Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 1 of 25 PageID #: 13479
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`OPTIS WIRELESS TECH., LLC, ET AL.,
`
`Plaintiffs,
`
`
`
`HUAWEI TECHS. CO. LTD., ET AL.,
`
`Defendants.
`
`
`v.
`
`
`
`
`CIVIL ACTION NO.
`
`2:17-cv-123-JRG-RSP
`
`
`
`JURY TRIAL REQUESTED
`
`
`
`JOINT FINAL PRE-TRIAL ORDER
`
`This cause came before the Court at a pre-trial management conference held on July 27,
`
`
`
`
`
`
`
`2018, pursuant to Local Rule CV-16 and Rule 16 of the Federal Rules of Civil Procedure.
`
`A.
`
`COUNSEL FOR THE PARTIES
`Plaintiffs:
`1.
`
`Kevin L. Burgess - Lead Counsel
`Texas State Bar No. 24006927
`kburgess@McKoolSmith.com
`Steve J. Pollinger
`Texas State Bar No. 24011919
`spollinger@McKoolSmith.com
`Scott L. Cole
`Texas State Bar No. 00790481
`scole@McKoolSmith.com
`Lindsay M. Leavitt
`Texas State Bar No. 24049544
`
`
`
`  
`
`1
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 1
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 2 of 25 PageID #: 13480
`
`lleavitt@McKoolSmith.com
`Kevin P. Hess
`Texas State Bar No. 24087717
`khess@McKoolSmith.com
`Christine M. Woodin
`Texas State Bar No. 24100051
`cwoodin@McKoolSmith.com
`MCKOOL SMITH, P.C.
`300 W. 6th Street Suite 1700
`Austin, TX 78701
`Telephone: (512) 692-8700
`Telecopier: (512) 692-8744
`
`Samuel F. Baxter
`Texas State Bar No. 1938000
`sbaxter@McKoolSmith.com
`Jennifer Truelove
`Texas State Bar No. 24012906
`jtruelove@McKoolSmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, TX 75670
`Telephone: (903) 923-9000
`Telecopier: (903) 923-9099
`
`Theodore Stevenson, III
`Texas State Bar No. 19196650
`Marcus L. Rabinowitz
`Texas State Bar No. 24098293
`mrabinowitz@McKoolSmith.com
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4044
`
`Eric S. Tautfest
`Texas Bar No. 24028534
`etautfest@grayreed.com
`Jared Hoggan
`Texas Bar No. 24065435
`jhoggan@grayreed.com
`David T. DeZern
`Texas Bar No. 24059677
`ddezern@grayreed.com
`M. Jill Bindler
`
`  
`
`2
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 2
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 3 of 25 PageID #: 13481
`
`Texas Bar No. 02319600
`jbindler@grayreed.com
`David Lisch
`Texas Bar No. 24077179
`dlisch@grayreed.com
`GRAY REED & MCGRAW LLP
`1601 Elm Street, Suite 4600
`Dallas, Texas 75201
`Telephone: (214) 954-4135
`Facsimile: (469) 320-6901
`
`2.
`
`Defendants:
`
`Robert T. Haslam (rhaslam@cov.com) - Lead Attorney
`Stanley Young (syoung@cov.com)
`Anupam Sharma (asharma@cov.com)
`Thomas E. Garten (tgarten@cov.com)
`Tess A. Hamilton (tahamilton@cov.com)
`James Hovard (jhovard@cov.com)
`COVINGTON & BURLING LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`Telephone: (650) 632-4700
`Facsimile: (650) 632-4800
`
`Gregory S. Nieberg (gneiberg@cov.com)
`Heng Gong (hgong@cov.com)
`COVINGTON & BURLING LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Telephone: (212) 841-1000
`Facsimile: (212) 841-1010
`
`Paul J. Wilson (pwilson@cov.com)
`Ali Mojibi (amojibi@cov.com)
`Christopher G. Higby (chigby@cov.com)
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`Telephone: (202) 662-6000
`Facsimile: (202) 662-6291
`
`Michael C. Smith (michaelsmith@siebman.com)
`Texas Bar No. 18650410
`SIEBMAN, BURG, PHILLIPS & SMITH, LLP
`3
`
`  
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 3
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 4 of 25 PageID #: 13482
`
`113 East Austin Street
`Marshall, TX 75670
`Telephone: (903) 938-8900
`Facsimile: (972) 767-4620
`
` 
`
`
`
`  
`
`4
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 4
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 5 of 25 PageID #: 13483
`
`B.
