Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 1 of 21
`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`WACO DIVISION
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`FLYPSI, INC. (D/B/A FLYP),
`
`Plaintiff,
`
`Vs.
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`GOOGLE LLC,
`
`Defendant.
`
`Civil Action No. 6:22-cv-31-ADA
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`JURY TRIAL DEMANDED
`
`es
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`
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`PLAINTIFF’S OMNIBUS MOTION IN LIMINE
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 2 of 21
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`TABLE OF CONTENTS
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`FLYP’S MOTIONS IN LIMINE ................................................................................................... 1
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`I.
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`II.
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`MOTION IN LIMINE NO. 1: No Argument or Evidence
`Regarding Inventorship or Specific Contributions of Each Inventor
`to the Patents. ........................................................................................................ 1
`
`MOTION IN LIMINE NO. 2: No Argument or Evidence
`Regarding Lay Persons Understanding of Claim Terms. ..................................... 1
`
`III. MOTION IN LIMINE NO. 3: No Argument or Evidence
`Regarding the Commercial Grade of Flyp’s Product. .......................................... 1
`
`IV. MOTION IN LIMINE NO. 4: No Argument or Evidence
`Regarding that Flyp has the Burden to Establish the Changes in
`Google Voice. ....................................................................................................... 2
`
`V.
`
`MOTION IN LIMINE No. 5: No Argument or Evidence Regarding
`Google’s Untimely Claim Construction Arguments............................................. 4
`
`VI. MOTION IN LIMINE No. 6: No Argument or Evidence Regarding
`any Patents, Patent Applications, Claims, Defenses, or Prior Art
`No Longer Asserted or at Issue in this Case ......................................................... 5
`
`VII. MOTION IN LIMINE No. 7: No Argument or Evidence Based on
`or Regarding Documents Not Disclosed during Discovery .................................. 5
`
`VIII. MOTION IN LIMINE NO. 8: No Argument or Evidence
`Regarding the Familial or Personal Relationships of Flyp
`Employees or Agents, or Any Potential Witness. ................................................. 6
`
`IX. MOTION IN LIMINE NO. 9: No Argument or Evidence
`Regarding Potential Untoward Uses of Flyp or Google Secondary
`Number Servies. .................................................................................................... 7
`
`X.
`
`MOTION IN LIMINE NO. 10: No Argument or Evidence
`Regarding the Circumstances of
`
`. ......................................................................................... 8
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`XI. MOTION IN LIMINE NO. 11: No Argument or Evidence
`Regarding the Professional Relationship between the Parties’
`Damages Expert. ................................................................................................... 8
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`COURT’S STANDARD ORDERS IN LIMINE APPLIED ......................................................... 9
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 3 of 21
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`I.
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`II.
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`III.
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`IV.
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`V.
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`COURT ORDER IN LIMINE NO. 3: The parties shall be
`precluded from introducing evidence, testimony, or argument
`concerning any party’s overall financial size, wealth, or executive
`compensation. ....................................................................................................... 9
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`COURT ORDER IN LIMINE NO. 4: The parties shall be
`precluded from introducing evidence, testimony, or argument
`regarding prior art that is not disclosed in a specific combination
`set forth in any party’s expert report or invalidity contentions. .......................... 10
`
`COURT ORDER IN LIMINE NO. 5: The parties shall be
`precluded from introducing evidence, testimony, or argument
`before the jury that relates only to equitable defenses or
`counterclaims (i.e., evidence that does not also serve another
`evidentiary purpose relevant to jury issues). ....................................................... 11
`
`COURT ORDER IN LIMINE 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. .................. 12
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`COURT ORDER IN LIMINE NO. 18: The parties shall be
`precluded from introducing evidence, testimony, or argument for
`purposes of non-infringement comparing the accused product or
`method to the preferred embodiments, the specification, or any
`non-accused product or method. ......................................................................... 14
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 4 of 21
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`AstraZeneca AB v. Apotex Corp.,
`782 F.3d 1324 (Fed. Cir. 2015)..................................................................................................9
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009)................................................................................................13
`
`Doe v. NCL (Bahamas) LTD,
