Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 1 of 775 PageID #: 60580
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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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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`C.A. No. 13-919-JLH
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`REDACTED VERSION
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`NON-PARTIES SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.’S
`UNOPPOSED MOTION TO SEAL PORTIONS OF
`THE TRIAL TRANSCRIPTS AND EXHIBITS
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`Non-parties Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(collectively, “Samsung”), by and through its attorneys, hereby move to seal limited portions of
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`the trial transcript and certain exhibits containing Samsung’s highly confidential business
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`information relating to its settlement and licensing agreements. Pursuant to D. Del. L.R. 7.1.1,
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`Samsung has conferred with Arendi S.A.R.L. (“Arendi”) and Google LLC (“Google”) to
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`determine whether they opposed this request to seal, and both parties have indicated that they did
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`not oppose. Samsung’s proposed redactions are set forth in the attached sealed Exhibits.1
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`I.
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`FACTUAL BACKGROUND
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`At a jury trial from April 24, 2023, to May 2, 2023, this Court elicited testimony and
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`admitted an exhibit related to Samsung’s settlement and licensing agreement with Arendi.
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`During the trial, the Court heard testimony related to a Settlement and Patent License Agreement
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`1 As Samsung received trial transcripts that have been previously redacted for confidential
`information related to third parties (D.I. 572), its proposed redactions are shown as highlighted,
`rather than redacted.
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`1
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`

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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 2 of 775 PageID #: 60581
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`between Samsung and Arendi (the “Samsung-Arendi Agreement”), admitted into evidence as
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`PX-77 (also referenced at trial as DTX-283). For example, the damages experts for both Arendi
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`and Google discussed the Samsung-Arendi Agreement, including confidential terms such as the
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`amount paid by Samsung in the agreement. See Apr. 26 Tr., infra Section III(2); May 1 Tr.,
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`infra Section III(3). Attorneys for the parties also engaged in discussions of the Samsung-Arendi
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`Agreement and its terms in arguments to the Court. See e.g., Apr. 24 Tr., infra Section III(1).
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`On June 8, 2023, Samsung filed a notice of intent to redact and/or seal limited portions of
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`the trial transcripts. D.I. 564. On June 20, 2023, Samsung filed a stipulation and proposed order
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`by which Arendi and Google agreed to allow Samsung’s outside counsel access to portions of
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`the trial transcript with third-party confidential information unrelated to Samsung or its
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`agreements with Arendi redacted. D.I. 572. The Court ordered that stipulation on June 22, 2023.
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`D.I. 573. Samsung received the redacted transcripts from Arendi’s counsel on July 28, 2023,
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`and the Samsung-Arendi Agreement (Exhibit PX-77 (also referenced at trial as DTX-283)) on
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`July 31, 2023.
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`Samsung notes that non-parties Apple, Inc. (“Apple”) and Microsoft Corp. (“Microsoft”)
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`filed motions to seal similar portions of the trial transcripts and exhibits on May 3, 2023, and
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`July 21, 2023, respectively. D.I. 537, 587. Apple’s motion was granted on June 6, 2023, while
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`Microsoft’s motion was granted on July 24, 2023. D.I. 562, 591.
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`II.
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`LEGAL STANDARD
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`There is “a ‘strong presumption’ that the public and the media [are] entitled to access”
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`judicial records. Bank of Am. Nat. Tr. & Sav. Ass’n v. Hotel Rittenhouse Assocs., 800 F.2d 339,
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`343 (3d Cir. 1986). That presumption, however, is “not absolute,” and may be rebutted if a party
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`can show “that the interest in secrecy outweighs the presumption.” In re Avandia Mktg., Sales
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`Pracs. & Prod. Liab. Litig., 924 F.3d 662, 672 (3d Cir. 2019) (quoting Bank of Am., 800 F.2d at
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`2
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`

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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 3 of 775 PageID #: 60582
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`344). A party seeking to seal portions of a judicial record “must articulate ‘the compelling,
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`countervailing interests to be protected,’ make ‘specific findings on the record concerning the
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`effects of disclosure,’ and ‘provide[ ] an opportunity for interested third parties to be heard.’” Id.
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`at 672-73 (quoting In re Cendant Corp., 260 F.3d 183, 194 (3d Cir. 2001)). The Third Circuit
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`has found that “if a case involves private litigants, and concerns matters of little legitimate public
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`interest, that should be a factor weighing in favor of granting or maintaining an order of
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`confidentiality.” Pansy v. Borough of Stroudsburg, 23 F.3d 772, 788 (3d Cir. 1994).
