Case 1:13-cv-00919-JLH Document 473 Filed 04/20/23 Page 1 of 4 PageID #: 49951
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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
`REGARDING EVIDENCE OF INTER PARTES REVIEW
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`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
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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
`
`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`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 20, 2023
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`Case 1:13-cv-00919-JLH Document 473 Filed 04/20/23 Page 2 of 4 PageID #: 49952
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`April 20, 2023
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`Dear Judge Hall:
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`Google respectfully requests rulings from the Court before trial as to the scope of evidence
`and argument regarding inter partes review (“IPR”) No. IPR2014-00208 that the parties can
`present to the jury. Based on correspondence between the parties on April 19, 2023, it has become
`clear that both Arendi and Google want the jury to hear about the IPR to some extent. However,
`the parties vigorously dispute what evidence and arguments about the IPR are permissible and for
`what purposes the jury can properly consider the IPR. In particular:
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` Google wants to introduce high-level evidence about the IPR (without delving into the prior
`art grounds or rulings that are not relevant) for the narrow purpose of showing objective
`evidence of Google’s good faith belief that the ’843 Patent was invalid, which is critical for
`defending against Arendi’s allegation of post-suit willfulness.
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` Arendi apparently wants to introduce detailed substantive evidence about the IPR (including
`Google’s prior art grounds there and rulings on each ground) to make misleading arguments
`that the Patent Office and Federal Circuit have already considered and confirmed the validity
`of the ’843 Patent, and/or that Google has already tried but failed to invalidate the patent.
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`There can be no genuine dispute that the Patent Trial and Appeal Board’s (“PTAB”) Final
`Written Decision is probative of Google’s belief of invalidity, which in turn is directly relevant to
`Arendi’s claim of willfulness; the Federal Circuit has so held. Eko Brands, LLC v. Adrian Rivera
`Maynez Enters., Inc., 946 F.3d 1367, 1377–79 (Fed. Cir. 2020). And as other courts have found,
`final IPR determinations are highly probative of that narrow issue and, if introduced for that limited
`purpose, admissible over any minimal risk of prejudice or confusion. See, e.g., Contour IP
`Holding, LLC, 2021 WL 75666, at *8 (N.D. Cal. Jan. 8, 2021); see also K-Tec, Inc. v. Vita-Mix
`Corp., 696 F.3d 1364, 1376 (Fed. Cir. 2012) (noting trial court discretion to admit Patent Office
`proceedings). By contrast, Arendi seeks to use the IPR to introduce irrelevant, highly prejudicial,
`and confusing evidence that risks unduly influencing the jury’s consideration of invalidity.
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`To balance the significant probative value of the IPR for willfulness and further reduce the
`minimal countervailing risks, Google requests (1) cabining the evidence about the IPR to the
`attached proposed stipulation of facts (Ex. A) to be read and/or provided to the jury, and (2)
`providing the jury with the attached limiting instruction (Ex. B).
`I.
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`Background
`Arendi filed this suit on May 22, 2013. See D.I. 1. Shortly thereafter, on December 2, 2013,
`Google filed an IPR Petition at the PTAB, challenging the validity of the ’843 Patent. See IPR2014-
`00208, Pet. (Paper 1). On June 11, 2014, the PTAB instituted IPR on one of four grounds:
`obviousness over Pandit (U.S. Patent No. 5,859,636) alone. Id., Inst. Dec. (Paper 8) at 15–18.1
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`On June 9, 2015, the Patent Office issued its IPR Final Written Decision, holding that the
`Asserted Claims of the ’843 Patent were unpatentable as obvious over Pandit. Id., Final Written
`Dec. (Paper 33) at 15. Notably, it found that Pandit taught all of the limitations of the Asserted
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`1 The PTAB issued its Institution Decision before SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348
`(2018), which required institution of all claims on all grounds raised in an IPR petition.
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`Case 1:13-cv-00919-JLH Document 473 Filed 04/20/23 Page 3 of 4 PageID #: 49953
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`The Honorable Jennifer L. Hall
`April 20, 2023
`Page 2
`Claims except for performing a search using “first information” (a telephone number) but that it
`was “common sense” that a subroutine in Pandit would search for duplicate telephone numbers to
`determine if a potential new contact had already been entered. Id. at 9–10. Arendi appealed on the
`“single question” of “whether the Board misused ‘common sense’ to conclude that it would have
`been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed
`invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016).
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`On August 10, 2016, the Federal Circuit reversed the IPR Final Written Decision.
`Importantly, Arendi did not challenge—and the Federal Circuit Decision did not disturb—any of
`the Patent Office’s findings regarding Pandit’s disclosures. Rather, the court held that “common
`sense is typically invoked to provide a known motivation to combine, not to supply a missing claim
`limitation,” and “cannot be used as a wholesale substitute for reasoned analysis and evidentiary
`support, especially when dealing with a limitation missing from the prior art references specified.”
`Id. at 1361–62 (emphasis in original). In other words, common sense alone could not supply the
`“search” limitation missing from Pandit. However, Google was not foreclosed from arguing (as it
`does for some of its prior art grounds for trial) that a non-estopped reference discloses the “search”
`limitation and, together with Pandit, renders the Asserted Claims invalid as obvious.
`II.
