Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 1 of 16 PageID #: 1427
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
`ERICSSON INC.,
`TELEFONAKTIEBOLAGET LM
`ERICSSON,
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`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`MEMORANDUM OPINION AND PRELIMINARY INJUNCTION
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`Plaintiffs,
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`
`
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG RESEARCH AMERICA,
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO. 2:20-CV-00380-JRG
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`Defendants.
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`Before the Court is the Emergency Application for Temporary Restraining Order and
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`Anti-Interference Injunction Related to Samsung’s Lawsuit Filed in the Wuhan Intermediate
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`People’s Court of China
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`(the “Motion”) brought by Plaintiffs Ericsson
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`Inc. and
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`Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”). (Dkt. No. 11). Having considered the
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`parties’ oral arguments, and the briefing by the parties and amici, the Court finds that the Motion
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`requesting a preliminary injunction should be and hereby is GRANTED.
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`I.
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`INTRODUCTION
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`On December 11, 2020, Ericsson filed a Complaint against Defendants Samsung
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`Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Research America
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`(collectively, “Samsung”) alleging that Samsung breached its obligation to license its Standard
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`Essential Patents (“SEPs”) to Ericsson on fair, reasonable, and non-discriminatory (“FRAND”)
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`

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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 2 of 16 PageID #: 1428
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`terms in accordance with the obligation Samsung made to the European Telecommunications
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`Standards Institute (“ETSI”), a standard development organization (“SDO”). (Dkt. No. 1).
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`Ericsson and Samsung develop and manufacture cellular technology and have substantial
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`global patent portfolios. (Dkt. No. 11 at 2). Many of both Ericsson’s and Samsung’s patents are
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`SEPs for the 2G, 3G, 4G, and 5G cellular standards. (Id.). In the past, Samsung and Ericsson have
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`entered into global patent licenses, most recently in 2014 a cross-license to reciprocally use their
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`SEPs. (Id. at 2–3). The 2014 agreement called for its expiration at the end of 2020. (Dkt. No. 43
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`at 32:22). Accordingly, over the past year the parties have negotiated terms of a renewed global
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`cross-license. (Dkt. No. 11 at 3; Dkt. No. 26 at 3). Despite their efforts, the parties were unable to
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`come to an agreement as the end of 2020 approached. (Dkt. No. 11 at 3; Dkt. No. 26 at 3). In light
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`of the parties’ lack of an agreement, on December 7, 20201 Samsung2 filed a Civil Complaint in
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`the Wuhan Intermediate People’s Court of Hubei Province (the “Chinese Action”) asking that
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`court to:
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`1. Determine the global licensing terms, including the royalty rates applicable
`for [Samsung Electronics Co., Ltd., Samsung (China) Investment Co., Ltd., and
`Samsung (China) Investment Co., Ltd.’s] communication products in
`accordance with “Fair, Reasonable and Non-discriminatory” (“FRAND”)
`principle for the licensing of all the 4G and 5G standard essential patents
`(“SEPs”) held or controlled by [Telefonaktiebolaget LM Ericsson] and its
`affiliates;
`2. Order [Telefonaktiebolaget LM Ericsson] to bear the litigation costs and the
`just and proper expenses incurred by [Samsung Electronics Co., Ltd., Samsung
`(China) Investment Co., Ltd., and Samsung (China) Investment Co., Ltd.]
`Wuhan Branch as a result of protecting its rights in these proceedings, which
`tentatively calculated are RMB 10 million.3
`
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`1 Samsung alleges that it attempted to file its Complaint in China on December 4, 2020 but was unsuccessful. (Dkt.
`No. 26 at 3). The Court will refer to the date the Wuhan Intermediate People’s Court of Hubei Province accepted the
`filing of Samsung’s China Complaint—December 7, 2020.
`2 The Samsung entities here are different than those in the Chinese Action. However, Samsung Electronics Co. Ltd.
