Unwired Planet International -v- Huawei Technologies and ors [2017] EWHC 711 (Pat)

April 2017

Unwired Planet International -v- Huawei Technologies and ors [2017] EWHC 711 (Pat)

Unwired Planet, a non-practising entity, have been granted injunction against Huawei in SEP/FRAND case before the UK Patent’s Court.

This is the UK Patents Court’s Judgment in the non-technical trial relating to SEPs (standard essential patents) and encompassing competition and FRAND (i.e., fair, reasonable and non-discriminatory) issues following three earlier technical trials (two other trials were stayed) dealing with patent validity and infringement/essentiality. 

To date, similar actions have settled before the Courts in Europe have had an opportunity to consider FRAND issues substantively.  Unwired Planet have pursued this series of actions to obtain clarity on the meaning of FRAND and how SEPs should be evaluated and licensed in Europe.

In a redacted judgement of 166 pages, Mr Justice Birss Ordered a final injunction to restrain infringement of two SEPs by Huawei. The injunction was granted because:

(i)               Huawei had infringed valid, essential patents EP (UK) 2 229 744 and EP (UK) 1 230 818, and

(ii)             Huawei’s offer to take a licence had been contingent and in those circumstances was not an unqualified commitment to take a licence on FRAND terms, and

(iii)           While holders of SEPs were in a dominant position in the market for licences under those SEPs, in this case, Unwired Planet had not abused that dominant position in breach of competition law.

The final injunction will be considered at a hearing in a few weeks’ time once Unwired Planet have drawn up a full set of the terms of the worldwide licence incorporating the decisions made in today’s Judgment.  Birss J noted that to the extent damages should be awarded, they would be at the same rate as the appropriate FRAND rate.

This update was prepared by Rachel Fetches based in our London Office and Estelle Senior based in our Sheffield Office. If you would like further information please contact Rachel or Estelle. Alternatively visit our Contact page for your nearest HGF office.