i
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TRAXCELL TECHNOLOGIES, LLC, )
)
Plaintiff, ) No. 2:17-cv-042-RWS-RSP
) (Consolidated Lead Case)
v. )
)
HUAWEI TECHNOLOGIES USA, INC. ) JURY TRIAL DEMANDED
)
Defendant. )
PLAINTIFF’S RESPONSE TO HUAWEI’S MOTION FOR PARTIAL SUMMARY
JUDGMENT REGARDING NON-INFRINGEMENT AND DAMAGES1
1 ECF No. 199 (Defendant Huawei’s motion hereafter referred to as “Motion”).
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TABLE OF CONTENTS
TABLE OF CONTENTS .............................................................................................................. ii
TABLE OF AUTHORITIES ....................................................................................................... vi
I. ARGUMENT AND AUTHORITIES ...............................................................................1
A. Huawei’s Motion Is Premature. ...............................................................................1
B. Systems Claims: Huawei’s Motion Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Huawei’s Domestic Manufacture, Use,
Sale, Offer for Sale or Importation of Any Claimed System. ..................................1
1. Bhatta’s Three Statements Do Not Prove an Absence of Genuine
Issue of Material Fact Regarding Direct Infringement of System
Claims Because the Statements Are Conclusory. ......................................1
2. Bhatta’s Three Statements Do Not Prove an Absence of Genuine
Issue of Material Fact Regarding Direct Infringement of System
Claims Because They Are Statements Applying a Legal Term..................2
3. Bhatta’s Three Statements Do Not Refute Direct Infringement of
System Claims. ............................................................................................7
a. Because Bhatta Restricts His Statements to “Complete
Accused System[s]” and the “SingleSON Product,” His
Statements Do Refute Direct Infringement; i.e., Do Not
Refute the Manufacture, Use, Sale, Offer for Sale, or
Importation of an “Operable Assembly” Sytem. .............................7
b. Because Infringing Use of System Does Not Require All
System Components Be in the U.S., Bhatta’s Restrictions
of His System-Infringement Denials to “Complete Accused
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System[s] in the United States” Do Refute Direct
Infringement of the Systems Claims. ...............................................8
C. Method Claims: Huawei’s Motion Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Huawei’s Performance of Any Claimed
Method. ....................................................................................................................9
D. Huawei’s SingleSON Argument Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Infringement. ....................................................10
1. System Claims: Huawei’s SingleSON Argument Fails to Prove
an Absence of Genuine Issue of Material Fact Regarding Direct
Infringement of the System Claims. .........................................................10
2. Method Claims: Huawei’s SingleSON Argument Fails to Prove
an Absence of Genuine Issue of Material Fact Regarding Direct
Infringement of the System Claims. ......................................................... 11
3. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding Contributory
Infringement..............................................................................................13
a. Huawei’s SingleSON Argument Fails to Proven an Absence
of Genuine Issue of Material Fact Regarding Direct
Infringement by Any Entity. ..........................................................13
b. Huawei’s SingleSON Argument Fails to Proven an Absence
of Genuine Issue of Material Fact Regarding All Claim-
Element-Corresponding Components Purportedly Being
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Staple Articles (i.e., Having Substantial Non-Infringing
Uses). .............................................................................................14
4. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding Induced
Infringement..............................................................................................15
a. Huawei’s SingleSON Argument Fails to Proven an Absence
of Genuine Issue of Material Fact Regarding Direct
Infringement by Any Entity. ..........................................................15
b. Huawei’s SingleSON Argument Fails to Proven an Absence
of Genuine Issue of Material Fact Regarding Induced
Infringement Based on All Claim-Element-Corresponding
Components Purportedly Being Staple Articles (i.e.,
Having Substantial Non-Infringing Uses). ....................................15
5. Huawei’s SingleSON No-Damages Argument Fails to Prove an
Absence of Genuine Issue of Material Fact Regarding
Infringement Damages. ............................................................................17
6. Huawei’s Damages Apportionment Argument Fails to Prove an
Absence of Genuine Issue of Material Fact Regarding
Infringement Damages. ............................................................................17
E. Huawei’s Motion Fails to Prove an Absence of Genuine Issue of Material
Fact Regarding Indirect Infringement of ’284 Patent Claim 12 and ’320
Patent claims 1 and 4. ............................................................................................19
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F. Huawei’s Notice Argument Fails to Prove an Absence of Genuine Issue of
Material Fact Regarding Indirect Infringement. ....................................................20
II. CONCLUSION ................................................................................................................21
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TABLE OF AUTHORITIES
CASES
Abaxis, Inc. v. Cepheid, No. 10-CV-02840-LHK, 2012 U.S. Dist. LEXIS 49748 (N.D. Cal. July
19, 2012) ................................................................................................................................. 2, 4
Abstrax, Inc. v. Dell, Inc., No. 2:07CV221, 2009 U.S. Dist. LEXIS 93608 (E.D. Tex. Sept. 18,
2009) ................................................................................................................................8, 11, 13
Alps South, LLC v. Ohio Willow Wood Co., No. 8:09-cv-386-T-17MAP, 2010 U.S. Dist. LEXIS
140671 (M.D. Fla. Sept. 23, 2010) ............................................................................................. 5
Amakua Dev. LLC v. Warner, No. 05 C 3082, 2007 U.S. Dist. LEXIS 49952 (N.D. Ill. July 10,
2007) ....................................................................................................................................... 2, 3
AstraZeneca AB v. Apotex Corp., 782 F.3d 1324 (Fed. Cir. 2015) ............................................... 18
Baron Servs. v. Media Weather Innovations LLC, 717 F.3d 907 (Fed. Cir. 2013) .......................... 7
Blue Spike, LLC v. Soundmouse Ltd., No. 14 Civ. 2243, 2014 U.S. Dist. LEXIS 172489
(S.D.N.Y. 2014) .................................................................................................................. 4, 5, 6
Bose Corp. v. JBL, Inc., 274 F.3d 1354 (Fed. Cir. 2001) .............................................................. 18
Brewster v. Dretke, 587 F.3d 764 (5th Cir. 2009) ......................................................................... 17
Casa Dimitri Corp. v. Invicta Watch Co. of Am., 270 F. Supp. 3d 1340 (S.D. Fla. Sept. 15, 2017)
................................................................................................................................................. 2, 3
Cellular Commc'ns. Equip. LLC v. HTC Corp., No. 6:13-cv-507, 2015 U.S. Dist. LEXIS 180375
(E.D. Tex. Oct. 30, 2015) .......................................................................................................... 14
Centillion Data Sys., LLC v. Qwest Commc’ns. Int’l, 631 F.3d 1279 (Fed. Cir. 2011) .............. 2, 4
CLS Bank Int’l v. Alice Corp. Pty, Ltd., 667 F. Supp. 2d 29 (D. D.C. 2009) .............................. 4, 5
Creagri, Inc. v. Pinnaclife Inc., LLC, No.: 5:11-CV-06635-LHK, 2013 U.S. Dist. LEXIS 178534
(N.D. Cal. Dec. 8, 2013) ............................................................................................................. 7
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Dubay v. Wells, 506 F.3d 422 (6th Cir. 2007) ............................................................................... 17
Envtl. Instruments, Inc. v. Sutron Corp., 877 F.2d 1561 (Fed. Cir. 1989) .................................... 12
ePlus, Inc. v. Lawson Software, Inc., No. 3:09cv620, 2011 U.S. Dist. LEXIS 89950 (E.D. Va.
Aug. 12, 2011) ........................................................................................................................ 3, 4
Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201 (Fed. Cir. 2014) ...................................................... 18
Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363 (Fed. Cir. 2002) . 3
Galindo v. Precision Am. Corp., 754 F.2d 1212 (5th Cir. 1985) ..................................................... 1
Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366,2016 U.S. Dist. LEXIS 78365
(E.D. Tex. June 16, 2016) ........................................................................................................... 5
GeoTag, Inc. v. Frontier Commc’ns. Corp., No. 2:10-CV-00265-JRG, 2014 U.S. Dist. LEXIS
11679 (E.D. Tex. Jan. 29, 2014) ................................................................................................. 5
Goodyear Aero. Corp. v. United States, Nos. 37-78 and 177-78, 1980 U.S. Ct. Cl. LEXIS 987
(U.S. Ct. Cl. Mar 17, 1980)..................................................................................................... 5, 6
Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir. 2008) ......................... 17
Hannah v. Gregg, Bland & Berry, Inc., 840 So.2d 839 (Ala. 2002) ............................................... 2
Honeywell Int’l, Inc. v. ITT Indus., Inc., No. 02-73948,2005 U.S. Dist. LEXIS 9648 (E.D. Mich.
