Wi-Lan Inc. v. LG Elecs., Inc., Case No.: 18-cv-01577-H-AGS

• Citation: 421 F.Supp.3d 911
• Decision Date: 04 November 2019
• Docket Number: Case No.: 18-cv-01577-H-AGS
• Parties: WI-LAN INC.; Wi-LAN USA, Inc. ; and Wi-LAN Labs, Inc., Plaintiffs, v. LG ELECTRONICS, INC.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc., Defendants.
• Court: U.S. District Court — Southern District of California

421 F.Supp.3d 911

WI-LAN INC.; Wi-LAN USA, Inc. ; and Wi-LAN Labs, Inc., Plaintiffs,

v.LG ELECTRONICS, INC.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc., Defendants.

Case No.: 18-cv-01577-H-AGS

United States District Court, S.D. California.

Signed November 4, 2019

Alden Harris, Pro Hac Vice, Christopher M. First, Pro Hac Vice, Eric J. Enger, Pro Hac Vice, Leslie V. Payne, Pro Hac Vice, Heim, Payne & Chorush LLP, Houston, TX, Victor M. Felix, Procopio Cory Hargreaves and Savitch LLP, San Diego, CA, for Plaintiffs.

Benjamin Gilford, Pro Hac Vice, Gary Robert Jarosik, Pro Hac Vice, James J. Lukas, Jr., Pro Hac Vice, Matthew J. Levinstein, Pro Hac Vice, Richard Daniel Harris, Pro Hac Vice, Callie J. Sand, Greenberg Traurig, LLP, Chicago, IL, Joseph S. Leventhal, Dinsmore & Shohl, LLP, San Diego, CA, for Defendants.

ORDER:

(1) GRANTING PLAINTIFFS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF OBVIOUSNESS BASED ON IPR ESTOPPEL;

(2) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT ON PRIORITY DATE AND INVALIDITY UNDER 35 U.S.C. § 102;

(3) DENYING AS MOOT DEFENDANTS' MOTION TO STRIKE THE ITO DECLARATION; AND

(4) DENYING AS MOOT PLAINTIFFS' MOTION FOR LEAVE TO CONDUCT LIMITED DISCOVERY

MARILYN L. HUFF, District Judge

On September 27, 2019, Plaintiffs Wi-LAN Inc., Wi-LAN USA, Inc., and Wi-LAN Labs, Inc. filed and a motion for partial summary judgment of Defendants LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc.'s obviousness defense based on inter partes review estoppel under 35 U.S.C. § 315(e)(2). (Doc. No. 187.) On September 27, 2019, LG filed a motion for summary judgment that the patents-in-suit are not entitled to their claimed priority dates and for summary judgment of invalidity under 35 U.S.C. § 102. (Doc. No. 188.) On October 11, 2019, the parties filed their respective responses in opposition to the motions for summary judgment. (Doc. Nos. 239, 240.) On October 18, 2019, the parties filed their respective replies. (Doc. No. 265, 266.)

In addition, on October 11, 2019, LG filed a motion to strike the declaration of Richard Ito that was filed as an exhibit to Wi-LAN's motion for partial summary judgment of IPR estoppel. (Doc. No. 238.) On October 14, 2019, Wi-LAN filed a response in opposition to LG's motion to strike. (Doc. No. 251.) On October 18, 2019, Wi-LAN filed a motion for leave to conduct limited discovery. (Doc. No. 268.) On October 23, 2019, LG filed a response in opposition to Wi-LAN's motion for leave. (Doc. No. 277.)

The Court held a hearing on the matters on November 1, 2019. Leslie V. Payne, Eric J. Enger, and Christopher M. First appeared for Wi-LAN. Richard D. Harris, James J. Lukas, and Matthew J. Levinstein appeared for LG. For the reasons below, the Court: (1) grants Wi-LAN's motion for partial summary judgment of LG's obviousness defense based on IPR estoppel; (2) denies LG's motion for summary judgment of priority date and for summary judgment of invalidity under 35 U.S.C. § 102 ; (3) denies as moot LG's motion to strike the Ito declaration; and (4) denies as moot Wi-LAN's motion for leave to conduct additional discovery.

Background

I. Procedural History

On July 11, 2018, Wi-LAN filed a complaint for patent infringement against LG, alleging infringement of U.S. Patent Nos. 8,787,924, 8,867,351, 9,226,320, and 9,497,743. (Doc. No. 1, Compl.) Specifically, Wi-LAN alleges that LG's wireless communication products that are compliant with the 3rd Generation Partnership Project 4G LTE standard directly infringe the patents-in-suit. (Id. ¶¶ 37, 40, 53, 66, 79.)

On October 10, 2018, LG filed an answer to Wi-LAN's complaint along with counterclaims for: (1) declaratory judgments of non-infringement and invalidity of the patents-in-suit; (2) declaratory judgment of unenforceability for failure to disclose to standard setting organizations; (3) declaratory judgment of unenforceability of the '351 patent due to infectious unenforceability; (4) declaratory judgment that LG is entitled to license the patents-in-suit on FRAND/RAND terms and conditions; (5) breach of contract; (6) monopolization and attempted monopolization in violation of section 2 of the Sherman Act; and (7) unfair business practices under California Business and Profession Code § 17200 et seq. (Doc. No. 17.)

