Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 1 of 33 PageID #: 47319
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A.NO. 12-1595-LPS
`
`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.
`
`C.A.NO. 12-1597-LPS
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`Defendants.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A.NO. 12-I60I-LPS
`
`MOTOROLA MOBILITY LLC
`mJdi MOTOROLA MOBELITY, INC.,
`
`Defendant.
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 2 of 33 PageID #: 47320
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A. No. 12-I602-LPS
`
`SONY MOBILE COMMUNICATIONS
`(USA) INC., £l£/a SONY ERICSSON
`MOBILE COMMUNICATIONS (USA) INC.,
`SONY CORPORATION, and SONY
`CORPORATION OF AMERICA,
`
`Defendants.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`GOOGLE LLC,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`C.A.NO. 13-919-LPS
`
`V.
`
`C.A. No. I3-920-LPS
`
`OATH HOLDINGS INC. and
`OATH INC.,
`
`Defendants.
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 3 of 33 PageID #: 47321
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`Neal C. Belgam and Eve H. Ormerod, SMITH, KATZENSTEDST & JENKINS LLP, Wilmington,
`DE
`Seth Ard, Beatrice Franklin, and Max Straus, SUSMAN GODFREY, LLP, New York, NY
`John Lahad, Ibituroko-Emi Lawson, Robert Travis Korman, and Brenda Adimora, SUSMAN
`GODFREY, LLP, Houston, TX
`Kalpana Srinivasan, SUSMAN GODFREY, LLP, Los Angeles, CA
`Kemper Diehl, SUSMAN GODFREY, LLP, Seattle, WA
`
`Attorneys for Plaintiff
`
`Jeremy D. Anderson, FISH & RICHARDSON P.O., Wilmington, DE
`Steven R. Katz and Jacob Pecht, FISH & RICHARDSON P.C., Boston, MA
`R. Andrew Schwentker, FISH & RICHARDSON P.C., Washington DC
`Eda Stark, FISH & RICHARDSON P.C., Atlanta, GA
`
`Attorneys for Defendants LG Electronics Inc., LG Electronics U.S.A., Inc., and LG
`Electronics Mobilecomm U.S.A., Inc.
`
`Keimeth L. Dorsney and Cortlan S. Hitch, MORRIS JAMES LLP, Wilmington, DE
`Brian C. Riopelle and David E. Finkelson, MCGUIREWOODS LLP, Richmond, VA
`Jason W. Cook, MCGUIREWOODS LLP, Dallas, TX
`
`Attorneys for Defendants BlackBerry Limited and BlackBerry Corporation
`
`David E. Moore, Bindu A. Palapura, and Stephanie E. O'Byme, POTTER ANDERSON &
`CORROON LLP, Wilmington, DE
`Robert W. Unikel, Michelle Marek Figueiredo, John Cotiguala, and Matt Lind, PAUL
`HASTINGS LLP, Chicago, IL
`Robert R. Laurenzi, PAUL HASTINGS LLP, New York, NY
`Ariell Bratton, PAUL HASTINGS LLP, San Diego, CA
`Ginger Anders, MUNGER, TOLLES & OLSON LLP, Washington, DC
`
`Attorneys for Defendant Motorola Mobility LLCf/k/a Motorola Mobility, Inc.
`
`Rodger D. Smith II, MORRIS, NICHOLS, ARSHT 8c TUNNELL LLP, Wilmington, DE
`Jeffii A. Kaminski, Justin E. Pierce, and Calvin R. Nelson, VENABLE LLP, Washington, DC
`Neha Bhat, VENABLE LLP, New York, NY
`
`Attorneys for Defendants Sony Mobile Communications (USA) Inc. f/k/a Sony Ericsson
`Mobile Communications (USA) Inc., Sony Corporation, and Sony Corporation of USA
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 4 of 33 PageID #: 47322
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`David E. Moore, Bindu A. Palapura, and Stephanie E. O'Byme, POTTER ANDERSON &
`CORROON LLP, Wilmington, DE
`Robert W. Unikel, Michelle Marek Figueiredo, John Cotiguala, and Matt Lind, PAUL
`HASTINGS LLP, Chicago, XL
`Robert R. Laurenzi and Chad J. Peterman, PAUL HASTINGS LLP, New York, NY
`Ariell Bratton, PAUL HASTINGS LLP, San Diego, CA
`Ginger Anders, MUNGER, TOLLES & OLSON LLP, Washington, DC
`
`Attorneys for Defendant Google LLC
`
`Jack B. Blumenfeld, Brian P. Egan, and Anthony D. Raucci, MORRIS, NICHOLS, ARSHT &.
