FRAND

Unwired Planet patent paves way for FRAND discussions

A standard essential patent owned by Unwired Planet has been maintained as valid by the Federal Court of Justice in Germany. The proceedings on validity between Unwired Planet, and HTC and Huawei, have now concluded. This ruling paves the way for the first FRAND ruling of the highest German patent court, after the Huawei vs. ZTE ruling by the CJEU.

5 July 2019 by Amy Sandys

The Federal Court of Justice has found Unwired Planet's patent valid. The decision paves the way for one of two FRAND rulings to be heard at Germany's highest court. ©ldprod/ADOBE STOCK

It is now clear the Unwired Planet patent EP 12 30 818 is valid, and the Federal Court of Justice can proceed with the parallel infringement case. The NPE claims Huawei infringes patent EP 12 30 818, which concerns information transfer between communication systems. The Unwired Planet patent was challenged by both Huawei and ZTE.

In February 2019, the German Federal Patent Court found the patent valid but to a limited extent. Now EP 12 30 818 has been reinstated to its fullest extent by the Federal Court of Justice (case ID: X ZR 91/17).

Leading FRAND case

The dispute between Unwired Planet and Huawei is the model case for FRAND issues throughout Europe. The dispute between the two opponents in the UK has led to an important decision by the High Court in London and is currently before the Supreme Court. It will hear the case in October 2019.

In Germany, too, the dispute has already seen an important decision by the Düsseldorf Higher Regional Court. In April the court ruled that Huawei infringed the Unwired Planet patent but called for clear FRAND rules to ensure licencees are not discriminated against by the transfer of SEPs (case ID: I-2 U 31/16).

Benjamin Grzimek, Fieldfisher, Unwired Planet patent

Benjamin Grzimek

The 2nd Civil Senate found that the licensing behaviour of Unwired Planet and its co-litigant Ericsson during the transfer of the patent might not comply with FRAND. According to the court, Unwired Planet does not have the full right to claim damages.

In May it became public that all parties have appealed the judgment. However, it is yet to be decided when exactly the Federal Court of Justice will hear the infringement case (case ID: 10 ZR 33/19).

So far, the only other case concerning important FRAND issues and pending before the Federal Court of Justice is Sisvel vs. Haier. The court has set the oral hearing in the validity case for 10 March 2020. However, it is not clear when the infringement case will be heard.

Rumours of a senate

In the meantime, the patent senate has referred the case to the new antitrust senate. The antitrust senate is being compiled on a case-by-case basis and currently includes three judges from the patent senate – Peter Meier-Beck, Hermann Deichfuß and Klaus Bacher.

Part of the reason behind the delay is the rumours surrounding the development of a permanent senate for antitrust law cases at the Federal Court of Justice.

According to some patent attorneys, a new senate would be the perfect place for FRAND cases to be heard. This is not least due to speculation that Meier-Beck will be the presiding judge. With Bacher overseeing the now-finished validity cases, it is likely Meier-Beck will deliver on the first FRAND ruling at the Federal Court of Justice in Germany.

However, what is certain is that many German patent lawyers and attorneys feel it is time for the court in Karlsruhe to act on FRAND. Not since Huawei vs. ZTE has Germany’s highest court taken on a FRAND action.

At a GRUR event in Düsseldorf in mid-May, Meier-Beck promised that the Federal Court of Justice could decide one of the two FRAND cases by the end of the year. This has now become more likely following the validity ruling. It is well known that the court is waiting to finally give its opinion on the interpretation of the CJEU’s guidelines.

German patent experts are eagerly awaiting this. They are unhappy with the different interpretation of the CJEU guidelines by the lower courts in Germany. Many see this as weakening the attractiveness of the German patent courts in relation to the UK.

HTC buys time

Although also sued by Unwired Planet, HTC has thus far avoided action in the German courts. Instead, Unwired Planet’s security bond has been the focus for HTC over the course of the proceedings.

Unwired Planet’s satellite office in Ireland acts as its registered address for operations in Europe. Subsequently HTC challenged this arrangement but lost in the first, second and Supreme Court instances of the proceedings.

Friedrich Emmerling, Braun-Dullaeus Pannen Emmerling, Unwired Planet patent, patent attorney

Friedrich Emmerling

Infringement proceedings regarding HTC are ongoing at the District Court in Germany, and the case remains in the initial stages. With the validity issue now closed, HTC can only try to appeal on infringement grounds. However, the company might also be able to appeal to the Supreme Court on validity grounds.

The teams behind each case have remained more or less the same throughout proceedings. However, at the District Court the case was the preserve of lawyers. The Federal Court proceedings saw the patent attorneys take the lead.

One team less

Ericsson, the former owner of the patent, was not present at the hearing. The team for the international communications company was led by Frank-Erich Hufnagel, partner and head of the patent litigation group for Freshfields Bruckhaus Deringer in Düsseldorf. In this case, in-house vice president patent development at Ericsson, Gabriele Mohsler, assissted Hufnagel. (Co-author: Mathieu Klos)

For Unwired Planet
df-mp Dörries Frank-Molnia & Pohlman (Munich): David Molnia, Dominik Ho (patent attorneys)
Fieldfisher (Düsseldorf): Benjamin Grzimek; associates: Lisa Herrmann, Jörn Peters

For Huawei
Braun-Dullaeus Pannen Emmerling (Munich): Friedrich Emmerling (patent attorney)
Preu Bohlig & Partner
(Berlin): Christian Donle
In-house (Munich): Georg Kreuz

For HTC
Hogan Lovells (Düsseldorf): Markus Kuczera
Maikowski & Ninnemann (Berlin): Gunnar Baumgärtl, Christoph Schröder (both patent attorney)

Federal Court of Justice Karlsruhe, 1oth Civil Senate
Klaus Bacher (presiding judge), Klaus Grabinski, Martina Schwonke, Jörn Feddersen, Babette Pohl