Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 1 of 22 PageID #: 56872
`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 1 of 22 PagelD #: 56872
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 13-919-JLH
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`Original Version Filed: June 2, 2023
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`Public Version Filed: June 9, 2023
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`ARENDIS.A.R.L.,
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`Plaintiff,
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`V.
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`GOOGLELLC,
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`Defendant.
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`ARENDIS.A.R.L.’S OPENING BRIEF IN SUPPORT OF ITS
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`RENEWED MOTIONS FOR JUDGMENTAS A MATTER OF LAW
`AND MOTION FOR A NEW TRIAL
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 2 of 22 PageID #: 56873
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`Plaintiff Arendi S.A.R.L. respectfully renews its motions for judgment as a matter of law
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`and moves for a new trial. Defendant Google LLC has not advanced substantial evidence to prove
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`the invalidity of Claims 1 and 23 (the “Asserted Claims”) of U.S. Patent No. 7,917,843 by clear
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`and convincing evidence. Defendant’s expert, Dr. Fox, provided conclusory testimony regarding
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`anticipation by CyberDesk that ignored claim limitations. With respect to obviousness, Google
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`failed to advance a motivation to combine; failed to present relevant evidence of the operation of
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`Microsoft Word ’97; failed to explain how the proposed combination would render the claims
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`obvious; and failed meaningfully to address secondary considerations of non-obviousness. Finally,
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`Google presented an invalidity defense that was estopped under 35 U.S.C. § 315(e)(2).
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`I.
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`BACKGROUND
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`The Court held a jury trial from April 24 to May 2, 2023, on infringement and validity of
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`the Asserted Claims. Google alleged that the Asserted Claims were anticipated by an alleged
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`CyberDesk system and rendered obvious by i) CyberDesk in view of an alleged Apple Data
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`Detectors system (“ADD”); ii) CyberDesk in view of Word ’97 (“Word”); and iii) ADD in view
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`of Word. Trial Tr.1 (4/24) at 19:17-21; see also Ex. 1 (4/22 email from Google’s counsel) at 1.
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`On April 27, Google played deposition testimony concerning CyberDesk and ADD. Anind
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`Dey testified concerning CyberDesk, and Google used his testimony to admit references describing
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`CyberDesk: DTX-006-011, DTX-013-020, DTX-028, and DTX-034. Trial Tr. (4/27) at 826:11-
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`18. Google never presented an actual CyberDesk system because none exists. E.g., id. at 14-18.
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`James Miller then testified concerning ADD. Id. at 996:16-1055:8. Google likewise used Mr.
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`Miller to admit references allegedly describing ADD into evidence: DTX-179-180, DTX-182,
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`DTX-186-191, DTX-777, DTX880-183. Although Google claimed to have laptops with ADD
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`1 Citations to “Trial Tr.” reference the draft trial transcripts.
`1
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 3 of 22 PageID #: 56874
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`installed, Google declined to offer them into evidence or to demonstrate their functionality in court.
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`Trial Tr. (4/27) at 993:23-994:15. No other fact witnesses testified concerning CyberDesk or ADD.
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`No fact witnesses testified concerning Word, and no exhibits were admitted concerning Word.
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`Google’s invalidity expert witness, Edward Fox, testified on May 1, 2023.
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`Arendi then moved for judgment as a matter of law of no anticipation under section 102
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`and non-obviousness under section 103. Trial Tr. (5/1) at 1423:19-1424:14. Arendi also raised IPR
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`estoppel as a basis for granting JMOL. Id. at 1425:18-1426:23. On May 10, 2023, the Court entered
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`Judgment Following Verdict “in favor of Defendant and against Plaintiff on Defendant’s invalidity
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`defenses.” D.I. 545 at 1. The Court denied Arendi’s Rule 50(a) motions as moot. Id.
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`II.
