Case 1:15-cv-00547-JFB-SRF Document 407 Filed 03/07/19 Page 1 of 15 PageID #: 21561
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`APPLE INC.,
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`Defendant.
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`HTC CORPORATION and
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`HTC AMERJCA, INC.,
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`Defendants.
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`LENOVO GROUP LTD., LENOVO
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`(UNITED STATES) INC., and
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`MOTOROLA MOBILITY,
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`Defendants.
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`1
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`Case 1:15-cv-00547-JFB-SRF Document 407 Filed 03/07/19 Page 2 of 15 PageID #: 21562
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD.
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`and SAMSUNG ELECTRONICS
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`AMERICA, INC.
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`Defendants.
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`_____________________________________ )
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`ZTE (USA) INC.,
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`Defendant.
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY and
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`NOKIA INC.,
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`Defendants.
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`) Civil Action No. 15-547-JFB-SRF
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`This matter is before the court on defendant Apple Inc.’s (“Apple”) motion for a
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`summary judgment of non-infringement, D.I. 193.1 These are actions for patent
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`_____________________________________
`1 All docket items (“D.I.”) refer to Civil Action No. 15-542-JFB-SRF unless otherwise stated.
`Corresponding motions in the related cases are: D.I. 207 in Evolved Wireless LLC (“Evolved”) v. HTC
`Corp. and HTC Am., Inc. (“HTC”), 1:15cv543; D.I. 182 in Evolved v. Motorola Mobility, LLC and Lenovo
`Corp. (”Motorola”), 1:15cv544; D.I. 223 in Evolved v. Samsung Elecs. Co., Samsung Elecs. Am. Inc.,
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`2
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`Case 1:15-cv-00547-JFB-SRF Document 407 Filed 03/07/19 Page 3 of 15 PageID #: 21563
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`infringement pursuant 35 U.S.C. § 101, et seq. This Court has jurisdiction under 28
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`U.S.C. § § 1332, 1331, 1332, 1338(a), 1367, and 2201. The above-captioned cases
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`have been consolidated for discovery.
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`Plaintiff Evolved Wireless, LLC (“Evolved”) alleges infringement of certain claims
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`of United States Patent Nos. 7,809,373 (‘the ’373 patent”) and 7,881,236 (“the ’236
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`patent”), which involve LTE wireless communication systems.2 Apple and the
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`defendants in related cases (collectively, “the defendants”) move for a summary
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`judgment of noninfringement. They contend that the record shows they do not infringe
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`the asserted claims of the ’373 patent and the ’236 patent as a matter of law.
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`I.
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`FACTS
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`A.
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`Background
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`Relevant background and facts are set out in the Court’s previous orders and will
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`be repeated only as necessary to the Court’s opinion. Briefly, the ‘373 Patent contains
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`independent claims covering methods for performing a “handover” of a terminal to a
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`target base station, that is, of “transmitting” and “receiving” “access information”
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`performed by the source base station (claim 1), the target base station (claim 8), and
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`the mobile device (claim 15). Additionally, claims 24 and 25 are directed at “mobile
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`terminals,” or mobile devices, capable of performing the claimed handover. The
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`inventions claimed in the ’373 Patent are directed to an improved handover of a mobile
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`device from one base station to another by using the claimed “dedicated preamble.” A
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`_____________________________________
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`(“Samsung”), 1:15cv545; D.I. 196 in Evolved v. ZTE (USA) Corp. (“ZTE”), 1:15cv546; and D.I. 197 in
`Evolved v. Microsoft Corp. (“Microsoft”), 1:15cv547.
`2 Evolved has asserted claims 15 through 21 and 23 through 25 (covering the operation of mobile
`devices) against all defendants, as well as claims 1 through 10, 12, and 13 (covering the operation of
`base stations) against the Samsung defendants.
