Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 1 of 26 PageID #: 9717
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`LG ELECTRONICS INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`Defendants.
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`Defendants.
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`Defendants.
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
`Defendants.
`
`C.A. No. 12-cv-01595-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`C.A. No. 12-cv-01596-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`C.A. No. 12-cv-1597-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`C.A. No. 12-cv-1601-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`C.A. No. 12-cv-1602-LPS
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 2 of 26 PageID #: 9718
`
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`GOOGLE LLC,
`Defendant.
`ARENDI S.A.R.L.,
`Plaintiff,
`
`v.
`OATH HOLDINGS INC., and
`OATH INC.,
`
`Defendants.
`
`C.A. No. 13-cv-0919-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`C.A. No. 13-cv-0920-LPS
`
`JURY TRIAL DEMANDED
`PUBLIC VERSION
`
`DEFENDANTS’ MEMORANDUM OF LAW IN SUPPORT OF
`THEIR MOTION TO EXCLUDE OPINIONS AND TESTIMONY OF
`PLAINTIFF’S EXPERT DR. M. LAURENTIUS MARAIS UNDER FED. R. EVID. 7021
`
`1 Defendants have filed an identical Motion to Exclude Opinions and Testimony of Dr. M.
`Laurentius Marais Under Fed. R. Evid 702 in each of their respective cases.
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 3 of 26 PageID #: 9719
`
`Attorneys for LG Defendants
`LG Electronics Inc.,
`LG Electronics U.S.A., Inc., and
`LG Electronics Mobilecomm U.S.A., Inc.
`
`Jeremy D. Anderson (No. 4515)
`FISH & RICHARDSON P.C.
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19899
`Telephone: (302) 652-5070
`Facsimile: (302) 652-0607
`Email: janderson@fr.com
`
`Steven R. Katz
`Jacob Pecht
`Eda Stark
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`Telephone: (617) 542-5070
`Email: katz@fr.com; pecht@fr.com;
`stark@fr.com
`
`R. Andrew Schwentker
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW, Suite 1000
`Washington, D.C. 20024
`Telephone: (202) 783-5070
`Email: schwentker@fr.com
`
`
`
`
`
`
`
`
`Attorneys for Defendant Apple Inc.
`
`
`Brian A. Biggs (No. 5591)
`Erin E. Larson (No. 6616)
`DLA PIPER LLP (US)
`1201 North Market Street, Suite 2100
`Wilmington, DE 19801
`Telephone: (302) 468-5700
`Facsimile: (302) 394-2341
`brian.biggs@us.dlapiper.com
`erin.larson@us.dlapiper.com
`
`Mark D. Fowler
`Christine K. Corbett
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2215
`Telephone: (650) 833-2000
`Facsimile: (650) 833-2001
`mark.fowler@us.dlapiper.com
`christine.corbett@us.dlapiper.com
`
`Robert C. Williams
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Telephone: (619) 699-2700
`Facsimile: (619) 699-2701
`robert.williams@us.dlapiper.com
`
`
`
`
`
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 4 of 26 PageID #: 9720
`
`Attorneys for Defendants
`BlackBerry Corporation and BlackBerry LTD.
`
`
`Kenneth L. Dorsney (No. 3726)
`MORRIS JAMES LLP
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`Telephone: (302) 888-6800
`kdorsney@morrisjames.com
`
`OF COUNSEL:
`Brian C. Riopelle
`David E. Finkelson
`MCGUIRE WOODS LLP
`One James Center
`901 E. Cary Street
`Richmond, VA 23219
`Telephone: (804) 775-1000
`briopelle@mcguirewoods.com
`dfinkelson@mcguirewoods.com
`
`Jason W. Cook
`MCGUIRE WOODS LLP
`2000 McKinney Avenue, Suite 1400
`Dallas, TX 75201
`Telephone: (214) 932-6400
`jcook@mcguirewoods.com
`
`
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc., and Google
`Inc.
`
`David E. Moore (No. 3983)
`Bindu A. Palapura (No. 5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Telephone: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Robert W. Unikel
`Michelle Marek Figueiredo
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 449-6000
`
`Robert R. Laurenzi
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`
`
`
`
`
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 5 of 26 PageID #: 9721
`
`Attorneys for Defendants
`Attorneys for Defendants
`Oath Holdings Inc. and Oath Inc.
