The ever-increasing importance of inter-operability and standardisation has been reflected in a surge in litigation of Standard Essential Patents and FRAND issues. The UK jurisdiction has taken a leading position with its willingness to provide a global solution.

With its leading high-tech patent litigation and competition law practices, and over a decade’s experience in leading cases, Bristows is uniquely placed to advise both patent owners and implementers alike.

SEP/FRAND disputes require a particular type of expertise possessed by only a very few firms globally. At Bristows, five partners and a group of specialist associates within the patent litigation group work seamlessly with two partners and their associates in the competition law group to provide a bespoke service which is second to none.

In an area where forum shopping is of critical importance, our expertise naturally extends to the jurisdictional and international coordination aspects of the subject. Our market-leading patent litigation practice, with numerous physicists, engineers and computer scientists, can deal with the most complex technology, be it in telecoms, automotive or other sectors. Our competition team, with its deep understanding of the economic and commercial realities of licensing can frame the best possible case for an appropriate FRAND licence, whether that case needs to be made in court, before an arbitral panel, or a competition regulator.

Bristows’ clients, whether they are patentees, implementers or patent pools, trust the combined team to really ‘get’ the issues in this complex and fast-moving field.

We are familiar with many ETSI, IEEE, ITU and other standards, and the patent litigators understand the particular issues arising in the litigation of standard essential patents, such as identification of working group proposals which may form part of the prior art. The competition team understands how FRAND licences are negotiated in practice, and common issues such as hold-up / hold out, royalty stacking and privateering, as well as advising on compliance with the Huawei v ZTE CJEU regime both before and during litigation.

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FRAND case tracker

Whilst we work on many FRAND-related matters, we also keep an eye on all global FRAND developments. As part of that, we have built a tool to track UK SEP/FRAND judgments and we have made it available below. The purpose of this judgment tracker is to provide a brief flavour of interesting decisions handed down by British Courts in the FRAND space. We have included all the cases in the last 15 years that we think contain useful guidance, even if they were case management judgments, from the Patents Court, other Business & Property Courts, and the Court of Appeal. We worked hard to track down some judgments that, although public, are not easily available. For each of them we have provided a short summary, a description of some of the main points, the judge(s), and a PDF of the full judgment.

Inevitably, the list of decisions will not be entirely complete – we have left out some not-so-interesting judgments – and the summary description will omit certain important details. However, for each case you can download the full judgment to read it in detail. 

VIEW:

Date

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2021] EWHC 2080 (Pat)

Judge

Smith, Mr Justice Marcus

Apple sought permission from the court to produce one of its own recent SEP licences with an unnamed third party (T). The application was required as the terms of the licence with T prevented such an act, and T objected.

 

The court noted that there was a difference between a party seeking disclosure and/or inspection of a document (which was not the case here, with Optis not taking part in the application), and a party that wished to override the confidentiality provisions in a licence to deploy it to advance its own interests.

 

The court held that it was essential that the existence and broad nature of the licence be disclosed to Optis so that it can, if so advised, seek inspection of it in due course. However, in this instance, the question was whether the court should grant an order to permit Apple to produce the licence where that would otherwise be a breach of the licence.

 

The court refused Apple's request, noting that (i) significant weight attached to the confidentiality obligations (particularly where they were agreed after Apple ought to have been aware of the need to produce the licence in this case); (ii) Optis had no apparent interest in seeing the licence; and (iii) it was unclear that the licence was as relevant and important a comparable as Apple claimed. The court concluded by noting that were Optis to seek inspection, the court would be minded to accede to that application.

 

A further request from Apple for an anonymity order over the identity of T, interestingly opposed by T, was refused by the court.

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2021] EWHC 1739 (Pat)

Judge

Meade, Mr Justice

This was a technical trial concerning Optis’ European Patent (UK) 2 229 744 B1, which the court held valid and infringed. However, of particular interest was the argument relating to the equitable doctrine of proprietary estoppel.

 

Apple contended that proprietary estoppel prevented Optis from enforcing its SEP or alternatively restricted the relief Optis could obtain. The basis for this was said to be that the predecessor in title (Ericsson) had not declared the existence of the application for the patent until after the date on which the associated technical proposal (known as a TDoc) had been successfully incorporated into the LTE standard and the relevant technical specification (TS 36.322) was frozen. Apple claimed that this meant that the relevant working group looking at that aspect of the standard had been denied the chance to seek an alternative unpatented solution and, in any event, it was a breach of Clause 4.1 of ETSI’s IPR Policy, which required contributors to use reasonable endeavours to inform ETSI of essential IPR in a timely fashion.

 

The court rejected this defence, noting that the requirements for proprietary estoppel had not been established (being an assurance, reliance on that assurance and consequential detriment). In particular, no member of the working group reasonably would have been under the impression that the TDoc was free of any IPR. It was common, with good reason, for companies to file patent applications in very similar terms to a TDoc just before providing the TDoc to a working group to avoid issues with prior disclosure anticipating the application. Further, it was well-known that many declarations were made after a specification was frozen and that ETSI standards were commonly subject to numerous IPRs.

 

In any event, there had been no reliance or detriment even if there were an assurance. The overall goal of the working group was to arrive at the best technical solution, and knowing about any patent application would not have changed the working group’s actions, since the TDoc was the best technical solution they were aware of at the time.

 

The court also held that there was no breach of Clause 4.1 of ETSI’s IPR Policy as most declarants did not declare before the specification was frozen and the working group would have been aware of this common practice. Furthermore, Clause 4.1 had moved from being a hard-edged rule to a more flexible standard, with late declarations not being considered a problem provided that FRAND licences would be made available.

 

The judgment may also be of interest as it sets out an analysis of the law of proprietary estoppel (paragraphs 321 to 352), the relevant French law (paragraphs 353 to 392) and a detailed account of the history of ETSI’s IPR policy (paragraphs 452 to 498).

Parties

Mitsubishi & Sisvel v OnePlus, Oppo & Xiaomi

Neutral Citation

[2021] EWHC 1541 (Pat)

Judge

Mellor, Mr Justice

This case management hearing concerned primarily Xiaomi's application to dismiss Sisvel, the pool administrator, from the action. The patent owned by the pool administrator had been held not to be infringed/essential.

 

The Court considered relevant recent English jurisprudence, as well as German jurisprudence concerning the right of a SEP owner to insist on a (FRAND) pool licence. The Court observed that (i) pool licences were agreed in the real world and (ii) the refusal of a pool licence by an implementer in favour of a bilateral licence where the pool related to a particular standard would require justification. Accordingly, it was at least arguable that the court may find that the pool licence was FRAND at the FRAND trial.

 

There were clear advantages in having a pool administrator as a party, not least for disclosure, evidence and confidentiality purposes. Whilst the legal basis on which Sisvel could remain formally a claimant was unclear, this was an evolving area of law and Sisvel's removal from the action at this stage would not be in accordance with the overriding objective. The judge at the FRAND trial could consider the implications of a pool licence and the position of a mere administrator in due course.

 

The judgment also addresses the Claimants' position on essentiality for its FRAND case. The Claimants had changed their case from asserting a 100% essentiality rate based on the results of an individual patent family review process to a proposal that (i) the Defendants identify patents where essentiality was disputed based on a random selection from 135 claim charts and (ii) the parties adduce technical evidence on those disputed patents for the trial judge to consider as part of a hypothetical negotiation.

 

The Court denied the application given there was insufficient time to accommodate the exercise before trial. The parties agreed the Claimants should serve a further detailed statement of case on essentiality setting out their case in light of this decision, after which there may need to be another CMC.

 

Also of interest is the Court's comment that it might have entertained the Claimants' proposal if it had been made in good time so the case could be managed properly provided (i) a relevant comparison could be made with the industry stack, (ii) it would be proportionate, (iii) it would require a limited number of experts, and (iv) the task of the trial judge would be manageable.

Parties

Godo Kaisha IP Bridge 1 v Huawei

Neutral Citation

[2021] EWHC 1261 (Pat)

Judge

Caddick QC, Mr Nicholas

The First and Second Defendants were domiciled in the People's Republic of China (the "PRC Defendants").Chief Master Marsh had previously granted an order (i) permitting service of the claim out of the jurisdiction on the PRC Defendants and (ii) granting permission for such service to be effected by alternative means.The PRC Defendants applied to set aside the order insofar as it permitted service by alternative means.

 

The PRC was a signatory to the Hague Service Convention and accordingly such an order was only justified in exceptional or special circumstances. Delay per se was insufficient unless it interfered with the due administration of justice. That was not the case here as the PRC Defendants had agreed to accept service voluntarily should it take longer than eleven months to effect service under the Hague Service Convention.

 

Other factors raised by the Claimant including (i) being kept out of remuneration; (ii) the need for an injunction; and (iii) the unsatisfactory outcome of the claim proceeding against the UK-domiciled defendant in the interim, were normal in litigation of this type and therefore could not be exceptional. The court also considered the allegation that the defendants were 'holding-out' from taking a FRAND licence, holding that whilst this could amount to an exceptional circumstance if proved to be correct, the difficulty the court faced was that it was not in a position to determine it until the dispute over FRAND was resolved.

 

The court accordingly concluded that the factors in this case, whether taken in isolation or collectively, did not amount to the sort of exceptional circumstances that were required in order to justify a departure from service in accordance with the Hague Service Convention. Accordingly, the court set aside the order insofar as it permitted service by alternative means.

Parties

Mitsubishi & Sisvel v OnePlus, Oppo & Xiaomi

Neutral Citation

[2021] EWHC 889 (Pat)

Judge

Mellor, Mr Justice

This case management hearing concerned the parties case on the alleged essentiality of the patents in the MCP Pool. In particular, the Claimants contended that the patents in the MCP Pool should have an assumed essentiality rate of 100%. The Defendants disputed that and sought further information.

 

The Court agreed that the Claimants should provide disclosure evidencing their methodology for choosing the patents for inclusion into the MCP Pool, noting that such methodology was highly relevant to whether the Court could rely on the Claimants' asserted 100% essentiality ratio.

