Vaporstream Inc v. Snap Inc

1

2

3

4

5

6

7

8 UNITED STATES DISTRICT COURT

9 CENTRAL DISTRICT OF CALIFORNIA

10

11 VAPORSTREAM, INC., Case No.: 2:17-cv-00220-MLH (KSx)

12 Plaintiff,

ORDER:

13 v.

(1) GRANTING IN PART AND

14 SNAP INC. d/b/a/ Snapchat, Inc.,

DENYING IN PART PLAINTIFF’S

15 Defendant. MOTIONS IN LIMINE; AND

16

[Doc. No. 247.]

17

(2) GRANTING IN PART AND

18

DENYING IN PART DEFENDANT’S

19 MOTIONS IN LIMINE

20

[Doc. No. 238, 240, 244, 245, 246.]

21

(3) GRANTING THE PARTIES’

22

JOINT MOTION REGARDING THE

23 PRESENTATION OF EVIDENCE AT

TRIAL REGARDING

24

VAPORSTREAM PRODUCTS

25

[Doc. No. 283.]

26

27

28

1 On January 29, 2020, the parties filed their respective motions in limine. (Doc. Nos.

2 238, 240, 244, 245, 246, 247.) On February 6 and 12, 2020, the parties filed their respective

3 oppositions to the motions in limine. (Doc. Nos. 258, 262, 263, 264, 267, 270.) On

4 February 19, 2020, the parties filed their respective replies. (Doc. Nos. 276, 277, 278, 279,

5 280, 281.) On February 24, 2020, Snap filed a notice withdrawing one of its motions in

6 limine. (Doc. No. 282.) On February 25, 2020, the parties filed a joint motion regarding

7 the presentation of evidence and withdrawing another one of Snap’s motions in limine.

8 (Doc. No. 283.)

9 The Court held a hearing on February 26, 2020. Robert Rivera, Jr., Joseph S.

10 Grinstein, and Meng Xi appeared for Plaintiff Vaporstream. Heidi L. Keefe, Michael A.

11 Attanasio, Reuben H. Chen, and Mark R. Weinstein appeared for Defendant Snap. For the

12 reasons below, the Court grants in part and denies in part Vaporstream’s motions in limine,

13 and the Court grants in part and denies in part Snap’s motions in limine.

14 Background

15 On January 10, 2017, Plaintiff Vaporstream filed a complaint for patent infringement

16 against Defendant Snap, alleging infringement of U.S. Patent Nos. 8,886,739, 8,935,351,

17 9,306,885, 9,306,886, 9,313,155, 9,313,156, 9,313,157, 9,338,111, and 9,413,711. (Doc.

18 No. 1.) On June 26, 2017, Snap filed an answer to the complaint. (Doc. No. 61.)

19 On February 27, 2018, the Court issued a claim construction order. (Doc. No. 118.)

20 On February 27, 2018, the Court also denied Snap’s motion for summary judgment that

21 the patents-in-suit are invalid under 35 U.S.C. § 101. (Doc. No. 117.)

22 Starting on June 6, 2018, the Patent Trial and Appeal Board instituted inter partes

23 review of the challenged claims for each of the patents-in-suit. See Snap Inc. v.

24 Vaporstream, Inc., Case Nos. IPR2018-00200, IPR2018-00312, IPR2018-00369,

25 IPR2018-00397, IPR2018-00404, IPR2018-00408, IPR2018-00416, IPR2018-00439,

26 IPR2018-00455, IPR2018-00458. On June 12, 2018, the parties filed a joint motion to stay

27 the action pending the IPR proceedings as to the patents-in-suit. (Doc. No. 148.) On June

28 13, 2018, the Court granted the parties’ joint motion and stayed the action pending the last

1 final written decision by the PTAB in the IPR proceedings for the patents-in-suit. (Doc.

2 No. 150.)

3 Between June 4, 2019 and August 30, 2019, the PTAB issued final written decisions

4 in each of the IPR proceedings for the patents-in-suit. In those decisions, the PTAB held

5 that the challenged claims from the ’739 patent, the ’885 patent, the ’155 patent, the ’351

6 patent, and the ’156 patent are all unpatentable, and the PTAB held that the challenged

7 claims from the ’886 patent, the ’111 patent, the ’711 patent, and the ’157 patent had not

8 been shown to be unpatentable. (Doc. Nos. 156-1, 157-1, 158-1, 158-2, 158-3, 158-4, 159-

9 1.)

10 As a result, on September 13, 2019, the Court partially lifted the stay of the action.

11 (Doc. No. 160.) The Court lifted the stay as to the ’886 patent, the ’111 patent, the ’711

12 patent, and the ’157 patent. (Id. at 3.) The Court continued the stay of the action as to the

13 ’739 patent, the ’885 patent, the ’155 patent, the ’351 patent, and the ’156 patent. (Id.) On

14 September 23, 2019, the Court issued an amended scheduling order. (Doc. No. 162.)

15 On January 10, 2020, the Court granted in part and denied in part Snap’s Daubert

16 motion, and the Court denied Vaporstream’s Daubert motion. (Doc. No. 222.) In the order,

17 the Court specifically excluded Vaporstream’s damages expert Mr. Bratic’s 50/50 profit

18 split reasonable royalty rate opinion, and the Court precluded Mr. Bratic from referencing

19 in his damages analysis Snap’s market capitalization, acquisition offers received, total

20 revenues, and total incremental profits. (Id. at 4-10, 12-13, 20.)

21 On January 13, 2020, the Court issued an order on the parties’ motions for summary

22 judgment. (Doc. No. 224.) In the order, the Court: (1) denied Snap’s motion for

23 reconsideration of the Court’s February 27, 2018 summary judgment order; (2) denied

24 Snap’s motion for summary judgment of non-infringement; (3) granted Snap’s motion for

25 summary judgment of no willful infringement; and (4) granted summary judgment in favor

26 of Vaporstream on Snap’s affirmative defense of invalidity of the ’886, ’111, and ’711

27

28

1 patents based on obviousness. (Id. at 45-46.)

2 Presently before the Court are five motions in limine from Snap and three motions

3 in limine from Vaporstream. (Doc. Nos. 238, 240, 244, 245, 246, 247.) The Court

4 addresses each of these motions in limine in turn below.

