1 

UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

Profectus Technology, LLC,

Plaintiff, 

v. 

Google, LLC, 

Defendant. 

Case No. 6:20-cv-00101-ADA

REDACTED VERSION - 

ORIGINAL FILED UNDER SEAL

PLAINTIFF PROFECTUS TECHNOLOGY LLC’S MOTIONS IN LIMINE 

Pursuant to the Amended Scheduling Order (Dkt. No. 84), Plaintiff Profectus Technology, 

LLC (“Profectus”) respectfully submits the following motions in limine. 

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Profectus’s MIL No. 1: Exclude testimony, argument, evidence, or reference to Profectus as 

a non-practicing entity or patent troll.

The Court should exclude reference to Profectus’s business activities and structure, 

including the use of any derogatory, disparaging, and/or pejorative references to Profectus as a 

patent troll, patent assertion entity, and/or a non-practicing entity. The Court should similarly 

preclude arguments suggesting that it is improper for Profectus to assert patent rights without 

practicing the patent, or suggestions that Profectus was assigned patent rights by its inventors 

James Bitetto and Frank Bitetto for the purpose of pursuing this and similar litigation. Any such 

references should be precluded on the basis that they have no relevance to the claims at issue, 

because whether Profectus practices the patent by making and/or selling products has no relevance 

to questions of infringement. FED. R. EVID. 402; see also Hartford-Empire Co. v. U.S., 323 U.S. 

386, 432-33 (1945) (patent owner “has no obligation either to use [the patented invention] or grant 

its use to others.”). To the extent that such issues are relevant, the probative value is substantially 

outweighed by the risk of unfair prejudice, confusion of the issues, and/or misleading the jury.

FED. R. EVID. 403. Courts customarily exclude the use of similarly pejorative terms to refer to a 

patent owner. See ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13-CV-01112-JRG, 

2015 WL 11089489, at *2 (E.D. Tex. Aug. 24, 2015) (precluding the parties from making any 

argument, reference, insinuation, or presenting evidence implying that plaintiffs are “patent trolls,” 

“patent pirates,” non-practicing entities, or other pejorative terms, or otherwise disparaging 

plaintiffs’ business model); Parthenon Unified Memory Architecture LLC v. Apple Inc., No. 2:15-

CV-621-JRG-RSP, 2016 WL 7743510, at *1 (E.D. Tex. Sept. 21, 2016) (precluding the use of 

pejorative terms such as “patent troll,” “pirate,” “bounty hunter,” “privateer,” “bandit,” “paper

patent,” “submarine patent,” “stick up,” “hold up,” “shakedown,” and “playing the lawsuit

lottery”); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-CV-213-JRG-RSP, 

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2015 WL 627430, at *1 (E.D. Tex. Jan. 31, 2015) (prohibiting defendants from making 

derogatory, disparaging, and/or pejorative references to Rembrandt including, inter alia,

“patent troll”); Datatreasury Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 WL 

11468934, at *4 (E.D. Tex. Oct. 5, 2010) (granting motion to preclude the term “patent troll” and 

other pejorative characterizations of plaintiff); Freeny v. Murphy Oil Corp., No. 2:13-CV-791-

RSP, 2015 WL 11108703, at *1 (E.D. Tex. May 29, 2015) (same); Core Wireless Licensing 

S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963, at *2 (E.D. Tex. July 

12, 2016) (precluding references to plaintiff as a “patent troll,” “troll,” “patent pirate,” “shell

company,” “litigation shop,” “lawsuit factory,” “submarine patents,” “litigious,” “shakedown,” 

“extortionist,” and similar).

Profectus’s MIL No. 2: Exclude testimony, argument, evidence, or reference to the religious 

beliefs, political convictions, race, ethnicity, and/or sexual orientation of the parties, 

witnesses, or counsel. This exclusion does not apply to questions and responses to the juror 

questionnaire or during voir dire. 

The Court should exclude any evidence, argument or references to the religious beliefs, 

political convictions, race, ethnicity, and/or sexual orientation of the parties, witnesses, or counsel.