 

 The Court also observed that neither the Claimants nor the Xiaomi Defendants had, as yet, pleaded their case on essentiality at a level of detail sufficient to enable the court either (a) to case manage that part of the case or (b) to make appropriate findings of fact at trial. (This issue was also the subject of previous hearings in this action.)

 

The Court therefore ordered those parties to exchange further statements of case addressing the alleged essentiality ratios. Further, the Court particularised five subjects that the Claimants' statement of case must address (set out at paragraph 26 of the judgment), and confirmed that the statement of case must set out precisely the findings of fact that the Claimants will be asking the Court to determine at trial. The Xiaomi Defendants' response would need to be at a similar level of detail.

Parties

Vestel v Access Advance & Koninklijke Philips

Neutral Citation

[2021] EWCA Civ 440

Judge

Birss, Lord Justice

The appeal was heard by Lord Justice Nugee and Lady Justice Elisabeth Laing. Lord Justice Birss delivered the lead judgment.

 

This was an appeal from an order declaring that the court had no jurisdiction over Vestel’s claims against Access Advance (the administrator of a patent pool concerning the H.265 (HEVC) standard) and Philips (a member of that pool sued on its own behalf but also as an alleged representative of the pool members). Vestel claimed that the Defendants had abused their dominant positions inter alia by making allegedly non-FRAND offers. The relief sought included a determination of FRAND terms.

 

An appeal against the Judge’s finding that Vestel had not suffered any jurisdictionally relevant direct damage in the UK was dropped shortly in advance of the appeal hearing, along with Vestel’s claim that the Defendants had abused their dominant positions. The appeal therefore considered only Vestel’s reformulated (on appeal) case that it should be entitled to a FRAND declaration under the Court’s inherent jurisdiction to grant declaratory relief. Vestel also sought to limit its claim so that it concerned only UK patents (but maintained its assertion that a FRAND licence to such patents would be of global scope).

 

The Court of Appeal dismissed the appeal, holding that the inherent declaratory jurisdiction of the court cannot be engaged unless it is based on the existence or non-existence of a legal right (in addition to satisfying the ‘useful purpose’ requirement). Although Vestel had highlighted that the rules of the ITU (which administered the H.265 (HEVC) standard) were of relevance, Vestel did not assert it had a legally enforceable right to a FRAND licence. Further, it did not plead any legal standard against which the matter could properly be judged. The Court held that the claim had no reasonable prospect of success.

 

Further, the Court of Appeal held that neither the tort gateway (in the case of Access Advance) or Article 7(2) Brussels I Recast (in the case of Philips) applied in this case. It was not a claim for a declaration of non-liability for the tort of patent infringement. As regards the property gateway (in the case of Access Advance), the Court held the absence of a legal claim meant that gateway also did not apply.

Parties

Mitsubishi & Sisvel v OnePlus, Oppo & Xiaomi

Neutral Citation

[2021] EWHC 493 (Pat)

Judge

Mellor, Mr Justice

This was a FRAND CMC. The Claimants were relying on comparable licences, and suspected the Defendants intended to run a case involving inter alia an analysis of the proportion of truly essential patents in the pool. The Claimants requested further information (via an RFI) on this issue, with the Defendants replying that this was a matter for expert evidence.

 

The Judge ordered the Defendants to respond to several questions in the RFI, noting that it was not acceptable to leave the matter to expert evidence. Although FRAND cases throw up particular challenges when identifying the boundary between what must be pleaded and what constitutes evidence, it was important to avoid the risk of expert evidence being 'ships passing in the night'.

 

The Judge concluded by reiterating that "the methodology proposed to be employed in any essentiality review must be pleaded as soon as possible so that the evidence required to prove the results of such a review can be identified and suitable case management directions can be given in good time".

Parties

IPCom v Vodafone

Neutral Citation

[2021] EWCA Civ 205

Judge

Arnold, Lord Justice

The point of particular interest on this appeal is IPCom's appeal against the finding that Vodafone had a defence of crown use to the infringement of IPCom's SEP. The Government had selected Vodafone to provide a system giving emergency services precedence on network channels during high traffic period, called MTPAS.

 

The crux of the appeal was whether, to invoke the defence of crown use, the Government had to provide (i) express authorisation to work the patent; (ii) authorisation to do an act where that act necessarily infringes the patent; or (iii) authorisation to do a particular act even if that does not necessarily involve infringing the patent. IPCom contended for (ii) whereas Vodafone contended, and the Judge found at first instance, that (iii) was sufficient.

 

The Secretary of State for Defence (SoSD) intervened in that appeal (as the relevant Government department liable to pay IPCom compensation based on the crown use). SoSD contended that (i) was required save that it could take the form of an express authorisation to 'work any patent'.

 

The CoA allowed the appeal and overturned the finding that Vodafone had a defence of crown use. Further, although it was not necessary to determine the point, the Court stated that interpretation (ii) is to be preferred for no fewer than 13 reasons (set out in the judgment at paragraphs to 150 to 165).

Parties

InterDigital v Lenovo & Motorola

Neutral Citation

[2021] EWHC 89 (Pat)

Judge

Birss, Mr Justice

This hearing considered issues of FRAND disclosure, specifically the data required to 'unpack' comparable licences. In particular, Lenovo sought disclosure of confidential royalty reports for the InterDigital licences said to be relevant.

 

The Court refused to order disclosure of the royalty reports as it held it would be disproportionate.

 

The Court accepted that licences are inevitably complex and that data are required to ‘unpack’ them. However, the Court held the public information available in this case was adequate for that purpose in this case. In a FRAND trial, evidence on comparable licences is used to estimate the value of a licensed portfolio and having further information, for example from the royalty rates, would not turn a “‘mere’ estimate into a ‘true’ or ‘precise’ statement of the value” of the licensed portfolio.

 

The Court also highlighted that, when considering the proportionality requirement of disclosure, account should be taken of the value of the supposed improvement in accuracy against the costs of achieving that improvement (including time, procedural delays and money). The Court also raised concerns about the confidential information of third parties contained in the royalty reports (one third party licensee has already indicated it would resist disclosure if sought), which also had a bearing on proportionality. Although the information could be treated as 'Legal Eyes Only', the Court stated that “(T)here is a significant value in terms of open justice in producing a decision in this case based on information which is publicly available.”

 

The Court also considered an argument by InterDigital that the royalty reports are irrelevant, because they relate to a period after conclusion of the licence, but considered it went too far to say that such information was "incapable of having relevance". By contrast, he did not consider it relevant to assess whether the agreed royalties had actually been paid by the third parties, as there was no pleading that the royalties were a sham.

 

The Court also refused InterDigital’s request for a schedule of licences to which Lenovo was a party as it would be disproportionate, particularly due to third party confidentiality. There was sufficient evidence from the InterDigital licences themselves on the licensing issues in dispute.

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2020] EWCA Civ 1562

Judge

Floyd, Lord Justice

The appeal was heard by Lord Justice Males and Lord Justice Lewis. Lord Justice Floyd delivered the lead judgment.

 

This was an appeal against the order following [2020] EWHC 2641 (Pat), in which the High Court had inter alia dismissed applications (i) by Oppo to add individuals involved in FRAND licensing negotiations into a ‘High Confidential Material’ (HCM) confidentiality club and (ii) by Xiaomi for the blanket re-designation of all ‘Attorney’s Eyes Only’ (AEO) documents to HCM.

 

The Court of Appeal dismissed the appeal, noting that the documents in question contained highly valuable confidential information belonging to third parties. Further, given the breadth of the disclosure in the case and the stage of the proceedings, a large number of the documents would be of limited relevance. In those circumstances, it was appropriate to limit access.

 

The Court also agreed with the first instance judge that a limited number of AEO documents should be downgraded to HCM, subject to additional undertakings being provided by the relevant individuals to the licence counterparties.

 

However, in the case of Xiaomi, the Court of Appeal held that the undertakings to be entered into by relevant individuals should be amended to allow those individuals to participate in FRAND litigation and settlement negotiations (although not FRAND licensing more generally).

Parties

IPCom v HTC

Neutral Citation

[2020] EWHC 2941 (Pat)

Judge

Birss, Mr Justice

HTC was subject to an injunction, having stated it would only sell 'workaround' phones in the UK, so the FRAND inquiry had been dismissed and a damages inquiry ordered. IPCom claimed lump sum damages based on a royalty being applied to the sale of any 2G, 3G or 4G phone worldwide. HTC applied to strike out the claim for damages insofar as it concerned phones not sold in the UK.

 

The Court granted the application, striking out IPCom's claim insofar as it was based on anything other than a claim for royalties attributable to sales of or other dealings in 2G, 3G or 4G phones in the UK.

 

Whilst the Court accepted that the question of damages by way of notional royalty was a heavily fact dependent issue, and thus generally not suitable for strike-out, it felt that the claim to ‘global damages’ must fail on a point or points of principle and law.

 

The Court considered a number of arguments, but in essence it concluded that foreign phone sales were not acts caused by the acts of infringement in the UK. Further, there was a difference between damages and the determination of what is FRAND (reference was made to the UK Supreme Court decision in the joined Unwired Planet and Conversant appeals).

 

The Court allowed the claim in relation to non-infringing phones sold in the UK to remain given that the High Court in Unwired Planet had considered that a UK portfolio approach may be valid. The Court did, however, state that its present view was absent a concession or agreement the Court could likely only award damages for infringement of individual UK patents found valid and infringed.

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2020] EWHC 2641 (Pat)

Judge

Norris, Sir Alastair

This hearing primarily addressed issues of confidentiality arising in relation to disclosed licence agreements, specifically whether a number of documents should be 'downgraded' from Attorneys' Eyes Only (AEO) to 'Highly Confidential Material' (HCM) as contended for by Oppo and Xiaomi. The practical impact was then designated individuals at those companies could then see the documents.

 

The Court refused Xiaomi's general request to have all AEO material re-classified as HCM. However, the Court granted Oppo's more specific request to have six AEO documents re-classified as HCM, which were licences of apparently comparable IP to well-resourced counterparties.

