Case 2:15-cv-00037-RWS Document 410 Filed 07/05/17 Page 1 of 5 PageID #: 24066
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ELBIT SYSTEMS LAND AND C4I LTD.,
`ELBIT SYSTEMS OF AMERICA, LLC,
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`Plaintiffs,
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`v.
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`HUGHES NETWORK SYSTEMS, LLC,
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`Defendant.
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`Case No. 2:15-CV-00037-RWS-RSP
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`ORDER ON MOTIONS IN LIMINE
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`Before the Court are Motions in Limine filed by Plaintiffs Elbit Systems Land and C4I Ltd.
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`And Elbit Systems of America, LLC (collectively, “Elbit”) (Dkt. 370) and by Defendant Hughes
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`Network Systems, LLC (“Hughes”) (Dkt. 370). The Court heard argument on the motions during
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`the pretrial conference on June 26, 2017. For the reasons explained at the conference, the Court
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`rules as follows. A party must approach the bench before introducing evidence or argument about
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`the subject matter of a granted motion in limine.
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`ELBIT’S MOTIONS IN LIMINE
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`1. Testimony or Argument Contrary to the Markman Order
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`DENIED. Either party may object to witness testimony as being contrary to the Court’s
`claim construction at trial.
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`2. PES Demonstration System
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`CARRIED. Plaintiffs were given leave to take a deposition of Mr. Messineo in Michigan,
`not to exceed four hours. The deposition must be completed before the next pretrial
`conference. The Court will reconsider Plaintiffs’ motion in limine in light of
`Mr. Messineo’s testimony.
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`3. Relative Importance of Claim Elements
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`DENIED.
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`1
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`Case 2:15-cv-00037-RWS Document 410 Filed 07/05/17 Page 2 of 5 PageID #: 24067
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`4. Expert Testimony Not Disclosed in Expert Reports
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`GRANTED IN PART and DENIED IN PART as follows: (1) Defendant is precluded
`from presenting evidence or argument that Mr. Elbert is an inventor of the subject matter
`claimed in the ’073 patent; and (2) Defendant is precluded from relying on uncharted prior
`art to prove invalidity by demonstrating that uncharted prior art discloses or suggests
`elements of the asserted claims. Defendant is also precluded from introducing uncharted
`prior art as an exhibit and displaying uncharted prior art as a demonstrative, with the
`exception of books authored by Mr. Elbert. Defendant is otherwise not precluded from
`relying on uncharted prior art in the context of background material relevant to the
`technology at issue, state of the art, or establishing what one of skill in the art would have
`known at the time of the invention. The motion is otherwise denied with the
`understanding that expert testimony is always limited to the disclosure in the report. See
`Fed. R. Civ. P. 26(a)(2)(B), 37(c)(1).
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`5. Any Argument That Shiron Breached its 2008 Patent Commercialization Agreement With
`iLeverage
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`DENIED.
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`6. References to Claims or Causes of Action That Have Been Dismissed or Dropped by Elbit to
`Narrow its Case for Trial
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`GRANTED as to (1) evidence or argument that the fact that a claim or cause of action has
`been dropped or dismissed suggests that a product is not covered by the claims or that a
`third party does not infringe; and (2) evidence or argument that the fact that a product or
`third party was once accused but is no longer accused suggests the product is not covered
`by the claims or the third party does not infringe.
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`7. Products and Third Parties Not Accused of Infringement
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`GRANTED as to evidence or argument that the fact that a party has not been sued for
`patent infringement suggests that the party does not infringe.
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`8. Defendants’ Patents or Patent Applications as a Defense to Infringement
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`GRANTED as to evidence or argument that Defendant’s patents are a defense to
`infringement.
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`9. Criticisms of the USPTO and/or USPTO Employees and Speculation About Possible Examiner
`Responses
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`GRANTED BY AGREEMENT. But does not prevent argument of invalidity.
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`10. References to Equitable Issues
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`2
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`Case 2:15-cv-00037-RWS Document 410 Filed 07/05/17 Page 3 of 5 PageID #: 24068
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`DENIED with the understanding that Defendant will not (1) present evidence or
`argument that is relevant only to an equitable issue, absent agreement; or (2) present
`evidence or argument that Plaintiffs are estopped or undeserving of damages because of
`Plaintiffs’ delay in filing suit.
