Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 1 of 21 PageID #: 13833
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:17-cv-00123-JRG-RSP
`
`§§§§§§§§§§§§§§
`
`OPTIS WIRELESS TECHNOLOGY, LLC,
`PANOPTIS PATENT MANAGEMENT,
`LLC, OPTIS CELLULAR TECHNOLOGY,
`LLC.,
`
`Plaintiffs,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE USA, INC., HUAWEI
`DEVICE CO. LTD.,
`
`Defendants.
`
`PRETRIAL ORDER
`
`This patent infringement lawsuit is scheduled for trial before Judge Gilstrap on August 20,
`2018. A pretrial conference was held on July 27, 2018. In accordance with FRCP 16(d)-(e), the
`following pretrial order controls the scope and schedule of the action going forward. This order
`may be modified “only to prevent manifest injustice.” FRCP 16(e).
`
`Table of Contents
`
`Counsel Roster .................................................................................................................... 2
`I.
`Jurisdiction .......................................................................................................................... 3
`II.
`Nature of the Lawsuit.......................................................................................................... 3
`III.
`Contentions of the Parties, Stipulations, and Uncontested Facts ........................................ 3
`IV.
`PanOptis’s Motion to Strike Zhang’s Declaration (ECF 188) .......................................... 14
`V.
`VI. Motions in Limine ............................................................................................................. 15
`VII.
`Exhibits ............................................................................................................................. 19
`VIII.
`Jury Trial Procedure .......................................................................................................... 19
`IX.
`Bench Trial Procedure ...................................................................................................... 21
`
`1
`
`APPLE 1019
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 2 of 21 PageID #: 13834
`
`I.
`
`Counsel Roster
`
`A. PanOptis’s Counsel
`
`1. From McKool Smith, P.C.:
`(cid:120) Kevin L. Burgess (Lead)
`(cid:120) Steve J. Pollinger
`(cid:120) Scott L. Cole
`(cid:120) Lindsay M. Leavitt
`(cid:120) Kevin P. Hess
`(cid:120) Christine M. Woodin
`(cid:120) Marcus L. Rabinowitz
`(cid:120) Samuel F. Baxter
`Jennifer Truelove
`(cid:120)
`(cid:120) Theodore Stevenson, III
`
`2. From Gray Reed & McGraw LLP:
`(cid:120) Eric S. Tautfest
`Jared Hoggan
`(cid:120)
`(cid:120) David T. DeZern
`(cid:120) M. Jill Bindler
`(cid:120) David Lisch
`
`B. Huawei’s Counsel
`
`1. From Covington & Burling LLP:
`(cid:120) Robert T. Haslam (Lead)
`(cid:120) Stanley Young
`(cid:120) Anupam Sharma
`(cid:120) Thomas E. Garten
`(cid:120) Tess A. Hamilton
`James Hovard
`(cid:120)
`(cid:120) Gregory S. Nieberg
`(cid:120) Heng Gong
`(cid:120) Paul J. Wilson
`(cid:120) Ali Mojibi
`(cid:120) Christopher G. Higby
`
`2. From Siebman, Burg, Phillips & Smith, LLP:
`(cid:120) Michael C. Smith
`
`2
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`

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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 3 of 21 PageID #: 13835
`
`II.
`
`Jurisdiction
`
`Except for the dispute concerning Count IX of PanOptis’s complaint, the court has subject-
`matter jurisdiction under 28 U.S.C. §§ 1331, 1338, and 1367.
`
`III.
`
`Nature of the Lawsuit
`
`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.)
`
`IV.
`
`Contentions of the Parties, Stipulations, and Uncontested Facts
`
`A. PanOptis’s Contentions
`
`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 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:
`
`(cid:120) Claim 1 of the ’238 patent;
`(cid:120) Claims 1, 3, 11, 12, 20 of the ’216 patent;
`(cid:120) Claims 1, 4, and 11 of the ’284 patent; and
`
`3
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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 4 of 21 PageID #: 13836
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`(cid:120) Claims 11, 16, and 17 of the ’569 patent;
`(cid:120) Claims 8 and 13 of the ’833 patent;
`(cid:120) 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
`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.