 

The Court recognised the need for AEO regimes generally, but noted that they should be exceptional. Whilst it was therefore unwilling to simply do away with the AEO regime, some comparable licences had been identified by Oppo's solicitors as of likely relevance to its case. Oppo had a right to then understand why those identified licences would or would not be relied upon in due course, which meant it had to see the AEO material.

 

The Court also noted that the Claimant's request for a more particularised pleading from the Defendants necessitated the earlier and more extensive provision of sensitive material than may otherwise be the case.

 

The Court required the individuals to whom such information was to be disclosed to undertake not to engage in licensing negotiations between their company and the counterparties to the re-designated licences.

Parties

Koninklijke Philips v TCL

Neutral Citation

[2020] EWHC 2553 (Ch)

Judge

Mann, Mr Justice

TCL had sought a FRAND determination from the French Courts and now sought a stay of Philips’ earlier English proceedings.

 

Philips objected to staying the English proceedings, maintaining that the applications before the English and French courts have the same purpose of determining the terms of a FRAND licence. TCL claimed that the English action relates to patent infringement, whilst the French action was contractual (the French Court having previously found that both judgments did not contain the same cause of action).

 

The Court dismissed TCL's application for a stay.

 

The Court reliance upon the recent comments of the UK Supreme Court in the Unwired Planet and Conversant appeals and emphasised that the English Courts are well used to construing foreign contracts (and can determine FRAND terms under a worldwide licence if appropriate).

 

The Court also focused on the relative timing of proceedings, with the English proceedings being advanced with a trial of FRAND issues due imminently (November 2020). In contrast, a French trial was only expected in late 2022 or early 2023, with the Court commenting that a two year difference is very material in commercial terms.

 

The Court also considered that there is still a proximity between the English proceedings and the determination of FRAND terms, given the latter related to the nature of the relief to be granted in respect of UK patent infringement. Whilst there was a potential for inconsistent judgments, that had to be balanced against the desirability of the prompt resolution of a commercial dispute

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2020] EWHC 2425 (Pat)

Judge

Birss, Mr Justice

Apple applied for a reference to the CJEU on various FRAND issues. The specific questions are set out in §12, but in summary they relate to a SEP owner's obligations under Huawei v ZTE, the interaction between a parties' behaviour and entitlement to an injunction / Article 102 TFEU, the impact of willingness or unwillingness to accept an as yet undetermined Court-set FRAND licence by a party and the relevance of the Enforcement Directive.

 

The Court focused primarily on question 3 as raising the key issue. It concerned whether a SEP owner may use an expression of willingness to accept a Court-set FRAND licence to render its behaviour compatible with Article 102 TFEU irrespective of various other behaviours.

 

The Court declined to refer the questions to the CJEU for reasons of timing. In particular, the Court did not wish to cause delay to the listed UK trial that would be considering various related issues (which had been scheduled for July 2021 following prior argument).

 

The Court also referred to the recent UK Supreme Court decision, which showed that the English Courts could adequately address issues of this kind without a CJEU reference.

Parties

Unwired Planet v Huawei and Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] UKSC 37

Judge

Reed, Lord Justice

The appeal was heard by Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales. All members of the panel contributed to the judgment.

 

The UKSC considered at length a number of issues relating to SEPs and FRAND across the Unwired and Conversant cases. The bullet points below are a very brief summary of the key findings.

 

The contractual arrangements created by ETSI’s IPR Policy gave the English courts jurisdiction to determine a global FRAND licence even without the parties’ consent. The English courts were not ruling on the validity and infringement of foreign patents by doing so (though in appropriate cases it may be argued that it was FRAND to include an adjustment mechanism based on challenges to essentiality/validity brought in a foreign jurisdiction).

 

In the Conversant case, no alternative forum was available since it had not been demonstrated that the Chinese courts would accept jurisdiction to set a global FRAND licence.

 

The ‘ND’ limb of FRAND was ‘general’ in nature, rather than ‘hard-edged’; patentees were free to offer discounts beneath a generally available reasonable rate, implying that the courts should determine royalty rates for portfolios rather than individual licensees.

 

The FRAND undertaking imports a single unitary obligation that terms are “fair, reasonable and non-discriminatory”, which extends to the process by which the parties negotiate a licence.

 

The lower courts’ interpretation of the CJEU’s Huawei v ZTE framework as a ‘safe harbour’, rather than mandatory process, was upheld.

 

The availability of  injunctive relief where an implementer declines to enter into a FRAND licence was a necessary component of the balance between hold-up and hold-out. Damages in lieu would not be an adequate substitute for an injunction as it could create an incentive for country-by-country hold out.

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2020] EWHC 2033 (Pat)

Judge

Birss, Mr Justice

The Court listed a new trial in 2021 to dispose of a number of discrete FRAND-related issues, primarily including as to whether Apple was a wiling or unwilling licensee (and thus able to rely upon Optis' FRAND undertaking) due to a failure to commit to take a licence on FRAND terms settled by the Court.

 

The Court considered it did not prejudice Apple to schedule these issues in an earlier separate trial in this manner (the FRAND trial at the time being listed for Summer 2022), which did not amount to a preliminary issues hearing, and disposing of these issues may promote settlement.

 

The Court said it was unclear whether this amounted to expedition, but that such a question was irrelevant given it was appropriate to determine these issues at the stage the Court was now listing them to be determined.

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2020] EWHC 2177 (Pat)

Judge

Mann, Mr Justice

The Court considered a variety of FRAND-related case management issues.

 

The Court refused to order disclosure of the Defendants' comparable licences, but on the basis only that the application was not foreshadowed nor supported by evidence. The Court said it was highly likely that such documents would need to be disclosed in due course, but it would have misgivings making such an order given the manner in which the issue had arisen.

 

The Court ordered (initial) disclosure of pool assignment documents claimed to be relevant to patent valuation by the Defendants, but only on the basis that the Defendants had to address the relevance of such documents in their amended pleading.

 

The Court declined to order the Claimants to further particularise the basis on which their offers were said to be FRAND beyond what was already pleaded.

 

The Court ordered the parties to produce a definitive FRAND 'position statement' eight weeks before trial.

 

The Court also considered timetabling and various confidentiality issues, including around the application of lawyers’/attorneys’ eyes only regimes.

Parties

InterDigital v Lenovo & Motorola

Neutral Citation

[2020] EWHC 1318 (Pat)

Judge

Birss, Mr Justice

The Court held a CMC, which also addressed inter alia whether to postpone listing a non-technical FRAND trial pending various parallel actions in the USA (brought by both InterDigital and Lenovo) and in the People's Republic of China (brought by Lenovo).

The Court refused to postpone the listing of the FRAND trial pending the US and Chinese proceedings (scheduling it in Autumn 2021, after the first two of five technical trials).

The Court stated that whilst the international position was important, scheduling the FRAND trial to take the international proceedings into account would cause an unnecessary delay (likely of several years). The Court took into account that the foreign proceedings had been commenced relatively recently, noting that whilst such proceedings may have a bearing they were not a trump card.

As regards the fact that the Supreme Court had not yet handed down its judgment in the conjoined Unwired and Conversant appeals, the Court stated that it had taken into account the uncertainty of the outcome of those appeals in making its case management decisions.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] EWHC 741 (Pat)

Judge

Hacon, His Honour Judge

This was the continuation of an adjourned PTR, at which the Court considered whether to adjourn the listed FRAND trial due to the Covid-19 pandemic; in the interim, Conversant had advanced a proposal as to how it might proceed, involving the exchange of rounds of detailed written submissions and a series of short hearings via Skype on specific issues.

 

The Court considered at length the UKSC judgment in Al Rawi, which considers the fundamental requirements of a common law trial, and commended the making of practical and imaginative proposals given the present health climate.

 

However, the Court determined that neither the CPR nor the (Covid-19) Guidance of the Lord Chief Justice or the Chancellor permitted a trial of such substantial scope to be conducted largely on paper, and that there were a number of issues that required cross-examination in the usual way. The Court was also swayed by the outstanding UK Supreme Court jurisdiction judgment, which may mean considerable time and cost would be wasted if the trial went ahead.

 

The Court accordingly vacated the trial for re-listing at a later date.

 

A dispute over the precise re-listing date and the length of the re-listed trial was later resolved in [2020] EWHC 989 (Pat).

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] EWHC 728 (Pat)

Judge

Hacon, His Honour Judge

The Court held a pre-trial review in advance of a trial of FRAND issues listed in a 5-day window commencing 27 April 2020, including (a) whether the trial should proceed given the Covid-19 pandemic, (b) ZTE's application for LEO disclosure of presently redacted information and (c) Conversant's application to strike out and/or disallow parts of ZTE's expert evidence.

 

Following detailed submissions, the Court adjourned the question of whether the trial should be re-listed to 25 March 2020, with the Judge noting "at the moment I am persuaded that this trial should be adjourned, but I will give Conversant the opportunity to convince me otherwise", on the basis that Conversant had had insufficient notice of the application.

 

As regards the question of disclosure, the Court determined that as a basic principle of justice at least ZTE's lawyers and experts should have an opportunity to see and comment on any material that could have an effect on ZTE's interests at trial.

 

Finally, the Court gave retrospective permission to ZTE to adduce a short additional expert report, and dismissed the application by Conversant to strike out large parts of another expert report filed on ZTE's behalf.

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2020] EWHC 214 (Pat)

Judge

Morgan, Mr Justice

The Court considered various case management issues relating to trial management, as (i) the Defendants sought to have aspects of their defence concerning non-disclosure / estoppel determined at a separate trial rather than at the forthcoming technical trial(s), and (ii) the Claimants sought to have an earlier trial of one of the patents in suit (the other having already been listed early given the imminent expiry of the patent).

 

The Court decided that it was not appropriate to separate issues into separate trials unless there was good reason to do so and there was a "clear, predictable and workable line" as to what would be tried when. The estoppel defence would therefore remain in the technical trial(s).

 

The Court also saw the potential merit in having two technical trials first as if the Claimant was successful on one of them then that could avoid the need for further technical trials (which would avoid using the Court's resources unnecessarily).

