Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 1 of 19 PageID #: 47503
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`THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 12-1601-JLH
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`JURY TRIAL DEMANDED
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`C.A. No. 13-919-JLH
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`JURY TRIAL DEMANDED
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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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`Plaintiff,
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`v.
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`Defendant.
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`Plaintiff,
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`v.
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`ARENDI S.A.R.L.,
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`GOOGLE LLC,
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`Defendant.
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`DEFENDANTS’ OPENING BRIEF IN SUPPORT OF THEIR MOTION FOR
`CLARIFICATION OF CLAIM CONSTRUCTION
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`OF COUNSEL:
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`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
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`
`
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and
`Google Inc.
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`

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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 2 of 19 PageID #: 47504
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: January 19, 2023
`10555206 / 12599.00040
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`

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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 3 of 19 PageID #: 47505
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`I.
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`II.
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`III.
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`V.
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`A.
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`B.
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`C.
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`A.
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`B.
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`Statement of the Nature and Stage of the Proceedings, and Summary of Argument ........ 1
`Statement of Facts .............................................................................................................. 3
`The ’843 patent ...................................................................................................... 3
`Prosecution history of the ’843 patent ................................................................... 5
`Procedural history .................................................................................................. 6
`The Court’s claim construction .................................................................. 6
`The Court’s Daubert and summary judgment rulings ............................... 7
`Legal Standard ................................................................................................................... 9
`IV. Argument ........................................................................................................................... 9
`Clarification is needed before trial ......................................................................... 9
`categories of information “can be searched for” .................................................. 10
`Conclusion ....................................................................................................................... 14
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`TABLE OF CONTENTS
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`Page
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`1.
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`2.
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`The Asserted Claims require a distinct “determination” that the predefined
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`-i-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 4 of 19 PageID #: 47506
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Acera Surgical, Inc. v. Nanofiber Solutions, LLC,
`C.A. No. 20-980-CFC-JLH, 2022 WL 6948855 (D. Del. Oct. 12, 2022) ...............................10
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)..................................................................................................11
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016)............................................................................................9, 14
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996) ...................................9, 10
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................9, 14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................9
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017)............................................................................................9, 11
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`-ii-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 5 of 19 PageID #: 47507
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`I.
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`Statement of the Nature and Stage of the Proceedings, and Summary of Argument
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`Plaintiff Arendi S.A.R.L. (“Arendi”) and Defendants Google LLC (“Google”) and
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`Motorola Mobility LLC f/k/a Motorola Mobility, Inc. (“Motorola”) have completed discovery,
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`dispositive motions, and an unsuccessful mediation, and now prepare for a trial in these patent-
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`infringement cases beginning April 24, 2023. (See D.I. 412,1 Supp. Scheduling Order.)
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`It has become apparent that the Court’s prior construction of one asserted claim limitation
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`suffers from an ambiguity that, in the absence of clarification, will confuse jurors and improperly
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`force the jury to decide the scope of the Asserted Claims. Specifically, Defendants move for
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`clarification regarding the meaning and scope of the claim element, “while the document is being
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`displayed, analyzing, in a computer process, first information from the document to determine if
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`the first information is at least one of a plurality of types of information that can be searched for
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`in order to find second information related to the first information.” (D.I. 97-1, ’843 patent at
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`10:43–48.) The Court previously construed the constituent phrase “to determine if the first
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`information is at least one of a plurality of types of information that can be searched for” to mean
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`“to determine if the first information belongs to one or more of several predefined categories of
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`identifying information (e.g., a name) or contact information (e.g., a phone number, a fax number,
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`or an email address) that can be searched for in an information source external to the document.”
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`(D.I. 143 at 13.)
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`In subsequent rulings on Daubert and summary judgment motions, Judge Stark ruled that
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`the Asserted Claims do not require that a separate searchability determination be made at the time
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`that the computer process actually analyzes a specific text string to ascertain whether it belongs to
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`a predefined category of information (e.g., a phone number). (D.I. 400 at 6–7, 15, 23.) As a result,
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`1 All docket citations are to the Arendi v. Google case, C.A. No. 13-919, unless otherwise indicated.
