throbber
No. 19-1269
`
`
`
`IN THE
`Supreme Court of the United States
`————
`TCL COMMUNICATION TECHNOLOGY HOLDINGS
`LIMITED; TCT MOBILE LIMITED; TCT MOBILE (US) INC.,
`Petitioners,
`
`v.
`
`ERICSSON, INC.; TELEFONAKTIEBOLAGET LM ERICSSON,
`
`
`
`
`
`Respondents.
`————
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`————
`BRIEF IN OPPOSITION
`————
`
`THEODORE STEVENSON, III
`NICHOLAS MATHEWS
`MCKOOL SMITH P.C.
`300 Crescent Ct.
`Suite 1500
`Dallas, TX 75201
`(214) 978-4000
`BLAKE BAILEY
`MCKOOL SMITH P.C.
`600 Travis St.
`Suite 7000
`Houston, TX 77002
`(713) 485-7314
`
`JEFFREY A. LAMKEN
`Counsel of Record
`MICHAEL G. PATTILLO, JR.
`RAYINER I. HASHEM
`EMILY K. DAMRAU
`MOLOLAMKEN LLP
`The Watergate, Suite 500
`600 New Hampshire Ave., N.W.
`Washington, D.C. 20037
`(202) 556-2000
`jlamken@mololamken.com
`SARA E. MARGOLIS
`MOLOLAMKEN LLP
`430 Park Avenue
`New York, NY 10022
`(212) 607-8160
`
`Counsel for Respondents Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson
`
`WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002
`
`

`

`QUESTION PRESENTED
`Whether a monetary payment made as compensation
`for past unlicensed use of patented technology, which
`extinguishes patent-infringement claims seeking dam-
`ages for past unlicensed sales, is legal relief that must be
`determined by a jury under the Seventh Amendment.
`
`(i)
`
`

`

`ii
`PARTIES TO THE PROCEEDINGS BELOW
`Petitioners here, appellees below, are TCL Communi-
`cation Technology Holdings, Limited; TCT Mobile Limit-
`ed; and TCT Mobile (US) Inc.
`Respondents here, appellants below, are Ericsson Inc.
`and Telefonaktiebolaget LM Ericsson.
`
`
`
`
`
`
`
`
`

`

`iii
`CORPORATE DISCLOSURE STATEMENT
`Pursuant to this Court’s Rule 29.6, respondents Erics-
`son Inc. and Telefonaktiebolaget LM Ericsson state that
`Ericsson Inc. is a subsidiary of Ericsson Holding II, Inc.
`and Telefonaktiebolaget LM Ericsson. Telefonaktiebo-
`laget LM Ericsson has no parent corporation and no
`company owns 10% or more of its stock.
`
`
`
`
`
`

`

`iv
`STATEMENT OF RELATED PROCEEDINGS
`There are no related proceedings within the meaning
`of Rule 14.1(b)(iii).
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`Statement ......................................................................
`I. Background ......................................................
`A. The FRAND Obligation for
`Technologies Incorporated into
`Cellular Standards .................................
`B. TCL’s History of Infringement ............
`II. Proceedings Below ..........................................
`A. District Court Proceedings ...................
`B. The Court of Appeals’ Decision ............
`Reasons for Denying the Petition .............................
`I.
`TCL’s Repeated Forfeiture of the
`Question Presented Forecloses Review .......
`II. The Petition Presents No Question of
`Importance Warranting Review ...................
`A. The Release Payment Issue
`Has Never Been Raised in
`Any Other Case ......................................
`B. The Issue Is Unlikely To Arise
`Given the Independent Grounds
`for Jury Trials .........................................
`C. This Case Is a Poor—and
`Jurisdictionally Impossible—
`Vehicle for Reaching the Question
`Presented .................................................
`D. TCL’s Complaints About Jury
`Trials Are Irrelevant and
`Unfounded ...............................................
`
`Page
`1
`2
`
`2
`3
`4
`4
`8
`12
`
`14
`
`17
`
`17
`
`19
`
`25
`
`27
`
`
`
`
`(v)
`
`