`
`B. 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 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
`
`4
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`

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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 5 of 21 PageID #: 13837
`
`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.
`
`C. 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.
`
`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:
`
`5
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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 6 of 21 PageID #: 13838
`
`Accused LTE Products
`Ascend Mate2
`Ascend XT
`GX8 / G7 Plus
`Honor 5X
`Honor 6X
`Honor 8
`Nexus 6P
`P8 Lite
`Pronto
`Raven
`Sensa
`SnapTo (Vision 3 LTE)
`Union
`Vitria
`Honor 7X
`Ascend XT2
`Elate
`Mate 10 Pro
`Mate 10 Porsche Design
`Mate SE
`MediaPad T1 8.0 Pro
`MediaPad T1 10.0
`
`11. The accused products for the Asserted LTE Patents implement the sections of the LTE
`standard, set forth in Release 8 of the 36 series of 3GPP technical specifications, that are
`specifically cited and replicated in the claim chart exhibits of PanOptis’ January 24, 2018 P.R. 3-
`1 and 3-2 Disclosure of Asserted Claims and Infringement Contentions for U.S. Patent Nos.
`6,604,216, 8,385,284, 8,208,569, 8,102,833, and 8,437,293, including:
`
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`
`3GPP TS 36.211 V.8.9.0 (2009-12) at § 6.2.
`3GPP TS 36.211 V.8.9.0 (2009-12) at § 6.3.
`3GPP TS 36.211 V.8.9.0 (2009-12) at § 6.8.
`3GPP TS 36.212 V.8.8.0 (2009-12) at § 5.1.3.
`3GPP TS 36.212 V.8.8.0 (2009-12) at § 5.1.4.
`3GPP TS 36.212 V.8.8.0 (2009-12) at § 5.2.
`
`12. The accused products for the asserted claim of the ’238 patent are:
`
`’238 Accused Products
`Ascend Mate2
`Ascend XT
`GX8 / G7 Plus
`Honor 5X
`Honor 6X
`
`6
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 7 of 21 PageID #: 13839
`
`Honor 8
`Magna
`Magna
`Nexus 6P
`P8 Lite
`Pronto
`Raven
`Sensa
`SnapTo (Vision 3 LTE)
`Union
`Vitria
`Honor 7X
`Ascend XT2
`Elate
`Mate 10 Pro
`Mate 10 Porsche Design
`Mate SE
`MediaPad T1 8.0
`MediaPad T1 8.0 Pro
`MediaPad T1 10.0
`MediaPad M2
`MediaPad M3
`MediaPad M3 Lite 8
`MediaPad M3 Lite 10
`MediaPad T3 7
`MediaPad T3 8
`MediaPad T3 10
`
`13. The accused products for the ’238 patent implement the following sections of the ITU-T
`Recommendation H.264 that are specifically cited and replicated in the claim chart exhibits of
`PanOptis’ January 24, 2018 P.R. 3-1 and 3-2 Disclosure of Asserted Claims and Infringement
`Contentions for U.S. Patent No. 7,769,238.
`
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`
`ITU-T H.264 (10/2016) at § 0.6.4
`ITU-T H.264 (10/2016) at § 3.134
`ITU-T H.264 (10/2016) at § 3.159
`ITU-T H.264 (10/2016) at § 3.73
`ITU-T H.264 (10/2016) at § 7.4.5.3.2
`ITU-T H.264 (10/2016) at § 8.3
`ITU-T H.264 (10/2016) at § 8.4
`ITU-T H.264 (10/2016) at § 8.5
`ITU-T H.264 (10/2016) at § 8.5.1
`ITU-T H.264 (10/2016) at § 8.5.2
`ITU-T H.264 (10/2016) at § 8.5.3
`ITU-T H.264 (10/2016) at § 8.5..4
`
`7
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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 8 of 21 PageID #: 13840
`
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`
`ITU-T H.264 (10/2016) at § 8.5.10
`ITU-T H.264 (10/2016) at § 8.5.12
`ITU-T H.264 (10/2016) at § 8.5.12.1
`ITU-T H.264 (10/2016) at § 8.5.12.2
`ITU-T H.264 (10/2016) at § 8.5.13
`ITU-T H.264 (10/2016) at § 8.5.13.1
`ITU-T H.264 (10/2016) at § 8.5.13.2
`ITU-T H.264 (10/2016) at § 9.2
`ITU-T H.264 (10/2016) at § 9.2.1
`
`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.
