Inside on the sprawling US litigation battle between Ericsson and Apple: what the data tells us

Apple has sought an anti-suit injunction against Ericsson in one of the pair’s breach-of-FRAND suits in Texas. In one ongoing breach-of-contract suit, Apple most recently is seeking relief from an injunction Ericsson secured in Colombia against Apple’s 5G products this month. The iPhone maker alleges Ericsson would use it as leverage to demand non-FRAND terms. Ericsson has countered that Apple seeks “an order to effectively prohibit Ericsson from asserting its patent rights anywhere in the world”.

As the drama plays out, the parties have a multitude of US patent infringement litigation pending in US District Courts, the US International Trade Commission and the Patent Trial and Appeal Board. We used Docket Navigator to research each case and report its status, with important upcoming dates highlighted.

US District Court cases

Aside from both sides’ breach-of-contract lawsuits, which have been pending the longest in the US District Court for the Eastern District of Texas, on 17 January Ericsson also filed two patent infringement suits against Apple in the US District Court for the Western District of Texas. Both were stayed on 9 February pending an ITC investigation.

That was because, on 17 January, Ericsson had also entered the ITC with four complaints targeting Apple’s phones, tablets, and smart watches. Apple then struck back against Ericsson’s ITC cases by filing its own just a couple of days later, alleging infringement by Ericsson’s cellular base station communication equipment and components.

Ericsson’s first District Court case in January asserted four patents, the same ones it raised in its original ITC case:

• 10,425,817 — Subscription concealed identifier
• 11,139,872 — Codebook subset restriction signalling
• 8,102,805 — HARQ in spatial multiplexing MIMO system
• 9,532,355 — Transmission of system information on a downlink shared channel

The second case asserted eight assets – the same that have been cited in Ericsson’s second and third ITC cases:

• 10,880,794 — Inter-band handover of the same physical frequency
• 7,151,430 — Method of and inductor layout for reduced VCO coupling
• 7,957,770 — Mobile communication terminal for providing tactile interface
• 8,472,999 — Method and system for enabling dual standby state in a wireless communications system
• 8,792,454 — Secure and seamless WAN-LAN roaming
• 9,509,273 — Transformer filter arrangement
• 9,705,400 — Reconfigurable output stage
• 9,853,621 — Transformer filter arrangement

How Apple and Ericsson have fared in the District Courts over time

According to Docket Navigator, Ericsson has brought 24 lawsuits in the district courts since 2008. The platform has recorded the outcome of six cases since 2016, with the company settling four of them.

Source: Docket Navigator. Graphic: Angela Morris/IAM

Apple has a long track record as a defendant in US District Court cases. Since 2008, it has faced 739 lawsuits. Docket Navigator has tracked the outcome of 210 cases since 2016, finding the iPhone maker has settled 67% of them:

Source: Docket Navigator. Graphic: Angela Morris/IAM

US International Trade Commission cases

Back to the Ericsson v Apple dispute, as noted, Ericsson filed four complaints against Apple at the ITC on 17 January.

Ericsson’s third case, which asserts three patents, has progressed the most through the commission’s process. It asserts patents:

• 10,880,794 — Inter-band handover of the same physical frequency
• 8,472,999 — Method and system for enabling dual standby state in a wireless communications system
• 8,792,454 — Secure and seamless WAN-LAN roaming

Claim construction came out on 30 June, when the ITC determined that Apple failed to show that two of Ericsson’s patents were invalid, but ruled that the ‘999 patent was invalid as indefinite. The ITC reached the finding because of numerous typographic and scrivener’s errors that made it impossible to ascertain the meaning of some claim terms.

On 7 July, the ITC denied Ericsson’s motion for summary determination that it met the domestic industry requirement, noting that Ericsson needed to show more evidence and analysis to meet the requirement.

Source: Docket Navigator

In the first case, the parties recently submitted a joint claim construction chart and are busy in the process of discovery, which closes in mid-August. Expert discovery will extend farther. In that case, Ericsson asserted four patents, which were also asserted in Ericsson’s first US district court litigation.

Ericsson’s second case, which has a Markman hearing on 27 July, has asserted five patents:

• 7,151,430 — Method of and inductor layout for reduced VCO coupling
• 7,957,770 — Mobile communication terminal for providing tactile interface
• 9,509,273 — Transformer filter arrangement
• 9,705,400 — Reconfigurable output stage
• 9,853,621 — Transformer filter arrangement

Ericsson’s fourth case asserted the same four patents as the first, and the ITC has not instituted an investigation.

In the sole ITC case that Apple has filed against Ericsson at the ITC, the iPhone maker asserted three patents:

• 9,667,290 – electronic device with millimetre wave antennas
• 10,263,340 – wireless charging and communications systems with dual-frequency patch antennas
• 9,882,282 – same as above

Most recently, Apple and Ericsson each filed Markman briefs on 20 July in preparation for a claim construction hearing in mid-August.

How Apple and Ericsson have fared in the ITC over time

Ericsson has been a complainant in 10 ITC cases since 2008. According to Docket Navigator, it has settled five of its ITC cases since 2016.

Apple has appeared 51 times as a patent challenger in the ITC since 2008, and Docket Navigator since 2016 has recorded the outcome of 40 cases. The iPhone maker has settled 73% of them.

Source: Docket Navigator. Graphic: Angela Morris/IAM

Patent Trial and Appeal Board cases

Alongside the District Court and ITC activity in the dispute between Ericsson and Apple, the latter has mounted a fierce attack in the PTAB against Ericsson’s patents. Since 19 January, Apple has filed 34 inter partes review petitions. Thus far, the board has instituted just two of the petitions.

Source: Docket Navigator. Note: Chart is updated through 22 July.

Parties’ track record in the PTAB

Apple has a lot of litigation experience in the PTAB. Docket Navigator has tracked 832 IPRs that Apple has filed since 2013. It has fully won 30% and scored mixed results in 8% of the 685 outcomes that the platform has recorded since 2016.

Source: Docket Navigator. Graphic: Angela Morris/IAM

On the other side, Ericsson has defended 91 cases in the PTAB as a patent owner. Among 59 case outcomes that Docket Navigator has tracked, Ericsson has settled 64%.

Source: Docket Navigator. Graphic: Angela Morris/IAM