Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 1 of 27 PageID #: 1717
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS
`INC, et al.,
`Defendants.
`
`
`
`
`Civil Action No. 6:14-cv-983
`
`Consolidated Lead Case Civil Action No.
`6:14-cv-982
`
`JURY TRIAL DEMANDED
`
`T-MOBILE’S ANSWER
`TO PLAINTIFF’S FIRST AMENDED COMPLAINT
`
`Defendants T-Mobile USA, Inc., and T-Mobile US, Inc. (collectively, “T-Mobile”)
`
`hereby submit this Answer and Affirmative Defenses in response to Plaintiff Cellular
`
`Communications Equipment LLC’s (“CCE” or “Plaintiff”) First Amended Complaint for Patent
`
`Infringement (the “Complaint”).
`
`GENERAL DENIAL
`
`
`
`Unless specifically admitted below, T-Mobile denies each and every allegation in the
`
`Complaint. To the extent the headings of the Complaint are construed as allegations, they are
`
`each denied.
`
`THE PARTIES
`
`1.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 1 of the Complaint, and therefore denies the same.
`
`2.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 2 of the Complaint, and therefore denies the same.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS
`INC, et al.,
`Defendants.
`
`
`
`
`Civil Action No. 6:14-cv-983
`
`Consolidated Lead Case Civil Action No.
`6:14-cv-982
`
`JURY TRIAL DEMANDED
`
`T-MOBILE’S ANSWER
`TO PLAINTIFF’S FIRST AMENDED COMPLAINT
`
`Defendants T-Mobile USA, Inc., and T-Mobile US, Inc. (collectively, “T-Mobile”)
`
`hereby submit this Answer and Affirmative Defenses in response to Plaintiff Cellular
`
`Communications Equipment LLC’s (“CCE” or “Plaintiff”) First Amended Complaint for Patent
`
`Infringement (the “Complaint”).
`
`GENERAL DENIAL
`
`
`
`Unless specifically admitted below, T-Mobile denies each and every allegation in the
`
`Complaint. To the extent the headings of the Complaint are construed as allegations, they are
`
`each denied.
`
`THE PARTIES
`
`1.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 1 of the Complaint, and therefore denies the same.
`
`2.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 2 of the Complaint, and therefore denies the same.
`
`
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`3.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 3 of the Complaint, and therefore denies the same.
`
`4.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 4 of the Complaint, and therefore denies the same.
`
`5.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 5 of the Complaint, and therefore denies the same.
`
`6.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 6 of the Complaint, and therefore denies the same.
`
`7.
`
`8.
`
`9.
`
`Admit.
`
`Admit.
`
`JURISDICTION AND VENUE
`
`T-Mobile admits that the Complaint purports to set forth a patent infringement
`
`action arising under the patent laws of the United States, Title 35 of the United States Code. T-
`
`Mobile denies all remaining allegations of Paragraph 9.
`
`10.
`
`To the extent that the allegations of Paragraph 10 of the Complaint set forth legal
`
`conclusions, no response is required. T-Mobile admits that this Court has subject matter
`
`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) over actions arising under the patent laws
`
`of the United States. T-Mobile denies all remaining allegations of Paragraph 10.
`
`11.
`
`To the extent that the allegations of Paragraph 11 of the Complaint set forth legal
`
`conclusions, no response is required. T-Mobile admits it has transacted business in this district.
`
`T-Mobile denies that it has committed any act of patent infringement in this district or any other
`
`judicial district. T-Mobile denies all remaining allegations in Paragraph 11.
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`12.
`
`To the extent that the allegations of Paragraph 12 of the Complaint set forth legal
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`conclusions, no response is required. T-Mobile admits it has transacted business in this district.
`
`T-Mobile denies that it has committed any act of patent infringement in this district or any other
`
`judicial district. T-Mobile denies all remaining allegations in Paragraph 12.
`
`13.
`
`T-Mobile admits it has transacted business in this district. T-Mobile denies that it
`
`has committed any act of patent infringement in this district or any other judicial district. T-
`
`Mobile denies all remaining allegations in Paragraph 13.
