Case 1:13-cv-00919-JLH Document 484 Filed 04/24/23 Page 1 of 4 PageID #: 50974
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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 UPDATE ON GOOGLE’S POSITION ON IPR EVIDENCE
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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 24, 2023
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`Case 1:13-cv-00919-JLH Document 484 Filed 04/24/23 Page 2 of 4 PageID #: 50975
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`Dear Judge Hall:
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`April 24, 2023
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`Per the Court’s instruction on April 21, Google respectfully submits this letter update on
`the parties’ positions regarding the use of IPR evidence and argument at trial. The parties have met
`and conferred over the weekend and are currently at an impasse:
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` On Saturday morning, in an effort to reach a compromise, Google informed Arendi that it
`would not be presenting the Pandit reference at trial, which would remove any overlap in the
`prior art references relied upon in the IPR and trial—i.e., Arendi’s stated basis for presenting
`the IPR proceeding to the jury. See D.I. 476 (4/21/23 Arendi Letter) at 3. Google proposed that
`the parties agree not to present any evidence, testimony, or argument concerning the IPR
`proceedings to the jury (including any and all aspects of those proceedings and the related
`appeals), in order to avoid risk of confusing the jury and tainting the trial.1
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` Arendi declined Google’s proposal, stating its disagreement that evidence of IPR
`determinations may only be admissible to defend against a claim of willfulness.
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` On Sunday, in further efforts to resolve the issue, the parties traded counterproposals on a
`proposed stipulation and limiting instruction. However, they were unable to reach a resolution.
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` Attached as Exhibit A is Google’s final proposal of compromise.2
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` Arendi’s final proposal dropped any contemporaneous limiting instruction about the IPR
`proceeding, which Google believes would only serve to increase the risk of misleading and
`confusing the jury.
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`Google refers the Court to its letter brief filed on April 20 (D.I. 473), with the following
`updated positions:
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`
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`It has become even more clear that Arendi wants to introduce evidence about the IPRs for
`improper purposes, such as to expressly or implicitly suggest to the jury that Google already
`tried and failed multiple times to invalidate the ’843 Patent; that Google is seeking a do-over
`in district court; and that the Patent Office and Federal Circuit have already green-lighted the
`validity of the ’843 Patent. For example, in its proposed opening demonstrative PX1 at 48,
`Arendi asserts regarding the 2016 date of the Federal Circuit’s IPR decision: “Google Further
`Review of Patent Unsuccessful”—omitting that the review was only as to one prior art ground
`(single-reference obviousness in view of Pandit) that is no longer at issue for trial. See Ex. B.
`The slide also shows a green check mark on that date, meant to suggest to the jury that the
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`1 Under this compromise, while Google would not raise the IPR proceeding to the jury for purposes
`of willfulness, it would reserve the right to do so for any subsequent enhancement assessment
`before the Court, where there is no risk of misleading or confusing the jury.
`2 Google offered this proposal on the condition that (1) the Court would read and/or provide a hard
`copy of the stipulation to the jury when one of the parties first asks for it at a relevant time during
`trial; and (2) the parties would not introduce any other evidence regarding the IPR to the jury or
`make any arguments that contradict the stipulation to the jury.
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`Case 1:13-cv-00919-JLH Document 484 Filed 04/24/23 Page 3 of 4 PageID #: 50976
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`The Honorable Jennifer L. Hall
`April 24, 2023, Page 2
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`Patent Office and Federal Circuit found the ’843 Patent to be valid, rather than not unpatentable
`in view of only one particular prior art ground.
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` Arendi’s intended arguments regarding patent validity are incomplete, misleading, and highly
`prejudicial. An IPR petitioner is restricted in what prior art grounds it can raise (and can only
`argue invalidity based on anticipation or obviousness); the considerations for which grounds
`to raise and why may be different in an IPR than in a jury trial; an IPR institution decision is
`without a fulsome record and has no statutory estoppel effect; an IPR proceeding is based on
`the PTAB’s own claim construction and different legal standards; and an IPR outcome relates
`to specific prior art grounds and cannot find that a patent is valid. Furthermore, in this situation,
`the Patent Office and Federal Circuit did not consider any of the same prior art grounds or all
`the same evidence that Google now relies on for trial. See, e.g., Vaporstream, Inc. v. Snap Inc.,
`2020 WL 978731, at *8 (C.D. Cal. Feb. 28, 2020) (excluding IPR evidence because even if
`there were “marginal relevance” there was “danger of jury confusion and wasting of time and
`resources,” plus the need to explain various differences and limitations with IPR that would
`“potentially lead to jury confusion over the invalidity issues in the case”); Bio-Rad Labs., Inc.
`v. 10X Genomics, Inc., 2018 WL 6629705, at *1 (D. Del. Oct. 12, 2018) (“failure to institute
`an IPR has little or no probative value” and is “substantially outweighed by the risk of
`confusing the issues, misleading the jury, and undue delay for time spent providing appropriate
`context”).
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` Google no longer plans to (1) rely on any of the prior art references that was considered in the
`IPR; or (2) provided Arendi does not open the door, affirmatively introduce evidence about
`the IPR proceeding to the jury. Therefore, the IPR proceedings are no longer relevant to any
`issue that the jury will be asked to decide. There is no legitimate argument that IPR evidence
`should be admissible before the jury, even with a limiting instruction. See Breakiron v. Horn,
`642 F.3d 126, 147 (3d Cir. 2011) (recognizing that exposure to some evidence “may be so
`prejudicial that it cannot be cured even by a proper limiting instruction.”); see also HVLPO2,
`LLC v. Oxygen Frog, LLC, 949 F.3d 685, 690 (Fed. Cir. 2020) (recognizing evidence that
`“substantially prejudiced the outcome of the case” paired with an inadequate limiting
`instruction required a new trial).
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` Arendi cannot be heard to complain that Google did not raise a MIL on this issue. Arendi did
`not have the IPR petition, PTAB decisions, or related Federal Circuit decision on its trial
`exhibit list when the parties exchanged MILs on March 13, 2023, or when the parties filed
`their Proposed Joint Pretrial Order (including MILs) on March 27, 2023. See D.I. 443 Ex. 6P.
`In fact, Arendi did not indicate that it might introduce IPR evidence at trial until April 4, 2023,
`when it untimely amended its trial exhibit to add IPR documents at PX785 through PX787. As
`shown in the April 14, 2023 Revised Proposed Joint Pretrial Order, Google then raised
`numerous objections to those exhibits, including untimely disclosure, relevance, prejudice,
`confusion, misleading, cumulative, and waste of time. See D.I. 460-1 Ex. 6P. In contrast,
`Google had IPR evidence on its initial exhibit list. Rather than have the parties dispute the
`admissibility of IPR evidence and curative instructions during trial, Google wanted to raise the
`issue with the Court beforehand to obtain clarity on this complex issue and minimize potential
`jury confusion.
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`Case 1:13-cv-00919-JLH Document 484 Filed 04/24/23 Page 4 of 4 PageID #: 50977
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`The Honorable Jennifer L. Hall
`April 24, 2023, Page 3
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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/10770841/12599.00040
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`Enclosures
`cc:
`Clerk of the Court (via hand delivery)
`Counsel of Record (via electronic mail)
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