Ericsson's patent cross-license agreement with Apple has expired, and no renewal has been agreed upon, which is why infringement litigation became inevitable. IAM was first to spot two filings by Ericsson against Apple in the Western District of Texas over four patents in one case and eight in the other. Apple will predictably retaliate, but Apple's exposure to patent assertions dwarfs Ericsson's. When there was no announcement of a renewed license agreement or renewed litigation after the turn of the year, I thought the middle of the month was going to be when we would hear more. Let me show you the complaints first--this post continues below the two documents:
22-01-17 (WDTX22cv60) Erics... by Florian Mueller
Patents-in-suit in the 22-cv-60 action:
U.S. Patent No. 8,102,805 on "HARQ [Hybrid Automatic Repeat reQuest] in spatial mutiplexing MIMO [multiple-input multiple-output] system"
U.S. Patent No. 9,532,355 on "transmission of system information on a downlink shared channel"
U.S. Patent No. 10,425,817 on a "subscription concealed identifier"
U.S. Patent No. 11,139,872 on "codebook subset restriction signaling"
22-01-17 (WDTX22cv61) Erics... by Florian Mueller
Patents-in-suit in the 22-cv-61 action:
U.S. Patent No. 7,151,430 on a "method of and inductor layout for reduced VCO [voltage-controlled oscillator] coupling"
U.S. Patent No. 7,957,770 on a "mobile communication terminal for providing tactile interface"
U.S. Patent No. 8,472,999 on a "method and system for enabling dual standby state in a wireless communication system"
U.S. Patent No. 8,792,454 on "secure and seamless WAN-LAN [wide area network, local area network] roaming"
U.S. Patent No. 9,509,273 on "transformer filter arrangement"
U.S. Patent No. 9,705,400 on "reconfigurable output stage"
U.S. Patent No. 9,853,621 on "transformer filter arrangement" (yes, same title as the '273 patent)
U.S. Patent No. 10,880,794 on "inter-band handover of the same physical frequency"
Having seen Ericsson enforce patents against Apple and other parties in the past, I assume that one of the two complaints is a companion complaint to a Sec. 337 complaint with the United States International Trade Commission ("ITC"), seeking an exclusion order (aka import ban). Most likely the 22-cv-60 case (over four patents) is the companion complaint as the ITC urges complainants to focus on a small number of patents so it can keep its schedule (it is also possible to start an ITC case with many patents and to then narrow it by dropping most of the patents-in-suit, but I doubt that that is the plan here). I'm also pretty sure that Ericsson has near-simultaneously filed complaints with courts in other jurisdictions, among them almost certainly Germany, where Munich is the new number one and Mannheim continues to be a key venue.
Rarely ever has a patent dispute been less surprising than in this case:
Three months ago, Ericsson brought a FRAND (not infringement) action in the Eastern District of Texas as Apple adamantly refused to accept its $5/unit licensing offer, an amount I don't consider unreasonable considering Apple's margins and Ericsson's portfolio. That "harbinger" action might have seemed early--months prior to the expiration of a multi-year cross-license agreement--but is understandable in light of Apple attacking some Ericsson patents before their last contract expired.
Interestingly, Ericsson is now bringing its infringement actions in the Western District of Texas. Currently, the top echelon of the U.S. judiciary is working on new rules that would make it impossible to "judge-shop" by filing a patent case with the Waco division of the Western District of Texas, knowing for sure that Judge Albright will then preside over the case (unless a venue transfer motion succeeds, and he typically denies them). That reform will come too late for Apple in this case. Ericsson may have been attracted to the Western District by Apple's very strong presence there (they have created and continue to create lots of jobs in the area) and major wins for patent holders (most notably the §2.175 billion damages verdict that VLSI Technologies obtained in that district against Intel last year). Apple can try to get the FRAND case in the Eastern District consolidated with the infringement cases in the Western District--which leaves Apple between a rock and a hard place from a defendant's perspective.
At around the same time as the filing in the Eastern District, Ericsson sought a Munich-style pre-emptive anti-antisuit injunction from a court in the Netherlands. While its petition was denied (also for a second time in a December 16 decision following a November 18 hearing), Ericsson now presuambly benefits from the fact that Apple declared it had no intention to pursue an antisuit injunction against Ericsson's infringement actions.
More than two months later, the parties still hadn't agreed on a new deal: Apple moved to dismiss Ericsson's Texas FRAND action and instead brought its own countersuit.
There was a possibility until the last minute that they might still work it out. In order to bring infringement actions, Ericsson had to await the expiration of the last license agreement.
Recent developments in the case law in various major jurisdictions favor Ericsson's cause. Binding precedent matters--draft policy statements like one recently put forward by the Biden Administration have very little weight, if any.
Another significant 5G patent dispute broke out just before the turn of the year, with InterDigital suing OPPO in the UK, India, and Germany. And there are some interesting 4G cases targeting car makers: Sisvel v. Ford and Acer v. Volkswagen. Those patent holders--and several dozen others, among them Ericsson--won't sue Daimler over 4G patents, however, as the Mercedes maker took an Avanci pool license that also became known last month.
Last year, Ericsson filed infringement claims against Samsung on New Year's Day, and won a settlement in the spring.
Apple's license agreements with Nokia and InterDigital haven't been renewed in about five years, making it a possibility that we'll see a third wave of Nokia v. Apple cases later this year and/or a clash between InterDigital, which had a pretty successful 2021 on the licensing and litigation fronts, and the iPhone maker.
More recently, Apple has mostly been busy with App Store antitrust actions around the globe (private lawsuits as well as regulatory investigations, even in India where Apple's market share is tiny). This month, Epic Games will file its opening brief on appeal with the Ninth Circuit. It is striking that Apple argued in the Epic case that a relatively small number of unspecified patents entitled it to an allegedly reasonable 30% tax on in-app purchasing revenues while it is known that Apple's aggregate standard-essential patent royalty rate is closer to 1% of its sales. That contradiction creates an "Epicsson" dilemma for Apple's credibility.
[Update (Jan 19)] Meanwhile I've published and commented on Ericsson's ITC complaint over four SEPs as well as one over five non-SEPs. In the latter, I also provided a structured overview of all six pending U.S. cases between these parties. [/Update]
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