Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 1 of 26 PageID #: 35600
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1601-LPS
`
`JURY TRIAL DEMANDED
`
`C.A. No. 13-919-LPS
`
`JURY TRIAL DEMANDED
`
`)))))))))))
`
`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC F/K/A
`MOTOROLA MOBILITY, INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANTS’ BRIEF IN OPPOSITION TO ARENDI’S MOTION TO EXCLUDE IN
`PART THE EXPERT REPORTS AND TESTIMONY OF EDWARD FOX
`
`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
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`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
`sobyrne@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and Google
`Inc.
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 2 of 26 PageID #: 35601
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Ginger Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
`
`Dated: April 6, 2021
`7150872
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 3 of 26 PageID #: 35602
`
`TABLE OF CONTENTS
`
`I. NATURE AND STAGE OF THE PROCEEDINGS .............................................................. 1
`
`II. SUMMARY OF ARGUMENT ............................................................................................... 1
`
`III. STATEMENT OF FACTS ...................................................................................................... 3
`
`IV. LEGAL STANDARDS GOVERNING DAUBERT AND RULE 26 MOTIONS ................. 4
`
`V. ARGUMENT ........................................................................................................................... 5
`
`A. Arendi’s Motion Is Untimely And Improper ................................................................... 5
`
`B. Dr. Fox’s Expert Reports Sufficiently Explain His Reasoning ....................................... 7
`
`1. Dr. Fox properly identified the asserted combinations ............................................... 8
`
`2. Dr. Fox properly explained how and why a person of skill in the art would
`have been motivated to modify each of the identified primary references with
`teachings and features from the identified secondary references ................................ 9
`
`3. Dr. Fox provided an element-by-element analysis of how the prior art discloses
`each asserted claim .................................................................................................... 13
`
`4. Dr. Fox appropriately relies on multiple examples from the prior art ....................... 17
`
`C. Dr. Fox Addresses All Claim Limitations With Respect to the Asserted Pandit
`Obviousness Combinations ............................................................................................ 19
`
`VI. CONCLUSION...................................................................................................................... 20
`
`i
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 4 of 26 PageID #: 35603
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Advanced Fiber Techs. Tr. v. J & L Fiber Servs., Inc.,
`No. 1:07-CV-1191 LEK/DRH, 2010 WL 1930569 (N.D.N.Y. May 11, 2010) ......................13
`
`Avocent Redmond Corp. v. Rose Electronics,
`No. C06-1711RSL, 2013 WL 12121578 (W.D. Wash. Mar. 8, 2013) ......................................6
`
`Bridgestone Sports Co., Ltd. v. Acushnet Co.,
`C.A. No. 05-132 JJF, 2007 WL 521894 (D. Del. Feb. 15, 2007) ..............................................5
`
`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196 (E.D.N.Y. 2009) ............................................................................... 13-14
`
`Daubert v. Merrill Dow Pharm., Inc.,
`509 U.S. 579 (1993) ...................................................................................................................4
`
`Elder v. Tanner,
`205 F.R.D. 190 (E.D. Tex. 2001).............................................................................................17
`
`i4i Ltd. P’ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010)....................................................................................................4
`
`Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc.,
`589 F.3d 1179 (Fed. Cir. 2009)................................................................................................17
`
`Kannankeril v. Terminix Int’l, Inc.,
`128 F.3d 802 (3d Cir. 1997).......................................................................................................4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................................................12
`
`Kumho Tire Co. v. Carmichael,
