Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 1 of 19 PageID #: 24169
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-010 (RGA)
`
`))))))))))))))
`
`INTERDIGITAL COMMUNICATIONS,
`INC.; INTERDIGITAL TECHNOLOGY
`CORPORATION; IPR LICENSING, INC.;
`and INTERDIGITAL HOLDINGS, INC.,
`
`Plaintiffs/Counterclaim-
`Defendants,
`
`v.
`
`NOKIA CORPORATION and NOKIA INC.,
`
`Defendants/Counterclaim-
`Plaintiffs.
`
`ANSWERING BRIEF OF MICROSOFT MOBILE OY IN RESPONSE TO PLAINTIFFS’
`MOTION TO ADD IT, AND OPENING BRIEF IN SUPPORT OF CROSS-MOTION
`TO SUBSTITUTE PARTIES UNDER FED. R. CIV. P. 25 OR ALTERNATIVELY
`TO DISMISS NOKIA CORP. AS A NAMED PARTY ON COUNTERCLAIMS
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Rodger D. Smith II (#3778)
`Jeremy A. Tigan (#5239)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19801
`(302) 658-9200
`jblumenfeld@mnat.com
`rsmith@mnat.com
`jtigan@mnat.com
`
`Attorneys for Defendant Nokia Inc. and Non-
`Party Microsoft Microsoft Mobile Oy
`
`OF COUNSEL:
`
`Brian R. Nester
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20006
`(202) 736-8000
`
`Richard A. Cederoth
`SIDLEY AUSTIN LLP
`One South Dearborn Street
`Chicago, IL 60603
`(312) 853-7000
`
`July 22, 2014
`
`IPR Licensing, Inc.
`Exhibit 2001
`Microsoft Corp v. IPR Licensing, Inc.
`IPR2015-00074
`
` Ex. 2001 - 00001
`
`

`

`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 2 of 19 PageID #: 24170
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .......................................................................................................... ii
`
`INTRODUCTION ...........................................................................................................................1
`
`NATURE AND STAGE OF THE PROCEEDINGS ......................................................................2
`
`SUMMARY OF THE ARGUMENT ..............................................................................................3
`
`STATEMENT OF FACTS ..............................................................................................................5
`
`ARGUMENT ...................................................................................................................................8
`
`I.
`
`THE COURT SHOULD SUBSTITUTE MMO FOR NOKIA
`CORPORATION .....................................................................................................8
`
`A.
`
`B.
`
`the Interests at Stake Supports
`Transfer of All of
`Substitution. .................................................................................................8
`
`InterDigital’s Objections to Removal of Nokia Corporation
`as a Defendant are Inapposite ....................................................................10
`
`1.
`
`2.
`
`Removal of Nokia Corporation Does Not Pose any
`Significant Prejudice to InterDigital ..............................................10
`
`Nokia Corporation’s Future Activities Provide No
`Reason to Keep it in the Case ........................................................11
`
`C.
`
`Rule 25(c) Substitution is Required for the Presently Pled
`Counterclaims, Regardless of Nokia Corporation’s Status
`as a Defendant. ...........................................................................................12
`
`II.
