IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`3G LICENSING, SA.,
`KONINKLIJKE KPN N.V.,
`and ORANGE S A.,
`
`Plaintiffs,
`
`V.
`
`HTC CORPORATION,
`
`Defendant
`
`C.A.N0.17-83
`Redacted
`
`Public Version
`
`MEMORANDUM ORDER
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`Plaintiffs 3G Licensing, S.A., Koninklijke KPN N.V. ("KPN"), and Orange S A.
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`(together, "Plaintiffs") assert claims 3 and 4 of U.S. Patent No. 6,212,662 (the "'662 patent")
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`against Defendant HTC Corporation ("HTC" or "Defendant"). {See D.1.530 at 1) The patent-
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`in-suit relates to a method for the transmission of data with transmission error checking.
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`Pending before the Court are Defendant's Daubert motions (D J. 529, 530 at 15-20) and
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`summary judgment motions (D.I. 524; DJ. 529, 530 at 1-14) as well as Plaintiffs' Daubert
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`motions (D.1.519,520 at 2-5) and partial summary judgment motions (D.1.517,518 at 3-10,23-
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`TT)} The Court heard oral argument on May 11,2021. {See D.1.593) ("Tr.")
`
`^ The Court also carefiilly considered several motions filed in C.A. No. 17-85, Plaintiffe' action
`against LG Elcctronics Inc. ("LGE") and LG Electronics U.S.A., Inc. ("LGEKR"). These
`motions included Plaintiffs' Daubert motion (D.1.429,430 at 5-8) and partial summary
`judgment motion (D.1.427,428 at 10-23); LGE's Douherf motion (D.1.434,435 at 5-^ and
`summary judgment motion (D.1.434,435 at 2-4); and LGEKR's summary jw^ment motion
`(D.1.434,435 at 4-5). On June 25,2021, after die Court heard oral argument on the motions,
`Plaintiffe and the LG Defendants notified the Court that Ihey had finalized an agreement to
`resolve their dispute and stipulated to dismissal. {See D.1.508) The claims and counterclaims in
`C.A. No. 17-85 have been dismissed with prejudice, and the motions listed in this footnote are no
`longer pending before the Court
`
`1
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`Daubert Motions to Exclude
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`LEGAL STANDARDS
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`In Daubert V. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993), the
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`Supreme Court explained that Federal Rule of Evidence 702 creates "a gatekeeping role for the
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`[trial] judge" in order to "ensur[e] that an expert's testimony both rests on a reliable foundation
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`and is relevant to the task at hand." Rule 702(a) requires that expert testimony "help the trier of
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`fact to understand the evidence or to determine a fact in issue." Expert testimony is admissible
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`only if "the testimony is based on sufficient facts or data," "the testimony is the product of
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`reliable principles and methods," and "the expert has reliably applied the principles and methods
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`to the facts of the case." Fed. R. Evid. 702(b)-(d).
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`There are three distinct requirements for proper expert testimony: (1) the expert must be
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`qualified; (2) the opinion must be reliable; and (3) the expert's opinion must relate to the
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`facts. See Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000).
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`Summary Judgmeut
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`Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, "[t]he court shall grant
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`summary judgment if the movant shows that there is no genuine dispute as to any material fact
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`and the movant is entitled to judgment as a matter of law." The moving party bears the burden
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`of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus.
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`Co., Ltd. V. Zenith Radio Corp., 475 U.S. 574, 585-87, 585 n.lO (1986). An assertion that a fact
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`cannot be - or, altematively, is - genuinely disputed must be supported either by "citing to
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`particular parts of materials in the record, including depositions, documents, electronically stored
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`information, affidavits or declarations, stipulations (including those made for purposes of the
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`motion only), admissions, interrogatory answers, or other materials" or by "showing that the
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`materials cited do not establish the absence or presence of a genuine dispute, or that an adverse
`2
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`party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(A) &
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`(B). If the moving party has carried its burden, the nonmovant must then "come forward with
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`specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587
`
`(internal quotation marks and emphasis omitted). The Court will "draw all reasonable inferences
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`in favor of the nonmoving party, and it may not make credibility determinations or weigh the
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`evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,150 (2000).
