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Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.

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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
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Telephone: (619) 678-5070 / Fax: (619) 678-5099
5
Ruffin B. Cordell (DC Bar #445801; Admitted Pro Hac Vice) cordell@fr.com
6
Lauren A. Degnan (DC Bar #452421; Admitted Pro Hac Vice) degnan@fr.com
7 FISH & RICHARDSON P.C.
8 1000 Maine Avenue, S.W., Suite 1000
Washington, D.C. 20024
9 Telephone: (202) 783-5070 / Fax: (202) 783-2331
10
William A. Isaacson (DC Bar #414788; Admitted Pro Hac Vice) wisaacson@bsfllp.com
11 Karen L. Dunn (DC Bar #1002520; Admitted Pro Hac Vice) kdunn@bsfllp.com
12 BOIES SCHILLER FLEXNER LLP
1401 New York Avenue, N.W.
13 Washington, DC 20005
14 Telephone: (202) 237-2727 / Fax: (202) 237-6131

15 Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.


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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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19 IN RE: Case No. 3:17-CV-00108-GPC-MDD
20 QUALCOMM LITIGATION. [Consolidated with Case No. 3:17-CV-01010-
21 GPC-MDD]

22 REPLY IN SUPPORT OF APPLE’S


MOTION FOR PARTIAL JUDGMENT ON
23 THE PLEADINGS
24
25 Judge: Judge Gonzalo P. Curiel
26 Date: November 9, 2018
Time: 1:30 p.m.
27 Courtroom: 2D
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REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR CASE NO. 17-CV-00108-GPC-MDD
PARTIAL JUDGMENT ON THE PLEADINGS
Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.60155 Page 2 of 6

1 Qualcomm has withdrawn its claim seeking a global portfolio FRAND rate,
2 and Apple and the CMs have agreed to withdraw their request that the Court set a
3 per-patent FRAND royalty for the nine patents-in-suit. This motion is directed at
4 Count IV of Qualcomm’s Counterclaims, the only remaining claim seeking to assess
5 a FRAND rate for Qualcomm patents, which seeks a declaration that Qualcomm’s
6 offers in negotiations with Apple satisfied its FRAND obligations to ETSI.
7 Qualcomm has failed to meet its burden to identify an actual case or controversy
8 sufficient for the Court to exercise subject matter jurisdiction over this Count.
9 Qualcomm does not dispute that the declaratory relief it seeks in Count IV
10 would not alter its legal relationship with Apple, or that Apple would not be
11 required to accept a license agreement based on the terms Qualcomm proposed in
12 past negotiations. As this Court has previously explained, “Whereas Qualcomm’s
13 negotiations with Apple are constrained by its contractual obligations to ETSI,
14 Apple is free to decline or accept Qualcomm’s offer regardless of whether it
15 complies with FRAND.” Apple Inc. v. Qualcomm Inc., 2017 WL 3966944, at *10
16 (S.D. Cal. Sept. 7, 2017).
17 Because the relief Qualcomm seeks in this Count would not solve a legal
18 controversy, it does not “admit of specific relief through a decree of a conclusive
19 character, as distinguished from an opinion advising what the law would be.”
20 MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 (2007).1 It therefore would
21 be purely advisory. InterDigital Commc’ns, Inc. v. ZTE Corp., 2014 WL 2206218,
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Only resolving the merits of individual patents would “‘finally and conclusively
24 resolve’ the underlying controversy between the [parties].” In re Qualcomm
Litigation, 2017 WL 5985598, *22 (S.D. Cal. Nov. 8, 2017) (citing MedImmune,
25 549 U.S. at 128 n.7). See also Huawei Technologies, Co., Ltd. v. Samsung
26 Electronics Co., Ltd., 2018 WL 1784065, *9 (N.D. Cal. Apr. 13, 2018) (“How am I
to adjudicate whether those offers were FRAND, if that determination depends on
27 valuation of global portfolios, and can only be made subsequent to finding each
28 patent valid and essential to the standard”).

REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR -1- CASE NO. 17-CV-00108-GPC-MDD
PARTIAL JUDGMENT ON THE PLEADINGS
Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.60156 Page 3 of 6

