SEP Licensing Wins Continue—Multinational Litigation Strategy Drives Licensing Win for Ericsson

Ericsson finally sees resolution of its standard essential patent (“SEP”) campaign against Lenovo and Motorola, filed globally in multiple jurisdictions, importantly at the U.S. International Trade Commission (“ITC”). In a notice published on May 29, 2024, the ITC terminated an investigation initiated by Ericsson alleging Motorola’s unfair acts, including patent infringement of four of Ericsson’s 5G technology patents based on the parties’ joint motion to terminate the investigation due to settlement. This comes on the heels of Ericsson and Lenovo, who was also a named Respondent in the ITC Investigation, entering into a partial settlement, dismissing all active lawsuits and submitting the fair, reasonable, and non-discriminatory (FRAND) terms for licensing to binding arbitration. 

These settlements come after a global enforcement campaign, which included three ITC investigations, Ericsson asserted against Lenovo and Lenovo’s mobile phone subsidiary, Motorola, which began decades ago in 2008 with respect to Ericsson’s 2G and 3G technology patents. In 2023, as new generations of wireless cellular technology continued developing, Ericsson first sued Lenovo for infringement of its 5G technology patents in the Eastern District of North Carolina, the location of Lenovo’s US headquarters. In parallel, Ericsson filed three complaints at the ITC, as well as complaints in the United Kingdom High Court, and courts in Brazil and Colombia. Ericsson obtained injunctions in Brazil and Colombia and successfully demonstrated that its 5G patents were valid and infringed by Lenovo and Motorola at the ITC.

It is worth noting that this is not the first time Ericsson has used multiple ITC investigations as an essential part of its enforcement strategy to drive SEP settlement. This is a similar strategy employed previously by Ericsson against both Apple and Samsung. In fact, this dynamic—of using multiple ITC investigations—is not new and is often used by other large SEP multi-national patent owners, e.g. Qualcomm and InterDigital. 

As we previously discussed, Lenovo practiced patent holdout against SEP owners in the telecom space by seeking anti-suit injunctions – a tactic that was, at first, rejected in the Eastern District of North Carolina. However, the Federal Circuit opened the door again to anti-suit injunctions, while simultaneously lowering the bar for proving the requirement that the resolution of the case before the U.S. district court be dispositive of the foreign actions sought to be enjoined.

After the anti-suit injunction win for Lenovo, the UK High Court held that Lenovo was entitled to an interim license for Ericsson’s 4G and 5G patent portfolio. Ericsson did not offer Lenovo an interim license and instead asked the UK Supreme Court to intervene and review the UK Court of Appeal’s judgment. Meanwhile stateside, shortly after the ALJ’s Initial Determination issued on January 8, 2025, finding (1) that Ericsson met the domestic industry requirement and (2) that Lenovo and Motorola infringed Ericsson’s valid 5G patents, the ALJ delayed the remedy analysis to April 4. On April 3, Ericsson, Motorola, and Lenovo jointly requested a stay of pending deadlines, pushing the remedy analysis to May 16. Finally, at that point on May 8, the parties entered into the global cross-license and mutually agreed to submit the FRAND terms to arbitration. The risk of losing at the ITC and setting a new precedent on remedy was likely a significant motivator for the parties to settle. This demonstrates that the ITC continues to be an important source of leverage in resolving holdout in matters involving multinational SEP patent litigation. 

While this licensing dispute between Ericsson, Lenovo and Motorola has been going on for over 15 years, within 17 months of Ericsson filing three ITC cases against Lenovo and Motorola, this long-lived global dispute was settled. The impact of a well-executed ITC case within the multinational patent dispute cannot be overstated: its preliminary ruling promptly ended fifteen years of dispute, thus demonstrating the special impact of the ITC. 

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