`

`vi
`TABLE OF CONTENTS—Continued
`
`III. The Decision Below Is Correct .....................
`A. A Release Payment for Past
`Patent Infringement That
`Extinguishes Damages Is
`Legal Relief .............................................
`B. The Petition’s New “Equitable
`Consideration” Theory Fails on
`the Merits ................................................
`Conclusion .....................................................................
`Supplemental Appendix – Amended
`Memorandum of Findings of Fact and
`Conclusions of Law (Mar. 9, 2018) ......................
`
`
`
`Page
`28
`
`28
`
`32
`34
`
`1a
`
`
`
`

`

`vii
`TABLE OF AUTHORITIES
`
` Page(s)
`
`5
`
`19
`
`18
`
`17
`
`17
`
`24
`
`CASES
`Already, LLC v. Nike, Inc.,
`568 U.S. 85 (2013) ..............................................
`Amphastar Pharm. Inc. v.
`Momenta Pharm., Inc.,
`850 F.3d 52 (1st Cir. 2017) ...............................
`Apple, Inc. v. Motorola Mobility, Inc.,
`No. 11-cv-178, 2012 WL 5416941
`(W.D. Wis. Oct. 29, 2012) .................................
`Beacon Theatres, Inc. v. Westover,
`359 U.S. 500 (1959) ...................................... passim
`Brecht v. Abrahamson,
`507 U.S. 619 (1993) ............................................
`CSIRO v. Cisco Sys., Inc.,
`809 F.3d 1295 (Fed. Cir. 2015) ..................... 19, 28
`Cutter v. Wilkinson,
`544 U.S. 709 (2005) ............................................
`Dairy Queen, Inc. v. Wood,
`369 U.S. 469 (1962) ...................................... passim
`eBay Inc. v. MercExchange, L.L.C.,
`547 U.S. 388 (2006) ............................................
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014) .................. passim
`Estate of Meller v. Adolf Meller Co.,
`554 A.2d 648 (R.I. 1989) ................................ 16, 33
`Feltner v. Columbia Pictures
`Television, Inc.,
`523 U.S. 340 (1998) ......................................... 29, 33
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................
`
`
`
`5
`
`

`

`viii
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`5
`
`27
`
`34
`
`Great-West Life & Annuity Ins. Co.
`v. Knudson,
`534 U.S. 204 (2002) ...................................... passim
`Grupo Dataflux v. Atlas Global
`Group L.P.,
`541 U.S. 567 (2004) ............................................
`Gulfstream Aerospace Corp.
`v. Mayacamas Corp.,
`485 U.S. 271 (1988) ......................................... 11, 22
`In re Innovatio IP Ventures, LLC
`Patent Litig., MDL No. 2303,
`2013 WL 5593609
`(N.D. Ill. Oct. 3, 2013) .......................................
`Jacob v. New York City,
`315 U.S. 752 (1942) ............................................
`Jacobs v. United States,
`239 F.2d 459 (4th Cir. 1956) .......................... 16, 33
`Kelsey v. Crowther,
`162 U.S. 404 (1896) ......................................... 16, 33
`Klein v. Shell Oil Co.,
`386 F.2d 659 (8th Cir. 1967) .............................
`Littlefield v. Brown,
`394 A.2d 794 (Me. 1978) ................................ 16, 33
`Markman v. Westview
`Instruments, Inc.,
`517 U.S. 370 (1996) ...................................... passim
`Medtronic, Inc. v. Mirowski Family
`Ventures, LLC,
`571 U.S. 191 (2014) ............................................
`
`18
`
`22
`
`
`
`

`

`ix
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`18
`
`29
`
`28
`
`22
`
`Microsoft Corp. v. Motorola, Inc.,
`564 F. App’x 586
`(Fed. Cir. May 5, 2014) ....................................
`Microsoft Corp. v. Motorola, Inc.,
`795 F.3d 1024 (9th Cir. 2015) ........................ 18, 20
`Montanile v. Bd. of Trs. of Nat’l
`Elevator Indus. Health Benefit Plan,
`136 S. Ct. 651 (2016) .........................................
`Paice LLC v. Toyota Motor Corp.,
`504 F.3d 1293 (Fed. Cir. 2007) ........................
`Pub. Serv. Comm’n of Utah
`v. Wycoff Co.,
`344 U.S. 237 (1952) ............................................
`Ross v. Bernhard,
`396 U.S. 531 (1970) .................................. 12, 20, 21
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ........................
`Sereboff v. Mid Atl. Med. Servs., Inc.,
`547 U.S. 356 (2006) ............................................
`Tull v. United States,
`481 U.S. 412 (1987) ............................................
`u-Blox AG v. InterDigital, Inc.,
`No. 3:19-cr-001, 2019 WL 555029
`(S.D. Cal. Feb. 12, 2019) ...................................
`United States v. Williams,
`504 U.S. 36 (1992) ..............................................
`Willard v. Tayloe,
`75 U.S. 557 (1870) ........................................... 16, 34
`CONSTITUTIONAL PROVISIONS
`U.S. Const., amend. VII ................................... passim
`
`24
`
`30
`
`1
`
`18
`
`17
`
`
`
`

