Ericsson just announced that it has sued Samsung -- not for the first time in history -- over various wireless standard-essential patents (SEPs). This dispute is interesting in its own right, but the issues it raises are even more interesting in light of the SEP issues pending between Apple and Samsung. Apple could benefit from this in some ways, as I'll explain further below.
Ericsson filed two complaints bearing today's date in the Eastern District of Texas. While this district is particularly popular among so-called patent trolls, Ericsson actually has its U.S. headquarters in that district.
Ericsson and Samsung previously had a dispute over FRAND terms, and Apple has quoted in its own litigations with Samsung some of the Korean company's positions on FRAND that it took when the shoe was on the other foot (this letter is an example). Ericsson says that Samsung licensed its SEPs in 2001 and renewed the deal in 2007, but has recently refused to pay what Ericsson believes to be a FRAND royalty for its SEPs. Ericsson claims to have offered to Samsung "many alternative FRAND royalty structures and frameworks", all of which have been rejected over the course of two years of negotiations.
"Even more egregiously", Ericsson's lawyers write, "Samsung has refused to provide Ericsson a license to its allegedly standard-essential patents on FRAND terms. Upon information and belief, Samsung refuses to license Ericsson under any declared standard-essential patents that it owns in an effort to compel Ericsson to license its patent portfolio at a small fraction of the rates that its competitors pay. This position violates Samsung's FRAND commitment."
That allegation is similar to Apple's claim that Samsung was making excessive demands based on its SEPs in order to get Apple to agree to a broad cross-license agreement on terms favorable to Samsung. Apple will presumably point certain courts to this allegation.
Ericsson is seeking an injunction. While Ericsson's complaints talk a lot about FRAND, this is a situation in which Ericsson apparently believes that it's dealing with an unwilling licensee and should, therefore, be entitled to injunctive relief. I have previously disagreed, and continue to disagree, with Ericsson on this one. Instead, I agree very much with Judge Posner. But in this case, the defendant, Samsung, has recently also been quite aggressive in its SEP assertions.
Apple may benefit from this hugely because Samsung will now have to argue that Ericsson's demands, which were presumably not nearly as outrageous as what Samsung wanted Apple to pay, were outside the FRAND ballpark. Ericsson's litigation forces Samsung to argue that FRAND rates should be low, while in the dispute with Apple, it takes the opposite position. Litigation proceeds pretty quickly in the Eastern District of Texas, so there's a good chance that Apple will be able to use in its second California lawsuit (in which several of Samsung's counterclaim patents are wireless SEPs) some of what Samsung has to argue in its defense against Ericsson.
Conversely, Ericsson will certainly try to get some mileage out of Samsung's statements made in the Apple litigation.
In the second one of the two Texas lawsuits filed today, Ericsson is pursuing not only its own infringement claims but also bringing FRAND contract claims against Samsung. These are the related prayers for relief -- the "specific performance" demand (item J) is consistent with the key remedy sought in Apple and Microsoft's FRAND contract actions against Motorola Mobility:
H. Adjudge that Samsung Electronics's commitment to license patents they claim are essential to a standard adopted by an industry standard-setting group on FRAND terms is a binding contractual obligation, enforceable by Ericsson;
I. Adjudge that Samsung Electronics’s refusal to provide Ericsson a license on FRAND terms, despite their obligation to do so, is a breach of contract;
J. Order specific performance, requiring that Samsung Electronics offer Ericsson a license on FRAND terms for any patent claim that Samsung Electronics contends or has alleged in any context is necessary to implement a standard adopted by an industry standard-setting group;
K. Award Ericsson damages in an amount adequate to compensate Ericsson for the Defendants' breach of contract and equitable estoppel[;]
L. Adjudge that any patent claim that Samsung Electronics contends or has alleged in any context is necessary to implement a standard adopted by an industry standard-setting group is unenforceable against Ericsson;
M. Enter an injunction enjoining Defendants, and all others in active concert with Defendants, from enforcing any patent claim that Samsung Electronics contends or has alleged in any context is necessary to implement a standard adopted by an industry standard-setting group;
N. Enter an injunction requiring Defendants, and all others in active concert with Defendants, to license any patent claim that Samsung Electronics contends or has alleged in any context is necessary to implement a standard adopted by an industry standard-setting group on fair, reasonable, and non-discriminatory terms to Ericsson;
Two dozen patents-in-suit
These are the patents asserted in Ericsson's first complaint:
U.S. Patent No. 6,029,052 on a "multiple-mode direct conversion receiver"; Ericsson believes to have a particularly strong willfulness case here beause it already asserted this patent against Samsung in an ITC complaint (investigation no. 337-TA-583)
U.S. Patent No. 6,058,359 on a "speech coding including soft adaptability feature"; Ericsson already asserted this patent against Samsung in a 2006 complaint, which has implications for willfulness
U.S. Patent No. 6,278,888 on "radiotelephones having contact-sensitive user interfaces and methods of operating same"; this patent is currently undergoing reissue proceedings and Ericsson will, after the patent reissues, mvoe to amend the the complaint accordingly
U.S. Patent No. 6,301,556 on "reducing sparseness in coded speech signals"
U.S. Patent No. 6,418,310 on a "wireless subscriber terminal using Java control code"
U.S. Patent No. 6,445,917 on "mobile station measurements with event-based reporting"
U.S. Patent No. 6,473,506 on "signaling using phase rotation techniques in a digital communications system"; previously asserted against Samsung in 2006
U.S. Patent No. 6,519,223 on a "system and method for implementing a semi reliable retransmission protocol"
U.S. Patent No. 6,624,832 on "methods, apparatus and computer program products for providing user input to an application using a contact-sensitive surface"
U.S. Patent No. 6,772,215 on a "method for minimizing feedback responses in ARQ protocols"
U.S. Patent No. 8,169,992 on "uplink scrambling during random access"
These are the patents asserted in the second complaint:
U.S. Patent No. 6,259,724 on "random access in a mobile telecommunications system"
U.S. Patent No. 6,400,376 on a "display control for hand-held data processing device"
U.S. Patent No. 6,466,568 on "multi-rate radiocommunication systems and terminals"
U.S. Patent No. 6,502,063 on a "method and apparatus for recursive filtering of parallel intermittent streams of unequally reliable time discrete data"
U.S. Patent No. 6,597,787 on an "echo cancellation device for cancelling echos in a transceiver unit"
U.S. Patent No. 6,732,069 on a "linear predictive analysis-by-synthesis encoding method and encoder"
U.S. Patent No. 6,865,233 on a "method and system for control signalling enabling flexible link adaptation in a radiocommunication system"
U.S. Patent No. 6,985,474 on "random access in a mobile telecommunications system"
U.S. Patent No. 7,660,417 on an "enhanced security design for cryptography in mobile communication systems"
U.S. Patent No. 7,707,592 on a "mobile terminal application subsystem and access subsystem architecture method and system"
U.S. Patent No, 7,769,078 on an "apparatus, methods and computer program products for delay selection in a spread-spectrum receiver"
U.S. Patent No. 7,961,709 on "secondary synchronization sequences for cell group detection in a cellular communications system"
U.S. Patent No. 8,036,150 on a "method and a device for improved status reports"
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