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`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 1 of 104 PagelD #: 61930
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`)
`ARENDI S.A.R.L.,
` )
` )
` Plaintiff, )
` ) C.A. No. 13-919-JLH
`v. )
` )
`GOOGLE LLC,
`)
` )
` Defendant. )
`
`
`
`
`
`
`
`
`Monday, April 24, 2023
`9:00 a.m.
`Jury Trial
`
`Volume I
`
`Sealed
`
`* * *
`
`844 King Street
`Wilmington, Delaware
`
`BEFORE: THE HONORABLE JENNIFER L. HALL
`United States Magistrate Judge
`
`
`
`
`APPEARANCES:
`
`
` SMITH, KATZENSTEIN & JENKINS LLP
` BY: NEAL C. BELGAM, ESQ.
`
` -and-
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` 3
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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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`_ _ _ _ _ _ _ _ _ _
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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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`
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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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`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 3 of 104 PageID #: 61932
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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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`

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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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`

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`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 5 of 104 PageID #: 61934
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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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`

`

`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 6 of 104 PageID #: 61935
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`Court as to whether or not the agreement is unambiguous or
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`ambiguous so that it can determine what jury instructions
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`are appropriate. That, in my view, has it backwards.
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`If there is a triable defense that's properly
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`part of the case that's not been disposed of on summary
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`judgment, it's going to get tried.
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`If Google thinks that the jury needs to be
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`instructed on the meaning of a written contract as part of
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`that defense, it is incumbent upon Google to propose a
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`jury instruction, and it has not proposed any jury
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`instructions on this issue.
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`I say again, I don't have a proposed jury
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`The third issue has to do with the scope of
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`evidence that could be presented on -- that has to do with
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`the IPR proceedings. So this, I think it's fair to say
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`that the parties' positions on this issue have been
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`evolving over time, including since last Thursday.
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`So I've got letters that were filed late last
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`night, including, at least, one after midnight. So let's
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`hear from Google on where things stand now.
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`MR. UNIKEL: Thank you, Your Honor.
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`After the hearing on Friday when this issue
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`came up, we had had discussions over the weekend in an
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`attempt to try and at least narrow the dispute, if not get
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`rid of the dispute. Google has withdrawn all of its
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`instruction from Google construing the license. If Google
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`had proposed an instruction on the meaning of the license,
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`and Arendi had proposed a competing instruction, the Court
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`might be in a position to make a pretrial ruling in the
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`context of jury instructions that the agreement was
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`unambiguous in favor of Google, that it was unambiguous in
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`favor of Arendi, or that it was ambiguous. But I don't
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`have proposed instructions on this issue.
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`To the extent the license defense is not
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`raised, the parties can present their proposals at the
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`charging conference.
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`So that takes care of the second issue that I
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`have.
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`references to Pandit, which is the one ground that was
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`actually included in the IPR.
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`We have no obviousness combinations. We are
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`not going to raise Pandit. As a result, our proposal
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`was -- and I think it's the appropriate proposal -- that
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`IPR proceedings should just not come in at all, because at
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`this point, since Pandit is not in the case, those
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`reference to any of the proceedings in the Federal Circuit
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`or the PTAB are going to be confusing to the jury.
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`And, frankly, I think that what we've seen from
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`Arendi is that they would like to use those proceedings to
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`suggest to the jury that all validity issues have been
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`resolved, that the Federal Circuit has spoken definitively
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`on the issue, even though none of the grounds that we are
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`presenting here were presented in the IPR.
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`So we would like just there to be no reference
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`by either side to the IPR proceedings. But if reference
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`is made, then it's going to become a much bigger deal to
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`try and explain to the jury what happened, what does it
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`mean for this case, why are the grounds here different
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`than what could be considered in front on the PTAB, and
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`the different burdens of proof, different claim
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`constructions. And it becomes a very big moras.
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`So we tried to avoid that by eliminating Pandit
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`the IPR proceedings, and it wasn't because -- were you
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`going to say that you thought it was invalidity based on
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`Pandit?
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`MR. UNIKEL: No, Your Honor. The only reason
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`that this was coming up at all is because there's a
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`willfulness charge post complaint. The case was stayed
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`for five years based on IPR proceedings. And we felt that
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`it was important, if there was going to be an aggressive
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`willfulness case, to explain there were proceedings going
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`on in the Patent Office, and that's why we reasonably
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`acted as we did.
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`We do not believe that even that discussion
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`that we were proposing had any relevance to the jury's
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`from the case altogether.
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`THE COURT: So can you tell me what
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`combinations? I have the list of eight. I don't think I
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`know what's getting raised. Just out of curiosity --
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`MR. UNIKEL: Correct. So we're proceeding with
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`anticipation based on CyberDesk, CyberDesk plus Microsoft
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`Word 97, CyberDesk plus Apple data detectors, and Apple
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`data detectors plus Microsoft Word 97.
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`That's all, Your Honor.
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`THE COURT: Okay. The fact that -- I guess I'm
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`struggling. I think what I'm going to hear from the other
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`side is -- and I'll let them talk in a minute -- is that
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`up until this weekend, you wanted to introduce evidence of
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`determination about validity. And we were not planning to
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`use it to suggest validity or invalidity of the patent.
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`We simply -- frankly, we still need to explain
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`why we didn't -- why there was no action for five years as
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`this case was going on, which is why we've asked, in light
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`of the new developments in the case and withdrawal of
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`certain claims, that there not be a willfulness charge as
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`part of the case.
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`But even if there is, we'll just have to
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`explain without reference to the IPR proceedings, because
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`it's become clear that introducing a discussion of the IPR
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`proceedings will become vastly more confusing than it
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`

