Regents of the University of Minnesota v. AT&T Mobility LLC

Background

Regents alleged that major mobile-phone companies infringed four patents. The parties had resolved the dispute concerning one of the five patents originally asserted. In preparation for trial, they filed motions in limine—pretrial requests asking the court to limit evidence or arguments presented at trial. The opinion addressed motions that had been deferred after an earlier hearing, as well as the rulings listed in the order for the related civil actions.

Motions discussed in the opinion

Defendants’ sixth motion

The defendants argued that Regents should not present a theory about a “symbol interleaver” that exceeded the court’s earlier claim-construction and summary-judgment orders. Regents said it would argue that the accused product infringed because it interleaved groups of symbols while also reordering individual symbols, not because interleaving groups alone was sufficient.

The court granted the motion because it enforced the prior claim-construction order. It did not impose additional limits on Regents’ infringement arguments and did not allow the parties to introduce language from the claim-construction order that was not part of the actual claim constructions. The parties could still raise objections at trial.

Regents’ first motion

The court had previously granted summary judgment for Regents on the defendants’ inequitable-conduct claim, so the defendants could not raise matters related to that claim. The remaining dispute concerned whether certain articles referenced in provisional patent applications were prior art based on their actual dates.

The court granted Regents’ first motion in limine in part, excluding specific references to the failure to include prior-art dates on the provisional applications. The court treated the actual dates of the articles as a separate issue.

Regents’ fifth motion

Regents sought to prevent the defendants from using their own patents to support a non-infringement argument under the doctrine of equivalents. The court denied the motion. It held that the defendants’ patents could be introduced as one factor among others for the jury to consider when deciding whether a component was separately patentable and therefore not an insubstantial change.

The court declined to require proof that the United States Patent and Trademark Office had reviewed the patents at issue before issuing the defendants’ later patents, because the Federal Circuit had not identified that review as an express requirement.

Regents’ seventh motion

Regents challenged the defendants’ proposed use of hypothetical claims to argue that two patents were invalid. The court was inclined to allow arguments based on the defendants’ expanded invalidity contentions, but it recognized difficulty separating invalidity arguments from arguments about “ensnarement,” a legal issue involving the scope of the doctrine of equivalents.

Because the defendants’ expert had analyzed prior art using both the literal claims and the hypothetical claim, the court deferred ruling until it could discuss the issue with the parties before trial.

Regents’ eighth motion

Regents sought to exclude evidence about why Samsung equipment was not accused and whether Samsung equipment was a non-infringing alternative. The defendants agreed not to refer to the conflict that accusing Samsung would have created and to approach the court before arguing that Samsung equipment was a non-infringing alternative.

The court granted Regents’ eighth motion. It clarified that the ruling did not bar unrelated references to Samsung.

Order

The court ordered the following:

- The joint motions in limine were granted. - The carrier defendants’ motion in limine was denied. - The defendants’ motions in limine were granted in part and denied in part. Specifically: - The defendants’ first motion was denied. - The defendants’ second motion was granted in part, limiting Regents’ use of revenue to the revenue included in Dr. Lynde’s report. - The defendants’ third motion was denied as moot. - The defendants’ fourth motion was granted provisionally, with the parties instructed to approach the court before arguing about a party’s failure to call witnesses. - The defendants’ fifth motion was denied, but Regents could not argue that the asserted patents were not the sole reason for commercial success or industry praise. - The defendants’ sixth motion was granted, requiring the parties to confine their arguments to the court’s prior orders. - The defendants’ seventh motion was granted, while allowing Regents to raise future concerns with the court. - The defendants’ eighth motion was denied, while allowing the defendants to serve supplemental expert reports. - The defendants’ ninth motion was denied, with the defendants allowed to raise concerns during trial. - The plaintiff’s motions in limine were granted in part, denied in part, and deferred in part. The order provided that: - The plaintiff’s first motion was granted in part, denied in part, and deferred in part. The parties could not impeach Dr. Wells based on expert opinions that conformed to the court’s orders; the court would give the jury a preliminary instruction about literal infringement and infringement under the doctrine of equivalents; the parties could not discuss the court’s prior finding of no literal infringement on two identified patents; inventorship arguments were deferred; and defendants could not present evidence that dates were missing from Regents’ provisional applications. - The plaintiff’s second motion was denied. - The plaintiff’s third motion was granted in part and denied in part, limiting the parties to evidence consistent with the court’s summary-judgment order. - The plaintiff’s fourth motion was granted in part and deferred in part. The parties could not make remarks disparaging or bolstering the Patent and Trademark Office, and the court deferred ruling on use of the prosecution history of two identified patents. - The plaintiff’s fifth motion was denied. - The plaintiff’s sixth motion was resolved on joint stipulation. - The plaintiff’s seventh motion was deferred. - The plaintiff’s eighth motion was granted.