Case :-cv-000-nc Document Filed // Page of 0 0 Marc A. Fenster (CA SBN 0) Email: mfenster@raklaw.com Benjamin T. Wang (CA SBN ) Email: bwang@raklaw.com Reza Mirzaie (CA SBN ) Email: rmirzaie@raklaw.com Brian D. Ledahl (CA SBN ) Email: bledahl@raklaw.com C. Jay Chung (CA SBN ) Email: jchung@raklaw.com Adam S. Hoffman (CA SBN 0) Email: ahoffman@raklaw.com Neil A. Rubin (CA SBN 0) Email: nrubin@raklaw.com Wilshire Boulevard, th Floor Los Angeles, California 00 Telephone: (0) - Facsimile: (0) - Kayvan B. Noroozi (CA SBN ) Email: kayvan@noroozi.la NOROOZI PC Ocean Ave., Suite 0 Santa Monica, CA 00 Telephone: (0) -0 Attorneys for Plaintiff CORE WIRELESS LICENSING, S.A.R.L. CORE WIRELESS LICENSING, S.A.R.L., Plaintiff, APPLE INC., vs. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA Defendant. SAN JOSE DIVISION Case No. :-cv-000-nc Assigned to The Honorable Nathanael M. Cousins [CORRECTED] FIRST AMENDED JOINT PRETRIAL CONFERENCE STATEMENT AND PROPOSED ORDER 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 0 Pursuant to the Court s Trial Preparation Standing Order, the Case Management Scheduling Order (Dkt. No. ), and the Court s directive at the November, Pretrial Hearing, Plaintiff Core Wireless Licensing, S.A.R.L. ( Core Wireless ) and Defendant Apple Inc. ( Apple ) submit the following First Amended Joint Pretrial Conference Statement. I. BRIEF DESCRIPTION OF THE ISSUES TO BE DECIDED. Whether Core Wireless can prove by a preponderance of the evidence that Apple directly infringed claim of U.S. Patent No.,, under U.S.C. (a).. Whether Core Wireless can prove by a preponderance of the evidence that Apple directly infringed claim of U.S. Patent No.,, under U.S.C. (a).. Whether Apple can prove by clear and convincing evidence that one or more asserted claims of the and/or patents are invalid under U.S.C. 0 (pre- AIA).. Whether Apple can prove by clear and convincing evidence that one or more asserted claims of the and/or patents are invalid under U.S.C. 0 (pre- AIA).. If infringement of one or more valid claim is found, the amount of damages proven by Core Wireless, if any.. Whether Apple can prove by clear and convincing evidence that the and/or patents is unenforceable due to unclean hands, waiver, and/or equitable estoppel ;. Whether Core Wireless is entitled to its attorney fees, costs and disbursements under U.S.C. ;. Whether Apple is entitled to its costs, disbursements and reasonable attorneys fees under U.S.C.. II. DESCRIPTION OF THE RELIEF SOUGHT AND THE EVIDENTIARY MATERIAL TO BE PRESENTED IN SUPPORT OF SUCH RELIEF A. Plaintiff s Statement The Court has bifurcate[d] the equitable issues and will hear them during a break in trial. Dkt. 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0. Core Wireless seeks a finding that Apple has directly infringed a) claim of the patent, and b) claim of the patent. Core Wireless intends to present evidence including, but not limited to, testimony and accompanying exhibits from: Core Wireless s technical expert, Dr. Richard Wesel and the inventors of the asserted patents. Core Wireless also may call the witnesses identified on its may call list, live or by deposition, as necessary and appropriate, including technical personnel of Apple, personnel from third parties AT&T, Qualcomm and Cetecom.. Core Wireless seeks damages pursuant to U.S.C. for Apple s infringement and induced infringement to compensate Core Wireless for past and any continuing 0 and future infringement of the patents-in-suit. Core Wireless intends to present evidence including, but not limited to, testimony and exhibits to accompany testimony from Stephen Dell, John Lindgren, Core Wireless s technical experts and the inventors of the patents in suit. Core Wireless also may call the witnesses identified on its may call list, live or by deposition, as necessary and appropriate, including licensing and business personnel of Apple, personnel of Nokia, and personnel of Microsoft.. Core Wireless will seek an award of prejudgment and post-judgment interest.. Core Wireless will seek an award of attorney fees pursuant