1 

DM2\20511025.1 

IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES, 

 Plaintiff, 

v. 

AT&T SERVICES INC.; AT&T MOBILITY 

LLC; and AT&T CORP., 

 Defendants, 

NOKIA OF AMERICA CORPORATION, 

Intervenor.

Case No. 2:23-cv-00202-JRG-RSP 

(Lead Case) 

JURY TRIAL DEMANDED 

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES, 

 Plaintiff, 

v. 

VERIZON COMMUNICATIONS INC., 

CELLCO PARTNERSHIP D/B/A VERIZON 

WIRELESS, 

 Defendants, 

NOKIA OF AMERICA CORPORATION, 

Intervenor. 

Case No. 2:23-cv-00203-JRG-RSP 

(Member Case) 

NOKIA OF AMERICA CORPORATION’S AMENDED ANSWER AND

COUNTERCLAIMS IN INTERVENTION 

Intervenor Nokia of America Corporation (“Nokia” or “Intervenor”), hereby amends its 

Answer and Counterclaims to the Complaint of Plaintiff XR Communications, LLC dba Vivato 

Technologies’ (“XR” or “Plaintiff”) against Defendants Verizon Communications, Inc., Cellco 

Partnerships d/b/a Verizon Wireless (collectively, “Defendants” or “Verizon”), as follows: 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 1 of 29 PageID #:

3163
2 

DM2\20511025.1 

SCOPE OF NOKIA’S ANSWER IN INTERVENTION 

Nokia’s use of headings in this Answer in Intervention is for convenience only and is not 

an admission as to any of Plaintiff’s allegations in the Complaint. 

Nokia further denies that any patent claims in this action are valid or enforceable. Nokia 

further reserves the right to amend or supplement its Answer in Intervention based on any 

additional facts or developments that become available or that arise after the filing of this Answer 

in Intervention. 

Nokia denies each and every allegation averred in the Complaint that is not expressly 

admitted below. Any factual allegation admitted below is admitted only as to the specific admitted 

facts, and not as to any purported conclusions, characterizations, implications, or speculations that 

might follow from the admitted facts. 

INTRODUCTION 

1. Nokia admits that the Complaint purports to make a claim for patent infringement 

of U.S. Patent Nos. 8,737,511 (the “’511 Patent”), 10,715,235 (the “’235 Patent”), 10,594,376 (the 

“’376 Patent”), 7,177,369 (the “’369 Patent”), and 8,289,939 (the “’939 Patent”), and collectively 

refers to the patents as the “Asserted Patents.” Nokia lacks knowledge or information sufficient 

to form a belief as to the ownership of the Asserted Patents. Nokia denies that Verizon has 

infringed any of the Asserted Patents through Verizon’s use of Nokia equipment. To the extent 

this paragraph contains any additional factual allegations, Nokia lacks knowledge or information 

sufficient to form a belief as to the truth of those allegations, and therefore denies the same. 

2. Nokia admits that electronic devices connect to the Internet wirelessly and allow 

people to communicate with each other. Nokia lacks knowledge or information sufficient to form 

a belief as to the truth of the remaining allegations of Paragraph 2, and therefore denies the same. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 2 of 29 PageID #:

3164
3 

DM2\20511025.1 

3. Nokia admits that Guglielmo Marconi was granted a British Patent (No. 12039), 

but denies that it occurred in 1896. Nokia admits that British Patent (No. 12039) was titled 

“Improvements in Transmitting Electrical impulses and Signals, and in Apparatus therefor.” Nokia 

admits that Guglielmo Marconi shared the Nobel Prize in Physics with Karl Ferdinand Braun in 

1909. Nokia lacks knowledge or information sufficient to form a belief as to the truth of the 

remaining allegations of Paragraph 3, and therefore denies the same. 

4. Nokia admits that Guglielmo Marconi shared the Nobel Prize in Physics with Karl 

Ferdinand Braun in 1909. Nokia admits that Karl Ferdinand Braun gave a Nobel Lecture dated 

December 11, 1909. Nokia lacks knowledge or information sufficient to form a belief as to the 

truth of the remaining allegations of Paragraph 4, and therefore denies the same. 

5. Nokia admits that Karl Ferdinand Braun is credited with inventions related to radio 

waves. Nokia admits that Karl Ferdinand Braun’s December 11, 1909 Nobel Lecture described 

his experiments with antennas. Nokia lacks knowledge or information sufficient to form a belief 

as to the truth of the remaining allegations of Paragraph 5, and therefore denies the same. 

6. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 6, and therefore denies the same. 

7. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 7, and therefore denies the same. 

8. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 8, and therefore denies the same. 

9. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 9, and therefore denies the same. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 3 of 29 PageID #:

3165
4 

DM2\20511025.1 

THE PARTIES 

10. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 10, and therefore denies the same. 

11. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 11, and therefore denies the same. 

12. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 12, and therefore denies the same. 

13. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 13, and therefore denies the same. 

14. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 14, and therefore denies the same. 

15. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 15, and therefore denies the same. 

16. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 16, and therefore denies the same. 

17. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 17, and therefore denies the same. 

18. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 18, and therefore denies the same. 

19. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 19, and therefore denies the same. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 4 of 29 PageID #:

3166
5 

DM2\20511025.1 

JURISDICTION AND VENUE 

20. Nokia admits that the Complaint purports to state a claim for patent infringement 

arising under Title 35 of the United States Code. Nokia admits that this Court has subject matter 

jurisdiction over patent-law claims generally pursuant to 28 U.S.C. §§ 1331 and 1338(a). 

21. To the extent that the allegations of Paragraph 21 of the Complaint set forth legal 

conclusions, no response is required. Nokia denies that Verizon has infringed any of the Asserted 

Patents through Verizon’s use of Nokia equipment. Nokia lacks knowledge or information 

sufficient to form a belief as to the truth of the remaining allegations of Paragraph 21 concerning 

personal jurisdiction over Verizon, and therefore denies the same. 

22. To the extent that the allegations of Paragraph 22 of the Complaint set forth legal 

conclusions, no response is required. Nokia denies that Verizon has infringed any of the Asserted 

Patents through Verizon’s use of Nokia equipment. Nokia lacks knowledge or information 

sufficient to form a belief as to the truth of the remaining allegations of Paragraph 22, and therefore 

denies the same. 

23. To the extent that the allegations of Paragraph 23 of the Complaint set forth legal 

conclusions, no response is required. Nokia denies that Verizon has infringed any of the Asserted 

Patents through Verizon’s use of Nokia equipment. Nokia, however, does not contest that venue 

in this District is proper pursuant to 28 U.S.C. § 1400(b) for purposes of this action only; but it 

does deny that this is the most convenient forum in which to try this case. Nokia lacks knowledge 

or information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 

23, and therefore denies the same. 

24. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 24, and therefore denies the same. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 5 of 29 PageID #:

3167
6 

DM2\20511025.1 

25. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 25, and therefore denies the same. 

26. Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 26, and therefore denies the same. 

COUNT I 

INFRINGEMENT OF U.S. PATENT NO. 8,737,511 

27. No response is required to Plaintiff’s reference and incorporation of Paragraphs 

above. To the extent a response is deemed required, Nokia repeats and incorporates by reference, 

as if fully set forth herein, their answers to Paragraphs 1-26, as set forth above. 

28. Nokia admits that Exhibit 1 to the Complaint purports to be a true and correct copy 

of U.S. Patent No. 8,737,511 (the “’511 Patent”) entitled “Directed MIMO Communications.” 

Nokia lacks knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 28, and therefore denies the same. 

29. Nokia denies that Verizon has infringed any of the referenced claims of the ’511 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

30. Nokia denies that Verizon has infringed any of the referenced claims of the ’511 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

31. Nokia denies that Verizon has infringed any of the referenced claims of the ’511 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 6 of 29 PageID #:

3168
7 

DM2\20511025.1 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

32. Nokia admits that Exhibit 2 attached to the Complaint purports to be a claim chart 

related to the ’511 Patent. Nokia denies the remaining allegations in Paragraph 32 of the 

Complaint. 

33. Nokia denies that Verizon has infringed any of the referenced claims of the ’511 

Patent through Verizon ’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

34. Nokia denies that Verizon has infringed any of the referenced claims of the ’511 

Patent through Verizon’s use of Nokia equipment and therefore denies that Plaintiff is entitled to 

any relief. To the extent this paragraph contains any additional factual allegations, Nokia lacks 

knowledge or information sufficient to form a belief as to the truth of those allegations, and 

therefore denies the same. 

35. Nokia denies the allegations in Paragraph 35 of the Complaint. 

36. Nokia denies the allegations in Paragraph 36 of the Complaint. 

COUNT II 

INFRINGEMENT OF U.S. PATENT NO. 10,715,235 

37. No response is required to Plaintiff’s reference and incorporation of Paragraphs 

above. To the extent a response is deemed required, Nokia repeats and incorporates by reference, 

as if fully set forth herein, their answers to Paragraphs 1-36, as set forth above. 

38. Nokia admits that Exhibit 3 to the Complaint purports to be a true and correct copy 

of U.S. Patent No. 10,715,235 (the “’235 Patent”) entitled “Directed Wireless Communications.” 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 7 of 29 PageID #:

3169
8 

DM2\20511025.1 

Nokia lacks knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 38, and therefore denies the same. 

39. Nokia denies that Verizon has infringed any of the referenced claims of the ’235 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

40. Nokia denies that Verizon has infringed any of the referenced claims of the ’235 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

41. Nokia denies that Verizon has infringed any of the referenced claims of the ’235 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

42. Nokia admits that Exhibit 4 attached to the Complaint purports to be a claim chart 

related to the ’235 Patent. Nokia denies the remaining allegations in Paragraph 42 of the 

Complaint. 

43. Nokia denies that Verizon has infringed any of the referenced claims of the ’235 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

44. Nokia denies that Verizon has infringed any of the referenced claims of the ’235 

Patent through Verizon’s use of Nokia equipment and therefore denies that Plaintiff is entitled to 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 8 of 29 PageID #:

3170
9 

DM2\20511025.1 

any relief. To the extent this paragraph contains any additional factual allegations, Nokia lacks 

knowledge or information sufficient to form a belief as to the truth of those allegations, and 

therefore denies the same. 

45. Nokia denies the allegations in Paragraph 45 of the Complaint. 

46. Nokia denies the allegations in Paragraph 46 of the Complaint. 

COUNT III 

INFRINGEMENT OF U.S. PATENT NO. 10,594,376 

47. No response is required to Plaintiff’s reference and incorporation of the Paragraphs 

above. To the extent a response is deemed required, Nokia repeats and incorporates by reference, 

as if fully set forth herein, their answers to Paragraphs 1- 46, as set forth above. 

48. Nokia admits that Exhibit 5 to the Complaint purports to be a true and correct copy 

of U.S. Patent No. 10,594,376 (the “’376 Patent”) entitled “Directed Wireless Communications.” 

Nokia lacks knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 48, and therefore denies the same. 

49. Nokia denies that Verizon has infringed any of the referenced claims of the ’376 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

50. Nokia denies that Verizon has infringed any of the referenced claims of the ’376 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

51. Nokia denies that Verizon has infringed any of the referenced claims of the ’376 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 9 of 29 PageID #:

3171
10 

DM2\20511025.1 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

52. Nokia admits that Exhibit 6 attached to the Complaint purports to be a claim chart 

related to the ’376 Patent. Nokia denies the remaining allegations in Paragraph 52 of the 

Complaint. 

53. Nokia denies that Verizon has infringed any of the referenced claims of the ’376 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

54. Nokia denies that Verizon has infringed any of the referenced claims of the ’376 

Patent through Verizon’s use of Nokia equipment and therefore denies that Plaintiff is entitled to 

any relief. To the extent this paragraph contains any additional factual allegations, Nokia lacks 

knowledge or information sufficient to form a belief as to the truth of those allegations, and 

therefore denies the same. 

55. Nokia denies the allegations in Paragraph 55 of the Complaint. 

56. Nokia denies the allegations in Paragraph 56 of the Complaint. 

COUNT IV 

INFRINGEMENT OF U.S. PATENT NO. 7,177,369 

57. No response is required to Plaintiff’s reference and incorporation of Paragraphs 

above. To the extent a response is deemed required, Nokia repeats and incorporates by reference, 

as if fully set forth herein, their answers to Paragraphs 1-56, as set forth above. 

58. Nokia admits that Exhibit 7 to the Complaint purports to be a true and correct copy 

of U.S. Patent No. 7,177,369 (the “’369 Patent”) entitled “Multipath Communication Methods and 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 10 of 29 PageID

#: 3172
11 

DM2\20511025.1 

Apparatuses.” Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the remaining allegations of Paragraph 58, and therefore denies the same. 

59. Nokia denies that Verizon has infringed any of the referenced claims of the ’369 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

60. Nokia denies that Verizon has infringed any of the referenced claims of the ’369 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

61. Nokia denies that Verizon has infringed any of the referenced claims of the ’369 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

62. Nokia admits that Exhibit 8 attached to the Complaint purports to be a claim chart 

related to the ’369 Patent. Nokia denies the remaining allegations in Paragraph 62 of the 

Complaint. 

63. Nokia denies that Verizon has infringed any of the referenced claims of the ’369 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

64. Nokia denies that Verizon has infringed any of the referenced claims of the ’369 

Patent through Verizon’s use of Nokia equipment and therefore denies that Plaintiff is entitled to 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 11 of 29 PageID

#: 3173
12 

DM2\20511025.1 

any relief. To the extent this paragraph contains any additional factual allegations, Nokia lacks 

knowledge or information sufficient to form a belief as to the truth of those allegations, and 

therefore denies the same. 

65. Nokia denies the allegations in Paragraph 65 of the Complaint. 

66. Nokia denies the allegations in Paragraph 66 of the Complaint. 

COUNT V 

INFRINGEMENT OF U.S. PATENT NO. 9,289,9391 

67. No response is required to Plaintiff’s reference and incorporation of Paragraphs 

above. To the extent a response is deemed required, Nokia repeats and incorporates by reference, 

as if fully set forth herein, their answers to Paragraphs 1-67, as set forth above. 

68. Nokia denies that Exhibit 9 to the Complaint attaches a true and correct copy of 

U.S. Patent No. 9,289,939. Nokia admits that Exhibit 9 to the Complaint purports to be a true and 

correct copy of U.S. Patent No. 8,289,939 (the “’939 Patent”) entitled “Signal Communication 

Coordination.” Nokia lacks knowledge or information sufficient to form a belief as to the truth of 

the remaining allegations of Paragraph 68, and therefore denies the same. 

