Phenix Longhorn LLC v. AU Optronics Corporation, Hisense Electronica Mexico, S.A. de C.V., Hisense USA Corporation, Hisense Visual Technology Co., Ltd., and Does 1–10

Summary

The court grants in part Plaintiff’s motion to strike portions of the hybrid witness disclosures of Center Chen and Bear Syong and grants related portions of Plaintiff’s Motion in Limine No. 1. The court limits the witnesses’ testimony concerning claim construction and infringement of U.S. Patent Nos. 7,233,305 and 7,557,788, while allowing certain testimony based on their ground-level experience with AUO’s products and testing data subject to specified limitations. The court also excludes testimony and materials concerning the scope and coverage of AUO’s patents as part of its independent-development story.

Holdings

1. A non-retained or hybrid witness may testify from ground-level personal knowledge concerning the functionality and design requirements that AUO supplied to its suppliers through RFQ documents, but Chen may not testify about claim scope, claim construction, or whether the accused products infringe the asserted patents because he first learned about those patents during the litigation.
2. The testing itself constituted factual evidence and was not excluded as impermissible Rule 26(a)(2)(C) expert testimony, but opinions by Chen and Syong based on testing conducted after their involvement in the design, development, and specification of the Pgamma ICs were stricken.
3. Defendants could present their independent-development story and reference the fact that they possessed numerous patents in the general technical field, but they could not refer to the scope or coverage of particular AUO patents because the witnesses were not competent to testify that the accused products practiced those patents and the evidence was not relevant to damages or willfulness and risked jury confusion.
4. Ms. Tang may testify about her ground-level experience with AUO's development of the accused products and the required functionality of the Pgamma ICs, but she may not testify about claim construction, claim scope, or infringement of the asserted patents because she lacked adequate pre-litigation ground-level knowledge of them.

Questions Presented

1. Whether portions of Center Chen's hybrid-witness disclosure concerning the scope, claim construction, and infringement of the asserted patents violated Rule 26(a)(2)(C) because Chen lacked pre-litigation ground-level familiarity with those patents.
2. Whether Bear Syong's testing was impermissible expert opinion under Rule 26(a)(2)(C), and whether Chen and Syong could offer opinions based on testing conducted after their ground-level involvement in the development of the Pgamma ICs.
3. Whether AUO's patent exhibit and related testimony concerning its independent-development story should be excluded because the witnesses lacked ground-level knowledge of the referenced patents and the evidence risked jury confusion.
4. Whether Ms. Tang could testify regarding claim construction or infringement of the asserted patents despite lacking adequate pre-litigation ground-level knowledge.

Disposition

other