Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 1 of 6 PageID #: 49955
`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 1 of 6 PagelD #: 49955
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`EXHIBIT A
`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 1 of 6 PagelD #: 49955
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`EXHIBIT A
`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 2 of 6 PageID #: 49956
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`GOOGLE’S PROPOSED STIPULATION OF FACT
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`Inter Partes Review Determinations
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`U.S. Patent No. 7,917,843 (“’843 Patent”) was the subject of a proceeding at the Patent
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`Office called inter partes review, also referred to as “IPR.” An IPR permits a petitioner to request
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`cancellation of patent claims as unpatentable on the basis of prior art consisting of patents or
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`printed publications. Specifically:
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`● On December 2, 2013, Google filed an IPR arguing that the Asserted Claims of the
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`’843 Patent were invalid because they are obvious in light of U.S. Patent No. 5,859,636,
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`also referred to as the “Pandit” reference. That ground is different from the prior art
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`grounds that Google is raising as a defense in this trial.
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`● On June 9, 2015, the Patent Office issued a Final Written Decision in the IPR, holding
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`that the Asserted Claims of the ’843 Patent were invalid because they were obvious in
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`light of Pandit. The Patent Office found that Pandit taught all of the limitations of the
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`Asserted Claims except for one: “performing a search using at least part of the first
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`information as a search term in order to find the second information, of a specific type
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`or types, associated with the search term in an information source external to the
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`document,” but the Patent Office found that limitation would still be obvious to a
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`person of ordinary skill.
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`● Arendi appealed that decision to the United States Court of Appeals for the Federal
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`Circuit, also referred to as simply the “Federal Circuit.” On August 10, 2016, the
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`Federal Circuit reversed the Patent Office’s Final Written Decision regarding Pandit.
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`The legal basis for the Federal Circuit’s decision is not relevant to any of the specific
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`invalidity grounds raised by Google in this trial.
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 3 of 6 PageID #: 49957
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`The litigation in this court was stayed and therefore became inactive on February 24, 2014
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`in order to allow for final resolution of the IPR. The case restarted on October 23, 2018 after the
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`IPR proceedings were completed.
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`2
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 4 of 6 PageID #: 49958
`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 4 of 6 PagelD #: 49958
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`EXHIBIT B
`EXHIBIT B
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 5 of 6 PageID #: 49959
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`GOOGLE’S PROPOSED LIMITING INSTRUCTION
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`Inter Partes Review Determinations
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`The ’843 Patent was the subject of a proceeding at the Patent Office called inter partes
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`review, also referred to as “IPR,” filed by Google. An IPR permits a petitioner to request
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`cancellation of patent claims as invalid on the basis of prior art consisting of patents or printed
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`publications.
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`In the IPR, Google could not have raised, and the Patent Office did not consider, any of
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`the prior art grounds that Google is now relying on in this trial. When I say “prior art grounds,” I
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`mean each combination of prior art that Google contends renders the ’843 Patent invalid for
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`being anticipated or obvious. For example, one such ground is CyberDesk alone, another ground
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`is U.S. Patent No. 5,859,636 (also referred to as the “Pandit” reference) plus the CyberDesk
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`system, and yet another ground is Pandit plus the Apple Data Detectors system. Google is
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`permitted to raise these prior art grounds for you to assess in determining whether the Asserted
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`Claims are invalid.
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`You have heard evidence that the Patent Office issued a Final Written Decision in the
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`IPR finding that the Asserted Claims of the ’843 Patent were obvious in view of the Pandit
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`reference. The Patent Office’s Final Written Decision did not analyze any other prior art
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`grounds.
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`You have also heard evidence that the United States Court of Appeals for the Federal
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`Circuit, also referred to as the “Federal Circuit,” reversed the Patent Office’s decision in the IPR,
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`holding that, for legal reasons not relevant here, the Pandit reference alone does not invalidate
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`the ’843 Patent. The legal basis on which the Federal Circuit ruled does not apply to any of the
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`invalidity grounds raised by Google in this trial.
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`Case 1:13-cv-00919-JLH Document 473-1 Filed 04/20/23 Page 6 of 6 PageID #: 49960
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`You may consider these two decisions by the Patent Office and the Federal Circuit, and
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`no other evidence from the IPR, for the purposes of assessing two things: (1) Google’s belief in
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`the invalidity of the ’843 Patent, which is relevant to whether any infringement by Google was
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`willful; and (2) any argument that the Patent Office already considered the Pandit reference in
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`analyzing whether the Asserted Claims of the ’843 Patent are invalid. You may not consider the
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`decisions by the Patent Office and the Federal Circuit for any other purpose, including for the
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`purpose of determining whether the ’843 Patent is invalid.
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`You must independently determine whether or not Google has persuaded you by clear
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`and convincing evidence that the Asserted Claims of the ’843 Patent are invalid. The decisions
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`by the Patent Office and the Federal Circuit are not binding on you or this Court with regard to
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`any issue in this case, and you may choose to reach a different result for any or all of the
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`following reasons:
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`1.
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`The Patent Office and the Federal Circuit did not consider the same prior art
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`grounds that are being presented to you in this case.
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`2.
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`The Patent Office and the Federal Circuit did not consider the same testimony and
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`all of the same evidence that are being presented to you in this case.
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`3.
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`The Patent Office and the Federal Circuit did not have the benefit of the live
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`testimony or cross examination that you do.
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`4.
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`The legal standards applied in the decisions by the Patent Office and Federal
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`Circuit differ from the legal standards that you must apply in this case.
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`2
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