Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 1 of 16 PageID #: 50993
`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 1 of 16 PagelD #: 50993
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`EXHIBIT A
`EXHIBIT A
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`A.
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`Q.
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`Yes.
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`And I think that the questions were -- you filed a
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`litigation against Microsoft; is that correct?
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`A.
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`Q.
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`Yes.
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`And then the question was: How did it end? And you
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`said you -- they took a license; is that right?
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`A.
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`Q.
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`Yes, I did.
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`There was a lot of litigation that happened between
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`those two things, correct?
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`Yes.
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`There was at least one trial that went on, correct?
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`number of recitals, correct?
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`A.
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`Q.
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`We do.
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`And in particular, let's look at Recital D,
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`"Microsoft has denied infringement of the Asserted Patents
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`and the European Patent and has also challenged the
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`validity thereof. Microsoft has also filed, on 26
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`July 2006, an opposition in the EPO for the European
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`Patent (the EPO proceeding)." Unquote.
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`Do you see that?
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`I do.
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`So am I correct that at the time this agreement was
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`A.
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`Q.
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`A.
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`Q.
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`A.
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`I didn't hear you.
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`signed, Microsoft was both denying infringement of the
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`Q.
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`There was at least one trial that went on between you
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`and Microsoft?
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`A.
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`Q.
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`We had one trial against Microsoft, correct.
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`And you had filed -- you had -- how long was the
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`litigation going on before you signed an agreed --
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`settlement agreement with Microsoft?
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`A.
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`This agreement is -- was based on -- was after suit
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`against -- filing against Microsoft 2009.
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`Q.
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`So, approximately two years of litigation had been
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`going on when you signed this agreement with Microsoft; is
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`that correct?
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`A.
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`Yes. No trial in that litigation.
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`patents and challenging the validity of the patents?
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`A.
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`Agree what it says there, yes.
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`MR. UNIKEL: And if we can look at Subpart A of
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`the recitals, please.
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`BY MR. UNIKEL:
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`Q.
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`Am I correct we see there three U.S. patent numbers
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`listed, correct?
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`A.
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`Q.
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`A.
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`Q.
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`Yes.
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`One of those is the '843 patent, right?
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`Correct.
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`And then there's also at least one European patent
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`that's mentioned in that paragraph, correct?
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`Q.
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`And on the front page of this agreement, we see a
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`A.
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`There's one European patent, right.
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`Q.
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`Do you recall how many total patents were licensed by
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`Arendi to Microsoft as part of this agreement?
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`A.
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`Everything that's in the agreement. So those
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`patents, I don't know if there's an appendix with more. I
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`don't know.
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`Q.
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`And do you happen to know which of the patents
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`Microsoft was most interested in or concerned about when
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`they signed this agreement?
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`A.
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`Q.
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`Nothing we discussed.
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`And, sir, Microsoft paid you $30 million under this
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`agreement, correct?
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`A.
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`Correct.
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`MR. DIEHL: Your Honor, just as a note on that,
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`on redirect, I can go right back into his licenses and we
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`can unseal after that. I am happy to have it unsealed now
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`and I can talk about other things and then go into
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`licenses, but if we are going to redirect soon, it could
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`make sense just to keep it sealed.
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`THE COURT: Let's unseal the courtroom. Thank
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`you, Counsel.
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`MR. DIEHL: Yes.
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`* * *
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`(Whereupon, the sealed discussion concludes.)
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`THE COURT: The courtroom is unsealed.
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`Q.
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`And you don't know how much of that $30 million was
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`attributable to the '854 patent which is listed up there;
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`is that right?
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`A.
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`Q.
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`Correct.
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`You don't know how much of that $30 million was
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`attributable to the European patent that is listed up
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`there, correct?
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`A.
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`Correct.
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`MR. UNIKEL: I have only a few questions left,
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`but we can unseal the courtroom if you would like,
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`Your Honor.