May 17, 2005) ............................................................................................................................. 5
In re High-Tech Employees Antitrust Litig., 985 F. Supp. 2d 1167, No. 11-2509, 2013 U.S. Dist.
LEXIS 153752, 2013 WL 5770992 (N.D. Cal. Oct. 24, 2013) .................................................. 7
In re Maxim Integrated Prods., No. 12-945, 2015 U.S. Dist. LEXIS 124062 (W.D. Penn. Sept.
11, 2015) ................................................................................................................................... 18
Ingle ex rel. Estate of Ingle v. Yelton, 439 F.3d 191 (4th Cir. 2006) ............................................... 7
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Invisible Fence, Inc. v. Perimeter Techs., Inc., No. 1:05-CV-361, 2007 U.S. Dist. LEXIS 21987
(N.D. Ind. Mar. 2, 2007) ............................................................................................................. 5
Laborers’ Int'l Union v. Foster Wheeler Corp., 26 F.3d 375 (3d Cir. 1994) ................................. 17
Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861 (Fed. Cir. 1985) .................................................... 14
Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330 (Fed. Cir. 2008) ............................. 7
Middlegate Dev., LLP v. Beede, No. 10-0565-WS-C, 2011 U.S. Dist. LEXIS 88327 (S.D. Ala.
Aug. 9, 2011) .............................................................................................................................. 2
Nobell, Inc. v. Sharper Image Corp., No. C-89-1133-DLJ, 1992 U.S. Dist. LEXIS 20222 (N.D.
Cal. Apr. 17, 1992) ...................................................................................................................... 2
NorthMobileTech LLC v. Simon Prop. Grp., Inc., No. 11-cv-287-wmc, 2012 U.S. Dist. LEXIS
199700 (W.D. Wisc. July 9, 2012) .............................................................................................. 3
NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) ................................. passim
Ortho-McNeil Pharm. Inc. v. Barr Labs., Inc., No. 03-4678 (SRC), 2005 U.S. Dist. LEXIS
46932 (D. N.J. Apr. 19, 2005) ..................................................................................................... 5
Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984) ............ 8
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 U.S.P.Q.2D (BNA) 1737, 1739-
40 (1987), cert. denied, 485 U.S. 961, 99 L. Ed. 2d 426, 108 S. Ct. 1226 (1988) ................... 12
Point of Novelty, Northwestern U. L.R. Vol. 1253 (2011) ............................................................ 14
Poller v. CBA, Inc., 368 U.S. 464, 473, 82 S. Ct. 486, 7 L. Ed. 2d 458 (1962) .............................. 6
Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No.: 14-cv-02061-H-BGS, 2016 U.S.
Dist. LEXIS 110212 (S.D. Cal. Aug. 17, 2016) ........................................................................ 18
Prism Techs., LLC v. Adobe Sys., Inc., No. 8:10CV220, 2012 U.S. Dist. LEXIS 104061 (D. Neb.
July 26, 2012)........................................................................................................................ 8, 10
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Renhcol Inc. v. Don Best Sports, 548 F. Supp. 2d 356 (E.D. Tex. 2008) ........................................ 4
Richman v. Sheahan, 415 F. Supp. 2d 929 (N.D. Ill. 2006) ............................................................ 2
Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008) .................................. 14
Soverain Software LLC v. J.C. Penney Corp., 899 F. Supp. 2d 574 (E.D. Tex. 2012) ............... 4, 5
Superior Aluminum Alloys, LLC v. U.S. Fire Ins. Co., No. 1:05-CV-207, 2007 U.S. Dist. LEXIS
46691 (N.D. Ind. June 25, 2007) ................................................................................................ 3
Surface Tech., Inc. v. Int'l Trade Comm’n, 801 F.2d 1336 (Fed.Cir.1986) ..................................... 3
Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045 (D. Minn. 1999) ............. 3, 4
U.S. v. Saucedo-Munoz, 307 F.3d 344 (5th Cir. 2002) .................................................................. 17
United States v. McIver, 470 F.3d 550 (4th Cir. 2006) .................................................................... 3
United States v. Richter, 796 F.3d 1173 (10th Cir. 2015) ................................................................ 3
Visteon Global Techs., Inc. v. Garmin Int’l, LLC, No. 2:10-cv-10578-PDB-MAR, 2014 U.S. Dist.
LEXIS 182932 ( E.D. Mich. Sept. 25, 2014) .......................................................................... 3, 4
Vita-Mix Corp. v. Basic Holdings, Inc., 581 F.3d at 1328 ............................................................ 16
Wahl v. Rexnord, Inc., 481 F. Supp. 573 (D. N.J. 1979) ................................................................. 6
Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348 (Fed. Cir. 2003) ........................................ 16
Zito LLC v. CRJ, Inc., No. JKB-17-1733, 2018 U.S. Dist. LEXIS 79656 (D. Md. May 11, 2018)
................................................................................................................................................. 3, 7
STATUTES
35 U.S.C. § 102(a) ........................................................................................................................ 14
35 U.S.C. § 271(a) ........................................................................................................................ 14
35 U.S.C. § 271(b), (f) .................................................................................................................. 16
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OTHER AUTHORITIES
Lewis Carroll, Alice's Adventures in Wonderland and Through the Looking Glass ....................... 5
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I. ARGUMENT AND AUTHORITIES
A. Huawei’s Motion Is Premature.
Shortly prior to the filing of this Response and because Huawei’s Motion is premature,
Traxcell is filing Traxcell’s Motion to Dismiss as Premature Huawei’s Motion for Partial
Summary Judgment Regarding Non-Infringement and Damages. Huawei’s premature Motion
should be dismissed without prejudice to refiling at a time when it would not be premature.
B. Systems Claims: Huawei’s Motion Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Huawei’s Domestic Manufacture, Use, Sale,
Offer for Sale or Importation of Any Claimed System.
1. Bhatta’s Three Statements Do Not Prove an Absence of Genuine Issue
of Material Fact Regarding Direct Infringement of System Claims
Because the Statements Are Conclusory.
For this issue, Huawei’s Motion relies solely on three conclusory statements of its
employee witness, M. Bhatta:
• “Neither Huawei Technologies USA, Inc. nor any other Huawei entity has ever made,
used, sold, offered for sale, or imported any of the accused component products together
as a complete accused system in the United States;”
• “Nor has any Huawei entity combined the accused products to form a complete accused
system in the United States;” and
• “With respect to the accused "SON'' systems, neither Huawei Technologies USA, Inc.
nor any other Huawei entity has ever made, used, sold, offered for sale, or imported the
SingleSON product in the United States.”2
“Unsupported allegations or affidavits setting forth conclusory facts . . . are insufficient
either to support or defeat a motion for summary judgment.”3 “An affidavit is not conclusory
2 Motion (ECF No. 199) at 8–9 (arguing lack of direct infringement and citing only these M. Bhatta statements
as supporting evidence); M. Bhatta declaration (ECF No. 199-28) at cited ¶¶ 4, 6.
3 Galindo v. Precision Am. Corp., 754 F.2d 1212, 1216 (5th Cir. 1985).
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when it identifies specific facts [Court’s original emphasis] which support its conclusions.”4
Bhatta’s non-use conclusions do not identify specific facts supporting the non-use conclusions
and, thus, are conclusory statements.
Though direct infringement “use” involves underlying issues of putting the system as a
whole into service, control, and beneficial use,5 Bhatta’s non-use conclusions set forth no
specific (or even non-specific) details regarding these underlying facts. Moreover, discovery is
in its early stages and Huawei is resisting producing responsive information concerning its
infringement of the Accused Systems and Methods.6 Traxcell is prepared to file a Motion to
Compel seeking the production of the responsive material but was required to not file the Motion
to Compel until after the filing of this response in order to obtain a 1-week extension of time to
respond from Huawei.7
2. Bhatta’s Three Statements Do Not Prove an Absence of Genuine Issue
of Material Fact Regarding Direct Infringement of System Claims
Because They Are Statements Applying a Legal Term.
Further, “‘[g]enerally, a witness, whether expert or lay, cannot give an opinion that
constitutes . . . amounts to the application of a legal definition.’”8 Also, without a predicate
4 Nobell, Inc. v. Sharper Image Corp., No. C-89-1133-DLJ, 1992 U.S. Dist. LEXIS 20222, at *15 n.5, 16 (N.D.
Cal. Apr. 17, 1992).
