IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v. 

MICROSOFT CORPORATION, 

Defendant.

Civil Action No. 6:20-cv-454 

Civil Action No. 6:20-cv-461 

Civil Action No. 6:20-cv-465 

PUBLIC VERSION

MICROSOFT CORPORATION’S MOTIONS IN LIMINE

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 1 of 22
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TABLE OF CONTENTS

I. MICROSOFT’S MARKET CAPITALIZATION, TOTAL REVENUE OR PROFITS, 

MICROSOFT’S TOTAL REVENUES OR PROFITS FOR AZURE, OR REVENUES, 

PROJECTIONS, OR SIZE OF THE GLOBAL OR NATIIONAL CLOUD OR SERVER 

MARKET ............................................................................................................................ 1

II. EITHER PARTY’S POSITIONS DURING CLAIM CONSTRUCTION ......................... 3

III. SUGGESTION THAT MICROSOFT SHOULD HAVE OR DID NOT PRODUCE 

DOCUMENTS OR SOURCE CODE, OR SPECULATION REGARDING THE 

EXISTENCE OF UNPRODUCED DOCUMENTS .......................................................... 4

IV. SECONDARY INDICIA OF NONOBVIOUSNESS ........................................................ 5

V. DOCTRINE OF EQUIVALENTS ..................................................................................... 8

VI. INDUCED OR CONTRIBUTORY INFRINGEMENT ................................................... 10

VII. EXPERT TESTIMONY OUTSIDE THE SCOPE OF DR. MCCLELLAN’S, DR. 

BRATIC’S, OR DR. BLOK’S REPORTS ....................................................................... 11

VIII. ARGUMENT OR IMPLICATION THAT MICROSOFT HAD PRE-SUIT 

KNOWLEDGE OF THE ASSERTED PATENTS .......................................................... 11

IX. USE OF ACCUSED FUNCTIONALITIES OR PRODUCTS AS DESCRIPTORS OF 

THE ASSERTED PATENTS ........................................................................................... 12

X. UNRELATED LAWSUITS OR VERDICTS INVOLVING MICROSOFT ................... 13

XI. IPCAPITAL GROUP, INC. VALUATION REPORT ..................................................... 13

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 2 of 22
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TABLE OF AUTHORITIES

 Page(s) 

Cases

Accentra Inc. v. Staples, Inc., 

No. CV 07–5862 ABC, 2010 WL 8450890 (C.D. Cal. Sept. 22, 2010) ......................10, 11, 12 

ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 

Civil Action No. 10-cv-00248, 2011 WL 7036048 (E.D. Va. July 5, 2011) .............................6

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 

776 F.2d 281 (Fed. Cir. 1985)....................................................................................................6 

BMC Software, Inc. v. ServiceNow, Inc., 

Case No. 2:14-CV-903-JRG, 2016 WL 379620 (E.D. Tex. Feb. 1, 2016) ................................3

Composite Res., Inc. v. Recon Med. LLC, 

Case No. 17-cv-01755-MMD-VCF, 

2021 WL 5501104 (D. Nev. Nov. 22, 2021) .............................................................................4

ContentGuard Holdings, Inc. v. Amazon.com, Inc., 

Case No. 13-cv-01112-JRG, 2015 WL 12915561 .....................................................................5

Datatreasury Corp. v. Wells Fargo & Co., 

Civil Action No. 2:06-CV-72 DF, 

2010 WL 11468934 (E.D. Tex. Oct. 5, 2010) .........................................................................13

Eidos Display, LLC v. Chi Mei Innolux Corp., 

Civil Action No. 6:11-CV-00201-JRG, 

2017 WL 2773944 (E.D. Tex. May 26, 2017) ...................................................................10, 11

Ericsson, Inc. v. D-Link Sys., Inc., 

773 F.3d 1201 (Fed. Cir. 2014)........................................................................................1, 3, 14

Finjan, Inc. v. Blue Coat Sys., Inc., 

Case No. 13-cv-03999-BLF, 2015 WL 3640694 (N.D. Cal. June 11, 2015) ....................11, 12

Genband US LLC v. Metaswitch Networks Corp., 

Case No. 2:14-cv-33-JRG-RSP, 

2015 WL 12911530 (E.D. Tex. Sept. 30, 2015) ........................................................................5

HTC Corp. v. Tech. Props. Ltd., 

Case No. 5:08-CV-00882-PSG, 2013 WL 4782598 (N.D. Cal. Sept. 6, 2013) .........................3

