Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 1 of 22 PageID #: 44318
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-LPS
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANT GOOGLE LLC’S ANSWERING BRIEF TO PLAINTIFF’S
`MOTION TO EXCLUDE PORTIONS OF DR. MARTIN RINARD’S EXPERT REPORT
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`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
`sobyrne@potteranderson.com
`
`Attorneys for Defendant Google LLC
`
`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
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Ginger Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW
`Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
`
`Dated: April 6, 2021
`7151559 / 40549
`
`PUBLIC VERSION
`
`Public Version Dated: April 13, 2021
`
`

`

`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 2 of 22 PageID #: 44319
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`TABLE OF CONTENTS
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`Page
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`NATURE AND STAGE OF THE PROCEEDINGS ......................................................................1
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`SUMMARY OF ARGUMENT .......................................................................................................1
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`ARGUMENT ...................................................................................................................................4
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`I.
`
`II.
`
`DR. RINARD PROPERLY APPLIES THE COURT’S CONSTRUCTIONS FOR
`THE CLAIM ELEMENT “TO DETERMINE IF THE FIRST INFORMATION
`IS AT LEAST ONE OF A PLURALITY OF TYPES OF INFORMATION THAT
`CAN BE SEARCHED FOR” ..............................................................................................4
`
`DR. RINARD PROPERLY APPLIES THE PLAIN AND ORDINARY
`MEANING OF TERMS THAT THE COURT DID NOT CONSTRUE ............................9
`
`A.
`
`B.
`
`C.
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`Dr. Rinard’s applies the plain meaning of “analyzing, in a computer
`process, first information from the document” in view of the Court’s
`explicit definition of “first information” ................................................................. 9
`
`Dr. Rinard properly applies the plain meaning of “performing an action
`using at least part of the second information” ...................................................... 12
`
`Arendi misconstrues Dr. Rinard’s opinions - Dr. Rinard does not opine that
`the first computer program must “perform an action.” ......................................... 14
`
`III. ARENDI’S MOTION IS UNTIMELY AND PREJUDICIAL .........................................16
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`CONCLUSION ..............................................................................................................................18
`
`i
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 3 of 22 PageID #: 44320
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Align Tech., Inc. v. 3Shape A/S,
`C.A. No. 17-1646-LPS, 2020 WL 4926164 (D. Del. Aug. 14, 2020) .......................................8
`
`Arendi S.A.R.L. v. HTC Corp. et al.,
`C.A. No. 12-1600-LPS, D.I. 152 (D. Del. Dec. 15, 2020) .......................................................14
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)....................................................................................................6
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000)................................................................................................12
`
`Cordis Corp. v. Boston Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009)................................................................................................11
`
`EMC Corp. v. Pure Storage, Inc.,
`C.A. No. 13-1985-RGA, 2016 WL 775742 (D. Del. Feb. 25, 2016) ........................................8
`
`Intellectual Ventures I LLC v. AT & T Mobility LLC,
`C.A. No. 12–193–LPS et al., 2015 WL 1393386 (D. Del. Mar. 24, 2015) .............................12
`
`Liquid Dynamics Corp. v. Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006)................................................................................................11
`
`Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894 (3d Cir. 1977).................................................................................................3, 18
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`763 F. Supp. 2d 671 (D. Del. 2010) .......................................................................................2, 8
`
`Richman v. Sheahan,
`415 F. Supp. 2d 929 (N.D. Ill. Feb. 23, 2006) .........................................................................18
`
`W.L. Gore & Assocs. v. C.R. Bard, Inc.,
`C.A. No. 11-515-LPS-CJB, 2015 WL 12806484 (D. Del. Sep. 25, 2015) ..............................18
`
`Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
`520 U.S. 17 (1997) .....................................................................................................................6
`
`White Elec. Servs., Inc. v. Franke Food Serv. Sys., Inc.,
`No. 09-CV-504-CVE-PJC, 2010 WL 3368541 (N.D. Okla. Aug. 24, 2010) ..........................18
`
`ii
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 4 of 22 PageID #: 44321
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`Defendant Google LLC (“Google”), by this Answer, responds to and opposes Arendi
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`S.A.R.L.’s (“Arendi”) motion to exclude portions of the expert report of Google’s expert Dr.
