Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 1 of 19
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`FLYPSI, INC., (D/B/A FLYP),
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`
`
`CIVIL ACTION NO. 6:22-cv-00031-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`DEFENDANT GOOGLE LLC’S MOTIONS IN LIMINE
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`
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`
`

`

`
`I.
`II.
`
`III.
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`IV.
`
`V.
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`VI.
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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 2 of 19
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`TABLE OF CONTENTS
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`Page
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`B.
`
`C.
`
`INTRODUCTION ............................................................................................................. 1
`REQUESTS FOR CLARIFICATION OF THE COURT’S STANDARD IN
`LIMINE RULINGS AS APPLIED TO CASE .................................................................. 1
`A.
`Court MIL No. 3: The parties shall be precluded from introducing
`evidence, testimony, or argument concerning any party’s overall financial
`size, wealth, or executive compensation/ Court MIL No. 23: No expert
`witness may testify to expert opinions outside the established parameters
`of her/his expert report, and counsel shall not raise such an objection for
`strategic or other non-meritorious purposes. ......................................................... 1
`Court MIL No. 6: The parties shall be precluded from introducing
`evidence, testimony, or argument concerning the Patent Trial and Appeal
`Board, inter partes review, the Smith-Leahy America Invents Act, or any
`alternative structure that does not relate directly to an Article III trial in a
`district court. .......................................................................................................... 3
`Court MIL No. 9: The parties shall be precluded from introducing
`evidence, testimony, or argument referring to any other person or entity as
`“greedy,” “corrupt,” “evil,” or “dishonest,” or using any other pejorative
`term. The parties shall also be precluded from introducing evidence,
`testimony, or argument that characterizes any other person or entity’s
`actions as “stealing,” “copying,” “misappropriating,” “pirating,”
`“trespassing,” or any similar terms. ....................................................................... 3
`Court MIL No. 13: The parties shall be precluded from introducing
`evidence, testimony, or argument regarding either party’s other litigations
`or arbitrations, including parallel proceedings in any other court, tribunal,
`or forum, including ADR proceedings................................................................... 4
`GOOGLE MIL NO. 1: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`REGARDING UNDISCLOSED FACTS UNDERLYING
`
`AS TO WHICH FLYP INVOKED PRIVILEGE .................................... 5
`GOOGLE MIL NO. 2: NO OPINION TESTIMONY FROM ANY FLYP FACT
`WITNESS ON WHETHER ANY VERSION OF GOOGLE VOICE DOES OR
`DOES NOT PRACTICE THE ALLEGED INVENTION OR ANY SPECIFIC
`CLAIM LIMITATION ...................................................................................................... 7
`GOOGLE MIL NO. 3: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`REGARDING THE NOVEMBER 2015 MEETING ........................................................ 9
`GOOGLE MIL NO. 4: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`SUGGESTING THAT GOOGLE VOICE WAS CONSIDERED BY THE U.S.
`PATENT OFFICE IN CONNECTION WITH THE ASSERTED PATENTS ............... 11
`
`D.
