Exhibit 1

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 1 of 15
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

Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

Ryan W. Koppelman

CA Bar No. 290704

ryan.koppelman@alston.com

ALSTON & BIRD LLP

1950 University Avenue

5th Floor

East Palo Alto, CA 94303-2282

Phone: 650.838.2000

Fax: 650.838.2001

ATTORNEY FOR AMICUS CURIAE

NOKIA TECHNOLOGIES OY

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-00220-LHK-NMC

BRIEF OF NOKIA TECHNOLOGIES OY

AMICUS CURIAE IN SUPPORT OF

DEFENDANT QUALCOMM

INCORPORATED’S OPPOSITION TO

MOTION FOR PARTIAL SUMMARY

JUDGMENT

Date: October 18, 2018

Time: 1:30 PM

Location: San Jose Courthouse, Courtroom 8

Judge: Hon. Lucy H. Koh

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 2 of 15
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

-i- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

TABLE OF CONTENTS

TABLE OF CONTENTS ................................................................................................................... i

Table of Authorities .......................................................................................................................... ii

STATEMENT OF IDENTITY AND INTEREST OF AMICUS CURIAE....................................... 1

PRELIMINARY STATEMENT....................................................................................................... 1

ARGUMENT .................................................................................................................................... 3

I. The Industry Has Not Viewed the 3GPP and 3GPP2 IPR Policies to Require Licensing at

the Component Level. ........................................................................................................... 3

A. The ETSI IPR Policy Does Not Mandate Licensing at the Component Level. ........ 3

B. The Industry Practice Has Been to License at the End User Product Level. ............ 5

II. Licensing Obligations Across 3GPP and 3GPP2 Organizational Partners Should Be

Consistent.............................................................................................................................. 9

A. Incompatible Licensing Obligations Would Create a Patchwork of Confusing

Requirements............................................................................................................. 9

III. SEP Licensing in the Telecommunications Industry Has Led to Tremendous Success with

New Entrants and Huge Benefits for Consumers................................................................ 10

CONCLUSION ............................................................................................................................... 11

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 3 of 15
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

-ii- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

TABLE OF AUTHORITIES

Page(s)

CASES AND OPINIONS

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

773 F.3d 1201 (Fed. Cir. 2014)....................................................................................................5

In re Certain Electronics Devices, Commission Opinion,

Inv. No. 337-TA-794 (Int’l Trade Commission July 5, 2013).....................................................5

Unwired Planet Int’l Ltd. v. Huawei Techs. Co., [2017] EWHC 711 (Pat.) (May 4,

2017).............................................................................................................................................5

OTHER AUTHORITIES

3G Patent Platform for 3G Mobile Communication Systems – Definition, Function,

Structure, Operation, Governance, UMTS IPR ASSOCIATION ....................................................7

Communication from the Commission to the European Parliament, the Council and

the European Economic and Social Committee, Setting out the EU Approach to

Standard Essential Patents, COM(2017) 712 (Nov. 29, 2017) .............................................9, 10

David Teece & E.F. Sherry, On the “Smallest Saleable Patent Practicing Unit”

Doctrine: An Economic and Public Policy Analysis (2016) ........................................................6

Devlin Hartline, Letter to Antitrust Chief Applauds DOJ’s New Evidence-Based

Approach to IP Enforcement, CENTER FOR THE PROTECTION OF INTELLECTUAL

PROPERTY, GEORGE MASON UNIVERSITY SCHOOL OF LAW (September 2010)............................6

Erik Stasik, Royalty Rates and Licensing Strategies for Essential Patents on LTE

(4G) Telecommunications Standards, LES NOUVELLES (September 2010) .................................6

Jonathan D. Putnam & Tim A. Williams, The Smallest Salable Patent-Practicing

Unit (SSPPU): Theory and Evidence (2016) ...............................................................................5

Keith Mallinson, Busting Smartphone Patent Licensing Myths, CENTER FOR THE

PROTECTION OF INTELLECTUAL PROPERTY, GEORGE MASON UNIVERSITY

SCHOOL OF LAW (September 2015)..............................................................................................6

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 4 of 15
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

-1-

STATEMENT OF IDENTITY AND INTEREST OF AMICUS CURIAE

Amicus curiae is Nokia Technologies Oy.1 Nokia2is a leading innovator in the

telecommunications industry. Nokia has cumulatively invested approximately $140 billion in

research and development relating to mobile communications over the past two decades, and as a

result of this commitment, currently owns over 20,000 patent families. Nokia has also played a

prominent role in developing technologies that are incorporated in the 2G, 3G, and 4G mobile

cellular standards that have been vital to the success of the global mobile telecoms market. Nokia

is a significant owner of cellular standards essential patents (“SEPs”), and has a significant

number of licensees to those cellular SEPs. Nokia remains at the forefront of developing cellular

technologies, including in emerging 5G standards, and continues to contribute technologies

covered by its patented inventions as well as to renew its industry-leading patent portfolio.

