REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

KEKER VAN NEST & PETERS LLP

Robert A. Van Nest

Eugene M. Paige

Justina K. Sessions

633 Battery Street

San Francisco, CA 94111-1809 

Telephone: (415) 676-2289 

Facsimile: (415) 397-7188 

CRAVATH, SWAINE & MOORE LLP

Gary A. Bornstein (pro hac vice) 

gbornstein@cravath.com

Yonatan Even (pro hac vice) 

yeven@cravath.com

825 Eighth Avenue

New York, NY 10019-7475 

Telephone: (212) 474-1000 

Facsimile: (212) 474-3700 

MORGAN, LEWIS & BOCKIUS LLP

Richard S. Taffet (pro hac vice) 

richard.taffet@morganlewis.com

101 Park Avenue

New York, NY 10178-0060 

Telephone: (212) 309-0060 

Facsimile: (212) 309-6001 

MORGAN, LEWIS & BOCKIUS LLP

Geoffrey T. Holtz (SBN 191370)

Geoffrey.holtz@morganlewis.com

One Market, Spear Street Tower

San Francisco, CA 94105-1596 

Telephone: (415) 442-1000 

Facsimile: (415) 442-1001 

Attorneys for Defendant

QUALCOMM INCORPORATED

Additional Counsel listed on the Signature 

Page

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FEDERAL TRADE COMMISSION

 Plaintiff,

 v. 

QUALCOMM INCORPORATED,

a Delaware corporation,

 Defendant. 

Case No. 5:17-CV-0220-LHK-NMC 

QUALCOMM’S HIGH PRIORITY 

OBJECTIONS AND RESPONSES 

FOR JANUARY 18, 2019 TRIAL DAY

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 1 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

1

Pursuant to the Court’s October 24 Case Management Order (ECF No. 922), Qualcomm 

respectfully submits the following high-priority objections and responses for January 18, 2019. 

Qualcomm’s HPO No. 1 (objection to CX5173 designated for use with Fabian 

Gonell because the witness lacks foundation and personal knowledge of the exhibit)

Qualcomm objects to CX5173, a February 19, 2016 email with five attachments. 

Mr. Gonell did not send or receive this email, and was not copied on it. There is no information

in the documents to suggest that Mr. Gonell has knowledge of any of the five presentations 

attached to that email. The FTC has provided no basis on which the Court could conclude that 

Mr. Gonell has knowledge of the email and its attachments. This exhibit should be excluded 

under FRE 602.

Qualcomm’s HPO No. 2 (objection to CX6787 designated for use with Fabian 

Gonell pursuant to FRE 1002 and FRE 901)

Qualcomm objects to CX6786, a document appearing to be a draft transcript of a 

Qualcomm meeting with the IRS, because CX6786 is not the best evidence for the discussion 

that occurred at that meeting and the FTC has provided insufficient evidence of authenticity (i.e., 

that the “draft” is anything more than that). Specifically, an original recording of the meeting 

exists and was timely produced to the FTC during the discovery period. That alone warrants 

exclusion under FRE 1002, as a “tape [is] the best evidence of what was recorded upon it”, 

United States v. Workinger, 90 F.3d 1409, 1415 (9th Cir. 1996). Here, exclusion is particularly 

appropriate because the purported transcript contains in-line revisions by multiple individuals,

and at his deposition, Mr. Gonell cast doubt on the accuracy of the purported transcript and did 

not recall ever reviewing it, for accuracy or at all. (Gonell Mar. 5, 2018 Tr. 180:14-19.) This 

exhibit should be excluded under FRE 1002 and FRE 901.

Qualcomm’s HPO No. 3 (objection to CX5708 designated for use with Michael 

Hartogs because the witness lacks foundation and personal knowledge of the exhibit)

Qualcomm objects to CX5708, a series of internal Qualcomm emails among various 

Qualcomm executives during October and November 2006. Although Mr. Hartogs appears on 

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 2 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

2

an email dated October 31, 2006 at 11:30 a.m., he is neither the sender nor the recipient of any of 

the following, later-in-time emails. Mr. Hartogs thus lacks foundation to testify about any of 

those later-in-time emails. This exhibit—or at least those emails that Mr. Hartogs neither sent 

nor received—should be excluded under FRE 602.

