PUBLIC VERSION

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1. Reference or Arguments to Motions or Arguments or in Contradiction to the

Markman Orders or Other Prior Orders By This Court: Microsoft agrees that neither party 

should be permitted to present evidence or argument contrary to the claim construction order 

entered by this Court. An expert, however, consistent with the Court’s claim construction order, 

should be permitted to describe the plain and ordinary meaning of a term to a Skilled Artisan and 

explain how that meaning should be applied.1 Beyond that, Microsoft simply reserves the right 

to approach the bench and seek relief if Plaintiff presents a position at trial contrary to what it has 

taken in a brief (on any topic). 

2. References to Privileged or Protected Material, Including (a) Questions Intended to 

Provoke an Answer That is Privileged or Protected, Including References to Claims of 

Privilege; (b) the Nature of Any Fact Witness’s Preparation for Trial or for Deposition 

Testimony with That Witness’s Counsel; (c) the Nature of Any Expert Witness’s 

Preparation for Trial or for Deposition Testimony with That Party’s Counsel; or (d) 

References to a Client’s Fee Agreements: Microsoft agrees that neither party should be 

permitted to engage in references or questions regarding (b)-(d), or pose a question solely to 

draw a privilege objection. 

Subpart (a) of this motion in limine, however, should be denied as overbroad because it

prohibits a party from posing a question that may draw a privilege objection or that may result in 

1 See Innovation Sciences, LLC v. Amazon.com, Inc., No. 4:18-cv-474, 2020 WL 4884000, at *1 

(E.D. Tex. Aug. 20, 2020) (“For terms given their plain and ordinary meaning, the jury is free to 

apply an expert’s description of the claims if it is consistent with the jury’s understanding.” 

(citations and quotations omitted)); Sprint Commc’ns Co. L.P. v. Cequel Commc’ns, LLC, No. 

1:18-cv-1752, 2022 WL 609214, at *2 (D. Del. Jan. 28, 2022) (“Applying the term’s plain and 

ordinary meaning, Sprint’s expert has offered a theory that selection is a process, not a single 

step. Defendants vigorously argue that the term ‘selection’ means selection of one item from 

multiple choices which precludes infringement. Whether Dr. Wicker’s theory of infringement 

meets the claim limitations is for the jury to decide.”).

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the disclosure of privileged testimony. Microsoft would be unfairly prejudiced by an in limine

order that bars questions that may invoke issues of privilege when patent ownership, acquisition, 

or past licensing remain disputed between the parties. For example, Plaintiff contends a license 

involving an asserted patent is non-comparable because Plaintiff’s principal “testified he did not 

believe [a company’s] product line matched the technology owned by [Plaintiff].” Dkt. No. 134 

(-454 Case), at 8. This motion in limine, if granted, would bar Microsoft from asking questions 

about Plaintiff’s principal’s belief solely because the question may draw a privilege objection.

3. Criticisms of the Patent Office or Its Employees: Microsoft agrees that neither party 

should speculate on the expertise of PTO employees. Plaintiff should not be permitted to tout an 

examiner’s expertise, and Microsoft should not be permitted to state that he or she “lacks

expertise” or is “overworked, not diligent, or error prone.” The remainder of this motion in 

limine should be denied as overbroad. “Criticisms” bars any argument that an examiner did not 

consider prior art or arguments, may have overlooked data, that a mistake could have been made, 

that an examiner is busy, or that the patent prosecution process is imperfect, points made by 

Judge Fogel in the Patent Video that jurors will see at the outset of trial. 

4. Other Patents as a Defense to Damages Due to “Royalty Stacking”: Microsoft will 

not make a “royalty-stacking” argument. However, Microsoft would be unfairly prejudiced by 

an in limine order that bars it from presenting evidence that shows that Plaintiff’s damages 

theory introduces a royalty burden (or incremental profit split) that would be deemed

unacceptable at a hypothetical negotiation for any product that could be covered by multiple 

patents. For example, Plaintiff asserts that it is entitled to a profit split based on the entirety of 

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prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one 

way in order to maintain their patentability and in a different way against accused infringers.”).