`526 U.S. 137 (1999) ...................................................................................................................4
`
`McKesson Automation, Inc. v. Swisslog Holding AG,
`C.A. No. 06-28-SLR-LPS, 2009 WL 3648455 (D. Del. Oct. 30, 2009)................13, 17, 19, 20
`
`Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894 (3d Cir. 1977).......................................................................................................7
`
`NetFuel, Inc. v. Cisco Sys.,
`No. 5:18-cv-02352-EJD, 2020 WL 1274985 (N.D. Cal. Mar. 17, 2020) ................................14
`
`ii
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 5 of 26 PageID #: 35604
`
`In re Paoli R.R. Yard PCB Litig.,
`35 F.3d 717 (3d Cir. 1994).........................................................................................................5
`
`STS Software Sys., Ltd. v. Witness Sys., Inc.,
`No. 1:04-CV-2111-RWS, 2008 WL 660325 (N.D. Ga. Mar. 6, 2008) ...................................11
`
`Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd.,
`492 F.3d 1350 (Fed. Cir. 2007)................................................................................................12
`
`Uber Technologies, Inc. v. X One, Inc.,
`957 F. 3d 1334 (Fed. Cir. 2020)...............................................................................................12
`
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016)..................................................................................................12
`
`W.L. Gore & Assocs. v. C.R. Bard, Inc.,
`C.A. No. 11-515-LPS-CJB, 2015 WL 12806484 (D. Del. Sep. 25, 2015) ....................4, 5, 6, 7
`
`White Elec. Servs., Inc. v. Franke Food Serv. Sys., Inc.,
`No. 09-CV-504-CVE-PJC, 2010 WL 3368541 (N.D. Okla. Aug. 24, 2010) ........................ 6-7
`
`ZUP, LLC v. Nash Mfg., Inc.,
`896 F.3d 1365 (Fed. Cir. 2018)................................................................................................12
`
`iii
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 6 of 26 PageID #: 35605
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`Defendants Motorola Mobility LLC (“Motorola”) and Google LLC (“Google”)
`
`respectfully request that the Court deny Plaintiff Arendi S.à.r.l.’s (“Arendi”) Daubert motion to
`
`exclude testimony of Dr. Edward Fox (D.I. 272;1 cited herein as “Mot.”).
`
`I.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`Arendi alleges that Defendants infringe claims 1, 8, 23, and 30 of the ’843 patent. On
`
`August 7, 2020, Defendants served Dr. Fox’s opening invalidity report, which included opinions
`
`that all asserted claims are anticipated and/or obvious. Ex. 1. On October 20, 2020, Arendi served
`
`Dr. Sacerdoti’s rebuttal report. Ex. 2. On December 4, 2020, Defendants served Dr. Fox’s reply
`
`report. Ex. 3. The depositions of Dr. Fox and Dr. Sacerdoti were taken on January 15 and 20, 2021,
`
`respectively. Exs. 4, 5. Expert discovery closed on January 22, 2021. D.I. 210. On March 4, 2021,
`
`six months after receiving Dr. Fox’s opening report and three months after receiving Dr. Fox’s
`
`reply report, Arendi made its first-ever complaint about the sufficiency of Dr. Fox’s expert reports.
`
`Decl. of Robert Unikel, ¶ 7. Arendi filed its motion the next day, on March 5, 2021. D.I. 273.
`
`II.
`
`SUMMARY OF ARGUMENT
`Continuing its practice of litigation by surprise, Arendi now seeks to exclude the majority
`
`of the opinions of Defendants’ invalidity expert, Dr. Fox, based on complaints about Dr. Fox’s
`
`opening report that Arendi never raised (or even hinted at) to Defendants until 24 hours before
`
`Arendi’s motion was filed. Though Arendi was served with Dr. Fox’s opening report on August
`
`7, 2020, Arendi inexplicably and unjustifiably waited more than six months until March 4, 2021–
`
`–more than two months after the close of expert discovery––to first alert Defendants that Arendi
`
`had any complaints about the sufficiency of the disclosures in Dr. Fox’s reports and opinions under
`
`Federal Rule of Civil Procedure 26. Arendi’s untimely complaints, as expressed in the present
`
`motion filed on March 5, 2021, are (1) that Dr. Fox’s reports (all 300+ pages of them, plus exhibits)
`
`1 Citations are to the docket in the Google action unless specifically noted.
`
`

`

`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 7 of 26 PageID #: 35606
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`fail to clearly set forth the rationale and bases for his anticipation and obviousness opinions; and
`
`(2) that Dr. Fox ignores certain claim limitations for obviousness combinations that include the
`
`Pandit reference. But, Arendi’s complaints and motion fail for three fundamental reasons.
