IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA
December 17, 2012
CARNEGIE MELLON UNIVERSITY,
MARVELL TECHNOLOGY GROUP, LTD. ET AL., DEFENDANTS.
The opinion of the court was delivered by: Judge Nora Barry Fischer
Jury selection in this patent infringement action commenced on November 26, 2012. Presently before the Court is Marvell's "Motion for Reconsideration re: Court's Order Sustaining CMU's Objections to Disputed Defendant's Exhibit DX-189 (Docket No. 153)". (Docket No. 660). CMU opposes this motion and filed a "Preliminary Response in Opposition". (Docket Nos. 664). The Court heard argument on the topic again and again during trial conferences November 26-30, 2012. (Docket Nos. 666, 669, 671, 673, 674). The Court writes now to explain its reasoning in granting reconsideration and admitting DX-189. For the following reasons, Marvell's motion  was GRANTED on the record during the proceedings on November 30, 2012. (Docket No. 674 at 36-37).
Throughout this case, CMU alleges that Marvell has infringed two of its patents, U.S. Patent Nos. 6,201,839 (the "'839 Patent") and 6,438,180 (the "'180 Patent") (collectively, the "CMU Patents").*fn1 The patents-in-suit are generally directed to sequence detection in high density magnetic recording devices, and more specifically, to high density magnetic recording sequence detectors. See '839 Patent 1:20-23. Both patents claim priority to a May 9, 1997 provisional application. See '839 Patent; '180 Patent. The '180 Patent is a continuation-in-part of the '839 Patent. See '180 Patent. The named inventors of the patents are Dr. Aleksandar Kavcic and Dr. Jose Moura. See '839 Patent; '180 Patent.
Marvell's motion for reconsideration addresses the Court's decision to sustain CMU's objection to Defendants' exhibit DX-189, a 2001 email exchange between Dr. Kavcic and Mr. Gregory Silvus of Seagate.*fn2 (Docket Nos. 653, 660). The Court held a two day pretrial conference to address all of the disputed exhibits in this case during which it heard argument in regards to this exhibit DX-189. (Docket Nos. 636, 638, 645, 648). Since then the Court has heard additional argument on DX-189 during the trial. (Docket Nos. 666, 669, 671, 673, 674).
Additionally, this email has been addressed on two previous occasions. First, the email was advanced during the Court's claim construction hearing as Marvell Exhibit A. (Docket No. 175 at 39) After briefing and argument, the Court gave "no weight to this email" in its opinion as it was extrinsic evidence unknown to a person having ordinary skill in the art and contradictory to the intrinsic evidence. (Docket No. 175 at 39); (Docket Nos. 78-84, 89-91, 93-95, 104-106, 128-130, 135). Next, DX-189 was addressed in CMU's Motion in Limine No. 2 to Preclude Irrelevant or Highly Prejudicial Evidence or Argument, at which time, after extensive briefing and argument on the issue, the Court denied CMU's motion. (Docket Nos. 496, 497, 568, 579, 590, 591, 614). At the time, based on the CMU's proffer concerning Dr. Kavcic's anticipated trial testimony (Docket No. 538), the Court found "this email relevant given that the Plaintiff, CMU, intends to call Dr. Kavcic as a witness to testify regarding his invention and his opinions on same". (Docket No. 614 at 3). At the exhibit hearing, however, CMU proffered that Dr. Kavcic would not testify about the facts of the email. (Docket No. 664). Accordingly, Marvell moved for reconsideration of the Court's decision to sustain CMU's objection to this exhibit in its exhibit rulings. (Docket No. 660).
Their counsel argue the email is relevant to the claim of willfulness
and the "copying" story argued by CMU.*fn3 (Id.) CMU,
in turn, responds that this exhibit is prejudicial and irrelevant to the issues of infringement, willfulness, and copying.*fn4
(Docket No. 664). Accordingly the Court is required to employ
the balancing test under Rule 403, which states that the "Court may
exclude relevant evidence if its probative value is substantially
outweighed by a danger of one or more of the following: unfair
prejudice, confusing the issues, misleading the jury, undue delay,
wasting time, or needlessly presenting cumulative evidence."
