Ericsson Scores Another 5G Win, This Time With Deutsche Telekom
Outi Foote
This post is my final one on FOSS Patents. There is a possibility that others than me will maintain and contribute to this blog in the future. It will remain available as an archive for a transitional period.
I never monetized FOSS Patents. Not a single ad was sold. Not a single subscription. It started as a private, personal thing, and that's how my involvement with it is ending now. The content wasn't monetized either. Whenever I received serious requests for reuse, I authorized them, such as by the Library of Congress (LoC). By authorizing the LoC more than a decade ago to archive all FOSS Patents post, I already dedicated the content to the general public. And let's face it: the kind of content that you find here is rather short-lived in practical terms, though an archive may satisfy researchers' curiosity.
With the exception that I can't make decisions for third parties whose material I incorporated (which is easily identifiable as such, given that I properly quoted external sources and made the sources of images clear), you can use my FOSS Patents writings under the Creative Commons BY-ND license. Beyond that, I will consider even derivative works fair use so long as they don't create any misconceptions as to what my views really are--and what they are not.
I don't want to make this a big thing here. I'm neither celebrating nor mourning. This is a rational and well-considered step. Times change (for instance. I'm not available for consulting work anymore). I hope you enjoyed reading my posts as much as I enjoyed writing them, and I apologize for sometimes having gone off-topic.
I'm now, starting in a few days, going to be writing a book on the Microsoft-ActivisionBlizzard merger saga. I will do so in a beautiful place with excellent weather and in a quiet environment. That book project--my first one in decades--is going to essentially require my full attention until it's done. Given that I played Activision games in the 1980s, worked for Blizzard in the 1990s, opposed and thereby delayed a merger in the late 2000s, and played Candy Crush in the 2010s, I just want to write that book. And it's not going to be put under a Creative Commons license, by the way.
[PRELIMINARY NOTE] Let me note upfront that this is one of the last articles--possibly the penultimate one--that I'll ever publish on FOSS Patents. That doesn't mean FOSS Patents will disappear immediately: it remains available as an archive for a limited transitional period and may very well be used by others than me in the future. Nor will I personally disappear, but in the nearest term I will focus on writing a book about the Microsoft-ActivisionBlizzard merger saga, which became the most spectacular turnaround in merger regulation history and gave rise to a decision by a U.S. federal judge that communications between Microsoft and me were not a legitimate subject of pretrial discovery (as I mentioned toward the end of this recent post). I am going to remain interested in patent litigation and patent policy, as I have been for almost 20 years by now, but I have various new ideas and have to decide which ones to pursue, how, and when. I'll say something more in my final FOSS Patents post. As I'm also in the midst of relocation, this is a time of change and fresh new starts for me. [/PRELIMINARY NOTE]
Damages verdicts over standard-essential patents (SEPs) are rare because most SEP licenses are granted without litigation and in the few cases where infringement actions are filed, settlements typically occur ahead of any damages trial. But yesterday was one of those exceptional days: 3G Licensing, a subsidiary of patent pool administrator and licensing firm Sisvel, prevailed in the District of Delaware on two--based on the company's name, guess what--3G patents over mobile device maker HTC.
On a per-patent per-unit basis, the damages figure that was awarded shows that SEP infringement can get a lot costlier than licensing. 3G Licensing prevailed on two patents-in-suit, U.S. Patent No. 7,995,091 on a "mixed media telecommunication call manager" and U.S. Patent No. 6,856,818 on a "data store for mobile radio station." The damages verdict is so granular that it makes a distinction for the '818 patent between "Verizon Accused Products" and "Google-Fi [a mobile virtual network operator] Accused Products":
That litigation has been going on since 2017, following (according to the complaint) extensive but fruitless efforts to work out a negotiated agreement. I wasn't following it, but now that this interesting verdict has come out, someone may wish to take a closer look at the history of the case. The dispute is also instructive with a view to the debate over the EU SEP Regulation: I've been saying since earlier this year that any attempt by the EU to encourage and enable hold-out in its own courts will make other jurisdictions more attractive, and I mentioned U.S. damages verdicts as another way for SEP holders to stop infringement. There is nothing an EU regulation could lawfully (and without violating international trade agreements) do to prevent patent holders like 3G Licensing from enforcing their rights in the United States, where damages verdicts can become costly for infringers.
