Nomadix, Inc. v. Guest-Tek Interactive Entm't, Ltd.
Nomadix, Inc. v. Guest-Tek Interactive Entm't, Ltd.
2020 WL 5241267 (C.D. Cal. 2020)
March 30, 2020
Birotte, Jr., André, United States District Judge
Summary
The Court denied Guest-Tek's motion in limine no. 8, which sought to preclude Nomadix from introducing evidence of ESI that was not produced during discovery. The Court found that the ESI was relevant to the case, but did not provide any further details. The Court also denied Guest-Tek's motion in limine no. 9, finding that it was too late to challenge Nomadix's second supplemental infringement contentions related to OVI.
Nomadix, Inc.
v.
Guest-Tek Interactive Entertainment Ltd.
v.
Guest-Tek Interactive Entertainment Ltd.
Case No.: CV 16-08033-AB (FFMx)
United States District Court, C.D. California
Filed March 30, 2020
Counsel
Alan Grayson Laquer, Alexander Jose Martinez, Douglas G. Muehlhauser, James Frederick Smith, Justin James Gillett, Payson LeMeilleur, Mark Lezama, Knobbe Martens Olson and Bear LLP, Irvine, CA, Nicholas Rylan Fung, Vincent J. Belusko, Morrison and Foerster LLP, Los Angeles, CA, Sorin G. Zaharia, O'Melveny and Myers LLP, San Francisco, CA, for Nomadix, Inc.Andrew E. Samuels, Pro Hac Vice, Baker and Hostetler LLP, Columbus, OH, Curt Roy Hineline, Pro Hac Vice, James A. Barnao, Pro Hac Vice, Michael J. Swope, Pro Hac Vice, Baker and Hostetler LLP, Seattle, WA, Daniel J. Goettle, Pro Hac Vice, Jeff Lesovitz, Pro Hac Vice, Steven J. Rocci, Pro Hac Vice, Kevin M. Bovard, Meghan Rohling Kelly, Baker and Hostetler LLP, Philadelphia, PA, Michael R. Matthias, William Wayne Oxley, Baker and Hostetler LLP, Los Angeles, CA, Thomas D. Warren, Warren Terzian LLP, Pepper Pike, OH, for Guest-Tek Interactive Entertainment Ltd.
Birotte, Jr., André, United States District Judge
Proceedings: [In Chambers] ORDER GRANTING GUEST-TEK'S MOTIONS IN LIMINE 2, DENYING GUEST-TEK'S MOTIONS IN LIMINE 1, 4, 5, 6, 7, 8, 9, AND GRANTING IN PART AND DENYING IN PART GUEST-TEK'S MOTIONS IN LIMINE 3.
*1 Before the Court are Defendant Guest-Tek Interactive Entertainment Ltd.'s (“Guest-Tek”) motions in limine one through nine. (Dkt. Nos. 565, 566, 567, 568, 569, 570, 571, 572, 573.) Plaintiff Nomadix Inc. (“Nomadix”) opposes each motion.
1. Guest-Tek's Motion in Limine No. 1 is DENIED.
Guest-Tek seeks to exclude any evidence or testimony of its alleged refusal to produce source code, its allegedly insufficient production of source code, and its alleged spoliation of source code during discovery. (Dkt. No. 565.)
In opposition, Nomadix argues that Guest-Tek's motion to exclude such evidence is overbroad, as Nomadix intends to introduce evidence that Guest-Tek failed to provide source code, thereby breaching its obligations under the License Agreement between the parties. (Dkt. No. 589 at 1–4.) Although courts have recognized that “[e]vidence of the parties' discovery disputes are not relevant to ... questions of patent validity or infringement,” Mformation Techs, Inc. v. Tesearch in Motion Ltd., No. 08-04990, 2012 WL 2339762, at *2 (N.D. Cal. June 7, 2012), here Nomadix seeks to show that Guest-Tek's failure to provide source code constitutes a breach of Guest-Tek's independent contractual obligations under the License Agreement. (See Dkt. No. 32 ¶¶ 42, 45.) Accordingly, Guest-Tek's requested relief is overbroad, as it would equate to summary adjudication of Nomadix's breach of contract claim. See Guzik Tech. Enter., Inc. v. W. Dig. Corp., No. 11-cv-03786, 2013 WL 6227626, at *8 (N.D. Cal. Nov. 22, 2013) (holding that motions in limine should not be used to effectively bar a party from raising a cause of action at trial). The Court therefore DENIES Guest-Tek's motion in limine no. 1.
