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UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, DC
In the Matter of CERTAIN ELECTRONIC DEVICES WITH WIRELESS CONNECTIVITY, COMPONENTS THEREOF, AND PRODUCTS CONTAINING SAME
Investigation No. 337-TA-____
VERIFIED COMPLAINT OF
ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON, AND ERICSSON AB UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED
Complainants: Proposed Respondents: Ericsson Inc. 6300 Legacy Drive Plano, TX 75024 Telephone: (972) 583-0000 Telefonaktiebolaget LM Ericsson Torshamnsgatan 21 Kista, Stockholm, Sweden Telephone: 011 46 8 710 0000 Ericsson AB Torshammnsgartan 23 Kista, 16480 Stockholm, Sweden Telephone: 011 46 719 0000 Counsel for Complainants: Thomas L. Jarvis WINSTON & STRAWN LLP 1901 L Street, N.W. Washington, D.C. 20036 Telephone: (202) 282-5000 Facsimile: (202) 282-5100 (additional counsel on following page)
Samsung Electronics, Co. Ltd. 129 Samsung-Ro, Maetan-3dong, Yoeongtong-Gu, Suwon, Gyeonggi, 16677 Republic of Korea Samsung Electronics America, Inc. 85 Challenger Road Ridgefield Park, NJ, 07660-2112 Samsung Electronics Thai Nguyen Co. Ltd. Yen Binh I Industrial Zone Đồng Tiến, Pho Yen District Thai Nguyen Province Thai Nguyen 250000, Vietnam Samsung Electronics Vietnam Co., Ltd. 1 Industrial Park, Commune Yen Trung, Yen Phong District Bac Ninh Province 16000, Vietnam Samsung Electronics HCMC CE Complex, Co., Ltd. Lot I-11, D2 Road, Saigon Hi-Tech Park, Tang Nhon Phu B Ward, District 9 Ho Chi Minh City 700000, Vietnam
Louis L. Campbell WINSTON & STRAWN LLP 275 Middlefield Road, Suite 205 Menlo Park, CA 94025 Telephone: (650) 858-6500 Facsimile: (650) 858-6550 Steven M. Anzalone Paul C. Goulet FISHERBROYLES, LLP 1200 G Street N.W., Suite 800 Washington, D.C. 20005 Telephone: (301) 968-0800 Michael M. Murray FISHERBROYLES, LLP 445 Park Avenue, Ninth Floor New York, NY 10022 Telephone: (203) 542-5711
TABLE OF CONTENTS
I. INTRODUCTION .............................................................................................................. 1
II. COMPLAINANTS ............................................................................................................. 3
III. PROPOSED RESPONDENTS ........................................................................................... 4
IV. THE PRODUCTS AND TECHNOLOGY AT ISSUE ...................................................... 7
V. THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTIONS .................. 10
A. U.S. Patent No. 7,151,430..................................................................................... 10
1. Identification and Ownership of the 7,151,430 Patent ............................. 10
2. Non-Technical Description of the 7,151,430 Patent ................................. 11
3. Foreign Counterparts ................................................................................ 11
4. Licenses..................................................................................................... 12
B. U.S. Patent No. 6,879,849..................................................................................... 13
1. Identification and Ownership of the 6,879,849 Patent ............................. 13
2. Non-Technical Description of the 6,879,849 Patent ................................. 13
3. Foreign Counterparts ................................................................................ 14
4. Licenses..................................................................................................... 14
C. U.S. Patent No. 7,286,823..................................................................................... 15
1. Identification and Ownership of the 7,286,823 Patent ............................. 15
2. Non-Technical Description of the 7,286,823 Patent ................................. 15
3. Foreign Counterparts ................................................................................ 16
4. Licenses..................................................................................................... 17
D. U.S. Patent No. 9,313,178..................................................................................... 17
1. Identification and Ownership of the 9,313,178 Patent ............................. 17
2. Non-Technical Description of the 9,313,178 Patent ................................. 18
3. Foreign Counterparts ................................................................................ 18
ii
4. Licenses..................................................................................................... 19
VI. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE ........................... 19
VII. UNLAWFUL AND UNFAIR ACTS OF PROPOSED RESPONDENT—PATENT INFRINGEMENT ............................................................................................ 22
A. Infringement of the 7,151,430 Patent ................................................................... 22
B. Infringement of the 6,879,849 Patent ................................................................... 23
C. Infringement of the 7,286,823 Patent ................................................................... 25
D. Infringement of the 9,313,178 Patent ................................................................... 26
VIII. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS ............................................ 27
IX. RELATED LITIGATION ................................................................................................ 28
A. Litigation Related to the Asserted Patents ............................................................ 28
B. Pertinent Litigation Between the Parties ............................................................... 28
X. THE DOMESTIC INDUSTRY ........................................................................................ 30
A. Ericsson’s Domestic Activities ............................................................................. 30
B. The Domestic Activities of Ericsson’s Licensees ................................................. 32
C. Ericsson’s Domestic Licensing Activities ............................................................ 32
1. Licensing Activities .................................................................................. 32
2. Litigation Activities Related to Unwilling Licensees ............................... 34
XI. RELIEF REQUESTED ..................................................................................................... 35
iii
TABLE OF EXHIBITS
Public Exhibits
Exh. 1 Certified copy of U.S. Patent No. 7,151,430
Exh. 2 Uncertified copy of U.S. Patent No. 6,879,849
Exh. 3 Certified copy of U.S. Patent No. 7,286,823
Exh. 4 Uncertified copy of U.S. Patent No. 9,313,178
Exh. 5 Certified copy of recorded assignment(s) for U.S. Patent No. 7,151,430
Exh. 6 Uncertified copy of recorded assignment(s) for U.S. Patent No. 6,879,849
Exh. 7 Certified copy of recorded assignment(s) for U.S. Patent No. 7,286,823
Exh. 8 Uncertified copy of recorded assignment(s) for U.S. Patent No. 9,313,178
Exh. 9 Infringement Claim Chart – U.S. Patent No. 7,151,430
Exh. 10 Infringement Claim Chart – U.S. Patent No. 6,879,849
Exh. 11 Infringement Claim Chart – U.S. Patent No. 7,286,823 – Samsung Galaxy S20
Exh. 12 Infringement Claim Chart – U.S. Patent No. 9,313,178 – Samsung Galaxy S20
Exh. 13 Domestic Industry Claim Chart – U.S. Patent No. 7,151,430
Exh. 14 Domestic Industry Claim Chart – U.S. Patent No 6,879,849
Exh. 15 Domestic Industry Claim Chart – U.S. Patent No. 7,286,823 – Ericsson Licensee
Exh. 16 Domestic Industry Claim Chart – U.S. Patent No. 9,313,178 – Ericsson Licensee
Exh. 17 Infringement Claim Chart - U.S. Patent No. 9,313,178 – Samsung Smart TV
Exh. 18 Domestic Industry Claim Chart – U.S. Patent No. 7,286,823 – Ericsson Licensee Number 2
Exh. 19 Domestic Industry Claim Chart – U.S. Patent No. 9,313,178 – Ericsson Licensee Number 2
Exh. 20 Infringement Claim Chart – U.S. Patent No. 7,151,430 – Televisions with WiFi Connectivity
Exh. 21 Domestic Industry Chart – LG – BCM43455
iv
Exh. 22 Domestic Industry Chart – LG – BCM43596
Exh. 23 Samsung Website: Samsung Mobile Phones
Exh. 24.01 Pictures Taken of Samsung Galaxy S20+ 5G SM-G986U at Ericsson Laboratory
Exh. 24.02 Pictures Taken of Samsung Galaxy S20+ 5G SM-G986U by Sigma Connectivity AB
Exh. 24.03 iRunway Report
Exh. 24.04 X-Ray Images Taken of Samsung Galaxy S20+ 5G SM-G986U by Sigma Connectivity AB and Layered Picture Extracted by Ericsson Using Software
Exh. 24.05 Picture Taken of Ericsson Radio 2203 from Ericsson Datasheet
Exh. 24.06 Pictures Taken of ROA 128 5882/3 Printed Circuit Board from the Ericsson Radio 2203
Exh. 24.07 Qorvo RFFC5071A/2A Datasheet
Exh. 24.08 Microscopic Images Taken of the Qorvo RFFC5071A Device
Exh. 24.09 iFixit Teardown of iPhone 12 and iPhone 12 Pro with Enhanced Views
Exh. 24.10 Pictures Taken of LG G6 (LC-H870) w/ BCM43455 Device
Exh. 24.11 Pictures Taken of LG G6 (LC-H870) w/ BCM43596 Device
Exh. 24.12 Samsung Galaxy S20 5G Website
Exh. 24.13 Samsung Galaxy S20 5G Specs
Exh. 24.14 Android Developers Platform Architecture Website
Exh. 24.15 Android Developers Developer Guides Website
Exh. 24.16 Android Developers Package Installer Website
Exh. 24.17 Android Developers Application Security Website
Exh. 24.18 Get Android Apps and Digital Content from the Google Play Store Website
Exh. 24.19 Android Developers Runtime Website
Exh. 24.20 Android Developers Location Manager Website
Exh. 24.21 Android Developers Legacy Hals Website
v
Exh. 24.22 Android Open Source Project Architecture Website
Exh. 24.23 Coursera Overview of Layered Architectures Website
Exh. 24.24 Android Open Source Project Media Website
Exh. 24.25 Android Developers Android Content Website
Exh. 24.26 Android Developers Android.Content.pm Website
Exh. 24.27 Android Developers LauncherApps Website
Exh. 24.28 Android Developers PackageManager Website
Exh. 24.29 Android Developers Android Interface Definition Language (AIDL) Website
Exh. 24.30 Android Developers Services Website
Exh. 24.31 Android Developers HIDL Java Website
Exh. 24.32 Android Developers Application Fundamentals Website
Exh. 24.33 Android Open Source Project Audio Website
Exh. 24.34 Android Open Source Project Camera Website
Exh. 24.35 Android Open Source Project Graphics Website
Exh. 24.36 Android Open Source Project Secure an Android Device Website
