DCT
1:13-cv-00919
Arendi SARL v. Google Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Arendi S.A.R.L. (Luxembourg)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Smith, Katzenstein & Jenkins, LLP; Susman Godfrey, L.L.P.
- Case Identification: 1:13-cv-00919, D. Del., 12/21/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Google resides in the district, has committed acts of infringement there, and maintains a regular and established place of business.
- Core Dispute: Plaintiff alleges that a wide range of Defendant’s software and hardware products infringe four patents related to methods for retrieving information from a database and inserting it into a document within a computer program.
- Technical Context: The technology concerns the integration of data retrieval, such as finding a contact's address, directly into an application like a word processor, streamlining user workflow by eliminating the need to switch between programs.
- Key Procedural History: The complaint notes that the patents-in-suit have been the subject of prior litigation, including settled actions against Microsoft Corporation and Dell Inc. In those prior cases, two Markman (claim construction) hearings were held, which may suggest that certain key claim terms have been previously construed by the court, potentially influencing claim scope in the present litigation.
Case Timeline
| Date | Event |
|---|---|
| 1998-09-03 | Earliest Priority Date for all Patents-in-Suit |
| 2009-02-24 | U.S. Patent 7,496,854 Issues |
| 2009-02-24 | Prior Arendi lawsuit filed against Microsoft and Dell |
| 2011-02-25 | First Markman Hearing held in prior litigation |
| 2011-03-29 | U.S. Patent 7,917,843 Issues |
| 2011-03-29 | Prior Arendi lawsuit filed against Microsoft |
| 2011-04-05 | U.S. Patent 7,921,356 Issues |
| 2011-11-21 | Second Markman Hearing held in prior litigation |
| 2011-11-29 | Prior lawsuits against Microsoft and Dell resolved by settlement |
| 2012-11-06 | U.S. Patent 8,306,993 Issues |
| 2018-12-21 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,917,843 - Method, System and Computer Readable Medium for Addressing Handling from a Computer Program
The Invention Explained
- Problem Addressed: The patent family’s background describes the inefficiency users face when they need to retrieve information, such as a name and address, from an external source (e.g., a contact database) for use in a primary application (e.g., a word processor), a process that requires switching applications and manual data management (U.S. Patent 6,323,853, col. 1:21-39).
- The Patented Solution: The invention proposes a “function item,” such as a button, within the primary computer program. A single user command on this item initiates a process that analyzes information already typed in a document (e.g., a person's name), searches a database for related data (e.g., a full address), and then inserts or completes the information in the document, all without the user needing to manually switch to the database program (’843 Patent, Abstract; ’853 Patent, col. 2:6-27).
- Technical Importance: This technology represents a step toward integrating disparate software applications to create a more seamless user workflow, reducing manual tasks and context-switching.
Key Claims at a Glance
- The complaint asserts independent claims 1, 20, 23, and 42 (Compl. ¶19).
- Independent claim 1, a method claim, includes the following essential elements:
- displaying a document electronically using a first computer program;
- analyzing first information from the document to determine its type;
- retrieving that first information;
- providing an input device for a user to enter a command to initiate an operation;
- upon receiving the user command, causing a search in an information source using the first information as a search term to find second information; and
- if second information is found, performing an action (e.g., insertion, display) using that second information.
- The complaint reserves the right to assert all other claims, including dependent claims (Compl. ¶19).
U.S. Patent No. 7,496,854 - Method, System and Computer Readable Medium for Addressing Handling from a Computer Program
The Invention Explained
- Problem Addressed: As with the ’843 Patent, the invention addresses the cumbersome process of retrieving data from external sources for use within a primary application (’853 Patent, col. 1:21-39).
- The Patented Solution: This patent claims a system that automatically, "without user intervention," "marks" certain information within a document to alert the user that it can be used to trigger an action with a second program (e.g., a database). In response to a user selection on the marked information, the system can then insert related data from the second program into the document (’854 Patent, Abstract; Claim 13).
