`
`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’ RESPONSE TO PLAINTIFF’S
`NOTICE OF SUBSEQUENT AUTHORITY
`
`On February 11, Plaintiff Arendi S.A.R.L. (“Arendi”) filed a Notice of Subsequent
`
`Authority (Motorola D.I. 380; Google D.I. 387), in which it submitted to the Court the Federal
`
`Circuit’s opinion in California Institute of Technology v. Broadcom Ltd., No. 2020-2222 (Fed. Cir.
`
`Feb 4, 2022). Arendi highlighted that, “[T]he Federal Circuit ‘overrule[d] Shaw [Industries Group
`
`Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016) in light of SAS Institute, Inc.
`
`v. Iancu, 138 S. Ct. 1348 (2018)] and clarif[ied] that estoppel applies not just to claims and grounds
`
`asserted in the petition and instituted for consideration by the Board, but to all claims and grounds
`
`not in the IPR but which reasonably could have been included in the petition.’” (Motorola D.I.
`
`380; Google D.I. 387 at 1 (quoting California Institute of Technology, Slip Op. at 23).)
`
`
`
`Case 1:13-cv-00919-LPS Document 388 Filed 02/14/22 Page 2 of 3 PageID #: 46992
`
`The California Institute of Technology v. Broadcom Ltd. opinion is not relevant to the
`
`issues in the captioned cases, however, because (1) the opinion dealt only with printed prior art
`
`potentially subject to IPR estoppel, not system art of the type at issue in these matters, and (2) the
`
`opinion explicitly recognized that it was not addressing the situation involved in these cases, where
`
`the relevant IPR proceedings were fully completed prior to the SAS decision, and where the IPR
`
`proceedings were instituted on only some of the grounds raised in the IPR petitions. In fact,
`
`footnote 5 of the California Institute of Technology opinion explicitly states: “In this case, SAS
`
`was decided while IPR proceedings remained pending before the Board. Accordingly, we need not
`
`decide the scope of preclusion in cases in which the Board declined to institute on all grounds and
`
`issued its final written decision pre-SAS.” California Institute of Technology, Slip Op. at 23-24.
`
`Arendi’s Notice of Supplemental Authority is thus irrelevant to the issues presented by
`
`Arendi’s pending Motions for Partial Summary Judgment (Motorola D.I. 277; Google D.I. 281).
`
`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
`
`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and Google
`Inc.
`
`2
`
`
`
`Case 1:13-cv-00919-LPS Document 388 Filed 02/14/22 Page 3 of 3 PageID #: 46993
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: February 14, 2022
`10027985 / (39729/40549)
`
`3
`
`
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