`2012 WL 12844743 (S.D. Fla. Nov. 27, 2012)..........................................................................7
`
`GS Cleantech Corp. v. Adkins Energy LLC,
`951 F.3d 1310 (Fed. Cir. 2020)................................................................................................11
`
`Hafeman v. LG Elecs., Inc.,
`No. 6:21-CV-00696-ADA, 2023 WL 4362863 (W.D. Tex. Apr. 14, 2023) ...........................13
`
`Integra LifeSciences Corp. v. HyberBranch Med. Tech., Inc.,
`No. 15-CV-819, 2018 WL 2186677 (D. Del. May 11, 2018) ..................................................14
`
`Intellectual Ventures II LLC v. FedEx Corp.,
`No. 2:16-CV-00980-JRG, 2018 WL 10638138 (E.D. Tex. Apr. 26, 2018) ............................13
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`No. CV 18-452-WCB, 2022 WL 2800911 (D. Del. June 27, 2022) .......................................13
`
`Mannesmann Demag Corp. v. Engineered Metal Prods.,
`793 F.2d 1279 (Fed. Cir. 1986)................................................................................................12
`
`MV3 Partners LLC v. Roku, Inc.,
`No. 6:18-CV-00308-ADA, ECF No. 332 (W.D. Tex. Sept. 29, 2020) ...................................13
`
`Myco Indus., Inc. v. BlephEx, LLC,
`955 F.3d 1 (Fed. Cir. 2020)......................................................................................................14
`
`PerdiemCo, LLC v. IndusTrack LLC,
`2016 WL 8189022 (E.D. Tex. Nov. 7, 2016) ............................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) ...................................................................1
`
`Proxense, LLC v. Samsung Electronics, Co., Ltd., No. 6:21-CV-00210-ADA, ECF
`No. 161 (W.D. Tex. Jan. 12, 2023) ..........................................................................................13
`
`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 5 of 21
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`Statutes
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`35 U.S.C. § 273 ................................................................................................................................3
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 6 of 21
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`FLYP’S MOTIONS IN LIMINE
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`Flypsi, Inc. (“Flyp”) respectfully moves in limine to preclude Google, LLC (“Google”)
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`from offering or eliciting evidence or testimony regarding the following during trial:
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`I.
`
`MOTION IN LIMINE NO. 1: No Argument or Evidence Regarding Inventorship or
`Specific Contributions of Each Inventor to the Patents.
`
`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to the inventorship of the Asserted Patents or the specific contributions of each
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`inventor to the Asserted Patents. Google did not plead any claim or defense related to inventorship
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`in its Answer and Counterclaims, and this topic was also not included in Google’s proposed jury
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`instructions. As such, this Court should exclude such evidence and testimony.
`
`II. MOTION IN LIMINE NO. 2: No Argument or Evidence Regarding Lay Persons
`Understanding of Claim Terms.
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to a lay person’s understanding of any claim term. Each of the construed claim
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`terms in this case were given their plain and ordinary meaning. (ECF No. 78 at 2.) Further, the
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`standard for what the plain and ordinary meaning of a claim term is “the meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
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`of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313,
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`(Fed. Cir. 2005) (emphasis added). As such, eliciting any testimony as to how a lay person would
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`understand, interpret, or define claim language is improper and should be excluded by this Court.
`
`III. MOTION IN LIMINE NO. 3: No Argument or Evidence Regarding the Commercial
`Grade of Flyp’s Product.
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
`
`making references to the so-called “commercial grade” of Flyp’s product or code.
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`
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`1
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 7 of 21
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` (See ECF 152-2 at 134-140.)
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`4 at 471:13–473:18.)
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`(Id. at 472:23-473:18 (“
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`
`
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` (See ECF 152-
`
`
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`
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`
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`”).) Setting aside whether such an opinion could affect a lost profits
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`analysis, Flyp is not seeking lost profit damages here.
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`
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` is not relevant
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`to any claim or defense in this case and should be excluded under at Federal Rules of Evidence
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`(“FRE”) 401 and 403.