`

`x
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`STATUTES
`28 U.S.C. § 1332 .................................................... 5, 26
`35 U.S.C. § 271(a) ....................................................
`16
`35 U.S.C. § 284 .........................................................
`20
`OTHER AUTHORITIES
`9 C. Wright & A. Miller,
`Federal Practice and Procedure
`(3d ed. 2018) .......................................................
`10.4, Standard-Essential Patents,
`AIPLA’s Model Patent Jury
`Instructions (2018) ...........................................
`
`33
`
`13
`
`
`
`

`

`IN THE
`Supreme Court of the United States
`————
`
`
`
`
`
`
`
`NO. 19-1269
`
`
`
`————
`
`TCL COMMUNICATION TECHNOLOGY HOLDINGS
`LIMITED; TCT MOBILE LIMITED; TCT MOBILE (US) INC.,
`Petitioners,
`
`v.
`
`ERICSSON, INC.; TELEFONAKTIEBOLAGET LM ERICSSON,
`
`
`
`
`
`Respondents.
`
`————
`On Petition for a Writ of Certiorari
` to the United States Court of Appeals
`for the Federal Circuit
`————
`BRIEF IN OPPOSITION
`————
`STATEMENT
`The Seventh Amendment guarantees the right to a
`jury trial in actions traditionally “tried in courts of law,”
`such as suits for money “damages.” Tull v. United
`States, 481 U.S. 412, 417-418, 422 (1987). It is now be-
`yond dispute that patentees seeking damages for patent
`infringement have a Seventh Amendment right to a jury
`trial. Markman v. Westview Instruments, Inc., 517 U.S.
`370, 377 (1996). In this case, the district court awarded
`Ericsson $16,449,071 to—in the district court’s words—
`
`

`

`2
`“compensate [Ericsson] for TCL’s prior unlicensed use
`of Ericsson’s patents.” Supp. App. 3a n.4 (C.A. App. 29)
`(emphasis added).1 The court of appeals held that, be-
`cause such an award of retroactive relief as compensation
`for “past” infringement constitutes “money damages,” it
`is legal relief for which Ericsson had a Seventh Amend-
`ment right to a jury trial.
`I. BACKGROUND
`Respondents Ericsson, Inc. and Telefonaktiebolaget
`LM Ericsson (collectively “Ericsson”) are leaders in the
`field of wireless communications. C.A. App. 44503, 46833-
`46841. Ericsson annually invests billions of dollars devel-
`oping innovations that increase the speed, reliability, se-
`curity, convenience, and energy-efficiency of cellular
`communications. Petitioners TCL Communication Tech-
`nology Holdings Limited, TCT Mobile Limited, and TCT
`Mobile (US), Inc. (collectively “TCL”) sell “low-end mo-
`bile handsets” that, for years, concededly used Ericsson’s
`patented technology without license or payment. C.A.
`App. 44619.
` The FRAND Obligation for Technologies In-
`A.
`corporated into Cellular Standards
`The mobile phone industry—through the European
`Telecommunications Standards Institute (“ETSI”)—has
`developed technical standards to ensure that mobile
`devices are fully interoperable. Ericsson C.A. Br. 2-3;
`C.A. App. 46841-46842. The standards precisely specify
`
`
`1 The petition appendix includes the district court’s Amended Final
`Judgment and Injunction, Pet. App. 29a-58a, but not the lengthy op-
`inion under review below (reproduced in the court of appeals at
`C.A. App. 27-141). For the Court’s convenience, relevant portions
`are reproduced infra, Supp. App. 1a-13a.
`
`

