22-02-03 Ford Answer To Sisvel Complaint D.del. 21-Cv-1745

Case 1:21-cv-01745-MN Document 8 Filed 02/03/22 Page 1 of 46 PageID #: 220
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
SISVEL INTERNATIONAL S.A.,

3G LICENSING S.A. and SISVEL S.p.A., C.A. No. 1:21‐cv‐01745‐MN
Plaintiffs, PATENT CASE

v.
FORD MOTOR COMPANY, JURY TRIAL DEMANDED
Defendant.
ANSWER TO COMPLAINT FOR PATENT

INFRINGEMENT, AFFIRMATIVE DEFENSES,
AND COUNTERCLAIMS
Defendant Ford Motor Company (“Ford”) answers the Complaint of Plaintiffs Sisvel
International S.A., 3G Licensing S.A. and Sisvel S.p.A. (“Sisvel and/or Plaintiffs”).
NATURE OF THE ACTION
1. This is an action for patent infringement arising under the Patent Laws of the United
States, 35 U.S.C. § 1 et seq.
ANSWER: Ford denies that it has committed any acts of patent infringement.
THE PARTIES
2. Sisvel International S.A. (“Sisvel”) is an entity organized under the laws of
Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
Duchy of Luxembourg.
ANSWER: Ford lacks sufficient information or knowledge to admit or deny the allegations in
this paragraph, and on that basis, denies them.
3. 3G Licensing S.A. (“3G Licensing”) is also an entity organized under the laws of
Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
Duchy of Luxembourg.
4. Sisvel S.p.A. (“Sisvel S.p.A.”) is an entity organized under the laws of Italy with a
place of business at Via Sestriere 100, 10060 None (TO) Italy. “Sisvel” is an acronym for “Società
Italiana per lo Sviluppo Dell’Elettronica.”
5. Founded in Italy in 1982, Sisvel is a world leader in fostering innovation and
managing intellectual property. Sisvel works with its partners offering a comprehensive approach
to patent licensing: from issuing initial calls for essential patents; facilitating discussions among
stakeholders; developing multiparty license agreements; executing and administering licenses; to
collecting and distributing royalties. At the same time, Sisvel actively promotes a culture of respect
and understanding of the intellectual property and innovation ecosystem through, for example, its
regular presence at the key consumer electronics trade fairs and intellectual property events,
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participation in policy discussions and conferences, as well as open dialogues with a number of
government bodies, standard-setting organizations and industry associations.
6. In early 2016, Sisvel initiated licensing activities in North America via its U.S.
subsidiary, Sisvel US Inc.
7. A subsidiary of Sisvel founded in 2015, 3G Licensing, is an intellectual property
company operating in the consumer electronics and telecommunications industry. The company is
composed of specialists with an extensive experience in administering licensing programs on
behalf of third-party companies and organizations.
8. A subsidiary of Sisvel founded in 1982, Sisvel S.p.A., is an intellectual property
company operating primarily in areas of wireless communication, audio/video coding/decoding,
digital video display, and broadband technology. The company is composed of specialists with
extensive experience to support Sisvel’s efforts in licensing programs and patent pools, primarily
on behalf of third-party companies and organizations.
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9. Upon information and belief, Defendant Ford is a Delaware company having its
principal place of business at 1 American Road, Ford World Headquarters, Dearborn, Michigan
48126.
ANSWER: Admitted.
10. Defendant maintains a registered agent for service of process in Delaware at
Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington,
Delaware 19801. Upon information and belief, Defendant sells and offers to sell products and
services throughout the United States, including in this judicial district, and introduces products
and services that enter into the stream of commerce and that incorporate infringing technology
knowing that they would be sold in this judicial district and elsewhere in the United States.
ANSWER: Denied, except that Ford admits that its registered agent for service of process in
the State of Delaware is The Corporation Trust Company, having an address Corporation Trust
Center, 1209 Orange Street, Wilmington, Delaware 19801. Ford sells vehicles to independent
dealerships, who sell their Ford vehicles to the public. Ford denies that it incorporates infringing
technology.
JURISDICTION AND VENUE
11. This Court has jurisdiction over the subject matter jurisdiction of this case under 28
U.S.C. §§ 1331 (federal question) and 1338(a) (patent law – 35 U.S.C. § 101, et seq.).
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ANSWER: Ford admits that this Court has subject matter jurisdiction over disputes arising
under the patent laws of the United States and that the alleged claims arise under the patent laws,
but Ford denies that it has committed any acts of patent infringement.
12. This Court has personal jurisdiction over Defendant, because Defendant has
sufficient minimum contacts within the State of Delaware and this District, pursuant to due process
and/or the Del. Code. Ann. Tit. 3, § 3104, as Defendant has purposefully availed itself of the
privileges of conducting business in the State of Delaware by regularly conducting and soliciting
business within the State of Delaware and within this District, and because Plaintiffs’ causes of
action arise directly from Defendant’s business contacts and other activities in the State of
Delaware and this District. Further, this Court has personal jurisdiction over Defendant, because
it is incorporated in the State of Delaware and has purposely availed itself of the privileges and
benefits of the laws of the State of Delaware.
ANSWER: Denied, except that Ford admits that this Court has personal jurisdiction over Ford.
13. Venue is proper in this judicial district under 28 U.S.C. § 1400(b) because
Defendant has committed acts of infringement in this District as Defendant is incorporated in the
State of Delaware.
ANSWER: Denied, except that Ford admits that venue is proper.
ACCUSED INSTRUMENTALITIES
14. Defendant makes, uses, sells and offers for sale, provides, and causes to be used,
now and within the past six years, SYNC® Connect, FordPass SmartLink and FordPass Connect
among other such products. (Collectively “Accused Instrumentalities”.)
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ANSWER: Ford admits that Ford, or independently owned and operated Ford dealerships,
made, used, sold or offered for sale within the past six years, SYNC® Connect, FordPass
SmartLink and FordPass Connect. Ford denies the remaining allegations of this paragraph,
including the implication that these technologies infringe the Asserted Patents.
15. Defendant advertises the SYNC® Connect product is compliant with the 4G
cellular network standards. (See, e.g., product information for the SYNC® Connect, attached
hereto as Exhibit 1.)
ANSWER: Denied.
16. Defendant advertises the FordPass SmartLink product is compliant with the 4G
cellular network standards. (See e.g., product information for the FordPass SmartLink, attached
ANSWER: Denied.
17. Defendant advertises the FordPass Connect product is compliant with the 4G
cellular network standards. (See e.g., product information for the FordPass Connect, attached
