Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting organisation (SSO) that it will grant licences on FRAND terms. Until this decision it was not clear exactly what ‘fair, reasonable and non-discriminatory’ meant nor the exact legal standing of the FRAND undertaking and while this decision cannot provide all the answers for all situations, it has shed some light on how the FRAND undertaking operates.
This action started in April 2014 when Unwired Planet sued Huawei together with Google and Samsung for infringement of six patents, five of which were claimed to be essential. The cases with Google and Samsung settled but Huawei and Unwired Planet failed to come to an agreement. Rather than try to deal with all issues in a single trial, the dispute was split into its issues with a technical trial to determine the validity, infringement and essentiality of each of the patents followed by a non-technical trial to determine the FRAND and competition issues, injunctive relief and damages for past infringements. Only three of the technical trials were held, with two of the patents held valid and infringed, and this judgment concerns the non-technical trial.
To read more about the recent decision and its impact on FRAND undertakings, please see our briefing on the subject here.