Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 1 of 63 PageID #: 47901
`
`Exhibit 1
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 2 of 63 PageID #: 47902
`
`Briefing on Arendi’s
`Motion to Exclude Portions of
`Dr. Martin Rinard’s Report
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 3 of 63 PageID #: 47903
`
`Excerpts of
`D.I. 270
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 4 of 63 PageID #: 47904
`Caeeell1B3envO09EPSILPIS Ddcouteeht3641 FAribei02109243 AeagpeodflesAeagelDHAZo
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`) )
`
`) )
`
`) C.A. No. 13-919-LPS
`)
`) Original Version Filed: March 5, 2021
`) Public Version Filed: March 11, 2021
`
`ARENDIS.A.R.L.,
`
`Plaintiff,
`
`V.
`
`GOOGLE LIC;
`
`) )
`
`Defendants.
`
`PLAINTIFF’S OPENING BRIEF IN SUPPORT OF ITS MOTION TO EXCLUDE
`PORTIONS OF DR. MARTIN RINARD’S EXPERT REPORT
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneysfor PlaintiffArendi S.A.R.L.
`
`Of Counsel:
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32°4 Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Ibituroko-Emi Lawson
`Burton DeWitt
`Robert Travis Korman
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkorman@susmangodfrey.com
`badimora@susmangodfrey.com
`
`Kalpana Srinivasan
`1900 Avenueof the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 314 Filed 03/11/21 Page 2 of 17 PageID #: 31216Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 5 of 63 PageID #: 47905
`
`
`
`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`Dated: March 5, 2021
`
`
`
`
`
`
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 6 of 63 PageID #: 47906
`CGasesel1iB3envO0SEPSILPIS Docoureant3641 AribedOG2109223 Aeagpe60dflasAeagelDtA29016
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`(Fed. Cir. 2009) (“No party may contradict the court’s construction to a jury”). Expert opinions
`
`that “narrow[] the Court’s construction” are likewise untenable. Align Tech., Inc. v. 3Shape A/S,
`
`No. 17-1646-LPS, 2020 WL 4926164, at *7 (D. Del. Aug. 14, 2020) (Stark, J.); see also Integra
`
`Lifesciences Corp. v. HyperBranch Medical Tech., Inc., No. 15-819-LPS, 2018 WL 1785033, at
`
`*5 (D. Del. Apr. 4, 2018) (excluding expert opinions that narrowed Court’s construction).
`
`A.
`
`The Court should exclude Dr. Rinard’s “that can be searched for”
`construction and related opinions.
`
`The Court provided the following claim construction:
`
`source external to the document.”
`
`Claim Term
`
`Court’s Construction
`
`“to determineif the first information belongs
`“to determineif the first information is at
`least one of a plurality of types of information|to one or more of several predefined
`that can be searched for”
`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
`
`D.I. 140 at 13. Despite the clarity of the Court’s construction that there need only be a single
`
`determination of whether the first information “belongs to one or more of several predefined
`
`categories ofidentifying .
`
`.
`
`. or contact information. .
`
`. that can be searched for in an information
`
`source external to the document,” Dr. Rinard argues that this claim step also requires
`
`Report] § 255; see also id. § 448
`
`contradict the claim language and Court’s construction, and seek to argue claim scopeto the jury.
`
`| These opinions must be excluded because they
`
`Diehl Decl., Ex. 1 [Rinard
`
`1 Dr. Rinard’s improper opinions construing and applyinghis construction ofthe “can be searched
`for” term appear in paragraphs 255-56, 440-53, and 531-74 of his report. See Diehl Decl., Ex. 1.
`
`3
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 314 Filed 03/11/21 Page 8 of 17 PageID #: 31222Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 7 of 63 PageID #: 47907
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`
`
`First, Dr. Rinard’s opinions contradict the Court’s construction by imposing a requirement
`
`that the Court did not. See Align Tech., 2020 WL 4926164, at *8 (excluding expert opinions that
`
`added claim limitation because “[t]he Court did not read such a limitation into the claims at claim
`
`construction”). Specifically, Dr. Rinard opines that there must be an
`
`
`
` (Diehl Decl.,
`
`Ex. 1 [Rinard Report] ¶ 255) whereas the Court’s construction requires only a determination of
`
