`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`vs.
`
`
`vs.
`
`Plaintiff,
`
`Defendant.
`
`Plaintiff,
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`Defendant.
`
`
`C.A. No. 12-1601-LPS
`
`
`
`C.A. No. 13-919-LPS
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`)
`)
`)
`)
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`)
`)
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`)
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`)
`
`ARENDI S.A.R.L.,
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`MOTOROLA MOBILITY LLC f/k/a
`MOTOROLA MOBILITY, INC.,
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`
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`ARENDI S.A.R.L.,
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`GOOGLE INC.,
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`PLAINTIFF’S NOTICE OF SUBSEQUENT AUTHORITY
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`
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`In accordance with D. Del. L.R. 7.1.2(b), Plaintiff Arendi S.A.R.L. (“Arendi”) submits
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`this notice of subsequent authority in support of Plaintiff Arendi S.A.R.L.’s Motion for Partial
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`Summary Judgment (C.A. No. 12-1601-LPS, D.I. 277, and C.A. No. 13-919-LPS, D.I. 281).
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`Arendi argued in support of its motion that the inter partes review (“IPR”) estoppel
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`provision of 35 U.S.C. § 315(e)(2) barred Defendants Google Inc. and Motorola Mobility, Inc.
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`(collectively “Defendants”) from raising grounds of invalidity that they reasonably could have
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`raised, but omitted, from their IPR petition. E.g., C.A. No. 12-1601-LPS, D.I. 278 at 7-8; C.A.
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`No. 13-919-LPS, D.I. 282 at 7-8. Arendi argued that, notwithstanding Shaw Industries Group,
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`Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), such grounds were within
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`the scope of IPR estoppel. Id. Defendants did not contest that legal point. Cf. C.A. No. 12-1601-
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`LPS, D.I. 344 (arguing only that estoppel did not apply to grounds included in their petition for
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`which the PTAB declined to institute IPR).
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`Case 1:13-cv-00919-LPS Document 387 Filed 02/11/22 Page 2 of 3 PageID #: 46949
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`Last week, the Federal Circuit issued its opinion in California Institute of Technology v.
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`Broadcom Ltd., No. 2020-2222 (Fed. Cir. Feb. 4, 2022), expressly overruling Shaw. A copy of
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`the opinion is attached hereto as Exhibit A. The Federal Circuit “overrule[d] Shaw and clarif[ied]
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`that estoppel applies not just to claims and grounds asserted in the petition and instituted for
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`consideration by the Board, but to all claims and grounds not in the IPR but which reasonably
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`could have been included in the petition.” Slip Op. at 23; see also id. at 22–23 (“Given the
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`statutory interpretation in [SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018)], any ground that
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`could have been raised in a petition is a ground that could have been reasonably raised ‘during
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`inter partes review.’”). The Federal Circuit thus affirmed the district court’s decision to bar
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`defendants from raising grounds of invalidity because the defendants “were aware of the prior art
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`references that they sought to raise in the district court” at the time of the IPR petition and
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`“reasonably could have been included in the petitions, and thus in the IPR.” Id. at 24.
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`SMITH, KATZENSTEIN & JENKINS LLP
`
`
`/s/ Eve H. Ormerod
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Julie M. O’Dell (No. 6191)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`jodell@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
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`Dated: February 11, 2022
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`Of Counsel:
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`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`(212) 336-8330
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Ibituroko-Emi Lawson
`Robert Travis Korman
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`
`2
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`Case 1:13-cv-00919-LPS Document 387 Filed 02/11/22 Page 3 of 3 PageID #: 46950
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`elawson@susmangodfrey.com
`tkorman@susmangodfrey.com
`badimora@susmangodfrey.com
`
`Kalpana Srinivasan
`SUSMAN GODFREY, LLP
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`(310) 789-3106
`ksrinivasan@susmangodfrey.com
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`3
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