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`THE COURT: Thank you very much.
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`Ms. Garfinkel, unseal the courtroom.
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`Please proceed.
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`BY MR. UNIKEL:
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`Q.
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`Sir, am I correct that at no time before filing this
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`lawsuit in 2013 did you ever tell Google that they were
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`infringing any patents of Arendi's?
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`A.
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`Q.
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`That's correct.
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`The first time that you would have alerted Google to
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`the fact that you thought they were infringing any patents
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`was when you filed the lawsuit in 2013; is that right?
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`A.
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`Q.
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`Correct.
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`And you made a conscious decision not to reach out to
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`Google; is that right?
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`A.
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`Yes.
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`

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`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 3 of 16 PageID #: 50995
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`Q.
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`And you made that conscious decision together with
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`your lawyers not to alert Google; is that right?
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`A.
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`Yes.
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`MR. UNIKEL: Your Honor, that's all I have.
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`THE COURT: Thank you very much.
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`Redirect.
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`MR. DIEHL: Your Honor, I will start with the
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`licenses, since that was the last thing I did.
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`THE COURT: Okay.
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`MR. DIEHL: I'm sorry to do it.
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`THE COURT: I'm going to ask Ms. Garfinkel to
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`seal the courtroom.
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`A.
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`Q.
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`Yes.
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`And Apple, despite denying infringement invalidity,
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`still paid $15 million; is that correct?
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`A.
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`That is correct.
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`MR. DIEHL: Now, I want to move to the Samsung
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`agreement that was PX-76, if we can put that on the
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`screen. I'm sorry, not 76. Let's take that down. PX-77.
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`Yes. PX-77.
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`BY MR. DIEHL:
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`Q.
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`Now, conspicuously, when Google was walking you
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`through this document, did Google happen to point out any
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`denial of infringement by Samsung?
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`A.
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`Not that I recall.
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`The courtroom has been sealed.
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`* * *
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`(The following discussion is held under seal:
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`MR. DIEHL: Thank you, Your Honor.
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`REDIRECT EXAMINATION
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`BY MR. DIEHL:
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`Q.
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`Mr. Hedloy, I want to start talking about the license
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`agreements that counsel for Google just walked you
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`through. I'll start with the Apple license.
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`Do you recall that counsel for Google pointed out a
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`clause in there -- I think it was two clauses -- where
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`Apple denied infringing the '843 patent and denied the
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`validity of the '843 patent?
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`Q.
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`Did Google happen to point out any denial of validity
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`by Samsung?
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`A.
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`Q.
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`Not that I can remember.
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`Now, do you recall during the opening statement that
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`Google gave, it said that all of the licensees who took a
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`license from Arendi actually did deny infringement and
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`validity?
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`A.
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`Q.
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`I do.
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`So was Google accurate when it was saying that
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`Samsung as one of the licensees, denied infringement and
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`denied validity?
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`A.
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`No.
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`Q.
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`A.
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`Q.
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`That was incorrect?
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`That was incorrect.
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`Now, in your experience, Google pointed out that some
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`of these licenses related to multiple patents.
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`Do you recall that?
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`I do.
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`In your experience, is it normal when two companies
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`A.
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`Q.
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`come together for a license agreement, to have that
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`license applied to the full portfolio of intellectual
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`property that the licensing entity owns?
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`Yes.
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`A.
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`Q.
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`retailers, and customers to sell or use any licensed
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`product."
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`My question is, did Arendi intend to extend this
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`license that it entered with Samsung to Google as either a
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`customer or a retailer or a reseller or a wholesaler or a
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`distributer?
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`A.
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`Q.
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`No.
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`That was not your intent at the time of entering the
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`Samsung agreement?
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`A.
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`No, of course not. We had only sued Google the way
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`to license that to Samsung.
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`Q.
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`Now, I want to look at Section 2.1 of the Samsung
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`And let's move to the other one that Google looked at
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`agreement. Again, that was 77, PX-77. Mr. Hedloy, this
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`is a grainy version of this document, but I think we can
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`make due.
