`
`
`
`EXHIBIT 2006
`EXHIBIT 2006
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 1 of 19 PageID #: 5734
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`ERICSSON INC., et al.,
`
`
`Plaintiffs,
`
`
`
`
`Case No. 6:10-CV-473-LED
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`________________________________________
`
`
`
`v.
`
`D-LINK SYSTEMS, INC., et al.,
`
`Defendants
`
`
`and
`
`
`INTEL CORPORATION,
`
`Intervenor
`
`INTEL CORPORATION’S COMPLAINT IN INTERVENTION
`
`
`
`
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 2 of 19 PageID #: 5735
`
`
`
`On May 4, 2012, the Court partially granted and partially denied Intel Corporation’s
`
`Partially Unopposed Motion to Intervene. In partially granting and partially denying Intel’s
`
`motion, the Court stated:
`
`The Court, having considered Intel Corporation’s Partially Opposed Motion to
`Intervene, which motion is partially opposed by Ericsson, finds the Motion should
`be GRANTED except as to any products sold to any non-Defendant. IT IS
`THEREFORE ORDERED that Intel’s Motion is hereby granted in part.
`
`In accordance with and subject to that Order, Intel Corporation files its Complaint in
`
`Intervention.
`
`
`
`COMPLAINT
`
`1.
`
`Intel Corporation (“Intel”) for its Complaint in Intervention against Ericsson Inc.
`
`and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”), hereby demands a jury trial and
`
`alleges as follows:
`
`NATURE OF THE ACTION
`
`2.
`
`This is an action for declaratory judgment of non-infringement and invalidity of
`
`seven (7) United States Patents pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02,
`
`and the Patent Laws of the United States, 35 U.S.C. § 1 et seq., and for such other relief as the
`
`Court deems just and proper.
`
`3.
`
`Intel further brings this action for breach of Ericsson’s contractual obligations and
`
`other commitments to the Institute of Electrical and Electronics Engineers Standards Association
`
`(“IEEE”) and to Intel and other parties in relation to the 802.11 wireless standards. Ericsson has
`
`violated its promises and obligations by, without limitation, failing to negotiate with or license
`
`entities under the patents Ericsson claims are “essential” to at least 802.11a, 802.11g, and
`
`802.11n on fair, reasonable, and non-discriminatory terms.
`
`
`
`1
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 3 of 19 PageID #: 5736
`
`4.
`
`Intel is a Delaware Corporation with its worldwide headquarters in Santa Clara,
`
`PARTIES
`
`California.
`
`5.
`
`Upon information and belief, Plaintiff and Defendant-in-Intervention Ericsson
`
`Inc. is a Delaware corporation with its principal place of business at 6300 Legacy Drive, Plano,
`
`Texas 75024.
`
`6.
`
`Upon information and belief, Plaintiff and Defendant-in-Intervention
`
`Telefonaktiebolaget LM Ericsson is a corporation organized under the laws of Sweden with its
`
`principal place of business at Torshamnsgatan 23, Kista, 164 83 Stockholm, Sweden.
`
`JURISDICTION AND VENUE
`
`7.
`
`This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et
`
`seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201(a) and 2202. This Court has subject
`
`matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
`
`8.
`
`This Court has supplemental jurisdiction over Intel’s state-law claims under 28
`
`U.S.C. § 1367.
`
`9.
`
`This Court has jurisdiction over Ericsson by virtue of, inter alia, its filing of the
`
`Complaint in this action.
`
`10.
`
`To the extent that venue over Ericsson’s complaint is found to be proper, venue in
`
`this judicial district over Intel’s Complaint in Intervention is proper pursuant to 28 U.S.C.
`
`§§ 1391(b) and (c), although venue would be more convenient in another forum.
`
`BACKGROUND AND INTEL’S INTEREST IN THIS LAWSUIT
`
`11.
