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Case 5:19-cv-02520-LHK Document 89 Filed 07/17/19 Page 1 of 2

1 Teresa T. Bonder (SBN 321558) Mark A. McCarty (pro hac vice granted)
ALSTON & BIRD LLP Matthew D. Richardson (pro hac vice granted)
2 560 Mission Street, Suite 2100 John D. Haynes (pro hac vice granted)
San Francisco, CA 94105 ALSTON & BIRD LLP
3 Telephone: (415) 243-1000 1201 W. Peachtree St.
Facsimile: (415) 243-1001 Atlanta, GA 30309
4 teresa.bonder@alston.com Telephone: (404) 881-7000
Facsimile: (404) 881-7777
5 Ryan W. Koppelman (SBN 290704) mark.mccarty@alston.com
ALSTON & BIRD LLP matt.richardson@alston.com
6 1950 University Avenue, 5th Floor john.haynes@alston.com
East Palo Alto, CA 94303
7 Telephone: (650) 838-2000
Facsimile: (650) 838-2001
8 ryan.koppelman@alston.com

9 Attorneys for Defendants Nokia Corporation,


Nokia of America Corporation, Nokia Solutions
10 and Networks US LLC, Nokia Solutions and
Networks Oy, and Nokia Technologies Oy
11
12 UNITED STATES DISTRICT COURT
13 NORTHERN DISTRICT OF CALIFORNIA

14 CONTINENTAL AUTOMOTIVE SYSTEMS,


INC., Case No. 19-cv-2520-LHK
15 Plaintiff, NOTICE OF LETTER TO COURT
16 v.
17 AVANCI, LLC, AVANCI PLATFORM
18 INTERNATIONAL LIMITED, NOKIA
CORPORATION, NOKIA OF AMERICA
19 CORPORATION, NOKIA SOLUTIONS AND
NETWORKS US LLC, NOKIA SOLUTIONS
20 AND NETWORKS OY, NOKIA
TECHNOLOGIES OY, CONVERSANT
21 WIRELESS LICENSING SARL, OPTIS UP
HOLDINGS LLC, OPTIS CELLULAR
22 TECHNOLOGY, LLC, OPTIS WIRELESS
TECHNOLOGY, LLC,
23 Defendants.
24
25
26
27
28
NOTICE OF LETTER TO COURT
Case No. 19-cv-2520-LHK
1
Case 5:19-cv-02520-LHK Document 89 Filed 07/17/19 Page 2 of 2

1 TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

2 Counsel for Defendants Nokia Corporation, Nokia of America Corporation, Nokia Solutions

3 and Networks US LLC, Nokia Solutions and Networks Oy, and Nokia Technologies Oy (hereinafter

4 “Nokia Defendants”) hereby file, as Exhibit A, a true and correct copy of a letter from counsel to the

5 Court regarding recent developments Nokia Solutions and Networks Oy v. Daimler AG, First Munich

6 Regional Court, Patent Division, No. 21 O 3889/19.

7
DATED: July 17, 2019 ALSTON & BIRD LLP
8
9 /s/ Ryan W. Koppelman
10 Ryan W. Koppelman (SBN 290704)
ALSTON & BIRD LLP
11 1950 University Avenue, 5th Floor
East Palo Alto, CA 94303
12 Telephone: 650-838-2000
Facsimile: 650-838-2001
13 ryan.koppelman@alston.com

14 Teresa T. Bonder (SBN 321558)


ALSTON & BIRD LLP
15 560 Mission Street, Suite 2100
San Francisco, CA 94105
16 Telephone: (415) 243-1000
Facsimile: (415) 243-1001
17 teresa.bonder@alston.com

18 Mark A. McCarty (pro hac vice)


Matthew D. Richardson (pro hac vice)
19 John D. Haynes (pro hac vice)
ALSTON & BIRD LLP
20 1201 W. Peachtree St.
Atlanta, GA 30309
21 Telephone: (404) 881-7000
Facsimile: (404) 881-7777
22 mark.mccarty@alston.com
matt.richardson@alston.com
23 john.haynes@alston.com