Qualcomm’s Response to FTC HPO No. 1 (QX2929—Martin Zander) 

QX2929 is a package of ST Ericsson board materials. Mr. Zander, Ericsson’s Vice 

President and Head of Strategic Initiatives and Eco-Systems, testified at his deposition that he 

recognized the document and was familiar with it (Tr. 65:15-21, 66:3-6), which is sufficient to 

establish personal knowledge. Similarly, the exhibit is not hearsay because Mr. Zander’s 

testimony establishes that the business records exception applies to the document. (Tr. 65:18-

22.) The FTC’s objection should be overruled.

Qualcomm’s Response to FTC HPO No. 2 (trial testimony of Liren Chen)

The FTC objects to Qualcomm employee Liren Chen testifying at trial. This objection is 

both exceedingly untimely and without merit. Qualcomm repeatedly disclosed Mr. Chen as a 

trial witness, but the FTC waited until 36 hours prior to his scheduled trial testimony to object for 

the first time to his appearance. Qualcomm is severely prejudiced by the FTC’s delay. 

Qualcomm indicated in July 2018 that “Qualcomm anticipates presenting at trial testimony by 

Liren Chen concerning the subject matters about which Qualcomm designated him to testify 

pursuant to Rule 30(b)(6).” (July 10, 2018 Email from B. Byars to J. Milici.) The FTC objected

to the disclosure of other trial witnesses at the time (see ECF No. 783), but raised no objection as 

to Mr. Chen, then or since. For example, when Qualcomm again disclosed Mr. Chen as a 

potential trial witness on November 9, 2018, as part of Qualcomm’s pretrial disclosures, the FTC 

again did not object. On November 29, 2018, when Qualcomm included Mr. Chen on its witness 

list in the joint pretrial statement, the FTC again objected to other Qualcomm witnesses—but not 

to Mr. Chen. (ECF No. 950-09.) Indeed, when the FTC disclosed its own trial exhibit list, the 

FTC identified Mr. Chen as the intended sponsoring witness for seven exhibits. (ECF No. 950-

11.) As recently as January 15, 2019—two days ago—the FTC told Qualcomm in writing that it 

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 3 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

3

anticipated using 10 minutes of its remaining trial time to cross-examine Mr. Chen, giving no 

indication that it objected to Mr. Chen’s appearance at trial. The FTC plainly waited until the 

last possible minute to object, all the while manifesting apparent agreement to his appearance at 

trial. Qualcomm is prejudiced by the FTC’s untimely objection, and it should be overruled on 

that basis alone.

The FTC’s objection also fails as a substantive matter. First, Qualcomm properly 

disclosed Mr. Chen as a potential trial witness. Qualcomm’s initial disclosures stated that 

“Qualcomm . . . reserves the right to rely at trial on the testimony of any witness whose 

deposition is taken . . . in this action”. (Qualcomm’s 2d Am. Initial Disclosures, at 14.) And 

even as the parties narrowed their witness lists, Qualcomm repeated this disclosure. (See, e.g.,

Jan. 31, 2018 Ltr. from Y. Even to D. Matheson (“Qualcomm reserves the right to rely at trial on 

the testimony of any witness deposed in this action, including by calling such a witness live at 

trial”.); June 19, 2018 Ltr. from Y. Even to D. Matheson (same).) Thus, the FTC has been on 

notice that Qualcomm may call Mr. Chen at trial at least since the FTC deposed Mr. Chen in 

April 2018.1 And for at least six months prior to trial, Qualcomm has explicitly told the FTC 

that Mr. Chen may testify at trial, including in a July 10, 2018 letter, in Qualcomm’s 

November 9, 2018 pre-trial disclosure of trial witnesses, and in the parties’ joint pretrial 

statement. (ECF No. 950-09.) The FTC cannot reasonably claim that it was not on notice that 

Mr. Chen may testify at trial. Second, the FTC asserts that Mr. Chen cannot testify at trial 

because the FTC deposed him pursuant to a Rule 30(b)(6) subpoena. But Mr. Chen’s testimony 

at trial will concern the same matters about which he was deposed, as Qualcomm has told the 

FTC since July 10, 2018. (July 10, 2018 Email from B. Byars to J. Milici (quoted above); see 

also ECF No. 950-09.) The FTC’s objection should be overruled.

