Court of Appeal reaffirms UK as SEP litigation hotspot in upholding Birss J in Unwired Planet

How surprised were you about the Court of Appeal's decision?

For those of you who haven't been eagerly awaiting today's decision from the Court of Appeal in the Unwired Planet v Huawei appeal, let the AmeriKat surprise you with this bit of news - the Court of Appeal has upheld Birss J's decision from last April.  In dismissing all three grounds of appeal, the Court of Appeal in Unwired Planet v Huawei [2018] EWCA Civ 2344  (with Lord Kitchin giving the lead judgment) held that:

1.  Birss J was entitled to find that, in all the circumstances, only a global licence would be FRAND (see [129]).

2.  Huawei's appeal on the non-discriminatory element of FRAND failed.  Huawei argued that the licence offered to them did not meet the ND criteria because the global royalty rate offered to them was much higher than that contained in global licence granted to Samsung, but the Court of Appeal held that the offer was non-discriminatory (see [207]);

3.  Huawei's appeal on whether Unwired Planet abused its dominant position in bringing these proceedings prematurely, failed.  The Court of Appeal saw no basis for interfering with the judge's finding (see [284]); and

4.  Finally, there was no other basis for injunctive relief to be refused.  At [286] -[290], the Court of Appeal held as follows:

"It only remains to consider whether, as Huawei has also contended, the judge ought to have refused an injunction on the basis that it would be disproportionate or in some way other way inequitable. We think there is nothing in this point. The judge has found and in our view was entitled to find, that a global licence was FRAND and that UP had not engaged in any abusive behaviour. Huawei had infringed two SEPs and UP was entitled to an injunction to restrain further infringement unless Huawei took the licence he had settled. 

It was suggested that UP had never properly articulated a case that only a global licence would be FRAND. We reject that suggestion. The references with which we have been provided show that it was UP's primary case that it was only ever obliged to offer a global licence and that this is a matter of which Huawei was well aware. 

It was also contended that UP's offers of a licence diverged so far from a FRAND licence that this should in some way bar its claim for injunctive relief. There is nothing in this point. There was no basis for contending that UP's offers were in any way improper or unusual or impacted adversely upon the progress of the negotiations. 

Finally, it was suggested that it would be inequitable to grant an injunction which would effectively compel Huawei to take a global licence having regard to the nature and geographical spread of its business and the ongoing litigation in Germany and China. We have already addressed the substance of this point in considering the first ground of appeal. UP has established that two of its SEPs have been infringed. The judge has settled a FRAND licence. Huawei can accept that licence and pursue the litigation on foot in other jurisdictions if it wishes to do so. 

It follows that ground 3 must be rejected."

There is a lot in this decision to digest.  The IPKat will be back with further analysis.   But, what is clear in light of today's decision, SEP owners will continue to use the English courts for their SEP litigation and FRAND determinations.   The global FRAND race continues, just in time for Brexit.....