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High Court hands down landmark FRAND judgment

05/04/17

Mr Justice Birss today handed down a landmark judgment in Unwired Planet International Ltd v Huawei Technologies Co Ltd in which he ruled for the first time on the obligation to license standard essential patents on fair, reasonable and non-discriminatory (“FRAND”) terms and the interrelationship between FRAND and EU competition law. The judgment is also the first outside Germany to consider the application of the judgment of the Court of Justice of the European Union in Huawei v ZTE.

Unwired Planet acquired a portfolio of standard essential patents from Ericsson in 2013 and, after unsuccessful attempts to license those patents consensually, commenced patent infringement proceedings against Huawei, Samsung and Google in March 2014. In addition to challenging validity and infringement of the patents, each of Huawei, Samsung and Google brought counterclaims against Unwired Planet alleging that Unwired Planet’s conduct was not FRAND and that it was in breach of EU competition law. The claims against Google were settled in May 2015 and the claims against Samsung were settled shortly before trial in July 2016. The claims against Huawei went to trial over 7 weeks in November and December 2016.

In a judgment which will be welcomed by those seeking to license patents relevant to global standards, Mr Justice Birss found that it was FRAND for a patent holder to insist on a global licence (and conversely that it was not FRAND for a prospective licensee to insist on licensing on a country-by-country basis). He proceeded to determine the FRAND rate for Unwired Planet’s portfolio.

Huawei’s competition law counterclaims were dismissed, including the argument that Unwired Planet was in breach of the principles laid down by the Court of Justice in Huawei v ZTE for commencing proceedings before making a FRAND offer.

Since Huawei had refused to enter into a licence on terms that the Court had determined to be FRAND, and Unwired Planet was not in breach of competition law, Mr Justice Birss considered that it was appropriate to grant a final injunction against Huawei to restrain infringement of Unwired Planet’s patents in the UK.

The judgment is here.

Sarah Ford QC appeared for Unwired Planet, instructed by Enyo Law.

Jemima Stratford QC, Sarah Abram, Michael Bolding and David Bailey were instructed at an earlier stage of the proceedings.

Daniel Piccinin acted for Ericsson, instructed by Freshfields Bruckhaus Deringer, prior to a compromise being reached.

Robert O’Donoghue QC appeared for Google, instructed by Bristows, prior to a compromise being reached

Nicholas Saunders appeared for Google and Samsung, instructed by Bristows, prior to a compromise being reached.