Do the Potentially Conflicting Rulings in the Ericsson/Lenovo Dispute Suggest Need for a Global FRAND Tribunal?

This will be a short post about a very complex topic, namely the ongoing global FRAND litigation between Ericsson and Lenovo.  A recap of that litigation, which includes U.S. proceedings in the Eastern District of North Carolina and the ITC, preliminary injunctions against Lenovo entered by courts in Brazil and Colombia, and a pending action in the Patents Court for England and Wales, can be found in the Federal Circuit’s October decision (excerpted here), which remanded for the North Carolina court to determine if Lenovo is entitled to an antisuit injunction, as well as in the November 19, 2024 decision of Mr. Justice Richards (Patents Court for England and Wales) denying Lenovo’s request for  declaration concerning a Short-Term License (not previously mentioned on this blog, but discussed on ip fray here).  So far, what we know is that (1) Office of Unfair Import Investigations (which assists the ITC) has advised he ITC that Ericsson’s offer was within the FRAND range; and (2) as noted above, courts in Brazil and Colombia have awarded Ericsson preliminary injunctive relief; but (3) the Federal Circuit concluded that an ASI might be appropriate, because the North Carolina action could be dispositive of the claims before the South American courts, though it will up to the North Carolina court to decide if the other relevant considerations, including comity, weigh in favor of an ASI; and (4) most recently, the Patents Court rejected Lenovo’s request for a declaration that a willing licensor and licensee would enter into a Short-Term License on terms to be decided by that court.  In this last decision, the court  distinguished Xiaomi’s successful request for a declaration that a willing licensor in the position of Panasonic and a willing licensee in the position of Xiaomi would agree to an interim license (previously discussed here), reasoning that although it is not necessarily an essential factor that both parties commit (as they previously had, in Panasonic), to abide by a U.K. FRAND determination, the fact that only one party (Lenovo) had made such a commitment here was a factor suggesting that the “utility” of such a declaration would be lacking; and that overall the court lacked the necessary “high degree of assurance” that Ericsson is acting in bad faith or that its offers have been supra-FRAND.  So the bottom line is that it’s possible that a U.S. court will grant an ASI, while the English court will not (and in my view should not, on the facts) grant a declaration that would function as something like an imperfect substitute for an ASI.  Meanwhile, the parties have been negotiating for years.

As I wrote in my contribution to the German FRAND Cases edited volume:

Some sort of global tribunal, as envisioned by Professor Contreras,  or mandatory global arbitration, as envisioned by Lord Justice Arnold,  might seem to be a better solution, to the extent it could provide a quick, competent, uniform, and country-independent system for processing SEP royalty disputes.  To be sure, the obstacles to establishing such a system, including the need to develop a common FRAND methodology and other ground rules, are immense,  but they are not necessarily insurmountable.  Whether policymakers will ever undertake to surmount them, much less succeed in doing so, may be the most important SEP-related question of the decade.  

That doesn't necessarily mean that the EC's Draft SEP Regulation is the solution (and it may well be stalled, see here), but can't we do better than the current piecemeal, forum-shopping-infested approach?

For further discussion of the Federal Circuit's decision regarding the ASI, see articles or posts by Jorge Contreras, Curtis Dodd and Chris Dubuc, and  Jeremiah Helm and Sean Murray.

First Wave of Amicus Briefs in EcoFactor v. Google Rehearing En Banc

In September, the Federal Circuit issued the following order for a rehearing en banc in EcoFactor, Inc. v. Google LLC:

IT IS ORDERED THAT:

 

(1) The petition for rehearing en banc is granted.

 

(2) The panel opinion in EcoFactor, Inc. v. Google LLC, No. 2023-1101, 104 F.4th 243 (Fed. Cir. 2024), is vacated, and the appeal is reinstated.

 

(3) The parties are requested to file new briefs, which shall be limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.

 

(4) Google’s en banc opening brief is due 45 days from the date of this order. EcoFactor’s en banc response is due within 45 days of Google’s en banc opening brief, and Google’s reply brief within 30 days of the response brief. The parties may file a supplemental appendix within 7 days after service of the reply brief. The court requires 30 paper copies of all briefs and appendices provided by the filer within 5 business days from the date of electronic filing of the document. The parties’ briefs must comply with Fed. Cir. R. 32(b)(1).

 

(5) Any briefs of amici curiae may be filed without consent and leave of the court. Any amicus brief supporting Google’s position or supporting neither position must be filed within 14 days after service of Google’s en banc opening brief. Any amicus brief supporting EcoFactor’s position must be filed within 14 days after service of EcoFactor’s response brief. Amicus briefs must comply with Fed. Cir. R.29(b).

 

(6) Oral argument will be held at a time and date to be announced later.

