Case 1:13-cv-00919-LPS Document 240 Filed 12/17/20 Page 1 of 5 PageID #: 8262
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 12-1601-LPS
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`JURY TRIAL DEMANDED
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`C.A. No. 13-919-LPS
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`JURY TRIAL DEMANDED
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`)))))))))))
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC F/K/A
`MOTOROLA MOBILITY, INC.,
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`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
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`Defendant.
`
`LETTER TO THE HONORABLE LEONARD P. STARK FROM
`DAVID E. MOORE, ESQUIRE
`
`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.
`
`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
`
`PUBLIC VERSION
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`PUBLIC VERSION
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`

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`Case 1:13-cv-00919-LPS Document 240 Filed 12/17/20 Page 2 of 5 PageID #: 8263
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`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: December 15, 2020
`6969228 / 39729
`
`2
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`Public Version Dated: December 17, 2020
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`

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`Case 1:13-cv-00919-LPS Document 240 Filed 12/17/20 Page 3 of 5 PageID #: 8264
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`Dear Chief Judge Stark:
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`Google and Motorola move the Court to strike those portions of Arendi expert Dr. Smedley’s Reports
`Regarding Infringement of U.S. Patent No. 7,917,843 (“the Smedley Reports”), and Second Reports
`Regarding Infringement of U.S. Patent No. 7,917,843 (“the Smedley Replies”)1 that disclose, discuss,
`analyze, or opine on theories of infringement under the doctrine of equivalents (“DOE”). (See Ex. A,
`Smedley Google Report, Ex. B, Smedley Motorola Report, Ex. C Smedley Google Reply, Ex. D, Smedley
`Motorola Reply.) Continuing its alarming pattern of adding new infringement theories nearly a year after
`the close of fact discovery (see Motorola D.I. 205), Arendi again attempts to flout the rules of this Court
`by adding new DOE theories into Dr. Smedley’s expert reports. Arendi failed to properly allege any theory
`of infringement under DOE prior to submission of the Smedley Reports - in its infringement contentions,
`discovery responses and otherwise. Arendi cannot now add such fact intensive theories a year after the
`close of fact discovery. Notably, this is Arendi’s fourth effort to add to expert reports critical theories and
`facts that were not disclosed during fact discovery; the Court already has disallowed one of these efforts
`- Arendi’s effort to add previously unaccused products in the LG case (See C.A. No. 12-1595, D.I. 222),
`and is considering two fully briefed motions to strike as to the other two Arendi efforts. (Motorola D.I.
`205) (Motorola’s motion to strike untimely infringement contentions involving Motorola Apps); (D.I.
`207) (Defendants joint motion to strike Arendi’s untimely identification of a specific alleged invention
`date.) Arendi’s continued gamesmanship should not be tolerated.
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`Arendi Never Properly Pursued Infringement Claims Under the Doctrine of Equivalents
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`In 2013, shortly after this case originally was filed, Arendi served initial claim charts in both the Google
`and Motorola cases. The cases were then stayed for more than four-and-a-half years pending IPR
`proceedings that invalidated multiple claims of the patents-in-suit. When the cases restarted in October
`2018, the Court entered an amended case schedule that required Arendi to serve new disclosures under
`4(a) and 4(c) of the Default Standard for Discovery. (Motorola D.I. 99; Google D.I. 85.) In late 2018 and
`early 2019, Arendi served Supplemental 4(a) Identification of Accused Products, and Amended
`Supplemental 4(a) Identification of Accused Products. (See, e.g., Exhs. H-J.) Later in 2019, Arendi then
`served its 4(c) Supplemental and Amended Claim Charts. (See, e.g., Exhs. K, L.) Throughout the process,
`the parties engaged in extensive back-and-forth regarding the infringement contentions. (See, e.g., Ex. G,
`Mar. 20, 2019 Ltr.) Not one of the above disclosures raised or mentioned any theories under DOE - in
`fact, the words and phrases “doctrine of equivalents”, “equivalent”, “function, way, result”, and
`“insubstantial difference” did not appear a single time in any of Arendi’s disclosures; and those disclosures
`indisputably did not include any analysis or explanation that might be considered part of a DOE assertion.
