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On December 5, 2019, McKool Smith secured a victory before the U.S. Court of Appeals for the Federal Circuit on behalf of Ericsson in a closely watched FRAND licensing dispute against TCL Communications.

In a unanimous decision (available here), the Federal Circuit vacated the result of a bench trial in which the district court set a royalty rate for TCL to license Ericsson’s cellular essential patents, along with a “release payment” for past unlicensed sales. The Federal Circuit held that because the release payment was legally similar to awarding damages for infringement, the initial FRAND royalty rate determination must be decided by a jury. The Federal Circuit vacated the district court decision and remanded for a jury trial.

In the Federal Circuit’s decision, Judge Raymond Chen noted “Because we conclude that the release payment is in substance compensatory relief for TCL’s past wrongs (i.e., practicing Ericsson’s patented technologies without a license), we hold that the district court deprived Ericsson of its constitutional right to a jury trial on that legal relief by requiring that Ericsson adjudicate that relief in a bench trial.”

“We are pleased with the Federal Circuit’s decision,” said Ted Stevenson, lead counsel for Ericsson. “Our position has always been that the Seventh Amendment entitles our client to a right to a trial by jury.”

Along with Mr. Stevenson, Ericsson was represented by McKool Smith principal Nick Mathews, co-counsel Jeff Lamken and Ray Hashem from MoloLamken LLP and John M. Whealan, a professor at George Washington University Law School.

The case is TCL Communication Technology Holdings Ltd. et al. v. Telefonaktiebolaget LM Ericsson, case number 18-1363, in the U.S. Court of Appeals for the Federal Circuit.

With 165 trial lawyers across offices in Austin, Dallas, Houston, Los Angeles, Marshall, New York, and Washington, D.C., McKool Smith has established a reputation as one of America’s leading trial firms. Since 2006, the firm has secured 11 nine-figure jury verdicts and 13 eight-figure jury verdicts. The firm has also won more VerdictSearch and The National Law Journal “Top 100 Verdicts” over the last 10 years than any other law firm in the country. Courtroom successes like these have earned McKool Smith critical acclaim and helped the firm become what The Wall Street Journal describes as “one of the biggest law firm success stories of the past decade.” McKool Smith represents clients in complex commercial litigation, intellectual property, bankruptcy, and white collar defense matters.

For more information, please contact Yvonnie Phan at (646) 779-1123 or email yvonniep@infiniteglobal.com.

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