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21-04-09 Tillis Michel Iancu Amicus Brief
21-04-09 Tillis Michel Iancu Amicus Brief
No. 21-1565
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
ERICSSON INC.,
TELEFONAKTIEBOLAGET LM ERICSSON,
Plaintiffs-Appellees,
v.
CERTIFICATE OF INTEREST
Counsel for Amici Curiae Senator Thom Tillis, Hon. Paul R. Michel, and
Hon. Andrei Iancu states the following:
2. Real Party in Interest. Provide the full names of all real parties in
interest for the entities. Do not list the real parties if they are the same
as the entities. Fed. Cir. R. 47.4(a)(2).
N/A
None.
5. Related Cases. Provide the case titles and numbers of any case
known to be pending in this court or any other court or agency that will
directly affect or be directly affected by this court’s decision in the
pending appeal. Do not include the originating case number(s) for this
case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir. R. 47.5(b).
None.
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None.
TABLE OF CONTENTS
Page
BACKGROUND .......................................................................................... 2
ARGUMENT ............................................................................................... 8
III. Conclusion........................................................................................ 22
CERTIFICATE OF COMPLIANCE
-i-
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TABLE OF AUTHORITIES
Page(s)
U.S. Cases
Hilton v. Guyot,
159 U.S. 113 (1895) .............................................................................. 19
- ii -
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Constitution
Foreign Cases
Other Authorities
Jorge L. Contreras,
Global Rate-Setting: A Solution for Standards-Essential Patents?,
94 Wash. L. Rev. 701 (2019) ............................................................... 16
- iii -
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Amicus Curiae Hon. Thom Tillis is a U.S. Senator and the ranking
Chief Judge of the U.S. Court of Appeals for the Federal Circuit. Amicus
Office.1
For many years, Amici have served the American people, each in
relevant to and impactful upon the U.S. patent system, one of this
1No party’s counsel authored this brief in whole or in part, and no party,
party’s counsel, or any other person has contributed money intended to
fund the preparation or submission of this brief. All parties consent to
the filing of this brief.
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Further, Amici offer an impartial view that could assist the Court in
understanding the potential full impact of this case on the United States
BACKGROUND
2
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paths of innovation.
not agree on license agreements, including the patent licensing rates, for
obligations.3
to prevent Ericsson from litigating its FRAND and patent issues in the
United States or anywhere else in the world. On December 25, 2020, the
3
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U.S. standard essential patents and asking the court to confirm that
Ericsson had complied with its FRAND obligations. After the Wuhan
injunction issued, Ericsson then asked the U.S. court to stop enforcement
effectively protects the U.S. court’s ability to proceed with Ericsson’s U.S.
patent case (as well as any FRAND obligations and rate determination
Wuhan injunction.
about the intrusion of a foreign court (in this instance, a Chinese court)
4
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technologies.
order a U.S. court to step aside and not determine acceptable patent
U.S. soil, through a lawsuit duly-filed in U.S. courts. In fact, without the
consent of all parties and notice to all parties, the Wuhan court has
where the infringement occurred. The Wuhan court has taken similar
action in other recent patent cases. The court’s actions are a marked
departure from precedent and the general norm in FRAND litigation over
world has taken such action from the outset of the proceeding, without
The U.S. district court here rejected the Wuhan court’s incursion
into the U.S. court’s jurisdiction, explaining that “[t]he public interest
5
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to the Wuhan court’s order. So far, courts in Germany and India have
responded similarly as the U.S. court has, and they issued anti-
Given the nature of the dispute, Amici offer their insight based on
consideration.
First, the Wuhan court has done what no court anywhere in the
world has done. It has declared itself the sole decider of global FRAND
licensing terms without the full consent of the parties involved in the
The U.S. district court here was correct to protect its jurisdiction
from the Wuhan court’s unilateral interference. While U.S. courts have
6
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examples are markedly different because, in each case, the parties agreed
that the U.S. court could decide the global FRAND licensing terms. That
is starkly different from what the Wuhan court has done. And absent
that consent, it is difficult to see why any U.S. court would rightly cede
injunction is not the first time a court has rebuffed the Wuhan court’s
legal system, and these differences can only be more pronounced when
7
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patents in U.S. courts, absent the parties’ full and informed consent or
safeguard its jurisdiction. Amici do not address the finer details of the
trial court’s injunction in this case, and the associated remedies. Amici
ARGUMENT
imposed by foreign nations, as the Wuhan court has done here, without
notice to all parties and without the consent of all parties or other
8
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the global tribunal that will set global FRAND licensing rates for any
party that reaches its courthouse steps first. It unilaterally declared that
it can issue an anti-suit injunction, before the other party even learns of
the suit. And it will then proceed to determine the monetary value of
of the United States and the authority of U.S. courts to adjudicate the
proceeded in this fashion in FRAND cases. Nor has the United States,
as explained below.
U.S. case is a proper exercise of the court’s authority, given the extreme
closeness in time between the two cases and the lack of notice offered to
9
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injunction. If the U.S. court had not proceeded, the logical result would
similarly impinged.
different outcomes if both the U.S. court and the Wuhan court proceed in
resolving the patent disputes between these two parties. But that is
U.S. patent can very well be different from the corresponding Chinese
patent. Cf. Voda v. Cordis Corp., 476 F.3d 887, 901 (Fed. Cir. 2007)
10
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requires the parties to litigate the dispute only in the Wuhan court. Nor
global FRAND licensing rate for all involved jurisdictions. For these
rates for all involved patents could be more efficient. But we do not have
11
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United States.
