Case 1:18-cv-00001-RGA-SRF Document 349 Filed 04/29/24 Page 1 of 3 PageID #: 38890
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IPA TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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`Defendant.
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`Civil Action No. 18-1-RGA
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`MEMORANDUM ORDER
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`Defendant filed a motion in limine to preclude Plaintiff from arguing that a sufficient
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`nexus exists between Siri, the digital assistant developed by Apple, and the asserted patent
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`claims. (D.I. 326). This issue is relevant to Plaintiff’s validity and damages arguments. I have
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`considered the parties’ briefing (id.) and the arguments made at the pre-trial conference on April
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`26, 2024. For the reasons set forth below, this motion is DENIED.
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`Claims 50, 53, and 54 of the ’560 patent are the only remaining asserted claims. (See D.I.
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`216; D.I. 342). These claims were challenged in an IPR filed by Microsoft. See Microsoft Corp.
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`v. IPA Techs. Inc., IPR 2019-00836 (P.T.A.B. petition filed Mar. 19, 2019). The P.T.A.B.
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`determined that Plaintiff failed to “establish[] a sufficient nexus between the Siri application and
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`the challenged claims of the ’560 patent” and therefore Plaintiff’s “secondary considerations
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`evidence [did] not weigh in favor of non[o]bviousness.” IPR 2019-00836, Paper No. 42 at 135–
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`36 (P.T.A.B. Oct. 22, 2020). The Board ultimately found claims 50, 53, and 54 nonobvious. (Id.
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`at 136). Defendant argues Plaintiff is estopped from asserting a sufficient nexus exists between
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`Siri and the asserted claims based on the IPR decision. (D.I. 326 at 2–3 of 14)
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`1
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`Case 1:18-cv-00001-RGA-SRF Document 349 Filed 04/29/24 Page 2 of 3 PageID #: 38891
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`A party asserting collateral estoppel ordinarily must satisfy the court that (1) the identical
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`issue was previously adjudicated; (2) the issue was actually litigated; (3) the previous
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`determination was necessary to the decision in the previous litigation; and (4) the party to be
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`estopped from relitigating the issue was fully represented in the prior action. Jean Alexander
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`Cosms., Inc. v. L'Oreal USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006); Laguna Hermosa Corp. v.
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`United States, 671 F.3d 1284, 1288 (Fed. Cir. 2012). “A determination ranks as necessary or
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`essential only when the final outcome hinges on it.” Bobby v. Bies, 556 U.S. 825, 835 (2009)
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`(citing 18 C. Wright, A. Miller, & E. Cooper, Federal Practice and Procedure § 4421, at 543 (2d
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`ed. 2002)).
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`The Board’s decision on nonobviousness did not depend on its finding that no nexus
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`existed. Rather, the Board’s finding regarding the nexus between Siri and the ’560 patent claims
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`“cut against the final judgment” on patentability. Bobby, 556 U.S. at 829. Such findings are
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`“quintessentially the kinds of rulings not eligible for issue-preclusion treatment.” Id. (quoting
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`Bies v. Bagley, 535 F.3d 520, 533 (6th Cir. 2008) (Sutton, J., dissenting from denial of rehearing
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`en banc)). As the nexus determination was not necessary or essential to the final outcome of the
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`IPR, issue preclusion does not apply to the arguments at hand.1
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`Defendant alternatively argues that Plaintiff and its experts should be precluded from
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`offering evidence or testimony regarding Siri’s commercial success, profitability, or popularity
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`because Plaintiff “has no evidence linking any such use of the asserted claims to Siri’s success,
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`1 This result is not affected by the requirement that “secondary considerations, when present,
`must be considered in determining obviousness.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 667
`(Fed. Cir. 2000). The question of nexus was not “necessarily determined” simply because the
`P.T.A.B. had to consider it to reach a determination on obviousness. Such a conclusion would
`“conflate[] a determination necessary to the bottom-line judgment with a subsidiary finding that,
`standing alone, is not outcome determinative.” Bobby, 556 U.S. at 835.
`2
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`Case 1:18-cv-00001-RGA-SRF Document 349 Filed 04/29/24 Page 3 of 3 PageID #: 38892
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`profitability or popularity.” (D.I. 326 at 4 of 14). “Defendants’ motion is essentially a motion
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`for summary judgment, which is not a proper basis for a MIL.” Wasica Fin. GmbH v. Schrader
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`Int'l, Inc., 2020 WL 509182, at *1 (D. Del. Jan. 31, 2020); see also Johns Hopkins Univ. v. Alcon
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`Labs. Inc., 2018 WL 4178159, at *21 (D. Del. Aug. 30, 2018) (“A motion in limine is not the
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`proper vehicle by which to eliminate issues from a case.”). Furthermore, Plaintiff identifies, and
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`Defendant does not address, citations to and discussion of various pieces of evidence in
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`Plaintiffs’ expert reports. (See D.I. 326 at 10, 13 of 14).
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`For the reasons stated above, Defendant’s motion in limine to (D.I. 326) is DENIED.
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`IT IS SO ORDERED.
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`Entered this 29th day of April, 2024
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`__/s/ Richard G. Andrews__
`United States District Judge
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`3
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