Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corporation et al

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United States
 District Court
Northern District of California
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
KAWASAKI JUKOGYO KABUSHIKI
KAISHA,
Plaintiff,
v.
RORZE CORPORATION, et al.,
Defendants.
Case No. 22-cv-04947-PCP
SECOND PRETRIAL ORDER
Re: Dkt. Nos. 288, 289, 290, 291, 292, 293,
294, 295, 296, 297, 303, 310, 311, 313, 314,
316, 317
Trial in this case is set to begin on March 2, 2026. The Court held a pretrial conference on
February 3, 2026. Before the Court are the parties’ motions in limine, disputed jury instructions
and verdict forms, several additional issues raised in the parties’ joint pretrial statement, and
requests to seal various documents submitted with the parties’ pretrial filings. The Court addresses
each filing, as well as additional trial logistics, below.
I. Issues Raised in the Joint Pretrial Statement
In their joint pretrial statement, the parties dispute (1) “[w]hether the Court disposed of
Rorze’s unpatentable subject matter defense pursuant to 35 U.S.C. § 101 in its Order denying
Rorze’s Motion for Judgment on the Pleadings” and (2) “[w]hether the Court disposed
of Rorze’s noninfringement argument that the load port rear cover is the inside surface of the front
wall in its Order denying Rorze’s Motion for Summary Judgment of Noninfringement.” The
answer to both questions is yes.
A. The Court disposed of Rorze’s unpatentable subject matter defense.
The Court’s order denying Rorze’s motion for judgment on the pleadings disposed
of Rorze’s unpatentable subject matter defense. The Court explained that Rorze’s patent-
ineligibility defense “fails at Alice’s first step” because “the asserted claims are not directed to an
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abstract idea” like “collision avoidance.” See Dkt. 263 at 9–10. “Rather, by their plain language,
the patents address the non-abstract idea of ‘[a] wafer transfer apparatus for transferring a
wafer[.]’” Id. (quoting RE772, 29:66).
Rorze’s arguments that this analysis did not conclusively resolve its patent-ineligibility
defense fail.
First, Rorze argues that the Court’s conclusion turned on inferences drawn in Kawasaki’s
favor, but it neither identifies any such inferences nor explains what alternate inferences might
alter the Court’s conclusion that the patents address a non-abstract idea.
Second, Rorze argues that the Court’s earlier analysis did not account for relevant facts
that may come to light at trial. For example, Rorze posits that:
the trial evidence could bear on the issue of whether a POSA would
understand whether the claimed inequalities do, in fact, produce the
enumerated improvements over the prior art as promoted by the patent
specification, or whether a POSA would instead understand that these
numerous alleged improvements are exaggerations of things already
achieved in the prior art … .
But the Federal Circuit has held “that step one of the Alice framework does not require an
evaluation of the prior art or facts outside of the intrinsic record regarding the state of the art at the
time of the invention.” CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1374 (Fed. Cir. 2020).
Instead, courts need only “examin[e] the patent claims in view of the plain claim language,
statements in the written description, and the prosecution history, if relevant.” Id. The Court has
already done so. And while “[i]t is within the trial court’s discretion whether to take judicial notice
of a longstanding practice where there is no evidence of such practice in the intrinsic
record,” id. at 1373, Rorze has not suggested that any longstanding practice exists that was not
reflected in the intrinsic record considered by the Court. Its general arguments that some
unspecific “trial evidence could bear on the issue” does not merit an exercise of the Court’s
discretion to reconsider its prior ruling.
B. The Court disposed of Rorze’s non-infringement argument that the load port
rear cover is the interior surface of the front wall.
The Court’s order denying Rorze’s motion for summary judgment conclusively rejected
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Rorze’s argument that the load port rear cover is the inside surface of the front wall. See Dkt. No.
263-1 at 19 (explaining that Rorze’s “argu[ment] that the load port cover comprises the ‘interior
surface of the front wall’ … is at odds with the language of the patents and the Court’s claim
construction order”).
