Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 1 of 6 PageID #: 1081
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19801- 0951
`302 984 6000
`www.potteranderson.com
`
`David E. Moore
`Partner
`Attorney at Law
`dmoore@potteranderson.com
`302 984-6147 Direct Phone
`302 658-1192 Firm Fax
`
`November 29, 2018
`
`VIA ELECTRONIC FILING
`The Honorable Leonard P. Stark
`U.S. District Court for the District of Delaware
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801
`Re: Arendi S.A.R.L. v. Google LLC, C.A. No. 13-919-LPS
`
`Dear Chief Judge Stark:
`
`This letter responds to, and opposes, Arendi S.A.R.L.’s (“Arendi”) November 19, 2018
`motion requesting leave to supplement and amend its complaint against Google LLC, previously
`Google Inc., (“Google”) pursuant to Rules 15(a)(2) and 15(d) of the Federal Rules of Procedure.
`(D.I. 89, 89-8.) Arendi’s undue delay in seeking to amend its complaint to add 33 previously
`unasserted claims against Google is prejudicial and should be denied. The entire purpose of the
`four-year stay of this case was to permit completion of inter partes review proceedings (“IPRs”)
`relating to the claims previously asserted by Arendi against Google so that this litigation could
`be substantially streamlined (if not eliminated altogether). Now that the IPRs are complete and
`almost all of the previously asserted claims have been invalidated, Arendi seeks a “do over” by
`adding claims that it deliberately elected not to pursue prior to the stay. Permitting Arendi to
`amend its complaint not only would prejudice Google; it also would wholly frustrate and
`contravene the stipulated rationale for the stay. Arendi’s argument that it could not assert the
`additional patent claims at an earlier time due to the stay is demonstrably false, as all of the
`claims that Arendi now seeks to add (and certain products corresponding to what Arendi now
`wishes to accuse) were in existence at the outset of this litigation, and Arendi elected not to add
`those pre-existing claims prior to the original deadline to amend, which passed before the stay
`was entered on February 27, 2014.
`Arendi’s proposed amended complaint also is futile because it is generic, non-specific,
`and fails to state a claim upon which relief can be granted. Nowhere in its proposed amended
`complaint does Arendi provide even the most rudimentary explanation of how the laundry list of
`newly identified Google products might actually infringe any of the previously unasserted patent
`claims, leaving Google entirely in the dark as to how to defend itself and/or how reasonably to
`approach discovery. Pursuant to its Rule 11 obligations, Arendi must have conducted an
`investigation and come to some conclusions as to how and why the newly identified Google
`products allegedly infringe; yet, Arendi provides absolutely no relevant details in its proposed
`amended complaint. This violates even the most liberal pleading standards.
`
`Factual Background
`On May 22, 2013, Arendi filed its original complaint against Google, which asserted
`infringement of claims 1-7, 10-13, 15, 17-19, 23-29, 32-35, 37, 39, 40, and 41 of U.S. Patent No.
`
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`Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 2 of 6 PageID #: 1082
`The Honorable Leonard P. Stark
`November 29, 2018
`Page 2
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`7,917,843 (the “’843 patent”); claims 1-3, 6-9, 12-15, 18, 20, 25, 26, 31, 32, 36-40, 43-47, 50-54,
`57, 58, 70, 71, 73, 74, 79, 80, 85, 93, 94, 96, 98, 99, and 101 of U.S. Patent No. 7,496,854 (the
`“’854 patent”); claims 1, 10, 11, 13-16, 46, 65, 66, 76, 77, and 79 of U.S. Patent No. 6,323,853
`(the “’853 patent”); and claims 1, 7, 11, 12, 16, 19, and 20 of U.S. Patent No. 7,921,356 (the
`“’356 patent”). In its subsequent Section 4(a) Disclosures and Infringement Contentions, Arendi
`elected to pursue only some of these pled claims. On June 7, 2013, a Scheduling Order was
`entered in Arendi’s related Delaware cases (though the Order did not yet apply to the recently-
`filed Google case). (C.A. No. 12-1596, D.I. 18). On July 12, 2013, a Joint Stipulation and
`Proposed Order to Amend the June 7, 2013 Scheduling Order was entered to account for
`“Arendi’s filing of additional, separate lawsuits against Google and Yahoo!” (D.I. 8). The
`Amended Scheduling Order set February 4, 2014, as the deadline for a “Motion to join other
`parties, Amend.” Id. Between entry of the Amended Scheduling Order and the deadline for
`pleading amendments, the parties exchanged interrogatory responses (D.I. 20, 21, 28, and 29),
`Google produced Core Technical Documents (D.I. 30), and all defendants served Joint Initial
`Invalidity Contentions (D.I. 32). The February 4, 2014, deadline for pleading amendments
`passed without any effort by Arendi to amend its complaint or its Section 4(a) Disclosures. Then,
`on February 27, 2014—after the deadline to amend had passed—the parties entered into a Joint
`Stipulation to Stay pending completion of IPRs relating to the asserted patents. (D.I. 35).