 

The Court addressed the length of the existing (technical trial) listing in October, preserving it and extending its duration to accommodate the estoppel defence, and also ordered the parties to provide statements of case on infringement/essentiality (Claimants) and validity (Defendants).

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] EWHC 256 (Pat)

Judge

Birss, Mr Justice

Conversant applied inter alia for disclosure of the Defendants' SEP licence agreements (and related agreements) 12 weeks prior to trial citing in particular that one Defendant was relying on a single comparable licence in its defence. It was agreed the case was proceeding under CPR PD51U (which governs disclosure under a pilot scheme).

 

The Defendants argued that (i) the application was an attempt to re-litigate the same request denied by the Court at a previous CMC, (ii) the request was not necessary for the just disposal of proceedings, necessary or proportionate, and (iii) in any event the request could not be accommodated prior to trial.

 

The Court denied the application on the basis it was not reasonable or proportionate having regard to the timetable of the case (the Court also noted there was no pleading supporting the case).

 

The Court observed, however, that had the submissions and evidence before it now been before it at the previous hearing, it may have granted the application. The Court also clarified that third party comparable licences were capable of having some evidential value, albeit secondary to that of licences to the portfolio in question, or its parent portfolio. The Court observed that depending upon the pleaded case and evidence in a particular case, disclosure of such third party licence agreements may be appropriate depending upon the circumstances.

Parties

Koninklijke Philips v AsusTek (Asus) & HTC

Neutral Citation

[2020] EWHC 29 (Ch)

Judge

Smith, Mr Justice Marcus

ASUS sought to withdraw from the UK market in advance of a listed FRAND trial. It applied to strike out parts of Philips' pleadings so that its participation in the FRAND trial would be unnecessary if ASUS agreed to pay back damages for past infringement of Philips’ UK patents at Philips’ standard royalty (on the basis this would be damages calculated by reference to its sales in the UK).

ASUS relied in particular on decisions in the recent TQ Delta v ZyXel proceedings (when the Court of Appeal cancelled a RAND trial after ZyXel waived its right to a RAND licence, submitted to an injunction and paid damages).

Philips contended that: (i) past damages would be payable on global sales, and (ii) if damages were limited to UK sales, a significant uplift in the royalties payable should be awarded. (It was these aspects of Philips’ claim ASUS applied to strike out.)

The Court noted that unlike in the TQ Delta v ZyXel proceedings, the quantum of damages payable for past infringement was in issue in this case. The key question was the extent to which the FRAND terms to be declared by the Court should be ‘read across’ into the assessment of appropriate damages based on a counterfactual licence.

The Court found that any automatic linkage between the declared licence and counterfactual licence would be liable to be struck out inter alia as automatically including past sales in other jurisdictions when assessing damages would risk usurping the jurisdiction of other courts. However, the Court also found that it would be equally wrong to disregard the terms of the declared licence when quantifying the SEP holder’s loss. The Court concluded that the matter was not suitable for strike out and needed to be determined at trial.

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2019] EWHC 3477 (Pat)

Judge

Caddick QC, Mr Nicholas

The Court had to consider various case management issues, including on statements of case, disclosure, cost budgeting and trial listing.

 

In particular, the Court considered the impact of two actions commenced by Xiaomi in the Beijing Intellectual Property Court, which the Court understood to be (i) an action to determine FRAND terms for the Claimants' Chinese patents and (ii) an antitrust action.

 

In that regard, the Court considered the comments by Henry Carr J and others in the Conversant litigation, which also involved Chinese FRAND proceedings. The Court determined that whilst it may be helpful to take into account relevant foreign actions in listing the FRAND trial, it was not appropriate to include an order linking the setting of the English trial date to the Chinese proceedings. Further, given the lack of information about the Chinese proceedings available to the Court at the hearing, the appropriate step was simply to list the FRAND trial a reasonable period of time after the last technical trial. Should future developments in China potentially justify moving the FRAND trial date, an application with supporting evidence would be required.

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2019] EWHC 3538 (Pat)

Judge

Nugee, Mr Justice

Apple applied to strike out the FRAND claim brought against it by Optis, alleging that Optis had failed to comply with the criteria set out by the CJEU in Huawei v ZTE (as interpreted in Unwired Planet) by failing to make a FRAND offer and by negotiating only with Apple Inc. and not the other Apple entities claimed against. Apple alleged this conduct amounted to an abuse of a dominant position.

 

The Court held that Apple may be correct that Optis had not made a FRAND offer, and even that the terms offered were so unfair and unreasonable that offering them constituted an abuse. However, he could not reach such a conclusion at this stage of the proceedings and it was a serious issue that needed to be tried on the merits. Optis also had a reasonable prospect (at the very lowest) of persuading the Court at trial that it had negotiated with Apple Inc. on the understanding that the negotiations were on behalf of all relevant Apple companies and that that was sufficient to comply with the notice requirements set out in Huawei v ZTE.

 

The Court accordingly dismissed Apple’s application. (Apple’s application also included other grounds based on matters heard by the UK Supreme Court in the Unwired Planet and Conversant appeals. These grounds weren’t addressed at the hearing, but Nugee J extended the time for Apple to appeal the dismissal of its application until after hand down of the UK Supreme Court judgment.)

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2019] EWHC 3471 (Pat)

Judge

Nugee, Mr Justice

The Defendants sought further directions in advance of the FRAND trial listed from 27 April 2020. This judgment concerns the Defendants' request for directions regarding (i) the scope of the technical exercise that may be conducted at the trial (should it be for all claimed relevant families, or a narrower subset that excluded families with a negative judicial finding or where a patent had expired/lapsed) and (ii) the rate of invalidity as part of that exercise.

 

Nugee J refused to limit the technical exercise to a narrower set of relevant families, preferring to leave everything in issue for the Judge at the FRAND trial to consider.

 

However, on validity Nugee noted that the Court’s task at the FRAND trial will be to decide the terms that a willing licensor and willing licensee would agree in a hypothetical negotiation, and as “it is possible that arguments as to likely validity will be relevant, or may be relevant, to the FRAND determination”, he permitted the Defendants to serve evidence on validity should they wish to do so.

Parties

IPCom v Xiaomi Technology & MyTech Retail Distribution

Neutral Citation

[2019] EWHC 3074 (Pat)

Judge

Hacon, His Honour Judge

Xiaomi launched mobile devices onto the UK market in November 2018 and following negotiations IPCom issued infringement proceedings in August 2019. Xiaomi challenged jurisdiction.

IPCom alleged that Xiaomi was seeking to ‘hold-out’ until the patent in suit (which had previously been successfully litigated) expired, and issued an application for an interim injunction prohibiting the sale of UMTS devices unless Xiaomi undertook to enter into a FRAND licence if was found to infringe the patent at trial.

IPCom argued that without the injunction, it would suffer irreparable harm, as it would lose the opportunity to seek a global licence on terms settled by the court.

The Court denied the application, noting IPCom “has no absolute right to force Xiaomi to enter into a licence" and "no absolute right to the royalties which would be due under any licence”. If Xiaomi did not elect to take a licence, there will never be an opportunity for IPCom to obtain either a global or UK licence and, in those circumstances, IPCom could not suffer irreparable harm.

Parties

IPCom v Lenovo Technology & Motorola Mobility

Neutral Citation

[2019] EWHC 3030 (Pat)

Judge

Hacon, His Honour Judge

US members of the Lenovo group filed proceedings in the US Northern District of California for declarations of non-infringement and the adjudication of terms for a global FRAND licence to IPCom’s portfolio.

Subsequently, IPCom issued infringement proceedings in the UK against UK Lenovo entities. The US Lenovo companies responded by filing a motion for an anti-suit injunction and, in response, IPCom sought an anti-anti-suit injunction against the UK Lenovo companies (seeking that they be prevented from sanctioning or assisting the US anti-suit motion).

The Court granted IPCom’s application. The Judge noted that “it would be vexatious and oppressive to IPCom if it were deprived entirely of its right to litigate infringement and validity of EP '268”. The Judge set out his concern that "the judge in the United States is very likely to obtain the impression that the anti-suit injunction sought has the approval and support of the UK Companies" and found that "it would not be conscionable for the UK Companies to endorse the impression already given to the US court that they sanction the US anti-suit motion in so far as it affects proceedings in this court."

Parties

Vestel v HEVC Advance & Koninklijke Philips

Neutral Citation

[2019] EWHC 2766 (Ch)

Judge

Hacon, His Honour Judge

Vestel (specifically its Turkish parent company and UK subsidiary) brought an abuse of dominance claim seeking a determination of FRAND terms from the HEVC Advance patent pool and one of its members, Philips (which owned a number of SEPs in the pool).

 

HEVC Advance and Philips challenged the Court's jurisdiction to hear the claim.

 

The Court granted the applications, setting aside the claim as against both HEVC Advance and Philips. In particular, the Court determined that there was no likelihood of Vestel suffering the damage it alleged it would suffer as a result of any alleged abuse inter alia because Vestel would have the option of taking FRAND terms determined by the Court before being injuncted.

 

The judgment considers various aspects of European law (as regards the claim against Philips) and various jurisdictional gateways (as regards the claim aganst HEVC Advance) in relation to an implementer brought FRAND dispute.

The Court expressly did not decide the question of whether the Court could exercise an inherent jurisdiction to decide FRAND terms by means of declaratory relief as that was considered a matter for another day and, in the instance of this case, another jurisdiction.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2019] EWHC 1982 (Pat)

Judge

Hacon, His Honour Judge

The application concerned requests for disclosure by the parties.

 

Conversant's sought licence agreements primarily relating to 3G and/or 4G patents as Huawei was relying on a third party licence granted by Nokia and it argued it needed the disclosure to establish if the licence was comparable. Conversant's application was refused as the Court felt such licences were no help in resolving the issues in Unwired Planet and there are significant costs involved in this sort of disclosure. Conversant could argue about the comparable nature of the licence relied on by Huawei at trial.

