Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 1 of 24 PageID #: 46691
`
`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 REPLY IN SUPPORT OF ITS MOTION
`FOR SUMMARY JUDGMENT OF NONINFRINGEMENT
`
`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: May 6, 2021
`7190700 / 40549
`
`Public Version Dated: May 13, 2021
`
`PUBLIC VERSION
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 2 of 24 PageID #: 46692
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`THE COURT MUST CONSIDER THE DIFFERENCES BETWEEN THE
`ACCUSED FUNCTIONALITIES..................................................................................... 1
`
`Page
`
`GOOGLE’S MOTION FOR SUMMARY JUDGEMENT SHOULD BE
`GRANTED ON ALL POINTS .......................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Seven of Eight Accused Apps Using Linkify and Smart Linkify Cannot and
`Do Not Act on a File “Into Which Text Can Be Entered” ..................................... 3
`
`The Accused Chrome and News Apps Cannot Infringe Because They Do
`Not Include “Documents” ...................................................................................... 5
`
`The Accused Apps Using Transitory or Data Entry Fields Cannot Infringe
`Because Such Fields Are Not “Word Processing, Spreadsheet or Similar
`Files” ...................................................................................................................... 8
`
`The Accused Products Do Not Analyze First Information from the
`Document to Determine If It Is of a Type “That Can Be Searched for in
`Order to Find Second Information” as Required by the ’843 Claims .................... 9
`
`Twelve of Thirteen Accused Apps Do Not Infringe Because the Alleged
`“First Computer Program” Does Not Set Up the Input Device ........................... 14
`
`Each Accused App Does Not Infringe Because the Alleged “First
`Computer Program” Never Receives a User Command from the Input
`Device .................................................................................................................. 18
`
`III.
`
`CONCLUSION ................................................................................................................ 20
`
`i
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 3 of 24 PageID #: 46693
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)..................................................................................................11
`
`Pernix Ireland Pain DAC v. Alvogen Malta Operations Ltd.,
`C.A. No. 16-139-WCB, 2018 WL 2225113 (D. Del. May 15, 2018) .......................................6
`
`Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
`520 U.S. 17 (1997) ...................................................................................................................11
`
`ii
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 4 of 24 PageID #: 46694
`
`Arendi’s Answering Brief (“Arendi’s Opposition,” D.I. 345) to Google’s Motion for
`
`Summary Judgment (“Motion,” D.I. 275; “Google’s Supporting Brief,” D.I. 276) attempts to
`
`misdirect the Court into assuming that there are facts at issue, when in fact there are none. Once
`
`the Court cuts through Arendi’s cluttered assertions and overstatements about its own infringement
`
`allegations and its overbroad characterizations of Google’s Accused Products, it will see a lack of
`
`material factual disputes regarding Google’s non-infringement defenses. Indeed, for each of the
`
`“can be searched for” and “in consequence of receipt by the first computer program of the user
`
`command” non-infringement arguments (Sections II.D and II.F, respectively), the parties agree on
`
`the material facts, such that straightforward application of the unambiguous claim language and
`
`the Court’s constructions disposes of the entire case.
`
`I.
`
`THE COURT MUST CONSIDER THE DIFFERENCES BETWEEN THE
`ACCUSED FUNCTIONALITIES
` The parties agree that the Accused Functionalities are Linkify, Smart Linkify and
`
`Smart Text Selection with TextClassifier (“STS”). Arendi separately accuses Content
`
`Detectors and Quick Actions for the Google Chrome app alone. D.I. 345, p. 4. Arendi accuses
`
`no other functionalities.
