_ Case 1:13-cv-00919-JLH Document 476 Filed 04/21/23 Page 1 of 4 PagelD #: 50470
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`C.A. No. 13-919-JLH
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`ARENDI S.A.RL.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
`
`
`LETTER TO THE HONORABLE JENNIFER L. HALL FROM NEAL BELGAM
`OPPOSING GOOGLE’S UNTIMELY MOTIONIN LIMINE TO PRECLUDE
`EVIDENCE OF IPR PROCEEDINGS
`
`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Daniel Taylor (No. 6934)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`dtaylor@skjlaw.com
`
`Attorneysfor PlaintiffArendi S.A.R.L,
`
`Of Counsel:
`
`SUSMAN GODFREY LLP
`Seth Ard (pro hacvice)
`Max Straus (pro hac vice)
`1301 Avenue of the Americas, 32"! Floor
`New York, NY 10019
`sard@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad (pro hac vice)
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`
`Kalpana Srinivasan (pro hac vice)
`1900 Avenueof the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`Kemper Diehl (pro hac vice)
`401 Union Street, Suite 3000
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`Dated: April 21, 2023
`
`

`

`, Case 1:13-cv-00919-JLH Document 476 Filed 04/21/23 Page 2 of 4 PagelD #: 50471
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`Dear Judge Hall:
`
`Arendi respectfully requests the Court deny Google’s motion in limine to preclude
`évidence of IPR proceedings and its accompanying one-sided and highly misleading “Proposed
`Stipulation of Fact.” D.I. 473, 473-1, Google’s motion is untimely—the deadline to exchange
`motions in limine passed in March, see, e.g., D.I. 437 (March 13, 2023, deadline to exchange
`motions in limine)}—and Googleraised this issue to Arendi’s counsel for the first time two days
`ago. Google included IPR pleadings on its own exhibit list, including the institution decision in
`the IPR.
`
`Putting aside the procedural flaw, Google’s motion is substantively improper. It wants to
`use a reversed IPR ruling as a sword—both to defend against Arendi’s willfulness claim and to
`create the misimpressionthat the PTAB has blessed Google’s invalidity theories. At the sametime,
`Google seeks to preclude Arendi from explaining 1) that the Federal Circuit’s ruling reversed the
`entirety of the PTAB’s invalidity decision; i1) that the PTAB already rejected other grounds of
`invalidity that Google will present in this trial; and iii) that Google elected not to raise other
`grounds during the IPR even thoughit had the opportunity to do so.
`
`Google petitioned to institute IPR in 2013 on four obviousness grounds: “LiveDoc/Drop
`Zones,” Miller, Luciw and Pandit. See generally Ex. A (Petition to Institute IPR). The PTAB
`- denied Google’s petition as to the first three grounds, finding Google “had not demonstrated a
`reasonablelikelihood that it would prevail,” even under the PTAB’s lower preponderance-of-the-
`evidence standard. Ex. B (Institution Decision), at 11, 13, 14. Although the PTAB proceeded to
`find Arendi’s claims unpatentable in view of Pandit, the Federal Circuit reversed the Board’s
`decision, rendering the PTAB’s final written decision a nullity. Arendi S.A.R.L. v. Apple Inc., 832
`F.3d 1355, 1367 (Fed. Cir. 2016).
`
`Attrial, Google intends to assert several validity theories closely related to those that were
`rejected during IPR,
`including obviousness combinations made up of Pandit, “Apple Data
`Detectors System,” and “Newton System.” Ex. C (email from R. Unikel, dated Apr. 7, 2023),
`Google will attempt to use aspects of the LiveDoc reference and Miller patentit raised in the PTAB
`as evidence of the “Apple Data Detectors System,” and it will use the Luciw patent it previously
`raised in the PTABas evidence of the “Newton System.” Ex. D (excerpts from Fox invalidity
`report).
`
`Courts consistently hold that where, as here, “there is overlap” between “the priorart
`referenced”in “the IPR”and the “prior art references that”the defendant “relies upon forits
`invalidity theories”at trial, that overlap weighs in favor of and supports the “admissibility of
`the IPR proceedings.” Whereverty, Inc. v. Comcast Cable Commce’ns, LLC, No. 2:18-CV-529-
`WJF-NPM, 2023 WL 2664200, at *6-7 (M.D. Fla. Mar. 28, 2023); accord Cal. Inst. of Tech. v.
