Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 1 of 8 PageID #: 34770
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`:
`
`
`CHANBOND, LLC,
`:
`
`
`
`
`
`
`:
`
`
`
`
`Plaintiff,
`:
`
`
`
`
`
`
`Civil Action No. 15-842-RGA
`:
`
`
`
`v.
`
`
`: Consolidated
`
`
`
`
`
`
`ATLANTIC BROADBAND GROUP, LLC, :
`
`
`et al.,
`
`
`
`
`:
`
`
`
`
`
`
`:
`
`
`
`Defendants.
`
`:
`
`
`
`
`
`
`
`
`MEMORANDUM ORDER ON COX MOTIONS IN LIMINE
`
`In Chanbond v. Cox, I make the following rulings on the motions in limine.
`
`Chanbond MIL #1 (D.I. 515). Plaintiff seeks to prevent testimony inconsistent with my
`
`claim construction of “combiner.”1 The claim construction required multiple “channels or
`
`inputs.” (D.I. 86). Plaintiff states Cox’s expert is essentially making that construction “channels
`
`and inputs.” Plaintiff further argues that Cox’s expert is adding limitations to “multiplexer,”
`
`including in support of its “combiner” arguments.
`
`Cox responds that it is following the “channels or inputs” claim construction. It states
`
`that its arguments concern “parallel to serial conversion.” Cox says its argument is that it does
`
`not infringe because the accused “combiner” is serial to serial. (See D.I. 471 at 112, noting a
`
`factual dispute on this issue.). As to “multiplexer,” Cox notes that I did not construe the term,
`
`
`1 Combiner appears in claim 1 of the ‘822 patent, claim 12 of the ‘679 patent, and most of the rest of the asserted
`claims. (D.I. 86 at 3; D.I. 470 at 30). It was construed as “multiplexer that, when it receives multiple channels or
`inputs, performs parallel to serial conversion on those channels or inputs.” (D.I. 86 at 7-8). Although the Markman
`opinion says this is Plaintiff’s proposal, it was actually Defendants’. (D.I. 471 at 31).
`Page 1 of 8
`
`
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 2 of 8 PageID #: 34771
`
`and that an expert is going to have to explain to a jury whether something is or is not a
`
`multiplexer.
`
`Plaintiff’s reply (D.I. 515 at 84 of 85) disagrees with Cox’s description of what its expert
`
`is doing.
`
`I do not think there is anything I can resolve on this motion at this time. As to
`
`“multiplexer,” it is unlikely any juror will know what that is, and thus the experts will have to
`
`explain what it is (i.e., its plain and ordinary meaning to a POSA) to the jury. As for the
`
`“combiner” arguments, if Plaintiff hears testimony from Defendant’s expert that is contrary to
`
`my claim construction, Plaintiff should make an objection at the appropriate time. Chanbond’s
`
`MIL #1 is DENIED without prejudice to timely objection at trial.
`
`Chanbond MIL #2 (D.I. 516). Plaintiff seeks to exclude expert opinion not in expert
`
`reports, specifically as to Dr. Prucnal and the “Amit Patent.” The issue arises because Cox needs
`
`to rely upon the provisional application for the Amit Patent to make the Amit Patent prior art.
`
`Plaintiff says Dr. Prucnal offered no opinion on whether the provisional application was enabled.
`
`Cox responds that Dr. Prucnal’s analysis complied with Federal Circuit caselaw.2 It does
`
`not appear that Cox intends to offer something from Dr. Prucnal that he has not previously
`
`stated.
`
`The reply (id. at 99 of 100) argues the law. It does request that Dr. Prucnal “not be
`
`permitted to [offer opinions regarding the amount of experimentation necessary to practice the
`
`Amit claims] for the first time at trial.”
`
`
`
`It certainly appears to be the case that Cox and its expert have some burden to put forth
`
`evidence that the “specification of the provisional must ‘contain a written description of the
`
`
`2 Cox cites Dr. Prucnal’s opening and reply reports. (See D.I. 501-1 at 12-22 of 231 (¶¶ 235-50); D.I. 516 at 25-29
`of 100 (¶¶ 35-42)).
