17-08-18 Apple's Opposition To Qualcomm's Motion To Dismiss Patent Claims

Case 3:17-cv-00108-GPC-MDD Document 119 Filed 08/18/17 PageID.
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1 Juanita R. Brooks, SBN 75934, brooks@fr.com
2 Seth M. Sproul, SBN 217711, sproul@fr.com
2
Fish & Richardson P.C.
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3 12390 El Camino Real
4 San Diego, CA 92130
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Phone: 619-678-5070 / Fax: 619-678-5099
5
5
6 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
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Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
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7 Fish & Richardson P.C.
8 The McPherson Building
8
901 15th Street, N.W., 7th Floor
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9 Washington, D.C. 20005
10 Phone: 202-783-5070 / Fax: 202-783-2331
10
11
11 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
12 Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
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Boies, Schiller & Flexner LLP
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13 1401 New York Avenue, N.W.
14 Washington, DC 20005
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15 Phone: 202-237-2727 / Fax: 202-237-6131
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16 Attorneys for Plaintiff Apple Inc.
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17 UNITED STATES DISTRICT COURT
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18 SOUTHERN DISTRICT OF CALIFORNIA
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19
19 Case No. 3:17-CV-0108-GPC-MDD
APPLE INC.,
20 Plaintiff,
20
21 vs. APPLE INC.S REDACTED
21 MEMORANDUM IN OPPOSITION TO
22 QUALCOMM INCORPORATED, QUALCOMM INC.S MOTION FOR
22
23 PARTIAL DISMISSAL OF APPLES FIRST
23 AMENDED COMPLAINT
Defendant.
24
24
25 Date: September 29, 2017
25 Time: 1:30 p.m.
26 Judge: Hon. Gonzalo P. Curiel
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27 Courtroom: 2D
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Case 3:17-cv-00108-GPC-MDD Document 119 Filed 08/18/17 PageID.6598 Page 2 of 26
1 TABLE OF CONTENTS
2 Page
3
I. INTRODUCTION ............................................................................................. 1
4
II. FACTUAL BACKGROUND ........................................................................... 4
5 III. ARGUMENT..................................................................................................... 6
6 A. Legal Standard......................................................................................... 6
7 B. Qualcomm Has Engaged in the Type of Extra-Judicial Patent
Enforcement the Declaratory Judgment Action Was Designed To
8
Prevent ..................................................................................................... 9
9 1. Qualcomm Used All Its Declared SEPs To Try To Convince
10 Apple To Pay Inflated, Non-FRAND Royalties for Qualcomms
Cellular SEPs ................................................................................ 9
11
2. Qualcomms Carefully-Worded Language that the Nine Patents
12 May Be SEPs Does Not Divest the Court of Jurisdiction ....... 10
13 C. Qualcomm Has Taken an Aggressive Posture Regarding Enforcement
of Patents It Has Declared Essential ..................................................... 14
14
D. The Cepheid Factors Further Show Jurisdiction Exists ........................ 15
15
E. The Court Should Exercise Its Discretion To Hear Apples Declaratory
16 Judgement Claims for the Nine Patents ................................................ 17
17 F. If the Court Finds the First Amended Complaint Deficient, the Court
Should Grant Apple Leave To Amend Its Complaint .......................... 18
18
IV. CONCLUSION ............................................................................................... 19
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i
Case No. 3:17-CV-00108-GPC-MDD
1 TABLE OF AUTHORITIES
2 Page(s)
3
4 Cases
5 3M Co. v. Avery Dennison Corp.,
6 673 F.3d 1372 (Fed. Cir. 2012) ..................................................... 6, 7, 10, 11, 12 13
7 ActiveVideo Networks, Inc. v. Trans Video Elecs., Ltd.,

975 F. Supp. 2d 1083 (N.D. Cal. 2013) .................................................................... 8
8
9 Apple Inc. v. Telefonaktiebolaget LM Ericsson, Inc.,

No. 15-CV-00154-JD, 2015 WL 1802467 (N.D. Cal. Apr. 20, 2015)................... 16
10
Applera v. Michigan Diagnostics, LLC,
11
594 F. Supp. 2d 150 (D. Mass 2009) ...................................................................... 13
12
Benitec Australia, Ltd. v. Nucleonics, Inc.,
13 495 F.3d 1340 (Fed. Cir. 2007) .............................................................................. 12
14
Cepheid v. Roche Molecular Sys., Inc.,
15 No. C124411 EMC, 2013 WL 184125 (N.D. Cal. Jan. 17, 2013) ........... 8, 15, 17
16 DeSoto v. Yellow Freight Sys., Inc.,
17 957 F.2d 655 (9th Cir. 1992) .................................................................................. 19
18 Hewlett-Packard Co. v. Acceleron LLC,
19
587 F.3d 1358 (Fed. Cir. 2009) ....................................................................... passim
20 Knievel v. ESPN,
393 F.3d 1068 (9th Cir. 2005) .................................................................................. 3
21
22
McCarthy v. United States,
850 F.2d 558 (9th Cir. 1988) .................................................................................... 3
23
Navarro v. Block,
24 250 F.3d 729 (9th Cir. 2001) ................................................................................ 8, 9
25
Qualcomm Inc. v. Compal Elecs. et al.,
26 Case No. 3:17-cv-1010-GPC-MDD ......................................................................... 1
27 Safe Air for Everyone v. Meyer,
28 373 F.3d 1035 (9th Cir. 2004) .................................................................................. 8
ii
3 Samsung Electronics Co., Ltd v. Texas Instruments, Inc.,

No. 3:96-cv-1, 1996 WL 343330 (N.D. Tex. Apr. 18, 1996) ................................ 14
4
SanDisk Corp. v. STMicroelectronics, Inc.,
5
480 F.3d 1372 (Fed. Cir. 2007) ....................................................................... passim
6
Super Sack Manufacturing Corp. v. Chase Packaging Corp.,
7 57 F.3d 1054 (Fed. Cir. 1995), abrogated on other grounds by
8 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) ............................. 11, 18
9 Weaver v. Ethicon, Inc.,

Case No. 16-cv-257-GPC-BGS, 2016 WL 4430855 (S.D. Cal. Aug.
10
22, 2016) ........................................................................................................... 18, 19
11
Wolfe v. Strankman,
12 392 F.3d 358 (9th Cir. 2004) .................................................................................... 8
13
Statutes
14
Declaratory Judgment Act ..................................................................................... 15, 18
15
16
17
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iii
1 Plaintiff Apple Inc. (Apple) hereby submits the following memorandum

2 in opposition to Qualcomms partial motion to dismiss Plaintiff Apple Inc.s
3 First Amended Complaint.
4 I. INTRODUCTION
5 Despite its repeated demands for Apple to pay outrageous, non-FRAND
6 royalties due to its extensive portfolio of patents it unilaterally declared as
7 standard-essential,1 Qualcomm is desperate to avoid putting the patents within
8 that portfolio to the test. This motion is Qualcomms fourth attempt to advance
9 its demands for billions in disputed royalty payments while avoiding
10 consideration of the very patents that are the sole basis for demanding royalties
11 in the first instance. In addition to the present motion, Qualcomm: (1) asked this
12 Court to stay all discovery related to all of the patent-related DJ claims in its
13 Rule 26(f) report and in its opposition to Apples motion to consolidate this case
14 with the 1010 action; (2) filed a motion for an anti-suit injunction, asking this
15 Court essentially to halt Apples claims in the UK, Japan, China and Taiwan,
16 challenging Qualcomms foreign patents as exhausted, invalid, not infringed,
17 and not standard essential; and (3) filed a motion for preliminary injunction
18 against Apples contract manufacturers, demanding ongoing royalty payments
19 immediately before the disputes over those royalties, including the contract
20 manufacturers patent-related declaratory judgment claims, are resolved by the
21 Court.2 The lengths to which Qualcomm is going to prevent any real
22
1
23 See Ex. A (Dec. 5, 2016 Letter to Whitt) at 5; Qualcomms Redacted First
Amended Counterclaims for Damages, Declaratory Judgment, and Injunctive
24
Relief, ECF No. 70, at 1, 176 (touting the breadth, importance, strength, and
25 value of its portfolio).
2
Qualcomm has now made a fifth attempt, moving to dismiss Apples contract
26
manufacturers claims relating to the nine patents at issue in this motion as well.
27 See ECF No. 116 from Qualcomm Inc. v. Compal Elecs. et al., Case No. 3:17-
cv-1010-GPC-MDD.
28
1
1 examination of its patents is astounding.

