Lenovo, Motorola End Suits By Wi-LAN Over 4G Tech

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">Tiffany Hu Law360, New York (January 26, 2018, 1:57 PM EST) -- Lenovo and Motorola have agreed with Wi-LAN Inc. to dismiss the Canadian technology development and licensing company’s infringement suit over fourth-generation wireless technology patents, according to a filing in California federal court.

U.S. District Judge Roger T. Benitez on Wednesday approved a same-day joint motion for dismissal by Wi-LAN, Lenovo Group Ltd. and its subsidiary Motorola Mobility LLC, stating that the parties would cover their own costs and attorneys’ fees.

“All claims between Wi-LAN and defendants, including all claims presented by Wi-LAN’s first amended complaint and defendants’ motion to dismiss, shall be dismissed without prejudice,” the parties said in their motion.

Wi-LAN had filed two suits against Lenovo and LG Electronics Inc. in February, alleging infringement of four patents relating to long-term evolution and 4G wireless technology. According to the complaint, Wi-LAN had made “substantial efforts” in the spring of 2016 to get the companies to license the patents-in-suit, but was unsuccessful.

Lenovo sought to dismiss the suit in May, arguing that Wi-LAN failed to show the “required scienter” for willful or contributory infringement, saying that “conclusory assertions” regarding a party’s knowledge and intent was insufficient.

In an amended complaint filed later that month, Wi-LAN focused on its allegations that Lenovo had “specifically advertise[d]” its devices to communicate via 4G LTE networks through its user manuals and instructions, “tout[ing] the benefits” of  4G LTE technology as “embodied” in the patents-at-issue.

“In this way, Lenovo instructs and intends its customers to take steps that Lenovo knows constitute direct infringement of the [patents-at-issue], and its customers do indeed take those steps,” Wi-LAN contended in the filing.

Lenovo fought back in June, alleging that in addition to an insufficient showing of infringement, the venue was improper, as neither Lenovo nor Motorola were incorporated or had a “regular and established place of business” in California.

The venue challenge followed on the heels of the Supreme Court’s TC Heartland ruling in May, which limited a patent holder to filing suits where a domestic corporation resides — i.e., its state of incorporation — or where it has a regular and established place of business, rather than anywhere the corporation made sales.

Wi-LAN argued that Lenovo had waived its venue defense, though Lenovo contended that it could “hardly be said” that the challenge was untimely as the challenge was unavailable at the time of its motion to dismiss. However, the parties agreed Wednesday to dismiss the suit without prejudice.

Counsel for Wi-LAN declined to comment Friday. A representative for Lenovo also declined to comment.

Over the years, Wi-LAN has filed patent suits against a slew of companies, including Vizio Inc., Sharp Electronics, Toshiba Corp., HTC Corp., Apple Inc., Alcatel-Lucent USA Inc., Ericsson Inc., Time Warner Cable Inc. and Acer Inc.

The patents-in-suit are U.S. Patent Numbers 8,787,924; 8,867,351; 9,226,320; and 9,497,743.

Wi-LAN is represented by Victor M. Felix of Procopio Cory Hargreaves & Savitch LLP and Leslie V. Payne, Eric J. Enger and Christopher M. First of Heim Payne & Chorush LLP.

Lenovo and Motorola are represented by Steven D. Moore, Erwin L. Cena, Taylor Ludlam and Richard W. Goldstucker of Kilpatrick Townsend & Stockton LLP.

The case is Wi-LAN Inc. et al. v. Lenovo Group Ltd. et al., case number 3:17-cv-00365, in the U.S. District Court for the Southern District of California.