Join us for an online webinar to examine the recent Unwired Planet decision of the UK Supreme Court.
A link to access the online webinar will provided with confirmation of registration.
In the long awaited decision in Unwired Planet v Huawei and Conversant v Huawei and ZTE, the UK Supreme Court held that:
* Jurisdiction: The English courts have jurisdiction and may properly exercise a power to grant an injunction to restrain the infringement of a UK patent that is a Standards Essential Patent unless the implementer of the patented invention enters into a global licence of a multi-national patent portfolio; and, without both parties’ agreement, to determine the royalty rates and other terms of such a licence.
* Forum conveniens: In the Conversant case, Huawei and ZTE’s argument that China was a more suitable forum for hearing the dispute than England was correctly refused by the Patents Court and the Court of Appeal.
* Non-discrimination: The ETSI FRAND undertaking imposes a single, composite obligation on Standards Essential Patent owners, not three distinct ‘fair’, ‘reasonable’ and ‘non-discriminatory’ obligations. On the facts of the Unwired case, Unwired’s licensing offer to Huawei was not discriminatory.
* Competition law: Unwired’s claim for an injunction was not an abuse of its dominant position under European law. Unwired had complied with the guidance given by the Court of Justice of the European Union in Huawei v ZTE. On the facts, what mattered was that Unwired had shown itself to be willing to grant a licence to Huawei on whatever terms the court decided were FRAND.
* Damages in lieu of the injunction: There was no basis on which the Supreme Court could properly substitute an award of damages for the injunction granted by the Patents Court and upheld by the Court of Appeal.
Our speakers, who were involved in the case, will discuss the decision and its implications for patent litigation.
Pete Damerell is a Partner at Powell Gilbert LLP, a specialist Intellectual Property Law firm based in London. Pete advises on a wide range of contentious IP matters, but in particular has extensive experience in handling complex and high-value patent litigation across a diverse range of technologies before the UK courts. His cases are commonly international in nature and he often works with legal advisers from across Europe, North America and Japan, contributing to and often coordinating multi-jurisdictional patent litigation strategies. Pete has experience in advising telecoms companies in relation to patent and FRAND issues, having been involved in a number of leading UK cases in this sector, including Unwired Planet v Huawei, TCL v Ericsson and Vringo v ZTE. He is a Vice Chair of AIPPI’s Enforcement Standing Committee, and a member of the Licensing Executives Society and the European Patent Lawyers Association. He is recognised in IAM Patent 1000: The World’s Leading Patent Professionals and as a Next Generation Partner in Legal 500 for IP in London.
Tess Waldron is a Senior Associate at Powell Gilbert LLP, a specialist Intellectual Property Law firm based in London. Tess advises clients on a broad range of issues across the full spectrum of intellectual property rights, including patents. She has also represented consumer electronics companies in wider commercial disputes and negotiations including FRAND. She has experience of litigation in the High Court (involving both general commercial and intellectual property claims), Court of Appeal and Supreme Court, and has taken a lead role in successful mediations. She is a solicitor advocate and has represented clients in the High Court as an advocate. Tess has a particular interest in FRAND disputes, and has acted on a number of leading UK FRAND cases, including Unwired Planet v Huawei & Others and Vestel v HEVC Advance. Tess is a member of the European Patent Lawyers Association, AIPPI, the Competition Law Association and ChIPs.
The seminar will be hosted on behalf of AIPPI by Sarah Matheson, a partner of Allens. She advises in contentious and non-contentious intellectual property matters, specialising in infringement/validity litigation and licensing. She has advised on many aspects of intellectual property protection including: conducting litigation involving patent, copyright and trade mark infringement and challenges, passing off, misleading and deceptive conduct and misuse of confidential information, and advising on enforcement of intellectual property rights generally; drafting and negotiating agreements relating to ownership and exploitation of intellectual property rights; and conducting due diligence on, and advising on, the intellectual property aspects of commercial transactions. Sarah is the Past Reporter General of AIPPI. She is also a member of the Intellectual Property Society of Australia and New Zealand and the Licensing Executives Society of Australia and New Zealand. Sarah is noted for her particular expertise in patent infringement litigation, as well as breach of confidence and confidentiality cases. She is "focused on driving solutions rather than just litigating." – Chambers Asia Pacific 2020