`TUNNELL LLP, Wilmington, DE
`Frank C. Cimino Jr., Megan S. Woodworth, Jef&i A. Kaminski, Calvin R. Nelson, and Neha
`Bhat, VENABLE LLP, Washington, DC
`
`Attorneys for Defendants Oath Holdings Inc. and Oath Inc.
`
`MEMORANDUM OPINION
`
`REDACTED PUBLIC VERSION (ISSUED April 8,2022)
`March 31,2022
`Wilmington, Delaware
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 5 of 33 PageID #: 47323
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`STARK, U.S. Circuit Judge:
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`On November 29,2012 and May 22,2013, Plaintiff Arendi S.A.R.L. ("Plaintiff' or
`
`"Arendi") initiated 10 patent infringement cases against a series of defendants ("Defendants").
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`These cases and the corresponding defendant(s) in each case are listed below;
`
`• C.A. No. 12-1595 (the "LG Action"): LG Electronics Inc., LG Electronics U.S.A., Inc.,
`and LG Electronics Mobilecomm U.S.A., Inc. (collectively, "LG");
`
`• C.A. No. 12-1596 (the "Apple Action"); Apple Inc. ("Apple");
`
`• C.A. No. 12-1597 (the "BlackBerry Action"); BiackBerry Limited and BlackBerry
`Corporation (collectively, "BlackBerry");
`
`• C.A. No. 12-1598 (the "Samsung Action"); Samsung Electronics Co. Ltd., Samsung
`Electronics America Inc., and Samsung Telecommunications America LLC (collectively,
`"Samsung");
`
`• C.A. No. 12-1599 (the "Microsoft Mobile Action"); Microsoft Mobile, Inc. ("Microsoft
`Mobile");
`
`• C.A. No. 12-1600 (the "ETC Action"); HTC Corporation ("HTC");
`
`• C.A. No. 12-1601 (the "Motorola Action"); Motorola Mobility LLC fiTc/a Motorola
`Mobility, Inc. ("Motorola");
`
`• C.A. No. 12-1602 (the "Sony Action"); Sony Mobile Communications (USA) Inc. frk/a
`Sony Ericsson Mobile Communications (USA) Inc., Sony Corporation, and Sony
`Corporation of USA (collectively, "Sony");
`
`• C.A. No. 13-919 (the "Google Action"); Google LLC ("Google");
`
`• C.A. No. 13-920 (the "Oath Action"); Oath Holdings Inc. and Oath Inc. (collectively,
`"Oath").
`
`Arendi asserted one or more of the following five patents against each Defendant; U.S.
`
`Patent Nos. 6,323,853 (the "'853 patent"), 7,496,854 (the "'854 patent"), 7,917,843 (the "'843
`
`patenf), 7,921,356 (the "'356 patent"), and 8,306,993 (the "'993 patent"). These patents are
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`entitled "method, system and computer readable medium for addressing handling from" either "a
`
`computer program" or "an operating system."
`
`1
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 6 of 33 PageID #: 47324
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`These cases were stayed between 2014 and 2018, as the parties engaged in multiple inter
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`partes review ("PR") proceedings before the Patent Trial and Appeal Board ("PTAB"). After
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`these PR proceedings and the appeals from them concluded, the only remaining patent asserted
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`in any of the cases is the '843 patent.'
`
`The Apple Action, the Samsung Action, and the Microsoft Mobile Action have settled.
`
`(See C.A. No. 12-1596 D.1.421; C.A. No. 12-1598 D.I. 103; C.A. No. 12-1599 D.I. 204) The
`
`HTC Action is stayed pending the outcome of the Google Action. (See C.A. No. 12-1600 D.I.