`Sony Mobile Communications (USA) Inc. f/k/a
`Sony Ericsson Mobile Communications (USA)
`
`Inc., Sony Corporation, and Sony Corporation of
`America
`
`Rodger D. Smith, II (No. 3778)
`MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP
`1201 N. Market Street
`Wilmington, DE 19801
`Telephone: (302) 658-9200
`rsmith@mnat.com
`
`OF COUNSEL:
`Jeffri A. Kaminski
`Justin Pierce
`Calvin R. Nelson
`Neha Bhat
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`(202) 344-4000
`
`Jack B. Blumenfeld (No. 1014)
`Brian P. Egan (No. 6227)
`Anthony D. Raucci (No. 5948)
`MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP
`1201 North Market Street
`Wilmington, DE 19801
`Telephone: (302) 658-9200
`jblumenfeld@mnat.com
`began@mnat.com
`araucci@mnat.com
`
`OF COUNSEL:
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`Jeffri A. Kaminski
`Calvin R. Nelson
`Neha Bhat
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`(202) 344-4000
`
`
`
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 6 of 26 PageID #: 9722
`
`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Page(s)
`
`NATURE OF THE PROCEEDINGS ................................................................................. 1 
`
`SUMMARY OF THE ARGUMENT ................................................................................. 1 
`
`III. 
`
`STATEMENT OF FACTS ................................................................................................. 2 
`
`A. 
`
`B. 
`
`C. 
`
`Arendi Sought a Survey that Would Reveal the Alleged Value of Arendi’s Claimed
`Invention to Consumers .......................................................................................... 2 
`
`The Survey Only Asked Consumers About a Subset of the Claim Limitations ..... 4 
`
`Dr. Marais Admitted at Deposition that the “Patented Ability” Described in the
`Survey Was Not Coextensive with the Asserted Claims of the Arendi Patent ....... 7 
`
`IV. 
`
`V. 
`
`LEGAL STANDARD ......................................................................................................... 8 
`
`ARGUMENT ...................................................................................................................... 8 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Dr. Marais’ Ultimate Opinion Is Admittedly Not Supported by the Survey .......... 8 
`
`The Alleged “Patented Ability” Described in the Survey Is Not a Proxy for the
`Claimed Invention ................................................................................................. 10 
`
`Dr. Marais’ Opinions Concerning His Survey Should Be Excluded Because They
`Are Both Misleading and Highly Prejudicial ........................................................ 11 
`
`Dr. Marais’ Opinions Do Not Address BlackBerry, BlackBerry Products,
`BlackBerry Customers, or BlackBerry Operating Systems .................................. 12 
`
`VI. 
`
`CONCLUSION ................................................................................................................. 13 
`
`
`
`
`
`i
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 7 of 26 PageID #: 9723
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Daubert v. Merrell Dow Pharmaceuticals, Inc.,
`509 U.S. 579 (1993) .............................................................................................................8, 11
`
`Fractus, S.A. v. Samsung Elecs. Co. LTD.,
`No. 6:09-CV-203-LED-JDL (E.D. Tex. Apr. 29, 2011) ..............................................10, 11, 12
`
`General Elec. Co. v. Joiner,
`522 U.S. 136 (1997) ...................................................................................................................8
`
`Kumho Tire Co., LTD. v. Carmichael,
`526 U.S. 137 (1999) ...................................................................................................................8
`
`Micro Chem., Inc. v. Lextron, Inc.,
`317 F.3d 1387 (Fed. Cir. 2003)..................................................................................................8
`
`Parallel Networks Licensing, LLC v. Microsoft Corporation,
`777 F. App’x 489 (Fed. Cir. 2019) ......................................................................................8, 11
`
`Parallel Networks Licensing, LLC v. Microsoft Corporation,
`No. CV 13-2073 (KAJ) (D. Del. Feb. 22, 2017) .....................................................................10
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009)................................................................................................11
`
`Other Authorities
`
`Fed. R. Evid. 702 .........................................................................................................................1, 7
`
`
`
`ii
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 8 of 26 PageID #: 9724
`
`Defendants LG Electronics Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`Mobilecomm U.S.A., Inc. (collectively, “LG”), Apple Inc. (“Apple”), Google, LLC (“Google”),
`
`Motorola Mobility LLC (“Motorola”), Sony Mobile Communications (USA) Inc. (“Sony”), Oath
`
`Holdings, Inc. (“Oath”), and BlackBerry Limited and BlackBerry Corporation (collectively,
`
`“BlackBerry”) (collectively, “Defendants”) respectfully move to exclude the opinions of Plaintiff
`
`Arendi S.A.R.L.’s (“Arendi’s”) survey expert Dr. M. Laurentius Marais under Fed. R. Evid. 702.