5 Centillion Data Sys., LLC v. Qwest Commc’ns. Int’l, 631 F.3d 1279, 1284 (Fed. Cir. 2011).
6 See Declaration of William P. Ramey, III (“Ramey Decl.”) at ¶3.
7 See Ramey Decl. at ¶4.
8 Middlegate Dev., LLP v. Beede, No. 10-0565-WS-C, 2011 U.S. Dist. LEXIS 88327, at *24 n.14 (S.D. Ala.
Aug. 9, 2011) (quoting Hannah v. Gregg, Bland & Berry, Inc., 840 So.2d 839, 852 (Ala. 2002)); accord Abaxis, Inc.
v. Cepheid, No. 10-CV-02840-LHK, 2012 U.S. Dist. LEXIS 49748, at **9, 10 (N.D. Cal. July 19, 2012) (holding
that witness’s testimony regarding whether agreements were “offers for sale” was inadmissible “opinion on purely
legal matters”/“legal conclusions”); Amakua Dev. LLC v. Warner, No. 05 C 3082, 2007 U.S. Dist. LEXIS 49952, at
*35 (N.D. Ill. July 10, 2007) (stating, “‘Where the testimony contains terms that have a separate, distinct, and
specialized meaning in the law different from that present in the vernacular, the testimony may be deemed to
constitute a legal conclusion and exclusion would not be inappropriate.’” Quoting Richman v. Sheahan, 415 F. Supp.
2d 929, 934, 947, 948 (N.D. Ill. 2006)); Casa Dimitri Corp. v. Invicta Watch Co. of Am., 270 F. Supp. 3d 1340,
1350 (S.D. Fla. Sept. 15, 2017) (giving no evidentiary weight to a witness testimony regarding the date and
circumstance regarding a “first publication” and explaining, “The conclusory nature of the statement is especially
problematic because ‘[p]ublication is a legal word of art, denoting a process much more esoteric than is suggested
by the lay definition of the term’[internal citation omitted]” and “Second, Plaintiffs fail to provide any details about
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understanding of the precise meaning of a particular legal term, the witness does not understand
the nature of his testimony,9 and, thus, his testimony has no probative value. Further, a witness’s
failure to explain the criteria underlying his conclusions renders that testimony inadmissible.10
the publication.”); Superior Aluminum Alloys, LLC v. U.S. Fire Ins. Co., No. 1:05-CV-207, 2007 U.S. Dist. LEXIS
46691, at *30 (N.D. Ind. June 25, 2007) (stating, “Because these terms have a specific meaning in tort law,
Deimling’s opinions are legal conclusions. See United States v. McIver, 470 F.3d 550, 562 (4th Cir. 2006) (opining
that testimony can be excluded as an improper legal conclusion when ‘the terms used by the witness have a separate,
distinct and specialized meaning in the law . . . .’") [additional citations omitted].”).
9 See Casa Dimitri Corp., 270 F. Supp. 3d at 1350 n.6 (noting other evidence showed the witness “erroneously
equate[d] [the legal term] publication with sale”); Surface Tech., Inc. v. Int'l Trade Comm’n, 801 F.2d 1336, 1340
(Fed.Cir.1986)(stating, “Peterson stated in his affidavit that the invention . . . ‘would not have been obvious . . .’
Peterson's testimony before the Commission, however, raised questions as to . . . and his understanding of the legal
term ‘obvious.’”); NorthMobileTech LLC v. Simon Prop. Grp., Inc., No. 11-cv-287-wmc, 2012 U.S. Dist. LEXIS
199700, at *11 (W.D. Wisc. July 9, 2012) (stating, “[The witness], a non-lawyer with no training in the Federal
Rules of Evidence, cannot be expected to know whether or not he meets the legal definition of ‘expert.’”); Frank’s
Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363, 1375 (Fed. Cir. 2002) (stating, “Vincent
testified that the limitation of step (b) was not satisfied because the 1980 device itself did not monitor torque
conditions. However, Vincent was using an incorrect interpretation of "monitoring" to arrive at that conclusion. . . .
Using the correct definition of ‘monitoring’ the testimony was undisputed that the method performed by the 1980
device was within the scope of claim 30.”).
10 United States v. Richter, 796 F.3d 1173, 1196 (10th Cir. 2015) (stating, “Witnesses are permitted to testify
about how the law applies to a certain set of facts, so long as they provide adequate explanations for their
conclusions. [Citations omitted].”); id. (holding “the district court erred by permitting [a witness] to provide a bare
legal conclusion without explaining the criteria he used to reach that conclusion” and explaining the witness’s
testimony regarding “processing” was given “without providing any explanation of what constitutes ‘“processing’”);
Visteon Global Techs., Inc. v. Garmin Int’l, LLC, No. 2:10-cv-10578-PDB-MAR, 2014 U.S. Dist. LEXIS 182932,
at *58 ( E.D. Mich. Sept. 25, 2014) (holding, in a patent infringement suit, that certain testimony regarding “use” of
an accused device “is nothing more than a bald conclusion, without any tie between each and every limitation of the
claims and the testimony of the employees.”); Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045,
1094 (D. Minn. 1999) (holding, “Viken’s conclusory Affidavit on the ultimate issue of ‘use,’ standing alone, will
not create a genuine issue of material fact that Transclean ‘used’ its marks in the manner necessary to earn common
law trademark rights. [Citations omitted]. “); see also ePlus, Inc. v. Lawson Software, Inc., No. 3:09cv620, 2011
U.S. Dist. LEXIS 89950, at *14 (E.D. Va. Aug. 12, 2011) (holding—where the defendant asserted it did not make,
use, offer for sale, or sell an entire, purportedly infringing system—the plaintiff’s infringement expert’s
infringement opinion was not conclusory because the expert’s conclusion was supported by substantial testimony
from the defendant’s own witnesses, the expert’s detailed testimony of the bases for his opinion, documentary
evidence, and demonstrations of the infringing systems.); Amakua Dev. LLC v. Warner, No. 05 C 3082, 2007 U.S.
Dist. LEXIS 49952, at *4 (N.D. Ill. July 10, 2007) (stating, Where a party has offered a legal conclusion or a
statement of fact without offering proper evidentiary support, the Court will not consider that statement. [Citations
omitted].”); id. at **33–34 (explaining the advisory committee’s note to Fed. R. Evid. 704 states Rules 701, 702,
and 403 “‘stand ready to exclude opinions phrased in terms of inadequately explored legal criteria.’”); id. at *35
(stating, “Even if the everyday understanding of a term and its legal meaning are congruent, exclusion is
inappropriate where the opinion will not consist of a naked conclusion (i.e., the defendant’s conduct was reasonable,
was negligent, etc.) but will be based on ‘adequately explored legal criteria.’ That is, they will explain the reasons
underlying the ultimate conclusion.”); id. at *36 (explaining that testimony that “are like responses to the question,
‘Does T have the capacity to enter a will?’” are inadmissible legal conclusions); Surface Tech., Inc. v. Int'l Trade
Comm’n, 801 F.2d 1336, 1340 (Fed.Cir.1986) (noting the strength and effectiveness of an expert’s affidavit
statement that the invention was non-obvious were undercut by the expert’s live testimony that “raised questions as
to his credibility in regard to the factual basis for his conclusions”); Zito LLC v. CRJ, Inc., No. JKB-17-1733, 2018
U.S. Dist. LEXIS 79656, at **18, 19 (D. Md. May 11, 2018) (explaining, that regarding a witness’s patent-
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Under 35 U.S.C. § 271, “use” is a legal term11 with a “legal definition.”12 In this context,
‘“[C]ourts have interpreted the term ‘use’ broadly’”13 The fact that “use” is a legal term that is
not identical to a lay definition of “use” has been highlighted by the courts extensively writing to
provide and clarify that legal definition.14 In fact, the concept of “use” differs even between
certain types of claims: “[u]nder section 271(a), the concept of ‘use’ of a patented method or
process is fundamentally different from the use of a patented system or device.”15 “Thus, a bald
conclusion regarding purported non-infringement “use” provides no credible evidence.16 The
infringement-related testimony, “The declaration, however, is as notable for what it does not [Court’s emphasis] say
as for what it does say. Mr. Zito does not say why ‘it was clear’ that a processor was automatically determining how
to dispense baseballs based on user-specific information read off of a player’s RFID band. Mr. Zito does not say
who or what ‘set’ the base path. And Mr. Zito does not say whether there was an operator for the RPM System and,
if so, what the operator did or did not do prior to the baseballs being launched. In short, Plaintiff cannot rely on such
a conclusory, self-serving declaration to generate a material dispute of fact. [Footnote omitted].”).