`
`STATEMENT OF JURISDICTION
`This Court has exclusive subject matter jurisdiction over this case under 28 U.S.C.
`
`§§ 1331, 1338, and 1367. Jurisdiction is not disputed except to the extent addressed in the briefing
`
`on Huawei’s Motion for Dismissal of Count IX of the Complaint (FRAND) to the Extent It
`
`Relates to Non-U.S. Patents (Dkt. 145, 160, 171, and 189), which is a subject of Dkt. 214.
`
`C.
`
`NATURE OF ACTION
`This is an action for patent infringement and declaratory judgment of no breach of
`
`FRAND. PanOptis asserts that Huawei infringes claims from U.S. Patent Nos. 7,769,238 (“the
`
`’238 patent”), 6,604,216 (“the ’216 patent”), 8,385,284 (“the ’284 patent”), 8,208,569 (“the ’569
`
`patent”), 8,102,833 (“the ’833 patent”), and 8,437,293 (“the ’293 patent”). PanOptis seeks at least
`
`a reasonable royalty for Huawei’s infringement. PanOptis additionally seeks a declaratory
`
`judgment that it has complied with its contractual commitment to the European
`
`Telecommunications Standards Institute (“ETSI”) arising from its licensing declarations to ETSI,
`
`and any applicable laws, during its negotiations with Huawei concerning a worldwide license to
`
`the standard essential patents in the Optis Wireless and Optis Cellular portfolios. (PanOptis’
`
`declaratory judgment claim is the subject of a Report and Recommendation by Magistrate Judge
`
`Payne that Huawei’s motion to dismiss as to non-U.S. patents be granted. Dkt. 214 at 14-16.)
`
`D.
`
`CONTENTIONS OF THE PARTIES
`PanOptis’ Contentions
`1.
`
`Plaintiffs Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, and
`
`PanOptis Patent Management, LLC (collectively, “PanOptis”) own and have the right to enforce
`
`patents in two relevant portfolios, the Optis Wireless portfolio and the Optis Cellular portfolio.
`
`The Optis Wireless portfolio includes patents from Telefonaktiebolaget LM Ericsson
`
`(“Ericsson”) and Panasonic Corporation (“Panasonic”), and the Optis Cellular portfolio includes
`
`  
`
`5
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 5
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 6 of 25 PageID #: 13484
`
`patents from Ericsson and LG Electronics Inc. (“LG”). The relevant portfolios include numerous
`
`patents essential to the 2G, 3G, and 4G telecommunications standards promulgated by ETSI
`
`(“standard essential patents”). Ericsson, Panasonic, LG, and PanOptis have committed to license
`
`the standard essential patents on fair, reasonable, and non-discriminatory (“FRAND”) terms and
`
`conditions, a contractual commitment formed through declarations to ETSI. PanOptis and
`
`Huawei began negotiations over the two relevant portfolios nearly four years ago. Huawei has
`
`acknowledged that it requires a license to PanOptis’ standard essential patents but contends that
`
`the royalty rate offered by PanOptis is too high, such that PanOptis’ offers are in breach of its
`
`contractual FRAND commitment to ETSI. PanOptis contends that it has complied with its
`
`FRAND obligations and has offered Huawei a FRAND license to its standard essential patents.
`
`In this case, PanOptis asserts claims from 6 patents from its portfolios against Huawei.
