On 26 August 2020, the UK Supreme Court delivered the landmark judgment on Unwired Planet v Huawei and Conversant v Huawei and ZTE, [2020] UKSC 37.

The dispute arose in 2014, when Unwired Planet sued Huawei and other smartphone manufacturers for patent infringement; in 2017, Conversant filed similar lawsuits against Huawei and ZTE. Some of these patents are essential to the 2G, 3G and 4G standards, set by the ETSI ( European Telecommunications Standards Institute) and are subject to some ETSI policies requiring holders of ETSI-standards indispensable patents (so called “standard essential patents”, “SEP”) to grant FRAND licenses (“fair, reasonable and non-discriminatory”). Claimant proposed to grant a worldwide license, but Huawei only wanted a UK – only license. The UK Supreme Court ruled that – as far as large multinational companies are concerned – FRAND licenses have to be global. Then, the Supreme Court determined a global FRAND and stated that, if Huawei refuses to pay the FRAND global licence rate, the Court will deliver an injunction restraining respondent’s sale of infringing products in the UK.

As far as private international law is concerned, the Supreme Court, absent the parties’ agreement, declared its jurisdiction to grant a global licence for dispute related to the infringement of the UK patent and to issue an injunction in case of global licence rate non-compliance.

First, the Court ruled that the defendant infringed the valid UK patents. Then, the Court stated that remedy to the infringement of SEPs can be found in the ETSI policy and industry practice. These policies are applied according to the contract principle. The ETSI policy creates a contractual arrangement between SEP holders and implementers, aimed at granting global licences for SEP portfolios. Last, the Judges state that the ETSI policies will allow the Court to issue injunction if the implementer refuses to pay the global licence rate. This is a rather controversial issue, as one could argue that the ETSI goal is to prohibit injunction for SEPs.

P.B.

The judgement can be read here: https://www.supremecourt.uk/cases/uksc-2018-0214.html