UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

Before the Honorable Monica Bhattacharyya

Administrative Law Judge

In The Matter Of

CERTAIN CELLULAR BASE STATION Investigation No. 337-TA-1302

EQUIPMENT, COMPONENTS
THEREOF, AND PRODUCTS
CONTAINING THE SAME

RESPONDENTS’ RESPONSE TO THE

NOTICE OF INVESTIGATION AND TO THE COMPLAINT

Respondents: Counsel for Respondents:

Ericsson AB John D. Haynes

Torshamnsgatan 23 David S. Frist
Kista, 16480 Michael C. Deane
Stockholm, Sweden ALSTON & BIRD LLP
One Atlantic Center
Telefonaktiebolaget LM Ericsson 1201 West Peachtree Street
Torshamnsgatan 21 Suite 4900
Kista, SE-164 83 Atlanta, GA 30309
Stockholm, Sweden Telephone: (404) 881-7000
Facsimile: (404) 881-7777
Ericsson Inc.
6300 Legacy Drive Adam D. Swain
Plano, TX 75024 John McGrath
ALSTON & BIRD LLP
950 F Street NW
Washington, DC 20004
Telephone: (202) 239-3622
Facsimile: (202) 239-3333

Darlena Subashi
ALSTON & BIRD LLP
90 Park Avenue
New York, NY 10016
Telephone: (212) 210-9400
Facsimile: (212) 210-9444
Theodore Stevenson
Adam Ahnhut
ALSTON & BIRD LLP
Chase Tower, 2200 Ross Avenue
Suite 2300
Dallas, TX 75201
Telephone: (214) 922-3400
Facsimile: (214) 922-3899

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Pursuant to the United States International Trade Commission’s Rules, 19 C.F.R.

§ 210.13(a), Respondents Ericsson AB, Telefonaktiebolaget LM Ericsson, and Ericsson Inc.

(collectively “Ericsson” or “Respondents”), by their undersigned attorneys, hereby respond to the

Complaint filed by Complainant Apple Inc. (“Apple” or “Complainant”) on January 19, 2022, in

the above-captioned investigation and to the Notice of Investigation issued by the United States

International Trade Commission (“the Commission”).

As an initial matter, Respondents deny that they have engaged in unfair competition or

violated Section 337 of the Tariff Act of 1930, as amended, by importing, selling for importation,

or selling within the United States after importation any devices, products, or articles that infringe

any valid and enforceable intellectual property rights at issue in this Investigation, including the

asserted claims of United States Patent Nos. 9,882,282 (the “’282 patent”), 10,263,340 (the “’340

patent”), and 9,667,290 (the “’290 patent”) (collectively “the Asserted Patents”).

Respondents further deny that any patent claims in this Investigation are valid, enforceable,

and infringed. Ericsson denies that Apple will be able to satisfy its burden to demonstrate

infringement of any patent claims at issue in this Investigation. Ericsson further denies that a

domestic industry as required by Section 337 exists or is in the process of being established.

Ericsson denies that Apple is entitled to any of the relief it seeks. Respondents further reserve the

right to amend or supplement their responses based on any additional facts or developments that

become available or that arise after the filing of this Response.

Respondents deny each and every allegation averred in the Complaint that is not expressly

admitted below. Any factual allegation admitted below is admitted only as to the specific admitted

facts, and not as to any purported conclusions, characterizations, implications, or speculations that

might follow from the admitted facts.

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SPECIFIC RESPONSES TO ALLEGATIONS IN THE COMPLAINT

Except as expressly admitted below, Respondents deny each and every allegation set forth

in the Complaint:

I. INTRODUCTION1

1. Respondents admit that Complainant filed a Complaint pursuant to Section 337 of

the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“the Complaint”). Respondents further

admit that the Complaint purports to accuse certain cellular base station communication equipment

specifically including millimeter wave antenna radio units and radio baseband units, but

Respondents deny that these systems, in whole or in part, infringe any valid enforceable claims of

the Asserted Patents. Respondents deny that they have committed any of the unlawful acts alleged

in this paragraph and deny that they have otherwise violated Section 337 in any manner. Except

as admitted, Respondents deny the remaining allegations contained in paragraph 1.

2. Respondents admit that the Complaint accuses Respondents of infringing certain

claims of the Asserted Patents but deny that Respondents infringe any valid enforceable patent

claims. Except as expressly admitted, Respondents deny the remaining allegations contained in

paragraph 2.

3. Respondents admit that the Complaint accuses Respondents of infringing certain

claims of the Asserted Patents but deny that Respondents infringe any valid enforceable patent

claims. Except as expressly admitted, Respondents deny the remaining allegations contained in

paragraph 3.

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Ericsson generally repeats the headings set forth in the Complaint to simplify comparison of the
Complaint and this Response. By doing so, Ericsson makes no admission regarding the substance
of the headings or any other allegations of the Complaint and, in fact, unless otherwise stated, to
the extent that a particular heading can be construed as an allegation, Ericsson specifically denies
all such allegations.

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4. To the extent the allegations contained in paragraph 4 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents admit that Exhibits 1-3

purport to be certified copies of the Asserted Patents, that Appendices A-F purport to be copies of

the prosecution histories of the Asserted Patents and the references cited therein, and that Exhibits

4-5 purport to be certified copies of the assignment records for the Asserted Patents. Respondents

lack sufficient knowledge or information to form a belief regarding the remaining allegations or

characterizations contained in paragraph 4 and, therefore, deny those allegations.

