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

Filing 212

MOTION for Protective Order by Sony Mobile Communications (USA) Inc., Sony Mobile Communications AB. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Text of Proposed Order)(Wynne, Richard)

EXHIBIT A

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

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WI-LAN INC.,
Plaintiff,
v.
ALCATEL-LUCENT USA INC.;
TELEFONAKTIEBOLAGET LM
ERICSSON; ERICSSON INC.; SONY
ERICSSON MOBILE COMMUNICATIONS
AB; SONY ERICSSON 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

PLAINTIFF WI-LAN INC.’S DISCLOSURE OF ASSERTED CLAIMS AND
INFRINGEMENT CONTENTIONS PURSUANT TO PR 3-1

1

Pursuant to Patent Rule 3-1, Plaintiff Wi-LAN Inc. (“Wi-LAN”) submits the following
Disclosure of Asserted Claims and Infringement Contentions.

This disclosure is based on

publicly available information that describes or discusses relevant characteristics of the accused
infringing products. Wi-LAN reserves the right to amend or supplement this disclosure based on
additional information, including source code, obtained through formal discovery or other means
concerning the accused products.
I.

P.R. 3-1(a): Identification of Asserted Claims
Wi-LAN asserts the following four patents in this action, as shown below: U.S. Patent

Nos. 6,088,326 (the “’326 patent”); 6,195,327 (the “’327 patent”); 6,222,819 (the “’819 patent”);
and 6,381,211 (the “’211 patent”) (collectively, the “Asserted Patents”).
A.

Defendant Alcatel-Lucent USA Inc. (“Alcatel-Lucent”)

Alcatel-Lucent infringes the following patent claims:
•

The ’326 Patent: claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10;

•

The ’327 Patent: claims 1, 2, 5, 6, 8, 10, 11, 12, 13, 15, 17, and 19; and

•

The ’819 Patent: claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, and 17.

Wi-LAN reserves the right to amend or supplement these disclosures in the event that
discovery, including inspection of source code and other technical documents relating to AlcatelLucent’s Accused Instrumentalities, reveals additional evidence of infringement or that AlcatelLucent infringes additional claims of the Asserted Patents.
B.

Defendants Telefononaktiebolaget LM Ericsson and Ericsson Inc.
(collectively, “Ericsson”)

Ericsson infringes the following patent claims:
•

The ’326 Patent: claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10;

•

The ’327 Patent: claims 1, 2, 5, 6, 8, 10, 11, 12, 13, 15, 17, and 19; and

2

•

The ’819 Patent: claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, and 17.

Wi-LAN reserves the right to amend or supplement these disclosures in the event that
discovery, including inspection of source code and other technical documents relating to
Ericsson’s Accused Instrumentalities, reveals additional evidence of infringement or that
Ericsson infringes additional claims of the Asserted Patents.
C.

Defendants Sony Ericsson Mobile Communications AB and Sony Ericsson
Mobile Communications (USA) Inc. (collectively, “Sony Ericsson”)

Sony Ericsson infringes the following patent claims:
•

The ’819 Patent: claims 12, 13, 14, 15, 16, 17, 21, and 22; and

•

The ’211 Patent: claims 1, 2, 3, 4, and 5.

Wi-LAN reserves the right to amend or supplement these disclosures in the event that
discovery, including inspection of source code and other technical documents relating to Sony
Ericsson’s Accused Instrumentalities, reveals additional evidence of infringement or that Sony
Ericsson infringes additional claims of the Asserted Patents.
D.

Defendants HTC Corporation, HTC America, Inc., and Exedea Inc.
(collectively, “HTC”)

HTC infringes the following patent claims:
•

The ’819 Patent: claims 12, 13, 14, 15, 16, 17, 21, and 22; and

•

The ’211 Patent: claims 1, 2, 3, 4, and 5.

Wi-LAN reserves the right to amend or supplement these disclosures in the event that
discovery, including inspection of source code and other technical documents relating to HTC’s
Accused Instrumentalities, reveals additional evidence of infringement or that HTC infringes
additional claims of the Asserted Patents.
II.

P.R. 3-1(b): Accused Instrumentalities
The following Accused Instrumentalities infringe the asserted claims, as noted above.
3

A.

Alcatel-Lucent

Products marketed by Alcatel-Lucent as complying with at least 3GPP rel. 5, et seq.,
HSDPA, HSUPA, or HSPA, including the following product lines: 9300 W-CDMA Node B
Products; 9311 Macro Node B; 9326 Digital 2U Base Band Unit; 9360 Small Cell; 9926 Digital
2U Node B; and all other products which are reasonably similar in structure and/or operation.
B.

Ericsson

Products marketed by Ericsson as complying with at least 3GPP rel. 5, et seq., HSDPA,
HSUPA, or HSPA, including the following product lines: RBS-3000; RBS-6000; W30; W35;
and all other products which are reasonably similar in structure and/or operation.
C.

Sony Ericsson

Products marketed by Sony-Ericsson as complying with at least 3GPP rel. 5, et seq.,
HSDPA, HSUPA, or HSPA, including the following product lines: Vivaz; Xperia X10; Equinox;
W518a; Satio; Xperia X2a; Xperia Pureness; Aino; Naite; and all other products which are
reasonably similar in structure and/or operation.
D.

