From Unwired Planet to Samsung — Forum Shopping for Global FRAND Judgments
December 31, 2020
by Jonathan H. Spadt, Benjamin E. Leace, Christopher H. Blaszkowski & Shayne D. Rasay, RatnerPrestia
Four months ago, the UK Supreme Court decided Unwired Planet International Ltd. v. Huawei Technologies Co Ltd.  UKSC 37, holding that English courts have the ability to enjoin infringing activity when the infringer refuses to enter a global standard essential patent (“SEP”) license on “fair, reasonable, and non-discriminatory” (FRAND) terms. Our coverage of that decision may be found here.
Now, during the holiday lull, a series of rapid developments in a brewing dispute between two majors in the telecom industry have added a new facet to SEP disputes—the race to establish global jurisdiction in a favorable forum.
Failing negotiations between Samsung and Ericsson concerning renewed cross-licenses of each parties’ respective standard essential patents (“SEP”) directed to 4G and 5G technology led to a December 11, 2020, FRAND action against Samsung in EDTX. Ericsson’s complaint alleged that Ericsson sought to negotiate the cross-license on FRAND terms (which included a sizable balance due by Samsung to Ericsson), but Samsung rejected those offers.
Allegedly unbeknownst to Ericsson at that time, Samsung had already secretly filed a FRAND action 4 days earlier against Ericsson on December 7, 2020 in the Wuhan Intermediate People’s Court in China.
In a series of surprises spanning about a week, Ericsson learned of the Wuhan lawsuit on December 17, 2020 and of Samsung’s motion for an antisuit injunction (ASI) against Ericsson’s FRAND action in Texas filed (also secretly) in Wuhan on December 14, 2020. Specifically, the Wuhan injunction, which was granted and announced to Ericsson in a Christmas morning email from the Wuhan court, (1) bars Ericsson from seeking injunctive relief on 4G and 5G SEPs globally; (2) bars Ericsson from seeking a FRAND adjudication anywhere other than Wuhan; and (3) bars Ericsson from seeking an anti-anti-suit injunction requiring Samsung to stop using the Wuhan Court.
In response, Ericsson promptly filed a request for a temporary restraining order (TRO) and an anti-ASI in the Eastern District of Texas on December 28, 2020. Within hours, Judge Gilstrap granted Ericsson’s request without giving advance notice or opportunity for Samsung to respond. Specifically, Judge Gilstrap’s Order, which expires on January 11, 2021, (1) requires Samsung to file an Opposition to the Continuation of the TRO or Conversion to Preliminary Injunction by tomorrow (January 1, 2021); (2) requires Samsung to indemnify Ericsson for any damages associated with violating the Wuhan Order; (3) establishes a $ 0 bond for Ericsson (contrast to 50 million RMB ($7.5M US) bond for Samsung in the Wuhan ASI); and (4) schedules a preliminary injunction hearing on January 7, 2021. The following timeline illustrates the events of just the last few weeks as described above:
Stay tuned. This blog post will be updated to follow subsequent developments in the Ericsson/Samsung FRAND dispute.
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