Case 2:21-cv-00460-JRG Document 19 Filed 01/24/22 Page 1 of 8 PageID #: 177

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

APPLE INC.,

Plaintiff,

v. Civil Action No. 2:21-cv-00460-JRG

TELEFONAKTIEBOLAGET LM
ERICSSON AND ERICSSON INC.,

Defendants.

ERICSSON’S RESPONSE TO APPLE’S MOTION FOR AN EARLY CASE

MANAGEMENT CONFERENCE
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I. INTRODUCTION

Apple asks the Court to order an expedited, individual case management conference, yet

Apple does not even make clear to the Court or to Ericsson what Apple wants the Court to resolve

at this conference—or if the parties even dispute anything regarding the schedule of this case.

Instead, Apple misleadingly tries to cast Ericsson as a villain who seeks to evade the jurisdiction

of this Court. Nothing could be further from the truth.

Ericsson does not oppose an individual case management conference if there are specific

issues that, after the parties meet and confer, remain in dispute and can benefit from immediate

Court resolution. To date, despite Ericsson’s requests, Apple has not even discussed any

scheduling issues (such as the trial date or other interim deadlines) with Ericsson. Nor has Apple

discussed broader case management issues with Ericsson, such as consolidation of this case with

Ericsson’s first-filed case. Ericsson therefore proposes a procedure by which the parties confer

meaningfully on case management, not just in this case but in both cases between Ericsson and

Apple pending in this Court. If, once the conference(s) are concluded, there are disputes of a

scheduling or case-management nature, the parties then should identify the disputes in a case

management report and the Court can decide whether an individual scheduling conference would

be appropriate. If there are disputes of a substantive nature for which relief beyond procedural

rulings are requested, those should be handled by motion and response, and the Court can decide

whether an oral hearing would be helpful to its resolution of any such motion.

Contrary to the accusations in Apple’s motion, Ericsson has not “evaded” or

“undermine[d]” the Court’s jurisdiction—indeed, Ericsson filed a case in this Court first. Ericsson

sued Apple for patent infringement in other jurisdictions because Apple is infringing Ericsson’s

essential patents on a worldwide basis. Apple complains that Ericsson filed its U.S. infringement

suits in the Western District of Texas, but Ericsson filed there because Apple closed all its stores
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in the Eastern District in the wake of the TC Heartland case to immunize itself from patent

infringement suits in this District. After Apple’s motion, Ericsson sent a letter to Apple offering to

dismiss and refile its infringement cases in this District if Apple would waive challenge to

improper venue under TC Heartland. Apple did not agree.

The parties have sued each other for breach of contract and are seeking damages and

declaratory relief. Nothing about Ericsson pursuing remedies for infringement of its

implementation and essential patents undermines this Court’s jurisdiction over the claims here or

in Ericsson’s first-filed case—both parties will be subject to this Court’s final judgment, and

Ericsson has done nothing to interfere with the arguments that Apple can make to this Court

regarding FRAND. Apple’s argument to the contrary is rhetoric unsupported by fact or law.

II. PROCEDURAL HISTORY BETWEEN THE PARTIES

Ericsson filed its original complaint against Apple on October 4. Ericsson Inc. and

Telefonaktiebolaget LM Ericsson v. Apple Inc., No. 2:21-cv-376-JRG (Oct. 4, 2021, E.D. Tex.)

(the “First-Filed Case”). In it, Ericsson sought a declaration that Ericsson’s offer to Apple for a

new cross-license agreement complied with FRAND and all applicable laws. Id.

Instead of answering Ericsson’s First-Filed Case and asserting counterclaims, on

December 17, Apple simultaneously moved to dismiss Ericsson’s original complaint and filed its

own complaint in this case (the “Second-Filed Case”), alleging among other things that Ericsson’s

offer to Apple for a new cross-license breached FRAND. Dkt. No. 2; see also First-Filed Case,

Dkt. No. 7.

Ericsson filed a motion to dismiss Apple’s Second-Filed Case, or alternatively, to

consolidate the Second-Filed Case with Ericsson’s First-Filed Case. Dkt. No. 14. Ericsson argued

in its motion to dismiss that, under Rule 13 of the Federal Rules of Civil Procedure, Apple’s claims

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in the Second-Filed Case could only be asserted as compulsory counterclaims in the First-Filed

Case.

On January 17-18, 2022, after the expiration of the parties’ global cross license agreement,

Ericsson filed three complaints with the United States International Trade Commission (ITC),

asserting violations by Apple of section 337 due to patent infringement. On January 20, 2022,

Apple filed a complaint with the ITC against Ericsson, asserting violations of section 337 due to

patent infringement. None of the ITC complaints have resulted in the institution of an investigation

by the ITC.

On January 17, 2022, Ericsson filed two patent infringement suits against Apple in the

Western District of Texas (“District Court Infringement Actions”). The patents in those two

actions are co-extensive with the patents that form the basis of the ITC complaints filed by

Ericsson. As a result, Apple may elect to stay the District Court Infringement Actions, but as of

this date, Apple has not requested a stay.