`
`First, as a threshold issue, Arendi’s motion to exclude is untimely and waived. Though
`
`Arendi attempts to label its motion as a Daubert challenge––because under the governing
`
`Scheduling Order only Daubert challenges may be brought after the close of expert discovery––
`
`Arendi’s motion is actually an improperly labeled motion to strike or exclude under Rule
`
`26(a)(2)(B)(i), alleging that Dr. Fox failed to provide a “complete statement” of his opinions and
`
`“the basis and reasons for them.” Such a Rule 26 motion needed to be brought prior to January 22,
`
`2021 (the expert discovery cutoff date). Arendi was well-aware of this deadline and the need to
`
`file Rule 26 motions during the expert discovery period––both Defendants and Arendi filed such
`
`motions, seeking to strike various expert testimony that were heard and resolved prior to the close
`
`of expert discovery––but Arendi elected not to file one as to Dr. Fox’s reports. Indeed, as noted at
`
`the outset, during the expert discovery period, Arendi did not even write Defendants a letter or
`
`make a phone call raising any of its current complaints with Dr. Fox’s reports. Had Arendi timely
`
`raised its current complaints, the parties could have met and conferred to discuss them, but Arendi
`
`did nothing to raise its issues until now. Simply titling a motion a “Daubert motion” does not make
`
`it so, and Arendi waived its untimely complaints under Rule 26.
`
`Second, Arendi’s assertion that Dr. Fox fails to set forth the rationale and bases for his
`
`anticipation and obviousness opinions is demonstrably wrong. Not only does Dr. Fox’s opening
`
`report specifically identify and describe the exact references and combinations of references that
`
`he relies on for his opinions, but his report also provides detailed element-by-element claim charts
`
`for each reference (showing the specific passages and disclosures from each reference that, in Dr.
`
`2
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 8 of 26 PageID #: 35607
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`Fox’s view, correspond to each specific element of the asserted claims from U.S. Patent No.
`
`7,917,843 (the “’843 patent”)), and includes more than 20 pages of explanation of why and how a
`
`person of skill the art would have been motivated to combine the teachings of the prior art, in the
`
`specific combinations expressly identified by Dr. Fox. And, Dr. Fox’s reply report––which
`
`Arendi’s motion largely ignores––provides even further detail and analysis related to his
`
`anticipation and obviousness opinions in response to questions and arguments raised in the rebuttal
`
`report of Arendi’s validity expert, Dr. Earl Sacerdoti. Arendi cannot and does not credibly suggest
`
`that it is unaware of the specific prior art references and combinations relied on by Dr. Fox; and
`
`Arendi’s substantive disagreement with Dr. Fox’s invalidity opinions (or his style in presenting
`
`those opinions) does not provide a basis for excluding those opinions from the case.
`
`Third, Arendi’s complaint about Dr. Fox’s identified combinations involving the Pandit
`
`reference makes no sense. Essentially, Arendi asserts that because Dr. Fox found one ’843 patent
`
`claim element to be missing from Pandit (the element requiring “performing a search using at least
`
`part of the first information as a search term”), he should also have found that other claim elements
`
`depending on or referencing the missing search element were absent from Pandit. Setting aside the
`
`fact that Arendi is wrong and conveniently ignores Dr. Fox’s analysis for the allegedly ignored
`
`claim limitations, Arendi’s complaint is one properly addressed through cross-examination of Dr.
`
`Fox at trial, not through blanket exclusion of Dr. Fox’s testimony.
`
`III.
`
`STATEMENT OF FACTS
`The governing Scheduling Order permits only Daubert-type objections to be brought with
`
`dispositive motions. D.I. 16 at 9. All other objections relating to expert reports were due by the
`
`close of expert discovery. The parties were well aware of this deadline. On November 18, 2020,
`
`Motorola filed a motion to strike portions of the report of Arendi’s infringement expert (Moto.
`
`Case, D.I. 204); on November 23, 2020, Defendants filed a motion to strike portions of the report
`
`3
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 9 of 26 PageID #: 35608
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`of Arendi’s validity expert (D.I. 227); on November 25, 2020, Arendi, itself, filed a motion to
`
`strike portions of the report of Motorola’s non-infringement expert (Moto. Case, D.I. 210); and on
`
`December 15, 2020, Defendants filed a motion to strike additional portions of Arendi’s
`
`infringement expert’s reports (D.I. 237). The Court heard oral argument and resolved all of these
`
`timely motions to strike on January 25, 2021. (Moto. Case, D.I. 238, 250-52).
`
`IV.
