UK Supreme Court to hear Huawei SEP appeals
The UK Supreme Court has agreed to hear two appeals from Chinese companies Huawei and ZTE regarding standard-essential patent (SEP) infringement cases.
The case may have an impact on the controversial issue of telecommunication SEPs licensed on a fair, reasonable and non-discriminatory (FRAND) basis, which are essential to the rollout of 5G, Internet of things and other new technologies.
The appeals, which were granted April 11, will decide on cases between the two Chinese companies and IP licensing company Conversant Wireless Licensing, as well as Unwired Planet v Huawei.
In January, the English Court of Appeals rejected a bid from Huawei and ZTE to have the case against Conversant thrown out on lack of jurisdiction.
The pair had argued that a Chinese court was the appropriate jurisdiction for the dispute on the grounds of forum non conveniens, a legal doctrine whereby courts may refuse to hear matters where there is a more appropriate forum available to the parties.
The dispute dates to 2017, when Conversant sued the companies for allegedly infringing four of its SEPs UK patent numbers 1,031,192; 0,978,210; 1,797,659; and 1,878,177) relating to mobile phone technology.
Conversant sought a declaration from the court that its patents are essential to “certain telecommunications standards” and that the terms it had offered to the Chinese companies during licensing negotiations were compliant with FRAND rules.
In its arguments to the appeals court, Huawei said if Conversant’s Chinese patents were not infringed, then 75% of the royalties it was claiming would “fall away”.
ZTE argued that because the UK represents less than 1% of its global mobile device sales, it was unreasonable for Conversant to bring litigation asserting its UK patents in a British court.
But the appeals court ruled that “leaving Conversant to seek a remedy in China would be to compel them to advance a case based on different patents”.
It was therefore “impossible to view such a dispute as being the same dispute as that which would arise in the English court”, the court found.
Unwired Planet v Huawei
Separately, In 2014, Unwired Planet sued Huawei for infringing five of its SEPs in the UK relating to 4G technology.
Unwired Planet claimed Huawei had refused to take a FRAND licence for the patents and asked the court for an injunction against the China-based company.
But, Huawei counter-claimed that Unwired Planet had breached competition law by refusing to offer Huawei a licence to the patents on FRAND terms.
Unwired Planet had offered worldwide SEP portfolio licence in combination with a UK SEP portfolio licence, but Huawei proposed a UK-only SEP portfolio licence.
Following a trial at the English High Court, a judge found two of patents to be valid, essential and infringed.
The court also found Unwired Planet’s global licence to be FRAND, while the UK licence offered by Huawei was not FRAND.
Huawei contested the decision at the English Court of Appeal, arguing that imposing a global licence on terms set by a national court based on a national finding of infringement was wrong.
But the English Court of Appeal agreed with the high court that only the global licence offered by Unwired Planet was FRAND.
Last week Lord Wilson, Lord Hodge and Lady Black of the Supreme Court said Huawei could appeal the Court of Appeal’s decision. According to IP KAT, Apple has also been given permission to apply to intervene.
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