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UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

Before the Honorable Cameron R. Elliot


Administrative Law Judge

In the Matter of

CERTAIN MOBILE PHONES AND


TABLET COMPUTERS, ALL WITH Inv. No. 337-TA-1301
SWITCHABLE CONNECTIVITY

RESPONDENT APPLE INC.’S RESPONSE TO THE COMPLAINT OF


ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON UNDER
SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED,
AND NOTICE OF INVESTIGATION

RESPONDENT COUNSEL FOR APPLE INC.

Apple Inc. Benjamin C. Elacqua


Fish & Richardson P.C.
One Apple Park Way 1221 McKinney Street, Suite 2800
Cupertino, CA 95014 Houston, TX 77010
Tel: 408-996-1010 Telephone: (713) 654-5300
Facsimile: (713) 652-0109

Betty Chen
Fish & Richardson P.C.
500 Arguello Street
Suite 500
Redwood, CA 94063
Telephone: (650) 839-5070
Facsimile: (650) 839-5071

Ruffin B. Cordell
Richard A. Sterba
Fish & Richardson P.C.
1000 Maine Avenue, S.W., Suite 1000
Washington, D.C. 20024
Telephone: (202) 783-5070
Facsimile: (202) 783-2331

Inv. No. 337-TA-1301


Apple Inc.’s Response to Complaint and Notice
Aamir Kazi
Benjamin Thompson
Jacqueline Tio
Katherine Reardon
Fish & Richardson P.C.
1180 Peachtree St SE, Suite 2100
Atlanta, GA 30309
Telephone: (404) 892-5005
Facsimile: (404) 892-5002

Andrew Pearson
Whitney Reichel
Fish & Richardson P.C.
One Marina Park Drive
Boston, MA 02210
Telephone: (617) 542-5070

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Apple Inc.’s Response to Complaint and Notice
PREAMBLE

Pursuant to 19 C.F.R. § 210.13, Respondent Apple Inc. (“Apple” or “Respondent”) by

and through its attorneys, hereby responds to the Complaint Under Section 337 of the Tariff Act

of 1930 as Amended (the “Complaint”), filed by Ericsson Inc. and Telefonaktiebolaget LM

Ericsson (“Ericsson” or “Complainants”) on January 18, 2022, and to the Notice of Institution of

Investigation (the “Notice”) published in the Federal Register on February 24, 2022 (87 Fed.

Reg. 10386).

Apple denies that it has engaged in acts of unfair competition in violation of Section 337

by importing, selling for importation, and/or selling after importation into the United States any

product that infringes, literally and/or under the doctrine of equivalents, directly, indirectly, by

contribution and/or by inducement, any valid Asserted Claim of U.S. Patent Nos. 8,792,454 (“the

’454 patent”); 10,880,794 (“the ’794 patent”); and 8,472,999 (“the ’999 patent”) (collectively

“the Asserted Patents”). Apple denies that the Asserted Claims of the Asserted Patents are valid

and enforceable. Except as specifically admitted herein, Apple denies all of the allegations of

the Complaint. To the extent that any allegations of the Complaint refer to or rely upon

information not previously supplied to Apple, Apple is without information sufficient to admit or

deny such allegations, and therefore denies the same. In responding to the Complaint and the

Notice, Apple has understood “Accused Products” to mean the products accused of infringement

in the Complaint. Apple reserves the right to take further positions and raise additional defenses

as may become apparent as a result of additional information discovered subsequent to filing this

Response, or to the extent Ericsson modifies its Complaint or contentions.

Inv. No. 337-TA-1301


Apple Inc.’s Response to Complaint and Notice
RESPONSE TO COMPLAINT

In answer to the allegations set forth in the Complaint, Apple responds as follows:

I. INTRODUCTION1

To the extent that Paragraph 1 contains conclusions of law, no response is

necessary. Apple denies that it has engaged in unlawful importation into the United States, sale

for importation into the United States, offer for sale for importation into the United States, and/or

sale within the United States after importation of the Accused Products. Apple further denies that

the Accused Products infringe any valid Asserted Claim of the ’454 patent, the ’794 patent, or the

’999 patent.

To the extent that Paragraph 2 contains conclusions of law, no response is

necessary. Apple admits that Exhibits 1-3 to the Complaint purport to be certified and uncertified

copies of the Asserted Patents, Exhibits 4-6 to the Complaint purport to be certified and uncertified

copies of the recorded assignments for the Asserted Patents, and Appendices Nos. A-C to the

Complaint purport to be certified and uncertified copies of the prosecution histories of the Asserted

Patents. Apple lacks sufficient knowledge or information to form a belief as to the truth of any

remaining allegations contained in Paragraph 2 and, on that basis, denies them.

Apple admits that Apple is the Proposed Respondent in the Complaint. Apple

admits that certain mobile phones and tablet computers are manufactured and assembled overseas,

and are sold for importation into the United States, imported into the United States, or sold within

the United States after importation by or on behalf of Apple. Apple denies the remaining

allegations and characterizations contained in Paragraph 3.

1
Apple has adopted headings in the Complaint for ease of reference. However, to the extent that
such headings themselves contain factual and legal characterizations, Apple denies such
characterizations.
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Apple Inc.’s Response to Complaint and Notice
To the extent that Paragraph 4 contains conclusions of law, no response is

necessary. Apple lacks sufficient knowledge or information to form a belief as to the truth of the

allegations contained in Paragraph 4 and, on that basis, denies them.

To the extent that Paragraph 5 contains conclusions of law, no response is

necessary. Apple admits that Ericsson seeks relief in the Complaint, including a permanent

exclusion order, a cease and desist order, and the imposition of a bond during the Presidential

review period. Apple denies that any of its Accused Products infringe any valid and enforceable

Asserted Claim of the Asserted Patents. Apple denies that it has violated Section 337 in any

manner. Apple denies that Ericsson is entitled to any relief whatsoever, including without

limitation, the relief requested in Paragraph 5.

II. COMPLAINANTS

Apple admits that Ericsson Inc. and Telefonaktiebolaget LM Ericsson are the

Complainants in this investigation.

On information and belief, Apple admits that Ericsson Inc. is a corporation

organized and existing under the laws of the State of Delaware, having its principal place of

business at 6300 Legacy Drive, Plano, Texas 75024.

On information and belief, Apple admits that LM Ericsson is a corporation

organized and existing under the laws of the Kingdom of Sweden, having its principal place of

business at Torshamnsgatan 21, Kista, SE-164 83 Stockholm, Sweden. Apple lacks sufficient

knowledge or information to form a belief as to the truth of the remaining allegations contained in

Paragraph 8 and, on that basis, denies them.

Apple lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 9 and, on that basis, denies them.

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Apple Inc.’s Response to Complaint and Notice
Apple lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 10 and, on that basis, denies them.

Apple lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 11 and, on that basis, denies them.

Apple lacks sufficient knowledge or information to form a belief as to the truth of

the remaining allegations contained in Paragraph 12 and, on that basis, denies them.

III. PROPOSED RESPONDENT APPLE

Apple admits that it is a corporation organized under the laws of the State of

California. Apple admits that its headquarters and principal place of business is at One Apple Park

Way, Cupertino, CA 95014.

