Yesterday Adaptix moved to withdraw its complaint and terminate the ITC investigation of Ericsson for infringing Adaptix’s patent alleged to be essential to LTE standards practiced by Ericsson base stations. The motion does not explain the reason for withdrawal and comes at a time when the parties have been in heavy pre-trial procedures and at the eve of the preliminary conference and evidentiary hearing. The move does not appear to be based on any settlement, the motion papers saying that “[t]here are no agreements, written or oral, express or implied between Adaptix and Respondents [Ericsson] concerning the subject matter of the Investigation.” Ericsson’s response yesterday indicates this is some new development that its counsel has not even had time to discuss with its client, stating:
For the first time late last night, Adaptix requested Ericsson’s position on its motion to terminate the investigation based on withdrawal of the complaint, coupled with a suspension of the procedural schedule. This motion arises in the context of issues that have not been disclosed to the Administrative Law Judge and the undersigned counsel for Ericsson have not been able to reach the senior Ericsson counsel, who are on an overnight flight from Korea to the United States. Accordingly, the undersigned counsel for Ericsson have not yet been able to obtain Ericsson’s definitive instructions on how to proceed.
In January, Adaptix (a subsdiary of Acacia Research) filed its 337 Complaint alleging that Ericsson’s 4G LTE base stations infringe U.S. Pat. No. 6,870,808, which also had been asserted in several district court litigations (see our January post). Adaptix claimed that it had not participated in any LTE standard setting process and the patent was under no FRAND or other standard setting organization (SSO) obligations. The ITC instituted the investigation in February (see our February post).
Some have speculated that Samsung was behind Adaptix’s assertions against Ericsson in retaliation for Ericsson’s enforcement of SEPs against Samsung (see our January post). Ericsson also had tried to assert in the instant investigation FRAND-based defenses through a novel theory that Samsung was a licensee of the patent-in-suit, participated in ETSI’s development of the LTE standard and failed to disclose the patent to ETSI in breach of ETSI’s IPR Policy (see our July post).
Hopefully we will find out soon what was behind Adaptix’s sudden move to terminate this investigation. Though this may be unrelated, the move comes at an interesting time when:
- The European Commission is considering Samsung’s recent proposal not to seek injunctive relief in the European Economic Area for the next five years on its wireless SEPs (see our October post)
- The Competition Commission of India started its investigation of Ericsson’s licensing of cellular SEPs (see our November post)
- The ITC’s pending investigation of Samsung’s infringement of Ericsson SEPs includes Ericsson’s suggestion that any exclusion order include an opportunity for Samsung to avoid exclusion by accepting an ITC determined FRAND royalty rate (see our August 15 and August 26 posts).
- The asserted ‘808 Patent still remains at issue in several coordinated cases that Adaptix filed against Ericsson and other cellular companies pending in E.D. Texas (currently in the claim construction briefing stage).
UPDATE: Administrative Law Judge Gildea issued an Order that stays the procedural schedule pending the motion to terminate and requires responses to the motion to be filed by Wednesday, December 11.