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`-i-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 3 of 19
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`AllVoice Computing PLC v. Nuance Commc’ns, Inc.,
`No. H-02-4471, 2006 WL 6503363 (S.D. Tex. Jan. 10, 2006)..................................................7
`
`DataTreasury Corp. v. Wells Fargo & Co.,
`No. 2:06-CV-72 DF, 2010 WL 11538713 (E.D. Tex. Feb. 26, 2010) .......................................4
`
`Energy Heating, LLC v. Heat On-The-Fly, LLC,
`889 F.3d 1291 (Fed. Cir. 2018)..................................................................................................6
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co.,
`No. 2:15-CV-1202-WCB, 2017 WL 2190055 (E.D. Tex. May 18, 2017) ..............................10
`
`Estech Sys., Inc. v. Target Corp.,
`No. 2:20-cv-00123-JRG-RSP, 2021 WL 5154220 (E.D. Tex. July 21, 2021) ......................6, 7
`
`Hernandez v. Frazier,
`No. SA-11-CA-9-FB, 2012 U.S. Dist. LEXIS 193992 (W.D. Tex. May 11,
`2012) ..........................................................................................................................................6
`
`Mobile Telecommc’ns Techs., LLC v. ZTE (USA) Inc.,
`No. 2:13-CV-946-JRG, 2016 WL 8260584 (E.D. Tex. July 22, 2016) .....................................4
`
`Nguyen v. Excel Corp.,
`197 F.3d 200 (5th Cir. 1999) .....................................................................................................8
`
`Northpoint Tech., Ltd. v. DirecTV, Inc.,
`No. 1-09-CV-506 JRN, 2010 U.S. Dist. LEXIS 145988 (W.D. Tex. Oct. 28,
`2010) ......................................................................................................................................6, 8
`
`Uniloc USA, Inc. v. Microsoft Corp.,
`632 F.3d 1292 (Fed. Cir. 2011)..................................................................................................2
`
`U.S. ex rel. Vavra v. Kellogg Brown & Root, Inc.,
`848 F.3d 366 (5th Cir. 2017) ...................................................................................................10
`
`WSOU Investments LLC v. Google LLC,
`No. 6:20-cv-00585-ADA, Dkt. 248 (W.D. Tex. Sept. 21, 2023) ..........................................2, 3
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................................................9
`
`35 U.S.C. § 103 ................................................................................................................................9
`
`-i-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 4 of 19
`
`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
`35 U.S.C. § 273 ................................................................................................................................9
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`Other Authorities
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`Fed. R. Civ. P. 37 .............................................................................................................................7
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`Fed. R. Evid. 401 .............................................................................................................................4
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`Fed. R. Evid. 402 .............................................................................................................................4
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`Fed. R. Evid. 403 .............................................................................................................................4
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`Fed. R. Evid. 701 .............................................................................................................................8
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`Fed. R. Evid. 702 .............................................................................................................................8
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`-ii-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 5 of 19
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`
`I.
`
`INTRODUCTION
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`Google seeks clarification regarding certain aspects of the Court’s Order on Motions In
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`Limine as applied in this case. Dkt. 113. Additionally, Google respectfully moves the Court in
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`limine to enter an order precluding Plaintiff Flypsi, Inc. d/b/a “Flyp” (“Plaintiff” or “Flyp”), its
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`counsel, and witnesses from mentioning, referring to, or offering any evidence, testimony, or
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`argument relating to any of the following matters within the hearing of any juror during voir dire
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`or at any time during trial without first approaching the bench and obtaining a favorable ruling
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`regarding the admissibility and relevance of the matters sought to be presented to the jury.
`
`II.
`
`REQUESTS FOR CLARIFICATION OF THE COURT’S STANDARD IN LIMINE
`RULINGS AS APPLIED TO CASE
`A.
`
`Court MIL No. 3: The parties shall be precluded from introducing evidence,
`testimony, or argument concerning any party’s overall financial size, wealth,
`or executive compensation/ Court MIL No. 23: No expert witness may testify
`to expert opinions outside the established parameters of her/his expert report,
`and counsel shall not raise such an objection for strategic or other non-
`meritorious purposes.
`
`Google requests clarification that any evidence, testimony, or argument that relates, either
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`directly or indirectly, to Google’s revenue from products and sources disconnected from the
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`accused product falls within the ambit of Court MIL Nos. 3 and 23.
