UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

Transcription

1 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 1 of 10 Page ID #:31305 Present: The Honorable Suzanne H. Segal, United States Magistrate Judge Marlene Ramirez None None Deputy Clerk Court Reporter / Recorder Tape No. Attorney Present for Plaintiffs: None Attorneys Present for Defendants: None Proceedings: (In Chambers) Order re: Motions in Limine Having reviewed and considered all the briefing filed with respect to the following Motions in Limine ( Motions ), 1 the Court concludes that oral argument is not necessary to resolve the Motions. See Fed. R. Civ. P. 78; Local Rule 7-15; Willis v. Pac. Mar. Ass n, 244 F.3d 675, 684 n. 2 (9th Cir. 2001). IT IS ORDERED THAT: Plaintiff s Motions In Limine 1. Plaintiff s Motion in Limine No. 1 (Document No. 416) to Exclude the Testimony of Dr. William Wecker is denied. Plaintiff seeks to exclude the rebuttal testimony of Dr. Wecker under Federal Rule of Evidence 402, 403, 702, and 703, and Daubert v. Merrell Dow Pharms., 509 U.S. 579 (1993). (See PMIL No. 1 at 1-2). Dr. Wecker s report rebuts the opinion of plaintiff s damages expert, Russell Parr. (See id.). Enovsys argues that AT&T, in its discovery responses, represented that it was impossible to determine either location based services ( LBS ) data traffic or LBS data revenue, but that Dr. Wecker s opinion relies on data regarding actual data traffic, rather than estimates. (See id.). In particular, Dr. Wecker relies on documents from Telenav. (See id. at 2-3). Enovsys further argues that Dr. Wecker s analysis is flawed, for instance, because it relies heavily on July 2013 data. (See id. at 2-5). The Court is not persuaded by plaintiff s arguments. First, Dr. Wecker s analysis is consistent with AT&T s representations regarding its discovery responses, because AT&T relies on third party documents from Telenav. (See PMIL No. 1 at 11). Thus, Dr. Wecker s analysis does not rely on improperly withheld materials. As for plaintiff s relevance argument, Dr. Wecker s report rebuts plaintiff s damages analysis, and is therefore relevant under Fed. R. Evid Moreover, the probative value of Dr. Wecker s opinion is not substantially outweighed by the danger of unfair prejudice, confusion, misleading the jury, delay, waste of time, or the needless presentation of cumulative evidence. See Fed. R. Evid As for plaintiff s 1 The Court will cite to plaintiff s Motions in Limine as PMIL and to defendants Motions in Limine as DMIL. Unless otherwise noted, all Rule references are to the Federal Rules of Evidence. CV-90 (06/04) Page 1 of 10

2 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 2 of 10 Page ID #:31306 remaining arguments, while there may be flaws in Dr. Wecker s analysis, Enovsys is free to attack Dr. Wecker s opinion in trial through [v]igorous cross-examination [and] presentation of contrary evidence. Palmisano v. Olin Corp., 2005 WL , at *8 (N.D. Cal. June 24, 2005). 2. Plaintiff s Motion in Limine No. 2 (Document No. 417) to Exclude the Testimony of Itamar Simonson is denied. Plaintiff seeks to exclude the expert testimony of Mr. Itamar Simonson ( Simonson ) under Federal Rule of Evidence 402, 403, 702, and 703, and Daubert. (See PMIL No. 2 at 1). Simonson s opinion is based on his customer survey of AT&T wireless users, based on the value of various mobile device features. (See id.; Omnibus Declaration of Bruce G. Chapman in Support of Plaintiff s Motions in Limine ( Chapman Decl. ), Exh. N) ( Simonson Survey ). In general, Simonson s report provides survey information regarding the value of features related to location based services, (see Simonson Survey at 5-6), and is therefore relevant under Rule 402. Moreover, the probative value of Simonson s opinion is not substantially outweighed by the danger of unfair prejudice, confusion, misleading the jury, delay, waste of time, or the needless presentation of cumulative evidence. See Fed. R. Evid Plaintiff also asserts that the Simonson Survey has numerous deficiencies, including (1) an improper universe of persons surveyed, (2) improper questions and feature descriptions, (3) a faulty control, and (4) improper opinions framed as conclusions. (See PMIL No. 2 