Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 1 of 9 PageID #: 6983
`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 1 of 9 PageID #: 6983
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`
`Plaintifl',
`
`V.
`
`LG ELECTRONICS, INC., et al.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`APPLE INC,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`BLACKBERRY LIMITED, et al.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintifi',
`
`V.
`
`MOTOROLA MOBILITY LLC
`
`f/k/a MOTOROLA MOBILITY, INC .,
`
`Defendant.
`
`PUBLIC VERSION
`
`DECEMBER 7, 2020
`
`C .A. No
`
`. 12-1595-LPS
`
`C .A. No
`
`. 12-1596-LPS
`
`C .A. No
`
`. 12—1597—LPS
`
`C .A. No
`
`. 12-1601-LPS
`
`
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 2 of 9 PageID #: 6984
`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 2 of 9 PageID #: 6984
`
`ARENDI S.A.R.L.,
`
`Plaintifl',
`
`V.
`
`SONY MOBILE COMMUNICATIONS
`
`(USA) INC. f/k/a SONY ERICSSON
`MOBILE COMMUNICATIONS (USA)
`INC .,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`OATH HOLDINGS INC ., et al.,
`
`Defendant.
`
`
`
`C .A. No. 12-1602-LPS
`
`CA. No. 13-919-LPS
`
`C .A. No. 13-920-LPS
`
`LETTER TO THE HONORABLE LEONARD P. STARK RESPONDING TO
`
`DEFENDANTS’ MOTION TO STRIKE PORTIONS OF DR. SACERDOTI’S REPORT
`
`OF COUNSEL:
`
`SMITH, KATZENSTEIN & JENKINS LLP
`
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Amelicas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`Tel: (302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneysfor PlainnflArendi S.A.R.L.
`
`Dated: November 30, 2020
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 3 of 9 PageID #: 6985
`
`John Lahad
`Emi Lawson
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`
`Kalpana Srinivasan
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 4 of 9 PageID #: 6986
`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 4 of 9 PageID #: 6986
`
`Dear Chief Judge Stark,
`
`Defendants’ motion addresses two distinct issues, both of which fail to identify any prejudice
`to support seeking to strike portions of Dr. Sacerdoti’s validity report. Throughout discovery,
`Arendi identified the summer of 1997 as the time of conception of the ’843 invention, and Dr.
`Sacerdoti’s opinion is consistent with those assertions. Defendants cannot now claim surprise or
`belated disclosure. Nor do Defendants suffer prejudice from Dr. Sacerdoti’s partial use of a single
`doclunent to confirm his opinion. That document is consistent with evidence produced in this case
`and was promptly disclosed to defendants when identified by Arendi’s cormsel.
`
`I.
`
`Background:
`A. Written Discovery
`
`On October 23, 2013 in response to Defendants’ First Set of Interrogatories. Arendi stated
`that “Atle Hedloy conceived of the inventions claimed by claims of the ‘853 Patent Family at least
`as early as the summer of 1997. . .” Arendi’s position has not changed. (Defs’ Ex. B, 10/23/2013
`Res . to Def. Interro ator No. 2). As a part of its interrogatory response, Arendi also identified
`
`# which Dr. Sacerdoti relies upon to reach his conclusion. The
`
`0 er mc 11 es mventron prototype files last modified in July of 1997.
`
`B. Deposition Testimony
`
`Inventor Atle Hedloy was deposed over the course of five days in late October and early
`November of 2019 in his individual and corporate capacities. Over the course of those depositions,
`Mr. Hedloy consistently answered Defendants’ questions regarding the date he conceived the ’843
`invention. Time and again, he identified the conce tion date “as earl as the summer of 1997” and
`
`more speclfically “July ofwt.
`
`C. Opening Invalidifl Reports
`
`On August 7, 2020, Defendants Apple, Google. Motorola and LG each served expert
`reports challenging the validity of the asserted claims. Without fail, each expert recites his or her
`understandin that Arendi contends that the ’843 atent was conceived as earl as the srmlmer of
`
`
`
`). Each expert contended that Arendi had
`
`
`to s ow proo o conception in t e srmlmer of 1997 or diligent reduction to practice
`a1 e
`thereafter. In order for Defendants’ experts to offer an affirmative opinion that conception did not
`occur dining the smnmer of 1997, each expert must have necessarilv considered whether
`conception occurred during a period that encompassed July 6, 1997.
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 5 of 9 PageID #: 6987
`
`The Honorable Leonard P. Stark
`November 30, 2020
`Page 2
`
`
`
`
`
`
`D. Rebuttal Validity Reports
`On October 20, 2020, Arendi served Defendants with the Expert Report of Dr. Earl
`Sacerdoti Regarding Validity of U.S. Patent No. 7,917,843. See e.g. Defs’ Ex. A. Therein, Dr.