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`ARGUMENT
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`The Court should grant judgment as a matter of law of no invalidity because insufficient
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`evidence supports a finding of anticipation or obviousness. In the alternative, the Court should
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`grant a new trial because such findings are against the clear weight of the evidence. Google
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`presented a conclusory invalidity case and relied on estopped grounds. JMOL is granted under
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`Rule 50(b) “if, viewing the evidence in the light most favorable to the nonmovant and giving it the
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`advantage of every fair and reasonable inference, there is insufficient evidence from which a jury
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`reasonably could find for the nonmovant.” TQ Delta, LLC v. 2Wire, Inc., 486 F. Supp. 3d 803, 806
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`(D. Del. 2020) (citation omitted). A court may exercise its discretion to grant a new trial under
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`Rule 59(a) “if the jury’s verdict is against the clear weight of the evidence, and a new trial [is
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`necessary] to prevent a miscarriage of justice.” Id. (internal quotation omitted).
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`A.
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`Anticipation
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`Google failed to prove that CyberDesk disclosed each limitation of the Asserted Claims.
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`“Invalidity must be established by clear and convincing evidence.” ActiveVideo Networks, Inc. v.
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`2
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 4 of 22 PageID #: 56875
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`Verizon Commc’ns, Inc., 694 F.3d 1312, 1329 (Fed. Cir. 2012). “To anticipate a claim, a prior art
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`reference must describe ‘each and every claim limitation . . . .” Id. “Typically, testimony
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`concerning anticipation must be testimony from one skilled in the art and must identify each claim
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`element, state the witnesses’ interpretation of the claim element, and explain in detail how each
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`claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely
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`conclusory.” Schumer v. Lab’y Computer Sys., Inc., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002).
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`Google did not meet these exacting requirements. Dr. Fox’s testimony on anticipation
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`spans only six transcript pages, Trial Tr. (5/1) at 1171:3-1177:1, including a page and a half of
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`prefatory remarks, id. at 1171:3-1172:12. He does not state his interpretation of each claim
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`limitation; he does not explain how CyberDesk discloses each limitation; and he routinely ignores
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`claim constructions. This conclusory testimony cannot support a finding of anticipation.
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`Dr. Fox’s testimony about the “displaying the document . . .” limitation spans six lines. Id.
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`at 1173:9-14. He does not explain, for example, how CyberDesk discloses a “document.” See D.I.
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`144 at 3 (construing “document” as “a word processing, spreadsheet, or similar file into which text
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`can be entered”). Dr. Fox notes browsers’ ability to “display things,” including “programs where
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`you can make edits,” Trial Tr. (5/1) at 1173:9-14; however, he does not explain why these “things”
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`constitute “word processing, spreadsheet or similar files,” and he does not show that these “things”
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`are editable when displayed and analyzed using CyberDesk. See D.I. 400 at 11 (requiring
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`document to “remain editable at least when it is displayed and analyzed.”). Indeed, the sole “thing”
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`to which Dr. Fox points is the image of an email browser in DTX-0010.0002 and DTX-0011.0001.
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`Trial Tr. (5/1) at 1173:9-14. No evidence shows that this browser facilitated editing.2 Rather, DTX-
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`2 When introducing CyberDesk, Dr. Fox points to Dr. Dey’s affirmative answer (at Trial Tr. (4/27)
`892:4-8) to the question, “[W]hen it could pull text from an e-mail, was it possible that a user could
`be working in an e-mail when the text was selected for the CyberDesk to work?,” as evidence that
`3
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 5 of 22 PageID #: 56876
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`0011.0001 depicts a received email, and Dr. Fox describes this CyberDesk service as “a mail
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`reader.” Id. at 1154:11-13; see also id. at 1183:13-16 (Dr. Sacerdoti testifying, “It’s a mail reader,
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`not a full mail client. It means it’s reading your mail. That means what it’s reading is not an editable
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`document under the Court’s construction; therefore, it’s not a document.”).
