Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 1 of 23 PageID #: 1772
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`Civil Action No. 6:14-cv-982
`
`(Consolidated Lead Case)
`JURY TRIAL DEMANDED
`
`
`Civil Action No. 6:14-cv-983
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC., et al.,
`Defendants.
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS
`INC., et al.,
`Defendants.
`
`
`AT&T MOBILITY LLC’S ANSWER
`TO PLAINTIFF’S FIRST AMENDED COMPLAINT
`
`
`
`Defendant AT&T Mobility LLC (“AT&T”), by and through its undersigned attorneys,
`
`hereby responds to the First Amended Complaint of Plaintiff Cellular Communications
`
`Equipment, LLC (“CCE”) (“Complaint”), with the following Answer and Defenses.
`
`GENERAL DENIAL
`
`
`
`Unless specifically admitted below, AT&T denies each and every allegation in the
`
`Complaint. To the extent the headings of the Complaint are construed as allegations, they are
`
`each denied.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`Civil Action No. 6:14-cv-982
`
`(Consolidated Lead Case)
`JURY TRIAL DEMANDED
`
`
`Civil Action No. 6:14-cv-983
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC., et al.,
`Defendants.
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS
`INC., et al.,
`Defendants.
`
`
`AT&T MOBILITY LLC’S ANSWER
`TO PLAINTIFF’S FIRST AMENDED COMPLAINT
`
`
`
`Defendant AT&T Mobility LLC (“AT&T”), by and through its undersigned attorneys,
`
`hereby responds to the First Amended Complaint of Plaintiff Cellular Communications
`
`Equipment, LLC (“CCE”) (“Complaint”), with the following Answer and Defenses.
`
`GENERAL DENIAL
`
`
`
`Unless specifically admitted below, AT&T denies each and every allegation in the
`
`Complaint. To the extent the headings of the Complaint are construed as allegations, they are
`
`each denied.
`
`
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 2 of 23 PageID #: 1773
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`THE PARTIES
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`1.
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`AT&T 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.
`
`AT&T 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.
`
`3.
`
`AT&T 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.
`
`AT&T admits that it is a limited liability company organized under the laws of the
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`State of Delaware and has a principal place of business in Atlanta, Georgia. AT&T admits it has
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`transacted business in the state of Texas and in the Eastern District of Texas, but denies any
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`wrongdoing or infringement. AT&T admits it can be served through The Corporation Trust
`
`Company, Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801. AT&T
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`denies all remaining allegations of Paragraph 4.
`
`5.
`
`AT&T 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.
`
`AT&T 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.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 7 of the Complaint, and therefore denies the same.
`
`8.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 8 of the Complaint, and therefore denies the same.
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`JURISDICTION AND VENUE
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`9.
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`AT&T 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. AT&T
`
`denies all remaining allegations of Paragraph 9.
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`10.
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`To the extent that the allegations of Paragraph 10 of the Complaint set forth legal
`
`conclusions, no response is required. AT&T 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
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`of the United States. AT&T denies all remaining allegations of Paragraph 10.
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`11.
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`To the extent that the allegations of Paragraph 11 of the Complaint set forth legal
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`conclusions, no response is required. AT&T admits it has transacted business in this district.
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`AT&T denies that it has committed any act of patent infringement in this district or any other
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`judicial district. AT&T 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
`
`conclusions, no response is required. AT&T admits it has transacted business in this district.
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`AT&T denies that it has committed any act of patent infringement in this district or any other
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`judicial district. AT&T denies all remaining allegations in Paragraph 12.
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`13.
`
`AT&T admits it has transacted business in this district. AT&T denies that it has
`
`committed any act of patent infringement in this district or any other judicial district. AT&T
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`denies all remaining allegations in Paragraph 13.
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`COUNT I—ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,385,966
`
`14.
`
`AT&T re-alleges and reincorporate its answers to Paragraphs 1-13 of the
`
`Complaint as if fully set forth herein.
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 4 of 23 PageID #: 1775
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`15.
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`AT&T 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.” AT&T admits that what purports to be a copy of the ’966 Patent is
`
`attached as Exhibit A to the Complaint. AT&T lacks knowledge or information sufficient to
`
`form a belief as to the truth of the remaining allegations of Paragraph 19 of the Complaint, and
`
`therefore denies the same.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`AT&T denies the allegations in Paragraph 20 as to AT&T Mobility LLC. AT&T
`
`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.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`AT&T admits that it has provided Sony brand devices. AT&T denies all
`
`remaining allegations of Paragraph 26.
