Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 1 of 16 PageID #: 2042
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`NOKIA TECHNOLOGIES OY,
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`Plaintiff,
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`v.
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`HP, INC.,
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`Civil Action No. 23-cv-1237-GBW
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
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`Defendant.
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`PLAINTIFF NOKIA TECHNOLOGIES OY’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION TO DISMISS DEFENDANT/COUNTERCLAIMANT HP, INC.’S
`COUNTERCLAIMS
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`Dated: February 29, 2024
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`MCKOOL SMITH, P.C.
`
`Warren H. Lipschitz (admitted pro hac vice)
`Alexandra F. Easley (admitted pro hac vice)
`300 Crescent Ct. Ste. 1200
`Dallas, TX 75224
`Tel.: (214) 978-4000
`wlipschitz@mckoolsmith.com
`aeasley@mckoolsmith.com
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`R. Mitch Verboncoeur (admitted pro hac
`vice)
`303 Colorado St Suite 2100
`Austin, TX 78701
`Tel.: (512) 692-8700
`mverboncoeur@mckoolsmith.com
`J
`osh Newcomer (admitted pro hac vice)
`600 Travis St., Suite 7000
`Houston, Texas 77002
`Tel.: (713) 485-7300
`jnewcomer@mckoolsmith.com
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`Kevin Burgess (admitted pro hac vice)
`104 East Houston St., Suite 300
`Marshall, Texas 75670
`Tel.: (903) 923-9000
`kburgess@mckoolsmith.com
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`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan ( Bar No. 5165)
`FARNAN LLP
`919 N. Market St. 12th Floor
`Wilmington DE 19801
`Tel.: (302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`ALSTON & BIRD LLP
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`Theodore Stevenson, III (admitted pro hac
`vice)
`2200 Ross Ave. #2300
`Dallas, TX 75201
`Tel.: (214) 922-3400
`ted.stevenson@alston.com
`
`John D. Haynes (admitted pro hac vice)
`Nicholas T. Tsui (admitted pro hac vice)
`Shawn Gannon (admitted pro hac vice)
`1201 West Peachtree Street
`Atlanta, GA 30309
`Tel.: (404) 881-7000
`john.haynes@alston.com
`nick.tsui@alston.com
`shawn.gannon@alston.com
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`Attorneys for Plaintiff
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`

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`Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 2 of 16 PageID #: 2043
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`I. 
`II. 
`A. 
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`B. 
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`TABLE OF CONTENTS
`Introduction ..................................................................................................................... 1 
`Argument ........................................................................................................................ 1 
`HP Failed to Plead Essentiality of the Implicated Patent Claims, Which is a Necessary
`Element of All Seven Counterclaims. (Counts I–VII.) ................................................... 1 
`HP’s Counterclaims Fail for Additional, Claim-Specific Reasons ................................. 6 
`1. Nokia did not breach its ITU-T commitments by seeking injunctions. (Count II.) ... 6 
`2. HP’s unenforceability counterclaim is unsupported by the law. (Count III.) ............ 6 
`3. HP’s antitrust claim fails to plead necessary facts. (Count IV.) ................................ 8 
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`ii
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`Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 3 of 16 PageID #: 2044
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`TABLE OF AUTHORITIES
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`CASES
`3G Licensing, S.A. v. HTC Corp.,
`C.A. No. 17-cv-83-LPS (D. Del. Oct. 2, 2020), D.I. 489 ..........................................................4
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`Page(s)
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`AG v. Interdigital, Inc.,
`No. 3:23-cv-2, 2023 U.S. Dist. LEXIS 139012 (S.D. Cal. Aug. 8, 2023) .................................5
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`AG v. Interdigital, Inc.,
`No. 3:23-cv-2 (S.D. Cal. Aug. 9, 2023), D.I. 50 ........................................................................5
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`Amneal Pharms. LLC v. Indivior Inc.,
`2017 WL 36371 (E.D. Pa. Jan. 4, 2017) ....................................................................................8
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`Apple Inc. v. Samsung Elecs. Co.,
`2012 WL 1672493 (N.D. Cal. May 14, 2012) .........................................................................10
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`Apple Inc. v. Samsung Elecs. Co.,
`No. 11-CV-01846, 2011 WL 4948567 (N.D. Cal. Oct. 18, 2011) ..................................3, 5, 10
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`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...............................................................................................................8, 9
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`ChriMar Sys. v. Cisco Sys.,