`
`I.
`
`NATURE OF THE PROCEEDINGS
`
`Arendi alleges that Defendants infringe U.S. Patent No. 7,917,843 (“the ’843 patent”). In
`
`this litigation, Arendi is relying on a consumer survey (the “Survey”) in support of its damages
`
`case and validity rebuttal. The Survey was conducted by Dr. M. Laurentius Marais and Dr.
`
`William E. Wecker. Since submitting the survey expert report, Dr. Wecker stepped away from the
`
`case, and Dr. Marais provided the survey reply report and was then deposed on the subject of the
`
`Survey. Dr. Marais was deposed first by the Defendants in a “common” deposition on January 18,
`
`and was later deposed individually by Apple on January 18, 2021, Google, Motorola, and
`
`BlackBerry on January 19, 2021, Sony and Oath on January 22, 2021, and LG on January 27,
`
`2021.
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`The testimony of Dr. Marais should be excluded because the opinions he forms do not—
`
`and cannot—flow from the actual Survey conducted. Dr. Marais admitted at his “common”
`
`deposition that the Survey did not ask consumers about the entirety of the claimed invention, but
`
`instead asked consumers about how much they would pay for certain consumer facing
`
`functionality/appearance (which is only a subset of the limitations of the claims). The subset of
`
`limitations actually tested concerns a combination to which Arendi holds no rights, and the survey
`
`results therefore do not aid the jury in assessing any alleged value of what Arendi asserts to be its
`
`1
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 9 of 26 PageID #: 9725
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`claimed invention. Dr. Marais further admitted that he could not construct a survey to measure
`
`how much consumers valued the claimed invention because the claims had limitations that are
`
`“under the hood” and thus not consumer facing.
`
`Dr. Marais admitted that the claimed invention contained limitations whose presence
`
`cannot be discerned by consumers using a smartphone, and therefore Dr. Marais simply ignored
`
`those “under the hood” features and asked only about the features a consumer could see. The
`
`fundamental problem with Dr. Marais’ approach is that the tested combination of features may be
`
`implemented with or without Arendi’s patent. Thus, even assuming the Survey could accurately
`
`measure the value of the tested features, the Survey cannot shed light on the value of the claimed
`
`combination of features. Dr. Marais cannot and did not even allege that there is a correlation
`
`between the (i) alleged value of the features tested and (ii) the value of the claimed invention,
`
`which is considerably narrower in scope and which includes all the “under the hood” features.
`
`Because there is no such correlation, Dr. Marais’ expected testimony about the value of the
`
`claimed invention is baseless and unsupported by the Survey. Moreover, any testimony
`
`concerning the Survey would needlessly confuse rather than aid the jury, and would be highly
`
`misleading and unduly prejudicial.
`
`III.
`
`STATEMENT OF FACTS
`A.