For now, let me just show you the public redacted version of the jury verdict. There's actually a typo in the verdict form concerning the number of the '091 patent that I noticed, but it was easy to find the correct one based on the complaint.
I found out from a Light Reading article that "Ericsson has filed a number of lawsuits against Lenovo and its subsidiary Motorola Mobility for patent infringement in multiple jurisdictions." While I have subscribed to Ericsson's press release on its website, and received an earnings update two days ago, I didn't get that one.
I'll try to find out more about that new cross-jurisdictional patent dispute that appears to involve SEPs as well as non-SEPs. So far I've been able to download from an electronic court docket the following complaint that was filed with the United States District Court for the Western Division of the Eastern District of North Carolina:
U.S. Patent No. 9,509,273 on a "transformer filter arrangement" (Ericsson prevailed on claim construction against Apple and selected four of its claims for the final part of the ITC investigation, which got settled)
U.S. Patent No. 11,122,313 on a "method and system for secure over-the-top live video delivery" (same family as the '178 patent discussed further above, but this particular family member has not previously been asserted)
As for the choice of venue, Ericsson's complaint points (inter alia) to a 2018 pleading in the Western District of Texas in which the Eastern District of North Caoflirna was described by those same defendants as a proper venue and forum conveniens:
This is a quick follow-up to yesterday's report on the Karlsruhe Higher Regional Court's appellate hearing in Deutsche Telekom v. IPCom. Unsurprisingly, the regional appeals court threw out the appeal as a spokesman for the court told me this afternoon. This means the Mannheim Regional Court's dismissal of the complaint stands.
Deutsche Telekom can try to appeal this matter to the Federal Court of Justice. Presiding Judge Andreas Voss ("Vo" in German) mentioned yesterady that the case has the potential to reach the top court. Whether this means that his court will authorize a further appeal is another question. The reasons for the appellate decision are not known yet. I look forward to a public redacted version of the decision in case it becomes available.
Deutsche Telekom is essentially trying to upend the standard-essential patent (SEP) licensing system--of which license-based settlments are a significant part--and even non-SEP licensing could be affected by extension (though antitrust law rarely applies to non-SEPs).
They settled for convenience, not for hold-up. No injunction was being enforced. No injunction had been ordered. And no injunction was on the horizon. Now imagine what would happen if companies that took a license after an injunction came down, or on the eve of a likely injunction, sought refunds through antitrust litigation.
The license agreement in question contains a clause 8.2 according to which IPCom was under no obligation to get other telecommunications network operators to take licenses on comparable terms. Deutsche Telekom argued that this merely meant they could not enforce an obligation on IPCom's part to enforce, but IPCom could have given Deutsche Telekom a refund regardless. Deutsche Telekom also argued that there was no waiver of potential damages claims. That attempt to vitiate an important clause (which had resulted from extensive negotiations, led by Dr. Roman Sedlmaier as outside counsel for IPCom) did not succeed in Mannheim, and I don't know yet whether it also proved dispositive in the appeals court. Be that as it may, if Deutsche Telekom could obtain a refund on antitrust grounds, numerous other licensees who never signed an agreement that contains such a clause--and/or licensees who took a license under the threat of injunctive relief--would bring such cases.
Judge Voss gave Deutsche Telekom's counsel from Clifford Chance every opportunity to make their case. In my recollection, Deutsche Telekom had at least about twice as much speaking time as IPCom, and easily three times as much time as a U.S. federal appeals court would have allotted to them. Frankly, their arguments were exceedingly repetitive.
Quinn Emanuel's Jrme Kommer didn't want to waste a minute of the court's time. He largely just pointed to his opposition brief, and focused on providing a few clarifications. Less is more in certain situations, and this was one of them.
If the decision makers in Brussels knew and understood the facts and the law, they'd realize that the proposed EU regulation on standard-essential patents (SEPs) is misguided and should be tossed (in favor of a complete do-over) regardless of whether one is more sympathetic to one camp or the other. But political dynamics are sometimes detached from reality, especially in the EU, whose economic policy track record is abysmal.
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