To the extent that Paragraph 14 contains conclusions of law, no response is

necessary. Apple admits that it designs, develops, imports, and sells after importation certain

iPhones and iPads. Apple admits that certain iPhones and iPads are manufactured on behalf of

Apple. Apple admits that certain Accused Products are sold within the United States through retail

and online stores, direct sales, and third-party resellers. Apple admits that it performs services to

support the sale of certain Accused Products into and within the United States, including marketing

certain Accused Products, developing and distributing software, and certain after-sale services. To

the extent not specifically and expressly admitted, Apple denies all other allegations and

characterizations in Paragraph 14.

IV. THE ACCUSED PRODUCTS AND TECHNOLOGY AT ISSUE

Apple admits that Complainants have described the Accused Products as “mobile

phones and tablet computers, all with switchable connectivity, and products containing same,”

pursuant to Commission Rule 210.12(a)(12). Apple admits that Complainants have further

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described the Accused Products to “include but are not limited to the Apple iPhone mobile phones,

Apple iPad tablet computers, and products containing same.” To the extent not specifically and

expressly admitted, Apple denies all other allegations and characterizations in Paragraph 15.

To the extent that Paragraph 16 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 16

constitute a complete and accurate description of the ’454, ’794, or ’999 patent. Apple lacks

knowledge or information sufficient to form a belief regarding the truth of the statements and

characterizations contained in Paragraph 16 and, on that basis, denies them.

V. THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTIONS

A. U.S. Patent 8,792,454

Identification and Ownership of the ’454 Patent

Apple admits that the ’454 patent states on its face that it is titled “Secure and

Seamless WAN-LAN Roaming,” issued on January 29, 2014. Apple admits that the ’454 patent

on its face lists Kenichi Taniuchi, Tao Zhang, Prathima Agrawal, Ashutosh Dutta, Sunil Madhani,

Shinichi Baba, Kensaku Fujimoto, Yasuhiro Katsube, Toshikazu Kodama, and Yoshihiro Ohba as

the inventors. Apple admits that the ’454 patent states on its face that it issued from Application

No. 13/554,711, filed on July 20, 2012. Apple admits that Exhibit 1 to the Complaint purports to

be a copy of the ’454 Patent. Apple lacks knowledge or information sufficient to form a belief

regarding the truth of the remaining statements contained in Paragraph 17 and, on that basis, denies

them.

Apple admits that the ’454 patent on its face shows that it has 2 independent claims

and 7 dependent claims. Apple denies that any of its Accused Products infringe any valid and

enforceable Asserted Claim of the ’454 patent. Apple denies that it has violated Section 337 in

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any manner. Apple admits that Exhibit 1 to the Complaint purports to be a copy of the ’454 Patent.

Apple lacks knowledge or information sufficient to form a belief regarding the truth of the

remaining statements and characterizations contained in Paragraph 18 and, on that basis, denies

them.

To the extent that Paragraph 19 contains conclusions of law, no response is

necessary. Apple denies that the Asserted Claims of the ’454 patent are valid, enforceable, or

currently in full force and effect until July 21, 2024.

To the extent that Paragraph 20 contains conclusions of law, no response is

necessary. Apple lacks sufficient knowledge or information to form a belief as to the truth of the

allegations contained in Paragraph 20 and, on that basis, denies them.

Apple admits that Appendix A purports to be an electronic version of a copy of the

prosecution history of the ’454 patent. Apple admits that Appendix D purports to include

electronic copies of technical references identified in the prosecution history of the ’454 patent.

To the extent not specifically and expressly admitted, Apple denies all other allegations and

characterizations in Paragraph 21.

Non-Technical Description of the ’454 Patent

To the extent that Paragraph 22 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 22

constitute a complete and accurate description of the ’454 patent. Apple denies the allegations

contained in Paragraph 22 as they relate in any way to a proposed construction of any Asserted

Claim of the ’454 patent. Apple further denies that the ’454 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

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as to the truth of the remaining allegations contained in Paragraph 22 and, on that basis, denies

them.

To the extent that Paragraph 23 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 23

constitute a complete and accurate description of the ’454 patent. Apple denies the allegations

contained in Paragraph 23 as they relate in any way to a proposed construction of any Asserted

Claim of the ’454 patent. Apple further denies that the ’454 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

as to the truth of the remaining allegations contained in Paragraph 23 and, on that basis, denies

them.

Foreign Counterparts

To the extent that Paragraph 24 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 24 and, on that basis, denies them.

To the extent that Paragraph 25 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 25 and, on that basis, denies them.

Licenses

Apple admits that Confidential Exhibit 16C purports to contain a list of entities with

a current license involving the ’454 patent. Apple lacks knowledge or information sufficient to

form a belief regarding the truth of the remaining statements and allegations in Paragraph 26 and,

on that basis, denies them.

B. U.S. Patent No. 10,880,794

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Identification and Ownership of the ’794 Patent

Apple admits that the ’794 patent states on its face that it is titled “Inter-Band

Handover of the Same Physical Frequency,” issued on December 29, 2020. Apple admits that the

’794 patent on its face lists Peter Alriksson and Maria Ulander as the inventors. Apple admits that

the ’794 patent states on its face that it issued from Application No. 16/328,390, filed as

Application No. PCT/EP/2016/070609 on September 1, 2016. Apple admits that Exhibit 2 to the

Complaint purports to be a copy of the ’794 patent. Apple lacks knowledge or information

sufficient to form a belief regarding the truth of the remaining statements contained in

Paragraph 27 and, on that basis, denies them.

To the extent that Paragraph 28 contains conclusions of law, no response is

necessary. Apple admits that the ’794 patent on its face shows that it has 4 independent claims

and 16 dependent claims. Apple denies that any of its Accused Products infringe any valid and

enforceable Asserted Claim of the ’794 patent. Apple denies that it has violated Section 337 in

any manner. Apple admits that Exhibit 2 to the Complaint purports to be a copy of the ’794 Patent.

Apple lacks knowledge or information sufficient to form a belief regarding the truth of the

remaining statements and characterizations contained in Paragraph 28 and, on that basis, denies

them.

To the extent that Paragraph 29 contains conclusions of law, no response is

necessary. Apple denies that the Asserted Claims of the ’794 patent are valid, enforceable, or

currently in full force and effect until September 1, 2036.

To the extent that Paragraph 30 contains conclusions of law, no response is

necessary. Apple admits that Exhibit 5 to the Complaint is a document that purports to reflect an

assignment of U.S. Application No. 16/328,390. Apple lacks knowledge or information sufficient

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to form a belief regarding the truth of the remaining statements and allegations in Paragraph 30

and, on that basis, denies them.

Apple admits that Appendix B purports to be an electronic version of a certified

copy of the prosecution history of the ’794 patent. Apple admits that Appendix E purports to

include electronic copies of technical references identified in the prosecution history of the ’794

patent. To the extent not specifically and expressly admitted, Apple denies all other allegations

and characterizations in Paragraph 31.

Non-Technical Description of the ’794 Patent

To the extent that Paragraph 32 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 32

constitute a complete and accurate description of the ’794 patent. Apple denies the allegations

contained in Paragraph 32 as they relate in any way to a proposed construction of any Asserted

Claim of the ’794 patent. Apple further denies that the ’794 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

as to the truth of the remaining allegations contained in Paragraph 32 and, on that basis, denies

them.

