throbber
Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 1 of 28 PageID #: 1617
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`
`
`Plaintiff,
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT, LLC,
`
`
`
` v.
`
`LG ELECTRONICS, INC., ET AL.
`
`
`
`Defendants.
`
`
`
`
`
`
`Civil No. 6:14-cv-982
`
`CONSOLIDATED LEAD CASE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANT SPRINT SOLUTIONS, INC., SPRINT SPECTRUM, L.P., AND BOOST
`MOBILE, LLC’S ANSWER TO FIRST AMENDED COMPLAINT
`
`
`
`Defendant Sprint Solutions, Inc., Sprint Spectrum L.P., and Boost Mobile, LLC
`
`(“Sprint”) files its Answer to Plaintiff Cellular Communications Equipment, LLC’s (“CCE”)
`
`First Amended Complaint. To the extent that any allegation contained in this answer is not
`
`specifically admitted, it is denied.
`
`THE PARTIES
`
`1.
`
`Sprint is without knowledge or information sufficient to form a belief as to the
`
`allegations contained in Paragraph 1 of the First Amended Complaint, and therefore denies the
`
`same.
`
`2.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 2 of the First Amended Complaint,
`
`and therefore denies same.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 2 of 28 PageID #: 1618
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`3.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 3 of the First Amended Complaint,
`
`and therefore denies same.
`
`4.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 4 of the First Amended Complaint,
`
`and therefore denies same.
`
`5.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 5 of the First Amended Complaint,
`
`and therefore denies same.
`
`6.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 6 of the First Amended Complaint,
`
`and therefore denies same.
`
`7.
`
`Sprint Nextel Corporation has been dismissed from this action; thus, no response
`
`to this allegation is necessary.
`
`8.
`
`Sprint admits that Sprint Solutions, Inc. is a Delaware Corporation, but denies that
`
`its principal place of business is in Reston, Virginia. Sprint admits that Sprint Solutions, Inc.
`
`does business in this judicial district, that it was served with process, and that it has appeared in
`
`this action.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 3 of 28 PageID #: 1619
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`9.
`
`Sprint admits that Sprint Spectrum, L.P. is a Delaware limited partnership with its
`
`principal place of business in Overland Park, Kansas. Sprint admits that Sprint Spectrum, L.P.
`
`does business in this judicial district, that it was served with process, and that it has appeared in
`
`this action.
`
`10.
`
`Sprint admits that Boost Mobile, LLC is a Delaware limited liability company,
`
`but denies that its principal place of business is in Irvine, California. Sprint admits that it does
`
`business in this judicial district, that it was served with process, and that it has appeared in this
`
`action.
`
`11.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 11 of the First Amended Complaint,
`
`and therefore denies same.
`
`12.
`
`This allegation is not directed to Sprint; thus, no answer is necessary. To the
`
`extent an answer is necessary, Sprint is without knowledge or information sufficient to form a
`
`belief as to the allegations contained in Paragraph 12 of the First Amended Complaint,
`
`and therefore denies same.
`
`JURISDICTION AND VENUE
`
`13.
`
`Sprint admits that CCE’s First Amended Complaint purports to be an action for
`
`patent infringement arising under 35 U.S.C. § 1 et seq.; however, Sprint denies that CCE’s First
`
`Amended Complaint sets forth valid or meritorious claims of patent infringement.
`
`14.
`
`Sprint admits
`
`that
`
`this Court has
`
`subject matter
`
`jurisdiction over
`
`meritorious contentions for patent infringement generally under 28 U.S.C. §§ 1331, 1338(a), and
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 4 of 28 PageID #: 1620
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`1367; however, Sprint denies that CCE’s First Amended Complaint sets forth valid or
`
`meritorious claims of patent infringement.
`
`15.
`
`Sprint admits that it has conducted business in this judicial district. Sprint is
`
`without knowledge or sufficient information to form a belief as to the allegations directed at
`
`other parties and, therefore, denies same. Sprint denies all remaining or different allegations
`
`contained in Paragraph 15 of the First Amended Complaint.
`
`16.