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`Martin Rinard (D.I. 269 (“Arendi’s Motion”); 270 (“Arendi’s Brief”)). For the reasons explained
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`herein, Arendi’s Motion should be denied.
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`NATURE AND STAGE OF THE PROCEEDINGS
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`On August 19, 2019, the Court construed certain claim terms of asserted U.S. Patent No.
`
`7,917,843 (“’843 Patent”). D.I. 143, 144. On December 13, 2019, fact discovery closed. D.I. 174.
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`On October 20, 2020, Google served Dr. Rinard’s expert report, in which he opines that the
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`accused Google products do not infringe the asserted claims of the ’843 Patent. D.I. 271, Ex. 1.
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`On December 18, 2020, Arendi deposed Dr. Rinard concerning the contents of his expert report.
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`D.I. 271, Ex. 3. On January 22, 2021, expert discovery closed. D.I. 210.
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`On February 1, 2021, more than three months after Arendi received Dr. Rinard’s report
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`and over six weeks after Dr. Rinard was deposed, Arendi for the first time notified Google of
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`Arendi’s view that Dr. Rinard’s report offered improper claim constructions. Ex. 1.
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`On March 5, 2021, Google moved for summary judgement of non-infringement on five
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`independent grounds.1 D.I. 275. On that same day, Arendi filed the present motion.2
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`SUMMARY OF ARGUMENT
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`Arendi’s Motion and Brief incorrectly describe the scope and content of the non-
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`infringement report of Google’s non-infringement expert, Dr. Rinard, in an effort to suggest that
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`1 Only one of the four claim terms raised in Arendi’s Motion (“to determine if the first information
`is at least one of the plurality of types of information that can be searched for”) forms the basis of
`a non-infringement argument in Google’s motion for summary judgment. D.I. 276, Section VI.B.
`2 Arendi’s Motion is substantially identical to the Motion to Exclude Portions of Dr. Rinard’s
`Expert Report that Arendi filed in the related Arendi SARL v. Motorola Mobility LLC (C.A. No.
`12-1601-LPS) case. Accordingly, the present Answer filed here by Google to Arendi’s Motion is
`similar to that filed by Motorola in the 12-1601 litigation.
`
`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 5 of 22 PageID #: 44322
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`Dr. Rinard is somehow engaging in prohibited claim construction. But careful consideration of Dr.
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`Rinard’s actual report and opinions demonstrate that for each claim term raised in Arendi’s
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`Motion, Dr. Rinard either (1) properly applies the term consistent with the Court’s construction,
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`or (2) appropriately applies the plain and ordinary meaning for an unconstrued term. To the extent
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`that Arendi and its infringement expert, Dr. Smedley, disagree with Dr. Rinard’s ultimate non-
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`infringement opinions, such disagreements are properly presented to and resolved by the fact-
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`finder, not through an untimely motion to exclude, as Arendi now attempts. See Power
`
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 763 F. Supp. 2d 671, 695 (D. Del. 2010).
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`First, as to the term “analyzing . . . to determine if the first information is at least one of a
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`plurality of types of information that can be searched for in order to find second information related
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`to the first information,” Dr. Rinard indisputably applies the Court’s construction of the term,
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`including the Court’s explicit requirement that the “can be searched for” determination be made
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`with reference to “an information source external to the document.” Arendi’s challenge to Dr.
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`Rinard’s non-infringement opinions regarding this element ignores the explicit language of the
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`’843 Patent claims and seeks to rewrite the Court’s construction to eliminate the phrase “that can
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`be searched for in an information source external to the document.” There simply is no basis to
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`exclude Dr. Rinard’s opinions on this element.
