Vaporstream Inc v. Snap Inc

• Court: District Court, C.D. California
• Decided: February 28, 2020
• Docket: 2:17-cv-00220
• Status: Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 VAPORSTREAM, INC., Case No.: 2:17-cv-00220-MLH (KSx)

12 Plaintiff, ORDER: 13 v. (1) GRANTING IN PART AND 14 SNAP INC. d/b/a/ Snapchat, Inc., DENYING IN PART PLAINTIFF’S 15 Defendant. MOTIONS IN LIMINE; AND

16 [Doc. No. 247.] 17 (2) GRANTING IN PART AND 18 DENYING IN PART DEFENDANT’S 19 MOTIONS IN LIMINE

20 [Doc. No. 238, 240, 244, 245, 246.] 21 (3) GRANTING THE PARTIES’ 22 JOINT MOTION REGARDING THE 23 PRESENTATION OF EVIDENCE AT TRIAL REGARDING 24 VAPORSTREAM PRODUCTS 25 [Doc. No. 283.] 26

27 28 1 On January 29, 2020, the parties filed their respective motions in limine. (Doc. Nos. 2 238, 240, 244, 245, 246, 247.) On February 6 and 12, 2020, the parties filed their respective 3 oppositions to the motions in limine. (Doc. Nos. 258, 262, 263, 264, 267, 270.) On 4 February 19, 2020, the parties filed their respective replies. (Doc. Nos. 276, 277, 278, 279, 5 280, 281.) On February 24, 2020, Snap filed a notice withdrawing one of its motions in 6 limine. (Doc. No. 282.) On February 25, 2020, the parties filed a joint motion regarding 7 the presentation of evidence and withdrawing another one of Snap’s motions in limine. 8 (Doc. No. 283.) 9 The Court held a hearing on February 26, 2020. Robert Rivera, Jr., Joseph S. 10 Grinstein, and Meng Xi appeared for Plaintiff Vaporstream. Heidi L. Keefe, Michael A. 11 Attanasio, Reuben H. Chen, and Mark R. Weinstein appeared for Defendant Snap. For the 12 reasons below, the Court grants in part and denies in part Vaporstream’s motions in limine, 13 and the Court grants in part and denies in part Snap’s motions in limine. 14 Background 15 On January 10, 2017, Plaintiff Vaporstream filed a complaint for patent infringement 16 against Defendant Snap, alleging infringement of U.S. Patent Nos. 8,886,739, 8,935,351, 17 9,306,885, 9,306,886, 9,313,155, 9,313,156, 9,313,157, 9,338,111, and 9,413,711. (Doc. 18 No. 1.) On June 26, 2017, Snap filed an answer to the complaint. (Doc. No. 61.) 19 On February 27, 2018, the Court issued a claim construction order. (Doc. No. 118.) 20 On February 27, 2018, the Court also denied Snap’s motion for summary judgment that 21 the patents-in-suit are invalid under 35 U.S.C. § 101. (Doc. No. 117.) 22 Starting on June 6, 2018, the Patent Trial and Appeal Board instituted inter partes 23 review of the challenged claims for each of the patents-in-suit. See Snap Inc. v. 24 Vaporstream, Inc., Case Nos. IPR2018-00200, IPR2018-00312, IPR2018-00369, 25 IPR2018-00397, IPR2018-00404, IPR2018-00408, IPR2018-00416, IPR2018-00439, 26 IPR2018-00455, IPR2018-00458. On June 12, 2018, the parties filed a joint motion to stay 27 the action pending the IPR proceedings as to the patents-in-suit. (Doc. No. 148.) On June 28 13, 2018, the Court granted the parties’ joint motion and stayed the action pending the last 1 final written decision by the PTAB in the IPR proceedings for the patents-in-suit. (Doc. 2 No. 150.) 3 Between June 4, 2019 and August 30, 2019, the PTAB issued final written decisions 4 in each of the IPR proceedings for the patents-in-suit. In those decisions, the PTAB held 5 that the challenged claims from the ’739 patent, the ’885 patent, the ’155 patent, the ’351 6 patent, and the ’156 patent are all unpatentable, and the PTAB held that the challenged 7 claims from the ’886 patent, the ’111 patent, the ’711 patent, and the ’157 patent had not 8 been shown to be unpatentable. (Doc. Nos. 156-1, 157-1, 158-1, 158-2, 158-3, 158-4, 159- 9 1.) 10 As a result, on September 13, 2019, the Court partially lifted the stay of the action. 11 (Doc. No. 160.) The Court lifted the stay as to the ’886 patent, the ’111 patent, the ’711 12 patent, and the ’157 patent. (Id. at 3.) The Court continued the stay of the action as to the 13 ’739 patent, the ’885 patent, the ’155 patent, the ’351 patent, and the ’156 patent. (Id.) On 14 September 23, 2019, the Court issued an amended scheduling order. (Doc. No. 162.) 15 On January 10, 2020, the Court granted in part and denied in part Snap’s Daubert 16 motion, and the Court denied Vaporstream’s Daubert motion. (Doc. No. 222.) In the order, 17 the Court specifically excluded Vaporstream’s damages expert Mr. Bratic’s 50/50 profit 18 split reasonable royalty rate opinion, and the Court precluded Mr. Bratic from referencing 19 in his damages analysis Snap’s market capitalization, acquisition offers received, total 20 revenues, and total incremental profits. (Id. at 4-10, 12-13, 20.) 21 On January 13, 2020, the Court issued an order on the parties’ motions for summary 22 judgment. (Doc. No. 224.) In the order, the Court: (1) denied Snap’s motion for 23 reconsideration of the Court’s February 27, 2018 summary judgment order; (2) denied 24 Snap’s motion for summary judgment of non-infringement; (3) granted Snap’s motion for 25 summary judgment of no willful infringement; and (4) granted summary judgment in favor 26 of Vaporstream on Snap’s affirmative defense of invalidity of the ’886, ’111, and ’711 27 28 1 patents based on obviousness. (Id. at 45-46.) 2 Presently before the Court are five motions in limine from Snap and three motions 3 in limine from Vaporstream. (Doc. Nos. 238, 240, 244, 245, 246, 247.) The Court 4 addresses each of these motions in limine in turn below. 5 Discussion 6 I. Snap’s Motions in Limine 7 A. Snap’s Motion in Limine No. 1 - Moot 8 In its first motion in limine, Snap moves to preclude any evidence or argument about 9 how Vaporstream’s products work or that Vaporstream’s products practice the asserted 10 claims. (Doc. No. 252 at 1.) On February 25, 2020, the parties filed a joint motion 11 regarding the presentation of evidence at trial regarding Vaporstream products. (Doc. No. 12 283.) In the joint motion, the parties agree: 13 (1) Vaporstream may present evidence at trial regarding the Vaporstream products in existence at the time of Mr. Amit Shah’s employment at 14 Vaporstream from 2005 through May 1, 2015, including, for example, the 15 operation of such products and whether they represent a reduction to practice and/or an embodiment of the alleged invention. Neither Mr. Shah nor 16 Vaporstream (through its experts or otherwise) may present evidence, 17 however, about the operation of Vaporstream products (or versions thereof) in existence after May 1, 2015 when Mr. Shah’s employment at Vaporstream 18 ended. Further, Mr. Shah and Vaporstream (through its experts or otherwise) 19 shall not present any limitation-by-limitation analysis comparing any Vaporstream product to the asserted claims. Furthermore, Snap (through its 20 experts or otherwise) shall not argue at trial that Vaporstream is a “patent 21 troll,” “non-practicing entity,” or similar such entity. 