`whether first information “belongs to one or more of several predefined categories” of the specified
`
`type. D.I. 140 at 13 (emphasis added). The plain meaning of the Court’s construction, and the
`
`claim language itself, is that the phrase “that can be searched for” modifies the allowable
`
`“predefined categories” and does not specify a distinct analyzing step to be made. Because the
`
`eligible “predefined categories” necessarily consist of types of information “that can be searched
`
`for,” there is no requirement to also determine if the information “can be searched for,”
`
`
`
`. Diehl Decl., Ex. 1 [Rinard Report] ¶ 255; see also id. Ex. 2 [Rinard Dep. Tr.] at
`
`189:17-21
`
`
`
`
`
`
`
`In imposing the additional requirement of analyzing to determine searchability, Dr. Rinard
`
`construes the claim as if it read:
`
`. . . 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, and also analyzing the first information to determine if it is of a type
`that can be searched for . . .
`
`If the Court had intended to require a special determination of
`
`
`
`it would have adopted such language in its construction. It did not.
`
`4
`
`
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 314 Filed 03/11/21 Page 9 of 17 PageID #: 31223Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 8 of 63 PageID #: 47908
`
`
`
`The Court’s finding that the required determination was limited to predefined categories
`
`of information further undercuts Dr. Rinard’s insistence on analyzing to determine searchability.
`
`D.I. 140 at 13. By specifying that the relevant categories of information are designated in advance,
`
`and that the only determination to be made is whether the first information belongs to one of them,
`
`the Court’s construction is clear that there is no separate step of also determining the information’s
`
`searchability.
`
`Even had Google pressed Dr. Rinard’s construction arguments during Markman, which it
`
`did not, Dr. Rinard’s reading would have contravened the ’843 Patent. The “analyzing” described
`
`in the specification does not include the step of determining searchability. For example, in
`
`describing Figure 1, the specification states:
`
`The program analyzes what the user has typed in the document at step 4, for
`example, by analyzing (i) paragraph/line separations/formatting, etc.; (ii) street,
`avenue, drive, lane, boulevard, city, state, zip code, country designators and
`abbreviations, etc.; (iii) Mr., Mrs., Sir, Madam, Jr., Sr. designators and
`abbreviations, etc.; (iv) Inc., Ltd., P.C., L.L.C, designators and abbreviations, etc.;
`and (v) a database of common male/female names, etc. If the program find an e-
`mail address mailing list/category name telephone number or other information, at
`step 10 an appropriate action is performed by the program . . .
`
`Diehl Decl., Ex. 3 [’843 Patent] at 4:25-42. This exemplary embodiment is focused on identifying
`
`the predefined categories of information, like addresses or names, not determining their
`
`searchability. See also id. at Fig. 1. Fig 2, 5:9-57. Dr. Rinard’s opinions must be stricken because
`
`they seek to add limitations to the claim language in contradiction to the plain meaning of the
`
`Court’s construction. See EMC Corp. v. Pure Storage, Inc., No. 13-1985-RGA, 2016 WL 775742,
`
`at *4 (D. Del. Feb. 25, 2016) (striking expert opinions that added limitations to claim terms).
`
`Second, Dr. Rinard’s opinions must also be excluded because he improperly seeks to re-
`
`argue claim construction at trial. Dr. Rinard’s report re-raises the same purported evidence of claim
`
`meaning that Defendants advanced at Markman. Compare Diehl Decl., Ex. 1 [Rinard Report] ¶
`
`5
`
`
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 314 Filed 03/11/21 Page 10 of 17 PageID #: 31224Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 9 of 63 PageID #: 47909
`
`
`
`446 with D.I. 118 at 13 (citing the same statements from IPR Proceedings). Indeed, Dr. Rinard re-
`
`hashes the actual arguments the parties made during Markman and advances his own analysis of
`
`the ’843 Patent’s prosecution history to support his construction. Diehl Decl., Ex. 1 [Rinard
`
`Report] ¶¶ 443-45, 447-48 (
`
`
`
`
`
`
`
`). All of this is improper. Parties cannot present expert testimony at trial that
`