`72 F. Supp. 3d 1012 (N.D. Cal. 2014) .................................................................................9, 10
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`Core Wireless Licensing S.A.R.L. v. Apple Inc.,
`899 F.3d 1356 (Fed. Cir. 2018)..................................................................................................7
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`IBM v. Priceline Grp., Inc.,
`No. 15-cv-137, 2017 WL 1349175 (D. Del. Apr. 10, 2017) .....................................................7
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`Koninklijke KPN N.V. v. Sierra Wireless, Inc.,
`No. 17-cv-90, 2020 WL 1891454 (D. Del. Apr. 16, 2020) .......................................................4
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`Lenovo U.S. v. Interdigital Tech. Corp.,
`No. 20-cv-493, 2021 U.S. Dist. LEXIS 56571 (D. Del. Mar. 24, 2021) .............................9, 10
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`Microsoft Mobile, Inc. v. InterDigital, Inc.,
`No. 15-cv-723, 2016 WL 1464545 (D. Del. Apr. 13, 2016) ...............................................9, 10
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`Qualcomm Inc. v. Broadcom Corp.,
`548 F.3d 1004 (Fed. Cir. 2008)........................................................................................ passim
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`iii
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`Rambus Inc. v. FTC,
`522 F.3d 456 (D.C. Cir. 2008) .............................................................................................9, 10
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`Townshend v. Rockwell Int’l Corp.,
`No. C99-0400SBA, 2000 WL 433505 (N.D. Cal. Mar. 28, 2000) ..........................................10
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`Township of Spring v. Standard Ins. Co.,
`497 F. App’x 211 (3d Cir. 2012) ...............................................................................................6
`OTHER AUTHORITIES
`5 Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 1282
`(4th ed. 2023) .............................................................................................................................1
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`iv
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`I.
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`Introduction
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`HP, Inc. has failed to plead core factual allegations required to support its counterclaims.
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`Faced with that reality, HP now argues that the ability to plead in the alternative somehow allows
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`it to bootstrap another party’s allegations without making allegations of its own. But HP’s
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`arguments, and the concept of pleading in the alternative, do not excuse a failure to plead all facts
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`required to allege necessary elements of a counterclaim. See 5 Charles Alan Wright & Arthur R.
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`Miller, Federal Practice & Procedure § 1282 (4th ed. 2023) (“The right to plead alternatively . . .
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`does not sanction deviations from the basic obligation to plead comprehensibly.”). HP’s opposition
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`fails to identify specific paragraphs of its own counterclaims that resolve the pleading deficiencies
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`Nokia identified in its opening brief. For that reason, HP’s counterclaims should be dismissed.
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`II.
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`Argument
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`A. HP Failed to Plead Essentiality of the Implicated Patent Claims, Which is a
`Necessary Element of All Seven Counterclaims. (Counts I–VII.)
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`Nokia asserted that HP has infringed claims from ten patents relating to the H.264 and
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`H.265 video decoding standards (the “Nokia Asserted Claims”). In its Answer, HP expressly
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`“denies that Nokia has established that any claims of the Asserted Patents are, in fact, essential
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`for compliance with the H.264 and H.265 Standards.” (D.I. 11 at Answer ¶ 1 (emphasis added).)
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`Nowhere does HP cite to a single instance where it either admitted, or affirmatively plead—even
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`in alternative fashion—that any Nokia patent claims are essential. That is fatal to HP’s
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`counterclaims because essentiality is a necessary element of every claim that HP asserted here:
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`First, the three contract-based counterclaims (Counts I–II and V) relate to the ITU-T’s
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`RAND commitment. (D.I. 20 at 8.) But an SEP-holder’s contractual RAND commitment attaches
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`only to the patent claims that are actually essential to the ITU-T standards at issue. (D.I. 19 at 5.)