6. References to or Evidence Concerning Equitable Issues, Laches, Inequitable 

Conduct, Deceptive Intent, Fraud on the Patent Office, Misstatements about Claim Scope, 

Misleading the Patent Office, Misrepresentations to the Patent Office, or Withholding from 

the Patent Office: Microsoft agrees that neither party should be permitted to reference Laches, 

Inequitable Conduct, Deceptive Intent, Fraud on the Patent Office, Misleading the Patent Office, 

or Misrepresentations to the Patent Office. 

The remainder of this motion in limine should be denied as vague and overbroad. 

Microsoft would be unfairly prejudiced by an in limine order that prohibits it from presenting 

evidence that various prior art references were not considered by the examiner, that some claim 

limitations were known in the prior art, or summarizing what is claimed or disclosed in the 

asserted patents—i.e., discussing “claim scope.” Further, the majority of the claim terms have 

their plain and ordinary meaning, an expert should be permitted to describe the plain and 

ordinary meaning of a term to a Skilled Artisan and how that meaning should be applied. See 

Plaintiff’s MIL 1, supra.

7. Relative Importance of Claim Elements: Microsoft agrees that neither party should be 

allowed to introduce argument that any one claim element is more “important” than another. 

The remainder of this motion in limine should be denied as overbroad. Microsoft would 

be unfairly prejudiced by an in limine order that bars it from conducting a limitation by limitation 

analysis of the claims and explaining that certain limitations were admittedly known in the prior 

art or that other claim limitations supposedly distinguish the invention from the prior art. For 

example, the applicant for the ’160 Patent represented to the PTO that certain limitations of the 

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eventually-issued claims were known in the prior art.3 Neither party should be permitted to 

assert that those limitations were, for example, unknown or that those limitations are part of the 

incremental advance over the prior art as it concerns damages. See KAIST IP US LLC v. 

Samsung Elecs. Co., Ltd., No. 2:16-cv-1314, Dkt. No. 416, **3-4 (E.D. Tex. May 3, 2018) 

(denying MIL seeking to preclude parties from “[a]lleging relative importance of claim elements 

of the claims” explaining “[a]lthough no one claim element is more important than another for 

the purpose of defining the invention, certain claim elements can be more important than others 

for other purposes—e.g., for overcoming prior art during prosecution, proving infringement, or 

proving invalidity”). See also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 

(Fed. Cir. 1998) (“A statement in a patent that something is in the prior art is binding on the 

applicant and patentee for determinations of anticipation and obviousness.”). 

8. Evidence, Testimony, or Argument that the Accused Products Do Not Resemble the 

Examples in the Specification: Microsoft agrees that neither party should be permitted to 

directly compare an accused product to an example in a specification without reference to the

claims. 

The remainder of this motion in limine should be denied as overbroad and vague. 

Microsoft would be unfairly prejudiced by an in limine order that prevents it from discussing the 

text and figures of the asserted patents (including examples) in order to educate the jury on an 

3 Compare Response to Office Action, June 12, 2007, at 6-7 (Prior art reference “teaches a 

quality of service monitor for a multimedia communications system which [(1)] selects at least 

two parameters (packet loss and jitter). [(2)] The parameters are measured at regular and frequent 

intervals. [(3)] A service indicator (voice quality) is estimated at regular intervals based on the

determined parameters.” (citations omitted)) with ’160 Patent (Dkt. No. 1-1), Claim 1 (“the 

method comprising the steps of: [(1)] selecting two or more parameters of a network . . . [(2)]

measuring . . . values of the network parameters . . . [(3)] determining at two or more times the 

value of a service indicator as a function of said . . . parameter values”).

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asserted patent’s teachings or to illustrate the nature of the claims. See SSL Servs., LLC v. Citrix 

Sys., Inc., 940 F. Supp. 2d 480, 492 (E.D. Tex. 2013) (denying JMOL based on purported 

comparison of products to claims because the “testimony regarding the preferred embodiments 

amounted to nothing more than an effort to educate the jury about the teachings of the [asserted] 

patent”); VLSI Tech. LLC v. Intel Corp., No. 6:21-cv-57, Dkt. No. 508, at *6 (W.D. Tex. Feb. 19, 

2021) (denying request to “Exclude Comparisons of Intel Products to Patent Embodiments”). 

9. Evidence, Testimony, or Argument Concerning Unanalyzed or Unelected Prior Art 

as Either Invalidating or Disclosing a Non-Infringing Alternative: Microsoft agrees that it 

will not assert that a prior art reference, system, or combination that was not disclosed in its

experts’ reports discloses or supplies a claim limitation for the purposes of invalidity. 