`is a party to both actions and is affiliated with every subsidiary in both actions. (Dkt. No. 26-2 at 5; Dkt. No. 17 at
`5–6). As such, the Samsung parties in both the Chinese Action and this action are functionally the same. Huawei
`Techs., Co. v. Samsung Elecs. Co., No. 3:16-CV-02787-WHO, 2018 WL 1784065, at *6 (N.D. Cal. Apr. 13, 2018).
`3 This quote, and all other quotes from all documents originally filed in China, are from certified English translations
`of such filings. (Dkt. No. 26-2).
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`2
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`(Dkt. No. 26 at 3; Dkt. No. 26-2). No one provided notice to Ericsson of the Chinese Action when
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`it was filed. (Dkt. No. 11 at 4; Dkt. No 26 at 4). On December 11, 2020, a panel of judges or the
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`“collegiate panel” was assigned to preside over the Chinese Action. (Dkt. No. 26-10 at 7). Also on
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`December 11, 2020, Ericsson filed the Complaint in this case. (Dkt. No. 1). Unaware of the
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`Chinese Action, Ericsson notified Samsung of its Complaint in this Court that same day. (Dkt. No.
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`11 at 3; Dkt. No. 11-12 ¶ 4).
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`On December 14, 2020, Samsung filed a Behavior Preservation Application in the Wuhan
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`Intermediate People’s Court of Hubei Province (the “Wuhan Court”) requesting that court to issue
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`an anti-suit injunction (“ASI”) against Ericsson to prevent it from seeking relief relating to its 4G
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`and 5G SEPs anywhere else in the world. (Dkt. No. 30-4). Concurrently, Samsung filed an
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`Application for Delaying Serving the Behavior Preservation Application further requesting the
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`Wuhan Court to “hold the service of the relevant materials of the behavior preservation application
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`of this case and the various notification thereof until the ruling of the behavior preservation comes
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`into effect” based on the high probability that other courts, like this one, would likely take
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`affirmative action to impede enforcement of the ASI in their jurisdiction. (Dkt. No. 30-2 at 2–3).
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`On December 17, 2020, Samsung notified Ericsson of the Chinese Action but did not
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`provide Ericsson with any of the filings from the Chinese Action.4 (Dkt. No. 11 at 4). On
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`December 21, 2020, Samsung again urged the Wuhan Court to issue an anti-suit injunction and to
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`do so within the week through a Supplemental Information from Samsung Regarding Act
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`Preservation Application. (Dkt. No. 26-11). On December 22, 2020, fifteen days after Samsung’s
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`Civil Complaint was filed, and over a week after Samsung sought the ASI, Samsung provided only
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`4 The proceedings in the Chinese Action are conducted solely through paper filings and not via electronic means. (Dkt.
`No. 11 at 4; Dkt. No. 11-12 ¶ 7). Therefore, Ericsson was unable to access such filings unless and until they were
`provided by Samsung or the Wuhan Court itself.
