Wednesday, November 16, 2022

iPhone 14 and Apple's other 5G products can now be sold in Colombia as appeals court lifts Ericsson's preliminary injunction over standard-essential patent

For about four months, Ericsson was enforcing against Apple a preliminary injunction by a Colombian court over a 5G standard-essential patent. Apple asked the United States District Court for the Eastern District of Texas to interfere, but Judge Rodney Gilstrap declined the invitation. In Colombia, invoked the Universal Declaration of Human Rights, but the PI was deemed constitutional.

On Tuesday, an appeals court lifted the PI and Apple is now--until another injunction comes down, such as after a full trial--again able to sell 5G-compatible devices in Colombia, a market in which Apple generates only about 0.2% of its worldwide sales. The Sala Civil del Tribunal Superior del Distrito Judicial de Bogotá D.C., (Superior Court for the Judicial District, Civil Law Division) decided to vacate the injunction and to deny the "preliminary relief requested by Telefonaktiebolaget LM Ericsson":

This doesn't mean that Colombian users will actually get to enjoy 5G bandwidths: in the South American country, the network infrastructure isn't 5G-capable yet. But the more recent iPhone and cellular iPad generations all come with 5G, and Apple wasn't going to make a 4G iPhone 14 just for Colombia, which is why Apple couldn't launch the iPhone 14 in Colombia at the time it did elsewhere. Now it's just a matter of time until the iPhone 14 will show up in Colombian retail stores--and Apple will take orders via its Colombian online store (which by the time I published this article still said that Apple couldn't offer 5G devices in Colombia due to a court order). This may take a few weeks due to manufacturing bottlenecks.

Other gadgets that Apple can now sell in Colombia--and which were available there until the PI came down in the summer--include the iPhone 12, iPhone 13, and recent generations of the iPad.

The court decided not to award any fees as the lifted injunction was properly based on the representations made by Ericsson at the time without relying on the materials subsequently presented by Apple Colombia.

The order--signed by Judge Jorge Eduardo Ferreira Vargas--explains that on appeal there was a different procedural situation and the appeals court now has the benefit of Apple's additional arguments according to which it believes it is no longer reasonable--though it was at the time--to presume that Apple infringes the asserted patent claim (claim 13 of Colombian patent no. 36031). For example, Apple argued that there were "significant differences" between the claim language and the relevant part of the 5G standard. Apple filed a sworn declaration by an expert (after the PI had been granted). Apple also argued that the patent is invalid.

The fact that the general public doesn't have access to 5G in Colombia was not considered relevant, as a PI can also serve to prevent future acts of infringement.

While the appeals court does not generally rule out that preliminary injunctions over Colombian patents could be granted even on an ex parte basis (without hearing the defendant), it holds that it is premature to presume at this stage that the patent claim in question is indeed infringed. So this was a very case-specific determination, and Ericsson can still prevail in the main proceedings.

Let's put this into context. With the Colombian PI having been lifted, there isn't currently any court decision that Ericsson can enforce against Apple or the other way round. However, various Ericsson v. Apple rulings will come down in the early part of next year (unless the parties settle before):

In September, the Munich I Regional Court (the world's #1 patent injunction venue) held first hearings (remotely comparable to Markman hearings in the U.S.) in a SEP case--after which the court denied Apple's motion to dismiss--and a non-SEP. In both cases, the Munich court is inclined to hold Apple to infringe Ericsson's patents. On December 21, the Munich court will hold a FRAND hearing.

Last week, the Mannheim Regional Court held the first of a series of Ericsson v. Apple SEP trials. It's very likely that Ericsson will prevail on the technical merits, though the court promised to take another close look at Ericsson's arguments for a stay. The courtroom was sealed for the FRAND part, so I don't know what was said, but suffice it to say that Apple would be the first defendant in Mannheim (and Munich) in the post-Sisvel v. Haier era to prevail on a FRAND defense.

A week ago, the ITC conducted the first of three evidentiary hearings (i.e., trials) in its investigations of Ericsson's three complaints against Apple. Apple's countercomplaint will go to trial next month; Ericsson's other two complaints will be tried early next year. The ITC is a "patent graveyard" where complainants have a low hit rate (this also applied to Apple when it was suing Android device makers, with the exception of a case against Samsung that turned out useless nonetheless because Samsung simply worked around the asserted patents). But with three investigations ongoing, chances are that Ericsson will something sooner or later.

Cases are pending in other jurisdictions as well, such as in the UK. Also, Ericsson filed various actions in Colombia, including multiple preliminary injunction requests, and the appeals court's order lifting the preliminary injunction does not prejudge the overall outcome there.

The big question I've been asking myself for many months is whether the Ericsson v. Apple FRAND trial in the Eastern District of Texas--which is scheduled to begin on December 5--will actually take place or whether the parties will settle before. It would be the most logical settlement point in that dispute for at least the next six months.