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`Discussions of settlement and licensing agreements in judicial records are commonly
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`found to rebut the presumption of access and are thus protected from disclosure by the courts.
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`See Amgen Inc. v. Amneal Pharms. LLC, No. 16-853-MSG, 2021 WL 4133516, at *6 (D. Del.
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`Sept. 10, 2021) (quoting Littlejohn v. Bic Corp., 851 F.2d 673, 678 (3d Cir. 1988)) (stating that
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`the “disclosure of…settlement agreements is not necessary to provide the public with a
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`‘complete understanding of the judicial system and a better perception of its fairness.’”); Kaleo,
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`Inc. v. Adamis Pharms. Corp., No. 19-917-RGA, 2019 WL 11680196, at *2 (D. Del. July 16,
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`2019) (finding good cause to seal “details of, discussion of, and/or reference surrounding
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`licensing negotiations.”); Delaware Display Grp. LLC v. LG Elecs. Inc., 221 F. Supp. 3d 495,
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`497 (D. Del. 2016) (finding it appropriate to seal details such as “the pricing terms in license
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`agreements, some other non-public financial information, trade secrets, and other proprietary
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`technology.”)
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`INFORMATION TO BE SEALED
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`III.
`Samsung respectfully requests that limited portions of the trial transcripts and Exhibit
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`PX-77 (also referenced at trial as DTX-283) be sealed, consistent with the Rules and the law of
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`this Court and the Third Circuit. With regard to the non-redacted parts of the transcripts to
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`3
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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 4 of 775 PageID #: 60583
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`which it received access,2 Samsung requests sealing of the confidential information located on
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`the following pages and lines:
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`1) April 24 Transcript (Ex. A):
`a. Pg. 105, ll. 19-21
`b. Pg. 106, ll. 2-4, 7-8, 12-19, 21-22
`c. Pg. 159, ll. 10-21, 24
`d. Pg. 160, ll. 4-25
`e. Pg. 161, ll. 1-2, 7-25
`f. Pg. 162, ll. 1-8, 15-19
`g. Pg. 232, ll. 15-25
`h. Pg. 233, l. 1 – pg. 240, l. 6
`i. Pg. 246, l. 5 – pg. 250, l. 7
`j. Pg. 266, ll. 4-9, 24-25
`k. Pg. 267, ll. 1-5
`l. Corresponding portions of the index related to these redactions
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`2) April 26 Transcript (Ex. B):
`a. Pg. 578, ll. 20-24
`b. Pg. 581, ll. 16-23
`c. Pg. 592, l. 11 – pg. 593, l. 4
`d. Pg. 627, l. 11 – pg. 628, l. 18
`e. Pg. 664, ll. 12-24
`f. Corresponding portions of the index related to these redactions
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`3) April 27 Transcript (Ex. C):
`a. Pg. 819, ll. 21-25
`b. Pg. 820, ll. 1-24
`c. Pg. 934, ll. 1-2
`d. Corresponding portions of the index related to these redactions
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`4) April 28 Transcript (Ex. D):
`a. Pg. 1122, l. 20
`b. Corresponding portions of the index related to these redactions
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`5) May 1 Transcript (Ex. E):
`a. Pg. 1250, ll. 14, 20
`b. Pg. 1291, l. 6
`c. Pg. 1295, l. 9
`d. Pg. 1297, ll. 18-19
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`2 Samsung has received versions of trial transcripts that contained third-party redactions from
`Arendi’s counsel, in accordance with the Court’s order. D.I. 573. To the extent that those
`transcripts differ from the sealed transcripts filed as D.I. 577-585, Samsung requests that the
`confidential information highlighted in Exs. A-F control.
