Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 1 of 131 PageID #: 35469
`Case 1:13-cv-00919—LPS Document 335-1 Filed 03/15/21 Page 1 of 131 PageID #: 35469
`
`EXHIBIT A
`
`EXHIBIT A
`
`REDACTED
`
`REDACTED
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 2 of 131 PageID #: 35470
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`ARENDI S.A.R.L.,
`
`
`
`
`
`GOOGLE LLC
`
`
`
`
`
`
`Defendant.
`
`CONFIDENTIAL – OUTSIDE
`COUNSEL ONLY
`
`
`Case No: 13-919-LPS
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`EXPERT REPORT OF ROY WEINSTEIN
`
`
`
`
`
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 3 of 131 PageID #: 35471
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`
`
`CONTENTS
`
`V.
`
`VI.
`VII.
`
`CONTENTS ................................................................................................................................... i
`TABLES ........................................................................................................................................ iv
`I.
`Introduction ......................................................................................................................... 1
`II.
`Assignment ......................................................................................................................... 2
`III.
`Summary and Conclusions ................................................................................................. 3
`IV.
`Background ......................................................................................................................... 4
`A. Arendi S.A.R.L. .................................................................................................... 4
`B. Google .................................................................................................................. 4
`Patent-in-Suit ...................................................................................................................... 6
`i. U.S. Patent No. 7,917,843 .................................................................................... 6
`ii.
`Invalidity Challenges ............................................................................................ 7
`Technology Background ..................................................................................................... 8
`Infringement Contentions and Accused Products ............................................................. 10
`A. Accused Products ............................................................................................... 10
`B. Asserted Claims .................................................................................................. 11
`VIII. Analytical Framework for Damages ................................................................................. 11
`A. Hypothetical Negotiation Framework ................................................................ 12
`B. Hypothetical Negotiation between Arendi and Google ...................................... 17
`C. Damages Period .................................................................................................. 17
`Georgia-Pacific Analysis .................................................................................................. 17
`Georgia-Pacific No. 1: The royalties received by the patentee for the licensing
`of the Patent-in-Suit, proving or tending to prove an
`established royalty .................................................................. 18
`a. Microsoft Corporation ........................................................................................ 18
`b. Samsung Electronics Co. Ltd. ............................................................................ 20
`c. Microsoft Mobile, Inc. ........................................................................................ 21
`
`IX.
`
`Expert Report of Roy Weinstein
`
`
`
`
`i
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 4 of 131 PageID #: 35472
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`d. Conclusion .......................................................................................................... 22
`Georgia-Pacific No. 2: The rates paid by the licensee for the use of other patents
`comparable to the Patent-in-Suit ............................................. 27
`Georgia-Pacific No. 3: The nature and scope of the license, as exclusive or non-
`exclusive; or as restricted or non-restricted in terms of
`territory or with respect to whom the manufactured
`product may be sold ................................................................ 29
`Georgia-Pacific No. 4: The licensor’s established policy and marketing program
`to maintain his patent monopoly by not licensing others
`to use the invention or by granting licenses under special
`conditions designed to preserve that monopoly ...................... 30
`Georgia-Pacific No. 5: The commercial relationship between the licensor and
`licensee, such as, whether they are competitors in the
`same territory in the same line of business; or whether
`they are inventor and promoter ............................................... 30
`Georgia-Pacific No. 6: The effect of selling the patented specialty in promoting
`sales of other products of the licensee; that existing value
`of the invention to the licensor as a generator of sales of
`his non-patented items; and the extent of such derivative
`or convoyed sales .................................................................... 31
`Georgia-Pacific No. 7: The duration of the patent and the term of the license ............ 32
`Georgia-Pacific No. 8: The established profitability of the products made under
`the Patent-In-Suit, their commercial success, and their
`current popularity .................................................................... 33
`i. Established Profitability ..................................................................................... 33
`ii. Commercial Success and Current Popularity ..................................................... 34
