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)

EXHIBIT A

Sheppard Mullin Richter & Hampton LLP
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File Number: 25SL-158666

July 6, 2012
VIA EMAIL
Ajeet P. Pai, Esq.
Vinson & Elkins
2801 Via Fortuna, Suite 100
Austin, Texas 78746
[e-mail]

Re: Wi-LAN v. Alcatel-Lucent et al., No. 10-cv-521 (E.D. Tex.)
Ajeet:
I write to follow up on issues discussed during our June 28, 2012 meet and confer.
HTC patent licenses
HTC may not disclose the terms or existence of the following agreements to Wi-LAN without
third-party consent or an appropriate court order:
1. “Patent License and Technology Transfer Agreement (GSM/GPRS/EDGE Terminals)”
with Alcatel, a French corporation, and TCL&Alcatel Mobile Phones
2. “License Agreement” with Audio MPEG, Inc. and Societa’ Italiana Per Lo Sviluppo
Dell’elettronica, S.I.SV.EL., S.P.A.
3. “Settlement and Patent License Agreement” with Digcom, Inc., Dr. Kamilo Feher, and
T-Mobile USA Inc.
4. “Platinum (UMTS) Reference Design License and Support Agreement” with Ericsson
Mobile Platforms AB
5. “Global Patent License Agreement” with Telefonaktiebolaget LM Ericsson
6. “License and Support Service Agreement” with Hitachi Communication Technologies,
Ltd.
7. “Settlement Agreement, License and Release” with Implicit Networks, Inc.
8. “Software License and Distribution Agreement” with Jataayu Software (P) Ltd.
9. “Confidential Patent Covenant Agreement” with Microsoft Corporation and Microsoft
Licensing GP

July 6, 2012
Page 2

10. “Patent License Agreement Radio Telephony Systems Products” with Nokia
Corporation
11. “Original Device Manufacturer License Agreement” with PalmSource, Inc.
12. “Master Product Development and License Agreement” and five “Product Development
and License Agreements” with Palm, Inc.
13. “Covenant Not to Sue” with [confidential third-party] dated April 29, 2010
14. “Patent License Agreement” with Siemens Aktiengesellschaft
15. “Confidential Settlement Agreement” with SP Technologies, LLC
16. “Cellular Systems Master License Agreement” and “DRE310 Production Software
License Agreement” with Texas Instruments Inc.
17. “Patent Rights Purchase and Covenant Not to Sue Agreement” with WIAV Solutions
LLC
As stated in my July 5 letter, we are seeking the required consent. We reviewed Paragraph 2(B)
of the Discovery Order, as well as the relevant language in the agreements, and we believe that,
absent consent, a specific court order, as opposed to the general Discovery Order, is
reasonably required to release HTC from its nondisclosure obligations.
HTC emails
HTC is in the process of collecting emails from relevant custodians. HTC does not agree that
the proposed search terms are appropriate, and we are working to determine an appropriate list
of terms, which we will have to you next week. We are striving to have e-mails produced by
July 23, 2012 assuming the parties can agree to a list of search terms and custodians.
HTC financial data
HTC is currently identifying and collecting sales data. HTC is also searching for information that
reflects the costs of component chipsets for the HSPA functionality in the accused products.
HTC marketing data
HTC will produce “Feature Sheets” for the Pure and Legend products. Also, HTC is searching
for any market studies or consumer surveys that may be relevant. Finally, HTC is in the process
of collecting requirements documents received from the carriers.
Qualcomm agreements and source code
HTC has not produced certain agreements and source code between it and Qualcomm,
because it has not yet received Qualcomm’s required consent, and because Qualcomm and
HTC have not yet been able to identify the requested source code. As an initial issue with
producing additional agreements, Qualcomm has asked that Wi-LAN name all of the individuals,
besides outside counsel, that it proposes would have access to the agreements of interest.

July 6, 2012
Page 3

I will update you again next week on the status of our document collection and production.
Regards,
/s/ Martin R. Bader
Martin R. Bader
for SHEPPARD, MULLIN, RICHTER & HAMPTON LLP