By John Presper
On November 30, 2012, Ericsson Inc. of Plano, Texas and Telefonaktiebolaget LM Ericsson of Sweden (collectively, “Ericsson”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.  Due to its size, we have broken the complaint into part 1 and part 2.

The complaint alleges that Samsung Electronics America, Inc. of Ridgefield Park, New Jersey, Samsung Telecommunications America LLC of Richardson, Texas, and Samsung Electronics Co., Ltd. of South Korea (collectively, the “Proposed Respondents”) unlawfully import and/or sell certain electronic devices, including wireless communication devices, tablet computers, media players and televisions, and components thereof that directly or indirectly infringe one or more claims of the following U.S. patents: 6,029,052; 6,058,359; 6,278,888; 6,301,556; 6,418,310; 6,445,917; 6,473,506; 6,519,223; 6,624,832; 6,772,215; and 8,169,992.

According to the complaint, the asserted patents generally relate to electronic devices that allow for wireless communications and data transfer over networks and include: (i) RF receiver technology; (ii) hardware and software design of wireless communication devices; (iii) user interface technology; (iv) modulation technology; and (v) in some cases, standardized communication protocols, including GSM, GPRS, EDGE, W-CDMA, LTE and/or 802.11 standards.  Ericsson asserted that the Proposed Respondents import and sell products that infringe the asserted patents, such as the Samsung Galaxy S III, the Samsung Captivate Glide, and the Samsung Galaxy Note.

Regarding domestic industry, Ericsson stated that base stations and media gateways protected by at least the ‘359, ‘506, ‘556, ‘917, ‘223, ‘215 and ‘992 patents are configured, programmed, tested, customized and maintained at facilities across the U.S. for which Ericsson made significant investments in plant and equipment and significant employment of labor or capital.  Specifically, Ericsson identified its Mobile Broadband group in Plano, Texas; Boulder, Colorado; Seattle, Washington; Pleasanton, California and Atlanta, Georgia.  Ericsson also identified its Radio Access Network and Customer Network Support groups in Parsippany, New Jersey; Plano, Texas; Atlanta, Georgia; Chicago, Illinois; Kansas City, Kansas; Pleasanton, California; Irvine, California and Seattle, Washington.  Ericsson further identified substantial investment in the exploitation of the asserted patents through research and development at its engineering facilities in Plano, Texas; Seattle, Washington and Atlanta, Georgia.  Additionally, Ericsson pointed to research and development efforts in Overland, Kansas related to the operation and maintenance of Sprint’s national wireless network.  In particular, Sprint Nextel allegedly outsourced its U.S. network operations and maintenance to Ericsson in a seven-year deal valued at $4.5 billion to $5 billion in July 2009, part of which included Sprint transferring 6,000 employees to Ericsson.  According to the complaint, Sprint sells mobile cellular devices (e.g., Motorola Admiral) used on the Sprint Network that are licensed under some or all of the asserted patents.  Ericsson also stated that investments in research and development at its San Jose, California facility are used to develop mobile cellular devices and Ericsson’s base stations that are used across the AT&T, Verizon and T-Mobile networks and around the world.  Infrastructure equipment sold by Ericsson allegedly comprises a significant portion of these networks, and AT&T, Verizon and T-Mobile sell mobile cellular devices (e.g., Apple iPhone 4, RIM Bold 9900, Motorola Droid RAZR M, and Motorola Atrix 2) used on these networks that are licensed under some or all of the asserted patents.  Other products sold by AT&T, Verizon and T-Mobile that allegedly practice at least one claim of some or all of the asserted patents under a license include the Apple iPhone 3GS, iPhone 4S, iPad and iPad 2, the Motorola Tundra, Droid 4, Droid RAZR and Droid RAZR Maxx, RIM Bold 9780, and the Blackberry Curve, Pearl and Torch.  Moreover, Ericsson pointed to substantial licensing activities in the U.S., including employees who have negotiated royalty bearing license agreements to the ‘052, ‘359, ‘888, ‘556, ‘310, ‘917, ‘506, ‘223, ‘832, ‘215 and ‘992 patents.  Ericsson also asserted that it has expended substantial sums on litigation in connection with its licensing efforts, discussed below.  Finally, Ericsson identified various activities of its licensees Motorola, Apple and Research In Motion in support of the domestic industry requirement.

As to related litigation, Ericsson stated that it filed the action titled Ericsson Inc. et al. v. D-Link Corp. et al., Case No. 6:10-cv-473, on September 14, 2010 in the Eastern District of Texas.  That case is pending and involves products practicing the IEEE 802.11 standards that were accused of infringing the ‘223 and ‘215 patents.  Ericsson identified two other district court litigations it filed against the Proposed Respondents in the Eastern District of Texas in 2006, both of which settled: (1) Ericsson Inc. et al. v. Samsung Electronics Co., Ltd. et. al., Case No. 2:06-cv-0063, which involved, inter alia, the ‘359, ‘556 and ‘506 patents; and (2) Ericsson Inc. et al. v. Samsung Electronics Co., Ltd. et. al., Case No. 2:06-cv-0306, which involved, inter alia, the ‘052 patent.  Ericsson also filed a Section 337 complaint against the Proposed Respondents in 2006 which was instituted as Certain Wireless Communication Devices, Components Thereof, and Products Containing the Same (Inv. No. 334-TA-583) and involved, inter alia, the ‘052 patent.  That investigation was terminated based on a settlement agreement.  Finally, Ericsson stated that it filed two infringement actions against the Proposed Respondents on November 27, 2012 in the Eastern District of Texas -- the first action involves all the same patents asserted in the attached complaint; the second action involves different asserted patents.

With respect to potential remedy, Ericsson requested that the Commission issue a limited exclusion order and a permanent cease and desist order directed to the Proposed Respondents.