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`Second, as to the element “analyzing, in a computer process, first information in a
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`document,” Dr. Rinard applies the plain and ordinary meaning of the element, taking into
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`consideration the Court’s explicit definition of “first information.” Arendi’s complaint that Dr.
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`Rinard’s opinion excludes analysis of passages that include more than the “first information” (and
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`that may include many instances of potential “first information”) ignores the clear claim language
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`and effectively seeks to rewrite the claim element to read “analyzing, in a computer process, text
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`2
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 6 of 22 PageID #: 44323
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`or passages that include or constitute first information.” As Dr. Rinard points out, there is a
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`material difference between analyzing first information, which is what the claims expressly
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`require, and analyzing a larger body of text that might contain within it multiple pieces of possible
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`“first information.” Arendi cannot exclude Dr. Rinard’s opinion simply because it wishes the claim
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`were written differently.
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`Third, as to the claim term “performing an action using at least part of the second
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`information,” Dr. Rinard applies the plain and ordinary meaning of this term, recognizing that
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`performing an action using second information and merely displaying second information are
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`different things. Indeed, as noted by Dr. Rinard, the asserted claims use the terms “display” and
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`“perform an action” to refer to different types of operations in the claimed method. Once again,
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`Arendi offers no legitimate basis to exclude Dr. Rinard’s straightforward application of the
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`“performing an action” claim element.
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`Fourth, also as to the “performing an action using at least part of the second information”
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`element, Arendi misconstrues Dr. Rinard’s opinions to require that the “first computer program”
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`performs the action. This is incorrect. Dr. Rinard never opines that the first computer program
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`must perform an action using at least part of the second information and will not do so at trial.
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`Separately, even if there were any claim construction issues raised by Dr. Rinard’s report
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`(there are not), Arendi’s unjustified delay in raising those issues renders the motion untimely and
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`improper, particularly given Arendi’s complete failure to address the relevant factors from Meyers
`
`v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904 (3d Cir. 1977).
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`3
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 7 of 22 PageID #: 44324
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`ARGUMENT
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`I.
`
`DR. RINARD PROPERLY APPLIES THE COURT’S CONSTRUCTIONS FOR
`THE CLAIM ELEMENT “TO DETERMINE IF THE FIRST INFORMATION IS
`AT LEAST ONE OF A PLURALITY OF TYPES OF INFORMATION THAT CAN
`BE SEARCHED FOR”
`Arendi first seeks to strike 60 paragraphs in total (paragraphs 255-56, 440-53, and 531-74)
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`from Dr. Rinard’s report on infringement, covering over 20 single-spaced pages of opinion. D.I.
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`270, fn. 1; D.I. 271, Ex. 1. In these pages, Dr. Rinard applies the claim term “to determine if the
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`first information is at least one of a plurality of types of information that can be searched for” in
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`accord with the Court’s construction of that term. For context, the term appears in asserted claims
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`1 and 23 as follows:
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`while the document is being displayed, analyzing in a computer process first information
`from the document to determine if the first information is at least one of the plurality of
`types of information that can be searched for to find second information related to the
`first information.
`D.I. 271, Ex. 4, 10:43-48; 12:47-52 (emphasis added). The Court construed this term to mean: “to
`
`determine if the first information belongs to one or more of several predefined categories of
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`identifying information (e.g., a name) or contact information (e.g., a phone number, a fax number
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`or an email address) that can be searched for in an information source external to the document.”
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`D.I. 143, p. 13.
