WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al
Filing
490
Joint MOTION for Entry of Judgment under Rule 54(b) UNOPPOSED JOINT MOTION OF PLAINTIFF WI-LAN INC., THE ERICSSON DEFENDANTS, AND THE SONY MOBILE DEFENDANTS FOR ENTRY OF PARTIAL FINAL JUDGMENT UNDER RULE 54(b) by Ericsson Inc., Sony Mobile Communications (USA) Inc., Sony Mobile Communications AB, Telefonaktiebolaget LM Ericsson, 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
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WI-LAN INC.,
Plaintiff,
v.
ALCATEL-LUCENT USA INC.; et al.,
Defendants.
Civil Action No. 6:10-cv-521-LED
Civil Action No. 6:13-cv-252-LED
CASES CONSOLIDATED FOR
TRIAL
JURY TRIAL DEMANDED
UNOPPOSED JOINT MOTION OF PLAINTIFF WI-LAN INC., THE ERICSSON
DEFENDANTS, AND THE SONY MOBILE DEFENDANTS
FOR ENTRY OF PARTIAL FINAL JUDGMENT UNDER RULE 54(b)
Pursuant to Federal Rule of Civil Procedure 54(b), Plaintiff Wi-LAN Inc. (“Wi-LAN”)
and Defendants Telefonaktiebolaget LM Ericsson, Ericsson Inc. (“Ericsson”), Sony Mobile
Communications AB, and Sony Mobile Communications (USA) Inc. (“Sony Mobile”)
(collectively, “Movants”) respectfully request that the Court enter partial final judgment on
Ericsson and Sony Mobile’s contract counterclaims regarding the Patent and Conflict Resolution
Agreements between the parties, so that appeal on that separate issue may proceed.1
I.
INTRODUCTION AND BACKGROUND
On October 5, 2010, Wi-LAN filed the Complaint in this case alleging patent
infringement by several defendants, including Ericsson and Sony Mobile. (Dkt. No. 12.) The
patents at issue in Wi-LAN’s Complaint were U.S. Pat. Nos. 6,088,326, 6,381,211, 6,222,819,
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Non-joining Defendants Alcatel-Lucent USA Inc., HTC Corp., HTC America, Inc., and Exedea
Inc. do not oppose this motion.
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For convenience, all citations are to docket entry numbers in case 6:10-cv-521.
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and 6,195,327. Ericsson and Sony Mobile counterclaimed against Wi-LAN for alleged breach of
contract based on a Patent and Conflict Resolution Agreement (“PCR Agreement”), which
Ericsson and Sony Mobile had each previously entered into with Wi-LAN in substantially
identical form. (Dkt. Nos. 250, 251, 253, 254.) Specifically, Ericsson and Sony Mobile alleged
that a covenant not to sue contained in the PCR Agreement barred Wi-LAN’s patent
infringement claims3 and that Wi-LAN had breached the terms of a most-favored licensee clause
contained in the agreement.4
Wi-LAN denied Ericsson and Sony Mobile’s counterclaim
allegations. (Dkt. Nos. 260, 261, 268, 269.)
With leave of the Court, Wi-LAN, Ericsson, and Sony Mobile filed various motions for
summary judgment (and supplements to those motions) concerning the scope and proper
interpretation of the PCR Agreement. (Dkt. Nos. 171, 172, 181, 275, 276.) On May 9, 2013,
the Court heard argument regarding the same. (See Dkt. No. 402.)
On June 4, 2013, the Court issued an Order granting Plaintiff’s Motion for Partial
Summary Judgment and denying Ericsson and Sony Mobile’s Motions for Summary Judgment
regarding the PCRA. (Dkt. No. 410.) In relevant part, with respect to Ericsson and Sony
Mobile’s covenant-not-to-sue claim, the Court ruled that “the current suit is not barred by the
PCR Agreements.” (Dkt. No. 410 at 7.) With regard to the most-favored-licensee claim, the
Court held that “Wi-Lan is not obligated to grant Defendants such a license to the patents-in3
Ericsson and Sony Mobile each also raised an affirmative defense setting forth the same
covenant-not-to-sue contention contained in the breach of contract counterclaim. Resolution of
the counterclaim necessarily resolved the affirmative defense as well.
4
The PCR Agreement arose, in relevant part, in connection with Wi-LAN’s assertion of four
specific patents (U.S. Patent Nos. 5,282,222; RE37,802; 6,192,068; and 6,320,897) against
Ericsson and Sony Mobile. Although the parties dispute the scope of the PCR Agreement and
its effect on Wi-LAN’s claims in this case, there is no dispute that these four patents are different
than the patents that are the subject of Wi-LAN’s patent infringement claims against Ericsson
and Sony Mobile in this case.
