Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 1 of 8 PageID #: 51358
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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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`GOOGLE LLC,
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`Plaintiff,
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`v.
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`Defendant.
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`GOOGLE’S MOTION FOR JUDGMENT AS A
`MATTER OF LAW OF NO INDIRECT INFRINGEMENT
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`POTTER ANDERSON & CORROON LLP
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`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Google LLC
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`OF COUNSEL:
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`Robert W. Unikel
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
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`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`Ginger D. Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
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`Vincent Y. Ling
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Avenue, 50th Floor
`Los Angeles, CA 90071
`Tel: (213) 683-9100
`
`Dated: April 27, 2023
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`

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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 2 of 8 PageID #: 51359
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`I.
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`INTRODUCTION
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`Defendant Google LLC (“Google”), pursuant to Federal Rule of Civil Procedure 50(a),
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`moves for a judgment as a matter of law (“JMOL”) of no indirect infringement. Arendi has
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`presented no evidence that any third party infringes ’843 claims 23 or 30 (“Asserted Claims”), nor
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`has Arendi presented any evidence that Google had the necessary scienter to commit secondary
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`infringement or that the other elements of induced and contributory infringement are present. No
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`reasonable juror could find Google liable for indirect infringement. Therefore, the Court should
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`grant judgment of non-infringement as a matter of law.
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`II.
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`BACKGROUND
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`In the Joint Preliminary and Final Jury Instructions filed on March 31, 2023, Arendi
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`included instructions for induced and contributory infringement. D.I. 451 at 10; D.I. 452 at 25–30.
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`Later, Arendi notified Google that it would not pursue infringement of any method claims of the
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`’843 Patent. D.I. 474 at 1. That same day, the Court issued its proposed preliminary jury
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`instructions. D.I. 470. The parties conferred on any edits they believed were needed, and Google
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`indicated that it believed that a sentence regarding induced and contributory infringement should
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`drop out with the removal of the method claims. D.I. 474 at 1. Arendi disagreed. Id.
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`Accordingly, Arendi appears to still be pursuing claims of induced and contributory
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`infringement.
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`III. LEGAL STANDARD
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`“In order to succeed on a claim of inducement, the patentee must show, first that there has
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`been direct infringement . . . .” Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304–
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`06 (Fed. Cir. 2002). Second, the alleged infringer must commit affirmative acts encouraging the
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`infringing activity. See 35 U.S.C. § 271(b); Power Integrations, Inc. v. Fairchild Semiconductor
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`Int’l, Inc., 843 F.3d 1315, 1331–32 (Fed. Cir. 2016). And that affirmative act must actually cause
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 3 of 8 PageID #: 51360
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`the third-party’s infringement. See id. Third, the patentee must prove that “the alleged infringer
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`knowingly induced and possessed specific intent to encourage another’s infringement.” Minn.
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`Mining & Mfg. Co., 303 F.3d at 1305–06. To affirmatively induce infringing acts, the alleged
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`infringer must have actual knowledge of the asserted patent. Commil USA, LLC v. Cisco Sys., Inc.,
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`575 U.S. 632, 639 (2015). But mere knowledge of the patent is not sufficient. Id. The accused
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`infringer must know that the induced act constitutes infringement of the asserted patent. Id.
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`Alternatively, an accused infringer may be liable if she knows of the patent and is willfully blind
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`to the infringing nature of the acts she induces—that is, she subjectively believes there is a high
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`probability that the induced act infringes and takes deliberate action to avoid knowing that induced
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`acts constitutes infringement. Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 768–770
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`(2011).
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`Like inducement, contributory infringement requires proof that some third party has
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`directly infringed an asserted claim. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed.
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`Cir. 2010). To contributorily infringe, a party must also have knowledge of the asserted patent and
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`sell, or offer to sell, a component of the claimed invention. Id.; i4i Ltd. P’ship v. Microsoft Corp.,
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`598 F.3d 831, 850–51 (Fed. Cir. 2010). That “component” “must be a material part of the
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`invention, have no substantial noninfringing uses, and be known (by the party) ‘to be especially
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`made or especially adapted for use in an infringement of such patent.’” Id. (citation omitted).
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`IV. ARGUMENT
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`Arendi offers no evidence that a third party directly infringes any asserted claim. Dr.