To the extent that Paragraph 33 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 33

constitute a complete and accurate description of the ’794 patent. Apple denies the allegations

contained in Paragraph 33 as they relate in any way to a proposed construction of any Asserted

Claim of the ’794 patent. Apple further denies that the ’794 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

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as to the truth of the remaining allegations contained in Paragraph 33 and, on that basis, denies

them.

Foreign Counterparts

To the extent that Paragraph 34 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 34 and, on that basis, denies them.

To the extent that Paragraph 35 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 35 and, on that basis, denies them.

Licenses

Apple admits that Confidential Exhibit 16C purports to contain a list of entities with

a current license involving the ’794 patent. Apple lacks knowledge or information sufficient to

form a belief regarding the truth of the remaining statements and allegations in Paragraph 36 and,

on that basis, denies them.

C. U.S. Patent No. 8,472,999

Identification and Ownership of the ’999 Patent

Apple admits that the ’999 patent states on its face that it is titled “Method and

System for Enabling Dual Standby State in a Wireless Communication System,” issued on June

25, 2013. Apple admits that the ’999 patent on its face lists Xuejun Zhang as the inventor. Apple

admits that the ’999 patent states on its face that it issued from Application No. 12/261,752, filed

on October 30, 2008. Apple admits that Exhibit 3 to the Complaint purports to be a copy of the

’999 Patent. Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the remaining statements contained in Paragraph 37 and, on that basis, denies them.

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To the extent that Paragraph 38 contains conclusions of law, no response is

necessary. Apple admits that the ’999 patent on its face shows that it has 3 independent claims

and 16 dependent claims. Apple denies that any of its Accused Products infringe any valid and

enforceable Asserted Claim of the ’999 patent. Apple denies that it has violated Section 337 in

any manner. Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the remaining statements and characterizations contained in Paragraph 38 and, on that basis,

denies them.

To the extent that Paragraph 39 contains conclusions of law, no response is

necessary. Apple denies that the Asserted Claims of the ’999 patent are valid, enforceable, or

currently in full force and effect until June 12, 2030.

To the extent that Paragraph 40 contains conclusions of law, no response is

necessary. Apple admits that Exhibit 6 to the Complaint is a document purports to reflect an

assignment of U.S. Application No. 12/261,752. Apple lacks knowledge or information sufficient

to form a belief regarding the truth of the remaining statements and allegations in Paragraph 40

and, on that basis, denies them.

Apple admits that Appendix C purports to be an electronic version of a copy of the

prosecution history of the ’999 patent. Apple admits that Appendix F purports to include electronic

copies of technical references identified in the prosecution history of the ’999 patent. To the extent

not specifically and expressly admitted, Apple denies all other allegations and characterizations in

Paragraph 41.

Non-Technical Description of the ’999 Patent

To the extent that Paragraph 42 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 42

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constitute a complete and accurate description of the ’999 patent. Apple denies the allegations

contained in Paragraph 42 as they relate in any way to a proposed construction of any Asserted

Claim of the ’999 patent. Apple further denies that the ’999 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

as to the truth of the remaining allegations contained in Paragraph 42 and, on that basis, denies

them.

To the extent that Paragraph 43 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 43

constitute a complete and accurate description of the’999 patent. Apple denies the allegations

contained in Paragraph 43 as they relate in any way to a proposed construction of any Asserted

Claim of the ’999 patent. Apple further denies that the ’999 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

as to the truth of the remaining allegations contained in Paragraph 43 and, on that basis, denies

them.

To the extent that Paragraph 44 contains conclusions of law, no response is

necessary. Apple denies that the allegations and characterizations contained in Paragraph 44

constitute a complete and accurate description of the ’999 patent. Apple denies the allegations

contained in Paragraph 44 as they relate in any way to a proposed construction of any Asserted

Claim of the ’999 patent. Apple further denies that the ’999 patent discloses anything novel,

inventive, or nonobvious. Apple is without knowledge or information sufficient to form a belief

as to the truth of the remaining allegations contained in Paragraph 44 and, on that basis, denies

them.

Foreign Counterparts

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To the extent that Paragraph 45 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 45 and, on that basis, denies them.

To the extent that Paragraph 46 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 46 and, on that basis, denies them.

Licenses

Apple admits that Confidential Exhibit 16C purports to contain a list of entities with

a current license involving the ’999 patent. Apple lacks knowledge or information sufficient to

form a belief regarding the truth of the remaining statements and allegations in Paragraph 47 and,

on that basis, denies them.

VI. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE

Apple admits that certain Accused Products are manufactured and assembled at

facilities outside the United States. Apple admits that certain Accused Products are sold for

importation into the United States, imported into the United States, and/or sold within the United

States after importation by or on behalf of Apple. To the extent not specifically and expressly

admitted, Apple denies all other allegations and characterizations in Paragraph 48.

Apple admits that certain models of the Accused Products are sold in the United

States. Apple admits that it has over 270 retail stores in the United States where certain models of

the Accused Products may be purchased. To the extent not specifically and expressly admitted,

Apple denies all other allegations and characterizations in Paragraph 49.

Apple admits that certain Apple iPhone Models 12 and 13 are assembled in China,

then imported and sold within the United States by or on behalf of Apple. Apple admits that

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Exhibit 19 to the Complaint purports to be a copy of purchasing documents and photographs of an

Apple iPhone 13 Pro. Apple admits that Exhibit 19 to the Complaint purports to show that an

iPhone 13 Pro was purchased from an Apple Store in Georgetown, Washington, D.C., on January

15, 2022, and was assembled in China. To the extent not specifically and expressly admitted,

Apple denies all other allegations and characterizations in Paragraph 50.

Apple admits that certain Apple iPads are assembled in China, then imported and

sold within the United States by or on behalf of Apple. Apple admits that Exhibit 20 to the

Complaint purports to be a copy of purchasing documents and photographs of an Apple iPad Pro

Wi-Fi + Cellular. Apple admits that Exhibit 20 to the Complaint purports to show that an iPad Pro

Wi-Fi + Cellular was purchased from an Apple Store in Georgetown, Washington, D.C., on

January 15, 2022, and was assembled in China. To the extent not specifically and expressly

admitted, Apple denies all other allegations and characterizations in Paragraph 51.

To the extent that Paragraph 52 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the statements and allegations in Paragraph 52 and, on that basis, denies them. Apple denies that

any of the Accused Products infringe any valid and enforceable Asserted Claim of the Asserted

Patents, or that Apple has violated Section 337 in any manner.

VII. UNLAWFUL AND UNFAIR ACTS OF RESPONDENT – PATENT


INFRINGEMENT

Apple denies each and every allegation in Paragraph 53.

A. Infringement of the ’454 Patent

Apple denies each and every allegation in Paragraph 54.

Apple denies each and every allegation in Paragraph 55.

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Apple admits that that Ericsson provided a copy of this Complaint to Apple in

advance of filing. Apple admits that this Complaint is accompanied by a claim chart where

Ericsson purports to allege that the Accused Products infringe the asserted independent claims of

the ’454 patent. Apple denies each and every remaining allegation of Paragraph 56.

Apple admits that Exhibit 7 to this Complaint purports to be a claim chart of the

’454 patent. Apple denies that any of the Accused Products infringe any valid and enforceable

Asserted Claim of the ’454 patent. Apple denies each and every remaining allegation of Paragraph

57.

