Case 1:13-cv-00919-LPS Document 243 Filed 12/28/20 Page 1 of 5 PageID #: 8538
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1601-LPS
`
`JURY TRIAL DEMANDED
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`C.A. No. 13-919-LPS
`
`JURY TRIAL DEMANDED
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`)))))))))))
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`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC F/K/A
`MOTOROLA MOBILITY, INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`LETTER TO THE HONORABLE LEONARD P. STARK FROM
`DAVID E. MOORE, ESQUIRE
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and Google
`Inc.
`
`OF COUNSEL:
`
`Robert W. Unikel
`Michelle Marek Figueiredo
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
`
`Robert R. Laurenzi
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`

`

`Case 1:13-cv-00919-LPS Document 243 Filed 12/28/20 Page 2 of 5 PageID #: 8539
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: December 28, 2020
`6981645 / 39729
`
`

`

`Case 1:13-cv-00919-LPS Document 243 Filed 12/28/20 Page 3 of 5 PageID #: 8540
`
`Dear Chief Judge Stark:
`Arendi’s response (Google D.I. 242, Motorola D.I. 235) to Google’s and Motorola’s motion to strike
`confirms that (1) prior to expert reports, Arendi’s sole mention of the doctrine of equivalents (“DOE”)
`was in its boilerplate Complaint allegations, which included no explanation or analysis of any kind; (2)
`Arendi did not identify any DOE theory in its 4(a) disclosures and 4(c) infringement contentions; (3)
`Arendi did not disclose DOE in response to Defendants’ interrogatory explicitly seeking any Arendi
`DOE theories; and (4) Arendi presented detailed DOE theories and analyses for the first time in the
`cases in its expert’s reply reports on purported infringement (the “Smedley Reples”). This Court’s early
`disclosure rules in patent cases are meant to prevent the surfacing of complicated and nuanced DOE
`arguments after the close of fact discovery. Allowing Arendi to inject and pursue new DOE theories at
`this late stage of the case would unfairly disadvantage defendants Google and Motorola and reward
`Arendi’s gamesmanship. Instead, the Court should strike Arendi’s DOE theories from this case as a
`proper remedy for Arendi’s failure to articulate any DOE theories through seven years of litigation.
`The only documents that Arendi can identify in its response to suggest disclosure of DOE prior to the
`Smedley Reports are the Complaints filed in 2013 and 2018. See, e.g., D.I.1 242, p. 1. Specifically,
`Arendi’s response identifies only the Complaints’ boilerplate reference to infringement “‘literally or
`under the doctrine of equivalents.’ D.I. 1 at ¶ 19.” Id. But the disclosure and contentions rules in this
`District exist precisely because conclusory and boilerplate allegations in a complaint typically provide
`little, if any, explanation or analysis and generally are not sufficient to disclose plaintiff’s infringement
`theories, including based on DOE.2 See Sonos, Inc. v. D&M Holdings Inc., C.A. No. 14–1330–WCB,
`2017 WL 5633204, at *1 (D. Del. Nov. 21, 2017) (“a boilerplate reservation of right to assert the
`doctrine of equivalents” was insufficient to allow a plaintiff “to present a doctrine of equivalents theory
`of infringement at trial”); Nazomi Comm’ns, Inc. v. Microsoft Mobile Oy, 597 Fed. Appx. 1075, 1078-79
`(Fed. Cir. 2014) (affirming exclusion of DOE where plaintiff “only provid[ed] boilerplate language”).
`Arendi effectively concedes that following the Complaints, it did not disclose or explain any DOE
`theories in any way prior to expert reports. Indeed, Arendi admits that it did not even mention DOE in
`its 4(a) and 4(c) disclosures, including in its infringement contentions and charts, let alone provide any
`specific explanations as to how the accused products might infringe under DOE. See, e.g., D.I. 242, p. 1-
`2. Given that these disclosures, contentions and charts are specifically intended to alert defendants to the
`theories a plaintiff is pursuing (and to guide discovery on that basis), the absence of any discussion of
`DOE in the 4(a) and 4(c) disclosures – and the failure of Arendi to amend its contentions to add any
`DOE theories and explanations before the close of fact discovery – is dispositive. Intellectual Ventures I
`LLC v. AT&T Mobility LLC, C.A. No. 13-1668, 2017 WL 658469, at *3, 6 (D. Del. Feb. 14, 2017)
`(granting defendants’ motion to strike portions of expert’s report that injected new DOE infringement
`theories into case where contentions did not identify an equivalent for the “application-aware” limitation
`or explain the DOE theory); Finjan Inc. v. Rapid7, Inc., C.A. No. 18-1519, 2020 WL 5798545, at *3, 4
`(D. Del. Sept. 29, 2020) (striking DOE opinions never raised in infringement contentions). Arendi’s
`claim that its general accusation of “infringement” somehow disclosed DOE, even though the
`contentions do not reference DOE or substantively explain any DOE theory, is nothing more than a self-
`serving, after-the-fact effort to escape the consequences of Arendi’s lack of DOE disclosure. Finjan Inc.,
`2020 WL 5798545, at *4 (“Finjan argues that its new DOE theories are supported by its previously
`disclosed literal infringement theories accusing the same functionality. But DOE theories of
`infringement are separate and distinct from theories of literal infringement.”) Infringement contentions
`would be meaningless if a plaintiff could simply say, after fact discovery, that its general accusation of
`“infringement” inherently disclosed all possible theories – direct or indirect, literal or DOE.
`
`1 All D.I. references are to 13-cv-919 unless otherwise noted.
`2 https://www.ded.uscourts.gov/sites/ded/files/pages/Electronic%20Discovery%20Default%
`20Standard_0.pdf, p. 4.
`
`

