shutterstock_585539654_tk_kurikawa
5 November 2020PatentsRory O'Neill

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.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox

Today’s top stories

Dotcom faces extradition to US following ‘mixed bag ruling’

Daimler infringed Conversant patent, Munich court rules

Elite law firms pledge equal opportunities for BAME junior lawyers

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
28 September 2020   Ahead of his appointment to the English Court of Appeal, LSPN Connect spoke with Justice Colin Birss in a typically frank and wide-ranging interview, including the fall-out from Unwired Planet v Huawei.
Patents
26 August 2020   The UK Supreme Court has ruled today that English courts have the jurisdiction to determine fair, reasonable, and non-discriminatory rates for global patent licenses.
article
12 April 2021   Perkins Coie has brought former partner Marcus Woo back to the firm from Taiwanese electronics manufacturer HTC, where he served as general counsel.