Telefonaktiebolaget Lm Ericsson v. Lenovo (united States), Inc., Motorola Mobility LLC

United States Court of Appeals
for the Federal Circuit
______________________
TELEFONAKTIEBOLAGET LM ERICSSON,
Plaintiff/Counterclaim Defendant-Appellee
ERICSSON AB, ERICSSON, INC.,
Counterclaim Defendants-Appellees
v.
LENOVO (UNITED STATES), INC., MOTOROLA
MOBILITY LLC,
Defendants/Counter-Claimants-Appellants
LENOVO (SHANGHAI) ELECTRONICS
TECHNOLOGY CO. LTD., LENOVO BEIJING, LTD.,
LENOVO GROUP LIMITED, MOTOROLA (WUHAN)
MOBILITY TECHNOLOGIES COMMUNICATION
CO., LTD.,
Defendants
______________________
2024-1515
______________________
Appeal from the United States District Court for the
Eastern District of North Carolina in No. 5:23-cv-00569-
BO-RJ, Judge Terrence William Boyle.
______________________
Decided: October 24, 2024
______________________
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TELEFONAKTIEBOLAGET LM ERICSSON v.
LENOVO (UNITED STATES), INC.
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JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, argued for plaintiff/counterclaim defendant-appellee
and counterclaim defendants-appellees. Also represented
by KAYVON GHAYOUMI, RAYINER HASHEM, CALEB HAYES-
DEATS, LUCAS M. WALKER; CATHERINE MARTINEZ, New
York, NY; BLAKE H. BAILEY, McKool Smith, P.C., Houston,
TX; ALEXANDER JEFFERSON CHERN, NICHOLAS M.
MATHEWS, Dallas, TX; THEODORE STEVENSON, III, Alston &
Bird LLP, Dallas, TX.
JOHN C. O’QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for defendants/counter-claimants-appellants.
Also represented by WILLIAM H. BURGESS, LUCAS HENRY
FUNK, DIVA R. HOLLIS, CHRISTOPHER MIZZO, JASON M.
WILCOX; GREG AROVAS, LESLIE M. SCHMIDT, New York, NY.
______________________
Before LOURIE, PROST, and REYNA, Circuit Judges.
PROST, Circuit Judge.
Lenovo asked the U.S. District Court for the Eastern
District of North Carolina to issue an antisuit injunction
prohibiting Ericsson from, among other things, enforcing
injunctions that Ericsson had obtained in Colombia and
Brazil.1 The district court denied Lenovo’s request, and
Lenovo appeals. We vacate the district court’s denial and
remand.
1 For simplicity’s sake, “Lenovo” refers, collectively
or individually, to appellants Lenovo (United States), Inc.,
Motorola Mobility LLC, and any relevant subsidiaries or
affiliates thereof; “Ericsson” refers, collectively or
individually, to appellees Telefonaktiebolaget LM Ericsson,
Ericsson AB, and Ericsson, Inc.; and, unless context
indicates otherwise, the “parties” refer to Lenovo and
Ericsson.
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TELEFONAKTIEBOLAGET LM ERICSSON v.
LENOVO (UNITED STATES), INC.
3
BACKGROUND
I
This dispute concerns the 5G wireless-communication
standard developed by the European Telecommunications
Standards Institute (“ETSI”)2—and, particularly, patents
declared to be essential to complying with that standard
(standard-essential patents or “SEPs”).
ETSI develops technical standards that ensure
interoperability among different companies’ products.
Because SEPs, by definition, must be practiced in order to
comply with a given standard, SEP holders “wield
significant power over [standard] implementers during
licensing negotiations.” TCL Commc’n Tech. Holdings Ltd.
v. Telefonaktiebolaget LM Ericsson, 943 F.3d 1360, 1364
(Fed. Cir. 2019); see also Ericsson, Inc. v. D-Link Sys., Inc.,
773 F.3d 1201, 1209 (Fed. Cir. 2014) (observing that SEP
holders could potentially “inhibit widespread adoption of
[a] standard” by “demand[ing] excessive royalties after
companies are locked into using [the] standard”).
To address SEP-related concerns, ETSI has an
Intellectual Property Rights (“IPR”) policy under which
SEP holders declare that they are “prepared to grant
irrevocable licen[s]es” to their SEPs on “fair, reasonable[,]
and non-discriminatory (‘FRAND’) terms and conditions.”
J.A. 2137–38 (quoting ETSI IPR policy cl. 6.1); J.A. 1009–
10 (same). The parties refer to this declaration as a
“FRAND commitment,” and we do the same. Lenovo and
Ericsson are both ETSI members, and both have made a
2 More specifically, development of the 5G standard
occurred through ETSI’s participation in the Third
Generation Partnership Project.
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TELEFONAKTIEBOLAGET LM ERICSSON v.
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FRAND commitment.3 The parties agree that the FRAND
commitment is a contract, governed by French law, that
they can enforce against the other. They also agree that
the FRAND commitment includes an obligation to
negotiate in good faith over licenses to SEPs.4
II
Lenovo and Ericsson have, for some time now,
attempted to agree on a global cross-license to SEPs of the
other, which would include Ericsson’s 5G SEPs.5 With an
agreement remaining out of reach, they took legal action—
both here and abroad.
On October 11, 2023, Ericsson made what it calls a
“final licensing offer” to Lenovo and, that same day, filed
the instant suit against Lenovo. Appellee’s Br. 11.