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`IV. MOTION IN LIMINE NO. 4: No Argument or Evidence Regarding that Flyp has the
`Burden to Establish the Changes in Google Voice.
`
`Google, its counsel, and all witnesses should be precluded from introducing, arguing, or
`
`making references that Flyp bears a burden to establish how Google Voice’s outgoing functionality
`
`and operation changed over time, or that Flyp was required to put on expert testimony about such
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`changes over time. While Flyp carries the burden on infringement during the infringement period
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`, Flyp does not bear any burden regarding the prior art period (pre-July
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`2013) or prior use period (pre-July 2012).
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`As the Court is aware, the burden is on accused infringers to demonstrate invalidity by
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`anticipation or obvious by clear and convincing evidence. In addition, Congress explicitly
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`2
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 8 of 21
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`burdened infringers, like Google, to prove prior commercial use by clear and convincing evidence.
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`See 35 U.S.C. § 273(b). Specifically, Google must show under the much higher clear and
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`convincing evidence standard that Google Voice practiced all the same claim limitations in 2012
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`or earlier. See 35 U.S.C. § 273(a)-(b). Google cannot satisfy this by simply pleading a prior
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`commercial use defense and putting the onus on Flyp to rebut it. See id. Google must instead prove
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`that Google Voice practiced every limitation in the asserted claims from the Outbound Patents
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`more than a year before their priority dates. See id. § 273(a) (requiring prior use product “would
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`otherwise infringe”).
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`As explained in Flyp’s previous motions, (see ECF Nos. 150, 174), Google has not
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`proffered competent evidence that Google Voice practiced the methods in the Outbound Patents
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`more than a year before their priority dates. Google has conceded that the critical question of prior
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`commercial use under Section 273 turns on the operation of Google Voice in July 16, 2012. (See
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`ECF No. 147 at 3.) Google does not, however, clearly or convincingly show the operation of
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`Google Voice before this date because its expert,
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`
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`Instead, Google attempts in its briefing to shift the burden to Flyp. Google has previously
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`attempted to place the burden under 35 U.S.C. § 273(b) on Flyp to establish some change over
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`time. (See ECF No. 147 at 9-12 (arguing that “Flyp has presented no expert opinion or other
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`evidence regarding any supposed changes to the Google Voice outgoing call flow from 2009 to
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`today). But nowhere does the law—either of invalidity or prior use under § 273—place such a
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`burden on Flyp. And Google cites the Court to no authority to the contrary. The burden is on
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`3
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 9 of 21
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`Google to establish that the operation of its product in 2012 or 2013 meets every limitation of the
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`outgoing claims—and it is Google’s burden to do so by clear and convincing evidence.
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`Any argument or suggestion to the jury that Flyp bears a burden to establish a change over
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`time is contrary to the law and thus would only serve to confuse the jury and prejudice Flyp.
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`Google should be precluded from arguing any burden is on Flyp other than what the law requires—
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`that Flyp prove infringement and damages by a preponderance of the evidence.
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`V. MOTION IN LIMINE No. 5: No Argument or Evidence Regarding Google’s
`Untimely Claim Construction Arguments
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
`
`making references to its untimely claim construction arguments that it raised for the first time in
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`its Motion for Summary Judgment of Non-Infringement of the ’770 and ’105 Patents. (ECF No.
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`145.)
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`For example, in that Motion, Google argued for the first time that “Flyp was required to
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`add the ‘bridge telephone number’ limitations during prosecution to clarify its invention and
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`overcome rejections based on prior art that expressly recognized the difference between ‘telephone
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`numbers’ and other types of addresses, such as a
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` (Id. at 4.) Google further argues that
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`“bridge telephone number” must be “a telephone number (e.g., in the U.S., a ten-digit number
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`identifying a specific telephone device) that can be dialed from a telephone device.” (Id. at 5.) It
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`even acknowledges that “[n]either party proposed any construction for the term ‘telephone
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`number’ or ‘bridge telephone number,’ because,
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`
`
` (Id.)
