Kewazinga Corp. v. Google LLC

Background

Kewazinga Corporation filed ten motions in limine, which are requests to limit or exclude evidence before trial. The motions concerned evidence Google intended to use in support of its patent-invalidity theories, evidence concerning the functionality of alleged prior-art systems, evidence relevant to willfulness, and proposed witnesses.

Rulings on the Motions

1. First motion — denied. Kewazinga’s request to preclude evidence, testimony, and opinions about Google’s alleged “system” prior art that was not identified in Google’s invalidity contentions, final election of asserted prior art, or opening expert report was denied. The court held that Google could show the functionality of systems properly disclosed in its invalidity contentions and that the challenged materials were not new prior art. The court also found that Kewazinga had adequate notice of the materials during discovery.

2. Second motion — denied. The request to exclude evidence concerning the Star Trek: The Next Generation Interactive Technical Manual was denied. Google identified discovery evidence using the Manual to show the functionality of the Quick Time VR system. The court found the Manual relevant to Google’s invalidity theory, while leaving the question of how much weight to give the evidence to the jury.

3. Third motion — denied as moot without prejudice to renewal. Based on Google’s representation that it would not present material outside the identified invalidity reports and deposition, the court denied as moot Kewazinga’s request to exclude evidence about Dayton Taylor’s or other developers’ state of mind or personal knowledge concerning the Taylor System. Google could seek to establish that knowledge only through sources expressly identified by its expert, Dr. Lastra, including his firsthand observations of Taylor’s demonstration.

4. Fourth motion — granted in part and denied in part. As to the Chan reference, the court allowed Google to use it to show the Quick Time VR system’s functionality as a panorama creation and viewing tool, but barred Google from using it as support or evidence that Quick Time VR could generate “tweened imagery” or use interpolation. As to the Chen and Williams reference, the motion was denied. The court found evidence about “view interpolation” relevant to Google’s invalidity theory and held that the Chen 1995 article sufficiently incorporated the Chen and Williams material by specifically identifying it and giving page ranges.

5. Fifth motion — granted. The court excluded testimony and other evidence concerning the video marked as Zarakov Exhibit 37. Google argued that the video showed the Quick Time VR system disclosed “tweening,” meaning the generation of synthetic imagery from acquired imagery to show movement and transitions. The court found that Google had not submitted enough evidence to support a finding that the video used two acquired images.

6. Sixth motion — denied as moot in part and denied on the merits in part. The request to exclude the Taylor Article and the ’323 Patent as individual publication or patent prior-art references was denied as moot because Google said it did not intend to rely on them individually as prior-art references. The request to exclude them as evidence of the Taylor System’s functionality was denied on the merits. Google could use them to describe functionalities actually included in the 1996 Taylor System, but could not introduce aspirational statements describing functionalities that were not included in that system. The court also denied the request to preclude Dr. Lastra from offering an opinion that the Taylor System incorporated third-party morphing tools satisfying claim limitations, while limiting his reliance on the Taylor Article and the ’323 Patent as stated above. Whether the Taylor System incorporated such tools and satisfied the claim limitations was left to the jury.

7. Seventh motion — denied in part as moot and denied on the merits in part. The motion was denied as moot regarding an advice-of-counsel defense and three law-firm proposals because Google represented that it was not relying on that defense or those proposals. To the extent the evidence of Google’s pre-litigation beliefs had been produced or elicited in discovery, the motion was denied on the merits. The court found that evidence relevant to Google’s state of mind on willfulness and required a limiting jury instruction stating that the evidence was not offered for its truth. The ruling was without prejudice to objections under Evidence Rule 403 to documentary evidence concerning Google’s pre-litigation beliefs.

8. Eighth motion — granted in part and denied in part. The court barred evidence concerning the Mott Street Imagery, including testimony and other related evidence. Google had not shown that the imagery was created before the patents’ priority date or with the 1996 version of the Taylor System. The court nevertheless allowed Google to introduce evidence from the Digital Air Webpage concerning the functionality of the 1996 Taylor System other than the Mott Street Imagery.

9. Ninth motion — denied. The request to exclude evidence concerning the film The Matrix was denied. The court found that Google had identified evidence and testimony that The Matrix used the Taylor System, making it relevant to Google’s invalidity theory.

10. Tenth motion — granted in part and denied as moot in part. The court granted Kewazinga’s request to prevent Google from calling Kewazinga’s outside counsel, Ian DiBernardo of Brown Rudnick LLP, as a trial witness. Under Evidence Rule 403, the court found his testimony unnecessary and likely to confuse the jury and create unfair prejudice. Google could use a statement from DiBernardo’s email to show Google’s state of mind without calling him as a witness. The request concerning Kewazinga’s former counsel, Stroock & Stroock & Lavan LLP, was denied as moot because Google said it did not intend to call a witness from that firm.

Disposition

Judge Lorna G. Schofield directed the clerk to enter the ten rulings as summary dispositions and to close the motions. The order resolved evidence-management issues for the trial; it did not decide the underlying patent-invalidity or infringement questions.