Ericsson Opposes Certiorari in TCL Patent Infringement Suit

Respondents. wireless communications companies, Ericsson, Inc. and Telefonaktiebolaget LM Ericsson filed a brief in opposition on Tuesday to electronics company TCL’s petition for a writ of certiorari, claiming that the petition should be denied.

The question presented by the petitioners is “[w]hether a monetary payment made as compensation for past unlicensed use of patented technology, which extinguishes patent-infringement claims seeking damages for past unlicensed sales, is legal relief that must be determined by a jury under the Seventh Amendment.”  

The Seventh Amendment guarantees the right to trial by jury for actions in courts of law. TCL had filed a suit to preempt a potential Ericsson suit for patent infringement, it sought a declaratory judgment that Ericsson’s offers breached fair, reasonable, and non-discriminatory (FRAND) license promises. Ericsson was awarded $16,449,071 by the Central District of California to compensate Ericsson for TCL’s prior infringement of Ericsson’s patents. Ericsson filed a suit in the Eastern District of Texas for patent infringement; the cases were consolidated. There were also jurisdictional issues with TCL’s complaint, but it was determined that TCL’s declaratory judgment claim fell under federal jurisdiction. The district court granted TCL summary judgment and “invited briefing on whether a jury trial was still required,” however, TCL then asked for a bench trial and Ericsson continued to demand a jury. The Federal Circuit held that since Ericsson was awarded retroactive relief from past infringement, it constituted monetary damages, in other words “legal relief for which Ericsson had a Seventh Amendment right to a jury trial” and the district court’s refusal of the jury trial, violated the Seventh Amendment.  

Under the FRAND obligations incorporated into cell technology standards, TCL was allegedly obligated to obtain a license for its use of Ericsson’s patented technology. Ericsson also asserted that TCL has a history of infringement; it has repeatedly failed to obtain a license for its use of Ericsson technology, despite other similar companies obtaining a license. Ericsson alleged that TCL rejected all of its license offers, claiming these royalty rates violated FRAND, as a result, TCL continued to infringe.

Ericsson averred that TCL’s petition should be denied because TCL has supposedly continued to forfeit the presented question, which forecloses review. In particular, the court of appeals held that Ericsson had a right to trial by jury, which it says it was wrongfully denied. Moreover, Ericsson alleged that the petition does not present a question of importance warranting review. Specifically, the issue regarding release payment has not been raised in other cases, and it “is unlikely to arise given the independent grounds for jury trials.” Additionally, Ericsson claimed that this suit “is a poor -and jurisdictionally impossible – vehicle for reaching the question presented.” Ericsson stated the TCL’s claims regarding jury trials are “irrelevant and unfounded.” Furthermore, Ericsson asserted that “a release payment for past patent infringement that extinguishes damages is legal relief” and TCL’s petition’s “equitable consideration” theory allegedly fails on the merits.

Ericsson is represented by McKool Smith P.C. and MoloLamken LLP. TCL is represented by Sheppard Mullin Richter & Hampton LLP with Wilmer Cutler Pickering Hale and Dorr LLP.