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`To defeat a motion for summary judgment, the nonmoving party must "do more than
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`simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475
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`U.S. at 586; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
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`party opposing summary judgment "must present more than just bare assertions, conclusory
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`allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
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`omitted), abrogated on other grounds by Rotkiske v. Klemm, 890 F.3d 422 (3d Cir. 2018). The
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`"mere existence of some alleged factual dispute between the parties will not defeat an otherwise
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`properly supported motion for summary judgment." Anderson v. Liberty Lobby, Inc., All U.S.
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`242,247-48 (1986). A factual dispute is genuine only where "the evidence is such that a
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`reasonable jury could return a verdict for the nonmoving party." Id. at 248. "If the evidence is
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`merely colorable, or is not significantly probative, summary judgment may be granted." Id. at
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`249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, All U.S. 317, 322 (1986)
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`(stating entry of summary judgment is mandated "against a party who fails to make a showing
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`sufficient to establish the existence of an element essential to that party's case, and on which that
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`party will bear the burden of proof at trial"). Thus, the "mere existence of a scintilla of
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`evidence" in support of the nonmoving party's position is insufficient to defeat a motion for
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`summary judgment. Anderson, All U.S. at 252. To defeat the motion, "there must be evidence
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`on which the jury could reasonably find" for the nonmoving party. Id.
`3
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`Daubert Motions
`
`DISCUSSION
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`Plaintiffs' Motion (D.L 519) To Exclude Dr. Jeffay's "Check Data" Construction
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`Plaintiffs move to exclude Dr. Kevin Jeffay's testimony regarding the "check data"
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`limitation, arguing it is inconsistent with the intrinsic record and with this Court's construction of
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`the term. (D.I. 520 at 2-3) Plaintiffs contend that Defendant seeks through Dr. Jeffay to renew
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`its unsuccessful argument that "check data" should be construed narrowly as being used for
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`detecting but not correcting errors.^ (Id.)
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`The Court previously construed "check data" as meaning "supplementary data for use in
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`checking for transmission errors." (D.1.484 at 7-8) (emphasis added) Although the Court
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`declined to adopt Defendant's construction, which substituted the term "detecting" for "checking
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`for," the Court did not consider at the Markman stage whether "checking for" differs from
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`"detecting" or whether - as Plaintiffs assert - "checking for" encompasses both detecting and
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`correcting. (See id.) These issues were not raised by the parties; instead, the Court's focus
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`during Markman was on whether "check data" had to be a short-hand representation of the
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`original data. (See id.)
`
`The Court refines its construction of "check data" as used in claim 1 of the '662 patent to
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`clarify that "check data" does not preclude error correction. This is consistent with the Court's
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`previous construction, which implicitly rejected Defendant's narrowing construction, which
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`would have limited "check data" merely to "detection," without allowing for the possibility also
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`^ Defendant clarified its position in its opposition brief, stating it is "not arguing that
`error correction and detection are mutually exclusive, or that the claims do not allow for error
`correction when performed in conjunction with the claimed error detection." (D.I. 573 at 3)
`This position appears to be inconsistent with Dr. Jeffay's opinion that "the '662 patent only
`proposes a method for detecting ... errors, but not for correcting them." (D.I. 521 Ex. 33 If 64)
`4
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`of error correction. Plaintiffs point to persuasive evidence from the specification (see '662
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`patent at 6:36-57) (depicting, in one embodiment, an example of error correction and detection)
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`and file history {see D.I. 521 Ex. 34 at 187,289) (Examiner pointing to "error correction" as
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`non-limiting example of "error checking" in two prior art references) suggesting that the patentee
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`did not intend to limit error checking to error detecting.
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`In light of this clarified construction. Dr. Jeffay's testimony, which asserts that the '662
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`patent is not at all directed to error correction, is inconsistent with the Court's claim construction.
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`The Court, therefore, grants Plaintiffs' motion.
