The judgment of the Mr Justice Birss following the Non-Technical trial in the Unwired Planet v Huawei litigation was handed down today. This is the first UK judgment on FRAND related issues, since the landmark decision of the Court of Justice of the European Union (“CJEU”) in Huawei v ZTE of July 2015. It has been eagerly awaited.
A copy of the full Unwired Planet judgment is available here.
A convenient summary of the conclusions of law are at paragraphs 144 and 806, and those of fact are at paragraph 807.
Amongst the headline points in a long judgment are the following:
On the application of the CJEU’s decision in Huawei v ZTE (summarised in paragraph 144):
- The CJEU’s decision sets out a scheme which both the patentee and the implementer can be expected to follow in the context of a dispute about a patent declared essential to a standard and subject to a FRAND undertaking;
- Bringing a claim for infringement which includes a claim for an injunction without prior notice of any kind will necessarily be an abuse of a dominant position
- Bringing a claim for infringement which includes a claim for an injunction even with sufficient notice is capable of being an abuse of dominant position. However the CJEU judgment does not hold that if circumstances diverge from the scheme set out in any way then a patentee will necessarily abuse their dominant position by starting such a claim
- The scheme sets out a standard of behaviour against which both parties’ behaviour can be measured to decide in all the circumstances if an abuse has taken place.
- If the patentee does abuse its dominant position, the proper remedy is likely to be the refusal of an injunction even though a patent has been found to be valid and infringed and the implementer has no licence.
- The legal circumstances of this case differ from the circumstances assumed in Huawei v ZTE in a crucial respect. FRAND is justiciable and the FRAND undertaking can be effectively enforced at the suit of the defendant irrespective of Art. 102 TFEU.
On the facts of the case, amongst the conclusions (summarised at paragraph 807):
- A UK portfolio licence is not FRAND. The FRAND licence between Unwired Planet and Huawei is a worldwide licence.
- Unwired Planet did not abuse their dominant position by issuing these proceedings for an injunction prematurely, by maintaining a claim for an injunction in these proceedings, by seeking to insist on a worldwide licence, by attempting to impose unfair prices, or by bundling SEPs and non-SEPs.
- Since Unwired Planet have established that Huawei have infringed 2 valid patents, and since Huawei have not been prepared to take a licence on the terms the court found to be FRAND, and since Unwired Planet are not in breach of competition law, a final injunction should be granted.
- 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 the court’s judgment.
The Unwired Planet judgment, together with the important recent decisions on these issues from the Courts in Germany and the Netherlands, will be analysed by an international panel of Taylor Wessing experts at our forthcoming seminar “European FRAND decisions following Huawei v ZTE“ on Thursday 11 May, at 9:00 BST and again at 17:00 BST. For registration, please follow the attached link here.