`
`Specifically, PanOptis contends that Huawei infringes the following asserted claims from the
`
`patents-in-suit:
`
` Claim 1 of the ’238 patent;
`
` Claims 1, 3, 11, 12, 20 of the ’216 patent;
`
` Claims 1, 4, and 11 of the ’284 patent; and
`
` Claims 11, 16, and 17 of the ’569 patent;
`
` Claims 8 and 13 of the ’833 patent;
`
` Claims 14, 20, 21, and 22 of the ’293 patent.
`
`The ’216, ’284, ’569, ’833, and ’293 patents have been declared essential by their owners
`
`to the LTE standard, and PanOptis contends that these patents, and additional patents from its
`
`portfolio, are actually essential to the LTE standard. The ’238 patent has not been declared
`
`essential to any standard. PanOptis seeks at least a reasonable royalty from Huawei for its
`
`infringement of these six patents. PanOptis also contends that Huawei’s infringement in this case
`
`  
`
`6
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 6
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 7 of 25 PageID #: 13485
`
`is willful, warranting enhanced damages under 35 U.S.C. § 284 and attorneys’ fees under 35
`
`U.S.C. § 285. PanOptis also contends that each of Huawei’s asserted defenses and counterclaims
`
`lack merit.
`
`PanOptis further contends that it has complied with its contractual commitments to ETSI.
`
`PanOptis contends that it is entitled to a declaratory judgment that it has complied with its
`
`obligations arising from its licensing declarations to ETSI, ETSI’s IPR Policy, and any
`
`applicable laws during its negotiations with Huawei concerning a worldwide license to the
`
`standard essential patents in the Optis Wireless and Optis Cellular portfolios. PanOptis contends
`
`that its most recent offer to Huawei complies with its obligations to ETSI, and if executed, would
`
`result in a license on FRAND terms and conditions.
`
`PanOptis contends that Huawei should pay reasonable royalty damages to compensate
`
`PanOptis for its infringement, as well as enhanced damages and attorneys’ fees. PanOptis further
`
`contends that it is entitled to declaratory judgment that it has complied with its FRAND
`
`obligations.
`
`2.
`
`Huawei’s Contentions
`
`Huawei denies that its accused products literally infringe any of the asserted claims of
`
`the asserted claims of the patents-in-suit. Huawei further denies that its accused products infringe
`
`any of the asserted claims of the patents-in-suit under the doctrine of equivalents. Finally,
`
`Huawei denies that it has contributorily infringed the patents-in-suit, and Huawei denies that it
`
`has induced infringement of the patents-in-suit. Huawei denies that the patents-in-suit, as well as
`
`additional patents from PanOptis’ portfolio, are essential to the LTE standards.
`
`Huawei disputes and opposes PanOptis’ claims for reasonable royalty damages,
`
`enhanced damages, and attorneys’ fees. PanOptis’ claim for attorneys’ fees pursuant to 35
`
`  
`
`7
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 7
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 8 of 25 PageID #: 13486
`
`U.S.C. § 285 lacks merit. Huawei contends that PanOptis’ purported claims for relief are limited
`
`due to failure to comply with the marking and notice requirements of 35 U.S.C. § 287(a).
`
`Huawei contends that the asserted patents are invalid. Specifically, Huawei contends
`
`that the asserted claims of the patents-in-suit are invalid for being anticipated or obvious in view
`
`of the prior art under 35 U.S.C. §§ 102 and/or 103. Huawei further contends that certain claims
`
`of the ’293 patent are invalid under 35 U.S.C. § 101.
`
`Huawei disputes that PanOptis has complied with its FRAND obligations or that it has
`
`offered Huawei a FRAND license to its declared standard-essential patents. Huawei disputes that
`
`PanOptis has complied with its contractual commitments to ETSI and does not believe that
`
`PanOptis is entitled to a declaratory judgment1 that it has complied with its obligations arising
`
`from its licensing declarations to ETSI, ETSI’s IPR Policy, or any applicable laws during its
`
`negotiations with Huawei concerning a worldwide license under the PanOptis declared standard-
`
`essential patents. Huawei does not agree that PanOptis’ most recent offer to Huawei complies
`
`with PanOptis’ obligations to ETSI, and if executed, would result in a license on FRAND terms
`
`and conditions.