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`Plaintiffs' Motion (D.1.519) To Exclude Dr. Jeffay's
`"Modify the Permutation in Time" Construction
`
`Plaintiffs move to exclude Dr. Jeffay's testimony regarding the "modify the permutation
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`in time" limitation, arguing it is inconsistent with the Court's construction of the term. (D.l. 520
`
`at 4-5) The Court previously construed "modify the permutation in time" as meaning "change
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`the permutation from time to time," precisely as Plaintiffs had proposed. (D.l. 484 at 8-9)
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`(emphasis added)
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`Plaintiffs argue that Dr. Jeffay's opinion that claim 2 of the '662 patent requires the
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`device to "consider the passage of time" has been rejected by the Court; instead, all that is
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`required is that the permutation be configured to change. (D.l. 520 at 4) Defendant responds
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`that Dr. Jeffay has only applied the Court's construction to rebut the opinion of Plaintiffs'
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`expert, which Defendant argues removes the "from time to time" requirement by opining that the
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`claims only require a varying device capable of changing the permutation. (D.l. 573 at 3-5) In
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`Defendant's view. Dr. Jeffay's opinion simply explains why the "from time to time" limitation is
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`not "superfluous" (Tr. at 70), adding that in the two embodiments cited in the Court's Markman
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`opinion, "the device measures the passage of time by counting the number of bits processed
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`5
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`(every n bits), or tracking changes in the data packet index {e.g., channel number, sequence
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`number, or time indication)" (D.I. 573 at 4).
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`With respect to this term. Dr. Jeffay is applying the Court's construction rather than
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`contradicting it. See Align Tech., Inc. v. 3Shape A/S, 2021 WL 534903, at *2 (D. Del. Feb. 12,
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`2021) ("While an expert witness is not allowed to deviate from the Court's claim construction,
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`he is allowed to provide opinions reflecting the application of the Court's claim construction to
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`the facts of this case."). There is, thus, no basis to exclude his opinion. Plaintiffs' motion is
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`denied.
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`Defendant's Motion (D.L 529) To Exclude Dr. Madisetti's Willfulness Opinions
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`Defendant argues that Dr. Vijay Madisetti improperly opines on Defendant's state of
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`mind and the ultimate issue of willfulness, so his testimony should be excluded. (D.I. 530 at 15-
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`16) Dr. Madisetti concludes, for example, that HTC was aware of the '662 patent as early as
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`(D.I. 572
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`He further
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`states that he was "not aware of any basis by which any Defendant reasonably could have
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`understood that its [i]nfringing '662 [pjroducts did not infringe the '662 [pjatent." {Id. 1110)
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`Additionally, he opines that if the infringing products comply with the relevant standards, and
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`the '662 patent is standard essential, it follows that Defendant willfully infringed the '662 patent.
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`{Id. nil 101-10)
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`Notwithstanding Plaintiffs' representation during oral argument that they would not seek
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`to have Dr. Madisetti give a willfulness opinion at trial,^ the Court deems it still necessary to
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`^ Plaintiffs, for the first time during oral argument, committed to not asking Dr. Madisetti
`questions such as, "did [Defendant] willfully infringe?" or "[d]o you think [Defendant] willfully
`infringed?" (Tr. at 154)
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`grant the motion. Dr. Madisetti's opinions are not merely "technical," as Plaintiffs suggest.
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`(D.I. 571 at 28) Rather, they opine on his understanding of Defendant's state of mind, or what
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`Defendant "reasonably could have understood," and on the ultimate issue of willfulness. (See
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`D.I. 530 at 15) These opinions both exceed Dr. Madisetti's expertise and invade the province of
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`the jury. See Zimmer Surgical, Inc. v. Stryker Corp., 365 F. Supp. 3d 466,497 (D. Del. 2019)
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`("Expert testimony as to ... state of mind offers no more than the drawing of an inference from
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`the facts of the case ... and permitting expert testimony on this subject would be merely
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`substituting the expert's judgment for the jury's.").
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`Plaintiffs suggest that, as in Bombardier Recreational Products Inc. v. Arctic Cat Inc.,
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`2017 WL 758335, at *4-5 (D. Minn. Feb. 24,2017), their expert's opinion on willful
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`infringement should be permitted, in order to "provid[e] context for the jury's decision regarding
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`willfulness." (D.I. 571 at 29) In Bombardier, the Court determined that expert testimony would
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`aid the jury in understanding technical evidence regarding the snowmobile industry that was
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`relevant to the plaintiffs theory that "copying" had occurred. 2017 WL 758335, at *4. Here,
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`however. Dr. Madisetti does not have any particular expertise about HTC's state of mind that
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`sets him apart from a lay juror; his opinion on these issues will not be helpful to the jury.
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`Defendant's Motion (D.L 529) To Exclude
`Dr. Madisetti's "Single Interleaver" Opinions
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`Defendant moves to exclude testimony from Dr. Madisetti's rebuttal report that, in its
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`view, contends the claimed varying device is limited to a single interleaver. (D.I. 530 at 16-19)
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`(citing D.I. 533-1 Ex. 10 Tflf 287-93) Specifically, HTC points to Dr. Madisetti's statement that
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`^ Even assuming what HTC "should have known" is relevant to the willfulness inquiry after
`Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), see Arctic Cat Inc. v.