`Georgia-Pacific No. 9: The utility and advantages of the patent property over the
`old modes or devices, if any, that had been used for
`working out similar results ...................................................... 36
`Georgia-Pacific No. 10: The nature of the patented invention; the character of the
`commercial embodiment of it as owned and produced by
`the licensor; and the benefits to those who have used the
`invention ................................................................................. 36
`i. Patented Benefits ................................................................................................ 36
`ii. Conclusions Regarding Non-Infringing Alternatives ......................................... 40
`
`Expert Report of Roy Weinstein
`
`
`
`
`ii
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 5 of 131 PageID #: 35473
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`Georgia-Pacific No. 11: The extent to which the infringer has made use of the
`invention; and any evidence probative of the value of
`that use .................................................................................... 41
`Georgia-Pacific No. 12: The portion of the profit or of the selling price that may
`be customary in the particular business or in comparable
`businesses to allow for the use of the invention or
`analogous inventions ............................................................... 42
`Georgia-Pacific No. 13: The portion of the realizable profit that should be
`credited to the invention .......................................................... 42
`Georgia-Pacific No. 14: The opinion testimony of qualified experts ............................ 47
`Georgia-Pacific No. 15: The amount that a licensor (such as the patentee) and a
`licensee (such as the infringer) would have agreed upon
`(at the time the infringement began) if both had been
`reasonably and voluntarily trying to reach an agreement ....... 47
`i. Form of the Royalty ............................................................................................ 48
`ii. Reasonable Royalty ............................................................................................ 50
`(1) Context of the Agreements .................................................................. 50
`(2) Rates agreed to by Arendi .................................................................... 51
`(3) Rates agreed to by Google ................................................................... 53
`(4) Geographic Scope of Patent Coverage ................................................. 53
`(5) Timing and Duration of the License .................................................... 53
`(6) Established Profitability and Commercial Success .............................. 54
`(7) Licensed Technology and Patented Benefits ....................................... 55
`(8) Conclusions .......................................................................................... 55
`Quantification of Damages ............................................................................................... 59
`Summary and Conclusions ............................................................................................... 60
`Prejudgment Interest ......................................................................................................... 61
`
`X.
`XI.
`XII.
`
`Expert Report of Roy Weinstein
`
`
`
`
`iii
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 6 of 131 PageID #: 35474
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`TABLES
`
`Table 1: Asserted Claims ........................................................................................................... 11
`Table 2: Unit Sales of Accused Google Devices ....................................................................... 34
`
`Table 3: Downloads of Accused Google Apps ......................................................................... 35
`Table 4: Sales of Accused Google Devices ............................................................................... 41
`
`Table 5: Reasonable Royalty Damages .................................................................................... 59
`Table 6: Reasonable Royalty Damages .................................................................................... 60
`
`
`
`
`
`Expert Report of Roy Weinstein
`
`
`
`
`iv
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 7 of 131 PageID #: 35475
`
`
`
`I.
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`INTRODUCTION
`
`1.
`
`I am an economist and Managing Director at Micronomics, an economic
`
`research and consulting firm located in Los Angeles, California. I have been engaged in economic
`
`research and consulting for approximately 50 years.
`
`2.
`
`A significant portion of my professional experience has involved the
`
`valuation of intellectual property and the calculation of patent infringement damages. My
`
`publications dealing with intellectual property rights and the calculation of patent damages have
`
`appeared in les Nouvelles, the Federal Circuit Bar Journal, the Journal of the Patent and
`
`Trademark Office Society, The Journal of Law and Technology, and The Licensing Journal. I also
`
`have spoken on issues relating to economics and economic theory before professional groups,
`
`including the Los Angeles County Bar Association, the National Association of Attorneys General,
`
`the American Bar Association, the Steering Committee of the California Society of Certified
`
`Public Accountants, and the Midwest Economics Association. I have appeared as a panelist on
`
`several occasions at the Annual Conference on Intellectual Property Law at Plano, Texas to speak
`
`on subjects relating to the calculation of patent damages. I also was asked to speak on “Taming
`
`Complex Intellectual Property Compensation Problems” at the TTI Vanguard Conference on
`
`Taming Complexity in Washington, D.C., and have delivered lectures dealing with patents and
`
`intellectual property at Peking University in Beijing, China and the Baruch College of City
`
`University of New York.
