Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 1 of 7 PageID #: 8546
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`C.A. No. 13-919-LPS
`
`Original Version Filed: December 22, 2020
`Public Version Filed: December 29, 2020
`
`LETTER TO THE HONORABLE LEONARD P. STARK RESPONDING TO
`DEFENDANT’S MOTION TO STRIKE PORTIONS OF DR. TREVOR SMEDLEY’S
`EXPERT REPORT REGARDING INFRINGEMENT
`OF U.S. PATENT NO. 7,917,843
`
`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.
`
`Dated: December 22, 2020
`
`OF COUNSEL:
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Emi Lawson
`Burton DeWitt
`Robert Travis Korman
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkorman@susmangodfrey.com
`
`Kalpana Srinivasan
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`

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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 2 of 7 PageID #: 8547
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`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`
`
`
` 
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`

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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 3 of 7 PageID #: 8548
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` 
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`Dear Chief Judge Stark:
`
`Arendi S.à.r.l. (“Arendi”) and its infringement expert, Dr. Trevor Smedley, put forward the same
`facts to support theories of literal infringement and infringement under the doctrine of equivalents.
`Google LLC (“Google”) has long demonstrated its awareness that the doctrine was at issue in its
`case.
`
`
`
`
`
`
`
`Google accuses Arendi of unfair delay, but it is Google that advanced new theories in its expert
`report, including novel claim constructions at odds with those previously offered by the Court. Dr.
`Smedley’s discussion of the doctrine of equivalents in his reply report sought to rebut Dr. Rinard’s
`non-infringement theories based on these new claim interpretations. Google now seeks to prevent
`Arendi from responding to those theories through its instant motion.
`
`
`I.
`
`Background
`
`
`On May 22, 2013, Arendi filed its original complaint, alleging that Google infringed the ’843
`Patent “literally or under the doctrine of equivalents.” D.I. 1 at ¶ 19. The suit was subsequently
`stayed on February 27, 2014 to permit Google and Motorola to seek inter partes review. D.I. 35.
`After the Federal Circuit upheld the patentability of the claims-in-suit, Arendi S.A.R.L. v. Apple
`Inc. et al., 832 F.3d 1355 (Fed. Cir. 2016), the Court granted Arendi leave to amend and/or
`supplement its complaint on December 19, 2018. D.I. 96. Arendi filed its Amended Complaint on
`December 21, 2018, again alleging infringement of the ’843 Patent by Google “literally or under
`the doctrine of equivalents.” D.I. 97 at ¶ 19.
`
`Google raised the doctrine of equivalents only once throughout discovery, in its Interrogatory No.
`3. See Ex. A, Arendi S.A.R.L.’s Supplemental Objections and Responses to Google LLC’s First
`Individual Set of Interrogatories, at 7. That interrogatory reflected Google’s understanding that the
`doctrine of equivalents was at issue and inquired, inter alia, “how each element of the ASSERTED
`CLAIM is satisfied by the DEFENDANT, including all bases for such contention including YOUR
`construction of claim terms, whether the alleged INFRINGEMENT is literal or under the doctrine
`of equivalents,” etc. 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.” Id. at 8. Arendi supplemented its objection on October
`17, 2019, reiterating that the interrogatory “call[ed] for expert opinion prior to the time when expert
`reports are due” and referred Google, in part, to its initial claim charts. Id. at 8. Google did not
`challenge Arendi’s supplemental response, demand a supplemental response, move to compel, or
`otherwise seek judicial relief.
`
`Google asserts that Arendi’s Rule 4(a) disclosure of accused instrumentalities and Rule 4(c) claim
`charts did not use the shibboleths “‘doctrine of equivalents’, ‘equivalent’, ‘function, way, result’,
`or ‘insubstantial difference.’” D.I. 238, at 3. However, the absence of this language did not mean
`Arendi’s disclosures were limited to literal infringement. Arendi’s Rule 4(a) disclosure of accused
`instrumentalities “identif[ied] the accused products and the asserted patent[] they allegedly
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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 4 of 7 PageID #: 8549
`
`The Honorable Leonard P. Stark
`December 22, 2020, Page 2
`infringe,” pursuant to the requirements of the Default Standard for Discovery. Default Standard
`for Discovery, Rule 4(a); Ex. B, Arendi’s Section 4(a) Disclosures, dated August 30, 2013; Ex. C,
`Plaintiff’s Disclosure of Supplemental Accused Products and Asserted Patents, dated November
`12, 2018 (disclosing instrumentalities “that infringe one or more claims of” the ’843 Patent); Ex.