5. To the extent the allegations contained in paragraph 5 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents lack sufficient

knowledge or information to form a belief regarding the allegations or characterizations contained

in paragraph 5 and, therefore, deny those allegations.

6. Respondents admit that Complainant seeks a permanent limited exclusion order

under 19 U.S.C. § 1337(d) but deny that Complainant is entitled to this remedy. Respondents admit

that Complainant seeks a permanent cease and desist order under 19 U.S.C. § 1337(f) but deny

that Complainant is entitled to this remedy. Respondents admit that Complainant seeks the

imposition of a bond if Respondents continue to import infringing articles but deny that

Complainant is entitled to this remedy. Except as expressly admitted, Respondents deny the

remaining allegations contained in paragraph 6.

7. Respondents admit that Complainant develops, manufactures, and imports cellular

products in the United States. Except as expressly admitted, Respondents lack sufficient

knowledge and information to form a belief as to the truth of the allegations contained in paragraph

7 and therefore deny those allegations.

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8. Respondents admit that cellular infrastructure is used by many wireless carriers and

handset providers in the United States. Except as expressly admitted, Respondents lack sufficient

knowledge and information to form a belief as to the truth of the allegations contained in paragraph

8 and therefore deny those allegations.

9. Respondents admit that 5G infrastructure provides vast improvements in cellular

speed. Except as expressly admitted, Respondents lack sufficient knowledge and information to

form a belief as to the truth of the allegations contained in paragraph 9 and therefore deny those

allegations.

10. Respondents admit that Respondents have initiated legal actions against

Complainant in district court and before the International Trade Commission, as well as other

foreign jurisdictions. Complainant mischaracterizes the state of the global litigation between

Ericsson and Apple. Ericsson never agreed to forego its right to prevent Apple’s unlawful

importation of infringing products in favor of any other proceeding. To the extent not specifically

and expressly admitted, Respondents deny all other allegations and characterizations in paragraph

10.

II. COMPLAINANT

11. Respondents admit that Apple is a company organized under the laws of California,

having its principal place of business at One Apple Park Way, Cupertino, CA 95014. Respondents

lack sufficient knowledge and information to form a belief as to the truth of the remaining

allegations contained in paragraph 11 and therefore deny those allegations.

III. PROPOSED RESPONDENTS

12. Respondents admit Ericsson AB is a corporation organized and existing under the

laws of the Kingdom of Sweden, having its principal place of business at Torshamnsgatan 23,

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Respondents admit that Complainant alleges that the cellular base station communication

equipment is used by wireless carriers in the United States in the deployment of 5G cellular

networks. Respondents lack sufficient knowledge or information to form a belief regarding the

characterizations and allegations contained in paragraph 15 and, therefore, deny those allegations

and characterizations.

16. The allegations contained in paragraph 16 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents

admit that Complainant alleges that the Accused Products are cellular base station communication

equipment, specifically mmWave antenna radio units and radio baseband units, components

thereof, and products containing same. Respondents lack sufficient knowledge or information to

form a belief regarding the characterizations and allegations contained in paragraph 16 and,

therefore, deny those allegations and characterizations.

17. The allegations contained in paragraph 17 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents deny

the allegations contained in paragraph 17.

18. The allegations contained in paragraph 18 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents

admit that Complainant alleges that examples of Accused Products are the Antenna Integrated Radio

5331 (hereafter, “AIR 5331”) and Radio Baseband Unit Street Macro 6701 (hereafter, “SM 6701”).

Respondents deny that these units infringe any valid and enforceable intellectual property right at

issue in this Investigation. Respondents deny that the identified Ericsson products can be

considered exemplary Accused Products. Respondents lack sufficient knowledge or information

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to form a belief regarding the characterizations and allegations contained in paragraph 18 and,

therefore, deny those allegations and characterizations.

V. THE ASSERTED PATENTS

A. The ’282 Patent

1. Identification of the Patent and Ownership

19. Respondents admit that the ’282 patent is entitled “Wireless Charging and

Communications Systems with Dual-Frequency Patch Antennas,” and admit that the ’282 patent

states that it was issued on January 30, 2018. Respondents admit that the ’282 patent states that it

issued from U.S. Patent App. Ser. No. 14/921,895, filed on October 23, 2015. Respondents lack

sufficient knowledge or information to form a belief regarding the remaining allegations or

characterizations contained in paragraph 19 and, therefore, deny those allegations. To the extent

not specifically and expressly admitted, Respondents deny all other allegations and

characterizations of this paragraph.

20. Respondents admit that Exhibit 4 purports to be a certified copy of the assignment

as recorded at the United States Patent and Trademark Office (“USPTO”) at Reel/Frame

037588/0698. Except as expressly admitted, Respondents lack sufficient knowledge and

information to form a belief as to the truth of the allegations contained in paragraph 20 of the

Complaint and therefore deny those allegations.

21. Respondents admit that Appendices A and B purport to be copies of the prosecution

history of the ’282 patent and each reference mentioned in that prosecution history, respectively.

Except as expressly admitted, Respondents lack sufficient knowledge and information to form a

belief as to the truth of the allegations contained in paragraph 21 of the Complaint and therefore

deny those allegations.

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2. Non-Technical Description of the Patented Invention

22. The allegations contained in paragraph 22 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents lack

sufficient knowledge and information to form a belief as to the truth of the allegations contained

in paragraph 22 of the Complaint and therefore deny those allegations.

23. The allegations contained in paragraph 23 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents lack

sufficient knowledge and information to form a belief as to the truth of the allegations contained

in paragraph 23 of the Complaint and therefore deny those allegations.