`
`Sprint admits that it has conducted business in this judicial district. Sprint is
`
`without knowledge or sufficient information to form a belief as to the allegations directed at
`
`other parties and, therefore, denies same. Sprint denies all remaining or different allegations
`
`contained in Paragraph 16 of the First Amended Complaint.
`
`17.
`
`Sprint admits that it has conducted business in this judicial district. Sprint is
`
`without knowledge or sufficient information to form a belief as to the allegations directed at
`
`other parties and, therefore, denies same. Sprint denies all remaining or different allegations
`
`contained in Paragraph 17 of the First Amended Complaint.
`
`COUNT I
`
`(INFRINGEMENT OF U.S. PATENT NO. 8,385,966)
`
`18.
`
`19.
`
`Sprint incorporates its responses to Paragraphs 1 through 17 herein by reference.
`
`Sprint admits that Exhibit A to the First Amended Complaint purports to be U.S.
`
`Patent No. 8,385,966 and that it speaks for itself. Sprint is without knowledge or information
`
`sufficient to form a belief as to the remaining allegations contained in Paragraph 19 of the First
`
`Amended Complaint, and therefore denies the same.
`
`20.
`
`21.
`
`Denied.
`
`Denied.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 5 of 28 PageID #: 1621
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`22.
`
`23.
`
`24.
`
`Denied.
`
`Denied.
`
`Sprint admits that it is a member of the 3GPP organization. Sprint is without
`
`knowledge or information sufficient to form a belief as to the remaining allegations contained in
`
`Paragraph 24 of the First Amended Complaint, and therefore denies the same.
`
`25.
`
`26.
`
`27.
`
`28.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Sprint is without knowledge or information sufficient to form a belief as to the
`
`allegations contained in Paragraph 28 of the First Amended Complaint, and therefore denies the
`
`same.
`
`29.
`
`30.
`
`Denied.
`
`The allegations in Paragraph 30 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 30 of the First Amended Complaint, and therefore denies same.
`
`31.
`
`Sprint admits that it offers LG handsets for sale. Sprint denies the remaining
`
`allegations in Paragraph 31 of the First Amended Complaint.
`
`32.
`
`The allegations in Paragraph 32 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 32 of the First Amended Complaint, and therefore denies same.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 6 of 28 PageID #: 1622
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`33.
`
`The allegations in Paragraph 33 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 33 of the First Amended Complaint, and therefore denies same.
`
`34.
`
`Denied.
`
`COUNT II
`
`(INFRINGEMENT OF U.S. PATENT NO. 8,848,556)
`
`35.
`
`36.
`
`Sprint incorporates its responses to Paragraphs 1 through 17 herein by reference.
`
`Sprint admits that Exhibit B to the First Amended Complaint purports to be U.S.
`
`Patent No. 8,848,556 and that it speaks for itself. Sprint is without knowledge or information
`
`sufficient to form a belief as to the remaining allegations contained in Paragraph 36 of the First
`
`Amended Complaint, and therefore denies the same.
`
`37.
`
`38.
`
`39.
`
`40.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Sprint admits that it is a member of the 3GPP organization. Sprint is without
`
`knowledge or information sufficient to form a belief as to the remaining allegations contained in
`
`Paragraph 40 of the First Amended Complaint, and therefore denies the same.
`
`41.
`
`42.
`
`Denied.
`
`The allegations in Paragraph 42 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 42 of the First Amended Complaint, and therefore denies same.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 7 of 28 PageID #: 1623
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`43.
`
`Sprint admits that it offers LG handsets for sale. Sprint denies the remaining
`
`allegations in Paragraph 43 of the First Amended Complaint.
`
`44.
`
`The allegations in Paragraph 44 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 44 of the First Amended Complaint, and therefore denies same.
`
`45.
`
`Denied.
`
`COUNT III
`
`(INFRINGEMENT OF U.S. PATENT NO. 8,868,060)
`
`46.
`
`47.
`
`Sprint incorporates its responses to Paragraphs 1 through 17 herein by reference.
`
`Sprint admits that Exhibit A to the First Amended Complaint purports to be U.S.
