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

Filing 459

MOTION for Judgment as a Matter of Law DEFENDANTS' MOTION FOR JUDGMENT AS A MATTER OF LAW THAT CLAIMS 2 AND 5 OF U.S. PATENT NO. 6,381,211, CLAIMS 2, 5, AND 9 OF U.S. PATENT NO.6,088,326, AND CLAIM 11 OF U.S. PATENT NO. 6,222,819 ARE NOT INFRINGED AND INVALID, AND CLAIMS 11 AND 12 OF U.S. PATENT NO. 6,195,327 ARE NOT INFRINGED by Alcatel-Lucent USA Inc.. (Attachments: # 1 Text of Proposed Order)(Deoras, Akshay)

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-00252-LED
CONSOLIDATED CASES
JURY TRIAL DEMANDED

DEFENDANTS’ MOTION FOR JUDGMENT AS A MATTER OF LAW THAT CLAIMS
2 AND 5 OF U.S. PATENT NO. 6,381,211, CLAIMS 2, 5, AND 9 OF U.S. PATENT NO.
6,088,326, AND CLAIM 11 OF U.S. PATENT NO. 6,222,819 ARE NOT INFRINGED
AND INVALID, AND CLAIMS 11 AND 12 OF U.S. PATENT NO. 6,195,327 ARE NOT
INFRINGED

I.

Introduction
Defendants believe that judgment of noninfringement as a matter of law (JMOL) should

be entered in this case as to all asserted claims of the four patents in suit because the evidence
presented by plaintiff Wi-LAN is so deficient that reasonable jurors could not arrive at any other
verdict. In brief, Wi-LAN has failed to present even a prima facie case of literal infringement
because there has been a total failure of proof as to the presence of several limitations in the
asserted claims, namely, “second code generator”, “second encoder”, “second decoder” and an
additional “overlay code”, in the accused devices.
Similarly, Wi-LAN has failed both factually and legally with regard to the doctrine of
equivalents (DOE). Legally, Wi-LAN cannot rely on the DOE to supply the missing claim
elements noted above. This would violate the rule against claim element vitiation and the all
elements rule. The DOE permits, in proper circumstances, the substitution of a claimed element
with an unclaimed element, e.g., a rivet for a nail, but it does not permit the injection of an
element into a claim when no comparable element existed, e.g., a rivet into a claim which does
not recite a nail or the like.
Factually, Wi-LAN tries to blot out the difference between the two codes, orthogonal and
overlay, required by the asserted claims on the one hand and the single code, the OVSF code of
the accused devices, on the other hand. One code does not equal two codes, but Wi-LAN
attempts to dodge this reality by having its expert Dr. Wells argue that the additional overlay
code of the patent claims need not be a separate code. This tactic violates this Court’s claim
construction and is contrary to the intrinsic evidence found in the disclosures in of the asserted
patents.

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II.

Legal Standard
Judgment as a matter of law (JMOL) is proper when “there is no legally sufficient

evidentiary basis for a reasonable jury to have found for that party with respect to that issue.”
Ford v. Cimarron Ins. Co., 230 F.3d 828, 830 (5th Cir. 2000). Under this standard, the jury’s
determination must be supported by “substantial evidence.” ACCO Brands, Inc. v. ABA Locks
Mfrs. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007) (“We have interpreted the Fifth Circuit’s
standard to mean that the jury’s determination must be supported by substantial evidence.”),
citing Med. Care Am., Inc. v. Nat'l Union Fire Ins. Co., 341 F.3d 415, 420 (5th Cir.2003) (“If
there is substantial evidence opposed to [JMOL] . . . [it] should be denied.”).
III.

Argument
A.

No Literal Infringement

In order for literal infringement to be found, each and every element of a patent claim
must be present in an accused device. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350,
1358 (Fed. Cir. 2005); Unique Concepts, Inc. v. Brown, 939 F.3d 1558, 1562 (Fed. Cir. 1991).
The accused devices do not come close to meeting this standard and the undisputed evidence
demonstrates that this is so.
1.

The ‘211 Patent
a.

No Additional Overlay Code, Second Code Generator, Second
Decoder

Claims 2 and 5 of this patent are asserted against HTC and Sony Mobile. Each of these
claims requires, in addition to an orthogonal code, a first code generator and a first decoder:
An additional overlay code
A second code generator (to generate an overlay code)
A second decoder (to decode an overlay code)

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It is undisputed that none of these elements exist in the accused HTC and Sony Mobile
handsets. Rather these devices use only a single orthogonal code and not two codes—one an
initial orthogonal code and the other an additional overlay code used to subdivide the orthogonal
code—as the patent requires. Therefore, they do not need a second code generator or a second
decoder for an overlay code that does not exist.
How has Wi-LAN attempted to overcome this undisputed evidence? By attempting to
rewrite the claims to eliminate the claim limitations noted above rather than providing evidence
that the missing claim requirements can be found in the accused devices. This attempt to rewrite
the claims starts with Dr. Wells’ direct testimony about the requirement for an additional overlay
code as follows:
Q.

