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Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

KEKER, VAN NEST & PETERS LLP

Robert A. Van Nest (SBN 84065)

rvannest@keker.com

Eugene M. Paige (SBN 202849)

epaige@keker.com

Justina Sessions (SBN 270914)

jsessions@keker.com

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 391-5400 

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, New York 10019-7475 

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

Attorneys for Defendant 

QUALCOMM INCORPORATED

MORGAN, LEWIS & BOCKIUS LLP

Richard S. Taffet (pro hac vice)

richard.taffet@morganlewis.com

101 Park Avenue

New York, NY 10178-0060

Telephone: (212) 309-6000

Facsimile: (212) 309-6001

MORGAN, LEWIS & BOCKIUS LLP

Willard K. Tom (pro hac vice)

willard.tom@morganlewis.com

1111 Pennsylvania Avenue NW

Washington, DC 20004-2541

Telephone: (202) 739-3000

Facsimile: (202) 739-3001

MORGAN, LEWIS & BOCKIUS LLP

Geoffrey T. Holtz (SBN 191370)

gholtz@morganlewis.com

One Market, Spear Street Tower

San Francisco, CA 94105-1596

Telephone: (415) 442-1000

Facsimile: (415) 442-1001 

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FEDERAL TRADE COMMISSION,

Plaintiff,

vs.

QUALCOMM INCORPORATED, a Delaware 

corporation,

Defendant.

Case No. 17-cv-0220-LHK-NMC

DEFENDANT QUALCOMM 

INCORPORATED’S OPPOSITION TO 

MOTION FOR PARTIAL SUMMARY 

JUDGMENT ON QUALCOMM’S 

STANDARD ESSENTIAL PATENT 

LICENSING COMMITMENTS

Date: October 18, 2018

Time: 1:30 p.m.

Dept.: Courtroom 8, 4th Floor

Judge: Hon. Lucy H. Koh

Trial Date: January 4, 2019

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

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TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES..............................................................................................................iii

I. SUMMARY OF ARGUMENT .............................................................................................. 1

II. STATEMENT OF FACTS ..................................................................................................... 3

A. The Relevant Commitments to ATIS and TIA ......................................................... 4

B. The Content of the ATIS and TIA Standards............................................................ 5

C. The ANSI Essential Requirements and Patent Policy .............................................. 7

D. Industry Practice of Licensing Complete End-User Equipment, Not 

Components Such As Modem Chips......................................................................... 8

E. The Need for Compatibility Among IPR Policies of Cellular SDOs. ................... 10

III. LEGAL STANDARD ........................................................................................................... 12

A. Summary Judgment Must Be Denied When the Plain Language 

Interpretation or a Contractual Ambiguity May Be Resolved in the NonMovant’s Favor. ........................................................................................................ 12

B. Under California Law, the Entire Contract and All Other Evidence Must 

Be Considered To Determine if a Contract Is Reasonably Susceptible to a 

Party’s Proposed Interpretation. ............................................................................... 12

IV. ARGUMENT......................................................................................................................... 13

A. The FTC’s “Plain Language” Interpretations of the ATIS and TIA IPR 

Policies Do Not Take Account of the Complete Contractual Provisions at 

Issue. .......................................................................................................................... 14

1. The FTC Fundamentally Misreads the ATIS and TIA Policies 

Because Modem Chips Do Not Practice or Implement the Standard. ...... 14

2. The Non-Discrimination Commitments Do Not Compel 

Component-Level Licensing........................................................................ 18

3. TIA’s Licensing Guidelines Are Not Part of the TIA Contract and, 

in Any Event, Do Not Support the FTC’s Reading of the TIA IPR 

Policy............................................................................................................. 19

B. The Overwhelming Evidence Establishes, at the Very Least, a Genuine 

Factual Dispute Concerning the Appropriate Interpretation of the ATIS and 

TIA IPR Policies. ...................................................................................................... 19

1. Long-Standing Industry Practice Confirms That the ATIS and TIA 

Policies Do Not Require Licensing the Manufacture and Sale of 

Modem Chips................................................................................................ 20

2. ANSI Has Confirmed That Licensing at the Component Level Is 

Not Required................................................................................................. 22

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Case No. 17-cv-220-LHK-NMC

3. The FTC Concedes the Need for Evidence Interpreting the ETSI 

IPR Policy, Which Must Be Consistent with the ATIS and TIA 

Policies. ......................................................................................................... 23

C. Amici Misconstrue FRAND Caselaw, Which Does Not Establish That 

Licensing the Manufacture and Sale of Components Is Required by the 

TIA or ATIS IPR Policies......................................................................................... 24

V. CONCLUSION...................................................................................................................... 25

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TABLE OF AUTHORITIES

Page(s)

Cases

Anderson v. Liberty Lobby,

477 U.S. 242 (1986).......................................................................................................................12

Apple v. Qualcomm,

LEXIS 145835 (S.D. Cal Sept. 7, 2017). .....................................................................................25

Bank of the West v. Superior Court,

2 Cal. 4th 1254 (1992)...................................................................................................................12

Celotex Corp. v. Catrett,

477 U.S. 317 (1986)................................................................................................................ 12, 18

In the Matter of Certain Wireless Communications Equipment,

2007 WL 1221125, USITC Inv. No. 337-TA-577 (Feb. 22, 2007)............................................19

City of Atascadero v. Merrill Lynch, Pierce, Fenner & Smith, Inc.,

68 Cal. App. 4th 445 (Cal. Ct. App. 1998)...................................................................................13

Copart, Inc. v. Sparta Consulting, Inc.,

277 F. Supp. 3d 1127 (E.D. Cal. 2017) ........................................................................................12

Crestview Cemetery Ass’n v. Dieden,

54 Cal. 2d 744 (1960)............................................................................................................. 13, 21

Ericsson v. D-Link Sys., Inc.,

773 F.3d 1201 (Fed. Cir. 2014).............................................................................................. 24, 25

Kennecott v. Union Oil,

196 Cal. App. 3d 1179 (Cal. Ct. App. 1987)......................................................................... 13, 21

Microsoft Corp. v. Motorola, Inc.,

696 F.3d 872 (9th Cir. 2012).........................................................................................................24

Microsoft Corp. v. Motorola, Inc.,

795 F.3d 1024 (9th Cir. 2015).......................................................................................................24

Miller v. Glenn Miller Prods., Inc.,

454 F.3d 975 (9th Cir. 2006).........................................................................................................12

Pacific Gas & Electric Co. v. G.W. Thomas Drayage & Rigging Co.,

69 Cal. 2d 33 (1968) ......................................................................................................................13

Phoenix Tech. Ltd. v. VMware, Inc.,

2017 WL 1289863 (N.D. Cal. Jan. 6, 2017) ........................................................................ passim

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Case No. 17-cv-220-LHK-NMC

Powerine Oil Co. v. Superior Court,

37 Cal. 4th 377 (2005)...................................................................................................................12

Public Storage v. Spring Corporation,

No. CV 14-2594, 2015 WL 1057923 (C.D. Cal. Mar. 9, 2015) .................................................20

Pulte Home Corp. v. American Safety Indem. Co.,

14 Cal. App. 5th 1086, 1128 (Cal. 2017) .....................................................................................12

Soremekun v. Thrifty Payless, Inc.,

509 F.3d 978 (9th Cir. 2007).........................................................................................................12

TCL Commc’n Tech. Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson,

2017 WL 6611635 (C.D. Cal. Dec. 21, 2017) .............................................................................19

Trident Center v. Connecticut General Life Ins. Co.,

847 F.2d 564 (9th Cir. 1988).........................................................................................................13

Turner v. Met. Life Ins. Co.,

56 Cal. App. 2d 862 (1943)...........................................................................................................18

Statutes & Rules

Cal. Civ. Code § 1641............................................................................................................. 12, 14, 18

Cal. Civ. Code § 1644................................................................................................................... 13, 17

Cal. Civ. Code § 1649..........................................................................................................................21

Cal. Civ. Proc. Code § 1861 ................................................................................................................13

Fed. R. Civ. Pro. 56..............................................................................................................................18

REFERENCES

All references to “Ex. __” are to the exhibits attached to the accompanying Request for Judicial 

Notice (Exs. 1-20) or to the accompanying Declaration of Geoffrey Holtz (Exs. 21-36). 