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`Both the original claim language and the Court’s construction explicitly require
`
`determining whether analyzed “first information” has two characteristics: (1) that the first
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`information “belongs to one or more of several predefined categories of identifying information
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`(e.g., a name) or contact information (e.g., a phone number, a fax number, or an email address)”;
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`and (2) that the category (or categories) to which the information belongs “can be searched for in
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`an information source external to the document.” Arendi’s own expert (Dr. Sacerdoti) when
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`attempting to distinguish a prior art reference, as well as the named inventor of the asserted ’843
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`4
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 8 of 22 PageID #: 44325
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`Patent (Atle Hedloy), recognize these two required components of the claimed determination, and
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`both admit that merely identifying first information as belonging to a predefined category of
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`information (e.g., a phone number) does not mean that such information “can be searched for in
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`an information source external to the document.” D.I. 276, p. 24-25 (quoting Ex. 24, 210:21-211:1,
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`211:17-212:7, and Ex. 16, 512:15-513:8).3 They are distinct characteristics.
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`Arendi asserts that “Dr. Rinard’s opinions contradict the Court’s construction by imposing
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`a requirement that the Court did not,” specifically “that there must be an
`
`
`
` D.I. 270,
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`p. 4. But, contrary to Arendi’s assertion, this requirement comes not from Dr. Rinard, but from the
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`express language of the claims and the Court’s construction. Arendi’s motion essentially demands
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`that Dr. Rinard and the Court ignore the entire portion of the construction (and the claim language)
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`expressly requiring a determination that the information category “can be searched for in an
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`information source external to the document.” If this limitation were ignored, as Arendi urges, the
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`claim would require only that the process determine whether the first information is of a predefined
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`category such as a phone number, and then, as is described in separate, subsequent claim steps, the
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`first information would be retrieved and then later used to perform a search: “retrieving the first
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`information . . . performing a search using at least part of the first information as a search term in
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`order to find the second information, of a specific type or types, associated with the search term in
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`an information source external to the document.” D.I. 271, Ex. 4, 10:49-57; 12:53-61. But the
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`3 By way of example, if a determination is required that a person is “Rob Johnson who lives on
`School Street,” it would not be enough to determine just that a person has the name Rob Johnson;
`it would also be necessary to ascertain whether or not that person actually lives on School Street.
`Similarly, if a determination is required that a vehicle is a “1960s American car that has a working
`engine,” it would not be enough simply to determine that a specific car is a 1968 Ford Mustang; it
`would also be necessary to ascertain whether or not that Mustang actually has an engine that will
`start and run.
`
`5
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 9 of 22 PageID #: 44326
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`additional claim language in the analyzing step (which occurs before the “retrieving the first
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`information” step and before the “performing a search” step) requires the further act of assuring
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`that that the information is of a type “that can be searched for in an information source external to
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`the document,” which is not recited or required in any other steps of the claim. In essence, Arendi
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`is asking the Court to treat the “that can be searched for” claim language as meaningless and
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`superfluous, That the claim, according to Arendi, means the same thing with or without the “that
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`can be searched for” language exposes the fallacy of Arendi’s position - the additional language
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`in both the claim and the Court’s construction must be given effect. See Warner-Jenkinson Co. v.
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`Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (“Each element contained in a patent claim is
`
`deemed material to defining the scope of the patent invention . . . .”); Bicon, Inc. v. Straumann
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`Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (stating that “claims are interpreted with an eye toward
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`giving effect to all terms in the claim”).4
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`Arendi cannot so easily disregard actual claim requirements and portions of the Court’s
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`construction, particularly given that Arendi, itself, previously insisted that the “can be searched
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`for” claim language has a definite meaning in the asserted claims. During claim construction,
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`Google had argued that the claim term “to determine if the first information is at least one of a
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`plurality of types of information that can be searched for” is indefinite, in part, because a person
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`4 There are practical reasons why the claim language “that can be searched for” requires an
`affirmative determination that first information is of a type that actually can be searched for on a
`user’s device before moving to the step of “retrieving the first information.” By determining if
`information can be searched for before retrieving it (e.g., by determining if the user’s device is
`connected to a network and/or possesses a second program that can use a phone number or email
`address as a search term before needlessly retrieving that information), the claimed method
`minimizes unnecessary processing of first information that cannot actually be used for the
`subsequent claim steps.