The remainder of this motion in limine should be denied as overbroad. Microsoft would 

be unfairly prejudiced by an in limine order that bars it from discussing the state of the art by 

using background prior art references. The use of background prior art is contemplated in the 

statute and is routine. See 35 U.S.C. § 282 (disclosure of references “showing the state of the 

art”); Solas OLED Ltd. v. Samsung Display Co., Ltd., No 2:19-cv-152, Dkt. No. 279, *3 (E.D. 

Tex. Sept. 30, 2020) (denying “Solas MIL No. 2: Evidence of ‘background’ prior art not 

properly disclosed in invalidity contentions”); PSN Ill., LLC v. Abbott Labs., No. 1:09-cv-5879, 

Dkt. No. 331, at *10 (N.D. Ill. Oct. 31, 2012) (denying motion in limine that would exclude 

discussion of references the were discussed in expert reports but not used in invalidity analysis 

for the “limited purpose of showing the ‘state of the art’” at trial). Microsoft notes that Plaintiff

misstates this Court’s holding in VLSI. There, this Court granted a motion in limine on “nonelected prior art” solely as “[r]elevant to damages; but not a decision on admissibility for other 

purposes.” VLSI, Dkt. No. 508, at *5 (emphasis added). 

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10. Brazos’s Business Model and Name: Microsoft agrees to a symmetrical in limine order 

barring both parties from using pejoratives or loaded terms, including but not limited to “troll,” 

“pirate,” “Big Tech,” or “efficient infringement.” 

The remainder of this motion in limine should be denied as arbitrary and asymmetrical. 

First, Microsoft would be unfairly prejudiced if Plaintiff references its business and Microsoft is 

barred from completing or probing that description by presenting evidence that accurately 

describes Plaintiff (e.g., as an entity that asserts patents that does not make or sell any products). 

Second, Plaintiff did not employ the “Brazos” moniker in conjunction with these proceedings for 

the majority of the time these cases were pending. In fact, most of Plaintiff’s documents list the 

entity “WSOU,” not Brazos, including the asserted patents, contracts, and financial documents. 

In light of this record, there should be no arbitrary limitation as to which of its multiple names 

the parties use to refer to Plaintiff. With respect to “We-Sue,” that is a pronunciation of 

“WSOU” that Plaintiff’s counsel has employed. See, e.g., Griffith Dep., 35:4-6; Lemberg Dep., 

5:9-10, 13:13-14. 

11. Non-Infringement Arguments based on Preferred Embodiments: Microsoft submits 

that this motion in limine be resolved in the same manner as Plaintiff’s MIL No. 8, supra, with 

neither party being permitted to directly compare an accused product to an example in the 

specification without reference to the claims. As noted above, Microsoft would be unfairly 

prejudiced by an in limine order that bars it from educating the jury on the claimed or disclosed 

invention through the preferred embodiments in the asserted patents.

12. Prior Claims, Causes of Action, or Forms of Relief: Microsoft agrees that neither 

party shall refer to prior claims, causes of action, or forms of relief. However, as noted in 

Microsoft’s response to Plaintiff’s MIL No. 5, supra, Microsoft should be permitted to discuss 

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prior, identical complaints (that were voluntarily dismissed shortly after filing) involving the 

asserted patents, if Plaintiff claims pre-suit knowledge by Microsoft based on those complaints.

13. Compensation to Brazos’s Owners, Officers, Employees, and Investors From 

Interest in Brazos: The parties agree that neither party shall refer to the compensation of the 

other party’s current or former owners, officers, employees and investors.

14. Microsoft’s Patents: This motion in limine should be denied as unfairly prejudicial

because it prejudices Microsoft in rebutting core aspects of Plaintiff’s damages theory. First, 

Plaintiff’s damages expert contends the original assignee of the patents is an “inventor” while 

Microsoft is a “promoter” of the purported inventions. Second, Plaintiff relies on the entirety of 

Microsoft’s R&D spending to calculate damages—without any effort to identify the basis or 

result of that spending. And, third, Plaintiff contends broad categories of features (in the case of 

Network Policy Server) or entire product offerings (in the case of Azure Monitor, Network 

Performance Monitor, or Network Watcher) are wholly attributable to the asserted patents. 