`
`195 at 4)
`
`Pending before the Court are a total of 36 motions filed by the parties in the six
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`remaining active cases, consisting of 21 motions to exclude expert testimony ("Daubert
`
`motions"); 14 motions for summary judgment; and a motion for leave to file supplemental
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`infiingement contentions, re-open discovery, and file a supplemental brief. (C.A. No. 12-1595
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`D.I. 256,260,263,266,268,270, 333; C.A. No. 12-1597 D.I. 190,193,195,200,203,207; C.A.
`
`No. 12-1601 D.1.265,268,271,277, 279,282; C.A. No. 12-1602 D.1.223,226,230,231,236,
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`C.A. No. 13-919 D.I. 269,272,275,281, 283,286; C.A. No. 13-920 D.1.233,236,238,240,
`
`241,246)
`
`The Court has considered the voluminous briefs and other materials submitted by the
`
`parties in connection with this large number of motions. The Court also held a consolidated
`
`hearing on July 29,2021, in which the Court heard oral argument on the pending motions in all
`
`six cases. (C.A. No. 12-1595 D.I. 346; C.A. No. 12-1597 D.L 271; C.A. No. 12-1601 D.I. 378;
`
`C.A. No. 12-1602 D.1.294; C.A. No. 13-919 D.I. 385; C.A. No. 13-920 D.I. 319) ("Tr.")
`
`' The details of these PR proceedings and their respective outcomes are documented in a joint
`status report filed on Ai^ust 6,2018, docketed in each of the cases. (See, e.g., C.A. No. 12-1595
`D.L 81)
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 7 of 33 PageID #: 47325
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`This memorandum opinion will address the following eight motions:
`
`Daubert motions:
`
`• Arendi's motions to exclude portions of the expert reports and testimony of Dr.
`Edward Fox (C.A. No. 12-1601 D.I. 268; C.A. No. 13-919 D.1.272)
`
`Motions for summary judgment:
`
`• Arendi's motions for partial summary judgment (C.A. No. 12-1595 D.1.256; C.A.
`No. 12-1597 D.1.193; C.A. No. 12-1601 D.1.277; C.A. No. 12-1602 D.1.226; C.A.
`No. 13-919 D.1.281; C.A. No. 13-920 D.I. 236)
`
`A. Daubert And Federal Rule Of Evidence 702
`
`In Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993), the Supreme Court
`
`explained that Federal Rule of Evidence 702 creates "a gatekeeping role for the [trial] judge" in
`
`order to "ensur[e] that an expert's testimony both rests on a reliable foundation and is relevant to
`
`the task at hand." The rule requires that expert testimony "help the trier of fact to understand the
`
`evidence or to determine a fact in issue." Fed. R. Evid. 702(a). Expert testimony is admissible
`
`only if "the testimony is based on sufficient facts or data," "the testimony is the product of
`
`reliable principles and methods," and "the expert has reliably applied the principles and methods
`
`to the facts of the case." Fed. R. Evid. 702(b)-(d). There are three distinct requirements for
`
`admissible expert testimony: (1) the expert must be qualified; (2) the opinion must be reliable;
`
`and (3) the expert's opinion must relate to the facts. See generally Elcock v. Kmart Corp., 233
`
`F.3d 734, 741-46 (3d Cir. 2000). Rule 702 embodies a "liberal policy of admissibility." Pineda
`
`V. Ford Motor Co., 520 F.3d 237, 243 (3d Cir. 2008). Motions to exclude evidence are
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`committed to the Court's discretion. See In re Paoli R. R. YardPCB Litig., 35 F.3d 717, 749 (3d
`
`Cir. 1994).
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 8 of 33 PageID #: 47326
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`B.
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`Summaty Judgmeot And Federal Rule Of Civil Procedure 56
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`"The court shall grant summary judgment if the movant shows that there is no genuine
`
`dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.