`
`Arendi Sought a Survey that Would Reveal the Alleged Value of Arendi’s
`Claimed Invention to Consumers
`
`Counsel for Arendi asked Dr. Marais and Dr. Wecker to assess the “importance of the
`
`[alleged] patented ability . . . to purchasers of Apple iPhones [and] Defendant Android
`
`2
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 10 of 26 PageID #: 9726
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`Smartphones[,]” and in particular, “[t]he overall average valuation of the patented ability among
`
`smartphone purchasers.” [Ex. A (Marais Opening Survey Expert Report (LG)) at ¶¶ 9, 11.]2
`
`In response, Drs. Marais and Wecker constructed a series of questions purportedly
`
`designed to derive the estimated value of the ’843 patent to consumers of Defendant Android
`
`smartphones and Apple iPhones (collectively, “Smartphones”). The Survey first described and
`
`illustrated for consumers what the Survey referred to as the “patented ability” (see infra Section
`
`III.B), and then asked if the Survey respondents were “aware at the time [they] purchased [their]
`
`smartphone that it had [this] ability.” [Ex. A at Attachment F, Chart F.5, Question 4C; Id. at
`
`Attachment F, Chart F.1, Question 4C.]
`
`If the consumers answered yes to this question, then the Survey asked if they would have
`
`purchased their Smartphone if it cost the same but “did not have the ability [incorrectly described
`
`as the “patented ability”].” [Id. at Attachment F, Chart F.6, Question 5A; Id. at Attachment F,
`
`Chart F.2, Question 5A.]3 If the consumers answered that they would not have purchased their
`
`Smartphone at the same price without the alleged “patented ability,” the Survey then asked if the
`
`consumers would have purchased their Smartphone if it cost less in increments of certain dollar
`
`values. [Id. at Attachment F, Chart F.6, Question 5 B-H; Id. at Attachment F, Chart F.2, Question
`
`5 B-H.] If, instead, the consumers answered that they would have purchased their Smartphone at
`
`the same price without the alleged “patented ability,” the Survey then asked if they would be
`
`“willing to pay extra to add [] the ability [incorrectly described as the “patented ability”]” and
`
`“the most [they] would have been willing to pay extra[.]” [Id. at Attachment F, Chart F.7,
`
`Question 6 A-B; Id. at Attachment F, Chart F.3, Question 6 A-B.]
`
`
`
`2 All “Ex. _” references are to the Declaration of Jeremy D. Anderson submitted herewith.
`3 Emphasis in original throughout unless otherwise indicated.
`
`3
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 11 of 26 PageID #: 9727
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`Based on the results of the Survey, Drs. Marais and Wecker concluded that the estimate of
`
`“[t]he average valuation to Defendant Android Smartphone [and Apple iPhone] purchasers of the
`
`[alleged] patented ability” was $12.61 and $9.08 respectively. [Ex. A at Table 5; Id. at Attachment
`
`F, Chart F.8; Id. at Attachment F, Chart F.4.] Dr. Marais and Dr. Wecker “underst[ood] that
`
`[Arendi’s] economics expert, Mr. Roy Weinstein, will use [their] estimates for his calculation of
`
`the value associated with the [alleged] patented ability.” [Id. at ¶ 32.]
`
`With regard to the Blackberry Action specifically, Drs. Marais and Wecker failed to
`
`include questions or analysis in their report referring to BlackBerry, any BlackBerry phones or
`
`devices, any BlackBerry customers, or any BlackBerry operating systems. [See generally Ex. A.]
`
`B.
`
`The Survey Only Asked Consumers About a Subset of the Claim Limitations
`
`Claim 14 of the ’843 patent is recited here. Limitations arguably described in the Survey
`
`questions are left in black.5 Limitations that are “under the hood” and that were left out of the
`
`Survey are presented in strike-out and in red font:
`
`
`
`
`
`A computer-implemented method for finding data related to the contents of a
`document using a first computer program running on a computer, the
`method comprising:
`displaying the document electronically using the first computer program;
`while the document is being displayed, analyzing, in a computer process, first
`information from the document to determine if the first information is at
`least one of a plurality of types of information that can be searched for in
`order to find second information related to the first information;
`retrieving the first information;
`providing an input device, configured by the first computer program, that
`allows a user to enter a user command to initiate an operation, the operation
`
`
`
`
`
`
`4 The only other asserted independent claim 23 is directed to a non-transitory computer
`readable medium and recites the same limitations as asserted independent claim 1.
`5 Defendants do not necessarily concede that the limitations in black are present in the accused
`products. However, solely for purposes of the present motion, Defendants accept as true Arendi’s
`infringement allegations with respect to these limitations, and that the Survey accurately described
`these limitations.
