why AMD settled, a tid bit
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
OPTi Inc. )
)
Plaintiff, )
v. ) Civil Action No.: 2:06-CV-00477 CE
) Jury Trial Demanded
)
Advanced Micro Devices, Inc. )
)
)
)
Defendant. )
OPTi’s MOTION IN LIMINE AND REQUESTING ENFORCEMENT
OF THE COURT’S ORDERS IN LIMINE
During the course of OPTi’s case-in-chief, AMD attempted to improperly elicit testimony
as to three non-infringement arguments. Two of AMD’s attempts run contrary to the Court’s
claim construction, summary judgment and motions in limine holdings. AMD has also attempted
to interject a wholly new theory of non-infringement, unsupported by any expert opinion. Any
further testimony on this theory would also run afoul of the Court’s motions in limine order as
well as the Federal Rules of Evidence and Civil Procedure. As such, the Court should preclude
AMD from offering any fact or expert testimony as to these three non-infringement arguments.
In so doing, the Court can avoid wasting the jury’s time on irrelevant and potentially confusing
testimony.
I. Snoop of Multiple Lines During a Given Transfer
In sustaining OPTi’s objection to Mr. Rowland’s line of questioning on the total number
of snoops performed during the transfer of a given line of data, the Court recognized that such
questioning was “[f]latly contradicted by the claim construction”. Trial Transcript, 63:2-3
(February 17, 2010). AMD’s attempt to elicit such testimony is in direct contravention of OPTi’s
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Motion in Limine No. 10 and AMD’s Motion in Limine no 3, which were agreed upon by the
parties in the January 22, 2010 letter to J. Everingham. As such, AMD should be precluded from
and cautioned against making any more such attempts in their response case.
II. Constant Rate
As the Court observed in denying AMD’s Motion for Summary Judgment of
Noninfringement, “[a] constant or uniform rate does not require each unit of data to travel from
memory to the bus master in the same length of time. Instead, the limitation may be satisfied if
the device performs transfers at a uniform frequency, e.g., a transfer every PCI clock cycle.”
February 12, 1010 Order (D.I. 247). Given that construction, AMD should be precluded from and
cautioned against setting forth any evidence in its case that relates to “constant rate” in the context
of transfers occurring “from memory to the bus master in the same length of time” pursuant to
Agreed Motions in Limine Nos. 10 (OPTi) and 3 (AMD).
Furthermore, AMD’s expert Dr. Albonesi should be precluded from offering any
testimony at all on AMD’s non-infringement of the “constant rate” limitation. Aside from his
testimony regarding the AMD accused products’ failure to transfer data at a uniform speed, Dr.
Albonesi has provided no disclosure whatsoever of any expert opinion that the accused chipsets
fail to transfer across cache boundaries at a constant rate. Second Expert Witness Statement of
David H. Albonesi, Ph.D., 54-77. As such, any such testimony would run afoul of the parties’
agreement as to OPTi’s Motion in Limine No. 20, as well as Fed.R.Civ.P. 26(a)(2)(B) and
37(c)(1).
III. SB600/700 “Multiple Transaction” Issue
AMD’s cross-examinations of Mr. Brandin and Dr. Smith have revealed to OPTi and the
Court a nascent theory of non-infringement, premised on an implication that the second four-line
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transfer effected by the SB600 in Mr. Brandin’s testing did not, in fact, originate from secondary
memory. Trial Transcript, 39:23-43:8, 184:13-192:9 (Febduary 17, 2010); PX-0816-0006.
AMD concealed this theory of non-infringement from both Plaintiff and the Court until
the second day of trial. Despite a standing interrogatory requesting AMD’s non-infringement
contentions as to the SB600, AMD has made no disclosures of evidence whatsoever that the
transfers effected by the SB600 do not originate from secondary memory. PX-0106-0020-24
(AMD’s November 30, 2007 Response to Interrogatory 7); PX-0639-0016-23 (AMD’s September
12, 2008 Supplemental Response to Interrogatory 7). The Federal Rules of Civil Procedure are
clear that such a failure to disclose precludes a party from using such evidence at trial.
Fed.R.Civ.P. 37(c)(1)
Nor did AMD disclose this (or any other) specific theory of non-infringement in other
discovery or the Pre-Trial Order (D.I. 220), instead stating generally that AMD disputes “1.
Whether AMD directly infringed any of the Asserted Claims of the ‘291 Patent. 2. Whether AMD
has induced direct infringement by another party of any of the Asserted Claims of the ‘291
Patent.” Pre-Trial Order (D.I. 220) at 17. AMD’s infringement of the claim limitation “originate
from secondary memory” has been undisputed by AMD.
As such, OPTi therefore moves in limine that AMD be precluded from relying upon any
evidence, fact or expert, which is put forth to advance a theory of non-infringement based on the
“originate from secondary memory” limitation. As observed by this Court mere months ago in
the context of 30(b)(6) deposition testimony – “[t]he very purpose of discovery is to avoid trial by
ambush” Function Media, LLC v. Google, Inc., 2010 U.S. Dist. LEXIS 3275, *5 (E.D.Tex. Jan.
15, 2010) (Everingham, J.); see also CPC Int’l, Inc. v. Archer Daniels Midland Co., 831 F. Supp.
1091, 1103 (D. Del 1993) (“The Court finds ADM waived the right to assert these matters as
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defenses to CPC's claims of infringement, both by failing to identify them in response to CPC's
interrogatory and by failing to include them in the draft pretrial order.”).
In addition, AMD’s expert Dr. Albonesi should be precluded from offering any testimony
on AMD’s non-infringement of the “originate from secondary memory” limitation for his failure
to disclose any such opinion. Dr. Albonesi has never addressed this limitation in any reports, and
at deposition he steadfastly refused to disclose any opinion as to non-infringement aside from
those in his report. See November 19, 2009 Deposition of Dr. David Albonesi at 32:18-41:25. As
such, any such testimony would run afoul of the parties’ agreement as to OPTi’s Motion in
Limine No. 20, as well as Fed.R.Civ.P. 26(a)(2)(B) and 37(c)(1).
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Dated: February 19, 2010 Respectfully submitted,
OPTi Inc.
By:
/s/ Ethan McComb
One of its attorneys:
Michael L. Brody
Taras A. Gracey
Ethan McComb
Eric J. Mersmann
WINSTON & STRAWN, LLP
35 West Wacker Drive
Chicago, Illinois 60601
Phone: (312) 558-5600
Fax: (312) 558-5700
mbrody@winston.com
tgracey@winston.cm
emccomb@winston.com
emersmann@winston.com
Samuel F. Baxter
Jason Cassady
MCKOOL SMITH, PC
300 Crescent Court
Suite 1500
Dallas, Texas 75201
Phone: (214) 978-4016
Fax: (903) 978-4044
sbaxter@mckoolsmith.com
asilva@mckoolsmith.com
jacasssady@mckoolsmith.com
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CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing document was filed electronically in compliance
with Local Rule CV-5(a). As such, this notice was served on all counsel who are deemed to have
consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R. Civ. P. 5(d) and Local
Rule CV-5(e), all other counsel of record not deemed to have consented to electronic service were
served with a true and correct copy via facsimile and/or U.S. First Class Mail this 19th day of
February, 2010.
/s/ Ethan McComb |