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`The ITU-T Declaration Form defines “Patent” as “those claims contained in and identified by
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`1
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`patents . . . solely to the extent that any such claims are essential to the implementation of the
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`relevant Recommendation | Deliverable.” (D.I. 11, Counterclaim, Ex. B at Annex 3.) The ITU-T
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`Guidelines similarly clarify that “by submitting [the Declaration Form], the Patent Holder declares
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`its willingness to license its Patents . . . in case part(s) or all of any proposals contained in its
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`Contributions . . . are included in Recommendation(s) and the included part(s) contain items for
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`which Patents have been filed and whose licence would be required to practice or implement
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`Recommendation(s).” (Id. at 6.) HP’s contract-based RAND counterclaims require it to
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`affirmatively plead—as a necessary element—that the Nokia patent claims on which it is
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`predicating its counterclaims (the “Implicated Claims”) are, in fact, essential.
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`Second, HP’s request for declaratory relief (Count VI) is also premised on the essentiality
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`of the Implicated Claims related to the H.264 and H.265 standards: “HP requests a . . .
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`determination of FRAND royalty terms for a license to Nokia’s portfolio of SEPs that are
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`essential to the Asserted Standards.” (Counterclaim ¶ 154 (emphasis added).) This declaratory
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`relief also presupposes—without affirmatively alleging—that Implicated Claims are essential,
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`such that the ITU-T RAND commitment attaches to those claims.
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`Third, HP’s unenforceability counterclaim (Count III), as detailed below, likewise
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`presupposes that Implicated Claims are, in fact, essential. (Counterclaim ¶ 135.)
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`Fourth, essentiality is also a necessary element of HP’s antitrust and fraud-based
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`counterclaims (Counts IV and VII). The Third Circuit ruled in Broadcom Corp. v. Qualcomm Inc.
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`that an “intentionally false promise to license essential proprietary technology on FRAND terms”
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`could be “actionable anticompetitive conduct” where the SDO “reli[ed] on that promise when
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`including the technology in a standard.” 501 F.3d 297, 314 (3d Cir. 2007) (emphasis added).
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`Following Broadcom, courts have recognized that essentiality is a necessary element of this
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`2
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`Section 2 antitrust theory. See Apple Inc. v. Samsung Elecs. Co., No. 11-CV-01846, 2011 WL
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`4948567, at *4 n.6 (N.D. Cal. Oct. 18, 2011) (“If, as Apple alleges, some Samsung patents are not
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`essential to the standard, it will likely be difficult for Apple to establish that Samsung’s conduct
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`has antitrust implications. If the patents at issue are non-essential, then the ‘lock-in’ effect of the
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`standard setting does not exist.”). The same is true for HP’s fraud claim: if the Implicated Claims
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`were not essential to the H.264 or H.265 standards, then HP could not credibly allege any harm
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`from Nokia’s alleged failure to disclose the patents covering the Implicated Claims to the ITU-T
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`in connection with incorporating actually essential technology.
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`Because essentiality is a necessary element for each of HP’s counterclaims, HP has the
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`burden to affirmatively plead essentiality. But, even after being challenged on a motion to dismiss,
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`HP fails to identify a single instance where it has plead that the Implicated Claims, or any Nokia
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`patent claims, are essential. Instead, HP pivots to an argument that it need not “concede” or “prove”
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`essentiality. Although HP is wrong, the issue at the motion to dismiss stage is whether HP has
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`adequately plead the essential elements of its counterclaims. (D.I. 20 at 9–12.) The sole case that
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`HP relies on to suggest that a claimant need not plead essentiality to assert a breach-of-FRAND
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`claim is the district court decision in TCL Commc’ns Tech. Holdings, Ltd. v. Telefonaktenbologet
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`LM Ericsson—a case where the final judgment was overturned on appeal and where the parties
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`consented to have the court determine FRAND license terms. 2014 WL 12588293, at 4 (C.D. Cal.