5 Discussion

6 I. Snap’s Motions in Limine

7 A. Snap’s Motion in Limine No. 1 - Moot

8 In its first motion in limine, Snap moves to preclude any evidence or argument about

9 how Vaporstream’s products work or that Vaporstream’s products practice the asserted

10 claims. (Doc. No. 252 at 1.) On February 25, 2020, the parties filed a joint motion

11 regarding the presentation of evidence at trial regarding Vaporstream products. (Doc. No.

12 283.) In the joint motion, the parties agree:

13 (1) Vaporstream may present evidence at trial regarding the Vaporstream

products in existence at the time of Mr. Amit Shah’s employment at

14

Vaporstream from 2005 through May 1, 2015, including, for example, the

15 operation of such products and whether they represent a reduction to practice

and/or an embodiment of the alleged invention. Neither Mr. Shah nor

16

Vaporstream (through its experts or otherwise) may present evidence,

17 however, about the operation of Vaporstream products (or versions thereof)

in existence after May 1, 2015 when Mr. Shah’s employment at Vaporstream

18

ended. Further, Mr. Shah and Vaporstream (through its experts or otherwise)

19 shall not present any limitation-by-limitation analysis comparing any

Vaporstream product to the asserted claims. Furthermore, Snap (through its

20

experts or otherwise) shall not argue at trial that Vaporstream is a “patent

21 troll,” “non-practicing entity,” or similar such entity.

22 (2) Each party agrees that its respective technical expert(s) will not present

evidence regarding the operation of the Vaporstream products.

23

(3) In view of the foregoing stipulations regarding the presentation of

24

evidence at trial regarding Vaporstream’s products, Snap withdraws its

25 Motion in Limine to Exclude Evidence That Any Vaporstream Product

26

27 1 In th e o r d e r, t h e C o u rt

also dismissed Vaporstream’s claim for infringement of the ’157 patent

28 from the case without prejudice. (Doc. No. 224 at 33-34.)

1 Practices the Asserted Claims (ECF No. 252).

2 (Doc. No. 283 at 1-2.) For good cause shown, the Court grants the parties’ joint motion,

3 and the Court denies Snap’s first motion in limine as moot.

4 B. Snap’s Motion in Limine No. 2 – Exclusion of Certain Infringement Opinions

5 Regarding the “Header Information” and “Identifier of a Sending User” Claim Limitations

6 In its second motion in limine, Snap moves to preclude Vaporstream from presenting

7 any evidence at trial that anything other than the “username” or “display name” identified

8 by Vaporstream’s infringement expert Mr. Hicks in his expert report can meet the claim

9 limitations of “header information” or “identifier of a sending user.” (Doc. No. 240 at 1.)

10 In response, Vaporstream argues that Snap’s motion should be denied because Mr. Hicks

11 did not limit his infringement opinions regarding the “header information”/“identifier of a

12 sending user” claim limitations to the Snapchat “username” and “display name.” (Doc.

13 No. 270 at 1-2.)

14 Federal Rule of Civil Procedure 26(a)(2)(B)(i) provides that an expert report must

15 contain “a complete statement of all opinions the witness will express.” Thus, “[a]ll expert

16 witnesses at trial must tether their testimony to the contents of their respective reports, and

17 are precluded from exceeding the scope of their reports.” AngioScore, Inc. v. TriReme

18 Med., Inc., No. 12-CV-03393-YGR, 2015 WL 5258786, at *1 n.1 (N.D. Cal. Sept. 8,

19 2015); see, e.g., Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,

20 1354–55 (Fed. Cir. 2013) (affirming district court’s striking in part of an expert declaration

21 that included untimely disclosures); Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.,

22 488 F.3d 982, 995 (Fed. Cir. 2007) (affirming district court’s exclusion of expert testimony

23 that fell outside the expert’s report). Nevertheless, “[t]he purpose of [an expert] report[] is

24 not to replicate every word that the expert might say on the stand. It is instead to convey

25 the substance of the expert’s opinion (along with the other background information

26 required by Rule 26(a)(2)(B)) so that the opponent will be ready to rebut, to cross-examine,

27 and to offer a competing expert if necessary.” Walsh v. Chez, 583 F.3d 990, 994 (7th Cir.

28 2009); accord Ohio Six Ltd. v. Motel 6 Operating L.P., No. CV 11-08102 MMM (EX),

1 2013 WL 12125747, at *14 (C.D. Cal. Aug. 7, 2013).

2 The Court has reviewed the relevant opinions set forth in Mr. Hicks’ expert report.

3 The Court agrees with Vaporstream that Mr. Hicks does not limit his opinions regarding

4 the “header information”/“identifier of a sending user” claim limitations to the Snapchat

5 “username” and “display name.” (See, e.g., Doc. No. 273-1, Ex. A at 1 (“The Snap also

6 contains header information (metadata) relevant to the message content.”), at 12 (“The

7 screenshot from the Snapchat App below presents an example of the ‘first display’ (Friends

8 screen) that shows the header information of the electronic message at the recipient

9 device.”); Doc. No. 273-2, Ex. B at 47-48 (“The message listing (header information)

10 corresponding to the message content (an available photo snap is shown as a solid pink

11 square and an available video is shown as a solid purple square) is received at the recipient

12 device.”).) As such, the Court denies Snap’s second motion in limine without prejudice to

13 a contemporaneous objection at trial.2

14 C. Snap’s Motion in Limine No. 3 – Exclusion of Any Damages Evidence

15 In its third motion in limine, Snap moves to preclude Vaporstream from offering any

16 damages evidence at trial. (Doc. No. 253 at 1, 9.) Specifically, Snap argues that

17 Vaporstream should not be permitted to call its damages expert, Mr. Bratic, at trial and

18 Vaporstream has waived reliance on any other damages evidence in this case. (Id. at 4-9.)

19 In response, Vaporstream argues that Snap’s motion should be denied, and Mr. Bratic

20 should be permitted to testify at trial as any unexcluded matters. (Doc. No. 257-1 at 1.)

21 ///

22 ///

23

24

2 In its reply brief, Snap argues that in Vaporstream’s statement of uncontroverted facts filed during

25 the summary judgment stage, Vaporstream did not dispute that it only identified the “username” as

meeting the “header information” and “identifier of a sending user” claim limitations. (Doc. No. 277 at 1

26 n.2.) The record does not support Snap’s contention. In Vaporstream’s statement of dispute material

facts, Vaporstream stated: ““Header information” as used in claim 1 of the ’886 and ’111 Patents includes

27

both ‘display name’ and ‘username.’” (Doc. No. 194-1 at 1.) Here, Vaporstream stated that “header

28 information” includes both “display name” and “username,” but Vaporstream did not limit the term

1 i. The Proposed January 29, 2020 Bratic Supplement Report

2 As a preliminary matter, the Court addresses the proposed January 29, 2020 six-and-

3 a-half-page supplemental expert report from Mr. Bratic that was filed along with

4 Vaporstream’s memorandum of contentions of fact and law. (Doc. No. 231-1, Ex. C.) In

5 its opposition to Snap’s motion in limine, Vaporstream requests that it be granted leave to

6 use the information disclosed in the proposed supplemental expert report at trial. (Doc.

