Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 1 of 16 PageID #: 46591
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ARENDI S.A.R.L.,
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`Plaintiff,
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` v.
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`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
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`Defendant.
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
` v.
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`GOOGLE LLC,
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`C.A. No. 12-1601-LPS
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`Original Filed: May 4, 2021
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`Public Version Filed: May 11, 2021
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`C.A. No. 13-919-LPS
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`Original Filed: May 4, 2021
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`Defendant.
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`Public Version Filed: May 11, 2021
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`PLAINTIFF’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO EXCLUDE IN PART
`THE EXPERT REPORTS AND TESTIMONY OF EDWARD FOX
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`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
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`Attorneys for Plaintiff Arendi S.A.R.L.
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`Of Counsel:
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Ibituroko-Emi Lawson
`Burton DeWitt
`Robert Travis Korman
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 2 of 16 PageID #: 46592
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`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkorman@susmangodfrey.com
`badimora@susmangodfrey.com
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`Kalpana Srinivasan
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
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`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
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`Dated: May 4, 2021
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 3 of 16 PageID #: 46593
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`Argument ........................................................................................................................................ 1
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`TABLE OF CONTENTS
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`A. Arendi timely filed its Daubert motion against Dr. Fox. ..................................................... 1
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`B. Defendants’ partial disclaimer of Dr. Fox’s multi-reference combinations reflects his
`failure to identify them and the need to grant Arendi’s motion. ................................................. 3
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`C. Dr. Fox failed to disclose that CyberDesk provided a basis for his obviousness opinions,
`let alone explain his rationale. ..................................................................................................... 4
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`D. Dr. Fox’s opinions are unreliable and inadmissible under Rule 702. .................................. 5
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`1. Dr. Fox does not explain how prior art discloses the claims’ limitations. ...................... 5
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`2. Dr. Fox’s reply report and testimony do not clarify his reasoning. ................................ 7
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`3. Dr. Fox does not explain what teachings would be combined or why. .......................... 8
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`E. Dr. Fox ignores claim elements when analyzing Pandit-based combinations. .................... 9
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`Conclusion .................................................................................................................................... 10
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 4 of 16 PageID #: 46594
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Advanced Fiber Techs. Tr. v. J & L Fiber Servs., Inc.,
`No. 07-1191 LEK/DRH, 2010 WL 1930569 (N.D.N.Y. May 11, 2010) ..................................5
`
`Avocent Redmond Corp. v. Rose Elecs.,
`No. C06-1711RSL, 2013 WL 12121578 (W.D. Wash. Mar. 8, 2013) ......................................2
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`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp 2d 196, 213-15 (E.D.N.Y. 2009) ...........................................................................5
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`Cosmo Techs. Ltd. v. Lupin Ltd.,
`No. 15-669-LPS, 2017 WL 4063983 (D. Del. Sept. 14, 2017) .................................................1
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`Elder v. Tanner,
`205 F.R.D. 190 (E.D. Tex. 2001) .......................................................................................1, 2, 6
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`Magnetar Techs. Corp. v. Six Flags Theme Parks Inc.,
`No. 07-127-LPS-MPT, 2014 WL 529983 (D. Del. Feb. 7, 2014) .........................................1, 6
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`McKesson Automation, Inc. v. Swisslog Holding AG,
`No. 06-28-SLR-LPS, 2009 WL 3648455 (D. Del. Oct. 30, 2009) ............................................9
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`Mettler-Toledo, Inc. v. Fairbanks Scales, Inc.,
`No. 06-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) ...............................................1, 5, 6
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`NetFuel, Inc. v. Cisco Sys., Inc.,
`No. 18-02352-EJD, 2020 WL 1274985 (N.D. Cal. Mar. 17, 2020) ..........................................5
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`Oxford Gene Tech. Ltd. v. Mergen Ltd.,
`345 F. Supp. 2d 431(D. Del. 2004) ............................................................................................2
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`Padillas v. Stork-Gamco, Inc.,
`186 F.3d 412 (3d Cir. 1999).................................................................................................1, 10
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`Protocol Innovations, Inc. v. TCT Mobile, Inc.,
`771 F. App’x 1012 (Fed. Cir. 2019) ..........................................................................................9
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`W.L. Gore & Assocs., Inc. v. C.R. Bard, Inc.,
`No. 11-515-LPS-CJB, 2015 WL 12806484 (D. Del. Sept. 25, 2015) .......................................2
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`White Elec. Servs., Inc. v. Franke Food Serv. Sys., Inc.,
`No. 09-504-CVE-PJC, 2010 WL 3368541 (N.D. Okla. Aug. 24, 2010) ...................................2
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 5 of 16 PageID #: 46595
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`Rules
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`Federal Rule of Civil Procedure 26 .............................................................................................1, 2
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`Federal Rule of Civil Procedure 37 .................................................................................................2
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`Federal Rule of Evidence 702 ..................................................................................................1, 2, 5
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 6 of 16 PageID #: 46596
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`Defendants had seven years to prepare an invalidity report. Yet they complain that
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`requiring their expert to explain his opinions poses an unfair surprise. Dr. Fox does not state, in
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`either prose or claim charts, how prior art discloses claims limitations or how their teachings
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`combine to make the claims obvious. Dr. Fox’s testimony should be excluded.