Qualcomm’s Response to FTC HPO No. 3 (QX9240—Liren Chen)

QX9240 is an e-mail from Liren Chen to individuals at Apple, along with an attached 

 1 The deposition was taken after the scheduled close of fact discovery by leave of Court. 

(ECF No. 678.)

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 4 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

4

slide deck regarding Qualcomm’s patent portfolio. Qualcomm intends to elicit testimony from 

Mr. Chen that he was heavily involved in drafting the slide deck and that he personally presented 

the slide deck to Apple. Accordingly, Mr. Chen has personal knowledge, and the FTC’s 

FRE 602 objection should be overruled.

Slides 3-6, 27, and 41-42 include statistics regarding Qualcomm’s patent portfolio as of 

the date of the presentation. In addition to his personal knowledge, Mr. Chen also will establish 

a business records foundation for these slides. The remaining slides are not offered for the truth 

of the matter asserted, but are presented to demonstrate information that Qualcomm has provided

to potential licensees. This is relevant, among other reasons, to respond to testimony from the 

FTC’s expert Mr. Donaldson about Qualcomm’s licensing negotiations. Thus, the FTC’s 

hearsay objection as to those slides should be overruled.

The FTC separately objects to slides 7-9. Each of these slides includes two pieces of 

content: (1) a list of exemplary technology areas in Qualcomm’s portfolio and (2) references to 

Apple. The former was discussed extensively in Mr. Chen’s deposition. (Tr. 24:8-23 (listing 

exemplary categories of Qualcomm patents); 72:18-74:4 (listing exemplary types of Qualcomm 

non-cellular SEP).) As to the latter, Qualcomm does not intend to elicit testimony related to that 

content.2

Qualcomm’s Response to FTC HPO No. 4 (QX9226—Fabian Gonell)

QX9226 contains an email chain attaching a series of letters to various OEMs, 

guaranteeing chipset supply even if an OEM challenges its licensing terms or refuses to pay 

royalties. The Court previously overruled the FTC’s objection based on relevance and 

completeness. (ECF No. 1178, FTC HPO No. 2.) The FTC nonetheless raises these arguments 

again—without providing any reason to revisit the Court’s prior ruling. 

On top of the objections already overruled by this Court, the FTC objects on the basis 

 2 Qualcomm is willing to redact the slides to remove such references or to not offer slides 7-

9 into evidence. Separately, at the FTC’s request, Qualcomm agreed not to enter slides 43-45 of 

QX9240 into evidence to resolve the FTC’s objection to QX9240 under FRE 702.

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 5 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

5

that Mr. Gonell lacks personal knowledge. But Mr. Gonell was copied on emails within the 

chain, and Qualcomm will elicit testimony at trial showing that Mr. Gonell, who was Division 

Counsel for QTL at the time of the emails, has personal knowledge of these letters. The Court 

should deny the FTC’s 602 objection and review the admissibility of QX9226 in the context of 

Mr. Gonell’s testimony at trial.

Qualcomm’s Response to FTC HPO No. 5 (QX2259—Fabian Gonell) 

QX2259 is a letter from an OEM proposing certain terms for a 3G and 4G subscriber unit 

and infrastructure equipment licenses. Under Federal Rule 801, a “verbal act”—a “statement 

[that] itself affects the legal rights of the parties”—is not hearsay. See Fed. R. Evid. 801 

committee note to subdivision (c). Thus, “[n]either an offer nor an acceptance is hearsay”. 

United States v. Mendez-Perez, Nos. 92-10350, 92-10354, 1993 WL 436971, at *1 (9th Cir. 

Oct. 27, 1993). As Qualcomm is offering QX2259 for the verbal act of the offer made by the 

OEM, QX2259 is not hearsay. 