2 Qualcomm claims without support that no one need review its patent
3 portfolio because the sheer number of its patents justifies the outrageous
4 royalties Qualcomm demands. Qualcomm took that exact approach with Apple.
5 When pressed to demonstrate entitlement to royalties, Qualcomm described its
6 basis for [its] good-faith belief that Apples products infringe (absent a license)
7 many Qualcomm patents as Qualcomm holds a great many patents that are
8 essential to cellular standards implemented by Apple products and referenced a
9 list it had prepared specifically for Apple of patents that Qualcomm had
10 declared as standard essential (the List). See Apples First Amended
11 Complaint, ECF No. 83, at 139. Simply put, when challenged to prove that its
12 patents are infringed, Qualcomm responded by pointing to its List of patents
13 declared standard essential. Importantly, Qualcomms mere placing patents on
14 its self-serving List does not establish that Apple is liable for any royalties to
15 Qualcomm. Qualcomms patents must be tested, and Apples patent-related
16 declaratory judgment counts here do exactly that.
17 In an effort to avoid declaratory judgment jurisdiction, Qualcomm ignores
18 its use of the List as a club to force Apple to capitulate to Qualcomms
19 outrageous royalty demand. Now, Qualcomm claims that it never explicitly told
20 Apple that the nine patents added in Apples Amended Complaint (hereinafter
21 Nine Patents) are actually essential and used in Apples products. See Mtn. to
22 Dismiss (MTD) (ECF. No. 100-1) at 6-9. Qualcomm is thus using potential
23 essentiality as both a sword and a shieldQualcomms list of declared SEPs is
24 so big that Apple must pay it big dollars, but because Qualcomm has said only
25 that the listed patents may be essential, it argues Apple cannot challenge
26 individual patents on the List. But the law does not require Qualcomm to mouth
27 magic words to trigger declaratory judgment jurisdiction:
28
2
1 The purpose of a declaratory judgment action cannot be defeated

simply by the stratagem of a correspondence that avoids the
2 magic words such as litigation or infringement.
3 See Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir.
4 2009).
5 Moreover, it would be improper to look at the List in a vacuum, as
6 Qualcomm suggests. Qualcomm cannot ignore the role this List played in
7 Qualcomms comments regarding the necessity for Apple to take a license to its
8 standard-essential patents (SEPs). Qualcomm cannot ignore its boasting of its
9 in-depth analysis of Apples products against its declared standard essential
10 patents. See, e.g., Ex. A (Dec. 5, 2016 Letter to Whitt)3 at 7. Qualcomm cannot
11 ignore its history of suing those who do not agree to its outrageous license
12 demands. See Apples First Amended Complaint, ECF No. 83, at 12526.
13 Collectively, Qualcomms affirmative actions demonstrate that there is a live
14 case or controversy between Apple and Qualcomm over the Nine Patents, which
15 supports declaratory judgment jurisdiction.
16
17
18 3
Although Apple disagrees that Qualcomm has raised a factual dispute as to
19 Apples First Amended Complaint that needs to be resolved, cf. McCarthy v.
United States, 850 F.2d 558, 560 (9th Cir. 1988) (holding that the district court
20
may review any evidence, such as affidavits and testimony, to resolve factual
21 disputes concerning the existence of jurisdiction), Apple agrees with
Qualcomm that the Court can and should review the licensing correspondence in
22
deciding this motion. See MTD at 3 n.1, 4 n.3; see also Knievel v. ESPN, 393
23 F.3d 1068, 1076 (9th Cir. 2005) (In evaluating the context in which the
statement appeared, we must take into account all parts of the communication
24
that are ordinarily heard or read with it. (citations omitted)). Thus, Apple has
25 attached the following letters, the contents of which were referenced in the
parties pleadings: (1) Dec. 5, 2016 Letter to Whitt, Ex. A; (2) Dec. 2, 2016 E-
26
mail to Whitt, Ex. B; (3) July 15, 2016 Letter to BJ Watrous, Ex. C; (4)
27 November 11, 2016 Letter to J Whitt, Ex. D; and (5) June 12, 2016 Letter to
Whitt, Ex. E; (6) February 17, 2016 Letter to BJ Watrous, Ex. F.
28
3
1 II. FACTUAL BACKGROUND

2 Apple and Qualcomm began discussing a direct license in at least
3 November 2014. Apples First Amended Complaint, ECF No. 83, at 119.
4 During the course of those negotiations, Apple requested additional information
5 to evaluate properly a fair value for Qualcomms SEPs, including the basis for
6 Qualcomms belief that Apple infringed its patents. Apples First Amended
7 Complaint, ECF No. 83, at 137. In response, Qualcomm stated that Apple
8 products have been certified as compliant with CDMA/WCDMA (3G) and LTE
9 (4G) networks around the world and that Apple products that have been
10 certified as compliant with a standard necessarily practice every patent claim
11 that is essential to any mandatory portions of that standard. Id (emphasis
12 added). Qualcomm further stated that it would provide to Apple a
13 (substantially) complete list of the patents that Qualcomm had declared
14 essential. Id.; see also Ex. F (Feb. 17, 2016 Letter to Watrous). That list, which
15 includes the Nine Patents, was provided on March 18, 2016. Id. at 138.
16 Qualcomm thereafter informed Apple that it had already provided [its]
17 basis for Qualcomms good-faith belief that Apples products infringe (absent a
18 license) many Qualcomm patents, namely that Qualcomm holds a great many
19 patents that are essential to cellular standards implemented by Apple products,
20 and referenced the March 18, 2016 List. Id. at 139; see also Ex. E (Jun. 12,
21 2016 Letter to Whitt). Qualcomm told Apple that it had prepared over one
22 hundred claim charts
23 See Ex. D (Nov. 11, 2016 Letter to Whitt) at 1-2; Ex. B (Dec. 2, 2016 E-mail to
24 Whitt) at 1; Ex. A (Dec. 5, 2016 Letter to Whitt) at 7; see also Apples First
25 Amended Complaint, ECF No. 83, at 124. Qualcomm then expanded these
26 representations and said it was prepared to provide hundreds of additional
27
28
4
1 claim charts. Qualcomms First Amended Counterclaims, ECF No. 70, at