`
`On September 14, 2010, Ericsson filed a complaint against, inter alia, Acer, Inc.,
`
`Acer America Corporation (collectively, “Acer”) and Gateway, Inc. (“Gateway”) for
`
`infringement of U.S. Patent Nos. 5,790,516 (“the ’516 patent”), 5,987,019 (“the ’019 patent”),
`
`
`
`2
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 4 of 19 PageID #: 5737
`
`6,466,568 (“the ’568 patent”), 6,330,435 (“the ’435 patent”), 6,424,625 (“the ’625 patent”),
`
`6,772,215 (“the ’215 patent”), and 6,519,223 (“the ’223 patent”) (collectively referred to herein
`
`as the “Patents”).
`
`12.
`
`On June 8, 2011, Ericsson filed an Amended Complaint against, inter alia, Acer
`
`and Gateway, as well as Dell, Inc. (“Dell”) and Toshiba Corporation, Toshiba America, Inc.,
`
`Toshiba America Information Systems, Inc., and Toshiba America Consumer Products, LLC
`
`(collectively, “Toshiba”) for infringement of the Patents. Acer, Gateway, Dell, and Toshiba are
`
`collectively referred to herein as the Customer Defendants.
`
`13.
`
`In this action, Ericsson asserts the Patents against products containing wireless
`
`functionality relating to certain standards promulgated by the IEEE referred to as 802.11.
`
`Ericsson’s infringement contentions and related discovery further identify particular Wi-Fi
`
`components that Intel supplies to the Customer Defendants as providing 802.11 functionality in
`
`the accused products. On information and belief, Ericsson has thus specifically identified Intel
`
`802.11 components as those relevant to their accusations against the Customer Defendants.
`
`14.
`
`Intel has agreed to requests from the Customer Defendants to defend and partially
`
`indemnify them in connection with Ericsson’s claims directed at Intel’s 802.11 products. As a
`
`result, Intel has a direct and substantial interest in the outcome of this litigation.
`
`15.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, either directly or indirectly, any valid or enforceable claim of any of the
`
`Patents, either literally or under the doctrine of equivalents.
`
`16.
`
`A substantial controversy exists between Intel and Ericsson that is of sufficient
`
`immediacy and reality to warrant declaratory relief. By intervening in this action, Intel seeks the
`
`
`
`3
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 5 of 19 PageID #: 5738
`
`Court’s assistance and declaration concerning these matters, which are subjects of disagreement
`
`among it and Ericsson.
`
`
`
` COUNT 1
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 5,790,516
`
`17.
`
`18.
`
`Intel incorporates by reference the allegations of paragraphs 1-16 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’516 patent.
`
`19.
`
`Ericsson’s claims with regard to the ’516 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`20.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`21.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’516 patent.
`
`COUNT 2
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 5,790,516
`
`Intel incorporates by reference the allegations of paragraphs 1-21 herein.
`
`The ’516 patent is invalid for failure to meet the conditions of patentability and/or
`
`22.
`
`23.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`24.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`
`
`4
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 6 of 19 PageID #: 5739
`
`25.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’516 patent.
`
`COUNT 3
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 5,987,019
`
`26.
`
`27.
`
`Intel incorporates by reference the allegations of paragraphs 1-25 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’019 patent.
`
`28.
`
`Ericsson’s claims with regard to the ’019 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`29.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`30.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’019 patent.
`
`COUNT 4
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 5,987,019
`
`Intel incorporates by reference the allegations of paragraphs 1-30 herein.
`
`The ’019 patent is invalid for failure to meet the conditions of patentability and/or
`
`31.
`
`32.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`33.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`34.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’019 patent.
`
`
`
`5
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 7 of 19 PageID #: 5740
`
`COUNT 5
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 6,330,435
`
`35.
`
`36.
`
`Intel incorporates by reference the allegations of paragraphs 1-34 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’435 patent.
`
`37.
`
`Ericsson’s claims with regard to the ’435 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`38.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`39.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’435 patent.
`
`COUNT 6
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 6,330,435
`
`Intel incorporates by reference the allegations of paragraphs 1-39 herein.
`
`The ’435 patent is invalid for failure to meet the conditions of patentability and/or
`
`40.
`
`41.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`42.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`43.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’435 patent.
`
`
`
`6
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 8 of 19 PageID #: 5741
`
`COUNT 7
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 6,424,625
`
`44.
`
`45.
`
`Intel incorporates by reference the allegations of paragraphs 1-43 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’625 patent.
`
`46.
`
`Ericsson’s claims with regard to the ’625 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`47.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`48.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’625 patent.
`
`COUNT 8
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 6,424,625
`
`Intel incorporates by reference the allegations of paragraphs 1-48 herein.
`
`The ’625 patent is invalid for failure to meet the conditions of patentability and/or
`
`49.
`
`50.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`51.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`52.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’625 patent.
`
`
`
`7
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 9 of 19 PageID #: 5742
`
`COUNT 9
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 6,466,568
`
`53.
`
`54.
`
`Intel incorporates by reference the allegations of paragraphs 1-52 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’568 patent.
`
`55.
`
`Ericsson’s claims with regard to the ’568 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`56.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`57.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’568 patent.
`
`COUNT 10
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 6,466,568
`
`Intel incorporates by reference the allegations of paragraphs 1-57 herein.
`
`The ’568 patent is invalid for failure to meet the conditions of patentability and/or
`
`58.
`
`59.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`60.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`61.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’568 patent.
`
`
`
`8
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 10 of 19 PageID #: 5743
`
`COUNT 11
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 6,519,223
`
`62.
`
`63.
`
`Intel incorporates by reference the allegations of paragraphs 1-61 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’223 patent.
`
`64.
`
`Ericsson’s claims with regard to the ’223 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`65.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`66.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’223 patent.
`
`COUNT 12
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 6,519,223
`
`Intel incorporates by reference the allegations of paragraphs 1-66 herein.
`
`The ’223 patent is invalid for failure to meet the conditions of patentability and/or
`
`67.
`
`68.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`69.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`70.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’223 patent.
`
`
`
`9
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 11 of 19 PageID #: 5744
`
`COUNT 13
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING
`U.S. PATENT NO. 6,772,215
`
`71.
`
`72.
`
`Intel incorporates by reference the allegations of paragraphs 1-70 herein.
`
`Subject to the Court’s May 4, 2012 Order as noted above, Intel has not infringed
`
`and does not infringe, directly or indirectly, any valid and enforceable claim of the ’215 patent.
`
`73.
`
`Ericsson’s claims with regard to the ’215 patent are barred in whole or in part by
`
`the doctrines of waiver, laches, license, and/or estoppel, including prosecution history estoppel.
`
`74.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`75.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’215 patent.
`
`COUNT 14
`DECLARATORY JUDGMENT OF INVALIDITY REGARDING
`U.S. PATENT NO. 6,772,215
`
`Intel incorporates by reference the allegations of paragraphs 1-75 herein.
`
`The ’215 patent is invalid for failure to meet the conditions of patentability and/or
`
`76.
`
`77.
`
`otherwise comply with one or more of 35 U.S.C. §§ 101 et seq., e.g., 102, 103, 112, and 132.
`
`78.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`79.
`
`A judicial declaration concerning these matters is necessary and appropriate so
`
`that Intel can ascertain its rights regarding the ’215 patent.
`
`COUNT 15
`
`BREACH OF CONTRACT
`
`10
`
`
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 12 of 19 PageID #: 5745
`
`80.
`
`81.
`
`Intel incorporates by reference the allegations of paragraphs 1-79 herein.
`
`The IEEE is a professional association and leading developer of technical
`
`standards. IEEE members include engineers, scientists, and allied professionals whose technical
`
`interests relate to electrical and computer sciences, engineering and related disciplines. Members
`
`may participate in the standards-setting process in working groups and/or subgroups called task
`
`groups.
`
`82.
`
`To protect against unscrupulous conduct by any member who seeks to benefit
`
`unfairly from, or to manipulate to its advantage, the IEEE’s standard-setting process, and to
`
`enable the IEEE and its members to develop standards free from potentially blocking patents, the
`
`IEEE instituted policies and rules regarding the disclosure and licensing of patents.