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`4
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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 5 of 775 PageID #: 60584
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`e. Pg. 1299, ll. 17-18
`f. Pg. 1300, ll. 12, 21
`g. Pg. 1301, ll. 11-12
`h. Pg. 1303, l. 2
`i. Pg. 1435, l. 19
`j. Pg. 1438, ll. 11, 18, 25
`k. Pg. 1439, l. 1
`l. Pg. 1451, l. 6,
`m. Pg. 1452, ll. 22-25
`n. Pg. 1453, l. 1 – pg. 1459, l. 25
`o. Pg. 1460, ll. 15 – pg. 1463, l. 4
`p. Pg. 1463, ll. 13-25
`q. Pg. 1464, l. 11 – pg. 1465, l. 1
`r. Pg. 1467, ll. 3-15, 19-23
`s. Pg. 1468, ll. 1-9, 25
`t. Pg. 1469, l. 1
`u. Corresponding portions of the index related to these redactions
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`6) May 2 Transcript (Ex. F):
`a. Pg. 1474, ll. 23-24
`b. Pg. 1484, ll. 13, 15
`c. Pg. 1531, ll. 14-25
`d. Pg. 1532, l. 1
`e. Pg. 1562, ll. 13-15, 16-18, 23
`f. Pg. 1563, ll. 5-8, 10-15
`g. Pg. 1612, ll. 19-21
`h. Pg. 1613, ll. 13-22
`i. Pg. 1614, ll. 15-16, 18-19
`j. Pg. 1618, l. 24
`k. Pg. 1619, ll. 1-2, 5-17
`l. Pg. 1620, ll. 13-14
`m. Pg. 1621, ll. 11-16
`n. Corresponding portions of the index related to these redactions
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`7) Exhibits PX-77 (also referenced at trial as DTX-283) (Samsung-Arendi Settlement and
`Patent License Agreement) (Ex. G) in their entirety
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`IV. ARGUMENT
`The confidential information that Samsung seeks to seal relates to the Samsung-Arendi
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`Agreement, which was introduced at trial as Exhibit PX-77 (also referenced at trial as DTX-283).
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`The redactions that Samsung requests all relate to discussions of the terms and/or details of the
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`5
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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 6 of 775 PageID #: 60585
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`Samsung-Arendi Agreement and are narrowly tailored to redact confidential information related
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`to that agreement.
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`As explained in the Declaration of Cheolwoo Ahn (the “Ahn Decl.”), filed concurrently
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`herewith, the Samsung-Arendi Agreement contains highly confidential information related to
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`Samsung’s settlement and licensing activities, including financial terms and other competitive
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`materials. Ahn Decl. ¶ 6. Samsung expends significant resources to maintain the security and
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`confidentiality of documents such as the Samsung-Arendi Agreement. Id. ¶ 7. The disclosure of
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`information from such documents would cause Samsung serious harm, in that litigants and/or
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`licensors would become aware of the terms on which it has licensed patents and settled litigation,
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`thereby undermining Samsung’s ability to negotiate commercially favorable agreements in the
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`future. Id. ¶ 8.
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`The Third Circuit and courts in this District have consistently recognized the need to seal
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`confidential information such as the “details of, discussion of, and/or reference surrounding
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`licensing negotiations.” Kaleo, Inc. v. Adamis Pharms. Corp., No. 19-917-RGA, 2019 WL
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`11680196, at *2 (D. Del. July 16, 2019). Indeed, where non-parties are involved, this District
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`has given greater weight to their risk of injury in the absence of a protective order, because they
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`did not choose to litigate and risk disclosure. United States v. Dentsply Int’l, Inc., 187 F.R.D.
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`152, 160 n.7 (D. Del. 1999). As explained above, Samsung faces serious, irreversible harm if the
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`details of its licensing and settlement agreement with Arendi are made public. And as a non-
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`party, Samsung had no choice in disclosing its confidential information. As a result, the
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`Samsung-Arendi Agreement and related discussions in the trial transcripts fall squarely within
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`the scope of information that should be sealed because “the interest in secrecy outweighs the
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`presumption.” In re Avandia Mktg., 924 F.3d at 672 (quoting Bank of Am., 800 F.2d at 344).
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`6
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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 7 of 775 PageID #: 60586
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`V.
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`CONCLUSION
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`For the foregoing reasons, Samsung respectfully requests that the Court seal its
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`confidential information related to Samsung’s settlement and license agreement with Arendi, as
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`identified in Section III(1)-(7) above.
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`OF COUNSEL:
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`R. Paul Zeineddin
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`(202) 420-2200
`paul.zeineddin@blankrome.com
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/Adam W. Poff___________________
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Non-Parties Samsung Electronics
`Co., Ltd. and Samsung Electronics America, Inc.
