Unwired Planet International Limited v Huawei Technologies Co. Limited, Samsung Electonics Co. Limited, Google Inc and others, UK, High Court (Patents Court), Birss J, 24 April 2015

Unwired Planet has sued Huawei, Samsung and Google in the UK Patent’s Court, alleging that the defendants have infringed five patents said by Unwired Planet to be essential to 2G, 3G and 4G standards, and a further patent that is not alleged to be essential to any standard. As well as traditional infringement and validity issues, the dispute raised complex questions of competition law. The case has been divided up into five “technical” trials, due to take place between October 2015 and June 2016, and one “non-technical” trial due to start in October 2016. The latter will consider matters of FRAND licensing, competition law, obligations under the ETSI IPR Policy and whether injunctions may be granted, and is now scheduled to last for 13 weeks.

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This judgment concerned an application by Huawei to strike out parts of Unwired Planet’s case relating to FRAND obligations, more specifically concerning whether portfolio licences that had been openly offered by Huawei could be said to comply with the ETSI IPR Policy, or whether Huawei was obliged to offer single patent licences is requested, or a licence applicable to all standards essential patents that were essential either to a particular standard or to a particular territory. Unwired Planet opposed Huawei’s application and sought permission to amend its Particulars of Claim to include an assertion that the two open licence proposals that it had made were FRAND and, secondly, to seek a declaration from the UK court as to the “terms or range of terms that would be FRAND for a licence to use (i) the claimant’s portfolio of Standard Essential Patents and/or (ii) the claimant’s portfolio of patents.”

The Court refused Huawei’s application, holding that this was not something that was suitable for summary determination but, rather, that it needed to be determined at trial. The licence offers made by Huawei could not be viewed in isolation but needed to be assessed in the wider factual context and in the light of competition law considerations. Unwired Planet was permitted to amend its Particulars of Claim to assert that the two open licensing offers that had been made were FRAND but subject to the condition that Unwired Planet confirmed whether it was prepared to offer the defendants a territorial licence for just the five patents in the proceedings that were alleged to be standards essential and, if so, to state what the general terms of such a licence would be. Unwired Planet’s application for a declaration of “the terms or range of terms that would be FRAND” was refused: the declaration sought was completely open-ended and, without the consent of the parties (and the defendants did not consent), the Court had no jurisdiction to grant such a declaration.

Read the decision here.

Headnote: Graham Burnett-Hall, Marks&Clerk Solicitors