`
`LEGAL STANDARDS GOVERNING DAUBERT AND RULE 26 MOTIONS
`Under Fed. R. Evid. 702 and Daubert v. Merrill Dow Pharm., Inc., 509 U.S. 579 (1993), a
`
`trial judge is a “gatekeeper” for expert testimony. Kumho Tire Co. v. Carmichael, 526 U.S. 137,
`
`149 (1999). Daubert’s objective “is to ensure the reliability and relevancy of expert testimony”
`
`under Rule 702. Id. at 152. The focus of the “gatekeeping” inquiry “must be solely on principles
`
`and methodology, not on the conclusions that they generate.” Daubert, 509 U.S. at 595; see also
`
`i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 852 (Fed. Cir. 2010) (“When the methodology is
`
`sound, and the evidence relied upon sufficiently related to the case at hand, disputes about the
`
`degree of relevance or accuracy (above this minimum threshold) may go to the testimony’s weight,
`
`but not its admissibility.”). “Vigorous cross-examination, presentation of contrary evidence, and
`
`careful instruction on the burden of proof are the traditional and appropriate means of attacking
`
`shaky but admissible evidence.” Daubert, 509 U.S. at 596. Rule 702 embodies a “liberal policy of
`
`admissibility.” Kannankeril v. Terminix Int’l, Inc., 128 F.3d 802, 806 (3d Cir. 1997).
`
`As explained below, Arendi’s complaints about Dr. Fox’s expert reports are not Daubert
`
`challenges, but instead relate to the sufficiency of the disclosures in those reports under Rule 26.
`
`A motion to exclude under Rule 26 is evaluated using the so-called “Pennypack factors.” W.L.
`
`Gore & Assocs. v. C.R. Bard, Inc., C.A. No. 11-515-LPS-CJB, 2015 WL 12806484, at *4 (D. Del.
`
`Sep. 25, 2015). These factors include “(1) the surprise or prejudice to the moving party; (2) the
`
`ability of the moving party to cure any such prejudice; (3) the extent to which allowing the
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`4
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 10 of 26 PageID #: 35609
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`testimony would disrupt the order and efficiency of trial; (4) bad faith or willfulness in failing to
`
`comply with the court’s order; (5) the explanation for the failure to disclose; and (6) the importance
`
`of the testimony sought to be excluded.” Id. (citing Meyers v. Pennypack Woods Home Ownership
`
`Ass’n, 559 F.2d 894, 904-05 (3d Cir. 1977)). The Third Circuit has cautioned that exclusion should
`
`be reserved for “willful deception or flagrant disregard of a court order by the proponent of the
`
`evidence.” In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 791-92 (3d Cir. 1994) (internal quotation
`
`marks and citations omitted); see also Bridgestone Sports Co., Ltd. v. Acushnet Co., C.A. No. 05-
`
`132 JJF, 2007 WL 521894, at *4 (D. Del. Feb. 15, 2007) (“evidence should be excluded sparingly
`
`and only in circumstances involving litigation conduct that is clearly unprofessional or
`
`inappropriate, and in circumstances creating prejudice to the party against whom the evidence is
`
`offered”). Thus, a moving party is obligated to “build a credible case” for striking testimony under
`
`the Pennypack factors, and failure to do so will “doom” its motion. W.L. Gore, 2015 WL
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`12806484, at *6.
`
`V.
`
`ARGUMENT
`Arendi does not dispute Dr. Fox’s qualifications or the fitness of his testimony. Instead,
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`Arendi moves to exclude Dr. Fox’s testimony as being “unreliable” for two erroneous reasons.
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`First, Arendi broadly argues that Dr. Fox’s expert reports fail to set forth the rationale and bases
`
`for his anticipation and obviousness opinions. Mot. at 6-17. Second, Arendi argues that Dr. Fox
`
`ignores certain claim limitations with respect to obviousness combinations that include the Pandit
`
`reference. Id. at 17-20. Arendi’s motion is wrong and fails for three fundamental reasons.
`
`Arendi’s Motion Is Untimely And Improper
`A.
`As noted, though Arendi styled its motion as a Daubert motion, its motion is, in actuality,
`
`a Rule 26 motion to exclude based on allegedly insufficient disclosures. See W.L. Gore, 2015 WL
`
`12806484, at *4 (although embedded in a Daubert motion, analyzing under Rule 26 a challenge
`
`5
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 11 of 26 PageID #: 35610
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`to the “completeness” of an expert’s disclosures and holding that delay in raising such a challenge
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`until the Daubert stage “seriously undermines” any claim of prejudice); see also, e.g., Avocent
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`Redmond Corp. v. Rose Electronics, No. C06-1711RSL, 2013 WL 12121578, at *2 (W.D. Wash.