69. Nokia denies that Verizon has infringed any of the referenced claims of the ’939 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

70. Nokia denies that Verizon has infringed any of the referenced claims of the ’939 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

1

 Nokia copies Plaintiff’s Headings for ease of reference, but notes that the Asserted Patent is U.S. 

Patent No. 8,289,939, not 9,289,939. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 12 of 29 PageID

#: 3174
13 

DM2\20511025.1 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

71. Nokia denies that Verizon has infringed any of the referenced claims of the ’939 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

72. Nokia admits that Exhibit 10 attached to the Complaint purports to be a claim chart 

related to the ’939 Patent. Nokia denies the remaining allegations in Paragraph 72 of the 

Complaint. 

73. Nokia denies that Verizon has infringed any of the referenced claims of the ’939 

Patent through Verizon’s use of Nokia equipment. To the extent this paragraph contains any 

additional factual allegations, Nokia lacks knowledge or information sufficient to form a belief as 

to the truth of those allegations, and therefore denies the same. 

74. Nokia denies that Verizon has infringed any of the referenced claims of the ’939 

Patent through Verizon’s use of Nokia equipment and therefore denies that Plaintiff is entitled to 

any relief. To the extent this paragraph contains any additional factual allegations, Nokia lacks 

knowledge or information sufficient to form a belief as to the truth of those allegations, and 

therefore denies the same. 

75. Nokia denies the allegations in Paragraph 75 of the Complaint. 

76. Nokia denies the allegations in Paragraph 76 of the Complaint. 

PRAYER FOR RELIEF 

These Paragraphs set forth the statement of relief requested by Plaintiff to which no 

response is required. Nokia denies that Plaintiff is entitled to any relief and specifically denies all 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 13 of 29 PageID

#: 3175
14 

DM2\20511025.1 

the allegations and prayers for relief contained in Paragraphs (a) through (f) of Plaintiff’s Prayer 

for Relief. 

DEFENSES 

Subject to the responses above, Nokia alleges and asserts the following defenses in 

response to the allegations, without admitting or acknowledging that Nokia bears the burden of 

proof as to any of them or that any must be pleaded as defenses. Nokia specifically reserves all 

rights to allege additional defenses that become known through the course of discovery. 

FIRST DEFENSE 

(NO INFRINGEMENT) 

1. Nokia equipment and technology supplied to Verizon has not infringed and does 

not infringe, either literally or under the doctrine of equivalents, any valid and enforceable claim 

of the Asserted Patents, in any manner including under any section of 35 U.S.C. § 271, including 

35 U.S.C. §271(a), (b), and/or (c), willfully or otherwise. Verizon has not performed any act and 

are not proposing to perform any act in violation of any rights validly belong to Plaintiff. 

SECOND DEFENSE 

(INVALIDITY) 

2. The asserted claims of the Asserted Patents are invalid for failure to satisfy the 

requirements of 35 U.S.C. § 100, et seq., including, but not limited to, one or more of the following: 

35 U.S.C. §§ 101, 102, 103, and/or 112. For example, each claim is invalid in view of the 

references cited by the Examiner and arguments made by the Applicants during prosecution of the 

applications that issued as the Asserted Patents. 

THIRD DEFENSE 

(NOTICE, DAMAGES, AND COSTS) 

3. Plaintiff’s claims for damages are statutorily limited under 35 U.S.C. §§ 252, 286, 

287, or 307. To the extent Plaintiff or its licensees have failed to comply with the marking and 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 14 of 29 PageID

#: 3176
15 

DM2\20511025.1 

notice requirements of 35 U.S.C. § 287(a), Plaintiff’s requested relief is barred, in whole or in part, 

for any damages arising from Verizon’s alleged infringement prior to at least the date of the filing 

of the original Complaint or otherwise limited by 35 U.S.C. § 286. 

4. Plaintiff is barred from recovering costs in connection with this action under 35 

U.S.C. § 288. 

5. Plaintiff’s claims for relief are limited by the doctrines of full compensation, 

exhaustion, and/or first sale, and Plaintiff is not entitled to a double recovery. 

FOURTH DEFENSE 

(PROSECUTION HISTORY ESTOPPEL) 

6. Plaintiff’s claims are barred by the doctrine of prosecution history estoppel based 

on statements, representations, and admissions made during the prosecution of the patent 

applications resulting in the Asserted Patents before the United States Patent and Trademark Office 

and/or during the prosecution of related patent applications. 