`

`3
`how mobile devices transmit and receive radio signals.
`Pet. App. 3a. Successive generations of the standards,
`bearing names like “2G,” “3G,” and “4G,” achieve enor-
`mous improvements in speed, reliability, security, and
`energy efficiency. Ibid.
`ETSI develops standards by working with industry,
`including innovators such as Ericsson, Nokia, and Pana-
`sonic, to incorporate the “best” technical solutions into
`the standard. C.A. App. 46841-46842. Ericsson has been
`a major technological contributor to the 2G, 3G, and
`4G/LTE standards, as well as the upcoming 5G standard.
`Its patented innovations improve the quality of trans-
`mission between cell phones and towers, increase data
`speeds, and enhance battery life. Ericsson C.A. Br. 5-6.
`TCL did not contribute any technology to those stand-
`ards. C.A. App. 46841.
`ETSI often adopts standards that rely on and incor-
`porate patented technologies. Ericsson, Inc. v. D-Link
`Sys., Inc., 773 F.3d 1201, 1209 (Fed. Cir. 2014). When
`ETSI does so, companies implementing the standard
`must obtain licenses for those patents, which are called
`“standard-essential patents” or “SEPs.” To guarantee
`universal access to the standard, Ericsson and other
`contributors have agreed with ETSI that they are
`prepared to grant licenses to their essential patents on
`fair, reasonable, and non-discriminatory (“FRAND”)
`terms. C.A. App. 44570-44571. Companies implementing
`the standard can enforce that agreement as third-party
`beneficiaries. Pet. App. 4a.
` TCL’s History of Infringement
`B.
`TCL sells mobile phones that implement the 2G, 3G,
`and 4G/LTE standards, all of which include patented
`Ericsson technology. C.A. App. 44619. Every major mo-
`bile handset maker has licensed Ericsson’s technology
`
`

`

`4
`for 2G, 3G, and 4G/LTE communications, from Apple to
`Samsung to LG. C.A. App. 101-114. TCL initially sold
`phones without any
`license
`for Ericsson patents.
`C.A. App. 30. In 2007, TCL entered a license covering
`Ericsson 2G patents for some phones sold outside China.
`Pet. App. 4a. Over the next five years, TCL sold tens of
`millions of phones using Ericsson 3G technology (not
`covered by its 2G license), rejecting every license offer
`Ericsson made. C.A. App. 46855. In 2012, Ericsson filed
`lawsuits against TCL for infringement of Ericsson’s
`standard-essential patents in six countries. Pet. App. 4a.
`In 2013, TCL began selling 4G phones, again using
`patented Ericsson technology without a license. Ericsson
`attempted to negotiate a license for the thousands of
`Ericsson-owned patents covering technology incorpora-
`ted into the 4G standard. Pet. App. 4a-5a. TCL rejected
`Ericsson’s offers, alleging the royalty rates were not
`FRAND. Ibid. In 2014, Ericsson made another offer.
`Pet. App. 5a. TCL stated that the offer “look[ed] promis-
`ing,” but still did not agree to take a license. Ibid. It con-
`tinued to sell unlicensed, infringing phones—nearly 250
`million by 2015. C.A. App. 50877.
`II. PROCEEDINGS BELOW
` District Court Proceedings
`A.
`1. Fearing further infringement actions by Ericsson,
`TCL filed this action against Ericsson in the U.S. District
`Court for the Central District of California. Pet. App. 5a.
`According to TCL’s complaint, it faced an “imminent risk
`of being sued by Ericsson” for patent infringement in the
`U.S. C.A. App. 572.
`TCL sought a judgment declaring that Ericsson’s of-
`fers breached its promise to grant licenses on FRAND
`terms and asked the court to declare the FRAND rate.
`C.A. App. 469. TCL also sought damages for Ericsson’s
`
`