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`7
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`

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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 8 of 775 PageID #: 60587
`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 8 of 775 PagelD #: 60587
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`EXHIBIT A
`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 9 of 775 PageID #: 60588
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
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`)
`ARENDI S.A.R.L.,
` )
` )
` Plaintiff, )
` ) C.A. No. 13-919-JLH
`v. )
` )
`GOOGLE LLC,
`)
` )
` Defendant. )
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`
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`Monday, April 24, 2023
`9:00 a.m.
`Jury Trial
`
`Volume I
`
`Sealed
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`* * *
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`844 King Street
`Wilmington, Delaware
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`BEFORE: THE HONORABLE JENNIFER L. HALL
`United States Magistrate Judge
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`APPEARANCES:
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` SMITH, KATZENSTEIN & JENKINS LLP
` BY: NEAL C. BELGAM, ESQ.
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` -and-
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`P R O C E E D I N G S
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`APPEARANCES CONTINUED:
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` SUSMAN GODFREY, LLP
` BY: JOHN LAHAD, ESQ.
` BY: KEMPER DIEHL, ESQ,
` BY: MAX STRAUS, ESQ.
` BY: SETH ARD, ESQ.
` BY: KALPANA SRINIVASAN, ESQ.
` Counsel for the Plaintiff
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` POTTER ANDERSON & CORROON
` BY: DAVID ELLIS MOORE, ESQ.
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`-and-
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` PAUL HASTINGS
` BY: ROBERT W. UNIKEL, ESQ.
` BY: CHAD J. PETERMAN, ESQ.
` BY: MATTHIAS A. KAMBER, ESQ.
` BY: ANDREA ROBERTS, ESQ.
` Counsel for the Defendant
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`Google.
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`Google.
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`MR. PETERMAN: Chad Peterman on behalf of
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`(Proceedings commenced in the courtroom beginning at
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`9:00 a.m.)
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`THE COURT: Please be seated.
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`Okay. The first day of trial, we're getting
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`off to a rocky start here. Let's have appearances for the
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`record.
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`MS. SRINIVASAN: Kalpana Srinivasan of Susman
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`Godfrey on behalf of Arendi.
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`MR. ARD: Seth Ard, Susman Godfrey, on behalf
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`of Arendi. Good morning, Your Honor.
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`MR. LAHAD: John Lahad, Susman Godfrey, on
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`behalf of Arendi. Good morning, Your Honor.
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`MR. BELGAM: Neal Belgam for Arendi, Your
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`Honor.
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`MR. DIEHL: Kemper Diehl from Susman Godfrey,
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`on behalf of Arendi, Your Honor.
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`THE COURT: Okay.
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`MR. UNIKEL: Robert Unikel on behalf of Google.
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`MS. ROBERTS: Andrea Roberts on behalf of
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`Google.
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`MR. KAMBER: Matthias Kamber on behalf of
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`THE COURT: Okay.
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`MR. BELGAM: Your Honor, we have Max Straus,
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`also for Arendi.
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`THE COURT: All right. Very good. So for the
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`record, I've got a big stack of papers, much of which has
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`come in over the weekend, in the last 48 hours. So let's
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`start working through this.
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`It's 9:02. We'll get started. I had intended
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`to take the bench at 8:30, but we didn't have everyone
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`here. I won't dock the time today, but I'm frustrated by
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`the situation, that we didn't have everybody here so we
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`could get started.
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`So we have the jurors waiting in the jury room.
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`We're going to have them sit here while we go through some
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`of this stuff. So let's get started.
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`So first up on my list -- all right -- has to
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`do with IPR estoppel. So I have letters from the parties
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`that 456, 457, 463, and 464 on this issue. So the record
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`is clear, here's my understanding of how we got to where
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`we are today. This case has been pending since 2013, well
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`before I took the bench.
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`Back in 2013, Apple, Google, and Motorola
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`

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`petitioned for IPR of the '843 patent on a number of
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`grounds. The PTAB only instituted review on one ground,
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`obviousness over a reference called Pandit. After the IPR
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`concluded and litigation resumed, Arendi moved for partial
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`summary judgment that Google was prevented from asserting
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`certain invalidity grounds as a result of IPR estoppel.
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`Judge Stark assessed Arendi's motion in his
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`memorandum opinion at docket Number 391. As Judge Stark's
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`opinion explained, Arendi's motion argued that Google was
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`estopped from raising a number of different pieces of
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`prior art, including a piece of prior art that the parties
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`refer to as the CyberDesk system.