All right. Now does the overlay code need to be separate
from the orthogonal code?

A.

No, it doesn’t. The Court’s construction was an additional
code. It didn’t give a construction that it was a separate
code.

(July 8 p.m. Tr. 118:6-10.) This distortion of the claims and the Court’s claim construction is the
lynchpin of Wi-LAN’s fatally flawed infringement position. Both the ‘211 patent and Dr.
Wells’ testimony on cross-examination expose these flaws.
The ‘211 patent makes it plain that the overlay code is a separate code. Table 1, which
appears at col. 10, line 60 to col. 11, line 16, is the disclosure of the orthogonal code recited in
the claims. The overlay code appears separately in Table 2, at col. 15, lines 24-37, and is
entirely separate from the orthogonal code. Dr. Wells acknowledged that the orthogonal code
and the overlay code were described separately in the patents in suit in separate tables:
Q.

If we look down below, we see that it’s got a table , and
this is the RW codes or the orthogonal codes, right?

A.

Yes, that’s right.
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Q.

All right. And then you have a separate table with
additional codes for the overlay, which we find in Col. 15,
Table 2, the overlay codes, a separate table of codes for the
overlay, right?

A.

That’s right. In this example we do.

(July 9 a.m. Tr. 100:10-18.)
Furthermore, the application of the overlay code requires that it be separate because its
very purpose is to subdivide the channels created by the orthogonal code into smaller channels:
When using overlay codes, an RW [i.e., orthogonal] code is split in
the RW space domain to allow up to four subchannels to operate in
the same time.
(‘211 patent, col. 15, lines 58-60.) This is shown in Figure 9A of the ‘211 patent where the
RW1-RW13 channels created by the orthogonal code are each split up into four subchannels
Q1-Q4. It would not be possible for the overlay code to split up the orthogonal code channels
RW1-RW13 into subchannels Q1-Q4 unless the overlay code was separate from the orthogonal
code.
Dr. Wells agreed that the splitting up, i.e., the subdivision, of an orthogonal channel is
part of the definition of “overlay code”:
Q.

The term overlay code is actually a defined term, right?

A.

That’s right, it is.

Q.

And it’s an additional code that subdivides an orthogonal
channel, right? That’s the definition?

A.

That’s right.

(July 9 a.m. Tr. 94:22-95:7.) Therefore, the overlay code cannot be an “additional” code as
required by the Court’s claim construction if the overlay code is, as argued by Wi-LAN, part of
the orthogonal code, i.e., it could not be an additional code which could subdivide the orthogonal

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code unless it was separate from the orthogonal code. There is no other way to read the claims
of the ‘211 patent or the Court’s construction of those claims.
It is undisputed by Wi-LAN that only a single orthogonal code, the OVSF code is present
in the accused devices. Dr. Wells admitted this:
Q.

Isn’t it the fact that the code that is generated is a single
OVSF code?

A.

Yes.

(July 9 a.m. Tr. 111:15–17.) Dr. Wells further admitted that there is no disclosure in any of the
patents in suit that the orthogonal code and the overlay code are a single code rather than
separate codes:
Q.

Okay. That’s my question, okay? It’s a fact that there isn’t
any example or embodiment in any of the patents-in-suit
that disclose the orthogonal code and the overlay code to be
a single code, correct?

A.

The answer to that is no – I beg your pardon. the – you are
correct.

(July 9 a.m. Tr. 102:7–12.)
The testimony of Dr. Wells culminates in him admitting that if a single OVSF code
cannot satisfy the requirements of both an orthogonal code and an overlay code, there is no
infringement:
Q.

Okay. And you’re aware that if Dr. Wicker is right and a
single OVSF code cannot satisfy the requirements of both
an overlay and an orthogonal code, then there is no
infringement, right?

A.

For the patents that applies to, yes.

(July 9 a.m. Tr. 133:22–134:4.)
With the foregoing in mind and turning now to the claim elements “second code
generator” an “second decoder,” it is clear beyond any doubt that the absence of an overlay code
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in the accused devices means that there is no need for a second generator to generate a
nonexistent overlay code and no need for a second decoder to decode a nonexistent overlay code.
Thus, the undisputed fact that neither of these structures is present in the HTC or Sony Mobile
handsets can come as any surprise.
Certainly, Dr. Wells could not find a second code generator or a second decoder in the
HTC or Sony Mobile handsets. Instead, he (impermissibly, under the law) relied on the same
element to be both the first decoder and the second decoder:
Q.

And in fact, the ‘211 patent, while it deals with decoders
rather than encoders, you’re pointing to the same hardware
and software to satisfy both the first and the second decoder
limitation, right?

A.

Yes, it does.

