Case 1:13-cv-00919-JLH Document 456 Filed 04/11/23 Page 1 of 5 PageID #: 48788
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 13-919-JLH
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`))))))))))
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`LETTER TO THE HONORABLE JENNIFER L. HALL FROM NEAL BELGAM
`REGARDING PRIOR ART ESTOPPEL
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`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Daniel Taylor (No. 6934)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`dtaylor@skjlaw.com
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`Attorneys for Plaintiff Arendi S.A.R.L.
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`Of Counsel:
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`SUSMAN GODFREY LLP
`Seth Ard (pro hac vice)
`Max Straus (pro hac vice)
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad (pro hac vice)
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`
`Kalpana Srinivasan (pro hac vice)
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
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`Kemper Diehl (pro hac vice)
`401 Union Street, Suite 3000
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
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`Dated: April 11, 2023
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`Case 1:13-cv-00919-JLH Document 456 Filed 04/11/23 Page 2 of 5 PageID #: 48789
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`Dear Judge Hall:
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`At the Court’s direction after the Final Pretrial Conference in this matter on April 6, Google
`finally disclosed its long overdue prior art combinations on Friday, April 7. As Arendi previewed
`during the Pretrial Conference, it expected there may be estopped art or art subject to evidentiary
`objections once Google disclosed the eight combinations permitted under the Court’s order. Many
`of Google’s now-disclosed combinations feature CyberDesk. Google is estopped from relying on
`the CyberDesk prior art and any grounds that include CyberDesk. Because this implicates what
`may be shown to the jury during opening, Arendi respectfully requests the Court address this issue
`as soon as practicable.
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`In accordance with its representation at the Pretrial Conference, Google identified the
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`following grounds of invalidity on April 7, 2023:
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` Anticipation based on the CyberDesk System 
` Obviousness based on the following combinations:
`1.
`Pandit + CyberDesk System
`2.
`Pandit + Apple Data Detectors System
`3.
`Pandit + Newton System
`4.
`CyberDesk System + Chalas
`5.
`CyberDesk System + Apple Data Detectors System
`6.
`CyberDesk System + Newton System
`7.
`CyberDesk System + Microsoft Word 97 System
`8.
`Apple Data Detectors System + Microsoft Word 97 System
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`The so-called “CyberDesk System” is subject to IPR estoppel under 35 U.S.C. §315(e)(2)
`because it is cumulative of a ground that Google reasonably could have raised during IPR of the
`Patent-in-Suit. Cal. Inst. of Tech. v. Broadcom Ltd., 991 (Fed. Cir. 2022) (“Caltech”). Although
`Google contends this is a “system,” there is no actual system – just reliance on an amalgamation
`of estopped printed publications and/or uncorroborated testimony.
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`CyberDesk references are cited on the face of the Patent-in-Suit,1 and Judge Stark ruled
`there is no question the CyberDesk publications “could have been raised during the IPR of the
`’843 patent.” D.I. 391 at 14. Accordingly, Google is plainly estopped from relying on the
`CyberDesk publications as grounds of invalidity.
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`Google attempts to skirt estoppel under §315(e)(2) by framing CyberDesk as a “system.”
`In denying summary judgment, Judge Stark identified a predicate “fact issue” as to whether
`testimony relating to the purported CyberDesk system is merely “cumulative” of the printed
`publications that Google could have raised in its failed IPR petition, or whether it “provides any
`non-cumulative disclosures germane to [] Google’s invalidity theories.” D.I. 391 at 15.2 The
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`1 For example, Google’s DTX-14 is the publication “CyberDesk: A Framework for Providing Self-
`Integrating Ubiquitous Software Services” that appears on page 2 of the Patent-in-Suit.
`2 As the Court recognized during the Pretrial Conference, whether invalidity grounds are properly
`before the jury is a threshold issue that implicates the Court’s gatekeeping function. See
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`1
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`Case 1:13-cv-00919-JLH Document 456 Filed 04/11/23 Page 3 of 5 PageID #: 48790
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`answer to that question is undoubtedly that the testimony is cumulative for the reasons below and
`previously briefed. See D.I. 282 at 9-13.
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`First, as Google conceded in its summary judgment briefing, “no working version [of
`CyberDesk] still exists.” D.I. 348 at 14. Thus, Google will not be presenting to the jury an operable
`(or even inoperable) CyberDesk “system.” There will be no software demonstration and Google
`will not wheel out a vintage computer running the program. Instead, Google will rely on the same
`amalgamation of publications that it could have raised at IPR, and claim that, when cobbled
`together, they describe the alleged functionality of CyberDesk at some unspecified moment in
`time. But there is no “system” apart from these publications. The only evidence of the CyberDesk
`“system” are the publications. Google is merely relabeling the estopped grounds as a “system” to
`make an end run around §315. That is impermissible and cumulative. See Wasica Fin. GmbH v.
`Schrader Int’l, Inc., 432 F. Supp. 3d 448, 453 (D. Del. 2020) (“Since the estoppel provision, §
`315(e)(2), applies to grounds, a petitioner is estopped from proceeding in litigation on
`those grounds, even if the evidence used to support those grounds was not available to be used in
`the IPR.” (emphasis in original)).