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`Smedley testified only that Google directly infringed the claims. See 4/25/23 Trial Tr. (Smedley)
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`at 300:10–18, 373:14–18 (“Q. What’s your opinion about whether Google, the Google apps, and
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`the Google smartphones practice the retrieving step? A. The Google apps and the Google
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`smartphone practice all this step as well.”). Where a product has non-infringing uses, a patentee
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`2
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 4 of 8 PageID #: 51361
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`must show “specific instances of direct infringement” by third parties in order to prove secondary
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`infringement. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1312–13 (Fed. Cir.
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`2007). Arendi has not done that, and for that reason alone, a verdict of no indirect infringement
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`must be entered.
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`But even if Arendi established that third parties did infringe an asserted claim, it has failed
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`to establish the other elements of induced and contributory infringement.
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`A.
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`Google Has Not Induced Infringement
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`Arendi presented no evidence that Google affirmatively acted to induce infringement. The
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`Federal Circuit has long held that that “inducement requires evidence of promotion, active steps,
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`or encouragement”—that is, active encouragement of the infringing acts. Takeda Pharms. U.S.A.,
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`Inc. v. W.-Ward Pharm. Corp., 785 F.3d 625, 631 n.3 (Fed. Cir. 2015). In particular, merely
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`distributing a product with the knowledge that some users may use it to infringe is not inducement.
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`Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363–64 (Fed. Cir. 2003); Rodime PLC v.
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`Seagate Tech., Inc., 174 F.3d 1294, 1306 (Fed. Cir. 1999).
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`1. Here, Dr. Smedley testified merely that Google makes its apps available to consumers.
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`Arendi offered no evidence that Google affirmatively encourages users to download their apps or
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`to use the allegedly infringing functions. Without “statements or actions directed to promoting
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`direct infringement,” there can be no liability. Alpek Polyester, S.A. de C.V. v. Polymetrix AG,
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`No. 2021-1706, 2021 WL 5974163, at *6 (Fed. Cir. Dec. 16, 2021).
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`2. Additionally, Arendi presented no evidence that any inducing act by Google actually
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`caused a third party to infringe. “To prevail under a theory of indirect infringement, [the patentee]
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`must first prove that the defendants’ actions led to direct infringement . . . .” Dynacore Holdings
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`Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir. 2004) (emphasis added); Roche
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`Diagnostics Corp. v. Meso Scale Diagnostics, LLC, 30 F.4th 1109, 1121 (Fed. Cir. 2022) (vacating
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`3
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 5 of 8 PageID #: 51362
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`jury verdict where patentee “didn’t provide evidence of causation between the allegedly inducing
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`acts . . . and the direct infringement”). As these decisions (and the ones cited above) demonstrate,
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`causation may not be inferred merely from a defendant’s making available a product, together with
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`evidence of subsequent direct infringement. Rather, a plaintiff must present evidence that the
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`defendant’s affirmative inducing acts—its inducing communications—reached users and caused
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`them to engage in direct infringement.
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`Here, Arendi presented no evidence that direct infringement, if any, occurred because of
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`any inducing persuasion by Google. There is no evidence that Google affirmatively encouraged
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`any downloads of its apps or instructed users on the allegedly infringing functionalities, much less
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`that any users saw such communications and downloaded the apps as a result. And to the extent
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`that Arendi contends that users directly infringed by using the allegedly infringing functionality,
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`Arendi has presented no evidence of that use, much less that any active step by Google caused
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`such use.1
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`3. Arendi has not shown that Google had the necessary mens rea for inducement, i.e., that
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`it knew that any induced act constituted infringement of the ’843 patent. See 4/26/23 Trial Tr.
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`(Elbouchikhi) at 686:18–687:1 (“Q. Why didn’t Google change how STS worked given that
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`Arendi had sued Google in 2013 for allegedly infringing the ’843 patent? A. Yeah. So going back
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`1 As noted in Google’s parallel Rule 50(a) motion that there is no direct infringement, there is
`also an issue as to when the alleged infringement could have even begun, owing to the fact that
`STS functionality was not turned on until December 2017. Even after maintenance release 1 of
`Android 8 (O-MR1), the evidence at trial is that it would have taken at least several months for
`that release to have been implemented by Android handset manufacturers and distributed in the
`United States by carriers. 4/26/23 Trial Tr. (Elbouchikhi) at 682:3–683:5, 683:22–684:3; 4/27/23
`Trial Tr. (Choc) at 793:9–794:4 (explaining that that “lengthy process” takes “six months” on
`average). Furthermore, even after it was available, the undisputed testimony was that OMR-1
`was not distributed by many handset manufacturers. 4/26/23 Trial Tr. (Elbouchikhi) at 684:4–19;
`4/27/23 Trial Tr. (Choc) at 691:18–792:3. And, as detailed in another Google Rule 50(a) motion,
`there is no direct infringement with respect to Google apps on Samsung devices.