Exh. 24.37 Android Developers Media App Architecture Overview Website
Exh. 24.38 Android Developers Android.Media Website
Exh. 24.39 Android Developers MediaCodec Website
Exh. 24.40 Android Developers MediaPlayer Website
Exh. 24.41 Android Developers MediaPlayer Overview Website
Exh. 24.42 Android Open Source Project Develop an Android Device Website
Exh. 24.43 Android Open Source Project Application Sandbox Website
Exh. 24.49 LG G6X ThinQ AT&T Website
Exh. 24.51 Android Architecture Programmer Sought Website
Exh. 24.52 Android Developers Introduction to Android Website
vi
Exh. 24.53 Android Developers MediaCodecList Website
Exh. 24.54 Android Open Source Project Camera Version Support Website
Exh. 24.55 Android Developers Defining a Custom App Permission Website
Exh. 24.56 LG G6 LRA Website
Exh. 24.57 Apple iPhone 12 Website
Exh. 24.58 Apple Developer Survey the Major Frameworks Website
Exh. 24.59 iOS Technology Overview
Exh. 24.60 Apple Developer UIKit Website
Exh. 24.61 Apple Developer Core Media Website
Exh. 24.62 Apple Developer Media Player Website
Exh. 24.63 Apple Developer AV Foundation Website
Exh. 24.64 Apple Developer AVPlayer Website
Exh. 24.65 Apple Developer Audio Playback, Recording, and Processing Website
Exh. 24.66 WWDC 2017 Session 501 – What’s New in Audio Website
Exh. 24.67 Apple Developer Core Audio Overview What Is Core Audio Website
Exh. 24.68 Apple Developer Core Audio Overview Introduction Website
Exh. 24.69 Apple Developer Core Audio Essentials Website
Exh. 24.70 Apple WWDC 2019 What’s New in AVAudioEngine Video Website
Exh. 24.71 Apple Developer AVAudioEngine Website
Exh. 24.72 Apple Developer Core Audio Website
Exh. 24.73 (Exhibit Not Used)
Exh. 24.74 Apple Developer Cameras Website
Exh. 24.75 Apple Developer Cameras and Media Capture Website
Exh. 24.76 Apple Developer AVCaptureDevice Website
Exh. 24.77 Apple Developer About Core Animation Website
vii
Exh. 24.78 Apple Developer Core Graphics Website
Exh. 24.79 Apple Developer Graphics Processors Website
Exh. 24.80 Apple Developer Metal Website
Exh. 24.81 Apple Developer Displays Website
Exh. 24.82 Apple Developer Core Bluetooth Website
Exh. 24.83 Apple Developer Network Extension Website
Exh. 24.84 Apple Developer Core Telephony Website
Exh. 24.85 Apple Developer CF Network Website
Exh. 24.86 Apple Developer Sensor Kit Website
Exh. 24.87 Apple Developer Core Motion Website
Exh. 24.88 Apple Developer What’s New in Core Location Video Website
Exh. 24.89 Apple Developer Core Location Website
Exh. 24.90 Apple Developer Adding Location Services to Your Application Website
Exh. 24.91 Apple Developer Speech Website
Exh. 24.92 Apple Developer Recognizing Speech in Live Audio Website
Exh. 24.93 Apple Developer SFSpeechAudioBufferRecognitionRequest Website
Exh. 24.94 Apple Developer AVAudioPlayer Website
Exh. 24.95 Apple Developer Speech Synthesis Website
Exh. 24.96 Apple Developer AVSpeechSynthesizer Website
Exh. 24.97 Apple Developer Media Assets and Metadata Website
Exh. 24.98 Apple WWDC 2019 Introducing Core Haptics Video Website
Exh. 24.99 Apple Developer Introducing Core Haptics Website
Exh. 24.100 Apple Developer AVVideoCodecKey Website
Exh. 24.101 Apple Developer CMFormatDescription.MediaSubType Website
Exh. 24.102 Apple Developer AVVideoCodecType Website
viii
Exh. 24.103 Apple Developer Develop Website
Exh. 24.104 Apple Developer AVFoundation Website
Exh. 24.105 Apple Developer Submit Your iOS and iPadOS Apps to the App Store Website
Exh. 24.106 Apple Developer Submit Your iPhone Apps to the App Store Website
Exh. 24.107 Apple Developer UIApplicationDelegate Website
Exh. 24.108 Apple Developer About the App Launch Sequence Website
Exh. 24.109 Apple App Store Website
Exh. 24.110 GSMArena Galaxy S20 Ultra 5G Website
Exh. 24.111 Screenshots from DRM Info App
Exh. 24.112 Getting Started Widevine DRM on Devices version 1.5
Exh. 24.113 Widevine Modular DRM Key Rotation version 1.0
Exh. 24.114 Widevine DRM Architecture Overview
Exh. 24.117 Samsung Smart TV Specifications
Exh. 24.118 Apple iPhone 12 Specifications Website
Exh. 24.119 Netflix on the App Store Website
Exh. 24.120 Netflix How Netflix Protects Its Contents – Part 1 Website
Exh. 24.121 Apple Developer HTTP Live Streaming Website
Exh. 24.122 HTTP Live Streaming Draft-pantos-http-live-streaming-23
Exh. 24.123 (Exhibit Not Used)
Exh. 24.124 Apple Developer HLS_Sample_Encryption Introduction Website
Exh. 24.125 Apple Developer HLS_Sample_Encryption Overview Website
Exh. 24.126 WWDC 2017 Advances in HTTP Live Streaming Session 504
Exh. 24.127 Apple Developer Forums FairPlay Streaming
Exh. 24.128 Apple Developer FairPlay Streaming Website
Exh. 24.129 WWDC 2015 Content Protection for HTTP Live Streaming Video Website
ix
Exh. 24.130 WWDC 2015 Content Protection for HTTP Live Streaming
Exh. 24.131 Apple Developer Studio DRM Policy Configuration Website
Exh. 24.132 Apple Developer Understanding the HTTP Live Streaming Architecture Website
Exh. 24.133 Apple Developer Example Playlists for HTTP Live Streaming Website
Exh. 24.134 IETF RFC 8216: HTTP Live Streaming
Exh. 24.135 Apple Developer AVContentKeySession Best Practices Video Website
Exh. 24.136 Apple Developer About the Common Media Application Format with HTTP Live Streaming Website
Exh. 24.137 Apple Developer Providing Metadata for xHE-AAC Video Soundtracks Website
Exh. 24.138 Apple Developer Incorporating Ads into a Playlist Website
Exh. 24.139 Apple Developer Adding Alternate Media to a Playlist Website
Exh. 24.140 Apple Developer Technical Note TN2454: Debugging FairPlay Streaming
Exh. 24.141 Apple TV 4K – Technical Specifications
Exh. 24.142 Apple TV App Website
Exh. 24.143 Lab Photo Samsung TV
Exh. 24.144 BCM43455 – Broadcom Preliminary Data Sheet
Exh. 24.145 Lab Images of BCM43455
Exh. 24.146 Lab Images of BCM43596
Exh. 24.147 Samsung QN32Q50RAFXZA Parts & Accessories
Exh. 24.148 User Manual WCT730M
Exh. 24.149 WCT730M Internal Photos
Exh. 24.150 User Manual WCP730M
Exh. 24.151 WCP730M Internal Photos
Exh. 24.152 MT7668 Layout with Inductors
Exh. 25 Samsung Website: Samsung Tablet Computers with Wireless Connectivity
Exh. 26 Samsung Website: Samsung Televisions with WiFi Connectivity
x
Exh. 28 Samsung Website
Exh. 29 Samsung Website – Locations
Exh. 30 ZDNet Article
Exh. 31 (Exhibit Not Used)
Exh. 32 Samsung Galaxy S20+ Purchase Receipt
Exh. 33 Samsung Galaxy S20+ Source of Origin Designation
Exh. 34 Samsung Galaxy S20+ Packaging Photographs
Exh. 35 Samsung Galaxy S20+ Product Photographs
Exh. 36 Samsung Galaxy Tab S7 Purchase Receipt
Exh. 37 Samsung Galaxy Tab S7 Source of Origin Designation
Exh. 38 Samsung Galaxy Tab S7 Packaging Photographs
Exh. 39 Samsung Galaxy Tab S7 Product Photographs
Exh. 40 Samsung 32Q50 Smart TV Purchase Receipt
Exh. 41 Samsung 32Q50 Smart TV Source of Origin Designation
Exh. 42 Samsung 32Q50 Smart TV Packaging Photographs
Exh. 43 Samsung 32Q50 Smart TV Product Photographs
Exh. 45 Domestic Industry Investments of Ericsson Licensee, Number 2
Exh. 51 Public Version of License Agreement
Exh. 52 Apple 2020 Form 10-K for the Fiscal Year Ended September 26, 2020
Exh. 53 Apple Park: The $5 Billion Headquarters
Exh. 54 Apple Website: Two Million U.S. Jobs and Counting
Exh. 55 Apple Press Release: Apple Accelerates US Investment and Job Creation
Exh. 56 Ericsson Licensee License Agreement
xi
Confidential Exhibits
Confidential Exh. 24.44C Ericsson Licensee Platform Website
Confidential Exh. 24.45C Ericsson Licensee Website
Confidential Exh. 24.46C Cable App Website
Confidential Exh. 24.47C Cable App Viewing Options Website
Confidential Exh. 24.48C Cable App Installation Website
Confidential Exh. 24.50C Cable App Google Play Website
Confidential Exh. 24.115C Ericsson Licensee Product Website
Confidential Exh. 24.116C Ericsson Licensee Product Datasheet
Confidential Exh. 27C Identification of Licensees
Confidential Exh. 44C Declaration of Paul Challoner
Confidential Exh. 46C Domestic Industry Investments of Ericsson Licensee, Number 1
Confidential Exh. 47C Domestic Industry Claim Chart – U.S. Patent No. 9,313,178
Confidential Exh. 48C Domestic Industry Claim Chart – U.S. Patent No. 7,286,823
Confidential Exh. 49C Declaration of Roy Maharaj
Confidential Exh. 50C Ericsson Licensee Website
xii
APPENDICES
App. A Copy of the certified prosecution history of U.S. Patent No. 7,151,430
App. B Copy of the uncertified prosecution history of U.S. Patent No. 6,879,849
App. C Copy of the certified prosecution history of U.S. Patent No. 7,286,823
App. D Copy of the uncertified prosecution history of U.S. Patent No. 9,313,178
App. E Copy of each technical reference identified in the prosecution history of U.S. Patent No. 7,151,430
App. F Copy of each technical reference identified in the prosecution history of U.S. Patent No. 6,879,849
App. G Copy of each technical reference identified in the prosecution history of U.S. Patent No. 7,286,823
App. H Copy of each technical reference identified in the prosecution history of U.S. Patent No. 9,313,178
I. INTRODUCTION
1. Complainants Ericsson Inc., Telefonaktiebolaget LM Ericsson, and Ericsson AB
(collectively, “Ericsson” or “Complainants”) request that the United States International Trade
Commission commence an investigation pursuant to Section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. § 1337, based on the unlawful importation into the United States, the sale for
importation, and the sale within the United States after importation, of certain electronic devices
with wireless connectivity, namely smartphones, tablet computers, and televisions (collectively,
“the Accused Products”), that directly or indirectly infringe one or more of the following claims
of U.S. Patent Nos. 7,151,430 (the “’430 patent”); 6,879,849 (the “’849 patent”); 7,286,823 (the
“’823 patent”); and/or 9,313,178 (the “’178 patent”) (collectively, “the Asserted Patents”):
Asserted Patent Asserted Claims U.S. Patent No. 7,151,430 1-3, 6-8, 11, 13, 16-18, and 20-21 U.S. Patent No. 6,879,849 1-2, 12-14 U.S. Patent No. 7,286,823 8-20 U.S. Patent No. 9,313,178 1-4, 7-10, 16-19
2. Certified copies of the ’430 and ’823 patents and uncertified copies of the ’849 and
’178 patents are attached as Exhibit Nos. 1-4. See Exhs. 1-4. Complainants collectively own all
right, title, and interest in each of the Asserted Patents. Certified and uncertified copies of the
recorded assignments for each of the Asserted Patents are attached as Exhibit Nos. 5-8. See Exhs.