Rorze reasserts the argument raised in its motion to clarify the summary-judgment order
that the order modified the Court’s original claim construction. Rorze suggests that because the
Court’s modified the claim construction, it should have an opportunity to raise new non-
infringement theories under the modified claim construction. The problem for Rorze is that, as the
Court has already explained, “[n]othing in the summary-judgment order modified or expanded on
the claim construction.” Dkt. No. 284 at 1. For Rorze’s benefit, the Court addresses Rorze’s
unavailing arguments to the contrary below.
First, Rorze contends that the summary-judgment order newly construed the “robot
invasion restrict[ed] region” as necessarily “enclos[ing] the interface space by partitioning it from
the exterior space.” But the claim-construction order already specified that the “interface space” is
“the volume enclosed by the six walls of the interface space forming portion.” Dkt. No. 141 at 7
(emphasis added). “Enclosed” means “completely surrounded,” Enclose, Collins Dictionary,
https://www.collinsdictionary.com/us/dictionary/english/enclose (last visited Oct. 8, 2025), or
“closed in,” Enclosed, Merriam-Webster, https://www.merriam-webster.com/dictionary/enclosed
(last visited Oct. 8, 2025). By using the term “enclosed” in its construction of “interface space,”
the Court thus conveyed that the walls of interface space must completely surround the space and
close it off from the exterior space.
Second, Rorze argues that the summary-judgment order newly determined that the “robot
invasion restricted region” must “extend to the full height of the interface space” so as to make
“the length B” “a single, consistent measurement between the front wall and the rear
wall” regardless of “whether it is measured from the top, bottom or middle of the interior surface
of the front wall.” Again, that was already apparent from the Court’s claim-construction order.
There, the Court specified that “the length B” is “the length” of the interface space, indicating that
the length B is a single and consistent length. Dkt. No 141 at 8. And in discussing its construction
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of “interface space,” the Court stated that the interface has only “one length in each dimension,”
making clear that “length B” (the “forward-backward length” of the interface space) cannot vary.
In sum, the Court’s summary-judgment order conclusively rejected Rorze’s arguments
concerning the load port rear cover based on reasoning that should have been apparent to Rorze at
the time. So there is no basis to revisit that ruling or to permit Rorze to concoct new non-
infringement theories at this late stage.
C. Additional Issues
The parties have agreed upon several additional issues. First, they agree that each juror
shall receive a notepad, pen, and copies of the asserted patents. Second, the parties agree that the
Court shall display a specified version of the Federal Judicial Center’s video entitled “Introduction
to the Patent System” as part of the preliminary jury instructions. The Court approves both
agreements.
II. Motions In Limine
Each party has filed several motions in limine. The Court grants Kawasaki’s third motion
in full and grants Kawasaki’s fourth motion and Rorze’s fourth motion in part. The Court denies
Kawasaki’s first, second, and fifth motions and Rorze’s first, second, and third motion.
A. The Court denies Kawasaki’s first motion in limine.
Kawasaki seeks to preclude Rorze from introducing evidence or argument at trial
about Rorze’s meetings and communications with its counsel concerning Kawasaki’s patent-
infringement claims. This motion is denied.
The evidence and arguments Kawasaki seeks to exclude concern its claim of willful
infringement. As a defense to the claim of willfulness, Rorze relies on a non-infringement opinion
from an employee. Kawasaki has previously argued that Rorze’s reliance on that employee’s
opinion was unreasonable because he neither is an attorney nor consulted outside counsel. Should
Kawasaki reassert that argument at trial, Rorze wishes to respond with evidence that the
employee consulted with Rorze’s counsel—that is, Rorze wants to raise the fact of the employee’s
communications with counsel. But Rorze expressly disclaims any intent to adduce evidence
concerning the substance of those communications, which it claims are privileged and which it
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has consequently not disclosed to Kawasaki.
Kawasaki seeks to prevent the introduction of evidence concerning these communications
with counsel on three bases. None are availing.
First, Kawasaki argues that Rorze failed to comply with Patent Local Rule 3-7, which
requires “each party relying upon advice of counsel as part of a patent-related claim or defense” to
produce certain documents “[n]ot later than 30 days after” the Court issues a claim-construction
ruling. Kawasaki insists that, to introduce evidence of attorney-client communications at trial,
Rorze needed (and failed) to produce “any written advice and documents” and “a written summary
of any oral advice” provided by its counsel within 30 days of the Court’s claim-construction order.