`
`R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine
`
`issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
`
`586 n.lO (1986). An assertion that a fact caimot be - or, alternatively, is - genuinely disputed
`
`must be supported either by citing to "particular parts of materials in the record, including
`
`depositions, documents, electronically stored information, affidavits or declarations, stipulations
`
`(including those made for the purposes of the motion only), admissions, interrogatory answers,
`
`or other materials," or by "showing that the materials cited do not establish the absence or
`
`presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to
`
`support the fact." Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has carried its burden,
`
`the nonmovant must then "come forward with specific facts showing that there is a genuine issue
`
`for trial." Matsushita, 475 U.S. at 587 (internal quotation marks and emphasis omitted). The
`
`Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make
`
`credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc.,
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`530 U.S. 133,150 (2000).
`
`To defeat a motion for summary judgment, the non-moving party must "do more than
`
`simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475
`
`U.S. at 586; see also Podohnikv. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
`
`party opposing summary judgment "must present more than just bare assertions, conclusory
`
`allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
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`omitted). However, the "mere existence of some alleged factual dispute between the parties will
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 9 of 33 PageID #: 47327
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`not defeat an otherwise properly supported motion for summary judgment;" and a factual dispute
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`is genuine only where "the evidence is such that a reasonable jury could retum a verdict for the
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`nonmoving party." Anderson v. Liberty Lobby, Inc., All U.S. 242, 247-48 (1986). "If the
`
`evidence is merely colorable, or is not significantly probative, summary judgment may be
`
`granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, All U.S.
`
`317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to
`
`make a showing sufficient to establish the existence of an element essential to that party's case,
`
`and on which that party will bear the burden of proof at trial"). Thus, the "mere existence of a
`
`scintilla of evidence" in support of the non-moving party's position is insufficient to defeat a
`
`motion for summary judgment; there must be "evidence on which the jury could reasonably
`
`find" for the non-moving party. Anderson, All U.S. at 252.
`
`n. DISCUSSION
`
`A.
`
`Arendi's Motions To Exclude Portions Of The
`Expert Reports And Testimony Of Dr. Edward Fox
`
`Arendi moves to exclude Dr. Fox's "opinions on anticipation and obviousness" (C.A. No.
`
`12-1601 D.I. 269 at 2), contending that: (1) Dr. Fox fails to "set forth his rationale and the bases"
`
`of his invalidity opinions {id. at 6-17); and (2) Dr. Fox "ignores claim elements" with respect to
`
`the obviousness combinations that include the "Pandit" reference (U.S. Patent No. 5,859,636)
`
`{id. at 17-20).
`
`Motorola and Google first respond that Arendi's Daubert motion with respect to Dr. Fox
`
`is "untimely and waived." {Id. D.I. 332 at 2) In their view, the issues raised in Arendi's Daubert
`
`motion - which they identify as a disclosure dispute - should have been addressed during expert
`
`discovery and Arendi's Daubert motion is an untimely Rule 26 motion in disguise. {See id. at 5-
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`6) The Court disagrees. Federal Rule of Civil Procedure 26 and Federal Rule of Evidence 702
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 10 of 33 PageID #: 47328
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`govern different aspects of the requirements for expert disclosures, and Dr. Fox's expert reports
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`and testimony need to satisfy both. Here, Arendi challenges the reliability of Dr. Fox's reports
`
`and testimony under Rule 702, on the basis that they are "conclusory and purposefully
`
`equivocal." (Jd. D.I. 269 at 6) A Daubert motion is an appropriate vehicle by which to seek
`
`relief on this ground. See, e.g., Mettler-Toledo, Inc. v. Fairbanks Scales, Inc., 2008 WL
`
`11348468, at *4 (E.D. Tex. Oct. 27,2008) (striking unreliable expert report under Rule 702
`
`because it "makes conclusory statements ... but provides little in the way of analysis or
`
`reasoning"). None of the cases cited by Motorola and Google {see C.A. No. 12-1601 D.I. 332 at
`
`5-7) support the notion that Arendi is prohibited from bringing a Daubert motion merely because
`
`relief for the challenged conduct may also be available through a Rule 26 motion. {See id. D.I.