`
`ALTERNATELY, NOKIA CORPORATION SHOULD BE
`DISMISSED AS A COUNTERCLAIM PLAINITFF ...........................................13
`
`CONCLUSION ..............................................................................................................................13
`
`
`
`
` Ex. 2001 - 00002
`
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 3 of 19 PageID #: 24171
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Abbott Labs. v. Roxane Labs., Inc.,
`C.A. No. 12-457-RGA, 2013 WL 2322770 (D. Del. May 28, 2013) ........................................8
`
`Bank of New England, N.A. v. Callahan,
`758 F. Supp. 61 (D.N.H. 1991) ..................................................................................................9
`
`Chafin v. Chafin,
`133 S. Ct. 1017 (2013) .............................................................................................................11
`
`Dollar Dry Dock Sav. Bank v. Hudson St. Dev. Assocs.,
`1995 WL 412572 (S.D.N.Y. July 12, 1995) ........................................................................9, 10
`
`Gen. Battery Corp. v. Globe-Union, Inc.,
`100 F.R.D. 258 (D. Del. 1982) ............................................................................................9, 12
`
`Hawke Assocs. v. City Fed. Sav. Bank,
`787 F. Supp. 423 (D.N.J. 1991) .................................................................................................9
`
`Luxliner P/L Exp., Co. v. RDI/Luxliner, Inc.,
`13 F.3d 69 (3d Cir. 1993).........................................................................................................12
`
`North Carolina v. Rice,
`404 U.S. 244 (1971) .................................................................................................................12
`
`Travelers Ins. Co. v. Broadway W. St. Assocs.,
`164 F.R.D. 154 (S.D.N.Y. 1995) ...............................................................................................9
`
`RULES AND STATUTES
`
`Fed. R. Civ. P. 17 ...................................................................................................................2. 4. 13
`
`Fed. R. Civ. P. 25 ................................................................................................................... Passim
`
`
`
` Ex. 2001 - 00003
`
`- ii -
`
`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 4 of 19 PageID #: 24172
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`
`INTRODUCTION
`
`In this patent infringement action, Plaintiffs InterDigital Communications, Inc.,
`
`InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc.
`
`(collectively, “Plaintiff” or “InterDigital”) allege that certain mobile telephones formerly made
`
`by Nokia Corporation (or its affiliates at the time) and imported into the U.S. by Nokia Inc.
`
`infringe Plaintiffs’ patents. In response, defendants Nokia Corporation and Nokia Inc. have
`
`asserted various counterclaims, including those based on InterDigital’s failure to comply with
`
`obligations to license its allegedly standards essential patents on fair, reasonable, and non-
`
`discriminatory (“FRAND”) terms (see, e.g., D.I. 49, Counterclaims ¶¶ 1-114; see also D.I. 230-
`
`231 (dismissing Nokia’s Counterclaims III and VIII, while leaving remaining counterclaims
`
`unaffected)).
`
`On April 25, 2014, Nokia Corporation sold its mobile telephone business
`
`(sometimes referred to as its “Devices & Services Business” or the “D&S Business”) to
`
`Microsoft Mobile Oy (MMO), a wholly owned Finnish subsidiary of Microsoft Corporation.
`
`MMO and its subsidiaries (including Nokia Inc., now wholly owned by MMO) are now solely
`
`responsible for the operation of this business as it relates to the United States, including
`
`producing, selling and any importing of the mobile telephones accused in this case.1 MMO has
`
`assumed all of any Nokia Corporation’s liabilities that might arise out of this action and has sole
`
`
`1
`All of Nokia Corporation’s manufacturing facilities for mobile phones, with two
`exceptions, have been transferred to Microsoft. The Nokia facility in India owned by Nokia
`Corporation sells the products it manufactures there only to Microsoft, and any importation of
`such devices into the United States ceased no later than May 2014. The Nokia facility in South
`Korea made its last deliveries before the Nokia/Microsoft transaction closed in April, and Nokia
`Corporation is investigating options to liquidate or otherwise dispose of that facility and
`associated assets. As a result, all of the import and distribution channels for the accused products
`are now through Microsoft (see Nokia Form 6-K, Ex. 1, at 14).
`
` Ex. 2001 - 00004
`
`- 1 -
`
`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 5 of 19 PageID #: 24173
`
`
`control over the defense of this action with respect to the acquired D&S Business, including sole
`
`authority to resolve this action. MMO has also acquired all of Nokia Corporation’s presently
`
`pled counterclaims, including the surviving claims that were not dismissed related to
`
`InterDigital’s failure to comply with obligations to license its allegedly standards essential
`
`patents on FRAND terms.