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suit.” (Id. at 8.) Because, as a matter of law, Ericsson and Sony Mobile’s contract counterclaims
could not be sustained under the interpretation of the PCR Agreements adopted by the Court, the
Court’s ruling effectively ended the litigation regarding those counterclaims.
A jury trial was then held with regard to Wi-LAN’s claims for patent infringement. After
the jury returned a verdict that Wi-LAN’s asserted claims were not infringed by Ericsson and
Sony Mobile and were invalid, Dkt. No. 465, the Court entered a Final Judgment on July 16,
2013 and an Amended Final Judgment on July 22, 2013. (Dkt. Nos. 470, 471.) On August 13,
2013, Wi-LAN filed a Motion for a New Trial concerning non-infringement and a Renewed
Motion for Judgment as a Matter of Law concerning invalidity. (Dkt. Nos. 481, 482.)
Wi-LAN’s post-trial motions relate solely to the patents at issue in its Complaint, and do
not raise any issue with regard to the Ericsson or Sony Mobile’s previously decided contract
counterclaims. The filing of Wi-LAN’s post-trial motions, however, tolled the time to file a
notice of appeal from the final judgment, including as to the Court’s ruling regarding the PCR
Agreement counterclaims. Fed. R. App. P. 4(a)(4). Because, as detailed below, there is no just
reason to delay review of that separate issue and entering partial final judgment would further the
goals of judicial economy, Movants respectfully move for entry of partial final judgment with
regard to the PCR Agreement counterclaims.
II.
Argument
A.
Legal Standards
In general, an order disposing of fewer than all claims or parties in an action is not an
appealable final judgment unless the district court certifies entry of partial final judgment under
Federal Rule of Civil Procedure 54(b). See, e.g., DirectTV, Inc. v. Budden, 420 F.3d 521, 524
(5th Cir. 2005). Once certified by the district court, however, “a Rule 54(b) judgment is a final
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decision capable of immediate appellate review pursuant to 28 U.S.C. § 1291.” Tolan v. Cotton,
713 F.3d 299, 303 (5th Cir. 2013). Rule 54(b) provides, in relevant part:
When an action presents more than one claim for relief—whether as a claim,
counterclaim, crossclaim, or third-party claim—or when multiple parties are
involved, the court may direct entry of a final judgment as to one or more, but
fewer than all, claims or parties only if the court expressly determines that there is
no just reason for delay.
Fed. R. Civ. P. 54(b).
To enter a Rule 54(b) final judgment disposing of a claim, the district
court “must dispose of that claim entirely.” Monument Mgmt. Ltd. P’ship I v. City of Pearl,
Miss., 952 F.2d 883, 885 (5th Cir. 1992) (emphasis in original); see also Ultra-Precision Mfg.
Ltd. v. Ford Motor Co., 338 F.3d 1353, 1358 (Fed. Cir. 2003). In addition, the district court
must determine whether there “is any just reason for delay.” Curtiss-Wright Corp. v. Gen. Elec.
Co., 446 U.S. 1, 8 (1979.) The determination of whether no just reason for delay exists is “left to
the sound judicial discretion of the district court.” Id.
In making this determination, courts
consider “judicial administrative interests as well as the equities involved.” Id. Multiple factors
may inform this determination, including “whether the claims under review [are] separate from
the others remaining to be adjudicated and whether the nature of the claims already determined
was such that no appellate court would have to decide the same issues more than once even if
there were subsequent appeals.” Id.
B.
Analysis
1.
The Court’s summary judgment order disposed of Ericsson and Sony
Mobile’s contract counterclaims entirely.
The Court’s June 4, 2013 Order determined as a matter of law that the PCR Agreement
did not bar Wi-LAN’s suit and that Wi-LAN had not breached the most-favored-licensee
provision of that Agreement by not granting Ericsson and Sony Mobile a license at mostfavored-licensee status. (Dkt. 410.) Accordingly, the Order resolved all outstanding issues with
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regard to Ericsson and Sony Mobile’s PCR Agreement counterclaims, and disposed of those
claims entirely.5
2.
There is no just reason to delay entry of partial final judgment regarding
Ericsson and Sony Mobile’s contract counterclaims.
Entering an order permitting immediate appeal of the June 4 Order regarding the PCR
Agreement will further judicial administrative interests and promote efficiency.
