Case 3:10-cv-00859-W -CAB Document 9 Filed 06/16/10 Page 1...

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Case 3:10-cv-00859-W -CAB Document 9-1 Filed 06/16/10 Page 1 of 18

EXHIBIT “2” TO THE DECLARATION OF DAVID H. DOLKAS IN SUPPORT OF QUALCOMM INCORPORATED‘S MOTION TO

QUASH THIRD PARTY SUBPOENA AND MOTION FOR PROTECTIVE ORDER


UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION WI-LAN, INC., Plaintiff, v. RESEARCH IN MOTION CORPORATION, RESEARCH IN MOTION LTD., MOTOROLA, INC., AND UTSTARCOM, INC. Defendants.

§§§§§§§§§§§

Civil Action No. 2:08-cv-247 JURY TRIAL REQUESTED

ORIGINAL COMPLAINT

Plaintiff Wi-LAN Inc. (“Wi-LAN”) files this Original Complaint for patent

infringement against Defendants “RIM,” which refers to Research in Motion Corporation

and Research in Motion, Ltd., Motorola, Inc. (“Motorola”), and UTStarcom, Inc.

(“UTStarcom”) for infringement of U.S. Patent No. RE37,802 (“the ’802 Patent”) and

U.S. Patent No. 5,282,222 (“the ’222 Patent”) pursuant to 35 U.S.C. § 271. A copy of the

’802 Patent is attached hereto as Exhibit A. A copy of the ’222 Patent is attached hereto

as Exhibit B.

PARTIES

1. Plaintiff Wi-LAN is a corporation existing under the laws of Canada with

its principal place of business at 11 Holland Ave., Suite 608, Ottawa, Ontario, Canada.

2. Upon information and belief, Defendant Research in Motion Corporation

is a Delaware Corporation with its principal place of business at 122 W. John Carpenter

Parkway, Suite 430, Irving, Texas 75039. Upon information and belief, Research In

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Motion, Ltd. is a corporation organized and existing under the laws of Ontario, Canada

with a principal place of business at 295 Phillip Street, Waterloo, Ontario, Canada. RIM

manufactures for sale and/or sells handsets and/or other products compliant with the

CDMA2000 standard and/or the 802.11 standards. Upon information and belief,

Defendants Research in Motion Corporation and Research In Motion, Ltd. are commonly

owned by the same corporate entity and are alter egos and/or agents of one another. RIM

may be served with process by serving its registered agent, CT Corporation System, 350

N. St. Paul Street, Dallas, Texas 75201.

3. Upon information and belief, Defendant Motorola is a Delaware

Corporation with its principal place of business at 1303 E. Algonquin Rd., Schamburg,

Illinois 60196. Motorola manufactures for sale and/or sells mobile handsets and/or other

products compliant with the CDMA2000 standard and/or the 802.11 standards. Motorola

may be served with process by serving its registered agent, CT Corporation System, 350

N. St. Paul Street, Dallas, Texas 75201.

4. Upon information and belief, Defendant UTStarcom, Inc. is a Delaware

Corporation with its principal place of business at 1275 Harbor Bay Parkway, Alameda,

CA 94502. UTStarcom manufactures for sale and/or sells mobile handsets and/or other

products compliant with the CDMA2000 standard and/or the 802.11 standards.

UTStarcom may be served with process by serving its registered agent, CT Corporation

System, 350 North St. Paul St., Dallas, TX 75201.

JURISDICTION AND VENUE

5. This is an action for patent infringement under the Patent Laws of the

United States, 35 U.S.C. § 271.

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6. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331

and 1338(a).

7. This Court has personal jurisdiction over each Defendant. Each

Defendant has conducted and does conduct business within the State of Texas. Each

Defendant, directly or through intermediaries (including distributors, retailers, and

others), imports, ships, distributes, offers for sale, sells, and advertises (including the

provision of an interactive web page) its products in the United States, the State of Texas,

and the Eastern District of Texas. Each Defendant has purposefully and voluntarily

placed one or more of its infringing products, as described below, into the stream of

commerce with the expectation that they will be purchased by consumers in the Eastern

District of Texas. These infringing products have been and continue to be purchased by

consumers in the Eastern District of Texas. Each Defendant has committed the tort of

patent infringement within the State of Texas and, particularly, within the Eastern District

of Texas.

8. Venue is proper in this Court pursuant to 28 U S.C. §§ 1391 and 1400(b).

COUNT I: PATENT INFRINGEMENT

9. On July 23, 2002, the United States Patent and Trademark Office duly and

legally issued the ’802 Patent, entitled “Multicode Direct Sequence Spread Spectrum”

after a full and fair examination. Wi-LAN is the assignee of all rights, title, and interest

in and to the ’802 Patent and possesses all rights of recovery under the ’802 Patent,

including the right to recover damages for past infringement.

10. The ’802 Patent is valid and enforceable.

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11. On January 25, 1994, the United States Patent and Trademark Office duly

and legally issued the ’222 Patent, entitled “Method and Apparatus for Multiple Access

Between Tranceivers in Wireless Communications Using OFDM Spread Spectrum” after

a full and fair examination. Wi-LAN is the assignee of all rights, title, and interest in and

to the ’222 Patent and possesses all rights of recovery under the ’222 Patent, including

the right to recover damages for past infringement.

12. The ’222 Patent is valid and enforceable.

13. Upon information and belief, RIM has been and is now infringing, directly

and indirectly by way of inducement and/or contributory infringement, literally and/or

under the doctrine of equivalents, the ’802 Patent in this District and elsewhere by

making, using, offering for sale, importing, and/or selling mobile station products and/or

other products compliant with the CDMA2000 standard and/or the 802.11 standards that

fall within the scope of at least one claim of the ’802 Patent.

14. Upon information and belief, RIM has been and is now infringing, directly


under the doctrine of equivalents, the ’222 Patent in this District and elsewhere by

making, using, offering for sale, importing, and/or selling mobile handsets and/or other

products compliant with the 802.11 standards that fall within the scope of at least one

claim of the ’222 Patent.

15. Upon information and belief, Motorola has been and is now infringing,

directly and indirectly by way of inducement and/or contributory infringement, literally

and/or under the doctrine of equivalents, the ’802 Patent in this District and elsewhere by


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products compliant with the CDMA2000 standard and/or the 802.11 standards that fall

within the scope of at least one claim of the ’802 Patent.

16. Upon information and belief, Motorola has been and is now infringing,






17. Upon information and belief, UTStarcom has been and is now infringing,




products compliant with the CDMA2000 standard and/or the 802.11 standards that fall

within the scope of at least one claim of the ’802 Patent.

18. Upon information and belief, UTStarcom has been and is now infringing,






19. Wi-LAN has no adequate remedy at law against Defendants’ acts of

infringement, and, unless Defendants are enjoined from their infringement of the ’802

Patent and the ’222 Patent, Wi-LAN will suffer irreparable harm.

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20. The Defendants have had knowledge of the ’802 Patent and the ’222

Patent and have not ceased their infringing activities. The Defendants’ infringement of

the ’802 Patent and the ’222 Patent has been and continues to be willful and deliberate.

21. Wi-LAN is in compliance with the requirements of 35 U.S.C. § 287.

22. Defendants, by way of their infringing activities, have caused and continue

to cause Wi-LAN to suffer damages in an amount to be determined at trial.

PRAYER FOR RELIEF

WHEREFORE, Wi-LAN prays for the following relief:

1. A judgment in favor of Wi-LAN that Defendants have infringed, directly


under the doctrine of equivalents, the ’802 Patent and the ’222 Patent;

2. A permanent injunction, enjoining Defendants and their officers, directors,

agents, servants, employees, affiliates, divisions, branches, subsidiaries, parents and all

others acting in concert or privity with any of them from infringing, inducing the

infringement of, or contributing to the infringement of the ’802 Patent and the ’222

Patent;

3. Award to Wi-LAN the damages to which it is entitled under 35 U.S.C.

§ 284 for Defendants’ past infringement and any continuing or future infringement up

until the date Defendants are finally and permanently enjoined from further infringement,

including both compensatory damages and treble damages for willful infringement;

4. A judgment and order requiring Defendants to pay the costs of this action

(including all disbursements), as well as attorneys’ fees as provided by 35 U.S.C. § 285;

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5. Award to Wi-LAN pre-judgment and post-judgment interest on its

damages; and

6. Such other and further relief in law or in equity to which Wi-LAN may be

justly entitled.

