Ericsson Inc. v. TCL Commc'n Tech. Holdings, Ltd.
| Decision Date | 04 November 2017 |
| Docket Number | Case No. 2:15-cv-00011-RSP |
| Parties | ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON, Plaintiffs, v. TCL COMMUNICATION TECHNOLOGY HOLDINGS, LTD., TCT MOBILE LIMITED, TCT MOBILE (US) INC., Defendants. |
| Court | U.S. District Court — Eastern District of Texas |
Trial in this case is scheduled to begin December 4, 2017. The following opinion and order resolves the parties' pending motions, with the exception of motions in limine, which will be addressed at the pretrial conference.
The parties to the lawsuit are global networking and telecommunications equipment and services companies. The two plaintiffs are companies based in the United States and Sweden. Ericsson is a Delaware corporation based in Plano, Texas. Compl. ¶ 1, Dkt. No. 1. Telefonaktiebolaget LM Ericsson is based in Stockholm, Sweden. Id. ¶ 2. The plaintiffs are collectively referred to as "Ericsson."
Ericsson owns two relevant patent portfolios. The first is a portfolio that Ericsson alleges includes patents that are essential to global 2G, 3G, and 4G telecommunications standards established by the European Telecommunications Standards Institute (ETSI). See TCL Commc'n Tech. Holdings, Ltd. v. Telefonaktienbolaget LM Ericsson et al., Case No. 8:14-cv-00341-JVS- DFM, Dkt. No. 279-1 at 2 (C.D. Cal. June 29, 2015). The second is a portfolio that includes patents claiming inventions used to implement telecommunications standards in cellular handsets, smartphones, tablet computers, televisions, and other electronic devices. Compl. ¶ 3, Dkt. No. 1. Ericsson has not declared the patents in the second portfolio essential to ETSI telecommunications standards. See TCL Commc'n Tech. Holdings, Case No. 8:14-cv-00341-JVS-DFM, Dkt. No. 279-1 at 3. The patent-in-suit is a member of the second portfolio. See Compl. ¶¶ 3, 14, Dkt. No. 1.
The defendants are companies based in China, Hong Kong, and the United States, and are all owned by TCL Corporation, a company based in Shenzhen, China. TCL Communication Technology Holdings, Ltd. is one of the three defendants also based on Shenzhen. Compl. ¶ 4, Dkt. No. 1, Am. Ans. ¶ 4, Dkt. No. 45. TCT Mobile Limited is based in Hong Kong. Compl. ¶ 5, Dkt. No. 1; Am. Ans. ¶ 5, Dkt. No. 45. The third defendant, TCT Mobile (US), Inc., is a Delaware corporation based in Irvine, California. Compl. ¶ 6, Dkt. No. 1; Am. Ans. ¶ 6, Dkt. No. 45. The three defendants are collectively referred to as "TCL."
TCL's answer alleges that it is the fifth largest mobile telecommunications vendor in the world, with products available for sale in more than 100 countries. Am. Ans. ¶ 78, Dkt. No. 45. TCL sells products under the "Alcatel Onetouch" brand in the United States. Id.; Ericsson Ans. ¶ 78, Dkt. No. 51. Products sold under this brand, including the Alcatel OneTouch Fierce, include the Android operating system, which includes functionality that Ericsson claims is covered by the patent-in-suit. See Compl. ¶¶ 47-48, Dkt. No. 1.
This lawsuit is a relatively small element of a larger global dispute. The larger dispute arises from failed license negotiations related to the patent portfolio Ericsson claims is essential to telecommunications standards set by ETSI. See TCL Commc'n Tech. Holdings, Case No. 8:14-cv-00341-JVS-DFM, Dkt. No. 279-1 at 2. The parties attempted to negotiate a license to Ericsson's alleged standard essential patent (SEP) portfolio, but the parties were unable to reach agreement. Id. When a company such as Ericsson declares patents essential to a standard set by ETSI, the company must agree to license the patents on fair, reasonable, and nondiscriminatory (FRAND) terms. See id. TCL claims that Ericsson's license offers did not meet ETSI obligations. See id.
The parties' impasse prompted litigation around the world. From the fall of 2012 through 2014, Ericsson sued TCL for patent infringement in Brazil, France, Argentina, Germany, and Russia. See id. at 6-9. In 2013, TCL petitioned a court in the United Kingdom to revoke certain patents, and Ericsson counterclaimed for infringement. Id. at 6-7. The domestic litigation began in the Central District of California in May 2014, with a lawsuit filed by TCL. See id. at 2. TCL, an alleged third-party beneficiary to Ericsson's ETSI agreement, claimed that Ericsson breached its FRAND obligation. Id. TCL also sought a declaratory judgment that certain alleged SEPs were invalid and not infringed, and TCL asked the court to determine a FRAND rate for a license to Ericsson's SEP portfolio. Id.
