Pretty good analysis of injunctive relief and when it is applicable and with what constraints. The ITC seems to be more favorable, but it is also true that the FTC and the District Courts are less favorable.
Note that Ericcson's District Court filing isn't requesting injunctive relief, nor is it something that court will decide. The request is for the court to rule on whether the offer they made to Apple was fair, reasonable and non-discriminatory (FRAND). The rest would be up to the ITC to decide based in part on what the District Court finds. Ericsson might not get the result they want in Texas making it a wasted effort at the ITC. Then again they may.
I would have expected Apple to want a determination of the same thing and had initially assumed Apple considered the Ericsson licensing offer unfair. If the press reports are accurate Apple is not interested in whether it was a fair/FRAND offer and refuses to be bound by it. Apparently they wish to carve out an exception for themselves, in effect an agreement that treats them more favorably than other licensees. That hardly sounds either fair or non-discriminatory does it?
I understand the reasons of course as it keeps more money in Apple's pocket with a bonus of leaving other manufacturers at a disadvantage, at least until the current agreements expire. Business is business I suppose and at the end of the day they were all just chasing the money.
Note that Ericcson's District Court filing isn't requesting injunctive relief. The intent is for the court to rule on whether the offer they made to Apple was fair, reasonable and non-discriminatory (FRAND).
I would have expected Apple to want a determination of the same thing. If the press reports are accurate Apple is not interested in whether it was a fair offer and refuses to be bound by it.
The filing would be a necessary step in a request for injunction from the ITC, i.e., what are the facts.
If the facts are that Apple refuses the Court's determination, then Ericsson already has the ITC investigation underway for infringement, and the Court would defer to the ITC for resolution, which may very well include an injunction.
edit;
I should add that the Court would still have to determine if Apple was "unwilling" to resolve the issue, and whether the Court would have to intervene to set rates.
The filing would be a necessary step in a request for injunction from the ITC, i.e., what are the facts.
If the facts are that Apple refuses the Court's determination, then Ericsson already has the ITC investigation underway for infringement, and the Court would defer to the ITC for resolution, which may very well include an injunction.
The filing would be a necessary step in a request for injunction from the ITC, i.e., what are the facts.
If the facts are that Apple refuses the Court's determination, then Ericsson already has the ITC investigation underway for infringement, and the Court would defer to the ITC for resolution, which may very well include an injunction.
edit;
I should add that the Court would still have to determine if Apple was "unwilling" to resolve the issue, and whether the Court would have to intervene to set rates.
The District Court would have no reason to defer. They aren't being asked to award damages or order an injunction. It's not at cross-purposes with the ITC filing. At the District Court It's a straightforward request for a finding on whether the offer was in accordance with FRAND commitments AFAIK. At the ITC it would be whether Apple is an unwilling licensee. If so, and in accordance with the Presidential veto letter, Apple would meet the exception clause for the issuance of an exclusion order (often inaccurately called an injunction by the press)
EDIT: I'll stand corrected on a couple of points. I've now read the actual court docs and see that while the primary focus for Ericsson is a legal determination the Apple offer was FRAND, they do want some other things if that's found to be factual. They want the court to order royalties in accordance with Ericssons' FRAND commitments and previous licensing agreements. They want additional damages for willfiul infringement and for interest on what Apple should have paid. If Apple still refuses a license they wish the court to rule them an unwilling licensee which they then carry over to the ITC if the District Court declines an injunction on whatever grounds.
For those interested I'm attaching the major factual claims Ericsson is making
In 2008, Apple agreed to take a license to certain of Ericsson's patents that are essential to various industry standards. Before that license expired, Ericsson for two years extended offers to Apple to renew its license on FRAND terms. Ericsson even offered to arbitrate the dispute over a FRAND royalty for Ericsson's global portfolio of essential patents, and more recently, to enter into a binding determination of FRAND licensing terms for Ericsson's global portfolio of standard-essential patents before a U.S. federal district court. In sum, consistent with its obligations under the ETSI IPR Policy and to the technology community, Ericsson has sought in good faith to conclude a license agreement with Apple on FRAND terms.
Ericsson's efforts have failed because Apple refuses to pay a FRAND royalty for a portfolio license commensurate with licenses taken by existing licensees and consistent with the parties' prior license. Apple's gambit is indistinguishable from a "reverse hold-up," in which Apple abuses the protections afforded by FRAND while taking a free license to use Ericsson's patented technology. Such tactics give Apple a substantial, unfair edge over its telecommunications competitors who have agreed to—and who maintain—licenses under Ericsson's global portfolio of patents on FRAND terms. Apple has therefore not fulfilled its obligations to remain a third party beneficiary of the contract between Ericsson and ETSI.
