Cross-border battle: Apple fails to invalidate Ericsson’s patent in China

The Patent Reexaminiation and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) on July 15 handed down a decision upholding the validity of a patent owned by Swedish networking and telecommunications company Telefonaktiebolaget LM Ericsson (艾利森电话股份有限公司) and challenged by U.S. tech company Apple, Inc.’s Chinese subsidiary Apple Computer Trading (Shanghai) Co., Ltd. (苹果电脑贸易(上海)有限公司) on March 23. The challenged patent is Chinese Patent No. 200880020772.4 directed to transmission of system information on a downlink shared channel.


The patent’s equivalent U.S. Patent No. 9,532,355 has been declared essential to the 4G or 5G cellular connectivity standards and was asserted in the amended complaint of the lawsuit Ericsson lodged against South Korean multinational manufacturing conglomerate Samsung in the United States Federal Court for the Eastern District of Texas on January 1, 2021. U.S. Patent No. 8,995,357, sharing a patent family with the ’355 patent, is subject to an inter partes review (IPR) proceeding with the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) petitioned by Apple in February.


Apple also filed another two petitions for review before the PRID against Ericsson’s Chinese Patent Nos. 201080045650.8 relating to a method and device for soft buffer management based on user equipment categories in communications network and 201610380591.9 relating to a communication method and device for carrier aggregation system. The petitions are still pending with two separate oral hearings being conducted accordingly in May.


The PRID action stems from a parallel patent lawsuit underway in the United States Federal Court for the Eastern District of Texas, in which Ericsson asked the court last October to declare that it had complied with FRAND terms in its negotiations with Apple to license its global patent portfolio. Apple countersued in December, asking the same Texas court to institute different FRAND terms, citing one of its previous agreements with Ericsson. Ericsson's case is scheduled to be heard in December 2022.


The two parties are embroiled in legal battles in seven jurisdictions across the globe, including the U.S., the U.K., the Netherlands, Germany, Belgium, Brazil, and Columbia. In the latest salvo, a Bogota court in Colombia on July 6 handed down a preliminary injunction blocking Apple from selling phones that allegedly infringe an Ericsson 5G patent in one of the cases. Apple filed an emergency relief motion in Texas federal court asking the judge to order Ericsson to indemnify Apple for any fines and costs in the Colombia suit.


China, in a technical sense, has not been involved as a jurisdiction to adjudicate the two companies’ FRAND license litigation starting in late 2021, despite Apple’s peripheral invalidation bids initiated here. However, Apple mentioned Ericsson Inc. et al v. Samsung Electronics Co., Ltd. et al (case no. 2:20-cv-00380) in its motion, accusing Ericsson of attempting to subvert the Texas court’s jurisdiction with the Colombia injunction. In that case, Samsung failed to reach an SEP cross-license with Ericsson and filed a complaint in

in the Wuhan Intermediate People’s Court of Hubei Province on December 7, 2020. Ericsson countersued Samsung in the United States Federal Court for the Eastern District of Texas on December 11, 2020.


Samsung asked the Wuhan court to issue an anti-suit injunction (ASI) to prevent Ericsson from seeking relief relating to the SEPs at issue anywhere else in the world. The Wuhan Court issued the ASI on December 25 for the “duration of the Chinese Action and until a future judgment in that Action becomes effective.” The Texas court on December 28 issued an anti-interference injunction to prohibit Samsung from enforcing the ASI against Ericsson.


It is obvious that both parties have fully realized the play of territorial rights of sovereigns in the litigation between them.