You are on page 1of 30

Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.

49093 Page 1 of 30

1 Juanita R. Brooks, SBN 75934, brooks@fr.com


Seth M. Sproul, SBN 217711, sproul@fr.com
2 Fish & Richardson P.C.
3 12390 El Camino Real
San Diego, CA 92130
4 Phone: 858-678-5070 / Fax: 858-678-5099
5 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
6 Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
Fish & Richardson P.C.
7 1000 Main Avenue, S.W., Suite 1000
Washington, D.C. 20024
8 Phone: 202-783-5070 / Fax: 202-783-2331
9 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
10 Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
Boies, Schiller & Flexner LLP
11 1401 New York Avenue, N.W.
Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131
13
Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.
14
UNITED STATES DISTRICT COURT
15 SOUTHERN DISTRICT OF CALIFORNIA
16 Case No. 3:17-CV-00108-GPC-MDD
IN RE:
17
QUALCOMM LITIGATION, [Consolidated with
18 Case No. 3:17-CV-01010-GPC-MDD]
19 APPLE AND THE CONTRACT
MANUFACTURERS’ MEMORANDUM OF
20 POINTS AND AUTHORITIES IN SUPPORT OF
21 MOTION FOR PARTIAL SUMMARY
JUDGMENT THAT CERTAIN PATENTS ARE
22 UNENFORCEABLE DUE TO EXHAUSTION
(COUNT LIV OF APPLE’S AMENDED
23 COMPLAINT AND COUNT LXVII OF THE
24 CMS’ COUNTERCLAIMS)

25
26 DATE: November 9, 2018
TIME: 1:30 p.m.
27 DEPT: 2D
28 JUDGE: Hon. Gonzalo P. Curiel

Case No. 3:17-CV-00108-GPC-MDD


Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49094 Page 2 of 30

1 TABLE OF CONTENTS
2 I.  INTRODUCTION ......................................................................................... 1 
3 II.  BACKGROUND ........................................................................................... 2 
4 III.  LEGAL STANDARD ................................................................................... 2 
5 A.  Summary Judgment ............................................................................. 2 
6 B.  Patent Exhaustion ................................................................................ 3 
7 IV.  ARGUMENT................................................................................................. 4 
8 A.  The Supreme Court’s Recent Lexmark Decision
Forecloses Qualcomm’s Efforts To Circumvent the
9 Exhaustion Doctrine ............................................................................ 5 
10 1.  Lexmark Precludes Qualcomm’s Use of Patent
Rights To Impose Post-Sale Restrictions ................................. 6 
11
2.  Qualcomm Cannot Avoid Exhaustion Through
12 Foreign Sales ............................................................................. 8 
13 B.  Qualcomm’s Sale of Chipsets Exhausts Its Patent
Rights .................................................................................................. 8 
14
1.  Qualcomm’s Sale of Chipsets Is
15 an Authorized Sale That Exhau
Rights ........................................................................................ 9 
16
2.  Qualcomm Cannot Avoid Exhaustion with
17 Corporate Shell Games ........................................................... 10 
18 3.  Qualcomm’s Sale of Chipsets Exhausts
Qualcomm’s Patents, Notwithstanding the
19 Provision of Related Software ................................................ 11 
20 C.  Qualcomm Chipsets Substantially Embody the Patents-
in-Suit ................................................................................................ 13 
21
D.  Qualcomm’s Sale of Baseband Chipsets Exhausts the
22 ’725, ’822, and ’021 Patents as to Products
Incorporating Those Chipsets Because the Chipsets
23 Substantially Embody the Patent Claims .......................................... 14 
24 a.  The ’725 Patent............................................................. 14 
25 b.  The ’822 Patent............................................................. 18 
26 c.  The ’021 Patent............................................................. 20 
27 V.  CONCLUSION ........................................................................................... 22 
28
i Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49095 Page 3 of 30

1 TABLE OF AUTHORITIES

2 Page(s)
3 Cases
4 Alice Corp. v. CLS Bank Int’l,
5 134 S. Ct. 2347 (2014).......................................................................................... 17
6 Anderson v. Liberty Lobby, Inc.,
7 477 U.S. 242 (1986)............................................................................................ 2, 3

8 Audio MPEG, Inc. v. Dell Inc.,


272 F. Supp. 3d 813 (E.D. Va. 2017) ................................................................... 10
9
10 High Point SARL v. T-Mobile USA, Inc.,
640 F. App’x 917 (Fed. Cir. 2016) ......................................................................... 4
11
Impression Prods., Inc. v. Lexmark Int’l, Inc.,
12 137 S. Ct. 1523 (2017)................................................................................... passim
13
JVC Kenwood Corp. v. Nero, Inc.,
14 797 F.3d 1039 (Fed. Cir. 2015) ........................................................................ 4, 14
15
Keurig, Inc. v. Sturm Foods, Inc.,
16 732 F.3d 1370 (Fed. Cir. 2013) .............................................................................. 4
17 Keurig, Inc. v. Sturm Foods, Inc.,
18 No. CIV. 10-841-SLR, 2012 WL 4049799 (D. Del. Sept. 13, 2012),
aff’d, 732 F.3d 1370 (Fed. Cir. 2013)................................................................... 13
19
LG Elecs. Inc. v. Hitachi Am. Ltd.,
20
655 F. Supp. 2d 1036 (N.D. Cal. 2009) ......................................................... passim
21
LifeScan Scot., Ltd. v. Shasta Techs., LLC,
22 734 F.3d 1361 (Fed. Cir. 2013) ............................................................ 4, 15, 18, 21
23
Multimedia Patent Tr. v. Apple Inc.,
24 No. 10-CV-2618-H KSC, 2012 WL 6863471 (S.D. Cal. Nov. 9,
2012) ..................................................................................................................... 13
25
26 Quanta Computer, Inc. v. LG Elecs., Inc.,
553 U.S. 617 (2008)....................................................................................... passim
27
Rembrandt Data Techs., LP v. AOL, LLC,
28
641 F.3d 1331 (Fed. Cir. 2011) ............................................................................ 10
ii Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49096 Page 4 of 30

1 Straus v. Victor Talking Mach. Co.,


243 U.S. 490 (1917)................................................................................................ 7
2
United States v. Univis Lens Co.,
3 316 U.S. 241 (1942)....................................................................................... passim
4
Other Authorities
5
FED. R. CIV. P. 8(d)(2)................................................................................................ 13
6
7 FED. R. CIV. P. 56(a) .................................................................................................... 2

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
iii Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49097 Page 5 of 30

