Order on Motions in Limine, Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999 (Judge Beth Freeman)
Litigators know that, at trial, what you're not allowed to say can sometimes be just as important as what you say. In a recent order, Judge Freeman made some calls about what's in and what's out at the upcoming trial between NPE Finjan and network security company Blue Coat Systems. In particular, there were parts of the parties' backgrounds that each side liked and didn't like. Blue Coat, in particular, wanted to present Finjan's history of enforcing and licensing patents to the jury, doubtlessly motivated to take advantage of strong feelings concerning NPEs. While Judge Freeman tended to err on the side of letting things in, she also excluded certain topics and required limiting instructions for others.
Specifically, Blue Coat wanted to introduce evidence of Finjan's patent assertion practices, arguing they were relevant to a reasonable royalty under the Georgia-Pacific factors. Judge Freeman said yes, but also held Blue Coat cannot call Finjan a "patent troll" or "patent assertion entity." Judge Freeman recognized that this was at odds with judges who had permitted the term "patent assertion entity," but she found that the term had negative connotations, unlike "more neutral and factual terms such as 'non-practicing entity.'"
Finjan is also permitted to bring up certain things that Blue Coat wanted to avoid. First, Judge Freeman ruled that Finjan may introduce evidence of three litigation settlements, overruling Blue Coat's argument that they were not comparable because they were entered under the coercive pressure of litigation. Second, Finjan can offer "general and background information" about its recently released mobile application in order to rebut Blue Coat's assertion that Finjan does not make or sell any products. Third, Finjan can introduce the outcome of a prior successful litigation involving two of six patents-in-suit, but only for damages purposes and not to show secondary indicia of nonobviousness.
Among the things that are out entirely, Judge Freeman excluded evidence of total payments to Finjan's consultants. These payments were significant, and Blue Coat likely wished to present them as evidence of bias. Although "[t]he question is a close one," she found that the consultants' relationship with Finjan appeared to be "continuous, ongoing, and not limited to litigation purposes," making disclosure of the total payments unfairly prejudicial given that those payments related to activities beyond the Finjan-Blue Coat case.
As for Blue Coat's background, Judge Freeman excluded evidence of Blue Coat's financial situation and size generally, but permitted evidence of acquisition costs and total revenues relating to the accused technology. Judge Freeman also permitted Finjan to introduce evidence that Blue Coat allegedly copied the patented technology but only for the limited purpose of rebutting obviousness (since copying listed among secondary considerations of non-obviousness). Recognizing that Finjan's burden to show copying is "significant" and that there is "significant prejudice" associated with the copying evidence that may improperly influence the jury's decision on infringement, Judge Freeman also ordered Finjan to propose an appropriate limiting instruction.
Judge Freeman's order also permitted testimony about non-infringing alternatives and design arounds, excluded certain invalidity evidence and arguments, and permitted only certain witnesses to opine that Finjan practiced the patents-in-suit.
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