Such matters are not relevant to any of the issues in this litigation. FED. R. EVID. 402. Moreover, 

any possible probative value of such matters is substantially outweighed by the risk of unfair 

prejudice, confusion of the issues, and/or misleading the jury. FED. R. EVID. 403. 

Profectus’s MIL No. 3: Exclude testimony, argument, evidence, or reference to the pending 

ex parte reexamination of the patent-in-suit.

The Court should exclude any evidence, argument or reference to the pending ex parte

reexamination of the patent-in-suit for three reasons. First, the grant of reexamination is irrelevant 

to this case because it is not probative of unpatentability. Second, there is only an approximate

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14% chance that all the patented claims will be cancelled. Third, even if relevant, evidence of the 

reexamination proceedings should be excluded as unfairly prejudicial. 

The grant of reexamination by the USPTO indicates only that the “criterion for 

reexamination has been met . . . [but] does not establish a likelihood of patent invalidity.” Hoechst 

Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996). The USPTO statistics 

from September 2020 indicate that in only 14.2% of ex parte reexaminations requested by thirdparties were all claims canceled, despite 92% of requests for reexamination being granted. See

United States Patent and Trademark Office, Ex Parte Reexamination Filing Data—Sept. 30, 2020 

(https://www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_roll_up_21Q1.pd

f). Thus, as found in Presidio Components Inc. v. American Technical Ceramics Corp., No. 08-

CV-335-IEG (NLS), 2009 WL 3822694, at *2 (S.D. Cal. Nov. 13, 2009), “[t]here is thus a 

‘substantial likelihood’ that, despite the grant of reexamination, the USPTO will uphold the 

patentability of some or all of [the patentee’s] claims.” Moreover, the unfairly prejudicial nature 

of reexamination proceedings evidence is exacerbated because the “USPTO does not apply the 

presumption of validity and applies a different standard of review.” Golden Eye Media USA, Inc. 

v. Trolley Bags UK Ltd., No. 3:18-CV-02109-BEN-LL, 2021 WL 1080688, at *3 (S.D. Cal. March 

18, 2021) (citing FED. R. EVID. 403). 

 Moreover, even if it were relevant, any evidence or argument regarding the reexamination 

proceedings should be excluded under Federal Rule of Evidence 403 because they are unfairly 

prejudicial as they are incomplete and based solely on evidence provided by Google. Callaway 

Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009) (“The district court did not abuse 

its discretion in concluding that the prejudicial nature of evidence concerning the ongoing parallel 

re-examination proceeding outweighed whatever marginal probative or corrective value it might 

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have had in this case.”). There is no “result” in the reexamination and it therefore has little 

probative value and great potential for jury confusion. 3M Innovative Prop. Co. v. Dupont Dow 

Elastomers LLC, No. 03-3364 MJD/AKB, 2005 WL 2216317, at *2 (D. Minn. Sept. 8, 2005) (“On 

the other hand, admission of evidence of an incomplete reexamination would have low probative 

value, would distract from the core issues of the case, and would be highly prejudicial.”). 

Profectus’s MIL No. 4: Exclude testimony, argument, evidence, or reference to any nonelected prior art or any theory of invalidity not set forth in Google’s final invalidity 

contentions.

The Court should exclude any evidence, argument, or reference to non-elected prior art or 

any invalidity theory not included in Google’s final invalidity contentions. Pursuant to the Agreed 

Scheduling Order (Dkt. #33), March 4, 2021, was the deadline for Google to serve its Final 

Invalidity Contentions. On July 26, 2021, Google filed Amended Final Invalidity Contentions 

(Dkt. #89) after filing an unopposed motion for leave to amend. 

In addition, as required by the Amended Scheduling Order (Dkt. #84), the parties met and 

conferred and agreed on a limited set of claims of the patent-in-suit to assert at trial and a limited 

set of alleged prior art to assert at trial. On August 18, 2021, the parties filed a Joint Report 

Regarding Agreement on Limitations of Asserted Claims and Prior Art (Dkt. #90). In that Joint 

Report, Google elected to limit its arguments at trial to 12 combinations of certain specifically 

identified alleged prior art references. Joint Report (Dkt. #90) at pp. 1-2. 