`D, Plaintiff’s Amended Disclosure of Supplemental Accused Products and Asserted Patents, dated
`February 6, 2019. Neither the phrase “doctrine of equivalents” nor “literal infringement” appear.
`Likewise, Arendi’s Rule 4(c) claim charts did not state that they were limited to literal
`infringement. D.I. 238, Ex. K, Plaintiff’s Supplemental Initial Claim Charts, dated February 13,
`2019, at 2 (“Arendi alleges that Defendant has infringed” listed claims of ’843 Patent); Ex. E,
`Arendi’s Section 4(A) Disclosures, dated December 6, 2013 (“[R]elating the accused
`products . . . to the asserted claims those products infringe”). Arendi’s accompanying claim charts
`demonstrated Arendi’s theory of how each accused product practiced each element of each
`asserted claim—both literally and under the doctrine of equivalents. E.g., D.I. 238, Ex. K.
`
`Arendi served the first infringement report of its expert, Trevor Smedley, Ph.D., on August 7,
`2020. That report laid out in detail Dr. Smedley’s theory both of how the Accused Products literally
`infringe and, in the alternative, how they infringe under the doctrine of equivalents. After laying
`out the basis of his opinion of literal infringement for each claim limitation, Dr. Smedley
`emphasized that the same evidence would support his alternate opinion that the Accused Products
`infringed under the doctrine of equivalents. D.I. 238, Ex. A, Expert Report of Dr. Trevor Smedley,
`¶ 50 (“To the extent that the foregoing evidence does not demonstrate literal infringement of this
`preamble, the evidence demonstrates infringement of this element by the Accused Products under
`the doctrine of equivalents.”); ¶ 55 (same for first claim element); ¶ 132 (same for second claim
`element); ¶ 273 (same for third claim element); ¶ 278 (same for fourth claim element); ¶ 391 (same
`for fifth claim element); ¶ 430 (same for sixth claim element); ¶ 464 (same for seventh claim
`element); ¶ 499 (same for claim 8). That is, just as in Arendi’s claim charts, Dr. Smedley expressed
`the opinion that the same evidence grounded his opinions of infringement both literally and under
`the doctrine of equivalents.
`
`Google served Dr. Martin Rinard’s rebuttal non-infringement report on October 20, 2020. D.I.
`238, Ex. E, Rebuttal Expert Report of Dr. Martin Rinard. In that report, Dr. Rinard put forward a
`series of theories of non-infringement arguments based upon novel claim constructions. For
`example,
`
`
`
`
`
`
`On December 4, 2020, Arendi served Dr. Smedley’s Second Expert Report. In that report, Dr.
`Smedley, again emphasized that “all evidence that [he] put forward in support of [his] opinion of
`direct infringement necessarily supported [his] view that the Accused Products” infringe under the
`doctrine of equivalents:
`After all, if a product actually practices every element of the Asserted Claims, there are
`not only insubstantial differences but, in fact, no differences between the Asserted Claims
`and the functionality of the Accused Products. Likewise, to the extent that the Accused
`Products literally practice each claim limitation, they necessarily perform substantially the
`same function, in substantially the same way, to obtain the same result. Thus, the evidence
`that I put forward for literal infringement in the First Infringement Report also supports
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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 5 of 7 PageID #: 8550
`
`The Honorable Leonard P. Stark
`December 22, 2020, Page 3
`my opinion that, in the alternative, the Accused Products infringe pursuant to the doctrine
`of equivalents.
`D.I. 238, Ex. C, Second Expert Report of Dr. Trevor Smedley, ¶ 35. Dr. Smedley further stated
`that the non-infringement “theories that Dr. Rinard has now put forward are not ones that would
`have caused a POSITA to question whether the Accused Products literally infringe”; nevertheless,
`now that they were offered Dr. Smedley was “able to consider whether—if they are accepted as
`impediments to literal infringement—the Accused Products would nonetheless infringe under the
`doctrine of equivalents.” Id. at ¶ 36. Dr. Smedley concluded, “For the reasons discussed in both
`the First Infringement Report and this report, it is my opinion that the Accused Products would
`infringe under the doctrine of equivalents.” Id.
