Review And Discussion Of Recent SEP Cases in EU, US and China
December 18, 2019
2019 by Giant Group. Proprietary and Confidential.
Agenda
SEP Cases
TCL Commc’n Tech v. Telefonaktiebolaget LM Ericsson (Fed. Cir. December 5, 2019)
Philips v. Asus (Court of Appeal of The Hague, May 9, 2019)
华为诉康文森案，江苏省南京市中级人民法院 (2019年9月16日)
Discussions
Other important cases/news:
The SISVEL-RPX Deal
Continential v. Avanci (N.D.Cal, May 10, 2019)
FTC v. Qualcomm (N.D.Cal, May 21, 2019)
HTC v. Ericsson (E.D.Tex, May 23, 2019)
Unwired Planet v Huawei
(Appealed to UK Supreme Court)
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TCL Commc’n Tech v. Telefonaktiebolaget
LM Ericsson (Fed. Cir. December 5, 2019)
2019 by Giant Group. Proprietary and Confidential.
TCL-Ericsson Negotiation History
2007: TCL and Ericsson entered into 2G licenses with seven-year terms.
2011: two parties began to negotiate a 3G license.
2012: Ericsson sued TCL in six different jurisdictions (France, United Kingdom, Brazil, Russia, Argentina, and Germany).
2013: two parties began to negotiate a 4G license.
2014: TCL filed a declaratory judgment action against Ericsson in the Central District of California (right before TCL’s 2G licenses with Ericsson were set to expire.)
4
Litigation History
In the California Action, TCL sought declaratory judgment that Ericsson had failed to offer a FRAND rate to TCL.
In another Texas Action, Ericsson sought damages for infringement of two SEPs, for which TCL filed counterclaims of invalidity and non-infringement.
The two Actions were consolidated in June 2015 when the Texas Action was transferred to the Central District of California.
On February 14, 2017, the court commenced a ten-day bench trial.
On March 9, 2018, the court amended this decision in an Amended Memorandum
2019 by Giant Group. Proprietary and Confidential.
Parties’ FRAND Calculations
TCL: Top-Down Approach Ericsson: Ex Standard Approach
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CDCA’s FRAND Rates
2019 by Giant Group. Proprietary and Confidential.
CDCA’s Release Payment
8
CAFC: CDCA Deprived Ericsson’s Right
To A Jury Trial
2019 by Giant Group. Proprietary and Confidential.
CAFC Vacated And Remanded Everything
10
Notes
FRAND negotiation framework
Reduce the risk of “unfaithful”, “delay tactics”, or “unwilling licensee”
Forum selection
Avoid to fight in the other party’s home court Capability to fight in a foreign court
FRAND past release → Jury Higher uncertainty
2019 by Giant Group. Proprietary and Confidential.
Philips v. Asus
(Court of Appeal of The Hague, May 9, 2019)
12
The Decision
2019 by Giant Group. Proprietary and Confidential.
“The Huawei / ZTE Judgment” (CJEU, 2015)
“... expressed its willingness to conclude a licensing agreement on FRAND terms ...”
“... diligently responded to [the proprietor’s] offer, in accordance with recognised commercial practices in the field and in good faith …”
“... no delaying tactics.”
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Philips’ Record Of Negotiation History
From mid 2013 to December 15, 2015 (See paragraphs 4,172 ~ 4,177):
No substantive technical discussions (because the expertise for this was lacking with Asus representative)
No reaction to the license conditions (because Asus representative showed no interest in it)
No counter proposal (Asus representative noted that 'if the gap is too big management won't give counteroffer’)
During litigation, both parties submitted statements (made by negotiation representatives)
2019 by Giant Group. Proprietary and Confidential.
2019 by Giant Group. Proprietary and Confidential. 16
Notes
Reduce the risk of “unfaithful”, “delay tactics”, or “unwilling licensee”
Mind the cultural differences
Be familiar with FRAND guidelines and caselaw Forum selection
Select yout home court for complex legal disputes (such as FRAND issues)
2019 by Giant Group. Proprietary and Confidential.
华为诉康文森案
，江苏省南京市中级人民法院 (2019年9月16日)
18
2019 by Giant Group. Proprietary and Confidential.
ZTE v. Conversant (UK Supreme Court)
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ZTE v. Conversant: Issues
1. Does the English court have the power or jurisdiction, or is it a proper exercise of any such power or jurisdiction without the parties’ agreement:
to grant an injunction restraining infringement of a UK SEP unless the
defendant enters into a global licence under a multinational patent portfolio;
to determine the rates/terms for such a licence; and to declare that such rates/terms are FRAND?
2. If the answer to (i) is "yes", is England the proper forum for such a claim in the
2019 by Giant Group. Proprietary and Confidential.
Global Rates In Unwired Planet v. Huawei
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Notes
FRAND Rate:
Highly uncertain in different jurisdictions. Difficult to manage.
Select your home court
Conversant (EU court) v. Huawei (Chinese court) Global FRAND term set by Taiwan court?
2019 by Giant Group. Proprietary and Confidential.
Other Important News/Cases
24
The RPX-Sisvel Deal
2019 by Giant Group. Proprietary and Confidential.
Continential v. Avanci (NDCA, May 10, 2019)
26
FTC v. Qualcomm (NDCA, May 21, 2019)
2019 by Giant Group. Proprietary and Confidential.
HTC v. Ericsson (E.D.Tex, May 23, 2019)
28
Interdigital Sued Huawei In UK
2019 by Giant Group. Proprietary and Confidential.
Summary
Keep monitoring the developments of SEP issues worldwide The uncertainty of FRAND terms in different jurisdictions Injunction: be familiar with FRAND negotiation framework Fight for FRAND at your home court
Capability of managing SEP disputes worldwide Share cost by forming a licensee group
SEP issues in new tech sectors (such as the automobile industry)
30
Thank You
Keep monitoring the developments of SEP issues worldwide
● The uncertainty of FRAND terms in different jurisdictions
● Injunction: be familiar with FRAND negotiation framework
● Fight for FRAND at your home court
● Capability of managing SEP disputes worldwide
● Share cost by forming a licensee group
● SEP issues in new tech sectors (such as the automobile industry)
