On September 23, 2020, John Carlin was featured in a Westlaw Today Q&A on Unwired Planet v Huawei, standard-essential patents (SEP), and Fair, Reasonable and Non-Discriminatory (FRAND) licensing. The following is an excerpt:
You mention Unwired Planet International Ltd, v. Huawei Technologies Co., 2020 UKSC 37 (Aug. 26, 2020), a case that went before the U.K. Supreme Court. What did that court decide and why was the decision important?
JC: The main issue was whether U.K. courts have the power to enjoin a defendant from selling in the U.K. products that have been found to infringe a U.K. SEP unless the defendant agrees to enter a global license to a multinational patent portfolio on terms the U.K. court determines to be FRAND.
The question was important because patents are territorial in nature. National courts cannot adjudicate or award damages for infringement of foreign patents, and it is generally not practical for an owner of a multinational patent portfolio to seek a comprehensive award of damages against a global infringer through separate proceedings in all national courts where an SEP has issued. This means that only a portion of an infringer’s potential damages liability can be put directly at issue and awarded in an individual national action. However, if the U.K. court answered these questions in the affirmative, the potential stakes of U.K. SEP litigation would increase significantly. Once found to infringe a U.K. SEP, a defendant would not have the option of taking a U.K.-only license or paying U.K. damages. Rather, their only option to avoid an injunction in the U.K. would be to pay worldwide royalties on whatever basis the U.K. court had determined to be FRAND.