Monday, December 3, 2012

Ericsson steps up patent enforcement against Samsung with request for U.S. import ban

Last Tuesday Swedish telecommunications equipment maker Ericsson filed two patent infringement lawsuits against Samsung with the United States District Court for the Eastern District of Texas, one of which additionally accused Samsung of breach of its FRAND licensing commitment with respect to its own standard-essential patents. The two companies had previously signed licensing pacts in 2001 and 2007. In the latter case, a renewal happened only after Ericsson brought infringement actions in federal court as well as in the ITC, a U.S. trade agency with quasi-judicial authority to ban importation of infringing products.

On Friday (November 30), Ericsson filed a new ITC complaint against Samsung. The fact that the filing was made briefly showed up on the "Recent Section 337 Complaints" page of the ITC website, but due to a planned power outage no further information could be obtained over the weekend and the list of recent complaints is still inaccessible on Monday morning. Nevertheless I have obtained a copy of Ericsson's complaint, which contains some interesting information including the fact that Samsung's archrival, Apple, already has a license to Ericsson's patents-in-suit.

The list of patents asserted in the complaint mirrors that of the first Texas complaint. It's a safe assumption that Ericsson will during the course of the ITC investigation narrow the case down from the 11 initial patents-in-suit, as all other complainants asserting such numbers of patents have done before. It's also a given that Samsung will move for a stay of the companion lawsuit in Texas pending resolution of the ITC complaint.

The accused products are "wireless communication devices, tablet computers, media players, and televisions, and components thereof". The complaint furthermore mentions "base stations" and the possiblity that "[d]iscovery may reveal the use of Ericsson's patented technologies in other [Samsung] products". If the ITC ordered an import ban, it would also apply to all future products having the same infringement pattern. As current examples of allegedly-infringing products, the complaint mentions, among dozens of products, the Samsung Galaxy S III (and its predecessor, the S&nbp;II), the Samsung Galaxy Nexus (GT-I9020A), the Samsung Infuse 4G, the Samsung Captivate Glide, and the Samsung Galaxy Note as well as its successor, the Note II. Ericsson is also targeting various form factors (7.0, 8.9, 10.1) of the Galaxy Tab and the Galaxy Note 10.1 tablet. The accused media players include multiple versions (3.6, 4.0, 4.2 and 5.0) of the Samsung Galaxy Player, as well as various Blu-ray players. Ericsson also provides a long list of accused televisions.

The complaint describes the patented technologies at issue as RF (radio frequency) receiver technology, hardware and software design of wireless communication devices, user interface technology, modulation technology, and in some cases, standardized communication protocols, including the GSM, GPRS, EDGE, W-CDMA, LTE, and/or 802.11 [WiFi, or WLAN] standards. Software and user interface technology suggests that other Android device makers may face similar royalty demands from Ericsson. The fact that some of the asserted patents are standard-essential is consistent with Samsung's own litigation strategy against Apple. As I reported two weeks ago, FRAND issues will be key to the ITC review of a judge's preliminary ruling on Samsung's ITC complaint against Apple.

With a view to the ITC's domestic industry requirement, Ericsson points to the fact that more than 10,000 of its 95,000 employees are based in the United States, and to a variety of licensed U.S. products, such as various Apple, Motorola and RIM gadgets.

Depending on how settlement talks between Ericsson and Samsung progress, I would not in the slightest be surprised to see Ericsson file infringement actions in other countries. For example, I became aware of an Ericsson v. Acer trial that took place in Mannheim in June. Ericsson's ITC complaint lists numerous international counterparts of the U.S. patents-in-suit.

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