22-04-14 ITC-1299 Apple's Answer To Ericsson's Complaint

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, DC
Before the Honorable David P. Shaw

Administrative Law Judge
In the Matter of
CERTAIN MOBILE TELEPHONES,

TABLET COMPUTERS WITH CELLULAR
CONNECTIVITY, AND SMART Inv. No. 337-TA-1299
WATCHES WITH CELLULAR
CONNECTIVITY, COMPONENTS
THEREOF, AND PRODUCTS
CONTAINING SAME
RESPONSE OF APPLE INC. TO COMPLAINT AND NOTICE OF INVESTIGATION
RESPONDENT COUNSEL FOR APPLE INC.
Apple Inc. Mark D. Selwyn

One Apple Park Way Wilmer Cutler Pickering Hale and Dorr LLP
Cupertino, CA 95014 2600 El Camino Real, Suite 400
Tel: 408-996-1010 Palo Alto, CA 94306
Telephone: (650) 858-6000
WHApple-Ericsson1299servicelist@wilmerhale.com
Joseph J. Mueller
Timothy D. Syrett
Kate M. Saxton
Annaleigh E. Curtis
Wilmer Cutler Pickering Hale and Dorr LLP
60 State Street
Boston, MA 02109
Telephone: (617) 526-6000
Michael D. Esch
Heath A. Brooks
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Telephone: (202) 663-6000
PUBLIC VERSION
LIST OF EXHIBITS
Exhibit No. Description

A Information Required by 19 C.F.R. § 210.13
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Apple Inc.’s Response to the Complaint and Notice of Investigation
PUBLIC VERSION
LIST OF APPENDICES
Appendix No. Description