`
`3.
`
`Companies with whom I have consulted on patent damages issues include
`
`Intel, USAA, Ericsson, Barr Laboratories, eBay, Mitsubishi, Hynix, VirnetX, and Southern
`
`California Gas Company. Prior engagements include the valuation of semiconductor patents,
`
`telecommunications patents, and other intellectual property used in technology markets and high
`
`technology applications.
`Expert Report of Roy Weinstein
`
`
`
`
`1
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 8 of 131 PageID #: 35476
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`4.
`
`Exhibit 1 sets forth biographical information, including a list of matters in
`
`which I have given testimony in the past four years, either at deposition or at trial. My billing rate
`
`for work on this matter is $750 per hour. Work on this assignment has also been performed by
`
`members of my staff, acting under my direction.
`
`II.
`
`ASSIGNMENT
`
`5.
`
`I have been asked by counsel for Arendi S.A.R.L. (“Arendi”) to calculate
`
`damages adequate to compensate Arendi for infringement by Google LLC (“Google”) of U.S.
`
`Patent No. 7,917,843 (the “’843 patent”). I understand that I also may be asked to review expert
`
`reports submitted by experts retained by Google, and if appropriate, may respond to their opinions.
`
`6.
`
`Arendi originally brought this action against Google on May 22, 2013 in
`
`U.S. District Court for the District of Delaware.1 While I understand that the infringement
`
`allegations are a matter of contention, I have been asked to assume that the ’843 patent (the “Patent-
`
`in-Suit”) is valid, enforceable and infringed by Google.
`
`7.
`
`In conducting my analysis, I have reviewed and considered the Patent-in-
`
`Suit, financial information, license agreements, presentations, business records, and other
`
`documents produced by Google and third parties. I also have reviewed and considered pleadings,
`
`deposition testimony, written discovery, and other information furnished by counsel, and
`
`independently obtained trade press, and other publicly available information. I have spoken with
`
`Atle Hedløy, Dr. William Wecker, and Dr. Trevor Smedley in connection with my work on this
`
`matter. A summary of information I have considered in connection with my assignment is set
`
`forth at Exhibit 2.
`
`
`Complaint, Arendi S.A.R.L. v. Google LLC, C.A. No. 13-919-LPS, May 22, 2013.
`
`1
`
`Expert Report of Roy Weinstein
`
`
`
`
`2
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 9 of 131 PageID #: 35477
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`8.
`
`My understanding is that additional discovery or other information may be
`
`obtained in this case. Accordingly, the results set forth herein are subject to modification as my
`
`investigation continues.
`
`III.
`
`SUMMARY AND CONCLUSIONS
`
`9.
`
`In the event that the Patent-in-Suit is found to be valid, and infringed by
`
`Google, Arendi is entitled to damages adequate to compensate for infringement, but in no event
`
`less than a reasonable royalty.2 In the context of litigation, a reasonable royalty typically reflects
`
`the amount that a willing licensee would have agreed to pay and a willing licensor would have
`
`agreed to accept for a license to the Patent-in-Suit assuming both parties had access to all relevant
`
`information, had been reasonable in trying to reach an agreement, and had agreed that the Patent-
`
`in-Suit is valid and infringed without a license. In that connection, my analysis includes an
`
`assessment of factors that would have been considered by the negotiating parties had they
`
`participated in a hypothetical negotiation at the time infringement commenced.
`
`10.
`
`I have calculated reasonable royalty damages due Arendi on accused sales
`
`and downloads of Google products.
`
`11.
`
`Assuming that Arendi is entitled to reasonable royalty damages based on
`
`infringement of accused Google products (e.g., U.S. sales and downloads), liability would begin
`
`on March 29, 2011, the date the ’843 patent issued.3 I have concluded that damages adequate to
`
`compensate Arendi for infringement by Google are at least
`
`million through expiration of
`
`the Patent-in-Suit.