1 at *3 (D. Del. May 28, 2014). Federal courts have jurisdiction to adjudicate only
2 “actual and concrete disputes, the resolutions of which have a direct consequence on
3 the parties.” Monk v. Shulkin, 855 F.3d 1312, 1316 (Fed. Cir. 2017).
4 Qualcomm argues that “Courts routinely exercise jurisdiction over
5 declaratory judgment claims regarding whether a party has complied with a
6 contract.” Qualcomm’s Opposition to Apple’s Motion for Partial Judgment on the
7 Pleadings (“QC Opp.”) at 3, ECF No. 625. But in a typical declaratory judgment
8 involving a contract, the Court would be able to make a legally binding
9 determination as to the rights and obligations of the parties to the suit based on the
10 contract. Here, in contrast, a determination as to whether Qualcomm complied with
11 its obligations to ETSI would not bind Apple, nor alter its legal relationship with
12 Apple.2
13 Qualcomm argues that Apple’s allegations have created a justiciable
14 controversy, asserting that Apple and the CMs “cannot continue to assert antitrust
15 and disgorgement claims seeking billions of dollars in damages on the theory that
16 Qualcomm breached its FRAND contracts, while simultaneously arguing that there
17 is no controversy as to those alleged breaches.” QC Opp. at 1. The relevance of
18 FRAND issues and evidence with respect to other claims of Apple, the CMs or
19 Qualcomm other than Count IV does not create a justiciable controversy. And,
20 while evidence on FRAND issues will be heard by the Court (as it will be heard in
21 the FTC’s case against Qualcomm in the Northern District of California), the Court
22 will not be required by the antitrust or other claims, other than Count IV, to declare
23 a FRAND rate between Apple or the CMs and Qualcomm. “In MedImmune the
24
2
To the extent Qualcomm is arguing that the possibility of a breach of contract suit
25 by Apple as a third party beneficiary to Qualcomm’s contract with ETSI is sufficient
to confer jurisdiction, the claim is not ripe because Apple has neither brought any
26 such claims, nor suggested that it would bring such claims. Further, Apple has not
requested a FRAND determination from this Court and has previously told this
27 Court that it would not request a FRAND determination because the Court lacks
jurisdiction to make a global FRAND determination. Apple Inc. v. Qualcomm Inc.,
28 2017 WL 3966944, at *9 n.5 (S.D. Cal. Sept. 7, 2017).

REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR - 2- CASE NO. 17-CV-00108 GPC MDD
PARTIAL JUDGMENT ON THE PLEADINGS
Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.60157 Page 4 of 6

1 Supreme Court emphasized a long line of case law holding that a litigant may not
2 use a declaratory judgment action to ‘obtain piecemeal adjudication of defenses that
3 would not finally and conclusively resolve the underlying controversy.’” In re:
4 Qualcomm Litig., 2017 WL 5985598, *20 (S.D. Cal. Nov. 8, 2017) (citing
5 MedImmune, Inc., 549 U.S. at 128 n.7).
6 Qualcomm relies on two cases in which the same magistrate judge concluded,
7 with minimal analysis of the parties’ positions, that it had jurisdiction to determine
8 compliance with FRAND obligations; significantly in both cases the party seeking
9 declaratory relief alleged infringement.3 But here Qualcomm has not brought any
10 infringement claims. Apple, Inc. v. Motorola Mobility, Inc., 2012 WL 5943791, at
11 *2 (W.D. Wis. Nov. 28, 2012) (rejecting requests for declaratory relief, including
12 request for FRAND determination, and noting that such relief “may be appropriate
13 for a court to consider . . . in the context of a patent infringement suit”).
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26 Huawei Techs. Co. v. T-Mobile US, Inc., 2017 WL 957720, at *1 (E.D. Tex. Feb.
22, 2017), report and recommendation adopted, 2017 WL 951800 (E.D. Tex. Mar.
27 10, 2017); Panoptis Patent Mgmt., LLC v. Blackberry Corp., 2017 WL 780885, at
28 *6 (E.D. Tex. Feb. 10, 2017), report and recommendation adopted, 2017 WL
780880 (E.D. Tex. Feb. 28, 2017).
REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR - 3- CASE NO. 17-CV-00108 GPC MDD
PARTIAL JUDGMENT ON THE PLEADINGS
Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.60158 Page 5 of 6

Dated: October 12, 2018 Respectfully submitted,


1
2 By: /s/ William A. Isaacson
Juanita R. Brooks, SBN 75934, brooks@fr.com
3
Seth M. Sproul, SBN 217711, sproul@fr.com
4 Fish & Richardson P.C.
12390 El Camino Real
5
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
9 Lauren A. Degnan, DC Bar No. 452421,
pro hac vice, degnan@fr.com
10 Fish & Richardson P.C.
11 1000 Maine Avenue, S.W., Suite 1000
Washington, D.C. 20024
12 Phone: 202-783-5070 / Fax: 202-783-2331
13
William A. Isaacson, DC Bar No. 414788,
14 pro hac vice, wisaacson@bsfllp.com
15 Karen L. Dunn, DC Bar No. 1002520,
pro hac vice, kdunn@bsfllp.com
16 Boies Schiller Flexner LLP
17 1401 New York Avenue, N.W.
Washington, DC 20005
18 Phone: 202-237-2727 / Fax: 202-237-6131
19
Attorneys for Plaintiff and Counterclaim-Defendant
20 Apple Inc.
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REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR - 4- CASE NO. 17-CV-00108 GPC MDD
PARTIAL JUDGMENT ON THE PLEADINGS
Case 3:17-cv-00108-GPC-MDD Document 660 Filed 10/12/18 PageID.60159 Page 6 of 6

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 October 12, 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 Civ. L.R. 5.4(d). Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on October 12, 2018.
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/s/ William A. Isaacson
9 William A. Isaacson
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REPLY IN SUPPORT OF APPLE INC.’S MOTION FOR - 5- CASE NO. 17-CV-00108 GPC MDD
PARTIAL JUDGMENT ON THE PLEADINGS