WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al
Filing
311
Proposed Pretrial Order by Alcatel-Lucent USA Inc., Ericsson Inc., Exedea INC., HTC America, Inc., HTC Corporation, Sony Mobile Communications (USA) Inc., Sony Mobile Communications AB, Telefonaktiebolaget LM Ericsson, WI-LAN Inc.. (Attachments: # 1 Exhibit 1 - Wi-LAN Witness List, # 2 Exhibit 2 - Alcatel-Lucent Witness List, # 3 Exhibit 3 - Ericsson -Sony Mobile Witness List, # 4 Exhibit 4 - HTC Witness List, # 5 Exhibit 5 - Wi-Lan Depo Designations, # 6 Exhibit 6 - Alcatel-Lucent Depo Designations, # 7 Exhibit 7 - HTC Depo Designations, # 8 Exhibit Wi-Lan Exhibit List, # 9 Exhibit Defendants' Exhibit List)(Pai, Ajeet)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,
Civil Action No. 6:10-CV-00521-LED
Plaintiff,
v.
JURY TRIAL DEMANDED
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.
PROPOSED JOINT PRETRIAL ORDER
This cause came before the Court at a pretrial management conference held on March 21,
2013, pursuant to Local Rule CV-16 and Rule 16 of the Federal Rules of Civil Procedure.
I.
COUNSEL FOR THE PARTIES
A.
Attorneys for Plaintiff/Counter-Defendant Wi-LAN Inc.
David B. Weaver (TX Bar 00798576)
Avelyn Marie Ross (TX Bar 24027817)
Ajeet P. Pai (TX Bar 24060376)
Syed K. Fareed (TX Bar 24065216)
Jeffrey T. Han (TX Bar 24069870)
Seth A. Lindner (TX Bar 24078862)
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, Texas 78746
Tel: 512-542-8400
Thomas John Ward, Jr. (TX Bar 00794818)
Jack Wesley Hill (TX Bar 24032294)
WARD & SMITH LAW FIRM
P.O. Box 1231
1127 Judson Road
Suite 220
Longview, Texas 75606
Tel: 903-757-640
Fax: 903-757-2323
jw@jwfirm.com
Fax: 512-542-8612
dweaver@velaw.com
apai@velaw.com
aross@velaw.com
jhan@velaw.com
slindner@velaw.com
sfareed@velaw.com
Constance S. Huttner (NY Bar 1722024)
VINSON & ELKINS LLP
666 Fifth Avenue
26th Floor
New York, New York 10103
Tel: 212-237-0040
Fax: 917-846-5339
chuttner@velaw.com
B.
wh@wsfirm.com
Steven R. Borgman (TX Bar 02670300)
Gwendolyn Johnson Samora (TX Bar 00784899)
VINSON & ELKINS LLP
1001 Fannin
Suite 2500
Houston, Texas 77002
Tel: 713-758-2222
Fax: 713-758-2346
sborgman@velaw.com
gsamora@velaw.com
Attorneys for Defendants/Counterclaimants
ALCATEL-LUCENT USA INC.
Michael E. Jones (TX Bar 10929400)
Allen F. Gardner (TX Bar 24043679)
John F. Bufe (TX Bar 03316930)
POTTER MINTON PC
110 N. College
Suite 500
P.O. Box 359
Tyler, Texas 75710-0359
Tel: 903-597-8311
Fax: 903-593-0846
mikejones@potterminton.com
allengardner@potterminton.com
johnbufe@potterminton.com
Gregory S. Arovas (pro hac vice)
Robert A. Appleby (pro hac vice)
Jeanne M. Heffernan (pro hac vice)
Akshay S. Deoras (pro hac vice)
Ryan P. Kane (pro hac vice)
KIRKLAND & ELLIS, LLP
601 Lexington Avenue
New York, New York 10022
Tel: 212446-4800
Fax: 212-446-4900
greg.arovas@kirkland.com
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robert.appleby@kirkland.com
jeanne.heffernan@kirkland.com
akshay.deoras@kirkland.com
ryan.kane@kirkland.com
TELEFONAKTIEBOLAGET LM
ERICSSON and ERICSSON INC.
Bruce S. Sostek (TX Bar 18855700)
Richard L. Wynne, Jr. (TX Bar 24003214)
Adrienne E. Dominguez (TX Bar 00793630)
J. Michael Heinlen (TX Bar 24032287)
Timothy E. Hudson (TX Bar 24046120)
Justin S. Cohen (TX Bar 24078356)
THOMPSON & KNIGHT LLP
1722 Routh Street
Suite 1500
Dallas, Texas 75201-2533
Tel: 514-969-1700
Fax: 214-969-1751
bruce.sostek@tklaw.com
richard.wynne@tklaw.com
adrienne.dominguez@tklaw.com
michael.heinlen@tklaw.com
tim.hudson@tklaw.com
justin.cohen@tklaw.com
William J. Cornelius (TX Bar 04834700)
Jennifer Parker Ainsworth (TX Bar 00784720)
WILSON ROBERTSON & CORNELIUS PC
909 ESE Loop 323
Suite 400
P.O. Box 7339
Tyler, Texas 75711-7339
Tel: 903-509-5000
Fax: 903-509-5092
wc@wilsonlawfirm.com
jainsworth@wilsonlawfirm.com
SONY MOBILE COMMUNICATIONS AB Bruce S. Sostek (TX Bar 18855700)
and SONY MOBILE COMMUNICATIONS Richard L. Wynne, Jr. (TX Bar 24003214)
Adrienne E. Dominguez (TX Bar 00793630)
(USA) INC.
J. Michael Heinlen (TX Bar 24032287)
Timothy E. Hudson (TX Bar 24046120)
Justin S. Cohen (TX Bar 24078356)
THOMPSON & KNIGHT LLP
1722 Routh Street
Suite 1500
Dallas, Texas 75201-2533
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Tel: 514-969-1700
Fax: 214-969-1751
bruce.sostek@tklaw.com
richard.wynne@tklaw.com
adrienne.dominguez@tklaw.com
michael.heinlen@tklaw.com
tim.hudson@tklaw.com
justin.cohen@tklaw.com
William J. Cornelius (TX Bar 04834700)
Jennifer Parker Ainsworth (TX Bar 00784720)
WILSON ROBERTSON & CORNELIUS PC
909 ESE Loop 323
Suite 400
P.O. Box 7339
Tyler, Texas 75711-7339
Tel: 903-509-5000
Fax: 903-509-5092
wc@wilsonlawfirm.com
jainsworth@wilsonlawfirm.com
HTC CORPORATION; HTC AMERICA,
INC.; and EXEDEA INC.
Stephen S. Korniczky (pro hac vice)
Martin R. Bader (pro hac vice)
Daniel N. Yannuzi (pro hac vice)
Lee Hsu (pro hac vice)
Graham M. Buccigross (pro hac vice)
SHEPPARD, MULLIN, RICHTER & HAMPTON
12275 El Camino Real
Suite 200
San Diego, California 92130-2006
Tel: 858-720-8924
Fax: 858-847-4892
skorniczky@sheppardmullin.com
mbader@sheppardmullin.com
dyannuzzi@sheppardmullin.com
lhsu@sheppardmullin.com
gbuccigross@sheppardmullin.com
Eric Hugh Findlay (TX Bar 00789886)
Roger Brian Craft (TX Bar 04972020)
FINDLAY CRAFT
6760 Old Jacksonville Highway
Suite 101
Tyler, Texas 75703
Tel: 903-534-1100
Fax: 903-534-1137
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efindlay@findlaycraft.com
bcraft@findlaycraft.com
II.