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`3
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`preamble is an identifier used, for example, to synchronize and identify a mobile device
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`to a base station. D.I. 245, Ex. 3, ’373 Patent at 2, 6. In prior art communications
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`systems, preambles had been randomly selected. The claims of the ’373 Patent
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`address the problem of disruption of the handover between base stations that results
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`when more than one mobile device selects a preamble at the same time. Id. at 6. The
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`’373 Patent solved this problem by communicating a “previously defined signature”—
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`i.e., the claimed “dedicated preamble”—prior to the handover procedure. Id.
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`The ’236 Patent relates to the improved random-access procedure incorporated
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`into the LTE telecommunications standard. The random-access procedure is used to
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`establish communications between a mobile device and a base station and consist of
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`four message exchanges between the base station and mobile device. The asserted
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`claims of the ’236 Patent ensure that the right data is transmitted in the third of those
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`four messages.
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`B.
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`Parties’ Contentions
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`1.
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`Claim Construction
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`As a threshold matter, the defendants’ motion is based in part on arguments
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`involving the claim language “preamble,” “dedicated preamble” and “preamble index” in
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`the ’373 Patent and interpretation of the word “if” in the ’236 Patent. Those arguments
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`are also addressed as an “additional matter” in the Proposed Pretrial Order (D.I. 448) in
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`this case. In the parties’ Proposed Pretrial Order, Apple contends that there are two
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`claim construction issues that will require resolution before the jury hears the case.
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`Apple states that there is a fundamental dispute regarding the meaning of “dedicated
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`preamble” in the asserted claims of the ’373 patent—namely, whether the scope of the
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`4
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`term excludes a preamble index. It also contends that there is a fundamental dispute
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`regarding the meaning of “if” in certain limitations of the asserted claims of the ’236
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`patent based on Evolved’s representations about the scope of the claims in inter partes
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`review (“IPR”) proceedings. It contends that both issues arose after the Court issued its
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`claim construction order.
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`Evolved asserts there is no such dispute on claim construction and further
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`contends that Apple has waived the issue by not raising it earlier. Evolved contends
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`that the defendants’ experts understand the full scope of these terms and applied the
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`full breadth of that understanding in their Invalidity Reports. It argues that the
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`defendants should be precluded from arguing a more limited construction than that
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`considered by the experts.
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`2.
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`Infringement
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`With respect to the ’373 patent, the defendants argue that Evolved amended the
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`asserted claims of the ’373 patent during prosecution to require transmitting “a
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`dedicated preamble used only for a specific terminal” from a base station to a terminal
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`in order to overcome the prior art. They contend that, in a related but unasserted
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`patent, United States Patent No. 8,219,097 (“the ’097 Patent”), Evolved separately
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`claimed transmitting “an index of the dedicated preamble.” They argue that construing
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`“dedicated preamble” in the ’373 patent to include a preamble index would render the
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`limitation “an index of the dedicated preamble” in the ’097 Patent redundant. They
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`contend that because the ’373 and ’097 Patents share a common specification and use
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`the same claim language in near-identical fashion, the term “dedicated preamble” must
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`mean the same thing in both. Although the defendants concede that “dedicated
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`5
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`preamble” in the ’373 Patent can cover at least a preamble sequence, they disagree it
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`covers a “preamble index.” Based on these arguments, they contend that “no
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`reasonable jury could find that a “dedicated preamble” is equivalent to a “preamble
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`index.” In making that argument, they assert that no weight can be given to Dr.
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`Cooklev’s analysis.3
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`They also raise arguments concerning whether the accused products meet the
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`“used only for a specific terminal” limitation of the asserted claims of the ’373 Patent and
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`whether prosecution history and/or IPR estoppel applies, showing the patentee
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`narrowed the claims. The defendants also assert that the accused products do not
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`infringe any asserted claim of the ’236 Patent because Evolved disavowed the claim
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`scope in clear and unmistakable statements to the patent office in IPR proceedings.