1 I. INTRODUCTION
2 For years, Qualcomm’s “no license, no chips” policy has required purchasers
3 of its chipsets to separately pay for a license to its patents even where the chipsets
4 substantially embody those patents. SOF ¶¶ 1, 3. The United States Supreme
5 Court’s decision in Impression Products, Inc. v. Lexmark International, Inc., 137 S.
6 Ct. 1523 (2017) (“Lexmark”), eliminates the very foundation of this practice.
7 Affirming what it previously referred to as “the longstanding doctrine of patent
8 exhaustion,” the Court explained that a patent holder may demand only “one
9 reward” for “every item that passes outside the scope of the patent monopoly,” and
10 when it has secured the reward for its invention through the sale of a patented
11 product, it may not further restrict the use or enjoyment of the item under the patent
12 laws. Id. at 1537. Here, the patented products are Qualcomm’s baseband chipsets
13 that substantially embody Qualcomm patents. E.g., SOF ¶¶ 58, 93, 97, 99, 103, 113,
14 125. Qualcomm seeks to restrict purchasers’ ability to use the chipsets they buy
15 and, by its own admission, requires them to pay both the price of the chipsets and
16 separate patent royalties for the right to make, use, and sell products that include the
17 chipsets. SOF ¶¶ 1-3. Qualcomm’s patent tribute can exceed the entire price of the
18 chipset, essentially doubling the cost of the product to its licensees.
19 Lexmark forbids this double-dipping. The Patent Act ensures that Qualcomm
20 “receives one reward” for its alleged invention—either the sale price of the chipsets
21 or the license fee—but not both. Id. To do otherwise would render the
22 longstanding exhaustion requirement a nullity, which is precisely what Qualcomm
23 has schemed to achieve. Qualcomm’s decision to sell chipsets in which its patents
24 are substantially embodied—and in turn receive whatever fee it decides is
25 appropriate “for the article and the invention which it embodies”—exhausts its
26 patent rights. Id. (internal quotations omitted). Qualcomm’s desire also to charge
27 royalties for those same patents is not permitted under the law.
28 Qualcomm’s double-dipping comes at a high price to Apple and the Contract
1 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49098 Page 6 of 30

1 Manufacturers (“CMs”) who assemble Apple’s products. Qualcomm sells


2 components to the CMs, who build those components into the Apple products they
3 make and then sell to Apple. SOF ¶¶ 11, 15. Qualcomm then charges the CMs a
4 license royalty on those products,
5 SOF ¶¶ 15, 29.
6 SOF ¶ 15.
7
8 SOF ¶¶ 15, 30. The parties do not dispute that the CMs incorporate the
9 purchased baseband chipsets into Apple products. SOF ¶¶ 14, 47. There is also no
10 genuine dispute that Qualcomm’s baseband chipsets substantially embody the
11 patents at issue in this motion—Qualcomm itself identifies a baseband processor in
12 Apple’s products as the component that allegedly causes infringement. SOF ¶ 48.
13 Therefore, this Court should grant summary judgment that Qualcomm’s
14 patent rights are exhausted by Qualcomm’s authorized sale of chipsets to the CMs.
15 II. BACKGROUND
16 The Statement of Material Facts sets forth the relevant details relating to
17 Qualcomm’s authorized sale of products that exhaust U.S. Patent Nos. 7,095,725
18 (’725 patent), 9,137,822 (’822 patent), and 7,096,021 (’021 patent).1
19 III. LEGAL STANDARD
20 A. Summary Judgment
21 Summary judgment should be granted “if the movant shows that there is no
22 genuine dispute as to any material fact and the movant is entitled to judgment as a
23 matter of law.” Fed. R. Civ. P. 56(a). Any evidence must be viewed in the light
24 most favorable to the nonmovant. See Anderson v. Liberty Lobby, Inc., 477 U.S.
25 242, 255 (1986) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158–59 (1970)).
26
1
27 This motion does not address exhaustion of all nine patents-in-suit, but rather
selects exemplary patents to illustrate the analysis and fit within the page limits. A
28 favorable ruling on this motion would inform the parties as to the exhaustion issues
for the other patents.
2 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49099 Page 7 of 30

1 “By its very terms, this standard provides that the mere existence of some alleged
2 factual dispute between the parties will not defeat an otherwise properly supported
3 motion for summary judgment; the requirement is that there be no genuine issue of
4 material fact.” Anderson, 477 U.S. at 247–48. Disputes over facts that are
5 irrelevant or unnecessary will not defeat a motion for summary judgment. Id. at
6 248. A dispute about a material fact is “genuine” only when the evidence is “such
7 that a reasonable jury could return a verdict for the nonmoving party.” Id.
8 B. Patent Exhaustion
9 “The longstanding doctrine of patent exhaustion provides that the initial
10 authorized sale of a patented item terminates all patent rights to that item.” Quanta
11 Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008); see also Lexmark, 137
12 S. Ct. at 1527. This doctrine “marks the point where patent rights yield to the
13 common law principle against restraints on alienation.” Lexmark, 137 S. Ct. at
14 1531. It reflects the “hostility toward restraints on alienation,” which are “hateful to
15 the law” and “obnoxious to the public interest.” Id. at 1532 (quoting Straus v.
16 Victor Talking Mach. Co., 243 U.S. 490, 501 (1917)). Therefore, when a patentee
17 chooses to sell a patented product, that product “‘is no longer within the limits of the
18 monopoly’ and instead becomes the ‘private, individual property’ of the purchaser,
19 with the rights and benefits that come along with ownership.” Id. at 1531 (quoting
20 Bloomer v. McQuewan, 55 U.S. 539, 549-50 (1853)). This is true even if the sale is
21 made pursuant to “an express otherwise lawful restriction.” Id. at 1533.
22 “[T]he traditional bar on patent restrictions following the sale of an item
23 applies when the item sufficiently embodies the patents—even if it does not
24 completely practice the patent—such that its only and intended use is to be finished
25 under the term of the patent.” Quanta, 553 U.S. at 628; id. at 637 (“[M]aking a
26 product that substantially embodies a patent is, for exhaustion purposes, no different
27 from making the patented article itself.”); see also United States v. Univis Lens Co.,
28 316 U.S. 241, 250-51 (1942). In such cases, courts apply the doctrine where the sale

