Ericsson AB filed U.S. trade complaints seeking to block imports of Apple Inc. devices, escalating a legal battle that shows licensing talks between the two over 5G telecommunications technology are going poorly.
In complaints filed with the U.S. International Trade Commission in Washington, Ericsson targets a wide swath of Apple products—the iPhone, tablets, smartwatches, smart speakers and digital media players—that it says infringe some of its patents. Ericsson also lodged suits Monday in a west Texas district court known to be friendly to patent owners, claiming Apple devices are using its patented inventions without paying for them.
Even before their 2015 licensing agreement expired, the companies had been lobbing lawsuits against each other. Ericsson sued Apple in October, accusing it of “bad faith” in negotiations. Apple responded with its own suit in December, claiming Ericsson was using “strong arm” tactics in negotiations.
“Since the prior agreement has expired, and we have been unable to reach agreement on the terms and scope of a new license, Apple is now using our technology without a license,” Ericsson spokesperson Mikaela Idermark said in an emailed statement.
Ericsson is counting on its long history in telecommunications—the lawsuits note the company sold its first phone in 1878—and critical role in developing communications and streaming technologies for phones and other devices. It’s been a key player in standard-setting boards and the patents in the cases cover areas such as roaming, signaling and transmission of system information.
Some of the patents in the cases are essential parts of industry standards for telecommunications, including for 5G, according to the complaints. Stockholm-based Ericsson said it’s complied with requirements set by the boards that it license its patents on fair and reasonable terms, but Apple has been “deliberate and willful” in using the inventions without paying.
In its lawsuit filed in December, Apple contended that Ericsson is a smaller player when it comes to the newest generations of mobile communications, yet is demanding a “sticker price” of $5 per device as if it’s still the biggest contributor to the industry standards.
The Cupertino, California-based Apple said it “has always been willing to pay a fair price for technology used in our products” and that it’s asked a court to set a global rate that would be a “fair price” for Ericsson’s standard-essential patents.
“Ericsson has refused to negotiate fair terms for renewing our patent licensing agreement, and instead has been suing Apple around the world to extort excessive royalties,” Apple said. “We will continue to defend against their tactics.”
The two companies have a history of taking their disputes over licensing to the courts. Apple first licensed Ericsson patents in 2008, the year after the iPhone was introduced. It took a year of dueling lawsuits before the agreement was renewed in the seven-year deal signed in 2015.
The trade cases are In the Matter of Certain Mobile Telephones, Tablet Computers with Cellular Connectivity, and Smart Watches with Cellular Connectivity, 337-3594; and In the Matter of Certain Mobile Phones, Tablet Computers, Smart Watches, Smart Speakers and Digital Media Players, 337-3595, U.S. International Trade Commission (Washington).
The civil suits are Ericsson AB v Apple Inc., 22-60 and 22-61, both U.S. District Court for the Western District of Texas (Waco).