Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd

Opinion

1 2 3 4 5 6 7 10 GOLDEN EYE MEDIA USA, INC.,a Case No.: 3:18-cv-02109-BEN-LL 12 || California corporation, ) 13 Plaintiff, ORDER: Vv 1) GRANTING IN PART AND 14 || TROLLEY BAGS UK LTD, a ) □□ PARE 15 || corporation of the United Kingdom; and ) PLAINTIFF’S MOTIONS IN BERGHOFF INTERNATIONAL, ) LIMINE INC., a Florida corporation, (2) DENYING DEFENDANTS’ 7 Defendant. MOTIONS IN LIMINE 18 || TROLLEY BAGS UK LTD, a ) [ECF Nos. 103, 104, 105, 106] 19 || corporation of the United Kingdom; and ) BERGHOFF INTERNATIONAL, ) 20 |! INC., a Florida corporation, ) 21 |} Counterclaimants, 22 || V. ) 23 || GOLDEN EYE MEDIA USA, INC.,a? California corporation; FARZAN ) DEHMOUBED, an individual; and ) 25 |) JENNIFER DUVALL, an individual, 26 Counterdefendants. ) 27 ) 28

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INTRODUCTION 2 Plaintiff/Counterdefendant GOLDEN EYE MEDIA USA, INC., a California 3 || corporation (“Plaintiff”) brings this action for a declaratory judgment of non-infringement 4 || against Defendants/Counterclaimants TROLLEY BAGS UK LTD, a corporation of the 5 || United Kingdom (“Trolley Bags”); and BERGHOFF INTERNATIONAL, INC., a Florida 6 || corporation (“Berghoff”) (collectively, “Defendants”). ECF No. 1. 7 Before the Court are the following motions: (1) Defendants’ Motions in Limine Nos. 8 || 1 through 6, ECF No. 103, and (2) Plaintiff and Counterclaimants Farzan Dehmoubed and 9 || Jennifer Douvall’s motions in limine Nos. 1 through 3, ECF Nos. 104-106. Both motions 10 || were submitted on the papers without oral argument pursuant to Civil Local Rule 7.1(d)(1) 11 Rule 78(b) of the Federal Rules of Civil Procedure. ECF No. 113. After considering 12 ||the papers submitted, supporting documentation, and applicable law, the Court GRANTS 13 ||IN PART and DENIES IN PART Plaintiff's motions in limine while DENYING 14 |] Defendants’ motions in limine as outlined below. BACKGROUND 16 This matter arises out of a dispute over whether Plaintiff is infringing on the claim 17 |) of U.S. Design Patent No. D779,828 (the “828 Patent”) as well as the trademark held by 18 || Defendant Trolley Bags. Complaint, ECF No. 1 (“Compl.”) at 2!:7-9; see also Answer, 19 |} ECF No. 14 (“Ans.”) at 9:24-27. Both parties have asserted various patent, trademark, and 20 |! business tort claims for relief against each other. See Compl., ECF No. 1; ECF No. 33. A 21 |}more detailed factual and procedural history is set forth in the Court’s previous order and 22 || is incorporated by reference. See ECF No. 136; see also Golden Eye Media, Inc. v. Trolley 23 || Bags UK Ltd., et al., No. 3:18-CV-02109-BEN-LL, 2021 WL 966533, at *1 (S.D. Cal. 24 || Mar. 15, 2021). 25 Trial in this matter was originally scheduled for February 22, 2021,? and as such, on 26 27 ||! Unless otherwise indicated, all page number references are to the ECF generated || page number contained in the header of each ECF-filed document. On January 9, 2021, while the motions in limine were pending, this Court issued a 2.

