Published: April 18, 2018
Publisher: IPKat
Does the English Court have jurisdiction to grant relief in the form of a global FRAND license in relation to a claim for infringement of UK patents, where UK sales account for only 1% or less of worldwide sales on which royalties are claimed? This was the subject of the decision of Carr J. in the Patents Court on Monday in Conversant Wireless Licensing S.A.R.L v Huawei Technologies Co. Ltd, ZTE Corporation and Ors [2018] EWHC 808 (Pat). The answer – on the facts of this case as explained below- was “yes”.
Background
Conversant claimed to have made a number of offers for a global FRAND license to the Defendants Huawei and ZTE (who manufacture and sell mobile devices worldwide) in relation to Conversant’s patents declared essential to various ETSI standards. Conversant alleged that no meaningful progress had been made with Huawei or ZTE in discussions over several years, who it said continued to infringe without taking a license. Huawei and ZTE disputed that Conversant had any valid SEP – maintaining that the patents were not essential or invalid. Conversant commenced proceedings in July 2017, claiming that the Defendants were infringing 4 EP (UK) patents, and sought a determination of FRAND terms for its global SEP portfolio. Conversant’s global portfolio of patents includes SEPs in over 40 countries.