at 1 & 4-9). Last, (5) plaintiff contends that the Simonson Survey is inconsistent with the TRUSTe Report. (See id. at 7). Plaintiff s assertions are unpersuasive. Survey evidence should be admitted as long as [it is] conducted according to accepted principles and [is] relevant. Fortune Dynamic, Inc. v. Victoria s Secret Stores Brand Mgmt., Inc. 618 F.3d 1025, 1036 (9th Cir. 2010). Technical inadequacies in the survey, such as challenges to the survey methodology, bear on the weight of the evidence, not its admissibility. See id. As for the (1) universe of respondents, the survey participants were all AT&T wireless service users. (See Simonson Survey at 6). The Court is not persuaded that the survey should have only included smartphone users, as basic cellular phones can also employ data services. (See PMIL No. 2 at 13). As for the (2) questions and features, (3) control group, (4) purported conclusions, and the (5) TRUSTe Report, while it is possible that there are some flaws in the survey, plaintiff can address them through vigorous cross-examination and the presentation of contrary evidence. See Palmisano, 2005 WL , at *8. Enovsys s arguments bear on the weight of the evidence, not the survey s admissibility. See Fortune Dynamic, Inc., 618 F.3d at Plaintiff s Motion in Limine No. 3 (Document No. 418) to Exclude the Testimony of Dr. Michael Braasch on the Preauthorized Limitation is denied. Plaintiff argues that AT&T s invalidity contentions completely fail to identify any code in the prior art that meets the preauthorized limitation, and that defendants invalidity report merely includes examples with lengthy quotations of text. (PMIL No. 3 at 1 & 3). Plaintiff s substantive analysis is mostly limited to a portion of the ParcTab System prior art, namely element 1(e). (See id. at 4-6). As for that element, plaintiff argues that the discussion of element 1(e) fails to explain what code meets the preauthorized limitation, and that defendants CV-90 (06/04) Page 2 of 10

3 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 3 of 10 Page ID #:31307 identification of the.bashrc and.tabrc files is insufficient. (See id. at 5). Plaintiff further argues that Exhibit D1 of the Braasch report also merely gave lengthy quotations of text from various patents. (See id. at 6). In response, AT&T asserts, among other things, that it disclosed numerous prior art references that meet the preauthorized limitation, such a Lemelson, Foladare, and Kim references. (See id. at 13-15). The Court is troubled by Enovsys s overbroad argument that AT&T completely fail[e]d to identify any code in the prior art. (See PMIL No. 3 at 1). Plaintiff s argument is supported principally by assertions that defendants charts merely include examples with lengthy quotations, (see PMIL No. 3 at 3), and analysis of element 1(e) of the ParcTab reference. The Court declines to strike defendants entire invalidity opinion based on conclusory arguments. As for the ParcTab reference, the claim chart for claim element 1(d) disclose the.bashrc and.tabrc files, giving fair notice of defendants invalidity theory. Plaintiff concedes that it deposed Dr. Braasch regarding how these files purportedly satisfy the preauthorized requirement, thereby precluding unfair surprise. (See PMIL No. 3 at 5). Likewise, the Court has reviewed Exhibit D1 of the Bracht report, and is persuaded that the references provide sufficient notice of defendants theory. Enovsys s criticisms of Dr. Braasch s opinion, can be addressed in trial through [v]igorous cross-examination [and] presentation of contrary evidence. Palmisano, 2005 WL , at *8. 