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`Dr. Fox’s 15 lines of testimony on the limitation, “while the document is being
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`displayed…,” also fall short. Id. 1173:15-1174:4. That element requires, inter alia, analyzing “to
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`determine if the first information belongs to one or more of several predefined categories … that
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`can be searched for”—and the categories must be identifying or contact information. D.I. 144 at
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`3. Dr. Fox’s assertion that CyberDesk could “recognize a lot of different kinds of information”
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`cannot establish that CyberDesk meets these requirements. Trial Tr. (5/1) at 1171:3-1177:1.
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`Indeed, the rest of Dr. Fox’s analysis discusses only one type of information, a name, which falls
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`short of the limitation’s “one or more of several” requirement. E.g., id. at 1174:23-25.3
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`Google lacks evidence regarding the “retrieving…” limitation. Dr. Fox’s two lines of
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`testimony read, “It found that name, that highlighted name. So it retrieved it. So that’s also covered.
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`That’s Element D.” Id. at 1174:5-6. “So it retrieved it” is a conclusion—not an explanation.4
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`the “mail reader” “doesn’t have to be a mail reader; you can go with editing tools.” Trial Tr. (5/1)
`at 1155:2-18. Dr. Fox wrongly equates “working in an e-mail” with editing. Dr. Fox also points to
`Dr. Dey’s testimony about inserting “text that was found” into a “working document” as proof that
`CyberDesk disclosed the required “document.” Id. at 1155:21-1156:12. But that text was inserted
`into a separate editor—not the email used in the analyzing step. Trial Tr. (4/27) at 892:25-893:7.
`3 Dr. Fox’s introduction to CyberDesk, which is untethered to specific limitations, cannot fill these
`gaps. Although he notes that CyberDesk permits “look[ing] up words in dictionaries,” Trial Tr.
`(5/1) at 1157:16-1158:6, “words” are neither “identifying” nor “contact” information. Dr. Fox also
`states, “So we heard from Dr. Smedley about looking up an address and finding information and
`going to a map. So I just wanted to remind us that this is what we saw in the CyberDesk system as
`well.” Id. at 1157:12-15. Dr. Fox does not tie this feature to a limitation or explain how CyberDesk
`implemented that feature. If he was referencing DTX-0028.0001, that exhibit reads, “retriev[ing]
`a map for a given address,” and does not disclose analyzing to identify an address.
`4 Even if Dr. Fox is equating “finding” and “retrieving” names, his testimony is inadequate. First,
`he does not state that understanding. Second, that view would collapse two limitations: “retrieving”
`4
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 6 of 22 PageID #: 56877
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`Dr. Fox offers six lines of perfunctory testimony concerning “providing an input device
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`configured by the first computer program,” id. at 1174:7-12, construed to mean “providing an input
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`device set up by the first computer program for use by the user.” D.I. 144 at 4. Dr. Fox ignores
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`that construction. Instead, he concludes, “So part of this program shows us an input device, the
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`ActOn button bar…. So it’s providing an input device.” Trial Tr. (5/1) at 1174:7-12. Dr. Fox
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`equates, without explanation, “show[ing] us an input device” with “configur[ing]” an input device.
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`Dr. Fox devotes 17 lines to whether the ActOn Button allows the user to initiate the claimed
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`operation. Id. at 1174:13-1175:4. But he fails, for example, to identify how CyberDesk discloses
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`that the type(s) of second information depend on the type(s) of first information. PX-1 (’843
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`Patent) at col. 12, ll. 61-63. Such a dependency requires at least two types of first information. Dr.
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`Fox identifies only one: “a name.” Trial Tr. (5/1) at 1174:13-1175:4. He also does not testify that
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`the search occurs “in an information source external to the document.” PX-1 (’843 Patent) at col.