ANSWER: Denied.
18. Each of the Accused Instrumentalities are incorporated into one or more of the
vehicles Defendant manufactures, offers for sale and sells.
ANSWER: Denied, except that Ford admits it incorporates SYNC® Connect, FordPass
Connect, and FordPass SmartLink into one or more vehicles.
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BACKGROUND
19. Plaintiffs is the owner by assignment of a portfolio of patents, including the patents
described in detail in the counts below (collectively, the “Asserted Patents”), that relate to
technology for cellular communications networks, including variations or generations of cellular
communication network technology such as, but not limited to 3G, and 4G.
20. Cellular communication network technology is used to provide data transmission
across mobile cellular networks.
ANSWER: This allegation is so broad that Ford lacks sufficient information or knowledge to
admit or deny the allegations in this paragraph, and on that basis, denies them.
21. U.S. Patent Nos. 7,751,803 (“the ’803 patent”) and 7,894,443 (“the ’443 patent”)
were assigned to Nokia Corporation either directly from the inventors or through mergers. In 2011
the ’803 and the ’443 patents were assigned to a trust by Nokia Corporation. On April 10, 2012,
Sisvel obtained ownership of the ’803 and the ’443 patents.
22. U.S. Patent No. 7,979,070 (“the ’070 patent”) was assigned to Nokia Corporation
either directly from the inventors or through mergers. In 2011 the ʼ070 patent was assigned to a
trust by Nokia Corporation. On April 10, 2012, Sisvel obtained ownership of the ʼ070 patent.
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23. U.S. Patent No. 8,600,383 (“the ʼ383 patent”) was assigned to Research in Motion
Ltd. from the inventors. Research in Motion Ltd. changed its name to Blackberry, Ltd. in 2013.
On November 16, 2018, the ʼ383 patents were assigned to Provenance Asset Group LLC from
Blackberry, Ltd. On April 5, 2019, Sisvel obtained ownership of the ʼ383 patents from Provenance
Asset Group LLC. On July 11, 2019, Sisvel assigned the ʼ383 patents to 3G Licensing.
ANSWER: Ford admits that the ʼ383 patent was assigned to Research in Motion Ltd. from the
inventors. Ford lacks sufficient information or knowledge to admit or deny the remaining
allegations in this paragraph, and on that basis, denies them.
24. U.S. Patent No. 8,971,279 (“the ʼ279 patent”) was assigned to LG Electronics Inc.
from the inventors. On March 28, 2014, the ʼ279 patents was assigned to Thomson Licensing SAS
from LG Electronics. On September 23, 2019, Sisvel S.p.A. obtained ownership of the ʼ279 patent
from Thomson Licensing SAS.
ANSWER: Ford admits that the ʼ279 patent was assigned to LG Electronics Inc. from the
inventors. Ford lacks sufficient information or knowledge to admit or deny the remaining
allegations in this paragraph, and on that basis, denies them.
25. Sisvel, 3G Licensing and Sisvel S.p.A. are the rightful owners of the Asserted
Patents and hold the entire right, title and interest in the Asserted Patents.
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26. Sisvel sent its first correspondence to Ford on January 6, 2017, offering a license
for patents owned and/or managed by Sisvel that are essential to cellular standards including 3G
technology. The January 6, 2017, letter included a link to materials on Sisvel’s website which
identified its 3G standard patents.
ANSWER: After a reasonably diligent investigation, Ford lacks sufficient information or
knowledge to admit or deny the allegations in this paragraph, and on that basis, denies them.
27. Sisvel and Ford engaged in additional correspondence through October 31, 2018.
On October 31, 2018, Sisvel sent Ford an email again offering to license Sisvel’s 3G and 4G
patents. Attached to the email was a letter introducing the 3G and 4G patents to be license. The
letter contained links to brochures which listed information about the ’803, ’443, ’070, ’383, and
’279 patents. The email also included a description of the Sisvel’s license program for its 3G and
4G standard essential patents, and a draft non-disclosure agreement.
ANSWER: Denied, except that Ford admits that it received a letter from Sisvel on October 31,
2018 that included a description of the Sisvel’s license program for its alleged 3G and 4G standard
essential patents, and a draft non-disclosure agreement. Ford denies that the letter “contained links
to brochures which listed information about the ’803, ’443, ’070, ’383, and ’279 patents.” For
example, and without limitation, Sisvel did not own the ‘383 or ‘279 patents until at least April 5,
2019 and September 23, 2019, respectively. (See Complaint ¶¶ 23-34.)
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28. On June 26, 2019, Sisvel sent another correspondence introducing additional patent
portfolios to be licensed. The correspondence listed again directed Ford to the 3G and 4G
brochures which listed information about the ’803, ’443, ’070, ’383, and ’279 patents as well as
specifically listing the ’803, ’443, ’070, ’383, and ’279 patents in the correspondence. The
correspondence also discussed that the FordPass Smartlink and FordPass Connect are infringing
the offered patents.
ANSWER: Denied, except that Ford admits that it received correspondence from Sisvel on
June 26, 2019 concerning Sisvel’s patent portfolios. Ford denies that the correspondence “again
directed Ford to the 3G and 4G brochures which listed information about the ’803, ’443, ’070,
’383, and ’279 patents as well as specifically listing the ’803, ’443, ’070, ’383, and ’279 patents
in the correspondence.” For example, and without limitation, Sisvel did not own the ‘279 patent
until at least September 23, 2019. (See Complaint ¶24.) Ford denies that the correspondence
asserted that FordPass Smartlink and FordPass Connect infringe the Asserted Patents.
29. After additional attempts to enter into a license, Sisvel sent another correspondence
on June 21, 2021 which included a copy of Sisvel’s Master Agreement which listed, among others,
the ’803, ’443, ’070, ’383, and ’279 patents. The correspondence also included Sisvel’s 3G and
4G brochures listing the ’803, ’443, ’070, ’383, and ’279 patents.
ANSWER: Sisvel’s allegation of “additional attempts to enter into a license” is so vague that
Ford cannot answer and therefore denies the allegation. Ford admits the remainder of the
allegation.
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30. Following the June 21, 2021 letter, Sisvel and Ford exchanged additional
correspondence regarding Sisvel’s patent portfolio. Despite Sisvel’s continuous efforts over more
than one year and numerous demonstrations of infringement, Ford refused to take a license to
Sisvel’s patents.
ANSWER: Ford admits that Sisvel and Ford exchanged additional correspondence regarding
Sisvel’s patents following June 21, 2021. Ford denies that Sisvel demonstrated infringement of
the Asserted Patents and Ford denies that it refused to take a license to Sisvel’s patents.
COUNT I – INFRINGEMENT OF U.S. PATENT NO. 7,751,803
31. The allegations set forth in the foregoing paragraphs 1 through 30 are incorporated
into this First Claim for Relief.
ANSWER: Ford incorporates its answers to the previous allegations.