2. Guest-Tek's Motion in Limine No. 2 is GRANTED.
Guest-Tek seeks to preclude arguments and evidence related to Arnon Levy's and Kate Levy's (collectively “the Levy family”) personal finances. (Dkt. No. 566.)
During the August 6, 2019 deposition of Guest-Tek's then-CEO Arnon Levy, Nomadix inquired into Mr. Levy's personal finances. When asked to clarify the relevance of Mr. Levy's finances, Nomadix responded that the line of questioning was relevant “[u]ltimately to satisfy a judgment in the case.” (Dkt. No. 599-2 (sealed).)
Nomadix asserts in its opposition that it has no intention of making the personal finances of the Levy family an issue at trial, so long as Guest-Tek “does nothing at trial to open the door with regard to that subject matter... [such as] making any mention or suggestion of an inability to satisfy an award of judgment.” (Dkt. No. 597-1 at 1.) Nomadix should have brought any request for exclusion of statements relating to Guest-Tek's ability to satisfy a judgment by a separate motion in limine. However, the Court notes that neither party has shown a basis as to why any such statements, arguments, or evidence relating to the Levy family's personal finances or otherwise relating to Guest-Tek's ability to satisfy a judgment would be relevant at trial. Because evidence as to the Levy family's personal finances and Guest-Tek's ability to satisfy a judgment is not relevant to the issues to be tried, neither party will be permitted to introduce such evidence at trial. See Fed. R. Evid. 402, 403.
*2 Guest-Tek's motion in limine no. 2 is GRANTED.
3. Guest-Tek's Motion in Limine No. 3 is GRANTED in part and DENIED in part.
Guest-Tek seeks to “preclude Nomadix from introducing lay witness testimony about hospitality industry standards for property management systems.” (Dkt. No. 567 at 3–4.) Although phrased broadly, Guest-Tek's motion focuses specifically on a discussion of declarations offered by Nomadix employees Jeremy Cook and David Elder as part of Nomadix's opposition to Guest-Tek's summary judgment motion.
The Elder Declaration states that Elder is familiar with the requirements of third-party hotel chains for high speed internet access and provides statements about those requirements. (Declaration of David Elder in Support of Nomadix's Opposition to Summary Judgment Motion, Dkt. No. 508.) The Cook Declaration states that Cook is familiar with the requirements of property management system (“PMS”) protocols and provides generalized statements about PMS protocols. (Declaration of Jeremy Cook in Support of Nomadix's Opposition to Summary Judgment Motion, Dkt. No. 509.)
The Court has already had some occasion to review the disputes raised by Guest-Tek's motion in limine no. 3 in the context of Guest-Tek's omnibus motion for summary judgment. The Court specifically found that Cook's Declaration included only generalized, conclusory statements that did not refer to specific PMS protocols by name and were insufficient to create a genuine dispute of material fact with respect to the Guest-Tek protocols specifically at issue. The Court did not need to reach a determination regarding Elder's declaration, but did state that the statements provided in the declaration constituted inadmissible hearsay with respect to the dispute presented (whether third-party hotel chains for high speed internet access did indeed include certain requirements).
The Court has granted summary judgment of no patent claim coverage as to Claims 1 and 6 of the '399 Patent on the basis that Nomadix failed to show a question of material fact as to the “call accounting record format” limitation. Nomadix has not shown that it would offer Cook to testify for any other relevant, admissible purpose. (See Dkt. No. 591 at 2–3 (discussing Cook's testimony only as relating to PMS protocols).) The Court otherwise notes that, to the extent Nomadix would seek to offer Cook's statements on these topics for other purposes than those resolved by the summary judgment motion, the Court would agree with Guest-Tek that they could constitute expert opinion. Cook could cabin his statements specifically to protocols implemented by Nomadix's products and to his personal knowledge and experience about the operation of Nomadix's products using those protocols. (See Dkt. No. 591 at 2–3.) The Court's understanding, however, is that the purpose of having Cook provide testimony would be to show that the protocols used by Guest-Tek's accused systems would satisfy certain claim limitations. Cook apparently has expertise in PMS protocols due to his training and experience at Nomadix. General statements or observations about PMS protocols, untethered to his specific work on the Nomadix product, would cross the line into impermissible expert testimony. The Federal Rules of Civil Procedure require a party to disclose such a hybrid witness during the course of expert discovery. See Fed. R. Civ. P. 26(a)(2)(B), 26(a)(2)(C). Cook would not be permitted to provide statements at trial solely for the purpose of explaining to the jury, in the abstract, the functioning of various PMS protocols so that they could apply that information to Guest-Tek's accused product.