to U.S.C., and interests, costs, and disbursements as justified under U.S.C. and/or Fed. R. Civ. P.. B. Apple s Separate Statement Apple seeks the following relief:. That the Court find and declare, and enter judgment, in favor of Apple and against Core Wireless that Apple does not infringe and has not infringed any of the asserted patents. Apple intends to present evidence on non-infringement including, but not limited to, testimony and exhibits to accompany testimony from its experts, Dr. Buehrer, Dr. Knightly, and Dr. Walker. Apple also may call the witnesses identified on its may call list, live or by deposition, including Apple s Bernd Adler, employees of Qualcomm, Microsoft, Sterling 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 0 Partners, Core Wireless / Conversant, the inventors of the asserted patents, and cross examine Core Wireless s technical expert, Dr. Richard Wesel, and the inventors of the asserted patents, if they are called to testify at trial;. That the Court find and declare, and enter judgment, in favor of Apple and against Core Wireless that each and every asserted patent claim is invalid. Apple intends to present evidence on invalidity including, but not limited to, testimony and exhibits to accompany testimony from its experts, Dr. Buehrer and Dr. Knightly. Apple also may call the witnesses identified on its may call list, live or by deposition, as necessary and appropriate, including employees of Qualcomm, Microsoft, Sterling Partners, Core Wireless / Conversant, the inventors of the asserted patents, and cross examine Core Wireless s technical expert, Dr. Richard Wesel, and the inventors of the asserted patents, if they are called to testify at trial;. That the Court find and declare, and enter judgment, in favor of Apple and against Core Wireless that the asserted patents are unenforceable under the principles of waiver, equitable estoppel, and unclean hands. This includes a finding that Nokia breached its obligation to disclose the patents in suit as relevant intellectual property rights (IPRs) during the standardization of the relevant cellular standards at ETSI and GPP, while advocating for the adoption of technologies into those standards that it apparently believed were covered by the patents now asserted against Apple. This also includes a finding that Core Wireless is equitably estopped from enforcing the patents based on Nokia's statements and misleading omissions during Nokia's licensing negotiations with Apple. Apple intends to present evidence on its waiver, equitable estoppel, and unclean hands defense including, but not limited to, testimony and exhibits to accompany testimony from Apple s experts, Dr. Michael Walker and/or Dr. Michael Buehrer. Apple also may call the witnesses identified on its may call list, live or by deposition, including employees of Core Wireless / Conversant and the named inventors of the patents-insuit, and cross examine Core Wireless s technical expert, Dr. Richard Wesel, and the inventors of the asserted patents, if they are called to testify at trial;. That the Court find and declare, and enter judgment, in favor of Apple and against Core Wireless that if any of the asserted patents is infringed, valid, and enforceable which 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 Apple disputes then Core Wireless s remedies would be limited to FRAND royalties. Apple intends to present evidence on FRAND royalties from Apple s expert Mr. Paul Meyer. Apple also may call the witnesses identified on its may call list, live or by deposition, including employees of Core Wireless / Conversant and the named inventors of the patents-in-suit.. That this case be declared exceptional under U.S.C. and that Apple be awarded its attorneys fees, expenses, and costs incurred in this action; and. That Core Wireless be ordered to pay all costs associated with this action. 