Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 1 of 23 PageID #: 13709
`
`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
`
`FILED UNDER SEAL
`
`C.A. No. 12-cv-01596-LPS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`C.A. No. 12-cv-1597-LPS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`C.A. No. 12-cv-1601-LPS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`C.A. No. 12-cv-1602-LPS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 2 of 23 PageID #: 13710
`
`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
`
`FILED UNDER SEAL
`
`C.A. No. 13-cv-0920-LPS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`DEFENDANTS’ REPLY 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 Reply in Support of their Motion to Exclude Opinions and
`Testimony of Dr. M. Laurentius Marais Under Fed. R. Evid 702 in each of their respective cases.
`All citations to the docket are to the docket in Arendi S.A.R.L. v. LG Electronics Inc., No.
`12-cv-1595-LPS.
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 3 of 23 PageID #: 13711
`
`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 310 Filed 05/11/21 Page 4 of 23 PageID #: 13712
`
`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 310 Filed 05/11/21 Page 5 of 23 PageID #: 13713
`
`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 310 Filed 05/11/21 Page 6 of 23 PageID #: 13714
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`Introduction ......................................................................................................................... 1 
`
`Argument ............................................................................................................................ 1 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Arendi Misstates Defendants’ Arguments .............................................................. 1 
`
`Arendi’s Opposition Brief Confirms that the Marias-Wecker Survey Tested the
`Wrong Functionality ............................................................................................... 3 
`
`The Tested “Benefits” Are Not Attributable to the Claimed Invention .................. 4 
`
`Cases Cited By Defendants Are On Point and Cannot Be Distinguished .............. 6 
`
`Exclusion Is Doubly Appropriate Because Arendi Has Stated That It Is No Longer
`Relying on the Survey ............................................................................................. 7 
`
`Dr. Marais’ Ultimate Conclusion Is Inadmissible Because It Is Wholly
`Unsupported by the Survey ..................................................................................... 8 
`
`III. 
`
`Conclusion ........................................................................................................................ 10 
`
`
`
`
`
`
`
`i
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 7 of 23 PageID #: 13715
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Fractus, S.A. v. Samsung Elecs. Co. Ltd.,
`No. 6:09-CV-203-LED-JDL, 2011 WL 7563820 (E.D. Tex. Apr. 29, 2011) ...........................5
`
`GlaxoSmithKline LLC v. Glenmark Pharm. Inc.,
`No. CV 14-877-LPS-CJB, 2017 WL 8948975 (D. Del. May 30, 2017) ...................................9
`
`Hartle v. FirstEnergy Generation Corp.,
`No. 08-1019, 2014 WL 1317702 (W.D. Pa. Mar. 31, 2014) ...............................................9, 10
`
`Microsoft Corp. v. Motorola, Inc.,
`904 F. Supp. 2d 1109 (W.D. Wash. 2012) .................................................................................9
`
`Parallel Networks Licensing, LLC v. Microsoft Corporation,
`777 F. App’x 489 (Fed. Cir. 2019) ............................................................................................7
`
`Visteon Glob. Techs., Inc. v. Garmin Int’l, Inc.
`No. 10-CV-10578, 2016 WL 6123526 (E.D. Mich. Oct. 20, 2016) ..........................................6
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009)..................................................................................................7
`
`
`
`ii
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 8 of 23 PageID #: 13716
`
`I.
`
`Introduction
`
`Dr. Marais’ expert opinions concerning the purported value to consumers of Arendi’s
`
`alleged invention must be excluded because they are based on a flawed methodology. Dr. Marais
`
`constructed a survey that asked consumers about something other than the invention, but he
`
`asserts—without basis—that the survey asked consumers about the invention. Dr. Marais applied
`
`no adjustments whatsoever to convert the survey results to results relevant to the actual claimed
`
`invention of Arendi’s patent. Dr. Marais made no attempt to calculate the incremental value of
`
`Arendi’s claimed invention over and above the non-infringing alternative actually tested in the
`
`Survey.
`
`In its rebuttal, Arendi argues that the Survey tested the “benefits” of the invention.
`
`However, the “benefits” described in the survey do not flow from the invention, but from the tested
`
`non-infringing alternative. Arendi cannot show that the “benefits” can be achieved solely by the
`
`claimed invention. Because the Survey did not test the incremental benefit of the invention over
`
`non-infringing structures, Dr. Marais has no basis to attribute the tested benefits to the claims of
`
`Arendi’s patent.
