Telefonaktiebolaget LM Ericsson : Ericsson Files New 337 Complaint Regarding Smartphones, Tablet Computers, And Televisions

On January 4, 2021, Ericsson Inc. of Plano, Texas, Telefonaktiebolaget LM Ericsson of Sweden, and Ericsson AB of Sweden (collectively, "Ericsson") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain electronic devices with wireless connectivity—including smartphones, tablet computers, and smart televisions—that infringe one or more claims of U.S. Patent Nos. 7,151,430 ("the '430 patent"); 6,879,849 ("the '849 patent"); 7,286,823 ("the '823 patent"); and 9,313,178 ("the '178 patent") (collectively, "the asserted patents"):

• Samsung Electronics, Co. Ltd. of Korea
• Samsung Electronics America, Inc. of Ridgefield Park, New Jersey
• Samsung Electronics Thai Nguyen Co. Ltd. of Vietnam
• Samsung Electronics Vietnam Co., Ltd. of Vietnam
• Samsung Electronics HCMC CE Complex, Co., Ltd. of Vietnam

According to the complaint, the asserted patents generally relate to wireless communication technology. In particular, the '430 patent relates to inductors implemented within a semiconductor chip. The '849 patent relates to an antenna built into a mobile communication device. The '823 patent relates to installing and running multimedia application software on a mobile terminal for a wireless telecommunications system. Lastly, the '178 patent relates to "over-the-top" (i.e., over the Internet) streaming of content, such as video content, with enhanced security.

The complaint asserts that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically identifies the following accused products: Samsung's Galaxy S20 5G, Galaxy S20+ 5G, Galaxy S20 Ultra 5G, Galaxy S10 series, Galaxy S7 series, Galaxy S5 series, Galaxy Z Fold2 5G, and Galaxy Fold 512GB mobile phones; Samsung's Galaxy Tab S7, Galaxy Tab S7+, Galaxy Tab S6, Galaxy Tab S6 Lite, Galaxy Tab S5e, Galaxy Tab S4, Galaxy Tab A7 10.4, Galaxy Tab A 8.4, Galaxy Tab A 8.0 Kids Edition, Galaxy Tab A 8.0, Galaxy Tab A 10.1, and Galaxy Tab A 8.0 tablet computers with wireless connectivity; and Samsung's The Frame, The Terrace, Q70T, Q80T, Q90T, Q800T, Q900TS, Q900, 32Q50, Q60T, The Sero, The Serif, TU7000, TU8000, TU8300, RU9000, Q50R, N5300, Q950TS, and TU6950 smart televisions.

Regarding domestic industry, the complaint states that the technology of the asserted patents is practiced by Ericsson Radio Systems ("ERS") products, including Radio 2203, as well as LG smartphone products and other products manufactured by Ericsson's licensees. Ericsson further states that it conducts relevant engineering, research, development, assembly, configuration, programming, testing, installation, and maintenance activities in the U.S. relating to the domestic industry products. Ericsson specifically refers to its headquarters in Plano, Texas which manages its U.S. operations, and significant investments in plant and equipment for its Radio Access Network ("RAN") group in Parsippany, New Jersey; Plano, Texas; Atlanta, Georgia; Chicago, Illinois; Pleasanton, California; Irvine, California; Seattle, Washington; and Kansas City, Kansas.

According to the complaint, the asserted patents are the subject of a pending district court action, Ericsson Inc. et al. v. Samsung Electronics Col, Ltd. et al., No. 2:21-cv-1 (E.D. Tex., filed Jan. 1, 2021). The '430 patent also was previously the subject of a district court action, Ericsson Inc. et al. v. Apple Inc., No. 15-cv-288 (E.D. Tex., filed Feb. 26, 2015), that settled on December 15, 2015. Further, the '823 patent was asserted against Apple in a separate district court action, Ericsson Inc. et al. v. Apple Inc., No. 15-cv-291 (E.D. Tex., filed Feb 26, 2015), which also settled on December 15, 2015. In addition, the complaint identifies other "pertinent litigation" between the parties, including (i) an amended complaint filed by Ericsson against Samsung on December 31, 2020 in the U.S. District Court for the Eastern District of Texas (Case No. 2:20-cv-00380-JRG) alleging infringement of other Ericsson patents, breach of contract based on Samsung's IPR licensing declarations to ETSI and the ETSI IPR Policy, and seeking a declaratory judgment that Ericsson has not breached its FRAND commitments; and (ii) a civil complaint filed by Samsung on December 7, 2020 against Ericsson concerning standard essential patents in The People's Republic of China Wuhan Intermediate People's Court, Hubei Province, Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson, E 01 Zhi Min Chu No. 743 (2020).

With respect to potential remedy, Ericsson requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at the Proposed Respondents and related entities.

Originally Published by Oblon, February 2021

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