Case 1:13-cv-00919-JLH Document 457 Filed 04/13/23 Page 1 of 5 PageID #: 48793
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT DELAWARE
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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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`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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`LETTER TO THE HONORABLE JENNIFER L. HALL FROM DAVID E. MOORE
`IN OPPOSITION TO PLAINTIFF’S MOTION REGARDING PRIOR ART ESTOPPEL
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`POTTER ANDERSON & CORROON LLP
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`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`abrown@potteranderson.com
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`Attorneys for Defendant Google LLC
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`OF COUNSEL:
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`Robert W. Unikel
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
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`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
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`Ginger D. Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
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`Vincent Y. Ling
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Avenue, 50th Floor
`Los Angeles, CA 90071
`Tel: (213) 683-9100
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`Dated: April 13, 2023
`10746717
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`Case 1:13-cv-00919-JLH Document 457 Filed 04/13/23 Page 2 of 5 PageID #: 48794
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`Dear Judge Hall:
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`The Court should deny Arendi’s eve-of-trial request for IPR estoppel as improper,
`untimely, and meritless. Judge Stark already decided over a year ago that the first two arguments
`in Arendi’s letter—supposed lack of a working version of CyberDesk and unreliability of
`testimony from Dr. Dey, CyberDesk’s lead developer—do not support the application of IPR
`estoppel in this case. D.I. 281 (Mot.); D.I. 391 at 2, 14–15 (Mem. Op.). Arendi’s third argument
`regarding cumulativeness fares no better. The court’s intervening decision in Chemours Co. v.
`Daikin Indus., Ltd., 2022 WL 2643517 (D. Del. July 8, 2022) (Noreika, J.), clarifies that
`cumulativeness is irrelevant here, and as a matter of statutory interpretation, estoppel cannot apply.
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`If the Court were to revisit the issue of estoppel, Google agrees with Arendi that the Court,
`not the jury, should decide it. See D.I. 456 (Arendi Letter) at 1 n.2 (citing cases); see also Hemstreet
`v. Comp. Entry Sys. Corp., 972 F.2d 1290, 1292 (Fed. Cir. 1992) (equitable issues are “committed
`to the sound discretion of the trial court,” even when they “ultimately turn on underlying factual
`determinations”). Here, Arendi falls far short of its burden to prove under 35 U.S.C. § 315(e)(2)
`that Google “reasonably could have raised” CyberDesk during IPR. Its arguments are legally
`wrong and factually unsupported. In contrast, Google submitted extensive evidence in opposing
`summary judgment, which showed that CyberDesk is materially different from any printed
`publications. The evidence shows that Google is not “simply swapping labels for what is otherwise
`a patent or printed publication invalidity ground in order to ‘cloak’ its prior art ground and ‘skirt’
`estoppel.” Cal. Inst. of Tech. v. Broadcom Ltd., 2019 WL 8192255, at *7 (C.D. Cal. Aug. 9, 2019),
`aff’d, 25 F.4th 976 (Fed. Cir. 2022). If the Court disagrees that the record evidence is sufficient to
`deny estoppel of CyberDesk, Google respectfully requests a bench trial on the issue.
`I.
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`The Court Has Already Rejected Arendi’s Arguments Other Than Cumulativeness
`On March 5, 2021, Arendi filed a summary judgment motion arguing, among other things,
`that IPR estoppel bars certain prior art—including CyberDesk alone or combined with other art—
`and that Google cannot combine publications into one “aggregate” system. See D.I. 281 at 1–2, 6–
`35. Judge Stark denied that motion in relevant part on March 31, 2022. D.I. 391; D.I. 392 (Order).
`He considered, among other things, the same arguments that Arendi now raises in its letter: (i)
`“there is no evidence that . . . a system exists”; (ii) Dr. Dey’s testimony is “uncorroborated”; and
`(iii) non-printed publication evidence, including Dr. Dey’s testimony, is “cumulative” of “printed
`CyberDesk references.”1 D.I. 281 at 9–13 & nn.6–10 (emphases in original). In denying summary
`judgment of estoppel against CyberDesk, Judge Stark left open only a question of whether
`CyberDesk is “cumulative” of printed publications that could have been raised during IPR, thereby
`rejecting Arendi’s other arguments. See D.I. 391 at 2, 14–15.
