Case 1:13-cv-00919-JLH Document 485 Filed 04/24/23 Page 1 of 3 PageID #: 50984
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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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`))))))))))
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`LETTER TO THE HONORABLE JENNIFER L. HALL
`FROM NEAL BELGAM REGARDING IPR
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`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
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`Attorneys for Plaintiff Arendi S.A.R.L.
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`Of Counsel:
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`SUSMAN GODFREY LLP
`Seth Ard (pro hac vice)
`Max Straus (pro hac vice)
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`mstraus@susmangodfrey.com
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`John Lahad (pro hac vice)
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
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`Kalpana Srinivasan (pro hac vice)
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
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`Kemper Diehl (pro hac vice)
`401 Union Street, Suite 3000
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
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`Dated: April 24, 2023
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`Case 1:13-cv-00919-JLH Document 485 Filed 04/24/23 Page 2 of 3 PageID #: 50985
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`Dear Judge Hall:
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`At the conference on Friday, this Court directed the parties to meet and confer on how
`much evidence concerning the IPR should come in, and what can and cannot be said about the IPR
`proceeding. Tr. at 6:19-22; 8:8-22. The Court stated that it “sounds like everybody wants to
`mention them.” Id. at The Court also noted this is maybe something that “could have been
`addressed with a motion in limine at the pretrial conference.” Id. at 7:8-11.
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`The parties have been trying to reach a stipulation this weekend regarding the facts of the
`IPR, and we remain hopeful we can. The stipulation would allow the jury to be told about the
`relevant facts, and the parties would agree not to enter any IPR documents.
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`To the extent Google now argues, for the first time, that the jury should be shielded from
`all facts, evidence and testimony relating to the IPR, that is meritless. It is also diametrically
`opposed to the position Google has consistently taken in this litigation:
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` Google wrote this Court on Wednesday night that “both Arendi and Google want the jury
`to hear about the IPR to some extent.” Dkt. 473 (April 20, 2023 Letter from Google)
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` Google’s counsel stated on Friday morning regarding the IPR: “Our proposal is for the
`Court to issue a limiting instruction and some sort of guidance to the jury.”
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` On Wednesday, Google submitted to this Court a proposed limiting instruction on the IPR
`stating:
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`“The ’843 Patent was the subject of a proceeding at the Patent Office called inter
`partes review, also referred to as “IPR,” filed by Google. An IPR permits a
`petitioner to request cancellation of patent claims as invalid on the basis of prior art
`consisting of patents or printed publications…. [T]he Federal Circuit … h[eld] that
`.. the Pandit reference alone does not invalidate the ‘843 patent.” Dkt. 473-1.
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` Google’s exhibit list, to this day, continues to have the IPR Final Written Decision
`on it.
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`Allowing evidence of the IPR is the only permissible course for the reasons set forth in Arendi’s
`April 21 letter, and below. Dkt. 476.
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`First, Google never filed a motion in limine to limit or exclude evidence relating to the
`IPR. To the contrary, it has consistently indicated until Sunday morning that it planned to use the
`IPR at trial. Any attempt by Google to exclude the IPR evidence on the eve of trial has been
`waived by its litigation conduct and would severely prejudice Arendi’s trial presentation.
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`Second, the fact that Google filed and failed to succeed on an IPR and developed infringing
`products after Arendi’s patent survived IPR, is relevant evidence of whether it had a reasonable
`belief of the validity of the patent for purposes of willful infringement. Google’s own case
`recognizes this. Contour IP Holding v. GoPro, Inc., LLC, No. 3:17-CV-04738-WHO, 2021 WL
`75666, at *8 (N.D. Cal. Jan. 8, 2021).
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`Case 1:13-cv-00919-JLH Document 485 Filed 04/24/23 Page 3 of 3 PageID #: 50986
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`Third, the IPRs are relevant for the purposes set forth in Arendi’s prior letter to the Court
`dated April 21, 2023. Dkt. 476.
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`Arendi’s proposal is simple. Absent agreement or instruction from the Court on what the
`relevant facts are, the parties should be permitted to elicit testimony and introduce documents
`regarding the facts of the IPR. In lieu of using those documents, the jury should be instructed on
`the relevant facts. Plaintiff’s proposal, sent to Google, is set forth in the Proposed Stipulation in
`Exhibit A and provides factual information. By contrast, Google’s proposed instructions and
`stipulation improperly confuses and mixes the facts with legal instructions. The only thing the
`jury should be instructed about now is what the facts are, not the law. The parties may argue about
`what those facts mean but the stipulation itself should not do that.
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`Google’s letter from Wednesday asserted that Arendi intends to argue that the Federal
`Circuit “confirmed the ‘843 Patent’s validity.” Not so. What Arendi proposed is that the jury
`should be allowed to hear the facts: the Federal Circuit determined that Google failed to prove the
`patent was invalid during the IPR proceedings (language directly from that opinion). Similarly,
`Google should not be permitted to discuss the reversed IPR decision, which is null and void. In
`those respects, Arendi agrees with the Court that there are “things that shouldn't be said about the
`relevance of the IPR proceedings in court here.” Tr. at 8:13-15.
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`In short, the IPR proceedings are relevant to the litigation here. Arendi believes that this
`evidence – previously unobjected to by Google – should be 1) used in documentary and evidentiary
`form or 2) presented by a stipulation of facts.
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`Respectfully,
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`/s/ Neal C. Belgam
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`Neal C. Belgam (No. 2721)
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`cc:
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`Clerk of Court (via CM/ECF)
`All Counsel of Record (via CM/ECF)
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