INTRODUCTION

In the wee morning hours, at around 12:22 a.m., HTC filed an extensive, substantive

motion for judgment as a matter of law (“Motion”) and attempts to have it heard a mere twelve

hours later. HTC provides no authority for doing so, and none exists.

Notwithstanding its procedural defects, HTC’s Motion should be denied because

Defendants have presented ample evidence for the jury to conclude that (1) HTC infringes claims

6, 7, 9, 13, 14 and 15 of U.S. Patent No. 5,809,336 (“the ’336 patent”); (2) that HTC’s

infringement was willful; and (3) that TPL has sustained damages as the result of HTC’s

infringement. A reasonable jury would have a sufficient evidentiary basis to find in favor of

Defendants. As such, HTC’s motion for judgment as a matter of law should be denied in its

entirety.

ARGUMENT

I. LEGAL STANDARD.

Rule 50 requires a court to render a judgment as a matter of law where “a party has been

fully heard on an issue during a jury trial and the court finds that a reasonable jury would not

have a legally sufficient evidentiary basis to find for the party on that issue....” Fed.R.Civ. P.

50(a)(1). In the Ninth Circuit, “‘[j]udgment as a matter of law is appropriate when the evidence

presented at trial permits only one reasonable conclusion.’” Torres v. City of Los Angeles, 548

F.3d 1197, 1205 (9th Cir.2008)(quoting Santos v. Gates, 287 F.3d 846, 851 (9th Cir. 2002)). “In

other words, ‘[a] motion for a judgment as a matter of law is properly granted only if no

reasonable juror could find in the nonmoving party's favor.’” Id. (quoting El–Hakem v. BJY Inc .,

415 F.3d 1068, 1072 (9th Cir.2005)).

“The standard for judgment as a matter of law under Rule 50 mirrors the standard for

summary judgment under Rule 56.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,

150 (2000). Accordingly, the court must review all of the evidence in the record, drawing all

reasonable inferences in favor of the nonmoving party but making no credibility determinations

or weighing any evidence. Id. Summary judgment is appropriate where “there is no genuine

issue as to any material fact” and “the moving party is entitled to a judgment as a matter of law.”

Fed.R.Civ. P. 56(c). “‘If conflicting inferences may be drawn from the facts, the case must go

to the jury.’” Torres at 1206 (quoting LaLonde, 204 F.3d at 959). The moving party has the

initial burden of identifying relevant portions of the record that demonstrate the absence of a fact

or facts necessary for one or more essential elements of each cause of action upon which the

moving party seeks judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548,

91 L.Ed.2d 265 (1986).

II. HTC’S MOTION IS PROCEDURALLY DEFECTIVE

At around 12:22 a.m. this morning, HTC filed an extensive, substantive motion and

attempts to have it heard a mere twelve hours later. HTC provides no authority for doing so, and

none exists.

Civil Local Rule 7-2 sets forth the procedure for a properly noticed motion. It also

requires that such motion be heard “not less than 35 days after service of the motion.” Had HTC

wished to have its Motion heard on shortened time, it needed to file a motion to change time

under L.R. 6-3 which it did not do.

HTC’s Motion is merely an attempt to siphon Defendants’ resources by forcing

Defendants to prepare a substantive response on the morning of the final day of trial. Such

tacticsshould not be countenanced by this Court, and HTC’s Motion should be summarily

denied.

III. TPL HAS ESTABLISHED THAT THE ACCUSED PRODUCTS INFRINGE THE

’336 PATENT.

A. TPL Has Established that the Accused Products Meet the “Entire Oscillator”

Limitation

Determining whether the accused device contains each claim element, as properly

construed, is a question of fact. Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001).

The evidence from both parties’ technical experts, Texas Instruments and Qualcomm engineers,

and the inventor of the ‘336 patent all establish that the HTC accused products meet the “entire

oscillator” limitation.

Ring oscillators generate a clock signal on their own, as long as they are connected to

power and ground. Mr. Moore, one of the ‘336 patent inventors, confirmed this. Trial Tr. at 272:13-16 (Q. And other than turning on the power, do you need to do anything else to make the

ring oscillator go and generate a clock signal? A. No. There are no control signals.).