`

`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 7 of 104 PageID #: 61936
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`helps on any point.
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`And so we'll basically just have to explain
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`that we were defending the case for 2013 through 2018 when
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`it resumed, and we would not reference what was happening
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`in the Patent Office during that time.
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`That was the only reason we were going to
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`reference the proceedings at all.
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`THE COURT: All right. Thanks very much.
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`All right. Let's hear from Arendi.
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`MR. ARD: Thank you, Your Honor. Seth Ard from
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`Susman Godfrey.
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`First, we think this issue has been raised.
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`patent, and they failed to do so. And that shows they
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`didn't have a reasonable belief in the invalidity of the
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`patent. In cases, you know, that we cite say that.
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`And the third point, Your Honor, is, I think,
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`as Your Honor just explained, they can't show invalidity
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`based solely on the features that were exposed in the
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`written publications of CyberDesk, for example, their
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`anticipation defense. And the jury needs to understand
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`that. Otherwise, the jury could make a finding of
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`invalidity that is contrary to the law of estoppel.
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`THE COURT: There's no way that they could have
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`raised CyberDesk public use as an anticipating reference
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`in the IPR; isn't that right?
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`They could have raised this long ago in motions in limine.
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`They've been telling us ever since -- you know, up to
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`three days ago, they're going to raise these invalid- --
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`this IPR, and that was their intent to do so. And we
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`think it's too late now. We have our opening prepared.
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`We have our witnesses prepared. It's too late to do it
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`now.
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`Second, it does go to willfulness. He just --
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`Mr. Unikel just said that they reasonably acted the way
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`they did with respect to their belief in invalidity.
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`Their own cases that we've cited back to the Court say
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`that for our willfulness affirmative case, we can show
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`that they took their best shot in trying to invalidate the
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`MR. ARD: Well, Your Honor, we agree with what
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`you -- I mean, we accept what you just said about the fact
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`that Dr. Dey is testifying to CyberDesk features that were
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`not disclosed in the publications, but that doesn't mean
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`that those -- what he disclosed -- what he testified that
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`was not disclosed is material to this case in any way. He
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`may have testified to something that wasn't disclosed.
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`But I think, as Your Honor said at the end of
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`your ruling, you know, if what they're really doing and
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`what really ends up happening, is that the publications
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`themselves expose features that invalidate the patent,
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`then that's something that can't be used to invalidate the
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`patent if it was fully disclosed in publications. And
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`that's something that the jury just has to do know,
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`otherwise it can be misapplying the jury. And juries are
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`instructed all the time on what the law is.
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`But I think, you know -- and the first two
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`points, I think, here today anyway, that, you know,
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`they've been bringing this, I think invalidity -- or this
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`IPR in this case from the beginning, they've done so all
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`the way up to yesterday. And we think it's too late to
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`raise now. And it's relevant to our affirmative case on
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`willfulness, and the cases that we cited all say that.
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`THE COURT: So slow it down and explain it to
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`if you actually look at their proposed stipulation that
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`they submitted last week, and I think they submitted a
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`version of it today, there's two basic facts that are
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`relevant. One is that they sought to cancel the patent in
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`2013, and that they failed.
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`The Federal Circuit -- they took their best
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`shot, and the Federal Circuit held that they were not able
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`to cancel the patent. And that goes to whether they
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`reasonably believed that they -- the patent was invalid.
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`And that's something the courts have found. And we
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`cited -- I can't remember the case we cited again this
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`morning and we cited last week -- that Google's own cases
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`that recognize that their affirmative case of willfulness,
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`me in as plain English as you can. Why don't you tell me
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`a piece of evidence that you would like to have the jury
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`know about how the IPR and the chain of inferences that
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`leads to that conclusion, that somehow this has something
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`to do with their willfulness.
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`So you want to introduce -- they don't want to
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`introduce it anymore, so now you're going to introduce it.
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`What are you going to ask --
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`MR. ARD: Correct.
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`THE COURT: What are you going to tell the jury
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`about what happened in the IPR, and what does that have to
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`do with willfulness?
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`MR. ARD: Just the basic facts that I think --
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`that's relevant to reasonable belief in invalidity.
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`THE COURT: All right. Thank you.
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`MR. UNIKEL: Your Honor, may I be heard on two
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`points?
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`THE COURT: Yes.
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`MR. UNIKEL: First, on the issue of was it too
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`late, I just want to point out that after we had submitted
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`all of the pretrial materials, they added the Federal
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`Circuit decision and the IPR to their exhibit list late.
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`We pointed that out to them. We objected to it. We could
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`not have filed the motion in limine on it because there
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`was no indication before we filed motions in limine that
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`

`

`Case 1:13-cv-00919-JLH Document 605-1 Filed 09/08/23 Page 8 of 104 PageID #: 61937
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`they had any desire to introduce it to the case.
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`Second, as to the notion that we took our best
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`shot, we are restricted in IPRs as to what we can present
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`and what we cannot present. We could not present
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`CyberDesk. We could not present Apple data detectors.
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`And those are the grounds that we are presenting here.
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`So to give the jury the impression that we
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`presented the things that we thought were best in the IPR
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`and are now sort of bringing up the dregs at trial, it
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`gives not only the wrong, but a false impression because
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`we couldn't have raised these things in the IPR
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`proceedings. So there's going to be tremendous confusion
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`our detriment because now we have to just explain that
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`there's this long period of time where nothing was
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`happening in the case and we were defending ourselves, but
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`we will not reference the