All References to “___ Decl.” are to an accompanying Declaration. 

All references to “FTC Ex. __” are to the exhibits attached to the Aug. 30, 2018 Declaration of 

Jennifer Milici in Support of the FTC’s Motion. (ECF No. 792-1.) 

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I. SUMMARY OF ARGUMENT

Under the guise of seeking merely to “streamline the trial” (Mot. at 3), the FTC’s Motion 

for Partial Summary Judgment requests a ruling that would radically reshape licensing in the 

cellular industry, not just for Qualcomm but for all cellular SEP holders that made FRAND 

commitments to ATIS or TIA. The FTC contends that those SEP holders have a clear and 

unambiguous contractual obligation to grant licenses to manufacture and sell modem chips. The 

FTC’s position distorts the language of the ATIS and TIA IPR Policies, and it is starkly at odds 

with real-world practices. If the FTC were correct that modem chip license agreements are 

required by commitments to ATIS and TIA, then such agreements should be commonplace, found 

throughout the industry. But they are not. In fact, they are anything but. There is not a single 

major holder of cellular SEPs that includes modem chip licenses in its licensing program. That is 

because what the FTC casts as a plain reading of the IPR Policies—which it asks the Court to 

adopt as a matter of law, without hearing any evidence at all—is in fact a complete reimagining 

of the industry, neither required by the applicable language nor supported by the overwhelming 

extrinsic evidence of the IPR Policies’ meaning. Rather than rebut this evidence—much of which

is undisputed—the FTC asks the Court to ignore it, in conflict with basic canons of California 

contract law.

The FTC’s Motion fails at the most basic level: it has not shown that the text of the ATIS 

or TIA IPR Policy clearly and unambiguously requires SEP holders to license the manufacture 

and sale of modem chips. First, the FTC repeatedly focuses on the portion of the IPR Policies 

that requires licenses to be made available to “applicants” or to “all applicants”, and it 

simplistically argues that modem chip suppliers can be “applicants” entitled to a license. This 

argument ignores key limiting language in the IPR Policies making it clear that SEP holders are 

not required to make licenses available to all applicants for all purposes. As the FTC itself notes, 

the ATIS licensing commitment requires that licenses be made available only to those applicants 

“desiring to utilize the license for the purpose of implementing the [relevant ATIS] standard”, and 

the TIA licensing commitment requires that licenses be made available to applicants only “to the 

extent necessary for the practice of [the relevant TIA standard]”. (Mot. at 2 (alterations in 

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original).) Thus, to give effect to this limiting language, the relevant question is whether the 

purposes specified in the IPR Policies include manufacturing and/or selling modem chips. The 

word “applicants” does not answer that question, and therefore does not compel the reading 

advanced by the FTC.

Second, the manufacture and sale of modem chips are not among the purposes for which 

the IPR Policies require licenses to be made available; at the very least, the Policies are 

ambiguous, creating an issue of fact on that point that precludes summary judgment. Licenses 

must be made available to “implement” (ATIS) or “practice” (TIA) the relevant standards. As 

shown by the detailed evidence Qualcomm submits together with this Opposition, both the ATIS 

and TIA standards describe the operation of a complete mobile device (e.g., a cellular phone) and 

the cellular network itself (e.g., the base stations and other infrastructure). The standards do not

describe the operation of modem chips or other components of a complete device. Thus, whereas 

complete devices may “implement” or “practice” the ATIS or TIA standards, modem chips 

cannot. The FTC’s Motion provides no technical support for its assertion that modem chips 

implement or practice those standards. It relies instead on statements that modem chips may 

practice one or more claims of Qualcomm’s standard-essential patents. (Mot. at 5 n.13.) But 

standards are comprised of thousands of individual technologies, including many that are claimed 

by an SEP; the fact that a modem chip (with its attendant software) practices one or more of those 

patented technologies does not mean that the chip itself performs all the functions required to 

practice or implement “the standard”, as the FTC erroneously assumes. 

Third, the non-discrimination obligations in the IPR Policies do not support a reading that 

requires making licenses available for the manufacture and sale of modem chips. On their face, 

the non-discrimination obligations mean only that if a license must be made available, such 

license must be on non-discriminatory “terms and conditions” (i.e., that similar terms and 

conditions be offered to similarly situated licensees). The non-discrimination obligations do not 

address the antecedent question of whether a license must be made available for any specific 

purpose or field of use. The FTC’s accusation that, by not licensing modem chip suppliers,

Qualcomm discriminates against its competitors is baseless: Qualcomm makes licenses available 

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to all applicants for the purposes specified in the IPR Policies, whether or not the applicant also 

competes with Qualcomm in the modem chip business. 

Fourth, and perhaps most fundamentally, under California law, which the FTC states 

should govern the resolution of the FTC’s Motion, all credible evidence should be considered to 

determine whether the IPR Policies are reasonably susceptible to Qualcomm’s interpretation. 

Here, the evidence powerfully demonstrates that the FTC’s interpretation of the IPR Policies 

cannot be accepted, or at minimum demonstrates a genuine issue of disputed fact that precludes 

summary judgment. The FTC’s interpretation is contrary to the indisputable industry practice of 

licensing SEPs only at the device level; indeed, the FTC’s own licensing expert acknowledged 

this practice, and the FTC does not identify any cellular SEP holder that grants the modem chip 

licenses that the FTC says the IPR Policies so clearly require. The FTC’s interpretation is also 

contrary to a decision of the American National Standards Institute (“ANSI”)—an organization 

that accredits American standards development organizations (“SDOs”), including ATIS and 

TIA. ANSI decided that its own patent policy, on which the ATIS and TIA IPR Policies are 

based, does not require the licensing of components such as modem chips. And the FTC’s

interpretation would introduce disparities between the American SDOs and the cellular SDOs in 

the rest of the world, even though the SDOs themselves have entered into partnerships that 

require their policies to be consistent with one another. Critically, the FTC’s Motion concedes a 

“need for evidence regarding the meaning of Qualcomm’s commitments” to ETSI (Mot. at 3); as 

a result, the TIA and ATIS IPR Policies, which must be consistent with ETSI’s policy, cannot be 

interpreted differently without hearing evidence, and as a matter of law.

The FTC’s effort to short-circuit the trial and foist its made-for-litigation reading of the 

ATIS and TIA IPR Policies on the entire cellular industry ignores key language in the IPR 

Policies, ignores the technical characteristics of the standards and products at issue and runs 

directly counter to extensive and compelling evidence demonstrating, at minimum, numerous 

issues of disputed fact. Partial summary judgment should be denied.

II. STATEMENT OF FACTS

The FTC’s Complaint alleges that the IPR Policies of the European Telecommunications 

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Standards Institute (“ETSI”), which is the leading cellular SDO (Casaccia Decl. ¶ 6; Lupin Decl. 

¶ 8), as well as of two United States SDOs, ATIS and TIA, require Qualcomm to provide licenses 

for the manufacture and sale of modem chips. (Complaint for Equitable Relief (ECF No. 1)

¶¶ 57-59.) The FTC’s Motion asks this Court to find as a matter of law that “Qualcomm’s 

voluntary FRAND licensing commitments to [ATIS and TIA], under the plain meaning of these 

SDOs’ intellectual property rights (‘IPR’) policies, require Qualcomm to make licenses available 

to competing modem-chip sellers.” (Mot. at 1.) The FTC’s Motion does not seek a similar

judgment concerning the ETSI IPR Policy, but rather concedes at least a “need for evidence 

regarding the meaning of Qualcomm’s commitments” to ETSI. (Mot. at 3.)

A. The Relevant Commitments to ATIS and TIA

The Alliance for Telecommunications Industry Solutions (“ATIS”) is the U.S. 

Organizational Partner of 3GPP, a global collaborative partnership of SDOs and other industry 

participants that develops cellular standards. (Lupin Decl. ¶ 9.) The Telecommunications 

Industry Association (“TIA”) is the U.S. Organizational Partner of 3GPP2, another global 

collaborative partnership that has developed cellular standards. (Mot. at 10.)1 3GPP and 3GPP2 

develop technical specifications, which are then “transposed” (i.e., republished and adopted) by 

their Organizational Partners (such as ATIS, TIA or ETSI) into cellular standards for the regions 

governed by the Organization Partner (such as North America for ATIS and TIA). (Mot. at 7, 

10.) Each of the 3GPP and 3GPP2 IPR policies requires that each contributor of technology 

comply with the relevant IPR policy of the Organizational Partner of which it is a member. 

