UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before The Honorable Theodore R. Essex Administrative Law Judge

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1 In the Matter of UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before The Honorable Theodore R. Essex Administrative Law Judge CERTAIN HANDHELD ELECTRONIC COMPUTING DEVICES, RELATED SOFTWARE, AND COMPONENTS THEREOF Investigation No. 337-TA-769 RESPONDENTS BARNES & NOBLE, INC S AND BARNESANDNOBLE.COM LLC S MOTION TO APPROVE REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE IN PROCURING EVIDENCE FROM NOKIA CORPORATION AND TO SHORTEN COMPLAINANT MICROSOFT CORPORATION S AND THE STAFF S TIME TO RESPOND Respondents Barnes & Noble, Inc. and barnesandnoble.com llc (collectively Barnes & Noble ) move the Commission to approve a request for international judicial assistance in procuring evidence from Nokia Corporation ( Nokia ) in Finland. Specifically, Barnes & Noble respectfully requests that a Letter of Request for International Judicial Assistance ( Letter of Request ) be signed and sealed by the Administrative Law Judge and sent to the central authority of the Republic of Finland ( Finland ) in accordance with the Hague Convention on the Taking of Evidence in Civil or Commercial Matters, Mar. 18, 1970, 23 U.S.T. 2555, 847 U.N.T.S. 231 ( Hague Convention ). Pursuant to Commission Order No. 2, 3.7, Barnes & Noble also respectfully requests that the Commission shorten the time in which complainant Microsoft Corporation ( Microsoft ) and the Office of Unfair Import Investigations (the Staff ) may respond to this motion to three days.

2 As part of Barnes & Noble s affirmative defense of patent misuse, Barnes & Noble has alleged that Microsoft is improperly expanding the scope of its patents in an attempt to dominate mobile operating systems such as Android that threaten Microsoft s monopoly in PC operating systems. On information and belief, to further that strategy, Microsoft entered into partnership agreements with Nokia, whereby one of the stated motivations for this partnership was to combine the parties respective patent portfolios and to coordinate their offensive use of patents to drive out open source operating systems, including Android specifically, that threaten Microsoft s monopoly. Microsoft and Nokia also recently entered into an agreement with a patent licensing company, MOSAID Technologies, Inc. ( MOSAID ), transferring approximately 2,000 Nokia patents to MOSAID in exchange for MOSAID s efforts to license those patents (or sue those that do not take a license) and promise to pay approximately two-thirds of any royalties back to Microsoft and Nokia. Such coordination between competitors Microsoft and Nokia raises serious issues under the Sherman Act and is further evidence of Microsoft s anticompetitive efforts to dominate Android. On October 20, 2011, the Commission granted Barnes & Noble s application for issuance of a subpoena duces tecum and subpoena ad testificandum requiring Nokia s United States subsidiary (Nokia Inc.) to produce documents and submit to a corporate deposition about the topics described in the Letter of Request, among others. In s and conversations with Barnes & Noble s counsel on and around November 3, 2011, Nokia Inc. s counsel stated that at least a portion of the documents Barnes & Noble seeks are likely located at Nokia Corp. in Finland, and that Nokia Corp. 2

3 would not voluntarily produce the requested documents but rather must be served with a separate international subpoena. It has also been suggested that the agreements with Microsoft and MOSAID were negotiated by the Nokia parent in Finland and hence the knowledgeable deponents are likely to be located in Finland. Indeed, on November 7, 2011, Nokia Inc. moved to quash Barnes & Noble s subpoenas, arguing, in part, that the topics and requests of the subpoenas that relate to Microsoft or MOSAID are targeted at information that is more likely in the possession, custody or control of Nokia Corporation. Hence, this application for international judicial assistance is required. Barnes & Noble has disclosed to Microsoft, other Respondents and the Staff its intention to file the present motion at least two business days prior to filing the motion. The other Respondents do not oppose Barnes & Noble s motion. Respectfully Submitted, Dated: November 14, 2011 /s/ Stuart W. Gold Stephen S. Madsen Peter T. Barbur Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York, NY Telephone: (212) Fax: (212) Counsel for Respondents Barnes & Noble, Inc. and barnesandnoble.com llc 3

4 In the Matter of UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before The Honorable Theodore R. Essex Administrative Law Judge CERTAIN HANDHELD ELECTRONIC COMPUTING DEVICES, RELATED SOFTWARE, AND COMPONENTS THEREOF Investigation No. 337-TA-769 RESPONDENTS BARNES & NOBLE, INC S AND BARNESANDNOBLE.COM LLC S MEMORANDUM OF LAW IN SUPPORT OF MOTION TO APPROVE REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE IN PROCURING EVIDENCE FROM NOKIA CORPORATION AND TO SHORTEN COMPLAINANT MICROSOFT CORPORATION S AND THE STAFF S TIME TO RESPOND Respondents Barnes & Noble, Inc. and barnesandnoble.com llc (collectively Barnes & Noble ) move the Commission to approve a request for international judicial assistance in procuring evidence from Nokia Corporation ( Nokia ). Specifically, Barnes & Noble respectfully requests that the Letter of Request for International Judicial Assistance ( Letter of Request ), attached hereto at Appendix 1, be signed and sealed by the Administrative Law Judge and sent to the central authority of the Republic of Finland ( Finland ) in accordance with the Hague Convention on the Taking of Evidence in Civil or Commercial Matters, Mar. 18, 1970, 23 U.S.T. 2555, 847 U.N.T.S. 231 ( Hague Convention ). 1 Pursuant to Commission Order No. 2, 3.7, Barnes & Noble also respectfully requests that the Commission shorten the time in which complainant 1 A certified translation into Finnish is attached hereto as Appendix 2.

