Case 1:13-cv-00920-LPS Document 153 Filed 08/23/19 Page 1 of 3 PageID #: 6058
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`August 23, 2019
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`VIA E-FILING
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`The Honorable Leonard P. Stark
`United States District Court
`844 North King Street
`Wilmington, DE 19801
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`Re:
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`Arendi S.A.R.L. v. LG Elecs., Inc., et. al., C.A. No. 12-1595 (LPS);
`Arendi S.A.R.L. v. Apple Inc., C.A. No. 12-1596 (LPS);
`Arendi S.A.R.L. v. Microsoft Mobile, Inc., C.A. No. 12-1599 (LPS);
`Arendi S.A.R.L. v. Motorola Mobility LLC, et. al., C.A. No. 12-1601 (LPS);
`Arendi S.A.R.L. v. Sony Mobile Commc’ns (USA) Inc., et. al., C.A. No. 12-1602 (LPS);
`Arendi S.A.R.L. v. Google LLC, C.A. No. 13-919 (LPS);
`Arendi S.A.R.L. v. Oath Holdings Inc., et. al., C.A. No. 13-920 (LPS)
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`Dear Chief Judge Stark:
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`In accordance with the Court’s August 19, 2019 Oral Order, D.I. 145,1 Plaintiff Arendi
`S.A.R.L. (“Arendi”) submits this letter “addressing the impact, if any, of the Court’s claim
`construction decisions on the pending 101 motions” and providing its positions as to which claims
`are representative and which claims require an eligibility ruling.
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`A.
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`The Court’s Claim Construction Rulings Further Support Eligibility
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`As discussed in Arendi’s Answering Brief in Opposition to Defendants’ §101 Motion, D.I.
`139 (“Opposition”), the asserted claims of the patents-in-suit are directed to a specific way of
`improving information searching and retrieval between two different computer programs without
`disrupting the user’s work or requiring the user to be familiar with and have access to an external
`information source. D.I. 139 at 4. The Court’s claim construction rulings do not change this. In
`fact, the Court’s claim construction rulings confirm that the asserted claims are directed to a
`specific method for solving a computer-based problem.
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`Defendants moved under Rule 12(c) and §101 in view of Arendi’s proposed constructions.
`The Court adopted Arendi’s proposed constructions for several disputed terms. The Court’s
`remaining constructions narrow the preemptive footprint of the asserted claims, further
`concretizing the invention. For example, in their §101 Motion, Defendants argued that Arendi’s
`proposed constructions of “computer program” and “document” did “nothing to make the claims
`less abstract, or tied to the use of unconventional elements or approaches.” D.I. 122 at 15. The
`Court did not, however, adopt Arendi’s constructions for either of these terms. The Court adopted
`Defendants’ proposed construction of “computer program” and crafted its own construction of
`“document.” D.I. 143 at 5, 11. In both cases, the Court’s constructions add further specificity to
`the already-specific approach set forth in the claims. Those constructions also highlight that the
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`1 Docket cites are to Case No. 13-919, unless otherwise noted.
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`Case 1:13-cv-00920-LPS Document 153 Filed 08/23/19 Page 2 of 3 PageID #: 6059
`The Honorable Leonard P. Stark
`August 23, 2019
`Page 2
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`subject matter defined by the claims concerns what the Federal Circuit calls an improvement in
`computer functionality. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir.
`2016). For example, limiting “document” to a “word processing, spreadsheet, or similar file into
`which text can be entered” grounds the claims in the identified travails of users of a “word
`processors, spreadsheets, etc.” E.g., ’843 patent, at 1:28-29. This additional context further pulls
`the claims away from the realm of the abstract and cements their eligibility.