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`12, ll. 60-61. For “performing an action using at least part of the second information,” id. at 63-
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`64, he simply concludes, “And then the last thing is, setting this up to take an action. So F is setting
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`up this button to do all this stuff. So we clearly covered all of that.” Trial Tr. (5/1) at 1175:2-4.
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`Dr. Fox’s 11 lines of testimony, id. at 1175:5-16, about the “in consequence…” element,
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`ignore more requirements. For example, he says nothing about whether or how the browser
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`(apparently his “first computer program”) receives the user command. He also fails clearly to
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`identify any “second computer program.” Although he references “going to the second computer
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`program called ‘Switchboard,’” Dr. Fox immediately clarifies that he only “think[s] it’s a separate
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`program.” Id. at 1175:8-10. He doesn’t say why he thinks that, and he fails to point to evidence
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`information and “analyzing… to identify” that information. Third, Dr. Fox must show the claim is
`practiced with multiple types of first information—not only names.
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 7 of 22 PageID #: 56878
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`that Switchboard is “a self-contained set of instructions, as opposed to a routine or library, intended
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`to be executed on a computer so as to perform some task.” D.I. 144 at 3 (construing “computer
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`program”). Indeed, such a conclusion is inconsistent with Dr. Fox’s prior testimony, which treated
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`CyberDesk’s applets as part of the single browser “computer program” in which they run. Trial
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`Tr. (5/1) at 1172:22-24; see also DTX-0013.0002 (identifying email browser and Switchboard as
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`applets).
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`For the “if searching finds any…” element, Dr. Fox offers six lines of inadequate
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`testimony. Trial Tr. (5/1) at 1175:16-21. Dr. Fox identifies a single action: “displaying all that
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`information to us” when Switchboard is used with respect to a name. Id. at 1175:21. He makes no
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`reference, for example, to the requirement that the action be “of a type depending at least in part
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`on the type or types of the first information.” PX-1 (’843 Patent) at col. 13, ll. 5-6.
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`Dr. Fox’s testimony fails with respect to Claim 30, which requires “providing a prompt for
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`updating the information source to include the first information,” PX-1 (’843 Patent) at col. 13, ll.
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`39-40 (emphases added), i.e., the same source searched in Claim 23. The only possible search
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`identified by Dr. Fox was for a name in Switchboard. Trial Tr. (5/1) at 1175:5-15. And Google put
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`forward no evidence establishing that the alleged “New Contact” prompt that Dr. Fox identified in
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`DTX-14 updates Switchboard’s information source. Id. at 1176:6-1176:18.5 To the contrary, DTX-
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`14 states that the button puts “contact information in the contact manager.” DTX-0014.0002; see
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`also DTX-0014.0003 (contrasting desktop “contact managers” with network services such as
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`“telephone directories”); DTX-0013.0002 (identifying contact manager and Switchboard as
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`distinct applets). Moreover, the claim requires a prompt for at least two types of first information.
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`E.g., PX-1 (’843 Patent) at 12:50 (requiring “plurality of types of information”). Cf. Trial Tr. (4/25)
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`5 The image about which Dr. Fox testified is illegible. See DTX-0014.0002 at Fig. 2.
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 8 of 22 PageID #: 56879
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`433:20-434:7 (testimony of Dr. Smedley that Google’s products practice this limitation because
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`they provide prompts for “more than one type of first information”). But Dr. Fox identifies a
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`prompt for only one type of alleged first information: names.
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`None of Dr. Fox’s introductory testimony concerning CyberDesk fills these gaps. Trial Tr.