5 Microsoft Corporation ( Microsoft ) and the Office of Unfair Import Investigations (the Staff ) may respond to this motion to three days. Pursuant to Commission Order No. 2, 3.2, Barnes & Noble hereby certifies that, prior to filing this motion, it contacted all parties on November 4, 2011, regarding its intention to seek approval of this request for international judicial assistance. 2 BACKGROUND In response to Microsoft s allegation that Barnes & Noble s Nook and Nook Color e-book reader products infringe certain Microsoft patents, Barnes & Noble has raised the affirmative defense of patent misuse. As part of that affirmative defense, Barnes & Noble has alleged that Microsoft is improperly expanding the scope of its patents in an attempt to dominate mobile operating systems such as Android that threaten Microsoft s monopoly in PC operating systems. To further that strategy, Microsoft entered into partnership agreements with Nokia, whereby, among other things, Nokia agreed to replace its Symbian operating system with Microsoft s Windows Phone 7 as its principal smartphone strategy. In addition to increasing Microsoft s market share in the worldwide mobile operating system market, one of the stated motivations for this partnership was to combine the parties respective patent portfolios and to coordinate their offensive use of patents to drive out open source operating systems, including Android specifically, that threaten Microsoft s monopoly. See, e.g., Conversations by Nokia: Q&A videos, break down, (last visited 2 The other Respondents in this litigation have no objection to this motion. 2

6 Nov. 10, 2011). 3 Microsoft and Nokia also recently entered into an agreement with a patent licensing company, MOSAID Technologies, Inc. ( MOSAID ), transferring approximately 2,000 Nokia patents to MOSAID in exchange for MOSAID s efforts to license those patents (or sue those that do not take a license) and promise to pay approximately two-thirds of any royalties back to Microsoft and Nokia. The foregoing coordination between competitors Microsoft and Nokia raises serious issues under the Sherman Act and is further evidence of Microsoft s anticompetitive efforts to dominate Android. 4 To develop these facts in greater detail and acquire admissible evidence tending to show Microsoft s anticompetitive conduct, Barnes & Noble seeks documents and testimony about Nokia and Microsoft s business partnerships, the agreement to coordinate their use of their combined patent portfolio and subsequent agreement with MOSAID to share revenues from a group of patents originating from Nokia, the connection between Microsoft s demand that Barnes & Noble enter into a licensing agreement in order to continue to use Android and Microsoft s coordinated patent 3 On February 13, 2011, two days after Nokia and Microsoft announced their strategic agreement, Stephen Elop, Nokia s CEO, engaged in a videotaped question and answer session after delivering his keynote address at the Mobile World Congress. In response to a question about Nokia s pending litigation against Apple s ios, Mr. Elop stated that: It is the case, and was absolutely a topic of discussion with Microsoft, that Microsoft plus Nokia, has a remarkably strong intellectual property portfolio. That is something we will use appropriately within the context of our ecosystem, which means both defending the ecosystem from outside attacks, as well as appropriately ensuring that the value that we ve created through our patents are properly collected from other people who may choose to take advantage of that technology. Conversations by Nokia: Q&A videos, break down, com/2011/02/22/qa-videos-break-down (last visited Nov. 10, 2011). 4 See United States v. Singer Mfg. Co., 374 U.S. 174 (1963) (holding that a horizontal offensive patent agreement violated the Sherman Act). 3

7 strategy with Nokia, the companies analysis of their combined shares of the mobile operating system and mobile device markets and plans to increase those shares, and their strategy for addressing the threat that Android poses to their business models. Barnes & Noble has already made efforts to obtain this discovery without burdening the judicial authorities of other jurisdictions. On October 20, 2011, the Commission granted Barnes & Noble s application for issuance of a subpoena duces tecum and subpoena ad testificandum requiring Nokia s United States subsidiary (Nokia Inc.) to produce documents and submit to a corporate deposition about the topics described in the Letter of Request, among others. In s and conversations with Barnes & Noble s counsel on and around November 3, 2011, Nokia Inc. s counsel stated that at least a portion of the documents Barnes & Noble seeks, specifically documents relating to the negotiations preceding the Nokia and Microsoft agreements, are likely located at Nokia Corp. in Finland, and that Nokia Corp. must be served with a separate international subpoena. (See Declaration of Stuart W. Gold, dated 11/14/11, Exh. A.) It has also been suggested that the agreements with Microsoft and MOSAID were negotiated by the Nokia parent in Finland and hence the knowledgeable deponent(s) are likely to be located in Finland. Indeed, on November 7, 2011, Nokia Inc. moved to quash Barnes & Noble s subpoenas, arguing, in part, that the topics and requests of the subpoenas that relate to Microsoft or MOSAID are targeted at information that is more likely in the possession, custody or control of Nokia Corporation. (Mot. to Limit or Quash Barnes & Noble, Inc. and barnesandnoble.com s Subpoena Duces Tecum and Ad Testificandum to Third Party Nokia Inc., filed November 7, 2011, at 3). Similarly, Nokia Inc. argues that the deposition subjects are better addressed to Nokia 4