`
`Patent No. 8,868,060 and that it speaks for itself. Sprint is without knowledge or information
`
`sufficient to form a belief as to the remaining allegations contained in Paragraph 47 of the First
`
`Amended Complaint, and therefore denies the same.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Sprint admits that it is a member of the 3GPP organization. Sprint is without
`
`knowledge or information sufficient to form a belief as to the remaining allegations contained in
`
`Paragraph 52 of the First Amended Complaint, and therefore denies the same.
`
`53.
`
`54.
`
`Denied.
`
`Denied.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 8 of 28 PageID #: 1624
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`55.
`
`56.
`
`Denied.
`
`Sprint is without knowledge or information sufficient to form a belief as to the
`
`allegations contained in Paragraph 56 of the First Amended Complaint, and therefore denies the
`
`same.
`
`57.
`
`58.
`
`Denied.
`
`The allegations in Paragraph 58 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 58 of the First Amended Complaint, and therefore denies same.
`
`59.
`
`Sprint admits that it offers LG handsets for sale. Sprint denies the remaining
`
`allegations in Paragraph 59 of the First Amended Complaint.
`
`60.
`
`The allegations in Paragraph 60 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 60 of the First Amended Complaint, and therefore denies same.
`
`61.
`
`The allegations in Paragraph 61 of the First Amended Complaint are not directed
`
`to Sprint; therefore, no response is necessary. To the extent a response is deemed necessary,
`
`Sprint is without knowledge or information sufficient to form a belief as to the allegations
`
`contained in Paragraph 61 of the First Amended Complaint, and therefore denies same.
`
`62.
`
`Denied.
`
`JOINDER OF PARTIES
`
`63.
`
`Sprint incorporates its responses to Paragraphs 1 through 62 herein by reference.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 9 of 28 PageID #: 1625
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`64.
`
`Sprint admits that it offers LG handsets for sale. Sprint is without knowledge
`
`or information sufficient to form a belief as to the allegations contained in Paragraph 64 of the
`
`First Amended Complaint, and therefore denies same.
`
`65.
`
`Sprint admits that it offers LG handsets for sale. Sprint is without knowledge
`
`or information sufficient to form a belief as to the allegations contained in Paragraph 65 of the
`
`First Amended Complaint, and therefore denies same.
`
`66.
`
`Sprint admits that it offers LG handsets for sale. Sprint is without knowledge
`
`or information sufficient to form a belief as to the allegations contained in Paragraph 66 of the
`
`First Amended Complaint, and therefore denies same.
`
`67.
`
`Sprint admits that it offers LG handsets for sale. Sprint is without knowledge
`
`or information sufficient to form a belief as to the allegations contained in Paragraph 67 of the
`
`First Amended Complaint, and therefore denies same.
`
`JURY DEMAND
`
`
`
`Sprint admits that CCE demands a trial by jury for all issues so triable and that it
`
`designates Kansas City as the place of trial.
`
`PRAYER FOR RELIEF
`
`
`
`Sprint denies that CCE is entitled to any relief in connection with the allegations of the
`
`First Amended Complaint, including, without limitation, the allegations of Paragraphs (A)
`
`through (F) of CCE’s Prayer for Relief.
`
`SPRINT’S AFFIRMATIVE DEFENSES
`
`Without admitting or acknowledging that Sprint bears the burden of proof as to any of the
`
`following affirmative defenses, based upon information and belief, Sprint assert the following
`
`defenses:
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 10 of 28 PageID #: 1626
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`First Affirmative Defense - Invalidity
`
`68.
`
`One or more claims of the asserted patents are invalid for failing to satisfy the
`
`conditions of patentability set forth in Title 35 of the United States Code including, but not
`
`limited to, 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`Second Affirmative Defense - Non- Infringement
`
`69.
`
`Sprint has not infringed, either literally or under the doctrine of equivalents, nor
`
`contributed to infringement by others, nor actively induced others to infringe the asserted
`
`patents.
`
`Third Affirmative Defense - Prosecution History Estoppel
`
`Plaintiff’s claims of patent infringement against Sprint are barred in whole or in
`
`70.
`
`part by the doctrines of prosecution history estoppel and/or prosecution disclaimer.
`
`Fourth Affirmative Defense – License, Waiver, Consent, Unclean Hands, and/or Estoppel
`
`Plaintiff’s claims of patent infringement against Sprint are barred in whole or in
`
`71.