Microsoft should be permitted to present rebuttal evidence that shows that it has sought patents 

related to certain accused features or products through witnesses that Plaintiff has had the 

opportunity to depose (and thus show that Microsoft is an “inventor”), as well as evidence on the 

total volume of patents sought and granted for the years where Plaintiff’s expert relies on 

Microsoft R&D expenditures. See Ericsson Inc. v. D-Link Corp., No. 6:10-cv-473, Dkt. No. 

454, **2-3 (E.D. Tex. May 24, 2013) (“Defendants may present evidence of their own patents 

and contributions to the 802.11 standard”).

15. References to Forum Shopping, Litigation Abuse, or the Western District of Texas 

as a Popular or Improper Venue: Microsoft agrees that neither party should be allowed to 

discuss forum shopping, litigation abuse, or improper venue. 

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The remainder of this motion in limine should be denied as overbroad to the extent it bars

general reference to “forum,” “venue,” or “litigation.” Such an in limine order would unfairly 

prejudice Microsoft because it would deny Microsoft the opportunity to present basic facts about 

Plaintiff, including its recent connection to Waco, its business model of litigating patents, and the 

acquisition of the asserted patents for litigation.

16. Argument or evidence that the damages sought are unprecedented or represent a 

lottery ticket or similar disparaging terms or arguments: Microsoft agrees that it will not 

refer to the damages sought as “unprecedented” or a “lottery ticket.” 

The remainder of this motion in limine should be denied as overbroad to the extent it 

prevents Microsoft from providing reasonable characterizations of the flaws in Plaintiff’s 

damages theory. For example, as noted above, Plaintiff asserts it is entitled to a profit split based 

on the entirety of Microsoft’s R&D spending, which includes research performed on unrelated 

technology. See Plaintiff’s MIL No. 4, supra. Microsoft should be permitted to explain that

Plaintiff’s analysis is “disproportionate” and “unconnected” to Microsoft’s R&D spending and 

would result in an “excessive” damages award or provide a “windfall.” 

17. Microsoft’s Reputation in the Industry, Innovation, or Philanthropy: Microsoft 

agrees that neither party should be permitted to discuss philanthropy or community work or 

involvement. 

The remainder of this motion in limine should be denied as overbroad. Microsoft would 

be unfairly prejudiced by an in limine order that bars it from discussing its reputation for 

innovation when the damages issues in this case involve the identity of Microsoft’s competitors, 

the scope of the industry, and whether Microsoft is an “inventor” or a “promoter.” See VLSI, 

Dkt. 508, at *3 (denying motion in limine on “Intel’s reputation for innovation”). 

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18. References to Potential Damages as Increasing the Price of Products or Leading to 

Job Losses: Microsoft agrees to a symmetrical in limine order that also precludes Plaintiff from 

arguing that its damages claims will not harm or impact a company of Microsoft’s size.

19. Predecessors’ Non-Assertion of Patents-in-Suit against Microsoft: Microsoft agrees 

that neither party should be permitted to suggest that because a predecessor (e.g., Alcatel-Lucent, 

Nokia etc.) did not assert the patents against Microsoft that the jury should draw some inference 

from that concerning whether the predecessor understood the asserted patents to be invalid or 

infringed. 

The remainder of this motion in limine should be denied as overbroad because it bars 

Microsoft from contextualizing the asserted patents. Microsoft should be permitted to discuss 

the nature of the predecessor’s business and the context in which the asserted patents were 

developed. Further, Microsoft should be permitted to discuss a predecessor’s conduct 

concerning the asserted patents, including its decision to sell the asserted patents.

20. Value and propriety of Patents Acquired from Others: Microsoft agrees that neither 

party should be permitted to argue that (1) it is improper to assert patents acquired from others; 

(2) it is improper to assert patents without practicing them; or (3) acquired patents are less 

valuable than other patents, solely because they were acquired. 