8 Corp. s CEO and others in Finland. 5 Id. Hence, this application for international judicial assistance is required. ARGUMENT I. THE COMMISSION MAY ISSUE THE LETTER OF REQUEST UNDER THE HAGUE CONVENTION. The Hague Convention provides: In civil or commercial matters a judicial authority of a Contracting State may, in accordance with the provisions of the law of that State, request the competent authority of another Contracting State, by means of a Letter of Request, to obtain evidence, or to perform some other judicial act. Hague Convention, Art. 1. Both the United States and Finland are Contracting States to the Hague Convention. Finland ratified the Hague Convention on April 7, See Hague Conf. on Private Int l Law, Status table, act=conventions.status&cid=82 (last updated May 12, 2011). Likewise, the Commission is a proper judicial authority for purposes of requesting international judicial assistance, as recognized by administrative law judges in several Section 337 investigations. See Certain Home Vacuum Packaging Machs., Inv. No. 337-TA-496, Order No. 39, 2004 ITC Lexis 39 (U.S.I.T.C. Jan. 12, 2004), upheld with amendment, Commission Order (Mar. 24, 2004) (letter of request granted by the administrative law judge under Hague Convention); Certain Network Interface Cards and Access Points for Use in Direct 5 Finnish law requires that the proposed deponents be identified. We have identified the following individuals to be deposed as most likely to have the relevant information: Stephen Elop, Chief Executive Officer and President of Nokia Corp.; Kai Öistämö, Executive Vice President and Chief Development Officer of Nokia Corp. (lead negotiator on Microsoft and Nokia s Windows Phone deal); Jukka Nihtilä, Head of Business Development, IPR, of Nokia Corp. (lead negotiator on Nokia and Microsoft s deal with MOSAID); Mary T. McDowell, Executive Vice President in charge of Nokia s Mobile Phones Unit; and Jaakko Kaskinen, Senior Manager, Nokia M&A. Mr. Kaskinen might be a full- or part-time resident of the United States, and Barnes & Noble will also attempt to obtain his testimony in the United States. 5

9 Sequence Spread Spectrum Wireless Local Area Networks and Prods. Containing Same, Inv. No. 337-TA-455, 2001 WL (U.S.I.T.C. Sep. 17, 2001) (letter of request signed and sealed by administrative law judge pursuant to Hague Convention); Certain Processes for the Manufacture of Skinless Sausage Casings and Resulting Prod., Inv. No. 337-TA-148/169, Order No. C-5, 1984 WL (U.S.I.T.C. Jan. 20, 1984) (international judicial assistance granted under Hague Convention); see also Certain Doxorubicin and Preparations Containing Same, Inv. No. 337-TA-300, Order No. 7, 1989 WL (U.S.I.T.C. Aug. 23, 1989) (letter of request granted by administrative law judge so that applicant may proceed through diplomatic channels). II. THE LETTER OF REQUEST IS WARRANTED BECAUSE THE EVIDENCE TO BE OBTAINED FROM NOKIA BEARS DIRECTLY ON BARNES & NOBLE S PATENT MISUSE DEFENSE, IS NARROWLY TAILORED AND IS UNOBTAINABLE BY OTHER MEANS. The Commission should issue the Letter of Request sought by Barnes & Noble for several reasons. First, the deposition testimony and documents requested are highly relevant to Barnes & Noble s patent misuse affirmative defense. As discussed above, Microsoft entered into strategic partnerships with Nokia, including a horizontal agreement to assert patents offensively. Those partnerships further Microsoft s strategy of using patents to impair the growth and development of mobile operating systems that pose a threat to its monopoly in PC operating systems. Indeed, based on public statements by Nokia s CEO, it appears that Microsoft and Nokia have partnered to wield the companies remarkably strong intellectual property portfolio to stifle the Android threat. Conversations by Nokia: Q&A videos, break down, (last visited Nov. 10, 2011). Microsoft and Nokia s September 2011 agreement with MOSAID further facilitated that strategy. MOSAID acquired and agreed to license the patents that originated with Nokia. 6

10 MOSAID agreed to give Microsoft and Nokia two-thirds of any licensing revenue it generates. Microsoft s strategy in partnering with Nokia and MOSAID to license the patents or sue those that do not take a license raises Android distributors costs, pressuring those device makers into switching their development efforts from Android to Windows Phone 7 devices. Such an offensive use of these patents is a naked restraint of trade, which suppresses competition. The evidence sought will tend to prove that Microsoft is using patents, assuming they are even valid, that are trivial with respect to Android-based devices (as well as other open source operating devices) in a coordinated campaign to restrict competition and is expanding that strategy by linking with Nokia and MOSAID. Thus, Barnes & Noble anticipates that the requested testimony and documents will be highly material to the issue of patent misuse. Second, Barnes & Noble s Letter of Request is narrowly tailored to seek information that will provide evidence of the details and reason for the Nokia-Microsoft partnership and subsequent arrangement with MOSAID, including information about the companies agreement to use their combined patent portfolio, the connection between that agreement and Microsoft s demand that Barnes & Noble pay a licensing fee in order to continue to use the open source Android operating system, and the companies analyses of the threat Android poses to their business models. Consistent with Finland s Declaration to the Hague Convention stating that Finland will not execute letters of request for broad pre-trial discovery, Barnes & Noble s Letter of Request seeks only particular documents and does not request that Nokia disclose or produce other relevant documents it may have in its possession or control. 6 6 See Republic of Finland, Declaration 5 to Hague Convention, /index_en.php?act=status.comment&csid=500&disp=resdn (last visited Nov. 10, 2011). 7