(Ex. 7 at Art. 55 (3GPP Working Procedure); Ex. 8 at Art. 55 (3GPP2 Working Procedure).)

ATIS’s IPR Policy states that a holder of essential patent claims may give “assurance that 

a license to such essential patent claim(s) will be made available to applicants desiring to utilize 

the license for the purpose of implementing the standard . . . under reasonable terms and 

conditions that are demonstrably free of any unfair discrimination.” (FTC Ex. 2 at 10 (ATIS 

Operating Procedures) (emphasis added).) Pursuant to that policy, Qualcomm has made 

 

1 The other 3GPP Organizational Partners are ETSI (Europe), ARIB and TTC (both of Japan), 

CCSA (China), TSDSI (India), and TTA (Korea). (Casaccia Decl. ¶ 7.) The other Organizational 

Partners of 3GPP2 are ARIB, TTC, CCSA and TTA. (Tiedemann Decl. ¶ 10.)

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FRAND commitments to ATIS assuring that it would make licenses available to applicants “for 

the purpose of implementing the standard.” (Id. at 8-10.)

Until 2005, the TIA IPR policy provided that SEPs “will be made available under 

reasonable terms and conditions that are demonstrably free of any unfair discrimination to 

applicants only and to the extent necessary for the practice of the TIA Publication.” (FTC 

Ex. 39 at 87 (TIA Eng’g Manual, 2002) (emphasis added).) A “TIA Publication” contains a

standard adopted by TIA.

2

 (FTC Ex. 3 at 3 (Guidelines to the TIA IPR Policy, 2014).) In 2005, 

the TIA IPR Policy was modestly amended, but not in any respect relevant here. (Lupin Decl.

¶ 16; see also Ex. 15 (Koninklijke Philips NV v. Asustek Computer Inc., [2016] EWHC 2220 (Pat) 

(UK High Court of Justice) (change served “to make it explicit that a patent that was necessarily 

infringed by the practice of an ‘optional’ element of a standard was nonetheless still an ‘essential’ 

patent.”)).) Qualcomm has provided TIA with commitments to make licenses available to 

applicants “only and to the extent necessary for the practice of the” TIA standards. (Mot. at 12-

14.)

B. The Content of the ATIS and TIA Standards

The 3GPP (ATIS) and 3GPP2 (TIA) technical specifications that have been adopted by 

ATIS and TIA specify with great precision the performance, interoperability and communication 

protocols between two broad “domains” of a cellular system: (1) Infrastructure, which comprises 

fixed equipment such as base stations that send and receive wireless signals and relay those 

signals over wired connections, and (2) User Equipment, an operational device such as a 

smartphone (“UE”, also referred to as the “Mobile Station” in 3GPP2). (Casaccia Decl. ¶ 13; 

Tiedemann Decl. ¶ 16.) The basic domain split between the “User Equipment Domain” and the 

“Infrastructure Domain”, is shown in the figure below drawn from an ATIS standard. (Casaccia 

Decl. ¶¶ 12, 13.) 

 

2 A “Standard” is any TIA publication that establishes “engineering and technical requirements 

for processes, procedures, practices and methods that have been adopted by consensus”. (FTC 

Ex. 1 at 8 (TIA IPR Policy).) 

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As the figure demonstrates, cellular standards generally treat the internal workings of each 

domain as a “black box”. The standards specify the actions a complete device must take (such as 

which signals it must transmit) to operate on a cellular network. Conversely, the standards say 

nothing at all about the design of modem chips, antennae, power-control chips or the many other 

components that make up a cellular device. (Casaccia Decl. ¶ 19; Tiedemann Decl. ¶¶ 16-17, 27-

28, 37-46.) They also do not define how a smartphone or Mobile Station should be constructed 

or what components each must contain. As such, these standards provide device manufacturers 

(and infrastructure manufacturers) broad discretion regarding how to construct a user device or 

infrastructure. (Casaccia Decl. ¶ 9; Tiedemann Decl. ¶ 15.) Indeed, the standards do not even 

specify whether any required functions must be implemented in hardware or software. (Casaccia

Decl. ¶ 9.) 

As a representative example, the ATIS 3GPP TS 36.331 standard published by ATIS 

defines the LTE Radio Resource Control (“RRC”) protocol and relevant behaviors for 

communication between an LTE-compatible mobile device and the base station. (Casaccia Decl. 

¶ 23.) This specification expressly provides over 350 requirements concerning an LTEcompatible User Equipment (i.e., “the UE shall . . .”), but does not provide any requirement as to 

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the internal components of the UE, including the modem chip or multiple other components that 

typically play a role in communications between a UE and Infrastructure (e.g., an RF transmitter 

and receiver or an antenna). (Casaccia Decl. ¶ 23.)

Because the ATIS and TIA standards define the functionality of the UE and its 

interconnectivity with the cellular network, conformance with the standards is tested and 

determined by analyzing the functioning of a complete operational device, not the behavior or 

design of any component of the UE such as modem chips. (Casaccia Decl. ¶¶ 29-34; Tiedemann 

Decl. ¶¶ 35-44.) Modem chips do not and cannot operate on a cellular network on their own, 

outside of a UE that has all of the hardware and software components needed to implement the 

standards-specified functionality. (Tiedemann Decl. ¶ 19-34.) Thus, whereas a UE either 

complies or does not comply with (and therefore implements/practices) a standard, the very same 

modem chip can be placed in a UE that complies and in a UE that does not comply with the 

standard.

C. The ANSI Essential Requirements and Patent Policy

 In addition to being Organizational Partners of 3GPP and 3GPP2, respectively, ATIS and 

TIA are accredited by ANSI, a non-profit organization that oversees the development of standards 

in the United States. (Mot. at 7, 10.) To maintain ANSI accreditation, ATIS and TIA must meet 

certain “Essential Requirements” defined by ANSI, including maintaining IPR Policies that are 

consistent with ANSI’s own Patent Policy. (Ex. 2 § 4.1.1, § 4.2.1.1 (ANSI Essential 

Requirements).) That ANSI Patent Policy provides for patent holders to commit that a license 

“will be made available to applicants desiring to utilize the license for the purpose of 

implementing the standard . . . under reasonable terms and conditions that are demonstrably free 

of any unfair discrimination”. (Id. § 3.1.1.) ATIS has explicitly adopted the ANSI Patent Policy

verbatim as its own (Mot. at 8), while TIA adopted the closely similar language discussed above.

Importantly, ANSI’s Executive Standards Council (“ExSC”) has expressly determined 

that its own Patent Policy does not require that accredited SDOs mandate component-level 

licensing: 

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We . . . take this opportunity to emphasize that [a prior ExSC decision] was not 

intended to create a “default” interpretation of the ANSI Patent Policy requiring 

licensing at the component level. While the ExSC determined in the IEEE case 

that such a requirement was not inconsistent with the ANSI Patent Policy, that 

does not mean that ANSI’s Patent Policy requires licensing at the component 

level. We do not wish to express or imply any such “default” interpretation and we 

leave it to negotiations between patent holders and implementers to decide what 

licensing terms are appropriate in particular standards, subject to the terms of an 

[SDO’s] patent policy. 

(Ex. 1 at 14 (February 23, 2018 Decision of the ANSI Executive Standards Council Appeals 

Panel at 14) (emphasis added).) The ANSI ExSC further clarified that a commitment to license 

“to the extent necessary to practice wholly compliant implementations”, rather than mere 

components, is equivalent to the ANSI Patent Policy’s requirement that a license be for “the 

purpose of implementing the standard”. (Id. at 2.) 