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`Sept. 30, 2014). However, that case does not support HP’s argument on its pleading requirements.
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`To the contrary, the court in TCL recognized that all necessary elements must be alleged, but it
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`held that “Ericsson represented that its patents are standard essential to ETSI and as such has
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`obligated itself to offering FRAND terms for such patents.” Id. (emphasis added). Put differently,
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`that court held (incorrectly) that the FRAND licensing commitment attached to all patents declared
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`3
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`as potentially essential to the standardized technology, so—under that construction of the FRAND
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`commitment—the plaintiff in TCL met its pleading burden by alleging that the patents had been
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`declared to the SDO. But that is not the law in Delaware. In fact, the District of Delaware rejected
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`the TCL court’s rationale and explicitly held the FRAND commitment does not attach to all
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`declared patents; rather, the FRAND licensing commitment attaches exclusively to essential patent
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`claims. See Koninklijke KPN N.V. v. Sierra Wireless, Inc., No. 17-cv-90, 2020 WL 1891454, at *2
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`(D. Del. Apr. 16, 2020) (Stark, J.) (finding that the ETSI and TIA FRAND commitments “do not
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`bind KPN if its ‘662 patent is not essential”). And, as set forth above, the ITU-T’s RAND licensing
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`requirement similarly attaches only to essential patent claims and not to all declared patents. Under
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`Delaware law (and even the pleading framework set forth in TCL), HP is required to affirmatively
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`plead essentiality (not just an act of declaration that patent claims may become essential) as a
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`necessary element of its RAND-based counterclaims.
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`HP also suggests that it need not allege essentiality because Nokia has contended in its
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`Complaint and during licensing negotiations that Nokia Asserted Claims (which, notably,
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`represent only a small portion of the Implicated Claims in HP’s counterclaims) are essential. (D.I.
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`20 at 10–11.) But HP cannot meet its own pleading burden by merely pointing to Nokia’s positions.
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`The District of Delaware already rejected HP’s argument that a party seeking to enforce a FRAND
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`commitment can rely upon the other party’s representations as to essentiality to satisfy its burden
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`on that necessary element. See 3G Licensing, S.A. v. HTC Corp., C.A. No. 17-cv-83-LPS (D. Del.
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`Oct. 2, 2020), D.I. 489 at 7 (granting summary judgment on defendants’ FRAND defense because
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`“[p]ointing to Plaintiffs’ beliefs on these points . . . is insufficient to meet Defendants’ burden”).
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`HP attempts to distinguish this clear authority by incorrectly asserting that no cases impose
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`such a burden at the pleading stage. That is not so. See, e.g., Apple, 2011 WL 4948567, at *4
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`4
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`(granting motion to dismiss Section 2 antitrust counterclaim for pleading defects). Moreover, a
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`court recently dismissed a breach-of-FRAND claim, and an accompanying request for declaratory
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`relief, at the pleading stage because the plaintiff failed to plead the essentiality of claims in the
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`patents at issue. u-blox AG v. Interdigital, Inc., No. 3:23-cv-2 (S.D. Cal. Aug. 9, 2023), D.I. 50. In
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`its Opposition, HP argues that “the [u-blox] court’s comments [at the motion to dismiss hearing]
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`did not form the basis of its ultimate ruling.” (D.I. 20 at 12 n.8.) That is false. The u-blox court
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`expressly stated in its order on the motion to dismiss:
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`On August 8, 2023, the Court held a hearing on Defendants’ motion to dismiss. []. For
`the reasons stated on the record . . . . Defendants’ motion to dismiss based on breach of
`contract and declaratory judgment for setting FRAND terms and conditions is
`GRANTED with leave to amend. Plaintiffs [may] . . . file their first amended
`complaint, alleging both (1) the conforming products they create and (2) the [SEPs]
`they utilize that are covered by the IPR policy.
