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

Filing 456

MOTION for Judgment as a Matter of Law of No Invalidity by WI-LAN Inc.. (Attachments: # 1 Text of Proposed Order)(Weaver, David)

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
Civil Action No. 6:13-cv-252-LED
CASES CONSOLIDATED FOR
TRIAL
JURY TRIAL DEMANDED

WI-LAN’S MOTION FOR JUDGMENT AS A MATTER OF LAW
OF NO INVALIDITY
I.

INTRODUCTION
Plaintiff Wi-LAN Inc. (“Plaintiff”) moves for judgment as a matter of law (“JMOL”) on

Defendants’ arguments that claims 2 and 5 of U.S. Patent No. 6,381,211 (“the ’211 patent”),
claims 2, 5, and 9 of U.S. Patent No. 6,088,326 (“the ’326 patent”), and claim 11 of U.S. Patent
No. 6,222,819 (“the ’819 patent”) (collectively, the “Asserted Claims”) are invalid.1
The asserted claims of the ’211 patent require (in part):
a first code generator (to generate an orthogonal code);
a first decoder (to apply the orthogonal code);
a TDM decoder (for extracting data that has been encoded using TDM
techniques);
a second code generator (to generate an overlay code); and
a second decoder (to apply the overlay code).

1

Defendants do not argue that any asserted claim of U.S. Patent No. 6,195,327 (“the ‘327
patent”) is invalid, and neither party’s proposed jury verdict form includes any question regarding the
validity of the ‘327 patent. Mr. Lanning, Defendants’ invalidity expert, testified that he was offering no
opinion regarding invalidity of the ’327 patent.

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The asserted claims of the ’326 and ’819 patents require (in part):
a first code generator (to generate an orthogonal code);
a first encoder (to apply the orthogonal code);
a TDM encoder (to apply TDM techniques);
a second code generator (to generate an overlay code); and
a second encoder (to apply the overlay code).
Defendants have argued throughout the trial that the claims are anticipated under
35 U.S.C. § 102 and obvious under 35 U.S.C. § 103, but have failed to offer legally sufficient
evidence to establish any of these defenses by clear and convincing evidence.
II.

LEGAL STANDARDS
A.

Standard for Granting Judgment as a Matter of Law

Judgment as a matter of law must be granted when “a reasonable jury would not have a
legally sufficient evidentiary basis to find for the party on that issue.” Mirror Worlds, LLC v.
Apple, Inc., 784 F. Supp. 2d 703, 710 (E.D. Tex. 2011) (quoting FED. R. CIV. P. 50(a)), aff’d, 692
F.3d 1351 (Fed. Cir. 2012). “A court should render judgment as a matter of law when a party
has been fully heard on an issue and there is no legally sufficient evidentiary basis for a
reasonable jury to find for the party on that issue.” Reeves v. Sanderson Plumbing Prods., Inc.,
530 U.S. 133, 149 (2000); see also FED. R. CIV. P. 50(a) & (b). In deciding a motion for
judgment as a matter of law, the proper inquiry is whether sufficient evidence exists to support
non-movant’s claim when the evidence is viewed most favorably to the non-movant. Id. at 150.
B.

Invalidity Generally

An issued patent is accorded a presumption of validity based on the presumption that the
United States Patent & Trademark Office acted correctly in issuing a patent. From the issuance
of the patent, it is presumed that a claimed invention is novel, useful, not obvious, and satisfies
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the other legal requirements for a valid U.S. patent. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd.
P’ship, 131 S.Ct. 2238, 2245 (2011). It is a bedrock principle of patent law that a party asserting
invalidity bears the burden of proving invalidity by clear and convincing evidence. ICU Med.,
Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009).
III.

ARGUMENT
A.

No Anticipation Under 35 U.S.C. § 102
1.

Legal Standard for Anticipation

Anticipation under 35 U.S.C. § 102 requires that “each element of the claim in issue is
found, either expressly or under principles of inherency, in a single prior art reference, or that the
claimed invention was previously known or embodied in a single prior art device or practice.”
Amgen, Inc. v. Hoffman-La Roche Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 1999); Minn. Mining &
Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992).
At trial, Defendants presented only four prior art references to demonstrate invalidity: the
Tiedemann article (DX-124), the IS-95-A standard (DX-149), the Gitlin patent (DX-148), and
the Gilhousen ’652 application (DX-150). Despite having asserted that certain claims are invalid
because they were anticipated, Defendants did not meet their burden to show anticipation under
clear and convincing evidence. Because Defendants have failed to demonstrate that each and
every element of any Asserted Claim is found in a single prior art reference, Plaintiff is entitled
to judgment as a matter of law that the Asserted Claims are not invalid because of anticipation.
For example, the only allegedly anticipatory reference argued at trial by Defendants was
Tiedemann. But Defendants failed to demonstrate legally sufficient evidence that Tiedemann
anticipates any asserted claim.