`“amount[s] to arguing claim construction to the jury.” EMC, 2016 WL 775742, at *4 (citation
`
`omitted); Align Tech., 2020 WL 4926164, at *5-6 (striking opinions where expert interpreted
`
`prosecution history and “adopt[ed] a construction of the claim term” that “narrow[ed] the claim
`
`scope from the plain and ordinary meaning”). Moreover, Dr. Rinard’s reliance on inventor
`
`testimony (i.e., the testimony of Atle Hedløy) is particularly inappropriate not only because Dr.
`
`Rinard grossly mischaracterizes it,2 but also because advancing inventor testimony in support of
`
`claim constructions is legally impermissible even at the Markman stage. Howmedica Osteonics
`
`Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346-47 (Fed. Cir. 2008) (“The testimony of an
`
`inventor ‘cannot be relied on to change the meaning of the claims.’” (citations omitted)).
`
`
`2 Dr. Rinard advances a truncated and misleading quote from Mr. Hedløy’s deposition, claiming
`that
`
` Diehl Decl., Ex. 1 [Rinard Report]
`¶ 415. But this quotation omits critical words. Mr. Hedløy was testifying about the advantages of
`the invention, including that “the user can access -- can perform these tasks with a minimal number
`of actions or key strokes. Does not have to learn or even have access to directly the database or
`the second application of database where the data is stored.” Diehl Decl., Ex. 4 [Atle Hedløy Dep.
`Tr.] at 127:24-128:17.
` Dr. Rinard misleadingly
`alters its meaning.
`
`6
`
`
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 10 of 63 PageID #: 47910
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`Excerpts of
`D.I. 338
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 1 of 22 PageID #: 44318Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 11 of 63 PageID #: 47911
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-LPS
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANT GOOGLE LLC’S ANSWERING BRIEF TO PLAINTIFF’S
`MOTION TO EXCLUDE PORTIONS OF DR. MARTIN RINARD’S EXPERT REPORT
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`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
`sobyrne@potteranderson.com
`
`Attorneys for Defendant Google LLC
`
`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
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Ginger Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW
`Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
`
`Dated: April 6, 2021
`7151559 / 40549
`
`PUBLIC VERSION
`
`Public Version Dated: April 13, 2021
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 7 of 22 PageID #: 44324Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 12 of 63 PageID #: 47912
`
`ARGUMENT
`
`I.
`
`DR. RINARD PROPERLY APPLIES THE COURT’S CONSTRUCTIONS FOR
`THE CLAIM ELEMENT “TO DETERMINE IF THE FIRST INFORMATION IS
`AT LEAST ONE OF A PLURALITY OF TYPES OF INFORMATION THAT CAN
`BE SEARCHED FOR”
`Arendi first seeks to strike 60 paragraphs in total (paragraphs 255-56, 440-53, and 531-74)
`
`from Dr. Rinard’s report on infringement, covering over 20 single-spaced pages of opinion. D.I.
`
`270, fn. 1; D.I. 271, Ex. 1. In these pages, Dr. Rinard applies the claim term “to determine if the
`
`first information is at least one of a plurality of types of information that can be searched for” in
`
`accord with the Court’s construction of that term. For context, the term appears in asserted claims
`
`1 and 23 as follows:
`
`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 the plurality of
`types of information that can be searched for to find second information related to the
`first information.
`D.I. 271, Ex. 4, 10:43-48; 12:47-52 (emphasis added). The Court construed this term to mean: “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.”
`
`D.I. 143, p. 13.
`
`Both the original claim language and the Court’s construction explicitly require
`
`determining whether analyzed “first information” has two characteristics: (1) that 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)”;
`
`and (2) that the category (or categories) to which the information belongs “can be searched for in
`
`an information source external to the document.” Arendi’s own expert (Dr. Sacerdoti) when
`
`attempting to distinguish a prior art reference, as well as the named inventor of the asserted ’843
`
`4
`
`