`
`In light of the acquisition and consistent with Fed. R. Civ. P. 25 and 17, MMO
`
`should be substituted for Nokia Corporation in this case because MMO is the real party in
`
`interest. Nokia Inc., now a subsidiary of MMO, will remain as a defendant and counterclaim
`
`plaintiff. Fact and expert discovery on patent liability are now closed, so the scope of accused
`
`products at issue is fixed. Only MMO products are at issue, MMO is responsible for the defense
`
`of the litigation and for any judgment that may be entered with respect to those accused products,
`
`and MMO has sole rights to the remaining pled counterclaims. Conversely, given that Nokia
`
`Corporation has sold the business and transferred the related liabilities and counterclaims to
`
`MMO, there is no reason for Nokia Corporation to remain a party; indeed, it would be improper
`
`to keep Nokia Corporation as a named counterclaim plaintiff now.
`
`Accordingly, and for the reasons set forth herein, MMO respectfully submits that
`
`the most straightforward and efficient course of action is for MMO to be substituted for Nokia
`
`Corporation, thus removing Nokia Corporation from this case. Alternatively, at a minimum,
`
`Nokia Corporation should be dismissed as a named counterclaim plaintiff now.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`On January 2, 2013, InterDigital filed a complaint in this Court accusing the
`
`Nokia Corporation and Nokia Inc. of infringing U.S. Patent No. 7,941,151. InterDigital later
`
`amended its complaint to add infringement allegations relating to U.S. Patent No. 8,380,244.
`
` Ex. 2001 - 00005
`
`- 2 -
`
`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 6 of 19 PageID #: 24174
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`
`InterDigital presently accuses certain Lumia mobile phones of infringing both patents. Fact
`
`discovery on patent liability issues closed on March 14, 2014, and expert discovery closed on
`
`May 23, 2014. The patent liability issues are scheduled for a five-day trial commencing on
`
`September 8, 2014. No trial is set on damages or the remaining counterclaims. Of the
`
`counterclaims pending, Counts III and VIII were dismissed by this Court on May 28, 2014.
`
`SUMMARY OF THE ARGUMENT
`
`1.
`
`Because a transfer of all interest in the businesses and claims at issue has
`
`occurred under the transaction in which MMO purchased Nokia Corporation’s Devices &
`
`Services Business,2 substitution of parties in this action is appropriate under Fed. R. Civ.
`
`P. 25(c). MMO is now wholly responsible for producing and selling the accused products, as it
`
`has taken over the operations, facilities, employees, and management personnel related to
`
`Nokia’s Devices and Services Business.3 In addition, MMO has assumed any liabilities that
`
`Nokia Corporation may have accrued relating to the Devices & Services Business. MMO is
`
`therefore a successor-in-interest to Nokia Corporation with respect to any devices accused of
`
`infringing in this action. MMO also holds all interest in the presently pled counterclaims, and
`
`Nokia Corporation no longer owns the rights being asserted in those counterclaims with respect
`
`to the transferred business and products.
`
`
`2
`One component of the Devices & Services Business was Nokia Inc., which was formerly
`a wholly owned subsidiary of Nokia Corporation, responsible for importing and selling the
`accused Nokia Lumia phones in the U.S., and now a wholly-owned subsidiary of MMO, but still
`responsible for importing and selling the accused Nokia Lumia phones in the U.S.
`3
`See supra fn1, regarding Nokia Corporation’s retention of certain facilities in India and
`Korea not relevant here.
`
` Ex. 2001 - 00006
`
`- 3 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 7 of 19 PageID #: 24175
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`2.
