Federal Circuit Vacates Denial of Anti-Suit Injunction in FRAND Dispute, Clarifying “Dispositive” Analysis
Patent – Patently-O 2024-10-30
Summary:
Dennis Crouch
The Federal Circuit has vacated the E.D.N.C. Judge Boyle’s denial of an anti-suit injunction in a major FRAND licensing dispute between Ericsson and Lenovo. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 24-1515 (Fed. Cir. Oct. 24, 2024). The decision provides important guidance on when U.S. courts should issue anti-suit injunctions to prevent SEP holders from enforcing foreign injunctions while FRAND obligations are being adjudicated domestically. Importantly, the Federal Circuit adopted the Ninth Circuit test from Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), and added some further refinement making anti-suit injunctions easier to obtain.
Background: The Standard Essential Patent Dance
The dispute centers on Ericsson’s 5G standard-essential patents (SEPs). Like many SEP holders, Ericsson committed to license these patents on fair, reasonable, and non-discriminatory (FRAND) terms through declarations to ETSI, the European telecommunications standards body. These FRAND commitments are designed to prevent “patent holdup” – where SEP holders leverage their essential patents to extract heightened royalties after the standard is widely adopted. See TCL Commc’n Tech. Holdings v. Telefonaktiebolaget LM Ericsson, 943 F.3d 1360 (Fed. Cir.