First, the
counterclaims adjudicated by the Court in that Order are separable from the remaining claims in
the case. See Curtiss-Wright, 446 U.S. at 8. There is little if any factual or legal overlap
between the contract counterclaims addressed by the Court in the June 4th Order and Wi-LAN’s
claims of patent infringement. Under this Court’s interpretation, the PCR Agreement, which
involves only the Ericsson and Sony Mobile defendants, relates to four patents that are not
asserted in Wi-LAN’s infringement claims.
(Compare Dkt. No. 171, Ex. A at 15 (PCR
Agreement) with Dkt. No. 1 at 1.) In addition, the substantive issues resolved by the Court in the
June 4 Order relate to questions of contract interpretation under New York state law; in contrast,
the remaining claims in the case, which are governed by federal law, concern patent infringement
and validity.
In addition, because Ericsson and Sony Mobile’s contract counterclaims and Wi-LAN’s
claims for patent infringement are distinct, the Court’s rulings on Wi-LAN’s post-trial motions
for judgment as a matter of law and for a new trial will not impact the Court’s earlier ruling
disposing of those counterclaims. There is thus no risk of the Court’s June 4 Order being mooted
by a later development in the case if it is separated for appeal; nor will an appellate court have to
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Because no issue relating to the PCR Agreement remained to be tried following the Court’s
ruling, the parties made no reference to Ericsson and Sony Mobile’s contract counterclaims
before the jury. (See, e.g., Dkt. No. 355, at 3-4 (motion in limine 2, barring references to
contract counterclaims); Dkt. No. 417, at 1 (agreement regarding same).)
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later re-decide the issues addressed in that Order if an appeal is taken on the PCR Agreement
immediately.
At bottom, the factors traditionally weighing against entry of partial final
judgment are largely absent in this case. See Curtiss-Wright, 446 U.S. at 8.
In addition, the balance of the equities supports entry of partial final judgment. Most
importantly, the correct scope of the PCR Agreement is a legal issue contested by Wi-LAN and
Ericsson in multiple forums, and a final interpretation of the meaning of that agreement may
substantially narrow the disputes between the parties.
For example, a Florida district court
recently interpreted the most-favored-licensee clause of the PCR Agreement in a manner
inconsistent with this Court’s summary judgment ruling on that question.
See Wi-LAN USA,
Inc., et. al. v. Ericsson, Inc., et. al., Dkt. No. 118, No. 1:12-cv-23569 (S.D. Fla. June 19, 2013).
A notice of appeal has been filed in that matter, id. (Dkt. No. 127), and a briefing schedule
regarding that appeal has been set. Because Wi-LAN’s post-verdict motions in this case remain
pending, however, the parties are unable to place both rulings before the Federal Circuit for
reconciliation unless a Rule 54(b) partial final judgment is entered. Should this Court enter such
an Order, Ericsson and Sony Mobile intend to promptly appeal the Court’s PCR Agreement
ruling, and the parties will move to consolidate the appeals on that issue before the Federal
Circuit.
Such a consolidation will increase judicial efficiency and eliminate the need for the
appeals court to address the same issue in piecemeal fashion from multiple cases. Cf. UltraPrecision Mfg. Ltd., 338 F.3d at 1358 (noting that a purpose of the final judgment rule is to avoid
piecemeal appeals).
Because entry of partial final judgment on the PCR Agreements in this matter will
promote the interests of judicial administration and equity, Movants respectfully request that the
Court find that no just reason for delay exists.
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III.
CONCLUSION
For the reasons set forth above, Movants respectfully request that the Court find that no
just reason for delay exists and enter partial final judgment on the PCR Agreement counterclaims
pursuant to Rule 54(b).
Dated: August 29, 2013
/s/Richard L. Wynne, Jr. (by permission)
Bruce S. Sostek (TX Bar 18855700)
Lead Attorney
Richard L. Wynne, Jr. (TX Bar 24003214)
Justin S. Cohen
Timothy E. Hudson
Adrienne Elizabeth Dominguez
James Michael Heinlen
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
Ericsson-WI-LAN-Defense@tklaw.com
Local Counsel
Jennifer Parker Ainsworth
William Cornelius
WILSON, ROBERTSON & CORNELIUS, P.C.
