Posts Tagged: "Ericsson"

The Top U.S. FRAND / RAND Licensing Developments of 2022: Policy Statements, Patent Pools and IEEE Changes

While 2022 was somewhat less eventful than 2021 in terms of significant developments in fair/reasonable and non-discriminatory (FRAND/RAND) licensing occurring in the United States, the past year still did not disappoint and underscores the continued and growing interest from government in the standards related patents space. In 2022, the most progress was made on matters and issues we wrote about last year: i.e. government policy developments, Continental v. Avanci, the IEEE’s standards-related Patent Policy, and Ericsson v. Apple / Apple v. Ericsson  (see here and here)

LG’s Recent Infringement Fight Against TCL Could Take Some Tips from DivX’s Approach

On April 21, 2022, LG Electronics Inc. filed suit against Chinese television manufacturer, TCL, through several of its affiliates and related entities, in the Eastern District of Texas for patent infringement. See LG Electronics, Inc. v. TCL Electronics Holding Ltd. et al, Case: 2:22-cv-00122 (EDTX). The patents relate to display hardware, wireless transmission technology, and user interface controls. Several of TCL’s 4-Series, 5-Series, and 6-Series TVs are accused of infringement. The patents asserted by LG are U.S. Patent Nos. 7,982,803, 9,080,740, 9,788,346, 10,334,311 and 10,499,431. LG requests a jury trial, seeks a permanent injunction, and a finding that the infringement is willful (for enhancement purposes) and exceptional (for the awarding of attorneys’ fees).

Apple/ Ericsson Dueling FRAND Suits Highlight Issues With Recent Proposed Changes in DOJ’s SEP Policies

On January 19, consumer tech giant Apple filed a complaint with the U.S. International Trade Commission (USITC) asking the agency to institute a Section 337 investigation against Swedish telecom firm Ericsson, asserting a trio of patents related to millimeter wave technology used by electronic devices communicating on mobile 5G networks. The Section 337 complaint is the latest salvo in a legal battle that highlights the mounting tension surrounding standard-essential patents (SEPs) and where infringement litigation fits into the fair, reasonable and non-discriminatory (FRAND) obligations that standards-setting organizations (SSOs) impose upon SEP owners.

Patent Damages Laws Regarding Apportionment are Inapplicable to Breach of Contract (FRAND) Claims

In a previous article, we discussed the difference between a reasonable royalty for patent infringement and a FRAND licensing rate, both in terms of their origins and objectives: the former being a creature of statute and case law that seeks to compensate a patent owner for infringement, whereas the latter is rooted in contract and seeks, amongst other things, to address issues of royalty stacking and discriminatory licensing. Despite these differences, we noted that these two concepts have often been treated interchangeably by courts, often leading to confusing results…. Pursuant to appeal of that decision, however, the United States Court of Appeals for the Fifth Circuit has now addressed the photonegative question in HTC Corp. et al. v. Telefonaktiebolaget LM et al., case number 19-40643: are patent laws regarding what constitutes a reasonable royalty applicable to questions of compliance with FRAND-related contractual obligations? Though the majority decision did a great job highlighting the distinction between these two different concepts, there was a concurring decision that continues to blur the line.

Fifth Circuit Affirms Texas Court’s Judgment that Ericsson Complied with FRAND Obligations

The U.S. Court of Appeals for the Fifth Circuit today affirmed an Eastern District of Texas court’s judgment for Ericsson, finding no error in the district court’s jury instructions, declaratory judgment or evidentiary rulings, and rejecting HTC Corporation’s allegations that Ericsson had breached its contractual obligation to offer a license on fair, reasonable, and non-discriminatory (FRAND) terms. The case stems from HTC’s refusal of a 2016 licensing deal in which Ericsson proposed a rate of $2.50 per 4G device to license its standard essential patents for mobile devices. Although HTC had previously paid Ericsson about $2.50 per device for the patents under a 2014 licensing agreement, in 2016 the company independently assessed the value of Ericsson’s patents and ultimately proposed a rate of $0.10 per device in 2017, which was based on the “smallest salable patent-practicing unit.” According to the Fifth Circuit, Ericsson considered this “so far off of the norm” that negotiations stopped, and a few days later, HTC filed suit in the U.S. District Court for the Eastern District of Texas, alleging breach of FRAND terms.