3. Foreign Counterparts to the ’282 Patent

24. Respondents admit that paragraph 24 purports to list each foreign patent and each

pending foreign patent application (not already issued as a patent), and each foreign patent

application that has been denied, abandoned or withdrawn, corresponding to the ’282 patent, with

an indication of the prosecution status of each such patent application. Except as expressly

admitted, Respondents lack sufficient knowledge and information to form a belief as to the truth

of the allegations contained in paragraph 24 of the Complaint and therefore deny those allegations.

B. The ’340 Patent

1. Identification of the Patent and Ownership

25. Respondents admit that the ’340 patent is entitled “Wireless Charging and

Communications Systems with Dual-Frequency Patch Antennas,” and admit that the ’340 patent

states that it was issued on April 16, 2019. Respondents admit that the ’340 patent states that it

issued from U.S. Patent App. Ser. No. 15/848,833, filed on December 20, 2017. Respondents admit

that the ’340 patent states that it is a continuation of U.S. Patent Application Serial No. 14/921,895,

filed on October 23, 2015, that issued as the ’282 patent. Respondents lack sufficient knowledge

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or information to form a belief regarding the remaining allegations or characterizations contained

in paragraph 25 and, therefore, deny those allegations. To the extent not specifically and expressly

admitted, Respondents deny all other allegations and characterizations of this paragraph.

26. Respondents admit that Exhibit 4 purports to be a certified copy of the assignment

as recorded at the USPTO at Reel/Frame 037588/0698. Except as expressly admitted, Respondents

lack sufficient knowledge and information to form a belief as to the truth of the allegations

contained in paragraph 26 of the Complaint and therefore deny those allegations.

27. Respondents admit that Appendices C and D purport to be copies of the prosecution

history of the ’340 patent and each reference mentioned in that prosecution history, respectively.

Except as expressly admitted, Respondents lack sufficient knowledge and information to form a

belief as to the truth of the allegations contained in paragraph 27 of the Complaint and therefore

deny those allegations.

2. Non-Technical Description of the Patented Invention

28. The allegations contained in paragraph 28 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents lack

sufficient knowledge and information to form a belief as to the truth of the allegations contained

in paragraph 28 of the Complaint and therefore deny those allegations.

3. Foreign Counterparts to the ’340 Patent

29. Respondents admit that paragraph 29 purports to list each foreign patent and each

pending foreign patent application (not already issued as a patent), and each foreign patent

application that has been denied, abandoned or withdrawn, corresponding to the ’340 patent, with

an indication of the prosecution status of each such patent application. Except as expressly

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admitted, Respondents lack sufficient knowledge and information to form a belief as to the truth

of the allegations contained in paragraph 29 of the Complaint and therefore deny those allegations.

C. The ’290 Patent

1. Identification of the Patent and Ownership

30. Respondents admit that the ’290 patent is entitled “Electronic Device with

Millimeter Wave Antennas,” and admit that the ’290 patent states that it was issued on May 30,

2017. Respondents admit that the ’290 patent states that it issued from U.S. Patent App. Ser. No.

15/097,868, filed on April 13, 2016. Respondents lack sufficient knowledge or information to form

a belief regarding the remaining allegations or characterizations contained in paragraph 30 and,

therefore, deny those allegations. To the extent not specifically and expressly admitted,

Respondents deny all other allegations and characterizations of this paragraph.

31. Respondents admit that Exhibit 5 purports to be a certified copy of the assignment

as recorded at the USPTO at Reel/Frame 038559/0001. Except as expressly admitted, Respondents

lack sufficient knowledge and information to form a belief as to the truth of the allegations

contained in paragraph 31 of the Complaint and therefore deny those allegations.

32. Respondents admit that Appendices E and F purport to be copies of the prosecution

history of the ’290 patent and each reference mentioned in that prosecution history, respectively.

Except as expressly admitted, Respondents lack sufficient knowledge and information to form a

belief as to the truth of the allegations contained in paragraph 32 of the Complaint and therefore

deny those allegations.

2. Non-Technical Description of the Patented Invention

33. The allegations contained in paragraph 33 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents lack

10
sufficient knowledge and information to form a belief as to the truth of the allegations contained

in paragraph 33 of the Complaint and therefore deny those allegations.

34. The allegations contained in paragraph 34 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents lack

sufficient knowledge and information to form a belief as to the truth of the allegations contained

in paragraph 34 of the Complaint and therefore deny those allegations.

3. Foreign Counterparts to the ’290 Patent

35. Respondents admit that paragraph 35 purports to list each foreign patent and each

pending foreign patent application (not already issued as a patent), and each foreign patent

application that has been denied, abandoned or withdrawn, corresponding to the ’290 patent, with

an indication of the prosecution status of each such patent application. Except as expressly

admitted, Respondents lack sufficient knowledge and information to form a belief as to the truth

of the allegations contained in paragraph 35 of the Complaint and therefore deny those allegations.

VI. UNFAIR ACTS OF PROPOSED RESPONDENTS

36. To the extent the allegations contained in paragraph 36 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents deny the allegations

contained in paragraph 36.

37. To the extent the allegations contained in paragraph 37 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents admit that they have

manufactured and/or tested certain mmWave antenna radio units and radio baseband units outside

of the United States and

. Respondents deny that these units infringe any valid and enforceable

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intellectual property right at issue in this Investigation. To the extent a response is required,

Respondents deny the allegations contained in paragraph 37.