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`IPR Evidence Should Only Be Admitted for the Narrow Purpose of Willfulness
`Evidence of the PTAB’s Final Written Decision and the fact that the Federal Circuit
`reversed it only on a legal basis not relevant to trial is critically relevant to Google’s defense against
`Arendi’s charge of willfulness, and it is admissible for that limited purpose. As the parties agree,
`a jury analyzing willfulness can consider the defendant’s subjective belief regarding the invalidity
`of the asserted patent. See D.I. 452 (Proposed Jury Instructions) at 31–32. Indeed, willfulness
`requires a finding that the defendant “deliberately or intentionally infringed,” and the Federal
`Circuit has expressly approved as “correct” an instruction directing the jury to consider belief in
`invalidity. Eko, 946 F.3d at 1379; C.R. Bard Inc. v. AngioDynamics Inc., 979 F.3d 1372, 1380
`(Fed. Cir. 2020) (for willfulness, “the question of whether [defendant] reasonably believed that the
`asserted claims were invalid was a question of fact for the jury”). Hence, admissibility of the IPR’s
`outcome for willfulness purposes turns on Fed. R. Evid. 403 balancing.
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`Several courts have recognized that evidence of an IPR decision is not just relevant but
`highly probative of the scienter requirement for willfulness and have admitted it for that limited
`purposes over any countervailing risks. See, e.g., Contour, 2021 WL 75666, at *8 (allowing IPR
`evidence for willfulness purposes despite otherwise excluding it); Ericsson Inc. v. TCL Commc’n
`Tech. Holdings, Ltd., 2017 WL 5137401, at *6 (E.D. Tex. Nov. 4, 2017), rev’d on other grounds,
`955 F.3d 1317 (Fed. Cir. 2020) (“Nothing will prevent [a defendant accused of willful
`infringement] from telling the jury that it had a good faith belief that the [asserted] patent was
`invalid,” and a PTAB decision “is evidence of the reasonableness of that belief.”). Even when IPR
`evidence is excluded “with respect to the merits” of validity, this court has acknowledged that it
`may nonetheless be admissible “as it relates to intent.” Hologic, Inc. v. Minerva Surgical, Inc.,
`2018 WL 3348998, at *4 (D. Del. July 9, 2018). Here, there is no material risk of prejudice or
`confusion for several reasons: the IPR coincided with the period of alleged post-suit willfulness;
`the IPR is complete; and the basis for the Federal Circuit Decision (use of common sense to gap-
`fill a limitation missing in asserted prior art) is not at issue. Google would only need to explain,
`without delving into substantive details, that the IPR Final Written Decision is evidence of
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`Case 1:13-cv-00919-JLH Document 473 Filed 04/20/23 Page 4 of 4 PageID #: 49954
`
`The Honorable Jennifer L. Hall
`April 20, 2023
`Page 3
`Google’s reasonable belief in invalidity because it found the Asserted Claims to be obvious, and
`while the Federal Circuit reversed, it did so only on a legal basis not relevant here.
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`To minimize any risk of improper use, prejudice, or confusion, Google proposes that the
`Court read the attached proposed stipulation (Ex. A) into the record, bar any other evidence
`regarding the IPR, and provide the attached proposed limiting jury instruction (Ex. B). The
`instruction will eliminate any possible prejudice by informing the jury of the limited purpose for
`which it can consider the evidence.
`III.
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`IPR Evidence and Argument Relating to Validity Should Be Excluded
`Arendi, by contrast, seeks to admit extensive evidence about the substance of, and evidence
`presented in, the IPR proceeding, evidently to persuade the jury that the Patent Office and Federal
`Circuit have already confirmed the ’843 Patent’s validity. Without clear guardrails for what
`evidence and argument about IPR is permissible, therefore, there will be a side show at trial over
`the merits of Google’s IPR petition and the purported implications of the Patent Office and Federal
`Circuit decisions on the jury’s invalidity determination. Those issues have no relevance and are
`highly prejudicial.
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`First, none of Google’s prior art grounds for trial were at issue in the IPR, so their merits
`have not been analyzed by the Patent Office or Federal Circuit.2 Second, the Federal Circuit only
`held that the ’843 Patent is not invalid over a single-reference obviousness ground: Pandit alone.
`There was no ruling that the patent is affirmatively “valid” against all other invalidity theories.
`Any suggestion otherwise on these issues is wrong and designed to put a thumb on the scale for
`validity. It would be unfair and prejudicial to Google and waste limited trial time to have to rebut
`these misleading arguments by trying to explain the limitations and differences of IPR proceedings
`to the jury. This and other courts have regularly excluded IPR evidence when offered for validity
`purposes. E.g., Evolved Wireless, LLC v. Apple Inc., 2019 WL 1100471, at *3 (D. Del. Mar. 7,
`2019); Contour, 2021 WL 75666, at *8; Intell. Ventures II LLC v. FedEx Corp., 2018 WL
`10638138, at *4 (E.D. Tex. Apr. 26, 2018). The Court should do the same here.
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`Respectfully,
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`/s/ David E. Moore
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`David E. Moore
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`DEM:nmt/10767855/12599.00040
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`Enclosure
`cc:
`Clerk of the Court (via hand delivery)
`Counsel of Record (via electronic mail)
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`2 Arendi cannot argue to the jury that Google reasonably could have raised the grounds in IPR. As
`the parties agree, that is an issue of estoppel under 35 U.S.C. § 315(e)(2), which is for the Court
`to decide before the trial. See D.I. 456 (Arendi Letter on IPR Estoppel); D.I. 457 (Google Resp.).
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