FIFTH DEFENSE 

(FAILURE TO STATE A CLAIM) 

7. The Complaint fails to state a claim upon which relief can be granted. 

SIXTH DEFENSE 

(LICENSE, IMPLIED LICENSE, AND/OR EXHAUSTION)

8. Plaintiff’s claims for patent infringement are precluded in whole or in part (i) to the 

extent that any allegedly infringing products or components thereof are supplied, directly or 

indirectly, by any entity or entities having express or implied licenses or covenant not to sue or 

assert to the Asserted Patents and/or (ii) under the doctrine of patent exhaustion. Additionally, 

Plaintiff’s claims for patent infringement are precluded in whole or in part to any direct licenses 

or agreements/covenants not to sue that pertain to Verizon or Nokia. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 15 of 29 PageID

#: 3177
16 

DM2\20511025.1 

9. By way of non-limiting example, Plaintiff’s claims for patent infringement are 

barred, in whole or in part, by a prior license entered into between Plaintiff and 

for which was an Initial Licensee, the benefits of which inure to 

 customers and downstream manufacturers whose products incorporate 

components, including Nokia’s 5G base stations that are accused of infringement in this case. 

10. On September 11, 2024, Plaintiff entered into a license agreement with 

 is identified in the license agreement in Exhibit A as 

an “Initial Licensee.” A copy of the license agreement was produced by Plaintiff at XR-EDTX1-

00054791 (the “ License”). 

11. As part of the License, Plaintiff granted to a 

” under the “Patents” to 

 and to Subsidiaries and 

Third Parties, 

12. The “Patents” under the License include each of the Patents-in-Suit in this 

case, along with 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 16 of 29 PageID

#: 3178
17 

DM2\20511025.1 

13. The license extends to any which are 

products, including those used or sold by third parties, that combine 

14. At least some of Nokia’s 5G base stations accused of infringement in this case 

constitute a because they incorporate chips fabricated 

by or its affiliates that are a under 

the License, and those chips contain functionality that is accused of satisfying a material 

element or a material step of a claim in the Asserted Patents. 

15. Specifically, a number of the Asserted Claims of the Asserted Patents in this case 

require computation of information about received signals, and Nokia’s 5G base stations are 

accused of performing these computations, including, for example, channel estimation of uplink 

received signals. 

16. Further, a number of the Asserted Claims of the Asserted Patents in this case require 

“determin[ing] a set of weight values” based on these computations and using these weighting 

values to transmit signals. Nokia’s 5G base stations are accused of computing these weighting 

values. 

17. Further, a number of the Asserted Claims of the Asserted Patents are directed to 

“MIMO transceivers” that communicate with antenna arrays. Portions of Nokia’s 5G base stations 

are accused of being these “MIMO transceivers” that communicate with antenna arrays. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 17 of 29 PageID

#: 3179
18 

DM2\20511025.1 

18. Further, under Plaintiff’s apparent theory of infringement, a number of the Asserted 

Claims of the Asserted Patents are directed to scheduling uplink and downlink transmissions. 

Portions of Nokia’s 5G base stations are accused of making these scheduling decisions. 

19. The chips fabricated by or its affiliates are responsible for these 

computations, including for channel estimation computations, weight computations, 

communication with antenna arrays, and scheduling. Thus, the chips are involved in all of the 

functionalities that Plaintiff alleges to be a material part of the functionality that infringes the 

claims. For at least that reason, the Nokia’s base stations that incorporate this chip are a 

 under the License. 

20. Plaintiff’s claims are therefore barred or limited to the extent they assert 

infringement by Nokia 5G base stations that qualify as a 

under the License. 

SEVENTH DEFENSE 

(INEQUITABLE CONDUCT)

21. Plaintiff’s enforcement of at least the ’235 Patent, the ’376 Patent, and the ’939 

Patent is barred by inequitable conduct, as follows: 

22. The ’235, ’376, and ’939 Patents all ultimately arose from applications originally 

filed in 2003 as Application Serial Numbers 10/700,329 for the ʼ235 and ʼ376 Patents and 

10/700,342, for the ʼ939 Patent. 

23. By fall of 2007, the ’329 and ’342 applications were owned by Vivato Networks, 

Inc. 

24. In December 2007, Vivato Networks merged with Catcher Holdings, Inc. 

(“Catcher”), and transferred the patent applications to Vivato Networks Holdings, Inc. (“Vivato 

Holdings”). Vivato Holdings granted Catcher the exclusive right to prosecute the applications. On 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 18 of 29 PageID

#: 3180
19 

DM2\20511025.1 

April 1, 2008, Catcher ceased operations and terminated all employees due to a lack of working 

capital. 

25. In late April or early May 2008, Brooks withdrew as the attorney of record for the 

’329 and ’342 applications. 

26. In June 2008, Aequitas Equipment Finance, LLC (“Aequitas”), assignee of 

Aequitas Capital’s security interest in the applications, sought to foreclose on the ’329 and ’342 

applications, each of which became abandoned between June and July 2008 for failure to respond 

to office actions from the United States Patent and Trademark Office (“USPTO”). 

27. In April 2009, Aequitas obtained a foreclosure judgment against Vivato Networks 

and Vivato Holdings, and took title of the abandoned applications through a sheriff’s sale. 