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`Second, Google may argue that the alleged “system” is evidenced by testimony from one
`of CyberDesk’s developers, Anind Dey, which Google claims describes a “system” that goes
`beyond the written materials. That attempted end-run around estoppel, which would be a recipe
`for avoiding estoppel in every case with a cooperating prior art author, is not surprisingly barred
`by black-letter law. Mr. Dey’s testimony is completely uncorroborated, by definition, because
`Google relies on the portion of his testimony that allegedly goes beyond the written materials, and
`there is no physical system to support it either. Without documentation or a physical system, there
`is nothing to corroborate it. “[C]orroboration is required of any witness whose testimony alone is
`asserted to invalidate a patent.” CEATS, Inc. v. Cont’l Airlines, Inc., 526 F. App’x 966, 969 (Fed.
`Cir. 2013) (quoting TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir.
`2004)); Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1378 (Fed. Cir. 2003) (same); Rosco,
`Inc. v. Mirror Lite Co., 120 F’Appx. 832, 836 (Fed. Cir. 2005) (“Testimony evidence of invalidity
`must be corroborated.” (citing Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1366–70
`(Fed. Cir. 1999))). Any testimony by Mr. Dey (or any other witness) must be limited to the four
`corners of the publications. If the testimony of these witnesses is substantially similar to the
`CyberDesk publications, there is no difference in the invalidity grounds and estoppel under
`§315(e)(2) applies with full force. If the testimony of these witnesses strays from the printed
`publications, it is uncorroborated and improper. Accordingly, Google cannot escape estoppel by
`arguing that this uncorroborated testimony somehow proves a “system” that exceeds the printed
`publications.
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`Google is attempting to present the CyberDesk publications—which it indisputably could
`have raised in its IPR petition—to the jury through Mr. Dey’s testimony about the non-existent
`“CyberDesk system.” This is squarely improper. See Clearlamp, LLC v. LKQ Corp., 2016 WL
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`IOENGINE, LLC v. PayPal Holdings, Inc., 607 F. Supp. 3d 464, 517-18 (D. Del. 2022) (Bryson,
`C.J.) (District Court must resolve IPR estoppel objections “in advance of the trial”); Innovative
`Memory Sys. v. Micron Tech., Inc., No. 14-1480-RGA, 2022 U.S. Dist. LEXIS 177092, at *12 (D.
`Del. Sep. 29, 2022) (“Sending that question [re IPR estoppel] to the jury would be contrary to one
`of the purposes of IPR estoppel….”).
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`2
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`Case 1:13-cv-00919-JLH Document 456 Filed 04/11/23 Page 4 of 5 PageID #: 48791
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`4734389, at *9 (N.D. Ill. Mar. 18, 2016) (“While LKQ seeks to cloak its reliance upon UVHC3000
`as a product, so as to avoid § 315(e)(2) estoppel, such an argument is disingenuous as it is the
`UVHC3000 datasheet upon which LKQ relies to invalidate the asserted claims”); Milwaukee Elec.
`Tool Corp. v. Snap-On Inc., 271 F. Supp. 3d 990, 1032 (E.D. Wis. 2017) (“Snap–On cannot skirt
`[IPR estoppel] by purporting to rely on a device without actually relying on the device itself”).
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`Third, even if Mr. Dey’s testimony were corroborated, which it is not, it would still not
`convert the estopped CyberDesk publications into a CyberDesk “system” that circumvents
`estoppel because the testimony is cumulative of the publications. D.I. 282 at 9-13. “[S]imply
`swap[ping] out publications that were available through a diligent search with the same prior art,
`only in a slightly different format” is not permitted. See Wasica, 432 F. Supp. 3d at 453–54, n.7
`(D. Del. 2020).
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`Google’s approach violates the spirit and the letter of §315(e). The estoppel provisions
`were designed to prevent second bites at the invalidity apple based on grounds that were raised or
`reasonably could have been raised during IPR. In Google’s view, estoppel can be avoided simply
`with uncorroborated testimony that a non-existent system performed various functions that were
`not captured in the printed materials supposedly describing that system. Not only is the
`corroboration requirement specifically designed to prevent this sort of end run, but under the
`Federal Circuit’s decision in Caltech, estoppel is applied strictly. Google’s attempt to rebrand
`estopped grounds as a separate “system”—without any existing system to show—would be a
`recipe to avoid estoppel in any case where there is a cooperating prior art author.
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`Given that CyberDesk is subject to IPR estoppel, Google cannot raise it as an anticipatory
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`reference or as part of a combination with other art as grounds for invalidity. Google is barred
`from raising the estopped CyberDesk reference in combination with other estopped references. See
`D.I. 391 at 10 (barring Google “from presenting combinations that consist of Pandit with estopped
`prior art references and systems”); id. at 19 (“[G]rounds consisting of combinations of Tso,
`Domini, Hachamovitch, or Chalas with other estopped prior art references and systems are
`barred ….”).”3
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`Arendi is available at the Court’s convenience to address any questions or concerns.
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`Respectfully,
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`/s/ Neal C. Belgam
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`Neal C. Belgam (No. 2721)
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`3 Arendi also contends, as a separate and unrelated argument, that no written documents evidencing
`estopped art should be usable in combinations with non-estopped references, as a court held last
`week. See Singular Computing LLC v. Google LLC, No. CV 19-12551-FDS, 2023 WL 2839282,
`at *7 (D. Mass. Apr. 6, 2023) (“Google is estopped from using patents and printed publications of
`which it was aware, or reasonably should have been aware, at the time of the IPR proceeding. That
`bar applies whether the patents and printed publications are offered as stand-alone evidence, or in
`combination with other evidence that could not have been presented at the IPR proceeding.”).
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`3
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`Case 1:13-cv-00919-JLH Document 456 Filed 04/11/23 Page 5 of 5 PageID #: 48792
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`cc:
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`Clerk of Court (via CM/ECF)
`All Counsel of Record (via CM/ECF)
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`4
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