1 || November 16, 2020, all parties filed various motions in limine. ECF Nos. 103-106. On 2 || November 30, 2020, all parties opposed each other’s respective motions. ECF Nos. 107, 3 108, 111, 112. On December 7, 2020, all parties replied. ECF Nos. 115-118. 4 On March 12, 2021, also while the motions im limine were pending, this Court 5 granted both parties’ cross-motions for summary judgment, finding, inter alia, that (1) the 6 || 328 Patent is invalid; (2) even ifthe 828 Patent were valid, it was not infringed; (3) Plaintiff 7 not infringed on Defendants’ common law trademark; (4) Plaintiff's tort-based claims 8 |/ were not protected by the Noerr-Pennington Doctrine; and (5) a genuine issue of fact exists 9 to whether (a) Plaintiffs tort-based claims for relief are protected by California’s 10 litigation privilege, (b) Defendants’ complaints to Amazon were made in bad faith and 11 |) preempted by federal patent law, (c) Plaintiff had proven damages, and (d) Plaintiff can 12 prove its claims for intentional interference with prospective economic relations and 13 negligent misrepresentations. ECF Nos. 136 at 125-127. 14 Upon resolution of the cross-motions for summary judgment, the only remaining 13 claims from Plaintiff's complaint are (1) its third claim for relief for interference with 16 prospective of contractual economic relations against all Defendants and (2) fourth claim 17 || for relief for negligent misrepresentation against all Defendants. ECF No. 136 at 127. The 18 only remaining claims from Defendants’ counterclaims are their claims for (1) declaratory 19 judgment of invalidity of the Plaintiffs U.S. Design Patent No. D835,912 for reusable 20 shopping bags (the “912 Patent’); (2) interference with prospective contractual relations; 21 (3) negligent misrepresentation; (4) unfair competition, 15 U.S.C. § 1125; and (5) unfair 22 competition under the common law and Cal. Bus. & Prof. Code § 17200. id. 24 Under Rule 403 of the Federal Rules of Evidence, “[t]he court may exclude relevant 25 26 Minute Order vacating the February 22, 2021 jury trial date in this matter, due to the 27||COVID-19 pandemic and recent orders of the Chief Judge of the Southern District o1 4g California, suspending jury trials. ECF No. 121. The Court committed to re-scheduling the jury trial date once jury trials were allowed to resume. Id. 3.

evidence if its probative value is substantially outweighed by a danger of one or more of 2 |I the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, 3 wasting time, or needlessly presenting cumulative evidence.” FED. R. Evip. 403. Rulings 4 || on motions in limine fall entirely within this Court’s discretion. United States v. Bensimon, 5 F.3d 1121, 1127 (9th Cir. 1999) (citing Luce v. United States, 469 U.S. 38, 41-42 6 (1984)). Evidence is excluded on a motion in limine only if the evidence is clearly 7 |linadmissible for any purpose. Langer v. Kiser, No. No. 3:18-cv-00195-BEN-NLS, --- F. 8 Supp. 3d ---, 2020 WL 6119889, at *2 (S.D. Cal. Oct. 16, 2020). If evidence is not clearly 9 inadmissible, evidentiary rulings should be deferred until trial to allow questions of 10 foundation, relevancy, and prejudice to be resolved in context, See Bensimon, 172 F.3d at 4127 (when ruling on a motion in limine, a trial court lacks access to all the facts from trial 12. testimony). Denial of a motion in limine does not mean that the evidence contemplated by 13 || the motion will be admitted at trial. Jd. Instead, denial means that the court cannot, or 14 || should not, determine whether the evidence in question should be excluded before trial. 15 Id.; see also McSherry v. City of Long Beach, 423 F.3d 1015, 1022 (9th Cir. 2005) (rulings 16 || on motions in imine are subject to change when trial unfolds). I7\\1V. DISCUSSION 18 Defendants’ motions in limine, seek to exclude the following from trial: (1) 19 || Plaintiff's obviousness theories not disclosed during discovery; (2) evidence of damages 20 || not disclosed during discovery; (3) argument that Defendants submitted 89 complaints to 21 || Amazon that Plaintiff was infringing on its products with zero success; (4) testimony from 22 || Plaintiff's expert under the “ordinary observer” standard; (5) testimony or evidence 23 disparaging Defendant Trolley Bags and its director’s resident status; and (6) offering 24 |l evidence or argument that Defendants abused Plaintiff by filing complaints with Amazon. 25 || No. 103. 26 Counterclaimants Fzan Dehmoubed and Jennifer Douvall and Plaintiff filed three 27 || motions in limine, seeking to (1) limit Defendants’ evidence and infringement arguments 28 || to those disclosed in their disclosures pursuant to Patent Local Rule 3.1, ECF No. 104; (2) de