 

Huawei and ZTE sought disclosure of documentation relating to Conversant's purchase of the portfolio, including valuations and revenue estimates. The Court allowed this application as it would assistance to the Court in determining the market value of the patents at the time.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2019] EWCA Civ 1277

Judge

Floyd, Lord Justice

The appeal was heard by Lord Justice Lewison and Lord Justice Floyd. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order requiring the RAND trial to proceed notwithstanding the RAND waiver by ZyXel.

 

The Court of Appeal overturned the first instance decision, noting that it disagreed that there was still a real commercial dispute between the parties notwithstanding the RAND waiver.

 

The Court of Appeal felt the concerns raised by the Court at first instance could be addressed in other ways or were speculative.

 

The Court of Appeal also refused to declare that ZyXEL was not a "willing licencee" on the basis that the term had no common meaning and it would be an exercise in "jurisdictional imperialism" to do so.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2019] EWCA Civ 1277

Judge

Lewison, Lord Justice

The appeal was heard by Lord Justice Lewison and Lord Justice Floyd. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order requiring the RAND trial to proceed notwithstanding the RAND waiver by ZyXel.

 

The Court of Appeal overturned the first instance decision, noting that it disagreed that there was still a real commercial dispute between the parties notwithstanding the RAND waiver.

 

The Court of Appeal felt the concerns raised by the Court at first instance could be addressed in other ways or were speculative.

 

The Court of Appeal also refused to declare that ZyXEL was not a "willing licencee" on the basis that the term had no common meaning and it would be an exercise in "jurisdictional imperialism" to do so.

Parties

Optis & Unwired Planet v Apple

Neutral Citation

[2019] EWHC 1742 (Pat)

Judge

Morgan, Mr Justice

Optis applied for directions and Apple applied for a stay of the proceedings / to challenge the Court's jurisdiction.

 

The Court determined that the pending Supreme Court FRAND appeal was not grounds for staying the FRAND part of the action.

 

However, the Court determined that Apple did not need to serve a defence on the FRAND issues. As regards other issues, the Court required draft defences to be served by two Apple entties, but not Apple Inc (the parent company). Finally, the Court listed a CMC for early 2020, when the position was likely to be clearer, and declined to list any trials.

Parties

IPCom v Vodafone

Neutral Citation

[2019] EWHC 1255 (Pat)

Judge

Birss, Mr Justice

This concerned an application for expedition by IPCom and a jurisdiction challenge by Vodafone.

 

The Court ordered a degree of expedition as regards the patent trial to ensure it was scheduled before the expiry of the patent, but refused the schedule the FRAND trial before the expiry of the patent (which the Court felt would be impossible). 

 

The Court also noted that there was a real risk that if the patent was upheld as valid and essential and there is no undertaking to accept whatever licence the Court ultimately determined to be FRAND prior to expiry of the patent then Vodafone may be injuncted.

 

The jurisdiction challenge, which related to a stay application under Article 30 of the Recast Brussels Regulation (based on co-pending German proceedings), was compromised before the hearing. However, the Judge observed obiter (i) the fact the co-pending proceedings involved different group companies was unlikely material since FRAND licences often operate at a group level, (ii) since the FRAND obligation was international there was an obvious risk of irreconcilable decisions but (iii) in the present case there was a real issue on the Court’s discretion since in practice it was clear the [FRAND] issue was, in fact, highly unlikely to have fallen to be decided in the co-pending proceedings.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2019] EWHC 1089 (Pat)

Judge

Birss, Mr Justice

The Court considered whether an implementer was able to waive their right to rely on the RAND undertaking in response to an allegation of patent infringement, and thereby avoid a RAND determination.

 

The Court held that there were still arguable issues in relation to the effect of the RAND waiver and the right time to decide them would be at the RAND trial itself. As a result the Court considered that there was still a real commercial dispute and that the RAND trial should proceed.

 

Note this was overturned on appeal.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2019] EWHC 745 (Pat)

Judge

Carr, Mr Justice Henry

This was the consequential hearing following judgment on a patent trial, when a patent was found valid, essential and infringed. ZyXel had previously elected not to enforce the RAND undertaking.

 

ZyXel argued that the injunction would be disproportionate given its impact and the fact that the patent was due to expire in circa three months' time. However, the Court granted the injunction.

 

The Court also refused ZyXel's application for a stay on the basis of the prejudice it would cause to customers as the Court felt the evidence in support was insufficient.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2019] EWHC 353 (Pat)

Judge

Carr, Mr Justice Henry

This application primarily concerned a dispute over the date of a RAND trial.

 

During the course of the judgment, the Court makes a number of observations about such trials, as well as related pleadings and evidence.

 

The unavailability of counsel was not a good enough reason to avoid a particular date.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2019] EWCA Civ 38

Judge

Floyd, Lord Justice

The appeal was heard by Lord Justice Patten, Lord Justice Floyd and Lord Justice Flaux. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order of Mr Justice Henry Carr dismissing parts of the Defendants' jurisdiction challenges at first instance (though part of the appeal was held over to any further appeal on the basis of the recent Court of Appeal ruling in the Unwired Planet litigation).

 

The Court of Appeal upheld the first instance decision. In particular, the Court confirmed that the UK was the forum conveniens for the claim, which was correctly characterised as a UK patent claim, and has jurisdiction to grant a global FRAND licence even where UK sales only account for less than 1% of the sales on which royalties are claimed.

 

The Court refused to admit new evidence of Chinese law (in particular a set of Guidelines issued by the Courts of Guangdong Province, China). The Court felt the evidence was prima facie admissible under the first Ladd v Marshall criteria, but did not meet the second criteria of having an influence on the outcome of the decision.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2019] EWCA Civ 38

Judge

Flaux, Lord Justice

The appeal was heard by Lord Justice Patten, Lord Justice Floyd and Lord Justice Flaux. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order of Mr Justice Henry Carr dismissing parts of the Defendants' jurisdiction challenges at first instance (though part of the appeal was held over to any further appeal on the basis of the recent Court of Appeal ruling in the Unwired Planet litigation).

 

The Court of Appeal upheld the first instance decision. In particular, the Court confirmed that the UK was the forum conveniens for the claim, which was correctly characterised as a UK patent claim, and has jurisdiction to grant a global FRAND licence even where UK sales only account for less than 1% of the sales on which royalties are claimed.

 

The Court refused to admit new evidence of Chinese law (in particular a set of Guidelines issued by the Courts of Guangdong Province, China). The Court felt the evidence was prima facie admissible under the first Ladd v Marshall criteria, but did not meet the second criteria of having an influence on the outcome of the decision.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2019] EWCA Civ 38

Judge

Patten, Lord Justice

The appeal was heard by Lord Justice Patten, Lord Justice Floyd and Lord Justice Flaux. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order of Mr Justice Henry Carr dismissing parts of the Defendants' jurisdiction challenges at first instance (though part of the appeal was held over to any further appeal on the basis of the recent Court of Appeal ruling in the Unwired Planet litigation).

 

The Court of Appeal upheld the first instance decision. In particular, the Court confirmed that the UK was the forum conveniens for the claim, which was correctly characterised as a UK patent claim, and has jurisdiction to grant a global FRAND licence even where UK sales only account for less than 1% of the sales on which royalties are claimed.

 

The Court refused to admit new evidence of Chinese law (in particular a set of Guidelines issued by the Courts of Guangdong Province, China). The Court felt the evidence was prima facie admissible under the first Ladd v Marshall criteria, but did not meet the second criteria of having an influence on the outcome of the decision.

Parties

Unwired Planet v Huawei

Neutral Citation

[2018] EWCA Civ 2344

Judge

Floyd, Lord Justice

The appeal was heard by Lord Justice Kitchen, Lord Justice Floyd and Lady Justice Asplin. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order following the main first instance judgment in which the Court set a global FRAND licence.

 

The Court of Appeal dismissed all three grounds of Huawei's appeal, holding that (a) the Court can set a global FRAND licence; (b) Unwired Planet's offer was non-discriminatory provided it did not exceed the fair and reasonable 'benchmark' rate; and (c) the Huawei v ZTE negotiation framework set by the CJEU does not present a set of prescriptive rules, but rather presents the patentee with a 'safe harbour' against a finding of abuse of dominance.

Parties

Unwired Planet v Huawei

Neutral Citation

[2018] EWCA Civ 2344

Judge

Asplin, Lady Justice

The appeal was heard by Lord Justice Kitchen, Lord Justice Floyd and Lady Justice Asplin. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order following the main first instance judgment in which the Court set a global FRAND licence.

 

The Court of Appeal dismissed all three grounds of Huawei's appeal, holding that (a) the Court can set a global FRAND licence; (b) Unwired Planet's offer was non-discriminatory provided it did not exceed the fair and reasonable 'benchmark' rate; and (c) the Huawei v ZTE negotiation framework set by the CJEU does not present a set of prescriptive rules, but rather presents the patentee with a 'safe harbour' against a finding of abuse of dominance.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2018] EWHC 2549 (Ch)

Judge

Carr, Mr Justice Henry

Conversant applied for an anti-suit injunction to restrain ZTE's pursuit of Chinese FRAND proceedings.

 

The application was compromised by way of an amendment to ZTE's Chinese compliant and the provision of undertakings from ZTE and Conversant (the latter relating to Conversant's bringing of proceedings in Germany).

 

The judgment accordingly only considers costs, which were awarded to Conversant with a small discount.

Parties

TQ Delta v ZyXel Communications

Neutral Citation

[2018] EWHC 1515 (Ch)

Judge

Carr, Mr Justice Henry

The Court considered a dispute over whether individuals at ZyXel could have access to certain confidential information disclosed in the proceedings (specifically license agreements), rather than such information being restricted to an External Legal Eyes Only confidentiality club.

 

The Court determined that the confidential information should be disclosed to named ZyXEL representatives. The Court considered that 'exceptional circumstances' were required to warrant an External Legal Eyes Only tier for confidential information, and such circumstances were not present here.

Parties

Apple v Qualcomm

Neutral Citation

[2018] EWH 1188 (Pat)

Judge

Morgan, Mr Justice

This decision concerns a conjoined jurisdiction challenge and strike out application by Qualcomm (depending on the specific defendant entity) in relation to Apple's claim alleging abuse of a dominant position (Article 102 TFEU) and seeking various declarations pertaining to Qualcomm's FRAND / ETSI obligations (there were also a number of related claims relating to patent non-infringement and patent exhaustion).

