Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor (Rev 1) [2018] EWCA Civ 2344 (23 October 2018)

Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor (Rev 1) [2018] EWCA Civ 2344 (23 October 2018)

A UK court may, in appropriate circumstances, require an implementer to enter into a global FRAND licence as a condition for relief for infringement of UK SEPs, where industry practice and efficiency considerations support global licensing. The non-discrimination limb of FRAND does not require identical rates for all licensees but prohibits discrimination between similarly situated implementers. Unwired Planet's conduct did not amount to an abuse of dominant position or breach Article 102 TFEU so as to preclude injunctive relief.

Citation
[2018] EWCA Civ 2344
Parties
Claimant/respondent: Unwired Planet International Limited; Tenth Party/respondent: Unwired Planet LLC; Defendant/appellant: Huawei Technologies Co. Limited; Defendant/appellant: Huawei Technologies (UK) Co Limited
Jurisdiction
England and Wales
Judgment Date
23 October 2018
Procedural Posture
Appeal / Court of Appeal Judgment on Appeal From First Instance Decision in Patents Court
Outcome
Appeal dismissed
Legal Topics
Standard Essential Patents (seps), FRAND Licensing, Abuse of Dominant Position, Patent Infringement, Injunctions, Global Portfolio Licensing
Intellectual Property Competition Law Telecommunications Law Standard Essential Patents (seps) FRAND Licensing Abuse of Dominant Position Patent Infringement Injunctions +1 more

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Parties

Unwired Planet International Limited

Claimant/respondent

Unwired Planet LLC

Tenth Party/respondent

Huawei Technologies Co. Limited

Defendant/appellant

Huawei Technologies (UK) Co Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment on Appeal From First Instance Decision in Patents Court

Legal Issues

  1. 1 Whether a UK court can require a global FRAND licence as a condition for relief for infringement of UK SEPs
  2. 2 Whether the non-discrimination limb of FRAND required Huawei to be offered the same rates as Samsung
  3. 3 Whether Unwired Planet's conduct in bringing proceedings without prior notice or offer breached Article 102 TFEU and precluded injunctive relief

Ratio Decidendi

A UK court may, in appropriate circumstances, require an implementer to enter into a global FRAND licence as a condition for relief for infringement of UK SEPs, where industry practice and efficiency considerations support global licensing. The non-discrimination limb of FRAND does not require identical rates for all licensees but prohibits discrimination between similarly situated implementers. Unwired Planet's conduct did not amount to an abuse of dominant position or breach Article 102 TFEU so as to preclude injunctive relief.

Court Disposition

Appeal dismissed

Orders

  • The appeal by Huawei is dismissed; the order of Birss J is upheld, including the requirement for a global FRAND licence as a condition for relief.