Ericsson’s complaint alleges that Lenovo infringed four of
Ericsson’s U.S. 5G SEPs and breached its FRAND
commitment at least by failing to negotiate in good faith.
The complaint also seeks a declaration that Ericsson has
complied with its FRAND commitment regarding its offer
to Lenovo. And, if Ericsson’s offer is found to be
inconsistent with its FRAND commitment, the complaint
3 A FRAND commitment “may be made subject to
the condition that those who seek licen[s]es agree to
reciprocate.” See J.A. 2137 (quoting ETSI IPR policy
cl. 6.1). The parties represent that their respective
FRAND commitments are conditioned on such reciprocity.
See J.A. 2138 (Lenovo); J.A. 1010 (Ericsson).
4 At least one way an SEP holder can satisfy this
good-faith-negotiating obligation is by making an offer at a
rate that is actually FRAND. In other words, if an SEP
holder has already made such an offer, this “negotiating”
obligation requires no more of the SEP holder.
5 In referring to a party’s SEPs, we assume that they
are subject to the FRAND commitment but express no
opinion on whether they are, in fact, standard-essential.
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TELEFONAKTIEBOLAGET LM ERICSSON v.
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asks the district court to determine a FRAND rate for a
global cross-license between the parties.
Two days later, on October 13, 2023, Lenovo sued
Ericsson in the United Kingdom, asking the court there to
determine FRAND terms for a global cross-license between
the parties. Lenovo would later, on December 15, 2023, ask
that court for an injunction prohibiting Ericsson from
infringing one of Lenovo’s U.K. 5G SEPs.
Ericsson, for its part, initiated proceedings against
Lenovo in Colombia and Brazil on November 20 and 21,
2023, respectively. Ericsson alleged that Lenovo infringed
its Colombian and Brazilian 5G SEPs, and it sought a
preliminary injunction in each country prohibiting
infringement of those respective patents. It secured
injunctions in both countries—in Brazil on November 27,
2023, and in Colombia on December 13, 2023.
On December 14, 2023—after the Colombian and
Brazilian injunctions against Lenovo were entered—
Lenovo asserted counterclaims in the district-court suit.
Lenovo’s amended counterclaims, filed the next day,
roughly mirror the claims in Ericsson’s complaint; they
allege that Ericsson infringed four of Lenovo’s U.S. 5G
SEPs and breached its FRAND commitment at least by
failing to negotiate in good faith. The counterclaims also
seek a “judicial declaration that sets the FRAND terms and
conditions for a global patent cross-license” between the
parties. J.A. 2154.
III
On December 29, 2023, Lenovo moved the district court
to enter an antisuit injunction prohibiting Ericsson from,
among other things, enforcing its Colombian and Brazilian
injunctions.
The district court, in denying Lenovo’s motion, began
by setting forth the three-part analytical framework—
drawn largely from the Ninth Circuit’s opinion in Microsoft
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TELEFONAKTIEBOLAGET LM ERICSSON v.
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Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012)—that
it would apply to Lenovo’s foreign antisuit-injunction
request. Under this framework, there is a first, “threshold”
requirement: the parties and issues must be the same in
both the domestic and foreign suits, and the domestic suit
must be dispositive of the foreign action to be enjoined. See
Telefonaktiebolaget LM Ericsson v. Lenovo (United States),
Inc., No. 5:23-cv-569, 2024 WL 645319, at *6 (E.D.N.C. Feb.
14, 2024) (“District Court Opinion”) (citing Microsoft, 696
F.3d at 882). Second, the domestic court considers whether
at least one of the antisuit-injunction factors applies,
including “whether the foreign litigation would
(1) frustrate a policy of the forum issuing the [antisuit]
injunction; (2) be vexatious or oppressive; (3) threaten the
issuing court’s in rem or quasi in rem jurisdiction; or
(4) where the proceedings prejudice other equitable
consideration[s].” See id. (citing Microsoft, 696 F.3d at
882). Third, the domestic court considers the antisuit
injunction’s impact on comity. See id.
The district court concluded that the instant suit was
not dispositive of the foreign action, and it therefore denied
the requested antisuit injunction without reaching the
second and third parts of the analysis.6 In part because of
how it understood Microsoft, the court reasoned that, to be
dispositive, the domestic suit would have to result in a
global cross-license between the parties. See id. at *8–9.
In the court’s view, however, the instant suit would not
necessarily lead to this result. For example, although
Ericsson had asked the district court to set a FRAND rate
for a global cross-license, that request was contingent upon
Ericsson’s offer being found inconsistent with its FRAND
commitment in the first place. So, the court reasoned, if it
6 The district court also determined that the parties
in the domestic and foreign suits are the same for purposes
of the antisuit-injunction analysis. Id. at *7. That
determination is undisputed in this appeal.
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TELEFONAKTIEBOLAGET LM ERICSSON v.
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determined that Ericsson’s offer was consistent with its
FRAND commitment, then the court would have no
occasion to resolve Ericsson’s request to set a rate for a
global cross-license. See id. at *8. Further, the court noted,
Lenovo had not stipulated to agree to Ericsson’s offer even
if the offer was determined to be consistent with Ericsson’s
FRAND commitment. See id. As to Lenovo’s counterclaim
seeking a declaration of a FRAND rate for a global cross-
license, while the court acknowledged it—and even seemed
to characterize it as not contingent—the court nonetheless
maintained its conclusion that the instant suit would not
necessarily lead to a global cross-license between the
parties. See id.
Lenovo timely appealed the district court’s denial of its
motion for an antisuit injunction. We have jurisdiction
under 28 U.S.C. § 1292(c)(1).