`
`
`D.I., 276, p. 23-24.
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`6
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 10 of 22 PageID #: 44327
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`of ordinary skill in the art would not know how to determine whether a type of information “can
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`be searched for in order to find second information related to the first information.” D.I. 118, pp.
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`13-14. In response, Arendi argued that the claim language was clear as to where the search can be
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`performed for purposes of the determining step: “in an information source external to the
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`document.” D.I. 129, pp. 15-16. Arendi did not argue, as they do now, that the claim language
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`does not require an actual determination of whether the first information can be searched for. The
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`Court accepted Arendi’s argument and rejected Google’s indefiniteness position by specifying in
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`the construction that the “can be searched for” determination must be made with respect to “an
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`information source external to the document.” D.I. 143, pp. 13-15. Dr. Rinard applies the Court’s
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`exact construction in his expert report.5 Arendi’s argument that Dr. Rinard read a limitation into
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`the claim or used a construction at odds with the Court’s (D.I. 270, p. 4) is simply untenable in the
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`face of the actual language of the Court’s construction and Arendi’s own explanation of the claims
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`in defending against indefiniteness.6 Arendi cannot exclude Dr. Rinard’s non-infringement
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`conclusions simply by asserting a conflict that does not exist.7
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`The cases cited by Arendi are inapposite. In Align Tech. and EMC, the experts construed
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`terms that the courts previously had ruled should be applied according to their plain and ordinary
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`5 The Court reiterated in the Arendi v. HTC case involving the same asserted ’843 patent that the
`claims are directed to “. . . analyzing first information that can be searched for in an information
`source external to the document,” and “causing a search for that type of information in the external
`information source . . . ” C.A. No. 12-1600-LPS, D.I. 152 at 3-4 (D. Del. Dec. 15, 2020).
`6 Every citation to the prosecution history or inventor testimony
` merely buttresses
`the Court’s construction, which plainly requires an explicit step to confirm that the predefined
`category can be searched for in a specific place, namely, a source external to the document.
`7 If any expert opinion conflicts with the Court’s construction, it is that of Arendi’s expert on
`purported infringement, Dr. Smedley, who applies the “to determine” element in such a way as to
`completely ignore or eliminate the portion of the construction requiring “that can be searched for
`in an information source external to the document.” D.I. 276, p. 25, citing Ex. 3, 112:10-22; Ex.
`2, ¶ 88.
`
`7
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`

`

`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 11 of 22 PageID #: 44328
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`meanings. Align Tech., Inc. v. 3Shape A/S, C.A. No. 17-1646-LPS, 2020 WL 4926164, at *8 (D.
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`Del. Aug. 14, 2020) (Stark, J.); EMC Corp. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, 2016
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`WL 775742, at *4 (D. Del. Feb. 25, 2016). Here, by contrast, the Court explicitly construed the
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`term at issue to include the limitation “that can be searched for in an information source external
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`to the document,” and Dr. Rinard is applying that exact construction. In Align Tech. and EMC, the
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`Court further found that the experts’ reference to prosecution history improperly narrowed the
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`issued claim constructions. EMC, 2016 WL 775742, at *4 (citation omitted); Align Tech., 2020
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`WL 4926164, at *5-6. In the present case,
`
`
`
`
`
`
`
`. Dr. Rinard
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`applies the Court’s entire construction, while Arendi and its expert attempt to apply only half of
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`the Court’s construction.