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`(5/1) at 1149:3-1161:5; see also id. 1165:20-1167:13, 1169:17-1170:14. First, this introductory
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`testimony was largely untethered to limitations or constructions.6 Second, Dr. Fox advances an
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`illogical reading of the AEDS for a different patent to conclude that Arendi admitted anticipation
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`of certain limitations. Id. at 1146:12-1147:4. In fact, when prosecuting the ’843 Patent, Arendi
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`simply noted “that the prior art references” in the AEDS for Application Serial No. 12/841,302
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`“are of particular interest.” DTX-0002.0344. In that AEDS, Arendi stated the following:
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`Cyberdesk is a framework that supports the automatic integration of various
`software applications . . . . In another example, the user highlights a name in the e-
`mail message and CyberDesk offers various options that are specific to the name
`(e.g., look up the name in a contact manager). . . . Among other things, the Dey
`reference does not disclose contact information handling implemented by a
`document editing program. Dey does not disclose analyzing selected textual
`information by the document editing program, as required by the claims.
`CyberDesk itself analyzes text highlighted by the user and CyberDesk is separate
`from any document editing programs.”
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`DTX-0925.0114-15. Based on these statements, Dr. Fox illogically concludes that Arendi admits
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`that CyberDesk practices all limitations except “providing an input device, configured by the first
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`computer program” and “in consequence of receipt….” Trial Tr. (5/1) at 1146:12-1147:4, 1159:14-
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`1161:5, 1165:20-1167:13. First, Arendi was discussing the requirements of a different patent.
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`6 Toward the conclusion of his introductory remarks, Dr. Fox offers a sweeping conclusion:
`So this is just kind of a reminder, and if we interpret this based on what we heard,
`that we’re teaching all the shortcut elements. And to make this clear, to remind us
`of those things A through H that I pointed out before, in the bottom right of the
`screen, you see in red I ticked off A, B, C, D, F and H. So that is the six shortcut
`elements out of the eight that we are concerned with.
`Id. at 1153:12-13. That conclusion fails to explain how CyberDesk discloses any limitation.
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`Second, providing an example of what, “[a]mong other things,” CyberDesk failed to disclose does
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`not admit that CyberDesk does anything else. Third, when prosecuting the ’843 Patent, Arendi
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`referred the PTO to “prior art references” in the AEDS—not to Arendi’s commentary.
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`Google’s failure to advance evidence that CyberDesk discloses each limitation of the
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`Asserted Claims—including non-conclusory expert testimony—is fatal to its anticipation defense.
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`For example, in ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1329-31,
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`(Fed. Cir. 2012), the Federal Circuit affirmed JMOL of non-anticipation over multiple pieces of
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`prior art due to an expert’s failure to explain with “sufficient technical detail” how the prior art
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`systems “actually work” and to identify how specific limitations are disclosed. Likewise, in Koito
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`Manufacturing Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004), the Federal
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`Circuit denied JMOL with respect to non-anticipation where an expert provided “[g]eneral and
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`conclusory testimony” that failed to “demonstrate to the jury how that reference met the limitations
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`of the claims” of the patent-in-suit. And in Inline Connection Corp. v. EarthLink, Inc., 684 F. Supp.
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`2d 496, 515, 521 (D. Del. 2010), this Court granted JMOL of non-anticipation because the
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`defendant’s expert did not “explain in detail how each claim element is disclosed” in the prior art
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`(quoting Koito Mfg. Co., 381 F.3d at 1152). Here, too, Google has not proven that CyberDesk
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`discloses each limitation of the Asserted Claims.
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`B.
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`Obviousness
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`Google also failed to prove the Asserted Claims are invalid under 35 U.S.C. § 103.
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`“Obviousness is a question of law based on underlying factual findings: (1) the scope and content
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`of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary
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`skill in the art; and (4) objective indicia of nonobviousness.” InTouch Techs., 751 F.3d at 1347
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`(Fed. Cir. 2014). “An obviousness determination generally requires a finding that ‘all claimed
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`limitations are disclosed in the prior art,’ and ‘that a person of ordinary skill in the art would have
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`been motivated to combine or modify the teachings in the prior art . . . .’” Univ. of Strathclyde v.