Qualcomm’s Response to FTC HPO No. 6 (QX9325—Fabian Gonell) 

QX9325 is a letter to a certain OEM notifying it that Qualcomm had adopted a royalty 

cap limiting the amount of money the OEM would be required to pay under its license 

agreement. The FTC’s objections under FRE 602 and 802 are misplaced. Qualcomm will elicit 

testimony at trial that Mr. Gonell has personal knowledge of the letter sent by Derek Aberle, to 

whom Mr. Gonell reported at the time. In addition, QX9325 is not hearsay. QX9325 is a verbal 

act because the letter “revise[s] the terms and conditions applicable to QUALCOMM’s voluntary 

royalty cap program with respect to certain Subscriber Units that are licensed under the 

[licensee’s] License Agreement”. (QX9325, at 1.) In other words, the letter itself is an act with 

legal significance. See Mendez-Perez, 1993 WL 436971, at *1 . 

Qualcomm’s Response to FTC HPO No. 7 (QX0218—Michael Hartogs) 

QX0218 is an October 21, 2009 email from David Chang of MediaTek to Michael 

Hartogs and others of Qualcomm, regarding negotiations between Qualcomm and MediaTek of a 

. In response to near-finalization of the deal, Mr. Chang states “I 

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 6 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

6

am so exciting [sic] that both Qualcomm and MediaTek will reach 

, it is definitely a WIN-WIN case for both companies.” Because QX0218 

memorializes Mr. Chang’s then-existing impression of the prospect of concluding the 

 with Qualcomm, it satisfies the “then-existing” state of mind exception to the 

rule against hearsay under FRE 803(3), and therefore is admissible as an exception to the hearsay 

rule. Given that the FTC has asserted that competing chipmakers were harmed by Qualcomm’s 

refusal to enter into exhaustive chip-level licenses, the expression of Mr. Chang’s state of mind 

as the parties neared the conclusion of negotiations concerning is 

probative of the FTC’s theory.3

Qualcomm’s Response to FTC HPO No. 8 (Todd Madderom Tr. 84:8-16) 

Todd Madderom of Lenovo/Motorola testified that he “was certainly a contributor” to a 

document that he was shown at his deposition (Tr. 81:14-17) and testified concerning that 

document. Mr. Madderom’s testimony is not only sufficient to show personal knowledge of the 

document, but also to overcome the FTC’s hearsay objection to his testimony concerning the 

document. Importantly, Qualcomm is not seeking to admit the document itself into evidence, 

merely Mr. Madderom’s testimony based on his personal knowledge of the document. The 

FTC’s hearsay objection should be denied. 

 

 3 During the meet-and-confer process, the FTC agreed that QX0218 could be admitted if not 

admitted for the truth of the matter asserted.

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 7 of 8
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S HPOS AND RESPONSES FOR JANUARY 18, 2019 TRIAL DAY

17-CV-0220-LHK-NMC

7

Dated: January 17, 2019 Respectfully submitted,

CRAVATH, SWAINE & MOORE LLP

s/ Yonatan Even

Gary A. Bornstein

Yonatan Even

Worldwide Plaza

825 Eighth Avenue

New York, NY 10019

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

gbornstein@cravath.com

yeven@cravath.com

Robert A. Van Nest

Eugene M. Paige

Justina K. Sessions

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111

Telephone: (415) 676-2289

Facsimile: (415) 397-7188

rvannest@keker.com

epaige@keker.com

jsessions@keker.com

Richard S. Taffet

MORGAN, LEWIS & BOCKIUS LLP

101 Park Avenue

New York, NY 10178

Telephone: (212) 369-6000

Facsimile: (212) 309-6001

richard.taffet@morganlewis.com

Geoffrey T. Holtz

MORGAN, LEWIS & BOCKIUS LLP

One Market, Spear Street Tower

San Francisco, CA 94105

Telephone: (415) 442-1000

Facsimile: (415) 442-1001

geoffrey.holtz@morganlewis.com

Attorneys for Qualcomm Incorporated

Case 5:17-cv-00220-LHK Document 1337 Filed 01/17/19 Page 8 of 8