Case 6:14-cv-00982-KNM Document 181 Filed 01/04/16 Page 1 of 5 PageID #: 2277
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
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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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`CIVIL ACTION NO. 6:14-cv-982-KNM
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`JURY TRIAL DEMANDED
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`CIVIL ACTION NO. 6:13-cv-508-KNM
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`JURY TRIAL DEMANDED
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`CIVIL ACTION NO. 6:14-cv-983-KNM
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`JURY TRIAL DEMANDED
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`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
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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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`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
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`Plaintiff,
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`v.
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`SONY MOBILE COMMUNICATIONS
`INC., ET AL.,
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`Defendants.
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`Case 6:14-cv-00982-KNM Document 181 Filed 01/04/16 Page 2 of 5 PageID #: 2278
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`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD., ET
`AL.,
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`Defendants.
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`CIVIL ACTION NO. 6:14-cv-759-KNM
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`JURY TRIAL DEMANDED
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`CONSOLIDATED REPLY IN SUPPORT OF PLAINTIFF’S MOTION TO DIMSISS
`BREACH OF CONTRACT COUNTERCLAIMS ASSERTED
`BY CERTAIN MANUFACTURER DEFENDANTS
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`There is an obvious, fatal flaw in Defendants’ attempt to salvage their respective breach
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`of contract counterclaims. Because CCE never made any declarations to ETSI regarding the
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`patents-in-suit, CCE is not bound by the cited licensing guidelines. To the extent that CCE’s
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`predecessor-in-interest declared certain patents-in-suit to ETSI, any obligation of the predecessor
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`does not bind CCE because the cited declarations were made before the relied-upon successor-
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`in-interest provision was established in the ETSI rules.
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`The six ETSI declarations included with Defendants’ response briefs were executed by
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`representatives of NSN (the predecessor-in-interest to the subject patents), not CCE. As shown
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`in the table below, the declarations were made between September 2009 and October 2012. It is
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`undisputed that CCE did not own or control the subject patents in that timeframe.
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`Samsung and LG Exhibits
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`Sony Exhibits
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`Exhibit
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`Ex. A
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`Date of
`Declaration
`6/11/2009
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`Ex. B
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`9/7/2009
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` 
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`Declarant
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`Exhibit
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`Date of
`Declaration
`6/21/2011
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`Ex. A
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`Nokia Siemens
`Networks
`Nokia Siemens
`Networks
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`Ex. B
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`10/26/2012
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`2
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`Declarant
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`Nokia Siemens
`Networks
`Nokia Siemens
`Networks Oy
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`Case 6:14-cv-00982-KNM Document 181 Filed 01/04/16 Page 3 of 5 PageID #: 2279
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`Ex. C
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`8/12/2010
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`Nokia Siemens
`Networks
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`Ex. C
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`12/14/2010
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`Nokia Siemens
`Networks
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`
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`More importantly, the declarations were made prior to promulgation of the November 26,
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`2014 ETSI Rules upon which Defendants rely to extend alleged contractual licensing obligations
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`to CCE. Nevertheless, citing to the 2014 ETSI Rules, Defendants argue that “ETSI’s IPR Policy
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`[] requires that ‘FRAND licensing undertakings made pursuant to Clause 6 shall be interpreted as
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`encumbrances that bind all successors-in-interest,’ like CCE.” (emphasis in original). See,
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`e.g., Samsung Response in Civil Action No. 6:14-cv-759, Dkt 158 at 11.1
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`However, each of the cited declarations was made on a licensing form which bears the
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`marking, “ETSI Rules of Procedure, 26 November 2008.” See Defendants’ Responses at Exhs.
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`A-C. The ETSI Rules of Procedure from November 26, 2008 are attached hereto as Exh. A and
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`do not include any language purporting to bind successors-in-interest. Indeed, the 2008 ETSI
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`Rules merely require that an ETSI Member transferring ownership in essential patents “exercise
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`reasonable efforts to notify the assignee or transferee of any undertaking it has made to ETSI
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`pursuant to Clause 6 with regard to that ESSENTIAL IPR.” Exh. A at 2. In other words, the
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`NSN’s declarations (and subsequent assignments to CCE) were made pursuant to a set of rules
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`(legally binding or not) that, in no way bound (or bind) CCE as a successor.
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`Defendants also cite to Datatreasury for the proposition that “assignees take a patent
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`subject to the legal encumbrances thereon.” See, e.g., Samsung Response at 9. But
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`Datatreasury does not unequivocally stand for this proposition. To the contrary, Datatreasury
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`makes clear that procedural provisions in contracts unrelated to “actual use of the patent” do not
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`run to a subsequent owner:
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`                                                            
`1 Defendants Sony Mobile and LG make identical arguments in their responsive briefing which
`is equally defective.
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` 
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`3
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`Case 6:14-cv-00982-KNM Document 181 Filed 01/04/16 Page 4 of 5 PageID #: 2280
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`However, the legal encumbrances deemed to ‘run with the patent’
`in these cases involved the right to use the patented product, not a
`duty to arbitrate. The cases do not support a conclusion that
`procedural terms of a licensing agreement unrelated to the
`actual use of the patent (e.g. an arbitration clause) are binding
`on a subsequent owner of the patent.
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`522 F.3d 1368, 1372-73 (Fed. Cir. 2008) (emphasis added).
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`A FRAND obligation born of NSN’s declarations to ETSI is, at best, a procedural
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`framework for prospective licensing negotiations, and not a present and substantive right to use
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`the patented technology. If Defendants here owned the right to use the patented technology,
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`such right would, indeed, encumber the patents and transfer with them. But such is not the case.
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`CCE did not create, and has not created, an express or implied contract with ETSI.
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`Defendants’ counterclaims point to no such contract or viable evidence to suggest otherwise.
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`Thus, Defendants’ breach of contract counterclaims should be dismissed, at least, for this reason.
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`Dated: January 4, 2016
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`Respectfully submitted,
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`/s/ Edward R. Nelson III
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Thomas C. Cecil
`tom@nelbum.com
`Texas State Bar No. 24069489
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
`Fax: (817) 377-3485
`
`T. John Ward, Jr.
`Texas State Bar No. 00794818
`J. Wesley Hill
`Texas State Bar No. 24032294
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`WARD & SMITH LAW FIRM
`P.O. Box 1231
`4
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`

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`Case 6:14-cv-00982-KNM Document 181 Filed 01/04/16 Page 5 of 5 PageID #: 2281
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`1127 Judson Rd. Ste. 220
`Longview, Texas 75606-1231
`(903) 757-6400
`(903) 757-2323 (fax)
`jw@jwfirm.com
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`claire@wsfirm.com
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`ATTORNEYS FOR PLAINTIFF
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing was served on all parties of record
`on January 4, 2016 via the Court’s CM/ECF system.
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`/s/ Edward R. Nelson III
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