{"id":4283,"date":"2024-10-24T13:44:00","date_gmt":"2024-10-24T18:44:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=4283"},"modified":"2024-11-07T08:55:10","modified_gmt":"2024-11-07T14:55:10","slug":"resolving-the-licensing-of-standards-essential-patents-dispositive-over-infringement-issues","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=4283","title":{"rendered":"Resolving the Licensing of Standards-Essential Patents Dispositive Over Infringement Issues"},"content":{"rendered":"\n

In Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc.<\/em>, [2024-1515]<\/a> (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.<\/p>\n\n\n\n

Lenovo and Ericsson had, for some time, attempted to agree on a global cross-license to SEPs of the other, which would include Ericsson\u2019s 5G SEP.\u00a0 When an agreement could not be reached, they resorted to litigation in and out of the United States. \u00a0\u00a0Lenovo moved the district court to enter an antisuit injunction prohibiting Ericsson from, among other things, enforcing injunctions it obtained in Colombia and Brazil.\u00a0 The district court denied the injunction using the framework from the Ninth Circuit\u2019s opinion in Microsoft Corp. v. Motorola, Inc.<\/em>, 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.\u00a0 Second, the domestic court considers whether at least one of the antisuit-injunction factors applies, including \u201cwhether 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\u2019s in rem <\/em>or quasi in rem <\/em>jurisdiction; or (4) where the proceedings prejudice other equitable consideration[s].\u201d Finally, the domestic court considers the antisuit injunction\u2019s impact on comity.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

Lenovo argued that Ericsson\u2019s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first <\/em>complied with the commitment\u2019s obligation to negotiate in good faith over a license to those SEPs. Thus, the \u201cdispositive\u201d requirement is met, because whether Ericsson has <\/em>complied with its good-faith-negotiating obligation is an  issue that (1) is before the district court\u2014both via Ericsson\u2019s claims and Lenovo\u2019s counterclaims Lenovo maintains that Ericsson\u2019s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first <\/em>complied with the commitment\u2019s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo\u2019s view, the \u201cdispositive\u201d requirement is met, because whether Ericsson has <\/em>complied with its good-faith-negotiating obligation is an issue that (1) is before the district court\u2014both via Ericsson\u2019s claims and Lenovo\u2019s counterclaims; and (2) will, if decided in Lenovo\u2019s favor (i.e., that Ericsson has not <\/em>so complied), dictate the impropriety of Ericsson\u2019s pursuing SEP-based injunctive relief.<\/p>\n\n\n\n

Ericsson argued that the district court correctly concluded that, to meet the \u201cdispositive\u201d requirement, the instant suit must necessarily result in a global cross-license between the parties.<\/p>\n\n\n\n

The Federal Circuit said that Ericsson and the district court got it wrong: Ericsson\u2019s and the district court\u2019s interpretation of what it takes to meet the \u201cdispositive\u201d requirement rests on a misunderstanding of Microsoft<\/em>. The Federal Circuit saw nothing in the Microsoft district <\/em>opinion that treated as \u201ccritical\u201d the fact that the suit before it would result in a license. The court articulated the issues to be determined as both \u201cwhether Motorola may seek injunctive relief against Microsoft with respect to its [SEPs]\u201d and <\/em>\u201cin the event Microsoft is entitled to a [worldwide RAND] license, what the RAND terms are for such a license.\u201d\u00a0 The Federal Circuit said that this was also true of the 9th<\/sup> Circuit\u2019s opinion, noting that the discussion of the \u201cdispositive\u201d requirement focused on how Motorola\u2019s RAND commitment affected its ability to seek SEP-based injunctive relief.<\/p>\n\n\n\n

The Federal Circuit said that with this misunderstanding corrected, Microsoft <\/em>leads to the rejection of Ericsson\u2019s arguments regarding what it takes to meet the \u201cdispositive\u201d requirement. As to Ericsson\u2019s argument that the domestic suit should resolve not just <\/em>an injunction, but instead the entire <\/em>foreign proceeding (e.g., by resulting in a license), that was not necessary in Microsoft<\/em>.<\/p>\n","protected":false},"excerpt":{"rendered":"

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 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[55,115,114,94],"tags":[],"class_list":["post-4283","post","type-post","status-publish","format-standard","hentry","category-injunction","category-licensing","category-sep","category-statute-of-limitations"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4283","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=4283"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4283\/revisions"}],"predecessor-version":[{"id":4284,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/4283\/revisions\/4284"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=4283"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=4283"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=4283"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}