See Patent L.R. 3-7(a)–(b). But that is necessary only where “the attorney-client and work product
protection have been waived” for the communications at issue, which is not the case here. Id.
Absent such a waiver, a party relying on an advice-of-counsel defense need only “[s]erve a
privilege log identifying documents … relating to the subject matter of the advice which the party
is withholding on the grounds of attorney-client privilege or work product protection.” Patent L.R.
3-7(c). Kawasaki has not argued that Rorze failed to provide such a privilege log.
Second, Kawasaki argues that Rorze may not introduce evidence at trial that Rorze refused
to disclose in discovery based on the attorney-client privilege. But Rorze does not seek to
introduce privileged communications—Rorze relies on the fact of its employee’s communications
with counsel, not the substance of those communications. Only the latter falls within the attorney-
client privilege. United States v. Carrillo, 16 F.3d 1046, 1050 (9th Cir. 1994), as amended (May
17, 1994). And accordingly, Rorze disclosed the former in discovery. Kawasaki acknowledges as
much, noting that “Rorze identified the existence of discussions with … counsel but failed to
disclose the substance of any such communications.” Cases in which courts excluded the
substance of undiscoverable attorney-client communications therefore do not support the
exclusion of this evidence. See, e.g., Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1294
(Fed. Cir. 2023). For similar reasons, Kawasaki’s argument that it would be “surprised” by
evidence concerning the fact of Rorze’s communications with counsel fails, as Rorze disclosed
that fact in discovery. See id.
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Third, Kawasaki contends that even the bare fact of these communications with counsel is
prejudicial because it “would be highly misleading and cause jury confusion because the jury
could assume without evidence that Rorze’s lawyers endorsed Rorze’s non-infringement
position.” But it is far from clear that the jury would infer from Rorze’s refusal to disclose
attorney-client communications that those communications were favorable. The Federal Circuit
has explained that where the substance of communications is not disclosed, juries commonly infer
that the communications would be damaging to the withholding party. See Knorr-Bremse
Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345 (Fed. Cir. 2004) (en
banc). It is because such inferences are common and could “distort the attorney-
client relationship” that the Federal Circuit held in 2004 that “no adverse inference shall arise from
invocation of the attorney-client and/or work product privilege.” Id. at 1344–45. Thereafter,
Congress followed suit by enacting 35 U.S.C. § 298, which provides that:
[t]he failure of an infringer to obtain the advice of counsel with
respect to any allegedly infringed patent, or the failure of the infringer
to present such advice to the court or jury, may not be used to prove
that the accused infringer willfully infringed the patent or that the
infringer intended to induce infringement of the patent.
These authorities suggest that Rorze’s non-disclosure of the substance of its communications with
counsel are as likely to produce an improperly negative inference as an improperly positive one.
For these reasons, Kawasaki’s first motion in limine is denied. Should Rorze expressly or
impliedly disclose the contents of its communications with counsel at trial, or adduce evidence
concerning such communications that is not relevant to the issues before the jury, nothing in this
order precludes Kawasaki from objecting at that time.
B. The Court denies Kawasaki’s second motion in limine.
Kawasaki seeks to preclude Rorze and its expert “from providing any evidence, testimony
or opinions regarding non-infringement and the front wall.” This motion is also denied.
Kawasaki’s motion stems from this Court’s previous rejection of Rorze’s argument that the
load port rear cover of its accused products constitutes the interior surface of the front wall under
the Court’s claim construction. As support for that argument, Rorze relied on the testimony of an
expert. In its summary-judgment order, the Court explained that Rorze’s argument is at odds with
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the Court’s claim construction. Neither Rorze nor its expert affirmatively offered any other theory
of non-infringement. In fact, when asked whether Rorze’s products infringe if the load port rear
cover is not considered the interior surface of the front wall, Rorze’s expert said he did not know
and could not answer what else might constitute the interior surface of the front wall. Kawasaki
therefore argues that the Court should preclude Rorze and its expert from providing any evidence
relating to non-infringement or the front wall structure of Rorze’s accused products.