`
`Huawei contends that PanOptis in its complaint alleged that Huawei’s LTE products
`
`infringed U.S. Patent 7,940,851 (the ’851 patent) and alleged that the ’851 patent was declared to
`
`be essential to the LTE Standard. Huawei contends that PanOptis now no longer asserts the ’851
`
`patent in this case.
`
`Huawei Trial Phasing Proposal re Count IX and Related Defenses:
`
`                                                            
`1 Any such declaration, if granted, would cover at most PanOptis’ U.S. declared standards-
`essential patent portfolio. A Report and Recommendation by Magistrate Judge Payne
`recommends that Huawei’s motion to dismiss as to PanOptis’ non-U.S. declared standards-
`essential patents be granted. Dkt. 214 at 14-16.
`
`  
`
`8
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 8
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 9 of 25 PageID #: 13487
`
`Huawei contends that the FRAND compliance issue (Count IX of the Complaint and
`
`related defenses) should be decided by the Court and not the jury, and that such decision should
`
`come after the jury trial. Huawei believes that a separate live evidentiary hearing is not necessary
`
`for the FRAND-related claims and defenses and that the parties should instead submit their cases
`
`via briefing and written evidence and via an oral argument, pursuant to the following schedule:
`
`Event
`
`PanOptis’ Opening
`Papers
`
`Huawei’s Responsive
`Papers
`
`PanOptis’ Rebuttal
`Papers
`
`Deadline
`
`30 days after the last to occur of the conclusion of
`the jury trial
`
`30 days after the deadline for PanOptis’ Opening
`Brief
`
`15 days after the deadline for Huawei’s Responsive
`Brief
`
`Huawei’s Sur-Rebuttal
`Papers
`
`15 days after the deadline for PanOptis’ Rebuttal
`Brief
`
`Oral Argument
`
`To be set by the Court
`
` 
`
`PanOptis has not responded to Huawei’s proposal in this regard. Huawei intends to raise
`
`this issue at the pretrial conference.
`
`E.
`
`STIPULATIONS AND UNCONTESTED FACTS
`
`1. Subject matter jurisdiction is proper in this Court as to PanOptis’ patent claims.
`
`2. The parties do not contest that the Court has personal jurisdiction over the parties for the
`purposes of this litigation.
`
`3. The parties agree that venue is proper for this litigation in the United States District Court for
`the Eastern District of Texas, Marshall Division.
`
`4. PanOptis owns all rights necessary to bring this action for the six patents-in-suit. Trial exhibits
`PX 0001 through PX 0006 are accurate copies of the patents-in-suit.
`
`5. Plaintiff Optis Wireless Technology, LLC (“Optis Wireless”) is a limited liability company
`organized and existing under the laws of the State of Delaware, and maintains its principal
`place of business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
`
`  
`
`9
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 9
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 10 of 25 PageID #:
` 13488
`
`6. Plaintiff Optis Cellular Technology, LLC (“Optis Cellular”) is a limited liability company
`organized and existing under the laws of the State of Delaware, and maintains its principal
`place of business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
`
`7. Plaintiff PanOptis Patent Management, LLC (“PPM”) is a limited liability company organized
`and existing under the laws of the State of Delaware, and maintains its principal place of
`business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
`
`8. Huawei Device USA, Inc. (“Huawei Device”) is a corporation organized under the laws of
`Texas, having its principal place of business at 5700 Tennyson Parkway, Suite 500, Plano,
`Texas 75024.
`
`9. Huawei Device Co. Ltd., now known as Huawei Device (Shenzhen) Co., Ltd. (“Huawei
`Device China”) is a corporation organized under the laws of China, having a principal place of
`business at Bantian, Longgang District, Shenzhen, and People’s Republic of China.
