Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 1 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 1 of 10
`Case 3:15-cv-02787-WHO Document 183-1 Filed 09/25/17 Page 2 of 184
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`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
`
`Cage Number: 3:16-cv-2787—WHO
`
`REQUEST TO THE CENTRAL
`AUTHORITY IN FINLAND FOR
`INTERNATIONAL JUDICIAL
`ASSISTANCE PURSUANT TO THE
`HAGUE CONVENTION OF 18 MARCH
`1970 ON THE TAKING OF EVIDENCE
`ABROAD IN CIVIL OR COMMERCIAL
`MATTERS
`
`I I I I I I I I I I I I I
`
`) I I I I I I I I I
`
`) I I
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`HUAWEI DEVICE USA, INC., and
`HUAWEI TECHNOLOGIES USA, INC,
`
`Plaintiff(s)/Counterclaim
`Defendants,
`
`VS.
`
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants / Counterclaim—
`Plaintiffs,
`
`and
`
`SAMSUNG RESEARCH AMERICA, INC.,
`
`Defendant,
`
`V.
`
`HISILICON TECHNOLOGIES CO., LTD.,
`
`Counterclaim-Defendant.
`
`—_—_J
`
`fhueby certify mu the annexed
`‘hsu'umcnl is a true and correci cgpy
`Mme original on file in my other
`ATTEST:
`SUSAN Y. SOONG
`C‘Icrk. US. District Conn
`Northern
`'sln'cl of‘inifomu
`I 5““-
`By
`7‘4
`47."
`
`
`
`
`REQUEST TO THE CENTRAL AUTHORITY IN FINLAND
`
`

`

`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 2 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 2 of 10
`Case 3:16-cv—02787-WHO Document 183—1 Filed 09/25/17 Page 3 of 184
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`THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`
`CALIFORNIA requests international assistance to compel Nokia Corporation and Nokia
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`Technologies OY (collectively, “Nokia”) to give evidence to be used in a civil proceeding before
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`this Court in the above-captioned matter.
`
`I.
`
`APPLICANT — REQUESTING JUDICIAL AUTHORITY
`
`The Honorable William H. Orriek
`
`United States District Judge
`United States District Court for the Northern District of California
`450 Golden Gate Avenue
`
`San Francisco, CA 94102
`
`II.
`
`CENTRAL AUTHORITY OF THE REQUESTED STATE
`
`Street Address:
`
`Ministry of Justice
`Etelfiesplanadi
`10 FIN-00130
`
`Helsinki FINLAND
`
`Postal Address:
`PL 25
`
`00023 VALTIONEUVOSTO
`FINLAND
`
`‘
`
`III.
`
`PERSON TO WHOM THE EXECUTED REQUEST IS TO BE RETURNED
`
`Nathan A. Greenblatt, Esquire
`Sidley Austin LLP
`1001 Page Mill Road, Bldg. 1
`Palo Alto, CA 94304
`
`IV.
`
`SPECIFICATION OF THE DATE BY WHICH THE REQUESTING
`AUTHORITY REQUIRES RECEIPT OF THE RESPONSE TO THE LETTER 0
`REQUEST
`
`As soon as practicable.
`
`\OOOQONUIAUJNH
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`NNNNNNNNNF—‘I—‘I—‘D—‘h—fir—lI—ly—lt—Iy—IOOQQM-§UJNHO\DOO\IO\M-§WN~O
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`REQUEST TO THE CENTRAIL AUTHORITY IN FINLAND
`
`

`

`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 3 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 3 of 10
`Case 3:16—cv—02787—WHO Document 183—1 Filed 09/2511? Page 4 of 184
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`V.
`
`NAMES AND ADDRESSES OF THE PARTIES AND THEIR
`REPRESENTATIVES
`
`A. Plaintiffs and Representatives:
`
`Plaintiffs:
`
`Huawei Technologies Co., Ltd.
`Huawei Device USA, Inc.
`
`Huawei Technologies USA, Inc.
`HiSilicon Technologies Co., Ltd. (counterclaim—defendant)
`
`Represented bv:
`
`David T. Pritikin, Esquire
`David C. Giardina, Esquire
`Douglas 1. Lewis, Esquire
`John W. McBride Esquire
`Sidley Austin LLP
`One South Dearborn
`
`Chicago, Illinois 60603
`
`Michael J. Bettinger, Esquire
`Irene Yang, Esquire
`Sidley Austin LLP
`555 California Street, Suite 2000
`
`San Francisco, California 94104
`
`Nathan A. Greenblatt, Esquire
`Sidley Austin LLP
`1001 Page Mill Road, Bldg. 1
`Paio Alto, CA 94304
`
`B. Defendants and Representatives:
`
`Maris:
`
`Samsung Electronics Co.. Ltd.
`Samsung Electronics America. Inc.
`Samsung Research America, Inc.
`
`Represented by:
`
`Charles K. Verhoeven. Esquire
`David A. Perlson, Esquire
`Quinn Emanuel Urquhart & Sullivan. LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`REQUEST TO ms CENTRAL AUTHORITY IN FINLAND
`
`