Kawasaki is correct about two points. First, the Court must preclude arguments and
evidence that are based on Rorze’s already-rejected theory that the load port rear cover constitutes
the interior surface of the front wall, which does not comport with the Court’s claim construction.
See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009) (“No party may
contradict the court's construction to a jury.”). Second, Rorze’s expert may not offer testimony at
trial that he did not include in his earlier expert report. See Nationwide Transp. Fin. v. Cass Info.
Sys., Inc., 523 F.3d 1051, 1062 (9th Cir. 2008).
But it does not follow from those two points that Rorze may not contest infringement or
that Rorze’s expert may not testify at trial. After all, Kawasaki bears the burden of establishing
infringement, see Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095 (Fed. Cir. 2008), so
Kawasaki must show by a preponderance of the evidence that Rorze’s products meet the claim
limitations of the asserted patents. In this case, that means Kawasaki must establish that the
accused products have a “robot invasion restricted region” created by the extension of FOUP
openers beyond the interior surface of the front wall. Although Rorze may no longer affirmatively
argue that its products’ load port rear cover is the front wall, it may argue that Kawasaki failed
to meet its burden. For example, Rorze may argue that Kawasaki has not identified a front wall
in Rorze’s products beyond which the FOUP openers extend. Similarly, while Rorze’s expert may
not offer his affirmative view that the load port rear cover is the interior surface of the front wall,
he may criticize Kawasaki’s theory that another structure is the front wall, as he included those
criticisms in his expert report.
Accordingly, Kawasaki’s second motion in limine is denied. To the extent Rorze offers
opinions or arguments at trial that were not properly disclosed beforehand, Kawasaki may object
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on that basis at trial. Should a party object to an expert witness’s testimony on the ground that it
was not properly disclosed, the Court expects counsel for the party offering that expert witness to
immediately identify, by page and paragraph number of the expert report, where the opinion at
issue was disclosed. All parties should annotate their expert witness examination outlines with
those page and paragraph numbers to enable immediate responses to such objections.
C. The Court grants Kawasaki’s third motion in limine.
Kawasaki seeks to exclude any argument or evidence concerning Rorze’s patents related to
a load port design. The motion is granted.
Admission of evidence concerning a defendant’s patents is governed by Rule 403
balancing. See Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1572 (Fed. Cir. 1986). That rule
authorizes exclusion of relevant evidence only where “its probative value is substantially
outweighed by a danger of … unfair prejudice, confusing the issues, misleading the jury, undue
delay, wasting time, or needlessly presenting cumulative evidence.” Fed. R. Evid. 403.
The probative value of evidence concerning Rorze’s patents is minimal. As Rorze
recognizes, the fact that it has patents covering the accused products is not relevant to whether
those products infringe Kawasaki’s patents. See Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d
1553, 1559 (Fed. Cir. 1996). Rorze argues that its patents show (1) the reasons for its accused
products’ commercial success, which is relevant to a reasonable royalty rate; (2) that the accused
products use a vertical-moving load port rather than the more conventional horizontal-moving load
port used by Kawasaki, which suggests that any infringement was not willful; and (3) Rorze’s
innovativeness, which Kawasaki has put in issue. Even assuming that Rorze’s patents are
probative as to these issues, however, so too is other evidence. For example, the fact of Rorze’s
unique use of vertical-moving load ports is likely as probative of the company’s innovativeness,
the commercial success of its products, and the reasonableness of its non-infringement belief as
Rorze’s patents. Because “the same information” for which it seeks to rely on its patents “can be
presented through other means,” introducing “[t]he introduction of the patent … would therefore
be cumulative.” Cameco Indus., Inc. v. Louisiana Cane Mfg., Inc., No. CIV. A. 92-3158, 1995
WL 468234, at *6 (E.D. La. July 27, 1995).
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On the other side of the scale, allowing Rorze to discuss its own patents could significantly
distract and confuse the jury by shifting the focus of the trial to the scope and validity of those
patents. See Glaros, 797 F.2d at 1573; Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., No.
