Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 1 of 11 PageID #: 11719
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`Defendants.
`
`C.A. No. 12-01595-LPS
`
`JURY TRIAL DEMAND
`
`REDACTED VERSION
`
`LG’S REPLY IN SUPPORT OF ITS
`MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT
`BY THE NON-REBEL 4 ACCUSED PRODUCTS
`
`Steven R. Katz
`Jacob Pecht
`Eda Stark
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`Telephone: (617) 542-5070
`Email: katz@fr.com; pecht@fr.com;
`stark@fr.com
`
`R. Andrew Schwentker
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW, Suite 1000
`Washington, D.C. 20024
`Telephone: (202) 783-5070
`Email: schwentker@fr.com
`
`Dated: May 6, 2021
`
`Jeremy D. Anderson (No. 4515)
`FISH & RICHARDSON P.C.
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19899
`Telephone: (302) 652-5070
`Facsimile: (302) 652-0607
`Email: janderson@fr.com
`
`Counsel for Defendants
`LG Electronics Inc.,
`LG Electronics U.S.A., Inc., and
`LG Electronics Mobilecomm U.S.A., Inc.
`
`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 2 of 11 PageID #: 11720
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`TABLE OF CONTENTS
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`
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`I. 
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`II. 
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`INTRODUCTION AND SUMMARY OF REPLY ........................................................... 1 
`
`ARGUMENT ...................................................................................................................... 2 
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` 
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` 
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`Arendi’s Argument in Opposition Has Already Been Rejected by This Court ...... 2 
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`Arendi Is Unable to Prove Infringement by the Non-Rebel 4 Products ................. 4 
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`III. 
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`CONCLUSION ................................................................................................................... 7 
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`
`
`
`
`i
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`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 3 of 11 PageID #: 11721
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`Arendi S.A.R.L. v. LG Elecs. Inc. et al.,
`Civ. No 1:20-cv-01483-LPS, D.I. 20 .....................................................................................1, 4
`
`Guardant Health, Inc. v. Found. Med., Inc.,
`No. CV 17-1616-LPS-CJB, 2020 WL 5994155 (D. Del. Oct. 9, 2020) (Stark, C.J.) ............4, 5
`
`SmithKline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312 (Fed. Cir. 2006)..................................................................................................4
`
`United Access Techs., LLC v. Verizon Internet Servs., Inc.,
`No. CV 05-866-LPS, 2021 WL 1200650 (D. Del. Mar. 26, 2021) ...........................................5
`
`Other Authorities
`
`Fed. R. Civ. P. 56(c)(1) ....................................................................................................................5
`
`
`ii
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`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 4 of 11 PageID #: 11722
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`I.
`
`INTRODUCTION AND SUMMARY OF REPLY
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`Arendi accused the Non-Rebel 4 Products of infringing the ’843 patent, but then failed to
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`provide the requisite infringement contention claim charts. Arendi failed to take the necessary
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`steps to preserve an infringement theory for the Non-Rebel 4 Products, and accordingly, Arendi
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`can no longer prove that the Non-Rebel 4 Products infringe.
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`Moreover, to this very day, Arendi has failed to provide any explanation for its failure to
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`meet its discovery obligations by the close of fact discovery in 2019. Rather than establish
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`“good cause” to amend its contentions, Arendi instead attempted to improperly amend its
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`contentions by including new and undisclosed infringement theories and evidence in its opening
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`expert report. LG moved to strike the new contentions and evidence, and the Court granted LG’s
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`motion. [See D.I. 213.] Therefore, Arendi is left with no evidence with which to establish
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`infringement as to the Non-Rebel 4 Products.
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`Arendi attempts to sidestep the impact of the Court’s Order on LG’s Motion to Strike by
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`referring to the ruling as a mere “technicality.” [D.I. 298 at 2 (“There is no reason to grant
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`summary judgment on a technicality here . . . .”).] It was not a mere technicality. Notably,
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`Arendi does not dispute that summary judgment of non-infringement is appropriate where a
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`plaintiff accuses products of infringement but then fails to provide infringement contentions.
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`Here, Arendi’s improper expert evidence attempting to show infringement by the Non-Rebel 4
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`Products was struck—and the consequence is that Arendi cannot prove infringement by those
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`products.