`

`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 4 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 4 of 10
`Case 3:16-cv-02787-WHO Document 183-1 Filed 09/25/17 Page 5 of 184
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`\OOOxJQUI-bWNt—I
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`NNNNNNNNNH_.—_.._.._.._.._.._._.mfloxm-kLHN—IOKOOOQONUIAUJN—O
`
`Kevin RB. Johnson, Esquire
`Victoria F. Maroulis, Esquire
`Quinn Emanuel Urquhart & Sullivan, LLP
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, CA 94065
`
`VI.
`
`NATURE AND SUMMARY OF THE PROCEEDINGS
`
`The pending action Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et
`
`al (Case No. 3:16-cv-02787-WHO) is a civil lawsuit between Plaintiffs and Counterclaim-
`
`Defendants Huawei Technologies Co., Ltd., Huawei Device USA, Inc., Huawei Technologies USA,
`
`Inc., and HiSilicon Technologies Co., Ltd. (collectively, “Huawei”) and Defendants and
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`Counterclaim-Plaintiffs Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Samsung Research America, Inc. (collectively, “Samsung”) in the United States District Court for
`
`the Northern District of California. This action began on May 24, 2016 and was assigned to The
`
`Honorable William H. Orrick. Huawei and Samsung both allege patent infringement and the breach
`
`of a contractual obligation to grant licenses to their patent portfolios.
`
`In its complaint, Huawei alleged that Samsung breached its obligations to grant Huawei a
`
`license on fair, reasonable, and non-discriminatory (“FRAND”) terms and conditions. Huawei also
`
`sought a declaratoryjudgment setting the respective FRAND terms and conditions for both
`
`companies’ standard-essential patents (“SEPs”). In addition, Huawei alleged that Samsung infringes
`
`eleven of its patents: U.S. Patent Nos. 8,369,278; 8,416,892; 8,483,166; 8,812,848; 8,644,239;
`
`8,885,587; 8,885,583; 8,639,246; 8,412,197; 8,996,003; and 8,724,613. The Samsung products that
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`Huawei accuses of infringement are mobile phones that are compliant with the Long-Term
`
`Evolution (“LTE”) standard.
`
`In Samsung’s answer and counterclaims to Huawei’s complaint, Samsung alleged that
`
`Huawei breached its FRAND obligations to grant Samsung a license on FRAND terms and
`
`conditions. Samsung further alleged that Huawei violated United States antitrust laws by breaching
`
`its FRAND obligations and by improperly pressuring Samsung to take a license. In addition,
`
`Samsung alleged that Huawei infringes nine of its patents: U.S. Patent Nos. 8,228,827; 8,315,195;
`
`RE44,105; 8,457,588; 8,509,350; 9,113,419; 8,619,726; 8,761,130; and 9,288,825. The Huawei
`
`REQUEST To THE CENTRA3L AUTHORITY IN FINLAND
`
`

`

`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 5 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 5 of 10
`Case 3:16-cv—02787-WHO Document 183-1 Filed 09/25/17 Page 6 of 184
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`products that Samsung accuses of infringement are mobile phones that allegedly are compliant with
`
`the LTE standard.
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`Both Huawei and Samsung deny that they have breached their obligations to grant a license
`
`on FRAND terms and conditions. Huawei denies that it has violated United States antitrust laws.
`
`Both Huawei and Samsung deny that they infringe the patents asserted against them and contend tha
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`the patents asserted against them are invalid. Under United States law, a patent can be proved
`
`invalid in a civil lawsuit if prior art exists that anticipates the patented claims or renders the patented
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`claims obvious. Huawei has alleged that certain asserted Samsung patents are invalid due to prior
`
`art originally assigned to, and still owned by, Nokia. The named inventors on the prior art were
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`employees of Nokia at the time of the invention, and still remain employees of Nokia today.
`
`In the pending action, a claim construction hearing was held on August 18, 2017. Fact
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`discovery is expected to close in December 2017. Trial is currently scheduled to begin on
`
`September 17, 2018.
`
`VII.
`
`EVIDENCE TO BE OBTAINED
`
`Huawei seeks to obtain documents from Nokia. It is also respectfully requested that the
`
`attorneys for Huawei be permitted to question the witnesses listed in Part XI below regarding the
`
`subject matter described in Part XII, and that answers to those questions be recorded by a court
`
`reporter. The purpose of preparing deposition transcripts of the witnesses listed in Part X1 is to
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`enable use of the deposition testimony of the witnesses at trial in the pending action, if the witness is
`
`unavailable to attend trial and if the other requirements of US. Federal Rule of Civil Procedure 32
`
`are met. To ease the burden on witnesses, it is respectfully requested that Nokia and/or the
`
`individuals listed in Part XI assist in selecting the two most knowledgeable witnesses for initial
`
`examination, and that further examinations be scheduled thereafter, if necessary, as requested by
`
`representatives for the parties.
`
`It is additionally requested that the Competent Authority of Finland compel Nokia
`
`Corporation and Nokia Technologies OY to make available at least one of the individuals listed in
`
`\OOO-slmU'I-PUJNH
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`NNNNNNNNND—‘fi—‘I—‘HHb—OHHHI—iOO\IO\Lh-P-WNt—O\OOO\IO\U\-I>UJNHO
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`REQUEST To THE CENTRA4l. AUTHORITY IN FINLAND
`
`

