by Dennis Crouch
Ericsson v. Samsung, Docket No. 21-1565 (Fed. Cir. 2021)
I wanted to briefly highlight this important pending Federal Circuit appeal involving parallel litigation in both the US and China. The Swedish company wants to litigate in the US, while the Korean company wants to litigate in China.
- US Case: Ericsson Inc. v. Samsung Elecs. Co., No. 2:20-CV-00380-JRG (E.D. Tex. Jan. 11, 2021)
- Chinese Case: Samsung Electronics Co., Ltd. et al. v. Telefonaktiebolaget LM
Ericsson, (2020) E 01 Zhi Min Chu No. 743.
The Chinese court issued an anti-suit injunction order that would force Ericsson to stop litigating the case in the US (and globally anywhere but in Wuhan). The US court then issued an anti-interference order that bars Samsung from attempting to enforce the Chinese order against the US actions. Litigation between the parties is apparently also ongoing in the USITC, Netherlands, Germany, and Belgium.
Ericsson believes it has the stronger IP rights. There is a general indication that those rights will be more strongly protected and with a higher royalty rate if determined by a US court rather than a Chinese court. The following timeline from Samsung’s brief offers some historic perspective:
The basic setup here is as follows:
- Both parties have committed to license their standard essential patents (SEPs) for 2G, 3G, 4G, and 5G cellular communication according to “Fair, Reasonable and Non-discriminatory” (“FRAND”) principles
- 2014 global cross-license of the SEPs between the two companies. This agreement expired at the end of 2020.
- December 7, 2020: Samsung sued Ericsson in Wuhan People’s Court seeking a declaration of global licensing terms in accordance the FRAND principles.
- December 11, 2020: Ericsson sued Samsung in USA (E.D.Tex.) alleging Samsung failed to comply with its FRAND patent licensing commitments (and for declaratory judgment that Ericsson is not in breach). In January 2021, Ericsson amended its complaint to include assertions of patent infringement — this ensures Federal Circuit jurisdiction over the appeal.
- December 25, 2020: On request from Samsung, the Wuhan court issued an global “anti-suit injunction” — enjoining Ericsson from seeking relief from any other court, either in China or Globally. And also ordering withdrawal of any claims already filed (such as the Texas action). The order expressly indicates that violations of the order by Ericsson will be punished by with substantial fines.
- December 28, 2020: Ericsson successfully petitioned the Texas Court to issue a temporary restraining order (TRO) against Samsung.
- January 11, 2021: Texas court issued a fairly narrow “anti interference injunction” — sometimes known as an “anti-anti-suit injunction.” The court ordered that Samsung take no actions in the Chinese case that would interfere with the US lawsuit. In addition, Samsung must indemnify Ericsson against any penalties levied by the Wuhan Court associated with Ericsson’s efforts to litigate the US case.
Samsung has now appealed the case to the Federal Circuit — arguing that the anti-antisuit injunction should be vacated or significantly narrowed. Here are briefs filed:
- Ericsson.Samsung Opening Brief
- Ericsson.Response By Ericsson
- Ericsson.Samsung Reply Brief
- Ericsson.Amicus.IntlLawProfs (Supporting Samsung – although nominally neither party)
- Ericsson.Amicus.13Profs (Supporting Ericsson)
- Ericsson.Amicus.SenTillisIancu (Supporting Ericsson)
- Ericsson.AmicusNYIPLA (Supporting Ericsson)
I am generally sympathetic to Ericsson in this case with the big caveat that Ericsson committed its patents to FRAND licensing on a global level. It does not seem reasonable (the R in FRAND) to expect that the result will be a separate lawsuit regarding the global license in each individual country.