 

The Court refused jursidiction / granted summary judgment as regards Apple's claim alleging breach of Qualcomm's FRAND undertaking in part on the basis that the UK Qualcomm subsidiary did not give any FRAND undertakings, or own any of the patents, and so could not serve as an anchor defendant.

 

The UK was plainly the approrpriate forum for a claim alleging a breach of Article 102 TFEU (and a multiplicity of proceedings was to be expected where conduct has given rise to alleged breaches of laws in multiple jurisdictions) but the question of whether Apple had a plausible evidential basis for suffering loss within the UK under jurisdictional gateway 9 (the Court having dismissed the other gateways relied upon).

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2018] EWHC 1216 (Ch)

Judge

Carr, Mr Justice Henry

This was the consequential hearing following judgment dismissing (in part) the jurisdiction challenges brought by Huawei and ZTE.

 

Huawei and ZTE were given permission to appeal the decision at first instance (that the Court had and should exercise jurisdiction to hear the claim and that England was the forum conveniens for that claim).

 

The Court refused to stay the substantive proceedings pending that appeal, ordering the listing of trials and the provision of draft pleadings.

Parties

Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2018] EWHC 808 (Pat)

Judge

Carr, Mr Justice Henry

Huawei and ZTE challenged the jurisdiction of the Court, alleging that the Court did not have or should not exercise jurisdiction over the claim and that England was not the forum conveniens for the claim as the claim sought the determination of a global FRAND licence. The Chinese parent companies also sought declarations that they had not been properly served with proceedings.

 

The Court held that the claim was properly characterised as a UK patent infringement claim.

 

The Court accordingly found that it had jurisdiction to determine the claim and that England was the forum conveniens for such a claim.

Parties

Unwired Planet v Huawei

Neutral Citation

[2017] EWHC 3083 (Pat)

Judge

Birss, Mr Justice

This judgment addresses the confidentiality of the main judgment and reiterates the strong principle that a judgment should be publically available in full with any redaction requiring both important reasons and cogent, specific evidence supporting it.

 

The judgment also annexes the licence terms that were agreed by the parties would accord with the main judgment save that the scope of the licence was limited to the UK (the Court expressly reiterated that it did not endorse this licence as FRAND in light of the main judgment).

Parties

Unwired Planet v Huawei

Neutral Citation

[2017] EWHC 2831 (Pat)

Judge

Carr, Mr Justice Henry

Unwired Planet applied for an anti-suit injunction to stop Huawei pursuing proceedings in China.

 

The application was compromised on the basis of undetakings whereby each party agreed not to commence new claims in Germany, Mexico and China in relation to Unwired Planet's portfolio without notice to the other party until final determination of these English proceedings.

 

The judgment concerns costs only, and the Court awarded Unwired Planet 60% of it's recoverable costs (which in turn were 70% of its claimed costs).

Parties

Unwired Planet v Huawei

Neutral Citation

[2017] EWHC 1304 (Pat)

Judge

Birss, Mr Justice

This is the remedies judgment following the main Unwired Planet decision (in which the Court determined the terms of a global FRAND licence). It was the first time the Court has granted - but stayed pending appeal - a 'FRAND injunction'.

 

A FRAND injunction was an ordinary injunction that will automatically cease to have effect if the defendant enters into a FRAND licence, and this was the appropriate relief where the court has settled a FRAND licence but the defendant has not entered into it.

The Court also granted permission to appeal to the Court of Appeal on all three of the grounds advanced by Huawei.

Parties

Unwired Planet v Huawei

Neutral Citation

[2017] EWHC 711 (Pat)

Judge

Birss, Mr Justice

This is the well known Unwired Planet judgment, in which, for the first time, the High Court assessed what offers are FRAND and determined the rates and terms of a global licence.

 

On the facts of the case, the Court held that a UK portfolio licence was not FRAND and the FRAND licence between Unwired Planet and Huawei was a worldwide licence. The Court determined a UK licence in case it was wrong about that, however, which included uplifts to reflect the issue of roaming and to compensate the patent holder for the inefficiencies of country-by-country licensing.

 

The Court held that there is only one set of licence terms which are FRAND in any given set of circumstances, and as a result the 'Vringo Problem' did not actually exist.

The Court determined that an implementer who refuses to take a licence on terms found by the court to be FRAND has chosen to have no licence and accordingly if they are found to infringe a valid patent, they may injuncted (as happened to Huawei).

Parties

Samsung v Ericsson & Unwired Planet

Neutral Citation

[2016] EWCA Civ 489

Judge

Lloyd, Sir Timothy

The appeal was heard by Lord Justice Tomlinson, Lord Justice Kitchin and Sir Timothy Lloyd. Lord Justice Kitchin delivered the lead judgment.

 

The Patents Court had struck out one of Samsung's competition law defences, namely the allegation that Ericsson had allegedly failed fully to transfer the FRAND undertaking given by Ericsson (to ETSI) to Unwired Planet. Samsung argued that Ericsson's non-discrimination obligation would be circumvented by the transfer. The High Court had struck this out on the basis that it was enough for Unwired Planet to make its own FRAND declaration to ETSI.

 

The Court of Appeal overturned the decision. It held there was an arguable case that the agreement (under which the SEPs had been transferred to Unwired Planet by Ericsson) may be void under Article 101 TFEU because of the failure to ensure Unwired Planet would respect Ericsson's non-discrimination obligation (such that "[Unwired Planet] could not obtain more favourable terms from its licensees than Ericsson could itself have obtained").

 

The Court also recognised the relationship between the defence that had been struck out and other competition law defences in the case, and in particular that "it is arguable that the matters complained of act together to allow Ericsson to circumvent its own FRAND obligations by increasing licence fees and weakening the competition between Ericsson and other users of its SEPs."

Parties

Samsung v Ericsson & Unwired Planet

Neutral Citation

[2016] EWCA Civ 489

Judge

Kitchin, Lord Justice

The appeal was heard by Lord Justice Tomlinson, Lord Justice Kitchin and Sir Timothy Lloyd. Lord Justice Kitchin delivered the lead judgment.

 

The Patents Court had struck out one of Samsung's competition law defences, namely the allegation that Ericsson had allegedly failed fully to transfer the FRAND undertaking given by Ericsson (to ETSI) to Unwired Planet. Samsung argued that Ericsson's non-discrimination obligation would be circumvented by the transfer. The High Court had struck this out on the basis that it was enough for Unwired Planet to make its own FRAND declaration to ETSI.

 

The Court of Appeal overturned the decision. It held there was an arguable case that the agreement (under which the SEPs had been transferred to Unwired Planet by Ericsson) may be void under Article 101 TFEU because of the failure to ensure Unwired Planet would respect Ericsson's non-discrimination obligation (such that "[Unwired Planet] could not obtain more favourable terms from its licensees than Ericsson could itself have obtained").

 

The Court also recognised the relationship between the defence that had been struck out and other competition law defences in the case, and in particular that "it is arguable that the matters complained of act together to allow Ericsson to circumvent its own FRAND obligations by increasing licence fees and weakening the competition between Ericsson and other users of its SEPs."

Parties

Samsung v Ericsson & Unwired Planet

Neutral Citation

[2016] EWCA Civ 489

Judge

Tomlinson, Lord Justice

The appeal was heard by Lord Justice Tomlinson, Lord Justice Kitchin and Sir Timothy Lloyd. Lord Justice Kitchin delivered the lead judgment.

 

The Patents Court had struck out one of Samsung's competition law defences, namely the allegation that Ericsson had allegedly failed fully to transfer the FRAND undertaking given by Ericsson (to ETSI) to Unwired Planet. Samsung argued that Ericsson's non-discrimination obligation would be circumvented by the transfer. The High Court had struck this out on the basis that it was enough for Unwired Planet to make its own FRAND declaration to ETSI.

 

The Court of Appeal overturned the decision. It held there was an arguable case that the agreement (under which the SEPs had been transferred to Unwired Planet by Ericsson) may be void under Article 101 TFEU because of the failure to ensure Unwired Planet would respect Ericsson's non-discrimination obligation (such that "[Unwired Planet] could not obtain more favourable terms from its licensees than Ericsson could itself have obtained").

 

The Court also recognised the relationship between the defence that had been struck out and other competition law defences in the case, and in particular that "it is arguable that the matters complained of act together to allow Ericsson to circumvent its own FRAND obligations by increasing licence fees and weakening the competition between Ericsson and other users of its SEPs."

Parties

Vringo Infrastructure v ZTE

Neutral Citation

[2015] EWHC 1704 (Pat)

Judge

Birss, Mr Justice

At the CMC, Vringo sought disclosure of comparative licences held by ZTE to provide evidence of the going rate of SEP licences in the relevant technology area. ZTE sought disclosure of comparative licences granted by Vringo, as well as its predecessor in title, Nokia.

 

A significant dispute arose over who had 'control' of the licences, given Nokia and ZTE's parent company (ZTE Corporation) were both not parties to the case.

 

The Court invited the parties to negotiate over the issue, given there was significant time to do so, and to come back to Court in one month if they failed to agree. The Court indicated, however, that in its view the most appropriate outcome would be for both sets of licences to be disclosed.

Parties

Vringo Infrastructure v ZTE

Neutral Citation

[2013] EWHC 1591 (Pat)

Judge

Birss, Mr Justice

At this CMC, Vringo asked the Court to set a trial on FRAND issues before the trials of the patents in suit.

 

The Court dismissed the application. Whilst it was sympathetic to Vringo's argument (since it would likely be a cheaper and more efficient way of resolving the dispute), there was a fundamental issue over whether the portfolio had any value at all, which could only be addressed by assessing validity and essentiality. Further, the FRAND trial would not bring the proceedings to an end as only Vringo had agreed to be bound by it.

 

It was in this judgment that the Court first grappled with what later became known as the 'Vringo problem', namely if FRAND is a range and both parties offered a rate within that range, both parties would be willing licensees and therefore it was questionable whether the Court should order an injunction.