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DEMAND FOR JURY TRIAL

Wi-LAN demands a trial by jury of any and all issues triable of right before a

jury.

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DATED: June 19, 2008. Respectfully submitted,

MCKOOL SMITH, P.C. /s/ Sam Baxter Sam Baxter Lead Attorney Texas State Bar No. 01938000 [email protected] 104 E. Houston Street, Suite 300 P.O. Box O Marshall, Texas 75670 Telephone: (903) 923-9000 Facsimile: (903) 923-9099 Jason Blackstone Texas State Bar No. 24036227 [email protected] 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Facsimile: (214) 978-4044 John B. Campbell Texas State Bar No. 24036314 [email protected] Seth Hasenour Texas State Bar No. 24059910 [email protected] 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 ATTORNEYS FOR PLAINTIFF WI-LAN, INC.

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Confidential

Wi-Lan Inc. (TSX:WIN)

Page 1

Overview Company Status: Operating Company Type: Public Company Website: www.wi-lan.com Primary Industry: Communications Equipment Number of Employees: 38 Founded: 1992 Headquarters: 11 Holland Avenue

Suite 608 Ottawa, Ontario K1Y 4S1 Canada Phone: 613-688-4900 Fax: 613-688-4894

Wi-LAN Inc., together with its subsidiaries, engages in the design, development, and delivery of broadband wireless technologies. The company holds patents for various technologies, such as Wi-Fi, WiMAX, CDMA, DSL, DOCSIS, Mesh, multi-mode wireless, Bluetooth, and V-Chip. Wi-LAN Inc. was founded in 1992 and is headquartered in Ottawa, Canada.

Financial Summary Key Financials

For the Fiscal Period Ending In Currency

Press

Release Oct-31-2009A

CAD

Fiscal Year

Change

Dec-31-

2009A CAD

Dec-31-

2010E CAD

Dec-31-

2011E CAD

Dec-31-

2012E CAD

Total Revenue 35.051 FYC 30.536 51.828 59.025 72.000 Growth Over Prior Year 31.95% FYC NA 69.73% 13.89% 21.98% Gross Profit 31.560 FYC 26.985 Margin % 90.04% FYC 88.37% EBITDA 20.131 FYC 14.751 12.275 23.750 37.300 Margin % 57.43% FYC 48.31% 23.68% 40.24% 51.81% EBIT 2.825 FYC (2.658) NA NA NA Margin % 8.06% FYC (8.70%) NA NA NA Earnings from Cont. Ops. 10.286 FYC (1.430)

Financial Summary Margin % 29.35% FYC (4.68%) Net Income 10.286 FYC (1.430) Margin % 29.35% FYC (4.68%) Diluted EPS Excl. Extra Items³

0.107 FYC (0.015) 0.130 0.270 NA

Growth Over Prior Year NM FYC NA NM 107.69% NA Financial information is listed in millions of the reported currency, except per share items, margins and ratios.

Financial Summary Current Capitalization

In Currency CAD Share Price as of May-19-2010 $ 3.06 Shares Out. 102.4 Market Capitalization 313.2 - Cash & Short Term Investments 94.8 + Total Debt 0.0 + Pref. Equity - + Total Minority Interest - = Total Enterprise Value (TEV) 218.5 Book Value of Common Equity 241.1 + Pref. Equity - + Total Minority Interest - + Total Debt 0.0 = Total Capital 241.1 Financial information is listed in the reported currency.

Financial Summary For the Fiscal Period Ending

Dec-31-2009A

Dec-31-

2010E

Dec-31-

2011E

Dec-31-

2012E


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Financial Summary

Financial information is listed in millions of the reported currency, except per share items, margins and ratios.

Equity Performance

Ownership Summary Summary (1)

Shares % of Total Shares Out

Market Value

Institutional Holders 27,428,307 26.79 $83,382,053 5% Holders N/A N/A $0 Insiders (2) 3,241,792 3.17 $9,855,048 Public and Other (3) 71,695,901 70.04% $217,955,539 Total Shares Outstanding 102,366,000 100% $311,192,640 Key Institutional Holders

Shares % of Total Shares Out

Market Value

Acuity Investment Management Inc.

13,225,000 12.92 $40,204,000

Mackenzie Financial Corporation 3,500,000 3.42 $10,640,000 Sprott Asset Management Inc. 2,324,800 2.27 $7,067,392 Dimensional Fund Advisors Lp 1,896,255 1.85 $5,764,615 All Others 6,482,252 6.33 $19,706,046 Total 27,428,307 26.79 $83,382,053 Key Insider Holdings Insider Name Common Shares

Owned % of Total Shares

Out Market Value

Michel Tewfik Fattouche 2,032,264 1.99 $6,178,083 Najmul H. Siddiqui 628,755 0.61 $1,911,415 James Skippen 387,000 0.38 $1,176,480 John Gillberry 70,000 0.07 $212,800 William Ross Middleton 37,500 0.04 $114,000 All Others 86,273 0.09 $262,270 All Directors and Officers 3,241,792 3.17 $9,855,048

(1) Estimated ownership composition of the company based on quarterly institutional filings (13F and 13G), 5% Owners (13D Filings) and Insider Ownership from proxy filing. (2) Insider Holdings includes common shares held at the company's proxy filing date. (3) Public and Other equals total shares outstanding minus the sum of Institutional Holders, 5% Owners and Insider Holders.


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Key Executives Name Title Skippen, James Chairman, Chief Executive Officer, President and Chief Legal

Officer Zaghloul Ph.d., Hatim Co-founder and Chairman of the Technical Advisory Committee McEwan, Michael Chief Financial Officer Hamilton, Kirk President of the TIL-TEK Antennas Division Siddiqui, Najmul President of Digital TV Technologies El-Hamamsy, Sayed-Amr Senior Vice President of Corporate Kedrosky, Bob Director of Human Resources & Corporate Services King, Dave Senior Vice President of Product Division and General Manager of

Product Division Middleton, William Senior Vice President of Licensing and General Counsel Seliga, John Senior Vice President and General Manager of Intellectual

Property Division Ye, Jun Chief Technology Officer Watchmaker, Prashant Corporate Secretary and Assistant General Counsel Burns, Tyler Director of Investor Relations & Communications Ginter, Thomas Vice President of Business Development Aggarwal, Vipin Senior Counsel of Intellectual Property Boles, Donald Vice President of Program Development Dodd, Curtis Director of Patents & Counsel Lightfoot, Shawn Vice President of Technology MacCrae, Doug Vice President of Finance Parolin, Andrew Vice President of Wireless Technologies Smith, Graham Vice President of Sales and Marketing Tétrault S.E.N.C.R.L., McCarthy Legal Counsel Tilston, David Vice President of Operations - Til - Tek Antennas Division Ward, David Director of IR & Communications Wu, Robert Director of Research & Technology Development

Other Professionals Name Title Haydar, Rashed Senior Manager of Technology Department Schulz Ph.D., Robert Advisor

Transaction Summary - Buy Side Buy-Side Merger/Acquisition

Date: 3/26/2007 Target: Tri-Vision International Ltd.

