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

Filing 207

Unopposed MOTION to Compel PRODUCTION OF LICENSE AGREEMENTS FROM HTC CORPORATION, HTC AMERICA, AND EXEDEA INC. by WI-LAN Inc.. (Attachments: # 1 Affidavit DECLARATION OF AJEET P. PAI IN SUPPORT OFWI-LAN INC.S UNOPPOSED MOTION TO COMPEL PRODUCTION OF LICENSE AGREEMENTS FROM HTC CORPORATION, HTC AMERICA, AND EXEDEA INC., # 2 Exhibit A - July 6, 2012 letter to Wi-LAN from HTC Counsel, # 3 Text of Proposed Order)(Pai, Ajeet)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,
Plaintiff,
v.
ALCATEL-LUCENT USA INC.;
TELEFONAKTIEBOLAGET LM
ERICSSON; ERICSSON INC.; SONY
MOBILE COMMUNICATIONS AB; SONY
MOBILE COMMUNICATIONS (USA) INC.;
HTC CORPORATION; HTC AMERICA,
INC.; EXEDEA INC.; LG ELECTRONICS,
INC.; LG ELECTRONICS MOBILECOMM
U.S.A., INC.; LG ELECTRONICS U.S.A.,
INC.
Defendants.

§
§
§
§
§
§
§
§
§
§
§
§
§
§
§
§
§
§

Civil Action No. 6:10-cv-521-LED
JURY TRIAL DEMANDED

WI-LAN INC.’S UNOPPOSED MOTION TO COMPEL PRODUCTION OF LICENSE
AGREEMENTS FROM HTC CORPORATION, HTC AMERICA, AND EXEDEA INC.
Wi-LAN Inc. (“Wi-LAN”) brings this motion to compel production of certain license
agreements that HTC Corporation, HTC America, and Exedea Inc. (collectively, “HTC”) have
not produced on the basis of third-party confidentiality obligations. HTC does not oppose this
motion.
A defendant’s relevant patent licenses may be relevant to damages issues in this case.
Defendant HTC has produced some, but not all, such licenses to which it is a party. On June 28,
2012, the parties conducted a meet-and-confer to discuss the status of HTC’s production of
licenses related to cellular communications technology (“HTC licenses”). Counsel for HTC
informed Wi-LAN that some HTC licenses contain provisions prohibiting disclosure to third
parties without either (1) consent of the other party or (2) a specific court order. Counsel for

HTC further explained that HTC had requested consent from the relevant parties for all licenses
that require consent, but that consent had not been obtained for all such licenses. In a July 6,
2012 letter to Wi-LAN, HTC’s counsel identified seventeen licenses (or groups of related
licenses) for which consent had not been obtained and confirmed that HTC will not produce
those license agreements “without third-party consent or an appropriate court order.” (See
Exhibit A to Declaration of Ajeet P. Pai, attached hereto.) Consent was later obtained by HTC to
produce two of the seventeen licenses or groups of licenses, leaving approximately fifteen
withheld licenses or groups of licenses at issue.
Given the stage of discovery and impending deadlines set by the Court’s Docket Control
Order—including the August 24, 2012 deadline for expert disclosures and upcoming depositions
concerning licensing and damages topics—Wi-LAN cannot continue to wait for additional third
parties to provide consent. Moreover, HTC cannot guarantee that third parties who have thus far
failed to consent to production of relevant licenses will provide consent in the near future, if
ever. Such licenses may be produced subject to the Protective Order (Dkt. No. 145) entered in
this case, which will provide adequate protection of any third-party confidential information.
Wi-LAN therefore respectfully requests that the Court order HTC to promptly produce
each license agreement identified in HTC’s July 6, 2012 letter to Wi-LAN that has not already
been produced.
Finally, Counsel for HTC informed Wi-LAN that HTC is determining whether it has
entered into any additional patent licenses relevant to cellular communications technology since
the date of its previous collection of licenses. Counsel for HTC was unable to confirm that, to
the extent consent is required to produce any such additional licenses, such consent would be
granted. Accordingly, to avoid the need for a subsequent Motion to Compel on same issue

currently before the Court, Wi-LAN respectfully requests that the Court also order HTC to
produce such any such potentially relevant patent license which HTC locates but cannot produce
absent a court order or third-party consent.

Dated: July 12, 2012

Respectfully submitted,

By:
Local Counsel
Johnny Ward (TX Bar No. 00794818)
Wesley Hill (TX Bar No. 24032294)
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, TX 75601
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

/s/ Ajeet P. Pai
David B. Weaver (TX Bar No. 00798576)
Lead Attorney
Michael A. Valek (TX Bar No. 24044028)
Avelyn M. Ross (TX Bar No. 24027817)
Ajeet P. Pai (TX Bar No. 24060376)
Syed K. Fareed (TX Bar No. 24065216)
Jeffrey T. Han (TX Bar No. 24069870)
Seth A. Lindner (TX Bar No. 24078862)
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Chuck P. Ebertin
California Bar No. 161374
VINSON & ELKINS LLP
525 University Avenue, Suite 410
Palo Alto, CA 94301-1918
Tel: [phone]
Fax: [phone]

Attorneys for Plaintiff, Wi-LAN Inc.
US 1476398

CERTIFICATE OF CONFERENCE
Pursuant to Local Rule CV-7(h), counsel for movant Wi-LAN and defendant HTC
conferred via telephone on June 28, 2012 and July 11, 2012, and HTC does not oppose the relief
requested herein.

/s/ Ajeet P. Pai
Ajeet P. Pai

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). All other counsel
of record not deemed to have consented to electronic service were served with a true and correct
copy of the foregoing by email and/or fax, on this the 12th day of July, 2012.

/s/ Ajeet P. Pai
Ajeet P. Pai