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`Clear-Vu Lighting LLC, 17 F.4th 155, 160 (Fed. Cir. 2021) (citations omitted). Google needed to
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`establish obviousness by clear and convincing evidence. EcoServices, LLC v. Certified Aviation
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`Servs., LLC, 830 F. App’x 634, 648 (Fed. Cir. 2020).
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`1.
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`The record lacks adequate motivation to combine CyberDesk,
`ADD or Word.
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`“A party seeking to invalidate a patent on obviousness grounds must ‘demonstrate by clear
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`and convincing evidence that a skilled artisan would have been motivated to combine the teachings
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`of the prior art references to achieve the claimed invention . . . .’” InTouch Techs., Inc., 751 F.3d
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`at 1347 (citation omitted). “Identifying a motivation to combine the prior art is important because
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`“inventions in most, if not all, instances rely on building blocks long since uncovered, and claimed
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`discoveries almost of necessity will be combinations of what, in some sense, is already
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`known.” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1357 (Fed. Cir. 2019) (quoting KSR
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`Int’l Co. 550 U.S. at 418–19 (2007)). Expert testimony is generally required to establish a
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`motivation to combine. Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1347-48 (Fed. Cir. 2013).
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`Dr. Fox did not establish a motivation to combine CyberDesk with Word. In six lines of
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`testimony, Dr. Fox asserts that a POSITA would have had such a motivation because “Simple
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`Notepad” was a desktop service supported by CyberDesk, and “Simple Notepad is a word
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`processing document. So if one thinks of word processing documents, one would think of
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`Microsoft Word.” Trial Tr. (5/1) at 1177:18-22. That’s it. He offers no evidence that Simple
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`Notepad was a “word processing document,” and he never explains how its incidental use of a
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`word processing document would place CyberDesk in the same field as Word. See, e.g., DTX-
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`0010.0001 (describing CyberDesk as a “project that addresses automatic service integration”).
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`More importantly, Dr. Fox fails to justify his sweeping premise that a POSITA would be motivated
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`to combine any teaching of Word with any prior art connected to word processing in any fashion.
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`Dr. Fox’s apparent view that CyberDesk and Word relate to the same or a similar field does
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`not provide a motivation to combine. Under similar circumstances, InTOUCH Technologies, Inc.
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`held that the district court erred by denying JMOL as to validity. 751 F.3d at 1353. In that case,
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`the invalidity expert proposed combining multiple references that concerned “doing things over
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`the Internet.” Id. at 1351. The Federal Circuit rejected that testimony as “vague” and for “not
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`articulat[ing] reasons” for the combination. Id. Again, in Securus Technologies, Inc. v. Global
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`Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017), the Federal Circuit held that the “broad
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`characterization of Susen and Gainsboro as both falling within the same alleged field of
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`‘telecommunications monitoring and control’” could not establish an adequate motivation; and the
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`Court noted that “[s]uch short-cut logic would lead to the conclusion that any and all combinations
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`of elements known in this broad field would automatically be obvious.”7 As in inTOUCH and
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`Securus, Dr. Fox proposes combining prior art simply because it bore a relation to word processing.
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`Identical assertions unlay Dr. Fox’s view that a POSITA would combine ADD with Word:
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`[I]f we look in the picture there, we see that this is clearly a word processing
`document. In the top in parentheses it also says WP for word processing. So [A]pple
`Data Detectors tells us to think about word processors and clearly that would lead
`us to something like Microsoft Word.
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`7 See also, e.g., Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., 838 F. App’x 555, 557
`(Fed. Cir. 2021) (affirming finding of no motivation to combine based on allegation “references
`came from the same field of study and address the same problem” or “boilerplate legal conclusions
`untethered to any claim language”); Microsoft Corp. v. Enfish, LLC, 662 F. App'x 981, 990 (Fed.
`Cir. 2016) (affirming finding of no motivation to combine notwithstanding expert declaration that
`indexing systems in prior art “address[ed] the same technical issues and disclose[d] closely related
`subject matters” and “both dea[lt] with solving the problem of locating key words in a database.”).