1 || exclude evidence or argument regarding reexamination of the 912 Patent, ECF No. 105; 2 |l and (3) prevent Defendants from offering evidence of damages at trial that were not 3 previously disclosed during discovery, ECF No. 106. 4 A. Motions in Limine Pertaining to the Invalidated Patent 5 As a preliminary matter, the Court notes that its ruling on the parties’ cross-motions 6 for summary judgment has resulted in Plaintiff's Motion in Limine No. 1 and Defendant’s Motion in Limine Nos. 1 and 4, which relate either to the validity or infringement of the 8 || 328 Patent, becoming moot. Because the Court has determined those issues on summary 9 judgment, they are no longer at issue in this case. Thus, Plaintiff's Motion in Limine No. 10 |) | and Defendant’s Motion in Limine Nos. 1 and 4 are DENIED as moot. See, e.g., Tur v. 11 Il YouTube, Inc., 562 F.3d 1212, 1214 (9th Cir. 2009) (holding “that an issue is moot when 12 deciding it would have no effect within the confines of the case itself’). 13 B. _ Plaintiff’s Remaining Motions in Limine 14 1. Motion Limine No. 2. — Exclusion of Evidence Relating to 15 Reexamination of the 912 Patent 16 Plaintiff seeks to exclude Defendants from introducing any evidence or argument 7 regarding the pending, nonfinal reexamination the 912 Patent. ECF No. 105-1 at 2:1-5. 18 In their opposition, Defendants agree not “to introduce or argue about the pending 19 reexamination of Plaintiff’s ‘912 Patent,” subject to “two minor caveats.” ECF No. 108 at 20 4:11-13. These caveats are that first, “if Defendants are not to be permitted to introduce reference the pending reexamination of Plaintiff's ‘912 patent, Plaintiff should likewise 2 be prohibited from introducing or referencing the pending reexamination of Defendants’ 23 *828 Patent.” Jd. at 4:13-17. Second, Defendants argue that they should be permitted to 24 revisit the admissibility of the 828 Patent and 912 Patent to the extent either reexamination 5 proceeding becomes final before trial. Jd at 4:25-28. Plaintiffs reply brief does not 26 address Defendants’ argument that they should be permitted to present evidence as to the 27 912 Patent reexamination proceeding should it become final before trial. See generally 28 ECF No. 116.

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l The parties agree that although USPTO issued a non-final office action for the 912 2 Patent, the decision is not final. ECF No. 105-1 at 2:7-9; ECF No. 108 at 4:25-5:1. Other 3 || courts have concluded it is appropriate exclude non-final reexamination proceedings. See, 4 e.g., Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009) (holding 5 || that “[t]he district court did not abuse its discretion in concluding that the prejudicial nature of evidence conceming the ongoing parallel re-examination proceeding outweighed 7|| whatever marginal probative or corrective value it might have had in this case” where the 8 || non-final re-examination determinations were of little relevance to the issue of ? || obviousness and risked jury confusion); see also Presidio Components Inc. v. Am. Tech. Ceramics Corp., No. 08-cv-00335-IEG-NLS, 2009 WL 3822694, at *1-3 (S.D. Cal. Nov. 1] 13, 2009) (granting motion to exclude from trial any evidence relating to the reexamination 12 proceedings of a patent). 13 “(T]he grant by the [USPTO] examiner of a request for reexamination is not 14 probative of unpatentability.” Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 15 1575, 1584 (Fed. Cir. 1996); see also Procter & Gamble Co. v. Kraft Foods Glob., Inc., 16 |! 549 F.3d 842, 848 (Fed. Cir. 2008) (“As this court has observed, a requestor’s burden to show that a reexamination order should issue from the PTO is unrelated to a 18 || defendant’s burden to prove invalidity by clear and convincing evidence at trial.”). 19 «The grant of a request for reexamination, although surely evidence that the criterion for 20 || reexamination has been met (i.e., that a ‘substantial new question of patentability’ has been 21 || raised, 35 U.S.C. § 303), does not establish a likelihood of patent invalidity.” Id. (citation 22 omitted), On the contrary, although it appears that the USPTO grants about 92.2% of the 23 requests for reexamination, in only 13.1% of cases does that reexamination result in all 24\/claims being cancelled. See United States Patent and Trademark Office, Ex Parte 25 Reexamination Filing Data—September 30, 2020, 9] 5a, 8b. However, in 66.0% of the 26 || certificates of reexamination, the claims changed in some manner, meaning that 79.1% of 27 || the time, granting a certificate of reexamination results in either a change or cancellation 28 || of some of the claims. See id. at q 8c. _6-