`Broadcom Ltd., Dkt. 1976, No. 16-03714 (C.D. Cal. Jan. 17, 2020) (Doc. 384-27, Ex. 26) at 4
`(admitting evidence regarding IPR proceedings to the extent that the defendants “open the door”
`by referencingat trial prior art that they had relied upon in the IPR); Dentsply Sirona Inc. v. Edge
`Endo, LLC, No. 1:17CV1041-JFB-SCY, 2020 WL 6392764, at *5 (D.N.M. Nov. 2, 2020)
`(denying motion to exclude evidence of IPR proceedings “to the extent that the defendants open
`the door by referencing at trial prior art that they had relied upon in the IPR”) (internal quotes
`omitted); see also Universal Elecs., Inc. v. Universal Remote Control, Inc., No. SACV 12-00329
`
`2
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`

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`_ Case,1:13-cv-00919-JLH Document 476 Filed 04/21/23 Page 3 of 4 PagelD #: 50472
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`AG, 2014 WL 8096334, at *7 (C.D. Cal. Apr. 21, 2014) (denying defendant’s motion to exclude
`evidence concerning IPR); Dexcowin Glob., Inc. v. Aribex, Inc., No. CV 16-143-GW(AGRX),
`2017 WL 3478492, at *3 (C.D. Cal. June 29, 2017) (same, holding case law only supports
`excluding pending IPR proceedings, and not PTAB decisions); StoneEagle Servs., Inc. v. Pay-
`Plus Sols., Inc., No. 8:13-CV-2240-T-33MAP, 2015 WL 3824208, at *8—~9 (M.D. Fla. June 19,
`2015) (denying motion to exclude PTAB’s decision denying institution of IPR, where, as here,
`defendant had initiated IPR and PTAB “expressly concluded” that defendant had “failfed] to
`demonstrate a reasonable likelihood of prevailing in showing the un-patentability of any of the
`challenged claims.”). Here, the overlap is present in the form of numerous combinations that
`include previously presented (and estopped art), which raises the risk the of the jury
`misunderstanding what art it can and cannot rely on. Google further intends to raise invalidity
`grounds comprising otherprior art that they could have raised during IPR but did not. See, ¢.g.,
`D.I. 456 (letter regarding IPR estoppel). After Broadcom, whenthere is overlap betweentheart
`that defendant raised, or could have raised, in the IPR and the art Defendant relies uponfor its
`invalidity theory at trial, evidence relating to the IPR proceeding should be admitted. California
`Inst. of Tech. v. Broadcom Ltd., 25 F 4th 976, 991 (Fed. Cir. 2022),
`
`Additionally, Google cannotrely on IPR to bolsterits defense, while seeking to keep out
`aspects of IPR that undercut them. See Cal. Inst. of Tech. v. Broadcom Ltd., Dkt. 1976, No. 16-
`03714 (C.D. Cal. Jan. 17, 2020) (Doc. 384-27, Ex. 26) at 4 (admitting evidence regarding IPR
`proceedings to the extent that the defendants “open the door” by referencingat trial priorart that
`they had relied upon in the IPR). Google intends to introduce evidence about IPR for the alleged
`“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.” D.I.
`473. That opens the door. The defendants in Dentsply Sirona Inc. v. Edge Endo, LLC, No.
`1:17CV1041-JFB-SCY, 2020 WL 6392764, at *4—5 (D.N.M. Nov. 2, 2020), similarly sought to
`rely on a counsel’s opinion concerning the IPR proceedings as a defense to willful infringement,
`while simultaneously moving to exclude evidence of the PTAB’s non-institution decision. Jd. The
`Court denied the motion, explaining, “Defendants opened the door. They cannot expect to enter
`such evidence on their behalf and then argue that the plaintiffs cannot do so,” Jd,
`
`Google also seeks to leverage the PTAB’s decision to incorrectly suggest that a tribunal
`has blessed portions of its invalidity defense. By its instruction, Google wants to leave the jury
`with the impression that the PTAB “found that Pandit taughtall of the limitations of the Asserted
`Claims except for performing a search using ‘first information’” and that “the Federal Circuit
`Decision did not disturb—any of the Patent Office’s findings regarding Pandit’s disclosures.” D.I.