`
`Because Dr. Marais’ opinions improperly assume that the Survey tested the claimed
`
`invention, but in fact—and as Dr. Marais admitted at deposition—the Survey did not ask
`
`consumers about the claimed invention, Dr. Marais’ opinions are exactly the sort of junk science
`
`that the Daubert gate-keeping function was designed for. Dr. Marias’ opinions and his Survey
`
`serve no purpose other than to potentially and unfairly confuse and mislead the jury.
`
`II.
`
`Argument
`A.
`
`Arendi Misstates Defendants’ Arguments
`
`Dr. Marais’ Survey asks consumers about a non-infringing alternative to the Arendi
`
`invention, rather than the actual claimed invention. Yet, neither Dr. Marais (Arendi’s survey
`
`1
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 9 of 23 PageID #: 13717
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`expert) nor Mr. Weinstein (Arendi’s damages expert) makes any attempt to convert the valuation
`
`of this non-infringing alternative to the valuation of the claimed invention (even assuming such a
`
`conversion were possible). Nor do Arendi’s experts even acknowledge that the Survey asked
`
`consumers about something other than the claimed invention. Dr. Marais’ opinions must be
`
`excluded because he has no basis to assume that the value of the functionality described in the
`
`Survey has any relationship whatsoever to the value of the claimed invention.
`
`Arendi misstates Defendants’ arguments when it asserts that the Defendants: (1) require
`
`that the Survey “must describe each and every element of asserted claims,” D.I. 297 at 1, and
`
`(2) allegedly argue that the Survey “is unreliable2 to the extent it does not ask consumers about a
`
`claim limitation that is not part of the consumer experience.”3 Id. at 5. Defendants propose no
`
`such bright line rules.
`
`A survey might ask about a claimed invention, or about something other than the claimed
`
`invention. If the latter, then the survey must be combined with other information to adjust the
`
`survey valuation to reflect the valuation of an untested claimed invention (if such an adjustment is
`
`possible). That is not what happened here. Arendi asked the Survey respondents about something
`
`other than the invention, and then Dr. Marais simply assumed that the Survey asked about the
`
`
`
`2 Defendants’ survey experts provided rebuttal expert reports opining that the Survey is
`unreliable for a variety of reasons. However, for the purposes of this Daubert motion, the motion
`assumes that the Survey is a reliable indicator of the value of the functionality actually tested—
`which is something other than the claimed invention. See generally D.I. 267.
`3 In footnote 5 of its opposition brief, Arendi accuses the Defendants of mischaracterizing Dr.
`Marais’ testimony, but does not explain how. D.I. 297 at 5. The Defendants believe they
`represented Dr. Marais’ testimony accurately. Arendi also again misrepresents the Defendants’
`position by stating that a survey “must identify each and every patent claim limitation verbatim.”
`Id. This is not the Defendants’ position. See generally D.I. 267.
`
`2
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 10 of 23 PageID #: 13718
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`invention (when it did not). See D.I. 267 at 4-7. Dr. Marais made no attempt to apply any
`
`adjustment to convert the Survey valuation to a valuation relevant to the claimed invention.
`
`A survey may also describe the benefits that necessarily flow from an invention. But here,
`
`the functionality described in the Survey does not necessarily flow from the claimed invention.
`
`Rather, non-infringing alternatives can provide the functionality tested in the Survey and thus the
`
`invention is not needed to achieve the tested functionality. Notably, nowhere in its opposition
`
`brief does Arendi attempt to show that the functionality described in the Survey can only be
`
`achieved by using Arendi’s claimed invention.
`
`B.
`
`Arendi’s Opposition Brief Confirms that the Marias-Wecker Survey
`Tested the Wrong Functionality
`
`The Defendants demonstrated in their opening brief that the Survey simply tested the
`
`wrong functionality, and provided several examples of how the Survey failed to test Arendi’s
`
`claimed invention (see D.I. 267 at 9). The Survey respondents were not asked about critical claim
`
`limitations that substantially narrowed the invention (or about the “benefits” that would be
`
`achieved from those limitations). Thus, the Survey asked respondents about their valuation of
`
`something other than the invention. This alone mandates exclusion, and Arendi offers no rebuttal.