`
`359 at 1-2)
`
`Turning to the merits of Arendi's motion, the Court finds that exclusion of Dr. Fox's
`
`reports and testimony is unwarranted. Dr. Fox's expert reports have identified 33 specific
`
`obviousness combinations of primary and secondary references,^ and included adequate analysis
`
`to explain how and why a person of ordinary skill in the art ("POSA") would have been
`
`motivated to combine these references. {See, e.g., id. D.I. 333 Ex. 1
`
`186,191) Dr. Fox has
`
`also provided in his reports detailed claim charts with element-by-element analyses of how the
`
`prior art references disclose the limitations of the asserted claims. While some screenshots and
`
`block quotes in Dr. Fox's claim charts would surely benefit fktm more contextualization {see id.
`
`^ In view of Motorola and Google's representation during oral argument that they will not make
`an effort to get Dr. Fox to suggest to the jury that there are "thousands more [three-reference
`obviousness] combinations" (Tr. at 156-57; see also C.A. No. 12-1601 D.I. 332 at 8-9 ("[I]n an
`attempt to streamline the presentation for trial. Defendants submit that they will not present any
`testimony firom Dr. Fox related to three-reference combinations.")), the Court need not address
`Arendi's contention that Dr. Fox fails to "identify and explain his thousands of obviousness
`combinations" {id. D.1.269 at 6; see also id D.I. 270 Ex. 1 Ex. U).
`
`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 11 of 33 PageID #: 47329
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`D.I. 269 at 9-11), the Court agrees with Motorola and Google that those claim charts, overall,
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`sufficiently explain the connection between prior art disclosures and claim limitations and, when
`
`examined in context, are not "insufficient or confusing." {Id. D.I. 332 at 16) Thus, Dr. Fox's
`
`reports and testimony do not require exclusion.
`
`Arendi also faults Dr. Fox for failing to address all claim elements in his analysis of the
`
`Pandit-based obviousness combinations. {See id. D.I. 269 at 17-20) Dr. Fox states in his expert
`
`report that Pandit discloses every limitation of the asserted claims "with the exception of one
`
`limitation - 'performing a search using at least part of the first information as a search term in
`
`order to find the second information.'" {See id. at 18; see also id. D.I. 270 Ex. 1 f 186) Arendi
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`contends that if Pandit does not disclose that limitation, "it also cannot disclose the numerous
`
`additional claim limitations concerning the nature and use of that second information." {Id. D.I.
`
`269 at 18) In Arendi's view, then. Dr. Fox necessarily failed to address these additional
`
`limitations in his Pandit-based obviousness analysis. {See id. at 19) Notwithstanding the
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`statement cited by Arendi, it appears that Dr. Fox has, in fact, accounted for the purported
`
`"additional claim limitations," both in his report and in the accompanying claim chart. {See id.
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`D.I. 332 at 20; see also id. D.I. 333 Ex. 1
`
`188-96 & Ex. T) Thus, Arendi has not provided a
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`meritorious basis for excluding Dr. Fox's reports and testimony regarding the Pandit-based
`
`obviousness combinations.^
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`For the foregoing reasons, Arendi's motion to exclude portions of the expert reports and
`
`testimony of Dr. Fox will be denied.
`
`^ To the extent Arendi contends that Dr. Fox's opinions are "grounded in a misunderstanding" of
`the effect of a final written decision in an IPR proceeding {see C.A. No. 12-1601 D.I. 269 at 19-
`20), that challenge goes to the weight, not the admissibility, of Dr. Fox's reports and testimony.
`
`7
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 12 of 33 PageID #: 47330
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`B.
`
`Motions For Summary Judgment
`
`1.
`
`Arendi's Motions For Partial Summary
`Judgment In The Motorola And Google Actions
`
`Arendi argues it is entitled to partial summary judgment on four issues: (1) Motorola and
`
`Google are prevented from asserting certain invalidity grounds due to estoppel triggered by the
`
`final written decision in an IPR proceeding (see C.A. No. 12-1601 D.I. 278 at 6-25); (2)
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`Motorola and Google cannot establish invalidity by improperly merging multiple references and
`
`devices to create a single piece of the purported system (see id at 25-35); (3) Motorola and
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`Google cannot establish invalidity by relying on two demonstrative laptops that do not qualify as
`
`prior art (see id. at 35-37); and (4) Motorola and Google have presented no evidence to support
`
`certain affirmative defenses and statutory limitations on damages (see id. at 37-40). The Court
`
`will address each of these issues.
`
`a.
