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

Filing 328

NOTICE by Ericsson Inc., Sony Mobile Communications (USA) Inc., Sony Mobile Communications AB, Telefonaktiebolaget LM Ericsson, WI-LAN Inc. re 314 Order Setting Hearing on Motion,,,,,, Joint Notice of Withdraw of Ericsson/Sony Mobile Motion to Compel [ECF 255] and Withdrawal of Wi-LAN's Opposition to Ericsson/Sony Mobile Motion for Leave to Supplement Summary-Judgment Briefing [ECF 283] (Wynne, Richard)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,
Plaintiff,
v.
ALCATEL-LUCENT USA INC.; et al.
Defendants.

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

JOINT NOTICE OF WITHDRAWAL OF DEFENDANTS’ MOTION TO COMPEL
[DKT. 255] AND WITHDRAWAL OF PLAINTIFF’S OPPOSITION
TO ERICSSON AND SONY MOBILE’S MOTION FOR LEAVE TO SUPPLEMENT
SUMMARY JUDGMENT BRIEFING [DKT. 283]

For the reasons set forth below, Paintiff Wi-LAN Inc. (“Wi-LAN”), Defendants
Telefonaktiebolaget LM Ericsson and Ericsson Inc. ( “Ericsson”), and Defendants Sony Mobile
Communications AB and Sony Mobile Communications (USA) (“Sony Mobile”) (collectively
“Defendants”) respectfully notify the Court that they have reached an agreement under the terms

of which the Ericsson and Sony Mobile Defendants’ Motion to Compel (Dkt. 255) as well as the
Ericsson and Sony Mobile Defendants’ Motion for Leave to Supplement Summary Judgment
Briefing (Dkt. 275) can be removed from the Court’s February 26, 2013, hearing calendar.
Under this agreement, Wi-LAN will produce a witness for the deposition topics that form the
subject of the Motion to Compel. Ericsson and Sony Mobile will withdraw their Motion to
Compel, and Wi-LAN will withdraw its opposition to the Motion for Leave to Supplement.

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BACKGROUND & ARGUMENT
In addition to Plaintiff’s claims for patent infringement, Ericsson and Sony Mobile have
asserted contract counterclaims against Wi-LAN concerning agreements between the parties
known as the Patent and Conflict Resolution Agreements (“PCR Agreements”). As regards the
counterclaims, two main issues are in dispute:
(1) The parties dispute the applicability and scope of the covenant not to sue provision of
the PCR Agreements.
(2) Should the covenant not to sue provision not apply to Wi-LAN’s claims in this case,
the parties dispute the applicability and scope of the “most-favored license” provision of
the PCR Agreements.
With regard to the first issue, the parties’ cross motions for summary judgment are now
fully briefed. (Dkt Nos. 171, 172, 180, 181, 187, 190, 193, 195, 197, 198.)
With regard to the second issue, Defendants filed a motion to compel a deposition of WiLAN on four specific topics of its July 2012 30(b)(6) Deposition Notice to Wi-LAN related to
the “most-favored licensee” provision of the PCR Agreements: Nos. 13, 14, 15, and 16. 1 WiLAN opposed Defendants’ Motion on a number of grounds. (Dkt. 278.) Since that time, the
parties have reached agreement concerning those four topics. Wi-LAN will present a witness
(Andrew Parolin) in New York, as a 30(b)(6) witness on those four topics, for deposition on
March 7, 2013. Accordingly, Ericsson and Sony Mobile respectfully withdraw their Motion to
Compel, without prejudice.
In addition, Ericsson and Sony Mobile have filed a Motion for Leave to Supplement their
Summary Judgment Briefing regarding the PCRA. (Dkt. 275.) Their proposed motion, which

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Topics 13 and 15 are identical, as are Topics 14 and 16, except as to the party at issue
(Ericsson or Sony Mobile). (See Dkt. 255, Ex. C.)
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was attached to the Motion for Leave, concerns the “most-favored licensee” provision of the
PCR Agreements. Wi-LAN opposed Defendants’ motion for leave on various grounds. (Dkt.
283.) Following further discussions between the parties, Wi-LAN, Ericsson, and Sony Mobile
agree that briefing regarding the legal issues concerning the scope of the “most-favored licensee”
provision may be helpful to the Court.

Accordingly, Wi-LAN respectfully withdraws its

opposition to Ericsson and Sony Mobile’s Motion for Leave, and the parties propose the
following briefing schedule: Ericsson and Sony Mobile’s motion be deemed served on February
26, 2013; Wi-LAN’s response due March 6, 2013, at noon CST; Wi-LAN’s witness (Andrew
Parolin) on Topics 13-16 of Ericsson and Sony Mobile’s Rule 30(b)(6) Notice be deposed on
March 7, 2013; Ericsson and Sony Mobile’s Reply due March 14, 2013; and Wi-LAN’s SurReply due March 19, 2013.

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Respectfully submitted,

Respectfully submitted,

/s/ David B. Weaver (w/permission)
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: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

/s/ Richard L. Wynne, Jr.
Bruce S. Sostek (TX Bar 18855700)
Lead Attorney
[e-mail]
Richard L. Wynne, Jr. (TX Bar 24003214)
[e-mail]
Adrienne E. Dominguez (TX Bar 00793630)
[e-mail]
J. Michael Heinlen (TX Bar 24032287)
[e-mail]
Timothy E. Hudson (TX Bar 24046120)
[e-mail]
Justin S. Cohen (TX Bar 24078356)
[e-mail]

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: [phone]
Fax: [phone]
[e-mail]
[e-mail]
Local Counsel
Johnny Ward (TX Bar 00794818)
Wesley Hill (TX Bar 24032294)
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, TX 75601
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, Texas 75201
Tel: [phone]
Fax: [phone]
Local Counsel
William J. Cornelius (TX Bar 04834700)
[e-mail]
Jennifer Ainsworth (TX Bar 00784720)
[e-mail]
WILSON ROBERTSON & CORNELIUS PC
909 ESE Loop 323, Suite 400
P.O. Box 7339
Tyler, TX 75711-7339
Tel: [phone]
Fax: [phone]
ATTORNEYS FOR DEFENDANTS
TELEFONAKTIEBOLAGET LM ERICSSON,
ERICSSON INC., SONY MOBILE
COMMUNICATIONS AB, AND SONY MOBILE
COMMUNICATIONS (USA) INC.

Attorneys for Plaintiff Wi-LAN Inc.

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CERTIFICATE OF SERVICE
The undersigned certifies that on February 25, 2013, counsel of record who are deemed
to have consented to electronic service are being served with a copy of this document by
electronic mail.
/s/ Richard L. Wynne, Jr.
Richard L. Wynne, Jr.

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