Nokia also has been for many years and continues to be one of the largest manufacturers of

wireless, fixed, and optical telecommunications network equipment, and continues to invest

heavily in related research and development, including over $5.5 billion in 2017. As part of its

ongoing businesses, which employ over 100,000 and operate in around 130 countries, Nokia has

also negotiated and secured licenses to cellular SEPs owned by other industry players.

Nokia has been involved in numerous patent cases in U.S. district courts, both as a plaintiff

and a defendant, including cases involving SEPs.

PRELIMINARY STATEMENT

Nokia’s interest in this case is to advocate for consistent (F)RAND license obligations

across 3GPP’s and 3GPP2’s various Organizational Partners around the world such as the Alliance

1 No counsel for any of the parties authored any portion of this brief. No entity other than

amicus curiae Nokia Technologies Oy monetarily contributed to the preparation or submission of

this brief.

2 References to Nokia in this section include Nokia Technologies Oy and its parent, Nokia

Oy, and its affiliates.

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 5 of 15
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

-2- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

for Telecommunications Industry Solutions (“ATIS”) standards, the Telecommunications Industry

Association (“TIA”) standards, and the European Telecommunications Standards Institute

(“ETSI”) standards. Nokia is concerned about arguments being made now that the ATIS and TIA

IPR Policies have always unambiguously required SEP owners to license their SEPs at the

component level. Though Nokia primarily declares its patents through ETSI, Nokia has never

understood any Organizational Partner’s IPR Policy to require licensing of SEPs at the component

level for 3GPP and 3GPP2 standards. The FTC’s argument to the contrary contravenes industry

norms and, if adopted by this Court, could lead to the ATIS and TIA IPR Policies being

incompatible with the ETSI IPR Policy. Additionally, for international standards used globally,

like the 3GPP and 3GPP2 standards that govern cellular telecommunications, consistency of

(F)RAND license obligations across Organizational Partners is necessary so that SEP owners and

implementers do not potentially face a patchwork of differing obligations and practices across

different jurisdictions.

With regard to the issues raised in the FTC’s pending Motion for Partial Summary

Judgment, Nokia’s understanding has been from the beginning that the various Organizational

Partners’ IPR Policies do not require SEP owners to license cellular SEPs at the component level.

Based on experience in the industry, Nokia believes that its understanding in this regard is

consistent with the decisive ETSI IPR Policy as well as long-standing industry practice, and Nokia

has never understood any 3GPP or 3GPP2 Organizational Partner’s IPR Policy to mandate

licensing of cellular SEPs at the component level.

Nokia does not take any ultimate position on the facts of this specific case, which may be

unique to Qualcomm, but instead simply provides this amicus to give the Court perspective on the

novel and very surprising interpretations of the ATIS and TIA IPR Policies being put forward in

the FTC’s Motion for Partial Summary Judgment, especially if those novel and surprising

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 6 of 15
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

-3- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

interpretations are somehow later applied in a manner creating unintended consequences for other

SEP holders and the industry at large.

ARGUMENT

I. The Industry Has Not Viewed the 3GPP and 3GPP2 IPR Policies to Require

Licensing at the Component Level.

A. The ETSI IPR Policy Does Not Mandate Licensing at the Component

Level.

Nokia has heavily participated in 3GPP through its European Organizational Partner—

ETSI. Based on the language of the ETSI IPR Policy, and also the expectations of participants

and sound economic principles, the prevailing view at ETSI from the creation of its IPR Policy has

been that licensing of cellular SEPs would occur at the end user product level, rather than, for

example, at the component level. This view has been expressed by Nokia in response to a Civil

Investigative Demand that Nokia received from the FTC prior to the institution of this litigation

and in sworn testimony from a Nokia employee, Dirk Weiler, who is currently and has served for

a number of years as the Chairman of the ETSI Board and ETSI IPR Special Committee (see

Qualcomm Opp. Ex. 27 at 43:3-45:1). Importantly, Nokia’s view is also consistent with the

express language of the ETSI IPR Policy, which states that:

To the extent that the IPR(s) disclosed in the attached IPR Information Statement Annex

are or become, and remain ESSENTIAL in respect of the ETSI Work Item, STANDARD

and/or TECHNICAL SPECIFICATION identified in the attached IPR Information

Statement Annex, the Declarant and/or its AFFILIATES are (1) prepared to grant

irrevocable licences under this/these IPR(s) on terms and conditions which are in

accordance with Clause 6.1 of the ETSI IPR Policy . . . .

