• Owner of global patent portfolio for mobile phone technology claims infringement by Chinese-based manufacturer
  • Manufacturer argues that as the portfolio is comprised mainly of Chinese patents, that China is the appropriate place for a claim to be heard
  • Does the English court have jurisdiction to hear a claim for the infringement of UK patents where the relief sought is a global FRAND licence?

What's it about?

The European Telecommunications Standards Institute (ETSI) defines technical standards for mobile phones which manufacturers must follow. Such standards include the use of patented technology which are essential to the manufacture of mobile phones. These are defined as "standard essential patents" (SEPs). Owners of SEPs are required to licence these on fair, reasonable, and non-discriminatory terms (FRAND).

Conversant initiated a claim in the English Court against Huawei and ZTE alleging that they had infringed 4 of its SEPs, each of which were UK patents.

Conversant sought a declaration from the English court to either (i) confirm that they had offered the Defendants FRAND terms for its global SEPs, or (ii) determine what the FRAND licence terms should be for its global portfolio of SEPs.

Huwawei and ZTE challenged the claim by arguing that: (i) the English Courts did not have jurisdiction because in the infringement related to foreign patents and that the validity of these were in dispute; and (ii) the UK was 'forum non conveniens' (in other words, not the appropriate forum) and that China should be the natural forum to try the claim.

Why does it matter?

Both of these challenges were rejected. It was held that the infringement claim related to UK patents and so must be heard in the English Courts. It therefore logically followed that the remedy for this infringement, being the determination of the global FRAND licence, should and could also be heard in the English court. The judgment stated the importance of one court deciding the terms of a global FRAND licence and in these particular circumstances, this court should be the English court.

This is the first time that the English court has had to look at a jurisdictional dispute in relation to global FRAND licences. The ruling shows a strong commitment to ensuring that there is a balance between rewarding innovators through royalty payments and allowing others to use these inventions to further develop new technologies.

Now what?

Undoubtedly this will not be the last case on the matter of jurisdiction and global FRAND licences and it will be interesting to see if the English court will take the same approach in the future.

Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd & Ors [2018] EWHC 808 (Pat)