1 The Court finds that even if the reexamination proceedings bear relevance to the 2 llissues set to be tried in this case, they prove unfairly prejudicial, particularly given the 3 ||USPTO does not apply the presumption of validity and applies a different standard of 4 llreview. See Fep. R. Evip. 403. Moreover, because the reexamination proceedings are > || incomplete, they are not a final decision on which it would be appropriate for either party 6 IIto rely. Id. This does not, however, preclude Defendants from advancing to the jury any 7 arguments raised in the reexamination proceeding; however, Defendants must advance 8 || those arguments based on their own separate and independent evidence rather than relying 9 on the grant of reexamination itself. Accordingly, Plaintiff's Motion in Limine No. 2 is _ GRANTED subject to the aforementioned limitations. 2. Motion in Limine No. 3 - Exclusion of Undisclosed Damages 12 Testimony or Evidence 13 Plaintiff also seeks to prevent Defendants “from presenting testimony or evidence at 14 trial regarding damages that they have not provided during discovery or evidence that they 15 || have suffered irreparable harm.” ECF No. 106-1 at 2:1-5. Plaintiff argues that Defendants’ 16 || faiture to provide damages information to Plaintiff will severely prejudice Plaintiff if the 17 || Court allows Defendants to provide such computations at trial. Jd. at 2:19-21. Defendants 18 oppose by arguing that “[t]hough couched as a simple motion in limine, it essentially seeks 19 || summary judgment of no damages and lack of entitlement toa permanent injunction.” ECF 20 111 at 5:8-10. Defendants argue the Court should deny Plaintiffs motion because (1) 21 |/ even though damages experts are frequently used in patent infringement cases, Defendants 22 || were not required to disclose or use one in order to pursue damages; (2) “Defendants’ fact 23 || witnesses can—and will—offer lay, fact testimony upon which the jury can determine a 24 lost profits, reasonable royalty, or disgorgement award, and upon which the Court can enter 25 |la permanent injunction”; (3) “to the extent they were able to, Defendants’ computation of 26 damages in its disclosures and discovery responses fully comport with Rule 26 and Rule 27 || 33”; and (4) Plaintiff's counsel never inquired about damages during the deposition of 28 Trolley Bags’ corporate designee, and if Plaintiff had, Trolley Bags’ witness would have

I provided responses. Jd. at 5:12-6:8. In its Reply Brief, Plaintiff argues that Defendants’ 2 Opposition ignores that fact that Defendants bear the burden of proof with respect to their 3 alleged damages at trial but still cannot cite to a single piece of evidence they have 4 produced that sets forth their damages calculations. ECF No. 118 at 2:8-13. Plaintiff also 5 argues that the Court should reject Defendants’ attempts to shift blame for their failure to 6 provide evidence by claiming the disclosure was substantially justified and harmless. Jd. 7 118 at 4:13-16. 8 Rule 26(a)(1 {A)(ili) of the Federal Rules of Civil Procedure requires all parties to 9 provide each other with “a computation of each category of damages claimed by the 10 disclosing party” along with “the documents or other evidentiary material . . . on which 11 |) each computation is based.” Where a party fails to provide this information, that “party is 12 || not allowed to use that information or witness to supply evidence on a motion, at a hearing, 13 || or ata trial, unless the failure was substantially justified or is harmless.” FED. R. Civ. P. 14 37(a)(1). “Rule 37(c)(1) gives teeth to these requirements by forbidding the use at trial of 15 any information required to be disclosed by Rule 26(a) that is not properly disclosed.” Yeti 16 by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001). 17 Plaintiff argues that “Defendants have not listed any witnesses to testify regarding 18 Il the computation of damages” and “never provided that computation at any time regarding 19 any measure of damages, including reasonable royalty rate, lost profits or disgorgement of 20 profits.” ECF No. 106-1 at 2:23-25, 3:26-4:1. However, Exhibit A to the Declaration of 21 || Matthew G. Mrkonic in Support of Defendants’ Opposition to Plaintiffs Motion in Limine 22 3 identifies two witnesses who will testify as to the issue of damages: Joby Cronkshaw 23 |l and Ray Ven Den Langenbergh. ECF No. 111-3 at 3:20-4:5. That being said, in the same 24 Rule 26(a) disclosures, when addressing the issue of damages, Defendants stated that they 25 ||*cannot further disclose its computation of damages at this time as a full calculation 26 depends, in part, on sales and financial information exclusively within the possession, 27 custody, or control of Plaintiff.” ECF No. 111-3 at 5:20-26. The record provided to the 28 |! Court indicates Defendants never supplemented this response.