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`They argue that they cannot infringe any asserted claim of the ’236 patent as a matter
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`of law in light of Evolved’s disclaimer. Further, they argue that Evolved’s doctrine of
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`equivalents theory is untimely and inadequate because its disclosure did not include
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`doctrine of equivalents arguments relating to the “dedicated preamble” limitation.
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`Evolved disputes the defendants’ contentions and asserts there are genuine
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`issues of material fact on infringement. In support of its position, it presents expert
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`testimony, LTE standards, 3GPP protocol specifications, and treatises. D.I. 245.
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`II.
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`FACTS
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`A.
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`Asserted claim 24 of the ’373 patent provides:
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`A mobile terminal for establishing a radio connection to a target base
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`station in a mobile communications system, the mobile terminal comprising:
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`_____________________________________
`3 Dr. Cooklev’s testimony is challenged in a Daubert motion that has been denied. (D.I. 280)
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`6
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`A radio protocol adapted to receive access information from
`a source base station after a handover request is accepted
`by the target base station and to perform a random access
`procedure with the target base station using the received
`access information, such that the access information is
`configured to permit the terminal to access the target base
`station, wherein the access information includes preamble
`information for the random access procedure, wherein the
`preamble information is a dedicated preamble used only for
`a specific terminal, and wherein the dedicated preamble is
`determined by the target base station.
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`(D.I. 227-1, Ex. 2, ’373 Patent at A-0021). During claim construction, Evolved proposed
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`the following construction of that language:
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`hardware and/or software in the mobile terminal adapted to
`receive access information from a source base station after
`a handover request is accepted by the target base station
`and to perform a random access procedure with the target
`base station using the received access information, such
`that the access information is configured to permit the
`terminal to access the target base station, wherein the
`access information includes preamble information for the
`random access procedure, wherein the preamble information
`is a dedicated preamble used only for a specific terminal,
`and wherein the dedicated preamble is determined by the
`target base station”
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`(D.I. 54-1, Claim Construction Chart at 9) (emphasis added). The Court adopted
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`Evolved’s proposal, stating, that the language “wherein the dedicated preamble is
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`determined by the target base station” was not indefinite and was supported by the
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`specification. D.I. 110, Claim Construction Order at 11. The Court stated:
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`The claim provides antecedent basis for "dedicated preamble" and "target
`base station." Id. Elsewhere in the specification, the target base station
`passes information including a preamble to the mobile terminal:
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`[T]he target eNB (14) may transmit a handover confirm
`message to the source eNB (12) (S13). The handover
`confirm message may include information that may be
`necessary in the course of connecting the UE (10) to the
`target cell. Namely, the necessary information may include
`information used in the RACH which is used for performing a
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`7
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`radio access procedure from the UE to the target eNB. For
`example, when the RACH is being used while the UE
`accesses to the target eNB, the UE may utilize a preamble
`which is selected from signatures contained in the UE.
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`('373 patent, 6:32-41) Also, the preamble may be unique to a
`given mobile terminal, because the "target eNB (14) may
`receive the preamble of the UE. Since the target eNB (14)
`already allocates a signature used in the preamble to the UE
`in the use of handover, the UE can be identified by the
`preamble." ('373 patent, 7:30-33)
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`Id. at 11-12.
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`
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`The defendants did not propose the claim construction language that they now
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`seek at the time of claim construction. D.I. 245, Declaration of Ryan M. Schultz, Ex. 1,
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`defendants' Preliminary Identification of Terms Needing Construction and Proposed
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`Construction at 6. They argued that the claim limitations required construction as
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`means-plus-function terms under § 112 ¶ ¶ 6 and 2 and were deficient as a matter of
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`law. They now assert that a preamble and a preamble index are very different things
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`and that a dedicated preamble cannot be stretched so far as to cover a preamble index.
