on Interdigital. Rule 403. Inequitable conduct is
clearly irrelevant to written description. Thus, other than pursuant to Rule 608(b ), Defendants
may not offer the inequitable conduct evidence, except upon a proffer, to be filed no later than 12
noon on September 2, 2014, detailing specifically what evidence Defendants plan to use and how
that will factor into the obviousness analysis. The Court does not see any relevance to any
secondary consideration of obviousness, but Defendants are also permitted to proffer that in more
detail on the same schedule.

note (1) I refer to the three Plaintiffs as "Plaintiff."

Plaintiffs MIL #2 is GRANTED TO THE FOLLOWING EXTENT: Defendants may
not refer to Plaintiff as troll, non-practicing entity (NPE), patent assertion entity, or extortionist.
Defendants may refer to Plaintiff as Plaintiff, Interdigital, the business, the company, and/or the
corporation. Without prior permission, Defendants cannot call Plaintiff anything else.

Plaintiffs MIL #3 is GRANTED. I would characterize it as being unopposed.

Defendants' MIL #1 GRANTED IN PART AND DENIED IN PART. The 1999
license with Nokia is EXCLUDED. It is irrelevant, and, if it had any probative value, it would
be substantially outweighed by the danger of unfair prejudice to the Defendants. The financial
information related to licensing activities in general is irrelevant, and is EXCLUDED, including
PX 475, 477, 482, 483, 486, and 487.2 Testimony that companies have taken licenses covering
hundreds or thousands of patents may be offered by Interdigital as "context" testimony, if it so
chooses, but may not specify whether the patents-in-suit are included, and may not specify which
companies took the licenses. No documentary evidence may be offered in support of such
testimony (unless it is challenged by cross-examination). Testimony about Interdigital's efforts
to build prototype products generally may also be offered by Interdigital as "context" testimony.
In support of such context testimony, Interdigital may not offer any non-testimonial evidence. If
Interdigital has evidence about sales of some product that embodies one of the two patents-insuit,
Interdigital may offer that evidence for any relevant purpose, such as commercial success.

note(2) The Court does not have these exhibits. If there is some nugget of financial information
in any of these exhibits that relates specifically to the two patents-in-suit, the Plaintiff should
make a proffer of such information by 12 noon on September 2, 2014, with a copy of the relevant
pages of the exhibit, and explain what conclusions could be drawn from such evidence.

Defendants' MIL #2 is DENIED. This motion reads like a summary judgment motion.
As a motion in limine, it fails. The points Defendants raise can be raised on cross-examination
of Dr. Haas. Based on the arguments submitted, Dr. Haas's testimony will have probative value,
and I do not see any unfair prejudice to Defendants in admitting such testimony

Defendants' MIL #3 is CONDITIONALLY GRANTED. As the Court understands it,
the PT03 did not institute an IPR. That would have no probative value in the Interdigital v. ZTE
case, and it has no probative value in this case. It was not a decision on the merits.4 The decision
in L.C. Eldridge Sales Co. v. Azen Mfg Pte, 2013 U.S. Dist. Lexis 186151 (E.D. Tex. May 23,
2013), is not to the contrary. It concerns an inter partes reexamination (not an IPR, although that
is not the important distinction) that was granted, and which resulted in "confirm[ation of] the
patentability" of the patent-in-suit. A PTO non-merits decision not involving Defendants has
little or no probative value, and would require a lot of explanation for the jury to be able to understand. In my opinion, if it were assumed to have some minimal probative value, that
probative value would be substantially outweighed by the danger of unfair prejudice to the
Defendants, and the risk of jury confusion from the complexity added by such testimony.5

Notes:
(3) It is the PT AB that decides whether to initiate an IPR. As I understand it, the PT AB
consists of ALJs, that is, lawyers and not persons of ordinary skill in the relevant art or even a
related field.

(4) To the extent the denial ofreview is a decision, it is a decision that "[ZTE has not]
demonstrate[ d] that there is a reasonable likelihood that [ZTE] would prevail as to at least one of
claims challenged." See
http://wwww.uspto.gov/aia implementation/fags inter partes review.jsp. (last visited Jan. 30,
2104).

(5) I do not think I have been provided in connection with the MIL any records relating to
the IPR request and its denial. If Plaintiff thinks I might change my mind with a fuller record, it
can submit the relevant parts of the record with any appropriate argument by noon on September
2, 2014, and I will consider the additional information.