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18 October 2017Patents

AIPPI 2017: Ericsson counsel praises Birss FRAND ruling

A counsel at Ericsson has lauded a court ruling on fair, reasonable and non-discriminatory (FRAND) licensing as one of the most important ever.

FRAND developments were at the centre of a panel called “How much for your FRAND?” at the  2017 AIPPI World Congress in Sydney yesterday, October 17.

For Sven Törringer, senior legal counsel at Ericsson, the English High Court’s judgment in the dispute between Huawei and Unwired Planet is one of most important and one of the few where the court has tried to decide a FRAND royalty rate.

Clearly Mr Justice Birss knew the stakes were high in the clash, said Törringer, adding that the judgment was 166 pages long.

In June this year, Birss hit Huawei  with a new form of injunction—on FRAND—after the company did not accept a licence that the court had found to be fair and reasonable.

For more information on the dispute between Huawei and Unwired Planet, click  here.

“Far too often, FRAND is referred to as a number of royalty rates. I don’t think that’s true; FRAND is a framework … it’s a roadmap on how a licensee should behave,” said Törringer.

He added: “The technology will not be successful if you only have implementers implementing it and not developing it,” he concluded.

What’s currently unclear is whether FRAND is a fixed rate or a range of amounts. Törringer explained that although most articles he’s read seem to interpret Birss’s judgment as a rate, he believes the ruling can be argued both ways.

Richard Vary, partner at Bird & Bird, provided an overview of the clash, explaining that although FRAND usually contains an overlap of competition and IP law, Birss managed to dismiss competition from the argument.

Vary added that one problem in this field is that “not all patents are equal” and that the European Telecommunications Standards Institute database, which contains a list of standard-essential patents (SEPs), is a “bit of a mess”.

Ken Adamo, partner at Kirkland & Ellis and the panel moderator, said that unlike in other countries, cases such as these go to jury trial in the US.

“You think SEP FRAND wars are a mess at the 4G level, you ain’t seen nothing yet, wait until 5G warms up,” he warned.

Márcio Merkl, partner at Abreu, Merkl e Advogados Associados, provided details on FRAND cases in Brazil.

According to Merkl, injunctive relief is available and the behaviour of the parties comes into play.

“An offer to arbitrate may be taken into account; it may show parties are willing to enter into a licence,” he said.

However, he cautioned that there is a strong trend in some courts to consider monetary relief as sufficient in IP cases.

The 2017 AIPPI World Congress finished yesterday.

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