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`Arendi also argues that the Non-Rebel 4 Products are not properly in this case. However,
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`this Court has already laid such strained arguments to rest. In dismissing Arendi II, this Court
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`stated: “the non-Rebel 4 products are part of Arendi I” (i.e., this case). Arendi S.A.R.L. v. LG
`
`1
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`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 5 of 11 PageID #: 11723
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`Elecs. Inc. et al., Civ. No 1:20-cv-01483-LPS, D.I. 20 (Transcript of Telephonic Oral Argument
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`Hearing) at 55:1-5 (D. Del. Apr. 19, 2021) (“Arendi II”). The bottom line is that LG is entitled
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`to summary judgment of no infringement because Arendi failed to meet its discovery obligations
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`to maintain its infringement allegations and because Arendi lacks the theories, evidence, and
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`expert testimony needed to reach the jury on the issue of infringement as to the Non-Rebel 4
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`Products.
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`Arendi presents a single substantive argument in a footnote, arguing that it can prove
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`infringement without expert opinions because the jury can allegedly observe infringement by
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`inspecting the accused devices. Because it is raised in a footnote, it is waived. Even if not
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`waived, Arendi’s argument is meritless. For one thing, Arendi’s argument ignores the fact that it
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`cannot prove infringement for the simple reason that it lacks infringement contentions as to the
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`Non-Rebel 4 Products. Moreover, Arendi makes no attempt to develop or support its
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`argument—and for good reason. Arendi’s own expert admitted that while the patent claims have
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`some limitations visible to the user, they also have limitations that are “under the hood” and
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`which cannot be discerned from mere inspection of the devices. Thus expert testimony is needed
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`to prove infringement.
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`II.
`
`ARGUMENT
`
`
`
`Arendi’s Argument in Opposition Has Already Been Rejected by This Court
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`LG moves for summary judgment on the Non-Rebel 4 Products because Arendi cannot
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`establish infringement. First, Arendi failed to provide the required claim charts providing LG
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`with notice as to how Arendi maps each limitation of each asserted claim onto the accused Non-
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`Rebel 4 Products. On this basis alone, summary judgment is appropriate.
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`A party cannot flaunt and disregard its duty to fully disclose an infringement theory
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`during fact discovery, and then pursue the waived claims of infringement at trial. LG cited
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`2
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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 6 of 11 PageID #: 11724
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`multiple cases in its opening brief establishing that summary judgment of non-infringement is
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`appropriate where the plaintiff fails to provide proper infringement contentions for accused
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`products. In fact, LG agrees with Arendi’s own summarization of these cases, and reproduces
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`Arendi’s parentheticals here:
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`See Speedfit LLC v. Woodway USA, Inc., 432 F. Supp. 3d 183, 214
`(E.D.N.Y. 2020) (granting summary judgment of non-infringement
`where, at time of summary judgment, plaintiff had never provided
`infringement contentions for accused products and products
`remained in case); Nationwide Sales & Servs., Inc. v. Envirocare
`Techs., No. CV 16-6617 (GRB), 2018 WL 2436969, at *6
`(E.D.N.Y. May 30, 2018) (granting summary judgment because
`“plaintiffs’ counsel has simply failed or refused to submit claim
`charts” even though it “well knew that dispositive motion practice
`would follow”), aff’d, 771 F. App’x 490 (Fed. Cir. 2019); Verizon
`California Inc. v. Ronald A. Katz Tech. Licensing, L.P., No. 01-
`CV-09871 RGK(RCX), 2003 WL 25761597 at *25- 26 (C.D. Cal.
`Dec. 2, 2003) (granting summary judgment because plaintiff never
`provided infringement contentions for certain services which
`remained in case at time of summary judgment); In re
`PersonalWeb Techs., LLC Patent Litig., No. 18-MD-02834-BLF,
`2020 WL 6821074, at *7 (N.D. Cal. Feb. 3, 2020) (granting
`summary judgment of non-infringement of patents which plaintiff
`omitted from infringement contentions but which remained in
`case at time of summary judgment).
`
`[D.I. 298 at 7 n.2 (emphases added).] As even Arendi’s summary of LG’s cases makes clear,
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`summary judgment of non-infringement is appropriate where, as here, the plaintiff accused
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`products but then failed to provide infringement contentions for those products.
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`Second, this Court issued an order striking Arendi’s expert opinions and evidence
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`concerning the Non-Rebel 4 products. Those opinions and evidence are thus not available for
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`trial and not available at summary judgment. As demonstrated in LG’s opening brief, there are
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`no remaining facts (disputed or otherwise) on which Arendi can present an infringement case to
`
`the jury for the Non-Rebel 4 Products. Arendi’s technical expert reports are now limited to the
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`Rebel 4 Products and the jury would have no basis to find infringement as to any other products.
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`3
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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 7 of 11 PageID #: 11725
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`Arendi offers no rebuttal to these two dispositive issues, but instead rests its opposition
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`nearly entirely on its assertion that “the Non-Rebel 4 Products are not at issue in this case,” [D.I.
`
`298 at 1], and that its infringement claims against the Non-Rebel 4 Products should be resolved
`
`in Arendi II. [See id. at 5-11.] On April 19, 2021, this Court dismissed Arendi II and explained
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`that “the non-Rebel 4 products are part of Arendi I” and that “[if] there is ever going to be a case
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`in which those are to be litigated, Arendi I was, and is, it.” 55:1-5, 61:20-22. Accordingly, the
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`Non-Rebel 4 Products are in this case and Arendi’s arguments to the contrary are baseless, and
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`have already been rejected by this Court. Summary judgment of non-infringement is therefore
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`appropriate.
`
`
`
`Arendi Is Unable to Prove Infringement by the Non-Rebel 4 Products
`
`Arendi relegated its single substantive response to LG’s motion to a footnote, nine pages
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`into its brief. [D.I. 298 at 9 n.4.] In that footnote, Arendi asserts, without citation to any factual
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`support, that it can still establish infringement by the Non-Rebel 4 Products without expert
`
`testimony. See id. Arendi’s argument fails for at least four reasons.
`
`First, the Court should decline to consider this argument because Arendi raised it in a
`
`footnote—a practice disfavored by this Court and by both the Third and Federal Circuits. See
`
`Guardant Health, Inc. v. Found. Med., Inc., No. CV 17-1616-LPS-CJB, 2020 WL 5994155, at
`
`*2 (D. Del. Oct. 9, 2020) (Stark, C.J.) (concluding footnote objection was waived) (citing John
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`Wyeth & Bro. Ltd. v. CIGNA Int’l Corp., 119 F.3d 1070, 1076 (3d Cir. 1997) (“[A]rguments
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`raised in passing (such as, in a footnote), but not squarely argued, are considered waived.”)); see
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`also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
`
`(“Further, arguments raised in footnotes are not preserved.”); UCB, Inc. v. Accord Healthcare,
`
`Inc., 201 F. Supp. 3d 491, 542 n.33, 547 n.36 (D. Del. 2016) (Stark, C.J.) (“Arguments that are
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`presented in limited form in footnotes are entitled to little weight.”), aff’d, 890 F.3d 1313 (Fed.
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`4
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`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 8 of 11 PageID #: 11726
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`Cir. 2018). In fact, Arendi does not even attempt to develop this novel theory or make any
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`attempt to explain how it would prove infringement without expert testimony.
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`Second, Arendi does not dispute that summary judgment can, and should, be granted
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`when a party fails to provide infringement contentions for products at issue in a litigation. [D.I.
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`298 at 7-9.] Arendi acknowledged the holdings of the cases cited by LG, and provided no cases
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`in rebuttal. [Id. at 7.] As LG’s cited cases establish, Arendi’s failure to provide infringement
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`contentions for the Non-Rebel 4 Products alone is enough reason for this Court to grant summary
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`judgment of non-infringement as to those products.
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`Third, Arendi does not provide any factual support for its assertion that it can still prove
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`infringement without expert testimony. As the party opposing summary judgment, Arendi had
`
`the burden to “come forward with specific facts showing that there is a genuine issue for trial.”
`
`United Access Techs., LLC v. Verizon Internet Servs., Inc., No. CV 05-866-LPS, 2021 WL
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`1200650, at *4 (D. Del. Mar. 26, 2021) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio
`
`Corp., 475 U.S. 574, 587 (1986)); see also Fed. R. Civ. P. 56(c)(1). Because Arendi fails to cite
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`any evidence, it cannot possibly show a genuine dispute that would avoid summary judgment.
