Case 1:13-cv-00919-JLH Document 486 Filed 04/24/23 Page 1 of 4 PageID #: 50989
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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.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 EVIDENCE
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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 486 Filed 04/24/23 Page 2 of 4 PageID #: 50990
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`Dear Judge Hall:
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`During trial on April 24, the Court recognized and even Google conceded that basic facts
`about the inter partes review (IPR) proceeding are relevant to willfulness. As the Court noted, “I
`agree with Arendi that it is possible that the IPR has some probative value to the issue of
`willfulness.” Trial Tr. at 39:2. The Court noted, however, that it viewed that probative value as
`minimal and outweighed by the potential for juror confusion and prejudice to Google. Id. After
`the Court gave this guidance, Google put willfulness and representations regarding prior art in
`play. In doing so, it made clear that evidence regarding the IPR is highly probative and that its
`probative value far outweighs any potential for prejudice.
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`Arendi proposes, at least in the alternative, that the Court simply adopt the stipulation and
`limiting instructions that Google proposed this morning as a “compromise.” Dkt. 484 Exhibit A
`(stipulation) and B (limiting instruction). As Google explained in an email on Sunday night,
`Google believed this compromise, while not ideal, would “minimize jury confusion.” There is no
`reason not to enter it, given the probative value of this evidence.
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`The inability to reference the IPR at all is highly prejudicial to Arendi – especially when
`Google’s request for preclusion came the day before trial. Mr. Hedløy was expected to testify
`about the timeline of Google seeking IPR review, how it impacted whether he chose to reach out
`to Google before filing suit, and why it delayed assertion of infringement as to Google’s
`technology. Arendi had to omit that testimony from his examination; but Google conducted its
`cross examination to maximize that advantage about Google’s notice of the ’843 Patent and
`whether Arendi reached out to Google before filing suit:
`Q. Sir, am I correct that at no time before filing this lawsuit in 2013 did you ever
`tell Google that they were infringing any patents of Arendi's? A. That's correct. Q.
`The first time that you would have alerted Google to the fact that you thought they
`were infringing any patents was when you filed the lawsuit in 2013; is that right?
`A. Correct. Q. And you made a conscious decision not to reach out to Google; is
`that right? A. Yes. Q. And you made that conscious decision together with your
`lawyers not to alert Google; is that right? A. Yes.
`Trial Tr. at 244:23-245:3 (transcript excerpts attached as Exhibit A). Mr. Hedløy testified that he
`had concerns about Google taking legal action against him as a reason for not providing pre-suit
`notice. He could not testify that he was concerned about Google pursuing immediate review in the
`patent office and that this concern proved to be well founded.
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`Google also argued to the jury in opening that Arendi did not reach out to it, that it could
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`not possibly infringe because there was no Google product accused of infringement, and that
`Arendi should have put Google on notice. Trial Tr. at 104:3-16. Again, the IPR shows that after
`Arendi filed suit, Google sought to invalidate the Patent – immediately recognizing that it was a
`threat and potential infringement problem for Google. This skewed description of events should
`be subject to rebuttal.
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`Similarly, during its opening, Google told the jury about all the ways it had defended itself
`from the moment Arendi filed suit against Google – including that it did not want or need Arendi’s
`technology and that it would defend itself by relying on CyberDesk and Apple Data Detectors.
`These arguments communicated to the jury that Google had a good faith basis to believe the Patent
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`Case 1:13-cv-00919-JLH Document 486 Filed 04/24/23 Page 3 of 4 PageID #: 50991
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`was either not infringed or invalid. Without introducing the IPR, Arendi is not able to rebut this
`assertion by presenting evidence that Google knew of the risk the Patent was valid when it
`launched its Smart Text Selection product 2017 because it had unsuccessfully petitioned the
`PTAB. That state of mind is relevant here.
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`Separately, Google also independently opened the door to rebuttal by reference to the IPR
`proceeding by arguing and eliciting evidence that Arendi made representations to the patent office
`about the prior art references it reviewed and the patent office relied on those representations and
`Arendi’s “duty of candor” in prosecuting its patents. For example, Google’s counsel argued:
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`But what Arendi’s lawyer did not tell you is that when Arendi presented CyberDesk
`and presented Apple Data Detectors, they disclosed only some of the capabilities
`of those systems, not all…
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`Trial Tr. 104:4-20. Google has thus told the jury that Arendi described the prior art in a way that
`is inconsistent with Arendi’s current representations. And Google elicited evidence from Mr.
`Hedløy in attempt to show what he did and did not say in his filings to the patent office. E.g., Trial
`Tr. 214:5-20. Had Arendi been able to examine Mr. Hedløy on it, it could have established that
`Google too had an opportunity to present art to the patent office and that if Arendi had not clearly
`explained what the art covered Google could have done so in its IPR proceedings.
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`Only limited evidence concerning the IPR is necessary to avert prejudice to Arendi.
`Specifically, all that is needed is to establish that (i) Google filed an IPR petition challenging the
`’843 Patent in 2013, (ii) the IPR was instituted, and (iii) the IPR did not invalidate the ’843 Patent.
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`The basic facts of the IPR proceeding remain relevant. First, “[t]he IPR petition is plainly
`relevant to willfulness.” MicroVention, Inc. v. Balt USA, LLC, No. 819CV01335JLSKES, 2022
`WL 18284997, at *9 (C.D. Cal. Dec. 12, 2022) (allowing evidence regarding IPR petition at trial
`with “appropriate limiting instruction explaining the significance of a denial of IPR”); see Contour
`IP Holding v. GoPro, Inc., LLC, No. 3:17-CV-04738-WHO, 2021 WL 75666, at *8 (N.D. Cal.
`Jan. 8, 2021 (holding that “evidence from the IPR proceedings may be introduced” for purpose of
`showing willfulness). Second, that Google already brought an IPR petition seeking to invalidate
`the ’843 Patent “on the basis of prior art consisting of patents or printed publications” under 35
`U.S.C. § 311 – and was unsuccessful – is highly relevant to validity.
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`There is no basis for withholding basic facts about the IPR out of concern for potential
`prejudice to Google. Any potential prejudice arising from the limited nature of the IPR process
`(e.g., that it could not have involved the CyberDesk “system”) is properly addressed through a
`limiting instruction. In Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91, 111 (2011), the
`Supreme Court explained that improper effects on juries of introducing PTO determinations can
`be mitigated with a limiting instruction: “When warranted, the jury may be instructed to consider
`that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent.
`When it is disputed whether the evidence presented to the jury differs from that evaluated by the
`PTO, the jury may be instructed to consider that question.” The same principle applies here—the
`jury can easily be instructed that the PTAB and Federal Circuit had no opportunity to evaluate
`prior art “systems” that are distinct from printed publications during the IPR proceeding.
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`Case 1:13-cv-00919-JLH Document 486 Filed 04/24/23 Page 4 of 4 PageID #: 50992
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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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