5-8. Certified copies of the prosecution histories of the ’430 and ’823 patents and uncertified
copies of the prosecution histories of the ’849 and ’178 patents are attached as Appendices Nos.
A-D.1 See App. A-D.
1 Certified copies of the ’849 and ’178 patents, their prosecution histories, and their recorded assignments have been ordered from the U.S. Patent and Trademark Office and will be submitted as a supplementation upon receipt. The uncertified copy the ’849 file history is the copy of the file history available to complainant on the USPTO’s Private PAIR website. Complainant believes it may be incomplete, but it is the most complete version currently available to Complainant.
2
3. The Proposed Respondents are Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., Samsung Electronics Vietnam Co. Ltd., Samsung Electronics Vietnam
Thai Nguyen Co. Ltd., and Samsung Electronics HCMC CE Complex, Co., Ltd. (collectively,
“Samsung”). The accused Samsung products are electronic devices with wireless connectivity,
including smartphones, tablet computers, and televisions, manufactured by or on behalf of
Samsung (“Accused Products”). The Accused Products include but are not limited to Samsung’s
Galaxy S20 5G, Galaxy S20+ 5G, Galaxy S20 Ultra 5G, Galaxy S10 series, Galaxy S7 series,
Galaxy S5 series, Galaxy Z Fold2 5G, and Galaxy Fold 512GB mobile phones; Samsung’s Galaxy
Tab S7, Galaxy Tab S7+, Galaxy Tab S6, Galaxy Tab S6 Lite, Galaxy Tab S5e, Galaxy Tab S4,
Galaxy Tab A7 10.4, Galaxy Tab A 8.4, Galaxy Tab A 8.0 Kids Edition, Galaxy Tab A 8.0, Galaxy
Tab A 10.1, and Galaxy Tab A 8.0 tablet computers with wireless connectivity; and Samsung’s
The Frame, The Terrace, Q70T, Q80T, Q90T, Q800T, Q900TS, Q900, 32Q50, Q60T, The Sero,
The Serif, TU7000, TU8000, TU8300, RU9000, Q50R, N5300, Q950TS, and TU6950 smart
televisions. On information and belief, the Accused Products are manufactured and/or assembled
abroad by or on behalf of Samsung. The Accused Products are then sold for importation into the
United States, or imported into the United States, or sold within the United States after importation
by or on behalf of Samsung.
4. As required by 19 U.S.C. §§ 1337(a)(2) and (3), an industry in the United States
relating to articles protected by the Asserted Patents exists.
5. Ericsson seeks a permanent limited exclusion order barring from entry into the
United States all infringing Accused Products. Ericsson also seeks a cease and desist order directed
to Samsung prohibiting its sale for importation, importation, sale after importation, use, offer for
sale, sale, distribution, advertising, testing, repair, technical support, or any other commercial
3
activity related to infringing Accused Products. And Ericsson seeks a bond covering any
importations of infringing products during the Presidential review period.
II. COMPLAINANTS
6. Complainants are Ericsson, Inc., Telefonaktiebolaget LM Ericsson, and Ericsson
AB (collectively, “Ericsson”).
7. Ericsson Inc. is a corporation organized and existing under the laws of the State of
Delaware, having its principal place of business at 6300 Legacy Drive, Plano, Texas 75024.
8. Telefonaktiebolaget LM Ericsson (“LM Ericsson”) is a corporation organized and
existing under the laws of Sweden, having its principal place of business at Torshamnsgatan 21,
Kista, Stockholm, Sweden.
9. Ericsson AB is a corporation organized and existing under the laws of Sweden,
having its principal place of business at Torshamnsgatan 23, Kista, Stockholm, Sweden.
10. Ericsson is one of the world’s largest suppliers of telecommunications network
equipment and related services to telecom operators. Ericsson has over 100,000 employees and
customers in more than 180 countries. Ericsson employs approximately 10,000 people in North
America, including a substantial number of employees in the United States.
11. Ericsson has a long history of innovative technical contributions, including the
patents-at-issue in this lawsuit. In addition, some of Ericsson’s other accomplishments include:
• In 1878, Ericsson sold its first telephone; • In 1977, Ericsson introduced the world’s first digital telephone exchange; • In 1981, Ericsson introduced its first mobile telephone system, NMT; • In 1991, Ericsson launched 2G mobile phones and the world’s first 2G
wireless network; • In 1994, Ericsson invented the Bluetooth wireless standard; • In 2001, Ericsson made the world’s first 3G wireless call for Vodafone in
the UK; • In 2009, Ericsson started the world’s first 4G wireless network and made
the first 4G call;
4
• In 2010, Ericsson equipment was serving over two billion mobile subscribers;
• In 2013, Ericsson was serving more than 500 operator customers in more than 180 countries;
• In 2014, the European Patent Office selected a group of Ericsson inventors as finalists for the European Inventor Award, based on their decisive role in the invention of LTE;
• In 2015, former Ericsson engineer Jaap Haartsen was inducted into the National Inventors Hall of Fame for laying the foundations for Bluetooth Wireless Technology; and
• Currently, Ericsson has more than 75 live 5G networks around the globe.
12. Ericsson researches, develops, engineers, manufactures, and operates
telecommunications products. Ericsson is widely viewed as one of the leading innovators in the
field of cellular communications. Due to the work of approximately 25,000 Ericsson research and
development (“R&D”) employees, Ericsson’s inventions are a valuable part of the fundamental
technology that seamlessly connects phones, smartphones, and other mobile devices using cellular
networks worldwide and provides increased performance and new features for the benefit of
consumers. As a result of its extensive R&D efforts, Ericsson holds more than 54,000 granted
patents worldwide.
13. Ericsson also leads the way in deployment of wireless cellular networks. Ericsson
has commercial agreements or contracts with many different network operators of 4G LTE
networks around the world and 117 commercial agreements or contracts with cellular operators
for 5G networks.
III. PROPOSED RESPONDENTS
14. The proposed respondents are Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., Samsung Electronics Vietnam Co. Ltd., Samsung Electronics Vietnam Thai
Nguyen Co. Ltd., and Samsung Electronics HCMC CE Complex, Co., Ltd. (collectively,
“Samsung”).
5
15. On information and belief, Samsung Electronics, Co. Ltd. (“SEC”) is a corporation
organized under the laws of the Republic of Korea with its principal place of business at 129
Samsung-Ro, Maetan-3dong, Yoeongtong-Gu, Suwon, Gyeonggi, 16677, Republic of Korea. On
information and belief, SEC is a global electronics firm comprised of about 242 subsidiaries that
design, produce, and sell electronic products that include smartphones, tablet computers, and
televisions at issue that are manufactured abroad, sold for importation, imported into the United
States, and sold after importation.
16. On information and belief, Samsung Electronics America., Inc. (“SEA”) is a
corporation organized under the laws of the State of New York with a principal place of business
at 85 Challenger Road, Ridgefield Park, New Jersey, 07660-2112. On information and belief,
SEA and/or its subsidiaries or affiliates is engaged in testing, marketing, distribution, importation,
sale for importation, and/or sale within the United States after importation of mobile phones, tablet
computers, and televisions at issue that are manufactured abroad and imported into the United
States. On information and belief, SEA is a direct or indirect subsidiary of SEC.
17. On information and belief, Samsung Electronics Vietnam Thai Nguyen Co., Ltd.
(“SEVT”) is a corporation organized under the law of Vietnam with its principal place of business
at Yen Binh I Industrial Zone, Đồng Tiến, Pho Yen District, Thai Nguyen Province, Thai Nguyen
250000, Vietnam. On information and belief, SEVT is engaged in the manufacture of mobile
phones and/or tablet computers at issue that are manufactured abroad and imported into the United
States. On information and belief, SEVT is a direct or indirect subsidiary of SEC.
18. On information and belief, Samsung Electronics Vietnam Co. Ltd. (“SEV”) is a
corporation organized under the law of Vietnam with its principal place of business at 1 Industrial
Park, Commune Yen Trung, Yen Phong District, Bac Ninh Province 16000, Vietnam. On
6
information and belief, SEV is engaged in the manufacture of mobile phones and/or tablet
computers at issue that are manufactured abroad and imported into the United States. On
information and belief, SEA is a direct or indirect subsidiary of SEC.
19. On information and belief, Samsung Electronics HCMC CE Complex, Co., Ltd.
(“SEHC”), is a corporation organized under the law of Vietnam with a principal place of business
at Lot I-11, D2 Road, Saigon Hi-Tech Park, Tang Nhon Phu B Ward, District 9, Ho Chi Minh
City, 700000, Vietnam. On information and belief, SEHC is engaged in the manufacture of smart
televisions with wireless connectivity that are manufactured abroad and imported into the United
States. On information and belief, SEHC is a direct or indirect subsidiary of SEC.
20. On information and belief, Samsung and its affiliates design, develop, manufacture,
import, test, inventory, and sell after importation the Accused Products, which include, inter alia,
the following mobile phones: Samsung’s Galaxy S20 5G, Galaxy S20+ 5G, Galaxy S20 Ultra 5G,
Galaxy S10 series, Galaxy S7 series, Galaxy S5 series, Galaxy Z Fold2 5G, and Galaxy Fold
512GB mobile phones. See Exh. 23. Samsung sells accused mobile phones directly to consumers
located in the United States. See id.
21. On information and belief, Samsung and its affiliates design, develop, manufacture,
import, test, inventory, and sell after importation the Accused Products, which include, inter alia,
the following tablet computers with wireless connectivity: the Samsung Galaxy Tab S7, Galaxy
Tab S7+, Galaxy Tab S6, Galaxy Tab S6 Lite, Galaxy Tab S5e, Galaxy TabS4, Galaxy Tab A7
10.4, Galaxy Tab A 8.4, Galaxy Tab A 8.0 Kids Edition, Galaxy Tab A 8.0, Galaxy Tab A 10.1,
and Galaxy Tab A 8.0 tablet computers with wireless connectivity. See Exh. 25. Samsung sells
accused table computers with network connectivity directly to consumers located in the United
States. See id.
