If anyone sympathetic to Apple wanted to engage in oversimplification for the purpose of spin-doctoring, a misleading "scoreboard" would currently indicate that 23 of Apple's petitions for inter partes review (IPR) have resulted in institution decisions by the Patent Trial & Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO), while "only" 10 have been denied. 23 of 33 ain't bad? At a closer look, Apple's PTAB campaign has so far done more harm than good to Apple's defensive efforts.
There is one part of the multijurisdictional Ericsson v. Apple 5G patent litigation in which a PTAB decision--coupled with a highly debatable decision by an Administrative Law Judge (ALJ) of the U.S. International Trade Commission (USITC, or just ITC)--may indeed carry the day for Apple. That one is the smallest and least important of Ericsson's three ITC complaints against Apple. The trial started on Friday and will conclude on Thursday. Ericsson's lawyers can still argue to the ALJ that the PTAB was wrong about its finding of a reasonable likelihood of invalidity of the '454 patent, but it will be an uphill battle. Another patent was dropped earlier. In that case, Ericsson's most promising horse in the race is the '999 patent, of which it dropped six claims after claim construction, but the two remaining ones include an independent claim and may still prove valuable.
There is another patent that Ericsson is asserting in the ITC and that is now subject to a PTAB IPR proceeding: U.S. Patent No. 9,705,400 on a "reconfigurable output stage". That case will go to trial in early 2023, and on Wednesday (November 2, 2022) the PTAB instituted an IPR proceeding (IPR2022-00716). However, Apple had already persuaded the ALJ of its proposed construction of the sole disputed claim term, so it appeared to be on the winning track anyway.
But the other 21 institution decisions that Apple has won so far are unprofitable. They relate to patents that Ericsson isn't asserting against Apple, at least not in the United States. Shortly after the current dispute broke out in January, Apple started filing IPR petitions against patents that Samsung had challenged before, which I described as "piggybacking" on Samsung's 2021 campaign.
Seven of those petitions targeting patents-not-in-suit have been denied, and most of those patents are young enough that Ericsson may very well elect to assert them on some other occasion. Theoretically, Ericsson could now file additional infringement actions against Apple over them, but it probably won't have to do so because it can get leverage (especially in jurisdictions like Germany) well before any new complaint would be adjudicated.
The majority of Apple petitions against actual patents-in-suit have failed: three out of five have been denied. And each of those three plays a pretty important role in the present dispute.
Yesterday, Apple and Ericsson filed a joint claim construction chart with the United States District Court for the Eastern District of Texas, in which they referenced the pre-institution PTAB proceedings relating to two of the three patents that Apple against which Apple had brought declaratory judgment claims. Ericsson decided to bring compulsory counterclaims and insisted even when Apple--which primarily wanted to use those DJ claims to sidestep the Fifth Circuit's appellate jurisdiction, a transparent maneuver that failed--was no longer interested in pursuing its DJ claims, which left Judge Gilstrap "puzzled."
On Tuesday (November 1), the PTAB denied Apple's petition no. IPR2022-00850 against U.S. Patent No. 11,039,312 on "handling of multiple authentication procedures in 5G":
Decision Denying Institution of Inter Partes Review (IPR2022-00850)
On September 21, the PTAB had already denied Apple's petition no. IPR2022-00349 against U.S. Patent No. 10,374,768 on "efficient SRS resource indication methods" (Apple has moved for reconsideration):
Decision Denying Institution of Inter Partes Review (IPR0022-00349)
And against the third E.D. Tex. DJ patent, no PTAB petition has been brought in the first place. The infringement action in the Eastern District of Texas will go to trial next summer (while the FRAND trial is now only one month away), and two of the three 5G standard-essential patents have--at least so far--been strengthened by PTAB decisions in Ericsson's favor, and it's telling that Apple didn't even elect to attack the third.
While Ericsson is not asserting U.S. Patent No. 10,516,513 on "controllable CSI-RS density" against Apple, that patent is--as I noted before--from the same family as the patent over which Ericsson won a preliminary injunction against Apple in Colombia. On September 22, the PTAB denied Apple's IPR petition:
Decision Denying Institution of Inter Partes Review (IPR2022-00169)
That outcome doesn't help Apple as it seeks to overturn the Colombian injunction.
With its vast resources, Apple can drive up litigation costs by bringing PTAB petitions even against patents that are practically irrelevant to the current dispute, but so far I believe Ericsson has actually gotten more value out of those PTAB proceedings. Even if Ericsson lost 20 patents or so (and institution decisions don'mean that all claims will ultimately be invalidated), it would still have a huge portfolio, but at this stage, ten of Ericsson's patents have been hardened, including some strategically important ones.
Apple may come away unscathed from the ongoing ITC trial, but in some other respects the noose is tightening. For example, the Mannheim Regional Court will hold an Ericsson v. Apple standard-essential patent infringement trial on Tuesday. Yesterday the court informed me that the (new) time of the trial is an earlier one than originally scheduled, and that there would likely be a non-public part (i.e., an in-depth discussion of Apple's FRAND defenses) following the public part. To me this indicates that Presiding Judge Dr. Holger Kircher sees a high likelihood of having to reach FRAND in that case. I'll find out on Tuesday. Should Ericsson win that case, an injunction would come down before Christmas--just the kind of present Apple would like to return to the shop on Boxing Day.
