Monday, July 11, 2022

For the first time ever, Apple is suing over a standard-essential patent: in a Munich case against Ericsson, Apple is asserting a 4G SEP acquired from Intel

There are more and more firsts in the Ericsson v. Apple 5G patent dispute:

  • the first-ever Colombian standard-essential patent (SEP) judgment (Ericsson is now enforcing a 5G injunction, which Apple desperately sought to prevent),

  • the first-ever "emergency motion" for an antisuit damages order (Apple's reaction to the Colombian decision), and now...


  • the first-ever SEP lawsuit brought by Apple, which has been on the receiving end of SEP assertions for well over a decade but is only now striking back with a SEP for the first time in its history.

The venue is--of course--Munich, the world's #1 SEP injunction hotspot (while I haven't found out yet whether Apple is seeking an injunction, I'm sure it's either doing so now or would do so a little later).

The patent-in-suit is EP3178199 on "virtualized network function management." The company that filed for it, and obtained it, is Intel. A few months after the application was granted, Apple bought Intel's baseband chipset division, and in a subsequent transaction acquired many of Intel's cellular SEPs, such as this one. The database of the European Telecommunications Standards Institute (ETSI) shows that Intel declared the underlying patent application essential to the LTE (Long-Term Evolution, commonly known as 4G) standard, more specifically to its Evolved Packet System RAN part. RAN stands for Radio Access Network. The relevant 3GPP specification, no. 32.842, is titled "Telecommunication management; Study on network management of virtualized networks." That technical report was approved in 2015. All five IPR (intellectual property right) declarations related to that one were made by Intel, and Intel didn't subsequently declare any of those rights non-essential. So there is a FRAND commitment in place.

The Munich I Regional Court has assigned this case to its 21st Civil Chamber (Presiding Judge: Dr. Georg Werner). The case no. is 21 O 1970/22, and the first hearing (with the second one being a full trial) slated for February 15, 2023.

The same division will hear another Apple v. Ericsson countersuit on March 1, 2023: case no. 21 O 3471/22 over EP2946486 on an "apparatus, system and method of wireless backhaul and access communication via a common antenna array." This is a homegrown Apple patent, and appears to be a non-SEP.

At least one of Ericsson's cases has also been assigned to the Munich court's 21st Civil Chamber and will be heard in September 2022.

The two Munich complaints by Apple against Ericsson are not the only countersuits--just the most recently discovered ones. There is also a Mannheim case over another homegrown non-SEP, which will go to trial in October 2022, and a complaint with the United States International Trade Commission (USITC, or just ITC) seeking an import ban on mobile base stations implementing mmWave, but those patents haven't been declared essential to a standard.

Apple and Ericsson are not the only companies contributing to the continued growth of the Munich patent (and especially SEP) docket. In my next post I'll report on several new automotive SEP assertions that have very recently been brought there.