Status: Closed Size($mm): 83.46

Target Advisors: Acumen Capital Finance Partners Limited (Financial Advisor) Investor Advisors: Wellington West Capital Markets Inc. (Financial Advisor) Participants: Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: Wi-LAN, Inc. (TSX: WIN) signed a letter of intent to acquire Tri-Vision International Ltd. (TSX: TVL) on March 26, 2007. The transaction is valued at approximately CAD 96.39 million. Tri-Vision's common shares would be exchanged for common shares of Wi-LAN based on a price of $1.72 per Tri-Vision. The Boards of Directors of Wi-LAN and Tri-Vision have unanimously approved the letter of intent. The transaction is subject to entering into the definitive agreement and the satisfaction of customary closing conditions, including any necessary regulatory approvals and is expected to close in June 2007. The agreement provides for the payment of termination fees of CAD 2 million by Tri-Vision. It is a condition of the completion of the transaction that Tri-Vision shall have acquired the V-chip patents, certain rights of which are currently licensed to Tri-Vision, from a company controlled by Tri-Vision chairman, Tim Collings. On completion of the transaction, Tri-Vision will become a wholly owned subsidiary of Wi-LAN. On May 11, 2007, Wi-Lan Inc. signed a definitive agreement to acquire Tri-Vision International Ltd. Wellington West Capital Markets Inc. acted as a financial advisor for Wi-LAN and Acumen Capital Finance Partners Limited acted as financial advisor for Tri-Vision. Pre-Deal Situation: - Deal Resolution: Wi-LAN, Inc. (TSX: WIN) completed the acquisition of Tri-Vision International Ltd. (TSX: TVL) on July 3, 2007. Date: 3/24/2006 Target: Ensemble

Communications, Inc. Status: Effective Size($mm): 0.96

Participants: Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: Wi-Lan Inc. signed a definitive agreement to acquire substantially all of the assets of Ensemble Communications Inc. for a reported consideration of approximately C$1.12 million on March 24, 2006. As per the terms of the transaction, 2 million shares were issued as consideration. The transaction is expected to close on March 31, 2006. Pre-Deal Situation: - Deal Resolution: The deal is effective as of April 30, 2006. Date: 3/19/2001 Target: Wi-LAN

Technologies Inc. Status: Closed Size($mm): -

Investor Advisors: Dorsey & Whitney LLP (Legal Advisor) Participants: Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: UC Wireless, Inc. entered into an agreement with Wi-LAN Inc. (TSE: WIN), wherein UC Wireless will be acquired by Wi-LAN for a consideration of 1.7 million Wi-LAN shares. Under the terms of the agreement, Wi-LAN will acquire significantly all of UC Wireless' assets and fully integrate its business operations into Wi-LAN. This will include its tangible assets, intellectual capital and proprietary VINE technology. The transaction is subject to customary conditions including receipt of all requisite regulatory, shareholder and final board approvals and is expected to close by 04/10/2001. Christopher Barry of Dorsey & Whitney LLP acted as legal advisor for Wi-LAN, Inc.


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Transaction Summary - Buy Side Pre-Deal Situation: - Deal Resolution: UC Wireless, Inc. was acquired by Wi-LAN Inc. (TSE: WIN) on 04/11/2001. UC Wireless later underwent a name change to Wi-LAN Technologies Inc. Date: 6/21/2000 Target: TIL-TEK Antennas

Inc. Status: Closed Size($mm): 15.20

Participants: Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: Wi-LAN Inc. (TSE:WIN.) has agreed to purchase TIL-TEK Antennas Inc. TIL-TEK will become a wholly owned subsidiary of Wi-LAN. Wi-LAN issued shares of common stock for the purchase price of $22.5 million Canadian. Pre-Deal Situation: - Deal Resolution: Wi-LAN Inc. completed the acquisition of TIL-TEK Antennas Inc. on 06/29/2000. Date: 12/20/1999 Target: Digital

Transmission Systems Status: Closed Size($mm): 1.04

Investor Advisors: Paul, Weiss, Rifkind, Wharton & Garrison LLP (Legal Advisor) Participants: Emrise Corp. (ARCA:ERI) (Seller), Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: Wi-LAN Inc. (TSE: WIN) entered into an agreement to acquire a 37% stake in Digital Transmission Systems, Inc. (DTS) (OTC BB: DTSX) on December 20, 1999. Pursuant to an agreement with MicroTel, Wi-LAN will acquire 1,738,159 DTS common shares owned by MicroTel or 37% of DTS's issued and outstanding common shares in consideration for US $520,000 and 28,340 Wi-LAN common. The closing of the transaction, subject to regulatory approval, is scheduled to occur on January 7, 2000. Paul, Weiss, Rifkind, Wharton & Garrison LLP acted as the legal advisor for Wi-Lan Inc. Pre-Deal Situation: - Deal Resolution: Wi-Lan Inc. acquired 37% interest in Digital Transmission Systems on 01/10/2000. Buy-Side Private Placement

Date: 12/8/1999 Target: Amplify.net, Inc. Status: Closed Size($mm): 6.10 Participants: 3Com Ventures, Inc. (Buyer), Alpine Technology Ventures (Buyer), Aspen Ventures (Buyer), Kingston Technology Company, Inc. (Buyer), Wi-Lan Inc. (TSX:WIN) (Buyer) Synopsis: Amplify.net, Inc. announced that it has received $6.1 million in its second round of funding from new investors 3Com Ventures, Inc., Wi-Lan Inc., and Kingston Technology Company, Inc. on December 8, 1999. Existing investors Aspen Ventures and Alpine Technology Ventures, along with two individual investors also participated in the funding round. Pre-Deal Situation: - Deal Resolution: On December 8, 1999, Amplify.net, Inc. closed the transaction.

Transaction Summary - Sell Side Sell-Side Buyback

Date: 10/6/2008 Target: Wi-Lan Inc. (TSX:WIN)

Status: Expired Size($mm): -

Participants: - Synopsis: The Board of Directors of Wi-LAN Inc. (TSX: WIN), authorized a share repurchase plan through a Normal Course Issuer Bid, on October 6, 2008. Under the bid, it will repurchase up to 5% of its issued and outstanding common shares. The authorization is valid for a six month period following receipt of regulatory approval. The stock buyback program is subject to obtaining requisite regulatory approvals including filing notice with the TSX. The actual number of shares purchased, the timing of such purchases and the price at which the Shares are bought will depend upon future market conditions and upon potential alternative uses for Wi-LAN's cash resources. Any purchases will be made by Wi-LAN at the prevailing market prices of the Shares at the time of purchase. All Shares purchased will be cancelled. On October 8, 2008, Wi-Lan Inc announced that the company has received regulatory approval to repurchase own shares, pursuant to a normal course issuer bid through the facilities of the Toronto Stock Exchange. Under the bid, the company intends to repurchase up to 4,678,519 common shares, representing up to 5% of the 93,570,367 common shares currently issued and outstanding. The issuer bid shall commence on October 10, 2008 and expire on April 10, 2009. On any given day, Wi-LAN will not purchase more than 25% of the average daily trading volume for the last six months. The purchase and payment for the common shares by Wi-LAN will be made in accordance with the requirements of the TSX. Sell-Side Merger/Acquisition

Date: 4/4/2006 Target: Wi-LAN Inc., Libra 5800 Product Line

Status: Cancelled Size($mm): -

Participants: GIL Technology Company Limited (Buyer), Wi-Lan Inc. (TSX:WIN) (Seller) Synopsis: GIL Technology Co. Ltd. entered into a binding agreement to acquire the LIBRA 5800 product line from Wi-LAN Inc. (TSX: WIN) on April 4, 2006. The consideration will be paid in cash. Apart from cash, GIL Technology has also agreed to pay certain quarterly royalties based on a percentage of the manufacturer's cost for the LIBRA 5800 product sold by GIL Technology. Detailed financial terms of the transaction were not disclosed. Under the terms of the agreement, GIL Technology will buy the assets along with the current orders in-hand of the LIBRA 5800 and assumes the responsibility of the warranty obligations and customer service of the installed customer base. Date: 3/22/2006 Target: Wi-LAN Inc.,

Ultima 3, VIP and LIBRA MX Product Lines

Status: Effective Size($mm): -

Participants: EION, Inc. (Buyer), Wi-Lan Inc. (TSX:WIN) (Seller) Synopsis: EION Inc. signed a binding agreement to acquire Ultima 3, VIP and LIBRA MX product lines from Wi-LAN Inc. on March 22, 2006. Financial terms of the transaction were not disclosed. Wi-LAN is not selling any of its patents as a result of this transaction. In related transactions, EION Inc. also agreed to acquire VIP and LIBRA MX product lines from Wi-LAN. Under the terms of agreement, EION will buy the assets along with current orders in-hand. Patents owned by Wi-LAN relevant to the product line acquired by EION will be subject to a non-exclusive, non-transferable license from Wi-LAN. In addition to the cash consideration, EION has agreed to pay certain quarterly royalties based on a percentage of the manufacturers cost for each Ultima3 and VIP product sold by EION. The transaction is scheduled to close on or before April 18, 2006.


