Case 1:13-cv-00919-JLH Document 503 Filed 04/28/23 Page 1 of 5 PageID #: 51588
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT DELAWARE
`
`C.A. No. 13-919-JLH
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`LETTER TO THE HONORABLE JENNIFER L. HALL FROM DAVID E. MOORE
`REGARDING LICENSED SAMSUNG PRODUCTS
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`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
`abrown@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
`
`Ginger D. Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
`
`Vincent Y. Ling
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Avenue, 50th Floor
`Los Angeles, CA 90071
`Tel: (213) 683-9100
`
`Public Version Dated: April 28, 2023
`
`

`

`Case 1:13-cv-00919-JLH Document 503 Filed 04/28/23 Page 2 of 5 PageID #: 51589
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`Dear Judge Hall:
`
`April 20, 2023
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`Per the Court’s instructions, the parties have discussed how the issue of potentially-licensed
`Accused Apps should be handled at trial and have not come to agreement. Google respectfully
`requests that the Court decide before trial (rather than during or after) whether the Accused Apps
`installed on Samsung devices are licensed under Arendi’s existing license to Samsung (“Samsung
`Agreement”). These Samsung-device apps make up a significant portion—about —of the total
`installations upon which Arendi’s expert, Mr. Weinstein, bases his damages calculation. Yet the
`Samsung Agreement is unambiguous: those apps are licensed and thus must be excluded from any
`damages. Waiting until the JMOL or post-trial stage to decide as a matter of law whether the
`Samsung-device apps are licensed would allow the jury to hear an incorrect, overstated damages
`figure that will significantly prejudice Google. It would also require Google to address alternative
`damages theories by Mr. Weinstein (depending on whether the Samsung-device apps are licensed),
`which would confuse the jury and may even require them to return hypothetical verdicts. Such
`prejudice and confusion risks undermining any damages verdict and requiring a new trial.
`
`At the very least, Google respectfully asks that the Court clarify what evidence and arguments
`regarding the Agreement the parties may present to the jury by deciding as a matter of law whether
`or not the Agreement is ambiguous. That ruling will determine whether the jury can be asked to
`interpret the contract based on extrinsic evidence about Arendi’s and Samsung’s intent, as well as
`what jury instructions and verdict form are appropriate.
`
`I.
`
`Google Will Be Seriously Prejudiced If Arendi Is Allowed to Present Inflated
`Damages Numbers to the Jury
`At the pretrial conference, the Court stated that it would not decide before trial whether, as a matter
`of law, any product was licensed, preferring to address that issue after trial. Ex. 1 at 7:1–9. Google
`respectfully requests the Court to reconsider the timing of that determination to avoid unnecessary
`prejudice, jury confusion, and wasted trial time.
`
`Without a pretrial ruling, Arendi will present a damages argument that Google believes is contrary
`to the Samsung Agreement and will introduce evidence that may turn out to be irrelevant and
`highly prejudicial. Mr. Weinstein opines that Arendi is owed approximately
` as a
`reasonable royalty for installations of Accused Apps, including those installed on Samsung
`devices. D.I. 420, Ex. 1 at 6. Eliminating the Samsung-device apps reduces Mr. Weinstein’s
`. Id., at Ex. 5. If the Court ultimately determines that the Samsung-device
`damages number by
`apps are licensed and/or that Arendi’s claims based on the Samsung devices have been released,
`then Mr. Weinstein’s opinion as to the
` is irrelevant and untethered from any
`actual damages. See TC Tech. LLC v. Sprint Corp., 2019 WL 5295232, at *2 (D. Del. Oct. 18,
`2019) (excluding damages theory as irrelevant where it was based on technology no longer at
`issue). Furthermore, presenting this inflated damages number to the jury will be highly
`prejudicial—giving Arendi an “anchor number” nearly double that which would apply if the Court
`later decides the Samsung-device apps were licensed. See Stewart v. GEICO Insurance, 2020 WL
`6020578, at *1 (W.D. Pa. Oct. 11, 2020); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292,
`1320 (Fed. Cir. 2011) (approving a new damages trial where plaintiff improperly relied on an
`inflated revenue number, and the “$19 billion cat was never put back into the bag” even by a
`limiting instruction).
`
`Public Version Dated: April 28, 2023
`
`

