Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 1 of 7 PageID #: 6229
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`C.A. No. 12-1595-LPS
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`C.A. No. 12-1596-LPS
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`C.A. No. 12-1599-LPS
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`C.A. No. 12-1601-LPS
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`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC. and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`
`Defendants.
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`APPLE INC.,
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`Defendant.
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`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MICROSOFT MOBILE INC.,
`
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`
`
`Defendant.
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`
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`

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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 2 of 7 PageID #: 6230
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`C.A. No. 12-1602-LPS
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`C.A. No. 13-919-LPS
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`C.A. No. 13-920-LPS
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`ARENDI S.A.R.L.’S LETTER RESPONDING TO THE COURT’S SECTION 101
`MOTIONS PRE-HEARING CHECKLIST
`
`
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`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
`
`
`Defendants.
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`GOOGLE LLC,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`OATH HOLDINGS INC., and
`OATH INC.,
`
`
`
`Defendants.
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`

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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 3 of 7 PageID #: 6231
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`
`
`Of Counsel:
`
`SUSMAN GODFREY, LLP
`Stephen Susman
`Seth Ard
`Beatrice Franklin
`Max Straus
`1301 Avenue of the Americas, 32nd Floor
`New York, New York 10019
`Tel: (212) 336-8330
`ssusman@susmangodfrey.com
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002-5096
`Tel: (713) 651-9366
`jlahad@susmangodfrey.com
`
`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`Tel: (206) 516-3880
`kdiehl@susmangodfrey.com
`
`Dated: December 13, 2019
`
`
`
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`Tel: (302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
`
`
`
`
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`

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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 4 of 7 PageID #: 6232
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`Dear Chief Judge Stark:
`
`In accordance with the Court’s October 28, 2019 Order, Plaintiff Arendi S.A.R.L. (“Arendi”)
`submits this letter to address the questions in the Court’s “Section 101 Motions Pre-Hearing
`Checklist.” See D.I. 175.1
`
`1. (a) What claims are representative?
`
`Arendi submits that claim 1 is representative of the asserted claims of the ’843 Patent. Arendi
`submits that claim 1 is representative of the asserted claims of the ’993 Patent. For the ’356 Patent,
`Arendi submits that claim 2 is representative. For the ’854 Patent, Arendi submits that claim 93 is
`representative.
`
`
`(b) For which claims must the Court determine eligibility?
`
`
`’843 Patent: Defendants seek to invalidate all asserted claims of the ’843 Patent. Claims 1 and 23
`are asserted against all Defendants. Claims 8 and 30 are asserted against all Defendants except
`Oath Holdings Inc. and Oath Inc. Claims 13, 15, 17, 18, and 19 are asserted against Google only.
`
`’993 Patent: Defendants seek to invalidate all asserted claims of the ’993 Patent. Claims 1, 5, 8, 9,
`16, 17, and 24 are asserted against all Defendants. Claims 13 and 21 are asserted against all
`Defendants except Oath Holdings Inc. and Oath Inc. Claim 2 is asserted against Oath Holdings
`Inc., Oath Inc, and Google. Claim 18 is asserted against all Defendants except Microsoft Mobile
`Inc., Google, Oath Holdings Inc., and Oath Inc.2
`
`’356 Patent: Claims 2, 11, and 19 are asserted against Google. Google seeks to invalidate claims
`2, 11, and 19.
`
`’854 Patent: Claim 93 is asserted against Google; Google seeks to invalidate claim 93. Other
`asserted claims were held indefinite during claim construction.
`
`2. (a) Is claim construction necessary before patentability can be decided?
`
`The Court has already issued a claim construction order, see D.I. 143, and the parties have
`submitted letter briefs addressing the constructions’ effect on this §101 motion, see D.I. 148, 149,
`151, 152. As Arendi explained in its opening letter brief, the Court’s claim construction order
`confirms that the asserted claims are directed to a specific method for solving a computer-based
`problem, narrows the preemptive footprint of the claims, and solidifies the non-abstract character
`of the claims. D.I. 149, at 1-2.
`
`
`
`1 Unless otherwise noted, all docket items refer to Case No. 13-cv-919.
`2 D.I. 149 inadvertently stated that claim 2 of the ’993 Patent was not asserted against the Oath
`Defendants and that claims 13 and 21 are being asserted. Claims 13 and 21 are not asserted against
`the Oath Defendants. Claim 2 is being asserted against the Oath Defendants.
`
`

