Hafeman v. LG Electronics Inc.

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION CAROLYN W. HAFEMAN,

Plaintiff,

Civil Action No. 6:21-cv-00696-ADA v.

JURY TRIAL DEMANDED LG ELECTRONICS, INC.,

Defendant.

OMNIBUS PRETRIAL CONFERENCE ORDER On April 12, 2023, the Court held a pre-trial conference in the above-captioned matter.

The Court hereby memorializes its rulings in the below tables: No. Motion The Court’s Order LG's Motion to Stay DENIED Pending Inter Partes Review of the ’122 Patent, ’287 Patent and ’393 Patent, Dkt. No. 112 LG's Motion for Summary DENIED Judgment of Invalidity Under 35 U.S.C. § 101, Dkt. No. 77 DENIED. The Court finds that LG is estopped from raising the priority date issue in this Court based on its Sotera stipulation filed in relation to the corresponding Inter Partes Review proceeding. Although LG uses two system references—Ms. Hafeman’s Retriever product and Apple’s Find My iPhone— LG's Motion for Summary for its invalidity argument that it could not raise before the Judgment of November 22, PTAB, estoppel still applies when the allegedly new references 2013 Effective Filing Date 3 have “materially identical” disclosures as the IPR art. Wasica and Resulting Invalidity Fin. GmbH v. Schrader Int’l, Inc., 432 F. Supp. 3d 448, 454– Under 35 U.S.C. § 102, (D. Del. 2020) (applying IPR estoppel where prior art Dkt. No. 94 publication in IPR and prior art product in court contained “materially identical” teachings). Since the related IPRs here are relying on Ms. Hafeman’s patents, and Ms. Hafeman has admitted that the Retriever and Find My iPhone practice her patents, there is “no substantive difference” between these alleged references. See Bos. Sci. Corp. v. Cook Grp. Inc., No. 117CV03448JRSMJD, 2023 WL 1452172, at *34 (S.D. Ind.

Jan. 31, 2023) (applying IPR estoppel to references that could not be raised in IPR because there was “no substantive difference” between the references). Although LG complains that Ms. Hafeman has not met her burden under Wasica to show there is no substantive difference between references relied in the IPR and the system references, LG does not rebut Ms. Hafeman’s argument that the system art and the IPR references are materially identical because of LG’s admissions.

Nor does LG deny the overlap between the issues before the PTAB and this Court, arguing that this Court should reach the “same conclusion” that the PTAB made. See ECF No. 94 at 1.

Thus, the Court finds that LG is estopped from arguing the priority date issue here. The Court therefore DENIES LG’s Motion.

GRANTED as to Constructive Notice and Actual Notice. To prove constructive notice under 35 U.S.C. § 287(a), it is insufficient to only mark a product with only the patent LG's Motion for Summary numbers of parent patents. The Court finds Stryker Corp. Judgment to Preclude Pre- persuasive, specifically that 35 U.S.C. § 287(a) is “not so broad Suit Damages and as to allow marking with a different patent—with different Summary Judgment of No claims—to provide sufficient notice to the public”. 837 F.3d Willful Infringement or 1268, 1278 n5 (Fed. Cir. 2016).

Indirect Infringement, Dkt.

No. 99 DENIED as to Willful and Indirect Infringement

LG's Motion to Exclude Certain Opinions of Dr. DENIED Scott Schaefer, Dkt. No. DENIED as to the reliance on Phone Found third party applications not being based on scientific methodology. The instant case is distinguishable from MV3 Partners, LLC v. LG's Motion to Exclude the Roku, Inc., No. W-18-cv-308, Dkt. 289 (W.D. Tex. June 4, Opinions and Testimony of 6 2020) because there was specific reasoning provided for the Walter Bratic and Justin R. selection of the Phone Found third party application. The Blok, Dkt. No. 98 reasoning provided is as follows: (1) The free apps identified by Defendant’s expert were found to be not technologically comparable by Dr. Schaefer; (2) Almost impossible to figure out how much revenue was being generated by “free” apps; (3) Even though Phone Found was missing functionality, this just is evidence of conservative estimate and similar to the FDSC Security Product.

DENIED as to the reliance on flawed apportionment by Dr. Schaefer.

DENIED as to unreliable incremental benefit split calculation.

GRANTED as to any reliance on total profits of non-accused products.

DENIED as to the royalty for method claims not being apportioned based on actual infringement.

DENIED as to the exclusion of the remainder of Bratic’s opinions because of 1-5 unreliability.

Ms. Hafeman's Opposed GRANTED Motion to Exclude Certain Damages Opinions and Testimony of Lauren R. Kindler, Dkt. No. 101 LG's Motion to Strike and DENIED Exclude the Untimely Rebuttal Expert Report of Walter Bratic, Dkt. No. 151 MOTIONS IN LIMINE MIL Court's Ruling Plaintiff's MIL #1: Evidence or argument concerning the IPRs or grounds raised in the GRANTED IPRs Plaintiff's MIL #2: Evidence or argument concerning unconsummated offers sent to GRANTED Tangible IP Plaintiff's MIL #3: Evidence or argument concerning fee agreements or sources of GRANTED funding for this litigation Plaintiff's MIL #4: Evidence or argument concerning motions to exclude an expert's GRANTED testimony in previous cases Plaintiff's MIL #5: Evidence or argument regarding patents held by LG, Microsoft, and | DENIED Google Plaintiff's MIL #6: Evidence or argument concerning the relative importance of claim GRANTED elements Plaintiff's MIL #7: Evidence or argument concerning LG's supposed reputation in the DENIED industry or innovation Plaintiff's MIL #8: Evidence or argument regarding equitable issues reserved for the GRANTED as to “equitable issues” such as Court, including any suggestion of inequitable conduct withholding from the Patent Office Plaintiff's MIL #9: Evidence or argument regarding any prior art reference other than GRANTED to the extent the material is not the nine references cited in LG's proposed within the expert reports. jury instructions Defendant's MIL #1: Arguments, evidence, or suggestion that LG, Google, Microsoft, oO | RESOLVED any other companies copied Plaintiff's alleged invention Defendant's MIL #2: Argument or evidence of Google or Microsoft's indemnification GRANTED and/or duty to defend LG Defendant's MIL #3: Evidence or argument of infringement based on use by attorneys DENIED (and their employees) or experts in this litigation SIGNED this 12th day of April, 2023.

CDinm ’ oc db ALAN D ALBRIGHT UNITED STATES DISTRICT J E