D. Industry Practice of Licensing Complete End-User Equipment, Not 

Components Such As Modem Chips

It is cellular industry practice for SEP owners to make licenses available for the 

manufacture and sale of end-user devices, but not for the manufacture and sale of components 

such as modem chips. The FTC’s expert, Richard Donaldson, acknowledged this. (Ex. 21 at 

283:17-24 (Donaldson Dep.) (testifying that “the practice to date is—has been people take 

licenses at the device level. That’s the way it kind of grew up . . . .”).) The record shows this

practice to be industry-wide and long-standing. For example, 

 

 Nokia is a member of both ATIS and TIA and has given 

assurances to both. (Ex. 9 at 4 (ATIS Membership Listing, Sept. 22, 2018); Ex. 10 at 4 (TIA 

Members List); Ex. 12 (Nokia Letters of Assurance).)

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Ericsson has explained that it has a similar practice and understanding of industry norms 

through Christina Petersson, Vice President of IPR and Legal Affairs. Ms. Petersson testified that 

when Ericsson licenses its cellular SEP portfolio, it “would be licensing the company putting its 

name on the fully compliant equipment and selling that on the market”. (Ex. 23 at 25:5-11 

(Petersson Dep.).) Device-level licensing had been Ericsson’s practice since it became involved 

in cellular SEP licensing. (Id. at 25:15-17.) 

 

.) Ericsson, too, is a 

member of both ATIS and TIA and has given assurances to both. (Ex. 9 at 3 (ATIS Membership 

Listing); Ex. 10 at 2 (TIA Members List); Ex. 13 (Ericsson Letters of Assurance).)

InterDigital, another ATIS and TIA member that provided license assurances (Ex. 9 at 3 

(ATIS Membership Listing); Ex. 10 at 3 (TIA Member List); Ex. 14 (InterDigital Letters of 

Assurance)), 

InterDigital’s Ranae McElvaine testified regarding the company’s licensing policy:

 

 

, were well aware it was industry 

practice to license SEPs at the device level, and not at the component or modem level. 

 

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 Other 

modem chip suppliers, including , Broadcom, , have never entered 

an agreement of that sort. (Ex. 16 at 15; (Responses of 

 Broadcom, to Korean Fair Trade Commission Questionnaire for 

chipset manufacturers).) 

3

 

The record amply demonstrates that licensing the manufacture and sale of end-user 

devices, rather than modem chips, is ubiquitous industry practice.

E. The Need for Compatibility Among IPR Policies of Cellular SDOs. 

The technical work of promulgating technical specifications occurs at 3GPP (and, in the 

past, occurred also at 3GPP2); ATIS and TIA then “transpose” the technical specifications of 

3GPP and 3GPP2 and adopt them as North American standards. (FTC Ex. 21 (3GPP Partners); 

FTC Ex. 31 at 6 (3GPP2 Partnership Project Description, 2002).) To ensure that 3GPP and 

3GPP2 specifications are subject to the same licensing requirements worldwide, the operating 

rules and procedures of both 3GPP and 3GPP2 mandate, as a condition of being an organizational 

partner of each SDO, that the IPR policies of each of their Organizational Partners must be 

compatible with one another:

“Organizational Partnership is open to any Standards Organization . . . which 

has . . . an Intellectual Property Rights (IPR) Policy which is compatible with 

those of the Organizational Partners.”

4

In addition, each of ETSI, TIA and ATIS is an organizational partner of oneM2M, a more 

 

3 Although Qualcomm has obtained inbound cross-licenses to the cellular SEPs of its licensees, 

those were to ensure that its licensees cannot sign a license for rights under Qualcomm’s patents 

and then opportunistically assert their own patents against Qualcomm. (Ex. 29 at 209:10-210:1 

(Hartogs Dep.).) As the FTC acknowledges, as a SEP holder, Qualcomm has not sought to 

license its cellular SEPs for the manufacture and sale of modem chips. (Mot. at 6.) Nor does 

Qualcomm assert its cellular SEPs against modem chip manufacturers. (Ex. 32 at 162:16-163:9

(Mar. 5, 2018 Gonell Dep.).) 

4 See FTC Ex. 5 at Art. 6 (3GPP Working Procedures) (emphasis added); Ex. 8 at Art. 6 (3GPP2 

Working Procedures) (emphasis added).

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recently formed global standards initiative for Machine to Machine Communications and the 

Internet of Things. (Ex. 3 (oneM2M - Partners).) Like 3GPP and 3GPP2, oneM2M requires that

the IPR Policy of each Organizational Partner be compatible with those of the other 

Organizational Partners. (Ex. 6 § 3.1 (oneM2M Partnership Agreement).) Consequently, the IPR 

Policies of ATIS and TIA are required to be compatible with those of ETSI and the other 

Organizational Partners. The FTC’s expert, Michael Lasinski, agrees, for example, that the ATIS 

IPR Policy is “fundamentally similar” to ETSI’s. (Ex. 33 ¶ 52 (Lasinski Report).) 

Representatives of ETSI have recognized that its IPR Policy does not require licensing the 

manufacture and sale of components like modem chips. When one SDO, the Institute of 

Electrical and Electronics Engineers (“IEEE”), revised its policy in February 2015 to require 

licensing for the manufacture of components, the ETSI Secretariat confirmed that the ETSI Policy 

had no such requirement. (Ex. 27 at 105:8-14 (Weiler Dep.).) The language of the ETSI IPR 

Policy on its face also makes clear that it does not require component-level licensing.5 Clause 6.1 

of the ETSI IPR Policy, which specifies the scope of the ETSI licensing commitment, clarifies 

that a patent holder’s obligation to make licenses available is limited to rights for the production, 

sale, lease, disposition of, repair, use or operation of “any system, or device fully conforming to a 

STANDARD” or to “use METHODS”. (Ex. 11 Clause 15-8, 15-4 (ETSI IPR Policy).) The 

terms “system”, “device” and “fully conforming” indicate that the ETSI licensing commitment 

extends to end-user devices, but not to components.6 Indeed, industry practice at the time of the 

adoption of the ETSI IPR Policy in November 1994 was to license only fully compliant end-user 

devices, and not components; and the drafters of the ETSI IPR Policy did not intend to change 

normal industry practice. (Ex. 34 at 40 (Huber Report); Ex. 28 at 189:10-190:1 (Huber Dep.).) 

 

5

(Ex. 35 at 10-11 (Fauvarque-Cosson Report); Ex. 30 at 114:14-115:2 (Fauvarque-Cosson Dep.)) 

6

(Ex. 34 at 35-36 (Huber Report); Ex. 28 at 146:9-17 (Huber Dep.); Ex. 35 at 11 (FauvarqueCosson Report); Ex. 30 at 86:6-24 (Fauvarque-Cosson Dep.).) 

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Case No. 17-cv-220-LHK-NMC

III. LEGAL STANDARD

A. Summary Judgment Must Be Denied When the Plain Language 

Interpretation or a Contractual Ambiguity May Be Resolved in the NonMovant’s Favor.

As the moving party, the FTC has the burden of demonstrating the absence of a genuine 

issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The FTC’s 

burden extends to demonstrating the absence of a fact dispute on each element of its claim, 

including the interpretation of the contract. Id. at 322-23; Copart, Inc. v. Sparta Consulting, Inc., 

277 F. Supp. 3d 1127, 1144 (E.D. Cal. 2017). To meet its burden, the FTC “must affirmatively 

demonstrate that no reasonable trier of fact could find other than for [it]”. Soremekun v. Thrifty 

Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007). On a motion for summary judgment, “[t]he 

evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in [its] 

favor.” Anderson v. Liberty Lobby, 477 U.S. 242, 254 (1986). “[I]f the interpretation [of a 

contract] turns upon the credibility of conflicting extrinsic evidence, or if ‘construing the 

evidence in the nonmovant’s favor, the ambiguity can be resolved consistent with the 

nonmovant’s position,’ summary judgment is inappropriate.” Phoenix Tech. Ltd. v. VMware, 

Inc., 2017 WL 1289863, at *3 (N.D. Cal. Jan. 6, 2017) (quoting Miller v. Glenn Miller Prods., 

Inc., 454 F.3d 975, 990 (9th Cir. 2006)). The FTC has not met this burden.

B. Under California Law, the Entire Contract and All Other Evidence Must Be 

Considered To Determine if a Contract Is Reasonably Susceptible to a Party’s 

Proposed Interpretation. 

