Case 1:13-cv-00919-JLH Document 610 Filed 01/12/24 Page 1 of 3 PageID #: 62477
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`January 12, 2024
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`Via CM/ECF
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`The Honorable Jennifer L. Hall
`J. Caleb Boggs Federal Building
`844 N. King Street
`Unit 17, Room 3124
`Wilmington, DE 19801-3555
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`Re: Arendi S.A.R.L. v. Google LLC (13-919-JLH)
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`Dear Judge Hall:
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`Pursuant to the Court’s Order of January 5, 2024, Arendi submits this letter after meeting
`and conferring with Google LLC on January 10, 2024. D.I. 609.
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`The proper course is for the Court to amend its existing judgment (D.I. 545) to remove
`references to the issue of patent validity and clarify that the judgment is based on the jury’s non-
`infringement verdict at trial. If the Court does so, the law is clear that the Court can then decline
`to address Arendi’s post-trial motion concerning validity issues. D.I. 559.
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`There is no need for the Court to incorporate a validity determination into the judgment, or
`further consider the validity issue at all, because Google only raised it as an affirmative defense
`and the defense became moot when the jury found non-infringement. Many courts confronted with
`this situation have declined to rule on post-trial motions regarding validity because of the mootness
`of the issue, including Judge Noreika in Agrofresh Inc. v. Essentiv LLC, No. CV 16-662 (MN),
`2020 WL 7024867, at *17 (D. Del. Nov. 30, 2020) (“In light of the finding of no infringement, the
`affirmative defenses of invalidity are now moot and the Court declines to reach the issue of
`validity.”). See also IPPV Enterprises, LLC v. EchoStar Commc'ns Corp., No. CIV.A.99-577-
`KAJ, 2003 WL 723260, at *10 (D. Del. Feb. 27, 2003) (declining “to reach the issue of invalidity”
`upon entering judgment of non-infringement).1
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`1 See also, e.g., Optolum, Inc. v. Cree, Inc., No. 1:17CV687, 2022 WL 1632916, at *1-2 (M.D.N.C.
`Jan. 31, 2022) (holding that “this court need not address the parties’ motions on validity and
`damages” because “those issues are moot” given jury’s non-infringement verdict where “[n]either
`party sought a declaratory judgment as to any of the issues addressed in the pending motions”);
`ClearPlay, Inc. v. Dish Network L.L.C., No. 2:14-CV-00191-DN-CMR, 2023 WL 3805596, at *29
`(D. Utah June 2, 2023) (denying motion for judgment as a matter of law on validity as moot
`following non-infringement verdict).
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`Case 1:13-cv-00919-JLH Document 610 Filed 01/12/24 Page 2 of 3 PageID #: 62478
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`The Honorable Jennifer L. Hall
`January 12, 2024
`Page 2
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`Judge Noreika’s decision in Agrofresh cited the relevant Federal Circuit decisions, which
`have uniformly held that if a defendant raises invalidity as an affirmative defense rather than a
`counterclaim, then a jury’s non-infringement verdict makes any invalidity determination
`unnecessary to the judgment. See, e.g., Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d
`1354, 1366 (Fed. Cir. 2004) (“Because Birchwood raised invalidity only as an affirmative defense
`and not as a counterclaim, it became unnecessary for the court to enter a judgment as to the
`invalidity issue when the court entered judgment of noninfringement”); see also PODS, Inc. v.
`Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007) (“We have no need to consider Porta Stor’s
`arguments related to invalidity, since our finding of non-infringement moots any affirmative
`defense of invalidity, and Porta Stor has not argued its invalidity counterclaim on appeal.”); Boss
`Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1376 n.1 (Fed. Cir. 2005) (“As noted above,
`Bombardier only filed affirmative defenses and not counterclaims. Since there are no pending
`counterclaims with respect to invalidity, the district court entered a proper final judgment.”).