DISCUSSION
I
We review a district court’s decision on whether to issue
an antisuit injunction under the regional circuit’s law.
Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., 716
F.3d 586, 590–91 (Fed. Cir. 2013). The Fourth Circuit
reviews such decisions for abuse of discretion. See BAE
Sys. Tech. Sol. & Servs., Inc. v. Republic of Korea’s Def.
Acquisition Program Admin., 884 F.3d 463, 479 (4th Cir.
2018) (citing Lone Star Steakhouse & Saloon, Inc. v. Alpha
of Va., Inc., 43 F.3d 922, 939 (4th Cir. 1995)); see also
Pendleton v. Jividen, 96 F.4th 652, 656 (4th Cir. 2024)
(preliminary and permanent injunctive relief generally).
“A ruling that rests on an error of law is necessarily an
abuse of discretion.” Pendleton, 96 F.4th at 656.
Courts that have analyzed foreign-antisuit-injunction
requests have used—at least in substance—the general
framework as articulated in the Ninth Circuit’s Microsoft
opinion. See, e.g., 1st Source Bank v. Neto, 861 F.3d 607,
613 (7th Cir. 2017); Paramedics Electromedicina
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TELEFONAKTIEBOLAGET LM ERICSSON v.
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Comercial, Ltda. v. GE Med. Sys. Info. Techs., Inc., 369 F.3d
645, 652, 654–55 (2d Cir. 2004). This is what the parties
agreed that the district court should use, and what the
district court did in fact use. Again, this framework has
three parts: first, a threshold requirement that the parties
and issues be the same as between the domestic and
foreign suits, and that the domestic suit be “dispositive of
the [foreign] action to be enjoined”; second, consideration of
whether one of the antisuit-injunction factors applies,
including “whether the foreign litigation would
(1) frustrate a policy of the forum issuing the [antisuit]
injunction; (2) be vexatious or oppressive; (3) threaten the
issuing court’s in rem or quasi in rem jurisdiction; or
(4) where the proceedings prejudice other equitable
considerations”; and third, consideration of “whether the
[antisuit] injunction’s impact on comity is tolerable.”
Microsoft, 696 F.3d at 881–82 (cleaned up).7
Our analysis, therefore, uses the framework set forth
in Microsoft—though, again, we will resolve only the first,
threshold requirement in that framework. And, to the
7 Although the Fourth Circuit has not explicitly set
forth the precise framework it would use to analyze a
foreign-antisuit-injunction request, cf. BAE, 884 F.3d at
479, for reasons the Fourth Circuit has noted, any
difference in competing frameworks is immaterial for
purposes of this appeal. That is because: (1) the primary
difference among them concerns the weight given to comity,
id.—a part of the analysis that the district court deemed
unnecessary to resolve, and which we likewise do not
resolve; and (2) the various frameworks require, as a
threshold matter, that the parties and issues be the same
as between the domestic and foreign suits, id. at 479 n.15—
a requirement that contemplates whether the domestic
suit is “dispositive” of the foreign action, see, e.g., Sanofi,
716 F.3d at 591, and which is the only part of the overall
analysis we resolve in this appeal.
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extent that courts differ in their application of this
threshold requirement, absent more specific guidance from
the Fourth Circuit, we are guided (in this appeal) in large
part by Microsoft itself, which involved similar facts and
issues—namely: SEPs, a commitment like the FRAND
commitment here, and a foreign SEP-based injunction.
II
The key dispute here is whether the instant suit is
dispositive of the Colombian and Brazilian actions to be
enjoined.
Lenovo says that it is. Specifically, Lenovo maintains
that Ericsson’s FRAND commitment precludes Ericsson
from pursuing SEP-based injunctive relief unless it has
first complied with the commitment’s obligation to
negotiate in good faith over a license to those SEPs.
Therefore, the argument goes, whether Ericsson has
complied with that obligation—an issue before the district
court—is dispositive of Ericsson’s ability to pursue its
Colombian and Brazilian injunctions. See, e.g., Appellant’s
Br. 29–30.
For the reasons below, we agree with Lenovo and
conclude that the “dispositive” requirement is met here.
Because Microsoft is central to that conclusion, we begin by
recounting that case. We then address, in view of
Microsoft, the parties’ competing positions and the district
court’s reasoning. We finally confirm why the “dispositive”
requirement is met here, which necessitates vacating the
district court’s denial and remanding, given that its denial
rested solely on a contrary conclusion.
A
In Microsoft, an SEP holder (Motorola) had made a
commitment similar to the ETSI FRAND commitment
here. See Microsoft Corp. v. Motorola, Inc., 871 F. Supp. 2d
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1089, 1093–94 (W.D. Wash. 2012).8 After Motorola offered
to license its SEPs to Microsoft on certain terms, Microsoft
sued Motorola in district court, alleging that Motorola had
breached its commitment by proposing unreasonable
terms. Microsoft also sought a declaration of entitlement
to a license to Motorola’s SEPs on RAND terms. Id. at
1094–95, 1099 n.12.
More than six months after Microsoft’s initial
complaint against Motorola, Motorola initiated a separate
proceeding in Germany. In the German proceeding,
Motorola alleged that Microsoft infringed two of Motorola’s
European SEPs, and it sought an injunction prohibiting
infringement of those patents. Id. at 1096 & n.8. In
advance of the German court’s anticipated decision,
Microsoft moved the district court for an antisuit
injunction “only to enjoin[] Motorola from enforcing any
injunctive relief it may receive” in the German proceeding
as to the SEPs at issue. Id. at 1096.