`Bombardier Recreational Products Inc., 876 F.3d 1350,1371 (Fed. Cir. 2017), Plaintiffs can
`convey substantially the same information about KPN's communications with HTC through fact
`witnesses.
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`7
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`claim 2 "requires the presence of a single, multi-permutation varying device that is capable of
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`changing from time to time the permutation." (D.I. 533-1 Ex. 10 If 289) Defendant asserts that
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`Dr. Madisetti has applied a new claim construction that contradicts this Court's construction,
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`which never limited the claimed varying device to one interleaver. (D.!. 530 at 17)
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`In response, Plaintiffs argue that Dr. Madisetti only opined that there is at least one
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`interleaver, acknowledging that the varying device may comprise one or more interleavers. (D.I.
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`571 at 30-31, 33) The Court agrees. Read in context. Dr. Madisetti's statements suggest that the
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`varying device can, but need not, include multiple interleavers, which in his view distinguishes
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`the invention from the prior art. {See, e.g., D.I. 533-1 Ex. 10 ^ 291) (explaining that Dr. Jeffay
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`did not suggest that Barbulescu prior art reference "obviate[d] the need for a device to include
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`multiple interleavers - the core inventive element of [c]laim 2") The Court is not convinced that
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`Dr. Madisetti's opinions construe the claims as requiring a single interleaver. Therefore, they are
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`not inconsistent with the Court's construction. Defendant's motion is denied.
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`Defendant's Motion (D.L 529) To Exclude Dr. Madisetti's
`"Be Able To Apply More Than One Permutation" Opinions
`
`Defendant argues that Dr. Madisetti's opinions are inconsistent with the Court's
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`construction of "modify the permutation in time" in claim 2 as meaning "change the permutation
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`from time to time." (D.L 530 at 19-20) In Defendant's view, the opinions read out the "in time"
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`requirement, suggesting the claim is satisfied if the device is merely "able to apply more than
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`one permutation." {Id.)
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`Plaintiffs note that the Court agreed that claim 2 can be met by changing the permutation
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`as a function of time or based on the varying of the data. {See D.I. 484 at 9) ("[T]he Court
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`agrees with Plaintiffs that their proposed construction is supported by the specification language
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`that the permutation (1) can 'be varied every n bits, where n is > 1' and (2) 'can be varied on the
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`8
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`basis of one or more parameters of the data packet' to 'accomplish a varying, i.e., time-
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`dependent checking function.'") (quoting D.I. 438 at 29, 36)
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`The Court agrees with Plaintiffs that Dr. Madisetti's opinions are not clearly inconsistent
`
`with its construction. Therefore, the Court denies Defendant's motion.
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`Summary Judgment Motions
`
`Defendant's Motion For Summary Judgment
`("MSJ") (D.L 529) Of No Direct Infringement
`
`Defendant moves for summary judgment of no direct infringement on the ground that the
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`accused devices, as imported and sold, lack the claimed "varying device" that is "further
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`configured to modify the permutation in time." (D.I. 530 at 1) (citing '662 patent at cl. 2) There
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`does not appear to be any genuine dispute of material fact as to how the accused products work.
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`(^See Tr. at 12, 56-59) It is undisputed that when the devices are sold, they are not connected to a
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`network and, without that connection, they cannot perform the claimed functionality. (See id. at
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`14,23) That is, in order for the accused devices to modify the permutation in time, the user must
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`first connect the devices to a cellular network, and that network must send interleaver
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`configuration parameters to the accused devices.^ (See D.I. 530 at 1-2; Tr. at 12,14, 56-57)
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`The parties dispute whether, as a matter of law, the need for the accused devices to
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`undergo this two-step process before they possess the accused functionality precludes those
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`devices from meeting the "configured to" limitation.^ (See Tr. at 12, 57) The Federal Circuit has
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`^ Defendant further explained that the network determines which network resources to allocate to
`the device and sends back an uplink grant specifying this information. (See Tr. at 13) For
`certain networks, including the three accused networks (W-CDMA, CDMA-2000, and LTE), the
`uplink grant includes the interleaver configuration parameters. (See id.)