2 178 (emphasis added).
3 Qualcomm has become increasingly aggressive with respect to its
4 assertions regarding its cellular SEP portfolio. Qualcomm recently asserted
5 patents that it had declared as essential to 3G or 4G in a blitzkrieg of patent
6 infringement litigation against Apple competitor, Meizu, a large Chinese
7 smartphone maker that did not acquiesce to Qualcomms royalty demands.
8 Apples First Amended Complaint, ECF No. 83, at 125.
9 Qualcomm filed suit against Apples contract manufacturers, Case No.
10 3:17-cv-01010-GPC-MDD, asserting that Apple devices would infringe
11 numerous Qualcomm patents if these devices were not licensed. Apples First
12 Amended Complaint, ECF No. 83, at 142. Qualcomm has taken the position
13 in its preliminary-injunction papers in the 1010 Action that it is receiving no
14 compensation for [Apple and its contract manufacturers] use of [Qualcomms]
15 intellectual property. ECF No. 35-1 in Case No. 3:17-cv-01010-GPC-MDD, at
16 10.
17 In its amended counterclaims here, Qualcomm similarly asserts that
18 Apple needs some form of access to Qualcomms patent portfolio because
19 Apples cellular devices could not function without the use of Qualcomms
20 intellectual property. Without such access, Apple would infringe Qualcomms
21 patents. Qualcomms First Amended Counterclaims, ECF No. 70, at 120.
22 Qualcomm also asked this Court to declare the FRAND royalty for the cellular
23 SEP portfolio license that Qualcomm has offered to Apple.4 Apples First
24 Amended Complaint, ECF No. 83, at 143. In asking this Court to determine
25 the royalties due for every standard-essential patent in Qualcomms portfolio,
26
4
27 As discussed infra, Qualcomms request for this Court to determine a
portfolio-wide FRAND royalty is improper.
28
5
1 Qualcomm necessarily asserted that Apple infringes each and every one of those
2 declared patents. Id.; see also id. at 144.
3 III. ARGUMENT
4 A. Legal Standard
5 In MedImmune, Inc. v. Genentech, Inc., the Supreme Court clarified that,
6 to determine whether the case-or-controversy requirement has been met in a
7 patent-law declaratory judgment action, the court must determine whether the
8 facts alleged under all the circumstances show that there is a substantial
9 controversy between parties having adverse legal interests of sufficient
10 immediacy and reality to warrant the issuance of a declaratory judgment. 549
11 U.S. 118, 126 (2007) (quoting Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S.
12 270, 273 (1941)). The Supreme Court rejected the Federal Circuits previous
13 declaratory judgment test, which required reasonable apprehension of the filing
14 of a lawsuit. See id. at 132 n.11; see also SanDisk Corp. v. STMicroelectronics,
15 Inc., 480 F.3d 1372, 1380 (Fed. Cir. 2007) (The Supreme Courts opinion in
16 MedImmune represents a rejection of our reasonable apprehension of suit test.).
17 The test for declaratory judgment jurisdiction in patent cases, however
18 stated, is objective. Hewlett-Packard, 587 F.3d at 1363 (brackets and citation
19 omitted). Specifically, [it is] the objective words and actions of the patentee
20 that are controlling. Id. Thus, declaratory judgment jurisdiction generally
21 will not arise merely on the basis that a party learns of the existence of a patent
22 owned by another or even perceives such a patent to pose a risk of infringement,
23 without some affirmative act by the patentee. Id. at 1364 (citation omitted). At
24 the other end of the spectrum, if a party has actually been charged with
25 infringement of the patent, there is, necessarily, a case or controversy adequate
26 to support [declaratory judgment] jurisdiction. 3M Co. v. Avery Dennison
27 Corp., 673 F.3d 1372, 137879 (Fed. Cir. 2012) (quoting Cardinal Chem. Co. v.
28
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1 Morton Intl, 508 U.S. 83, 96 (1993)) (emphasis omitted).

2 Importantly, an effective[] charge of infringement is sufficient to
3 constitute a case or controversy. 3M, 673 F.3d at 1379. Furthermore, where a
4 patentee asserts rights under a patent based on certain identified and ongoing
5 activity of another party, and where that party contends that it has the right to
6 engage in the accused activity without license, an Article III case or controversy
7 will arise . . . . SanDisk, 480 F.3d at 138081.
8 In determining declaratory judgment jurisdiction exists, courts have
9 considered numerous, non-exclusive factors, including:
10 (1) the strength of any threatening language in communications
11 between the parties;
12 (2) the depth and extent of infringement analysis conducted by the
13 patent holder;
14 (3) whether the patent holder imposed a deadline to respond;
15 (4) any prior litigation between the parties;
16 (5) the patent holders history of enforcing the patent at issue;
17 (6) whether the patent holders threats have induced the alleged
18 infringer to change its behavior;
19 (7) the number of times the patent holder has contacted the alleged
20 infringer;
21 (8) whether the patent holder is simply a holding company with no
22 source of income other than enforcing patent rights;
23 (9) whether the patent holder refused to give assurance it will not
24 enforce its patent;
25 (10) whether the patent holder has identified a specific patent and
26 specific infringing products;
27 (11) the extent of the patent holders familiarity with the product prior to
28
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1 suit;
2 (12) the length of time that transpired after the patent holder asserted
3 infringement; and
4 (13) whether communications initiated by the declaratory judgment
5 plaintiff have the appearance of an attempt to create a controversy
6 in anticipation of filing suit.
7 See Cepheid v. Roche Molecular Sys., Inc., No. C124411 EMC, 2013 WL
8 184125, at *67 (N.D. Cal. Jan. 17, 2013) (emphasis added) (Cepheid
9 factors); see also ActiveVideo Networks, Inc. v. Trans Video Elecs., Ltd., 975 F.
10 Supp. 2d 1083, 10871090 (N.D. Cal. 2013).
11 Here, Qualcomm makes a facial attack on this Courts jurisdiction under
12 Rule 12(b)(1) because it challenges the sufficiency of Apples complaint.5 See
13 Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004) (In a
14 facial attack, the challenger asserts that the allegations contained in a complaint
15 are insufficient on their face to invoke federal jurisdiction.).6 As such, one
16 must take Apples factual allegations as true and draw all reasonable inferences
17 in Apples favor. See Wolfe v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004).
18 Likewise, for Qualcomms Rule 12(b)(6) challenge, all material
19 allegations of the complaint are accepted as true, as well as all reasonable
20 inferences to be drawn from them. See Navarro v. Block, 250 F.3d 729, 732
21 (9th Cir. 2001). A claim may be dismissed only if it appears beyond doubt that
22 the plaintiff can prove no set of facts in support of his claim which would entitle
23
24 5
See MTD at 6 (Apples FAC fails to allege facts sufficient to show a
25 definite, concrete dispute over the Additional Patents-in-Suit of sufficient
immediacy and reality to warrant issuing declaratory judgment.).
26 6
By contrast, in a factual attack, the challenger disputes the truth of the
27 allegations that, by themselves, would otherwise invoke federal jurisdiction.
Id.
28
8
1 him to relief. Id. (citations and quotations omitted).