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`Based on responses to motions for summary judgment, deposition testimony, and expert
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`reports, Flyp will likely attempt to introduce evidence regarding Google’s overall advertising and
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`search revenue and/or to refer to materials such as SEC filings of Google or its parent entity,
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`Alphabet, Inc., to argue or imply that Google is a large and wealthy corporation. Dkt 154-3 at 8
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`(expert report stating
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`), 14
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`
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`
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`). But the
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`accused Google Voice product indisputably does not display advertisements and there is no
`
`-1-
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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 6 of 19
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`
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`evidence that Google Voice has any quantifiable impact on advertising revenue. Id. at 11
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`; see also Dkt. 154 at 6–9. If presented at trial, it will
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`be difficult, if not impossible, for a jury to disregard Google’s irrelevant advertising and other
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`unaccused revenue sources when considering the appropriate amount of damages, even if
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`instructed to do so. See Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318–21 (Fed. Cir.
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`2011) (affirming grant of a new trial on damages noting “[t]he $19 billion cat was never put back
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`into the bag even by Microsoft’s cross-examination of Mr. Gemini and re-direct of Mr. Napper,
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`and in spite of a final [jury] instruction . . . . The disclosure that a company has made $19 billion
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`dollars in revenue from an infringing product cannot help but skew the damages horizon for the
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`jury, regardless of the contribution of the patented component to this revenue” (citation omitted)).
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`Moreover, Flyp represents that its damages expert, Mr. Lewis, did not use advertising or
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`search revenue in calculating damages. Indeed, Flyp admits that Mr. Lewis “does not incorporate
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`any advertising revenue into his royalty base or royalty range—not a single dollar” and “neither
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`his royalty base nor rate include any search revenues[.]” Dkt. 178 at 1, 2. Thus, Flyp concedes that
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`the advertising revenue information, and particularly the amount of revenue, is irrelevant and
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`outside the scope of Mr. Lewis’s expert report. Accordingly, such revenue serves only to confuse
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`the jury and is prejudicial to Google.
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`Thus, it should be clarified that Court MIL Nos. 3 and 23 cover any evidence or argument
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`concerning Google’s overall advertising revenues and any revenues from Google products and
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`services unrelated to the accused product. In WSOU Investments LLC v. Google LLC, No. 6:20-
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`cv-00585-ADA, Dkt. 248 (W.D. Tex. Sept. 21, 2023), the Court granted a similar motion in limine
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`requesting that “Plaintiff And Its Experts Should Be Precluded From Making Any Reference To
`
`-2-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 7 of 19
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`
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`Or Arguments About Google’s Financials and Revenue Not Used In Plaintiff’s Damages
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`Calculations, Such As Overall Google Search Ad Revenue.” Id. at 3.
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`B.
`
`Court MIL No. 6: The parties shall be precluded from introducing evidence,
`testimony, or argument concerning the Patent Trial and Appeal Board, inter
`partes review, the Smith-Leahy America Invents Act, or any alternative
`structure that does not relate directly to an Article III trial in a district court.
`
`Google requests clarification that if Flyp introduces any evidence, testimony, or argument
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`related to proceedings at the U.S. Patent and Trademark Office, that Google may rebut such
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`arguments by reference to proceedings at the Patent Trial and Appeal Board. Based on responses
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`to dispositive motions, Flyp may attempt to argue that the USPTO has already determined any
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`Asserted Patent1 is valid or has already considered all of the prior art. Dkt. 185 at 3 (“[T]he
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`Asserted Patents are presumed valid and that presumption reflects the fact that the Patent and
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`Trademark Office has already examined whether the patent satisfies the prerequisites for issuance
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`of a patent . . . .” (internal quotation marks omitted)). If Flyp affirmatively makes such an
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`argument, Google should be permitted to mention that the PTAB has instituted inter partes review
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`of all asserted claims of the Asserted Patents and is considering their validity in view of the asserted
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`prior art. See IPR2023-00357-9 (instituting review of the ’585 Patent on July 31, 2023); IPR2023-
`
`00358-9 (same for the ’094 Patent); IPR2023-00359-9 (same for the ’554 Patent); IPR2023-00361-
`
`9 (same for the ’105 Patent); IPR2023-00360-9 (instituting review of the ’770 Patent on August 2,
`
`2023).