`
`Arendi attempts to confuse and lump together these separate functionalities to create the
`
`false impression that a single unitary functionality stands accused and that potential infringement
`
`by any Accused Functionality negates the Court’s need to assess Google’s arguments as to each
`
`Accused Functionality. See, e.g., D.I. 345, pp. 9, 13 (citing screen captures of STS to rebut
`
`arguments for Linkify and Smart Linkify). The Court should reject Arendi’s attempt to confuse
`
`Linkify and Smart Linkify with STS because, as explained below, their differences impact two
`
`non-infringement arguments in Google’s Motion (those relating to the elements “while the
`
`document is displayed, . . . analyzing first information from the document” and “providing an input
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 5 of 24 PageID #: 46695
`
`device, configured by the first computer program”). Further, a finding of non-infringement for
`
`only some Accused Functionalities (e.g., only Linkify and Smart Linkify) would significantly
`
`simplify the issues for trial. There is no need to present trial testimony explaining each Accused
`
`Functionality when it is clear from the evidentiary record that at least some of these functionalities
`
`simply do not practice the Asserted Claims. Also, because each Accused Functionality was
`
`launched and used at unique times during Arendi’s alleged damages period
`
`, a non-infringement judgment as to any of the Accused Functionalities will
`
`materially impact the damages period and amount. Linkify was first introduced in an Accused App
`
`in
`
`; STS was introduced
`
`, in December 2017; and Smart Linkify
`
`was launched nearly a year after that, in August 2018. Thus, for example, a finding of non-
`
`infringement as to Linkify would significantly change the start of the potential damages period
`
`(from
`
` to December 2017). For the Court’s benefit, Google provides Appendix 1 to
`
`this Reply, detailing the date range for each Accused App/Functionality combination to highlight
`
`the importance of analyzing each of Google’s non-infringement theories.1
`
`The parties do not genuinely dispute the following relevant facts:
`● The parties agree that
`
`. There is no genuine dispute that
`
`
`
`
`
`
`
`● The parties do not dispute that Linkify and Smart Linkify can be invoked by any app, including
`each Accused App, using an API call (“These implementations may include incorporating one
`of several addLinks methods defined in the Linkify.java library,” D.I. 345, p. 7); or that there
`is no API call for STS in any Accused App—STS is always enabled in any so-called “View”
`display. D.I. 276, p. 13; D.I. 345, pp. 9-10.
`● There is no genuine dispute that Linkify and Smart Linkify, as used with most Accused Apps,
`can and do only work on text that is non-editable. D.I. 276, pp. 11, 15; D.I. 345, p. 8. The
`parties agree that STS, by contrast, can work on editable text. D.I. 345, p. 31.
`
`1 Appendix 1 makes visually clear the important difference in the Accused Product date ranges
`previously described in Google’s Supporting Brief. D.I. 276, p. 10 n.7, p. 12 n.8, p. 14.
`
`2
`
`

`

`● There is no genuine dispute that
`
`● There is no genuine dispute that
`
`
`
`
`
`
`.
`
`
` See generally D.I. 345, pp.
`23-29. The Accused Functionalities, as used with the Accused Apps,
`
`
`
`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 6 of 24 PageID #: 46696
`
` See D.I. 345, pp. 33-34
`
` There is no dispute that
`
`. Id.
`Given the absence of any genuine disputes regarding these facts, this matter is ripe for
`
`summary judgment based on the express and construed ’843 Patent claim language.
`
`II.
`
`GOOGLE’S MOTION FOR SUMMARY JUDGEMENT SHOULD BE GRANTED
`ON ALL POINTS
`A.
`Seven of Eight Accused Apps Using Linkify and Smart Linkify Cannot and Do
`Not Act on a File “Into Which Text Can Be Entered”
`Despite Arendi’s attempt to inject confusion, it is undisputed that the Accused Apps (all
`
`except Keep) cannot infringe when using Linkify or Smart Linkify because those Accused
`
`Functionalities cannot operate on editable text or on fields into which text can be entered as
`
`required by the Court’s construction of “document.” D.I. 276, VI.A.2. Specifically, for Messages,
`
`Arendi does not deny that Linkify and Smart Linkify are applied only after a message is sent and
`
`text can no longer be entered into that message. See D.I. 277, App’x 4.2 Similarly, Arendi cannot
`
`dispute that Linkify is applied only to comment boxes in Docs, Sheets, and Slides and only when
`
`those comment boxes become uneditable. Linkify, unlike STS, is never applied to the main body
`
`2 See D.I. 277, App’x 4 at Screenshots A3.9.1-A3.9.5, A3.10.1-A3.10.4, A3.11.1-A3.11.4, B3.1.1-
`B3.1.2, B3.3.1-B3.3.2, C3.2.1-C3.2.2, and C3.3.1-C3.3.2 (Messages); A13.15.1-A13.15.2,
`A13.16.1-A13.16.2, B13.8.1-B13.8.2, B13.9.1-B13.9.2, C13.5.1-C13.5.2, and C13.10.1-C13.10.2
`(Hangouts). Smart Linkify is only accused when used with the Messages app.