STATEMENT OF JURISDICTION
This Court has subject-matter jurisdiction over the claims asserted by Wi-LAN Inc. (“Wi-
LAN”) pursuant to 28 U.S.C. §§ 1331 and 1338(a), because this action arises under the patent
laws of the United States, including 35 U.S.C. § 1 et seq.
This Court has subject-matter
jurisdiction over the counterclaims asserted by Alcatel-Lucent USA Inc. (“Alcatel-Lucent”),
Telefonaktiebolaget LM Ericsson, Ericsson Inc. (collectively, “Ericsson”), Sony Mobile
Communications AB, and Sony Mobile Communications (USA) Inc. (collectively, “Sony
Mobile”) pursuant to 28 U.S.C. §§ 1331, 1338(a), 1367, 2201, and 2202.
Jurisdiction is not disputed.
III.
NATURE OF ACTION
This is a patent-infringement lawsuit.
counterclaims.
Two defendants assert breach of contract
Wi-LAN alleges that each of Defendants Alcatel-Lucent and Ericsson has
infringed and continues to infringe certain claims of U.S. Patent Nos. 6,088,326 (“the ’326
patent”); 6,195,327 (“the ’327 patent”); and 6,222,819 (“the ’819 patent”). Wi-LAN alleges that
each of Defendants HTC Corporation, HTC America, Inc., Exedea Inc. (collectively, “HTC”),
and Sony Mobile has infringed and continues to infringe certain claims of U.S. Patent No.
6,381,211 (“the ’211 patent”). Wi-LAN alleges that Defendants infringe certain claims of the
patents in suit literally and under the doctrine of equivalents. Wi-LAN contends that it is owed
money damages for Defendants’ acts of infringement. Wi-LAN also seeks injunctive relief to the
extent that Defendants do not stop infringing or refuse to pay reasonable royalties to Wi-LAN for
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Defendants’ ongoing use of the claimed technology following a finding of liability.1 Wi-LAN
further contends that the patents in suit are valid.
Defendants contend that they do not infringe any asserted claim of the patents in suit and
that the asserted claims are invalid. Defendants deny Wi-LAN’s claim for damages. Defendants
further allege that Wi-LAN’s claim for pre-suit damages is barred by the doctrine of laches
and/or failure to comply with 35 U.S.C. § 287. Defendants deny that Wi-LAN is entitled to
damages, injunctive relief, and/or any other relief of any kind, and therefore seek declaratory
relief and recovery of their costs, expenses, and attorneys’ fees under 35 U.S.C. §§ 285 and 288,
as well as any other relief the Court deems appropriate. Alcatel-Lucent, Ericsson, and Sony
Mobile each assert counterclaims seeking a declaratory judgment that each asserted claim of the
patents in suit is not infringed and invalid.
Ericsson and Sony Mobile further assert counterclaims alleging that Wi-LAN breached
the Patent and Conflict Resolution Agreements (“PCRAs”) previously entered into by Wi-LAN
with each of Ericsson and Sony Mobile. Ericsson and Sony Mobile seek damages related to their
breach of contract counterclaims. Wi-LAN denies that it breached the PCRAs based upon its
good-faith interpretation of the PCRAs. Wi-LAN denies that Ericsson and Sony Mobile are
entitled to damages. Ericsson further assert that it is licensed to the patents in suit.2
IV.
CONTENTIONS OF THE PARTIES
A.
Wi-LAN’s Contentions
Wi-LAN contends the following:
1.
Defendants Alcatel-Lucent and Ericsson each are directly infringing one or more
1
Defendants dispute that injunctive relief following a finding of liability was properly preserved during discovery
and thus dispute that injunctive relief is a proper issue for this statement.
2
Wi-LAN disputes that inclusion of Ericsson’s license defense in this statement is proper because it is based on an
agreement between Wi-LAN and a third party that contains a mandatory arbitration clause. Any question as to
whether Ericsson is licensed under that agreement must be resolved in another forum, not this Court.
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of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ’326 patent; one or more of claims 1, 5, 8, 10, 11,
12, 13, and 15 of the ’327 patent; and claim 11 of the ’819 patent, in violation of 35 U.S.C.
§ 271.
2.
Defendants Alcatel-Lucent and Ericsson have each infringed the ’326 patent, the
’327 patent, and the ’819 patent literally and/or under the doctrine of equivalents by making,
using, offering for sale, and/or selling within the United States, and/or importing into the United
States base station or small cell products that support the High Speed Downlink Packet Access
(“HSDPA”) standard defined in standards adopted by the 3rd Generation Partnership Project
(“3GPP”) organization.
3.
Defendants Sony Mobile and HTC each are directly infringing one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent, in violation of 35 U.S.C. § 271.
4.
Defendants Sony Mobile and HTC have each infringed the ’211 patent literally
and/or under the doctrine of equivalents by making, using, offering for sale, and/or selling within
the United States, and/or importing into the United States cellular phone, smartphone, and/or
handset products that support the HSDPA standard specified in the 3GPP standards.
5.
Alcatel-Lucent’s and Ericsson’s accused base station products comply with the
HSDPA standard defined in the 3GPP standards. HTC’s and Sony Mobile’s accused cellular
phone, smartphone, and handset products comply with the HSDPA standard defined in the 3GPP
standards.
6.
Defendants’ base station products that comply with the HSDPA standard defined
in the 3GPP standards necessarily infringe one or more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10
of the ’326 patent; one or more of claims 1, 5, 8, 10, 11, 12, 13, and 15 of the ’327 patent; and
claim 11 of the ‘819 patent. Defendants’ cellular phone, smartphone, or handset products that
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comply with the HSDPA standard defined in the 3GPP standards necessarily infringe one or
more of claims 1, 2, 3, 4, and 5 of the ’211 patent.
7.
Wi-LAN has been damaged by Alcatel-Lucent’s and Ericsson’s infringement of
the ’326 patent, the ’327 patent, and the ’819 patent, and Sony Mobile’s and HTC’s infringement
of the ’211 patent, and Wi-LAN is therefore entitled to damages of not less than a reasonable
royalty under 35 U.S.C. § 284, as detailed in the Expert Report of John C. Jarosz. Wi-LAN
further is entitled to pre-filing damages from Alcatel-Lucent and HTC.
8.
Upon a finding of Alcatel-Lucent’s, Ericsson’s, Sony Mobile’s, and/or HTC’s
liability, Wi-LAN is entitled to a court order imposing an ongoing reasonable royalty for any
continued infringement of the ’326 patent, the ’327 patent, the ’819 patent, and/or the ’211
patent. In the event that an infringing Defendant is not ordered to, or is not willing to, begin
paying ongoing reasonable royalties to Wi-LAN, Wi-LAN seeks a permanent injunction
preventing continued infringement by said Defendant.
9.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ’326 patent; claims 1, 5, 8, 10, 11, 12,
13, and 15 of the ’327 patent; claim 11 of the ’819 patent; and claims 1, 2, 3, 4, and 5 of the ’211
patent have not been proven invalid by Defendants for any reason, including under 35 U.S.C.
§§ 101, 102, 103, and 112.
10.
The inventions of the patents in suit were reduced to practice no later than
December 20, 1996, and were conceived prior to reduction to practice. The inventors were
diligent in the period between conception and reduction to practice via the filings with the patent
office of the United Kingdom. The date of invention of the ’326, ’819, and ’211 patents was at
least as early as October 24, 1995, and in any event no later than December 5, 1996. The date of
invention of the ’327 patent was at least as early as September 11, 1996, and in any event no
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later than December 5, 1996.