Q.

And that is true for all of the chipsets you point to in the
handsets, right?

A.

Yes.

(July 9 a.m. Tr. 103:19–120:1.) The law does not permit reading limitations out of a claim in a
literal infringement determination. Unique Concepts, 939 F.2d at 1562. To do so would violate
the “all elements” rule. Id. Wi-LAN’s attempt to do so cannot be countenanced.
Thus, when a proper analysis utilizing claims 2 and 5 of the ‘211 patent and the Court’s
construction of those claims, is used, Wi-LAN concedes that there is no literal infringement. The
entitlement of HTC and Sony Mobile to JMOL of no literal infringement could not be more
evident and the Court should enter such a judgment.
b.

No ‘n’ Data Items Pertaining to Different Wireless Links

Each of the asserted claims of the ’211 Patent asserted against HTC and Sony Mobile
requires, among other things, that the set of ‘n’ overlay codes enable ‘n’ data items pertaining to
different wireless links to be transmitted simultaneously within the same orthogonal channel.
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The Court construed the term “wireless link” as “a radio connection between a central terminal
and a particular subscriber terminal for communicating data therebetween.” (D.I. 200, at p. 8.)
Wi-LAN is pointing to the four Release 99 control channels (CPICH, P-CPICH, P-CCPCH and
AICH) as the channels to which the overlay codes are allegedly applied. (July 9 a.m. Tr. 121–
122.)

Therefore, the claims require that the accused control channels transmit data items

pertaining to a radio connection between a central terminal and particular subscriber terminals.
The undisputed testimony proved that the accused control channels broadcast data items to all
subscriber terminals (i.e., mobile phones) and not to particular subscriber terminals as required
by the claims. (July 9 a.m. Tr. 122.) Accordingly, HTC and Sony Mobile are entitled to
judgment of noninfringement as a matter of law.
c.

No TDM and Second Decoders Acting on Data in the Same
Orthogonal Channel

Each of the claims of the ’211 Patent asserted against HTC and Sony Mobile requires,
among other things: (1) a TDM decoder capable of extracting data items from a particular
orthogonal channel; and (2) a second decoder that can selectively isolate data items in the same
orthogonal channel. This is also consistent with the plain reading of the claim language “a
second decoder, selectively operable instead of the TDM decoder, to apply to the data items of
the orthogonal channel.” The unrebutted testimony proved that the alleged TDM decoder in the
accused HTC and Sony Mobile handsets extracts data items only from user-specific data
channels (HS-PDSCHs) and the alleged second decoder isolates data only in common, control
channels. Simply stated, the alleged TDM and second decoders do not act on data in the same
channel, as required by the claims. Accordingly, HTC and Sony Mobile are entitled to judgment
of noninfringement as a matter of law.

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d.

No Data Items Being Transmitted

The asserted claims of the ’211 Patent claim reception controllers that receive data items
that are “being transmitted.” The claims, therefore, are not infringed unless data items are being
transmitted. Wi-LAN did not even allege, much less put on evidence, that the accused HTC and
Sony Mobile handsets transmit data items received by a reception controller. If the handsets
receive data items, the data items are being transmitted by third parties. Wi-LAN, however, has
not accused HTC and Sony Mobile of joint or indirect infringement. Thus, since the accused
handsets do not meet every limitation of the claims, and there are no allegations of indirect, joint,
or divided infringement, HTC and Sony Mobile are entitled to judgment of noninfringement as a
matter of law.
2.

The ‘326 and ‘819 Patents
a.

No Overlay Code, Second Code Generator, Second Encoder

The ‘326 and ‘819 patents are asserted against Alcatel-Lucent and Ericsson. The claims
asserted in the ‘326 patent are 2, 5 and 9 and only claim 11 of the ‘819 patent is asserted. These
claims are similar to claims 2 and 5 of the ‘211 patent, but recite a “second encoder” rather than
a “second decoder.” Thus, each of these claims requires, in addition to an orthogonal code, an
orthogonal code generator and a first encoder:
An overlay code
A second code generator (for generating an overlay code)
A second encoder (for encoding an overlay code)
Just as in the case of the ‘211 patent, the accused products of Alcatel-Lucent and Ericsson
do not have an overlay code, a second code generator, or a second encoder because it is
undisputed that they have only a single OVSF code and no need for an overlay code, a second
code generator for a nonexistent overlay code, or a second encoder for a nonexistent overlay
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code. In this regard, Dr. Wells, once again, admitted that he was relying on the same element to
satisfy the requirement for both a first encoder and a second encoder:
Q.

So first let’s talk about Alcatel-Lucent. And so I think you
explained on direct, as you did in your deposition, that you
were relying on the same hardware and software to be both
the first and the second encoder, right?

A.

That’s right. It can be.

Q.

Okay, so you’re saying that this first encoder and this
second encoder in these different limitations, you’re
pointing to the same thing, the same hardware and
software, right?

