Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 1 of 7 PageID #: 51381
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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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`GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW ON THE ISSUE OF
`NO WILLFUL INFRINGEMENT
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`ARENDI S.A.R.L.,
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`GOOGLE LLC,
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`Plaintiff,
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`v.
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`Defendant.
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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 27, 2023
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`

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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 2 of 7 PageID #: 51382
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`I.
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`INTRODUCTION
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`Defendant Google LLC (“Google”), pursuant to Federal Rule of Civil Procedure 50(a),
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`moves for a judgment as a matter of law (“JMOL”) of no willful infringement of claims 23 and 30
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`(“Asserted Claims”) of U.S. Patent No. 7,917,843 (“‘843 Patent”). Under Fed. R. Civ. P. 50(a).
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`Arendi presented no evidence from which a reasonable juror could conclude that any infringement
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`of the asserted claims by Google was willful.1 The Court thus should grant judgment as a matter
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`of law of no willful infringement.
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`II.
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`LEGAL STANDARD
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`“A determination of willful infringement requires a finding of ‘deliberate or intentional’
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`infringement.” Robocast, Inc. v. Netflix, Inc., __ F. Supp. 3d __, 2022 WL 16921956, at *3 (D.
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`Del. Nov. 14, 2022) (quoting SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330 (Fed. Cir.
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`2021)). “[T]he patentee must show the accused infringer had a specific intent to infringe at the
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`time of the challenged conduct”— that is, that the accused infringer knew that the actions
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`constituted infringement and intentionally infringed. Bayer Healthcare LLC v. Baxalta Inc., 989
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`F.3d 964, 987-988 (Fed. Cir. 2021). “Knowledge of the asserted patent and evidence of
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`infringement is necessary, but not sufficient, for a finding of willfulness.” Id. Indeed, courts in this
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`District have held that the complaint in the operative action “cannot be the source of knowledge
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`required to sustain claims of . . . willfulness-based enhanced damages.” ZapFraud, Inc. v.
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`Barracuda Networks, Inc., 528 F. Supp. 3d 247, 250 (D. Del. Mar. 24, 2021). If willful conduct
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`has been found, the question of enhancement is for the Court, and “requires some finding of
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`conduct that is ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant’
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`or otherwise ‘characteristic of a pirate.’” Baxalta Inc. v. Bayer Healthcare LLC, 513 F. Supp. 3d
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`1 Arendi solely alleges post-suit willful infringement—it does not allege pre-suit willful
`infringement.
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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 3 of 7 PageID #: 51383
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`426, 460 (D. Del. 2021) (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., __ U.S. __, 136 S. Ct.
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`1923, 1932 (2016)). Enhanced damages is “generally reserved for egregious cases of culpable
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`behavior.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 104 (2016).
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`III. ARGUMENT
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`A.
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`The Court should grant judgment of no willfulness
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`Arendi offered no evidence that any alleged infringement of the asserted claims by Google
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`was willful.2 At most, Arendi presented that it sued Google in May 2013, thus giving Google
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`knowledge of the patent, and the parties have since litigated this case. But Arendi presented no
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`evidence whatsoever that Google knew that it was infringing the asserted claims, and that it
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`deliberately proceeded anyway.
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`Because “willfulness requires deliberate or intentional infringement,” Bayer Healthcare
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`LLC v. Baxalta Inc., 989 F.3d 964, 988 (Fed. Cir. 2021), Google’s mere awareness that Arendi
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`had sued it for allegedly infringing the ’843 Patent, and Arendi’s purported evidence that Google
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`did infringe the Asserted Claims, is not sufficient to establish willfulness. “Knowledge of the
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`asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of
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`willfulness.” Id. at 987 (affirming pre-verdict JMOL of no willful infringement); see also
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`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., 2017 WL 2190055, at *3 (E.D. Tex. May
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`18, 2017) (Bryson, J.) (“a finding of willfulness is not required simply because the infringer knew
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`about the patent at issue”). Indeed, even if Arendi had notified Google of the ’843 patent before it
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`filed suit (which it did not), 4/24/23 Trial Tr. (Hedloy) at 244:15–18 (“Q. Sir, am I correct that at
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`2 As Google explains in its separate arguments in support of its request for judgment of no
`infringement as a matter of law, Google did not infringe the Asserted Claims. This alone requires
`a finding of no willful infringement. See John Beah Techs. Corp. v. Morris & Associates, Inc.,
`988 F.3d 1334, 1341 (Fed. Cir. 2021) (“If there is no infringement, there cannot be willful
`infringement.”).
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`2
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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 4 of 7 PageID #: 51384
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`no time before filing this lawsuit in 2013 did you ever tell Google that they were infringing any
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`patents of Arendi’s? A: That’s correct.”), “a party’s pre-suit knowledge of a patent is not sufficient,
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`by itself, to find ‘willful misconduct’ of the type that may warrant an award of enhanced damages.”
