MEMORANDUM AND ORDER

JOSEPH F. BATAILLON, Senior District Judge.

This matter is before the Court on the parties' motions in limine (D.I. 430-3, D.I. 430-4, D.I. 430-5, D.I. 430-6, D.I. 430-7 and D.I. 430-8). This is an action for patent infringement that is set for trial on October 30, 2018.

I. LAW

Although the motion in limine is an important tool available to the trial judge to ensure the expeditious and evenhanded management of the trial proceedings, performing a gatekeeping function and sharpening the focus for later trial proceedings, some evidentiary submissions, cannot be evaluated accurately or sufficiently by the trial judge in such a procedural environment. Jonasson v. Lutheran Child and Family Servs., 115 F.3d 436, 440 (7th Cir. 1997). A motion in limine is appropriate for "evidentiary submissions that clearly ought not be presented to the jury because they clearly would be inadmissible for any purpose." Id. In other instances, it is necessary to defer ruling until during trial, when the trial judge can better estimate the impact of the evidence on the jury. Id. "Evidentiary rulings made by a trial court during motions in limine are preliminary and may change depending on what actually happens at trial." Walzer v. St. Joseph State Hosp., 231 F.3d 1108, 1113 (8th Cir. 2000); see also Leonard v. Stemtech Health Scis., Inc., 981 F.Supp.2d 273, 276 (D. Del. 2013). (noting that evidentiary rulings, especially those that encompass broad classes of evidence, should generally be deferred until trial to allow for the resolution of questions of foundation, relevancy, and potential prejudice in proper context). To the extent that a party challenges the probative value of the evidence, an attack upon the probative sufficiency of evidence relates not to admissibility but to the weight of the evidence and is a matter for the trier of fact to resolve. United States v. Beasley, 102 F.3d 1440, 1451 (8th Cir. 1996).

II. PLAINTIFF IP BRIDGE'S MOTIONS

A. NO. 1: MOTION IN LIMINE TO EXCLUDE ANY ARGUMENT, TESTIMONY, EVIDENCE, REFERENCE, OR SUGGESTION REGARDING ANY ISSUE, CLAIM, CAUSE OF ACTION, OR FORM OF RELIEF THAT (1) IS NO LONGER PART OF THE CASE, (2) HAS BEEN DECIDED BY THE COURT, OR (3) IS TO BE DECIDED BY THE COURT, INCLUDING, BUT NOT LIMITED TO, THE VALIDITY OF ANY CLAIM OF U.S. PATENT NO. 7,373,295, PANASONIC'S STATUS AS AN IMPROPERLY JOINED PARTY, TCL'S NOW-DISMISSED ANTITRUST CLAIMS AGAINST IP BRIDGE AND/OR PANASONIC, CLAIM CONSTRUCTION, AND SUMMARY JUDGMENT (D.I. 430-3, Pretrial Order ("PTO") Ex. 18)

1. '295 patent

IP Bridge argues that because IP Bridge is no longer asserting infringement of the '295 patent, reference to the '295 patent would prejudice IP Bridge to an extent far outweighed by any potential probative value under Federal Rules of Evidence 403. TCL refers to IP Bridge's expert, Dr. Kennedy's testimony that the fact that the Asserted patents were chosen for assertion places them in a small group of LTE SEP's across the industry and makes them particularly valuable, and argues that TCL should be permitted to reference the invalidity of the '295 patent to rebut any inference that IP Bridge's assertion of a claim makes it particularly valuable and to show a good faith belief of invalidity.

The Court agrees with the plaintiff that the evidence is largely irrelevant and any potential relevance is outweighed by the danger of unfair prejudice and confusion. Accordingly, the motion is granted, subject to reconsideration if necessary on cross-examination or in rebuttal. The defendant is advised to alert the Court in advance of the offer of any such evidence.

2. Panasonic

The plaintiff contends any reference to Panasonic's status as an improperly joined party or to the dismissed counterclaims should be excluded because these issues are no longer part of this case. TCL states that it does not intend to refer to antitrust claims previously asserted against IP Bridge and Panasonic, or to Panasonic as a former party to the case. Accordingly, this motion is denied as moot.