`
`3
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 7 of 24 PageID #: 46697
`
`of the text files presented by Docs, Sheets and Slides—only to comment boxes. See id.3 Linkify
`
`also undisputedly is applied to Calendar entries and reminders and Task items only when those
`
`items are not editable. See id.4 Simply put, in these apps, there is no dispute that Linkify and Smart
`
`Linkify cannot be applied to fields that are editable and into which text can be entered.
`
`Arendi ignores this and instead strangely complains that “Google draws the line at Linkify”
`
`and makes no argument that STS does not operate on editable text. D.I. 345, p. 15. But Linkify and
`
`Smart Linkify are different from STS, and Google makes the present non-infringement argument
`
`only as to Accused Apps when used with Linkify and Smart Linkify. As noted, finding non-
`
`infringement as to Accused Apps used with Linkify and Smart Linkify will significantly narrow
`
`the case. Arendi, however, attempts to blur the Accused Functionalities by improperly using videos
`
`showing use only of STS to suggest that Linkify and Smart Linkify somehow can be applied to
`
`editable text—they cannot. See, e.g., D.I. 345, pp. 16 n.5, 13 (citing videos representing STS, not
`
`Linkify). Arendi conveniently ignores its own Linkify and Smart Linkify videos, which clearly
`
`show that these functionalities are not applied to editable text. See generally D.I. 277, App’x 4.
`
`Arendi finally argues that the Court’s construction of “document”—“a word processing,
`
`spreadsheet or similar file into which text can be entered”—requires only that text must be entered
`
`into a file at some point, but need not be editable when Linkify or Smart Linkify performs the
`
`analyzing step. This is directly contrary to the Court’s claim construction opinion that explains
`
`that “a ‘document’ as used here must be editable.” D.I. 143, p. 8. Arendi’s argument further
`
`conflicts with the “analyzing” element in the Asserted Claims. D.I. 345, pp. 15-16. The claim
`
`3 See D.I. 277, App’x 4 at Screenshots B7.7.1-B7.7.2, B7.9.1-B7.9.2, C7.2.1-C7.2.2, and C7.3.1-
`C7.3.2 (Docs); B12.13.1-B12.13.2, B12.15.1-B12.15.2, C12.6.1-C12.6.2, and C12.7.1-C12.7.3
`(Sheets); B11.10.1-B11.10.2, B11.12.1-B11.12.2, C11.2.1-C11.2.2, and C11.3.1-C11.3.2 (Slides).
`4 See D.I. 277, App’x 4 at Screenshots A4.10.1-A4.10.2, A4.11.1, A4.13.1, B4.7.1-B4.7.2, B4.8.1-
`B4.8.2, B4.9.1, C4.2.1, C4.3.1-C4.3.2, and C4.11.1-C4.11.2 (Calendar); and A9.17.1-A9.17.2,
`A9.18.1-A9.18.2, B9.8.1-B9.8.2, and B9.9.1-B9.9.2 (Tasks).
`
`4
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 8 of 24 PageID #: 46698
`
`language makes clear that a text file must be a “document” when the analyzing is performed:
`
`“while the document is being displayed, analyzing, in a computer process, first information from
`
`the document to determine . . . .” D.I. 1-1, 10:43-44. Given that a file can only be a “document”
`
`when text can be entered into it, if at the time of the analyzing the text file is not editable (i.e., if
`
`text cannot be entered into the file when Linkify or Smart Linkify operates), then the analyzing is
`
`not happening “while the document is displayed” and is not occurring on first information “from
`
`the document.” So, even if the claimed analyzing were found to occur on “text” generally, it would
`
`not occur on text from “a document,” as required by the claims. D.I. 276, pp. 16-17.5
`
`Arendi’s last-ditch suggestion that “whether these documents are analyzed using Linkify
`
`or using STS & TC should not change whether they are ‘documents’” is misleading and wrong.