A Identification of Exemplary Prior Art to the Asserted Patents
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Pursuant to 19 C.F.R. § 210.13, Respondent Apple Inc. (“Apple” or “Respondent”), by and
through its attorneys, hereby responds to the Complaint Under Section 337 of the Tariff Act of
1930 as Amended (“Complaint”), filed by Ericsson Inc. and Telefonaktiebolaget LM Ericsson
(“Ericsson” or “Complainants”) on January 17, 2022, as amended and supplemented on January
27, 2022, January 31, 2022, and February 4, 2022, and to the Notice of Institution of Investigation
(“Notice”) published in the Federal Register on February 24, 2022 (85 Fed. Reg. 10384).
Apple denies that it has engaged in acts of unfair competition in violation of Section 337
by importing, selling for importation, and/or selling after importation into the United States any
product that infringes, literally and/or under the doctrine of equivalents, directly, indirectly, by
contribution and/or by inducement, any valid asserted claim of U.S. Patent Nos. 8,102,805 (“’805
patent”), 9,532,355 (“’355 patent”), 11,139,872 (“’872 patent”), and 10,425,817 (“’817 patent”)
(collectively, “Asserted Patents”). Apple denies that the asserted claims of the Asserted Patents
are valid and enforceable. Except as specifically admitted herein, Apple denies all allegations of
the Complaint. In responding to the Complaint and the Notice, Apple has understood “Accused
Products” to mean the products accused of infringement in the Complaint. Apple reserves the
right to take further positions and raise additional defenses as may become apparent as a result of
additional information discovered subsequent to filing this Response, or to the extent Ericsson
modifies its Complaint or contentions.
As part of its Response to the Complaint, Apple makes the following preliminary
statements:
a. Ericsson’s Complaint represents another example of Ericsson’s utter disregard of
its commitments to license on terms that are fair, reasonable, and non-discriminatory
(“FRAND”)—and not to use as weapons to seek injunctive relief—its patents declared essential
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to cellular standards (“SEPs”) promulgated by the European Telecommunications Standards
Institute (“ETSI”). Even before the expiration of the parties’ 2015 cross-license in January 2022,
Ericsson began to file actions against Apple to gain negotiation leverage and extract from Apple
exorbitant, supra-FRAND licensing terms. Ericsson secretly obtained a temporary order in the
Netherlands barring Apple from seeking judicial protection against Ericsson’s misuse of SEPs to
obtain injunctive relief—an order that the Dutch court later vacated upon learning that Ericsson
had seriously misrepresented the facts in its secret court application. Ericsson also sued Apple in
the U.S. District Court for the Eastern District of Texas claiming a FRAND licensing dispute with
Apple based merely on an Apple website with descriptions of Apple’s views on FRAND licensing,
which were not directed at Ericsson or any other singular company. Remarkably, Ericsson filed
its case literally six minutes after Ericsson provided its publicly-announced “sticker price” terms
to Apple and the day before the parties were first scheduled to meet to discuss commercial terms.
After the parties’ license expired, Ericsson stepped up its efforts to impose leverage on Apple with
a global wave of requests for exclusionary and injunctive relief. For example, Ericsson has secretly
filed multiple cases internationally seeking injunctive relief on its SEPs, often requesting
preliminary relief before a full merits assessment.
b. By contrast, Apple has made extensive, good-faith efforts to license Ericsson’s SEP
portfolio, including the Asserted Patents, on FRAND terms. In October 2021, Apple proposed
that the parties engage in binding arbitration to set FRAND licensing terms. Ericsson refused. In
November 2021, Apple made a significant licensing offer to Ericsson, which was based on the
parties’ 2015 license and accounted for changes in each party’s shares of SEPs. Ericsson rejected
it. And on December 17, 2021, Apple filed a case in the Eastern District of Texas requesting a
binding judicial determination of global FRAND terms for Ericsson’s SEPs to be effectuated by a
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renewal of the parties’ existing cross-license with Ericsson’s consent. Apple’s actions demonstrate
that it remains a more-than-willing licensee of the Asserted Patents, but Ericsson has refused to
engage with any of Apple’s good-faith efforts and has instead sought injunctions against Apple in
courts from Waco to Bogota.
c. Ericsson claims that it has filed its Complaint “only after exhausting all other
options to conclude a license with Apple on . . . FRAND terms.” Public Interest Statement of
Complainants, p. 2. That is false, plain and simple. Ericsson could have taken up Apple on its
substantial FRAND licensing offer, or its offer to engage in binding arbitration, or on its
willingness to have the Texas court set binding FRAND terms for a renewed, global cross license.
Indeed, Ericsson has expressly stated that the Eastern District of Texas is “clearly . . . the parties’
chosen forum.” D.I. No. 17 at 1, Apple Inc. v. Telefonaktiebolaget LM Ericsson, No. 2:21-cv-460
(E.D. Tex. Jan. 19, 2021). Instead of engaging with any of the options offered by Apple, Ericsson
has instead chosen to use the threat of exclusionary remedies issued by the Commission (and
injunctive relief elsewhere) as a weapon to extract from Apple excessive, non-FRAND royalties.
Apple has repeatedly demonstrated its willingness to license Ericsson’s patents on FRAND terms.
But Apple refuses to be coerced under threat of an exclusion order into paying excessive and unfair
patent royalties on SEPs.
d. The Commission’s exclusionary remedies are not appropriate for this dispute, and
the award of an exclusion order here would be inconsistent with the statutory public interest
factors. The public depends on the proper functioning of the standard-setting system and the steady
supply of products that support standards. Indeed, when the U.S. Trade Representative disallowed
a SEP exclusion order in 2013, he pointed specifically to concerns about the “effect on competitive
conditions in the U.S. economy and the effect on U.S. consumers.” Aug. 3, 2013 letter from Amb.
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Michal B. G. Froman to Hon. Irving A. Williamson, U.S. ITC at 3, available at
https://ustr.gov/sites/default/files/08032013%20Letter_1.PDF. Ericsson’s pursuit of exclusionary
remedies on FRAND-committed patents in this Investigation—despite Apple’s currently-pending
district court case to set FRAND rates, and multiple other routes to FRAND royalties offered by
Apple—runs directly counter to the public interest.
e. Indeed, Ericsson has previously agreed that such exclusionary relief is
inappropriate for FRAND-committed patents. For example, in 2006, Ericsson took the position
before the Commission that “Complainants’ initiation of this ITC investigation seeking to obtain
permanent exclusion and cease and desist orders is contrary to and in violation of their commitment
to adhere to the FRAND policy[.]” Amended Response to the Complaint and Notice of
Investigation ¶ 148, Certain Wireless Communication Equipment, Articles Therein, and Products
Containing the Same, Inv. No. 337-TA-577 (Aug. 29, 2006). In a 2011 submission to the U.S.
Federal Trade Commission, Ericsson explained that where a party has made a FRAND
commitment, “injunctions should not be allowed as a first means; i.e., without even engaging in
bona fide licensing discussions. The whole purpose of the (F)RAND commitment is that standard
adoption should not be blocked (unless a user is unreasonably refusing to take a necessary
license).” Ericsson’s Response to the FTC’s Request for Comments at 7, Standard Setting
Workshop, Project No. P111204 (Aug. 5, 2011), available at
https://www.ftc.gov/sites/default/files/documents/public_comments/request-comments-and-
announcement-workshop-standard-setting-issues-project-no.p111204-00049%C2%A0/00049-
80189.pdf. In bringing this action, Ericsson has failed to live by its own words.
RESPONSE TO COMPLAINT
In answer to the allegations set forth in the Complaint, Apple responds as follows:
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I. INTRODUCTION AND NEGOTIATION HISTORY1
1. To the extent that Paragraph 1 merely sets forth action that Ericsson requests the
Commission undertake, it contains no allegation requiring a response. Apple denies that it has
engaged in unlawful importation into the United States, sale for importation into the United States,
offer for sale for importation into the United States, and/or sale within the United States after
importation of the Accused Products, and that the Accused Products infringe any valid asserted
claim of the ’805 patent, the ’355 patent, the ’872 patent, or the ’817 patent. Apple denies any
remaining allegations set forth in Paragraph 1.
2. Apple admits that Exhibits 1-4 to the Complaint purport to be certified copies of
the Asserted Patents, Exhibits 5-8 to the Complaint purport to be certified copies of the recorded
assignments for the Asserted Patents, and Appendices A-D to the Complaint purport to be certified
copies of the prosecution histories of the Asserted Patents. Apple lacks sufficient knowledge or
information to form a belief as to the truth of the remaining allegations contained in Paragraph 2
and, on that basis, denies them.
3. Apple admits that Apple is the proposed respondent in the Complaint. Apple
admits that the Accused Products include certain mobile telephones, tablet computers, and smart
watches with cellular connectivity and products containing the same manufactured on behalf of
Apple. Apple admits that the Accused Products are electronic devices that, if enabled and activated
for use on cellular networks, support certain industry standard telecommunication technology.
Apple admits that the Complaint purports to identify certain Apple iPhones, iPads, and Watches
1
Apple has adopted headings in the Complaint for ease of reference. However, to the extent that
such headings themselves contain factual and legal characterizations, Apple denies such
characterizations.
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as Accused Products, but denies that the Complaint has identified any other Apple cellular-enabled
products. Apple denies any remaining allegations set forth in Paragraph 3.
4. Apple admits that certain mobile telephones, tablet computers, and smart watches
with cellular connectivity are manufactured and assembled overseas on behalf of Apple, and are
sold for importation into the United States, imported into the United States, or sold within the
United States after importation by or on behalf of Apple. Apple denies any remaining allegations
set forth in Paragraph 4.
5. To the extent that Paragraph 5 contains conclusions of law, no response is
necessary. To the extent a response is required, Apple denies each and every allegation of
Paragraph 5.
6. To the extent that Paragraph 6 merely sets forth what Ericsson seeks, it contains no
allegation requiring a response. Apple denies that any of its Accused Products infringe any valid
and enforceable asserted claims of the Asserted Patents, or that it has otherwise violated Section
337 in any manner. Apple denies that Ericsson is entitled to any relief whatsoever, including
without limitation, the relief requested in Paragraph 6.
7. Apple admits that Ericsson is one of many companies that have participated in
developing cellular communication standards and is one of many companies holding patents
claimed to be essential to such standards. Apple lacks sufficient knowledge or information to form
a belief as to the truth of the remaining allegations contained in Paragraph 7 and, on that basis,
denies them.
8. Apple admits that Ericsson has voluntarily, irrevocably, and publicly committed to
license on FRAND terms patents purportedly essential to certain cellular standards, that Ericsson
made these commitments by submitting undertakings in the form of one or more declarations to
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ETSI, and that these commitments bind Ericsson to offer FRAND licensing terms and conditions
to any party desiring them. Apple admits that Ericsson and Apple previously entered into global
cross-license agreements covering certain patents belonging to both parties, the first of which was
signed in 2008 and the second of which was signed in 2015, and which both contain confidentiality
clauses that purport to prevent public disclosure of certain terms and conditions. Apple lacks
sufficient knowledge or information to form a belief as to the truth of the remaining allegations
contained in Paragraph 8 and, on that basis, denies them.
9. Apple admits that Exhibit 11 to the Complaint purports to be “Ericsson’s FRAND
licensing terms for 5G/NR in 3GPP Release 15.” Apple states that Exhibit 11 speaks for itself and
denies the allegation in Paragraph 9 to the extent they purport to attribute anything to Exhibit 11
not stated therein. Apple denies that Ericsson publicly announced its 5G royalty rates in order to
provide transparency and predictability. Apple lacks sufficient knowledge or information to form
a belief as to the truth of the remaining allegations contained in Paragraph 9 and, on that basis,
denies them.
10. Apple admits that Ericsson and Apple began high-level discussions regarding a
schedule for negotiating renewal of their license agreement starting in late 2020. Apple states that
Ericsson delayed the commencement of the technical discussions that were to precede the parties’
commercial discussions until the end of August 2021, despite Apple’s offer in June to start those
discussions earlier. Apple denies that Ericsson has taken steps toward licensing its SEPs to Apple
on FRAND-compliant royalty terms. Apple denies the remaining allegations of Paragraph 10.
11. Apple admits that, in connection with the parties’ license negotiations, both
Ericsson and Apple exchanged three rounds of claim charts of both parties’ declared-essential
cellular patents. Apple admits that the parties met multiple times to discuss these claim charts.
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Apple admits that Apple and Ericsson discussed their reactions to each other’s claim charts. Apple
denies that there was a present dispute between the parties regarding Ericsson’s alleged SEPs,
including because the 2015 license continued in force and Ericsson has not yet made any licensing
offer to Apple at this time. Apple admits that on October 4, 2021, at 2:25 p.m. Pacific time, an
Ericsson representative emailed Apple representatives, stating that “Ericsson is willing to continue
to offer Apple our publicly announced 5G multimode rate of $5 per phone (with a $1 early signing
discount), a rate which we will continue to honor assuming we execute a license relatively
quickly.” Apple denies any remaining allegations set forth in Paragraph 11.
12. Apple admits that Ericsson filed a complaint in Ericsson Inc. and
Telefonaktiebolaget LM Ericsson v. Apple Inc., 2:21-cv-00376-JRG, in the Eastern District of
Texas on October 4, 2021 at 2:31 p.m. Pacific time—six minutes after emailing Apple regarding
Ericsson’s claimed publicly announced 5G multimode rate. Apple states that Ericsson’s complaint
in that case speaks for itself and denies the allegations in Paragraph 12 to the extent they purport
to attribute to the complaint anything not stated therein. Apple denies any remaining allegations
set forth in Paragraph 12.
13. Apple denies each and every allegation in Paragraph 13. Apple states that it has
offered Ericsson numerous paths to a FRAND royalty rate for its patent portfolio, including the
Asserted Patents. These paths have included Apple’s substantial FRAND license offer; Apple’s
offer to engage in binding arbitration; and Apple’s affirmative suit in the Eastern District of Texas,
asking the court there to set binding FRAND terms for a global license to Ericsson’s standards
essential patents (and its willingness to have terms for Apple’s own SEPs included in a cross
license). Ericsson has not accepted any of these paths Apple has offered.
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14. Apple denies each and every allegation in Paragraph 14. Apples states that, prior
to the parties’ first scheduled business discussions regarding licensing, Ericsson secretly initiated
litigation against Apple in the Netherlands, and sued Apple in the Eastern District of Texas. Apple
further states that Ericsson included a paragraph substantively identical to Paragraph 14 in its
Eastern District of Texas complaint, even though that complaint was filed before the parties’ first
scheduled business discussions regarding licensing. See Original Complaint ¶ 16, Ericsson Inc. v.
Apple Inc., No. 2:21-cv-376 (E.D. Tex. Oct. 4, 2021).
15. Apple denies each and every allegation in Paragraph 15. Apple states that Ericsson
has breached its commitments to license the asserted patents on FRAND terms and conditions,
including by refusing to engage in any of the routes to FRAND terms offered by Apple, and by
instead engaging in strong-arm litigation tactics in an effort to force Apple to agree to non-FRAND
royalty rates.
II. THE PARTIES
A. Complainants
16. On information and belief, Telefonaktiebolaget LM Ericsson is a corporation
organized and existing under the laws of the Kingdom of Sweden, having its principal place of
business at Torshamnsgatan 21, Kista, SE-164 83 Stockholm, Sweden. Apple lacks sufficient
knowledge or information to form a belief as to the truth of the remaining allegations contained in
Paragraph 16 and, on that basis, denies them.
17. On information and belief, Ericsson Inc. is a corporation organized and existing
under the laws of the State of Delaware, having its principal place of business at 6300 Legacy
Drive, Plano, Texas 75024.
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18. Apple lacks sufficient knowledge or information to form a belief as to the truth of
the allegations contained in Paragraph 18 and, on that basis, denies them.
B. Proposed Respondents
20. Apple admits that it is a corporation organized under the laws of the State of
California with its principal place of business at One Apple Park Way, Cupertino, California
95014. Apple admits that it designs, develops, imports into the United States, and/or sells for
importation into the United States mobile phones, tablet computers, and/or smart watches. Apple
admits that mobile phones, tablet computers, and/or smart watches are manufactured on behalf of
Apple. To the extent not specifically and expressly admitted, Apple denies all other allegations
and characterizations in Paragraph 20.
21. Apple admits that Apple designs, develops, imports, and sells after importation
certain Apple iPhones listed in Exhibit 9 to the Complaint. Apple admits that certain Apple
iPhones listed in Exhibit 9 to the Complaint are manufactured on behalf of Apple. Apple admits
that Apple sells certain Apple iPhones listed in Exhibit 9 within the United States. To the extent
not specifically and expressly admitted, Apple denies all other allegations and characterizations in
Paragraph 21.
certain Apple iPads listed in Exhibit 9 to the Complaint. Apple admits that certain Apple iPads
listed in Exhibit 9 to the Complaint are manufactured on behalf of Apple. Apple admits that Apple
sells certain Apple iPads listed in Exhibit 9 within the United States. To the extent not specifically
and expressly admitted, Apple denies all other allegations and characterizations in Paragraph 22.
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certain Apple Watches listed in Exhibit 9 to the Complaint. Apple admits that certain Apple
Watches listed in Exhibit 9 to the Complaint are manufactured on behalf of Apple. Apple admits
that Apple sells certain Apple Watches listed in Exhibit 9 within the United States. To the extent
not specifically and expressly admitted, Apple denies all other allegations and characterizations in
Paragraph 23.
24. Apple admits that certain Accused Products are sold within the United States
through certain major retail outlets including Best Buy, Target, Wal-Mart, Verizon, AT&T, T-
Mobile, U.S. Cellular, Amazon, Costco, StraightTalk, and Xfinity. To the extent not specifically
and expressly admitted, Apple denies all other allegations and characterizations in Paragraph 24.
25. Apple admits that it performs certain services to support the sale of certain Accused
Products within the United States, including marketing certain Accused Products, developing and
distributing software, and certain after-sale services. To the extent not specifically and expressly
admitted, Apple denies all other allegations and characterizations in Paragraph 25.
III. THE ACCUSED PRODUCTS
necessary. Apple admits that Complainants have described the Accused Products as “iPhones,
iPads, and Apple Watches with cellular connectivity” pursuant to Commission Rule 210.12(a)(12).
Apple admits that the Accused Products are electronic devices that, if enabled and activated for
use on cellular networks, support certain industry standard telecommunication technology. To the
extent not specifically and expressly admitted, Apple denies all other allegations and
characterizations in Paragraph 26.
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IV. STATEMENT OF RELATED CASES
A. Litigation Related to the Asserted Patents
27. Apple states that Inv. No. 337-TA-953 was instituted on March 30, 2015, not on
March 15, 2015. Apple admits the remaining allegations set forth in Paragraph 27.
B. Other Litigation Between the Patents
28. Apple admits that on October 4, 2021, Ericsson filed a complaint against Apple in
the United States District Court for the Eastern District of Texas, Civil Action No. 2:21-cv-376,
where Ericsson does not assert patent infringement of the Asserted Patents.
29. Apple admits that on December 17, 2012, it brought suit against Ericsson in the
United States District Court for the Eastern District of Texas, Civil Action No. 2:21-cv-460.
30. Apple admits that Ericsson and Apple have been opposing parties in the following
Patent and Trademark Appeals Board proceedings:
i) Apple Inc. v. Ericsson Inc., IPR2015-01905
ii) Apple Inc. v. Ericsson Inc., IPR2015-01904
iii) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2015-01919
iv) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00004
v) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00050
vi) Apple Inc. v. Ericsson Inc., IPR2016-00108
vii) Apple Inc. v. Ericsson Inc., IPR2016-00107
viii) Apple Inc. v. Ericsson Inc., IPR2016-00106
ix) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00110
x) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00109
xi) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00154
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xii) Apple Inc. v. Ericsson Inc., IPR2016-00152
31. Apple admits that Ericsson and Apple have been opposing parties in the following
district court proceedings:
i) Apple Inc. v. Telefonaktiebolaget LM Ericsson et al., 3-15-cv-00154 (NDCA)
ii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00293 (EDTX)
iii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00292 (EDTX)
iv) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00291 (EDTX)
v) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00290 (EDTX)
vi) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00289 (EDTX)
vii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00288 (EDTX)
viii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00287 (EDTX)
32. Apple admits that Ericsson and Apple have been opposing parties in the foreign
proceedings listed in Paragraph 32.
V. THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTIONS
A. The ’805 Patent
1. Identification of the Patent and Ownership
33. Apple admits that the ’805 patent states on its face that it is entitled “HARQ in
Spatial Multiplexing MIMO System,” that it issued on January 24, 2012, that it issued from U.S.
Patent Application No. 12/447,522, filed on October 26, 2007, and that it claims priority to Foreign
Patent Application No. SE0602300 filed on October 31, 2006. To the extent not specifically and
expressly admitted, Apple denies all other allegations and characterizations in Paragraph 33.
34. Apple admits that the ’805 patent on its face lists Bo Göransson, Per Johan Torsner,
and Stefan Parkvall as inventors. Apple admits that Exhibit 5 to the Complaint purports to be a
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certified copy of assignment documents purporting to reflect an assignment of U.S. Patent
Application No. 12/447,522. Apple lacks sufficient knowledge or information to form a belief as
to the truth of the allegations contained in Paragraph 34 and, on that basis, denies them.
35. Apple admits that Exhibit 1 to the Complaint purports to be a certified copy of the
’805 patent. Apple admits that Appendix A to the Complaint purports to be an electronic version
of a certified copy of the prosecution history of the ’805 patent. Apple admits that Appendix A
purports to include electronic copies of technical references identified in the prosecution history
of the ’805 patent. To the extent not specifically and expressly admitted, Apple denies all other
allegations and characterizations in Paragraph 35.
2. Non-Technical Description of the Patented Inventions
necessary. Apple denies that the allegations and characterizations contained in Paragraph 36
constitute a complete and accurate description of the ’805 patent. Apple denies the allegations
contained in Paragraph 36 as they relate in any way to a proposed construction of any claim of the
asserted patents. Apple denies that the ’805 patent discloses anything novel, inventive, or
nonobvious. Apple lacks sufficient knowledge or information to form a belief as to the truth of
the remaining allegations contained in Paragraph 36 and, on that basis, denies them.
3. Patent Declaration
37. Apple admits that Exhibit 77 to the Complaint purports to be an IPR Information
Statement and Licensing Declaration submitted to ETSI in 2009. Apple admits that Exhibit 77
purports to declare U.S. Patent Application No. 12/447,522 to ETSI. Apple denies that Exhibit 77
mentions the ’805 patent. Apple denies that the ’805 patent is essential to the 3GPP 36 LTE series
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of standards. Apple lacks sufficient knowledge or information to form a belief as to the truth of
B. The ’355 Patent
38. Apple admits that the ’355 patent states on its face that it is entitled “Transmission
of system information on a downlink shared channel,” that it issued on December 27, 2016, that it
issued from U.S. Patent Application No. 14/639,287, filed on March 5, 2015, and that it claims
priority to U.S. Patent Application No. 12/664,347; International Patent Application No.
PCT/SE2008/050407, filed on April 10, 2008; and U.S. Provisional Patent Application No.
60/944,628, filed on June 18, 2007. To the extent not specifically and expressly admitted, Apple
denies all other allegations and characterizations in Paragraph 38.
39. Apple admits that the ’355 patent on its face lists Erik Dahlman and Vera
Vukajlovic Kenehan as inventors. Apple admits that Exhibit 6 to the Complaint purports to be a
certified copy of assignment documents purporting to reflect an assignment of U.S. Patent
Application No. 14/639,287. Apple lacks sufficient knowledge or information to form a belief as
to the truth of the allegations contained in Paragraph 39 and, on that basis, denies them.
’355 patent. Apple admits that Appendix B to the Complaint purports to be an electronic version
of a certified copy of the prosecution history of the ’355 patent. Apple admits that Appendix B
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43. Apple admits that Exhibits 77 and 78 to the Complaint purport to be IPR
Information Statement and Licensing Declarations submitted to ETSI in 2009 and 2017
respectively. Apple admits that Exhibit 77 purports to declare International Patent Application
No. PCT/SE2008/050407 to ETSI, and Exhibit 78 purports to declare Application No.
US20080664347 to ETSI. Apple denies that Exhibits 77 or 78 refer to the ’355 patent or U.S.
Patent Application No. 14/639,287. Apple denies that the ’355 patent is essential to the 3GPP 36
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LTE series of standards. Apple lacks sufficient knowledge or information to form a belief as to
the truth of the remaining allegations contained in Paragraph 43 and, on that basis, denies them.
C. The ’872 Patent
44. Apple admits that the ’872 patent states on its face that it is entitled “Codebook
Subset Restriction Signaling,” that it issued on October 5, 2021, that it issued from U.S. Patent
Application No. 17/168,616, filed on February 5, 2021, and that it claims priority to U.S. Patent
Application No. 17/001,133, filed August 24, 2020; U.S. Patent Application No. 16/239,870, filed
January 4, 2019; U.S. Patent Application No. 15/105,648 filed on January 11, 2016; and U.S.
Provisional Patent Application No. 62/103,101, filed on January 14, 2015. To the extent not
specifically and expressly admitted, Apple denies all other allegations and characterizations in
Paragraph 44.
45. Apple admits that the ’872 patent on its face lists Sebastian Faxér, Mattias Frenne,
Simon Järmyr, George Jöngren, and Niklas Wernersson as inventors. Apple admits that Exhibit 7
to the Complaint purports to be a certified copy of assignment documents purporting to reflect an
assignment of U.S. Patent Application No. 17/168,616. Apple lacks sufficient knowledge or
information to form a belief as to the truth of the allegations contained in Paragraph 45 and, on
that basis, denies them.
’872 patent. Apple admits that Appendix C to the Complaint purports to be an electronic version
of a certified copy of the prosecution history of the ’872 patent. Apple admits that Appendix C
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49. Apple admits that Exhibit 80 to the Complaint purports to be an IPR Information
Statement and Licensing Declaration submitted to ETSI in 2017. Apple denies that the ’872 patent
is essential to the 3GPP 36 LTE series of standards. Apple admits that Exhibit 80 purports to
declare Application No. WO2016SE50009 to ETSI. Apple denies that Exhibit 80 refers to the
’872 Patent or U.S. Patent Application No. 15/105,648. Apple lacks sufficient knowledge or
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information to form a belief as to the truth of the remaining allegations contained in Paragraph 49
and, on that basis, denies them.
D. The ’817 Patent
50. Apple admits that the ’817 patent states on its face that it is entitled “Subscription
Concealed Identifier,” that it issued on September 24, 2019, that it issued from U.S. Patent
Application No. 16/200,037 filed on November 26, 2018, and that it claims priority to International
Patent Application No. PCT/EP2018/069432, filed on July 17, 2018, and U.S. Provisional Patent
Application No. 62/536,632, filed on July 25, 2017. To the extent not specifically and expressly
admitted, Apple denies all other allegations and characterizations in Paragraph 50.
51. Apple admits that the ’817 patent on its face lists Vesa Torvinen, Noamen Ben
Henda, David Castellanos Zamora, Prajwol Kumar Nakarmi, Pasi Saarinen, and Monica
Wifvesson as inventors. Apple admits that Exhibit 8 to the Complaint purports to be a certified
copy of assignment documents purporting to reflect an assignment of U.S. Patent Application No.
16/200,037. Apple lacks sufficient knowledge or information to form a belief as to the truth of the
allegations contained in Paragraph 51 and, on that basis, denies them.
’817 patent. Apple admits that Appendix D to the Complaint purports to be an electronic version
of a certified copy of the prosecution history of the ’817 patent. Apple admits that Appendix D
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55. Apple admits that Exhibits 81 and 82 to the Complaint purport to be IPR
Information Statement and Licensing Declarations submitted to ETSI in 2019 and 2017
respectively. Apple admits that Exhibit 81 purports to declare the ’817 Patent and U.S. Patent
Application No. 16/200,037 to ETSI. Apple admits that Exhibit 82 purports to declare U.S.
Provisional Patent Application No. 62/536,632 to ETSI. Apple denies that the ’817 patent is
essential to the 3GPP 36 LTE series of standards. Apple lacks sufficient knowledge or information
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to form a belief as to the truth of the remaining allegations contained in Paragraph 55 and, on that
basis, denies them.
E. LICENSES
F. FOREIGN COUNTERPARTS
57. Apple lacks knowledge or information sufficient to form a belief regarding the truth
of the remaining allegations in Paragraph 57 and, on that basis, denies them.
VI. UNLAWFUL AND UNFAIR ACTS OF PROPOSED RESPONDENT
58. Apple denies that importation of the Accused Products infringes the ’805 and ’355
patents. Apple admits that Apple imports, owns, operates, and/or sells wireless communications
products, including products that support “4G” / “LTE” connectivity. Apple admits that Apple
advertises certain products’ connectivity with specific “LTE” bands. Apple states that Exhibits
30, 32-44, 55-71, and 90-99 speak for themselves, and Apple denies the allegations in Paragraph
58 to the extent they purport to attribute anything to these exhibits not stated therein. Apple denies
any remaining allegations set forth in Paragraph 58.
59. Apple denies that Apple’s Accused Products that support the 5G standard infringe
the ’817, ’872, and ’355 patents. Apple admits that Apple imports, owns, operates, and/or sells
wireless communications products, including products that support “5G” connectivity. Apple
admits that Apple advertises certain products’ 5G connectivity. Apple states that Exhibits 30, 32-
44, and 92-99 speak for themselves, and Apple denies the allegations in Paragraph 59 to the extent
they purport to attribute anything to these exhibits not stated therein. Apple denies any remaining
allegations set forth in Paragraph 59.
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A. Infringement of the ’805 Patent
60. Apple denies each and every allegation in Paragraph 60.
62. Apple admits that Ericsson filed a complaint against Apple in Inv. No. 337-TA-
953, Matter of Certain Wireless Standard Compliant Electronic Devices, Including
Communication Devices and Tablet Computers. Apple admits that Ericsson also filed a complaint
against Apple in the Eastern District of Texas in Case No. 2:15-cv-287. Apple states that these
complaints speak for themselves. Apple denies each and every remaining allegation of Paragraph
62.
64. Apple admits that Exhibit 25 to the Complaint purports to be a claim chart of the
’805 patent. Apple denies that any of the Accused Products infringe any valid and enforceable
Asserted Claim of the ’805 patent. Apple admits that the Complaint purports to attach documents
referenced in Exhibit 25 as Exhibits 31.1, 31.2, and 31.3. Apple denies each and every remaining
allegation of Paragraph 64.
B. Infringement of the ’355 Patent
65. Apple denies each and every allegation of Paragraph 65.
’355 patent. Apple denies that Exhibit 27 applies any asserted claim to any accused product.
Apple admits that the Complaint purports to attach documents referenced in Exhibit 27 as Exhibits
31.7, 31.8, and 31.9. Apple denies each and every remaining allegation of Paragraph 68.
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referenced in Exhibit 28 as Exhibits 31.10, 31.11, 31.12, 31.13, 31.14, 31.15, and 31.16. Apple
denies each and every remaining allegation of Paragraph 70.
C. Infringement of the ’872 Patent
referenced in Exhibit 29 as Exhibits 31.14 and 31.16. Apple denies each and every remaining
D. Infringement of the ’817 Patent
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referenced in Exhibit 26 as Exhibits 31.4, 31.6, and 31.10. Apple denies each and every remaining
VII. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE
81. Apple admits that certain Accused Products are manufactured and assembled at
facilities outside the United States. Apple admits that Exhibits 40-44, 55-71, and 90-99 to the
Complaint purport to be copies of photographs of certain Apple iPads and packaging for certain
Apple iPhones, iPads, and Watches. Apple admits that Exhibits 40-44, 55-71, and 90-99 to the
Complaint purport to state that the pictured products were assembled in China. Apple admits that
Exhibit 23 to the Complaint purports to be a news article from The Guardian that discusses certain
Apple suppliers. To the extent not specifically and expressly admitted, Apple denies all other
82. Apple admits that certain Accused Products are sold for importation into the United
States, imported into the United States, and/or sold within the United States after importation by
or on behalf of Apple. Apple admits that certain Accused Products are available for purchase on
Apple’s U.S. website, on certain third-party U.S. websites, and stores in the United States. To the
extent not specifically and expressly admitted, Apple denies all other allegations and
characterizations in Paragraph 82.
83. Apple admits that certain Apple iPhones 13, model A2482, are assembled in China
and sold for importation into the United States. Apple admits that it imports the iPhone 13 into
the United States and sells the iPhone 13 within the United States after importation. Apple admits
that it offers mobile phones for sale directly and through retail contracts to consumers in the United
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States. To the extent not specifically and expressly admitted, Apple denies all other allegations
and characterizations in Paragraph 83.
84. Apple admits that the Complaint purports to attach photographs of the Apple iPad
Pro 12.9-inch (5th Gen) with Wifi and Cellular as Exhibit 39. Apple admits that certain Apple
iPads Pro 12.9-inch (5th Gen) with Wifi and Cellular, model 2379, are assembled in China, sold
for importation into the United States, imported into the United States, and sold within the United
States after importation. Apple admits that it offers iPads for sale directly and through retail
contracts to consumers in the United States. To the extent not specifically and expressly admitted,
Apple denies all other allegations and characterizations in Paragraph 84.
85. Apple admits that the Complaint purports to attach photographs of Apple Watch
Series 7 as Exhibits 36 and 40. Apple admits that certain Apple Watches Series 7, model A2475,
are made in China, sold for importation into the United States, imported into the United States,
and sold within the United States after importation. Apple admits that it offers Apple Watches for
sale directly and through retail contracts to consumers in the United States. Apple denies each and
every remaining allegation of Paragraph 85.
VIII. HARMONIZED TARIFF SCHEDULE
86. Apple admits that the Harmonized Tariff Schedule item numbers for the Accused
Products imported into the United States are 8517.13 (iPhone); 8471.30.01 (iPad); and
8517.62.0090 (Apple Watch).
IX. THE DOMESTIC INDUSTRY
necessary. Apple states that neither Ericsson’s nor its licensees’ products, domestic activities, and
licensing activities constitute a domestic industry. Apple currently lacks knowledge or information
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sufficient to form a belief regarding the truth of the remaining allegations and characterizations in
Paragraph 87 and, on that basis, denies them.
A. Ericsson’s Domestic Activities
necessary. Apple currently lacks knowledge or information sufficient to form a belief regarding
the truth of the remaining allegations and characterizations in Paragraph 88 and, on that basis,
denies them.
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necessary. Apple admits that Exhibit 10 of the Complaint purports to be as a list of “Ericsson’s
DI Products (4G, 5G & 4G/5G).” Apple denies any remaining allegations set forth in Paragraph
97.
1. Ericsson’s Smart Factory in Lewisville, Texas
necessary. Apple lacks sufficient knowledge or information to form a belief as to the truth of the
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2. Ericsson’s Base Station Products
necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth
of the allegations and characterizations in Paragraph 110 and, on that basis, denies them.
necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of
the allegations and characterizations in Paragraph 111 and, on that basis, denies them.
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the remaining allegations and characterizations in Paragraph 116 and, on that basis, denies them.
3. Ericsson’s Cloud Core Products
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B. Samsung’s Domestic Industry
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necessary. Apple states that the Initial Determination in Certain Electronic Devices, Including
Wireless Communications Devices, Portable Music and Data Processing Devices, and Tablet
Computers, Inv. No. 337-TA-794 (Sept. 14, 2012), speaks for itself and denies the allegations in
Paragraph 135 to the extent they purport to attribute to the Initial Determination anything not stated
therein. Apple denies any remaining allegations set forth in Paragraph 135.
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C. Ericsson’s Domestic Licensing
1. Licensing Activities
necessary. Apple denies any remaining allegations set forth in Paragraph 142.
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2. Litigation Activities Related to Unwilling Licensees
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X. REQUESTED RELIEF
necessary. To the extent that any response to Paragraph 155 is required, Apple denies that Ericsson
has any valid cause of action pursuant to Section 337 of the Tariff Act of 1930, as amended. Apple
denies that it has violated 19 U.S.C. § 1337 and specifically denies all of Ericsson’s allegations of
infringement. Apple denies that Ericsson is entitled to any relief whatsoever by way of its
Complaint. Apple denies any remaining allegations of Paragraph 155.
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APPLE’S RESPONSE TO THE NOTICE OF INVESTIGATION
1. Pursuant to Commission Rule 210.13(b), Apple hereby responds to the Notice of
Investigation (“Notice”) issued by the U.S. International Trade Commission (“Commission”) on
February 17, 2022, and published in the Federal Register on February 24, 2022 (87 Fed. Reg.
10384). Without admitting any of the specific or general allegations set forth in the Complaint, as
referenced in the Notice, Apple provides the following response:
2. Apple acknowledges that the Commission has initiated an Investigation as set forth
in the Notice.
3. Apple denies that there has been any violation of Section 337 by reason of the
alleged infringement of any valid claim of any Asserted Patent. Apple further contends that the
asserted claims of the Asserted Patents are invalid and/or unenforceable and cannot support any
remedy for the alleged infringement.
4. Apple denies that a protectable domestic industry, as required by 19 U.S.C. §
1337(a)(2)-(3), exists and/or is in the process of being established with respect to any of the
Asserted Patents. Apple further denies that it is in the public interest to grant any relief to Ericsson
in connection with this Investigation.
5. Apple denies that Ericsson is entitled to any relief in this Investigation.
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RESPONSE TO THE PUBLIC INTEREST STATEMENT OF COMPLAINANTS
Apple hereby incorporates by reference the entirely of its “Public Interest Statement of
Proposed Respondent Apple Inc.,” submitted to the Commission on February 1, 2022.
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APPLE’S STATEMENT UNDER 19.C.F.R. § 210.13(B)
1. Pursuant to Rule 210.13(b), Apple provides the following additional information.
By providing such information, Apple intends only to supply data required by 19 C.F.R. §
210.13(b). Apple specifically denies that any of the supplied data refers to any unlawful act under
Section 337 or otherwise, and Apple specifically denies that it infringes any asserted claims of the
Asserted Patents based on the Accused Products. Discovery has only recently begun, and is
ongoing. Apple reserves the right to amend and/or supplement the information provided below
and in Confidential Exhibit A.
2. From the Complaint, Apple understands that the Accused Products in this
Investigation are iPhones, iPads, and Apple Watches with cellular connectivity listed in Exhibit 9
to the Complaint. The approximate statistical data related to the quantity and value of the
categories of Accused Products is set forth in Confidential Exhibit A attached hereto.
3. The Harmonized Tariff Schedule item numbers for the Accused Products imported
into the United States are as follows: 8517.13 (iPhone); 8471.30.01 (iPad); and 8517.62.0090
(Apple Watch).
4. Apple has relied on and currently relies on third parties to manufacture the Accused
Products. The names and addresses of Apple’s suppliers of Accused Products are set forth in
Confidential Exhibit A attached hereto.
5. Apple believes that the United States is a significant market for the Accused
Products and is important to Apple’s overall operations.
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AFFIRMATIVE DEFENSES
1. Apple asserts the following defenses in response to the allegations set forth in the
Complaint. Apple’s inclusion of these additional affirmative defenses in this Response is not a
concession that Apple bears the burden of proof with respect to any of them. Discovery has
recently begun, and Apple has not yet had sufficient time or opportunity to collect and review all
the information that may be relevant to the matters and issues raised herein. Thus, pursuant to 19
U.S.C. §§ 210.14(b) and 210.14(c), Apple reserves the right to seek to amend, modify, and/or
expand these defenses and to take further positions as discovery proceeds in this Investigation.
FIRST AFFIRMATIVE DEFENSE