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`3
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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 4 of 16 PageID #: 1430
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`the Civil Complaint from the Chinese Action to Ericsson. (Dkt. No. 11-14). On December 23,
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`2020, Samsung provided the Wuhan Court with a Bank Certificate of Deposit and a Commitment
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`Letter for a bond of RMB 50 million to provide security for the anti-suit injunction. (Dkt. No. 26-
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`9 at 6). On December 25, 2020, the Wuhan Court issued an ASI enjoining Telefonaktiebolaget LM
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`Ericsson and its affiliates from:
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`(1) applying for any preliminary and permanent injunctive relief or administrative
`measures before any courts, customs offices, or administrative enforcement
`agencies either in China or other countries and regions or through any other
`procedures against Samsung Electronics Co., Ltd., Samsung (China) Investment
`Co., Ltd., Samsung (China) Investment Co., Ltd. Wuhan Branch and their affiliates,
`and other subjects which manufacture, use, offer to sell, sell or import Samsung
`telecommunications products, in terms of the 4G and 5G SEPs involved in this
`Case, and the Respondent and its affiliates shall immediately withdraw or suspend
`such claims that have already been filed;
`(2) . . . applying for the enforcement of any preliminary and permanent injunctive
`relief or administrative measures or that has been granted or is likely to be granted
`by any courts, customs offices, or administrative enforcement agencies either in
`China or any other countries and regions or through any other procedures against
`Samsung Electronics Co., Ltd., Samsung (China) Investment Co., Ltd., Samsung
`(China) Investment Co., Ltd. Wuhan Branch and their affiliates, and other subjects
`which manufacture, use, offer to sell, sell or import Samsung telecommunications
`products, in terms of the 4G and 5G SEPs involved in this Case;
`(3) . . . requesting any courts either in China or other countries and regions to
`adjudicate the licensing terms (including the royalty rate) or royalty amount in
`terms of the 4G and 5G SEPs involved in this Case and the Respondent and its
`affiliates shall immediately withdraw or suspend such claims that have already been
`filed;
`(4) . . . initiating any legal proceedings requesting to determine whether the
`Respondent and its affiliates have fulfilled their FRAND obligations in terms of the
`present negotiations for licensing the 4G and 5G SEPs involved in this Case before
`any courts either in China or other countries and regions, and the Respondent and
`its affiliates shall immediately withdraw or suspend such claims that have already
`been filed;
`(5) . . . requesting any courts either in China or other countries and regions to order
`Samsung Electronics Co., Ltd., Samsung (China) Investment Co., Ltd., and
`Samsung (China) Investment Co., Ltd. Wuhan Branch to withdraw this application
`for behavior preservation or to prevent Samsung Electronics Co., Ltd., Samsung
`(China) Investment Co., Ltd., and Samsung (China) Investment Co., Ltd. Wuhan
`Branch from applying for the enforcement of the behavior preservation ruling
`issued by this Court, and the Respondent and its affiliates shall immediately
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`4
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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 5 of 16 PageID #: 1431
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`withdraw or suspend such claims that are likely to be filed or have already been
`filed.
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`(Id. at 12–14). The ASI is in effect for the duration of the Chinese Action and until a future
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`judgment in that Action becomes effective. (Id.). If Ericsson violates the ASI the Wuhan Court
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`states that it will “punish such violations in accordance with Chapter 10 of Civil Procedure Law
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`of the People’s Republic of China,” which includes the levying of substantial fines. (Id. at 14
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`(italics in original)). In accordance with Samsung’s request, the Wuhan Court gave Ericsson notice
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`of the ASI after the ASI had issued. (Dkt. Nos. 11-1 ¶ 7, 11-8). Ericsson received such notice on
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`December 25, 2020. (Dkt. No. 11-8).
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`On December 28, 2020, Ericsson came to this Court and requested an emergency ex parte
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`temporary restraining order to prevent Samsung from interfering with this action or attempting to
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`prevent Ericsson from asserting the full scope of its patent rights in the United States until the
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`Court could hear argument on whether a preliminary injunction should issue. (Dkt. No. 11). At
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`10:00 a.m. on December 28, 2020, the Court granted Ericsson’s Motion, issued a temporary
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`restraining order, and set the Motion for a Preliminary Injunction for hearing on January 7, 2021.
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`(Dkt. No. 14).5
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`II.
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`LEGAL STANDARD
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`It is well established that a federal court is empowered to issue injunctions to protect its
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`jurisdiction. MWK Recruiting Inc. v. Jowers, No. 19-51064, 2020 WL 6572570, at *2 (5th Cir.
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`Nov. 6, 2020) (citing Kaepa, Inc. v. Achilles Corp., 76 F.3d 624, 626 (5th Cir. 1996)). 6 A foreign
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`5 Subsequently, on January 1, 2021, Ericsson filed its Amended Complaint asserting patent infringement of eight U.S.
`Patents. (Dkt. No. 17).
`6 Pursuant to Ericsson’s Amended Complaint, this is now a case for both breach of contract and patent infringement.
