Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 1 of 6 PageID #: 50978
`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 1 of 6 PagelD #: 50978
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`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 1 of 6 PagelD #: 50978
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`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 2 of 6 PageID #: 50979
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`Google’s 4/23/2023 Counterproposal
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`PROPOSED STIPULATION: INTER PARTES REVIEW DETERMINATIONS
`
`
`U.S. Patent No. 7,917,843 (“’843 Patent”) was the subject of a proceeding at the Patent
`Office called inter partes review, also referred to as “IPR.” An IPR permits a petitioner to request
`cancellation of patent claims as unpatentable on the basis of prior art consisting of patents or
`printed publications. Specifically:
`
`● On December 2, 2013, Google filed an IPR arguing that the Asserted Claims of the
`’843 Patent were unpatentable in light of a few prior art grounds. Those grounds were
`all different from the prior art grounds that Google is raising in this trial because in an
`IPR a petitioner like Google cannot raise any prior art systems or products.
`
`● On June 11, 2014, the Patent Office instituted IPR on one of the prior art grounds.
`
`● On June 9, 2015, the Patent Office issued a Final Written Decision in the IPR, holding
`that the Asserted Claims of the ’843 Patent were unpatentable in light of the instituted
`prior art ground.
`
`● On August 10, 2016, the United States Court of Appeals for the Federal Circuit, also
`known as the “Federal Circuit,” held that Google did not prove unpatentability in light
`of the instituted prior art ground. The basis for the Federal Circuit’s decision is not
`relevant to any of the invalidity grounds raised by Google in this trial.
`
`The litigation in this court was stayed and therefore became inactive on February 24,
`2014 in order to allow for final resolution of the IPR. The case restarted on October 23, 2018
`after the IPR proceedings were completed.
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 3 of 6 PageID #: 50980
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`Google’s 4/23/2023 Counterproposal
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`PROPOSED LIMITING INSTRUCTION
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`Inter Partes Review Determinations
`
`The ’843 Patent was the subject of a proceeding at the Patent Office called inter partes
`
`review, also referred to as “IPR.” An IPR permits a petitioner to request cancellation of patent
`
`claims as unpatentable on the basis of prior art consisting of patents or printed publications.
`
`The Patent Office ruled that Google had demonstrated a reasonable likelihood that it
`
`would prevail on one of the prior art grounds that it raised in the IPR.
`
`The Patent Office issued a Final Written Decision in the IPR finding that the Asserted
`
`Claims of the ’843 Patent were unpatentable in view of the instituted prior art reference.
`
`The United States Court of Appeals for the Federal Circuit, also referred to as the
`
`“Federal Circuit,” determined that Google had not demonstrated that the patent should be
`
`cancelled in light of the instituted prior art ground. The basis for the Federal Circuit’s decision is
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`not relevant to any of the invalidity grounds raised by Google in this trial.
`
`The prior art grounds that Google raised in the IPR are all different from the prior art
`
`grounds that it is raising this trial because in an IPR a petitioner like Google cannot raise any
`
`prior art systems or products.
`
`You may consider this evidence for the purposes of assessing: (1) whether Google
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`believed the ’843 Patent was invalid for purposes of determining willfulness, if any; and (2)
`
`whether or not there is overlap between the prior art references that Google relied upon in the
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`IPR and that Google is relying on in this trial.
`
` You must independently determine whether Google has proven that the patent is invalid.
`
`You may choose to reach a different result for any or all of the following reasons:
`
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`2
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 4 of 6 PageID #: 50981
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`Google’s 4/23/2023 Counterproposal
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`1. The Patent Office and the Federal Circuit did not consider the same prior art
`
`grounds that are being presented to you in this case.
`
`2. 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.
`
`3. The Patent Office and the Federal Circuit did not have the benefit of the live
`
`testimony or cross examination that you do.
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`4. The legal standards applied in the decisions by the Patent Office and Federal
`
`Circuit differ from the legal standards that you must apply in this case.
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`3
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 5 of 6 PageID #: 50982
`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 5 of 6 PagelD #: 50982
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`EXHIBIT B
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`-00919-JLH Document 484-1 Filed 04/24/23 Page 6 of 6 PagelD
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`Case 1:13-cv-00919-JLH Document 484-1 Filed 04/24/23 Page 6 of 6 PageID #: 509830983
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