3. Claim Construction

IP Bridge argues that any argument and testimony that is inconsistent with the Court's claim construction (or that questions or disparages it) should be precluded because claim construction is a legal issue for the court, not the jury. The defendant essentially concedes. Accordingly, the motion is granted to the extent that any argument and testimony that is inconsistent with the Court's claim construction will be precluded.

4. Prior Art

IP Bridge moves to preclude certain items not being prior art. This motion was asserted on the assumption that the Court would grant the motion for summary judgment with respect to prior art. Because the Court denied the motion, the motion in limine may be moot in part. TCL argues, however, that regardless of the Court's ruling, it should not be precluded from referring to the subject patents at trial, contending that the patent application disclosures are evidence of a motivation to combine implicit in the knowledge of one of skill in the art and evidence of contemporaneous invention, which is objective evidence of the Asserted Patents' obviousness.

The Court is unable to assess the relevance or admissibility of the challenged evidence in the context of a motion in limine. The parties' concerns may warrant a cautionary or limiting instruction, but the Court cannot determine the ambit of such an instruction at this time. The Court will admit the evidence at issue only on a showing that it is relevant to the issues in the case, and only to the extent that the relevance of the evidence outweighs its potential to cause prejudice or confusion under Fed. R. Evid. 403. The Court finds the motion can be adequately resolved at trial, either in a hearing immediately prior to commencement of the trial, as an objection with a sidebar, or with a review of the evidence outside the presence of the jury. Accordingly, the Court finds that the motion in limine should be overruled at this time, without prejudice to its reassertion via timely objection to the admissibility of such evidence at trial. To the extent that TCL seeks to adduce evidence on issues that were not presented in its experts' reports, the motion is granted.

B. No. 2: MOTION IN LIMINE TO EXCLUDE ANY ARGUMENT, TESTIMONY, EVIDENCE, REFERENCE, OR SUGGESTION OF "NON-PRACTICING ENTITIES" EXCEPT FOR THE LIMITED PURPOSE OF ARGUING THAT IP BRIDGE DOES NOT PRACTICE THE ASSERTED PATENTS (D.I. 430-4, PTO Ex. 19)

Plaintiff seeks to preclude the term "non-practicing entity" for a purpose other than to point out the undisputed fact that IP Bridge does not currently practice the asserted patents.

Defendant argues that the term non-practicing entity (unlike "patent troll") is not pejorative, and further argues that it is not pejorative for TCL to point out to the jury that IP Bridge itself did not develop the patented technology and has never made a product using it.

The Court finds that "non-practicing entity" should be precluded for the same reasons the parties agreed not to use the other terms. The parties agree to uncontroverted facts that identify the inventors and convey the information that IP Bridge itself did not develop the patented technology and has never made a product using it. See D.I. 430-1 at 1-2. Accordingly, the motion will be granted. The Court will reconsider this ruling on a showing by defendant that that such evidence is necessary for rebuttal or cross-examination. Again, the defendant is advised to alert the Court in advance.

C. No. 3: MOTION IN LIMINE TO EXCLUDE ANY ARGUMENT, EVIDENCE, TESTIMONY, REFERENCE, OR SUGGESTION BY TCL REGARDING A COMPARISON BETWEEN ALLEGED ADMITTED PRIOR ART IN AN ASSERTED PATENT AND ANY LIMITATIONS IN A CLAIM OF THE ASSERTED PATENT TO SUGGEST AN INVENTIVE CONCEPT OF THE PATENT (D.I. 430-5, PTO Ex. 20)

IP Bridge argues that these opinions regarding claim limitations as sole claims to novelty are legally improper and should be precluded. TCL states it should be permitted to make a comparison of the prior art, including admitted prior art, to the claim limitations to allow the jury to determine which features were novel and whether there is a nexus between novel features and commercial success.

Again, the Court is unable to assess the relevance or admissibility of the challenged evidence in the context of a motion in limine. The Court will admit the evidence at issue only on a showing that it is relevant to the issues in the case, and only to the extent that the relevance of the evidence outweighs its potential to cause prejudice or confusion under Fed. R. Evid. 403. The Court finds the motion can be adequately resolved at trial, either in a hearing immediately prior to commencement of the trial, as an objection with a sidebar, or with a review of the evidence outside the presence of the jury. A limiting instruction may be in order. Accordingly, the Court finds that the motion in limine should be overruled at this time, without prejudice to its reassertion via timely objection to the admissibility of such evidence at trial.