*3 Regarding Elder, the Court understands that the purpose of having Elder provide testimony relating to third party hotel chain internet requirements would be to show that Guest-Tek's accused systems satisfy the claims at the various hotels where those accused systems are implemented. To the extent this is the sole relevant purpose of Elder's testimony, the Court maintains its earlier determination that Elder's statements constitute hearsay offered for the truth of the matter asserted. Nomadix is correct that, theoretically, Elder could offer statements about Nomadix's understanding of and compliance with third party hotel chain internet requirements. (Dkt. No. 591 at 3–4.) But those statements could only be offered for a non-hearsay purpose, such as to show their effect on Nomadix's understanding of the third-party internet requirements in Nomadix's creation of its own compliant systems and products. The jury would have to be instructed not to consider the statements regarding the internet requirements of third-party hotel chains for their truth, as such would remain a hearsay purpose. To the extent there is some relevance in this case to, for instance, Nomadix's understanding of third-party hotel chain internet requirements, Elder can testify to that extent. Elder will not be permitted to provide statements at trial solely for the purpose of having the jury consider whether third party hotel chains do, in fact, implement certain high-speed internet requirements. Nomadix will be expected to disclose what relevant, admissible purpose would be served by Elder's statements on this topic before eliciting such testimony at trial.
The Court otherwise agrees with Nomadix that, to the extent Guest-Tek contemplated others besides Cook and Elder by its motion in limine, its motion is impermissibly broad.
Consistent with this Order, the Court GRANTS in part and DENIES in part Guest-Tek's motion in limine no. 3.
4. Guest-Tek's Motion in Limine No. 4 is DENIED.
Guest-Tek seeks to preclude Nomadix “from using royalty payment schedules or evidence of past payments to argue that: (1) patent coverage is established by admission or inference, or (2) that royalties were due on any other property or quarter as a result.” (Dkt. No. 621 (sealed).)
The Court has already had occasion to review and resolve the dispute raised by Guest-Tek's motion in limine, in the context of Guest-Tek's omnibus motion for summary judgment. The Court also finds that the content of Guest-Tek's motion essentially seeks summary judgment relief under the guise of a motion in limine. The Court declines to consider the same issues raised in Guest-Tek's motion in limine no. 4, as considering them would essentially permit Guest-Tek (and Nomadix) to short-circuit the page limit requirements set in place for Guest-Tek's summary judgment motion. Accordingly, the Court DENIES Guest-Tek's motion in limine no. 4.
5. Guest-Tek's Motion in Limine No. 5 is DENIED.
Guest-Tek seeks to preclude arguments and evidence regarding testing performed by Nomadix's expert, Stubblebine, after the expert discovery deadline. (Dkt. No. 569.)
The Court has already had occasion to review the dispute raised by Guest-Tek's motion in limine no. 5 in the context of Guest-Tek's omnibus motion for summary judgment. The Court has determined that Stubblebine's late disclosure of testing, particularly after his November 22, 2019 deposition, was substantially justified or harmless given the timing of Guest-Tek's expert's deposition and the opinions rendered during that deposition.
For these reasons and the reasons stated in the Court's summary judgment order, the Court DENIES Guest-Tek's motion in limine no. 5.
6. Guest-Tek's Motion in Limine No. 6 is DENIED.
Guest-Tek seeks to preclude Nomadix from offering evidence or argument that it is owed damages for products besides OVI. (Dkt. No. 621-1 (sealed).)
The Court has already had occasion to review and resolve the dispute raised by Guest-Tek's motion in limine, in the context of Guest-Tek's omnibus motion for summary judgment. The Court also finds that the content of Guest-Tek's motion essentially seeks summary judgment relief under the guise of a motion in limine. The Court declines to consider the same issues raised in Guest-Tek's motion in limine no. 6, as considering them would essentially permit Guest-Tek (and Nomadix) to short-circuit the page limit requirements set in place for Guest-Tek's summary judgment motion. Accordingly, the Court DENIES Guest-Tek's motion in limine no. 6.