`
`Mar. 8, 2013) (declining to resolve Rule 26 expert disclosure dispute in context of a Daubert
`
`motion that, if granted, would “reward[]” moving party for failing to raise dispute during expert
`
`discovery). The governing Scheduling Order required that non-Daubert complaints be raised
`
`during the expert discovery period, which the parties complied with for all other disputes and
`
`motions relating to the expert reports in these matters. The expert discovery cutoff was January
`
`22, 2021, but Arendi did not file the present motion until March 5, 2021, and did not even alert
`
`Defendants to its complaints about Dr. Fox’s reports until March 4, 2021––seven weeks after the
`
`close of expert discovery and more than six months after Arendi received Dr. Fox’s opening report.
`
`Arendi’s failure to raise its complaints prior to the close of expert discovery is not a trivial
`
`matter that can be ignored or sidestepped by mislabeling the filing as a “Daubert motion.” Had
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`Arendi timely raised its purported issues with Dr. Fox’s opening report (e.g., seeking greater clarity
`
`or specificity on the number of combinations, motivations to combine, or claim charts), the parties
`
`could have agreed upon a remedy to those issues, or litigated them. But, Arendi deliberately waited
`
`until months after the close of expert discovery––until the night before dispositive and Daubert
`
`motions were due––to even alert Defendants that it had an issue with Dr. Fox’s reports. Arendi
`
`now attempts to take advantage of its own failure to timely raise its objections––and Defendants’
`
`resulting inability to consider Arendi’s objections during the expert discovery period––by seeking
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`to deprive Defendants, the Court, and the jury of most of Dr. Fox’s invalidity analysis. Arendi
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`waived its complaints concerning Dr. Fox’s reports by failing to raise and move on them prior to
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`the close of expert discovery, and its motion should be denied for this reason alone. See, e.g., White
`
`6
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 12 of 26 PageID #: 35611
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`Elec. Servs., Inc. v. Franke Food Serv. Sys., Inc., No. 09-CV-504-CVE-PJC, 2010 WL 3368541,
`
`at *3 (N.D. Okla. Aug. 24, 2010) (finding that a party had waived any objection to the
`
`completeness of expert materials by waiting to file a Rule 26 motion until more than five months
`
`after the receipt of the materials and after the discovery cutoff period had passed).
`
`Additionally, Arendi’s motion fails to even acknowledge, let alone address, the governing
`
`Pennypack factors, which per se “dooms” its motion. W.L. Gore, 2015 WL 12806484, at *6. For
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`example, Arendi never explains (a) why, under the Pennypack factors, outright exclusion of Dr.
`
`Fox’s testimony is the right result, or (b) whether there was, or is, an opportunity for Defendants
`
`to cure any
`
`issues or prejudice
`
`resulting
`
`from Dr. Fox’s allegedly
`
`insufficient
`
`disclosures. Pennypack, 559 F.2d at 904. Any prejudice Arendi now alleges results from its own
`
`tactical delay in raising its concerns; and exclusion of Dr. Fox’s testimony is far from the right
`
`result.2 Arendi’s motion should be denied for being facially deficient as well as untimely.
`
`Dr. Fox’s Expert Reports Sufficiently Explain His Reasoning
`B.
`Arendi alleges that Dr. Fox’s invalidity expert reports should be struck because they are
`
`“unreliable, failing to set forth his rationale and the bases of his opinions regarding anticipation
`
`and obviousness.” Mot. at 6. Arendi presents four basic complaints: that Dr. Fox’s reports
`
`purportedly (1) do not “identify or explain his thousands of obviousness combinations;” (2) do not
`
`identify how the primary references would be modified or why a person of skill in the art would
`
`be motivated to combine those references with secondary references; (3) do not “explain how prior
`
`art discloses claim limitations;” and (4) are non-committal because they allegedly “offer[] only
`
`2 Other Pennypack factors similarly militate against striking Dr. Fox’s opinions, as allowing the
`testimony would not disrupt the order and efficiency of trial, there is no evidence of bad faith (and
`ample evidence of good faith) on Defendants’ part, and the testimony at issue is indisputably
`important to Defendants’ invalidity defenses. Id. at 904-05.