38. Respondents admit that Exhibits 7–9 are charts purporting to show alleged

infringement of the asserted independent claims of the Asserted Patents. Respondents deny that

the charts demonstrate infringement by Respondents and/or the Accused Products, or establish that

the Respondents have otherwise acted unlawfully under Section 337. Respondents deny that

Exhibits 7–9 can be considered exemplary or “representative.” To the extent the other allegations

contained in paragraph 38 call for a legal conclusion, no response is required. Except as expressly

admitted, Respondents deny the allegations contained in paragraph 38.

39. To the extent the allegations contained in paragraph 39 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents admit that it has been

aware of the Asserted Patents since the date of its receipt of the Complaint. Except as expressly

admitted, Respondents deny any remaining allegations contained in paragraph 39.

40. To the extent the allegations contained in paragraph 40 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents deny that Respondents

have actively induced others to commit direct infringement of any valid and enforceable claim of

the Asserted Patents. Respondents admit that Exhibit 14 purports to be a portion of Ericsson’s

website. Except as expressly admitted, Respondents deny any remaining allegations contained in

paragraph 40.

41. To the extent the allegations contained in paragraph 41 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents deny that Respondents

have contributorily infringe certain Asserted Claims any valid and enforceable claim of the

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Asserted Patents. Except as expressly admitted, Respondents deny the allegations contained in

paragraph 41.

VII. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE

42. The allegations contained in paragraph 42 are generalized, vague, and ambiguous

and therefore cannot be admitted or denied. To the extent a response is required, Respondents

admit that they

. Respondents deny that these units

infringe any valid and enforceable intellectual property right at issue in this Investigation.

Respondents further deny all other allegations and characterizations of paragraph 42. Respondents

further deny all other allegations and characterizations of this paragraph.

43. Respondents admit that Ericsson has stated that “Ericsson Inc. is a wholly-owned

subsidiary of LME, and is responsible, among other things, for importing and selling cellular

network infrastructure equipment to cellular carriers in the United States.” See Ericsson Inc. v.

Samsung Elecs. Co., Ltd., No. 2:20-cv-00380-JRG, Complaint, Dkt. No. 1 at ¶ 20 (E.D. Tex. Dec.

11, 2020). To the extent Complainant makes any allegations or characterizations inconsistent with

this previous statement, Respondents deny those allegations. Respondents lack sufficient

knowledge and information to form a belief as to the truth of the allegations contained in paragraph

43 and therefore deny those allegations. Except as expressly admitted, Respondents deny the

remaining allegations contained in paragraph 43.

44. Respondents admit that Ericsson has entered into contracts with cellular service

providers in the United States to install base station equipment for 5G networks. Respondents

admit that Exhibit 16 purports to be a copy of Ericsson’s 2019 Annual Report, Exhibit 17 purports

to be a portion of Ericsson’s website, and Exhibits 18-26 purport to be Ericson press releases. To

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the extent Complainant makes any allegations inconsistent with these Exhibits, Respondents deny

those allegations. Respondents further admit that Ericsson has stated that “it has entered into

contracts with cellular service providers in the United States to install base station equipment for

5G networks.” Certain Semiconductor Devices, Wireless Infrastructure Equip. Containing the

Same, and Components Thereof, Inv. No. 337-TA-1254, EDIS Doc. ID 738482, Response to

Complaint ¶ 53 (March 31, 2021). To the extent Complainant makes any allegations or

characterizations inconsistent with this previous statement, Respondents deny those allegations.

Respondents further deny all other allegations and characterizations of paragraph 44.

45. Respondents admit that Ericsson has imported into the United States and sold

certain versions of its SM 6701 radio baseband unit. Respondents admit that Exhibit 27 purports

to be Ericsson’s SM 6701 cover letter for FCC certification. To the extent Complainant makes any

allegations inconsistent with this Exhibit, Respondents deny those allegations. Respondents further

admit that Ericsson has stated that “it has manufactured, imported, sold for importation, and sold

after importation certain versions of the Street Macro 6701 base station.” See Certain Wireless

Commc'n Equip. and Components Thereof, Inv. No. 337-TA-1247, EDIS Doc. ID 736274, Response

to Complaint ¶¶ 53 (Mar. 8, 2021); see also Certain Semiconductor Devices, Wireless Infrastructure

Equip. Containing the Same, and Components Thereof, Inv. No. 337-TA-1254, EDIS Doc. ID

738482, Response to Complaint ¶¶ 52 (Mar. 31, 2021). To the extent Complainant makes any

allegations or characterizations inconsistent with this previous statement, Respondents deny those

allegations. Respondents further deny all other allegations and characterizations of paragraph 45.

46. Respondents

Respondents admit that Exhibit 28 purports to be photos

from Ericsson’s AIR 5331 FCC submission and Exhibit 29 purports to be Ericsson’s AIR 5331

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cover letter for FCC certification. To the extent Complainant makes any allegations inconsistent

with these Exhibits, Respondents deny those allegations. Respondents further deny all other

allegations and characterizations of paragraph 46.

47. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 47 and therefore deny those allegations.

48. Respondents admit that Ericsson has a factory in Texas that manufactures 5G base

stations, including certain Street Macro products such as the SM 6701. Respondents further admit

that Exhibit 31 purports to be an Ericsson press release. To the extent Complainant makes any

allegations inconsistent with these Exhibits, Respondents deny those allegations. Respondents

deny all other allegations and characterizations of paragraph 48.

VIII. CLASSIFICATION UNDER THE HARMONIZED TARIFF SCHEDULE

49. Paragraph 49 calls for a legal conclusion, so no response is required.

IX. LICENSEES

50. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 50 and therefore deny those allegations.