32. On July 6, 2010, the ’803 patent, entitled “Method and Arrangement For
Optimizing the Re-Establishment of Connections In a Cellular Radio System Supporting Real
Time and Non-Real Time Communications” was duly and legally issued by the United States
Patent and Trademark Office from a patent application filed on February 22, 2001, and claims
priority to foreign patent applications filed on February 24, 2000 and March 24, 2000. A true and
correct copy of the ’803 patent is attached as Exhibit 4.
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33. Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
ʼ803 patent, including the right to assert all causes of action arising under said patents and the right
to any remedies for infringement of them.
34. The ’803 patent relates to a system and method that Plaintiffs believe is essential
under the 3G cellular standard as explained in attached Exhibit 5. Thus, Defendant’s Accused
Instrumentalities necessarily infringing the ʼ803 patent.
this paragraph, and on that basis, denies them. Ford denies that its Accused Instrumentalities
necessarily infringing the ʼ803 patent.
35. Defendant was made aware of the ʼ803 patent and its infringement thereof by
correspondence from Plaintiffs as late as October 31, 2018, as discussed in paragraph 26 above.
ANSWER: Denied, except that Ford admits that Sisvel’s October 31, 2018 letter mentioned the
‘803 patent. Ford denies that the letter demonstrated Ford’s infringement of the ‘803 patent.
36. Defendant was further made aware of the ʼ803 patent and its infringement thereof
at least as early as the date of filing of this Complaint.
ANSWER: Ford admits that the complaint identifies the ‘803 patent. Ford denies that the
complaint demonstrates Ford’s infringement of the ‘803 patent.
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37. Upon information and belief, Defendant has and continue to directly infringe at
least claim 17 of the ʼ803 patent by making, using, selling, importing, offering for sale, providing,
practicing, and causing the Accused Instrumentality that infringe the patented methods.
ANSWER: Denied.
38. Upon information and belief, these Accused Instrumentality are used, marketed,
provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
users across the country and in this District.
ANSWER: The allegations in this paragraph are so vague that Ford lacks sufficient information
or knowledge to admit or deny the allegations in this paragraph, and on that basis, denies them.
39. Upon information and belief, Defendant has induced and continues to induce others
to infringe at least claim 17 of the ʼ803 patent under 35 U.S.C. § 271(b) by, among other things,
and with specific intent or willful blindness, actively aiding and abetting others to infringe,
including, but not limited to Defendant’s partners, clients, customers/subscribers, and end users,
whose use of the Accused Instrumentality constitutes direct infringement of at least one claim of
the ’803 patent.
ANSWER: Denied.
40. In particular, the Defendant’s actions that aid and abet others such as its partners,
customers/subscribers, clients, and end users to infringe include advertising and distributing the
Accused Instrumentality and providing instruction materials, training, and services regarding the
Accused Instrumentality.
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41. Any party, including Defendant’s partners, clients, customers/subscribers, and end
users, using the Accused Instrumentalities necessarily infringes the ʼ803 patent because the
invention of the ʼ803 patent is required to comply with the relevant cellular standard. Defendant
advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
induces others to infringe the ʼ803 patent. Defendant has knowingly induced infringement since at
least October 31, 2018, when Defendant was first made aware of the ʼ803 patent during extensive
correspondence with Plaintiffs as discussed in paragraphs 25-29 above.
ANSWER: Denied.
42. Upon information and belief, the Defendant are liable as a contributory infringer of
the ʼ803 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
States the Accused Instrumentality that infringe the patented methods, to be especially made or
adapted for use in an infringement of the ʼ803 patent. Each of the Accused Instrumentality is a
material component for use in practicing the ʼ803 patent and is specifically made and are not a
staple article of commerce suitable for substantial non-infringing use. In particular, each Accused
Instrumentality is advertised to be compliant with the relevant standard and primarily used in
compliance with that standard.
ANSWER: Denied.
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[sic – no para number] Plaintiffs have been harmed by Defendant’s infringing
activities.
ANSWER: Denied.
COUNT II – INFRINGEMENT OF U.S. PATENT NO. 7,894,443
into this Second Claim for Relief.
44. On February 22, 2011, the ’443 patent, entitled “Radio Link Control
Unacknowledged Mode Header Optimization” was duly and legally issued by the United States
Patent and Trademark Office from a patent application filed on August 23, 2006, and claims
priority to provisional patent application No. 60/710,193 filed on August 23, 2005. A true and
correct copy of the ’443 patent is attached as Exhibit 6.
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correspondence from Plaintiffs on October 31, 2018, as discussed in paragraph 26 above.
ANSWER: Denied, except that Ford admits that Sisvel’s October 31, 2018 letter mentioned the
‘443 patent. Ford denies that the letter demonstrates Ford’s infringement of the ‘443 patent.
ANSWER: Ford admits that the complaint identifies the ʼ803 patent. Ford denies that the
complaint demonstrates Ford’s infringement of the ʼ803 patent.
least claim 16 of the ʼ443 patent by making, using, selling, importing, offering for sale, providing,
practicing, and causing the Accused Instrumentality that infringe the patented methods.
ANSWER: Denied.
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to infringe at least claim 16 of the ʼ443 patent under 35 U.S.C. § 271(b) by, among other things,
and with specific intent or willful blindness, actively aiding and abetting others to infringe,
the ’443 patent.
ANSWER: Denied.
17
ANSWER: Denied.
ANSWER: Denied.
55. Plaintiffs have been harmed by Defendant’s infringing activities.
ANSWER: Denied.
COUNT III – INFRINGEMENT OF U.S. PATENT NO. 7,979,070
into this Third Claim for Relief.
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57. On July 12, 2011, the ’070 patent, entitled “Mobile Equipment for Sending an
Attach Request to a Network” was duly and legally issued the United States Patent and Trademark
Office from Patent Application No. 12/232,724 filed on September 23, 2008. The ʼ070 patent
claims priority to U.S. Patent No. 7,035,621 filed on October 13, 2000. A true and correct copy of
the ʼ070 patent is attached as Exhibit 8.
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ANSWER: Denied, except that Ford admits that the Sisvel’s October 31, 2018 letter mentions
the ‘070 patent. Ford denies that the letter demonstrates Ford’s infringement of the ‘070 patent.
least claims 1, 2 and/or 5 of the ʼ070 patent by making, using, selling, importing, offering for sale,
