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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

APPLE INC., Plaintiff, v. TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC., Defendants. Civil Action No. 2:21-cv-00460-JRG

ERICSSON

’

S

OPPOSITION TO APPLE’S

MOTION STAY

Apple makes the highly unusual request of seeking a stay of patent claims that it affirmatively filed. Although Apple asserted

that the patent claims are now “moot”

because of the claims pending in

Ericsson Inc. v. Apple Inc.

, No. 2:21-CV-00376-

JRG (the “

-376 action

”)

, the landscape changed after Apple filed its motion. The Court ruled, on May 3, 2022, that even if

Ericsson’s offer is found to be FRAND, Apple is not

required to accept it:

“Apple may accept

[

Ericsson’s offer if found to satisfy FRAND

] and create a binding contract; Apple may reject it

and not implement Ericsson’s patented technology;

or Apple may reject the FRAND offer,

implement Ericsson’s technology

without the benefit of a license and subject itself to actions for infringement

.”

See

Dkt. 89, -376 action, at 4 (emphasis added). As a result, the -376 action will not inevitably result in a license agreement between the parties and, therefore, this patent action is not moot. The only thing that could render the litigation moot

is a “meeting of the minds evidenced

by acceptance of an [actual, pending

] offer.”

Id.

at 4 n.2. For that reason,

Apple’s

motion should be denied.

Case 2:21-cv-00460-JRG Document 71 Filed 05/04/22 Page 1 of 7 PageID #: 602

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I.

Background and Procedural Posture

Ericsson filed a declaratory proceeding to establish that its licensing offer to Apple satisfied FRAND in the -376 action. Rather than litigate the FRAND dispute in the -376 action, Apple filed a parallel FRAND case of its own and added claims for a declaration of both non-essentiality and non-infringement on three Ericsson patents out of the 300 claim charts that Ericsson presented to Apple in negotiations. This Court dismissed

Apple’s FRAND claims

without prejudice on March 23, 2022, and ordered them to be refiled as compulsory counterclaims in the -376 action. Dkt. 37. The patent claims were severed and remain pending in this action. The -376 action was set for trial in December of this year, and this action was set for trial in July of 2023. Dkt. 38. Two weeks after the severance order, Ericsson filed its answer in this case on April 6, 2022. Dkt. 55. Ericsson included counterclaims for infringement of the same three patents from

Apple’s

declaratory counts

. Ericsson’s prayer for relief included a request that if “Apple declines a

FRAND-

compliant offer to license Ericsson’s standard

-

essential patent portfolio,” Erics

son should be entitled to

“an injunction prohibiting Apple . . . from making, using, selling, offering for sale, or importing” infringing products. Dkt. 55 at

24. On April 19

—

exactly 13 days after Ericsson filed its answer and Apple lost its ability to unilaterally file a notice of dismissal without prejudice under Fed. R. Civ. P. 41(a)(1)(A)(i)

—

Apple filed its Motion to Stay this entire case, arguing that the -376 action will invariably

“moot”

the relief sought in this proceeding. Then, on April 27

—

eight days after seeking to stay this case

as purportedly “moot”—Apple filed three additional “counterclaims” to Ericsson’s counterclaims,

alleging that the three patents at issue are invalid. Dkt. 68.


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II.

Argument

Apple asks this Court

to “stay”

this action

—

an action that would address the essentiality and potential infringement of three Ericsson patents

. Apple’s

purported justification is that the -376 action

“

will

resolve the dispute between the parties as to the

terms

of a FRAND cross-license.

”

Dkt. 65 at 2 (emphases added). According to Apple

, “[

a]ny relief in this case

will be

mooted by the result in the -

376 case as Apple will be licensed to the three asserted patents.”

Id.

at 3 (emphasis added). But Apple ignores

the “black letter contract law” establishing that—even if Ericsson’s offer

is found to satisfy FRAND in the -376 action

—Apple “may reject the FRAND

offer, implement

Ericsson’s technology without the benefit of a license and subject itself to actions for

i

nfringement” like the one pending here.

See

Dkt. 89, -376 action, at 4. T

he Court’s May 3 Order

in the -376 action

confirms that Apple retains the option to reject Ericsson’s offer, even if it is

adjudicated to be FRAND, in which case Apple assumes the risk of patent infringement remedies worldwide.

Given that fact, Apple’s request to stay this case would greatly prejudice Ericsson’s

right to pursue relief, including injunctions, if Apple is found to infringe and is unwilling to take a licens

e. Apple’

s request should be seen for what it is

—

yet another procedural maneuver with the goal of forestalling Ericsson from enforcing its patent rights.

The Court should deny Apple’s

motion for multiple reasons.

First

, since January of this year, Apple has been manufacturing, importing, and selling products that

incorporate Ericsson’s patented technology on a massive scale without a license from

Ericsson. Ericsson filed multiple enforcement actions, including its counterclaims for infringement in this case, to ensure prompt payment and/or the ability to enjoin

Apple’s

unlicensed