`The United States Court of Appeals for the Federal Circuit has exclusive appellate jurisdiction over cases arising under
`the patent laws. 28 U.S.C. § 1295(a). However, for issues not unique to patent law, like the preliminary injunction
`requested here, the Federal Circuit applies the law of the regional circuit in which the appeal would otherwise lie.
`Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., 716 F.3d 586, 590 (Fed. Cir. 2013) (internal citations omitted).
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`5
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`anti-suit injunction is a special application of the general preliminary injunction rules, but “the
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`suitability of such relief ultimately depends on considerations unique to anti-suit injunctions.” Id.
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`(quoting Kahara Bodas Co. v. Perusahaan Pertambangan Minyak Dan Gas Bumi Negara, 335
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`F.3d 357, 364 (5th Cir. 2003)). The Fifth Circuit has adopted a test—often referred to as the
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`Unterweser factors—that weigh “the need to ‘prevent vexatious or oppressive litigation’ and to
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`‘protect the court's jurisdiction’ against the need to defer to principles of international comity.” Id.
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`(citing Kaepa, 76 F.3d at 627, and MacPhail v. Oceaneering Int’l, Inc., 302 F.3d 274, 277 (5th
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`Cir. 2002)). Pursuant to the Unterweser factors, an injunction against the prosecution of a foreign
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`lawsuit may be appropriate when the foreign litigation would: (1) frustrate a policy of the forum
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`issuing the injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or
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`quasi in rem jurisdiction; or (4) cause prejudice or offend other equitable principles. Id. (citing
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`Kaepa, 76 F.3d at 627 n.9 and In re Unterweser Reederei, GmbH, 428 F.2d 888, 890 (5th Cir.
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`1970)). In applying this test, the Fifth Circuit has rejected the approach taken by some other
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`Circuits, which “elevates principles of international comity to the virtual exclusion of all other
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`considerations.” Id. (citing Kaepa, 76 F.3d at 627). Rather, the Fifth Circuit has noted that the
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`“notions of comity do not wholly dominate the analysis to the exclusion of these other concerns.”
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`Id. (citing Kahara Bodas, 335 F.3d at 366) (alteration omitted).
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`To determine whether proceedings in another forum constitute “vexatious or oppressive”
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`litigation that threatens the court’s jurisdiction, the domestic court considers the following
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`interrelated factors: (1) the inequitable hardship resulting from the foreign suit; (2) the foreign
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`suit’s ability to frustrate and delay the speedy and efficient determination of the cause; and (3) the
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`extent to which the foreign suit is duplicative of the litigation in the United States. Id. (citing
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`Kaepa, 76 F.3d at 627). “[T]he duplicative factor is about legal, not factual, similarity.” Id. at *4
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`6
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`(emphasis in original). Suits are duplicative “where they involve the same or similar legal bases or
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`identical claims.” Id. (internal citations omitted).
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`As noted above, Ericsson is not seeking an anti-suit injunction to prevent the Chinese
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`Action from proceeding. Rather, Ericsson is seeking an anti-anti-suit injunction (sometimes called
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`an anti-interference injunction) to prevent Samsung from attempting to enforce the ASI and
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`thereby interfering with this Court’s exercise of its own jurisdiction. To this Court’s knowledge,
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`the Fifth Circuit has not provided guidance on the application of the Unterweser factors under
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`these particular circumstances. Thus, while the test set forth above relates to the issuance of an
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`anti-suit injunction, rather than an anti-interference injunction, it is nevertheless instructive and
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`will be applied here. See Teck Metals Ltd. v. Certain Underwriters at Lloyd’s, London, No. CV-
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`05-411-LRS, 2009 WL 4716037, at *3 (E.D. Wash. Dec. 8, 2009).