Throughout his testimony, Dr. Oklobdzija emphasized that the ring oscillators in the

Accused Products do not use an external crystal/clock to generate a clock signal used by the

CPU. Dr. Oklobdzija repeatedly clarified that a ring oscillator generates a clock signal on its

own, without relying on external crystals. Trial Tr. at 565:15-19 (“The ring oscillator generates

the clock regardless, and it will continue to generate the clock even when you disconnect this,

this crystal.”); 565:22-25 (Q. Does any on-chip component rely on the off-chip crystal to

generate a clock signal? A. No.).

Mr. Gafford admitted that it is the ring oscillator that generates the clock signal for the

CPU. Trial Tr. at 1364:18-22 (Q. So you’ve got a 2.0 gigahertz clock signal generated by the

ring oscillator that’s clocking the CPU, and you divide by 100, and that’s what this circuitry

actually does; correct? A. Yes.).

Mr. Gafford further admits that the external crystal is not used to generate the signal.

Rather, the external reference is only used to perform a comparison with the phase of the ring

oscillator’s already generated clock signal that has been steeply divided by the frequency

divider. Trial Tr. at 1364:23-1365:1 (Q. To get a 20 megahertz signal so that you can do edge

matching with the external reference crystal signal in the phase detector; correct? A. Yes.). As

Dr. Oklobdzija explained, the ring oscillator generates a very high frequency clock signal on its

own, which must then be divided to obtain a lower frequency so that its phase can be compared

to the phase of the external reference. Trial Tr. at 569:2-18. After that, the PLL can make

adjustments to the analog voltage/current provided to the ring oscillator to regulate, but not to

generate, its frequency. Id. at 569:19-22.

The frequency output from the ring oscillator is divided down, not multiplied, to allow it

to be compared to the much slower external crystal. But HTC’s focus on a formula is a red

herring. The formula merely shows how the frequency output from the ring oscillator is able to

use the external clock as a reference, not to actually generate the clock signal itself. In fact,

HTC’s own witness Mr. Fichter testified that the crystal oscillator in the HTC phones serves

merely as a reference signal. Trial Tr. at 1019:23-1020:3. Mr. Dena confirmed this crystal

functions as a reference for the Qualcomm chips used in the HTC phones. Trial Tr. at 1044:2-

12; 1048:10-15. Dr. Haroun also confirmed that the external clock functions as a reference for

the TI chips used in the HTC phones. Trial Tr. at 350:14-17. In fact, Dr. Haroun admitted that it

was only the ring oscillator in the TI chips that can create or generate the high frequency used to

clock the CPU. Trial Tr. at 353:23-354:3.

Because the function of the external crystal serves merely as a reference, if that crystal is

disconnected, the ring oscillator will still be able to generate a clock signal. Trial Tr. at 567:8-22

(Q. So the ring oscillator will still run if you disconnect the crystal? A. Yes, because crystal is

not essential to generate the clock. Crystal is not needed to generate the clock.).

While HTC criticizes Defendants for reading the Court’s claim construction of “entire

oscillator” too narrowly, Defendants do no such thing. Rather, it is HTC who is reading the

construction too broadly—attempting to expand the boundaries of the prior art to cover HTC’s

infringing products.

What the applicants of the ‘336 patent disclaimed was the use of an external crystal to

generate the actual clock signal for the CPU. The applicants did so because Magar disclosed an

external crystal oscillator that actually generated the clock signal forthe CPU. But the external

crystal in Magar was not a reference signal, and there was nothing in the “CLOCK GEN”

circuitry box in Figure 2 of Magar to generate an oscillating clock signal. Tyan Decl. [Dkt. #

471-1], Exh. A (Magar).

