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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 1 of 6 PageID #: 5785

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

TARKUS IMAGING, INC. Plaintiff,

V.

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C.A. No. 10-63-LPS

ADOBE SYSTEMS, INC.; CANON U.S.A., INC.; NIKON AMERICAS INC.; and NIKON, INC. Defendants, ORDER At Wilmington this 31st day ofMay, 2012, IT IS HEREBY ORDERED THAT: This Order, along with the Final Pretrial Order (D.I. 376), and any rulings made by the Court at the pretrial conference or thereafter, shall control the subsequent course of the action, unless modified by the Court to prevent manifest injustice: A. Rulings on Issues Presented in the Proposed Pretrial Order CD .I. 376) 1. With respect to III.A., "Uncontested Facts," the Court will read the Statement of Uncontested Facts (Ex. 1) to the jury at the start of the evidentiary portion of the trial. 2. With respect to V.G, "Presentation of Witnesses," the parties shall exchange on June 4. 2012 a final list of which witnesses they intend to call live at trial and the order of such witnesses, and which witnesses they

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intend to call by deposition. Once a party has identified a witness on its

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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 2 of 6 PageID #: 5786

final list as a live witness, the party must call the witness or otherwise make the witness available to be called by the other party upon request. 3. The parties may not reserve the right to call additional witnesses, not disclosed by June 4, 2012 as required by this Order, even for foundation testimony. Additional witnesses not disclosed by June 4, 2012 may only be called upon a showing of unforeseen extraordinary circumstances and leave of the Court. 4. The order of presentation shall be as follows: Plaintiff shall go first on the issues of infringement, damages, and willfulness; Defendants shall present their cases on all issues; Plaintiff may rebut on the issues on which it bears the burden; and Defendants may rebut on validity. 5. The parties shall identify the witnesses whom they expect to call for direct examination (both live and by deposition), and the order in which they expect to call said witnesses, by 7:00p.m. (Eastern time), two days before the direct examination is expected to take place. 6. In the event that a witness who was designated by a party on its final witness list to testify live at trial is not available or otherwise cannot testify live due to unforeseeable circumstances, upon a showing of good cause any party may designate deposition testimony in lieu of live testimony at trial. 7. With respect to V.H.4 (p. 13), Adobe's proposal for deposition designations and objections is adopted and Plaintiffs proposal is rejected.

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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 3 of 6 PageID #: 5787

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8.

In addition, no later than Thursday, June 14, 2012, the parties shall provide the Court with a hard copy of each deposition transcript from which any

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party has designated any testimony. The transcripts shall be complete and not limited just to portions of testimony that are designated and counterdesignated. Additionally, at the time a party calls a witness to testify by deposition, that party shall provide the Court with two copies of the designated portions of the testimony about to be played or read. 9. With respect to VI.A, "Exhibits" (and particularly the dispute set out on pp. 14-15), any party may use an exhibit that is listed on any party's exhibit list, to the same effect as if it were on its own exhibit list, subject to all evidentiary objections. 10. 11. Plaintiffs Proposal at the bottom of page 14 is rejected. Defendants' Proposal at the top of page 15 is adopted. Plaintiffs Proposal at the bottom of page 15 is adopted. Defendants' Proposal on page 16 is adopted. Exhibits not objected to will be received into evidence by operation of the Final Pretrial Order without the need for additional foundation testimony. However, every exhibit offered into evidence must be shown to at least one witness and must be formally moved into evidence. 15. 16. 17. Plaintiffs Proposal on page 17 is rejected. Defendants' proposal on page 17 is adopted. With respect to "Adobe's Additional Matter No.2" (pp. 26-27), Abode's

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12. 13. 14.

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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 4 of 6 PageID #: 5788

requests in bullet points 1 and 2 are granted while its request in bullet point 3 is denied. Specifically, references to supposed discovery violations by Adobe will be precluded (unless Adobe "opens the door" to them) and references to injunctive relief or an award of pre-judgment interest will be precluded; reference may be made to the fact that Nikon was a party to this case but later settled (particularly given the Court's rulings, below, with respect to the RPX agreement). 18. Any other provisions of the proposed Pretrial Order that are not disputed and are not addressed in this Order or subsequently by the Court, are adopted.
B.

Rulings on Certain Motions In Limine ("MIL") (D.I. 376 Ex. 14. 15. 16) 1.

Tarkus MIL 1, to exclude any expert opinion or expert witness not

previously disclosed as required by Rule 26, is DENIED. Schwartz's opinion testimony is not per se inadmissible; specific objections to specific designations from his deposition testimony will be addressed pursuant to the Court's procedures. Schwartz is not a retained expert and was not required to provide an expert report.

2.

Tarkus MIL 2, to bar Defendants from introducing undisclosed expert

testimony about how their accused products perform, is DENIED. Objections to expert testimony as beyond the scope of an expert report will be addressed pursuant to the Court's procedures. Defendants will be permitted to elicit fact testimony from fact witnesses as to how their 4

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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 5 of 6 PageID #: 5789

accused products work. 3.

Tarkus MIL 3, to bar Defendants from speculating that any RPX

member(s) other than Nikon infringes the patent-in-suit, is DENIED. The RPX agreement is not non-comparable as a matter of law. Its impact on a proper damages calculation is a question of fact for the jury and will be the subject of expert testimony.

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4.

Tarkus MIL 4, to exclude evidence of who won or lost claim

construction, is GRANTED to the extent that no party will be permitted to argue that it "won" or "lost" claim construction and DENIED to the extent it seeks to preclude Defendants from defending willfulness allegations by contending that their own proposed constructions were reasonable.

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5.

Adobe MIL 2, to exclude the RPX agreement, is DENIED. The RPX

agreement is not non-comparable as a matter of law. Its impact on a proper damages calculation is a question of fact for the jury and will be the subject of expert testimony.

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6. 7.

Abode MIL 3, to exclude evidence of usage or sale of components that

are not the accused functionality, is DENIED. Such evidence is probative of (at least) induced infringement and the amount of it. The 403 balance does not favor the exclusion of this evidence.

Canon MIL 3, to exclude the RPX agreement, is DENIED. The RPX

agreement is not non-comparable as a matter of law. Its impact on a proper damages calculation is a question of fact for the jury and will be the
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Case 1:10-cv-00063-LPS Document 403 Filed 05/31/12 Page 6 of 6 PageID #: 5790

subject of expert testimony. 8.

Canon MIL 5, to preclude evidence or argument that Canon did not

comply with the discovery rules, is GRANTED. The parties' discovery disputes and the Court's discovery rulings are not proper subjects at trial. The discovery dispute addressed in Canon's motion is not relevant to any issue in the case and permitting discovery disputes to be relitigated at trial would be unfairly prejudicial, confusing, and waste time, in violation of Rule 403.

C.

Pretrial Conference The parties shall be prepared to address all remaining issues in the Pretrial Order, preliminary instructions, voir dire, verdict form, and all pending motions at the pretrial conference.