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`Do you recall Google asking you about this provision?
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`A.
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`Yes.
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`MR. DIEHL: Thank you, Mr. Boles.
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`BY MR. DIEHL:
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`Q.
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`And Google in particular pointed out a sentence here
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`that begins on the fourth line, toward the end of fourth
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`line, "Licensor, on behalf of itself and its affiliates,
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`agrees that the license granted to licensee and its
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`affiliates under this section permits licensee and its
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`affiliates and their distributers, wholesalers, resellers,
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`with you, which was Section 3.1 of the agreement.
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`Now, Google emphasized a particular wording here
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`"supplier," and here, this says that -- so we'll start on
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`the second line: "Arendi hereby releases forever
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`discharges licensee and its affiliates, including their
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`officers, directors, attorneys, employees, and together
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`with their suppliers, distributers, wholesalers,
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`resellers, retailers, and customers from any or all claims
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`in connection with any licensed product."
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`My question, again, here, did Arendi intend to
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`license Google when it was doing this agreement with
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`Samsung as a supplier of Samsung?
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`A.
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`No.
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`

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`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 4 of 16 PageID #: 50996
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`MR. UNIKEL: Objection, Your Honor.
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`THE COURT: Overruled.
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`THE WITNESS: No.
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`BY MR. DIEHL:
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`Q.
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`Now, during the negotiations with Samsung, did
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`Samsung say anything about releasing Arendi's claims
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`against Google that were there pending in a separate
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`lawsuit against Google?
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`A.
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`Q.
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`No.
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`And, Mr. Hedloy, I believe when you were answering
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`one of questions that Google's counsel asked, you started
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`to say something about pre-installed applications versus
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`user-installed applications.
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`what they didn't have anything to do with, which was what
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`was downloaded afterwards.
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`Q.
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`So did Arendi intend to license, in the Samsung
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`agreement, Google apps that a user of a Samsung phone
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`might download onto that phone after buying the Samsung
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`phone?
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`A.
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`Q.
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`No.
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`And then I believe the last license that Google's
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`counsel looked at with you was the Microsoft license.
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`And, again, Google's counsel pointed out there that
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`Microsoft did deny infringing Arendi's IP.
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`Do you recall that?
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`A.
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`I do.
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`Can you explain that further?
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`A.
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`Well, there is a difference, because what we had sued
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`Samsung for was what they sold, which would be their --
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`I'm going to take -- I'm -- I was sorry. Can I?
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`THE COURT: Yes.
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`THE WITNESS: I was trying to avoid coughing so
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`much, but...
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`BY MR. DIEHL:
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`Q.
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`A.
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`No problem.
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`So what we accused Samsung of was what they sold,
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`which was their tablets and cell phones with pre-installed
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`applications. We did not accuse them of infringing on
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`Q.
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`And what did Microsoft ultimately pay despite that
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`denial?
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`A.
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`Q.
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`$30 million.
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`And Google's counsel also asked the question about
`And Google's counsel also asked the question about
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`whether Arendi made a conscious decision with its counsel
`whether Arendi made a conscious decision with its counsel
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`not to alert Google that it suspected Google was
`not to alert Google that it suspected Google was
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`infringing the '843 patent.
`infringing the '843 patent.
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`Do you recall that question?
`Do you recall that question?
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`A.
`A.
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`Q.
`Q.
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`I do.
`I do.
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`Did you have concerns about what Google would do if
`Did you have concerns about what Google would do if
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`Arendi came to Google and brought that allegation to it
`Arendi came to Google and brought that allegation to it
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`outside of the context of a lawsuit?
`outside of the context of a lawsuit?
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`A.A.
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`Q.
`Q.
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`Yes.Yes.
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`And did you have concerns about Google taking legal
`And did you have concerns about Google taking legal
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`action of its own in response to that kind of allegation?
