Case 1:13-cv-00919-JLH Document 615 Filed 02/02/24 Page 1 of 5 PageID #: 62510
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 13-919-JLH
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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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`MEMORANDUM ORDER
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`Pending before the Court is Plaintiff Arendi S.A.R.L.’s (“Arendi’s”) Renewed Motions for
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`Judgment as a Matter of Law and Motion for a New Trial. (D.I. 559.) For the reasons set forth
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`below, the Motions are DENIED.
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`Plaintiff Arendi filed this patent infringement action against Defendant Google LLC
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`(“Google”) on May 22, 2013. (D.I. 1.) The Honorable Leonard P. Stark presided over the
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`proceedings from 2013 until 2022, when he was appointed to the Court of Appeals for the Federal
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`Circuit. Shortly thereafter, the parties consented to have the case heard by a U.S. Magistrate Judge,
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`and, on April 26, 2022, the case was reassigned to me (then a Magistrate Judge).1 When I got the
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`case, it was nearly ready for trial: Judge Stark had already construed the claims (D.I. 143, 144),
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`ruled on Defendant’s affirmative defense of patent invalidity under 35 U.S.C. § 101 (D.I. 200,
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`201), and decided the parties’ numerous summary judgment and Daubert motions (D.I. 389, 390,
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`391, 392, 393, 394).
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`By the time of trial, there was only one claim left in the case to be tried: Arendi’s claim
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`1 I was appointed as a District Judge in January 2024.
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`Case 1:13-cv-00919-JLH Document 615 Filed 02/02/24 Page 2 of 5 PageID #: 62511
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`that Google had infringed U.S. Patent No. 7,917,843 (the “’843 patent”) (which, by that point, had
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`expired). (D.I. 97 (Amended Complaint, Count I).) Google contested the issue of infringement,
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`and it also asserted affirmative defenses of patent invalidity and license. (D.I. 99 (Answer to
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`Amended Complaint).) Notably, Google did not request a declaratory judgment of invalidity.
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`The case was tried to a jury beginning on April 24, 2023. Both sides made motions for
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`judgment as a matter of law before the case was submitted to the jury. The Court did not grant
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`any of those motions and instead submitted the case to the jury. Both sides agreed that the jury
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`should be asked to make individual written findings on the issues of infringement, anticipation,
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`and obviousness (among other issues). (D.I. 499, 500, 505.) In accordance with the parties’
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`agreement, the Court instructed the jury to make individual written findings on the issues of
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`infringement, anticipation, and obviousness (among other issues). (D.I. 528 (Final Jury
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`Instructions), 529 (Final Verdict Form).) The jury made the following findings: (1) that Arendi
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`had not proven by a preponderance of the evidence that Google infringed claims 23 or 30 of the
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`ʼ843 patent; (2) that Google had proven by clear and convincing evidence that those claims were
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`invalid as anticipated; and (3) that Google had proven by clear and convincing evidence that those
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`claims were obvious in view of prior art.
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`On May 10, 2023, the Court entered a document styled “Judgment Following Verdict,”
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`which stated, in pertinent part:
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`The jury having deliberated on Plaintiff Arendi S.A.R.L.’s
`claims of willful patent infringement of claims 23 and 30 of U.S.
`Patent No. 7,917,843 (the “’843 patent”), and the jury having
`reached a verdict on May 2, 2023 finding that Defendant Google
`LLC’s accused products do not infringe the asserted claims,
`judgment of non-infringement on all asserted claims is entered in
`favor of Defendant and against Plaintiff. The jury having further
`deliberated on Defendant Google LLC’s affirmative defense of
`anticipation of claims 23 and 30 of the ’843 patent, and the jury
`having reached a verdict finding that those claims are anticipated,
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`2
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`Case 1:13-cv-00919-JLH Document 615 Filed 02/02/24 Page 3 of 5 PageID #: 62512
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`and the jury also having deliberated on Defendant’s affirmative
`defense of obviousness of claims 23 and 30 of the ’843 patent, and
`the jury having reached a verdict finding that those claims are
`obvious, judgment is entered in favor of Defendant and against
`Plaintiff on Defendant’s invalidity defenses.
`This judgment shall have the effect of denying as moot all
`other pending motions made by the parties pursuant to Rule 50(a) of
`the Federal Rules of Civil Procedure. The judgment is subject to
`modification following the Court’s consideration of the parties’
`post-trial motions.
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`(D.I. 545.)
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`On June 2, 2023, Arendi filed the pending “Renewed Motions for Judgment as a Matter of
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`Law and Motion for a New Trial.” (D.I. 559.) In its papers, Arendi asks for the following relief:
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`Pursuant to Federal Rule of Civil Procedure 50(b) Plaintiff
`Arendi S.A.R.L. renews its motions for judgment as a matter of law
`of i) no anticipation as to Claims 23 and 30 of U.S. Patent 7,917,843;
`ii) non-obviousness as to Claims 23 and 30 of U.S. Patent 7,917,843;
`and iii) estoppel of the following grounds, under 35 U.S.C. § 315(e):
`CyberDesk (as to anticipation), CyberDesk and Word (as an
`obviousness combination).