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`ARGUMENT
`A. Arendi timely filed its Daubert motion against Dr. Fox.
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`Defendants respond by arguing that their alleged conduct violates Rule 26(a)(2) and should
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`have been challenged in that context. Defendants overlook that the same conduct can violate
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`multiple rules, and they cannot elect whether to comply with Rule 26 or Rule 702. They must
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`comply with both.
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`Defendants complain that Arendi does not analyze the Pennypack factors. D.I. 332 at 7.1
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`However, Pennypack applies to a motion to strike, e.g., Cosmo Techs. Ltd. v. Lupin Ltd., No. 15-
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`669-LPS, 2017 WL 4063983, at *1 (D. Del. Sept. 14, 2017). This is a Daubert motion. Daubert
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`requires the proponent of expert testimony, Defendants, to establish its reliability—not its timely
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`disclosure or prejudicial nature. Padillas v. Stork-Gamco, Inc., 186 F.3d 412, 418 (3d Cir. 1999).
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`Their waiver argument ignores cases cited by Arendi that excluded conclusory opinions, like Dr.
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`Fox’s, under Daubert. E.g., Elder v. Tanner, 205 F.R.D. 190, 194 (E.D. Tex. 2001) (excluding
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`expert under Daubert where invalidity report lacked “elaboration or reasoning” and expert made
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`“conclusory statements”); Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., No. 07-127-LPS-
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`MPT, 2014 WL 529983, at *12 (D. Del. Feb. 7, 2014), adopted by 61 F. Supp. 3d 437, 439 (D.
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`Del. 2014) (same due to “conclusory” infringement report); Mettler-Toledo, Inc. v. Fairbanks
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`Scales, Inc., No. 06-97, 2008 WL 11348468, at *4 (E.D. Tex. Oct. 27, 2008) (same where
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`1 All citations reflect docket numbers in the Motorola action.
`1
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`infringement report consisted of conclusory claim charts). Arendi timely filed its Daubert motion.
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`D.I. 13-1, § (3)(g)(2) [p. 9]; D.I. 190, at 3; see also, e.g., D.I. 282 (Defendants’ motion filed same
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`day). That Dr. Fox’s disclosures may also violate Rule 26 does not affect this analysis. See, e.g.,
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`Elder, 205 F.R.D. at 192-94 (excluding “conclusory statements” per Daubert and finding omitted
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`reasoning violated Rule 26); Oxford Gene Tech. Ltd. v. Mergen Ltd., 345 F. Supp. 2d 431, 441(D.
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`Del. 2004) (finding testimony “unreliable under Daubert” and report deficient under Rule 26).
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`Defendants cite no cases that excused violation of Rule 702 because relevant conduct also
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`might have violated Rule 26. Their first authority, W.L. Gore & Associates, Inc. v. C.R. Bard, Inc.,
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`undermines their waiver argument. No. 11-515-LPS-CJB, 2015 WL 12806484, at *4 (D. Del. Sept.
