Context: Ericsson and Lenovo have been embroiled in a 5G standard-essential patent (SEP) as well as non-SEP dispute since October 2023. After Ericsson obtained preliminary injunctions (PIs) over 5G SEPs in Colombia (December 23, 2023 ip fray article) and Brazil (December 24, 2023 ip fray article), Lenovo asked the United States District Court for the Eastern District of North Carolina for an antisuit temporary restraining order (TRO) and PI, mentioning among other things the pendency of more than 30 Latin American cases (December 30, 2023 ip fray article). The related briefing revealed that Lenovo offered Ericsson only 23 cents per phone (January 3, 2024 ip fray article) based on an extrapolation of recent UK jurisprudence that according to Lenovo suggested a $5.22-per-unit aggregate royalty for all 5G SEPs (January 7, 2024 ip fray article). The court docket indicates that the TRO hearing was held on January 11, but no decision has come down, which is unusual.
What’s new: New filings made by Lenovo on January 30 and Ericsson the following day reveal that Ericsson’s Colombian PI motions involved “routine requests for a defensive anti-antisuit injunction (AASI).” Those requests were tacitly denied. Lenovo would like Judge Terrence Boyle to interpret an appeal by Ericsson in Colombia as a push for an AASI, but Ericsson clarified that it had merely lodged an appeal in a case where a PI was rejected and Ericsson is seeking a review of the ruling as a whole, starting with the purely technical merits.
Direct impact: Lenovo’s filing should be interpreted as a sign of impatience. Given that TRO motions are sometimes decided within hours (and without a hearing), it’s highly uncommon that such a motion remains unresolved after more than a month. Even since the TRO hearing, three weeks have passed as of today. For lack of information on what was said at the hearing, and in the absence of other case law in that district and even in the Fourth Circuit, ip fray cannot offer a prediction, but the fact pattern is far closer to the one over which Apple failed to obtain comparable relief against Ericsson in 2022 than the one that entitled Microsoft to an antisuit injunction against Motorola Mobility in 2012.
Wider ramifications: This dispute underscores the potential of Latin American jurisdictions to bring infringers to the negotiating table. But it’s not necessarily easy for SEP holders to prevail: Ericsson wasn’t granted a pre-emptive AASI in Colombia, and was also denied a PI over another 5G SEP in Colombia. Latin American courts may, however, be prepared to grant (even preemptive) AASIs going forward as they now see Lenovo’s attempts to undermine their jurisdiction.
The new filings show one of Ericsson’s Colombian motions for 5G SEP PIs has been denied. The patent-in-suit in that case is Colombian patent no. 37362. Ericsson’s response to Lenovo’s notice shows that Ericsson did nothing particular to obtain an AASI, and isn’t going to get one immediately:
- Ericsson appealed a decision it losts on the technical merits.
- There is no reason to assume that the appeal will be resolved in the nearest term.
- In other words, this is not like a renewed push for an AASI, which Ericsson actually could have made on the basis of Lenovo’s pursuit of a U.S. antisuit injunction.
Furthermore, it turns out that one of the three PIs mentioned on December 23 actually hadn’t come down yet, but it ultimately did on January 23, 2024. That was one month after ip fray reported on three Colombian PIs including that one. This was a misunderstanding of a court document, but inconsequential as the other two Colombian 5G PIs were already in place and even this one came down, just a little later.
It appears that Lenovo was looking for an excuse to remind Judge Boyle of the pendency of the TRO motion and for a way to argue that it was now even more warranted and urgent than ever before. But Ericsson’s lawyers have been able to show that nothing significant had happened, so Lenovo may not have done itself a favor.
If Judge Boyle had been totally convinced of what Lenovo claimed in its late-December motion and at the January 11 hearing, he would presumably have entered a TRO, as it would have been in place for only a short while before it would have had to be replaced with a PI (or would have gone away). But it is strange that he is struggling with that motion. The fact that Lenovo still hasn’t taken a worldwide license, however, makes it even easier for the court to deny the TRO motion now. Apparently the claims of irreparable harm were overstated.
Finally, the two documents. First, Lenovo’s January 30 filing:
And Ericsson’s January 31 response: