Earlier this month we covered InterDigital’s efforts to dismiss Huawei and ZTE’s FRAND counterclaims, which were asserted against InterDigital in litigations in the U.S. District Court in Delaware. Yesterday, InterDigital filed another motion to dismiss FRAND-related counterclaims in a different Delaware district court litigation — this time, InterDigital seeks to have Nokia’s FRAND counterclaims dismissed:
Much of InterDigital’s motion covers the same ground as its motions filed in the Huawei/ZTE cases, so we won’t bother going into too much detail here. In short, InterDigital claims that Nokia’s FRAND-related counterclaims are compulsory counterclaims that should have been brought in an earlier action involving InterDigital and Nokia (and notes that in a separate action in the Southern District of New York, some FRAND-related counterclaims have already been dismissed on this basis). Furthermore, InterDigital argues that the declaratory judgment claims are not ripe and will result in the court issuing an advisory opinion, and that Nokia has failed to plead the existence of a contractual FRAND obligation.
One aspect of InterDigital’s motion differs from the Huawei/ZTE cases, though, and that’s because Nokia asserted claims for a violation of the California state Unfair Competition Law (UCL) in addition to its declaratory judgment and breach of contract claims. InterDigital seeks dismissal of these claims as well, arguing that (1) neither company is incorporated or has its principal place of business in California; and (2) none of the conduct that allegedly gave rise to the violations — licensing negotiations and the filing of ITC complaints — took place in California. Nokia argues that the UCL does not have extraterritorial effect. Lastly, InterDigital argues that the relief sought by Nokia — which included attorneys’ fees expended in defending ITC actions and an injunction barring InterDigital from proceeding in the ITC — is not available under the UCL. InterDigital asserts that UCL violations can only lead to restitution or injunctive relief, and that (1) attorneys’ fees are not resitutation; and (2) the claim for injunctive relief would be preempted by federal patent law.