24 Attorneys for Defendants Nokia Corporation,


Nokia Of America Corporation, Nokia Solutions And Networks
25 Us LLC, Nokia Solutions And Networks Oy, and Nokia
Technologies Oy
26
27
28
NOTICE OF LETTER TO COURT
Case No. 19-cv-2520-LHK
2
Case 5:19-cv-02520-LHK Document 89-1 Filed 07/17/19 Page 1 of 33

EXHIBIT A
Case 5:19-cv-02520-LHK Document 89-1 Filed 07/17/19 Page 2 of 33

One Atlantic Center


1201 West Peachtree Street
Atlanta, GA 30309-3424
404-881-7000 | Fax: 404-881-7777

Matthew D. Richardson Direct Dial: 404-881-4478 Email: matt.richardson@alston.com

July 17, 2019

The Honorable Lucy Koh


United States District Court for the Northern
District of California
280 South 1st Street
San Jose, California 95113

Re: Continental Automotive Systems, Inc. v. Avanci, LLC et al., Case No. 5:19-
cv-02520

Dear Judge Koh:

I write on behalf of Defendants Nokia Corporation, Nokia of America Corporation, Nokia


Solutions and Networks US LLC,1 Nokia Solutions and Networks Oy, and Nokia Technologies Oy
(collectively, “Nokia”). I am writing to apprise the Court of developments related to ten patent
infringement cases that were filed by Nokia Technologies Oy and Nokia Solutions and Networks
Oy (hereinafter the “European Nokia Plaintiffs”) against Daimler AG several months prior to the
filing of this case (the “Nokia-Daimler German Cases”) and that have been proceeding through
the German courts.

On July 11, 2019, the Regional Court of Munich I (the “Munich Court”) issued an
injunction that orders Continental Automotive Systems, Inc. (i) “to refrain from applying for an
antisuit injunction, which is intended directly or indirectly to prohibit [the European Nokia
Plaintiffs] to pursue one or more of [the Nokia-Daimler German Cases];” (ii) “to withdraw the
motion for an anti-suit injunction of 12 June 2019 in proceedings number 5:10-cv-02520-LHK,
incoming file no. 32, before the United States District Court – Northern District of California
immediately upon service of the injunction order;” and (iii) “the prohibition of Continental

1
Nokia Solutions and Networks US LLC was merged with and into Alcatel-Lucent USA Inc.,
effective January 1, 2018. Alcatel-Lucent USA Inc. then changed its name to Nokia of
America Corporation, also effective January 1, 2018. Accordingly, Nokia Solutions and
Networks US LLC is no longer a corporate entity. In the stipulation extending the named
Nokia Defendant’s deadline to respond to the Complaint, the parties reserved their rights to
address this issue at a later date.
Alston & Bird LLP www.alston.com

Atlanta | Beijing | Brussels | Charlotte | Dallas | Los Angeles | New York | Raleigh | San Francisco | Silicon Valley | Washington, D.C.
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July 17, 2019


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Automotive Systems, Inc.’s further pursuing the anti-suit injunction proceedings, other than for
the purpose of withdrawing the motion.” The Munich Court’s injunction is designed to preserve
its jurisdiction and maintain the current status quo between the Nokia-Daimler German Cases
and this case. The injunction does not prevent Continental Automotive Systems, Inc. from
proceeding with its substantive claims in this case.

By issuing the injunction, the Munich Court preserved the ability of the German courts
to proceed with their consideration of the infringement claims between the European Nokia
Plaintiffs and Daimler AG. Under German and EU law, the German courts will consider the
defenses raised and whether Nokia has complied with its obligations imposed by the European
Court of Justice in Huawei Technologies Co. Ltd v ZTE Corp. (Case C-170/13) in deciding whether
or not to grant an injunction applicable to Daimler AG’s sale of cars. Nokia has made a FRAND
licensing offer to Daimler AG, and has committed to hold that offer open following the ruling on
infringement and remedies in the German cases.

For the Court’s reference, Nokia provides the following procedural history of the Nokia-
Daimler German cases.