B. Infringement of the ’794 Patent

Apple denies each and every allegation of Paragraph 58.

Apple denies each and every allegation of Paragraph 59.

Apple admits that Ericsson provided a copy of this Complaint to Apple in advance

of filing. Apple admits that this Complaint is accompanied by a claim chart where Ericsson

purports to allege that the Accused Products infringe the asserted independent claims of the ’794

patent. Apple denies each and every remaining allegation of Paragraph 60.

Apple admits that Exhibit 8A to this Complaint purports to be a claim chart of the

’794 patent. Apple denies that any of the Accused Products infringe any valid and enforceable

Asserted Claim of the ’794 patent. Apple denies each and every remaining allegation of Paragraph

61.

C. Infringement of the ’999 Patent

Apple denies each and every allegation of Paragraph 62.

Apple denies each and every allegation of Paragraph 63.

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Apple admits that Ericsson provided a copy of this Complaint to Apple in advance

of filing. Apple admits that this Complaint is accompanied by a claim chart where Ericsson

purports to allege that the Accused Products infringe the asserted independent claims of the ’999

patent. Apple denies each and every remaining allegation of Paragraph 64.

Apple admits that Ericsson provided a copy of this Complaint to Apple in advance

of filing. Apple admits that this Complaint is accompanied by a claim chart where Ericsson

purports to allege that the Accused Products infringe the asserted independent claims of the ’999

patent. Apple denies each and every remaining allegation of Paragraph 65.

Apple admits that Exhibit 9A to this Complaint purports to be a claim chart of the

’999 patent. Apple denies that any of the Accused Products infringe any valid and enforceable

Asserted Claim of the ’999 patent. Apple denies each and every remaining allegation of Paragraph

66.

VIII. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS

Apple admits that the Harmonized Tariff Schedule item numbers for the Accused

Products imported into the United States are 8517.13 and 8471.30.01.

IX. RELATED LITIGATION

A. Litigation Related to the Asserted Patents

Apple admits that Ericsson filed an action for patent infringement against Apple in

the United States District Court for the Western District of Texas on January 17, 2022, Civil Action

No. 6:22-cv-61, asserting the Asserted Patents. Apple denies that it has infringed in any way any

claim of the Asserted Patents and denies that Ericsson is entitled to any relief. To the extent not

specifically and expressly admitted, Apple denies all other allegations and characterizations in

Paragraph 68.

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Apple is without knowledge or information sufficient to form a belief as to the truth

of the allegations of Paragraph 69, and, on that basis, denies them.

B. Other Litigation Between the Parties

Apple admits that on January 17, 2022, Ericsson filed an action for patent

infringement against Apple in the United States District Court for the Western District of Texas,

Civil Action No. 6:22-cv-60. Apple denies that it has infringed in any way any claim of any patents

asserted in that action, and denies that Ericsson is entitled to any relief.

Apple admits that on January 17, 2022, Ericsson filed a patent infringement

complaint against Apple in Certain Mobile Telephones, Tablet Computers with Cellular

Connectivity, and Smart Watches with Cellular Connectivity, Components Thereof, and Products

Containing Same, Inv. No. 337-TA-1299. Apple admits that additional cases were filed by

Ericsson outside the United States. Apple denies that it has infringed any claim of any patents

asserted in these actions. Apple denies that Ericsson is entitled to any relief.

Apple admits that on February 26, 2015, Ericsson filed a patent infringement

complaint against Apple in Certain Electronic Devices, Including Wireless Communication

Devices, Computers, Tablet Computers, Digital Media Players, and Cameras, Inv. No. 337-TA-

952, which was instituted on March 30, 2015. Apple admits that that investigation was terminated

based on settlement between the parties. Apple denies that it has infringed any claim of any patents

asserted in that investigation. Apple denies that Ericsson is entitled to any relief.

Apple admits that on February 26, 2015, Ericsson filed a patent infringement

complaint against Apple in Certain Wireless Standard Compliant Electronic Devices, Including

Communication Devices and Tablet Computers, Inv. No. 337-TA-953, which was instituted on

March 30, 2015. Apple admits that that investigation was terminated based on settlement between

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the parties. Apple denies that it has infringed any claim of any patents asserted in that

investigation. Apple denies that Ericsson is entitled to any relief.

Apple admits that on October 4, 2021, Ericsson filed a complaint against Apple in

the United States District Court for the Eastern District of Texas, Civil Action No. 2:21-cv-376,

where Ericsson does not assert patent infringement of the Asserted Patents.

Apple admits that on December 17, 2012, it brought suit against Ericsson in the

United States District Court for the Eastern District of Texas, Civil Action No. 2:21-cv-460.

Apple admits that Ericsson and Apple have been opposing parties in the following

Patent and Trademark Appeals Board proceedings:

i) Apple Inc. v. Ericsson Inc., IPR2015-01905

ii) Apple Inc. v. Ericsson Inc., IPR2015-01904

iii) Apple Inc. v. Ericsson Inc., IPR2015-01919

iv) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00004

v) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00050

vi) Apple Inc. v. Ericsson Inc., IPR2016-00108

vii) Apple Inc. v. Ericsson Inc., IPR2016-00107

viii) Apple Inc. v. Ericsson Inc., IPR2016-00106

ix) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00110

x) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00109

xi) Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2016-00154

xii) Apple Inc. v. Ericsson Inc., IPR2016-00152

Apple admits that Ericsson and Apple have been opposing parties in the following

district court proceedings:

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Apple Inc.’s Response to Complaint and Notice
i) Apple Inc. v. Telefonaktiebolaget LM Ericsson et al., 3-15-cv-00154 (NDCA)

ii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00293 (EDTX)

iii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00292 (EDTX)

iv) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00291 (EDTX)

v) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00290 (EDTX)

vi) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00289 (EDTX)

vii) Ericsson Inc. et al. v. Apple Inc., 2:15-cv-00287 (EDTX)

Apple admits that Ericsson and Apple have been opposing parties in the foreign

proceedings listed in Paragraph 78.

The allegations of Paragraph 79 are too vague and ambiguous to admit or deny.

Apple admits that Ericsson and Apple are opposing parties in the foreign action

Telefonaktiebolaget LM Ericsson v. Apple Retail Netherlands BV, Apple Benelux BV, Apple Inc.,

Apple Distribution International and Apple Sales International, C/09/500495/HA ZA 15/1321.

X. DOMESTIC INDUSTRY

To the extent that Paragraph 80 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 80 and, on that basis, denies them.

A. Ericsson’s Domestic Industry

To the extent that Paragraph 81 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 81 and, on that basis, denies them.

18
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To the extent that Paragraph 82 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 82 and, on that basis, denies them.

To the extent that Paragraph 83 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 83 and, on that basis, denies them.

To the extent that Paragraph 84 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 84 and, on that basis, denies them.

To the extent that Paragraph 85 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 85 and, on that basis, denies them.

To the extent that Paragraph 86 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 86 and, on that basis, denies them.

To the extent that Paragraph 87 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 87 and, on that basis, denies them.

To the extent that Paragraph 88 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 88 and, on that basis, denies them.

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To the extent that Paragraph 89 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 89 and, on that basis, denies them.

To the extent that Paragraph 90 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 90 and, on that basis, denies them.