22 (2) Each party agrees that its respective technical expert(s) will not present evidence regarding the operation of the Vaporstream products. 23 (3) In view of the foregoing stipulations regarding the presentation of 24 evidence at trial regarding Vaporstream’s products, Snap withdraws its 25 Motion in Limine to Exclude Evidence That Any Vaporstream Product 26 27 1 In th e o r d e r, t h e C o u rt also dismissed Vaporstream’s claim for infringement of the ’157 patent 28 from the case without prejudice. (Doc. No. 224 at 33-34.) 1 Practices the Asserted Claims (ECF No. 252). 2 (Doc. No. 283 at 1-2.) For good cause shown, the Court grants the parties’ joint motion, 3 and the Court denies Snap’s first motion in limine as moot. 4 B. Snap’s Motion in Limine No. 2 – Exclusion of Certain Infringement Opinions 5 Regarding the “Header Information” and “Identifier of a Sending User” Claim Limitations 6 In its second motion in limine, Snap moves to preclude Vaporstream from presenting 7 any evidence at trial that anything other than the “username” or “display name” identified 8 by Vaporstream’s infringement expert Mr. Hicks in his expert report can meet the claim 9 limitations of “header information” or “identifier of a sending user.” (Doc. No. 240 at 1.) 10 In response, Vaporstream argues that Snap’s motion should be denied because Mr. Hicks 11 did not limit his infringement opinions regarding the “header information”/“identifier of a 12 sending user” claim limitations to the Snapchat “username” and “display name.” (Doc. 13 No. 270 at 1-2.) 14 Federal Rule of Civil Procedure 26(a)(2)(B)(i) provides that an expert report must 15 contain “a complete statement of all opinions the witness will express.” Thus, “[a]ll expert 16 witnesses at trial must tether their testimony to the contents of their respective reports, and 17 are precluded from exceeding the scope of their reports.” AngioScore, Inc. v. TriReme 18 Med., Inc., No. 12-CV-03393-YGR, 2015 WL 5258786, at *1 n.1 (N.D. Cal. Sept. 8, 19 2015); see, e.g., Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 20 1354–55 (Fed. Cir. 2013) (affirming district court’s striking in part of an expert declaration 21 that included untimely disclosures); Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 22 488 F.3d 982, 995 (Fed. Cir. 2007) (affirming district court’s exclusion of expert testimony 23 that fell outside the expert’s report). Nevertheless, “[t]he purpose of [an expert] report[] is 24 not to replicate every word that the expert might say on the stand. It is instead to convey 25 the substance of the expert’s opinion (along with the other background information 26 required by Rule 26(a)(2)(B)) so that the opponent will be ready to rebut, to cross-examine, 27 and to offer a competing expert if necessary.” Walsh v. Chez, 583 F.3d 990, 994 (7th Cir. 28 2009); accord Ohio Six Ltd. v. Motel 6 Operating L.P., No. CV 11-08102 MMM (EX), 1 2013 WL 12125747, at *14 (C.D. Cal. Aug. 7, 2013). 2 The Court has reviewed the relevant opinions set forth in Mr. Hicks’ expert report. 3 The Court agrees with Vaporstream that Mr. Hicks does not limit his opinions regarding 4 the “header information”/“identifier of a sending user” claim limitations to the Snapchat 5 “username” and “display name.” (See, e.g., Doc. No. 273-1, Ex. A at 1 (“The Snap also 6 contains header information (metadata) relevant to the message content.”), at 12 (“The 7 screenshot from the Snapchat App below presents an example of the ‘first display’ (Friends 8 screen) that shows the header information of the electronic message at the recipient 9 device.”); Doc. No. 273-2, Ex. B at 47-48 (“The message listing (header information) 10 corresponding to the message content (an available photo snap is shown as a solid pink 11 square and an available video is shown as a solid purple square) is received at the recipient 12 device.”).) As such, the Court denies Snap’s second motion in limine without prejudice to 13 a contemporaneous objection at trial.2 14 C. Snap’s Motion in Limine No. 3 – Exclusion of Any Damages Evidence 15 In its third motion in limine, Snap moves to preclude Vaporstream from offering any 16 damages evidence at trial. (Doc. No. 253 at 1, 9.) Specifically, Snap argues that 17 Vaporstream should not be permitted to call its damages expert, Mr. Bratic, at trial and 18 Vaporstream has waived reliance on any other damages evidence in this case. (Id. at 4-9.) 19 In response, Vaporstream argues that Snap’s motion should be denied, and Mr. Bratic 20 should be permitted to testify at trial as any unexcluded matters. (Doc. No. 257-1 at 1.) 21 /// 22 /// 23 24 2 In its reply brief, Snap argues that in Vaporstream’s statement of uncontroverted facts filed during 25 the summary judgment stage, Vaporstream did not dispute that it only identified the “username” as meeting the “header information” and “identifier of a sending user” claim limitations. (Doc. No. 277 at 1 26 n.2.) The record does not support Snap’s contention. In Vaporstream’s statement of dispute material facts, Vaporstream stated: ““Header information” as used in claim 1 of the ’886 and ’111 Patents includes 27 both ‘display name’ and ‘username.’” (Doc. No. 194-1 at 1.) Here, Vaporstream stated that “header 28 information” includes both “display name” and “username,” but Vaporstream did not limit the term 1 i. The Proposed January 29, 2020 Bratic Supplement Report 2 As a preliminary matter, the Court addresses the proposed January 29, 2020 six-and- 3 a-half-page supplemental expert report from Mr. Bratic that was filed along with 4 Vaporstream’s memorandum of contentions of fact and law. (Doc. No. 231-1, Ex. C.) In 5 its opposition to Snap’s motion in limine, Vaporstream requests that it be granted leave to 6 use the information disclosed in the proposed supplemental expert report at trial. (Doc. 7 No. 257-1 at 1, 5-9.) The filing of this supplemental expert report was untimely and 8 improper, and the Court denies Vaporstream’s request. 9 Under Federal Rule 26(a)(2), “a party must disclose to the other parties the identity 10 of any [expert] witness it may use at trial to present evidence” and “this disclosure must be 11 accompanied by a written report signed by the witness.” Fed. R. Civ. P 26(a)(2); accord 12 Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001). “The 13 report must contain: (i) a complete statement of all opinions the witness will express and 14 the basis and reasons for them.” Fed. R. Civ. P. 26(a)(2)(B). Rule 26(a)(2)(D) provides: 15 “A party must make these disclosures at the times and in the sequence that the court 16 orders.” Fed. R. Civ. P. 26(a)(2)(D). Under the Court’s scheduling orders in this action, 17 opening expert reports were due by April 25, 2018; Mr. Bratic’s supplemental expert report 18 was due by October 18, 2019; and expert discovery closed on October 30, 2019. (Doc. No. 19 126 at 2-3; Doc. No. 162 at 3-4; Doc. No. 172.) 