Unwired Planet: The English Court of Appeal upholds the first instance decision - only a global licence was FRAND

The English Court of Appeal has handed down the much awaited judgment on Huawei's appeal against the widely discussed Mr Justice Birss' first instance judgment of last year in Unwired Planet v Huawei.

The Court of Appeal has, in particular, dismissed all 3 grounds of appeal and in substance fully upheld Mr Justice Birss.

Of particular importance, the Court of Appeal held, in the circumstances of the case, that the judge was entitled to find that only a global licence was FRAND.

Whilst the Court of Appeal was not persuaded that there can only ever be one set of FRAND terms for a given set of circumstances, it expressed the view that a court or arbitrator will normally declare one set of terms as FRAND. If, however, the outcome of the proceedings is that two different sets of terms are each found to be FRAND then the SEP owner will satisfy its obligations if it offers either one of them.

The Court of Appeal also rejected Huawei's appeal on the so-called "hard-edged non-discrimination" point, deciding that the non-discrimination limb of the FRAND obligation did not entitle Huawei to be granted – instead of terms derived from the Court determined benchmark - the more favourable licence terms as Unwired Planet had, in the then particular commercial circumstances it was facing, previously granted to Samsung. The Court of Appeal thus agreed that the licence on offer to Huawei was on non- discriminatory terms.

On the question of whether Unwired Planet was in a dominant position, the Court of Appeal was satisfied that Mr Justice Birss was entitled to find it was. However, it also agreed that Unwired Planet had not abused that dominant position in bringing proceedings when it did and fully upheld the first instance judge's interpretation of the requirements laid down by the CJEU in Huawei v ZTE. There is a positive obligation to notify the alleged infringer before commencing proceedings and the nature, and content, of that notice must depend on the circumstances. If the SEP owner steps outside the protocol, or "safe harbour", laid down by the CJEU, the question whether its behaviour has been abusive must be assessed in all the circumstances.

Read our full analysis on this decision from our European team in Transceiver.