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`25, 2015). In W.L. Gore, the plaintiff challenged expert testimony as inadequately disclosed under
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`Rule 26 and, therefore, also unreliable under Rule 702. Id. at *3. The defendant asserted that the
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`plaintiff had waived its Rule 26 objection by first raising the issue as part of its Daubert motion,
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`filed three months after the close of fact discovery. Id. at *4. The Court rejected the waiver
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`argument and separately analyzed the report’s deficiency under Rule 702. Id. at *3-8. Defendants’
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`second case, Avocent Redmond Corp. v. Rose Electronics, also did not forbid objections under
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`Daubert that might be brought under Rule 26; in fact, the court addressed the merits of the Daubert
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`challenge. No. C06-1711RSL, 2013 WL 12121578, at *2 (W.D. Wash. Mar. 8, 2013). Defendants’
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`final case, White Electrical Services, Inc. v. Franke Food Service Systems, Inc., did not involve a
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`Daubert challenge at all. No. 09-504-CVE-PJC, 2010 WL 3368541 (N.D. Okla. Aug. 24, 2010).
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`Rather, the defendant had moved to strike under Rules 26 and 37. Id. at *1, 3-4; see also W.L.
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`Gore, 2015 WL 12806484, at *4 (declining to adopt White Electrical’s approach to Rule 26
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`waiver). Thus, Defendants put forward no authority that foregoing a Rule 26 challenge waives
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`later Daubert argument.2
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`B. Defendants’ partial disclaimer of Dr. Fox’s multi-reference combinations reflects
`his failure to identify them and the need to grant Arendi’s motion.
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`In a concession to Dr. Fox’s unreliability, Defendants “submit that they will not present
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`any testimony from Dr. Fox related to three-reference combinations.” D.I. 332, at 8-9.3 But they
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`walk back that representation in a footnote. First, they “reserve their rights to present additional
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`combinations, including three-reference combinations, should the Court grant” Arendi’s pending
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`summary judgment motion concerning invalidity. D.I. 332, at 9 n.3; see also D.I. 344, at 36 n.18
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`(confirming same). That assertion is extraordinary. If the Court grants summary judgment against
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`some invalidity arguments, Defendants may not only revive Dr. Fox’s undisclosed obviousness
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`combinations but also “present additional combinations.” Second, Defendants reserve use of
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`“explicit statements of motivations to combine prior art functionalities in the prior art itself (such
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`as those listed in Ex. 1, Ex. U, e.g., at 2-3).” D.I. 332, at 9 n.3. But, Dr. Fox did not disclose his
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`reliance on those “statements” in support of his 33 listed combinations. D.I. 270-1, ¶¶ 185-97.
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`Defendants also have not explained how the “statements’” use differs from a back-door revival of
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`Dr. Fox’s multi-reference combinations. To the extent that the “statements” are not boilerplate
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`untethered to prior art, e.g., D.I. 270-2, Ex. U, at 3 (“[A]pplying the techniques of the prior art to
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`documents would result in a useful and easy application for users.”), they are indistinguishable
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`2 Defendants’ complaint that the parties did not confer until March 4 rings hollow. They raise
`notice in order to themselves surprise Arendi with undisclosed testimony, and they alerted Arendi
`to their own Daubert motions during that same call. Lawson Decl. ¶ 4. They accuse Arendi of
`“tak[ing] advantage” through delay, D.I. 332 at 6; yet, they identify no benefit to moving on
`Daubert on March 5 without also moving to strike Dr. Fox’s reports between his January 15
`deposition and the January 22 close of discovery. They have been on notice of many of Dr. Fox’s
`deficiencies since October 20, 2020. E.g, D.I. 287-1 (Sacerdoti Report), ¶¶ 55-60, 62, 601, 603-
`609, 611.
`3 Dr. Fox testified to combining any number of references. D.I. 270-3, Ex. 5, at 245:13-246:3.
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`from the multi-reference combinations Defendants now ostensibly disclaim, e.g., id. (describing
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`unexplained quotations from U.S. Patent No. 6,026,233 as a “motivation”). Thus, exclusion of Dr.
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`Fox’s unidentified combinations remains necessary.
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`C. Dr. Fox failed to disclose that CyberDesk provided a basis for his obviousness
`opinions, let alone explain his rationale.