`
`In August 2018, after the Federal Circuit issued decisions on those pending IPRs that
`were appealed, the parties began discussing lifting the stay and negotiating an amended case
`scheduling order. (D.I. 85). As part of the negotiations, Arendi explicitly represented that it
`would only seek to assert against Google (a) previously asserted claims of the ’843 patent (that
`survived the IPRs), and (b) claims from the previously unasserted ’993 patent. (Ex. A, Ard to
`Unikel, 10/16/2018 Email). Arendi made crystal clear that it was not intending to add any
`previously unasserted claims from the’843 patent, or to litigate the ’356 and ’854 patents at all.
`Though Google reserved its right to object to Arendi’s proposed addition of the ’993 patent,
`Google negotiated a case schedule based on Arendi’s explicit representation that the only
`potentially new patent claims might be those from the ’993 patent (and that the ’356 and ’854
`patents would be removed from the case entirely). In fact, in the Amended Case Scheduling
`Order, Arendi stipulated “to seek no further amendment to the Complaints or to add additional
`asserted claims to those identified in the initial infringement contentions of December 6, 2013,” a
`carve out for Google intended only to permit Arendi’s possible motion for leave to add ’993
`patent claims. (D.I. 85).
`
`On November 2, 2018, in advance of Arendi’s Monday, November 12, 2018 deadline to
`file motions for leave to amend, Google requested an advanced draft of Arendi’s proposed
`amended complaint, which Arendi provided at the end of the business day on Thursday,
`November 8, 2018. Only when it received this draft did Google become aware that, despite
`Arendi’s previous representations to the contrary, Arendi was attempting to add 12 previously
`unasserted claims from the ’356, ’854 and ’843 patents, in addition to 21 previously unasserted
`’993 patent claims. On November 9 and 12, 2018, the parties met-and-conferred, at which time
`Google expressed its objections (a) to the proposed addition of numerous previously unasserted
`claims, and (b) to the total lack of specificity in Arendi’s proposed amendments. (Ex. B, Meet
`and Confer Invitations). Arendi made some insufficient efforts to address Google’s specificity
`concerns, and on November 16, 2018, provided Google with revised infringement allegations
`that remained generic and unclear. (Ex. C, Lahad to Unikel, 11/16/2018 Email). On November
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`Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 3 of 6 PageID #: 1083
`The Honorable Leonard P. Stark
`November 29, 2018
`Page 3
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`19, 2018, Google notified Arendi that it should file its motion to amend, which Google would
`oppose. (Ex. D, Unikel to Lahad, 11/19/2018 Email).
`
`Argument
`I.
`Arendi’s Proposed Amendments are Futile and Improper Because They Violate
`Basic Pleading Requirements
`Arendi’s proposed amended complaint does nothing more than (a) in a single paragraph,
`list a huge number of Google products as allegedly infringing (D.I. 89-1 at ¶ 5),1 and (b) make
`conclusory assertions of infringement of each patent without providing any specificity as to how
`the identified products might infringe each patent (e.g., D.I. 89-1 at ¶¶ 19, 29, 39, 49). Such bare
`bone allegations do not meet the pleading requirements of Fed. R. Civ. P. 8(a), which requires “a
`short and plain statement of the claim showing that the pleader is entitled to relief.” Bell Atlantic
`Corp. v. Twombly, 550 U.S. 544, 555 (2007); see also Raindance Techs., Inc. v. 10x Genomics,
`Inc., C.A. No. 15-152-RGA, 2016 WL 927143, at *2 (D. Del. Mar. 4, 2016) (applying the
`Twombly/Iqbal standard to claims of direct patent infringement filed subsequent to December
`2015 abrogation of Federal Rule of Civil Procedure 84 and patent pleading Form 18). Although
`Arendi’s factual allegations need not be elaborate, at the very least they must provide more than
`labels, conclusions and/or a “formulaic recitation” of the patents’ claim elements together with a
`list of accused products. Twombly, 550 U.S. at 555-56 (“[f]actual allegations must be enough to
`raise a right to relief above the speculative level . . . on the assumption that all the allegations in
`the complaint are true (even if doubtful in fact)”). Arendi’s proposed amended complaint simply
`“pleads facts that are merely consistent with the defendant’s liability, [and therefore] it stops
`short of the line between possibility and [the required showing of] plausibility of entitlement to
`relief.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
`
`The problem with Arendi’s completely non-specific pleading is evident, for example, in
`Arendi’s identification of Google Pixel devices and Google Translate as allegedly infringing
`products. (e.g., D.I. 89-1 at ¶ 5). The Pixel phone (a Google “device”) is capable of running
`hundreds of possible apps and/or programs and also is capable of thousands of possible
`functionalities. Simply identifying the device as allegedly infringing provides no guidance
`whatsoever as to the specific combinations of phone and app(s)/program(s) that are the actual
`source of the accused infringement. Similarly, Arendi remains wholly silent as to which
`particular Google Translate functionalities are accused of infringement, and how they allegedly
`infringe. This makes it impossible for Google to assess Arendi’s infringement claims, engage in
`meaningful and targeted discovery, and devise litigation strategy, and is exactly what Twombly
`and Iqbal’s pleading requirements are intended to protect against. Twombly, 550 U.S. 544; Iqbal,
`556 U.S. 662; see also Promos Techs. Inc. v. Samsung Elecs. Co., C.A. No. 18-307-RGA, 2018
`WL 5630585, at *1–2, *4 (D. Del. Oct. 31, 2018) (finding insufficient pleading of direct
`infringement where plaintiff did not explain why defendant’s accused products infringe, but
`instead limited the allegations of direct infringement to mere legal conclusions stating that
`accused products comprise all elements of asserted claims); North Star Innovations, Inc. v.