| Defendants argue that exclusion is not warranted because they “responded to 2 || Plaintiff's Interrogatory No. 7 seeking the ‘factual and legal bases’ for Defendants’ 3 damages claims,” by stating that “Defendant is entitled to Plaintiff's total profit from sales of its infringing products, as provided by 35 U.S.C. § 289.” ECF No. 111 at 11:18-22 5 (citing Exhibit 2 to Plaintiff's Motion in Limine No. 3, ECF No. 106-4 at 9). Defendants 6 || contend that to the extent this answer is unsatisfactory, they “could not provide more 7 || fulsome evidence in support of this claim due to Plaintiff's obstruction.” ECF No. 111 at 8 || 11:18-22, Defendants elaborate that their ability to provide evidence of damages depended 9 on receiving information from Plaintiff, but when Defendants deposed Mr. Dehmoubed, 10 |] “he gave evasive answers that did not allow them to calculate damages.” Jd. at 13:11-21. 11 | Defendants also request an opportunity to supplement any responses to the extent the Court 12 finds them deficient. Id. at 16:1-13. 13 Plaintiff refers to broadly excluding Defendants from offering any evidence on the 14 Vlissue of damages at trial, ECF No. 106-1 at 2-5, but also scems to be seeking to limit 15 testimony as to infringement damages, see id, at 2:9-12 (“Defendants have failed to provide 16 || GEM with any measure of damages, only vaguely stating in their discovery responses that 17 they ‘have been irreparably harmed and suffered economic loss as a result of Plaintiff's 18 infringement of U.S. Design Patent No, D779,828 and the Trolley Bags mark.’”). 19 |) Plaintiff's Motion in Limine No. 3 also discusses the reasonable royalty rate, which is 20 traditionally discussed when evaluating infringement damages. See id. at 2:11-16. To the 21 |\extent Plaintiffs Motions is directed towards Defendants’ potential damages for 22 infringement of the 828 Patent, such damages are moot by the Court’s order on the cross- 23 || motions for summary judgment. 24 Defendants’ only remaining claims for which it may seek monetary damages are its 25 || claims for interference with prospective contractual relations; negligent misrepresentation; 26 |) and unfair competition under 15 U.S.C. § 1125 and section 17200 of California’s Business and Professions Code. ECF No. 136 at 127. While the Court agrees that Defendants’ 28 discovery responses provided to the Court fail to comply with the spirit of the Federal Rules OO.