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Transaction Summary - Sell Side Date: 3/20/2006 Target: Wi-Lan Inc.,

Intellectual Property Division

Status: Closed Size($mm): 2.00

Investor Advisors: Borden Ladner Gervais LLP (Legal Advisor) Participants: Fujitsu Microelectronics America, Inc. (Buyer), Wi-Lan Inc. (TSX:WIN) (Seller) Synopsis: Fujitsu Microelectronics America, Inc. signed a letter of intent to acquire intellectual property division from Wi-LAN Inc. for a reported consideration of approximately $2 million on March 20, 2006. As per the terms of agreement, Fujitsu will acquire resources currently working within Wi-LAN's IP Division, Wi-LAN's WiMAX PHY and MAC IP and related customer contracts, and a paid-up license to Wi-LAN's OFDM patents for the purpose of developing and marketing WiMAX products. Fujitsu expects to retain key technical personnel who have been working on Wi-Lan's products. The transaction is subject to reaching agreement on terms of definitive purchase and sale contract and approval of Boards of both Wi-Lan and Fujitsu. The transaction is expected to be completed by April 30, 2006. Steve Wilson, Ross Freeman, Fred Somerville, Brian Portas, Michael Whitt, Christine Collard, and Greg Smart of Borden Ladner Gervais LLP was legal advisor to Fujitsu Microelectronics America, Inc. Date: 2/10/2006 Target: TIL-TEK

Antennas Inc. Status: Closed Size($mm): 1.56

Participants: Kavveri Telecom Products Limited (BSE:590041) (Buyer), Wi-Lan Inc. (TSX:WIN) (Seller) Synopsis: Wi-LAN Inc. (TSX: WIN) entered into an agreement to sell the assets of its TIL-TEK Antenna Division to Kavveri Telecom Products Limited on February 10, 2006 for a reported consideration of approximately CAD 2 million. The sale is subject to a number of conditions including entering into a definitive agreement and the approval of the boards of both Wi-LAN and Kavveri. For the year ended October 31, 2005, TIL-TEK Division reported CAD 3.97 million in revenues. The parties are working to finalize the transaction within the next six weeks.

Transaction Summary - Public Offerings Public Offering Follow-on Equity Offering Registration Filed Date: 6/25/2009 Registration Effective Date: Offer Date*: 7/16/2009 Issuer: Wi-Lan Inc. (TSX:WIN) Advisor: Haywood Securities Inc. (Underwriter), Heenan Blaikie LLP (Legal Counsel to Underwriters), Paradigm Capital, Inc. (Co-Lead Underwriter), Wellington West Capital Markets Inc. (Co-Lead Underwriter), Wildeboer Rand Thomson Apps & Dellelce, LLP (Legal Advisor), PricewaterhouseCoopers LLP, Canada (Accountant), CIBC World Markets, Inc. (Underwriter) Size ($mm): 14.66 Net Proceeds ($mm): 15.58 Security Types: Common Stock Public Offering Follow-on Equity Offering Registration Filed Date: 2/20/2007 Registration Effective Date: Offer Date*: 3/5/2007 Issuer: Wi-Lan Inc. (TSX:WIN)

Transaction Summary - Public Offerings Advisor: GMP Securities, Ltd. (Underwriter), Dundee Securities Corporation (Underwriter), Osler, Hoskin & Harcourt LLP (Legal Advisor), Heenan Blaikie LLP (Legal Counsel to Underwriters), Paradigm Capital, Inc. (Underwriter), Wellington West Capital Markets Inc. (Lead Underwriter), PricewaterhouseCoopers LLP, Canada (Accountant), Computershare Trust Company Of Canada (Transfer Agent/Registrar), CIBC World Markets, Inc. (Underwriter), Genuity Capital Markets (Underwriter) Size ($mm): 33.91 Net Proceeds ($mm): 38.00 Security Types: Common Stock Public Offering Follow-on Equity Offering Registration Filed Date: 12/14/2006 Registration Effective Date: Offer Date*: 12/21/2006 Issuer: Wi-Lan Inc. (TSX:WIN) Advisor: Dundee Securities Corporation (Underwriter), Haywood Securities Inc. (Underwriter), Heenan Blaikie LLP (Legal Counsel to Underwriters), Paradigm Capital, Inc. (Underwriter), LaBarge Weinstein (Legal Advisor), Wellington West Capital Markets Inc. (Underwriter), PricewaterhouseCoopers LLP, Canada (Accountant), Computershare Trust Company Of Canada (Transfer Agent/Registrar), CIBC World Markets, Inc. (Lead Underwriter) Size ($mm): 25.97 Net Proceeds ($mm): 28.50 Security Types: Common Stock *Offer date is only available for a given transaction if a prospectus has been filed with the SEC for that transaction.

Investment Criteria There is no Investment Criteria data for this company.

Investment Arms Wi-Lan Inc., Asset Management Arm Professionals: 0 Current Subsidiaries / Acquisitions: 0 Prior Subsidiaries / Acquisitions: 0 Web Site:

Last 10 Key Developments 5/7/2010 Event Type: Dividend Affirmations Headline: Wi-Lan Inc. Declares First Quarter Dividend Payable on July 6, 2010 5/6/2010 Event Type: Earnings Calls Headline: Wi-Lan Inc., Q1 2010 Earnings Call, May-06-2010


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Last 10 Key Developments 5/6/2010 Event Type: Announcements of Earnings Headline: Wi-Lan Inc. Announces Unaudited Consolidated Earnings Results for the First Quarter Ended March 31, 2010 5/6/2010 Event Type: Corporate Guidance - Raised Headline: Wi-Lan Inc. Revised Earnings Guidance for 2010 4/21/2010 Event Type: Lawsuits & Legal Issues Headline: Wi-Lan Inc. Signs Final Agreement to Settle Lawsuit Filed by TELUS 3/11/2010 Event Type: Ex-Div Date (Special) Headline: Wi-Lan Inc., 0.01 (CAD), Cash Dividend, Mar-11-2010 3/11/2010 Event Type: Ex-Div Date (Regular) Headline: Wi-Lan Inc., 0.013 (CAD), Cash Dividend, Mar-11-2010 3/11/2010 Event Type: Ex-Div Date (Regular) Headline: Wi-Lan Inc., 0.023 (CAD), Cash Dividend, Mar-11-2010 3/3/2010 Event Type: Earnings Calls Headline: Wi-Lan Inc., 2009 Earnings Call, Mar-03-2010 3/3/2010 Event Type: Announcements of Earnings, Corporate Guidance - New/Confirmed, Dividend Affirmations, Fiscal Year End Changes Headline: Wi-Lan Inc. Announces Unaudited Consolidated Earnings Results for the Fourteen Months Ended December 31, 2009; Provides Earnings Guidance for the Fiscal Year Ending December 31, 2010; Declares Quarterly Dividend Payable on April 6, 2010; Proposes Dividend in the First Quarter of Fiscal 2010; Announces Fiscal Year Changes

Last 10 Key Developments

Current and Pending Company Investors Investor Sponsor Coverage Georgia Electronic Design Center

Advisors Auditors Kpmg Peat Marwick Pricewaterhousecoopers PricewaterhouseCoopers LLP

Capital IQ Buy-Side M&A Dorsey & Whitney LLP

Capital IQ Public Offerings CIBC World Markets, Inc. Computershare Trust Company Of Canada Dundee Securities Corporation Genuity Capital Markets GMP Securities, Ltd. Haywood Securities Inc. LaBarge Weinstein Osler, Hoskin & Harcourt LLP Paradigm Capital, Inc. PricewaterhouseCoopers LLP, Canada Wellington West Capital Markets Inc. Wildeboer Rand Thomson Apps & Dellelce, LLP

Company Coverage This company is not on any Coverage List.

