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Motions in limine can feel like some of the most impactful-feeling motions in the case. Unlike most motions in our busy federal courts, they are typically addressed very quickly, and almost always by the judge handling trial. They are also normally addressed immediately prior to trial. As such, even if the MIL is denied, the issues presented in the MIL may remain at the top of the judge's mind and can influence the direction of the trial (and make subsequent objections easier).

We got an example of that yesterday in Personal Audio, LLC, v. Google LLC, C.A. No. 17-1751-CFC (D. Del. Sept. 5, 2023). In that case, Chief Judge Connolly granted a post-trial JMOL motion of non-infringement based on an issue that Google teed up at the MIL stage, even though Google lost the MIL.

Google's MIL sought to exclude a specific infringement argument that it expected the plaintiff to take. The Court had construed the claims to require that the accused devices use a single "file" to control audio playback:

I construed "sequencing file" to mean "a file that is received by the player, stored, and used by the processor to both control playback of each song in the ordered sequence and respond to control commands."

Personal Audio, LLC, v. Google LLC, C.A. No. 17-1751-CFC, at 3 (D. Del. Sept. 5, 2023).

Google attempted to exclude an argument, via their MIL, that the accused devices meet this limitation even though they use multiple, different files:

Google stated in the motion [in limine] that Personal Audio "intend[ed] to offer [trial] testimony and argument that the asserted claims can be met when one sequencing file is downloaded and stored but another file is used to control playback."


Plaintiff represented that they weren't going to do that, and the Court took that at face value, denying the motion.

Google then filed a motion for clarification of the claim construction order, requesting more detail and a clarifying construction for the jury. The Court issued an order making clear that using only a second file to control playback was insufficient.

According to the Court, Google's efforts in its MIL and motion to clarify locked down the scope of argument that plaintiff could present at trial:

It was therefore crystal clear by the time trial began that in order to prove direct infringement of the "sequencing file" limitation, Personal Audio had to establish that an individual file was (1) received by the player, (2), stored, and (3) used by the processor to control playback of each song in the ordered sequence and respond to control commands.

Once trial came, it played out just as Google had predicted in its MIL:

As it turned out, Google's prediction about how Personal Audio would attempt to prove at trial the existence of a "sequencing file" in [the accused product] was spot-on.

Google ultimately won JMOL on non-infringement on a pretty technical argument: essentially that the "file" used to control playback was copied, rather than moved—and the Court highlighted the fact that this was all clarified before trial:

[Plaintiff's expert] testimony necessarily means that the data in the [first file] are copied, and the copied data are then moved into [other locations]. As made clear before trial, however, that infringement theory does not satisfy the "sequencing file" claim construction. Accordingly, Google is entitled to JMOL of noninfringement.

There goes plaintiff's $19m verdict and finding of willfulness (ouch!).

So while Google technically lost the MIL, the motion set up its ultimate post-trial win. Could it have won without it? Maybe—but setting up the exact scope of infringement prior to trial definitely helped. And it can't hurt to put a fairly technical and nuanced issue like this at the forefront of a judge's mind going into trial.

This is part of why MILs tend to be precious. You typically only get three, and most of the judges strictly enforce the three-MIL limit. But they are often the best way to shape the evidence and arguments presented at trial. Use them wisely!

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