Ericsson Inc. v. Sol IP, LLC

I'll research this matter, starting with the IPR itself and any parallel district court litigation.

Good context emerging — this IPR is one of a series tied to a Texas district court case. Let me dig into the patent, the parties, and the litigation outcome.

Now let me verify the district court track — intervention, standing challenge, and how/why it ended — plus the fate of the companion IPRs.

Overview

Parties. The petitioner, Ericsson Inc., is the U.S. subsidiary of Sweden's Telefonaktiebolaget LM Ericsson, one of the three or four largest suppliers of LTE/4G radio access network (RAN) infrastructure — base stations (eNodeBs), baseband units, and the software that runs them — sold to AT&T, Sprint, Verizon and other U.S. carriers. The respondent/patent owner is Sol IP, LLC, a patent-assertion entity organized in Virginia (Vienna, VA; formed January 2015, with Choongsoo Park identified as member in public records), which describes itself as "an intellectual-property licensing company" holding an exclusive license — with "all substantial rights" — to a portfolio of Korean telecom patents from the Electronics and Telecommunications Research Institute (ETRI) of Daejeon, South Korea, a government-funded research institute. ETRI remains the record owner/assignee of the '204 patent; Sol IP is the exclusive licensee and the party that defended the IPRs. Unified Patents and Mondaq both characterize Sol IP as an NPE/PAE, and Sol IP's licensing programs run through LTE/LTE-A and Wi-Fi portfolios. One caption nuance: the case metadata lists Sol IP as "Defendant," but in IPR2020‑00242 Ericsson is the petitioner and Sol IP/ETRI the patent owner — no Article III defendant exists in a PTAB proceeding. (Mondaq on Sol IP/ETRI; Unified Patents PATROLL)

The patent and the accused technology. The sole patent at issue in the IPR is U.S. 10,080,204 B2, "Cell search method, forward link frame transmission method, apparatus using the same and forward link frame structure" (issued Sept. 18, 2018; app. 15/286,600 filed Oct. 6, 2016; assignee ET

I'll research this matter, starting with the PTAB proceeding and any related district court litigation.

Ericsson Inc. v. Sol IP, LLC — Litigation Developments & Outcome

Threshold note on the case framing

The metadata in this file (IPR2020-00242, "Ericsson Inc. v. Sol IP, LLC," filed 2019‑12‑10, terminated 2020‑03‑09) describes a PTAB inter partes review, not a district court infringement suit. The "patent infringement litigation" in which the '204 patent was actually asserted is the consolidated Eastern District of Texas case:

• Sol IP, LLC v. AT&T Mobility LLC, No. 2:18‑cv‑00526‑RWS‑RSP (E.D. Tex.) (lead case)
• consolidated with Sol IP, LLC v. Sprint Communications Co. L.P., No. 2:18‑cv‑00527‑RWS‑RSP, and Sol IP, LLC v. Verizon Communications Inc./Cellco Partnership, No. 2:18‑cv‑00528‑RWS‑RSP

In that suit, Ericsson Inc. and Nokia of America Corporation were intervenors, not named defendants — the carriers tendered the Ericsson/Nokia network infrastructure, and the intervenors took over the invalidity defense. U.S. Patent No. 10,080,204 ("Cell search method, forward link frame transmission method, apparatus using the same and forward link frame structure," issued 2018‑09‑18, owned by the Electronics and Telecommunications Research Institute ("ETRI") and exclusively licensed to Sol IP) was one of 27 asserted patents. Both tracks are covered below, in chronological order.

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Chronological developments

1. Filing and initial pleadings (district court)

Strategic significance: Ericsson's intervenor status is what gave it standing/need to file the December 2019 IPRs, and it also meant Ericsson was not itself a named defendant — which matters for the § 315(b) one‑year bar analysis (intervention generally does not start the clock) and for estoppel.