`
`D.I. 345, p. 15. The Court made clear that a file can only be a “document” if and when text can be
`
`entered into it. D.I. 143, p. 9 (“if the document were noneditable, it is unclear how a user could
`
`type data and how a computer could enter related address data into the document”). Because, e.g.,
`
`the accused comment boxes in Google Docs, Sheets, and Slides can only be operated on by Linkify
`
`when they are not editable, the use of Linkify on those boxes cannot meet the “analyzing” claim
`
`element—there is no “document” and thus no “while the document is being displayed, analyzing,
`
`in a computer process, first information from the document to determine . . .” D.I. 1-1, 10:43-44.
`
`B.
`
`The Accused Chrome and News Apps Cannot Infringe Because They Do Not
`Include “Documents”
`
`5 Arendi’s new argument that this Court in HTC “has since refined its understanding of the ‘843
`Patent not to require the action using first information to occur in the first computer program or
`document,” is incorrect. D.I. 345, p. 16. The HTC decision stated only that claim 1 does not require
`second information (to the extent such information is found after performing a search) to be used
`to perform an action in the first program. Straus Dec., Ex. 29 (Mem. Order, Arendi v. HTC Corp.),
`p. 4. This statement was dicta, id. (stating that the Court’s “revised understanding” “does not lead
`to a different outcome”), and did not change the Court’s governing construction of “document.”
`Nor did the Court vitiate the requirement that the claimed “analyzing” be performed “[w]hile the
`document is being displayed.”
`
`5
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 9 of 24 PageID #: 46699
`
`As Google explained in its Supporting Brief, Google Chrome and Google News cannot
`
`infringe because a web page (like an Amazon.com shopping page) or news item (like a page from
`
`the New York Times) presented by these apps is not a “document,” as it is not “a word processing,
`
`spreadsheet or similar file into which text can be entered,” regardless of which Accused
`
`Functionality is used. D.I. 276, pp. 19-20.
`
`Arendi obscures its own infringement theories when it argues that a Chrome web page
`
`might be editable if that page were directed to an online e-mail site or online word processor. D.I.
`
`345, p. 14. But Arendi has not raised or accused any online programs/utilities of infringement, and
`
`the Court should reject any attempt to introduce new, undefined infringement theories at summary
`
`judgment. See Pernix Ireland Pain DAC v. Alvogen Malta Operations Ltd., C.A. No. 16-139-
`
`WCB, 2018 WL 2225113, at *2-7 (D. Del. May 15, 2018) (striking late-disclosed infringement
`
`theory raised for the first time at summary judgment).6 As Arendi’s own expert videos of Chrome
`
`show, Arendi is not accusing any specific websites or online programs running within Chrome
`
`(See D.I. 277, App’x 4 at Screenshot A8.10.1); rather, Arendi accuses Chrome itself, divorced
`
`from any specific website or online program. Arendi’s video demonstrations of Chrome’s
`
`operation use simple HTML web pages specially created by Arendi’s expert for this litigation so
`
`that the pages include first information (like an email address) that have associated second
`
`information (such as a user’s name). Id. (showing the URL for a web page prepared to display an
`
`email address with a Pixel 2 device). Arendi’s expert never opines on any infringement by any
`
`specific and existing web-based program running within Chrome. Moreover, if Arendi had
`
`accused any specific program operating on Chrome (such as a web-based email or word processing
`
`6 To be clear, Arendi accused the Google Docs app but never accused or charted the web-based
`version of Google Docs, which functions differently. And Arendi never accused or charted any
`other web-based program operating via the Chrome browser.
`
`6
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 10 of 24 PageID #: 46700
`
`program), then Arendi’s accusations would have been directed to that program, rather than to the
`
`Chrome app overall, and Arendi would have been obligated to detail in its contentions exactly how
`
`that accused program actually practiced the asserted claim elements. Arendi never made such
`
`allegations and provided no program-specific contentions.7 Arendi cannot escape summary
`
`judgment by relying on non-existent infringement theories.