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`In the year since Judge Stark’s decision, Arendi never moved for reargument, and it fails
`to provide any legitimate basis for doing so now. See L.R. 7.1.5 (motion for reargument due within
`14 days). The first two arguments in Arendi’s letter therefore stand rejected, and there is no need
`or basis to reconsider them. At most, the only issue left is “cumulativeness,” but as explained
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`1 To the extent Arendi argues CyberDesk cannot be described by an “amalgamation” of references,
`D.I. 456 at 1, that argument was also decided or else waived. Arendi unsuccessfully challenged
`other systems, but not CyberDesk, on this basis. See D.I. 281 at 25–35; D.I. 391 at 19–23.
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`Case 1:13-cv-00919-JLH Document 457 Filed 04/13/23 Page 3 of 5 PageID #: 48795
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`The Honorable Jennifer L. Hall
`April 13, 2023, Page 2
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`below, that too does not warrant application of estoppel.2
`II.
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`As a Matter of Statutory Interpretation, Prior Art Estoppel Does Not Apply
`A few months after Judge Stark’s order, the court issued the Chemours decision, which
`clarified that a genuine dispute about cumulativeness is insufficient to apply IPR estoppel under
`35 U.S.C. § 315(e)(2). This development in the law confirms that further fact-finding is
`unnecessary to hold that IPR estoppel does not apply to CyberDesk.
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`In Chemours, the court had also initially denied summary judgment of IPR estoppel on the
`basis that “there was at least a factual dispute” as to the cumulativeness of prior art products and
`related publications. 2022 WL 2643517, at *1. However, it ultimately held that “[a]s a matter of
`statutory interpretation, estoppel does not apply to prior-art products that [defendant] relies on . . .
`regardless of whether those products are ‘cumulative.’” Id.3 Estoppel does not bar any invalidity
`theory—or “ground”—based in part on a prior art product because “any invalidity theory relying
`upon that product as a prior art reference is not a ‘ground’ that reasonably could have been raised
`during the IPR.” Id. *1–2 (discussing canons of statutory construction); see also Microchip Tech.
`Inc. v. Aptiv Servs. US LLC, 2020 WL 4335519, at *4 (D. Del. July 28, 2020) (“On its face,” the
`statute “does not estop references based on physical prior art”).
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`To be sure, in Wasica Finance GmbH v. Schrader Int’l, Inc., 432 F. Supp. 3d 448 (D. Del.
`2020), the court referred to cumulativeness in applying estoppel. However, the scenario in that
`case is distinguishable, as the parties agreed that prior art ZR-1 sensors and a printed publication
`called Siuru were materially identical and differed in labels only. Id. at 453–55 & n.5. Therefore,
`in view of Wasica, Chemours stands for the rule that cumulativeness is irrelevant at least where
`the prior art system is not materially identical to and merely a substitution for a single printed
`publication. Here, Arendi has not pointed to any single printed publication that discloses all the
`material features of CyberDesk. Indeed, there is none. As in Chemours, estoppel does not apply.
`III. Arendi Has Not Carried Its Burden of Proving that Prior Art Estoppel Applies
`Arendi has the burden to prove by a preponderance of the evidence that Google “reasonably
`could have raised” CyberDesk during IPR. Ironburg Inventions Ltd. v. Valve Corp., -- F.4th --,
`2023 WL 2749199, at *13–15 (Fed. Cir. 2023). To the extent the Court reaches any fact issues (it
`need not, see §§ I–II), Arendi does not come close to carrying its burden.
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`First, Arendi’s assertion that CyberDesk does not exist apart from printed publications has
`no evidentiary support. As Google explained in its summary judgment briefing, Dr. Dey testified
`that he publicly demonstrated CyberDesk “dozens” or “hundreds” of times through 1997–1998.
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`2 Arendi does not dispute Judge Stark’s ruling that Google is not estopped from raising the three
`other prior art systems in its narrowed invalidity grounds: Apple Data Detectors, Newton, and
`Word 97. See D.I. 391 at 14–18. Arendi also does not dispute that Google is “not barred from
`presenting combinations that consist of [an estopped reference] with non-estopped prior art
`references and systems.” Id. at 10 (emphases in original). Thus, even under Arendi’s theory, there
`is no estoppel for CyberDesk combined with Apple Data Detectors, Newton, or Word 97.
`3 All emphases are added unless otherwise noted.
