FRAND and Anti-Suit Injunctions: Ericsson v. Lenovo

The strategic significance of a US FRAND claim need not lie in the court setting out all the terms of a global portfolio licence. It may simply arise from the fact that a preliminary contractual issue determines the admissibility of foreign injunctions. The Federal Circuit set out this approach in Telefonaktiebolaget LM Ericsson v Lenovo (United States), Inc., No. 2024-1515, dated 24 October 2024.

The specific dispute was later settled out of court: on 3 April 2025, Ericsson and Lenovo announced an agreement on a global cross-licence, the withdrawal of the pending proceedings, and arbitration to definitively resolve any remaining licensing issues. The decision should therefore not be portrayed as an ongoing US proceeding to have a global FRAND rate set by the courts.

„Dispositive“ does not mean: to decide on all foreign patent matters

The Federal Circuit criticised the overly narrow examination of the question of whether the US proceedings could be determinative of the foreign measures to be restricted. According to its interpretation, a patent holder bound by ETSI FRAND obligations must have fulfilled its duty to negotiate a licence in good faith before seeking injunctive relief on the basis of these SEPs. A corresponding finding of infringement may therefore be decisive for foreign injunctive relief, without a full global licence having been established beforehand.

This does not imply that US courts are permitted to declare foreign patents invalid or to review foreign infringement proceedings in general. The approach concerns a party’s contractual obligations and the resulting limits on its conduct in legal proceedings.

The Federal Circuit did not grant the anti-suit injunction itself

The procedural scope is crucial when citing the decision: the Federal Circuit set aside the decision dismissing the claim and remanded the case. It did not rule definitively on Lenovo’s claim for the anti-suit injunction sought, nor on whether Ericsson had in fact breached its obligations to negotiate. The remaining conditions had to be examined separately.

The decision thus opens up a line of argument; it does not replace the need to prove that the factual and procedural requirements have been met.

Why a narrowly focused proposal can be strategically stronger

The earlier case of Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), illustrates the importance of the specific scope of the injunction. In that case, Motorola was not generally prevented from pursuing its German patent claims. The enforcement of the German injunction was restricted in order to safeguard the decision on the contractual RAND issues already pending. The scope and temporal limitation of the measure also played a role in relation to international comity.

This suggests that an applicant should not automatically demand the discontinuance of all foreign proceedings. Often, the more precise question is: which specific enforcement measure would undermine the practical effectiveness of the US judgment, and which narrower restriction prevents precisely that disadvantage?

Rule 65 also requires that an injunction sets out its grounds, specifies its conditions and describes the prohibited or required acts in sufficiently specific terms. This argues in favour of an application that clearly distinguishes between the parties concerned, the acts in question and the time limits.

The FRAND litigation strategy begins with the relief sought

When planning the case, three questions should be answered separately: Which breach of contract is the US court to find? Which foreign measure would be affected by this finding? Why is a more limited injunction not sufficient?

The negotiation documentation should focus on these issues. An extensive discussion of licence rates is of little use if it remains unclear what specific breach of duty is being alleged and why it is said to fall within the scope of the injunctions sought.

The strategic crux: a US anti-suit strategy is not automatically viable simply because a dispute over FRAND is taking place elsewhere at the same time. It requires a clear link between the contractual claim, the foreign measure and the relief sought.

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