The FTC’s Motion asserts that the ATIS and TIA IPR Policies should be governed by the 

contract law of California (Mot. at 15 n.49), which for purposes of this Motion Qualcomm does 

not dispute. Under California law, “[t]he fundamental goal of contractual interpretation is to give 

effect to the mutual intention of the parties.” Powerine Oil Co. v. Superior Court, 37 Cal. 4th 

377, 390 (2005) (citing Bank of the West v. Superior Court, 2 Cal. 4th 1254, 1264 (1992)). “The 

court will not impose its own interpretation at variance with the parties’ intention.” Pulte Home 

Corp. v. American Safety Indem. Co., 14 Cal. App. 5th 1086, 1128 (Cal. 2017). In interpreting 

contractual language, “[t]he whole of a contract is to be taken together, so as to give effect to 

every part, if reasonably practicable, each clause helping to interpret the other.” Cal. Civ. Code § 

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1641; City of Atascadero v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 68 Cal. App. 4th 445, 

473 (Cal. Ct. App. 1998). 

Under California law, when terms are “used by the parties in a technical sense” or when 

“a special meaning is given to them by usage”, courts should follow the meaning the parties have 

given them. Cal. Civ. Code § 1644. In addition, California law mandates that if there is a dispute 

as to the meaning of an agreement, “the court must consider extrinsic evidence of possible 

ambiguity.” Trident Center v. Connecticut General Life Ins. Co., 847 F.2d 564, 569 (9th Cir. 

1988) (citing Pacific Gas & Electric Co. v. G.W. Thomas Drayage & Rigging Co., 69 Cal. 2d 33 

(1968)). Such evidence includes “the object, nature and subject matter of the writing” and the 

parties’ post-contractual conduct. Pacific Gas & Electric Co., 69 Cal. 2d 33 at 40; see also 

Phoenix Tech. Ltd., 2017 WL 1289863 at *3 (courts must consider extrinsic evidence to 

determine if the language is “reasonably susceptible” to the interpretation urged by either party). 

Indeed, “[t]he conduct of the parties after execution of the contract and before any controversy 

has arisen as to its effect affords the most reliable evidence of the parties’ intentions.” Phoenix 

Tech., 2017 WL 1289863, at *3 (citing Kennecott v. Union Oil, 196 Cal. App. 3d 1179, 1189-90 

(Cal. Ct. App. 1987)); see also Crestview Cemetery Ass’n v. Dieden, 54 Cal. 2d 744, 754 (1960). 

And the court should consider evidence that terms “have a local, technical, or otherwise peculiar 

signification, and were so used and understood in the particular instance, in which case the 

agreement must be construed accordingly.” Cal. Civ. Proc. Code § 1861.

IV. ARGUMENT

After providing nine pages of “Background Facts” and purportedly “Undisputed Material 

Facts” (Mot. at 3-14), and citing 50 exhibits, the FTC’s Motion asserts that the “plain language” 

of the ATIS and TIA IPR Policies unambiguously “requires Qualcomm to make licenses 

available to competing sellers of modem chips”. (Mot. at 18, 20.) Accordingly, it asserts, the 

Court should not consider “extrinsic evidence” that contradicts the FTC’s proposed contractual 

interpretation. (Mot. at 16.) In Part IV.A below (as well as in Part II above), Qualcomm 

demonstrates why the FTC cannot establish that the contractual language “clear[ly]” and 

“explicit[ly]” compels its interpretation as a matter of law (Mot. at 16); to the contrary, the plain 

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language supports—or at a minimum is susceptible to—the interpretation proposed by Qualcomm 

and accepted by the entire industry for decades. In Part IV.B, Qualcomm describes the extensive 

extrinsic evidence that, under California law, should inform the Court’s assessment of the range 

of possible interpretations. This evidence includes a longstanding and uniform industry practice; 

the ANSI acceptance of the IPR Policies of ATIS and TIA as consistent with its own; and the 

FTC’s concession that there is a “need for evidence regarding the meaning of” the IPR Policy of 

ETSI, an SDO whose IPR Policy must be interpreted consistently with those of ATIS and TIA to 

enable their continued participation in the 3GPP, 3GPP2 and oneM2M partnerships. This 

evidence overwhelmingly contradicts the FTC’s proposed interpretation and, at a minimum, 

creates a genuine dispute of fact that precludes summary judgment. Finally, in Part IV.C, 

Qualcomm demonstrates that FRAND caselaw, including that cited by amici, does not address the 

proper interpretation of the ATIS or TIA IPR Policies.

A. The FTC’s “Plain Language” Interpretations of the ATIS and TIA IPR 

Policies Do Not Take Account of the Complete Contractual Provisions at 

Issue.

1. The FTC Fundamentally Misreads the ATIS and TIA Policies Because 

Modem Chips Do Not Practice or Implement the Standard.

The FTC argues that Qualcomm must make licenses available to modem chip suppliers 

based on what the FTC contends is the clear and unambiguous language of the ATIS and TIA IPR 

policies and Qualcomm’s accompanying licensing commitments. (Mot. at 20.) But the specific 

contractual language, read in its entirety, does not support—let alone compel—the FTC’s 

interpretation, precluding summary judgment in its favor. See Cal. Civ. Code § 1641.

With respect to ATIS, the FTC acknowledges that the ATIS IPR Policy calls for licenses 

to be made available “to ‘applicants’ whose products ‘implement the standard.’” (Mot. at 20) 

(emphasis added). The FTC further recognizes that the language of Qualcomm’s license 

assurances to ATIS limit its commitment to only those products that implement the particular 

standard in connection with which the specific assurance was given. (Id. at 9-10.) Similarly, the 

FTC acknowledges that Qualcomm’s commitment to TIA was to make licenses available to 

applicants “that wish to ‘practice’ TIA standards”. (Id. at 18.) 

The FTC’s argument focuses on the IPR Policies’ instruction to make licenses available to 

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“applicants”, but stops there and ignores limiting language in both policies that expressly defines

the purpose for which a license must be made available under each Policy. (FTC Ex. 2 at 10 

(ATIS Operating Procedures) (licenses must be granted “for the purpose of implementing the 

standard”); FTC Ex. 1 § 3.1.1 (TIA IPR Policy) (licenses must be granted “only to the extent 

necessary for the practice of any or all of the Normative portions” of the standard).) The FTC’s 

assertion that the ATIS and TIA licensing obligation is not “limited to applicants selling a 

particular type of product” (Mot. at 18) is thus incorrect. Under both the ATIS and TIA IPR 

Policies, the licensing commitment extends only to the manufacture and sale of products that 

practice or implement the relevant standard—namely User Equipment and Infrastructure, the only

products defined by the standard. (Above Part II.B.)

In other words, when a SEP holder makes a licensing commitment to ATIS and TIA, it 

commits to make licenses available to all applicants, but it does not commit to license those 

applicants to practice its patents for any and all purposes. For example, if a company makes both 

handsets and modem chips (such as Samsung or Huawei), Qualcomm agrees that its licensing 

commitments to ATIS and TIA (and to other SDOs) oblige it to license that company (even 

though it is a competitor), but only for its manufacture and sale of handsets. Likewise, if a 

modem chip supplier like MediaTek wanted to expand its business into the manufacture and sale 

of handsets, the ATIS and TIA IPR Policies would require Qualcomm to grant MediaTek a 

license for those purposes. But there is no requirement in the licensing commitments under either 

IPR Policy that a SEP holder make a license available to any applicant for its manufacture and 

sale of separate components—including not just modem chips, but RF chips, antennae, power 

management chips or software—just because those components may be put into User Equipment 

that implements relevant standards. (Lupin Decl. ¶ 4.)

The FTC’s contrary arguments fail to address the fact that modem chips do not themselves 

“implement” or “practice” an ATIS or TIA “standard”. As the Declarations of Lorenzo Casaccia 

and Edward Tiedemann demonstrate, the 3GPP and 3GPP2 standards define the interconnectivity 

and interoperability of User Equipment (ATIS)/Mobile Stations (TIA) and infrastructure 

equipment. (Above Part II.B.) The ATIS and TIA standards do not define the design of modem 

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chips (or the other components mentioned above), and modem chips cannot by themselves 

communicate with cellular networks. (Casaccia Decl. ¶¶ 5, 10; Tiedemann Decl. ¶¶ 8, 19-34.) 