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`To the extent there is any disagreement between experts regarding the application of a
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`Court’s claim construction, such disagreements are not a basis for excluding expert testimony as
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`Arendi now seeks. Power Integrations, Inc., 763 F. Supp. 2d at 695 (denying a motion to strike a
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`supplemental infringement expert report where the expert “attests that in forming his opinions he
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`relied on the Court’s construction of the dispute claim terms,” stating that the challenging party
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`“will be entitled to cross-examine and otherwise challenge [the expert’s] opinion at trial,” and
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`further finding that “[t]he implications of the Court’s constructions are matters on which the
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`parties’ experts may opine, and may disagree”).8
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`8 If the Court believes any ambiguity remains as to the meaning of the “can be searched for” term
`(there is not), Google asks that the Court supplement and clarify its original construction to be that
`analyzed “first information” has two characteristics: (1) that the first information “belongs to one
`
`8
`
`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 12 of 22 PageID #: 44329
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`Ultimately, Arendi’s argument is a transparent attempt to strike a claim limitation
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`
`
`
`
`
`
`
`
` Arendi’s attempt to sidestep summary judgment by moving to strike opinions that fall
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`squarely within the Court’s claim construction should be rejected.
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`II.
`
`DR. RINARD PROPERLY APPLIES THE PLAIN AND ORDINARY MEANING
`OF TERMS THAT THE COURT DID NOT CONSTRUE
`A. Dr. Rinard’s applies the plain meaning of “analyzing, in a computer process, first
`information from the document” in view of the Court’s explicit definition of “first
`information”
`Arendi seeks to exclude Dr. Rinard’s opinions concerning the claim term “analyzing, in a computer
`
`process, first information from the document,” specifically targeting paragraphs 454-69 of his
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`report, which total 16 paragraphs over four single-spaced pages of his report. D.I. 270, p. 7. This
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`term appears in the following claim element of the ‘843 Patent:
`
`“while the document is being displayed, analyzing, in a computer process, first
`information from the document to determine if the first information is at least one of a
`plurality of types of information that can be searched for in order to find second information
`related to the first information;”
`D.I. 271, Ex. 4 at 10:43-48; 12:47-52.
`
`Arendi’s motion suggests that Dr. Rinard “offers a construction inconsistent with [the
`
`term’s] plain and ordinary meaning” by opining that Google’s Accused Products cannot infringe
`
`when analyzing passages encompassing more than the alleged “first information.” But, the claim
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`language is clear on its face that what must be analyzed is “first information,” not “text that
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`or more of several predefined categories of identifying information (e.g., a name) or contact
`information (e.g., a phone number, a fax number, or an email address)”; and (2) that the category
`(or categories) to which the information belongs “can be searched for in an information source
`external to the document.”
`
`9
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 13 of 22 PageID #: 44330
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`includes first information” or “passages encompassing first information.” This is an important
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`distinction, as, from a technical and methodological perspective, it is a very different thing to
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`analyze specifically defined “first information” to determine if it is of a particular type than it is to
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`analyze an entire passage (or document) to identify potentially multiple instances of possible “first
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`information” which, in turn, need to be analyzed to determine if they are each information types
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`that can be searched for in order to find second information. Dr. Rinard’s opinions properly apply
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`the plain and ordinary meaning of the actual claim language.
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`Dr. Rinard’s opinions are particularly valid and appropriate in light of the Court’s
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`construction of the limited term “first information.” The Court construed “first information” to
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`mean “text in a document that can be used as input for a search operation in a source external to
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`the document.” D.I. 144, p. 1. Thus, the plain meaning of the claim term “analyzing, in a computer
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`process, first information from the document” necessarily requires analysis of the text that can be
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`used as input for a search operation, not analysis of extraneous text that will not be used as a
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`search input. Dr. Rinard properly used and was guided by the Court’s construction of “first
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`information” when
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`Ex. 2 at 184:12-185:13.9
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`
`
`
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` D.I. 271, Ex. 1, ¶ 398, ¶ 399; see also id.
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`Arendi seeks to turn the notion of plain and ordinary meaning on its head by suggesting
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`that the claim term “analyzing, in a computer process, first information” should actually be applied
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`9 Dr. Rinard’s citation to the file history supports his plain meaning approach to the claim term
`(and the Court’s construction) and does not expand the claim’s meaning beyond what it and the
`Court’s construction of “first information” already plainly says on its face. See, e.g., D.I. 271, Ex.