`

`5
`alleged breach of its FRAND obligation. Pet. App. 5a-6a.
`Ericsson counterclaimed (seeking a declaratory judg-
`ment) and filed a damages action alleging patent in-
`fringement against TCL in the Eastern District of Texas.
`Ibid. That infringement action was eventually trans-
`ferred and consolidated with this case. Pet. App. 6a.
`Jurisdictional defects in TCL’s complaint emerged
`shortly after it was filed. TCL had asserted diversity jur-
`isdiction under 28 U.S.C. § 1332, but diversity was lacking
`under Grupo Dataflux v. Atlas Global Group L.P., 541
`U.S. 567, 569 (2004), as TCL conceded, C.A. App. 707.
`TCL’s breach-of-contract claims, because they were not
`federal causes of action, could not support federal-
`question jurisdiction. Ibid. Neither amendment nor con-
`solidation with another action could cure the defect.
`C.A. App. 736, 741; Ericsson C.A. Br. 34 n.1.2
`The district court, however, found that a single claim
`supported federal-question jurisdiction—TCL’s declara-
`tory-judgment claim. As this Court has explained, the
`Declaratory Judgment Act permits parties that other-
`wise would be defendants to bring suit as plaintiffs: For
`example, a party who fears being sued for patent in-
`fringement might bring suit seeking a declaration that it
`does not infringe. See, e.g., Graham v. John Deere Co.,
`383 U.S. 1, 4 (1966). TCL urged that its declaratory-
`judgment action, asserting a breach of FRAND obliga-
`tions, raised a federal question because it “anticipate[d]”
`
`2 As the district court observed, a complaint’s failure to establish
`subject-matter jurisdiction deprives the court of power to do any-
`thing (even grant leave to amend or consolidate with another case).
`C.A. App. 734 (citing Morongo Band of Mission Indians v. Cal. State
`Bd. of Equalization, 858 F.2d 1376, 1380-1381 (9th Cir. 1988)); see
`Already, LLC v. Nike, Inc., 568 U.S. 85, 90-91 (2013).
`
`

`

`6
`a federal “patent infringement action” by Ericsson.
`C.A. App. 713. The asserted breach of the FRAND
`licensing obligation, TCL insisted, was “a defense to any
`Ericsson infringement claim,” and a “basis for limiting
`the damages that Ericsson [could] seek in any patent in-
`fringement action.” Ibid. Agreeing, the district court
`held that TCL’s declaratory-judgment claim was federal
`because it “anticipate[d] a coercive [federal] action” for
`“patent infringement.” C.A. App. 742-743. Indeed, Er-
`icsson actually filed patent infringement claims for dam-
`ages against TCL. See p. 11, infra.
`TCL also obtained an anti-suit injunction barring Er-
`icsson from pursuing its foreign actions. C.A. App. 6645.
`The foreign infringement suits, TCL told the district
`court, were unnecessary because they raised the “same
`issue[s]” as its declaratory-judgment action. C.A. App.
`4709. To support its injunction against foreign actions,
`TCL agreed that “any payment allegedly owed for past
`unlicensed sales (i.e., damages), will be addressed in this
`case.” C.A. App. 6581 (emphasis added).
`2. Both TCL and Ericsson initially demanded a jury
`trial. Ericsson C.A. Br. 10. Citing “overlapping” legal
`and equitable issues, Ericsson demanded a “jury deter-
`mination of all issues in one trial,” “prior to the Court’s
`determination of any overlapping equitable
`issues.”
`C.A. App. 10087-10088 (citing Beacon Theatres, Inc. v.
`Westover, 359 U.S. 500, 510-511 (1959)). The district
`court agreed, stating that a jury trial was necessary to
`avoid “depriv[ing] [Ericsson] of its right to a jury trial on
`[any] issue.” C.A. App. 12230.
`Shortly before trial, the district court granted sum-
`mary judgment against TCL on its damages claims (TCL
`had no proof of damages). C.A. App. 38816. The district
`court invited briefing on whether a jury trial was still
`
`