4. Plaintiff s Motion in Limine No. 4 to Exclude the Testimony of Defendants Undisclosed Witnesses (Document No. 419) is denied. Plaintiff seeks to exclude the testimony of five individuals and unidentified corporate representatives for nine entities. (See PMIL No. 4 at 2). The parties have narrowed the disputes, 2 so the Motion in Limine addresses the following witnesses: (1) Michael Christenberry (Alcatel-Lucent USA Inc.), (2) Shanph Wong (TeleNav, Inc.), (3) Rashid Bhatti (TeleCommunication Systems), and (4) Duane Derbecker (Ericsson). Plaintiff asserts that AT&T failed to disclose the witnesses in its initial disclosures and discovery. (See id. at 2-4). For instance, AT&T did not identify the individuals in response to an interrogatory regarding invalidity witnesses. (See id. at 4). Plaintiff argues that due to the 2 Enovsys moves to exclude the testimony of the following individuals who were not identified during fact discovery: (1) Michael Christenberry (Alcatel-Lucent USA Inc.), (2) Shanph Wong (TeleNav, Inc.), (3) Rashid Bhatti (TeleCommunication Systems), (4) Duane Derbecker (Ericsson), and (5) Shelley Goldman. (See PMIL No. 4 at 2). Plaintiff also moves to exclude the testimony of unidentified corporate representatives of (6) Location Labs, (7) Xora, Inc., (8) Apple Inc., (9), Google Inc., (10) Microsoft Corporation, (11) Research in Motion Ltd., (12) Alliance for Telecommunications Industry Solutions, (13) Palo Alto Research Center, and (14) Phoenix Translations. (See id.). AT&T states that it will not call (5) Shelley Goldman, (6) Location Labs, (7), Xora, Inc., (12), Alliance for Telecommunications Industry Solutions, (13) Palo Alto Research Center, and (14) Phoenix Translations. (See id. at 11 n. 2). AT&T also states that it will call the following only as rebuttal witnesses: (8) Apple Inc., (9) Google Inc., (10) Microsoft Corporation, or (11) Research in Motion Ltd. (See id.). Accordingly, the motion is denied as moot for these witnesses. CV-90 (06/04) Page 3 of 10

4 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 4 of 10 Page ID #:31308 purported failure to identify the witnesses in discovery under Fed. R. Civ. P. 26(a) or 26(e), the witnesses should be excluded under Fed. R. Civ. P. 37(c)(1). (See id. at 5). In response, AT&T argues that it identified each non-party entity with which these witnesses were affiliated as early as June 2013, which was more than three months prior to the close of discovery. (See PMIL No. 4 at 12). Moreover, AT&T identified the five individual witnesses by name in a February 28, 2014, witness list. (See id.). Also, AT&T asserts that the failure to disclose was substantially justified, due to the late crystallization of plaintiff s infringement theory in expert reports. (See id. at 14). AT&T further argues that Enovsys elected to forego discovery from the entities specifically identified by AT&T during discovery. (Id. at 15). When determining whether to preclude evidence under Fed. R. Civ. P. 37, the Court considers factors such as (1) the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the importance of the evidence, and (5) the nondisclosing party s explanation for it failure to disclose the evidence. Dey, L.P. v. Ivax Pharmaceuticals, Inc., 233 F.R.D. 567, 571 (C.D. Cal. 2005). Here, as to part (1), there is no significant surprise, as AT&T disclosed the entities in discovery and named the individual witnesses in February As for part (2), cure, the Court finds that additional depositions would cure the surprise. With respect to part (3), disruption, it is difficult to incorporate the additional evidence into the case at this late date, but not impossible. As for part (4), the importance of evidence, the witnesses apparently relate to non-infringement, which is a major issue. Finally, as to part (5), AT&T s explanation is somewhat reasonable, particularly because plaintiff s infringement theories relate to multiple entities, AT&T disclosed the relevant entities, and Enovsys had an opportunity to seek discovery. Based on the foregoing, the Court denies Plaintiff s Motion in Limine No. 4. The Court will give plaintiff the opportunity to depose the subject witnesses by June 24, The parties may file amended expert reports, but the amendments must be limited to the new evidence, by July 2, In these amendments, the parties may cite additional evidence from the subject depositions, but the parties may not introduce new theories. 5. Plaintiff s Motion in Limine No. 5 (Document No. 420) to preclude Evidence and Argument that the Preauthorized Limitation Requires a PIN is denied. Plaintiff seeks to preclude AT&T from refer[ring] to the concept of a PIN at all before the jury. (See PMIL No. 5 at 1). Plaintiff suggests that permitting such argument would risk confusing the jury. (See id.) (citing Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319 (Fed. Cir. 2009). The Court is not persuaded by plaintiff s argument. The Court construed the term preauthorized or pre-authorized as having a code specific to a mobile device that permits a request for that device s location to be made. (Claim Construction Order at 22). The claim construction order includes a discussion of the prosecution history and the relevance of the PIN. (See id. at 16-21). Accordingly, AT&T may refer to the concept of a PIN, which could help the jury CV-90 (06/04) Page 4 of 10

