Context: About a month ago, Judge Terrence Boyle of the United States District Court for the Eastern District of North Carolina denied Lenovo’s motion for an antisuit injunction (February 15, 2024 ip fray article). As expected by ip fray, Lenovo appealed. Instead of an article on this website, ip fray informed readers with a free email subscription (February 24, 2024 ip fray email to followers). You can also obtain a free email subscription by leaving your address in the box on the right-hand side. ip fray subsequently informed its LinkedIn followers of the fact that Lenovo brought, as also expected, a motion to expedite the appeal.
What’s new: Ericsson has filed its opposition to Lenovo’s motion to expedite the appeal. In its opposition brief, Ericsson disputes the urgency as well as the merits of the appeal. U.S. appeals courts consider both aspects when deciding on a motion to expedite.
Direct impact: Effectively, Lenovo’ motion is about preventing Ericsson from obtaining an extension of time to file its responsive brief. Given that it will be Ericsson’s only chance to brief the court before the hearing, a reasonable extension would normally be granted. Lenovo also wants to urge the court to schedule a hearing as soon as possible after briefing is complete, but it’s a busy appeals court with other important cases.
Wider ramifications: The Ericsson-Lenovo dispute is an interesting example of a new multi-jurisdictional dispute in which Latin American jurisdictions play a significant role for the purpose of enforcement and where a net licensee is hoping to gain leverage from UK court proceedings.
This is Ericsson’s opposition brief:
The part about (non-)urgency mentions that Lenovo hasn’t taken a license in over a decade and hasn’t signed a non-disclosure agreement (NDA) in two years either.
At first sight, that would suggest Lenovo may be the proverbial unwilling licensee. And in accordance with guidance provided by the Munich I Regional Court in a different case, it may already have met that threshold under German standard-essential patent (SEP) case law just because of its pursuit of an antisuit injunction against Ericsson. At minimum, there would be a strong presumption that Lenovo could probably overcome only if it promised in writing not to seek an antisuit injunction against any SEP enforcement actions by Ericsson in German courts and/or the Unified Patent Court. Put differently, Lenovo may pay a price in Germany (though it appears Ericsson hasn’t sued there yet), in which case the Latin American preliminary injunctions would not only have been useful in their own right but would also have served as a “stalking horse” in the global battle.
As far as the mere passage of time is concerned, ip fray is not yet in a position to form a definitive opinion on Lenovo’s willingness or unwillingness to take a license on FRAND terms. It is, of course, suspicious if a company remains unlicensed over such an extended period of time. But during that period, Lenovo acquired Motorola Mobility from Google, and there was a license agreement in place between Ericsson and Motorola Mobility. Subject to further analysis when additional information surfaces, it appears most likely at this point that Lenovo is a clearly unwilling licensee with respect to its original brand, but may have been licensed for the vast majority of cellular devices it sold during that period as a result of the Motorola deal.
The fact that the parties have not been able to enter into an NDA is also unusual. Apparently Lenovo declined to do so without some standstill provision. That would be another indication of unwillingness, which also applies to Lenovo’s litigation tactics.
Ericsson’s opposition notes that, unlike Microsoft v. Motorola, this is not a case where a U.S. FRAND determination would necessarily result in a binding license agreement, nor is there a claim in the U.S. case about whether Ericsson is entitled to injunctive relief.
As to the schedule in Latin America, the filing notes that “[a] decision in the Brazilian appeal is imminent, and Lenovo expects its Colombian appeal to be decided between June and August.” Under a regular appellate schedule, that means the Federal Circuit would see what actually comes out of those Latin American appeals before it holds the hearing. But Lenovo wants a hearing in July, which could be too late for Ericsson to brief the U.S. appeals court on the Colombian outcome, and if Ericsson has to file its responsive brief on May 1 (as Lenovo proposes), such briefing could not even be part of the responsive brief but would have to be done in the form of a request for judicial notice.
In Huawei v. Samsung, the Federal Circuit clearly preferred to get further information on cross-jurisdictional developments before deciding (and then they settled before a ruling came down). With respect to Lenovo’s appeal, it’s also fairly possible that the Federal Circuit will decline to expedite the appeal and thereby get the benefit of a much clearer picture in time for the hearing.