On January 12, 2015, without notice, Apple filed a declaratory judgment suit against Ericsson in the U.S. District Court for the Northern District of California, seeking declarations that seven of Ericsson's patents—not at issue here—are either not essential or not infringed. In the event that those seven patents are proven essential, then Apple demands that the District Court determine a special FRAND royalty just for Apple and just for those seven patents-in-suit.
In view of Ericsson's much larger portfolio of standard essential patents in the United States and all over the world, Apple's strategy of litigating one standard essential patent at a time could result in perpetual litigation of hundreds of essential patents in dozens of countries, while Apple continues to infringe Ericsson's Essential Patents without paying FRAND royalties. Not only would this deprive Ericsson of revenues necessary to continue innovating, but it could negatively affect Ericsson's licensees, who have agreed to pay royalties on FRAND terms.
Such tactics are fundamentally unfair to Ericsson and its licensees, especially where (1) Ericsson's offer is consistent with the parties' last agreement, (2) Apple's competitors in the mobile telecommunications industry have actively licensed Ericsson's portfolio on comparable global FRAND licensing terms, and (3) Ericsson has even offered to arbitrate or litigate a FRAND royalty for Ericsson's Essential Patents in one proceeding before a U.S. federal district court. Ericsson takes this step of seeking the issuance of an exclusion order directed to Apple only after exhausting all other options to conclude a license on FRAND terms.
It's different. Ericsson made their patents part of the LTE standard and are trying to take a piece of every iPhone. There's a whole lot more value wrapped up in an iPhone than just LTE but they still want a piece of that.
If Apple patents something, they don't need to allow others to use it. They don't need to even offer licensing at all if they don't want to. But in this case, the FRAND patents MUST be licensed.
I think at issue here are these wireless has-beens (at least in the consumer space) are trying to tap into the only company making money and probably in a way that is not fair... the first letter in that acronym.
If you read the article, you?l see that there are both FRAND and non-FRAND patents involved in the case. So your comment is pointless.
And one cannot call Ericsson a wireless has-been, it is by far the largest manufacturer of wireless network equipment of the world. Only has-beens think that smartphone just communicate with each other without any 2G, 3G or 4G network
The District Court would have no reason to defer. They aren't being asked to award damages or order an injunction. It's not at cross-purposes with the ITC filing. At the District Court It's a straightforward request for a finding on whether the offer was in accordance with FRAND commitments AFAIK. At the ITC it would be whether Apple is an unwilling licensee. If so, and in accordance with the Presidential veto letter, Apple would meet the exception clause for the issuance of an exclusion order (often inaccurately called an injunction by the press)
The Court would have to investigate rate setting, and both parties would surely have their experts on board for that. I'm not sure how the court would be able to determine "reasonable" and "fair" without this diligence. So, you are correct, the Court wouldn't defer to the ITC, but the finding of the Court would be a necessary component of the ITC investigation.
Comments
I would have expected Apple to want a determination of the same thing and had initially assumed Apple considered the Ericsson licensing offer unfair. If the press reports are accurate Apple is not interested in whether it was a fair/FRAND offer and refuses to be bound by it. Apparently they wish to carve out an exception for themselves, in effect an agreement that treats them more favorably than other licensees. That hardly sounds either fair or non-discriminatory does it?
I understand the reasons of course as it keeps more money in Apple's pocket with a bonus of leaving other manufacturers at a disadvantage, at least until the current agreements expire. Business is business I suppose and at the end of the day they were all just chasing the money.
Note that Ericcson's District Court filing isn't requesting injunctive relief. The intent is for the court to rule on whether the offer they made to Apple was fair, reasonable and non-discriminatory (FRAND).
I would have expected Apple to want a determination of the same thing. If the press reports are accurate Apple is not interested in whether it was a fair offer and refuses to be bound by it.
The filing would be a necessary step in a request for injunction from the ITC, i.e., what are the facts.
If the facts are that Apple refuses the Court's determination, then Ericsson already has the ITC investigation underway for infringement, and the Court would defer to the ITC for resolution, which may very well include an injunction.
edit;
I should add that the Court would still have to determine if Apple was "unwilling" to resolve the issue, and whether the Court would have to intervene to set rates.
Not really. We mostly make guesses and have opinions and we 'think', but only Judges 'find'.
So I guess
"You are out of order!"
is out of place here?
The filing would be a necessary step in a request for injunction from the ITC, i.e., what are the facts.
If the facts are that Apple refuses the Court's determination, then Ericsson already has the ITC investigation underway for infringement, and the Court would defer to the ITC for resolution, which may very well include an injunction.
I believe it's called 'trying it on'.
So I guess
"You are out of order!"
is out of place here?
Yes, unless this a court and you are a judge.
Yes, unless this a court and you are a judge.
I hereby resign from my self-appointed position...