2. Case management / narrowing of the 27 patents

• 2019‑09‑09 — Court orders Sol IP to group the asserted patents into three buckets: "LTE A," "LTE B," and "Wi‑Fi" (Dkt. No. 173).
• 2019‑09‑11 — Parties file the P.R. 4‑3 Joint Claim Construction and Prehearing Statement, stating "There are no currently agreed constructions" (Dkt. No. 176 at 2).
• 2019‑09 — Sol IP serves its claim election and notice of patent grouping (Dkt. No. 202), which mooted a number of previously disputed terms.
• The '204 patent landed in "LTE B" (the "cell search" family, together with the '031, '565, '571, '064, '438, '976, '174, '435, and '946 patents).

3. Claim construction (Markman) — the case did reach this stage

• 2019‑10‑16 — Sol IP files its Opening Claim Construction Brief for the "LTE Group B" patents (Dkt. No. 206), grouping the '031, '976, and '204 patents together as sharing a substantially similar specification (Defendants argued "identical").
• 2019‑12‑04 and 2019‑12‑05 — Markman hearings: LTE A on December 4; LTE B and Wi‑Fi on December 5. The Court circulated preliminary constructions shortly before each hearing to focus argument.
• 2020‑01‑05 — Claim Construction Memorandum and Order on the Wi‑Fi patents ('881 and '095) (Judge Payne). The court construed "bit information" as "information regarding a data field," treated "the least one stream" as "the at least one stream," but held "the second set of bits" and "the third set of bits" indefinite for lack of antecedent basis — a mixed result that knocked out some Wi‑Fi claims.
• January 2020 (early) — Claim Construction Memorandum and Order on the LTE B patents, Dkt. No. 281, with a dedicated section "Construction of Disputed Terms in the '031, '976, and '204 Patents." In that order the defendants (including intervenor Ericsson) sought limiting constructions of the "cell search" preambles (e.g., "method in a mobile station … for obtaining system timing of the base station having the largest reception signal and a cell identifier"), while Sol IP argued the preambles were not limiting and that plain meaning applied.

Caveat on the '204-specific outcome: I verified the structure and terms at issue in the LTE B order (Dkt. No. 281) via CourtListener (opinion 9975776) and the vLex reproduction, but the retrieved text did not include the Court's final ruling on each '204 term. The full order is available at CourtListener and at the RECAP PDF (storage.courtlistener.com/recap/gov.uscourts.txed.186351/gov.uscourts.txed.186351.281.0.pdf). I am not stating a specific construction for the '204 claims because I could not confirm it from the sources retrieved.

4. Discovery milestones of strategic significance

• Interrogatory fight over FRAND/damages discovery (Order at Dkt. No. 291). Defendants moved to compel (Dkt. No. 213); the Court denied the motion as to Interrogatory No. 2 (requiring § 112 written-description contentions for every element of every asserted claim — burden outweighed by alternative discovery) but granted it in part as to Interrogatory No. 9, ordering Sol IP to identify and produce records concerning prior license offers/negotiations with Samsung and Apple — core FRAND comparables evidence. The court declined to compel as to offers that never ripened into agreements, on relevance/negotiation-privilege-type reasoning.
• Motion for leave to amend invalidity contentions (Dkt. No. 293, 2020‑01‑07). Defendants sought to add the IEEE 802.11n standard as an anticipatory reference against the '940 patent. Magistrate Judge Payne denied the motion for lack of diligence under P.R. 3‑6(b), because 802.11n was publicly available and defendants had already charted it against other Wi‑Fi patents — a significant win for Sol IP that locked down defendants' invalidity case on that patent.

5. The PTAB track: Ericsson's 13 petitions, including IPR2020‑00242

I'll research the counsel of record for the petitioner/plaintiff (Ericsson Inc.) in this proceeding.

Bottom line

I could not verify, from accessible public sources, the names of the attorneys who signed the petition for Ericsson Inc. in IPR2020-00242. Because the Board never instituted review and the proceeding ended by settlement roughly three months after filing, there is no institution decision, no final written decision, and no Federal Circuit appeal — the usual documents that restate counsel — and the PTACTS document images (petition signature block, termination decision appearance list) did not surface in my searches. I am therefore not naming any attorney as counsel of record in this case. Doing so would be fabrication.