`
`83.
`
`The IEEE’s rules and policies required fairness and candor with respect to
`
`intellectual property. By way of example only, the IEEE requires members to submit letters of
`
`assurance including either a general disclaimer to the effect that the patentee will not enforce any
`
`of its present or future patents whose use would be required to implement the proposed IEEE
`
`standard against any person or entity using the patents incident to practice of the standard or a
`
`statement that a license will be made available to all applicants without compensation or under
`
`reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair
`
`discrimination. The IEEE’s Standards Board Bylaws stated at relevant times, for instance, that
`
`“IEEE standards may include the known use of patent(s), including patent applications, provided
`
`the IEEE receives assurance from the patent holder or applicant with respect to patents essential
`
`for compliance with both mandatory and optional portions of the standard. This assurance shall
`
`be provided without coercion and prior to approval of the standard (or reaffirmation when a
`
`patent becomes known after initial approval of the standard).” The IEEE Bylaws further state
`
`
`
`11
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 13 of 19 PageID #: 5746
`
`that the assurance “shall be a letter that is in the form of either a) A general disclaimer to the
`
`effect that the patentee will not enforce any of its present or future patent(s) whose use would be
`
`required to implement the proposed IEEE standard against any person or entity using the
`
`patent(s) to comply with the standard or b) A statement that a license will be made available
`
`without compensation or under reasonable rates, with reasonable terms and conditions that are
`
`demonstrably free of any unfair discrimination.”
`
`84.
`
`The IEEE formed the 802.11 working group in 1990. The IEEE 802.11 standard
`
`is titled “Wireless LAN Media Access Control (MAC) and Physical Layer (PHY)
`
`Specifications” and concerns wireless local area networking (“wireless LAN”).
`
`85.
`
`In 1997, the IEEE formed a task group related to 802.11a. In subsequent years,
`
`the IEEE formed additional task groups for 802.11, including 802.11g, and also for 802.11n.
`
`86.
`
`Intel is a member of the IEEE and its representatives have participated and
`
`attended IEEE task group meetings relating to development of the IEEE 802.11 standards.
`
`87.
`
`Intel has sold or sells Wi-Fi components that operate in accordance with various
`
`of the 802.11 standards, including aspects of 802.11a, 802.11g, and 802.11n. Intel’s customers,
`
`such as the Customer Defendants, purchase these Wi-Fi components and incorporate them into
`
`other devices such as laptop computers, which Intel’s customers sell to end-users. Intel’s
`
`customers of Wi-Fi components include members and beneficiaries of the IEEE and participants
`
`in the development of the 802.11 standards.
`
`88.
`
`Ericsson is an alleged member of the IEEE and claims that it participated in the
`
`standards setting process for 802.11. As a result of its alleged membership, Ericsson agreed,
`
`both explicitly and implicitly, that it would abide by the rules and policies of the IEEE.
`
`
`
`12
`
`

`

`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 14 of 19 PageID #: 5747
`
`89.
`
`On or about January 29, 2003, Ericsson submitted a letter of assurance to the
`
`IEEE relating to 802.11. In this document titled “Letter of Assurance for Essential Patents,”
`
`Ericsson identified the “IEEE Standard or Proposed IEEE Standard” as “802.11a, 802.11b,
`
`802.11e, 802.11f, 802.11g, 802.11h 802.11i.” Ericsson further stated that it “was prepared to
`
`grant a license to an unrestricted number of applicants on a worldwide, non-discriminatory basis
`
`and on reasonable terms and conditions to comply with the [Proposed] IEEE standard.” Ericsson
`
`also attached a document to its letter of assurance titled “Free form LoA Ericsson IP Statement
`
`for IEEE 802.11a, . . .”, in which Ericsson committed to licensing any patents it contends are
`
`required to operate in accordance with the standards on “fair, reasonable, and non-discriminatory
`
`terms.”
`
`90.