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`C.
`
`Court MIL No. 9: The parties shall be precluded from introducing evidence,
`testimony, or argument referring to any other person or entity as “greedy,”
`“corrupt,” “evil,” or “dishonest,” or using any other pejorative term. The
`parties shall also be precluded from introducing evidence, testimony, or
`argument that characterizes any other person or entity’s actions as “stealing,”
`
`
`1 The “Asserted Patents” are U.S. Patent Nos. 9,667,770 (the “’770 Patent”), 10,051,105 (the “’105
`Patent”), 10,334,094 (the “’094 Patent”), 11,012,554 (the “’554 Patent”), and 11,218,585 (the
`“’585 Patent”).
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`-3-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 8 of 19
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`
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`“copying,” “misappropriating,” “pirating,” “trespassing,” or any similar
`terms.
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`Google requests clarification that, the Court’s prohibition on pejorative terms or
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`characterizations under Court MIL No. 9 extends to preclude any suggestion that Google “spies,”
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`“tracks,” “invades privacy,” or “misuses data” (or similar terms), and further prohibits use of words
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`such as “monopoly” or “antitrust” (or similar terms) with respect to Google. Based on depositions,
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`expert reports, and exhibits Flyp has identified to date, Flyp seems intent on making such remarks.
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`See Dkt. 154-3 at 69 n. 440
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`; at 94
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`
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`. Such statements “would likely invite an emotion[al] response from
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`the jury, such as general hostility toward the [defendant]” and therefore are highly prejudicial to
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`Google and should be excluded under Fed. R. Evid. 403. DataTreasury Corp. v. Wells Fargo &
`
`Co., No. 2:06-CV-72 DF, 2010 WL 11538713, at *14 (E.D. Tex. Feb. 26, 2010). Moreover, such
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`remarks or characterizations are irrelevant to any issue in this case under Fed. R. Evid. 401 and
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`402. Accordingly, they should be included among the terms prohibited under Court MIL No. 9.
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`D.
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`Court MIL No. 13: The parties shall be precluded from introducing evidence,
`testimony, or argument regarding either party’s other litigations or
`arbitrations, including parallel proceedings in any other court, tribunal, or
`forum, including ADR proceedings.
`
`Google requests clarification that Court MIL No. 13 also precludes any evidence,
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`testimony, or argument relating to any foreign and domestic governmental or other investigations
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`or penalties involving Google that are unrelated to any issue in this case. Once again, reference to
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`such irrelevant proceedings would be highly prejudicial to Google and “would likely invite an
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`emotion[al] response from the jury, such as general hostility toward the [defendant].” Id.; see also
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`Mobile Telecommc’ns Techs., LLC v. ZTE (USA) Inc., No. 2:13-CV-946-JRG, 2016 WL 8260584,
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`-4-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 9 of 19
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`at *2 (E.D. Tex. July 22, 2016) (granting a MIL excluding evidence, testimony, or argument
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`“regarding unrelated litigations, investigations, or accusations involving the parties or their
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`affiliates or principles”).
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`III. GOOGLE MIL NO. 1: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`REGARDING UNDISCLOSED FACTS UNDERLYING
`
`
`AS TO WHICH FLYP INVOKED PRIVILEGE
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`Flyp and its witnesses should be precluded from arguing, presenting evidence, or making
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`reference to facts or assumptions regarding, or allegedly used during, negotiation and/or execution
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`of the license between Flyp and
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`. Flyp invoked “privilege” to
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`shield all such facts and assumptions from discovery and to prevent any and all questioning of its
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`witnesses about the
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` negotiation and execution. Nevertheless, Flyp apparently
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`intends to have its witnesses testify about agreement assumptions and conversations between
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` and Flyp during negotiation of the
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`, in particular that (1)
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` had
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`specifically defined and/or assumed a user base of
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` users, even though there is no evidence
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`of such a defined user base in the evidentiary record, and (2) the
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`. Allowing Flyp to present at trial information it earlier refused to provide in discovery
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`is unfairly prejudicial to Google and would impermissibly permit Flyp to use privilege as both a
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`shield and a sword.