11 Third, Barnes & Noble is unable to obtain that information by any other means. The Nokia entity that entered into the relevant agreements with Microsoft is in Finland. As indicated above (pp. 4-5), it appears highly unlikely that Barnes & Noble s attempts to obtain relevant information from Nokia s United States subsidiary will satisfy its evidentiary needs. Moreover, with a December discovery end-date and a hearing scheduled for February 6, 2012, there is not time to first complete discovery of Nokia s United States subsidiary (and complete the review of Microsoft documents) before making this application. III. A SHORTENED TIME TO RESPOND TO THIS MOTION IS NECESSARY GIVEN THE TIMEFRAME FOR DISCOVERY AND THE FEBRUARY 6, 2012 HEARING DATE. Pursuant to Commission Order No. 2, 3.7, Barnes & Noble respectfully requests that the Commission shorten the time in which complainant Microsoft and the Staff may respond to this motion to three days. A shortened response time is necessary given the relatively short timeframe for discovery and the upcoming hearing in this investigation, as well as the significant amount of time involved in obtaining international judicial assistance. CONCLUSION For the reasons set forth above, Barnes & Noble respectfully requests that the Commission issue the Letter of Request. Barnes & Noble further respectfully requests that the Commission shorten the time to respond to this motion to three days. Further, Barnes & Noble will comply with procedures required under Finnish law for the taking of depositions. 8

12 Respectfully Submitted, Dated: November 14, 2011 /s/ Stuart W. Gold Stephen S. Madsen Peter T. Barbur Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York, NY Telephone: (212) Fax: (212) Counsel for Respondents Barnes & Noble, Inc. and barnesandnoble.com llc 9

13 APPENDIX 1

14 UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before The Honorable Theodore R. Essex Administrative Law Judge In the Matter of CERTAIN HANDHELD ELECTRONIC COMPUTING DEVICES, RELATED SOFTWARE, AND COMPONENTS THEREOF Investigation No. 337-TA-769 REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS The United States International Trade Commission ( Commission ) presents its compliments to the Ministry of Justice of Finland and respectfully requests international judicial assistance to obtain evidence to be used in a civil action entitled In the Matter of Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, Investigation No. 337-TA-769, pending before the Commission. Based on the representations of Respondents Barnes & Noble, Inc. and barnesandnoble.com llc (collectively Barnes & Noble ), the Commission believes that the testimony of Stephen Elop, Chief Executive Officer and President, Kai Öistämö, Executive Vice President and Chief Development Officer, Mary T. McDowell, Executive Vice President in charge of Nokia s Mobile Phones Unit, Jaakko Kaskinen, Senior Manager of Nokia M&A, and Jukka Nihtilä, Head of Business Development, of Nokia Corporation, Keilalahdentie 2-4, P.O. Box 226, FIN Nokia Group, Finland ( Nokia ), persons with knowledge of the topics set forth below, and the particular documentary evidence in the possession of Nokia also stated herein, are necessary for

15 Barnes & Noble to defend fairly against the allegations made by Complainant Microsoft Corporation in this matter. Therefore, the undersigned applicant has the honor to submit the following request that the Ministry of Justice of Finland cause the below identified witnesses to appear and testify, and to produce the documentary evidence referenced herein to the legal representatives of Barnes & Noble, in conformity with Article 3 of the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters. The documents and information sought will be subject to the Protective Order in the action pending before the Commission, attached hereto as Exhibit 1. The Commission respectfully requests that the Ministry of Justice expedite this request, if possible and permissible. There are two important deadlines in the action pending before this Commission relevant to this Request. First, fact discovery must conclude by December 14, Second, the Commission s hearing in this action begins February 6, Thus, to the extent the Ministry of Justice can expedite this request, it is necessary to accelerate the process of obtaining the evidence requested below so that Barnes & Noble can defend itself fairly against the allegations made by Complainant Microsoft Corporation in this matter. 1. Sender: Office of the Secretary United States International Trade Commission 500 E Street, N.W. Washington, D.C U.S.A. (Telephone number: (202) ) 2. Central Authority of the Ministry of Justice Requested State: P.O. Box 25 FIN Government Finland (Telephone number: ) (Fax number: ) 3. Person to whom the executed Honorable Theodore R. Essex request is to be returned: Administrative Law Judge United States International Trade Commission A-2

16 500 E Street, N.W., Room 317 Washington, D.C Specification of the date by A response is requested by November 25, 2011, or as which the requesting soon as practicable before that, in order to ensure that authority requires receipt of the evidence may be obtained before the period for the response to the Letter of fact discovery concludes on December 14, Request: Expedient treatment of this request will allow the parties and the witness(es) to arrange a mutually agreeable date for testimony and avoid disruption to the witness(es) s business or personal plans. In conformity with Article 3 of the Convention, the undersigned applicant has the honor to submit the following request: 5. a. Requesting judicial authority: United States International Trade Commission 500 E Street, N.W. Washington, D.C b. To the competent authority of: c. Name of the case and any identifying number: 6. Names and addresses of the parties and their representatives: a. Plaintiff (Complainant): Republic of Finland In the Matter of Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, Investigation No. 337-TA-769 Microsoft Corporation Representatives: V. James Adduci II Andrew Pratt Jonathan J. Engler ADDUCI, MASTRIANI & SCHAUMBERG LLP 1200 Seventeenth Street, NW, Fifth Floor Washington, D.C Dale M. Heist Daniel J. Goettle WOODCOCK WASHBURN LLP Cira Centre, 12th Floor 2929 Arch Street Philadelphia, PA Robert A. Rosenfeld ORRICK, HERRINGTON & SUTCLIFFE LLP 405 Howard Street San Francisco, CA Telephone: (415) John A. Jurata, Jr. A-3