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`III. DISCUSSION
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`1. Standing
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`As an initial matter, Samsung alleges that Ericsson, Inc. does not have standing to seek
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`relief on behalf of Telefonaktiebolaget LM Ericsson because Telefonaktiebolaget LM Ericsson is
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`the defendant in the Chinese Action and is the only entity that would be fined as a result of the
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`ASI. (Dkt. No. 26 at 15; Dkt. No. 37 at 13). Accordingly, Samsung argues there is no risk of
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`irreparable harm to Ericsson, Inc. (Dkt. No. 26 at 15; Dkt. No. 37 at 13); see Voda v. Cordis Corp.,
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`536 F.3d 1311, 1329 (Fed. Cir. 2008). During the hearing on the Motion, counsel for Ericsson
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`confirmed that the Motion and the requested anti-interference injunction are sought on behalf of
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`both Ericsson, Inc. and Telefonaktiebolaget LM Ericsson. (Dkt. No. 43 at 9:9–12). Accordingly,
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`this Court finds that Ericsson, Inc. and Telefonaktiebolaget LM Ericsson have standing to seek the
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`requested relief.
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`7
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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 8 of 16 PageID #: 1434
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`2. Unterweser Factors
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`a. Frustration of a Policy of the Forum Issuing the Injunction
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`The public interest strongly supports this Court’s continued exercise of its jurisdiction.
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`Allowing Samsung to enjoin Ericsson from asking this Court to adjudicate legally cognizable
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`claims under United States law would frustrate this Court’s compelling interest in ensuring that
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`litigation within its legitimate jurisdiction proceed in this forum. Samsung argues that the ASI was
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`a legitimate exercise of the Wuhan Court’s jurisdiction as the first-filed action between Samsung
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`and Ericsson for their worldwide rate dispute. (Dkt. No. 26 at 7). The order in which the suits were
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`filed is not dispositive, and the issues before this Court and the issues before the Wuhan Court are
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`different. See Microsoft Corp. v. Motorola, Inc., 696 F.3d 872, 887 (9th Cir. 2012) (noting that the
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`order in which the foreign and domestic suits are filed is not dispositive). Accordingly, both Courts
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`can properly exercise jurisdiction over the respective causes of action brought before them. The
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`purpose of an Article III Court is to be an impartial adjudicator of cases and controversies within
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`its lawfully conferred jurisdiction. U.S. Const. art. III, § 2. To enforce the ASI in this case would
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`frustrate the “virtually unflagging obligation of the federal courts to exercise the jurisdiction given
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`them.” Colorado River Water Conserv. Dist. v. U.S., 424 U.S. 800, 817 (1976).
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`b. Vexatious or Oppressive
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`In the context of an anti-suit injunction, the Court analyzes whether the foreign litigation
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`would be vexatious or oppressive. MWK, 2020 WL 6572570, at *2. However, here a dispute exists
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`as to whether in the context of an anti-interference injunction the litigation should be analyzed
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`from the posture of this Court or the foreign court. There appears to be no direct Fifth Circuit
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`guidance on this issue. Accordingly, the Court will address whether both litigations are vexatious
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`or oppressive from the posture of both jurisdictions under the factors set forth in MWK and Kaepa.
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`8
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`Id. (citing Kaepa, 76 F.3d at 627). Under either analysis, the Court finds that this factor supports
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`the issuance of an anti-interference injunction.
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`i. Inequitable Hardship Resulting from the Foreign Suit
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`Proceeding to enforce the ASI will impose an inequitable hardship on Ericsson because it
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`will unfairly deprive Ericsson of the right to bring claims it is entitled to bring under United States
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`law. Furthermore, the ASI was entered with no notice to Ericsson at the request of Samsung. (Dkt.
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`No. 30-2). Without notice or an opportunity to be heard, Ericsson found itself enjoined from
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`exercising its right to enforce legitimate causes of action under United States law pertaining to its
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`4G and 5G SEPs in the United States. The ASI imposes an inequitable hardship on Ericsson
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`because the ASI’s sweeping provisions deprive Ericsson of the right to attempt to obtain redress
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`for claims it has the right to bring under the laws of the United States.
