US district court judge James Robart has taken aim at the decision handed down by Justice Colin Birss in the high profile London High Court SEP/FRAND case of Unwired Planet v Huawei, decided earlier this year. Speaking at the annual IPO meeting in San Francisco yesterday, Robart – who handed down the famous Microsoft v Motorola decision in 2013 and sits in the Western District of Washington - said that Birss was wrong to offer specific royalty rates for the technology in question, rather than offering a range, and stated that he did not expect the judgment to be particularly influential in US courthouses.
Furthermore, Robart referred to Unwired Planet v Huawei as a “perfect storm” that featured an English judge, making a ruling on the eve of Brexit, in a high-profile case in Europe which was grounded in part in French law. ETSI, one of the leading standard setting organisations in the mobile space, is chartered under French law.
Robart’s comments are particularly noteworthy as Microsoft v Motorola is one of the highest profile SEP/FRAND judgments ever made in the US. That case, which was a breach of contract lawsuit rather than a patent infringement dispute, was brought by Microsoft after it accused Motorola of not offering a licence to its patents relating to WiFi and video coding on FRAND terms.
Robart ruled that more than one royalty rate could be considered FRAND and calculated a rate far lower than the ones proposed by Motorola. As the first time a US court had offered a determination on FRAND licensing terms in an SEP dispute Robart’s decision not surprisingly received a lot of attention.
Mr Justice Birss’s ruling in Unwired Planet has proved to be similarly high profile. In his very detailed decision he suggested that there was a single rate which should be considered FRAND and also introduced the idea of a FRAND injunction, which ceases to exist once the two parties in an SEP licensing dispute agree to a FRAND licence.
Robart’s claim that the Unwired decision wouldn’t have much influence over US courts has previously been made by former Chief Judge for the Federal Circuit Paul Michel who told this blog after the London ruling was handed down that the US legal system was traditionally inward looking and so rarely paid much heed to overseas cases. Of course, judges around the world often disagree on key areas of patent law - the Supreme Court’s rulings in several patent eligibility cases has meant that the US is out-of-step with many jurisdictions in sectors like medical diagnostics - but Robart’s comments highlight the degree to which the law in FRAND licensing remains unsettled.
That’s not particularly helpful for licensing experts, although since the Unwired ruling many may now be looking much more closely at patent assertion in Europe rather than the US – especially after what Judge Robart said yesterday!