11.
One of ordinary skill in the art of the patents in suit would have a four-year degree
in Electrical Engineering, Physics, or Computer Science with some experience in wireless
communications or associated technologies.
12.
Wi-LAN is entitled to recover reasonable costs.
13.
With respect to the contractual issues between Wi-LAN, Ericsson, and Sony
Mobile (¶¶ 14–16 below), all issues arising under the PCRAs should be resolved by the Court.
14.
Wi-LAN has fully performed its obligations under the PCRAs with Ericsson and
Sony Mobile, and denies that it has breached any provision of the PCRAs with Ericsson and
Sony Mobile.
15.
The covenant-not-to-sue provision of the PCRAs does not apply to the patents in
suit. Further, Wi-LAN has acted in good faith and has employed a fair and reasonable reading of
the PCRA. As such, Ericsson and Sony Mobile are not entitled to recover any damages relating
to the covenant-not-to-sue provision of the PCRAs.
16.
The most-favored licensee provision of the PCRAs does not apply to the patents
in suit because they were not part of Wi-LAN’s patent portfolio at the time the parties executed
the PCRA. Further, Wi-LAN has acted in good faith and has employed a fair and reasonable
reading of the PCRA.
17.
To the extent the Court finds that the MFN does apply to the patents in suit, Wi-
LAN has satisfied its obligation to offer Ericsson and Sony Mobile as most-favored-licensee
status, because no other licensee is “similarly situated” or has received “more favorable rates”
when all relevant circumstances are considered (as required by the PCRAs) than the royalty rates
Wi-LAN has offered to Ericsson and Sony Mobile. Accordingly, no breach has occurred.
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18.
Wi-LAN’s claims are not barred by the doctrine of laches or estoppel.
19.
Wi-LAN denies each of Defendants’ defenses and counterclaims.
20.
No Defendant is entitled to any relief whatsoever.
21.
This Court has jurisdiction over the parties and the subject matter of this suit.
22.
Venue is proper in this Court under 28 U.S.C. § 1391.
B.
Defendants’ Statements of Their Contentions
By providing these contentions, Defendants do not concede that all of these issues are
appropriate for trial. In particular, Defendants do not waive any of their motions in limine,
motions for summary judgment, or Daubert motions, which, if granted, would render some or all
of these issues moot.
Defendants’ contentions in this case are detailed in their answers,
affirmative defenses and counterclaims to Wi-LAN’s Complaint, and Defendants’ invalidity
contentions, all of which are incorporated herein by reference. In sum, Defendants contend the
following:
1.
Defendants Alcatel-Lucent and Ericsson do not infringe, and have not infringed,
the asserted ’326 patent claims.
2.
The asserted claims of the ’326 patent are invalid because they were anticipated,
would have been obvious to one of skill in the art at the time of the claimed invention, and/or fail
to comply with the enablement and written description requirements specified in 35 U.S.C.
§ 112.
The asserted claims are invalid for the reasons stated in Defendants’ Invalidity
Contentions (as amended and supplemented) and the expert report of Mark Lanning.
3.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claims of the ’326 patent, and those claims are found to be valid, Wi-LAN is entitled to no more
than the amount set forth in the Expert Report of W. Christopher Bakewell with respect to
Alcatel-Lucent and the Expert Report of Stephen Becker with respect to Ericsson.
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4.
If Defendant Alcatel-Lucent is found to infringe the asserted claims of the ’326
patent, Wi-LAN’s claims for damages prior to filing the suit are barred and/or unenforceable by
the doctrine of laches.
5.
If Defendant Alcatel-Lucent is found to infringe the asserted claims of the ’326
patent, Wi-LAN’s claims for damages prior to filing the suit are barred by 35 U.S.C. § 287.
6.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claims of the ’326 patent, Wi-LAN as a non-practicing entity is not entitled to a permanent
injunction at least because it cannot make the requisite showing of irreparable harm. In addition,
Wi-LAN has conceded it can be adequately compensated for any alleged future infringement by
providing a dollar amount for alleged future infringement of the ’326 patent in the Expert Report
of John Jarosz.
7.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that Defendants are not infringing, and have not infringed, any claim of the ’326 patent.
8.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that the claims of the ’326 patent are invalid under one or more sections of 35 U.S.C. §§ 102,
103, and 112.
9.
Defendants Alcatel-Lucent and Ericsson do not infringe, and have not infringed,
the asserted ’819 patent claim.
10.
The asserted claim of the ’819 patent is invalid because it was anticipated, would
have been obvious to one of skill in the art at the time of the claimed invention, and/or fail to
comply with the enablement and written description requirements specified in 35 U.S.C. § 112.
The asserted claim is invalid for the reasons stated in Defendants’ Invalidity Contentions (as
amended and supplemented) and the expert report of Mark Lanning.
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11.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claim of the ’819 patent, and that claim is found to be valid, Wi-LAN is entitled to no more than
the amount set forth in the Expert Report of W. Christopher Bakewell with respect to AlcatelLucent and the Expert Report of Stephen Becker with respect to Ericsson.
12.
If Defendant Alcatel-Lucent is found to infringe the asserted claim of the ’819
patent, Wi-LAN’s claims for damages prior to filing the suit are barred and/or unenforceable by
the doctrine of laches.
13.
If Defendant Alcatel-Lucent is found to infringe the asserted claim of the ’819
patent, Wi-LAN’s claims for damages prior to filing the suit are barred by 35 U.S.C. § 287.
14.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claims of the ’819 patent, Wi-LAN as a non-practicing entity is not entitled to a permanent
injunction at least because it cannot make the requisite showing of irreparable harm. In addition,
Wi-LAN has conceded it can be adequately compensated for any alleged future infringement by
providing a dollar amount for alleged future infringement of the ’819 patent in the Expert Report
of John Jarosz.
15.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that Defendants are not infringing, and have not infringed, any claim of the ’819 patent.
16.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that the asserted claims of the ’819 patent are invalid under one or more sections of 35 U.S.C. §§
102, 103, and 112.
17.
Defendants Alcatel-Lucent and Ericsson do not infringe, and have not infringed,
the asserted ’327 patent claims.
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18.
The asserted claims of the ’327 patent are invalid because they were anticipated,
would have been obvious to one of skill in the art at the time of the claimed invention, and/or fail
to comply with the enablement and written description requirements specified in 35 U.S.C.
§ 112.
The asserted claims are invalid for the reasons stated in Defendants’ Invalidity
Contentions (as amended and supplemented) and the expert report of Mark Lanning.
19.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claims of the ’327 patent, and those claims are found to be valid, Wi-LAN is entitled to no more
than the amount set forth in the Expert Report of W. Christopher Bakewell with respect to
Alcatel-Lucent and the Expert Report of Stephen Becker with respect to Ericsson.
20.
If Defendant Alcatel-Lucent is found to infringe the asserted claims of the ’327
patent, Wi-LAN’s claims for damages prior to filing the suit are barred and/or unenforceable by
the doctrine of laches.
21.
If Defendant Alcatel-Lucent is found to infringe the asserted claims of the ’327
patent, Wi-LAN’s claims for damages prior to filing the suit are barred by 35 U.S.C. § 287.
22.
If Defendants Alcatel-Lucent and Ericsson are found to infringe the asserted
claims of the ’327 patent, Wi-LAN as a non-practicing entity is not entitled to a permanent
injunction at least because it cannot make the requisite showing of irreparable harm. In addition,
Wi-LAN has conceded it can be adequately compensated for any alleged future infringement by
providing a dollar amount for alleged future infringement of the ’327 patent in the Expert Report
of John Jarosz.