providing, practicing, and causing the Accused Instrumentality that infringe the patented methods.
ANSWER: Denied.
to infringe at least claims 1, 2 and/or 5 of the ʼ070 patent under 35 U.S.C. § 271(b) by, among
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other things, and with specific intent or willful blindness, actively aiding and abetting others to
infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
users, whose use of the Accused Instrumentality constitutes direct infringement of at least one
claim of the ’070 patent.
ANSWER: Denied.
ANSWER: Denied.
21
ANSWER: Denied.
ANSWER: Denied.
COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 8,600,383
into this Fourth Claim for Relief.
70. On December 3, 2013, the ’383 patent, entitled “Apparatus and Method for Making
Measurements in Mobile Telecommunications System User Equipment” was duly and legally
issued by the United States Patent and Trademark Office from Patent Application No. 13/617,241
filed on September 24, 2012. The ʼ383 patent claims priority to U.S. Patent No. 7,463,887 filed on
August 18, 2004. A true and correct copy of the ʼ383 patent is attached as Exhibit 10.
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71. Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
and to the ʼ383 patent, including the right to assert all causes of action arising under said patents
and the right to any remedies for infringement of them.
ANSWER: Denied, except that Ford admits that Sisvel’s October 31, 2018 letter mentions the
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least claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90 of the ʼ383 patent by making, using, selling,
importing, offering for sale, providing, practicing, and causing the Accused Instrumentality that
infringe the patented methods.
ANSWER: Denied.
to infringe at least claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90 of the ʼ383 patent under 35
U.S.C. § 271(b) by, among other things, and with specific intent or willful blindness, actively
aiding and abetting others to infringe, including, but not limited to Defendant’s partners, clients,
customers/subscribers, and end users, whose use of the Accused Instrumentality constitutes direct
infringement of at least one claim of the ’383 patent.
ANSWER: Denied.
24
ANSWER: Denied.
25
ANSWER: Denied.
ANSWER: Denied.
COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 8,971,279
into this Fourth Claim for Relief.
83. On March 3, 2015, the ’279 patent, entitled “Method and Apparatus for Indicating
Deactivation of Semi-Persistent Scheduling” was duly and legally issued by the United States
Patent and Trademark Office from Patent Application No. 13/791,421 filed on March 8, 2013. The
ʼ279 patent claims priority to U.S. Provisional Patent Application Nos. 61/114,440 filed on
November 13, 2008, and 61/119,375 filed on December 3, 2008. A true and correct copy of the
ʼ279 patent is attached as Exhibit 12.
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84. Plaintiff Sisvel S.p.A. is the assignee and owner of the right, title and interest in and
to the ʼ279 patent, including the right to assert all causes of action arising under said patents and
the right to any remedies for infringement of them.
ANSWER: Denied, except that Ford admits that Sisvel’s October 31, 2018 letter mentions the
ANSWER: Ford admits that the complaint identifies the ʼ383 patent. Ford denies that the
complaint demonstrates Ford’s infringement of the ʼ383 patent.
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least claims 1 and/or 11 of the ’279 patent by making, using, selling, importing, offering for sale,
providing, practicing, and causing the Accused Instrumentality that infringe the patented methods.
ANSWER: Denied.
to infringe at least claims 1 and/or 11 of the ’279 patent under 35 U.S.C. § 271(b) by, among other
things, and with specific intent or willful blindness, actively aiding and abetting others to infringe,
the ’279 patent.
ANSWER: Denied.
28
ANSWER: Denied.
ANSWER: Denied.
29
ANSWER: Denied.
AFFIRMATIVE AND OTHER DEFENSES
Ford asserts the following affirmative defenses, without assuming the burden of proof
when the law places such burden on Sisvel:
1. Ford has not infringed any valid and enforceable claims of the patents asserted
above by Sisvel (“the Patents in Suit”).
2. Sisvel’s Complaint fails to state a sufficient basis for alleging that Ford infringes
the Patents in Suit because Sisvel fails to point to anything within the modem chipsets supplied to
Ford that infringe the Patents in Suit. Sisvel instead relies solely on 3GPP specifications without
any substantiation that the accused modem chipsets practice the specific sections of the standard
on which Sisvel relies on for its infringement allegations.
3. The asserted claims of the Patents in Suit are unpatentable for failure to meet the
requirements of 35 U.S.C. § 101.
4. The asserted claims of the Patents in Suit are invalid for failure to meet the
requirements of 35 U.S.C. §§ 102, 103, and 112.
5. Sisvel is barred from recovering damages for infringement of any valid asserted
claims of the Patents in Suit until at least the date Sisvel provided proper notice to Ford under 35
U.S.C. § 287.
6. Pursuant to 35 U.S.C. § 286, Sisvel’s claims are barred, in whole or in part, for all
events occurring more than six years prior to the filing of the Complaint.
7. Some or all of Sisvel’s claims against Ford are barred, in whole or in part, by the
doctrines of waiver, exhaustion, license, acquiescence, estoppel, shop rights and/or unclean hands.
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8. Sisvel is barred from recovering costs associated with this action under 35 U.S.C.
§ 288.
9. To the extent that Sisvel is not the legal assignee of the Patents in Suit, Sisvel lacks
standing to bring suit for infringement of the Patents in Suit.
10. Sisvel has not made a “Fair, Reasonable and Non-Discriminatory” offer to license
the Patents in Suit to Ford in violation of its and/or its predecessors’ FRAND commitments.
11. Ford may assert other defenses, including, without limitation, defenses identified
under Rule 8(c) of the Federal Rules of Civil Procedure, and/or defenses identified under the patent
laws of the United States, that may now or in the future be available on discovery, any other factual
investigation, or any other development relating to this case or any other action.
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COUNTERCLAIMS
I. THE PARTIES
1. Ford is a Delaware corporation with its principal place of business at One American
Road, Dearborn, Michigan.
2. On information and belief, Sisvel International S.A. (“Sisvel”) is an entity
organized under the laws of Luxembourg with a place of business at 6, Avenue Marie Thérèse,
2132 Luxembourg, Grand Duchy of Luxembourg.
3. On information and belief, 3G Licensing S.A. (“3G Licensing”) is also an entity
organized under the laws of Luxembourg with a place of business at 6, Avenue Marie Thérèse,
2132 Luxembourg, Grand Duchy of Luxembourg.
4. On information and belief, Sisvel S.p.A. (“Sisvel S.p.A.”) is an entity organized
under the laws of Italy with a place of business at Via Sestriere 100, 10060 None (TO) Italy.
“Sisvel” is an acronym for “Società Italiana per lo Sviluppo Dell’Elettronica.”
II. JURISDICTION AND VENUE

