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 E

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
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

PLAINTIFF WI-LAN INC.’S FIRST AMENDED DISCLOSURE OF ASSERTED
CLAIMS AND INFRINGEMENT CONTENTIONS PURSUANT TO PR 3-1 & 3-6(a)

1

Pursuant to Patent Rules 3-1 and 3-6(a), Plaintiff Wi-LAN Inc. (“Wi-LAN”) submits the
following First Amended 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 as well as confidential information learned
through discovery from the parties to the lawsuit and third parties. Discovery remains ongoing,
and 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:

2



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
Ericsson’s Accused Instrumentalities, reveals additional evidence of infringement or that
Ericsson infringes additional claims of the Asserted Patents.
C.

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

Sony Mobile 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
Mobile’s Accused Instrumentalities, reveals additional evidence of infringement or that Sony
Mobile 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

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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.
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; 9764 Metro Cell; 9362 Enterprise Cell 2100; 9362 Enterprise Cell; 9361 Home Cell;
9363 Metro Cell Indoor; 9364 Metro Cell Outdoor; 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;
W37; W40; L21; and all other products which are reasonably similar in structure and/or
operation.
C.

Sony Mobile

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, Xperia Play 4G, Live with Walkman,
Xperia pro, Xperia neo V, Xperia active, Xperia arc, Xperia ray, Xperia mini, Xperia mini pro,
Aspen, Cedar, G705a, T707, Vivaz Pro, W508, Xperia arc S, Xperia ion, Xperia neo, Xperia
Play, Xperia X10 mini, Xperia XI0 mini pro, Xperia X8, Yari, and all other products which are
reasonably similar in structure and/or operation.

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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; Amaze 4G; Evo Design 4G; HD7; HD7S; Hero S;
myTouch 4G Slide; One S; Radar; Radar 4G; Sensation; Status; Titan; Vivid; Wildfire S; One X;
Touch Diamond2; Legend; Desire; Titan II; Sensation 4G; Shift; Jetstream; 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’

5

Accused Instrumentalities:
Appendix Defendant
A

Alcatel-Lucent

B

Ericsson

C

Sony Mobile

D

HTC

Wi-LAN’s analysis of Defendants’ Accused Instrumentalities is based upon the
information that has been made publicly available by Defendants, Wi-LAN’s own investigation
of such publicly-available information, and documents and source code produced by Defendants,
Discovery remains ongoing, with documents, technical fact witness testimony, and key portions
of source code used by the Accused Instrumentalities still yet to be produced. Plaintiff therefore
reserves the right to amend or supplement this disclosure for any allowable reason following the
discovery of additional 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:
6

U.S. Patent No. 6,088,326 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626567, filed on December 20, 1996. The asserted claims of
this patent were invented at least as early as October 6, 1995 and, therefore, are entitled to the
priority date of October 6, 1995. See Wi-LAN’s First Amended Response to Defendants’
Common Interrogatory No. 1.
U.S. Patent No. 6,195,327 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626568, filed on December 20, 1996. The asserted claims of
this patent were invented at least as early as October 6, 1995 and, therefore, are entitled to the
priority date of October 6, 1995. See Wi-LAN’s First Amended Response to Defendants’
Common Interrogatory No. 1.
U.S. Patent No. 6,222,819 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626566, filed on December 20, 1996. The asserted claims of
this patent were invented at least as early as October 6, 1995 and, therefore, are entitled to the
priority date of October 6, 1995. See Wi-LAN’s First Amended Response to Defendants’
Common Interrogatory No. 1.
U.S. Patent No. 6,381,211 claims priority to an earlier-filed foreign application: United
Kingdom patent application no. 9626567, filed on December 20, 1996. The asserted claims of
this patent were invented at least as early as October 6, 1995 and, therefore, are entitled to the
priority date of October 6, 1995. See Wi-LAN’s First Amended Response to Defendants’
Common Interrogatory No. 1.
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.”
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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. Discovery remains ongoing, in which key portions of software or
source code used by the Accused Instrumentalities has yet to be produced. Accordingly, WiLAN has complied with P.R. 3-1 and P.R. 3-6 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 production of all relevant
software or source code and/or other non-public technical information.

8

Dated: June 14, 2012

Respectfully submitted,

By: /s/ David B. Weaver___
David B. Weaver – LEAD ATTORNEY
Texas State Bar No. 00798576
Michael A. Valek
Texas State Bar No. 24044028
Avelyn M. Ross
Texas State Bar No. 24027817
Ajeet P. Pai
Texas State Bar No. 24060376
Syed K. Fareed
Texas State Bar No. 24065216
Jeffrey T. Han
Texas State Bar No. 24069870
Seth A. Lindner
Texas State 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]

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 14th day of June, 2012 by email and/or fax.
Counsel for Defendants:
Alcatel-Lucent USA Inc.
Local Counsel
Michael E. Jones, Lead Attorney
Allen F. Gardner
John F. Bufe
POTTER MINTON PC
110 N. College, Suite 500
P.O. Box 359
Tyler, TX 75710-0359
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

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

Ericsson Inc., Sony Mobile Communications (USA) Inc.,
Sony Mobile Communications AB, Telefonaktiebolaget LM Ericsson
Local Counsel
Jennifer Parker Ainsworth
WILSON, ROBERTSON & CORNELIUS, P.C.
909 ESE Loop 323, Suite 400
P.O. Box 7339 [75711]
Tyler, TX 75701
Tel: [phone]
Fax: [phone]
[e-mail]

Bruce S. Sostek, Lead Attorney
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]

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

Daniel N. Yannuzzi
Stephen S. Korniczky
Martin R. Bader
Graham Buccigross
Lee Hsu
SHEPPARD MULLIN
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Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

12275 El Camino Real, Suite 200
San Diego, CA 92130-2006
Tel: [phone]
Fax: [phone]
[e-mail]

/s/ David B. Weaver
US 1445198v.2

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