EVID. 403. Toledo Mack
Sales & Service, Inc. v. Mack Trucks, Inc., 386 F.App'x. 214, 218 (3d
Cir.2010) ("A district court is accorded wide discretion in
determining the admissibility of evidence under the Federal Rules.").
Balancing these competing concerns, the Court concludes that the
challenged evidence is not substantially outweighed by the factors
under Rule 403, especially given its probative value and the ability
of both parties to question Dr. Kavcic on the exhibit.*fn5
This motion for reconsideration is timely pursuant to the Court's Practices and Procedures as "[a]ny Motions for reconsideration shall be filed within seven (7) days". See Practices and Procedures of Judge Nora Barry Fischer, Effective March 23, 2010, available at: http://www.pawd.uscourts.gov/Documents/Judge/fischer_pp.pdf.*fn6 Motions for reconsideration are granted sparingly however "[b]ecause federal courts have a strong interest in finality of judgments." Jacobs v. Bayha, Civ. A. No. 07-237, 2011 WL 1044638, at *2 (W.D.Pa. Mar. 18, 2011). "Because of the interest in finality, at least at the district court level . the parties are not free to relitigate issues the court has already decided." Williams v. City of Pittsburgh, 32 F.Supp.2d 236, 238 (W.D.Pa.1998) (citing Rottmund v. Continental Assurance Co., 813 F.Supp. 1104, 1107 (E.D.Pa.1992)). The purpose of a motion for reconsideration is "'to correct manifest errors of law or fact or to present newly discovered evidence.'" Max's Seafood Cafe v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999) (quoting Harsco Corp. v. Zlotnicki, 779 F.2d 906, 909 (3d Cir. 1985)). A Court may grant a motion for reconsideration if the moving party shows:(1) an intervening change in the controlling law; (2) the availability of new evidence which was not available when the court issued its order; or (3) the need to correct a clear error of law or fact or to prevent a manifest injustice. Max's Seafood Cafe, 176 F.3d at 677 (citing North River Ins. Co. v. Cigna Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995)).
Marvell's motion seems to rely on the third prong of the reconsideration standard, as they present no new case law or evidence in their motion. (Docket No. 660). The Court has reviewed all the briefs and argument in this case, both from the earlier claim construction and motion in limine hearings and that which is presently before the Court.*fn7 In addition, the Court has reviewed all of the cases cited by both parties.
First, as the Court has stated and the parties agree, Dr. Kavcic's views on the scope of the patents are extrinsic evidence, irrelevant to the Court's claim construction. see Vitronics Corp. v. Conceptronic, Inc. 90 F3d 1576, 1584 (Fed. Cir. 1996) ("Nor may the inventor's subjective intent as to claim scope, when unexpressed in the patent documents, have any effect. Such testimony cannot guide the court to a proper interpretation when the patent documents themselves do so clearly."); (Docket Nos. 175, 653). Indeed, Marvell currently argues that it "does not intend to rely on DX-189 for claim construction purposes" (Docket No. 660 at 1). CMU challenges this statement, in saying that Marvell will, in fact, use this exhibit to undercut the Court's claim construction and argue non-infringement. (Docket No. 664 at 3-4). Since Dr. Kavcic is not proffered as an expert witness, but only as a fact witness with personal knowledge of the patents and the inventions, he should not be opining about infringement or validity in any event.*fn8 In light of CMU's proffer as to Dr. Kavcic's testimony and Marvell's statement that it will not rely on DX-189 for claims construction, as well as pertinent authority*fn9 , the Court finds the email irrelevant, to the issues of alleged infringement.
Secondly, the Court finds that the email is not relevant to the issue of willfulness, under the subjective test. *fn10 See Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-08 (Fed. Circ. 2012); In re Seagate Technology LLC, 497 F.3d 1360, 1368-71 (Fed. Cir. 2007)(en banc). This exhibit is a private email that Marvell does not argue was known to Marvell, or anyone beyond Dr. Silvus, Dr. Kavcic, Dr. Moura, or Mr. Mendez before this litigation, so as it is irrelevant as to what Marvell believed at the time of alleged infringement.*fn11
(Id.) However, Marvell also argued during the latest oral argument that proof of Dr. Kavcic's beliefs about his patents supports their own objectively reasonable position as a litigant, that they did not copy and that they did not act willfully. (Docket No. 669 at 137).
