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22 October 2018Patents

English Court of Appeal set to rule on Unwired Planet v Huawei

The English Court of Appeal will tomorrow rule on the long-running standard-essential patent (SEP) dispute between licensing business Unwired Planet and Chinese telecoms company Huawei.

WIPR will report on tomorrow’s decision, and practitioners’ reactions to it, when it is handed down (scheduled for 10:30am, BST).

The dispute started in 2014, when Unwired Planet accused Huawei, Samsung, and Google of infringing six patents. Five of them were claimed to be essential to various telecommunications standards, such as 3G and 4G.

Unwired Planet made offers to license the SEPs, but the three companies rejected these as they claimed that the offers did not meet fair, reasonable and non-discriminatory (FRAND) standards.

Google and Samsung settled in 2015 and 2016, respectively.

Last year, Unwired Planet’s suit reached the English High Court. The court was asked to resolve whether and to what extent the various terms on offer comply with FRAND obligations.

Mr Justice Birss said that a worldwide licence would not be contrary to competition law and that “willing and reasonable parties” would agree to a worldwide licence, meaning that Unwired Planet was entitled to insist on it.

The decision was the first one in which the English High Court had made a FRAND determination and set a royalty rate, which Birss said should be a single rate.

Birss also held that an injunction ought to be granted against Huawei, because the Chinese telecoms company was without a licence when it had the means to take one.

He did not grant the injunction at that time, but said that he would do so once Unwired Planet had drawn up a full set of the terms that such a worldwide licence would have.

In response, Huawei argued that the court should not grant an injunction amid the company’s outstanding appeal.

Two months after his initial decision, Birss handed down what he called a “FRAND injunction”.

Birss said that the injunction will cease to have effect if Huawei enters into a FRAND licencing agreement with Unwired Planet.

The injunction was stayed, pending the result of Huawei’s appeal.

Tomorrow morning, the English Court of Appeal will confirm whether Birss had the ability to determine global FRAND rates, as well as whether there is just a single FRAND rate in any circumstance.

The court will also consider Huawei’s ‘competition law defence’ (as per article 102 of the Treaty on the Functioning of the EU) to the injunction, and whether the non-discriminatory aspect of FRAND licensing allows SEP owners to charge differing royalty rates for similar licensees.

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