Mobile communication

Patent firms stand down as Ericsson and Apple sign 5G licence agreement

Ericsson and Apple have signed a global patent licence agreement, ending one of the largest disputes over implementation patents and SEPs in recent years. It includes a global cross-licence for patented cellular standard essential technologies and grants certain other patent rights. The case, which was multi-jurisdictional, had involved several law firms across Germany, the Netherlands and the UK, as well as further afield.

12 December 2022 by Amy Sandys

Ericsson, Apple, settlement Ericsson and Apple have signed a licence agreement covering 4G and 5G patent technology, thus ending all global litigation between the parties ©sebra/ADOBE STOCK

The settlement between Ericsson and Apple, announced via an Ericsson press release on 9 December, ends all ongoing patent-related legal disputes between the parties in the US, Germany, the Netherlands, Belgium and the UK. It also ends disputes in Colombia and Brazil, while being set to strengthen collaboration between the two companies globally.

The recent settlement came during a FRAND trial between the two parties in the Eastern District of Texas, with the parties finding agreement on the penultimate day. The trial, which was five days long, had begun on 5 December.

Ericsson and Apple find middle ground

In the press release, Christina Petersson, chief IP officer at Ericsson, says, “We are pleased to settle the litigations with Apple with this agreement, which is of strategic importance to our 5G licensing program. This will allow both companies to continue to focus on bringing the best technology to the global market.” Apple has so far not released a public statement on the matter.

The next stage in the European dispute had been set for next week. On 21 December 2022, the 21st Civil Chamber of the Regional Court Munich had planned to hear the FRAND objection regarding five SEPs raised by Apple. A hearing on FRAND also took place in Ericsson’s claims against Apple in Mannheim in November. The court should have announced the verdict on 28 February 2023.

Licensing at the root

The dispute between Ericsson and Apple began after a licence agreement between the parties expired. In 2015, the companies concluded the agreement for a term of seven years, although they did not reach an agreement on an extension. Then, in autumn 2021, Ericsson applied to the District Court of The Hague for an anti-suit injunction against Apple. This was the first time a party had approached the Dutch courts with such a request. Ericsson also asserted seven SEPs and two implementation patents against Apple in the Netherlands and Belgium.

However, in early October 2021, an interim preliminary injunction hearing saw the District Court of the Hague dismiss a request by Ericsson for the AASI.

Shortly before Christmas last year, the judges also dismissed Ericsson’s claim to render a pre-emptive AASI in the main proceedings in the Netherlands. Previously, Apple had stated it would not file any ASI claims against Ericsson. However, this was just the prelude to the global dispute; in January, Ericsson filed patent suits against Apple in the US. Ericsson also demanded a US import ban for 4G and 5G products in three lawsuits filed with the United States International Trade Commission (ITC).

Theo Blomme

Ericsson then filed several patent lawsuits against Apple in Germany, the Netherlands and Brazil, with Apple also filing a case in Mannheim. In September 2022, Ericsson also achieved a sales ban against Apple’s new iPhone 14 in Colombia based on a preliminary injunction.

In the UK, both companies had instructed firms to oversee the case’s development. While the court stayed the FRAND aspect, there was preliminary movement concerning implementation patents.

Apple instructs a mix

In the Netherlands, Amsterdam-based partner Theo Blomme of Hoyng ROKH Monegier led the dispute for Apple. This was due to his instruction for the AASI proceedings. However, the relationship between the iPhone manufacturer and the Dutch office of the IP boutique is relatively new. Previously, Apple has worked with Hoyng ROKH Monegier in Germany.

Hoyng ROKH Monegier has its own patent attorneys, to whom it has likely turned for technical support in the proceedings.

Nicola Dagg, Kirkland & Ellis, partner

Nicola Dagg

On the other hand, international firm Kirkland & Ellis ran proceedings for Apple in London, led by partner Nicola Dagg. This was a change for the US company, which usually relies on regular advisors WilmerHale in proceedings in London.

For example, the WilmerHale team led by Anthony Trenton is currently representing Apple against non-practising entity Optis over FRAND and SEP proceedings. WilmerHale did, however, lead US proceedings for Apple against Ericsson, alongside Fish & Richardson.

In Germany, Hogan Lovells and Hoyng ROKH Monegier split the proceedings for Apple. In the past, Andreas von Falck and Klaus Haft were lead partners for Hogan Lovells and Hoyng ROKH Monegier respectively. This time, von Falck and his team advised Apple against the claims Ericsson made, while Haft handled Apple’s counterclaims against Ericsson in Germany.

The instruction came as no surprise, since the iPhone manufacturer recently worked with Freshfields Bruckhaus Deringer, Hogan Lovells and Hoyng ROKH Monegier on three major litigation campaigns in Germany.

