Court: United States District Court for the District of DelawareJurisdiction: FederalCase Name: Evolved Wireless, LLC v. Apple Inc.Citation: 2019 U.S. Dist. LEXIS 40169
Facts
The plaintiff, Evolved Wireless, filed a patent infringement suit against Apple, Samsung, and several other cell phone makers, in relation to five of the plaintiff’s Long Term Evolution (LTE) wireless communications system patents. The plaintiff argued that they were the holder of the patents, ownership of which was signed over by LG Electronics, Inc. LG, a member of the European Telecommunications Standards Institute (ETSI), had participated extensively in the Third Generation Partnership Project (3GPP), a working group that developed LTE standards. 3GPP participants were required to abide by the intellectual property rights (IPR) policy of the group. These IPR policies, such as the ETSI IPR policy, were in place to maintain “a balance between the needs of standardization for public use in the field of telecommunications and the rights of the owners of IPRs.” The patents named in the suit were important to the technical specifications of the 3GPP 36 series. Apple hired a telecommunications expert witness whose testimony was challenged by the plaintiff.
The Telecommunications Expert Witness
The telecommunications expert witness was an expert on the standard-setting process at the European Telecommunications Standard Institute (ETSI) and the Third Generation Partnership Project (3GPP). His expertise included knowledge of the responsibilities that ETSI and 3GPP place on their members to report intellectual property rights during the standard-setting process. He was also well versed in the continuing obligations that these members have to issue licenses on fair, reasonable, and nondiscriminatory (FRAND) terms. The expert offered an opinion on Apple’s actions with respect to their application for injunctive relief without providing a license for each of the aforementioned patents under the terms of FRAND.
Discussion
The plaintiff challenged the telecommunications expert witness’s opinion that they were obliged to grant a license to Qualcomm, another telecommunications company. The plaintiff argued this should be excluded under Rule 702(b) as there was no such requirement under the ETSI IPR policy. The plaintiff also objected to the expert’s views on disclosure obligations, arguing that Apple had not defended untimely disclosure. Further, the plaintiff argued that the expert’s opinions on ETSI’s disclosure obligations were not related to the facts of the case.
The defendant, conversely, argued that the telecommunications expert witness’s testimony concerning ETSI disclosure obligations was merely a background that provided a context for the opinions he offered. The defendant further argued that Evolved did not provide any explanation as to why this background was not relevant to the expert’s opinion or how it would allegedly “confuse the jury”.
The court found that determining infringements of the obligations of FRAND was under their jurisdiction and that they would grant the motion to the degree that the evidence applies to the issues tried before the court. The court noted that it might be appropriate for some evidence to be presented outside the presence of the jury, but that could not be determined at that time.
Held
The plaintiff’s motion to exclude the testimony of the defendant’s telecommunications expert witness was granted in part and denied in part.
About the author
Zach Barreto
Zach Barreto is a distinguished professional in the legal industry, currently serving as the Senior Vice President of Research at the Expert Institute. With a deep understanding of a broad range of legal practice areas, Zach's expertise encompasses personal injury, medical malpractice, mass torts, defective products, and many other sectors. His skills are particularly evident in handling complex litigation matters, including high-profile cases like the Opioids litigation, NFL Concussion Litigation, California Wildfires, 3M earplugs, Elmiron, Transvaginal Mesh, NFL Concussion Litigation, Roundup, Camp Lejeune, Hernia Mesh, IVC filters, Paraquat, Paragard, Talcum Powder, Zantac, and many others.
Under his leadership, the Expert Institute’s research team has expanded impressively from a single member to a robust team of 100 professionals over the last decade. This growth reflects his ability to navigate the intricate and demanding landscape of legal research and expert recruitment effectively. Zach has been instrumental in working on nationally significant litigation matters, including cases involving pharmaceuticals, medical devices, toxic chemical exposure, and wrongful death, among others.
At the Expert Institute, Zach is responsible for managing all aspects of the research department and developing strategic institutional relationships. He plays a key role in equipping attorneys for success through expert consulting, case management, strategic research, and expert due diligence provided by the Institute’s cloud-based legal services platform, Expert iQ.
Educationally, Zach holds a Bachelor's degree in Political Science and European History from Vanderbilt University.