`
`On or about April 18, 2011, Ericsson submitted another letter of assurance to the
`
`IEEE for 802.11n. In that letter of assurance, Ericsson stated that it “may own, control, or have
`
`the ability to license Patent Claims that might be or become Essential Patent Claims.” The letter
`
`further states, “The Submitter [Ericsson] will grant a license under reasonable rates to an
`
`unrestricted number of applicants on a worldwide basis with reasonable terms and conditions
`
`that are demonstrably free of unfair discrimination” and that “users and implementers of the
`
`[Proposed] IEEE Standard identified in part C above are relying or will rely upon and may seek
`
`enforcement of the terms of this LOA.”
`
`91.
`
`For consideration, including IEEE membership and participation, Ericsson
`
`entered into an express and/or implied contract with the IEEE’s members, or alternatively with
`
`the IEEE, to which IEEE members and others are third party beneficiaries, in which Ericsson
`
`agreed, among other things, to abide by the IEEE’s rules and policies. The IEEE’s rules and
`
`policies, whether formal or informal, including all stipulations, requirements and representations
`
`
`
`13
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`

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`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 15 of 19 PageID #: 5748
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`in any form, constitute a contract between Ericsson and the IEEE’s members, or alternatively
`
`between Ericsson and the IEEE, to which the IEEE’s members and others are third-party
`
`beneficiaries.
`
`92.
`
`In accordance with the foregoing, the IEEE’s rules and policies require its
`
`members to submit letters of assurance including a general disclaimer to the effect that the patent
`
`holder will not enforce any of its present or future patents whose use would be required to
`
`implement the proposed IEEE standard against any person or entity using the patents to make,
`
`use, sell, import, or offer for sale in the U.S. any product that operates in accordance with the
`
`standard, or to provide statements that a license will be offered and made available to all
`
`applicants without compensation or under reasonable rates, with reasonable terms and conditions
`
`that are demonstrably free of any unfair discrimination.
`
`93.
`
`Ericsson’s conduct including, without limitation, its letters of assurance offering
`
`licenses on fair, reasonable, and non-discriminatory terms, created express and/or implied
`
`contracts with the IEEE and its members, or alternatively between Ericsson and the IEEE, to
`
`which IEEE members and others are third-party beneficiaries.
`
`94.
`
`Ericsson breached its contractual obligations, including by, among other things,
`
`failing to offer licenses for the Patents on fair, reasonable and non-discriminatory terms, and by
`
`seeking to enjoin Intel’s customers from making and selling products that include Intel
`
`components that operate in accordance with at least the 802.11a, 802.11g, and 802.11n
`
`standards.
`
`95.
`
`Intel’s customers have sought recovery and indemnification from Intel. Intel has
`
`incurred damages, and will be further damaged in the future due to Ericsson’s breach of its
`
`contractual obligations.
`
`
`
`14
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`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 16 of 19 PageID #: 5749
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`COUNT 16
`
`PROMISSORY ESTOPPEL
`
`96.
`
`97.
`
`Intel incorporates by reference the allegations of paragraphs 1-95 herein.
`
`Ericsson made representations and engaged in other conduct, including Ericsson’s
`
`submission of letters of assurance to the IEEE that obligated Ericsson to license any patents
`
`Ericsson may own that Ericsson alleges are required to operate in accordance with the accused
`
`802.11a, 802.11g, and 802.11n standards on terms that are fair, reasonable, and non-
`
`discriminatory.
`
`98.
`
`Ericsson’s conduct constituted promises to the IEEE, its members, such as Intel,
`
`and Intel’s customers. By making such promises, Ericsson knew or reasonably should have
`
`known they would be relied upon.
`
`99.
`
`The IEEE and its members, including Intel, reasonably relied upon Ericsson’s
`
`promises. In so relying, the IEEE and its members, including Intel invested substantial resources
`
`developing and marketing Wi-Fi products that operate in accordance with the accused 802.11
`
`standards.
`
`100.
`
`Intel has been damaged as a result of its reasonable reliance as provided herein
`
`such that injustice can only be avoided by enforcement of Ericsson’s promises.