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`Case 1:13-cv-00919-LPS Document 243 Filed 12/28/20 Page 4 of 5 PageID #: 8541
`
`The Honorable Leonard P. Stark
`
`December 28, 2020, Page 2
`
`Arendi further admits that Google and Motorola served an interrogatory specifically asking whether, and
`on what basis, Arendi was asserting DOE. See, e.g., Google D.I. 242, p. 1. Arendi concedes that it failed
`to identify any DOE theory or explanation in its response to Defendants’ interrogatory, and instead
`directed Google and Motorola to the contentions, which undisputedly did not assert any theory based on
`DOE. Id. (“Arendi objected that the interrogatory was ‘premature to the extent it purport[ed] to require
`Arendi to disclose materials, such as infringement contentions and expert materials, prior to the time
`they are due’” (emphasis added).) Arendi’s argument that Google and Motorola should have challenged
`Arendi’s responses, demanded supplemental responses, moved to compel, or otherwise sought judicial
`relief makes no sense. Of course Google and Motorola did not move to compel explanation of Arendi’s
`unknown and undisclosed DOE theory because based on the contentions, the interrogatory responses,
`and every other disclosure during fact discovery, Google and Motorola had no idea that Arendi was
`secretly nursing DOE theories that needed to be pried free. Google and Motorola were genuinely
`surprised to see such new theories couched as “expert opinions” in the Smedley Reports.
`Importantly, in an effort to justify its lack of disclosure and explanation of any DOE theories prior to the
`Smedley Replies, Arendi improperly treats DOE as though it were a defensive theory that could only be
`formulated after Arendi received Defendants’ non-infringement report responding to Dr. Smedley’s
`expressed theories. See, e.g., Google D.I. 243 at 2-3. DOE is, however, an offensive theory of
`infringement that is the plaintiff’s (Arendi’s) burden to disclose and prove. Had Arendi properly
`disclosed and explained a DOE theory during fact discovery and in Dr. Smedley’s opening report,
`Google and Motorola could have explored the facts central to such theory, and Dr. Rinard could have
`analyzed and rebutted that theory. But Arendi did neither. Arendi attempts to excuse its late disclosure
`based on the false assertion that Dr. Rinard somehow advanced "novel claim constructions." But Dr.
`Rinard merely applied the Court’s constructions to the accused technologies to conclude that Google and
`Motorola do not infringe. See, e.g., D.I. 242, at 2 (applying the Court’s construction of "a document" as
`a "word processor, spreadsheet or similar file" and opining that an accused database is not a "file”). In
`any event, even if Dr. Rinard had presented new claim constructions (he did not), Arendi’s sole cited
`case does not support the notion that such a new construction somehow permits a plaintiff to present
`DOE for the first time in the case in a reply expert report. EON Corp. IP Holdings LLC v. FLO TV Inc.,
`C.A. No. 10-812-RGA, 2013 WL 6504689, at *3 (D. Del. Dec. 10, 2013) (allowing an alternative DOE
`theory where DOE had been raised in both infringement contentions and opening expert reports, but
`claim terms had “not yet been construed by the court”).
`Arendi suggests there is an absence of prejudice because Dr. Rinard testified that his opinions did not
`change based on the Smedley Replies. See, e.g., Google D.I. 238, p. 4. This is a red herring. Dr. Rinard
`simply stated that his opinions on “no literal infringement” did not change from his rebuttal reports
`(“Rinard Rebuttals”), which they did not. Tellingly, Arendi carefully avoided asking Dr. Rinard a single
`substantive question about DOE during his fourteen hours of deposition testimony. The Rinard Rebuttals
`make clear that Dr. Rinard had not considered or opined on any DOE analyses because there were no
`such analyses or opinions in Smedley’s (opening) Reports. Dr. Rinard was entirely justified in not going
`back to formulate new DOE opinions based on Dr. Smedley’s untimely additions in the Smedley
`Replies, particularly because Dr. Rinard was aware that Google and Motorola had filed this motion and
`were seeking to strike those untimely opinions from the case. (Ex. A, 12/18/20 Rough Tr. Rinard
`(Motorola), 274:13-22). Had Arendi timely disclosed its substantive DOE theories (on which it bears the
`burden of proof) with factual and/or evidentiary support and explanation (as is required by the rules and
`by basic fairness), Dr. Rinard most certainly would have included DOE rebuttal opinions and analysis in
`his report. Dr. Rinard might further have adjusted his opinions on other aspects of non-infringement and
`provided such testimony at deposition. Ultimately, Arendi chose not to disclose or explain any DOE
`theory over more than seven years of litigation. It must now accept the consequences of that choice.
`
`

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`Case 1:13-cv-00919-LPS Document 243 Filed 12/28/20 Page 5 of 5 PageID #: 8542
`
`The Honorable Leonard P. Stark
`
`December 28, 2020, Page 3
`
`Respectfully,
`/s/ David E. Moore
`David E. Moore
`
`DEM:nmt/6981645/39729
`Enclosure
`cc:
`Counsel of Record (via electronic mail)
`
`