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`Defendants assert that Dr. Fox “clearly stated” his intent to advance CyberDesk as a stand-
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`alone obviousness reference. D.I. 332, at 9 n.4. He did not. See D.I. 269, at 14. Section IX of his
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`Opening Report identifies CyberDesk as an anticipatory reference and states the “opinion that the
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`following combination of references invalidate the asserted claims.” D.I. 270-1, ¶ 184; see also id.
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`¶ 186 (listing 33 combinations). It identifies no art that individually renders the claims obvious.
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`The only statement to which Defendants refer is the boilerplate “Obviousness Statement”
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`that appears atop every claim chart. D.I. 332, at 9 n.4. Arendi addressed some of that statement’s
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`deficiencies in its opening brief. D.I. 269, at 15-15. The statement recites that each missing element
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`“is obvious to a POSITA based on the state of the art . . . including . . . each prior art system and/or
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`reference listed in my report,” i.e., in combination with that prior art. D.I. 270-1 (Fox Opening
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`Report), Ex. D, pp. 1-2. Defendants have not explained how that copy-and-pasted statement in
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`Exhibit D communicates that Dr. Fox was relying on CyberDesk as a stand-alone obviousness
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`reference (or why identical text in every other chart does not, e.g., D.I. 270-1, Ex. E, at 1.)
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`Because he did not identify CyberDesk as a free-standing obviousness ground, Dr. Fox
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`failed to explain how CyberDesk rendered obvious the asserted claims. Defendants point to
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`paragraphs 191-195 of Dr. Fox’s Opening Report and paragraphs 33-34 of his Reply Report. D.I.
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`332, at 9 n.4. Paragraphs 191-195 purport to address the reasons that a POSITA “would have been
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`motivated to combine specific prior art references as suggested above.” D.I. 270-1, ¶ 190. Reply
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`paragraphs 33-34 do not state that Dr. Fox was asserting CyberDesk as a stand-alone reference—
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`and identical language appears in sections of the reply addressing references that Dr. Fox does not
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`assert as a free-standing obviousness reference. Compare D.I. 270-3, Ex. 2 (Fox Reply Report), ¶¶
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`33-34 with, e.g., id. ¶¶ 93-94 (Nardi article) or ¶¶ 121-22 (Miller patent).
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`D. Dr. Fox’s opinions are unreliable and inadmissible under Rule 702.
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`1. Dr. Fox does not explain how prior art discloses the claims’ limitations.
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`Defendants point to claim charts as a panacea for imprecision. They are not. Neither the
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`body of Dr. Fox’s reports nor his claim charts provide an “element-by-element analysis” or
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`“detailed comparison” of how prior art discloses each claim. D.I. 332, at 17; see also, e.g., D.I.
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`270-1, ¶134 (referencing charts for such analysis). Rather, the charts comprise unexplained block
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`quotes, figures and citations. Daubert requires the Court to assess reliability, not format. See
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`Mettler-Toledo, Inc., 2008 WL 11348468, at *4 (“The court has nothing against claim charts . . . .
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`However . . . the court is not required to ‘admit opinion evidence that is connected to existing data
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`only by the ipse dixit of the expert.’” (citation omitted)).
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`Defendants’ cases highlight the analysis absent from Dr. Fox’s reports. D.I. 332, at 13. In
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`Advanced Fiber Technologies Trust, the clam charts contained narrative explanations of how prior
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`art disclosed each limitation. E.g., Lawson Decl., Ex. 1, at 18 [of 51]. Figures in the charts were
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`annotated to identify components corresponding to each limitation. E.g., id. (identifying, e.g.,
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`“plurality of openings”); see also Advanced Fiber Techs. Tr. v. J & L Fiber Servs., Inc., No. 07-
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`1191 LEK/DRH, 2010 WL 1930569, at *5 (N.D.N.Y. May 11, 2010) (highlighting charts’
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`“detailed analysis” and “element by element comparisons”). Dr. Fox’s unexplained block quotes
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`and unannotated images provide nothing of the kind. Likewise, the expert in NetFuel, Inc. v. Cisco
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`Systems, Inc. performed an “element-by-element analysis,” and the Court pointed not only to an
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`exemplary narrative description found in the body of the report but also to claim charts that
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`supplemented that analysis. No. 18-02352-EJD, 2020 WL 1274985, at *6 (N.D. Cal. Mar. 17,
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`2020). Defendants have not shown how Dr. Fox advances a comparable analysis. Their final case,
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`CA, Inc. v. Simple.com, Inc., did not even consider Daubert and instead adjudicated a summary
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`judgment motion. 780 F. Supp. 2d 196, 213-15 (E.D.N.Y. 2009).