Parties

Nokia v IPCom

Neutral Citation

[2012] EWHC 1446 (Ch)

Judge

Roth, Mr Justice

This concerned IPCom's application for an injunction, which was compromised on the basis that Nokia had agreed to take a licence on FRAND terms (the judgment itself is primarily about costs).

 

However, in this fact specific judgment, the Court indicated that the application for an injunction was 'inappropriate' and the correct course was to proceed to a determination of the FRAND terms.

 

IPCom had also applied for summary judgment / strike out in relation to Nokia's objections to an injunction being granted, and following the above no order was made on this application.

Parties

Unwired Planet v Huawei

Neutral Citation

[2018] EWCA Civ 2344

Judge

Kitchin, Lord Justice

The appeal was heard by Lord Justice Kitchen, Lord Justice Floyd and Lady Justice Asplin. Lord Justice Floyd delivered the lead judgment.

 

This was the appeal against the order following the main first instance judgment in which the Court set a global FRAND licence.

 

The Court of Appeal dismissed all three grounds of Huawei's appeal, holding that (a) the Court can set a global FRAND licence; (b) Unwired Planet's offer was non-discriminatory provided it did not exceed the fair and reasonable 'benchmark' rate; and (c) the Huawei v ZTE negotiation framework set by the CJEU does not present a set of prescriptive rules, but rather presents the patentee with a 'safe harbour' against a finding of abuse of dominance.

Parties

Koninklijke Philips v Harvard International & MPEG LA

Neutral Citation

[2009] EWHC 1600 (Pat)

Judge

Lewison, Mr Justice

At a previous case management conference, the Court had divided the case into three parts, namely the patent issues, the licence issues and the FRAND issues. The patent issues were stayed, and there would be separate trials in relation to the licence issues (first) and the FRAND issues (second).

 

This judgment concerns Philips' application to have the FRAND issues and the licence issues tried together instead of separately.

 

The Court decided that there was not a sufficiently strong case to justify varying or revoking the judge's order. A number of the issues raised were inherent in the order, rather than being due to any change in circumstances, there was little pleaded overlap between the two issues and the case would become unmanageable if the licence and FRAND issues were tried at the same time.

Parties

Nokia v IPCom

Neutral Citation

[2009] EWHC 1017 (Pat)

Judge

Floyd, Mr Justice

IPCom asked the court to order a preliminary issue hearing to determine the FRAND licence terms prior to hearing the validity and infringement actions (which were already listed).

 

The Court refused and held that the existing patent trials should take place first.

 

The Court was concerned about the "radical change of course", the risk of wasted resources spent on the patent actions already and whether, when determining the FRAND rate, the court would have to consider whether validity, infringement and essentiality of the patents was a factor which should be taken into account.

Parties

Unwired Planet v Huawei and Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] UKSC 37

Judge

Hodge, Lord Justice

The appeal was heard by Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales. All members of the panel contributed to the judgment.

The UKSC considered at length a number of issues relating to SEPs and FRAND across the Unwired and Conversant cases. The bullet points below are a very brief summary of the key findings.

The contractual arrangements created by ETSI’s IPR Policy gave the English courts jurisdiction to determine a global FRAND licence even without the parties’ consent. The English courts were not ruling on the validity and infringement of foreign patents by doing so (though in appropriate cases it may be argued that it was FRAND to include an adjustment mechanism based on challenges to essentiality/validity brought in a foreign jurisdiction).

In the Conversant case, no alternative forum was available since it had not been demonstrated that the Chinese courts would accept jurisdiction to set a global FRAND licence.

The ‘ND’ limb of FRAND was ‘general’ in nature, rather than ‘hard-edged’; patentees were free to offer discounts beneath a generally available reasonable rate, implying that the courts should determine royalty rates for portfolios rather than individual licensees.

The FRAND undertaking imports a single unitary obligation that terms are “fair, reasonable and non-discriminatory”, which extends to the process by which the parties negotiate a licence.

The lower courts’ interpretation of the CJEU’s Huawei v ZTE framework as a ‘safe harbour’, rather than mandatory process, was upheld.

The availability of  injunctive relief where an implementer declines to enter into a FRAND licence was a necessary component of the balance between hold-up and hold-out. Damages in lieu would not be an adequate substitute for an injunction as it could create an incentive for country-by-country hold out.

Parties

Nokia v InterDigital

Neutral Citation

[2006] EWHC 802 (Pat)

Judge

Pumfrey, Mr Justice

InterDigital sought to set aside service of a claim against it on the basis the Court had no jurisdiction (or should strike it out). The claim sought declarations of non-essentiality in relation to certain of InterDigital's patents.

 

InterDigital asserted that representations of essentiality to a third party could not amount to an "assertion of a claim of right" (and so the Court lacked jurisdiction to grant declaratory relief) or alternatively such discretion should not be exercised in Nokia's favour for six reasons.

 

Nokia argued estoppel (on the basis of another case between the parties seeking similar relief was proceeding to trial) or alternatively that InterDigital had misunderstood the Court's declaratory jurisdiction.

 

The Court dismissed the application. The Judge observed that "it is wrong for a member of ETSI who has made a declaration of essentiality to suggest that it is either unprepared or unwilling to have the substance of the declaration tested". This was reinforced by presentations made to Nokia in which InterDigital asserts essentiality. The Court also noted that each of the six discretionary reasons was inappropriate to determine at this stage, and that each had "a flavour" of the grounds advanced in the earlier action when the declarations had been allowed to proceed to trial.
- The Court also noted that there was not a real possibility that Nokia would infringe notwithstanding a declaration of non-essentiality given how the standard operated and, in any event, none of the patents in suit had been identified as patents where this may be an issue.

Parties

Unwired Planet v Huawei and Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] UKSC 37

Judge

Brigg, Lord Justice

The appeal was heard by Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales. All members of the panel contributed to the judgment.

The UKSC considered at length a number of issues relating to SEPs and FRAND across the Unwired and Conversant cases. The bullet points below are a very brief summary of the key findings.

The contractual arrangements created by ETSI’s IPR Policy gave the English courts jurisdiction to determine a global FRAND licence even without the parties’ consent. The English courts were not ruling on the validity and infringement of foreign patents by doing so (though in appropriate cases it may be argued that it was FRAND to include an adjustment mechanism based on challenges to essentiality/validity brought in a foreign jurisdiction).

In the Conversant case, no alternative forum was available since it had not been demonstrated that the Chinese courts would accept jurisdiction to set a global FRAND licence.

The ‘ND’ limb of FRAND was ‘general’ in nature, rather than ‘hard-edged’; patentees were free to offer discounts beneath a generally available reasonable rate, implying that the courts should determine royalty rates for portfolios rather than individual licensees.

The FRAND undertaking imports a single unitary obligation that terms are “fair, reasonable and non-discriminatory”, which extends to the process by which the parties negotiate a licence.

The lower courts’ interpretation of the CJEU’s Huawei v ZTE framework as a ‘safe harbour’, rather than mandatory process, was upheld.

The availability of  injunctive relief where an implementer declines to enter into a FRAND licence was a necessary component of the balance between hold-up and hold-out. Damages in lieu would not be an adequate substitute for an injunction as it could create an incentive for country-by-country hold out.

Parties

Unwired Planet v Huawei and Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] UKSC 37

Judge

Sales, Lord Justice

The appeal was heard by Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales. All members of the panel contributed to the judgment.

The UKSC considered at length a number of issues relating to SEPs and FRAND across the Unwired and Conversant cases. The bullet points below are a very brief summary of the key findings.

The contractual arrangements created by ETSI’s IPR Policy gave the English courts jurisdiction to determine a global FRAND licence even without the parties’ consent. The English courts were not ruling on the validity and infringement of foreign patents by doing so (though in appropriate cases it may be argued that it was FRAND to include an adjustment mechanism based on challenges to essentiality/validity brought in a foreign jurisdiction).

In the Conversant case, no alternative forum was available since it had not been demonstrated that the Chinese courts would accept jurisdiction to set a global FRAND licence.

The ‘ND’ limb of FRAND was ‘general’ in nature, rather than ‘hard-edged’; patentees were free to offer discounts beneath a generally available reasonable rate, implying that the courts should determine royalty rates for portfolios rather than individual licensees.

The FRAND undertaking imports a single unitary obligation that terms are “fair, reasonable and non-discriminatory”, which extends to the process by which the parties negotiate a licence.

The lower courts’ interpretation of the CJEU’s Huawei v ZTE framework as a ‘safe harbour’, rather than mandatory process, was upheld.

The availability of  injunctive relief where an implementer declines to enter into a FRAND licence was a necessary component of the balance between hold-up and hold-out. Damages in lieu would not be an adequate substitute for an injunction as it could create an incentive for country-by-country hold out.

Parties

Unwired Planet v Huawei and Conversant Wireless Licensing v Huawei & ZTE

Neutral Citation

[2020] UKSC 37

Judge

Black, Lady Justice

The appeal was heard by Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales. All members of the panel contributed to the judgment.

The UKSC considered at length a number of issues relating to SEPs and FRAND across the Unwired and Conversant cases. The bullet points below are a very brief summary of the key findings.

The contractual arrangements created by ETSI’s IPR Policy gave the English courts jurisdiction to determine a global FRAND licence even without the parties’ consent. The English courts were not ruling on the validity and infringement of foreign patents by doing so (though in appropriate cases it may be argued that it was FRAND to include an adjustment mechanism based on challenges to essentiality/validity brought in a foreign jurisdiction).

In the Conversant case, no alternative forum was available since it had not been demonstrated that the Chinese courts would accept jurisdiction to set a global FRAND licence.

The ‘ND’ limb of FRAND was ‘general’ in nature, rather than ‘hard-edged’; patentees were free to offer discounts beneath a generally available reasonable rate, implying that the courts should determine royalty rates for portfolios rather than individual licensees.

The FRAND undertaking imports a single unitary obligation that terms are “fair, reasonable and non-discriminatory”, which extends to the process by which the parties negotiate a licence.