Accordingly, unlike HTC—who provides absolutely no explanation for its position that

Defendants are construing the Court’s construction too narrowly (see Motion at 6), there is abundant evidence that it is HTC who is improperly attempting to expand the Court’s

construction.1

B. TPL Has Established that the Accused Products Meet the “Varying”

Limitation

The trial record contains more than sufficient evidentiary basis for the jury to find that the

processing frequency of the central processing unit (“CPU”) and the clock rate of the on-chip

oscillator in each HTC accused product vary “in the same way as a function of parameter

variation in one or more fabrication or operational parameters.” First, HTC’s technical expert,

Thomas Gafford, testified at trial that the processing frequency of the CPU and the clock rate of

the on-chip oscillator must always vary in the same way. Trial Tr. 1387:13-1388:1. Second,

because the claim limitation is disjunctive, TPL needs to show only that such variation is a

function of at least one parameter among the many fabrication or operational parameters. The

trial record is abundantly clear that TPL did exactly that with respect to at least one parameter:

the process / fabrication parameter.

Mr. Gafford testified that components of the same chip,such as the CPU and the on-chip

oscillator in each HTC accused product, have the same process parameter and, therefore, process

parameters vary only from chip to chip. Trial Tr. 1394:8-11, and 1393:16-23. Such process

variation results in variation in processing frequency (and the associated clock rate) from chip to

chip, even if each chip maintains its own “fixed” speed as HTC argues. Trial Tr. 1390:8-11. In

other words, the variation of processing frequency and clock rate is a function of process /

fabrication variation from chip to chip, not a parameter variation during the operation of one

chip. Trial Tr. 1394:8:-11.

1

A thorough treatment of Magar and Sheets, and the reasons why they do not

support the overreaching limitations sought by HTC, can be found in Defendants’ Opposition to

Emergency Motion for Addendum to Jury Instructions. [Dkt. No. 596]

TPL has shown, with plenty of evidence, that such process variation from chip to chip

exists in all HTC accused products. Qualcomm’s representative, Mr. Sina Dena, testified, for

example, that, for the same chip design, Qualcomm separate chips with higher clock speeds, at

the “high end” or “fast corner of the process,” from chips with lower clock speeds, at the “slower

corner of the process,” a practice called binning. Trial Tr. 1083:5-14. Qualcomm assigns

different product names or designations to chips in different bins even though they have the

“same design.” Trial Tr. 1083:5-14, 1064:14-24, and 1083:22-23. In fact, “the higher speed bin

products will have potentially a different frequency plan.” Trial Tr. 1083:22-1084:5. Qualcomm

charges more for such chips. Trial Tr. 1064:10-24. HTC’s expert, Mr. Gafford, confirmed that

“there have to be process variations among the chips in the HTC accused products” “because

process variation is endemic to silicon production.” Trial Tr. 1393:16-23.

For the above reasons, a reasonable jury would have more than a legally sufficient

evidentiary basis to find that in each HTC accused product, the processing frequency of the CPU

and the clock rate of the on-chip oscillator vary “in the same way as a function of parameter

variation in one or more fabrication or operational parameters.

IV. TPL HAS ESTABLISHED THAT HTC’S INFRINGEMENT WAS WILLFUL.

HTC asserts that TPL does not have enough evidence to make a prima facie showing of

willful infringement. As noted above, in ruling on HTC’s motion for judgment as a matter of

law, all alleged facts must be viewed in the light most favorable to TPL, the non-movant. Pitney

Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).

At trial, Alliacense President Mac Leckrone explained that Alliacense first contacted

HTC around the end of 2006. Trial Tr. at 798:21-22. See also Exhibit 1130 (letter from

Alliacense to HTC, November 2006). At that time, Alliacense provided HTC with claim chart

analyses. Trial Tr. at 802:21-803:17. See also Exhibit 1627. These claim charts illustrated the

presence of the elements in the claims of the ’336 Patent within HTC’s Accused products. Id.

Over the years, Alliacense has provided HTC with “hundreds of claim charts” that clearly

illustrate that HTC’s Accused Products meet the claimed limitations in the ’336 Patent. Trial Tr.

at 805:6-7. HTC’s written responses to Alliance’s correspondence confirm that HTC received and evaluated Alliacense’s claim charts. Trial Tr. at 805:14-25. Mr. Leckrone testified that

HTC stated that it “didn’t necessarily have any significant issues with [Alliacense’s material]

factually. Trial Tr. at 809:2-8.