`
`
`
`Page 2 of 8
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 3 of 8 PageID #: 34772
`
`invention [sufficient]’ to enable a [POSA] to practice the invention claimed in the non-
`
`provisional application.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). Whether the testimony that is supported by cited portions of the expert
`
`reports will support enablement is more akin to a summary judgment question than an issue for a
`
`motion in limine. And the question of whether Dr. Prucnal testifies beyond his report has to be
`
`addressed by a timely objection if and when the issue arises. Chanbond’s MIL #2 is DENIED
`
`without prejudice to timely objection at trial.
`
`Chanbond MIL #3 (D.I. 517). Plaintiff seeks to exclude testimony and evidence relating
`
`to other patents purportedly covering aspects of DOCSIS 3.0. Plaintiff identifies seven patents
`
`discussed by Cox’s technical expert, and states that they are irrelevant to any remaining
`
`invalidity theory. (Cox does not dispute this statement.). Plaintiff’s argument in regard to
`
`damages appears to be that, while Cox can certainly argue that DOCSIS 3.0 includes a lot more
`
`technology than what was invented by the asserted patents, it would be unfairly prejudicial and
`
`confusing if that argument included identified patents. Plaintiff also states that there is no
`
`analysis done to show that the seven patents even read on DOCSIS or the accused products.
`
`Cox’s technical expert also discussed “patent pools.” Plaintiff’s argument is summed up as,
`
`“[what the technical expert says about patent pools] can be readily established by available, but
`
`far less prejudicial, evidence in the case.” (D.I. 517 at 6 of 122).
`
`In response, Cox says the seven patents are relevant to apportionment and damages. Cox
`
`at one point states that it does not matter that the seven patents are not compared to DOCSIS 3.0
`
`or to the accused products. (Id. at 10 of 122). It cites no authority for this proposition. (If they
`
`are not compared, how are they determined to be relevant?). But Cox also cites portions of its
`
`expert’s reports describing the contribution of the patents to the DOCSIS technology. (D.I. 517
`
`
`
`Page 3 of 8
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 4 of 8 PageID #: 34773
`
`at 15-38 of 122 (¶¶ 136-75)).3 As for patent pools, Cox says the “DOCSIS” word search is not
`
`the meat of the expert’s opinions (so that its inaccuracy does not matter). I understand Cox to be
`
`saying that the patent pools are part of the story of all the different technologies in DOCSIS.
`
`
`
`I think the patents are clearly relevant. They may or may not be the best way to make
`
`Cox’s point, but I cannot say that their probative value is substantially outweighed by the risk of
`
`confusion. See Fed. R. Evid. 403. Since Cox effectively concedes that a word search using
`
`DOCSIS proves nothing, and what is important is the analysis of the actual technology, the
`
`DOCSIS word search is excluded. It has no probative value, and therefore is irrelevant. (If it
`
`were relevant, I would nevertheless exclude it under Rule 403.). As to the patent pool, I disagree
`
`with Plaintiff’s assertion that the amount of technology that goes into DOCSIS is irrelevant to
`
`apportionment, and therefore I do not exclude testimony about patent pools, which, as I
`
`understand it, is offered in support of the concept that there is a lot of apportionment that has to
`
`be done (which Cox’s expert says Plaintiff’s expert has not done). Chanbond’s MIL #3 is
`
`GRANTED in part and DENIED in part, without prejudice to Chanbond’s ability to object to
`
`testimony about specific patents at trial on any permissible basis.
`
`Cox MIL #1 (D.I. 501-3). The request is to exclude Baumgartner, “DOCSIS 3.1’s Price
`
`Delta.”4 It’s a twelve-sentence blog post, dated January 14, 2016. (Id. at 10 of 62). Among
`
`other things, Cox objects that it is hearsay.
`
`Plaintiff responds that it is not hearsay because it is not offered for the truth. Rather it is
`
`offered, Plaintiff says, for its affect on readers. (Id. at 32 of 62). Thus, I guess the logic goes
`
`
`3 The heading for this analysis is, “The numerous additional technologies needed to implement the channel bonding
`technique of DOCSIS 3.0.”