`
`Arendi separately claims generally that “the user can create and edit web pages in Chrome,”
`
`and cites “Google Sites” for support. D.I. 345, p. 14, citing Ex. 28. But Google Sites is a website
`
`creation tool that has never before been raised in this litigation. It has nothing to do with the
`
`Accused Functionalities, and Arendi offers no evidence that Google Sites is used on the Accused
`
`Devices, let alone that Linkify, Smart Linkify or STS is applied while creating websites using
`
`Google Sites. This contention by Arendi is a red herring.8
`
`For Google News, Arendi argues that its pages are editable because “a POSITA would
`
`understand that text is entered into a web page or news item when the user navigates to it—causing
`
`the document to be displayed and previously typed text to be entered into the pages’ view objects.”
`
`D.I. 345, pp. 14-15. Essentially, Arendi argues that the act of displaying a static web page that a
`
`user cannot alter in any way is the act of entering text into the “document.” This is nonsensical and
`
`would render the Court’s construction, “into which text can be entered,” meaningless. Critically,
`
`Arendi essentially concedes that a user cannot edit or enter text into a static news article that the
`
`user is presented in Google News. Summary judgment is thus appropriate—like Google Chrome,
`
`7 Such a theory would require Arendi to disclose how Chrome (rather than the web-based program)
`constitutes the “first computer program,” and how every element of the asserted claims are met by
`the combined operation of the browser and the program. Arendi has never done so.
`8 Arendi points to Dr. Smedley’s Declaration (Ex. B, ¶ 160 n.108), “noting ‘“Chrome does permit
`the user to edit (by typing) webpages, including third-party webpages loaded from remote servers”
`and explaining how user may do so.’” D.I. 345, p. 14. Arendi provides no evidence that this
`obscure process for editing web pages via a browser ever implicates Linkify, STS or Smart Linkify.
`
`7
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 11 of 24 PageID #: 46701
`
`Google News cannot infringe the Asserted Claims because it does not analyze information “from
`
`a document” “while the document is displayed.”
`
`C.
`
`The Accused Apps Using Transitory or Data Entry Fields Cannot Infringe
`Because Such Fields Are Not “Word Processing, Spreadsheet or Similar Files”
`Arendi appears to agree that a transitory data entry field cannot be a claimed “document,”
`
`D.I. 345, pp. 1-2, but then simply represents, without explanation or proof, that the “documents”
`
`presented in the table of page 5 of its Opposition are “word processing, spreadsheet, or similar
`
`files.” Yet, a simple review of the listed “documents” readily shows that many are indeed data
`
`entry fields, namely, “Text Message,” “Calendar Entry and Reminder,” “Contact Entry,” and
`
`“Task Item.”9 These data entry items are beyond what any reasonable juror could consider “a word
`
`processing, spreadsheet or similar file” and, instead, are merely different versions of the Luciw
`
`prior art’s smart fields that Arendi and its validity expert, Dr. Sacerdoti, confirmed “are not
`
`documents.” D.I. 276, pp. 21-22.
`
`Arendi’s only argument is that the hallmark of a “document” is the presence of “free-form
`
`text,” where “the user can alter text.” D.I. 345, pp. 18, 20. But, this suggestion eviscerates any
`
`distinction between a “document” and a “transitory data entry field” (including Arendi’s own
`
`distinction for validity purposes), and ignores the Court’s claim construction, which expressly
`
`requires more than just the ability to enter and alter text—it further requires that a “document” be
`
`“a word processor, spreadsheet or similar file” D.I. 143, p. 3. As noted in Google’s Supporting
`
`Brief, the Court made clear that the meaning of “document” in the Asserted Claims is “more
`
`9 A text message (from Messages or Hangouts) is a transitory data entry field, as a text entered
`into the message field can only be sent or deleted, and once sent, the message can no longer be
`recalled or edited. A Calendar Entry and Reminder, a Contact Entry and a Task Item are nothing
`more than combined entries from specific data entry fields (e.g., date, time, name, and phone
`number). See, e.g., D.I. 277, App’x 4 at Screenshots A3.10.1-A3.10.3, A4.11.1, B.4.8.1, A5.3.1,
`B9.9.1.