However, as Freshfields acted for Ericsson in the dispute between Unwired Planet and Huawei, the patent team is unlikely to be considered for future representation in the Netherlands and Germany.

Wim Maas, Taylor Weening, Eindhoven, patent litigation

Wim Maas

Loyal firms for Ericsson

Wim Maas, partner at Taylor Wessing in Eindhoven, led both the AASI proceedings and the preliminary injunction proceedings for Ericsson in the Netherlands. In the past, Maas was the first choice for Ericsson in Dutch proceedings. Together with his team, which also includes partner Eelco Bergsma, he is now also handling the patent infringement suits. Patent attorney firm AOMB also provides technical expertise.

Taylor Wessing represented Ericsson in Belgium. The office has strong ties in Benelux, with lawyers often working cross-border on such cases. In the UK, the Swedish company also instructed Taylor Wessing. Here, partner James Marshall led the team.

On the other hand, in Germany, Ericsson relied on regular advisors at Kather Augenstein. The team around Christof Augenstein and Miriam Kiefer represented Ericsson in 2015 in a large wave of lawsuits against Apple, as well as in the dispute with Samsung in 2020. The latter settled only a few weeks after it began, thus having a much faster trajectory than the current dispute with Apple.

Patent attorneys from Hoffmann Eitle and Wuesthoff & Wuesthoff supported Kather Augenstein. Both firms have also worked for the Swedish company in the past.

Christof Augenstein

Christof Augenstein

Advisor list in full

For Ericsson
Kather Augenstein (Düsseldorf): Christof Augenstein (lead), Christopher Weber, Miriam Kiefer, Sören Dahm; associates: Carsten Plaga, Benjamin Pesch, Martin Koszycki, Benjamin Holtermann, Benedikt Walesch, Katharina Brandt, Sophie Prudent
Hoffmann Eitle (Munich): Markus Müller, Georg Siegert, Axel Esser, Veit Frank, Roland Schieren, Danche Spirkoska Jovanov (all patent attorneys)
Wuesthoff & Wuesthoff (Munich): Rainer Röthinger, Axel Katérle (both patent attorneys)
Taylor Wessing (Eindhoven): Wim Maas (lead), Eelco Bergsma; Christian Dekoninck (Brussels), Marie Keup (Brussels), David Mulder
AOMB (Eindhoven): Teun van Berkel, Ruben Tavernier, Bert Kneepkens (all patent attorneys)
Taylor Wessing (Brussels): Christian Dekoninck, Patricia Cappuyns, Marie Keup, Narmeen Al Ganim, Laura Coucke
Taylor Wessing (London): James Marshall, Mike Washbrook (partners); associates: Tom Foster, Sam Brendish, Xuyang Zhu, Rebecca Limer, Katie Atkinson
In-house (Herzogenrath): Andreas Tonscheidt (European claims coordination)

For Apple
Hogan Lovells (Düsseldorf): Andreas von Falck, Miriam Gundt, Henrik Lehment (all partners); associate: Lukas Sievers (public knowledge)
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft (public knowledge)
Maikowski & Ninnemann (Berlin): Gunnar Baumgärtel Felix Gross, Christoph Schröder, Ralf Emig, Andreas Tanner, Frederick Kramer, Sandro Staroske, Matthias Euler, Piet Schönherr (all patent attorneys)
Samson & Partner (Munich): Tobias Stammberger, Wolfgang Lippich, Georg Jacoby (all patent attorneys)
Hoyng ROKH Monegier (Amsterdam): Theo Blomme, (lead), Peter van Schijndel, Frank Eijsvogels, Laura Fresco (all partners), David Owen (partner, patent attorney); associates: Robin van Kleeff, Akiva Friedmann, Dirk Henderickx, Pien Haase, Nathalie Rodriguez; Niels Zelders, Andrew Lin, Matthias Pfister, Erik Lumens, Bumjoon Jang, Tom Kerssemakers (patent attorneys) (public knowledge)
Kirkland & Ellis (London): Nicola Dagg, Steven Baldwin, Daniel Lim, John de Rohan-Truba, Gabriella Bornstein (partners); associates: William Jensen (of counsel), Rory Clarke, Nessa Khandaker, Sheenal Singh, Ashley Grant (public knowledge)
In-house (US, Germany): Collette Reiner Mayer (head of IP litigation), Andrew Stein (principal managing counsel), Aaron Huang (team lead), Sonja Bohusch (secondment to Apple from DLA Piper in Germany)

Huawei and Oppo also settle

On the very same day as Ericsson and Apple, Huawei und Oppo also signed a global patent cross-licensing agreement, which covers cellular standard essential patents, including 5G.

Unlike in the Ericsson and Apple case, there was no litigation between the two Chinese mobile phone manufacturers. Oppo, however, is involved in a global series of lawsuits against Nokia. It is now the largest active litigation series in 2022 after the settlement between Ericsson and Apple.