A.

Yes, because it performs both of those functions.

Q.

Okay. And – but we’re talking about the encoders, the
structure, not the functions.
You are pointing to the same structural fit (sic), the same
hardware or software, that you’re say is both the first and
second encoder, correct?

A.

That’s right.

Q.

Okay. And that’s true for Ericsson as well?

A.

That is correct.

(July 9 a.m. Tr. 102:23–103:18.)
Thus, just as HTC and Sony Mobile are entitled to JMOL of no literal infringement of the
‘211 patent, Alcatel-Lucent and Ericsson are also entitled to JMOL of no literal infringement of
the ‘326 and ‘819 patents for essentially the same reasons. Therefore, the Court should enter
such a judgment.
b.

No TDM and Second Encoders Operating on the Same Data Item

Each of the asserted claims of the ’326 Patent requires, among other things: (1) a TDM
encoder that can apply TDM techniques to a data item; and (2) a second encoder that can apply
an overlay code to the same data item. The unrebutted evidence proved that the alleged TDM
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and second encoders in the accused Ericsson and Alcatel-Lucent base stations do not and cannot
operate on the same data items. The alleged TDM encoders apply TDM techniques only to data
items in user-specific data channels that carry user data, and the alleged second encoders apply
overlay codes only to data items in broadcast, control channels, that carry control data. Because a
data item cannot be in both a user-specific data channel and a control channel, the alleged TDM
and second encoders cannot act on the same data items as required by the claims. Similarly, the
accused Ericsson and Alcatel-Lucent base stations fail to satisfy the “selectively operable”
language of claims 2, 5, and 9 of the ‘326 patent as these products have no second encoder that is
selectively operable instead of a TDM encoder. Accordingly, Ericsson and Alcatel-Lucent are
entitled to judgment as a matter of law that they do not infringe the ’326 Patent.
c.

No Subscriber Terminal

All of the claims asserted against Ericsson and Alcatel-Lucent require a “single frequency
channel being employed for transmitting data items pertaining to a plurality of wireless links.”
The parties agreed that a “wireless link” is a “radio connection between a central terminal and a
particular subscriber terminal for communicating items therebetween.” Thus, following rulings
in the Court’s claim-construction Order, each of the asserted claims includes a subscriberterminal limitation. Wi-LAN did not allege, much less put on evidence, that the accused Ericsson
and Alcatel-Lucent base stations include subscriber terminals. Accordingly, Ericsson and
Alcatel-Lucent are entitled to judgment of noninfringement as a matter of law.
d.

No Storage of a Set of Orthogonal Codes

Asserted claims 5 and 9 of the ’326 Patent and claim 11 of the ’819 Patent require an
orthogonal generator that “is a storage arranged to store the set of orthogonal codes.” Wi-LAN
has not identified an orthogonal code generator that is a storage. Further, it is undisputed that the
alleged storage can store, at most, a single orthogonal code at any given time. Wi-LAN offered
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no explanation, theory, or evidence to support a verdict that this alleged storage is an “orthogonal
code generator arranged to store a set of orthogonal codes.” Ericsson and Alcatel-Lucent are
therefore entitled to judgment as a matter of law that they do not infringe claims 5 and 9 of the
’326 Patent or claim 11 of the ’819 Patent.
e.

No Storage of Overlay Codes

Asserted claim 11 of the ’819 Patent requires an overlay code generator that “is a storage
arranged to store the set of overlay codes.” Wi-LAN has not identified an overlay code generator
that is a storage. Further, it is undisputed that the alleged storage can store, at most, a single
overlay code at any given time. Wi-LAN offered no explanation, theory, or evidence to support
a verdict that this alleged storage is an “overlay code generator arranged to store a set of overlay
codes.” Ericsson and Alcatel-Lucent are therefore entitled to judgment as a matter of law that
they do not infringe claim 11 of the ’819 Patent.1
3.

The ‘327 Patent
a.

No Removing CDMA Channels

Claim 11 of the ’327 Patent requires, among other things: a channel controller arranged
to (1) “allocate a number of . . . code division multiplexed channels as a channel pool of code
division multiplexed channels available for the establishment of . . .

wireless links”; and

(2) selectively reduce the number of code division multiplexed channels in the channel pool.”
Claim 12 depends on claim 11 and therefore includes those same limitations. Thus, claims 11
and 12 require reducing the number of channels in a pool of channels available for wireless
links—not just particular wireless links, all wireless links.
1