`Sacerdoti opined the patented invention was conceived of no later than July 6, 1997.
`
`. He based his opinion on several factors: Mr. Hedløy’s deposition testimony, software
`development files evidencing reduction to practice and showing last modified dates of July 6 and
`8 of 1997, conversations with Mr. Hedløy, and a note Mr. Hedløy wrote describing his invention
`in preparation for a meeting with a Norwegian patent agent.
`. With the exception of
`the last document, Defendants have possessed all of these same references since before the close
`of fact discovery. The note in which Mr. Hedloy describes his invention (“the Tandberg note”)
`was inadvertently excluded from previous productions and was supplied to Defendants promptly
`after Arendi became aware of the oversight.
`E. Discovery and Disclosure Efforts
`Mr. Hedløy maintains separate file directories to segregate files related to work and his
`family’s private life. Mr. Hedløy maintains a directory at
`in which he saves
`
`
` For example,
`
`
`
`
`
`Arendi’s document production efforts for this lawsuit included a comprehensive search and
`review of documents in the
`.
`Despite Mr. Hedløy’s persistent efforts and practice to the contrary, the Tandberg note had
`been accidentally saved to Mr. Hedløy’s personal directory. Mr. Hedløy only discovered this
`document was in his personal directory in the course of preparing for a conversation with Arendi’s
`validity expert, Dr. Sacerdoti, concerning Mr. Hedløy’s invention. The filing error was discovered
`on or about October 7, 2020. Mr. Hedløy emailed the file to Arendi’s counsel on that same day.
`After re-collecting the file to ensure preservation of metadata, the file was produced to defendants
`on October 20, 2020.
`In the process of responding to the instant motion, Arendi conducted further investigation
`which revealed that the Tandberg note was also included as an attachment to a privileged email
`communication from 2014 that Arendi collected during email discovery. (Only three of seven
`parties to the motion to strike, Google, Apple and Motorola, sought email discovery). During email
`review, the email was coded as privileged, and as a part of the email’s document family, the
`attachment – though non-privileged -- was inadvertently excluded from production as well.
`This email was one of thousands that Arendi reviewed and produced and the Tandberg note
`was one among tens of thousands of documents reviewed and produced in this case. The Tandberg
`note was certainly not intentionally withheld from Defendants. That document supports Arendi’s
`efforts to swear behind an earlier priority date—but is entirely consistent with other evidence –
`and Defendants have identified no conceivable benefit to Arendi in withholding it.
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 6 of 9 PageID #: 6988
`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 6 of 9 PageID #: 6988
`
`The Honorable Leonard P. Stark
`
`November 30, 2020
`
`Page 3
`
`II.
`
`Defendants’ Motion Should Be Denied
`
`“Courts in the Third Circuit favor resolution of disputes on their merits.” First Quality Tissue,
`LLC v. Irving Consumer Prod. Ltd, No. l9-428—RGA, 2020 WL 6286862, at *1 (D. Del. Oct. 27,
`2020). Excluding important evidence “is considered an ‘extreme’ sanction, not normally to be
`imposed absent a showing of willful deception or ‘flagrant disregard’ of a court order by the
`proponent of the evidence.” Bridgestone Sports Co. v. Acuslmet Co., No. 05-132 JJF, 2007 WL
`521894, at *4 (D. Del. Feb. 15, 2007). Under Third Circuit law, courts weigh five factors to decide
`whether to exclude evidence: (1) the prejudice or surprise to the party against whom the evidence
`is offered; (2) the possibility of curing the prejudice; (3) the potential disruption of an orderly and
`efficient trial; (4) the presence of bad faith or willfulness in failing to disclose the evidence; and
`(5) the importance of the information withheld. Meyers v. Pennypack Woods Home Ownership
`Ass ’11, 559 F.2d 894, 905 (3d Cir.l977). Each of the Pennypack factors weighs against granting
`Defendants’ motion.
`
`There is no sggprise or prejudice to Defendants. Defendants cannot claim surprise when they
`admit
`in their motion that Plaintiff’s interrogatory responses and Mr. Hedloy’s deposition
`testimony put them on notice that the ’843 patent was conceived no later than the smmner of 1997
`ef’s Ex. B, 10/23/2013 Resp. to Def. Interrogato No. 9;
`
`) and specifically in July of 1997
`
`
`).