`
`COUNT 17
`
`Unclean Hands
`
`101.
`
`Intel incorporates by reference the allegations of paragraphs 1-100 herein.
`
`102. Ericsson’s wrongful conduct as alleged herein constitutes unclean hands and
`
`renders the Patents unenforceable.
`
`
`
`
`
`15
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`

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`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 17 of 19 PageID #: 5750
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`REQUEST FOR RELIEF
`
`Therefore, Intel requests judgment as follows:
`
`1.
`
`2.
`
`For a declaration that the claims of the Patents are invalid;
`
`For a declaration that neither Intel, nor any of its products infringe (directly,
`
`indirectly, literally, and/or under the doctrine of equivalents) any valid or enforceable claim of
`
`the Patents, and subject to the Court’s May 4, 2012 Order as noted above;
`
`3.
`
`For a declaration that no valid or enforceable claim of the Patents is infringed
`
`(directly, indirectly, literally, and/or under the doctrine of equivalents) by any of the Customer
`
`Defendants in connection with Intel products;
`
`4.
`
`For a declaration that Ericsson has no standing for, and is not entitled to,
`
`injunctive relief for any alleged infringement of the Patents;
`
`5.
`
`6.
`
`For a declaration that the Patents are unenforceable;
`
`Award Intel damages in an amount to be proven at trial on account of Ericsson’s
`
`breach of contract, including without limitation expectancy damages and restitution;
`
`7.
`
`A judgment requiring Ericsson’s specific performance under its contract with the
`
`IEEE and/or IEEE members and third parties to grant licenses to the Patents, to the extent such
`
`licenses are required, on fair, reasonable and non-discriminatory terms and conditions;
`
`8.
`
`Award and declaration that Ericsson grant Intel and Intel’s customers of Wi-Fi
`
`components a royalty-free license to make, use, sell, offer for sale, and import within the U.S.
`
`any Wi-Fi products that are covered by any claim of the Patents to the extent such a license is
`
`required;
`
`9.
`
`An order declaring that Intel is a prevailing party and that this is an exceptional
`
`case, awarding Intel its costs, expenses, disbursements, and reasonable attorney fees under 35
`
`U.S.C. § 285 and all other applicable statutes, rules, and common law;
`
`
`
`16
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`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 18 of 19 PageID #: 5751
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`10.
`
`Award Intel its costs and expenses of litigation, including attorneys’ fees and
`
`11.
`
`Such other and further equitable or legal relief as the Court deems just and proper.
`
`DEMAND FOR A JURY TRIAL
`
`Intel hereby demands a jury trial as to all issues triable to a jury.
`
`costs.
`
`
`
`
`
`
`
`
`
`Dated: June 22, 2012
`
`
`
`
`
`Respectfully submitted,
`
`By: Robert M. Parker
`
`Robert M. Parker
`Parker Bunt & Ainsworth
`State Bar No. 15498000
`100 E Ferguson, Suite 1114
`Tyler, TX 75702
`Tel:
`903/531-3535
`Fax: 903/533-9687
`Email: rmparker@pbatyler.com
`
`Michael E. Jones
`Potter Minton
`110 N. College
`Tyler, Texas 75702
`Tel:
`903/597-8311
`Fax: 903/593-0846
`Email: mikejones@potterminton.com
`
`ATTORNEYS FOR INTERVENING
`PARTY INTEL CORPORATION
`
`
`
`
`
`
`
`
`
`
`
`17
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`

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`Case 6:10-cv-00473-LED-KFG Document 237 Filed 06/22/12 Page 19 of 19 PageID #: 5752
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`
`CERTIFICATE OF SERVICE
`
`I hereby certify that counsel of record who are deemed to have consented to electronic
`
`
`
`service are being served with a copy of this document on June 22, 2012 via the Court’s CM/ECF
`
`system per Local Rule CV-5(a)(3).
`
`/s/ Robert M. Parker____________
` Robert M. Parker
`
`
`
`
`
`18
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`