`
`For example, the asserted independent claims require that the search be performed in an
`
`“information source external to the document.” Id. The Survey did not mention this limitation or
`
`attempt to determine if the consumers cared where the information source was located. As another
`
`example, the asserted independent claims require analyzing “while the document is being
`
`displayed.” Id. The Survey did not mention when the analysis would take place relative to the
`
`display of the document, or ask respondents whether it was important to have the text analyzed
`
`while the document is being displayed (or describe any “benefits” of doing so). As a third example,
`
`the Survey did not mention that the input device was configured “by the first program,” and it did
`
`3
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 11 of 23 PageID #: 13719
`
`not ask the consumers whether they cared which component configured the input device (or
`
`describe any “benefits” from a particular configuration arrangement). Id.
`
`Accordingly, even if respondents placed a value on the functionality the Survey asked them
`
`about, there is no evidence that respondents placed any value on the narrow invention actually
`
`claimed in Arendi’s patent. Dr. Marais himself testified that the Survey did not ask about “under
`
`the hood” features specifically because “something the consumer was wholly unaware of could
`
`not be a matter of importance to be [sic] the consumer.” D.I. 269-2, Ex. B, 48:22-49:1 (emphases
`
`added). Thus by Dr. Marais’ own admission, consumers do not care about the claimed
`
`combination (which includes numerous “under the hood” limitations of no interest to consumers).
`
`Thus, there is simply no correlation between any value attributable to the subset of limitation
`
`tested in the survey and the value of the invention as claimed. Indeed, Arendi’s opposition brief
`
`does not argue that the Survey describes the accused functionality actually at issue in these cases,
`
`and even emphasizes that Arendi’s own damages and infringement experts do not rely on the
`
`Survey. D.I. 297 at 3. This only confirms that the Survey does not accurately depict the relevant
`
`functionality and therefore is not reliable.
`
`C.
`
`The Tested “Benefits” Are Not Attributable to the Claimed Invention
`
`Arendi’s opposition brief argues that even though the claimed invention was not tested, the
`
`Survey allegedly “adequately capture[s] the benefits of the claimed invention.” D.I. 297 at 7-8;
`
`see also id. at 10 (“Survey adequately conveys the benefits derived from the invention.”).4 Arendi
`
`also asserts that the “Survey identifies the specific benefits gained from the use of the claimed
`
`
`
`4 Emphasis in original throughout unless otherwise indicated.
`
`4
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 12 of 23 PageID #: 13720
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`invention[.]” Id at 8. There is absolutely no support for these statements, and Arendi makes no
`
`effort to refute the arguments presented by Defendants in their opening brief.
`
`Arendi does not dispute that the tested “benefits” are not attributable to Arendi’s claimed
`
`invention. Thus, Fractus, S.A. v. Samsung Elecs. Co. Ltd., No. 6:09-CV-203-LED-JDL, 2011 WL
`
`7563820 (E.D. Tex. Apr. 29, 2011), is directly on point. There, the Court excluded survey
`
`evidence because, like here, “the surveys [were] not tied to the alleged advantageous technical
`
`characteristics of the patents-in-suit,” and “merely measure[d] the perceived consumer value of
`
`cell phones with any internal antennas.” 2011 WL 7563820 at *1 (emphasis added). Here, like
`
`in Fractus, the tested “benefit” can be achieved without the invention, and instead by using
`
`non-infringing alternatives.
`
`For example, the tested functionality may be provided by a system that uses an
`
`“information source” related to the document (a non-infringing alternative). The tested
`
`functionality may be provided by a system that uses an “input device” configured by something
`
`other than the “first program” (another non-infringing alternative). As yet another example, the
`
`tested functionality may be achieved by a system that analyzes text at times when the text is not
`
`being displayed (another non-infringing alternative). See D.I. 267 at 10, 11.
