ITC LogoOn Friday, March 8, Ericsson filed the (redacted) public version of its answer to Samsung’s Complaint and the Notice of Investigation in In the Matter of Certain Wireless Communications Equipment and Articles Therein (Inv. No. 337-TA-866).  This ITC Section 337 investigation is based on a January 2013 complaint from Samsung that alleges Ericsson’s 4G LTE-compatible base stations infringe several Samsung LTE-essential patents.

Given Samsung’s assertion of standard-essential patents, it’s no surprise that Ericsson’s complaint includes FRAND-based defenses.  But unlike other ITC respondents who have chosen to assert FRAND-based defenses as separate, individual affirmative defenses, Ericsson chose to combine them in a catch-all FRAND defense.  Ericsson’s ninth affirmative defense, reproduced in partially-redacted format below, asserts that Samsung is precluded from obtaining any remedy for infringement of the asserted LTE-essential patents due to a breach of ETSI FRAND obligations:


40. Samsung claims infringement of certain patents that are alleged to be essential to, or have been declared by Samsung as essential to, compliance with one or more telecommunication standards that have been promulgated by standard setting  organizations, including the European Telecommunications Standards Institute (“ETSI”) (collectively, “Asserted Samsung Essential Patents”).

41. ETSI, which participated in developing the LTE wireless standards, requires its members to make certain declarations with regard to that member’s patents to the extent  the patents are essential to compliance with ETSI standards. See, e.g., ETSI Rules of Procedure, Annex 6: ETSI Intellectual Property Rights Policy, Clauses 4.1 and 6.1; Id., Annex 6 – Appendix A: IPR Licensing Declaration forms. Samsung has declared to ETSI and its members that it will agree to grant licenses for the Asserted Samsung Essential Patent patents on terms that are fair, reasonable, and non-discriminatory (“FRAND”).

42. Samsung’s FRAND commitment is a contractually binding commitment that can be enforced by Ericsson as a third-party beneficiary.

43. Samsung has breached its agreements with standard setting organizations such as ETSI by failing to offer Ericsson a license to the Asserted Samsung Essential Patents on  FRAND terms. Samsung has violated ETSI policy by refusing to grant Ericsson a license to the Asserted Samsung Essential Patents even though Ericsson has submitted a declaration to ETSI committing to offer a license to Ericsson’s standard-essential patents on FRAND terms. Samsung has refused to offer a license under the Asserted Samsung Essential Patents to Ericsson [REDACTED].

[¶¶ 44-45 REDACTED]

46. Samsung’s failures to comply with its FRAND commitments constitute a breach of contract, which Ericsson has standing to assert as a third party beneficiary. Additionally, Samsung’s failure to comply with its FRAND commitments estops Samsung from enforcing its Samsung Asserted Essential Patents against Ericsson. Also, Samsung’s failure to comply with its FRAND commitments constitutes patent misuse and unclean hands, which preclude Samsung from obtaining any remedy in this Investigation.

47. In addition, Samsung’s breach of its FRAND commitment is evidence showing that an exclusion order in this instance would not be in the public interest. Samsung’s refusal to grant a license to Ericsson, despite its obligation to do so, precludes issuance of an exclusion order or any other remedy in this Investigation.