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Ericsson, TCL settle long-running smartphone patent disputes

3 minute read

Ericsson logo at its headquarters in Stockholm, Sweden June 14, 2018. REUTERS/Olof Swahnberg

  • Cases concerned wireless patent licensing, alleged TCL security patent infringement
  • Ericsson won multi-million dollar rulings in both cases
  • Federal Circuit reversed both wins

(Reuters) - Swedish telecom company Ericsson and Chinese smartphone maker TCL have settled long-running disputes over smartphone patents in California and Texas federal courts, according to filings in both courts.

The parties' joint Friday filing to dismiss the California lawsuit said they had reached a settlement in the case, in which TCL had alleged Ericsson refused to license its wireless patents on fair terms. On Thursday, they also moved to dismiss a case in Texas where Ericsson accused TCL of infringing patents related to network security technology.

Ericsson had won multi-million dollar rulings in both cases that were later overturned by the U.S. Court of Appeals for the Federal Circuit. U.S. District Judge James Selna dismissed the California case Monday, and U.S. Magistrate Judge Roy Payne dismissed the Texas case Friday.

Ericsson spokesperson Mikaela Idermark said that "all patent-related legal disputes" between the parties had been withdrawn following a settlement agreement, but details of the agreement were confidential.

TCL didn't immediately respond to a request for comment. TCL's attorney in the Texas case, Lionel Lavenue of Finnegan, Henderson, Farabow, Garrett & Dunner, confirmed that Ericsson's infringement claims had been dismissed. TCL's attorney in the California case, Stephen Korniczky of Sheppard, Mullin, Richter & Hampton, declined to comment.

Ericsson's attorneys Ted Stevenson of Alston & Bird, Nicholas Mathews of McKool Smith, and Chase Scolnick of Keller/Anderle didn't immediately respond to a request for comment.

TCL sued Ericsson in California in 2014, arguing Ericsson failed to offer fair and reasonable rates to license its 2G, 3G and 4G standard-essential patents. Selna ruled in 2017 that Ericsson hadn't violated its obligation to offer licenses on fair terms and that TCL owed nearly $16.5 million for its past use of the technology, but set a lower royalty rate than Ericsson had proposed.

The Federal Circuit remanded the case in 2019, finding Ericsson was entitled to a jury trial on how much TCL owed. The U.S. Supreme Court rejected TCL's appeal of that decision in 2020. A new trial hadn't yet been scheduled.

Ericsson sued TCL in the U.S. District Court for the Eastern District of Texas in 2015, arguing TCL's smartphones infringed five network security patents.

A jury awarded Ericsson $75 million in 2017, finding TCL infringed one Ericsson patent after the Patent Trial and Appeal Board invalidated the relevant parts of four others. U.S. Magistrate Judge Roy Payne in Marshall later added $25 million to the award based on the jury's finding that TCL had infringed willfully.

But the Federal Circuit reversed the win in 2020, finding the remaining patent invalid because it covered a patent-ineligible abstract idea. The Supreme Court denied review of that ruling in May.

The cases are TCL Communication Technology Holdings Ltd v. Telefonaktienbolaget LM Ericsson, U.S. District Court for the Central District of California, No. 8:14-cv-00341; and Ericsson Inc v. TCL Communication Technology Holdings Ltd, U.S. District Court for the Eastern District of Texas, No. 2:15-cv-00011.

For TCL: Stephen Korniczky of Sheppard, Mullin, Richter & Hampton; and Lionel Lavenue of Finnegan, Henderson, Farabow, Garrett & Dunner

For Ericsson: Ted Stevenson of Alston & Bird; Nicholas Mathews of McKool Smith; and Chase Scolnick of Keller/Anderle

Read more:

Ericsson gets new trial in 'FRAND' royalty spat with TCL

IN BRIEF: SCOTUS will not hear TCL, Ericsson cellphone royalty dispute

Ericsson wins $75 million in smartphone patent case against TCL

Fed Circuit tosses Ericsson's $100 million patent win against TCL

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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