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`Google cites portions of the prosecution history of the Asserted Patents in support of its
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`new claim constructions. However, it had the opportunity to do exactly this during the claim
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`construction process but chose not to. (See ECF No. 47.) Google’s untimely claim construction
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`4
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 10 of 21
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`argument is highly prejudicial to Flyp and would unnecessarily confuse the jury. Therefore,
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`Google should be prohibited from presenting it at trial.
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`VI. MOTION IN LIMINE No. 6: No Argument or Evidence Regarding any Patents,
`Patent Applications, Claims, Defenses, or Prior Art No Longer Asserted or at Issue
`in this Case
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to any patents, patent applications (including any pending application by Flyp),
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`claims, defenses, or prior art no longer asserted or at issue in this case. None of these would be of
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`consequence in determining the present action and are therefore not relevant under FRE 401.
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`Consequently, the Court should prohibit their entry into the record.
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`VII. MOTION IN LIMINE No. 7: No Argument or Evidence Based on or Regarding
`Documents Not Disclosed during Discovery
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to any Google documents or communications not produced to Flyp during fact
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`discovery. For example, in its Motion for Summary Judgment of Non-Infringement of the ’094,
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`’554, and ’585 patents, Google relies upon an unproduced blog post to describe the purported
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`functionality of Google Voice in 2010. (See ECF No. 174 at 9-10.) Google was required to
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`produce all such documents in response to at least Flyp Request for Production No. 6, which
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`requested “[c]opies of all instructions, guidelines, user manuals, instruction manuals, coding
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`manuals, installation guides, product brochures, operating manuals, and other Documents that
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`describe how the Accused Products operate and, specifically, how the Patented Technology
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`operates within the Accused Products.” (See Ex. 1, Flyp’s First Requests for Production, at No. 6;
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`see also id. at Request Nos. 5, 8.) This document is also responsive to several other requests
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`directed towards the version and revision history of the Accused Products. (See Ex. 2, Flyp’s
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`Second Requests for Production, at Nos. 47, 48.)
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`5
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 11 of 21
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`As explained in Flyp’s opposition to Google’s Motion,
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` (ECF No. 174 at 9.)
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`Similarly, Dr. Gottesman proffered opinions in his invalidity report based in part upon
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` For example, in
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`paragraphs 93 and 98-10 of his report,
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`
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`See Gottesman Oct. 31, 2023 Dep. at 326:11-22. These documents are
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`responsive to at least the same requests for production listed above. (See Ex. 1 at Nos. 5, 6, 8; Ex.
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`2 at Nos. 47, 48.) Google’s failure to produce these documents denied Flyp a reasonable
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`opportunity to depose Google’s corporate representatives on these documents or test their accuracy
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`prior to trial.
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`Because Google has not established good cause for these untimely new documents, the
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`Court should exclude them from evidence.
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`VIII. MOTION IN LIMINE NO. 8: No Argument or Evidence Regarding the Familial or
`Personal Relationships of Flyp Employees or Agents, or Any Potential Witness.
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references the personal lives of Flyp employees (or any potential witness), under FRE 403
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`because its probative value is substantially outweighed by the prejudice it would cause in the minds
`
`6
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`

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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 12 of 21
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`
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`of the jury. For example, Mr. Peter Rinfret’s personal life or conduct is not immediately relevant
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`to this case. Mr. Rinfret is the co-founder and CEO of Flyp. Because of his business and political
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`dealings, he has lived much of his life in the public eye. As such, the press has reported on certain
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`details of his personal life, including his marriages, divorces, and child custody disputes, as well
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`as the underlying details and allegations. Such salacious details of Mr. Rinfret’s personal life are
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`irrelevant to the present case, and their probative value is substantially outweighed by the unfair
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`prejudice they would create. See, e.g., Doe v. NCL (Bahamas) LTD, 2012 WL 12844743, at *1
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`(S.D. Fla. Nov. 27, 2012) (excluding references to acts of infidelity, the plaintiff’s divorce, and the
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`basis for plaintiff’s divorce on the grounds that it would “be unduly prejudicial and must be
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`excluded pursuant to Federal Rule of Evidence 403.”). Moreover, such details about any individual
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`or witness involved in this case is similarly irrelevant and of no probative value. All such reference
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`about any person or witness should be precluded.