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 6 of 19 PageID #: 47508
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`Judge Stark ruled that Defendants’ non-infringement expert “is precluded from testifying that the
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`Accused Devices or Accused Apps do not satisfy the claim limitation because they do not
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`determine the searchability of the first information.” (Id. at 7.) However, the Court’s collective
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`rulings left, and leave, unclear whether the full claim element mandates a determination at some
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`point in time as to whether information is of a type “that can be searched for” (e.g., that a
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`searchability determination be made at least when predefining categories of information to be
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`identified). Defendants have maintained, and continue to maintain, that the claim language (as well
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`as the Court’s existing construction) requires a searchability determination.2 At trial, Defendants
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`intend to argue non-infringement on this basis, as the evidence establishes that none of the accused
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`products assess searchability in any way in determining what types of information should be
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`identified in text strings. In the absence of a clarifying ruling or construction, a reasonable jury
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`will be confused as to what exactly the claim element, as presently construed, means and requires,
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`and thus will be forced to determine the proper scope of the claims. In particular, the jury will be
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`forced to decide what the asserted claims require in order for an accused computer process “to
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`determine if the first information belongs to one or more of several predefined categories of
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`identifying information (e.g., a name) or contact information (e.g., a phone number, a fax number,
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`2 To be clear, Defendants maintain that the plain language of the full claim element, “while the
`document is being displayed, analyzing, in a computer process, first information from the
`document to determine if the first information is at least one of a plurality of types of information
`that can be searched for,” clearly requires a determination as to whether the first information is a
`“type[] of information that can be searched for” during the time that the “document is being
`displayed.” Judge Stark’s construction seemed to confirm this requirement. Yet, Judge Stark’s
`ruling on the Daubert and summary judgment motions concluded that a searchability
`determination is not required as part of displaying the document or analyzing first information.
`Google believes that Judge Stark’s ruling on this point is incorrect and should be corrected before
`trial. However, at a minimum, Judge Stark’s rulings and construction leave open the issue of
`whether the claims’ required searchability determination must be made at some point in time (even
`if not while the document is displayed), e.g., at the time that information categories are predefined
`for identification. Defendants will argue non-infringement on this basis at trial.
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`-2-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 7 of 19 PageID #: 47509
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`or an email address) that can be searched for in an information source external to the document.”
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`(D.I. 143 at 13.)
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`Defendants request that the Court confirm that the asserted claims, as construed, require a
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`determination at some point in time that first information belongs to a category or type of
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`information “that can be searched for in an information source external to the document.” At
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`minimum, Defendants request that the Court make clear that Defendants and their expert are
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`permitted to argue and opine at trial that the Accused Products do not infringe the asserted claims
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`because they do not include any determination, including during the predefinition of information
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`categories to be identified in text, that “the first information is at least one of a plurality of types
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`of information that can be searched for,” as is expressly required by the claim language (and by
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`the existing construction).
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`II.
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`Statement of Facts
`A. The ’843 patent
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`Arendi alleges infringement by Defendants of independent claims 1 and 23 and dependent
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`claims 8 and 30 (the “Asserted Claims”) of U.S. Patent No. 7,917,843 (the “’843 patent”). Claim
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`1 is representative for purposes of this motion and discloses, with the relevant language
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`emphasized:
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`1. A computer-implemented method for finding data related to the contents of a
`document using a first computer program running on a computer, the method comprising:
`displaying the document electronically using the first computer program;
`while the document is being displayed, analyzing, in a computer process, first
`information from the document to determine if the first information is at least
`one of a plurality of types of information that can be searched for in order to find
`second information related to the first information;
`retrieving the first information;
`providing an input device, configured by the first computer program, that allows a user
`to enter a user command to initiate an operation, the operation comprising (i)
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`-3-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 8 of 19 PageID #: 47510
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`performing a search using at least part of the first information as a search term in
`order to find the second information, of a specific type or types, associated with the
`search term in an information source external to the document, wherein the specific
`type or types of second information is dependent at least in part on the type or types
`of the first information, and (ii) performing an action using at least part of the
`second information;
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`in consequence of receipt by the first computer program of the user command from
`the input device, causing a search for the search term in the information source,
`using a second computer program, in order to find second information related to
`the search term; and
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`if searching finds any second information related to the search term, performing the
`action using at least part of the second information, wherein the action is of a type
`depending at least in part on the type or types of the first information.