`
`10. The accused products for the asserted claims of the ’216, ’284, ’569, ’833, and ’293 patents
`(“Asserted LTE Patents”) are:
`
`Accused LTE Products
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`  
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 10
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 11 of 25 PageID #:
` 13489
`
`
`
`11.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Accused LTE Products
`
`
`
`
`
`
`
`
`
`
` 
`
`
`
`
`
`12. The accused products for the asserted claim of the ’238 patent are:
`
`
`
`
`
`
`
`
`:
`
`’238 Accused Products
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`  
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 11
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 12 of 25 PageID #:
` 13490
`
`’238 Accused Products
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`  
`
`12
`
`
`
`
`
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 12
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 13 of 25 PageID #:
` 13491
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14. Ericsson, LG, and Panasonic are the predecessors-in-interest to the patents that make up the
`Optis Wireless and Optis Cellular portfolios.
`
`15. PanOptis, and the predecessors-in-interest, have submitted IPR licensing declarations to ETSI
`which stipulate that the patent owner is prepared to grant licenses under its standard essential
`patents consistent with Clause 6.1 of the ETSI’s IPR Policy.
`
`16. PanOptis initiated its licensing efforts with Huawei in April 2014. The parties have been
`unable to agree on what the fair, reasonable and non-discriminatory license terms for PanOptis
`should be.
`
`17. The priority date of the asserted claims of the ’238 patent is April 15, 2002.
`
`18. The priority date of the asserted claims of the ’216 patent is December 1, 1999.
`
`19. The priority date of the asserted claims of the ’284 patent is December 20, 2007.
`
`20. The priority date of the asserted claims of the ’569 patent is June 12, 2003.
`
`21. The priority date of the asserted claims of the ’833 patent is November 13, 2007.
`
`22. The priority date of the asserted claims of the ’293 patent is June 19, 2007.
`
`23. U.S. Provisional Application No. 60/367,032 of Bjontegaard and Lillevold was filed at the
`United States Patent and Trademark Office (“USPTO”) on March 22, 2002.
`13
`
`  
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 13
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 14 of 25 PageID #:
` 13492
`
`24. U.S. Patent No. 7,099,387 to Bjontegaard and Lillevold, entitled “Context-adaptive VLC
`video transform coefficients encoding/decoding methods and apparatuses,” was issued on
`August 29, 2006.
`
`25. U.S. Patent No. 7,099,387 to Bjontegaard and Lillevold claims priority to U.S. Provisional
`Application No. 60/367,032.
`
`26. U.S. Patent No. 6,690,307 to Karczewicz, entitled “Adaptive variable length coding of digital
`video,” was issued on February 10, 2004.
`
`27. U.S. Provisional Application No. 60/341,674 of Srinivasan, Lee, Lin, Hsu, and Holcomb was
`filed at the USPTO on December 17, 2001.
`
`28. U.S. Patent No. 7,263,232 to Srinivasan, entitled “Spatial extrapolation of pixel values in
`intraframe video coding and decoding,” was issued on August 28, 2007.
`
`29. U.S. Patent No. 7,263,232 to Srinivasan claims priority to U.S. Patent Application Serial No.
`10/322,171 and U.S. Provisional Application No. 60/341,674.
`
`30. U.S. Provisional Application No. 60/106,802 of Balachandran, Ejzak, and Nanda was filed at
`the USPTO on November 3, 1998.
`
`31. U.S. Patent No. 6,895,057 to Balachandran, Ejzak, and Nanda, entitled “System and method
`for wireless communication supporting link adaptation and incremental redundancy,” was
`issued on May 17, 2005.
`
`32. U.S. Patent Application No. 09/348,958 of Moulsley was filed on July 7, 1999.
`
`33. U.S. Patent No. 6,671,851 to Moulsley, entitled “Coding device and communication system
`using the same,” was issued on December 30, 2003.