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`11. Elbit’s Business Activities
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`GRANTED IN PART AS RECIPROCAL BY AGREEMENT and DENIED as to
`Defendant’s use of the phrase “hold up” as an economic term.
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`* * *
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`HUGHES’ MOTIONS IN LIMINE
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`1. Evidence or argument that the ’073 Patent requires unclaimed features or capabilities
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`DENIED.
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`2. Evidence or argument that “means for switching” satisfies the “switching means” or that a
`“decision to switch” at the remote terminal is not required by the claims
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`DENIED.
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`3. Evidence or argument concerning the doctrine of equivalents
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`GRANTED BY AGREEMENT.
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`4. Evidence or argument suggesting that the Personal Earth Station is not prior art because
`documents and source code were not public
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`DENIED.
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`5. Evidence or argument that Advantech’s products practice the asserted patents
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`GRANTED AS RECIPROCAL BY AGREEMENT.
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`6. Evidence or argument that Defendant copied the ’874 Patent
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`GRANTED BY AGREEMENT.
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`7. Preclude References, Evidence, or Argument Regarding Financial Arrangements between
`Biscotti and Its Outside Counsel or Any Difficulties in Obtaining Financing for This Litigation.
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`CARRIED.
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`8. Evidence or argument that Defendant had a duty to search or investigate patents
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`GRANTED BY AGREEMENT that Plaintiffs will not prevent evidence or argument that
`Defendant had a duty to search or investigate patents. Plaintiffs are not precluded from
`presenting evidence or argument that Defendant did investigate patents. In addition,
`Plaintiffs may refer to 37 C.F.R. § 11.18, which among other things relates to an applicant’s
`certification that statements made to the Patent Office are true, but the Court will closely
`monitor any testimony related to this provision at trial.
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`9. Evidence or argument concerning purported statements by Kenneth Miller, deceased
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`CARRIED.
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`10. Evidence or argument that violates the entire market value rule
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`GRANTED BY AGREEMENT as to total revenues and net worth, DENIED as to unit
`prices including products and services.
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`11. Evidence or argument concerning the parties’ Caltech-related discovery letters
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`GRANTED as to discovery letters from Defendant’s counsel.
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`12. Evidence or argument that Hughes’ patents show infringement, validity, or the functionality of
`Hughes’ products
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`GRANTED BY AGREEMENT that Defendant’s patents will not be used to show
`functionality of Hughes’ accused products.
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`13. Evidence or argument suggesting that the Personal Earth Station was not inventive or first in
`time because Hughes did not seek its own patent
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`WITHDRAWN.
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`14. Evidence or argument relating to indemnification agreements
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`GRANTED AS MODIFIED BY AGREEMENT.
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`15. Evidence or argument of discovery deficiencies, violations, or spoliation
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`GRANTED with the narrow exception that if a party relies on the absence of its own
`documents to establish a material fact, the opposing party may present evidence or
`argument about that party’s document retention policy.
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`16. Evidence or argument for the presumption of validity
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`DENIED.
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`17. Evidence or argument relating to expert’s prior affiliations
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`GRANTED BY AGREEMENT.
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`18. Improper argument regarding the burden of proof
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`GRANTED (modified from ruling at pretrial conference). Before a party presents
`argument concerning the burden of proof in a different area of law, e.g., the burden of proof
`required to commit an individual to an institution, revoke parental rights, or terminate life
`support, the party must first approach the bench. This applies to any reference to the
`burden of proof in another area of law anticipated during voir dire.
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`19. Evidence or argument that the Court has power to dismiss frivolous suits
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`GRANTED.
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`20. Evidence or argument relating to irrelevant lawsuits
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`GRANTED to the extent that the parties will not discuss the terms of a license or
`agreement that neither party contends is comparable to the hypothetical license.
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`21. Reference to a priority or reduction to practice date earlier than the date of filing of the ’073
`Patent
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`DENIED AS MOOT in light of Court’s previous Order. See Dkt. 388.
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`22. Evidence or argument relating to the Gilat Settlement
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`WITHDRAWN.
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`5
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