X. DOMESTIC INDUSTRY

51. Paragraph 51 calls for a legal conclusion, so no response is required.

A. Technical Prong

52. To the extent the allegations contained in paragraph 52 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents admit that Confidential

Exhibits 10C–12C relate to Apple’s products and how those products allegedly include the features

claimed in the Asserted Patents. Except as expressly admitted, Respondents lack sufficient

knowledge and information to form a belief as to the truth of the allegations contained in paragraph

52 of the Complaint and therefore deny those allegations.

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B. Economic Prong

53. To the extent the allegations contained in paragraph 53 call for a legal conclusion,

no response is required. To the extent a response is required, Respondents lack sufficient

knowledge and information to form a belief as to the truth of the allegations contained in paragraph

53 and therefore deny those allegations.

54. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 54 and therefore deny those allegations.

55. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 55 and therefore deny those allegations.

56. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 56 and therefore deny those allegations.

57. Respondents lack sufficient knowledge and information to form a belief as to the

truth of the allegations contained in paragraph 57 and therefore deny those allegations.

XI. RELATED LITIGATION

58. Respondents admit that they are unaware of any other litigation involving the

Asserted Patents. Except as expressly admitted, Respondents deny the remaining allegations

contained in paragraph 58.

XII. REQUESTED RELIEF

59. Respondents deny the statements in this section and all subparagraphs thereof to

the extent that those statements purport to allege the existence of any factual or legal predicates

for the relief requested. Respondents deny that Complainant has any valid claim pursuant to

Section 337 of the Tariff Act of 1930, as amended. Respondents deny that they have engaged in

any acts of unfair competition or violated Section 337 by importing, selling for importation, or

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selling within the United States after importation any articles that infringe any valid and

enforceable intellectual property right at issue in this investigation. Respondents deny that any

patent claims at issue in this investigation are valid, enforceable, and infringed. Respondents also

deny that Complainant is entitled to any relief whatsoever, including without limitation the relief

requested in this section and all subparagraphs thereof.

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AFFIRMATIVE DEFENSES

Respondents assert the following affirmative defenses. Discovery is ongoing at the time of

this Response, so Respondents have not yet had sufficient time and opportunity to collect and

review all the information that may be relevant to the matters and issues raised herein. Pursuant to

19 U.S.C. §§ 210.14(b) and 210.14(c), therefore, Respondents reserve the right to seek amendment

of, modify, and/or expand these defenses and to take further positions as discovery proceeds in

this Investigation.

FIRST AFFIRMATIVE DEFENSE

(Invalidity)

A. U.S. Patent No. 9,882,282 (“the ’282 patent”)

1. The asserted claims of the ’282 patent are each invalid for failure to meet one or

more of the requirements set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 116.

2. All asserted claims of the ’282 patent are invalid under § 102 and/or § 103 in view

of at least the prior art identified in Appendix A, either alone or in combination. As discovery is

just beginning, Respondents reserve the right to rely on additional prior art for the purpose of this

affirmative defense insofar as they identify such art during the course of this Investigation.

3. Depending on the scope of the asserted claims of the ’282 patent or Complainant’s

contentions in connection therewith, the asserted claims may be invalid for failure to provide an

adequate written description or enabling disclosure under 35 U.S.C. § 112 (a) or for indefiniteness

under 35 U.S.C. § 112 (b).

B. U.S. Patent No. 10,263,340 (“the ’340 patent”)

4. The asserted claims of the ’340 patent are each invalid for failure to meet one or

more of the requirements set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 116.

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5. All asserted claims of the ’340 patent are invalid under § 102 and/or § 103 in view

of at least the prior art identified in Appendix A, either alone or in combination. As discovery is

just beginning, Respondents reserve the right to rely on additional prior art for the purpose of this

affirmative defense insofar as they identify such art during the course of this Investigation.

6. Depending on the scope of the asserted claims of the ’340 patent or Complainant’s

contentions in connection therewith, the asserted claims may be invalid for failure to provide an

adequate written description or enabling disclosure under 35 U.S.C. § 112 (a) or for indefiniteness

under 35 U.S.C. § 112 (b).

C. U.S. Patent No. 9,667,290 (“the ’290 patent”)

7. The asserted claims of the ’290 patent are each invalid for failure to meet one or

more of the requirements set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 116.

8. All asserted claims of the ’290 patent are invalid under § 102 and/or § 103 in view

of at least the prior art identified in Appendix A, either alone or in combination. As discovery is

just beginning, Respondents reserve the right to rely on additional prior art for the purpose of this

affirmative defense insofar as they identify such art during the course of this Investigation.

9. Depending on the scope of the asserted claims of the ’290 patent or Complainant’s

contentions in connection therewith, the asserted claims may be invalid for failure to provide an

adequate written description or enabling disclosure under 35 U.S.C. § 112 (a) or for indefiniteness

under 35 U.S.C. § 112 (b).

SECOND AFFIRMATIVE DEFENSE

(Non-Infringement)

10. Respondents have not directly infringed, indirectly infringed, contributed to

infringement, or induced infringement of any valid or enforceable claim of any of the Asserted

Patents, either literally or under the doctrine of equivalents, and have not otherwise committed any

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acts in violation of 35 U.S.C. § 271 and/or 19 U.S.C. § 1337. For each asserted claim in the

Asserted Patents, at least one claim element is missing from the Accused Products, including the

exemplary claim limitations identified below.