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`During fact discovery, Google served an interrogatory seeking, among other things, the
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`“factual circumstances” leading to any agreements concerning the Asserted Patents, including
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`identification of communications “leading to or relating to the negotiation or execution” of any
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`agreement. Ex. 1 at 7–8. Flyp’s response identified the
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`, but then asserted
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`various forms of privilege––“specifically including the mediation privilege”––over any additional,
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`responsive information. Id. Flyp identified a handful of documents,
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`-5-
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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 10 of 19
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`. See Unikel Decl. ¶ 3.
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`
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`Nevertheless, Flyp’s damages expert, Justin Lewis, used these allegedly privileged facts in
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`calculating a proposed reasonable royalty. Specifically, in creating two potential royalty “indicator
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`ranges” based on the
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`, Mr. Lewis relied on an active monthly user base of
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` users that he obtained exclusively from conversations with Flyp’s CEO, Peter Rinfret. Ex.
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`2 at 34; Ex. 3 at 71:19-21
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`. This resulted in royalty ranges of
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`
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`either
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`. Ex. 2 at 47. To support the
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` rate, Mr. Lewis asserted that the
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`
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`. Id. Underlying this assertion is
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`Mr. Rinfret’s private representation to Mr. Lewis that
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`
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`
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` Id. at 32, 47.
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`It is black-letter law that Flyp cannot use an evidentiary privilege “as both a shield and
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`sword.” Estech Sys., Inc. v. Target Corp., No. 2:20-cv-00123-JRG-RSP, 2021 WL 5154220, at
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`*10 (E.D. Tex. July 21, 2021); see also Northpoint Tech., Ltd. v. DirecTV, Inc., No. 1-09-CV-506
`
`JRN, 2010 U.S. Dist. LEXIS 145988, at *4 (W.D. Tex. Oct. 28, 2010) (“[A] party cannot use the
`
`attorney-client privilege as both a sword and a shield.”); Hernandez v. Frazier, No. SA-11-CA-9-
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`FB, 2012 U.S. Dist. LEXIS 193992, at *23–24 (W.D. Tex. May 11, 2012) (both Fifth Circuit and
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`Federal Circuit law “prohibit the use of the attorney-client privilege as a sword and a shield”);
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`Energy Heating, LLC v. Heat On-The-Fly, LLC, 889 F.3d 1291, 1303 (Fed. Cir. 2018) (“The
`
`attorney-client privilege cannot be used as both a sword and a shield.”). Allowing Flyp to rely on
`
`-6-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 11 of 19
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`
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`facts related to the negotiation of the
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` that it withheld based on privilege
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`severely prejudices Google.
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`Their exclusion is warranted. For example, in Estech, the court excluded opinions that
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`relied on facts obtained during the interview of plaintiff’s CEO where the CEO withheld the same
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`information during his deposition. 2021 WL 5154220, at *10. As here, the defendant in Estech
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`“explicitly requested in fact discovery the very information Estech subsequently introduced. . . .
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`But Estech refused to provide substantive responses.” Id. at *8. The court held that this reliance
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`on newly introduced facts violated Rule 37, and struck opinions related to this information. The
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`same remedy is requested, and merited, here. See also AllVoice Computing PLC v. Nuance
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`Commc’ns, Inc., No. H-02-4471, 2006 WL 6503363, at *4 (S.D. Tex. Jan. 10, 2006) (granting a
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`MIL and noting: “To permit Nuance . . . to refuse to disclose the contents of any opinion that it
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`eventually did obtain, but allow it to benefit from the mere existence of such an opinion, would be
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`to allow Nuance to use the attorney-client privilege and the applicable precedents as both shield
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`and sword.”).