`action of its own in response to that kind of allegation?
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`A.
`A.
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`Yes.
`Yes.
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`MR. DIEHL: Now, Your Honor, I think we can
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`unseal the courtroom at this point.
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`THE COURT: All right.
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`Ms. Garfinkel, please unseal the courtroom.
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`(Courtroom unsealed.)
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`THE COURT: The courtroom has been unsealed.
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`Please proceed.
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`MR. DIEHL: Thank you, Your Honor.
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`A.
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`Q.
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`Yes.
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`Okay. In particular, we looked at Page 180 of this
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`document. Do you recall -- look at Pages 180 and 181, if
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`we can look at both of those on the screen.
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`And here, Google's counsel pointed to a particular
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`sentence that begins at the end of Page 180,
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`"Applicant" -- Arendi -- "notes that application Serial
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`No. 12,841,302 n(also before the Examiner) and the prior
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`art references analyzed in the Accelerated Examination
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`Support Document (AESD) of July 22, 2010 are of particular
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`interest in relation to the present application."
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`Do you recall questions about this?
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`A.
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`I do.
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`BY MR. DIEHL:
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`Q.
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`Okay. Next subject. I want to get -- just go back
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`into the issue of the efforts that Arendi made to provide
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`information to the Patent Office.
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`A.
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`Q.
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`Yes.
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`And do you recall that Google asked you a number of
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`questions about that process?
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`A.
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`Q.
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`I do.
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`And I'd like to look back at what was Exhibit DTX-2,
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`which is a record of things that happened before the
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`Patent Office.
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`Do you recall talking about this exhibit with
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`Google's counsel?
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`Q.
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`So what was the reason for alerting the Patent Office
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`about this?
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`A.
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`Well, it was that the -- we wanted to make sure that
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`he -- we didn't withhold anything. So that's why we
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`alerted him to it. So we said those references should
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`also be looked at.
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`Q.
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`Now, those references, you were pointing up to the --
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`specifically to the prior art references analyzed in the
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`Accelerated Examination Support Document; is that fair?
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`A.
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`Q.
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`Yes. We should look at those prior art references.
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`Those prior art references.
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`And then the Accelerated Examination Support
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`

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`from Professor Edward Fox, who is a long-time professor in
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`the industry at Virginia Tech, extremely accomplished.
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`He's studied the invention. He has studied the patent.
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`He has studied what was said to the Patent Office, and he
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`has studied the prior art systems: CyberDesk, Apple Data
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`Detectors, Microsoft Word.
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`And what he's going to tell you and explain to
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`you is that if Arendi is correct that its patent covers
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`Approach 2, it covers the use of separate instructions
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`from the apps, then it covers CyberDesk and Apple Data
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`Detectors, because those did all the same shortcuts, they
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`presented users with all the same options, but they did it
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`configured by the first computer program, and they do not
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`satisfy the inconsequence of receipt by the first computer
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`program of the user command from the user device causing a
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`search element.
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`And as you just heard, it's Arendi's burden to
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`prove infringement. If -- the evidence will show you that
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`Google went a different approach. They went right; Arendi
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`went left. And Arendi will not, we believe, be able to
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`show that there's infringement of these elements by
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`Google's use of an opposite technological approach.
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`When you look under the hood, when you really
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`consider how Arendi's patent invention needs to work and
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`how Google's products actually do work, I think you're
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`with separate instructions rather than the self-contained
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`instructions that are required by the claims.
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`And if at the end of case, you really believe
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`that the patent is broad enough to cover Google's
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`products, which use separate instructions from the apps,
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`then you're going, I think, have to see that it also
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`covers systems that existed well before Mr. Hedloy ever
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`filed for his patent application.
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`So by the end of the trial, I think you're
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`going to see that Google's accused products do not perform
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`two critical elements of the '843 patent. Those that
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`specifically require actions from the first computer
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`program. They don't provide an input device that's
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`going to see they're very different approaches, even if
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`the user might see food on their table at the end of the
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`day.
