Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 1 of 17 Page ID #:377
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`Robert T. Haslam (SBN 71134)
`Anupam Sharma (SBN 229545)
`James D. Hovard (SBN 300034)
`COVINGTON & BURLING LLP
`3000 El Camino Real
`5 Palo Alto Square
`Palo Alto, CA 94306
`Telephone: (650) 632-4700
`Robert J. Williams (SBN 247428)
`COVINGTON & BURLING LLP
`2701 Two ifc, Shanghai ifc
`No. 8 Century Avenue
`Pudong New District
`Shanghai, China 200120
`Telephone: +86-21-6036-2500
`Ruixue Ran (Pro Hac Vice to be Filed)
`Sheng Huang (SBN 295744)
`COVINGTON & BURLING LLP
`2301 Tower C Yintai Centre
`2 Jianguomenwai Avenue
`Beijing, China 100022,
`Telephone: +86 (10) 5910 0591
`
`Attorneys for Defendants Hisense Electronics
`Manufacturing Company of America Corporation, et al.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`LG Electronics Inc.,
`Plaintiff,
`
`vs.
`Hisense Electronics Manufacturing
`Company of America Corporation, et
`al.
`
`Defendants.
`
`DEFENDANTS’ SECOND
`AMENDED ANSWER TO
`COMPLAINT FOR PATENT
`INFRINGEMENT
`
`Hon. S. James Otero
`
`
`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, Cover
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 2 of 17 Page ID #:378
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`Defendants Hisense Electronics Manufacturing Company of America
`Corporation; Hisense USA Corporation; Hisense International (Hong Kong)
`America Investment Co., Limited (f/k/a Hisense International America Holdings
`Co., Limited); Hisense International (HK) Co., Limited; Hisense International Co.
`Ltd.; Qingdao Hisense Electronics Co. Ltd. (f/k/a Hisense Electric Co., Ltd. and
`currently known as Hisense Visual Technology Co., Ltd.); and Hisense Co., Ltd.
`(collectively “Hisense”) hereby answer the Complaint for Patent Infringement of
`LG Electronics Inc. (“LGE”) as follows:
`THE PARTIES
`Hisense lacks knowledge or information sufficient to form a belief as
`1.
`to the truth of the allegations of paragraph 1 and on that basis denies these
`allegations.
`Hisense admits the allegations of paragraph 2.
`2.
`Hisense admits the allegations of paragraph 3.
`3.
`Hisense admits the allegations of paragraph 4.
`4.
`Hisense admits the allegations of paragraph 5.
`5.
`Hisense admits the allegations of paragraph 6.
`6.
`Hisense admits the allegations of paragraph 7.
`7.
`Hisense admits the allegations of paragraph 8.
`8.
`Hisense admits the allegations of paragraph 9.
`9.
`10. Hisense admits the allegations of paragraph 10.
`11. Hisense admits the allegations of paragraph 11.
`12. Hisense admits the allegations of paragraph 12.
`13. Hisense admits the allegations of paragraph 13.
`14. Hisense admits the allegations of paragraph 14.
`15. Hisense admits the allegations of paragraph 15.
`16. Hisense admits the allegations of paragraph 16.
`17. Hisense admits the allegations of paragraph 17.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 1
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 3 of 17 Page ID #:379
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`18. Hisense admits Hisense Co., Ltd is the parent company of all of other
`named defendants. The remaining allegations of paragraph 18 are denied.
`19.
`The allegations of paragraph 19 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 19.
`20.
`The allegations of paragraph 20 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense admits that (1)
`Hisense USA Corporation and Hisense Electronics Manufacturing Company of
`America Corporation have the same office address, the same registered agent, and
`some overlapping officers.; (2) Hisense International (Hong Kong) America
`Investment Co., Limited and Hisense International (HK) Co., Limited share a
`business address; and (3) Hisense Co., Ltd. and Hisense International Co. Ltd. share
`a business address. Hisense denies the remaining allegations of paragraph 20.
`JURISDICTION AND VENUE
`21. Hisense admits that LGE purports to bring this action for patent
`infringement under the patent laws of the United States, Title 35 United States
`Code, but denies that Hisense is liable for patent infringement and that LGE is
`entitled to any relief.
`22.
`The allegations of paragraph 22 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense admits that this
`Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331 and
`1338(a).