17 Jonathan A. Direnfeld ORRICK, HERRINGTON & SUTCLIFFE LLP 1152 Fifteenth Street, NW Washington, DC Telephone: (202) Brian R. Nester Kevin C. Wheeler SIDLEY AUSTIN LLP 1501 K Street, NW Washington, D.C b. Defendants (Respondents): Richard A. Cederoth John W. McBride SIDLEY AUSTIN LLP One South Dearborn Chicago, IL Barnes & Noble, Inc., barnesandnoble.com llc Representatives: Richard L. DeLucia A. Antony Pfeffer Charles A. Weiss Paul M. Richter John R. Kenny KENYON & KENYON LLP One Broadway New York, NY Marcia H. Sundeen Jeffrey S. Gerchick Aimee N. Soucie KENYON & KENYON LLP 1500 K Street, NW Washington, DC Stuart W. Gold Stephen S. Madsen Peter T. Barbur CRAVATH, SWAINE & MOORE LLP Worldwide Plaza 825 Eighth Avenue New York, NY Representatives in Finland: Patrik Lindfors Petra Kiurunen LINDFORS & CO ATTORNEYS AT LAW A-4

18 Kluuvikatu Helsinki Inventec Corporation Representatives: Richard DeLucia Elizabeth Gardner John Kenny Paul Richter Charles Weiss Antony Pfeffer KENYON & KENYON LLP One Broadway New York, NY Marcia H. Sundeen Jeffrey S. Gerchick Aimee N. Soucie KENYON & KENYON LLP 1500 K Street, N.W. Washington, DC Foxconn Electronics, Inc., Foxconn Precision Component (Shen Zhen) Co. Ltd., Foxconn International Holdings Ltd. and Hon Hai Precision Industry Co., Ltd. Representatives: Edward M. Lebow HAYNES AND BOONE, LLP 1615 L Street, N.W., Suite 800 Washington, D.C Glenn E. Westreich Steven M. Levitan Inchan M. Kwon HAYNES AND BOONE, LLP 2033 Gateway Place, Suite 300 San Jose, CA c. Other parties: United States International Trade Commission Representative: Jeffrey T. Hsu Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street, S.W., Suite 401 A-5

19 7. Nature of the proceedings and summary of the facts: Washington, D.C The nature of the proceedings for which the evidence is requested is a civil patent infringement action based upon an amended verified complaint filed by Microsoft Corporation ( Microsoft ) on April 8, The complaint alleges that Barnes & Noble, Inc., barnesandnoble.com llc, Foxconn Electronics, Inc., Foxconn Precision Component (Shen Zhen) Co. Ltd., Foxconn International Holdings Ltd. and Hon Hai Precision Industry Co., Ltd. and Inventec Corporation ( Respondents ) import, sell for importation and/or sell within the United States after importation certain handheld electronic computing devices, related software and components thereof that allegedly infringe U.S. Patent No. 5,778,372, U.S. Patent No. 5,889,522, U.S. Patent No. 6,339,780, U.S. Patent No. 6,891,551 and U.S. Patent No. 6,957,233. Microsoft seeks an exclusion order barring importation of the allegedly infringing devices. The United States International Trade Commission (the Commission ) under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), as amended, instituted proceedings based on Microsoft s complaint and subsequently published notice of those proceedings in The Federal Register. Upon institution, the proceeding was assigned to Administrative Law Judge Theodore R. Essex to preside over pretrial matters, conduct a trial and issue an initial determination on the merits of the investigation. The initial determination of Judge Essex is subject to possible review by the Commission, with a right of appeal to the U.S. Court of Appeals for the Federal Circuit and further appeal to the Supreme Court of the United States. Several defenses have been raised against Microsoft s allegations of patent infringement, including the defenses of patent misuse, non-infringement, invalidity of the patents, unenforceability of the patents, public interest and lack of domestic industry. The patent misuse defense asserted by Respondents Barnes & Noble, Inc. and barnesandnoble.com llc requires information about Microsoft s efforts to use its licensing practices to broaden improperly the scope of its patents with anticompetitive effect. 8. Evidence to be obtained and It is respectfully requested that the executing judicial A-6

20 purpose: authority of Finland require Stephen Elop (CEO and President), Kai Öistämö (Exec. Vice President and Chief Development Officer), Mary T. McDowell (Executive Vice President), Jaakko Kaskinen (Senior Manager of Nokia M&A) and Jukka Nihtilä (Head of Business Development) to appear at a time and place to be determined by that authority, and to give testimony on oral examination concerning these topics: 1 a. The subject matter of the documents produced in response to this request. b. Discussions Nokia has had with Microsoft or MOSAID Technologies Incorporated ( MOSAID ) relating to Barnes & Noble s Nook and Nook Color products. c. Communications and agreements with Microsoft or MOSAID concerning the assertion of patent rights against devices using the Android Operating System or other open source operating system. d. The agreement or partnership with Microsoft announced on or about February 11, 2011, including Nokia s or Microsoft s strategy or rationale regarding its decision to enter into the agreement or partnership. e. The agreements entered into by Microsoft and Nokia on or about April 21, f. The role of Nokia s CEO Stephen Elop in developing a coordinated strategy with Microsoft to compete with the Android Operating System or any other open source operating system. g. Discussions between Nokia and Microsoft, including any discussions between CEO 1 While Barnes & Noble believes that at their levels in the company each of the witnesses will have relevant information about all of the topics listed, Kai Öistämö s testimony will likely focus more on topics (a), (d), (e), (g), (j), (k), (l) and (m), and Jukka Nihtilä s testimony will likely focus more on (a), (b), (c), (d), (e), (g), (h), (i), (j), (n), (o), (p) and (q). A-7

