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“The decision of the decade” – US reaction to the UK’s landmark Unwired Planet FRAND judgment

  • Case law & ethics
December 15, 2019

Last week’s judgment from London’s High Court in Unwired Planet v Huawei has elicited a lot of interest from the patent licensing community in the US. 

Despite the fact that patent disputes between various players in the mobile sector have hardly been a rarity in recent years, there have been very few standard essential patent lawsuits over FRAND terms that have gone all the way in court. Judge Robart’s 2013 decision out of the Western District of Washington in Microsoft v Motorola Mobility has been perhaps the most commonly cited, in part because of the wide disparity in expected royalty rates between the two parties and the level of detail in the decision.

The High Court decision handed down by Justice Birss in the UK looks set to join that case as a cited authority and might even supplant it, according to some. Paul Michel, former Chief Judge of the Court of Appeals for the Federal Circuit did not mince his words when he described it in an interview as “the decision of the decade” in FRAND SEP licensing. There’s no doubt that in 166 pages Justice Birss has laid down several important markers over just what constitutes fair, reasonable and non-discriminatory in SEP licensing negotiations. 

Ashley Keller of litigation funder Burford Capital cast doubt on how much sway the judgment will hold in the US. Instead, he forecast that the drift of cases from American courts to Europe will accelerate. 

"To my eyes, the ruling is a big deal, but not because it will influence US courts.  I think the federal judiciary will at best treat this as persuasive authority; but, more likely, will not consider it much if at all in US adjudications. The bigger impact could be to further the marginal incentive for patent holders to enforce in Europe (and by extension, for innovators to innovate there).  It is obviously but one opinion at the trial court level but the reasoning is extensive and thoughtful. If this sets the trend in the UK, expect more filings there.  And if it influences the long-awaited UPC, Europe will draw many suits that previously would have been filed on this side of the Atlantic."

Keller’s colleague Katharine Wolanyk added that they are already seeing an uptick in patent owners looking at financing for European cases, particularly at lawsuits being brought in Germany.

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