Category Archives: Statute of Limitations

Resolving the Licensing of Standards-Essential Patents Dispositive Over Infringement Issues

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In Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., [2024-1515] (October 24, 2024), the Federal Circuit reversed and remanded the denial of an injunction against foreign infringement suits over standards essential patents, because resolving the licensing issue was dispositive of the infringement issue.

Lenovo and Ericsson had, for some time, attempted to agree on a global cross-license to SEPs of the other, which would include Ericsson’s 5G SEP.  When an agreement could not be reached, they resorted to litigation in and out of the United States.   Lenovo moved the district court to enter an antisuit injunction prohibiting Ericsson from, among other things, enforcing injunctions it obtained in Colombia and Brazil.  The district court denied the injunction using the framework from the Ninth Circuit’s opinion in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), which first determines that the parties and issues are the same in both the domestic and foreign suits, and the domestic suit must be dispositive of the foreign action to be enjoined.  Second, the domestic court considers whether at least one of the antisuit-injunction factors applies, including “whether the foreign litigation would (1) frustrate a policy of the forum issuing the [antisuit] injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable consideration[s].” Finally, the domestic court considers the antisuit injunction’s impact on comity.

The district court concluded that the case before it was not dispositive of the foreign action, and it therefore denied the requested antisuit injunction without reaching the second and third parts of the analysis.  On appeal from that decision, the key dispute is whether the US suit is dispositive of the Colombian and Brazilian actions that were sought to be enjoined.  The Federal Circuit concluded that the US suit was dispositive of the Colombian and Brazilian actions.

Lenovo argued that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an  issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims Lenovo maintains that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo’s view, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims; and (2) will, if decided in Lenovo’s favor (i.e., that Ericsson has not so complied), dictate the impropriety of Ericsson’s pursuing SEP-based injunctive relief.

Ericsson argued that the district court correctly concluded that, to meet the “dispositive” requirement, the instant suit must necessarily result in a global cross-license between the parties.

The Federal Circuit said that Ericsson and the district court got it wrong: Ericsson’s and the district court’s interpretation of what it takes to meet the “dispositive” requirement rests on a misunderstanding of Microsoft. The Federal Circuit saw nothing in the Microsoft district opinion that treated as “critical” the fact that the suit before it would result in a license. The court articulated the issues to be determined as both “whether Motorola may seek injunctive relief against Microsoft with respect to its [SEPs]” and “in the event Microsoft is entitled to a [worldwide RAND] license, what the RAND terms are for such a license.”  The Federal Circuit said that this was also true of the 9th Circuit’s opinion, noting that the discussion of the “dispositive” requirement focused on how Motorola’s RAND commitment affected its ability to seek SEP-based injunctive relief.

The Federal Circuit said that with this misunderstanding corrected, Microsoft leads to the rejection of Ericsson’s arguments regarding what it takes to meet the “dispositive” requirement. As to Ericsson’s argument that the domestic suit should resolve not just an injunction, but instead the entire foreign proceeding (e.g., by resulting in a license), that was not necessary in Microsoft.

Liberal Application of Relation Back Doctrine Saved Infringement Claims from Being Time Barred

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In Anza Techttp://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1045.Opinion.8-16-2019.pdfhnology, Inc. v. Mushkin, Inc., [2019-1045](August 16, 2019), the Federal Circuit reversed in part, vacated in part, and remanded, the district court determination that Anza’s second amended complaint was time barred by 35 U.S.C. § 286’s six year statute of limitations.

The district court granted Mushkin’s motion, ruling that the new infringement claims did not relate back to the date of the original complaint. The court explained that new infringement claims relate back to the date of the original complaint when the claims involve the same parties, the same products, and similar technology—i.e., when the claims are “part and parcel” of the original complaint. The court ruled that newly asserted claims of infringement do not relate back if the new claims are not an integral part of the claims in the original complaint and if proof of the new claims will not entail the same evidence as proof of the original claims. Because Anza acknowledged that Mushkin’s allegedly in-fringing activity all took place more than six years before the filing date of the second amended complaint, the court held that the effect of ruling that the second amended com-plaint did not relate back to the filing date for the original complaint was that all the asserted claims in the second amended complaint were time-barred.

At the outset, the Federal Circuit adopted the majority rule that the application of the relation back doctrine is reviewed de novo, while any underlying facts are reviewed for clear error.

The Federal Circuit notes that the Supreme Court interprets the relation back doctrine liberally, applying if an amended pleading relates to the same general conduct, transaction and occurrence as the original pleading, and that its predecessor, the Court of Claims, embraced a liberal, notice-based interpretation of Rule 15(c). The Federal Circuit said that that pertinent considerations bearing on whether claims are logically related include the overlap of parties, products or processes, time periods, licensing and technology agreements, and product or process development and manufacture. In determining whether newly alleged claims, based on separate patents, relate back to the date of the original complaint, the Federal Circuit said it would consider the overlap of parties, the overlap in the accused products, the underlying science and technology, time periods, and any additional factors that might suggest a commonality or lack of commonality between the two sets of claims.

The Federal Circuit rejected Mushkin’s argument that the withdrawal of all claims of infringement of the ‘927 patent indicates that the claims address different bonding techniques, noting that the asserted patent all share “the same underlying technology, . . . solving the same problem by the same solution.”

The Federal Circuit said that amended claims do not have to be the same as the original claims to relate back. Rather, the claims must arise out of the same conduct, transaction, or occurrence. The Federal Circuit concluded that the products implicated by all three complaints did relate back, but that the newly added products may not, unless they are sufficiently related. The Federal Circuit reversed as to the six products implicated by the original complaint, and remanded as to the two products added by the Second Amended Complaint.