Clause 6.1 of the ETSI IPR Policy in turn states that ETSI should seek from an IPR owner

that discloses a patent to ETSI:

an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on

fair, reasonable and non-discriminatory (“FRAND”) terms and conditions under such IPR

to at least the following extent:

 MANUFACTURE, including the right to make or have made customized

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 7 of 15
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

-4- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

components and sub-systems to the licensee's own design for use in

MANUFACTURE;

 sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED;

 repair, use, or operate EQUIPMENT; and

 use METHODS.

The above undertaking may be made subject to the condition that those who seek licences

agree to reciprocate.

“MANUFACTURE” is defined in the ETSI IPR Policy to mean production of

EQUIPMENT.

“EQUIPMENT” is, in turn, defined in the ETSI IPR Policy to mean any system, or device

fully conforming to a STANDARD.

Nokia’s understanding of the ETSI IPR Policy is that the commitment to License on

FRAND terms is given for the activities identified in Section 6.1 in relation to EQUIPMENT as

that term is defined in the ETSI IPR Policy, and that such EQUIPMENT must be a system or

device that fully conforms to a Standard. All of the licensing commitments that Nokia has

provided to ETSI have been made with this understanding of the ETSI IPR Policy.

One of the requirements expressly imposed by both 3GPP and 3GPP2 on Organizational

Partners that want to be involved in 3GPP and 3GPP2 standardization is that each Organizational

Partner must have “an . . . IPR Policy which is compatible with those of the Organizational

Partners.” The ATIS IPR Policy states that licenses must be made available “for the purpose of

implementing the [relevant ATIS] standard” and the TIA IPR Policy states that licenses must be

made available “to the extent necessary for the practice of the TIA publication” (FTC Ex. 2 at 10

(ATIS Operating Procedures); (FTC Ex. 39 at 87 (2002 TIA Eng’g Manual)).3 Since the IPR

policies of ATIS and TIA must be compatible with the ETSI IPR Policy, they should not be

3 The TIA IPR Policy was amended in 2005, but the changes are not relevant to the

considerations set forth within this amicus curiae brief (see Dkt. No. 872-3 at 5).

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 8 of 15
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

-5- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

interpreted to impose materially different obligations.4

Nokia is not aware of prior positions being taken over the years that the IPR Policies of

ATIS or TIA are incompatible or materially different than ETSI IPR’s Policy, under which

licensing at the end user product level (rather than at the component level) has been the

longstanding expectation and industry norm. The argument being made now that the ATIS and

TIA IPR policies unambiguously impose an incompatible requirement to license at the component

level is, therefore, novel. This situation is different from the relatively recent changes made to the

IEEE’s IPR Policy, which, as amended, imposed new constraints on how SEP owners in that

context would be required to license their SEPs under the RAND commitments made to IEEE,

including a requirement to license at the component level. Although IEEE is not a 3GPP or

3GPP2 Organizational Partner, given IEEE’s collaboration and overlapping work with ETSI at

that time, ETSI deliberated about the impact of the changes made to IEEE’s IPR Policy and,

thereafter, expressly concluded that IEEE’s IPR Policy as amended was incompatible with ETSI’s

IPR Policy (Qualcomm Opp. Ex. 27 at 93:4-94:11, 103:16-105:18). However, no similar express

changes have been made to the ATIS or TIA IPR Policies.

B. The Industry Practice Has Been to License at the End User Product Level.

In addition to running afoul of the actual text of the relevant IPR policies, any suggestion

that licensing for cellular SEPs must occur at the component level is inconsistent with

longstanding industry practice.5 The consistent course of conduct of the industry, including Nokia

4 Nokia agrees with the positions set forth in Qualcomm’s Opposition regarding the textual

interpretation of the ATIS and TIA IPR Policies (see id. 872-3 at 4-5).