`
`In addressing each of Dr. Rinard’s claim-construction-based non-infringement arguments in his
`reply report, Dr. Smedley relied on the same evidence to support his opinion that Google Products
`infringed under the doctrine of equivalents as he used to support his opinion of literal infringement.
`Id. at ¶¶ 92, 149, 152, 164-66, 190-91, 200, 213-14, 218, 223, 240, 242, 246. Each paragraph about
`which Google complains addressed a different one of Dr. Rinard’s novel misinterpretations of the
`claim language or the Court’s claim constructions. And none of those paragraphs in Dr. Smedley’s
`reply report introduce novel evidence.
`
`In his reply report, Dr. Smedley also responded to several alleged non-infringing alternatives that
`appeared in Dr. Rinard’s expert report. Id. at ¶¶ 247 et seq. Dr. Smedley opined that several of
`these would still infringe under the doctrine of equivalents. Id. at ¶¶ 264, 268, 273. Dr. Smedley
`could not have responded to those proposals before they were made by Dr. Rinard.
`
`
`Arendi took Dr. Rinard’s expert deposition on December 18, 2020—after Google had filed its
`instant motion.
`
`
`
`
`
`
`
`II.
`
`Google’s Motion Should Be Denied
`
`
`“Courts in the Third Circuit favor resolution of disputes on their merits.” First Quality Tissue, LLC
`v. Irving Consumer Prod. Ltd., No. 19-428-RGA, 2020 WL 6286862, at *1 (D. Del. Oct. 27, 2020).
`Excluding important evidence “is considered an ‘extreme’ sanction, not normally to be imposed
`absent a showing of willful deception or ‘flagrant disregard’ of a court order by the proponent of
`the evidence.” Bridgestone Sports Co. v. Acushnet Co., No. 05-132 JJF, 2007 WL 521894, at *4
`(D. Del. Feb. 15, 2007). Before excluding material under Rule 37(c)(1), courts consider the
`following factors: “(1) the importance of the information withheld; (2) the prejudice or surprise to
`the party against whom the evidence is offered; (3) the likelihood of disruption of the trial; (4) the
`possibility of curing the prejudice; (5) the explanation for the failure to disclose; and (6) the
`presence of bad faith or willfulness in not disclosing the evidence (the “Pennypack factors”).”
`Intellectual Ventures I LLC v. AT&T Mobility LLC, No. CV 13-1668, 2017 WL 658469, at *1 (D.
`Del. Feb. 14, 2017).
`
` 
`1 Because Arendi has not yet received the court reporter’s final transcript, excerpts from the rough
`transcript are submitted as Exhibit F. Arendi will file the final version when it becomes available.
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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 6 of 7 PageID #: 8551
`
`The Honorable Leonard P. Stark
`December 22, 2020, Page 4
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`The Pennypack factors weigh against granting Google’s motion. The extreme sanction of striking
`portions of Dr. Smedley’s expert reports addressing the doctrine of equivalents is not justified.
`Each factor weighs in Arendi’s favor.
`
`With respect to the first factor, the analysis that Google seeks to strike is highly important to
`Arendi’s case and thus weighs against exclusion. Google at once seeks to propound novel claim
`constructions (which are inconsistent with the Court’s prior constructions) through Dr. Rinard’s
`response report and to prohibit Arendi’s infringement expert from offering an opinion of
`infringement on the basis of those constructions. EON Corp. IP Holdings LLC v. FLO TV Inc.,
`No. CV 10-812-RGA, 2013 WL 6504689, at *5 (D. Del. Dec. 10, 2013) (describing infringement
`expert’s doctrine of equivalents analysis based on defendant’s contested claim construction as
`“critical evidence” and declining to strike analysis).
`
`Second, Google cannot claim prejudice or surprise. Google has been on notice since Arendi filed
`its initial complaint; Arendi’s infringement contentions asserted a theory of infringement which
`included both literal infringement and the doctrine of equivalents. Google itself served an
`interrogatory acknowledging the doctrine’s role in this case and was apparently content with
`Arendi’s reference to forthcoming expert reports. Dr. Smedley’s initial infringement report then
`discussed the doctrine of equivalents’ application to each element of the asserted claims. More
`importantly, Dr. Smedley’s opinions based on the doctrine of equivalents utilize the same evidence
`and similar rationale as do his opinions based on literal infringement. E.g., HSM Portfolio LLC v.