(NON-INFRINGEMENT)
2. Although Apple does not bear the burden of proof on this issue, Apple has not, and
does not, directly infringe, induce infringement, or contribute to infringement of any valid and
enforceable claim of the Asserted Patents, either literally or under the doctrine of equivalents, and
has not otherwise committed any acts in violation of 35 U.S.C. § 271 and/or 19 U.S.C. § 1337.
3. Ericsson has failed to identify its contentions with respect to what articles are
accused of infringement and how the Accused Products practice each limitation of the asserted
claims of the Asserted Patents.
SECOND AFFIRMATIVE DEFENSE

(INVALIDITY)
4. On information and belief, one or more claims of the Asserted Patents are invalid
for failure to comply with the requirements of 35 U.S.C. §§ 101, 102, 103, 112, and/or of any other
applicable statutory provisions of Title 35 of the United States Code.
5. Apple provides an identification of prior art that supports this defense in Appendix
A to this Response. The prior art provided in Appendix A is exemplary only and should not be
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construed as limiting in any way the defenses that Apple will present in this Investigation. Apple’s
investigation is ongoing. Further, nothing herein should be construed as an admission that Apple
agrees with any of Ericsson’s express or implied claim constructions.
6. Depending on the scope of the asserted claims of the Asserted Patents or Ericsson’s
contentions in connection therewith, the asserted claims of the Asserted Patents may be invalid for
failure to provide an adequate written description or enabling disclosure, or for failure to disclosure
the best mode under 35 U.S.C. § 112, first paragraph, or for indefiniteness under 35 U.S.C. § 112,
second paragraph.
THIRD AFFIRMATIVE DEFENSE

(LACK OF DOMESTIC INDUSTRY)
7. Although Apple does not bear the burden of proof on this issue, on information and
belief, Ericsson has not adequately alleged and cannot prove the existence of a domestic industry
as required under 19 U.S.C. § 1337(a)(2)-(3), in connection with the Asserted Patents, or that such
a domestic industry is in the process of being established. For example, on information and belief,
Ericsson does not maintain a presence in the domestic wireless phone, tablet, and watch market.
Ericsson is therefore a non-practicing entity (“NPE”) in the wireless phone, tablet, and watch
market.
FOURTH AFFIRMATIVE DEFENSE

(LACK OF UNFAIR ACT)
8. Although Apple does not bear the burden of proof on this issue, on information and
belief, Apple has committed no unfair act that constitutes a violation of 19 U.S.C. § 1337.
FIFTH AFFIRMATIVE DEFENSE

(REQUESTED REMEDY IS NOT IN THE PUBLIC INTEREST)
9. Ericsson’s demand for relief is not in the public interest under Section 337(d)(1).
As explained further in the “Public Interest Statement of Proposed Respondent Apple Inc.,”
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submitted to the Commission on February 1, 2022, any exclusion order(s) or cease-and-desist
order(s) would have an adverse impact on the public interest, including the public health and
welfare, competitive conditions in the United States economy, the production of like or directly
competitive articles in the United States, and United States consumers. The public interest,
therefore, precludes issuance of the requested remedial orders, in accordance with 19 U.S.C. §
1337(d)(1) and (f)(1).
SIXTH AFFIRMATIVE DEFENSE

(ESTOPPEL)
10. On information and belief, and subject to further discovery, Ericsson is estopped
from asserting and construing any asserted claim to have been infringed by any Apple product and
asserting infringement by any Apple product under the doctrine of equivalents, in whole or in part,
by argument-based estoppel, prosecution history estoppel, and collateral, administrative, and
judicial estoppel, by virtue of the cancellations, amendments, arguments, representations, and
concessions made to the Patent and Trademark Office during the pendency of the applications for
the Asserted Patents and for related patents and patent applications, post-grant proceedings,
pending or prior litigation, and prior investigations by the International Trade Commission.
SEVENTH AFFIRMATIVE DEFENSE

(EXPRESS/IMPLIED LICENSE AND/OR PATENT EXHAUSTION)
11. On information and belief, Ericsson’s claims are barred as a result of patent
exhaustion and/or a license to the Asserted Patents. Apple and/or its customer cannot be held
liable for infringement because the Accused Products were manufactured, sold, offered for sale,
used, and/or imported into the United States under an express and/or implied license from Ericsson
and/or its affiliates, and/or another third party. For example, Apple is licensed to the extent any
agreement between Ericsson and an Apple contract manufacturer extends to Apple or any Accused
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Products. Further, to the extent the claims of one or more of the Asserted Patents are licensed by
an Apple contract manufacturer and/or substantially embodied in an end product or component
purchased by Apple from a seller authorized by Ericsson, Ericsson’s patent rights are exhausted.
EIGHTH AFFIRMATIVE DEFENSE

(GOVERNMENT SALES)
12. Apple’s importations for, and sales to, the United States government are not subject
to the relief requested by Ericsson.
NINTH AFFIRMATIVE DEFENSE

(UNCLEAN HANDS)
13. On information and belief, Ericsson’s claims as they relate to the Asserted Patents
are barred in whole or in part by reason of equitable doctrine of unclean hands. Ericsson comes to
the Investigation with unclean hands because it has engaged in a continuing anticompetitive
scheme, evidenced by Ericsson improperly seeking to invoke the Commission’s authority to
exclude the allegedly infringing Apple products from the United States.
TENTH AFFIRMATIVE DEFENSE

(INEQUITABLE CONDUCT)
14. On information and belief, and subject to further discovery, the claims of the ’355
and ’805 patents are unenforceable due to inequitable conduct by one or more of the named
inventors during their prosecution.
I. THE ’355 PATENT
15. When prosecuting a patent, inventors must sign an oath to disclose all information
material to patentability and to uphold a duty of candor. Failure to disclose material information
with intent to deceive the U.S. Patent and Trademark Office (“USPTO” or “Patent Office”)
constitutes inequitable conduct, rendering any issued patent unenforceable. As a critical
requirement for obtaining a patent, the complete and correct disclosure of inventorship is material.
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The deliberate failure to disclose information material to inventorship, such as evidence of other
co-inventors, with intent to deceive the USPTO constitutes inequitable conduct. On information
and belief, and subject to further discovery, the named inventors of Ericsson’s ’355 patent, Vera
Vukajlovic Kenehan and Erik Dahlman (“Ericsson ’355 Inventors”), violated their duty of candor
to the USPTO by deliberately concealing evidence of contributions by co-inventors of the ’355
patent.
16. In the months before Ericsson’s provisional application to which the ’355 patent
claims priority, the Ericsson ’355 Inventors collaborated with engineers from other companies who
were members of the standards-setting group for LTE. In particular, these engineers were working
toward a common goal—a way to transmit system information from an LTE base station to a
mobile device.
17. Beginning in March 2007, engineers from Samsung and Qualcomm began sharing
with the Ericsson ’355 Inventors an approach to this problem that is now known as “partly
dynamic” scheduling. These engineers shared this approach in proposals and emails sent to the
Ericsson ’355 Inventors starting in March 2007. In May 2007, a Qualcomm engineer presented
this partly dynamic approach at the same meeting where an Ericsson ’355 Inventor (Vera
Vukajlovic) presented a “static” approach to scheduling. Soon after this meeting, that same
Ericsson ’355 Inventor began soliciting input from that same Qualcomm engineer as well as
Samsung engineers on how to further refine the approaches that those Qualcomm and Samsung
engineers had proposed. Within weeks of these email discussions, Ericsson abandoned its static
approach; claimed the partly dynamic approach as solely its own idea; and filed the ’355 patent
application in secret without disclosing the collaborators from Qualcomm and Samsung who co-
invented the partly dynamic approach. On information and belief, the Ericsson ’355 Inventors did
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so with intent to obtain a patent solely assigned to Ericsson and therefore violated their duty of
candor to the USPTO, rendering the ’355 patent unenforceable.
A. The Use of Time Windows to Schedule Delivery of System Information and a

Radio Network Temporary Identifier to Indicate the Presence of System
Information Are Essential Elements of the ’355 Patent’s Claimed Invention
18. The ’355 patent is directed toward the purported problem of transmitting to mobile
devices system information needed to manage communications on a mobile network like LTE.
That purported problem originally presented itself as a competition between two extremes, both
long known in the prior art: fully dynamic scheduling vs. fully static scheduling. In a fully static
approach, the network and devices know, a priori, exactly when every unit of scheduling
information will be delivered to a mobile device. This approach minimizes power consumption
on the mobile device because the device knows exactly when to read the system information and
need not monitor the network for that system information (which would consume power). But the
fully static approach comes at a cost: if the network needs to change the delivery schedule, such
as to prioritize more important types of information, there is no flexibility to change the schedule.
In contrast, the fully dynamic approach envisions a mobile device constantly monitoring a network
channel for an indication that system information is being delivered. This approach is much more
flexible because the system information can be delivered at any time, but the constant monitoring
consumes more power. Both approaches were well known in the prior art at the time.
19. The proposed solution in the ’355 patent is a compromise between these two
extremes. The ’355 patent discloses using a defined “time window” comprising multiple radio
subframes during which the mobile device monitors a channel for an indication of the system
information. Within that time window, the network may send system information in one or more
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subframes with an accompanying Radio Network Temporary Identifier (RNTI) that indicates the
presence of system information in those subframes.
20. Both these elements—the use of a time window for delivering system information
and an RNTI to indicate the presence of that system information—are essential elements of the
’355 patent’s claimed invention. Every asserted independent claim of the ’355 patent recites these
elements. Ericsson affirmed the claimed importance of these elements during prosecution,
traversing an obviousness-based rejection by amending the claims and emphasizing both these
elements as purportedly novel. The Ericsson ’355 Inventors falsely portrayed the ideas as their
own when in fact they were derived from others.
B. As Members of the 3rd Generation Partnership Project, the Ericsson ’355

Inventors Engage in a Collaborative Process with Engineers from Samsung,
Qualcomm, and Other Companies
21. The origin of the ’355 patent starts with the 3rd Generation Partnership Project
(3GPP), a collaboration that unites seven telecommunications standard development organizations
and provides their members with a stable environment to produce the Reports and Specifications
that define 3GPP technologies such as LTE.
22. 3GPP’s Working Procedures define it as “a collaborative activity between” various
Standards Development Organizations from around the globe. 3GPP divides its work among
various groups and subgroups tasked with covering a subset of the technology areas needed to
develop the relevant technology standard.
23. The 3GPP Technical Specification Group Radio Access Network (“RAN”), a group
within 3GPP, is responsible for the definition of the functions, requirements, and interfaces of the
UTRA/E-UTRA network in its two modes, FDD & TDD. Within RAN, there are several working
groups, including Working Group 1 (“RAN1”) and Working Group 2 (“RAN2”). RAN Working
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Group 2 is responsible for the Radio Interface architecture and protocols, the specification of the
Radio Resource Control protocol, and the Radio Resource Management procedures.
24. Members of the working groups, such as RAN2, collaborate in publicly-recorded
ways to develop standards. For instance, the members submit technical proposals ahead of
periodic meetings, and those proposals are posted on a publicly available server. Members also
share these proposals among each other via emails that are also uploaded to a public server known
as a “reflector.” Members also share their views and engage in technical discussions via emails
uploaded to the reflector. At the periodic meetings, members will discuss and present these
proposals, and the meeting minutes reflect whether a proposal was “presented,” “noted,” or both.
25. The Ericsson ’355 Inventors, Erik Dahlman and Vera Vukajlovic Kenehan (listed
as Vera Vukajlovic on the ’355 application, relevant emails, and proposals), were members of
RAN2 and participated in RAN2 on Ericsson’s behalf during the development of the LTE standard.
As members of RAN2, the Ericsson ’355 Inventors sent emails to the shared listserv reflector,
received emails from the listserv reflector, reviewed and submitted technical proposals, attended
meetings, and reviewed meeting minutes. Vera Vukajlovic’s involvement in that working group
began no later than January 2007.
C. During the Collaborative Process, Ericsson Advocates for a Disfavored

