Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., Civil Action No. 09-290

• Decision Date: 17 December 2012
• Docket Number: Civil Action No. 09-290
• Parties: CARNEGIE MELLON UNIVERSITY, Plaintiff, v. MARVELL TECHNOLOGY GROUP, LTD. et al., Defendants.
• Court: U.S. District Court — Western District of Pennsylvania

CARNEGIE MELLON UNIVERSITY, Plaintiff,

v.MARVELL TECHNOLOGY GROUP, LTD. et al., Defendants.

Civil Action No. 09-290

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

Dated: December 17, 2012

Judge Nora Barry Fischer

MEMORANDUM ORDER

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 [660] 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").¹ The patents-in-suit are generally directed to sequence detection in highdensity 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.² (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.³ (Id.) CMU, in turn, responds that this exhibit is prejudicial and irrelevantto the issues of infringement, willfulness, and copying.⁴ (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." FED. R. 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.⁵

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.⁶ Motions for reconsideration are granted sparingly however "[b]ecause federal courts have a strong interest in finality ofjudgments." 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 Café 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 Café, 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.⁷ 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 soclearly."); (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.⁸ 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 authority⁹ , 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. ¹⁰ 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.¹¹ (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 Bard¹² 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.¹³ 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...