3 Case No. 3:17-CV-00108-GPC-MDD


Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49100 Page 8 of 30

1 of a product substantially embodies a patent. Quanta, 553 U.S. at 636, 638; Keurig,
2 Inc. v. Sturm Foods, Inc., 732 F.3d 1370, 1373 (Fed. Cir. 2013). The same analysis
3 applies to method claims. See Quanta, 553 U.S. at 621, 628-30.
4 A product “substantially embodies” a patent “if (1) the only reasonable and
5 intended use of the article is to practice the allegedly exhausted patent; and (2) the
6 article embodies the essential or inventive features of the allegedly exhausted
7 patent.” JVC Kenwood Corp. v. Nero, Inc., 797 F.3d 1039, 1046 (Fed. Cir. 2015);
8 see also Quanta, 553 U.S. at 631; Univis Lens, 316 U.S. at 249; Keurig, 732 F.3d at
9 1373. Alternative uses are relevant to the exhaustion inquiry if they are both
10 “reasonable and intended” by the patentee or its authorized licensee, but “the
11 features partially practicing the patent are what must have an alternative use.”
12 Quanta, 553 U.S. at 631, 632 n.6.
13 The “essential” features of a patent are those that contribute to the “inventive”
14 part of the patent. Quanta, 553 U.S. at 633; High Point SARL v. T-Mobile USA,
15 Inc., 640 F. App’x 917, 929 (Fed. Cir. 2016). “What is ‘inventive’ about patent
16 claims in the patent exhaustion context is what distinguishes them from the prior
17 art.” LifeScan Scot., Ltd. v. Shasta Techs., LLC, 734 F.3d 1361, 1369 (Fed. Cir.
18 2013). Where a sold item embodies only some of the claimed elements or steps, it
19 will substantially embody the claim where the missing elements or steps are
20 “common and noninventive” or “standard parts.” Quanta, 553 U.S. at 633-34.
21 Therefore, the need to combine the sold item with standard parts is no bar to
22 exhaustion. Id. at 637 (“[N]o further ‘making’ results from the addition of standard
23 parts . . . to a product that already substantially embodies the patent.”).
24 IV. ARGUMENT
25 Qualcomm sells baseband processor chipsets to the CMs
26 intending for such chipsets to be
27 incorporated into Apple products. SOF ¶¶ 9-13. These sales are authorized by
28 Qualcomm. SOF ¶ 14. Once Qualcomm authorizes the sale of chipsets, in which its
4 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49101 Page 9 of 30

1 patents—including the ones that are the subject of this motion—are substantially
2 embodied, Qualcomm can no longer control the chipsets through the patent laws.
3 Lexmark, 137 S. Ct. at 1529.
4 Qualcomm has attempted to evade the exhaustion doctrine by structuring the
5 sale of chipsets, provision of certain software needed to implement those chipset,
6 and rights to practice patents embodied in those products in a shell game across
7 multiple entities and separate agreements. What matters, however, “is the patentee’s
8 decision to make a sale.” Lexmark, 137 S. Ct. at 1538. The CMs, who purchase the
9 chipsets from Qualcomm, and all subsequent owners of those chipsets (e.g., Apple)
10 are thus “free to use or resell the product just like any other item of personal
11 property, without fear of a [patent] infringement lawsuit.” Id. Likewise, Apple can
12 freely sell and use products containing these chipsets.
13 There is no material factual dispute that the three patents discussed below are
14 substantially embodied in Qualcomm’s chipsets. Therefore, this Court should enter
15 summary judgment that Qualcomm’s rights in these patents are exhausted by the
16 authorized sale of its baseband chipsets to the CMs as to products that incorporate
17 those chipsets.
18 A. The Supreme Court’s Recent Lexmark Decision Forecloses
Qualcomm’s Efforts To Circumvent the Exhaustion Doctrine
19
The patent exhaustion doctrine is a limit on the scope of the patentee’s rights
20
when it sells a patented article or a product in which its patents are substantially
21
embodied. Lexmark expressly rejects the argument that a patentee who sells an item
22
can later restrict the purchaser’s right to reuse or resell that product through a patent
23
infringement lawsuit. Id. at 1529. The Court explained that the patentee “exhausted
24
its patent rights in [its products] the moment it sold them.” Id. at 1531. The
25
exhaustion rule “functions automatically” to terminate all patent rights, and it
26
applies regardless of whether the patentee may have separate, enforceable non-
27
patent rights. Id. (“A patentee is free to set the price and negotiate contracts with
28
5 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49102 Page 10 of
30

1 purchasers, but may not, ‘by virtue of his patent, control the use or disposition’ of
2 the product after ownership passes to the purchaser.” (citing Univis Lens, 316 U.S.
3 at 250)). Accordingly, “even when a patentee sells an item under an express
4 restriction, the patentee does not retain patent rights in that product.” Id. at 1532.
5 It is the authorized sale of the item by the patentee that prevents the patentee
6 from enforcing any further restrictions on that item through patent infringement
7 suits. Lexmark, 137 S. Ct. at 1533 (“Without so much as mentioning the lawfulness
8 of the contract, we held that the patentee could not bring an infringement suit
9 because the ‘authorized sale . . . took its products outside the scope of the patent
10 monopoly.’” (citing Quanta, 553 U.S. at 638)). Therefore, once sold, products pass
11 outside the patent monopoly and the patentee then has no exclusionary patent right
12 left to enforce. Id. at 1533-34. The same reasoning holds true when applied to sales
13 of covered products by licensees. “So long as a licensee complies with the license
14 when selling an item, the patentee has, in effect, authorized the sale” and for
15 exhaustion purposes that sale is treated “as if the patentee made the sale itself.” Id.
16 at 1535. In this way, “patent exhaustion is uniform and automatic.” Id. The locus
17 of the inquiry remains a concern with restraints on alienation and the rights of the
18 purchaser—here, the CMs. “A purchaser has the right to use, sell, or import an item
19 because those are the rights that come along with ownership, not because it
20 purchased authority to engage in those practices from the patentee.” Id. at 1527.
21 1. Lexmark Precludes Qualcomm’s Use of Patent Rights To
Impose Post-Sale Restrictions
22
Applied to this case, the operative effect of Lexmark is to void Qualcomm’s
23
sales contracts that purportedly decouple patent rights from chipsets that
24
substantially embody Qualcomm’s patents. Specifically, the chipsets are sold
25
26
27
28
6 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49103 Page 11 of
30

1
2
3
4
5
.
6 SOF ¶¶ 23-24 (emphasis added).
7 The separate license Qualcomm forces on the CMs is known as the
8 Subscriber Unit License Agreement (“SULA”), which Qualcomm Inc. executes.
9 SOF ¶¶ 25-26. The SULA itself confirms Qualcomm’s unlawful intent to evade the
10 exhaustion doctrine by restraining the CMs’ ability to use chipsets without the
11 separate license:
12
13 SOF ¶ 27. That is, unless the CMs have signed a SULA, Qualcomm forbids the
14 CMs from iPhones and iPads using the very
15 baseband chipset components Qualcomm sold to the CMs. SOF ¶ 28.
16
17 ”
18 agreement that covers the same patent rights that were—as a matter of law—
19 automatically exhausted upon Qualcomm’s sale of Lexmark, 137 S. Ct.
20 at 1535. These sorts of provisions do not survive under Lexmark. See id. at 1534
21 (noting that the sale of a patented good “transfers the right to use, sell, or import
22 because those are the rights that come along with ownership, and the buyer is free
23 and clear of an infringement lawsuit because there is no exclusionary right left to
24 enforce”). Indeed, Qualcomm’s attempt to extend its patent rights beyond the first
25 sale to the CMs exemplifies the type of “restraints on alienation” that courts have
26 historically found to be “hateful to the law” and “obnoxious to the public interest.”
27 Straus, 243 U.S. at 501. In short, Qualcomm has violated the very essence of the
28 Supreme Court’s ruling in Lexmark:
7 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49104 Page 12 of
30

