This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 2: Standard Essential Patents
Superior Tribunal of the Judicial District of Bogotá, Colombia (Civil Chamber) [2022]: Telefonaktiebolaget LM Ericsson (Publ) v Apple Colombia S.A.S., Nos. 043-2022-00018-01 and 043-2022-00018-02
Date of judgment: November 15 and December 9, 2022
Issuing authority: Civil Chamber of the Superior Tribunal of the Judicial District of Bogotá
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civil)
Subject matter: Patents (Inventions); Enforcement of IP and Related Laws
Plaintiff: Telefonaktiebolaget LM Ericsson (Publ)
Defendant: Apple Colombia S.A.S.
Keywords: Standard essential patents, Preliminary injunctions, SEP infringement, Unfair competition, National jurisdiction and competence, Relations between international jurisdictions
Basic facts: After the expiration of an agreement on the use of standard essential patents (SEPs), Ericsson initiated multiple litigations against Apple in various jurisdictions, including Brazil, Belgium, and Germany. These disputes revolve around patent infringement and compliance with FRAND licensing obligations.
In early 2022 in Colombia, Telefonaktiebolaget LM Ericsson (Publ) filed a request for a preliminary injunction on the grounds that after the license expired, Apple continued to use the Colombian patent 36031, which is an SEP for 5G technology, without authorization. Telefonaktiebolaget LM Ericsson (Publ) requested a preliminary injunction to cease this alleged infringement.
In the first instance, on April 28, 2022, the 43rd Civil Court of the Circuit of Bogotá admitted the request for preliminary injunction invoked by Telefonaktiebolaget LM Ericsson (Publ) against Apple Colombia S.A.S. and, prior to the decree of such measures, ordered Ericsson to provide a bond in the amount of COP$205,468,200 (approx. USD$50,000). Once this condition was met, on July 6, 2022, the judge decreed the preliminary injunction, which was supplemented and clarified on August 16, 2022, ordering:
(i) Apple Colombia S.A.S. to immediately cease and desist from the sale, importation, exportation, and commercialization of all devices or cell phones with the technology protected by the SEP, i.e., 5G (iPhone 12 and 13, iPad, among others);
(ii) immediately cease using advertising material in any media for devices or cell phones with the mentioned technology; as well as inform all distributors of the existence of the preliminary injunction so that they adopt the necessary measures;
(iii) the customs authority to prevent the importation into Colombia of devices or cell phones with the mentioned technology; and
(iv) Apple Colombia S.A.S. to refrain from requesting, processing, claiming, or executing any “anti-suit injunctions” from foreign courts, or any similar measure, that may prohibit, limit, or restrict in any way Ericsson’s right to protect its patent in Colombia, or that prohibits, deters, sanctions, fines, or limits in any way Ericsson’s right to protect its patent in Colombia, including the right to request and obtain precautionary measures.
Held: In the second instance, on November 15, 2022, the Civil Chamber of the Superior Tribunal of the Judicial District of Bogotá revoked the first instance judge’s decision and denied the preliminary injunction, finding there was no evidence that led to the certainty about the SEP infringement. On December 19, 2022, the Tribunal denied the requested clarification and addition of its decision but made some precisions about the expert opinions presented by the parties.
Relevant holdings in relation to standard essential patents:
The role of courts in SEP disputes: The decisions adopted within the preliminary injunction proceeding highlight the difficulties faced by the judge in the evidentiary analysis and the scope of their powers to protect the patent holder’s rights.
The validity of patents, the determination of essentiality, and patent infringement: As preliminary injunctions are adopted without notification to the counterparty (ex parte), the first instance analysis only considered the applicant’s evidence, thus considering the patent as valid and as an SEP and, consequently, determining there to be a patent infringement that required the adoption of precautionary measures. In the second instance, with the evidence provided by the alleged infringer with his appellate remedy request, it was concluded that because of a contradiction between the expert opinions provided by the parties, there existed no certainty about the SEP’s validity. Therefore, it could not be affirmed that there was a patent infringement.
Jurisdiction and mechanisms for protecting SEPs, especially precautionary measures: On one hand, the second instance decision particularly raises doubt about the effectiveness of preliminary injunctions as a protective mechanism for SEPs, since ultimately the discussion will be subject to the judicial process that is presented. On the other hand, the adopted precautionary measures highlight the close relationship that jurisdictions worldwide have in SEP matters, as occurred by preventing and prohibiting Apple Colombia S.A.S. from resorting to “anti-suit injunctions” in other jurisdictions.
Relevant legislation: Articles 245 to 249 of Decision No. 486 of the Commission of the Cartagena Agreement Establishing the Common Industrial Property Regime; Article 31 of Colombian Law 256 of 1996, “By which rules on unfair competition are issued”; Article 590 of Colombian Law No. 1564 of 2012 on the Issuance of the General Procedure Code and Other Provisions; Articles 570 and 597 of the Colombian Commercial Code.