`

`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 6 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 6 of 10
`Case 3:16-cv-02787-WHO Document 183—1 Filed 09/25/17 Page 7 of 184
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`Part XI to testify on behalf of Nokia Corporation and Nokia Technologies OY regarding the
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`deposition topics set forth in Exhibit B.
`
`VIII. PURPOSE OF THE EVIDENCE
`
`Samsung alleges that Huawei infringes nine of its patents, one of which is US. Patent
`
`No. 8,228,827. On January 20, 2017, Huawei disclosed invalidating prior art to Samsung’s US.
`
`Patent No. 8,228,827. One such prior art reference is US. Patent No. 8,897,276, titled “Collision
`
`Detection for Random Access Procedure,” and issued on November 25, 2014 (“the ‘276 Patent”).
`
`The ‘276 Patent was originally assigned to Nokia Corporation and is now assigned to Nokia
`
`Technologies OY. The named inventors of the ‘276 Patent are Karri Ranta-Aho, Harri Holma,
`
`Jeroen Wigard, Antti Toskala, and Juho Pirskanen. The ‘276 Patent has a priority date of January
`
`25, 2007. At the time that Huawei disclosed the‘276 Patent to Samsung, Samsung asserted that the
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`conception date of US. Patent No. 8,228,827 was January 26, 2007.
`
`On March 13, 2017, Samsung filed a motion that sought to change the alleged conception
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`date of US. Patent No. 8,228,827 from January 26, 2007 to January 22, 2007. On April 27, 2017,
`
`Samsung’s motion was granted. As a result, the ‘276 Patent potentially lost its status as prior art
`
`under 35 United States Code § 102(e).
`
`The discovery that Huawei now requests from Nokia seeks to determine if the ’276 Patent
`
`qualifies as a prior art reference under a different section of the United States Patent laws, 35 United
`
`States Code § 102(g). The requested discovery seeks to determine whether the inventions disclosed
`
`in Nokia’s ’276 Patent were invented prior to January 22, 2007, and otherwise qualify as prior art to
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`Samsung’s US. Patent No. 8,228,827 pursuant to the requirements of 35 United States Code
`
`§ 102(g).
`
`
`
`REQUEST TO THE CENTRASL AUTHORITY IN FINLAND
`
`AWN
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`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 7 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 7 of 10
`Case 3:16—cv-02787—WHO Document 183—1 Filed 09/25/17 Page 8 of 184
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`IX.
`
`ENTITY FROM WHOM DOCUMENTARY EVIDENCE IS REQUESTED
`
`Nokia Corporation
`Karaportti 3
`Espoo, Fl-02610
`Finland
`
`Nokia Technologies OY
`Karaportti 3
`Espoo, FI-02610
`Finland
`
`X.
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`STATEMENT OF THE SUBJECT MATTER OF THIS DOCUMENTARY
`
`REQUEST
`
`See Exhibit A for a list ofdocument requests.
`
`XI.
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`IDENTITY AND ADDRESS OF THE WITNESSES TO BE ORALLY EXAMINE
`
`Karri Ranta-Aho
`
`Karaportti 3
`Espoo, FI-02610
`Finland
`
`Harri Holma
`
`Karaportti 3
`Espoo, F1—026 l 0
`Finland
`
`Anrti Toskala
`
`Karaportti 3
`Espoo, FI—026I 0
`Finland
`
`Juho Pirskanen
`
`Karaportti 3
`ESpoo, FI—02610
`Finland
`
`XII.
`
`STATEMENT OF THE SUBJECT MATTER ABOUT WHICH THEY ARE TO
`BE EXAMIN ED
`
`See Exhibit C for a statement of examination subject matter.
`
`XIII. SPECIAL METHODS OR PROCEDURES TO BE FOLLOWED
`
`A. This Court respectfully requests that the Competent Authority of Finland cause the
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`appropriate order to issue requiring and directing the above-listed individuals to
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`REQUEST To THE CENTRAéL AUTHORITY IN FINLAND
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`