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`Additionally, the Court rejected Defendants’ indefiniteness arguments as to the ’843 patent
`claim term “to determine if the first information is a least one of a plurality of types of information
`that can be searched for” and the ’993 patent claim term “wherein the computer implemented
`method is configured to perform each one of action (i), action (ii), and action (iii) using the first
`contact information previously identified as a result of the analyzing.” D.I. 143 at 13, 15. As
`discussed in Arendi’s Opposition, D.I. 139 at 12, Defendants’ §101 Motion advances the same
`type of indefiniteness complaints that Defendants lodged against these terms. To the extent such
`complaints are even valid as §101 arguments in light of the claims in Ancora Technologies, Inc. v.
`HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018), Data Engine Technologies LLC v. Google
`LLC, 906 F.3d 999 (Fed. Cir. 2018), Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
`F.3d 1356 (Fed. Cir. 2018), and Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir.
`2018), this Court should again reject them.
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`B.
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`For the Court’s convenience, Arendi provides separate responses to this request.
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`Representative Claims and Eligibility Rulings
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`The ’843 Patent
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`1.
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`Arendi alleges infringement by Defendants of independent claims 1 and 23 and dependent
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`claims 8 and 30 of the ’843 patent.2 Arendi also alleges infringement by Google LLC of dependent
`claims 13, 15, 17, 18, and 19. Arendi submits that claim 1 is representative of the independent
`claims and confirms that the ’843 patent is directed to eligible subject matter. To the extent the
`Court finds that such independent claims are not patent-eligible, Arendi respectfully requests that
`the Court separately consider each dependent claim as well.
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`2.
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`The ’993 Patent
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`Arendi alleges infringement by all Defendants of independent claims 1, 9, and 17 and
`dependent claims 5, 8, 13, 16, 21, and 24 of the ’993 patent. Arendi also alleges infringement by
`Google of dependent claim 2 and of claim 18 by all Defendants except for Microsoft Mobile Inc.,
`Google, Oath Holdings Inc., and Oath Inc. Arendi submits that claim 1 is representative of the
`independent claims and confirms that the ’993 patent is directed to eligible subject matter. To the
`extent the Court finds that such independent claims are not patent-eligible, Arendi respectfully
`requests that the Court separately consider each dependent claim as well.
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`2 Arendi has not accused Oath Holdings Inc. and Oath Inc. of infringing claims 8 and 30.
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`Case 1:13-cv-00920-LPS Document 153 Filed 08/23/19 Page 3 of 3 PageID #: 6060
`The Honorable Leonard P. Stark
`August 23, 2019
`Page 3
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`3.
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`The ’356 Patent
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`Arendi alleges infringement by Defendant Google of dependent claims 2, 11, and 19 of the
`’356 patent. Claims 2 and 11 depend from claim 1. Arendi submits that claim 2 is representative
`and confirms that the ’356 patent is directed to eligible subject matter. To the extent the Court
`finds that claim 2 (and by necessity claim 1) is not patent-eligible, Arendi respectfully requests
`that the Court separately consider claim 11 as well.
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`4.
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`The ’854 Patent
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`Arendi alleges infringement by Defendant Google of independent claims 13, 31, 50, 79,
`93, 98, and 101 and dependent claims 15, 53, and 56 of the ’854 patent. Arendi alleges
`infringement by Defendants Oath Holdings Inc. and Oath Inc. of independent claims 31 and 79 of
`the ’854 patent. In its Markman Order, the Court found at least one element of independent claims
`13, 31, 50, 79, 98, and 101 of the ’854 patent invalid for indefiniteness. D.I. 143 at 23-34.
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`Arendi respectfully disagrees with the Court’s ruling but concedes that the ruling moots
`the eligibility issue as to those independent claims of the ’854 patent as well as claims 15, 53, and
`56, which depend from independent claims found indefinite. Accordingly, the Court need not reach
`the question as to those claims. The only claim of the ’854 patent remaining before the Court is
`independent claim 93.
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`Respectfully submitted,
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`/s/ Eve H. Ormerod
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`Eve H. Ormerod (No. 5369)
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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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