`
`COUNT I—ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,385,966
`
`14.
`
`T-Mobile re-alleges and reincorporate its answers to Paragraphs 1-13 of the
`
`Complaint as if fully set forth herein.
`
`15.
`
`T-Mobile admits that the cover page of U.S. Patent No. 8,385,966 (“’966 Patent”)
`
`states that its title is “Method, Apparatus, and Computer Program for Power Control Related to
`
`Random Access Procedures.” T-Mobile admits that what purports to be a copy of the ’966
`
`Patent is attached as Exhibit A to the Complaint. T-Mobile lacks knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations of Paragraph 15 of the
`
`Complaint, and therefore denies the same.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`T-Mobile denies the allegations in Paragraph 20 as to T-Mobile. T-Mobile lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
`
`of Paragraph 20 of the Complaint, and therefore denies the same.
`
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`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 26 of the Complaint, and therefore denies the same.
`
`27.
`
`T-Mobile admits that it has provided Sony brand devices. T-Mobile denies all
`
`remaining allegations of Paragraph 27.
`
`28.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 28 of the Complaint, and therefore denies the same.
`
`29.
`
`Denied.
`
`COUNT II—ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,848,556
`
`30.
`
`T-Mobile re-alleges and reincorporate its answers to Paragraphs 1-29 of the
`
`Complaint as if fully set forth herein.
`
`31.
`
`T-Mobile admits that the cover page of U.S. Patent No. 8,848,556 (“’556 Patent”)
`
`states that its title is “Carrier Aggregation with Power Headroom Report.” T-Mobile admits that
`
`what purports to be a copy of the ’556 Patent is attached as Exhibit B to the Complaint. T-
`
`Mobile lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 31 of the Complaint, and therefore denies the same.
`
`32.
`
`33.
`
`34.
`
`Denied.
`
`Denied.
`
`Denied.
`
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`35.
`
`T-Mobile denies the allegations in Paragraph 35 as to T-Mobile. T-Mobile lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
`
`of Paragraph 40 of the Complaint, and therefore denies the same.
`
`36.
`
`37.
`
`Denied.
`
`T-Mobile admits that it has provided Sony brand devices. T-Mobile denies all
`
`remaining allegations of Paragraph 37.
`
`38.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 38 of the Complaint, and therefore denies the same.
`
`39.
`
`Denied.
`
`COUNT III—ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,868,060
`
`40.
`
`T-Mobile re-alleges and reincorporate its answers to Paragraphs 1-39 of the
`
`Complaint as if fully set forth herein.
`
`41.
`
`T-Mobile admits that the cover page of U.S. Patent No. 8,868,060 (“’060 Patent”)
`
`states that its title is “Method, Network and Device for Information Provision by Using Paging
`
`and Cell Broadcast Services.” T-Mobile admits that what purports to be a copy of the ’060
`
`Patent is attached as Exhibit C to the Complaint. T-Mobile lacks knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations of Paragraph 41 of the
`
`Complaint, and therefore denies the same.
`
`42.
`
`43.
`
`44.
`
`45.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
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`46.
`
`T-Mobile denies the allegations in Paragraph 46 as to T-Mobile. T-Mobile lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
`
`of Paragraph 46 of the Complaint, and therefore denies the same.
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`T-Mobile admits that it has provided Sony brand devices. T-Mobile denies all
`
`remaining allegations of Paragraph 52.
`
`53.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 53 of the Complaint, and therefore denies the same.
`
`54.
`
`Denied.
`
`JOINDER OF PARTIES
`
`55.
`
`T-Mobile re-alleges and reincorporate its answers to Paragraphs 1-54 of the
`
`Complaint as if fully set forth herein.
`
`56.
`
`T-Mobile admits that it has provided Sony brand devices. T-Mobile denies all
`
`remaining allegations of Paragraph 56.
`
`57.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 57 of the Complaint, and therefore denies the same.
`
`58.
`
`T-Mobile lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of Paragraph 58 of the Complaint, and therefore denies the same.