Google filed its brief on November 12, and the filing of the first wave of amicus briefs was completed last week.  Here is a list of the amicus briefs, with links.  I am one of the signatories of the Professors’ Brief; I have not yet read the other briefs very carefully.  We’ll see who files briefs in support of EcoFactor in a few weeks.

BRIEF FOR AMICUS CURIAE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION IN SUPPORT OF NEITHER PARTY

 

BRIEF FOR AMICUS CURIAE APPLE INC. IN SUPPORT OF DEFENDANT-APPELLANT GOOGLE LLC

 

BRIEF AMICUS CURIAE OF ASKELADDENL.L.C. IN SUPPORT OF DEFENDANT-APPELLANT AND REVERSAL

 

BRIEF OF ATLANTIC LEGAL FOUNDATION AS AMICUS CURIAE IN SUPPORT OF APPELLANT AND REVERSAL

 

BRIEF OF THE CHAMBER OF COMMERCE OF THE UNITED STATES OF AMERICA AS AMICUS CURIAE IN SUPPORT OF NEITHER PARTY

 

BRIEF OF CISCO SYSTEMS, INC. AS AMICUS CURIAE IN SUPPORT OF APPELLANT

 

BRIEF FOR AMICI CURIAE INTEL CORPORATION, DELL INC., MOTOROLA MOBILITY LLC, AND WESTERN DIGITAL CORPORATION IN SUPPORT OF APPELLANT GOOGLE LLC

 

BRIEF FOR AMICUS CURIAE INTELLECTUAL PROPERTY OWNERS ASSOCIATION IN SUPPORT OF NEITHER PARTY

 

BRIEF FOR INVENTORS DEFENSE ALLIANCE AS AMICUS CURIAE IN SUPPORT OF NEITHER PARTY

 

BRIEF OF AMICUS CURIAE LAWYERS FOR CIVIL JUSTICE IN SUPPORT OF APPELLANT

 

BRIEF FOR AMICUS CURIAE LICENSING EXECUTIVES SOCIETY (U.S.A. & CANADA), INC. IN SUPPORT OF NEITHER PARTY

 

BRIEF FOR AMICI CURIAE MEDTRONIC PLC AND ADVANCED MEDICAL TECHNOLOGY ASSOCIATION IN SUPPORT OF DEFENDANT-APPELLANT GOOGLE LLC

 

BRIEF OF AMICI CURIAE 14 PATENT AND EVIDENCE LAW PROFESSORS IN SUPPORT OF APPELLANT ON REHEARING EN BANC

 

BRIEF OF AMICI CURIAE SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG ELECTRONICS AMERICA, INC., IN SUPPORT OFAPPELLANT AND REVERSAL

 

BRIEF OF SAS INSTITUTE INC., SYMMETRY, LLC, SAP AMERICA, INC., GARMIN INTERNATIONAL INC., VIZIO, INC., ACT | THE APP ASSOCIATION, TESLA, INC., SOFTWARE & INFORMATION INDUSTRY ASSOCIATION, AND RED HAT, INC. AS AMICI CURIAE IN SUPPORT OF GOOGLE LLC

 

BRIEF OF AMICUS CURIAE UBER TECHNOLOGIES INC. IN SUPPORT OF NO PARTY

 

UNIFIED PATENTS, LLC’S AMICUS CURIAE BRIEF IN SUPPORT OF GOOGLE AND REVERSAL EN BANC

 

CORRECTED BRIEF OF US*MADE, THE NATIONAL RETAIL FEDERATION, THE COMPUTER & COMMUNICATIONS INDUSTRY ASSOCIATION, AND THE PUBLIC INTEREST PATENT LAW INSTITUTE AS AMICI CURIAE IN SUPPORT OF GOOGLE AND REVERSAL

 

For previous discussion on this blog, see here, here, here, and here.  For discussion of some of the amicus briefs, see this morning's story on Law360 (behind a paywall). 

Zheng on Unjustified Threats

In the course of working on my own project on the topic of wrongful patent assertion, I only recently came across this newly-published book by Dr. Minyu Zheng, titled Legal Responses to Unjustified Threats of Patent Infringement:  Intellectual Property Approach or Unfair Competition Approach? (Elgar Intellectual Property and Global Development series, 2024).  Here is the book description:

In this incisive book, Minyu Zheng examines the various legal responses to unjustified threats of patent infringement. Employing a comparative, jurisdiction-based analysis, Zheng investigates whether the unjustified nature of such threats originates from the inaccuracy of the infringing accusation, or the inappropriateness of issuing threats. In particular, Zheng reveals how to resolve threats which are issued in an undue way but contain a correct allegation of patent infringement.

I have only just started reading the book, but I have every reason to believe it will be an indispensable contribution to the growing literature on wrongful enforcement of IP rights.