In EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Feb. 25, 2016), Judge Richard G. Andrews decided a number of pending motions in limine.
First, the Court concluded that Plaintiffs would not be precluded from introducing evidence of Defendant’s pre-suit knowledge of the patents-in-suit. While Plaintiffs were not seeking pre-suit damages for induced infringement, the Court agreed that knowledge of the patents could still be relevant to the existence of non-infringing alternatives: “[t]hat an accused infringer knew that a particular course of action would constitute patent infringement and yet chose that course anyway could call into question its assertion that acceptable non-infringing alternatives were available.” Id. at 2 (citations omitted). Defendant had also objected to this evidence as overly prejudicial to the extent that it implicated whether Defendant had improper access to the data of a company Plaintiffs had acquired (Data Domain). See id. at 2. The Court found the evidence’s probative value to outweigh any potential unfair prejudice, but recommended that the parties make proposals to reduce the probability that the jury could make improper inferences, and advised that “any hint of argument about improper conduct in relation to Data Domain’s technology would be grounds for a mistrial.” Id. at 5 & n.2. In connection with this motion, the Court also made individual determinations as to the relevance and admissibility of specific deposition testimony and exhibits.
The Court also precluded Plaintiffs from introducing evidence of an IPO valuation of Data Domain and the amount Plaintiffs paid to acquire this company, concluding that Plaintiffs had not shown a nexus between these amounts and the claimed inventions. See id. at 5-6. Even if Plaintiffs could demonstrate such a nexus, the Court concluded that the unfairly prejudicial effect of this evidence outweighed its probative value. Id. at 6.
Finally, the Court granted Plaintiffs’ motion to prevent Defendants from “introducing evidence of or argument based on [its] experts’ testimony that embodiments in the asserted patents’ specifications and commercial embodiments support their views about the plain and ordinary meaning of claim terms.” Id. at 6. The Court concluded that “[t]estimony that embodiments in a patent specification support an expert’s opinions regarding the plain and ordinary meaning of claim terms would amount to claim construction and suggest that literal infringement can be established by a comparison between accused products and specification embodiments” and, similarly, that “[t]estimony that commercial embodiments support an expert’s opinions regarding the plain and ordinary meaning of claim terms would suggest that literal infringement can be established by a comparison between accused products and commercial embodiments.” Id. at 8. However, Defendant’s experts would not be precluded from “making any reference whatsoever to patent specifications and commercial embodiments. Should [Defendant’s] experts refer to specification or commercial embodiments in the course of their testimony regarding the plain and ordinary meaning of claim terms, the determination whether the testimony amounts to claim construction will have to be made on an objection by objection basis in the context of the trial.” Id. at 9. The experts were also not wholly precluded from relying on extrinsic evidence to support their views on plain and ordinary meaning. Id.