Additionally, through Dr. Wells, Wi-LAN argues an improperly narrow view of the court’s
construction of “TDM techniques.” Should that narrow view prevail, however, Wi-LAN
cannot show infringement of the TDM encoder/decoder elements as the accused products
as there is insufficient evidence that the accused products allocate intervals based on data
characteristics such as data type.
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The only evidence allegedly supporting such a reduction was Dr. Wells’s testimony that
the number of channels allocated to a particular subscriber terminal is reduced: “What this is
doing is . . . telling the base stations to allocate less and less and less codes to that phone. So it,
therefore, has more codes that it can allocate to other phones.” (Tr. at 63:8–13 (emphasis
added).) Likewise, in describing a so-called CQI mapping table shown in PX 249, he stated:
On the right-hand side [of the CQI mapping table], there’s this number of HS–
PDSCHs, which is the number of channels allocated. It’s the channel pool. Now,
if you have very low intercell interference, then that would not be reflected in the
CQI value. And so you could have CQI in this case of say 23, and you’d get five
codes allocated to you. Your channel pool would be five codes. Than as intercell
interference rises, your CQI value would necessarily drop, and the number of
codes in the pool will reduce to four, to three, to two, to one, until you get to the
point where if intercell interference was so bad, you would then get no channels
allocated to you at all.
(Tr. at 62:6–19 (emphasis added).)
Thus, Wi-LAN offered no explanation, theory, or evidence to show that any of the
accused Ericsson base stations include a channel controller arranged to selectively reduce the
number of code division multiplexed channels available for the establishment of wireless links.
Just the opposite, the unrebutted evidence shows that all code division multiplexed code channels
are always available. As Dr. Wells explained, if a channel is no longer available for a particular
user, it may be used for the establishment of a wireless link with another user. The claims,
however, require removing channels available for establishing wireless links completely, not
simply taking them from one user and allocating them to another.
Because there is no evidence that the Ericsson and Alcatel-Lucent base stations ever
completely remove code division multiplexed available for the establishment of wireless links,
Wi-LAN failed to prove infringement of claims 11 and 12 of the ’327 Patent. Ericsson is
therefore entitled to judgment as a matter of law that it does not infringe the ’327 Patent. E.g.,

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Presidio Components, Inc. v. Am. Technical Ceramics, Corp., 702 F.3d 1351, 1358 (Fed. Cir.
2012) (“To prove literal infringement, a plaintiff must show that the accused device contains
each and every limitation of the asserted claims.”).
b.

No Identification of Interference From Other Cells

The asserted claims of the ’327 Patent require the base station to receive “parameters
pertaining to a wireless link within the cell indicative of whether that wireless link is subject to
interference from signals generated by said other cells.” There is no dispute that these parameters
must be indicative of intercell interference. There is no dispute that: (1) the CQI received by the
accused Ericsson and Alcatel-Lucent base stations is just a number (0–30); (2) it is generated by
the handset; and (3) how a handset calculates the CQI is proprietary. In fact, there is no evidence
of how any handset actually calculates the CQI, let alone that it is indicative of intercell
interference.
Further, as Dr. Wells testified, the quality of the receiver and how good the receiver is a
factor in what the CQI reports:
Q.

You’re accusing CQI. Isn’t it a fact that if I have one phone
with a great receiver, designed really well, and another one
that the engineers didn’t do quite such a good job, they are
standing right next to each other, exact same conditions,
exact same interference, they can report different CQIs ,
right?

A.

Well, they may do. Yes.

Q.

Well, in fact, they do, because there are different qualities
of receivers, right?

A.

Yes.

(July 9 a.m. Tr. 141:11–20.) Therefore, the Ericsson and Alcatel-Lucent base stations do not
infringe as a matter of law.

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IV.

Defendants Do Not Infringe Under the Doctrine of Equivalents
A.

Wi-LAN Cannot Use the Doctrine of Equivalents to Remove Limitations
from the ‘211 Patent

Notwithstanding that Defendants are entitled to judgment as a matter of law that the
accused devices do not literally infringe the asserted claims, Defendants are also not liable for
infringement under the doctrine of equivalents.

Wi-LAN bears the burden of proving

infringement under the doctrine of equivalents. Miken Composites, L.L.C. v. Wilson Sporting
Goods Co., 515 F.3d 1331, 1340–41 (Fed. Cir. 2008); Universal Gym Equipment, Inc. v. ERWA
Exercise Equipment, Inc., 827 F.2d 1542, 1548 (Fed. Cir. 1987). There are “distinct rules for
evidence showing infringement under the doctrine of equivalents.” nCube Corp. v. SeaChange
Int’l, Inc., 436 F.3d 1317, 1326 (Fed. Cir. 2006) (affirming JMOL of non-infringement under the
doctrine of equivalents).
In Warner-Jenkinson, the Supreme Court made it clear that a party cannot use the
doctrine of equivalents to compare the accused device to the entirety of the claimed invention.
See Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997). Infringement
under the doctrine of equivalents requires Wi-LAN to prove equivalency on a limitation-bylimitation basis. Id.; see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed.
Cir. 1998). The “all limitations rule” 2 bars Wi-LAN from asserting the doctrine of equivalents
where doing so would eliminate or render superfluous a particular claim element. DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1323 (Fed. Cir. 2009) (citing WarnerJenkinson, 520 U.S. at 39 n.8); Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358
(Fed. Cir. 2005). The application of the all elements rule is a question of law. See Panduit Corp.
v. HellermannTyton Corp., 451 F.3d 819, 826 (Fed. Cir. 2006). Thus, it is up to the court to
2