`Micron Tech., Inc., C.A. No. 17-506-LPS-CJB, 2017 WL 5501489, at *1–3 (D. Del. Nov. 16,
`2017) (recommending dismissal of direct infringement claim because simply (a) identifying
`
`1 Arendi’s amended complaint further attempts to accuse products that are not even named in the
`pleading. (D.I. 89-1 at ¶ 5 (“and other products and devices containing the same or similar
`information handling technology disclosed in the asserted patents . . .”)).
`
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`Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 4 of 6 PageID #: 1084
`The Honorable Leonard P. Stark
`November 29, 2018
`Page 4
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`accused product, (b) parroting claim language, and (c) making conclusory statements that
`accused product meets claim limitations, was insufficient to make plausible claim of
`infringement); Modern Telecomm. Sys., LLC v. TCL Corp., C.A. No. 17-583-LPS-CJB, 2017
`WL 6524526, at *3 (D. Del. Dec. 21, 2017) (instructing that “there needs to be some facts
`alleged that articulate why it is plausible that the other party's product infringes that patent
`claim—not just the patentee asserting, in a take-my-word-for-it fashion, that it is so”).
`Particularly given the circumstances of this case and the lateness of Arendi’s request to amend,
`Arendi’s proposed amendments are futile in their failure to provide Google with some true
`understanding of exactly what combinations of products and programs/apps Arendi intends to
`accuse, so that discovery can be appropriately targeted and Google can formulate appropriate
`defenses.2
`II.
`Arendi’s Proposed Amendments are Untimely, Prejudicial and Undermine the
`Purposes of the Stipulated Stay
`In an apparent effort to bolster its weakened case against Google, Arendi’s proposed
`amended complaint attempts to add 12 previously unasserted claims from the ’356, ’854, and
`’843 patents because the majority of the claims previously asserted by Arendi were invalidated in
`the IPRs. Arendi’s proposed amended complaint also seeks to add 21 claims from a patent that
`previously was unasserted against Google, the ’993 patent. All of the claims that Arendi now
`wishes to assert could have been added before the original deadline for amendments (February 4,
`2014), but Arendi elected not to assert these claims at that time, before the parties filed their
`Joint Stipulation to Stay the case (on February 24, 2014). (D.I. 35). As noted, Arendi’s intention
`to add previously unasserted claims from the ’356, ’854 and ’843 patents came as a surprise to
`Google because during negotiations concerning the post-stay case schedule, Arendi specifically
`represented that it would seek leave to proceed only on (a) previously asserted claims of the ’843
`patent, and (b) certain, specified claims of the ’993 patent. (Ex. A, Ard to Unikel, 10/16/2018
`Email). Google objected to the proposed addition of the ’993 patent (as well as to the addition of
`any previously unasserted claims). However, based on Arendi’s explicit representations as to the
`potential scope of the case (focused only on the previously asserted ’843 claims and, potentially,
`the identified ’993 claims), the parties agreed to a stipulated, Amended Case Schedule. In the
`filed Stipulation, Arendi agreed that it would not seek to add any previously unasserted patent
`claims other than those of the ’993 patent that it had specifically “identified” to Google (and
`Yahoo!) prior to the Stipulation. (See D.I. 85, p. 2, n. 3, “[o]ther than these identified
`amendments for which Arendi may seek leave, Arendi has agreed to seek no further amendment
`to the Complaints or to add additional asserted claims to those identified in the initial
`infringement contentions of December 6, 2013.”). At a minimum, Arendi should now be held to
`the representations it made to the Court and to Google in order to secure a case schedule: to seek
`to proceed only based on previously asserted claims identified in the initial infringement
`contentions—1, 8, 13, 15, 17, 18, 19, 23, and 30 of the ’843 patent, and on claims 1, 2, 4-10, 12-
`18, and 20-24 of the ’993 patent, and not to proceed based on any previously unasserted claims
`
`2 Again, given that (a) Arendi’s infringement accusations necessarily depend on the combined
`operation of specific apps running on a particular device, and (b) there are literally thousands of
`apps (offered by hundreds of companies) that can be run on any device (made by any one of tens
`of companies), Arendi must provide some concrete guidance as to what specific combinations it
`is accusing of infringement (based on its Rule 11 investigations).
