UK Supreme Court approves global FRAND licences in Unwired Planet and Conversant appeals

26.08.2020

In a highly significant development for the world of SEP licensing, the UK Supreme Court has just confirmed that English courts may set the terms for global FRAND licences to portfolios of SEPs. The judgment comes from the joined appeals in Unwired Planet, the first full judicial determination of global FRAND terms, and Conversant, where the defendants challenged the jurisdiction of the English Courts to undertake such an exercise.

We have set out a full summary of the judgment and our initial thoughts on its implications here. In short, the Supreme Court opined on the following issues:

  1. Does the UK court have jurisdiction to determine global FRAND? Yes.
  2. Is the UK the right place for the Conversant case to be heard? Yes, because the proposed alternative – China – was not found willing to make a determination.
  3. Does the ND part of FRAND equate to a most favoured nation clause? No, an SEP holder has to offer objectively reasonable terms to all, but can offer discounted rates to some if it chooses.
  4. Does the CJEU’s Huawei v ZTE FRAND process framework have to be followed exactly by a patentee in order to avoid infringing Article 102 when seeking an injunction? No, as long as the implementer is given sufficient notice of the case to have the opportunity to negotiate a FRAND licence before being injuncted.
  5. Should patentees ever receive an injunction for an SEP case? Yes, if the implementer refuses to take a licence considered by the Court to be FRAND.

Following on from the recent decisions of the German Federal Court of Justice in Sisvel v Haier, and the Ninth Circuit in FTC v Qualcomm, the UK Supreme Court’s decision caps a series judgments that are favourable to SEP holders. We expect to provide more commentary on this soon and in the meantime, you can watch three Bristows’ experts discussing the case in a short webinar available here.

Matthew Hunt

Author

Pat Treacy

Author

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