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`They rely on expert testimony for that proposition. Dr. Apostolos Kakaes testified that
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`“[i]n my opinion, the preamble index is not and does not fall under the scope of the
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`preamble.” D.I. 227-6 at A-0462, Ex. 9, Deposition of Apostolos Kakaes (“Kakaes
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`Dep.”) at 298.
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`The record shows Evolved’s expert, Dr. Todor Cooklev examined source code
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`and testified that the code confirms that the ra-PreambleIndex is a dedicated preamble
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`in the context of the ’373 patent. D.I. 227-6 at A-0456, Deposition of Todor Cooklev
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`(“Cooklev Dep.”) at 17-18; see also D.I. 245-6, Ex. 6, Cooklev dep.; D.I. 245-2,
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`Infringement Report of Dr. Todor Cooklev. He disagreed with defendant Samsung’s
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`expert Dr. Villasenor's opinion that “ra-PreambleIndex is not sufficient on its own to
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`8
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`specify or generate a random-access preamble in the accused Samsung mobile
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`products,” stating “[t]he ra-Preamble Index is sufficient to uniquely identify the preamble,
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`sequence—or a preamble sequence.” D.I. 227-6 at A-0457, Cooklev Dep. at 20.
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`Dr. Cooklev further states that based on his analysis of the Qualcomm source
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`code from the accused products, representations made by Qualcomm, and testimony of
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`Qualcomm witnesses, it is his opinion that all Accused Products using a Qualcomm LTE
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`chipset operate according to the LTE Standard and infringe each of the Asserted
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`Patents. D.I. 245-2, Cooklev Report at 81.
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`In addition, Dr. Cooklev essentially testified that Evolved has presented evidence
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`that shows there is at least a disputed issue of fact on whether the patents and the LTE
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`standards distinguish transmissions from retransmissions. Dr. Cooklev essentially
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`testified that during the claimed “transmitting” steps, the accused products transmit
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`message 3 (“Msg3”) data “only if” an uplink grant is received on the random-access
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`response message. He stated:
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`The prior art, however, would have transmitted this erroneous response.
`’236 Patent at 12:13-24. The ’236 Patent recognizes that “if the data
`stored in the Msg3 buffer is transmitted in correspondence with the
`reception of all UL Grant signals, problems may occur.” ’236 patent, 4:26-
`32.
`To solve this problem, the ’236 Patent proposed the novel resolution of
`two questions: 1) is there data stored in the Msg3 buffer when receiving
`the UL grant signal? And 2) was the UL grant received in a RAR
`message? If there is data stored in the Msg3 buffer and the UL grant was
`received in a RAR message, only then is the data stored in the Msg3
`buffer transmitted. Otherwise, the UE employs the multiplexing and
`assembly entity to generate new data in response to the UL grant.
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`D.I. 245-2, Dr. Cooklev Infringement Report at 58.
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`Evolved’s expert Dr. Harry Bims testified that “when [the ’373 patent claim 15]
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`uses the word ‘preamble,’ a person of ordinary skill understands what the word
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`9
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`‘preamble’ is. A preamble is a preamble sequence.” D.I. 273-1, Deposition of Dr. Harry
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`Bims at 110. He testified that his understanding of what one of skill in the art would
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`understand the term "dedicated preamble" to mean in the context of the '373 patent is a
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`preamble sequence or something that is configured to permit the terminal to access the
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`target base station. Id. at 112.
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`Dr. Kakaes testified he thinks Dr. Cooklev is wrong, explaining that “in a broader
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`sense of the doctrine of equivalents, besides the function way result test, which we
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`could discuss in more detail, the differences between the preamble index on the one
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`hand and the preamble on the other hand are very substantial and far from being
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`insubstantial.” D.I. 273-1, Kakaes Dep. at 305.
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`The record shows that the dedicated preamble language was added to the
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`claims to clarify the subject matter and not to narrow the claim. D.I. 227 at A-0190,
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`Prosecution History. None of the prior art cited by the examiner dealt with a dedicated
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`preamble sequence or dedicated preamble index. Id. at A-0135-0138; A-0187-0188; A-
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`0203; A-0228.