11 35 U.S.C. 271(a) (providing, in part, that certain “uses” of “any patented invention . . . infringes the patent.”).
12 Renhcol Inc. v. Don Best Sports, 548 F. Supp. 2d 356, 361 n.3 (E.D. Tex. 2008) (stating, “[T]here is no
reason to differentiate between the legal definition [emphasis added] of ‘use’ when a system allegedly infringes a
claimed ‘system’ and the definition of ‘use’ when a device with components used collectively as a whole allegedly
infringes a claimed apparatus, device, computer, or computer storage medium. [Citation omitted]”).
13 Centillion Data Sys., LLC v. Qwest Commc’ns. Int’l, 631 F.3d 1279, 1284 (Fed. Cir. 2011).
14 See, e.g., NTP, Inc. v. Research In Motion, Ltd., 418 F.3d at 1316–18; Centillion Data Sys., LLC v. Qwest
Commc’ns. Int’l, 631 F.3d 1279, 1283, 1284 (Fed. Cir. 2011); Soverain Software LLC v. J.C. Penney Corp., 899 F.
Supp. 2d 574, 580, 581 (E.D. Tex. 2012) (noting, at 580, that “use” of a system does not require physical or direct
control over each individual element of the system); CLS Bank Int’l v. Alice Corp. Pty, Ltd., 667 F. Supp. 2d 29, 35
(D. D.C. 2009) (stating, “Were the definition of ‘use’ as strict as CLS proclaims, then the Federal Circuit in NTP
would have found that RIM’s U.S. customers were not ‘using’ the system within the United States simply by
sending and receiving emails in the United States.”); Blue Spike, LLC v. Soundmouse Ltd., No. 14 Civ. 2243, 2014
U.S. Dist. LEXIS 172489, at *9 (S.D.N.Y. 2014) (stating, “Courts interpret ‘use’ broadly, in terms of the infringing
act of use. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d at 1316.”).
15 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (internal citation omitted).
16 Visteon Global Techs., Inc. v. Garmin Int’l, LLC, No. 2:10-cv-10578-PDB-MAR, 2014 U.S. Dist. LEXIS
182932, at **57, 58 ( E.D. Mich. Sept. 25, 2014) (stating, “[H]is conclusions regarding the actual proof of such use
by Garmin’s employees are conclusory and of no value. . . . . Paragraph 134 is nothing more than a bald conclusion,
without any tie between each and every limitation of the claims and the testimony of the employees. . . . In short, he
provides no credible evidence of direct infringement by the employees.”); Transclean Corp. v. Bridgewood
Services, Inc., 77 F. Supp. 2d 1045, 1093, 1094 (D. Minn. 1999) (stating, at 1094, “Viken's conclusory Affidavit on
the ultimate issue of ‘use,’ standing alone, will not create a genuine issue of material fact that Transclean ‘used’ its
marks in the manner necessary to earn common law trademark rights. [Citations omitted].”); see also Abaxis, Inc.
v. Cepheid, No. 10-CV-02840-LHK, 2012 U.S. Dist. LEXIS 49748, at **9, 10 (N.D. Cal. July 19, 2012) (holding
that witness’s testimony regarding whether agreements were “offers for sale” was inadmissible “opinion on purely
legal matters”/“legal conclusions”); ePlus, Inc. v. Lawson Software, Inc., No. 3:09cv620, 2011 U.S. Dist. LEXIS
89950, at **13, 14 (E.D. Va. Aug. 12, 2011) (holding—where the defendant asserted it did not make, use, offer for
sale, or sell an entire, purportedly infringing system—the plaintiff’s infringement expert’s infringement opinion was
not conclusory because the expert’s conclusion was supported by substantial testimony from the defendant’s own
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danger of semantical gamesmanship is particularly applicable in patent litigation.17
Thus, the Courts have often found sufficient evidence of a defendant’s use of a claimed
system in cases where the defendant denied such use.18 Similarly here, the declarant’s denial of
“use” does not justify a summary judgment.
“A court should grant summary judgment in patent cases only if it thoroughly
understands the subject matter of the case and feels no necessity for an expert’s in-court
explanation.”19 Thus, summary-judgment motions dependent on the nature of an accused
instrumentality are generally premature if filed before the completion of expert discovery—
including exchange of expert reports.20 As the Court in Goodyear Aero. Corp. stated, “Although
the technology of this case is not incomprehensibly complex to one unfamiliar with the art, it is
an area in which I feel it would be dangerous for me to make a dispositive decision without the
aid of expert testimony. . . . [E]ach side can probably produce experts to testify on its behalf,
witnesses, the expert’s detailed testimony of the bases for his opinion, documentary evidence, and demonstrations of
the infringing systems).
17 Honeywell Int’l, Inc. v. ITT Indus., Inc., No. 02-73948,2005 U.S. Dist. LEXIS 9648, at *22 (E.D. Mich. May
17, 2005), aff’d, 452 F.3d 1312 (Fed. Cir. 2006) (quoting Humpty Dumpty’s statement in Lewis Carroll's Through
the Looking Glass, “‘When I use a word, Humpty Dumpty said, in a rather scornful tone, "it means just what I
choose it to mean— neither more nor less.’”); Alps South, LLC v. Ohio Willow Wood Co., No. 8:09-cv-386-T-
17MAP, 2010 U.S. Dist. LEXIS 140671, at *15 n.3 (M.D. Fla. Sept. 23, 2010) (the same); Invisible Fence, Inc. v.
Perimeter Techs., Inc., No. 1:05-CV-361, 2007 U.S. Dist. LEXIS 21987, at *968 n.12 (N.D. Ind. Mar. 2, 2007)
(quoting the same and citing Lewis Carroll, Alice's Adventures in Wonderland and Through the Looking Glass);
Ortho-McNeil Pharm. Inc. v. Barr Labs., Inc., No. 03-4678 (SRC), 2005 U.S. Dist. LEXIS 46932, at *23 (D. N.J.
Apr. 19, 2005) (the same and further stating, “‘The question is,’ said Alice, ‘whether you can [emphasis by author
Lewis Carroll] make words mean so many different things.’” . . . The answer to Alice’s question, and to that raised
by this case, is decidedly no, you cannot make words mean so many different things.”).
18 Soverain Software LLC v. J.C. Penney Corp., 899 F. Supp. 2d 574, 580, 581 (E.D. Tex. 2012) (denying
summary judgment); Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366,2016 U.S. Dist. LEXIS 78365,
at **11–15, 18, 19, 21 (E.D. Tex. June 16, 2016) (ruling substantial evidence supported the jury’s infringement
finding); GeoTag, Inc. v. Frontier Commc’ns. Corp., No. 2:10-CV-00265-JRG, 2014 U.S. Dist. LEXIS 11679, at
**24, 25 (E.D. Tex. Jan. 29, 2014) (denying summary judgment); Blue Spike, LLC v. Soundmouse Ltd., No. 14 Civ.
2243, 2014 U.S. Dist. LEXIS 172489, at **9, 10, 14, 15 (S.D.N.Y. 2014) (denying summary judgment); CLS Bank
Int’l v. Alice Corp. Pty, Ltd., 667 F. Supp. 2d 29, 33–36 (D. D.C. 2009) (denying summary judgment).
19 Goodyear Aero. Corp. v. United States, Nos. 37-78 and 177-78, 1980 U.S. Ct. Cl. LEXIS 987, at *23 (U.S.
Ct. Cl. Mar 17, 1980).
20 See Goodyear Aero. Corp. v. United States, Nos. 37-78 and 177-78, 1980 U.S. Ct. Cl. LEXIS 987, at *23
(U.S. Ct. Cl. Mar 17, 1980); Decca, Ltd., No. 299-70, 204 Ct. Cl. 907–09 (U.S. Ct. Cl. 1974).
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and that makes demeanor evidence and cross-examination of vital aid in resolving this
dispute.”21
In a case involving questions regarding use of an accused system, the Decca, Ltd. Court
explained:
Such questions should not be addressed by any court not having the fullest possible
understanding of the [accused] system, such as we can obtain only by expert testimony
and the report of a trial judge skilled in patent matters. In that sense, there are fact issues
requiring trial before the motions can be ruled on properly, and they are now premature.
