Federal Circuit Precedential

Holding: (1) For antisuit injunctions, the requirement that the domestic case be dispositive can be met even if the case only resolves the issue of a foreign injunction and not the entire foreign proceeding.  Additionally, the domestic suit simply must have the potential to lead to the resolution of the foreign issue to be dispositive.  (2) A party that has made a FRAND commitment to license standard-essential patents must comply with that commitment before resorting to injunctive relief. 

The European Telecommunications Standards Institute (“ETSI”) sets technical standards for interoperability among different companies’ products.  Standard-essential patents (“SEPs”) are patents that are essential to complying with the ETSI standards.   ETSI has an intellectual property rights policy under which a SEP owner agrees to grant irrevocable licenses to its SEPs on fair, reasonable, and non-discriminatory (“FRAND”) terms and conditions. 

Lenovo and Ericsson both own SEPs related to 5G wireless communication technology and have agreed to the FRAND commitment under ETSI.  They have been unable to reach a global cross-license agreement on the SEPs and sued each other in the United States and around the world for patent infringement.  In particular, Ericsson sued Lenovo in Colombia and Brazil and received preliminary injunctions in both of those countries.  At the district court in this case, Lenovo asked for an antisuit injunction to prohibit Ericsson from enforcing the preliminary injunctions in Colombia and Brazil. 

Foreign antisuit injunctions are typically analyzed using the framework that was set out in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012).  The first part of this framework requires that the parties and issues be the same in the domestic case and the foreign case, and that the domestic case be dispositive of the foreign action to be enjoined.   The district court stopped its analysis after deciding that the current case would not be dispositive of the foreign cases. 

Lenovo argued that Ericsson’s FRAND commitment under ETSI requires Ericsson to first comply with its obligation to negotiate in good faith before resorting to injunctive relief; therefore, if it is determined that Ericsson has not met its obligation, this case will be dispositive.  Ericsson argued that to be dispositive, the current case must resolve the entire foreign proceeding, not just the injunction issue, and also must necessarily, not just potentially, lead to the resolution of the foreign action.  The Federal Circuit sided with Lenovo on both accounts, concluding that the dispositive requirement can be met even though a foreign antisuit injunction would resolve only the issue of a foreign injunction and not the entire proceeding.  Additionally, the dispositive requirement can rest on the potential that one party’s view of the law will prevail and does not require that the domestic case will necessarily resolve the foreign dispute.

The Federal Circuit also concluded that a party that has made a FRAND commitment under ETSI must meet the obligation to negotiate in good faith before pursuing injunctive relief based on its SEPs.  Therefore, the dispositive requirement of the Microsoft framework for antisuit injunctions is met.  The case was remanded back to the district court to determine whether Ericsson had met its ETSI FRAND commitment.

Full Opinion (PDF)

Citation: Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 120 F.4th 864 (Fed. Cir. 2024)