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`In contrast, the cases cited by Arendi exclude expert testimony when a report, like Dr.
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`Fox’s, jettisons reasoning in favor of rote citations and block quotes. D.I. 269, at 6-9. Defendants
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`contend, “Unlike in Magnetar, Mettler-Toledo, and Elder, Dr. Fox does not point to documents as
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`a whole and place the onus on Arendi to find the potentially relevant portions.” D.I. 332, at 16.
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`First, however, Dr. Fox does point to the entirety of documents. D.I. 270-1, ¶¶ 116-17 (explaining
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`charts provide “exemplary citations” and reserving “right to raise and rely on additional portions”).
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`Second, the problem in those cases was a lack of explanation, not of block quotes. E.g., Mettler-
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`Toledo, Inc., 2008 WL 11348468, at *4 (“Nowhere does he connect the dots between the exhibit
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`or deposition extract he points to and his conclusions.”); Magnetar Techs. Corp., 2014 WL
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`529983, at *12 (faulting lack of “explanation for his reliance on and the relevance of the cited
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`documents”). Defendants assert that Dr. Fox’s report is like one permitted (rather than rejected) in
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`Elder because each has lengthy charts. D.I. 332, at 17. However, Elder noted the “depth of
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`analysis” in the acceptable report and “detailed” charts, which Defendants do not examine. Elder,
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`205 F.R.D. at 194. Dr. Fox’s lengthy charts reflect imprecision—not analysis.
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`Defendants protest that Arendi has not given examples of Dr. Fox’s deficiencies only to
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`then address Arendi’s “first example,” Microsoft Word. D.I. 332, at 15; see also D.I. 269, 9-12.
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`Using CyberDesk and Word as examples, Arendi contended that Dr. Fox’s opinions regarding
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`every other invalidity ground are unreliable. With respect to Microsoft Word, Defendants suggest
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`that if only Arendi had contrasted a screenshot showing, inter alia, no misspelled words and one
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`showing an underlined misspelling, Dr. Fox’s reasoning would become clear. See D.I. 332, at 15.
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`But an unannotated screenshot of an underlined misspelling does not explain how Dr. Fox has
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`concluded that this feature discloses, for example, analyzing “to determine if the first information
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`belongs to one or more of several predefined categories of identifying. . . or contact
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`information . . . that can be searched for.” D.I. 141, at 3. Those images leave Arendi guessing, for
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`example, what Dr. Fox considers the predefined categories and how the first information is
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`searched for.
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`Defendants err in asserting that Dr. Fox’s reports include “enough detail” when
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`“considered together” with Accelerated Examination Support Documents for different Arendi
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`patents. D.I. 332, at 15. First, as Dr. Fox notes, there are no AESDs for the ’843 Patent. D.I. 270-
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`1, ¶ 98. Thus, they do not map any prior art to the asserted claims. They also show that charted
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`limitations were not disclosed by the prior art. E.g., D.I. 333-8, Ex. 7 at 12-18; see also id. at 11
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`(explaining references do not necessarily disclose even mapped limitation). Second, Defendants
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`assert that Dr. Fox “incorporates Arendi’s AESD mappings” into his analysis, citing 16 paragraphs
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`of his report. D.I. 332, at 14. Consulting those paragraphs shows that he does not. E.g., D.I. 270-
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`1, ¶¶ 139, 181. Finally, Daubert requires analysis of Dr. Fox’s methods—not someone else’s. Just
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`because Arendi or its expert has a view of the prior art does not mean that Dr. Fox shares that view.
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`2. Dr. Fox’s reply report and testimony do not clarify his reasoning.