The lower courts’ interpretation of the CJEU’s Huawei v ZTE framework as a ‘safe harbour’, rather than mandatory process, was upheld.

The availability of  injunctive relief where an implementer declines to enter into a FRAND licence was a necessary component of the balance between hold-up and hold-out. Damages in lieu would not be an adequate substitute for an injunction as it could create an incentive for country-by-country hold out.

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2020] EWCA Civ 1562

Judge

Males, Lord Justice

This was an appeal against the order following [2020] EWHC 2641 (Pat), in which the High Court had inter alia dismissed applications (i) by Oppo to add individuals involved in FRAND licensing negotiations into a ‘High Confidential Material’ (HCM) confidentiality club and (ii) by Xiaomi for the blanket re-designation of all ‘Attorney’s Eyes Only’ (AEO) documents to HCM.

The Court of Appeal dismissed the appeal, noting that the documents in question contained highly valuable confidential information belonging to third parties. Further, given the breadth of the disclosure in the case and the stage of the proceedings, a large number of the documents would be of limited relevance. In those circumstances, it was appropriate to limit access.

The Court also agreed with the first instance judge that a limited number of AEO documents should be downgraded to HCM, subject to additional undertakings being provided by the relevant individuals to the licence counterparties.

However, in the case of Xiaomi, the Court of Appeal held that the undertakings to be entered into by relevant individuals should be amended to allow those individuals to participate in FRAND litigation and settlement negotiations (although not FRAND licensing more generally).

Parties

Mitsubishi & Sisvel v Archos, Nuu, OnePlus, Oppo & Xiaomi

Neutral Citation

[2020] EWCA Civ 1562

Judge

Lewis, Lord Justice

This was an appeal against the order following [2020] EWHC 2641 (Pat), in which the High Court had inter alia dismissed applications (i) by Oppo to add individuals involved in FRAND licensing negotiations into a ‘High Confidential Material’ (HCM) confidentiality club and (ii) by Xiaomi for the blanket re-designation of all ‘Attorney’s Eyes Only’ (AEO) documents to HCM.

The Court of Appeal dismissed the appeal, noting that the documents in question contained highly valuable confidential information belonging to third parties. Further, given the breadth of the disclosure in the case and the stage of the proceedings, a large number of the documents would be of limited relevance. In those circumstances, it was appropriate to limit access.

The Court also agreed with the first instance judge that a limited number of AEO documents should be downgraded to HCM, subject to additional undertakings being provided by the relevant individuals to the licence counterparties.

However, in the case of Xiaomi, the Court of Appeal held that the undertakings to be entered into by relevant individuals should be amended to allow those individuals to participate in FRAND litigation and settlement negotiations (although not FRAND licensing more generally).

Parties

IPCom v Vodafone

Neutral Citation

[2021] EWCA Civ 205

Judge

Lewison, Lord Justice

The point of particular interest on this appeal is IPCom's appeal against the finding that Vodafone had a defence of crown use to the infringement of IPCom's SEP. The Government had selected Vodafone to provide a system giving emergency services precedence on network channels during high traffic period, called MTPAS.

The crux of the appeal was whether, to invoke the defence of crown use, the Government had to provide (i) express authorisation to work the patent; (ii) authorisation to do an act where that act necessarily infringes the patent; or (iii) authorisation to do a particular act even if that does not necessarily involve infringing the patent. IPCom contended for (ii) whereas Vodafone contended, and the Judge found at first instance, that (iii) was sufficient.

The Secretary of State for Defence (SoSD) intervened in that appeal (as the relevant Government department liable to pay IPCom compensation based on the crown use). SoSD contended that (i) was required save that it could take the form of an express authorisation to 'work any patent'.

The CoA allowed the appeal and overturned the finding that Vodafone had a defence of crown use. Further, although it was not necessary to determine the point, the Court stated that interpretation (ii) is to be preferred for no fewer than 13 reasons (set out in the judgment at paragraphs to 150 to 165).

Parties

IPCom v Vodafone

Neutral Citation

[2021] EWCA Civ 205

Judge

Asplin, Lady Justice

The point of particular interest on this appeal is IPCom's appeal against the finding that Vodafone had a defence of crown use to the infringement of IPCom's SEP. The Government had selected Vodafone to provide a system giving emergency services precedence on network channels during high traffic period, called MTPAS.

The crux of the appeal was whether, to invoke the defence of crown use, the Government had to provide (i) express authorisation to work the patent; (ii) authorisation to do an act where that act necessarily infringes the patent; or (iii) authorisation to do a particular act even if that does not necessarily involve infringing the patent. IPCom contended for (ii) whereas Vodafone contended, and the Judge found at first instance, that (iii) was sufficient.

The Secretary of State for Defence (SoSD) intervened in that appeal (as the relevant Government department liable to pay IPCom compensation based on the crown use). SoSD contended that (i) was required save that it could take the form of an express authorisation to 'work any patent'.

The CoA allowed the appeal and overturned the finding that Vodafone had a defence of crown use. Further, although it was not necessary to determine the point, the Court stated that interpretation (ii) is to be preferred for no fewer than 13 reasons (set out in the judgment at paragraphs to 150 to 165).

Parties

Vestel v Access Advance & Koninklijke Philips

Neutral Citation

[2021] EWCA Civ 440

Judge

Nugee, Lord Justice

The appeal was heard by Lord Justice Nugee and Lady Justice Elisabeth Laing. Lord Justice Birss delivered the lead judgment.

 

This was an appeal from an order declaring that the court had no jurisdiction over Vestel’s claims against Access Advance (the administrator of a patent pool concerning the H.265 (HEVC) standard) and Philips (a member of that pool sued on its own behalf but also as an alleged representative of the pool members). Vestel claimed that the Defendants had abused their dominant positions inter alia by making allegedly non-FRAND offers. The relief sought included a determination of FRAND terms.

 

An appeal against the Judge’s finding that Vestel had not suffered any jurisdictionally relevant direct damage in the UK was dropped shortly in advance of the appeal hearing, along with Vestel’s claim that the Defendants had abused their dominant positions. The appeal therefore considered only Vestel’s reformulated (on appeal) case that it should be entitled to a FRAND declaration under the Court’s inherent jurisdiction to grant declaratory relief. Vestel also sought to limit its claim so that it concerned only UK patents (but maintained its assertion that a FRAND licence to such patents would be of global scope).

 

The Court of Appeal dismissed the appeal, holding that the inherent declaratory jurisdiction of the court cannot be engaged unless it is based on the existence or non-existence of a legal right (in addition to satisfying the ‘useful purpose’ requirement). Although Vestel had highlighted that the rules of the ITU (which administered the H.265 (HEVC) standard) were of relevance, Vestel did not assert it had a legally enforceable right to a FRAND licence. Further, it did not plead any legal standard against which the matter could properly be judged. The Court held that the claim had no reasonable prospect of success.

 

Further, the Court of Appeal held that neither the tort gateway (in the case of Access Advance) or Article 7(2) Brussels I Recast (in the case of Philips) applied in this case. It was not a claim for a declaration of non-liability for the tort of patent infringement. As regards the property gateway (in the case of Access Advance), the Court held the absence of a legal claim meant that gateway also did not apply.

Parties

Vestel v Access Advance & Koninklijke Philips

Neutral Citation

[2021] EWCA Civ 440

Judge

Laing, Lady Justice Elisabeth

The appeal was heard by Lord Justice Nugee and Lady Justice Elisabeth Laing. Lord Justice Birss delivered the lead judgment.

 

This was an appeal from an order declaring that the court had no jurisdiction over Vestel’s claims against Access Advance (the administrator of a patent pool concerning the H.265 (HEVC) standard) and Philips (a member of that pool sued on its own behalf but also as an alleged representative of the pool members). Vestel claimed that the Defendants had abused their dominant positions inter alia by making allegedly non-FRAND offers. The relief sought included a determination of FRAND terms.

 

An appeal against the Judge’s finding that Vestel had not suffered any jurisdictionally relevant direct damage in the UK was dropped shortly in advance of the appeal hearing, along with Vestel’s claim that the Defendants had abused their dominant positions. The appeal therefore considered only Vestel’s reformulated (on appeal) case that it should be entitled to a FRAND declaration under the Court’s inherent jurisdiction to grant declaratory relief. Vestel also sought to limit its claim so that it concerned only UK patents (but maintained its assertion that a FRAND licence to such patents would be of global scope).

 

The Court of Appeal dismissed the appeal, holding that the inherent declaratory jurisdiction of the court cannot be engaged unless it is based on the existence or non-existence of a legal right (in addition to satisfying the ‘useful purpose’ requirement). Although Vestel had highlighted that the rules of the ITU (which administered the H.265 (HEVC) standard) were of relevance, Vestel did not assert it had a legally enforceable right to a FRAND licence. Further, it did not plead any legal standard against which the matter could properly be judged. The Court held that the claim had no reasonable prospect of success.

 

Further, the Court of Appeal held that neither the tort gateway (in the case of Access Advance) or Article 7(2) Brussels I Recast (in the case of Philips) applied in this case. It was not a claim for a declaration of non-liability for the tort of patent infringement. As regards the property gateway (in the case of Access Advance), the Court held the absence of a legal claim meant that gateway also did not apply.

Experience

IPCom (patent owner): litigating numerous patents from a portfolio of ETSI declared essential patents against Nokia and others (over a period of more than a decade).

Samsung & Google (implementers): defending proceedings by Unwired Planet under a portfolio of five declared ETSI essential patents and one feature patent to successful settlements.

Philips (patent owner):

  • litigation against ASUS and HTC concerning three ETSI declared essential patents including a licence defence (rebutted) and FRAND issues
  • defending proceedings by Vestel for abuse of dominant position regards patents declared essential to HEVC.

ZTE (implementer): litigation by Conversant in respect of four ETSI declared essential patents involving jurisdictional challenges (which the Supreme Court heard in October 2019) as well as standard SEP litigation and FRAND issues.

Samsung: working with Samsung as both implementer and patent owner on competition issues involving FRAND before the European Commission.

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