C-95-03577 DLJ, 2000 WL 34334583, at *6 (N.D. Cal. Mar. 31, 2000), aff’d, 265 F.3d 1294 (Fed.
Cir. 2001). For example, Rorze’s assertion that its patents are the source of its accused products’
commercial success necessarily raises questions about whether the accused products actually
practice Rorze’s patents. The risk of such detours and distractions substantially outweighs the
minimal probative value of Rorze’s patents. See Advanced Cardiovascular, 2000 WL 34334583,
at *6. The Court therefore grants Kawasaki’s third motion in limine.
D. The Court denies as moot Kawasaki’s fourth motion in limine.
Kawasaki seeks to preclude Rorze “from offering any argument or evidence that Kawasaki
improperly targeted the accused products with its patent filings.” Rorze has disclaimed any intent
to argue that Kawasaki’s use of the reissue process to ensure that the assert patents cover the
accused products was improper. And the parties agree that evidence concerning the timing of
Kawasaki’s patent filings and other related events may properly be introduced to provide
background information and as support for Rorze’s arguments concerning willfulness and
obviousness. The Court therefore denies Kawasaki’s fourth motion in limine as moot, without
prejudice to objections to particular arguments or testimony that may arise at trial concerning
Kawasaki’s targeting of the accused products.
E. The Court denies Kawasaki’s fifth motion in limine.
Kawasaki seeks to exclude certain opinions of Rorze’s expert concerning the asserted
patents’ “robot invasion restricted region” (RIRR) claim that conflict with the Court’s claim
construction. This motion is denied due to its overbreadth.
In his report, Rorze’s expert relied on a construction of the RIRR claim that the Court
rejected in its order denying Rorze’s motion for summary judgment. Kawasaki therefore asks the
Court to preclude (1) any testimony by Rorze’s expert concerning his now-rejected construction
and (2) any argument by Rorze that, before this Court’s claim construction, it understood the
scope of the asserted patents based on its expert’s now-rejected view.
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Because “no party may contradict the [C]ourt’s construction” of claim terms “to a
jury,” Exergen, 575 F.3d at 1321, Kawasaki is correct that neither Rorze nor its expert may present
the construction of the RIRR limitation offered in the expert’s report. Doing so would be both
contrary to the law of the case and risk confusing the jury. See Cordis Corp. v. Boston Sci. Corp.,
561 F.3d 1319, 1337 (Fed. Cir. 2009); Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361,
1371 n.2 (Fed. Cir. 2007).
But there is no apparent risk that Rorze will contradict the Court’s claim construction, as
Rorze expressly disclaims any intent to do so. Rorze seeks to introduce its expert’s opinion and
other related evidence only to show that, prior to the Court’s claim construction, Rorze reasonably
(but mistakenly) construed the patents differently. That is a valid defense to Kawasaki’s claim of
willfulness. In the related context of induced infringement, for example, a defendant may show
that it lacked knowledge of infringement because it relied on a reasonable construction of an
asserted patent that differed from the plaintiff’s. See Commil USA, LLC v. Cisco Sys., Inc., 575
U.S. 632, 642 (2015). For that reason, the Federal Circuit has engaged in a detailed analysis as to
the reasonableness of a defendant’s mistaken construction of a patent in order to determine
whether substantial evidence supported a jury’s induced-infringement verdict. See Warsaw
Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1348–50 (Fed. Cir. 2016). So too
here, Rorze may use its expert’s opinion and other evidence to argue that its construction of the
asserted patents, though inconsistent with the Court’s, was a reasonable basis for its belief that the
accused products did not infringe.
Kawasaki argues that allowing Rorze to introduce evidence concerning its prior
construction of the RIRR claim would mislead and confuse the jury. But given Rorze’s
acknowledgement that it may not contradict the Court’s claim construction, it is unlikely that
Rorze or its expert will do so. Kawasaki may raise objections to the scope of Rorze’s argument
and its expert’s testimony at trial. For now, Kawasaki’s fifth motion in limine is denied.
F. The Court denies Rorze’s first motion in limine.
Rorze asks the Court to preclude Kawasaki “from introducing evidence, opinion, and
argument regarding the submission of Rorze’s invalidity contentions for prosecution of
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Kawasaki’s Non-Asserted Patents for the issue of obviousness.” This motion is denied.