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`u-blox AG v. Interdigital, Inc., No. 3:23-cv-2, 2023 U.S. Dist. LEXIS 139012, at *1–2 (S.D. Cal.
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`Aug. 8, 2023) (emphases added). Not only did the u-blox court explicitly adopt the reasoning it
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`articulated in the hearing on the motion to dismiss, the court also made clear that in order to plead
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`a FRAND-based claim, the pleading party must explicitly allege that the patent claims it is putting
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`at issue are both essential and infringed.
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`Finally, HP argues it may both (i) deny essentiality in its Answer while (ii) alleging
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`essentiality in the alternative in its counterclaims. (D.I. 20 at 10 & n.7.) But what HP omits is that
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`it has not affirmatively pled essentiality in its counterclaims. Again, HP points to Nokia’s
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`allegations of essentiality in its Complaint—allegations HP expressly denied—and Nokia’s
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`alleged representations during licensing negotiations. (Id. at 10–11.) As demonstrated above, that
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`is insufficient to satisfy its burden to affirmatively plead a necessary element of its counterclaims.
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`Because HP has failed to plead essentiality—a necessary element of all seven
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`counterclaims—its counterclaims must be dismissed.
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`5
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`B. HP’s Counterclaims Fail for Additional, Claim-Specific Reasons
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`1. Nokia did not breach its ITU-T commitments by seeking injunctions. (Count II.)
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`HP’s Count II asserts a breach of contract counterclaim based generically on Nokia’s acts
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`of asserting its patents and seeking to enjoin unlicensed, infringing use. HP seeks to flip the
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`pleading burden on its head by arguing that the “ITU-T language does not bar” its counterclaim.
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`(D.I. 20 at 13–14.) But HP—not Nokia—bears the burden of pleading a specific contractual
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`provision that Nokia allegedly breached. See, e.g., Township of Spring v. Standard Ins. Co., 497
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`F. App’x 211, 214 (3d Cir. 2012) (affirming dismissal of contract claim where plaintiff argued
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`“nothing in [the contract] would have prevented the liquidation of the pension funds” and holding
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`that the plaintiff “must, but cannot, identify a provision of the Contracts that required Standard to
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`liquidate the funds”). HP alleges that Nokia has breached its “contractual obligations” to the ITU-
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`T “by unilaterally terminating pre-suit negotiations with HP and . . . seeking injunctive relief.”
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`(D.I. 20 at 14.) But HP never identifies any contractual language in the ITU-T Common Patent
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`Policy, Declaration Form, or Guidelines, that Nokia allegedly has breached by seeking injunctive
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`relief. Nor can it, because no such language exists. (D.I. 19 at 7.) Because HP failed to allege the
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`existence of an ITU-T contractual prohibition on seeking injunctions, Count II fails.
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`2. HP’s unenforceability counterclaim is unsupported by the law. (Count III.)
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`HP suggests that the Court should declare as unenforceable Nokia’s entire patent portfolio
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`that is related to the H.264 and H.265 standards if the patents covering the Implicated Claims were
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`untimely disclosed. (See D.I. 20 at 14–15; Counterclaim ¶ 137 (arguing that failure to disclose “the
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`Asserted Patents . . . constitutes at least a waiver of [Nokia’s] right . . . to enforce any claimed-
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`essential patents against any entity practicing the H.264 and H.265 Standards, and renders the
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`patents unenforceable against such standards” (emphasis added)).) In other words, HP argues that,
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`under the ITU-T policy, if a patent contains any claims that “may” be essential, then the patent
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`must be disclosed and, if it is not disclosed, then the patent owner is foreclosed from enforcing all
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`of the claims of that patent in any context—even if any or all of the claims are not actually essential.
