After the expiration of the Ericsson-Samsung patent cross-license agreement, Ericsson went to court about a year ago, and Samsung's response included 30 petitions with the Patent Trial & Appeal Board of the United States Patent & Trademark Office, each taking aim at an Ericsson patent. We're now seeing a similar development, though on a smaller scale so far, between Ericsson and Apple, and once again it looks like a net licensee is using some of its vast resources to drive up litigation costs.
Over the course of the last seven days, Apple brought seven IPR petitions against Ericsson patents, and will likely file more in the days or weeks ahead. None of those seven U.S. patents has been asserted by Ericsson against Apple (or is the subject of a declaratory-judgment action by Apple), but each was challenged by Samsung last year. It's somewhat ironic that Apple, which for many years denounced Samsung as a copycat, is actually building on Samsung's 2021 inter parties review (IPR) campaign against Ericsson, even rehashing invalidity contentions previously advanced by Samsung.
I'm a longstanding supporter of robust post-grant review of issued patents, but there's no denying that the process sometimes does get abused by deep-pocketed players to the detriment of innovators challenging patents because they can afford it, not because there's a need. Ericsson has so many patents that it will always find some others to assert regardless of how many Apple challenges. The problem is that such petitions clog the PTAB system and slow down the resolution of objectively urgent cases.
These are the seven Apple v. Ericsson IPR petitions I've found so far:
IPR2022-00455 (of January 19, 2022)
U.S. Patent No. 10,165,601 on "methods and apparatuses for performing preamble assignment for random access in a telecommunications system"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
IPR2022-00459 (of January 19, 2022)
U.S. Patent No. 8,798,658 on "minimizing drive test logged data reporting"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
IPR2022-00464 (of January 19, 2022)
U.S. Patent No. 10,193,600 on "codebook subset restriction signaling"
(not yet asserted by Ericsson against Apple; asserted against Samsung--and challenged by Samsung--in 2021)
IPR2022-00465 (of January 19, 2022)
U.S. Patent No. 8,731,124 on "signaling of sequence generator initialization parameters for uplink reference signal generation"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
IPR 2022-00340 of Januar 21, 2022
U.S. Patent No. 10,470,203 on "scheduling request resource configuration"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
IPR2022-0458 (of January 25, 2022)
U.S. Patent No. 9,888,486 on a "method and arrangement in a telecommunication system"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
IPR2022-00468 (of January 25, 2022)
U.S. Patent No. 10512027 on "on-demand request for system information"
(not yet asserted by Ericsson against Apple; challenged by Samsung in 2021)
According to an Ericsson reference to those filings, at least the first five of those petitions target patents declared essential to an ETSI standard. Apple may hope to use any PTAB decisions (even if only to institute an investigation) as an argument against Ericsson in the FRAND context, claiming that large parts of the portfolio are invalid. But how much merit would that argument have? Ericsson can always argue that Apple did not attack a representative sample, but cherrypicked certain patents for this purpose.
Again, there'll be more of this, and presumably in short order. And one couldn't blame Ericsson for doing somthing similar now, except that they can't recycle arguments previously made by Samsung or some other party: Apple has no track record of SEP assertions.
Share with other professionals via LinkedIn:
