United States District Court, N.D. Illinois, Eastern Division
November 19, 2004.
Pinpoint Inc., Plaintiff,
Amazon.com, Inc. et al., Defendants.
The opinion of the court was delivered by: RICHARD A. POSNER, Circuit Judge
MEMORANDUM OPINION & ORDER
Pinpoint Incorporated ("Pinpoint") sues Amazon.com, Inc.,
Babiesrus.com, LLC, Borders Group, Inc., Borders, Inc., BeMusic,
Inc. (incorrectly identified as CDnow, Inc.), Egghead.com, Inc.,
Target Corporation, Toys "R" Us, Inc., Toysrus.com, Inc., Virgin
Group Ltd. and Walden Book Company, Inc. (incorrectly identified
as Walden Books, Inc.) (collectively, "Amazon") for patent
infringement pursuant to 35 U.S.C. § 271 et seq.*fn1
Pinpoint charges Amazon with infringement of two Pinpoint
patents. Specifically, Pinpoint claims Amazon's website contains
technology providing personalized book and music video
suggestions for customers that infringe U.S. Patent Nos.
5,758,257 ("the '257 patent"), 6,088,722 ("the '722 patent"), and
5,754,939 ("the '939 patent"). Amazon denies infringing the
patents and argues the patents' claims are invalid and
unenforceable. On August 31, 2004, this court granted Amazon
summary judgment motion on the issue of invalidity of claims 1-7 of the
'939 patent. Amazon's summary judgment motion was denied as to
non-infringement and invalidity of the '257 and '722 patents.
Both parties move in limine to bar evidence at trial.
I. Standard of Review
Evidence is excluded on a motion in limine only if the
evidence is clearly inadmissible for any purpose. See Hawthorne
Partners v. AT&T Technologies, 831 F. Supp. 1398, 1400 (N.D.
Ill. 1993). Motions in limine are disfavored; admissibility
questions should be ruled upon as they arise at trial. Id.
Accordingly, if evidence is not clearly inadmissible, evidentiary
rulings must be deferred until trial to allow questions of
foundation, relevancy and prejudice to be resolved in context.
Id. at 1401. Denial of a motion in limine does not indicate
evidence contemplated by the motion will be admitted at trial.
Instead, denial of the motion means the court cannot or should
not determine whether the evidence in question should be excluded
before trial. United States v. Connelly, 874 F.2d 412, 416 (7th
II. Inequitable Conduct Attorney-Witnesses
Pinpoint moves to exclude the expert reports and testimony of
Mark Nusbaum, an attorney-witness Amazon offers to support its
inequitable conduct defense. In turn, Amazon moves to exclude the
expert reports and testimony of William Ellis, an
attorney-witness Pinpoint offers to oppose Amazon's inequitable
conduct defense. The parties' arguments to exclude the attorney witnesses
substantially overlap. Accordingly, the court addresses the
A. Pinpoint's Motion
Pinpoint seeks to exclude Mark Nusbaum's opinions about Patent
and Trademark Office ("PTO") procedures and inequitable conduct
legal standards. Pinpoint seeks to exclude Nusbaum's opinions to
the extent they: (1) explain general PTO practices; (2) summarize
prosecution histories; (3) explain duty of disclosure and
materiality standards; and (4) opine on the materiality of
undisclosed prior art. Pinpoint contends Nusbaum's opinions
regarding PTO procedures inappropriately criticize the PTO and
summarize a variety of patent law issues. Pinpoint cites an
opinion excluding Nusbaum's testimony that insinuated the PTO
does not do its job properly. See Applied Materials, Inc. v.
Advanced Semiconductor Materials Am., Inc., No. 92-20643 RMW,
1995 WL 261407, at *3 (N.D. Cal. Apr. 25, 1995). Pinpoint
contends Nusbaum's explanation of patent law is unnecessary
because the court does not need his explanations of the legal
requirements of an applicant's duty to disclose or the
materiality of undisclosed prior art; Nusbaum admitted he lacks
technical qualifications or skill in the art. Pinpoint asserts
his testimony would be cumulative of Amazon's technical expert
about the same prior art references. Finally, Pinpoint argues
summaries of prosecution histories are unnecessary because the
histories are self-explanatory and will be trial exhibits.