7
22. On information and belief, Samsung and its affiliates design, develop, manufacture,
import, test, inventory, and sell after importation the Accused Products, which include, inter alia,
the following televisions with wireless connectivity: Samsung’s The Frame, The Terrace, Q70T,
Q80T, Q90T, Q800T, Q900TS, Q900, 32Q50, Q60T, The Sero, The Serif, TU7000, TU8000,
TU8300, RU9000, Q50R, N5300, Q950TS, and TU6950 smart televisions. See Exh. 26. Samsung
sells accused televisions with wireless connectivity directly to consumers located in the United
States. See id.
23. On information and belief, Samsung also sells the Accused Products within the
United States through major retail outlets such as Best Buy, Target, Wal-Mart, Verizon, AT&T,
T-Mobile, U.S. Cellular, Amazon, Cricket Wireless, Boost Mobile, MetroPCS, Virgin Mobile, and
numerous other online stores and resellers. Samsung also performs several services to support the
importation and sale of the Accused Products into and within the United States, including
marketing the Accused Products, developing and distributing software, repairing the Accused
Products, and other after-sale services, such as supporting and configuring the Accused Products,
as well as providing technical support to U.S.-based customers and distributors to conform the
Accused Products to purchaser requests.
IV. THE PRODUCTS AND TECHNOLOGY AT ISSUE2
24. Pursuant to Commission Rule 210.12(a)(12), the Accused Products are certain
electronic devices with wireless connectivity, including mobile phones, tablet computers, and
smart televisions. The Accused Products include but are not limited to Samsung’s Galaxy S20
5G, Galaxy S20+ 5G, Galaxy S20 Ultra 5G, Galaxy S10 series, Galaxy S7 series, Galaxy S5 series,
2 The description of the technology at issue is provided for purposes of general information and understanding and is not meant to be a position with respect to claim construction and/or other technical aspects of patent law.
8
Galaxy Z Fold2 5G, and Galaxy Fold 512GB mobile phones; Samsung’s Galaxy Tab S7, Galaxy
Tab S7+, Galaxy Tab S6, Galaxy Tab S6 Lite, Galaxy Tab S5e, Galaxy Tab S4, Galaxy Tab A7
10.4, Galaxy Tab A 8.4, Galaxy Tab A 8.0 Kids Edition, Galaxy Tab A 8.0, Galaxy Tab A 10.1,
and Galaxy Tab A 8.0 tablet computers with wireless connectivity; and Samsung’s The Frame,
The Terrace, Q70T, Q80T, Q90T, Q800T, Q900TS, Q900, 32Q50, Q60T, The Sero, The Serif,
TU7000, TU8000, TU8300, RU9000, Q50R, N5300, Q950TS, and TU6950 smart televisions.
25. The ’430 patent relates to inductors implemented within a semiconductor chip. The
’430 patent utilizes an inductor design that is symmetrical about at least one axis and containing
at least one pair of loops (e.g., a figure-eight shape) arranged so that the magnetic fields emanating
from each of the loops tend to cancel each other out. As a result of this configuration, there is a
reduced electromagnetic field at a certain distance from the inductor, thereby lowering the
electromagnetic coupling between this inductor and other circuit components on the same chip.
The ’430 patent is particularly useful when implementing an RF transceiver with voltage-
controlled oscillators on a single chip, which typically requires multiple inductors. The design of
the ’430 patent reduces the amount of undesired coupling with the inductor, which may result in
spurious receiver responses and unwanted frequencies in the transmit spectrum.
26. The ’849 patent relates to an antenna built into a mobile communication device.
The ’849 patent utilizes an antenna design that allows the antenna to be enclosed entirely within
the case of a mobile phone. The antenna is formed of an antenna pattern and a ground plane that
are both located within the case. To reduce losses in transmission or reception of radio signals,
the ’849 patent utilizes an antenna pattern that is etched on the planar surface of a circuit board
that also contains electronic communication components for the antenna. A ground plane is
supported by a structure that places it in a spaced-apart parallel relationship with the antenna
9
pattern. The resulting antenna takes up limited space within the mobile device, is easier to
manufacture, and benefits from a less costly and more effective connection between the antenna
pattern and other RF components on the printed circuit board.
27. The ’823 patent relates to installing and running multimedia application software
on a mobile terminal for a wireless telecommunications system. The ’823 patent seeks to enable
mobile terminals, which are resource-scarce environments limited in memory and storage, to adapt
to rapid changes in market demands and to satisfy the diverse requirements of various users by
enabling a middleware layer with a secure interface for installing, loading, and running multimedia
applications. For example, the ’823 patent allows subsequently-installed software to access a
multimedia engine of the device via an interface that grants access to at least the software
components of the multimedia engine. Previously, mobile terminals were not able to quickly adapt
to rapid changes in market demands or to satisfy the diverse requirements of various users due to
their limited resources and difficulties in rolling out new and/or updated software.
28. The ’178 Patent relates to “over-the-top” (i.e., over the Internet) streaming of
content, such as video content, with enhanced security. A client device that streams content
typically obtains an encryption key to decrypt and present the content to a user. The use of a single
encryption key for content with a long or uncertain duration increases the probability that the key
may be compromised. To solve this problem, the ’178 Patent teaches a system and method for the
secure distribution of content that utilizes a series of encryption keys for each of a plurality of
periods of use of the content. The client will retrieve, from a license server, encryption keys and
encryption key expiration times. Before a currently used encryption key expires, the client will
retrieve, from the license server, the encryption key for the next time period. In this manner,
10
content is smoothly retrieved and presented to a user by the client device, while the encryption
keys may be varied during the presentation of the content.
V. THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTIONS3
A. U.S. Patent No. 7,151,430
1. Identification and Ownership of the 7,151,430 Patent
29. The ’430 patent, titled “Method of and Inductor Layout for Reduced VCO
Coupling,” issued on December 19, 2006 to inventor Thomas Mattsson. See Exh. 1. The ’430
patent issued from Application No. 10/919,130, filed on August 16, 2004. Id.
30. The ’430 patent has three independent claims and 18 dependent claims. See Exh.
9. Ericsson is asserting infringement of claims 1-3, 6, 11, 13, 16-18, 20, and 21 of the ’430 patent
in this Investigation. See id. Further investigation and discovery may lead to the assertion of
additional claims.
31. The Asserted Claims of the ’430 patent are valid, enforceable, and currently in full
force and effect until the expiration of the ’430 patent on February 2, 2025. Ericsson owns by
assignment the entire right, title, and interest in and to the ’430 patent. See Exh. 5, ’430 Patent
Assignment.
32. Pursuant to Commission Rule 210.12(c)(1), this Complaint is accompanied by a
copy of the prosecution history of the ’430 patent. App. A. Pursuant to Commission Rule
210.12(c)(2), this Complaint is also accompanied by a copy of each technical reference identified
in the prosecution history of the ’430 patent. App. E.
3 No part of this Complaint, including any sections herein or Exhibit hereto, construes, or is intended to construe, the specification, file history, or claims of any of the Asserted Patents.
11
2. Non-Technical Description of the 7,151,430 Patent
33. The ’430 patent relates to inductors implemented within a semiconductor chip. The
’430 patent utilizes an inductor design that is symmetrical about at least one axis and containing
at least one pair of loops (e.g., a figure-eight shape) arranged so that the magnetic fields emanating
from each of the loops tend to cancel each other out. As a result of this configuration, there is a
reduced electromagnetic field at a certain distance from the inductor, thereby lowering the
electromagnetic coupling between this inductor and other circuit components on the same chip.
The ’430 patent is particularly useful when implementing an RF transceiver with voltage-
controlled oscillators on a single chip, which typically requires multiple inductors. The design of
the ’430 patent reduces the amount of undesired coupling with the inductor, which may result in
spurious receiver responses and unwanted frequencies in the transmit spectrum.
3. Foreign Counterparts
34. The foreign patents and patent applications that claim priority to the ’430 patent or
that share a priority claim to one or more of the same applications as the ’430 patent are:
U.S. Patent No. 7,151,430 Application Date
Application Number
Status Publication/Issue Date
Publication or Patent No.
Country
2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 AT 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 BE 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 CH 12/31/2014 14172888.1 GRANTED 8/14/2019 2819131 CH
2/15/2005 20058014256.7 GRANTED 6/13/2012 ZL200580014256.7 CN
2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 CZ 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 DE 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 DE 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 DK 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 EE 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 EP 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 EP 2/15/2005 19183992.7 PUBLISHED 11/13/2019 3567614 EP 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 ES
12
U.S. Patent No. 7,151,430 Application Date
Application Number
Status Publication/Issue Date
Publication or Patent No.
Country
2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 FI 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 FR 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 FR 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 GB 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 GB 10/15/2007 07111096.3 GRANTED 4/5/2013 HK1106062 HK 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 HU 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 IE
9/3/2012 2093/MUMNP/ 2012 GRANTED 8/19/2020 344496 IN
2/15/2005 1173/MUMNP/ 2006 GRANTED 11/30/2012 254652 IN
2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 IT 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 IT 2/15/2005 2007-501145 PUBLISHED 9/13/2007 2007526642 JP 3/25/2013 10-2013-7007566 PUBLISHED 4/26/2013 1020130042645 KR 9/27/2012 10-2012-7025521 GRANTED 8/13/2013 10-1298288 KR 2/15/2005 10-2006-7020659 PUBLISHED 12/19/2006 1020060130711 KR 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 NL 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 NL 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 PL 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 PL 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 PT 2/15/2005 05715341.3 GRANTED 7/23/2014 1721324 SE 2/15/2005 14172888.1 GRANTED 8/14/2019 2819131 SE
2/15/2005 PCT/EP05/ 001515 PUBLISHED 10/13/2005 2005/096328 WO
35. On information and belief, Ericsson knows of no other foreign applications or
patents corresponding to the ’430 patent have been filed, abandoned, or rejected.
4. Licenses
36. As required under Commission Rule 210.12(a)(9)(iii), a list of currently-licensed
entities is attached to this Complaint. See Confidential Exh. 27C. In addition, Ericsson has or will
seek consent, cotemporaneous with the filing of this Complaint, to identify additional license(s)
the existence of which may be subject to non-disclosure requirements. Apart from the license(s)
13
subject to non-disclosure requirements, on information and belief, there are no other currently
identified licenses involving the ’430 patent. Samsung was formerly licensed to this patent.