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`HP cites no support for this reading of the implied waiver theory. Instead, HP’s cited caselaw
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`actually undermines its argument. See Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.3d
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`1356, 1368 (Fed. Cir. 2018) (“In the analogous case of implied waiver, which like inequitable
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`conduct involves the breach of a disclosure duty, the same equitable considerations require either
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`a showing of prejudice or egregious misconduct sufficient to justify the sanction of
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`unenforceability of the patent at issue.” (emphasis added)).1
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`What is more, the Federal Circuit has expressly rejected the notion that courts may declare
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`patents unenforceable outside of a narrow set of uses related to the alleged misconduct at issue. In
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`a case that HP cites in its Opposition, the Federal Circuit vacated an order—rendered in the context
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`of serious litigation misconduct where a party wrongly denied participation in standard-setting
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`and withheld hundreds of thousands of pages of discovery on that subject—that would have
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`rendered patent claims declared as potentially essential to an SDO unenforceable even outside the
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`context of compliance with the technical standard. Qualcomm Inc. v. Broadcom Corp., 548 F.3d
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`1004, 1026 (Fed. Cir. 2008). As the Federal Circuit recognized, where an unenforceability claim
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`1 The Federal Circuit in Core Wireless analogized the implied waiver doctrine in the SDO
`context to “the doctrine of inequitable conduct discussed in Therasense.” 899 F.3d at 1368. In
`Therasense, Inc. v. Becton, Dickinson & Co., cautioned “the remedy for inequitable conduct is the
`‘atomic bomb’ of patent law” that “can spread from a single patent to render unenforceable other
`related patents and applications in the same technology family.” 649 F.3d 1276, 1288–89 (Fed.
`Cir. 2011) (en banc). Because charges of inequitable conduct had become “a common litigation
`tactic” the Federal Circuit “tighten[ed] the standards for finding both intent and materiality in order
`to redirect a doctrine that has been overused to the detriment of the public.” Id. at 1289–90. The
`same is true for unenforceability counterclaims premised on implied waiver. Cf. IBM v. Priceline
`Grp., Inc., No. 15-cv-137, 2017 WL 1349175, at *8 (D. Del. Apr. 10, 2017) (noting that “the
`Federal Circuit and this Court have regularly dismissed inequitable conduct claims that failed to
`meet [the pleading] burden” of identifying the specific individuals that deliberately withheld
`material information from the patent application).
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`is based on “conduct before the [SDO] during development of the” standard, “the broadest
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`permissible unenforceability remedy in the circumstances of the present case [involving serious
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`litigation misconduct] would be to render the [] Patents . . . unenforceable against all H.264-
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`compliant products.” Id. As a result, where the premise for an unenforceability claim is late
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`disclosure to an SDO—even when the party withholds discovery and wrongly denies participating
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`in the standardization—the Federal Circuit held that any unenforceability order cannot extend
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`beyond standard compliance (i.e., essentiality), something that HP has failed to allege. This Court,
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`therefore, should dismiss HP’s overbroad request for a declaration of unenforceability.
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`3. HP’s antitrust claim fails to plead necessary facts. (Count IV.)2
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`The Third Circuit’s ruling in Broadcom held only that certain antitrust claims in the SDO
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`context may proceed under exceedingly narrow circumstances. See Amneal Pharms. LLC v.
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`Indivior Inc., 2017 WL 36371, at *8 (E.D. Pa. Jan. 4, 2017) (concluding that “Broadcom was
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`decidedly narrow and its applicability is confined to its unique factual circumstances”). And
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`Broadcom itself has not worn well over time, having been rejected in multiple circuits.3 Although
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`HP argues that Broadcom remains “controlling law” (D.I. 20 at 16), HP seeks its expansion. And
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`that decision’s narrow ruling on the pleading standards for a Section 2 claim was—at best—further
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`cabined two years later by Ashcroft v. Iqbal, 556 U.S. 662 (2009). There, the Supreme Court held
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`that “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`2 In passing, HP asserts that Nokia’s conduct was “an improper monopolization attempt that
`injured HP.” (D.I. 20 at 5.) Because the counterclaims and HP’s Opposition do not allege the
`necessary elements for an attempted monopolization claim—notably, “a specific intent to
`monopolize” and a “dangerous probability of achieving monopoly power”—this Court should
`reject this characterization. Broadcom, 501 F.3d at 317.
