A public redacted version (106 pages) of the initial decision of ITC Administrative Law Judge Cameron Elliot on a non-SEP investigation initiated by Ericsson has been released. According to the Initial Decision, Judge Elliot did not find that Lenovo infringed Ericsson's valid patents, but found that Lenovo's license-based defense failed and that the scope of the 2011 License Agreement between the parties did not encompass the newly introduced Motorola smartphones and other wireless devices. Moreover, Judge Elliot scolded the parties for “wasting a great deal of almost irrelevant ink on this issue.”

On October 12, 2023, Ericsson filed a petition for a 337 investigation with the U.S. ITC, asserting that Lenovo's export, import, and sale of products in the U.S. violated U.S. Section 337, specifically by infringing U.S. Patents Nos. 7,151,430, 9,509,273, 9,313,178, 11,122, 313, 11,122, 313, 11,122, 313, 11,122, 313, 11,122, 313, 11,122, 313, 313, 313, 11,122, 313, 313, 313, 313, 314, and 317, and that the U.S. Patent Office has not been informed of any infringement by the parties. 313, No. 10,972,654. On November 14, 2023, the ITC formally voted to initiate a 337 investigation (Investigation No. 337-TA-1376).

The decision noted that the dispute between the parties centered on whether the products alleged in the ITC investigation (the “Accused Products”) were licensed under the 2011 License Agreement (which relates to Section 2.4A of the License Agreement, which is attached at the end of the document).

Elliot J held that the phrase “as of the Effective Date of this Agreement” could only reasonably be interpreted as qualifying what products fell within the “Licensed Mobile Device Products” (rather than a broad “field”). “). For example, a product could be updated, but the “field” could not be updated. Judge Elliot therefore assumed that any product on the market as of the effective date of the agreement (January 2011) was covered by the agreement, although of course certain reasonable updates and extensions would be covered.

However, the 17 Motorola phones targeted by Ericsson in the ITC investigation “were not introduced before 2020,” nine years after the Ericsson - Motorola license agreement. For those with experience in smartphone patent licensing, this is an extremely long term. Contract terms of five or seven years (or even just three years in some cases) are much more common. If Lenovo's expansive interpretation of the license agreement stands, it could continue to assert license-based defenses even decades into the future. It is commercially unreasonable to expand the scope of the 2011 License Agreement so broadly.

Attached is an excerpt from the original paragraph 2.4A of the 2011 License Agreement:

The license grants provided in Sections 2.1, 2.3 and 2.4 above apply only to Licensed Wireless Mobile Device Products, Licensed Network Products and Licensed IDEN Products in the FIELD of Motorola Mobility as of the Effective Date hereof and commercially reasonable updates or extensions of such Licensed products. For the purpose of this Section 2.4A, the term “FIELD” means the practice of the Licensed Patents in any For the purpose of this Section 2.4A, the term “FIELD” means the practice of the Licensed Patents in any field or fields in which Motorola Mobility operates or could reasonably be expected to operate as of the Effective Date.