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`(’843 patent at 10:38–11:3.)
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`Figure 1 of the ’843 patent illustrates the purported invention in flowchart form:
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`(Id. at Fig. 1.) As will be discussed in greater detail below, Steps 4 and 6 show that first information
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`in a document is analyzed to determine whether it is a type of information that can be searched for.
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`As seen in Steps 12 and 14, if the information is determined to be a “NAME ONLY (OR
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`SIMILAR)” or “NAME AND ADDRESS,” which are determined to be searchable in a database,
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`-4-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 9 of 19 PageID #: 47511
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`then the invention proceeds to “LOOKUP NAME IN DATABASE.” (Id.) As seen in Step 10, if
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`the information is determined to be an “EMAIL ADDRESS MAILING LIST/CATEGORY
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`NAME, TEL. NO. OR OTHER,” which are determined not to be searchable in a database, then
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`the invention does not even attempt to perform a search in the database, and instead proceeds to
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`different “APPROPRIATE ACTION (NOT DISPLAYED HERE).”
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`B. Prosecution history of the ’843 patent
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`On July 29, 2008, Atle Hedløy (“Applicant”) filed the application for what later would
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`become the ’843 patent. (See ’843 patent.) On October 28, 2010, the patent office rejected the
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`patent claims, as then drafted, as obvious based on prior art, including the “Person” prior art
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`reference, which disclosed certain “mail merge” software. (Unikel Decl., Ex. 1, Non-Final
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`Rejection at 8, 12.)
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`On December 28, 2010, Applicant submitted a response to the rejection, amending its
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`claims to add the “to determine if” element and arguing that the claims as amended were not
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`obvious based on Person, and another reference, “Tso.” (Unikel Decl., Ex. 2, Suppl. Resp. A.)
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`Specifically, Applicant amended the claim language as follows:
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`while the document is being displayed, analyzing, in a computer process,
`the document to identify any first information from the document to
`determine if the first information is at least one of a plurality of types of
`information that can be searched for in order to find second information
`related to the first information;
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`(Id. at 7.)
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`When amending the claims to add the “to determine if” element, Applicant made clear, and
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`emphasized, that the requirement of analyzing information to determine if it is of a type “that can
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`be searched for” is separate and distinct from the later claim element requiring “performing a
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`search.” (Id. at 22–24 (labeling the searchability determination requirement as “item (1)” and the
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`performing a search requirement as “item (2)” and then distinguishing Person and Tso in light of
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`-5-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 10 of 19 PageID #: 47512
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`those separate claim requirements).) Of particular note, Applicant argued that, “The Person
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`reference also does not disclose or suggest item (1) above, analyzing first information from the
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`document to determine if the first information is at least one of a plurality of types of information
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`that can be searched for in order to find second information related to the first information, as
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`required by the claims.” (Id. at 23–24 (italics in original).) According to Applicant, “Person fails
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`to disclose or suggest a search for first information, as required by item (2) above, because the
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`information to be inserted by mail merger is never searched for in the information source,” and
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`“[s]ince there is no search, as required by the claims, Person also cannot determine if the first
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`information is of a type that can be searched, as further required by item (1) above.” (Id. at 23–24
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`(italics in original, underlining added).)
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`The ’843 patent subsequently was granted and issued, with the amended “to determine if”
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`element in the Asserted Claims, on March 29, 2011. (’843 patent.)
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`C. Procedural history
`1. The Court’s claim construction
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`On August 19, 2019, the Court provided the following construction:
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`Claim Term
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`Court’s Construction
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`“to determine if the first
`information is at least one of
`a plurality of types of
`information that can be
`searched for”
`(D.I. 143 at 13.)