909 ESE Loop 323, Suite 400
P.O. Box 7339 [75711]
Tyler, TX 75701
Tel: (903) 509-5000
Fax: (903) 509-5092
jainsworth@wilsonlawfirm.com
wc@wilsonlawfirm.com
Respectfully submitted,
By: /s/ David B. Weaver
David B. Weaver (TX Bar No. 00798576)
Lead Attorney
Avelyn M. Ross (TX Bar No. 24027817)
Ajeet P. Pai (TX Bar No. 24060376)
Syed K. Fareed (TX Bar No. 24065216)
Jeffrey T. Han (TX Bar No. 24069870)
Janice Ta (TX Bar No. 24075138)
Seth A. Lindner (TX Bar No. 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
jta@velaw.com
slindner@velaw.com
Steve R. Borgman (TX Bar No. 02670300)
Gwendolyn J. Samora (TX Bar No. 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
Attorneys for Defendants Ericsson Inc.,
Telefonaktiebolaget LM Ericsson, Sony
Mobile Communications (USA) Inc., and
Sony Mobile Communications AB
Local Counsel
Johnny Ward (TX Bar No. 00794818)
Wesley Hill (TX Bar No. 24032294)
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Claire Abernathy Henry (TX Bar No. 24053063)
WARD & SMITH LAW FIRM
P.O. Box 1231
1127 Judson Rd., Ste. 220
Longview, TX 75606-1231
Tel: (903) 757-6400
Fax: (903) 757-2323
jw@jwfirm.com
wh@jwfirm.com
claire@wsfirmcom
Attorneys for Plaintiff Wi-LAN Inc.
CERTIFICATE OF CONFERENCE
The undersigned certifies that Plaintiff Wi-LAN Inc. and Defendants Ericsson and Sony
Mobile have complied with the requirements of Local Rule CV-7(h). Specifically, counsel for
the moving parties contacted counsel for each party to the case and no party opposes the relief
sought by this Motion.
By: /s/ Ajeet P. Pai
Ajeet P. Pai
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 29th day of August, 2013.
By: /s/ Ajeet P. Pai
Ajeet P. Pai
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
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WI-LAN INC.,
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Civil Action No. 6:10-cv-521-LED
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Plaintiff,
Civil Action No. 6:13-cv-252-LED
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CASES CONSOLIDATED FOR
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v.
TRIAL
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ALCATEL-LUCENT USA INC.; et al.,
JURY TRIAL DEMANDED
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Defendants.
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ORDER ENTERING PARTIAL FINAL JUDGMENT PURSUANT TO FRCP 54(b)
Before the Court is the Unopposed Joint Motion for Entry of Partial Final Judgment
Under
Rule
54(b)
filed
by
Plaintiff
Wi-LAN
Inc.
(“Wi-LAN”)
and
Defendants
Telefonaktiebolaget LM Ericsson, Ericsson Inc. (“Ericsson”), Sony Mobile Communications
AB, and Sony Mobile Communications (USA) Inc. (“Sony Mobile”) (collectively, “Movants”).
(Dkt. No. __.)
Wi-LAN filed a Complaint on October 5, 2010, alleging infringement by Ericsson and
Sony Mobile of four United States Patents.
(Dkt. No. 1.)
Ericsson and Sony Mobile
counterclaimed against Wi-LAN for breach of contract on the basis of an alleged covenant not to
sue6 and a most-favored licensee clause contained in a Patent and Conflict Resolution Agreement
(“PCR Agreement”) between Wi-LAN and each of Ericsson and Sony Mobile. (Dkt. Nos. 250,
251, 253, 254.)
Wi-LAN, Ericsson, and Sony Mobile filed various motions for summary
judgment, as well as supplements to those motions, seeking an interpretation of the PCR
Agreement. (Dkt. Nos. 171, 172, 181, 275, 276.) On June 4, 2013, the Court issued an Order
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Ericsson and Sony Mobile each also raised an affirmative defense setting forth essentially the
same matter contained in the breach of contract counterclaim.
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granting Plaintiff’s Motion for Partial Summary Judgment and denying Ericsson and Sony
Mobile’s Motions for Summary Judgment. (Dkt. No. 410.) The Court ruled that “the current
suit is not barred by the PCR Agreements” and that “Wi-Lan is not obligated to grant Defendants
such a license to the patents-in-suit.” (Dkt. No. 410 at 7, 8.)
The Court expressly FINDS that its summary judgment Order (Dkt. No. 410) has fully
disposed of Ericsson’s and Sony Mobile’s counterclaims regarding the PCR Agreements. In
addition, the Court expressly FINDS that there is no just reason for delaying entry of separate
and immediately appealable final judgment as to those counterclaims pursuant to Fed. R. Civ. P.
54(b).
Having considered the papers and for good cause shown, therefore, the Court GRANTS
Movants’ Unopposed Joint Motion for Entry of Partial Final Judgment Under Rule 54(b).
SO ORDERED.
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