`
`4
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 12 of 26 PageID #: 9728
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`comprising (i) performing a search using at least part of the first information
`as a search term in order to find the second information, of a specific type
`or types, associated with the search term in an information source external
`to the document, wherein the specific type or types of second information
`is dependent at least in part on the type or types of the first information, and
`(ii) performing an action using at least part of the second information;
`in consequence of receipt by the first computer program of the user command
`from the input device, causing a search for the search term in the
`information source, using a second computer program, in order to find
`second information related to the search term; and
`if searching finds any second information related to the search term,
`performing the action using at least part of the second information, wherein
`the action is of a type depending at least in part on the type or types of the
`first information.
`
`Instead of asking consumers about Arendi’s claimed invention, the Survey described and
`
`illustrated the alleged “patented ability” only with respect to the consumer facing aspects, and did
`
`not attempt to educate the consumers as to features that they could not see. [Ex. B (Marais
`
`Common Deposition), 48:1-12.] The Survey explained and illustrated the alleged “patented
`
`ability” to the consumers as follows (Ex. A at ¶ 10):
`
`The next few questions are about the ability of the new (not used) Android6
`smartphone you purchased most recently to automatically recognize and
`underline in text displayed by certain apps (such as Messages, Gmail,
`Keep Notes, and Calendar) information that could be a meaningful input
`to another app within your smartphone, and to quickly activate the
`relevant function of the other app when you tap on the underlined
`information. For example,
` when this smartphone displays a telephone number [or an email
`address] in a text message, email, note, or calendar entry, it
`automatically underlines that telephone number [or the email
`address], and you can tap on the underlined telephone number to call
`
`
`
`6 The description and illustration of the alleged “patented ability” as allegedly practiced by the
`Defendant Android smartphones and Apple iPhones are almost identical with only a few
`differences. For the Apple iPhone, the description of the alleged “patented ability” further included
`display of a date and a package tracking number, but did not include the display of an email
`address. [Ex. A at ¶ 10.] Similarly the illustration of the “patented ability” for the Apple iPhone
`further included an illustration of the display of a date and package tracking number, but did not
`include display of an email address. Id.
`
`5
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 13 of 26 PageID #: 9729
`
`it [or tap on that underlined email address to create a new email
`addressed to it (and also show a name if listed in your Contacts).; . . .
` when this smartphone displays a street address in a text message,
`email, note, or calendar entry, it automatically underlines the street
`address, and you can tap on that underlined street address to show that
`address on a map.
`
`The description and illustration in the Survey ignore the following “under the hood”
`
`
`
`
`
`
`
`limitations found in the claims:
`
`
`
`
`
`
`
`
`
`
`[while the document is being displayed,] analyzing, in a computer process, first
`information from the document to determine if the first information is at least one of a
`plurality of types of information that can be searched for in order to find second
`information related to the first information;
`retrieving the first information;
`[an input device] configured by the first computer program;
`[using] an information source external to the document, wherein the specific type or
`types of second information is dependent at least in part on the type or types of the first
`information;
`receipt by the first computer program of the user command from the input device; and
`[searching by] using a second computer program.
`
`Thus, the “patented ability” of the survey was not commensurate or coextensive with the
`
`asserted independent claims of the ’843 patent.
`
`6
`
`

`

`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 14 of 26 PageID #: 9730
`
`C.
`
`Dr. Marais Admitted at Deposition that the “Patented Ability” Described in
`the Survey Was Not Coextensive with the Asserted Claims of the Arendi
`Patent
`
`In a line of questioning aimed to elucidate what claim limitations of the ’843 patent, if any,
`
`were addressed by the “patented ability” described in the Survey, Dr. Marais explained that “[the
`
`Survey description] is not about anything happening under the hood [and it’s] not about the []
`
`internal hardware and software mechanics of what makes this work[].” [Ex. B, 47:9-48:12.] Dr.
`
`Marais emphasized that “[the Survey description] is [] explicitly intended to be the effect of
`
`employing the patented ability on the consumer experience.” [Id., 48:10-12.]