Kawasaki seeks to introduce evidence of the prosecution history of RE671, a non-asserted
patent that is a reissue of the same parent patent as the asserted patents and that was issued during
this litigation. Before the PTO, Kawasaki submitted Rorze’s March 2023 invalidity contentions,
which Kawasaki contends are similar to Rorze’s invalidity arguments in this case in their reliance
on the SEMI E63 standard and Kazunari reference. After indicating that it had reviewed all the
documents presented, the PTO examiner rejected the invalidity arguments. And Kawasaki’s expert
opined in his report that the arguments rejected by the PTO examiner involve claim language that
is nearly identical to language in the claims of the assert patents.
Rorze argues that the prosecution history of RE671 has no relevance to the obviousness or
invalidity of the asserted patents. The Court has already suggested the opposite, see Dkt. No. 263
at 23 (concluding that a genuine dispute of material fact exists as to obviousness based in part on
“findings made during prosecution of the RE671 from which a jury could determine that SEMI
E63 does not disclose elements [j] and [k]”), and its reasoning has not changed. As the Federal
Circuit has explained, the prosecution history of a non-asserted patent derived from the same
parent application “applies with equal force to subsequently issued patents that contain the same
claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999); see
also Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004). And Rorze
offers little reason to think that the reverse is not true—that is, that the prosecution of a related,
subsequently issued patent would not bear on the validity of its earlier-issued siblings. Cases that
do not involve the exclusion of later-issued in-family patents are not to the contrary. See Apple
Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2018 WL 2010621, at *4 (N.D. Cal. Apr. 30,
2018); MicroVention, Inc. v. Balt USA, LLC, No. 819CV01335, 2022 WL 18284997, at *6 (C.D.
Cal. Dec. 12, 2022); TecSec v. Adobe Inc., No. 1:10-CV-115, 2018 WL 11388472, at *6 (E.D. Va.
Nov. 21, 2018).
Rorze’s arguments that evidence of RE671’s prosecution history would be prejudicial do
not withstand scrutiny. First, Rorze argues that the PTO examiner’s conclusions as to obviousness
might unduly sway the jury. But the Federal Circuit has explained that a factfinder may justifiably
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rely on a PTO examiner’s findings related to prior art. See Luv n’ Care, Ltd. v. Laurain, 98 F.4th
1081, 1101 (Fed. Cir. 2024). Next, Rorze argues that the prosecution history of RE671 is not
probative of the asserted patents’ obviousness because it contains different claim language. The
existence of some differences does not suggest that the PTO examiner’s determinations as
to shared claim language is irrelevant to the asserted patents’ obviousness. And while such
differences may decrease the evidentiary value of RE671’s prosecution history, that is best
addressed through cross-examination. Third, Rorze suggests that the PTO examiner’s review of
the record before it may have been less than thorough. Yet Rorze has not offered sufficient
evidence to overcome the presumption that PTO examiners perform their jobs correctly and that
exclusion is therefore proper. See Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d
1555, 1574 (Fed. Cir. 1992). Finally, Rorze argues that RE671’s prosecution history should be
excluded to avoid the confusion and delay that might result from a mini-trial over the relevance
and validity of the PTO examiner’s determinations. To the extent such a result is likely, it does
not substantially outweigh the significant probative value of RE671’s prosecution history.
Accordingly, the Court denies Rorze’s first motion in limine.
G. The Court denies Rorze’s second motion in limine.
Rorze seeks to exclude all evidence, opinion, and argument regarding the presumption of
validity of the asserted patents. Whether to instruct the jury on the presumption of validity is
entirely within the Court’s discretion. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258
(Fed. Cir. 2004); Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563–64 (Fed. Cir. 1993). The
Court exercises its discretion to instruct the jury on the presumption of validity to clarify the
reasons for Rorze’s burden to demonstrate invalidity by clear and convincing evidence. See
Volterra Semiconductor Corp. v. Primarion, Inc., No. C-08-05129 JCS, 2011 WL 4079223, at *10
(N.D. Cal. Sept. 12, 2011); Donnelly v. Gentex, 918 F. Supp. 1126, 1131 (W.D. Mich. 1996).