`
`Dr. Marais, in his deposition, attempted to provide an excuse for his failure to test Arendi’s
`
`claimed invention by testifying that he tested the “consumer effect.” See id. at 7, 10. But because
`
`the tested “consumer effect” may be created with or without the claimed invention by at least the
`
`foregoing non-infringing approaches, Dr. Marais could not reasonably conclude that the value of
`
`the “consumer effect” may be assumed to be the value of the invention. On the contrary, where
`
`the alleged “benefits” are readily achievable by a non-infringing alternative, any value attached to
`
`those benefits is clearly not attributable to the claimed invention. For the Survey to have any
`
`5
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 13 of 23 PageID #: 13721
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`conceivable value to this litigation, it would have had to be structured to test the incremental value
`
`of the claimed invention over and above the non-infringing alternative actually tested.
`
`Arendi argues that “Dr. Marais’ survey opinions will assist the jury in assessing the value
`
`of the invention to consumers.” D.I. 297 at 9. But again, this is a hollow conclusion without
`
`substance or support. The Survey will not assist the jury because the valuation produced by the
`
`Survey reflects (assuming the survey was properly conducted) consumers’ valuation of something
`
`that is not claimed by Arendi and may be achieved using non-infringing alternatives. On the
`
`contrary, if Dr. Marais is allowed to testify, the jury will be misled into believing the Survey
`
`provides the value of the invention rather than the value of non-infringing alternatives.
`
`D.
`
`Cases Cited By Defendants Are On Point and Cannot Be Distinguished
`
`The Defendants pointed to several cases demonstrating that a survey must either describe
`
`the invention or describe the effect that necessarily flows from the invention. In rebuttal, Arendi
`
`criticizes these cases because the surveys were offered as evidence of infringement, and not as
`
`evidence for damages.5 D.I. 297 at 5-8. Arendi does not explain why the rules would be different
`
`depending on whether the survey is used for infringement or damages. Nor does Arendi point to
`
`anything in these cases that supports a different treatment of surveys based on the type of evidence
`
`they are offered for.
`
`
`
`5 Arendi commits the very error it accuses the Defendants of. The survey in Visteon Glob.
`Techs., Inc. v. Garmin Int’l, Inc. No. 10-CV-10578, 2016 WL 6123526 (E.D. Mich. Oct. 20, 2016),
`was offered as evidence of infringement rather than damages. But that is not the relevant
`distinction. There, the survey did not ask about use of the claimed invention, but the Plaintiff’s
`expert did not assume or assert that it did (unlike here). Id. at *4. Instead, the Plaintiff had
`“additional related expert evidence on the issue of such [infringing] use.” Id. The survey was thus
`supplemental evidence offered for no more than what it tested. Here, Dr. Marais presents the
`Survey as testing the claimed invention, when it clearly did not.
`
`6
`
`

`

`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 14 of 23 PageID #: 13722
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`For example, Parallel Networks and VitaMix involved surveys to support an infringement
`
`theory and the Courts held that the tested functionality must necessarily infringe for the Survey to
`
`be presented to the jury. The rationale is that there must be a correlation between the functionality
`
`of the survey and the functionality of the claimed invention. The same would be true when a
`
`survey is used for damages. There must be a correlation between the functionality described in
`
`the survey and the functionality of the claimed invention for the survey to be admissible. See
`
`Parallel Networks Licensing, LLC v. Microsoft Corporation, 777 F. App’x 489, 493 (Fed. Cir.
`
`2019) (affirming the Delaware district court’s exclusion of survey expert testimony because “there
`
`[was] no evidence that [survey] respondents used [the accused product] in a manner that
`
`necessarily infringe[d]”) (emphasis added); see also Vita-Mix Corp. v. Basic Holding, Inc., 581
`
`F.3d 1317, 1326 (Fed. Cir. 2009) (“[Technical expert] testified that if the stir stick was inserted
`
`into the pitcher without stirring while the blender was on, then the accused device would
`
`necessarily infringe. [Survey expert] presented the results of a survey indicating that [technical
`
`expert’s] proffered conditions were present at least a small percentage of the time.”) (emphasis
`
`added).
`
`E.