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`estopped references, Google was not estopped from raising
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`the public use of the CyberDesk system as part of an
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`obviousness combination with other non-estopped
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`references.
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`However, Judge Stark's memorandum opinion did
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`not resolve the issue of whether Google was estopped from
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`raising the public use of the CyberDesk system as a
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`reference alone or in combination with other estopped
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`references. He pointed out that the public use of the
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`system is prior art that cannot be raised in an IPR.
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`However, he also stated the following: "In
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`invalidity grounds, based on a physical product which
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`could not have been raised during an IPR, see 35 U.S. Code
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`There appears to have been no dispute that
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`Google could have presented in the IPR certain patents and
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`printed publications that describe aspects of the
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`CyberDesk system. However, Google contends that the
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`CyberDesk system itself qualifies as prior art because it
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`was publicly used prior to the relevant date.
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`In his opinion, Judge Stark held that Google
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`was not estopped from asserting a ground of
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`unpatentability that included combinations of references
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`that consisted of estopped art with non-estopped art.
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`In other words, he included that even if Google
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`were estopped from raising the public use of the CyberDesk
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`system as a reference alone or in combination with other
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`311(b), may be subject to IPR estoppel if the publication
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`described in the physical product could have been raised
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`as an invalidity ground during the IPR."
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`And he pointed to one of his previous opinions
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`for the proposition that an invalidity ground involving a
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`physical product is barred in litigation if a publication
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`reasonably could have been raised in the IPR that is
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`materially identical to the physical product. In that
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`circumstance, the physical product is entirely cumulative
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`on the estopped prior art publication.
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`Regarding Google's assertion that the public
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`use of the CyberDesk system was non-estopped prior art,
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`Judge Stark observed that Google's invalidity expert,
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`Dr. Fox, expressly relied on the deposition transcript of
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`the developer of the CyberDesk system, Dr. Dey; and that
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`Google contended that Dr. Dey explained certain CyberDesk
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`features that are not disclosed in publications that
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`describe the CyberDesk system.
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`Judge Stark concluded that there was at least a
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`genuine issue of material fact as to whether the CyberDesk
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`system is cumulative of the prior art publications that
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`could have been raised during the IPR of the '843 patent.
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`And he said that the dispute creates a fact issue that was
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`not amenable to resolution on a motion for summary
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`Court to preclude Google from taking any position contrary
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`to the Court's prior orders or its stipulations. But, of
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`course, that motion could not possibly have covered
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`Google's introduction of evidence relating to the
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`CyberDesk system because, as I just explained, Judge Stark
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`denied Arendi's motion to estop Google from asserting the
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`CyberDesk system.
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`At the pretrial conference, Arendi made what I
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`can only describe as a stealth motion regarding IPR
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`estoppel.
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`In the context of discussing its motion in
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`limine to preclude Google from taking any position to
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`contrary to the Court's prior orders or its own
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`judgment.
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`That was back in March of 2022. Arendi did not
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`request reargument, nor did Arendi at that time request a
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`bench trial on the issue of IPR estoppel, or a
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`determination from the Court based on the record.
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`Fast forward to 2023, prior to the pretrial
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`conference, the parties filed a proposed pretrial order.
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`Arendi did not ask for a bench trial prior to the jury
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`trial and the proposed pretrial order, nor did it
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`otherwise flag for the Court prior to the trial conference
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`that the issue of IPR estoppel needed to be decided before
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`the jury trial.
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`One of Arendi's motions in limine asked the
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`stipulations, Arendi said that Google should not be able
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`to introduce combinations of art that Judge Stark had
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`previously held were estopped.
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`Then it said -- and this is the stealth part --
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`also the Court will need to rule on other prior art that
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`should be estopped based on inter partes review estoppel
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`before trial, and any -- those should also be excluded.
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`At that point in time, I had no idea what
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`Arendi was talking about because this hadn't previously
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`been flagged as an issue that needed resolution before
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`trial. We then engaged in a discussion about when Google
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`would disclose the final obviousness combinations that it
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`

`

`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 11 of 775 PageID #: 60590
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`intended to raise at trial.
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`And I said that Arendi could raise whatever
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`remaining dispute it had about prior art references in a
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`letter after it received those combinations. But, again,
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`I had no idea at that time, and I certainly wasn't made
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`aware that Arendi's concern actually had to do with prior
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`art references that Judge Stark had already addressed in
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`his prior opinion.