`The allegations of paragraph 23 contain legal conclusions to which no
`23.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 23.
`24.
`The allegations of paragraph 24 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 24.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
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`Patent Owner LG Electronics Inc. - Ex. 2004, p. 2
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 4 of 17 Page ID #:380
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`The allegations of paragraph 25 contain legal conclusions to which no
`25.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 25.
`26.
`The allegations of paragraph 26 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 26.
`27.
`The allegations of paragraph 27 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense admits that (1)
`Hisense branded televisions are available for sale at Best Buy and Walmart retail
`stores, and are also available for sale through online retailers Amazon, Best Buy,
`and Walmart; and (2) Hisense USA Corporation website contains information for
`Hisense branded televisions. Hisense denies the remaining allegations of paragraph
`27.
`
`The allegations of paragraph 28 contain legal conclusions to which no
`28.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 28.
`29.
`The allegations of paragraph 29 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 29.
`30.
`The allegations of paragraph 30 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 30.
`THE PATENTS-IN-SUIT
`31. Hisense admits that the face of United States Patent No. 8,456,592 as
`RE46,795 (“’795 patent”), publicly available on the USPTO website, bears a
`reissue date of April 17, 2018, and is entitled “Backlight Unit and Liquid Crystal
`Display Including the Same”. Hisense denies the remaining allegations of
`paragraph 31.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 3
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 5 of 17 Page ID #:381
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`32. Hisense admits that the face of United States Patent No. 10,334,311
`(“’311 patent”), publicly available on the USPTO website, bears an issue date of
`June 25, 2019, and is entitled “Method of Providing External Device List and
`Image Display Device”. Hisense denies the remaining allegations of paragraph 32.
`33. Hisense admits that the face of United States Patent No. 9,271,191
`(“’191 patent”), publicly available on the USPTO website, bears an issue date of
`February 23, 2016, and is entitled “Method and Apparatus for Transmitting Data
`Frame in WLAN System”. Hisense denies the remaining allegations of paragraph
`33.
`
`34. Hisense admits that the face of United States Patent No. 7,839,452
`(“’452 patent”), publicly available on the USPTO website, bears an issue date of
`November 23, 2010, and is entitled “Image Display Device in Digital TV”. Hisense
`denies the remaining allegations of paragraph 34.
`KNOWLEDGE OF THE PATENTS-IN-SUIT AND INFRINGEMENT
`35.
`The allegations of paragraph 35 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 35.
`36. Hisense admits that Mr. Fan Kai received an email from LGE on
`February 1, 2019, attached with a demand letter dated January 31, 2019 addressed
`to Mr. Liu Hongxin. Hisense denies that Mr. Liu Hongxin was the CEO of Hisense
`International Co., Ltd. Hisense denies the remaining allegations of paragraph 36.
`37. Hisense admits the allegations of paragraph 37.
`38. Hisense admits the allegations of paragraph 38.
`39. Hisense admits the allegations of paragraph 39.
`40. Hisense admits that LGE corresponded with Ms. Zhao via email on
`March 22, 2019. Hisense denies the remaining allegations of paragraph 40.
`41. Hisense admits the allegations of paragraph 41.
`42. Hisense admits that Ms. Hanqing (Anita) Wang also engaged in
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
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`Patent Owner LG Electronics Inc. - Ex. 2004, p. 4
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 6 of 17 Page ID #:382
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`correspondence with LGE. Hisense denies the remaining allegations of paragraph
`42.
`
`43. Hisense admits the allegations of paragraph 43.
`44. Hisense denies the allegations of paragraph 44.
`45. Hisense admits that the parties corresponded via emails prior to an in
`person meeting. Hisense denies the remaining allegations of paragraph 45.
`46. Hisense admits the allegations of paragraph 46.
`47. Hisense denies the allegations of paragraph 47.
`48. Hisense admits that its representatives met with LGE in person on July
`5, 2019. Hisense denies the remaining allegations of paragraph 48.
`49. Hisense admits that the parties did not come to an agreement to license
`any of the patents in suit. Hisense denies the remaining allegations of paragraph 49.
`50.
`The allegations of paragraph 50 contain legal conclusions to which no
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 50.
`
`
`COUNT I: INFRINGEMENT OF THE ’795 PATENT
`51. Hisense incorporates by reference its responses to paragraphs 1-50.