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`Defendants’ argument that Dr. Fox “appropriately relies on multiple examples from prior
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`art” is a red hearing. D.I. 332, at 17-19. Arendi has not asserted that he is limited to identifying
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`one “input device,” for example, per piece of prior art. Rather, Dr. Fox’s scattershot approach
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`suffers at least two shortcomings. First, he refuses to identify which potential examples he relied
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`on and stressed that he offered only nonlimiting examples—to the extent he offered examples at
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`all. See D.I. 269, 5, 12-13 (noting instances thereof). Second, even had he committed to each
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`example, his opinions would remain unreliable because he does not trace alternatives through each
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`limitation. For example, when discussing Word, he writes that the “qualifying plurality of types of
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`information . . . could include, for example,” email addresses, id., ¶ 242, but he fails to identify the
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`operation, search, and action performed using an email address, e.g., id. at ¶¶ 249, 251, 253. His
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`noncommittal, incomplete, gobbledygook treatment of claims does not reflect reliable testimony.
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`3. Dr. Fox does not explain what teachings would be combined or why.
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`Defendants argue that Dr. Fox’s report is reliable because he provides “20 pages” of
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`“motivations to combine.” D.I. 332, at 9-10. (The cited sections run fewer than 6.5 pages. D.I.
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`270-1, ¶¶ 190-97, pp. 85-92.) They put the cart before the horse. Still missing is an explanation of
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`what teachings are being combined. After failing to explain how alleged prior art discloses claim
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`limitations, Dr. Fox provides a list in the form Prior Art A + Prior Art B and directs readers to his
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`barebones claim charts to determine “how these combinations disclose and render obvious the
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`various [claim] elements.” D.I. 270-1, ¶ 186. Combining lists of quotes only compounds his
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`imprecision and lack of explanation with respect to references individually. Dr. Fox does not reveal
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`his method for concluding that the combined reference made the asserted claims obvious.
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`Discussing why a POSITA might be motivated to combine two references does not address
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`that failing, as seen in Defendants’ two examples. D.I. 332, at 10-11. In the first, Dr. Fox writes:
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`[If] in any primary prior art reference . . . the ‘computer program’ that is displaying
`a document is . . . different from the computer program that is performing other
`claimed functionality . . . it would have been obvious . . . 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.
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`D.I. 332, at 10. Dr. Fox neither identifies what features are disclosed in the generic primary
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`reference nor (with the partial exception of Word) what “the teachings” of Chalas, Eudora or Office
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`may be. In the second excerpt, he notes that certain prior art references cite one another. D.I. 332,
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`at 11. That references cite one another does not reveal their teachings or which of their teachings
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`Dr. Fox is combining. Defendants’ two cherry-picked examples are not only insufficient, but they
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`are also amongst the most specific in Dr. Fox’s reports. See, e.g., D.I. 270-3, Ex. 2 (Reply Report),
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`¶ 462 (asserting that a “POSITA would be motivated to combine the various functionalities taught
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`in Selection Recognition Agent with those taught in CyberDesk” without identifying the “various
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`functionalities”); D.I. 270-1, ¶¶ 190, 192. Dr. Fox thus discusses motivations to combine without
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`having first identified what is being combined.4
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`E. Dr. Fox ignores claim elements when analyzing Pandit-based combinations.
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`An obviousness combination must disclose each claim element, e.g., Protocol Innovations,
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`Inc. v. TCT Mobile, Inc., 771 F. App’x 1012, 1016 (Fed. Cir. 2019); yet Defendants assert that Dr.
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`Fox’s decision to ignore at least five limitations goes to weight rather than admissibility. D.I. 332,
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`at 19; see also D.I. 269, at 18-19. The only authority they cite, McKesson Automation, Inc. v.
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`Swisslog Holding AG, says nothing of the kind. No. 06-28-SLR-LPS, 2009 WL 3648455, at *40-
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`41 (D. Del. Oct. 30, 2009) (finding opinion that POSITA “would have known to combine and/or
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`would have been motivated to combine” prior art was “not so conclusory as to require exclusion”).
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`Defendants then try to fix Dr. Fox’s opinions by arguing that he analyzed missing limitations
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`besides “performing a search.” D.I. 332, at 20. Yet, they write in their prior paragraph, “Dr. Fox
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`opined that the only element missing from Pandit is ‘performing a search.’” D.I. 332, at 19. His
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`own words confirm that he considered only this limitation when assessing secondary references.