5 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 5 of 10 Page ID #:31309 understand the Court s construction and place the Court s construction in proper context. Unlike in Cordis, referring to the concept of the PIN is not necessarily re-arguing claim construction. Accordingly, Plaintiff s Motion in Limine No. 5 is denied. Defendants Motions In Limine 1. Defendants Motion in Limine No. 1 (Document Nos. 422 & 453) to Exclude the Opinions of Russell Parr is granted. To be admissible, expert testimony opining on a reasonable royalty rate must carefully tie proof of damages to the claimed invention s footprint in the market place. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011). Moreover, the patentholder must apportion the royalty down to a reasonable estimate of the value of its claimed technology, or else establish that its patented technology drove demand for the entire product. VirnetX, Inc. v. Cisco Sys., 767 F.3d 1308, 1329 (Fed. Cir. 2014). Here, Parr s analysis is based on a 4.5 percent royalty rate attributed to all location-based-services related data revenues. (See DMIL No. 1 at 13). The Court is persuaded that Enovsys has not adequately apportioned the royalty based on the estimated value of the claimed technology. While Enovsys argues that privacy protection is the essence of the 461 patent, (see DMIL No. 1 at 11-12), the patented invention is directed to limited features. 3 Accordingly, plaintiff has until June 24, 2015 to revise its damages report, in order to address defendants arguments. The deposition of Parr shall take place by July 2, Defendants Motion in Limine No. 2 (Document No. 423) to Exclude Evidence Not Disclosed by Enovsys s Infringement Contentions and in Enovsys s Interrogatory Responses is granted in part and denied in part. A. Opinions Not Disclosed in Expert Reports Defendants seek to preclude plaintiff from [i]ntroducing [o]pinions [n]ot [d]isclosed in [t]heir [e]xpert [r]eports. (See DMIL No. 2 at 2). In response, plaintiff agrees that the expert reports define what the expert testimony will be at trial. (See id. at 10-11). Otherwise, plaintiff correctly argues that such a generalized motion does not help guide the parties at trial. (See id. at 11). Accordingly, the Court denies the motion with respect to this generalized motion. The Court will consider particularized objections at trial. 3 AT&T also argues that the Parr report improperly relies on a study by ABI commissioned for the litigation. The ABI Report proposal includes disclaimers. (See Williams Decl., Exh. 13). While there may be flaws in the ABI Report, the Court is not persuaded that the disclaimers in the research proposal provides sufficient grounds for exclusion of the ABI Report in its entirety. As the Court has granted Defendants Motion, the Court need not address AT&T s remaining arguments. CV-90 (06/04) Page 5 of 10

6 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 6 of 10 Page ID #:31310 B. SUPL Server Defendants seek to preclude Dr. Rose from testifying with respect to the SUPL Server theory that the MLP SLIR message satisfies the preauthorization limitation by including the MS-ID... i.e., the phone no. (See DMIL No. 2 at 2). Likewise, defendants argue that the combination of credentials and a MSISDN should be precluded with respect to the SUPL Server theory. (See id. at 3-4). In response, plaintiff argues that defendants are essentially moving for reconsideration of the summary judgment motion. (See id. at 11-12). On November 4, 2014, the Court issued an Order re: Motion to Strike, which denied defendants motion to strike the SUPL server theory. (See Order re: Motion to Strike at 9-10). The Court found that the record did not demonstrate that the SUPL server