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`III.
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`Law
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`“The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 475, 586 n. 10 (1986). A party asserting that a fact
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`cannot be—or, alternatively, is—genuinely disputed must be supported either by citing
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`to “particular parts of materials in the record, including depositions, documents,
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`10
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials,” or by “showing that the materials cited do not establish the absence or
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact.” Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has
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`carried its burden, the nonmovant must then “come forward with specific facts showing
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`that there is a genuine issue for trial.” Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). A factual dispute is genuine where “the evidence is such that a
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`reasonable jury could return a verdict for the nonmoving party.” A factual dispute is
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`genuine where “the evidence is such that a reasonable jury could return a verdict for the
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`nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
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`The court will “draw all reasonable inferences in favor of the nonmoving party,
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`and it may not make credibility determinations or weigh the evidence.” Reeves v.
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`Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). To defeat a motion for
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`summary judgment, the non-moving party must “do more than simply show that there is
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`some metaphysical doubt as to the material facts.” Matsushita, 415 U.S. at 586-87; see
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`also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party
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`opposing summary judgment “must present more than just bare assertions, conclusory
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`allegations or suspicions to show the existence of a genuine issue”) (internal quotation
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`marks omitted).
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`A patent is infringed when a person “without authority makes, uses, offers to sell,
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`or sells any patented invention, within the United States . . . during the term of the
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`patent[.]” 35 U.S.C. § 271(a). A two-step analysis is employed in making an
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`11
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`Case 1:15-cv-00547-JFB-SRF Document 407 Filed 03/07/19 Page 12 of 15 PageID #: 21572
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`infringement determination. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
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`(Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). First, the court must construe the asserted
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`claims to ascertain their meaning and scope, a question of law. Id. at 976-77; see also
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`Teva Pharms. USA, Inc. v. Sandoz, Inc., — U.S. —-, 135 S. Ct. 831, 837 (2015). The
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`trier of fact must then compare the properly construed claims with the accused infringing
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`product. Markman, 52 F.3d at 976. This second step is a question of fact. Spectrum
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`Pharm., Inc. v. Sandoz Inc., 802 F.3d 1326, 1337 (Fed. Cir. 2015).
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`The patent owner has the burden of proving infringement by a preponderance of
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`the evidence. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 557
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`(2014). To prevail, the plaintiff must establish by a preponderance of the evidence that
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`the accused device infringes one or more claims of the patent either literally or under
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`the doctrine of equivalents. Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241,
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`1247 (Fed. Cir. 2000); see also Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys.,
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`Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001).
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`“To prove literal infringement, the patentee must show that the accused device
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`contains each and every limitation of the asserted claims.” Ericsson, Inc. v. D-Link Sys.,
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`Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014) (emphasis in original). “If any claim limitation
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`is absent from the accused device, there is no literal infringement as a matter of law.”
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`Bayer AG, 212 F.3d at 1247.
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`“A device that does not literally infringe a [patent] claim may nonetheless infringe
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`under the doctrine of equivalents if every [limitation] in the claim is literally or
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`equivalently present in [elements of] the accused device.” Sage Prods., Inc. v. Devon
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`Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997) (citation omitted). A claim element is
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`equivalently present in an accused device if only “insubstantial differences” distinguish
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`the missing claim element from the corresponding aspects of the accused device. Id.
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`(noting that the doctrine of equivalents prevents an accused infringer from avoiding
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`infringement by changing only minor or insubstantial details of a claimed invention while
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`retaining their essential functionality). “Although equivalence is a factual matter
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`normally reserved for a fact finder, the trial court should grant summary judgment in any
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`case where no reasonable fact finder could find equivalence.” Id.