5. This Court has jurisdiction over these claims pursuant to 28 U.S.C. §§1331, 1338,
and 2201.
6. As detailed in Sisvel’s Complaint, Ford’s Answer, and Ford’s Counterclaims, an
actual case and controversy exists concerning Ford’s alleged infringement of, and Sisvel’s FRAND
licensing obligation for, the Patents in Suit.
III. THE ASSERTED SISVEL PATENTS

7. In its Complaint, Sisvel alleges infringement and ownership of five patents: U.S.
Patent Nos. 7,751,803 (“the ’803 patent”), 7,894,443 (“the ’443 patent”), 7,979,070 (“the ’070
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patent”), 8,600,383 (“the ʼ383 patent”), and 8,971,279 (“the ʼ279 patent”). Collectively, Ford
refers to these patents as “the Patents in Suit.”
8. In its Complaint, Sisvel alleges the ’803 patent, the ’070 patent, and the ’443 patent
were assigned to Nokia Corporation.
9. In its Complaint, Sisvel alleges the ʼ383 patent was assigned to Research in Motion
Ltd., which changed its name to Blackberry, Ltd. in 2013.
10. In its Complaint, Sisvel alleges the ʼ279 patent was assigned to LG Electronics Inc.
FIRST CAUSE OF ACTION