20 Federal Rule of Civil Procedure 37(c)(1) provides: “If a party fails to provide 21 information or identify a witness as required by Rule 26(a) or (e), the party is not allowed 22 to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, 23 unless the failure was substantially justified or is harmless.” Fed R. Civ. P. 37(c)(1). “Rule 24 37 ‘gives teeth’ to Rule 26’s disclosure requirements by forbidding the use at trial of any 25 information that is not properly disclosed.” Goodman v. Staples The Office Superstore, 26 LLC, 644 F.3d 817, 827 (9th Cir. 2011). “Rule 37(c)(1) is a ‘self-executing,’ ‘automatic’ 27 sanction designed to provide a strong inducement for disclosure.” Id. 28 Nevertheless, under Rule 37(c)(1), “[t]he information may be introduced if the 1 parties’ failure to disclose the required information is substantially justified or harmless.” 2 Yeti by Molly, 259 F.3d at 1106. The party facing sanctions bears the burden of proving 3 substantial justification or harmlessness. See id. Further, a district court has “particularly 4 wide latitude” in determining whether to issue sanctions under Rule 37(c)(1). Id. 5 Vaporstream argues that it should be permitted to use the January 29, 2020 6 supplemental expert report because the proposed opinions in the report are limited to curing 7 the specific deficiencies identified in the Court’s January 10, 2020 Daubert order, and the 8 report does not introduce a new damages theory. (Doc. No. 257-1 at 9.) The Court 9 disagrees. The opinions disclosed in the January 29, 2020 supplemental expert report 10 represent entirely new opinions and theories for calculating the reasonable royalty rate in 11 this case. In the proposed supplemental expert report, Mr. Bratic opines that the reasonable 12 royalty rate should be calculated by looking at the ratio of Snap’s research and development 13 expenses to Snap’s total operating expenses. (See Doc. No. 231-1, Ex. C Bratic 14 Supplemental Report ¶¶ 10-21) This “research and development” methodology was not 15 contained anywhere in Mr. Bratic’s original expert reports. (See Doc. No.185-1, Bratic 16 Supplemental Report ¶¶ 176-82; Doc. No. 185-2 Bratic Report ¶¶ 175-81.) It is an entirely 17 new theory and methodology for calculating the reasonable royalty rate in this case, and, 18 thus, is an improper, untimely expert disclosure. 19 Further, these untimely new damages opinions are unjustified and highly prejudicial 20 to Snap. Vaporstream has failed to explain why this alternative royalty rate method could 21 not have been presented earlier in the case when Mr. Bratic filed his initial expert reports. 22 See Cave Consulting Grp., Inc. v. OptumInsight, Inc., No. 15-CV-03424-JCS, 2020 WL 23 127612, at *13 (N.D. Cal. Jan. 10, 2020) (finding the patentee was not diligent where 24 “nothing prevented [it] from offering its newly proposed approach . . . as an alternative 25 measure of damages at the outset”). Further, because the supplemental expert report was 26 presented (1) after the close of expert discovery and the deadline for filing pre-trial 27 motions; (2) on the same day that motions in limine were due; and (3) less than six weeks 28 before the scheduled trial date, Snap is highly prejudiced by the untimely disclosure. The 1 trial date is only nine days away, and Snap has no ability to challenge the opinions disclosed 2 in the supplemental expert report through a Daubert motion or through a rebuttal expert 3 report. And Snap cannot depose Mr. Bratic regarding the new opinions disclosed in the 4 report. As a result, the Court strikes the January 29, 2020 Bratic supplemental expert report 5 and excludes any of the new opinions contained in the report.3 See Fed R. Civ. P. 37(c)(1); 6 see, e.g., Cave Consulting, 2020 WL 127612, at *13 (denying leave to offer a new 7 supplemental damages expert report where the patentee was not diligent and the defendant 8 would be prejudiced); Network Prot. Scis., LLC v. Fortinet, Inc., No. C 12-01106 WHA, 9 2013 WL 5402089, at *8 (N.D. Cal. Sept. 26, 2013) (denying leave to offer a new 10 supplemental damages expert report where the trial date was only four days away and “a 11 new royalty analysis would impose prejudice on the defense as well and disrupt the Court’s 12 calendar”); see, e.g., Cheese Sys., 725 F.3d at 1354–55 (affirming the district court’s 13 striking in part of an expert declaration that included untimely disclosures). 14 ii. Mr. Bratic’s Testimony 15 Snap argues that the Court should preclude Mr. Bratic from testifying at trial. (Doc. 16 No. 253 at 4-6.) Snap argues that because the Court excluded Mr. Bratic’s 50/50 profit 17 split reasonable royalty rate opinion in its Daubert order, the Court should exclude Mr. 18 Bratic’s testimony in its entirety. (Id. at 5.) In response, Vaporstream argues that Mr. 19 Bratic should be permitted to testify at trial as any unexcluded matters. (Doc. No. 257-1 20 at 1.) The Court agrees with Vaporstream. 21 In the Court’s January 10, 2020 Daubert order, the Court granted in part Snap’s 22 Daubert motion, and the Court excluded Mr. Bratic’s reasonable royalty rate opinion. 23 (Doc. No. 222 at 4-10, 20.) Thus, Mr. Bratic cannot offer a reasonable royalty rate opinion 24 25 26

3 The Court clarifies that it is not excluding matters that might be referenced in the January 29, 2020, 27 but are contained elsewhere in the record, such as in Mr. Bratic’s prior expert reports or in Snap’s financial 28 documents. 1 at trial. Further, because a reasonable royalty rate determination is a necessary component 2 of a running reasonable royalty calculation, Mr. Bratic is also precluded from offering a 3 final reasonable royalty calculation at trial. Cf. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 4 1308, 1326 (Fed. Cir. 2014) (“A reasonable royalty . . . may also be, and often is, a running 5 payment that varies with the number of infringing units. In that event, it generally has two 6 prongs: a royalty base and a royalty rate.”). 