`52. Hisense lacks knowledge or information sufficient to form a belief as
`to the truth of the allegations of paragraph 52 and on that basis denies these
`allegations.
`The allegations of paragraph 53 contain legal conclusions to which no
`53.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 53.
`54. Hisense denies the allegations of paragraph 54.
`55. Hisense admits that Exhibit 1 was filed along with the Complaint.
`Hisense denies the remaining allegations of paragraph 55.
`56. Hisense denies the allegations of paragraph 56.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 5
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 7 of 17 Page ID #:383
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`57. Hisense admits it provides user guides to the customers and advertises
`its products. Hisense denies the remaining allegations of paragraph 57.
`58. Hisense denies the allegations of paragraph 58.
`59. Hisense denies the allegations of paragraph 59.
`60. Hisense denies the allegations of paragraph 60.
`61. Hisense denies the allegations of paragraph 61.
`62. Hisense denies the allegations of paragraph 62.
`COUNT II: INFRINGEMENT OF THE ’311 PATENT
`63. Hisense incorporates by reference its responses to paragraphs 1-50.
`64. Hisense lacks knowledge or information sufficient to form a belief as
`to the truth of the allegations of paragraph 64 and on that basis denies these
`allegations.
`The allegations of paragraph 65 contain legal conclusions to which no
`65.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 65.
`66. Hisense denies the allegations of paragraph 66.
`67. Hisense admits that Exhibit 2 was filed along with the Complaint.
`Hisense denies the remaining allegations of paragraph 67.
`68. Hisense denies the allegations of paragraph 68.
`69. Hisense admits it provides user manual for Hisense model 55R7E.
`Hisense denies the remaining allegations of paragraph 69.
`70. Hisense denies the allegations of paragraph 70.
`71. Hisense denies the allegations of paragraph 71.
`72. Hisense denies the allegations of paragraph 72.
`73. Hisense denies the allegations of paragraph 73.
`74. Hisense denies the allegations of paragraph 74.
`COUNT III: INFRINGEMENT OF THE ’191 PATENT
`75. Hisense incorporates by reference its responses to paragraphs 1-50.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 6
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 8 of 17 Page ID #:384
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`76. Hisense lacks knowledge or information sufficient to form a belief as
`to the truth of the allegations of paragraph 76 and on that basis denies these
`allegations.
`The allegations of paragraph 77 contain legal conclusions to which no
`77.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 77.
`78. Hisense denies the allegations of paragraph 78.
`79. Hisense admits that Exhibit 3 was filed along with the Complaint.
`Hisense denies the remaining allegations of paragraph 79.
`80. Hisense denies the allegations of paragraph 80.
`81. Hisense admits
`it provides user manuals for Hisense models
`55H9EPlus and 55H9F and that it advertises its products. Hisense denies the
`remaining allegations of paragraph 81.
`82. Hisense denies the allegations of paragraph 82.
`83. Hisense denies the allegations of paragraph 83.
`84. Hisense denies the allegations of paragraph 84.
`85. Hisense denies the allegations of paragraph 85.
`86. Hisense denies the allegations of paragraph 86.
`COUNT IV: INFRINGEMENT OF THE ’452 PATENT
`87. Hisense incorporates by reference its responses to paragraphs 1-50.
`88. Hisense lacks knowledge or information sufficient to form a belief as
`to the truth of the allegations of paragraph 88 and on that basis denies these
`allegations.
`The allegations of paragraph 89 contain legal conclusions to which no
`89.
`answer is required. To the extent an answer is required, Hisense denies any and all
`allegations of paragraph 89.
`90. Hisense denies the allegations of paragraph 90.
`91. Hisense admits that Exhibit 4 was filed along with the Complaint.
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 7
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 9 of 17 Page ID #:385
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`Hisense denies the remaining allegations of paragraph 91.
`92. Hisense denies the allegations of paragraph 92.
`93. Hisense admits that it provides user guides for Hisense model 55R7E.
`Hisense denies the remaining allegations of paragraph 93.
`94. Hisense denies the allegations of paragraph 94.
`95. Hisense denies the allegations of paragraph 95.
`96. Hisense denies the allegations of paragraph 96.
`97. Hisense denies the allegations of paragraph 97.