28. In fall 2009, Carl J. Schwedler, attorney for Aequitas, filed petitions to revive the 

’329 and ’342 applications. As part of each of those petitions, Schwedler represented that the 

entire period of delay from the due date for filing a reply to the pending USPTO office actions to 

the date of the petitions, was unintentional under 37 C.F.R. § 1.137(b)(4). 

29. Upon information and belief, Schwedler’s representation that the delay in 

prosecuting the applications was unintentional was false. 

30. The USPTO granted the petitions filed by Aequitas to revive the ’342 application, 

but denied the petition to revive the ’329 application. In December 2009, Aequitas sold its patent 

portfolio (including the revived ’342 application and the still-abandoned ’329 application) to 

Plaintiff XR. 

31. In 2010, XR took responsibility for prosecuting the patent applications. 

32. On November 8, 2010, Daniel P. Burke, an attorney for XR, filed a renewed petition 

to revive the ’329 application. In doing so, Burke represented to the USPTO that the entire period 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 19 of 29 PageID

#: 3181
20 

DM2\20511025.1 

of delay from the due date for filing a reply to the pending USPTO office action to the date of the 

petition was unintentional. 

33. Upon information and belief, Burke’s representation that delay in prosecuting the 

applications was unintentional was false, and XR itself would not have had knowledge of the 

circumstances surrounding the abandonment of the applications. 

34. Upon information and belief, the delay that resulted in abandonment of the ’329 

and ’342 applications was not unintentional. 

35. Upon information and belief, Aequitas and XR falsely certified that the entire 

period of delay in replying to the PTO was unintentional. 

36. Upon information and belief, the false representations that the entire period of delay 

in responding to the USPTO with respect to the ’329, and ’342 applications was unintentional were 

made with intent to deceive the USPTO into granting the petitions to revive. Specifically, upon 

information and belief, the following petitions to revive (and requests for reconsideration) 

contained knowingly false statements made with intent to deceive, and were material to the 

USPTO’s decision to revive the applications and ultimately issue the Patents-in-Suit: 

a. The petition to revive the ’329 application, filed on August 28, 2009 by 

Schwedler; 

b. The petition to revive the ’342 application, filed on November 3, 2009 by 

Schwedler; 

c. The request for reconsideration of the dismissal of the petition to revive the 

’329 application, filed on November 18, 2009 by Schwedler; and 

d. The renewed petition to revive the ’329 application, filed on November 8, 

2010 by Burke. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 20 of 29 PageID

#: 3182
21 

DM2\20511025.1 

37. Upon information and belief, the false representations that the entire period of delay 

in responding to the USPTO with respect to the ’329 and ’342 applications was unintentional were 

material to the USPTO, because without that false representation the USPTO would not have 

ultimately granted the petitions to revive and the ’235, ’376, and ’939 Patents never would have 

issued. 

38. Accordingly, upon information and belief, Aequitas, XR and their counsel engaged 

in inequitable conduct in reviving the ’329 and ’342 applications. 

EIGHTH DEFENSE 

(STATUTORY LIMITATIONS)

39. To the extent certain equipment accused of infringing the Asserted Patents are used 

by and/or manufactured for the United States Government and/or public good, Plaintiff’s claims 

involving Verizon or Nokia equipment or technology may not be pursued in this Court and are 

subject to other limitations pursuant to 28 U.S.C. § 1498. 

NINTH DEFENSE 

(NO ENTITLEMENT TO INJUNCTIVE RELIEF) 

40. XR is not entitled to injunctive relief. Under eBay v. MercExchange, LLC, 547 U.S. 

388 (2006), any alleged injury to XR would not be immediate or irreparable, XR would have an 

adequate remedy at law, and the balance of hardships does not warrant injunctive relief. 

RESERVATION OF DEFENSES 

Nokia hereby reserves the right to supplement defenses as discovery proceeds in this case. 

INTERVENOR NOKIA OF AMERICA CORPORATION’S COUNTERCLAIMS 

Without admitting any of the allegations of the Complaint other than those expressly 

admitted herein, and without prejudice to the right to plead any additional counterclaims as the 

facts of the matter warrant, pursuant to Rule 13 of the Federal Rules of Civil Procedure, Nokia of 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 21 of 29 PageID

#: 3183
22 

DM2\20511025.1 

America Corporation (“Nokia”) asserts the following counterclaims against Plaintiff XR 

Communications, LLC (“Plaintiff” or “XR”): 

Parties 

1. Intervenor Nokia is a Delaware Corporation with its principal place of business at 

600-700 Mountain Avenue, Murray Hill, NJ 07974. 

2. Upon information and belief, and according to the allegations in its Complaint, 

Plaintiff XR Communications, LLC is a Delaware limited liability company with a principal place 

of business at 2809 Ocean Front Walk, Venice, California 90291. 

3. Plaintiff’s Complaint alleges that it is the “sole owner by assignment of all right, 

title, and interest in each Asserted Patent.” 

Jurisdiction and Venue 

4. This Court has subject matter jurisdiction over these counterclaims under 28 U.S.C. 

§§ 1331, 1338(a), 28 U.S.C. §§ 2201, 2202, and 35 U.S.C. §§ 271, et seq. 