News (10 Most Recent Stories) US-TECH Summary Yahoo! Asia News May-20-2010 5:04:58 PM


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News (10 Most Recent Stories) Google says Android smartphones gaining momentum B. Riley & Co. 11th Annual Investor Conference Opens May 24 with 125 Presenting Companies, Expert Led Informational Sessions and Sugar Ray Leonard Foundation Fight Night Business Wire EON May-20-2010 2:17:14 PM B. Riley & Co., LLC (B. Riley), www.brileyco.com , a full service broker dealer providing research, investment banking, sales and trading, announced today that in addition to presentations from 125 public companies, its 11th Annual Investor Conference will include informational sessions on capital raising, debt financing, M&A and corporate governance issues for public companies. WiLAN to Present at B. Riley & Co. 11th Annual Investor Conference Market Wire May-19-2010 2:29:20 PM Wi-LAN Inc. ("WiLAN" or the "Company") (TSX: WIN), a leading technology innovation and licensing company, will present at the B. Riley & Co. 11th Annual Investor Conference at the Loews Santa Monica Beach Hotel, Santa Monica, California, on May 26, 2010 at 11:30 am. Presenting from management will be Jim Skippen, Chairman & CEO. About WiLAN WiLAN, founded in 1992, is a leading technology innovation and licensing company. WiLAN has licensed its intellectual property to over 220 companies worldwide. Inventions in our portfolio have been licensed by companies that manufacture or sell a wide range of communication and consumer electronics products including 3G cellular handsets, Wi-Fi-enabled laptops, Wi-Fi/DSL routers, xDSL infrastructure equipment, WiMAX base stations and digital television receivers. WiLAN has a large and growing portfolio of more than 800 issued or pending patents. For more information: www.wilan.com. Contacts: Wi-LAN Inc. Tyler Burns Director, Investor Relations & Communications 613-688-4330 C: 613-697-0367 [email protected] SOURCE: Wi-LAN Inc. mailto:[email protected] WiLAN to Present at B. Riley & Co. 11th Annual Investor Conference Marketwire Canada May-19-2010 2:28:57 PM Wi-LAN Inc. ("WiLAN" or the "Company") (TSX:WIN), a leading technology innovation and licensing company, will

News (10 Most Recent Stories) present at the B. Riley & Co. 11th Annual Investor Conference at the Loews Santa Monica Beach Hotel, Santa Monica, California, on May 26, 2010 at 11:30 am. Presenting from management will be Jim Skippen, Chairman & CEO. About WiLAN WiLAN, founded in 1992, is a leading technology innovation and licensing company. WiLAN has licensed its intellectual property to over 220 companies worldwide. Inventions in our portfolio have been licensed by companies that manufacture or sell a wide range of communication and consumer electronics products including 3G cellular handsets, Wi-Fi-enabled laptops, Wi-Fi/DSL routers, xDSL infrastructure equipment, WiMAX base stations and digital television receivers. WiLAN has a large and growing portfolio of more than 800 issued or pending patents. For more information: www.wilan.com. SOURCE: Wi-LAN Inc. Wi-LAN Inc. Tyler Burns Director, Investor Relations & Communications 613-688-4330 C: 613-697-0367 [email protected] WiLAN Announces Release of Markman Order eMediaWorld.com May-13-2010 7:37:02 PM OTTAWA, CANADA--(eMediaWorld - May 12, 2010) - Wi-LAN Inc. ("WiLAN" or the "Company") (TSX:WIN), a leading technology innovation and licensing company, today announced that Judge T. John Ward of the U.S. District Court for the Eastern District of Texas issued a claims construction Opinion and Order yesterday in ongoing litigations between WiLAN and various defendants including Intel... US court rules on terms of Wi-LAN patent infringement case CANADA EAST ONLINE May-12-2010 4:35:11 PM U.S. court issues ruling on terms of Wi-LAN Inc. (TSX:WIN) patent dispute with and defendants including Intel Corp. (NASDAQ:INTC), Hewlett-Packard Co. (NYSE:HPQ), Broadcom Corp. (NASDAQ:BRCM), Dell Inc. (NASDAQ:DELL) and LG Electronics Inc. (NYSE:LPL). Overall Wi-LAN "pleased" with the ruling, believes it supports case for infringement of four patents covering Wi-Fi and CDMA products, Investment Industry Regulatory Organization of Canada - Trade Resumption - Wi-Lan Inc. - WIN Web Newswire May-12-2010 4:12:07 PM This question is for testing whether you are a human visitor and to prevent automated spam submissions. Math question: * eight - = five Solve this math question and enter the solution with digits. E.g. for "two plus four = " enter "6". Create new account Request new password Connect Sign in using Facebook You are here: Investment Industry Regulatory Organization of


Confidential


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News (10 Most Recent Stories) Wi-LAN "Pleased" With Markman Ruling In Patent Suits Launched In 2007 The Wall Street Journal May-12-2010 3:53:56 PM DOW JONES NEWSWIRES Wi-LAN Inc. (WIN. T) said it's pleased overall with a Texas judge's Markman ruling in connection with patent litigation Wi-LAN initiated in late 2007 against 22 companies. Wi-LAN believes that, based on the ruling, it will be able to demonstrate infringement of Wi-Fi and CDMA products, including routers, laptops and CDMA handsets. =Wi-LAN "Pleased" With Markman Ruling In Patent Suits Launched In 2007 Dow Jones Newswires May-12-2010 3:19:00 PM DOW JONES NEWSWIRES Wi-LAN Inc. (WIN.T) said it's pleased overall with a Texas judge's Markman ruling in connection with patent litigation Wi-LAN initiated in late 2007 against 22 companies. Wi-LAN believes that, based on the ruling, it will be able to demonstrate infringement of Wi-Fi and CDMA products, including routers, laptops and CDMA handsets. The suit's defendants include Intel Corp. (INTC), Hewlett-Packard Co. (HPQ), Broadcom Corp. (BRCM), Dell Inc. (DELL) and LG Electronics Inc. (066570.SE), it noted. Wi-LAN is alleging infringement of four patents including U.S. Patent Nos. 5,282,222 (the '222 patent) and RE37,802 (the '802 patent). When Wi-LAN first announced the litigation in November 2007, it said it was targeting chip suppliers, equipment vendors and electronics retailers in two suits. A Markman Order establishes the meaning of the patent claim terms in dispute between the parties. The claim-construction hearing with respect to the '222 and '802 patents was held Monday before Judge T. John Ward of the U.S. District Court for the Eastern District of Texas. Wi-LAN said the judge rejected LG's arguments in separate briefing that sought to invalidate claims in the '802 patent. Ottawa-based Wi-LAN, a patent-licensing company, has been involved in litigation with several companies it alleges are infringing on its patents. This year alone it sued LG in connection with Wi-LAN's V-chip technology, and settled another patent lawsuit with Telus Corp. (TU). Paradigm Capital analyst Barry Richards said in a note Wednesday that Monday's ruling covers 23 terms in dispute across two patents and deals with highly complex issues, making it difficult to fully assess winners or losers. "Having said that, there are very few changes to Wi-LAN's proposed '802 claims (covering 14 of the 23 terms) and Wi-LAN appeared to be the clear winner there," he wrote. Richards said the verdict is "less obvious" on the '222 patent (covering 9 of the 23 terms) where he said the judge

News (10 Most Recent Stories) often disagreed with both Wi-LAN and the defendants. Richards expects negotiations between Wi-LAN and the 22 defendants to advance, adding "we believe the probability of a settlement is high." The claim-construction hearing for the other patents at issue here, U.S. Patent Nos. 5,956,323 and 6,549,759, is scheduled for Sept. 1. Wi-LAN is up 7.4% to C$3.34 in Toronto Wednesday. -By Carolyn King, Dow Jones Newswires; 416-306-2100; [email protected] Click here to go to Dow Jones NewsPlus, a web front page of today's most important business and market news, analysis and commentary: http://www.djnewsplus.com/access/al?rnd=mUs%2Bt%2ByIZCW9SuBOw0Ubzg%3D%3D. You can use this link on the day this article is published and the following day. (END) Dow Jones Newswires May 12, 2010 11:19 ET (15:19 GMT) Investment Industry Regulatory Organization of Canada - Trade Resumption - Wi-Lan Inc. - WIN CNW Group May-12-2010 3:06:55 PM TORONTO, May 12 /CNW/ - Trading resumes in: <<

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HOME > LICENSING

Over 220 companies have licensed WiLAN technology inventions. The success of our licensing program is driven by:

The quality of our patents;

Our negotiation-based methodology; and The experience and expertise of our team.

