Saturday, March 12, 2022

Ericsson's first U.S. patent trial against Apple to be held in first half of November: ITC evidentiary hearings in other Ericsson v. Apple cases slated for January and February

'Tis the scheduling season for the Ericsson v. Apple 5G patent dispute. Judge Rodney Gilstrap of the United States District Court for the Eastern District of Texas scheduled an Ericsson v. Apple FRAND trial for June 2023, and an Apple v. Ericsson trial for the following month. The Munich I Regional Court will conduct a first hearing in an Ericsson v. Apple case on September 14, 2022, while the Mannheim Regional Court will hold an Apple v. Ericsson trial on October 18, 2022. The Administrative Law Judges (ALJs) in charge of the investigations of Ericsson's three complaints with the United States International Trade Commission ("USITC" or just "ITC") have meanwhile also set some key target dates for their cases, which are theoretically subject to Commission review and practically may get delayed further down the road due to the U.S. trade agency's workload.

The ITC is also investigating Apple's countersuit (over mmWave patents), but should any scheduling decision have been made in that case, it hasn't been published on the agency's electronic docket yet (or isn't publicly accessible yet). I will report on the schedule of that investigation as soon as I find out.

By coincidence, the last-filed one of Ericsson's three near-simultaneous complaints got the fastest schedule. Here's a table that shows you the key dates in those three Ericsson v. Apple cases as currently contemplated by the ALJs:

Markman hearingTBD07/11/22 or 07/13/2205/24/22 - 05/25/22
Trial02/01/23 - 02/06/2301/05/23 - 01/12/2311/04/22 - 11/10/22
ALJ ruling05/24/2304/24/2302/24/23
Commission ruling09/25/2308/24/2306/26/23

The Office of Unfair Import Investigations ("OUII" or "ITC staff") will be a neutral participant in all Ericsson-Apple investigations (including Apple's countersuit), but in three of the four cases--all but Ericsson's first-filed case involving standard-essential patents (SEPs)--its participation will be limited to questions concerning remedies without addressing the technical merits.

On this occasion, let me provide, just for convenience, an overview of Ericsson's U.S. patents-in-suit by case.

337-TA-1299 (4G/5G SEP case; ALJ David P. Shaw)

In the Matter of Certain Mobile Telephones, Tablet Computers With Cellular Connectivity, and Smart Watches With Cellular Connectivity, Components Thereof, and Products Containing Same

(Complaint No. 337-3595)

Federal companion lawsuit: Western District of Texas, case no. 22-cv-00060

  1. U.S. Patent No. 8,102,805 on "HARQ [Hybrid Automatic Repeat reQuest] in spatial mutiplexing MIMO [multiple-input multiple-output] system"

  2. U.S. Patent No. 9,532,355 on "transmission of system information on a downlink shared channel"

  3. U.S. Patent No. 10,425,817 on a "subscription concealed identifier"

  4. U.S. Patent No. 11,139,872 on "codebook subset restriction signaling"

337-TA-1300 (first non-SEP case; ALJ MaryJoan McNamara)

In the Matter of Certain Mobile Phones, Tablet Computers, Smart Watches, Smart Speakers, and Digital Media Players, and Products Containing Same

(Complaint No. 337-3596)

Federal companion lawsuit: Western District of Texas, case no. 22-cv-00061 (also includes patents from -1301 investigation)

  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 same 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.

    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)

337-TA-1301 (second non-SEP case); ALJ Cameron Elliot

In the Matter of Certain Mobile Phones and Tablet Computers, All With Switchable Connectivity

(Complaint No. 337-3597)

Federal companion lawsuit: Western District of Texas, case no. 22-cv-00061 (also includes patents from -1300 investigation)

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

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

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

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