Indeed, device manufacturers are generally free to attain the functionality specified in the 

standard using any component or aggregation of components they deem fit. (Casaccia Decl. ¶ 9.) 

In that sense, standards generally treat the end-user device as a “black box”; they do not specify 

how it is to be constructed, only how it must perform with respect to certain functions. For 

example, only the operation and capabilities of a complete end-user device can be tested to 

determine if it implements a standard, and there are no such tests for components such as modem 

chips. (Casaccia Decl. ¶¶ 29-34; Tiedemann Decl. ¶¶ 35-44.) While a modem chip may facilitate 

compliance with a standard, it cannot achieve such compliance; implementation of the standard 

depends on the overall design of the complete end-user device. (Casaccia Decl. ¶¶ 5, 8, 10; 

Tiedemann Decl. ¶¶ 16, 19-34.) Thus, commitments to ATIS and TIA do not require licenses to 

be made available for modem chips because modem chips do not implement or practice cellular 

standards; only complete end-user devices (and infrastructure) can do that. 

The FTC offers no proof to the contrary, only its own assertion and inapposite evidence. 

For example, the FTC points to deposition testimony of Keith Kressin, Qualcomm’s Senior Vice 

President of Product Management, for the proposition that “[m]odem chips . . . are cellular 

handset components that implement cellular standards and allow handsets to communicate with a 

cellular network.” (Mot. at 5 n. 12.) Even setting aside the fact that Mr. Kressin is not involved 

in standard development or licensing, Mr. Kressin did not say what the FTC attributes to him; all 

he did was explain the functions that a baseband processor, together with other related 

components, typically perform. Nowhere did Mr. Kressin state or imply that a modem chip alone 

can practice or implement a standard.7 The FTC’s reliance on the testimony of a single individual 

 

7

In the cited testimony, Mr. Kressin was asked, “[W]hat functionality does the baseband 

processor or modem provide?” He responded:

What functionality does the modem provide? The modem provides ability to 

utilize cellular communications, right? The modem in combination with the AP in 

combination with the RF chip provide, you know -- and the power management 

kind of provide the core chipset, if you will. And so modem functionality or 

baseband functionality is appeared to, you know, graphics and central processing 

and other functions. (FTC Ex. 7 at 11:17–12:4 (Kressin Dep.).) 

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who is not involved in standards development or licensing speaks volumes. In light of the body 

of evidence refuting the FTC’s theory, including the testimony of multiple witnesses at multiple 

companies who are deeply involved in standards development and cellular SDOs, even if Mr. 

Kressin had said exactly what the FTC contends (which he did not), such shorthand, colloquial 

use outside of the context of cellular SEP licensing could hardly trump the language appearing in 

the standards themselves, see Cal. Civil Code § 1644, or negate the extensive evidence 

demonstrating a contrary understanding of the relevant IPR Policies by major industry 

participants, see Phoenix Tech., 2017 WL 1289863, at *3. At minimum, an issue of fact exists, 

which precludes summary judgment.

The FTC also relies on various statements regarding whether Qualcomm owns any SEPs 

that contain claims that are infringed by an unspecified modem chip. (Mot. at 19, 20.) That

question is irrelevant. Whether certain claims of Qualcomm’s patents read on a typical modem 

chip (as some do) has no bearing on whether a modem chip “implements” or “practices” an ATIS 

or TIA standard. These are two distinct and unrelated inquiries. The IPR Policies specifically do 

not require SEP holders to license applicants for the purpose of practicing or implementing any 

claim of any standard-essential patent; rather, they require SEP holders to license applicants for 

the purpose of practicing or implementing the standards as a whole. The distinction is critical. A

claim in a patent can (and often does) specify a narrow function that could be infringed by a 

single component such as a modem and its attendant software, a filter, an RF chip or an antenna. 

Each of these components may support the implementation of a standard by a complete handset, 

when combined and configured with other components. But a standard, unlike a patent claim, 

specifies hundreds, if not thousands, of functions required to be carried out by complete UEs 

(handsets) and infrastructure equipment, each of which comprises hundreds of components. 

(Casaccia Decl. ¶ 23.) The fact that a modem chip may contain one of the individual 

technologies that a complete UE comprised of hundreds of components working together must 

use does not mean that the modem chip, by itself, practices (or implements) all of the 

functionality required to comply with the standard. 

The FTC has the burden to establish with admissible evidence that there is no dispute of 

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fact as to every element of its legal claim. Celotex, 477 U.S. at 322-23. Because the FTC has 

failed to prove that a modem chip “implements” or “practices” an ATIS or TIA “standard”, it 

necessarily fails to satisfy its burden. Viewing the evidence in the light most favorable to 

Qualcomm, as the Court must under Rule 56, there is at least a genuine factual dispute on this 

issue that precludes summary judgment. 

2. The Non-Discrimination Commitments Do Not Compel ComponentLevel Licensing.

The FTC as well as amici ACT | the App Association (“ACT”) and the Computer & 

Communications Industry Association (“CCIA”) argue that the “non-discriminatory” language in 

the ATIS and TIA IPR Policies requires that licenses be made available to “competitors”. (Mot. 

at 19, 20; Br. of Amici Curiae, ECF No. 864 (“Amici Br.”) at 5.) As noted above (Part IV.A.3), 

Qualcomm has never disputed that licenses must be granted to any applicant including

competitors—but only for the specified scope and purpose. Like the FTC, amici attempt to read 

out of the Policies the critical language limiting that scope: only for the manufacture or sale of 

products that “implement” or “practice” “the standard”—which modem chips do not do. As 

stated in the case that amici rely on, these are “words of limitation or restriction”, and they must 

be given effect. Turner v. Met. Life Ins. Co., 56 Cal. App. 2d 862, 869 (1943); see also Cal. Civ. 

Code § 1641. The FTC and amici effectively ask the Court to rewrite the language of the Policies 

to remove this critical limitation in the licensing commitment, which it may not do. 

What the non-discrimination obligation in the Policies actually does is govern the “terms 

and conditions” of the licenses that SEP holders commit to grant. (FTC Ex. 2 at 10 (ATIS 

Operating Procedures) (“reasonable terms and conditions that are demonstrably free of any unfair 

discrimination”); FTC Ex. 1 § 3.1.1 (TIA IPR Policy) (“terms and conditions that are reasonable 

and non-discriminatory”).) For example, it would prohibit an SEP holder from charging one 

licensee a 1% royalty while (all other terms being equal) charging a similarly situated licensee a 

10% royalty. The non-discrimination obligation does not expand the purposes for which licenses

must be made available to sweep in purposes other than implementing or practicing the standard.

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

3. TIA’s Licensing Guidelines Are Not Part of the TIA Contract and, in 

Any Event, Do Not Support the FTC’s Reading of the TIA IPR Policy.

To support its interpretation, the FTC also turns to TIA’s IPR Guidelines. (Mot. at 18-

19.) As a threshold matter, the Guidelines are not part of the TIA IPR Policy. Indeed, the TIA 

Guidelines expressly state: “These guidelines serve as a companion document and are not 

intended to substitute for the Policy . . .” (FTC Ex. 3 at 1 (Guidelines to the TIA IPR Policy.) On 

their face, therefore, they are not part of the contract, and the FTC’s reliance on them undermines

the FTC’s claim that the Court should ignore all extrinsic evidence and look only at the plain 

language of the IPR Policies. The decision in TCL Commc’n Tech. Holdings, Ltd. v. 

Telefonaktiebolaget LM Ericsson, No. SACV 14-341, 2017 WL 6611635 (C.D. Cal. Dec. 21, 

2017), cited by the FTC, is not to the contrary. There, the court expressly stated it would consider 

numerous pieces of evidence to interpret the ETSI IPR Policy, including the ETSI guidelines and 

fact and expert declarations. Id. at *5-6. Nowhere did the court hold that any guidelines were 

part of the contract itself or imposed contractual obligations. By contrast, In the Matter of 

Certain Wireless Communications Equipment, 2007 WL 1221125, at *7 USITC Inv. No. 337-

TA-577 (Feb. 22, 2007) expressly addressed the status of SDO IPR guidelines and held that “the 

[ETSI guidelines were] not intended to be part of a binding contract to which members agreed”. 