23.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that Defendants are not infringing, and have not infringed, any claim of the ’327 patent.
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24.
Defendants Alcatel-Lucent and Ericsson are entitled to a declaratory judgment
that the asserted claims of the ’327 patent are invalid under one or more sections of 35 U.S.C. §§
102, 103, and 112.
25.
Defendants HTC and Sony Mobile do not infringe, and have not infringed, the
asserted ’211 patent claims.
26.
The asserted claims of the ’211 patent are invalid because they were anticipated,
would have been obvious to one of skill in the art at the time of the claimed invention, and/or fail
to comply with the enablement and written description requirements specified in 35 U.S.C.
§ 112.
The asserted claims are invalid for the reasons stated in Defendants’ Invalidity
Contentions (as amended and supplemented) and the expert report of Mark Lanning.
27.
If Defendants HTC and Sony Mobile are found to infringe the asserted claims of
the ’211 patent, and those claims are found to be valid, Wi-LAN is entitled to no more than the
amount set forth, respectively, in the Expert Report of W. Christopher Bakewell with respect to
HTC and the Expert Report of Stephen Becker with respect to Sony Mobile.
28.
If Defendant HTC is found to infringe the asserted claims of the ’211 patent, Wi-
LAN’s claims for damages prior to filing the suit are barred and/or unenforceable by the doctrine
of laches.
29.
If Defendant HTC is found to infringe the asserted claims of the ’211 patent, Wi-
LAN’s claims for damages prior to filing the suit are barred by 35 U.S.C. § 287.
30.
If Defendants HTC and Sony Mobile are found to infringe the asserted claims of
the ’211 patent, Wi-LAN as a non-practicing entity is not entitled to a permanent injunction at
least because it cannot make the requisite showing of irreparable harm. In addition, Wi-LAN has
conceded it can be adequately compensated for any alleged future infringement by providing a
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dollar amount for alleged future infringement of the ’211 patent in the Expert Report of John
Jarosz.
31.
Defendants HTC and Sony Mobile are entitled to a declaratory judgment that
Defendants are not infringing, and have not infringed, any claim of the ’211 patent.
32.
Defendants HTC and Sony Mobile are entitled to a declaratory judgment that the
claims of the ’211 patent are invalid under one or more sections of 35 U.S.C. §§ 102, 103, and
112.
33.
By bringing this lawsuit against Ericsson, Wi-LAN breached the covenant-not-to-
sue provision in Article III of the PCRA it entered into with Ericsson.
34.
Wi-LAN’s breach of the covenant-not-to-sue provision in Article III of the PCRA
was in bad faith and was an obvious breach of that provision.
35.
Wi-LAN breached the most-favored-licensee provision of Article VII.1 of the
36.
Ericsson is entitled to recover damages it has sustained as a result of Wi-LAN’s
PCRA.
breach of the covenant-not-to-sue provision in Article III of the PCRA.
37.
Ericsson is entitled to a judgment requiring Wi-LAN to grant Ericsson most
favored licensee status, under the most-favored-licensee provision of Article VII.1 of the PCRA,
on terms that are at least equivalent to the terms of the license Wi-LAN granted to prior
licensees, including the license Wi-LAN granted to BelAir Networks, Inc.
38.
By bringing this lawsuit against Sony Mobile, Wi-LAN breached the covenant-
not-to-sue provision in Article III of the PCRA it entered into with Sony Mobile.
39.
Wi-LAN’s breach of the covenant-not-to-sue provision in Article III of the PCRA
was in bad faith and was an obvious breach of that provision.
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40.
Wi-LAN breached the most-favored-licensee provision of Article VII.1 of the
PCRA it entered into with Sony Mobile.
41.
Sony Mobile is entitled to recover damages it has sustained as a result of
Wi-LAN’s breach of the covenant-not-to-sue provision in Article III of the PCRA.
42.
Sony Mobile is entitled to a judgment requiring Wi-LAN to grant Sony Mobile
most favored licensee status, under the most-favored-licensee provision of Article VII.1 of the
PCRA, on terms that are at least equivalent to the terms of the license Wi-LAN granted to prior
licensees, including the license Wi-LAN granted to BelAir Networks, Inc.
43.
Ericsson is licensed to the patents-in-suit.
44.
This is an exceptional case and Defendants are entitled to reasonable attorneys’
fees and costs pursuant to 35 U.S.C. § 285.
45.
The asserted claims of the patents-in-suit are entitled to a date of invention no
earlier than December 20, 1996.
C.
Wi-LAN’s Objections to Defendants’ Statements of Their Contentions
1.
Wi-LAN objects to Defendants Ericsson’s and Sony Mobile’s contentions that the
issues arising under the PCRAs are matters for the jury to decide.
These are contract
interpretation issues that must be resolved by the Court as a matter of law, leaving no questions
for the jury to reach.
2.
Wi-LAN objects to Defendant Ericsson’s contention that it “is licensed to the
patents-in-suit.” Ericsson’s license defense is based on a terminated agreement between WiLAN and a third party that contains a mandatory arbitration clause. Any question as to whether
Ericsson is licensed pursuant to that agreement must be resolved in another forum, not this
Court. Accordingly, whether “Ericsson is licensed to the patents-in-suit” is not a matter that
cannot be decided in this action.
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D.
Defendants’ Objections to Wi-LAN’s Statement of Its Contentions
1.
Defendants object to Wi-LAN’s contention that it is entitled to an injunction “[i]n
the event that an infringing Defendant is not ordered to, or is not willing to, begin paying
reasonable royalties to Wi-LAN.” Wi-LAN has already admitted that it can be adequately
compensated for any alleged future infringement with a royalty as set forth in the Expert Report
of John Jarosz.3
2.
Defendants object to Wi-LAN’s references to “the HSDPA standard.”
Defendants are unaware of any standard specification known as “the HSDPA standard.”
HSDPA is not a standard. Instead, HSDPA refers to a set of features described by specifications
within the 3GPP standards.
3.
Responding to Wi-LAN’s objection, above, that Ericsson and Sony Mobile’s
breach-of-contract claims must be resolved as a matter of law, Ericsson and Sony Mobile agree
that contract interpretation is a matter of law for the Court to decide. In fact, they have submitted
summary-judgment motions asking the Court to enter judgment on these issues in their favor.
But if the Court disagrees with the parties and finds the PCRAs ambiguous, the parties’ intent
becomes a fact issue for the jury to decide. Further, in opposing Ericsson and Sony Mobile’s
summary-judgment motions, Wi-LAN argued there were fact issues to be resolved regarding
whether it breached the covenant not to sue.
V.
STIPULATIONS AND UNCONTESTED FACTS
A.
Stipulations
1.
During trial, each party shall provide notice by email no later than 7 p.m. each day
of all witnesses intended to be presented live during direct examination the next day at trial.
Such notice shall indicate the intended order of call of live and deposition witnesses for the
3
Wi-LAN disputes Defendants’ characterization of this issue.
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following day.
2.