2 B. Qualcomm Has Engaged in the Type of Extra-Judicial Patent
Enforcement the Declaratory Judgment Action Was Designed To
3 Prevent
4 All of the Nine Patents in Apples First Amended Complaint appear on
5 the March 18, 2016 List of patents that Qualcomm prepared specifically for
6 Apple. That List was provided as Qualcomms good faith belief that Apples
7 products infringe Qualcomm patents and that the patents are essential to
8 cellular standards implemented by Apple products. Apples First Amended
9 Complaint, ECF No. 83, at 13740, 14243. Qualcomm further cited the List
10 to demand that Apple should pay Qualcomms usurious non-FRAND royalties.
11 Id. at 146. The March 18, 2016 List is only part of Apples showing of a
12 controversy; Qualcomms affirmative actions taken as a wholeincluding
13 demanding that Apple take a portfolio license using this List as leverage,
14 informing Apple that it had already prepared over one hundred claim charts
15 comparing its patents to Apple products, and litigating against another
16 smartphone maker who stood up to Qualcomms non-FRAND licensing
17 demandshighlight the existence of a substantial controversy between Apple
18 and Qualcomm having adverse legal interests relating to the Nine Patents of
19 sufficient immediacy and reality to warrant resolution by the Court.
20 1. Qualcomm Used All Its Declared SEPs To Try To Convince
Apple To Pay Inflated, Non-FRAND Royalties for
21 Qualcomms Cellular SEPs
22 Qualcomm demanded Apple take a license to its portfolio of standard
23 essential patents using the March 18, 2016 List as leverage. During licensing
24 discussions, Qualcomm treated all of its SEPs as actually essential to inflate the
25 value of its portfolio artificially. For example, Qualcomms proposed licenses
26 purport to cover essential patents without mechanisms requiring Qualcomm to
27 distinguish actually-essential patents from declared-essential patents, and thus
28
9
1 fail to demonstrate exactly what Apple would be paying for. See Ex. C (Jul. 15,
2 2016 Letter to BJ Watrous) at Exhibit A. In fact, Qualcomm refused to provide
3 information on which patents it believed were actually essential, instead
4 pointing to the fact that its patents have been declared essential to 3G and 4G
5 standards and that Apple products are certified for such standards. See Ex. D
6 (Nov. 11, 2016 Letter to Whitt) at 1; Apples First Amended Complaint, ECF
7 No. 83, at 137-39.
8 Thus, Qualcomm is using potential essentiality as both a sword and a
9 shield: as a threat to force companies to license its entire portfolio for far more
10 than the portfolios true value; and a cover to avoid a proper challenge in court.
11 This is no different than the extra-judicial patent enforcement with scare-the-
12 customer-and-run tactics that the Declaratory Judgment Action was intended to
13 obviate. SanDisk, 480 F.3d at 1383 (quoting Arrowhead Indus. Water, Inc. v.
14 Ecolochem, Inc., 846 F.2d 731, 735 (Fed. Cir. 1988)).
15 2. Qualcomms Carefully-Worded Language that the Nine
Patents May Be SEPs Does Not Divest the Court of
16 Jurisdiction
17 Qualcomms careful avoidance of identifying specific patents as actually
18 essential does not divest this Court of jurisdiction. See 3M, 673 F.3d at 137879
19 (reversing the district courts finding of no jurisdiction even though the patentee
20 used may infringe rather than does infringe and holding that the patentee
21 had effectively charged the declaratory judgment plaintiff with infringement);
22 Hewlett-Packard, 587 F.3d at 1362 ([I]t is implausible (especially after
23 MedImmune and several post MedImmune decisions from this court) to expect
24 that a competent lawyer drafting such correspondence for a patent owner would
25 identify specific claims, present claim charts, and explicitly allege
26 infringement.).
27
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1 In 3M Company v. Avery Dennison Corporation, the Federal Circuit

2 reversed a district courts finding of no jurisdiction in similar circumstances.
3 673 F.3d at 137881. The 3M patentee reached out to the declaratory judgment
4 plaintiff and expressly stated that a specific product, the Diamond Grade DG 3,
5 may infringe the [patents in the case] and that licenses are available. Id. at
6 1379. The DJ plaintiff rejected the license offer. Id. In response, the patentee
7 responded that it had analyzed the [identified product] with regard to the
8 [patents in the case] and would provide claim charts. Id. The district court
9 dismissed the case after finding that these discussions were not enough to create
10 declaratory judgment jurisdiction. Id. at 1376. The Federal Circuit reversed,
11 however, holding that through its conduct, the patentee had effectively
12 charged the DJ plaintiff with infringement. Id. at 1379.
13 Qualcomm similarly effectively charged Apple with infringing the Nine
14 Patents. Qualcomm prepared a list of declared SEPs specifically for Apple and
15 told Apple that its products needed a license to all of Qualcomms SEPs. See
16 Apples First Amended Complaint, ECF No. 83, at 13739. By declaring a
17 particular patent as essential to ETSI standards, Qualcomm affirmatively stated
18 that it believes that the disclosed patent may be or may become ESSENTIAL
19 in relation to an identified standard. Ex. G (IPR Information Statement and
20 Licensing Declaration). This representation applies to each patent identified in
21 the March 18, 2016 List, and Qualcomm has given no indication that this belief
22 that a particular patent may be or may become ESSENTIAL has changed.7
23
7
Tellingly, Qualcomm never admits or argues that the Nine Patents are not
24
actually essential. Moreover, Qualcomm has not given Apple a covenant-not-to-
25 sue that would permanently moot any claim for infringement, pursuant to Super
26
Sack Manufacturing Corp. v. Chase Packaging Corp., 57 F.3d 1054, 105859
(Fed. Cir. 1995) (finding that patentees promise not to assert its patents against
27 alleged infringer resolved declaratory judgment counterclaims seeking
28
11
1 Significantly, Qualcomm relied on this March 18, 2016 List of patents as

2 evidence of its good faith belief that Apples products infringe Qualcomm
3 patents that are essential to cellular standards implemented by Apple products,
4 and as evidence that Apple should pay Qualcomms usurious non-FRAND
5 royalties. Apples First Amended Complaint, ECF No. 83, at 13740, 142
6 44, 146. In this way, Qualcomm indicated to Apple that it believes that the
7 patents identified in the List are actually essential to cellular standards and are
8 infringed by Apples products.
9 But Qualcomm did not stop there. In the wake of providing Apple the
10 specially-prepared List, and similar to the Plaintiff in 3M, Qualcomm informed
11 Apple that it had also prepared over one hundred claim charts to show why
12 Apple products infringe Qualcomms SEPs. See Ex. A (Dec. 5, 2016 Letter to
13 Whitt) at 7; Ex. B (Dec. 2, 2016 E-mail to Whitt) at 1; see also Qualcomms
14 First Amended Counterclaims, ECF No. 70, at 178 (stating that Qualcomm
15 told Apple that it was prepared to provide hundreds of additional claim charts
16 (emphasis added)). In other words, Qualcomm demanded Apple take a license
17 to its cellular SEP portfolio using the March 18, 2016 List and hundreds of
18 claim charts as leverage. These affirmative actions demonstrate that Qualcomm
19 had engaged in a course of conduct that shows a preparedness and willingness
20 to enforce its patent rights. SanDisk, 480 F.3d at 1382.
21
declaration of non-infringement and invalidity), abrogated on other grounds by
22
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); see also Benitec
23 Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 134548 (Fed. Cir. 2007).
Therefore, Qualcomm apparently still believes that the Nine Patents are
24
necessary to implement cellular standards and thus are infringed by Apples
25 products implementing those standards. Apple disagrees, thus creating a
substantial controversy as to whether the Additional Patents-in-Suit are
26
actually essential to the 3G/UMTS and/or 4G/LTE standards and infringed by
27 Apples products that support those standards. Apples First Amended
Complaint, ECF No. 83, at 147.
28
12
1 Applera v. Michigan Diagnostics, LLC, 594 F. Supp. 2d 150 (D. Mass

2 2009), besides not being binding, is inapposite because the patentee there did not
3 declare that its patents were essential. See, e.g., Applera and Michigan
4 Diagnostics Correspondence, ECF No. 32 from Applera Corp. v. Michigan
5 Diagnostics, LLC, Case No. 1:7-cv-10547, Exs. AE. In Applera, the patentee
6 disclosed sixty-two patents to the declaratory judgment plaintiff but made no
7 suggestion that these patents were in any way essential. See id.; see also 594 F.
8 Supp. 2d at 15859. The patentee also did not state that it believed the DJ
9 plaintiff infringed any of these patents. Id. at 15860.
10 Here, unlike the patentee in Applera, Qualcomm has effectively
11 charged Apple with infringement of its standards-essential patents. See 3M,
12 673 F.3d at 1379. For example, Qualcomm identified the universe of patents
13 that it believes are standards-essential. MTD at 9; see also Apples First
14 Amended Complaint, ECF No. 83, at 13739. Furthermore, Qualcomm has
15 stated that these SEPs form the basis for [its] good-faith belief that Apples
16 products infringe . . . many Qualcomm patents. Apples First Amended
17 Complaint, ECF No. 83, at 139. Although Qualcomms carefully-worded
18 communications with Apple did not state that particular patents are actually
19 necessary to a cellular standard, the entire purpose of the List was to showcase
20 the alleged essentiality of Qualcomms portfolio and communicate that fact to
21 Apple. Qualcomm now dissects the language it used but the overall tenor of the
22 communications was clear: Apple must take a license to the SEP portfolio on
23 the non-FRAND terms Qualcomm proposed. It is the overall context of
24 Qualcomms actions and statements that decide this issue. See Hewlett-
25 Packard, 587 F.3d at 1362 (The purpose of a declaratory judgment action
26 cannot be defeated simply by the stratagem of a correspondence that avoids the
27
28
13
1 magic words such as litigation or infringement.).8

