Nokia Corporation v. Apple Inc.

Filing 359

MOTION for Issuance of Letters Rogatory (APPLE, INC'S UNOPPOSED MOTION FOR THE ISSUANCE OF A LETTER OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF MARCH 18, 1970) - filed by Apple Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit A-1, # 3 Exhibit A-2, # 4 Exhibit B, # 5 Exhibit B-1, # 6 Exhibit B-2, # 7 Exhibit C, # 8 Exhibit D, # 9 Exhibit E)(Moore, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NOKIA CORPORATION,
Plaintiff,
v.
APPLE INC.,
Defendant.
APPLE INC.
Counterclaim-Plaintiff,
v.
NOKIA CORPORATION and NOKIA INC.
Counterclaim-Defendants.

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C.A. No. 09-791-GMS
JURY TRIAL DEMANDED

APPLE, INC’S UNOPPOSED MOTION FOR THE ISSUANCE
OF A LETTER OF REQUEST FOR INTERNATIONAL JUDICIAL
ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF MARCH 18, 1970
Pursuant to Federal Rule of Civil Procedure 28 and The Hague Convention on the Taking
of Evidence Abroad in Civil or Commercial Matters, March 18, 1970, 23 U.S.T. 2555 (“Hague
Convention”), Apple Inc. (“Apple”) respectfully requests that the Court issue a Letter of Request
(in the form attached hereto as Exhibit A) so that Apple may obtain the sworn testimony in
Germany of Friedhelm Hillebrand.
Mr. Hillebrand was extensively involved in the creation of the Global System for Mobile
Communications (“GSM”) and Universal Mobile Telecommunications Systems (“UMTS”)
standards at the European Telecommunications Standards Institute (“ETSI”). By virtue of that
experience, he was a first-hand witness to the development of ETSI’s Intellectual Property
Rights (“IPR”) Policy, the meaning of which is central to Apple’s counterclaims. When Nokia

litigated similar issues against Qualcomm—taking positions about the ETSI IPR Policy opposite
of those it has taken in this case—it relied on Mr. Hillebrand as an expert witness to provide an
explanation of the purpose and meaning of the Policy. But he is not merely an expert witness—
he is a fact witness for significant issues in this case.
Because Mr. Hillebrand is a non-party resident of Germany, Apple will not be able to
obtain his testimony without the Court issuing a Letter of Request under the Hague Convention,
and Apple respectfully requests that the Court issue this Letter.1
I.

BACKGROUND
Apple’s antitrust and contract counterclaims against Nokia center on Nokia’s abuse of,

and disregard for, the requirements of ETSI’s IPR Policy. Nokia’s violation of the Policy
allowed Nokia unlawfully to gain monopoly power in the form of its claimed-essential patents
that it now seeks to exploit to injure Apple. Similarly, Apple’s contract counterclaims are based
on Nokia’s disregard for the binding commitments it made to ETSI to comply with its IPR Policy
and for which Apple was a third-party beneficiary.2
As the basis for these claims, Apple alleges that Nokia engaged in deceptive conduct
during the standard-setting process at ETSI by failing to disclose that it possessed IPR
purportedly covering proposals it made for additions or changes to the standards under
development, including GSM and UMTS, as required by the ETSI IPR Policy. Further, Apple
alleges that when Nokia eventually disclosed its purportedly-essential IPR to ETSI and made
untimely promises to license it on fair, reasonable, and non-discriminatory (“FRAND”) terms, as

1

Counsel met and conferred regarding this Motion. Nokia does not oppose Apple’s
request to depose Mr. Hillebrand.
2
In addition, Nokia’s misconduct at ETSI is relevant to Apple’s defenses to Nokia’s
infringement claims for ten of Nokia’s patents-in-suit that it claims are essential to standards
promulgated by ETSI.
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is required by the IPR Policy, those promises were false. That fact has been demonstrated by
Nokia’s unreasonably high and discriminatory, non-FRAND demands of Apple during the
parties’ licensing negotiations. Nokia has further violated those FRAND commitments by now
seeking an injunction against Apple for its purportedly-essential patents. As Nokia argued in its
litigation with Qualcomm, relying in part on Mr. Hillebrand’s knowledge of the ETSI IPR
Policy, once a FRAND commitment is made, a patent owner “is not entitled to an injunction or
exclusion order that could prevent the implementation of the standard – except in extraordinary
circumstances, such as where the manufacturer refuses to pay judicially determined FRAND
compensation for the actual infringement of a valid essential patent.” (Ex. C, Plaintiff’s Opening
Pre-Trial Brief, Nokia Corp. v. Qualcomm Inc., CA. No. 2330-VCS (Del. Chancery), at 1-2.)
Mr. Hillebrand has a long history at ETSI that gives him personal, first-hand knowledge
about the ETSI IPR Policy. He served as Chairman of ETSI’s Technical Committee Special
Mobile Group from 1996 to 2000 with responsibility for leading ETSI’s work on the
standardization of UMTS and GSM. (See Ex. 1 to Ex. A, Expert Report of Friedhelm
Hillebrand, Nokia Corp. v. Qualcomm Inc., C.A. No. 2330-VCS (Del. Chancery), May 22, 2008
(“Hillebrand Report”), at 3-4.) In addition, Mr. Hillebrand was involved in the development of
the principles for the IPR policy for GSM standardization. (See Ex. D, Hillebrand & Partners
Profile of Friedhelm Hillebrand.) Mr. Hillebrand also edited a book that provides a history of the
development of GSM and UMTS: GSM and UMTS: The Creation of Global Mobile
Communication (Friedhelm Hillebrand ed., Wiley 2002).
Based on Mr. Hillebrand’s knowledge of ETSI, Nokia retained him to offer his
understanding about ETSI and its IPR Policy in Nokia’s litigation with Qualcomm—an
understanding that now directly contradicts many of the new positions that Nokia has taken