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`Now, we get back to the question, what exactly
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`did Arendi invent? Because it's only what they actually
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`added that's new that they can ask for money based on.
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`So the question you're going to be asked is, is
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`there infringement? Is the patent valid? If you find
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`there's no infringement, if you find the patent is not
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`valid because it should not have issued in light of
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`CyberDesk or Apple Data Detectors, then you'll never have
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`to consider damages in this case.
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`Only if you find that we have infringed and
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`only if you find that the patent is valid will you have to
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`consider the question: If Google used Arendi's approach,
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`how much was it really worth to Google?
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`Once again, you're going to hear that their
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`invention was to put all of the instructions inside a
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`single computer program. Google went a different way and
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`put the instructions outside of any specific computer
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`program.
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`So it raises the question of how much would
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`Google pay for a technology that was the opposite of what
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`it wanted, that did the exact opposite thing of how it
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`Google of this would have been.
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`There's a little context, though, that I would
`There's a little context, though, that I would
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`like you to consider. Before Arendi filed this suit, it
`like you to consider. Before Arendi filed this suit, it
`
`did not contact Google in any way about the patent. It
`did not contact Google in any way about the patent. It
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`didn't send us a letter. It didn't call us on the phone.
`didn't send us a letter. It didn't call us on the phone.
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`Not a single contact to say: I have this patent. I think
`Not a single contact to say: I have this patent. I think
`
`you might be interested in it, or I think you might be
`you might be interested in it, or I think you might be
`
`using the technology.
`using the technology.
`
`Now, remember, when they filed suit in 2013,
`Now, remember, when they filed suit in 2013,
`
`there's not a single product that's being accused of
`there's not a single product that's being accused of
`
`infringement from that period of time. There's not a
`infringement from that period of time. There's not a
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`single product right now, from 2013 to 2017, that's being
`single product right now, from 2013 to 2017, that's being
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`wanted to construct its systems. And Arendi, as you've
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`accused of infringement in this case, and yet they didn't
`accused of infringement in this case, and yet they didn't
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`seen, wants more than $40 million from Google for the
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`period from December 2017 to November 10, 2018, 11 months,
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`for Google's use of a technology that it didn't want, that
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`it didn't need, and, frankly, that it wanted the opposite
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`of.
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`But if you ultimately get to consider damages,
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`despite the fact that we went one way and they went the
`
`other, you're going to hear from an expert by the name of
`
`Douglas Kidder. He is a gentleman who has 30-plus years
`
`in the area of patent damages and financial damages
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`analysis. And you're going to hear from him about what
`
`the appropriate way to consider the possible value to
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`reach out to us before they filed suit to say: We think
`reach out to us before they filed suit to say: We think
`
`you're infringing or we think you're using our patent; you
`you're infringing or we think you're using our patent; you
`
`might want a license.
`might want a license.
`
`As you will hear, since the year 2000, Arendi's
`
`company's only business is getting patents and enforcing
`
`patents. Since the year 2000, they do not make any
`
`products, they do not sell any products, they have not
`
`tried to develop any products.
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`And as you will see, from the moment that they
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`filed suit against Google, Google has defended itself at
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`all times on the basis that it doesn't use the technology,
`
`it does not want the technology, and it wants to go in a
`
`

`

`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 6 of 16 PageID #: 50998
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`Q.
`
`In this case, you stated that you have no
`
`recollection as to CyberDesk actually worked; is that
`
`correct?
`
`A.
`
`Q.
`
`Correct.
`
`And you don't remember when you became aware of
`
`CyberDesk; is that right?
`
`A.
`
`Q.
`
`That's also correct.
`
`After becoming aware of CyberDesk, you don't remember
`
`doing anything to acquire more information about that
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`system, do you?
`
`A.
`
`Q.