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`4
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 6 of 8 PageID #: 51363
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`to that timeline, you know, in 2017 when I was working on this feature, I had no idea about Arendi.
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`I was not aware of any of this.”); 4/26/23 Trial Tr. (Toki) at 762:13–22 (“Q. Do you disagree that
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`Google knew about the ’843 patent and Google knew that Arendi was protecting itself against the
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`’843 patent and already filed suit against Google someone should have told you? A. I don’t know.
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`I think Google can answer that question. My job is to think about experiences and build, you know,
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`user experiences.”); 4/27/23 Trial Tr. (Choc) at 796:25–797:1 (“I didn’t know about this patent
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`until 2019 when I was deposed.”).
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`4. Arendi has not shown that Google was willfully blind to infringement of the ’843 patent.
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`Willful blindness requires the defendant to take deliberate steps to avoid knowledge of
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`infringement, with a subjective belief that it is highly likely that users are committing infringement.
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`Glob.-Tech Appliances, 563 U.S. at 771. Arendi has not shown anything like that. See 4/27/23
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`Trial Tr. (Choc) at 797:21–798:2 (confirming that Google makes an “effort to avoid infringing
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`intellectual property” and “the legal team ensures that we are being appropriate”).
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`Google’s mere awareness that Arendi had sued it for allegedly infringing the ’843 Patent,
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`and its continuing to make and sell the Accused Products thereafter, is not sufficient to establish
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`that Google subjectively believed there was a high likelihood of infringement. “Willful blindness
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`is a standard of limited scope that surpasses recklessness and negligence.” Roche Diagnostics
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`Corp., 30 F.4th at 1118. Allegations that a party should have known of infringement are therefore
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`insufficient. So too are evidence of a party’s knowledge of the patent and engagement in conduct
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`later held to be infringing. Id. Moreover, courts in this District have held that a claim for indirect
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`patent infringement must fail “where the defendant’s alleged knowledge of the asserted patent[] is
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`based solely on the content of that complaint or a prior version of the complaint filed in the same
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`5
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 7 of 8 PageID #: 51364
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`lawsuit.” ZapFraud, Inc. v. Barracuda Networks, Inc., 528 F. Supp. 3d 247, 250–52 (D. Del. Mar.
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`24, 2021).
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`Therefore, no reasonable juror could find that Google is liable for induced infringement.
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`B.
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`Google Has Not Contributed to Infringement
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`1. Arendi offered no evidence that Google has sold or offered for sale a material component
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`of the claimed invention. The Accused Apps are intangible software services, not “components.”
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`See Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1363–64 (Fed. Cir.
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`2017); 35 U.S.C. § 271(c).
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`2. Arendi has failed to offer any evidence that the Accused Apps are especially made or
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`especially adapted for infringing the ’843 patent—that is, that they lack substantial non-infringing
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`uses. To the contrary, evidence shows that the accused STS features provide non-infringing cut,
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`copy, and share functionality. 4/26/23 Trial Tr. (Elbouchiki) at 675:25–676:2 (STS includes
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`default actions including “copy, cut, and share”); 4/24/23 Trial Tr. (Hedloy) at 169:18–21
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`(agreeing that “[o]ne purpose of your invention was to allow users to perform searches without
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`having to cut, copy, or paste into a contact database”).
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`3. Arendi has not offered any evidence that Google knew that the Accused Apps were
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`especially made for infringement, for the same reasons stated above.
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`4. Arendi has also presented no evidence that Google “offers to sell or sells” the Accused
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`Apps. 35 U.S.C. § 271(c). The Accused Apps are offered to consumers for free.
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`Therefore, no reasonable juror could find that Google is liable for contributory
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`infringement.
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`V.
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`CONCLUSION
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`For these reasons, the Court should grant judgment as a matter of law that Google is not
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`liable for induced or contributory infringement of the ’843 patent.
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`6
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`Case 1:13-cv-00919-JLH Document 495 Filed 04/27/23 Page 8 of 8 PageID #: 51365
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`POTTER ANDERSON & CORROON LLP
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`By: /s/ David E. Moore
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
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`Attorneys for Defendant Google LLC
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`OF COUNSEL:
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`Robert W. Unikel
`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
`
`Ginger D. Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
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`Vincent Y. Ling
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Avenue, 50th Floor
`Los Angeles, CA 90071
`Tel: (213) 683-9100
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`Dated: April 27, 2023
`10780801 / 12599.00040
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`7
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