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

Filing 461

RESPONSE in Opposition re 456 MOTION for Judgment as a Matter of Law of No Invalidity DEFENDANTS' OPPOSITION TO WI-LAN'S MOTION FOR JUDGMENT AS A MATTER OF LAW OF NO INVALIDITY filed 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’ OPPOSITION TO WI-LAN’S MOTION FOR JUDGMENT AS A
MATTER OF LAW OF NO INVALIDITY

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I.

Introduction
In bringing its motion for judgment as a matter of law, Wi-LAN ignores the great weight

of evidence showing that the asserted claims of U.S. Patent No. 6,381,211 (“the ‘211 patent”),
U.S. Patent No. 6,088,326 (“the ‘326 patent”), and U.S. Patent No. 6,222,819 (“the ‘819 patent”)
are invalid as a matter of law. (See D.I. 419.) Defendants presented conclusive evidence that
claims 2 and 5 of the ‘326 patent and claims 2 and 5 of the ‘211 patent are anticipated by
Tiedemann (DX-124). Further, Defendants presented evidence that the asserted claims of the
‘211, ‘326, and ‘819 patents are obvious in view of Tiedemann, IS-95-A (DX-149), and Gitlin
(DX-148).
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.

Defendants Presented Sufficient Evidence to Prove Tiedemann Anticipates
the Asserted Claims of the ‘211 and ‘326 Patents

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. Mr. Lanning
described claim 2 of the ‘326 patent and claims 2 and 5 of the ‘211 patent as an orthogonal code

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and generator, a TDM encoder, and an overlay code and a second encoder. (July 12 AM Tr. at
28:9-29:3.)

Mr. Lanning then identified Tiedemann as containing all of these elements,

including “TDM techniques” as that term has been construed by the Court.1 (Id. at 41:9-55:9.)
Then, Mr. Lanning identified claim 5 of the ‘326 patent as requiring all of the elements of claim
2, plus Rademacher-Walsh codes and storage. (Id. at 55:10-56:3, 56:10-16.) Mr. Lanning then
identified Tiedemann as disclosing these elements as well.

(Id. at 56:4-9, 56:17-57:15.)

Therefore, because more than sufficient evidence exists in the record that claims 2 and 5 of the
‘326 and ‘211 patents are anticipated by Tiedemann, the Court should deny Wi-LAN’s motion
for judgment as a matter of law..
B.

The Asserted Claims of the Overlay Code Patents Are Obviousness

Wi-LAN’s motion for judgment as a matter of law on no obviousness fails as well. 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 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.
Mr. Lanning presented evidence, arguments, and reasons why the asserted claims would
have been obvious to one of ordinary skill in the art. For claim 9 of the ‘326 patent and claim 11
of the ‘819 patent, Mr. Lanning testified that it would be obvious in light of Tiedemann for one
of skill in the art to apply overlay codes to a control channel as required by claim 9 and to apply
1

Wi-LAN’s expert, Dr. Wells, admits that a “TDM system that just takes turns” in a “predefined
repeated sequence” would satisfy the term “TDM techniques” according to the Court’s claim
construction. (July 9 AM Tr. at 85:8-86:4; see also July 12 PM Tr. at 43:18-21.) Moreover, in its
March 5, 2013 Order, the Court clarified that the term “TDM techniques cannot be interpreted to
exclude characteristics described in the specification” and noted that the “specification discloses
in Figure 9B the use of predefined repeated sequences as a TDM technique.” (D.I. 341 at 3.)
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“TDM techniques” to a traffic channel as required by claim 11. (July 12 AM Tr. at 60:1061:62:21.) Further, Mr. Lanning explained the motivation for such a combination. (Id. at 62:2264:6.) In addition, Gitlin describes combining CDMA with TDM. (Id. at 64:9-18.) Gitlin is
properly combined with Tiedemann, which discloses overlay codes, to make the asserted claims
of the ‘211, ‘326, and ‘819 patents invalid for obviousness as Mr. Lanning testified. (Id. at
68:23-70:14.) Thus, Defendants have shown sufficient evidence that the asserted claims are
invalid for obviousness in light of the prior art. Wi-LAN’s motion for judgment as a matter of
law must fail.
IV.

Conclusion
Defendants have set forth sufficient evidence to show that each asserted claim on the

‘211, ‘326, and ‘819 patents is invalid. Wi-LAN’s motion for judgment as a matter of law
should be denied.

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Dated: July 14, 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 14, 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 14, 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 14, 2013, by electronic mail.
/s/ Martin R. Bader
Martin R. Bader

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