{"id":9004111222084268,"date":"2020-08-22T10:21:03","date_gmt":"2020-08-22T09:21:03","guid":{"rendered":"https:\/\/www.hgf.com\/?p=9004111222084268"},"modified":"2026-02-18T11:53:33","modified_gmt":"2026-02-18T11:53:33","slug":"uk-supreme-court-reaches-a-unanimous-decision-in-parallel-unwired-planet-and-conversant-appeal-cases-spelling-victory-for-standard-essential-patent-holders","status":"publish","type":"post","link":"https:\/\/www.hgf.com\/de\/knowledge-hub\/legal-updates\/uk-supreme-court-reaches-a-unanimous-decision-in-parallel-unwired-planet-and-conversant-appeal-cases-spelling-victory-for-standard-essential-patent-holders\/","title":{"rendered":"UK Supreme Court Reaches a Unanimous decision in Parallel Unwired Planet and Conversant Appeal cases, Spelling Victory for Standard Essential Patent Holders"},"content":{"rendered":"

The Supreme Court has today (26th<\/sup>\u00a0August 2020) issued decisions unanimously dismissing two parallel appeals from English Court of Appeal decisions.\u00a0In particular, the \u201cUnwired appeal\u201d and the \u201cConversant appeal\u201d. The Supreme Court heard the oral arguments in October 2019.\u00a0The decision can be found\u00a0here<\/a>.<\/p>\n

The\u00a0\u201cUnwired appeal\u201d<\/strong><\/em>\u00a0concerned an action brought in by Unwired Planet in 2015\/16 against Huawei for infringement of five UK patents forming part of a worldwide Standard Essential Patent (SEP) portfolio. The SEP \u00a0portfolio was acquired by Unwired, an intellectual property licensing company, from Ericsson. Although Ericsson previously licensed the SEPs to Huawei, the licence expired in 2012. Initially, in the UK, Unwired accused Samsung, Google and Huawei of violating these patents. Google reached a settlement with Unwired before trial.<\/p>\n

With regard to the Huawei dispute with Unwired, at first instance in the UK High Court, Judge Birss, found that a global licence was an appropriate FRAND licence for Unwired\u2019s SEP portfolio and that it was appropriate for the English court to determine the FRAND terms. Huawei argued that setting global FRAND terms on the basis of national findings of infringement was unjust. There was ongoing litigation in other jurisdictions with regard to some of the SEPs. Huawei sought the same FRAND rates as those that had been offered to Samsung alleging that this was required for the licence to be \u201cnon-discriminatory\u201d. Huawei also alleged abuse of a dominant position by Unwired because in view of the Huawei v ZTE CJEU judgement, Unwired ought to have offered a FRAND licence prior to bringing a proceedings for an injunction.<\/p>\n

The Court of Appeal found that although Unwired did hold a dominant market position, it had not abused this by failing to offer a FRAND licence prior to bringing proceedings. The Court of Appeal agreed with Birss J that a global licence could be negotiated by a willing licensor and licensee, although departed from the first instance judgment by concluding that there was no requirement that only one set of licence terms could be FRAND in any given circumstance. In particular, there was no reason why a SEP owner cannot license at rates below a FRAND benchmark, making the lower rates offered to Samsung irrelevant.<\/p>\n

Unwired Planet\u2019s parent company (Panoptis) and Huawei settled corresponding FRAND litigation in Germany earlier this year (2020) before Germany\u2019s highest court, the Federal Court of Justice, could reach its decision. In October 2019 the German Federal Court of justice declared an Unwired SEP patent valid, paving the way for a subsequent decision on infringement and FRAND compliance, but the case was withdrawn in view of the settlement between Panoptis and Huawei.<\/p>\n

The\u00a0\u201cConversant appeal\u201d<\/strong><\/em>\u00a0concerned an action brought by Conversant, another intellectual property licensing company, against Huawei and ZTE for infringement of four UK patents from a large patent portfolio of SEPs acquired from Nokia in 2011. Huawei and ZTE applied for an order dismissing Conversant\u2019s claims, arguing that the English courts: (i) did not have jurisdiction to determine validity of foreign patents; or (ii) were not an appropriate forum for trying the case so a stay of proceedings should be granted. The trial judge dismissed both of these applications holding that the English courts had the jurisdiction to enforce SEPs under the European Telecommunications Standards Institute\u2019s (ETSI\u2019s) intellectual property rights (IPR) policy and the right to determine the terms of a FRAND licence. With regard to validity and infringement, the terms of any FRAND licences determined by English courts could be adjusted to reflect any relevant validity and infringement rulings of foreign courts.<\/p>\n

Questions Answered by the Supreme Court<\/h5>\n

The Supreme Court addressed a number of questions in these appeal decisions that will prove very important for both implementers and patent holders of SEPs in the wireless telecommunications sector. The questions and corresponding answers are set out below.<\/p>\n

The Jurisdiction Question<\/h5>\n

Q1. Does the English court have the power or jurisdiction, or is it a proper exercise of any such power or jurisdiction without the parties\u2019 agreement:<\/em><\/p>\n