The all limitations rule is sometimes referred to as the “all element rule.” Unique Concepts Inc.
v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991).
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decide if the all elements rule bars assertion of the doctrine of equivalents. See Wavetronix LLC
v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1360 (Fed. Cir. 2009) (“A court may not apply the
doctrine of equivalents where so doing would effectively eliminate a claim element in its
entirety.”); see also Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 347 F. Supp. 2d 114,
120 (D. Del. 2004). In order to be equivalent, the differences between a claim limitation and an
element of the accused product must be “insubstantial.” Wavetronix, 573 F.3d at 1360.
The test articulated for the doctrine of equivalents by the Supreme Court is
straightforward:
Does the accused product or process contain elements identical to
each claimed element of the patented invention? … A focus on
individual elements and a special vigilance against allowing the
scope of equivalence to eliminate completely any such elements
should reduce considerably the imprecision of whatever language
is used.
Warner-Jenkinson, 520 U.S. at 40 (emphasis added). As the Supreme Court noted, a trial court
has an important role in making sure the doctrine of equivalents is properly applied and
presented at trial:
[T]he various limitations on the application of the doctrine of
equivalents are to be determined by the court, … on a motion for
judgment as a matter of law at the close of evidence …. Thus,
under the particular facts of a case, … if a theory of equivalence
would entirely vitiate a particular claim element, partial or
complete judgment should be rendered by the court, as there would
be no further material issue for the jury to resolve.
Warner-Jenkinson, 520 U.S. at 39 n.8 (emphasis in original).
Thus, where an element is not literally found in an accused device, an equivalent element
must be present in the device. Plainly, equivalence between the claimed invention and the
accused device cannot be found if doing so requires elimination of an element of the claim even

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where its function can be performed by another element of the claim. Wi-LAN attempts to do
just that, eliminate a claim element, as demonstrated in the direct testimony of Wells:
Q.

And what do the claims tell us about whether we can use
the same hardware and software as the first encoder and the
second encoder?

A.

Well, the claims allow that, as long as they perform the
function of a first encoder and the function of a second
encoder.

Q.

All right. And is this similar to the point you made earlier
about equivalence?

A.

Yes. Yes. So I talked about the equivalence earlier, if you
think that it was just the one generator. So if you think
there’s just the one encoder, then there’s the equivalent of
using these two encoders together ….

(July 8 p.m. Tr. at 126:19-127:6.)
This is plainly improper and violates the all elements rule because it completely
eliminates the second decoder/encoder as an element in the claims.

As held in Panduit,

“Application of the doctrine of equivalents is limited by the ‘all elements rule,’ which provides
that ‘the doctrine of equivalents does not apply if applying the doctrine would vitiate an entire
claim limitation.’” Panduit, 451 F.3d at 830; see also Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d
1188 (Fed. Cir. 2005) (citing Warner-Jenkinson, 520 U.S. at 17, 29). Further, in Freedman, the
Federal Circuit held that “an element of an accused product or process is not, as a matter of law,
equivalent to a limitation of the claimed invention if such a finding would vitiate the limitation.”
Freedman, 420 F.3d at 1358.
B.

Wi-LAN Improperly Attempts to Use the Doctrine of Equivalents to Remove
the Two Codes, Two Code Generators, and Two Decoders Claim Limitations

Wi-LAN attempts to use the doctrine of equivalents to eliminate claim elements of the
asserted claims in their entireties. Claim 5 of the ‘211 patent, in addition to an (1) orthogonal

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code generator for providing an orthogonal code, (2) a first decoder for applying the orthogonal
code, and (3) a TDM decoder for extracting a data item from a predetermined time slot, requires
(4) an overlay code generator for providing an overlay code, and (5) a “second decoder,” which
is “selectively operable instead of the TDM decoder,” to isolate a particular data item using the
overlay code. 3 Thus, Claim 5 requires both an orthogonal and an overlay code generator that
generate orthogonal and overlay codes, respectively, and first and second decoders that apply the
orthogonal and overlay codes, respectively.
1.