Several months later, Ericsson filed a lawsuit against TCL in this district, seeking a declaratory judgment that Ericsson had complied with ETSI obligations, and alleging infringement of two alleged SEPs. Id. at 6. That lawsuit was transferred to the Central District of California in March 2015. Id. In early January 2015, Ericsson filed the present lawsuit, alleging infringement of five patents—United States Patent Nos. 7,149,510, 6,029,052, 6,418,310, RE 43,931, and 6,535,815. Compl. ¶¶ 11-17.
The California court channeled the global dispute at the parties' request. Because the parties indicated that the breach of contract action in California "should result in a 'global resolution' of the SEP patent licensing and damages claims," the court enjoined both parties fromcontinuing to pursue or initiating lawsuits regarding the SEPs at issue in the California lawsuit. See TCL Commc'n Tech. Holdings, Case No. 8:14-cv-00341-JVS-DFM, Dkt. No. 279-1 at 11 (citation omitted). The court also stayed the alleged SEP infringement claims in the lawsuit originally filed in this district, in addition to all "non-FRAND matters." Id. at 16. The lawsuit concerning Ericsson's FRAND obligation proceeded to bench trial earlier this year before the California court, and a final decision from the court is pending. The California court otherwise declined to enjoin or otherwise disturb the present lawsuit because it involves intellectual property Ericsson has not declared essential to telecommunications standards set by ETSI. Id. at 9.
This lawsuit originally involved allegations that TCL infringed claims of five patents that Ericsson had not declared essential to ETSI standards. Id.; Compl. ¶¶ 11-17. These patents are generally related to systems and methods for controlling software and hardware functionality of mobile devices. See Dkt. No. 174 at 3. In response to Ericsson's infringement claims, TCL petitioned the Patent Trial and Appeal Board (PTAB) for inter parties review (IPR) of the asserted claims. See Dkt. No. 276. After the PTAB instituted IPR of all asserted claims, the lawsuit was stayed. Dkt. 270. Earlier this year, the PTAB found that TCL had proven by a preponderance of the evidence that the asserted claims of the '052, '931, '310, and '815 patents are unpatentable. See id. at 3; IPR2015-01650, Paper No. 32. Ericsson has appealed those decisions to the Federal Circuit. The only claims that survived IPR were the claims of the '510 patent, which is the only remaining patent-in-suit. See Dkt. No. 276 at 3. Because the '510 patent claims emerged from IPR, the stay was lifted in May of this year. See Dkt. No. 280.
The '510 patent describes advancements in mobile device technology resulting in demands that have been difficult to meet because of the limited size, memory, and power of mobiledevices.'510 patent at 1:55-61. Mobile devices were at one time used only to make and receive phone calls. Id. at 1:33-35. As technology developed, mobile devices became capable of sending email and accessing the Internet, among other functions similar to those performed on a computer. See id. at 1:35-40. These advanced functions prompted third parties to develop non-native application software, often referred to as an "application" or "app," which could be downloaded by a user. See id. at 2:18-24. The problem is that such applications often need to access the mobile device's native software or hardware functionality, and if left unrestricted, the applications may jeopardize the integrity of the mobile device, for example by triggering cost-incurring events without the user's approval. See id. at 2:18-32. Consequently, the '510 patent describes a need for controlling or limiting an application's access to the mobile device's native functionality. See id. at 2:40-44.
Consistent with its title, "Security Access Manager in Middleware," the '510 patent describes a system for controlling an application's access to native software and hardware on a mobile device. See id. at 4:14-16. An exemplary embodiment of the invention claimed by the '510 patent is shown in Figure 1 (color added):
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Non-native application software (blue) is installed, loaded, and run on the mobile platform. Id. at 4:14-16. The software services component (green) provides services such as control, structured storage, and access to hardware driver software. Id. at 5:33-40. The hardware component (red) includes units associated with and controlled by the respective units of the software services component. Id. at 4:27-32. During operation, the non-native application requests access to the software services component, and an interception module intercepts these requests. Id. at 7:11-13. Once intercepted, a decision entity determines whether the request should be granted based on the security policies of the mobile platform and determines whether the user should be prompted to grant access to certain native functionality. Id. at 8:1-15, 8:26-41.
Ericsson is currently asserting claim 1 of the '510 patent and claims that depend from claim 1 (claims 3-5, and 9). See Dkt. No. 276 at 3. Claim 1 recites:
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