Huawei Techs. Co. v. T-Mobile US, Inc., 

No. 2:16-cv-00052-JRG-RSP (E.D. Tex. Sept. 29, 2017), ECF No. 440 ..............................2, 3

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 3 of 22
iii

Implicit, LLC v. Trend Micro, Inc., 

No. 6:16-CV-00080-JRG (E.D. Tex. Oct. 3, 2017), ECF No. 253 ............................................2

Key Energy Serv., Inc. v. C.C. Forbes, LLC, 

No. 2:08-cv-346-CE, 2011 WL 7429433 (E.D. Tex. June 3, 2011) ..........................................5

LaserDynamics, Inc. v. Quanta Comput., Inc., 

694 F.3d. 51 (Fed. Cir. 2012).................................................................................................1, 2

Malta v. Schulmerich Carillons, Inc., 

952 F.2d 1320 (Fed. Cir. 1991)..................................................................................................8

MobileMedia Ideas, LLC v. HTC Corp., 

Case No. 2:10-cv-112-JRG, 2013 WL 12158524 (E.D. Tex. Apr. 24, 2013) ...........................3

Ormco Corp. v. Align Tech., Inc., 

463 F.3d 1299 (Fed. Cir. 2006)..................................................................................................6

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 

Case No. 2:13-CV-213-JRG-RSP, 2015 WL 627430 (E.D. Tex. Jan. 31, 2015) ......................3

SimpleAir, Inc. v. AWS Convergence Techs., Inc., 

No. 2:09-CV-289 (E.D. Tex. Apr. 3, 2012), ECF No. 505 ........................................................2

SSL Servs., LLC v. Citrix Sys., Inc., 

Civil Action No. 2:08-CV-158-JRG, 

2012 WL 12906091 (E.D. Tex. May 24, 2012) .................................................................10, 11

Surface Joint Venture v. E.I. DuPont de Nemours & Co., 

No. A-02-CA-043-SS, 2003 WL 26101190 (W.D. Tex. Feb. 3, 2003) ...................................13

Texas Instruments Inc. v. Cypress Semiconductor Corp., 

90 F.3d 1558 (Fed. Cir. 1996)................................................................................................8, 9

Uniloc USA, Inc. v. Microsoft Corp., 

632 F.3d 1292 (Fed. Cir. 2011)............................................................................................2, 14

Rules & Statutes

Fed. R. Civ. P. 26(a)(2)(B) ............................................................................................................11

Fed. R. Evid. 401 .......................................................................................................................1, 14

Fed. R. Evid. 402 ................................................................................................................... passim

Fed. R. Evid. 403 ................................................................................................................... passim

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Defendant Microsoft Corporation (“Microsoft”) respectfully seeks an order precluding 

Plaintiff WSOU Investments, LLC d/b/a Brazos Licensing and Development (“WSOU”), its 

counsel, and witnesses from mentioning, referring to, or offering any evidence or argument 

relating to any of the following matters within the hearing of any member of the jury during voir 

dire or at any time during trial. 

I. MICROSOFT’S MARKET CAPITALIZATION, TOTAL REVENUE OR 

PROFITS, MICROSOFT’S TOTAL REVENUES OR PROFITS FOR AZURE, OR 

REVENUES, PROJECTIONS, OR SIZE OF THE GLOBAL OR NATIIONAL 

CLOUD OR SERVER MARKET

Microsoft respectfully requests that this Court preclude WSOU pursuant to Fed. R. Evid. 

402 and 403 from presenting any argument, evidence, or testimony concerning (1) Microsoft’s 

market capitalization, total revenue or profits; (2) Microsoft’s total revenues or profits for 

Microsoft Azure; or (3) revenues, projections, or size of the global or national markets for cloud 

services or server operating systems. 

Argument, evidence, or testimony concerning Microsoft’s total revenue or profits and 

overall financial success undisputedly reflect the success of Microsoft’s multitude of businesses 

and a broad range of technologies that have nothing to do with these cases. The allegations in 

this case concern Azure Monitor, Network Performance Monitor (“NPM”), Network Watcher, 

and the Network Policy Server (“NPS”) feature of Windows Server. Microsoft’s other nonaccused products and services have nothing to do with either the asserted patents or the accused 

technology. Microsoft’s market capitalization and total, company-wide revenues and profits do 

not reflect the value of the claimed inventions or the accused technology, and are therefore 

irrelevant. Fed. R. Evid. 401, 402; Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. 