`3 (D.I. 19 at 9 & n.6.) Beyond this legal repudiation, HP concedes the Broadcom holding relied
`upon an FTC decision that was later reversed by the D.C. Circuit, as well as the patent hold-up
`theory which lacks empirical support. (D.I. 19 at 9 n.6.) These legal developments should give the
`Court pause before allowing HP’s conclusory and inadequately pled Section 2 claim to proceed.
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`statements, do not suffice” to sustain a claim past the pleading stage. Id. at 678. In the nearly two
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`decades since Broadcom was decided, numerous courts have applied Iqbal and Rule 9(b)’s
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`heightened pleading standards to Section 2 claims based on allegedly fraudulent statements to
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`SDOs.4 Here, HP’s counterclaim suffers from two crucial pleading defects.
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`First, a Section 2 claim under current pleading standards must specifically identify
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`exclusionary conduct—in a Broadcom claim, that means a competing alternative technology that
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`was excluded from the relevant market by the SDO’s incorporation of patent claims at issue into
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`the standard. (D.I. 19 at 11–12); see also ChriMar Sys. v. Cisco Sys., 72 F. Supp. 3d 1012, 1019
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`(N.D. Cal. 2014) (dismissing Section 2 counterclaim because “Defendants fail to clearly allege
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`that the IEEE would have adopted an alternative standard had it known about the ‘250 Patent,” so
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`“Defendants fail to sufficiently allege market power”). If no alternative technology was excluded,
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`then the SDOs “would have standardized the very same technologies,” so any “alleged deception
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`cannot be said to have had an effect on competition.” Rambus Inc. v. FTC, 522 F.3d 456, 466–67
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`(D.C. Cir. 2008). HP’s attempt to distinguish this caselaw is unpersuasive. The parties did not raise
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`the issue of whether a plaintiff must identify purportedly excluded technologies in the Microsoft
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`Mobile v. InterDigital and Lenovo v. InterDigital cases.5 Because that question was never before
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`the Court, HP cites no “well-settled law in this District” on that point. (D.I. 20 at 20.) However,
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`in multiple cases where the issue was raised, courts have squarely found that the party alleging a
`
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`4 (D.I. 19 at 10 n.7.) Significantly, HP does not contest that Rule 9(b)’s heightened pleading
`standards apply. (D.I. 20 at 19 n.14.).
`5 See generally Microsoft Mobile, Inc. v. InterDigital, Inc., No. 15-cv-723, 2016 WL 1464545
`(D. Del. Apr. 13, 2016); Microsoft Mobile, Inc. v. InterDigital, Inc., No. 15-cv-723 (D. Del. Nov.
`4, 2015)) (D.I. 17) (Opening Br. in Support of Motion to Dismiss); Lenovo U.S. v. Interdigital
`Tech. Corp., No. 20-cv-493, 2021 U.S. Dist. LEXIS 56571 (D. Del. Mar. 24, 2021); Lenovo U.S.
`v. Interdigital Tech. Corp., No. 20-cv-493 (D. Del. June 22, 2020) (D.I. 8) (Opening Br. in Support
`of Motion to Dismiss).
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`9
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`Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 14 of 16 PageID #: 2055
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`Section 2 violation must identify the specific alternative technology that was excluded by the
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`SDO’s incorporation of the defendant’s (undisclosed) patented technology into the standard. See
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`Apple Inc., 2011 WL 4948567, at *6 (Section 2 claim “failed to allege . . . a viable alternative
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`technology . . . [that] would have been incorporated into the UMTS standard”);6 Townshend v.