In any event, the FTC’s reliance on the guidelines is misplaced. To reach the conclusion 

that “modem chips are clearly a product contemplated by the standards at issue here, as they are 

necessary to implement the standards”, the FTC points to language in the TIA Guidelines that 

refers to “products contemplated by the standard in question”. (Mot. at 19.) As explained in 

detail above, the standards do not define the operation of modem chips, and ATIS and TIA 

licensing commitments therefore do not require that a mere component supporting a complete 

device’s implementation of a standard must also be separately licensed.

B. The Overwhelming Evidence Establishes, at the Very Least, a Genuine 

Factual Dispute Concerning the Appropriate Interpretation of the ATIS and 

TIA IPR Policies.

Under California law, courts should consider all credible evidence concerning the 

contracting parties’ intent when determining whether the contractual language is ambiguous, i.e., 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

reasonably susceptible to a party’s interpretation, including evidence that is extrinsic to the 

language of the contract. Phoenix Tech., 2017 WL 1289863, at *3; Public Storage v. Spring 

Corporation, No. CV 14-2594, 2015 WL 1057923, at *6 (C.D. Cal. Mar. 9, 2015). But the FTC 

ignores extensive evidence refuting its position, including (1) consistent, decades-long industry 

practice of exhaustively licensing SEPs only for the manufacture and sale of complete devices 

(and infrastructure), and not components such as modem chips; (2) a recent interpretation by 

ANSI, the organization that accredits both ATIS and TIA, of its own IPR Policy, which is 

identical to ATIS’s and consistent with TIA’s; and (3) the obligation of both ATIS and TIA to 

maintain IPR policies that are consistent with those of the other Organizational Partners of 3GPP 

and 3GPP2, and the evidence that ETSI—the leading SDO at 3GPP—considered a policy 

requiring component-level licensing not to meet this consistency requirement. This evidence 

establishes, at the very least, a genuine issue of factual dispute concerning whether Qualcomm’s 

commitments under the ATIS and TIA IPR Policies require licensing the manufacture and sale of 

components, including modem chips.

1. Long-Standing Industry Practice Confirms That the ATIS and TIA 

Policies Do Not Require Licensing the Manufacture and Sale of 

Modem Chips.

Long-standing industry practice demonstrates the error in the FTC’s proffered 

interpretation. This evidence takes two forms—the custom and practice of licensors, and the lack 

of licenses taken by companies selling modem chips. The indisputable evidence shows that all 

major cellular licensors, including those who at some point were also suppliers of UEs, 

infrastructure and components, license only end-user devices, not modem chips. (Above Part 

II.D.) Richard Donaldson, the FTC’s licensing expert, confirmed this is the long-standing 

practice of the cellular industry. (Ex. 21 at 283:17-24 (Donaldson Dep.).) The FTC asks the 

court to upend this ubiquitous industry practice, disrupting decades of cellular patent licensing—

and asks that it do so as a matter of law on a motion for summary judgment, without even 

considering evidence outside the purportedly “plain language”. However, California law requires 

that the Court consider this evidence, and the overwhelming evidence of a uniform industry 

practice weighs heavily against the FTC’s proposed interpretation of the ATIS and TIA Policies, 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

precluding summary judgment. See Crestview Cemetery Ass’n, 54 Cal. 2d at 754 (“[E]ven if it be 

assumed that the words standing alone might mean one thing to the members of this court, where 

the parties have demonstrated by their actions and performance that to them the contract meant 

something quite different, the meaning and intent of the parties should be enforced.”); Phoenix 

Tech., 2017 WL 1289863, at *3 (“The conduct of the parties after execution of the contract and 

before any controversy has arisen as to its effect affords the most reliable evidence of the parties’ 

intentions.”) (citing Kennecott, 196 Cal. App. 3d at 1189-90).

Equally compelling is the evidence showing that major suppliers of modem chips do not 

have a practice of entering into licenses for cellular SEPs covering the manufacture or sale of 

modem chips. (Above Part II.D.) The evidence shows that multiple current and former suppliers 

of modem chips do not have a single license for cellular SEPs. The FTC points to not a single 

instance of a chip seller seeking to legally enforce its purported contractual right to obtain a SEP 

license covering the manufacture and sale of modem chips from cellular SEP holders who made 

licensing commitments to either ATIS or TIA (or at all). This telling absence leads to but one 

conclusion: the ATIS and TIA IPR Policies do not mandate the grant of a license for the 

manufacture or sale of components. Indeed, this point is further amplified by 

These practices and Qualcomm’s interactions with participants in the cellular industry 

described in the accompanying Declaration of Louis Lupin (at ¶¶ 4, 5) confirm the existence of an 

issue of fact concerning the interpretation of Qualcomm’s licensing commitments. See Cal. Civ. 

Code § 1649 (“If the terms of a promise are in any respect ambiguous or uncertain, it must be 

interpreted in the sense in which the promisor believed, at the time of making it, that the promisee 

understood it”). 

This irrefutable evidence of the custom and practice in the industry demonstrates the 

unreasonableness of the FTC’s interpretation—and explains its attempt to foreclose the Court 

from considering this evidence. This evidence reflects the uniform industry-wide practice and 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

intent, at ATIS, TIA and beyond, that cellular SEPs licensing commitments cover only the 

manufacture and sale of end-user devices and network equipment, and not for the manufacture 

and sale of modem chips. This evidence establishes overwhelmingly the intent and meaning of 

the terms “for the purpose of implementing the standard” and “to the extent necessary for the 

practice of the TIA publication.” Under California law, this evidence compels the conclusion that 

the relevant Policies do not require licensing for the manufacture and sale of modem chips—or, at 

the very least, that a disputed issue of fact exists as to the existence of such an obligation. 

2. ANSI Has Confirmed That Licensing at the Component Level Is Not 

Required.

ATIS and TIA are both accredited as SDOs by ANSI. (Mot. at 7, 10.) Accordingly, both 

ATIS and TIA are obligated to follow ANSI’s Essential Requirements, which includes the ANSI 

Patent Policy. (Mot. at 7-10.) As the FTC acknowledges, ATIS has done so by adopting ANSI’s 

Patent Policy verbatim as its own. (Mot. at 7-8.) TIA’s policy, while slightly differently 

articulated, is substantively indistinguishable from the ANSI policy. (Mot. at 10-11.) 

As described above (Part II.C), within the last year the ANSI Executive Standards Council 

Appeals Panel issued a formal decision emphasizing that the requirement to license applicants 

“for the purpose of implementing the standard” “does not mean that ANSI’s Patent Policy 

requires licensing at the component level.” (Ex. 1 at 14 (Feb. 23, 2018 Decision of the ANSI 

Executive Standards Council Appeals Panel).) It could not be correct to conclude as a matter of 

law that two member IPR Policies—one of which is verbally identical, the other closely similar, 

and both required to be consistent with ANSI’s policy—do impose that very requirement.

Nothing in the FTC’s Motion, or in the record, even suggests that either ATIS or TIA 

have adopted policies at odds with ANSI’s interpretation of its own policy, or that SEP owners 

giving license assurances to ATIS and TIA have operated with an understanding that any such 

distinctions exist. Based on this evidence, the only reasonable interpretation of the ATIS and TIA 

policies is that they do not require licensing for the manufacture and sale of modem chips. 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

3. The FTC Concedes the Need for Evidence Interpreting the ETSI IPR 

Policy, Which Must Be Consistent with the ATIS and TIA Policies.

ETSI, ATIS and TIA are Organizational Partners in global collaborative standards

partnerships—3GPP (ATIS and ETSI), 3GPP2 (TIA and ETSI) and oneM2M (all three). (Ex. 3

(oneM2M - Partners); Casaccia Decl. ¶ 10; Tiedemann Decl. ¶ 10.) To ensure that cellular

specifications are subject to the same licensing requirements worldwide, the operating rules and 

procedures of each standards partnership require, as a condition of membership in each 

partnership, that the IPR policies of each of their Organizational Partners be compatible with that 

of the others. (Casaccia Decl. ¶ 10; Tiedemann Decl. ¶ 10.) This is to ensure the success of the 

global standards effort that is the mission of each of the collaborative organizations. (FTC Ex. 5

at Art. 2 (3GPP Working Procedures); Ex. 8 at Art. 2 (3GPP2 Working Procedures); Ex. 6 at 1 

(oneM2M Partnership Agreement); Lupin Decl. ¶¶ 9-10.) Accordingly, the meaning of the ETSI 

IPR Policy with regard to licensing components, including modem chips, is directly relevant to 

the interpretation of the ATIS and TIA Policies. 