`
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`Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 5 of 6 PageID #: 1085
`The Honorable Leonard P. Stark
`November 29, 2018
`Page 5
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`of the ’356 and ’854 patents. (Ex. A, Ard to Unikel, 10/16/2018 Email).3
`Arendi should further be held to its decision not to seek amendment of its complaint or
`Section 4(a) Disclosures prior to the original, pre-stay amendment deadline (February 4, 2014).
`Allowing Arendi a “do over” to now bring suit on patent claims that it could have asserted before
`the stay, but deliberately did not, would defeat the entire purpose of the stay, which was to
`simplify the case and narrow issues concerning the previously asserted claims. Indeed, the Joint
`Stipulation to Stay clearly reflects the expectation that the parties’ interests “would best be
`served by staying the present litigation pending the PTAB’s decision . . . because . . . staying
`these cases would simplify the issues for trial.” (D.I. 35, p. 5) (emphasis added). See Neste Oil
`Oyj v. Dynamic Fuels, LLC, C.A. No. 12-1744-GMS, 2013 WL 3353984, at *1–2 (D. Del. July
`2, 2013) (identifying simplification of the issues at hand as a principal requirement for entry of a
`stay); Softview LLC v. Apple Inc. et al., C.A. No. 10-389-LPS, 2013 WL 4757831, at *1 (D. Del.
`Sept. 4, 2013) (granting stay during pendency of IPR proceeding, noting that “should even some
`of the asserted claims be found invalid, that finding would reduce the number of issues left to be
`litigated.”).4 Applying the results of the IPRs, removing from the case the previously asserted,
`invalidated claims, and permitting Arendi now to proceed on only previously asserted ’843
`claims that that survived IPR, is precisely what both the Court and the parties intended when
`agreeing to the stipulated stay. Neither Google nor any other defendant ever presumed when
`agreeing to the stay that if Arendi’s asserted claims were invalidated (and thus removed from the
`case) that Arendi would simply seek to replace the invalidated/removed claims with new ones,
`sending the whole litigation back to square one. Therefore, Google respectfully requests that the
`Court deny Arendi’s motion for leave to amend/supplement the complaint against Google.
`
`Respectfully,
`/s/ David E. Moore
`
`David E. Moore
`
`3 During the parties’ case schedule negotiations, Arendi agreed (a) that the damages period as to
`the ’993 claims (for purposes of 35 USC § 286) should be calculated from the date on which any
`permitted amended complaint is entered, and (b) that Google is entitled to full discovery on
`Arendi’s new ’993 claims—just as if Arendi filed a brand new case/complaint against Google.
`To the extent that Arendi is permitted to add any previously unasserted claims, Google is
`entitled to an order establishing that (a) the damages period as to these claims (for purposes of 35
`USC § 286) is calculated from the date on which any permitted amended complaint is entered—
`just as would be the case if Arendi filed a new complaint against Google, and (b) Google is
`entitled to full discovery on Arendi’s new claims. See Anza Techs., Inc. v. Mushkin, Inc., No. 17-
`cv-03135-MEH, 2018 WL 4095113, at *3-4 (D. Colo. Aug. 28, 2018).
`4 That the Joint Stipulation to Stay (a) contemplated that the case could/would proceed only on
`previously asserted claims that survived IPR, and (b) provided real benefit to Arendi from this
`contemplated agreement, is demonstrated by the Stipulation’s provision that “each of the
`Defendants who did not file or join in the petition or that inter partes review proceeding agrees,
`on a claim-by-claim basis as to those claims asserted against that Defendant in Plaintiff’s
`Disclosures Pursuant to the Delaware Default Standard on Discovery Rule 4(c), not to assert
`that such claim is invalid on any ground of unpatentability presented to the PTAB and decided in
`the PTAB’s final written decision for the claim . . . .” (D.I. 35, p. 4) (emphasis added).
`
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`Case 1:13-cv-00919-LPS Document 90 Filed 11/29/18 Page 6 of 6 PageID #: 1086
`The Honorable Leonard P. Stark
`November 29, 2018
`Page 6
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`DEM:nmt/6014807/40549
`Clerk of Court (via hand delivery)
`Counsel of record (via electronic mail)
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