5. This Court has personal jurisdiction over Plaintiff because, among other reasons, 

Plaintiff has consented to jurisdiction by choosing to file claims for infringement of the Asserted 

Patents in this district. 

6. Venue is proper in this district. Plaintiff has consented to venue in this district by 

bringing this action against Defendants, and thus venue for Nokia’s counterclaims is proper in this 

district, although a different venue may be more convenient to hear the dispute. 

Nature of the Action 

7. Based on XR’s Complaint, XR has substantial rights and interests in U.S. Patent 

Nos. 8,737,511 (the “’511 Patent”), 10,715,235 (the “’235 Patent”), 10,594,376 (the “’376 

Patent”), 7,177,369 (the “’369 Patent”), and 8,289,939 (the “’939 Patent”), and collectively 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 22 of 29 PageID

#: 3184
23 

DM2\20511025.1 

referred to as the Asserted Patents. 

8. Plaintiff has sued Nokia’s customer, Verizon (as defined above) for alleged 

infringement of the Asserted Patents in Eastern District of Texas, Case No. 2:23-cv-00203 (the 

“Verizon Case”). 

9. Plaintiff’s Complaint in the Verizon Case alleges infringement based, in part, upon 

functionality implemented by network equipment and technology supplied by Nokia to Verizon. 

10. Nokia asserts that the Asserted Patents are invalid for failure to satisfy the 

requirements of 35 U.S.C. § 100, et seq., including, but not limited to, one or more of the following: 

35 U.S.C. §§ 101, 102, 103, and/or 112. 

11. Nokia further denies that Verizon has infringed the Asserted Patents, directly or 

indirectly, through Verizon’s use of Nokia equipment or technology. 

12. In view of the foregoing, a conflict of asserted rights between Nokia and Plaintiff 

with respect to the alleged infringement and validity of the Asserted Patents. 

First Counterclaim 

Declaratory Judgment of Non-Infringement of the ’511 Patent 

13. Nokia incorporates by reference the prior allegations. 

14. Plaintiff alleges that Verizon infringes the ’511 Patent through the use of Nokia’s 

equipment and technology in its wireless network. 

15. An actual, substantial, and continuing justiciable controversy exists between Nokia 

and Plaintiff with respect to infringement of the ’511 Patent. 

16. Nokia’s equipment and technology does not infringe and has not infringed any valid 

claim of the ’511 Patent literally, directly, indirectly (such as contributorily or by way of 

inducement), willfully, or under the doctrine of equivalents. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 23 of 29 PageID

#: 3185
24 

DM2\20511025.1 

17. There exists an actual and justiciable controversy, within the meaning of 28 U.S.C. 

§§ 2201 and 2202, between Nokia and Plaintiff as to whether the Nokia’s equipment and 

technology has infringed or infringes any valid and enforceable claim of the ’511 Patent. 

18. Nokia requests a judicial determination and declaration that Nokia’s equipment and 

technology does not infringe any valid and enforceable claim of the ’511 Patent. 

Second Counterclaim 

Declaratory Judgment of Non-Infringement of the ’235 Patent 

19. Nokia incorporates by reference the prior allegations. 

20. Plaintiff alleges that Verizon infringes the ’235 Patent through the use of Nokia’s 

equipment and technology in its wireless network. 

21. An actual, substantial, and continuing justiciable controversy exists between Nokia 

and Plaintiff with respect to infringement of the ’235 Patent. 

22. Nokia’s equipment and technology does not infringe and has not infringed any valid 

claim of the ’235 Patent literally, directly, indirectly (such as contributorily or by way of 

inducement), willfully, or under the doctrine of equivalents. 

23. Accordingly, there exists an actual and justiciable controversy, within the meaning 

of 28 U.S.C. §§ 2201 and 2202, between Nokia and Plaintiff as to whether the Nokia’s equipment 

and technology has infringed or infringes any valid and enforceable claim of the ’235 Patent. 

24. Nokia requests a judicial determination and declaration that Nokia’s equipment and 

technology does not infringe any valid and enforceable claim of the ’235 Patent. 

Third Counterclaim 

Declaratory Judgment of Non-Infringement of the ’376 Patent 

25. Nokia incorporates by reference the prior allegations. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 24 of 29 PageID

#: 3186
25 

DM2\20511025.1 

26. Plaintiff alleges that Verizon infringes the ’376 Patent through the use of Nokia’s 

equipment and technology in its wireless network. 

27. An actual, substantial, and continuing justiciable controversy exists between Nokia 

and Plaintiff with respect to infringement of the ’376 Patent. 

28. Nokia’s equipment and technology in a wireless network does not infringe and has 

not infringed any valid claim of the ’376 Patent literally, directly, indirectly (such as contributorily 

or by way of inducement), willfully, or under the doctrine of equivalents. 