`
`7
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 13 of 26 PageID #: 35612
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`non-limiting examples” when identifying components in the prior art corresponding to a particular
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`claim limitation. Id. at 6-17. None of these allegations is accurate.
`
`1.
`Dr. Fox properly identified the asserted combinations
`Arendi attempts to use deposition testimony out of context to suggest that it somehow
`
`cannot determine which prior art combinations Dr. Fox is relying on for his obviousness opinions.
`
`Mot. at 3, 6. In reality, Dr. Fox’s opening and reply reports explicitly and unambiguously list 33
`
`two-reference combinations in the format of “primary reference + secondary reference.” Ex. 1,
`
`¶ 186; Ex. 3, ¶¶ 422-508. As explained in Dr. Fox’s opening report, the claim charts associated
`
`with the primary and secondary references also identify tertiary references that could be combined
`
`with the listed two-reference combinations for certain claims and claim elements. Ex. 1, ¶ 186.
`
`Thus, Dr. Fox explained during his deposition that, while all primary and secondary reference
`
`combinations are listed in his opening report, one would have to examine the individual claim
`
`charts to understand the tertiary references that could be combined with the listed two-reference
`
`combinations for certain claims and claim elements. Ex. 4, 44:9-45:20.
`
`In Arendi’s quest for a misleading soundbite (either to improperly limit the scope of Dr.
`
`Fox’s reports, or to conjure a specious argument that it does not understand the asserted
`
`combinations), during Dr. Fox’s deposition, Arendi’s counsel demanded a single cheat-sheet of all
`
`potential three-reference combinations, and balked when Dr. Fox could not point to one in his
`
`reports. Id., 42:5-45:20. But, Dr. Fox found it most practical to include the tertiary reference
`
`combinations directly in the charts. Id., 45:3-20. While Arendi may have preferred a different
`
`format of Dr. Fox’s reports, there is no rule requiring such a format nor is there any rule requiring
`
`a narrowing of combinations in expert invalidity reports. Nonetheless, in an attempt to streamline
`
`the presentation for trial, Defendants submit that they will not present any testimony from Dr. Fox
`
`8
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`

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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 14 of 26 PageID #: 35613
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`related to three-reference combinations.3 Had Arendi alerted Defendants during the expert
`
`discovery period to its complaint about the number of three-reference combinations suggested in
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`Dr. Fox’s charts, Defendants could and would have earlier provided this narrowing clarification
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`and commitment. But, because Arendi did not notify Defendants of its issue, or meaningfully
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`attempt to discuss the issue, until it filed this motion, Defendants had no opportunity before now
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`to consider and address Arendi’s objection. Moreover, Arendi can hardly complain about Dr. Fox’s
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`reliance on the 33 two-reference combinations given that its expert responded directly and
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`substantively to each of those expressly delineated combinations. Ex. 2, ¶¶ 603-813.4
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`2.
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`Dr. Fox properly explained how and why a person of skill in the art
`would have been motivated to modify each of the identified primary
`references with teachings and features from the identified secondary
`references
`Arendi’s assertion that Dr. Fox failed to sufficiently explain his opinions regarding the
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`motivations to combine teachings in his identified obviousness combinations does not hold up to
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`scrutiny. Mot. at 4. In fact, Dr. Fox’s reports included more than 20 pages of detailed explanations
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`3 To be clear, Defendants maintain the ability to use all other aspects of Dr. Fox’s reports to support
`his 33 two-reference combinations, including, but not limited to, the state of the art, admissions in
`the asserted patent of prior art functionalities and motivations to combine, the prosecution history
`of the asserted patent and its family members, common sense, a POSITA’s knowledge and
`understandings, and explicit statements of motivations to combine prior art functionalities in the
`prior art itself (such as those listed in Ex. 1, Ex. U, e.g., at 2-3).
`Defendants also reserve their rights to present additional combinations, including three-
`reference combinations, should the Court grant any part of Arendi’s pending motion for summary
`judgment relating to Defendants’ asserted invalidity references and grounds.