Cir. 2014) (damages “must reflect the value attributable to the infringing features of the 

[accused] product, and no more.”); LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d. 51, 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 7 of 22
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67-68 (Fed. Cir. 2012) (“Admission of such overall revenues . . . only serve to make a patentee’s 

proffered damages amount appear modest by comparison, and to artificially inflate the jury’s 

damages calculation beyond that which is ‘adequate to compensate for the infringement.’”) 

(internal quotation marks omitted).2

Not only are Microsoft’s total revenues and profits and its overall financial success 

irrelevant, but if presented they would “skew the damages horizon for the jury, regardless of the 

contribution of the patented component” to Microsoft’s overall financial condition, and no 

instruction could undo this prejudice. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1320 

(Fed. Cir. 2011). The information may cause the jury to calibrate any damage award against 

Microsoft’s overall size, profits, and financial position, rather than tailoring the award to the 

specific contribution of the claimed inventions. For this reason, courts routinely preclude 

plaintiffs from discussing high-level financial information divorced from the accused 

technology. See, e.g., SimpleAir, Inc. v. AWS Convergence Techs., Inc., No. 2:09-CV-289, Order 

on Mots. in Limine 1 (E.D. Tex. Apr. 3, 2012), ECF No. 505 (prohibiting plaintiff “from 

discussing the total revenue or profits of Defendants’ products”); Implicit, LLC v. Trend Micro, 

Inc., No. 6:16-CV-00080-JRG, Order on Mots. in Limine 6 (E.D. Tex. Oct. 3, 2017), ECF No. 

253 (precluding reference to defendant’s “size, profits, or total value”); Huawei Techs. Co. v. TMobile US, Inc., No. 2:16-cv-00052-JRG-RSP, Order on Mots. in Limine 11 (E.D. Tex. Sept. 29, 

2 For the same reason, WSOU should be precluded from referencing Microsoft’s total profits or 

revenues for Microsoft Azure. Microsoft Azure is a cloud platform that offers many services, 

including database and storage services, networking, and specialized services for application 

development, machine learning and artificial intelligence, internet over things, mixed reality, 

game development, business insights, and virtual desktops. See Coates 160 Rebuttal Rept. ¶¶35-

37. The accused Azure Monitor, NPM, and Network Watcher features are small services within 

the Azure cloud platform. The value of Microsoft’s entire Azure platform is not relevant to any 

damages claim. 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 8 of 22
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2017), ECF No. 440 (precluding evidence of “past annual revenue, estimated future annual 

revenue, or overall capital expenditures”); Rembrandt Wireless Techs., LP v. Samsung Elecs.

Co., Case No. 2:13-CV-213-JRG-RSP, 2015 WL 627430, at *5 (E.D. Tex. Jan. 31, 2015) 

(granting motion to “exclude evidence of Samsung’s size, wealth, total revenues or profits”); 

MobileMedia Ideas, LLC v. HTC Corp., Case No. 2:10-cv-112-JRG, 2013 WL 12158524, at *3 

(E.D. Tex. Apr. 24, 2013) (excluding reference to defendant’s “total revenue or operating 

profits”); HTC Corp. v. Tech. Props. Ltd., Case No. 5:08-CV-00882-PSG, 2013 WL 4782598, at 

*6 (N.D. Cal. Sept. 6, 2013) (“[R]ecent Federal Circuit case law does not permit the use of a 

company’s overall size or revenue as a check to confirm the reasonableness of a jury award.”). 

WSOU should be precluded from referencing Microsoft’s total profits, revenues, and market 

capitalization, and it must “structure its damages presentation in such a way that the jury will not

be able to calculate” Microsoft’s total profits. BMC Software, Inc. v. ServiceNow, Inc., Case No. 

2:14-CV-903-JRG, 2016 WL 379620, at *3 (E.D. Tex. Feb. 1, 2016). 