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2.
Tiedemann Does Not Anticipate Claim 9 of the ’326 Patent or Claim 11 of
the ’819 patent.
Defendants have presented no evidence that Tiedemann, the only allegedly anticipating
reference argued, anticipates Claim 9 of the ’326 Patent or Claim 11 of the ’819 patent by
teaching each and every limitation of those claims. To the contrary, Mr. Lanning expressly
admitted that Tiedemann does not disclose every element of ’326 claim 9 because it does not
teach applying an overlay code to a paging channel. 7/12/13 Morning Session 62:5–11. In
addition, Mr. Lanning expressly testified that Tiedemann does not disclose every claim element
of ‘819 claim 11 because it does not disclose a TDM encoder for the traffic channels. Id.
Defendants have not proposed a jury finding of invalidity as to these claims.
3.
Tiedemann Does Not Anticipate Claim 2 of the ’326 Patent, Claim 5 of the
’326 Patent, Claim 2 of the ’211 patent, or Claim 5 of the ’211 patent.
Similarly, Defendants have failed to produce legally sufficient evidence that the
Tiedemann reference discloses, among other things, TDM techniques or overlay codes, as
required by Claim 2 of the ’326 patent, Claim 5 of the ’326 Patent, Claim 2 of the ’211 patent,
and Claim 5 of the ’211 patent. As one example, each of the asserted claims of the ’326, ’819,
and ’211 patents require “TDM techniques,” which the Court construed to require allocation
“based on one or more characteristics associated with the data item.” However, in his discussion
of the Tiedemann reference, Mr. Lanning simply offers conclusory testimony that Tiedemann
satisfies this requirement of the Court’s construction without offering any explanation or support
from the reference. 7/12/13 Morning Session 42:22–43:14, 48:1–10.
B.

No Obviousness Under 35 U.S.C. § 102
1.

Legal Standard for Obviousness

Obviousness under 35 U.S.C. § 103 requires some motivation to combine the prior art
references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, there
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must be a reason that a person of ordinary skill in the art would combine the different elements in
the fashion claimed. Id. at 418. This requires “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); see also KSR, 550 U.S. 418.
Defendants have failed to demonstrate legally sufficient evidence that would permit a
jury to conclude by clear and convincing evidence that the prior art references, even when
considered in the particular combinations argued by Defendants, meet all claim elements . For
example, among other missing claim limitations, Defendants failed to prove that the IS-95-A
reference teaches overlay codes or TDM techniques2; that the Tiedemann reference contains
overlay codes or discloses TDM techniques3; that the Gitlin reference discloses orthogonal
codes4, TDM techniques, or overlay codes5; or that Gilhousen ’652 teaches TDM techniques6.
In sum, no combination of these references argued by Defendants at trial discloses each and
every claim limitation of any Asserted Claim.
Defendants have further failed to present legally sufficient evidence of a “motivation to
combine” the reference pairings argued by Defendants at trial, and instead simply rely upon a
conclusory statement that a person of ordinary skill would be motivated to combine various
references. 7/12/13 Morning Session 66:6–23, 68:10–17. Each of these failures to offer legally

2

7/12/13 Morning Session 80:25–81:3 (admitting that IS-95-A does not disclose overlay codes).

3

In addition, as Wi-LAN objected during the hearing, the IS-95 reference (separate from the IS95-A reference) was beyond the scope of Mr. Lanning’s expert reports and may not be relied upon as
prior art, either alone or as an improper combination with the Tiedemann reference.
4

7/12/13 Morning Session 84:22–85:1 (admitting failure to testify how the Gitlin reference
disclosed orthogonal codes).
5

Id. at 66:9–12 (admitting that Gitlin does not disclose overlay codes).

6

Id. at 83:10–14(admitting that Gilhousen ’652 does not anticipate).

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sufficient proof is fatal to Defendants’ case, and Plaintiff is entitled to judgment as a matter of
law that the Asserted Claims are not invalid for obviousness.
IV.

CONCLUSION AND PRAYER
For the reasons stated above, Plaintiff Wi-LAN Inc. respectfully requests that the Court

grant its Motion for Judgment as a Matter of Law that Defendants have failed to offer legally
sufficient evidence, much less clear and convincing evidence, that any Asserted Claim is invalid.

Dated: July 12, 2013

Respectfully submitted,
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: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[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]

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[e-mail]
[e-mail]
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]
Attorneys for Plaintiff Wi-LAN Inc.

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service on this the 12th day of July, 2013.
/s/ David B. Weaver
David B. Weaver

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