Warning: May Contain SEPs

UK (F)RAND Proceedings

This page gives a brief summary of current UK standard essential patent proceedings. To be updated whenever I have the time and inclination. I will try to link to handed-down judgments and some relevant coverage.

[Ed: Last updates added on 30 April 2020]

Unwired Planet v Huawei 

There are split opinions on how the Supreme Court saw the joined appeals in UP v Huawei and Conversant v Huawei. Some wishful assessments by overseas lawyers perceived a reticence on the part of the UK court to intervene at a global level. I think that analysis fails to account for the court’s need to answer the question before it, a question shaped by the evidence and argument that took place in the lower courts.

For a thorough run-down of the Supreme Court proceedings it is worth reading the summary produced by the team at Kirkland & Ellis: Day 1, Day 2, Day 3, Day 4.

It is of note that some other parties have issued proceedings in expectation of a positive result for UP, but are awaiting judgment before serving; a smart protective position given the potential for change on retrospective royalties.

UP and Huawei are now reported as having settled the dispute, but even that shouldn’t stop the Supreme Court from handing down judgment at some point this year. After all, the Conversant v Huawei appeal still needs to be resolved.

Conversant v Huawei & ZTE

Mr Justice Henry Carr’s decision to grant jurisdiction went on appeal (EPLaw) and was upheld by the Court of Appeal (Judgment). The Supreme Court’s judgment on the issue will be handed down in conjunction with the UP v Huawei judgment.

The judgment from the first technical trial is online: EP (UK) 1797659 was found invalid for added matter (bailii). The judgment for the second technical trial is also now online, with a win for Conversant, whose patent was found to be valid and essential. Slightly more detail in my blog post here, and of course on bailli.

The FRAND trial in this case has now been adjourned by reason of the Sars-Cov-2 pandemic. Perhaps this means we can expect a renewed application for disclosure of relevant licenses?

Philips v Asus & HTC

The FRAND trial (now known as Trial D) is due to last 5 weeks and is scheduled for later this year.

ASUS unsuccessfully tried to escape the FRAND trial by relying on a waiver of their right to a FRAND licence, similarly to ZyXEL did in their proceedings against TQ Delta, below. See the 17 January 2020 judgment of Marcus Smith J on Westlaw.

HTC originally pleaded a pass-through license via Qualcomm (/ the benefit of an undertaking not to sue) to the patents asserted by Philips, but this argument was unsuccessful at first instance and on appeal. The technical trials have all now taken place at first instance:

The judgment in each case was also upheld on appeal: [2019] EWCA Civ 2230

TQ Delta v Zyxel

The RAND trial in September was vacated following ZyXEL’s successful reliance on a waiver of its right to a licence on RAND terms. See the Judgment of the Court of Appeal here, and coverage by the IPKat here.

IPCom v Vodafone

IPCom requested an expedited trial in relation to one 3G SEP and one 4G SEP. The first technical trial was heard by recorder Douglas Campbell QC, sitting as a Judge of the Patents Court.

The decision was handed down on 28 January 2020 and is available on Westlaw, [2020] EWHC 132 (Pat). The decision looks an interesting one, in particular because the patent is related to the ‘ 100a’ patent previously litigated in the UK in Nokia v IPCom [2011] EWHC 1470 (Pat) , Nokia v IPCom [2012] EWCA Civ 567 ; and IPCom v HTC [2015] EWHC 1034 (Pat). The Court also had to consider two unusual defences: crown use, and de minimis use. I have a bit more on this decision in my March 2020 patent cases roundup.

I originally guessed that any FRAND trial would not now take place until after the Supreme Court’s UP decision is available, but all bets are now off.

PanOptis v Apple

PanOptis have sued Apple in respect of a number of SEPs. See the case management decision of Mr Justice Morgan here (WestLaw).

The arrangement of trials is as follows:

5. Following the first trial there is to be a trial in relation to technical issues in respect of two patents followed by a third trial, this time I think dealing with three patents. That covers six altogether and it is envisaged that the seventh patent be dealt with at a trial to be stood over, effectively put into suspense.

6.  Following the technical trials there is to be a trial of issues in relation to the FRAND issues between the parties. In order to prepare for these trials, there is to be a case management conference, say the draft directions, in the month of September 2019, with a time estimate of one day.

Apple also launched a jurisdiction challenge: bailli.

Vestel v HEVC Advance 

This case is of a somewhat different character to those above. Vestel are suing the HEVC patent pool HEVC advance on a strict competition law basis, with no accompanying attempt to invalidate any of the pool’s patents. Bristows say:

“Vestel claims that offers made by both HEVC Advance and the representative licensor constitute excessive pricing, contrary to Article 102 TFEU. Its primary basis for this claim is that another patent pool covering the same standard, MPEG LA, is said to contain a higher number of declared SEPs while offering licences at a lower royalty rate than HEVC. Vestel also claims that some 1,581 SEPs in the HEVC pool are also in the MEPG pool, to which Vestel has already taken a licence. Vestel has made a counter-offer to HEVC Advance which it says takes into account the lower rates in the MPEG LA pool and the overlapping patents.”

Philips and HEVC Advance sought a declaration that the Court had no jurisdiction over the claims against them. The judgment from that hearing is now available on Bailii. The Court concluded that none of the jurisdictional gateways had been satisfied, and that therefore the Court had no jurisdiction to hear the claim.

Sisvel v Archos et al.

These proceedings are now underway, however at least the Archos defendants have now settled the proceedings.

Interdigital v Lenovo

Interdigital (link) are pursuing Lenovo in a new global FRAND fight. the technology on the table is 4G. Interdigital are seeking determination of a global FRAND licence in the UK Courts, suing on 4 EPs. The Interdigital press release states that the following four patents from the Interdigital portfolio are in issue:

European Patent (UK) 2 363 008 – Enables the efficient control of carrier aggregation in 4G (LTE). In advanced mobile phones, carrier aggregation is key to achieving high data rates.

European Patent (UK) 2 557 714 – Supports the use of multiple antennae transmissions in 4G (LTE). The patent enables the use of flexible levels of error protection for reporting by the handset, increasing the reliability of the signaling.

European Patent (UK) 2 485 558 – Allows mobile phone users quick and efficient access to 4G (LTE) networks. One of the main technological challenges of developing LTE networks was efficient bandwidth usage for various traffic types such as VoIP, FTP and HTTP. This patent relates to inventions for quickly and efficiently requesting shared uplink resources — for example, reducing lag when requesting a webpage on a smartphone on LTE networks.

European Patent (UK) 2 421 318 – Decreases latency during HSUPA transmission by eliminating certain scenarios in HSUPA where scheduling requests may be blocked. A blocked scheduling request may prevent a smartphone from sending data. 

Image Credits: Image by enriquelopezgarre from Pixabay