The district court granted Microsoft’s motion and
issued the requested antisuit injunction. The court had
already decided that Motorola’s RAND commitment was a
contract enforceable by Microsoft. Id. at 1098. It also noted
that Microsoft (through a separate motion) had “squarely
placed before th[e] court the issue of whether injunctive
relief is an appropriate remedy for infringement” of
Motorola’s SEPs. Id. at 1099. In analyzing the
“dispositive” requirement, the court observed that
at the conclusion of this matter, the court will have
determined (1) whether Microsoft is entitled to a
worldwide RAND license for Motorola’s
[SEPs] . . . , (2) whether Microsoft has repudiated
its rights to such a license, (3) whether Motorola
8 The district court’s and Ninth Circuit’s opinions in
Microsoft referred to the commitment with the acronym
“RAND” (reasonable and non-discriminatory).
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may seek injunctive relief against Microsoft with
respect to its [SEPs], and (4) in the event Microsoft
is entitled to such a license, what the RAND terms
are for such a license.
Id. (emphasis added). The court then concluded: “Based on
the issues before it, . . . this [suit] is dispositive of whether
a German court may issue an injunction against Microsoft
for infringement of the European [SEPs].” Id. at 1099–
1100; see also id. at 1100 (reiterating, in the next sentence,
that “[i]ssuance of injunctive relief with respect to the
European [SEPs] is an issue squarely before this court”). It
further specified that its antisuit injunction would be
“limited to enjoining Motorola from enforcing any
injunctive relief that it may receive” in the German
proceeding as to the SEPs at issue; it would “in no way
enjoin[] Motorola from pursuing the German [proceeding]
and receiving monetary damages (or any other non-
injunctive relief)” or “prohibit[] further proceedings in
Germany.” Id. at 1100.9
On appeal, the Ninth Circuit affirmed the antisuit
injunction. As to the “dispositive” requirement, the court
affirmed the district court’s determination that the
contract issues before the district court “could resolve the
German patent claims.” See Microsoft, 696 F.3d at 883.
Specifically, the court saw no legal error in “[t]he district
court’s conclusions that Motorola’s RAND [commitment]
. . . governs in some way what actions Motorola may take
to enforce its [SEPs].” Id. at 884. The court, elaborating
on the RAND commitment at issue, opined that “[i]mplicit
in such a sweeping promise is, at least arguably, a
9 Although the district court made these statements
with reference to a temporary restraining order (“TRO”) it
had previously entered, id., because the court converted its
TRO into its ultimate antisuit injunction, id. at 1103–04,
the statements apply equally to that injunction.
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guarantee that the patent-holder will not take steps to
keep would-be users from using the patented material,
such as seeking an injunction, but will instead proffer
licenses consistent with the commitment made.” Id.
Ultimately, on the “dispositive” requirement, the Ninth
Circuit concluded that “the district court did not abuse its
discretion in determining that Microsoft’s contract-based
claims, including its claim that the RAND commitment
precludes injunctive relief, would, if decided in favor of
Microsoft, determine the propriety of the enforcement by
Motorola of the injunctive relief obtained in Germany.” Id.
at 885. And, like the district court, the court specified that
the antisuit injunction “le[ft] Motorola free to continue
litigating its German patent claims against Microsoft as to
damages or other non-injunctive remedies to which it may
be entitled. Indeed, depending on the outcome of the
district court litigation, Motorola may well ultimately be
able to enforce the German injunction too.” Id. at 889.
B
With Microsoft in mind, we turn now to the parties’
positions and the district court’s reasoning on the
“dispositive” requirement.
Lenovo maintains that Ericsson’s FRAND commitment
precludes Ericsson from pursuing SEP-based injunctive
relief unless it has first complied with the commitment’s
obligation to negotiate in good faith over a license to those
SEPs. Thus, in Lenovo’s view, the “dispositive”
requirement is met, because whether Ericsson has
complied with its good-faith-negotiating obligation is an
issue that (1) is before the district court—both via
Ericsson’s claims and Lenovo’s counterclaims; and (2) will,
if decided in Lenovo’s favor (i.e., that Ericsson has not so
complied), dictate the impropriety of Ericsson’s pursuing
SEP-based injunctive relief. See, e.g., Appellant’s Br. 29–
30.
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Initially, Ericsson argues that Lenovo waived (or
forfeited) this particular position on the “dispositive”
requirement by not raising it before the district court. See
Appellee’s Br. 31–33. Ericsson says that the only basis
Lenovo gave the court for meeting that requirement was
that the instant suit would necessarily result in a global
cross-license between the parties. See id. We disagree. In
Lenovo’s motion for an antisuit injunction, it argued both
that (1) “Ericsson has placed its compliance with [its
FRAND] commitments, and thus, its ability to seek
injunctive relief based on patents subject to those
commitments, squarely before th[e] court”; and
(2) “[m]oreover, both parties acknowledge that the outcome
of this contractual dispute will be the payment of money,
thus mooting any basis for injunctive relief.” J.A. 2435
(emphasis added) (cleaned up); see J.A. 2436 (similar).
Lenovo’s reply also disputed “that the only way for [it] to
dispose of foreign patent infringement actions is to sign a
license.” J.A. 3170 (cleaned up).10 We therefore reject
Ericsson’s waiver argument.