Defendant seems resolved, despite our former order, to extract uninformed decisions
from us and confront our expert trial judge with a fait accompli.
. . . The trial judge will only be impeded, not aided, if he does not have the system under
his observation in its entirety.[22]
“[I]n patent cases where courts generally are unfamiliar with technical factual issues
raised and must rely on expert testimony to resolve fact questions[ ] . . trial by affidavit is no
substitute for plenary trial by jury, which so long has been the hallmark of ‘even-handed
justice.’”23
Likewise, “use in the United States” has a specific legal definition that does not require
the entire system be in the U.S.24 Thus, Bhatta’s application of this legal term without
identification of specific facts supporting that conclusion precludes Bhatta’s non-use conclusion
from being able to support a summary judgment.
Further, in addition to Bhatta’s non-use statement being conclusory, litigation-driven self-
serving declarations are disfavored and have less persuasive probative value than evidence not
21 Goodyear Aero. Corp. v. United States, Nos. 37-78 and 177-78, 1980 U.S. Ct. Cl. LEXIS 987, at **23, 24
(U.S. Ct. Cl. Mar 17, 1980).
22 Decca, Ltd., No. 299-70, 204 Ct. Cl. 907, 909 (U.S. Ct. Cl. 1974); see also id. at 907–908 (discussing use-of-
a-system issues).
23 Wahl v. Rexnord, Inc., 481 F. Supp. 573, 586 (D. N.J. 1979) (citing Poller v. CBA, Inc., 368 U.S. 464, 473, 82
S. Ct. 486, 7 L. Ed. 2d 458 (1962)).
24 Blue Spike, LLC v. Soundmouse Ltd., No. 14 Civ. 2243, 2014 U.S. Dist. LEXIS 172489, at *9 (S.D.N.Y.
2014) (citing NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005)).
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created for purposes of a lawsuit.25
Further, at the least, Traxcell should be given the “opportunity for the reasonable chance
to disprove [the movant’s] position[,]”26 including “opportunity to contradict statements in
[movant’s] declarations[.]”27 Thus, per Traxcell’s Motion to Dismiss as Premature Huawei’s
Motion for Partial Summary Judgment Regarding Non-Infringement and Damages, Huawei’s
partial summary-judgment motion should be denied as premature without prejudice to later
refiling.
3. Bhatta’s Three Statements Do Not Refute Direct Infringement of System
Claims.
a. Because Bhatta Restricts His Statements to “Complete Accused
System[s]” and the “SingleSON Product,” His Statements Do
Refute Direct Infringement; i.e., Do Not Refute the Manufacture,
Use, Sale, Offer for Sale, or Importation of an “Operable
Assembly” System.
Bhatta’s three direct-infringement-denial statements restrict his statements to complete
25 Creagri, Inc. v. Pinnaclife Inc., LLC, No.: 5:11-CV-06635-LHK, 2013 U.S. Dist. LEXIS 178534, at *17 n.3
(N.D. Cal. Dec. 8, 2013) (stating, “The Court noted at the hearing that the self-serving declarations, created for the
purpose of this motion, of both Dr. Crea and Dr. Visioli are less persuasive than the accompanying documentary
evidence created during Dr. Visioli's relationship with CreAgri, as Dr. Crea and Dr. Visioli's current declarations
merely present a he-said-he-said. See In re High-Tech Employees Antitrust Litig., 985 F. Supp. 2d 1167, No. 11-
2509, 2013 U.S. Dist. LEXIS 153752, 2013 WL 5770992, at *39 (N.D. Cal. Oct. 24, 2013) (explaining that internal
documents created contemporaneously with events at issue are more persuasive than litigation-driven documents).”);
Zito LLC v. CRJ, Inc., No. JKB-17-1733, 2018 U.S. Dist. LEXIS 79656, at **18, 19 (D. Md. May 11, 2018)
(stating, “The only other evidence Plaintiff puts forth is the self-serving declaration of Mr. Zito.4 [Footnote 4, states
in part:]Although Rule 56 of the Federal Rules of Civil Procedure certainly permits parties to support their claims
and defenses with, inter alia, affidavits and declarations, such statements—without corroborating evidence—are
disfavored . . .]. In short, Plaintiff cannot rely on such a conclusory, self-serving declaration to generate a material
dispute of fact. [Footnote omitted].”).
26 Baron Servs. v. Media Weather Innovations LLC, 717 F.3d 907, 908, 909, 912–14 (Fed. Cir. 2013)
(explaining that the summary-judgment motion was premature because non-movant was entitled to undertake
relevant discovery [examination of source code and deposition of summary-judgment affiants] for an “opportunity
for the reasonable chance to disprove [movant’s] position”); accord Metro. Life Ins. Co. v. Bancorp Servs., L.L.C.,
527 F.3d 1330, 1337–38 (Fed. Cir. 2008) (citing with approval the Fourth Circuit’s ruling in Ingle ex rel. Estate of
Ingle v. Yelton, 439 F.3d 191, 196 (4th Cir. 2006) “that discovery should have been allowed . . . because it
‘represented [the plaintiff’s] principal opportunity to contradict the assertion that the district court found
dispositive[.]’”).
27 Baron Servs., 717 F.3d at 914 (citing Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338
(Fed. Cir. 2008) and noting the Federal Circuit, in that case, reversed the district court’s refusal to allow more
discovery “when [the] discovery sought was the principal opportunity to contradict statements in declarations that a
district court treated as truthful and dispositive[.]”).
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accused systems (also stated, by Bhatta as “entire accused system”) and the “SingleSON
product.” It is undisputed that the accused systems are not limited to systems that include the
SingleSON product,28 thus, denials regarding SingleSON products do not address all accused
systems. Further, because Huawei’s motion is premature,29 summary judgment relating to
SingleSON should not be considered until Traxcell has the opportunity to fully develop the facts
regarding SingleSON.30 Bhatta’s denials regarding “complete accused systems” do not refute
direct infringement because direct infringement of a system claim is not dependent on there
being a “complete accused system;” rather, direct infringement of a system claim includes
infringement of an operable assembly of components of a patented invention.31
b. Because Infringing Use of System Does Not Require All System
Components Be in the U.S., Bhatta’s Restrictions of His System-
Infringement Denials to “Complete Accused System[s] in the
United States” Do Refute Direct Infringement of the Systems
Claims.
Direct infringement of systems claims do not require that all system components be in the
U.S.32 Thus, Bhatta’s denials regarding “complete accused system[s] in the United States” and
“entire accused system[s]” in the U.S. do not refute direct infringement of the systems claims.
Thus, those statements do not prove a lack of genuine issue of material fact regarding direct
infringement of the systems claims.
28 See, e.g., ECF No. 199-11 generally; Motion (ECF No. 199) at 3.
29 See Traxcell’s Motion to Dismiss as Premature Huawei’s Motion for Partial Summary Judgment Regarding
Non-Infringement and Damages, being filed shortly before this filing of this Response ECF No. 207).
30 Abstrax, Inc. v. Dell, Inc., No. 2:07CV221, 2009 U.S. Dist. LEXIS 93608, at *18 (E.D. Tex. Sept. 18, 2009)
(stating, “[Plaintiff] desires to preserve its right to assert such infringement after it fully develops the facts
surrounding imported computer systems. In light of the court’s order compelling additional depositions, the
undersigned agrees with [plaintiff] that summary judgment is premature at this point. The motion for summary
judgment should be denied without prejudice to re-urging[.]”)
31 Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11, 18, 19 (Fed. Cir. 1984).
32 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1311, 1313–17 (Fed. Cir. 2005); Prism Techs., LLC v.
Adobe Sys., Inc., No. 8:10CV220, 2012 U.S. Dist. LEXIS 104061, at**19, 21, 22 (D. Neb. July 26, 2012).
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C. Method Claims: Huawei’s Motion Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Huawei’s Performance of Any Claimed
Method.
For this issue, Huawei’s Motion relies on (i.e., cites as supporting) no evidentiary cite.33
Instead, it appears Huawei’s Motion asserts that if there is no direct infringement of a system
claim, then there can be no direct infringement of method claims in the same patent.34 This
argument fails for at least two reasons. First, presumes that a method claim is simply identical to
a system claim but with the addition of the claim elements having been used. Nor is that the case
here.35 Thus, Bhatta’s conclusory statements that Huawei never made, used, sold, offered for
sale, or imported any of the accused component products together as a complete accused system
in the United States is not probative of, much less proving a lack of genuine issue of, purported
non-infringement of the method claims.