7. Guest-Tek's Motion in Limine No. 7 is DENIED.
Guest-Tek seeks to preclude Nomadix's damages expert, Brad Cashion, from opining that Guest-Tek is entitled to damages for OVI at any hotel other than the four hotels analyzed for patent coverage by Nomadix's technical expert, Stuart Stubblebine. (Dkt. No. 621-2 (sealed).)
*4 The Court agrees with Nomadix that Guest-Tek's motion is not appropriately considered a motion in limine, but instead is a stealth summary judgment motion that “essentially rehashes portions of the omnibus summary-judgment motion [Guest-Tek] already filed.” (Dkt. No. 595.) The Court declines to consider Guest-Tek's motion in limine no. 7, which would essentially permit Guest-Tek (and Nomadix) to short-circuit the page limit requirements set in place for Guest-Tek's summary judgment motion. The Court has also already resolved the aspects of this dispute that were properly raised in the context of Guest-Tek's summary judgment motion. Accordingly, the Court DENIES Guest-Tek's motion in limine no. 7.
8. Guest-Tek's Motion in Limine No. 8 is DENIED.
Guest-Tek seeks to preclude Nomadix from presenting certain patent claim coverage theories on the basis that they were not timely disclosed in this case. (Dkt. No. 621-3 (sealed).) Guest-Tek specifically argues that four of Nomadix's theories should be excluded. (Id. at 2.)
The Court has already had occasion to review some of Nomadix's challenged theories in the context of Guest-Tek's omnibus motion for summary judgment. Specifically, the Court has considered the parties' dispute regarding the timing of Nomadix's disclosure of a doctrine of equivalents theory for the '917 Patent. The Court has also considered Nomadix's disclosures regarding whether the accused products satisfy the “call accounting record format” limitation in the '399 Patent.
The Court has also already expressed concerns in the context of evaluating Guest-Tek's motions in limine nos. 6 and 7 that Guest-Tek may be bringing stealth motions for summary judgment under the guise of motions in limine. This is particularly true as to Guest-Tek's challenges regarding the parties' ongoing “OVI configuration” dispute.
The Court otherwise finds that Guest-Tek's challenges to the level of detail provided in Nomadix's infringement contentions and expert report are untimely. Guest-Tek specifically brought a summary judgment motion arguing on the merits that its accused products do not meet the “prevent[ing] the user device from achieving a bandwidth ...” limitation of the '857 Patent. As shown by Guest-Tek's other challenges during summary judgment, Guest-Tek could have, but did not, challenge the adequacy of Nomadix's disclosed infringement theory for this limitation during summary judgment briefing. By proceeding directly to argue the merits, Guest-Tek demonstrates, among other things, no prejudice based on the level of detail in Nomadix's earlier discovery disclosures for this limitation.
The Court DENIES Guest-Tek's motion in limine no. 8.
9. Guest-Tek's Motion in Limine No. 9 is DENIED.
Guest-Tek moves to preclude Nomadix from introducing testimony or evidence relating to its second supplemental infringement contentions as to OVI. (Dkt. No. 573.)
Guest-Tek previously moved before the Magistrate Judge to strike portions of Nomadix's second supplemental infringement contentions. The Magistrate Judge found that Guest-Tek had not teed up a dispute relating to Nomadix's supplemental contentions for OVI, and issued a clarified report and recommendation that did not strike Nomadix's second supplemental infringement contentions relating to OVI. (See Dkt. No. 527 at 4 (striking second supplemental responses only as to HEP, RendezView, Mercury, and Golden Tree).) The Court adopted the Magistrate Judge's report and recommendation in full. (Dkt. No. 534.)
Guest-Tek's motion in limine is too little, too late. As shown by the procedural history of this case, Guest-Tek could have moved to strike Nomadix's second supplemental contentions related to OVI – on whatever basis it believed warranted exclusion – at the same time it argued that the remainder of Nomadix's second supplemental contentions should be stricken. The Court otherwise finds that good cause supports Nomadix's second supplemental infringement contentions for OVI, and that the supplementation was substantially justified and harmless.
*5 The Court DENIES Nomadix's motion in limine no. 9.
IT IS SO ORDERED.