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`Case 1:13-cv-00919-JLH Document 503 Filed 04/28/23 Page 3 of 5 PageID #: 51590
`
`The Honorable Jennifer L. Hall
`April 20, 2023
`Page 2
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`Delaying resolution of this issue will also needlessly complicate trial and waste limited trial time.
`If the coverage of the Samsung Agreement is not determined until after trial, then Google will
`need to address and explain two alternative damage scenarios under Arendi’s theory: one assuming
`that the Samsung Agreement does cover a portion of the Accused Apps and the other assuming it
`does not. Delaying the issue also invites the parties to present background context and extrinsic
`evidence that will be irrelevant if the Court later finds the Agreement unambiguous. Proceeding
`with trial in this way presents a substantial likelihood of confusing the jury. See TC Tech., 2019
`WL 5295232 at *2 (excluding damages theory premised on technology no longer in case, as the
`theory would “require background and create dispute about collateral issues,” which would
`“confuse the issues, mislead the jury, and use up extremely limited trial time.”).
`II.
`The Samsung Agreement Unambiguously Forecloses Arendi’s Claim for Damages
`Despite coming to opposite conclusions, both parties believe that the Samsung Agreement is
`unambiguous, see D.I. 420 (Google); Ex. 1 at 6:9–11 (Arendi), so the Court can decide the scope
`of the Agreement without further evidence. “Construction of an unambiguous contract is a matter
`of law, and the intention of the parties may be gathered from the four corners of the instrument
`and should be enforced according to its terms.” Beal Sav. Bank v. Sommer, 865 N.E.2d 1210,
`1213–14 (N.Y. 2007).1 Where a contract is unambiguous, extrinsic evidence is inadmissible and
`may not be considered. S. Road Assocs., LLC v. IBM Corp., 826 N.E.2d 806, 809 (N.Y. 2005).
`
`The Samsung Agreement grants to Samsung a license under the ’843 Patent “to make, have made,
`import, use, sell, offer for sale, or otherwise dispose of or exploit any Licensed Product.” D.I. 420,
`Ex. 3 § 2.1. Licensed Products are defined as “any past, present, or future product (including
`hardware and software and any service relating thereto) that is made, used, sold offered for sale by
`or for” Samsung and its affiliates. Id. § 1.6. Therefore, Licensed Products include all Samsung
`devices upon which Accused Apps are installed plus the Android operating system, which is pre-
`installed on each device. Arendi does not dispute these points. D.I. 426. Its only argument is that
`the Samsung Agreement does not cover “after-market downloads” of the Accused Apps to
`Samsung devices. Id. Arendi is wrong for three reasons.
`
`First, the Samsung Agreement contains a broad release that encompasses Arendi’s claims against
`Google regarding the Samsung-device apps: Arendi “hereby irrevocably releases and forever
`discharges [Samsung] and its Affiliates . . . together with their suppliers, distributors, wholesalers,
`resellers, retailers, and customers from any or all claims in connection with any Licensed Product
`. . . .” The release thus applies to a claim if two conditions are met: 1) the claim is against Samsung,
`an Affiliate, or a party with one of the identified relationships to Samsung or an Affiliate, and 2)
`the claim at issue is in connection with a Licensed Product. Both conditions are met in this case.
`Google is a supplier to Samsung, as Google supplies Android OS, which is installed on numerous
`Samsung devices.2 And Arendi’s claims in this action against the Samsung-device apps are “in
`connection with” Licensed Products, as Arendi claims infringement by apps downloaded to and
`used on Samsung devices, which are Licensed Products. Additionally, the Samsung-device apps
`
`1 The Samsung Agreement is governed by New York law. D.I. 420, Ex. 3 § 8.5.
`2 Although Arendi argues that Google does not fulfill a “supplier” role for after-market apps, D.I.
`426 at 4, the release is not so limited. The release does not specify that a beneficiary of the release
`must be a supplier of the particular instrumentality accused of infringement. D.I. 431 at 2.
`
`
`