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`Trial Tr. (5/1) at 1178:6-12; see also DTX-189.0004. Dr. Fox fails to establish a motivation for
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`this combination for the same reasons as his prior one.
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`For the combination of ADD and CyberDesk, Dr. Fox provides one motivation to combine:
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`some of the CyberDesk publications include a citation to the ADD home page in their references.
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`Trial Tr. (5/1) at 1177:23-1178:4, 1178:15-18. Once again, Dr. Fox does not cabin his sweeping
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`premise that, if a reference describing one system contains a citation to a reference describing
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`another system, a POSITA would be motivated to combine them in any way. He says nothing at
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`all about why a POSITA would be motivated to combine the “Write a Letter” feature of ADD with
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`CyberDesk, which is the specific teaching he asserts a POSITA would borrow. See infra at 12-13.
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`Dr. Fox also failed to rebut evidence that the prior art teaches away from his proposed
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`combinations. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018).
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`Dr. Sacerdoti explained how CyberDesk and ADD were “going in opposite directions” and had
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`“different motivations.” Trial Tr. (5/1) at 1394:22-1396:8. Per Dr. Sacerdoti, ADD “was designed
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`to be something that was going to be actually added to the commercial operating system” and
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`therefore “was trying to narrow the kinds of options they gave to users” and “was looking for the
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`smallest increment” of change. Id. at 1395:2-17, 1396:3-6. In contrast, CyberDesk “was a research
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`project” attempting to “blow[] out the menu” and focused on “finding other ways to determine []
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`context.” Id. 1395:18-25. Dr. Sacerdoti, quoting from DTX-010.0001, similarly explained how the
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`CyberDesk disclosures teach away from a combination with Word by expressly describing the
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`“tightly-integrated suite of tools” in “commercial personal productivity products” like Word as
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`“unsatisfactory.” Id. at 1397:5-1399:12. CyberDesk provided the alternative of a “service
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`integration framework that removes most of the programming burden . . . [,] provides greater
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`flexibly to the user and automatically suggests how two services can be integrated.” DTX-
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`11
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 13 of 22 PageID #: 56884
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`010.0001. Finally, Dr. Sacerdoti explained that Microsoft Word’s “closed system around the
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`Office suite of products” was “aiming in the opposite direction[]” of ADD, which was “trying to
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`allow all programs to participate in this integration process dynamically in run time” without
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`requiring developers to change individual applications’ code. Trial Tr. (5/1) at 1400:1-22; see also
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`id. at 1400:23-1404:1 (making similar points with reference to DTX-975). The evidence adduced
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`at trial thus weighs strongly against finding any motivations to combine.
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`2.
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`Google’s combinations do not teach the claimed invention.
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`Even with a motivation to combine Google’s prior art, those combinations would not make
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`the Asserted Claims obvious. “An obviousness determination generally requires a finding that ‘all
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`claimed limitations are disclosed in the prior art.’” Univ. of Strathclyde v. Clear-Vu Lighting LLC,
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`17 F.4th 155, 160 (Fed. Cir. 2021) (citation omitted); see also id. at 162 (reversing finding of
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`obviousness where “no reasonable fact finder could have found that the combination” discloses
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`every limitation); K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014).
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`“[C]onclusory expert testimony is inadequate to support an obviousness determination on
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`substantial evidence review.” TQ Delta, LLC, 942 F.3d at 1359.
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`a.
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`CyberDesk in view of ADD
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`A reasonable juror could not find that CyberDesk in view of ADD rendered the Asserted
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`Claims obvious. Dr. Fox testified only that ADD’s “Write a Letter” functionality would supply the
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`“if searching finds” limitation missing from CyberDesk. Trial Tr. (5/1) at 1178:21-1179:10.8 His
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`proposal thus would not supply other limitations missing from CyberDesk as identified above. See
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`
`8 When discussing CyberDesk in view of ADD, Dr. Fox also states, “we’re seeing editable
`documents in our examples.” Id. at 1179:21-22. Dr. Fox did not identify those examples; he did
`state that ADD would make applying CyberDesk to editable document obvious; and he did not
`testify about editability during the displaying and analyzing steps. But, even with such testimony,
`the combination would still fail to teach the multiple claim limitations missing from CyberDesk.