`
`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.
`
`8
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`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.
`
`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.
`
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`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.
`
`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.
`
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`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 11 of 21 PageID #: 13843
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`D. Contested Issues of Fact and Law
`
`PanOptis’s Contested Issues of Fact and Law
`
`Whether Huawei has directly infringed the asserted claims of the patents-in-suit in
`(a)
`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.
`
`Whether Huawei infringes, under the doctrine of equivalents, the asserted claims
`(c)
`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.
`
`Whether Huawei has articulated any legally cognizable affirmative defense, and if
`(e)
`so whether it can meet its burden of proving that any bar PanOptis’ recovery (in whole or in part).
`
`Whether Huawei’s infringement is willful and whether Huawei’s conduct merits
`(f)
`enhanced damages pursuant to 35 U.S.C. § 284 and an award of attorneys’ fees pursuant to 35
`U.S.C. § 285.
`
`If liability is found, the amount of damages to which PanOptis is entitled for a
`(g)
`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.
`
`Whether Huawei has established by a preponderance of the evidence that PanOptis
`(i)
`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.
`
`Huawei’s Contested Issues of Fact and Law
`
`Whether PanOptis has proved by a preponderance of the evidence that Huawei
`(a)
`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).
`
`Whether Huawei has proved by clear and convincing evidence that one or more of
`(c)
`the asserted claims of the patents-in-suit are invalid under 35 U.S.C. §§ 102 and/or 103.
`
`11
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 12 of 21 PageID #: 13844
`
`(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.
`
`Whether Huawei has proved by a preponderance of the evidence that PanOptis is
`(e)
`not entitled to damages for the ’216 patent prior to February 10, 2017.
`
`Whether Huawei has proved by a preponderance of the evidence that PanOptis is
`(f)
`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.
`
`Whether PanOptis has proved by a preponderance of the evidence that it is entitled
`(i)
`to enhanced damages under 35 U.S.C. § 284.
`
`Whether PanOptis has proved by a preponderance of the evidence that it is entitled
`(j)
`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.
`
`U.S. Patent 7,940,851, asserted earlier by PanOptis in this case and declared to be
`(l)
`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.
`
`E. Witnesses
`
`PanOptis’s Witnesses
`
`Witness
`
`1. Ray Warren, Director of Licensing for
`PanOptis Patent Management, LLC c/o GRAY
`REED & MCGRAW LLP
`2. Vijay Madisetti, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`3. Richard Gitlin, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`
`12
`
`Will
`Call
`X
`
`May
`Call
`
`Live or By
`Deposition
`Live
`
`X
`
`X
`
`Live
`
`Live
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 13 of 21 PageID #: 13845
`
`Witness
`
`4.
`
`7.
`
`9.
`
`James Womack, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`5. Michael Akemann, PanOptis’ damages expert
`c/o GRAY REED & MCGRAW LLP
`6. Alex Haimovich, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`James Warden, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`8. Trevor Smedley, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`Iain Richardson, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`10. Aaron Striegel, PanOptis’ technical expert
`c/o GRAY REED & MCGRAW LLP
`11. Bénédicte Fauvarque-Cosson, PanOptis’ French law expert
`c/o GRAY REED & MCGRAW LLP
`12. Dae Won Lee, Inventor ‘833 Patent c/o
`Jason Choy
`Wilmer Hale
`13. Ji Li
`c/o Covington & Burling LLP
`14. Li Jie
`c/o Covington & Burling LLP
`15. Wen Wu
`c/o Covington & Burling LLP
`16. Zhu Liu
`c/o Covington & Burling LLP
`17. Xuxin Cheng
`c/o Covington & Burling LLP
`
`Will
`Call
`X
`
`May
`Call
`
`Live or By
`Deposition
`Live
`
`X
`
`X
`
`X
`
`Live
`
`Live
`
`Live
`
`Live
`
`Live
`
`Live
`
`Live
`
`By
`deposition
`
`By
`deposition
`By
`deposition
`By
`deposition
`By
`deposition
`By
`deposition
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`13
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 14 of 21 PageID #: 13846
`
`Huawei’s Witnesses
`
`Witness
`
`Will
`Call
`
`May
`Call
`
`May, but
`Probably Will
`Not Call
`
`.