HTC

Products marketed by HTC as complying with at least 3GPP rel. 5, et seq., HSDPA,
HSUPA, or HSPA, including the following product lines: Aria; HD2; Imagio; Pure; Tilt 2;
Touch Cruise; G1; G2; myTouch 3G; myTouch 3G Slide; Dash 3G; Freestyle; Inspire 4G;
Surround; myTouch 4G; Touch Pro2; and all other products which are reasonably similar in
structure and/or operation.
III.

P.R. 3-1(c): Claim Charts
Attached hereto are the following Appendices, each of which includes claim charts

identifying where each limitation of each asserted claim is found within the relevant Defendants’

4

Accused Instrumentalities:
Appendix Defendant
A

Alcatel-Lucent

B

Ericsson

C

Sony Ericsson

D

HTC

Wi-LAN’s analysis of Defendants’ Accused Instrumentalities is based upon the
information that has been made publicly available by Defendants and through Wi-LAN’s own
investigation of such publicly-available information. Defendants, however, provide limited or no
publicly-available information identifying the name or showing the design, functionality, or
architecture of many or all aspects of the Accused Instrumentalities. Plaintiff therefore reserves
the right to amend or supplement this disclosure for any allowable reason following the
discovery of confidential information, including source code.
IV.

P.R. 3-1(d): Literal Infringement and Doctrine of Equivalents
Wi-LAN alleges that Defendants literally infringe all claims identified above and in the

accompanying infringement charts. To the extent any differences are alleged to exist between
the above-identified claims and Defendants’ infringing products, such differences are
insubstantial. As such, Defendants infringe under the doctrine of equivalents. Wi-LAN reserves
the right to amend or supplement this disclosure for any allowable reason, including based on
Defendants’ disclosure of source code used by the Accused Instrumentalities and the production
of other non-public technical documentation concerning the Accused Instrumentalities.
V.

P.R. 3-1(e): Priority Dates
The priority for each claim of the Asserted Patents is provided below:
5

U.S. Patent No. 6,088,326 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626567. This patent thus is entitled to a priority date of
December 20, 1996.
U.S. Patent No. 6,195,327 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626568. This patent thus is entitled to a priority date of
December 20, 1996.
U.S. Patent No. 6,222,819 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626566. This patent thus is entitled to a priority date of
December 20, 1996.
U.S. Patent No. 6,381,211 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626567. This patent thus is entitled to a priority date of
December 20, 1996.
VI.

P.R. 3-1(f): Reliance on Own Product or Service
Wi-LAN does not intend to “rely, for any purpose, on the assertion that its own

apparatus, product, device, process, method, act, or other instrumentality practices the claimed
invention.”
VII.

Software or Source Code Limitations
Several limitations of the Asserted Claims likely are performed (in whole or in part) by

software or source code, and Defendants do not make public the software or source code or other
technical documents or specifications concerning the software or source code used by their
Accused Instrumentalities.

Accordingly, Wi-LAN has complied with P.R. 3-1 without the

benefit of discovery of such confidential information. Wi-LAN reserves all rights to supplement,
amend, or revise these Disclosures and the Appendices to this document subsequent to

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Defendants’ production of software or source code and/or other non-public technical
information.
Dated: June 13, 2011

Respectfully submitted,

By: /s/ David B. Weaver___
David B. Weaver
Texas Bar No. 00798576
David D. Hornberger
Texas Bar No. 24055686
Juliet M. Dirba
Texas Bar No. 24051063
John A. Fedock
Texas Bar No. 24059737
Jeffrey T. Han
Texas Bar No. 24069870
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]

Johnny Ward
Texas Bar No. 00794818
Wesley Hill
Texas Bar No. 24032294
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, TX 75601
Tel: [phone]
Fax: [phone]
[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]
[e-mail]
Attorneys for Plaintiff, Wi-LAN Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was served on all counsel
of record on the 13th day of June, 2011 by email and/or fax.
/s/ David B. Weaver
Counsel for Defendant:
Alcatel-Lucent USA Inc.
Local Counsel
Michael E. Jones
Allen F. Gardner
POTTER MINTON PC
110 N. College, Suite 500
P.O. Box 359
Tyler, TX 75710-0359
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

Robert A. Appleby
Gregory S. Arovas
Akshay S. Deoras
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

Counsel for Defendants:
Ericsson Inc.
Sony Ericsson Mobile Communications (USA) Inc.
Sony Ericsson Mobile Communications AB
Telefonaktiebolaget LM Ericsson
Bruce S. Sostek
Matthew P. Harper
Richard L. Wynne, Jr.
THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, TX 75201-2533
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

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Counsel for Defendants:
HTC Corporation
HTC America, Inc. and
Exedea Inc.
Local Counsel
Eric Hugh Findlay
Brian Craft
FINDLAY CRAFT
6760 Old Jacksonville Hwy, Suite 101
Tyler, TX 75703
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

Daniel N. Yannuzzi
Stephen S. Korniczky
Inge Larish
Martin R. Bader
SHEPPARD MULLIN
12275 El Camino Real
Suite 200
San Diego, CA 92130-2006
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

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