Wednesday, January 19, 2022

Ericsson's two ITC complaints against Apple: one over four SEPs, another over five non-SEPs (two of them from same family)

This is my third post on Ericsson v. Apple in a row. Not only does it feature an additional ITC complaint I had not previously seen (because it surfaced on the U.S. International Trade Commission's electronic docket more than an hour after the first one) but it also provides some context relating to the two federal lawsuits (Western District of Texas) and the other USITC complaint (the one over four standard-essential patents (SEPs)). This is a monumental patent dispute (that has all the ingredients for further escalation), so litigation watchers like me have to put the mosaic together step by step.

This is the current landscape of Ericsson-Apple cases pending in the United States, just so we have a forest here and not just a lot of trees:

The Waco cases will be stayed pending the ITC investigations. Theoretically, proceedings could continue with respect to the three patents asserted in 22-cv-61 but not in 337-TA-3596 (listed further below). However, if that had been Ericsson's intent, I guess they'd have made those patents the subject of a separate federal lawsuit.

Ericsson's forum selection has the practical effect that Apple has to fear a U.S. import ban in the first step and multi-billion dollar damages verdicts, which Waco is sort of famous for, further down the road. The latter would play a role if Apple could work around an exclusion order or if such ban was denied on public interest grounds despite Ericsson prevailing on the technical merits. In those hypothetical scenarios, Apple would not come under immediate pressure in the U.S. (though it might in jurisdictions like Germany) because of Ericsson having obtained (the equivalent of) an injunction, but it would still have to take into consideration the financial risks it faces in the Western District of Texas. It's conceivable that Ericsson could make a lot more money just from a few "Texas-size" damages verdicts--provided that those aren't contracted too much on appeal--than it ever could from a new license agreement...

It was the right decision by Ericsson not to bring a single ITC complaint over eight or more patents. Others (including world-class companies like Apple and Microsoft) tried such mass assertions in the past, and it didn't really work out too well. So Ericsson chose five patents (effectively more like four, since two are from the same family) for its non-SEP ITC complaint (and four patents for its SEP ITC complaint).

Apple could ask the ITC to consolidate the investigations of Ericsson's two complaints, which would up the pressure on Ericsson to narrow the case by dropping patents. However, the fact that one complaint is over SEPs and the other over non-SEPs (which has ramifications for the ITC's public interest analysis) counsels against consolidation.

As for a hypothetical consolidation of the Eastern and Western District cases, Apple could obviously make an argument that a FRAND case and a SEP enforcement action belong together--but then Ericsson will say that the infringement cases are on hold during the ITC investigation, so the FRAND action should just go forward in the meantime.

Now let's take a closer look at Ericsson's ITC complaint over Non-SEPs (this post continues below the document):

22-01-17 Ericsson v. Apple ... by Florian Mueller

Patents-in-suit in both the 22-cv-61 federal lawsuit and the 337-TA-3596 ITC complaint:

  1. U.S. Patent No. 7,151,430 on a "method of and inductor layout for reduced VCO [voltage-controlled oscillator] coupling": Ericsson positions this one as "the one patent to ban them all" as it's the only patent allegedly infringed by "at least Apple iPhone mobile phones, Apple iPad tablet computers, Apple Watch smart watches, Apple HomePod smart speakers, and Apple TV digital media players, and products containing same." By contrast, the other patents asserted by the non-SEP ITC complaint are described as being infringed by iPhones (though Ericsson reserves the right to amend its infringement contentions).

    The '430 patent is sort of Ericsson's favorite patent-in-suit. It was asserted in 2015 against Apple (in federal court), and last year in an ITC complaint against Samsung. Those disputes settled before any infringement or (in)validity determination was made, but it looks like Ericsson was underwhelmed by both Apple's and Samsung's arguments relating to this patent. Also, the 2015 complaint incontrovertibly put Apple on notice, making any infringement arguably willful (which also applies to Ericsson's '805 SEP, which it already asserted against Apple in 2015).

    Furthermore, Ericsson asserted some European members of the same patent family (EP1721324 and EP2819131) against Samsung in Germany and Belgium, and against Wiko in Germany. Samsung and Wiko challenged those patents in the Federal Patent Court of Germany, so Ericsson knows pretty well what kinds of invalidity contentions it has to expect (unless, of course, Apple comes up with different prior art).

  2. U.S. Patent No. 7,957,770 on a "mobile communication terminal for providing tactile interface"

  3. U.S. Patent No. 9,509,273 on "transformer filter arrangement"

  4. U.S. Patent No. 9,705,400 on "reconfigurable output stage"

  5. U.S. Patent No. 9,853,621 on "transformer filter arrangement" (yes, same title as the '273 patent)

Patents-in-suit in only the 21-cv-61 federal lawsuit (but not the 337-TA-3596 ITC complaint):

  1. U.S. Patent No. 8,472,999 on a "method and system for enabling dual standby state in a wireless communication system"

  2. U.S. Patent No. 8,792,454 on "secure and seamless WAN-LAN [wide area network, local area network] roaming"

  3. U.S. Patent No. 10,880,794 on "inter-band handover of the same physical frequency"

It won't take long before we hear about some countersuits by Apple, though the situation will always be highly asymmetrical due to the discrepancy in exposure.

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