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`27.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 27 of the Complaint, and therefore denies the same.
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`28.
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`AT&T 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.
`
`AT&T re-alleges and reincorporate its answers to Paragraphs 1-29 of the
`
`Complaint as if fully set forth herein.
`
`31.
`
`AT&T 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.” AT&T admits that
`
`what purports to be a copy of the ’556 Patent is attached as Exhibit B to the Complaint. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 36 of the Complaint, and therefore denies the same.
`
`32.
`
`33.
`
`Denied.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 33 of the Complaint, and therefore denies the same.
`
`34.
`
`35.
`
`Denied.
`
`AT&T denies the allegations in Paragraph 35 as to AT&T Mobility LLC. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 35 of the Complaint, and therefore denies the same.
`
`36.
`
`AT&T denies the allegations in Paragraph 36 as to AT&T Mobility LLC. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 36 of the Complaint, and therefore denies the same.
`
`37.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 37 of the Complaint, and therefore denies the same.
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 6 of 23 PageID #: 1777
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`38.
`
`AT&T 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.
`
`AT&T re-alleges and reincorporate its answers to Paragraphs 1-39 of the
`
`Complaint as if fully set forth herein.
`
`41.
`
`AT&T 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.” AT&T admits that what purports to be a copy of the ’060 Patent
`
`is attached as Exhibit C to the Complaint. AT&T lacks knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations of Paragraph 47 of the Complaint, and
`
`therefore denies the same.
`
`42.
`
`43.
`
`Denied.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 43 of the Complaint, and therefore denies the same.
`
`44.
`
`45.
`
`46.
`
`Denied.
`
`Denied.
`
`AT&T denies the allegations in Paragraph 46 as to AT&T Mobility LLC. AT&T
`
`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.
`
`AT&T denies the allegations in Paragraph 47 as to AT&T Mobility LLC. AT&T
`
`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.
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`48.
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`AT&T denies the allegations in Paragraph 48 as to AT&T Mobility LLC. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 48 of the Complaint, and therefore denies the same.
`
`49.
`
`AT&T denies the allegations in Paragraph 49 as to AT&T Mobility LLC. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 49 of the Complaint, and therefore denies the same.
`
`50.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 50 of the Complaint, and therefore denies the same.
`
`51.
`
`AT&T denies the allegations in Paragraph 51 as to AT&T Mobility LLC. AT&T
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 51 of the Complaint, and therefore denies the same.
`
`52.
`
`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of Paragraph 52 of the Complaint, and therefore denies the same.
`
`53.
`
`AT&T 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.
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`JOINDER OF PARTIES
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`55.
`
`AT&T re-alleges and reincorporate its answers to Paragraphs 1-55 of the
`
`Complaint as if fully set forth herein.
`
`56.
`
`AT&T admits that it has provided Sony brand devices. AT&T denies all
`
`remaining allegations of Paragraph 56.
`
`57.
`
`AT&T 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.
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`58.
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`AT&T lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations of Paragraph 58 of the Complaint, and therefore denies the same.
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`59.
`
`Denied.
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`JURY DEMAND
`
`Plaintiff’s demand for a jury trial does not require a response.
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`PRAYER FOR RELIEF
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`AT&T denies that Plaintiff is entitled to any relief whatsoever against AT&T, either as
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`
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`prayed for in the Complaint or otherwise.
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`ADDITIONAL DEFENSES
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`AT&T alleges and asserts the following additional defenses in response to the allegations
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`of the Complaint, undertaking the burden of proof only as to those defenses required by law,
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`regardless of how such defenses are denominated herein. In addition to defenses pleaded herein,
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`AT&T reserves the right to allege additional defenses that become known through the course of
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`discovery or otherwise.
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`FIRST DEFENSE
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`(FAILURE TO STATE A CLAIM)
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`60.
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`The Complaint fails to state a claim against AT&T upon which relief can be
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`granted.
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`SECOND DEFENSE
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`(NON-INFRINGEMENT)
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`61.
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`AT&T does not infringe and has not infringed, literally or by the doctrine of
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`equivalents, any valid and enforceable claim of the ’060 Patent, ’556 Patent, or ’966 Patent
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 9 of 23 PageID #: 1780
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`(collectively, the “Asserted Patents”), either directly, contributorily, by inducement, jointly, or in
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`any other manner.
