Paris now the ‘logical’ venue for FRAND disputes, claim TCL lawyers
The Paris High Court has said it has jurisdiction to hear a standard-essential patent (SEP) licensing dispute between Philips and Chinese smartphone maker TCL, in what could be a landmark decision in France.
The decision, issued last Thursday, February 6, marks the first time that a French court has taken on the task of determining the terms of a fair, reasonable, and non-discriminatory (FRAND) licence.
TCL had argued that a French court should set the terms of the licence, as Philips had made an undertaking to the France-based European Telecommunications Standards Institute (ETSI) to license its SEPs on FRAND terms.
Lawyers representing TCL have welcomed the decision, and told WIPR that it was the “logical” step, given that French law governs ETSI FRAND contracts.
The decision stems from a 2018 patent infringement suit filed by Philips against TCL in England.
The Dutch conglomerate requested that, should the English court find that its patents were infringed by TCL, it should also set the terms of a global FRAND licence for the IP in question.
After TCL filed in France for a local court to set the terms of the licence, Philips launched a jurisdictional challenge, seeking a declaration from the Paris court that it did not have the authority to hear the case.
Jurisdictional question
Which courts have the right to set global FRAND licenses is still an open debate. The UK and Germany have traditionally been the most popular venues for European FRAND disputes.
Katie Coltart, partner at Kirkland & Ellis in London, is part of the team representing TCL in the UK. According to Coltart, the Paris court’s decision could “plausibly result in an increasing number of FRAND licensing actions being brought in France, which makes particular sense in the telecommunications sector given the centrality of France in the ETSI framework”.
“ETSI undertakings, by-laws and policies are governed by French law,” she said.
“Indeed in previous UK and US cases regarding the determination of FRAND terms, it has been necessary for courts to consider (and then apply) expert evidence on French law, so in this regard France is a logical forum for FRAND determination,” Coltart added.
The UK Supreme Court is expected to rule this year on whether an English court can set the terms of a global FRAND licence between Huawei and SEP-owners Unwired Planet and Conversant Wireless.
The English Court of Appeal had previously held that it had the authority to determine global FRAND rates, but Huawei has appealed that ruling.
Huawei argues that the primary market for its allegedly infringing goods is in China, which is also where the products were manufactured.
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:
Patagonia goes after ‘Petrogonia’ with TM infringement suit