`
`part by the doctrines of license, waiver, consent, unclean hands, and/or estoppel based on CCE
`
`and/or its predecessors having engaged in standard-setting misconduct including, but not limited
`
`to, CCE and/or its predecessors breach of its commitment to offer FRAND license terms for the
`
`patents asserted against Sprint and its breach of its duty to disclose its IP under relevant
`
`standards setting organizations IPR policies.
`
`72.
`
`Furthermore, Nokia Siemens Network (“NSN”) issued a written declaration to the
`
`SSO, committing to license its Declared-Essential Patents to all implementers of the UMTS
`
`standard on fair, reasonable, and non-discriminatory (“FRAND”) terms, but when 3GPP was
`
`considering alternative technologies, deliberately and deceptively concealed from 3GPP and its
`
`constituent SSOs that it in fact would not offer FRAND license terms. Accordingly, as to all
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 11 of 28 PageID #: 1627
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`patents CCE and NSN has declared essential to the UMTS standard, Sprint is at the very least
`
`entitled to a license on FRAND terms.
`
`Fifth Affirmative Defense – Limitation of Damages or Costs
`
`
`
`73.
`
`CCE’s claims for relief are barred in whole or in part, including without limitation
`
`by 35 U.S.C. §§ 286, 287, and/or 288.
`
`Sixth Affirmative Defense – License
`
`
`
`74.
`
`To the extent Sprint’s vendors and/or suppliers are licensed, at least in part, to the
`
`patents-in-suit, Sprint is likewise licensed under the doctrines of express license, implied license,
`
`and/or patent exhaustion.
`
`75.
`
`CCE and/or its predecessors have engaged in standard-setting misconduct,
`
`including without limitation, CCE and/or its predecessors’ breach of its commitment to offer
`
`FRAND license terms for the patents asserted in the Complaint and breach of their disclosure
`
`requirements or based on other circumstances.
`
`76.
`
`Furthermore, NSN issued a written declaration to the SSO, committing to license
`
`its Declared-Essential Patents to all implementers of the UMTS standard on fair, reasonable, and
`
`non-discriminatory (“FRAND”) terms, but when 3GPP was considering alternative technologies,
`
`deliberately and deceptively concealed from 3GPP and its constituent SSOs that it in fact would
`
`not offer FRAND license terms. Accordingly, as to all patents CCE and NSN has declared
`
`essential to the UMTS standard, Sprint is, at the very least, entitled to a license on FRAND terms
`
`Seventh Affirmative Defense – No Willful Infringement
`
`
`
`77.
`
`CCE has alleged no facts, and Sprint has not engaged in any conduct, that entitled
`
`CCE to treble damages based on alleged willful infringement.
`
`Eighth Affirmative Defense – Acts of Others
`
`

`

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`
`
`78.
`
`The claims made in the Complaint are barred, in whole or in part, because Sprint
`
`is not liable for the acts of others over whom it has no control.
`
`Ninth Affirmative Defense – No Causation
`
`79.
`
`CCE’s claims against Sprint are barred because CCE’s damages, if any, were not
`
`caused by Sprint.
`
`Tenth Affirmative Defense – Unenforceability of ‘556 Patent Due to Implied Waiver
`
`80.
`
`CCE and/or its predecessors-in-interest with respect to one or more of the
`
`Asserted Patents have engaged in standards-setting misconduct, including without limitation
`
`breach of the commitment to license one or more of the Asserted Patents on fair, reasonable, and
`
`nondiscriminatory terms and CCE’s breach of its patent disclosure requirements or based on
`
`other circumstances.
`
`81.