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`IX. MOTION IN LIMINE NO. 9: No Argument or Evidence Regarding Potential
`Untoward Uses of Flyp or Google Secondary Number Servies.
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`Google, its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references regarding any untoward or illegal use of secondary number services or that
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`either party intended its product to be used for such purposes under FRE 403. For example, Google
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`should be precluded from making any reference that an individual may have a salacious purpose
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`for wanting or having a second number, such as conducting an affair or dealing in illegal drugs
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`and substances. At the outset, any such reference amounts to nothing more than rampant
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`speculation. There is no allegation in this case that the Asserted Patents should not have issued or
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`that this Court should not have exercised its subject matter jurisdiction because of the doctrine of
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`illegality. As such, any implication that the patents are directed toward illegal or unsavory uses
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`has no probative value and would be outweighed by the prejudice it causes in the mind of jury.
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`7
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 13 of 21
`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 13 of 21
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`X.
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`MOTION IN LIMINE NO. 10: No Argument or Evidence Regarding the
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`Google,its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to the circumstances regardingPo
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`0 i:
`pst,as
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`Po However, asP| himself said, this is “not relevant to
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`the patent[s at issue].” (Ex. 3, Kochhar Dep. at 269:17-23.) Such evidence and testimony would,
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`at most, amountto character evidence, but not any kind of character evidence that would fall under
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`the purview of Rule 404.
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`Instead, because evidence and testimony regarding Mr. Rinfret’s
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`managementstyle or the circumstancesiiittdoes notrelate to any claim
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`or defense at issue in the case, such evidence and testimony is of no consequence in determing
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`the action. Therefore, their introduction serves very little probative value and could not outweigh
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`the unfair prejudice they would cause in the minds of the jury. Accordingly, this Court should
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`preclude Google from offeringit.
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`XI. MOTION JNIIMINE NO.11: No Argument or Evidence Regarding the Professional
`Relationship between the Parties’ Damages Expert.
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`Google,its counsel, and all witnesses should be precluded from introducing, relying on, or
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`making references to the professional relationship between the parties’ damages experts—Google
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`expert Mr. Christopher Martinez and Flyp expert Mr. Justin Lewis. While both were employed by
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`StoneTurn Group, LLP some years ago, Mr. Martinez had some supervisory responsibilities over
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`Mr. Lewis. Any such discussion of this relationship may leave an impression in the mind ofthe
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`jurors that Mr. Martinez’s opinions are more trustworthy orreliable than Mr. Lewis’s, independent
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 14 of 21
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`of any substantive critique of Mr. Lewis’s opinions. As such, the probative value of that fact is
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`outweighed by the prejudice it would cause in the mind or the jurors and it should be excluded.
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`COURT’S STANDARD ORDERS IN LIMINE APPLIED
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`Flyp respectfully moves in limine to preclude the following from trial subject to the Court’s
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`standard limine rulings:
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`I.
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`COURT ORDER IN LIMINE NO. 3: The parties shall be precluded from introducing
`evidence, testimony, or argument concerning any party’s overall financial size,
`wealth, or executive compensation.
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`Flyp moves the Court in limine for an order that construes the Court’s standing limine No.
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`3 to include precluding Google, its counsel, and all witnesses from introducing, relying on, or
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`making references to Flyp’s profitability. The Court should exclude any reference to Flyp’s lack of
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`profits because it is directly related to Flyp’s financial size and wealth. Specifically, if Google
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`attempts to suggest that Flyp’s lack of profits affects a reasonable royalty damages analysis, the
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`Court should preclude this evidence, testimony, or argument because (1) Flyp is not seeking lost
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`profits, and (2) Flyp’s profitability or lack thereof is irrelevant to a reasonable royalty theory of
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`damages.
