Apple says Ericsson filed ‘secret’ Colombian patent lawsuits to sideline Texas court

Apple logo is seen in this illustration taken March 1, 2022. REUTERS/Dado Ruvic/Illustration

(Reuters) – Apple Inc accused Ericsson Inc on Friday of covertly filing patent lawsuits in Colombia in a bid to force Apple to abandon a Texas court dispute and agree to an unfair patent license.

Apple told the federal court in Marshall, Texas, that Ericsson filed more than ten lawsuits in Colombia, all “in secret” and “with absolutely no notice to Apple,” seeking leverage in their fight over licensing rates for Ericsson’s 5G wireless standard-essential patents.

A Bogota court blocked Apple from selling phones that allegedly infringe an Ericsson 5G patent in one of the cases last week, Apple said.

Ericsson declined to comment Monday. Apple and its attorneys did not immediately respond to a request for comment.

Owners of patents covering technology necessary to comply with international standards must offer licenses on fair, reasonable, and non-discriminatory (FRAND) terms. Disputes over FRAND licensing have led to several high-profile battles in the telecom industry.

Ericsson sued Apple in Texas last year, seeking a declaration that it offered Apple FRAND terms for its 5G wireless patents and arguing Apple’s licensing policies were unfair. According to Apple’s filing, the companies agreed that the Texas case would “lead to a binding resolution of FRAND terms for a global cross-license.”

Apple accused Ericsson on Friday of filing”secret, ex parte” requests for court orders around the world blocking imports and sales of its products, forcing Apple to either deal with the costs or submit to Ericsson’s demands before the Texas court’s planned December trial.

“Ericsson knows that a December trial will expose its royalty demands as grossly excessive and directly contrary to FRAND,” Apple said.

Most of Ericsson’s efforts have been unsuccessful, but the Bogota court granted Ericsson a preliminary injunction on Thursday, Apple said.

Apple asked the U.S. District Court for the Eastern District of Texas to force Ericsson to cover Apple’s expenses from the Colombia litigation.

Apple also accused Ericsson of hypocrisy, noting the Swedish telecom giant won an order from the same Texas court blocking Samsung from using proceedings in China to interfere with their now-settled dispute over patent licensing.

The case is Ericsson Inc v. Apple Inc, U.S. District Court for the Eastern District of Texas, No. 2:21-cv-00376.

For Ericsson: Ted Stevenson of Alston & Bird; Nicholas Mathews of McKool Smith; and Christine Woodin of Hueston Hennigan

For Apple: Mark Selwyn and Joseph Mueller of Wilmer Cutler Pickering Hale & Dorr; Ruffin Cordell, Benjamin Elacqua and Betty Chen of Fish & Richardson

Read more:

Ericsson sues Apple to clear proposed 5G patent licensing rates

Ericsson sues Apple again over 5G patent licensing

Ericsson settles patent dispute with Samsung

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