21 Stephen Elop and Microsoft CEO Steven Ballmer, about Nokia s and Microsoft s partnership agreement, Nokia s and Microsoft s combined patent portfolio, the Android Operating System or any other open source operating system. h. Nokia s knowledge of U.S. Patent No. 5,778,372, U.S. Patent No. 5,889,522, U.S. Patent No. 6,339,780, U.S. Patent No. 6,891,551, U.S. Patent No. 6,957,223, U.S. Patent No. 5,579,517, U.S. Patent No. 5,652,913, U.S. Patent No. 5,758,352, U.S. Patent No. 6,791,536 and U.S. Patent No. 6,897,853, or any other patent(s) that Nokia, Microsoft or MOSAID claims controls or dominates the Android Operating System or any other open source operating system. i. Nokia s offensive and defensive use of its patent portfolio after entering its partnership with Microsoft in February 2011, including its licensing practices and litigation strategy. j. Nokia s business plans or strategies relating to open source software, including its business plans relating to the Android Operating System or any other open source operating system. k. The impact or effect of the Android Operating System or any other open source operating system on Nokia s or Microsoft s businesses, including businesses relating to mobile devices and tablet computers. l. Nokia s and Microsoft s plans, strategies or efforts to increase their collective share or individual shares of the mobile device market, mobile operating system market or PC operating system market. m. The current or projected market share, including global market share and U.S. market share, of mobile devices and mobile operating systems. n. The agreement entered into by MOSAID and Core Wireless on or about September 1, A-8

22 2011. o. The agreements entered into by Microsoft, Nokia and MOSAID on or about September 1, p. Nokia s strategy or rationale regarding its decision, announced on or about September 1, 2011, to enter into a revenue sharing arrangement with Microsoft and MOSAID. q. MOSAID s planned or predicted offensive or defensive use of patent rights, including regarding the patent portfolio of Core Wireless or any potential role played or to be played by Microsoft or Nokia in licensing or asserting MOSAID s patents. The executing judicial authority is also requested to require Nokia to produce the following documents for use as evidence at trial to the legal representatives of Barnes & Noble no later than ten (10) days prior to the examination of the witnesses: a. The agreements entered into by Microsoft and Nokia on or about February 11, 2011 and on or about April 21, b. The agreements entered into by Microsoft, Nokia and MOSAID on or about September 1, c. The analyses created in preparation for and in conjunction with the agreements specified in subsections (a) and (b) with respect to Microsoft and Nokia s combined patent portfolio. d. The analyses created in preparation for and in conjunction with the agreements specified in subsections (a) and (b) with respect to the patents infringed by the Android Operating System. e. The analyses created in preparation for and in conjunction with the agreements specified in subsections (a) and (b) with respect to the threat posed by the Android A-9

23 Operating System to Nokia s business model. f. The analyses created in preparation for and in conjunction with the agreements specified in subsections (a) and (b) with respect to the patents infringed by Barnes & Noble s Nook products. g. The analyses created in preparation for and in conjunction with the agreements specified in subsections (a) and (b) with respect to the competition posed by Barnes & Noble s Nook products. Purpose of the evidence: The purpose of the testimony and documents sought is to obtain relevant evidence to be used at trial to defend against the allegations made in Microsoft s complaint. Specifically, Barnes & Noble seeks the evidence requested in order to prove that Microsoft is improperly expanding the scope of its patents in an attempt to dominate mobile operating systems such as Android that threaten Microsoft s monopoly in PC operating systems. Such conduct constitutes patent misuse, which renders the patents at issue unenforceable. The evidence from Nokia is highly relevant because Microsoft recently entered into partnership agreements with Nokia whereby, among other things, Nokia agreed to replace its Symbian operating system with Microsoft s Windows Phone 7 as its principal smartphone strategy. In addition to increasing Microsoft s market share in the worldwide mobile operating system market, one of the publicly stated motivations for this partnership was to combine the parties respective patent portfolios and to coordinate their offensive use of the patents to drive out open source operating systems, including Android specifically, that threaten Microsoft s monopoly. Microsoft and Nokia also recently entered into an agreement with a patent licensing company, MOSAID, transferring approximately 2,000 Nokia patents to MOSAID in exchange for MOSAID s efforts to license those patents (or sue those that do not take a license) and promise to pay approximately two-thirds of any royalties back to Microsoft and Nokia. A-10