theory improperly relied on the combination of the application ID, password and MSISDN, which was stricken because it was not timely disclosed. (See id. at 8-10). On April 28, 2015, the Court issued an Order re: Motion for Summary Judgment, finding that the SUPL server theory was adequately supported. The Court s order stated that Plaintiff s infringement contentions generally disclose SUPL authorization, and the Rose Report expressly discloses that the communications include the MS-ID (Mobile Station Identifier) (MS-ID) (i.e., the MSISDN or the phone no.), thereby arguably satisfying the preauthorization requirement. (Id. at 8). Based on the foregoing, the Court is persuaded that Dr. Rose s expert report adequately disclosed the SUPL Server theory. Therefore, the motion is denied with respect to the SUPL Server theory. The Court will consider particularized objections regarding the combination of application ID, password, and MSISDN. C. Stricken Theories Defendants generally seek to preclude plaintiff from asserting any stricken theor[y] in trial. (See DMIL No. 2 at 5). Plaintiff agrees that the expert reports define what the expert testimony will be at trial. (See id. at 10-11). Otherwise, plaintiff correctly argues that such a generalized motion does not provide assistance in guiding the parties at trial. (See id. at 11). Accordingly, the Court denies the motion with respect to this generalized motion. The Court will consider particularized objections at trial. D. Spaargaren Reference Defendants also seek to preclude expert testimony regarding the Spaargaren reference as to claim 1 of the 273 patent, on the grounds that Dr. Rose s rebuttal report on validity does not include a substantive analysis regarding the Spaargaren reference. (See DMIL No. 2 at 5-6; Declaration of Eliot D. Williams in Support of Defendants Motions in Limine ( Williams Decl. ), Exh. 17 ( Rose validity report )). In response, plaintiff identifies portions of the Rose validity report, that purportedly provide analysis regarding Spaargaren. (See Rose validity report at , & 324). For example, the Rose validity report CV-90 (06/04) Page 6 of 10

7 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 7 of 10 Page ID #:31311 refers to prior art references listed in the Appendices for a combination with the Tell 802 patent. (See id. at ). Also, the Rose validity report refers to prior art references listed in the Appendices for unspecified combinations for the 273 patent. (See id. at 324). Based on the foregoing, the motion is granted in part as to the Spaargaren reference. Dr. Rose may testify regarding Spaargaren to the limited extent provided in his report. (See Rose validity report at , & 324). E. Secondary Considerations of Non-Obviousness Defendants also seek to preclude plaintiff from presenting evidence of secondary considerations of non-obviousness that were not identified in plaintiff s interrogatory responses. (See DMIL No. 2 at 7-8). In discovery, plaintiff identified commercial success of the patented invention and international standards governing implementations of Location Based Services. (See id. at 7). Defendants argue that Dr. Rose improperly included additional secondary considerations of non-obviousness, such as copying, synergy, and unexpected results. (See id.). In response, plaintiff asserts that its interrogatory response was complete, and that plaintiff s expert report merely supplemented the response. (Id. at 15). When determining whether to preclude the evidence under Fed. R. Civ. P. 37, the Court considers factors such as (1) the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the importance of the evidence, and (5) the nondisclosing party s explanation for it failure to disclose the evidence. Dey, L.P., 233 F.R.D. at 571. Here, as to part (1), the disclosure of additional secondary considerations of non-obviousness in Dr. Rose s supplemental disclosure was a significant surprise for AT&T at this late stage in the case. As to part (2), cure, it would be difficult to cure the surprise, as it would require AT&T to perform additional invalidity analysis at this late stage, which as to part (3), would be disruptive to the proceedings. As to part (4), the importance of evidence, the