Holding bench trial instead of jury trial deprived SEP owner Ericsson of Seventh Amendment rights because trial was held to determine compensatory relief for mobile device maker TCL’s past infringement.

Swedish telecommunications company Telefonaktiebolaget LM Ericsson and its U.S. subsidiary Ericsson Inc. (together, “Ericsson”) should have been given a jury trial instead of a bench trial held to determine a retrospective royalty rate to be applied to a “release payment” for past unlicensed sales of products by mobile device manufacturers TCL Communication Technology Holdings Ltd., TCT Mobile Ltd., and TCT Mobile (US) Inc. (“TCL”) that employed Ericsson’s standard-essential patents (SEPs), the U.S. Court of Appeals for the Federal Circuit has held. Ericsson had a Seventh Amendment right to a jury trial on the release payment because the payment was, in substance, compensatory relief for TCL’s past patent infringement. By calculating the rate via a bench trial, the district court deprived Ericsson of that right, the appellate court said. In addition, because the district court’s decisions on equitable matters—including a prospective royalty rate for the SEP portfolio—were based on issues common to the improperly adjudicated release payment, the district court’s decision was overturned in full and remanded for further proceedings, including a jury trial on the release payment rate (TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson, December 5, 2019, Chen, R.).

Case date: 05 December 2019
Case number: No. 18-1363
Court: United States Court of Appeals, Federal Circuit

A full summary of this case has been published on Kluwer IP Law.


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