7 Nevertheless, the Court did not grant Snap’s Daubert motion in full, and the Court 8 did not exclude all of Mr. Bratic’s opinions. For example, the Court denied Snap’s motion 9 to exclude Mr. Bratic’s LTV numbers. (Doc. No. 222 at 11-12.) Because the Court did 10 not exclude all of Mr. Bratic’s opinions, Vaporstream may present a damages case at trial 11 containing these remaining opinions, such as his analysis of the Georgia-Pacific factors 12 and his analysis of the apportioned reasonable royalty base. 13 Snap argues that it would be improper for Mr. Bratic to testify as to the reasonable 14 royalty base because it would be a violation of the entire market value rule. (Doc. No. 253 15 at 5.) The Court rejects this argument. First, this argument is untimely. Snap did not raise 16 an entire market value rule challenge to Mr. Bratic’s reasonable royalty base analysis in its 17 Daubert motion. (See Doc. No. 185.) Second, Snap’s entire market value rule challenge 18 fails, because Mr. Bratic has done an apportionment analysis, and, thus, he is not attempting 19 to assess damages based on the entire market value of the accused products. (See Doc. 20 No.185-1, Bratic Supplemental Report ¶¶ 132-47) Cf. AstraZeneca AB v. Apotex Corp., 21 782 F.3d 1324, 1337 (Fed. Cir. 2015) (explaining that the entire market value rule applies 22 “when small elements of multi-component products are accused of infringement” and the 23 patentee “‘assess[es] damages based on the entire market value of the accused product’” 24 (quoting Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011)). 25 Additionally, the Court will instruct the jury on how to calculate an ongoing royalty. 26 27 4 In ad d i t io n , t h e C o u r t p recluded Mr. Bratic from referencing in his damages analysis at trial Snap’s 28 market capitalization, acquisition offers received, total revenues, and total incremental profits. (Doc. No. 1 See N.D. Cal. Model Patent Jury Instructions 5.7 (“One way to calculate a royalty is to 2 determine what is called an ‘ongoing royalty.’ To calculate an ongoing royalty, you must 3 first determine the ‘base,’ that is, the product on which the alleged infringer is to pay. You 4 then need to multiply the revenue the defendant obtained from that base by the ‘rate’ or 5 percentage that you find would have resulted from the hypothetical negotiation.”). It will 6 be up to Vaporstream to come up with sufficient evidence in the record to support a 7 reasonable royalty rate finding, if it can do so.5 8 Snap argues that Vaporstream should be precluded from presenting any damages 9 evidence at trial because, in light of the Court’s Daubert order, there is no expert testimony 10 in the record as to the issue of the reasonable royalty rate. (Doc. No. 276 at 2-3.) The 11 Court disagrees. In Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1327–30 (Fed. Cir. 2014), 12 overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 13 2015), the Federal Circuit reversed a district court’s entry of summary judgment of no 14 damages and rejected the accused infringer’s contention that the patentee was not entitled 15 to any damages because there was no evidence upon which the patentee could rely on to 16 establish damages. In that case, the Federal Circuit explained: 17 With infringement assumed, the statute requires the court to award damages ‘in no event less than a reasonable royalty.’ Because no less than a 18 reasonable royalty is required, the fact finder must determine what royalty is 19 supported by the record. 20 If a patentee’s evidence fails to support its specific royalty estimate, the fact finder is still required to determine what royalty is supported by the 21 record. Indeed, if the record evidence does not fully support either party’s 22 royalty estimate, the fact finder must still determine what constitutes a reasonable royalty from the record evidence. Certainly, if the patentee’s proof 23 is weak, the [fact finder] is free to award a low, perhaps nominal, royalty, as 24 long as that royalty is supported by the record. 25 Thus, a fact finder may award no damages only when the record supports a zero royalty award. 26 27

28 5 For example, Vaporstream might be able to utilize other evidence in the record, such as the lump 1 Id. at 1327–28 (citations and footnote omitted). 2 In light of this, the Federal Circuit held that “the district court’s conclusion that [the 3 patentee’s] HTC-based estimate was flawed does not establish, as a matter of law, a zero 4 royalty. Even if [the patentee] had not submitted expert evidence, this alone would not 5 support a finding that zero is a reasonable royalty.” Id. at 1330. “‘The use of expert 6 testimony is permissive. Thus, if a patentee’s damage expert is excluded, that fact does 7 not automatically deny a patentee a right to recover damages.’” Id. (quoting Annotated 8 Patent Digest, § 44:79). 9 Here, as in Apple v. Motorola, the Court has excluded some, but not all of the 10 patentee’s damages expert’s opinions. Thus, Vaporstream is still is entitled to a 11 determination from the fact finder as to the reasonable royalty if there is a finding of 12 infringement of a valid patent. See id. at 1327–30. Indeed, the Court notes that in one of 13 the primary cases relied on by Snap, the Federal Circuit vacated a damages award and held 14 that the patentee’s damages expert’s proposed royalty rate should have been excluded by 15 the district court because it lacked sufficient ties to the facts of the case. See Exmark Mfg. 16 Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332, 1351 (Fed. Cir. 2018). 17 Nevertheless, the Federal Circuit in that case remanded “for a new trial on damages.” Id. 18 The Federal Circuit did not remand the case for the entry of a judgment of no damages. 19 Snap argues that in light of the excluded opinions, the jury in this case might award 20 a reasonable royalty that is not supported by the evidence in the record. But this argument 21 is entirely speculative at this time. The trial has yet to begin and no jury verdict has been 22 rendered. 23 In sum, the Court grants in part and denies in part Snap’s third motion in limine. 24 Specifically, the Court strikes the January 29, 2020 Bratic supplemental expert report and 25 excludes any of the new opinions contained in the report. In addition, the Court precludes 26 Mr. Bratic from offering any reasonable royalty rate calculation or overall reasonable 27 royalty calculation at trial. The Court denies the remainder of Snap’s motion in limine 28 without prejudice to a contemporaneous objection at trial. 1 D. Snap’s Motion in Limine No. 4 – Exclusion of the IPR Proceedings 2 In its fourth motion in limine, Snap moves to exclude any evidence or arguments 3 relating to the inter partes review proceedings for the patents-in-suit. (Doc. No. 245 at 1.) 4 Snap argues that the IPR proceedings are irrelevant because the proceedings concerned 5 obviousness under 35 U.S.C. § 103, which will not be an issue at trial.6 (Id.) Snap further 6 argues that admitting evidence of the IPR proceedings would prejudice Snap and cause 7 significant juror confusion by potentially confusing the jury to believe that the PTAB has 8 ruled on the merits of Snap’s § 101 invalidity defense. (Id.) 9 In response, Vaporstream argues that the PTAB’s decisions concerning obviousness 10 under 35 U.S.C. § 103 in the IPR proceedings are highly relevant to the § 101 determination 11 of patent eligibility in this case. (Doc. No. 263 at 1.) Vaporstream is wrong. 