`
`59.
`
`Denied.
`
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`JURY DEMAND
`
`Plaintiff’s demand for a jury trial does not require a response.
`
`PRAYER FOR RELIEF
`
`T-Mobile denies that Plaintiff is entitled to any relief whatsoever against T-Mobile, either
`
`
`
`
`
`as prayed for in the Complaint or otherwise.
`
`ADDITIONAL DEFENSES
`
`T-Mobile alleges and asserts the following additional defenses in response to the
`
`allegations of the Complaint, undertaking the burden of proof only as to those defenses required
`
`by law, regardless of how such defenses are denominated herein. In addition to defenses pleaded
`
`herein, T-Mobile reserves the right to allege additional defenses that become known through the
`
`course of discovery or otherwise.
`
`FIRST DEFENSE
`
`(FAILURE TO STATE A CLAIM)
`
`60.
`
`The Complaint fails to state a claim against T-Mobile upon which relief can be
`
`granted.
`
`SECOND DEFENSE
`
`(NON-INFRINGEMENT)
`
`61.
`
`T-Mobile does not infringe and has not infringed, literally or by the doctrine of
`
`equivalents, any valid and enforceable claim of the ’060 Patent, ’556 Patent, or ’966 Patent
`
`(collectively, the “Asserted Patents”), either directly, contributorily, by inducement, jointly, or in
`
`any other manner.
`
`THIRD DEFENSE
`
`(PROSECUTION HISTORY ESTOPPEL)
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`62.
`
`Plaintiff is estopped from construing any of the claims of the Asserted Patents in
`
`such a way as may cover, encompass, and/or include T-Mobile’s products, services, or activities
`
`and/or has waived any right to do so by reason of amendment, cancellation, and/or abandonment
`
`of claims, and/or admissions, representations, and/or statements made by or on behalf of the
`
`applicants, in any proceedings before the United States Patent and Trademark Office.
`
`FOURTH DEFENSE
`
`(INVALIDITY)
`
`63.
`
`Each and every claim of the Asserted Patents is invalid for failure to meet the
`
`requirements of Title 35, United States Code, including but not limited to Sections 101, 102, 103,
`
`and/or 112 thereof, and the rules, regulations, and laws pertaining thereto.
`
`64.
`
`Each and every claim of the Asserted Patents is invalid for double patenting.
`
`FIFTH DEFENSE
`
`(35 U.S.C. § 286)
`
`65.
`
`Plaintiff’s claims for relief and prayer for damages are limited by 35 U.S.C. §
`
`286.
`
`SIXTH DEFENSE
`
`(35 U.S.C. § 287)
`
`66.
`
`Upon information and belief, the relief sought by Plaintiff is barred or limited in
`
`whole or in part by the failure to mark, by Plaintiff or by one or more parties licensed or
`
`otherwise authorized to practice the Asserted Patents, as required by 35 U.S.C. § 287.
`
`SEVENTH DEFENSE
`
`(28 U.S.C. § 1498)
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`67.
`
`To the extent that any accused product has been used or manufactured by or for
`
`the United States Government, Plaintiff’s claims and demands for relief are barred by 28 U.S.C.
`
`§ 1498.
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`EIGHTH DEFENSE
`
`(STANDING)
`
`68.
`
`Plaintiff lacks standing to bring this suit because, as shown on the face of the
`
`Asserted Patents, Plaintiff is not the assignee of the Asserted Patents. Plaintiff also lacks
`
`standing to bring this suit to the extent that Plaintiff and/or its predecessors-in-interest lacked
`
`ownership of the Asserted Patents at any relevant time. In addition, Plaintiff lacks standing to
`
`bring this suit to the extent that Plaintiff lacks all substantial rights to the Asserted Patents.
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`NINTH DEFENSE
`
`(LICENSE)
`
`69.
`
`Plaintiff’s claims for relief are barred in whole or in part by express or implied
`
`license.
`
`70.
`
`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.
`
`71.
`
`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
`
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`essential to the UMTS standard, T-Mobile is at the very least entitled to a license on FRAND
`
`terms.