Second, even if the method claims had identically mirrored the systems claims (which
they do not), “[u]nder section 271(a), the concept of ‘use’ of a patented method or process is
fundamentally different from the use of a patented system or device.”36 For example,
infringement of a method claim does not require an operable assembly.37 Thus, for this additional
reason, Bhatta’s conclusory statements that Huawei never made, used, sold, offered for sale, or
33 Motion (ECF No. 199) at 8–9 (arguing lack of direct infringement of the method claims and citing no
supporting evidence).
34 Id. (beginning a paragraph with the statement, “Similarly, for the asserted method claims, . . .” and then
stating in the next paragraph [apparently in reference to the asserted-method-claims discussion, “Here, Huawei
never made, used, sold, offered for sale, or imported any of the accused systems [emphasis added] in their entirety
(i.e., a system comprising accused components A+B+C). (Bhatta Decl. ¶ 4.) Hence, there has been no direct
infringement.”).
35 Contrast, e.g., ’024 Patent (ECF No. 12-3) (system) claim 1 (id. at ECF page 157 [patent column 128] with
(method) claim 6 ECF page 158 [patent column 129]. For example, in contrast to the claim 1 system, the claim 6
method does not require the one or more radio-frequency transceivers to be configured for radio-frequency
communication, nor does the claim 6 method require a computer, much less a computer programmed to locate the
one or more mobile wireless communications devices and generate an indication of a location of the one or more
mobile wireless communications devices.
36 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (internal citation omitted).
37 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d at 1317, 1318.
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imported any of the accused component products together as a complete accused system in the
United States is not probative of, much less proving a lack of genuine issue of, purported non-
infringement of the method claims.
Huawei has presented no evidence of, much less showed an absence of genuine issue of
material fact regarding whether Huawei directly infringed the method claims.
D. Huawei’s SingleSON Argument Fails to Prove an Absence of Genuine Issue
of Material Fact Regarding Infringement.
As explained previously above, Bhatta’s declaration statements, including regarding
SingleSON do not proven an absence of genuine issue of material fact regarding direct
infringement of the system or method claims.
1. System Claims: Huawei’s SingleSON Argument Fails to Prove an
Absence of Genuine Issue of Material Fact Regarding Direct
Infringement of the System Claims.
As explained previously above, Bhatta’s declaration statements, including regarding
SingleSON do not prove an absence of genuine issue of material fact regarding direct
infringement of the system claims.
Further, direct infringement of system claims do not require that all system components
be in the U.S.38 Thus, Huawei’s denials regarding the SingleSON component in the United States
do not refute direct infringement of the systems claims. Thus, those denials do not prove a lack
of genuine issue of material fact regarding direct infringement of the systems claims.
Further, because Huawei’s motion is premature,39 summary judgment relating to
SingleSON should not be considered until Traxcell has the opportunity to fully develop the facts
38 Id. at 1311, 1313–17; Prism Techs., LLC v. Adobe Sys., Inc., No. 8:10CV220, 2012 U.S. Dist. LEXIS
104061, at**19, 21, 22 (D. Neb. July 26, 2012).
39 See Traxcell’s Motion to Dismiss as Premature Huawei’s Motion for Partial Summary Judgment Regarding
Non-Infringement and Damages, being filed shortly before this filing of this Response.
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regarding SingleSON. 40
Further, full fact development cannot be achieved until Huawei produces responsive
documents to the full breadth of Traxcell’s infringement contentions.41
2. Method Claims: Huawei’s SingleSON Argument Fails to Prove an
Absence of Genuine Issue of Material Fact Regarding Direct
Infringement of the System Claims.
As explained previously above, Bhatta’s declaration statements, including regarding
SingleSON do not prove an absence of genuine issue of material fact regarding direct
infringement of the method claims.
Further, direct infringement of method claim requires the steps, not all system
components, be in the U.S. Thus, Huawei’s denials regarding the SingleSON component in the
United States do not refute direct infringement of the method claims. The Huawei Motion’s
supporting exhibits do not even address the method claim steps42—much less prove that Huawei
has not performed the method claim steps in the U.S. In fact, the Motion’s sole sentence
regarding whether the method claims steps were performed by Huawei simply conclusorily
states, in relevant part:
[N]o single entity, such as a Huawei customer, has ever . . . or performed
all of the steps of any of the asserted method claims using the accused Huawei
products in the United States. (Id. [Bhatta Decl.] ¶ 5.)[43]
That sentence does not prove a lack of genuine issue of material fact regarding direct
infringement of the method claims. First, the sentence speaks in terms of the location of the
40 Abstrax, Inc. v. Dell, Inc., No. 2:07CV221, 2009 U.S. Dist. LEXIS 93608, at *18 (E.D. Tex. Sept. 18, 2009)
(stating, “[Plaintiff] desires to preserve its right to assert such infringement after it fully develops the facts
surrounding imported computer systems. In light of the court’s order compelling additional depositions, the
undersigned agrees with [plaintiff] that summary judgment is premature at this point. The motion for summary
judgment should be denied without prejudice to re-urging[.]”)
41 See Ramey Decl. at ¶s 3 and 4 (Huawei is refusing to produce documents requested by Traxcell).
42 E.g., Bhatta declaration (ECF 199-28), generally.
43 Motion (ECF 199) at 4.
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“accused Huawei products,” (for method claim there are not accused system components44)
while for a method claim the issue is where the steps were performed, not where system
components for system claims are located. Further and more importantly, the sole-cited
purported evidentiary support—Bhatta declaration paragraph 5—does not address the
performance of the method claim steps, much less the location of such performance; rather that
paragraph addresses solely the system claim, i.e., refers only to the use of accused systems.45
Once again Huawei confuses patent concepts—here, system claims with method claims—and
simply and erroneously equates denial of infringement of a system claims with denial of
infringement of a method claim. However, “[u]nder section 271(a), the concept of ‘use’ of a
patented method or process is fundamentally different from the use of a patented system or
device.”46
Huawei’s Motion fails to present any evidence refuting direct infringement of the method
claims, much less show an absence of genuine issue of material fact. Thus, Huawei is not entitled
to summary judgment regarding the method claims.
Further, because Huawei’s motion is premature,47 summary judgment relating to
SingleSON should not be considered until Traxcell has the opportunity to fully develop the facts
44 Of course, as previously noted in Plaintiff Traxcell Technologies, LLC’s Response to Defendant Huawei
Technologies USA, Inc.’s Motion to Strike and Impose Sanctions (ECF No. 166) at 1, an Accused Instrumentality
can be an accused system, but it is misleading to refer to an “accused component” of an accused system. A
component satisfying a claim limitation is not the same as the component infringing. Though Huawei continues to
intermix different patent concepts (e.g., satisfaction of a claim limitations and infringement) (see Huawei’s Reply in
Support of Motion to Strike Huawei’s Reply in Support of Motion to Strike Infringement Contentions and Impose
Sanctions [ECF No. 169] at 1 [dismissing the proper use of patent terminology as “semantics”) these distinctions are
important because words have meaning. See Envtl. Instruments, Inc. v. Sutron Corp., 877 F.2d 1561, 1564 (Fed. Cir.
1989) (stating, in reference to certain claim language, “These words have meaning and must be given effect.
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 U.S.P.Q.2D (BNA) 1737, 1739-40 (1987), cert.
denied, 485 U.S. 961, 99 L. Ed. 2d 426, 108 S. Ct. 1226 (1988).”).
45 Bhatta declaration (ECF 199-28) at ¶ 5.
46 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (internal citation omitted).
47 See Traxcell’s Motion to Dismiss as Premature Huawei’s Motion for Partial Summary Judgment Regarding
Non-Infringement and Damages, being filed shortly before this filing of this Response.
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regarding SingleSON.48
Further, as Huawei has not produced all responsive material, summary judgment relating
to SingleSON should not be considered.49
3. Huawei’s SingleSON Argument Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Contributory Infringement.
a. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding Direct Infringement by
Any Entity.
Huawei first argues contributory infringement cannot exist because “[a]s explained
above, there is no direct infringement.”50 This argument fails because the “[a]s explained above”
section of Huawei’s Motion arguing a purported lack of direct infringement addressed only
purported proof that Huawei did not directly infringe.51 As the Response previously explained
above, the Motion failed to prove a lack of genuine issue of material fact as to Huawei’s direct
infringement. Further, even if the Motion had proven (which, again, it did not) Huawei did not
directly infringe that does not prove that no entity (e.g., Huawei customers) directly infringed.