24 Barnes & Noble seeks the evidence requested to prove that Microsoft is using patents, assuming they are even valid, that are trivial with respect to Android based devices (as well as other open source operating devices) in a coordinated campaign to restrict competition and is expanding that strategy by linking with Nokia and MOSAID in violation of the U.S. antitrust laws and constituting patent misuse. Thus, Barnes & Noble anticipates that the requested testimony and documents will be highly material to the issue of patent misuse. 9. Identity and address of any person to be examined: 10. Questions to be put to the persons to be examined or statement of the subject matter about which they are to be examined: Nokia Corp. s U.S. subsidiary has represented to Barnes & Noble and to the Commission that the evidence sought is more likely in the possession, custody or control of Nokia Corporation, and that the testimony subjects should be addressed to Nokia Corp. s CEO, Stephen Elop, and others in Finland. Nokia Inc. has suggested that the agreements with Microsoft and MOSAID were negotiated by Nokia Corp. in Finland and hence the knowledgeable witness(es) and responsive documents are likely to be located in Finland. Since these constitute major agreements and strategies for Nokia and Microsoft, it is highly likely that they performed detailed analyses regarding these agreements. Thus, Barnes & Noble believes that the evidence requested exists and is in the possession of Nokia Corp. Stephen Elop Kai Öistämö Mary T. McDowell Jaakko Kaskinen Jukka Nihtilä Nokia Corporation Keilalahdentie 2-4 P.O. Box 226 FIN Nokia Group Finland (Telephone No. 358 (0) ) (Fax No ) Please see the topics set forth in part 8 above. 11. Documents or other In accordance with part 8 above, the executing judicial A-11

25 property to be inspected: 12. Any requirement that the evidence be given under oath or affirmation and any specific form to be used: authority is respectfully requested to require Nokia to produce the documentary evidence set forth in that part. The following is respectfully requested: a. An examiner or other appropriate judicial officer of Finland direct that the witness be duly sworn in accordance with the applicable procedures of Finland; b. The testimony be recorded by the court, and the court provide Barnes & Noble with a copy of the tape; and c. The court allow the parties to record the testimonies by a videographer chosen by Barnes & Noble s legal representatives. 13. Special method or procedure to be followed: In the event that the evidence cannot be taken in the manner requested, it is to be taken in such manner as provided by local law for the formal taking of evidence. Pursuant to Article 9 of the Hague Convention, it is respectfully requested that: a. The examination be conducted orally; b. The parties legal representatives or their designees, their interpreters, a stenographer and a videographer by permitted to be present during the examination; c. The stenographer be permitted to record verbatim the examination; d. The videographer be permitted to record the examination by audiovisual means; e. The attorneys identified above in part 6 from the law firm of Lindfors & Co Attorneys at Law, acting as legal representatives to Barnes & Noble, along with the attorneys identified above in part 6 from the law firm Cravath, Swaine & Moore LLP be permitted to conduct the examination and ask questions regarding the topics listed in part 8 above; f. The witness(es) be examined as soon as A-12

26 practicable, but before December 14, 2011, the date for the close of discovery; and the documentary evidence be produced at least ten (10) days before the examination of the witnesses. 14. Request for notification of the time and place for the execution of the Request and identity and address of any person to be notified: The undersigned respectfully requests, pursuant to Article 7 of the Hague Convention, that it be informed in writing of the time when and the place where the proceedings will take place at: Honorable Theodore R. Essex Administrative Law Judge United States International Trade Commission 500 E Street, N.W., Room 317 Washington, D.C It is also requested that notification of the time and place for the execution of this Request be sent to the following representatives of the parties by way of facsimile or V. James Adduci II Andrew Pratt Jonathan J. Engler ADDUCI, MASTRIANI & SCHAUMBERG LLP 1200 Seventeenth Street, NW, Fifth Floor Washington, D.C Telephone: (202) Fax: (202) MSFT-2@adduci.com, MSFT- L14External@woodcock.com, MSFT BN@orrick.com Robert A. Rosenfeld ORRICK, HERRINGTON & SUTCLIFFE LLP 405 Howard Street San Francisco, CA Telephone: (415) Fax: (415) rrosenfeld@orrick.com Stuart W. Gold Stephen S. Madsen Peter T. Barbur CRAVATH, SWAINE & MOORE LLP Worldwide Plaza 825 Eighth Avenue New York, NY A-13

27 Telephone: (212) Fax: (212) Patrik Lindfors Petra Kiurunen LINDFORS & CO ATTORNEYS AT LAW Kluuvikatu Helsinki Telephone: Fax: petra.kiurunen@lindforsco.com Richard DeLucia Elizabeth Gardner John Kenny Paul Richter Charles Weiss Antony Pfeffer KENYON & KENYON LLP One Broadway New York, NY Telephone: (212) Fax: (212) Kenyon@kenyon.com Edward M. Lebow HAYNES AND BOONE, LLP 1615 L Street, N.W., Suite 800 Washington, D.C Telephone: (202) Fax: (202) HonHai769@haynesboone.com Jeffrey T. Hsu, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street, S.W., Suite 401 Washington, D.C Telephone: (202) Fax: (202) Jeffrey.Hsu@usitc.gov 15. Request for attendance or participation of judicial personnel of the requesting authority at the execution of None. A-14

28 the Letter of Request: 16. Specification of privilege or duty to refuse to give evidence under the law of the state of origin: 17. The fees and costs incurred which are reimbursable under the second paragraph of Article 14 or under Article 26 of the Convention, will be borne by: 18. Date of request: The witness(es) may refuse to give evidence only insofar as he or she has a privilege or duty to refuse to give evidence under the laws of the United States or the laws of Finland. Under the law of the United States, the witness(es) may refuse to answer any question if such answer (1) would subject him to a real and appreciable danger of criminal liability in the United States, or (2) would disclose a confidential communication between him and his attorney. Stuart W. Gold Stephen S. Madsen Peter T. Barbur CRAVATH, SWAINE & MOORE LLP Worldwide Plaza 825 Eighth Avenue New York, NY U.S.A. (Attorneys for Respondent Barnes & Noble), 2011 Month Day 19. Signature and seal of the requesting authority: Hon. Theodore E. Essex Administrative Law Judge United States International Trade Commission A-15