Breach of FRAND Obligations
11. Ford incorporates the allegations in the foregoing paragraphs.
12. Under the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Ford
requests a judicial determination and declaration that Sisvel has breached its obligation to license
the Patents in Suit on FRAND terms.
13. On information and belief, Sisvel’s predecessors in interest, Nokia Corporation,
Research in Motion Ltd., and LG Electronics Inc., made a FRAND declaration in accordance with
Clause 6.1 of the ETSI Intellectual Property Right Policy, which declaration is binding on Sisvel
under Clause 6.1bis.
14. Sisvel asserts, in Paragraphs 34, 46, 59, 72, and 85 of its Complaint against Ford,
that the Patents in Suit are essential patents to the 3G or 4G cellular standard.
15. As members of the public that would potentially implement the standards and
specifications set forth by ETSI, Ford, its suppliers, and its customers, are intended third-party
beneficiaries of the contractual FRAND licensing commitments and obligations made to ETSI
with respect to the Patents in Suit.
33
16. To the extent suppliers to Ford of any accused (i) baseband chipset, (ii) Network
Access Device incorporating a baseband chipset, or (iii) Telematics Control Unit (“TCU”)
incorporating a Network Access Device make or sell products conforming to the applicable
cellular standards, the ETSI IPR Policy requires a license be made available to those makers and
sellers, i.e., the supply chain.
17. Contrary to the obligations expressed in the FRAND commitments by which it is
bound, Sisvel did not make an offer to Ford to license the Patents in Suit on FRAND terms, or
otherwise attempt to negotiate a FRAND license in good faith, before filing its Complaint against
Ford and, to date, has continued to breach its obligation to license the Patents in Suit on FRAND
terms.
18. On January 10, 2019, Ford became a licensee under Sisvel’s Wi-Fi Joint Licensing
Program comprising over 500 patents.
19. In a letter to Sisvel dated November 4, 2019, Ford stated that Ford is “also willing
to negotiate a FRAND license with Sisvel directly” for Sisvel’s cellular SEPs. In that
communication, Ford requested relevant information from Sisvel regarding its patent portfolio, its
related licenses, its proposed license terms, and other relevant information.
20. In an email dated June 21, 2021, Sisvel stated: “any patent owned by Sisvel and its
affiliates are available under a bilateral license” and “if Ford wishes to engage on the Sisvel
bilateral license instead of the joint MCP agreement, please let us know.”
21. In an email dated July 20, 2021, Ford again reiterated its “willingness to negotiate
a license directly with Sisvel, but on truly FRAND terms.” Ford repeated its request for
information Ford previously requested on November 2, 2019.
34
22. In an email dated July 21, 2021, Sisvel stated it “will focus on finding resolution
under the patents that are owned by Sisvel and its affiliates.” Sisvel requested “Ford’s sales
information relating to sales of products enabled with 3G and 4G communication technology.”
23. In an email dated August 26, 2021, Ford provided Sisvel with its revisions to
Sisvel’s proposed NDA.
24. In an email dated September 21, 2021, Sisvel provided details concerning its
“Mobile Communication Program,” which includes many patents Sisvel and its affiliates do not
own. Sisvel did not provide terms for a bilateral license with Ford for alleged SEPs Sisvel owns.
25. In an email dated October 1, 2021, Sisvel executed the NDA Ford previously
provided on August 26, 2021 stating “We look forward to the countersigned NDA and the
information regarding your relevant sales data we requested.”
26. On October 6, 2021, Ford counter-signed the NDA Sisvel signed on October 1,
2021.
27. On October 11, 2021, Ford and Sisvel engaged in a telephone conversation
regarding Sisvel’s SEP licensing program(s), and Ford’s request for a bilateral license offer for
patents owned by Sisvel and its affiliates.
28. In an email dated October 18, 2021, Sisvel provided Ford with Sisvel’s “Patent
Brochure” for “Sisvel Bilateral Offer” listing 1013 patents including among them the Patents in
Suit.
29. Sisvel’s October 18, 2021 email stated “We look forward to receive [sic] Ford’s
sales information we discussed, including indication between the sales of 3G multimode and 4G
multimode enabled products. This would allow us to make the next necessary steps in formulating
our license offer.”
35
30. On December 8, 2021, subject to the parties’ NDA, Ford provided Sisvel with
Ford’s confidential TCU volumes as Sisvel had requested on October 18, 2021 “to make the next
necessary steps in formulating [Sisvel’s] license offer.”
31. Just five days later, instead of providing Ford with terms of a bilateral license offer
to the SEPs Sisvel and its affiliates own, as Ford had requested and as Sisvel had promised, Sisvel
sued Ford for infringement of the Patents in Suit.
32. For at least these reasons, Sisvel has breached its obligation to license the Patents
in Suit on FRAND terms.
SECOND CAUSE OF ACTION

Non-Infringement of
U.S. Patent No. 7,751,803
33. Ford realleges and incorporates by reference the allegations in the foregoing
paragraphs.
requests a judicial determination and declaration that Ford does not and has not infringed,
contributed to the infringement of, or induced infringement of any claim of the ’803 Patent either
literally or under the doctrine of equivalents, willfully, or in any other manner.
35. Sisvel’s Complaint alleges that Ford infringes claim 17 of the ’803 Patent. Sisvel
has not supplied infringement claim charts or other analysis for other claims in the patent and
therefore has not properly plead infringement of any other claims as required by Bell Atlantic Corp.
v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 678 (2009).
36. Sisvel’s Complaint fails to articulate a sufficient basis for alleging that the accused
modem chipsets supplied to Ford infringe the asserted claims. Instead, Sisvel relies solely on 3GPP
36
specifications without any substantiation that the accused modem chipsets practice the specific
sections of the standard on which Sisvel relies on to allege infringement by those modem products.
37. In paragraph 34 of the Complaint, Sisvel alleges the “’803 patent relates to a system
and method that Plaintiffs believe is essential under the 3G cellular standard.”
38. The ’803 patent is not essential to the 3G cellular standard, and therefore Ford does
not infringe the patent, because, on information and belief, the “means plus function” limitations
in asserted claim 17 require circuit switching, which is not used in the current 3G cellular networks.
39. Ford also does not infringe the ’803 patent standard because the “means for
determining” in asserted claim 17 cannot be a zero-value timer and, on information and belief, at
least some network equipment, e.g., Nokia, set the timer T314, which Sisvel identifies in its claim
charts, to zero.
40. Ford also does not infringe the ‘803 patent because that patent is exhausted as to
TCUs on Ford production vehicles, all of which use Qualcomm baseband modem chipsets and
associated binaries. In July 2008, Nokia and Qualcomm entered a “15-year agreement” in which
“Nokia has agreed not to use any of its patents directly against Qualcomm, enabling Qualcomm to
integrate Nokia's technology into Qualcomm's chipsets.” (See
www.qualcomm.com/news/releases/2008/07/23/nokia-and-qualcomm-enter-new-agreement.)
Nokia’s authorization of Qualcomm’s manufacture and sale of its baseband modem chipsets
practicing Nokia’s ‘803 patent exhausted Nokia’s patent rights to the ‘803 patent under Quanta
Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) and Impression Products v. Lexmark
Intern., 581 U.S. 3 (2017). On information and belief, and subject to further discovery, the
assignment of the ‘803 patent to Sisvel in 2012 was subject to the July 2008 agreement between
37
Nokia and Qualcomm exhausting Sisvel’s right to sue for infringement of the ‘803 patent arising
from a Qualcomm baseband modem chipset installed in a Ford vehicle.
41. Absent a declaration of non-infringement, Sisvel will continue to wrongfully assert
the ’803 Patent against Ford and will continue to cause Ford injury and damage.
THIRD CAUSE OF ACTION