`

`7
`required. C.A. App. 38821. TCL then changed course
`and asked for a bench trial. C.A. App. 38844. Ericsson
`continued to demand a jury. It observed that, in finding
`jurisdiction, the court had ruled that TCL’s declaratory-
`judgment claim anticipated federal infringement claims.
`C.A. App. 38827. “Had Ericsson been the plaintiff,”
`Ericsson argued, “TCL’s declaratory judgment claim
`would have come to the Court” as a defense to Ericsson’s
`“claim for patent infringement,” which “undoubtedly con-
`fers a right of trial by jury upon Ericsson.” Ibid. Under
`Beacon Theatres, “the fact that TCL is the plaintiff on its
`claim for declaratory judgment, as opposed to Ericsson
`being the plaintiff on claims for patent infringement, does
`not deprive Ericsson of its right to a trial by jury.” Ibid.
`Ericsson also urged that the “nature of the remedy”
`sought—including a “release payment of money for
`[TCL’s] past patent infringement,” C.A. App. 38827—was
`“decidedly legal” and independently “confer[red] a jury
`trial right,” C.A. App. 38833. Finally, in cases involving
`both legal and equitable claims, the Seventh Amendment
`requires a jury trial if the “legal claims involve factual
`issues that are ‘common with those upon which [the]
`claim to equitable relief is based.’ ” C.A. App. 38833 (quo-
`ting Dairy Queen, Inc. v. Wood, 369 U.S. 469, 479 (1962)).
`That was the situation here. Ibid.
`The court entered a case-management order setting
`the matter for a bench trial, but did not offer any reason-
`ing. Ericsson C.A. Br. 11. Ericsson renewed its objection
`to the bench trial in the pretrial order and again before
`trial. Ibid.
`3. Following a bench trial, the district court issued a
`lengthy opinion, C.A. App. 27-141 (reproduced in part
`Supp. App. 1a-13a), in which it found Ericsson’s licensing
`offers to TCL were not FRAND. The decision set terms
`
`

`

`8
`for a worldwide license to Ericsson’s 2G, 3G, and 4G
`standard-essential patents. See Pet. App. 15a-16a. It
`addressed Ericsson’s jury-trial demand
`in a single
`sentence, stating that the court had “ruled that TCL’s
`remaining claims were equitable.” Pet. App. 11a; see
`Supp. App. 6a-7a (C.A. App. 34-35).
`The court-ordered license included both prospective
`royalties and a “release payment” of $16,449,071, which
`the court calculated by applying its royalty rate to “past
`unlicensed sales.” Pet. App. 15a-16a. The accompanying
`opinion explained that the release payment was “in-
`tended to compensate Ericsson for TCL’s unlicensed use
`of Ericsson’s SEPs.” Supp. App. 5a (C.A. App. 33); see
`Supp. App. 3a n.4 (C.A. App. 29). The court’s initial judg-
`ment stated that those payments “fulfill TCL’s payment
`obligations [for] * * * Ericsson’s claims for infringe-
`ment.” C.A. App. 56038. The court later amended its
`judgment to state instead that Ericsson’s patent-in-
`fringement damages claims were “moot in light of the eq-
`uitable relief granted in the release payment.” Pet. App.
`56a.
` The Court of Appeals’ Decision
`B.
`1. The Federal Circuit reversed, finding that the dis-
`trict court’s refusal of Ericsson’s jury-trial demand vio-
`lated the Seventh Amendment. Although Ericsson had
`presented three independent reasons why the Seventh
`Amendment entitled it to a jury trial, the court of appeals
`found it necessary to address only one. The payment of
`$16,449,071 for TCL’s past infringement of Ericsson
`patents, the court ruled, constituted “money damages.”
`Pet. App. 3a, 25a. “[B]y determining that legal relief in a
`bench trial,” the court held, “the district court deprived
`
`

`

`9
`Ericsson of ” its Seventh Amendment right to a jury trial.
`Ibid.3
`Like the parties, the Federal Circuit agreed that
`“whether Ericsson had a Seventh Amendment right to a
`jury trial” in connection with the $16,449,071 release pay-
`ment “turns on whether the relief sought by the release
`payment is either legal or equitable in nature.” Pet. App.
`2a-3a. The court explained it was required to examine
`the “basis of [Ericsson’s] claim” for payment and “the na-
`ture of the underlying remedies sought.” Pet. App. 21a.
`By contrast, matters of form—such as the fact that the
`district court had labeled the payment “equitable relief,”
`Pet. App. 22a n.9, or that “payment was ordered in the
`form of an injunction,” Pet. App. 20a—are not controlling.
`After reviewing the record and precedent, the court “con-
`clude[d] that the release payment is in substance com-
`pensatory relief for TCL’s past wrongs (i.e., practicing
`Ericsson’s patented technology without a license)” and
`thus legal relief. Pet. App. 18a (emphasis added).
`The district court itself had “consistently treated” the
`payment “as retrospective compensation for TCL’s past
`patent infringement.” Pet. App. 21a. For example, it
`“defined the function of the release payment as compen-
`sation, explaining that both of Ericsson’s offers ‘specify a
`release payment intended to compensate Ericsson for
`TCL’s unlicensed use of Ericsson’s [patents].’ ” Pet. App.
`22a (quoting Supp. App. 5a (C.A. App. 33)). The court of
`appeals pointed to the district court’s order requiring
`Ericsson, upon receipt of the release payment, to “ ‘re-
`
`
`3 Having found that Ericsson was erroneously denied a jury trial, the
`court did not address Ericsson’s challenges to the district court’s
`FRAND analysis and methodology. Pet. App. 18a n.8.
`
`