In the years following Alliacense’s first letter to HTC in November 2006, Alliacense

made “continuous contact” with HTC. Trial Tr. at 799:3-14. Over the course of 2007, Alliance

took a team to Taiwan six of seven times to meet with HTC and try to address their questions.

Trial Tr. at 806:16-24. See also, e.g., Exhibit 1279. Despite TPL’s repeated attempts to inform

HTC of its blatant infringement of the patents-in-suit, HTC continued its infringing activities,

uninterrupted.

Moreover, HTC strung TPL along, pretending the negotiations were productive, while at

the same time preparing to initiate this very litigation. As Mr. Leckrone testified, the lawsuit

was a surprise to TPL.

Q. Were you surprised to be sued?

A. Incredibly surprised. We'd just finished six trips to Taiwan that seemed like they

were very productive, at least HTC was indicating to us that they were trying to

get permission from upper management to close the deal. They said they didn't --

they didn't object to the formula for calculating the royalty rate. The only thing

missing was the exact numbers, so they were seeking permission from upper

management to share with us the financial data.

They asked us for a copy of the license agreement, they sent it to their lawyers

who marked it up and sent it back. We even had a whole trip to Taiwan about

negotiating the licensing agreement itself.

Then in December they said they hoped it would be closed by the end of the year.

Then in January they said they hoped it would be closed by the end of January.

And then in February they sued us without even telling us beforehand.

Trial Tr. 814:24-815:17.

HTC further claims that the evidence at trial established that its non-infringement

defenses “are, at a minimum, objectively reasonable.” But “the existence of triable defenses to

infringement does not ipso facto preclude a finding of willful infringement.” Abstrax, Inc. v.

Dell, Inc., No. 2:07-cv-221, 2009 U.S. Dist. LEXIS 93606 at *10 (E.D. Tex. Oct. 7, 2009).

HTC’s non-infringement defenses turn on issues of fact for a jury to decide. In considering the objective prong, when a party’s defenses against a charge of willful infringement turn on a

disputed question of fact or a mixed question of law and fact, the trial court may “allow the jury

to determine the underlying facts relevant to the defense in the first instance.” Bard Peripheral

Vascular, Inc. v. W.L. Gore & Assocs., 682 F.3d 1003, 1008 (Fed. Cir. 2012). Numerous U.S.

District Courts have concluded—post-Bard—that the best course of action is to reserve judgment

until the parties make a full presentation of the evidence, subject to cross-examination, on the

record and the jury has been given an opportunity to resolve any necessary fact-finding. See e.g.,

Fujitsu Ltd. v. Belkin Int’l Inc., 2012 WL 4497966, at *39 (N.D. Cal. Sept. 28, 2012)

(“Defendants’ anticipation and obviousness arguments, at this point, turn on questions of fact for

a jury to decide. . . it would be more appropriate to decide the legal issue of willfulness with the

benefit of the jury’s factual findings on anticipation and obviousness.”).

V. TPL HAS PRESENTED SUFFICIENT EVIDENCE OF ITS DAMAGES.

HTC’s Motion reiterates arguments rejected by this Court in denying HTC’s Daubert

motion (Dkt. No. 563) and should be rejected again here.

First, HTC contends that Dr. Prowse improperly based his damages opinion on the entire

revenue generated by the accused phones. Motion at 8. The Court has already addressed this,

noting that, “[a]ccording to Dr. Prowse, here TPL and its licensees regularly estimated the

anticipated revenue of the entire licensed product in arriving at a bottom line number.” Order

Denying Motion to Exclude Expert Report of Dr. Stephen Prowse (Dkt. No. 563) (Daubert

Order) at 3. Further, “there is evidence in the record in this case that this is what TPL and its

licensees did over and over again.” Id. at 4. Accordingly, based on this evidence and the

documents and testimony presented to the jury, Dr. Prowse premised his analysis on a lump sum

payment “calculated based on applying a royalty rate, an agreed upon royalty rate, to an estimate

of the amount of final end product sales that he company sells that practice the patent in suit.”

Trial Tr. 846:15 – 847:1. The Court has already deemed this appropriate (Dkt. No. 563) and should not revisit its prior ruling.