D. No. 4: MOTION IN LIMINE TO EXCLUDE ANY ARGUMENT, TESTIMONY, EVIDENCE, REFERENCE, OR SUGGESTION THAT IP BRIDGE'S INFRINGEMENT ANALYSIS IS INCOMPLETE, INACCURATE, OR IN ANY WAY DEFICIENT BASED ON EITHER (A) UNPRODUCED SOURCE CODE, OR (B) THE PREMISE THAT SOURCE CODE IS NECESSARY TO PROVE INFRINGEMENT WHEN A PATENT IS PROVEN TO COVER A MANDATORY PROVISION OF AN INDUSTRY STANDARD, AND THE ACCUSED PRODUCT IS PROVEN TO COMPLY WITH THAT MANDATORY PROVISION (D.I. 430-6, PTO Ex. 22)

IP Bridge seeks to preclude evidence or argument on source code, arguing that source code is not required to establish infringement and TCL failed to meet its discovery obligations by not providing the information (i.e., "build IDs") necessary to obtain source code from Qualcomm for numerous Accused Products. Defendant argues that plaintiff's reliance on an accused product's compliance with a standard is insufficient to prove infringement and contends that the claims at issue are not standard essential. Further, it contends searched for and provided requested discovery that it could locate after a reasonable search and notes that IP Bridge did not move to compel additional discovery.

Resolution of this motion at this time would require the Court to determine whether the claims are standard essential or not, an issue hotly disputed by the parties. The Court cannot assess the relevance or admissibility of the challenged evidence without having heard the evidence on the standard essential issue. IP Bridge's motion is more in the nature of an objection that can be raised at trial. Accordingly, the Court finds that the motion in limine should be overruled at this time, without prejudice to its reassertion via timely objection to the admissibility of such evidence at trial.

III. DEFENDANT TCL'S MOTIONS

A. MOTION IN LIMINE NO. 1: TO PRECLUDE PLAINTIFF FROM INTRODUCING EVIDENCE OR ARGUMENT REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS (D.I. 430-7, PTO Ex. 22)

TCL seeks preclusion of evidence or argument on TCL's commercial success as objective evidence of the non-obviousness, contending that IP Bridge cannot show the requisite "nexus" between the phones' commercial success and the admittedly limited features to which the asserted patents are directed (how the phones transmit ACK signals, NACK signals or CQI reports, etc.). Also, it argues that the relevance of any evidence of IP Bridge's purported success in obtaining portfolio licenses as additional objective evidence of the non-obviousness is outweighed by the danger of prejudice and confusion under Federal Rules of Evidence 403.

Although evidence of commercial success may not be particularly probative of nonobviousness, it nevertheless may be admissible, on a proper showing of foundation and relevance. The defendants' concerns go more to the weight than the admissibility of the evidence. The concerns are properly the subject of cross-examination and any resultant prejudice or confusion can be remedied by a motion to strike and/or a limiting instruction. At this time, the Court cannot find that the danger of prejudice for confusion outweighs any potential probative value. Accordingly, the Court finds the motion should be denied without prejudice to reassertion at trial.

B. MOTION IN LIMINE NO. 2: TO PRECLUDE PLAINTIFF FROM INTRODUCING ITS PORTFOLIO LICENSE WITH SAMSUNG, AND DOCUMENTS RELATE THERETO, AT TRIAL (D.I. 430-8, PTO Ex. 23)

TCL moves to preclude IP Bridge from introducing the license between IP Bridge and Samsung Electronics Co., Ltd. ("Samsung") at trial, arguing that it is not a comparable license, is of no or limited probative value, and will mislead and confuse the jury due to the large $133 million lump sum paid by Samsung. TCL notes that IP Bridge moves only to preclude that Samsung license, not the lesser-value Google license.

The Court again finds the defendants' concerns go more to weight, not admissibility and can be addressed in cross-examination. The licenses appear to be relevant to the Georgia-Pacific factors and any hypothetical negotiation. Accordingly, the motion will be denied at this time without prejudice to reassertion at trial. In view of the foregoing,

IT IS ORDERED that the parties' motions in limine (D.I. 430-3, D.I. 430-4, D.I. 430-5, D.I. 430-6, D.I. 430-7 and D.I. 430-8) are granted in part and denied in part as set forth in this order.