WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 113

First Amended ANSWER to 1 Complaint,,, COUNTERCLAIM against WI-LAN Inc. by Sony Ericsson Mobile Communications (USA) Inc..(Wynne, Richard)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN, INC.,
Plaintiff,
v.

CIVIL ACTION NO. 6:10–CV–521–LED

ALCATEL–LUCENT USA INC. et al.,
Defendants.

SONY ERICSSON MOBILE COMMUNICATIONS (USA) INC.’S FIRST AMENDED ANSWER TO
PLAINTIFF’S ORIGINAL COMPLAINT, AND SONY ERICSSON MOBILE COMMUNICATIONS (USA)
INC.’S COUNTERCLAIMS AGAINST PLAINTIFF
Defendant Sony Ericsson Mobile Communications (USA) Inc. (“SEUS”) files this First
Amended Answer to Plaintiff’s Original Complaint (“Complaint”) filed on October 5, 2010, by
Plaintiff, Wi-LAN Inc. (“Plaintiff”), and alleges as follows:
PARTIES
1.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 1 of the Complaint and therefore denies the allegations in that
paragraph.
2.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 2 of the Complaint and therefore denies the allegations in that
paragraph.
3.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 3 of the Complaint and therefore denies the allegations in that
paragraph.

4.

SEUS admits that Defendant Sony Ericsson Mobile Communications AB is a

Swedish corporation with a principal place of business at Nya Vattentornet, Lund, Sweden SE221 88. SEUS further admits that SEUS is a subsidiary of Defendant Sony Ericsson Mobile
Communications AB but denies that it has a principal place of business at 7001 Development
Drive, Research Triangle Park, North Carolina 27709.

SEUS admits that it sells mobile

telephones in the United States and that some such products are compliant with portions of the
3GPP standard. SEUS is without sufficient information to form a belief as to the truth of the
remaining allegations in paragraph 4 and therefore denies those allegations.
5.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 5 of the Complaint and therefore denies the allegations in that
paragraph.
6.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 6 of the Complaint and therefore denies the allegations in that
paragraph.
JURISDICTION AND VENUE
7.

SEUS admits that this purports to be an action for patent infringement under the

Patent Laws of the United States.
8.

SEUS admits the allegations in paragraph 8 of the Complaint.

9.

Responding to the allegations in paragraph 9 of the Complaint, SEUS does not

contest that venue in this action is proper, but SEUS denies that venue is convenient in this
forum.

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THE PATENTS-IN-SUIT
10.

SEUS admits that Exhibit A to the Complaint appears to be a copy of U.S. Patent

No. 6,088,326, entitled Processing Data Transmitted and Received over a Wireless Link
Connecting a Central Terminal and a Subscriber Terminal of a Wireless Telecommunications
System.” SEUS is without sufficient information to form a belief as to the truth of the remaining
allegations in paragraph 10 of the Complaint and therefore denies those allegations.
11.

SEUS admits that Exhibit B to the Complaint appears to be a copy of U.S. Patent

No. 6,195,327, entitled “Controlling Interference in a Cell of a Wireless Telecommunication
System.” SEUS is without sufficient information to form a belief as to the truth of the remaining
allegations in paragraph 11 of the Complaint and therefore denies those allegations.
12.

SEUS admits that Exhibit C to the Complaint appears to be a copy of U.S. Patent

No. 6,222,819, entitled “Processing Data Transmitted and Received Over a Wireless Link
Connecting a Central Terminal and a Subscriber Terminal of a Wireless Telecommunications
System.” SEUS is without sufficient information to form a belief as to the truth of the remaining
allegations in paragraph 12 of the Complaint and therefore denies those allegations.
13.

SEUS admits that Exhibit D to the Complaint appears to be a copy of U.S. Patent

No. 6,381,211, entitled “Processing Data Transmitted and Received Over a Wireless Link
Connecting a Central Terminal and a Subscriber Terminal of a Wireless Telecommunications
System.” SEUS is without sufficient information to form a belief as to the truth of the remaining
allegations in paragraph 13 of the Complaint and therefore denies those allegations.
14.

SEUS denies the allegations in paragraph 14 of the Complaint.

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COUNT I
15.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 15 of the Complaint and therefore denies the allegations in that
paragraph.
16.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 16 of the Complaint and therefore denies the allegations in that
paragraph.
17.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 17 of the Complaint and therefore denies the allegations in that
paragraph.
18.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 18 of the Complaint and therefore denies the allegations in that
paragraph.
19.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 19 of the Complaint and therefore denies the allegations in that
paragraph.
20.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 20 of the Complaint and therefore denies the allegations in that
paragraph.
21.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 21 of the Complaint and therefore denies the allegations in that
paragraph.