`
`34. U.S. Patent Application Publication No. 2006/0227789 of Döttling and Raaf was published on
`October 12, 2006.
`
`35. U.S. Patent No. 7,808,955 to Döttling and Raaf, entitled “Method for transmitting control data
`between a base station and a mobile station,” was issued on October 5, 2010.
`
`36. U.S. Patent Application No. 10/331,839 of Kim et al. was filed on December 30, 2002.
`
`37. U.S. Patent No. 7,426,201 to Kim et al., entitled “Apparatus and method for
`transmitting/receiving a high speed-shared control channel in a high speed downlink packet
`access communication system,” was issued on September 16, 2008.
`
`38. U.S. Patent Application No. 10/811,229 of Virtanen and Malkamäki was filed on March 26,
`2004.
`
`39. U.S. Patent No. 7,388,848 to Virtanen and Malkamäki, entitled “Method and apparatus for
`transport format signaling with HARQ,” was issued on June 17, 2008.
`
`  
`
`14
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 14
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 15 of 25 PageID #:
` 13493
`
`40. U.S. Patent Application No. 12/162,592 of Löhr and Seidel was filed on October 2, 2008 and
`claims priority to a foreign application PCT/EP2006/010521 filed November 2, 2006.
`
`41. U.S. Patent No. 8,576,784 to Löhr and Seidel, entitled “Uplink resource allocation in a mobile
`communication system,” was issued on November 5, 2013.
`
`42. U.S. Provisional Application No. 60/776,345 of Zhang was filed at the USPTO on February
`24, 2006.
`
`43. U.S. Patent No. 8,477,695 to Zhang, “Wireless communication method and apparatus for
`selecting between transmission of short-version and full-version uplink scheduling requests,”
`was issued on July 2, 2013.
`
`44. U.S. Patent Application No. 09/539,224 of Wallace, Walton, and Jalali was filed at the
`USPTO on March 30, 2000.
`
`45. U.S. Patent No. 6,473,467 to Wallace, Walton, and Jalali, entitled “Method and apparatus for
`measuring reporting channel state information in a high efficiency, high performance
`communications system,” was issued on October 29, 2002.
`
`46. U.S. Patent Application No. 08/405,625 of Ishikawa and Seki was filed at the USPTO on
`March 15, 1995.
`
`47. U.S. Patent No. 5,646,935 to Ishikawa and Seki, entitled “Hierarchical quadrature frequency
`multiplex signal format and apparatus for transmission and reception thereof,” was issued on
`July 8, 1997.
`
`48. U.S. Provisional Application No. 60/942,843 of Papasakellariou and Cho was filed at the
`USPTO on June 8, 2007.
`
`49. U.S. Patent No. 8,331,328 to Papasakellariou and Cho, entitled “Control and data signaling in
`SC-FDMA communication systems,” was issued on December 11, 2012.
`
`50. U.S. Patent Application Publication No. 2006/0262871 of Cho, Lee, Kwon, and Cho was
`published on November 23, 2006.
`
`51. With regard to the ’293 patent, the following non-patent documents are prior art “printed
`publications” pursuant to pre-AIA 35 U.S.C. § 102: DX 057, DX 060, DX 081, DX 083. It is
`agreed that each one of these documents was disseminated or otherwise made available to the
`public, including persons interested and ordinarily skilled in the subject matter or art, before
`the priority date for the ’293 patent.
`
`52. With regard to the ’833 patent, the following non-patent documents are prior art “printed
`publications” pursuant to pre-AIA 35 U.S.C. § 102: DX 271, DX 280. It is agreed that each
`one of these documents was disseminated or otherwise made available to the public, including
`persons interested and ordinarily skilled in the subject matter or art, before the priority date for
`the ’833 patent.