`Defendants argue prejudice because they were unable to “pin down” an exact date in July
`during deposition testimony. However, they fail to state exactly how that inexactitude led to actual
`prejudice. Defendants contend that “when pressed” Mr. Hedloy could not specify the “exact
`contents and features of the [July 1997] code files.” D1. 208 at 2. “Pressed” overstates counsel’s
`efforts to elicit specific information about the code files in the referenced exchange. In that
`deposition exchange, counsel
`incorrectly characterized Mr. Hedloy’s previous statements
`re ardin the Jul
`1997 files he found as “the final Post Nmmner product.”
`. Mr. Hedloy corrected counsel and clarified the nature of the files he
`identified. Far from asking about the “exact contents and features ofthe code files,” counsel simply
`moved on to asking Mr. Hedloy about reduction to practice and when he believed he completed
`the “fnlished the product.” Id.
`Defendants have failed to specify how they would have shaped discovery differently. Nor have
`Defendants identified which alleged prior art references are affected by a July 1 versus a July 31
`(or even August 31) conception date. See Wi-LAN Inc. v. Sharp Elecs. Corp, CV 15-379-LPS,
`2018 WL 6445548, at *5 (D. Del. Dec. 10, 2018) (finding no prejudice because the moving party
`“has failed to specifically articulate any potential prejudice it would suffer”). Defendants have not
`pointed to prior art from a period that they had not already identified in their invalidity contentions,
`which predated Arendi’s interrogatory response.
`Defendants point to Arendi’s response to Interrogatory No. 9 as part of the basis of their
`reliance on a September 3, 1998 priority date. Arendi’s answer to Interrogatory No. 9 states, in
`relevant part, “[s]ubject to and without waiving the foregoing objections, Arendi responds:
`inventions claimed by the ’853 Patent Family were conceived at least as early as the summer of
`1997, and reduced to practice at least as early as the summer of 1998. All patents in the ’853 Patent
`Family are entitled to priority to the Norwegian patent application 984066 filed on Sep. 3, 1998.”
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 7 of 9 PageID #: 6989
`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 7 of 9 PageID #: 6989
`
`The Honorable Leonard P. Stark
`
`November 30, 2020
`
`Page 4
`
`But this argument is largely empty. As previously discussed, experts for several defendants discuss
`Arendi’s view that it can claim priority based on a summer 1997 conception date which shows
`Defendants did not solely rely on the September 3, 1998 priority date in shaping their discovery.
`Furthermore, read in context, it is clear that Interrogatory No. 9 makes two independent assertions.
`First, that Arendi can swear behind the conception and reduction to practice of the invention going
`back to July of 1997. Second, that the inventions in the ’853 Patent Family also claim priority over
`the Norwegian patent. It is not reasonable, however, to cite this response to show that Arendi
`claims September 3, 1998 as the only relevant priority date.
`From the beginning, Arendi has cited the summer of 1997 as the time of conception of
`the’843 Patent, and “that has to count for something here.” Integra Lifesciences Corp. v.
`vaerbranch Med. Tech., Inc., No. 15-819-LPS-CJB, 2017 WL 11558096, at *5 (D. Del. Dec. 11,
`2017) (denying a motion to strike where the Plaintiff made an initial disclosure and Defendant
`simply failed to pursue a more complete response). If Defendants were unsure of whether Arendi
`intended to assert a July 1997 date of conception (which there was no reason why they should have
`been), then before “spending countless hours investigating prior art and developing invalidity
`argrunents,” the more prudent move would have been to move this Court to compel a more
`complete response. See Integra Lifesciences, 2017 WL 11558096 at *5. They did not. Instead,
`Defendants remained silent, and now purport to be surprised and prejudiced by Dr. Sacerdoti’s
`conception date opinion and seek to have it thrown out altogether. Defendants’ failure to follow
`up on discovery responses they believed were not sufficiently robust does not constitute prejudice
`or surprise and weighs against exclusion. See Finjan, Inc v. Rapid7, Inc, No. CV 18-1519-MN,
`2020 WL 5798545, at *5 (D. Del. Sept. 29, 2020) (declining to exclude an infringement theory
`raised an expert report that was substantially similar to that disclosed in final infringement
`contentions).
`Likewise, Defendants do not suffer prejudice from Dr. Sacerdoti’s reliance on Mr.
`Hedloy’s note outlinin the invention. It is on] one of multi 1e sources he cites to 'usti
`
`his
`
`
`
`ee Def’s Ex. B, 10/23/2013 Resp. to Def. Interrogatory
`. So, while important, the information gained from the Tandberg note
`is not a new revelation and is consistent with the previously disclosed documents.
