Webinar on The Global Implications of Unwired Planet in Patent SEP/FRAND Litigation

Date: Tuesday, September 8, 2020

Time: 12:00 p.m. EDT

Duration: 90 minutes

In this webinar on the Global Implications of Unwired Planet on SEP/FRAND litigation, we will discuss the potential impact of the U.K. Supreme Court’s ruling this week in Unwired Planet v. Huawei (for full opinion, click here) that English courts have the power to set global licensing rates for multinational patent portfolios under European telecom standards. Additional topics will include:

  • Non-discrimination. The Court held that the “non-discriminatory” part of the FRAND undertaking entails making available a single royalty price list to all market participants based on the market value of the patent portfolio, without adjustment for the characteristics of individual licensees. However, the Court held there is no requirement for SEP owners to grant licenses on terms equivalent to the most favourable license terms to all similarly situated licensees. 
  • The suitable forum issue. The Court rejected a SEP-defendant’s forum nonconveniens argument that the Chinese courts would be a more suitable forum, holding that the Chinese courts do not currently have the jurisdiction to determine the terms of a global FRAND license, at least, without all parties’ agreement that they should do so. 
  • The competition issue. The Court rejected the argument that the SEP-holder failed to comply with the guidance given by the Court of Justice of the European Union in Huawei v. ZTE, since it did not make a FRAND license offer before issuing proceedings for injunctive relief, and thus its claim for injunctive relief should be regarded as an abuse of its dominant position. The Court held there is no mandatory requirement to follow the protocol set out in Huawei v. ZTE (other than the notice provision). 
  • The availability of injunctive relief. The Court affirmed the injunctive relief granted below, rejecting the argument that the SEP-holder could use the threat of an injunction as a means of charging exorbitant fees, since they cannot enforce their rights unless they have offered to license their SEPs on terms which the court is satisfied are FRAND. The Court further held that an award of damages would not be an adequate substitute for an injunction.

This ruling comes at the convergence of two key Sedona Working Group 9 initiatives: The Sedona Conference Framework for Analysis of Standard-Essential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Licensing and Royalty Issues (Stage Two), Public Comment Version, in November 2019 (click here) and the imminent launch of a drafting team to produce a follow-on Sedona WG9 “Global Edition” to provide a similar framework for analysis for SEP/FRAND patent litigation venues around the world.

The webinar is scheduled for 90 minutes, during which time you may text your questions to the panel, who will endeavor to address all that time allows.

Moderator

Kirkland & Ellis International LLP

London, United Kingdom

Panelists

Jones Day

Hong Kong

Crowell & Moring LLP

Washington, DC, USA

Cravath, Swaine & Moore LLP

New York City, NY, USA

Hoyng Rokh Monegier

Paris, France

WilmerHale

London, United Kingdom