- Technical Importance: The invention’s focus on automatic identification and "marking" of data points toward the development of context-aware software features, such as data detectors that can recognize actionable information like addresses or phone numbers in text.
Key Claims at a Glance
- The complaint asserts independent claims 13, 31, 50, 79, 93, 98, and 101 (Compl. ¶29).
- Independent claim 13, a system claim, recites the following essential means for:
- entering first information in a first application program;
- marking the first information without user intervention to alert the user it can be utilized in a second application program; and
- responding to a user selection by inserting second information (associated with the first information) from the second application program into the document.
- The complaint reserves the right to assert other claims (Compl. ¶29).
Multi-Patent Capsule: U.S. Patent 7,921,356 - Method, System and Computer Readable Medium for Addressing Handling from a Computer Program
- Technology Synopsis: Belonging to the same patent family, this patent discloses a method for information handling where a computer program analyzes textual information in a document and, upon a user command initiated via an input device like a menu, searches an information source to find related data and performs an action based on the results.
- Asserted Claims: Independent claim 2 is asserted (Compl. ¶39).
- Accused Features: The complaint accuses the general "information handling technology" present in the Accused Products (Compl. ¶5, ¶39).
Multi-Patent Capsule: U.S. Patent 8,306,993 - Method, System and Computer Readable Medium for Addressing Handling from an Operating System
- Technology Synopsis: This patent extends the core information retrieval technology to the operating system level, rather than being confined to a single application. It describes providing a record retrieval program and input device within an operating system window to search both local and remote data sources.
- Asserted Claims: Independent claims 1, 9, and 17 are asserted (Compl. ¶49).
- Accused Features: The complaint accuses the "information handling technology" in the Accused Products, which are often integrated with or function as operating systems (e.g., Android, Chrome OS) (Compl. ¶5, ¶49).
III. The Accused Instrumentality
Product Identification
The complaint names a broad suite of Google products, including Gmail, Google Documents/Docs, Google Sheets, Google Slides, Google Chrome, Google Translate, Google Calendar, Google Hangout, the Google App, and Google hardware such as Nexus, Pixel, Chromebook Pixel, and Pixelbook devices (Compl. ¶5).
Functionality and Market Context
The complaint does not describe the specific functionality of the accused products in technical detail. It alleges that the products contain "information handling technology disclosed in the asserted patents" without identifying specific features, such as autocomplete, smart contact suggestions, or data detection functionalities, that allegedly practice the claimed methods (Compl. ¶5). The complaint alleges that Google derives substantial revenue from the sale and distribution of these products (Compl. ¶8).
IV. Analysis of Infringement Allegations
The complaint provides only conclusory allegations of infringement without detailed factual support or claim charts mapping specific product features to claim limitations. The following tables summarize the infringement theory based on the general allegations made.
'843 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| analyzing... first information from the document to determine if it is at least one of a plurality of types of information that can be searched for... | The Accused Products' information handling technology, which allegedly analyzes information within them. | ¶5, ¶19 | col. 4:28-37 |
| providing an input device... that allows a user to enter a user command to initiate an operation... | The Accused Products contain user-operable features that allegedly initiate the patented information handling methods. | ¶5, ¶19 | col. 2:6-15 |
| in consequence of receipt... of the user command... causing a search for the search term in the information source... | The Accused Products allegedly search information sources in response to user actions. | ¶5, ¶19 | col. 2:15-22 |
| performing an action using at least part of the second information... | The Accused Products' information handling technology allegedly performs an action, such as inserting data, based on search results. | ¶5, ¶19 | col. 2:22-27 |
'854 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| means for entering a first information in the first application program; | The Accused Products provide means for users to enter information. | ¶5, ¶29 | col. 1:12-14 |
| means for marking without user intervention the first information to alert the user that the first information can be utilized in a second application program; | The Accused Products' information handling technology allegedly marks or identifies information automatically. | ¶5, ¶29 | '854 Patent, col. 9:51-56 |
| means for responding to a user selection by inserting a second information into the document... from the second application program... | The Accused Products' information handling technology allegedly responds to user selections by inserting data from an information source. | ¶5, ¶29 | '854 Patent, col. 9:57-61 |
Identified Points of Contention
- Scope Questions: A primary question may be whether claim terms drafted in the context of 1990s-era desktop software (e.g., a "word processor," a local "database") can be construed to cover the modern, cloud-based, and distributed architectures of the Accused Products. The definitions of "document" and "information source" in such an environment may be points of contention.