`473 at 2. That’s the main thrust of Google’s proposed “stipulation.” D.I. 473-1 at 2 (“The Patent
`Office found that Pandit taught all of the limitations of the Asserted Claims except for one:
`‘performing a search...’” and “The legal basis for the Federal Circuit’s decision is not relevant
`to any of the specific invalidity grounds raised by Googlein this trial”), Arendi must be able to
`
`| Ericsson Inc. v. TCL Communication Technology Holdings, Ltd., cited by Google, similarly
`rejected the one-sided use of IPR determinations. No. 2:15-CV-00011-RSP, 2017 WL 5137401,
`at *6 (E.D. Tex. Nov. 4, 2017), rev'd, 955 F.3d 1317 (Fed. Cir. 2020) (holding that defendant’s
`reliance on IPR would permit plaintiff to show defendant “had not proven by a preponderance of
`the evidence that the asserted claims ofthe ’510 patent are invalid” at IPR).
`
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`Case 1:13-cv-00919-JLH Document 476 Filed 04/21/23 Page 4 of 4 PageID #: 50473
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`explain the flaws in Google's logic-namely that the PTAB's decision is a legal nullity; and the
`Court should permit Arendi to explain that the PTAB rejected significant aspects of Google's
`remaining invalidity grounds.
`
`None of the law cited by Google supports excluding all evidence of IPR unhelpful to
`Google. In Evolved Wireless, LLC v. Apple Inc., No. CV 15-542-JFB-SRF, 2019 WL 1100471, at
`*3 (D. Del. Mar. 7, 2019), the Court excluded evidence of the PTAB's non-institution decision
`because i) willfulness was not at issue in that case; ii) the PTAB's decision was on appeal and not
`binding; and iii) the denial of the petition meant there was no estoppel effect. None of those
`predicates apply here.
`
`Google's second case, Contour IP Holding v. GoPro, Inc., LLC, No. 3:l 7-CV-04738-
`WHO, 2021 WL 75666, at *8 (N.D. Cal. Jan. 8, 2021), did not find evidence of IPR irrelevant.
`First, the Court held that the IPR could provide evidence of willful infringement-which is the
`case here where Defendant developed infringing products after Arendi's patent survived IPR.
`Second, the Court allowed that the plaintiff could "introduce IPR evidence to rebut" any
`implication by the Defendant that the PTO had not previously considered the prior art at issue.
`Arendi must similarly have the opportunity to rebut Google's suggestion that the PTAB has
`approved of its invalidity theory.
`
`The final case cited by Google to exclude Arendi's use ofIPR also rejected Google's one­
`sided approach. In Intellectual Ventures 11 LLC v. FedEx Corp., 2018 WL 10638138, at *4 (E.D.
`Tex. Apr. 26, 2018), the Court ruled, "No Party will be permitted to reference any post-issuance
`proceedings without leave of the Court." Intellectual Ventures II LLC does not support Google's
`sword-and-shield tactics.
`
`Google's caselaw also does not support their use of the IPR determination as a defense to
`willfulness. Neither Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 FJd 1367,
`1377-79 (Fed. Cir. 2020), nor C.R. Bard Inc. v. AngioDynamics Inc., 979 F.3d 1372, 1380 (Fed.
`Cir. 2020), even involved IPR. And not one of the other cases cited by Google concerns PTAB
`decisions reversed on appeal. Contour IP Holding v. GoPro, Inc., LLC, No. 3:17-CV-04738-
`WHO, 2021 WL 75666, at *8 (N.D. Cal. Jan. 8, 2021), stated that an unsuccessful IPR could
`provide evidence of willfulness-not the reverse position Google advances. In K-TEC, Inc. v. Vita­
`Mix Corp., 696 F.3d 1364, 1376 (Fed. Cir. 2012), the Court rejected the defendant's challenge to
`informing the jury that the PTO had considered certain prior art during IPR. And, while Hologic,
`Inc. v. Minerva Surgical, Inc., No. 1: 15-CV-1031, 2018 WL 3348998, at *4 (D. Del. July 9,
`2018), acknowledged that some facts about the IPR proceedings might be admissible, it
`precluded "evidence of the PT AB' s findings." Yet Google intends to introduce those findings.
`
`Arendi respectfully requests that the Court deny Google's untimely motion in limine and
`proposed "stipulation of fact."
`
`Respectfully,
`
`Isl Neal C. Belgam
`
`Neal C. Belgam (No. 2721)
` cc: Clerk of Court (via CM/ECF)
` All Counsel of Record (via CM/ECF)
`
`4
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