`
`
`The Patent Act of 1952 (35 U.S.C. § 284).
`U.S. Patent No. 7,917,843.
`
`2
`3
`
`Expert Report of Roy Weinstein
`
`
`
`
`3
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 10 of 131 PageID #: 35478
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`12. My analysis reflects a) the amount that Arendi, as the hypothetical licensor,
`
`would have been willing to accept in exchange for granting a non-exclusive license to the Patent-
`
`in-Suit, and b) the amount Google would have been willing to pay given:
`
`1) The Patent-in-Suit would have been understood to be valid,
`enforceable, and infringed;
`2) Google’s willingness to pay for access to intellectual
`property;
`3) the popularity of the accused products;
`4) absence of non-infringing alternatives to the Patent-in-Suit;
`and
`5) my analysis of the Georgia-Pacific Factors.
`
`If asked, I am prepared to calculate pre- and post-judgment interest.
`
`13.
`
`IV.
`
`BACKGROUND
`
`A.
`
`Arendi S.A.R.L.
`
`14.
`
`Arendi is a corporation organized under the laws of Luxembourg.4 It was
`
`formed in 2009 to manage Arendi’s intellectual property.5
`
`B.
`
`Google
`
`15.
`
`Google incorporated in 1998 and its stated mission is “to organize the
`
`world’s information and make it universally accessible and useful.”6 It is the largest subsidiary of
`
`Alphabet Inc. (“Alphabet”), a holding company created in 2015, and Google is the only reportable
`
`segment operating within Alphabet.7 Google’s products and services include various Google Web
`
`Search functions; applications such as Gmail, Chrome, Hangouts Chat, Google Play, Drive, Maps,
`
`
`Complaint, Arendi S.A.R.L., v. Google Inc., C.A. No. 13-919-LPS, May 22, 2013.
`4
`Deposition of Atle Hedløy (Arendi) October 29, 2019, pp. 158-159.
`5
`6 Google website, “About” (https://about.google/).
`Google website, “How we started and where we are today” (https://about.google/our-story/).
`Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, pp. 3, 8, and 26.
`
`7
`
`Expert Report of Roy Weinstein
`
`
`
`
`4
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 11 of 131 PageID #: 35479
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`and YouTube; the Android software platform; and mobile phone applications and software.8
`
`Google claims that its brand is “one of the most recognized in the world.”9
`
`16.
`
`Google generates most of its revenue through advertising, such as
`
`delivering relevant ads targeted at its users and assisting advertisers with marketing campaigns.10
`
`Google also generates revenue from the sale of digital content through Google Play, sales of
`
`hardware devices, and the use of its cloud services.11
`
`17.
`
`As of December 31, 2018, Alphabet had 98,771 employees.12 Alphabet is
`
`headquartered in Mountain View, California.13 Alphabet owns and leases business space and
`
`research and development facilities around the world and operates and owns data centers in the
`
`U.S., Europe, South America, and Asia.14
`
`18.
`
`Revenue from Google’s business operations amounted to $136.2 billion for
`
`its fiscal year ended December 31, 2018.15 Google had revenue of $89.9 billion and $110.4 billion
`
`for the 2016 and 2017 fiscal years, respectively.16 Google accounted for at least 99.6 percent of
`
`Alphabet’s total revenue for each of the 2016, 2017, and 2018 fiscal years.17
`
`19.
`
`Alphabet generated revenue of $90.3 billion, $110.9 billion, and $136.8
`
`billion in fiscal years 2016, 2017, and 2018, respectively. It realized an operating margin of 26.3
`
`
`Google website, “Our products” (https://about.google/products/).
`8
`Alphabet Inc. Form 10-K for the fiscal year ended December 31 2018, p. 4.
`
`9 Alphabet Inc. Form 10-K for the fiscal year ended December 31 2018, p. 3.
`10 Alphabet Inc. Form 10-K for the fiscal year ended December 31 2018, pp. 4-5.