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`Rockwell Int’l Corp., No. C99-0400SBA, 2000 WL 433505, at *11 (N.D. Cal. Mar. 28, 2000)
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`(Section 2 claimant “has not asserted that the ITU could have adopted a V.90 standard which did
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`not encompass Townshend’s technology”). HP’s criticisms of Rambus are likewise unpersuasive:
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`to be sure, it is out-of-circuit authority, but the D.C. Circuit expressly overturned an FTC precedent
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`upon which the Third Circuit in Broadcom heavily relied. (D.I. 19 at 9 n.6.)
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`Second, HP has failed to plausibly plead a relevant market. The counterclaims defined the
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`“Relevant Market” as a market for “products that implement or support the functionality described
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`in the Asserted Standards.” (Counterclaim ¶ 139.) After realizing the error of its ways, HP now
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`argues that multiple “Relevant Markets” exist, including “one of technology.” (D.I. 20 at 21.) But
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`HP’s counterclaims do not actually define a relevant technology market. See, e.g., ChriMar Sys.,
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`72 F. Supp. 3d at 1018 (“Defendants argue that they defined the market as comprising the
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`technologies that competed to perform the functions in the . . . standards allegedly covered by the
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`[] Patent. But their counterclaims do not actually contain such allegations. Accordingly, the
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`Court finds that Defendants fail to sufficiently allege the relevant market.” (citation omitted)).7
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`The absence of a properly defined technology market in Count IV warrants dismissal.
`
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`6 Importantly, Apple’s counterclaim proceeded only after Apple amended beyond “mere
`conclusory statements” to identify specific “alternatives that the working group could have
`adopted to perform the same functionality as that performed by each Declared-Essential Patent
`asserted.” Apple Inc. v. Samsung Elecs. Co., 2012 WL 1672493, at *8 (N.D. Cal. May 14, 2012).
`7 This failure distinguishes HP’s “Relevant Market” from those pleaded in Lenovo, 2021 WL
`1123101, at *8 and Microsoft Mobile Inc., 2016 WL 1464545, at *1–2.
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`Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 15 of 16 PageID #: 2056
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`Dated: February 29, 2024
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`
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`Respectfully submitted,
`
`FARNAN LLP
`
`/S/ Brian E Farnan
`
`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan ( Bar No. 5165)
`919 N. Market St. 12th Floor
`Wilmington DE 19801
`Tel.: (302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`MCKOOL SMITH, P.C.
`
`Warren H. Lipschitz (admitted pro hac vice)
`Alexandra F. Easley (admitted pro hac vice)
`300 Crescent Ct. Ste. 1200
`Dallas, TX 75224
`Tel.: (214) 978-4000
`wlipschitz@mckoolsmith.com
`aeasley@mckoolsmith.com
`
`R. Mitch Verboncoeur (admitted pro hac
`vice)
`303 Colorado St Suite 2100
`Austin, TX 78701
`Tel.: (512) 692-8700
`mverboncoeur@mckoolsmith.com
`
`Josh Newcomer (admitted pro hac vice)
`600 Travis St., Suite 7000
`Houston, Texas 77002
`Tel.: (713) 485-7300
`jnewcomer@mckoolsmith.com
`
`Kevin Burgess (admitted pro hac vice)
`104 East Houston St., Suite 300
`Marshall, Texas 75670
`Tel.: (903) 923-9000
`kburgess@mckoolsmith.com
`
`ALSTON & BIRD LLP
`
`
`11
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`Case 1:23-cv-01237-GBW Document 22 Filed 02/29/24 Page 16 of 16 PageID #: 2057
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`
`
`Theodore Stevenson, III (admitted pro hac
`vice)
`2200 Ross Ave. #2300
`Dallas, TX 75201
`Tel.: (214) 922-3400
`ted.stevenson@alston.com
`
`John D. Haynes (admitted pro hac vice)
`Nicholas T. Tsui (admitted pro hac vice)
`Shawn Gannon (admitted pro hac vice)
`1201 West Peachtree Street
`Atlanta, GA 30309
`Tel.: (404) 881-7000
`john.haynes@alston.com
`nick.tsui@alston.com
`shawn.gannon@alston.com
`
`Attorneys for Plaintiff
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`12
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