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`IV. GOOGLE MIL NO. 2: NO OPINION TESTIMONY FROM ANY FLYP FACT
`WITNESS ON WHETHER ANY VERSION OF GOOGLE VOICE DOES OR DOES
`NOT PRACTICE THE ALLEGED INVENTION OR ANY SPECIFIC CLAIM
`LIMITATION
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`Flyp’s fact witnesses generally and Mr. Rinfret specifically
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`-7-
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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 12 of 19
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`
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`Ex. 4 at 203:10–20. See also id. at 112:6–113:11
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`; 201:1–202:13; 204:14–18
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`; Ex. 5 at 326:18–330:14
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`
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`
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`fact witnesses
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`124:22–125:13; Ex. 7 at 229:9–230:15.
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`. Similarly, Flyp’s other
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`. See, e.g., Ex. 6 at
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`As discussed above, “a party cannot use the attorney-client privilege as both a sword and
`
`a shield.” Northpoint Tech., 2010 U.S. Dist. LEXIS 145988, at *4 (citing Nguyen v. Excel Corp.,
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`197 F.3d 200, 207 n.18 (5th Cir. 1999)); see supra, Section III (listing cases). Flyp cannot invoke
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`the attorney-client privilege to shield evidence from discovery and then rely on such undisclosed
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`evidence for the first time at trial.
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`Even if Mr. Rinfret had been willing to provide such opinion testimony, he
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` See Ex. 4 at 71:7–9
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`72:2
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`
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` 71:18–
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`; Fed. R. Evid. 701, 702.
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`-8-
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`

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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 13 of 19
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`To be clear, Google is not seeking to exclude all Flyp fact witness testimony regarding
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`Google Voice. Nor is Google seeking to exclude Flyp’s fact witnesses’ testimony on their
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`understanding of how prior art Google Voice operated. Rather, this motion is narrowly tailored to
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`the specific opinion testimony that Google attempted to elicit from Flyp’s fact witnesses, but that
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`—whether any
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`versions of Google Voice practiced any or all of the limitations of the asserted claims for purposes
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`of infringement, invalidity under 35 U.S.C. §§ 102 and 103, or prior commercial use under 35
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`U.S.C. § 273.
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`V.
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`GOOGLE MIL NO. 3: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`REGARDING THE NOVEMBER 2015 MEETING
`
`Flyp and its witnesses should be precluded from arguing, presenting evidence, or referring
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`to facts regarding the November 2015 meeting between Flyp’s CEO Peter Rinfret and Google
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`Ventures employee
`
`. Flyp has no evidence (a) that
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` had any connection
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`to Google or Google Voice at the time of the meeting, (b) that anyone at Google ever learned about
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`the meeting (or anything discussed at that meeting), or (c) that there was any link between the
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`meeting and either Google generally or Google Voice specifically. Flyp seeks to create confusion
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`in the minds of the jury because
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` employer at the time of the meeting was Google
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`Ventures,2 which was and is separate and independent from Google Inc. (now Google LLC) and
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`had no role in developing Google Voice. It is undisputed that no one from Flyp ever met with or
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`sent any information to anyone at Google, the defendant in this case. The meeting between Mr.
`
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`2 At a minimum, Flyp should be precluded from referring to “Google Ventures” as “Google,” or
`from arguing or suggesting that (a) Google Ventures is the same as or directly related to Google,
`(b) Google Ventures employees are Google employees, and (c) Google Ventures has any
`connection to, or role in connection with, Google Voice.
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`-9-
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`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 14 of 19
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`Rinfret and
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` is thus irrelevant, and permitting Flyp to mention that meeting at trial would
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`unfairly prejudice Google, confuse the issues, mislead the jury, and waste limited trial time.
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`Flyp has no evidence to support its suggestion that
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` transmitted information
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`obtained from Flyp to Google employees, much less those working on Google Voice. See, e.g.,
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`Ex. 1 at 45–47 (citing no evidence to support Flyp’s contentions).