1 Allowing patent rights to stick remora-like to that item as it flows


through the market would violate the principle against restraints on
2 alienation. Exhaustion does not depend on whether the patentee receives
3 a premium for selling in the United States, or the type of rights that
buyers expect to receive. As a result, restrictions and location are
4 irrelevant; what matters is the patentee’s decision to make a sale.
5 Lexmark, 137 S. Ct. at 1538.
6 2. Qualcomm Cannot Avoid Exhaustion Through Foreign Sales
7 Lexmark also forecloses another path Qualcomm had pursued in its efforts to
8 elude exhaustion—selling patented articles extraterritorially—by holding that the
9 location of the sale is “irrelevant.” Id. at 1538. “An authorized sale outside the
10 United States, just as one within the United States, exhausts all rights under the
11 Patent Act.” Id. at 1535. The consequence here is that
12 to sell chipsets to CMs abroad provides no escape from the
13 exhaustion doctrine. Qualcomm’s patent rights are extinguished by those foreign
14 sales just as they would have been had the sales occurred within the United States.
15 B. Qualcomm’s Sale of Chipsets Exhausts Its Patent Rights
16 Qualcomm does not dispute that the CMs purchase baseband processor
17 chipsets from Qualcomm for the purpose of incorporating them into the iPads and
18 iPhones they will build (i.e., ). SOF ¶ 13. Qualcomm sells
19 chipsets to the CMs and licenses software for use in those chipsets to the CMs
20 SOF ¶¶ 17-18. The chipsets are sold
21
22 . SOF ¶ 18. The software is licensed to the CMs pursuant to a Master
23 Software Agreement (“MSA”) . SOF ¶¶ 17, 31.
24 That Qualcomm divides the chipset sales and software license across two
25 agreements—
26 —is pure artifice intended to
27 circumvent exhaustion. Examining each agreement in context reveals the singular
28 nature of the transaction under Qualcomm’s global direction.
8 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49105 Page 13 of
30

1 1. Qualcomm’s Sale of Chipsets Is an


Authorized Sale That Exhausts Its Patent Rights
2
Starting with the Component Supply Agreement, Qualcomm (through its
3
provides the CMs with certain which include
4
(i.e., the chipsets) needed to build iPhones and iPads:2
5
6
7
8 .
9 SOF ¶¶ 19-21. Importantly, the
10 SOF ¶ 22 (“
11 ”). Qualcomm has completed an authorized
12 sale, which exhausts any and all patent rights it may have in
13 (including, specifically, baseband chipsets). Lexmark, 137 S. Ct. at 135 (“Once a
14 patentee decides to sell—whether on its own or through a licensee—that sale
15 exhausts its patent rights, regardless of any post-sale restrictions the patentee
16 purports to impose, either directly or through a license.”).
17 Qualcomm’s baseband chipsets have no “utility” and the “only object of the
18 sale [was] to enable” the CMs to install the baseband chipsets into end devices so
19 that they can operate as designed and in accordance with the cellular standards. See
20 Quanta, 553 U.S. at 631-32. Consequently, sale of the chipset exhausts any patent
21 rights Qualcomm may have in the operation of the chipset, including any cellular
22 patents that are necessarily practiced by use of the baseband chipsets in the cellular
23 networks. See id. (“The lens blanks in Univis met this standard because they were
24 ‘without utility until [they were] ground and polished as the finished lens of the
25 patent.’ Accordingly, ‘the only object of the sale [was] to enable the [finishing
26 retailer] to grind and polish it for use as a lens by the prospective wearer.’” (citations
27 and footnote omitted)).
28 2
SOF ¶ 20.
9 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49106 Page 14 of
30

1 2. Qualcomm Cannot Avoid Exhaustion with

2
This Court should reject any Qualcomm attempt to obtain more than “one
3
reward” . The central inquiry for this Court is whether the
4
sale is “authorized.”
5
“To have an ‘authorized sale,’ a patentee may either directly sell
6
their invention or may authorize someone else to sell their invention through a
7
license agreement.” Audio MPEG, Inc. v. Dell Inc., 272 F. Supp. 3d 813, 821 (E.D.
8
Va. 2017) (emphasis added); see also Quanta, 553 U.S. at 625 (applying exhaustion
9
where technology company sold microprocessors with authorization from a different
10
party, the patentee); Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1335
11
(Fed. Cir. 2011) (affirming district court’s grant of summary judgment on the basis
12
that a sale by a sub-licensee exhausted patentee’s rights). If Qualcomm were
13
permitted to use the fact that it has organized itself into a coordinated body of
14
subsidiaries in order to avoid exhaustion, this important, 160-year-old patent
15
exhaustion doctrine would be rendered a dead letter.
16
Qualcomm cannot credibly claim sales of chipsets to the CMs
17
are unauthorized. Qualcomm owns the Qualcomm patents it later seeks to license to
18
the CMs, including the patents that are the subject of this motion. SOF at ¶ 7. As
19
owner of both its patent portfolio and
20
21
. SOF ¶¶ 4, 6, 8. For
22
example,
23
SOF ¶ 5
24
25
26
Qualcomm thus works to implement
27
the “no license, no chips” policy, which prevents sales of chipsets to manufacturers
28
unless they pay for exhausted patents by entering into separate patent license
10 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49107 Page 15 of
30

1 agreements. SOF at ¶ 1. In the words of Qualcomm’s former president Derek


2 Aberle,
3 SOF ¶ 2.
4 Importantly, Qualcomm defines its policies as a uniform whole across its
5 corporate structure. As an example, many of the contracts between Apple and
6 Qualcomm are between Apple Inc. and Qualcomm Inc.—the parent company and
7 patent owner—demonstrating that Qualcomm has the power to, and does, authorize
8 the sales in question. E.g., SOF ¶ 43. These contracts include, for example, the
9 Amended and Restated Strategic Terms Agreement, between Apple and Qualcomm
10 Inc., under
11
12
13
14 SOF ¶ 44. Under this agreement, Qualcomm Inc. and Apple can enter into
15 Statements of Work (“SOW”), which set forth
16
17
18 SOF ¶ 45
19
20
21 SOF ¶ 46. Therefore, there is no genuine dispute that Qualcomm authorizes
22 sales of chipsets to the CMs.
23 3. Qualcomm’s Sale of Chipsets Exhausts Qualcomm’s Patents,
Notwithstanding the Provision of Related Software
24
The sale of chipsets exhausts Qualcomm’s patents, even though the chipset is
25
designed to work with software that Qualcomm provides.
26
The CMs’ MSAs with Qualcomm provide the CMs with a license to certain
27
Qualcomm-provided software for use with its baseband chipsets in subscriber
28
11 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49108 Page 16 of
30