`
`That's correct.
`
`And you don't even remember whether you looked for
`
`any information on CyberDesk through a basic Internet
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`Georgia Tech website concerning CyberDesk and tried to use
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`the actual sample version of CyberDesk that was provided
`
`on that website, do you?
`
`A.
`
`Q.
`Q.
`
`I don't remember.
`
`Let's look back at your description of CyberDesk to
`Let's look back at your description of CyberDesk to
`
`the Patent Office in the AESD, please. If you could look
`the Patent Office in the AESD, please. If you could look
`
`at the next page, please, 115.
`at the next page, please, 115.
`
`Do you see that you write, quote, "The Dey reference
`Do you see that you write, quote, "The Dey reference
`
`does not meet several elements and limitations of the
`does not meet several elements and limitations of the
`
`claims. Among other things, the Dey reference does not
`claims. Among other things, the Dey reference does not
`
`disclose contact information handling implemented by a
`disclose contact information handling implemented by a
`
`document editing program. For example, Dey does not
`document editing program. For example, Dey does not
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`search, correct?
`
`A.
`
`Q.
`
`Correct.
`
`And you don't remember whether you looked at any
`
`materials about the CyberDesk system other than this one
`
`1998 article that you discussed in this AESD; is that
`
`right?
`
`A.
`
`I know we submitted more CyberDesk documentation to
`
`the Patent Office, so I assume he looked at those.
`
`Q.
`
`But you personally don't recall if you ever saw any
`
`of those other materials; is that correct?
`
`A.
`
`Q.
`
`Today, I don't remember.
`
`And you don't remember whether you ever went to the
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`disclose analyzing selected textual information by the
`disclose analyzing selected textual information by the
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`document editing program as required by the claims.
`document editing program as required by the claims.
`
`CyberDesk itself analyzes text highlighted by the user,
`CyberDesk itself analyzes text highlighted by the user,
`
`and CyberDesk is separate from any document editing
`and CyberDesk is separate from any document editing
`
`programs."
`programs."
`
`That's what Arendi said to the Patent Office about
`That's what Arendi said to the Patent Office about
`
`this reference, correct?
`this reference, correct?
`
`A.
`A.
`
`Q.
`
`Yes.
`Yes.
`
`And you felt it was an important distinction in this
`
`AESD that CyberDesk was separate from the document editing
`
`program, correct?
`
`A.
`
`Q.
`
`Yes.
`
`And you told the '843 patent examiner that he would
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`find your descriptions of the prior art in this AESD of
`
`particular interest, correct?
`
`A.
`
`Q.
`
`Yes.
`
`Next, you state -- if we could please go to the next
`
`paragraph. "CyberDesk also does not disclose 'identifying
`
`at least part of the selected textual information to use
`
`as a search term,' as required by the claims. To the
`
`contrary, it appears that CyberDesk merely searches for
`
`what the user has highlighted and, for this reason,
`
`CyberDesk does not identify search terms, as required by
`
`the claims."
`
`Do you see that?
`
`A.
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`the document,' as required by the claims. CyberDesk
`
`simply does not disclose, teach, or suggest inserting
`
`second information into documents," unquote.
`
`Do you see that?
`
`I see that.
`
`Were you aware that CyberDesk did allow for insertion
`
`A.
`
`Q.
`
`of text into documents at the time you wrote this?
`
`A.
`
`Q.
`
`Apparently not.
`
`And, sir, is there any limitation in the actual
`
`claims of the '843 patent that require causing insertion
`
`of at least part of the second information into the
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`document?
`
`A.
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`I can see that.
`
`'843, no.
`
`Q.
`
`And so for you, it was important whether or not
`
`CyberDesk taught to search for -- to identify at least
`
`part of the selected textual information to use as a
`
`search term, correct?
`
`A.
`
`Q.
`
`For this application, yes.
`
`For this application. And this application was the
`
`one you directed the '843 patent examiner to look at your
`
`descriptions of?