5

See, e.g., In re Certain Electronics Devices, Commission Opinion, Inv. No. 337-TA-794, at

n. 19 (Int’l Trade Commission July 5, 2013) (“[T]he record supports a conclusion that a common

industry practice is to use the end user device as a royalty base.”); Unwired Planet Int’l Ltd. v.

Huawei Techs. Co., [2017] EWHC 711 (Pat.) (May 4, 2017) (“The royalty base is the sum to which

the percentage is applied to give the royalty due. It will largely correspond to the price paid for

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 9 of 15
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

-6- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

(as both licensor and licensee), since adoption of the ETSI IPR Policy has been to license at the

end user product level. In Nokia’s view, as expressed to the FTC during its initial investigation,

licensing at the end user product level is the most efficient manner in which to license cellular

SEPs, and as a result, has been and continues to be common industry practice. It is the level

chosen by SEP holders and patent pools alike. And the industry has long recognized that licensing

goods and the definition is largely agreed in the draft contract as something called ‘Selling Price’

for ‘End User Devices’ (i.e. handsets) and ‘Infrastructure Revenue’ for infrastructure.”); Ericsson,

Inc. v. D-Link, Sys., Inc., 773 F.3d 1201, 1227 (Fed. Cir. 2014) (discussing licenses in which

royalties were based on the price of the end user product rather than the price of a component);

Jonathan D. Putnam & Tim A. Williams, The Smallest Salable Patent-Practicing Unit (SSPPU):

Theory and Evidence 35 (2016) (concluding, based on publicly available information regarding

more than two dozen licenses, that in the “vast majority of cases, we can rule out the use of a

component or combination of components as the metering device; in no case can we confirm such

use.”); David Teece & E.F. Sherry, On the “Smallest Saleable Patent Practicing Unit” Doctrine:

An Economic and Public Policy Analysis (2016) (“In the cellular communications industry, it is

common practice to license at the device level (cellphones and base stations), rather than at either

the chipset or cellular service provider levels.”); Keith Mallinson, Busting Smartphone Patent

Licensing Myths, CENTER FOR THE PROTECTION OF INTELLECTUAL PROPERTY, GEORGE MASON

UNIVERSITY SCHOOL OF LAW 4 (September 2015) (“Virtually every IP rightholder in the cellular

communications industry that publicly reveals information about its licensing requirements,

including EU companies (Alcatel-Lucent, Ericsson, Nokia, Siemens), North American companies

(InterDigital, Motorola, Nortel, Qualcomm), and Chinese companies (Huawei, ZTE), has

publicly stated in recent years that its mobile standard-essential patent (SEP) licensing rates

are based on a percentage of the entire handset price, as illustrated with LTE. Samsung, the largest

company in South Korea, justified a licensing offer for its 3G standard-essential patents in recent

litigation with Apple in the U.S. International Trade Commission on the basis that royalties

calculated on the price of the end user product are consistent with industry practice. Licensing on

this basis is a long-standing practice and was widely recognized since the introduction of 2G GSM,

as noted by the International Telecommunications Standards User Group in 1998 and in 2G and

3G standards by several other observers including PA Consulting Group (2005), Credit Suisse First

Boston (2005), and ABI Research (2007). European antitrust authorities and the U.S. courts also

endorse this approach. The Chinese courts used this royalty base for determining a royalty rate in

the Huawei-InterDigital case.”); Erik Stasik, Royalty Rates and Licensing Strategies for Essential

Patents on LTE (4G) Telecommunications Standards, LES NOUVELLES 114-119 (September 2010)

(finding that every publicly announced 4G licensing rate was expressed as a percentage of the sales

price of the end user product, including rates announced by Huawei, Ericsson, and Nokia); see also

Devlin Hartline, Letter to Antitrust Chief Applauds DOJ’s New Evidence-Based Approach to IP

Enforcement, CENTER FOR THE PROTECTION OF INTELLECTUAL PROPERTY, GEORGE MASON

UNIVERSITY SCHOOL OF LAW (Feb. 13, 2018), available at https://cpip.gmu.edu/2018/02/13/letterto-antitrust-chief-applauds-dojs-new-evidence-based-approach-to-ip-enforcement/.

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 10 of 15
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

-7- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

should occur at the end user product level. For example, the UMTS IPR Association, with over 40

industry participants, expressed its view on the topic in 2000:

The royalty “collection point” shall be the last manufacturer in the manufacturing “chain.”