1 equipment such as iPhones and iPads, as the MSA’s Recitals reflect:


2
3
.
4
SOF ¶ 32 (emphasis added). The term “ ” refers to
5
(i.e., the baseband chipsets).3 SOF ¶ 33. The specific
6
software Qualcomm provides under the MSA is “ ,” collectively
7
defined to include
8
. SOF ¶ 34. Qualcomm’s definition echoes the
9
Recitals by specifying is “
10
.” SOF ¶ 35. The definition of “ ” is a mirror image,
11
expressly reciting that it must be “
12
.” SOF ¶ 36.4 In other
13
words, Qualcomm’s chipsets and software indisputably are a matched pair by
14
design, each intended to be used with, and only with, the other. SOF ¶¶ 16, 37.
15
The sale of the chipset alone exhausts any patent rights Qualcomm may have,
16
even before the software is loaded onto the device, because the “only object of the
17
sale [was] to enable” the CMs to utilize the chipsets. Quanta, 553 at 631-32
18
(citations omitted) (footnote omitted). As the Supreme Court explained in Univis:
19
[W]here one has sold an uncompleted article which, because it embodies
20 essential features of his patented invention, is within the protection of his
21 patent, and has destined the article to be finished by the purchaser in
conformity to the patent, he has sold his invention so far as it is or may
22 be embodied in that particular article.
23 Univis Lens, 316 U.S. at 251.5 Thus, the fact that software assists the Qualcomm
24
3
25
26
27 s
.
28 cerns lens “blanks” that were sold for eventual grinding into
multifocal eyeglass lenses in accordance with patents there at issue. Id. at 243.
12 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49109 Page 17 of
30

1 chipsets in performing their intended function does not defeat Apple and the CMs’
2 claim for exhaustion.
3 Even if utilizing the essential features embodied by Qualcomm’s chipsets
4 required still other, additional software authored by a party other than Qualcomm,
5 the result does not change. The exhaustion analysis turns not on the source of the
6 materials needed to place the patented article in its “completed form,” but whether
7 the patentee has transferred the article, and received a reward for the patent
8 monopoly in the form of the purchase price.
9 The first vending of any article manufactured under a patent puts the
article beyond the reach of the monopoly which that patent confers.
10
Whether the licensee sells the patented article in its completed form or
11 sells it before completion for the purpose of enabling the buyer to finish
and sell it, he has equally parted with the article, and made it the vehicle
12
for transferring to the buyer ownership of the invention with respect to
13 that article. To that extent he has parted with his patent monopoly in
either case, and has received in the purchase price every benefit of that
14
monopoly which the patent law secures to him.
15 Id. at 252.
16 Viewing the MSA, Qualcomm approves the
17 activities to effect sales that are “authorized” and exhaustive.
18
C. Qualcomm Chipsets Substantially Embody the Patents-in-Suit
19
There can be no genuine dispute that Qualcomm’s baseband chipsets
20
substantially embody the patents at issue in this motion. In its opening expert
21
reports, Qualcomm alleged that Apple products infringe these patents. SOF ¶¶ 48-
22
51. These allegations help to show that the claims would be substantially embodied
23
in the baseband chipsets, if the claims were practiced at all.6 This Court may rely on
24
6
25 Apple’s allegations of noninfringement are no impediment to summary judgment
on the issue of exhaustion. An exhaustion theory can exist in the alternative with a
26 noninfringement one, see FED. R. CIV. P. 8(d)(2), and courts have ruled on
exhaustion without reaching the merits of noninfringement. See Multimedia Patent
27 Tr. v. Apple Inc., No. 10-CV-2618-H KSC, 2012 WL 6863471, at *5 (S.D. Cal.
Nov. 9, 2012) (finding noninfringement argument mooted by deciding exhaustion in
28 favor of accused infringer); Keurig, Inc. v. Sturm Foods, Inc., No. CIV. 10-841-

13 Case No. 3:17-CV-00108-GPC-MDD


Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49110 Page 18 of
30

1 these allegations for the purposes of this motion. See LG Elecs. Inc. v. Hitachi Am.
2 Ltd., 655 F. Supp. 2d 1036, 1044, 1048 (N.D. Cal. 2009) (granting summary
3 judgment based on patentee’s infringement contentions).
4 D. Qualcomm’s Sale of Baseband Chipsets Exhausts the ’725, ’822,
and ’021 Patents as to Products Incorporating Those Chipsets
5
Because the Chipsets Substantially Embody the Patent Claims
6 Qualcomm alleges that Apple mobile devices equipped with an Intel
7 baseband chipset (which are manufactured by the CMs) infringe the ’725, ’822, and
8 ’021 patents. SOF ¶ 49. Qualcomm supports its infringement allegations using only
9 baseband chipset source code (i.e., source code that is compiled and run by the
10 baseband chipset). SOF ¶ 50. The infringement allegations are equally applicable
11 to Qualcomm’s own chipset,
12
13
14
15
16 Therefore, if Apple’s products practice the ’725, ’822, and ’021 patents, then
17 all claims of those patents would be substantially embodied in the baseband chipset.
18 As a result, the authorized sale of Qualcomm’s chipset to the CMs exhausts
19 Qualcomm’s patent rights in these patents with respect to products that incorporate
20 those baseband chipsets. See Quanta, 553 U.S. at 638.
21
22 The ’725 patent relates to controlling the data rate on the reverse link of a
23 wireless communication system to reduce delays in data transmission. SOF ¶ 52;
24 Dkt. 501 at 45. The ’725 patent specifically deals with situations where a mobile
25
26 SLR, 2012 WL 4049799, at *4 (D. Del. Sept. 13, 2012) (despite defendant’s raising
a variety of defenses, including noninfringement, “the court focuses on the issue of
27 patent exhaustion, which is determinative”), aff’d, 732 F.3d 1370 (Fed. Cir. 2013);
cf. JVC Kenwood Corp. v. Nero, Inc., 797 F.3d 1039, 1046 (Fed. Cir. 2015)
28 (affirming summary judgment of noninfringement while recognizing the potential
for summary judgment on the alternative ground of patent exhaustion).
14 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49111 Page 19 of
30