Without the right execution-focused team, a licensing methodology is little more than a flow chart. Putting our licensing

methodology into action requires a multi-disciplinary team of engineers, technology researchers, patent agents, legal

professionals and market researchers with unparalleled knowledge, skills and experience.

WiLAN licenses patented inventions in the following technology areas:

Wireless technologies Wireline technologies V-Chip technologies

We continually examine our portfolio of patented inventions to identify new licensing opportunities that add value to our

current programs or which may be the basis of new licensing programs.

Companies that have licensed inventions in our portfolio include:

Trademarks are property of their respective owners.

Page 1 of 1WiLAN - Licensing

5/25/2010http://www.wi-lan.com/Licensing/default.aspx


HOME > INVENTIONS > PORTFOLIO

PORTFOLIO

WiLAN Issued Patents/Published Applications - United States & Canada

Patent Number Title

Wireless

RE37802 Multicode direct sequence spread spectrum

6,320,897 Multicode spread spectrum communications system

6,192,068 Multicode spread spectrum communications system

5,282,222 /

2,064,975 (Can)

Method and apparatus for multiple access between transceivers in wireless communications

using OFDM spread spectrum

7,317,704 Method of assigning radio channels in a wireless network

6,963,617 OFDM Receiver with adaptive equalizer

2001053515 Wireless local area network

7,197,022 Framing for an adaptive modulation communication system

7,177,598 Method and system for reducing channel interference in a frame-synchronized wireless communication system

7,023,798 Adaptive call admission control for use in a wireless communication system

7,006,530 Method and system for adaptively obtaining bandwidth allocation requests

6,956,834 Method and apparatus for allocating bandwidth in a wireless communication system

6,944,188 Synchronizing clocks across a communication link

6,925,068 Method and apparatus for allocating bandwidth in a wireless communication system

6,804,211 Frame structure for an adaptive modulation wireless communication system

6,728,514 Scalable wireless network topology systems and methods

6,693,887 Method for allocating fractional bandwidth in a fixed-frame communication system

6,683,866 Method and apparatus for data transportation and synchronization between MAC and physical

layers in a wireless communication system

6,577,863 Failure redundancy between modem interface cards and outdoor units in a wireless

communication system

6,549,759 Asymmetric adaptive modulation in a wireless communication system

6,459,687 Method and apparatus for implementing a MAC coprocessor in a communication system

2005058098 Frame structure for an adaptive modulation wireless communication system

2005089064 Method and apparatus for bandwidth request/grant protocols in a wireless communication

system

2006002336 Method and apparatus for allocating bandwidth in a wireless communication system

2006126549 Adaptive call admission control for use in a wireless communication system

2006146863 Method and system for adapatively obtaining bandwidth allocation requests

Page 1 of 3WiLAN - Inventions - Portfolio

5/25/2010http://67.192.1.247/Inventions/Portfolio/default.aspx


20070133481 Framing for an adaptive modulation communication system

20070165562 Adaptive call admisssion control for use in a wireless communication system

7,082,111 Method for dynamically allocating time slots of a common TDMA broadcast channel to a network of transceiver nodes

6,728,514 Scalable wireless network topology systems and methods

6,731,710 Method for rapid carrier frequency estimation in a communication system

6,714,551 Method and apparatus for maintaining a predefined transmission quality in a wireless network

for a metropolitan area

DSL/ATM

7,227,928 Arrangement for line-testing

7,046,623 Port swapping for inverse multiplexed digital subscriber lines

7,020,101 Method of implementing a repeater, and a transceiver unit

6,999,546 System and method for timing references for line interfaces

6,963,559 Arrangement of local area network

6,963,533 Method and system for establishing link bit rate for inverse multiplexed data streams

6,937,719 Multiplexing and demultiplexing of narrowband and broadband services in a transmission

connection

6,928,056 System and method for distribution of a data stream from high-to-low-to-high bandwidth links

6,867,600 Electronic circuit and method for testing a line

6,763,019 Method and system for authenticated fast channel change of media provided over a DSL

connection

6,748,076 Method for separating narrowband and broadband services on a transmission link and a

splitter element

6,584,148 System and method for testing digital subscriber lines

6,480,494 Switching system data interface

6,477,207 Method and apparatus for implementing a transmission connection

6,466,033 Self powered DSL port continuity checker

6,240,091 Implementation of access service

6,128,300 Line card with modem interace

6,081,530 Transmission of ATM cells

5,999,621 Line card shelf

5,956,323 Power conservation for POTS and modulated data transmission

5,726,609 Pulse amplitude modulator using direct digital synthesizer

5,706,285 Network interfacing method and a network interface for a digital transmission network

5,526,154 Method of establishing a subscriber connection and a subscriber network

2004189157 Apparatus for retrofitting an enclosure with a cabinet




WiLAN also has issued and pending patents in many countries around the world.

2002196774 POTS extender for voice fallback in a subscriber line

2002041597 Changing of channel capabilities

V-Chip

5,828,402 Method and apparatus for selectively blocking audio and video signals

2,179,474

(Can)

Method and apparatus for selectively blocking audio and video signals

Cable

5,761,602 Hybrid multichannel data transmission system utilizing a broadcast medium

Location Tracking

6,249,486 Linear time display

6,219,307 Linear time display

6,867,693 Spatial position determination system

7,215,247 Spatial position determination system

Other

5,404,321 Comuter system and method for modifying and enhancing the built-in programs of a computer

5,570,305 Method and apparatus for the compression, processing and spectral resolution of

electromagnetic and acoustic signals




HOME > COMPANY

Developing, protecting, and monetizing technology intellectual property. Introducing inventions with mass

appeal to the world. Harnessing the value of innovation. And doing it all through specialized expertise. That’s the WiLAN Way.

Overview

WiLAN was founded in 1992 to commercialize technology inventions that made low-cost, high-speed wireless

networking a reality. Used in several generations of proprietary products manufactured by WiLAN and other products

offered by industry, these inventions were, by 2005, commercialized in millions of wireless networking devices worth many billions of dollars. Realizing the value that its intellectual property brought to industry, WiLAN chose in 2006 to

focus its business on developing, protecting and monetizing patented inventions.

Research and Development

Building on WiLAN’s rich history of innovation, our research and development team is focused on developing and commercializing inventions in next-generation communication systems. The innovations that WiLAN makes today may

form critical building blocks of valuable new technologies, markets and products that will benefit people in the future.

Just as WiLAN's past inventions have proven to be valuable to society – including W-OFDM (Wideband Orthogonal

Frequency Division Multiplexing), which contributed to the realization of today’s multi-billion dollar market for low-cost, high-speed Wi-Fi networks; and V-Chip, which gives parents the power to protect family members from inappropriate

content on television – the inventions we develop today may also contribute to a better future.

Inventions Our portfolio of over 800 patented inventions bring value to industry and consumers by enabling or improving millions

of communication and consumer electronics products sold around the world. Growth of our portfolio is driven by our

internal research and development program as well as technology acquisitions and licensing partnerships. Bringing in

additional technologies strengthens the value of our portfolio to current and future licensees by increasing their ability to access technology that benefits their products. For inventors and companies who lack the resources, knowledge

and experience to monetize their patented inventions, our acquisition and revenue-sharing licensing partnership

programs generate an important return on their innovation investments.

Licensing

WiLAN’s experienced team of technical, business and legal professionals facilitates licensed use of our intellectual property using a process that begins with detailed research and negotiation. We offer reasonable royalty rates that are

not overly burdensome to companies and markets yet generate a fair return for WiLAN. Inventions in our portfolio are

licensed by companies that manufacture or sell a wide range of communication and consumer electronics products

including 3G cellular handsets, Wi-Fi-enabled laptops, Wi-Fi/DSL routers, xDSL infrastructure, WiMAX base stations, Bluetooth-enabled devices and digital television receivers. Over 220 companies, including Cisco, Nokia, Panasonic,

Samsung, RIM, Sharp, Sony and Toshiba, have licensed WiLAN technologies.