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`Case 1:13-cv-00919-JLH Document 457 Filed 04/13/23 Page 4 of 5 PageID #: 48796
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`The Honorable Jennifer L. Hall
`April 13, 2023, Page 3
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`D.I. 348 (Opp.) at 16–17. Nor is there any basis for Arendi’s argument that Google needs an
`“operable” prior art version of CyberDesk to demonstrate to the jury. D.I. 456 at 2. As Judge Stark
`recognized, “[m]ultiple references can be used ‘to demonstrate and support how [a prior art
`system] functioned at the time.’” D.I. 391 at 20 (collecting cases); see, e.g., Zenith Elecs. Corp. v.
`PDI Commc’n Sys., Inc., 522 F.3d 1348, 1358 (Fed. Cir. 2008) (product sheet, fact testimony). A
`system “need not work to qualify as prior art.” Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l
`LLC, 618 F.3d 1294, 1302 (Fed. Cir. 2010).
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`Second, Dr. Dey’s testimony is more than adequate to establish CyberDesk’s features. For
`one thing, Google is not relying on his testimony alone for material aspects of CyberDesk, so
`Arendi is incorrect that corroboration is required. See D.I. 456 at 2 (citing cases where testimony
`alone was asserted for invalidation). Even if it applies, the corroboration inquiry asks only whether
`there is evidence that “makes [the inventor’s testimony] credible”; it is a “flexible” inquiry that
`does not require that every factual assertion be individually corroborated. Fleming v. Escort Inc.,
`774 F.3d 1371, 1377 (Fed. Cir. 2014). Thus, when determining whether “testimony is sufficiently
`corroborated, [courts] apply a rule-of-reason analysis and consider all pertinent evidence.” Mosaic
`Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1363 (Fed. Cir. 2022); see Sandt Tech., Ltd. v.
`Resco Metal & Plastics Corp., 264 F.3d 1344, 1351 (Fed. Cir. 2001) (illustrative factors). In any
`event, Dr. Dey’s testimony is corroborated by evidence including printed publications, screen
`shots, and other website materials that are consistent with his testimony, and the extent and details
`of his testimony and lack of contradicting evidence also weigh toward sufficient corroboration.4
`See, e.g., D.I. 349 Ex. 8 ¶¶ 120–34 (summarizing context, including testimony, for CyberDesk).
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`Third, Arendi has failed to prove “cumulativeness.” Evidence of CyberDesk’s availability
`and relevant features draws not only from printed publications (which disclose less than all
`material features) but also non-cumulative disclosures from other sources, such as website
`materials (including code fragments, screen shots, and conference posters), slides, lab notebooks,5
`and Dr. Dey’s testimony. D.I. 348 at 14–15; D.I. 349 Ex. 8 (Fox Rep.) ¶¶ 120, 133. This evidence
`shows that CyberDesk is materially different from any printed publications. For example, the
`printed publications available as of mid-1997, by themselves, do not expressly disclose that the
`system could be used with word processing software; could search and display maps related to a
`street address; and could insert information back into an analyzed document, all of which are
`relevant to whether and how asserted claim limitations are disclosed. See, e.g., D.I. 349 Ex. 8
`¶ 121; id. Ex. 18 (Dey Dep.) at 61, 176–77. Dr. Dey also explains how CyberDesk operated in
`much more detail than the printed publications. See D.I. 348 at 15–18. Such additional capabilities
`and context make CyberDesk a far more important, understandable, and compelling reference than
`the printed publications alone.
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`4 Arendi’s passing argument that “written documents” cannot support a system, D.I. 456 at 3 n.3,
`misreads the non-binding Singular case. Regardless, Judge Stark has held that Google is not barred
`from relying on printed publications related to prior art systems, “provided that these publications
`are not presented as individual prior art references.” D.I. 391 at 18 (citing SPEX Techs. Inc. v.
`Kingston Tech. Corp., 2020 WL 4342254 (C.D. Cal. June 16, 2020)).
`5 Materials like webpages, slides, and notebooks do not necessarily qualify as prior art printed
`publications. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016).
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`Case 1:13-cv-00919-JLH Document 457 Filed 04/13/23 Page 5 of 5 PageID #: 48797
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`The Honorable Jennifer L. Hall
`April 13, 2023, Page 4
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`DEM:nmt/10746717
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`cc:
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`Clerk of the Court (via hand delivery)
`Counsel of Record (via electronic mail)
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`Respectfully,
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`/s/ David E. Moore
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`David E. Moore
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