United States District Court, S.D. California
WI-LAN INC.; WI-LAN USA, INC.; and WI-LAN LABS, INC., Plaintiffs,
LG ELECTRONICS, INC.; LG ELECTRONICS U.S.A., INC; and LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants.
ORDER DENYING DEFENDANTS' MOTION FOR SANCTIONS
[DOC. NO. 162.]
MARILYN L. HUFF, DISTRICT JUDGE
September 13, 2019, Defendants LG Electronics, Inc., LG
Electronics U.S.A., Inc., and LG Electronics Mobilecomm
U.S.A., Inc. filed a motion for sanctions. (Doc. No. 162.) On
October 1, 2019, Plaintiffs Wi-LAN Inc., Wi-LAN USA, Inc.,
and Wi-LAN Labs, Inc. filed a response in opposition to
LG's motion for sanctions. (Doc. No. 197.) On October 1,
2019, the court took the matter under submission. (Doc. No.
200.) On October 8, 2019, LG filed its reply. (Doc. No. 225.)
For the reasons below, the Court denies LG's motion for
11, 2018, Wi-LAN filed a complaint for patent infringement
against LG, alleging infringement of U.S. Patent Nos. 8, 787,
924, 8, 867, 351, 9, 226, 320, and 9, 497, 743. (Doc. No. 1.)
Specifically, Wi-LAN alleges that LG's wireless
communication products that are compliant with the 3rd
Generation Partnership Project 4G LTE standard directly
infringe the patents-in-suit. (Id. ¶¶ 37,
40, 53, 66, 79.)
October 10, 2018, LG filed an answer to Wi-LAN's
complaint along with counterclaims for: (1) declaratory
judgments of non-infringement and invalidity of the
patents-in-suit; (2) declaratory judgment of unenforceability
for failure to disclose to standard setting organizations;
(3) declaratory judgment of unenforceability of the '351
patent; (4) declaratory judgment that LG is entitled to
license the patents-in-suit on FRAND/RAND terms and
conditions; (5) breach of contract; (6) monopolization and
attempted monopolization in violation of section 2 of the
Sherman Act; and (7) unfair business practices under
California Business and Profession Code § 17200 et
seq. (Doc. No. 17.) On April 12, 2019, the Court granted
in part and denied in part Wi-LAN's motions to dismiss
LG's counterclaims, and the Court dismissed LG's
counterclaim for a declaratory judgment of unenforceability
of the '351 patent due to infectious unenforceability
with prejudice. (Doc. No. 79.)
Sheldon Gilbert is one of the named inventors of the '924
patent and the '743 patent. See U.S. Patent No.
8, 787, 924 (filed Jul. 22, 2014); U.S. Patent No. 9, 497,
743 (filed Nov. 15, 2016). Mr. Gilbert is also one of the
founders of Ensemble Communications Inc., the prior owner of
the patents-in-suit. (Doc. No. 211, Ex. A at 14-15.) On May
10, 1999, Mr. Gilbert assigned all of his rights to the
'518 application and all continuations thereof, which
would include the '924 patent and the '743 patent, to
Ensemble. (Doc. No. 162-2, Ex. 1.)
March 13, 2019, LG subpoenaed Mr. Gilbert to testify at a
deposition in this action. (Doc. No. 162-5, Ex. 4.) Mr.
Gilbert's deposition took place on August 29, 2019 in
Palo Alto, California. (Doc. No. 211, Ex. A.) Mr. Gilbert
attended the deposition unrepresented by counsel.
(Id. at 47.) During, Mr. Gilbert's deposition,
the follow exchanges occurred:
[THE WITNESS:] A. You know, I want to -- all right. I want to
interrupt the deposition for a minute if I could. So Wi-LAN
counsel mentioned something to me during a break that I may
be accused of wrongdoing in this case; is that correct?
[MS. SAND FOR LG:] Q. All right. So you spoke with
Wi-LAN's counsel during the break?
A. He spoke to me in the bathroom, yes
Q. And what did he say to you?
A. He said that I might be accused of fraud in this case.
MR. ENGER [FOR WI-LAN]: That's correct. LG has accused
you of fraud in this case.
MR. ENGER: LG has accused you of fraud in this case.
BY MS. SAND:
Q. Did he tell you anything more about this?
Q. Did he give you any specifics about it?
Q. What did you say in response to him?
A. “Thank you for letting me know.” Q. Okay.
A. Is that -- is that correct? Am I being accused of
something in this case?
MS. SAND: Can we go off record for a bit?
MR. ENGER: Sure.
THE VIDEOGRAPHER: Going off record at 11:17 a.m.
(Off the record discussion.)
(Off record: 11:17 a.m.)
(On record: 12:06 p.m.)
THE VIDEOGRAPHER: On record at 12:06 p.m.
BY MS. SAND:
Q. All right. Now, during our previous break, Wi-LAN's
counsel talked to you during the break, I understand, and
told you that ...