United States District Court, E.D. Texas, Marshall Division
HUAWEI TECHNOLOGIES CO. LTD, Plaintiffs,
T-MOBILE US, INC. and T-MOBILE U.S.A., INC., Defendants.
PAYNE UNITED STATES MAGISTRATE JUDGE
patent case, the Court now considers T-Mobile's Motion to
Strike Arguments From The Nettleton Initial Report [Dkt. #
261]. The Court will GRANT T-Mobile's
Motion IN PART.
Huawei's Infringement Contentions and the New
U.S. Patents 8, 069, 365 and 8, 719, 617 relate to a wireless
communication network component called an IP Multimedia
Subsystem, or “IMS, ” that facilitates certain
packet-based communications (e.g., Internet access and web
services) over the network. The IMS includes a Serving CSCF
(S-CSCF), which acts as the core of the network service
processing and is “quite important to . . . the high
reliability of the IMS.” '365 Patent at 1:28-33.
Huawei's asserted claims concern “IMS Restoration,
” a feature that allows quick recovery (relative to the
prior art) of IMS network service should a particular S-CSCF
fail. Claims 1, 3, and 27 of the '365 Patent, and claim 1
and claim 4 of the '617 Patent, focus on the method of
IMS Restoration. Claims 5, 7, and 10 of the '617 Patent
are directed to S-CSCFs configured (e.g., loaded with
software) to perform IMS Restoration.
Huawei's original infringement contentions alleged
the Asserted Claims are infringed by T-Mobile's 2G, 3G,
and 4G3 LTE wireless networks operated across the country for
use by others at TMobile's encouragement (collectively
referred to as the “Accused Instrumentalities” or
“Infringing Wireless Networks”). The Accused
Instrumentalities include the sub-systems, products,
components, and software thereof that are made, used, or
offered by or for T-Mobile, including as used with third
party products and systems. For example, the Accused
Instrumentalities include, but are not limited to, hardware
and software components such as a . . . Serving Call Session
Control Function (“S-CSCF”).
Infringement Contentions (June 16, 2016) [Dkt. # 261-7] at 3
(footnote omitted). Huawei later amended its contentions to
add references to S-CSCFs provided by T-Mobile suppliers
Mavenir and Nokia. See Second Supp. to Infringement
Contentions (May 17, 2017) [Dkt. # 261-8] at 4-5. Although
Huawei's contentions have always included
general allegations of “making”
components of the network, they have never
specifically alleged T-Mobile is liable for
infringement by making S-CSCFs using the Mavinir and
Nettleton's expert report changed that. Nettleton, who is
Huawei's infringement expert, asserted T-Mobile
“makes” the accused S-CSCF by “installing
on hardware(which is making) . . . the S-CSCF software
product in claims 7 and 10 [of the '617 Patent].”
Nettleton Rep. (June 5, 2017) [Dkt. # 261-1] ¶ 591.
T-Mobile complains this is a new infringement theory outside
the scope of Huawei's contentions and asks the Court to
prohibit Nettleton from testifying on this point.
T-Mobile's Motion [Dkt. # 261] at 9-12. Huawei counters
this part of Nettleton's report falls under its
infringement contentions as amended throughout the case.
Huawei's Resp. [Dkt. # 280] at 5-8.
The Adverse Inference
also complains Dr. Nettleton improperly draws an adverse
inference from T-Mobile's assertion of attorney-client
privilege during a deposition of Erik Kosar, a T-Mobile
engineer and Rule 30(b)(6) witness. During the deposition,
Huawei repeatedly asked Kosar why T-Mobile put implementation
of IMS Restoration on hold. But each time Huawei approached
the subject, T-Mobile's counsel instructed Kosar not to
answer on the basis of attorney-client privilege:
Q. Do you know why the [IMS Restoration] was placed on hold
as of August 3rd, 2016?
MS. ZALEWSKI: Object, because the question might call for
attorney-client privileged communications. If you can answer
without revealing attorney-client privileged ...