12 The standard for determining patent eligibility under § 101 is different from the 13 standards for determining novelty under § 102 and obviousness under § 103. See Mayo 14 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 91 (2012) (“declin[ing] the 15 Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better 16 established inquiry under § 101”). The Court acknowledges that in Mayo Collaborative 17 Servs. v. Prometheus Labs., Inc., 566 U.S. at 90, the Supreme Court explained that a § 102 18 novelty inquiry and a § 101 patent-eligibility “might sometimes overlap.” But the Supreme 19 Court further explained in that case: “But that need not always be so.” See id. 20 Further, the Supreme Court and the Federal Circuit have explained that “‘[t]he 21 “novelty” of any element or steps in a process, or even of the process itself, is of no 22 relevance in determining whether the subject matter of a claim falls within the § 101 23 categories of possibly patentable subject matter.’” Intellectual Ventures I LLC v. 24 Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 25 U.S. 175, 188–89 (1981)). Thus, a finding that an accused infringer has failed to prove a 26 27

28 6 The Court previously granted summary judgment of Snap’s defense of invalidity of the ’886, ’111, 1 patent is invalid as obvious “does not resolve the question of whether the claims embody 2 an inventive concept at the second step of Mayo/Alice.” Id. Thus, the PTAB’s 3 determinations regarding obviousness are not relevant to the § 101 determination in this 4 case.7 See id. 5 Further, even assuming the IPR proceedings have some marginal relevance due to 6 the potential overlap between the § 103 obviousness inquiry and the §101 patent-eligibility 7 inquiry, the Court still excludes the evidence due the danger of jury confusion and wasting 8 of time and resources. See Fed. R. Evid. 403. Introduction of the IPR proceedings to the 9 jury would likely require an explanation of the nature of IPR proceedings and the PTAB’s 10 role, the difference between the standards for determining obviousness under § 103 and for 11 determining patent-eligibility under § 101, and the PTAB’s various findings in the multiple 12 IPR proceedings. This would likely consume a significant amount of time and potentially 13 lead to jury confusion over the invalidity issues in the case. See Milwaukee Elec. Tool 14 Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 WL 4570787, at *6 (E.D. Wis. Oct. 12, 15 2017). 16 In sum, the Court grants Snap’s fourth motion in limine. The Court precludes 17 Vaporstream from introducing any evidence or argument relating to the inter partes review 18 petitions for the patents-in-suit, and any activity at the PTAB related to these petitions 19 absent further order of the Court.8 20 /// 21 22

7 In addition, the Court does not find persuasive Vaporstream’s reliance on Trustees of Columbia 23 Univ. in City of New York v. Symantec Corp., No. 3:13CV808, 2019 WL 6138419 (E.D. Va. Nov. 19, 24 2019). (Doc. No. 263 at 1-2.) Trustees of Columbia University is a non-binding district court opinion. Further, in Trustees of Columbia University, the district court recognized that “the Supreme Court has 25 stated and the Federal Circuit has recognized that [t]he novelty of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls 26 within the § 101 categories of possibly patentable subject matter.” 2019 WL 6138419, at *14 (quoting Intellectual Ventures I, 838 F.3d at 1315). 27

28 8 Should the presentation of evidence at trial merit reconsideration of this ruling, Vaporstream must 1 E. Snap’s Motion in Limine No. 5 - Moot 2 In its fifth motion in limine, Snap moves to bar Vaporstream from arguing a position 3 at trial that is purportedly inconsistent with a position Vaporstream took during the course 4 of the related inter partes review proceedings. (Doc. No. 246 at 1.) On February 24, 2020, 5 Snap filed a notice of withdrawal of this motion in limine. (Doc. No. 282.) As a result, 6 the Court denies Snap’s fifth motion in limine as moot. 7 II. Vaporstream’s Motions in Limine 8 A. Vaporstream’s Motion in Limine No. 1 – Exclusion of Certain Patents 9 Vaporstream’s first motion in limine is two-part. First, Vaporstream moves to 10 exclude all patent applications, related proceedings, and related references or attorney 11 arguments regarding Vaporstream patents other than the patents-in-suit. (Doc. No. 247 at 12 1.) Snap explains in its response that it does not intend to present any evidence of 13 Vaporstream’s non-asserted patents provided the Court grants its motion in limine to 14 exclude all evidence of the IPRs from trial. (Doc. No. 267 at 4 & n.2) The Court has 15 granted Snap’s motion in limine regarding the IPR proceedings. See supra. As such, the 16 first portion of Vaporstream’s motion in limine is moot. 17 Second, Vaporstream moves to exclude all patent applications, related proceedings, 18 and related references or attorney arguments regarding Snap’s patents and third-party 19 patents used for any purpose other than to challenge the subject-matter eligibility of the 20 patents-in-suit under 35 U.S.C. § 101. (Doc. No. 247 at 1-2.) With respect to the Snap 21 patents, Vaporstream argues that Snap may not introduce evidence of its own patents for 22 the purposes of arguing non-infringement. (Doc. No. 247 at 4.) In response, Snap explains 23 that it “has no intention of referring to or discussing any specific Snap patents, nor will it 24 proffer any analysis comparing Snap[’s] own patents with Vaporstream’s patents. Snap 25 does not intend to argue that its patents are superior to Vaporstream’s, or that their existence 26 implies that Snap does not infringe.” (Doc. No. 267 at 5.) In reply, Vaporstream concedes 27 that these concessions from Snap largely moot this portion of its motion in limine. (Doc. 28 No. 280 at 280 at 3.) Any remaining issues regarding Snap’s patents can appropriately be 1 addressed through a contemporaneous objection at trial. 2 With respect to the third-party patents, Snap argues that the third-party patents are 3 relevant to several issues beyond invalidity under § 101. (Doc. No. 267 at 5-7.) 4 Specifically, Snap argues these third-party patents are relevant to the issue of damages 5 under an analysis of the Georgia-Pacific factors. (See id.) The Court agrees with Snap. 6 See Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011) (“This 7 court has sanctioned the use of the Georgia–Pacific factors to frame the reasonable royalty 8 inquiry.”); Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.