29 EXHIBIT 1

30 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN HANDHELD ELECTRONIC Inv. No. 337-TA-769 COMPUTING DEVICES, RELATED SOFTWARE, AND COMPONENTS THEREOF ORDER NO. 1: PROTECTIVE ORDER (April 25, 2011) WHEREAS, documents and information may be sought, produced or exhibited by and among the parties to the above captioned proceeding, which materials relate to trade secrets or other confidential research, development or commercial information, as such terms are used in the Commission's Rules, 19 C.F.R ; IT IS HEREBY ORDERED THAT: 1. Confidential business information is information which concerns or relates to the trade secrets, processes, operations, style of work, or apparatus, or to the production, sales, shipments, purchases, transfers, identification of customers, inventories, amount or source of any income, profits, losses, or expenditures of any person, firm, partnership, corporation, or other organization, or other information of commercial value, the disclosure of which is likely to have the effect of either (i) impairing the Commission's ability to obtain such information as is necessary to perform its statutory functions; or (ii) causing substantial harm to the competitive position of the person, firm, partnership, corporation, or other organization from which the 1

31 information was obtained, unless the Commission is required by law to disclose such information. The term confidential business information includes proprietary information within the meaning of section 777(b) of the Tariff Act of 1930 (19 U.S.C. 1677f(b)). 2(a). Any information submitted, in pre hearing discovery or in a pleading, motion, or response to a motion either voluntarily or pursuant to order, in this investigation, which is asserted by a supplier to contain or constitute confidential business information shall be so designated by such supplier in writing, or orally at a deposition, conference or hearing, and shall be segregated from other information being submitted. Documents shall be clearly and prominently marked on their face with the legend: "CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER," or a comparable notice. Such information, whether submitted in Writing or in oral testimony, shall be treated in accordance with the terms of this protective order. (b). The Administrative Law Judge or the Commission may determine that information alleged to be confidential is not confidential, or that its disclosure is necessary for the proper disposition of the proceeding, before, during or after the close of a hearing herein. If such a determination is made by the Administrative Law Judge or the Commission, opportunity shall be provided to the supplier of such information to argue its confidentiality prior to the time of such ruling. 3. In the absence of Written permission from the supplier or an order by the Commission or the Administrative Law Judge, any confidential documents or business information submitted in accordance with the provisions of paragraph 2 above shall not be disclosed to any person other than: (i) outside counsel for parties to this investigation, including necessary secretarial and support personnel assisting such counsel; (ii) qualified persons taking testimony involving such 2

32 documents or information and necessary stenographic and clerical personnel thereof; (iii) technical experts and their staff who are employed for the purposes of this litigation (unless they are otherwise employed by, consultants to, or otherwise affiliated with a non governmental party, or are employees of any domestic or foreign manufacturer, wholesaler, retailer, or distributor of the products, devices or component parts which are the subject of this investigation); (iv) the Commission, the Administrative Law Judge, the Commission staff, and personnel of any governmental agency as authorized by the Commission; and (v) the Commission, its employees, and contract personnel who are acting in the capacity of Commission employees, for developing or maintaining the records of this investigation or related proceedings for which this information is submitted, or in internal audits and investigations relating to the programs and operations of the Commission pursuant to 5 U.S.C. Appendix 3.l 4. Confidential business information submitted in accordance with the provisions of paragraph 2 above shall not be made available to any person designated in paragraph 3(i)2 and (iii) unless he or she shall have first read this order and shall have agreed, by letter filed with the Secretary of this Commission: (i) to be bound by the terms thereof; (ii) not to reveal such confidential business information to anyone other than another person designated in paragraph 3; and (iii) to utilize such confidential business information solely for purposes of this investigation. 5. If the Commission or the Administrative Law Judge orders, or if the supplier and all parties to the investigation agree, that access to, or dissemination of information submitted as confidential business information shall be made to persons not included in paragraph 3 above, such matter shall only be accessible to, or disseminated to, such persons based upon the conditions pertaining to, and obligations arising from this order, and such persons shall be

33 considered subject to it, unless the Commission or the Administrative Law Judge finds that the information is not confidential business information as defined in paragraph 1 thereof. 6. Any confidential business information submitted to the Commission or the Administrative Law Judge in connection with a motion or other proceeding within the purview of this investigation shall be submitted under seal pursuant to paragraph 2 above. Any portion of a transcript in connection with this investigation containing any confidential business information submitted pursuant to paragraph 2 above shall be bound separately and filed under seal. When any confidential business information submitted in accordance with paragraph 2 above is included in an authorized transcript of a deposition or exhibits thereto, arrangements shall be made with the court reporter taking the deposition to bind such confidential portions and separately label them "CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER." Before a court reporter or translator receives any such information, he or she shall have first read this order and shall have agreed in writing to be bound by the terms thereof Alternatively, he or she shall sign the agreement included as Attachment A hereto. Copies of each such signed agreement shall be provided to the supplier of such confidential business information and the Secretary of the Commission. 7. The restrictions upon, and obligations accruing to, persons who become subject to this order shall not apply to any information submitted in accordance with paragraph 2 above to which the person asserting the confidential status thereof agrees in writing, or the Commission or the Administrative Law Judge rules, after an opportunity for hearing, was publicly known at the time it was supplied to the receiving party or has since become publicly known through no fault of the receiving party.