Within four days of each other, two FRAND complaints have been filed in district court. One of them takes one aspect of the ongoing Nokia v. Lenovo standard-essential patent (SEP) dispute to the Northern District of California, and the other ushers in a "sequel" to an earlier Ericsson v. Samsung patent spat. At this stage--with the ink barely being dry on those complaints--I primarily just wish to make the complaints available here and provide some high-level information. When the defendants have answered (or moved to dismiss), I'll go into more detail. Both appear to be driven by the notion that a good offense is sometimes the best defense.
Lenovo v. Nokia: ambush tactics alleged in connection with H.264 video codec standard
Most recently I reported on Nokia's withdrawal of a pending Dusseldorf complaint against Lenovo and its immediate refiling of the same matter in Munich as well as the Munich appeals court's decision to grant a Lenovo motion for an enforcement stay. But Lenovo isn't just taking what Nokia's been serving--it has hit back:
"Lenovo has filed a complaint against Nokia in federal court in California in order to address what Lenovo regards as Nokia’s ongoing unfair behaviors and abuse of the standards-setting process related to the H.264 video compression standard. Specifically, Nokia has advocated for its technology to be adopted into the standard, while at the same time concealing its patents it now asserts are essential to the practice of that standard. We believe the availability of standardized technologies on FRAND terms is critical for the future of the global tech industry and the proliferation of affordable innovation to customers around the world. Nokia’s licensing practices threaten this access."
Here's Lenovo's complaint (this post continues below the document):
Lenovo is represented by Wilmer Hale, a firm that also represents Apple and Intel in their antitrust action against the Softbank-owned Fortress Investment patent troll group.
In a footnote, this FRAND complaint mentions a case brought by Nokia against Lenovo in the Eastern District of North Carolina in late June 2020.
Ericsson v. Samsung: déjà vu all over again
In November 2012, Ericsson sued Samsung, and the Korean electronics maker responded in kind. They settled in January 2014, and it now appears that at least a part of that license agreement has meanwhile expired or is about to expire. The original announcement of that deal said the agreement covered all patents they already owned back then and the ones they'd obtain over the next ten years, but if it had been a ten-year license agreement, Ericsson wouldn't be suing. So it was most likely a seven-year deal (plus backroyalties for the period during which they were litigating) that is set to reach the end of its term in a couple of weeks--and the reason they included patents obtained further down the road might simply have to do with liability issues over past damages for the period starting with the publication of a patent application.
In a press release, Ericsson said it accuses Samsung of "violating contractual commitments to negotiate in good faith and to license patents on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions" and, beyond that, "seeks to obtain a ruling by the court that Ericsson has complied with its own commitments."
A long time ago, Samsung enforced some SEPs rather aggressively against Apple, and I criticized them for some of their tactics. I followed that dispute across multiple jurisdictions and even attended a preliminary injunction hearing in Paris. But in 2014 Samsung dropped all of its pending SEP claims against Apple, some of them ahead of the second Apple v. Samsung trial in the Northern District of California. While Ericsson routinely asserts SEPs in different jurisdictions (even India at times), Samsung hasn't done so ever since. And while Ericsson--typically alongside Nokia and Qualcomm--supports SEP abuse as a member of the Avanci gang and various lobby groups, Samsung has filed amicus briefs and made other pro-FRAND statements in recent years. That's why I, to be honest, find it hard to believe that Ericsson has complied with its FRAND licensing obligations while Samsung has allegedly breached them.
Ericsson's prayers for relief in the East Texas case include a request that the court "adjudge and declare that Samsung has repudiated and forfeited its right to enforce Ericsson’s FRAND commitment under the ETSI IPR Policy as a third-party beneficiary." Apparently Ericsson hopes to get a ruling form notoriously patentee-friendly Judge Gilstrap that it could leverage against Samsung in other jurisdictions. This also applies to Ericsson's prayer for "specific performance requiring Samsung make available to Ericsson a license to all of its Essential Patents on FRAND terms." Those two players are going to enter into a cross-license, but if Samsung counterclaimed by asking the court to require Ericsson to do the same, the Eastern District would become the venue to resolve the global dispute. Actually, the Federal Circuit, which frequently has to fix serious issues with rulings coming out of that troll-friendly district.
As almost always in this context, Ericsson is represented by McKool Smith.
Both Ericsson and Samsung have some operations in the Lone Star State.
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