Each party shall provide notice by email no later than 7 p.m. each day of all
witnesses intended to be presented by deposition two days later at trial. In other words, if a
witness will testify by deposition on a Wednesday, the witness must be identified by 7 p.m. on
the previous Monday. The disclosing party shall also identify, out of the party’s deposition
designations previously submitted in accordance with the Docket Control Order, those portions
of the deposition it intends to present. The receiving party shall provide objections to such
witnesses by noon. the following day. Such objections shall include objections and counterdesignations to deposition designations previously submitted in accordance with the Docket
Control Order. The time available for each side’s trial presentation shall be reduced by the
length of its designations or counter-designations actually played or read at trial. If played, such
time shall be measured by the amount of time of each party’s designation. If read, such time
shall be measured by the lines of testimony each party designates as a percentage of the total
number of lines read. If deposition testimony is to be played, the party that seeks to play the
deposition testimony must also provide the opposing party, by 9:00 pm one day before the
deposition testimony is to be played, a workable copy of the actual recording to be played (or
testimony to be read), including all designations and counter-designations. The parties shall
cooperate in good faith to prepare the designated portions of the depositions for presentation at
trial.
3.
The parties will exchange copies of all demonstratives and the identity of any
non-preadmitted exhibit to be shown to the jury during opening statements no later than 5 p.m.
the night before opening statements.
The parties shall exchange objections to these
demonstratives and exhibits by 7 p.m.
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4.
During trial, each party shall provide by email no later than 7 p.m. each day a
copy of all demonstratives that are intended to be presented during direct examination the
following day at trial, and the receiving party shall provide objections to such demonstratives by
9 p.m. The parties need not exchange demonstrative exhibits for use in cross-examination or
closing arguments.
5.
During trial, each party shall provide notice by email no later than 7 p.m. each day
a good-faith identification of any non-preadmitted exhibit expected to be used during direct
examination the following day at trial, and the receiving party shall provide objections to such
exhibits by 9 p.m.
6.
The parties agree that notice of a party’s intended use of blowups (enlargements)
of exhibits and of ballooning, excerption, highlighting, etc., of such exhibits need not be given
(and need not be exchanged as a demonstrative exhibit), as long as the exhibit is pre-admitted or
the party has identified its intention to use the exhibit according to the preceding paragraph.
7.
The parties shall make good-faith efforts to resolve objections over the use of
identified witnesses, testimony, and demonstratives prior to the subsequent trial day by
participating in a meet and confer following the identification of and objection to witnesses,
testimony, and demonstratives each day.
8.
No later than 5 p.m. on the fifth day prior to opening statements, the parties will
file with the Court and exchange amended witness lists containing (a) an identification of each
previously-listed witness expected to be called live on direct examination during trial and (b) a
good-faith narrowing of all other previously-listed witnesses.
9.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Wi-LAN (including documents
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generated by its employees during the course of their employment for Wi-LAN) and produced in
this case by Wi-LAN subject to the caveat that a party may object to the admissibility of any
specific statement in a document to the extent it can show that such statement does not fall
within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g., pursuant to Fed. R. Evid.
402 or 403).
10.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Alcatel-Lucent, Mindspeed
Technologies, Inc. (“Mindspeed”), or Picochip Ltd. (“Picochip”) (including documents
generated by its employees during the course of their employment for Alcatel-Lucent,
Mindspeed, or Picochip) and produced in this case by Alcatel-Lucent subject to the caveat that a
party may object to the admissibility of any specific statement in a document to the extent it can
show that such statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be
admitted (e.g., pursuant to Fed. R. Evid. 402 or 403).
11.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Ericsson (including documents
generated by its employees during the course of their employment for Ericsson) and produced in
this case by Ericsson subject to the caveat that a party may object to the admissibility of any
specific statement in a document to the extent it can show that such statement does not fall
within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g., pursuant to Fed. R. Evid.
402 or 403).
12.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Sony Mobile, Qualcomm, or STEricsson (including documents generated by its employees during the course of their
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employment for Sony Mobile, Qualcomm, or ST-Ericsson, and documents generated by
predecessor companies) and produced in this case by Sony Mobile subject to the caveat that a
party may object to the admissibility of any specific statement in a document to the extent it can
show that such statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be
admitted (e.g., pursuant to Fed. R. Evid. 402 or 403).
13.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by HTC or Qualcomm (including
documents generated by its employees during the course of their employment for HTC or
Qualcomm) and produced in this case by HTC subject to the caveat that a party may object to the
admissibility of any specific statement in a document to the extent it can show that such
statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g.,
pursuant to Fed. R. Evid. 402 or 403).
14.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Airspan Networks, Inc. (“Airspan”)
(including documents generated by its employees during the course of their employment for
Airspan) and produced in this case by Airspan subject to the caveat that a party may object to the
admissibility of any specific statement in a document to the extent it can show that such
statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g.,
pursuant to Fed. R. Evid. 402 or 403).
15.
The parties stipulate to the authenticity and business-record status of each
document that on its face appears to have been generated by Mindspeed or Picochip (including
documents generated by its employees during the course of their employment for Mindspeed or
Picochip) and produced in this case by Mindspeed subject to the caveat that a party may object to
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the admissibility of any specific statement in a document to the extent it can show that such
statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g.,
pursuant to Fed. R. Evid. 402 or 403).
16.
The parties stipulate to the authenticity and business record status of each
document that on its face appears to have been generated by Qualcomm (including documents
generated by its employees during the course of their employment for Qualcomm) and produced
in this case by Qualcomm subject to the caveat that a party may object to the admissibility of any
specific statement in a document to the extent it can show that such statement does not fall
within Fed. R. Evid. 803(6) or should otherwise not be admitted (e.g., pursuant to Fed. R. Evid.
402 or 403).
17.
The parties stipulate to the authenticity and business record status of each
document that on its face appears to have been generated by Silicon Valley Bank (including
documents generated by its employees during the course of their employment for Silicon Valley
Bank) and produced in this case by Silicon Valley Bank subject to the caveat that a party may
object to the admissibility of any specific statement in a document to the extent it can show that
such statement does not fall within Fed. R. Evid. 803(6) or should otherwise not be admitted
(e.g., pursuant to Fed. R. Evid. 402 or 403).
18.
The listing of an exhibit by a party does not waive any objections to the exhibit
should the opposing party attempt to offer it.
19.
Only those documents that appear on an exhibit list may be offered into evidence
at trial with any witness unless otherwise agreed by the parties or upon leave of Court for good
cause shown.
20.
Any document not specifically identified on an exhibit list, including any
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deposition or prior testimony or portion thereof not specifically designated, and not offered into
evidence, still may be used at trial for the purposes of impeachment, if otherwise competent for
such purposes.
21.
If Defendants Ericsson and/or Sony Mobile are found to infringe any of the
asserted claims of the ’326, ’327, ’819, or ’211 patents, and the asserted claims are found to be
valid, Wi-LAN, Ericsson, and Sony Mobile stipulate that damages shall be calculated from the
date of filing of the suit, October 5, 2010.
22.
Wi-LAN stipulates, solely for this lawsuit and for the purpose of resolving a
discovery dispute between the parties, that Wi-LAN believes that HSPA-compliant products
infringe one or more of the patents listed in Schedule A to the Patent and Conflict Resolution
Agreements. Wi-LAN does not stipulate that there has ever been an adjudication of that issue or
that Ericsson or Sony Mobile have met their burden of proof to show that HSPA-compliant
products infringe such patents.
B.
Uncontested Facts
1.
This court has jurisdiction over the parties and the subject matter of this suit.
2.
Venue is proper in the United States District Court for the Eastern District of
Texas, Tyler Division.
3.
Plaintiff Wi-LAN is a Canadian corporation with its principal place of business in
Ottawa, Ontario, Canada.
4.
Defendant Alcatel-Lucent is a Delaware corporation with its principal place of
business in Murray Hill, New Jersey.
5.
Defendant Telefonaktiebolaget LM Ericsson is a Swedish corporation with its
principal place of business in Stockholm, Sweden.
6.