Non-Infringement of
paragraphs.
44. Sisvel’s Complaint alleges that Ford infringes claim 16 of the ’443 Patent. Sisvel
has not supplied infringement claim charts or other analysis for other claims in the patent and
therefore has not properly plead infringement of any other claims as required by Bell Atlantic Corp.
v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 678 (2009).
sections of the standard on which Sisvel relies on to alleged infringement by those modem
products.
and method that Plaintiffs believe is essential under the 3G cellular standard.” In the claim chart
38
accompanying the Complaint (Exhibit 7), Sisvel alleges claim 16 reads on the 3G standard because
“The Framing Info (FI) field meets the requirements of ‘indicat[ing] that a first data octet of the
protocol data unit is a first octet of a first service data unit and at least one other octet of the
protocol data unit is the last octet of another service data unit’” and because “at least one indicator
including a length indicator in the previous claim element is represented in the standard by the
couple LI and FI.”
47. The ’443 patent is not essential to the 3G cellular standard, and therefore does not
infringe the patent.
48. The ’443 patent was involved in an Inter Partes Review (“IPR”) in the U.S. Patent
and Trademark Office (“PTO”), Case No. IPR2020-01102.
49. The Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision on
January 18, 2022, finding claim 16 of the ’443 patent unpatentable.
50. In the IPR, Sisvel filed both a Patent Owner Preliminary Response (Paper 10) and
a Patent Owner Response (Paper 25), in which it requested the following construction of the phrase
“length indicator” (used in claim 16): “a single length indicator that provides two pieces of
information: (1) that a first data octet of the protocol data unit is a first octet of a first service data
unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service
data unit.”
51. In the Final Written Decision, the PTAB agreed with Sisvel and held the phrase
“length indicator” means “a single length indicator that provides two pieces of information: (1)
that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that
at least one other octet of the protocol data unit is the last octet of another service data unit.”
39
52. In its Patent Owner Response, Sisvel stated that a system that uses an LI and another
field does not meet the “length indicator” limitation: “Petitioner’s imagining of a one bit ‘field’
and a separate six bit ‘LI’ fails to meet the requirement of a single LI indicating both that ‘a first
data octet of the protocol data unit is a first octet of a first service data unit’ and that ‘at least one
other octet of the protocol data unit is the last octet of another service data unit.’”
53. Because Sisvel relies on a combination of the FI and LI fields of the 3G standard
for its claim of infringement, which cannot be a “single length indicator” as Sisvel says the claim
requires, claim 16 does not cover the standard and Sisvel has not established infringement.
associated binary files. In July 2008, Nokia and Qualcomm entered a “15-year agreement” in
which “Nokia has agreed not to use any of its patents directly against Qualcomm, enabling
Qualcomm to integrate Nokia's technology into Qualcomm's chipsets.” (See
Nokia and Qualcomm thereby exhausting Sisvel’s right to sue for infringement of the ‘443 patent
arising from a Qualcomm baseband modem chipset installed in a Ford vehicle.
40
FOURTH CAUSE OF ACTION

Non-Infringement of
paragraphs.
58. Sisvel’s Complaint alleges that Ford infringes claims 1, 2 and 5 of the ’070 Patent.
Sisvel has not supplied infringement claim charts or other analysis for other claims in the patent
and therefore has not properly plead infringement of any other claims as required by Bell Atlantic
Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 678 (2009).
products.
60. The ’070 patent expired November 5, 2020.
61. On information and belief, Sisvel and its licensees failed to mark products Sisvel
asserts are covered by the Patents in Suit as required by 35 U.S.C. § 287(a).
62. Prior to the expiration of the ’070 patent, Sisvel did not give Ford actual notice of
alleged infringement as required by 35 U.S.C. § 287(a).
41
63. Ford is not liable for any alleged infringement of a patent that has expired and for
which no notice was given as required by 35 U.S.C. § 287(a).
associated binary files. In July 2008, Nokia and Qualcomm entered a “15-year agreement” in
which “Nokia has agreed not to use any of its patents directly against Qualcomm, enabling
Qualcomm to integrate Nokia's technology into Qualcomm's chipsets.” (See
Nokia and Qualcomm thereby exhausting Sisvel’s right to sue for infringement of the ‘070 patent
arising from a Qualcomm baseband modem chipset installed in a Ford vehicle.
FIFTH CAUSE OF ACTION

Non-Infringement of
paragraphs.
42
68. Sisvel’s Complaint alleges that Ford infringes claims 1, 9, 17, 25, 49, 58, 66, 74,
82, and 90 of the ’383 Patent. Sisvel has not supplied infringement claim charts or other analysis
for other claims in the patent and therefore has not properly plead infringement of any other claims
as required by Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556
U.S. 678 (2009).
products.
70. Ford does not infringe the ’383 patent because Ford is licensed under that patent
pursuant to an October 24, 2016 Patent Cross License Agreement between Ford and Blackberry.
SIXTH CAUSE OF ACTION