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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 5 of 7 PageID #: 6233
`Page 2
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`3. If you are contending that factual dispute(s) should cause the Court to deny the motion,
`identify with specificity such factual dispute(s).
`
` A
`
` motion for judgment on the pleadings will be granted “only if no relief could be afforded under
`any set of facts that could be proved.” Intellectual Ventures I LLC v. AT&T Mobility LLC, 235 F.
`Supp. 3d 577, 584 (D. Del. 2016). Defendants’ motions can be resolved in Arendi’s favor at step
`one because the claims are not drawn to an abstract idea. Should the Court, however, consider
`under Alice step two whether any claim “involve[s] more than the performance of well-understood,
`routine, [and] conventional activities previously known to the industry,” the following factual
`disputes exist. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018); see also Cellspin
`Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1318 (Fed. Cir. 2019) (“[F]actual disputes about whether
`an aspect of the claims is inventive may preclude dismissal at the pleadings stage under §101.”).
`
`As Arendi explained in its Responsive Brief, D.I. 139, the patents’ specification recites how the
`claimed inventions “allow the user to locate, retrieve, and use information from an outside data
`source without having to leave or stop working within a document.” Id. at 1. As the specification
`notes, the inventions provide “a function item … [that] initiates retrieval of a name and address
`and/or other person or company related information, while the user works simultaneously in
`another document, e.g., a word processor.” Id. at 2 (citing ’843 Patent col. 2 ll. 14-23). Realizing
`the benefits of the invention “requires little to no training on the part of the user” and can be
`accomplished “with a minimal number of user commands.” Id. at 3 (citing ’843 Patent at col. 9 ll.
`51-54). The Federal Circuit described the invention as “directed to providing beneficial
`coordination between a first computer program displaying a document and a second computer
`program for searching an external information source”; echoing the specification, it said, “the
`patent allows a user to access and conduct a search using the second computer program while
`remaining in the first computer program displaying the document.” Arendi S.A.R.L. v. Apple, Inc.,
`832 F.3d 1355, 1357 (Fed. Cir. 2016).
`
`Like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the
`claims give users access to outside content without forcing them to separately launch another
`computer program, and they do so in a way that breaks with the expected sequence of events. At
`a minimum, a question of fact thus exists about whether these features of the inventions are more
`than well-understood, routine, and conventional activity suggested by prior art. Berkheimer, 881
`F.3d at 1367.
`
`4. (a) Are there materials other than the complaint/answer and the intrinsic patent record
`(i.e., the patent and prosecution history) that you contend the Court should consider in
`evaluation the motion?
`(b) If so, identify those materials and the basis on which the Court may properly consider
`them at this stage.
`
`
`Yes. The Court can, and should, consider the patents at issue in the Federal Circuit cases cited by
`Arendi in opposition to the motion. In particular, the Court should consider the patents attached as
`Exhibits 5-7 to Arendi’s responsive §101 brief. See D.I. 139-1. These patents may properly be
`considered because they are incorporated by reference into the opinions discussing them and they
`are matters of public record. See Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 n.9
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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 6 of 7 PageID #: 6234
`Page 3
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`(Fed. Cir. 2018) (“On a motion for judgment on the pleadings, however, the court may consider
`matters of public record.” (quotations omitted)).
`
`5. What Supreme Court or Federal Circuit case is this case most like? That is, if the Court
`is to analogize the claims at issue in the motion to claims that have previously been found
`to be patent (in)eligible by a higher court, which case provides the best analogy?
`
`
`Arendi submits that the answer to the Court’s question differs between Alice step one and step two.
`At step one, the eligibility of the asserted claims is most clearly demonstrated by the Federal
`Circuit’s decision in Data Engine Technologies. See D.I. 139, at 4-14. The eligible claim in Data
`Engine was “directed to a specific method for navigating through three-dimensional electronic
`spreadsheets.” 906 F.3d at 1008. The Court noted that the method of claim 12 invoked “paradigms
`of real-world objects which the user already knows how to use, such as notebook tabs,” id. at 1003,
`but nonetheless solved a “known technological problem in computers in a particular way—by
`providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the
`three-dimensional worksheet environment,” id. at 1008.
`
`Similarly, the representative claims here are directed to a specific method of searching for and
`retrieving information while contemporaneously working in an electronic document. The claims
`here, like the Data Engine claim, describe steps consisting of displaying certain information and
`receiving inputs. And the Data Engine Court rejected the analogy the defendants made in that case
`to binder dividers, file folders, and Post-It notes to support the argument that the claim was
`ineligible because “humans have long used tabs to organize information.” Id. at 1011; see also
`ibid. (“[I]t is not enough . . . to merely trace the invention to some real-world analogy . . . We must
`consider the claim as a whole to determine whether the claim is directed to an abstract idea or
`something more.”). The Court should likewise reject Defendants’ simplistic letter-writing and
`address book analogy.
`
`At step two, the eligibility of the asserted claims is most clearly demonstrated by the Federal
`Circuit’s decision in DDR Holdings. Like the claims at issue in DDR Holdings, the asserted claims
`“override[] the routine and conventional sequence of events ordinarily” required to access and
`utilize content from an external source, i.e., requiring the user to leave the document and access a
`repository of information before initiating manual retrieval and use of the content. 773 F.3d at
`1258; see also Amdocs (Israel) Ltd. v. Opennet Telecom, Inc., 841 F.3d 1291 (Fed. Cir. 2016)
`(finding claims eligible because they overcome inefficiencies in the traditional and cumbersome
`methods of compiling and accessing data).
`
`6. Why should/shouldn’t the Court deny the motion without prejudice to renew at a later
`stage of this litigation?
`
`
`The Court should deny Defendants’ motion with prejudice because, as explained in Arendi’s brief,
`the claimed inventions are patent eligible as a matter of law under step one of Alice. The inventions
`are directed to improved methods and systems of information handling between computer
`programs; they overcome users’ difficulty in accessing, maintaining, and manipulating foreign
`information management programs; and they provide significant efficiency gains and performance
`improvements for both the user and the computer system.
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`Case 1:13-cv-00920-LPS Document 184 Filed 12/13/19 Page 7 of 7 PageID #: 6235
`Page 4
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`Respectfully submitted,
`
`/s/ Eve H. Ormerod
`
`Eve H. Ormerod (No. 5369)
`
`cc:
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`Clerk of Court (via CM/ECF)
`All Counsel of Record (via CM/ECF)
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