“Static” Approach Without Windows or Indicating RNTIs
26. Beginning no later than January 2007, Ms. Vukajlovic began sharing, on behalf of
Ericsson, technical proposals with RAN2 via the RAN2 email reflector. Ms. Vukajlovic also
engaged in email conversations with representatives from other companies participating in RAN2
and attended meetings hosted by RAN2. At this time, Ms. Vukajlovic was one of, if not the,
principal technical representative for Ericsson working on the issue of scheduling system
information in RAN2.
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27. On or about May 1, 2007, an Ericsson representative, Janne Peisa, circulated an
email on the RAN2 email reflector disclosing and attaching an Ericsson technical proposal: R2-
071813, titled “Scheduling of System Information.” In R2-071813, Ericsson proposed an
approach for “static scheduling” of system information. For instance, Ericsson’s R2-071813
proposal suggested that system information would have “static scheduling” and that scheduling
units would be transmitted “within a pre-defined subframe.” Ericsson also suggested sending all
SUs in a single, pre-defined subframe, such as subframe #5.
28. Ms. Vukajlovic presented R2-071813 at a May 2007 RAN2 Meeting, RAN2 #58,
and the proposal was “noted” in the meeting minutes.
D. Contemporaneously, Engineers from Qualcomm and Samsung Begin

Advocating the Use of Time Windows and Indicating RNTIs, and Share
Those Ideas with RAN2 Members, including the Ericsson ’355 Inventors
29. As Ericsson clung to a static approach, engineers from Qualcomm began
advocating what would become the partly dynamic approach claimed in the ’355 patent, beginning
no later than March 2007.
30. For instance, on March 20, 2007, Francesco Grilli, a Qualcomm representative,
circulated an email to the RAN2 reflector listing and attaching various Qualcomm proposals
including one named R2-071204 and titled “Scheduling of D-BCH.”
31. R2-071204 describes, in material part, the use of time windows in which to deliver
system information. As was already agreed in prior RAN meetings, system information would be
divided into scheduling units or “SUs.” In the R2-071204 proposal, Qualcomm described using a
control channel—such as the L1/L2 channel, the Physical Downlink Control Channel (PDCCH),
or the Broadcast Control Channel (BCCH)—to indicate the presence of a system information
message. Qualcomm suggested sending these messages within a window of time beginning at a
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“lower bound”: the subframe when the mobile device would start monitoring the control channel
for an RNTI to indicate the presence of system information. In this way, the mobile device started
monitoring at that particular subframe at which point, or “shortly thereafter,” the mobile device
would detect the presence of the RNTI indicating the presence of the system information. Once
that presence had been indicated, under Qualcomm’s proposal, the mobile device would stop
monitoring for system information on the control channel, ending the time window for monitoring.
This was in contrast to a fixed approach where the system information would be present only at
“an exact offset.”
32. In R2-071204, Qualcomm also suggested the idea of using an RNTI to indicate the
presence of system information in a particular subframe, noting that “the control channel needs to
have the ability to indicate which SU is being scheduled. This could be achieved either with extra
information in the scheduling channel itself (space permitting), or by using multiple BCCH-RNTIs
[Broadcast Control Channel-RNTIs].” R2-071204 at 3 (emphasis in original). On information
and belief, Dr. Nathan Tenny was the principal author of R2-071204.
33. In closing, Qualcomm invited further collaboration on the issue, noting that it
“would be premature to take a decision at this level of detail, but it may be a good time to consider
whether there is a group preference.” Id.
34. Between March 26-30, 2007, RAN2 held a meeting in Malta: RAN2 #57-bis. The
meeting report lists Qualcomm’s R2-071204 as a proposal under the “System Information content
& delivery” header and highlights it in green, and also lists Ms. Vukajlovic as an attendee.
35. While Qualcomm representatives advocated a partly dynamic approach to
scheduling, so too did Samsung representatives to RAN2, disclosing a similar use of time
windows.
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36. For instance, on or about March 21, 2007, a Samsung representative circulated an
email on the RAN2 email reflector disclosing and attaching a Samsung technical proposal: R2-
071377, titled “Time critical system information.” In R2-071377, Samsung disclosed using
“[s]cheduling information (indicating starting times)” for delivery of system information and
disclosed that scheduling units could span multiple subframes. See R2-071377 at 4.
E. At a May 2007 Meeting, Vera Vukajlovic Presents Ericsson’s Static

Approach While Qualcomm Presents the Partly Dynamic Approach with
Lower-Bounded Windows and RNTIs
37. In the weeks leading up to a May 2007 RAN2 Meeting—RAN2 #58—Samsung
and Qualcomm further refined their partly dynamic approaches.
38. Samsung, for instance, further refined their partly dynamic approach in a proposal
shared with RAN2 via the email listserv reflector on or about May 2, 2007: R2-071912, titled
“System Information and Change Notification.” R2-071912 disclosed the use of time windows to
schedule system information: “[i]n order to limit its size, our proposal is that the Scheduling
information indicates the Radio Frame (RF) in which the transmission of the concerned SU
starts i.e. the UE starts reading the PDCCH control channel from the first sub-frame of the
indicated RF.” R2-071912 at 1 (emphasis added). Samsung also discussed using a control
channel “to indicate the SU and the corresponding detailed time/ frequency resource allocation.”
Id. at 2, 4. At the May 2007 RAN2 #58 meeting, R2-071912 was “noted without presentation” in
the meeting minutes.
39. Around the same time, Qualcomm circulated another proposal, R2-071762, titled
“Scheduling of D-BCH,” on the RAN2 reflector on or about May 1, 2007, that disclosed the same
lower-bound time windows and indicating RNTIs disclosed in Qualcomm’s March 2007 R2-
071204 proposal.
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40. Between May 7-11, 2007, RAN2 held a meeting in Kobe, Japan: RAN2 #58. Ms.
Vukajlovic attended RAN2 #58 on behalf of Ericsson.
41. At RAN2 #58, Ms. Vukajlovic presented to attendees Ericsson’s R2-071813
proposal—a static approach whereby scheduling information is sent in a pre-defined subframe and
without the use of RNTIs. Notably, that proposal advocated for SUs “that are always transmitted
within a pre-defined subframe.” R2-071813 at 1 (emphases added). The proposal further
assumed that “only one subframe per frame can be used for SU transmission.” Id. at 2.
42. Ericsson’s static approach discouraged Qualcomm’s use of RNTIs to indicate the
presence of system information on a control channel, arguing that they were unnecessary: “The
proposed scheme, when compared with some earlier presented schemes, minimizes the amount
of scheduling required on SU1 for the consequent SUs as well as on the control channels (no need
to indicate which SU is scheduled on the scheduling channel or define many BCCH-RNTI’s).”
Id. at 3 (emphases added). But Ericsson later adopted these Qualcomm-derived ideas, arguing that
they were critical to the ’355 patent’s claimed invention during prosecution of the patent. Ericsson
cited the use of RNTIs to indicate the presence of system information to traverse an obviousness-
based rejection and including this element in several of the issued claim, including the independent
claims asserted in this case.
43. In stark contrast to Ericsson’s proposal, at the same meeting, Dr. Tenny of
Qualcomm presented R2-071762—Qualcomm’s version of the partly dynamic approach for
scheduling system information, and the proposal was “noted” (i.e., not only presented but also
discussed at the meeting) in the meeting minutes. This proposal closely mirrored Qualcomm’s
earlier, March 2007 proposal (R2-071204), which, as discussed supra ¶¶ 30-34, described a partly
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dynamic approach using lower-bounded windows to schedule the delivery of system information
and BCCH-RNTIs to indicate the presence of that system information in a particular subframe.
44. Soon after this meeting, Samsung further refined its use of RNTIs to indicate
system information in a proposal, R2-072183, titled “System Information,” that was uploaded to
3GPP’s publicly accessible server that hosts technical proposals from RAN2 meetings on or about
May 15, 2007. For instance, R2-072183 disclosed: “For the BCCH [Broadcast Control Channel]
over DL-SCH [Downlink Shared Channel], there will be 1 PDCCH allocation per SU . . . in a
subframe (using the BCCH RNTI).” That proposal listed Gert-Jan van Lieshout as the “Contact
Person.”
45. Erik Dahlman, the other Ericsson ’355 Inventor, also had access to the Qualcomm
and Samsung proposals circulated on the RAN2 email reflector and, on information and belief,
reviewed them and/or discussed them with his colleague, Ms. Vukajlovic, prior to the filing of the
’355 patent’s provisional application.
F. After Presenting the Static Approach at the May 2007 Meeting, Vera
Vukajlovic Seeks Input from Qualcomm and Samsung Engineers to Refine
the Partly Dynamic Approach and Then Adopts It as Her Own
46. After attending the meeting where Dr. Tenny presented Qualcomm’s partly
dynamic approach, Ms. Vukajlovic’s collaboration with Qualcomm and Samsung escalated. For
instance, on or about May 22, 2007, Dr. Tenny responded to an email thread circulated on the
RAN2 reflector and titled “[Point#3] Stage 2 Update,” asking, does “the system information have
its own control channel, or is this still open?” On or about May 23, 2007, Vera Vukajlovic
responded to Dr. Tenny’s May 22, 2007 email, writing: “SU-1 . . . is scheduled as any other DL-
SCH transmission (L1/L2 control). . . . I think some info on when SU-1 is coming can be usefull
[sic] for the UE to read from BCH. Does someone have an opinion on this?” Samsung’s engineer,
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Gert-Jan van Lieshout, “Contact Person” from Samsung listed in R2-072183, answered Ms.
Vukajlovic’s and Dr. Tenny’s emails, explaining that Samsung’s proposal would implement an
“RNTI used for BCCH (open if we have a specific RNTI for SU-1).” Mr. Dahlman also had access
to these emails and, on information and belief, reviewed them and/or discussed them with his
colleague, Ms. Vukajlovic, prior to the filing of the ’355 patent’s provisional application.
47. As these emails reveal, Ms. Vukajlovic was openly collaborating with engineers
from Samsung and Qualcomm on several key elements reflected in the ’355 patent and its
applications, including the use of RNTIs on an L1/L2 control channel to indicate the presence of
system information and the transmission of that system information on a Downlink Shared
Channel (DL-SCH). Ms. Vukajlovic solicited further collaboration from other members, including
Dr. Tenny, asking, “Does someone have an opinion on this?”
48. Only after Qualcomm presented its partly dynamic approach at RAN #58 in May
2007, after Samsung presented a similar approach in proposals submitted for that meeting, and
after Ms. Vukajlovic solicited further feedback over email from the representatives for Samsung
and Qualcomm, did Ericsson finally abandon its static approach. On or about June 19, 2007, a
representative for Ericsson notified the RAN2 reflector that Ericsson’s partly dynamic proposal,
R2-072543, titled “Transmission of dynamic system information,” had been uploaded to the 3GPP
servers.
49. In stark contrast to Ericsson’s proposal from one month earlier (R2-071813),
Ericsson’s June 2007 proposal encouraged the use of time windows in which to schedule system
information and the use RNTIs on a L1/L2 channel to indicate the presence of system information.
Ericsson’s proposal coined a special name for its use of the previously-disclosed RNTI—“System
Information-RNTI” or “SI-RNTI”—to indicate the presence of an SU on the control channel.
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50. Two days before sharing this partly dynamic proposal with RAN2 members,
however, Ericsson secretly filed a provisional patent application: U.S. Provisional Patent
Application No. 60/944,628 which eventually issued as the ’355 patent. Ericsson’s 3GPP
proposal, R2-072543, is substantively identical to a document attached to that provisional
application. On information and belief, Ericsson never alerted Qualcomm or Samsung engineers
about this patent filing and the omission of the Qualcomm and Samsung engineers who
collaborated with Ms. Vukajlovic.
51. Contemporaneously, Samsung shared another reiteration of its prior-disclosed
partly dynamic approach on or about June 20, 2007, in a proposal circulated to the RAN2 email
reflector: R2-072612, titled “System information scheduling.” Within weeks, Ericsson shared a
proposal, uploaded to the 3GPP servers hosting the RAN2 #58 meeting technical proposals, that
compared Samsung’s latest reiteration of its earlier proposals and highlighted many key
similarities between Ericsson’s and Samsung’s proposals for scheduling system information:
 “[In the Samsung proposal,] [t]he PDCCH control channel is used to indicate the
presence of SU in a subframe as well as the corresponding detailed frequency
resource and transport format exactly as in the Ericsson proposal above”;
 “Both the Ericsson and Samsung proposals provides this flexibility [needed for
the transmission of dynamic system information]”;
 “There are many similarities between the dynamic approaches”; “Both
approaches support scheduling gaps within the SU”; and
 “it is clear . . . that there are many similarities also in the details between these
two proposals”.
R2-072934 at 1-3 (emphases added).
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52. That same Ericsson proposal also stated: “The main difference between the
proposals seems to be in the criterion used by the UE to determine when to stop monitoring the
PDCCH, i.e. when to stop ‘monitoring’ for further system information.” Id. at 3 (emphases
added). Notably, this “main difference between the proposals” was that Ericsson suggested using
a specific indicator to tell a mobile device when to stop monitoring for system information: an
End-of-System-Information Radio Network Temporary Identifier (ESI-RNTI). See id. That
element only appears in dependent claims of the ’355 patent, none of which is asserted in this
investigation.
G. The Ericsson ’355 Inventors’ Failure to Disclose Material Evidence of Co-

Inventorship Violated Their Duty of Candor, Rendering the ’355 Patent
Unenforceable
53. The USPTO’s Rule 56 (37 C.F.R. § 1.56) imposes a duty of candor and requires
full disclosure of all information material to patentability, including all material evidence bearing
on questions of inventorship. Rule 56 imposes a duty to disclose all joint inventors who contribute
to the conception of an essential element of the invention. Failure to disclose such information
with intent to deceive the examiner constitutes inequitable conduct that renders the patent
unenforceable.
54. In connection with the application resulting in the ʼ355 patent, the Ericsson ’355
Inventors signed declarations acknowledging their duty to disclose to the Patent Office information
known to them to be material to patentability in accordance with 37 C.F.R. § 1.56.
55. As alleged supra ¶¶ 29-52, engineers from Samsung and Qualcomm advocated the
use of flexible time windows on a control channel in which to schedule system information and
the use of particular RNTIs to indicate the presence of system information in the months prior to
June 2007. These concepts are features Ericsson claimed to be essential to the claims of the ’355
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patent. Ericsson cited these features to traverse an obviousness-based rejection, thus conceding
that these features were material to patentability.
56. The Ericsson ’355 Inventors derived these elements from—and therefore, at a
minimum, collaborated on the development of these elements with—Dr. Tenny of Qualcomm,
Gert-Jan van Lieshout of Samsung, and/or other unnamed collaborators. Clear and convincing
evidence, subject to further discovery, demonstrates this collaboration with joint inventors,
including at least the following:
 The non-disclosed joint inventors shared the ideas of scheduling delivery of
system information in time windows and indicating system information with
RNTIs at RAN2 meetings that at least one of the Ericsson ’355 Inventors
attended, including RAN2 #57-bis in March 2007 and RAN2 #58 in May 2007.
 The non-disclosed joint inventors described the ideas of scheduling delivery of
RNTIs in emails sent directly to at least one of the Ericsson ’355 Inventors.
 The non-disclosed joint inventors described the ideas of scheduling delivery of
RNTIs in technical proposals shared with at least one of the Ericsson ’355
Inventors beginning in March 2007. Upon seeing these proposals, the Ericsson
’355 Inventors first resisted the essential features included therein, touting the
Ericsson proposal as lacking those essential features. On information and
belief, only through further collaboration with the Qualcomm and Samsung
engineers did the Ericsson ’355 Inventors acknowledge the viability of the
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partly dynamic approach before adopting and falsely portraying it as solely their
idea.
57. From these communications with representatives from Qualcomm and Samsung,
the Ericsson ’355 Inventors derived the ideas of scheduling delivery of system information in time
windows and indicating system information with RNTIs.
58. On information and belief, the Ericsson ’355 Inventors were aware that these
collaborators were joint inventors of the subject matter claimed in the applications for the ’355
patent no later than June 17, 2007, yet failed to disclose the co-inventors or the information
demonstrating co-inventions (including but not limited to email communications, certain technical
proposals, and meeting minutes identifying the presenters of certain proposals) to the USPTO in
an effort to deceive the examiner and to obtain a patent assigned to Ericsson alone. This failure to
disclose was material to inventorship and therefore material to patentability. In so doing, the
Ericsson ’355 Inventors committed inequitable conduct that renders the ’355 patent unenforceable.
II. THE ’805 PATENT
59. On information and belief, and subject to further discovery, the named inventors of
Ericsson’s ’805 patent, Bo Göransson, Per Johan Torsner, and Stefan Parkvall (the “Ericsson ’805
Inventors”), failed to disclose material information by (1) failing to disclose prior art known by
them to be material to patentability, and (2) deliberately concealing evidence of essential
contributions to the claimed invention from unnamed co-inventors of the ’805 patent. On
information and belief, the Ericsson ’805 Inventors did so with intent to deceive the Patent Office
by withholding material, non-cumulative prior art, expressly teaching material claim elements and
certainly more relevant than any art of record. As such, the Ericsson ’805 Inventors violated their
duty of candor to the Patent Office, rendering the ’805 patent unenforceable.
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A. Background of the ’805 Patent
60. The ʼ805 patent claims priority to Swedish Provisional Application No. 0602300
which was filed on or about October 31, 2006. On October 26, 2007, Ericsson filed PCT
Application No. PCT/SE2007/050782. On April 28, 2009, Ericsson filed the corresponding U.S.
Patent Application No. 12/447,522 with the same claims as its PCT Application. On September
1, 2011, the Patent Office issued its first Notice of Allowance based on those claims. The ’805
patent lists Bo Göransson, Per Johan Torsner, and Stefan Parkvall as the named inventors.
61. The ’805 patent is entitled “HARQ in Spatial Multiplexing MIMO System.” As
the ’805 patent admits, Hybrid Automated Repeat reQuest (HARQ) is a known error control
method that uses positive or negative response signals to indicate whether certain data needs to be
retransmitted. For example, when a transmitter receives a corrupted data packet (transport block),
the receiver sends a “non-acknowledged” (NACK) response signal back to the transmitter to
indicate that the transmitter should re-transmit the transport block. At any instant, multiple HARQ
processes may be pending, meaning that each of the processes is waiting for an indication of
whether the transmission was successful or not.
62. Multiple-Input Multiple-Output (MIMO) is a technology employing multiple
antennas to wirelessly transmit or receive data. When operating in a mode called “spatial
multiplexing,” multiple antennas may simultaneously transmit or receive two data streams of
wireless data, a block at a time. Thus, spatial multiplexing may double the data rate, but it also
doubles the number of HARQ processes, as compared to single stream mode.
63. For “asynchronous” HARQ, transport blocks are transmitted with an associated
process identifier (or what the patent calls a “retransmission process identifier”). If the receiver
cannot decode a received transport block (e.g., because it was corrupted during transmission), the
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receiver uses the associated retransmission process identifier in conjunction with its NACK
response, to specifically indicate the block that should be retransmitted.
B. The Use of Scheduler Restrictions with a “Single Retransmission Process