Defendant Ericsson Inc., a subsidiary of Telefonaktiebolaget LM Ericsson, is a
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Delaware corporation with its principal place of business in Plano, Texas.
7.
Defendant Sony Mobile Communications AB is a Swedish Corporation with its
principal place of business in Lund, Sweden.
8.
Defendant Sony Mobile Communications (USA) Inc., a subsidiary of Sony
Mobile Communications AB, is a Delaware corporation with its principal place of business in
Atlanta, Georgia.
9.
Defendant HTC Corporation is a Taiwanese (R.O.C.) corporation with its
principal place of business in Taoyuan, Taiwan, R.O.C.
10.
Defendant HTC America, Inc., a subsidiary of HTC Corporation, is a Texas
corporation with its principal place of business in Bellevue, Washington.
11.
Defendant Exedea Inc., a subsidiary of Defendant HTC Corporation, is a Texas
corporation with its principal place of business in Houston, Texas.
12.
The ’326 patent resulted from an application filed with the United States Patent
and Trademark Office (“USPTO”) on November 26, 1997, and issued July 11, 2000.
13.
The ’326 patent claims priority to an application filed on December 20, 1996, in
the patent office of the United Kingdom.
14.
The named inventors on the ’326 patent are Martin Lysejko and Paul F.
Struhsaker.
15.
The ’326 patent is entitled to a priority date no later than December 20, 1996.
16.
The ’326 patent was previously assigned to Airspan.
17.
Wi-LAN is the current owner by assignment of the ’326 patent.
18.
The ’327 patent resulted from an application filed with the USPTO on November
26, 1997, and issued on February 27, 2001.
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19.
The ’327 patent claims priority to an application filed on December 20, 1996, in
the patent office of the United Kingdom.
20.
The named inventors on the ’327 patent are Martin Lysejko, Joemanne Chi
Cheung Yeung, and Paul F. Struhsaker.
21.
The ’327 patent is entitled to a priority date no later than December 20, 1996.
22.
The ’327 patent was previously assigned to Airspan.
23.
Wi-LAN is the current owner by assignment of the ’327 patent.
24.
The ’819 patent resulted from an application filed with the USPTO on November
26, 1997, and issued on April 24, 2001.
25.
The ’819 patent claims priority to an application filed on December 20, 1996, in
the patent office of the United Kingdom.
26.
The named inventors on the ’819 patent are Martin Lysejko and Paul F.
Struhsaker.
27.
The ’819 patent is entitled to a priority date no later than December 20, 1996.
28.
The ’819 patent was previously assigned to Airspan.
29.
Wi-LAN is the current owner by assignment of the ’819 patent.
30.
The ’211 patent resulted from an application filed with the USPTO on May 25,
2000, and issued on April 30, 2002.
31.
The ’211 patent is a continuation of the patent application filed with the USPTO
on November 26, 1997, that issued as the ’326 patent.
32.
The ’211 patent claims priority to an application filed on December 20, 1996, in
the patent office of the United Kingdom.
33.
The named inventors on the ’211 patent are Martin Lysejko and Paul F.
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Struhsaker.
34.
The ’211 patent is entitled to a priority date no later than December 20, 1996.
35.
The ’211 patent was previously assigned to Airspan.
36.
Wi-LAN is the current owner by assignment of the ’211 patent.
37.
U.S. Patent No. 5,966,377 (“Murai”) was first filed with the USPTO on
December 19, 1996. Murai’s effective date as prior art is December 19, 1996.
38.
The PCRA signed in 2008 by Wi-LAN and Ericsson is a valid and unambiguous
contract.
39.
The PCRA signed in 2008 by Wi-LAN and Ericsson is governed by New York
40.
The PCRA signed in 2008 by Wi-LAN and Sony Mobile is a valid and
law.
unambiguous contract.
41.
The PCRA signed in 2008 by Wi-LAN and Sony Mobile is governed by New
York law.
VI.
CONTESTED ISSUES OF FACT AND LAW
The Parties agree that to the extent any issue of fact is incorrectly designated below as an
issue of law, it will be considered as an issue of fact. Likewise, any issue of law incorrectly
designated below as an issue of fact will be considered as an issue of law.
A.
Contested Issues of Fact
1.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products literally infringe claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ’326
patent.
2.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products infringe claims 2, 5, 6, 7, 8, 9, and 10 of the ’326 patent under the
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doctrine of equivalents.
3.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products literally infringe claims 1, 5, 8, 10, 11, 12, 13, and 15 of the ’327
patent.
4.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products infringe claim 13 of the ’327 patent under the doctrine of equivalents.
5.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products literally infringe claim 11 of the ’819 patent.
6.
Whether Wi-LAN has proven by a preponderance of the evidence that Alcatel-
Lucent’s accused products infringe claim 11 of the ’819 patent under the doctrine of equivalents.
7.
If Wi-LAN has proven by a preponderance of the evidence that Alcatel-Lucent
has infringed the asserted claims of the ’326, ’819, or ’327 patents, and if the asserted claims are
not proved to be invalid by clear and convincing evidence, whether Wi-LAN is entitled to
compensatory damages of at least a reasonable royalty to compensate for Alcatel-Lucent’s
infringement of the ’326, ’819, and/or ’327 patents and, if so, the dollar amount of those
damages.4
8.
Whether Alcatel-Lucent has proven by a preponderance of the evidence that it is
entitled to a declaratory judgment that Alcatel-Lucent is not infringing and has not infringed any
claims of the ’326 patent.
9.
Whether Alcatel-Lucent has proven by a preponderance of the evidence that it is
entitled to a declaratory judgment that Alcatel-Lucent is not infringing and has not infringed any
claims of the ’819 patent.
4
Alcatel-Lucent and HTC object to the presentation of evidence to the jury regarding any alleged “future damages,”
which is an equitable issue for the Court.
-27-
10.
Whether Alcatel-Lucent has proven by a preponderance of the evidence that it is
entitled to a declaratory judgment that Alcatel-Lucent is not infringing and has not infringed any
claims of the ’327 patent.
11.
Whether Alcatel-Lucent has proven by clear and convincing evidence that it is
entitled to a declaratory judgment that the claims of the ’326 patent are invalid under one or
more sections of 35 U.S.C. §§ 102, 103, and 112.
12.
Whether Alcatel-Lucent has proven by clear and convincing evidence that it is
entitled to a declaratory judgment that the claims of the ’819 patent are invalid under one or
more sections of 35 U.S.C. §§ 102, 103, and 112.
13.
Whether Alcatel-Lucent has proven by clear and convincing evidence that it is
entitled to a declaratory judgment that the claims of the ’327 patent are invalid under one or
more sections of Title 35 of the United States code, including, without limitation, 35 U.S.C. §§
102, 103, and 112.
14.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
accused products literally infringe claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ’326 patent.
15.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
accused products infringe claims 2, 5, 6, 7, 8, 9, and 10 of the ’326 patent under the doctrine of
equivalents.
16.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
accused products literally infringe claims 1, 5, 8, 10, 11, 12, 13, and 15 of the ’327 patent.
17.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
accused products infringe claim 13 of the ’327 patent under the doctrine of equivalents.
18.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
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accused products literally infringe claim 11 of the ’819 patent.
19.
Whether Wi-LAN has proven by a preponderance of the evidence that Ericsson’s
accused products infringe claim 11 of the ’819 patent under the doctrine of equivalents.
20.
Whether Wi-LAN is entitled to compensatory damages of at least a reasonable
royalty to compensate for Ericsson’s alleged infringement of the ’326, ’819, and ’327 patents,
and if so, the dollar amount of those damages.
21.
