Extraterritorial claim for Patent Damages struck out

04/11/20

In the latest judgment in the long-running case of IPCom v HTC, Birss J has struck out IPCom’s Points of Claim in an inquiry into damages caused by patent infringement insofar as that claim seeks damages on HTC’s sales outside the UK.

In 2017 the Court of Appeal held that the patent sued upon by IPCom was valid and was infringed by HTC’s devices which operated in accordance with the relevant standard (the 3G (UMTS) standard for mobile telecommunications). However, the Court of Appeal also confirmed that IPCom’s patent was not infringed by HTC devices incorporating a “workaround”.

Following expiry of the patent, IPCom pursued an inquiry into damages. By its Points of Claim in that inquiry IPCom sought damages equivalent to the royalty which would have been payable on worldwide sales of HTC’s devices.  The basis for that claim was said to be that the notional licence which a willing licensor and willing licensee would have entered into at the outset was a worldwide licence, which was not limited to infringing devices. HTC applied to strike out the claim in part.

In his judgment handed down today, Birss J struck out the claim insofar as it seeks damages on sales of HTC devices outside the UK. Birss J held that, whilst such a claim might be maintainable if the foreign sales could be said to have been caused by the UK infringement, that was not the case here. IPCom’s contention to the contrary, based on the terms of a notional licence, was “clever but wrong”.

Birss J declined however to strike out the claim for damages upon sales of non-infringing devices in the UK. Whilst he considered that such claim was based on “sleight of hand”, the issue had to proceed to trial because in Birss J’s own previous decision in the case of Unwired Planet v Huawei he had awarded back-damages on a UK portfolio basis.

The Judge gave both sides permission to appeal.

The judgment can be found here.