Innovention Toys, LLC v. MGA Entertainment, Inc. et al, No. 2:2007cv06510 - Document 539 (E.D. La. 2012)
Court Description: ORDER AND REASONS denying 471 Motion in Limine No. 2 with respect to Phillips' testimony on the meaning of terms set out in footnote 5. With respect to Plaintiff's broader request precluding any evidence, claim or argument regarding any claim construction not previously provided by Judge Feldman, the Court will address such issues, if they arise, at trial. Signed by Judge Susie Morgan. (cbn)
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Innovention Toys, LLC v. MGA Entertainment, Inc. et al Doc. 539 U N ITED STATES D ISTRICT COU RT EASTERN D ISTRICT OF LOU ISIAN A IN N OVEN TION TOYS, LLC, Plain tiff CIVIL ACTION VERSU S N o . 0 7-6 510 MGA EN TERTAIN MEN T, IN C., W AL-MART STORES, IN C. TOYS “R” U S, IN C. D e fe n d an ts SECTION “E” ORD ER AN D REASON S Before the Court is Plaintiff’s Motion in Lim ine No. 2 to Preclude any Evidence, Claim or Argum ent Regarding any Claim Construction Not Previously Provided by J udge Feldm an.1 Defendants have filed a response.2 Plaintiff argues that the parties were to subm it their proposed claim construction and identify disputed term s no later than March 11, 20 0 9. Thereafter, J udge Feldman held a Markm an hearing, see Markm an v. W estview Instrum ents, Inc., 517 U.S. 370 , 116 S.Ct. 1384 (1996), on May 13, 20 0 9, and issued an order construing the disputed term s on May 21, 20 0 9.3 Plaintiff claims that Defendants’ expert witness Sam uel Phillips (“Phillips”) “openly adm itted [at his deposition] that he form ulated new constructions for term s that Defendants did not previously subm it for construction as required by the Court’s scheduling orders.”4 Plaintiff contends that “Defendants long 1 R. Doc. 471. J udge Martin L.C. Feldm an originally presided over this case before it was transferred to this section of the U.S. District Court for the Eastern District of Louisiana. 2 R. Doc. 495. Defendants in this m atter are MGA Entertainm ent, Inc. (“MGA”), Wal-Mart Stores, Inc. (“Wal-Mart”), and Toys “R” Us, Inc. (“Toys ‘R’ Us”). 3 See R. Doc. 110 . 4 R. Doc. 471-1 at p. 2. 1 Dockets.Justia.com ago had their opportunity to subm it term s for construction pursuant to the Court’s orders in this case,” and consequently, argues that Defendants should be precluded from offering any evidence, claim or argum ent relating to any claim construction that J udge Feldm an did not undertake.5 Defendants respond that Plaintiff’s instant m otion is, in essence, an untim ely Daubert m otion seeking to preclude Defendants’ expert from testifying at trial regarding the issue of obviousness. The Court has already considered the parties’ Daubert m otions on the adm issibility of expert testim ony. The Court concluded that Phillips m ay testify at trial with respect to the first three Graham factors. See Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684 (1966).6 Defendants underscore that Graham factor 2 tasks the jury with determ ining the differences between the prior art and the claim ed invention, which requires the jury to hear expert testim ony that com pares the 5 In his Markm an Order, J udge Feldm an construed the term s “cavity for holding electronic com ponents,” “control button,” “gam e board,” “gam e piece,” “m ounted [to],” movable,” “receptacles,” and “space (or spaces).” See R. Doc. 110 at p. 1. Plaintiff specifically highlights this portion of Phillips’ deposition as problem atic in its m otion: Q. Are you saying that the words of the claim lim itation aren’t im portant, it’s really if we understand what was – the inventor was driving at? A. I’m – I’m saying that the – since this is not a construed term , so I can construe it as I think appropriate, and I think that it means that it be on. Q. Okay. So – just so I understand your testim ony. Your testimony is that you are constructing this lim itation in claim 39 to – wherein it says “alternating turns.” Each turn com prising m oving either a translation or a rotation a piece followed by activation of a laser is satisfied as long as the laser is on. Is that correct? A. Yes. Q. And that’s based on your claim construction? A. Yes. R. Doc. 471-1 at p. 2 6 R. Doc. 468. 2 prior art to the elements of the asserted patent claims. Defendants contend that the Court should not reconsider its decision to perm it Phillips to testify as a result of a newly-raised argum ent that Plaintiff should have presented in its Daubert m otion. Furtherm ore, Defendants subm it that Phillips has adopted and applied the Court’s claim constructions, and that any suggestion Phillips and/ or Defendants intend to argue claim constructions that contradict the Court’s previous order is m isplaced. Defendants assert that, with respect to any term that the Court did not explicitly construe, Phillips has utilized the ordinary English m eaning of the term , as the law perm its him to do. The Federal Circuit has “frequently stated” that the “words of a claim ‘are generally given their ordinary and custom ary m eaning.’ ” Phillips v. AW H Corp., 415 F.3d 130 3, 1312 (Fed. Cir. 20 0 5) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The Federal Circuit has further recognized that “district courts are not (and should not be) required to construe every lim itation present in a patent’s asserted claim s.” O2 Micro Int’l Ltd. v. Bey ond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 20 0 8). Rather, claim construction is “a m atter of resolution of disputed m eanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claim s, for use in the determ ination of infringem ent.” 0 2 Micro, 521 F.3d at 1362 (internal quotation om itted). The parties did not subm it the term s at issue in the excerpted portion of Phillips’ deposition testim ony set out in footnote 5, supra, to the Court for claim construction, likely because the parties believed that the “ordinary and custom ary m eaning” of these term s is apparent. Thus, the Court rejects Plaintiff’s argum ent that Phillips should not be perm itted to opine on the m eaning of term s set out in footnote 5. Phillips has given 3 the words their ordinary and custom ary m eaning. Claim construction by the Court with respect to these term s was not requested or given, nor was it necessary. Accordingly, IT IS ORD ERED that Plaintiff’s m otion in lim ine no. 2 be and hereby is D EN IED with respect to Phillips’ testim ony on the m eaning of term s set out in footnote 5. With respect to Plaintiff’s broader request precluding any evidence, claim or argum ent regarding any claim construction not previously provided by J udge Feldm an, the Court will address such issues, if they arise, at trial. N e w Orle an s , Lo u is ian a, th is _ 2nd_ d ay o f N o ve m be r, 2 0 12 . __ _____________________________ SU SIE MORGAN U N ITED STATES D ISTRICT JU D GE 4
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