Unwired Planet v Huawei [2018] EWCA Civ 2344

23 October 2018

Andrew Lykiardopoulos QC, alongside James Segan of Blackstone Chambers, appeared for the Appellants, Huawei. Adrian Speck QCIsabel Jamal and Tom Jones, alongside Sarah Ford QC of Brick Court Chambers, appeared for the Respondents, Unwired Planet.

The appeal was from the decision of Birss J in which he had determined FRAND terms for a global licence, having found that a global licence was the appropriate FRAND licence for Unwired Planet’s SEP portfolio and that it was appropriate for the court to determine FRAND terms. Huawei contended that Birss J was wrong to hold that a global licence would be FRAND. It argued that setting global FRAND terms based on national findings of infringement was unjust, particularly given that some of the corresponding SEPs were the subject of ongoing patent litigation in other jurisdictions.

Huawei further argued that, in order to be non-discriminatory, the FRAND rates ought to have been the same as those offered to Samsung, a similarly-situated licensee. Finally, Huawei contended that, in light of the CJEU’s judgment in Huawei v ZTE, Unwired Planet had failed to offer a licence prior to bringing proceedings for an injunction and had therefore abused its dominant position in contravention of Article 102 TFEU.Huawei’s appeal was dismissed. The Court of Appeal upheld the finding that a willing licensor and willing licensee in the position of the parties would negotiate a global licence. The Court found that Birss J was wrong to conclude that only one set of terms can be FRAND in any given circumstances, but that this had not affected the overall conclusion at first instance.

The Court of Appeal further held that the non-discriminatory limb of FRAND is a general principle of non-discrimination. There is no reason why an SEP owner cannot license at rates below the FRAND benchmark and it was therefore irrelevant that Samsung had been offered lower rates. The Court of Appeal upheld the finding that Unwired Planet held a dominant market position but held that the steps set out by the CJEU in Huawei v ZTE were a safe harbour and not a necessary requirement; thus the Court held that Unwired Planet had not abused its dominant position by failing to offer a licence prior to bringing proceedings.

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