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`Flyp is not seeking lost profits. Rather, Flyp is seeking a reasonable royalty. While Flyp’s
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`profitability may be relevant to a lost profits theory of damages, it is not relevant to a reasonable
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`royalty theory of damages. See AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1333–34 (Fed.
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`Cir. 2015) (“The reasonable royalty theory of damages, however, seeks to compensate the patentee
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`not for lost sales caused by the infringement, but for its lost opportunity to obtain a reasonable
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`royalty that the infringer would have been willing to pay if it had been barred from infringing.”).
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`Thus, the Court should construe its standing limine No. 3 to include references to Flyp’s lack of
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`profits for damages consideration.
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`9
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 15 of 21
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`II.
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`COURT ORDER IN LIMINE NO. 4: The parties shall be precluded from introducing
`evidence, testimony, or argument regarding prior art that is not disclosed in a specific
`combination set forth in any party’s expert report or invalidity contentions.
`
`Flyp moves the Court in limine for an order that construes the Court’s standing limine No.
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`4 to include precluding Google, its counsel, and all witnesses from introducing, relying on, or
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`making references to the Nokia N80, numerous YouTube videos, Burner, or any other prior art that
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`Dr. Gottesman or Google’s invalidity contentions do not disclose in a specific combination. The
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`Court should exclude references to these prior art disclosures because
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` and because Google is no longer relying upon the Burner system in its invalidity
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`argument.
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`First, Google did not mention any Nokia product in its invalidity contentions and Google
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`should be precluded from relying on any such product at trial. (See ECF No. 152 at 17-21.)
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`Second, Google’s exhibit list includes dozens of YouTube videos related to Google Voice.
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`Dr. Gottesman, however,
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`ECF No. 152-2 at ¶¶ 82, 252–53.)
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` (See
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`Third, the Court should preclude any evidence, testimony, or argument regarding Burner.
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`In its Response to Flyp’s Motion for Partial Summary Judgment Concerning, inter alia, the Burner
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`system, Google stated that it “withdraws its anticipation and obviousness defenses based on the
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`Burner System.” (ECF No. 181.) Google nonetheless attempts to maintain the right to rely on the
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`Burner system as evidence of the state of the art. But this would only confuse the jury when
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`presented alongside other prior art that Google contends does anticipate or render obvious the
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`Asserted Patents. Therefore, the probative value of testimony and evidence regarding the Burner
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`10
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 16 of 21
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`system is outweighed by the prejudice it would cause in the minds of the jury. Google should be
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`prohibited from offering evidence and testimony regarding Burner on this basis.
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`III. COURT ORDER IN LIMINE NO. 5: The parties shall be precluded from introducing
`evidence, testimony, or argument before the jury that relates only to equitable
`defenses or counterclaims (i.e., evidence that does not also serve another evidentiary
`purpose relevant to jury issues).
`
`Flyp moves the Court in limine for an order that construes the Court’s standing limine No.
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`5 to include precluding Google, its counsel, and all witnesses from introducing, relying on, or
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`making references to Google’s remaining affirmative defenses that the Court is currently
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`considering, specifically, regarding Google’s inequitable conduct, prosecution history estoppel, or
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`prosecution laches equitable defense. The Court is currently considering all three defenses in
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`motion for summary judgment. (ECF Nos. 120 and 149.) Even if the Court decides that any of
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`these equitable defenses remain after summary judgment, Google should be precluded from
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`presenting any evidence, testimony, or argument regarding the defenses.
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`First, the Court should preclude any evidence, testimony, or argument relating to Google’s
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`inequitable conduct defense. “Given that inequitable conduct is based in equity, there is no right
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`to a jury trial.” GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310 (Fed. Cir. 2020). Here,
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`this incudes any reference to whether Flyp was aware of or tested Google Voice prior to or during
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`prosecution of the Asserted Patents,1 or that Google Voice should have been disclosed to the Patent
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`Office during prosecution of the earliest Asserted Patent.
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`Second, the Court should preclude any evidence, testimony, or argument relating to
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`Google’s prosecution history estoppel defense. Specifically, the Court should preclude Google
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`from presenting evidence regarding U.S. Patent App. Pub. No. 2008/0008105 (“Black”). “The
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`1 Whether Flyp knew of Google Voice during prosecution should also be precluded by the
`Court’s standing limine No. 7.