To the extent that Paragraph 91 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 91 and, on that basis, denies them.

To the extent that Paragraph 92 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 92 and, on that basis, denies them.

B. Samsung’s Domestic Industry

To the extent that Paragraph 93 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 93 and, on that basis, denies them.

To the extent that Paragraph 94 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 94 and, on that basis, denies them.

To the extent that Paragraph 95 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 95 and, on that basis, denies them.

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Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the allegations and characterizations in Paragraph 96 and, on that basis, denies them.

Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the allegations and characterizations in Paragraph 97 and, on that basis, denies them.

Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the allegations and characterizations in Paragraph 98 and, on that basis, denies them.

Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the allegations and characterizations in Paragraph 99 and, on that basis, denies them.

Apple lacks knowledge or information sufficient to form a belief regarding the truth

of the allegations and characterizations in Paragraph 100 and, on that basis, denies them.

To the extent that Paragraph 101 contains conclusions of law, no response is

necessary. Apple states that the Initial Determination in Certain Electronic Devices, Including

Wireless Communications Devices, Portable Music and Data Processing Devices, and Tablet

Computers, Inv. No. 337-TA-794 (Sept. 14, 2012) speaks for itself and denies the allegations in

Paragraph 101 to the extent they purport to attribute to the Initial Determination anything not stated

therein. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 101 and, on that basis, denies them.

To the extent that Paragraph 102 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 102 and, on that basis, denies them.

To the extent that Paragraph 103 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 103 and, on that basis, denies them.

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To the extent that Paragraph 104 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 104 and, on that basis, denies them.

To the extent that Paragraph 105 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 105 and, on that basis, denies them.

To the extent that Paragraph 106 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 106 and, on that basis, denies them.

To the extent that Paragraph 107 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 107 and, on that basis, denies them.

To the extent that Paragraph 108 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 108 and, on that basis, denies them.

To the extent that Paragraph 109 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 109 and, on that basis, denies them.

C. Ericsson’s Domestic Licensing

Licensing Activities

To the extent that Paragraph 110 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 110 and, on that basis, denies them.

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Apple Inc.’s Response to Complaint and Notice
To the extent that Paragraph 111 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 111 and, on that basis, denies them.

To the extent that Paragraph 112 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 112 and, on that basis, denies them.

To the extent that Paragraph 113 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 113 and, on that basis, denies them.

To the extent that Paragraph 114 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 114 and, on that basis, denies them.

To the extent that Paragraph 115 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 115 and, on that basis, denies them.

To the extent that Paragraph 116 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 116 and, on that basis, denies them.

To the extent that Paragraph 117 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 117 and, on that basis, denies them.

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To the extent that Paragraph 118 contains conclusions of law, no response is

necessary. Apple lacks knowledge or information sufficient to form a belief regarding the truth of

the allegations and characterizations in Paragraph 118 and, on that basis, denies them.

XI. RELIEF REQUESTED

To the extent that Paragraph 119 contains conclusions of law, no response is

necessary. To the extent that any response to Paragraph 119 is required, Apple denies that Ericsson

has any valid cause of action pursuant to Section 337 of the Tariff Act of 1930, as amended. Apple

further denies that it has violated 19 U.S.C. § 1337 and specifically denies all of Ericsson’s

allegations of violation. Apple further denies that Ericsson is entitled to any relief whatsoever by

way of its Complaint. Apple denies any remaining allegations of Paragraph 119.

24
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Apple Inc.’s Response to Complaint and Notice
APPLE’S RESPONSE TO THE NOTICE OF INVESTIGATION

1. Pursuant to Commission Rule 210.13(b), Apple hereby responds to the Notice of

Institution of Investigation (the “Notice”) issued by the Commission on February 17, 2022, and

published in the Federal Register on February 24, 2022. Without admitting any of the specific or

general allegations set forth in the Complaint, as referenced in the Notice, Apple provides the

following response:

2. Apple acknowledges that the Commission has instituted an Investigation as set

forth in the Notice.

3. Apple denies that there has been any violation of Section 337 by reason of the

alleged infringement of any valid Asserted Claim of any Asserted Patent. Apple further

contends that the Asserted Claims of the Asserted Patents are invalid and/or unenforceable and

cannot support any remedy for the alleged infringement.

4. Apple denies that a protectable domestic industry, as required by 19 U.S.C.

§1337(a)(2)-(3), exists with respect to any of the Asserted Patents. Apple further denies that it is

in the public interest to grant any relief to Ericsson in connection with this Investigation.

5. Apple denies that Ericsson is entitled to any relief in this Investigation.

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Apple Inc.’s Response to Complaint and Notice
RESPONSE TO THE PUBLIC INTEREST STATEMENT OF COMPLAINANTS

Apple hereby incorporates by reference the entirely of its “Public Interest Statement of

Proposed Respondent Apple Inc.,” submitted to the Commission on February 1, 2022.

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Apple Inc.’s Response to Complaint and Notice
APPLE’S STATEMENT UNDER 19.C.F.R. § 210.13(B)

1. Pursuant to Rule 210.13(b), Apple provides the following additional information.

By providing such information, Apple intends only to supply data required by 19 C.F.R.

§ 210.13(b). Apple specifically denies that any of the supplied data refers to any unlawful act

under Section 337 or otherwise, and Apple specifically denies that it infringes any Asserted

Claim of the Asserted Patents based on the Accused Products. Discovery has only recently

begun, and is ongoing. Apple reserves the right to amend and/or supplement the information

provided below and in Confidential Exhibit A.

2. Attached as Confidential Exhibit A to this Response is the approximate statistical

data related to quantity of and revenue associated with imports of iPhone and iPad for fiscal year

2021.

3. The Harmonized Tariff Schedule item numbers for the Accused Products

imported into the United States are as follows:

Product Category Harmonized Tariff Schedule Item Number


iPhone 8517.13
iPad 8471.30.01

4. Apple has relied on and currently relies on third parties to manufacture the

Accused Products. The names and addresses of Apple’s suppliers of Accused Products are set

forth in Confidential Exhibit A attached hereto.

5. Apple believes that the United States is a significant market for the Accused

Products and is important to Apple’s overall operations. Apple’s statement as to the relative

significance of the United States market regarding the Accused Products to its operations is

further set forth in Confidential Exhibit A attached hereto.

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Inv. No. 337-TA-1301
Apple Inc.’s Response to Complaint and Notice
ADDITIONAL DEFENSES

1. Apple asserts the following defenses in response to the allegations set forth in the

Complaint. Apple’s inclusion of these additional defenses in this Response is not a concession

that Apple bears the burden of proof with respect to any of them. Discovery has recently begun

and Apple has not yet had sufficient time or opportunity to collect and review all the information

that may be relevant to the matters and issues raised herein. Thus, pursuant to 19 U.S.C.

§§ 210.14(b) and 210.14(c), Apple reserves the right to seek to amend, modify, and/or expand

these defenses and to take further positions as discovery proceeds in this Investigation.

FIRST ADDITIONAL DEFENSE (NONINFRINGEMENT)

2. Although Apple does not bear the burden of proof on this issue, Apple has not,

and does not, directly infringe, indirectly infringe, induce infringement, or contribute to

infringement of any valid and enforceable claim of the Asserted Patents, either literally or under

the doctrine of equivalents, and has not otherwise committed any acts in violation of 35 U.S.C.