`

`
`
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`
`Patent (Atle Hedloy), recognize these two required components of the claimed determination, and
`
`both admit that merely identifying first information as belonging to a predefined category of
`
`information (e.g., a phone number) does not mean that such information “can be searched for in
`
`an information source external to the document.” D.I. 276, p. 24-25 (quoting Ex. 24, 210:21-211:1,
`
`211:17-212:7, and Ex. 16, 512:15-513:8).3 They are distinct characteristics.
`
`Arendi asserts that “Dr. Rinard’s opinions contradict the Court’s construction by imposing
`
`a requirement that the Court did not,” specifically “that there must be an
`
`
`
` D.I. 270,
`
`p. 4. But, contrary to Arendi’s assertion, this requirement comes not from Dr. Rinard, but from the
`
`express language of the claims and the Court’s construction. Arendi’s motion essentially demands
`
`that Dr. Rinard and the Court ignore the entire portion of the construction (and the claim language)
`
`expressly requiring a determination that the information category “can be searched for in an
`
`information source external to the document.” If this limitation were ignored, as Arendi urges, the
`
`claim would require only that the process determine whether the first information is of a predefined
`
`category such as a phone number, and then, as is described in separate, subsequent claim steps, the
`
`first information would be retrieved and then later used to perform a search: “retrieving the first
`
`information . . . 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.” D.I. 271, Ex. 4, 10:49-57; 12:53-61. But the
`
`3 By way of example, if a determination is required that a person is “Rob Johnson who lives on
`School Street,” it would not be enough to determine just that a person has the name Rob Johnson;
`it would also be necessary to ascertain whether or not that person actually lives on School Street.
`Similarly, if a determination is required that a vehicle is a “1960s American car that has a working
`engine,” it would not be enough simply to determine that a specific car is a 1968 Ford Mustang; it
`would also be necessary to ascertain whether or not that Mustang actually has an engine that will
`start and run.
`
`5
`
`

`

`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 14 of 63 PageID #: 47914
`Césed 132200029:FLAS DOnaurTat352 Filed 02/09/28 Page 14b26PRaghD#447204
`
`additional claim language in the analyzing step (which occurs before the “retrieving the first
`
`information” step and before the “performing a search” step) requires the further act of assuring
`
`that that the informationis of a type “that can be searched for in an information source external to
`
`the document,” whichis not recited or required in any other steps of the claim. In essence, Arendi
`
`is asking the Court to treat the “that can be searched for” claim language as meaningless and
`
`superfluous, That the claim, according to Arendi, means the same thing with or without the “that
`
`can be searched for” language exposes the fallacy of Arendi’s position - the additional language
`
`in both the claim and the Court’s construction must be given effect. See Warner-Jenkinson Co.v.
`
`Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (“Each element contained in a patent claim is
`
`deemed material to defining the scope of the patent invention .
`
`.
`
`. .”); Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (stating that “claims are interpreted with an eye toward
`
`giving effect to all terms in the claim”).*
`
`Arendi cannot so easily disregard actual claim requirements and portions of the Court’s
`
`construction, particularly given that Arendi, itself, previously insisted that the “can be searched
`
`for” claim language has a definite meaning in the asserted claims. During claim construction,
`
`Google had argued that the claim term “to determine if the first information is at least one of a
`
`plurality of types of information that can be searched for” is indefinite, in part, because a person
`
`4 There are practical reasons why the claim language “that can be searched for” requires an
`affirmative determinationthat first informationis of a type that actually can be searched for on a
`user’s device before moving to the step of “retrieving the first information.” By determining if
`information can be searched for before retrieving it (e.g., by determining if the user’s deviceis
`connected to a network and/or possesses a second program that can use a phone numberor email
`address as a search term before needlessly retrieving that information), the claimed method
`minimizes unnecessary
`processing of first information that cannot actually
`be used for the
`subsequent claimsteps.
`
`D.1., 276, p. 23-24.
`
`