`
`TENTH DEFENSE
`
`(PATENT EXHAUSTION)
`
`72.
`
`Plaintiff’s claims for relief are barred in whole or in part by the doctrine of patent
`
`exhaustion.
`
`ELEVENTH DEFENSE
`
`(WAIVER, ESTOPPEL, CLAIM PRECLUSION, LACHES, UNCLEAN HANDS)
`
`73.
`
`Plaintiff’s claims against T-Mobile regarding the Asserted Patents are barred by
`
`the equitable doctrines of waiver, estoppel, claim preclusion, laches, and/or unclean hands.
`
`74.
`
`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.
`
`75.
`
`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, T-Mobile is at the very least entitled to a license on FRAND
`
`terms.
`
`
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`TWELFTH DEFENSE
`
`(UNENFORCEABILITY OF ’556 PATENT DUE TO IMPLIED WAIVER)
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`76.
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`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.
`
`77.
`
`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”)
`
`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,
`
`T-Mobile is at the very least entitled to a license on FRAND terms.
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`78.
`
`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.
`
`79.
`
`80.
`
`3GPP was established on or around December 1998.
`
`3GPP’s standardization efforts include Third Generation Wideband Code
`
`Division Multiple Access cellular standards.
`
`81.
`
`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.
`
`82.
`
`On information and belief supported by publicly available documents, CCE’s
`
`predecessor-in-interest NSN has been a member of ETSI and 3GPP.
`
`83.
`
`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”).
`
`84.
`
`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
`
`“encourage their respective members to grant licenses on fair, reasonable terms and conditions
`
`and on a non-discriminatory basis.”
`
`85.
`
`As members of ETSI, CCE’s predecessor-in-interest NSN was required to comply
`
`with ETSI’s IPR Policy.
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`86.
`
`To facilitate its standard setting activity, ETSI promulgated an IPR policy, set
`
`forth in Annex 6 of its Rules of Procedure.
`
`87.
`
`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.
`
`88.
`
`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.
`
`89.
`
`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
`
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`immediately request the owner to give within three months an irrevocable undertaking in
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`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.
`
`90.
`
`The above undertaking may be made subject to the condition that those who seek
`
`licenses agree to reciprocate.
`
`91.
`
`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.
`
`92.
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`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
`
`TECHNICAL SPECIFICATION being unavailable.” The IPR Policy specifies that it “shall be
`
`governed by the laws of France.” Clause 12.
`
`93.
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`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
`
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`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 15 of 27 PageID #: 1731
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`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.
`
`94.
`
`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.
`
`95.
`
`96.
`
`97.
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`CCE has represented that it is the owner or assignee of the ’556 Patent.
`
`The ’556 Patent issued from Application No. 13/164,266 filed on June 20, 2011.
`
`The ’556 Patent claims priority to Provisional Application No. 61/356,867, filed
`
`on June 21, 2010.
`
`98.
`
`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.
`
`99.
`
`3GPP is composed of specification groups responsible for drafting and amending
`
`technical specifications associated with the 3GPP.
`
`100. 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
`
`have alleged that certain products having wireless capability compliant with TS 36.321 standards
`
`infringe the ’556 Patent.
`
`101. On
`
`information and belief supported by publicly available documents,
`
`representatives of NSN attended WG2 meetings and participated in drafting and revising TS
`
`
`
`- 15 -
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`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 16 of 27 PageID #: 1732
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`36.321. For example, the following NSN employees attended WG2 meetings: Guillaume
`
`Decarreau, Woonhee Hwang, Thyagarajan Manivannan, Benoist Sebire, Malgorzata Tomala, and
`
`Chunli Wu.
`
`102. 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/).
`
`103. 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.
`
`104. 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.
`
`105. Benoist Sebire and Chunli Wu are the named inventors on the ’556 Patent.
`
`
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`- 16 -
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`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 17 of 27 PageID #: 1733
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`106. 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).
`
`107. 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 ‘557 Patent, such as “Power Headroom Reporting in Rel-10” (R2-106259), were discussed
`
`and approved during the meeting.