of Civil Procedure, the Court also balances this fact against its preference for deciding 2 cases on the merits, see, ¢.g., United States v. Signed Pers. Check No. 730 of Yubran S. 3 Mesle, 615 F.3d 1085, 1091 (9th Cir. 2010) (referring the “policy of favoring judgment on 4 the merits”). Nonetheless, the Court also recognizes that Plaintiff could have moved to 5 compel further responses; yet, the record indicates no motions to compel have been filed 6 by either party in this case. 7 As a compromise, the Court orders Defendants to provide Plaintiff within fifteen 8 (15) days of this order, a Statement of Damages detailing separately for each remaining 9 || claim: (1) the type of damages Defendants seek for each remaining claim; (2) who will 10 testify as to each type of damages for each remaining claim; (3) what documents support IT lI the damages for each remaining claim; (4) the total amount of damages sought for each 12 remaining claim; and (4) the calculations providing the basis for the damages pertaining to 13 | each claim. Any damages, witnesses, or documents not included within this document will 14 |lbe excluded at trial. As a result, Plaintiff’?s Motion in Limine No. 3 is DENIED without 15 prejudice to Plaintiff seeking to exclude such evidence at trial should Defendants fail to 16 comply with the Court’s order. 17 C. Defendant’s Motions in Limine 18 1. Motion in Limine No. 2. Exclusion of Evidence from Plaintiff as to 19 Damages Not Disclosed During Discovery 20 Similar to Plaintiff's Motion in Limine No. 3, Defendants’ Motion in Limine No. 2 91 |/argues that “Plaintiff should be precluded from offering damages evidence not disclosed 79 during discovery.” ECF No. 103-1 at 19-20. Specifically, Defendants seek to preclude 93 || Plaintiff “from offering any evidence (including in the form of testimony) or argument 74 ||regarding the ‘lost profits’ it allegedly lost due to Defendants’ Amazon complaints.” /d. at 25 || 8:20-23. Plaintiffresponds that first, the Court should deny Defendants’ argument because 96 ||they advanced the same argument in their summary judgment, and “motions in limine 97 should not be used as disguised motions for summary judgment.” ECF No. 112 at 4:20- 9g ||25. Second, Plaintiff argues that it has already provided evidence of damages in its

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l complaint, including lost sales. ECF No. 112 at 4:27. 2 This Court already concluded in the order on the cross-motions for summary 3 judgment that “Plaintiff has provided net profits, including the information used to 4 || calculate net profits.” Order, ECF No. 136 at 113:7-8. Plaintiff's remaining claims are its 5 (1) third claim for relief for interference with prospective of contractual economic relations 6 against all Defendants and (2) fourth claim for relief for negligent misrepresentation 7 against all Defendants. ECF No. 136 at 127. Again, in the vein of compromise, the Court 8 || orders Plaintiff to provide Defendant within fifteen (15) days of this order a Statement of 9 Damages meeting the same requirements outlined above for Defendants’ Statement of 10 Damages. Any damages, witnesses, or documents not included within this document will 11 be excluded at trial. Thus, Defendants’ Motion in Limine No. 2 is DENIED without 12 || prejudice to Plaintiff seeking to exclude such evidence at trial should Plaintiff fail to 13 comply with the Court’s order. 14 2. Motion in Limine No. 3 — Precluding Plaintiff from Arguing 15 Defendants Submitted 89 Amazon Complaints with Zero Success 16 Defendants argue that in both Plaintiff's Motion for Summary Judgment and reply 17 || brief in support thereof, Plaintiff argued that Defendants submitted 89 complaints against 1g || Plaintiff to Amazon, and none of those complaints were successful, ECF No. 103-1 at 19 || 11:7-11. The Court’s Order on the cross-motions for summary judgment already addressed 20 || the issues raised by the parties and noted that “from February 2018 through August 2019, 21 Trolley Bags filed forty-three (43) complaints with Amazon alleging □□□□□□□□□□□ 22 ||infringement of the 828 Patent, which resulted in Amazon removing Plaintiffs product 23 || from its website in twenty-five (25) of those complaints.” ECF No. 136 at 4:10-16. It 94 |jelaborates that “Defendants argue that “[flor the 18 times that Amazon did not remove 25 || Plaintiffs listings, six were for administrative reasons, such as inadvertent failure to link 26 || the ‘828 patent in the submission or because the complaint was duplicative.” Jd. at 4:16- 27 The Court also noted that “Defendants concede that in twelve (12) instances, Amazon 2g || initially determined that Plaintiff's bags were not infringing the 828 Patent.” Jd. at 4:19-