For the same reasons, WSOU should be precluded from referencing the global or national 

markets for cloud services and server operating systems. Any evidence concerning global or 

national markets for these broad categories of technology is untied to the value of the claimed 

inventions or the accused technology (which make up a small fraction of Microsoft’s Azure and 

Windows Server platforms, respectively), and should therefore be excluded pursuant to Fed. R. 

Evid. 402. See Ericsson, 773 F.3d at 1226. 

II. EITHER PARTY’S POSITIONS DURING CLAIM CONSTRUCTION

Microsoft respectfully requests that this Court preclude WSOU from presenting evidence 

or argument regarding either party’s positions during claim construction. The Court entered its 

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claim construction order on March 18, 2021. ECF No. 62.3 Microsoft will not advance 

arguments contrary to the Court’s claim construction Order. Any reference to claim construction 

positions that are no longer at issue would be irrelevant to any claim properly before the jury. 

Moreover, to the extent WSOU suggests that the Court rejected any of Microsoft’s previously 

advanced claim construction positions, “the jury may improperly infer that [WSOU] is therefore 

entitled to prevail on” the other issues. Composite Res., Inc. v. Recon Med. LLC, Case No. 17-cv01755-MMD-VCF, 2021 WL 5501104, at *5 (D. Nev. Nov. 22, 2021). The Court should 

preclude WSOU from presenting such evidence under Fed. R. Evid. 402 and 403 to prevent the 

waste of time, risk of jury confusion, and significant prejudice to Microsoft if such argument or 

evidence is allowed.

III. SUGGESTION THAT MICROSOFT SHOULD HAVE OR DID NOT PRODUCE 

DOCUMENTS OR SOURCE CODE, OR SPECULATION REGARDING THE 

EXISTENCE OF UNPRODUCED DOCUMENTS

Microsoft respectfully requests that this Court preclude WSOU from providing any 

evidence, testimony, attorney argument, comments, insinuation, reference, or assertions 

concerning any alleged deficiencies in the parties’ production of documents or source code, or 

speculation regarding the existence of materials that were not produced, because these are 

irrelevant to any issue being tried. 

Microsoft has complied with all its discovery obligations. However, in recent briefing 

regarding Microsoft’s pending Motion to Exclude Improper Damages Opinions and Testimony 

of WSOU’s Experts, WSOU alleges that Microsoft has “withheld internal documents” and has 

“failed to produce . . . documents that discuss how to split the benefit between the parties or for 

evaluating patent contributions.” WSOU’s Opp’n to Mot. to Exclude at 7 n.2, 16-17 & n.3 (Apr. 

3

 Unless otherwise noted, citations herein are to the docket in Case No. 6:20-cv-00454. 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 10 of 22
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26, 2022), ECF No. 160. Not only did WSOU raise these purported “deficiencies” months after 

discovery had closed, but any discussions of discovery disputes that occurred between the parties 

or alleged discovery deficiencies are entirely irrelevant to the issues of infringement and validity 

for the jury to decide. Further, any such evidence or argument would confuse the jury and 

distract from the ultimate issues to be decided. Courts therefore frequently exclude such evidence 

and argument from trial. See, e.g., ContentGuard Holdings, Inc. v. Amazon.com, Inc., Case No. 

13-cv-01112-JRG, 2015 WL 12915561, at *3 (“The parties shall not introduce any evidence or 

testimony, or make attorney argument, comments, insinuation, reference, or assertions 

concerning alleged deficiencies or failures in the parties’ production of documents or other 

discovery (pursuant to any Federal or Local Rules concerning discovery) or litigation 

misconduct.”); Genband US LLC v. Metaswitch Networks Corp., Case No. 2:14-cv-33-JRG-RSP, 

2015 WL 12911530, at *4 (E.D. Tex. Sept. 30, 2015) (granting “[m]otion to preclude evidence 

or argument related to discovery disputes.”); Key Energy Serv., Inc. v. C.C. Forbes, LLC, No. 

2:08-cv-346-CE, 2011 WL 7429433, at *4 (E.D. Tex. June 3, 2011) (same). 

Because such evidence is irrelevant and would distract from the merits of the case in a 

manner confusing to the jury and unduly prejudicial to Microsoft, the Court should preclude, 

under Fed. R. Evid. 402 and 403, any reference to alleged discovery deficiencies in the parties’ 

production of documents or source code. 