Page 1 of 1WiLAN - Company

5/25/2010http://67.192.1.247/company/default.aspx


John Briody Direct Dial: (212) 402-9438 [email protected]

MCKOOL SMITH A PROFESSIONAL CORPORATION • ATTORNEYS

One Bryant Park 47th Floor

New York, New York 10036 Telephone: (212) 402-9400Facsimile: (212) 402-9444

May 12, 2010

BY EMAIL David Kays, Esq. McDermott Will & Emery 275 Middlefield Road, Suite 100 Menlo Park, CA 94025

RE: Wi-LAN Inc. v. Research in Motion Corporation et al. Misc. Action No. 3:10-CV-00859-W-CAB

Dear David:

As promised, we write to follow up on our telephone conference from Monday concerning the specific discovery Wi-LAN Inc. (“Wi-LAN”) seeks from non-party Qualcomm, Inc. (“Qualcomm”).

A. Technical Documents For Chipsets At Issue In The Litigation

Wi-LAN requires the core technical documents that describe the structure and operation of the CDMA-2000 technology implemented in each of the Qualcomm chips at issue in the litigation pending in the United States District Court for the Eastern District of Texas, Wi-LAN Inc. v. Research in Motion Corporation et al., No. 2:08-CV-247 (the “Litigation”).1 Such documents must reflect the structure and operation of the base band processing and radio components at the PHY and MAC layers.

We would like you to confirm in writing that we have the core technical documents for each of the Qualcomm chipsets at issue. We have reviewed Qualcomm’s production of documents to date and have determined that Qualcomm has not produced any of the core technical documents for at least the following chipsets at issue in the litigation:

MSM6050 MSM6800A MSM6000 QSC6085 MSM6575 MSM5100 QSC6055 MSM6075

1 A list of the chips at issue is attached hereto as Exhibit A.


May 12, 2010 Page 2

MSM6025 QSC6075 MSM6100 MSM6125 MSM3100 MSM6571 MSM5105 MSM6300 CSM5000 CSM6700 CSM6800 MSM7501A MSM6100L MSM3000 MSM7500A MSM6125L

Wi-LAN proposes that Qualcomm complete its production of the above materials by no later than June 4, 2010.

B. Source Code

Wi-LAN is amenable to proceeding with discovery of Qualcomm’s source code through the use of representative samples provided that Qualcomm produces documents sufficient to allow Wi-LAN to understand the changes made in the CDMA technology from chip to chip.

You advised that Qualcomm intends to initially make available for review the source code for the MSM6550 chip. As promised, we have reviewed our records and, based upon that review, Wi-LAN requests that Qualcomm also make available the source code for the MSM6800, MSM6500, MSM6100 and MSM6050 chips. Given our time frame, we need access to the source code for these chips sooner than later. Once we have had the opportunity to review the source code for the five chips, we can discuss the viability and logistics of using these chips as representative of the remaining chips at issue.

Wi-LAN proposes that the source code for the MSM6550 chip be made available as soon as possible, but no later than Friday, May 21. Wi-LAN proposes that source code for the MSM6800, MSM6500, MSM6100 and MSM6050 chips be made available by June 4, 2010.

C. License Agreements

Wi-LAN agrees to substantially narrow the scope of licensing materials that it seeks pursuant to the subpoena served on April 16, 2010 as amended May 5, 2010. Wi-LAN seeks only the following materials:

• License agreements for Qualcomm’s CDMA technology sufficient to establish the standard or typical Qualcomm license agreement terms, a representation that the agreements produced are sufficient, and the identity of all companies that have taken licenses from Qualcomm under such terms or similar terms;


May 12, 2010 Page 3

• Qualcomm’s license agreements with Broadcom and Mediatek and the related communications between Qualcomm and Broadcom and between Qualcomm and Mediatek;

• License Agreements and related communications between Qualcomm and the companies whose patents are included as part of Qualcomm’s standard or typical CDMA licenses (e.g., InterDigital, Philips and Ericsson);

• License agreements related to OFDM technology that Qualcomm has licensed in or out;

• Documents sufficient to determine Qualcomm’s licensing practice and procedures for CDMA and OFDM technologies.

We explained at great length Wi-LAN’s need for these license materials and look forward to receiving them as quickly as possible. Wi-LAN proposes that these materials be produced no later than June 4, 2010.

We look forward to discussing these matters further during our Thursday telephone conference at 9 AM Pacific/12 PM Eastern Standard Time.

Very truly yours, /s John C. Briody John C. Briody


Exhibit A - Relevant Qualcomm Chipsets

MSM6050

MSM6800A

MSM6000

QSC6085

MSM6575

MSM5100

QSC6055

MSM6075

MSM6025

QSC6075

MSM6100

MSM6125

MSM3100

MSM6571

MSM5105

MSM6300

CSM5000

CSM6700

CSM6800

MSM7501A

MSM6100L

MSM3000

MSM7500A

MSM6125L

MSM6800

MSM6550

MSM6500

MSM6055

MSM6281

MSM5500

MSM6171


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Dolkas, David

From: Kays, DavidSent: Tuesday, June 01, 2010 6:37 PMTo: Robert Cote; John C. BriodyCc: Dolkas, DavidSubject: RE: Wi-LAN

Bob and John ‐‐

This responds to John’s letter of May 12 and Bob's emails of May 26 and 27, regarding Wi‐LAN’s license‐related requests in the April 16th subpoena. We are proceeding as set forth in my May 28 email below on the technical documents and the source code and this email in no way changes what we have previously agreed to as to those items. Since we last spoke in mid‐May and you emphasized your desire to obtain Qualcomm’s licenses and related communications, we have spent a fair amount of time considering the relevancy of Qualcomm’s licenses, the confidentiality of those agreements and have also assessed the burden imposed by your request.

Although you say are narrowing your license‐related requests from the April 16th subpoena, your request seem to be getting broader in scope. Based on your May 26 email, Wi‐LAN seeks “at least a subset of Qualcomm’s agreements that are representative of the royalty rates Qualcomm charges and pays for CDMA technologies in each of these areas [CDMA, CDMA‐2000, WCDMA], for both chipset manufacturers and handset manufacturers.” In addition, Wi‐LAN seeks Qualcomm’s OFDM agreements “that are representative of the royalty rates Qualcomm receives and pays for this technology.”

As we have previously noted, these license agreements contain highly‐confidential business information of Qualcomm, as well as it’s licensees and licensors. We understand that the basis for Wi‐LAN’s April 16th subpoena for the license agreements and related communications is Wi‐LAN’s intention to use the Qualcomm’s confidential license terms to support Wi‐LAN’s reasonable royalty action in the Texas Action. Our research confirms that Qualcomm’s licenses are completely irrelevant to Wi‐LAN’s reasonable royalty claim. See, for example, the Federal Circuit’s recent holding in ResqQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010), where the court held that the any evidence related to the damages proof must tie directly to the claim invention and any evidence unrelated to the claimed invention is irrelevant because it does not support compensation for infringement. Id. at 869.

We also understand from Qualcomm that there is no such thing as a representative or standard license agreement ‐‐ each license agreement is the subject of lengthy and complex negotiations. Further, we have confirmed with LG Electronics and UTStarcom that both of those defendants have produced their license agreements to Wi‐LAN; and, confirmed that Wi‐LAN has demanded that Motorola produce its license agreement with Qualcomm. While we don’t believe that any of Qualcomm’s licenses are relevant to any aspect of the Texas Action, including Wi‐LAN’s damages, the license agreements that Wi‐LAN already has (from LG Electronics and UTStarcom) and will presumably receive from Motorola are as good a cross‐section of such agreements as Wi‐LAN could hope for (in terms of the dates such licenses were entered and the size of the licensees).

We conferred with Qualcomm to understand the burden that would be imposed if we were to comply with Wi‐LAN’s demands to produce even “representative” agreements. We’ve determined that compliance would impose a huge burden upon Qualcomm in terms of time, expenses and personnel and would likely trigger


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problems with its licensee‐base (as well as significant attorney‐client privilege issues if you were also to persist in seeking communications relating to such agreements).

Notwithstanding the complete lack of relevance of Qualcomm’s licenses to Wi‐LAN’s damages claim, in exchange for Wi‐LAN’s agreement to drop the rest of its license‐related demands, Qualcomm is willing to provide the template agreement that it uses as a starting point for its CDMA license agreement negotiations. However, for the reasons set forth above, Qualcomm will not produce any agreements it has with other non‐parties.

