1. Dr Christopher Stothers Developments in the UK case law
9th GRUR Int./JIPLP Joint Seminar, Duesseldorf
28 November 2018

2. Overview
Confidentiality
Trolls and FRAND
Non-Discrimination
Timing

3. Can the other side see my documents?
Confidentiality
Can the other side see my documents?
TQ Delta v Zyxel Communications [2018] EWHC 1515 (Ch)
Patents declared essential to ITU Recommendations on DSL
Disclosure of licence agreements entered into by TQ Delta and predecessor (Aware) ordered prior to service of statements of case
Disclosure to external lawyers only would be incompatible with right to a fair hearing under Art. 6 ECHR, principles of natural justice and obligations of lawyers to share information with their clients
NB Trial listed for January 2019

4. Can the world see my documents?
Confidentiality
Can the world see my documents?
Unwired Planet v Huawei [2017] EWHC 3083 (Pat)
Principle that justice should be done in public means redactions from judgments will be “kept to an absolute minimum” and claims to confidentiality must be “justified with cogent evidence”
Original judgment: [2017] EWHC 705 (Pat)
Original redacted judgment: [2017] EWHC 711 (Pat)
Final (less) redacted judgment [2017] EWHC 2988 (Pat)
Redactions sought in 130 of c.800 paragraphs
Majority granted but some reduced by Court

5. Beware: Court is not there to redact for you
Confidentiality
Beware: Court is not there to redact for you

6. Troll One Ring to rule them all, One Ring to find them,
One Ring to bring them all, and in the darkness bind them

7. Or Gollum? One FRAND to rule them all, One FRAND to find them,
One FRAND to bring them all, and in the darkness bind them

8. Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
“One FRAND”?
Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
164. In my judgment the economist’s view of FRAND terms as a single thing for a given set of circumstances is also applicable to the question of whether terms are FRAND within the meaning of the ETSI FRAND undertaking. I find that for a given set of circumstances there will only be one set of FRAND terms and only one FRAND rate.
(avoids the Vringo problem - if both sides make FRAND offers, how to decide?)

9. Unwired Planet v Huawei [2018] EWCA Civ 2344
Or not “One FRAND”?
Unwired Planet v Huawei [2018] EWCA Civ 2344
121. We have come to a different conclusion from that of the judge on the question whether there can be only one set of FRAND terms for any given set of circumstances…In our judgment it is unreal to suggest that two parties, acting fairly and reasonably, will necessarily arrive at precisely the same set of licence terms as two other parties, also acting fairly and reasonably and face with the same set of circumstances. To the contrary, the reality is that a number of sets of terms may all be fair and reasonable in a given set of circumstances.
BUT
125. [The Vringo problem] is more of a theoretical problem than a real one…the tribunal will normally declare one set of terms as FRAND…If, however, the outcome of the proceedings is that two different sets of terms are each found to be FRAND then in our judgment the SEP owner will satisfy its obligation to ETSI if it offers either one of them…

11. Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
Non-Discrimination
Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
177. …For want of a better expression, I will distinguish between a “hard-edged” and a “general” non-discrimination obligation. The general non-discrimination obligation is…part of an overall assessment of the inter-related concepts making up FRAND by which one can derive a royalty rate applicable as a benchmark…The hard- edged non-discrimination obligation, to the extent it exists, is a distinct factor capable of applying to reduce a royalty rate (or adjust any licence term in any way) which would otherwise have been regarded as FRAND… [=MFN clause]
481. Huawei submit that pursuant to the non-discrimination limb of FRAND Unwired Planet are obliged to offer the same or similar rates to Huawei as they have extended to Samsung in the 2016 Unwired Planet-Samsung licence.

12. Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
Non-Discrimination
Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
486. …Unwired Planet do not accept the hard-edged point put by Huawei…because Huawei are not “similarly situated” to Samsung; the Samsung licence is not an equivalent or comparable licence to the Huawei licence being considered; and, even if those two points are wrong, the non-discrimination limb of FRAND contains the same or an analogous aspect as the requirement in competition law only prohibits conducts which is capable of distorting competition.
488. I will say now that I find Samsung and Huawei are “similarly situated”…
493. …I find that for the purposes of considering hard edged non- discrimination, the Unwired Planet-Samsung 2016 licence is an equivalent or comparable transaction to the putative licence under consideration in this case…

13. Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
Non-Discrimination
Unwired Planet v Huawei (Rev 2) [2017] EWHC 2988 (Pat)
501. In my judgment the ETSI FRAND undertaking should not be interpreted so as to introduce the kind of hard-edged non- discrimination obligation supported by Huawei without also including consideration of the distortion of competition. Competition law does not seek to prohibit different prices being charged to different customers. An important aspect of the way that result is assured in competition law is by the requirement that only terms which are sufficiently dissimilar to distort competition are prohibited…
521. So I reject Huawei’s hard-edged non-discrimination point…

14. Unwired Planet v Huawei [2018] EWCA Civ 2344
Non-Discrimination
Unwired Planet v Huawei [2018] EWCA Civ 2344
194. Both sides’ submissions on this issue were extremely cogent and presented with great skill. In the end we prefer UP’s submissions.
199. It is difficult to identify any underlying purpose which would support the hard-edged discrimination rule contended for by Huawei. Its effect is akin to the insertion of the rejected “most favoured licensee” clause in the FRAND undertaking…
206. We recognise that, in the development of this important area, it is desirable that an internationally accepted approach should ultimately emerge. However there is as yet only a handful of decisions which attempt to grapple with these issues. It would be wrong, in our judgment, to harmonise on a first-to-decide basis.

15. Unwired Planet v Huawei
Timing
Unwired Planet v Huawei
Date
Event
March 2014
Case filed vs Huawei, Samsung, Google
Summer 2015
Google settled
October 2015
Technical Trial A (EP ‘744, valid + infringed)
December 2015
Technical Trial B (EP ‘287/’514, infringed but invalid)
February 2016
Technical Trial C (EP ‘818, valid + infringed)
c.April 2016
Technical Trials D + E postponed
July 2016
Samsung settled
Oct-Dec 2016
Non-technical trial (judgment April 2017)
April 2017
Appeal on Trial A rejected (B, C stood out July 2018)
October 2018
Non-technical appeal rejected
[•]

16. Conversant v Huawei & ZTE
Timing
Conversant v Huawei & ZTE
Date
Event
July 2017
Case filed vs Huawei, ZTE
April 2018
Jurisdiction challenge rejected
December 2018
Jurisdiction appeal to be heard
March 2019
Technical Trial A
June 2019
Technical Trial B
November 2019
Non-technical trial
[•]

17. TQ Delta v Zyxel [2017] EWHC 3305 (Pat)
Timing
TQ Delta v Zyxel [2017] EWHC 3305 (Pat)
It has become the practice in this jurisdiction that FRAND trials should come after technical trials. It is a practice that may need to be reviewed following [Huawei v ZTE and Unwired Planet]. If the real dispute between the parties is the issue of a global licence for a global portfolio, it is worth considering whether it makes sense to allow one or more technical trials to take place, as a peg on which to hang the non-technical trial, or whether it would be better case management for the non-technical trial to come first. If the FRAND trial is heard first, and a defendant wishes to say that it does not need to take any licence under any of the patents, the defendant is not compelled to take the licence, and may take the chance that it will subsequently be injuncted in infringement proceedings. But this is not the occasion to rule upon this question, as the parties have accepted that the technical trial should come first.

18. Vodafone v Intellectual Ventures [2017] IEHC 160
Timing
Vodafone v Intellectual Ventures [2017] IEHC 160
IV sued Vodafone for infringement of EP ‘174 in Duesseldorf in September 2015
This was one of seven sets of proceedings brought then, with a further four being started in January 2016
Vodafone then brought FRAND proceedings in Ireland
IV applied to have the Irish proceedings declined or stayed in September 2016
if anything IV might perhaps be forgiven were it to allege, rightly or wrongly, that it is the [Irish] proceedings that represent the first- known deployment of an “Irish torpedo” aimed at frustrating the pre-existing German Proceedings
The Irish court refused to decline but agreed to stay in March 2017

19. Take-aways Confidentiality will be protected
…but only if proven and requested!
There is not only “One FRAND”
…but does it really matter?
Non-discrimination is “general” not “hard-edged”
…providing an incentive to “do a deal”
German infringement proceedings remain dangerous for implementers
…but other courts remain slower and unwilling to torpedo them
And what about NEPS?

20. Thank You! Any Questions?
DS19854