Thursday, August 24, 2023

From Around the Blogs: FRAND News

1. Jonathan Ross published a post on EPLAW titled Nokia v. Oppo/FRAND Injunctions, 26July 2203, Mr. Justice Meade, Case No. [2023] EWHC 1912 (Pat).  The post references a recent decision in the ongoing U.K. litigation between Nokia and Oppo.  As described by Mr. Justice Meade, the “essential issue” in this particular proceeding is the following: “having lost on infringement of a SEP [in an earlier proceeding], Oppo would have to choose either to undertake to take a licence on the terms decided at Trial D, or to submit to an injunction on the UK SEP it infringes . . . . Oppo says that that does not apply in the light of the undertakings it has offered to take a licence on terms decided” in pending proceedings before the First Intermediate People’s Court of Chongqing, which apparently is willing to determine the terms of a global FRAND license.  Oppo “says that the undertakings . . . either mean that it is already licensed under the ETSI IPR Policy . . . or at least is a ‘Clause 6.1 Beneficiary’ pursuant to that Policy and therefore entitled to get a licence in due course and not liable to be injuncted” (para. 10).  The court rejects both arguments, concluding that (1) even though clause 6.1 creates a stipulation pour autrui, Oppo is not already licensed, because the terms of the license remain undetermined; and (2)  on the facts presented, Oppo’s commitment to abide by the terms set by the Chongqing court is not enough to make it a clause 6.1 beneficiary.

Florian Mueller has some observations on this decision here.

2. Igor Nikolic has posted a short paper on ssrn titled The Approach of English Courts in SEP Disputes: No Standalone Actions for Determination of Global FRAND Rates.  Here is the abstract:

In 2017, English courts set, for the first time, global fair, reasonable and non-discriminatory (FRAND) rates between parties in a standard-essential patent (SEP) dispute. This has, in the eyes of some experts, placed the UK as a global rate-setter, which does not afford the necessary consideration for the competences of other countries. However, such an interpretation is not entirely true. In fact, the UK’s approach is grounded in patent law and in the assessment of patent infringement and validity. The determination of global FRAND terms by UK courts only occurs at the remedy stage of a dispute. The process is the following: First, the court needs to find infringement of a UK patent. Second, the court must acknowledge the contractual obligation of the SEP owner to offer FRAND terms to the implementer. Third, if the court believes the commercial practice in the specific case consists of global portfolio licensing, it sets the terms within that scope. Fourth, only when the infringer rejects the court-determined FRAND terms, is it subject to an injunction, which only applies to the UK market. In other words, there are no standalone claims for global FRAND royalty determinations independent of patent litigation and findings of infringement and validity of SEPs.


This article will scrutinise the position of UK courts in deciding SEP disputes. In particular, it will analyse leading cases and the most recent developments in SEP litigation and will focus on how UK courts characterise SEP disputes and their interpretation of a FRAND commitment. It is hoped that a better understanding of the UK’s position will assist judges, lawyers, and policymakers in resolving SEP disputes in other countries.

3. Alex Baldwin published an article on Law360 titled Big Tech Voices Concern Over EU’s Essential Patent Plan.  The author quotes representatives of various big tach firms, including net licensors such as Qualcomm and net implementers Apple, as well as some patent attorneys.  He finds a degree of support for increased transparency but skepticism over the proposed nonbinding FRAND determination, as well as concerns over the proposed essentiality checks.

4. Rob Rodrigues, Tatiana Machado and Ana Carolina Barros published an article on IP Watchdog titled Brazil Becoming a Relevant Forum for Telecom Patent Litigation.  The article discusses, among other things, a case brought by WSOU Investments, LLC against ZTE, which settled following submission of a court-appointed expert’s opinion that the defendant was infringing under the doctrine of equivalents.

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