`
`Exclusion Is Doubly Appropriate Because Arendi Has Stated That It Is
`No Longer Relying on the Survey
`
`The Survey should be excluded at least because Arendi concedes that it serves no purpose
`
`in this case. On the very first page of its opposition brief, Arendi stresses that neither its damages
`
`nor its technical experts rely on the Survey: “Arendi’s damages expert does not rely on the survey
`
`to reach his ultimate conclusions about a reasonable royalty, nor do Arendi’s infringement experts
`
`rely on the survey to reach their ultimate conclusions about infringement.” D.I. 297 at 1. Arendi
`
`repeats this statement on page 3 of its opposition brief: “Mr. Weinstein does not rely on the Survey
`
`results as the basis for his ultimate opinion on a reasonable royalty, and it serves only as a useful
`
`7
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 15 of 23 PageID #: 13723
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`benchmark. Similarly . . . neither [technical expert] relies on the results of the Survey as the basis
`
`for his ultimate opinions on infringement.” Arendi makes similar statements on subsequent pages:
`
`“Arendi’s technical experts do not rely on the Marais-Wecker Survey to prove infringement.” Id.
`
`at 5-6.
`
`Given that none of Arendi’s experts are relying on either the Survey or Dr. Marais’
`
`opinions and testimony, the purpose of the Survey and Dr. Marais’ opinions and testimony is far
`
`from clear. Arendi cannot reconcile its two contradictory statements. On the one hand, Arendi
`
`states that its damages expert is not relying on the Survey to value the invention, and yet, Arendi
`
`states that “[b]y describing the specific benefits of the claimed invention [], Dr. Marais’ survey
`
`opinions will assist the jury in assessing the value of the invention to consumers.” D.I. 297 at 9.
`
`How can the Survey “assist the jury” when it does not assist Arendi’s damages expert? It cannot.
`
`Arendi’s damages expert, Mr. Weinstein, bases his royalty rate on prior Arendi license
`
`agreements. A consumer survey about consumer preferences is not relevant to such an analysis,
`
`and without guidance from Mr. Weinstein, the jury has no basis to consider the Survey.
`
`F.
`
`Dr. Marais’ Ultimate Conclusion Is Inadmissible Because It Is Wholly
`Unsupported by the Survey
`
`Arendi argues that the “Defendants’ gripe boils down to a disagreement over which claims
`
`are expressly described in the survey or the accuracy of language used to describe the benefits of
`
`the claimed invention.” D.I. 297 at 1. Arendi is wrong. The Defendants’ opening brief does not
`
`criticize the choice of language in the Survey. Rather, the opening brief asserts that Dr. Marais
`
`has no basis to assume that the valuation of the tested functionality is the same as the value of the
`
`claimed invention. This is not a question of “fact,” as Arendi argues, but one of methodology.
`
`Dr. Marais provides no methodology to convert the valuation of the features tested in the Survey
`
`to a valuation of the claimed invention.
`
`8
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 16 of 23 PageID #: 13724
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`GlaxoSmithKline LLC
`
`v. Glenmark Pharm.
`
`Inc. does not help Arendi.
`
`No. CV 14-877-LPS-CJB, 2017 WL 8948975 (D. Del. May 30, 2017), report and recommendation
`
`adopted, No. CV 14-877-LPS-CJB, 2017 WL 2536468 (D. Del. June 9, 2017). In
`
`GlaxoSmithKline, the question before the Court was whether the survey adequately explained the
`
`meaning of a claim term. Here, the Defendants are not arguing that the Survey failed to adequately
`
`explain claim terms. On the contrary, the problem with the Survey is that it simply tested the
`
`wrong functionality. Numerous aspects of the claimed invention were not included in the survey
`
`questions. Thus, the debate is not whether the Survey was sufficiently “clear,” “understandable,”
`
`or “adequate.” The question is whether the functionality described reflects the claimed invention
`
`or something else that is not claimed by Arendi’s patent.
`
`Arendi’s reliance on Microsoft Corp. v. Motorola, Inc. fails for a similar reason.
`
`904 F. Supp. 2d 1109 (W.D. Wash. 2012). There, the plaintiff disputed the use of specific and
`
`highly technical terms such as “MBAFF (Macroblock Adaptive Frame/Field)” in the survey
`
`expert’s questionnaire as “incomprehensible” to the survey respondents. Id. at 1120. Unlike
`
`Microsoft, the Defendants’ Daubert challenge here does not turn on the clarity or lack of clarity of
`
`the survey—those issues have been reserved. Instead, the Defendants seek to exclude the Survey
`
`and the survey expert report because—as Dr. Marais admitted at deposition—the Survey does not
`
`test the claimed invention, but only an unpatented subset of the claimed invention (those
`
`limitations that were “consumer facing”).