7 No. 257-1 at 1, 5-9.) The filing of this supplemental expert report was untimely and

8 improper, and the Court denies Vaporstream’s request.

9 Under Federal Rule 26(a)(2), “a party must disclose to the other parties the identity

10 of any [expert] witness it may use at trial to present evidence” and “this disclosure must be

11 accompanied by a written report signed by the witness.” Fed. R. Civ. P 26(a)(2); accord

12 Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001). “The

13 report must contain: (i) a complete statement of all opinions the witness will express and

14 the basis and reasons for them.” Fed. R. Civ. P. 26(a)(2)(B). Rule 26(a)(2)(D) provides:

15 “A party must make these disclosures at the times and in the sequence that the court

16 orders.” Fed. R. Civ. P. 26(a)(2)(D). Under the Court’s scheduling orders in this action,

17 opening expert reports were due by April 25, 2018; Mr. Bratic’s supplemental expert report

18 was due by October 18, 2019; and expert discovery closed on October 30, 2019. (Doc. No.

19 126 at 2-3; Doc. No. 162 at 3-4; Doc. No. 172.)

20 Federal Rule of Civil Procedure 37(c)(1) provides: “If a party fails to provide

21 information or identify a witness as required by Rule 26(a) or (e), the party is not allowed

22 to use that information or witness to supply evidence on a motion, at a hearing, or at a trial,

23 unless the failure was substantially justified or is harmless.” Fed R. Civ. P. 37(c)(1). “Rule

24 37 ‘gives teeth’ to Rule 26’s disclosure requirements by forbidding the use at trial of any

25 information that is not properly disclosed.” Goodman v. Staples The Office Superstore,

26 LLC, 644 F.3d 817, 827 (9th Cir. 2011). “Rule 37(c)(1) is a ‘self-executing,’ ‘automatic’

27 sanction designed to provide a strong inducement for disclosure.” Id.

28 Nevertheless, under Rule 37(c)(1), “[t]he information may be introduced if the

1 parties’ failure to disclose the required information is substantially justified or harmless.”

2 Yeti by Molly, 259 F.3d at 1106. The party facing sanctions bears the burden of proving

3 substantial justification or harmlessness. See id. Further, a district court has “particularly

4 wide latitude” in determining whether to issue sanctions under Rule 37(c)(1). Id.

5 Vaporstream argues that it should be permitted to use the January 29, 2020

6 supplemental expert report because the proposed opinions in the report are limited to curing

7 the specific deficiencies identified in the Court’s January 10, 2020 Daubert order, and the

8 report does not introduce a new damages theory. (Doc. No. 257-1 at 9.) The Court

9 disagrees. The opinions disclosed in the January 29, 2020 supplemental expert report

10 represent entirely new opinions and theories for calculating the reasonable royalty rate in

11 this case. In the proposed supplemental expert report, Mr. Bratic opines that the reasonable

12 royalty rate should be calculated by looking at the ratio of Snap’s research and development

13 expenses to Snap’s total operating expenses. (See Doc. No. 231-1, Ex. C Bratic

14 Supplemental Report ¶¶ 10-21) This “research and development” methodology was not

15 contained anywhere in Mr. Bratic’s original expert reports. (See Doc. No.185-1, Bratic

16 Supplemental Report ¶¶ 176-82; Doc. No. 185-2 Bratic Report ¶¶ 175-81.) It is an entirely

17 new theory and methodology for calculating the reasonable royalty rate in this case, and,

18 thus, is an improper, untimely expert disclosure.

19 Further, these untimely new damages opinions are unjustified and highly prejudicial

20 to Snap. Vaporstream has failed to explain why this alternative royalty rate method could

21 not have been presented earlier in the case when Mr. Bratic filed his initial expert reports.

22 See Cave Consulting Grp., Inc. v. OptumInsight, Inc., No. 15-CV-03424-JCS, 2020 WL

23 127612, at *13 (N.D. Cal. Jan. 10, 2020) (finding the patentee was not diligent where

24 “nothing prevented [it] from offering its newly proposed approach . . . as an alternative

25 measure of damages at the outset”). Further, because the supplemental expert report was

26 presented (1) after the close of expert discovery and the deadline for filing pre-trial

27 motions; (2) on the same day that motions in limine were due; and (3) less than six weeks

28 before the scheduled trial date, Snap is highly prejudiced by the untimely disclosure. The

1 trial date is only nine days away, and Snap has no ability to challenge the opinions disclosed

2 in the supplemental expert report through a Daubert motion or through a rebuttal expert

3 report. And Snap cannot depose Mr. Bratic regarding the new opinions disclosed in the

4 report. As a result, the Court strikes the January 29, 2020 Bratic supplemental expert report

5 and excludes any of the new opinions contained in the report.3 See Fed R. Civ. P. 37(c)(1);

6 see, e.g., Cave Consulting, 2020 WL 127612, at *13 (denying leave to offer a new

7 supplemental damages expert report where the patentee was not diligent and the defendant

8 would be prejudiced); Network Prot. Scis., LLC v. Fortinet, Inc., No. C 12-01106 WHA,

9 2013 WL 5402089, at *8 (N.D. Cal. Sept. 26, 2013) (denying leave to offer a new

10 supplemental damages expert report where the trial date was only four days away and “a

11 new royalty analysis would impose prejudice on the defense as well and disrupt the Court’s

12 calendar”); see, e.g., Cheese Sys., 725 F.3d at 1354–55 (affirming the district court’s

13 striking in part of an expert declaration that included untimely disclosures).

14 ii. Mr. Bratic’s Testimony

15 Snap argues that the Court should preclude Mr. Bratic from testifying at trial. (Doc.

16 No. 253 at 4-6.) Snap argues that because the Court excluded Mr. Bratic’s 50/50 profit

17 split reasonable royalty rate opinion in its Daubert order, the Court should exclude Mr.

