Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 1 of 15 PageID #: 2129
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
`
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`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
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`LG ELECTRONICS’ OPPOSITION TO PLAINTIFF’S MOTION TO DISMISS
`BREACH OF CONTRACT COUNTERCLAIMS BY CERTAIN MANUFACTURER
`DEFENDANTS
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`
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`Civil Action No. 6:14-cv-982-KNM
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`Plaintiff,
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`
`v.
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`LG ELECTRONICS, INC., ET AL.,
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`Defendants.
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 2 of 15 PageID #: 2130
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`TABLE OF CONTENTS
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`Page
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`LEGAL STANDARD ......................................................................................................................1
`STATEMENT OF FACTS ..............................................................................................................2
`ARGUMENT ...................................................................................................................................4
`I.
`LGE’S BREACH OF CONTRACT COUNTERCLAIM IS ADEQUATELY
`PLEADED ON ITS FACE ..................................................................................................4
`A.
`Licensing Declarations Made by CCE’s Predecessors-in-Interest
`Constitute Express or Implied Contracts Between CCE and LGE ..........................4
`CCE is Bound by the Licensing Declarations of Its Predecessors ...........................7
`B.
`Performance or Tendered Performance Has Been Adequately Pleaded ..................7
`C.
`THE DOCUMENTS REFERENCED IN THE COMPLAINT PROVIDE
`ADDITIONAL FACTUAL SUPPORT FOR THE BREACH OF CONTRACT
`COUNTERCLAIM ..............................................................................................................9
`CONCLUSION ..............................................................................................................................10
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`II.
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`i
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 3 of 15 PageID #: 2131
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Apple, Inc. v. Motorola, Inc., 869 F. Supp. 2d 901 (N.D. Ill. 2012) ............................................8, 9
`Apple, Inc. v. Motorola Mobility, Inc.,
`Case No. 11-CV-178, 2011 U.S. Dist. LEXIS 72745
`(W.D. Wis. June 7, 2011) ..........................................................................................................6
`Apple Inc. v. Samsung Elecs. Co.,
`Case No. 11-CV-01846, 2012 U.S. Dist. LEXIS 67102
`(N.D. Cal. May 14, 2012) ......................................................................................................6, 8
`Ashcroft v. Iqbal, 556 U.S. 662 (2009) .................................................................................. passim
`Bell Atl. Corp. v. Twombly, 550 U.S. 554 (2007) ............................................................................1
`BMC Software, Inc. v. ServiceNow, Inc.,
`Case No. 2:14-CV-903, 2015 U.S. Dist. LEXIS 64366
`(E.D. Tex. May 18, 2015) ............................................................................................4, 7, 9, 10
`Bowlby v. City of Aberdeen, 681 F.3d 215 (5th Cir. 2012)..............................................................1
`Castillo v. Ocwen Loan Servicing, L.L.C., 539 F. App’x 621 (5th Cir. 2013) ................................6
`Datatreasury Corp. v. Wells Fargo & Co., 522 F.3d 1368 (Fed. Cir. 2008)...................................7
`Lone Star Fund V (U.S.), L.P. v. Barclays Bank PLC,
`594 F.3d 383 (5th Cir. 2010) .................................................................................................2, 9
`Microsoft Corp. v. Motorola, Inc.,
`864 F. Supp. 2d 1023 (W.D. Wash. 2012), aff’d, 795 F.3d 1024 (9th Cir.
`2015) ......................................................................................................................................6, 9
`O’Shea v. Parkey, No. 4:12CV265, 2014 WL 494905 (E.D. Tex. Feb. 4, 2014) ...........................2
`Realtek Semiconductor Corp. v. LSI Corp., 946 F. Supp. 2d 998 (N.D. Cal. 2013) ...............6, 8, 9
`TQP Dev., LLC v. Callidus Software Inc.,
`No. 2:12-CV-799-JRG-RSP, 2013 WL 4826011 (E.D. Tex. Sept. 9, 2013) .............................1
`United States v. Bollinger Shipyards, Inc.,
`775 F.3d 255 (5th Cir. 2014) .....................................................................................................7
`OTHER AUTHORITIES
`Fed. R. Civ. P. 8(a)(2) ......................................................................................................................1
`Fed. R. Civ. P. 12(b)(6)............................................................................................................1, 2, 4
`United States Department of Justice and United States Patent & Trademark
`Office, “Policy Statement on Remedies for Standards-Essential Patents
`Subject to Voluntary F/RAND Commitments” (January 8, 2013) ............................................6
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`ii
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 4 of 15 PageID #: 2132
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`Plaintiff Cellular Communications Equipment LLC (“CCE”), after serving two amended
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`complaints that barely survived multiple motions to dismiss, now argues in its three-page motion
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`to dismiss that the detailed breach of contract counterclaim of Defendants—LG Electronics, Inc.,
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`LG Electronics U.S.A., Inc. (collectively “LGE”)—is somehow deficient. LGE’s counterclaim
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`is grounded in the express commitment of CCE and/or its predecessors-in-interest to license
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`certain of the patents-in-suit on FRAND terms with respect to the very same standards that CCE
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`relies on for its allegations of infringement. LGE’s counterclaim details the factual and legal
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`bases for the contractual commitment as well as the bases for LGE’s allegations of breach; it is
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`well-pleaded, and passes muster under the local rules of this Court, relevant case law, and the
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`Twombly pleading standard. CCE’s Motion to Dismiss Breach of Contract Counterclaims by
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`Certain Manufacturer Defendants (Dkt. No. 169 (hereafter, “Motion to Dismiss”)) should
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`therefore be denied.
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`Legal Standard
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`A complaint must contain “a short and plain statement of the claim showing that the
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`pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). To survive a motion to dismiss under
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`Federal Rule of Civil Procedure 12(b)(6), a pleading “must contain sufficient factual matter,
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`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
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`U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007)). A court
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`“must assume that all well-pleaded facts are true, and view those facts in the light most favorable
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`to the plaintiff.” TQP Dev., LLC v. Callidus Software Inc., No. 2:12-CV-799-JRG-RSP, 2013
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`WL 4826011, at *1 (E.D. Tex. Sept. 9, 2013) (citing Bowlby v. City of Aberdeen,
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`681 F.3d 215, 218 (5th Cir. 2012)). A party does not need to present “detailed factual
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`allegations,” though mere “labels and conclusions” or “a formulaic recitation of the elements of a
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`cause of action” are insufficient to meet the pleading standard. Iqbal, 556 U.S. at 678. A party
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`“meets this standard when it ‘pleads factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged.’” O’Shea v. Parkey, No.
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`4:12CV265, 2014 WL 494905, at *2 (E.D. Tex. Feb. 4, 2014) (quoting Iqbal, 556 U.S. at 678).
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`In determining whether a party satisfies the pleading standard, the Court should consider
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`“the complaint, any documents attached to the complaint, and any documents attached to the
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`motion to dismiss that are central to the claim and referenced by the complaint.” Lone Star Fund
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`V (U.S.), L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010). In reviewing these
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`documents in response to a Rule 12(b)(6) motion to dismiss, “[t]he court’s task is to determine
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`whether the plaintiff has stated a legally cognizable claim that is plausible, not to evaluate the
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`plaintiff’s likelihood of success.” Id.
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`Statement of Facts
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`On June 25, 2013, CCE filed its Initial Complaint for Patent Infringement in Case No.
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`6:13-cv-00508. In that Complaint, CCE alleged infringement of U.S. Patent Nos. 6,377,804
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`(“the ’804 patent”), 6,819,923 (“the ’9923 patent”), 7,215,962 (“the ’962 patent”), 7,941,174
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`(“the ’174 patent”), 8,055,820 (“the ’820 patent”), and 7,218,923 (“the ’8923 patent”). See Case
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`No. 6:13-cv-00508, Dkt. No. 1. On April 10, 2015, CCE filed a Second Amended Complaint in
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`Case No. 6:13-cv-00508, now alleging infringement of only the ’9923 patent, the ’174 patent, the
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`’820 patent, the ’8923 patent, and the ’019 patent. See Case No. 6:13-cv-00508, Dkt. No. 79.
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`Separately, on December 19, 2014, CCE filed a Complaint alleging infringement of U.S.
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`Patent Nos. 8,385,966 (“the ’966 Patent”), 8,848,556 (“the ’556 Patent”), and 8,868,060 (“the
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`’060 Patent”) in the above-captioned case. See Case No. 6:14-cv-00982, Dkt. No. 1. On April
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`16, 2015, CCE filed a First Amended Complaint maintaining its allegations of infringement with
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`respect to the ’966, ’556, and’060 Patents. See Case No. 6:14-cv-00982, Dkt. No. 147. On
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`2
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 6 of 15 PageID #: 2134
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`November 4, 2015, Case No. 6:13-cv-00508 was consolidated with Case No. 6:14-cv-00982 with
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`respect to LGE. See Case No. 6:14-cv-00982, Dkt. No. 145.
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`In the various complaints, CCE alleged that at least the ’9923 Patent, the ’174 Patent, the
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`’820 Patent, the ’019 Patent, the ’966 Patent, the ’556 Patent, and the ’060 Patent (hereinafter,
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`“Declared Essential Patents”) were “standard essential patents” disclosed to the 3rd Generation
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`Partnership Project (or “3GPP”) via the European Telecommunications Standards Institute (or
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`“ETSI”), “an organizational member of 3GPP,” and that LGE was a 3GPP member organization
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`or was “affiliated with a 3GPP member organization.” See Case No. 6:13-cv-00508, Dkt. No. 79
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`at ¶¶ 20, 31, 45, 70; see also Case No. 6:14-cv-00982, Dkt. No. 28 at ¶¶ 24, 40, 52.
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`LGE answered the various complaints in Case No. 6:13-cv-508 at Dkt. No. 87 and Case
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`No. 6:14-cv-982 as Dkt. No. 151. In its Answers, LGE alleged that “[a]s a member of ETSI, and
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`to comply with ETSI’s Intellectual Property Rights (‘IPR’) Policy, CCE and/or its predecessors
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`represented to ETSI, ETSI members, and third parties that it would grant irrevocable licenses to
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`the Alleged Standard Essential Patents on fair, reasonable, and non-discriminatory (‘FRAND’)
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`terms and conditions.” See e.g., Case No. 6:14-cv-982, Dkt. No. 151 at ¶¶ 201-209. LGE also
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`alleged that “CCE did not make an offer to license the Alleged Standard Essential Patents on
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`FRAND terms to LGE prior to filing its Complaint for patent infringement.” Id. at ¶ 205.
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`Accordingly, LGE asserted a breach of contract counterclaim based on ETSI’s IPR Policy and
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`CCE’s (or its predecessors’) ETSI membership and activities, including any FRAND licensing
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`declarations made to ETSI to comply with ETSI’s IPR Policy. Id. at ¶¶ 201-209.
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`On December 7, 2015, CCE filed the Motion to Dismiss. See Case No. 6:14-cv-982, Dkt.
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`No. 169.
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`3
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`Argument
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`I.
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`LGE’S BREACH OF CONTRACT COUNTERCLAIM IS ADEQUATELY
`PLEADED ON ITS FACE
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`CCE advances two arguments for why LGE’s counterclaim should be dismissed. First,
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`CCE alleges LGE fails to identify an “express and/or implied contract” between LGE and CCE.
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`(Motion to Dismiss at 3.) It also alleges that even if such an express or implied contract existed
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`between LGE and one of CCE’s predecessors, LGE fails to allege “why CCE is a proper party to
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`sue” for breach of this contract. (Id.) Second, CCE alleges LGE’s counterclaim is deficient
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`because it does not plead LGE’s “performance or tendered performance,” which according to
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`CCE is a required element of a breach of contract claim. (Id.) CCE’s arguments are without
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`merit because LGE’s breach of contract counterclaim includes more than sufficient factual detail
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`to state a plausible claim for relief. Iqbal, 556 U.S. at 678; see also BMC Software, Inc. v.
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`ServiceNow, Inc., Case No. 2:14-CV-903, 2015 U.S. Dist. LEXIS 64366, at *8-10 (E.D. Tex.
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`May 18, 2015) (denying three motions to dismiss under Rule 12(b)(6) because the pleadings
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`were “sufficiently plausible”).
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`A.
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`Licensing Declarations Made by CCE’s Predecessors-in-Interest Constitute
`Express or Implied Contracts Between CCE and LGE
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`In its Motion to Dismiss, CCE inexplicably cherry-picks one sentence from one
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`paragraph of LGE’s breach of contract counterclaim and suggests this isolated sentence is LGE’s
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`“best attempt” at pleading the counterclaim. (Motion to Dismiss at 2-3.) LGE actually provided
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`ten paragraphs of detailed factual allegations supporting this counterclaim. See Case No. 6:14-
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`cv-982, Dkt. No. 151 at ¶¶ 200-209. LGE, for example, pleaded that the contract in question
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`arises from the ETSI IPR Policy and reflects FRAND licensing commitments that CCE and/or its
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`predecessors-in-interest made to ETSI and its members regarding the asserted Declared Essential
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`4
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 8 of 15 PageID #: 2136
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`Patents.1 More specifically, LGE also pleaded that the licensing declarations “represented to
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`ETSI, ETSI members, and third parties that it would grant irrevocable licenses to the [Declared]
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`Essential Patents on fair, reasonable, and non-discriminatory (‘FRAND’) terms and conditions”
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`with respect to the very same ETSI standards that are at the heart of CCE’s infringement
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`contentions. Id. at ¶ 203. LGE—as an ETSI member and/or third party—is an express or
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`implied party2 to the irrevocable licensing declarations, which, as LGE pleaded, “are permanent,
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`and cannot be revoked by sale of the patent.” Id. at ¶ 204. CCE breached those obligations by
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`failing to “make an offer to license the Alleged Standard Essential Patents on FRAND terms to
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`LGE prior to filing its Complaint for patent infringement” and by seeking more than a FRAND
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`royalty in its prayer for relief. Id. at ¶¶ 206-206.
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`The sole sentence from LGE’s counterclaim cited in CCE’s Motion to Dismiss clearly
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`summarizes the factual basis of these contractual obligations, which as demonstrated above were
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`more thoroughly expounded in the remainder of LGE’s pleading:
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`CCE and/or its predecessors’ ETSI membership and activities, including the
`declarations it made to comply with ETSI’s IPR policy for the Alleged Standard
`Essential Patents, created an express and/or implied contract with ETSI and/or
`ETSI members including an agreement that CCE and/or its predecessors would
`license those patents on FRAND terms and conditions. ETSI’s IPR Policy does
`not limit the right to obtain a license on FRAND terms and conditions to ETSI
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`1 As described above, CCE asserts in its own pleadings that at least the ’9923 Patent, the
`’174 Patent, the ’820 Patent, the ’019 Patent, the ’966 Patent, the ’556 Patent, and the ’060
`Patent are “standard essential patents” disclosed to 3GPP and its member organizations via ETSI.
`See Case No. 6:13-cv-00508, Dkt. No. 79 at ¶¶ 20, 31, 45, 70; see also Case No. 6:14-cv-00982,
`Dkt. No. 28 at ¶¶ 24, 40, 52. In fact, CCE relies on these disclosures as evidence of alleged
`actual knowledge by LGE of these patents. (Id.) As the licensing declarations produced in this
`case by CCE confirm, each of these patents was expressly the subject of a FRAND licensing
`commitment made by CCE’s predecessor to ETSI in accordance with the ETSI IPR Policy.
`Levy Dec., Ex. A (June 11, 2009 Declaration); Levy Dec., Ex. B (September 7, 2009
`Declaration); Levy Dec., Ex. C (August 12, 2010 Declaration).
`2 Even if LGE were not an express party to the licensing declarations, it was at least an
`intended third-party beneficiary to those declarations. See § I(C), infra.
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`5
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 9 of 15 PageID #: 2137
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`members; third parties that are not ETSI members also have the right to be
`granted licenses under those patents on FRAND terms and conditions.
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`Motion to Dismiss at 3 (emphasis added). Assuming the foregoing assertions are true—as this
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`Court must in assessing CCE’s Motion to Dismiss—LGE has sufficiently pleaded that a valid
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`express and/or implied contract exists between CCE and LGE through the licensing declarations
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`submitted by CCE (or its predecessors-in-interest) concerning the Declared Essential Patents and
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`that these declarations obligate CCE to provide LGE a FRAND license to the Declared Essential
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`Patents. Indeed, several district and circuit courts have determined FRAND licensing
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`declarations just like those at issue here create contractual obligations. See, e.g., Realtek
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`Semiconductor Corp. v. LSI Corp., 946 F. Supp. 2d 998, 1005 (N.D. Cal. 2013); Apple Inc. v.
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`Samsung Elecs. Co., Case No. 11-CV-01846, 2012 U.S. Dist. LEXIS 67102 at *40-44 (N.D. Cal.
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`May 14, 2012); Microsoft Corp. v. Motorola, Inc., 864 F. Supp. 2d 1023, 1036-39 (W.D. Wash.
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`2012), aff’d, 795 F.3d 1024 (9th Cir. 2015); Apple, Inc. v. Motorola Mobility, Inc., Case No. 11-
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`CV-178, 2011 U.S. Dist. LEXIS 72745 at *22-33 (W.D. Wis. June 7, 2011); see also United
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`States Department of Justice and United States Patent & Trademark Office, “Policy Statement on
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`Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments”
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`(January 8, 2013) at 7, n.14 (Declaration of Kfir B. Levy (“Levy Dec.”), Ex. D).
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`The sole case cited by CCE, Castillo v. Ocwen Loan Servicing, L.L.C., is distinguishable.
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`539 F. App’x 621 (5th Cir. 2013). In Castillo, the plaintiff relied on the doctrine of partial
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`performance of a contract that did not satisfy the statute of frauds and was hence invalid. Id. at
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`624. The Castillo court merely reiterated that the existence of a valid contract is a required
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`element to any breach of contract claim—a conclusion that LGE does not dispute. Here, LGE
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`has pleaded sufficient facts to allow this Court to draw the “reasonable inference” that CCE has
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`6
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 10 of 15 PageID #: 2138
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`plausibly breached its obligation—by “more than a sheer possibility”—to license the Declared
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`Essential Patents on FRAND terms. BMC Software, 2015 U.S. Dist. LEXIS 64366, at *2-3
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`(quoting United States v. Bollinger Shipyards, Inc., 775 F.3d 255, 260 (5th Cir. 2014)).
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`B.
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`CCE is Bound by the Licensing Declarations of Its Predecessors
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`LGE also adequately pleaded the factual basis surrounding why CCE—the purported
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`current owner of the Declared Essential Patents—is the proper party to sue for this breach of this
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`contractual commitment. As explained in LGE’s counterclaim, when an ETSI member submits
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`an IPR Information Disclosure and Licensing Declaration Form identifying a patent as a
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`potentially Essential IPR, the commitments made with regard to the declared patent “cannot be
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`revoked by sale of the patent.” See Case No. 6:14-cv-982, Dkt. No. 151 at ¶ 204. In other words,
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`the contractual obligations associated with the licensing declarations bind all successors-in-
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`interest and current owners of the Declared Essential Patents. CCE, as the purported current
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`owner of the Declared Essential Patents, is therefore also obligated to license these patents on
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`FRAND terms because assignees “take[ ] a patent subject to the legal encumbrances thereon.”
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`Datatreasury Corp. v. Wells Fargo & Co., 522 F.3d 1368, 1372–72 (Fed. Cir. 2008). LGE has
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`therefore pleaded sufficient facts to state a plausible claim for relief against CCE, as the
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`successor-in-interest and purported current owner of the Declared Essential Patents.
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`C.
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`Performance or Tendered Performance Has Been Adequately Pleaded
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`CCE’s argument regarding LGE’s failure
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`to plead “performance or
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`tendered
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`performance” also misses the mark. (Motion to Dismiss at 3.) CCE argues without any
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`supporting case law that LGE “must allege the tender of their respective willingness to license
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`CCE patents on FRAND terms,” but CCE misunderstands the nature of the licensing
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`declarations. (Id.) As propounded in LGE’s counterclaim, the licensing declarations contain
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`promises that “CCE and/or its predecessors would license [the standard essential] patents on
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`7
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 11 of 15 PageID #: 2139
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`FRAND terms and conditions” to both ETSI members and non-members alike. See Case No.
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`6:14-cv-982, Dkt. No. 151 at ¶¶ 202-203. LGE is therefore entitled to FRAND licenses for the
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`Declared Essential Patents by virtue of its membership in ETSI. CCE breached its commitment
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`at least when it filed this lawsuit without even offering a FRAND license and sought damages in
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`excess of FRAND terms. See, e.g., Realtek, 946 F. Supp. 2d at 1005 (instigating an ITC Section
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`337 action prior to offering a FRAND license is a breach of a FRAND licensing declaration). In
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`other words, LGE’s membership in ETSI constitutes the requisite performance under the
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`contract. All third parties, including those who implement the ETSI technical specification or
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`standard under which the Alleged Standard Essential Patents are declared essential, are also
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`entitled to a FRAND license; therefore, manufacturing or selling a product that makes use of the
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`ETSI technical specification or standard under which the patent was declared essential would
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`also constitute the requisite performance under the contract.
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`As an intended third-party beneficiary to the licensing declarations made to ETSI, LGE is
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`also eligible to sue to enforce the declarations. See Apple Inc. v. Samsung Elecs. Co., 2012 U.S.
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`Dist. LEXIS 67102 at *41-42 (third party may sue to enforce ETSI licensing declarations under a
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`third-party beneficiary contract theory); Realtek, 946 F. Supp. 2d at 1005 (same as applied to
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`IEEE licensing declarations). Under this theory, ETSI tendered performance under the contract
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`when the Declared Essential Patents were declared essential by ETSI in exchange for the
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`licensing declarations. See Apple, Inc. v. Motorola, Inc., 869 F. Supp. 2d 901, 914 (N.D. Ill.
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`2012) (standard essential patent owner “agreed to license its standards-essential patents on
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`FRAND terms as a quid pro quo for their being declared essential to the standard.”). LGE has
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`thus adequately pleaded “performance or tendered performance” under both a third-party
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`beneficiary and an express or implied contract theory.
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`8
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 12 of 15 PageID #: 2140
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`Contrary to CCE’s unsupported assertions, there is no requirement to negotiate or ask for
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`a FRAND license before a breach of a FRAND commitment occurs. See Microsoft Corp. v.
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`Motorola, Inc., 864 F. Supp. 2d at 1035 (negotiation of a FRAND license is not a condition
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`precedent to a patent owner’s FRAND obligations); see also Apple, Inc. v. Motorola, Inc., 869 F.
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`Supp. 2d at 914 (agreements to license on FRAND terms are not “conditioned [] on prospective
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`licensees’ making counteroffers in license negotiations”). Rather, the breach of CCE’s FRAND
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`obligations occurred as soon as CCE filed the present lawsuit before offering LGE the FRAND
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`license to which it was entitled. Realtek, 946 F. Supp. 2d at 1005. The factual underpinning for
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`this claim is clearly expressed in LGE’s counterclaim: “CCE did not make an offer to license the
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`[Declared] Essential Patents on FRAND terms and conditions to LGE before filing its Complaint
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`for patent infringement and to date has not done so…. CCE’s conduct [] constitutes a breach of
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`its contractual obligations to ETSI and/or ETSI members and deprives third parties of their right
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`to be granted FRAND licenses under the Alleged Standard Essential Patents.” See Case No.
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`6:14-cv-982, Dkt. No. 151 at ¶¶ 200-209. LGE’s breach of contract counterclaim therefore
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`includes more than sufficient factual detail to state a “sufficiently plausible” claim for breach of
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`contract. Iqbal, 556 U.S. at 678; BMC Software, 2015 U.S. Dist. LEXIS 64366, at *8-10.
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`II.
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`IN THE COMPLAINT PROVIDE
`THE DOCUMENTS REFERENCED
`ADDITIONAL FACTUAL SUPPORT FOR THE BREACH OF CONTRACT
`COUNTERCLAIM
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`Since both the ETSI IPR Policy and licensing declarations made to ETSI were referenced
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`within LGE’s counterclaim, these documents must also be considered when assessing the
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`sufficiency of LGE’s pleading. Lone Star Fund, 594 F.3d at 387. These documents provide
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`further factual support for LGE’s counterclaim.
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`Each of the licensing declarations made by Nokia Siemens Networks (CCE’s
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`predecessor-in-interest) states that the declarant is “prepared to grant irrevocable licenses…on
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`9
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 13 of 15 PageID #: 2141
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`terms and conditions which are in accordance with Clause 6.1 of the ETSI IPR Policy.” (Levy
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`Dec., Ex. A at 2; Levy Dec., Ex B at 1; Levy Dec., Ex. C at 2.) Clause 6.1 of the ETSI IPR
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`Policy explains that when a patent is identified to ETSI as “essential,” the patent owner will be
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`immediately requested to give “an irrevocable undertaking in writing that it is prepared to grant
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`irrevocable licences on fair, reasonable and non-discriminatory (‘FRAND’) terms and
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`conditions.” (Levy Dec., Ex. E at § 6.1.) ETSI’s IPR Policy also requires that “FRAND
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`licensing undertakings made pursuant to Clause 6 shall be interpreted as encumbrances that
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`bind all successors-in-interest,” like CCE. (Id. at § 6.1bis (emphasis added).) On their face,
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`therefore, the ETSI IPR Policy and licensing declarations can be reasonably interpreted to create
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`an express and/or implied contract between CCE, the successor-in-interest to the Declared
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`Essential Patents, and LGE, an ETSI member and third-party implementer of the ETSI technical
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`specifications and standards under which the Alleged Standard Essential Patents were declared
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`essential. (See also id. at § 12 (explaining that rights and obligations under the ETSI IPR Policy
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`are of “a contractual nature.”).) These documents, along with the pleadings contained within
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`LGE’s counterclaim, include more than sufficient factual detail to state a “sufficiently plausible”
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`claim for relief for breach of contract. Iqbal, 556 U.S. at 678; BMC Software, 2015 U.S. Dist.
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`LEXIS 64366, at *8-10.
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`Conclusion
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`For the foregoing reasons, CCE’s Motion to Dismiss is without merit, and it should be
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`denied.
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`DATED: December 24, 2015
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`Respectfully submitted,
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`/s/ Jaime B. Beaber, with permission by
`Michael E. Jones
`Jamie B. Beaber (D.C. Bar No. 484186)
`Kfir B. Levy (D.C. Bar No. 9891212)
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 14 of 15 PageID #: 2142
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`Saqib J. Siddiqui
`MAYER BROWN LLP
`1999 K Street, N.W.
`Washington, DC 20006-1101
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`ssiddiqui@mayerbrown.com
`klevy@mayerbrown.com
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`Michael E. Jones
`State Bar No. 10929400
`Allen F. Gardner
`State Bar No. 24043679
`POTTER MINTON P.C.
`110 N. College Avenue, Suite 500
`Tyler, Texas 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
`mikejones@potterminton.com
`allengardner@potterminton.com
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`ATTORNEYS FOR LG ELECTRONICS,
`INC. AND LG ELECTRONICS U.S.A.,
`INC.
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`Case 6:14-cv-00982-KNM Document 178 Filed 12/24/15 Page 15 of 15 PageID #: 2143
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
`CM/ECF system per Local Rule CV-5(a)(3) on December 24, 2015.
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`/s/ Michael E. Jones
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