The remainder of this motion in limine should be denied as overbroad. Microsoft would 

be unfairly prejudiced by an in limine order that bars it from referencing the “value” of the 

asserted patents including their purchase price, the amount paid for any prior license to the 

asserted patents (including to a portfolio encompassing the asserted patents), or barred from 

noting that Plaintiff does not practice the patents. Plaintiff has placed the practice of the asserted

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patents at issue through its damages theory which claims that a predecessor was the “inventor” 

and that Microsoft is the “promoter” of the claimed technology.4

21. Absence of Inventors at Trial: This motion in limine should be denied. Consistent with 

this Court’s ruling in VLSI, Microsoft will not present argument on or suggest what Plaintiff 

could or should have done, or that Plaintiff is hiding information. See VLSI, Dkt. 508, at **4-5 

(Intel cannot argue VLSI “should’ve/could’ve brought inventors and they’re hiding something”). 

Likewise, Plaintiff should not be permitted to suggest that Microsoft should have or could have 

deposed or otherwise brought the inventors to trial.

Microsoft only intends to make the factual point that the jury will not hear from the 

inventors. Plaintiff has long planned for the absence of the inventors at trial. Beginning with its 

initial disclosures, Plaintiff did not identify the inventors as individuals with any information 

relevant to the claims and defenses in these cases. Fed. R. Civ. P. 26(a). 

22. Allegations that Individual Claim Elements Were In the Prior Art: This motion in 

limine should be denied. Microsoft would be unfairly prejudiced by an in limine order that bars 

Microsoft from making arguments consistent with the patentee’s own statements regarding the 

state of the art, what was known in the art, or acknowledgements that certain claim limitations 

were found in the art. For example, during the prosecution of the ’160 Patent, the applicant 

admitted that the prior art disclosed certain claim limitations. The patentee should not be 

permitted to assert that those limitations were unknown in the art or are part of the incremental

advance over the prior art for the purposes of damages. See Plaintiff’s MIL No. 7, supra.

4 See, e.g., Expert Report of J. Blok & W. Bratic, App’x A, ¶ 170 (“The relationship of Nokia 

and Microsoft would have been one of inventor and promoter, respectively.”). 

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23. Witnesses Not Disclosed and Contained on Microsoft’s Witness List: The parties 

agree neither party is permitted to call a witness who is not disclosed on that party’s witness list.

24. Law Firm and Lawyer Characteristics: Microsoft agrees that neither party can 

comment on the other party’s law firm or lawyer characteristics.

The remainder of this motion in limine should be denied as overbroad to the extent it 

prohibits all reference to “actions taken or not taken” by counsel. For example, as noted in 

connection with Plaintiff’s MIL Nos. 5 and 7, supra, a party should not be permitted to 

contradict representations made to the PTO (whether during prosecution or an IPR proceeding) 

by counsel. 

25. References to How or to Whom a Damages Award May be Distributed: Microsoft 

agrees with this motion in limine.

DATED: May 27, 2022 Respectfully submitted,

/s/ Richard A. Cederoth (by permission)

Melissa R. Smith, Bar No. 24001351

melissa@gillamsmithlaw.com 

James “Travis” Underwood, Bar No. 

24102587

travis@gillamsmithlaw.com

GILLAM & SMITH, LLP

303 South Washington Avenue

Marshall, Texas 75670

Tel: (903) 934-8450 

Fax: (903) 934-9257 

Michael J. Bettinger

mbettinger@sidley.com

Irene Yang

irene.yang@sidley.com

Brooke S. Boll

brooke.boll@sidley.com

SIDLEY AUSTIN LLP

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555 California Street, Suite 2000

San Francisco, CA 94104

Tel: (415) 772-1200 

Fax: (415) 772-7400 

Richard A. Cederoth

rcederoth@sidley.com 

John W. McBride

jwmcbride@sidley.com

Richard M. Chen

rchen@sidley.com

Kevin Robert Oliver

kevin.oliver@sidley.com

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Tel: (312) 853-7000 

Fax: (312) 853-7036 

ATTORNEYS FOR MICROSOFT 

CORPORATION 

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CERTIFICATE OF SERVICE

I, Richard M. Chen, certify that on May 27, 2022 this document and related exhibits 

(unless previously-filed or non-confidential) were filed under seal with the Clerk of Court via the 

Court’s CM/ECF system. This documents and the applicable exhibits were subsequently served 

on all counsel of record by electronic mail.

DATED: May 27, 2022 /s/ Richard M. Chen

Richard M. Chen

rchen@sidley.com

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Tel: (312) 853-7000 

Fax: (312) 853-7036 

ATTORNEY FOR MICROSOFT 

CORPORATION 

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