`

`10
`lease TCL . . . from claims for past patent infringe-
`ment.’ ” Ibid. (alterations in original). “Most tellingly,”
`the district court “dismissed Ericsson’s counterclaims of
`patent infringement as moot in light of the release pay-
`ment.” Ibid. The district court’s own actions, the court
`of appeals explained, “confirm that the release payment
`functions as a substitute for patent infringement dam-
`ages” and thus is legal relief. Ibid.
`The court of appeals rejected TCL’s effort to charac-
`terize the payment as “equitable” “restitution.” Pet. App.
`20a-24a. Invoking Great-West Life & Annuity Insur-
`ance Co. v. Knudson, 534 U.S. 204 (2002), the court ex-
`plained that, “ ‘for restitution to lie in equity, the action
`generally must seek not to impose personal liability on
`the defendant, but to restore to the plaintiff particular
`funds or property
`in the defendant’s possession.’ ”
`Pet. App. 22a-23a (quoting Great-West, 534 U.S. at 214).
`The payment here was not “equitable restitution” be-
`cause it did not seek to restore to Ericsson “particular
`funds” held by TCL. Pet. App. 23a. It instead imposed li-
`ability on TCL to compensate Ericsson for past invasions
`of Ericsson’s property rights. Pet. App. 22a-23a.
`The court rejected TCL’s argument (TCL C.A. Br. 27)
`that the district court never tried any “patent claims or
`defenses.” “[G]iven that TCL does not dispute infringe-
`ment” of Ericsson’s standard-essential patents, the court
`failed “to see how a payment for TCL’s past unlicensed
`sales is in substance materially different from damages
`for past patent infringement.” Pet. App. 23a-24a. Be-
`cause “the underlying nature” of the relief was “legal”
`rather than equitable, the court concluded, “Ericsson was
`entitled to a jury trial” on the “payment amount under
`the Seventh Amendment.” Pet. App. 24a. That ground
`
`

`

`11
`alone was “sufficient to overturn all of the court’s rulings
`below.” Pet. App. 17a n.6.
`2. The court of appeals found it unnecessary to ad-
`dress Ericsson’s two other “independent reasons” why
`the Seventh Amendment entitled it to a jury trial.
`Pet. App. 17a n.6.
`First, TCL’s declaratory-judgment claim against Er-
`icsson itself sought legal relief. Because “declaratory
`judgments are neither legal nor equitable,” courts seek-
`ing to characterize them must “look to the kind of action
`that would have been brought had Congress not provided
`the declaratory judgment remedy.” Gulfstream Aero-
`space Corp. v. Mayacamas Corp., 485 U.S. 271, 284
`(1988). In this case, TCL expressly averred that it had
`filed a declaratory-judgment action because it expected a
`patent-infringement suit by Ericsson. C.A. App. 551, 707-
`708. And Ericsson filed precisely such an infringement
`action for damages against TCL in Texas, which was then
`transferred and consolidated with this case. Pet. App. 6a.
`In filing after filing, TCL told the district court that its
`declaratory judgment was, in effect, the “mirror image”
`of a patent-infringement action. See Ericsson C.A. Reply
`4-6 (cataloging six categories of filings). There was no
`dispute that Ericsson would have had a jury-trial right if
`it had filed an infringement action first and TCL had
`counterclaimed for declaratory relief. Ericsson “cannot
`be deprived of that right merely because” the accused
`infringer “took advantage of the availability of declara-
`tory relief to sue * * * first.” Beacon Theatres, 359 U.S.
`at 504.
`For jurisdictional purposes, moreover, the district
`court had held TCL’s declaratory-judgment claim was
`sufficient to support federal-question jurisdiction because
`it was, in substance, a federal patent-infringement suit
`
`