`
`At various times, Nokia Siemens Networks (“NSN”), a predecessor-in-interest of
`
`CCE, declared the Asserted Patents to the European Telecommunications Standards Institute
`
`(“ETSI”), a leading standard-setting organization (“SSO”), as purportedly essential to practice
`
`the Universal Mobile Telecommunications Standard (“UMTS”) standard, the world’s most
`
`widely adopted telecommunications standard. (The patents NSN has declared essential to the
`
`UMTS standard are referred to collectively herein as the “Declared-Essential Patents”). Time
`
`and again, however, NSN deliberately and deceptively failed to disclose its purported intellectual
`
`property rights (“IPR”) to the Third Generation Platform Partnership (“3GPP”), the SSO that set
`
`the UMTS standard, before its members decided to incorporate into the standard technologies
`
`purportedly covered by NSN’s patents, in violation of ETSI’s IPR policy. Furthermore, NSN
`
`issued a written declaration to the SSO, committing to license its Declared-Essential Patents to
`
`all implementers of the UMTS standard on fair, reasonable, and non-discriminatory (“FRAND”)
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 13 of 28 PageID #: 1629
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`terms, but when 3GPP was considering alternative technologies, deliberately and deceptively
`
`concealed from 3GPP and its constituent SSOs that it in fact would not offer FRAND license
`
`terms. Accordingly, as to all patents CCE and NSN has declared essential to the UMTS standard,
`
`Sprint is at the very least entitled to a license on FRAND terms.
`
`82.
`
`The Third Generation Partnership Project (“3GPP”) is a collaborative project that
`
`develops globally applicable standard specifications for third generation (“3G”) mobile phones
`
`and other telecommunications systems.
`
`83.
`
`84.
`
` 3GPP was established on or around December 1998.
`
`3GPP’s standardization efforts include Third Generation Wideband Code
`
`Division Multiple Access cellular standards.
`
`85.
`
`3GPP is composed of Organizational Partners and Individual Members.
`
`Organizational Partners are standard-setting organizations. The European Telecommunications
`
`Standards Institute (“ETSI”) is an Organizational Partner of 3GPP. The Individual Members of
`
`3GPP are members of the Organizational Partners of 3GPP, including members of ETSI.
`
`86.
`
`On information and belief supported by publicly available documents, CCE’s
`
`predecessor-in-interest NSN has been a member of ETSI and 3GPP.
`
`87.
`
`As an individual member of 3GPP, CCE’s predecessor-in-interest NSN was
`
`required to comply with 3GPP’s intellectual property rights policy (“IPR Policy”).
`
`88.
`
`On information and belief supported by publicly available documents, 3GPP’s
`
`IPR Policy states that its Individual Members are bound by the IPR Policy of their respective
`
`Organizational Partner. 3GPP’s IPR Policy requires its Individual Members to declare to their
`
`Organizational Partners any IPR that they believe to be essential, or potentially essential, to any
`
`work being conducted within 3GPP; the IPR Policy also requires Organizational Partners to
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 14 of 28 PageID #: 1630
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`“encourage their respective members to grant licenses on fair, reasonable terms and conditions
`
`and on a non-discriminatory basis.”
`
`89.
`
`As members of ETSI, CCE’s predecessor-in-interest NSN was required to comply
`
`with ETSI’s IPR Policy.
`
`90.
`
`To facilitate its standard setting activity, ETSI promulgated an IPR policy, set
`
`forth in Annex 6 of its Rules of Procedure.
`
`91.
`
`Clause 4 of the policy requires, among other things, that members timely disclose
`
`to the organization any IPR they own that may be essential to standards that have been developed
`
`or are being developed. Participants in ETSI standard development understand that this provision
`
`requires disclosure of all IPR that they believe might be essential to standards under
`
`consideration. Clause 4 requires in particular that a participant submitting a technical
`
`specification to ETSI, as NSN did, make ETSI aware of any IPR that might be essential if that
`
`proposal is adopted. Clause 4.1 states:
`
`[E]ach MEMBER shall use its reasonable endeavors, in particular during the
`
`development of a STANDARD or TECHNICAL SPECIFICATION where it participates,
`
`to inform ETSI of ESSENTIAL IPRs in a timely fashion. In particular, a MEMBER
`
`submitting a technical proposal for a STANDARD or TECHNICAL SPECIFICATION
`
`shall, on a bona fide basis, draw the attention of ETSI to any of that MEMBER’s IPR
`
`which might be ESSENTIAL if that proposal is adopted.
`
`92.
`
`Under ETSI’s IPR policies, the term “IPR” is defined to include patent
`
`applications as well as issued patents:
`
`“IPR” shall mean any intellectual property right conferred by statute law including
`
`applications therefore other than trademarks.