Identifier” and “Disambiguation Data” are Material Elements of the ’805
Patent’s Claimed Invention
64. According to the ’805 patent, if conventional techniques were employed to identify
processes in a spatial multiplexing mode, eight bits of signaling would be needed for two separate
process identifiers (one identifier for each stream of data, and each identifier being 4 bits in size).
The ’805 patent contends that this is undesirable.
65. The ’805 patent purports to achieve a reduction in the number of bits to identify
data in spatial multiplexing mode. To do so, it advocates (1) accepting scheduler restrictions so
that only certain processes (and corresponding blocks of data) are allowed on a primary stream,
whereas the other processes would be permitted on a secondary stream; (2) employing a “single”
identifier to be associated with a pre-defined pair of blocks of data being sent on the primary and
secondary stream; and (3) employing “disambiguation data” to resolve ambiguities that may arise
as a result of using a single process identifier for two blocks of data. These elements are material
to the claimed invention of the ’805 patent, as evidenced by the Notice of Allowance issued by the
Patent Office on September 1, 2011. Under “Allowable Subject Matter,” the Notice identifies
“reasons for allowance” which state “[t]he inventive features include . . . the [single] re-
transmission process identifier and disambiguation data” (which is further limited as a “substream
mapping bit” in claim 20, for example).
1. The ’805 Patent Claims a Reduction of Bit Usage Through Acceptance

of Scheduler Restrictions and the Use of a “Single Retransmission
Process Identifier”
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66. The ’805 patent asserts that “[a]lthough four bits per substream are required for
maximum flexibility, fewer bits may be used if certain scheduling restrictions are accepted. For
instance, one approach is to allocate a subset of the available HARQ process identifiers to each
substream. For example, re-transmission process identifiers 0-7 could be associated with the
primary substream, while identifiers 8-15 are used on the secondary.” ’805 patent, 5:55-61. It
then continues, “[a]n improved signaling scheme requires only three re-transmission identifier bits
. . . during dual stream transmission. In this approach, the total number of process identifiers are
grouped into pairs (e.g., {0A,0B}, . . . , {7A,7B}). A single process identifier is then associated
with both substreams during a given transmission interval. The sub-pairs ‘A’ and ‘B’ are then
coupled to the primary and secondary substreams, respectively.” ’805 patent, 6:8-15 (emphasis
added).
67. In this regard, the single transmission process identifier would identify the pair or
set of processes in a combined manner. For example, in the figure below, a process identifier ‘1’
would identify both of the yellow sub-processes, or blocks of data.
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’805 patent, Figure 2 (color added).
68. All asserted claims recite a “single re-transmission process identifier” and as
mentioned above the examiner specifically identified this element in the Reasons for Allowance
of the claims.
2. The ’805 Patent Uses “Disambiguation Data” to Resolve Ambiguities

Resulting from a Single Process Identifier
69. The patent notes the single process identifier may, at times, be insufficient. For
example, it refers to a “special case” in which the transmission occurs during dual stream mode,
but, at the time of retransmission, the system performance has deteriorated such that only one
stream (the primary stream) is then available. The patent refers to this as “fallback mode.” Since
the process identifier was associated with a pair of transport blocks (as noted above), the process
identifier, by itself, is ambiguous and insufficient to identify a specific retransmitted transport
block from the pair.
’805 patent, Figure 2 (color added).
70. For example, according to the patent and referring to its figure 2, reproduced above,
the single process identifier 1 identifies the set of processes (and corresponding blocks) 1A and
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1B, but another bit would be necessary to distinguish between 1A and 1B in time intervals 225
and 227. ’805 patent, 6:36-38. The ’805 patent further asserts that, “if a given transport block . .
. is initially transmitted on the primary substream, it cannot later be re-transmitted on the secondary
substream, unless there is a signal to the receiver to indicated that the re-transmitted transport block
. . . has ‘switched’ substreams. . . . Thus, disambiguation data must also be signaled to the
receiver to resolve the potential ambiguity that arises when re-transmitted transport blocks . . .
may be scheduled on either substream.” ’805 patent, 6:53-63 (emphasis added).
71. According to the ’805 patent (but nowhere discussed in the underlying Swedish
provisional filing), disambiguation data could be sent on transmission and retransmission and used
to determine which subprocess was transmitted or retransmitted on which stream if specific “save”
and “compare” techniques were adhered to. ’805 patent, 6:64-7:22.
72. All asserted claims recite “first disambiguation data” used for transmission, and
“second disambiguation data” used for re-transmission, and as mentioned above the examiner
specifically identified this element in the Reasons for Allowance of the claims.
C. The Ericsson ’805 Inventors’ Failure to Disclose Known, Material Prior Art
Constitutes Inequitable Conduct, Rendering the ’805 Patent Unenforceable
73. Rule 56 (37 C.F.R. § 1.56) imposes a duty of candor and requires full disclosure of
all information material to patentability, including all material evidence bearing on questions of
unpatentability of a claim. Rule 56 imposes a well-established duty to disclose prior art and
information on prior invention by another. Failure to disclose such information with intent to
deceive the examiner constitutes inequitable conduct that renders the patent unenforceable.

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1. The Ericsson ’805 Inventors’ Failure to Disclose Material References,

Philips’s R1-061952, R1-061953, and R1-062485, Violated Their Duty
of Candor, Rendering the ’805 Patent Unenforceable
75. On or about August 22, 2006, Matthew Baker, a Philips representative, circulated
an email to the 3GPP RAN1 group’s reflector, entitled “Philips contributions for RAN1#46 - batch
1.” This email attached (among other things) two documents entitled “R1-061952 Fallback mode
for Rel-7 FDD MIMO scheme 7.1” (“R1-061952”) and “R1-061953 HS-SCCH signalling for Rel-
7 FDD MIMO scheme 7.1” (“R1-061953”) both of which were presented and “noted” (i.e.,
discussed) at RAN1 Meeting #46 held August 28-September 1, 2006 in Tallinn, Estonia. As
evidenced by the Meeting #46 minutes, at least Ericsson ’805 Inventors Dr. Göransson and Dr.
Parkvall attended this meeting and were active in discussions of the relevant subject matter.
76. On or about October 4, 2006, Mr. Baker sent an email to the RAN-1 Group entitled
“Philips contributions for RAN1#46bis - batch 2.” This email attached (among other things) a
document entitled “R1-062485 Details of HS-SCCH signalling for Rel-7 MIMO 7.1.1” (“R1-
062485”) which was presented and “noted” at 3GPP TSG-RAN WG1 Meeting #46bis held
October 9-13, 2006 in Seoul, Korea, again evincing this contribution was discussed during the
meeting. As evidenced by the Meeting #46bis minutes, at least Ericsson ’805 Inventors Dr.
Göransson and Dr. Parkvall attended this meeting and were active in discussions of the relevant
subject matter.
a. Philips’s R1-061952, R1-061953, and R1-062485 Are Material

to Patentability
77. In relevant part, Philips’s R1-061953, R1-061952, and R1-062485 taught and
advocated accepting certain scheduler restrictions to reduce the number of bits needed to identify
blocks of data and also taught the use of a single retransmission process identifier. As noted supra
¶ 65, adopting scheduler restrictions and the concomitant use of a “single retransmission process
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identifier” associated with a pre-defined pair of blocks are material elements to the claims of the
’805 patent, as evidenced by the Notice of Allowance.
78. The Philips R1-061953 proposal clearly discloses that “[i]t is useful to consider
what restrictions can be applied in order to reduce the amount of signalling required.” Compare
this to the language of the ’805 patent which states, “[a]lthough four bits per substream are required
for maximum flexibility, fewer bits may be used if certain scheduling restrictions are accepted.”
’805 patent, 5:55-57.
79. In addition, this proposal disclosed scheduler restrictions in which a first subset of
processes would ordinarily be transmitted on the primary stream, and the remaining processes
would ordinarily be transmitted on the secondary stream. The Philips R1-061953 proposal
discloses that “[a] reasonable simplification would be to allocate a subset of the available HARQ
processes to each beam.” This language closely mirrors language found in the specification of the
’805 patent: “one approach is to allocate a subset of the available HARQ process identifiers to
each substream.” ’805 patent 5:57-59.
80. The Philips R1-061953 proposal also disclosed that a single identifier called the
“combination number” could be used, as the name connotes, in association with two separate
streams or blocks of data. Compare this to the language of the ’805 patent which states, “[a] single
process identifier is then associated with both substreams during a given transmission interval. The
sub-pairs ‘A’ and ‘B’ are then coupled to the primary and secondary substreams, respectively.”
’805 patent, 6:10-15.
81. Philips’s R1-061953 used this single number for both transmission and
retransmission mode and for dual stream mode and fallback mode. This document is material to
patentability because it taught the material claim element “single re-transmission process
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identifier” (noted in the Reasons for Allowance) and taught its use for the exact same reasons as
the patent—to reduce the number of bits needed to identify processes or blocks of data. Philips’s
R1-061953 is also material to patentability because it taught the same principle of the patent—that
the number of bits needed to identify blocks may be reduced if certain scheduling restrictions were
accepted. And it taught the same general restrictions—limiting certain processes to the primary
stream and the other processes to the secondary.
82. The Philips R1-061952 proposal identified and addressed the “special case”
involving fallback mode that prompted the ’805 patent’s use of disambiguation data. That is,
though the Philips R1-061953 proposal taught the use of a combination number for both dual
stream mode and fallback mode it did not thoroughly explain the issue of fallback mode. Instead,
the Philips R1-061952 proposal was largely devoted to that purpose. For example, Philips R1-
061952 taught that, though accepting scheduler restrictions (and concomitantly using a combined
process identifier) may reduce the number of bits required to identify transport blocks, fallback
mode may create issues needing attention because a transport block may need to be retransmitted
on a stream that it would normally be prohibited from using in dual stream mode. This document
is also material to patentability as it clearly identified the “special case” of fallback mode that
motivated the patent’s use of disambiguation data. Given this document, an examiner at a
minimum would have appreciated that the fallback mode was a problem known in the art before
the ’805 provisional was filed and not some problem discovered by the ’805 named inventors.
Likewise, Philips R1-061952 would have provided an explicit motivation to combine with other
art which taught disambiguation data.
83. The Philips R1-062485 proposal, like the Philips R1-061953 proposal, disclosed
that the number of bits required depends on the scheduler restrictions that are applied, and again
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noted that bits may be reduced if certain processes were limited to the primary substream, and
other processes limited to the secondary. This document is material to patentability for reasons
similar to the Philips R1-061953 proposal.
b. The Ericsson ’805 Inventors Were Aware of Philips’s R1-

061952, R1-061953, and R1-062485 Yet Failed to Disclose
Them to the Patent Office
84. On information and belief, the Ericsson ’805 Inventors were aware of Philips’s R1-
061953, R1-061952, and R1-062485 through their regular participation in RAN1 and their own
submissions citing directly to these material references.
85. As members of RAN1, the Ericsson ’805 Inventors were active in discussions of
the relevant subject matter evinced by their regular participation in the RAN1 working group
through sending emails to the shared listserv reflector regarding the relevant subject matter,
receiving emails from the listserv reflector regarding the relevant subject matter, reviewing and
submitting technical proposals regarding the relevant subject matter, attending meetings (including
WG1 Meetings #46 and #46bis), and reviewing meeting minutes.
86. The Ericsson ’805 Inventors also cited Philips’s R1-061953 and R1-062485 in
contemporaneous proposals, further evidencing their awareness of these references. Ericsson’s
own proposals demonstrate that the Ericsson ’805 Inventors appreciated and discussed the relevant
features in the standards context, yet they knowingly withheld these references from the Patent
Office in efforts to portray the teachings of using scheduler restrictions and a “single
retransmission process identifier” to reduce bit usage as their own invention. As noted supra ¶ 65,
use of scheduler restrictions and a “single retransmission process identifier” are elements material
to the invention of the ’805 patent, as evidenced by the Notice of Allowance.
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87. On or about January 16, 2007, Ericsson ’805 Inventor Göransson presented an
Ericsson proposal, R1-070494, entitled “HARQ process signaling for UTRA MIMO” at RAN1
Meeting #47bis. In relevant part, Ericsson ’805 Inventor Göransson’s proposal directly cites
Philips’s R1-061953 and analyzes its pros and cons: “For the dual-stream case several options
have been presented e.g. [Philips’s R1-061953]. Next we will discuss pros and cons for the
different possibilities.”
88. Dr. Göransson then discusses the very scheduler restrictions taught by Philips’s R1-
061953 (restricting certain processes to certain streams) that the Ericsson ’805 Inventors
eventually incorporated into their patent: “In [Philips’s R1-061953] it was proposed that a subset
of the available HARQ processes could be allocated to each stream. For example, process 0-7
could be associated with the primary stream while 8-15 is used on the secondary.”
89. As noted above, Philips’s R1-061953 proposal also explicitly taught the “single re-
transmission process identifier” (appropriately called “combination number” in the Philips
proposal) as the means to identify the pair of transmitted blocks and corresponding processes. Dr.
Göransson’s proposal in substance advocates for the Philips teaching, noting that a single process
identifier in association with two separate streams or blocks of data and “imposing more
restrictions on the scheduler means a better possibility for saving on the signaling overhead.”
90. On or about November 11, 2006, Ericsson ’805 Inventor Göransson presented
Ericsson’s proposal, R1-063548, entitled “MIMO HS-SCCH structure” at RAN1 Meeting #47.
This proposal, as noted above, corresponds to the Swedish provisional application filed shortly
before this proposal was distributed. Importantly, Dr. Göransson’s proposal cites Philips’s R1-
062485 as a reference. In relevant part, Ericsson ’805 Inventor Göransson’s proposal states “[i]t
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was further agreed to use [Philips’s R1-062485] as a starting point.” Ericsson’s proposal also
acknowledges that Philips’s R1-062485 “implies some restrictions on the scheduler.”
91. On information and belief, the Ericsson ’805 Inventors were aware of material
references Philips’s R1-061953, R1-061952, and R1-062485 through their active participation in
RAN1 regarding the relevant subject matter and citation of Philips’s R1-061953 and R1-062485
in Ericsson’s own proposals (such as R1-070494 and R1-063548).
92. On information and belief, the Ericsson ’805 Inventors failed to disclose material
references Philips’s R1-061953, R1-061952, and R1-062485 with the intent to deceive the Patent
Office by withholding material, non-cumulative prior art, expressly teaching material claim
elements and certainly more relevant than any art of record, and therefore violated their duty of
candor to the Patent Office.
2. The Ericsson ’805 Inventors’ Failure to Disclose Material Reference

Nokia’s R1-063331 Violated Their Duty of Candor, Rendering the
’805 Patent Unenforceable
93. On or about November 2, 2006, Karri Ranta-aho, a Nokia representative, sent an
email to the RAN1 Group entitled “Nokia contributions to AIs 7.1 and 7.2 (HSPA evolution).”
This email attached (among other things) a document entitled “R1-063331 HS-SCCH performance
for HSDPA MIMO” (“R1-063331”), which was presented and “noted” at 3GPP TSG-RAN WG1
Meeting #47 held November 6-10, 2006 in Riga, Latvia. As evidenced by the Meeting #47
minutes, at least Ericsson ’805 Inventors Dr. Göransson and Dr. Parkvall attended this meeting
and were active in discussions of the relevant subject matter.
a. Nokia’s R1-063331 is Material to Patentability
94. In relevant part, Nokia’s R1-06331 taught use of scheduler restrictions and a “single
retransmission process identifier” and use of “disambiguation data” as a “substream mapping bit.”
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As noted supra ¶ 65, use of scheduler restrictions and a “single retransmission process identifier”
and “disambiguation data” (which is further limited as a “substream mapping bit” in claim 20, for
example) were key features of the patent and claims, as evidenced by the Notice of Allowance.
95. The Nokia R1-063331 proposal begins with the same fundamental guiding
principle underlying the earlier Philips’s R1-061953 proposal. In particular, it advocated that bits
may be reduced if certain scheduler restrictions are adopted, namely, limiting certain processes to
certain substreams: “[i]n case of dual stream, the number of Hybrid-ARQ process information
could require less than 8 bits if certain HARQ processes are limited to certain streams.” Compare
’805 patent, 5:55-61 with 6:10-15.
96. It then taught the use of the recited “single re-transmission process identifier” to be
associated with a set of processes or blocks, and likewise taught the use of a stream mapping bit,
which is one of the disclosed embodiments of “disambiguation data” (see, e.g., ’805 patent, 7:23-
50). For example, after several pages of analysis explaining the merits of reducing bits, Nokia R1-
063331 then has a section devoted to “mitigating” the number of bits needed. Here, it specifically
advocated for the following: “Link the stream # (primary/secondary) to a HARQ-process-set when
rank = 2, (stream # as a MSB of HARQ process indication).” This is substantively identical to the
similarly terse embodiment disclosed at column 7, lines 24-33, of the ’805 patent. In particular,
Nokia’s R1-063331 taught a HARQ process indication associated with a “set” of HARQ processes
(i.e., the recited “single re-transmission process identifier”), and it taught that the most significant
bit (MSB) of that indication would be a “stream number” (indicated by the ‘#’ sign). This
technique is exactly identical to the mathematical formula at line 32 of column 7 of the ’805 patent.
In this embodiment, the most significant bit is the “disambiguation data” of all independent claims
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and indeed the technique recited, for example, in dependent claim 20 where the first and second
disambiguation data are a “substream mapping bit.”
97. Nokia R1-063331 was disclosed at the same meeting as Ericsson’s proposal R1-
063548 and is material to patentability as it shows at least simultaneous invention by another and
thus is relevant to obviousness. In truth, however, the ’805 patent does not enjoy priority to its
Swedish provisional filing for a variety of reasons including that the Swedish filing fails to support
the claim element that the disambiguation data be sent on transmission and retransmission, and
because it fails to teach using disambiguation data while operating in spatial multiplexing mode
as recited. As a consequence of this, Nokia R1-063331 in fact is anticipatory prior art predating
the effective filing data of the ’805 patent by roughly a year.
b. The Ericsson ’805 Inventors Knew of Material Reference