1 station does not have data to transmit, and the data-justified rate subsequently drops
2 to zero. SOF ¶ 53; Dkt. 501 at 45. The ’725 patent addresses this issue by the
3 utilization of a “dummy rate” that constrains the data-justified rate, and thereby
4 helps to ensure that a mobile station will not experience delays when it increases the
5 transmission rate. SOF ¶ 54; Dkt. 501 at 45.
6 During prosecution of the patent, Qualcomm amended claims 1, 6, 9, and 18
7 to include that the “data transmission rate is constrained to be no less than a
8 predetermined amount less than the data-justified rate for the previous frame” or
9 “the data-justified rate is constrained to be no less than a dummy rate”—subject
10 matter identified by the Patent Office to be allowable. SOF ¶ 55. Independent
11 claims 19, 26, and 32 were deemed allowable in the first instance because they
12 already recited a “ramp-up-limited rate” constraint to the data transmission rate: “the
13 data transmission rate . . . is set equal to the greater of [a current or first] data
14 transmission rate and a sticky rate.” SOF ¶ 56; LifeScan, 734 F.3d at 1369 (“What
15 is ‘inventive’ about patent claims in the patent exhaustion context is what
16 distinguishes them from the prior art.”).
17 Each claim limitation, including the inventive aspect, would be performed by
18 functionality within a baseband chipset. SOF ¶ 57. A baseband chipset is the part
19 of a mobile station that would determine data transmission rates. SOF ¶ 59. It is
20 also the part that would transmit data on the reverse link (i.e., from the mobile
21 station to the base station) at those data transmission rates. SOF ¶ 60. Even if the
22 “transmitting” steps were performed by circuitry that resides outside the Qualcomm
23 baseband chipset, “transmitting” is a standard, well-known operation that is carried
24 out using standard, well-known components such as RF circuitry. SOF ¶ 61. Like
25 the step of connecting a chipset to memory in Quanta, the transmitting step here is
26 common and noninventive. Quanta, 553 U.S. at 634. The baseband chipset thus
27 substantially embodies the claims because it “carr[ies] out all the inventive
28 processes when combined, according to [its] design, with standard components” like
15 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49112 Page 20 of
30

1 RF circuitry that enables data transmission. Id.


2 Qualcomm acknowledges that the baseband chipset is the component
3 responsible for data transmission rates and transmitting data on the reverse link in its
4 infringement allegations. SOF ¶ 62 (Qualcomm’s expert alleging Apple infringes
5 claims 9-10). According to Qualcomm, the baseband chipset is configured to
6 perform the recited determining steps, and the Apple products “transmit data using
7 HSUPA using an Intel baseband chipset.” SOF ¶¶ 63-65. The baseband chipset is
8 “configured to run the compiled source code shown by the Jones Report” to
9 allegedly perform the determining limitations of claim 9. SOF ¶ 64. The same is
10 true of Qualcomm’s allegation related to infringement of dependent claim 10. SOF
11 ¶ 66. Qualcomm, through its expert Dr. Min, thus confirmed that the baseband
12 chipset controls the data rate on the reverse link.
13 This conclusion is equally true of the Qualcomm chipset as it is the Intel
14 chipset because both are required to comply with Apple’s PRDs.
15
16
17 SOF ¶ 67. Notably, Qualcomm identifies no component of
18 an Apple product, other than a baseband chipset, that controls the data rate on the
19 reverse link. SOF ¶ 68. Accordingly, there is no genuine issue of material fact that
20 the baseband chipset embodies the identified inventive feature of the ’725 patent.
21 See LG Elecs., 655 F. Supp. 2d at 1044. Furthermore, the only reasonable and
22 intended use of this functionality in the baseband chipset is to practice the identified
23 inventive features of the ’725 patent. SOF ¶ 69. In fact, the baseband chipset “all
24 but completely practice[s] the patent.” Quanta, 553 U.S. at 633.
25 The rest of the claims would likewise be substantially embodied in the
26 baseband chipset. Independent claims 1, 6, and 19 recite steps for “determining”
27 data transmission rates and “transmitting” data on the reverse link at those
28 transmission rates, similar to the limitations of claim 9 except in method form. SOF
16 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49113 Page 21 of
30

1 ¶ 70. As confirmed by Dr. Min with respect to claim 9, the “determining” and
2 “transmitting” steps would be performed by the baseband chipset. SOF ¶ 71; Cf.
3 Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2360 (2014) (holding, in §101
4 analysis context, the form of the claim is immaterial). As discussed above, even if
5 the “transmitting” steps were performed, in part, by circuitry that resides outside the
6 Qualcomm baseband chipset, standard, well-known components such as RF
7 circuitry would do so. See SOF ¶ 61. Accordingly, to the extent they are practiced
8 by a mobile station, independent claims 1, 6, and 19 would be substantially
9 embodied in the baseband chipset. SOF ¶ 72.
10 Independent claim 26 recites an apparatus comprising a “transmit subsystem”
11 and a “processor” coupled to the transmit subsystem and configured to determine a
12 new data transmission rate in the same way as claim 9. SOF ¶ 73. Independent
13 claims 18 and 32 recite a “software product” with instructions configured to cause a
14 data processor to perform steps to “determine” data transmission rates and
15 “transmit” data on a reverse link, like in claims 1, 6, 9, and 19. SOF ¶ 75. These
16 instructions would be included within software running on a baseband chipset. SOF
17 ¶ 76. Accordingly, claims 18, 26, and 32 would be substantially embodied in the
18 baseband chipset for the same reason as claims 1, 6, 9, and 19. SOF ¶¶ 74, 77.
19 The dependent claims do not add any limitations that impact the substantial
20 embodiment analysis for those claims. Those claims recite additional steps for
21 determining a second data transmission rate, and would be practiced at the baseband
22 chipset. SOF ¶¶ 78-79. Therefore, the dependent claims would also be substantially
23 embodied in the baseband chipset. SOF ¶ 80.
24 For the foregoing reasons, Qualcomm cannot legitimately dispute that, under
25 its own infringement theory, the baseband chipset substantially embodies all claims
26 of the ’725 patent. See LG Elecs., 655 F. Supp. 2d at 1044. As a result, the
27 authorized sale of Qualcomm’s chipset to the CMs exhausts Qualcomm’s patent
28 rights in the ’725 patent with respect to Apple products that incorporate Qualcomm
17 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49114 Page 22 of
30

1 baseband chipsets. See Quanta, 553 U.S. at 638.