`
`There is no reason to keep Nokia Corporation in the case. As a result of
`
`MMO’s acquisition, MMO and its subsidiary Nokia Inc. are now the real parties in interest in
`
`this litigation, and whatever interest or liabilities Nokia Corporation once had now reside with
`
`MMO. Discovery regarding patent liability is closed, and the scope of accused products is
`
`limited to those acquired and currently being imported and sold by MMO. To the extent
`
`additional discovery remains, MMO is in the best position to provide it, given the transfer from
`
`Nokia Corporation to MMO of the business that relates to the accused products in this case
`
`(including its employees and business records). Nokia Corporation has also agreed to cooperate
`
`with reasonable discovery requests, even after MMO takes control of the case (see D.I. 270-1,
`
`Declaration of Maura L. Rees, Ex. C ¶ 4). Conversely, Nokia Corporation no longer has any
`
`interest in this action, as it does not produce, manufacture, or sell the products accused in this
`
`case, and has sold its interests in the presently pled counterclaims involving the transferred
`
`business to MMO. Nor will Nokia Corporation’s presence in this case facilitate the litigation.
`
`Rather, it would increase the case’s complexity and result in unnecessary costs for the parties and
`
`the Court. InterDigital will suffer no prejudice from Nokia’s absence as a party because MMO
`
`will continue to have access to all relevant information (see Orndorff Decl., Ex. 2, at ¶ 4; Nokia
`
`Form 6-K, Ex. 1, at 46). Under these circumstances, substitution of MMO for Nokia
`
`Corporation should be granted.
`
`3.
`
`Whatever claims InterDigital may have had against Nokia Corporation, it
`
`now has against MMO as the successor in interest to the entirety of the relevant Nokia
`
`Corporation business. There can be no doubt that MMO is fully capable of satisfying any
`
`judgment that InterDigital might obtain here.
`
` Ex. 2001 - 00007
`
`- 4 -
`
`

`

`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 8 of 19 PageID #: 24176
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`
`4.
`
`Finally, at a minimum, Nokia Corporation should be dismissed as a named
`
`party on the presently pled counterclaims. Nokia Corporation no longer holds an interest in these
`
`claims but has transferred any interest in them to MMO. Federal Rule of Civil Procedure 17
`
`requires that the claims be prosecuted in MMO’s name, and not in Nokia Corporation’s name,
`
`going forward.
`
`STATEMENT OF FACTS
`
`The Stock Asset and Purchase Agreement Governing Microsoft’s Acquisition
`
`of Nokia’s Devices & Services Business. On September 2, 2013, Microsoft International
`
`Holdings B.V., an affiliate of Microsoft Corporation (“Microsoft”), and Nokia Corporation
`
`entered into a Stock and Asset Purchase Agreement (the “Purchase Agreement”).4 Under the
`
`terms of the Purchase Agreement, Microsoft agreed to acquire substantially all of Nokia’s D&S
`
`Business, which includes the business responsible for the accused products in this action (see
`
`Nokia Form 6-K, Ex. 1, at 19, 36-37). In addition, Microsoft agreed to “assume liabilities
`
`primarily relating to the D&S Business and liabilities arising from the assets primarily used in
`
`the D&S Business” (id. at 19, 39-40). The liabilities that Microsoft agreed to assume include
`
`pending litigation concerning the D&S Business, including cases in which a Nokia mobile device
`
`is alleged to infringe a patent (see id.; see also D.I. 270-1, Rees Decl., Ex. C, Agreement
`
`Regarding Pending Litigation, at ¶¶ 1-2). Along with transfer of these assumed liabilities, Nokia
`
`
`4
`See Press Release, Microsoft Corp., D.I. 270-1, Rees Decl., Ex. B, Microsoft to Acquire
`Nokia’s Devices & Services Business, License Nokia’s Patents and Mapping Services (Sept. 3,
`2013) (“Microsoft Press Release”); D.I. 270-1, Rees Decl., Ex. B, Press Release, Nokia
`Corporation, Nokia to Sell Devices & Services Business to Microsoft in EUR 5.44 Billion All-
`Cash Transaction (Sept. 3, 2013) (“Nokia Press Release”); Nokia Corp., Report of Foreign
`Private Issuer, Form 6-K (Sept. 19, 2013) (“Nokia Form 6-K,” attached as Ex. 1) at 1; Microsoft
`Corp., Quarterly Report, Form 10-Q (Oct. 24, 2013) (attached as Ex. 5) at 42.