Nokia’s R1-063331 and Failed to Disclose
WG1 Meeting #47), and reviewing meeting minutes.
99. On information and belief, the Ericsson ’805 Inventors’ awareness of material
reference Nokia R1-063331 is further evinced by their own submissions citing directly to this
material reference. Ericsson’s own proposals demonstrate that the Ericsson ’805 Inventors
appreciated and discussed the relevant features in the standards context, yet they knowingly
withheld this reference from the Patent Office in an effort to portray the teachings of using of
scheduler restrictions and a “single retransmission process identifier” and “disambiguation data”
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as a “substream mapping bit” to reduce bit usage as their own invention. As noted supra ¶ 65, use
of scheduler restrictions and a “retransmission process identifier” and “disambiguation data” as a
“substream mapping bit” are material elements to the invention of the ’805 patent, as evidenced
by the Notice of Allowance.
100. As noted above, on or about February 15, 2007, Ericsson ’805 Inventor Göransson
presented Ericsson’s proposal, R1-070494, entitled “HARQ process signaling for UTRA MIMO”
at RAN1 Meeting #47bis. Importantly, Dr. Göransson’s proposal also cites Nokia’s R1-063331
as a reference. In relevant part, Ericsson ’805 Inventor Göransson’s proposal notes in the
introduction that “HARQ operation for MIMO has been discussed in several contributions.
Several different proposals exist, all with its pros and cons. In this contribution we discuss the
different options and look at their properties.”
101. Dr. Göransson then discusses the very features taught by Nokia’s R1-063331 that
the Ericsson ’805 Inventors eventually incorporated into the claims of the ’805 patent and failed
to disclose during prosecution. Dr. Göransson’s proposal notes “by imposing some restrictions
less bits are needed for HAP signaling. Next we will give a few examples of how this can be
done.” Dr. Göransson then states that in dual stream, the number of HARQ processes could require
less than 8 bits if certain HARQ processes are limited to certain streams. These are the same
scheduler restrictions that prompted the use of a single process identifier and which caused the
issue of fallback mode, underlying the use of disambiguation data.
reference Nokia R1-063331 through their active participation in RAN1 regarding the relevant
subject matter and citation of Nokia R1-063331 in Ericsson’s own proposals (such as R1-070494).
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103. On information and belief, the Ericsson ’805 Inventors failed to disclose material
reference Nokia R1-063331 during prosecution of the applications leading to the ’805 patent, with
the intent to deceive the Patent Office by withholding material, non-cumulative prior art, expressly
teaching material claim elements and certainly more relevant than any art of record , and therefore
violated their duty of candor to the Patent Office.
3. The Ericsson ’805 Inventors’ Failure to Disclose Known Material

Reference Samsung’s R1-070130 Violated Their Duty of Candor,
Rendering the ’805 Patent Unenforceable
104. On or about January 10, 2007, Juho Lee, a Samsung representative, sent an email
to the RAN1 Group entitled “Samsung contributions for RAN1#47bis - batch #1.” This email
attached (among other things) a document entitled “R1-070130 Considerations on codewords to
layers mapping for downlink MIMO” (“R1-070130”), which was presented and “noted” at 3GPP
TSG-RAN WG1 Meeting #47bis held January 15-19, 2007 in Sorrento, Italy. As evidenced by
the Meeting #47bis minutes, the Ericsson ’805 Inventors, at least Dr. Göransson and Dr. Parkvall,
attended this meeting and were active in discussions of the relevant subject matter.
a. Samsung’s R1-070130 is Material to Patentability
105. In relevant part, Samsung’s R1-070130 taught explicitly signaling what is known
in the LTE art as a “codeword to layer mapping.” The Ericsson inventors clearly believe that such
subject matter falls within the scope of the recited “disambiguation data” as Ericsson specifically
identifies a codeword to layer mapping bit as satisfying the claim element “disambiguation data”
in their public infringement charts. See Compl. at Ex. 25, Infringement Claim Chart, p. 14 (“which
comprises a single HARQ process number and a swap flag (e.g., the disambiguation data). The
swap flag indicates which transport block is mapped to which codeword”). As noted supra ¶ 65,
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“disambiguation data” is a material element to the claims of the ’805 patent, as evidenced by the
Notice of Allowance.
106. In particular, the Samsung R1-070130 proposal considers “mapping of codewords
to MIMO layers” and advocates that the codeword to layer mapping needs to be explicitly indicated
because of potential errors in UE feedback. “Explicitly indicated” means it should have one or
more bits indicating the mapping.
107. As mentioned above, the ’805 patent should not enjoy priority to the underlying
Swedish provisional filing. Thus, the Samsung R1-070130 proposal is prior art to the ’805 patent
claims and is highly material to patentability as it clearly taught the subject matter which Ericsson
now insists is covered by the material claim element “disambiguation data.”
b. The Ericsson ’805 Inventors Knew of Material Reference

Samsung’s R1-070130 and Failed to Disclose
WG1 Meeting #47bis), and reviewing meeting minutes.
reference Samsung R1-070130, yet they knowingly withheld this reference from the Patent Office
with the intent to deceive the Patent Office by withholding material, non-cumulative prior art,
expressly teaching material claim elements and certainly more relevant than any art of record, and
therefore violated their duty of candor to the Patent Office. As noted supra ¶ 65, use of
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“disambiguation data” is a material element to the claims of the ’805 patent, as evidenced by the
Notice of Allowance.
D. The Ericsson ’805 Inventors’ Failure to Disclose Material Evidence of Co-

Inventorship Violated Their Duty of Candor, Rendering the ’805 Patent
Unenforceable
110. In addition to violating their duty of candor by failing to disclose known material
prior art, the Ericsson ’805 Inventors violated their duty of candor by failing to disclose material
evidence of co-inventorship or derivation. As a critical requirement for obtaining a patent, the
complete and correct disclosure of inventorship is material. The deliberate failure to disclose
information material to inventorship, such as evidence of other co-inventors, with intent to deceive
the Patent Office constitutes inequitable conduct.
1. As Members of the 3rd Generation Partnership Project, the Ericsson

’805 Inventors Engaged in a Collaborative Process with Engineers
from Philips and Other Companies
111. As alleged above, participation in 3GPP working groups, including RAN1, is a
collaborative process. See supra ¶¶ 22-24.
112. As alleged above, two of the three named inventors of the ’805 patent—Dr.
Göransson and Dr. Parkvall—were members of RAN1 and participated in RAN1 on Ericsson’s
behalf during the development of the HSDPA and LTE standards. See supra ¶¶ 85, 98, 108. As
members of RAN1, the Ericsson ’805 Inventors sent emails to the shared listserv reflector,
received emails from the listserv reflector, reviewed and submitted technical proposals, attended
meetings, and reviewed meeting minutes.
113. On August 28, 2006, at 3GPP TSG-RAN WG1 Meeting #46, Dr. Göransson
presented Ericsson’s R1-062259 proposal, which proposed that the standard use separate process
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identifiers for each substream (the opposite of what the ’805 patent claimed as a single process
identifier) rather than a single process identifier and did not propose a reduction in bit usage.
114. At this same meeting, Matthew Baker, a Philips representative, presented Philips’s
R1-061952 and R1-061953 proposals. The materiality of these references is explained in detail
above. See supra ¶¶ 77-82. They taught the fundamental guiding principle of schedule
restrictions. They taught limiting certain processes to certain streams. They taught the use of a
“single process identifier” as recited in the claims.
115. A short two months after Philips’s proposal, the Ericsson ’805 Inventors filed the
Swedish provisional (and later the ’805 patent) using essentially identical language as the Philips
references to describe the exact same features.
 Philips’s R1-061953 further states “[a] reasonable simplification would be to
allocate a subset of the available HARQ processes to each beam – for example,
processes 0 – 4 to the primary beam and processes 5 – 9 to the secondary beam.”
 The ’805 patent further states “[f]or instance, one approach is to allocate a subset
of the available HARQ process identifiers to each substream. For example, re-
transmission process identifiers 0-7 could be associated with the primary
substream, while identifiers 8-15 are used on the secondary.” ’805 patent, 57-61
(color added).
116. Moreover, Dr. Göransson submitted the R1-063548 proposal on behalf of Ericsson
(see supra ¶ 90) which cites Philips’s R1-062485. Importantly, Ericsson R1-063548 proposal
states “[i]t was further agreed to use [Philips’s R1-062485] as a starting point”—expressly stating
that Ericsson’s proposal would build upon Philips’s R1-062485 which restated teachings from
Philips’s R1-061953.
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117. The record thus demonstrates that the Ericsson ’805 Inventors, at a minimum,
collaborated with Philips by building on its teachings and, more accurately, derived the Inventors’
key ideas from Philips but failed to identify any of the co-inventorship facts in addition to failing
to disclose those references.
2. The Ericsson ’805 Inventors’ Failure to Disclose Material Evidence of

Co-Inventorship Violated Their Duty of Candor
119. On information and belief, the Ericsson ’805 Inventors understood their duty to
disclose to the Patent Office information known to them to be material to patentability in
accordance with 37 C.F.R. § 1.56. See supra ¶¶ 73-74. Engineers from Philips and other
companies shared with the Ericsson ’805 Inventors the idea of using scheduler restrictions to
reduce the number of bits two months before the Ericsson ’805 Inventors filed their provisional
(at a time when the Ericsson ’805 Inventors had proposed a different approach from the idea shared
by Philips that would eventually be incorporated into the ’805 patent). These concepts are essential
features expressly recited in the claims of the ’805 patent and applications in the priority chain.
120. The Ericsson ’805 Inventors derived the essential elements of the ’805 patent
claimed invention from—and therefore, at a minimum, collaborated on these elements with—
Matthew Baker of Philips and/or other unnamed collaborators. Clear and convincing evidence,
subject to further discovery, demonstrates this collaboration with joint inventors, including at least
the following:
 The non-disclosed joint inventors shared the ideas of using scheduler restrictions to
reduce the number of bits used, a “retransmission process identifier,” and

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“disambiguation data” at RAN1 meetings that at least two of the three Ericsson
’805 Inventors attended, including 3GPP TSG-RAN WG1 Meetings #46 in August
2006 and #46bis in October 2006.
 The non-disclosed joint inventors described the ideas of using scheduler restrictions
to reduce the number of bits used, a “retransmission process identifier,” and
“disambiguation data” in technical proposals shared with at least two of the three
Ericsson ’805 Inventors beginning in August 2006.
121. As described above, these essential elements were, to the extent they were even
inventive, either the product of a collaboration between engineers from at least Philips and the
Ericsson ’805 Inventors, or the product of the Ericsson ’805 Inventors deriving their invention
from the work of others, portraying the ideas as their own.
122. On information and belief, the Ericsson ’805 Inventors were aware that these
collaborators were joint inventors of the subject matter claimed in the applications for the ’805
patent, yet failed to disclose the co-inventors or the information demonstrating their co-inventor
status (including but not limited to email communications) to the Patent Office in an effort to
deceive the examiner and to obtain a patent assigned to Ericsson alone. This failure to disclose
was material to inventorship and therefore material to patentability. In so doing, the Ericsson ’805
Inventors committed inequitable conduct that renders the ’805 patent unenforceable.
ELEVENTH AFFIRMATIVE DEFENSE

(ENSNAREMENT)
123. On information and belief, and subject to further discovery, Ericsson’s
infringement claims are barred by the doctrine of ensnarement. Ericsson is foreclosed from
asserting infringement under the doctrine of equivalents to the extent the scope of such equivalent
would ensnare prior art.

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TWELFTH AFFIRMATIVE DEFENSE

(UNENFORCEABILITY, ESTOPPEL, AND WAIVER BASED ON
STANDARD-SETTING CONDUCT)
124. Upon information and belief, and subject to the discovery of additional evidence,
Ericsson’s claims are barred by the doctrines of equitable estoppel and waiver.
125. Ericsson made irrevocable commitments to license each patent-in-suit on FRAND
terms. Standard-setting organizations, their members, and even non-member suppliers of products
that support standards, rely on such commitments—including Apple, which is both a member of
standard-setting organizations like ETSI and a supplier of products that support standards
promulgated by ETSI and other organizations. For example, Apple develops and supplies products
with the expectation and understanding that those entities making FRAND commitments will not
seek to disrupt Apple’s development and support efforts by using FRAND-committed patents to
seek exclusionary remedies. By making FRAND commitments, patent holders waive such
remedies, except in the exceptional circumstances where FRAND royalties are not available—
including in district court.
126. Ericsson has broken its FRAND commitments and the rules of standard-setting
because it is using the threat of an exclusion order to try to coerce Apple to accept non-FRAND
licensing rates. Ericsson is doing this despite multiple paths offered by Apple to arrive at a
FRAND rate, including multiple options involving binding rulings by third parties. Due to this
conduct, Ericsson is equitably estopped from asserting its patents to obtain exclusionary remedies,
and Ericsson has also waived its right to assert them in this fashion. Ericsson’s conduct renders
the patents-in-suit unenforceable.
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THIRTEENTH AFFIRMATIVE DEFENSE

(PATENT MISUSE)
127. Ericsson is seeking to use the threat of an exclusion order based on the Asserted
Patents—and all of the harmful effects on competition that result from this threat and would result
from an exclusion order—as a mechanism to coerce Apple to take a license from Ericsson on
unfair and unreasonable terms. This overextension of patent rights constitutes patent misuse, and
further renders Ericsson’s asserted patents unenforceable.
FOURTEENTH AFFIRMATIVE DEFENSE

(UNENFORCEABILITY)
128. Apple has a license (express or implied) to practice one or more of the Asserted
Patents, and/or Apple has authority to practice the patents, or the patents are unenforceable against
Apple, on one or more of the following grounds: estoppel, laches, waiver, unclean hands, and/or
other applicable equitable doctrines. For example, one or more of the Asserted Patents are
unenforceable because Ericsson failed to disclose its intellectual property rights in compliance
with the policies and practices of ETSI and/or 3GPP during standards-setting.
FIFTEENTH AFFIRMATIVE DEFENSE

(INVENTORSHIP)
Ericsson’s claims are unenforceable to the extent that the alleged inventors did not invent the
purported inventions, or to the extent that the actual inventors are not named as inventors.
SIXTEENTH AFFIRMATIVE DEFENSE

(NONJOINDER OF CO-OWNERS OF THE ’355 AND ’805 PATENTS)
Ericsson’s claims with respect to the ’355 and ’805 patents are barred for failure to obtain the
consent and/or participation of co-owners of those patents. In the context of joint inventorship,
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each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter
what their respective contributions. As a matter of substantive patent law, all co-owners of a patent
must consent to join as plaintiffs in an infringement suit. Consequently, one co-owner has the
right to impede the other co-owner's ability to sue infringers by refusing to voluntarily join in such
a suit.
131. Upon information and belief, as described supra, ¶¶ 14-122, Ericsson and the
named inventors of the ’355 and ’805 patents failed to disclose co-inventors of those patents who
worked for Qualcomm, Samsung, Phillips, and/or potentially other companies. Those unnamed
inventors (or, on information and belief, and subject to further discovery, their then-employers,
subject to an agreement of assignment) have a pro rata undivided interest in the ’355 patent and
the ’805 patent as co-inventors. On information and belief, Ericsson initiated this investigation
without the consent and participation of those co-owners. Ericsson’s claims as to the ’355 and
’805 patents are barred for at least this failure to obtain consent.
SEVENTEENTH AFFIRMATIVE DEFENSE