`

`12
`with the parties reversed. Ericsson C.A. Br. 30-31. If the
`declaratory-judgment action was not an inverted patent-
`infringement suit—and was instead characterized as a
`mere breach-of-contract action—federal-question juris-
`diction would be lacking. Id. at 33; see pp. 5-6 & n.2,
`supra.
`Second, under Dairy Queen, in cases that have both
`“legal and equitable claims,” any issues “common to
`both” must be tried to a jury. Whatever the character-
`ization of other claims, Ericsson sought damages—legal
`relief—for TCL’s infringement of its patents. Erics-
`son C.A. Br. 34-35. That claim involved myriad issues in
`common with TCL’s declaratory-judgment claim. Ibid.
`Because the legal and equitable claims had issues in com-
`mon, Ericsson was entitled to a jury trial; the court could
`not deny that right by purporting to try the equitable
`claims itself first. Ross v. Bernhard, 396 U.S. 531, 537-
`538 (1970).
`3. The court of appeals rejected TCL’s suggestion of
`waiver. Pet. App. 24a. Careful review of the record left
`the court of appeals “unpersuaded.” Pet. App. 24a-26a.
`Even the trial “court did not treat Ericsson as having
`waived its jury trial right.” Pet. App. 26a.
`REASONS FOR DENYING THE PETITION
`The district court awarded Ericsson $16,449,071 “to
`compensate [it] for TCL’s prior unlicensed use”—i.e.,
`infringement—“of Ericsson’s patents.” Supp. App. 3a n.4
`(C.A. App. 29). TCL nowhere denies that, if Ericsson
`had sued TCL for infringement first, demanding that
`monetary relief, the Seventh Amendment would have
`entitled Ericsson to a jury trial—even if TCL sought to
`interpose Ericsson’s alleged breach of its FRAND obli-
`gation “as a defense” or a “basis for limiting the damages
`that Ericsson [could] seek in [that] patent infringement
`
`

`

`13
`action.” C.A. App. 711-713. “[T]here is no dispute that
`infringement cases today must be tried to a jury, as their
`predecessors were more than two centuries ago.” Mark-
`man v. Westview Instruments, Inc., 517 U.S. 370, 377
`(1996) (emphasis added).
`TCL argues that, because TCL filed a declaratory-
`judgment claim first, the Seventh Amendment did not
`entitle Ericsson to have a jury decide compensation for
`past infringement. But see Beacon Theatres, Inc. v.
`Westover, 359 U.S. 500, 504 (1959) (party “cannot be de-
`prived of ” right to jury trial “merely because” the ac-
`cused infringer “took advantage of the availability of de-
`claratory relief to sue * * * first”). According to TCL, the
`monetary payment here was not legal relief (damages),
`but “merely part of the equitable consideration TCL was
`required to pay to receive specific performance” (an
`order requiring Ericsson to provide licenses on specified
`terms). Pet. 16. But TCL never made that “equitable
`consideration” argument below or in district court. It is
`thus no surprise that, as TCL concedes, there is nothing
`in the Federal Circuit’s decision “squarely addressing”
`TCL’s theory. Pet. 23. The argument was forfeited.
`But the issue TCL presses on this Court is not im-
`portant regardless. While TCL waxes eloquent about the
`importance of technical standards, standard-essential
`patents, and FRAND obligations, there are only a hand-
`ful of litigated cases addressing any FRAND issues, and
`no other appellate case addressing how a payment for
`past infringement, of the sort ordered by the district
`court here, is characterized for Seventh Amendment pur-
`poses. The issue also lacks importance because paten-
`tees, under any likely future scenarios, are almost cer-
`tainly entitled to a jury trial even apart from the reason-
`ing of the decision below. And this case is an excep-
`
`

`

`14
`tionally poor vehicle for review: If TCL’s arguments
`were correct, federal-question jurisdiction—and thus this
`Court’s jurisdiction—would be lacking.
`The court of appeals’ decision is, in any event, correct.
`TCL and its amici complain that juries cannot be trusted
`to decide issues of patent valuation. But the Framers re-
`solved that issue 200 years ago. In our system, juries
`determine damages in all sorts of cases, including for the
`unlawful use of patented technology. TCL’s novel theory
`that a court can order retrospective “equitable considera-
`tion” for past-due payment obligations is not supported
`by the cases it cites and is squarely foreclosed by cases it
`ignores. Further review is unwarranted.
`I. TCL’S REPEATED FORFEITURE OF THE QUESTION
`PRESENTED FORECLOSES REVIEW
`The court of ap

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