London, UK – We release our analysis of long anticipated Unwired Planet v Huawei judgment which was handed down by Mr Justice Birss at 11:30 today.
Having advised Google and Samsung in this litigation, Bristows’ TMT team takes a first look at the implications:
1. The English Court can and will set a FRAND rate and licence terms
2. Failure to accept the Court’s FRAND terms may result in an injunction (for an implementer) or refusal to grant an injunction (for an SEP owner)
3. There is only one true FRAND: There is and will only be one FRAND rate and set of licence terms between given parties in a given situation
4. A FRAND licence will likely be a worldwide portfolio licence
5. FRAND is directly enforceable without recourse to competition law
6. FRAND is a two-way street: To arrive at a FRAND deal, the patentee must not hold up (effectively refusing to license) nor must the licensee hold out (effectively refusing to take a licence)
7. Offers made during negotiations do not all have to be FRAND: Both parties need to follow a FRAND approach, however, that still allows for ‘non-FRAND’ opening offers that leave room for negotiation upwards or downwards towards an eventual FRAND licence
8. Non-Discrimination: The ND in FRAND doesn’t mean a licensee is necessarily entitled to demand the same licence terms as another similarly positioned licensee
9. What is a FRAND rate? A FRAND rate can be determined from relevant pre-existing comparable licences and by a ‘top down’ analysis which calculates a patentee’s share of total relevant essential patents
10. Mr Justice Birss also set FRAND rates for worldwide licences of UP’s essential patents. These, and a more in-depth review, is available here.
Head of the firm’s Competition team, Pat Treacy, says: “Having been active in this area of law for over 15 years, we at Bristows can say that this is a ground-breaking judgment.”Joint head of Patent Litigation, Myles Jelf, adds: “Anyone with an interest in FRAND, high-tech patent litigation and licensing will want to understand this judgment.”