Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 1 of 6 PageID #: 6915
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 12-1595-LPS
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`C.A. No. 12-1596-LPS
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`C.A. No. 12-1597-LPS
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC. and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
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`Defendants.
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
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`v.
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`Defendants.
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`PUBLIC VERSION
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`PUBLIC VERSION
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`PUBLIC VERSION
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`Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 2 of 6 PageID #: 6916
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`C.A. No. 12-1601-LPS
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`C.A. No. 12-1602-LPS
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`C.A. No. 13-919-LPS
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`C.A. No. 13-920-LPS
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
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`Defendant.
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
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`Defendants.
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`GOOGLE LLC,
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`v.
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`Defendant.
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`OATH HOLDINGS INC. and OATH INC.,
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`v.
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`Defendants.
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`PUBLIC VERSION
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`Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 3 of 6 PageID #: 6917
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`LETTER TO THE HONORABLE LEONARD P. STARK FROM
`DAVID E. MOORE, ESQUIRE
`
`OF COUNSEL:
`
`Robert W. Unikel
`Michelle Marek Figueiredo
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
`
`Robert R. Laurenzi
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: November 23, 2020
`6945420 / 39729
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc., and Google
`Inc.
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`Also filed on behalf of Defendants LG
`Electronics, Inc., LG Electronics USA, Inc.,
`LG Electronics MobileComm U.S.A., Inc.,
`Apple Inc., BlackBerry Limited, BlackBerry
`Corporation,Sony Mobile Communications
`(USA) Inc., Sony Corporation, Sony
`Corporation of America, Oath Holdings Inc.
`and Oath Inc.
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`3
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`Public Version Dated: December 1, 2020
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`Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 4 of 6 PageID #: 6918
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`Dear Chief Judge Stark:
`Defendants move the Court to strike those portions of Arendi expert Dr. Sacerdoti’s
`responsive report regarding the validity of U.S. Patent No. 7,917,843 (Ex. A, “Sacerdoti Report”)1
`that suggest, rely upon, or opine on, the previously unidentified conception date of July 6, 1997
`for the asserted ’843 Patent. Only on October 20, 2020, eight years after these cases began and
`nearly one year after the close of fact discovery, did Arendi first disclose—via the Sacerdoti
`Report—the new, July 6, 1997 conception date and produce a document purportedly corroborating
`this newly disclosed date in an effort to avoid 35 U.S.C. § 102(a) prior art. (Sacerdoti Rpt. ¶45.)
`During fact discovery, Arendi never identified any specific conception or invention date for the
`ʼ843 Patent despite Defendants’ discovery requests calling for that information. Arendi’s
`disclosure of a new alleged invention date in its expert report is improper and suspect, as it is not
`supported by valid (or properly disclosed) evidence, and it occurred after Defendants spent
`countless hours investigating prior art and developing invalidity arguments. Gamesmanship such
`as Arendi’s should not be allowed.
`Arendi Never Identified the New July 6, 1997 Invention Date During Fact Discovery
`During fact discovery, Arendi identified conception and reduction to practice dates of “the
`summer of 1997” and “the summer of 1998,” respectively. And, Arendi did not produce
`documents corroborating these dates. In response to Defendants’ September 2013 interrogatories,
`for example, which included a request for Arendi to “describe in detail the circumstances
`surrounding the invention of the claims, including the precise date of conception. . .”, Arendi
`responded,
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`
` (Ex. B, 10/23/2013 Resp. to Def. Interrogatory No. 2.) Arendi’s response
`did not identify July 6, 1997 as the alleged conception or invention date, and the documents cited
`by Arendi’s response neither indicated a “summer of 1997” conception date nor established
`diligence between 1997 and 1998. Instead, in response to Defendants’ Interrogatory No. 9, which
`asked Arendi to “state the priority date . . . [for each asserted claim of the Arendi Asserted
`Patents],” Arendi definitively stated,
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`(Ex. B, 10/23/2013 Resp. to Def. Interrogatory No. 9.) Arendi never supplemented its
`October 23, 2013 interrogatory responses before the close of fact discovery on December 13, 2019.