It would be unfair and highly prejudicial to Profectus if Google were to rely at trial on 

evidence, argument, or refer to non-elected prior art or theories of invalidity not set forth in 

Google’s Final Invalidity Contentions. Courts regularly exclude such matters. See Core 

Wireless Licensing S.A.R.L., 2016 WL 4718963, at *2 (precluding LG from introducing 

‟evidence or argument that non-elected prior art invalidates any claim" or introducing "any nonCase 6:20-cv-00101-ADA Document 150 Filed 09/21/21 Page 5 of 17
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elected prior art as an exhibit”); Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-

JRG, 2018 WL 10638138, at *2 (E.D. Tex. Apr. 26, 2018) (excluding non-asserted prior art and

requiring Defendants to obtain leave before using ‟prior art that is outside of the previously 

elected prior art invalidity case [sic] in order to show relevant background information at trial”); 

Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-cv-744, 2016 WL 3618831, at *4 (E.D.

Tex. Mar. 1, 2016) (granting motion to “[e]xclude any argument, testimony, evidence, or reference 

to prior art or prior art combinations that were not included in invalidity contentions or elected”); 

Nobelbiz, Inc. v. Global Connect, L.L.C., No. 6:12- CV-244, 2015 WL 11072170, at *3 (E.D. 

Tex. Sept. 2, 2015) (excluding non-elected prior art and noting that ‟Dr. Perry can talk about the 

state of the art, but must avoid citing references that were not elected as prior art in his invalidity 

analysis.”).

Profectus’s MIL No. 5: Exclude testimony, argument, evidence, or reference to any theory 

of invalidity based on isolated elements or limitations of patent claims being in the prior art.

Google should be precluded from introducing evidence or argument that individual claim 

elements were known in the prior art separate from an opinion that it would be obvious to combine 

elected references in Google’s invalidity report together to yield the full invention of at least one 

challenged patent claim. Such an analysis is improper because as a matter of patent law, a 

combination of previously known elements can be patentable. See, e.g., In re Kahn, 441 F.3d 977, 

986 (Fed. Cir. 2006) ("[M]ere identification in the prior art of each element is insufficient to

defeat the patentability of the combined subject matter as a whole."); In re NTP, Inc., 654 F.3d 

1279, 1299 (Fed. Cir. 2011) (observing that a “piecemeal analysis is precisely the kind of 

hindsight” that must be avoided). The question is not whether individual elements in isolation were 

known, but whether the combination in the claimed invention as a whole was obvious. In re Kahn, 

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Profectus’s MIL No. 9: Exclude testimony, argument, evidence, or reference to the number 

of patents owned by Google or the size of Google’s patent portfolio. 

The Court should exclude any reference to Google’s patents, which are outside the scope 

of its invalidity case and not elected by Google as prior art to the asserted patents. Settled law 

establishes that Google’s patents are not relevant to Profectus’s infringement claims. Bio-Tech. 

Gen. Copr. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (“The existence of one’s

own patent does not constitute a defense to infringement of someone else’s patent. It is elementary 

that a patent grants only the right to exclude others and confers no right on its holder to make, use, 

or sell.”); Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1309 (Fed. Cir. 

2001) (“The fact that [accused infringer’s] patent might read on the [accused device] is totally 

irrelevant to the question of whether [the accused infringer] willfully infringed another patent.”); 

Retractable Techs. Inc. v. Becton, Dickinson & Co., 2009 WL 8725107, at *7 (E.D. Tex. Oct. 8, 

2009) (granting motion to exclude “any argument by Defendant that it does not infringe because 

the accused product is purportedly covered by patents that Defendant owns or licenses”).

 

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Profectus’s MIL No. 10: Exclude testimony, argument, evidence, or reference to Profectus’s 

attorney fee agreements.

