Important jurisdictional sequel to Unwired Planet

17/04/18

In his judgment in Conversant Wireless Licensing v Huawei Technologies and others Henry Carr J has retained jurisdiction in England and Wales over a claim for infringement of UK patents seeking the determination of a worldwide FRAND rate.

The Defendants to the claim were Huawei China and its relevant UK affiliate and ZTE China and its UK affiliate.

The Claimant, a Luxembourg patent-owing company, brought claims for infringement of certain UK standard-essential patents (or SEPs) against all Defendants, including on a joint and several liability basis against the Huawei and ZTE entities respectively, seeking the determination of a worldwide FRAND rate for the portfolio in question or, if the Defendants were not prepared to enter into a licence on the terms determined by the Court to be FRAND, an injunction to restrain the infringements in the UK.

The Defendants challenged the jurisdiction of the English Court, contending that the forum conveniens was China; that the claims were non-justiciable; and that the Chinese entities had not been validly served in England.

The Court held that the forum conveniens for the claims was England, since the claims are for infringement of UK patents. The fact that the Court might determine, in accordance with Unwired Planet, that the licence terms which it would be FRAND for the parties to conclude would be on a worldwide and portfolio-wide basis did not mean that the claim was a claim for infringement of foreign patents or for worldwide royalties. It remained a claim for breach of UK patents, which the English Court must have power to hear and determine.

The Court pointed out that the validity and infringement of the relevant Chinese patents would be determined in China in any event, as Huawei China and ZTE China had brought proceedings in China challenging the Claimant’s Chinese SEPs. The outcome of those proceedings could be taken into account by the English Court in its determination of the FRAND licence terms, which was likely to occur only after all Chinese proceedings had concluded. On that basis the allegation that the claims in the English proceedings were non-justiciable was rejected. The Court rejected the suggestion that the Claimant should bring separate proceedings in each jurisdiction where relevant patents were held, describing such an approach as a “hold-out charter”.

The Court held that the Chinese Defendants had not been validly served in England but gave the Claimant permission to serve those Defendants out of the jurisdiction.

The judgment is available here.