On the merits, Ericsson maintains that the district
court correctly concluded that, to meet the “dispositive”
requirement, the instant suit must necessarily result in a
global cross-license between the parties. Ericsson’s
position appears to rely on two main arguments—the first
implicit, the second explicit. The first is that, in order to
10 Further, in both district-court briefs, Lenovo relied
on the Huawei case, which concluded that, because “the
availability of injunctive relief for each party’s SEPs
depends on the breach of contract claims,” “the contractual
umbrella over the patent claims dictates” that the
“dispositive” requirement was met. See Huawei Techs. Co.
v. Samsung Elecs. Co., No. 3:16-cv-2787, 2018 WL 1784065,
at *8 (N.D. Cal. Apr. 13, 2018) (Orrick, J.) (cleaned up)
(quoted at J.A. 2436–37); see also J.A. 3170 (citing Huawei,
2018 WL 1784065, at *6–9).
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meet the “dispositive” requirement, it is necessary for the
domestic suit to resolve the entire foreign proceeding—not
simply an injunction in that proceeding. See Appellee’s Br.
28, 36–37. The second is that the domestic suit must
necessarily—not just potentially—lead to the relevant
resolution of the foreign action to be enjoined. Put another
way: in Ericsson’s view, this resolution cannot depend
merely on the potential that one party’s view of the facts or
law prevails in the domestic suit. See id. at 34–35.
Ericsson’s and the district court’s interpretation of
what it takes to meet the “dispositive” requirement rests
on a misunderstanding of Microsoft. They both maintain
that, in Microsoft, “it was critical that licenses would
ultimately issue.” Id. at 36 (emphasis added); see District
Court Opinion, 2024 WL 645319, at *8 (“The meaningful
distinction [from Microsoft] is that holding the parties to
their obligations in the ETSI [IPR] policy will not
necessarily result in a global cross-license that resolves the
foreign patent actions.”).
Yet we see nothing in the Microsoft district-court
opinion that treated as “critical” the fact that the suit
before it would result in a license. To be sure, the court
articulated the issues that it “will have determined” at the
conclusion of the suit before it, which included both
“whether Motorola may seek injunctive relief against
Microsoft with respect to its [SEPs]” and “in the event
Microsoft is entitled to a [worldwide RAND] license, what
the RAND terms are for such a license.” Microsoft, 871 F.
Supp. 2d at 1099. It then stated that, “[b]ased on the issues
before it,” the domestic suit met the “dispositive”
requirement. Id. at 1099–1100. So, these passages
standing alone are perhaps ambiguous as to which of the
issues was central to the court’s “dispositive” conclusion.
Other portions of the opinion, however, make clear that it
was the injunction-availability issue—not the “will result
in a license” one—that mattered to that conclusion. For
example, in the very next sentence, the court reiterated
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that “[i]ssuance of injunctive relief with respect to the
European [SEPs] is an issue squarely before this court.” Id.
at 1100. And it later confirmed that its antisuit injunction
was “limited to the issue directly before it—whether
injunctive relief was permissible”; indeed, Motorola was
permitted to move forward with the rest of the German
proceeding. Id. (emphasis added).11 In contrast, the court
gave relatively little attention to the fact that the suit
before it would result in a license.
The same is true of the Ninth Circuit’s affirmance in
Microsoft. That court’s discussion of the “dispositive”
requirement focused on how Motorola’s RAND
commitment affected its ability to seek SEP-based
injunctive relief. See 696 F.3d at 884 (seeing no legal error
in “[t]he district court’s conclusions that Motorola’s RAND
[commitment] . . . governs in some way what actions
Motorola may take to enforce its [SEPs]”); see also id.
(“Implicit in such a sweeping promise is, at least arguably,
a guarantee that the patent-holder will not . . . seek[] an
injunction, but will instead proffer licenses consistent with
11 The remainder of the district court’s analysis
likewise focused on the injunction-availability issue. See
id. (expressing a concern over inconsistent judgments as to
that issue); id. at 1101 (reasoning that “an anti-suit
injunction implicates comity only so far as necessary to
preserve this court’s ability to adjudicate the duplicative
dispute over the propriety of injunctive relief” and that,
“upon adjudication of the duplicative issue, [it] will remove
the anti-suit injunction and the parties will follow [its]
determination of the parties’ rights and obligations”
regarding Motorola’s RAND commitment and SEPs
(emphasis added)); id. at 1103 (“By issuance of an anti-suit
injunction, this court is in no way stating that Motorola will
not at some later date receive injunctive relief, but only
that it must wait until this court has had the opportunity
to adjudicate that issue.” (emphasis added)).
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the commitment made.”). And it ultimately concluded, on
the “dispositive” requirement, that “the district court did
not abuse its discretion in determining that Microsoft’s
contract-based claims, including its claim that the RAND
commitment precludes injunctive relief, would, if decided in
favor of Microsoft, determine the propriety of the
enforcement by Motorola of the injunctive relief obtained in
Germany.” Id. at 885 (emphasis added). We see nothing—
and Ericsson identifies nothing—in the court’s opinion
suggesting that its affirmance depended on the domestic
suit resulting in a license.