Two framing points before the detail:

1. There is no "plaintiff" in the conventional sense. IPR2020-00242 is an inter partes review before the PTAB, not a district court infringement action. The party in the plaintiff-side role is the petitioner, Ericsson Inc.; the defendant-side party is the patent owner, Sol IP, LLC. (Docket Alarm also lists "Telecommunications Research Institute" alongside Sol IP as patent owner, which likely reflects a real-party-interest or ownership notation worth confirming.)
2. The "patent infringement case" may be a different docket. Ericsson's infringement exposure to Sol IP ran through the parallel EDTX suit Sol IP, LLC v. AT&T Mobility LLC et al., No. 2:18-cv-00526 (E.D. Tex.), where Ericsson was a co-defendant. Counsel in that case is a separate roster from counsel in the IPR. If your deliverable is "counsel for Ericsson as a defendant," say so and the analysis changes.

What the record does establish (verified)

Docket index: https://www.docketalarm.com/search/?q=&f=q_search_within-docket%3A%28IPR2020-00242%29+AND+court%3A%28%22Patent+Trial+and+Appeal+Board%22%29

Note the procedural wrinkle: the petition as originally filed was defective (Paper 6) and had to be corrected (Papers 7–8) before the accord filing date was set. That matters for identifying counsel, because the § 42.8(b)(3) designation may appear in the corrected papers rather than the original.

Why the counsel field is empty

• PTAB is not on PACER. The docket sheet is in USPTO PTACTS, and document images are served through that system; my searches reached docket metadata (the Docket Alarm mirror) but not the petition's signature block.
• No institution decision. The Board's institution decision routinely restates lead and back-up counsel for both sides. None issued here.
• Paper 12 (termination) almost certainly names counsel for both parties, since it grants an unopposed motion to dismiss signed by both sides. Its text was not retrievable in my searches.
• Paper 9 signature block is the single most reliable source: an unopposed motion to dismiss is signed by counsel for petitioner and patent owner.
• Nothing here appears to be sealed — only the settlement agreement itself was made confidential (Paper 10). The sealing of the agreement does not seal the appearances.

Related Ericsson PTAB counsel — contextual only, NOT confirmation

These are documented Ericsson-side representations in adjacent matters. They are not evidence of who signed the IPR2020-00242 petition, and I would not present them as such:

Sources: PTACTS petition filings at ptacts.uspto.gov (Nokia/Ericsson petition, Apr. 5, 2022); Adaptix's motion to terminate, 337-TA-871 (Dec. 3, 2013); IPR2024-00314 Petitioner's Request for Director Review (Aug. 14, 2024).

The takeaway is that Ericsson in this period used a two-firm model — an IPR-specialist firm for PTAB plus Texas trial counsel — so a petition filed in December 2019 would most likely carry an Alston & Bird or Finnegan signature for lead counsel with McKool Smith back-up. That is an inference, not a finding.

How to close the gap definitively

1. PTACTS case viewer for IPR2020-00242 (https://ptacts.uspto.gov/ptacts/ui/case-viewer/ — search by proceeding number), then download Paper 1, Paper 7 (corrected exhibit table), Paper 9, and Paper 12. Paper 9 and Paper 12 will list counsel for both parties on their face.
2. USPTO PTAB Endpoint API (developer.uspto.gov, ptab-api / ptab-appeals-api) returns petitioner real-party-in-interest and counsel fields for AIA proceedings, keyed on trial number.
3. Request the certified docket and Papers 1–14 from the PTAB's Trial Information desk if the images are unavailable in PTACTS — for a pre-institution termination, the file is thin and inexpensive to obtain.
4. If the actual target is the EDTX infringement case (No. 2:18-cv-00526), pull the docket there: Ericsson's defense team in that case included Texas counsel, and the lead/back-up structure will differ from the IPR.

Suggested treatment in the final work product

Rather than a counsel table with invented names, I would render this as: "Petitioner Ericsson Inc. filed IPR2020-00242 on December 10, 2019, but the Board never instituted and the proceeding terminated on settlement on March 9, 2020 (Paper 12), with a refund issued April 2, 2020 (Paper 14). Petitioner's counsel of record is not reported in the publicly accessible docket metadata; the § 42.8(b)(3) designations appear in the petition papers, which must be retrieved from PTACTS before any counsel identification is asserted."