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`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 8 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 8 of 10
`Case 3:16-cv-02787-WHO Document 183-1 Filed 09/25/17 Page 9 of 184
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`provide testimony under penalty of perjury upon their oath or affirmation that they
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`will tell the truth. In the event this procedure cannot be used, this Court respectfully
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`requests that the Competent Authority of Finland require the witnesses to provide
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`testimony after being instructed of the consequences for giving knowingly false or
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`untruthful testimony under the laws of Finland.
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`. The above-listed individuals may refuse to provide testimony and to answer any
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`question propounded by a representative of the parties if their answer thereto (1)
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`would subject them to a real and appreciable danger of criminal liability in the United
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`States, (2) would disclose the substance of a privileged communication between them
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`and their attorneys, or (3) is protected from disclosure under any applicable privilege,
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`protection or immunity under the laws of Finland.
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`C. This Court respectfully requests the Competent Authority of Finland to permit:
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`i.
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`the parties’ representatives or their designees and a stenographer to be presen
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`via video link or otherwise, during the examination;
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`ii.
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`the examination of the individual witnesses to be conducted by representative
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`for the parties;
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`iii.
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`the examination to be conducted with representatives for Huawei asking
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`questions first, followed by any questions on the same subject matter by
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`representatives for Samsung (if necessary);
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`iv.
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`the representatives for the parties who conduct the examination to show each
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`witness documents and materials exchanged between the parties prior to the
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`examination in the course of the legal proceedings; and
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`v.
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`the testimony to be recorded verbatim by a stenographer and/or videographer
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`retained and paid for by the parties, and thereafter authenticated by seal or in
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`such other manner as is customary in the jurisdiction in which the witnesses
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`are examined.
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`REQUEST To THE CENTRA7L AUTHORITY IN FINLAND
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`AWN
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`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 9 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 9 of 10
`Case 3:16—cv-02787-WHO Document 183-1 Filed 09/25/17 Page 10 of 184
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`XIV. SPECIFIC REQUESTS
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`A. It is requested that should any portion of this request be denied, on legal grounds, that
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`such denial not affect the remainder of this request. In accordance with Article 13 of
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`the Hague Convention No. 20, it is further requested that the above-designated
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`representative, and this Court, be immediately informed of any such refusal and the
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`associated legal grounds.
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`B.
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`It is requested that the judicial authorities of Finland issue an order for the requested
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`documents (attached as Exhibit A) to be produced as quickly as possible.
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`C. In accordance with Article 9 of Hague Convention No. 20, it is requested that the
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`appropriate authority in Finland provide to this Court and the representatives for the
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`parties, as soon as convenient, all information regarding decisions made relating to
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`the acquisition of evidence from Nokia.
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`D. It is requested that any documents and evidence produced be properly sealed and
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`authenticated by the appropriate authority for, and in accordance with the laws of,
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`Finland and returned to this Court for examination and use in this case.
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`B. The fees and costs incurred which are reimbursable under the second paragraph of
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`Article 14 or under Article 26 of the Convention will be borne by the parties, as they
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`may agree or as may be ordered by this Court.
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`\OOO\JO\U\-l§UJNt—I
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`NNNNNNNNN—Ih—In—Ih—nr—Av—Ih—Ib—H—tOOQQM-fimNF—‘owOOQQM-bWNi—‘O
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`REQUEST TO THE CENTRAé. AUTHORITY IN FINLAND
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`

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`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 10 of 10
`Case 3:16-cv-02787-WHO Document 191 Filed 10/03/17 Page 10 of 10
`Case 3:16-cv—02787—WHO Document 183—1 Filed 09/25/17 Page 11 of 184
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`WITNESS, the Honorable William H Orrick, United States District Judge ofthe United
`r4
`States District Court for the Northern District of California, on this ‘ day ofL 2017.
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`Re pectfu 1y submitted,
`
`__
`
`L1,
`
`Hon. William H. Orrick
`
`United States District Court Judge
`
`1
`2
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`4
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`6
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`7
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`9
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`[SEAL]
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`14
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`In testimony whereof I sign my 11211}me andaffix the seal of
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`this Court, on this3 L‘i day of
`g
`(7:1 ’15
`t
`,2017.
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`
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`REQUEST To THE CENTRAQL AUTHORITY IN FINLAND
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`