Wi-LAN Tries to Eliminate the Claim Limitation Requiring an Overlay
Code and Overlay Code Generator

Wi-LAN attempts to eliminate the requirement for an overlay code by attempting to
equate the result of applying an orthogonal and overlay code, as the claim requires, with the
result of applying one code, as the accused products do. (July 8 p.m. 119:12-121:11.) It also
attempts to remove the claim requirement of a second code generator along with elimination of
the overlay code. But the all elements rule cannot be so easily avoided. Even if there were some
similarity in results, which there is not because the single code of Defendants’ accused products
speeds up data transmission whereas the use of an overlay code slows down data transmission,
the fact that the patent claims require an orthogonal code plus an additional overlay code means
that Wells’ argument would eliminate the claim limitation of having an overlay code and overlay
code generator. Eliminating a claim limitation is improper under the doctrine of equivalents, and
thus, as a matter of law, Defendants cannot infringe the two codes limitations with only one code
or the second code generator with only one code generator. See Panduit, 451 F.3d at 830.
2.

Wi-LAN Also Tries to Eliminate the Claim Limitation Requiring Two
Decoders/Encoders

3

The arguments as to Claim 5 of the ‘211 patent apply equally to Claim 2 of the ‘211 patent,
claim 11 of the ‘819 patent, and claims 2, 5, and 9 of the ‘326 patent.
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Wi-LAN attempts to eliminate the requirement for a “second” decoder/encoder by stating
that using one decoder/encoder with a 256-bit code is the same as using one decoder/encoder
with a 16-bit orthogonal code and using a second decoder/encoder with a 16-bit overlay code.
(July 8 p.m. Tr. 127:4–9.)
Once again, Wells seeks to eliminate the claim limitation that explicitly calls for a second
decoder/encoder by sweeping it under the guise of the doctrine of equivalents. Wi-LAN cannot
utilize the doctrine of equivalents in this manner to eliminate the claim limitation explicitly
calling for a second decoder/encoder. See Panduit, 451 F.3d at 830. Thus, Wi-LAN’s doctrine
of equivalents arguments must be rejected as a matter of law.
C.

Wi-LAN’s Argument in Support of Any Other Doctrine of Equivalents
Claims is Legally Insufficient

In order to prove the doctrine of equivalents, Wi-LAN must “present evidence and
argument concerning the doctrine and each of its elements.” Lear Siegler, Inc. v. Sealy Mattress
Co. of Mich., Inc., 873 F.2d 1422, 1425 (Fed. Cir. 1989) (emphasis in original); see also nCube,
436 F.3d at 1325; Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567
(Fed. Cir. 1996). “The evidence and argument on the doctrine of equivalents cannot merely be
subsumed in [Wi-LAN’s] case of literal infringement.” Id. That evidence and argument on
literal infringement bears on equivalence is not enough; the patentee must lay out the
equivalence argument in full for each element. Id. Boilerplate language and reference to prior
arguments is not sufficient to demonstrate infringement under the doctrine of equivalents. Smith
& Nephew, Inc. v. Arthrex, Inc., No. 2:07-cv-335-TJW-CE, 2010 U.S. Dist. LEXIS 10257, at
*27–29 (E.D. Tex. Feb. 5, 2010). Generalized testimony as to the overall similarity between the
claims and the accused infringer’s product or process will not suffice to show infringement under
the doctrine of equivalents. Texas Instruments, 90 F.3d at 1567 (Fed. Cir. 1996). Rather, Wi-18-

LAN must set forth evidence to establish what the function, way, and result of both the claimed
device and accused device is, and why the function, way, and results are the same. Malta v.
Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991).
Here, Wi-LAN has not even complied with the all elements rule, which functions as a
gatekeeper, a failure of which precludes reaching any of the other requirements of the doctrine of
equivalents.

D.

Wi-LAN’s Argument with Respect to Doctrine of Equivalents Ensnares Prior
Art

Ensnarement bars a patentee from asserting a scope of equivalency that would
encompass, or “ensnare,” the prior art. See Wilson Sporting Goods Co. v. David Geoffrey &
Assoc., 904 F.2d 677, 683 (Fed. Cir. 1990), overruled in part on other grounds, Cardinal Chem.
Co. v. Morton Int’l, Inc., 508 U.S. 83, 92 n.12 (1993). Ensnarement is question of law. Id. at
683. Prior art discussed by Defendants’ invalidity expert Mark Lanning demonstrates that WiLAN’s arguments with respect to the doctrine of equivalents ensnare the prior art. For example,
the TDM techniques as applied by Wi-LAN was described by Gitlin, U.S. Patent No. 6,018,528.
Furthermore, the different length OVSF codes indisputably used in the accused HSDPA
compliant devices to provide were described in the Gilhousen patent application, WO 95/03,652.
Further, recourse to the doctrine of equivalents is also barred because the alleged equivalent,
OVSF codes, were known in the art and were therefore foreseeable. Therefore, Wi-LAN’s
arguments with respect to the doctrine of equivalents is barred by the prior art limitation because
they ensnare the prior art as described in these references.
V.

The Asserted Claims of the Overlay Patents Are Invalid

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Defendants bear the burden of proof on invalidity by clear and convincing evidence.
However, the Court should enter a judgment of invalidity because the evidence presented is such
that no reasonable jurors could arrive at any other conclusion.
A.