`

`
`
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`of ordinary skill in the art would not know how to determine whether a type of information “can
`
`be searched for in order to find second information related to the first information.” D.I. 118, pp.
`
`13-14. In response, Arendi argued that the claim language was clear as to where the search can be
`
`performed for purposes of the determining step: “in an information source external to the
`
`document.” D.I. 129, pp. 15-16. Arendi did not argue, as they do now, that the claim language
`
`does not require an actual determination of whether the first information can be searched for. The
`
`Court accepted Arendi’s argument and rejected Google’s indefiniteness position by specifying in
`
`the construction that the “can be searched for” determination must be made with respect to “an
`
`information source external to the document.” D.I. 143, pp. 13-15. Dr. Rinard applies the Court’s
`
`exact construction in his expert report.5 Arendi’s argument that Dr. Rinard read a limitation into
`
`the claim or used a construction at odds with the Court’s (D.I. 270, p. 4) is simply untenable in the
`
`face of the actual language of the Court’s construction and Arendi’s own explanation of the claims
`
`in defending against indefiniteness.6 Arendi cannot exclude Dr. Rinard’s non-infringement
`
`conclusions simply by asserting a conflict that does not exist.7
`
`The cases cited by Arendi are inapposite. In Align Tech. and EMC, the experts construed
`
`terms that the courts previously had ruled should be applied according to their plain and ordinary
`
`5 The Court reiterated in the Arendi v. HTC case involving the same asserted ’843 patent that the
`claims are directed to “. . . analyzing first information that can be searched for in an information
`source external to the document,” and “causing a search for that type of information in the external
`information source . . . ” C.A. No. 12-1600-LPS, D.I. 152 at 3-4 (D. Del. Dec. 15, 2020).
`6 Every citation to the prosecution history or inventor testimony
` merely buttresses
`the Court’s construction, which plainly requires an explicit step to confirm that the predefined
`category can be searched for in a specific place, namely, a source external to the document.
`7 If any expert opinion conflicts with the Court’s construction, it is that of Arendi’s expert on
`purported infringement, Dr. Smedley, who applies the “to determine” element in such a way as to
`completely ignore or eliminate the portion of the construction requiring “that can be searched for
`in an information source external to the document.” D.I. 276, p. 25, citing Ex. 3, 112:10-22; Ex.
`2, ¶ 88.
`
`7
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 11 of 22 PageID #: 44328Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 16 of 63 PageID #: 47916
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`meanings. Align Tech., Inc. v. 3Shape A/S, C.A. No. 17-1646-LPS, 2020 WL 4926164, at *8 (D.
`
`Del. Aug. 14, 2020) (Stark, J.); EMC Corp. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, 2016
`
`WL 775742, at *4 (D. Del. Feb. 25, 2016). Here, by contrast, the Court explicitly construed the
`
`term at issue to include the limitation “that can be searched for in an information source external
`
`to the document,” and Dr. Rinard is applying that exact construction. In Align Tech. and EMC, the
`
`Court further found that the experts’ reference to prosecution history improperly narrowed the
`
`issued claim constructions. EMC, 2016 WL 775742, at *4 (citation omitted); Align Tech., 2020
`
`WL 4926164, at *5-6. In the present case,
`
`
`
`
`
`
`
`. Dr. Rinard
`
`applies the Court’s entire construction, while Arendi and its expert attempt to apply only half of
`
`the Court’s construction.
`
`To the extent there is any disagreement between experts regarding the application of a
`
`Court’s claim construction, such disagreements are not a basis for excluding expert testimony as
`
`Arendi now seeks. Power Integrations, Inc., 763 F. Supp. 2d at 695 (denying a motion to strike a
`
`supplemental infringement expert report where the expert “attests that in forming his opinions he
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`relied on the Court’s construction of the dispute claim terms,” stating that the challenging party
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`“will be entitled to cross-examine and otherwise challenge [the expert’s] opinion at trial,” and
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`further finding that “[t]he implications of the Court’s constructions are matters on which the
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`parties’ experts may opine, and may disagree”).8
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`8 If the Court believes any ambiguity remains as to the meaning of the “can be searched for” term
`(there is not), Google asks that the Court supplement and clarify its original construction to be that
`analyzed “first information” has two characteristics: (1) that the first information “belongs to one
`
`8
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`