I am in meetings most of the next two days, but I’m sure we can find time to speak. I would like to know whether what we’re offering to you is acceptable and, if not, why not and why you believe Qualcomm’s licenses are in anyway relevant to Wi‐LAN’s damages claim. Let me know times you are available to speak. I’m hopeful that what we’ve agreed to provide is acceptable.

Thanks,

D

From: John C. Briody [mailto:[email protected]] Sent: Tuesday, June 01, 2010 4:50 PM To: Kays, David; Robert Cote Cc: Dolkas, David Subject: RE: Wi-LAN

David, We expected to hear from you today. We assume you must still be working on a proposal concerning Qualcomm's license agreements. Please let us know when is a good time to speak tomorrow so we can continue to move the process along. Thanks, John

From: Kays, David [mailto:[email protected]] Sent: Friday, May 28, 2010 6:49 PM To: Robert Cote Cc: John C. Briody; Dolkas, David Subject: Wi-LAN

Bob ‐‐ Let's plan on talking Tuesday. I am still working on what Qualcomm is willing to do in response to the license‐related requests. The source code for the MSM6550 has been deposited at Iron Mountain and is ready for your review. I am in the process of having the source code collected for the other four priority chips on your list ‐‐ MSM6800, MSM6500, MSM6100 and MSM6050 ‐‐ and will have a better sense of when that can be produced next week. We are also in the process of collecting more documentation for the "Relevant Qualcomm Chipsets" and hope to start producing those by next Friday. It may be that the additional code and documents will be produced on a rolling basis. Regarding your experts, as long as they have agreed to the Supplemental PO we probably won't have any objections. But if you want to send me all their info at once I can try to expedite the process ‐‐ other than Dr. Lomp, I haven't seen any disclosures from you since the Supplemental PO was entered. Thanks,


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D David A. Kays McDermott Will & Emery LLP

275 Middlefield Road, Menlo Park, California 94025 direct: 650.815.7593 | main: 650.815.7400 | facsimile: 650.815.7401 [email protected] | www.mwe.com ******************************************************************************************************************* IRS Circular 230 Disclosure: To comply with requirements imposed by the IRS, we inform you that any U.S. federal tax advice contained herein (including any attachments), unless specifically stated otherwise, is not intended or written to be used, and cannot be used, for the purposes of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter herein. ________________________________________________________________________________ This message is a PRIVILEGED AND CONFIDENTIAL communication. This message and all attachments are a private communication sent by a law firm and may be confidential or protected by privilege. If you are not the intended recipient, you are hereby notified that any disclosure, copying, distribution or use of the information contained in or attached to this message is strictly prohibited. Please notify the sender of the delivery error by replying to this message, and then delete it from your system. Thank you. ******************************************************************************************************************* Please visit http://www.mwe.com/ for more information about our Firm.


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Dolkas, David

From: Dolkas, DavidSent: Wednesday, June 09, 2010 2:32 PMTo: Robert Cote; John C. BriodyCc: Kays, DavidSubject: Wi-LAN Subpoena Matter with Qualcomm

Bob and John, As you know, we contacted Motorola and advised Motorola that Qualcomm does not object to Motorola's production of its license agreement to W‐LAN under the terms of the protective order in the Texas Action and on an attorneys' eyes only basis. We also confirmed with LG Electronics that it previously produced its license agreement with Qualcomm to you. We understand, as well, that Wi‐LAN already received the UT Starcom license. Beyond these actions, we don't intend to make any further contacts with the defendants in the Texas Action to ensure that their license agreements were or will be produced. It's not our responsibility to provide bates numbers and/or get involved in effectively meet and confer activities between Wi‐LAN and any of the defendants. As to what Qualcomm is willing to produce in response to the subpoena, Qualcomm agrees to produce a sample/template CDMA license agreement. In exchange, Wi‐LAN will seek no other licensing documents from Qualcomm and agree that all matters related to the subpoena for the license agreements and related communications are concluded. We don't believe that any Qualcomm license agreements or related documents are relevant to any issue in the Texas Action, including the licenses of the defendants in the Texas Action. Our efforts to contact the defendants in the Texas Action should not be construed in any way as a concession or agreement that any Qualcomm license agreement is relevant to your case. Our efforts were done to avoid motion practice before the court. David and I are both available on either Thursday or Friday morning pacific time to discuss. If we need to involve the Court then, and as we discussed, let's isolate exactly what the disputed issues are so that our briefs target the disputed issues only. Let us know how you want to proceed. Thanks. Dave Dolkas | IP Litigation McDermott Will & Emery [email protected] Direct: 650 815‐7415 Assistant: Maria Collins [email protected] Direct: 650 815‐7586


EXHIBIT “1” TO THE DECLARATION OF LOUIS M. LUPIN IN SUPPORT OF QUALCOMM INCORPORATED‘S MOTION TO



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Topics: Corporate

Qualcomm and UTStarcom Sign CDMA Subscriber UnitSAN DIEGO – March 22, 2004 – Qualcomm Incorporated (Nasdaq: QCOM), pioneer and world leader

of Code Division Multiple Access (CDMA) digital wireless technology, and UTStarcom, Inc. (Nasdaq:

UTSI), a global leader in IP access networking and services, today announced the companies have

signed a commercial CDMA subscriber unit and infrastructure license agreement. Under the terms of

the worldwide royalty-bearing agreement, Qualcomm has granted UTStarcom a patent license to

develop, manufacture and sell subscriber and infrastructure equipment for use in CDMA2000®,

WCDMA (UMTS) and TD-SCDMA systems. The royalties payable by UTStarcom are at Qualcomm’s

standard rates and are the same irrespective of CDMA standard for which the subscriber and

infrastructure equipment are sold.

"Qualcomm is pleased to enter into this agreement with UTStarcom, an industry leader in providing

cost-efficient wireless communication solutions globally. Qualcomm’s CDMA technology and strategy

enables UTStarcom to extend its existing wireless solutions to carriers throughout the world," said

Marvin Blecker, senior vice president and general manager of technology licensing for Qualcomm.

"Qualcomm continues to build on its leadership and expertise in developing and delivering end-to-end

3G solutions for all markets that enable broad product segmentation, product differentiation, and

enhanced wireless applications and services."

"UTStarcom firmly believes in the future of 3G CDMA and we are pleased to work with Qualcomm to

help grow the worldwide 3G CDMA market," said Taher Behbehani, vice president of business

development and strategy at UTStarcom. "This license agreement broadens UTStarcom’s global

wireless position, complements our existing 3G products and technologies, and opens up an attractive

suite of applications that are synergistic with our Personal Access System (PAS) services in high-

growth, developing worldwide markets."

UTStarcom is a global leader in IP access networking solutions and international service and support.

The company sells its wireline, wireless, optical and switching solutions to operators in both fast growth

and established telecommunications markets around the world. UTStarcom enables its customers to

rapidly deploy revenue-generating access services using their existing infrastructure, while providing a

migration path to cost-efficient end-to-end IP networks. Founded in 1991 and headquartered in

Alameda, California, the company has research and design operations in New Jersey, China and

India. For more information about UTStarcom, visit the company’s Web site at www.utstar.com.

Qualcomm Incorporated (www.qualcomm.com) is a leader in developing and delivering innovative

digital wireless communications products and services based on the Company's CDMA digital

technology. Headquartered in San Diego, Calif., Qualcomm is included in the S&P 500 Index and is a

2003 FORTUNE 500® company traded on The Nasdaq Stock Market® under the ticker symbol

QCOM.

Except for the historical information contained herein, this news release contains forward-looking

statements that are subject to risks and uncertainties, including the Companies’ ability to successfully

design and have manufactured significant quantities of CDMA components on a timely and profitable

basis, the extent and speed to which CDMA is deployed, change in economic conditions of the various

markets the companies serve, as well as the other risks detailed from time to time in the companies’

SEC reports, including the report on Form 10-K for the year ended September 28, 2003, and most

recent Form 10-Q.

###

Qualcomm is a registered trademark of Qualcomm Incorporated. CDMA2000 is a registered trademark of the

Telecommunications Industry Association (TIA USA). All other trademarks are the property of their respective

owners.

Qualcomm Contact

For press inquiries, view our Press Contacts page.

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