18 Bratic’s testimony in its entirety. (Id. at 5.) In response, Vaporstream argues that Mr.

19 Bratic should be permitted to testify at trial as any unexcluded matters. (Doc. No. 257-1

20 at 1.) The Court agrees with Vaporstream.

21 In the Court’s January 10, 2020 Daubert order, the Court granted in part Snap’s

22 Daubert motion, and the Court excluded Mr. Bratic’s reasonable royalty rate opinion.

23 (Doc. No. 222 at 4-10, 20.) Thus, Mr. Bratic cannot offer a reasonable royalty rate opinion

24

25

26

3 The Court clarifies that it is not excluding matters that might be referenced in the January 29, 2020,

27

but are contained elsewhere in the record, such as in Mr. Bratic’s prior expert reports or in Snap’s financial

28 documents.

1 at trial. Further, because a reasonable royalty rate determination is a necessary component

2 of a running reasonable royalty calculation, Mr. Bratic is also precluded from offering a

3 final reasonable royalty calculation at trial. Cf. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d

4 1308, 1326 (Fed. Cir. 2014) (“A reasonable royalty . . . may also be, and often is, a running

5 payment that varies with the number of infringing units. In that event, it generally has two

6 prongs: a royalty base and a royalty rate.”).

7 Nevertheless, the Court did not grant Snap’s Daubert motion in full, and the Court

8 did not exclude all of Mr. Bratic’s opinions. For example, the Court denied Snap’s motion

9 to exclude Mr. Bratic’s LTV numbers. (Doc. No. 222 at 11-12.) Because the Court did

10 not exclude all of Mr. Bratic’s opinions, Vaporstream may present a damages case at trial

11 containing these remaining opinions, such as his analysis of the Georgia-Pacific factors

12 and his analysis of the apportioned reasonable royalty base.

13 Snap argues that it would be improper for Mr. Bratic to testify as to the reasonable

14 royalty base because it would be a violation of the entire market value rule. (Doc. No. 253

15 at 5.) The Court rejects this argument. First, this argument is untimely. Snap did not raise

16 an entire market value rule challenge to Mr. Bratic’s reasonable royalty base analysis in its

17 Daubert motion. (See Doc. No. 185.) Second, Snap’s entire market value rule challenge

18 fails, because Mr. Bratic has done an apportionment analysis, and, thus, he is not attempting

19 to assess damages based on the entire market value of the accused products. (See Doc.

20 No.185-1, Bratic Supplemental Report ¶¶ 132-47) Cf. AstraZeneca AB v. Apotex Corp.,

21 782 F.3d 1324, 1337 (Fed. Cir. 2015) (explaining that the entire market value rule applies

22 “when small elements of multi-component products are accused of infringement” and the

23 patentee “‘assess[es] damages based on the entire market value of the accused product’”

24 (quoting Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011)).

25 Additionally, the Court will instruct the jury on how to calculate an ongoing royalty.

26

27 4 In ad d i t io n , t h e C o u r t p

recluded Mr. Bratic from referencing in his damages analysis at trial Snap’s

28 market capitalization, acquisition offers received, total revenues, and total incremental profits. (Doc. No.

1 See N.D. Cal. Model Patent Jury Instructions 5.7 (“One way to calculate a royalty is to

2 determine what is called an ‘ongoing royalty.’ To calculate an ongoing royalty, you must

3 first determine the ‘base,’ that is, the product on which the alleged infringer is to pay. You

4 then need to multiply the revenue the defendant obtained from that base by the ‘rate’ or

5 percentage that you find would have resulted from the hypothetical negotiation.”). It will

6 be up to Vaporstream to come up with sufficient evidence in the record to support a

7 reasonable royalty rate finding, if it can do so.5

8 Snap argues that Vaporstream should be precluded from presenting any damages

9 evidence at trial because, in light of the Court’s Daubert order, there is no expert testimony

10 in the record as to the issue of the reasonable royalty rate. (Doc. No. 276 at 2-3.) The

11 Court disagrees. In Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1327–30 (Fed. Cir. 2014),

12 overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.

13 2015), the Federal Circuit reversed a district court’s entry of summary judgment of no

14 damages and rejected the accused infringer’s contention that the patentee was not entitled

15 to any damages because there was no evidence upon which the patentee could rely on to

16 establish damages. In that case, the Federal Circuit explained:

17 With infringement assumed, the statute requires the court to award

damages ‘in no event less than a reasonable royalty.’ Because no less than a

18

reasonable royalty is required, the fact finder must determine what royalty is

19 supported by the record.

20 If a patentee’s evidence fails to support its specific royalty estimate, the

fact finder is still required to determine what royalty is supported by the

21

record. Indeed, if the record evidence does not fully support either party’s

22 royalty estimate, the fact finder must still determine what constitutes a

reasonable royalty from the record evidence. Certainly, if the patentee’s proof

23

is weak, the [fact finder] is free to award a low, perhaps nominal, royalty, as

24 long as that royalty is supported by the record.

25 Thus, a fact finder may award no damages only when the record

supports a zero royalty award.

26

27

28 5 For example, Vaporstream might be able to utilize other evidence in the record, such as the lump

1 Id. at 1327–28 (citations and footnote omitted).

2 In light of this, the Federal Circuit held that “the district court’s conclusion that [the

3 patentee’s] HTC-based estimate was flawed does not establish, as a matter of law, a zero

4 royalty. Even if [the patentee] had not submitted expert evidence, this alone would not

5 support a finding that zero is a reasonable royalty.” Id. at 1330. “‘The use of expert

6 testimony is permissive. Thus, if a patentee’s damage expert is excluded, that fact does

7 not automatically deny a patentee a right to recover damages.’” Id. (quoting Annotated

8 Patent Digest, § 44:79).

9 Here, as in Apple v. Motorola, the Court has excluded some, but not all of the

10 patentee’s damages expert’s opinions. Thus, Vaporstream is still is entitled to a

11 determination from the fact finder as to the reasonable royalty if there is a finding of

12 infringement of a valid patent. See id. at 1327–30. Indeed, the Court notes that in one of

13 the primary cases relied on by Snap, the Federal Circuit vacated a damages award and held

14 that the patentee’s damages expert’s proposed royalty rate should have been excluded by

15 the district court because it lacked sufficient ties to the facts of the case. See Exmark Mfg.

16 Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332, 1351 (Fed. Cir. 2018).