`98. Hisense denies the allegations of paragraph 98.
`AFFIRMATIVE AND OTHER DEFENSES
`Further answering the Complaint, Hisense asserts the following
`99.
`defenses without assuming any burden that it would not otherwise have, including
`without admitting or acknowledging that it bears the burden of proof as to any of
`them. Hisense reserves the right to amend its answer with additional defenses,
`including, but not limited to, unenforceability due to inequitable conduct, waiver,
`and inventorship should additional facts reveal themselves over the course of
`discovery.
`
`FIRST DEFENSE
`(Invalidity)
`100. Each claim of the ’795 patent, ’311 patent, ’191 patent and ’452 patent
`(collectively, “the Asserted Patents”) is invalid because they fail to comply with
`one or more of the requirements of 35 U.S.C. § 101, including because those claims
`are directed towards patentable-ineligible subject matter.
`101. Each claim of the asserted patents is invalid because they fail to
`comply with one or more of the requirements of 35 U.S.C. §§ 102 and 103,
`including because those claims are taught in and/or made obvious by the prior art.
`102. Each claim of the asserted patents is invalid because those claims fail
`to comply with one or more of the requirements of 35 U.S.C. §§ 112, including
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 8
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 10 of 17 Page ID #:386
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`because those claims do not provide a written description of the alleged invention in
`a manner that would enable a person of ordinary skill in the art to make and use that
`alleged invention.
`103. For example, and not by way of limitation, each and every claim of the
`’452 patent is invalid as being anticipated or rendered obvious by one or more prior
`art references, including CEA 708-B Digital Television (DTV) Closed Captioning
`standard, dated July 1999. At least exemplary claim 1 which LGE has asserted is
`infringed is invalid for failure to comply with 35 U.S.C. § 101 because it claims
`nothing more than the abstract idea of transforming a data signal without any
`further inventive concept. At least exemplary claim 1 is invalid for failure to
`comply with 35 USC § 112, by way of example, as one or more limitations
`including at least “a data processing part configured to execute bit map conversion
`and format-conversion for text data to be displayed on the display” relies on
`functional claiming without a corresponding disclosed structure in the specification.
`104. By way of further example, without limitation, each and every claim of
`the ‘191 patent is invalid as being anticipated or rendered obvious by one or more
`prior art references, including Specification Framework for TGac, IEEE working
`group proposal IEEE 802.11-09/0992r8. At least exemplary claim 6 which LGE has
`asserted is infringed is invalid for failure to comply with 35 U.S.C. § 101 because it
`claims nothing more than the abstract idea of selecting and transmitting an available
`bandwidth parameter without any further inventive concept. At least exemplary
`claim 6 is invalid for failure to comply with 35 USC § 112, by way of example, as
`the claims are not enabled with respect to one or more limitation including at least
`“a processor . . . configured to: obtain a transmission .opportunity (TXOP)” in any
`form of wireless network except one complying with the IEEE 802.11 standards but
`the claims lack any explicit limitation of the type of wireless network claimed.
`105. By way of further example, without limitation, each and every claim of
`the ‘311 patent is invalid as being anticipated or rendered obvious by one or more
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
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`Patent Owner LG Electronics Inc. - Ex. 2004, p. 9
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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 11 of 17 Page ID #:387
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`prior art references, including at least PCT Patent Pub. WO2009/088952A1. At
`least exemplary claim 1 which LGE has asserted is infringed is invalid for failure to
`comply with 35 U.S.C. § 101 because it claims nothing more than the abstract idea
`of displaying data without any further inventive concept. At least exemplary claim
`1 is invalid for failure to comply with 35 USC § 112 as the claims, by way of
`example, lack written description support for “change the first default image to a
`first image based on the first image signal in response to the first external device
`icon being selected” based on the construction implicit in plaintiff’s infringement
`allegations.
`106. By way of further example, without limitation, each and every claim of
`the ‘795 patent is invalid as being anticipated or rendered obvious by one or more
`prior art references, including at least the Samsung UN32A6000 edge-lit LED TV
`set. At least exemplary claim 20 which LGE has asserted is infringed is invalid for
`failure to comply with 35 USC § 112, as the claims, by way of example, lack
`written description support for “wherein the length of the first protrusion is
`configured to be different from the length of the second protrusion.”
