In the News Law360

Samsung Asks ITC To Block Ericsson 5G Imports

Samsung Electronics Co. Ltd. has fired the latest salvo in an escalating patent fight, asking the U.S. International Trade Commission to block telecom giant Ericsson from importing 5G network equipment after licensing negotiations between the parties faltered.

South Korea-based Samsung claimed in a complaint filed Thursday at the ITC that Ericsson's Street Macro base stations, which provide network coverage to cellphone users, infringe four patents. The complaint also says Ericsson induces infringement by network service providers that deploy the allegedly infringing products.

The complaint pointed to Ericsson's contracts with 5G providers — including AT&T, Verizon and Sprint — to install 5G network base station equipment as evidence of ongoing infringement.

"Ericsson's accused products have been and are being continuously sold for importation, imported into the United States, and sold after importation for use in engineering, testing, and constructing 5G networks, or portions thereof, under these contracts," the complaint said.

Samsung's complaint comes on the heels of one Ericsson lodged against Samsung on Jan. 4 that asks the ITC to investigate certain Samsung devices with wireless connectivity. The parties are also locked in a battle in federal court, including a dispute over where the case can be heard.

Stockholm-based Ericsson sued Samsung in Texas over patents that have been declared essential to wireless standards and must be licensed on terms that are fair, reasonable and nondiscriminatory, or FRAND. The Wuhan Intermediate People's Court of China last month granted Samsung an injunction prohibiting courts anywhere else from adjudicating the dispute, and Ericsson has asked U.S. District Judge Rodney Gilstrap to block enforcement of that ruling.

The case has drawn competing declarations from former U.S. Chief Circuit Judges Randall R. Rader and Paul Michel, with the former filing a declaration on Jan. 1 supporting Samsung and saying he fully trusts the Chinese courts to handle the global dispute. Judge Michel, meanwhile, filed a brief in the case Tuesday backing Ericsson, saying he had "substantial notice and due process concerns" with the Chinese ruling because Samsung apparently filed the case there and sought the order barring other courts from intervening in secret.

Samsung and Ericsson are sparring over a cross-license for patents that have been declared essential to 4G and 5G wireless standards. In advance of the deal's expiration, the companies unsuccessfully sought to negotiate a new one.

Ericsson sued Samsung on Dec. 11 in the Eastern District of Texas, claiming it refused to accept a FRAND rate and said it would only cross-license its patents if Ericsson agreed to a lower rate. Ericsson said that was a breach of contract and the obligation to negotiate on FRAND terms.

The ITC cases do not involve patents involving industry standards.

Counsel for Samsung did not immediately return a request for comment, while counsel for Ericsson could not be immediately identified. Representatives for the companies did not immediately respond to a request for comment.

The patents-in-suit are U.S. Patent Nos. 9,521,616; 10,797,405; 9,041,074; and 9,736,772.

Samsung is represented by Paul F. Brinkman, Edward C. Donovan, Christopher Mizzo, Gregory A. Arovas and Todd M. Friedman of Kirkland & Ellis LLP, Kevin Hardy and Thomas D. Pease of Quinn Emanuel, and Paul Zeineddin of Axinn Veltrop & Harkrider LLP.

Counsel information for Ericsson could not be determined.

The case is In the Matter of Certain Wireless Communications Equipment, docket number 337-3522, before the U.S. International Trade Commission.