0 III. CONCISE STATEMENT OF ALL UNDISPUTED AND STIPULATED FACTS. Core Wireless Licensing S.A.R.L. is a Luxembourg entity, wholly owned by Conversant Intellectual Property Management (Conversant). Conversant is based in Ottawa, Canada. issued on November, 0.. Apple is a company based in Cupertino, California.. The patent, which is titled Packet Radio Telephone Services,. The U.S. patent application that led to the patent was filed November 0,. The foreign applications that led to the patent were filed on November, and November,.. The named inventor of the patent is Jarkko Oksala. Core Wireless is asserting claim of the patent.. The products accused of infringing the patent are Apple s iphone S,, S, C,, Plus, models and Apple s ipad, ipad with Retina display, ipad, ipad Mini, ipad Mini Retina, ipad Mini, ipad Mini, ipad Air, ipad Air, models.. The patent, titled Signaling in a Digital Mobile Communications System, issued on October, 0.. The U.S. patent application that led to the patent was filed April,. The PCT application that led to the patent was filed September,. The foreign application that led to the patent was filed September,. 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 0. The named inventor of the patent is Jyri Suvanen.. Core Wireless is asserting claim of the patent.. The products accused of infringing the patent are Apple s iphone S,, S, C,, Plus, S, models. IV. THE FACTUAL ISSUES TO BE TRIED 0 A. Plaintiff s List. To the extent Core Wireless s statement of legal issues to be tried contains issues of fact, Core Wireless incorporates them herein by reference. compensate Core Wireless.. Whether Apple has literally infringed claim of the patent.. Whether Apple has literally infringed claim of the patent.. The amount of damages caused by Apple s infringement that would. Underlying factual issues bearing on the validity of the asserted claims of the patents-in-suit, including secondary considerations of nonobviousness (commercial success, industry praise, copying, failure of others, skepticism, teaching away by others, long felt but unmet need) and whether Apple has met its burden of proof to establish that asserted references qualify as prior art and the disclosure to one of skill in the art of any such prior art, including whether any such prior art is sufficiently enabled. B. Apple s List The following disputed factual issues remain to be resolved:. Whether Apple, through selling certain accused instrumentalities, literally infringes under U.S.C. (a): a. Claim of the patent; b. Claims of the patent;. Whether Core Wireless s asserted patent claims are invalid under U.S.C. 0(a), (b), (e), (f) or 0.. Whether the and/or patents are enforceable; 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 0. To the extent that Apple is found to infringe any valid asserted claim of the patent, the amount of damages, if any, to which Core Wireless is entitled;. To the extent that Apple is found to infringe any valid asserted claim of the patent, the amount of damages, if any, to which Core Wireless is entitled;. Whether Core Wireless is entitled to a reasonable royalty or a lump sum payment under U.S.C. for Apple s alleged infringement of the and/or patents, if proven.. Whether Nokia marked its products with the asserted patents. V. LIST OF PROPOSED STIPULATIONS Pursuant to the Court s Pretrial Preparation Order, the parties will separately file and submit proposed stipulations to the Court with the parties other Joint Trial Readiness materials. VI. CONCISE STATEMENT OF DISPUTED POINTS OF LAW CONCERNING LIABILITY OR RELIEF A. Plaintiff s List. To the extent Core Wireless s statement of factual issues to be tried contains issues of law, Core Wireless incorporates them herein by reference.. Whether Apple has sufficiently proven by clear and convincing evidence that alleged prior art was publicly-available before the critical date of the patent.. Whether the holding in Ericsson, Inc. v. D-Link Systems, Inc. F.d, (Fed. Cir. ) regarding royalty stacking and patent hold-up precludes instruction on and/or Apple s mention of royalty stacking and/or patent hold-up without provid[ing] evidence on the record of patent hold-up and royalty stacking in relation to both the RAND commitment at issue and the specific