In a judgment that is likely to confirm the UK as a go-to jurisdiction for SEP owners seeking to secure global FRAND deals with recalcitrant licensees, the Court of Appeal in London has today upheld Justice Colin Birss’ High Court decision in the Unwired Planet v Huawei case. This was handed down in April 2017 and established that a judge sitting in the UK is able to set a global FRAND rate when licensor and licensee cannot agree one; set a clear methodology for establishing such a rate; and confirmed the possibility of an injunction in the UK should the implementer then fail to pay the rate.
The full judgment has not yet been published, but law firm EIP – which represents Unwired Planet – has put out a press release, excerpts from which now follow:
This morning the Court of Appeal handed down its judgment in Unwired Planet v Huawei, upholding Mr Justice Birss’ decision. Notably, the Court of Appeal ruled that that a global SEP portfolio owner can meet its FRAND obligations by offering a worldwide licence, and if that offer is refused, then the implementor may be subject to an injunction preventing further infringements in the UK.
In assessing this, the Court commented that global licensing is efficient and aligns with world-wide cellular standards and sales of mobile phones. The Court noted that Mr Justice Birss correctly took into account the realities of the unnecessary costs and risks of country-by-country licensing and of industry practice when ruling that global licensing was FRAND.
The Court of Appeal also held that Unwired Planet had not discriminated against Huawei, and that the FRAND obligation did not amount to a “most favoured nation” approach to licensing. Instead, a SEP holder’s FRAND undertaking requires it to offer licences which reflect the proper valuation of its portfolio.
Huawei have indicated that they intend to seek permission to appeal to the Supreme Court. Permission was refused by the Court of Appeal but it remains open to Huawei to seek permission from the Supreme Court itself.