`11 Alphabet Inc. Form 10-K for the fiscal year ended December 31 2018, p. 5.
`12 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 6.
`13 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 20.
`14 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 20.
`15 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 27.
`16 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 27.
`17 Alphabet Inc. Form 10-K for the fiscal year ended December 31, 2018, p. 27.
`
`Expert Report of Roy Weinstein
`
`
`
`
`5
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 12 of 131 PageID #: 35480
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`percent, 23.6 percent, and 19.2 percent during those years. A summary of Alphabet’s financial
`
`performance is set forth at Exhibit 3.
`
`V.
`
`PATENT-IN-SUIT
`
`i.
`
`U.S. Patent No. 7,917,843
`
`20.
`
`The ’843 patent is titled “Method, Systems and Computer Readable
`
`Medium for Addressing Handling from a Computer Program.”18 It issued on March 29, 2011,
`
`from an application that was filed on July 29, 2008, and claims priority to an application that was
`
`filed on November 10, 1998.19 It is my understanding that the ’843 patent expired on November
`
`10, 2018.20
`
`21.
`
`The abstract of the ’843 patent states:
`
`A method, system and computer readable medium for providing for
`providing a function item, such as a key, button, icon, or menu, tied
`to a user operation in a computer, whereby a single click on the
`function item in a window or program on a computer screen, or one
`single selection in a menu in a program, initiates retrieval of name
`and addresses and/or other person or company related information,
`while the user works simultaneously in another program, e.g., a
`word processor. The click on the function item initiates a program
`connected to the button to search a database or file available on or
`through the computer, containing the person, company or address
`related data, in order to look up data corresponding to what the user
`types, or partly typed, e.g., name and/or address in the word
`processor, the correct data from the database, data related to the
`typed data, e.g., the name of the person, company, or the traditional
`or electronic address, or other person, or company, or address
`related data, and alternatively the persons, companies, or addresses,
`
`
`
`18 U.S. Patent No. 7,917,843.
`19 U.S. Patent No. 7,917,843.
`20
`For U.S. patent applications filed after June 8, 1995, the patent term is typically 20 years from the filing date of
`the earliest U.S. application to which priority is claimed (excluding provisional applications). The application
`that issued as the ’843 patent was filed on July 29, 2008, however, the application for the ’843 patent claims
`priority to an application filed November 10, 1998. Hence, I understand that the ’843 patent expired on
`November 10, 2018, which is 20 years after the filing date of U.S. patent 6,323,853.
`
`Expert Report of Roy Weinstein
`
`
`
`
`6
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 13 of 131 PageID #: 35481
`
`
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`are displayed and possibly entered into the word processor, if such
`related data exists.21
`
`ii.
`
`Invalidity Challenges
`
`22.
`
`The Leahy-Smith America Invents Act (“AIA”) was signed into law on
`
`September 16, 2011. Among other modifications to patent law in the United States, the AIA
`
`instituted a process by which the validity of issued intellectual property could be challenged.22
`
`The new review process titled inter partes review (“IPR”) replaced the prior inter partes
`
`reexamination method.23 The new IPR process became available one year after the AIA was
`
`signed into law.24 It is my understanding that IPR is a proceeding conducted by the Patent Trial
`
`and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) which
`
`has the mandate to review the patentability of patent claims.25
`
`
`
`
`
`
`
`21 U.S. Patent No. 7,917,843.
`22 McKeown, Scott, “America Invents Act To Be Enacted September 16th,” Ropes & Gray, September 13, 2011
`(https://www.patentspostgrant.com/america-invents-act-to-be-enacted-september-16th/).
`“Inter Partes Review,” United States Patent and Trademark Office website (https://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/inter-partes-review).
`“Inter Partes Review and Inter Partes Reexamination: More Than Just a Name Change,” McDonnell Boehnen
`Hulbert & Berghoff LLP, Fall 2013 (https://www mbhb.com/intelligence/snippets/inter-partes-review-and-
`inter-partes-reexamination-more-than-just-a-name-change).