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`Beyond that fundamental failure, Arendi’s claim that “infringement is visible to any user of LG’s
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`accused smartphones” is baseless. [D.I. 298 at fn.4.] For example, the patent claims require that
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`a certain “analyzing” step take place “while a document is being displayed.” [See D.I. 265-3 at
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`10:43.] The analysis is not visible to the user and thus mere inspection of an LG device would
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`not show that the “analyzing” occurs “while a document is being displayed” as opposed to a time
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`when the alleged document is not being displayed. As another example, the claims require that
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`“an input device [is] configured by a first computer program.” [Id. at 10:50-51.] However, a
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`user cannot tell from looking at or using an LG smartphone what does the configuring. The
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`5
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`

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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 9 of 11 PageID #: 11727
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`configuring occurs deep in the software and is a function that occurs “under the hood” and is
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`invisible to the user. For the Rebel 4 Products, Arendi relies on extensive expert testimony to
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`allegedly show that the configuration software is part of the “first computer program.” [See, e.g.,
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`D.I. 265-1 (Rosing Rebuttal Report) at ¶¶ 122-125, 153-157, 182-185, 223-224.] LG offers
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`rebuttal testimony showing that the certain pieces of software that Arendi identifies are not part
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`of any “first computer program,” but instead are part of the Android operating system, and other
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`pieces of software Arendi identifies do not do the alleged configuring. [See id. at ¶¶ 120-126,
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`151-158, 180-185, 223-233; D.I. 265-2 at 18-57 (discussing source code identified by Arendi
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`that is in Android operating system).] The disputes with regard to the Rebel 4 Products (not the
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`Non-Rebel 4 Products) cannot be resolved by mere inspection of a smartphone, but require
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`intimate knowledge of the structure and operation of the internal software. Likewise, for the
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`Non-Rebel 4 Products, a user cannot discern who does the configuring—expert testimony is
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`required. For the Non-Rebel 4 Products, Arendi has no expert testimony and thus a jury has no
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`basis whatsoever to determine where the configuration takes place.
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`Fourth, Arendi’s own expert confirms that there are claim features that are “under the
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`hood” and not visible to the user. Specifically, Arendi’s survey expert testified that he generated
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`a survey that ignored certain claim limitations because those limitations were “under the hood”
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`and not visible to the consumer. He justified ignoring those limitations in the survey because
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`“something the consumer was wholly unaware of could not be a matter of importance to the
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`consumer.” [D.I. 269-2 (Depo. Tr. of Dr. Marais) at 48:1-49:1 (emphasis added)]. As LG
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`explained in its Daubert motion against Arendi’s survey expert, Dr. Marais, there are several of
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`these “under the hood” limitations of the claims that would not be observable to a lay jury,
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`including: “while the document is being displayed, analyzing” and an “input device configured
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`6
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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 10 of 11 PageID #: 11728
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`by the first computer program.” [D.I. 267 at 6.] Given that Arendi’s own expert admits that
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`there are “under the hood” limitations that a consumer is “wholly unaware of,” Arendi should not
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`be heard to argue that a lay jury can observe these limitations merely by operating a smartphone.
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`On the contrary, Arendi requires expert testimony to support its infringement theories.
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`III. CONCLUSION
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`The Court should grant summary judgment of non-infringement as to the Non-Rebel 4
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`Products, because Arendi accused them of infringing its patent, but has not provided proper
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`infringement contentions as to those products, and because Arendi cannot prove infringement
`
`without expert opinions and evidence regarding the Non-Rebel 4 Products.
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`
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`7
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`Case 1:12-cv-01595-LPS Document 332 Filed 05/13/21 Page 11 of 11 PageID #: 11729
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`Dated: May 6, 2021
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`
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`
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`FISH & RICHARDSON P.C.
`
`By: /s/ Jeremy D. Anderson
`
`Jeremy D. Anderson (#4515)
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`(302) 652-5070
`janderson@fr.com
`
`Steven R. Katz
`Jacob Pecht
`Eda Stark
`One Marina Park Drive
`Boston, MA 02210
`(617) 542-5070
`katz@fr.com; pecht.com
`stark@fr.com
`
`R. Andrew Schwentker
`1000 Maine Ave SW
`Washington, D.C. 20024
`Telephone (202) 783-5070
`schwentker@fr.com
`
`Attorneys for Defendants
`LG Electronics Inc., LG Electronics USA, Inc., and
`LG Electronics MobileComm U.S.A., Inc.
`
`8
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`