Because Huawei’s Motion did not conclusively prove it did not directly infringe and the
Motion did not address (much less prove) that no entity (most particularly Huawei’s customers)
directly infringed, Huawei’s Motion does not prove based on purported lack of direct
48 Abstrax, Inc. v. Dell, Inc., No. 2:07CV221, 2009 U.S. Dist. LEXIS 93608, at *18 (E.D. Tex. Sept. 18, 2009)
(stating, “[Plaintiff] desires to preserve its right to assert such infringement after it fully develops the facts
surrounding imported computer systems. In light of the court’s order compelling additional depositions, the
undersigned agrees with [plaintiff] that summary judgment is premature at this point. The motion for summary
judgment should be denied without prejudice to re-urging[.]”)
49 See Ramey Decl. at ¶s 3 and 4 (Huawei is refusing to produce documents requested by Traxcell).
50 Motion (ECF No. 199) at 9.
51 Id. at 8–9 generally and, more specifically, at 8 (stating, “To prove that Huawei [emphasis added] directly
infringed the asserted system claims, Traxcell must show . . .” and “Here, Huawei [emphasis added] never made,
used, sold, offered for sale, or imported”), at 8–9 (citing “Bhatta Decl. ¶ 4” for the sole evidentiary cite in the
Motion’s argument regarding purported lack of direct-infringement); Bhatta declarations (ECF No. 199-28) at ¶ 4
(stating, “4. Neither Huawei Technologies USA, Inc. [emphasis added] nor any other Huawei entity [emphasis
added] has ever made, used, sold, offered for sale, or imported . . . Nor has any Huawei entity [emphasis added]
combined the accused products . . .”).
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infringement entitlement to summary judgment as to contributory infringement.
b. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding All Claim-Element-
Corresponding Components Purportedly Being Staple Articles
(i.e., Having Substantial Non-Infringing Uses).
Without citation to any evidentiary support, Huawei asserts that some components
(“antennas, mobile phones, laptops, and servers”52) of its infringing systems have substantial
non-infringing uses53 (i.e., are staple items) and that, thus, Huawei is entitled to partial summary
judgment regarding contributory infringement.54 That argument fails for several reasons. First,
summary judgment would only be proper if none—not some—of the components are staple
items (i.e., have substantial non-infringing uses).55 Because Huawei does not even try to address,
much less prove a lack of genuine issue of material fact, for every claim-element-corresponding
component, summary judgment regarding contributory infringement fails.
Second, Huawei offers no evidence supporting its conclusory statement that some
components have substantial non-infringing uses.56 Contrary to Huawei’s argument, it does not
matter whether generically antennas, mobile phones, laptops, and servers have substantial non-
infringing uses but whether these particular antennas, mobile phones, laptops, and servers (as
well as all claim-element-corresponding components) have substantial non-infringing uses.
Having offered no evidence of such, Huawei has not proven a lack of genuine issue of material
52 Motion (ECF No. 199 at 10).
53 Huawei’s substantial-non-infringing arguments regarding novelty (Motion (ECF No. 199) at 2 [stating, “the
only potentially novel or nonconventional claim elements”], 10 [stating, “the only limitations that could possibly be
novel”]) are irrelevant. Once again Huawei confuses patent concepts. Novelty relates to patent claims, not claim
limitations. 35 U.S.C. § 102(a); Mark A. Lemley, Point of Novelty, Northwestern U. L.R. Vol. 1253, 1254 (2011)
(primarily citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 875 (Fed. Cir. 1985)).
54 Id.
55 35 U.S.C. § 271(a) (stating, in relevant part, “(c) Whoever offers to sell or sells w/in the U.S. or imports into
the U.S. a component[emphasis added] . . .”); Cellular Commc'ns. Equip. LLC v. HTC Corp., No. 6:13-cv-507,
2015 U.S. Dist. LEXIS 180375, at *38 (E.D. Tex. Oct. 30, 2015) (stating, “A component part may satisfy the ‘no
substantial noninfringing use’ requirement for pleading contributory infringement. See Ricoh Co., Ltd. v. Quanta
Computer Inc., 550 F.3d 1325, 1336-40 (Fed. Cir. 2008).”).
56 Id.
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fact of such. For instance, Plaintiffs position is that these particular antennas, mobile phones,
laptops and servers do not have substantial non-infringing uses as will be shown through expert
affidavits and testimony.57 Huawei’s conclusory statements offer no evidence to contradict
Plaintiff’s position. In other words, Huawei offers no evidence that these particular antennas,
mobile phones, laptops and servers could be used without the systems and methods of the present
invention in light of the infringement contentions58 showing use with the Accused Systems and
Methods.
4. Huawei’s SingleSON Argument Fails to Prove an Absence of Genuine
Issue of Material Fact Regarding Induced Infringement.
a. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding Direct Infringement by
Any Entity.
Just as with Huawei’s contributory-infringement argument, because Huawei’s Motion did
not conclusively prove it did not directly infringe and the Motion did not address (much less
prove) that no entity (most particularly Huawei’s customers) directly infringed, Huawei’s Motion
does not prove based on purported lack of direct infringement entitlement to summary judgment
as to induced infringement.
b. Huawei’s SingleSON Argument Fails to Prove an Absence of
Genuine Issue of Material Fact Regarding Induced Infringement
Based on All Claim-Element-Corresponding Components
Purportedly Being Staple Articles (i.e., Having Substantial Non-
Infringing Uses).
For the same reason discussed above regarding contributory infringement, Huawei’s
staple-article argument fails to prove entitlement to summary judgment regarding induced
infringement.
57 See Ramey Decl. at ¶ 5.
58 Plaintiff’s Infringement Contentions (ECF Nos. 199-2 through 199-22) and evidence cited therein (ECF Nos.
166-25 through 166-73).
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That argument also fails regarding induced infringement because, as Huawei’s Motion
concedes,59 induced infringement does not require proof that a component is a non-staple
article.60 Further, while a component being a non-staple article can create an evidentiary
inference in favor of a plaintiff for purposes of intent under contributory infringement, Huawei’s
Motion does not argue that the absence of that inference negates contributory-infringement
intent; nor could Huawei so argue because if such were the case, then a component being a non-
staple article would be an induced infringement cause-of-action element and it is not.61
Neither of the two cases cited by Huawei, Warner-Lambert Co. v. Apotex Corp.62 and
Vita-Mix Corp. v. Basic Holdings, Inc.63, held the plaintiff could not prove induced contributory
infringement because of failure to prove a component was a non-staple article.64 Rather, in
Warner-Lambert Co. v. Apotex Corp. and Vita-Mix Corp., the entire evidentiary record (not just
whether any components were a non-staple article) showed a lack of intent to induce
infringement.65 In contrast, here Huawei has not tried to show an absence of genuine issue of
material fact of intent to induce infringement (i.e., show the evidentiary record is such that
Plaintiff cannot prove that intent); rather Huawei’s Motion erroneously tries (and fails) to show
an absence of a component being a non-staple article and then—without supporting legal
authority for the proposition that such absence proves a lack of intent—argues that, without
59 ECF No. 199 at 10, 11.
60 35 U.S.C. § 271(b), (f).
61 35 U.S.C. § 271(b), (f).
62 316 F.3d 1348 (Fed. Cir. 2003).
63 581 F.3d 1317 (Fed. Cir. 2009).
64 Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363-66 (Fed. Cir. 2003) (discussing induced
infringement); Vita-Mix Corp. v. Basic Holdings, Inc., 581 F.3d 1317, 1328, 1329 (Fed. Cir. 2009) (discussing
induced infringement).
65 Vita-Mix Corp. v. Basic Holdings, Inc., 581 F.3d at 1328 (stating, “[T]he record is devoid of actual evidence
establishing specific intent to encourage customers to infringe the ’021 patent.”); id. at 1329 (stating, “[T]ere is no
evidence that Basic intends users to maintain the stir stick in this position. . . . In sum, the record is devoid of direct
or circumstantial evidence that Basic intends to encourage infringement by its customers, and replete with evidence
to the contrary.”); Warner-Lambert Co. v. Apotex Corp., 316 F.3d at 1365.
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consideration of the entire evidentiary record, proves lack of intent.
Further and though because Huawei has not shown an absence of genuine issue regarding
induced infringement and, thus, the burden of proof has not shifted to Traxcell; there is ample
evidence of intent to induce infringing conduct.66
5. Huawei’s SingleSON No-Damages Argument Fails to Prove an Absence
of Genuine Issue of Material Fact Regarding Infringement Damages.