2
3 The ’822 patent relates to communications between a mobile station (aka
4 access terminal) and an access point, such as a base station. SOF ¶ 81; Dkt. 501 at
5 35. The patent identifies a need to send more efficiently an acknowledgment
6 message from a base station to a mobile station. SOF ¶ 82. To address this need,
7 the ’822 patent recognizes that the mobile station can send information regarding
8 forward link channel quality during its initial access attempt with the base station.
9 SOF ¶ 82; Dkt. 501 at 35.
10 During prosecution of the patent, Qualcomm stressed the claimed process of
11 selecting an access sequence from a group of access sequences. To convince the
12 patent examiner that its claims were patentable, Qualcomm authorized the examiner
13 to amend the independent claims to recite that the access sequences being selected
14 “are distributed in proportion to a number of access terminals requiring a given
15 amount of power needed to send an indicator of acknowledgment to an access
16 terminal.” See SOF ¶ 83. Qualcomm thus signaled that the access sequence
17 selection limitation is the inventive feature. See LifeScan, 734 F.3d at 1369.
18 A baseband chipset is the part of a mobile station that would provide the
19 functionality of selecting an access sequence as part of its implementation of an
20 access procedure. SOF ¶ 84. Qualcomm acknowledges as much when it accuses
21 Apple products of infringing this patent. Id. The infringement analysis focuses on
22 source code found in and executed by the baseband processor in Apple devices.
23 SOF ¶ 85. Specifically, Qualcomm’s expert Dr. Villasenor opined that the baseband
24 processor “meets all of the elements of claim 12.” SOF ¶ 86. Focusing on the
25 “access sequence” limitation, he identified sections of the chipset source code as
26 practicing claim 12. Id. Dr. Villasenor thus confirmed that the baseband chipset
27 would be responsible for selecting an access sequence. Qualcomm identified no
28 other component that would perform this function. SOF ¶ 87. Accordingly, there is
18 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49115 Page 23 of
30

1 no genuine issue of material fact that a baseband chipset would embody the
2 inventive feature of the ’822 patent. See LG Elecs., 655 F. Supp. 2d at 1044.
3 Further, the only reasonable and intended use of this functionality in the baseband
4 chipset is to practice the identified inventive features of the ’822 patent. SOF ¶ 88.
5 Claim 12 also recites a memory element. SOF ¶ 89.
6 SOF ¶ 91.
7 Even if the memory element resides outside the baseband chipset,7 it is a standard,
8 well-known component performing a standard, well-known operation, namely,
9 storing a computer program. SOF ¶ 92. In Quanta, “the final step to practice the
10 patent [wa]s common and noninventive: . . . connecting a microprocessor or chipset
11 to buses or memory.” 553 U.S. at 634. Likewise, here, the claim requires a generic
12 memory element, which is a common and noninventive element. Therefore, as in
13 Quanta, the baseband chipset embodies the essential features of claim 12 because
14 the chipset “carr[ies] out all the inventive processes when combined, according to
15 [its] design, with standard components” like a memory element. Id. Claim 12 is
16 substantially embodied in the baseband chipset. SOF ¶ 93.
17 The same is true for each of the other independent claims. Qualcomm
18 similarly amended claims 1, 20, 28, 30, 31, and 33 to recite the claimed process of
19 selecting an access sequence from a group of access sequences. SOF ¶ 94. As
20 confirmed by Dr. Villasenor with respect to claim 12, the selection of an access
21 sequence would be performed at the mobile station by the baseband chipset. SOF ¶
22 95. Claims 1, 28, and 31 do not add any additional limitations that are not
23 performed by a baseband processor, whereas claim 20 recites a common “memory,”
24 like in claim 12. SOF ¶¶ 96, 98. Claims 30 and 33 recite an additional step of
25 “transmitting the selected access sequence and the CQI value.” SOF ¶ 100. The
26
7
27 Dr. Villasenor does not say whether the memory element is in the baseband
chipset or not. SOF ¶ 90. Instead, he states that “any difference between the
28 computing and selection of access sequences and ‘a memory element configured to
store a plurality of groups of access sequences’ is insubstantial.” Id.
19 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49116 Page 24 of
30

1 transmission step is performed with the help of instrumentalities, such as a mobile


2 antenna, located outside of the baseband chipset. SOF ¶ 101. However, like the
3 memory element of claim 12, the claimed transmitting functionality is common and
4 noninventive such that the transmitting step does not change the exhaustion analysis.
5 SOF ¶ 102; Quanta, 553 U.S. at 634. Accordingly, to the extent they are practiced
6 by the mobile station, the remaining independent claims would also be substantially
7 embodied in the baseband chipset. SOF ¶¶ 97, 99, 103.
8 The dependent claims either relate to the access sequence selection process
9 itself, or the step of transmitting the selected access sequence, both of which would
10 be practiced at the baseband chipset alone or with a standard transmitter element.
11 SOF ¶ 104. Because it is a standard part, the transmitter element does not change
12 the exhaustion analysis. Quanta, 553 U.S. at 633-34; SOF ¶ 105. Accordingly, the
13 dependent claims would also be substantially embodied in the baseband chipset.
14 For the foregoing reasons, Qualcomm cannot legitimately dispute that, under
15 its infringement theory, its baseband chipset substantially embodies all claims of the
16 ’822 patent. See LG Elecs., 655 F. Supp. 2d at 1044. As a result, the authorized
17 sale of Qualcomm’s chipset to the CMs exhausts Qualcomm’s patent rights in the
18 ’822 patent with respect to Apple products that incorporate Qualcomm baseband
19 chipsets. See Quanta, 553 U.S. at 638.
20
21 The ’021 patent relates to inter-system handover, which is the handover from
22 a mobile station from a first cellular system to a second cellular system. SOF ¶ 106;
23 Dkt. 501 at 8. The ’021 patent provides a method for a mobile station to perform
24 power measurements of the second cellular system when the power level of the first
25 cellular system remains below a certain threshold level. SOF ¶ 107; Dkt. 501 at 8.
26 During prosecution of the patent, Qualcomm stressed that the claims recite a
27 method of initiating, in a mobile station, measurements “to enable a decision to
28 handover” only after the “power level of the signal remains below a predetermined
20 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49117 Page 25 of
30