`
`IPR Estoppel
`
`On December 2, 2013, Apple, Motorola, and Google petitioned for IPR of the '843
`
`patent, raising four independent obviousness grounds: (1) Pandit; (2) U.S. Patent No. 5,946,646
`
`("Miller"); (3) LiveDoc/Drop Zones articles; and (4) U.S. Patent No. 5,644,735 ("Luciw"). (See
`
`id D.I. 289 Ex. 1 at 8) On June 11,2014, the PTAB instituted an IPR proceeding on the Pandit
`
`groimd only and denied institution on the other three grounds. (See id Ex. 7 at 19) On June 9,
`
`2015, the PTAB issued a final Avritten decision, finding claims 1, 8, 23, and 30 of the '843 patent
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`unpatentable for being obvious over Pandit.'* (See id Ex. 8 at 15) On appeal, the Federal Circuit
`
`reversed the PTAB's finding of unpatentability. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d
`
`* The final written decision was issued before the Supreme Court decided, in SAS Institute, Inc.
`V. lancu, 138 S. Ct. 1348 (2018), that the PTAB did not have the power of "partial institution."
`
`8
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`

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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 13 of 33 PageID #: 47331
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`1355,1367 (Fed. Cir. 2016). Arendi now contends that Motorola and Google are estopped,
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`pursuant to 35 U.S.C. § 315(e)(2), from asserting several invalidity groimds that were raised or
`
`"reasonably could have been raised" during the IPR proceeding. Cal. Inst. of Tech. v. Broadcom
`
`Ltd., 25 F.4th 976,991 (Fed. Cir. 2022).
`
`Motorola and Google first contend that Arendi has "waived" IPR estoppel. (C.A. No. 12-
`
`1601 D.1.344 at 9-11) The Court is not persuaded. The parties engaged in discussions about
`
`IPR estoppel from April to June of 2019, regarding at least the references that had been asserted
`
`in the petition for IPR of the '843 patent. {See id. at 10; see also Tr. at 137-38) Despite the fact
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`that there were no subsequent discussions about IPR estoppel, Motorola and Google were on
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`notice that Arendi would potentially assert IPR estoppel as a defense in the Motorola and the
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`Google Actions. While the Court agrees with Motorola and Google that Arendi should have
`
`further clarified the scope of its IPR estoppel defense - at a minimum, after Motorola and
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`Google's expert. Dr. Fox, disclosed invalidity grounds in his expert reports - any prejudice may
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`be remedied by, as suggested by Motorola and Google, their invalidity expert presenting
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`additional non-estopped combinations, including three-reference combinations {see C.A. No. 12-
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`1601 D.I. 332 at 9 n.3), provided the expert explains the rationale for such combinations and is
`
`made available for depositions. This additional discovery would not disrupt trial, which has not
`
`yet been scheduled. Thus, the Court will consider the merits of Arendi's IPR estoppel defense.^
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`i.
`
`Pandit
`
`Arendi contends that, because "Pandit was actually raised by [Motorola and Google]
`
`during IPR, and it formed the basis of the PTAB's Final Written Decision" {id D.I. 278 at 9),
`
`' Arendi contends that it has raised "a statutory bar - not a factual one" (C.A. No. 12-1601 D.I.
`364 at 3) but does not cite authority that such a bar can never be waived {see, e.g., Tr. at 138).
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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 14 of 33 PageID #: 47332
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`Motorola and Google are estopped from asserting Pandit as invalidating prior art, including in
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`combination with other prior art references and systems that are also estopped, {see id at 8-9)
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`Motorola and Google do not directly address Arendi's positions. They contend, however,
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`that because they are only asserting Pandit in the instant actions as combinations with prior art
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`systems that they argue could not have been raised during the IPR (i.e., not estopped), these
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`asserted combinations are not estopped. {See id D.I. 344 at 26)
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`On the one hand, the Court ^ees with Arendi that Motorola and Google are barred from
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`presenting combinations that consist of Pandit with estopped prior art references and systems as
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`their invalidity theories. On the other hand, the Court ^rees with Motorola and Google that they
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`are not barred from presenting combinations that consist of Pandit with non-estopped prior art
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`references and system^ (i.e., prior art that was not and could not have been presented during the
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`IPR). See Milwaukee Elec. Tool Corp. v. Snap-On Inc., 271 F. Supp. 3d 990, 1030 n.l5 (E.D.