`
`  
`
`15
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 15
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 16 of 25 PageID #:
` 13494
`
`53. With regard to the ’238 patent, the following non-patent documents are prior art “printed
`publications” pursuant to pre-AIA 35 U.S.C. § 102: DX 190, DX 191, DX 197, DX 198, DX
`199, DX 200, DX 201, DX 202, DX 203, DX 204, DX 205, DX 206, DX 207, DX 213, DX
`214, DX 215, DX 216, DX 220. It is agreed that each one of these documents was
`disseminated or otherwise made available to the public, including persons interested and
`ordinarily skilled in the subject matter or art, before the priority date for the ’238 patent.
`
`54. With regard to the ’216 patent, DX 033 is a prior art “printed publication” pursuant to pre-
`AIA 35 U.S.C. § 102. It is agreed that DX 033 was disseminated or otherwise made available
`to the public, including persons interested and ordinarily skilled in the subject matter or art,
`before the priority date for the ’216 patent.
`
`F.
`
`CONTESTED ISSUES OF FACT AND LAW
`
`1.
`
`PanOptis’ Contested Issues of Fact and Law
`
`(a) Whether Huawei has directly infringed the asserted claims of the patents-in-suit in
`connection with the manufacture, sale, offer for sale, use, and/or importation into the U.S.
`of the accused products.
`
`(b) Whether Huawei has indirectly infringed the asserted claims of the patents-in-suit by
`contributorily infringing or inducing infringement of the patents in suit.
`
`(c) Whether Huawei infringes, under the doctrine of equivalents, the asserted claims of the
`patents-in-suit under one or more of 35 U.S.C. §§ 271(a), 271(b), or 271(c).
`
`(d) Whether there is clear and convincing evidence that the asserted claims of the patents-in-
`suit are invalid as anticipated and/or obvious.
`
`(e) Whether Huawei has articulated any legally cognizable affirmative defense, and if so
`whether it can meet its burden of proving that any bar PanOptis’ recovery (in whole or in
`part).
`
`(f) Whether Huawei’s infringement is willful and whether Huawei’s conduct merits
`enhanced damages pursuant to 35 U.S.C. § 284 and an award of attorneys’ fees pursuant
`to 35 U.S.C. § 285.
`
`(g)
`
`If liability is found, the amount of damages to which PanOptis is entitled for a reasonable
`royalty, including an accounting and/or supplemental damages for any damages not
`addressed at trial and any post-trial damages, as well as costs, pre-judgment interest, and
`post-judgment interest.
`
`(h)
`
`If PanOptis is entitled to enhanced damages, the amount of such enhancement.
`
`(i) Whether Huawei has established by a preponderance of the evidence that PanOptis did
`not comply with its obligations under PanOptis’ contract with ETSI during its
`negotiations with Huawei concerning a worldwide license under the PanOptis standard
`essential patents.
`
`  
`
`16
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 16
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 17 of 25 PageID #:
` 13495
`
`2.
`
`Huawei’s Contested Issues of Fact and Law
`
`(a) Whether PanOptis has proved by a preponderance of the evidence that Huawei literally
`infringes the asserted claims of the patents-in-suit under one or more of 35 U.S.C. §§
`271(a), 271(b), or 271(c).
`
`(b) Whether PanOptis has proved by a preponderance of the evidence that Huawei infringes,
`under the doctrine of equivalents, the asserted claims of the patents-in-suit under one or
`more of 35 U.S.C. §§ 271(a), 271(b), or 271(c).
`
`(c) Whether Huawei has proved by clear and convincing evidence that one or more of the
`asserted claims of the patents-in-suit are invalid under 35 U.S.C. §§ 102 and/or 103.
`
`(d) Whether Huawei has proved by clear and convincing evidence that one or more of the
`asserted claims of the ’293 patent are invalid under 35 U.S.C. § 101.
`
`(e) Whether Huawei has proved by a preponderance of the evidence that PanOptis is not
`entitled to damages for the ’216 patent prior to February 10, 2017.