`
`A.
`
`Q.
`
`Correct.
`
`And finally, last Paragraph here, you say,
`
`"Furthermore, CyberDesk does not disclose 'causing
`
`insertion of at least part of the second information into
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`Q.
`
`But these are all statements that Arendi itself wrote
`
`to the Patent Office in this AESD, correct?
`
`A.
`
`Q.
`
`Correct.
`
`And these are the statements that Arendi directed the
`
`examiner considering the '843 patent to because they were
`
`of particular interest in regard to that application?
`
`A.
`
`That's what you said, yes.
`
`THE COURT: Counsel, is now a good time to take
`
`the afternoon break?
`
`MR. UNIKEL: I think it's a great time. Thank
`
`you, Your Honor.
`
`THE COURT: Ladies and gentlemen, we will take
`
`

`

`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 7 of 16 PageID #: 50999
`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 7 of 16 PagelD #: 50999
`
`EXHIBIT B
`EXHIBIT B
`
`

`

`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 8 of 16 PageID #: 51000
`
`From:
`To:
`
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Unikel, Robert
`Kalpana Srinivasan; John Lahad; Failla, Melissa J.; Max Straus; Seth Ard; Rachel Solis; Kemper Diehl; Richard
`Wojtczak; dtaylor@skjlaw.com; nbelgam@skjlaw.com; smb@skjlaw.com
`shamlin@Potteranderson.com; vinny.ling@mto.com; bpalapura@potteranderson.com;
`dmoore@potteranderson.com; ginger.anders@mto.com; Google-Arendi; Susan M. Betts; Neal C. Belgam
`\RE: Invalidity Grounds, IPR Proceedings Issue and Wilfullness
`Sunday, April 23, 2023 7:37:20 PM
`2023-04-23 Counterproposal re IPR Stipulation and Limiting Instruction.docx
`
`EXTERNAL Email
`Kalpana,
`
`We continue to believe that the only correct course is for the parties to agree, or the Court to order,
`that the parties will not present any evidence, testimony or argument concerning the IPR
`proceedings to the jury. In light of the absence of any invalidity ground based on Pandit, there is no
`relevance to those proceedings in this case, and no justification for introducing such confusing and
`unduly prejudicial materials to the jury. If Arendi does not so agree, then we currently plan to ask
`for an appropriate order from the Court.
`
`Should the Court disagree and allow some mention of the IPR proceedings to the jury, then we agree
`with you that the only way to at least partially minimize the prejudice and error is to present the IPR
`proceedings through a neutral and balanced stipulation and limiting instruction. Attached is
`Google’s counterproposal to Arendi’s proposed stipulation and limiting jury instruction regarding
`evidence relating to IPRs. It includes some of Arendi’s proposed language combined with Google’s in
`what we hope is a fair compromise that would minimize jury confusion and potential prejudice at
`trial. If we can agree on the language of the stipulation and proposed limiting instruction, and can
`agree 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, then Google likely will agree not to proceed with its planned motion.
`
`Please let us know by 9:30 pm tonight if Arendi accepts this compromise.
`
`I’ll note that Arendi’s proposal in the limiting instruction that the jury could consider the IPR
`evidence to determine whether “Google has persuaded you by clear and convincing evidence that
`the Asserted Claims of the ’843 Patent are invalid” without sufficient guardrails about the
`differences and limitations with IPR is particularly problematic. We all know that is an incomplete
`and misleading instruction and highly prejudicial, and it demonstrates once again that Arendi is
`trying to present IPR evidence to the jury for improper purposes.