The Court should exclude any reference to attorney’s fee agreements that Profectus has 

with its counsel. Profectus’s financial arrangements with counsel (past and present) are not 

relevant to Profectus’s infringement allegations at issue. FED.R. EVID. 402. Moreover, to reference

such matters runs the risks of unfair prejudice, confusing the issues, wasting time, and/or 

misleading the jury. FED. R. EVID. 403; see SSL Servs., LLC v. Citrix Sys., Inc., No. 2:08-CV-158-

JRG, 2012 WL 12906091, at *1 (E.D. Tex. May 24, 2012) (granting motion to preclude the parties 

from making any reference to, inter alia, attorney’s fee arrangements); see also Datatreasury 

Corp., 2010 WL 11468934, at *1 (granting motion to exclude reference to attorney fee

arrangements, including whether counsel have advanced fees or monies to the parties in

connection with the litigation); Parthenon Unified Memory Architecture LLC, 2016 WL

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7743510, at *3 (granting agreed motion to exclude reference, arguments, or testimony regarding 

contingent fees, fees incurred, fee arrangements, any fees obtained as the result of previous 

settlements, attorneys).

Profectus’s MIL No. 11: Exclude testimony, argument, evidence, or reference to how 

Profectus is paying for the cost of the litigation. 

The Court should exclude any evidence, argument or reference to how Profectus is paying 

for the cost of the litigation. Profectus’s financial arrangements to pay attorneys’ fees and litigation 

expenses are not relevant to Profectus’s infringement allegations at issue. FED. R. EVID. 402. 

Moreover, to reference such matters runs the risks of unfair prejudice, confusing the issues, 

wasting time, and/or misleading the jury. FED. R. EVID. 403; see SSL Servs., LLC v. Citrix Sys.,

Inc., No. 2:08-CV-158-JRG, 2012 WL 12906091, at *1 (E.D. Tex. May 24, 2012) (granting motion 

to preclude the parties from making any reference to, inter alia, attorney’s fee arrangements); see

also Datatreasury Corp., 2010 WL 11468934, at *1 (granting motion to exclude reference to 

attorney fee arrangements, including whether counsel have advanced fees or monies to the 

parties in connection with the litigation); Parthenon Unified Memory Architecture LLC, 2016 

WL 7743510, at *3 (granting agreed motion to exclude reference, arguments, or testimony 

regarding contingent fees, fees incurred, fee arrangements, any fees obtained as the result of 

previous settlements, attorneys). 

Motion in Limine No. 12: Exclude testimony, argument, evidence, or remarks that Profectus 

has not sued third-parties that may be infringing the patent-in-suit.

The Court should exclude evidence, argument, or remarks that Profectus has not sued thirdparties that may be infringing the patent-in-suit. “A patentee does not have to sue all infringers at 

once.” Polymer Technologies, Inc. v. Bridwell, 103 F.3d 970, 975 (Fed. Cir. 1996). Whether 

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Dated: September 14, 2021. Respectfully submitted,

/s/ Steven E. Ross 

Steven E. Ross (pro hac vice) 

Lead Attorney

Texas Bar No. 17305500 

ROSS IP GROUP PLLC

5050 Quorum Drive, Suite 700 

Dallas, Texas

Telephone: (972) 661-9400 

Facsimile: (972) 661-9401 

sross@rossipg.com 

Casey Griffith

Texas State Bar No. 24036687 

Michael Barbee

Texas State Bar No. 24082656 

Maeghan Whitehead

Texas State Bar No. 24075270 

Kirk Voss

Texas State Bar No. 24075229 

GRIFFITH BARBEE PLLC

1722 Routh Street, Suite 710 

Dallas, Texas 75201 

Telephone: (214) 446-6020 

Facsimile: (214) 446-6021 

Casey.Griffith@griffithbarbee.com 

Michael.Barbee@griffithbarbee.com 

Maeghan.Whitehead@griffithbarbee.com

Kirk.Voss@griffithbarbee.com 

ATTORNEYS FOR PLAINTIFF

PROFECTUS TECHNOLOGY, LLC

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Certificate of Conference

The undersigned certifies that on September 10, 13, and 14, 2021, he conferred with Marc 

J. Pensabene and Mark Liang, counsel for Defendant Google LLC, via teleconference and email 

regarding the foregoing Motions in Limine. Counsel for Google stated that Google would oppose 

the foregoing Motions in Limine. 

/s/ Steven E. Ross 

Steven E. Ross 

Certificate of Service

The undersigned certifies this document was filed electronically in compliance with Local 

Rule CV-5(a). As such, it was served on all counsel of record on September 14, 2021. 

/s/ Steven E. Ross 

Steven E. Ross 

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