Tuesday, September 27, 2022

With additional favorable claim constructions, Ericsson inches closer to U.S. import ban on Apple gadgets

Settlement pressure is clearly mounting on Apple in its dispute with Ericsson. Meanwhile, it looks like Apple's patent license agreement with Nokia expired a few months ago and hasn't been renewed yet--and the one with InterDigital will expire this week, with no renewal having been announced either.

Ericsson continues to enforce a preliminary injunction in Colombia that bars Apple from selling 5G devices--including, but notl limited to, the new iPhone 14--in the Latin American country. The week before last, the Munich I Regional Court held its first hearings in two Ericsson v. Apple cases, and in both cases it looks like only a strong invalidity defense could help Apple. The court's 21st Civil Chamber under Presiding Judge Dr. Georg Werner rejected Apple's attempts to narrow a non-standard-essential patent Ericsson is asserting against Apple's distribution of WhatsApp's iOS app and a 4G/5G SEP. In three weeks today, the Mannheim Regional Court's Second Civil Chamber (Presiding Judge: Dr. Holger Kircher) will conduct a trial of an Apple v. Ericsson countersuit.

Yesterday, Ericsson made further headway at the United States International Trade Commission (USITC, or just ITC). Administrative Law Judge (ALJ) MaryJoan McNamara, who presides over one of three pending ITC investigations of Ericsson complaints against Apple (the larger one of the two non-SEP cases), entered a claim construction order:


The net result is that

  • Ericsson prevailed on

    • all three disputed claim terms of U-S. Patent No. 7,151,430 on a "method of and inductor layout for reduced VCO [voltage-controlled oscillator] coupling" (Apple sought narrower interpretations of all three terms, and in two of those cases argued indefiniteness in the alternative) and

    • both disputed claim terms of a pair of patents from the same family--U.S. Patent No. 9,509,273 and U.S. Patent No. 9,853,621 on a "transformer filter arrangement"--against Apple's attempts to narrow the terms or, in the alternative, have one of them held indefinite;

  • while Apple prevailed on

    • the sole disputed claim term ("vibrator"--expressly defined by the specification in ALJ McNamara's opinion as meaning a "vibration motor and vibration element" while Ericsson argued the plain and ordinary meaning was "a module that provides tactile information in response to a control signal") of U.S. Patent No. 7,957,770 on a "mobile communication terminal for providing tactile interface" and

    • the sole disputed claim term of U.S. Patent No. 9,705,400 on a "reconfigurable output stage".

      What's interesting about the EP'400 situation is that in purely linguistic terms, Ericsson seemingly sought a narrower construction than Apple: Ericsson's proposed construction was identical except for multiple insertions of "electrical" before the word "arrangement." Normally, an additional qualifying attribute narrows the meaning. Here, however, the judge basically said that Ericsson's proposed construction would be effectively broader by merely requiring "first and second operating states of the output stage" and blurring the distinction between two claim terms.

      I've seen countless claim construction disputes over time, but this is the first time that a proposal containing an additional qualifier was deemed broader than the same text without that qualifier. Again, it's linguistically counterintuitive.

What does this Markman outcome mean for the further process, especially in the build-up to, and with a view to, the January trial (called evidentiary hearing)?

Ericsson is now in great shape with respect to three patents from two families. The situation with respect to those patents may be similar to those Munich cases in which Apple practically depends on its invalidity defenses.

For the '770 patent, Ericsson now likely depends on an infringement theory under the doctrine of equivalents (unless it has waived that one, which I doubt). Paragraph 77 of the complaint stated this:

"On information and belief, the Accused Products that are sold for importation, imported, and/or sold within the United States after importation by Apple infringe claims 1, 2, 4, 7-10, 12, 15, and 16 of the ’770 patent, either literally or under the doctrine of equivalents."

It's not hard to imagine that a DOE infringement theory could work even if Apple's accused devices don't come with a "vibration motor and vibration element" in a strictly literal sense.

Given that the ITC favors the streamlining of cases (i.e., complainants dropping patents ahead of trial), and that the ALJ and Ericsson don't seem to see eye-to-eye on what to make of the '400 patent, it may be tactically opportune for Ericsson to just withdraw that one. Maybe the Commission (the top-level decision-making body) would agree with Ericsson, or the Federal Circuit might reverse the ITC--but there's probably more to be gained by just focusing on other patents.

All in all, claim construction has gone quite well for Ericsson in its offensive cases (and nothing has happened in Apple's offensive case yet):

All in all, it doesn't look--at this stage--like Apple can realistically expect to fend off all three ITC complaints by Ericsson. Taken together with the situation Apple faces in Colombia and increasingly in Germany, I really wonder whether the FRAND trial in the Eastern District of Texas will take place in December or whether there'll be a renewal of the parties' cross-license agreement before then. But for now they're fighting hard, including that Ericsson accuses Apple of having acted in bad faith when the license agreement that expired prior to the current wave of infringement cases was negotiated.