Sunday, January 23, 2022

Ericsson has requested preliminary injunctions against Apple in Brazil, declared intent to do so in the Netherlands: 5G patent royalty dispute picks up speed

I thought I had covered the Ericsson v. Apple 5G patent royalty dispute pretty exhaustively during the course of this week, only to find multiple informative filings in the Eastern District of Texas, all of which were made on Wednesday (January 19). So let me recap what was already known before the weekend and add what I've just found out from the Wednesday documents:

  • Ericsson brought a FRAND complaint against Apple in the Eastern District of Texas in October 2021, and Apple brought its own FRAND complaint in the same district in December while seeking the dismissal of Ericsson's complaint.

    NEW: On Wednesday, Ericsson filed its opposition to Apple's motion (PDF on Scribd), saying that Apple actually does agree that there is a justiciable FRAND controversy, but it prefers to be the plaintiff. In addition, Ericsson requests leave to amend its complaint, and I'll show the proposed amended complaint further below. Technically, if the amended complaint was allowed to be brought, Apple's motion to dismiss would be moot (Apple could bring a new motion taking aim at the amended complaint).

  • Ericsson's three ITC complaints and two companion complaints (one of which mirrors two ITC complaints) were already known, as was Apple's countercomplaint with the ITC. I haven't found any new U.S. complaints by one of these parties against the other.

  • On Friday, it became known that Ericsson had filed patent infringement actions against Apple with the Mannheim Regional Court (two cases), Dusseldorf Regional Court (two cases), Munich I Regional Court (apparently more than two cases), the District Court of the Hague (Netherlands), and a court in Brazil.

    NEW: A U.S. court filing by Apple, which I'll show below, also mentions four cases in another jurisdiction, Belgium (three standard-essential patents (SEPs), one non-SEP). The same filing says Ericsson has sought preliminary injunctions against Apple in Brazil over three SEPs, and that Ericsson informed Apple's counsel that Ericsson intends to seek preliminary injunctions against Apple in the Netherlands, too (where, according to Apple, Ericsson has asserted four SEPs--and where I know Ericsson sought a preliminary injunction against Samsung last year).

The information on Belgium being the fifth country in which Ericsson is suing Apple as well as on Ericsson's already-pending or soon-to-be-brought motions for preliminary injunction surfaced thanks to a request by Apple for an early case management conference in the Eastern District of Texas (this post continues below the document):

22-01-19 Apple Motion for E... by Florian Mueller

What Apple primarily hopes to achieve is to portray Ericsson as a litigant who doesn't truly want the United States District Court for the Eastern District of Texas to set a FRAND rate for a 5G SEP cross-license, but instead "has chosen to evade the jurisdiction of this Court by pursuing collateral litigation in the Western District of Texas, at the U.S. International Trade Commission, and in at least four countries abroad." Apple alleges that "[i]n each case, Ericsson is pursuing injunctive relief that will turn this Court’s judgment into a nullity."

Just like the passage of Apple's ITC complaint that proposes to have everything resolved in the Eastern District of Texas (where Apple even closed two of its Apple Stores in order to deprive that court of jurisdiction over patent cases targeting Apple), the sentences I just quoted must be taken with a grain of salt. Ericsson merely asked the Texas court (in its original October 2021 complaint) to determine that its own behavior complied with its FRAND licensing obligations--that is separate from seeking to stop ongoing infringements, and has nothing whatsoever to do with non-SEPs.

The license agreement has expired, and that's why enforcement has begun. There's nothing outrageous about it, and I don't see a basis on which Apple could meritoriously request an antisuit injunction of any kind. Also, the cases in the Western District of Texas will be stayed pending the resolution of the related ITC complaint (Apple just has to ask for that), so they're realistically not going to interfere with the FRAND action in the Eastern District of Texas in the slightest.

As I mentioned further above, Ericsson would like to amend its FRAND complaint in the Eastern District of Texas (which Apple opposes). Here's the proposed amended complaint (this post continues below the document):

22-01-19 Ericsson Amended C... by Florian Mueller

The key difference between this (proposed) first amended complaint of January 2022 and the original complaint of 2021 is that the original complaint--as I just said--basically asked the court to bless Ericsson's FRANDliness, while the amended complaint additionally requests relief with respect to Apple's conduct, arguing that Apple has violated its reciprocity obligation relating to its own ETSI SEPs:

(c) adjudge and declare that Apple has not satisfied its reciprocity obligations or otherwise complied with its FRAND commitment with regard to a cross-license to the parties’ essential patents;

(d) adjudge and declare that Apple breached its duty to negotiate in good faith;

(e) adjudge and declare that Apple repudiated and forfeited its right to enforce Ericsson’s FRAND commitment as a third-party beneficiary;

(f) award Ericsson damages resulting from Apple’s breach of contract;

(g) award Ericsson damages resulting from Apple’s breach of its obligation to negotiate in good faith

On Friday, IAM reported that Apple's long-time chief litigation counsel Noreen Krall had left the company in early December and has not been replaced yet. During Mrs. Krall's 11 years at Apple, I sometimes agreed and sometimes disagreed with Apple's positions. As I've already said on Twitter and LinkedIn, I can't imagine that anyone else in her position could have achieved better results for that company. Her most amazing achievements include a settlement with Samsung that according to sources I can't disclose cost the latter roughly a billion dollars, the annulment of the European Commission's 13-billion euro decision in the Apple Ireland (a decision by the EU General Court that the European Commission is appealing), and most recently the antitrust acquittal in the Epic Games case (the consolation prize that Epic won under California UCL is negligible at best).

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