17 Nevertheless, the Federal Circuit in that case remanded “for a new trial on damages.” Id.

18 The Federal Circuit did not remand the case for the entry of a judgment of no damages.

19 Snap argues that in light of the excluded opinions, the jury in this case might award

20 a reasonable royalty that is not supported by the evidence in the record. But this argument

21 is entirely speculative at this time. The trial has yet to begin and no jury verdict has been

22 rendered.

23 In sum, the Court grants in part and denies in part Snap’s third motion in limine.

24 Specifically, the Court strikes the January 29, 2020 Bratic supplemental expert report and

25 excludes any of the new opinions contained in the report. In addition, the Court precludes

26 Mr. Bratic from offering any reasonable royalty rate calculation or overall reasonable

27 royalty calculation at trial. The Court denies the remainder of Snap’s motion in limine

28 without prejudice to a contemporaneous objection at trial.

1 D. Snap’s Motion in Limine No. 4 – Exclusion of the IPR Proceedings

2 In its fourth motion in limine, Snap moves to exclude any evidence or arguments

3 relating to the inter partes review proceedings for the patents-in-suit. (Doc. No. 245 at 1.)

4 Snap argues that the IPR proceedings are irrelevant because the proceedings concerned

5 obviousness under 35 U.S.C. § 103, which will not be an issue at trial.6 (Id.) Snap further

6 argues that admitting evidence of the IPR proceedings would prejudice Snap and cause

7 significant juror confusion by potentially confusing the jury to believe that the PTAB has

8 ruled on the merits of Snap’s § 101 invalidity defense. (Id.)

9 In response, Vaporstream argues that the PTAB’s decisions concerning obviousness

10 under 35 U.S.C. § 103 in the IPR proceedings are highly relevant to the § 101 determination

11 of patent eligibility in this case. (Doc. No. 263 at 1.) Vaporstream is wrong.

12 The standard for determining patent eligibility under § 101 is different from the

13 standards for determining novelty under § 102 and obviousness under § 103. See Mayo

14 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 91 (2012) (“declin[ing] the

15 Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better

16 established inquiry under § 101”). The Court acknowledges that in Mayo Collaborative

17 Servs. v. Prometheus Labs., Inc., 566 U.S. at 90, the Supreme Court explained that a § 102

18 novelty inquiry and a § 101 patent-eligibility “might sometimes overlap.” But the Supreme

19 Court further explained in that case: “But that need not always be so.” See id.

20 Further, the Supreme Court and the Federal Circuit have explained that “‘[t]he

21 “novelty” of any element or steps in a process, or even of the process itself, is of no

22 relevance in determining whether the subject matter of a claim falls within the § 101

23 categories of possibly patentable subject matter.’” Intellectual Ventures I LLC v.

24 Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450

25 U.S. 175, 188–89 (1981)). Thus, a finding that an accused infringer has failed to prove a

26

27

28 6 The Court previously granted summary judgment of Snap’s defense of invalidity of the ’886, ’111,

1 patent is invalid as obvious “does not resolve the question of whether the claims embody

2 an inventive concept at the second step of Mayo/Alice.” Id. Thus, the PTAB’s

3 determinations regarding obviousness are not relevant to the § 101 determination in this

4 case.7 See id.

5 Further, even assuming the IPR proceedings have some marginal relevance due to

6 the potential overlap between the § 103 obviousness inquiry and the §101 patent-eligibility

7 inquiry, the Court still excludes the evidence due the danger of jury confusion and wasting

8 of time and resources. See Fed. R. Evid. 403. Introduction of the IPR proceedings to the

9 jury would likely require an explanation of the nature of IPR proceedings and the PTAB’s

10 role, the difference between the standards for determining obviousness under § 103 and for

11 determining patent-eligibility under § 101, and the PTAB’s various findings in the multiple

12 IPR proceedings. This would likely consume a significant amount of time and potentially

13 lead to jury confusion over the invalidity issues in the case. See Milwaukee Elec. Tool

14 Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 WL 4570787, at *6 (E.D. Wis. Oct. 12,

15 2017).

16 In sum, the Court grants Snap’s fourth motion in limine. The Court precludes

17 Vaporstream from introducing any evidence or argument relating to the inter partes review

18 petitions for the patents-in-suit, and any activity at the PTAB related to these petitions

19 absent further order of the Court.8

20 ///

21

22

7 In addition, the Court does not find persuasive Vaporstream’s reliance on Trustees of Columbia

23

Univ. in City of New York v. Symantec Corp., No. 3:13CV808, 2019 WL 6138419 (E.D. Va. Nov. 19,

24 2019). (Doc. No. 263 at 1-2.) Trustees of Columbia University is a non-binding district court opinion.

Further, in Trustees of Columbia University, the district court recognized that “the Supreme Court has

25 stated and the Federal Circuit has recognized that [t]he novelty of any element or steps in a process, or

even of the process itself, is of no relevance in determining whether the subject matter of a claim falls

26 within the § 101 categories of possibly patentable subject matter.” 2019 WL 6138419, at *14 (quoting

Intellectual Ventures I, 838 F.3d at 1315).

27

28 8 Should the presentation of evidence at trial merit reconsideration of this ruling, Vaporstream must

1 E. Snap’s Motion in Limine No. 5 - Moot

2 In its fifth motion in limine, Snap moves to bar Vaporstream from arguing a position

3 at trial that is purportedly inconsistent with a position Vaporstream took during the course

4 of the related inter partes review proceedings. (Doc. No. 246 at 1.) On February 24, 2020,

5 Snap filed a notice of withdrawal of this motion in limine. (Doc. No. 282.) As a result,

6 the Court denies Snap’s fifth motion in limine as moot.

7 II. Vaporstream’s Motions in Limine

8 A. Vaporstream’s Motion in Limine No. 1 – Exclusion of Certain Patents

9 Vaporstream’s first motion in limine is two-part. First, Vaporstream moves to

10 exclude all patent applications, related proceedings, and related references or attorney

11 arguments regarding Vaporstream patents other than the patents-in-suit. (Doc. No. 247 at

12 1.) Snap explains in its response that it does not intend to present any evidence of

13 Vaporstream’s non-asserted patents provided the Court grants its motion in limine to

14 exclude all evidence of the IPRs from trial. (Doc. No. 267 at 4 & n.2) The Court has

15 granted Snap’s motion in limine regarding the IPR proceedings. See supra. As such, the

16 first portion of Vaporstream’s motion in limine is moot.