Rorze’s second motion in limine is denied.
H. The Court denies as moot Rorze’s third motion in limine.
Rorze seeks to preclude Kawasaki “from introducing evidence, opinion, and argument
disclosing the contents of certain of the Court’s previous Orders addressing summary judgment
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arguments and the parties’ experts.” At the pretrial conference, the parties agreed to seek the
Court’s permission prior to introducing any court order at trial. The Court therefore denies Rorze’s
third motion in limine as moot.
I. The Court grants in part and denies in part Rorze’s fourth motion in limine.
Rorze asks the Court to provide the jury with a claim construction that reflects the Court’s
analysis of the RIRR claim limitation at summary judgment. Rorze also requests permission to
raise new arguments and evidence relating to the claim construction clarified by the Court’s
summary judgment order. The first request is granted; the second is denied.
As explained above, Rorze argued at summary judgment that the load port rear cover of the
accused products constituted the interior surface of the front wall for purposes of the RIRR claim
limitation. The Court rejected that argument because, as was already apparent from the Court’s
earlier claim construction, the front wall must extend the full height of the interface space so as to
partition it from the exterior space and ensure that the width of the interface space (the length B) is
a consistent measurement no matter the height at which it is measured. Because the load port rear
cover does not reach the top or bottom of the interface space, the Court reasoned, it neither
partitions that space from the exterior space nor lies a consistent distance from the rear wall.
Rorze now asks the Court to provide the jury with a claim construction reflecting the
Court’s reasoning in its summary judgment order—i.e., to instruct the jury that the front wall must
(1) fully partition the interface space from the exterior space and (2) extend the full height of the
interface space so that the length B is a single, consistent measurement between the front and rear
walls at all heights. The Court agrees that such an instruction is appropriate. Rorze’s proposed
claim-construction language accurately captures the Court’s reasoning in the summary judgment
order, which in turn reflects and clarifies the Court’s claim construction. There is therefore no risk
that such an instruction would cause prejudice. Declining to provide this clarifying language to the
jury could cause prejudice, however, by enabling arguments that structures that do not fully
enclose the interface space from the exterior space are the front wall, which would not comport
with the Court’s claim construction. Indeed, Kawasaki indicated at the pretrial conference that it
intends to make just such an argument, making a clarifying instruction all the more necessary.
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Rorze also asks that it be permitted to introduce never-before-disclosed arguments and
evidence about non-infringement at trial. The Court denies this request. Courts generally do not
permit parties to raise new theories so late in the day. See, e.g., Oracle Am., Inc. v. Hewlett
Packard Enter. Co., No. 16-CV-01393-JST, 2022 WL 20403763, at *3-5 (N.D. Cal. May 3,
2022); Asia Vital Components Co., Ltd. v. Asetek Danmark A/S, 377 F. Supp. 3d 990, 1002-05
(N.D. Cal. 2019). Rorze argues that an exception is warranted here because it failed to raise these
arguments earlier due only to its misunderstanding of the Court’s claim construction. But Rorze
cites no authority suggesting that a party’s mistaken understanding of a patent’s scope or a court’s
claim construction justifies allowing belated introduction of new theories of non-infringement.
And even were Rorze’s initial misunderstanding justified, that does not explain its failure to
disclose its new non-infringement theories in the seven months since the Court’s summary-
judgment order. There is no basis to allow Rorze to shift its position on the eve of trial and thereby
“ambush” Kawasaki. See Toyo Tire Corp. v. Atturo Tire Corp., No. 2022-1817, 2024 WL
4404358, at *4-7 (Fed. Cir. Oct. 4, 2024).1 For similar reasons, the Court denies Kawasaki’s oral
request at the pretrial conference to introduce previously undisclosed arguments and evidence
relating to the RIRR limitation.2
The Court grants Rorze’s fourth motion in limine only to the extent it seeks a jury
instruction that includes the Court’s clarifications in its summary-judgment order of its claims
construction.