HTC also contends that Dr. Prowse did not rely on comparable licenses. The Court has

already addressed this as well, noting that “there is no dispute that while the other agreement[s]

did license broader rights, those rights included the very same patents asserted against HTC. The

licensor was none other [than] TPL, the same licensor here.” Daubert Order at 4. As the Court

acknowledged, even “HTC’s own damages expert agreed at the agreements were comparable.”

Id. Dr. Prowse discussed these similarities at trial. Trial Tr. 882:2-14 (noting that all licenses

covered the ’336 patent, TPL was the licensee). As to the Apple license, to which HTC contends

Dr. Prowse should have given more weight, Dr. Prowse testified that he gave it little weight

“because basically [he] was informed that Apple was a special case and [he] determined that its

rate would not be relevant for figuring out what HTC and TPL would have agreed to in the

hypothetical negotiation.” Trial Tr. 872:0-13. Mr. Bokhart, HTC’s expert, testified similarly:

“But there are a lot of issues with the Apple agreement that don’t make it directly comparable to

say that is the model thatshould apply to negotiate with HTC.” Trial Tr. 1247:9-11.

On the heels of arguing that Dr. Prowse gave little weight to the Apple license, HTC

claims that Dr. Prowse did not account for differences between HTC and other licensees.

Motion at 10. That argument is belied by Dr. Prowse’s treatment of Apple. Further, as HTC

notes, Dr. Prowse grouped licensees in a variety of ways to account for various differences

between them. Id. Finally, Dr. Prowse acknowledged several differences between other licenses

and the license that would result from a hypothetical negotiation, and he discussed how those

impacted his analysis. See, e.g. Trial Tr. 882:17-883:24. Accordingly, Dr. Prowse’s reliance on

the 100+ licenses was proper, as was his giving little weight to certain less comparable licenses

(e.g. Apple), and adjusting for other differences between the existing licenses and the license that

would result from a hypothetical negotiation.

Finally, HTC takes issue with the fact that Dr. Prowse’s rate was higher than the rate in

many of the existing licenses. As Dr. Prowse noted, several licensees paid a higherrate than the

rate he proposes, and several licensees paid higherlump sums than the amount he proposes.

Trial Tr. 921:12-25. Further, Dr. Prowse accounted for what “tier” a licensee would fall into and

he increased the reasonable royalty rate based in part on the requisite assumption that the patents

were valid and infringed. See, e.g. Trial Tr. 882:22-883:2. This Court has already recognized

that, “[a]s for the ‘tiering,’ or weighting of the so-called comparable agreements, TPL rightly points out that the Circuit has repeatedly held that the presumption of validity and infringement

can increase royalty.” Daubert Order at 5. See, also, ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d

860, 872 (Fed. Cir. 2010) (“[A] reasonable royalty may permissibly reflect the fact that an

infringer had to be ordered by a court to pay damages, rather than agreeing to a reasonable

royalty”); Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1346-47 (Fed. Cir. 2011)(patent

may be less valuable at earlier time (i.e., when it reflects “deep discount”) when there is

uncertainty as to its validity or infringement; weight for this type of evidence is task for jury).

Dr. Prowse also adjusted his rate to account for various discounts and other relevant differences.

See, e.g. Trial Tr. 883:3-10. While these and other adjustments resulted in a higher royalty rate

than many of the existing licenses, such an increase is not improper. Courts routinely permit

royalty rate determinations at much greater multiples. See, e.g. Mondis Tech, Ltd., v. LG Elecs.,

et al., Nos. 2:07-CV-565; 2:08-CV-478, 2011 WL 2417367, at *4-5 (E.D. Tex., June 14, 2011)

(three times the standard royalty rate); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926

F.2d 1161, 1168 (Fed.Cir.1991)(affirming 25% royalty when standard royalties for defendant

with similar products had rates of 3% and 5%).2

As such, Dr. Prowse’s damages opinion was

proper, based on adequate evidence, and should be considered by the Jury as this Court has

previously ruled in its Order Denying Motion to Exclude Expert Report of Dr. Stephen Prowse

(Dkt. No. 563).

Conclusion

For the foregoing reasons, TPLrespectfully asksthe Court to deny HTC’s Motion in its

entirety.