`
`Dr. Marais justified not “design[ing] the survey to ask the consumers about what happens
`
`under the hood” by explaining that “something the consumer was wholly unaware of could not be
`
`a matter of importance to the consumer” and that “consumers do not generally know about the
`
`software inside their smartphone that makes features work.” [Id., 48:22-49:7 (emphasis added).]
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`Thus, Dr. Marais expressly acknowledged that consumers do not incrementally value the entirety
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`of the patented invention over the value they assign to the observable, unpatented parts. Dr. Marais
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`rejected that “the particular configuration of software [] or hardware inside the device that makes
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`[the consumer experience] happen is, per se, a potentially important factor to a consumer
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`independently of and in addition to the behavior of the device.” [Id., 49:15-22.] Dr. Marais further
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`acknowledged that “[o]f course there is the invisible inner workings that makes that external
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`manifestation happen.” [Id., 50:14-17.] But he noted that “the survey is directed at consumers’
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`interaction with and view of what you can see and experience happening on the device without
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`inquiring into or needing to inquire into the knowledge of [] the invisible inner workings.” [Id.,
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`50:18-23.]
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`7
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`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 15 of 26 PageID #: 9731
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`Dr. Marais further admitted that “patents for [him] are very dense documents and [he]
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`looked at them for [his] information without attempting to fully interpret what they mean.” [Id.,
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`44:10-13.]
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`IV.
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`LEGAL STANDARD
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`Federal Rule of Evidence 702, as elucidated by Daubert v. Merrell Dow Pharmaceuticals,
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`Inc., 509 U.S. 579, 591-92 (1993), and Kumho Tire Co., LTD. v. Carmichael, 526 U.S. 137 (1999),
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`provides that an expert may give opinion testimony if (1) the opinion is based on sufficient facts
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`or data; (2) the testimony is the product of reliable principles and methods; and (3) the witness has
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`applied the principles and methods reliably to the facts of the case. Micro Chem., Inc. v. Lextron,
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`Inc., 317 F.3d 1387, 1391-92 (Fed. Cir. 2003). The court must act as a “gatekeeper” to exclude
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`expert testimony that “does not result from the application of reliable methodologies or theories to
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`the facts of the case.” Id. at 1391. Arendi bears the burden of showing the admissibility of Dr.
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`Marais’ testimony. Kumho Tire Co., 526 U.S. at 141.
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`Of particular relevance here, the Court should exclude opinions if “there is simply too great
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`an analytical gap between the data and the opinion proffered.” General Elec. Co. v. Joiner, 522
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`U.S. 136, 146 (1997).
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`V.
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`ARGUMENT
`A.
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`Dr. Marais’ Ultimate Opinion Is Admittedly Not Supported by the Survey
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`The Survey and Dr. Marais’ opinions would not assist the jury in valuing the claimed
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`invention of the ’843 patent because the Survey is not adequately tied to the asserted claims. See
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`Parallel Networks Licensing, LLC v. Microsoft Corp., 777 F. App’x 489, 492 (Fed. Cir. 2019)
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`(finding Delaware district court properly excluded survey and expert testimony where the survey
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`1) did not provide enough information to determine whether any respondent performed each step
`
`8
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`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 16 of 26 PageID #: 9732
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`of the claimed methods and 2) contained broad language that did not distinguish between
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`infringing and non-infringing uses).
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`Here, the asserted independent claims have two types of limitations. First, there are
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`limitations that are observable by the consumer (limitations shown in black in Section III.B,
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`supra). For example, “displaying the document” and taking some “action” based on a “user
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`command.” According to Arendi’s infringement allegations (which Defendants accept solely for
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`purposes of this motion), a consumer can see these features when using a Smartphone. Second,
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`the asserted independent claims also have limitations that are “under the hood” and not observable
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`by the consumers. For example, the asserted independent claims require that the search be
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`performed in an “information source external to the document.” The Survey did not mention this
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`limitation or attempt to determine if the consumers cared where the information source was
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`located. As another example, the asserted independent claims require analyzing “while the
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`document is being displayed.” The Survey did not mention when the analysis would take place
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`relative to the display of the document, or ask whether it was important to the consumers to have
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`the text analyzed while the document is being displayed. As a third example, the Survey did not
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`mention that the input device was configured “by the first program,” and it did not ask the
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`consumers whether they cared which component configured the input device.