11. The asserted claims of the Asserted Patents are not entitled to any construction that

would cover any product made, sold, used, offered for sale, or imported into the United States by

the Respondents. Respondents do not infringe any of the Asserted Patents, either directly or

indirectly, the asserted claims are invalid or unenforceable, and/or Respondents have certain rights

arising from various doctrines.

12. Complainant has failed to identify their contentions with respect to what articles

(and which components and/or software thereof) are accused of infringement and how the involved

articles practice each limitation of the asserted claims of the Asserted Patents.

13. The doctrine of prosecution history estoppel and/or prosecution history disclaimer

preclude infringement of one or more of the asserted claims of the Asserted Patents.

A. The ’282 Patent

14. Respondents specifically deny the allegation that any accused Ericsson product, or

the use of such product, satisfies the limitations of any valid and enforceable claim of the ’282

patent.

15. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of independent claim l of the ’282 patent

are met: “a dual-polarization patch antenna that is coupled to the millimeter wave wireless

communications circuitry and that is configured to communicate wirelessly with the external

device, wherein the dual-polarization patch antenna comprises one of an array of dual-polarization

patch antennas and the millimeter wave wireless communications circuitry comprises adjustable

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circuitry that performs beam steering with the array of dual-polarization patch antennas during

millimeter wave wireless communications between the millimeter wave wireless communications

circuitry and the external device.”

16. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 2 of the ’282 patent

are met: “wherein the dual-polarization patch antenna has a patch antenna resonating element and

a ground, the patch antenna resonating element and the ground lie in separate parallel planes, the

patch antenna resonating element has first and second perpendicular central axes, dual-polarization

patch antenna has a first feed that lies along the first central axis, and the dual-polarization patch

antenna has a second feed that lies along the second central axis.”

17. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 3 of the ’282 patent

are met: “wherein the millimeter wave wireless communications circuitry communicates in

channels at first, second, third, and fourth frequencies and the dual-polarization patch antenna has

a first resonance peak that covers the first and second frequencies and a second resonance peak

that covers the third and fourth frequencies.”

18. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of independent claim l1 of the ’282

patent are met: “a dual-polarization patch antenna that is coupled to the millimeter wave wireless

communications circuitry and that is configured to communicate wirelessly with the external

device, wherein the dual-polarization patch antenna has a patch antenna resonating element and a

ground, the patch antenna resonating element has first and second perpendicular central axes, dual-

21
polarization patch antenna has a first feed that lies along the first central axis, and the dual-

polarization patch antenna has a second feed that lies along the second central axis.”

19. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim l2 of the ’282 patent

is met: “wherein the patch antenna resonating element and the ground lie in separate parallel

planes.”

B. The ’340 Patent

20. Respondents specifically deny the allegation that any accused Ericsson product, or

the use of such product, satisfies the limitations of any valid and enforceable claim of the ’340

patent.

21. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of independent claim l of the ’340 patent

are met: “an antenna coupled to the wireless circuitry and configured to convey the wireless signals

for the wireless circuitry, wherein the antenna comprises an antenna resonating element, an

antenna ground, a first antenna feed having a first feed terminal coupled to the antenna resonating

element, and a second antenna feed having a second feed terminal coupled to the antenna

resonating element” and “phase and magnitude adjustment circuitry coupled to the first and second

feed terminals.”

22. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 2 of the ’340 patent

is met: “wherein the antenna resonating element and the antenna ground lie in separate parallel

planes.”

22
23. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 3 of the ’340 patent

are met: “wherein the antenna resonating element has first and second perpendicular central axes,

the first feed terminal lies along the first central axis, and the second feed terminal lies along the

second central axis.”

24. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 4 of the ’340 patent

are met: “wherein the frequency between 10 GHz and 400 GHz is a first frequency between 10

GHz and 400 GHz, the wireless circuitry is configured to handle wireless signals at second, third,

and fourth frequencies between 10 GHz and 400 GHz, the antenna has a first resonance peak that

covers the first and second frequencies, and the antenna has a second resonance peak that covers

the third and fourth frequencies.”

25. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 6 of the ’340 patent

are met: “wherein the antenna comprises one of an array of antennas and each antenna in the array

of antennas is coupled to corresponding phase and magnitude adjustment circuitry.”

26. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 7 of the ’340 patent

is met: “wherein the array of antennas is configured to perform beam steering.”

27. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 8 of the ’340 patent

is met: “wherein the antenna is a dual-polarization dual-frequency antenna.”

23
28. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 9 of the ’340 patent

are met: “wherein the antenna is a dual-polarization antenna and the antenna resonating element is

a patch antenna resonating element.”

29. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of dependent claim 10 of the ’340 patent

are met: “wherein the frequency between 10 GHz and 400 GHz is a first frequency between 10

GHz and 400 GHz, the wireless circuitry is configured to transmit signals at the first frequency,

the wireless circuitry is configured to transmit signals at second, third, and fourth frequencies

between 10 GHz and 400 GHz, the antenna has a first resonance peak that covers the first and

second frequencies, and the antenna has a second resonance peak that covers the third and fourth

frequencies.”

30. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of independent claim 18 of the ’340

patent are met: “an array of patch antennas coupled to the wireless circuitry, wherein each patch

antenna in the array is a dual-polarization patch antenna that comprises an antenna resonating

element and first and second feed terminals coupled to the antenna resonating element and the

wireless circuitry includes adjustable circuitry that performs beam steering with the array of patch

antennas.”

31. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 19 of the ’340 patent

is met: “wherein the wireless circuitry comprises millimeter wave wireless communications

circuitry configured to handle wireless signals at a frequency between 10 GHz and 400 GHz.”