`“Inter Partes Review and Inter Partes Reexamination: More Than Just a Name Change,” McDonnell Boehnen
`Hulbert & Berghoff LLP, Fall 2013 (https://www mbhb.com/intelligence/snippets/inter-partes-review-and-
`inter-partes-reexamination-more-than-just-a-name-change).
`24 McKeown, Scott, “Inter Partes Patent Reexamination Standard to Tighten in 30 Days,” Ropes & Gray, August
`22, 2011 (https://www.patentspostgrant.com/important-patent-reexamination-standard-to-change-in-30-days/).
`“Inter Partes Review,” United States Patent and Trademark Office website (https://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/inter-partes-review).
`“Please Login to PTAB,” USPTO website (https://ptab.uspto.gov/#/login).
`
`23
`
`25
`
`Expert Report of Roy Weinstein
`
`
`
`
`7
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 14 of 131 PageID #: 35482
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`23.
`
`The Patent-in-Suit has been subject to IPR proceedings.26 To date, the
`
`PTAB has denied an IPR petition brought by Samsung Electronics, Co. Ltd. (“Samsung”) in
`
`connection with the ’843 patent.27 However, the PTAB found certain claims unpatentable in
`
`connection with an IPR petition brought by Apple, Google and Motorola against the ’843 patent.28
`
`The decision was reversed by the Federal Circuit.29
`
`VI.
`
`TECHNOLOGY BACKGROUND
`
`24. Mobile devices, such as cellphones, smartphones, and the Google products
`
`accused in this matter are part of our daily lives. According to statistics provider Statista, around
`
`the date the ’843 patent issued in 2011, there were approximately 93 million smartphone users in
`
`the United States, representing almost 30 percent of the U.S. population.30 Statista further reported
`
`that by 2018 the total number of U.S. smartphone users had increased to 238 million and was
`
`forecast to reach 270 million by 2022.31
`
`26
`
`27
`
`28
`
`
`
`29
`30
`
`31
`
`
`“Petition for Inter Partes Review Under 35 U.S.C. §§ 311-319 and 37 C.F.R. §42.100 et. seq. Patent No.
`7,917,843, Apple Inc., Google Inc., and Motorola Mobility LLC., Petitioners v. Arendi S.A.R.L. Patent
`Owner, December 2, 2013.
`“Petition for Inter Partes Review of U.S. Patent No. 7,917,843 Under 35 U.S.C. §§ 311-319 and 37 C.F.R.
`§42.100 et. seq., Samsung Electronics CO. LTD, Petitioner v. Arendi S.A.R.L. Patent Owner, July 11, 2014.
`“Decision, Denying Inter Partes and Joinder, 37 C.F.R. §§ 42.108 and 42.122(b),” Case No. IPR2014-01142,
`Patent 7,917,843, October 2, 2014.
`“Final Written Decision, 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,” Case No. IPR2014-00208, Patent
`7,917,843, June 9, 2015.
`Arendi successfully appealed portions of this decision. See: Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed.
`Cir. 2016).
`Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2014).
`“Research Peek of the Week: Smartphone Users in the US Expected to Reach Over 270 Million by 2022,” IIA,
`(https://internetinnovation.org/general/research-peek-of-the-week-smartphone-users-in-the-us-expected-to-
`reach-over-270-million-by-2020/).
`“Research Peek of the Week: Smartphone Users in the US Expected to Reach Over 270 Million by 2022,” IIA,
`(https://internetinnovation.org/general/research-peek-of-the-week-smartphone-users-in-the-us-expected-to-
`reach-over-270-million-by-2020/).
`
`Expert Report of Roy Weinstein
`
`
`
`
`8
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 15 of 131 PageID #: 35483
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`25.
`
`This vast number of devices has produced an even greater number of
`
`communications events, both voice and text-based, with texting and text-based interactions
`
`outstripping voice as the method of choice on mobile devices. A 2015 study by Pew Research
`
`Center found that 97 percent of U.S. smartphone users had sent text messages.32 Another study
`
`from 2015 found that 68 percent of smartphone users use text to communicate more than voice.33
`
`26.