Ericsson filed its District Court Infringement Actions against Apple in the Western District

of Texas, as opposed to this District, due to Apple’s highly publicized decision to close all its

stores in the Eastern District of Texas following the Supreme Court’s decision in TC Heartland

LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017). On January 20, 2022, counsel for

Ericsson sent a letter to counsel for Apple, offering to dismiss the District Court Infringement

Actions and refile them in this District if Apple would “stipulate to venue in the Eastern District

for this dispute and waive any objection under TC Heartland.” Stevenson Dec., Ex. 1. Apple did

not agree to this stipulation. Stevenson Dec., Ex. 2.

In addition to the above actions in the United States, Ericsson has also filed claims for

patent infringement against Apple outside of the United States.

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On January 19, 2022, Apple filed four proceedings against Ericsson with the United States

Patent Trial and Appeal Board, seeking to contest the validity of four Ericsson patents via Inter

Parties Review. Apple filed another proceeding against Ericsson with the United States Patent

Trial and Appeal Board on January 21, 2022, seeking to contest the validity of an additional

Ericsson patent via Inter Parties Review. All of the proceedings Apple filed against Ericsson

involve Ericsson patents declared to ETSI.

III. RESPONSE TO RELIEF REQUESTED BY APPLE (INDIVIDUAL SCHEDULING

CONFERENCE)

Before Ericsson can join Apple in requesting an individual scheduling conference, it should

be clear that it will be a productive use of the Court’s time. But without any idea of what specific

issues are in dispute between the parties, what Apple’s position is on those issues, and what relief

Apple or Ericsson would request the Court enter, Ericsson cannot at this time, in good faith,

represent to the Court that an individual scheduling conference would be a productive use of the

Court’s time.

At this juncture, counsel for the parties have not discussed any of the following scheduling

or case management issues:

• Whether this case should be consolidated with Ericsson’s First-Filed Case

• Whether Apple’s patent declaratory judgment claims and the FRAND claims
should be tried together

• Whether Apple will waive TC Heartland and consent to Ericsson filing its patent
infringement claims against Apple in this District

• Dates for a claim construction hearing

• When the case(s) can be ready for trial

• Discovery scope and limitations

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Counsel for Ericsson has invited counsel for Apple to confer on these case management and

scheduling issues. Ericsson has offered to confer with Apple this week. In view of this, Ericsson

respectfully suggests that the Court enter the following order with regard to case management for

both this case and the Ericsson First-Filed Case:

1. Counsel for all parties participate in an initial meet and confer, with lead counsel

participation, to occur by January 28, 2022. The parties should be prepared to discuss the

case schedule, scope of the cases, and any case management issues that they believe can

result in the case being litigated more efficiently. Counsel should have follow-up

conferences, as necessary, until all issues in dispute have been fully identified and

discussed.

2. The parties will provide a proposed Scheduling Order and Docket Control Order to the

Court by February 28, 2022. In the event all provisions of the Scheduling Order and

Docket Control Order are not agreed to, the parties shall submit one version of each Order

with competing provisions. Each party may also simultaneously submit a brief not to

exceed 10 pages setting forth argument as to why its scheduling and case management

proposals should be accepted by the Court.

3. If a party seeks substantive relief beyond scheduling and case management, that party

shall present such request for relief by motion in accordance with the Local Rules

governing motion practice.

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Dated: January 24, 2022
Theodore Stevenson, III (Lead Attorney)
Texas State Bar No. 19196650
ted.stevenson@alston.com
ALSTON & BIRD
2200 Ross Avenue, Suite 2300
Dallas, TX 75201
Telephone: (214) 922-3507
Facsimile: (214) 922-3899
Christine Woodin
Texas State Bar 24199951
cwoodin@hueston.com
HUESTON HENNIGAN LLP
523 West 6th St., Suite 400
Los Angeles, CA 90014
Telephone: (213) 788-4099
Facsimile: (888) 775-0898
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Respectfully Submitted,
/s/ Nicholas Mathews
Nicholas Mathews
Texas State Bar No. 24085457
nmathews@McKoolSmith.com
MCKOOL SMITH, P.C.
300 Crescent Court Suite 1500
Dallas, TX 75201
Telephone: (214) 978-4000
Facsimile: (214) 978-4044
Blake Bailey
Texas State Bar No. 24069329
bbailey@mckoolsmith.com
MCKOOL SMITH, P.C.
600 Travis Street, Suite 7000
Houston, TX 77002
Telephone: (713) 485-7300
Telecopier: (713) 485-7344
Samuel F. Baxter
Texas State Bar No. 01938000
sbaxter@mckoolsmith.com
MCKOOL SMITH, P.C.
104 E. Houston Street, Suite 300
Marshall, TX 75670
Telephone: (903) 923-9000
Telecopier: (903) 923-9099
ATTORNEYS FOR DEFENDANT
ERICSSON INC.
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CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has been

served on all counsel of record via the Court’s ECF system on January 24, 2022.

/s/ Nicholas Mathews

Nicholas Mathews