The FTC, however, concedes a “need for evidence regarding the meaning” of the ETSI 

IPR Policy (Mot. at 3), which itself precludes its request for partial summary judgment. If 

determining the meaning of the ETSI IPR Policy requires evidence, and that meaning must be 

consistent with the meaning of the ATIS and TIA IPR Policies, then it cannot be the case that 

those latter Policies are susceptible to interpretation as a matter of law. 

Further, Qualcomm, in support of this Opposition, submits uncontroverted evidence that 

commitments under the ETSI IPR policy do not require that licenses be made available for the 

manufacture and sale of modem chips. Put differently, as evidence in the record shows, ETSI’s 

IPR policy does not require holders of essential IPRs to license their IPRs at the component level. 

(Above Part II.E.) This is confirmed by the long-term chair of ETSI’s IPR Special Committee, 

Dirk Weiler. As Mr. Weiler testified, the ETSI licensing commitment does not include an 

obligation to license components of cellular devices. (Ex. 27 at 43:3-45:1 (Weiler Dep.); see also

Ex. 23 at 21:20-25:23 (Petersson Dep.).) It is further supported by the fact that ETSI 

representatives have stated that its IPR Policy is not consistent with the IPR Policy of IEEE, on 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

the ground that recent amendments to the IEEE policy do require component-level licensing. 

(Ex. 27 at 11 (Draft Minutes from the ETSI General Assembly, Mar. 17-18, 2015).)

In the face of this strong evidence that the ATIS and TIA policies are and were 

specifically intended to be consistent with the ETSI policy that does not require licensing of 

components, the FTC asks this Court to declare as a matter of law that they are instead 

inconsistent in a very material respect. Such a result would balkanize global standards 

development collaborations and defeat the central goals of these global organizations to support 

global technical specifications and broad access to that technology by promoting consistent global 

licensing requirements. (Lupin Decl. ¶¶ 8-14.) Because the ATIS and TIA policies must be 

harmonized with the ETSI IPR policy, and the FTC concedes a need for evidence concerning the 

ETSI IPR Policy (Mot. at 3), summary judgment is precluded. 

C. Amici Misconstrue FRAND Caselaw, Which Does Not Establish That 

Licensing the Manufacture and Sale of Components Is Required by the TIA 

or ATIS IPR Policies.

Amici cite precedent that they contend establishes that “[t]he TIA and ATIS policies, on 

their faces, simply do not permit an interpretation limiting the beneficiaries of the licensing 

promise to ‘some’ applicants”. (Amici Br. at 6-7.) But amici do not address the IPR Policies’ 

language limiting the licensing obligation to specific purposes (i.e., to implement or to practice a 

standard) and therefore miss the point. Qualcomm’s interpretation, which is consistent with 

universal cellular industry licensing practice, does not impose “hidden, unstated restrictions”, as 

amici suggest (id. at 7), but instead gives effect to express limitations in the IPR Policies that 

amici’s interpretation completely ignores. 

None of the cases relied on by amici establishes that ATIS or TIA licensing commitments 

include the manufacture or sale of components, rather than only complete User Equipment or 

Infrastructure. In both Microsoft Corp. v. Motorola, Inc., 696 F.3d 872, 884 (9th Cir. 2012), and 

Microsoft Corp. v. Motorola, Inc., 795 F.3d 1024, 1031 (9th Cir. 2015), the Ninth Circuit 

addressed the IPR Policy (“Common Patent Policy”) of another SDO, known as ITU. In neither 

case did the Court have cause to consider whether any language in that Policy limited the scope of 

the obligation to license products that actually practiced the relevant standard. Nor could it, as 

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

the ITU’s Common Patent Policy does not contain any language like the language in the ATIS 

and TIA IPR Policies, which limits the licensing requirement to products that implement or 

practice a standard. In Ericsson v. D-Link Sys., Inc., 773 F.3d 1201, 1230 (Fed. Cir. 2014), the 

Federal Circuit made the unremarkable observation that a firm that had committed to license its 

patents on reasonable and non-discriminatory (“RAND”) terms could not completely refuse to 

license its patents to all others or only on conditions intended to preserve a monopoly. 

Accordingly, the Federal Circuit concluded that the district court erred by instructing the jury on 

the Georgia-Pacific factor that considers whether the IP holder has sought to maintain its patent 

monopoly rather than licensing its patents. Id. at 1235. But the Court did not interpret the terms 

of any particular RAND (or FRAND) obligation, much less address whether commitments to 

ATIS or TIA require the granting of licenses to manufacture or sell components that do not by 

themselves practice the relevant standard. 

Finally, amici rely on an Order issued in Apple v. Qualcomm, which is, of course, a 

dispute between Qualcomm and a manufacturer of handsets (i.e., User Equipment), not a 

manufacturer of modem chips. 2017 U.S. Dist. LEXIS 145835 (S.D. Cal. Sept. 7, 2017). In 

denying Qualcomm’s motion for an anti-suit injunction, Judge Curiel merely observed that the 

dispute between Apple and Qualcomm was more than a “paradigmatic private contractual 

dispute” among private parties, but rather potentially implicated the interests of “any number of 

corporations in China, Japan, the U.K. and Taiwan that are similarly-situated to Apple”, i.e., that 

manufacture handsets, and “that are similarly entitled to benefit from Qualcomm’s FRAND 

promise to ETSI”. Id. at *31-32. The Court did not determine that modem chip suppliers fell 

within the class of firms that were beneficiaries of Qualcomm’s FRAND commitment under the 

terms of the ETSI Policy it referred to, let alone under the ATIS and TIA IPR Policies at issue in 

this Motion, which it never mentioned. 

V. CONCLUSION

For all of the foregoing reasons, the FTC has failed to meet its burden of establishing its 

interpretation of the ATIS and TIA IPR policies as a matter of law. At minimum, genuine issues 

of material fact exist, and the FTC’s motion should be denied.

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Defendant Qualcomm Incorporated’s Opposition to Motion for Partial Summary Judgment on Qualcomm’s 

Standard Essential Patent Licensing Commitments

Case No. 17-cv-220-LHK-NMC

September 24, 2018

By: /s/ Geoffrey T. Holtz

Robert A. Van Nest (SBN 84065)

Eugene M. Paige (SBN 202849)

Justina Sessions (SBN 270914)

KEKER, VAN NEST & PETERS 

LLPKEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 391-5400 

Facsimile: (415) 397-7188

Gary A. Bornstein (pro hac vice)

Yonatan Even (pro hac vice)

CRAVATH, SWAINE & MOORE LLP

Worldwide Plaza

825 Eighth Avenue

New York, NY 10019-7475

Tel.: (212) 474-1000

Fax: (212) 474-3700

gbornstein@cravath.com

yeven@cravath.com

Richard S. Taffet (pro hac vice)

MORGAN, LEWIS & BOCKIUS LLP

101 Park Avenue

New York, NY 10178-0060

Tel.: (212) 309-6000

Fax: (212) 309-6001

richard.taffet@morganlewis.com

Willard K. Tom (pro hac vice)

MORGAN, LEWIS & BOCKIUS LLP

1111 Pennsylvania Avenue NW

Washington, DC 20004-2541

Tel.: (202) 739-3000

Fax: (202) 739 3001

willard.tom@morganlewis.com

Geoffrey T. Holtz (SBN 191370)

MORGAN, LEWIS & BOCKIUS LLP

One Market, Spear Street Tower

San Francisco, CA 94105-1596

Tel.: (415) 442-1000

Fax: (415) 442-1001

gholtz@morganlewis.com

Attorneys for Defendant 

QUALCOMM INCORPORATED

Case 5:17-cv-00220-LHK Document 879 Filed 09/25/18 Page 31 of 31