2 C. Qualcomm Has Taken an Aggressive Posture Regarding
Enforcement of Patents It Has Declared Essential
3
Qualcomm willingness to enforce its patent rights further supports finding
4
jurisdiction here. This willingness is apparent from Qualcomms actions against
5
Meizu, see Apples First Amended Complaint, ECF No. 83, at 125, and
6
Apples contract manufacturers. Qualcomm has made assertions both in the
7
1010 case it filed against Apples contract manufactures and in the present suit
8
that Apple devices would infringe numerous Qualcomm patents if these
9
devices were not licensed, id. at 142, and that Apple needs some form of
10
access to Qualcomms patent portfolio because Apples cellular devices could
11
not function without the use of Qualcomms intellectual property. Without such
12
access, Apple would infringe Qualcomms patents. Qualcomms First
13
Amended Counterclaims, ECF No. 70, at 120. Qualcomm also leaked to
14
Bloomberg that it intends to file a complaint with the United States International
15
Trade Commission, alleging that Apples iPhones infringes certain Qualcomm
16
patents. Apples First Amended Complaint, ECF No. 83, at 142.9
17
Through these assertions and not-so-thinly-veiled threats, Qualcomm put
18
Apple in the position of either pursuing arguably illegal behavior or
19
20 8
Samsung Electronics Co., Ltd v. Texas Instruments, Inc., No. 3:96-cv-1, 1996
21 WL 343330 (N.D. Tex. Apr. 18, 1996), which applied the now rejected
reasonable-apprehension-of-suit test, has no persuasive value. Unlike the
22
declaratory judgment plaintiff in Samsung, Apple is challenging specific patents
23 from Qualcomms March 18, 2016 List, which contains patents that Qualcomm
has claimed are infringed by cellular standards. See id. at *46 (dismissing
24
claims against the Group 2 patents because TIs posturing did not give rise
25 to a reasonable apprehension of suit as to those patents and criticizing
Samsungs failure to identify specific patents).
26 9
That Qualcomm eventually sued Apple in the ITC and Germany on patents
27 other than the Nine Patents does not detract from the overall hostile atmosphere
Qualcomm has created with respect its cellular SEP portfolio.
28
14
1 abandoning that which he claims a right to do . . . . See SanDisk, 480 F.3d at

2 138081; see also MedImmune, 549 U.S. at 129 (The dilemma posed by that
3 coercionputting the challenger to the choice between abandoning his rights or
4 risking prosecutionis a dilemma that it was the very purpose of the
5 Declaratory Judgment Act to ameliorate. (citations omitted)). As a result,
6 Apple had the right to seek a declaration that the Nine Patents appearing on the
7 March 18, 2016 List were not essential, not infringed by Apple, invalid, and
8 exhausted, and seek a FRAND determination for any patent for which
9 Qualcomm can prove otherwise.
10 Thus there is plainly a live case or controversy between Apple and
11 Qualcomm regarding the Nine Patents and this Court has jurisdiction to resolve
12 the dispute between the parties.
13 D. The Cepheid Factors Further Show Jurisdiction Exists
14 Analyzing this case, and in particular, Qualcomms licensing rhetoric and
15 litigation conduct, under the Cepheid factors reinforces that Apple has shown an
16 actual case or controversy.
17 During licensing, Qualcomm made comments regarding the necessity of a
18 license (factor 1), provided in-depth analysis of Apples products (factor 2), and
19 identified a list of patents it believes are essential to the standard (factor 10).
20 Qualcomm has aggressively pushed its licenses and royalties on many
21 companies in the cell phone industry. See Qualcomms First Amended
22 Counterclaims, ECF No. 70, at 4. In pushing its licenses and royalties,
23 Qualcomm continuously touts the breadth, importance, strength, and value of
24 its patent portfolio. See id. at 176. For example, during its discussions with
25 Apple, Qualcomm has asserted that Apple products that have been certified as
26 compliant with a standard necessarily practice every patent claim that is
27 essential to any mandatory portions of that standard. See Apples First
28
15
1 Amended Complaint, ECF No. 83, at 139, 137 (emphasis added).

2 During discussions, Qualcomm disclosed that it had prepared over one
3 hundred claim charts for patents from its list of SEPs. See Ex.
4 E (Jun. 12, 2016 Letter to Whitt) at 3; Ex. A (Dec. 5, 2016 Letter to Whitt) at 7.
5 Qualcomm ultimately began providing charts to Apple late last year, see Apples
6 First Amended Complaint, ECF No. 83, at 124, and indicated that it would
7 provide hundreds of additional claim charts, see Qualcomms First Amended
8 Counterclaims, ECF No. 70, at 178 (emphasis added). By boasting of these
9 hundreds of additional claim charts, and failing to identify any patents for
10 which it contends Apple does not need a license, Qualcomm advanced its
11 assertions that Apple should pay the usurious, non-FRAND royalties for all of
12 the patents on the List.
13 As discussed above, Qualcomm has identified patents and applications
14 that it believes are essential to the cellular standards used by Apples products,
15 including the Nine Patents. Qualcomm also asked this Court to declare the
16 FRAND royalty for the cellular SEP portfolio license that Qualcomm has
17 offered to Apple. See Apples First Amended Complaint, ECF No. 83, at
18 143.10 In asking this Court to determine the royalties due for every standard-
19
20 10
As Apple has explained in connection with Qualcomms Anti-suit Injunction
21 motion, this Court lacks authority to order a portfolio-wide royalty without
actually considering whether each individual patent is standard-essential, not
22
exhausted, infringed, and valid, or even reviewing the patent. Apples Opp. to
23 Qualcomms Motion for Anti-suit Injunction, Dkt. 108, at 2, 911; see also
Apple Inc. v. Telefonaktiebolaget LM Ericsson, Inc. (Ericsson), No. 15-CV-
24
00154-JD, 2015 WL 1802467, at *1-2 (N.D. Cal. Apr. 20, 2015) (noting that,
25 even though it might be imprudent or uneconomical to license individual
26
patents, Apple could not be compelled to take a license . . . on a portfolio-wide
basis or to litigate infringement claims relating to SEPs on a portfolio-wide
27 basis). Apple has the right to defend itself against infringement charges by
28
16
1 essential patent in Qualcomms portfolio, Qualcomm necessarily asserted that