`
`8
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 12 of 24 PageID #: 46702
`
`narrow than its plain meaning” and only extends beyond files from conventional word processor
`
`and spreadsheet programs to “files from similar programs” (e.g., an email program, according to
`
`the Court). D.I. 143, pp. 5-7. Arendi ignores its own expert’s recognition that a transitory data
`
`entry field—even one that allows free-form text that can be altered by the user—cannot be “a word
`
`processor, spreadsheet or similar file.” D.I. 345, p. 23 (repeating opinion “that these fields are not
`
`documents and are not akin to the documents that I identify in my opening report.”).
`
`Arendi’s argument as to Chrome web pages is similarly lacking because text cannot be
`
`entered into Chrome web pages. No reasonable juror could conclude that a Chrome web page (like
`
`a Walmart.com shopping page) is “a word processing, spreadsheet or similar file.” The HTML
`
`editor pages that Arendi’s Opposition points to are not even web pages at all—and certainly not
`
`documents: they are merely the underlying code for creating web pages. D.I. 345, p. 19. Google
`
`News articles similarly are not “word processor, spreadsheet or similar files” because they too are
`
`not editable by the user—the only part of a news page that arguably is editable is the search bar,
`
`which Arendi does not accuse of infringement or show in its videos.10 Importantly, Arendi does
`
`not even attempt to refute that web browsers and web pages were well known at the time of the
`
`’843 Patent’s filing, yet the patent specification nowhere suggests that a web browser is somehow
`
`similar to a word processing or spreadsheet program, or that a web page could be a “document.”
`
`D.I. 276, p. 20, fn. 15.
`
`D.
`
`The Accused Products Do Not Analyze First Information from the Document
`to Determine If It Is of a Type “That Can Be Searched for in Order to Find
`Second Information” as Required by the ’843 Claims
`The parties do not disagree as to the facts material to the “that can be searched for” claim
`
`element. Arendi does not dispute that
`
`
`
`10 As explained supra at Section II.A, the use of Linkify in Docs, Sheets in Slides is limited to
`comment boxes, which are not similar to word processing or spreadsheet files.
`
`9
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 13 of 24 PageID #: 46703
`
`
`
`. Instead, Arendi tries to challenge the Court’s claim construction and its
`
`application to the undisputed facts. This entire case therefore can be resolved if the Court simply
`
`applies its construction: “to determine if the first information belongs to one 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) that can be searched for in an information
`
`source external to the document.” D.I. 276, VI.B.11
`
`Arendi suggests that merely identifying information as a phone number, email address,
`
`street address or flight number satisfies this claim element, even without a determination as to
`
`whether this information can actually be searched for. In essence, Arendi asks the Court to
`
`conclude that a phone number, email address, address or flight number is inherently something
`
`“that can be searched for in an information source external to the document”; this is improper for
`
`three reasons. First, the claims expressly require that the Accused Products make the required
`
`determination that these categories of information can be searched for. But, it is undisputed that
`
`put,
`
`p. 24, citing Ex. 30, ¶¶ 18, 19.12
`
`. Simply
`
`
`
`. D.I. 276,
`
`11 Both the claim language and the Court’s construction explicitly require determining whether
`analyzed “first information” has two characteristics: (1) it “belongs to one or more of several
`predefined categories” of information; and (2) the category (or categories) to which the
`information belongs “can be searched for in an information source external to the document.” 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.
`12 Arendi argues that the construction’s reference to “predefined categories of identifying
`information” means that because
`
`, the claim limitation must be met. D.I.