17 Second, Vaporstream moves to exclude all patent applications, related proceedings,

18 and related references or attorney arguments regarding Snap’s patents and third-party

19 patents used for any purpose other than to challenge the subject-matter eligibility of the

20 patents-in-suit under 35 U.S.C. § 101. (Doc. No. 247 at 1-2.) With respect to the Snap

21 patents, Vaporstream argues that Snap may not introduce evidence of its own patents for

22 the purposes of arguing non-infringement. (Doc. No. 247 at 4.) In response, Snap explains

23 that it “has no intention of referring to or discussing any specific Snap patents, nor will it

24 proffer any analysis comparing Snap[’s] own patents with Vaporstream’s patents. Snap

25 does not intend to argue that its patents are superior to Vaporstream’s, or that their existence

26 implies that Snap does not infringe.” (Doc. No. 267 at 5.) In reply, Vaporstream concedes

27 that these concessions from Snap largely moot this portion of its motion in limine. (Doc.

28 No. 280 at 280 at 3.) Any remaining issues regarding Snap’s patents can appropriately be

1 addressed through a contemporaneous objection at trial.

2 With respect to the third-party patents, Snap argues that the third-party patents are

3 relevant to several issues beyond invalidity under § 101. (Doc. No. 267 at 5-7.)

4 Specifically, Snap argues these third-party patents are relevant to the issue of damages

5 under an analysis of the Georgia-Pacific factors. (See id.) The Court agrees with Snap.

6 See Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011) (“This

7 court has sanctioned the use of the Georgia–Pacific factors to frame the reasonable royalty

8 inquiry.”); Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.

9 1970) (“9. The utility and advantages of the patent property over the old modes or devices,

10 if any, that had been used for working out similar results.”). Indeed, the Court notes that

11 in its motion, Vaporstream concedes that at least one third-party patent may be relevant to

12 the issue of damages. (Doc. No. 247 at 5 n.2.)

13 Vaporstream argues that Snap should not be permitted to rely on these third-party

14 patents as background for Mr. Bakewell’s damages analysis because in granting summary

15 judgment of Snap’s obviousness defense, the Court excluded all § 103 prior art references

16 from the case. (Doc. No. 280 at 4-5.) Vaporstream is wrong and misunderstands the effect

17 of the Court’s summary judgment order. In the Court’s January 13, 2020 summary

18 judgment order, the Court granted summary judgment of Snap’s obviousness defenses.

19 (Doc. No. 224 at 45-46.) But the Court did not exclude any specific evidence. (See id.) If

20 there is evidence in the record that is solely relevant to the issue of obviousness, that

21 evidence is no longer admissible because obviousness is no longer at issue in this case. See

22 Fed. R. Evid. 402. Nevertheless, the Court’s summary judgment ruling does not render

23 evidence inadmissible simply because it was relevant to the issue of obviousness provided

24 the evidence remains relevant to a different issue in the case, such as damages through

25 Georgia-Pacific factor 9. See Fed. R. Evid. 402. Thus, Mr. Bakewell’s damages opinions

26 that rely on Dr. Greenberg’s analysis of the prior art remain relevant notwithstanding the

27 Court’s entry of summary judgment on the issue of obviousness. (See, e.g., Doc. No. 266-

28 1 Bakewell Expert Report ¶¶ 316-19 (citing Greenberg Expert Report).)

1 In addition, the Court notes that there is nothing improper with Snap’s damages

2 expert, Mr. Bakewell, relying on opinions from Snap’s technical expert, Dr. Greenberg.

3 “Experts routinely rely upon other experts hired by the party they represent for expertise

4 outside of their field. Rule 703 explicitly allows an expert to rely on information he has

5 been made aware of ‘if experts in the particular field would reasonably rely on those kinds

6 of facts or data in forming an opinion on the subject.’” Apple, 757 F.3d at 1321 (quoting

7 Fed. R. Evid. 703) (citations omitted). “Consistent with Rule 703, patent damages experts

8 often rely on technical expertise outside of their field.” Id. In sum, the Court denies

9 Vaporstream’s first motion in limine without prejudice to a contemporaneous objection at

10 trial.

11 B. Vaporstream’s Motion in Limine No. 2 – Exclusion of Negative Remarks

12 about the USPTO

13 In its second motion in limine, Vaporstream moves to preclude Snap from making

14 any negative, disparaging, or derogatory comments about the USPTO or its employees.

15 (Doc. No. 247 at 6.) In response, Snap argues that it should be permitted to provide to the

16 jury the information regarding the examination process at the PTO that is conveyed in the

17 Federal Judicial Center’s video “The Patent Process: An Overview for Jurors.” (Doc. No.

18 267 at 8-9.)

19 At the start of the trial, the Court will play to the jurors the Federal Judicial Center’s

20 video “The Patent Process: An Overview for Jurors” available at

21 https://www.youtube.com/watch?v=ax7QHQTbKQE. (Doc. No. 162 at 7.) In this video,

22 the presenter explains:

23 Sometimes in a court case, you are also asked to decide about

“validity.” That is whether the patent should have been allowed at all by the

24

PTO. A party accused of infringement is entitled to challenge whether the

25 asserted patent claims are sufficiently new or non-obvious in light of the prior

art, or whether other requirements of patentability have been met. In other

26

words, a defense to an infringement lawsuit is that the patent in question is

27 invalid.

28 You may wonder why it is that you would be asked to consider such

1 things when the patent has already been reviewed by a Government examiner.

There are several reasons for this. First, there may be facts or arguments that

2

the examiner did not consider, such as prior art that was not located by the

3 PTO or provided by the applicant. In addition, there is, of course, the

possibility that mistakes were made or important information overlooked.

4

Examiners have a lot of work to do, and no process is perfect. Also, unlike a

5 court proceeding, prosecution of a patent application takes place without input

from people who might later be accused of infringement, so it is important

6

that we provide a chance for someone who is accused of infringement to

7 challenge the patent in court.

8 The Patent Process: An Overview for Jurors at 13:48-14:57. Snap represents that it will

9 do no more than provide the information that is conveyed in this video. (Doc. No. 267 at

10 8.) In light of this representation, the Court denies Vaporstream’s second motion in limine

11 without prejudice to a contemporaneous objection at trial.