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against Apple, including that it may enjoin Apple for patents it claims are standards-essential.
For instance, in its pre-trial brief in that case, Nokia quoted Mr. Hillebrand describing his
understanding that the “heart of the IPR Policy” is that a FRAND commitment precludes seeking
an injunction:
The intention in ETSI was that once the undertaking is given, the
owner would have no possibility to use his blocking rights as long
as the licensee is prepared to accept FRAND terms and
conditions. . . . This was commonly understood, and is very much
at the heart of the IPR Policy.
(Ex. C at 45 (quoting Hillebrand Report ¶19) (alterations supplied).) Mr. Hillebrand also
stressed that FRAND royalties must be set at low rates, to facilitate industry adoption of
standardized technology:
In GSM and UMTS standardization there was always recognition
and concern that high royalties might make the handsets so
expensive that the creation of a global mass market would fail.
During the UMTS radio decision a lot of parties, especially
network operators expressed great concern about the level of IPR
they expected for WCDMA in December 1997. Even the
European Commission made a formal statement that “[it] would
consider appropriate action if the behavior of IPR holders were to
threaten the development of UMTS in Europe and at global level.
This was expressed by the supporters of WCDMA in the UMTS
radio decision in January 1998 requested “The cumulative
maximum cost should be set at a reasonable level.” The UMTS
IPR working group created in the spring of 1998 came to an
agreement that a single digit percentage would be the maximum
bearable.
(Ex. 2 to Ex. A, Rebuttal Report of Friedhelm Hillebrand, Nokia Corp. v. Qualcomm Inc., C.A.
No. 2330-VCS (Del. Chancery), June 6, 2008, at p.14.) Despite earlier advocating—with Mr.
Hillebrand’s support—these positions, Nokia has reversed itself and sought unreasonably high
royalties from, and an injunction against, Apple.
As set forth in the proposed questions for the German court to ask Mr. Hillebrand
(contained in Schedule A to Exhibit A), Apple seeks to elicit testimony about the ETSI IPR

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Policy and to confirm the accuracy of the positions he took about the Policy in his expert reports
on Nokia’s behalf in its litigation with Qualcomm.3 This testimony is within Mr. Hillebrand’s
personal capacity as a fact witness, and Nokia cannot shield this testimony by retaining Mr.
Hillebrand as a paid consultant (for this or other litigations).
II.

ARGUMENT
A.

The Hague Convention is the Appropriate Means To Seek Testimony From
Mr. Hillebrand

Rule 28(b) of the Federal Rules of Civil Procedure provides that a deposition may be
taken in a foreign country by, among other means, proceeding under “an applicable treaty or
convention.” Fed. R. Civ. P. 28(b); see also 28 USC § 1781(b)(2) (permitting the “transmittal of
a letter rogatory or request directly from a tribunal in the United States to the foreign or
international tribunal, officer, or agency to whom it is addressed and its return in the same
manner”). Both the United States and Germany are signatories to the Hague Convention. See 23
U.S.T. 2555. Under Article 1 of the Convention, “[i]n civil or commercial matters a judicial
authority of a Contracting State may . . . request the competent authority of another Contracting
State, by means of a Letter of Request, to obtain evidence, or to perform some other judicial act.”
Id., Art. 1. Article 3 of the Convention sets forth the requirements for a Letter of Request and
specifically provides that an issuing court may identify “persons to be examined” and request
that such examination “be given on oath or affirmation.” Id., Art. 3(e), (h).
The Hague Convention “procedures are available whenever they will facilitate the
gathering of evidence by the means authorized in the Convention.” Société Nationale
Industrielle Aéropostiale v. U.S. Dist. Ct. for the S. Dist. of Iowa, 482 U.S. 522, 541 (1987). Use