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`Samsung argues that the process for obtaining the ASI is no different than the process this
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`Court used in issuing the ex parte temporary restraining order. It is not. Obtaining the ASI as
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`Samsung did is more akin to issuing an ex parte preliminary injunction, not a temporary restraining
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`order. A temporary restraining order, such as in this case, typically lasts fourteen days at most. See
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`Fed. R. Civ. P. 65(b)(2). The ASI lasts through the ultimate conclusion of the Chinese Action,
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`which could be years from now. (Dkt. No. 26-9 at 12–14). Additionally, before this Opinion and
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`Preliminary Injunction was issued, Samsung had the opportunity to file multiple briefs and present
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`oral argument for this Court to consider. (Dkt. Nos. 26, 34, 37, 43). Notably, the ASI is only
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`dissolved if the respondent, Telefonaktiebolaget LM Ericsson, prevails on a motion to reconsider
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`filed within five days in the Wuhan Court, completely shifting the burden to the responding party.
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`See (Dkt. No. 26-9 at 14). In contrast, this Court’s temporary restraining order is dissolved
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`automatically unless Ericsson, as the petitioner, meets its burden and prevails in a motion for
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`9
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`preliminary injunction. Regardless of whether the procedure Samsung followed comported with
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`Chinese law, Ericsson had none of the opportunities afforded to Samsung, and as a result would—
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`but for this Court’s preliminary injunction—be excluded from bringing causes of action in this
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`forum where both parties have a significant presence. (Dkt. No. 11 at 1). Additionally, not only
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`would enforcement of the ASI impede Ericsson’s ability to bring lawful causes of action, it would
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`unfairly but necessarily put Ericsson in a weaker negotiating position when it comes to cross
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`licensing its 4G and 5G SEPs to both Samsung and others. Ericsson argues this was the real
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`motivation behind the ASI. (Dkt. No. 11 at 2). This Court does not disagree.
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`Conversely, Samsung will not suffer inequitable hardship if litigation proceeds in both
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`courts. In fact, Samsung’s counsel agreed on the record in this Court that parallel actions are
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`inevitable. (Dkt. No. 43 at 36:4–10). The United States is both Ericsson’s and Samsung’s largest
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`market, and both Ericsson and Samsung have large offices, including relevant personnel involved
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`in these licensing discussions, in the Eastern District of Texas. (Dkt. No. 11 at 1). When asked if
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`this action was vexatious or oppressive to it, Samsung readily admitted it was not. (Dkt. No. 43 at
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`76:18–21). Accordingly, the Court finds that Ericsson would suffer inequitable hardship due to the
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`enforcement of the ASI, while Samsung would not suffer inequitable hardship if this case is
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`allowed to proceed.
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`ii. The Foreign Suit’s Ability to Frustrate and Delay the Speedy and Efficient
`Determination of the Cause
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`If unaddressed, the ASI7 would frustrate and delay the speedy and efficient determination
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`of legitimate causes of action before this Court. In fact, the ASI specifically prohibits their
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`7 The Court analyzes the enforcement of the ASI because Ericsson seeks only to enjoin the enforcement of the ASI,
`not the entire Chinese Action.
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`10
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`

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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 11 of 16 PageID #: 1437
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`adjudication.8 Samsung furnished Ericsson’s Complaint to the Wuhan Court and specifically asked
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`for an injunction preventing this case from moving forward. (Dkt. Nos. 30-2, 30-3). If the ASI is
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`given its full effect, it would lay claim to causes of action properly raised in this Court and not
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`raised in the Chinese Action.
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`On the other hand, the causes of action here have no implication on the speedy and efficient
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`determination of the issues raised before the Wuhan Court. The Wuhan Court can continue to
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`adjudicate the claims that Samsung has brought before it, pursuant to its laws and its rules of civil
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`procedure. This Court does not intend—nor does it wish—to frustrate or delay the speedy and
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`efficient determination of the case brought in Wuhan. Without hesitation this Court equally insists
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`that it be permitted to adjudicate the issues raised here pursuant to its own legitimate jurisdiction
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`and without interference.