`(See, e.g., Exhs. H-L.) Further, at no time during the years of fact discovery in this case did Arendi ever
`directly or even implicitly assert infringement under DOE, not in written discovery responses, not in
`deposition testimony, not in amended disclosures or contentions. Quite simply, despite having numerous
`opportunities to do so, at no time from the moment the cases were originally filed in 2013 until the service
`of Arendi’s opening expert reports on infringement in 2020, did Arendi ever provided any notice to Google
`or Motorola that Arendi was pursuing, or might pursue, a theory of infringement related to DOE.
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`For the first time in the case, the Smedley Reports made general, boilerplate reference to infringement
`under DOE: “[t]o the extent that the foregoing evidence does not demonstrate literal infringement of this
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`1 Dr. Smedley submitted separate opening and expert reply reports for the Google and Motorola cases.
`(Ex. A, Opening Smedley Google Report; Ex. B, Opening Smedley Motorola Report; Ex. C, Smedley
`Google Reply; Ex. D, Smedley Motorola Reply.) There is no material difference between the reports in
`the separate cases with respect to this motion. Thus, they will be referred to collectively throughout the
`motion, and will be cited to individually where appropriate.
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`

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`Case 1:13-cv-00919-LPS Document 240 Filed 12/17/20 Page 4 of 5 PageID #: 8265
`
`The Honorable Leonard P. Stark
`December 15, 2020, Page 2
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`element, the evidence demonstrates infringement of this element by the Accused Products under the
`doctrine of equivalents.” (See, e.g., Ex. A, Smedley Google Report, ¶ 132; Ex. B, Smedley Motorola
`Report, ¶ 97, same.) Nowhere do the opening Smedley Reports provide any substantive explanation or
`opinions regarding alleged infringement under DOE, and nowhere in his opening reports does Dr.
`Smedley provide even cursory substantive analysis under the “function-way-result” or “insubstantial
`differences” DOE tests. (See, e.g., Ex. A, Smedley Google Report, ¶¶ 13, 50, 55, 132, 273, 278, 391, 430,
`464, 499; Ex. B, Smedley Motorola Report, ¶¶ 13, 43, 47, 97, 151, 156, 222, 246, 259, 275, 279.) In his
`Rebuttal Reports, Google’s and Motorola’s expert, Dr. Rinard, explicitly and repeatedly noted Dr.
`Smedley’s failure to offer any substantive analysis or opinions on DOE. (See, e.g., Ex. E, Rinard Google
`Rebuttal, ¶¶ 206, 208, 266; Ex. F, Rinard Motorola Rebuttal, ¶¶ 25, 175, 219, 298).
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`In response to the Rinard Rebuttals, the Smedley Replies for the first time offered substantive opinions
`related to DOE. (See, e.g., Ex. C, Smedley Google Reply, ¶¶ 92, 149, 152, 164, 190, 191, 200, 213, 214,
`218, 223, 240, 242, 246, 249, 264, 269.) Tellingly, Arendi styled the Smedley Replies as “Second Expert
`Report[s],”2 presumably in an attempt to distract from Dr. Smedley’s failure to provide any opinions
`related to DOE in the opening Smedley Reports. The Smedley Replies effectively admit that the opening
`Smedley Reports failed to provide opinions related to DOE and attempt to justify that omission by arguing
`that: (1) the opening reports’ literal infringement opinions were somehow sufficient to support the opinion
`that there is infringement under DOE (Ex. C, Smedley Google Reply, ¶ 35; Ex. D, Smedley Motorola
`Reply, ¶ 39); and (2) DOE analyses could not be presented prior to receipt of Dr. Rinard’s non-
`infringement theories (Ex. C, Smedley Google Reply, ¶ 36; Ex. D, Smedley Motorola Reply, ¶ 40.)
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`THE COURT SHOULD STRIKE THE PORTIONS OF THE SMEDLEY REPORTS AND
`SMEDLEY REPLIES THAT DISCUSS THE DOCTRINE OF EQUIVALENTS
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`Neither the rules nor basic fairness permit Arendi to add to its infringement contentions at this late date
`or in this manner. “Infringement contentions are considered to be ‘initial disclosures’ under [Rule] 26(a),”
`and are subject to exclusion under Rule 37(c)(1) if not timely disclosed during fact discovery. See
`Intellectual Ventures I LLC v. AT&T Mobility LLC, C.A. No. 13-1668, 2017 WL 658469, at *1, 6 (D. Del.