With this misunderstanding corrected, Microsoft leads
us to reject Ericsson’s arguments regarding what it takes
to meet the “dispositive” requirement. As to Ericsson’s
argument that the domestic suit should resolve not just an
injunction, but instead the entire foreign proceeding (e.g.,
by resulting in a license), that was not necessary in
Microsoft. As discussed above, there was no indication in
either Microsoft opinion that the conclusion on the
“dispositive” requirement depended on the domestic suit
resulting in a license. In fact, Motorola was permitted to
move forward with the rest of the foreign proceeding while
the antisuit injunction was in place—an incongruous result
if what really mattered was that the domestic suit was
going to settle the patent war once and for all (e.g., by
resulting in a license). And, as to Ericsson’s argument that
the relevant foreign-action resolution cannot depend
merely on the potential that one party’s view of the facts or
law prevails in the domestic suit, Microsoft again instructs
otherwise. The Ninth Circuit was clear on this point; it
concluded that “the district court did not abuse its
discretion in determining that Microsoft’s . . . claim that
the RAND commitment precludes injunctive relief[] would,
if decided in favor of Microsoft, determine the propriety of
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the enforcement by Motorola of the injunctive relief
obtained in Germany.” Id. (emphasis added).12
Although the guidance we draw from Microsoft suffices
to reject Ericsson’s arguments, we note that these
arguments are inconsistent with other precedent as well.
For example, in Medtronic (cited favorably in the Ninth
Circuit’s Microsoft opinion), Medtronic sought an antisuit
injunction prohibiting a company called CRC from seeking
foreign injunctions on its foreign patents. See Medtronic,
Inc. v. Catalyst Rsch. Corp., 518 F. Supp. 946, 947–48, 953–
55 (D. Minn. 1981). Medtronic’s position was that a
contract between it and CRC prevented CRC from
enforcing its patents in that way. The district court
determined that this breach-of-contract issue was
“dispositive” for purposes of an antisuit-injunction inquiry:
“[I]f the [contract] is found to bar CRC from seeking
injunctive relief, CRC’s foreign requests for injunctive
relief are improper and they can be enjoined. The issue is
the same and resolution of the issue would be dispositive of
the foreign requests for injunctive relief.” Id. at 955
(cleaned up). Further, the antisuit injunction that the
court entered was limited to “prevent[ing] CRC from
obtaining injunctive relief”; it “in no way interfere[d] with
12 Ericsson also makes much of its view that, in
Microsoft (and unlike here), the injunction-availability
issue concerned whether SEP-based injunctions could ever
be appropriate in the RAND/FRAND context. See
Appellee’s Br. 37, 41–42. Even assuming Ericsson is right
about that, it would be a distinction without a difference
for purposes of rejecting Ericsson’s arguments about what
it takes to meet the “dispositive” requirement. The
relevant similarity between Microsoft and this case would
remain: an issue in the domestic suit that, if resolved in the
antisuit-injunction movant’s favor, would dictate the
impropriety of a party pursuing SEP-based injunctive
relief.
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the patent infringement and validity actions in the foreign
courts, nor . . . with any damages awards.” Id. at 955–56.
More recently, the district court in Huawei entered an
antisuit injunction prohibiting enforcement of foreign
injunctions on foreign SEPs. There, the parties (Samsung
and Huawei) had both made FRAND commitments under
ETSI’s IPR policy. See Huawei, 2018 WL 1784065, at *1.
Samsung sought an antisuit injunction prohibiting Huawei
from enforcing foreign injunctions that Huawei had
obtained on its foreign SEPs. The court determined that
the “dispositive” requirement was met because both parties
had presented it with a breach-of-contract claim “based on
the other’s alleged failure to abide by its commitments to
ETSI,” and “the availability of injunctive relief for each
party’s SEPs depend[ed] on” the breach-of-contract claims.
Id. at *8. Further, the court’s antisuit injunction was
limited; it prohibited Huawei only from enforcing the
foreign injunctions (Huawei could still pursue damages),
and it was entered to give the court “an opportunity to
evaluate the propriety of injunctive relief for the parties’
SEPs.” See id. at *12; see also id. at *10.
Accordingly, the district court legally erred when it
reasoned that, to be dispositive, the domestic suit must
necessarily result in a global cross-license. We conclude
that the “dispositive” requirement can be met even though
a foreign antisuit injunction would resolve only a foreign
injunction (and not the entire foreign proceeding), and even
though the relevant resolution depends on the potential
that one party’s view of the facts or law prevails in the
domestic suit.
C
We now consider whether the “dispositive”
requirement is met in this case. We conclude that it is.
Again, Lenovo maintains that Ericsson’s FRAND
commitment precludes Ericsson from pursuing SEP-based
injunctive relief unless it has first complied with the
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commitment’s obligation to negotiate in good faith over a
license to those SEPs. If Lenovo is correct on this contract-
interpretation issue, then the suit before the district court
would meet the “dispositive” requirement, since whether
Ericsson has complied with its good-faith-negotiating
obligation is an issue before the district court. For the
reasons below, we conclude that Lenovo is correct on this
contract-interpretation issue.
Although the district court did not reach this contract-
interpretation issue, “[t]he matter of what questions may
be taken up and resolved for the first time on appeal is one
left primarily to the discretion of the courts of appeals.”
