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

Filing 498

REPLY to Response to Motion re 482 MOTION for Judgment as a Matter of Law [RENEWED] OF NO INVALIDITY OR, ALTERNATIVELY, MOTION FOR NEW TRIAL ON INVALIDITY filed by WI-LAN Inc.. (Attachments: # 1 Exhibit A)(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 RENEWED
MOTION FOR JUDGMENT AS A MATTER OF LAW OF NO INVALIDITY
OR, ALTERNATIVELY, MOTION FOR NEW TRIAL ON INVALIDITY

Defendants’ evidence of invalidity—essentially the trial testimony of Defendants’
invalidity expert, Mr. Mark Lanning—fails as a matter of law, and no reasonable jury could have
found the asserted claims of the ’326, ’819, and ’211 patents invalid. Defendants’ Response fails
to show otherwise. First, the Response avoids the key issue of whether Tiedemann actually
discloses how its time slots are assigned. Second, the Response resorts to broad
oversimplifications in an attempt to salvage an obviousness verdict unsupported by any evidence
as to how or why Tiedemann and Gitlin could have been combined to achieve the claimed
inventions.
A.

Tiedemann fails to disclose how its “assigned slots” are allocated, so it cannot
disclose allocating time slots “based on one or more characteristics associated with
the data item.”
Defendants recognize that their invalidity case based on the Tiedemann reference rests on

whether Tiedemann discloses “TDM techniques.” Resp. (Dkt. 491) at 2. In particular, the issue is
whether Tiedemann discloses allocating time slots to data items “based on one or more
characteristics associated with the data item,” as required by the Court’s claim construction of
“TDM techniques.” See Dkt. 200 at 11. But Defendants incorrectly state that “[t]he ultimate
question . . . is whether [Wi-LAN’s expert] Dr. Wells’s completely unsupported assertion that
user identity is not a characteristic of the data item somehow rendered Mr. Lanning’s testimony
insufficient to support the verdict.” Resp. at 5.
In fact, the “ultimate question” regarding Tiedemann comes one step earlier. While
Defendants devote four-and-a-half pages of the Response to whether user identity is a
“characteristic[] associated with the data item” (see Resp. at 4–8), and assuming, arguendo, that
this is the case—which it is not (see Mot. (Dkt. 482) at Part III.C)—Defendants still point to
nothing but one unsupported statement in Mr. Lanning’s testimony for their assertion that
Tiedemann allocates based on user identity. See Resp. at 4. Tiedemann itself contains no such
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disclosure, however, and therefore as a matter of law cannot anticipate the asserted claims or
render obvious the asserted claims as a single reference.
“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot
supplant the requirement of anticipatory disclosure in the prior art reference itself.” Motorola v.
Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (emphasis added); see Iovate
Health Sciences, Inc. v. Bio-Eng’red Supplements & Nutrition, Inc., No. 9:07–CV–46, 2008 WL
7842052, at *2 (E.D. Tex. Aug. 27, 2008) (“Experts offering opinions about anticipation must do
more than give conclusory statements—there must be ‘anticipatory disclosure in the prior art
reference.’” (quoting Motorola, 121 F.3d at 1473) (emphasis added)); see also ActiveVideo
Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (affirming grant
of JMOL, stating: “We agree . . . that the . . . testimony by Verizon’s expert was conclusory and
factually unsupported. . . . [H]e never provided any factual basis for his assertions.”).
Both Wi-LAN’s Motion and Defendants’ Response lay out the relevant text from
Tiedemann describing a paging channel with “assigned slots.” See Mot. at 12; Resp. at 3. The
inescapable fact is that Tiedemann does not explain at all how those slots are assigned.
Tiedemann fails to disclose what the allocation of those slots is “based on.” Hence, it is simply
impossible from the four corners of Tiedemann to tell whether those slots are assigned randomly,
based on user identity, or based on something else entirely. Defendants point to nothing in
Tiedemann that explains how it allocates time slots to data items. Instead, Defendants resort to
relying on Mr. Lanning’s unsupported testimony that Tiedemann “has one or more
characteristics associated with the data item, which would be the actual identification of the cell
phone.” See Resp. at 3–4. Lacking any “documentary evidence,” Mr. Lanning’s statement
“cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”

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Motorola, 121 F.3d at 1473.
Defendants also argue that Wi-LAN’s expert, Dr. Jonathan Wells, “did not offer any
evidence or testimony to counter Mr. Lanning’s assertion that the Tiedemann system used the
mobile device’s identity to allocate time intervals to data items.” Resp. at 4, 7. However, it was
Defendants’ burden to present sufficient evidence to show by clear and convincing evidence that
Tiedemann invalidates the asserted claims. Norgren v. Int’l Trade Comm’n, 699 F.3d 1317, 1322
(Fed. Cir. 2012). Defendants failed to satisfy that burden because there is no evidence in
Tiedemann to support Mr. Lanning’s unfounded testimony regarding how Tiedemann allocates
time slots to data items. Thus, no reasonable jury could have found that Tiedemann invalidates
the asserted claims or that Tiedemann supports even a prima facie case of anticipation or
obviousness.
B.

