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

Filing 497

REPLY to Response to Motion re 481 MOTION for New Trial CONCERNING THE NON-INFRINGEMENT OF CERTAIN CLAIMS OF U.S. PATENT NOS. 6,088,326; 6,222,819; 6,195,327 AND 6,381,211 filed by WI-LAN Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(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

PLAINTIFF WI-LAN INC.’S REPLY IN SUPPORT OF ITS MOTION FOR NEW
TRIAL CONCERNING THE NON-INFRINGEMENT OF CERTAIN CLAIMS OF U.S.
PATENT NOS. 6,088,326; 6,222,819; 6,195,327 AND 6,381,211

TABLE OF CONTENTS
Page
I.

Defendants Distorted The Court’s Claim Constructions .....................................................1
A.

The Overlay Code Need Not Be Separate From The Orthogonal Code..................1

B.

Defendants Improperly Imported Negative Claim Limitations ...............................3

C.

Defendants Improperly Excluded Preferred Embodiments From The Claims ........3

II.

Defendants Imported Extraneous Limitations Into ’327 Patent Claim 11...........................4

III.

The Court Has Authority to Grant A New Trial In This Case.............................................4

IV.

CONCLUSION....................................................................................................................5

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TABLE OF AUTHORITIES
Page
Cases
Edwards v. Sears, Roebuck and Co.,
512 F.2d 276 (5th Cir. 1975) ...................................................................................................... 5
Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337 (Fed. Cir. 2008) .................................................................................................. 1
Int’l Rectifier Corp. v. IXYS Corp.,
361 F.3d 1363 (Fed. Cir. 2004) .................................................................................................. 4
Koufakis v. Carvel,
425 F.2d 892 (2nd Cir. 1970) ..................................................................................................... 5
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) .................................................................................................. 1, 2
New York Central R.R. Co. v. Johnson,
279 U.S. 310 (1929).................................................................................................................... 3
SkinMedica, Inc. v. Histogen Inc.,
2013 WL 4487603, *13 (Fed. Cir. Aug. 23, 2013)..................................................................... 4
Smith v. Trans World Drilling Co.,
773 F.2d 610 (5th Cir. 1985) .................................................................................................. 6, 7
Union Pac. R. Co. v. Field,
137 F. 14 (8th Cir. 1905) .................................................................................................... 3, 4, 6

Rules
Fed. R. Civ. P. 59(d) ....................................................................................................................... 5

ii

At trial, Defendants distorted the claims, the Court’s claim constructions, and the
fundamentals of patent law. See Dkt. 481 (“Motion” or “Mot.”). Defendants improperly obtained
an erroneous verdict through the resulting jury confusion, and a new trial is the proper remedy.
I.

DEFENDANTS DISTORTED THE COURT’S CLAIM CONSTRUCTIONS
A. The Overlay Code Need Not Be Separate From The Orthogonal Code
Defendants’ Response (Dkt. 492) attempts to frame the issue as whether “a single OVSF