(OTHER DEFENSES)
132. Apple reserves the right to amend its Response to include other affirmative defenses
that Apple may learn of during the course of this Investigation.
PRAYER FOR RELIEF
WHEREFORE, Apple requests that the Commission issue an order:
1. Denying all relief requested in the Complaint;
2. Finding that Apple has not violated Section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. § 1337;
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3. Finding that Apple does not directly infringe or induce infringement of any valid
and enforceable claim of the Asserted Patents, either literally or under the doctrine of equivalents,
and has not otherwise committed any acts in violation of 35 U.S.C. § 271 or 19 U.S.C. § 1337;
4. Finding that the asserted claims of the Asserted Patents are invalid;
5. Finding that there is no domestic industry for the Asserted Patents;
6. Complainants’ demands for relief are barred because of the relief’s effect upon the
public health and welfare, competitive conditions in the United States economy, the production of
like or directly competitive articles in the United States, and United States consumers;
7. Finding that Complainants’ claims as they relate to the Asserted Patents are barred
by reason of equitable doctrines, including equitable estoppel, acquiescence, unclean hands,
prosecution laches, and/or waiver;
8. Awarding Apple its attorneys’ fees and costs incurred in responding to the
Complaint and defending this Investigation;
9. Dismissing the present Complaint and terminating the present Investigation;
10. Finding that it is not in the public interest to grant any relief to Complainants; and
11. Awarding such other and further relief as the Commission deems just and proper.
Respectfully submitted,
Dated: April 4, 2022 /s/ Kate M. Saxton
Mark D. Selwyn
WILMER CUTLER PICKERING HALE AND DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Telephone: (650) 858-6000
mark.selwyn@wilmerhale.com
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Joseph J. Mueller
Timothy D. Syrett
Kate M. Saxton
Annaleigh E. Curtis
60 State Street
Boston, MA 02109
Telephone: (617) 526-6000
joseph.mueller@wilmerhale.com
sarah.frazier@wilmerhale.com
Michael D. Esch
Heath A. Brooks
1875 Pennsylvania Ave., NW
Telephone: (202) 663-6000
michael.esch@wilmerhale.com
Counsel for Respondent Apple Inc
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EXHIBIT A
PUBLIC VERSION
INFORMATION REQUIRED BY 19 C.F.R. § 210.13
Pursuant to Commission Rule 210.13(b), Respondent Apple Inc. (“Apple”) provides the
following information with the sole intention of supplying statistical and other data required by 19
C.F.R. § 210.13(b). Apple specifically denies that any of the supplied data refers or relates to any
unlawful act under Section 337 or otherwise, and Apple specifically denies that its products
infringe any valid asserted claims of the Asserted Patents. Discovery has only recently begun and
is ongoing. This information is preliminary in nature, and Apple reserves the right to amend and/or
supplement this information during discovery.
Apple understands that the Apple iPhones, iPads with cellular connectivity, and Apple
Watches with cellular connectivity listed in Exhibit 9 to the Complaint are accused of infringement
in this Investigation.
During Apple’s fiscal year 2021 over units of the accused Apple iPhone
products were sold in the United States. Apple’s revenue from these products was over
During Apple’s fiscal year 2021 over units of the accused Apple iPad products
with cellular connectivity were sold in the United States. Apple’s revenue from these products
was over .
During Apple’s fiscal year 2021 over units of the accused Apple Watch products
with cellular connectivity were sold in the United States. Apple’s revenue from these products
was over .
Inv. No. 337-TA-1299 1

Exhibit A to Apple, Inc.’s Response to the Complaint and Notice of Investigation
PUBLIC VERSION
Pursuant to Commission Rule 210.13(b), Apple provides the following information with
the sole intention of supplying names and addresses of manufacturers of the accused Apple
iPhones, iPads, and Watches. Apple specifically denies that any of the supplied information refers
or relates to any unlawful act under Section 337 or otherwise, and Apple specifically denies that
its products infringe any valid asserted claim of the Asserted Patents. Apple states that the current
or most recent manufacturers of the accused Apple iPhones, iPads, and Watches include the
following unrelated companies:
Inv. No. 337-TA-1299 2

PUBLIC VERSION
Inv. No. 337-TA-1299 3

PUBLIC VERSION
VERIFICATION
I, Mark Rollins, am a Finance Manager at Apple Inc. I am authorized to make this
verification on behalf of Apple Inc.
I have read RESPONSE OF APPLE INC. TO COMPLAINT AND NOTICE OF
INVESTIGATION and know its contents.
To the best of my knowledge, information, and belief, formed after a reasonable inquiry, I
verify that the facts set forth in this Response (excluding facts related to Ericsson’s confidential
business information, which I am not permitted to see) and accompanying Exhibit A are true and
correct as of the date indicated below. My information and belief may be based on statements,
reports, and records of other Apple employees upon whom I customarily rely.
Dated: April 3, 2022
__________________________
Mark Rollins
Inv. No. 337-TA-1299 4

PUBLIC VERSION
APPENDIX A
PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, DC
Before the Honorable David P. Shaw

Administrative Law Judge
In the Matter of
CERTAIN MOBILE TELEPHONES,

TABLET COMPUTERS WITH CELLULAR
CONNECTIVITY, AND SMART Inv. No. 337-TA-1299
WATCHES WITH CELLULAR
CONNECTIVITY, COMPONENTS
THEREOF, AND PRODUCTS
CONTAINING SAME
APPENDIX A: IDENTIFICATION OF EXEMPLARY PRIOR ART TO THE

ASSERTED PATENTS
PUBLIC VERSION
I. Identification of Exemplary Prior Art to U.S. Patent No. 8,102,805
A. U.S. Patent Publications
1. U.S. Patent No. 7,392,460
2. U.S. Patent No. 6,127,971
3. U.S. Patent No. 8,553,624
4. U.S. Patent No. 7,826,871
5. U.S. Patent No. 7,047,473
6. U.S. Patent No. 7,698,616
7. U.S. Patent No. 7,519,022
8. U.S. Patent No. 7,864,738
9. U.S. Patent No. 8,036,239
10. U.S. Patent No. 8,363,624
11. U.S. Patent No. 8,442,000
12. U.S. Patent No. 8,687,508
13. U.S. Patent No. 10,225,049
14. U.S. Patent No. 10,547,432
15. U.S. Patent No. 7,916,775
16. U.S. Patent No. 7,957,282
17. U.S. Patent No. 8,036,239
18. U.S. Patent No. 8,259,696
19. U.S. Patent No. 8,453,030
20. U.S. Patent No. 9,185,696
21. U.S. Patent No. 8,320,486
22. U.S. Patent No. 8,559,457
1
Inv. No. 337-TA-1299
Appendix A to Apple, Inc.’s Response to the Complaint and Notice of Investigation
PUBLIC VERSION
23. U.S. Patent No. 8,984,362
24. U.S. Patent Application Publication No. 2009/0086657 A1
31. U.S. Patent Application Publication No. 2007/0153672 Al
2
Inv. No. 337-TA-1299
PUBLIC VERSION
B. Foreign Patent Publications
1. European Patent Application No. EP 1404048 A1
3. European Patent Application No. EP 1672818A1
10. International Publication No. WO02/087108 A1
3
Inv. No. 337-TA-1299
PUBLIC VERSION
20. International Publication No. WO 2008/125923 A1
C. Non-Patent Publications
1. Dekorsy, “A Cutoff Rate based Cross-layer Metric for MIMO- HARQ

Transmission,” 2005 IEEE 16th International Symposium on Personal,
Indoor and Mobile Radio Communications, Sept. 11-14, 2005, pp. 2166-
2170
2. Ajib, et al., “Data Link Control for Multiple Input Multiple Output
Wireless Systems,” Wireless Telecommunications Symposium, Apr. 28-
30, 2005, pp. 112-119
3. Zheng, et al., “Multiple ARQ Processes for MIMO Systems,” EURASIP

Journal on Applied Signal Processing, Jan. 2004, pp. 772-782
4. Kolding et al., “Performance Aspects of WCDMA Systems with High-

Speed Downlink Packet Access,” (HSDPA), 2002
5. Das et al., “Design and Performance of Down Link Shared Control

Channel For HSDPA,” 2002
6. Das et al., “Adaptive, Asynchronous Incremental Redundancy (A2IR) with

Fixed Transmission Time Intervals (TTI) for HSDPA,” 2002
7. Bonghoe Kim and Donghee Shim, “An HARQ scheme with antenna
switching for V-BLAST system,” Systemics, Cybernetics and Informatics,
Vol. 2 No. 6.
8. Alberto Lopez and Xiaodong Wang, “Effect of MIMO Wireless Channels

on TCP,” 2004
9. Zhihong Ding, “ARQ Techniques for MIMO Communication Systems,

Theses and Dissertations,” July 7, 2006
10. Mohamad Assaad and Djamal Zeghlache, “Comparison between MIMO

Techniques in a UMTS-HSDPA System,” Aug. 30-Sept. 2, 2004
4
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PUBLIC VERSION
11. David Haccoun and Jean-Francois Frigon, “Data Link Control for
Multiple Input Multiple Output Wireless Systems,” 2005
12. Mi-Kung Oh et al., “Efficient Hybrid ARQ with Space-Time Coding and
Low-Complexity Decoding,” 2004
13. Wessam Ajib et al., “Efficient Layer Transmission Strategy for MIMO
Wireless Systems,” 2005
14. Akinori Nakajimi et al., “Throughput of Turbo Coded Hybrid ARQ Using
Single-Carrier MIMO Multiplexing,” 2005
15. Eko N. Onggosanusi et al., “Hybrid ARQ Transmission and Combining

for MIMO Systems,” 2003
16. R1-061323, 3GPP TSG RAN WG1 Meeting No. 45, Shanghai, China,
May 8-12, 2006
17. R1-061952, 3GPP TSG RAN WG1 Meeting No. 46, Tallinn, Estonia,
Aug. 28-Sept. 1, 2006
Aug. 28-Sept. 1, 2006
Aug. 28-Sept. 1, 2006
Aug. 28-Sept. 1, 2006
21. R1-063331, 3GPP TSG RAN WG1 Meeting No. 47, Riga, Latvia, Nov. 6-
10, 2006
22. R1-061953, 3GPP TSG RAN WG1 Meeting No. 46m Tallinn, Estonia,
Aug. 28-Sept. 1, 2006
23. R1-062440, 3GPP TSG-RAN WG1 No. 46, Tallin, Estonia, Aug. 28-Sept.
1, 2006
24. R2-063211, TSG-RAN WG2 Meeting No. 56, Riga, Latvia, Nov. 6-10,
2006
25. R2-070289, 3GPP TSG RAN WG2 Meeting No. 56bis, Sorrento, Italy,
Jan. 15-19, 2007
26. R1-051307, TSG-RAN WG1 #43, Seoul, Korea, Nov. 7-11, 2005
5
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PUBLIC VERSION
27. R1-062921, 3GPP TSG-RAN WG1 #46-bis, Seoul, Korea, Oct. 9-13,
2006
28. R1-062570, 3GPP TSG RAN WG1 #46bis, Seoul, Korea, Oct. 9-13, 2006
29. R1-062573, 3GPP TSG RAN WG1 #46-bis, Seoul, Korea, Oct. 9-13, 2006
30. R2-070194, 3GPP TSG-RAN WG2 meeting #56-bis, Sorrento, Italy, Jan.
15-19, 2007
31. R2-070192, 3GPP TSG-RAN WG2 Meeting #56-bis, Sorrento, Italy, Jan.
15-19, 2007
32. R2-070193, 23GPP TSG-RAN WG2 Meeting #56-bis, Sorrento, Italy,

Jan. 15-19, 2007
33. R2-070241, 3GPP TSG-RAN2 Meeting #56bis, Sorrento, Italy, Jan. 15-
19, 2007
34. R2-070387, 3GPP TSG-RAN WG1 #47bis, Sorrento, Italy, Jan. 15-19,
2007
35. R2-070392, 23GPP TSG RAN WG2 Meeting #56bis, Sorrento, Italy, Jan.
15-29, 2007
II. Identification of Exemplary Prior Art to U.S. Patent No. 9,532,355
1. U.S. Patent No. 7,675,852
2. U.S. Patent No. 7,680,507
3. U.S. Patent No. 9,363,790
4. U.S. Patent No. 8,457,093
5. U.S. Patent No. 7,809,373
6. U.S. Patent No. 8,144,735
7. U.S. Patent No. 8,406,767
8. U.S. Patent No. 8,526,962
9. U.S. Patent No. 8,705,441
6
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PUBLIC VERSION
10. U.S. Patent No. 8,817,737
11. U.S. Patent No. 8,830,915
12. U.S. Patent No. 8,830,945
13. U.S. Patent No. 10,986,625
7
Inv. No. 337-TA-1299
PUBLIC VERSION
2. European Patent Application No. EP 2158702 B1
3. Japanese Patent Application No. 2006/136023 A
4. Korean Patent Publication No. KR2008112062 A
1. Samsung, “Draft text proposal capturing agreements on system

information,” 3GPP TSG-RAN2 Meeting No. 58, Tcloc R2-072205,
Kobe, Japan, May 7-11, 2007
2. R2-071762, 3GPP TSG-RAN WG2 No. 58, Kobe Japan, May 7-11, 2007
3. R2-071911, 3GPP TSG-RAN WG2 Meeting No. 58, Kobe, Japan, May 7-
11, 2007
4. R2-072183, 3GPP TSG-RAN WG2 Meeting No. 58, Kobe, Japan, May 7-
11, 2007
5. ETSI TS 125 301 V7.1.0, Universal Mobile Telecommunications System

(UMTS); Radio interface protocol architecture (3GPP TS 25.301 Version
7.1.0 Release 7), Mar. 2007
6. 3GPP TS 44.018 V7.8.0, 3rd Generation Partnership Project; Technical

Specification Group GSM/EDGE Radio Access Network; Mobile radio
interface layer 3 specification; Radio Resource Control (RRC) protocol
(Release 7), Mar. 2007
7. R1-071118, 3GPP TSG-RAN WG1 No. 48, St. Louis, USA, Feb. 12-16,
2007
8. R1-071297, 3GPP TSG-RAN WG1 No. 48, St. Julian’s Malta, Mar. 26-
30, 2007
9. R2-06DL, TSG-RAN WG2, Summary No. 3: DL Scheduling, Jan. 31,

2007
10. R2-070168, 3GPP TSG-RAN WG2 Meeting No. 56bis, Sorrento, Italy,
Jan. 15-19, 2007
11. R2-071204, 3GPP TSG-RAN WG2 No. 57bis, St. Julians, Malta, Mar. 26-
30, 2007
12. R2-072186, 3GPP TSG-RAN WG2 No. 58, Kobe, Japan, May 7-11, 2007
8
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PUBLIC VERSION
13. R2-072612, 3GPP TSG-RAN WG2 No. 58bis, Orlando, USA, Jun. 25-29,
2007
2007
2007
16. R2-073236, 3GPP TSG-RAN WG2 No. 59, Athens, Greece, Aug. 20-24,
2007
17. TSG-RAN WG2, R2-Email, R2-06DL Sched Email Summary V.1, Jan.
24, 2007
18. R1-062043, 3GPP TSG-RAN WG1 No. 46, Tallinn, Estonia, Aug. 28-
Sept. 1, 2006
III. Identification of Exemplary Prior Art to U.S. Patent No. 11,139,872
1. U.S. Patent No. 10,193,600
2. U.S. Patent No. 8,891,676
3. U.S. Patent No. 9,350,435
4. U.S. Patent No. 8,971,437
5. U.S. Patent No. 8,976,884
6. U.S. Patent No. 9,667,328
7. U.S. Patent No. 10,181,884
8. U.S. Patent No. 10,035,576
9. U.S. Patent No. 10,045,455
10. U.S. Patent No. 9,537,552
11. U.S. Patent No. 10,498,509
12. U.S. Patent No. 8,942,302
13. U.S. Patent No. 9,515,711
9
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PUBLIC VERSION
14. U.S. Patent No. 10,588,138
15. U.S. Patent No. 10,224,996
16. U.S. Patent No. 10,454,556
17. U.S. Patent No. 9,893,777
18. U.S. Patent No. 10,454,640
19. U.S. Patent No. 8,325,841
20. U.S. Patent No. 8,761,086
21. U.S. Patent No. 8,923,427
22. U.S. Patent No. 9,344,167
23. U.S. Patent No. 9,893,789
24. U.S. Patent No. 9,954,589
25. U.S. Patent No. 10,411,773
26. U.S. Patent No. 10,608,715
27. U.S. Patent No. 11,139,872
28. U.S. Patent No. 8,913,682
29. U.S. Patent No. 9,203,491
30. U.S. Patent No. 9,203,591
31. U.S. Patent No. 9,813,123
32. U.S. Patent No. 9,838,101
33. U.S. Patent No. 10,033,507
34. U.S. Patent No. 10,225,054
35. U.S. Patent No. 10,284,266
36. U.S. Patent No. 8,811,353
10
Inv. No. 337-TA-1299
PUBLIC VERSION
11
Inv. No. 337-TA-1299
PUBLIC VERSION
1. European Patent Application EP 3111598 B1
2. European Patent Application EP 3183823 B1
3. Japanese Patent Application 2012518914 1A
4. Russian Patent Application RU2433550 C2
5. Russian Patent Application RU2011140068 A
1. R1-144048, 3GPP TSG RAN WG1 Meeting No. 78bis, Ljubljana,

Slovenia, Oct. 6-10, 2014
2. R1-144911, 3GPP TSG RAN WG1 Meeting No. 79, San Francisco, Nov.
17-21, 2014
3. R1-144923, 3GPP TSG RAN WG1 Meeting No. 79, San Francisco, Nov.
12-21, 2014
4. Xie et al., “A Limited Feedback Scheme for 3D Multiuser MIMO based

on Kronecker Product Codebook,” 2013 IEEE 24th International
12
Inv. No. 337-TA-1299
PUBLIC VERSION
Symposium on Personal, Indoor and Mobile Radio Communications:

Fundamentals and PHY Track
5. Han et al., “Design of double codebook based on 3D dual-polarized

channel for multiuser MIMO system,” EURASIP Journal on Advances in
Signal Processing 2014
6. Lee et al., “Antenna Grouping based Feedback Compression for FDD-

based Massive MIMO Systems,” IEEE Transactions on Communications,
Jul. 21, 2015
7. Marzetta, “Noncooperative Cellular Wireless with Unlimited Numbers of

Base Station Antennas,” IEEE Transactions on Wireless Communications,
Vol. 9, No. 11, November, 2010
8. Pun et al., “Codebook-Based Quantized MIMO Feedback for Closed-Loop

Transmit Precoding,” IEEE 2009
9. Vook et al., “Product Codebook Feedback for Massive MIMO with Cross-
Polarized 2D Antenna Arrays,” 2014 IEEE 25th International Symposium
on Personal, Indoor and Mobile Radio Communications
10. R1-062483, 3GPP TSG RAN WG1 Meeting No. 46bis, Seoul, South
Korea, Oct. 9-13, 2006
11. 3GPP TS 36.213 V10.1.0, 3rd Generation Partnership Product; Technical

Specification Group Radio Access Network; Evolved Universal Terrestrial
Radio Access (E-UTRA); Physical layer procedures (Release 10), 2011


