Saturday, April 9, 2022

Apple has started to file PTAB IPR petitions against Ericsson's actual U.S. patents-in-suit (as opposed to just patents Samsung challenged before)

The most important question surrounding the Ericsson v. Apple patent dispute is how the parties are going to get guidance from courts on a fair, reasonable, and non-discriminatory (FRAND) royalty rate for each other's standard-essential patents (SEPs). Ericsson has been consistent that it considers $5 per iPhone the correct amount, and aims to have the reasonableness of that position confirmed by the United States District Court for the Eastern District of Texas.

At the same time, the parties are asserting non-SEPs against each other. Apple inexplicably claims that Ericsson is tying SEP licenses to non-SEP licenses, without explaining why Ericsson's non-SEPs-in-suit bestow market power on Ericsson beyond what merely constitutes intellectual property enforcement. While there might be a concern if a SEP holder offered only a portfolio license that also covers non-SEPs, Ericsson doesn't do that: its SEP licensing offer doesn't require Apple to take a license to any non-SEPs.

Apple is a mass filer of petitions for inter parties review (IPR) by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). Shortly after Ericsson filed its U.S. patent infringement lawsuits and ITC complaints in January, Apple filed its first PTAB IPR petitions aimed at some Ericsson patents. However, Apple was effectively recycling petitions Samsung had brought the previous year (during a dispute with Ericsson that settled after only a few months), regardless of whether Ericsson was actually asserting those patents against Apple. It's just about driving up litigation costs, and with respect to SEPs, Apple may hope that it can point to favorable PTAB outcomes in the valuation discussion in different fora.

Apple piggybacked on many more Samsung petitions during the first calendar quarter. It may not even be done with that effort: on April 4, Apple challenged U.S. Patent No. 6,879,849 on an "in-built antenna for mobile communication device."

Now Apple is also challenging actual patents-in-suit. I expect many more IPR petitions to be filed. It obviously took Apple some time after the mid-January complaints to search for prior art and develop its invalidity contentions.

On April 1, Apple challenged U.S. Patent No. 8,792,454 on "secure and seamless WAN-LAN [wide area network, local area network] roaming," one of the three non-SEPs Ericsson is asserting in ITC investigation no. 337-TA-1301 (this post continues below the document):

22-04-01 PTAB Apple IPR2022... by Florian Mueller

Five days later, on April 6, April also filed a PTAB IPR petition against Ericsson's U.S. Patent No. 9,705,400 on "reconfigurable output stage," one of the five non-SEPs Ericsson is asserting in ITC investigation no. 337-TA-1300 (this post continues below the document):

22-04-06 PTAB Apple IPR2022... by Florian Mueller

While this was expected, it shows that the patent infringement dispute between those parties has entered a new phase. It won't be long before the first challenges to European patents become known as well. Apple and Ericsson are going to make a number of filings with the Federal Patent Court of Germany, for instance.

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