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`He said so in his opening report. E.g., D.I. 270-1, ¶ 186; see also id. ¶ 95 (claiming Federal Circuit
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`“did not disturb the PTAB’s conclusion that Pandit disclosed all of the remaining elements”). He
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`doubled down in his reply. D.I. 270-3, Ex. 2, ¶ 423. He then testified that “performing a search”
`
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`4 Defendants suggest that, because Dr. Sacerdoti responded, “Arendi can hardly complain” about
`Dr. Fox’s deficiencies. D.I. 332, at 9. Dr. Sacerdoti, however, emphasized the lack of analysis to
`which he could reply. E.g., D.I. 287-1 (Sacerdoti Report), ¶¶ 603-604. He explained generally why
`a POSITA would not have combined listed references but could not address Dr. Fox’s undisclosed
`logic. E.g., id. ¶¶ 734-38. Dr. Sacerdoti’s best efforts do not relieve Dr. Fox of compliance with
`Daubert.
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 15 of 16 PageID #: 46605
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`was the sole element missing from Pandit. D.I. 270-3, Ex. 5 (Fox Dep. Tr.), at 207:4-20; 210:4-
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`22; 215:12-21.
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`Finally, Defendants claim that Dr. Fox rebutted the alleged “flaw” in Arendi’s position that
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`failure to disclose “performing a search” necessarily includes failure to disclose performing that
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`search in the required way or performing the required action with the search results. D.I. 332, at
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`19-20. However, the passages of Dr. Fox’s reply that Defendants splice together miss the point.
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`Id. (quoting D.I. 333-7, Ex. 3, ¶¶ 423, 420). At issue is not whether other missing limitations might
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`be supplied through an obviousness combination but whether Dr. Fox has set forward a reliable
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`basis to conclude that they do so. He has not. The burden is on Dr. Fox and Defendants. Padillas,
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`186 F.3d at 418. They cannot waive their hands and state “to the extent it would be obvious to add
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`a search as an action associated with first information, that would broadly address and undermine
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`Dr. Sacerdoti’s parade of missing elements.” D.I. 332, at 19-20 (quoting D.I. 333-7, Ex. 3, ¶¶
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`420).5 Dr. Fox’s approach is tantamount to asserting that any search necessarily discloses, for
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`example, performing the search “using a second computer program.” That position lacks support.
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`Dr. Fox must consider each limitation to reliably opine that the claims are obvious.
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`CONCLUSION
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`For the foregoing reasons and those articulated in its opening brief, Arendi respectfully
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`requests that the Court grant its Daubert motion against Dr. Fox.
`
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`5 Defendants’ cited “support” for Dr. Fox’s approach does not overcome his decision not to
`consider missing limitations. See D.I. 332 at 19. Whether claim charts list other limitations does
`not show that Dr. Fox considered them in combination with Pandit. The charts, lacking analysis,
`are recycled for other obviousness combinations. Meanwhile, the allegedly “detailed analyses of
`the motivation to combine Pandit with the searching functionality disclosures” to which
`Defendants cite, D.I. 332 at 19 (citing D.I. 333-1, Ex. 1, ¶¶ 184-97, 98-101; D.I. 333-7, Ex. 3 ¶¶
`419-47), do not explain why it would be been obvious to modify Pandit to disclose other missing
`elements, e.g., D.I. 333-1, Ex. 1 ¶ 184 (“[A]t least the CyberDesk System anticipates the asserted
`‘843 Patent claims . . . .”); id. ¶ 185 (“[T]here is no longer a rigid requirement regarding motivation
`to combine.”).
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`Case 1:13-cv-00919-LPS Document 372 Filed 05/11/21 Page 16 of 16 PageID #: 46606
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`SMITH, KATZENSTEIN & JENKINS LLP
`
`/s/ Eve H. Ormerod
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
`
`
`
`
`
`
`Of Counsel:
`
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Ibituroko-Emi Lawson
`Burton DeWitt
`Robert Travis Korman
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkorman@susmangodfrey.com
`badimora@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
`
`Dated: May 4, 2021
`
`
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