`
`Finally, Hartle v. FirstEnergy Generation Corp., No. 08-1019, 2014 WL 1317702
`
`(W.D. Pa. Mar. 31, 2014), supports the Defendants’ position. In Hartle, the Court excluded the
`
`survey expert’s opinions because the survey “contained facts that are only relevant” to one set of
`
`claims, but attempted to extrapolate the results to another set of claims. Id. at *6. The Hartle
`
`9
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 17 of 23 PageID #: 13725
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`Court held that “[e]ven if the jury were to find for the plaintiffs . . . , the results of the flawed []
`
`survey would not give the jury a proper basis for determining damages.” Id. On that basis, the
`
`Court concluded that “[t]his is not a mere ‘technical flaw’; it is fatal to the reliability of the survey.”
`
`Id. Here too, the Survey does not give the jury a proper basis for determining damages because
`
`the Marais-Wecker Survey simply tested the wrong functionality.
`
`Presenting Dr. Marais’ opinions and testimony on the value of this unpatented functionality
`
`described in the Survey would not only be highly prejudicial to the Defendants, but also provide
`
`no information to the jury regarding the actual value of Arendi’s much narrower claimed invention.
`
`Because there is no relationship between what the Survey tested and Arendi’s claimed invention,
`
`Dr. Marais’ opinions should be excluded.6
`
`III. Conclusion
`
`For the foregoing reasons, Defendants respectfully request that the Court exclude the
`
`Survey and Dr. Marais’ related opinions and testimony, and preclude Dr. Marais from testifying
`
`at trial. Defendants further request that Arendi’s other experts, including its damages expert Mr.
`
`Weinstein, be precluded from relying on the Survey or on Dr. Marais.
`
`
`
`
`
`6 Defendant BlackBerry does not understand footnote 9 of Arendi’s opposition brief. The
`footnote states that “there is nothing to exclude” “[b]ecause Dr. Marais has offered no opinions
`with respect to BlackBerry.” D.I. 297 at 9. If Arendi is now withdrawing its use of the Survey in
`its case against BlackBerry, then this issue is resolved. If, instead, Arendi intends to rely on the
`Survey in the BlackBerry matter even though “the survey does not include BlackBerry users,” then
`BlackBerry requests that the Court exclude the Survey and Dr. Marais’ related opinions and
`testimony in Arendi’s case against BlackBerry.
`
`10
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 18 of 23 PageID #: 13726
`
`Dated: May 4, 2021
`
`
`
`
`FISH & RICHARDSON P.C.
`
`By:
`
`/s/ Jeremy D. Anderson
`Jeremy D. Anderson (No. 4515)
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19899
`(302) 652-5070
`janderson@fr.com
`
`Steven R. Katz
`Jacob Pecht
`Eda Stark
`One Marina Park Drive
`Boston, MA 02210
`(617) 542-5070
`katz@fr.com; pecht.com;
`stark@fr.com
`
`R. Andrew Schwentker
`1000 Maine Ave SW
`Washington, D.C. 20024
`Telephone (202) 783-5070
`schwentker@fr.com
`
`Attorneys for Defendants
`LG Electronics Inc., LG Electronics USA, Inc., and
`LG Electronics MobileComm U.S.A., Inc.
`
`
`
`11
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 19 of 23 PageID #: 13727
`
`Dated: May 4, 2021
`
`
`
`
`DLA PIPER LLP (US)
`
`
`
`By:
`
`/s/ Brian A. Biggs
`Brian A. Biggs (No. 5591)
`Erin E. Larson (No. 6616)
`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
`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
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Telephone: (619) 699-2700
`Facsimile: (619) 699-2701
`robert.williams@us.dlapiper.com
`
`Attorneys for Defendant Apple Inc.
`
`12
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`Case 1:13-cv-00920-LPS Document 310 Filed 05/11/21 Page 20 of 23 PageID #: 13728
`
`Dated: May 4, 2021
`
`
`
`
`MORRIS JAMES LLP
`
`By:
`
`/s/ Cortlan S. Hitch
`Kenneth L. Dorsney (No. 3726)
`Cortlan S. Hitch (No. 6720)
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`Telephone: (302) 888-6800
`kdorsney@morrisjames.com
`
`OF COUNSEL:
`Brian C. Riope