B. U.S. Patent No. 6,879,849
1. Identification and Ownership of the 6,879,849 Patent
37. The ’849 patent, titled “In-Built Antenna for Mobile Communication Device,”
issued on April 12, 2005 to inventor Stjepan Begic. See Exh. 2. The ’849 patent issued from
Application No. 10/081,013, filed on Feb. 21, 2002. Id.
38. The ’849 patent has two independent claims and 18 dependent claims. See Exh.
10. Ericsson is asserting infringement of claims 1-2, and 12-14 of the ’849 patent in this
Investigation. See id. Further investigation and discovery may lead to the assertion of additional
claims.
39. The Asserted Claims of the ’849 patent are valid, enforceable, and currently in full
force and effect until the expiration of the ’849 patent on August 21, 2024. Ericsson owns by
assignment the entire right, title, and interest in and to the ’849 patent. See Exh. 6, ’849 Patent
Assignment.
40. Pursuant to Commission Rule 210.12(c)(1), this Complaint is accompanied by a
copy of the prosecution history of the ’849 patent. App. B. Pursuant to Commission Rule
210.12(c)(2), this Complaint is also accompanied by a copy of each technical reference identified
in the prosecution history of the ’849 patent. App. F.
2. Non-Technical Description of the 6,879,849 Patent
41. The ’849 patent relates to an antenna built into a mobile communication device.
The ’849 patent utilizes an antenna design that allows the antenna to be enclosed entirely within
the case of a mobile phone. The antenna is formed of an antenna pattern and a ground plane that
are both located within the case. To reduce losses in transmission or reception of radio signals,
14
the ’849 patent utilizes an antenna pattern that is etched on the planar surface of a circuit board
that also contains electronic communication components for the antenna. A ground plane is
supported by a structure that places it in a spaced-apart parallel relationship with the antenna
pattern. The resulting antenna takes up limited space within the mobile device, is easier to
manufacture, and benefits from a less costly and more effective connection between the antenna
pattern and other RF components on the printed circuit board.
3. Foreign Counterparts
42. The foreign patents and patent applications that claim priority to the ’849 patent
are:
U.S. Patent No. 6,879,849 Application Date
Application Number
Status Publication/ Issue Date
Publication or Patent No.
Country
2/18/2003 20030704643 PUBLISHED 7/15/2005 298137 AT 2/18/2003 2003206917 PUBLISHED 9/09/2003 2003206917 AU 2/18/2003 60300863.1 PUBLISHED 12/22/2005 60300863 DE 2/18/2003 03704643.0 GRANTED 6/15/2005 1476918 EP 2/18/2003 20033570422 PUBLISHED 6/23/2005 2005518695 JP 2/18/2003 PCT/EP03/01611 PUBLISHED 8/28/2003 03/071629 WO
43. On information and belief, no other foreign applications or patents corresponding
to the ’849 patent have been filed, abandoned, or rejected.
4. Licenses
44. As required under Commission Rule 210.12(a)(9)(iii), a list of currently-licensed
entities is attached to this Complaint. See Confidential Exh. 27C. In addition, Ericsson has or will
seek consent, cotemporaneous with the filing of this Complaint, to identify additional license(s)
the existence of which may be subject to non-disclosure requirements. Apart from the license(s)
subject to non-disclosure requirements, on information and belief, there are no other currently
identified licenses involving the ’849 patent. Samsung was formerly licensed to this patent.
15
C. U.S. Patent No. 7,286,823
1. Identification and Ownership of the 7,286,823 Patent
45. The ’823 patent, titled “Mobile Multimedia Engine,” issued on October 23, 2007
to inventors Mikael Reinholdsson, Erik Ledfelt, and Johan Svenér. See Exh. 3. The ’823 patent
issued from Application No. 10/359,910, filed on February 7, 2003. Id.
46. The ’823 patent has 4 independent claims and 16 dependent claims. See Exh. 11.
Ericsson is asserting claims 8-20 of the ’823 patent in this Investigation. See id. Further
investigation and discovery may lead to the assertion of additional claims.
47. The Asserted Claims of the ’823 patent are valid, enforceable, and currently in full
force and effect until the expiration of the ’823 patent on April 17, 2024. Ericsson owns by
assignment the entire right, title, and interest in and to the ’823 patent. See Exh. 7, ’823 Patent
Assignment.
48. Pursuant to Commission Rule 210.12(c)(1), this Complaint is accompanied by a
copy of the prosecution history of the ’823 patent. App. C. Pursuant to Commission Rule
210.12(c)(2), this Complaint is also accompanied by a copy of each technical reference identified
in the prosecution history of the ’823 patent. App. G.
2. Non-Technical Description of the 7,286,823 Patent
49. The ’823 patent is generally directed to enabling and improving multimedia
applications on mobile devices by allowing subsequently-created software and CODECs to be
installed as needed or as developed. The ’823 patent describes a mobile device whose multimedia
system is divided into several discrete components, including a mobile multimedia engine that has
a software component that controls the engine’s hardware component. Multimedia software can
only access the engine’s software components by an interface, which loads, installs, and runs that
multimedia software application in the engine.
16
3. Foreign Counterparts
50. The foreign patents and patent applications that claim priority to the ‘823 patent or
that share a priority claim to one or more of the same applications as the ’823 patent are:
U.S. Patent No. 7,286,823 Application Date
Application Number
Status Publication/ Issue Date
Publication or Patent No.
Country
2/13/2003 2003210262 PUBLISHED 9/4/2003 2003210262 AU 2/12/2003 2003210252 PUBLISHED 9/4/2003 2003210252 AU 2/13/2003 2003210261 PUBLISHED 9/4/2003 2003210261 AU 2/13/2003 2003214058 PUBLISHED 9/4/2003 2003214058 AU 2/13/2003 2003218656 PUBLISHED 9/4/2003 2003218656 AU 9/22/2003 2003266401 PUBLISHED 4/8/2004 2003266401 AU 9/22/2003 2003270235 PUBLISHED 4/8/2004 2003270235 AU 9/22/2003 2003277881 PUBLISHED 4/8/2004 2003277881 AU 2/13/2003 03803965.6 GRANTED 12/13/2006 ZL03803965.6 CN 2/13/2003 03804023.9 GRANTED 12/12/2007 ZL03804023.9 CN 2/13/2003 03804026.3 GRANTED 7/18/2012 ZL03804026.3 CN 2/13/2003 03804047.6 GRANTED 4/9/2008 ZL03804047.6 CN 9/22/2003 03822474.7 GRANTED 8/5/2009 ZL03822474.7 CN 9/22/2003 03822481.X GRANTED 1/7/2009 ZL03822481.X CN 2/13/2003 16197680.8 PUBLISHED 5/24/2017 3171265 EP 2/13/2003 03739487.1 PUBLISHED 12/15/2004 1485799 EP 2/13/2003 03709705.2 GRANTED 7/8/2015 1476809 EP 9/22/2003 03769298.5 GRANTED 5/9/2007 1547351 EP 9/22/2003 03797315.3 GRANTED 8/11/2010 1550332 EP 2/13/2003 15177455.1 PUBLISHED 2/24/2016 2988212 EP 9/22/2003 16158248.1 PUBLISHED 7/20/2016 3046027 EP 9/22/2003 19208216.2 PUBLISHED 3/25/2020 3627321 EP 2/13/2003 2003-568526 PUBLISHED 6/16/2005 2005-518116 JP 2/13/2003 2003-568520 PUBLISHED 9/2/2005 2005-526308 JP 2/13/2003 2003-568521 GRANTED 5/8/2013 5192118 JP 2/13/2003 2003-568529 PUBLISHED 6/16/2005 2005-518015 JP 2/12/2003 2003-568904 GRANTED 9/29/2010 4554937 JP 9/22/2003 2004-537141 PUBLISHED 3/9/2006 2006-508424 JP 9/22/2003 2004-537142 PUBLISHED 3/30/2006 2006-511100 JP 9/22/2003 2004-537143 GRANTED 12/1/2010 4589113 JP 5/13/2011 2011-108701 PUBLISHED 10/13/2011 2011-205672 JP 2/13/2003 10-2004-7011988 GRANTED 6/30/2009 10-0906358 KR 2/13/2003 10-2004-7011959 GRANTED 5/25/2011 101036760 KR 2/13/2003 10-2004-7011961 GRANTED 4/5/2011 101026110 KR 2/13/2003 10-2004-7011989 GRANTED 6/14/2010 100962463 KR 9/22/2003 10-2005-7004924 GRANTED 8/11/2010 100974851 KR
17
U.S. Patent No. 7,286,823 Application Date
Application Number
Status Publication/ Issue Date
Publication or Patent No.
Country
9/22/2003 10-2005-7004952 GRANTED 7/7/2011 101047278 KR 3/23/2005 10-2005-7005014 PUBLISHED 6/17/2005 10-2005-0059185 KR 2/13/2003 PCT/EP03/01431 PUBLISHED 08/21/2003 2003/069469 WO 2/12/2003 PCT/EP03/0301373 PUBLISHED 10/7/2004 2003/069922 WO 2/13/2003 PCT/EP03/0301428 PUBLISHED 4/15/2004 2003/069472 WO 2/13/2003 PCT/EP03/0301429 PUBLISHED 11/11/2004 2003/069464 WO 2/13/2003 PCT/EP03/0301430 PUBLISHED 9/16/2004 2003/069463 WO 9/22/2003 PCT/EP03/0310496 PUBLISHED 3/23/2006 2004/027603 WO 9/22/2003 PCT/EP03/0310507 PUBLISHED 4/1/2004 2004/028182 WO 9/22/2003 PCT/EP03/0310515 PUBLISHED 4/1/2004 2004/028125 WO
51. On information and belief, no other foreign applications or patents corresponding
to the ’823 patent have been filed, abandoned, or rejected.
4. Licenses
52. As required under Commission Rule 210.12(a)(9)(iii), a list of currently-licensed
entities is attached to this Complaint. See Confidential Ex. 27C. In addition, Ericsson has or will
seek consent, cotemporaneous with the filing of this Complaint, to identify additional license(s)
the existence of which may be subject to non-disclosure requirements. Apart from the license(s)
subject to non-disclosure requirements, on information and belief, there are no other currently
identified licenses involving the ’823 patent. Samsung was formerly licensed to this patent.
D. U.S. Patent No. 9,313,178
1. Identification and Ownership of the 9,313,178 Patent
53. The ’178 patent, titled “Method And System For Secure Over-The-Top Live Video
Delivery,” issued on April 12, 2016 to inventors Kevin J. Ma, Robert Hickey, and Paul Tweedale.
See Exh. 4. The ’178 patent issued from Application No. 14/266,368 (the “’368 Application”),
filed on April 30, 2014. Id. The ’368 application was filed as a continuation of Application No.
13/530,997, filed on June 22, 2012.