additional secondary considerations of non-obviousness do not appear particularly important. Last, as to part (5), plaintiff s explanation for the failure to disclose is not persuasive. Plaintiff should have identified all the secondary considerations of non-obviousness in its discovery response. Based on the foregoing, the Court grants in part and denies in part defendants motion as to secondary considerations of non-obviousness. Plaintiff s secondary consideration analysis will be limited to commercial success of the patented invention and the international standards governing implementations of Location Based Services. Plaintiff may rely on the additional support for these factors provided in Dr. Rose s expert report. \\ \\ \\ \\ CV-90 (06/04) Page 7 of 10

8 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 8 of 10 Page ID #:31312 F. Joint Infringement Defendants seek to preclude argument regarding joint infringement. (See DMIL No. 2 at 8). Enovsys agrees it is not asserting a joint infringement theory. (See id. at 16). Accordingly, the motion is denied as moot as to joint infringement. G. Indirect Infringement Defendants also move to preclude plaintiff from asserting indirect infringement beyond the allegations identified in its infringement contentions. (See DMIL No. 2 at 8-9). Plaintiff states that it intends to present the case it disclosed, and asserts that AT&T has not identified the infringement allegations that are disputed. (See id. at 16). The Court finds that such a generalized motion does not help set the course of the trial. The Court denies the motion with respect to indirect infringement. The Court will consider particularized objections at trial. 3. Defendants Motion in Limine No. 3 (Document No. 424) to Exclude Dr. Rose s Opinions on Defendants Infringement and Validity is denied. Defendants argue that (1) Dr. Rose s infringement analysis is speculative, for instance, because he did not perform any testing. (See DMIL No. 3 at 1-2). Defendants further argue that (2) Dr. Rose s opinion regarding the SUPL Server theory contradicts the claim construction order, and (3) that Dr. Rose s opinions as to infringement and validity are conclusory. (See id. at 7-10). The Court is not persuaded by defendants arguments. First, defendants concede that Dr. Rose analyzed industry standards and AT&T documents. (See id. at 1-2 & 5). Whatever flaws AT&T may believe undermine Dr. Rose s analysis, AT&T is free to attack Dr. Rose s opinion in trial through [v]igorous cross-examination [and] presentation of contrary evidence. Palmisano, 2005 WL , at *8. For instance, AT&T is free to present evidence that AT&T does not adopt requisite portions of the SUPL standard, and that the AT&T network does not check the age of the mobile device s last known location. (See DMIL No. 3 at 3-4 & 6). Second, Dr. Rose s infringement theory as to the SUPL Server is adequately supported by the claim construction order. (See Order re: Motion for Summary Judgment at 7-8). Finally, defendants argue that Dr. Rose s infringement and validity opinions are speculative, (see DMIL No. 3 at 8-10), overbroad, and inadequately supported. The Court declines to strike plaintiff s entire infringement and validity opinion based on such limited analysis. As previously stated, AT&T may address any perceived deficiencies in Dr. Rose s analysis through cross-examination and the presentation of its own evidence. See Palmisano, 2005 WL , at *8. 4. Defendants Motion in Limine No. 4 (Document No. 425) to Exclude Evidence of Location Privacy Unrelated to Plaintiff s Infringement Theory is denied. AT&T seeks to limit plaintiff s CV-90 (06/04) Page 8 of 10