code [could] meet both required claim elements.” See Dkt. 492 (“Resp.” or “Response”) at 3.
But the actual issue is whether the claims require the “overlay code” to be “separate” from the
“orthogonal code.” This issue is purely one of claim construction. Indeed, Defendants
unsuccessfully argued for this construction during the Markman hearing. See Dkt. 201, Markman
Tr. at 61:5-6 (“MR. BADER: … the fact that these are two separate codes is important.”); see id.
at 64:11-12 (“MR. BADER: I think it does need to be a separate code.”).
Defendants failed to cite to anything in the intrinsic record that requires the “overlay
code” to be “separate” from an “orthogonal code.” And Defendants’ reliance on Mr. Lysejko’s
testimony is futile. See Resp. at 4. Even a cursory review of the trial record shows that Mr.
Lysejko’s testimony regarding “independent” codes, as with most of his testimony, was made in
response to a question about the Airspan commercial embodiment—not about the claim scope.
See Ex. E to Resp. at 11:5. In any case, the Federal Circuit has repeatedly held inventor
testimony irrelevant as to the issue of claim construction. See Howmedica Osteonics Corp. v.
Wright Med. Tech., Inc., 540 F.3d 1337, 1346–47 (Fed. Cir. 2008) (holding inventor testimony
“irrelevant to the issue of claim construction”); see also Markman v. Westview Instruments, Inc.,
52 F.3d 967, 985 (Fed. Cir. 1995) (“[I]t is not unusual for there to be a significant difference
between what an inventor thinks his patented invention is and what the ultimate scope of the
claim is after allowance by the PTO.”). Defendants’ attempt to bolster their distortion of the
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Court’s construction with Mr. Lysejko’s testimony is improper for this reason as well.
Defendants’ response finds no support in the Court’s Markman Order. Nothing in that
Order required the “overlay code” to be “separate” from the “orthogonal code.” Defendants
muster only a carefully cropped quote from the Markman hearing where the Court inquired
whether “additional code” implied that “it was separate.” See Dkt. 201, Markman Tr. at 59:2425. Defendants ignore the rest of the discussion where Wi-LAN explained why an “overlay
code” need not be “separate,” and Defendants repeatedly argued for the “separate” limitation. Id.
at 60:1-61:1. But those arguments were ultimately rejected by the Court. See Dkt. 200 at 13-14.
Moreover, Dr. Wells explained in detail how Defendants’ accused products infringe
under the doctrine of equivalents even if the claims somehow required “overlay code” to be
“separate” from the “orthogonal code.” See 7/8/13 PM Tr. 119:18-123:5, 126:25-127:16
(attached as Exhibit A); see also 7/9/13 AM Tr. 22:17-23:10 (explaining that a single OVSF
code satisfied limitations under doctrine of equivalents) (attached as Exhibit B). Defendants’
experts admitted that the same hardware or software could be used to generate the two codes
(i.e., that the “overlay code generator” and “orthogonal code generator” need not be two things).
See 7/11/13 AM Tr. 163:12-21 (attached as Exhibit C); 7/11/13 PM Tr. 31:16-20 (attached as
Exhibit D). Defendants’ experts likewise admitted that the “orthogonal code” and “overlay
code” could be generated and applied at the same time. See Ex. C, Tr. 98:22-24, 166:5-9; Ex. D,
Tr. 32:17-19.

Given that Defendants’ experts admitted that the generation hardware and

software can be the same, and that the “orthogonal code” and “overlay code” can be generated
and applied at the same time, the complete absence in the record of any explanation from
Defendants’ experts rebutting Dr. Wells’ testimony that the single OVSF code met these
elements under the doctrine of equivalents is notable. In light of this hopelessly confusing

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record, the jury’s verdict on non-infringement is against the great weight of evidence, and a new
trial on infringement is warranted. See Union Pac. R. Co. v. Field, 137 F. 14, 15-16 (8th Cir.
1905) (cited with approval in New York Central R.R. Co. v. Johnson, 279 U.S. 310, 318 (1929)).
B. Defendants Improperly Imported Negative Claim Limitations
Defendants’ statement that “Dr. Wicker never asserted the claims exclude on-the-fly code
generation” is misleading. Indeed, the question posed by Defendants’ counsel directly
distinguished between “on-the-fly” code generation with “storing” the orthogonal codes:
Q.
So it’s one or the other. You either generate the codes on-the-fly, or you
can store the entire set of orthogonal codes?
A.
Yes…
See Ex. C, Tr. 43:5-8 (emphases added). Clearly, Dr. Wicker’s testimony excluded “on-the-fly”
code generation from the scope of claims that required storage. Dr. Wicker and Defendants,
however, failed to provide any evidence from the intrinsic record to support this improper theory,
and in doing so invited error.
C. Defendants Improperly Excluded Preferred Embodiments From The Claims
Defendants argue that claim 5 of the ’326 Patent excludes the embodiment shown in
Figure 15A. See Resp. at 8-9. But this is plainly wrong. If Defendants were correct, none of the
claims of the ’326 Patent—not just claim 5—would encompass the preferred embodiment
described in Figure 15A. Hence, Defendants’ argument violates a fundamental cannon of patent
law: “a claim interpretation that excludes the preferred embodiment is rarely, if ever, correct.”
Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1371 (Fed. Cir. 2004); see also SkinMedica,
Inc. v. Histogen Inc., 2013 WL 4487603, *13 (Fed. Cir. Aug. 23, 2013). Defendants provide no
basis for such a disfavored (and incorrect) claim construction.
Contrary to Defendants’ argument, nothing in claim 11 of the ’819 Patent suggests that
the “data items” to which overlay codes are applied must be different from the “data items” to
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which the TDM techniques are applied. Defendants’ arguments find no support in the intrinsic
record and should not have been made to the jury. The appropriate remedy is for the Court to
order a new trial on infringement. See Union Pac., 137 F. at 15-16.
II.