`
`“to determine if the first information belongs to one or more of
`several predefined categories of identifying information (e.g.,
`a name) or contact information (e.g., a phone number, a fax
`number, or an email address) that can be searched for in an
`information source external to the document”
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`The Court’s construction did not make clear when or how the determination must be made
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`that the predefined categories of identifying or contact information “can be searched for in an
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`information source external to the document.” In particular, the Court’s construction did not make
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`apparent whether the determination must be made (a) by the computer process at the moment of
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`-6-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 11 of 19 PageID #: 47513
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`“analyzing . . . first information”, and/or (b) during the predefinition of information categories to
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`be identified. (See id.)
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`2. The Court’s Daubert and summary judgment rulings
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`On March 5, 2021, Defendants moved for summary judgment of non-infringement,
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`explaining, among other things, that the Accused Products do not “analyze to determine whether
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`identified information is of a type that ‘can be searched for’ on a user’s device.” (E.g., D.I. 327 at
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`23; C.A. No. 12-1601, D.I. 326 at 23.) Arendi conceded that the Accused Products do not make
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`any determination that the identified types of information can be searched for, but instead argued
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`that the Asserted Claims do not require such a distinct determination. (See D.I. 358 at 25.)
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`Arendi simultaneously moved to exclude certain opinions of Dr. Rinard, Defendants’ non-
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`infringement expert, including those opining that the Accused Products do not infringe because
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`“none of the Accused Products determine if the first information is of a type that ‘can be searched
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`for,’” and there was no allegation by Arendi “that any of the[] predefined types can be searched
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`for or that any determination is made that they can be searched for.” (Unikel Decl., Ex. 3 (“Rinard
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`Report”) ¶ 441; 541; see also id. ¶¶ 561, 562, 566, 568–571 (explaining same for each accused
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`functionality).) (E.g., D.I. 314 at 4; C.A. No. 12-1601, D.I. 310 at 4.)
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`On March 31, 2022, Judge Stark ruled on these motions. The Court granted Arendi’s
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`Daubert motion in relevant part, and held that “Dr. Rinard is precluded from testifying that the
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`Accused Devices or Accused Apps do not satisfy the claim limitation because they do not
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`determine the searchability of the first information.” (D.I. 400 at 7.) The Court adopted its
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`reasoning from Arendi’s similar motion against a different defendant’s non-infringement expert,
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`reasoning that “the Court’s construction does not require that the searchability determination of
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`-7-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 12 of 19 PageID #: 47514
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`the first information must be made by the accused infringing products while performing this step
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`of the claimed process.” (Id. at 6.)3
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`The Court denied Defendants’ summary judgment motions as to this claim limitation for
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`the same reasons, finding “that the asserted claim does not require that the searchability
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`determination of the first information be made by the Accused Products while performing this step
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`of the claimed process.” (Id. at 15 (emphasis added), 23.)
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`Accordingly, the Court ruled that the claim language at issue does not require that a distinct
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`searchability determination be made at the time of “analyzing . . . first information.” But, regardless
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`of the correctness or incorrectness of the Court’s decisions, those rulings did not expressly address
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`whether or not searchability must be determined at some point in time, e.g., assessed and used to
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`predefine the information categories to be identified. The language of the Asserted Claims, and
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`the Court’s existing construction, explicitly refer to a required determination as to whether “the
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`first information belongs to one or more of several predefined categories of identifying information
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`(e.g., a name) or contact information (e.g., a phone number, a fax number, or an email address)
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`that can be searched for in an information source external to the document.” But, Judge Stark’s
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`Daubert and summary judgment rulings create significant ambiguity and dispute about how the
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`Court’s construction can and should be argued by the parties and applied by the jury.
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`3 Once again, to be clear, Defendants maintain that this ruling is error and ignores the requirements
`of the full claim element containing the phrase that the Court construed. The full claim element
`expressly states, “while the document is being displayed, analyzing, in a computer process, first
`information from the document to determine if the first information is at least one of a plurality of
`types of information that can be searched for.” (’843 patent at 10:43–48.) This requires that the
`analyzing “to determine if” must occur at the time the document is being displayed on a user
`device. Defendants urge the Court to correct this error before the scheduled trial.
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`-8-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 13 of 19 PageID #: 47515
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`III. Legal Standard
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`“[T]he court has the power and obligation to construe as a matter of law the meaning of
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`language used in the patent claim.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.