`
` Ex. 2001 - 00008
`
`- 5 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 9 of 19 PageID #: 24177
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`
`Corporation sold to Microsoft the “defenses, rights of offset or counterclaims related to the
`
`Assumed Liabilities” (Nokia Form 6-K, Ex. 1, at 37).
`
`The Closing of the Transaction. The parties completed Microsoft’s acquisition
`
`of Nokia’s D&S Business on April 25, 2014 (see Declaration of Benjamin O. Orndorff
`
`(hereinafter, “Orndorff Decl.”) ¶ 2 (attached as Ex. 1); Press Release, Microsoft Corp., Microsoft
`
`Officially Welcomes the Nokia Devices and Services Business (Apr. 25, 2014) (attached as
`
`Ex. 3)). The acquisition was consummated through MMO, a wholly-owned subsidiary of
`
`Microsoft incorporated in Finland and registered under the Finnish Trade Register Business
`
`ID 2583660-5 (see National Board of Patents and Registration of Finland, Trade Register
`
`(Feb. 26, 2014) (attached as Ex. 4); Orndorff Decl., Ex. 2, at ¶¶ 1-2). At closing, MMO acquired
`
`the assets of Nokia Corporation’s D&S Business as well as Nokia Corporation’s equity interest
`
`in certain Nokia subsidiaries, including defendant Nokia Inc. (see Orndorff Decl., Ex. 2, at ¶ 2;
`
`see also Nokia Form 6-K, Ex. 1, at 36; see also supra fn1).
`
`As of the closing, MMO and its subsidiaries became solely responsible for the
`
`operation of the D&S Business acquired from Nokia Corporation. MMO and its subsidiaries,
`
`including its wholly owned subsidiary Nokia Inc., now have sole responsibility for all past sales
`
`as well as any future production and sale of the accused products in this case (see Orndorff Decl.,
`
`Ex. 2, at ¶ 4; see also Microsoft Press Release; Nokia Press Release D.I. 270-1, Rees Decl.,
`
`Ex. B). Nokia Corporation no longer has any control over these activities (see Nokia Form 6-K,
`
`Ex. 1, at 14). Approximately 30,000 Nokia employees have joined MMO and its subsidiaries as
`
`MMO has taken over substantially all of the production and manufacturing facilities relating to
`
`the D&S Business, including Nokia employee teams devoted to operations, design, marketing,
`
`and related support functions (see Orndorff Decl., Ex. 2, at ¶ 4; see also Microsoft Press Release;
`
` Ex. 2001 - 00009
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`- 6 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 10 of 19 PageID #: 24178
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`
`Nokia Press Release; Press Release, Microsoft Corp., D.I. 270-1, Rees Decl., Ex. B; Steve
`
`Ballmer Email to Microsoft Employees on Nokia Devices & Services Acquisition (Sept. 3, 2013)
`
`(“Ballmer Email,” attached as Ex. 6); supra fn1). As a result of the transaction, all of the
`
`accused products are currently made by and imported (through Nokia Inc.) by MMO (see
`
`Orndorff Decl., Ex. 2, at ¶ 4).
`
`MMO’s Assumption of Nokia Corporation’s Liability and Counterclaims.
`
`Pursuant to the terms of the Purchase Agreement, MMO has agreed to assume all of Nokia
`
`Corporation’s liability for this action – including any losses, damages, or judgments – with
`
`respect to the D&S Business (see Orndorff Decl., Ex. 2, at ¶ 2; see also D.I. 270-1, Rees Decl.,
`
`Ex. C, Agreement Regarding Pending Litigation at ¶¶ 1-2). MMO is a well-capitalized operating
`
`entity and will be fully able to discharge any such losses, damages, or judgments (see Orndorff
`
`Decl., Ex. 2, at ¶ 5). MMO has also obtained all right to, and control over, the counterclaims
`
`presently pled in this action (see D.I. 270-1, Rees Decl., Ex. C, Agreement Regarding Pending
`
`Litigation at ¶¶ 1-2; Nokia Form 6-K, Ex. 1, at 37).