`
`(f) Whether Huawei has proved by a preponderance of the evidence that PanOptis is not
`entitled to damages for the ’293 patent prior to March 21, 2017.
`
`(g) Whether PanOptis has proved by a preponderance of the evidence that Huawei willfully
`infringed each of the patents-in-suit.
`
`(h) Whether PanOptis has proved by a preponderance of the evidence that it is entitled to
`damages to compensate it for Huawei’s purported infringement, and if so, the dollar
`amount of damages adequate to compensate for the infringement of each of the patents-
`in-suit.
`
`(i) Whether PanOptis has proved by a preponderance of the evidence that it is entitled to
`enhanced damages under 35 U.S.C. § 284.
`
`(j) Whether PanOptis has proved by a preponderance of the evidence that it is entitled to
`pre- and post-judgment interest.
`
`(k) Whether PanOptis has proved by a preponderance of the evidence that this case is an
`exceptional case under 35 U.S.C. § 285.
`
`(l)
`
`U.S. Patent 7,940,851, asserted earlier by PanOptis in this case and declared to be
`essential to the LTE standard, is not infringed by Huawei and is not essential to that
`standard.
`
`(m) Whether PanOptis has established by a preponderance of the evidence that PanOptis did
`comply with its obligations under PanOptis’ contract with ETSI during its negotiations
`with Huawei concerning a license for its U.S. declared standard-essential patents.
`
`
`
`  
`
`17
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 17
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 18 of 25 PageID #:
` 13496
`
`
`
`G.
`
`LIST OF WITNESSES
`
`1. The trial witness list of each party and any objections thereto is attached as follows:2
`
`
` PanOptis: Appendix A
`
` Huawei: Appendix B
`
`
`2. The deposition designations of each party and objections thereto are attached as
`follows:3
`
`
`
` PanOptis: Appendix C
`
` Huawei: Appendix D
`
`(Note: Each party shall set forth a separate list of witnesses who (1) will be called to
`testify at trial; (2) may be called to testify at trial, and (3) may be presented by deposition
`testimony at trial. Those portions of the depositions that may be offered into evidence
`at trial shall be listed by page and line number.)
`
`LIST OF EXHIBITS
`Exhibits that the parties expect to use at trial and may use at trial and objections thereto
`
`H.
`
`are attached as follows (the listed exhibits are subject to objections and are not agreed or admitted
`
`to be admissible):
`
`                                                            
`2 For the reasons stated in PanOptis’ pending motion to strike Zhang’s Declaration (Dkts. 188,
`212), PanOptis objects to the testimony of Xiaowu Zhang to the extent the testimony was not
`timely disclosed in either fact or expert discovery. Huawei opposes PanOptis’ objection on the
`ground, among other things, that PanOptis declined to take Mr. Zhang’s deposition both prior to
`and after the close of fact discovery. Any objection to testimony at trial should be considered at
`trial.
`3 Among other objections, PanOptis objects to Huawei playing its own corporate testimony
`during its affirmative case as a violation of FRE 802. Specifically, PanOptis objects to Huawei’s
`designations of (
`
`
`; and (2)
`
`
`
`
`. See Dkt. 209 (PanOptis’ Opposed Motions in Limine) at 5. Huawei is withdrawing
`its designation of
`deposition excerpts, as he will be able to attend the trial.
`Huawei is not withdrawing the deposition excerpts of
`18
`
`  
`
`.
`
`Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC
`OPTIS CELLULAR TECHNOLOGY, LLC EX2009 – 18
`Final Pretrial Order in District Court
`IPR2018-00807
`
`

`

`Case 2:17-cv-00123-JRG-RSP Document 233 Filed 07/26/18 Page 19 of 25 PageID #:
` 13497
`
` PanOptis: Appendix E
`
` Huawei: Appendix F
`
`
`
`I.
`
`LIST OF ANY PENDING MOTIONS
`
`The following motions are pending:
`
`Dkt.
`
`Pending Motion
`
`1414
`
`1425
`
`1456