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`Then on April 11, five days after the pretrial
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`conference, and over a year after Judge Stark addressed
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`the same issue, I got a letter from Arendi that said --
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`DI 256, again asking the Court to preclude Google from
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`The motion in limine that Arendi did file for
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`the pretrial order asked for a ruling that defendant
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`couldn't violate Court prior orders. However, there was
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`never any ruling out of this Court saying that Google was
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`estopped from asserting the CyberDesk system; thus, the
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`arguments it now brings are wholly unrelated to the motion
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`in limine that Arendi did file.
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`Second, Arendi's request to exclude all
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`combinations of prior art that include CyberDesk is denied
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`to the extent that it is inconsistent with Judge Stark's
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`prior ruling that IPR estoppel does not prevent Google
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`from presenting obviousness combinations that consist of
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`estopped references in combination with non-estopped
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`presenting at trial any combinations of prior art that
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`used CyberDesk.
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`Arendi's request is denied for several
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`independent reasons.
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`First, the timing. This request is just too
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`late. If Arendi thought there were open issues that
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`needed resolution prior to trial, Arendi had multiple
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`chances to bring them to the Court. A motion for
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`reargument before Judge Stark, a request in the pretrial
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`order for a bench trial prior to the jury trial, or an
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`express request in the pretrial order that the Court
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`decide the issue before trial on the written record, or
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`even a motion in limine.
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`references.
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`Third, Arendi says that an evidentiary hearing
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`is not required for the Court to rule on the issue of
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`estoppel. That's that document 463. And on the record
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`presently before the Court, I find that Arendi has failed
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`to meet its burden to prove estoppel.
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`The law says that: "A petitioner in an
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`inter partes review may request to cancel as unpatentable
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`one or more claims of a patent only on a ground that could
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`be raised under Section 102 or 103 only on the basis of
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`prior art consisting of patents and printed publications."
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`Google says that the CyberDesk system is prior
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`art because it was in public use prior to the relevant
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`date. Public use is a separate category of art from
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`patents in publications. The record before the Court
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`suggests that Google intends to show that the CyberDesk
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`system anticipates and was in public use prior to the
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`relevant date.
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`The evidence Google seeks to present to prove
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`anticipation comes from testimony of a developer who
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`demonstrated the system in public and various printed
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`publications that describe aspects of the system,
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`including nine printed publications, one conference
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`poster, the developer's thesis notes, and some other
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`publications are cumulative to the evidence that Google
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`intends to present at trial.
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`Judge Stark seemed receptive to that argument,
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`but he didn't decide it. I'm less receptive.
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`Instead, I agree with the approach and analysis
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`laid out by Judge Noreika in her opinion in Chemours vs.
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`Daikin. That's at 2022 Westlaw 2643517.
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`And I conclude that as a matter of statutory
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`interpretation, estoppel does not apply to Google's
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`invalidity arguments that rely on a prior public use of
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`the CyberDesk system whether or not its testimonial and
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`written evidence of that system is cumulative to the art
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`that Google could have raised in the IPR.
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`materials like source code and slides.
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`I'm not persuaded that Google could have raised
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`that anticipation argument in the IPR, at least for the
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`reasons that involves combining evidence from multiple
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`sources to show that a single prior art system had all the
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`limitations, and it relies on the public use of the
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`invention which could not have been raised in the IPR.
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`Likewise, I'm not persuaded that Google could
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`have raised public use of the CyberDesk system as part of
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`obviousness combination in the IPR.
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`Arendi points out that Google could have raised
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`in the IPR patents and printed publications that describe
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`CyberDesk. And it contends that those patents and printed
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`Arendi says that the CyberDesk system is
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`nonexistent; however, Google intends to present testimony
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`that it did exist and that it was publicly demonstrated
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`even though there was no working system fully presented at
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`trial.
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`Arendi also says that pursuant to the
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`corroboration rule, Dr. Dey, a developer of the CyberDesk
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`system, can only testify about aspects of the system that
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`are also described in the printed publications.
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`Arendi argues that because Dey can't testify
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`about additional aspects, the publications are, by
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`definition, cumulative to what he can testify about.