FRAND rates and other licensing terms for all patents and all affected
jurisdictions, those parties surely could have and would have included
their agreement if they want to include such a clause.4 They also know
4 See, e.g., Kannuu Pty. Ltd. v. Samsung Elecs. Co., No. 21-1638 (Fed. Cir.
filed Jan. 19, 2021) (pending appeal concerning a forum-selection clause
in a non-disclosure agreement for patent licensing discussions).
12
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But without any such applicable pre-existing agreement about where and
landscape for patent law. But that mere possibility is not enough to
condone the extreme step the Wuhan court has taken here. The reality
is that FRAND litigations like this are private party disputes over
without the need for one court to usurp the jurisdiction of the courts of
13
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have a race to the local courthouse, where each nation’s courts offer
in some countries, for example, could become the go-to jurisdiction for an
countries could go the other way, strongly favoring the innovator. Both
such outcomes.
FRAND context show that the Wuhan court has done what no U.S. court
has done to date. Unlike the Wuhan court, U.S. courts have adjudicated
global FRAND licensing terms only with full party consent to the
proceedings.
14
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parties agreed to litigate the global licensing terms for the patent
In Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012),
there was no dispute among the parties that Judge Robart would decide
the global FRAND rates. The dispute was whether the German
to have a single U.S. court resolve the FRAND dispute, the U.S. court’s
agreed-upon forum.
cv-2787, 2018 WL 1784065 (N.D. Cal. Apr. 13, 2018), again the parties
15
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rebuffed nearly identical attempts by the same Wuhan court to seize sole
control over global patent licensing disputes when all parties do not
consent.
16
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Xiaomi raced to the Wuhan court, and, without any public notice, the
in other courts. Similar to the events here, the Wuhan court unilaterally
Germany and India. In both places, the courts recognized many of the
same concerns raised in the present appeal. The New Delhi High Court
in India emphasized the same questions about notice and due process,
InterDigital. The Regional Court of Munich saw the Wuhan court’s anti-
17
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Wuhan court’s action. First, the U.K. court did not purport to impose an
nations. Neither did the U.K. court purport to decide a global FRAND
rate without the parties’ consent from the beginning of the case. Instead,
the implementer from selling its products in the U.K. market. Amici take
no position here on whether the Unwired Planet decisions are correct, but
The district court’s decision in this case is thus in line with how
18
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courtesy and good will, upon the other.” Hilton v. Guyot, 159 U.S. 113,
163–64 (1895). Instead, “it is the recognition which one nation allows
and to the rights of its own citizens, or of other persons who are under
the protection of its laws.” Id. (quoted in Kaepa, Inc. v. Achilles Corp., 76
F.3d 624, 629 n.2 (5th Cir. 1996)); see also Restatement (Third) of Foreign
Relations Law of the United States, ch. 8, intro. note at 591 (Am. Law
(1st Cir. 2004) (explaining that the decision whether to grant an anti-suit
19
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Negara, 335 F.3d 357, 366 (5th Cir. 2003) (“When a preliminary injunc-
ity.”). Indeed, “from the earliest times, authorities have recognized that
the obligation of comity expires when the strong public policies of the
forum are vitiated by the foreign act.” E. & J. Gallo Winery v. Andina
Licores S.A., 446 F.3d 984, 995 (9th Cir. 2006) (quoting Laker Airways
Ltd. v. Sabena, Belgian World Airlines, 731 F.2d 909, 937 (D.C. Cir.
1984)).
6 See, e.g., White House Office of Trade and Mfg. Pol’y, How China’s
Economic Aggression Threatens the Technologies and Intellectual
Property of the United States and the World 7, 11-12 (June 2018); U.S.
Trade Representative, Update Concerning China’s Acts, Policies and
Practices Related to Technology Transfer, Intellectual Property, and
Innovation (Nov. 20, 2018).
20
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Court of Justice] 36 KZR 36/17, 50, 101 (May 5, 2020) (Ger.) (observing
global FRAND disputes. The United States and this Court should not
control the development of, access to, and value of emerging technologies
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in the United States. A foreign nation could, for example, decide that an
invention covered by U.S. patents has low value, including in the United
States, thereby facilitating the entry of companies from their country into
the U.S. market to the disadvantage of U.S. patent holders. This would
technologies of the future. The United States and its courts should not
III. Conclusion
issues affecting U.S. patents and U.S. patent policy. Amici do not take a
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[email protected]
[email protected]
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Instructions: When computing a word, line, or page count, you may exclude any
items listed as exempted under Fed. R. App. P. 5(c), Fed. R. App. P. 21(d), Fed. R.
App. P. 27(d)(2), Fed. R. App. P. 32(f), or Fed. Cir. R. 32(b)(2).
The foregoing filing complies with the relevant type-volume limitation of the
Federal Rules of Appellate Procedure and Federal Circuit Rules because it meets
one of the following:
the filing has been prepared using a monospaced typeface and includes
__________ lines of text.
04/09/2021
Date: _________________ Signature: /s/ Matthew J. Dowd