Intellectual Ventures II LLC v. Sprint Spectrum, L.P. et al

Filing 516

ORDER ADOPTING REPORT AND RECOMMENDATIONS. Signed by District Judge Rodney Gilstrap on 5/6/2019. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INTELLECTUAL VENTURES II LLC,
Plaintiff,
v.
SPRINT SPECTRUM, L.P. ET AL,

T-MOBILE USA, INC. ET AL,
Defendants.

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Case No. 2:17-CV-00662-JRG-RSP
LEAD CASE

Case No. 2:17-CV-00661-JRG-RSP

ORDER
Before the Court is Magistrate Judge Payne’s Report and Recommendation
regarding Defendants’ Sealed Motion for Summary Judgment of No Pre-Suit Damages,
which has not been objected to. (Dkt. No. 456.) Also before the Court are (1) Objections
to the Court’s Order on the Motion to Preclude Expert Testimony on Certain Evidence in
Support of Defendants’ Written Description Defense (Dkt. No. 480); (2) Objections to the
Magistrate Judge’s Report and Recommendation on Defendants’ Motion for Summary
Judgment that the Asserted Claims of U.S. Patent Nos. 9,320,018 and 9,681,466 are Patent
Ineligible (Dkt. No. 498); and (3) Objections to the Report and Recommendation Denying
in Part Defendant’s Motion for Partial Summary Judgment that Certain Disputed
References are Prior Art (Dkt. No. 501). The Court will address each of these below.

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1. Report and Recommendation regarding Defendants’ Motion for Summary
Judgment of No Pre-Suit Damages
Defendants previously filed a Motion for Summary Judgment of No Pre-Suit
Damages. (Dkt. No. 297.) On April 18, 2019, Magistrate Judge Payne entered a Report and
Recommendation, which found that the Motion should be granted-in-part. (Dkt. No. 456.)
The Report concluded that Defendants’ Motion should be granted as to pre-suit damages
for U.S. Patent Nos. 8,897,828; 8,953,641; 9,532,330; and 9,681,466, but the Report
recommended that Defendants’ Motion be denied as to pre-suit damages for U.S. Patent
Nos. 8,682,357 and 9,320,018. No objections have been filed to this Report and
Recommendation by any party.
Because no objections have been filed and because the undersigned agrees with the
reasons set forth in the Court’s Report and Recommendation, the Recommendation is
ADOPTED. It is therefore ORDERED that Defendants’ Motion is GRANTED-INPART. The Motion is GRANTED as to pre-suit damages for U.S. Patent Nos. 8,897,828;
8,953,641; 9,532,330; and 9,681,466, but the Motion is DENIED as to pre-suit damages
for U.S. Patent Nos. 8,682,357 and 9,320,018.
2. Objections to Magistrate Judge Payne’s Order on the Motion to Preclude
Expert Testimony on Certain Evidence in Support of Defendants’ Written
Description Defense
Plaintiff previously filed a Motion to Preclude Expert Testimony on Certain
Evidence in Support of Defendants’ Written Description Defense. (Dkt. No. 300.)
Magistrate Judge Payne issued an Order (Dkt. No. 446) partially granting that Motion to

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Preclude. Now before the Court are Defendants’ Rule 72 Objections to the Court’s Order
on the Motion to Preclude. (Dkt. No. 480.)
After consideration of Defendants’ Objections (Dkt. No. 480), the Magistrate
Judge’s Order (Dkt. No. 446), and the underlying briefing (Dkt. Nos. 300, 334, 357, 399),
the undersigned agrees with the reasoning provided within the Magistrate Judge’s Order.
Defendants’ Objections are therefore OVERRULED, and the Magistrate Judge’s Order is
ADOPTED.
3. Objections to the Magistrate Judge’s Report and Recommendation on
Defendants’ Motion for Summary Judgment that the Asserted Claims of U.S.
Patent Nos. 9,320,018 and 9,681,466 are Patent Ineligible
Defendants previously filed a Motion for Summary Judgment that the Asserted
Claims of U.S. Patent Nos. 9,320,018 and 9,681,466 are Patent Ineligible. (Dkt. No. 303.)
Magistrate Judge Payne issued a Report and Recommendation (Dkt. No. 455), which
recommended that the undersigned deny Defendants’ Motion (Dkt. No. 303) in full. Now
before the Court are Defendants’ Objections to the Magistrate Judge’s Report and
Recommendation. (Dkt. No. 498.)
After consideration of Defendants’ Objections (Dkt. No. 498), the Magistrate
Judge’s Report and Recommendation (Dkt. No. 455), and the underlying briefing (Dkt.
Nos. 303, 345, 381, 406), the undersigned agrees with the reasoning provided within the
Magistrate Judge’s Report and Recommendation. Defendants’ Objections are therefore
OVERRULED, and the Magistrate Judge’s Order is ADOPTED.

