UK court ruling gives guidance on tech patent rights

April 5, 2017 by Danica Kirka

Britain's High Court ruled Wednesday that it can decide what mobile phone manufacturers should pay to use patented technology that is essential to make mobile networks function.

In a case that helps clarify how patents are handled in the telecoms industry, Justice Colin Birss ruled that neither of the parties in the case had made a "fair, reasonable and non-discriminatory" offer and he provided a formula for how to set such fees.

The case involved a dispute between Unwired Planet, a U.S. company that has purchased patents developed by other firms, and China-based Huawei Technologies Co., which makes phones and other communications equipment, over the use of patented technologies that have become the standard on which mobile phone networks are based.

"This is a ground-breaking judgment," said Pat Treacy, a partner at the London law firm Bristows, which was not involved in the latter part of the litigation. "It gives guidance to companies about how they should set the terms of these licenses."

As part of its judgment, the court also ruled that Unwired Planet was entitled to past royalties for patents that Huawei had infringed. A hearing on a possible injunction against Huawei will be held later this month after Unwired Planet has drawn up a global licensing agreement incorporating the judge's ruling.

Unwired Planet was purchased last year by Texas-based PanOptis, which seeks to profit by licensing the use of patents it acquires. PanOptis said it would abide by the ruling.

"This decision will bring tremendous efficiency to the licensing ecosystem and further validate PanOptis' licensing approach," Thomas Miller, the company's head of licensing, said in a statement. "We will honor the Court's ruling and we trust that Huawei will now take a license to the technology that helps enable their products."

Huawei said it is still evaluating the decision, but was pleased the court found Unwired Planet's royalty demands to be unreasonable.

"Huawei does not believe that this decision will adversely affect its global business operations," the company said in a statement.

The decision is important because it clarifies the relationship between the companies that make mobile phones and those who own the patents for the technology that makes it possible for those handsets to communicate with each other.

Early in the development of mobile phones, the industry recognized it would have to adopt unified standards to promote widespread use of the technology. But this had the potential to give those who developed the preferred technology an extremely powerful position that could have choked off future development.

Standard-setting organizations tried to level the playing field by requiring patent owners to license their technology under what were called fair, reasonable and non-discriminatory terms, or FRAND.

But that raised the question of what FRAND terms would be, with patent holders and manufacturers choosing different definitions. Until now, the courts have offered little guidance but the decision offers a roadmap for how the two sides should work out licensing agreements.

Explore further: China's Huawei sues Samsung over wireless patents

Related Stories

China's Huawei sues Samsung over wireless patents

May 24, 2016

Chinese technology titan Huawei said Tuesday it filed suit in the United States against Samsung, claiming its South Korean rival has infringed on patents on wireless connectivity for mobile devices.

Ericsson and Apple in legal showdown (Update)

January 14, 2015

Swedish telecoms equipment maker Ericsson filed a complaint Wednesday against Apple in a US court over the iconic American brand's use of its technology in iPhones and other wireless devices.

Ericsson sues Apple over patent violations

February 27, 2015

Swedish telecoms group Ericsson announced Friday a lawsuit against Apple claiming that the US tech giant continued to use its technology in iPhones and other wireless devices after refusing to renew a licencing agreement.

Recommended for you

Automated safety systems are preventing car crashes

August 23, 2017

Safety systems to prevent cars from drifting into another lane or that warn drivers of vehicles in their blind spots are beginning to live up to their potential to significantly reduce crashes, according to two studies released ...

Newest solar cells underperform in cloudy countries

August 22, 2017

To determine how efficient new solar cells convert sunlight into electricity, small sample cells are tested under ideal conditions. However, the reported efficiency is not very representative of the actual annual yield when ...

Google to serve next version of Android as 'Oreo"

August 22, 2017

An upcoming update to Google's Android software finally has a delectable name. The next version will be known as Oreo, extending Google's tradition of naming each version after a sweet treat.

Forget oil, Russia goes crazy for cryptocurrency

August 16, 2017

Standing in a warehouse in a Moscow suburb, Dmitry Marinichev tries to speak over the deafening hum of hundreds of computers stacked on shelves hard at work mining for crypto money.

Researchers clarify mystery about proposed battery material

August 15, 2017

Battery researchers agree that one of the most promising possibilities for future battery technology is the lithium-air (or lithium-oxygen) battery, which could provide three times as much power for a given weight as today's ...

0 comments

Please sign in to add a comment. Registration is free, and takes less than a minute. Read more

Click here to reset your password.
Sign in to get notified via email when new comments are made.