`In October 2013, Defendants also served a document request seeking from Arendi “[a]ll
`documents that reflect, refer to or relate to the conception, reduction to practice, research, design,
`development, or testing of the subject matter shown, described, and claimed in any of the Patents-
`in-Suit . . .” (Ex. C, Defs.’s 10/3/2013 RFP No. 5.) Notwithstanding this clear request, Arendi
`provided no materials showing a July 6, 1997, or even a “summer of 1997,” conception date. In
`fact, as detailed below, Arendi inexplicably failed to produce during fact discovery the lone
`document (Ex. D, ARENDI563479) that Dr. Sacerdoti now purports to rely on to pinpoint an
`alleged July 6, 1997 invention date.
`In a final attempt to pin down any Arendi-alleged conception date during fact discovery,
`Defendants deposed Mr. Hedløy over five days in October and November 2019 in both his
`individual capacity (as the named inventor of the ‘843 Patent) and as Arendi’s Rule 30(b)(6)
`corporate representative. During these depositions, Hedløy never provided a specific conception
`date of July 6, 1997. In fact, during his 30(b)(1) deposition,
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`1 An exemplary report from the Google case is attached as Ex. A, but the requested relief applies
`to all cases.
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`Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 5 of 6 PageID #: 6919
`
`The Honorable Leonard P. Stark
`November 23, 2020, Page 2
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`18.)
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`
` (Ex. E, 10/29/2019
`Hedløy Dep. at 40:5-7.) This non-specific testimony was based on only Hedloy’s high-level
`recollection that he
` (Id.)
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`(Id. at 42:17-
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`(Id. at
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` (Ex. F, 11/5/2019 Hedløy Dep. at 222:10-21, 231:20-
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`357:4-15.) Additionally, in his 30(b)(6) testimony, although Hedløy
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`232:14.)
`Dr. Sacerdoti’s Reports Impermissibly Rely on Withheld Evidence to Support its Invention Date
`Dr. Sacerdoti supports the new July 6, 1997 alleged invention date by relying on a small
`number of files “related to the development of Arendi A.S. products.” (Sacerdoti Report ¶ 45.)
`These files include (i) an undated note allegedly drafted by Hedløy in preparation for a meeting
`with his future attorney (ARENDI563479); and (ii) two prototypes with “last modified” dates of
`July 6 and July 8, 1997 (AHL0067172.) But, Arendi indisputably failed to produce Hedløy’s
`undated note (ARENDI563479) during fact discovery. In correspondence following service of
`the Sacerdoti Report, Arendi confirmed that it waited almost one year after fact discovery closed
`to produce the undated note allegedly corroborating the new invention date. (See Ex. G,
`10/27/2020 Email.) Arendi offered no explanation or justification for its untimely production.
`Further, before Sacerdoti’s reports, Arendi never specifically identified the two prototype files
`cited by Sacerdoti as having any particular relevance–not in Arendi’s interrogatory response
`concerning any alleged conception date and not in Hedloy’s 30(b)(1) or 30(b)(6) deposition
`testimony concerning the invention timeline. These two prototype files were two files among
`hundreds included in the folder labeled AHL0067172.
`The Court Should Strike the Portions of the Sacerdoti Reports That Assert or Rely Upon a July
`6, 1997 Invention Date
`Arendi improperly withheld its identification of the alleged, July 6, 1997 invention date,
`and impermissibly failed to produce the evidence Dr. Sacerdoti now relies on to corroborate that
`new invention date, during fact discovery. Accordingly, the Court should now strike the portions
`of the Sacerdoti Report that attempt to assert and/or rely upon that July 6, 1997 invention date.
`See FRCP 37(c)(1) (“[i]f a party fails to provide information . . .as required by Rule 26(a) or (e),
`the party is not allowed to use that information . . . to supply evidence on a motion, at a hearing,
`or at trial, unless the failure was substantially justified or harmless.”).