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22.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 22 of the Complaint and therefore denies the allegations in that
paragraph.
23.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 23 of the Complaint and therefore denies the allegations in that
paragraph.
24.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 24 of the Complaint and therefore denies the allegations in that
paragraph.
25.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 25 of the Complaint and therefore denies the allegations in that
paragraph.
COUNT II
26.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 26 of the Complaint and therefore denies the allegations in that
paragraph.
27.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 27 of the Complaint and therefore denies the allegations in that
paragraph.
28.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 28 of the Complaint and therefore denies the allegations in that
paragraph.

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29.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 29 of the Complaint and therefore denies the allegations in that
paragraph.
30.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 30 of the Complaint and therefore denies the allegations in that
paragraph.
COUNT III
31.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 31 of the Complaint and therefore denies the allegations in that
paragraph.
32.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 32 of the Complaint and therefore denies the allegations in that
paragraph.
33.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 33 of the Complaint and therefore denies the allegations in that
paragraph.
34.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 34 of the Complaint and therefore denies the allegations in that
paragraph.
35.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 35 of the Complaint and therefore denies the allegations in that
paragraph.

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36.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 36 of the Complaint and therefore denies the allegations in that
paragraph.
37.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 37 of the Complaint and therefore denies the allegations in that
paragraph.
38.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 38 of the Complaint and therefore denies the allegations in that
paragraph.
39.

SEUS admits that it has sold and/or offered for sale certain mobile telephones,

including the Vivaz, Xperia X10, Equinox, W518a, Satio, Xperia X2a, Xperia Pureness, Aino,
and Naite products. SEUS admits that it has sold and/or offered for sale certain products that are
compliant with portions of the 3GPP standard. Sony Ericsson denies the remaining allegations
in paragraph 39 of the Complaint.
40.

Responding to the allegations in paragraph 40 of the Complaint, SEUS admits

that it has sold and/or offered for sale certain products that support portions of the 3GPP
standard. SEUS denies the remaining allegations in paragraph 40.
41.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 41 of the Complaint as written and therefore denies the allegations in
that paragraph.
42.

SEUS denies the allegations in paragraph 42 of the Complaint.

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43.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 43 of the Complaint and therefore denies the allegations in that
paragraph.
44.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 44 of the Complaint and therefore denies the allegations in that
paragraph.
45.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 45 of the Complaint and therefore denies the allegations in that
paragraph.
46.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 46 of the Complaint and therefore denies the allegations in that
paragraph.
47.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 47 of the Complaint and therefore denies the allegations in that
paragraph.
48.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 48 of the Complaint and therefore denies the allegations in that
paragraph.
49.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 49 of the Complaint and therefore denies the allegations in that
paragraph.

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50.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 50 of the Complaint and therefore denies the allegations in that
paragraph.
51.

SEUS denies the allegations of paragraph 51 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 51 of the Complaint and therefore denies those allegations.
52.

SEUS denies the allegations of paragraph 52 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 52 of the Complaint and therefore denies those allegations.
53.

SEUS denies the allegations of paragraph 53 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 53 of the Complaint and therefore denies those allegations.
COUNT IV
54.

SEUS admits that it has sold and/or offered for sale certain mobile telephones,

including the Vivaz, Xperia X10, Equinox, W518a, Satio, Xperia X2a, Xperia Pureness, Aino,
and Naite products. SEUS admits that it has sold and/or offered for sale certain products that are
compliant with portions of the 3GPP standard. Sony Ericsson denies the remaining allegations
in paragraph 54 of the Complaint.
55.

Responding to the allegations in paragraph 55 of the Complaint, SEUS admits

that it has sold and/or offered for sale certain products that support portions of the 3GPP
standard. SEUS denies the remaining allegations in paragraph 55.

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56.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 56 of the Complaint as written and therefore denies the allegations in
that paragraph.
57.

SEUS denies the allegations in paragraph 57 of the Complaint.

58.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 58 of the Complaint and therefore denies the allegations in that
paragraph.
59.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 59 of the Complaint and therefore denies the allegations in that
paragraph.
60.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 60 of the Complaint and therefore denies the allegations in that
paragraph.
61.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 61 of the Complaint and therefore denies the allegations in that
paragraph.
62.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 62 of the Complaint and therefore denies the allegations in that
paragraph.
63.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 63 of the Complaint and therefore denies the allegations in that
paragraph.

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64.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 64 of the Complaint and therefore denies the allegations in that
paragraph.
65.