`
`^ Plaintiffs acknowledge that the phrase "configured to" in the '662 patent has the same meaning
`as in the relevant Federal Circuit cases relied upon by both parties. (See Tr. at 41)
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`construed "configured to" as meaning "programmed to." See Nevro Corp. v. Bos. Sci. Corp.,
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`955 F.3d 35,40-42 (Fed. Cir. 2020) ("[W]e construe 'configured to' to mean 'programmed
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`to.'"). If an accused product is capable of performing the claimed function but must be modified
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`before it can do so, it will not meet a "configured to" limitation. See Typhoon Touch Techs., Inc.
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`V. Dell, Inc., 659 F.3d 1376,1380-81 (Fed. Cir. 2011); see also Telemac Cellular Corp. v. Topp
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`Telecom, Inc., 247 F.3d 1316,1330 (Fed. Cir. 2001) ("[TJhat a device is capable of being
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`modified to operate in an infringing manner is not sufficient, by itself, to support a finding of
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`infringement").
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`Plaintiffs concede that the Federal Circuit has made this point clear. {See Tr. at 34) But
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`they distinguish between a device that merely has the capability of being configured to perform
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`the claimed function (which would not infringe) and a device that is already configured to have
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`the capability to perform the claimed function (which would infnnge, in their view). {Id. at 34-
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`35) Plaintiffs rely on Chrimar Holding Co., LLC v. ALE USA Inc., 732 F. App'x 876, 879 (Fed.
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`Cir. 2018), for the proposition that a "configured to" limitation requires only that a device "have
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`the ability" to act as claimed. {See D.I. 571 at 3-4) The term "configured to," however, was not
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`at issue in Chrimar. There, the district court had construed the term "physically connect" to
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`require that "the components be configured (have the ability) to physically coimect, rather than
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`actually be physically cormected." Chrimar, 732 F. App'x at 885 (emphasis omitted). The
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`Court arrived at this conclusion by comparing the term "physically connect" in independent
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`claim 1 with a limitation in a dependent claim requiring that certain pairs of conductors "are
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`physically connected." Id. Applying the doctrine of claim differentiation, the Court determined,
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`in that particular context, that claim 1 was directed to capability, rather than actual operation.
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`See id. Chrimar does not, however, establish the broad proposition that "configured to" is
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`necessarily satisfied when a device merely "has the ability" to act as claimed.
`10
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`In the Court's view, the relevant question is whether the receipt of parameters from the
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`network is a modification of the devices that would preclude a finding of infiingement
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`Defendant argues that the term "configured to" requires the accused devices to have all the
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`structural components (in this case, the code, hardware, and parameters) necessary to perform
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`the claimed function as sold without modification. {See Tr. at 20-22) Since the "parameters are
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`clearly not part of the accused device" at the time the devices are sold, in Defendant's view this
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`issue is "clear." {Id. at 43) For Plaintiffs, the issue is equally "cut and dry," as the "accused
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`devices standing alone have the software installed on them" at the time they are sold, and that
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`code is "not changed in any way by the network." {Id. at 28-31)
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`As to this dispute, a few cases from the Federal Circuit are instructive. For example, in
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`Nevro, 955 F.3d at 41, which Defendant cited for the first time during oral argument, the Court
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`construed "configured to generate" to require "programming the signal generator (i.e., setting
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`parameters) to generate the claimed signals." The claims at issue explicitly contemplated
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`specific parameters, claiming, for example, "[a] spinal cord modulation system comprising a
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`signal generator configured to generate a therapy signal having a frequency of 10 kHz, an
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`amplitude up to 6 mA, and p[ul]ses having a pulse width between 30 microseconds and 35
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`microseconds." Id. at 40 (emphasis omitted). Relying on this specific claim language and the
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`patent specification, the Court concluded that programming the claimed signal generator required
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`setting the claimed parameters. See id. at 41. Here, however, the asserted claims do not
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`contemplate that "configured to modify the permutation in time" requires setting particular
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`parameters. Moreover, the plaintiff in Nevro argued that "configured to" means "designed to,"
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`which the Federal Circuit rejected. Id. at 41-42. Plaintiffs make no such argument here; rather,
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`they contend that the accused products already contain the necessary software and require no
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`further configuration.
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`11
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`By contrast, Nozomi Communications, Inc. v. Nokia Corp., 739 F.Sd 1339,1345 (Fed.