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2 Plaintiff responds that “Defendants’ motion for summary judgment put the details 3 || of Defendant’s Amazon complaints directly at issue in this case, as Plaintiff invoked the 4 |) sham litigation exception in response to Defendants’ claims that Plaintiffs tort claims 5 || should be dismissed based on the litigation privilege and/or Noerr-Pennington doctrine.” 6 || ECE No. 112 at 5:23-26. “Thus, Plaintiff's use of the words ‘unsuccessful’ . . . are directly 7 || relevant to show that Defendants only intended to ‘abuse’ Plaintiff and the Amazon system 8 by repeatedly filing ‘unsuccessful’ complaints with Amazon.” Jd. at 5:26-6:1. 9 Defendants expressly state that they “do not take issue with Plaintiff arguing to the 10 jury that Defendants did not succeed in getting Amazon to permanently remove Plaintiff s listings.” ECF No. 103-1 at 12-26-13:1. To Plaintiff, Defendants’ failure to permanently 12 || remove Plaintiff's listings may mean all of Defendants’ complaints were unsuccessful. To 13 Defendants, it may not. Success is a relative term. Further, the Court agrees that such 14 argument and evidence is relevant to Plaintiff's ability to rebut any arguments raised by 13 | Defendants that their complaints are subject to the litigation privilege. Defendants may 16 relay their version of the relative success of their complaints to their jury in their opening 17 statement and closing argument. Thus, the Court DENIES Defendants’ Motion in Limine 183 3. 19 3. Motion in Limine No. 5 — Preclusion of Disparaging Statements or 20 Evidence Regarding the Non-Resident Status of Trolley Bags or its Director 21 Defendants argue that “Plaintiff should be precluded from disparaging Defendant 22 Trolley Bags and its Director Joby Crankshaw’s foreign resident status.” ECF No. 103-1 23 ll at 14:6-17. Plaintiff responds that it “has no intention of disparaging Defendant Trolley 24 Bags and its Director Joby Cronkshaw at trial based on their foreign resident status.” ECF 29 112 at 8:14-15. In reply, Defendants state they “are fine with Plaintiff ‘referencing’ or 26 mentioning’ their UK residency, but respectfully requests [sic] that the Court be prepared admonish Plaintiff it goes beyond that.” ECF No. 115 at 9:24-26. Given the parties 28 agree that Defendants may mention Defendants’ non-residency status, so long as it is not

Mina disparaging manner, the Court DENIES Defendants’ Motion in Limine No. 5. 2 4. Motion in Limine No. 6 — Preclusion of Evidence and Argument 3 Relating to Plaintiff's Allegations that Defendants “Abused” Plaintiff by Filing Complaints with Amazon 4 Defendants argue that “Plaintiff should be precluded from using pejorative terms or ° phrases at trial when discussing Defendants’ complaints to Amazon.” ECF No, 103-1 at 6 14:20-22. Defendants note that “Plaintiff has already indicated its intent to accuse 7 Defendants of ‘abusing’ Plaintiff by filing complaints for IP infringement with Amazon; 8 indeed, Plaintiff's witness Mr. Dehmoubed used this term more than ten times during his deposition.” ECF No. 103-1 at 14:22-27 (citing Exhibit C to Defendants’ Motion in Limine 10 at 69:15-19; 70:2-4; 119:11-15; 120:5-9; 120:10-15; 125:9-12; 125:19-22; 128:9-11; 150:18-24; 151:15-19; 152:22-153:4). Plaintiff responds that Defendants’ motion for summary judgment put the details of 13 Defendants’ Amazon complaints at issue in this case when Defendants’ invoked the sham M4 litigation exception to Noerr-Pennington Doctrine. ECF No. 112 at 5:23-26, As such, I Plaintiff contends the word “abuse” is “directly relevant to show that Defendants only 16 intended to ‘abuse’ Plaintiff and the Amazon system by repeatedly filing ‘unsuccessful’ complaints with Amazon.” ECF No. 112 at 5:26-6:1. Defendants reply that “the term 18 ‘abuse’ is pejorative or inflammatory” and is not needed to prove the relevant exceptions 19 to the Noerr-Pennington doctrine and litigation privilege. ECF No. 115 at 10:12-23. 20 This Court has already ruled that the Noerr-Pennington doctrine does not apply to 21 this case. See ECF No. 136 at 104. Thus, the use of the term “abuse” by Plaintiff is not 22 needed for Plaintiff to fend off the Noerr-Pennington doctrine. However, the Court found 23 “that an issue of fact exists as to the first prong pertaining to application of the litigation 24 privilege (e.g., whether the communication was made in a judicial proceeding).” Id. at 96. 25 With respect to that first prong, communications preceding a judicial proceeding “are 26 privileged only if made in connection with proposed litigation contemplated in good faith 27 and under serious consideration.” Visto Corp. v. Sprogit Techs., Inc.,360 F. Supp. 2d 1064, 28 1069 (N.D. Cal. 2005). The Court acknowledges Defendants’ non-binding authority 14

