Unwired Planet International Ltd v Huawei Technologies Co. Ltd & Anor (Rev 2)

Unwired Planet International Ltd v Huawei Technologies Co. Ltd & Anor (Rev 2)

The court held that Unwired Planet's FRAND undertaking is enforceable, that only one set of FRAND terms exists for the circumstances, and that a worldwide licence is FRAND and Unwired Planet is entitled to insist on it. The appropriate FRAND rates were determined based on comparable licences and patent counting, with adjustments. Unwired Planet did not abuse a dominant position by its conduct, and an injunction should be granted unless Huawei enters into the settled worldwide FRAND licence. None of the parties' prior offers were FRAND.

Parties
Claimant: Unwired Planet International Ltd; First Defendant: Huawei Technologies Co. Ltd; Second Defendant: Huawei Technologies (UK) Co. Ltd; Tenth Party: Unwired Planet LLC
Jurisdiction
England and Wales
Judgment Date
30 November 2017
Procedural Posture
Patent Infringement and FRAND Licensing Dispute / Final Judgment After Trial on Non Technical (frand/competition Law/remedies) Issues
Outcome
Judgment for the claimant. Unwired Planet is entitled to an injunction unless Huawei enters into a worldwide FRAND licence on the terms settled by the court. None of the parties' prior offers were FRAND. No abuse of dominance was found.
Legal Topics
FRAND Licensing, Standard Essential Patents (seps), Abuse of Dominance (art 102 Tfeu), Patent Infringement, Injunctions, Royalty Rate Determination, Non Discrimination, Bundling/tying, Worldwide Vs National Licensing, Damages Assessment
Intellectual Property Competition Law Contract Law FRAND Licensing Standard Essential Patents (seps) Abuse of Dominance (art 102 Tfeu) Patent Infringement Injunctions +5 more

Case Brief

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Parties

Unwired Planet International Ltd

Claimant

Huawei Technologies Co. Ltd

First Defendant

Huawei Technologies (UK) Co. Ltd

Second Defendant

Unwired Planet LLC

Tenth Party

Procedural Posture

Patent Infringement and FRAND Licensing Dispute / Final Judgment After Trial on Non Technical (frand/competition Law/remedies) Issues

Legal Issues

  1. 1 What are the FRAND (Fair, Reasonable and Non-Discriminatory) terms for licensing Unwired Planet's SEPs to Huawei?
  2. 2 Is Unwired Planet entitled to insist on a worldwide licence or must it offer a UK-only licence?
  3. 3 Did Unwired Planet abuse a dominant position under Art 102 TFEU by its conduct (including bundling, excessive pricing, premature litigation)?

Ratio Decidendi

The court held that Unwired Planet's FRAND undertaking is enforceable, that only one set of FRAND terms exists for the circumstances, and that a worldwide licence is FRAND and Unwired Planet is entitled to insist on it. The appropriate FRAND rates were determined based on comparable licences and patent counting, with adjustments. Unwired Planet did not abuse a dominant position by its conduct, and an injunction should be granted unless Huawei enters into the settled worldwide FRAND licence. None of the parties' prior offers were FRAND.

Court Disposition

Judgment for the claimant. Unwired Planet is entitled to an injunction unless Huawei enters into a worldwide FRAND licence on the terms settled by the court. None of the parties' prior offers were FRAND. No abuse of dominance was found.

Orders

  • Unwired Planet to provide a worldwide FRAND licence to Huawei on the terms and rates set by the court.
  • Injunction to be granted against Huawei for infringement of valid SEPs unless Huawei enters into the FRAND licence.