`
`Cir. 2014), involved accused devices that required a user to purchase and install software onto
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`them before the devices would possess the claimed functionality. The Federal Circuit held that
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`this purchase and installation "clearly constitute[d] a 'modification' of the accused products" that
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`precluded a finding of infringement. Id. The Court further characterized the software
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`installation as "not imlocking existing functionality, but adding new functionality not currently
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`present." Id. at 1346; see also TQ Delta, LLC v. ADTRAN, Inc., 2019 WL 4277026, at *4 (D.
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`Del. Sept. 10,2019) (finding chipset capable of operating in infringing manner only if customer
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`affirmatively enabled pre-programmed settings did not meet "operable to" requirement).
`
`In M2MSolutions LLC v. Sierra Wireless America, Inc., 2020 WL 7767639, at *13 (D.
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`Del. Dec. 4,2020), report and recommendation adopted by C.A. No. 14-1102-RGA D.I. 214
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`(Mar. 31,2021), the Court held that the claimed "configured to use a memory" limitation was
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`met even where the accused products were sold without all of the structure necessary to meet that
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`limitation. In M2MSolutions, it was undisputed that the accused products were sold without
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`SIM cards and could only meet the limitation at issue if the user inserted one. See id. at * 12. In
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`finding that the accused products nonetheless infringed, the Court noted that "the non-SIM
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`products are designed to operate with SIM cards in this manner, and no new functionality is
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`required to utilize the SIM card." M at *13. The Court was persuaded that the insertion of a
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`SIM card simply activated the device's existing functionality, akin to pressing an "ON" button.
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`Id.
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`Likewise, in the instant case, the Court concludes that the receipt of parameters from the
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`network is more akin to "unlocking existing functionality" (i.e., pressing an "ON" button) than
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`"adding new functionality" (i.e., modifying the device). Nozomi, 739 F.3d at 1346. The record
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`reflects that the "accused devices standing alone have the software installed on them" when sold,
`12
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`WAG, Exhibit 2005
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 12 of 26
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`and that the code is "not changed in any way by the network." (Tr. at 28-31; see also id. at 39
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`(describing what network sends to device as "an informational message")) In describing the
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`accused products, Plaintiffs' Dr. Madisetti stated that "the varying device is further configured
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`(without being rebuilt, recoded, or redesigned) such that it is able to modify the permutation it
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`applies from time to time." {See D.I. 571 at 2) (citing D.I. 572 Ex. 37 at 78) Defendant's Dr.
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`Jeffay agreed with this understanding, stating, "I have seen nothing showing that the network
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`causes the accused products to modify the configuration parameters for the interleaver." {Id. at 3
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`n.4 (citing D.I. 572 Ex. 41 240); see also Tr. at 35)
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`Defendant's reference to In re Certain Digital Media Devices, Inv. No. 337-TA-882,
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`Initial Det. (ITC Aug. 7,2014), does not alter the Court's conclusion. {See D.I. 585 at 2; see also
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`D.I. 596-97) In that case, the International Trade Commission ("ITC") determined that allegedly
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`infringing tablets were not "configured to" perform the accused functionality until the user took
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`several additional steps, including "accepting the terms and conditions of use, connecting the
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`device to a local area network [connected to a second device], accessing a content server over the
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`Internet, and registering and paying for services." (D.I. 597 Ex. A at 19,131) Further, the
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`claims in that case required performance of certain actions "without user input." {Id. at 24-25)
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`Accordingly, the ITC concluded that the accused tablets were not "configured to" perform the
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`accused functionality and, thus, did not infiinge. As Plaintiffs note, the '662 patent contains no
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`autonomous requirement, and the accused devices need not undergo a long list of steps or
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`connect with a second device before they can perform the accused functionality. {See Tr. at 32)^
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`^ Plaintiffs point io Apple Inc. v. Wi-LANInc., 25 F.4th 960 (Fed. Cir. 2022), in which the
`Federal Circuit relied on testimony from Dr. Madisetti in a somewhat similar context. {See D.I.
`609) In Apple, the Federal Circuit rejected Apple's argument that its accused phones could not
`infringe as sold because they did not have the required "user connections" until the user
`connected to a cellular network. 25 F.4th at 970. The Court pointed to Dr. Madisetti's testimony
`for the plaintiff in the case as part of the substantial evidence supporting the conclusion that a
`13
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`WAG, Exhibit 2005
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 13 of 26
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`jto sum, having ccmsidered Ihe relevant authority, as well as testiinony from experts on
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`both sides, the Court finds that a reascmabie jury could coiKslude tibat the accused functionality is
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`present in the accused produchi, wifrunxt any required modification. Hence, die Court denies
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`Defendant's motion.