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`Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). “When the parties raise an actual dispute
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`regarding the proper scope of the[] claims, the court, not the jury, must resolve that dispute.” O2
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`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). Failing to
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`do so constitutes “legal error.” Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314,
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`1319 (Fed. Cir. 2016) (finding error when “the court left [a] question of claim scope unanswered,
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`leaving it for the jury to decide”).
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`As the Court explained in its claim construction opinion, in construing claims, courts
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`consider the claims, specification, prosecution history and, where appropriate, extrinsic evidence.
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`(D.I. 143 at 2–4.) See also Phillips v. AWH Corp., 415 F.3d 1303, 1314–19 (Fed. Cir. 2005). “It is
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`highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous.”
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`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288 (Fed. Cir. 2017).
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`IV. Argument
`A. Clarification is needed before trial
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`The Court has found that the Asserted Claims do not require a distinct determination, at
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`the moment of “analyzing . . . first information,” that the “predefined categories of identifying
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`information . . . or contact information . . . can be searched for.” (D.I. 400 at 6–7.) But the Court
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`has not resolved or made clear whether the searchability determination nevertheless must be made
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`at some point in time, such as when predefining eligible categories of identifying or contact
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`information. That open issue decides whether Defendants, supported by their non-infringement
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`expert, may present at trial that the Accused Products do not infringe the Asserted Claims because
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`at no point do they determine that a category of information can be searched for, including when
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`-9-
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 14 of 19 PageID #: 47516
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`determining the predefined categories of information to be identified in a document. Defendants
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`fully intend to make this presentation at trial based on the existing construction, and expects that
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`Arendi will present its infringement case based on a broader claim scope that omits a searchability
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`determination altogether. It therefore is important for the Court now to clarify the existing
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`construction so the jury is not presented with two competing understandings of the claims’ scope
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`and requirements, which it must then improperly choose between and apply. See Markman, 52
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`F.3d at 979; see also Acera Surgical, Inc. v. Nanofiber Solutions, LLC, C.A. No. 20-980-CFC-
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`JLH, 2022 WL 6948855, at *1 (D. Del. Oct. 12, 2022) (Report and Recommendation) (“When the
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`parties have an actual dispute regarding the proper scope of claim terms, their dispute must be
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`resolved by the judge, not the jury.”) (citing Markman, 52 F.3d at 979).
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`B. The Asserted Claims require a distinct “determination” that the predefined
`categories of information “can be searched for”
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`The Asserted Claims, as construed by the Court, include an analysis “to determine if the
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`first information belongs to one or more of several predefined categories of identifying information
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`(e.g., a name) or contact information (e.g., a phone number, a fax number, or an email address)
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`that can be searched for in an information source external to the document.” (D.I. 143 at 13.) This
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`necessitates a “determination” that the “predefined categories . . . can be searched for.” Though
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`the Court’s summary judgment and Daubert rulings held (incorrectly, in Defendants’ view) that
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`this determination need not be made “while the document is displayed,” at the moment of
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`“analyzing . . . first information,” (D.I. 400 at 6–7, 15), the actual claim language and the Court’s
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`existing construction make clear that such determination must be made at some point in time, such
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`as when predefining the categories of information.
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`Finding otherwise would effectively read “that can be searched for” out of the “to
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`determine if” claim element and would improperly merge into one the “to determine if”
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 15 of 19 PageID #: 47517
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`requirement and the later and distinct claim element requiring “performing a search using at least
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`part of the first information as a search term . . . .” (’843 patent at 10:50–60.) This would make the
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`words “that can be searched for” in the separate “to determine if” requirement a “merely
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`superfluous, nonlimiting elaboration,” and thus would not “giv[e] effect to all terms in the claim.”
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`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Wasica Fin. GmbH,
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`853 F.3d at 1288 (“It is highly disfavored to construe terms in a way that renders them void,
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`meaningless, or superfluous.”). A “determination” that the categories of information “can be
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`searched for” (either as part of the predefinition of categories to be identified or at the time of the
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`analyzing) is a distinct, express requirement that must be met under the Asserted Claims. Indeed,
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`given that the categories of information indisputably must be categories that “can be searched for,”
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`a determination that the categories can be searched for must be made at some point, in order to
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`predefine those categories.
