In anticipation of a trial to begin next week between Personalized User Model LLP (PUM) and Google, Judge Stark has issued an order addressing several pending pretrial motions. Judge Stark first granted a motion to exclude Google’s non-infringement expert because he failed to apply one of the Court’ claim constructions, instead making arguments that the Court had rejected during claim construction. By contrast, however, some of the expert’s opinions did not expressly contradict the Court’s constructions but rather went to “fact dispute[s] that will be a proper subject of the infringement trial.” Thus, the motion to exclude was granted in part and denied in part. Personalized User Model, L.L.P. v. Google Inc., C.A. No. 09-525-LPS, Memo. Or. at 2-3 (D. Del. Feb. 27, 2014). Judge Stark then turned to Google’s motion to exclude PUM’s expert, holding: “the Court agrees with Google that Dr. Pazzani shall not provide testimony on legal issues, including his experience at Rutgers with assignment and transfer of patent rights. Dr. Pazzani will be permitted to provide technical evidence, including opinion, from the perspective of one of skill in the art of the patents-in-suit, including whether Dr. Konig’s work ‘related’ to SRI’s work and ‘resulted’ in the patented technology.” Id. at 4.
Judge Stark also considered PUM’s request to preclude Google from trying its claims for conversion before the jury in the upcoming trial. Judge Stark first recognized that Google was correct to assert that it has a Seventh Amendment right to a jury trial for its conversion claim. Nevertheless, Judge Stark did “not believe that Google is entitled to have conversion tried now, to the same jury that is deciding infringement and validity of the patents as well as breach of contract,” and found that such a combined trial ran a risk of confusion and unfair prejudice that would outweigh probative value under F.R.E. 403. “Adding conversion to the forthcoming trial would increase the risk of confusing the jury and unfairly prejudicing PUM, for reasons including that the inclusion of this claim would expressly confront the jury with the reality that if Google prevails, it (Google) will own the patents-in-suit. Under the circumstances, including that damages and willfulness have been bifurcated, this is inappropriate and unnecessary.” Id. at 5-6.
Among other issues considered, Judge Stark granted PUM’s request to preclude any mention of pending reexaminations of the patents-in-suit. “Given the nonfinality of the reexamination proceedings (appeal rights have not been exhausted) and the different standards applicable to reexaminations and litigation, the probative value of the reexamination evidence is substantially outweighed by the risk of unfair prejudice and the risk of confusing the jury.” Id. at 6. Similarly, Judge Stark granted PUM’s request to preclude use of the term “patent troll” but explained that both parties would be permitted to present evidence as to the background and development history of the patent as well as evidence to establish or rebut commercial success of the inventions of the patents-in-suit. Id. at 6-7.
Finally, Judge Stark addressed Google’s motions in limine. His Honor granted Google’s request to preclude evidence of copying or pre-suit knowledge because inducement and willfulness were not part of the upcoming jury trial. Accordingly, “the minimal probative value [of such evidence] is substantially outweighed by the risk of unfair prejudice to Google.” Id. at 8. Judge Stark next denied Google’s request to preclude evidence of Google’s acquisition of another personalization company. “Allowing the jury to learn, through financial information, that Google is a very successful company is not unduly prejudicial to Google. Google may effectively challenge the weight the jury should give this evidence through cross-examination. Similarly, the value Google placed on its acquisition of Kaltix is at least probative of commercial success.” Id. at 8-9.