l granting a motion in limine, prohibiting a party from using pejorative terms. See, e.g., 2 |! Universal Elees., Inc. v. Universal Remote Control, Inc., No. SACV 12-00329 AG, 2014 3 |] WL 8096334, at *8 (C.D. Cal. Apr. 21, 2014) (granting motion in limine because “[t]here 4 \lis no probative value in the use of a term with negative connotations to describe > || Defendant’s products or pricing strategy, and the use of the pejorative terms ‘knock-off,’ 6 ‘pirated,’ or ‘predatory’ are therefore unduly prejudicial under FRE 403”). However, the Court finds that Plaintiff may describe or characterize the number of complaints, success 8 | of the complaints, and impact of the complaints however Plaintiff sees fit. To the extent 9 || Defendants disagree with that characterization, they can explain their opinions regarding 10 || the complaints to Amazon during opening statements and closing arguments. Thus, Defendants’ Motion in Limine No. 6 is DENIED. CONCLUSION 13 For the above reasons, the Court rules on the motions as follows: 14 1, Plaintiffs Motions in Limine: 15 a. Plaintiff's Motion in Limine No. 1, seeking to preclude Defendants 16 from presenting infringement arguments pertaining to the 828 Patent at trial that include 17]! Versions 2 and 3 of Plaintiff's accused products is DENIED as moot in light of the Court’s 18 previous rulings on the 828 Patent. 19 b. Plaintiff?'s Motion in Limine No. 2, seeking to preclude evidence 20 relating to any non-final actions of the United States Patent and Trademark Office relating 21 || to the reexamination of the 912 Patent is GRANTED. 22 c. Plaintiffs Motion in Limine No. 3, seeking to preclude Defendants 23 || from presenting testimony or evidence regarding damages that were provided during 24 || discovery is DENIED. : 25 2. Defendants’ Motions in Limine: 26 a. Defendants’ Motion in Limine No. 1, seeking to preclude Plaintiff from 27 presenting invalidity and non-infringement arguments that were not disclosed during 28 discovery is DENIED as moot in light of the Court’s previous rulings on the 828 Patent. 4,4.

I b. Defendants’ Motion in Limine No. 2, seeking to preclude Plaintiff from 2 presenting evidence of damages not disclosed during discovery is DENIED. 3 c. Defendants’ Motion in Limine No. 3, seeking to preclude Plaintiff from 4 arguing that Defendants submitted 89 unsuccessful complaints against it to Amazon is > || DENIED, 6 d, Defendants’ Motion in Limine No. 4, seeking to preclude □□□□□□□□□□□ 7 expert, Timothy Fletcher, from offering testimony at trial under the ordinary observer 8 || standard is DENIED as moot in light of the Court’s previous rulings on the 828 Patent. 9 e, Defendants’ Motion in Limine No. 5, seeking to preclude Plaintiff from 10 referring or discussing the non-resident status of Trolley Bags or its Director is DENIED. I] f. Defendants’ Motion in Limine No. 6, seeking to preclude Plaintiff from 12 offering evidence or argument that Defendants “abused” Plaintiff by filing complaints with 13 || Amazon is DENIED. 14 3. Within fifteen (15) days of this order, both parties must exchange a Statement 13 Hog Damages detailing separately for each remaining claim that party has in the case, which 16 details the following: (1) the type of damages that party seeks for each remaining claim; 17 (2) who will testify as to each type of damages for each remaining claim; (3) what 18 |! documents support the damages for each remaining claim; (4) the total amount of damages 19 sought for each remaining claim; and (5) the calculations providing the basis for the 20 damages pertaining to each claim. Any damages, witnesses, or documents not included 21 || within this document will be excluded at trial. DATED: March 17, 2021 fA (ft, 24 N. ROGER I’ er Jude 95 United States Distfict Judge 26 27 28