`
` 4
`
` As far as I can tell, in connection with this motion, neither side cites to any portion of Dr. Teece’s report to show
`what exactly he is doing with this blog post. Cox cites portions of Dr. Teece’s deposition transcript, but mostly to
`support its argument that Dr. Teece has no basis to rely upon the blog post.
`Page 4 of 8
`
`
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 5 of 8 PageID #: 34774
`
`that the parties to the hypothetical negotiation in in 2011-12 (D.I. 501-4 at 4 n.1 of 154, citing
`
`Teece Cox Report ¶¶ 166, 169) would have (like a POSA) had all information in the world both
`
`inside and outside of their respective businesses and would have chosen to rely on some
`
`unknown third-party’s unsourced statements about anticipated pricing.
`
`Cox, in reply, says Plaintiff’s expert uses the blog post for the truth of the matter asserted.
`
`I do not need to decide whether Cox is right about what Plaintiff’s expert uses it for,
`
`because, taking Plaintiff’s argument at face value, the chain of reasoning that the double hearsay5
`
`content of a blog post in 2016 is relevant for its impact on the hypothetical negotiation in 2011-
`
`12 is nevertheless too attenuated to support the blog post’s admission. Plaintiff asserts that the
`
`expectations of the parties to the hypothetical negotiation is the basis for the cost approach to
`
`damages. (D.I. 501-3 at 32 of 62). The hypothetical negotiation may be hypothetical, but that
`
`does not mean that the facts that stand behind the analysis need not be tethered to reality.6 The
`
`blog post is irrelevant and therefore Cox’s MIL #1 to exclude it and testimony based on it is
`
`GRANTED.7
`
`Cox MIL #2 (D.I. 501-4). The request is to exclude the “2002 Portelligent report.”8 It is
`
`offered in support of the “dual modem” approach. It concerns the “Toshiba PCX2600 Cable
`
`
`5 It is double hearsay because Baumgartner cannot be cross-examined about his assertions that what he reported
`people saying is what they said, and because the unnamed people cannot be cross-examined about the truth of the
`matter asserted that is attributed to them, that is, what they expected to happen. The proposition that the course of
`the hypothetical negotiation would have been impacted by “word on the street” in 2016 is not credible. By
`Plaintiff’s logic, if it had created its own website shortly after filing this lawsuit (i.e., in 2016), it could have posted
`that it had heard that the modems would have a “price premium” of 100%, and that would constitute admissible
`evidence.
`
`6 I would be surprised if Dr. Teece stated that people in the industry relied upon unsourced statements in blog posts
`to determine anything of importance to their businesses, including future pricing trends. The deposition excerpts
`suggest that I would be right about this.
`
` 7
`
` I would exclude it under Rule 403 if I were not determining it is inadmissible.
`
` 8
`
` Cox sometimes calls it the “2003 Portelligent report” (see D.I. 501-4 at 4 of 154; but see id. at 146 of 154), but it is
`copyrighted 2002.
`
`
`
`Page 5 of 8
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 6 of 8 PageID #: 34775
`
`Modem.” (Id. at 10-45 of 154). Portelligent “extends no warranties with respect to any
`
`information in this document, and shall bear no liability whatsoever for the use of the
`
`information.” (Id. at 10). Plaintiff’s expert makes some use of the information in this report to
`
`estimate the cost of adding a DOCSIS 2.0 channel to a cable modem at the time of the
`
`hypothetical negotiation, about nine years later. (See id. at 53-55 of 154 (Opening Exp. Rep. ¶¶
`
`294-302, citing the analysis in “Exhibit 6A”); id. at 58-60 of 154 (Reply Exp. Rep. ¶¶ 284-89,
`
`citing “Exhibit 6B” to the Opening Report)).
`
`Plaintiff states it is not hearsay if offered to show the parties’ expectations at the
`
`hypothetical negotiation. (D.I. 501-4 at 49 of 154).
`
`As far as I can tell, Dr. Teece has not stated whether the 2002 Portelligent Report is
`
`something a financial expert would reasonably rely upon, see Fed. R. Evid. 703, and other than
`
`one paragraph (id. at 59 of 154) which does not address the issue, the record is silent on the
`
`issue.9 (The one paragraph implies that Dr. Teece has taken into account the passage of time,
`
`and I agree with Plaintiff that simply because I excluded other evidence relating to this time
`
`period does not indicate anything about what I should do with this piece of evidence.).