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`

`

`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 12 of 775 PageID #: 60591
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`I reject that argument, at least for the reason
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`that I disagree that the corroboration rule prevents
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`Dr. Dey from testifying about aspects of a prior art
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`system that are not described in patents and printed
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`publications.
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`To be clear, this is not a case where the only
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`evidence of a prior art public use is a reference that a
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`patentee could have raised in an IPR. I could imagine a
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`hypothetical case where there is an advertisement of a
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`prior art device that an IPR challenger could have
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`presented in an IPR as a printed publication.
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`If the advertisement were the only evidence of
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`But, of course, we don't know what will happen
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`at the trial. Accordingly, my ruling is that Google is
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`not estopped from raising the public use of the CyberDesk
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`system as prior art.
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`My ruling is without prejudice for Arendi to
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`reraise it should it appear that Google's only evidence of
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`a prior public use is a publication that could have been
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`raised in the IPR.
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`And that concludes my ruling on that issue.
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`Hopefully that takes care of letters 456, 457, 463, and
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`464.
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`I realized, after I started, that it's possible
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`that Google has furthered limited its combinations to
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`a prior public use of an invention, I might be receptive
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`to the argument that defendant cannot escape IPR estoppel
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`by saying that the same reference is also evidence of a
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`prior public use. But the record reflects that is not the
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`case here.
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`Google says that it intends to prove prior use
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`of the CyberDesk system through a combination of testimony
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`and multiple public and nonpublic documents. Thus, even
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`if there were a narrow exception that precluded evidence
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`of prior public use when the only such evidence is
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`materially identical to a single printed publication it
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`could have been raised in the IPR, that exception would
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`not apply here.
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`render this issue moot.
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`Is Google still intending to rely on the
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`CyberDesk system?
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`MR. UNIKEL: We are, Your Honor.
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`THE COURT: All right. Okay. Good.
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`All right. Let's move on to the next issue I
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`have on my list. That is issue is the Samsung license
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`defense. I have letters that 469 and 472.
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`By the way, the first -- it took me about
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`12 minutes to read that first ruling. That time will be
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`charged to Arendi.
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`Okay. Next, we have Google's letter filed at
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`469, and Arendi's response at 472.
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`Google has, again, reraised the issue of
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`Samsung license defense. Google recently raised this
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`issue in its motion to strike. That was that document
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`Number 419. There, Google asked the Court to strike a
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`portion of Arendi's expert report providing a damages
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`figure that factored in apps on Samsung devices.
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`At the pretrial conference, I declined to do so
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`stating that essentially Google was seeking a pretrial
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`ruling that infringement is licensed when the accused apps
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`are on Samsung devices. And that's an issue that, in my
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`view, should have been appropriately raised for a motion
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`that its apps on Samsung devices are licensed is denied.
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`Here, again, Google has essentially requested
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`summary judgment on a defense of license. The request is
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`denied for the same reasons I denied it at the pretrial
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`conference.
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`To the extent Google believes that it has a
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`valid license defense and that the license at issue needs
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`to be construed by the Court prior to that defense going
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`to the jury, that is something that could be taken care of
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`with jury instructions.
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`Google's letter also asks the Court to clarify
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`what evidence and arguments regarding the agreement the
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`parties may present to the jury by deciding as a matter of
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`for partial summary judgment. And, of course, the
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`deadline for filing those motions has long passed.
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`In its present letter, Google once again asked
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`the Court to preclude Mr. Weinstein's damages testimony to
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`the extent it includes apps on Samsung devices, because
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`according to Google, apps on those devices are licensed.
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`Google says it will be prejudiced in multiple
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`ways if Arendi is allowed to present evidence of damages
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`that include damages for apps on Samsung devices, but
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`Google's claims of prejudice are all grounded in its
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`assertion that the testimony is improper because those
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`uses are licensed.
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`Google's request for a pretrial determination
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`law whether or not the agreement is ambiguous.
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`To the extent I understand Google's request, it
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`apparently does not want to present certain evidence at
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`trial relevant to its license defense. And it might
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`either win or lose that defense as a matter of law post
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`trial, but that's the point of the summary judgment
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`motion.
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`Google thought the license defense was
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`dispositive of an issue and had the opportunity to ask for
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`summary judgment on that issue. It's too late to raise
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`that now.
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`Google says that it wants a ruling from the
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`

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`Case 1:13-cv-00919-JLH Document 601 Filed 08/21/23 Page 13 of 7