9 1970) (“9. The utility and advantages of the patent property over the old modes or devices, 10 if any, that had been used for working out similar results.”). Indeed, the Court notes that 11 in its motion, Vaporstream concedes that at least one third-party patent may be relevant to 12 the issue of damages. (Doc. No. 247 at 5 n.2.) 13 Vaporstream argues that Snap should not be permitted to rely on these third-party 14 patents as background for Mr. Bakewell’s damages analysis because in granting summary 15 judgment of Snap’s obviousness defense, the Court excluded all § 103 prior art references 16 from the case. (Doc. No. 280 at 4-5.) Vaporstream is wrong and misunderstands the effect 17 of the Court’s summary judgment order. In the Court’s January 13, 2020 summary 18 judgment order, the Court granted summary judgment of Snap’s obviousness defenses. 19 (Doc. No. 224 at 45-46.) But the Court did not exclude any specific evidence. (See id.) If 20 there is evidence in the record that is solely relevant to the issue of obviousness, that 21 evidence is no longer admissible because obviousness is no longer at issue in this case. See 22 Fed. R. Evid. 402. Nevertheless, the Court’s summary judgment ruling does not render 23 evidence inadmissible simply because it was relevant to the issue of obviousness provided 24 the evidence remains relevant to a different issue in the case, such as damages through 25 Georgia-Pacific factor 9. See Fed. R. Evid. 402. Thus, Mr. Bakewell’s damages opinions 26 that rely on Dr. Greenberg’s analysis of the prior art remain relevant notwithstanding the 27 Court’s entry of summary judgment on the issue of obviousness. (See, e.g., Doc. No. 266- 28 1 Bakewell Expert Report ¶¶ 316-19 (citing Greenberg Expert Report).) 1 In addition, the Court notes that there is nothing improper with Snap’s damages 2 expert, Mr. Bakewell, relying on opinions from Snap’s technical expert, Dr. Greenberg. 3 “Experts routinely rely upon other experts hired by the party they represent for expertise 4 outside of their field. Rule 703 explicitly allows an expert to rely on information he has 5 been made aware of ‘if experts in the particular field would reasonably rely on those kinds 6 of facts or data in forming an opinion on the subject.’” Apple, 757 F.3d at 1321 (quoting 7 Fed. R. Evid. 703) (citations omitted). “Consistent with Rule 703, patent damages experts 8 often rely on technical expertise outside of their field.” Id. In sum, the Court denies 9 Vaporstream’s first motion in limine without prejudice to a contemporaneous objection at 10 trial. 11 B. Vaporstream’s Motion in Limine No. 2 – Exclusion of Negative Remarks 12 about the USPTO 13 In its second motion in limine, Vaporstream moves to preclude Snap from making 14 any negative, disparaging, or derogatory comments about the USPTO or its employees. 15 (Doc. No. 247 at 6.) In response, Snap argues that it should be permitted to provide to the 16 jury the information regarding the examination process at the PTO that is conveyed in the 17 Federal Judicial Center’s video “The Patent Process: An Overview for Jurors.” (Doc. No. 18 267 at 8-9.) 19 At the start of the trial, the Court will play to the jurors the Federal Judicial Center’s 20 video “The Patent Process: An Overview for Jurors” available at 21 https://www.youtube.com/watch?v=ax7QHQTbKQE. (Doc. No. 162 at 7.) In this video, 22 the presenter explains: 23 Sometimes in a court case, you are also asked to decide about “validity.” That is whether the patent should have been allowed at all by the 24 PTO. A party accused of infringement is entitled to challenge whether the 25 asserted patent claims are sufficiently new or non-obvious in light of the prior art, or whether other requirements of patentability have been met. In other 26 words, a defense to an infringement lawsuit is that the patent in question is 27 invalid. 28 You may wonder why it is that you would be asked to consider such 1 things when the patent has already been reviewed by a Government examiner. There are several reasons for this. First, there may be facts or arguments that 2 the examiner did not consider, such as prior art that was not located by the 3 PTO or provided by the applicant. In addition, there is, of course, the possibility that mistakes were made or important information overlooked. 4 Examiners have a lot of work to do, and no process is perfect. Also, unlike a 5 court proceeding, prosecution of a patent application takes place without input from people who might later be accused of infringement, so it is important 6 that we provide a chance for someone who is accused of infringement to 7 challenge the patent in court. 8 The Patent Process: An Overview for Jurors at 13:48-14:57. Snap represents that it will 9 do no more than provide the information that is conveyed in this video. (Doc. No. 267 at 10 8.) In light of this representation, the Court denies Vaporstream’s second motion in limine 11 without prejudice to a contemporaneous objection at trial. 