UK Supreme Court Affirms the Right of Conversant Wireless to Seek a Worldwide Portfolio FRAND License in its Case Against Huawei and ZTE
OTTAWA, ON, Aug. 26, 2020 /CNW/ - Conversant Wireless Licensing S.à r.l., a subsidiary of Conversant Intellectual Property Management Inc., announced today it has won a landmark judgment of the United Kingdom Supreme Court that will have significant implications worldwide for standard-essential-patent (SEP) licensing, especially in the area of telecommunications. The unanimous judgment affirmed both the Court of Appeal and the Patents Court in permitting Conversant Wireless to seek a "FRAND injunction" in its patent-infringement case against Huawei and ZTE. Under a FRAND injunction, Huawei and ZTE, having been found to infringe a valid SEP of Conversant Wireless, will need to enter into a worldwide portfolio license with Conversant on terms that the UK Patents Court will determine to be fair, reasonable, and non-discriminatory (FRAND); should either company fail to do so, then it will risk being subject to an injunction restraining its further infringing activities in the UK.
The practical effect of today's ruling is that implementers cannot insist that SEP holders like Conversant Wireless prove their patents in every jurisdiction in the world, something that would be both practically and economically prohibitive, especially for smaller companies such as Conversant. Otherwise, as the Supreme Court observed, "implementers who were infringing the patents would have an incentive to continue infringing".
"We are very pleased with the judgment today," said Boris Teksler, Conversant's CEO. "The UK Supreme Court decision confirms the entire well-reasoned, deeply analyzed jurisprudence that has emerged in the UK courts. It confirms Conversant Wireless' approach, that as a holder of cellular standard-essential patents, we can seek proper value for our patents without having to resort to what the UK courts themselves called the 'madness' of country-by-country licensing and related litigation. This helps level the playing field when small companies are trying to license SEP portfolios to global giants with seemingly limitless litigation resources."
In an earlier trial in the case, the UK Patents Court found that claims of two Conversant Wireless LTE SEPs granted by the European Patent Office are essential to the LTE standard. As such, the patents are infringed in the UK by the sales of LTE handsets of Huawei and ZTE. The court also found that the infringed claims are valid. (These finding are on appeal and set to be heard in November.) As a consequence of that determination on the two LTE patents, Conversant Wireless now is asking the court to declare that Conversant has made a FRAND offer to license its SEP portfolio to each defendant, and to determine the FRAND terms for such a license to each defendant. The FRAND trial is set to begin at the end of January 2021.
The appeal in Conversant Wireless' case against Huawei and ZTE was consolidated with an appeal from an earlier case filed by Unwired Planet against Huawei that presented similar issues. The combined appeal is Unwired Planet v. Huawei, Huawei v Conversant Wireless, and ZTE v. Conversant Wireless, No. [2019] UKSC 35 (UK Supreme Court).
Conversant Wireless was represented before the Supreme Court by a barrister team of Adrian Speck QC, Isabel Jamal, and Tom Jones from 8 New Square, and Sarah Ford QC and Colin West from Brick Court Chambers, and a team from the law firm EIP Europe comprised of Gary Moss, Andrew Sharples, Tom Brazier, Angela Jack, Catherine Howell, Owen Waugh, and Hannah Elam.
The Supreme Court's judgment can be found here.
About Conversant
Conversant Intellectual Property Management Inc. is a global intellectual property management company known for its principled approach to patent licensing. With a portfolio of thousands of patents and patent applications under management, Conversant has special expertise in semiconductors and communications technology. For more information, please visit www.conversantip.com. Conversant Wireless Licensing S.à r.l. is a subsidiary of Conversant Intellectual Property Management Inc. that is focused on licensing a major portfolio of about 900 wireless patents and patent applications covering technologies used in a wide range of mobile communications devices and services. The Conversant Wireless portfolio includes many declared SEPs that Conversant seeks to license on FRAND terms. For more information, please visit www.conversant-wireless.com/.
SOURCE Conversant Wireless Licensing S.à r.l.
For further information: Media Inquiries, Conversant Intellectual Property Management Inc., Scott Burt, +1-469-863-2476, [email protected]
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