Arakas v. Comm’r, Soc. Sec. Admin., 983 F.3d 83, 104–05
(4th Cir. 2020) (quoting Singleton v. Wulff, 428 U.S. 106,
121 (1976)). Considerations guiding that discretion
include: “(1) whether both parties had ample opportunity
to develop facts pertaining to the issue; (2) whether the
issue is primarily a question of law; (3) whether the issue
was briefed and argued on appeal; (4) whether the proper
outcome is beyond doubt, rendering a remand pointless;
and (5) whether a discretionary remand to the district
court for consideration of the . . . issue in the first instance
would produce injustice for a party.” Id. at 105 (cleaned
up); see also Veterans4You LLC v. United States, 985 F.3d
850, 857–58 (Fed. Cir. 2021) (similar). And, although this
appeal is interlocutory, “[j]urisdiction of the interlocutory
appeal is in large measure jurisdiction to deal with all
aspects of the case that have been sufficiently illuminated
to enable decision by the court of appeals without further
trial court development.” 16 Charles Alan Wright, Arthur
R. Miller & Edward H. Cooper, Federal Practice and
Procedure § 3921.1, p. 25 & n.6 (3d ed. 2012); see also Doe
v. Sundquist, 106 F.3d 702, 707 (6th Cir. 1997)
(acknowledging the typical abuse-of-discretion review of
decisions on preliminary injunctions, but noting that “[t]he
sort of judicial restraint that is normally warranted on
interlocutory appeals does not prevent us from reaching
clearly defined issues in the interest of judicial economy”).
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In view of these considerations, we deem this contract-
interpretation issue appropriate for our resolution in this
appeal. The parties have joined issue on this subject in
their briefing before us, and neither party has suggested
that, instead of resolving this issue in this appeal, we must
leave it to the district court in the first instance. Nor has
either party persuasively argued that any outstanding
factual issue would affect the proper interpretation.
Further, as we explain below, we have little doubt that the
interpretation we adopt is proper, and we believe judicial
economy is best served by resolving the issue now.13
On this issue, we conclude that a party that has made
an ETSI FRAND commitment must have complied with
the commitment’s obligation to negotiate in good faith over
a license to its SEPs before it pursues injunctive relief
based on those SEPs. Given the SEP-related concerns
underlying the FRAND commitment, if the FRAND
commitment means anything of substance, it must mean
that an SEP holder that has made such a commitment
cannot just spring injunctive actions against other
standard implementers without having first complied with
some standard of conduct. That standard of conduct, we
conclude, must be—at a minimum—the very one imposed
by the FRAND commitment’s good-faith-negotiating
obligation.
Other courts that have spoken on this issue—whether
on FRAND (or RAND) commitments generally or the ETSI
FRAND commitment specifically—have viewed the issue
similarly. See, e.g., Unwired Planet Int’l Ltd. v. Huawei
Techs. Co. [2020] UKSC 37, [72] (U.K. Supreme Court
observing that “the operation of the ETSI regime requires
13 Although the FRAND commitment is governed by
French law, neither party has identified any specific aspect
of French law that would compel an interpretation
different from the straightforward one we adopt.
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the SEP owner to offer a FRAND licen[s]e . . . as [a]
precondition[] of the grant of an injunction”); id. at [61];
Huawei, 2018 WL 1784065, at *8 (discussing the ETSI
FRAND commitment and noting that “the availability of
injunctive relief for each party’s SEPs depends on the
breach of contract claims”); Realtek Semiconductor Corp. v.
LSI Corp., 946 F. Supp. 2d 998, 1008 (N.D. Cal. 2013)
(holding that the SEP holders “breached their contractual
obligations . . . by seeking injunctive relief against [the
implementer] before offering [it] a license”);14 see also
Adam Mossoff, Patent Injunctions and the FRAND
Commitment: A Case Study in the ETSI Intellectual
Property Rights Policy, 38 Berkeley Tech. L.J. 487, 508
(2023) (noting that the Court of Justice of the European
Union has “affirmed the right of SEP owners to request and
receive injunctive remedies for infringement of their
patents when the SEP owner is negotiating a FRAND-
compliant license in ‘good faith’”); id. at 512 (observing that
courts “have issued injunctions for ongoing infringement of
SEPs when . . . the SEP owner has offered a license on
FRAND terms or is negotiating in good faith to a FRAND-
compliant license”).15
14 Although the Realtek court’s breach-of-contract
holding was “limited to the situation” before it—i.e., where
the SEP holders “did not even attempt to offer a license, on
[RAND] terms or otherwise, until after seeking injunctive
relief,” id., we see no principled reason why the result
should be different if the SEP holder, before pursuing SEP-
based injunctive relief, had made an offer but had
otherwise not complied with its good-faith-negotiating
obligation (e.g., had made only an offer with outlandish
terms).
15 Our conclusion—i.e., that an ETSI FRAND-
committed party must have complied with the
commitment’s obligation to negotiate in good faith over a
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Ericsson disputes this interpretation of the FRAND
commitment, but it fails to demonstrate any authority that
has explicitly endorsed a contrary interpretation. And its
arguments against this interpretation are unpersuasive.
For example, Ericsson argues that ETSI has rejected a rule
that would categorically bar SEP-based injunctions. See
Appellee’s Br. 38 (citing Mossoff, supra, at 503). But the
interpretation we adopt does not categorically bar such
injunctions16—it just conditions their pursuit on, at a
minimum, the SEP holder having first complied with the
good-faith-negotiating obligation imposed by the FRAND
commitment itself.17 Ericsson also observes that other
ETSI materials provide that “the national courts of law
have the sole authority to resolve [IPR] disputes.”
Appellee’s Br. 38 (emphasis omitted) (quoting ETSI, Guide
on IPRs § 4.318). In context, however, this statement
license to its SEPs before pursuing injunctive relief based
on those SEPs—rests on how we interpret the FRAND
commitment. We note additionally, however, that such a
conclusion fits well within the general common-law
principle, recognized in at least this country, that “one
seeking equitable relief [e.g., an injunction] must do equity
and come into court with clean hands.” See, e.g., Primerica
Life Ins. Co. v. Woodall, 975 F.3d 697, 699 (8th Cir. 2020);
see also 11A Wright & Miller § 2946, p. 106 (“A principle
closely related to the clean-hands maxim is that before
plaintiff will be permitted to invoke the aid of a court of
equity, plaintiff must do equity.”).