`Feb. 14, 2017) (granting defendants’ motion to strike portions of expert’s report that injected new
`infringement theories into case); see also Fed. R. Civ. P. 26(a), 26(e)(1), 37(c)(1). Applying Third Circuit
`law, the Court should strike Dr. Smedley’s late opinions on DOE. 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 excluding portions of the
`Smedley Reports and Smedley Replies: (1) the omission of DOE from Arendi’s 4(a) and 4(c) disclosures
`was important and caused Google and Motorola to shape their defense and discovery efforts around the
`understanding that DOE was not at issue; (2) Google and Motorola were surprised and prejudiced by the
`Smedley Replies’ substantive DOE opinions, given that Arendi never mentioned DOE in its 2019 claim
`charts or during fact discovery (even after numerous requests from Google and Motorola that Arendi
`clarify its infringement contentions and supplement its discovery), and the conclusory DOE “opinions” in
`the opening Smedley Reports were devoid of substance; (3) allowing Arendi to add DOE to its
`infringement contentions now would improperly expand the case after the close of fact discovery, and
`risks derailing the proceedings; (4) the prejudice to Google and Motorola will be cured by striking Dr.
`
`2 The operative case schedule provides for “Reply Expert Reports,” not “Second Expert Reports.” (See
`D.I. 210 at 3, emphasis added.) Because Dr. Rinard simply noted that Dr. Smedley had not presented any
`substantive DOE analyses or opinions in his opening reports, there was nothing from Dr. Rinard
`concerning DOE for Dr. Smedley to “Reply” to.
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`

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`Case 1:13-cv-00919-LPS Document 240 Filed 12/17/20 Page 5 of 5 PageID #: 8266
`
`The Honorable Leonard P. Stark
`December 15, 2020, Page 3
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`Smedley’s opinions involving DOE; and (5) during the parties’ meet and confer, Arendi provided no good
`faith explanation for its untimely disclosure of any infringement theory based on DOE, notwithstanding
`that Arendi was obligated, by rule and by the Court’s orders, to supplement its product disclosures, claim
`charts, and discovery responses to fully apprise Google and Motorola of Arendi’s infringement theories
`in the restarted case. See TQ Delta, LLC v. Adtran, Inc., C.A. No. 14-954, 2019 WL 4346530, at *2 (D.
`Del. Sept. 12, 2019) (granting motion to strike, explaining “[o]pening expert reports are not the appropriate
`time to disclose new infringement allegations”); Finjan Inc. v. Rapid7, Inc., C.A. No. 18-1519, 2020 WL
`5798545, at *3, 4 (D. Del. Sept. 29, 2020) (incomplete contentions precluded plaintiff from relying on
`infringement assertions in opening expert report).
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`Arendi’s introduction of substantive DOE analyses in the Smedley’s Replies - not even in the opening
`Smedley Reports - amplifies the prejudice to Google and Motorola. See Zimmer Surgical, Inc. v. Stryker
`Corp., 365 F. Supp. 3d 466, 502 (D. Del. 2019) (granting motion to strike expert’s opinion regarding DOE
`where the expert “did not allege a doctrine of equivalents theory . . . in his opening report,” and instead,
`after the non-infringement expert “offered opinions of no infringement . . .[,] included doctrine of
`equivalents opinions” in his reply report). As recognized in Zimmer, the prejudice to defendants at this
`stage can only be cured by striking DOE theories because, e.g., if Arendi and Dr. Smedley had timely
`disclosed their theories, Dr. Rinard may have been able to assert different theories of non-infringement.
`Id. (“If Zimmer had timely disclosed this infringement theory, Stryker's expert may have been able to
`assert different theories of non-infringement.”) Indeed, with Dr. Rinard’s deposition in both cases less
`than one week from now, the prejudice is incurable. Accordingly, the Court should strike those portions
`of the Smedley Reports and Replies that disclose, discuss, analyze, or opine on DOE.
`
`Respectfully,
`/s/ David E. Moore
`David E. Moore
`
`DEM:nmt/6969228/39729
`Enclosures
`cc:
`Counsel of Record (via electronic mail)
`
`