`
`Any prejudice can be cured. Several Defendants have already taken the opportrmity to
`address the sunnner conception date in their opening invalidity reports, and all will have the
`opportunity to address it in their reply reports and to depose Dr. Sacerdoti on his opinions. These
`opportunities further negate any claim of prejudice. Cf Wi—LAN, 2018 WL 6445548, at *3
`(“Defendants are not prejudiced by the disclosures and have had an opportunity to have their own
`expert rebut Dr. Mirel’s opinions and to have deposed Dr. Mirel.”); Cosmo Teclls., 2017 WL
`4063983, at *2 (denying motion to strike in part because “Defendants’ experts had the opportunity
`to—and did, in fact—respond to Dr. Atwood’s naked eye observations in their rebuttal reports”
`and “the opportunity to depose Dr. Atwood”); TQ Delta, 2019 WL 4346530, at *3 (“To the extent
`that TQ Delta has suffered any prejudice
`it has been able to depose Dr. Wesel on his opinions
`and has its own expert to respond to these theories”); Wi—LANInc. v. LG Elecs., Inc., No. 18—CV—
`1577, 2019 WL 5790999, at *5 (SD. Cal. September 18, 2019) (fmding no prejudice because “LG
`was permitted to prepare and serve a rebuttal expert report” and “permitted to deposed Dr. Lomp”).
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 8 of 9 PageID #: 6990
`
`The Honorable Leonard P. Stark
`November 30, 2020
`Page 5
`
`
`
`Trial will not be disrupted. If the Court should find a need to cure prejudice, there should
`be no disruption because no trial dates have been set. D.I. 222. Therefore, this factor weighs against
`striking portions of Dr. Sacerdoti’s report or the corroborating document. See Broadsoft Inc. v.
`Callwave Commc’ns LLC, No. 13-711-RGA, 2015 WL 3542547 at *1 (D. Del. June 1, 2015)
`(finding no disruption where no trial date has been set).
`Arendi did not act in bad faith. Arendi had affirmatively identified the July of 1997
`conception date. Nor, as described above, did Arendi act in bad faith or willfully withhold the
`Tandberg note. Defendants accuse Arendi of gamesmanship, but Arendi has been consistent
`regarding the July conception date and does not gain any special advantage by specifying July 6,
`1997, as opposed to “July 1997”, as the conception date. Arendi provided Defendants with the
`most complete information possible throughout the discovery process and disclosed the recently
`discovered Tandberg note with Dr. Sacerdoti’s report as Arendi’s discovery of the document
`coincided with the timing of the reports. Arendi’s actions are not consistent with how the Third
`Circuit defines bad faith in this context. See Withrow v. Spears, 967 F. Supp. 2d 982, 1006 (D.
`Del. 2013) (“The Third Circuit has found a party to have violated a scheduling order willfully or
`in bad faith where the violation at issue was one in a line of violations by the non-moving party.”)
`(citing collected cases).
`The information is important. Defendants seek to strike sections of Dr. Sacerdoti’s report
`that form the basis of his opinion that some of Defendants’ alleged prior art postdates Mr. Hedløy’s
`conception of the invention. See Sonos, Inc. v. D & M Holdings Inc., 297 F. Supp. 3d 501, 523 (D.
`Del. 2017) (denying a motion to strike an expert’s revised priority date opinion).
`For the foregoing reasons, Arendi respectfully requests that Defendants’ motion be denied.
`Respectfully submitted,
`/s/ Eve H. Ormerod
`Eve H. Ormerod (#5369)
`Enclosures
`cc:
`Clerk of Court (via CM/ECF)
`
`All Counsel of Record (via CM/ECF)
`
`
`

`

`Case 1:13-cv-00920-LPS Document 218 Filed 12/07/20 Page 9 of 9 PageID #: 6991
`
`CERTIFCATE OF SERVICE
`I, Eve H. Ormerod, hereby certify that on November 30, 2020, true and correct copies of
`
`
`
`the foregoing document were served upon the following counsel via email:
`
`David E. Moore
`Bindu A. Palapura
`Stephanie E. O’Byrne
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Kenneth L. Dorsney
`MORRIS JAMES LLP
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`kdorsney@morrisjames.com
`
`
`Jack B. Blumenfeld
`Rodger D. Smith, II
`Jeremy A. Tigan
`Anthony Raucci
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`1201 North Market Street
`Wilmington, DE 19899
`jblumenfeld@mnat.com
`rsmith@mnat.com
`jtigan@mnat.com
`araucci@mnat.com
`
`Jeremy D. Anderson
`FISH & RICHARDSON, P.C.
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`janderson@fr.com
`Brian A. Biggs
`Erin E. Larson
`DLA PIPER LLP (US)
`1201 North Market Street, Suite 2100
`Wilmington, DE 19801-1147
`brian.biggs@dlapiper.com
`erin.larson@dlapiper.com
`
`
`
`
`
`/s/ Eve H. Ormerod
`Eve H. Ormerod (No. 5369)
`
`
`
`