`
`It is my understanding that the ’843 patent provides readers and editors of
`
`documents containing textual information a feature that allows computer programs such as
`
`Chrome, Gmail, Messages, Docs, Hangouts and several others to identify and utilize textual
`
`content constituting certain types of information. These categories of information can include
`
`telephone numbers, email addresses, street addresses, or airline flight identifiers (i.e., flight
`
`numbers). It is my understanding that the ’843 patent teaches that an input device be set up to
`
`make these types of information actionable by the user. The input device may take the form, for
`
`example, of a menu item, link or tappable text. When a user taps or clicks on the input device
`
`associated with the identified entity, the Patent-in-Suit teaches that at least a part of the identified
`
`entity be sent to a second application such as Calendar, Google Maps, Gmail, Contacts, or the
`
`Phone Dialer.
`
`27.
`
`I further understand that the ’843 patent provides for the “linked-to” second
`
`application to be used for searching an information source outside of the document such as a
`
`contact database, flight information database, or map database for additional information related
`
`to the highlighted information.
`
`32
`
`33
`
`
`Smith, Aaron, “U.S. Smartphone Use in 2015,” Pew Research Center, April 1, 2015
`(https://www.pewresearch.org/internet/2015/04/01/us-smartphone-use-in-2015/).
`“Smartphone Users Spend as Much Time on Entertainment as Texting – GFK MRI Study,” GFK.com, March
`2, 2016 (https://www.businesswire.com/news/home/20160203005952/en/Smartphone-Users-Spend-Time-
`Entertainment-Texting-%E2%80%93)
`
`Expert Report of Roy Weinstein
`
`
`
`
`9
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 16 of 131 PageID #: 35484
`
`
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`
`
`28.
`
`It is my understanding that this search can provide additional useful
`
`information, including:
`
`• an image associated with a phone number in a contact database
`
`the location of the address and information concerning contacts, businesses
`and landmarks associated with the address
`
`flight information in transportation database.
`
`Once identified, the Patent-in-Suit allows for performing an action, based
`
`•
`
`•
`
`29.
`
`in-part, on the type of information comprised in the identified text using the second information if
`
`the search returns a result. Examples of these action can include:
`
`• calling the contact from the contact database while displaying the image
`associated with the contact
`
`• displaying a map of the area near the first address including any venue name
`
`retrieving and displaying flight information.
`
`•
`
`INFRINGEMENT CONTENTIONS AND ACCUSED PRODUCTS
`
`Accused Products
`
`
`
`VII.
`A.
`
`30.
`
`Arendi contends that certain Google products infringe the Patent-in-Suit.34
`
`The accused Google products include Nexus and Pixel smartphones, Nexus and Pixel tablets, and
`
`several Google apps created for the Android operating systems. See Exhibit 4 for a list of accused
`
`Google products.
`
`34
`
`
`Plaintiff’s Amended Disclosure of Supplemental Accused Products and Asserted Patents, Arendi S.A.R.L. v.
`Google LLC, C.A. No. 13-919-LPS, February 6, 2019.
`
`Expert Report of Roy Weinstein
`
`
`
`
`10
`
`

`

`Case 1:13-cv-00919-LPS Document 335-1 Filed 03/15/21 Page 17 of 131 PageID #: 35485
`Case 1:13-cv-00919—LPS Document 335-1 Filed 03/15/21 Page 17 of 131 PageID #: 35485
`
`CONFIDENTIAL — OUTSIDE COUNSEL ONLY
`
`B.
`
`Asserted Claims
`
`31.
`
`I understand that Arendi alleges that Google infringes the following
`
`claims.”
`
`Table l: Asserted Claims
`
`US.
`
`Patent No.
`
`Issue Date
`
`Asserted Claims
`
`l, 8, 23, and 30
`
`7,917,843
`
`March 29, 2011
`
`VIII. ANALYTICAL FRAMEWORK FOR DAMAGES