`
`Becker, Stephen L.
`
`2. Bims, Harry V.
`
`3.
`
`Frappier, Mark
`
`4. Hassoun, Marwan
`
`5.
`
`Schonfeld, Dan
`
`6. Wells, Jonathan
`
`7. Wen, Wu (Wayne)
`
`8. Zhang, Xiaowu (Emil)
`
`F. Exhibits
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`For PanOptis Exhibits, see Appendix E to the Proposed Pretrial Order (ECF 225-5). For
`Hauwei exhibits, see Appendix F (ECF 225-6).
`
`G. Management Conference Limitations
`
`Subject to any limitations set forth below in Trial Procedures, the parties will be bound by
`their agreements concerning exchanges of demonstratives, exhibits, witness lists, and objections.
`See ECF 225 at 20.
`
`V.
`
`PanOptis’s Motion to Strike Zhang’s Declaration (ECF 188)
`
`For the reasons explained at the pretrial conference, the motion is granted-in-part. Zhang(cid:3)
`is not permitted to offer untimely expert opinion about the fairness of PanOptis’s global licensing
`offer, i.e., opinion not related to his or Huawei’s mental impressions. Zhang may testify about
`Huawei’s state of mind during negotiations and what he or any other decision makers thought
`about PanOptis’s offers. This fact testimony was (cid:71)(cid:76)(cid:86)(cid:70)(cid:79)(cid:82)(cid:86)(cid:72)(cid:71)(cid:3) timely; Huawei’s answer to
`Interrogatory No. 6 was adequate, and Zhang was properly identified in accordance with FRCP
`26.
`
`14
`
`

`

`Case 2:17-cv-00123-JRG Document 243 Filed 08/06/18 Page 15 of 21 PageID #: 13847
`
`VI. Motions in Limine
`
`Before referring to the subject matter of a granted motion in limine in front of the jury, a
`party must approach the bench.
`
`A. Joint Motions in Limine (ECF 208)
`
`The parties agree on the following motions in limine, which are reproduced below vertabim
`from the parties’ joint motion. Each of these motions is granted-by-agreement.
`
`1. The parties shall be precluded from making statements that are inconsistent with the
`Federal Judicial Center’s patent video, and from praising or criticizing the performance, reliability,
`or credibility of the USPTO or the examiners that work at the USPTO. The parties are not
`precluded from introducing evidence that a particular prior art reference was or was not considered
`during prosecution of an asserted patent. The parties are also not precluded from arguing that an
`asserted claim is valid or invalid, or from making statements that are consistent with the Federal
`Judicial Center’s patent video. PanOptis is not precluded from explaining that “a patent shall be
`presumed valid,” from explaining that “the PTO is presumed to have done its job correctly,” or
`from praising or lauding the USPTO in a manner consistent with the presumption of validity.
`2. The parties shall be precluded from raising any attorney argument, evidence, testimony,
`insinuation, reference, or assertions that patent examiners are overworked, prone to error, not
`bright, lazy, or biased toward allowing patents to issue (to meet some quota or otherwise). This
`limine does not foreclose comments consistent with the patent video shown by this Court, and
`further does not prevent Huawei from making generalizations that the examiner was in error or
`overlooked evidence, commenting on general matters regarding invalidity, or commenting on the
`relative worth of some patents.
`3. The parties shall be precluded from raising any attorney argument, evidence, testimony,
`insinuation, reference, or assertions regarding any petitions for, or outcome of, inter partes review
`(IPR) proceedings, including any decisions to institute or not institute review. The parties are not
`precluded from presenting evidence or arguments regarding statements made by the parties to the
`Patent Trial and Appeal Board (PTAB) in IPR proceedings to the extent the statements are
`admissible under the Federal Rules of Evidence. The parties shall refer to any such statements as
`statements “made to the Patent Office,” without identifying the existence of IPR proceedings. If a
`pending IPR petiti