2 Apple infringes each and every one of those patents. See id.; see also id. at
3 144 ([Qualcomms] request for this Court to determine the FRAND royalty for
4 Qualcomms cellular SEP portfolio necessarily puts every one of Qualcomms
5 patents at issue in this present case.). Thus, Qualcomms licensing conduct has
6 created an actual case and controversy, and this Court has jurisdiction to hear
7 claims by Apple with respect to the U.S. patents on Qualcomms List of
8 declared SEPs, including the Nine Patents.11
9 Qualcomms litigation conduct, including its willingness to sue those who
10 do not agree to a license (factor 5) and its unwillingness to provide a covenant
11 not to sue (factor 9), also shows a controversy under the Cepheid factors. While
12 Apple was still in negotiations with Qualcomm, Meizu and Qualcomms
13 licensing discussions broke down. See Apples First Amended Complaint, ECF
14 No. 83, at 125. Qualcomms response to this break-down was to file 17 patent
15 infringement cases in China against Meizu. Id. Qualcomms willingness to
16 aggressively litigate on its declared SEPs when a party refuses to acquiesce to
17 Qualcomms outrageous, non-FRAND royalty demands shows that Apple is at
18 real risk of harm. In addition, Qualcomm has refused to give an assurance that it
19 will not enforce its declared SEPs, including the Nine Patents. See id. at 141
20 (pertaining to the Original Patents-in-Suit).
21 Therefore, the Cepheid factors support a finding of jurisdiction.
22 E. The Court Should Exercise Its Discretion To Hear Apples
Declaratory Judgement Claims for the Nine Patents
23
Although the district court is given the discretion, in declaratory
24
25 putting Qualcomm to its burden of proof on the individual patents that make up
the portfolio.
26 11
To the extent the patents identified by Qualcomm include foreign patents,
27 the courts in the jurisdiction where those patents were issued likewise have
jurisdiction.
28
17
1 judgment actions, to dismiss the case, there are boundaries to that discretion.
2 See Sandisk, 480 F.3d at 1383 (citing Wilton v. Seven Falls Co., 515 U.S. 277,
3 289 (1995)). When there is an actual controversy and a declaratory judgment
4 would settle the legal relations in dispute and afford relief from uncertainty or
5 insecurity, in the usual circumstance the declaratory judgment is not subject to
6 dismissal. See id. (citations and quotations omitted).
7 Here, for the last several years, Qualcomm has repeated its belief that
8 untold numbers of its patents are infringed and it has asked Apple to take a
9 direct license. See Apples First Amended Complaint, ECF No. 83, at 119
10 22. Apple has repeatedly asked Qualcomm to show that Apples products
11 actually use Qualcomms patented technology such that a proper valuation of
12 any effected patents can be determined. See id. at 121. Accordingly, the Nine
13 Patents are at issue and resolution of those issues will assist the parties as they
14 work towards a broader resolution. The Court should exercise its discretion to
15 adjudicate the disputes set forth in the Amended Complaint.
16 Moreover, Qualcomm always has the power to remove the Nine Patents
17 by granting Apple a covenant-not-to-sue pursuant to Super Sack, 57 F.3d at
18 105859. But Qualcomm has failed to do so, indicating that it prefers to hold
19 these patents over Apple for potential assertion at any time. Therefore, this case
20 is exactly the type of situation the Declaratory Judgment Act was intended to
21 resolve, and the Court should exercise its discretion to hear Apples claims. See
22 MedImmune, 549 U.S. at 129.
23 F. If the Court Finds the First Amended Complaint Deficient, the
Court Should Grant Apple Leave To Amend Its Complaint
24
Where a motion to dismiss is granted, leave to amend should be granted
25
unless the court determines that the allegation of other facts consistent with the
26
challenged pleading could not possibly cure the deficiency. Weaver v. Ethicon,
27
Inc., Case No. 16-cv-257-GPC-BGS, 2016 WL 4430855, at *3 (S.D. Cal. Aug.
28
18
1 22, 2016) (citing DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655, 658 (9th Cir.
2 1992) (quotations omitted)).
3 Although Apple believes that its complaint properly shows a case and
4 controversy, if the Court finds that Apples allegations with regard to the Nine
5 Patents are deficient, Apple requests leave to amend its First Amended
6 Complaint. In particular, Apple requests leave to add additional factual
7 allegations to clarify any deficiency that the Court believes exists in the First
8 Amended Complaint. For example, Apple requests leave to amend the
9 complaint to include any facts stated in this opposition that are not already in the
10 First Amended Complaint, including statements from the attached
11 correspondence between the parties. Because such an amendment, which
12 provides full context for the parties discussions, would not be futile, leave
13 should be granted. See Weaver v. Ethicon, Inc., 2016 WL 4430855, at *3; see
14 also DeSoto, 957 F.2d at 658.
15 IV. CONCLUSION
16 Qualcomm is attempting to use the threat of essentiality to artificially
17 inflate the value of its patent portfolio without ever having to put this portfolio
18 to the test. However, by aggressively promoting the necessity of a license to
19 avoid infringement, Qualcomm has created an actual case and controversy as to
20 whether its patents are actually essential and infringed by Apple. Accordingly,
21 Apple respectfully requests that Qualcomms partial motion to dismiss be
22 denied.
23 In the alternative, if the Court finds that Apples First Amended
24 Complaint is deficient, Apple requests leave to amend it to address any such
25 deficiencies.
26
27
28
19
Dated: August 18, 2017 Respectfully submitted,

1
2 By: /s/ Seth M. Sproul

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 San Diego, CA 92130
5 Phone: 619-678-5070; Fax: 619-678-5099
6
Ruffin B. Cordell (DC Bar No. 445801;
7 pro hac vice), cordell@fr.com
8 Lauren A. Degnan (DC Bar No. 452421;
pro hac vice), degnan@fr.com
10 901 15th Street, N.W., 7th Floor
Washington, DC 20005
11 Phone: 202-783-5070; Fax: 202-783-2331
12
Benjamin C. Elacqua (TX SBN 24055443;
13 pro hac vice), elacqua@fr.com
One Houston Center, 28th Floor 1221
15 McKinney
16 Houston, TX 77010
Phone: 713-654-5300; Fax: 713-652-0109
17
18 Betty H. Chen (SBN 290588)

FISH & RICHARDSON P.C.
19
500 Arguello Street, Suite 500
20 Redwood City, CA 94063
Phone: 650-839-5070; Fax: 650-839-5071
21
22 William A. Isaacson (DC Bar No. 414788;

pro hac vice) wisaacson@bsfllp.com
23
Karen L. Dunn (DC Bar No. 1002520;
24 pro hac vice) kdunn@bsfllp.com
Amy J. Mauser (DC Bar No. 424065;
25
pro hac vice) amauser@bsfllp.com
26 Christopher G. Renner (DC Bar No. 1025699;
pro hac vice) crenner@bsfllp.com
27
BOIES SCHILLER FLEXNER LLP
28
20
1 1401 New York Avenue

2 Phone: 202-237-2727; Fax: 202-237-6131
3
Steven C. Holtzman (SBN 144177)
4 sholtzman@bsfllp.com
5 Gabriel R. Schlabach (SBN 304859)
gschlabach@bsfllp.com
6 BOIES SCHILLER FLEXNER LLP
7 1999 Harrison Street, Suite 900
Oakland, CA 94612
8 Phone: 510-874-1000; Fax: 510-874-1460
9
Meredith R. Dearborn (SBN 268312)
10 mdearborn@bsfllp.com
11 BOIES SCHILLER FLEXNER LLP
425 Tasso Street, Suite 205
12 Palo Alto, CA 94307
13 Phone: 650-445-6400; Fax: 650-329-8507
14 Attorneys for Plaintiff Apple Inc.
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1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above
3 and foregoing document has been served on August 18, 2017, to all counsel of
4 record who are deemed to have consented to electronic service via the Courts
5 CM/ECF system per Civil Local Rule 5.4. Any other counsel of record will be
6 served by electronic mail, facsimile and/or overnight delivery.
7
8
/s/ Seth M. Sproul
9 Seth M. Sproul
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Case 3:17-cv-00108-GPC-MDD Document 119-1 Filed 08/18/17 PageID.6623 Page 1 of 4
1 Juanita R. Brooks, SBN 75934, brooks@fr.com