`Given that the determination of an invention date necessarily is based upon factual
`findings, it was critical for Arendi to disclose its alleged invention date, and identify all allegedly
`supporting evidence, during fact discovery to afford Defendants the opportunity to investigate and
`test Arendi’s date (and the allegedly corroborating evidence). E.I. du Pont De Nemours & Co. v.
`Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019) (explaining, “[p]riority, conception, and
`reduction to practice are questions of law, which are based on subsidiary factual findings”). Here,
`applying Third Circuit law, the Court should find that Arendi’s extreme delay in disclosing both
`its new invention date and the evidence allegedly corroborating that date caused Defendants harm,
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`Case 1:13-cv-00920-LPS Document 215 Filed 12/01/20 Page 6 of 6 PageID #: 6920
`
`The Honorable Leonard P. Stark
`November 23, 2020, Page 3
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`justifying exclusion of this new allegation. Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894, 904-905 (3d Cir. 1977) (identifying set of factors courts should consider when
`determining the exclusion of evidence). The Pennypack factors favor striking and excluding
`Arendi’s new alleged invention date because (1) Defendants prepared their invalidity arguments
`(in both invalidity contentions and expert reports) based on the understanding that Arendi’s
`asserted invention and priority date was September 3, 1998 (the date on which Hedloy’s original
`Norwegian patent application was filed, and the priority date specified by Arendi in its response
`to Defendants’ Interrogatory No. 9) based on Arendi’s failure to specifically identify a conception
`date, produce evidence corroborating its alleged “summer of 1997” conception date, or to establish
`diligence from that time to the alleged reduction to practice in the “summer of 1998”; (2) the only
`reasonable way to cure the prejudice caused by Arendi’s untimely disclosure is to preclude Arendi
`from relying on the new alleged invention date and the new evidence; (3) the case has been litigated
`for eight years, and allowing Arendi’s belated disclosures would materially undermine significant
`portions of the litigation activity to date (and require significant additional fact discovery); (4) the
`timing of Arendi’s new disclosure and production is indicative of bad faith, as it occurred well
`after the close of fact discovery and after Arendi received Defendants’ opening invalidity reports;
`and (5) the withheld invention date and allegedly corroborating evidence affect substantial portions
`of Defendants’ invalidity arguments. See Bridgestone Sports Co. v. Acushnet Co., C.A. No. 05-
`132, 2007 WL 521894, at *4-5 (D. Del. Feb. 15, 2007) (excluding prior art references produced
`four months after close of fact discovery); Round Rock Research, LLC v. SanDisk Corp., C.A. No.
`12-569-SLR (D. Del. Feb. 4, 2015) (striking a “theory of diligence [and supporting] evidence” that
`were not timely disclosed during fact discovery, including in response to interrogatories); see also
`Karl-Storz Endoscopy-Am. Inc. v. Stryker Corp., Case No. 14-00876 (N.D. Cal. Apr. 17, 2017)
`(striking a newly asserted conception date, noting that the plaintiff must “live with its years-long
`representation” of its previously disclosed conception date, particularly where the information was
`available to the plaintiff before the lawsuit was filed); Thought, Inc., v. Oracle Corp., No. 12-
`05601, 2015 WL 5834064, at *1, 5 (N.D. Cal. Oct. 7, 2015) (granting defendant’s motion to strike
`plaintiff’s earlier invention date as plaintiffs failed to provide evidence required by local patent
`rules of invention date that preceded filing date of any patent at issue).
`Ultimately, Arendi’s failure to identify any specific invention date during fact discovery,
`combined with its withholding of materials allegedly establishing a 1997 invention date, justifies
`striking and excluding those portions of the Sacerdoti Report that assert, discuss or rely upon the
`new asserted July 6, 1997 invention date as well as striking Arendi’s late produced documents.
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`Respectfully,
`
`/s/ David E. Moore
`
`David E. Moore
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`
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`DEM:nmt/6946168/39729
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`Enclosures
`cc:
`Counsel of Record (via electronic mail)
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