If you can authorize retrieval of Papers 1 and 9 (or confirm you want me to work from the EDTX docket instead), I will populate the attorney table with sourced names, roles, firms, and registration numbers.

I'll research this. Note up front: the metadata frames this as an infringement case, but IPR2020-00242 is a PTAB proceeding where Sol IP, LLC is the patent owner (not a defendant). I'll look for Sol IP's counsel of record in the IPR, and check for any parallel district court litigation.

Key lead: a mandatory notice in the companion IPR2020-00239 lists Sol IP's counsel. Let me verify what was filed in IPR2020-00242 itself and confirm the parties' alignment.

Threshold correction: there is no "defendant" here

IPR2020-00242 is not a patent infringement case. It is an inter partes review before the PTAB in which:

• Petitioner: Ericsson Inc.
• Patent Owner: Sol IP, LLC (Docket Alarm lists the patent owner of record as Sol IP, LLC, with Electronics and Telecommunications Research Institute (ETRI) also appearing as patent owner — consistent with ETRI owning the '204 patent family and Sol IP being its exclusive licensee)
• Panel: APJs Kristen Droesch, Scott Howard, and Trevor Jefferson
• Outcome: Paper 12, Settlement Before Institution — Termination Decision (Mar. 9, 2020), i.e., terminated before an institution decision ever issued

So the party whose counsel you want is the patent owner, Sol IP, not a defendant. (In the underlying district court litigation — Sol IP, LLC v. AT&T Mobility LLC, No. 2:18-cv-00526-RWS-RSP (E.D. Tex.), lead case, with consolidated Sprint and Verizon cases — Sol IP was the plaintiff and Ericsson was an intervenor, not a defendant. The '204 patent was one of ten "LTE B" patents construed in Judge Schroeder's Dec. 2019 claim construction order.)

Counsel of record for Sol IP

Because the proceeding terminated pre-institution, the record is thin — there is no institution decision, no patent owner response, and no hearing transcript. The operative appearance document is Sol IP's Mandatory Notices under 37 C.F.R. § 42.8 identifying lead and backup counsel.

The best-sourced identification comes from the companion petition, Ericsson Inc. v. Electronics and Telecommunications Research Institute, IPR2020-00239, where Sol IP filed a "Mandatory Notice by Exclusive Licensee Sol IP, LLC" dated December 31, 2019 — signed by the same Wolf Greenfield team that appears across the Ericsson/ETRI/Sol IP petition family, which expressly cross-references IPR2020-00242.

No in-house counsel and no local counsel appear in the available docket materials. That is normal at the PTAB, which has no local-counsel requirement; local counsel would only be expected in the parallel E.D. Tex. litigation.

Confidence and gaps — read this before relying on the table

• Well sourced: the identity of Giunta and Hunt as Sol IP's designated lead/backup counsel, their registration numbers, and their Boston address, from the Dec. 31, 2019 § 42.8 mandatory notice filed by "Exclusive Licensee Sol IP, LLC" in the companion IPR2020-00239.
• Inference, not direct confirmation: I was unable to pull the corresponding § 42.8 notice filed inside IPR2020-00242 itself. The docket listing (12 papers, terminating at Paper 12) is consistent with only a petition, notices, settlement papers, and the termination decision. Given the shared counsel team and express cross-reference between the petitions, the same Wolf Greenfield designation in -00242 is highly likely but should be confirmed against the actual Paper 3/4 filings on PTAB E2E (ptacts.uspto.gov) before being cited as record fact.
• Not verified / do not rely on: for the parallel E.D. Tex. actions, third-party litigation databases list Rocco Magni and Seong Jun Park as Sol IP-side attorneys in Sol IP v. Verizon (2:18-cv-00528). I could not confirm their firm affiliations or roles from a primary source, so I am not attributing them here.
• Nothing sealed: no sealing or protective-order issues surfaced; the pre-institution settlement posture simply means the record never developed to the point where broader counsel appearances would exist.

Recommended verification path: PTAB E2E docket for IPR2020-00242 (Papers 1–12), plus the § 42.8 notices in IPR2020-00239 and -00240/-00241, which should show the identical Wolf Greenfield designation and confirm whether any additional Ericsson-side or Sol IP-side counsel entered.