24
32. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 21 of the ’340 patent

is met: “wherein each patch antenna in the array of patch antennas is a dual-polarization dual-

frequency patch antenna.”

C. The ’290 Patent

33. Respondents specifically deny the allegation that any accused Ericsson product, or

the use of such product, satisfies the limitations of any valid and enforceable claim of the ’290

patent.

34. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitations of independent claim l of the ’290 patent

are met: “a baseband processor;” “a plurality of transceiver circuits each of which is associated

with a respective one of the phased antenna arrays and each of which includes a radio-frequency

transceiver;” and “a plurality of intermediate frequency signal paths each of which is coupled

between the baseband processor and a respective one of the transceiver circuits, wherein each

transceiver circuit includes an upconverter that receives intermediate frequency signals from the

baseband processor over a respective one of the plurality of intermediate frequency signal paths

and that upconverts those intermediate frequency signals to radio-frequency signals that are

provided to a respective one of the phased antenna arrays and wherein each transceiver circuit

includes a downconverter that receives radio-frequency antenna signals from that respective one

of the phased antenna arrays and downconverts those received radio-frequency antenna signals to

intermediate frequency signals that are conveyed to the baseband processor over the intermediate

frequency signal path that is coupled to that respective transceiver circuit.”

25
35. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 2 of the ’290 patent

is met: “wherein each phased antenna array includes multiple antenna elements on a dielectric.”

36. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 3 of the ’290 patent

is met: “wherein each phased antenna array includes a ground reflector.”

37. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 4 of the ’290 patent

is met: “wherein the antenna elements comprises patch antenna elements.”

38. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 5 of the ’290 patent

is met: “wherein the dielectric comprises a dielectric layer that is interposed between the patch

antenna elements and the ground reflector.”

39. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 6 of the ’290 patent

is met: “at least one dielectric layer; and at least one electrical component on the dielectric layer

that forms part of the transceiver circuit that is associated with that phased antenna array.”

40. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 13 of the ’290 patent

is met: “a dielectric logo on a rear face of the housing, wherein one of the phased antenna arrays

is mounted under the dielectric logo.”

26
41. By way of example and without limitation, and subject to further investigation,

Complainant has not shown that the following limitation of dependent claim 14 of the ’290 patent

is met: “wherein the phased antenna arrays comprise millimeter wave phased antenna arrays.”

THIRD AFFIRMATIVE DEFENSE

(Lack of Domestic Industry)

42. Complainant has not adequately alleged and cannot prove the existence of a

domestic industry, as required under § 1337(a)(2) and defined under § 1337(a)(3), in connection

with any of the Asserted Patents, or that such a domestic industry is in the process of being

established. Specifically, on information and belief, and prior to meaningful discovery,

Complainant has failed to show that it practices the Asserted Patents or that Complainant has made

a significant investment in plant and equipment, significant employment of labor or capital, or a

substantial investment in the exploitation of the Asserted Patents, including engineering, research

and development, or licensing, in the United States with respect to articles protected by the

Asserted Patents.

FOURTH AFFIRMATIVE DEFENSE

(Lack of Unfair Act)

43. Respondents have committed no unfair acts, including any acts that violate Section

337. For example, many of the Accused Products are not imported and thus may not form a basis

of an Unfair Act.

FIFTH AFFIRMATIVE DEFENSE

(Prosecution History Estoppel)

44. Complainant’s claims against Respondents are barred, in whole or in part, by

prosecution history estoppel based on statements made by the applicants during prosecution of the

Asserted Patents.

27
SIXTH AFFIRMATIVE DEFENSE
(Waiver and Estoppel)

45. Complainant’s claims against Respondents are barred, in whole or in part, due to

waiver and estoppel because it or its predecessors have long known of the basis for the allegations

it now asserts against Respondents but unreasonably delayed in seeking relief.

SEVENTH AFFIRMATIVE DEFENSE

(Inventorship)

46. Upon information and belief, and subject to the discovery of additional evidence,

Complainant’s 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.

EIGHT AFFIRMATIVE DEFENSE

(Public Interest)

47. Complainant cannot prove that the requested relief is in the public interest, as

required by 19 U.S.C. § 1337(d)(1).

NINTH AFFIRMATIVE DEFENSE

(Other Defenses)

48. Respondents further reserve the right to amend their Response to include other

affirmative defenses that Respondents may learn of during the course of this Investigation.

PRAYER FOR RELIEF

WHEREFORE, Respondents request that the Commission issue an order:

49. Denying all relief requested in the Complaint;

50. Finding that Respondents have not violated Section 337 of the Tariff Act of 1930,

as amended, 19 U.S.C. § 1337;

51. Finding that the asserted claims of the ’282, ’340, and ’290 patents are invalid;

52. Finding that there is no domestic industry for the ’282, ’340, and ’290 patents;

28
53. Finding that none of the Accused Products satisfy, either literally or under the

doctrine of equivalents, every element of any valid and enforceable claim of the ’282, ’340, or

’290 patent;

54. Finding that Respondents have not directly infringed, contributorily infringed,

and/or induced infringement of any valid and enforceable claim, either literally or under the

doctrine of equivalents, of the ’282, ’340, and ’290 patents;

55. Awarding Respondents their attorneys’ fees and costs incurred in responding to the

Complaint and defending this Investigation;

56. Dismissing the Complaint and terminating the Investigation;

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

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

RESPONSE TO NOTICE OF INVESTIGATION

Pursuant to Commission Rule 210.13(b), Respondents hereby respond to the Notice of

Institution of Investigation (the Notice) issued by the Commission on February 18, 2022 and

published in the Federal Register on February 25, 2022. Without admitting any of the specific or

general allegations set forth in the Complaint as referenced in the Notice, Respondents provide the

following response:

Respondents acknowledge that the Commission has instituted an investigation as set forth

in the Commission’s Notice. Respondents deny that there has been any violation of 19 U.S.C.