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` became an employee
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`of Google LLC much later—in March 2021, six years after the November 2015 meeting
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`
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`Moreover, “knowledge of a mere employee of the corporation ordinarily is not imputed to the
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`company.” U.S. ex rel. Vavra v. Kellogg Brown & Root, Inc., 848 F.3d 366, 374 (5th Cir. 2017)
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`. Dkt. 108 at 11–12; Dkt. 143 at 6.
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`(citation omitted). Flyp has asserted that
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`. See Dkt. 203 at 4.
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`Flyp also asserts that
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` transmitted Flyp information directly to
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`, implying that they used such information to make updates to Google Voice. But
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`
`
`
`
`
`
`
`
` left Google long before November 2015. See Dkt. 108 at 6, 11. And
`
` worked at
`
`Google Ventures with
`
` and had no involvement with Google Voice at any time. See Dkt.
`
`177 at 2.
`
`Flyp has no evidence of any connection between the November 2015 meeting and the facts
`
`and events relevant to this case. And the Court should not let Flyp use pure conjecture to justify
`
`presentation of prejudicial, confusing and misleading information and argument to the jury.
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-WCB, 2017 WL
`
`2190055, at *3 (E.D. Tex. May 18, 2017) (granting pre-verdict JMOL, noting that “the
`
`circumstantial evidence relied on by UroPep was not strong enough to justify submitting the issue
`
`-10-
`
`

`

`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 15 of 19
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`
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`of willfulness to the jury, particularly in light of the fact that UroPep bore the burden of proof on
`
`the issue of willfulness and was required to show that Lilly’s conduct was sufficiently extreme to
`
`qualify as ‘egregious’ under the Supreme Court’s articulation”).
`
`Should the Court grant Google’s Motion for Summary Judgment of No Willfulness (Dkt.
`
`143), Google understands that Court MIL No. 1 (see Dkt. 113) will preclude Flyp from introducing
`
`any and all arguments or evidence concerning willfulness, including all argument and evidence
`
`concerning the November 2015 meeting between Mr. Rinfret and
`
`. However, Flyp
`
`should be precluded from more broadly arguing, presenting evidence, or referring to facts
`
`regarding the November 2015 meeting or any theory that
`
` transmitted information about
`
`Flyp to Google (or to
`
`), whether offered in connection with a claim of willful
`
`infringement or otherwise. Reference to those facts and theories in any way will unfairly prejudice
`
`Google, confuse the issues, mislead the jury, and waste limited trial time.
`
`VI. GOOGLE MIL NO. 4: NO EVIDENCE, TESTIMONY, OR ARGUMENT
`SUGGESTING THAT GOOGLE VOICE WAS CONSIDERED BY THE U.S.
`PATENT OFFICE IN CONNECTION WITH THE ASSERTED PATENTS
`
`Flyp and its witnesses should be precluded from arguing, presenting evidence, or referring
`
`to prior art Google Voice being disclosed or otherwise considered by the USPTO during the
`
`prosecution of the Asserted Patents generally and during prosecution of the ’770, ’105, ’094, and
`
`’554 Patents, specifically. Any such assertions are factually untrue, substantially prejudicial,
`
`confusing and misleading to the jury, and a waste of time.