§ 271 and/or 19 U.S.C. § 1337.

3. Ericsson has failed to identify its contentions with respect to what articles are

accused of infringement and how the Accused Products practice each limitation of the Asserted

Claims of the Asserted Patents.

SECOND ADDITIONAL DEFENSE (INVALIDITY)

4. On information and belief, one or more claims of the Asserted Patents are invalid

for failing to comply with the requirements of 35 U.S.C. §§ 101, 102, 103, 112 and/or any other

applicable statutory provisions of Title 35 of the United States Code.

5. Apple provides an identification of prior art that supports this defense in Exhibit

B to this Response. The prior art provided in Exhibit B is exemplary only and should not be

28
Inv. No. 337-TA-1301
Apple Inc.’s Response to Complaint and Notice
construed as limiting in any way the defenses that Apple will present in this Investigation.

Apple’s investigation is ongoing. Further, nothing herein should be construed as an admission

that Apple agrees with any of Ericsson’s express or implied claim constructions.

6. Depending on the scope of the Asserted Claims of the Asserted Patents or

Complainants’ contentions in connection therewith, the Asserted Claims of the Asserted Patents

may be invalid for failure to provide an adequate written description or enabling disclosure, or

for failure to disclosure the best mode under 35 U.S.C. § 112, first paragraph, or for

indefiniteness under 35 U.S.C. § 112, second paragraph.

THIRD AFFIRMATIVE DEFENSE (LACK OF DOMESTIC INDUSTRY)

7. Although Apple does not bear the burden of proof on this issue, on information

and belief, Complainants have not adequately alleged and cannot prove the existence of a

domestic industry as required under 19 U.S.C. § 1337(a)(2)-(3), in connection with the Asserted

Patents. For example, on information and belief, Ericsson does not maintain a presence in the

domestic mobile phone and tablet computer market. Ericsson is therefore a non-practicing entity

in the mobile phone and tablet computer market.

FOURTH ADDITIONAL DEFENSE (LACK OF UNFAIR ACT)

8. Although Apple does not bear the burden of proof on this issue, on information

and belief, Apple has committed no unfair act that constitutes a violation of 19 U.S.C. § 1337.

FIFTH ADDITIONAL DEFENSE


(REQUESTED REMEDY IS NOT IN THE PUBLIC INTEREST)

9. Ericsson’s demand for relief is not in the public interest under Section 337(d)(1).

As explained further in “Public Interest Statement of Proposed Respondent Apple Inc.,”

submitted to the Commission on February 1, 2022, any exclusion order(s) or cease-and-desist

order(s) would adversely affect the public health and welfare, competitive conditions in the
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Apple Inc.’s Response to Complaint and Notice
United States economy, the production of like or directly competitive articles in the United

States, and/or United States consumers.

10. In addition, Ericsson’s demand for an exclusion order and a cease and desist order

based on the Asserted Patents is not in the public interest because it is an attempt to coerce Apple

into taking a license to thousands of Ericsson standard essential patents (“SEP”) at rates that are

not fair, reasonable, and non-discriminatory (“FRAND”). As Ericsson pled in its Complaint

filed in Inv. No. 337-TA-1300, “[i]n instances where companies use Ericsson’s patent

technology, but after appropriate notice, negotiations, and opportunities, are unwilling to enter

into a license agreement, Ericsson invests in patent enforcement litigation. In those patent

enforcement proceedings, Ericsson asserts representative patents from the applicable portfolios.”

Certain Mobile Phones, Tablet Computers, Smart Watches, Smart Speakers, and Digital Media

Players, and Products Containing Same, Inv. No. 337-TA-1300, Complaint, at ¶ 140 (emphasis

added); see also Compl., Ex. 13C. Ericsson thus admits that it is using the coercive threat of an

exclusion order of “representative” patents to force a license of a “portfolio” of patents.

Moreover, Ericsson never gave Apple any “notice, negotiation, or opportunity” to take a license

to just the Asserted Patents. Ericsson’s demand for relief adversely affects the competitive

conditions in the United States economy for at least two reasons. First, when Ericsson demands

that Apple take a license to its SEPs to avoid an exclusion order on the Asserted Patents,

Ericsson is impermissibly abrogating its FRAND obligations. Ericsson promised to license its

declared SEPs under fair and reasonable terms, and using the threat of injunctive relief in this

Investigation to coerce Apple into taking an SEP license is a breach of that agreement. Second,

when Ericsson demands that Apple take a license to all of Ericsson’s patents to avoid an

30
Inv. No. 337-TA-1301
Apple Inc.’s Response to Complaint and Notice
exclusion order on the Asserted Patents as “representative,” Ericsson is illegally tying the broad

SEP portfolio license to the non-essential Asserted Patents.

11. The public interest, therefore, precludes issuance of the requested remedial orders

in accordance with 19 U.S.C. § 1337(d)(1) and (f)(1).

SIXTH ADDITIONAL DEFENSE (ESTOPPEL)

12. On information and belief, and subject to further discovery, Ericsson is estopped

from asserting and construing any Asserted Claim to have been infringed by any Apple product

and asserting infringement by any Apple product under the doctrine of equivalents, in whole or

in part, by argument-based estoppel, prosecution history estoppel, and collateral, administrative,

and judicial estoppel, by virtue of the cancellations, amendments, arguments, representations,

and concessions made to the Patent and Trademark Office during the pendency of the

applications for the Asserted Patents and for related patents and patent applications, post-grant

proceedings, pending or prior litigation, and prior investigations by the International Trade

Commission.

SEVENTH ADDITIONAL DEFENSE


(EXPRESS/IMPLIED LICENSE AND/OR PATENT EXHAUSTION)

13. On information and belief, Ericsson’s claims are barred as a result of patent

exhaustion and/or a license to the Asserted Patents. Apple and/or its customer cannot be held

liable for infringement because the Accused Products were manufactured, sold, offered for sale,

used, and/or imported into the United States under an express and/or implied license from

Ericsson and/or its affiliates, and/or another licensed third party. For example, Apple is licensed

to the extent any agreement between Ericsson and an Apple contract manufacturer extends to

Apple or any Accused Products. Further, to the extent the claims of one or more of the Asserted

Patents are licensed by an Apple contract manufacturer and/or substantially embodied in an end
31
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Apple Inc.’s Response to Complaint and Notice
product or component purchased by Apple from a seller authorized by Ericsson, Ericsson’s

patent rights are exhausted.

14. Apple has a license (express or implied) to practice one or more of the Asserted

Patents, and/or Apple has authority to practice the patents, or the patents are unenforceable

against Apple, on one or more of the following grounds: estoppel, laches, waiver, unclean hands,

and/or other applicable equitable doctrines.

EIGHTH ADDITIONAL DEFENSE (GOVERNMENT SALES)

15. Apple’s importations for, and sales to, the United States government are not

subject to the relief requested by Ericsson.

NINTH ADDITIONAL DEFENSE (UNCLEAN HANDS)

16. On information and belief, Ericsson’s claims as they relate to the Asserted Patents

are barred in whole or in part by reason of equitable doctrine of unclean hands. Ericsson comes

to the Investigation with unclean hands because it has engaged in a continuing anticompetitive

scheme, evidenced by Ericsson improperly seeking to invoke the Commission’s authority to

exclude the allegedly infringing Apple products from the United States.