The Nokia-Daimler German Cases

The European Nokia Plaintiffs filed 10 patent infringement suits (3 in Munich, 3 in


Düsseldorf, and 4 in Mannheim) against Daimler AG on March 21, 2019. The European Nokia
Plaintiffs are accusing Daimler’s cellular-equipped automobiles of infringing Nokia’s Standard
Essential Patents. On May 10, 2019, Continental Automotive Systems, Inc. filed the instant
lawsuit. On May 17, 2019, and again on June 17, 2019, Daimler filed Third-Party Notifications
with the German courts notifying Conti Temic microelectronic GmbH, Continental Automotive
GmbH, and Continental Automotive Hungary Ltd. that components supplied by these three
companies could be implicated by Nokia’s patent infringement actions. The latter two
companies accepted the Third-Party Notifications and intervened in the proceedings to assist
Daimler in its defense. Significantly, Daimler AG did not serve a Third-Party Notification on
Continental Automotive Systems, Inc., the Plaintiff in this lawsuit. As a result, Continental
Automotive Systems, Inc. is not affected by the Nokia-Daimler German cases and is not a party
to those cases, neither directly nor as an intervenor.

At no point after the filing of the case before this Court did Daimler AG or any of the
Continental intervenors approach the German courts and ask them to stay the first-filed Nokia-
Daimler German cases in favor of this later-filed case.

The Munich Court’s Injunction

The European Nokia Plaintiffs’ request for an injunction from the Munich Court was
prompted by the Motion for Antisuit injunction filed by Continental Automotive Systems, Inc. in
this Court. On June 12, 2019, Plaintiff Continental Automotive Systems, Inc. filed that motion
seeking (i) to enjoin Nokia from prosecuting the first-filed lawsuits against Daimler AG; and (ii) to
enjoin Defendants from filing, or acting in concert with anyone else to file, any action against
Continental or any of its customers alleging infringement during the pendency of the
proceedings in this Court.
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In their application, the European Nokia Plaintiffs informed the Munich Court of the
filing of this Motion for Antisuit Injunction and requested that the German Court consider
whether it wished to take steps to preserve its own jurisdiction over the first-filed Nokia-Daimler
German cases. The European Nokia Plaintiffs asked the Court to issue an injunction that would
direct Continental Automotive Systems, Inc. to withdraw its Motion for Antisuit Injunction
seeking to stop the Nokia-Daimler German cases. The European Nokia Plaintiffs’ application
expressly asked the Court not to take any steps that would impact the jurisdiction of this Court
to adjudicate Plaintiff’s substantive claims:

Furthermore, the present motion is not intended to deny the Respondents' access
to the US courts altogether. For the present motion is not directed against the US
main proceedings filed of 10 May 2019 (Exhibit AR 7), but solely against the
supplementary motion for issuance of an anti-suit injunction. This is an essential
difference to the approach of the Respondents. The Respondents are seeking a
comprehensive prohibition of all current and future patent infringement actions
brought by the Petitioner against Continental or [on behalf] of their customers
under a mobile communications SEP for the duration of the anti-suit injunction. The
defensive measure requested here is therefore only aimed at preserving the status
quo and a considerably smaller curtailment of the legal position of the Respondents.

Under German procedural rules, the Court is permitted to issue the injunction ex parte. Once
the enjoined party is served with the injunction, it goes into effect, and then the party is
permitted to object and argue against the injunction’s continued effect. The case will then be
discussed in an oral hearing, and the Court will issue a judgment. This judgment would
thereafter be subject to an appeal to the Higher Regional Court.

On July 11, 2019, the German Court issued such an injunction. After obtaining a
translation of the German papers, the European Nokia Plaintiffs served Continental Automotive
Systems, Inc. on an expedited basis with a copy of the Munich Court’s injunction through the
Hague Service Convention. Accordingly, the injunction has now gone into effect. Nokia also
provided a courtesy copy of the injunction to Continental Automotive Systems, Inc.’s outside
counsel. A translated copy of the Munich Court’s injunction is enclosed.

Sincerely,

Matthew D. Richardson

CC: Counsel of Record


Attachment
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