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`iii. The Extent to Which the Foreign Suit and the Domestic Suit are Duplicative
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`The Chinese Action and this suit are not duplicative. As the Fifth Circuit has recently
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`clarified, “the duplicative factor is about legal, not factual, similarity.” MWK, 2020 WL 6572570
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`at *4 (emphasis in original). Suits are duplicative “where they involve the same or similar legal
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`bases or identical claims.” Id. (internal citations omitted). The Chinese Action and this suit may
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`be factually similar but involve very separate legal questions.9 Samsung asks the Wuhan Court to
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`determine the global licensing terms, including the FRAND royalty rates applicable for Samsung’s
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`communication products implementing all of Ericsson’s 4G and 5G SEPs. Ericsson, on the other
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`hand, asks this Court to look at the parties’ pre-suit negotiation conduct and determine whether the
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`8 Samsung notes that not all causes of action before this Court are enjoined by the ASI. (Dkt. No. 43 at 78:2–7). While
`that may be true, the inability for this Court to hear one or many causes of action equally offends the efficient
`adjudication of such issues. Ericsson has a right to join “as many claims as it has” in one action. Fed. R. Civ. P. 18(a).
`9 By recognizing that these two questions are not one and the same, this Court is not commenting on whether it would
`or would not be ultimately willing to set a global FRAND rate. The question of whether a global FRAND rate should
`be set is not now before this Court.
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`
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`11
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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 12 of 16 PageID #: 1438
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`parties breached or complied with their mutual FRAND obligations. The Wuhan Court is asked to
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`provide a number. This Court is asked to evaluate conduct. The legal questions presented to each
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`Court are different.10
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`c. Threaten the Issuing Court’s In Rem or Quasi In Rem Jurisdiction
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`This factor is not applicable. Although Ericsson brings claims for patent infringement and
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`breach of contract, Samsung acknowledges the only claims within the scope of the ASI are
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`Ericsson’s breach of contract claims. (Dkt. No. 43 at 78:8–11). Breach of contract claims are in
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`personam actions. See Page v. JPMorgan Chase Bank, N.A., No. 4:13-CV-407-Y, 2013 WL
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`12198405, at *1 (N.D. Tex. Oct. 30, 2013). As such, this factor is not implicated.
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`d. Cause Prejudice or Offend Other Equitable Principles
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`Issuance of an anti-interference injunction in this case will not cause prejudice to Samsung
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`or offend other equitable principles. Through the ASI, Samsung attempts to prevent Ericsson from
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`seeking injunctive relief relating to its 4G and 5G SEPs in any tribunal in the world except in the
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`Wuhan Court. (Dkt. No. 26-9 at 12–13). However, on January 7, 2021, Samsung filed a Complaint
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`in the United States International Trade Commission seeking injunctive relief against Ericsson for
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`Ericsson’s 4G and 5G compliant products based on alleged infringement of Samsung’s 4G and 5G
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`SEPs—seeking the very type of injunctive relief the ASI bars Ericsson from seeking. See Certain
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`Wireless Communications Equipment and Components Thereof, Inv. No. 337-TA-3522 (Jan. 7,
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`
`10 In fact, Ericsson argues that its FRAND obligation is subject to the express condition that Samsung grant a reciprocal
`license. (Dkt. No. 30 at 7). Therefore, Ericsson argues, the unilateral relief Samsung seeks in the Chinese Action may
`or may not be available. (Id.). Regardless of how this issue plays out on the merits, it demonstrates that it is far from
`certain that the question posed to the Wuhan Court will impact or interfere with the issues presented here. The Court
`does not currently express an opinion regarding whether any judgment from the Chinese Action would have a res
`judicata effect. To the extent, however, the Wuhan Court provides a global FRAND rate for Ericsson’s 4G and 5G
`SEPs in isolation, such a rate is unlikely to obviate this Court’s FRAND determinations because the causes of action
`here require this Court to consider offers and negotiations for a cross-license in which Samsung would make a
`balancing payment that inherently accounts for the value of its own 4G and 5G SEPs and not solely the value of
`Ericsson’s 4G and 5G SEPs.
