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

Filing 221

REPLY to Response to Motion re 209 Opposed SEALED MOTION FOR LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS filed by WI-LAN Inc.. (Pai, Ajeet)

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.

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

WI-LAN INC.’S REPLY IN SUPPORT OF
MOTION FOR LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS
I.

Good Cause Exists for Wi-LAN’s Supplementation.
Wi-LAN Inc. (“Wi-LAN”) demonstrated good cause in its motion for leave (ECF No.

209, (“Pl.’s Mot.”)) to supplement its infringement contentions with the names of the specific
Sony Mobile and HTC smartphones identified in the motion.

Sony Mobile’s and HTC’s

(“defendants’”) arguments in response do not contest the undisputed facts:
1. Wi-LAN’s Original Infringement Contentions categorically accused any Sony Mobile
or HTC smartphone “complying with at least 3GPP rel. 5, et seq., HSDPA, HSUPA,
or HSPA” and specifically named smartphones Wi-LAN knew of at the time from the
review of publicly available documents. (Pl.’s Mot., Ex. 1 at 4).

2. Neither Sony Mobile nor HTC identified the “Additional Products” now at issue in
response to Wi-LAN’s December 2011 interrogatories asking that each defendant
“state all names You have used to refer to the Accused Products,” where “Accused
Products” was clearly defined to include not only the smartphones accused in the
Original Infringement Contentions but also “all other products which are reasonably
similar in structure and/or operation.” (Pl.’s Mot., Ex. 6 at 18-19; Ex. 7 at 11-12).
3. Despite defendants’ failure to properly respond to Wi-LAN’s interrogatories, WiLAN was able to specifically identify the Additional Products by name from its
continuing review of public documents and productions of defendants’ documents
occurring as late as January 20, 2012. Wi-LAN identified the Additional Products to
defendants in writing on May 10, 2012. (Pl.’s Mot., Ex. 2 at 14, 16). Thus, since at
least May 10, 2012, both Sony Mobile and HTC have known the specific product
names of each of the Additional Products Wi-LAN accuses of infringement. (Id.;
ECF. No. 219 (“Defs.’ Resp.”), Ex. E).
4. Wi-LAN served amended infringement contentions specifically naming the
Additional Products on June 14, 2012 (Pl.’s Mot., Ex. 3 at 4-5), having informed the
defendants on May 31, 2012, that Wi-LAN believed such an amendment permissible
without leave pursuant to PR 3-6(a) because the additional smartphones were already
within the accused products described in Wi-LAN’s Original Infringement
Contentions. (Defs.’ Resp., Ex. F).
5. Rather than acknowledge then that the Additional Products were and had been
properly part of this case, defendants chose to spend from May to July arguing
whether Wi-LAN’s May 10th identification was quick enough, and whether Wi-

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LAN’s addition of specific names for products that had been accused all along was
procedurally acceptable as part of amendments without leave per PR 3-6(a) following
claim construction. (Pl.’s Mot., Ex. 4).
After their past and continuing discovery obfuscation and months of delay, Sony Mobile
and HTC now claim it is Wi-LAN that has not been diligent. The above facts belie that
assertion. Wi-LAN timely identified the names of the additional smartphones in May, despite
defendants’ deficient discovery responses. Wi-LAN served what it believes are procedurally
proper and operative infringement contentions adding those Additional Products in June. Having
watched defendants drag out a procedural debate and refuse proper discovery necessary for
complete depositions and expert reports for months, Wi-LAN filed its motion for leave to put the
issue to rest. As described in its Motion, Wi-LAN has been diligent and demonstrated good
cause for the inclusion of the Additional Products in its June 14th Amended Infringement
Contentions. Wi-LAN’s motion should be granted.
A. Wi-LAN Has Been Diligent.
First, contrary to defendants’ assertions, diligence is only one of the four factors the
Court considers in assessing whether leave to amend contentions should be granted; no single
factor is dispositive. See, e.g., MacLean-Fogg Co. v. Eaton Corp., No. 2:07-cv-472-LED, 2008
U.S. Dist. LEXIS 78301, *6-7 (E.D. Tex. Oct. 6, 2008); Arbitron, Inc. v. Int’l Demographics,
Inc., No. 2:06-CV-434, 2009 U.S. Dist. LEXIS 3191, at *5-6 (E.D. Tex. Jan. 16, 2009). Second,
Wi-LAN acted diligently, specifically naming the Additional Products no later than May 10thth
and serving amended contentions on June 14thth, despite defendants’ failure to provide adequate
responses to early interrogatories that would have allowed Wi-LAN to accuse the Additional
Products more quickly. Thus, defendants’ complaint that Wi-LAN’s May 10th identification—