`SECOND DEFENSE
`(Non-infringement)
`107. Hisense has not directly or indirectly infringed, willfully or otherwise,
`any valid claim of the Asserted Patents, either literally or under the doctrine of
`equivalents.
`108. For example, and not by way of limitation, at least exemplary claim 1
`of the ’452 patent is not infringed, either literally or under the doctrine of
`equivalents, because the accused television sets do not meet at least the limitation
`of a “data processing part” when that term is properly construed. Such products also
`do not infringe under the doctrine of equivalents because expanding the claims to
`encompass such products would vitiate the relevant claim limitation.
`109. For example, and not by way of limitation, at least exemplary claim 6
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`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
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`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
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`Patent Owner LG Electronics Inc. - Ex. 2004, p. 10
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`

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`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 12 of 17 Page ID #:388
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`of the ’191 patent is not infringed, either literally or under the doctrine of
`equivalents, because the accused television sets do not meet at least the limitation
`of “a processor . . . configured to: . . . select a transmit bandwidth parameter of a
`non-initial data unit of the plurality of data units from available bandwidth
`parameters, wherein the available bandwidth parameters include a first available
`bandwidth parameter which is same as a transmit bandwidth parameter of the
`preceding data unit of the plurality of data units and a second available bandwidth
`parameter which is narrower than a transmit bandwidth parameter of the preceding
`data unit.” Plaintiff’s infringement allegations implicitly rely on a construction that
`is not met by products compliant with the accused standard insofar as products that
`comply with the accused standard are not required to make the selection as LG
`alleges. Such products also do not infringe under the doctrine of equivalents
`because expanding the claims to encompass such products would vitiate the
`relevant claim limitation.
`110. By way of example, without limitation, at least exemplary claim 1 of
`the ’311 patent is not infringed, either literally or under the doctrine of equivalents,
`because they do not meet at least the limitation “change the first default image to a
`first image based on the first image signal in response to the first external device
`icon being selected” when that term is properly construed. Such products also do
`not infringe under the doctrine of equivalents because expanding the claims to
`encompass such products would vitiate the relevant claim limitation.
`111. For example, and not by way of limitation, at least exemplary claim 20
`of the ’795 patent is not infringed, either literally or under the doctrine of
`equivalents, because the accused television sets do not meet at least the limitation
`of “a first protrusion protruding at a predetermined length from an upper surface of
`the plate, the first protrusion configured to be in close contact with the side surface
`of the light guiding plate” and “a second protrusion protruding at a predetermined
`length from the upper surface of the plate, the second protrusion configured to be
`
`-11-
`
`
`
`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 11
`
`

`

`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 13 of 17 Page ID #:389
`
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`coupled to the light source assembly by being inserted in a portion of the light
`source assembly” when those terms are properly construed. Such products also do
`not infringe under the doctrine of equivalents because expanding the claims to
`encompass such products would vitiate the relevant claim limitation.
`THIRD DEFENSE
`(Limitation on Damages and Costs Under Section 287)
`112. LGE’s claim for damages prior to the date of notice to Hisense is
`barred for failure to comply with 35 U.S.C. § 287. LGE does not mark its products
`embodying the asserted patents, either physically or via a website on the Internet, to
`identify any of the asserted patents and therefore does not comply with the notice
`and marking requirements of 35 U.S.C. § 287. On information and belief, licensees
`of the asserted patents do not mark their products in accordance with the
`requirements of 35 U.S.C. § 287 and LGC has not taken reasonable measures to
`ensure such marking occurs. Due to LGE’s and its licensees failure to comply with
`35 U.S.C. § 287, defendants are not liable to plaintiff for any damages allegedly
`incurred before defendants received actual notice of its allegedly infringing activity.
`FOURTH DEFENSE
`(Prosecution History Estoppel)
`113. LGE is estopped from construing any valid claim of the ‘452, ‘795,
`and ‘311 patents to be infringed literally or by the Doctrine of Equivalents due to
`prosecution history estoppel, including but not limited to admissions or statements
`made to the United States Patent and Trademark Office (“USPTO”) during
`prosecution, re-examination, or other proceedings of the Asserted Patents or
`because of the disclosure or language of the specification or claims thereof.