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`Case 1:13-cv-00919-JLH Document 503 Filed 04/28/23 Page 4 of 5 PageID #: 51591
`
`The Honorable Jennifer L. Hall
`April 20, 2023
`Page 3
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`interoperate with Android OS, another Licensed Product. Thus, Arendi’s infringement claims
`against the Accused Apps that are download onto a Licensed Product and rely on another Licensed
`Product to function are clearly “in connection with” a Licensed Product. The Agreement releases
`Google, as a supplier, from all Arendi claims involving the Samsung-device apps.
`
`Second, the purportedly infringing use of the Accused Apps is licensed. The Agreement provides
`that Samsung and its “customers” may “use any Licensed Product” “under the Licensed Patents.”
`D.I. 420, Ex. 3 § 2.1. Each of Arendi’s infringement theories requires a customer to “use” a
`Samsung device—a “Licensed Product.” Infringement of the asserted method claims requires an
`end user of a Samsung device—a Samsung “customer”—to “use” her device to perform each
`claimed step. Similarly, infringement of the computer-readable-medium claims requires an end
`user to use her Samsung device to install an Accused App on that device. In the context of
`purported infringement related to Samsung devices, those devices are Licensed Products whose
`“use” is licensed. Id. § 2.1. Because customers’ use is licensed, there can be no direct or secondary
`infringement involving licensed Samsung devices.
`
`Third, even aside from the Agreement’s explicit release and license, Arendi’s claim to damages
`for Samsung-device apps also fails as a matter of law because its infringement allegations rely on
`Licensed Products—Samsung hardware and preinstalled Android OS, both of which are necessary
`to practice each asserted claim. Samsung hardware is required at least to perform the document
`“display” limitation of method claims 1 and 8; and Samsung hardware is the recited “computer
`readable medium” of the computer-readable-medium claims 23 and 30. Arendi’s only response is
`that the Accused Apps do not include Samsung hardware. D.I. 426 at 5. But this response ignores
`that Arendi’s accusations regarding the Accused Apps include functionality of Android OS, which
`is part of a “Licensed Product.” D.I. 431 at 1–2. Arendi may not claim infringement based on
`licensed products. See Oyster Optics, LLC v. Alcatel-Lucent USA, Inc., 816 F. App’x 438, 445–46
`(Fed. Cir. 2020); Quanta Comp., Inc. v. LG Elecs., Inc., 553 U.S. 617, 628–30 (2008).
`
`The Court Should at Least Decide Whether or Not the Agreement Is Ambiguous
`III.
`Alternatively, if the Court believes the Samsung Agreement is ambiguous, a pretrial decision to
`that effect is needed for clarification of the trial issues. “Determining whether a contract is
`ambiguous ‘is an issue of law for the courts to decide.’” Donohue v. Cuomo, 184 N.E.3d 860, 867
`(N.Y. 2022).3 Here, that determination is necessary for the parties to determine what evidence and
`arguments to present, and what jury instructions and verdict form to propose.
`
`Absent a Court ruling resolving the scope of the Samsung Agreement, Google believes there are
`currently two diverging implications for trial: (1) if the Agreement is unambiguous, the jury should
`be told that the Court (not the jury) will be deciding later on whether or not the Samsung-device
`apps are licensed; or (2) on the other hand, if the Agreement is ambiguous, the jury could be asked
`to consider extrinsic evidence to resolve the ambiguity. The Court should at least decide the
`threshold question of whether the Samsung Agreement is ambiguous, to clarify whether and how
`Google will be allowed to argue to the jury that the Samsung-device apps are covered by it.
`
`3 To the extent Arendi reserves any argument in the alternative that the Agreement is ambiguous,
`see D.I. 456 at 5, the Court cannot let the parties decide whether or not the Agreement is
`ambiguous, as it may have indicated at the pretrial conference, see Ex. 1 at 7:10–13.
`
`

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`Case 1:13-cv-00919-JLH Document 503 Filed 04/28/23 Page 5 of 5 PageID #: 51592
`
`The Honorable Jennifer L. Hall
`April 20, 2023
`Page 4
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`Respectfully,
`
`/s/ David E. Moore
`
`David E. Moore
`
`DEM:nmt/10766475/12599.00040
`
`Enclosure
`cc:
`Clerk of the Court (via hand delivery)
`Counsel of Record (via electronic mail)
`
`