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`Vehicle IP, LLC v. AT&T Mobility LLC, 227 F. Supp. 3d 319, 331 (D. Del. Dec. 30, 2016) (citation
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`omitted). And with respect to post-suit conduct, Arendi presented no evidence “in addition to”
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`Google’s bare post-suit knowledge of the ’843 Patent that could suggest that Google subjectively
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`understood that its actions indeed constituted infringement, and that Google deliberately engaged
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`in that infringement. That Google continued making and selling the Accused Products after Arendi
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`filed its suit in 2013 does not permit a finding of willfulness, especially in the absence of evidence
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`that Google believed it was committing infringement. See Intellectual Ventures I LLC v. Symantec
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`Corp., 234 F. Supp. 3d 601, 612 (D. Del. 2017) (granting motion for summary judgment of no
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`infringement where “IV identifies no evidence of behavior beyond typical infringement”);
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`bioMérieux, S.A. v. Hologic, Inc., 2020 WL 759546, at *13 (D. Del. Feb. 7, 2020) (“That
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`Defendants continued to market the products they sold . . . and did not shift to another product . .
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`. does not show that they subjectively intended to infringe Plaintiffs’ patents.”).
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`In fact, the evidence affirmatively establishes that Google lacked any knowledge or belief
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`that it was committing infringement. As Google’s witnesses explained at trial, they independently
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`developed the accused STS functionality without any intent to infringe. 4/26/23 Trial Tr.
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`(Elbouchikhi) at 686:7–687:1 (explaining that his job responsibilities did not include “patent
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`issues” or reviewing patents, and that he only became aware of Arendi during 2019 as a result of
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`being deposed, well after STS was developed and released); 4/26/23 Trial Tr. (Toki) at 763:10–12
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`(“Q. No one told you about the patent while you were working on Smart Text Selection, right? A.
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`No.”); 4/27/23 Trial Tr. (Choc) at 796:25–797:1 (“I didn’t know about this patent until 2019 when
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`3
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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 5 of 7 PageID #: 51385
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`I was deposed.”). As Google explained to the Court in a recent letter (D.I. 479), Arendi’s
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`willfulness theory must fail because Arendi provided no notice at all of alleged infringement by
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`Smart Text Selection until after the ’843 Patent expired—and Arendi presented no evidence
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`otherwise at trial. 4/26/23 Trial Tr. (Elbouchikhi) at 686:21–687:1; 4/26/23 Trial Tr. (Toki) at
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`762:4–9; 4/27/23 Trial Tr. (Choc) at 801:21–22 (“I don’t know when STS was accused.”); see also
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`D.I. 479-1 at Ex. C (excerpted 12/6/13 infringement contentions identifying desktop browser
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`functionalities); id. at Ex. B (11/12/18 supplemental list of accused products adding Google Pixel
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`devices and Android software that use STS); D.I. 97 (12/21/18 Amended Complaint) (accusing
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`mobile products using STS for the first time). Google thus could not have known that it was
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`infringing the ’843 Patent via Smart Text Selection while the patent was active. Bare knowledge
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`of the patent (and any infringement) is not enough as a matter of law to establish “deliberate or
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`intentional” infringement related to STS. Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964,
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`988 (Fed. Cir. 2021).
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`As the Court is aware, Google has already prevailed on several noninfringement arguments
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`in this case, confirming that it not only reasonably believed it was not infringing, but that it was
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`correct. Most notably, in 2021 the Court found that the Accused Products with Linkify and Smart
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`Linkify—which at that time were a substantial part of the action—did not infringe the Asserted
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`Claims as a matter of law and granted summary judgment in Google’s favor. (D.I. 393 at 13.)
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`Moreover, the evidence demonstrates that Google also believes that the Asserted Claims are
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`invalid. See Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1377–79
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`(Fed. Cir. 2020) (subjective belief of invalidity is directly relevant to whether the defendant acted
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`willfully); C.R. Bard Inc. v. AngioDynamics Inc., 979 F.3d 1372, 1380 (Fed. Cir. 2020).
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`4
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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 6 of 7 PageID #: 51386
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`Finally, the evidence that Arendi presented cannot come close to establishing willfulness.
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`For example, the absence of any evidence of Google’s engineers having read the ’843 patent does
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`not suggest willfulness—that conduct is “unremarkable” given Google’s “size and resources.” See
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`SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1309 (Fed. Cir. 2019) (reversing denial of JMOL
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`of no willful infringement). A reasonable juror simply cannot find that Google’s allegedly
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`infringing conduct was deliberate and intentional. Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S.
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`93, 104 (2016); see also Wrinkl, Inc. v. Facebook, Inc., 2021 WL 4477022, at *7 (Sept. 30, 2021)
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`(“Willful patent infringement is the rare exception, not the rule.”).
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`IV. CONCLUSION
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`For these reasons, the Court should grant judgment of no willful infringement.
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`5
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`Case 1:13-cv-00919-JLH Document 497 Filed 04/27/23 Page 7 of 7 PageID #: 51387
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`POTTER ANDERSON & CORROON LLP
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`By: /s/ David E. Moore
`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
`
`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`Ginger D. Anders
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Avenue NW, Suite 500E
`Washington, D.C. 20001
`Tel: (202) 220-1100
`
`Vincent Y. Ling
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Avenue, 50th Floor
`Los Angeles, CA 90071
`Tel: (213) 683-9100
`
`Dated: April 27, 2023
`10780801 / 12599.00040
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