3

Apple also may offer Mr. Hillebrand’s expert reports from Nokia’s litigation with
Qualcomm directly into evidence at trial, including through Fed. R. Evid. 807.
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of the Convention is particularly appropriate where, as here, the witness to be examined (i) is not
a party to the litigation, (ii) has not voluntarily subjected himself to discovery, (iii) is a foreign
citizen, and (iv) is not otherwise subject to the jurisdiction of the Court. See Pronova Biopharma
Norge AS v. Teva Pharmaceuticals USA, Inc., 708 F.Supp.2d 450, 453 (D. Del. 2010) (granting
request to issue Letters of Request for examination of non-party witnesses in Norway and
Sweden); Abbott Labs. v. Impax Labs., Inc., 2004 WL 1622223, at *2-3 (D. Del. July 15, 2004)
(same for witnesses in France); Tulip Computers Int’l B.V. v. Dell Computer Corp., 254
F.Supp.2d 469, 474-75 (D. Del. 2003) (same for witnesses in the Netherlands).
The proposed Letter of Request submitted as Exhibit A conforms to the requirements of
Article 3 of the Convention (as well as the model Letter of Request reprinted in 28 U.S.C.
§ 1781).4 Specifically, Apple’s Letter of Request describes the nature of the proceedings for
which the evidence is required, the identity of the person to be examined, the evidence to be
obtained, and includes a request that the examination be conducted under oath. See 23 U.S.T.
2555, Art. 3. In addition, consistent with Germany’s procedure of having courts conduct
examination of witnesses, the Letter of Request sets forth specific questions to be posed to Mr.
Hillebrand and attaches copies of the expert reports about which he is to be examined. See Ex.
E, Germany’s Response to the 2008 Hague Convention Questionnaire, ¶ 64 (“The questions to
be addressed to the person to be interrogated are to be asked already in the Letter of Request”);
see also id. ¶¶ 36, 51, and 63; 23 U.S.T. 2555, Art. 3(f) (requiring a Letter of Request to specify
“the questions to be put to the persons to be examined or a statement of the subject-matter about
which they are to be examined”).
4

Under Article 4 of the Convention, a “Letter of Request shall be in the language of the
authority requested to execute it or be accompanied by a translation into that language.” 23
U.S.T. 2555, Art. 4. Apple submits as Exhibit B a German translation of Exhibit A and the
attached expert reports of Mr. Hillebrand.
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B.

Mr. Hillebrand Possesses Relevant Evidence

Invoking the procedures of the Hague Convention to compel testimony is appropriate
where doing so is reasonably calculated to lead to the discovery of admissible evidence. See
Ethypharm S.A. France v. Abbott Labs., 748 F.Supp.2d 354, 359 (D.Del. 2010) (applying Fed. R.
Civ. P. 26 to determination of whether to grant request for testimony under Hague Convention);
see also In re Urethane Antitrust Litig., 267 F.R.D. 361, 364 (D. Kan. 2010) (“in considering
motions for the issuance of letters of request, courts ordinarily will not weigh the evidence that is
to be adduced”) (quotations omitted).
Here, as set forth above, through his work at ETSI, Mr. Hillebrand was a first-hand fact
witness to the development and application of the ETSI IPR Policy. Accordingly, he will be able
to offer testimony that is relevant to Apple’s antitrust and contract counterclaims centering on
Nokia’s failure to abide by the IPR Policy. The relevance of this testimony is underscored by the
fact that in litigating similar claims against Qualcomm (albeit from a position that now appears
closer to Apple’s than its current one), Nokia retained Mr. Hillebrand to testify concerning the
same topics about which Apple seeks to examine him. But again, he is not merely an expert
witness, but rather a fact witness for key issues in this case.

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III.

CONCLUSION
For the foregoing reasons, Apple respectfully requests that the Court grant its Motion and

execute the Letter of Request attached hereto as Exhibit A along with the German translation
attached hereto as Exhibit B, providing the undersigned counsel with an original signed copy of
each to transmit to the appropriate authorities in Germany.

OF COUNSEL:
William F. Lee
WILMERHALE
60 State Street
Boston, MA 02109
Tel: [phone]

POTTER ANDERSON & CORROON LLP

By:

Mark D. Selwyn
WILMERHALE
950 Page Mill Road
Palo Alto, CA 94304
Tel: [phone]
Kenneth H. Bridges
Michael T. Pieja
BRIDGES & MAVRAKAKIS LLP
540 Cowper Street, Suite 100
Palo Alto, CA
Tel: [phone]

/s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19899
Tel: [phone]
[e-mail]
[e-mail]

Attorneys for Defendant/Counterclaim-Plaintiff
Apple Inc.

Dated: May 16, 2011
1013025 / 35035

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I, David E. Moore, hereby certify that on May 16, 2011, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to the
registered attorney(s) of record that the document has been filed and is available for viewing and
downloading.
I hereby certify that on May 16, 2011, the attached document was electronically mailed to
the following person(s)
VIA ELECTRONIC MAIL
Jack B. Blumenfeld
Rodger D. Smith II
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street
Wilmington, DE 19899
[e-mail]
[e-mail]

Alston & Bird LLP
[e-mail]

/s/ David E. Moore
Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
[phone]
[e-mail]
[e-mail]
941557/35035