`12
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 14 of 22 PageID #: 56885
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`Inline Connection Corp., 684 F. Supp. 2d at 523 (“Because … the cited testimony concerning the
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`Bellcore RFI was insufficient to demonstrate an element-by-element disclosure of the asserted
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`claims, Waring’s additional testimony concerning the Valenti Article concerning claim elements
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`purportedly missing from the Bellcore RFI cannot sustain the jury verdict on obviousness….
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`Consequently, the court grants Inline’s motion for JMOL on the issue of obviousness.”).
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`Dr. Fox’s testimony cannot establish even that ADD teaches “if searching finds…,” inter
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`alia, because he does not show that “Write a Letter” teaches an action “of a type depending at least
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`in part on the type or types of the first information.” PX-1 (’843 Patent) at col. 13, ll. 5-6. The
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`identified “Write a Letter” feature does not vary with the type of first information: Dr. Fox testifies
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`that it starts with an email address (one type of information) and then “put[s] all this stuff into” a
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`letter (one type of action). Trial Tr. (5/1) at 1163:20-1164:17; 1179:5-10.
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`The record also cannot support finding Claim 30 to be obvious. Dr. Fox first testified about
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`the “new contact” button in CyberDesk that he referenced for anticipation. Id. at 1180:20-25. That
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`testimony fails to establish invalidity for the reasons discussed above at 6. Dr. Fox then turns to an
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`“Add e-mail address to e-mail address book” button in ADD. Id. at 1181:1-1182:21.9 Dr. Fox’s
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`testimony indicates that the prompt can add an email address to the Claris e-mailer address book,
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`id. at 1182:2-8; however, no evidence shows that this address book is “the information source”
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`used with the “Write a Letter” functionality on which Dr. Fox otherwise relies. Claim 30 doesn’t
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`teach adding a contact to a database generally; rather, it teaches a prompt for adding first
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`information to the same database in which an automated search for that first information occurs.
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`9 Dr. Fox’s discussion concerns the alleged operation of two PowerBook computers that Google
`intentionally chose not to offer into evidence—and did not even demonstrate at trial. See Trial Tr.
`(4/27) at 993:23-994:18. Thus the jury was entirely reliant on Dr. Fox’s testimony.
`13
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`Case 1:13-cv-00919-JLH Document 566 Filed 06/09/23 Page 15 of 22 PageID #: 56886
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`Moreover, as for CyberDesk’s “new contact” button, Dr. Fox has failed to identify prompts in
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`ADD that work with respect to more than one type of first information. See supra at 6-7.
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`Dr. Fox testified in passing that ADD in view of CyberDesk would also invalidate the
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`claims. Trial Tr. (5/1) at 1179:23-1180:14. That obviousness combination was not preserved by
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`Google. Trial Tr. (4/24) at 19:17-21; see also Ex. 1 (Email from Counsel for Google, dated Apr.
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`23, 2023) at 1 (disclosing these obviousness grounds as those “Google will present at trial”). In
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`any event, the record cannot establish obviousness by ADD in view of CyberDesk. Dr. Fox offers
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`bare conclusions without any explanation of what teachings would be combined and for what
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`reasons. Trial Tr. (5/1) at 1180:12-14 (“So combining these two, put the checklist together, we
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`have all of the limitations”); see also infra at 14-16 (discussion Google’s failure to establish ADD
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`discloses additional claim limitations).
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`b.
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`ADD in view of Word & CyberDesk in view of Word
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`A reasonable juror