`
`

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`93.
`
`Clause 6 of ETSI’s IPR policy governs the availability of licenses to essential
`
`IPR. In relevant part, Clause 6.1 states:
`
`When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL
`
`SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall
`
`immediately request the owner to give within three months an irrevocable undertaking in
`
`writing that it is prepared to grant irrevocable licenses on fair, reasonable and non-
`
`discriminatory [FRAND] terms and conditions under such IPR to at least the following
`
`extent:
`
`• MANUFACTURE, including the right to make or have made customized components
`
`and sub-systems to the licensee’s own design for use in MANUFACTURE;
`
`• sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED;
`
`• repair, use, or operate EQUIPMENT; and
`
`• use METHODS.
`
`94.
`
`The above undertaking may be made subject to the condition that those who seek
`
`licenses agree to reciprocate.
`
`95.
`
`If an owner of an essential IPR refuses to undertake a FRAND commitment with
`
`respect to that IPR, then, as provided in Section 8 of the ETSI IPR Policy, ETSI may suspend
`
`work on relevant parts of the standard or redesign the standard to render the IPR non-essential.
`
`96.
`
`ETSI’s IPR Policy was designed to benefit all ETSI members, as well as all other
`
`parties that implement an ETSI standard. In particular, the stated objective of the policy,
`
`described in Clause 3.1, is to “reduce the risk” to those implementing the standards or other
`
`technical specifications “that investment in the preparation, adoption and application of the
`
`STANDARDS could be wasted as a result of an ESSENTIAL IPR for a STANDARD or
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 16 of 28 PageID #: 1632
`
`TECHNICAL SPECIFICATION being unavailable.” The IPR Policy specifies that it “shall be
`
`governed by the laws of France.” Clause 12.
`
`97.
`
`During all times relevant to these allegations, NSN has been a member of ETSI.
`
`NSN actively participated in 3GPP’s development of the UMTS standard. As a result of its
`
`membership in ETSI and participation in 3GPP’s standard-setting process for UMTS, CCE’s
`
`predecessor NSN was bound by the ETSI Rules of Procedure, including the ETSI IPR Policy. As
`
`was required by the ETSI IPR policy, NSN submitted declarations to ETSI promising to license
`
`its Declared-Essential Patents on FRAND terms.
`
`98.
`
`CCE has alleged that certain products having wireless capability compliant with
`
`3GPP TS 36.321 §§ 5.4.6, 6.1.3.6a infringe the ’556 Patent.
`
`99.
`
`CCE has represented that it is the owner or assignee of the ’556 Patent.
`
`100. The ’556 Patent issued from Application No. 13/164,266 filed on June 20, 2011.
`
`101. The ’556 Patent claims priority to Provisional Application No. 61/356,867, filed
`
`on June 21, 2010.
`
`102. On information and belief supported by publicly available documents, NSN is a
`
`predecessor-in-interest of CCE with respect to the ’556 Patent and its related applications.
`
`103. 3GPP is composed of specification groups responsible for drafting and amending
`
`technical specifications associated with the 3GPP.
`
`104. 3GPP specification group TSG RAN WG2 (“WG2”) was formed on or around
`
`January 1999. WG2 was responsible for e Radio Interface architecture and protocols (MAC,
`
`RLC, PDCP), the specification of the Radio Resource Control protocol, the strategies of Radio
`
`Resource Management and the services provided by the physical layer to the upper layers. In
`
`particular, WG2 was responsible for drafting 3GPP Technical Specification (“TS”) 36.321. CCE
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 17 of 28 PageID #: 1633
`
`have alleged that certain products having wireless capability compliant with TS 36.321 standards
`
`infringe the ’556 Patent.
`
`105. On
`
`information and belief supported by publicly available documents,
`
`representatives of NSN attended WG2 meetings and participated in drafting and revising TS
`
`36.321. For example, the following NSN employees attended WG2 meetings: Guillaume
`
`Decarreau, Woonhee Hwang, Thyagarajan Manivannan, Benoist Sebire, Malgorzata Tomala, and
`
`Chunli Wu.