This means that chip and subsystem manufacturers shall be indemnified for sales made to

Licensees of certified Essential Patents who are the last manufacturers in the “chain.”

Licensees shall not include those manufacturers of component products which are

incorporated into final assembled products for which royalties are paid to their respective

Licensor(s).6

Concluding a single license with one company at the end user product level, allows SEP

holders like Nokia to avoid the transaction costs and complexities involved in negotiating and

executing multiple licenses at multiple points in the supply chain. The end user product approach

also speeds up the entire supply chain’s access to the licensed SEPs.7It also provides visibility to

what products are licensed and avoids potentially overlapping and duplicative licensing at

different levels of the supply chain. Additionally, end user product licensing avoids complications

that may arise with respect to patent exhaustion claims. If licenses were now to be required at the

component level under the ATIS and TIA IPR Policies, potential or existing licensees of relevant

SEPs under those policies could argue in license negotiations that certain cellular SEP owners

would have to splinter their portfolios and license subsets of their relevant SEP claims to different

component suppliers at each level in the value chain. And thereafter, that alleged patent

exhaustion or implied rights would alleviate any need for a license to other SEP claims at their

point in the value chain. Moreover, specific components may be used beyond a given standard

6

3G Patent Platform for 3G Mobile Communication Systems – Definition, Function,

Structure, Operation, Governance, UMTS IPR ASSOCIATION, Section 8.2.6 (June 15, 2000),

available at http://www.atis.org/gsc/gsc-5/ipr-03.pdf.

7

In fact, amici curiae ACT | The App Association and Computer & Communications

Industry Association (“ACT”) acknowledge that there are important reasons to license at the end

user product level (Dkt. No. 864 at 4 (“Amici recognize and respect that ‘downstream’ companies

may, in some cases, seek to obtain their own SEP license. There can be many reasons for this,

such as a preference to negotiate terms directly or to maintain an ability to use multiple suppliers

regardless of their individual license status.”)).

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 11 of 15
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

-8- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

and standards development organization (“SDO”) IPR Policy for which the SEP holder made a

FRAND commitment (and would normally limit its license to). Under such circumstances, if the

requirement were to license applicable SEP claims under a given SDO IPR Policy at the

component level, then additional SEP claims may be argued to be exhausted or impliedly licensed

at other points in the supply chain such as the end product level.

Accordingly, Nokia’s long-standing practice in its own FRAND SEP licensing program

has been and continues to be to enter into license agreements with the companies that sell the end

user products, and not with the component vendors. Under this program, the entire product

resulting from the supply chain is covered by the SEP license, and the component manufacturers

(and other members of the chain) have access to any SEPs they might require through the “have

made” rights granted to the sellers of the end user products without requiring the negotiation and

transaction costs associated with separate, as well as the complexities of potentially overlapping or

duplicative, licenses. This also gives the end user product manufacturer the opportunity to

negotiate the licenses, along with the freedom to choose its component suppliers—rather than

perhaps being tied only to certain suppliers because of an interpretation requiring certain licenses

to be granted at the component level. Nokia’s approach is aligned with other industry participants’

practices, and in Nokia’s view, is the most efficient manner of properly fulfilling the licensing

commitments made to international standards development organizations to make SEPs available

on FRAND terms.8

8 Amici ACT conceded that companies licensing SEP's have “chosen to focus their licensing

programs at the OEM level” (Dkt. No. 864 at 9, n. 15). ACT contends that this parol evidence is

unnecessary or should be ignored but, to the contrary, this consistent industry practice

demonstrated a course of conduct and is evidence of how industry players have interpreted the

underlying Organizational Partners’ IPR Policies.

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 12 of 15
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

-9- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

II. Licensing Obligations Across 3GPP and 3GPP2 Organizational Partners Should

Be Consistent.

A. Incompatible Licensing Obligations Would Create a Patchwork of

Confusing Requirements.