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`DdTendant's MSJ (DX 524) Of No InfriiigiBg Sales Tliroiigh|
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`Defendant argues that its products sold 1hrou^|[||||||||||||||[^
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`includii:^ its 3.9G
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`prodiuds, caimot mfringe as a matter of law. (See DJ. S2S) hi particular, HTC asserfr diat an
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`agre^ent it mack witii KPN on October 30,2009 (die "2(K® Agreement") audiorized HTC's
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`sales tfaroi^ August 31,2014, whm the agremnent term ended (Id. at 2-4) Under Section 2.1
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`of the 2009 Agreement, KPN panted HTC an ^ress license to two |
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`(DX 526 Ex. A at 7308) The '662 patent was not one of the|
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`histead, as the parties a^ree (see DX 525 at 3; D.I. 571 at 18), the '662 patent is among
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`die
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`re&enced in Section 2.5 of die 2009 i^reement, which states:
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`(DX 526 Ex. A at 7309)
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`connection to a cellular network was not required to satisfy die '^user connections" requirement.
`Id. While Dr. hkdisetti's testimony in that case may bear some resemblance to his testimony in
`tiiis case, die Court agre^ widi HTC that die ccmtext here is materially drfferent. (See DX 610)
`While Apple does not particularly hefy Pkintiffr hme, it certainly does not detract from the
`Court's conclusion. Defendant's requ^ (see id.) that the Court strike Plaintiffr' Notice of
`Siq^lemental Authority (see DX 609) is cknied The Court finds no violation of Delaware
`Local Pule 7.1.2(b) an^ instead, has found both parties' discussion of the Apple case helpfid to
`its evaluation of the motion.
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`14
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`WAG, Exhibit 2005
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 14 of 26
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`HTC argues that Section 2.5 recites an "unconditionar' covenant not to sue that
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`authorized its sales from October 30,2009 to
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`(D.I. 525 at 2-3) By contrast.
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`Plaintiffs argue that the plain language of Section 2.5 provides only that KPN cannot initiate
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`proceedings asserting the '662 patent until after the 2009 Agreement expires. (D.I. 571 at 18)
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`In TramCore, LP v. Electronic Transaction Consultants Corp., 563 F.3d 1271,1275
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`(Fed. Cir. 2009), the Federal Circuit stated: "this court and its predecessors have on numerous
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`occasions explained that a non-exclusive patent license is equivalent to a covenant not to sue."
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`There, the clause at issue provided that TransCore had agreed "not to bring any demand, claim,
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`lawsuit, or action ... for future infringement... for the entire remainder of the terms of the
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`respective [patents]." Id. at 1273. Plaintiffs attempt to distinguish TransCore by arguing that the
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`Federal Circuit characterized the clause at issue there as "unconditional," whereas Section 2.5 is
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`better characterized as a "temporary" covenant not to sue. (D.I. 571 at 18-19) It is true that the
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`TransCore Court noted: "[t]he question for this court is whether an unconditional covenant not to
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`sue authorizes sales by the covenantee for purposes of patent exhaustion." 563 F.3d at 1274.
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`When describing the covenant not to sue as "imconditional," however, the Federal Circuit
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`focused on the fact that the grantee "did not, as it could have, limit this authorization to, for
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`example, 'making' or 'using.'" Id. at 1276. Instead, the grantee used the more general term
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`"infringement." See id. It is undisputed that Section 2.5 encompasses sales, |
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`(D.I. 526 Ex. A at 7309)
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`Further, even if the Court agreed with Plaintiffs that Section 2.5 is not "unconditional,"
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`^st-TransCore cases have not drawn a hard line between imconditional and conditional
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`covenants not to sue, in concluding that such covenants are equivalent to a non-exclusive patent
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`license. For example, in Vectura Ltd. v. GlaxoSmithKline LLC, 2019 WL 1352767 (D. Del. Mar.
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`26,2019), the Court considered a time-limited covenant not to initiate suit very similar to
`15
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`WAG, Exhibit 2005
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 15 of 26
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`Section 2.5. Applying TransCore, the Court concluded that the covenant authorized the
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`licensee's conduct