For the last few months, Samsung and Ericsson have been engaged in a wide-ranging patent infringement skirmish, both in the Eastern District of Texas and in the U.S. International Trade Commission (Inv. Nos. 337-TA-862, 337-TA-866). Many of the infringement assertions in these cases relate to the 4th-generation Long-Term Evolution (LTE) wireless communications standard, as well as other wireless communications standards promulgated by ETSI and IEEE. Earlier this week, Samsung filed its Answer and Counterclaims in response to Ericsson’s complaint in case no. 6:12-cv-00894 in the Eastern District of Texas.
Pulling no punches, Samsung not only accuses Ericsson of breaching its FRAND obligations (an accusation it has previously made), but also asserts additional patents against Ericsson — including patents already being asserted in the ITC. And notably, Samsung also paints Ericsson as a non-practicing entity that is trying to engage in patent hold up — Samsung states that Ericsson “now feels unhinged as a non-practicing entity in the mobile phone market to extort vastly unreasonable and discriminatory license fees,” and that it “seeks to ignore over a decade of licensing history between the companies and to travel down a new road as an NPE extracting irrational sums from Samsung under threat of an ITC exclusion order.” Rhetoric aside, though, the meat of Samsung’s answer is really about its FRAND-related defenses and infringement counterclaims.
FRAND-related Defenses and Counterclaims
Among Samsung’s affirmative defenses and counterclaims are the relatively standard defenses of non-infringement, invalidity, etc. Samsung also asserts several defenses based on Ericsson’s alleged violation of its FRAND obligations, including unenforceability, patent misuse, lack of standing, and failure to state a claim. Samsung also asserts FRAND-related counterclaims of breach of contract and promissory estoppel, seeking specific performance of Ericsson’s FRAND promises (although Samsung does not appear to be following in the path of Microsoft, Huawei, and ZTE in asking the district court to determine FRAND terms for a license).
Patent Infringement Counterclaims
Samsung also asserts additional counterclaims that Ericsson infringes (directly and/or indirectly) twelve Samsung patents through Ericsson’s use and sale of LTE-compliant products.
- U.S. Patent No. 6,617,929 (also asserted in ITC Inv. No. 337-TA-866)
- U.S. Patent No. 6,767,813
- U.S. Patent No. 6,865,682 (also asserted in ITC Inv. No. 337-TA-866)
- U.S. Patent No. 7,221,031
- U.S. Patent No. 7,342,444
- U.S. Patent No. 7,782,749
- U.S. Patent No. 8,059,681
- U.S. Patent No. 8,165,081
- U.S. Patent No. 8,208,438
- U.S. Patent No. 8,228,827
- U.S. Patent No. 8,315,195
- U.S. Patent No. 8,331,328