In a recent development in the realm of SEP’s , a US technology firm; Unwired Planet, Inc. has won the first round against electronic giants Samsung and Huawei over a mobile communication technology said to be essential to the 4G telecommunication system. The interim judgment was passed by the UK Patents Court against as many as 8 parties including Samsung, Huawei, Google and its subsidiaries, and Ericsson earlier this year in July 2015.
In March 2014, Unwired Planet brought a claim for patent infringement against Google, Samsung and Huawei. The claim was brought for infringement of six of Unwired Planet’s patents, five of which are said to be essential to standards (SEP) produced by the European Telecommunications Standards Institute (ETSI). All these asserted SEPs were transferred to Unwired Planet from Ericsson (along with over 2,800 other patents) under a Master Sales Agreement (MSA), in January 2013.
The defendants responded that Unwired Planet’s patents were invalid and had not been infringed as alleged. They also put forward a number of defenses based on ‘FRAND’ principles and competition law, some of which were based on the provisions of the MSA. As a result of the MSA-related defenses Ericsson was also joined to the proceedings. Since then Google has settled its dispute with Unwired Planet.
Following a number of case management hearings the court has listed five “technical trials” to hear the validity and infringement issues in relation to each of the six patents in suit, followed by a thirteen week “non-technical” trial to hear the FRAND and competition law issues. The first of the technical trials was heard in October 2015.
Mr. Justice Birss ruled that Unwired Planet’s patent EP2229744 was valid and was infringed by wireless telecommunication networks which operated in accordance with the relevant LTE standard, and thus is essential to the LTE standard, known as 3GPP TS 36.322 release 8 version 8.8.0.
As reported in the Digital Journal, this is the first of five UK patent infringement trials which have been scheduled to continue into the summer of 2016. The next trial is scheduled to begin on November 30, 2015. A sixth trial has also been scheduled for October 2016 , where the court will consider commercial law questions, including the question of how to apply “fair, reasonable and non-discriminatory,” or “FRAND,” licensing principles to the standards-essential patents at issue in this series of cases. The outcome of the commercial case will establish the measure of damages to be awarded. FRAND licensing and standard essential patents were discussed in our earlier posts.
The original judgment copy can be accessed here.
Authored by Subhashree Sahoo
Contributed by Electronics, Software and Telecommunications team of BananaIP, India
For further information on Electronics, Software and Telecommunications Patent law in India, write to contact@bananaip.com
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