FRAND and Anti-Suit Injunctions: Ericsson v. Lenovo

The strategic significance of a U.S. FRAND lawsuit need not lie in the court establishing all the terms of a worldwide portfolio license. It may stem simply from the fact that a preliminary contractual issue determines the admissibility of foreign injunctive relief. The Federal Circuit elaborated on this approach in Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 2024-1515, dated October 24, 2024.

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

„Dispositive“ does not mean: deciding all foreign patent matters

The Federal Circuit took issue with the overly narrow examination of whether the U.S. proceedings could be determinative of the foreign measures to be restricted. According to its interpretation, a patent holder subject to ETSI FRAND obligations must have fulfilled its duty to engage in good-faith licensing negotiations before seeking injunctive relief based on these SEPs. A corresponding finding of infringement can therefore be decisive for foreign injunctive relief without a comprehensive global license having been established beforehand.

This is not to say that U.S. courts may invalidate foreign patents or generally review the decisions of foreign courts regarding patent infringement. This approach concerns a party’s contractual obligations and the resulting limitations on its conduct in litigation.

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

The procedural scope is essential for citing the decision: The Federal Circuit reversed the denial and remanded the case. It did not rule definitively on Lenovo’s claim for the requested anti-suit injunction, nor did it rule on whether Ericsson had in fact breached its negotiation obligations. The remaining requirements had to be examined separately.

The decision thus opens up a line of argument; it does not replace the requirement to prove its factual and procedural prerequisites.

Why a narrowly focused proposal can be more effective strategically

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 continuing to pursue its German patent claims. Rather, enforcement of the German injunction was limited to preserve the outcome of the contractual RAND issues already pending. The scope and temporal limitations of the measure also played a role in the context of international comity.

This suggests that an applicant should not reflexively demand the suspension of all foreign proceedings. Often, the more precise question is: Which specific enforcement measure would impair the practical effectiveness of the U.S. treaty decision, and which narrower restriction prevents precisely this disadvantage?

Rule 65 also requires that an injunction state its grounds, specify its conditions, and describe the prohibited or mandated actions in sufficiently concrete terms. This supports a motion that clearly distinguishes between the affected parties, actions, and time limits.

The FRAND litigation strategy begins with the relief sought

When planning a case, three questions should be answered separately: What breach of contract should the U.S. court find? Which foreign measure would be affected by this finding? Why is a more limited injunction insufficient?

The negotiation documentation should focus on these questions. An extensive discussion of licensing rates is of little help if it remains unclear what specific breach of duty is being alleged and why it is supposed to be covered by the sought-after injunctive relief.

The strategic core: A U.S. anti-suit strategy is not viable simply because a dispute over FRAND is being litigated elsewhere at the same time. It requires a precise link between the contractual claim, the foreign measure, and the requested relief.

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