TENTH ADDITIONAL DEFENSE (INEQUITABLE CONDUCT)

17. On information and belief, and subject to further discovery, the Asserted Patents

are unenforceable due to the inequitable conduct of the named inventors and/or the prosecuting

attorneys for the Asserted Patents.

ELEVENTH ADDITIONAL DEFENSE (ENSNAREMENT)

18. On information and belief, and subject to further discovery, Ericsson’s

infringement claims are barred by the doctrine of ensnarement. Ericsson is foreclosed from

asserting infringement under the doctrine of equivalents to the extent the scope of such

equivalent would ensnare prior art.


32
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Apple Inc.’s Response to Complaint and Notice
TWELFTH ADDITIONAL DEFENSE (PATENT MISUSE)

19. Ericsson is and has committed patent misuse by using the threat of exclusion

order based on the Asserted Patents to coerce Apple into taking a license to thousands of

Ericsson SEP at rates that are not FRAND. As Ericsson pled in its Complaint filed in Inv. No.

337-TA-1300, “[i]n instances where companies use Ericsson’s patent technology, but after

appropriate notice, negotiations, and opportunities, are unwilling to enter into a license

agreement, Ericsson invests in patent enforcement litigation. In those patent enforcement

proceedings, Ericsson asserts representative patents from the applicable portfolios.” Certain

Mobile Phones, Tablet Computers, Smart Watches, Smart Speakers, and Digital Media Players,

and Products Containing Same, Inv. No. 337-TA-1300, Complaint, at ¶ 140 (emphasis added);

see also Compl., Ex. 13C. Ericsson thus admits that it is using the coercive threat of an

exclusion order of “representative” patents to force a license of a “portfolio” of patents.

Moreover, Ericsson never gave Apple any “notice, negotiation, or opportunity” to take a license

to just the Asserted Patents. Ericsson’s actions constitute misuse in two forms. First, when

Ericsson demands that Apple take a license to its SEPs to avoid an exclusion order on the

Asserted Patents, Ericsson is impermissibly abrogating its FRAND obligations. Ericsson

promised to license its declared SEPs under fair and reasonable terms, and using the threat of

injunctive relief in this Investigation to coerce Apple into taking an SEP license is a breach of

that agreement. Second, when Ericsson demands that Apple take a license to all of Ericsson’s

patents to avoid an exclusion order on the Asserted Patents as “representative,” Ericsson is

illegally tying the broad SEP portfolio license to the non-essential Asserted Patents.

THIRTEENTH ADDITIONAL DEFENSE (INVENTORSHIP)

33
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Apple Inc.’s Response to Complaint and Notice
20. Upon information and belief, and subject to the further discovery, Ericsson’s

Asserted Claims are unenforceable to the extent that the alleged inventors did not invent the

purported inventions, or to the extent that the actual inventors are not named as inventors.

FOURTEENTH ADDITIONAL DEFENSE (NO IMPORT VIOLATION)

21. Ericsson has failed to and will not be able to demonstrate that Apple has

imported, sold for importation, or sold after importation into the United States any product that

infringes any valid and enforceable Asserted Claim of the Asserted Patents at the time of

importation.

FIFTEENTH ADDITIONAL DEFENSE (OTHER DEFENSES)

22. Apple further reserves the right to amend its Response to include other affirmative

defenses that Apple may learn of during the course of this Investigation.

PRAYER FOR RELIEF

WHEREFORE, Apple requests that the Commission issue an order:

1. Denying all relief requested in the Complaint;

2. Finding that Apple has not violated Section 337 of the Tariff Act of 1930, as

amended, 19 U.S.C. § 1337;

3. Finding that Apple does not directly infringe or induce infringement of any valid

and enforceable claim of the Asserted Patents, either literally or under the doctrine of equivalents,

and has not otherwise committed any acts in violation of 35 U.S.C. § 271 or 19 U.S.C. § 1337;

4. Finding that the Asserted Claims of the Asserted Patents are invalid;

5. Finding that there is no domestic industry for the Asserted Patents;

6. Complainants’ demands for relief are barred because of the relief’s effect upon

the public health and welfare, competitive conditions in the United States economy, the

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Apple Inc.’s Response to Complaint and Notice
production of like or directly competitive articles in the United States, and United States

consumers;

7. Finding that Complainants’ claims as they relate to the Asserted Patents are

barred by reason of equitable doctrines, including equitable estoppel, acquiescence, unclean

hands, prosecution laches, and/or waiver;

8. Awarding Apple its attorneys’ fees and costs incurred in responding to the

Complaint and defending this Investigation;

9. Dismissing the present Complaint and terminating the present Investigation;

10. Finding that it is not in the public interest to grant any relief to Complainants; and

11. Awarding such other and further relief as the Commission deems just and proper.

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Apple Inc.’s Response to Complaint and Notice
Respectfully submitted,

FISH & RICHARDSON P.C.

Dated: April 4, 2022 By: /s/ Betty Chen


Benjamin C. Elacqua
Fish & Richardson P.C.
1221 McKinney Street, Suite 2800
Houston, TX 77010
Telephone: (713) 654-5300
Facsimile: (713) 652-0109

Betty Chen
Fish & Richardson P.C.
500 Arguello Street
Suite 500
Redwood, CA 94063
Telephone: (650) 839-5070
Facsimile: (650) 839-5071

Ruffin B. Cordell
Richard A. Sterba
Fish & Richardson P.C.
1000 Maine Avenue, S.W., Suite 1000
Washington, D.C. 20024
Telephone: (202) 783-5070
Facsimile: (202) 783-2331

Aamir Kazi
Benjamin Thompson
Jacqueline Tio
Katherine Reardon
Fish & Richardson P.C.
1180 Peachtree St SE, Suite 2100
Atlanta, GA 30309
Telephone: (404) 892-5005
Facsimile: (404) 892-5002

Andrew Pearson
Whitney Reichel
Fish & Richardson P.C.
One Marina Park Drive
Boston, MA 02210
Telephone: (617) 542-5070

Counsel for Respondent Apple Inc.

Inv. No. 337-TA-1301


Apple Inc.’s Response to Complaint and Notice
VERIFICATION

I, Mark Rollins, am a Finance Manager at Apple Inc. I am authorized to make this

verification on behalf of Apple Inc. I have read RESPONDENT APPLE INC.’S RESPONSE

TO THE COMPLAINT OF ERICSSON INC. AND TELEFONAKTIEBOLAGET LM

ERICSSON UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED, AND

NOTICE OF INVESTIGATION and know its contents.

To the best of my knowledge, information, and belief, formed after a reasonable inquiry,

I verify that the facts set forth in this Response (excluding facts related to Ericsson’s confidential

business information, which I am not permitted to see) and accompanying Exhibit A are true and

correct as of the date indicated below. My information and belief may be based on statements,

reports, and records of other Apple employees upon whom I customarily rely.

Dated: April 3, 2022 _____________________

Mark Rollins
Confidential
Exhibit A
Filed Under Seal
EXHIBIT B
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.