As noted above, 3GPP and 3GPP2 are collaborative partnerships of Organizational Partner

standards development organizations, including ATIS and TIA, which involve market participants

across the world. ATIS is the U.S. partner for 3GPP, and TIA is the U.S. partner for 3GPP2. The

goal of these international partnerships is to develop technical specifications that can be used

around the world in the global economy. These international standards, once established, are then

adopted in various countries and regions around the world by the respective Organizational

Partners, like ATIS and TIA, and each Organizational Partner adopts an IPR Policy governing

(F)RAND licensing commitments which are mandated to be consistent by 3GPP and 3GPP2.9

Divergent interpretations of the ATIS and TIA IPR Policies on one hand, and the ETSI

IPR Policy on the other, would result in conflicting license obligations across various jurisdictions,

and even among SEP owners depending on the member organizations through which they have

participated in 3GPP and 3GPP2. To be sure, the supply chain for products implementing cellular

standards, along with end user sales, reaches across many jurisdictions, and SEP holders are

located all over the world. If there are inconsistent interpretations of licensing obligations vis-àvis components versus end user products, which vary based upon the governing Organizational

Partner’s IPR Policy and the specific jurisdiction, the end result will, at a minimum, be wide scale

confusion, higher transaction costs, and uncertainty.10 And these kinds of results can produce

9 To the extent consistency is required, the FTC does not appear to view the ATIS and TIA

IPR Policies as consistent with the ETSI IPR Policy, as the FTC has not moved on the basis that

the ETSI IPR Policy unambiguously requires component-level licensing.

10 In its November 2017 guidelines on SEP licensing, the European Commission expressly

recognized the potential value and efficiencies in global, portfolio licensing of SEPs, which of

course would require consistent obligations across jurisdictions for a given standard (see

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 13 of 15
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

-10- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

lower participation in standards-related activities, fewer licensing commitments, and slower work

streams for standards development and standards implementation worldwide, especially for new

and complex technologies. Maintaining consistency across interpretations, in contrast,

incentivizes contributions and continued development of standardized technologies, reduction in

transaction costs, and fewer potential disputes over claims of patent exhaustion or implied rights,

as well as prevents confusion for both licensors and licensees (Nokia, of course, being both).

III. SEP Licensing in the Telecommunications Industry Has Led to Tremendous

Success with New Entrants and Huge Benefits for Consumers.

In its current form, SEP licensing in the wireless telecommunications industry has been

highly successful. There are numerous examples of new implementers having entered the

marketplace, some of which have even grown to be industry leaders in a relatively short period of

time. Bilateral negotiations have led to hundreds of cellular SEP licenses, resulting in widespread

implementation of the cellular standards. Such implementation has also conferred great benefits

on consumers across the world, who now have greater access to new technologies.

Novel interpretations of certain SDO IPR Policies that would impose specific licensing

models on certain SEP owners in certain jurisdictions, however, would have the real potential to

put in jeopardy the continued success of standards development and related SEP licensing. The

current industry-wide approach minimizes complexities, while maintaining efficiencies. The

complications that would likely arise from inconsistent licensing obligations advocated for in the

FTC’s Motion for Partial Summary Judgment could unravel the success of SEP licensing and

standards development that have been achieved to date, rather than incentivizing continued

participation in open standards-setting and development, which make innovation more widely

Communication from the Commission to the European Parliament, the Council and the European

Economic and Social Committee, Setting out the EU Approach to Standard Essential Patents,

COM(2017) 712 (Nov. 29, 2017)).

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 14 of 15
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

-11- Case No. 5:17-cv-00220-LHK-NMC

AMICUS CURIAE BRIEF

available to consumers.

CONCLUSION

For the reasons set forth above, amicus urges this Court to deny the FTC’s Motion for

Partial Summary Judgment to the extent the Motion seeks to interpret the ATIS and TIA IPR

polices as requiring licensing of cellular SEPs at the component level, rather than at the end user

product level. Industry practice has never interpreted the Organizational Partners’ IPR Policies—

including the ATIS and TIA IPR Policies—as mandating licensing at the component level for

3GPP and 3GPP2 standards. Such an interpretation—which would render the ATIS and TIA IPR

Policies inconsistent with the ETSI IPR Policy—would create significant complications for

licensing standardized technologies and risk the continued success of standards development and

related SEP licensing in its current beneficial form.

Respectfully submitted,

Date: October 3, 2018 /s/ Ryan W. Koppelman

Ryan W. Koppelman

CA Bar No. 290704

ryan.koppelman@alston.com

ALSTON & BIRD LLP

1950 University Avenue

5th Floor

East Palo Alto, CA 94303-2282

Phone: 650.838.2000

Fax: 650.838.2001

ATTORNEY FOR AMICUS CURIAE NOKIA

TECHNOLOGIES OY

Case 5:17-cv-00220-LHK Document 888-1 Filed 10/03/18 Page 15 of 15