`

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`Case 1:13-cv-00919-LPS Document 352 Filed 04/13/21 Page 12 of 22 PageID #: 44329Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 17 of 63 PageID #: 47917
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`Ultimately, Arendi’s argument is a transparent attempt to strike a claim limitation
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`
`
`
`
`
` Arendi’s attempt to sidestep summary judgment by moving to strike opinions that fall
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`squarely within the Court’s claim construction should be rejected.
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`II.
`
`DR. RINARD PROPERLY APPLIES THE PLAIN AND ORDINARY MEANING
`OF TERMS THAT THE COURT DID NOT CONSTRUE
`A. Dr. Rinard’s applies the plain meaning of “analyzing, in a computer process, first
`information from the document” in view of the Court’s explicit definition of “first
`information”
`Arendi seeks to exclude Dr. Rinard’s opinions concerning the claim term “analyzing, in a computer
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`process, first information from the document,” specifically targeting paragraphs 454-69 of his
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`report, which total 16 paragraphs over four single-spaced pages of his report. D.I. 270, p. 7. This
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`term appears in the following claim element of the ‘843 Patent:
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`“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;”
`D.I. 271, Ex. 4 at 10:43-48; 12:47-52.
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`Arendi’s motion suggests that Dr. Rinard “offers a construction inconsistent with [the
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`term’s] plain and ordinary meaning” by opining that Google’s Accused Products cannot infringe
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`when analyzing passages encompassing more than the alleged “first information.” But, the claim
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`language is clear on its face that what must be analyzed is “first information,” not “text that
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`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)”; and (2) that the category
`(or categories) to which the information belongs “can be searched for in an information source
`external to the document.”
`
`9
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`

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`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 18 of 63 PageID #: 47918
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`Excerpts of
`D.I. 363
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`

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`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 19 of 63 PageID #: 47919
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`Briefing on Defendant’s
`Motion for Summary Judgment of
`Non-Infringement
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`

`

`Céss4.13-2000929-HLFSDOmouRaHt31 Filed 02/09/28 Page 2OD1ISPRaghHD447920
`Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 20 of 63 PageID #: 47920
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`CONFIDENTIAL — OUTSIDE COUNSEL ONLY
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-LPS
`
`) )
`
`) )
`
`) Original Version Filed: May 4, 2021
`) Public Version Filed: May 11, 2021
`
`) ) )
`
`ARENDIS.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLELLC,
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`Defendants.
`
`PLAINTIFF’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO EXCLUDE
`PORTIONS OF DR. MARTIN RINARD’S EXPERT REPORT
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Onnerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneysfor PlaintiffArendi S._A.R.L.
`
`OfCounsel:
`Seth Ard
`Beatrice Franklin
`MaxStraus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 324 Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`Ibituroko-Emi Lawson
`Burton DeWitt
`Robert Travis Konnan
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkonnan@susmangodfrey.com
`badimora@susmangodfrey.com
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 371 Filed 05/11/21 Page 2 of 15 PageID #: 46577Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 21 of 63 PageID #: 47921
`
`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
`
`Kalpana Srinivasan
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`Dated: May 4, 2021
`
`
`
`
`
`
`