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`Wise. 2017) ("[TJo the extent references are being relied upon in combinations that could not
`
`have been raised in an IPR petition - for instance, if some of the instituted references are now
`
`being combined with references that are physical specimens, not printed pubhcations or patents-
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`those combinations are not barred."). To decide which Pandit-based combinations are estopped
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`or not estopped, thus, the Court will turn to examining which references and systems, other than
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`Pandit, Motorola and Google are estopped from asserting.
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`ii.
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`Miller, Luciw, And LiveDoc/Drop Zones Articles
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`These prior art references were included in petitions for EPR but the reviews sought were
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`not instituted. Arendi contends that Motorola and Google are estopped from raising these
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`references as part of an obviousness combination with other estopped references and systems.
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`{See C.A. No. 12-1601 D.I. 278 at 9) To be clear, Arendi is not seeking to bar these references
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`10
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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 15 of 33 PageID #: 47333
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`as independent invalidity grounds. According to Arendi, since Motorola and Google actually
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`raised these references in the petition for IPR, they could have raised obviousness combinations
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`consisting of these references with other references or systems that also could have been raised
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`during the IPR. (See id)
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`In response, Motorola and Google insist, relying on the Federal Circuit's decision in
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`Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293, 1300 (Fed. Cir.
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`2016), as well as this Court's decision in Princeton Digital Image Corp. v. Ubisoft Entertainment
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`SA, 2019 "WL 410432, at *3 (D. Del. Feb. 1,2019), these references are not barred since the
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`PTAB denied institution of IPR based on these references. (See C.A. No. 12-1601 D.I. 344 at
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`23-25) Shaw and Princeton Digital are inapposite here.
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`In the petition for IPR, Motorola and Google asserted the references at issue as
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`independent obviousness grounds. But they did not assert these references as combinations,
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`either among themselves or together with other references, as they seek to do here. Thus, the
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`PTAB's institution decision in the IPR does not affect the applicability of IPR estoppel to those
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`combinations.® To the extent that Motorola and Google attempt to assert combinations
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`consisting of these references with other estopped references and systems, because they could
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`have sought to present those combinations during the IPR, Motorola and Google are estopped
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`from asserting them here.
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`® To be clear, the Court need not and does not reach the question of whether the petitioned but
`non-instituted grounds in pre-iS^S" IPRs are subject to estoppel under 35 U.S.C. § 315(e)(2). See
`generally Cal. Inst. of Tech., 25 F.4th at 991 n.5 ("In this case ... 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 prt-SAS.'").
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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 16 of 33 PageID #: 47334
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`Motorola and Google argue in the alternative that the references at issue avoid estoppel
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`because they were asserted "only as evidence of related prior art systems."' {Jd. at 25) This
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`argument, however, is undermined by Dr. Fox's expert reports, in which he not only lists the
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`"related prior art systems" as part of the obviousness combinations, but also includes the
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`"evidence" references as independent altematives. (See id. D.I. 364 at 10-Il;see also, e.g., id.
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`D.1.289 Ex. 91186 ("CyberDesk System + Apple Data Detector System [md/or specific
`
`publications describing aspects of Apple Data Detector SystemY) (emphasis added)) Thus, to
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`the extent Motorola and Google rely on the references at issue - rather than the prior art systems
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`these references purportedly describe - as part of the obviousness combinations, they are barred
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`from raising these references in combination with other estopped references and systems.*
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`iii.
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`CyberDesk, Newton, Eudora, Word 97,
`Outlook 97, And Selection Recognition Agent
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`Arendi contends that Motorola and Google are barred from raising these prior art
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`"systems" - individually and in combination with other estopped references and systems - as
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`invalidity grounds in the Motorola and Google Actions because these "systems" are cumulative
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`of other patent and printed publication references that could have been raised as invalidity
`
`grounds during the IFR.^ (See id. D.I. 278 at 9-13,15-20,22-23) Motorola and Google counter
`
`' According to Motorola and Google, Miller and LiveDoc/Drop Zones articles are partial
`evidence for Apple Data Detectors and for LiveDoc, and Luciw is partial evidence for Newton.