Whether Wi-LAN has proven by a preponderance of the evidence that HTC’s
accused products literally infringe claims 1, 2, 3, 4, and 5 of the ’211 patent.
22.
Whether Wi-LAN has proven by a preponderance of the evidence that HTC’s
accused products infringe claims 2 and 5 of the ’211 patent under the doctrine of equivalents.
23.
Whether Wi-LAN is entitled to compensatory damages of at least a reasonable
royalty to compensate for HTC’s alleged infringement of the ’211 patent, and if so, the dollar
amount of those damages.
24.
Whether Wi-LAN has proven by a preponderance of the evidence that Sony
Mobile’s accused products literally infringe claims 1, 2, 3, 4, and 5 of the ’211 patent.
25.
Whether Wi-LAN has proven by a preponderance of the evidence that Sony
Mobile’s accused products infringe claims 2 and 5 of the ’211 patent under the doctrine of
equivalents.
26.
Whether Wi-LAN is entitled to compensatory damages of at least a reasonable
royalty to compensate for Sony Mobile’s alleged infringement of the ’211 patent, and if so, the
dollar amount of those damages.
27.
Whether the ’326, ’819, ’211, and ’327 patents are entitled to priority dates before
December 20, 1996, and if so, the applicable priority dates.
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28.
What the level of ordinary skill in the art at the time of invention of the patents in
suit was.
29.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid under 35 U.S.C. § 102(a) because the
claimed invention was known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention of the asserted claim.
30.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid under 35 U.S.C. § 102(b) because the
claimed invention was patented or described in a printed publication in this or a foreign country
or in public use or on sale in this country, more than one year prior to November 26, 1997.
31.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid under 35 U.S.C. § 102(e) because the
invention was described in (1) an application for patent, published under 35 U.S.C. § 122(b), by
another filed in the United States before the invention of the asserted claim, or (2) a patent
granted on an application for patent by another filed in the United States before the invention of
the asserted claim, except that an international application filed under the treaty defined in 35
U.S.C. § 351(a) shall have the effects of an application filed in the United States only if the
-30-
international application designated the United States and was published under Article 21(2) of
such treaty in the English language.
32.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid as obvious under 35 U.S.C. § 103.
33.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid as failing to meet the written description
requirement under 35 U.S.C. § 112.
34.
Whether Defendants have proven by clear and convincing evidence that one or
more of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 of the ‘326 patent; one or more of claims 1, 2, 5, 8,
10, 11, 12, 13, and 15 of the ‘327 patent; claim 11 of the ‘819 patent; and/or one or more of
claims 1, 2, 3, 4, and 5 of the ’211 patent are invalid as not enabled under 35 U.S.C. § 112.
35.
Whether Wi-LAN has proven by a preponderance of the evidence that it complied
with the requirements of 35 U.S.C. § 287
36.
Whether the asserted claims of the patents-in-suit are entitled to a date of
invention earlier than December 20, 1996.
37.
Ericsson contends that whether Wi-LAN brought this suit against Ericsson and
Sony Mobile in bad faith or in obvious breach of the covenant-not-to-sue provision in Article III
of the it entered into with them is a disputed issue of fact. Wi-LAN contends that this issue, if
reached, is a matter of law to be resolved by the Court.
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38.
If the issues concerning the PCR Agreements are not resolved as a matter of law,
whether Ericsson and Sony Mobile have proven that their accused products “would, but for [the
PCRAs], infringe” the WI-LAN PATENTS listed in Schedule A to the PCRAs.
B.
Contested Issues of Law
1.
Whether, if liability is found, Wi-LAN is entitled to a permanent injunction and
the scope of any such injunction.
2.
If liability is found and damages awarded, the amount of any pre- and post-
judgment interest and costs to be awarded to Wi-LAN under 35 U.S.C. § 284.
3.
Whether Wi-LAN’s claims for pre-suit damages against Defendants Alcatel-
Lucent and HTC are barred by the equitable doctrines of laches.
4.
The proper interpretation of the covenant-not-to-sue provision in Article III of the
PCRAs.
5.
Whether Wi-LAN breached the covenant-not-to-sue provision in Article III of the
PCRAs it entered into with Ericsson and Sony Mobile.
6.
Wi-LAN contends that, if the issue is reached, whether Wi-LAN brought this suit
against Ericsson and Sony Mobile in bad faith or in obvious breach of the covenant-not-to-sue
provision in Article III of PCRA is a matter of law to be resolved by the Court. Ericsson and
Sony Mobile contend that matter is a disputed issue of fact.
7.
Ericsson, Sony Mobile, and Wi-LAN agree that, if the issue is reached, the
amount of damages Ericsson and Sony Mobile are entitled to recover (if any) is a matter of law
to be resolved by the Court.
8.
The proper interpretation of the most-favored-licensee provision in Article VII of
the PCRAs, including (1) whether the most-favored-licensee provision applies to after-acquired
patents, (2) what is most-favored-licensee status, and (3) whether most-favored-licensee status
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includes “similarly situated” and/or “more-favorable rates.”
9.
Whether Wi-LAN breached the most-favored-licensee provision in Article VII.1
of the PCRAs it entered into with Ericsson and Sony Mobile, and if so, whether Ericsson and
Sony Mobile are entitled to receive licenses from Wi-LAN on terms that are at least equivalent to
the terms of the license Wi-LAN granted to other Wi-LAN licensees, including the license WiLAN granted to BelAir Networks, Inc.
10.
Whether New York law permits recovery of attorneys’ fees for breach of contract
when not expressly permitted by the contract or statute, and if so, whether “bad faith or in
obvious breach” is a correct statement of the standard for recovery under New York law.
11.
Ericsson contends that whether it is entitled to a license to the patents-in-suit is a
disputed matter of law. Wi-LAN agrees that a legal dispute exists regarding whether Ericsson is
licensed, but contends that that question cannot be adjudicated in this Action due to a mandatory
arbitration requirement contained in the agreement at issue.
12.
Whether Defendants are entitled to a finding that this case is exceptional and, if
so, the proper amount of attorneys’ fees and/or costs.
VII.
LISTS OF WITNESSES AND DEPOSITION DESIGNATIONS
A.
Witness Lists
Wi-LAN’s list of witnesses is attached as Exhibit 1.
Alcatel-Lucent’s list of witnesses is attached as Exhibit 2.
Ericsson’s and Sony Mobile’s list of witnesses is attached as Exhibit 3.
HTC’s list of witnesses is attached as Exhibit 4.
B.
Deposition Designations
The parties’ deposition designations are attached as exhibits. Objections and rebuttal
designations will be submitted on the dates specified in the Docket Control Order, as amended.
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Wi-LAN’s deposition designations are attached as Exhibit 5.
Defendants Alcatel-Lucent, Ericsson and Sony Mobile’s deposition designations are
attached as Exhibit 6.
Defendant HTC’s deposition designations are attached as Exhibit 7.5
VIII. LISTS OF EXHIBITS
Wi-LAN’s list of exhibits is attached as Exhibit 8.
Defendants’ list of exhibits is attached as Exhibit 9.
IX.
LIST OF PENDING MOTIONS
Docket No.