`4 Arendi separately claims surprise that Dr. Fox intends to present the CyberDesk System art under
`a single-reference obviousness theory. (Mot. at 3.) Yet, Dr. Fox’s opening report clearly stated as
`much. Ex. 1, Ex. D (“[CyberDesk] therefore constitutes prior art under . . . 103(a). As shown
`below, CyberDesk anticipates and/or renders obvious claims [all asserted claims] . . . .
`‘Obviousness Statement’ - To the extent that the Judge or Jury finds that CyberDesk does not teach
`an element either expressly or inherently, then the claim element is obvious to a POSITA based
`on the state of the art . . ., as well as the motivations to combine and understandings of a POSITA
`discussed in my Report . . . .”). Dr. Fox articulated several bases for single-reference obviousness
`and the motivation to combine well-known, preexisting functionalities from a single reference. Id.,
`¶¶ 191-195; see also, e.g., Ex. 3, ¶¶ 33-34. Thus, Arendi’s claim of surprise is unsupportable.
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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 15 of 26 PageID #: 35614
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`of, and support for, his opinions regarding motivations to combine. Dr. Fox’s explanations go so
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`far as to detail individual claim elements and address exactly why, if each element could be found
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`absent from an individual primary reference, a POSITA would have understood and been
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`incentivized to incorporate that specific missing element from the teachings or components
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`disclosed in specific secondary references. As just one example (out of the tens of report
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`paragraphs devoted to such element-specific discussions), consider the following:
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`For example, to the extent that in any primary prior art reference identified above the
`“computer program” that is displaying a document is deemed separate or different from the
`computer program that is performing other claimed functionality (e.g., analysis of text to
`identify “first information,” or configuration of the “input device” to receive a user
`command to utilize the identified “first information”), it would have been obvious that one
`design approach is to include the display and other functions as part of a single program,
`in accord with the teachings of Chalas, Eudora, Microsoft Office 97 (specifically use of
`Word macros), etc. In fact, Mr. Hedloy, himself, (a) used existing macro capabilities within
`Microsoft Word 97 to create his Postnummer and OneButton Contact Manager products
`that admittedly embodied the claimed invention, and (b) acknowledged the potential
`similarity of his invention to spell check functionality incorporated directly into Microsoft
`Word. (See, e.g., Hedloy 30(b)(1) Dep. Oct.29, 2019 at 32:4-9; Hedloy 30(b)(1) Dep. Oct.
`30, 2019 at 464:13-23.) . . . Further, there were in 1996-1998, and there remains now,
`essentially two basic approaches for how to implement intelligent agent functionality like
`that disclosed in CyberDesk, Apple Data Detector, LiveDoc, Selection Recognition Agent,
`etc.: (1) as a standalone program/utility that can be invoked and utilized by many
`applications, or (2) as a built-in feature of an individual application. As confirmed in
`references such as the Chalas patent that discusses alternatives and tradeoffs in the “way
`to add new features to an application program” (1:28-29, and more broadly in Background
`of the Invention), the benefits and drawbacks of these two basic options/approaches were
`well understood by persons of skill in the art in 1997-1998. It would have been obvious for
`such a POSITA interested in developing such intelligent agent functionality to explore both
`approaches.
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`Ex. 1, ¶ 191; see also id., ¶¶ 189-90, 192-97 (detailed discussion of motivations to combine as to
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`specific elements); id., ¶¶ 33-34 (detailed obviousness discussion relating to how a POSITA would
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`implement functionalities); id., ¶¶ 422-30 (detailed obviousness analysis of Pandit + CyberDesk);
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`id., ¶¶ 431-508 (detailed obviousness analysis of all two-reference combinations).
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`Case 1:13-cv-00919-LPS Document 336 Filed 04/06/21 Page 16 of 26 PageID #: 35615
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`Dr. Fox’s opening report further provides a description of the state of the art in 1997-1998,
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`which includes key statements made by the patentee (both in the specifications of the asserted
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`patent family and during prosecution) relating to prior art functionalities and pre-existing
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`motivations to combine prior art functionalities. Ex. 1, ¶¶ 102-04, 187, 188. Moreover, in both his
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`opening and reply reports, Dr. Fox explained how many of the prior art publications and patents
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`reference each other, further supporting the motivation to combine prior art functionalities:
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`Notably, Dr. Sacerdoti ignores that the prior art references and sy