`
`It is undisputed that Flyp never disclosed Google Voice during the prosecution of the first
`
`four issued patents: the ’770, ’105, ’094, and ’554 Patents. And there is no evidence that the
`
`examiners of these patents themselves identified and considered any materials relating to Google
`
`Voice. Any assertion or implication that the examiners considered Google Voice when
`
`determining the patentability of at least these patents is therefore baseless. Flyp filed U.S. Patent
`
`-11-
`
`

`

`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 16 of 19
`
`
`
`Application 13/944,853 (the “’853 Application”), the parent application of all the Asserted Patents,
`
`on July 17, 2013. Although
`
`
`
`, they did not disclose anything related to Google Voice
`
`as prior art until 2021, late in the prosecution of the ’585 Patent,
`
`
`
` Ex. 1 at 5–6; Ex. 4 at 161:10–162:22; Ex. 6 at 94:9–96:15, 110:12–111:22,
`
`151:3–152:8; Ex. 7 at 169:10–18. Specifically, Flyp filed an Information Disclosure Statement
`
`(“IDS”) on November 9, 2021—over eight years after filing the ’853 Application; after the ’770,
`
`’105, ’094 and ’554 Patents were issued; and after a notice of allowance was issued regarding the
`
`’585 Patent. Ex. 8; Ex. 9. The IDS contained three public references that described at a high level
`
`some of the features and operation of Google Voice. Exs. 10–12. A second notice of allowance
`
`regarding the ’585 Patent was issued thereafter. Ex. 13.
`
`Allowing Flyp to argue or suggest that prior art Google Voice was disclosed to and
`
`considered by the USPTO for the Asserted Patents generally, and/or the ’770, ’105, ’094 and ’554
`
`Patents specifically would be highly prejudicial
`
`
`
`. Such Flyp argument or suggestion would mislead
`
`and confuse the jury into believing that one or more patent examiners actually evaluated the
`
`patentability of the inventions claimed in the ’770, ’105, ’094, and ’554 patents in light of
`
`, which is indisputably incorrect. The potential confusion is particularly acute
`
`as to the ’770 and ’105 Patents, which are directed to methods for handling incoming calls (the
`
`“Incoming Call Patents”), while the ’585 Patent—the only patent that lists any of the three “Other
`
`Publications” discussing Google Voice due to those publications’ very late disclosure—is directed
`
`to a method for handling outgoing calls. It is undeniable that no publications or other materials
`
`-12-
`
`

`

`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 17 of 19
`
`
`
`referencing Google Voice were ever cited to, or considered by, the examiner of the Incoming Call
`
`Patents.
`
`Even as to the ’585 Patent, any suggestion by Flyp that Google Voice was fully considered
`
`by the Patent Office would be false and misleading. The three publications disclosed by Flyp after
`
`the Patent Office issued a Notice of Allowance for the ’585 Patent describe only at a high-level
`
`some of the many features of
`
`. They do not disclose or describe in detail
`
`the internal processes used by Google Voice to handle incoming or outgoing calls, which are the
`
`call handling processes now accused by Flyp. Thus, any argument or suggestion that the three
`
`public references disclosed the entirety of the
`
` system is baseless, and
`
`would mislead and confuse the jury into thinking that the
`
` had been fully
`
`evaluated by the patent examiners, which is untrue.
`
`
`
`
`
`
`
`-13-
`
`

`

`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 18 of 19
`
`DATED: December 21, 2023
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`Ariell N. Bratton (Pro Hac Vice)
`ariellbratton@paulhastings.com
`PAUL HASTINGS LLP
`4655 Executive Drive, Suite 350
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`
`
`
`
`-14-
`
`

`

`Case 6:22-cv-00031-ADA Document 228 Filed 12/27/23 Page 19 of 19
`
`
`
`Dan L. Bagatell (Pro Hac Vice)
`dbagatell@perkinscoie.com
`PERKINS COIE LLP
`3 Weatherby Road
`Hanover, NH 03755
`Telephone: (602) 351-8250
`Facsimile: (602) 648-7150
`
`Andrew T. Dufresne (Pro Hac Vice)
`adufresne@perkinscoie.com
`PERKINS COIE LLP
`33 E. Main St. Ste. 201
`Madison, WI 53703
`Telephone: (608) 663-7460
`Facsimile: (608) 663-7499
`
`Paige Arnette Amstutz
`State Bar No.: 00796136
`pam