`

`
`
`Case 1:13-cv-00919-LPS Document 371 Filed 05/11/21 Page 5 of 15 PageID #: 46580Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 22 of 63 PageID #: 47922
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`
`
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`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
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`Dr. Rinard offers opinions that must be excluded because they advance and rely on claim
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`constructions that impermissibly narrow the Court’s constructions and deviate from the plain
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`meaning of unconstrued claim terms. Further, dozens of paragraphs in Dr. Rinard’s report show
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`that
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`
`
`. All of this belonged before the
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`Court, if ever, at Markman. It does not belong before the jury at trial as part of an effort to argue
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`claim scope. Google’s brief tries to distract from Dr. Rinard’s claim construction arguments by
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`asserting that his voluminous
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` “merely buttresses the Court’s
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`construction” of claim terms, (D.I. 338 at 7), but this is nowhere stated in Dr. Rinard’s report. It
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`also makes no sense to
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` in an expert report if it “merely buttresses” the
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`constructions the jury will apply. Google is attempting, through its expert, to persuade the jury to
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`deviate from the Court’s constructions and constrict the plain and ordinary scope of unconstrued
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`claim terms. Both are prohibited under well-settled law.
`
`I.
`
`THE COURT SHOULD EXCLUDE DR. RINARD’S “THAT CAN BE
`SEARCHED FOR” CONSTRUCTION AND RELATED OPINIONS.
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`Contrary to Google’s argument, there is no dispute that the phrase “that can be searched
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`for” is part of the asserted claims and part of the Court’s construction. There is no dispute that it
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`has definite meaning. Far from asking the Court to ignore this language, as Google contends,
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`Arendi seeks to have its plain and ordinary meaning govern and to preclude Dr. Rinard from
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`arguing for a narrower interpretation at trial.
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`The Court’s construction is clear that there need only be a single determination. As the
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`Court’s construction says, the accused product must “determine if the first information belongs to
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`one or more of several predefined categories of identifying (e.g., a name) or contact information
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`(e.g., a phone number, a fax number, or an email address) that can be searched for in an information
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`
`1
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`

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`Case 1:13-cv-00919-LPS Document 371 Filed 05/11/21 Page 6 of 15 PageID #: 46581Case 1:13-cv-00919-JLH Document 436-1 Filed 02/09/23 Page 23 of 63 PageID #: 47923
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`
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`source external to the document.” D.I. 143 at 13.1 The plain meaning is that the concluding “that
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`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
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`can be searched for” phrase restricts the set of potential “predefined categories” of first
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`information. The “predefined categories” can only consist of “identifying information . . . or
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`contact information . . . that can be searched for in an information source external to the
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`document.” Id.
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`An analogy demonstrates this plain meaning. If the claim language instead stated “to
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`determine if the object belongs to one or more of several predefined categories of paper objects
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`(e.g., cardboard) or plastic objects (e.g., bottles) that can be recycled,” then the only determination
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`to be made would be whether the object belongs to one of the predefined categories of objects that
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`can be recycled.2 If the object belongs to one of those categories, then it can be recycled, because,
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`as the words specify, the predefined categories consist of items that can be recycled. There would
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`be no requirement of making two determinations by first determining whether the object belongs
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`to one of the predefined categories and then determining whether the object can be recycled. The
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`language “that can be recycled” limits the permissible set of predefined categories such that they
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`can only be categories of objects that can be recycled. The same is true here, where the phrase
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`“that can be searched for in an information source external to the document” limits the permissible
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`set of predefined categories of first information.3
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`
`1 Unless otherwise noted, all emphasis is added.
`2 Google’s analogy to whether a person is “Rob Johnson who lives on School Street” is inapposite
`because it ignor