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only months after Sony Mobile’s late January production—was not fast enough rests largely on
their own shoulders. 1 This factor supports the grant of leave.
B. Unlike Wi-LAN, Defendants Face No Prejudice.
Having known, by description, since the case started, and by name, since May 10th that
Wi-LAN accused the Additional Products, defendants weakly argue that they are unfairly
prejudiced by being forced to litigate this case on the merits, rather than by being allowed to
manipulate the discovery process to exempt similar smartphones from judgment at this time.
Defendants no doubt will argue in any subsequent case that Wi-LAN’s claims against the
Additional Products under the patents-in-suit were merged into the judgment in this case and
barred, preventing any redress for the infringement. See Orion IP, LLC v. Home Depot USA,
Inc., No. 2:05-CV-603-LED, ECF No. 42 (E.D. Tex. Oct. 7, 2005). Thus, Wi-LAN potentially
faces severe prejudice for any claims under the patents-in-suit against the Additional Products if
not redressed in this suit.
Recognizing they face no prejudice, defendants argue in a response to a motion for leave
to supplement contentions with additional products that Wi-LAN’s infringement contentions
provide insufficient notice of its infringement theory. Notably, defendants have never moved the
Court for any relief regarding the sufficiency of Wi-LAN’s contentions. Indeed, those same
contentions were sufficient for

Sony Mobile to determine that documents regarding its

Additional Products were responsive when it produced some such documents in late January of
1

HTC’s assertion that some of its Additional Products were publicly available prior to service of
the original contentions still does not excuse HTC’s failure to properly respond to the early
interrogatories designed to identify any accused and reasonably similar products that might have
been missed by Wi-LAN’s investigation of public documents. No plaintiff can reasonably be
expected to identify all possible infringing products solely upon a review of the near infinite
space of the public domain. Non-evasive responses to proper discovery requests should be a
reliable solution for this inherent limitation. Here, defendants chose evasive responses to
frustrate fulsome and timely discovery, yet now complain about the delay they caused.
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this year.

And those same contentions have allowed this case to develop through claim

construction and presumably will remain operative for the originally-named products for the
remainder of the case and trial.2 Accordingly, the late timing of defendants’ complaint, as well
as the fact that the case has progressed according to schedule, belies any argument that
defendants lack notice of Wi-LAN’s infringement theories. Requiring defendants to respond
regarding the Additional Products, which have been known to them for many months, on the
same infringement theory as the other smartphones that defendants agree are part of the case
presents no prejudice. Accordingly, this factor also supports the grant of leave.
C. No Continuance Is Necessary.
This case is more than eight months away from its April 2013 trial setting. The naming
of the additional smartphones, which defendants must have known were part of this case long
before Wi-LAN specifically identified them by name on May 10th, creates no cause for a
continuance and only minimally affects the issues that will be tried. Accordingly, this factor also
supports the grant of leave.
II.

Wi-LAN’s Motion for Leave To Add The Additional Products Should Be Granted.
Wi-LAN has diligently prosecuted this case and has shown ample time remains to allow

inclusion of the Additional Products in this case. For the reasons stated in Wi-LAN’s motion
and in this reply, the motion for leave to supplement infringement contentions should be granted.

2

As for defendants’ complaint that Wi-LAN identified the Additional Products post-claim
construction, this Court has properly recognized that, “A claim is construed in light of the claim
language, the other claims, the prior art, the prosecution history, and the specification, not in
light of the accused device.” Eon Corp. IP Holdings, LLC v. Sensus USA, Inc., 741 F. Supp. 2d
783, 796 (E.D. Tex. 2010). The Additional Products stand accused of based on the same
infringement theory as the smartphones named and charted in Wi-LAN’s Original Infringement
Contentions. Inclusion of these smartphones does not change the asserted claims against Sony
Mobile or HTC or any issues of invalidity or enforceability.
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Dated: August 24, 2012

Respectfully submitted,

By:
Local Counsel
Johnny Ward (TX Bar No. 00794818)
Wesley Hill (TX Bar No. 24032294)
WARD & SMITH LAW FIRM
P.O. Box 1231
1127 Judson Rd., Ste. 220
Longview, TX 75606-1231
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]

/s/ Ajeet 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)
Janice Ta (TX Bar No. 24075138)
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]

Attorneys for Plaintiff, Wi-LAN Inc.

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing “REPLY IN SUPPORT OF MOTION FOR
LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS” was filed electronically in
compliance with Local Rule CV-5(a) on August 24, 2012. As such, this document was served
on all counsel who are deemed to have consented to electronic service. Local Rule CV5(a)(3)(A).
/s/ Ajeet Pai
US 1543025