12 C. Vaporstream’s Motion in Limine No. 3 – Exclusion of Prior Orders

13 In its third motion in limine, Vaporstream moves to exclude any evidence of or

14 references to motions, rulings on motions, and orders (other than the Court’s claim

15 constructions). (Doc. No. 247 at 7-8.) In response, Snap argues that it should permitted to

16 discuss at trial prior orders by the Court that are relevant to the § 101 analysis and

17 Vaporstream’s damages expert’s credibility. (Doc. No. 267 at 10-12.)

18 The Court agrees with Vaporstream that, in general, the parties should be precluded

19 from referencing the Court’s prior rulings and orders other than the Court’s claim

20 constructions due to the substantial risk of confusing and misleading the jury. See Fed. R.

21 Evid. 403; see, e.g., Hewlett-Packard Co. v. Mustek Sys., Inc., No. 99-CV-351-RHW, 2001

22 WL 36166855, at *4 (S.D. Cal. June 11, 2001); Wilson v. Hartford Ins. Co. of the Midwest,

23 No. C10-993RAJ, 2011 WL 2670199, at *4 (W.D. Wash. July 7, 2011); US Foam, Inc. v.

24 On Site Gas Sys., Inc., 735 F. Supp. 2d 535, 560 (E.D. Tex. 2010). Snap argues that it

25 should be permitted to reference certain prior orders for two reasons. (Doc. No. 267 at 10-

26 12.) The Court addresses each of these arguments in turn below.

27 First, Snap argues that it should be entitled to impeach Vaporstream’s damages

28 expert Mr. Bratic with the Court’s prior January 10, 2020 Daubert order excluding portions

1 of Mr. Bratic’s opinions. (Doc. No. 267 at 11-12.) In this case, any potential relevance of

2 the Daubert order is substantially outweighed by the risk of unfair prejudice to Vaporstream

3 and the potential for jury confusion. See Fed. Evid. 403. There is too much of a risk that

4 the jury will give the Court’s prior Daubert order undue weight given that it is an order by

5 the same Court that will preside over the trial. In addition, the Court’s prior Daubert order

6 has the capacity to be confusing to the jury since the Court granted in part and denied in

7 part the Daubert motion. Moreover, the Court notes that Snap has not identified any case

8 where a court allowed a damages expert to be impeached by a prior Daubert order that was

9 entered earlier in the same case. (See generally Doc. No. 267 at 11-12.) As such, the Court

10 excludes the January 10, 2020 Daubert order from being referenced during the trial under

11 Federal Rule of Evidence 403, absent further order of the Court. Additionally, given the

12 potential for jury confusion, the Court further excludes any prior Daubert orders from other

13 cases from being used or referenced at trial absent further order of the Court. See Fed. R.

14 Evid. 403.

15 Second, Snap argues that it should be permitted to reference the Court’s prior § 101

16 orders because the jury must be told that the asserted claims are directed to an abstract idea

17 under step one of the Alice inquiry in order for the jury to conduct a proper Alice step two

18 analysis. (Doc. 267 at 10-11.) In response, Vaporstream argues that it is not clear from

19 the record that the Court has found under Alice step one that the asserted claims are directed

20 to an abstract idea. (Doc. No. 280 at 7.) The Court agrees with Vaporstream.

21 Section 101 of the Patent Act defines patent-eligible subject matter as “any new and

22 useful process, machine, manufacture, or composition of matter, or any new and useful

23 improvement thereof.” 35 U.S.C. § 101. The Supreme Court has “‘long held that this

24 provision contains an important implicit exception[:] Laws of nature, natural phenomena,

25 and abstract ideas are not patentable.’” Ass’n for Molecular Pathology v. Myriad Genetics,

26 Inc., 133 S. Ct. 2107, 2116 (2013).

27 “The Supreme Court has devised a two-stage framework to determine whether a

28 claim falls outside the scope of section 101.” Affinity Labs of Texas, LLC v. DIRECTV,

1 LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S. at 217–18. “The

2 prescribed approach requires a court to determine (1) whether the claim is directed to a

3 patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea,

4 and if so, (2) whether the elements of the claim, considered both individually and as an

5 ordered combination, add enough to transform the nature of the claim’ into a patent-eligible

6 application.” Affinity Labs, 838 F.3d at 1257 (internal quotation marks omitted) (citing

7 Alice, 134 S. Ct. at 2355). “In the context of claims that are challenged as containing only

8 abstract ideas, those two stages are typically referred to as the ‘abstract idea’ step and the

9 ‘inventive concept’ step.” Id.

10 “The ‘abstract idea’ step of the inquiry” requires courts “to look at the ‘focus of the

11 claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is

12 directed to excluded subject matter.” Id. at 1257. The Federal Circuit has explained: “If a

13 claimed invention only performs an abstract idea on a generic computer, the invention is

14 directed to an abstract idea at step one. Software, however, ‘can make non-abstract

15 improvements to computer technology just as hardware improvements can.’” BSG Tech

16 LLC v. Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018) (citing Alice, 134 S.

17 Ct. at 2355–57 and quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.

18 Cir. 2016). Therefore, a reviewing court should consider “whether the ‘focus of the claims’

19 is on a ‘specific asserted improvement in computer capabilities . . . , or, instead, on a

20 process that qualifies as an “abstract idea” for which computers are invoked merely as a

21 tool.’” Id. at 1286 (quoting Enfish, 822 F.3d at 1336).

22 “The ‘inventive concept’ step requires [courts] to look with more specificity at what

23 the claim elements add, in order to determine ‘whether they identify an “inventive concept”

24 in the application of the ineligible subject matter’ to which the claim is directed.” Affinity

25 Labs, 838 F.3d at 1258. “Simply appending conventional steps, specified at a high level

26 of generality, [i]s not enough to supply an inventive concept.” Alice, 573 U.S. at 222

27 (internal quotation marks omitted) (quoting Mayo Collaborative Servs. v. Prometheus

28 Labs., Inc., 566 U.S. 66, 82 (2012)); see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d

1 1089, 1093 (Fed. Cir. 2016) (“This inventive concept must do more than simply recite

2 ‘well-understood, routine, conventional activity.’”). The Federal Circuit has explained that

3 at the “inventive concept” step:

4 The appropriate question is not whether the entire claim as a whole was “well-

understood, routine [and] conventional” to a skilled artisan (i.e., whether it

5

lacks novelty), but rather, there are two distinct questions: (1) whether each

6 of “the [elements] in the claimed [product] (apart from the natural laws

themselves) involve well-understood, routine, conventional activity

7

previously engaged in by researchers in the field,” and (2) whether all of the

8 steps “as an ordered combination add[ ] nothing to the laws of nature that is

not already present when the steps are considered separately[.]” In other

9

words, beyond the [abstract idea], what elements in the claim may be regarded

10 as the “inventive concept”? This analysis applies to both system and method

claims.