Seth M. Sproul, SBN 217711, sproul@fr.com
3 12390 El Camino Real
San Diego, CA 92130
4 Phone: 619-678-5070 / Fax: 619-678-5099
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
The McPherson Building
8 901 15th Street, N.W., 7th Floor
9 Washington, D.C. 20005
Phone: 202-783-5070 / Fax: 202-783-2331
10
11 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
12 Boies, Schiller & Flexner LLP
13 1401 New York Avenue, N.W.
14 Phone: 202-237-2727 / Fax: 202-237-6131
15
Attorneys for Plaintiff Apple Inc.
16
17 UNITED STATES DISTRICT COURT
18 SOUTHERN DISTRICT OF CALIFORNIA
19 APPLE INC., Case No. 3:17-CV-00108-GPC-MDD
20 Plaintiff, DECLARATION OF SETH M. SPROUL
21 v. IN SUPPORT OF APPLE INC.S
22 QUALCOMM INCORPORATED, OPPOSITION TO QUALCOMM INC.S
MOTION FOR PARTIAL DISMISSAL
23 Defendant. OF APPLES FIRST AMENDED
24 COMPLAINT
25 AND RELATED COUNTERCLAIMS. Date: September 29, 2017

Time: 1:30 p.m.
26 Judge: Hon. Gonzalo P. Curiel
27 Courtroom: 2D
28
1 I, Seth M. Sproul, declare as follows:

2 1. I am an attorney with the law firm of Fish & Richardson P.C., counsel
3 of record for plaintiff, Apple Inc. I have personal knowledge of the facts stated
4 herein, except those that are stated on information and belief and can testify
5 competently thereto.
6 2. Attached as Exhibit A (filed under seal) is a true and correct copy of
7 letter from Fabian Gonell to Jayna Whitt, dated December 5, 2016.
8 3. Attached as Exhibit B (filed under seal) is a true and correct copy of an
9 email sent from Jayna Whitt to Fabian Gonell, dated December 2, 2016.
10 4. Attached as Exhibit C (filed under seal) is a true and correct copy of
11 letter from Fabian Gonell to BJ Watrous, dated July 15, 2016.
12 5. Attached as Exhibit D (filed under seal) is a true and correct copy of
13 letter from Fabian Gonell to Jayna Whitt, dated November 11, 2016.
14 6. Attached as Exhibit E (filed under seal) is a true and correct copy of
15 letter from Fabian Gonell to Jayna Whitt, dated June 12, 2016.
16 7. Attached as Exhibit F (filed under seal) is a true and correct copy of
17 letter from Fabian Gonell to BJ Watrous, dated February 17, 2016.
18 8. Attached as Exhibit G is a true and correct copy of the IPR
19 Information Statement and Licensing Declaration Form for the European
20 Telecommunications Standards Institute (ETSI), available at
21 www.etsi.org/images/files/IPR/etsi-ipr-form.doc, as retrieved on August 16, 2017.
22 I declare under the penalty of perjury under the laws of the United States that
23 foregoing is true and correct. Executed on August 18, 2017, in San Diego,
24 California.
/s/ Seth M. Sproul
25 Seth M. Sproul
26
27
28
1
1 TABLE OF EXHIBITS
2 Exhibit Description Page(s)

3 No.
A. Letter from Fabian Gonell to Jayna Whitt, dated December 5, 1-8
4 2016.
5 B. Email sent from Jayna Whitt to Fabian Gonell, dated 9-10
December 2, 2016.
6 C. Letter from Fabian Gonell to BJ Watrous, dated July 15, 11-76
7 2016.
D. Letter from Fabian Gonell to Jayna Whitt, dated November 77-79
8 11, 2016.
9 E. Letter from Fabian Gonell to Jayna Whitt, dated June 12, 80-82
2016.
10
F. Letter from Fabian Gonell to BJ Watrous, dated February 17, 83-85
11 2016.
G. IPR Information Statement and Licensing Declaration Form 86-89
12
for the European Telecommunications Standards Institute
13 (ETSI), available at www.etsi.org/images/files/IPR/etsi-ipr-
form.doc, as retrieved on August 16, 2017.
14
15
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18
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20
21
22
23
24
25
26
27
28
2
CERTIFICATE OF SERVICE
1
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on August 18, 2017, to all counsel of record
4 who are deemed to have consented to electronic service via the Courts 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
8 /s/ Seth M. Sproul
Seth M. Sproul
9
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3
EXHIBIT A
FILED UNDER SEAL
EXHIBIT B
FILED UNDER SEAL
EXHIBIT C
FILED UNDER SEAL
EXHIBIT D
FILED UNDER SEAL
EXHIBIT E
FILED UNDER SEAL
EXHIBIT F
FILED UNDER SEAL
EXHIBIT G
Page 1 (version 12)
ETSI Rules of Procedure, 5 April 2017

Annex 6 - Appendix A: IPR Licensing Declaration forms
IPR HOLDER / ORGANISATION (Declarant)
Legal Name:
CONTACT DETAILS FOR LICENSING INFORMATION:
Name and Title:

Department:
Address:

Telephone: Fax:
Email: URL:
GENERAL IPR LICENSING DECLARATION

In accordance with Clause 6.1 of the ETSI IPR Policy the Declarant and/or its AFFILIATES hereby informs
ETSI that (check one box only):
with reference to ETSI STANDARD(S) or TECHNICAL SPECIFICATION(S) No.:
, or
with reference to ETSI Project(s): , or
with reference to all ETSI STANDARDS AND TECHNICAL SPECIFICATIONS
and with reference to (check one box only):

IPR(s) contained within technical contributions made by the Declarant and/or its AFFILIATES, or
any IPRs
the Declarant hereby irrevocably declares that (1) it and its AFFILIATES are prepared to grant irrevocable
licenses under its/their IPR(s) on terms and conditions which are in accordance with Clause 6.1 of the ETSI
IPR Policy, in respect of the STANDARD(S), TECHNICAL SPECIFICATION(S), or the ETSI Project(s), as
identified above, to the extent that the IPR(s) are or become, and remain ESSENTIAL to practice that/those
STANDARD(S) or TECHNICAL SPECIFICATION(S) or, as applicable, any STANDARD or TECHNICAL
SPECIFICATION resulting from proposals or Work Items within the current scope of the above identified
ETSI Project(s), for the field of use of practice of such STANDARD or TECHNICAL SPECIFICATION; and
(2) it will comply with Clause 6.1bis of the ETSI IPR Policy with respect to such ESSENTIAL IPR(s).
This irrevocable undertaking is made subject to the condition that those who seek licences agree
to reciprocate (check box if applicable).
The construction, validity and performance of this General IPR licensing declaration shall be governed by
the laws of France.
Terms in ALL CAPS on this form have the meaning provided in Clause 15 of the ETSI IPR Policy.
SIGNATURE
By signing this General IPR Licensing Declaration form, you represent that you have the authority to bind
the Declarant and/or its AFFILIATES to the representations and commitments provided in this form.
Name of authorized person:
Title of authorized person:
Place, Date:
Signature:
Please return this form duly signed to: ETSI Director-General

ETSI - 650, route des Lucioles - F-06921 Sophia Antipolis Cedex France / Fax. +33 (0) 4 93 65 47 16
EXHIBIT G
PAGE 86
Page 2 (version 12)

IPR INFORMATION STATEMENT AND LICENSING DECLARATION
IPR HOLDER / ORGANISATION (Declarant)
Legal Name:
CONTACT DETAILS FOR LICENSING INFORMATION:

Name and Title:
Department:
Address:

Telephone: Fax:
Email: URL:
IPR INFORMATION STATEMENT

In accordance with Clause 4.1 of the ETSI IPR Policy the Declarant and/or its AFFILIATES hereby informs
ETSI that it is the Declarants and/or its AFFILIATES present belief that the IPR(s) disclosed in the attached
IPR Information Statement Annex may be or may become ESSENTIAL in relation to at least the ETSI Work
Item(s), STANDARD(S) and/or TECHNICAL SPECIFICATION(S) identified in the attached IPR Information
Statement Annex.
The Declarant and/or its AFFILIATES (check one box only):
are the proprietor of the IPR(s) disclosed in the attached IPR Information Statement Annex.
are not the proprietor of the IPR(s) disclosed in the attached IPR Information Statement Annex.
IPR LICENSING DECLARATION

In accordance with Clause 6.1 of the ETSI IPR Policy the Declarant and/or its AFFILIATES hereby
irrevocably declares the following (check one box only, and subordinate box, where applicable):
To the extent that the IPR(s) disclosed in the attached IPR Information Statement Annex are or
become, and remain ESSENTIAL in respect of the ETSI Work Item, STANDARD and/or TECHNICAL
SPECIFICATION identified in the attached IPR Information Statement Annex, the Declarant and/or its
AFFILIATES are (1) prepared to grant irrevocable licences under this/these IPR(s) on terms and
conditions which are in accordance with Clause 6.1 of the ETSI IPR Policy; and (2) will comply with
Clause 6.1bis of the ETSI IPR Policy.
This irrevocable undertaking is made subject to the condition that those who seek licences
agree to reciprocate (check box if applicable).
The Declarant and/or its AFFILIATES are not prepared to make the above IPR Licensing Declaration
(reasons may be explained in writing in the attached IPR Licensing Declaration Annex).
The construction, validity and performance of this IPR information statement and licensing declaration shall
be governed by the laws of France.
Terms in ALL CAPS on this form have the meaning provided in Clause 15 of the ETSI IPR Policy.
SIGNATURE
By signing this IPR Information Statement and Licensing Declaration form, you represent that you have the
authority to bind the Declarant and/or its AFFILIATES to the representations and commitments provided in
this form.
Name of authorized person:
Title of authorized person:
Place, Date:
Signature:
Please return this form duly signed to: ETSI Director-General

EXHIBIT G
PAGE 87
Page 3 (version 12)

IPR Information Statement Annex
FURTHER INFORMATION
STANDARD, TECHNICAL SPECIFICATION or
ETSI Work Item Country of
Other members of this PATENT FAMILY, if any *
Application Publication registration
Proprietor Patent/Application
Work Item Illustrative No. No. Title
Project or
or Specific part of Version
Standard Application No. Publication No. Country of registration
Standard the standard (V.X.X.X)
name
No. (e.g. Section)
AU 12740/00 Australia
Scheduling of EPC CN 99813100.8 China P.R.
ETSI TS
e.g. UMTS 6.1.1.2 V.3.5.0 Abcd EP 1131972 slotted-mode related CONTRACTING FI 108270 Finland
125 215
measurements STATES JP 11-318161 Japan
US 6532226 USA
* Information on other members of a PATENT FAMILY is provided voluntarily (Clause 4.3 of the ETSI IPR Policy).
Please return this form together with the IPR Information Statement and Licensing Declaration form to:
ETSI Director-General - ETSI - 650, route des Lucioles - F-06921 Sophia Antipolis Cedex France / Fax. +33 (0) 4 93 65 47 16
EXHIBIT G
PAGE 88
Page 4 (version 12)
Extract from ETSI Rules of Procedure, 5 April 2017
IPR Licensing Declaration Annex
Optional written explanation of reasons for not making the IPR Licensing Declaration
The Declarant and/or its AFFILIATES are unwilling to grant irrevocable licences under the IPR(s)
disclosed in the attached IPR Information Statement Annex on terms and conditions which are in
accordance with Clause 6.1 of the ETSI IPR Policy.
The Declarant and/or its AFFILIATES are unable to grant irrevocable licences under the IPR(s)
disclosed in the attached IPR Information Statement Annex on terms and conditions which are in
accordance with Clause 6.1 of the ETSI IPR Policy, because
the Declarant and/or its AFFILIATES are not the proprietor of the IPR(s) disclosed in the
attached IPR Information Statement Annex,
the Declarant and/or its AFFILIATES do not have the ability to licence the IPR(s) disclosed in
the attached IPR Information Statement Annex on terms and conditions which are in
accordance with Clause 6.1 of the ETSI IPR Policy. In this case, please provide Contact
information of those who may have this ability:
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EXHIBIT G
PAGE 89

17-08-18 Apple's Opposition To Qualcomm's Motion To Dismiss Patent Claims

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Case 3:17-cv-00108-GPC-MDD Document 119 Filed 08/18/17 PageID.

7 ActiveVideo Networks, Inc. v. Trans Video Elecs., Ltd.,

9 Apple Inc. v. Telefonaktiebolaget LM Ericsson, Inc.,

3 Samsung Electronics Co., Ltd v. Texas Instruments, Inc.,

9 Weaver v. Ethicon, Inc.,

1 Plaintiff Apple Inc. (Apple) hereby submits the following memorandum

1 examination of its patents is astounding.

1 The purpose of a declaratory judgment action cannot be defeated

1 II. FACTUAL BACKGROUND

1 claim charts. Qualcomms First Amended Counterclaims, ECF No. 70, at

1 Morton Intl, 508 U.S. 83, 96 (1993)) (emphasis omitted).

1 him to relief. Id. (citations and quotations omitted).

1 In 3M Company v. Avery Dennison Corporation, the Federal Circuit

1 Significantly, Qualcomm relied on this March 18, 2016 List of patents as

1 Applera v. Michigan Diagnostics, LLC, 594 F. Supp. 2d 150 (D. Mass

1 magic words such as litigation or infringement.).8

1 abandoning that which he claims a right to do . . . . See SanDisk, 480 F.3d at

16 actual case or controversy.

17 During licensing, Qualcomm made comments regarding the necessity of a

20 Qualcomm has aggressively pushed its licenses and royalties on many

21 companies in the cell phone industry. See Qualcomms First Amended

22 Counterclaims, ECF No. 70, at 4. In pushing its licenses and royalties,

23 Qualcomm continuously touts the breadth, importance, strength, and value of

26 compliant with a standard necessarily practice every patent claim that is

27 essential to any mandatory portions of that standard. See Apples First

1 Amended Complaint, ECF No. 83, at 139, 137 (emphasis added).

1 essential patent in Qualcomms portfolio, Qualcomm necessarily asserted that

Dated: August 18, 2017 Respectfully submitted,

2 By: /s/ Seth M. Sproul

18 Betty H. Chen (SBN 290588)

22 William A. Isaacson (DC Bar No. 414788;

1 1401 New York Avenue

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

25 AND RELATED COUNTERCLAIMS. Date: September 29, 2017

1 I, Seth M. Sproul, declare as follows:

2 Exhibit Description Page(s)

ETSI Rules of Procedure, 5 April 2017

IPR HOLDER / ORGANISATION (Declarant)

CONTACT DETAILS FOR LICENSING INFORMATION:

Name and Title:

GENERAL IPR LICENSING DECLARATION

and with reference to (check one box only):

Please return this form duly signed to: ETSI Director-General

ETSI Rules of Procedure, 5 April 2017

CONTACT DETAILS FOR LICENSING INFORMATION:

IPR INFORMATION STATEMENT

IPR LICENSING DECLARATION

Please return this form duly signed to: ETSI Director-General

Page 3 (version 12)

ETSI Rules of Procedure, 5 April 2017

Extract from ETSI Rules of Procedure, 5 April 2017

IPR Licensing Declaration Annex

Other reasons (please specify):

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