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`Dr. Marais admitted that the survey would not ask about “under the hood” features
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`specifically because “something the consumer was wholly unaware of could not be a matter of
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`importance to the consumer.” [Ex. B, 48:22-49:1 (emphases added).] Thus by Dr. Marais’s own
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`admission, consumers do not care about the claimed combination (which includes numerous
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`“under the hood” limitations of no interest to consumers).
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`9
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`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 17 of 26 PageID #: 9733
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`An alleged value of the subset of claim limitations actually tested by the Survey—which
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`is undisputedly much broader than the scope of the claims—grossly inflates the value of the claims
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`with all of their limitations. Moreover, as further explained below, Dr. Marais has no basis to use
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`the survey results as a proxy for the value of the claimed combination. See Parallel Networks
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`Licensing, LLC v. Microsoft Corporation, No. CV 13-2073 (KAJ), 2017 WL 11557655, at *3 (D.
`
`Del. Feb. 22, 2017), aff’d, 777 F. App’x 489 (Fed. Cir. 2019) (finding survey not relevant to
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`infringement allegations where the survey did not address any limitation of the asserted claims,
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`and stating that “to be admissible, the survey must, at the very least, be relevant”).
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`B.
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`The Alleged “Patented Ability” Described in the Survey Is Not a Proxy for the
`Claimed Invention
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`Dr. Marais admitted that the Survey did not test the entire claimed invention, but only the
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`consumer facing limitations, which he called the “consumer effect” of the claimed invention.
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`Because the tested “consumer effect” may be created with or without the claimed invention, Dr.
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`Marais could not reasonably conclude that the value of the “consumer effect” may be assumed to
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`be the value of the invention. See Fractus, S.A. v. Samsung Elecs. Co. LTD., No. 6:09-CV-203-
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`LED-JDL, 2011 WL 7563820, at *1 (E.D. Tex. Apr. 29, 2011) (excluding testimony of survey
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`experts where the survey was intended to determine the relative importance to consumers of
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`internal antennas in cell phones, but where plaintiff conceded that the asserted patents did not
`
`cover all such internal antennas).
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`For example, the “consumer effect” may be provided by an “information source” separate
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`from the document, as claimed, or it could be provided by an “information source” tied to the
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`document, which is unclaimed. As another example, the “consumer effect” may be provided by
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`an “input device configured by the first program” or alternatively it may be provided by an input
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`device configured by a third program, which would be unclaimed. Likewise with the analyzing
`
`10
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`Case 1:13-cv-00920-LPS Document 267 Filed 03/12/21 Page 18 of 26 PageID #: 9734
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`step: a document may be analyzed while it is being displayed, as claimed, or it could be analyzed
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`at a time when it is not being displayed, which would be outside the asserted claims. The
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`description provided to consumers in the Survey would apply to any of these options. Because the
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`“patented ability” (the term used in the Survey) or the “consumer effect” (the term used by Dr.
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`Marais at his deposition) can be provided in numerous non-infringing ways, its value is not a
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`reliable proxy for the value of the ’843 patent.
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`To survive Daubert, Arendi would have to show, at a minimum, that the claimed invention
`
`including all the “under the hood” limitations was the only way to produce the user-facing features
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`tested in the Survey. See Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1326 (Fed. Cir.
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`2009) (consumer survey appropriate if survey tests a use that necessarily infringes); cf. Parallel
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`Networks Licensing, 777 F. App’x at 493 (affirming Delaware district court’s exclusion of survey
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`expert testimony where “there [was] no evidence that [survey] respondents used [the accused
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`product] in a manner that necessarily infringe[d]”). Arendi cannot make any such showing, and
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`therefore Dr. Marais ultimate conclusions are wholly unsupported by his Survey.
`
`C.
`
`Dr. Marais’ Opinions Concerning His Survey Should Be Excluded Because
`They Are Both Misleading and Highly Prejudicial
`
`Even assuming the Survey was conducted properly (something which is disputed, but
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`which is not a basis for this motion), the Survey a