`
`
`
`12
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`

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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 13 of 16 PageID #: 1439
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`2021). If Samsung can seek redress of its claims through injunctive relief in the United States, it
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`would be the height of inequity (and hypocrisy) to allow the ASI to tie Ericsson’s hands from
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`doing the same.
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`Additionally, the Court is persuaded that the financially significant penal provisions of the
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`ASI create an inequitable disparity between the parties which prejudices Ericsson’s right to assert
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`lawful causes of action. Drawing from the well of its inherent authority, this Court should not
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`allow Samsung to impose financial penalties against Ericsson for attempting to file the same claims
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`that Samsung itself has filed without a counterbalance. The issues present before this Court, the
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`Wuhan Court, the United States International Trade Commission, and elsewhere should be
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`resolved on the merits and not based on unfair economic leverage gained through litigious
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`gamesmanship. Equity demands no less.
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`Furthermore, international comity is not offended by the issuance of an anti-interference
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`injunction which seeks to preserve the ability for litigation to proceed in parallel. Laker Airways
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`Ltd. v. Sabena, Belgian World Airlines, 731 F.2d 909, 926–27 (D.C. Cir. 1984). No international
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`public policy or issue is implicated by this case: Ericsson and Samsung are private parties engaged
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`in a global commercial struggle. Kaepa, 76 F.3d at 627. This Court is not instructing Samsung that
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`it cannot continue to prosecute its claims in the Wuhan Court nor is this Court seeking to enjoin
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`the furtherance of that proceeding. This Court believes it must act for the targeted purpose of
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`allowing both suits to proceed without interference. Under these circumstances, this Court finds
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`that an anti-interference injunction in no way threatens notions of international comity.
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`3. Ericsson’s Requested Relief
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`Although, under the Unterweser factors, an anti-interference injunction is warranted in this
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`case, the Court finds that some aspects of Ericsson’s requested relief is too broad. Injunctive relief
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`
`
`13
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`Case 2:20-cv-00380-JRG Document 45 Filed 01/11/21 Page 14 of 16 PageID #: 1440
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`is an extraordinary remedy that should be narrowly tailored to prevent irreparable harm. MWK,
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`2020 WL 6572570, at *2. Ericsson requests that this Court issue a preliminary anti-interference
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`injunction ordering Samsung to: (1) not take actions in the Chinese Action that would interfere
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`with this Court’s jurisdiction over this matter; (2) not take actions in the Chinese Action that would
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`deprive Ericsson, Inc. and all of its corporate parents, subsidiaries, and affiliates of its right to
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`assert the full scope of its U.S. patent rights; (3) promptly send documents filed in the Chinese
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`Action to Ericsson; and (4) withdraw the ASI as to the U.S., or indemnify Ericsson against any
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`fines levied against Ericsson due to the ASI, or bar Samsung from participating any further in the
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`Chinese Action unless and until any fine related to the ASI is lifted.
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`As this Court has previously stated, this Court does not seek to insert itself into matters of
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`Chinese law or civil procedure, but simply to preserve its jurisdiction over the causes of action
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`properly before it. Accordingly, the Court declines to order Samsung to withdraw the ASI, bar
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`Samsung from participating in the Chinese Action, or require Samsung to promptly send
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`documents filed in the Chinese Action to Ericsson. Although this Court maintains a public docket
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`equally accessible by electronic means to both parties and the public, it is not for this Court to
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`require Samsung to operate in a foreign jurisdiction as though it were here. Furthermore, this Court
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`will not order Samsung to make any formal motion in the Chinese Action or seek to interfere with
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`it participating therein. That said, this Court affirmatively finds that a tailored indemnification
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`provision will adequately address this Court’s concern that