Amazon responds that expert testimony on PTO operations can be
helpful, citing Chamberlain Group, Inc. v. Interlogix, No. 01 C
6157, 2002 U.S. Dist. LEXIS 6998, at *3-4 (N.D. Ill. Apr. 18, 2002). Amazon contends Nusbaum
does not criticize the PTO. Rather, he notes the time constraints
patent examiners face to demonstrate why the PTO must rely on the
duty of disclosure and candor. Further, Amazon contends Nusbaum,
a former PTO examiner, member of the Board of Patent Appeals and
Interferences, patent attorney, and author of PTO Computer
Programming Guidelines, is qualified to provide expert opinion
testimony regarding undisclosed prior art. Amazon asserts Nusbaum
will explain the PTO's incorporation of law into the procedures
and practices used to examine patents, but will not testify about
regulations and case law. In addition, Amazon argues Nusbaum's
testimony summarizing the patent histories is not merely a
"factual narrative," as Pinpoint alleges. Rather, Amazon contends
his testimony focuses the trier of fact's attention on the
relevant issues buried in the histories, which may be helpful to
understanding the issues in this patent infringement action.
Chamberlain Group, 2002 U.S. Dist. LEXIS 6998, at *3-4.
Finally, Amazon notes courts only discourage the use of patent
lawyers as experts when they seek to provide opinions on the
interpretation of a claim as a matter of law. Id.
B. Amazon's Motion
Amazon seeks to exclude William Ellis' testimony that: (1)
opines on conclusions of law; (2) asserts material from one
patent examination is considered in another patent's proceedings;
and (3) opines on earlier conception or reduction to practice.
Amazon argues Ellis is unskilled in the relevant art and
therefore unqualified to give expert testimony about prior art.
Further, Amazon asserts Ellis' testimony is cumulative of Pinpoint's technical expert, and that his testimony
regarding the PTO recites regulations and case law unhelpful to
the court. Amazon argues the court does not need a patent
lawyer's advice about patent law. In addition, Amazon contends
Ellis impermissibly offers legal opinions regarding the
obligation of good faith and candor to the PTO, the definition of
a person of ordinary skill in the art, and the elements and
burdens of Amazon's inequitable conduct defense. Finally, Amazon
argues Ellis should not be permitted to opine that prior art
cited in a continuation-in-part application has been considered
by the reviewing examiner, or regarding conception or diligence
in the absence of requisite third-party testimony.
Pinpoint correctly notes Amazon offers many of the same
arguments, and cites some of the same case law found in
Pinpoint's memorandum to exclude Nusbaum. Because many of the
arguments overlap, Pinpoint contends the parties appear to agree
on four issues: (1) testimony on the legal standards governing
inequitable conduct is improper legal opinion that does not
assist the trier of fact; (2) to the extent expert testimony
regarding prior art is cumulative to technical expert testimony
regarding the same prior art, prior art opinions should be
excluded; (3) to the extent an expert is not skilled in the
relevant art, his opinion testimony is unreliable; and (4) Ellis
will not testify regarding conception or diligence in reduction
to practice. However, Pinpoint argues Ellis should be permitted
to testify, especially to rebut Nusbaum about PTO practice and
procedure regarding the examination of familial applications and
the consideration of prior art during familial prosecutions.
Pinpoint also disputes Amazon's contention Nusbaum may explain PTO procedures. Pinpoint
asserts his testimony unnecessarily attempts to teach PTO
procedures to the court.
The motions in limine are granted in part and denied in part.
Neither attorney's testimony is clearly inadmissible for all
purposes. A patent lawyer may testify in a patent suit. Endress
Hauser, Inc., v. Hawk Measurement Sys. Pty, Ltd.,
122 F.3d 1040, 1042 (Fed. Cir. 1997). The challenged testimony regarding
the materiality of undisclosed prior art is not inadmissible. An
attorney's lack of technical expertise goes to the weight of his
testimony, not its admissibility. The court has discretion to
adopt legal opinions as its own, find guidance from them, or
disregard them completely. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 983 (Fed. Cir. 1995). However, attorney
testimony regarding inequitable conduct legal standards is
unhelpful and neither witness may offer opinions on this subject.