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`The ’843 patent specification confirms that a distinct searchability determination must be
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`made. In particular, Figure 1 shows that, after Step 6, where information is identified as being of
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`a particular type, a further Step 10, 12, or 14 is taken depending on the type of information that
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`was found and whether that type of information is one that has been determined to be searchable
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`in a database. (See ’843 patent at Fig. 1; see also id. at Fig. 2 (same).) The specification explains
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`that “[t]he program analyzes what the user has typed,” and then takes the appropriate resulting
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`action. (Id. at 4:32–39.) If the information includes a name, which is determined to be searchable,
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`then the name is looked up in a database (Id. at Fig. 1, Steps 12 and 14); but if the information
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`includes only an “email address mailing list/category name, tel. no. or other,” then the information
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`is not looked up in a database and a different “APPROPRIATE ACTION” is taken instead. (See
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`id. at Fig. 1, Step 10, 4:40–46.) The specification’s examples thus make clear that even though
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 16 of 19 PageID #: 47518
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`names, addresses and telephone numbers are all analyzed and identified in the document, only
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`names, having separately been determined to be searchable in the database, are used to later
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`perform a search in the database. Telephone numbers and other categories of information, having
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`apparently been determined not to be searchable in the database, are routed to “APPROPRIATE
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`ACTION” other than “LOOKUP IN DATABASE.” (E.g., id. at Fig. 1, Steps 4, 8, 10, 12, 14; 6:10–
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`18, 7:30–37.) Therefore, the purported invention ultimately determines not only what category or
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`categories of information the analyzed information belongs to, but also whether any of those
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`categories “can be searched for,” so it then can decide whether to even attempt to look up the
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`information in a database or take a different appropriate action. Indeed, the claimed invention
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`could not proceed to carry out a search (as separately required by the claims) if it had not first
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`determined that the analyzed information corresponded to a usable database search field.
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`The ’843 patent’s prosecution history reinforces the conclusion that the “to determine if”
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`claim element is separate and distinct from the later “performing a search” claim element, and
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`requires a determination at some point in time that the information “can be searched for.” As noted
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`earlier, to overcome a rejection, Applicant amended the claims to add the independent “to
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`determine if” requirement and explained that “Person fails to disclose or suggest a search for first
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`information, as required by item (2) [the “performing a search” requirement] above, because the
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`information to be inserted by mail merger is never searched for in the information source,” and
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`“[s]ince there is no search, as required by the claims, Person also cannot determine if the first
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`information is of a type that can be searched, as further required by item (1) [the searchability
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`determination requirement] above.” (Unikel Decl., Ex. 2, Supp. Resp. A at 7, 22–24 (italics in
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`original, underlining added).) Applicant thus specifically emphasized Person’s alleged lack of a
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`searchability determination as an independent basis to distinguish the prior art. This further
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`Case 1:13-cv-00919-JLH Document 422 Filed 01/19/23 Page 17 of 19 PageID #: 47519
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`substantiates that searchability is a distinct determination required by the Asserted Claims, and
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`supports Defendants’ proposed clarification.
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`Finally, in this litigation, Arendi’s own experts have recognized that the “to determine if”
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`element requires a searchability determination that goes beyond merely identifying information as
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`being of a particular category (e.g., a telephone number). For instance, Arendi’s validity expert
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`expressly distinguished the Newton prior art on the basis that it did not make a distinct searchability
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`determination, even though the Newton undisputedly identified information as being of particular
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`categories:
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`Q. And why is it the case that if Newton identifies 555-1000 as a possible phone number that
`it does not necessarily mean that the phone number can be searched for?
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`A. Because those are independent functionalities of a computing device.
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`*****
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`Q. And is it your view that identifying text as a phone number is not enough to meet the
`claim element that you’ve identified here?
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`A. On the face of it, it’s not because there’s a – there’s also a requirement that the type of
`information can be searched for -- excuse me, that the information can -- the information is
`of a type that can be searched for.