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`THIRD DEFENSE
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`(PROSECUTION HISTORY ESTOPPEL)
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`62.
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`Plaintiff is estopped from construing any of the claims of the Asserted Patents in
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`such a way as may cover, encompass, and/or include AT&T’s products, services, or activities
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`and/or has waived any right to do so by reason of amendment, cancellation, and/or abandonment
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`of claims, and/or admissions, representations, and/or statements made by or on behalf of the
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`applicants, in any proceedings before the United States Patent and Trademark Office.
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`FOURTH DEFENSE
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`(INVALIDITY)
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`63.
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`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,
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`and/or 112 thereof, and the rules, regulations, and laws pertaining thereto.
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`64.
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`Each and every claim of the Asserted Patents is invalid for double patenting.
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`FIFTH DEFENSE
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`(35 U.S.C. § 286)
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`65.
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`Plaintiff’s claims for relief and prayer for damages are limited by 35 U.S.C. §
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`286.
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`SIXTH DEFENSE
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`(35 U.S.C. § 287)
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`66.
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`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
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`otherwise authorized to practice the Asserted Patents, as required by 35 U.S.C. § 287.
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`SEVENTH DEFENSE
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`(28 U.S.C. § 1498)
`
`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
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`(STANDING)
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`68.
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`Plaintiff lacks standing to bring this suit because, as shown on the face of the
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`Asserted Patents, Plaintiff is not the assignee of the Asserted Patents. Plaintiff also lacks
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`standing to bring this suit to the extent that Plaintiff and/or its predecessors-in-interest lacked
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`ownership of the Asserted Patents at any relevant time. In addition, Plaintiff lacks standing to
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`bring this suit to the extent that Plaintiff lacks all substantial rights to the Asserted Patents.
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`NINTH DEFENSE
`
`(LICENSE)
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`69.
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`Plaintiff’s claims for relief are barred in whole or in part by express or implied
`
`license.
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`70.
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`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
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`FRAND license terms for the patents asserted in the Complaint and breach of their disclosure
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`requirements or based on other circumstances.
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`71.
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`Furthermore, NSN issued a written declaration to the SSO, committing to license
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`its Declared-Essential Patents to all implementers of the LTE standard on fair, reasonable, and
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`non-discriminatory (“FRAND”) terms, but when 3GPP was considering alternative technologies,
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`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 LTE standard, AT&T is at the very least entitled to a license on FRAND terms.
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`TENTH DEFENSE
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`(PATENT EXHAUSTION)
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`72.
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`Plaintiff’s claims for relief are barred in whole or in part by the doctrine of patent
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`exhaustion.
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`ELEVENTH DEFENSE
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`(WAIVER, ESTOPPEL, CLAIM PRECLUSION, LACHES, UNCLEAN HANDS)
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`73.
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`Plaintiff’s claims against AT&T regarding the Asserted Patents are barred by the
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`equitable doctrines of waiver, estoppel, claim preclusion, laches, and/or unclean hands.
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`74.
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`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.
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`75.
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`Furthermore, NSN issued a written declaration to the SSO, committing to license
`
`its Declared-Essential Patents to all implementers of the LTE standard on fair, reasonable, and
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`non-discriminatory (“FRAND”) terms, but when 3GPP was considering alternative technologies,
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`deliberately and deceptively concealed from 3GPP and its constituent SSOs that it in fact would
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`not offer FRAND license terms. Accordingly, as to all patents CCE and NSN has declared
`
`essential to the LTE standard, AT&T is at the very least entitled to a license on FRAND terms.
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`TWELFTH DEFENSE
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`(UNENFORCEABILITY OF ’966 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
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`Asserted Patents have engaged in standards-setting misconduct, including without limitation
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`breach of the commitment to license one or more of the Asserted Patents on fair, reasonable, and
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`nondiscriminatory terms and CCE’s breach of its patent disclosure requirements or based on
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`other circumstances.
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`77.
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`At various times, Nokia Siemens Networks (“NSN”), a predecessor-in-interest of
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`CCE, declared the Asserted Patents to the European Telecommunications Standards Institute
`
`(“ETSI”), a leading standard-setting organization (“SSO”), as purportedly essential to practice
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`the Long-Term Evolution (“LTE”) standard, one of the world’s most widely adopted
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`telecommunications standard. (The patents NSN has declared essential to the LTE standard are
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`referred to collectively herein as the “Declared-Essential Patents”). Time and again, however,
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`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 LTE
`
`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
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`declaration to the SSO, committing to license its Declared-Essential Patents to all implementers
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`of the LTE standard on fair, reasonable, and non-discriminatory (“FRAND”) terms, but when
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`3GPP was considering alternative technologies, deliberately and deceptively concealed from
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`3GPP and its constituent SSOs that it in fact would not offer FRAND license terms.