18
54. The ’178 patent has two independent claims and 18 dependent claims. See Exh.
12. Ericsson is asserting claims 1-4, 7-10, and 16-19 of the ’178 patent in this Investigation. See
id. Further investigation and discovery may lead to the assertion of additional claims.
55. The Asserted Claims of the ’178 patent are valid, enforceable, and currently in full
force and effect until the expiration of the ’178 patent on June 22, 2032. Ericsson owns by
assignment the entire right, title, and interest in and to the ’178 patent. See Exh. 8, ’178 Patent
Assignment.
56. Pursuant to Commission Rule 210.12(c)(1), this Complaint is accompanied by a
copy of the prosecution history of the ’178 patent. App. D. Pursuant to Commission Rule
210.12(c)(2), this Complaint is also accompanied by a copy of each technical reference identified
in the prosecution history of the ’178 patent. App. H.
2. Non-Technical Description of the 9,313,178 Patent
57. The ’178 patent is generally directed to the secure distribution of content, such as
video, that utilizes a series of encryption keys for each of a plurality of periods of use of the content.
A client device, such as a cellphone, will retrieve, from a license server, encryption keys and key
expiration times. Before a currently used encryption key expires, the client will retrieve, from the
license server, the encryption key for the next time period. In this manner, content is smoothly
decrypted and presented to a user by the client device, while the encryption keys may be varied
during the presentation of the content.
3. Foreign Counterparts
58. On information and belief, there are no foreign patents or patent applications that
claim priority to the ’178 patent or that share a priority claim to one or more of the same
applications as the ’178 patent.
19
59. On information and belief, no foreign applications or patents that claim priority to
the ’178 patent or that share a priority claim to one or more of the same applications as the ’178
patent have been filed, abandoned, or rejected.
4. Licenses
60. As required under Commission Rule 210.12(a)(9)(iii), a list of currently-licensed
entities is attached to this Complaint. See Confidential Ex. 27C. In addition, Ericsson has or will
seek consent, cotemporaneous with the filing of this Complaint, to identify additional license(s)
the existence of which may be subject to non-disclosure requirements. Apart from the license(s)
subject to non-disclosure requirements, on information and belief, there are no other currently
identified licenses involving the ’178 patent. Samsung was formerly licensed to this patent.
VI. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE
61. On information and belief, Samsung’s Accused Products are manufactured and
assembled at foreign facilities. See Exhs. 32-33, 36-37, and 40-41. The Accused Products are
then sold for importation into the United States, imported into the United States, and/or sold within
the United States after importation. See also Exhs. 28-29.
62. On information and belief, Samsung offers for sale, sells, and provides support for
its Accused Products at Samsung stores located in the United States. See Exhs. 23, 25-29.
Samsung operates stores located in at least Los Angeles, California; Palo Alto, California;
Houston, Texas; and Garden City, New York. See Exh. 29. Those stores offer for sale, sell, and
deliver Samsung Accused Products, including smartphones and tablets. See id. For example, as
shown on the Samsung U.S. website, many models of Samsung’s Accused Products are available
for purchase in the United States. See Exhs. 23, 25-29.
63. On information and belief, Samsung offers for sale, sells, and provides support for
its Accused Products via a website that Samsung operates in the United States at URL
20
www.samsung.com/us. Exhs. 23, 25-26. Samsung’s USA website offers for sale, sells, and
provides for delivery of the Accused Products in the United States, including the Samsung S20
family of products. See Exh. 23.
64. On information and belief, Samsung actively induces other retailers located in the
United States to offer for sale, sell, and provide support for Samsung Accused Products. See id.
65. On information and belief, many retailers located in the United States offer for sale,
sell, and support Samsung Accused Products.
66. Upon information and belief, Samsung will continue to offer for sale after
importation allegedly infringing smartphones both directly and through its retail contracts to
consumers in the United States. See Exh. 30.
67. Upon information and belief, Samsung has agreements to supply Accused Products
to distributors located in the United States. Upon information and belief, Samsung has agreements
to supply Accused Products to major retailers located in the United States.
68. A Samsung Model Galaxy S20+ smartphone was purchased in the United States.
A purchase receipt for that Galaxy S20+ smartphone is attached as Exhibit 32. A label indicating
the source of origin designation for that Samsung Galaxy S20+ smartphone is attached as Exhibit
33. Photographs of that Samsung Galaxy S20+ smartphone and its packaging are included in
Exhibits 34-35. On information and belief, that Samsung Galaxy S20+ was made in Vietnam. See
Exhs. 33. On information and belief, that Samsung Galaxy S20+ was then imported into the United
States and sold within the United States after importation. That Samsung Galaxy S20+ and its
packaging are available for inspection at Ericsson’s counsel’s offices in Washington, D.C.
69. A Samsung Model Galaxy Tab S7 tablet computer was purchased in the United
States. A purchase receipt for that Galaxy Tab S7 tablet computer is attached as Exhibit 36. A
21
label indicating the source of origin designation for that Samsung Galaxy Tab S7 tablet computer
is attached as Exhibit 37. Photographs of that Samsung Galaxy Tab S7 tablet computer and its
packaging are included as Exhibits 38-39. On information and belief, that Samsung Galaxy Tab
S7 tablet computer was made in Vietnam. See Exh. 37. On information and belief, that Samsung
Galaxy Tab S7 tablet computer was then imported into the United States and sold within the United
States after importation. That Samsung Galaxy Tab S7 tablet computer and its packaging are
available for inspection at Ericsson’s counsel’s offices in Washington, D.C.
70. A Samsung Model 32Q50 Smart Television was purchased in the United States. A
purchase receipt for that Samsung Model 32Q50 Smart Television is attached as Exhibit 40. A
label indicating the source of origin designation for that Samsung Model 32Q50 Smart Television
is attached as Exhibit 41. Photographs of that Samsung Model 32Q50 Smart Television and its
packaging are included as Exhibits 42-43. On information and belief, that Samsung smart
television was made in Mexico. See Exh. 41. On information and belief, that Samsung smart
television was then imported into the United States and sold within the United States after
importation. That Samsung smart television and its packaging are available for inspection at
Ericsson’s counsel’s offices in Washington, D.C.
71. It is not practical for Ericsson to identify all of Samsung’s Accused Products sold
for importation into the United States, imported into the United States, and/or sold within the
United States after importation. Ericsson reserves its right to supplement its allegations, to amend
the Complaint and to add respondents in the future.
22
VII. UNLAWFUL AND UNFAIR ACTS OF PROPOSED RESPONDENT—PATENT INFRINGEMENT
72. Proposed Respondent Samsung has engaged in unfair trade practices, including the
sale for importation, importation, and sale within the United States after importation of certain
Accused Products that infringe the Asserted Claims of the Asserted Patents.
A. Infringement of the 7,151,430 Patent
73. On information and belief, the Accused Products that are sold for importation,
imported, and/or sold within the United States after importation by Samsung infringe claims 1-3,
6-8, 11, 13, 16-18, and 20-21 of the ’430 patent, either literally or under the doctrine of equivalents.
74. On information and belief, Samsung directly infringes one or more of the Asserted
Claims of the ’430 patent through its manufacture, sale for importation, importation, use, and sale
after importation of one or more Accused Products.
75. On information and belief, Samsung without authority makes, uses, sells, offers to
sell, and/or imports into the United States for subsequent sale or use products which are made by
a process patented in the United States covered by claims 11, 13, and 16-18 of the ’430 patent,
literally and/or under the doctrine of equivalents. Such devices include at least Samsung’s
smartphones and smart televisions.
76. On information and belief, Samsung imports the Accused Products as part of
Samsung’s knowing and intentional inducement of one or more persons in the United States,
including but not limited to Samsung employees who test and operate Accused Products at the
direction of Samsung, to directly infringe one or more claims of the ’430 patent by encouraging,
instructing, and aiding those persons to make, use (including testing those devices), sell, or offer
to sell one or more of the Accused Products in a manner that infringes the ’430 patent. On
information and belief, Samsung acted with intent to cause direct infringement of the ’430 patent
23
by its agents and employees, and by customers, users, and vendors of its Accused Products.
Specifically, Samsung had actual knowledge of the ’430 patent or was at least willfully blind as to
its existence, and also had actual knowledge or was at least willfully blind that its actions would
cause its agents, customers, users, and vendors to infringe, at least as a result of: (1) Samsung’s
agreement to a patent license with Ericsson prior to 2021 in order to practice the ’430 patent and
related patent applications (in other words, Samsung paid for the right to practice the patent); (2)
the parties’ patent licensing negotiations; (3) the filing of a district court action, Ericsson Inc. et
al. v. Samsung Electronics Col, Ltd. et al., No. 2:21-cv-1 (E.D. Tex.) on Jan. 1, 2021, that provided
Samsung with specific notice of infringement of the ’430 patent; and/or (4) the filing of this
Complaint accompanied by a claim chart setting forth how the Accused Products infringe an
asserted claim of the ’430 patent.
77. Claim charts that apply each of the asserted independent claims of the ’430 patent
to representative Accused Products are attached to this Complaint as Exhibit 9 and 20.4
B. Infringement of the 6,879,849 Patent
78. On information and belief, the Accused Products that are sold for importation,
imported, and/or sold within the United States after importation by Samsung infringe claims 1-2,
and 12-14 of the ’849 patent, either literally or under the doctrine of equivalents.
4 No part of the exemplary charts attached hereto construe, or are intended to construe, the specifications, file histories, or claims of the Asserted Patents. These exemplary charts do not limit, and are not intended to limit, Ericsson’s infringement positions or contentions. Ericsson specifically reserves the right to further investigate the specific hardware and software used in the Accused Products and supplement these charts to include additionally learned facts. The included charts are solely for the purpose of supporting Ericsson’s allegations against Samsung and establishing the likelihood of infringement by Samsung’s Accused Products. The charts should not be construed as providing any positions on claim construction, such as, for example, whether any preambles should be limiting.
24
79. On information and belief, Samsung directly infringes one or more of the Asserted
Claims of the ’849 patent through its manufacture, sale for importation, importation, use, and sale
after importation of one or more Accused Products.
80. On information and belief, Samsung without authority makes, uses, sells, offers to
sell, and/or imports into the United States for subsequent sale or use products which are made by
a process patented in the United States covered by claims 12-14 of the ’849 patent, literally and/or
under the doctrine of equivalents. Such devices are Samsung’s smartphones.
81. On information and belief, Samsung imports the Accused Products as part of
Samsung’s knowing and intentional inducement of one or more persons in the United States,
including but not limited to Samsung employees who test and operate Accused Products at the
direction of Samsung, to directly infringe one or more claims of the ’849 patent by encouraging,
instructing, and aiding those persons to make, use (including testing those devices), sell, or offer
to sell one or more of the Accused Products in a manner that infringes the ’849 patent. On
information and belief, Samsung acted with intent to cause direct infringement of the ’849 patent
by its agents and employees, and by customers, users, and vendors of its Accused Products.