`114. For example, and not by way of limitation, one or more claim
`limitations of the ’452 patent are subject to prosecution history estoppel due to
`arguments and amendments made to those claims or related claims during
`prosecution, including on November 11, 2007 in U.S. Pat. App. 11/374,112 and
`
`-12-
`
`
`
`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 12
`
`

`

`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 14 of 17 Page ID #:390
`
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`April 7, 2010 in U.S. Pat. App. 11/785,524.
`115. For example, and not by way of limitation, one or more claim
`limitations of the ’795 patent are subject to prosecution history estoppel due to
`arguments and amendments made to those claims or related claims during
`prosecution, including on October 31, 2016 in U.S. Pat. Reissue App. 14/468,241
`and April 7, 2010.
`116. For example, and not by way of limitation, one or more claim
`limitations of the ’311 patent are subject to prosecution history estoppel due to
`arguments and amendments made to those claims or related claims during
`prosecution, including on February 8, 2018 in U.S. Pat. App. 15/788,510.
`FIFTH DEFENSE
`(Patent Misuse, Breach of Contract, Unclean Hands, and Equitable Estoppel)
`117. LGE’s claims are barred in whole or in part by reason of patent
`misuse, breach of contract, unclean hands, equitable estoppel and/or other equitable
`doctrines based on LGE’s conduct in connection with its commitments to license
`one or more of the asserted patents under fair, reasonable, and non-discriminatory
`(“FRAND”), which is required by LGE’s participation in standard setting
`organizations (“SSO”), including the Instituted of Electrical and Electronics
`Engineers (“IEEE”).
`118.
`In particular, and not by way of limitation, named inventors of the
`’191 Patent participated in the standard-setting process for the IEEE 802.11ac
`wireless protocol. On January 30, 2012, per IEEE contractual obligations, LGE
`submitted a letter of assurance that patents necessary to practice the IEEE 802.11ac
`wireless standard would be made available on FRAND licensing terms, and
`Hisense implemented the IEEE 802.11ac standards in its products based on the
`assurances provided by participants in the IEEE standard setting process. LGE has
`failed to offer Hisense a FRAND-compliant license to the ’191 Patent prior to
`initiating litigation, and has impermissibly sought injunctive relief against Hisense
`
`-13-
`
`
`
`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. - Ex. 2004, p. 13
`
`

`

`Case 2:19-cv-09474-SJO-E Document 47 Filed 03/31/20 Page 15 of 17 Page ID #:391
`
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`notwithstanding the failure to offer a FRAND-compliant license to the ’191 Patent.
`Such conduct breached LGE’s contract with IEEE, of whom Hisense is a third party
`beneficiary, and misled Hisense into incorporating the 802.11ac standard in its
`products only now to seek damages that do not comport with FRAND, including
`injunctive relief. Under theories of patent misuse, breach of contract, unclean
`hands, and equitable estoppel, one or more of the asserted patents are
`unenforceable.
`
`SIXTH DEFENSE
`(Extraterritoriality)
`119. LGE’s claims for patent infringement are precluded in whole or in part
`to the extent that any accused functionality or acts are located or performed outside
`the United States. Hisense makes, uses, and sells products and components outside
`of the United States, including Mexico and China. LGE’s claims are barred in
`whole or in part as outside the scope of 35 U.S.C. § 271. By way of example and
`without limitation, to the extent that components of Hisense’s products for
`assembly in Mexico are temporarily in transit within the United States, such
`components are staple articles or commodities of commerce suitable for substantial
`non-infringing use, were not especially made or especially adapted for the
`instrumentalities LGE has accused of infringing the asserted patents, and any use
`attributable to Hisense of such component was without knowledge that such use
`would infringe a U.S. patent.
`
`SEVENTH DEFENSE
`(Ensnarement)
`120. LGE’s claims are barred or limited in whole or in part by the doctrine
`of ensnarement because, on information and belief, those claims would ensnare the
`prior art of the asserted patents.
`121.
` For example, and not by way of limitation, LGE’s assertions
`regarding the ’452 patent would ensnare one or more prior art references, such as
`
`-14-
`
`
`
`HISENSE’S SECOND AMENDED ANSWER TO COMPLAINT
`
`Case No. 2:19(cid:237)cv(cid:237)09474(cid:237)SJO(cid:237)E
`
`Patent Owner LG Electronics Inc. -