Fed.R. Evid. 702. To the extent either witness' testimony
duplicates that of the same party's technical expert, the
testimony is excluded. Fed.R. Evid. 403. Amazon's motion to
prevent Ellis from testifying regarding conception and diligence
is moot in light of Pinpoint's representation it will not offer
Ellis' testimony on these subjects. The attorneys may testify
regarding PTO procedures, including PTO's reliance on the duty of
disclosure and practices in familial prosecutions. Chamberlain
Group, Inc., 2002 U.S. Dist. LEXIS 6998 at *3-4. Summaries of
the prosecution histories are not clearly inadmissible and the
court must reserve ruling on their admissibility until the
context of trial. Neither party submits inequitable conduct jury instructions.
Pinpoint contends the parties agree the court should determine
the inequitable conduct issue and suggests the court hear that
issue outside the jury's presence. Inequitable conduct is an
issue for the court, not the jury, to decide. Paragon Podiatry
Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190 (Fed. Cir.
1993). "A patent case is complex and confusing enough for a jury
without infusing evidence which has no relevance to the issues to
be decided by that jury." THK Am., Inc. v. NSK, Ltd., No. 90 C
6049, 1996 U.S. Dist. LEXIS 226, *4 (N.D. Ill. Jan. 9, 1996).
Because evidence of inequitable conduct is effectively evidence
of fraud, there is a danger the evidence may "spill over" to
Pinpoint's prejudice on issues that are before the jury. Id.
at *4-5. Nusbaum and Ellis will testify outside the jury's
presence. Counsel shall not refer to either attorney's testimony
in the jury's presence.
III. Amazon's Motions
A. Motion to Exclude Undisclosed Prior Art
Amazon contends Pinpoint engaged in inequitable conduct by
failing to disclose prior art to the PTO during the '257 and '722
patents' prosecutions. Amazon explains the '257 patent is a
parent patent; the '722 and '939 patents are continuation-in-part
patents of the '257 patent. Amazon seeks to preclude Pinpoint
from defending the inequitable conduct charges by arguing it did
not possess the requisite level of intent to deceive the PTO
because: (1) the prior art was disclosed in the '939 patent
prosecution; and (2) one of the patent examiners on the '939
patent was an examiner in the '257 and '722 patents. According to Amazon, the '939
patent prosecution history reflects the examiners of the patent
were not identified when the inventors disclosed the prior art to
the PTO. Therefore, Amazon contends, the inventors did not know
they were submitting the prior art to the same examiners. Amazon
argues Pinpoint's reference to the '939 patent prosecution to
defend against a charge of inequitable conduct on the '257 and
'722 patents is irrelevant, overly prejudicial and insufficient
as a matter of law.
Pinpoint responds inequitable conduct is an issue for the court
and all concerns regarding prejudice are easily cured by trying
the inequitable conduct case outside the jury's presence.
Pinpoint further argues the fact the challenged prior art was
disclosed during the '939 prosecution to the same examiners who
considered the '257 and '722 patents is critically relevant to
whether the inventors had the requisite intent to deceive.
According to Pinpoint, the evidence does not show the inventors
were unaware of the identity of the examiners in the '939 patent.
Pinpoint contends an inventor's disclosure of a prior art
reference in a later prosecution tends to disprove an intent to
deceive the PTO with respect to that reference in an earlier
prosecution. Akron Polymer Container Corp. v. Exxel Container,
Inc., 148 F.3d 1380 (Fed. Cir. 1998); Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 106 F. Supp. 2d 667,
679-80 (D.N.J. 2000). Pinpoint asserts the inventors did in fact
know the '939 patent examiners would review the '257 patent, and,
in any event, the '939 disclosures occurred before the PTO
allowed the '257 and '722 patents. Irrelevant evidence is inadmissible. Fed.R. Evid. 402.
Relevant evidence is defined as "evidence having any tendency to
make the existence of any fact that is of consequence to the
determination of the action more probable or less probable than
it would be without the evidence." Fed.R. Evid. 401. Although
relevant, evidence may be excluded if its probative value is
substantially outweighed by the danger of unfair prejudice, waste
of time, and jury confusion. Fed.R. Evid. 403. Pinpoint's
disclosure of prior art during prosecution of the '939 patent is
not inadmissible for all purposes. The inventors' disclosure of
prior art is relevant to their intent to deceive. The fact
disclosure occurred during prosecution of the child patent, as
opposed to the parent, or possibly before the inventors knew who
the examiners were, goes to the weight of the evidence as opposed
to admissibility. When examining intent to deceive, the court
must consider all the evidence, including evidence of good faith.