SEUS is without sufficient information to form a belief as to the truth of the

allegations in paragraph 65 of the Complaint and therefore denies the allegations in that
paragraph.
66.

SEUS denies the allegations of paragraph 66 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 66 of the Complaint and therefore denies those allegations.
67.

SEUS denies the allegations of paragraph 67 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 67 of the Complaint and therefore denies those allegations.
68.

SEUS denies the allegations of paragraph 68 as they relate to SEUS. SEUS is

without sufficient information to form a belief as to the truth of the remaining allegations in
paragraph 68 of the Complaint and therefore denies those allegations.
PRAYER FOR RELIEF
69.

SEUS denies that Plaintiff is entitled to any relief requested in the Complaint’s

“Prayer for Relief.”

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AFFIRMATIVE DEFENSES
FIRST DEFENSE – NON-INFRINGEMENT
70.

SEUS has not infringed and does not infringe any valid claim of United States

Patent No. 6,222,819 (“the ’819 patent”). Nor has SEUS actively induced infringement of or
contributorily infringed any valid claim of the ’819 patent.
71.

SEUS has not infringed and does not infringe any valid claim of United States

Patent No. 6,381,211 (“the ’211 patent”). Nor has SEUS actively induced infringement of or
contributorily infringed any valid claim of the ’211 patent.
SECOND DEFENSE - INVALIDITY
72.

The ’819 patent is partially or wholly invalid for failure to meet the requirements

of 35 U.S.C. §§ 1 et seq., including, but not limited to 35 U.S.C. §§ 102, 103, and/or 112.
73.

The ’211 patent is partially or wholly invalid for failure to meet the requirements

of 35 U.S.C. §§ 1 et seq., including, but not limited to 35 U.S.C. §§ 102, 103, and/or 112.
THIRD DEFENSE – PROSECUTION HISTORY ESTOPPEL
74.

Plaintiff is estopped from construing any valid claim of the ’819 patent to cover or

include, either literally or by application of the doctrine of equivalents, any product
manufactured, used, imported, sold, or offered by SEUS because of admissions and statements to
the United States Patent and Trademark Office in the specification of the ’819 patent and during
prosecution of the application leading to the issuance of the ’819 patent.
75.

Plaintiff is estopped from construing any valid claim of the ’211 patent to cover or

include, either literally or by application of the doctrine of equivalents, any product
manufactured, used, imported, sold, or offered by SEUS because of admissions and statements to

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the United States Patent and Trademark Office in the specification of the ’211 patent and during
prosecution of the application leading to the issuance of the ’211 patent.
FOURTH DEFENSE – NO IRREPARABLE HARM
76.

Plaintiff is not entitled to injunctive relief because any alleged injury to the

Plaintiff is not immediate or irreparable, and Plaintiff has an adequate remedy at law.
FIFTH DEFENSE –FAILURE TO STATE A CLAIM
77.

Plaintiff has failed to state a claim upon which relief can be granted.
SIXTH DEFENSE –LIMITATION ON DAMAGES

78.

Plaintiff is not entitled to seek damages from SEUS prior to October 5, 2010, in

accordance with the Patent and Conflict Resolution Agreement between Plaintiff and SEUS (the
“Conflict Resolution Agreement”).
SEVENTH DEFENSE – ESTOPPEL
79.

Plaintiff is estopped from construing any valid claim of the ’819 patent to cover or

include, either literally or by application of the doctrine of equivalents, certain products
manufactured, used, imported, sold, or offered by SEUS because of the Conflict Resolution
Agreement.
80.

Plaintiff is estopped from construing any valid claim of the ’211 patent to cover or

include, either literally or by application of the doctrine of equivalents, certain products
manufactured, used, imported, sold, or offered by SEUS because of the Conflict Resolution
Agreement.

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EIGHTH DEFENSE – COVENANT NOT TO SUE
81.

Plaintiff is barred from maintaining this action and from recovering on its claims

against SEUS because of Wi-LAN’s Covenant Not to Sue, which is expressly set forth in Article
III of the Conflict Resolution Agreement.
OTHER DEFENSES
82.

SEUS reserves the right to assert additional affirmative defenses after appropriate

discovery.
SEUS’S COUNTERCLAIMS
1.

SEUS is a corporation organized and existing under the laws of the State of

Delaware having its principal place of business in Atlanta, Georgia.
2.

On information and belief, Wi-LAN Inc. (“Wi-LAN”) is a corporation organized

under the laws of Canada with its principal place of business at 11 Holland Ave., Suite 608,
Ottawa, Ontario, Canada.
3.

