WI-LAN Inc. v. LG Electronics, Inc.
3:18-cv-01577
| S.D. Cal. | Nov 4, 2019Background:
- Wi‑LAN sued LG for infringement of multiple patents relating to uplink bandwidth allocation and QoS in wireless systems; LG asserted invalidity defenses and counterclaims.
- LG petitioned the PTAB for IPR of the ’743 patent; PTAB instituted review on the Hulyalkar+Agrawal obviousness ground and later issued a final decision upholding claims 6–9.
- Wi‑LAN moved for partial summary judgment that 35 U.S.C. § 315(e)(2) estops LG from asserting certain obviousness combinations against the ’743 patent (five combinations identified in district litigation).
- LG moved for summary judgment that asserted claims of the patents‑in‑suit are not entitled to their claimed priority dates and thus are anticipated under 35 U.S.C. § 102 by 3GPP LTE Release 8 (publicly available Dec. 2008).
- The court (Huff, J.) granted Wi‑LAN’s partial SJ on IPR estoppel as to the five obviousness combinations (and as to anticipation by LTE Release 8 for the ’743 patent), and denied LG’s SJ on priority and § 102 invalidity for the other asserted patents (’924 and ’351), leaving factual disputes.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 315(e)(2) estops LG from asserting specific obviousness combinations against the ’743 patent | Wi‑LAN: LG knew or reasonably could have discovered the cited prior art (some disclosed in prior invalidity contentions; others discoverable via diligent search), so estoppel applies | LG: Estoppel applies only to grounds actually considered in IPR; non‑petitioned or non‑instituted grounds are not estopped (relying on Shaw) | Court: Estoppel applies to grounds that "reasonably could have been raised"; SAS supersedes Shaw’s non‑institution rationale; granted SJ for Wi‑LAN as to all five combinations |
| Whether § 315(e)(2) bars LG from relying on 3GPP LTE Release 8 to anticipate the ’743 patent | Wi‑LAN: LG knew of LTE Release 8 before IPR and could have raised it in IPR, so estoppel bars the anticipation defense | LG: Not specifically rebutting estoppel here; contends later that local rules do not require charting intervening art | Court: LTE Release 8 was disclosed earlier and could have been raised; estoppel bars LG from asserting Release 8 against the ’743 patent; denied LG’s § 102 SJ as to ’743 accordingly |
| Whether asserted claims of ’924 and ’351 patents are not entitled to claimed priority dates (thus anticipated by LTE Release 8) | Wi‑LAN: Parent/priority applications disclose the claimed subject matter; expert testimony and PTAB analysis support entitlement; disputes of fact exist | LG: Parent applications lack written‑description support for claim limitations (e.g., "wireless cellular mobile unit", "traffic shaping rate"), so claims get later filing dates and are anticipated by LTE Release 8 | Court: LG made a prima facie anticipation showing; but genuine disputes of material fact exist on written‑description/priority (expert conflicts, PTO history, PTAB analyses); denied LG’s SJ on priority and § 102 for ’924 and ’351 |
| Motions to strike Ito declaration and for limited discovery | Wi‑LAN: sought discovery on new factual assertions; Ito decl. offered evidentiary support | LG: sought to strike Ito decl. and opposed discovery | Court: Because Wi‑LAN won on IPR estoppel, motions relating to the contested facts were rendered moot; denied as moot |
Key Cases Cited
- Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) (held non‑instituted grounds do not give rise to §315 estoppel pre‑SAS)
- SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (PTAB must institute on all challenged claims and all challenged grounds)
- Palomar Techs., Inc. v. MRSI Sys., LLC, 373 F. Supp. 3d 322 (D. Mass. 2019) (post‑SAS: estoppel can reach non‑petitioned but reasonably discoverable grounds)
- Trustees of Columbia Univ. v. Symantec Corp., 390 F. Supp. 3d 665 (E.D. Va. 2019) (applied estoppel to prior art identified before IPR)
- PowerOasis, Inc. v. T‑Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (burden‑shifting: challenger must make prima facie showing of invalidity, then patentee must produce evidence of entitlement to earlier priority date)
- Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written‑description standard: specification must show inventor possessed the claimed invention)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (invalidity must be proved by clear and convincing evidence)
- Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Fed. Cir. 2010) (anticipation requires each claim element be disclosed in a single prior art reference)