Specifically, Samsung had actual knowledge of the ’849 patent or was at least willfully blind as to
its existence, and also had actual knowledge or was at least willfully blind that its actions would
cause its agents, customers, users, and vendors to infringe, at least as a result of: (1) Samsung’s
agreement to a patent licenses with Ericsson prior to 2021 in order to practice the ’849 patent and
related patent applications (in other words, Samsung paid for the right to practice the patent); (2)
the parties’ patent licensing negotiations; (3) the filing of a district court action, Ericsson Inc. et
al. v. Samsung Electronics Col, Ltd. et al., No. 2:21-cv-1 (E.D. Tex.) on Jan. 1, 2021, that provided
Samsung with specific notice of infringement of the ’849 patent; and/or (4) the filing of this
25
Complaint accompanied by a claim chart setting forth how the Accused Products infringe an
asserted claim of the ’849 patent.
82. A claim chart that applies each of the asserted independent claims of the ’849 patent
to a representative Accused Product is attached to this Complaint as Exhibit 10.
C. Infringement of the 7,286,823 Patent
83. On information and belief, the Accused Products that are sold for importation,
imported, and/or sold within the United States after importation by Samsung infringe claims 8-20
of the ’823 patent, either literally or under the doctrine of equivalents.
84. On information and belief, Samsung directly infringes one or more of the Asserted
Claims of the ’823 patent through its manufacture, sale for importation, importation, use, and sale
after importation of one or more Accused Products.
85. On information and belief, Samsung imports the Accused Products as part of
Samsung’s knowing and intentional inducement of one or more persons in the United States,
including but not limited to Samsung employees who test and operate Accused Products at the
direction of Samsung and cellular service providers, to directly infringe one or more claims of the
’823 patent by encouraging, instructing, and aiding those persons to make, use (including testing
those devices), sell, or offer to sell one or more of the Accused Products in a manner that infringes
the ’823 patent. On information and belief, Samsung acted with intent to cause direct infringement
of the ’823 patent by its agents and employees, and by customers, users, and vendors of its Accused
Products. Specifically, Samsung had actual knowledge of the ’823 patent or was at least willfully
blind as to its existence, and also had actual knowledge or was at least willfully blind as to the acts
that result in infringement at least as a result of (1) Samsung’s agreement to a patent license with
Ericsson prior to 2021 in order to practice the ’823 patent and related patent applications (in other
words, Samsung paid for the right to practice the patent); (2) the parties’ patent licensing
26
negotiations; (3) the filing of a district court action, Ericsson Inc. et al. v. Samsung Electronics
Col, Ltd. et al., No. 2:21-cv-1 (E.D. Tex.) on Jan. 1, 2021, that provided Samsung with specific
notice of infringement of the ’823 patent; and/or (4) the filing of this Complaint accompanied by
a claim chart setting forth how the Accused Products infringe the asserted independent claims of
the ’823 patent.
86. On information and belief, Samsung imports the Accused Products as part of
Samsung’s contributory infringement of one or more of the Asserted Claims of the ’823 patent by
offering to sell or selling and/or importing a patented component, constituting a material part of
the invention, knowing the same to be especially made or especially adapted for use in an
infringement and not a staple article or commodity of commerce suitable for substantial non-
infringing use.
87. A claim chart that applies each of the asserted independent claims of the ’823 patent
to a representative Accused Product is attached to this Complaint as Exhibit 11.
D. Infringement of the 9,313,178 Patent
88. On information and belief, the Accused Products that are sold for importation,
imported, and/or sold within the United States after importation by Samsung infringe claims 1-4,
7-10, and 16-19 of the ’178 patent, either literally or under the doctrine of equivalents.
89. On information and belief, Samsung directly infringes one or more of the Asserted
Claims of the ’178 patent through its manufacture, sale for importation, importation, use, and sale
after importation of one or more Accused Products.
90. On information and belief, Samsung imports the Accused Products as part of
Samsung’s knowing and intentional inducement of one or more persons in the United States,
including but not limited to Samsung employees who test and operate Accused Products at the
direction of Samsung and cellular service providers, to directly infringe one or more claims of the
27
’178 patent by encouraging, instructing, and aiding those persons to make, use (including testing
those devices), sell, or offer to sell one or more of the Accused Products in a manner that infringes
the ’178 patent. On information and belief, Samsung acted with intent to cause direct infringement
of the ’178 patent by its agents and employees, and by customers, users, and vendors of its Accused
Products. Specifically, Samsung had actual knowledge of the ’178 patent or was at least willfully
blind as to its existence, and also had actual knowledge or was at least willfully blind as to the acts
that result in infringement at least as a result of (1) the parties’ patent licensing negotiations; (2)
the filing of a district court action, Ericsson Inc. et al. v. Samsung Electronics Col, Ltd. et al., No.
2:21-cv-1 (E.D. Tex.) on Jan. 1, 2021, that provided Samsung with specific notice of infringement
of the ’178 patent; and/or (3) the filing of this Complaint accompanied by a claim chart setting
forth how the Accused Products infringe the asserted independent claims of the ’178 patent.
91. On information and belief, Samsung imports the Accused Products as part of
Samsung’s contributory infringement of one or more of the Asserted Claims of the ’178 patent by
offering to sell or selling and/or importing a patented component, constituting a material part of
the invention, knowing the same to be especially made or especially adapted for use in an
infringement and not a staple article or commodity of commerce suitable for substantial non-
infringing use.
92. Claim charts that apply each of the asserted independent claims of the ’178 patent
to a representative Accused Product are attached to this Complaint as Exhibits 12 and 17.
VIII. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS
93. On information and belief, the Accused Products are believed to fall within at least
the following Harmonized Tariff Schedule of the United States item number(s): 8517.12.00
(telephones for cellular networks or for other wireless networks); 8517.62.00 (machines for the
reception, conversion and transmission of voice, images or other data, including switching and
28
routing apparatus); 8471.49.0000 (automatic data processing machines and units thereof, other);
8471.30.01 (portable automatic data processing machines); and 8542.39.0000 (electronic
integrated circuits).
IX. RELATED LITIGATION
A. Litigation Related to the Asserted Patents
94. The ’430 patent and other Ericsson patents are the subject of actions Ericsson is
contemporaneously filing against Samsung in Belgium, The Netherlands and Germany.
95. The ’430 patent, the ’823 patent, the ’178 patent, and the ’849 patent are the subject
of a pending district court action, Ericsson Inc. et al. v. Samsung Electronics Col, Ltd. Et al., No.
2:21-cv-1 (E.D. Tex., filed Jan. 1, 2021).
96. The ’430 patent was previously the subject of a district court action, Ericsson Inc.
et al. v. Apple Inc., No. 15-cv-288 (E.D. Tex., filed Feb. 26, 2015). This action was settled on
December 15, 2015.
97. The ’823 patent was also asserted against Apple in a separate district court action,
Ericsson Inc. et al. v. Apple Inc., No. 15-cv-291 (E.D. Tex., filed Feb 26, 2015). This action, too,
was settled on December 15, 2015.
98. On information and belief and pursuant to Commission Rule 210.12(a)(5), there
has been no other court or agency litigations, including before the Commission, involving the
alleged unfair methods of competition and unfair acts, or the subject matter thereof, based on the
Asserted Patents.
B. Pertinent Litigation Between the Parties
99. On December 31, 2020, Ericsson filed an amended Complaint against Samsung in
the United States District Court for the Eastern District of Texas (Case No. 2:20-cv-00380-JRG),
alleging infringement of other Ericsson patents. In the same action, Ericsson has alleged breach
29
of contract based on Samsung’s IPR licensing declarations to ETSI and the ETSI IPR Policy, and
is seeking a declaratory judgment that Ericsson has not breached its FRAND commitments.
100. Samsung claims to have filed, on December 7, 2020, a civil complaint concerning
standard essential patents against Ericsson in The People’s Republic of China Wuhan Intermediate
People’s Court, Hubei Province. Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM
Ericsson, E 01 Zhi Min Chu No. 743 (2020).
101. On November 30, 2012, Ericsson filed a petition against Samsung with the
Commission. See Certain Wireless Standard Compliant Electronic Devices, Including Certain
Wireless Communication Devices, Tablet Computers, Media Players, and Televisions, and
Components Thereof, Inv. No. 337-TA-862. On February 18, 2014, that Investigation was
terminated based on a settlement agreement.
102. On December 21, 2012, Samsung filed a petition against Ericsson with the
Commission. See Certain Wireless Communications Equipment and Articles Therein, Inv. No.
337-TA-866. On March 14, 2014, that Investigation was terminated based on a settlement
agreement.
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X. THE DOMESTIC INDUSTRY
103. With respect to the Asserted Patents, a domestic industry in the United States exists
as defined by 19 U.S.C. § 1337(a)(3)(A)-(C), comprising significant investments in physical
operations, employment of labor and capital, and substantial exploitation of the Asserted Patents
through engineering, research and development, and licensing.
Asserted Patent Claims Practiced by Domestic Industry Products U.S. Patent No. 7,151,430 Ericsson Radio 2203 Products: 1-3, 6-7, 11, 13, 16-17, 20-21
LG Smartphone Products: 1-3, 5-6, 10-11, 13, 15-21
U.S. Patent No. 7,286,823 Licensee Smartphone and Entertainment Device Products: 8-20 U.S. Patent No. 9,313,178 Licensee Smartphone and Entertainment Device Products: 1-4,
7-10, 16-19 U.S. Patent No. 6,879,849 Licensee Smartphone Products: 1-2, 12-14
A. Ericsson’s Domestic Activities
104. Pursuant to Sections 337(a)(2) and (a)(3)(A)-(C), a domestic industry exists with
respect to articles protected by the Asserted Patents by virtue of Ericsson’s significant investments
in plant and equipment, significant employment of labor or capital, and substantial investments in
exploitation of the Asserted Patents through engineering and research and development.
Ericsson’s U.S. operations are managed from Ericsson, Inc.’s headquarters in Plano, Texas, and
Ericsson maintains various facilities throughout the country. Thousands of Ericsson employees
across the U.S. engage in a wide range of activities that result in the creation of functioning mobile
networks upon which millions of consumers in the U.S. rely. Ericsson engineers dedicate
substantial time to developing, building, and implementing the next generation of information,
communications, and telecommunications networks in the United States.