`
`108. 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.
`
`109. 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.
`
`110. 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.
`
`111. NSN waited until November 12, 2010 to declare the ’556 Patent as relevant to TS
`
`36.321.
`
`112. 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
`
`policies of ETSI and 3GPP.
`
`113. 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
`
`
`
`- 17 -
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`
`
`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 18 of 27 PageID #: 1734
`
`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.
`
`114. 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.
`
`115. The foregoing actions and conduct have caused damage and continue to cause
`
`damage to T-Mobile and relevant third-parties.
`
`116. Accordingly, the ’556 Patent is unenforceable due to implied waiver.
`
`THIRTEENTH DEFENSE
`
`(UNENFORCEABILITY OF ’556 PATENT DUE TO EQUITABLE ESTOPPEL)
`
`117. T-Mobile incorporates by reference paragraphs 1-116 above.
`
`118. 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
`
`policies of ETSI and 3GPP.
`
`119. 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 the 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.
`
`120. 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.
`
`
`
`- 18 -
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`
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`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 19 of 27 PageID #: 1735
`
`121. On information and belief supported by publicly available documents, CCE’s
`
`predecessor NSN’s delay in disclosing the ’556 Patent led to the adoption and propagation of
`
`3GPP standards without consideration of the ’556 Patent.
`
`122. As a consequence of CCE’s predecessor NSN’s delay in disclosing the ’556
`
`Patent, ETSI members, 3GPP members, their successors, and customers throughout the supply
`
`chain, including T-Mobile and relevant third parties, thereafter designed, manufactured, and
`
`marketed products meant to comply with those 3G cellular standards, thereby reasonably and
`
`justifiably relying on CCE’s predecessor NSN’s promises to abide by ETSI and 3GPP IPR
`
`Policies, to their detriment.
`
`123. As a consequence of CCE’s predecessor NSN’s delay in disclosing the ’556
`
`Patent, ETSI members, 3GPP members, their successors, and customers throughout the supply
`
`chain, including T-Mobile and relevant third parties, thereafter designed, manufactured, and
`
`marketed products meant to comply with those 3G cellular standards, thereby reasonably
`
`inferred that NSN did not intend to enforce the ’556 Patent against potential infringers.
`
`124. The foregoing actions and conduct have caused damage and continue to cause
`
`damage to T-Mobile and relevant third-parties.
`
`125. Accordingly, the ’556 Patent is unenforceable due to equitable estoppel.
`
`FOURTEENTH DEFENSE
`
`(UNENFORCEABILITY OF ’966 PATENT DUE TO IMPLIED WAIVER)
`
`126. T-Mobile incorporates by reference paragraphs 1-125 above.
`
`127. CCE has alleged that certain products having wireless capability compliant with
`
`3GPP TS 25.213 and TS 36.300 infringe the ’966 Patent.
`
`128. CCE has represented that it is the owner or assignee of the ’966 Patent.
`
`
`
`- 19 -
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`
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`Case 6:14-cv-00982-KNM Document 155 Filed 11/13/15 Page 20 of 27 PageID #: 1736
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`129. The ’966 Patent issued from Application No. 12/387,661 filed on May 5, 2009.
`
`130. The ’966 Patent claims priority to Provisional Application No. 61/126,617, filed
`
`on May 5, 2008.
`
`131. On information and belief supported by publicly available documents, NSN is a
`
`predecessor-in-interest of CCE with respect to the ’966 Patent and its related applications.
`
`132. 3GPP is composed of specification groups responsible for drafting and amending
`
`technical specifications associated with the 3GPP.
`
`133. 3GPP specification group TSG RAN WG1 (“WG1”) was formed on or around
`
`January 1999. WG1 was responsible for the specification of the physical layer of the radio
`
`Interface for UE, UTRAN, Evolved UTRAN, and beyond; covering both FDD and TDD modes
`
`of the radio interface. In particular, WG1 was responsible for drafting 3GPP TS 36.213. CCE
`
`has alleged that certain products having w
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