Free Letter - District Court of Delaware - Delaware

Case 1 :05-cv-00016-JJF Document 22 Filed 06/O3/2005 Page 1 of 2
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The Honorable Joseph J. Farnan, Jr,
United States District Court for the District ofDelaware
Lock Box 27
844 King Street
Wilmington, DE 19801
Re: Nokia Corporation and Nokia Inc. v.
Interdigital Communications and Interdigital Technology Corporation
C. A. No. 0S-16 {JJF)
Dear Judge Farnan:
Pursuant to Local Rule 7.l.2(c), Befendants lnterllligitai Commtmications
Corporation and interDigital Technology Corporation (collectively, "InterDigita1”) inform
the Court ofthe Federal Circuit’s decision in Medlmmune, Im:. v, Cenrocor, Inc. , which
was issued on Jtme 1, 2005, and a copy of which is attached hereto as Exhibit "A.” In
Medlmmune, the Federal Circuit affirmed the district court’s dismissal ofthe plaintiff s
patent declaratory judgment action for lack of subject matter jurisdiction because the
piaintiff was a licensee ofthe patent at issue and, thus, failed to establish that an actual
controversy existed between it and the defendant as the Declaratory Judgment Act
requires. Medfmmtme directly supports I.nterDigita1’s motion to dismiss Plaintiffs Nokia
Corporation and Nokia, Inc.’s declaratory judgment action on the grounds set forth at
pages 10 to i4 of InterDigital’s opening brief in support of its motion to dismiss and pages
l to 4 of lnterDigital’s reply brief in support of its motion to dismiss.
First, the Federal Circuit stated that its prior decision in Gen-Probe, Inc., v. Vysis,
Inc. , 359 F.3d I376 (Fed, Cir. 2004) conclusively establishes the absence of an actual
controversy when the declaratory judgment plaintiff is a licensee ofthe patents at issue:
We agree with the district court that Gen-Probe is
determinative of this case. Any controversy that may have
existed between i\/Iedimrnune and Centocor prior to and
during their various negotiations vanished when
Medlrnmune executed the license agreement, which is a

Case 1:05-cv-00016-JJF Document 22 Filed 06/O3/2005 Page 2 of 2
The Honorable Joseph J . Farnan, Jr.
June 3, 2005
Page 2
covenant by Centocor not to sue. Quite simply, once the
license agreement was in place and Medlmmune was in
compliance with the terms ofthe agreement, l\/ledlmmune
could not be under a reasonable apprehension that it would
face an infringement suit by Centocor.
Slip Opi, p. 6. This language further confirms that any purported disputes between Nokia
and InterDigital prior to entering into the January 1999 patent license agreement do not
constitute evidence of an actual controversy during the term of such agreement.
Second, the Federal Circuit expressly distinguished CR. Bcxml Inc. v. Schwartz,
7i6 F.2d 874 (Fed. Cir. 1983), a case that Nokia relied upon in its briefin opposition to
lnterDigital’s motion to dismiss in response to Gen~Probe.l Nokiafs Br. in Opposition, p.
19.
Respectfully,
Richard L. Horwitz
RLH/sdl
Enclosure
cc: Jack B. Blumenfeld, Esquire (via efiling and hand delivery and with enciosure)
Peter Kontio (via facsimile and with enclosure)
Robert S. Harrell (via facsimile and with enclosure)
684893 / 28840