`
`106. On information and belief supported by publicly available documents, at the
`
`beginning of each WG2 and TSG RAN Plenary meeting, the Chairman of the meeting made the
`
`following IPR call:
`
`The attention of the delegates of this Working Group was drawn to the fact that 3GPP
`
`Individual Members have the obligation under the IPR Policies of their respective
`
`Organizational Partners to inform their respective Organizational Partners of Essential
`
`IPRs they become aware of.
`
`The delegates were asked to take note that they were hereby invited:
`
`•
`
`•
`
`to investigate whether their organization or any other organization owns IPRs
`
`which were, or were likely to become Essential in respect of the work of 3GPP.
`
`to notify their respective Organizational Partners of all potential IPRs, e.g., for
`
`ETSI, by means of the IPR Statement and the Licensing declaration forms
`
`(http://webapp.etsi.org/Ipr/).
`
`107. On or about November 15-19, 2010, the TSG-RAN WG2 group met for meeting
`
`#72 in Jacksonville, FL USA in connection with the standards-setting process.
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 18 of 28 PageID #: 1634
`
`108. On
`
`information and belief supported by publicly available documents,
`
`representatives of CCE’s predecessor NSN, including Benoist Sebire and Chunli Wu, attended
`
`the November 2010 meeting in Jacksonville.
`
`109. Benoist Sebire and Chunli Wu are the named inventors on the ’556 Patent.
`
`110. On information and belief supported by publicly available documents, during the
`
`November 2010 meeting, Nokia Corporation and NSN presented for discussion “Power
`
`Headroom MAC CE format for CA” (R2-106199).
`
`111. On information and belief supported by publicly available documents, during the
`
`November 2010 meeting, significant changes related to TS 36.321 and related to the technology
`
`of the ‘556 Patent, such as “Power Headroom Reporting in Rel-10” (R2-106259), were discussed
`
`and approved during the meeting.
`
`112. On or about December 7-12, 2010, the TSG-RAN plenary group met for meeting
`
`#50 in Istanbul, Turkey in connection with the standards-setting process.
`
`113. On
`
`information and belief supported by publicly available documents,
`
`representatives of CCE’s predecessor NSN, including Jiang Chang, Antti Toskala, and Colin
`
`Willcock, attended the December 2010 meeting in Istanbul.
`
`114. On information and belief supported by publicly available documents, during the
`
`December 2010 meeting, significant changes related to TS 36.321 and related to the technology
`
`of the ’556 Patent were approved during the meeting.
`
`115. NSN waited until November 12, 2010 to declare the ’556 Patent as relevant to TS
`
`36.321.
`
`116. CCE’s predecessor NSN had a duty to disclose the ’556 Patent as essential to
`
`standards drafted and revised in WG2 and TSG RAN Plenary groups as a result of its
`
`

`

`Case 6:14-cv-00982-KNM Document 152 Filed 11/13/15 Page 19 of 28 PageID #: 1635
`
`membership in ETSI and 3GPP, including its obligations to disclose essential IPRs under the IPR
`
`policies of ETSI and 3GPP.
`
`117. On information and belief supported by publicly available documents, CCE’s
`
`predecessor NSN breached its duty to disclose the ’556 Patent by intentionally and knowingly
`
`delaying disclosure of the ’556 Patent as essential, or potentially essential, to the specifications
`
`being drafted and revised at WG2 and the TSG RAN Plenary groups.
`
`118. On information and belief supported by publicly available documents, the
`
`foregoing delay to disclose the ’556 Patent was made in bad faith with the intent to deceive and
`
`induce reliance.
`
`119. The foregoing actions and conduct have caused damage and continue to cause
`
`damage to Sprint and relevant third-parties.
`
`120. Accordingly, the ’556 Patent is unenforceable due to implied waiver.
`
`Eleventh Affirmative Defense – Unenforceability of ‘556 Patent Due to Equitable Estoppel
`
`121. CCE’s predecessor NSN had a duty to disclose the ’556 Patent as essential to
`
`standards drafted and revised in WG2 and TSG RAN Plenary groups as a result of its
`
`membership in ETSI and 3GPP, including its obligations to disclose essential IPRs under the IPR

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