Before the Honorable Cameron R. Elliot


Administrative Law Judge

In the Matter of

CERTAIN MOBILE PHONES AND


TABLET COMPUTERS, ALL WITH Inv. No. 337-TA-1301
SWITCHABLE CONNECTIVITY

EXHIBIT B: IDENTIFICATION OF EXEMPLARY PRIOR ART TO THE


ASSERTED PATENTS

Inv. No. 337-TA-1301


Exhibit B to Apple’s Response to the Complaint and Notice
I. Identification of Exemplary Prior Art to U.S. Patent No. 8,792,454

A. U.S. Patent Publications

1. U.S. Patent No. 7,599,323 (“Chandramenon”)

2. U.S. Patent No. 7,324,478 (“Park”)

3. U.S. Patent No. 7,161,914 (“Shoaib”)

4. U.S. Patent No. 7,751,818 (“Chaskar”)

5. U.S. Patent No. 6,965,948 (“Eneborg”)

6. U.S. Patent No. 6,842,621 (“Labun”)

7. U.S. Patent Application Publication No. 2004/0120328 Al (“Adrangi”)

8. U.S. Patent Application Publication No. 2003/0224788 Al (“Leung”)

B. Foreign Patent Publications

1. EP 1381202

2. JP 11-355322

3. JP 2002-044141

4. JP 2002-199426

5. WO 01/31472

C. Non-Patent Publications

1. Hui Luo et. al., “Internet Roaming: A WLAN/3G Integration System for
Enterprise,” Wireless and Mobile Communications, AT&T labs Vol. 4911
2002.

2. M. Buddihikot et al., “Integration of 802.11 and Third-Generation


Wireless Data Network,” Bell Labs, Lucent Technologies, 2003, pg 503-
12.

3. P M Feder, “A Seamless Mobile VPN Data Solution for UMTS and


WLAN Users,” Bell Laboratories, Mobility Solutions, Lucent
Technologies, 2003, Pg. 210-16.

1
Inv. No. 337-TA-1301
Exhibit B to Apple’s Response to the Complaint and Notice
4. Tsuguo Kato, "Leading-edge Technology Capable of Realizing Secure,
Safe and Comfortable Ubiquitous Information Society," Research and
Development, Fujitsu Limited, vol. 54, No. 4, Jul. 10, 2003.

5. "Guidebook of Product: Notable VPN Solution," Computer & Net-work


LAN, Ohmsha, Ltd., Japan, Jun. 24, 2003, vol. 21, No. 7.

6. Hiroyuki Taniguchi, Secure Seamless Roaming System based on IP


Network Service control Architecture (EaseN et), Technical Report of the
Institute of Electronics, Information and Communication Engi-neers,
Japan, Feb. 27, 2003, vol. 102, No. 693.

II. Identification of Exemplary Prior Art to U.S. Patent No. 10,880,794

A. U.S. Patent Publications

1. U.S. Patent No. 9,585,035

2. U.S. Patent No. 9,722,761

3. U.S. Patent Application Publication No. 2011/0237202

4. U.S. Patent Application Publication No. 2005/0124344

5. U.S. Patent No. 9,014,141

B. Foreign Patent Publications

1. CN 105704720

2. CN 105790907

3. EP 2343946

4. EP 2341730

5. JP 2011239387

6. JP 2012182795

7. JP 2015231152

8. JP 2016111510

9. WO 2014064616

C. Non-Patent Publications

2
Inv. No. 337-TA-1301
Exhibit B to Apple’s Response to the Complaint and Notice
1. 3GPP Tdoc R2-131511

2. 3GPP Tdoc R2-130999

3. 3GPP Tdoc R2-131421

4. 3GPP TS 36.331 V130.0

5. ETSI TS 136 331 V130.0

6. 3GPP TS 36.331 V13.2.0

7. 3GPP TS 36.101 V13.2.1

8. 3GPP TS 36.101 V13.4.0

9. ETSI TS 136 101 V13.2.1

III. Identification of Exemplary Prior Art to U.S. Patent No. 8,472,999

A. U.S. Patent Publications

1. U.S. Patent No. 7,079,841

2. U.S. Patent No. 7,940,727

3. U.S. Patent No. 8,180,400

4. U.S. Patent Application Publication No. 2004/0137903

5. U.S. Patent Application Publication No. 2005/0208965

6. U.S. Patent Application Publication No. 2006/0095600

7. U.S. Patent Application Publication No. 2006/0234693

8. U.S. Patent Application Publication No. 2007/0004457

9. U.S. Patent Application Publication No. 2007/0049216

10. U.S. Patent Application Publication No. 2007/0109987

11. U.S. Patent Application Publication No. 2008/0064443

12. U.S. Patent Application Publication No. 2008/0081659

13. U.S. Patent Application Publication No. 2008/0102847

3
Inv. No. 337-TA-1301
Exhibit B to Apple’s Response to the Complaint and Notice
14. U.S. Patent Application Publication No. 2008/0161050

B. Foreign Patent Publications

1. CN101001431

2. CN1276680C

3. CN1434621A

4
Inv. No. 337-TA-1301
Exhibit B to Apple’s Response to the Complaint and Notice
CERTIFICATE OF SERVICE

I hereby certify that true and correct copies of the foregoing document

RESPONDENT APPLE INC.’S RESPONSE TO THE COMPLAINT OF


ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON UNDER
SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED,
AND NOTICE OF INVESTIGATION

has been filed and served on this 4th day of April 2022, on the following:

Lisa R. Barton Via First Class Mail


Secretary to the Commission Via Hand Delivery
U.S. International Trade Commission Via Federal Express
500 E Street, S.W. Via Electronic Filing
Washington, D.C. 20436

The Honorable Cameron R. Elliot Via First Class Mail


Administrative Law Judge Via Hand Delivery
U.S. International Trade Commission Via Federal Express
500 E Street, S.W. Via Electronic Mail
Washington, D.C. 20436
Attorney Advisor: Michael Turner
Email: michael.turner@usitc.gov

Andrew Beverina, Esq Via First Class Mail


Sarah Sladic, Esq. Via Hand Delivery
Investigative Attorney Via Federal Express
Office of Unfair Import Investigations Via Electronic Mail
U.S. International Trade Commission Via USITC Box Platform
500 E Street, S.W.
Washington, D.C. 20436
Email: Andrew.Beverina@usitc.gov
Email: Sarah.Sladic@usitc.gov

Thomas L. Jarvis Via First Class Mail


WINSTON & STRAWN, LLP Via Hand Delivery
1901 L Street, NW Via Federal Express
Washington, DC 20036 Via Electronic Mail
Email: ITC1301WinstonService@winston.com
Complainants Ericsson Inc. and Telefonaktiebolaget LM
Ericsson

Steven M. Anzalone Via First Class Mail


Paul C. Goulet Via Hand Delivery
James Pohl
FISHERBROYLES, LLP Via Federal Express
1200 G Street, N.W., Suite 800 Via Electronic Mail
Washington, D.C. 20005
Michael M. Murray
FISHERBROYLES, LLP
445 Park Avenue, Ninth Floor
New York, NY 10022

Kevin Jablonski
FISHERBROYLES, LLP
701 Fifth Avenue, Suite 4200
Seattle, WA 98104
Email: Ericsson.ITC1301@FisherBroyles.com

Complainants Ericsson Inc. and Telefonaktiebolaget LM


Ericsson

/s/ Tracy Haynes


Tracy Haynes

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