IV. SECONDARY INDICIA OF NONOBVIOUSNESS

Microsoft respectfully requests that this Court preclude WSOU from presenting any 

argument, evidence, or testimony regarding secondary indicia of nonobviousness of the asserted 

patents because WSOU has not disclosed any evidence of the required nexus. 

For U.S. Patent No. 7,366,160 (“the ’160 Patent”) and U.S. Patent No. 8,274,902 (“’902 

Patent”), WSOU’s technical expert, Dr. Stan McClellan, asserts in conclusory fashion that Azure 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 11 of 22
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Monitor, Network Watcher, and NPM have been commercially successful. See McClellan 160 

Valid. Rept. ¶¶ 295-96; McClellan 902 Valid. Rept. ¶ 110. For U.S. Patent No. 8,274,902 (“the 

’702 Patent”), Dr. McClellan describes purported industry praise for “Microsoft’s Network 

Access Protection (‘NAP’) solution[,]” an unaccused feature of Windows Server that was

deprecated in Windows Server 2012 and removed in Windows Server 2016. See McClellan 702 

Valid. Rept. ¶¶ 240-43. WSOU should not be able to present argument, evidence, or testimony 

related to secondary indicia of nonobviousness because there is no evidence that the purported 

secondary indicia identified by Dr. McClellan have a nexus to the claimed inventions. “[F]or 

secondary considerations to have relevance and weight in an obviousness analysis, the patentee 

must demonstrate that the asserted considerations have a nexus to the merits of the claimed 

invention.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., Civil Action No. 10-cv00248, 2011 WL 7036048, at *6 (E.D. Va. July 5, 2011) (citing Ashland Oil, Inc. v. Delta Resins 

& Refractories, Inc., 776 F.2d 281, 306 n. 42 (Fed. Cir. 1985)) (emphasis added); see also 

Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (“Evidence of 

commercial success, or other secondary considerations, is only significant if there is a nexus 

between the claimed invention and the commercial success.”). Here, WSOU has failed to 

demonstrate any such nexus. 

For the ’160 and ’902 patents, Dr. McClellan asserts, without evidence, that WSOU “is 

entitled to a rebuttable presumption of nexus” because the respective accused products are 

allegedly “coextensive with the patented invention[s].” McClellan 160 Valid. Rept. ¶ 296; 

McClellan 902 Valid. Rept. ¶ 110. However, Dr. McClellan’s own deposition testimony belies 

this assertion. For example, it is undisputed that “[l]ogs in Azure Monitor are capable of 

consolidating data from multiple sources into a single workspace and perform sophisticated 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 12 of 22
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analysis to identify critical patterns.” Blok Rept. Appx. A ¶ 18. But Dr. McClellan testified that 

the claims of the ’160 patent do not cover the use of logs or storing data. McClellan Dep. 139:10-

12 (“I don’t see where the making use of logs is anywhere related to the claim language.”), 

136:22-23 (“The claim has nothing to do with logs or storage of data, as we previously 

discussed.”). 

Similarly, regarding the ’902 patent, Dr. McClellan’s report refers to Microsoft 

documentation stating that NPM can “[m]onitor loss and latency across various subnets and set 

alerts.” McClellan 902 Inf. Rept. ¶ 21. The ’902 patent claims recite collecting packet loss data 

and estimating packet loss rate, but say nothing about latency or setting alerts. And Dr. 

McClellan testified that loss and latency are two distinct concepts, and that “setting an alert” is 

not the same as collecting loss data or estimating packet loss rate. McClellan Dep. 198:8-199:3; 

see also id., 199:15-23 (“Claim 1 of the ’902 patent . . . doesn’t say anything about alerts.”). 

Because the accused products include features that are undisputedly not covered by the ’160 and 

’902 patents, there is no “rebuttable presumption of nexus” as Dr. McClellan asserts.

Dr. McClellan does not even attempt to demonstrate a nexus between the “industry 

praise” for the unaccused NAP feature and the ’702 patent, nor does he argue that WSOU is 

entitled to a rebuttable presumption of nexus to this patent. Accordingly, because WSOU has not 

established a nexus between the purported secondary indicia of nonobviousness and the asserted 

patents, any argument, evidence, or testimony related thereto is irrelevant and should be 

precluded. Fed. R. Evid. 402. Furthermore, it would be unfairly prejudicial under Fed. R. Evid. 