technology referenced therein.. Whether the asserted claim of the patents-in-suit would have been obvious in view of prior art under U.S.C. 0. B. Apple s List 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 0. Whether Core Wireless can prove that it is entitled to pre-suit damages where (a) Core Wireless has failed to show that Nokia marked its products in compliance with U.S.C., and (b) Core Wireless has failed to identify evidence sufficient to show that Apple was on notice of alleged infringement of the asserted patents before this litigation.. Whether the Asserted Patent Claims are invalid as anticipated under U.S.C. 0.. Whether the Asserted Patent Claims are invalid as obvious under U.S.C. 0.. Whether the ETSI IPR policy imposed a duty on Nokia to disclose the asserted patents before those standards were adopted, as set forth in Apple Inc., v. Motorola Mobility Inc., F.Supp.d 0, 0- (W.D. Wisc. ) (finding that the ETSI IPR policy clearly requires members to make efforts to disclose intellectual property rights before a standard is adopted );. Whether Core Wireless is entitled to the reasonable royalty damages it seeks from Apple, as well as prejudgment interest and costs, and if so, how much.. Whether Core Wireless is entitled to claim damages that use a royalty base other than the smallest saleable patent practicing unit, which, in this case, would be the baseband processor. VII. WITNESS LISTS Pursuant to the Court s Pretrial Preparation Order, the parties will separately file and submit witness lists to the Court with the parties other Joint Trial Readiness materials. VIII. EXHIBIT LISTS Pursuant to the Court s Pretrial Preparation Order, the parties will separately file and submit exhibit lists to the Court with the parties other Joint Trial Readiness materials IX. ESTIMATED NUMBER OF COURT DAYS The Court has ordered each side has hours to present its case. This includes all aspects of trial (e.g. objections, examinations) except jury selection. See Dkt. (Pretrial Preparation Order, IX). The parties expect to use the full time allotted. 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page of 0 X. LIST OF OUTSTANDING MOTIONS. Core Wireless s Daubert Motion (Dkt., Ex. ). Apple s Daubert Motion (Dkt., Ex. ) XI. STATUS OF SETTLEMENT NEGOTIATIONS The parties have mediated three times, most recently on June,. The parties have engaged in direct communications after the mediations and have been unable to reach resolution. XII. STATEMENTS CONCERNING BIFURCATION The Court has bifurcate[d] the equitable issues and will hear them during a break 0 in trial. Dkt. DATED: November, 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx /s/ Marc A. Fenster Marc A. Fenster (CA SBN 0) Email: mfenster@raklaw.com Benjamin T. Wang (CA SBN ) Email: bwang@raklaw.com Reza Mirzaie (CA SBN ) Email: rmirzaie@raklaw.com Brian D. Ledahl (CA SBN ) Email: bledahl@raklaw.com C. Jay Chung (CA SBN ) Email: jchung@raklaw.com Adam S. Hoffman (CA SBN 0) Email: ahoffman@raklaw.com Neil A. Rubin (CA SBN 0) Email: nrubin@raklaw.com Wilshire Boulevard, th Floor Los Angeles, California 00 Telephone: (0) - Facsimile: (0) - Kayvan B. Noroozi (CA SBN ) Email: kayvan@noroozi.la NOROOZI PC Ocean Ave., Suite 0 Santa Monica, CA 00 Case No. :-cv-000-nc
Case :-cv-000-nc Document Filed // Page 0 of 0 0 Telephone: (0) -0 Attorneys for Plaintiffs CORE WIRELESS LICENSING, S.A.R.L. /s/ Joseph J. Mueller Mark D. Selwyn (SBN 0) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 0 Page Mill Road Palo Alto, CA 0 Telephone: (0) -000 Facsimile: (0) -00 Joseph J. Mueller (pro hac vice) Cynthia D. Vreeland (pro hac vice) Richard W. O Neill (pro hac vice) joseph.mueller@wilmerhale.com cynthia.vreeland@wilmerhale.com richard.oneill@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 0 State Street Boston, MA 0 Telephone: () -000 Facsimile: () -000 Attorneys for Defendant and Counterclaim- Plaintiff Apple Inc. IT IS SO ORDERED Dated The Honorable Nathanael Cousins United States Magistrate Judge 0 CW t Pretrial Statement_Apple Inserts [..]_(0)_().docx Case No. :-cv-000-nc