Ericsson means business and just isn't going to be outmaneuvered by Apple. In a move that demonstrates the company's confidence in its 5G patents, Ericsson is opposing a motion by Apple to stay a second case in the Eastern District of Texas. The first case is about the parties' dueling FRAND claims and will proceed to trial in December. The second one is the part of Apple's countersuit that did not get consolidated into Ericsson's case. The remaining claims in that case stem from Apple's declaratory-judgment attack on three of Ericsson's 5G patents. Apple's DJ initiative left Ericsson with no other reasonable choice but to counterclaim that those patents (which Apple handpicked because it presumably thought it could easily prove them not to be standard-essential) are valid and indeed infringed by Apple's 5G products.
In the first case (FRAND), Judge Rodney Gilstrap (the Chief Judge of the United States District Court for the Eastern District of Texas) denied an Ericsson motion to firm up Apple's commitment to a license, but as I explained in the post I just linked to, the upside for Ericsson outweighed the downside because the court stated that Apple subjects itself to infringement litigation by not taking a license. Basically, Ericsson just needed to avoid a situation in which Apple would dissuade courts in various jurisdictions from letting Ericsson's infringement cases go forward because the Texas action would resolve the dispute anyway.
Ericsson has already started leveraging that "denial"--in the same district, in fact. In the second E.D. Tex. case, Ericsson has now filed its opposition to Apple's motion to stay the proceedings, quoting from the same judge's most recent order in the FRAND case (this post continues below the document):
22-05-04 Ericsson Oppositio... by Florian Mueller
Ericsson wants to proceed with that second Texas case and prove Apple's infringement of those three 5G patents, with a trial scheduled to take place in the summer of 2023. Toward the end, Ericsson tells the court is that Apple may just have brought those DJ claims for the purpose of appellate forum-shopping, a thought I already had in January. Apple would rather litigate the second round in the Federal Circuit than the Fifth (where Ericsson scored a major victory over HTC last year, creating a precedent that doesn't bode well for Apple's defenses).
While it's obvious that Ericsson has an interest in making progress with its infringement actions including--but not limited to--the ones in the Eastern District, I still find Ericsson's opposition remarkable for one reason: those three patents aren't Ericsson's chosen patents-in-suit. They may have been among the hundreds of exemplary SEPs Ericsson presented to Apple during the course of negotiations, but still, it was Apple who thought those patents could be easily attacked. Out of hundreds of pre-selected Ericsson patents, these are presumably the three that Apple considered to be weakest, yet Ericsson isn't ducking Apple's DJ claims but instead cherishes the opportunity to prevail on its compulsory counterclaims. It would have been easy for Ericsson to simply not oppose Apple's motion for a stay, citing any number of reasons such as that there already are infringement cases pending before the ITC (with companion complaints in the Western District of Texas), Germany, and other countries. But it appears that Ericsson, after taking another close look at those patents, feels pretty good about its prospects.
No matter what Apple may have surprisingly stated in some of its filings in recent months, it simply doesn't like to deal with patent infringement cases in the Eastern District of Texas (nor in the Western District, but that's another story). In this case, however, Apple itself chose to bring DJ claims in that forum. It made its bed and now has to lie in it. Apple's strategy backfired. I'd be surprised if the case over those three 5G SEPs got stayed over Ericsson's objection, given that Judge Gilstrap rightly considers it the normal course of business that a patent holder keeps enforcing its rights while there is no license agreement in place.
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