403 to allow WSOU to present previously undisclosed theories or evidence regarding secondary 

considerations for the first time at trial.

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V. DOCTRINE OF EQUIVALENTS

Microsoft respectfully requests that this Court preclude WSOU from presenting any 

argument, evidence, or testimony regarding alleged infringement under the doctrine of 

equivalents. WSOU cannot present an infringement case under the doctrine of equivalents 

because its expert failed to provide “particularized testimony” or “linking argument as to the 

‘insubstantiality of the differences’ between the claimed invention and the accused device or 

process[.]” Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. 

Cir. 1996). 

While Dr. McClellan’s reports include a section setting forth the legal standard for the 

doctrine of equivalents, see, e.g., McClellan 160 Inf. Rept. ¶¶ 57-58, his infringement analysis 

contains little more than boilerplate statements regarding infringement under the doctrine. See, 

e.g., id. ¶ 82 (“Any claim element not literally present in the Microsoft Instrumentalities, as set 

forth below, is found in those Instrumentalities under the doctrine of equivalents because any 

differences between such claim element and the Microsoft Instrumentalities are insubstantial 

and/or the Accused Instrumentalities perform substantially the same function, in substantially the 

same way to achieve substantially the same result as the corresponding claim element(s).”). This 

generic statement, repeated for various claim elements throughout each of Dr. McClellan’s 

infringement reports for the ’160, ’702, and ’902 patents, fails to explain what differences exist 

between the accused product and the claims of the patent or why such differences are 

insubstantial. Texas Instruments, 90 F.3d at 1567. Nor do these statements identify the function, 

way, and result for the accused product and claims, or explain why they are substantially the 

same. See Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991) 

(“While Lear Siegler does not go so far as to require recitation of the magic words ‘function’, 

‘way’, and ‘result’, we think that it at least requires the evidence to establish what the function, 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 14 of 22
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way, and result of both the claimed device and the accused device are, and why those functions, 

ways, and results are substantially the same.”). 

In response to Microsoft’s Motion for Summary Judgment of No Infringement, WSOU 

argues that Azure Monitor practices the ’160 Patent’s “determining a trend” limitation under the 

doctrine of equivalents. See WSOU Opp’n to Mot. for Summary Judgment of Infringement 7-8 

(Apr. 26, 2022), ECF No. 153 (quoting McClellan 160 Inf. Rept. ¶ 120) (“This process is 

equivalent to determining a trend of a parameter or indicator as a function of parameter or 

indicator values, as described in the claim language.”) (emphasis added). As explained in 

previous briefing, WSOU’s attempt to rely on the doctrine of equivalents theory in this case is 

precluded by binding Federal Circuit law. See Microsoft Reply in Support of Mot. for Summary 

Judgment of No Infringement 9-10 (May 3, 2022), ECF No. 168. Dr. McClellan’s report 

contains several quotations from the testimony of a Microsoft witness on generally creating 

“statistical models” and then concludes, without any explanation, that “[t]his process is 

equivalent to determining a trend of a parameter or indicator as a function of parameter or 

indicator values.” McClellan 160 Inf. Rept. ¶ 120. But this is precisely the type of “[g]eneralized 

testimony as to the overall similarity between the claims and the accused infringer’s product or 

process” that the Federal Circuit has held will not suffice to establish infringement under the 

doctrine of equivalents. Texas Instruments, 90 F.3d at 1567. 

Permitting WSOU to introduce a doctrine of equivalents theory would run afoul of the 

evidentiary requirements set forth in Texas Instruments, which “assure that the fact-finder does 

not, ‘under the guise of applying the doctrine of equivalents, erase a plethora of meaningful 

structural and functional limitations of the claim on which the public is entitled to rely in 

avoiding infringement.’” Id. (citation omitted). It would also be unfairly prejudicial under Fed. 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 15 of 22
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R. Evid. 403. The Court should therefore preclude WSOU from presenting any argument, 

evidence, or testimony related to such a theory for any of the asserted patents. 

VI. INDUCED OR CONTRIBUTORY INFRINGEMENT

Microsoft respectfully requests that this Court preclude WSOU from presenting any 

argument, evidence, or testimony regarding induced infringement or contributory infringement. 