1 threshold value.” SOF ¶ 108. Qualcomm even amended the claims to recite the
2 “only after” feature expressly. SOF ¶ 109. Qualcomm thus signaled that measuring
3 the power level of the second base station “only after” the power level of the first
4 base station remains below a threshold value is the inventive feature of the patent.
5 See LifeScan, 734 F.3d at 1369.
6 A baseband chipset is the part of a mobile station that would determine
7 whether the power level has remained below a threshold value and initiate
8 measurements only after the power level remained below that threshold value. SOF
9 ¶ 110. To do so, the baseband chipset would receive the signal and process it to
10 deduce the power level of the received signal. SOF ¶ 111. The baseband chipset
11 also would be used to create messages that maintain connection with the first
12 cellular system while measuring the second cellular system. SOF ¶ 112. Qualcomm
13 acknowledges as much by accusing Apple mobile devices equipped with an Intel
14 baseband chipset of infringing claims 1, 2, 4, and 9-11 of the ’021 patent. SOF ¶
15 114. According to Qualcomm, the chipset in Apple’s products is configured to
16 perform “inter-RAT handover,” for example “when those products are handed over
17 from a 4G/LTE system to a non-4G/LTE (e.g., UMTS) system.” Id. (Qualcomm’s
18 expert opining that the source code is “capable of being configured to operate in the
19 [claimed] manner”). This functionality is not unique to Intel’s chipset, and it would
20 similarly be practiced by Qualcomm’s chipset. SOF ¶ 115. Significantly,
21 Qualcomm identifies no component other than a baseband chipset that would
22 perform this function. SOF ¶ 116. Accordingly, there is no genuine issue of
23 material fact that the baseband chipset embodies the inventive feature of the ’021
24 patent. See LG Elecs., 655 F. Supp. 2d at 1044. Further, the only reasonable and
25 intended use of this functionality in the baseband chipset is to practice the identified
26 inventive features of the ’021 patent. SOF ¶ 117. In fact, the baseband chipset “all
27 but completely practice[s] the patent.” Quanta, 553 U.S. at 633; SOF ¶ 113.
28 Dependent claims 2-11 relate to defining specific threshold values, processing
21 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49118 Page 26 of
30

1 the power levels of base stations, and relaying power level information back to the
2 network, all of which would be practiced at the baseband chipset. SOF ¶¶ 118-19.
3 For dependent claims 3 and 7, which include limitations that would be performed by
4 the network, those operations are common procedures that do not qualify as
5 inventive features. SOF ¶¶ 120-21. Therefore, the network-performed limitations
6 do not change the exhaustion analysis. Quanta, 553 U.S. at 633-34 (finding
7 substantial embodiment in a chipset, despite limitations relating to common and
8 noninventive elements practiced outside the chipset). Dependent claims 2-11 would
9 be substantially embodied in the baseband chipset. SOF ¶ 122.
10 Claims 12-14 of the ’021 patent include a term that the Court has determined
11 is indefinite. Dkt. No. 501 at 9-15 (holding “the ’021 patent fails to disclose
12 adequate structure corresponding to the ‘comparing’ function” in claim 12); SOF ¶
13 123. Claims 12-14 are therefore invalid. If these claims were not invalid, they
14 would be substantially embodied in the baseband chipset. SOF ¶¶ 125-27.
15 Specifically, claims 12 and 13 contain similar limitations to claims 6 and 7 in a
16 means-plus-function form, and claim 14 clarifies that the terminal is a mobile
17 station. SOF ¶¶ 124, 126. Therefore, claims 12-14, if valid, would be substantially
18 embodied in the baseband chipset for the same reasons as claims 6 and 7.
19 Accordingly, there is no genuine issue of material fact that the baseband
20 chipset substantially embodies all claims of the ’021 patent. See LG Elecs., 655 F.
21 Supp. 2d at 1044. The authorized sale of Qualcomm’s chipset to the CMs exhausts
22 Qualcomm’s patent rights in the ’021 patent with respect to Apple products that
23 incorporate Qualcomm baseband chipsets. See Quanta, 553 U.S. at 638.
24 V. CONCLUSION
25 As a result, this Court should grant partial summary judgment on Count LIV
26 of Apple’s Amended Complaint and Count LXVII of the CMs’ Counterclaims and
27 hold the ’725, ’822, and ’021 patents unenforceable due to exhaustion.
28
22 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49119 Page 27 of
30

1 Dated: August 31, 2018 Respectfully submitted,


2 By: /s/ Seth M. Sproul
3 Juanita R. Brooks, SBN 75934, brooks@fr.com
4 Seth M. Sproul, SBN 217711, sproul@fr.com
Fish & Richardson P.C.
5 12390 El Camino Real
San Diego, CA 92130
6 Phone: 858-678-5070 / Fax: 858-678-5099
7
Ruffin B. Cordell, DC Bar No. 445801,
8 pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421,
9 pro hac vice, degnan@fr.com
Fish & Richardson P.C.
10 1000 Main Avenue, S.W., Suite 1000
11 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
12
William A. Isaacson, DC Bar No. 414788,
13 pro hac vice, wisaacson@bsfllp.com
14 Karen L. Dunn, DC Bar No. 1002520,
pro hac vice, kdunn@bsfllp.com
15 Boies, Schiller & Flexner LLP
1401 New York Avenue, N.W.
16 Washington, DC 20005
Phone: 202-237-2727 / Fax: 202-237-6131
17
18 Attorneys for Plaintiff and Counterclaim-Defendant
Apple Inc.
19
20
21 By: /s/ Jennifer J. Rho
THEODORE J. BOUTROUS, JR. (SBN 132099)
22 tboutrous@gibsondunn.com
DANIEL G. SWANSON (SBN 116556)
23 dswanson@gibsondunn.com
24 JASON C. LO (SBN 219030)
jlo@gibsondunn.com
25 JENNIFER J. RHO (SBN 254312)
jrho@gibsondunn.com
26 MELISSA PHAN (SBN 266880)
mphan@gibsondunn.com
27 GIBSON, DUNN & CRUTCHER LLP
28 333 South Grand Avenue
Los Angeles, CA 90071
23 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49120 Page 28 of
30

Tel: (213) 229-7000; Fax: (213) 229-7520


1
2 CYNTHIA RICHMAN (DC Bar No. 492089,
Pro Hac Vice)
3 crichman@gibsondunn.com
GIBSON, DUNN & CRUTCHER LLP
4 1050 Connecticut Avenue, N.W.
5 Washington, DC 20036
Tel: (202) 955-8500; Fax: (202) 467-0539
6
Attorneys for Defendants, Counterclaimants, and
7 Third-Party Plaintiffs Compal Electronics, Inc., FIH
Mobile Ltd., Hon Hai Precision Industry Co., Ltd.,
8 Pegatron Corporation, and Wistron Corporation
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
24 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49121 Page 29 of
30

FILER’S ATTESTATION
1
Pursuant to Section 2(f)(4) of the Electronic Case Filing Administrative
2
Policies and Procedures of the United States District Court of the Southern District
3
of California, I certify that authorization for the filing of this document has been
4
obtained from each of the other signatories shown above and that all signatories
5
have authorized placement of their electronic signature on this document.
6
Dated: August 31, 2018
7 By: /s/ Seth M. Sproul
8 Seth M. Sproul
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
25 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 600-1 Filed 08/31/18 PageID.49122 Page 30 of
30

1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on August 31, 2018 to all counsel of record
4 who are deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on August 31, 2018, at San Diego, California.
8
9 /s/ Seth M. Sproul
Seth M. Sproul
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
26 Case No. 3:17-CV-00108-GPC-MDD