9 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 9 of 10 Page ID #:31313 infringement theory to the Advice of Privacy function and preauthorization of the SUPL Agent when communicating with a SUPL Server. (See DMIL No. 4 at 1). AT&T asserts that due to the Court s summary judgment order regarding the preauthorized limitation, [a]ny other evidence related to privacy features, such as privacy settings enforced upstream of the SUPL Server, is irrelevant. (See id. at 1-3). In response, Enovsys concedes that its infringement theories as to the preauthorized limitation will be limited by the summary judgment order, but notes that the summary judgment order does not extend broadly to plaintiff s overall infringement theories. (See DMIL No. 4 at 7-8). Enovsys argues that it bears the burden of prov[ing] the rest of the requirements recited in the asserted claims, and that the entire operation of the AT&T Master Mobility Network for LBS is highly relevant to infringement. (See id. at 7-8). Based on the current record, the Court is persuaded that AT&T s Motion in Limine exceeds the scope of the Court s summary judgment order, and therefore denies the Motion. The Court cautions the parties that their infringement and invalidity theories should not exceed the scope of the permitted expert opinions. The Court will consider individualized objections at trial. 5. Defendants Motion in Limine No. 5 (Document No. 426) to Exclude Evidence and Argument on Alleged Communications [Between Enovsys or its founder Mr. Fomukong] and AT&T Prior to February 5, 2010 is granted in part and denied in part. The subject communications, which generally took place in 1999, (see DMIL No. 5 at 1-3 & 6), pre-date the issuance of the patents-in-suit. See State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) ( To willfully infringe a patent, the patent must exist and one must have knowledge of it. ) (emphasis in original). Accordingly, the earlier communications are irrelevant to infringement of the asserted patents, and the purported relevance regarding willful infringement is substantially outweighed by the risk of prejudice to AT&T under Fed. R. Evid Plaintiff s reliance on National Presto v. Indus., Inc. v. The West Bend Co., 76 F.3d 1185 (Fed. Cir. 1996) is unavailing because in that case the patentholder had already received a notice regarding allowed claims. See id. at Finally, the Court notes that it does not appear that AT&T seeks to exclude the Fumukong letter to AT&T, dated January 19, 2009 [sic] and received on February 5, (See DMIL No. 5 at 7; Omnibus Declaration of Scott R. Miller in Opposition to Defendants Motion in Limine ( Miller Decl. ), Exh. R). This letter refers to asserted U.S. Patent No. 6,560,461 and post-dates the issuance of the 461 patent. AT&T s Motion is denied to the extent that it seeks to exclude the Fumukong Letter, dated January 19, 2009 [sic]. 6. Defendants Motion in Limine No. 6 (Document No. 450) to Exclude the Opinions of Dr. Gruteser is denied as moot. Plaintiff has agreed not to introduce Dr. Gruteser s testimony, has withdrawn the Gruteser trial exhibits, and has agreed not to present or rely on Dr. Gruteser s analysis. (See DMIL No. 6 at 11). Accordingly, there is no dispute regarding Dr. Gruteser s opinion or trial testimony. CV-90 (06/04) Page 9 of 10

10 Case 2:11-cv SS Document 501 Filed 06/11/15 Page 10 of 10 Page ID #: Defendants Motion in Limine No. 7 (Document No. 451) to Exclude Evidence and Testimony Regarding Defendants Opinion of Counsel is granted. AT&T has asserted attorney-client privilege regarding the opinion of counsel that it obtained, and it has not waived the privilege. (See DMIL No. 7 at 1). AT&T seeks to preclude evidence or argument referring to AT&T s opinion of counsel, or that AT&T failed to present evidence regarding an opinion of counsel. (See id.). [T]he assertion of attorney-client privilege and/or work-product privilege and the withholding of the advice of counsel shall no longer entail an adverse inference as to the nature of the advice. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345 (Fed. Cir. 2004). See McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 434 F.Supp.2d 810, (E.D. Cal. 2006) (granting motion in limine to exclude evidence and testimony regarding defendant s assertion of attorney-client privilege regarding opinion of counsel). The Court is not persuaded by plaintiff s argument that Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, (Fed. Cir. 2008) mandates a different result, as Broadcom involved the failure to obtain an opinion letter and whether a new trial was required based on pre-seagate jury instructions. See id. at & (citing In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). IT IS SO ORDERED. 00 : 00 Initials of Preparer mr CV-90 (06/04) Page 10 of 10