HTC to pay royalties for infringing UK-only sales, Birss rules
The English High Court has struck out part of a damages claim in a telecommunications patent suit, in a reprieve for Taiwanese phone maker HTC.
Judge Colin Birss had previously issued the order during a case management hearing, but set out his reasoning yesterday, November 4.
German IP licensing company IPCom sued HTC for infringing a patent covering 3G mobile technology. The English Court of Appeal found IPCom’s patent to be valid and infringed, and ordered a new inquiry to determine the amount of damages to be paid by HTC.
IPCom was seeking a confidential amount but one which Birss said was a “very substantial sum” worth “hundreds of millions of US dollars”.
The German company’s hopes of receiving such a sum will have dimmed after Birss ruled that IPCom was not entitled to royalties on most of the phone sales.
The request was based on a 0.5% royalty of more than a million phones sold in the UK, as well as hundreds of millions of phones including “workaround” devices that did not infringe the patent, and other phones sold internationally.
“The reason IPCom cannot make the claim for losses caused by the failure to pay the flat rate royalty on foreign sales is simple. Those sales were not caused by an act of infringement of a UK patent. That is the reason why this claim is wrong,” Birss wrote.
“It is also the answer to the part of IPCom's argument which is used to sweep up non-infringing workaround phones in the damages claim, at least outside the UK,” he added.
Proceedings to determine the amount of damages HTC owes to IPCom will continue, but only on the basis of infringing sales in the UK.
Birss is known as one of the leading experts on standard-essential patents (SEP) and fair, reasonable, and non-discriminatory (FRAND) licensing obligations in the UK.
WIPR recently interviewed Birss on LSPN Connect on the prevailing trends in FRAND licensing, including his landmark decision in Unwired Planet, which was settled by the UK Supreme Court this year.
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