Although WSOU’s complaints in these cases request findings of induced infringement and 

contributory infringement, WSOU failed to set forth any theory of inducement or contributory 

infringement of any of the three asserted patents. Microsoft served interrogatories specifically 

asking WSOU to “describe[e] Microsoft’s acts that [WSOU] alleges contribute to or are 

inducing . . . direct infringement, and identifying all Documents and Persons that support 

[WSOU’s] contentions.” WSOU Interrog. Resps. 3-4 (Interrog. No. 5). In response, WSOU did 

not identify any contributory or inducing acts, and instead incorporated by reference Dr. 

McClellan’s infringement reports. Id. 

For his part, Dr. McClellan included a section setting forth the legal standards for indirect 

infringement in his reports, see, e.g., McClellan 160 Inf. Rept. ¶ 59, but never opines that 

Microsoft induces or contributes to the infringement of any of the asserted patents, or indeed 

identifies any purported direct infringer other than Microsoft. The Court should not permit 

WSOU to introduce a new infringement theory for the first time at trial. See, e.g., Eidos Display, 

LLC v. Chi Mei Innolux Corp., Civil Action No. 6:11-CV-00201-JRG, 2017 WL 2773944, at *1 

(E.D. Tex. May 26, 2017) (“No expert will express opinions during direct examination that were 

not disclosed in their expert reports.”); SSL Servs., LLC v. Citrix Sys., Inc., Civil Action No. 

2:08-CV-158-JRG, 2012 WL 12906091, at *1 (E.D. Tex. May 24, 2012) (“All expert testimony 

shall be limited to topics and subject matter actually disclosed in reports or testified to in 

response to opposing party questions raised during the expert's deposition.”); Accentra Inc. v. 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 16 of 22
11 

Staples, Inc., No. CV 07–5862 ABC (RZx), 2010 WL 8450890, at *6 (C.D. Cal. Sept. 22, 2010) 

(granting motion in limine to preclude pursuit of induced infringement and contributory 

infringement theories that “were never pled in [plaintiff’s] complaint, never provided in five 

iterations of [plaintiff’s] infringement contentions, and not pursued during discovery.”); Finjan, 

Inc. v. Blue Coat Sys., Inc., Case No. 13-cv-03999-BLF, 2015 WL 3640694, at *2 (N.D. Cal. 

June 11, 2015) (“If the theory is new, prejudice is ‘inherent in the assertion of a new theory after 

discovery has closed.’”) (citation omitted); Fed. R. Evid. 403. 

VII. EXPERT TESTIMONY OUTSIDE THE SCOPE OF DR. MCCLELLAN’S, DR. 

BRATIC’S, OR DR. BLOK’S REPORTS

Microsoft respectfully requests that the Court preclude WSOU pursuant to Fed. R. Civ. P. 

26(a)(2)(B) from offering expert testimony concerning any subject which is outside the scope of 

its experts’ reports. Fed. R. Civ. P. 26(a)(2)(B); see also Eidos, 2017 WL 2773944, at *1; SSL, 

2012 WL 12906091, at *1. Furthermore, it would be unfairly prejudicial under Fed. R. Evid. 

403 to allow WSOU to present previously undisclosed theories or evidence for the first time at 

trial.

VIII. ARGUMENT OR IMPLICATION THAT MICROSOFT HAD PRE-SUIT 

KNOWLEDGE OF THE ASSERTED PATENTS

Microsoft respectfully requests that the Court preclude WSOU from presenting any 

argument, evidence, or testimony suggesting that Microsoft had pre-suit knowledge of any of the 

asserted patents. Belated disclosure at trial would be irrelevant, unfairly prejudicial and mislead 

the jury. 

WSOU’s complaints do not allege willful infringement and only allege that Microsoft 

“received notice and actual or constructive knowledge” of the asserted patents as of the date of 

the complaints. Am. Compl. ¶ 61 (Apr. 5, 2021), ECF No. 73. Microsoft confirmed that it had no 

pre-suit knowledge of the asserted patents in its interrogatory responses, Microsoft Interrog. 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 17 of 22
12 

Resps. 36-37 (Interrog. No. 7), and WSOU has never suggested otherwise in any of its 

infringement contentions, interrogatory responses, or expert reports. Accordingly, the Court 

should not permit WSOU to introduce any theory of pre-suit knowledge for the first time at trial. 