The District Court would have no reason to defer. They aren't being asked to award damages or order an injunction. It's not at cross-purposes with the ITC filing. At the District Court It's a straightforward request for a finding on whether the offer was in accordance with FRAND commitments AFAIK. At the ITC it would be whether Apple is an unwilling licensee. If so, and in accordance with the Presidential veto letter, Apple would meet the exception clause for the issuance of an exclusion order (often inaccurately called an injunction by the press)
EDIT: I'll stand corrected on a couple of points. I've now read the actual court docs and see that while the primary focus for Ericsson is a legal determination the Apple offer was FRAND, they do want some other things if that's found to be factual. They want the court to order royalties in accordance with Ericssons' FRAND commitments and previous licensing agreements. They want additional damages for willfiul infringement and for interest on what Apple should have paid. If Apple still refuses a license they wish the court to rule them an unwilling licensee which they then carry over to the ITC if the District Court declines an injunction on whatever grounds.
For those interested I'm attaching the major factual claims Ericsson is making
In 2008, Apple agreed to take a license to certain of Ericsson's patents that are essential to various industry standards. Before that license expired, Ericsson for two years extended offers to Apple to renew its license on FRAND terms. Ericsson even offered to arbitrate the dispute over a FRAND royalty for Ericsson's global portfolio of essential patents, and more recently, to enter into a binding determination of FRAND licensing terms for Ericsson's global portfolio of standard-essential patents before a U.S. federal district court. In sum, consistent with its obligations under the ETSI IPR Policy and to the technology community, Ericsson has sought in good faith to conclude a license agreement with Apple on FRAND terms.
Ericsson's efforts have failed because Apple refuses to pay a FRAND royalty for a portfolio license commensurate with licenses taken by existing licensees and consistent with the parties' prior license. Apple's gambit is indistinguishable from a "reverse hold-up," in which Apple abuses the protections afforded by FRAND while taking a free license to use Ericsson's patented technology. Such tactics give Apple a substantial, unfair edge over its telecommunications competitors who have agreed to—and who maintain—licenses under Ericsson's global portfolio of patents on FRAND terms. Apple has therefore not fulfilled its obligations to remain a third party beneficiary of the contract between Ericsson and ETSI.
On January 12, 2015, without notice, Apple filed a declaratory judgment suit against Ericsson in the U.S. District Court for the Northern District of California, seeking declarations that seven of Ericsson's patents—not at issue here—are either not essential or not infringed. In the event that those seven patents are proven essential, then Apple demands that the District Court determine a special FRAND royalty just for Apple and just for those seven patents-in-suit.
In view of Ericsson's much larger portfolio of standard essential patents in the United States and all over the world, Apple's strategy of litigating one standard essential patent at a time could result in perpetual litigation of hundreds of essential patents in dozens of countries, while Apple continues to infringe Ericsson's Essential Patents without paying FRAND royalties. Not only would this deprive Ericsson of revenues necessary to continue innovating, but it could negatively affect Ericsson's licensees, who have agreed to pay royalties on FRAND terms.
Such tactics are fundamentally unfair to Ericsson and its licensees, especially where (1) Ericsson's offer is consistent with the parties' last agreement, (2) Apple's competitors in the mobile telecommunications industry have actively licensed Ericsson's portfolio on comparable global FRAND licensing terms, and (3) Ericsson has even offered to arbitrate or litigate a FRAND royalty for Ericsson's Essential Patents in one proceeding before a U.S. federal district court. Ericsson takes this step of seeking the issuance of an exclusion order directed to Apple only after exhausting all other options to conclude a license on FRAND terms.
It's different. Ericsson made their patents part of the LTE standard and are trying to take a piece of every iPhone. There's a whole lot more value wrapped up in an iPhone than just LTE but they still want a piece of that.
If Apple patents something, they don't need to allow others to use it. They don't need to even offer licensing at all if they don't want to. But in this case, the FRAND patents MUST be licensed.
I think at issue here are these wireless has-beens (at least in the consumer space) are trying to tap into the only company making money and probably in a way that is not fair... the first letter in that acronym.
If you read the article, you?l see that there are both FRAND and non-FRAND patents involved in the case. So your comment is pointless.
And one cannot call Ericsson a wireless has-been, it is by far the largest manufacturer of wireless network equipment of the world. Only has-beens think that smartphone just communicate with each other without any 2G, 3G or 4G network
The District Court would have no reason to defer. They aren't being asked to award damages or order an injunction. It's not at cross-purposes with the ITC filing. At the District Court It's a straightforward request for a finding on whether the offer was in accordance with FRAND commitments AFAIK. At the ITC it would be whether Apple is an unwilling licensee. If so, and in accordance with the Presidential veto letter, Apple would meet the exception clause for the issuance of an exclusion order (often inaccurately called an injunction by the press)
The Court would have to investigate rate setting, and both parties would surely have their experts on board for that. I'm not sure how the court would be able to determine "reasonable" and "fair" without this diligence. So, you are correct, the Court wouldn't defer to the ITC, but the finding of the Court would be a necessary component of the ITC investigation.