`
`Upon closing, MMO has thus assumed this action in its entirety with respect to
`
`the acquired D&S Business, and will control and direct it at MMO’s own cost and expense.
`
`MMO thus has the sole authority to prosecute, defend, and settle the action.
`
`Substitution in ITC Proceedings. In the two proceedings currently pending at
`
`the ITC, Investigation No. 613 and Investigation No. 868, Nokia Corporation and MMO moved
`
`to substitute MMO for Nokia Corporation because Nokia Corporation was no longer importing
`
`the phones accused of infringing.
`
`Both motions were “Granted in Part,” with MMO being added as an additional
`
`respondent but not replacing Nokia Corporation (see Ex. 7, and D.I. 270-1, Rees Decl., Ex. F).
`
` Ex. 2001 - 00010
`
`- 7 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 11 of 19 PageID #: 24179
`
`
`InterDigital had opposed replacing Nokia Corporation in both Investigations on the theory that,
`
`because it might import some new product at some unspecified time in the future, the
`
`Commission should retain jurisdiction over Nokia Corporation. The ITC staff, likewise, had
`
`urged that the ALJ retain jurisdiction over Nokia Corporation to address the contingency of
`
`future products. The ALJ accepted the argument that the ITC could and should keep Nokia
`
`Corporation as a named respondent based on the possibility that it might in the future again seek
`
`to import accusable products. Defendants and MMO petitioned this issue to the full
`
`Commission, and the Commission declined to review the ALJ’s initial determinations in both
`
`investigations.
`
`On the same day as the order adding MMO to the 868 Investigation, however, the
`
`ALJ also issued his ruling on the merits, finding no infringement of the asserted patents.5
`
`ARGUMENT
`
`I.
`
`THE COURT SHOULD SUBSTITUTE MMO FOR NOKIA CORPORATION
`
`A.
`
`Transfer of All of the Interests at Stake Supports Substitution
`
`MMO should be substituted for Nokia Corporation, removing the latter from this
`
`case. Although there is no dispute that there has been a transfer of interest under Rule 25(c), the
`
`parties dispute whether there is any reason to keep Nokia Corporation in the action. Under the
`
`facts of this case, the Court should substitute MMO for Nokia Corporation, thus removing Nokia
`
`Corporation.6
`
`
`5
`A public version of this decision was previously submitted to the Court (see D.I. 271-2).
`6
`Nokia Inc., now a wholly owned subsidiary of MMO, is already a party to this action and
`will remain a defendant and counterclaim plaintiff under either side’s proposed relief (see
`Orndorff Decl., Ex. 2, at ¶ 2; see also Nokia Form 6-K, Ex. 1, at 36).
`
` Ex. 2001 - 00011
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`- 8 -
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`

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`
`Rule 25(c) provides courts with discretion to use an approach that best facilitates
`
`conduct of the litigation. See Abbott Labs. v. Roxane Labs., Inc., C.A. No. 12-457-RGA, 2013
`
`WL 2322770, at *4 (D. Del. May 28, 2013) (emphasizing that “a court’s focus when assessing a
`
`Rule 25(c) motion must be on whether substitution or joinder would best facilitate the conduct of
`
`the litigation” (internal quotation marks and citation omitted)); 7 see also Travelers Ins. Co. v.
`
`Broadway W. St. Assocs., 164 F.R.D. 154, 164 (S.D.N.Y. 1995) (substitution proper under
`
`Rule 25(c) where parties to be substituted were the “real parties in interest and their substitution
`
`as plaintiffs w[ould] facilitate th[e] action”); Dollar Dry Dock Sav. Bank v. Hudson St. Dev.
`
`Assocs., 1995 WL 412572, at *4 (S.D.N.Y. July 12, 1995) (same); see also Gen. Battery Corp.,
`
`100 F.R.D. at 261. Where there is no dispute that a party’s interest has been transferred in its
`
`entirety – as is the case here – courts routinely substitute the true party in interest, thus removing
`
`the original party from the action. See, e.g., Hawke Assocs. v. City Fed. Sav. Bank, 787 F. Supp.
`
`423, 425 (D.N.J. 1991) (substitution required for “the actual transferee in interest of any rights
`
`and obligations” of the original party); Bank of New England, N.A. v. Callahan, 758 F. Supp. 61,
`
`62-63 (D.N.H. 1991) (substitution required where successor purchased assets of plaintiff that
`
`included rights being sued on).
`
`There is no reasonable basis to keep Nokia Corporation in this action. It has no
`
`remaining interest in this action, and its presence will only impose unnecessary burden,
`
`complexity, and expense on the parties and the Court. Nokia Corporation no longer produces,
`
`manufactures, or sells the products at issue in this case (see Nokia Form 6-K, Ex. 1, at 14; see
`
`also supra fn1). It will not be subjected to any ultimate liability as a result of this action, it will
`
`
`7
`This Report & Recommendation by Magistrate Burke was adopted in its entirety by
`Judge Andrews on June 18, 2013. See C.A. NO. 12-457-RGA-CJB (D. Del.), D.I. 65.
`
` Ex. 2001 - 00012
`
`- 9 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 13 of 19 PageID #: 24181
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`
`not be entitled to recovery under any of the pled counterclaims regarding the transferred
`
`business, and its presence will not facilitate the litigation in any way. To the contrary, if Nokia
`
`Corporation remains as a party, it will only increase the burden and expense for the other parties
`
`and for the Court. See, e.g., Dollar Dry Dock Sav. Bank, 1995 WL 412572, at *4 (granting
`
`substitution under Rule 25(c) where it “will expedite and simplify the action.”).
`
`MMO – including the transferred subsidiary Nokia Inc. – is now the interested
`
`party, not Nokia Corporation. MMO has sole responsibility for controlling and directing the
`
`litigation with respect to the acquired business, and it has the sole authority to enter into any
`
`settlement of the case. MMO’s assumption of liability in this action ensures that it will bear the
`
`burden of any alleged damages or losses – which, as a well-capitalized entity, MMO will be fully
`
`able to discharge (see Orndorff Decl., Ex. 2, at ¶ 5).
`
`B.
`
`InterDigital’s Objections to Removal of Nokia Corporation as a
`Defendant are Inapposite
`
`1.
`
`Removal of Nokia Corporation Does Not Pose any
`Significant Prejudice to InterDigital
`
`InterDigital will not face any significant prejudice from the proposed substitution.
`
`The only issue it raises, regarding an alleged need for further discovery from Nokia Corporation,
`
`is illusory. MMO is in the best position to respond to factual allegations given the transfer of the
`
`D&S Business operations, including employees and business records, to MMO. MMO now
`
`employs the D&S Business personnel and management, and it possesses, or has access to, all
`
`relevant documents and records (see Orndorff Decl., Ex. 2, at ¶ 4; Nokia Form 6-K, Ex. 1, at 46).
`
`To the extent there may be remaining discovery required from Nokia Corporation, it has
`
`expressly agreed “to reasonably respond, subject to appropriate objections, to discovery requests
`
`directed at Nokia [Corporation] and propounded in the Action both before and after Microsoft
`
`Mobile takes control of the Actions” (D.I. 270-1, Rees Decl., Ex. C ¶ 4 (emphasis added)).
