Case 1:13-cv-00919-JLH Document 489 Filed 04/25/23 Page 1 of 4 PageID #: 51289
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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
`RESPONDING TO ARENDI’S FURTHER LETTER 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 25, 2023
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`Case 1:13-cv-00919-JLH Document 489 Filed 04/25/23 Page 2 of 4 PageID #: 51290
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`April 25, 2023
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`Dear Judge Hall:
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`Arendi continues to press for its confusing and prejudicial use of IPR evidence that the
`Court has already ruled outweighs any minimum probative value. Certain of Arendi’s arguments
`are waived, while others reargue positions that the Court has already rejected or overruled—
`positions that only serve to further demonstrate why IPR evidence should not be admitted under
`Rule 403 balancing in this case.
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`First, all of Arendi’s arguments regarding Google’s opening statements and Mr. Hedløy’s
`testimony are waived. Arendi failed to immediately object or even ask to be heard at sidebar in
`any of the instances that it complains about. See D.I. 486-1 at Ex. A at 104:3–20 (opening), 214:5–
`20 (Hedløy), 244:23–245:3 (Hedløy); United States v. DeRosa, 548 F.2d 464, 472 (3d Cir. 1977)
`(objections to be made during or immediately after opening).
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`Second, even if not waived, Google has not opened the door to IPR evidence. Rather, as
`demonstrated by Arendi’s own words bolded below, Arendi is looking for opportunities to
`introduce IPR evidence for improper, misleading, and prejudicial purposes.
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`
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`In response to (i) statements or Mr. Hedløy’s testimony that Arendi did not notify Google
`of the ’843 Patent until filing this lawsuit in 2013 or that there was no infringing product
`at that time; or (ii) statements that Google defended itself throughout the case by raising
`system prior art, Arendi wants to argue that Google thought the patent posed a “threat” or
`“potential infringement problem,” D.I. 486 at 1–2, such that it went “running to the Patent
`Office within months” to file an IPR. Ex. 1 (Trial Tr. Day 1 excerpts) at 146:14–15.
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`This is a non sequitur. It is not apparent why any explanation about the timeline of the
`litigation would somehow require characterizing or speculating about the timing of an IPR
`petition. Arendi also ignores that it was the one that dropped the accused 2013–2017 period
`from the case on the eve of trial; it cannot be heard to complain about the hole in the
`timeline that resulted from that election. Furthermore, the Court offered a solution that
`Arendi agreed was adequate and would not require reference to IPR: “we can tell the jury
`that the case was stayed and that it’s not your fault that the case was stayed.” Ex. 1 (Trial
`Tr. Day 1) at 29:19–22.1
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`Arendi’s proposed argument in response is far more prejudicial and confusing than
`relevant. It ignores that there is a one-year statutory deadline for a party to petition for IPR
`after being served with an infringement complaint. 35 U.S.C. § 315(b). Compliance with
`that statute is not grounds to misconstrue Google’s decision to defend itself.
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`1 Arendi’s letter claims that Google said it defended itself by relying on “CyberDesk and Apple
`Data Detectors,” D.I. 486 at 1, but Google was actually more clear than that in its opening, saying
`that Google “point[ed] out the prior art CyberDesk systems and Apple Data Detectors systems.”
`Ex. 1 (Trial Tr. Day 1) at 104:22–105:4 (emphasis added). The Court already overruled Arendi’s
`late-raised objection to this. Id. at 146:8–22, 148:3–21.
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`Case 1:13-cv-00919-JLH Document 489 Filed 04/25/23 Page 3 of 4 PageID #: 51291
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`The Honorable Jennifer L. Hall
`April 25, 2023, Page 2
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`
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`In response to Mr. Hedløy’s testimony that Arendi made representations to the Patent
`Office about printed publications discussing the CyberDesk and Apple Data Detectors
`systems, Arendi wants to argue that Google “had an opportunity to present art” or “could
`have” clarified Arendi’s statements about prior art in an IPR. D.I. 486 at 2.
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`However, Google is not suggesting that Arendi’s statements about the CyberDesk and
`Apple Data Detectors publications were somehow incorrect. Nor is Google alleging that
`there was any breach of a duty of candor to the Patent Office. To the contrary, as the Court
`recognized, Google is arguing that Arendi correctly told the Patent Office what the
`publications disclosed—which is less than what the prior art systems were publicly
`displayed to do—and how Arendi’s claimed invention allegedly differed from the prior art.
`See Ex. 1 (Trial Tr. Day 1) at 148:17–19 (“I understood counsel to be saying that the patent
`examiner didn’t have the system art that Google was going to present at trial before it
`. . . .”). Such points of distinction are important for the jury in assessing whether Arendi
`invented anything new and nonobvious, as well as in considering Georgia-Pacific factor 9
`about the utility or advantages of the claimed invention over prior art for a reasonable
`royalty. Such points of distinction are also directly relevant to showing that the prior art
`systems disclosed materially more than the publications, which described only some of the
`systems’ features.
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`Furthermore, Arendi’s proposed rebuttal is misleading, as Google did not have an
`“opportunity” to present the CyberDesk or Apple Data Detectors systems in IPR; to imply
`otherwise is legally and factually wrong. Whether prior art “could have” been raised in an
`IPR is a question of IPR estoppel under 35 U.S.C. § 315(e). The Court has already denied
`IPR estoppel as to the CyberDesk system, and Arendi chose not to invoke IPR estoppel for
`the Apple Data Detectors system. Ex. 1 (Trial Tr. Day 1) at 10:17–13:5 (ruling that the
`CyberDesk system could not have been raised in IPR); see also D.I. 391 at 18 (noting that
`Arendi did not challenge Apple Data Detectors system based on IPR estoppel).
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`Third, there is no need to enter Google’s prior proposal for a stipulation and limiting
`instruction. See D.I. 484 at Ex. A. That was an imperfect solution, and it was only submitted to the
`Court as evidence of Google’s effort to reach a compromise. Id. at 1 (listed in summary of meet-
`and-confer, rather than in update of Google’s positions). Arendi chose to reject that proposal. Ex.
`2 (4/23/23 10:55 PM email from Arendi counsel) at 1. Google’s position at that point was that
`“[t]here is no legitimate argument that IPR evidence should be admissible before the jury, even
`with a limiting instruction.” D.I. 484 at 2; see also Ex. 1 (Trial Tr. Day 1) at 19:4–5 (“So we would
`like just there to be no reference by either side to the IPR proceedings.”). Therefore, the prior
`proposal is no longer viable, especially in view of Arendi’s escalating efforts to make misleading
`and prejudicial arguments about the IPR before the jury.
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`Having now tried multiple tacks to get the IPR proceedings into the jury trial, it is clear
`that Arendi does not want to eliminate any true confusion. It wants to try and suggest to the jury
`that Google already has taken, in Arendi counsel’s own words, its “best shot” at invalidating the
`’843 Patent and lost, Ex. 1 (Trial Tr. Day 1) at 21:25, even though the Court already has ruled that
`Google did not, and could not, present its system prior art references in the IPR.
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`The Court properly exercised its discretion in excluding all IPR evidence, and Arendi has
`raised no legitimate basis to let any of it in under the Court’s ruling.
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`Case 1:13-cv-00919-JLH Document 489 Filed 04/25/23 Page 4 of 4 PageID #: 51292
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`The Honorable Jennifer L. Hall
`April 25, 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/10773070/12599.00040
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`Enclosures
`cc:
`Clerk of the Court (via hand delivery)
`Counsel of Record (via electronic mail)
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