29. Accordingly, there exists an actual and justiciable controversy, within the meaning 

of 28 U.S.C. §§ 2201 and 2202, between Nokia and Plaintiff as to whether the Nokia’s equipment 

and technology has infringed or infringes any valid and enforceable claim of the ’376 Patent. 

30. Nokia requests a judicial determination and declaration that Nokia’s equipment and 

technology does not infringe any valid and enforceable claim of the ’376 Patent. 

Fourth Counterclaim 

Declaratory Judgment of Non-Infringement of the ’369 Patent 

31. Nokia incorporates by reference the prior allegations. 

32. Plaintiff alleges that Verizon infringes the ’369 Patent through the use of Nokia’s 

equipment and technology in its wireless network. 

33. An actual, substantial, and continuing justiciable controversy exists between Nokia 

and Plaintiff with respect to infringement of the ’369 Patent. 

34. Nokia’s equipment and technology does not infringe and has not infringed any valid 

claim of the ’369 Patent literally, directly, indirectly (such as contributorily or by way of 

inducement), willfully, or under the doctrine of equivalents. 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 25 of 29 PageID

#: 3187
26 

DM2\20511025.1 

35. Accordingly, there exists an actual and justiciable controversy, within the meaning 

of 28 U.S.C. §§ 2201 and 2202, between Nokia and Plaintiff as to whether the Nokia’s equipment 

and technology has infringed or infringes any valid and enforceable claim of the ’369 Patent. 

36. Nokia requests a judicial determination and declaration that Nokia’s equipment and 

technology does not infringe any valid and enforceable claim of the ’369 Patent. 

Fifth Counterclaim 

Declaratory Judgment of Non-Infringement of the ’939 Patent 

37. Nokia incorporates by reference the prior allegations. 

38. Plaintiff alleges that Verizon infringes the ’939 Patent through the use of Nokia’s 

equipment and technology in its wireless network. 

39. An actual, substantial, and continuing justiciable controversy exists between Nokia 

and Plaintiff with respect to infringement of the ’939 Patent. 

40. Nokia’s equipment and technology does not infringe and has not infringed any valid 

claim of the ’939 Patent literally, directly, indirectly (such as contributorily or by way of 

inducement), willfully, or under the doctrine of equivalents. 

41. Accordingly, there exists an actual and justiciable controversy, within the meaning 

of 28 U.S.C. §§ 2201 and 2202, between Nokia and Plaintiff as to whether the Nokia’s equipment 

and technology, either alone or as used in a wireless network, has infringed or infringes any valid 

and enforceable claim of the ’939 Patent. 

42. Nokia requests a judicial determination and declaration that Nokia’s equipment and 

technology does not infringe any valid and enforceable claim of the ’939 Patent. 

PRAYER FOR RELIEF 

WHEREFORE, Nokia prays for judgment as follows: 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 26 of 29 PageID

#: 3188
27 

DM2\20511025.1 

a. A declaration that Verizon has not infringed the Asserted Patents through Verizon’s 

use of Nokia equipment and/or technology, contributed to the infringement of any of the Asserted 

Patents, and/or induced others to infringe any of the Asserted Patents; 

b. A judgment in favor of Nokia on all of its Defenses; 

c. A judgment denying any relief whatsoever, including but not limited to injunctive 

relief, in favor of Cobblestone; 

d. A judgment in favor of Nokia on its Counterclaims; 

e. A judgment that the claims of each of the Asserted Patents are invalid and/or 

unenforceable; 

f. A judgment that this action is exceptional within the meaning of 35 U.S.C. § 285 

and an award of attorney’s fees and expenses of litigation to Nokia; 

g. Such other and further relief as this Court may deem just and proper. 

DEMAND FOR JURY TRIAL 

In accordance with Rule 38 of the Federal Rules of Civil Procedure and Local Rule CV-38, 

Intervenor Nokia respectfully demand a jury trial of all issues triable to a jury in this action. 

Dated: November 19, 2024 Respectfully submitted, 

/s/ Matthew S. Yungwirth 

Deron R. Dacus (TBN 00790553) 

ddacus@dacusfirm.com 

THE DACUS FIRM, P.C. 

821 ESE Loop 323 

Suite 430 

Tyler, Texas 75701 

Telephone: 903.705.1117 

Facsimile: 903.581.2543 

Email: ddacus@dacusfirm.com 

Matthew S. Yungwirth 

Email: msyungwirth@duanemorris.com 

John R. Gibson 

Email: jrgibson@duanemorris.com 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 27 of 29 PageID

#: 3189
28 

DM2\20511025.1 

Alice E. Snedeker 

aesnedeker@duanemorris.com 

DUANE MORRIS LLP 

1075 Peachtree Street NE, Suite 1700 

Atlanta, GA 30309 

Telephone: (404) 253-6900 

Counsel for Intervenor Nokia of America 

Corporation.

 

 

Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 28 of 29 PageID

#: 3190
Case 2:23-cv-00202-JRG-RSP Document 109 Filed 11/26/24 Page 29 of 29 PageID

#: 3191