DEFENDANTS IMPORTED EXTRANEOUS LIMITATIONS INTO ’327 PATENT CLAIM 11
Defendants incorrectly argue that Dr. Wicker did not distort claim 11 of the ’327 Patent

to require a parameter that measured only intercell interference, as opposed to one that merely
“indicated” intercell interference. See Resp. at 10. Defendants ignore Dr. Wicker’s admission
that he interpreted the word “indicative of” to mean “only measuring the interference from other
cells.” See Ex. C, Tr. 84:22-25. By importing this extraneous limitation, Dr. Wicker’s testimony
could only have caused jury confusion. Similarly, with respect to the “channel pool” claim
element, Dr. Wicker imported elements from unrelated and non-asserted claims that required
channels to be “locked out.” See Ex. C, Tr. 70:14.1
Nothing in claim 11 requires the “parameter” to “only measure the interference from
other cells” or requires channels to be “locked out.” Defendants’ experts, nonetheless, advanced
such positions and thoroughly confused the jury as to what the claims required. Given the
extensive jury confusion, this Court should order a new trial.
III.

THE COURT HAS AUTHORITY TO GRANT A NEW TRIAL IN THIS CASE
Defendants’ Response attempts to shift the focus from jury confusion caused by

Defendants’ improper argument to the timeliness of Wi-LAN’s objections. In doing so,
Defendants completely ignore Wi-LAN’s objections to Defendants’ distortion of the patent
claims and Court’s claim constructions. See Ex. B, Tr. 100:24-101:17, 115:24-116:18.
Nonetheless, this Court retains the power to grant a new trial regardless of whether Wi-LAN
1

Moreover, Defendants’ suggestion that Wi-LAN did not challenge Dr. Olivier’s testimony on
this issue is incorrect. To the extent Dr. Olivier adopted Dr. Wicker’s testimony (see Ex. C, Tr.
138:24-139:7), Wi-LAN’s objections at trial had already been made and were sufficient.
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objected to every instance of improper argument. See Edwards v. Sears, Roebuck and Co., 512
F.2d 276, 286 (5th Cir. 1975) (“[C]ounsel . . . maintain that since much of the argument was not
objected to, this court cannot consider the error on appeal. This misconstrues the court’s
prerogatives on review—we always possess the power to consider errors to which no objection
was made.”).2 Defendants cannot expect to infect the trial with numerous instances of improper
testimony and arguments, then somehow benefit if every instance of improper conduct was not
met with an objection.
The Court retains authority under the Federal Rules of Civil Procedure to grant a new
trial and can do so sua sponte. See Fed. R. Civ. P. 59(d) (“[T]he court, on its own, may order a
new trial for any reason that would justify granting one on a party’s motion”). Indeed, “[i]t is the
duty of the court and of its officers, the counsel of the parties, to prevent the jury from the
consideration of extraneous issues, of irrelevant evidence, and of erroneous views of the law …
and to assure to the litigants a fair and impartial trial.” See Union Pac., 137 F. at 15-16. In this
case, Defendants’ trial presentation distorted the claims, the Court’s constructions, and the law.
The remedy is a new trial. Smith v. Trans World Drilling Co., 773 F.2d 610, 613 (5th Cir. 1985).
IV.

CONCLUSION
Defendants’ Response mischaracterizes their distortions of the Court’s claim

constructions and claims’ scope as a “factual dispute.” See Resp. at 3. But neither the meaning of
claims nor claim scope is a factual issue for a jury to decide. Here, the jury was not able to fairly
choose between the parties’ disputed facts without confusion; rather, the jury had to choose
between the Court’s construction, on one hand, and Defendants’ distortion of the Court’s
construction and claim terms, on the other. Wi-LAN requests that the Court order a new trial to
permit the jury to decide the issues with regard to the actual claims and Court’s constructions.
2

See also Koufakis v. Carvel, 425 F.2d 892, 901 (2d Cir. 1970).
5

Dated: September 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]

Local Counsel
Johnny Ward (TX Bar No. 00794818)
Wesley Hill (TX Bar No. 24032294)
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: [phone]
Fax: [phone]
[e-mail]
[e-mail]
claire@wsfirmcom

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]
Attorneys for Plaintiff Wi-LAN Inc.

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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 September, 2013.
/s/David B. Weaver
David B. Weaver

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