Defendants oversimplify the claimed inventions of the ’326, ’819, and ’211 patents,
as well as the prior art, in order to explain away the lack of proper testimony
regarding the combination of Tiedemann and Gitlin.
The Response argues that the jury reasonably found the asserted claims obvious based

only on the combination of Tiedemann and Gitlin. In doing so, Defendants ignore the actual
elements of the claimed inventions and the prior art references themselves, and instead try to
oversimplify the analysis by focusing on combinations of broad concepts such as “CDMA” and
“TDM.” But when the actual language of the asserted claims is analyzed with a view to the prior
art (as it must be), Defendants’ purported evidence as to why a person of ordinary skill would
have combined the elements from Tiedemann and Gitlin to achieve the claimed inventions is
insufficient as a matter of law. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t
can be important to identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention does . . . because
inventions in most, if not all, instances rely upon building blocks long since uncovered . . . .”).
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Indeed, Defendants’ application of KSR is completely divorced from both the asserted
claims, and Tiedemann and Gitlin (see Resp. at 11–13). First, the Response quotes trial
testimony allegedly addressing “a design need and market pressure to solve the ‘limited
bandwidth problem.’” Resp. at 11. However, “knowledge of a problem and motivation to solve it
are entirely different from motivation to combine particular references to reach the particular
claimed [invention].” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)
(emphases added). Second, the Response asserts that there were a “finite number of identified,
predictable solutions.” Resp. at 12. But Defendants’ analysis again concerns sweeping
oversimplifications using terms such as “CDMA,” “TDM,” and “Overlay Code,” not the specific
elements of the asserted claims or the prior art. See id. at 12–13. Defendants’ arguments must
fail because KSR’s obvious-to-try analysis still requires a focus on the “combination of
elements.” See KSR, 550 U.S. at 421.
The decision in Sundance, Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356 (Fed. Cir.
2008), discussed in the Response, demonstrates just how far afield the cases cited by Defendants
are. In Sundance, “the technology [was] simple and neither party claim[ed] that expert testimony
[was] required to support [a holding of obviousness].” Id. at 1365. The present case, on the other
hand, involves wireless cellular telecommunication technology, which could hardly be called
“simple.” In addition, Defendants state that there was no dispute regarding the content of the
prior art in Sundance and that there is no such dispute here (Resp. at 14), but here the parties
clearly dispute the content of the prior art. Wi-LAN has contended throughout this case that the
prior art presented by Defendants, including both Tiedemann and Gitlin, fails to disclose
elements of the asserted claims, including “TDM techniques.” See Mot. at 10, 14–15.
Furthermore, Sundance held claims obvious because they “simply arrange[d] old

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elements with each performing the same function it had been known to perform and yield[ed] no
more than one would expect from such an arrangement.” Sundance, 550 F.3d at 1367 (quotation
marks omitted). No such simple combination is possible in this case. By ignoring the actual
elements of the asserted claims and the actual content of the prior art, Defendants gloss over the
differences from the prior art and the clear difficulties that would have been encountered in
combining elements of Tiedemann and Gitlin. Indeed, Dr. Wells testified—with reference to
specific claim elements—to a variety of reasons why skilled artisans would not have combined
these references or had a reasonable expectation of success. See July 12 PM Tr. 34:6–36:7
(attached as Ex. A). For example, as discussed in Wi-LAN’s Motion, Tiedemann and Gitlin use
different techniques for transmitting their respective traffic channels, and it is exactly those two
techniques that Defendants want to combine. See Mot. at 7–8. Combining two different types of
traffic channels from two different wireless cellular systems into one system is nothing like the
simple truck covers of Sundance. See Ex. A at 35:24–36:7. Defendants thus failed to provide
evidence from Mr. Lanning or otherwise as to how the elements from the prior art could be
combined “in the way the claimed invention does,” or what would have motivated a person of
ordinary skill to make such a combination. ActiveVideo Networks, 694 F.3d at 1328. Instead,
Defendants only have Mr. Lanning’s admission that he improperly used hindsight to combine
these references because “Gitlin doesn’t describe overlay codes. But . . . Tiedemann does.” See
Mot. at 5–6. Because Mr. Lanning’s testimony showed an improper approach and was
insufficient as a matter of law, no reasonable jury could have found the asserted claims obvious.
For the reasons set forth above and in Wi-LAN’s Motion, Wi-LAN respectfully requests
that this Court enter judgment as a matter of law that the asserted claims are not invalid, or
alternatively, grant Wi-LAN’s motion for a new trial on invalidity.

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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.

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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