This Court has subject-matter jurisdiction over these counterclaims under 28

U.S.C. §§ 1331, 1338, 1367, 2201, and 2202, as they arise under an act of Congress relating to
patents, 35 U.S.C. §§ 101 et seq., or are so related to the claims over which this Court has
original jurisdiction that they form part of the same case or controversy under Article III of the
United States Constitution.
BREACH OF CONTRACT
4.

In February 2008, Plaintiff and SEUS entered into a valid and enforceable Patent

and Conflict Resolution Agreement that has an effective date of November 1, 2007.
5.

Plaintiffs’ assertions of infringement in its Complaint are a knowing and willful

breach of the Conflict Resolution Agreement.

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6.

SEUS fully performed all of its duties under the Conflict Resolution Agreement,

and all conditions precedent to SEUS’s recovery have occurred.
7.

Plaintiff’s breaches have damaged SEUS, entitling it to recover actual damages,

including but not limited to its attorneys’ fees, costs and expenses incurred in defending this
action.
NON-INFRINGEMENT AND INVALIDITY OF THE ’819 PATENT
8.

The ’819 patent was issued on April 24, 2001 by the United States Patent &

Trademark Office. Plaintiff claims to own all rights in and to the ’819 patent.
9.

Plaintiff has asserted that SEUS infringes the ’819 patent. An actual controversy

exists between Plaintiff and SEUS over the alleged infringement and invalidity of the ’819
patent.
10.

SEUS has not and does not directly or indirectly infringe, contribute to, or induce

infringement of any valid, enforceable claim of the ’819 patent either literally or under the
doctrine of equivalents.
11.

The ’819 patent is invalid for failing to meet one or more conditions of

patentability set forth in Part II of Title 35 of the United States Code, including but not limited to
sections 102, 103, and/or 112.
NON-INFRINGEMENT AND INVALIDITY OF THE ’211 PATENT
12.

The ’211 patent was issued on April 30, 2002 by the United States Patent &

Trademark Office. Plaintiff claims to own all rights in and to the ’211 patent.
13.

Plaintiff has asserted that SEUS infringes the ’211 patent. An actual controversy

exists between Plaintiff and SEUS over the alleged infringement and invalidity of the ’211
patent.

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14.

SEUS has not and does not directly or indirectly infringe, contribute to, or induce

infringement of any valid, enforceable claim of the ’211 patent either literally or under the
doctrine of equivalents.
15.

The ’211 patent is invalid for failing to meet one or more conditions of

patentability set forth in Part II of Title 35 of the United States Code, including but not limited to
sections 102, 103, and/or 112.
DEMAND FOR JURY TRIAL
SEUS demands a trial by jury on all counterclaims and issues triable by jury.
PRAYER FOR RELIEF
FOR

THESE REASONS,

SEUS respectfully requests that this Court enter judgment in its

favor and grant the following relief:
a.

An order awarding SEUS its actual damages caused by Plaintiff’s breach of the
Conflict Resolution Agreement;

b.

An order finding that Plaintiff’s breach was knowing and willful;

c.

An order enjoining Plaintiff from continued assertion of claims in breach of the
Conflict Resolution Agreement;

d.

An order declaring that Plaintiff, its officers, directors, agents, servants,
employees, and attorneys, and those persons in active concert or participation
with it, take nothing on the claims asserted in the Complaint;

e.

A declaration that SEUS does not infringe the ’819 patent;

f.

A declaration that the ’819 patent is invalid;

g.

A declaration that SEUS does not infringe the ’211 patent;

h.

A declaration that the ’211 patent is invalid;

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i.

An order declaring that this is an exceptional case and awarding SEUS its costs,
expenses, and reasonable attorneys’ fees under 35 U.S.C. § 285 and all other
applicable statutes, rules, and common law; and

j.

Any such other relief as the Court may deem appropriate and just under the
circumstances.

Dated: September 2, 2011

Respectfully submitted,

/s/ Richard L. Wynne, Jr.
Bruce S. Sostek (Lead Attorney)
State Bar No. 18855700
[e-mail]
Richard L. Wynne, Jr.
State Bar No. 24003214
[e-mail]
Matthew P. Harper
State Bar No. 24037777
[e-mail]
THOMPSON & KNIGHT LLP
1722 Routh St., Suite 1500
Dallas, Texas 75201
214.969.1700
214.969.1751 (facsimile)
ATTORNEYS FOR DEFENDANT SEUS

CERTIFICATE OF SERVICE
On September 2, 2011, true and correct copies of the foregoing document were served in
compliance with Local Rule 5.1 and have been served on all counsel who have consented to
electronic service and all other counsel by regular mail.

/s/ Richard L. Wynne, Jr.
Richard L. Wynne, Jr.
2779608.1

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