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 17 of 21
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`doctrine of prosecution history estoppel is ‘an equitable tool for determining the permissible scope
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`of patent claims’ as against a specific structure accused of infringement.” Mannesmann Demag
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`Corp. v. Engineered Metal Prods., 793 F.2d 1279, 1284 (Fed. Cir. 1986) (quoting Builders
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`Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 258 (Fed. Cir. 1985). Google has
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`no valid purpose to present evidence regarding Black other than to argue Flyp is legally barred
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`from asserting the DOE as to the “bridge telephone number.” (ECF No. 181 at 2.)
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`Third, the Court should preclude any evidence, testimony, or argument relating to Google’s
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`prosecution laches defense. Specifically, the Court should preclude Google from presenting
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`evidence, testimony, or argument that Flyp delayed in its patent filings. (See ECF No. 181 at 5-9.)
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`As Google notes in its opposition, prosecution laches “is an equitable doctrine.” (Id. at 6.)
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`IV. COURT ORDER IN LIMINE 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.
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`Flyp moves the Court in limine for an order that construes the Court’s standing limine No.
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`6 to include precluding Google, its counsel, and all witnesses from introducing, relying on, or
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`making references specifically to any inter partes review (“IPRs”) filed by Google, Flyp’s Patent
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`Owner’s Preliminary Response (“POPR”), the PTAB’s institution decision, Flyp’s Patent Owner
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`Response (“POR”), and all other briefing before the PTAB related to the Asserted Patents. While
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`the Court’s standing limine No. 6 applies broadly to references to IPRs and the PTAB, Flyp moves
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`out of an abundance of caution to clarify that this limine order also applies specifically to Google’s
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`pending IPRs related to the Asserted Patents.
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`A broad and specific application of the Court’s standing limine is proper because any
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`reference to the IPRs, or grounds raised in the IPRs, would be irrelevant and highly prejudicial. A
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`broad and specific application of the standing limine is also supported by Federal Circuit precedent.
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`Case 6:22-cv-00031-ADA Document 229 Filed 12/27/23 Page 18 of 21
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`In Callaway Golf Co. v. Acushnet Co., the Federal Circuit held that non-final PTO proceedings are
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`“of little relevance to the jury's independent deliberations on the factual issues underlying the
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`question of [validity],” whereas the “risk of jury confusion if evidence of the non-final PTO
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`proceedings were introduced was high.” 576 F.3d 1331, 1343 (Fed. Cir. 2009). Consistent with
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`this holding, this Court and others have routinely precluded evidence of non-final PTO
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`proceedings. See, e.g., Hafeman v. LG Elecs., Inc., No. 6:21-CV-00696-ADA, 2023 WL 4362863,
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`at *1 (W.D. Tex. Apr. 14, 2023) (precluding “[e]vidence or argument concerning the IPRs or
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`grounds raised in the IPRs”); MV3 Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA, ECF
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`No. 332, at 4 (W.D. Tex. Sept. 29, 2020) (precluding defendant from “making any references to a
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`parallel proceeding”); Proxense, LLC v. Samsung Electronics, Co., Ltd., No. 6:21-CV-00210-
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`ADA, ECF No. 161, at 4 (W.D. Tex. Jan. 12, 2023) (precluding references to pending
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`reexamination proceeding); Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG,
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`2018 WL 10638138, at *4 (E.D. Tex. Apr. 26, 2018) (holding that “[n]o Party will be permitted to
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`reference any post-issuance proceedings without leave of the Court”).
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`Failing to include the IPRs filed by Google, Flyp’s POPR, the PTAB’s institution decision,
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`Flyp’s POR, and all other briefing before the PTAB related to the Asserted Patents within the scope
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`of this standing limine would waste time, confuse the jury, and unduly prejudice Flyp. For example,
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`Flyp would be required to explain the different procedures, legal standards, and evidence that the
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`PTAB