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`Accordingly, as to all patents CCE and NSN has declared essential to the LTE standard, AT&T
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`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
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`develops globally applicable standard specifications for fourth generation (“4G”) mobile phones
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`and other telecommunications systems.
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`79.
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`80.
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`3GPP was established on or around December 1998.
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`3GPP’s standardization efforts include Third Generation Wideband Code
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`Division Multiple Access cellular standards.
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`81.
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`3GPP is composed of Organizational Partners and Individual Members.
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`Organizational Partners are standard-setting organizations. The European Telecommunications
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`Standards Institute (“ETSI”) is an Organizational Partner of 3GPP. The Individual Members of
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`3GPP are members of the Organizational Partners of 3GPP, including members of ETSI.
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`82.
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`On information and belief supported by publicly available documents, CCE’s
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`predecessor-in-interest NSN has been a member of ETSI and 3GPP.
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`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”).
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`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
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`Organizational Partner. 3GPP’s IPR Policy requires its Individual Members to declare to their
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`Organizational Partners any IPR that they believe to be essential, or potentially essential, to any
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`work being conducted within 3GPP; the IPR Policy also requires Organizational Partners to
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`“encourage their respective members to grant licenses on fair, reasonable terms and conditions
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`and on a non-discriminatory basis.”
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`85.
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`As members of ETSI, CCE’s predecessor-in-interest NSN was required to comply
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`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.
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`87.
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`Clause 4 of the policy requires, among other things, that members timely disclose
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`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
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`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
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`which might be ESSENTIAL if that proposal is adopted.
`
`88.
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`Under ETSI’s IPR policies, the term “IPR” is defined to include patent
`
`applications as well as issued patents:
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`“IPR” shall mean any intellectual property right conferred by statute law including
`
`applications therefore other than trademarks.
`
`
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`- 14 -
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 15 of 23 PageID #: 1786
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`89.
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`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-
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`discriminatory [FRAND] terms and conditions under such IPR to at least the following
`
`extent:
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`• MANUFACTURE, including the right to make or have made customized components
`
`and sub-systems to the licensee’s own design for use in MANUFACTURE;
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`• sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED;
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`• 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.
`
`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
`
`
`
`- 15 -
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`
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 16 of 23 PageID #: 1787
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`TECHNICAL SPECIFICATION being unavailable.” The IPR Policy specifies that it “shall be
`
`governed by the laws of France.” Clause 12.
`
`93.
`
`During all times relevant to these allegations, NSN has been a member of ETSI.
`
`NSN actively participated in 3GPP’s development of the LTE standard. As a result of its
`
`membership in ETSI and participation in 3GPP’s standard-setting process for LTE, 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 36.213 and TS 36.300 infringe the ’966 Patent.
`
`95.
`
`96.
`
`97.
`
`CCE has represented that it is the owner or assignee of the ’966 Patent.
`
`The ’966 Patent issued from Application No. 12/387,661 filed on May 5, 2009.
`
`The ’966 Patent claims priority to Provisional Application No. 61/126,617, filed
`
`on May 5, 2008.
`
`98.
`
`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.
`
`99.
`
`3GPP is composed of specification groups responsible for drafting and amending
`
`technical specifications associated with the 3GPP.
`
`100. 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
`
`
`
`- 16 -
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`
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 17 of 23 PageID #: 1788
`
`has alleged that certain products having wireless capability compliant with TS 36.213 standards
`
`infringe the ’966 Patent.
`
`101. On
`
`information and belief supported by publicly available documents,
`
`representatives of NSN attended WG1 meetings and participated in drafting and revising 36.213.
`
`For example, the following NSN employees attended WG1 meetings: Thomas Chapman,
`
`Mieszko Chmiel, Jarl Lindholm, Timo Lunttlia, Karri Ranta-aho, and Chunhai Yao.
`
`102. On information and belief supported by publicly available documents, at the
`
`beginning of each WG1 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 March 31-April 4, 2008, the TSG-RAN WG1 group met for meeting
`
`#52 bis in Shenzhen, China in connection with the standards-setting process.
`
`104. On
`
`information and belief supported by publicly available documents,
`
`representatives of CCE’s predecessor NSN, including Thomas Chapman, Mieszko Chmiel, Jarl
`
`
`
`- 17 -
`
`
`
`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 18 of 23 PageID #: 1789
`
`Lindholm, Timo Lunttlia, Karri Ranta-aho, and Chunhai Yao, attended the March-April 2008
`
`meeting.
`
`105.
`
`Jarl Lindholm is a named inventor of the ’966 Patent.
`
`106. On information and belief supported by publicly available documents, there were
`
`significant discussion regarding relevant changes to TS 36.213, such as “36.213 PUCCH timing
`
`and other formatting and typo corrections” (R1-081586) and “PUCCH power control for non-
`
`unicast information” (R1-081697), during the March-April 2008 meeting.
`
`107. On information and belief supported by publicly available documents,, Ericsson,
`
`CATT, Motorola, Nokia, Nokia Siemens Networks, LGE submitted for consideration “UL
`
`ACK/NACK timing for TDD” (R1-081582).
`
`108. On information and belief supported by publicly available documents, during the
`
`March-April 2008 meeting, Jari Lindholm presented for discussion, at least, “Summary of power
`
`control email discussion” (R1-081463) and “Triggers for Power Headroom Reports in EUTRAN
`
`Uplink” (R1-081464).
`
`109. On or about May 5-9, 2008, the TSG-RAN WG1 group met for meeting #53 in
`
`Kansas City, USA in connection with the standards-setting process.
`
`110. On
`
`information and belief supported by publicly available documents,
`
`representatives of CCE’s predecessor NSN, including Mieszko Chmiel, Jarl Lindholm, Timo
`
`Lunttlia, Karri Ranta-aho, and Chunhai Yao attended the May 2008 meeting.
`
`111. On information and belief supported by publicly available documents, there were
`
`significant discussion and changes made to TS 36.213 during the May 2008 meeting.
`
`112. On information and belief supported by publicly available documents, during the
`
`May 2008 meeting, Jari Lindholm presented for discussion, at least, “UL grant for random
`
`
`
`- 18 -
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`
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 19 of 23 PageID #: 1790
`
`access message 3” (R1-082078, R1-081840) and “Trig PDCCH format for allocation of
`
`dedicated preambles” (R1-081839).
`
`113. On or about May 27-30, 2008, the TSG-RAN Plenary group met for meeting #40
`
`in Prague, Czech Republic in connection with the standards-setting process.
`
`114. On
`
`information and belief supported by publicly available documents,
`
`representatives of CCE’s predecessor NSN, including Jiang Chang, Woonhee Hwang, Norbert
`
`Klehn and Alexander Vesely, attended the May 2008 meeting in Prague.
`
`115. On information and belief supported by publicly available documents, significant
`
`changes to TS 36.213 were approved during the May 2008 meeting in Prague.
`
`116. NSN waited until June 21, 2011 to declare the ’966 Patent as relevant to TS
`
`36.321.
`
`117. CCE’s predecessor NSN had a duty to disclose the ’966 Patent as essential to
`
`standards drafted and revised in TSG RAN WG1 and the 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.
`
`118. On information and belief supported by publicly available documents, CCE’s
`
`predecessor NSN breached its duty to disclose the ’966 Patent by intentionally and knowingly
`
`delaying the disclosure of the ’966 Patent as essential, or potentially essential, to the
`
`specifications being drafted and revised at TSG RAN WG1 and the TSG RAN Plenary groups.
`
`119. On information and belief supported by publicly available documents, the
`
`foregoing delay to disclose the ’966 Patent was made in bad faith with the intent to deceive and
`
`induce reliance.
`
`
`
`- 19 -
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`
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`Case 6:14-cv-00982-KNM Document 157 Filed 11/13/15 Page 20 of 23 PageID #: 1791
`
`120. The foregoing actions and conduct have caused damage and continue to cause
`
`damage to AT&T and relevant third-parties.
`
`121. Accordingly, the ’966 Patent is unenforceable due to implied waiver.
`
`THIRTEENTH DEFENSE
`
`(UNENFORCEABILITY OF ’966 PATENT DUE TO EQUITABLE ESTOPPEL)
`
`122. AT&T incorporates by reference paragraphs 1-121 above.
`
`123. CCE’s predecessor NSN had a duty to disclose the ’966 Patent as essential to
`
`standards drafted and revised in TSG RAN WG1 and the TSG RAN Plenary groups as a result of
`
`its membe
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