16 In the FRAND context, we have previously
declined to adopt a rule that would categorically bar SEP-
based injunctions. See Apple Inc. v. Motorola, Inc., 757 F.3d
1286, 1331–32 (Fed. Cir. 2014).
17 We express no opinion in this appeal as to whether
or what other conditions might exist.
18 https://www.etsi.org/images/files/IPR/etsi-guide-
on-ipr.pdf.
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simply disclaims any ultimate responsibility of ETSI to
resolve IPR disputes. And it otherwise is unilluminating
as to what the contract Ericsson agreed to (i.e., its FRAND
commitment) requires.
Ericsson’s main pushback is that the Colombian and
Brazilian tribunals should be deciding this contract-
interpretation issue, as opposed to the district court or this
court. See Appellee’s Br. 38 (maintaining that this issue
“should be presented to the Brazilian and Colombian
[tribunals], not dictated to them by U.S. courts”); id. at 39–
40, 42–45. Initially, we note that, to the extent this
argument is intended to show that an antisuit injunction
here is inappropriate under any circumstances, it would
seem to prove quite a bit. As the Ninth Circuit explained
in Microsoft when addressing a similar concern,
the mere fact that different jurisdictions answer
the same legal question differently does not,
without more, generate an intolerable comity
problem. If that were the case, then there could
virtually never be a foreign anti-suit injunction:
Parallel proceedings in different jurisdictions
would have to be permitted to proceed any time the
two jurisdictions had different rules of law, which
is almost always the case.
696 F.3d at 888. In any event, we think this argument is
better considered as part of the second or third parts of the
foreign-antisuit-injunction framework, which the district
court has yet to reach. The argument simply has less to do
with the “dispositive” requirement. The FRAND
commitment itself is the same as between the instant suit
and the Colombian and Brazilian proceedings, and just
because tribunals in those countries might differ on their
resolution of the same issues—e.g., whether that
commitment precludes pursuing injunctive relief without
the good-faith-negotiating obligation having first been
complied with—does not mean that the issues are not the
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same for purposes of the threshold requirement in the
foreign-antisuit-injunction framework.
Ericsson finally argues, in a similar vein, that the
“dispositive” requirement is not met because the
Colombian and Brazilian injunctions “arise from
independent foreign patent rights issued by foreign
sovereigns and enforced only within their borders.”
Appellee’s Br. 35 (cleaned up). The issue here, however, is
not just one of patent rights; it is one of contract. Ericsson
entered into a contract that affects how it may enforce
certain of its patents. “When that contract is enforced by a
U.S. court, the U.S. court is not enforcing [foreign] patent
law but, rather, the private law of the contract between the
parties.” Microsoft, 696 F.3d at 884; see also id. at 883
(discussing Medtronic, 518 F. Supp. at 955).
* * *
In sum, we conclude that the “dispositive” requirement
of the foreign-antisuit-injunction framework is met here.
That is because (1) the ETSI FRAND commitment
precludes Ericsson from pursuing SEP-based injunctive
relief unless it has first complied with the commitment’s
obligation to negotiate in good faith over a license to those
SEPs; and (2) whether Ericsson has complied with that
obligation is an issue before the district court. Accordingly,
if the court determines that Ericsson has not complied with
that obligation, that determination will dictate the
impropriety of Ericsson’s pursuing its SEP-based
injunctive relief.19
19 Lenovo also has a different theory for how the
“dispositive” requirement is met. It maintains that its
counterclaim asking the district court to set the FRAND
terms for a global cross-license between the parties
demonstrates that the instant suit will result in such a
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None of this is to say that Lenovo will ultimately
demonstrate itself entitled to its requested antisuit
injunction.20 Although both parties ask us to definitively
resolve that question—Lenovo saying we should outright
direct entry of the antisuit injunction; Ericsson saying we
should conduct the rest of the analysis ourselves and affirm
the district court’s denial—we decline both requests. Such
entitlement (or not) is dedicated to the district court’s
discretion in the first instance and will, if the requested
antisuit injunction is to be entered, require analysis of the
remaining parts of the foreign-antisuit-injunction
framework—an analysis that has yet to be undertaken.
Here, however, in denying Lenovo’s request, the district
court stopped its analysis at the first, threshold part based
solely on what we conclude was legal error. We must
therefore vacate that denial and remand.
CONCLUSION
For the foregoing reasons, we vacate the district court’s
denial of Lenovo’s antisuit-injunction request and remand
for further proceedings.
license, thus meeting the “dispositive” requirement. See
Appellant’s Br. 33–38; Appellant’s Reply Br. 12–13.
Ericsson, however, offers several arguments as to why
Lenovo’s theory fails. See Appellee’s Br. 45–47. Although
the district court acknowledged Lenovo’s counterclaim, see
District Court Opinion, 2024 WL 645319, at *8, its
reasoning for deeming that counterclaim insufficient to
meet the “dispositive” requirement is not entirely clear to
us. Nothing in this opinion should be read to foreclose the
court from further considering that theory in the event it
becomes relevant.
20 Further, our opinion and disposition here in no way
suggest a view as to whether, on the facts, Ericsson has or
has not complied with its good-faith-negotiating obligation.
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VACATED AND REMANDED
COSTS
No costs.
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