Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc
Authored by: Jeremy J. Gustrowsky
A recent Federal Circuit decision sheds light on when U.S. courts can stop companies from enforcing foreign patent injunctions in global disputes over standard-essential patents (SEPs – patents that protect technologies essential to technical standards). The case involved Ericsson and Lenovo, both of whom own patents essential to the 5G wireless standard and have committed to license these patents on fair, reasonable, and non-discriminatory (FRAND) terms. When negotiations over a global cross-license broke down, both companies launched lawsuits in the U.S. and abroad, with Ericsson securing injunctions against Lenovo in Colombia and Brazil.
Lenovo asked a U.S. district court to issue an “antisuit injunction”—an order preventing Ericsson from enforcing those foreign injunctions while the U.S. case was pending. The district court denied Lenovo’s request, reasoning that the U.S. case would not necessarily resolve the entire foreign proceedings, such as by forcing a global license agreement. However, the Federal Circuit disagreed, clarifying that the key question is whether the U.S. case could decide if Ericsson is allowed to seek foreign injunctions at all, based on its FRAND commitment.
The Federal Circuit held that a SEP holder like Ericsson cannot pursue injunctions on its SEPs unless it has first negotiated in good faith, as required by its FRAND commitment. If the U.S. court finds Ericsson did not negotiate in good faith, then it would be improper for Ericsson to enforce the foreign injunctions. This means the U.S. case is “dispositive”—it can determine whether the foreign injunctions should stand, even if it doesn’t resolve every issue in the foreign lawsuits.
The decision does not automatically grant Lenovo the antisuit injunction it wants, but it does send the case back to the district court to consider the remaining factors, such as fairness and international comity. This ruling provides important guidance for companies involved in global SEP disputes, emphasizing that U.S. courts can intervene to prevent enforcement of foreign injunctions when a FRAND commitment is at stake and good-faith negotiations have not occurred.