`1, ¶ 454-456.
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`10
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`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 14 of 22 PageID #: 44331
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`as though it read “analyzing, in a computer process, text or passages that include or constitute first
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`information.”10 Arendi’s suggestion is particularly inappropriate and unfounded given the Court’s
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`construction of “first information.” Under Arendi’s proposed application of the claim’s
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`“analyzing” element, any text qualifies as first information regardless of whether that text will ever
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`be used as input for a search operation. But the Court made clear that only text that can be used as
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`input for a search operation can be the claimed “first information”; and the claim element is clear
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`that it is “first information” that is analyzed, not something more than first information. It is
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`Arendi, not Google, that seeks to expand the claim term’s meaning, and the Court’s related
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`construction, beyond its plain and ordinary understanding.11
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` Arendi’s citations to Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1337 (Fed. Cir.
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`2009), as well as Align Tech., EMC, and Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209,
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`1224 n.2 (Fed. Cir. 2006), are all unavailing because Dr. Rinard is not presenting a new or different
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`claim construction from that already provided by the Court, nor is he providing construction for a
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`term otherwise governed by plain and ordinary meaning. There is no basis to exclude Dr. Rinard’s
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`opinions concerning the term “analyzing, in a computer process, first information from the
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`document,” as he is properly applying the plain meaning of that term in light of the Court’s
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`construction of “first information.”
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`10 If Arendi felt that the plain language of the claim term required clarification, it could have sought
`a clarifying construction; it did not.
`11 Arendi’s Brief points to two figures in the ’843 Patent specification and suggests that because
`one step in these figures is described as “Analyze what the user has typed in the document”, the
`claims must allow for analysis of more than “first information.” D.I. 270, p. 8-9. But it is axiomatic
`that the words of the claim (not specification figures) control and that a patentee can claim an
`invention narrower than what is described in the specification. Here the asserted claims
`unambiguously limit the required “analyzing” to the “first information.” As demonstrated by the
`figure language pointed to by Arendi, Arendi certainly knew how to describe and refer to broader
`analysis, but in these claims Arendi did not refer to such broader analysis and, instead clearly
`required analysis of just first information.
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`11
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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 15 of 22 PageID #: 44332
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`B. Dr. Rinard properly applies the plain meaning of “performing an action using at
`least part of the second information”
`Arendi here seeks to strike paragraphs 386 through 400 of Dr. Rinard’s report, totaling 15
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`paragraphs and six single-spaced pages. D.I. 270, p. 9. Arendi alleges that Dr. Rinard ignores the
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`plain meaning of the term “action” by opining that
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`
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`.” D.I. 270, p. 10. In full context,
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`the claim elements in question read as follows:
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`displaying the document electronically using the first computer program;
`while the document is being displayed, analyzing, in a computer process, first information
`from the document to determine if the first information is at least one of a
`plurality of types of information that can be searched for in order to find second information
`related to the first information; . . . .
`providing an input device, configured by the first computer program, that allows a user to
`enter a user command to initiate an operation, the operation comprising (i) performing a
`search using at least part of the first information as a search term in order to find the second
`information, of a specific type or types, associated with the search term in an information
`source external to the document, wherein the specific type or types of second information
`is dependent at least in part on the type or types of the first information, and (ii) performing
`an action using at least part of the second information; . . . .
`If searching finds any second information related to the search term, performing the action
`using at least part of the second information, wherein the action is of a type depending
`at least in part on the type or types of first information.
`D.I. 271, Ex. 4 at 10:41-60; 12:45-53 (emphasis added). Dr. Rinard’s application of the
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`“performing an action” elements
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`
`
`
`
`. CAE Screenplates, Inc. v. Heinrich Fiedler GmbH &
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`Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence