United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. Bataillon Senior United States District Judge.
matter is before the Court on plaintiff Evolved Wireless
LLC's (“Evolved”) motion for summary judgment
on the defendants' affirmative defenses and/or
counterclaims, D.I. 195 in Apple, 1:15cv542 and on defendant
Apple's and the other defendants' cross-motions for a
summary judgment based on a license agreement and covenant
not to sue, D.I. 194 in Apple, 1:15cv542. These are actions
for patent infringement pursuant to 35 U.S.C. § 101 et
al. This Court has jurisdiction under 28 U.S.C. §§
1331, 1332, 1338(a), 1367, and 2201.
these related actions, Evolved alleges infringement of claims
of United States Patent Nos. 7, 809, 373 (“the '373
patent”) and 7, 881, 236 (“the '236
Patent”) directed to LTE wireless communication
systems. LTE stands for Long Term Evolution and is also
commonly referred to as 4G. LTE was first released in 2008,
with 3GPP's Release 8. Wireless carriers in the United
States began providing LTE networks in 2010.
'373 Patent generally relates to methods and an apparatus
for performing a handover of a mobile terminal from a source
base station to a target base station. D.I. 1, Complaint, Ex.
3, '373 Patent. The '236 Patent relates to “a
data transmission method and a user equipment for the
same” related to a “random access”
procedure between a terminal and a base station.
Id., Ex. 4, '236 Patent at 3-4. Evolved asserts
infringement of claims 15-21 and 23-25 of the '373 Patent
and claims 1-10, and 12-13 of the '236 Patent against all
defendants. The defendants deny Evolved's allegations of
infringement, and allege the asserted claims of the '373
and '236 Patents are invalid, as well as assert various
affirmative defenses and counterclaims, including affirmative
defenses alleging license and patent exhaustion and a
counterclaim for an alleged breach of Evolved's
contractual FRAND obligation.
summary judgment motion is directed to three issues: (1)
validity, (2) breach of contractual obligation to grant
licenses on fair, reasonable and nondiscriminatory
(“FRAND”) terms, and (3) the license, covenant
not to sue and exhaustion. The defendants' motion is
directed to the third issue.
record shows that Evolved currently owns all right, title,
and interests in the '373 Patent. The named inventors on
the '373 Patent are Sung Jun Park, Young Dae Lee, Sung
Duck Chun, and Myung Cheul Jung. On September 7, 2006, the
named inventors assigned all right, title, and interests in
the '373 Patent to LG Electronics, Inc.
(“LGE”). On February 7, 2014, LGE assigned all
right, title, and interests in the '373 Patent to TQ
Lambda, LLC. On October 27, 2014, TQ Lambda, LLC assigned all
right, title, and interests in the '373 Patent to
a member of the European Telecommunications Standards
Institute ("ETSI") and participated extensively in
the Third Generation Partnership Project ("3GPP").
The 3GPP is comprised of numerous member companies who
participated in the development of LTE through their
membership in Organizational Partners. 3GPP's member
companies participated in working groups that met several
times a year. The contributions submitted by participants in
a working group meeting were made publicly available prior to
patentee declared that the '373 and '236 Patents are
essential to the Long Term Evolution (“LTE”)
wireless communications standard. Evolved contends that the
'373 and '236 Patents are standard essential patents
(“SEPs”) necessary to comply with the LTE
wireless communications standard. The defendants contend that
the '373 and '236 Patents are neither essential to
the LTE wireless communications standard nor necessary for a
mobile device to comply or be compatible with the LTE
wireless communications standard.
EVOLVED'S MOTION (D.I. 195) FOR SUMMARY JUDGMENT ON
INVALIDITY AND BREACH OF FRAND OBLIGATIONS.
moves for summary judgment in its favor on the
defendants' invalidity defenses. The defendants contend
the claims of the '373 claims are invalid as anticipated
and as obvious and that the claims of the '236 Patent are
invalid as obvious. Evolved argues that uncontroverted
evidence shows that the defendants cannot prevail on the
invalidity defense. It argues that Apple cannot show by clear
and convincing evidence that the claims of the ‘373
Patent are invalid. It contends that, under the Court's
claim construction, the prior art relied on by the defendants
does not disclose certain claims and that, by reason of
priority dates of the '373 and prior art patents, certain
prior art refences are not prior art. They contend the
defendants' experts failed to analyze the prior art using
the court's claim constructions and failed to support
critical aspects of his opinion with facts. Further, they
argue that the defendants have failed to offer a legally
sufficient motivation to combine prior art references and
cannot establish invalidity based on the combination of
asserted prior art references.
defendants, on the other hand, argue that there are genuine
issues of material fact as to those issues. They rely on the
testimony of Apostolos K. Kakaes, Ph.D. (D.I. 272-1, Ex. 13)
and Harry Bims, Ph.D. (D.I. 272-2, Ex. 13) to support the
contention that certain references (i.e., Chinese Patent No.
CN1596020A (“Hu”), U.S. Patent No. 8, 131, 295
(“Wang”) are prior art to the ‘373 Patent.
They dispute the plaintiff's contentions regarding claims
to the provisional filing dates of the '373 Patent and
certain prior art references. They argue that Dr. Bims's
testimony provides an adequate rationale for why a person of
ordinary skill in the art would make the asserted
combinations. They also dispute any reliance on statements in
the Inter Partes Review (“IPR”) petition to the
Patent Board, arguing that it has no bearing whatsoever on
the viability of combinations of prior art references to show
anticipation or obviousness.
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). The moving party bears the burden of
demonstrating the absence of a genuine issue of material
fact. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 415 U.S. 475, 586 n. 10 (1986). A party asserting
that a fact cannot be-or, alternatively, is-genuinely
disputed must be supported either by citing to
“particular parts of materials in the record, including
depositions, documents, electronically stored information,
affidavits or declarations, stipulations (including those
made for the purposes of the motions only), admissions,
interrogatory answers, or other materials, ” or by
“showing that the materials cited do not establish the
absence or presence of a genuine dispute, or that an adverse
party cannot produce admissible evidence to support the
fact.” Fed.R.Civ.P. 56(c)(1)(A) & (B). If the
moving party has carried its burden, the nonmovant must then
“come forward with specific facts showing that there is
a genuine issue for trial.” Matsushita, 415
U.S. at 587 (internal quotation marks omitted). The court
will “draw all reasonable inferences in favor of the
nonmoving party, and it may not make credibility
determinations or weigh the evidence.” Reeves v.
Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
defeat a motion for summary judgment, the non-moving party
must “do more than simply show that there is some
metaphysical doubt as to the material facts.”
Matsushita, 415 U.S. at 586-87; see also
Podobnik v. U.S. Postal Service, 409 F.3d 584, 594
(3d Cir. 2005) (stating party opposing summary judgment
“must present more than just bare assertions,
conclusory allegations or suspicions to show the existence of
a genuine issue”) (internal quotation marks omitted).
Although the “mere existence of some alleged factual
dispute between the parties will not defeat an otherwise
properly supported motion for summary judgment, ” a
factual dispute is genuine where “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 247-48 (1986). “If the
evidence is merely colorable, or is not significantly
probative, summary judgment may be granted.”
Id. at 249-50 (internal citations omitted); see
also Celotex Corp. v. Catrett, 477 U.S. 317,
322 (1986) (stating entry of summary judgment is mandated
“against a party who fails to make a showing sufficient
to establish the existence of an element essential to that
party's case, and on which that party will bear the
burden of proof at trial”).
a patent is presumed valid under 35 U.S.C. § 282, an
invalidity defense must be proved by clear and convincing
evidence. Microsoft Corp. v. i4i Ltd.
P'ship, 564 U.S. 91, 95 (2011); Impax Labs.,
Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed.
Cir. 2008) (stating that defenses of obviousness and
anticipation must be proven by clear and convincing
evidence). A patent is invalid for anticipation under 35
U.S.C. § 102 if a single prior art reference discloses
each and every limitation of the claimed invention.
Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 973
(Fed. Cir. 2014). Anticipation is a question of fact.
Id.To establish anticipation, an alleged infringer
“must show ‘that the four corners of a single,
prior art document describe every element of the claimed
invention, '” with the elements “arranged or
combined in the same way as in the claim.” Net
MoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370
(Fed. Cir. 2008). “Typically, testimony concerning
anticipation must be testimony from one skilled in the art
and must identify each claim element, state the
witnesses' interpretation of the claim element, and
explain in detail how each claim element is disclosed in the
prior art reference.” Whitserve, LLC v. Computer
Packages, Inc., 694 F.3d 10, 24 (Fed. Cir. 2012). The
party challenging the validity of a patent bears “the
burden of persuasion by clear and convincing evidence on all
issues relating to the status of [a reference] as prior
art.” Mahurkar v. C.R. Bard, Inc., 79 F.3d
1572, 1576 (Fed. Cir. 1996).
patent is invalid for obviousness ‘if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject
matter pertains.'” Allergan, Inc., 754
F.3d at 961 (quoting 35 U.S.C. § 103(a)). A patent can
be obvious in light of a single reference. See
Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d
982, 990-92 (Fed. Cir. 2009). Additionally, a party can
establish obviousness by showing that “a skilled
artisan would have had reason to combine the teaching of
[multiple] prior art references to achieve the claimed
invention, and that the skilled artisan would have had a
reasonable expectation of success from doing so.”
PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d
1186, 1193 (Fed. Cir. 2014).
is a legal conclusion based on underlying facts.
Id.However, “‘[t]he presence or absence
of a motivation to combine references in an obviousness
determination is a pure question of fact.'” PAR
Pharm., 773 F.3d at 1196 (quoting Alza Corp. v.
Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006).
Similarly, “‘[w]hat a reference teaches and
whether it teaches toward or away from the claimed invention