On April 12, 2019, the Court granted in part and denied in part Wi-LAN's motions to dismiss LG's counterclaims, and the Court dismissed with prejudice LG's counterclaim for declaratory judgment of unenforceability of the '351 patent due to infectious unenforceability. (Doc. No. 79.) On May 28, 2019, the Court issued a claim construction order in the action. (Doc. No. 112.) On September 3, 2019, the Court issued an amended scheduling order. (Doc. No. 143.)

On October 24, 2019, the Court issued an order on the parties' first set of motions for summary judgment. (Doc. No. 278.) Specifically, the Court: (1) denied LG's two motions for summary judgment of non-infringement of the patents-in-suit; (3) granted LG's motion for summary judgment of no willful infringement; (4) granted in part and denied in part LG's motion for summary judgment of its patent exhaustion defense; (5) denied Wi-LAN's cross-motion for summary judgment of no patent exhaustion based on the Qualcomm-SOMA agreements; and (6) granted Wi-LAN's motion for summary judgment of LG's standard development organization defenses and counterclaims. (Id. at 79.) In so doing, the Court granted summary judgment in favor of LG on: (1) Wi-LAN's claim for willful infringement of the patents-in-suit; and (2) LG's patent exhaustion defense as to the '351 patent based on the 2000 Qualcomm-SOMA agreement. (Id. ) And the Court granted summary judgment in favor of Wi-LAN on: (1) LG's defense and counterclaim of unenforceability for failure to disclose to standard setting organizations; (2) LG's defense and counterclaim that LG is entitled to license the patents-in-suit on FRAND/RAND terms and conditions; (3) LG's counterclaim for monopolization; (4) LG's counterclaim for attempted monopolization; and (5) LG's counterclaim for unfair business practices under California's UCL. (Id. )

By the present remaining motions for summary judgment: (1) Wi-LAN moves for partial summary judgment of LG's obviousness defense as to the '743 patent based on IPR estoppel under 35 U.S.C. § 315(e)(2) ; and (2) LG moves for summary judgment that the asserted claims of the patents-in-suit are not entitled to their claimed priority dates, and, therefore, are invalid under 35 U.S.C. § 102. (Doc. No. 187-1 at 1; Doc. No. 188-1 at 1.)

II. The Patents-in-Suit

In the present action, Wi-LAN asserts infringement of claims 1, 2, 5, 6, 17, and 19 of the '924 patent, claims 6-9 of the '743 patent, and claims 7 and 10-12 of the '351 patent.¹ (Doc No. 207, Ex. 2 Lomp Expert Report ¶¶ 78, 86, 100, 114, 184, 256.)

A. The '924 Patent and the '743 Patent

The '924 patent and the '743 patent are both entitled "Method and Systems for Transmission of Multiple Modulated Signals Over Wireless Networks" and share a common specification. U.S. Patent No. 8,787,924, at (54) (filed Jul. 22, 2014); U.S. Patent No. 9,497,743, at (54) (filed Nov. 15, 2016). The invention disclosed in the '924 patent and the '743 patent "relates to wireless communication systems, and more particularly to a method and apparatus for efficiently allocating bandwidth between base stations and customer premises equipment in a broadband wireless communication system." '924 Patent at 1:23-27. Independent Claim 1 and independent claim 17 of the '924 patent are the only asserted independent claims from that patent, and independent claim 6 of the '743 patent is the only asserted independent claim from that patent.

Independent claim 1 of the '924 Patent provides:

1. A method of operating a wireless cellular mobile unit registered with a base station in a bandwidth on demand wireless cellular communication system, the method comprising:

transmitting from the wireless cellular mobile unit a one bit message requesting to be provided an allocation of uplink (UL) bandwidth in which to transmit a bandwidth request for at least one connection served by the wireless cellular mobile unit;

receiving at the wireless cellular mobile unit the allocation of UL bandwidth in which to transmit the bandwidth request, the allocation of UL bandwidth received pursuant to the one bit message;

transmitting from the wireless cellular mobile unit the bandwidth request within the allocation of UL bandwidth, the bandwidth request being indicative of a pending amount of UL data associated with the at least one connection;

receiving at the wireless cellular mobile unit an UL bandwidth grant for the wireless cellular mobile unit, the UL bandwidth grant received pursuant to the bandwidth request; and allocating the received UL bandwidth grant to at least two UL connections served by the wireless cellular mobile unit, based on a QoS parameter of the at least two UL connections.

Id. at 22:42-67.

Independent claim 17 of the '924 Patent provides:

A method of allocating uplink (UL) bandwidth on demand in a wireless communication network, wherein a wireless cellular mobile unit is registered with, and communicating with a base station, the method comprising:

transmitting from the wireless cellular mobile unit a one bit message to the base station to request an allocation of UL bandwidth in which to transmit a bandwidth request;

receiving at the wireless cellular mobile unit the allocation of UL bandwidth in which to transmit the bandwidth request;

transmitting to the base station, within the allocation of UL bandwidth, the bandwidth request indicative of an amount of pending UL data;

receiving from the base station an UL bandwidth grant for the wireless cellular mobile unit; and

transmitting to the base station UL data of the pending UL data pursuant to the UL bandwidth grant;

wherein the transmitted UL data is transmitted for at least two UL services and wherein the UL

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