`(See C.A. No. 12-1601 D.l. 344 at 25 n.9)
`
`* Although Arendi only seeks to prevent Motorola and Google from raising these references as
`part of an obviousness combination with other estopped references and systems, the Court agrees
`with Motorola and Google (see C.A. No. 12-1601 D.l. 344 at 25) that they are not estopped from
`presenting combinations that consist of these references with non-estopped prior art references
`and systems. See Milwaukee Elec. Tool, 271 F. Supp. 3d at 1030 n.l5.
`
`' Motorola and Google argue that Arendi improperly included with its motion Mr. Lhymn's
`declaration regarding whether certain prior art references could have been readily identified by a
`
`12
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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 17 of 33 PageID #: 47335
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`that "the challenged prior art systems are not entirely cumulative of any patents or publications,
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`but instead are separate prior art that could not have been presented in the ' 843 Patent IPR." (Id
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`D.L 344 at 13)
`
`An invalidity ground based on a physical product - which could not have been raised
`
`during an EPR (see 35 U.S.C. § 311(b)) - may be subject to IPR estoppel if a publication
`
`describing the physical product could have been raised as an invalidity ground during the IPR.
`
`For example, in Wasica Finance GmbHv. Schroder International, Inc., 432 F. Supp. 3d 448,
`
`453-54 (D. Del. 2020), the Court held that an invalidity ground involving a physical product is
`
`barred in litigation if a publication reasonably could have been raised in the IPR that is
`
`"materially identical" to the physical product; in that circumstance, the physical product is
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`"entirely cumulative" of the estopped prior art publication. See also Oil-Dri Corp. of Am. v.
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`Nestle PurinaPetcare Co., 2019 WL 861394, at *10 (N.D. 111. Feb. 22,2019) ("Where there is
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`evidence that a petitioner has reasonable access to printed publications corresponding to or
`
`describing a product that it could have proffered during the IPR process, it cannot avoid estoppel
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`simply by pointing to the finished product (rather than the printed materials) during litigation.");
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`Milwaukee Elec. Tool, 271 F. Supp. 3d at 1030 ("[The defendant] cannot skirt [IPR estoppel] by
`
`purporting to rely on a device without actually relying on the device itself.").
`
`skilled searcher conducting a diligent search at the time of the IPR petition. (See C.A. No. 12-
`1601 D.I. 344 at 27-28) ("Mr. Lhymn's declaration is an improper and imtimely expert report
`xmder the guise of a witness statement, and fails to comply with the expert disclosure
`requirements of Rule 26.") Arendi has provided evidence of the availability of the references
`even independent of Mr. Lhymn's declaration; for example, the references at issue were cited in
`the '843 patent, in other contemporaneous IPR petitions, or in the documents generated around
`the time of the EPR petition for Ae '843 patent. (See, e.g., id D.I. 278 at 10-22) Motorola and
`Google have "neither contest[ed] Arendi's evidence nor put forward their own" to create a
`factual dispute over the discoverability of the references at issue. (See id D.I. 364 at 12-13)
`Thus, the Court need not and does not rely on Mr. Lhymn's declaration.
`
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`Case 1:13-cv-00919-VAC Document 399 Filed 04/08/22 Page 18 of 33 PageID #: 47336
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`For the reasons explained below, the Court finds that: (1) there is a genuine factual
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`dispute - precluding summary judgment - as to whether CyberDesk, Newton, Word 97, and
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`Outlook 97 are "materially identical" to the references that could have been raised during the
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`'843 patent IPR; and (2) there is no genuine factual dispute that Eudora and Selection
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`Recognition Agent are "materially identical" to the references that could have been raised during
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`the IPR. Thus, Motorola and Google are precluded from relying on the latter two purported
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`systems - individually or in combination with other estopped references and systems - but are
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`not precluded from relying on the other listed system references as part of their invalidity
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`theories in the instant actions.
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`CvberPesk; Arendi contends that a series of references describing the CyberDesk
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`system "were readily available" to Motor