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4. Objections to the Report and Recommendation Denying in Part Defendant’s
Motion for Partial Summary Judgment that Certain Disputed References are
Prior Art
Defendants previously filed a Motion for Partial Summary Judgment that Certain
Disputed References are Prior Art. (Dkt. No. 305.) This Motion sought summary judgment
with respect to five references—the Yang, Hwang, Liebetreu, CATT, and LG references.
(Id.) Magistrate Judge Payne issued a Report and Recommendation (Dkt. No. 457), which
recommended that Defendants’ Motion be granted in part. The Magistrate Judge
recommended that summary judgment be granted for the Yang reference as the Plaintiff
indicated that it would not contest the public accessibility of that reference. (Dkt. No. 457
at 3 (citing Dkt. No. 343 at 2).) However, the Magistrate Judge recommended that summary
judgment be denied for the Hwang, Liebetreu, CATT, and LG references. (Dkt. No. 457 at
6.) Defendants have now filed Objections to the Magistrate Judge’s Report and
Recommendation, contending that the summary judgment was appropriate for the Hwang,
Liebetreu, CATT, and LG references. (Dkt. No. 501.)
a. Yang Reference
No party has objected to the Magistrate’s Judge’s Recommendation that summary
judgment be granted for the Yang reference. For this reason and the reasons set forth in the
Report and Recommendation, the Recommendation is ADOPTED. Consequently, it is
ORDERED that Defendants’ Motion for Summary Judgment is GRANTED with respect
to the Yang reference and that the Yang reference is therefore prior art.
b. Hwang and Liebetreu References
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Defendants object to the Magistrate Judge’s Recommendation that summary
judgment be denied for the Hwang and Liebetreu references. Defendants argue that the
Schwartz declaration indicates that Hwang was labeled as “A New Frame Structure for
Scalable OFDMA Systems (Inseok Hwang, Jaehee Cho, Sanghoon, Sung Hun Huh, Soon
Young Yoon, Panyuh Joo, Jaeweon Cho, 04/03/11 [March 11, 2004])” and Liebetreu was
labeled as “OFDMA PHY Enhancements for better mobility performance (John Liebetreu,
et al., 04/03/18).” However, even with these labels, questions of fact remain as to whether
a person interested and ordinarily skilled in the subject matter or art could identify the
documents from the 4,000 to 10,000 listed references exercising reasonable diligence.
These references were listed in primarily chronological order, and it remains unclear
whether the website had any way to sort through the references. (Dkt. No. 343-3 at 67:11–
68:6.) Because interested persons may have been required to look through a list containing
somewhere between 4,000 and 10,000 references to find these references, the Court agrees
with the Report and Recommendation that factual questions remain and that summary
judgment should be denied for these references. The Magistrate Judge’s Recommendation
is therefore ADOPTED. Consequently, it is ORDERED that Defendants’ Motion for
Summary Judgment is DENIED with respect to the Hwang and Liebetreu references.
c. CATT and LG References
After consideration of Defendants’ Objections (Dkt. No. 501), the Magistrate
Judge’s Report and Recommendation (Dkt. No. 457), and the underlying briefing (Dkt.
Nos. 305, 343, 376, 407), the undersigned agrees with the reasoning provided within the

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Magistrate Judge’s Report and Recommendation for the CATT and LG References.
Defendants’ Objections to the Recommendations regarding the CATT and LG References
are therefore OVERRULED, and the Magistrate Judge’s Order is ADOPTED.

So Ordered this
May 6, 2019

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