TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson

 
APPEAL NO.
18-1363
OP. BELOW
DCT
SUBJECT
Patent
AUTHOR
Chen

Issue(s) Presented

1. “Whether the district court erred in denying Ericsson a jury trial in a declaratory-judgment suit that anticipated, and shared issues with, Ericsson’s patent-infringement suit.”

2. “Whether the district court erred in determining the reasonableness of royalty rates by counting numbers of patent families—using an unreliable methodology—instead of examining the value the patents add.”

3. “Whether the district court failed to properly analyze comparable licenses by disregarding settled royalty principles and the structure of Ericsson’s licenses and license offers.”

Holding

1. “Because we conclude that the release payment is in substance compensatory relief for TCL’s past wrongs (i.e., practicing Ericsson’s patented technologies without a license), we hold that the district court deprived Ericsson of its constitutional right to a jury trial on that legal relief by requiring that Ericsson adjudicate that relief in a bench trial.”

2. “In light of our disposition vacating the district court’s FRAND analysis and remanding for the jury to decide in the first instance, we do not address Ericsson’s other challenges to the district court’s opinion.”

3. “In light of our disposition vacating the district court’s FRAND analysis and remanding for the jury to decide in the first instance, we do not address Ericsson’s other challenges to the district court’s opinion.”

Date
Selected Proceedings and Orders
August 7, 2019
December 5, 2019