Claims 2 and 5 of the ’326 Patent and Claims 2 and 5 of the ’211 Patent Are
Anticipated by Tiedemann

Mr. Lanning showed that the Tiedemann reference (DX-124) discloses each and every
element of claims 2 and 5 of the ’326 patent and claims 2 and 5 of the ’211 patent. Therefore,
the Court should find as a matter of law that Tiedemann anticipates claims 2 and 5 of the ’326
and ’211 Patents.
B.

The Asserted Claims of the Overlay Code Patents Are Obviousness

Obviousness is a question of law based on underlying facts, as set forth in Graham v.
John Deere Co., 383 U.S. 1 (1966). The Graham factors are (1) the scope and content of the
prior art, (2) the difference between the prior art and the claimed invention, (3) the level of
ordinary skill in the field of the invention, and (4) any relevant objective considerations. The
Graham Court explained that “the ultimate question of patent validity is one of law.” Id. at 17.
There is no dispute that all of the elements of all of the asserted claims of the overlay
code patents were known in the art. In addition, Mr. Lanning, defendants’ invalidity expert,
demonstrated that each of the claim elements could be found in the IS-95-A (DX-149),
Tiedemann (DX-124), and Gitlin (DX-148) references. And not only were all of the claim
elements known, they were all known in the same technical field—cellular wireless. So the only
dispute between the parties is whether it would have been obvious to combine the elements into
the particular arrangement as spelled out in the asserted claims of the overlay code patents.
Mr. Lanning presented evidence, arguments, and reasons why the asserted claims would
have been obvious to one of ordinary skill in the art. For example, Mr. Lanning demonstrated

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that these prior art references come from leaders in the field of cellular wireless, namely
Qualcomm and Bell Labs. But Wi-LAN’s technical expert, Dr. Wells, presented no evidence of
non-obviousness, nor any reasons why one of ordinary skill in the art could not or would not
combine the known elements as set forth in the claims.

He also presented no secondary

considerations of non-obviousness. Dr. Wells simply addressed non-obviousness by stating that
“it would not have been obvious.” Such conclusory statements cannot be held to rebut Mr.
Lanning’s evidence of obviousness.
Therefore, the defendants respectfully move for a finding of obviousness, as a matter of
law, on all of the asserted claims of the overlay code patents, based on what was admittedly
known in the art by one of ordinary skill in the art, the Tiedemann reference alone, or Tiedemann
in combination with the other references and/or the knowledge of one of ordinary skill in the art.
VI.

Conclusion
Wi-LAN has not presented evidence upon which the jury could reach a verdict of

infringement. Judgment as a matter of law of non-infringement should be entered.

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Dated: July 12, 2013

Respectfully submitted,
By: /s/ Eric H. Findlay______________
Stephen S. Korniczky (pro hac vice)
Martin R. Bader (pro hac vice)
James Geriak (pro hac vice)
SHEPPARD, MULLIN, RICHTER &
HAMPTON
12275 El Camino Real, Suite 200
San Diego, California 92130-2006
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric Hugh Findlay (TX Bar 00789886)
Roger Brian Craft (TX Bar 04972020)
FINDLAY CRAFT
6760 Old Jacksonville Highway
Suite 101
Tyler, Texas 75703
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
ATTORNEYS FOR DEFENDANTS
HTC CORPORATION, HTC AMERICA,
INC. AND EXEDEA INC.

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Dated: July 12, 2013

Respectfully submitted,
By: /s/Akshay S. Deoras______________
Gregory S. Arovas (pro hac vice)
Robert A. Appleby (pro hac vice)
Jeanne M. Heffernan (pro hac vice)
Akshay S. Deoras (pro hac vice)
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
Tel: [phone]
Fax: [phone]
[e-mail]
Michael E. Jones
Allen F. Gardner
POTTER MINTON PC
110 N. College, Suite 500 (75702)
P.O. Box 359
Tyler, Texas 75710
[phone]
[phone] (Facsimile)
[e-mail]
[e-mail]

ATTORNEYS FOR DEFENDANT
ALCATEL-LUCENT USA INC.

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Dated: July 12, 2013

Respectfully submitted,
/s/ Richard L. Wynne, Jr.
Bruce S. Sostek (Lead Attorney)
State Bar No. 18855700
[e-mail]
Richard L. Wynne, Jr.
State Bar No. 24003214
[e-mail]
THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, Texas 75201
214.969.1700
214.969.1751 (facsimile)
ATTORNEYS FOR DEFENDANTS
ERICSSON INC.
TELEFONAKTIEBOLAGET LM ERICSSON
SONY MOBILE COMMUNICATIONS AB
and
SONY MOBILE COMMUNICATIONS
(USA) INC.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was served on all counsel
of record on July 12, 2013, by electronic mail.
/s/ Martin R. Bader
Martin R. Bader

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