Ericsson Petitions ITC to Ban Infringing iPhones, iPads

Ericsson last week filed patent claims against Apple both with the United States District Court for the Eastern District of Texas and the United States International Trade Commission.

“Our suits filed yesterday assert 41 different patents,” Ericsson spokesperson Kathy Egan Wummer told the E-Commerce Times. “Of those, 14 are at issue in the ITC and the district court; the other 27 are at issue only in the district court.”

Eight of the patents are essential to 3GPP standards, and Ericsson has made fair, reasonable and non-discriminatory, or FRAND, commitments for them through the ETSI standards organization.

Ericsson asked the ITC to block U.S. sales of iPhones and iPads using technology that infringes its patents, Wummer confirmed.

Ericsson previously filed suit in the same Texas court seeking an independent assessment on whether it complied with its own commitment to offer FRAND terms in its global licensing offer to Apple.

Apple has filed a suit in the U.S. District Court for the Northern District of California, seeking a finding that it does not infringe seven other Ericsson patents.

“It looks like we have a battle royal,” said Dennis D. Crouch, an associate professor at the University of Missouri School of Law.

“Ericsson’s attorneys, Mike McKool and Doug Cawley, are two of the best trial lawyers in the country,” he told the E-Commerce Times.

Ericsson’s Claims

Ericsson has more than 35,000 patents worldwide, and it has signed more than 100 patent licensing agreements with most of the major players in the industry. It contributed significantly to 2G, 3G and 4G/LTE standards.

For two years prior to the expiration of Apple’s license, Ericsson extended offers to renew on FRAND terms, it said, and it further offered to subject the dispute over terms to arbitration.

Apple’s strategy of litigating one standard essential patent at a time could lead to perpetual litigation over hundreds of essential patents in dozens of countries, while it continues to use the technologies in question free of charge, according to Ericsson’s complaints.

“Apple has gigabucks and can game the process this way for quite a while,” remarked Mike Jude, a research manager with the Stratecast service of Frost & Sullivan.

“From a simple cost-benefit analysis perspective, if engaging in legal maneuvering is less expensive than paying royalties, then it’s in their best interest to do so,” he told the E-Commerce Times. “It might not be ethical, but it’s good business.”

Apple did not respond to our request to comment for this story.

Not FRANDS Forever

The issue is not whether Ericsson should license its IP to Apple, but which terms and conditions should apply, Jude said.

“FRAND is a very nebulous standard for licensing,” he explained. “Any time you have a word like ‘fair’ in a standard, you know someone’s going to take issue with it.”

It’s likely that at least one of the patents includes claims that are both valid and infringed, Crouch suggested.

“For Apple, it’s like the old Galaga arcade game — they lose unless they can shoot down each and every asserted claim of every patent,” Crouch said, but “Apple has enough cash to pay for any likely damage award.”

No Bans for Apple?

It’s unlikely that the U.S. ITC will agree to impose a ban on Apple’s products.

“Although an illegal use of IP constitutes a patent infringement and could be subject to some sort of ban, the market for Apple devices is so fast, and consumers are so rabid for them, that the ITC would likely mandate some palliatives before an outright ban,” speculated Jude, “perhaps mandating arbitration of some sort.”

A court might order an injunction, Crouch suggested, in which case Apple “will likely be able to redesign its products in order to avoid a full shutdown.”