Free Redacted Document - District Court of Delaware - Delaware

Case 1:05-cv-00016-JJF

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE NOKIA CORPORATION and NOKIA, INC., Plaintiffs, v. INTERDIGITAL COMMUNICATIONS CORPORATION and INTERDIGITAL TECHNOLOGY CORPORATION, Defendants. C.A. No. 05-16-JJF REDACTED PUBLIC VERSION

EXHIBIT B TO PLAINTIFFS' ANSWERING BRIEF IN OPPOSITION TO DEFENDANTS' MOTION FOR LEAVE TO FILE MOTION FOR SUMMARY JUDGMENT MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 N. Market Street Wilmington, DE 19801 (302) 658-9200 Attorneys for NOKIA CORPORATION and NOKIA, INC. OF COUNSEL: ALSTON & BIRD LLP Peter Kontio Patrick Flinn Randall Allen Lance Lawson 1201 West Peachtree Street Atlanta, GA 30309 404-881-7000 Original Filing Date: December 15, 2006 Redacted Filing Date: January 4, 2007

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MORRIS Y NICHOLS , A.RSHT & TUNNELL LLP
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November 9, 2006

BY ENL41L AND HAND DELIVERY Collins J. Seitz, Jr, Esquire Connolly Bove Lodge & Hutz LLP The Nemours Building 1007 North Orange Street Wilmington, Delaware 19899 Re: Nokia Corporation, et al. vs. InterDigital Communications Corporation., et al., C.A. No. 05-16 (JJF) Dear Special Master Seitz: During the hearing on Thursday, November 2, 2006, you requested that the parties send you a brief letter explaining whether InterDigital raised in its initial Motion to Dismiss the claims appearing in its recent filing that its declarations to ETSI are opinions and thus not actionable as commercial advertising and promotions. Those issues are raised at page 4 of Mr. Horwitz's November 1 letter to you. InterDigital did make the argument that the ETSI declarations were not commercial advertising and promotions in its Opening Brief in Support of Motion to Dismiss at pages 34-35. InterDigital previously did not raise its recent claim that its declarations that it owns 195. U.S. patents that are "essential" to the 3G standard are nothing more than opinions. In an effort to oppose discovery, InterDigital argues that ETSI IPR Guide Section 3.2.2 supports its view that public declarations of essentiality are merely statements of opinion. This section relates to "Update Procedure for ETSI IPR Online Database." See ETSI IPR Guide § 3.2.2. This statement, however, must be read in context and particularly in the light of the preceding paragraph 3.2.1. Paragraph 3.2.1 of the ETSI Guide reads: 3.2.1 Assessment of IPR rights As a general principle, ETSI does not perform any check on the status and validity of any Essential IPRs notified to ETSI. In addition, ETSI does not perform any search for Essential IPRs which may exist and have not been notified.

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Collins J. Seitz, Jr., Esquire November 9, 2006 Page 2

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Thus, paragraphs 3.2.1 and 3.2.2 (Exhibit A) read together and in context make clear that the reference to which InterDigital refers, i.e., the word "only," is there to make clear that the declarations are the views of the members and not of ETSI. The point is also discussed in a similar manner in paragraph 3.2 of the ETSI Guide, which makes clear that ETSI itself does not conduct an investigation into the truth of the declarations of essentiality made by a member and, therefore, ETSI cannot confirm or deny that the patents are essential. As is clear from its text, the provision imposes on ETSI members the obligation to update the E T Si database based on "information concerning studies performed on the essentiality of an IPR." Id. InterDigital does not and cannot explain why, if the initial declaration were no more than a statement of opinion, ETSI would require that it be updated in light of subsequent studies on essentiality. Indeed, the declarations that InterDigital executed for worldwide publication by ETSI state: The SIGNATORY has notified ETSI that it is the proprietor of the IPRs [appended to the Declaration] and has informed ETSI that it believes that the IPRs may be considered ESSENTIAL to the Standards listed above. InterDigital's declarations to ETSI dated April 10, 2001 and April 8, 2004 (Exhibits B and C without attachments) (capitalized terms in original). By declaring its patents to be essential to the 3G standard, InterDigital informs ETSI, its members, and the world that "it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the time of standardization, to make, sell, lease, or otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD without infringing" InterDigital's IPR. See ETSI IPR Policy at 15. InterDigital's statement that it is not possible to manufacture a product without infringing InterDigital's IPR is a statement of fact, the basic truth or falsity of which can be proven or disproved. There are several more reasons why InterDigital did not raise this issue in its initial motion and why InterDigital's current argument is wholly lacking in merit. First, the law is well settled that representations in the marketplace regarding the scope of coverage of one's patents are actionable under the Lanham Act. Indeed, in its Motion to Dismiss, InterDigital relied on the seminal Federal Circuit case so holding. See InterDigital's Brief in Support.of Motion to Dismiss at 28-30 relying on, among other cases, Zenith Elecs. Corp. v. Exzec, Inc., 182 F. 3d 1340 (Fed. Cir. 1999) and this Court's opinion in Enzo Life Science, Inc. v. Digene Corp., 295 F. Supp. 2d. 424 (D. Del. 2003) (Farnan, J.) (denying motion to dismiss and recognizing that statements in the marketplace concerning a party's patents can be actionable under the Lanham Act). Second, InterDigital's interpretation of the ETSI IPR Guide and Policy contradicts public policy because it would deprive ETSI and its members the reliability necessary to incur

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TWO PAGES OF EXHIBIT REDACTED AS CONFIDENTIAL

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CERTIFICATE OF SERVICE I, Julia Heaney, hereby certify that on January 4, 2007 I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Richard L. Horwitz Potter Andersoon & Corroon LLP [email protected] I also certify that copies were caused to be served on January 4, 2007 upon the following in the manner indicated: BY E-MAIL Richard L. Horwitz Potter Anderson & Corroon LLP 1313 N. Market Street Wilmington, DE 19801 BY E-MAIL Dan D. Davison Fulbright & Jaworski LLP 2200 Ross Avenue Suite 2800 Dallas, TX 75201-2784

/s/ Julia Heaney Julia Heaney