III. Proposed Jury Instructions and Verdict Forms
The parties dispute the language to be used in several of the jury instructions and verdict
forms. Concurrent with this order, the Court files tentative jury instructions and a tentative verdict
form.
1 Rorze may still assert arguments already raised at summary judgment, such as its expert’s
argument that Kawasaki has failed to identify any “front wall” because the BOLTS plane does not
fully enclose the interface space.
2 Should the parties agree that permitting evidence regarding nondisclosed theories of
infringement or non-infringement is warranted given the Court’s decision to include the
clarifications of its claims construction in the jury instructions, they may so stipulate. The Court
will promptly address any such stipulation.
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Any objections to the tentative jury instructions and verdict forms shall be filed by no later
than February 20, 2026. The parties shall not object to a tentative instruction on a basis that the
Court has already rejected unless (1) the Court indicated at the pretrial conference that it would
revisit such instructions upon request, (2) binding authority suggests that the Court’s tentative
instruction is contrary to law, or (3) the evidentiary basis for the Court’s tentative instruction has
materially changed since the pretrial conference. As the Court noted at the pretrial conference, the
parties will have a final opportunity to request changes to the jury instructions and verdict form at
the charging conference following the close of evidence.
IV. Sealing Requests
In connection with their pretrial filings, the parties filed several administrative motions to
seal. Pursuant to this Court’s order, Dkt. No. 321, the parties filed a joint motion consolidating
their sealing requests. The “compelling reasons standard” governs the parties’ sealing requests.
See Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006).
Insofar as Rorze seeks in the consolidated motion to redact information contained in the
parties’ motions in limine (i.e., Exhibits A, D, and I to the consolidated sealing motion), its request
is denied. “Only in rare circumstances should a party seek to file portions of a … brief under seal.”
Civ. L.R. 79-5(e). Rorze has not demonstrated that this is one of those rare circumstances. It offers
only vague and conclusory assertions that the information it seeks to redact in Kawasaki’s motions
would cause competitive harms or reveal confidential information. See In re Meta Pixel Tax Filing
Cases, No. 22-CV-07557-PCP, 2025 WL 1872974, at *3 (N.D. Cal. May 9, 2025) (“[V]ague
references to competitive harms … provide the Court with an inadequate explanation of how
public dissemination of the specific material it seeks to seal would harm its competitive
standing.”) The parties are ordered to file unredacted versions of the motions in limine on the
public docket within 14 days of this order.
Rorze also requests to redact information contained in the parties’ joint pretrial statement
(Exhibit P to the consolidated sealing motion). The proposed redactions are narrow in scope and
protect confidential information concerning the identity of a major Rorze customer and the
products sold to that customer. Rorze argues that such information about a major customer and
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source of sales is of significant value to its competitors, yet of little interest to the public. See
MasterObjects, Inc. v. Amazon.com, No. 20-cv-08103, 2022 WL 4074653, *1 (N.D. Cal. Sept. 5,
2022). Upon review, the Court is satisfied that compelling reasons exist to seal this information.
See In re Google Location Hist. Litig., 514 F. Supp. 3d 1147, 1162 (N.D. Cal. 2021) (“Compelling
reasons may exist to seal … customer information … that could harm a party’s competitive
standing”) (citation modified). Rorze’s request to seal portions of the joint pretrial statement is
therefore granted.
The parties’ requests to fully seal certain exhibits to the briefing on the parties’ motions in
limine (i.e., Exhibits B, C, E, F, G, H, J, K, L, M, N, and O to the consolidated sealing motion) are
denied without prejudice on the basis of their overbreadth. Any renewed motion must comply with
Local Rule 79-5(a), which requires parties to “minimize the number of documents under seal” and
to avoid sealing documents in their entirety. “[O]verly broad requests to seal may result in the
denial of the motion.” Civ. L. R. 79-5(f)(6). Each party may file a consolidated, narrowly tailored
sealing motion addressing the exhibits to the briefing on the motions in limine within 14 days of
this order. Failure to limit proposed redactions to genuinely sensitive information will result in
denial of the sealing requests and an order that all exhibits be filed on the public docket.
IT IS SO ORDERED.
Dated: February 13, 2026
P. Casey Pitts
United States District Judge
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