See, e.g., Accentra, 2010 WL 8450890, at *6; Finjan, 2015 WL 3640694, at *2. 

IX. USE OF ACCUSED FUNCTIONALITIES OR PRODUCTS AS DESCRIPTORS 

OF THE ASSERTED PATENTS

Microsoft respectfully requests that the Court preclude WSOU pursuant to Fed. R. Evid. 

403 from using the accused functionalities or products in these cases as descriptors of the 

asserted patents.

In its briefing and expert reports, WSOU has referred to the ’160 and ’902 patents as the 

“Azure Patents” and the ’702 patent as the “NPS Patent.” See, e.g., Blok Rept. ¶ 9. WSOU 

should not be allowed to refer to the asserted patents as such in the presence of the jury, as this 

would confuse or mislead to jury into believing that the claims of the asserted patents are 

directed at the accused products or functionalities. There is no mention of Azure, or even “cloud” 

services, in the ’160 or ’902 patents. Similarly, the ’702 patent never mentions NPS or 

RADIUS, the AAA protocol that NPS implements. None of the three patents is directed toward 

any Microsoft product. Any attempt by WSOU to apply its self-serving labels of the asserted 

patents in front of the jury would be a blatant attempt to confuse and mislead the jury into 

believing that the accused products and functionalities practice the patents, suggesting that 

WSOU is entitled to a finding of infringement. WSOU should be precluded from referring to the 

Asserted Patents as being related to anything beyond what the claim language and the Court’s 

claim constructions allow.

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 18 of 22
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X. UNRELATED LAWSUITS OR VERDICTS INVOLVING MICROSOFT 

Microsoft respectfully requests that the Court preclude WSOU pursuant to Fed. R. Evid. 

402 and 403 from presenting any argument, evidence, or testimony concerning lawsuits or 

verdicts involving Microsoft other than the three related lawsuits that are the subject of this trial. 

The jury is being asked to determine the issues of infringement and invalidity for the 

’160, ’902, and ’702 patents. Extraneous lawsuits have no relevance to these issues, and 

introduction of any argument, evidence, or testimony related to such lawsuits would risk creating 

an unnecessary side show or “trial within a trial” on matters wholly unrelated to the patents-insuit, wasting the time and resources of both the parties and the Court. See Fed. R. Evid. 403. The 

Court should therefore preclude WSOU from presenting any such evidence. See Datatreasury 

Corp. v. Wells Fargo & Co., Civil Action No. 2:06-CV-72 DF, 2010 WL 11468934, at *24 (E.D. 

Tex. Oct. 5, 2010) (“[E]vidence of other litigation offered to prove Defendant’s liability, 

willfulness, or the extent of damages should be excluded pursuant to at least Federal Rules of 

Evidence 403, 404, and 408 unless such litigation is directly relevant to the patents in suit or is 

otherwise shown to be relevant to issues raised at trial.”) (citation omitted); Surface Joint 

Venture v. E.I. DuPont de Nemours & Co., No. A-02-CA-043-SS, 2003 WL 26101190, at *1 

(W.D. Tex. Feb. 3, 2003) (granting motion in limine as to evidence of defendant’s unrelated 

litigation). 

XI. IPCAPITAL GROUP, INC. VALUATION REPORT

Microsoft respectfully requests that this Court preclude WSOU pursuant to Fed. R. Evid. 

402 and 403 from presenting any argument, evidence, or testimony concerning the October 31, 

2018 third-party valuation report prepared by ipCapital Group, Inc. (“ipCG Report”) that WSOU 

produced in these cases. The ipCG Report bears no relation to the asserted patents or the accused 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 19 of 22
Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 20 of 22
15 

DATED: May 17, 2022 Respectfully submitted,

/s/ Melissa R. Smith

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

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 

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 21 of 22
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CERTIFICATE OF SERVICE

I certify that on May 17, 2022, the documents filed with the Clerk of Court via the 

Court’s CM/ECF system under seal in the above-captioned cases were subsequently served on 

all counsel of record by electronic mail. 

DATED: May 17, 2022 /s/ Melissa R. Smith

ATTORNEY FOR MICROSOFT 

CORPORATION

Case 6:20-cv-00465-ADA Document 151 Filed 05/24/22 Page 22 of 22