Huawei’s no-direct-infringement-thus-no-damages and no-indirect-infringement-thus-no-
damages arguments fail because, as explained above, no-direct-infringement and no-indirect-
infringement arguments fail.
6. Huawei’s Damages Apportionment Argument Fails to Prove an Absence
of Genuine Issue of Material Fact Regarding Infringement Damages.
Huawei’s no-apportionment-of-damages argument cursorily mentioned solely in the
Motion’s footnote 9,67 fails for multiple reasons. First, by failing to fully develop that asserted
point but rather cursorily mentioning it only in passing, Huawei has waived that assertion.68
Second, Huawei has not offered evidence that, much less proven, these particular components
(i.e., components corresponding to claim elements) are conventional. Further, per Traxcell’s
Infringement Contentions and evidence cited therein, these claim-element-corresponding
components are part of the patented invention.69
Lastly, Huawei has not showed an absence of genuine issue of material fact regarding a
purported failure to apportion. To the contrary, apportionment is only required when a plaintiff
66 Plaintiff’s Infringement Contentions (ECF Nos. 199-2 through 199-22) and evidence cited therein (ECF Nos.
166-25 through 166-73).
67 ECF No. 199 at 11 n.9.
68 See Brewster v. Dretke, 587 F.3d 764, 768 n.2 (5th Cir. 2009); U.S. v. Saucedo-Munoz, 307 F.3d 344, 352
n.10 (5th Cir. 2002); Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1229, 1230 (9th Cir. 2008);
Dubay v. Wells, 506 F.3d 422, 427 n.1 (6th Cir. 2007); Laborers’ Int'l Union v. Foster Wheeler Corp., 26 F.3d 375,
398 (3d Cir. 1994).
69 Plaintiff’s Infringement Contentions (ECF Nos. 199-2 through 199-22) and evidence cited therein (ECF Nos.
166-25 through 166-73).
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uses certain damages models. For examples, apportionment is not required when a damages
model does not calculate damages as a fixed amount or percentage of the cost or value of each
infringing product;70 when the entire-market-value rule applies71 (the entire-market-value rule
allows for recovery based on the entire market value of the entire product72); or when a damages
model identifies the smallest salable unit when the patented feature covers that unit as a whole,
rather than a single component of a multi-component product.73
Huawei’s Motion does not even try to show that Traxcell’s damages model is one that
requires apportionment and that Traxcell cannot prove apportionment.
Further, apportionment can be sufficiently accomplished by, for example:
• “[an economist’s] careful selection of the royalty base to reflect the value added by
the patented feature, where that differentiation is possible;”74
• “adjustment of the royalty rate so as to discount the value of a product’s non-patented
features;”75 or
• “a combination thereof;”76
and Huawei’s Motion does not try to show that Traxcell cannot (if it were required) so
apportion damages.
Further, a separate apportionment is not required for a damage models based on the
Georgia-Pacific factors because those factors already take into account apportionment.77
Thus, Huawei’s Motion does show that Traxcell’s damages model is one that requires
70 See In re Maxim Integrated Prods., No. 12-945, 2015 U.S. Dist. LEXIS 124062, at *37, *40, *41 (W.D.
Penn. Sept. 11, 2015)
71 See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1361 (Fed. Cir. 2001).
72 Id.
73 Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No.: 14-cv-02061-H-BGS, 2016 U.S. Dist. LEXIS
110212, at *46 (S.D. Cal. Aug. 17, 2016).
74 Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201, 1226 (Fed. Cir. 2014)
75 Id.
76 Id.
77 AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1338 (Fed. Cir. 2015).
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apportionment and that Traxcell cannot prove apportionment.
Further and in part because damages expert reports and depositions are not yet due, 78 this
apportionment issue further shows that Huawei’s Motion is premature.
E. Huawei’s Motion Fails to Prove an Absence of Genuine Issue of Material
Fact Regarding Indirect Infringement of ’284 Patent Claim 12 and ’320
Patent claims 1 and 4.
Huawei contends there can be no indirect infringement of Claim 12 of the ’284 patent or
Claims 1 and 4 of the ’320 patent because Huawei has never made, used, sold, offered for sale,
or imported Alcatel Lucent’s OmniVista Mgmt. Software. However, such an argument is
specious a best. It is true that Exhibit D of the Infringement Contentions served on Huawei
contain a typographical error in that the two concluding paragraphs make reference to “Alcatel
Lucent’s OmniVista Management Software, specifically OV3600” rather than “Huawei’s
Network management System.” However, Traxcell clearly and definitively specified during the
March 27, 2018 Hearing that the Infringement Contentions against Huawei, for all accused
systems and methods, included the SON Master Network Management Software for the SON
systems and the eSight Network management Systems for the WLAN systems.79 Huawei’s
assertions otherwise are an attempt to change the record before the Court. The error in Exhibit D
was corrected no later than March 27, 2018:
THE COURT:· So that is a yes, that you are only accusing these devices when
used in conjunction with that software?
MR. RAMEY:· For the WLAN definitely, Your Honor. Now, based on what
Huawei has told us, that they don't use it with the SON, we've gone back to our
contentions … and so we think they're broad enough to cover the Network
Management Software, the SON Master Network Management software ….· We
were under the impression they were both called eSight, but we mentioned the
SON Master in our contentions. 80
78 Docket Control Order (ECF No. 183) at 3 (setting expert reports and discovery deadlines).
79 See ECF No. 177, March 27, 2018 Hearing Transcript at p. 63, l. 6 through p. 65, l. 4.
80 See ECF No. 177, March 27, 2018 Hearing Transcript at p. 64, ll. 4-14.
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This was in response to the Court’s inquiry whether Traxcell’s claims against Huawei had a
comparable element such as the OV3600 software for ALE.
[81]
Huawei made no mention of the error during the Hearing likely because Huawei understood the
mistake as a typographical error that was corrected during the hearing.
Further, even assuming the Court is inclined to not recognize the correction of the error
during the Hearing, the plain language of Exhibit D containing the typographical error specifies
that the system or method include a computer capable of coupling to a computer executing
OV3600.
[82]
Accordingly, Huawei knew the OmniVista 3600 software was for the ALE contentions and not
its own. Moreover, the fact that Huawei does not make, use or sell the Omnivista 3600 software
is not determinative of infringement because the contention provides that the computer must be
capable of executing the software, not that it be running the software.
F. Huawei’s Notice Argument Fails to Prove an Absence of Genuine Issue of
Material Fact Regarding Indirect Infringement.
Huawei’s Notice argument fails because infringement damages are not based on the service
81 See ECF No. 177, March 27, 2018 Hearing Transcript at p. 63, ll. 6-9.
82 See Ex. D to the Ramey Decl. at ¶6.
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of infringement contentions but rather on when a party had actual Notice of the claims which is
presumed to be at least as the filing date of the Complaint. It is notable that Huawei cites to
Plaintiff’s First Amended petition when discussing Notice.83
Traxcell provides evidence that Huawei had knowledge from May of 2015.84 Huawei
contests that Traxcell’s Notice was effective, but there can be no argument that Huawei had Notice
of Traxcell’s infringement claims no later than January 12, 2017. Accordingly, Huawei’s motion
must be denied. Further, this Motion is premature, as explained in ECF No. 207, Traxcell’s Motion
to Dismiss Huawei’s Motion for Partial Summary Judgment, ECF No. 199.
II. CONCLUSION
For the reasons stated above, Huawei’s Motion should be denied in its entirety.
Respectfully submitted,
Ramey & Schwaller, LLP
By: /s/ William P. Ramey, III
William P. Ramey, III
Texas Bar No. 24027643
5020 Montrose Blvd., Suite 750
Houston, Texas 77006
(713) 426-3923 (telephone)
(832) 900-4941 (fax)
wramey@rameyfirm.com
Hicks Thomas, LLP
John B. Thomas (Co-Counsel)
Texas Bar No. 19856150
700 Louisiana Street, Suite 2000
Houston, Texas 77002
(713) 547-9100 (telephone)
(713) 547-9150 (fax)
jthomas@hicks-thomas.com
83 See ECF No. 199 at pp. 13-14.
84 See ECF No. 12 at ¶s 9, 14, and 19.
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Attorneys for Traxcell
CERTIFICATE OF SERVICE
Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
that all counsel of record who have appeared in this case are being served today, September 10,
2018, with a copy of the foregoing via the Court's CM/ECF system.
/s/ William P. Ramey, III
William P. Ramey, III
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