171
172
181
Dated Filed
03/26/2012
03/27/2012
04/13/2012
240
10/26/2012
[[255]]6
11/20/2012
275
12/07/2012
277
12/07/2012
288
01/07/2013
305
02/04/2013
306
02/04/2013
Title
Plaintiff’s Motion for Partial Summary Judgment
The Ericsson Defendants’ Motion for Summary Judgment
The Sony Mobile Defendants’ Cross-Motion for Summary
Judgment
HTC Corporation, HTC America, Inc. and Exedea, Inc.’s
Motion to Compel Production of Internal Communications
and Documents Withheld by Wi-LAN, Inc. on the Ground of
Attorney-Client Privilege
The Ericsson and Sony Mobile Defendants’ Motion to
Compel Plaintiff to Provide Discovery
The Ericsson And Sony Mobile Defendants’ Motion for
Leave to Supplement Summary-Judgment Briefing
Defendants’ Motion for Leave to File Two Letter Briefs
(filed at Dkt. Nos. 280 and 287) Requesting Permission to
File Certain Motions
Plaintiff Wi-LAN’s Motion to Strike Defendants’ Letter
Briefs
Defendants’ Motion for Clarification of the Construction of a
Single Term in the Court’s Claim-Construction Order
Defendants HTC Corporation, HTC America, Inc., and
Exedea Inc.’s Motion to Sever
In addition, all parties’ motions in limine are to be filed on March 11, 2013, pursuant to
the Docket Control Order (Dkt. No. 99).
5
In light of HTC’s pending motion to sever, Defendants Alcatel-Lucent, Ericsson and Sony Mobile and Defendant
HTC attach separate proposed deposition designations. Wi-LAN reserves its objections.
6
The parties anticipate that this pending motion may be resolved by agreement and will promptly advise the Court if
agreement is reached.
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X.
PROBABLE LENGTH OF TRIAL
The parties estimate the probable length of trial to be 6 to 8 days.
XI.
MANAGEMENT CONFERENCE LIMITATIONS
The parties will confer concerning additional limitations and propose them in advance of
the pre-trial conference.
XII.
CERTIFICATIONS
The undersigned counsel for each of the parties in this action does hereby certify and
acknowledge the following:
(1)
Full and complete disclosure has been made in accordance with the Federal Rules
of Civil Procedure and the Court’s orders;
(2)
Discovery limitations set forth in the Federal Rules of Civil Procedure, the Local
Rules, and the Court’s orders have been complied with and not altered by
agreement or otherwise; and
(3)
Each exhibit in the List of Exhibits herein:
(a)
is in existence;
(b)
is numbered; and
(c)
has been disclosed and shown to opposing counsel as set forth above.
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Approved as to both form and substance:
Dated: February 13, 2013
Respectfully submitted,
/s/ Akshay S. Deoras (with permission)
Gregory S. Arovas (pro hac vice)
Robert A. Appleby (pro hac vice)
Jeanne M. Heffernan (pro hac vice)
Akshay S. Deoras (pro hac vice)
Ryan P. Kane (pro hac vice)
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
Tel: (212) 446-4800
Fax: (212) 446-4900
greg.arovas@kirkland.com
robert.appleby@kirkland.com
jeanne.heffernan@kirkland.com
akshay.deoras@kirkland.com
ryan.kane@kirkland.com
Alcatel-Lucent-Wi-LANDefense@kirkland.com
By: /s/ David B. Weaver
David B. Weaver (TX Bar 00798576)
Lead Attorney
Avelyn M. Ross (TX Bar 24027817)
Ajeet P. Pai (TX Bar 24060376)
Syed K. Fareed (TX Bar 24065216)
Jeffrey T. Han (TX Bar 24069870)
Seth A. Lindner (TX Bar 24078862)
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: (512) 542-8400
Fax: (512) 236-3476
dweaver@velaw.com
aross@velaw.com
apai@velaw.com
sfareed@velaw.com
jhan@velaw.com
slindner@velaw.com
Local Counsel
Michael E. Jones (TX Bar 10929400)
Allen F. Gardner (TX Bar 24043679)
John F. Bufe (TX Bar 03316930)
POTTER MINTON PC
110 N. College, Suite 500
P.O. Box 359
Tyler, TX 75710-0359
Tel: (903) 597-8311
Fax: (903) 593-0846
mikejones@potterminton.com
allengardner@potterminton.com
johnbufe@potterminton.com
Steve R. Borgman (TX Bar 02670300)
Gwendolyn Johnson Samora (TX Bar
00784899)
VINSON & ELKINS LLP
1001 Fannin Street, Suite 2500
Houston, TX 77002-6760
Tel: (713) 758-2222
Fax: (713) 758-2346
sborgman@velaw.com
gsamora@velaw.com
Constance S. Huttner (NY Bar 1722024)
VINSON & ELKINS LLP
666 Fifth Avenue
26th Floor
New York, New York 10103
Tel: 212-237-0040
Fax: 917-846-5339
chuttner@velaw.com
Attorneys for Defendant Alcatel-Lucent USA
Inc.
/s/ Martin R. Bader (with permission)
Stephen S. Korniczky (pro hac vice)
Martin R. Bader (pro hac vice)
Daniel N. Yannuzzi (pro hac vice)
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Lee Hsu (pro hac vice)
Graham M. Buccigross (pro hac vice)
SHEPPARD MULLIN RICHTER & HAMPTON LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130
Tel: (858) 720-8924
Fax: (858) 847-4892
skorniczky@sheppardmullin.com
mbader@sheppardmullin.com
dyannuzzi@sheppardmullin.com
lhsu@sheppardmullin.com
gbuccigross@sheppardmullin.com
LegalTm-WiLAN-Alcatel@sheppardmullin.com
Local Counsel
Johnny Ward (TX Bar 00794818)
Wesley Hill (TX Bar 24032294)
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, TX 75601
Tel: (903) 757-6400
Fax: (903) 757-2323
jw@jwfirm.com
wh@jwfirm.com
Attorneys for Plaintiff Wi-LAN Inc.
Local Counsel
Eric Hugh Findlay (TX Bar 00789886)
Brian Craft (TX Bar 04972020)
FINDLAY CRAFT
6760 Old Jacksonville Hwy, Suite 101
Tyler, TX 75703
Tel: (903) 534-1100
Fax: (903) 534-1137
efindlay@findlaycraft.com
bcraft@findlaycraft.com
Attorneys for Defendants HTC Corporation,
HTC America, Inc., and Exedea Inc.
/s/ Richard L. Wynne, Jr. (with permission)
Bruce S. Sostek (TX Bar 18855700)
Lead Attorney
Richard L. Wynne, Jr. (TX Bar 24003214)
Adrienne E. Dominguez (TX Bar 00793630)
J. Michael Heinlen (TX Bar 24032287)
Timothy E. Hudson (TX Bar 24046120)
Justin S. Cohen (TX Bar 24078356)
THOMPSON KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, TX 75201
Tel: (214) 969-1700
Fax: (214) 969-1751
bruce.sostek@tklaw.com
richard.wynne@tklaw.com
adrienne.dominguez@tklaw.com
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michael.heinlen@tklaw.com
tim.hudson@tklaw.com
justin.cohen@tklaw.com
Ericsson-WI-LAN-Defense@tklaw.com
Local Counsel
William J. Cornelius (TX Bar 04834700)
Jennifer Ainsworth (TX Bar 00784720)
Wilson Robertson & Cornelius PC
909 ESE Loop 323, Suite 400
P.O. Box 7339
Tyler, TX 75711-7339
Tel: (903) 509-5000
Fax: (903) 509-5092
wc@wilsonlawfirm.com
jainsworth@wilsonlawfirm.com
Attorneys for Defendants Ericsson Inc.,
Telefonaktiebolaget LM Ericsson, Sony
Mobile Communications (USA) Inc., and Sony
Mobile Communications AB
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a) on this the 14th day of February, 2013. 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).
/s/ Ajeet P. Pai
Ajeet P. Pai
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