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`Because the issue of validity in this case was mooted by the jury’s non-infringement
`verdict, and is unnecessary to the judgment, the proper course is to conserve the Court’s judicial
`resources and amend the judgment to remove references to the validity issue and make clear that
`judgment is predicated on the jury’s non-infringement finding.
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`Following the guidance of the many courts that have exercised their discretion not to
`expend judicial resources addressing a moot validity issue will not create complexity on appeal.
`Should the Court limit judgment to the issue of non-infringement, Arendi’s affirmative appeal will
`be limited to challenging the non-infringement finding and Court orders that predicated it. These
`orders include the Court’s claim construction order of August 19, 2019 (D.I. 143, 144); the Court’s
`order granting Defendants’ Rule 12(c) motions for judgment on the pleadings under Section 101
`concerning U.S. Patent No. 7,496,854, U.S. Patent No. 7,921,356, and U.S. Patent No. 8,306,993
`(D.I. 201); and the Court’s grant of partial summary judgment against Arendi on March 31, 2022,
`including the Court’s construction of the “document” claim term therein (D.I. 393, 394).
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`To the extent Google asserts that the judgment should incorporate a finding on validity so
`that the Federal Circuit may consider the issue as an alternative basis for affirmance, Google is
`asking both this Court and the Federal Circuit to do unnecessary work to which Google is not
`entitled. Had Google wanted to preserve an appellate point, it should have brought a counterclaim
`for invalidity. It did not. Google made a conscious choice to raise the invalidity issue only as an
`affirmative defense. Because of that choice, the invalidity issue was mooted by the jury’s non-
`infringement verdict and is unnecessary to the judgment.
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`Indeed, any resources this Court dedicates to the validity issue at this point are likely to be
`wasted. If the Federal Circuit affirms the non-infringement judgment, it will not reach the validity
`issue and there will have been no reason for this Court to address it. See Hill-Rom Co. v. Kinetic
`Concepts, Inc., 209 F.3d 1337, 1344 (Fed. Cir. 2000) (upholding non-infringement judgment and
`declining to reach validity issue because “the district court’s resolution of the issue of invalidity
`was not necessary to the judgment”). Alternatively, if the Federal Circuit reverses the non-
`infringement judgment, it is unlikely that it will then proceed to consider validity as an alternative
`basis for affirmance. Because the validity issue depends on the application of specific claim
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`Case 1:13-cv-00919-JLH Document 610 Filed 01/12/24 Page 3 of 3 PageID #: 62479
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`The Honorable Jennifer L. Hall
`January 12, 2024
`Page 3
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`constructions, any decision by the Federal Circuit that alters any claim construction in reversing
`the non-infringement judgment would necessitate further proceedings in the District Court
`regarding validity. Thus, regardless of how the Federal Circuit rules on Arendi’s appeal of the non-
`infringement judgment, it is unlikely that the Federal Circuit would even consider this Court’s
`entirely discretionary determination on validity.
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`Similarly, to the extent Google asserts that the Court should amend its judgment to
`generically enter “judgment in favor of the Defendant” and that Arendi should then withdraw its
`post-trial motion, this is unwarranted. Arendi’s withdrawal of its motion under these circumstances
`could wrongly suggest that Arendi accepted the jury’s invalidity finding and create confusion as
`to whether the Court’s amended judgment was exclusively based on the jury’s non-infringement
`finding.
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`Google cannot rewrite the procedural history of this case to alter the mootness of the
`invalidity issue it raised only as a defense, and there is no basis for this Court to expend its judicial
`resources addressing a moot issue. The proper course, as illustrated by the cases cited above, is to
`enter a judgment of non-infringement that does not reference the issue of validity and decline to
`substantively address or deny as moot Arendi’s post-trial motion for judgment as a matter of law.
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`Respectfully,
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`Neal C. Belgam
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`Neal C. Belgam (No. 2721)
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`cc:
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`Clerk of Court (via CM/ECF)
`All Counsel of Record (via CM/ECF)
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