Gabro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1580
(Fed. Cir. 1997). Because the inequitable conduct claims will be
tried to the court, concerns of prejudice to the jury are
unwarranted. The motion in limine must be denied. Counsel shall
not refer to this prior art disclosure issue in the jury's
B. Motion to Exclude Testimony of Dr. Michael Pazzani
Amazon moves to bar Pinpoint expert Dr. Michael Pazzani's
testimony that: (1) opines on infringement without providing an
element-by-element analysis demonstrating how Amazon's website
performs each required claim step of each claimed method in
making a recommendation to a customer on its website; and (2)
offers opinions that differ, expand upon, or controvert this
court's August 31, 2004 claim construction. Amazon contends Pazzani's two expert reports
discuss Amazon's infringement of the '257 and '722 patents
without identifying the specific algorithms or features of the
website that include each and every element of the patents'
claims. Amazon argues Pazzani's reports accuse Amazon of
practicing individual elements of asserted claims. However,
Amazon contends Pazzani fails to identify how a single feature or
method for making a recommendation includes all elements of the
asserted claims, nor does he identify how a set of features or
algorithms on the website comprise a method that includes every
element of the asserted claims. Amazon argues conclusory opinions
should be excluded pursuant to Fed.R. Evid. 401-403, because "if
any claim limitation is absent from the accused device, there is
no literal infringement as a matter of law." Bayer AG v. Elan
Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000).
Finally, Amazon is concerned Pinpoint will seek to distinguish
prior art by having Pazzani elaborate on this court's claim
Pinpoint responds that Amazon is attempting to try the merits
of its non-infringement defense through the exclusion of
Pazzani's testimony. According to Pinpoint, Pazzani engaged in an
exhaustive examination of numerous features of Amazon's website
and concluded Amazon practiced the methods of Pinpoint's claims
on an element-by-element basis. Contrary to Amazon's assertion
that Pinpoint must show a particular feature infringes Pinpoint's
patent claims, Pinpoint explains Amazon infringes Pinpoint's
claims through a combination of features, recommendation
algorithms, and supporting customer and content profiles.
Pinpoint contends Amazon's motion takes portions of Pazzani's
reports out of context and ignores Pazzani's detailed analyses of Amazon's data structures, algorithms and customer
profiles. Pinpoint argues Pazzani's opinions reflect extensive
analysis of Amazon's website to support his infringement opinion
as to each element of each asserted claim. Pinpoint will not ask
Pazzani to give claim construction testimony and his opinions are
consistent with the court's claim construction.
Pazzani's testimony is not inadmissible for all purposes.
Pinpoint's attacks on Pazzani's conclusions and supporting
reasons are appropriate questions for cross-examination. Daubert
v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 596 (1993).
Determination of the admissibility of Pazzani's testimony must
await trial to allow objections to be resolved in context. The
motion to preclude Pazzani from giving claim construction
testimony is moot in light of Pinpoint's representation it will
not proffer testimony on that subject. The motion in limine
must be denied.
C. Motion to Exclude Testimony of Julie Davis
Amazon seeks to exclude Julie Davis' testimony and expert
reports. Pinpoint offers Davis' testimony to establish its
damages and a reasonable royalty under 35 U.S.C. § 284. Amazon
contends Davis' opinion lacks sound economic and factual
predicates: her opinion that Pinpoint's potential damages range
between 0.4-1.3% of Amazon's net U.S. sales is speculative.
Amazon contends Davis multiplied three components to determine
profits attributable to the accused infringing features: (1)
sales related to personalization; (2) the percentage of
personalization features alleged to infringe; and (3) Amazon's
contribution margin. According to Amazon, Davis bases each
multiplier upon inadequate and unreliable data and departs from
the intellectual rigor she would normally employ outside her role as a paid
litigation consultant. Finally, Amazon argues Davis ignores
governing law in selecting the royalty base for her calculation.