`
`I think the only reason the Portelligent report is being offered or relied upon is for the
`
`truth of the matter asserted in it. Thus, I reject Plaintiff’s attempt to avoid the hearsay issue. I
`
`have previously excluded somewhat analogous third-party reports. See In re: IH1, Inc., 2015
`
`WL 5679724 (D. Del. Sept. 25, 2015). But I cannot say on the present record that I would do the
`
`
`9 To show that the Portelligent Report is the sort of thing that an expert would rely upon, Plaintiff cites to a report by
`Dr. Nettleton (D.I. 501-4 at 48 of 154, citing id. at 117-18 of 154) who indeed relies upon it. But he is a technical
`expert, and a “teardown report” complete with lots of pictures and diagrams seems like something a technical expert
`might well rely upon. Whether or not a financial expert would rely upon it for its financial analysis is a different
`question.
`
`
`
`Page 6 of 8
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 7 of 8 PageID #: 34776
`
`same with the 2002 Portelligent report. And, even if I excluded it as hearsay, I might still permit
`
`Dr. Teece to rely upon it in his analysis.
`
`I do not think the record before me is sufficient to rule on this motion. I suggest that the
`
`parties quickly confer about how to proceed (in view of the scheduled trial date), and either I can
`
`take supplemental written submissions, I can take testimony before the start of trial, or I can deal
`
`with it in a hearing the day of jury selection.
`
`Cox MIL #2 is DEFERRED pending further proceedings.
`
`Cox MIL #3 (D.I. 501-5). The request is to exclude Cisco documents asserting that Cisco
`
`“[i]nvented channel bonding (Wideband) in 2001.” (Id. at 13 of 260). Cox says the statements
`
`are hearsay. The phrase appears in a document that is dated 2006. Plaintiff’s invalidity expert
`
`refers to it in an expert report for the proposition that inverse multiplexing was not well known in
`
`2000 because Cisco claimed Cisco had invented it (“inverse multiplexing” and “channel bonding
`
`(Wideband)” presumably being the same thing) in 2001. (Id. at 66 of 260 (Ash Rpt., ¶ 423)).
`
`Plaintiff responds that it is not offering the statements for their truth. (D.I. 501-5 at 74-76
`
`of 260). That is, Plaintiff’s view is that Cisco did not invent channel bonding in 2001; rather, the
`
`inventors invented it in 2000. Plaintiff states that this is relevant to non-obviousness.
`
`Cox replies. (Id. at 244 of 260). It states, and I agree, that there is a hearsay issue.
`
`Cisco is a third party. The document is offered to prove that Cisco made the statement in
`
`2006. (The parties usually stipulate to authenticity, and the document was produced by Cox, so
`
`this is likely not an issue.). But, the document cannot be cross-examined. The issue about cross-
`
`examination is significant. The document asserts that in 2006 Cisco had some belief about what
`
`the state of affairs was in 2001. The value of the document as evidence is zero unless the
`
`implied assertion that this is what Cisco believed in 2001 is a true statement of what Cisco
`
`
`
`Page 7 of 8
`
`

`

`Case 1:15-cv-00842-RGA Document 559 Filed 04/15/21 Page 8 of 8 PageID #: 34777
`
`believed in 2001. It is thus offered for the proof of the truth of the matter asserted. The parties
`
`also argue about what the unknown author meant by the phrase “channel bonding (Wideband).”
`
`By itself, the interpretation of what was meant by “channel bonding (Wideband)” is a factual
`
`dispute.
`
`It appears to be undisputed that no one has asked anyone at Cisco anything about the
`
`document.
`
`Thus, since the relevance of the document, if any, depends upon the truth of the out-of-
`
`court assertion of a person who cannot be cross-examined, it is inadmissible hearsay. Cox’s MIL
`
`#3 is GRANTED. The document and any testimony based on it are excluded.
`
`
`
`
`
`
`
`IT IS SO ORDERED this 15th day of April 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Richard G. Andrews
`United States District Judge
`
`
`
`Page 8 of 8
`
`