`Elpida Memory Inc., No. CV 11-770-RGA, 2016 WL 552543, at *3 (D. Del. Feb. 11, 2016)
`(denying motion to strike expert doctrine of equivalents theory where “Plaintiffs’ literal
`infringement argument is nearly identical to its doctrine of equivalents argument”); EON Corp. IP
`Holdings LLC, No. CV 10-812-RGA, 2013 WL 6504689, at *4 (finding no prejudice where
`previously undisclosed opinions based on doctrine of equivalents did not require “any new facts
`or data” but rather “set[] forth interpretations of facts based on data previously disclosed.”). To the
`extent that Google asserts Dr. Smedley’s doctrine of equivalents opinions are “new,” those
`opinions are in direct response to Dr. Rinard’s claim constructions, which are inconsistent with the
`Court’s constructions and asserted for the first time in his rebuttal report. Google cannot claim
`surprise when its own expert is injecting new arguments into the case.
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`Third, there is no risk that Dr. Smedley’s doctrine of equivalents opinions will affect the trial
`schedule because no trial date has been set.
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`Fourth, in this case, there is no need to speculate as to whether any alleged prejudice can be cured.
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`Case 1:13-cv-00919-LPS Document 244 Filed 12/29/20 Page 7 of 7 PageID #: 8552
`
`The Honorable Leonard P. Stark
`December 22, 2020, Page 5
`
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`any alleged prejudiced could also have been cured by permitting Dr. Rinard to serve a
`supplemental non-infringement devoted to Arendi’s theory of infringement under the doctrine of
`equivalents. See Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 763 F. Supp. 2d
`671, 692–93 (D. Del. 2010) (exercising the court’s discretion to deny a motion to strike and permit
`a supplemental report on doctrine of equivalents). Google will also have a full opportunity to
`depose Dr. Smedley next month.
`
`With respect to the sixth Pennypack factor, Arendi did not withhold doctrine of equivalents
`contentions in bad faith. As already stated, Arendi has never asserted that its claims were limited
`to literal infringement, and both it and Dr. Smedley have relied on precisely the same evidence to
`ground their theories of infringement both literally and under the doctrine of equivalents. Dr.
`Smedley subsequently asserted infringement by doctrine of equivalents in his opening report, and
`so Dr. Smedley’s doctrine of equivalents analysis was not new to his reply report as Google
`contends. Moreover, Dr. Smedley relies on the same evidence for both his literal and doctrine of
`equivalents infringement opinions. See EON Corp. IP Holdings LLC, No. CV 10-812-RGA, 2013
`WL 6504689, at *4 (finding no bad faith in use of “boilerplate language” and “variations from the
`initial Infringement Contentions”); cf. Zimmer Surgical, Inc. v. Stryker Corp., 365 F. Supp. 3d 466,
`502 (D. Del. 2019) (finding disclosure untimely because plaintiff’s expert failed to disclose a
`doctrine of equivalents theory in his opening report).
`
`Finally, Google’s motion undermines judicial efficiency. Arendi disagrees with Google’s novel
`claim constructions and believes further claim construction to be unnecessary; however, should
`the Court replace its existing constructions with those offered through Dr. Rinard, Arendi would
`then seek leave to supplement Dr. Smedley’s report to include the very analysis that Google now
`moves to strike. See EON Corp. IP Holdings LLC, 2013 WL 6504689, at *3 (“If the Defendants’
`claim construction is not accepted, the Plaintiff’s alternative doctrine of equivalents construction
`may be moot. Allowing the Plaintiff’s experts’ alternative theory of infringement under the
`doctrine of equivalents to remain in his report does not mean that the Court will adopt the
`Plaintiff’s claim construction.”).
`
`For the foregoing reasons, Arendi respectfully requests that Google’s motion be denied.
`
`Respectfully submitted,
`
`/s/ Eve H. Ormerod
`
`Eve H. Ormerod (#5369)
`
`Enclosures
`
`cc:
`
`
`Clerk of Court (via CM/ECF)
`All Counsel of Record (via email)
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