105. Ericsson Radio Systems (“ERSs”), including Ericsson’s Radio 2203, that are
protected by the ’430 patent are, inter alia, developed, assembled, configured, programmed, tested,
customized, installed, and maintained in the United States for which Ericsson has made significant
31
investments in plant and equipment. For example, Ericsson has made significant investments in
plant and equipment for its Radio Access Network (“RAN”) group in Parsippany, New Jersey;
Plano, Texas; Atlanta, Georgia; Chicago, Illinois; Pleasanton, California; Irvine, California;
Seattle, Washington; and Kansas City, Kansas. The RAN organization focuses on pre- and post-
deployment design, configuration, tuning, and optimization of RAN network elements, such as the
ERS series of base stations that include the Radio 2203 for smaller outdoor and indoor cells.
Further details of Ericsson’s investments are provided in Confidential Exhibit 44C, Declaration of
Paul Challoner.
106. Ericsson has made significant employment of labor or capital with respect to
articles protected by the ’430 patent. Ericsson employs thousands of people to develop, assemble,
build, configure, program, test, install, maintain, and support its ERS products, including Radio
2203 protected by the ’430 patent. Further details of Ericsson’s investment related to the
employment of labor or capital are provided in Confidential Exhibit 44C, Declaration of Paul
Challoner.
107. Ericsson has made substantial investments in the exploitation of the ’430 patent
through engineering and research and development at its research and engineering facilities in the
United States. Ericsson’s engineers devote substantial activities related to the engineering and/or
development of ERS products, including Radio 2203 protected by the ’430 patent. Further details
of Ericsson’s investments related to research and development are provided in Confidential Exhibit
44C of Paul Challoner.
108. Ericsson’s ERS products, including Radio 2203, practice the ’430 patent. Exhibit
13 is a domestic industry claim chart demonstrating that each limitation of a representative claim
32
of the ’430 patent is met by Ericsson’s ERS products developed, sold, and/or used in the United
States.5 See Exh. 13.
B. The Domestic Activities of Ericsson’s Licensees
109. Pursuant to Section 19 U.S.C. § 1337(a)(3)(A), (B), and/or (C), a domestic industry
exists by virtue of the activities of Ericsson’s licensees. On information and belief, Ericsson’s
licensees have made significant investments in plant and equipment and/or in the employment of
labor or capital, and/or have made substantial investments in the exploitation of the ’823, ’178,
and ’849 patents through engineering and research and development at their research and
engineering facilities in the United States. Exhibit 45 sets forth in detail the domestic industry
investments of an exemplary Ericsson licensee with respect to the ’823, ’178, and ’849 patents.
Confidential Exhibit 46C sets forth the domestic industry investments of another exemplary
Ericsson licensee with respect to the ’823 and ’178 patents. Exhibits 14-16, and 18-19, and
Confidential Exhibits 47C and 48C are domestic industry claim charts showing Ericsson’s
exemplary licensees’ products practice a representative claim of the ’849, ’823, and ’178, patents.
C. Ericsson’s Domestic Licensing Activities
1. Licensing Activities
110. Pursuant to Sections 337(a)(2) and (a)(3)(C), a domestic industry exists by virtue
of Ericsson’s substantial investments in the exploitation of the Asserted Patents through licensing.
5 No part of these exemplary charts construe, or are intended to construe, the specifications, file histories, or claims of the Asserted Patents. These exemplary charts do not limit, and are not intended to limit, Ericsson’s infringement positions or contentions. Ericsson specifically reserves the right to further investigate the specific hardware and software used in the domestic industry products and supplement these charts to include additionally learned facts. Further, Ericsson reserves the right to rely on other claims and/or products to establish the technical prong of the domestic industry requirement. The included charts are solely for the purpose of supporting Ericsson’s allegations against Samsung and establishing that the domestic industry products practice the asserted patents. The charts should not be construed as providing any positions on claim construction, such as, for example, whether any preambles should be limiting.
33
111. As set forth in Confidential Exhibit 49C, Declaration of Roy Maharaj, Ericsson Inc.
has made and continues to make a substantial domestic investment in licensing the Asserted
Patents. Ericsson’s United States employees have negotiated royalty-bearing licensing agreements
to the Asserted Patents, each of which has generated significant royalties in the amount set forth
in Confidential Exhibit 49C. Ericsson currently employs in the United States individuals on a full-
time basis who devote all or substantially all of their time to licensing Ericsson’s patents, including
the Asserted Patents. See Confidential Exh. 49C.
112. Ericsson’s domestic licensing investments include, for example, their substantial
investments on overhead, such as employee salaries and benefits, office space, office
communication equipment, and office furnishings and supplies, as well as their substantial
investments for travel to meet with potential licensees.
113. Ericsson has made and continues to make a substantial investment in the
exploitation of the Asserted Patents through its licensing activities in the United States. Further
details of Ericsson’s substantial investment in the exploitation of the Asserted Patents through its
licensing activities are provided in Confidential Exhibit 49C.
114. Ericsson makes substantial domestic investments in licensing its patent portfolio,
including the Asserted Patents, including patent portfolio analysis, monitoring the market,
financial and technical analysis, patent infringement analysis and documentation, and negotiations
with prospective licensees.
115. Ericsson has also made substantial domestic investments in licensing its patent
portfolio, including the Asserted Patents, through investments in patent enforcement litigation
involving unwilling licensees.
34
116. The success of Ericsson’s licensing business, as measured in the number of licenses
and resulting revenues and other benefits, has required substantial domestic investments and has
led to continued and even larger ongoing investments to establish an even more extensive domestic
licensing business involving Ericsson’s intellectual property, including the Asserted Patents. See
Confidential Exh. 49C.
117. Exhibits 13-16, 18-19, and 21-22, and Confidential Exhibits 47C and 48C, are
claim charts showing practice of each of the Asserted Patents.
2. Litigation Activities Related to Unwilling Licensees
118. In instances where companies use Ericsson’s patented technology but, after
appropriate notice, negotiations, and opportunities, are unwilling to enter into a license agreement,
Ericsson invests in patent enforcement litigation. In those patent enforcement proceedings,
Ericsson asserts representative patents from the applicable portfolios.
119. Information regarding Ericsson’s litigation activities related to its licensing efforts
is set forth in Confidential Exhibit 49C. In connection with such litigation, Ericsson has expended
substantial sums for legal fees and costs as described in Confidential Exhibit 49C. These domestic
litigation activities, which occurred in connection with the efforts of Ericsson to license its patents,
including the Asserted Patents, separately satisfy the requirements of 19 U.S.C. § 1337(a)(3)(C).
120. There is a nexus between Ericsson’s substantial investments and (i) the Asserted
Patents, (ii) the licensing of those Asserted Patents, and (iii) the United States.
121. In view of at least the foregoing, and pursuant to 19 U.S.C. § 1337(a)(3)(C), a
domestic industry exists by virtue of Ericsson’s substantial investments in litigation activities
related to its licensing efforts.
35
XI. RELIEF REQUESTED
122. WHEREFORE, by reason of the foregoing, Ericsson respectfully requests that the
United States International Trade Commission:
(a) Institute an immediate investigation, pursuant to Section 337 of the Tariff
Act of 1930, as amended, 19 U.S.C. §§ 1337(a)(1)(B)(i) and (b)(1), with
respect to violation of Section 337 by Proposed Respondent Samsung based
upon its sale for importation, importation, and/or sale after importation into
the United States of certain Accused Products and products containing same
that infringe one or more of the Asserted Claims of Ericsson’s United States
Patent Nos. 7,151,430; 6,879,849; 7,286,823; and 9,313,178;
(b) Schedule and conduct a hearing on said unlawful acts and, following said
hearing;
(c) Issue a permanent limited exclusion order specifically directed to Proposed
Respondent Samsung and its subsidiaries and affiliates, barring from entry
into the United States all Accused Products, that infringe one or more of the
Asserted Claims of Ericsson’s United States Patent Nos. 7,151,430;
6,879,849; 7,286,823; and 9,313,178;
(d) Issue a permanent cease and desist order, pursuant to 19 U.S.C. § 1337(f),
directing Proposed Respondent Samsung to cease and desist from selling
for importation into the United States, importing, selling after importation
into the United States, offering for sale, marketing, advertising,
demonstrating, sampling, warehousing inventory for distribution, offering
for sale, selling, distributing, licensing, testing, providing technical support,
use, or other related commercial activity involving imported Accused
36
Products that infringe one or more of the Asserted Claims of Ericsson’s
United States Patent Nos. 7,151,430; 6,879,849; 7,286,823; and 9,313,178;
(e) Impose a bond upon Samsung’s importation of the Accused Products that
infringe any claim of the Asserted Patents during the 60-day Presidential
review period pursuant to 19 U.S.C. §§ 1337(e) and (j) to prevent further
injury to Ericsson’s domestic industry relating to the Asserted Patents; and
(f) Grant such other and further relief as the Commission deems just and proper
based on the facts determined by the investigation and the authority of the
Commission.
Date: January 4, 2021 Respectfully submitted,
Tho~~ WINSTON & STRAWN LLP 1901 L Street, N .W. Washington, D.C. 20036 Telephone: (202) 282-5000 Facsimile: (202) 282-5100
Louis L. Campbell WINSTON & STRAWN LLP 275 Middlefield Road, Suite 205 Menlo Park, CA 94025 Telephone: (650) 858-6500 Facsimile: (650) 858-6550
Steven M. Anzalone Paul C. Goulet FISHERBROYLES, LLP 1200 G Street N.W., Suite 800 Washington, D.C. 20005 Telephone: (301) 968-0800
Michael M. Murray FISHERBROYLES, LLP 445 Park A venue, Ninth Floor New York, NY 10022 Telephone: (203) 542-5711
Counsel for Complainants Ericsson Inc., Telefonaktiebolaget LM Ericsson, and Ericsson AB
VERIFICATION OF COMPLAINT
I, Vernon E. Evans, Jr., declare, in accordance with 19 C.F.R. §§ 210.4 and 210.12(a),
under penalty of perjury, that the following statements are true:
1. I am a Director of Patent Assertion and Enforcement for Ericsson AB;
2. I am duly authorized to sign this Complaint on behalf of Complainants Ericsson Inc., Telefonaktiebolaget LM Ericsson, and Ericsson AB;
3. I have read the foregoing Complaint;
4. To the best of my knowledge, information, and belief, based on reasonable inquiry,
the foregoing Complaint is well-founded in fact and is warranted by existing law
or by a non-frivolous argument for the extension, modification, or reversal of
existing law or the establishment of new law;
5. The allegations and other factual contentions in the foregoing Complaint have
evidentiary support or are likely to have evidentiary support after a reasonable
opportunity for further investigation or discovery; and
6. The foregoing Complaint is not being filed for an improper purpose, such as to
harass or to cause unnecessary delay or needless increase in the cost of litigation.
Executed effective January 4, 2021
DocuSign Envelope ID: A3C9B3D6-7DCE-4B9E-AC54-936132ACE637