Pinpoint responds that Amazon attempts to substitute a motion
in limine for cross-examination. Pinpoint argues Davis'
opinions satisfy each component of Fed.R. Evid. 702. Pinpoint
asserts the opinions are based on sufficient facts and data
because Davis relied on Amazon's internal documents, sworn
statements by Amazon employees, and Pinpoint's technical expert
to estimate the percentage of personalized sales that resulted
from Amazon's infringement. In addition, Pinpoint argues Davis'
opinions are the product of reliable principles, as she analyzed
the fifteen factors identified in Georgia-Pacific Corp. v.
United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970),
modified and aff'd, 446 F.2d 295 (2d Cir. 1971), to determine a
reasonably royalty based on a hypothetical negotiation between
Amazon and Pinpoint. Finally, Pinpoint argues Davis applied her
methods reliably to the facts. Pinpoint notes Amazon does not
challenge Davis' credentials or her expertise in analyzing
hypothetical license agreements and suggests Amazon's arguments
are more appropriately raised during cross-examination.
Fed.R. Evid. 702 provides the standard for admitting expert
scientific testimony. Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579 (1993). Trial courts are obligated to exlcude
unreliable expert testimony. This obligation does not include a
determination whether an expert opinion is correct; rather the
court's obligation is to examine the reliability of the expert's
methodology. Id. at 593-96; Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd., 326 F.3d 1333,
1340-44 (11th Cir. 2003), citing Kumho Tire Co., Ltd., v.
Carmichael, 526 U.S. 137, 153-54 (1999). Davis' methodology,
hypothetical negotiation, is not at issue. Hypothetical
negotiation is a reliable methodology for determining adequate
compensation for infringement. Micro Chemical, Inc. v. Lextron,
Inc., 317 F.3d 1387, 1393 (Fed. Cir. 2003); Maxwell v. J.
Baker, Inc., 86 F.3d 1098, 1108-10 (Fed. Cir. 1996). Amazon
concedes that Davis' method, a hypothetical negotiation between
Pinpoint and Amazon, is appropriate. Instead, Amazon challenges
Davis' facts and her application of the methodology. The
application of reliable methodology goes to the evidence's
probative value, not admissibility. Quiet at 1343-46.
Challenges addressing flaws in the expert's application of
reliable methodology are appropriate for cross-examination.
Daubert, 509 U.S. at 596 ("vigorous cross-examination,
presentation of contrary evidence, and careful instruction on the
burden of proof are the traditional and appropriate means of
challenging shaky but admissible evidence"); see also Quiet,
326 F.3d at 1344-45. Determination of the admissibility of Davis'
testimony must await trial to allow resolution of objections in
context. The motion in limine must be denied.
D. Motion to Exclude Evidence on Conception and Diligence
Amazon contends it repeatedly requested information from
Pinpoint regarding the independent facts and testimony on which
Pinpoint intends to rely regarding: (1) the date the patent
claims in issue were invented; and (2) diligence in reducing the
conception to practice. Amazon asserts it received no
satisfactory response and, because the law requires independent corroboration of the dates
and circumstances inventors advance for their inventions,
Pinpoint must be precluded from introducing the inventors'
uncorroborated documents and testimony. According to Amazon,
inventor testimony and documents purporting to be from the
inventors may not prove conception without corroboration. In
addition, Amazon asserts Pinpoint will attempt to circumvent its
inability to establish the required corroboration by having
Pazzani testify about conception of the asserted claims. Amazon
argues his testimony is inappropriate because corroboration of
conception must be contemporaneous; Pazzani possesses only
Pinpoint responds an invention's earlier conception may be
proven either: (1) through the testimony of an inventor, provided
the party introduces evidence to corroborate the oral testimony
of conception, Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577
(Fed. Cir. 1996) or (2) directly through documentary evidence if
the documents are sufficient to enable those skilled in the art
to understand the invention concept, Price v. Symsek,
988 F.2d 1187, 1195-96 (Fed. Cir. 1996). Pinpoint argues Amazon's motion
ignores the second legal method for proving an invention's
conception date and misstates the law regarding the first.