14. Alameldeen et al., “Frequent Pattern Compression: A Significance-Based

Compression Scheme for L2 Caches,” Computer Sciences Department,
Technical Report No. 1500, May 2004
15. Dahlman et al., “4G LTE/LTE-Advanced for Mobile Broadband,” 2011
16. R1-157203, 3GPP TSG-RAN WG1 Meeting No. 83, Anaheim, USA,
Nov. 15-22, 2015
13
Inv. No. 337-TA-1299
PUBLIC VERSION
17. R1-1708687, 3GPP TSG-RAN WG1 Meeting No. 89, Hangzhou, China,
May 15-19, 2017
18. R1-1714283, 3GPP TSG-RAN WG1 Meeting No. 90, Prague, Czech
Republic, Aug. 21-25, 2017
19. R1-1718736, 3GP TSG RAN WG1 Meeting No. 90bis, Prague, CZ, Oct.
9-13, 2017
20. R1-157490, 3GPP TSG RAN WG1 Meeting No. 83, Anaheim, USA, Nov.
15-22, 2015
21. R1-1717617, 3GPP TSG RAN WG1 Meeting No. 90bis, Prague, P.R.
Czechia, Oct. 9-13, 2017
22. Sesia et al., “LTE The UMTS Long Term Evolution from Theory to
Practice,” (2d ed. 2011)
23. Cover et al., “Elements of Information Theory,” (2d ed. 2006)
24. R1-112420, 3GPP TSG-RAN WG1 Meeting No. 66, Athens, Greece,
Aug. 26, 2011
25. R1-074780, 3GPP TSG RAN WG1 Meeting No. 51, Jeju, Korea,
November 5-9, 2007
IV. Identification of Exemplary Prior Art to U.S. Patent No. 10,425,817
1. U.S. Patent No. 9,215,547
2. U.S. Patent No. 10,694,376
3. U.S. Patent No. 8,370,643
4. U.S. Patent No. 10,341,103
5. U.S. Patent No. 9,942,034
6. U.S. Patent No. 8,667,596
7. U.S. Patent No. 9,137,205
8. U.S. Patent No. 9,077,543
9. U.S. Patent No. 9,338,164

14
Inv. No. 337-TA-1299
PUBLIC VERSION
10. U.S. Patent No. 7,715,430
11. U.S. Patent Application Publication No. 2006/0291403 Al
22. U.S. Patent Application (Provisional) No. 62/414517 A1
15
Inv. No. 337-TA-1299
PUBLIC VERSION
41. U.S. Patent Application No. 2016/0239686
1. International Publication No. WO 2018208949 A
2. Chinese Patent Application No. CN1315344C
4. International Publication No. WO 2005/099123 Al
1. Hiltunen et al., “5G Enablers for Network and System Security and
Resilience,” Nov. 3, 2016
2. Khan et al., “Improving Air Interface User Privacy in Mobile

Technology,” Apr. 13, 2015
3. Ginzboorg et al., “Privacy of the long-term identities in cellular

networks,” Jun. 18, 2016
4. Muthana et al., “Analysis of User Identity Privacy in LTE and Proposed

Solution,” I.J. Computer Network and Information Security, Jan. 2017
5. Jimenez, “Encrypting IMSI to improve privacy in 5G Networks,” Degree

Project in Electrical Engineering, Second Cycle, 30 Credits, Stockholm,
Sweden 2017
16
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6. Khan et al., “Trashing IMSI Catchers in Mobile Networks,” WiSec ’17,

Jul. 18-20, 2017
7. Khan et al., “Concealing IMSI in 5G Network Using Identity Based

Encryption,” Aug. 6, 2017
8. Fouque et al., “Achieving Better Privacy for the 3GPP AKA Protocol,”
Proceedings on Privacy Enhancing Technologies, 2016
9. Van den Broek et al., “Defeating IMSI Catchers,” Oct. 12-16, 2015
10. Ghafghazi et al., “Enhancing the Privacy of LTE-based Public Safety

Networks,” 13th Annual IEEE Workshop on Wireless Local Networks,
WLN, Edmunton, Canada, 2014
11. Norrman et al., “Protecting IMSI and User Privacy in 5G Networks,” Jan.
2016
12. S3-171781, 3GGP TSG SA WG3 (Security) Meeting No. 88, Dali, China,
Aug. 7-11, 2017
13. S3-180326, 3GPP TSG SA WG3 (Security) Meeting No. 90, Gothenburg,
Jan. 22-26, 2018
14. S3-180331, 3GPP TSG SA WG3 (Security) Meeting No. 90, Gothenburg
(Sweden), Jan. 22-26, 2018
15. S3-170885, 3GPP TSG SA WG3 (Security) Meeting No. 86Bis, Busan,
Korea, Mar. 27-31
16. S3-171101, 3GPP TSG SA WG3 (Security) Meeting No. 87, Ljubljana
(Slovenia), May 15-19, 2017
17. S3-173140, 3GPP TSG SA WG3 (Security) Meeting No. 89, Reno, NV,
USA, Nov. 27-Dec. 1, 2017
Jan. 22-26, 2018
19. S3-171783, 3GPP TSG SA WG3 (Security) Meeting No. 88, Dali, China
Aug. 7-11, 2017
20. S3-171786, 3GPP TSG SA WG3 (Security) Meeting No. 88, Dali, China,
Aug. 7-11, 2017
USA, Nov. 27-Dec. 1, 2017
17
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USA, Nov. 27-Dec. 1, 2017
USA, Nov. 27-Dec. 1, 2017
24. S3-173278 3GPP TSG SA WG3 (Security) Meeting No. 89, Reno, NV,
USA, Nov. 27-Dec. 1, 2017
USA, Nov. 27-Dec. 1, 2017
Sweden, Jan. 22-26, 2018
27. Tang, “Public Key Encryption Schemes Supporting Equality Test with
Authorization of Different Granularity,” Int. J. Applied Cryptography,
2009
28. Cooper et al., “Internet X.509 Public Key Infrastructure Certificate and
Certificate Revocation List (CRL) Profile,” May 2008
29. Alomari et al., “A Framework for GPU-accelerated AES-XTS Encryption

in Mobile Devices,” TENCON, 2011
30. Hamalainen et al., “Review of Hardware Architectures for Advanced

Encryption Standard Implementations Considering Wireless Sensor
Networks,” 2017
31. Toldinas et al., “Energy Efficiency Comparison with Cipher Strength of

AES and Rijndael Cryptographic Algorithms in Mobile Devices,”
Electronics and Electrical Engineering, ISSN 1392-1215 – 2011, No. 2
(108), Nov. 16, 2010
32. Wanpeng et al., “Adaptive and Dynamic Mobile Phone Data Encryption
Method,” China Communications, 2014
33. Gutub et al., “Hybrid Crypto Hardware Utilizing Symmetric-Key &

Public-Key Cryptosystems,” 2012 International Conference on Advanced
Computer Science Applications and Techniques, IEEE 2013
34. Salama et al., “Tradeoffs between Energy Consumption and Security of

Symmetric Encryption Algorithms,” International Journal of Computer
Theory and Engineering, Vol. 1, No. 3, Aug. 2009
18
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35. Third Generation Partnership Project (3GPP™) Meeting Report for TSG
SA WG3 meeting: 86 Sophia Antipolis, France, Jun. 2-Oct. 2, 2017
SA WG3 meeting: 87 Ljubljana, Slovenia, May 15-19, 2017
37. Third Generation Partnership Project (3GPP™) DRAFT Meeting Report

for TSG SA WG3 Meeting No. 88 Dali, China, Aug. 7-Nov. 8, 2017
SA WG3 Meeting No. 89 Reno, USA, Nov. 27-Dec. 1, 2017
SA WG3 Meeting No. 90Bis, San Diego, USA, Feb. 26-Mar. 2, 2018
SA WG3 Meeting No. 91, Belgrade, Serbia, Apr. 16-20, 2018
SA3 No. 91Bis, La Jolla, USA, May 21-25, 2018
SA WG3 Meeting No. 90, Gothenburg, Sweden, Jan. 22-26, 2018
43. S3-171778, 3GPP TSG SA WG3 (Security) Meeting No. 88, Dali, China,
Aug. 7-11, 2018

Specification Group Services and System Aspects; System Architecture
for the 5G System; Stage 2 (Release 15), July 2017
45. 3GPP TR 33.899 V1.1.0, 3rd Generation Partnership Project; Technical

Specification Group Services and System Aspects; Study on the security
aspects of the next generation system (Release 14), Mar. 2017

aspects of the next generation system (Release 14), Jun. 2017
47. S3-161856, 3GPP TSG-SA3 Meeting No. 85, Santa Cruz de Tenerife,
Spain, Nov. 7-11, 2016

Specification Group Services and System Aspects; System Architecture
for the 5G System; Stage 2 (Release 15), Jun. 2017
19
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Specification Group Services and System Aspects; Generic Authentication
Architecture (GAA); Generic Bootstrapping Architecture (GBA) (Release
15), Jun. 2017
50. Ahola et al., “5G Enablers for Network and System Security Resilience,”
Jan. 5, 2017
51. S3-180824, 3GPP TSB SA WG3 (Security) Meeting No. 90Bis, San
Diego, USA, Feb. 26 - Mar. 2, 2018
52. Search Report, International Application No.PCT/EP2018/069432, July

17, 2018
53. S3-180767, 3GPP TSG SA WG3 (Security) Meeting No. 90Bis, San
Diego, USA, Feb. 26 - Mar. 2, 2018
54. Simon et al., “The EAP-TLS Authentication Protocol,” Mar. 2008
55. PCT Written Opinion of the International Searching Authority,

International application no. PCT/EP2018069432, July 17, 2018
56. Farhat et al., “Private Identification, Authentication and Key Agreement

Protocol with Security Mode Setup,” Jan. 25, 2011

Specification Group Services and System Aspects; Security Architecture
and Procedures for 5G System (Release 15), May 2017

aspects of the next generation system (Release 14), Aug. 2016
59. S3-160958, 3GPP TSG SA WG3 (Security) Meeting No. 84, Chennai,
India, July 25-29, 2016
60. S3-160962, 3GPP TSG SA WG3 (Security) Meeting No. 84, Chennai,
India, July 25-29, 2016
61. S3-161367, 3GPP TSG SA WG3 (Security) Meeting No. 84b, San Diego,
USA, Sept. 27-29, 2016
62. S3-161387, 3GPP TSG SA WG3 (Security) Adhoc Meeting on FS_NSA,

San Diego, USA, Sept. 27-29, 2016

20
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aspects of the next generation system (Release 14), Aug. 2016

aspects of the next generation system (Release 14), Oct. 2016

69. S3-171362, 3GPP TSG SA WG3 (Security) Meeting No. 87, Ljubljana,
Slovenia, May 15-19, 2017
70. Chris J. Mitchell, The Security of the GSM Air Interface Protocol, Aug.
18, 2001
71. 3GPP TSG RAN WG1 Meeting #47bis, R1070139, Considerations on

codewords to layers mapping for downlink MIMO, Sorrento, Italy, Jan.
15-19, 2007
72. 3GPP TSG RAN WG1 #47bis, R1-070235, Codeword to layer mapping
for SU-MIMO, Sorrento, Italy, Jan. 15-19, 2007
73. 3GPP TSG RAN WG1 47bis, R1-070269, Multi-Codeword Principles for
E-UTRA MIMO, Sorrento, Italy, Jan. 15-19, 2007
74. 3GPP TSG RAN WG1 Meeting #47bis, R1-070385, Layer to Codeword
mapping for DL SU-MIMO, Sorrento, Italy, Jan. 15-19, 2007
75. 3GPP TSG-RAN WG1 #50bis, R1-074371, MIMO Related DL Control

Signalling, Shanghai, China, Oct. 8-12, 2007
76. 3GPP TSG RAN1#50, R1-073366, HARQ Timing, Athens, Greece, Aug.
20-14, 2007
77. TSG-RAN WG1 #50, R1-073731, On the number of hybrid ARQ

processes in LTE, Athens, Greece, Aug. 20-24, 2007
78. 3GPP TSG-RAN WG1 #50, R1-073270, Number of HARQ processes,

Athens, Greece, Aug. 20-24, 2007
21
Inv. No. 337-TA-1299
PUBLIC VERSION
79. 3GPP TSG-RAN WG1 Meeting #50, R1-073673, On the Number of

HARQ-processes, Athens, Greece, Aug. 20-24, 2007
80. 3GPP TSG-RAN WG1 Meeting #50, R1-073841, Summary of the

Number of HARQ processes, Athens, Greece, Aug. 20-24, 2007
81. Jimenez et al., “Subscription Identifier Privacy in 5G Systems,” 2017

International Conference on Selected Topics in Mobile and Wireless
Networking, 2017
82. Jimenez, “Encrypting IMSI to improve privacy in 5G Networks,” 2017
22
Inv. No. 337-TA-1299
PUBLIC VERSION
CERTAIN MOBILE TELEPHONES, TABLET COMPUTERS WITH CELLULAR

CONNECTIVITY, AND SMART WATCHES WITH CELLULAR CONNECTIVITY,
COMPONENTS THEREOF, AND PRODUCTS CONTAINING SAME
Inv. No. 337-TA-1299
CERTIFICATE OF SERVICE
I, Lanta M. Chase, hereby certify that true and correct copies of the foregoing, PUBLIC
VERSION OF RESPONSE OF APPLE INC. TO COMPLAINT AND NOTICE OF
INVESTIGATION, have been filed and served on this 14th day of April 2022, on the
following in the manner indicated:
The Honorable Lisa R. Barton  Via Hand Delivery (2 Copies)
Secretary  Via Overnight Delivery
U.S. International Trade Commission  Via Facsimile
500 E Street, SW, Room 112  Via Electronic Filing (EDIS)
The Honorable David P. Shaw  Via Hand Delivery (2 Copies)

Administrative Law Judge  Via Overnight Delivery
U.S. International Trade Commission  Via Facsimile
500 E Street, SW, Room 317  Via Electronic Mail
Washington, DC 20436 Shaw337@usitc.gov
Andrew Beverina, Esq.  Via Hand Delivery (2 Copies)

Sarah Sladic, Esq.  Via Overnight Delivery
Office of Unfair Import Investigations  Via Facsimile
U.S. International Trade Commission  Via Electronic Mail and Box
500 E Street, S.W., Room 401 Andrew.beverina@usitc.gov
Washington, DC 20436 Sarah.sladic@usitc.gov
Josh W. Budwin  Via Hand Delivery (2 Copies)

McKool Smith, P.C.  Via Overnight Delivery
303 Colorado Street, Suite 2100  Via Facsimile
Austin, Texas 78701  Via Electronic Mail
Ericsson_AppleITC@McKoolSmith.com
Counsel for Complainants
/s/ Lanta M. Chase

Lanta M. Chase

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PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION

Before the Honorable David P. Shaw

CERTAIN MOBILE TELEPHONES,

RESPONSE OF APPLE INC. TO COMPLAINT AND NOTICE OF INVESTIGATION

RESPONDENT COUNSEL FOR APPLE INC.

Apple Inc. Mark D. Selwyn

Exhibit No. Description

Appendix No. Description

Pursuant to 19 C.F.R. § 210.13, Respondent Apple Inc. (“Apple” or “Respondent”), by and

1930 as Amended (“Complaint”), filed by Ericsson Inc. and Telefonaktiebolaget LM Ericsson

(“Ericsson” or “Complainants”) on January 17, 2022, as amended and supplemented on January

modifies its Complaint or contentions.

a. Ericsson’s Complaint represents another example of Ericsson’s utter disregard of

to cellular standards (“SEPs”) promulgated by the European Telecommunications Standards

preliminary relief before a full merits assessment.

courts from Waco to Bogota.

patent royalties on SEPs.

Michal B. G. Froman to Hon. Irving A. Williamson, U.S. ITC at 3, available at

https://ustr.gov/sites/default/files/08032013%20Letter_1.PDF. Ericsson’s pursuit of exclusionary

remedies on FRAND-committed patents in this Investigation—despite Apple’s currently-pending

Apple—runs directly counter to the public interest.

e. Indeed, Ericsson has previously agreed that such exclusionary relief is

Workshop, Project No. P111204 (Aug. 5, 2011), available at

I. INTRODUCTION AND NEGOTIATION HISTORY1

remaining allegations set forth in Paragraph 1.

and, on that basis, denies them.

products. Apple denies any remaining allegations set forth in Paragraph 3.

set forth in Paragraph 4.

5. To the extent that Paragraph 5 contains conclusions of law, no response is

without limitation, the relief requested in Paragraph 6.

contained in Paragraph 8 and, on that basis, denies them.

9. Apple admits that Exhibit 11 to the Complaint purports to be “Ericsson’s FRAND

Telefonaktiebolaget LM Ericsson v. Apple Inc., 2:21-cv-00376-JRG, in the Eastern District of

set forth in Paragraph 12.

Apple Inc., No. 2:21-cv-376 (E.D. Tex. Oct. 4, 2021).

II. THE PARTIES

16. On information and belief, Telefonaktiebolaget LM Ericsson is a corporation

Paragraph 16 and, on that basis, denies them.

Drive, Plano, Texas 75024.

the allegations contained in Paragraph 18 and, on that basis, denies them.

the allegations contained in Paragraph 19 and, on that basis, denies them.

and characterizations in Paragraph 20.

III. THE ACCUSED PRODUCTS

26. To the extent that Paragraph 26 contains conclusions of law, no response is

characterizations in Paragraph 26.

IV. STATEMENT OF RELATED CASES

A. Litigation Related to the Asserted Patents

B. Other Litigation Between the Patents

Patent and Trademark Appeals Board proceedings:

i) Apple Inc. v. Ericsson Inc., IPR2015-01905

ii) Apple Inc. v. Ericsson Inc., IPR2015-01904

iii) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2015-01919

iv) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00004

v) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00050

vi) Apple Inc. v. Ericsson Inc., IPR2016-00108

vii) Apple Inc. v. Ericsson Inc., IPR2016-00107

viii) Apple Inc. v. Ericsson Inc., IPR2016-00106