`Arendi S.A.R.L. moves, in the alternative, for a new trial
`pursuant to Federal Rule of Civil Procedure 59(a)(1).
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`(D.I. 559.) In other words, Arendi currently challenges the legal and evidentiary sufficiency of
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`Google’s affirmative defenses, but Arendi did not file a post-trial motion challenging the jury’s
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`finding that it failed to prove by a preponderance of the evidence that Google infringed.
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`Again, there is only one claim at issue: Arendi’s claim for infringement of the ʼ843 patent.
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`Because Arendi is not challenging the jury’s verdict that it failed to prove infringement, the Court
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`must enter judgment on that claim in favor of Google—regardless of what the Court thinks about
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`the merits of Arendi’s arguments about Google’s affirmative defenses. Accordingly, the Court
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`will enter final judgment in favor of Google on that claim.
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`Arendi asks the Court to “clarify” in the judgment document “that the judgment is based
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`Case 1:13-cv-00919-JLH Document 615 Filed 02/02/24 Page 4 of 5 PageID #: 62513
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`on the jury’s non-infringement verdict at trial.” (D.I. 610.2) The Court declines to do so. There
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`is one claim left in this case and the final judgment will indicate that judgment on that claim should
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`be entered in favor of Google, for the reasons set forth above. It is unclear if Arendi’s request
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`represents an attempt to limit what issues the parties can or must raise on appeal (against or in
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`support of the judgment); nothing in this order is intended to preclude either side from making
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`whatever arguments on appeal that they are permitted to make under the law—or that they are
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`required to make in order to preserve their arguments.
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`Google argues that the Court can and should consider—and reject—Arendi’s arguments
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`that the jury got it wrong on anticipation and obviousness. I agree with Google that the Court has
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`discretion to consider the arguments in Arendi’s post-trial motions. But because Google did not
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`seek a declaratory judgment of invalidity, the Court also has discretion to not consider Arendi’s
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`arguments.3 And under the circumstances of this case, the Court will exercise its discretion to not
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`do so, as it would be a waste of judicial resources. Because Arendi did not file a post-trial motion
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`challenging the jury’s finding that it failed to prove infringement of the ʼ843 patent, its success on
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`appeal appears to depend on whether it can convince the Federal Circuit that Judge Stark’s claim
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`construction was erroneous. If the Federal Circuit agrees with Judge Stark’s claim construction,
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`the judgment in favor of Google will stand regardless of how this Court rules on Arendi’s post-
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`trial motions on invalidity. If the Federal Circuit disagrees with aspects of the claim construction,
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`any ruling I would have made with respect to Arendi’s post-trial validity motions would have been
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`2 The Court asked the parties for supplemental briefing regarding how it should proceed in
`view of Arendi’s failure to challenge the jury’s non-infringement finding in a post-trial motion.
`(D.I. 608, 609, 610, 611, 614.)
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`3 See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 93–94 (1993) (“An
`unnecessary ruling on an affirmative defense is not the same as the necessary resolution of a
`counterclaim for a declaratory judgment.”).
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`4
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`Case 1:13-cv-00919-JLH Document 615 Filed 02/02/24 Page 5 of 5 PageID #: 62514
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`based on an erroneous claim construction.4
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`For these reasons, Arendi’s Renewed Motions for Judgment as a Matter of Law and Motion
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`for a New Trial (D.I. 559) are DENIED. The Court will enter final judgment in favor of Google
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`on Arendi’s claim of infringement of the ’843 patent.
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`Date: February 2, 2024
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`______________________________
`The Honorable Jennifer L. Hall
`UNITED STATES DISTRICT JUDGE
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`4 It is true, as Google points out, that a district court deciding a case on alternative grounds
`may help a higher court. And I agree with Google that it is possible that any claim construction
`errors that might be identified by the Federal Circuit might not call into question the jury’s
`invalidity verdict. Under the unique circumstances of this case, however, there is no reason for
`the Court to expend judicial resources writing an opinion to address the alternative grounds of
`invalidity, where that opinion is either going to be (i) unhelpful because it’s unnecessary or (ii)
`uses the wrong claim construction and thus unlikely to be all that helpful to an appellate court that
`is going to review the invalidity issues de novo. Again, this order is not intended to limit what
`issues the parties can (or must) raise on appeal against or in support of the judgment.
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`As Google points out, the Supreme Court has remarked on the public interest that is served
`by courts “inquiring fully” into patent validity, Sinclair & Carroll Co. v. Interchemical Corp., 325
`U.S. 327, 330 (1945), because preclusion doctrines can prevent a patentee who lost on the issue of
`validity from reasserting that patent against the defendant and others. See, e.g., Blonder-Tongue
`Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971). But Google has not suggested that concerns
`about issue preclusion weigh in favor of the Court assessing the merits of Arendi’s post-trial
`validity motions. Perhaps that is because the doctrine of issue preclusion generally requires that
`the issue (i.e., patent validity) be essential to the judgment, and it is not here, for the reasons
`explained above. What’s more, the ’843 patent is now expired and thus will not be asserted against
`Google in a future case.
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`5
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