Case 1:13-cv-00919-JLH Document 524 Filed 05/01/23 Page 1 of 4 PageID #: 52805
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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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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`C.A. No. 13-919-JLH
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`))))))))))
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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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`ARENDI’S PROPOSED JURY INSTRUCTION REGARDING LICENSE DEFENSE
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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: May 1, 2023
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`Case 1:13-cv-00919-JLH Document 524 Filed 05/01/23 Page 2 of 4 PageID #: 52806
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`Per the Court’s Oral Order on May 1, 2023 (D.I. 522), Arendi S.A.R.L. hereby submits a
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`proposed jury instruction regarding Google’s stated license defense, without waiver of Arendi’s
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`argument that Google’s license defense was unpled and is improper.
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`5.7 LICENSE DEFENSE
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`[Arendi Proposal:
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`* * *
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`Google contends that Arendi’s agreement with Samsung reduces Arendi’s claim for
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`damages. Google contends that it is a “supplier” of the Accused Google Apps to Samsung under
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`Section 3.1 of the agreement and/or that the Accused Google Apps are “Licensed Products”
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`under Section 1.6 of the agreement.
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`Arendi contends that the agreement between Arendi and Samsung does not reduce the
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`damages Arendi is entitled to receive from Google in this case. Arendi contends the Accused
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`Google Apps in this case are not “Licensed Products” under Section 1.6 because Google makes
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`the Accused Google Apps available on the Google Play Store for users to download after
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`purchasing a device, and the Google apps are not “made, used, sold, offered for sale by or for”
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`Samsung. Arendi also asserts that Google is not a “supplier” of the accused Google apps under
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`Section 3.1 because it does not supply the user-downloaded Google apps to Samsung, but rather
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`to users of Samsung devices.
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`Google apps that were preinstalled on Samsung devices when they were sold are not at
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`issue in this case. The Accused Google Apps in this case are only those that users downloaded
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`2
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`Case 1:13-cv-00919-JLH Document 524 Filed 05/01/23 Page 3 of 4 PageID #: 52807
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`onto devices they had already purchased, and they do not include preinstalled apps that came
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`with devices.
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`You must decide what Arendi and Samsung intended to agree upon.1 In making your
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`determination, you should consider the entire contract, in light of the relation between Samsung
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`and Arendi and the circumstances under which their contract was made.2 You should also
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`consider the other evidence presented at trial, including any statements made under oath by the
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`original parties to the contract regarding their intent. Such statements are significant evidence of
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`the contracting parties’ intent.3
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`In evaluating the words in the contract, you should not consider particular words in
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`isolation, but rather should consider the contract as a whole in light of the overall intention of the
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`parties,4 including any words in the “Whereas” clauses of the agreement regarding the intent of
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`the parties.5 Google is not a party to the agreement. The agreement between Samsung and Arendi
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`1 Kass v. Kass, 91 N.Y.2d 554, 566–67 (1998).
`2 Kass v. Kass, 91 N.Y.2d 554, 566–67 (1998) (courts “should examine the entire contract and
`consider the relation of the parties and the circumstances under which it was executed”).
`3 N.Y. Pattern Jury Instr.--Civil 4:1, available on Westlaw (commentary) (“Where an agreement
`is ambiguous and extrinsic evidence is introduced to aid in construction, both sworn affidavits by
`both original parties to the contract and those parties' conduct after the contract was formed are
`significant evidence of the parties' intent.”) (collecting cases).
`4 Kass v. Kass, 91 N.Y.2d 554, 566–67 (1998) (“Particular words should be considered, not as if
`isolated from the context, but in the light of the obligation as a whole and the intention of the
`parties as manifested thereby.”).
`5 N.Y. Pattern Jury Instr.--Civil 4:1 (commentary), available on Westlaw (“If from the recitals
`therein it appears that the release is to be limited to only particular claims, demands, or
`obligations, then the release will be operative as to those matters only.” (collecting cases); Bugel
`v. WPS Niagara Properties, Inc., 19 A.D.3d 1081, 1083, 797 N.Y.S.2d 232, 234 (2005) (“It is
`unreasonable to conclude that the parties, as a condition of the release, intended that plaintiff
`release all [his] existing unrelated claims against conceivably hundreds of named and unnamed
`corporations, ... employees, ... etc.” Rather, viewing the letter agreement as a whole and in light
`of its stated purpose, we conclude that the parties intended that plaintiff release only his
`employment-related claims against his employer and related entities and individuals.”).
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`Case 1:13-cv-00919-JLH Document 524 Filed 05/01/23 Page 4 of 4 PageID #: 52808
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`should not be interpreted to benefit a third party that did not enter into the contract, like Google
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`here, in the absence of clear contractual language evincing such an intent.6
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`Google bears the burden of proving, by a preponderance of the evidence, that Arendi’s
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`license agreement with Samsung reduces the damages to which Arendi us entitled to receive
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`from Google for its infringement of the ’843 Patent.]
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`6 N.Y. Pattern Jury Instr.--Civil 4:1 (commentary) (“Courts are generally reluctant to construe an
`intent to benefit a third party in the absence of clear contractual language evincing such an
`intent.”) (collecting cases).
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`4
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