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`“[R]elevant expert testimony regarding matters beyond the comprehension of
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`laypersons is sometimes essential” to the infringement inquiry. Centricut, LLC v. Esab
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`Grp., Inc., 390 F.3d 1361, 1369-70 (Fed. Cir. 2004) (holding that a patentee could not
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`withstand summary judgment on the issue of literal infringement in a case involving
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`complex technology in the absence of expert testimony). “‘[T]ypically’ expert testimony
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`will be necessary in cases involving complex technology.” Id. at 1370. In a case
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`involving complex technology, where the accused infringer offers expert testimony
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`negating infringement, the patentee cannot satisfy its burden of proof by relying only on
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`testimony from those who are admittedly not expert in the field. Id. “It is not for the
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`court to determine the credibility and veracity of the witnesses and their studies, as
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`these questions are properly reserved for the jury.” Pordy v. Land O’Lakes, Inc., 97 F.
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`App’x 921, 927 (Fed. Cir. 2004).
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`Prosecution history estoppel limits the doctrine of equivalents “when a patent
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`claim is narrowed during prosecution.” Voda v. Cordis Corp., 536 F.3d 1311, 1324
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`(Fed. Cir. 2008). A narrowing amendment in prosecution “may be presumed to be a
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`general disclaimer of the territory between the original claim and the amended claim,”
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`Case 1:15-cv-00547-JFB-SRF Document 407 Filed 03/07/19 Page 14 of 15 PageID #: 21574
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`but the presumption can be overcome by showing, among other things, “that the
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`rationale underlying the amendment bore ‘no more than a tangential relation to the
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`equivalent in question.’” Id. at 1325. Estoppel attaches to findings in an IPR only after
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`all appeals are exhausted. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 646
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`(Fed. Cir. 2011).
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`IV.
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`DISCUSSION
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`As a threshold matter, to the extent the defendants seek claim construction, the
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`court will deny that request. The Court finds that Magistrate Judge Fallon adequately
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`identified and construed the patent terms and limitations. Further, the defendants have
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`not shown that their proposed new or additional claim construction issues arose only
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`after the claim construction in this case. The record shows that the proposed
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`“dedicated preamble” amendment during patent prosecution only sought to “clarify
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`subject matter” of the claims, not to narrow them. A ruling in defendant’s favor would
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`require the court to adopt the defendant’s new claim constructions. The Court declines
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`to do so at this late stage of the litigation.
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`The record shows that there are genuine issues of material fact on whether the
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`accused products infringe the asserted claims of the patents at issue. There is
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`competing expert testimony with respect to the dedicated preamble issue. For that
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`reason alone, the defendants’ motion must be denied, and the Court need not address
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`the defendants’ other arguments.
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`On review of the parties’ voluminous submissions, the Court finds there are
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`numerous matters that will require assessments of credibility. At a minimum, a genuine
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`issue of material fact remains for trial. The parties each present competing expert
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`testimony on infringement. The Court is unable to resolve these conflicts in the
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`testimony in this context. Infringement is a matter for the jury to decide. It is not the
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`role of this Court to weigh the evidence prior to trial.
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`The Court also finds that Evolved’s doctrine of equivalents theory is not barred as
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`a matter of law for failure to disclose. The record shows the defendants were
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`adequately put on notice of the theory.
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`Viewing the facts in the light most favorable to Evolved, the Court finds that the
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`defendants have not shown that there is no genuine issue as to whether the accused
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`products are covered by the claims (as construed by the Court) so as to be entitled to a
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`declaratory judgment of non-infringement as a matter of law.
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`IT IS ORDERED:
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`1.
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`Defendants’ motions for a summary judgment of non-infringement (D.I.
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`193 in 1:15cv542; D.I. 207 in 1:15cv543; D.I. 182 in 1:15cv544; D.I. 223 in 1:15cv545;
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`D.I. in 1:15cv546; D.I. 197 in 1:15cv547) are denied.
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`DATED this 7th day of March 2019.
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`BY THE COURT:
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`s/ Joseph F. Bataillon
`Senior United States District Judge
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