12 C. Vaporstream’s Motion in Limine No. 3 – Exclusion of Prior Orders 13 In its third motion in limine, Vaporstream moves to exclude any evidence of or 14 references to motions, rulings on motions, and orders (other than the Court’s claim 15 constructions). (Doc. No. 247 at 7-8.) In response, Snap argues that it should permitted to 16 discuss at trial prior orders by the Court that are relevant to the § 101 analysis and 17 Vaporstream’s damages expert’s credibility. (Doc. No. 267 at 10-12.) 18 The Court agrees with Vaporstream that, in general, the parties should be precluded 19 from referencing the Court’s prior rulings and orders other than the Court’s claim 20 constructions due to the substantial risk of confusing and misleading the jury. See Fed. R. 21 Evid. 403; see, e.g., Hewlett-Packard Co. v. Mustek Sys., Inc., No. 99-CV-351-RHW, 2001 22 WL 36166855, at *4 (S.D. Cal. June 11, 2001); Wilson v. Hartford Ins. Co. of the Midwest, 23 No. C10-993RAJ, 2011 WL 2670199, at *4 (W.D. Wash. July 7, 2011); US Foam, Inc. v. 24 On Site Gas Sys., Inc., 735 F. Supp. 2d 535, 560 (E.D. Tex. 2010). Snap argues that it 25 should be permitted to reference certain prior orders for two reasons. (Doc. No. 267 at 10- 26 12.) The Court addresses each of these arguments in turn below. 27 First, Snap argues that it should be entitled to impeach Vaporstream’s damages 28 expert Mr. Bratic with the Court’s prior January 10, 2020 Daubert order excluding portions 1 of Mr. Bratic’s opinions. (Doc. No. 267 at 11-12.) In this case, any potential relevance of 2 the Daubert order is substantially outweighed by the risk of unfair prejudice to Vaporstream 3 and the potential for jury confusion. See Fed. Evid. 403. There is too much of a risk that 4 the jury will give the Court’s prior Daubert order undue weight given that it is an order by 5 the same Court that will preside over the trial. In addition, the Court’s prior Daubert order 6 has the capacity to be confusing to the jury since the Court granted in part and denied in 7 part the Daubert motion. Moreover, the Court notes that Snap has not identified any case 8 where a court allowed a damages expert to be impeached by a prior Daubert order that was 9 entered earlier in the same case. (See generally Doc. No. 267 at 11-12.) As such, the Court 10 excludes the January 10, 2020 Daubert order from being referenced during the trial under 11 Federal Rule of Evidence 403, absent further order of the Court. Additionally, given the 12 potential for jury confusion, the Court further excludes any prior Daubert orders from other 13 cases from being used or referenced at trial absent further order of the Court. See Fed. R. 14 Evid. 403. 15 Second, Snap argues that it should be permitted to reference the Court’s prior § 101 16 orders because the jury must be told that the asserted claims are directed to an abstract idea 17 under step one of the Alice inquiry in order for the jury to conduct a proper Alice step two 18 analysis. (Doc. 267 at 10-11.) In response, Vaporstream argues that it is not clear from 19 the record that the Court has found under Alice step one that the asserted claims are directed 20 to an abstract idea. (Doc. No. 280 at 7.) The Court agrees with Vaporstream. 21 Section 101 of the Patent Act defines patent-eligible subject matter as “any new and 22 useful process, machine, manufacture, or composition of matter, or any new and useful 23 improvement thereof.” 35 U.S.C. § 101. The Supreme Court has “‘long held that this 24 provision contains an important implicit exception[:] Laws of nature, natural phenomena, 25 and abstract ideas are not patentable.’” Ass’n for Molecular Pathology v. Myriad Genetics, 26 Inc., 133 S. Ct. 2107, 2116 (2013). 27 “The Supreme Court has devised a two-stage framework to determine whether a 28 claim falls outside the scope of section 101.” Affinity Labs of Texas, LLC v. DIRECTV, 1 LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S. at 217–18. “The 2 prescribed approach requires a court to determine (1) whether the claim is directed to a 3 patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea, 4 and if so, (2) whether the elements of the claim, considered both individually and as an 5 ordered combination, add enough to transform the nature of the claim’ into a patent-eligible 6 application.” Affinity Labs, 838 F.3d at 1257 (internal quotation marks omitted) (citing 7 Alice, 134 S. Ct. at 2355). “In the context of claims that are challenged as containing only 8 abstract ideas, those two stages are typically referred to as the ‘abstract idea’ step and the 9 ‘inventive concept’ step.” Id. 10 “The ‘abstract idea’ step of the inquiry” requires courts “to look at the ‘focus of the 11 claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is 12 directed to excluded subject matter.” Id. at 1257. The Federal Circuit has explained: “If a 13 claimed invention only performs an abstract idea on a generic computer, the invention is 14 directed to an abstract idea at step one. Software, however, ‘can make non-abstract 15 improvements to computer technology just as hardware improvements can.’” BSG Tech 16 LLC v. Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018) (citing Alice, 134 S. 17 Ct. at 2355–57 and quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.