Third, in light of Seagate and Bard, the Court must determine, "based on the record ultimately made in the infringement proceedings," whether a "reasonable litigant could realistically expect" their legal defenses to succeed. Bard, 682 F.3d at 1008. Given the lack of further guidance by the Federal Circuit or other district courts since Bard*fn12 was handed down, at this juncture, the Court is still unsure of the scope of facts it will ultimately consider when ruling on objective willfulness. Therefore, this email may aid the jury in determining the underlying facts relevant for the Court's decision on "objective willfulness". See Fed. R. of Evid. 401.
Fourth, as the Court has stated, this exhibit can be and was used to cross examine Dr. Kavcic to test his credibility, as credibility is always an issue for any witness, or if he "opens the door" to such testimony.*fn13 See Kirby v. J.C. Penney Corp., Inc., 2009 WL 3651201 (W.D. Pa. Oct. 29, 2009); United States v. Abel, 469 U.S. 45, 52, 105 S.Ct. 465, 469, 83 L.Ed.2d 450 (1984); Douglas v. Owens, 50 F.3d 1226 (3d Cir.1995). In its Motion in Limine Opinion (Docket No. 614), the Court relied on CMU's proffer that Dr. Kavcic may testify about a number of subjects, including the technology underlying the patented material, "any of the subjects discussed during his deposition" (Docket No. 538). The Court found the email relevant at that hearing given this general proffer, and "to the extent CMU presents argument regarding the invention and inventor's understanding of the patent". (Docket No. 614). In its current brief and at argument, CMU proffered that Dr. Kavcic would not testify about the facts of the email and would comply with the Court's directive that Kavcic be limited to offering lay opinion testimony under Rule 701*fn14 with respect to his understanding of the scope of the patents at the time that the patent applications were made.*fn15
Despite same on November 29 and 30, 2012, Dr. Kavcic testified at length about his invention, the process he took in developing it, and what is expressed in the claims of his patents. (Docket No. 673, 674). As stated, the patents in suit deal with high density magnetic recording sequence detectors, a highly technical area where computer science, electronics, physics and higher math merge. See '839 Patent; '180 Patent. (Docket No.1 Ex 2, 3). For the Court and jury to understand any of Dr. Kavcic's testimony, an explanation of certain scientific terms, concepts, and equations was needed. In that vein, Dr. Kavcic covered the background of data dependence, signal dependence, and his opinion on what the claims of his patent covered. (Docket No. 673 at 147-239, at 229 ln 7). He discussed the topics of trellises, branch metric value calculations, the signal dependence of media noise, correlated signal dependent noise, his invention story and the equations of both his patent and scientific papers. (Docket No. 673, 674). He went through over 50 slides on these topics and even used the document projector to highlight relevant equations for the jury. (Id.) While his testimony was not deemed "expert testimony" as Dr. Kavcic was not proffered as an expert witness under Rule 702 and did not prepare expert reports in accord with the procedures set forth under Rule 26 of the Federal Rules of Civil Procedure, the factual testimony he offered was highly detailed, technical and broad.*fn16 See Voice Technologies Group, Inc. v. VMC Systems, Inc., 164 F.3d 605, 616 (Federal Circuit 1999).
Since Dr. Kavcic addressed all of these topics including his understanding of the claims of his patents on direct examination, they could be probed on cross examination. See Fed. R. of Evid. 611(b). Hence, this email could be employed on cross. See Fed. R. of Evid. 401, 403. As an engineer in the field, Dr. Kavcic is a "person having ordinary skill in the art" ("PHOSITA").
35 U.S.C.A §103(a). His understanding of the background of his invention and what he deems to be the "break throughs" of his invention, could be an aid to the fact finder in determining the obviousness of his invention to a PHOSITA.*fn17 It could also play a part in the Court's analysis of willfulness as well as the copying story promoted by CMU.
Given Dr. Kavcic's testimony, in light of the above discussion of pertinent authority, the Court permitted cross examination on same and admitted Marvell's Ex. DX-189 at trial on November 30, 2012. (Docket No. 674 at 36-37).
Nora Barry Fischer U.S. District Judge
cc/ecf: All counsel of record.