§ 1337 by Respondents in the importation into the United States, the sale for importation, or the

sale within the United States after importation of certain cellular base station communication

equipment, specifically mmWave antenna radio units and radio baseband units, components

thereof, and products containing same by reason of infringement of any valid and enforceable

29
claims of any patents owned by or assigned to the Complainant. Respondents acknowledge that

the Complainant alleges that an industry in the United States exists as required by Section 337, but

Respondents lack sufficient information and knowledge to form a belief as to the truth of

Complainant’s allegation that it meets the domestic industry requirement and, on this basis, deny

such allegation. Respondents further acknowledge that Complainant requested that the

Commission issue an exclusion order and cease and desist orders, but Respondents deny that

Complainant is entitled to any relief. Except as expressly admitted, Respondents deny the

allegations in the Notice of Investigation.

Dated: March 30, 2022 Respectfully submitted,

/s/ Adam D. Swain

John D. Haynes
David S. Frist
Michael C. Deane
ALSTON & BIRD LLP
One Atlantic Center
1201 West Peachtree Street
Suite 4900
Atlanta, GA 30309
Telephone: (404) 881-7000
Facsimile: (404) 881-7777

Adam D. Swain
John McGrath
ALSTON & BIRD LLP
950 F Street NW
Washington, DC 20004
Telephone: (202) 239-3622
Facsimile: (202) 239-3333

Darlena Subashi
ALSTON & BIRD LLP
90 Park Avenue
New York, NY 10016
Telephone: (212) 210-9400
Facsimile: (212) 210-9444

30
Theodore Stevenson
Adam Ahnhut
ALSTON & BIRD LLP
Chase Tower, 2200 Ross Avenue
Suite 2300
Dallas, TX 75201
Telephone: (214) 922-3400
Facsimile: (214) 922-3899

Counsel for Respondents Ericsson AB,

Ericsson Inc., and Telefonaktiebologet
LM Ericsson

31
CERTIFICATE OF SERVICE

I, hereby certify that a copy of the foregoing was served upon the following
parties as indicated:

The Honorable Lisa R. Barton Via EDIS

Secretary to the Commission
U.S. International Trade Commission
500 E Street, S.W., Room 112A
Washington, DC 20436

The Honorable Monica Bhattacharyya Via EDIS and Email:

Administrative Law Judge [email protected];
Edward Jou [email protected]
Michael Maas
U.S. International Trade Commission
500 E Street SW, Room 317
Washington, DC 20436
Sarah Sladic, Esq. Via Email:
Andrew Beverina, Esq. [email protected];
USITC Office of Unfair Import Investigations [email protected]
500 E Street SW
Washington, DC 20436
Ruffin B. Cordell Via Email: ServiceApple-
John J. Thuermer [email protected]
FISH & RICHARDSON P.C.
1000 Maine Ave. SW
Washington, DC 20024

Benjamin C. Elacqua
FISH & RICHARDSON P.C.
One Houston Center – 28th Floor
1221 McKinney
Houston, TX 77010

Betty H. Chen
FISH & RICHARDSON P.C.
500 Arguello Street
Ste. 500
Redwood City, CA 94063

Christopher O. Green
Joseph R. Dorris
FISH & RICHARDSON P.C.
1180 Peachtree Street., NE
21st Floor
Atlanta, GA 30309

Aleksandr Gelberg
FISH & RICHARDSON P.C.
12860 El Camino Real
Ste. 400
San Diego, CA 92130

Dated: March 30, 2022 /s/ Emily S. Healy

Emily S. Healy
CERTIFICATE OF SERVICE

I, hereby certify that a copy of the foregoing was served upon the following
parties as indicated:

The Honorable Lisa R. Barton Via EDIS

Secretary to the Commission
U.S. International Trade Commission
500 E Street, S.W., Room 112A
Washington, DC 20436

The Honorable Monica Bhattacharyya Via EDIS and Email:

Administrative Law Judge [email protected];
Edward Jou [email protected]
Michael Maas
U.S. International Trade Commission
500 E Street SW, Room 317
Washington, DC 20436
Sarah Sladic, Esq. Via Email:
Andrew Beverina, Esq. [email protected];
USITC Office of Unfair Import Investigations [email protected]
500 E Street SW
Washington, DC 20436
Ruffin B. Cordell Via Email: ServiceApple-
John J. Thuermer [email protected]
FISH & RICHARDSON P.C.
1000 Maine Ave. SW
Washington, DC 20024

Benjamin C. Elacqua
FISH & RICHARDSON P.C.
One Houston Center – 28th Floor
1221 McKinney
Houston, TX 77010

Betty H. Chen
FISH & RICHARDSON P.C.
500 Arguello Street
Ste. 500
Redwood City, CA 94063

Christopher O. Green
Joseph R. Dorris
FISH & RICHARDSON P.C.
1180 Peachtree Street., NE
21st Floor
Atlanta, GA 30309

Aleksandr Gelberg
FISH & RICHARDSON P.C.
12860 El Camino Real
Ste. 400
San Diego, CA 92130

Dated: April 5, 2022 /s/ Emily S. Healy

Emily S. Healy