Non-Infringement of
paragraphs.
43
74. Sisvel’s Complaint alleges that Ford infringes claims 1 and 11 of the ’279 Patent.
Sisvel has not supplied infringement claim charts or other analysis for other claims in the patent
and therefore has not properly plead infringement of any other claims as required by Bell Atlantic
Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 678 (2009).
products.
and method that Plaintiffs believe is essential under the 4G cellular standard.”
77. Claims 1 and 11 each include a limitation that requires receiving “a Physical
Downlink Control Channel (PDCCH) signal with a Radio Network Temporary Identifier (RNTI),
wherein the PDCCH signal includes a first field related to a resource allocation.”
78. In the 4G standard, no RNTI exists in the PDCCH signal, so the 4G standard does
not include a PDCCH signal with an RNTI as the asserted claims require. Because the asserted
claims do not read on the standard, Sisvel has not established infringement by Ford.
79. On information and belief, and subject to further discovery, the ‘279 patent is
exhausted as to Ford TCUs including a Network Access Device (“NAD”) manufactured and sold
by LG Innotek. On information and belief, and subject to further discovery, LG Innotek holds a
license or other authorization from LG Electronics, Inc. permitting LG Innotek to manufacture and
44
sell NADs practicing the ‘279 patent. On information and belief, and subject to further discovery,
the transfer of the ‘279 patent to Sisvel is subject to the license or authorization from LG
Electronics, Inc to LG Innotek.
PRAYER FOR RELIEF
For these reasons, Ford prays for the following relief:
a. that the Court dismiss Sisvel’s claims in its Complaint against Ford with prejudice,
and enter judgment on the Complaint in favor of Ford and against Sisvel;
b. that the Court deny all relief requested by Sisvel in its Complaint;
c. that the Court enter judgment in favor of Ford and against Sisvel on Ford’s
Counterclaims;
d. that the Court declare that Ford does not and has not infringed, contributed to the
infringement of, or induced infringement of any valid and enforceable claim of the
Patents in Suit;
e. that the Court find Sisvel has breached its contractual obligations under the ETSI
IPR policy to license the Patents in Suit, on FRAND terms;
f. that the Court award of the amount of damages that Ford proves at trial and, as
appropriate, exemplary damages;
g. that the Court grant Ford all reasonable attorneys’ fees, experts’ fees, and costs; and
h. that the Court grant Ford such further relief as the Court deems proper and just.
45
DEMAND FOR JURY TRIAL
Ford Motor Company demands a trial by jury on all issues so triable.
Dated: February 3, 2022
OF COUNSEL:
/s/ Kenneth L. Dorsney
BROOKS KUSHMAN P.C. Kenneth L. Dorsney (#3726)
John S. LeRoy Cortlan S. Hitch (#6720)
Thomas A. Lewry MORRIS JAMES LLP
Christopher C. Smith 500 Delaware Ave., Ste. 1500
Reza Roghani Esfahani Wilmington, DE 19801-1494
1000 Town Center, 22nd Floor (302) 888-6800
Southfield, Michigan 48075-1238 kdorsney@morrisjames.com
(248) 358-4400 chitch@morrisjames.com
jleroy@brookskushman.com
tlewry@brookskushman.com Attorneys for Defendant
csmith@brookskushman.com Ford Motor Company
resfahani@brookskushman.com
46

22-02-03 Ford Answer To Sisvel Complaint D.del. 21-Cv-1745

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Case 1:21-cv-01745-MN Document 8 Filed 02/03/22 Page 1 of 46 PageID #: 220

IN THE UNITED STATES DISTRICT COURT

SISVEL INTERNATIONAL S.A.,

Plaintiffs, PATENT CASE

FORD MOTOR COMPANY, JURY TRIAL DEMANDED

ANSWER TO COMPLAINT FOR PATENT

NATURE OF THE ACTION

States, 35 U.S.C. § 1 et seq.

2. Sisvel International S.A. (“Sisvel”) is an entity organized under the laws of

this paragraph, and on that basis, denies them.

this paragraph, and on that basis, denies them.

Italiana per lo Sviluppo Dell’Elettronica.”

this paragraph, and on that basis, denies them.

5. Founded in Italy in 1982, Sisvel is a world leader in fostering innovation and

stakeholders; developing multiparty license agreements; executing and administering licenses; to

government bodies, standard-setting organizations and industry associations.

this paragraph, and on that basis, denies them.

subsidiary, Sisvel US Inc.

this paragraph, and on that basis, denies them.

7. A subsidiary of Sisvel founded in 2015, 3G Licensing, is an intellectual property

composed of specialists with an extensive experience in administering licensing programs on

behalf of third-party companies and organizations.

this paragraph, and on that basis, denies them.

8. A subsidiary of Sisvel founded in 1982, Sisvel S.p.A., is an intellectual property

company operating primarily in areas of wireless communication, audio/video coding/decoding,

on behalf of third-party companies and organizations.

this paragraph, and on that basis, denies them.

10. Defendant maintains a registered agent for service of process in Delaware at

JURISDICTION AND VENUE

benefits of the laws of the State of Delaware.

ANSWER: Denied, except that Ford admits that venue is proper.

among other such products. (Collectively “Accused Instrumentalities”.)

hereto as Exhibit 1.)

hereto as Exhibit 2.)

hereto as Exhibit 3.)

vehicles Defendant manufactures, offers for sale and sells.

Connect, and FordPass SmartLink into one or more vehicles.

technology for cellular communications networks, including variations or generations of cellular

this paragraph, and on that basis, denies them.

20. Cellular communication network technology is used to provide data transmission

across mobile cellular networks.

Sisvel obtained ownership of the ’803 and the ’443 patents.

this paragraph, and on that basis, denies them.

this paragraph, and on that basis, denies them.

allegations in this paragraph, and on that basis, denies them.

from Thomson Licensing SAS.

allegations in this paragraph, and on that basis, denies them.

this paragraph, and on that basis, denies them.

identified its 3G standard patents.

ANSWER: After a reasonably diligent investigation, Ford lacks sufficient information or

4G standard essential patents, and a draft non-disclosure agreement.

2019 and September 23, 2019, respectively. (See Complaint ¶¶ 23-34.)

the offered patents.

COUNT I – INFRINGEMENT OF U.S. PATENT NO. 7,751,803

into this First Claim for Relief.

ANSWER: Ford incorporates its answers to the previous allegations.

Optimizing the Re-Establishment of Connections In a Cellular Radio System Supporting Real

correct copy of the ’803 patent is attached as Exhibit 4.

this paragraph, and on that basis, denies them.

to any remedies for infringement of them.

this paragraph, and on that basis, denies them.

Instrumentalities necessarily infringing the ʼ803 patent.

necessarily infringing the ʼ803 patent.