`
` Ex. 2001 - 00013
`
`- 10 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 14 of 19 PageID #: 24182
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`
`InterDigital fails to cite any specific factual issue for which its claims would
`
`require further discovery from Nokia Corporation. Although it references two Nokia
`
`Corporation employees as potential witnesses (see InterDigital Br. at 5), InterDigital does not
`
`explain the purported relevance of their testimony to InterDigital’s claims. InterDigital even
`
`goes so far as to suggest it may require discovery of the “Purchase Agreement between MMO
`
`and Nokia,” despite the Court having already rejected that same request (see id.; Transcript of
`
`February 5, 2014 Hearing (attached as Ex. 8) at 16:13-17:3)). Moreover, information about the
`
`acquisition is also available from MMO, to the extent discoverable. Any suggestion that
`
`substitution of MMO for Nokia Corporation would impair discovery is thus unfounded.
`
`2.
`
`Nokia Corporation’s Future Activities Provide No
`Reason to Keep it in the Case
`
`Similar to InterDigital’s arguments to the ITC, it makes a vague suggestion that
`
`substitution is inappropriate because Nokia Corporation “can continue sales of infringing
`
`products at anytime if it so chooses” (InterDigital Br. at 5). Whatever the ultimate resolution of
`
`this issue may be at the ITC, it has no merit in an Article III court. InterDigital’s contentions
`
`have only identified MMO products as being accused, and discovery is now closed. With both
`
`fact and expert discovery on patent liability complete, this case is well past the point where
`
`InterDigital can seek to expand the scope of its allegations to any products other than those now
`
`owned by MMO, including any products Nokia Corporation might make, import, or sell in the
`
`future. This case is now limited to a very specific set of products, and Nokia Corporation no
`
`longer has any involvement with them. In this regard, the ITC ALJ’s initial determinations to
`
`keep Nokia Corporation in the ITC investigations have no bearing here (see Ex. 7; D.I. 270-1,
`
`Rees Decl., Ex. F). Requiring Nokia Corporation to remain in this case based on mere
`
`speculation that Nokia Corporation may someday manufacture some yet unidentified product
`
` Ex. 2001 - 00014
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`- 11 -
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`

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`Case 1:13-cv-00010-RGA Document 303 Filed 07/22/14 Page 15 of 19 PageID #: 24183
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`that InterDigital might think infringes its patent falls far short of any cognizable claim or
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`controversy under the Article III. Leaving Nokia Corporation in the case under such reasoning
`
`would amount to seeking an improper advisory opinion. E.g., Chafin v. Chafin, 133 S. Ct. 1017,
`
`1023 (2013) (“Federal courts may not . . . give ‘opinion[s] advising what the law would be upon
`
`a hypothetical state of facts.’”) (quoting North Carolina v. Rice, 404 U.S. 244, 246 (1971) (per
`
`curiam)).
`
`C.
`
`the Presently Pled
`for
`is Required
`Rule 25(c) Substitution
`Counterclaims, Regardless of Nokia Corporation’s Status as a
`Defendant.
`
`Rule 25(c) applies not only to the transfer of liabilities from MMO to Nokia
`
`Corporation, but also to the transfer of Nokia Corporation’s presently pled affirmative
`
`counterclaims to MMO, which are not addressed by InterDigital’s motion. A “transfer of
`
`interest” in a counterclaim occurs, for example, when a new party assumes all interest in that
`
`claim. See, e.g., Gen. Battery Corp. v. Globe-Union, Inc., 100 F.R.D. 258, 261-63 (D. Del.
`
`1982). Thus, it is proper to replace an original counterclaim-plaintiff with a party to whom the
`
`original plaintiff has transferred all interest in the counterclaim, particularly where that new party
`
`“is placed in the identical position of” the original plaintiff and the “allegations in the
`
`counterclaim and the relief sought are identical.” Id. at 263.
`
`There can be no reasonable dispute that a “transfer of interest” has also occurred
`
`with respect to the presently pled counterclaims. In parallel with MMO ass