`
`Rob
`
`
`
`
`From: Kalpana Srinivasan <ksrinivasan@SusmanGodfrey.com>
`Sent: Sunday, April 23, 2023 3:20 PM
`
`

`

`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 9 of 16 PageID #: 51001
`
`To: Unikel, Robert <robertunikel@paulhastings.com>; John Lahad <jlahad@SusmanGodfrey.com>;
`Failla, Melissa J. <melissafailla@paulhastings.com>; Max Straus <MStraus@susmangodfrey.com>;
`Seth Ard <sard@susmangodfrey.com>; Rachel Solis <RSolis@susmangodfrey.com>; Kemper Diehl
`<KDiehl@susmangodfrey.com>; Richard Wojtczak <rwojtczak@susmangodfrey.com>;
`dtaylor@skjlaw.com; nbelgam@skjlaw.com; smb@skjlaw.com
`Cc: shamlin@Potteranderson.com; vinny.ling@mto.com; bpalapura@potteranderson.com;
`dmoore@potteranderson.com; ginger.anders@mto.com; Google-Arendi <Google-
`Arendi@paulhastings.com>; Susan M. Betts <SMB@skjlaw.com>; Neal C. Belgam
`<NCB@skjlaw.com>
`Subject: [EXT] RE: Invalidity Grounds, IPR Proceedings Issue and Wilfullness
`
`--- External Email ---
`
`
`Rob – Your proposal is based on the incorrect premise that the IPR
`evidence is permissible only if Google wants to use it. Google has
`already conceded that IPR evidence is relevant in its filing to the Court
`Thursday night as it intended to use that evidence to argue about its
`beliefs regarding invalidity as a defense to willfulness. Google included
`exhibits from the IPR proceeding on its exhibit list. But now Google
`suddenly says the jury will be confused even though Google intended to
`rely on the IPR proceedings as of a few days ago. Pandit doesn’t
`change the equation – and only highlights that Google wanted to use
`the IPR proceedings to shore up its invalidity position in this case.
`Google’s one-sided position is wrong.
`
`As we already said, IPRs are relevant not solely to defend against
`willfulness but to rebut any defense of willfulness and the IPRs are also
`relevant to other issues which we have identified in our letter to the
`Court.
`
`As you requested on our call last night, we attach a proposed
`Stipulation and Limiting Instruction that is edited from what you sent us
`earlier this week. In light of the foregoing, please let us know if Google
`agrees.
`
`Kalpana
`
`From: Unikel, Robert <robertunikel@paulhastings.com>
`
`

`

`Case 1:13-cv-00919-JLH Document 486-1 Filed 04/24/23 Page 10 of 16 PageID #: 51002
`
`Sent: Sunday, April 23, 2023 6:26 AM
`To: John Lahad <jlahad@SusmanGodfrey.com>; Failla, Melissa J. <melissafailla@paulhastings.com>;
`Kalpana Srinivasan <ksrinivasan@SusmanGodfrey.com>; Max Straus
`<MStraus@susmangodfrey.com>; Seth Ard <sard@susmangodfrey.com>; Rachel Solis
`<RSolis@susmangodfrey.com>; Kemper Diehl <KDiehl@susmangodfrey.com>; Richard Wojtczak
`<rwojtczak@susmangodfrey.com>; dtaylor@skjlaw.com; nbelgam@skjlaw.com; smb@skjlaw.com
`Cc: shamlin@Potteranderson.com; vinny.ling@mto.com; bpalapura@potteranderson.com;
`dmoore@potteranderson.com; ginger.anders@mto.com; Google-Arendi <Google-
`Arendi@paulhastings.com>; Susan M. Betts <SMB@skjlaw.com>; Neal C. Belgam
`<NCB@skjlaw.com>
`Subject: RE: Invalidity Grounds, IPR Proceedings Issue and Wilfullness
`
`EXTERNAL Email
`Arendi Team,
`I know you are planning to send us today your proposal for how to deal with the IPR proceedings
`issues at trial. As I mentioned yesterday (by email and on our call), we believe that with the removal
`of Pandit from the invalidity grounds there is not even an arguable basis for presenting the IPR
`proceedings to the jury.
`
`In case it was not clear from our call, Google will not be