- Technical Questions: The complaint's lack of specificity raises the fundamental question of what evidence will be presented to map specific features of the numerous Accused Products to the claimed steps. For the ’854 Patent, a key factual question will be what accused functionality performs the "marking without user intervention" and whether that functionality serves "to alert the user" as the claim requires.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
"analyzing the document to determine if the first information is contained therein" (’843 Patent, Claim 1)
Context and Importance
This term defines the trigger for the patented method. Its construction is critical to determining whether the sophisticated natural language processing and machine learning algorithms in Google’s modern products fall within the scope of the more rudimentary analysis described in the 1998-priority patent.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The plain language of the claim itself does not specify the method of analysis, which could support a construction covering any technical means of identifying information in a document.
- Evidence for a Narrower Interpretation: The parent patent’s specification provides a highly detailed, rule-based definition of this step, stating the program analyzes "(i) paragraph/line separations/formatting... (ii) street, avenue, drive... designators... (iii) Mr., Mrs., Sir, Madam... designators... and (v) a database of common male/female names, etc." (U.S. Patent 6,323,853, col. 4:30-37). This language may support a narrower construction limited to such structured parsing.
"marking without user intervention" (’854 Patent, Claim 13)
Context and Importance
This is a central limitation of the asserted ’854 Patent claims. The dispute may turn on whether "marking" requires a user-perceptible visual indication (like a highlight or hyperlink) or if it can also cover non-visible, background metadata tagging performed by the accused software.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The term "marking" is not explicitly defined, which may allow it to encompass any form of data identification or tagging, whether visible to the user or not.
- Evidence for a Narrower Interpretation: The claim states the purpose of the marking is "to alert the user that the first information can be utilized in a second application program" (’854 Patent, Claim 13). This purpose-oriented language suggests the "marking" must be something the user can perceive in order to be alerted.
VI. Other Allegations
Indirect Infringement
The complaint makes boilerplate allegations of induced and contributory infringement for all asserted patents. It alleges that Google actively encourages infringement through the dissemination of the Accused Products, marketing materials, and user manuals, and that the "infringing information handling technology" is not a staple article of commerce suitable for substantial noninfringing use (e.g., Compl. ¶23, ¶26, ¶33, ¶36, ¶43, ¶46, ¶53, ¶56).
Willful Infringement
The complaint does not contain a separate count for willful infringement. However, the prayer for relief seeks "enhanced damages pursuant to 35 U.S.C. § 284," the statutory basis for such damages (Compl., Prayer for Relief ¶B). The factual basis for knowledge is alleged to have begun "at least since the filing of this complaint," suggesting a theory of post-suit willfulness (e.g., Compl. ¶22, ¶32, ¶42, ¶52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological translation: can claim terms drafted in the 1998 context of standalone desktop applications and local databases be construed to read on the functionality of modern, interconnected, cloud-based software ecosystems like Google's suite of products?
- A key evidentiary question will be one of infringement specificity: given the complaint's high-level allegations, a central challenge for the plaintiff will be to produce specific evidence mapping the discrete, multi-step methods of the patent claims onto the actual operation of specific, accused features within the vast and varied Google product line.
- A significant legal question will involve the impact of prior litigation: how will the claim constructions adopted by the court in the prior, settled litigations against Microsoft and Dell—where two Markman hearings were conducted—shape the parties' infringement and validity arguments in this case?