`
`10
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 14 of 24 PageID #: 46704
`
`Second, the record evidence undermines Arendi’s suggestion that the identified
`
`information types necessarily and inherently can be searched for. In fact, as pointed out in Google’s
`
`Supporting Brief, both Arendi’s own validity expert, Dr. Sacerdoti, and the named inventor of the
`
`’843 Patent, Mr. Hedloy, admit that determining text to be of a specific type of information (like
`
`a phone number or email address) does not intrinsically reveal or determine whether or not that
`
`type can be searched for in an external information source. Both recognize that the Asserted Claims
`
`require a further determination that the information actually can be searched for on a user’s device
`
`or system. D.I. 276, pp. 24-25.
`
`Third, Arendi’s position treats the “that can be searched for” claim language and the
`
`Court’s construction as meaningless and superfluous. That the element means the same thing to
`
`Arendi with or without the “that can be searched for” language exposes the fallacy of Arendi’s
`
`position—the additional language in both the claim and the Court’s construction must be given
`
`effect. See Warner-Jenkinson Co. v. 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 Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“claims are
`
`345, p. 26 (emphasis added). In its Reply Brief in support of the motion to exclude portions of Dr.
`Rinard’s report, Arendi suggests that the court’s construction is analogous to claim language such
`as, “to determine if the object belongs to one or more of several predefined categories of paper
`objects (e.g., cardboard) or plastic objects (e.g., bottles) that can be recycled.” D.I. 363, p. 2. But
`this analogy does not help Arendi. Even under this language, a determination would need to be
`made by the Accused Products/Accused Infringer when predefining the categories that the
`specified objects “can be recycled”; if no determination is made during the predefinition process,
`then the allegedly analogous claim element is not met. But here, it is undisputed that
`
`
`
`
`
`D.I. 278, Ex. 1, ¶¶ 218,
`222, 228-230, 348, 350. Thus, the Court’s reference to “predefined categories” of information does
`permit Arendi to ignore the required determination that those categories “can be searched for.”
`
`11
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 15 of 24 PageID #: 46705
`
`interpreted with an eye toward giving effect to all terms in the claim”). Arendi’s position is
`
`particularly untenable in light of the fact that it earlier avoided a finding of indefiniteness only by
`
`representing to this Court that the “can be searched for limitation” was clear and definite in
`
`requiring that the searchability determination be made with reference to “an information source
`
`external to the document”—a representation that the Court accepted and incorporated into its
`
`construction. D.I. 276, p. 26. Arendi fails to address this in its Opposition.
`
`Arendi’s Opposition suggests that if a search is ultimately performed using any of the
`
`identified information, then it logically follows that such information can be searched for. This
`
`misses the point. The Asserted Claims do not merely require “performing a search,” which is
`
`recited in a later claim element. Before the information is even retrieved for possible use in a
`
`search, the claims require, as part of the “analyzing” step, that a determination be made as to
`
`whether the information is of a type “that can be searched for in an information source external to
`
`the document.”13 If that were not so, there would have been no need to include the “that can be
`
`searched for” limitation in the claim, as the fact that the information can ultimately be the subject
`
`of the search is covered by other claim elements, most notably the “performing a search” step.
`
`Arendi would thus have the Court wholly disregard the “that can be searched for” determination
`
`that is part of the “analyzing” step (which precedes the “retrieving the first information” and
`
`“performing a search” steps).14 Arendi’s attempt to rewrite the claims (and the Court’s
`
`13 Once again, Dr. Sacerdoti and Mr. Hedloy admitted that the “analyzing” element requires more
`than merely identifying information as a particular category of information—it requires a separate
`determination of searchability (“Q. And why is it the case that if Newton identifies 555-1000 as a
`possible phone number that it does not necessarily mean that the phone number can be searched
`for? A. Because those are independent functionalities of a computing device.” D.I. 276, Ex. 24,
`210:21-211:1, 211:17-212:7).
`14 As noted in Google’s Supporting Brief and Google’s Opposition to Arendi’s Motion to Exclude
`Testimony from Dr. Rinard, 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
`
`12
`
`

`

`Case 1:13-cv-00919-LPS Document 379 Filed 05/13/21 Page 16 of 24 PageID #: 46706
`
`construction) is laid bare by its effort to insert a “wherein” clause that does not currently exist:
`
`“wherein each of the plurality of types of information is one that can be searched for . . . .” D.I.
`
`34