Court: United States District Court for the District of Delaware
Case Name: Evolved Wireless, LLC v. Apple Inc.
Citation: 2019 U.S. Dist. LEXIS 40169
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.
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.
The plaintiff’s motion to exclude the testimony of the defendant’s telecommunications expert witness was granted in part and denied in part.