11

Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348–49 (Fed. Cir. 2019)

12

(citations omitted); see BSG Tech, 899 F.3d at 1290–91 (In Alice, “the [Supreme] Court

13

only assessed whether the claim limitations other than the invention’s use of the ineligible

14

concept to which it was directed were well-understood, routine and conventional. [¶] Our

15

precedent has consistently employed this same approach. If a claim’s only “inventive

16

concept” is the application of an abstract idea using conventional and well-understood

17

techniques, the claim has not been transformed into a patent-eligible application of an

18

abstract idea.); see also Alice, 573 U.S. at 217 (“If so, we then ask, ‘[w]hat else is there in

19

the claims before us?’ To answer that question, we consider the elements of each claim

20

both individually and ‘as an ordered combination’ to determine whether the additional

21

elements ‘transform the nature of the claim’ into a patent-eligible application.” (quoting

22

Mayo, 566 U.S. at 78, 79)).

23

The Court acknowledges that in its January 13, 2020 order denying Snap’s motion

24

for reconsideration, the Court stated: “In the Court’s February 27, 2018 summary judgment

25

order, the Court held under step one of the Alice inquiry that the asserted claims are

26

directed to an abstract idea.” (Doc. No. 224 at 12.) But upon a further review of the record,

27

28

1 this statement is inaccurate.

2 In the prior court’s June 12, 2017 order on Snap’s motion to dismiss, the court

3 concluded its Alice step one analysis by stating:

4 Ultimately, whether the asserted claims are directed to: (1) an abstract

idea of protecting the identity of a message’s recipient or sender, or (2)

5

specific solutions (separation of display and transmission and restriction of

6 access) to the various challenges of electronic messaging (privacy,

manipulation, interception), presents a close call. Similar to the dilemma

7

faced by the Federal Circuit in Bascom, the asserted claims and their specific

8 limitations “do not readily lend themselves to a step-one finding that they are

directed to a nonabstract idea.” Bascom Global Internet Services, Inc. v.

9

AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016); see Elec. Power

10 Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (“we have noted

there can be close questions about when the inquiry should proceed from the

11

first stage to the second.”). For these reasons, the Court defers its

12 consideration of the claim limitations’ narrowing effect for step two.

13 (Doc. No. 59 at 10-11 (footnote omitted).)

14 In the Court’s February 27, 2018 summary judgment order, the Court stated:

15 In the Court’s order denying Snap’s motion to dismiss without

prejudice, the Court held that “the asserted claims and their specific

16

limitations ‘do not readily lend themselves to a step-one finding that they are

17 directed to a nonabstract idea.’” (Doc. No. 59 at 10-11 (quoting Bascom

Global, 827 F.3d at 1349).) Nothing in the parties’ summary judgment

18

briefing has altered the Court’s prior conclusion as to the Alice step one

19 analysis. Accordingly, the Court turns to step two of the Alice inquiry.

20 (Doc. No. 117 at 9.)

21 In further reviewing these two orders, the Court concludes that it has not definitively

22 ruled that the asserted claims are directed to an abstract idea. Snap argues that although

23 the prior court used a double negative in its analysis of Alice step one in the motion to

24 dismiss order, a close examination of the language in that order shows that the prior court

25 did make a final determination that the claims are directed to an abstract idea. The Court

26

27

28 9 The Court inherited this case from a prior judge who is now deceased. The prior judge issued the

1 disagrees. The Court notes that the prior court expressly stated in the motion to dismiss

2 order that it was “defer[ring]” its determination to Alice step two. Further, the Court notes

3 that nowhere in the motion to dismiss order does the prior court identify precisely the

4 abstract idea. This supports the conclusion that the prior court was not making a definitive

5 determination at Alice step one, but deferred consideration pending further development

6 of the record. See BSG Tech, 899 F.3d at 1285–86 (“Software . . . ‘can make non-abstract

7 improvements to computer technology just as hardware improvements can.’”). Moreover,

8 because Snap’s argument for presenting the jury with the Court’s prior § 101 orders is

9 premised on the notion that the Court has ruled that the asserted claims are directed to an

10 abstract idea, and that premise is incorrect, the Court rejects Snap’s argument.

11 In sum, the Court grants Vaporstream’s third motion in limine. The Court precludes

12 any reference to the Court’s prior rulings and orders, other than the Court’s claim

13 constructions set forth in the Court’s claim construction order absent further order of the

14 Court.

15 Conclusion

16 For the reasons above:

17 1. The Court grants the parties’ joint motion regarding the presentation of

18 evidence at trial regarding Vaporstream products, and the Court denies Snap’s first motion

19 in limine as moot.

20 2. The Court denies Snap’s second motion in limine without prejudice to a

21 contemporaneous objection at trial.

22 3. The Court grants in part and denies in part Snap’s third motion in limine.

23 Specifically, the Court strikes the January 29, 2020 Bratic supplemental expert report and

24 excludes any of the new opinions contained in the report. In addition, the Court precludes

25 Mr. Bratic from offering any reasonable royalty rate calculation or overall reasonable

26 royalty calculation at trial.

27 4. The Court grants Snap’s fourth motion in limine. The Court precludes

28 Vaporstream from introducing any evidence or argument relating to the inter partes review

1 || petitions for the patents-in-suit, and any activity at the PTAB related to these petitions

2 || absent further order of the Court.

3 5. The Court denies Snap’s fifth motion in limine as moot.

4 6. The Court denies Vaporstream’s first motion in limine without prejudice to a

5 contemporaneous objection at trial.

6 7. The Court denies Vaporstream’s second motion in limine without prejudice

7 a contemporaneous objection at trial.

8 8. The Court grants Vaporstream’s third motion in limine. The Court precludes

9 reference to the Court’s prior rulings and orders, other than the Court’s claim

10 |/constructions set forth in the Court’s claim construction order absent further order of the

11 |} Court.

12 The Court reminds the parties that if a party contends that the Court should

13 ||reconsider one of its rulings in this order in light of the circumstances presented at trial, the

14 || party must raise the issue at an appropriate time outside the presence of the jury.

15 IT IS SO ORDERED.

16 || DATED: February 28, 2020 | | | ul | | |

M7 MARILYNW. HUFF, Distri ge

18 UNITED STATES DISTRICT COURT

19

20

21

22

23

24

25

26

27

28