Ericsson has increased the pressure on Samsung in the global licensing and patent dispute between the two companies. Now the Swedish mobile phone company is suing Samsung in Germany, Belgium and the Netherlands for infringement of mobile phone patents. At the same time, a US court is negotiating the validity of an anti-suit verdict by a Chinese court for the parallel FRAND proceeding in the US.
8 January 2021 by Mathieu Klos
Ericsson filed four lawsuits in Germany against Samsung in early January. In addition, the Swedish company sued the Korean competitor in Belgium and the Netherlands, each under two patents. In all European lawsuits, Ericsson claims infringement of so-called implementation patents. Unlike in parallel US proceedings, no SEPs are in dispute in Europe.
In Germany, Ericsson filed four actions with the Regional Court of Düsseldorf (case IDs: 4a O 1/21; 4a O 2/21; 4b O 1/21; 4b O 2/21). These relate to EP 30 08 908, EP 28 19 131 and EP 17 21 324. Ericsson also filed one action each in the Mannheim and Munich Regional Courts (case IDs not yet known). In Mannheim, the action concerns EP 14 65 334, and in Munich EP 22 20 848. Ericsson is seeking injunctive relief, information and damages in each case.
In the Netherlands, Ericsson struck Samsung with preliminary injunctions (case IDs: C/09/604745 KG ZA 20-1236; C/09/604749 KG ZA 20-1238). From the Regional Court The Hague, Ericsson is claiming cross-border injunctions for infringement of patents EP 28 19 131 and EP 14 65 334. Cross-border injunctions are a specialty of the Dutch patent court. It may issue an injunction for infringement of European patents for all countries in which the patent is valid.
At the patent court in Brussels, Ericsson filed normal preliminary injunctions based on the same patents. Here and in the Netherlands, Ericsson demanded that Samsung cease infringement of both patents.
The background to the lawsuits are failed license negotiations between the two companies. A long-lasting cross-licence agreement between both companies has expired, with Ericsson and Samsung failing to agree a new contract. Above all, the amount of payment from Samsung to Ericsson is said to be in dispute.
Ericsson and Samsung followed the failed licence negotiations with a trip to court. In early December, Ericsson sued Samsung in the District Court for the Eastern District of Texas for violating contractual obligations to negotiate in good faith and to license patents on FRAND terms.
Following this, on 29 December the Wuhan Intermediate People’s Court in China restricted Ericsson from seeking global injunctive relief on 4G and 5G SEPs. The court also prohibited Ericsson from seeking a FRAND ruling anywhere other than Wuhan, and also from seeking an anti-suit injunction to neutralise the Wuhan ruling.
However, Ericsson ignored that. The company then filed an anti-anti-suit injunction at the District Court of Texas. The court temporarily allowed Ericsson to proceed with its FRAND lawsuit. Yesterday, the court heard arguments of both parties on whether to continue permanently. A ruling on this anti-anti-suit injunction by the Texas court is expected Monday.
In Texas, Ericsson and Samsung are also facing off in numerous patent infringement cases. In early January, Ericsson filed eight lawsuits alleging infringement of SEPs. It also filed four lawsuits based on implementation patents.
According to well-informed sources, Samsung has since struck back based on four patents. Observers expect that the Korean mobile giant will also file counter claims against Ericsson in Europe.
The lawsuits in Europe are still very fresh. The court have not yet served some of the lawsuits to Samsung, which is still organising its defence. Currently, Simmons & Simmons is defending Samsung in the Dutch claims through the Amsterdam patent team around Bas Berghuis. He advises Samsung on a regular basis.
Samsung has apparently not yet appointed advisors in either Belgium or Germany. Here, however, it is very likely that the Korean company will work together with the litigators from Rospatt Osten Pross due to very close connections. Samsung has also worked with other German litigation firms in patent disputes in the past.
Ericsson prepared the lawsuits in both the Netherlands and Germany with its regular advisors. Taylor Wessing has a close relationship with Ericsson in the Netherlands. The Dutch team around Wim Maas is also leading the proceedings in Brussels.
In Germany, it is not a surprise to see both the litigators of Kather Augenstein and the patent attorneys of Hoffmann Eitle at the side of the Swedish company. Both represented Ericsson in a major lawsuit against Apple in 2015.
Kather Augenstein (Düsseldorf): Christof Augenstein (lead), Miriam Kiefer, Carsten Plaga, Sören Dahm, Benjamin Pesch, Martin Koszycki
Hoffmann Eitle (Munich): Markus Müller, Georg Siegert, Axel Esser (all patent attorneys)
Taylor Wessing (Eindhoven): Wim Maas (lead), Eelco Bergsma (lead), Christian Dekoninck (Brussels), Marie Keup (Brussels), Charlotte Garnitsch, David Mulder
Inhouse (Herzogenrath): Gabriele Mohsler (Vice President Patent Development), Andreas Tonscheidt
Simmons & Simmons (Amsterdam): Bas Berghuis van Woortman (lead); associate: Sebastien Versaevel (patent attorney)
Update: After a short but fierce global patent dispute Ericsson and Samsung have announced a multi-year agreement on global patent licenses, including patents relating to all cellular technologies and 5G.
According to a press release, the cross-license agreement covers sales of network infrastructure and handsets from January 2022. Furthermore, both firms agreed on technology cooperation projects to advance the mobile industry in open standardisation.
This settlement ends complaints filed by both companies before the United States International Trade Commission, as well as the ongoing lawsuits in several countries, including the fierce ASI dispute in China and the US over the end of 2020 and the beginning of 2021. Further details of the agreement are confidential.
This article was updated on 07.05.2021 to reflect the latest developments in the Samsung vs. Ericsson dispute.