18 Cir. 2016). Therefore, a reviewing court should consider “whether the ‘focus of the claims’ 19 is on a ‘specific asserted improvement in computer capabilities . . . , or, instead, on a 20 process that qualifies as an “abstract idea” for which computers are invoked merely as a 21 tool.’” Id. at 1286 (quoting Enfish, 822 F.3d at 1336). 22 “The ‘inventive concept’ step requires [courts] to look with more specificity at what 23 the claim elements add, in order to determine ‘whether they identify an “inventive concept” 24 in the application of the ineligible subject matter’ to which the claim is directed.” Affinity 25 Labs, 838 F.3d at 1258. “Simply appending conventional steps, specified at a high level 26 of generality, [i]s not enough to supply an inventive concept.” Alice, 573 U.S. at 222 27 (internal quotation marks omitted) (quoting Mayo Collaborative Servs. v. Prometheus 28 Labs., Inc., 566 U.S. 66, 82 (2012)); see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1 1089, 1093 (Fed. Cir. 2016) (“This inventive concept must do more than simply recite 2 ‘well-understood, routine, conventional activity.’”). The Federal Circuit has explained that 3 at the “inventive concept” step: 4 The appropriate question is not whether the entire claim as a whole was “well- understood, routine [and] conventional” to a skilled artisan (i.e., whether it 5 lacks novelty), but rather, there are two distinct questions: (1) whether each 6 of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity 7 previously engaged in by researchers in the field,” and (2) whether all of the 8 steps “as an ordered combination add[ ] nothing to the laws of nature that is not already present when the steps are considered separately[.]” In other 9 words, beyond the [abstract idea], what elements in the claim may be regarded 10 as the “inventive concept”? This analysis applies to both system and method claims. 11 Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348–49 (Fed. Cir. 2019) 12 (citations omitted); see BSG Tech, 899 F.3d at 1290–91 (In Alice, “the [Supreme] Court 13 only assessed whether the claim limitations other than the invention’s use of the ineligible 14 concept to which it was directed were well-understood, routine and conventional. [¶] Our 15 precedent has consistently employed this same approach. If a claim’s only “inventive 16 concept” is the application of an abstract idea using conventional and well-understood 17 techniques, the claim has not been transformed into a patent-eligible application of an 18 abstract idea.); see also Alice, 573 U.S. at 217 (“If so, we then ask, ‘[w]hat else is there in 19 the claims before us?’ To answer that question, we consider the elements of each claim 20 both individually and ‘as an ordered combination’ to determine whether the additional 21 elements ‘transform the nature of the claim’ into a patent-eligible application.” (quoting 22 Mayo, 566 U.S. at 78, 79)). 23 The Court acknowledges that in its January 13, 2020 order denying Snap’s motion 24 for reconsideration, the Court stated: “In the Court’s February 27, 2018 summary judgment 25 order, the Court held under step one of the Alice inquiry that the asserted claims are 26 directed to an abstract idea.” (Doc. No. 224 at 12.) But upon a further review of the record, 27 28 1 this statement is inaccurate. 2 In the prior court’s June 12, 2017 order on Snap’s motion to dismiss, the court 3 concluded its Alice step one analysis by stating: 4 Ultimately, whether the asserted claims are directed to: (1) an abstract idea of protecting the identity of a message’s recipient or sender, or (2) 5 specific solutions (separation of display and transmission and restriction of 6 access) to the various challenges of electronic messaging (privacy, manipulation, interception), presents a close call. Similar to the dilemma 7 faced by the Federal Circuit in Bascom, the asserted claims and their specific 8 limitations “do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea.” Bascom Global Internet Services, Inc. v. 9 AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016); see Elec. Power 10 Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (“we have noted there can be close questions about when the inquiry should proceed from the 11 first stage to the second.”). For these reasons, the Court defers its 12 consideration of the claim limitations’ narrowing effect for step two. 13 (Doc. No. 59 at 10-11 (footnote omitted).) 14 In the Court’s February 27, 2018 summary judgment order, the Court stated: 15 In the Court’s order denying Snap’s motion to dismiss without prejudice, the Court held that “the asserted claims and their specific 16 limitations ‘do not readily lend themselves to a step-one finding that they are 17 directed to a nonabstract idea.’” (Doc. No. 59 at 10-11 (quoting Bascom Global, 827 F.3d at 1349).) Nothing in the parties’ summary judgment 18 briefing has altered the Court’s prior conclusion as to the Alice step one 19 analysis. Accordingly, the Court turns to step two of the Alice inquiry. 20 (Doc. No. 117 at 9.) 21 In further reviewing these two orders, the Court concludes that it has not definitively 22 ruled that the asserted claims are directed to an abstract idea. Snap argues that although 23 the prior court used a double negative in its analysis of Alice step one in the motion to 24 dismiss order, a close examination of the language in that order shows that the prior court 25 did make a final determination that the claims are directed to an abstract idea. The Court 26 27

28 9 The Court inherited this case from a prior judge who is now deceased. The prior judge issued the 1 disagrees. The Court notes that the prior court expressly stated in the motion to dismiss 2 order that it was “defer[ring]” its determination to Alice step two. Further, the Court notes 3 that nowhere in the motion to dismiss order does the prior court identify precisely the 4 abstract idea. This supports the conclusion that the prior court was not making a definitive 5 determination at Alice step one, but deferred consideration pending further development 6 of the record. See BSG Tech, 899 F.3d at 1285–86 (“Software . . . ‘can make non-abstract 7 improvements to computer technology just as hardware improvements can.’”). Moreover, 8 because Snap’s argument for presenting the jury with the Court’s prior § 101 orders is 9 premised on the notion that the Court has ruled that the asserted claims are directed to an 10 abstract idea, and that premise is incorrect, the Court rejects Snap’s argument. 11 In sum, the Court grants Vaporstream’s third motion in limine. The Court precludes 12 any reference to the Court’s prior rulings and orders, other than the Court’s claim 13 constructions set forth in the Court’s claim construction order absent further order of the 14 Court. 15 Conclusion 16 For the reasons above: 17 1. The Court grants the parties’ joint motion regarding the presentation of 18 evidence at trial regarding Vaporstream products, and the Court denies Snap’s first motion 19 in limine as moot. 20 2. The Court denies Snap’s second motion in limine without prejudice to a 21 contemporaneous objection at trial. 22 3. The Court grants in part and denies in part Snap’s third motion in limine. 23 Specifically, the Court strikes the January 29, 2020 Bratic supplemental expert report and 24 excludes any of the new opinions contained in the report. In addition, the Court precludes 25 Mr. Bratic from offering any reasonable royalty rate calculation or overall reasonable 26 royalty calculation at trial. 27 4. The Court grants Snap’s fourth motion in limine. The Court precludes 28 Vaporstream from introducing any evidence or argument relating to the inter partes review 1 || petitions for the patents-in-suit, and any activity at the PTAB related to these petitions 2 || absent further order of the Court. 3 5. The Court denies Snap’s fifth motion in limine as moot. 4 6. The Court denies Vaporstream’s first motion in limine without prejudice to a 5 contemporaneous objection at trial. 6 7. The Court denies Vaporstream’s second motion in limine without prejudice 7 a contemporaneous objection at trial. 8 8. The Court grants Vaporstream’s third motion in limine. The Court precludes 9 reference to the Court’s prior rulings and orders, other than the Court’s claim 10 |/constructions set forth in the Court’s claim construction order absent further order of the 11 |} Court. 12 The Court reminds the parties that if a party contends that the Court should 13 ||reconsider one of its rulings in this order in light of the circumstances presented at trial, the 14 || party must raise the issue at an appropriate time outside the presence of the jury. 15 IT IS SO ORDERED. 16 || DATED: February 28, 2020 | | | ul | | | M7 MARILYNW. HUFF, Distri ge 18 UNITED STATES DISTRICT COURT 19 20 21 22 23 24 25 26 27 28