According to Pinpoint, the first method of proof, independent
corroboration of an inventor's testimony, applies to conception
and to proof of actual reduction to practice. Pinpoint asserts it
will show constructive reduction to practice and, because
Pinpoint does not intent to introduce evidence of actual
reduction to practice, the independent corroboration concept to
diligence does not apply. As to conception, Pinpoint intends to
prove conception using the second method, ignored by Amazon's motion, to offer inventor documents
Pinpoint produced to Amazon Pinpoint argues there is no per se
requirement that an inventor's documents need independent
corroboration. There is no single formula to be followed and an
inventor's oral testimony may be corroborated using a variety of
evidence, including the contemporaneous documents created during
the inventive process. See e.g., Kridl v. McCormick,
105 F.3d 1146, 1149-50 (Fed. Cir. 1997). Finally, Pinpoint contends
Pazzani will not offer testimony to corroborate Pinpoint'
documents. Rather, he will testify the inventors' concept
documents were sufficiently plain to enable those skilled in the
art to understand the invention.
The crux of the parties' dispute is whether exhibits created by
the inventors require independent corroboration. In other words,
when the inventor uses his own contemporaneous documents to
corroborate his testimony, do the documents themselves need
independent corroboration? A party seeking to establish
conception through testimony of the inventor must provide
corroboration. Mahurkar, 79 F.3d at 1577. "This requirement
arose out of a concern that inventors testifying in patent
infringement cases would be tempted to remember facts favorable
to their case by the lure of protecting their patent or defeating
another's patent." Id. However, there is no particular formula
an inventor must follow to provide corroboration of his
testimony. Kridl v. McCormick, 105 F.3d 1146, 1150 (Fed. Cir.
1997). Rather, a rule of reasons analysis is applied to assess
whether an inventor's testimony is sufficiently corroborated.
Mahurkar, 79 F.3d at 1577. Under the rule of reason analysis,
"an evaluation of all pertinent evidence must be made so that a sound
determination of the credibility of the inventor's story may be
reached." Id. Corroboration is not needed when a party seeks to
prove conception through the use of physical exhibits; the trier
of fact determines what the exhibits show when aided by testimony
as to what the exhibit would mean to one skilled in the art.
Id.; see also Price, 988 F.2d at 1195-96. Only the inventor's
testimony needs corroboration; contents of independent exhibits
do not. Price, 988 F.2d at 1195-96. Nevertheless, an inventor's
unwitnessed documentation, without more, may not be sufficient
corroboration. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed.
Cir. 20002); see also Chen and Farina v. Bouchard et al.,
347 F.3d 1299, 1310 (Fed. Cir. 2003); Huang v. Cal. Inst. of Tech.,
No. 03-1140, 2004 U.S. Dist. LEXIS 3731, *15-16 (N.D. Cal. 2004).
Independent evidence must corroborate the inventors' testimony of
conception or reduction to practice. Brown, 276 F.3d 1335.
Amazon's motion is premature. The court must wait for trial to
evaluate Pinpoint' evidence and to assess whether corroboration
of an inventor's testimony or documents is required. Pinpoint
asserts it will offer inventor documents to prove conception. The
inventors' testimony and documents are not clearly inadmissible.
To the extent Amazon contends Pinpoint cannot offer the evidence
because Pinpoint provide insufficient discovery responses, Amazon
did not comply with Local Rule 37.2. or move to compel
supplemental discovery responses. Evidence shall not be barred
based only on alleged discovery deficiencies Amazon failed to
address within a reasonable time after it was aware of them.
However, independent evidence must corroborate the inventors' testimony of conception or reduction
to practice. Id. Whether the probative value of this evidence
is outweighed by the danger of unfair prejudice and jury
confusion of the issues shall be determined outside the jury's
presence at trial in accordance with Fed.R. Evid. 404(b).
Counsel shall not refer to this evidence in opening statements or
in questioning witnesses until the issue is resolved. The motion
in limine is therefore granted in part.
Pipoint's motion in limine to exclude Mark Nusbaum's opinion
testimony and Amazon's motion in limine to exclude William
Ellis' opinion testimony are granted in part and denied in part.
Nusbaum and Ellis may not testify to bare legal standards and, to
the extent either witness' testimony duplicates that of the
parties' technical experts, their testimony is excluded. Nusbaum
and Ellis will testify outside the jury's presence. Counsel shall
not refer to their testimony in the jury's presence. In addition,
counsel shall not refer to prior art disclosure during the '939
patent prosecution, or Pinpoint's evidence to support conception
or diligence in the jury's presence. The remaining motions in
limine are denied.