A guide to the UPC and the UP - Flipbook - Page 282
– The implementer should then diligently respond to the offer in accordance with recognised
commercial practices in the field and in good faith, a point which must be established on the
basis of objective factors and which implies, in particular, that there are no delaying tactics;
– If the implementer does not accept the offer, it must make a specific counter-offer
that corresponds to FRAND terms; and
– If the proprietor refuses the counter-offer and the implementer is using the technology,
the implementer must provide “appropriate security” and details of how it is calculated
i.e., by providing the number of the past acts of use of the SEP(s).
15-15 Following this decision, it can be seen that if the implementer acts in bad faith and does not
respond to the proprietor, or fails to respond diligently, a patentee who has followed the steps
can seek an injunction. However, if the implementer responds in good faith, makes a FRAND
counteroffer, and gives security the seeking of an injunction would be an abuse.
15-16 Since the CJEU’s decision, the national courts, particularly in Germany, have been struggling with
the question of whether the scheme laid out by the CJEU has to be followed to the letter or
whether or to what extent it is possible for a patentee to diverge from the scheme without
abusing its dominant position, or an implementer to fail to follow steps without risk of
injunction. 22 It is likely that a Unified Patent Court would start to harmonise this case law.
15-17 Under Art.63 UPCA injunctions in the UPC are discretionary. This discretionary approach derives
from UK patent law, and UPC judges may look to UK cases in its application. In the UK, in
Unwired Planet v Huawei, 23 the Supreme Court upheld the trial judge’s finding that the only
mandatory step in Huawei v ZTE is the requirement for the SEP holder to notify the alleged
infringer before bringing a claim for an injunction 24. The remaining steps are not mandatory but
provide a “safe harbour” against a finding of abuse of dominance under Article 102 TFEU.
Consequently, although the patent owner had diverged from the scheme it was not such as to
afford a defence to the claim for an injunction. The trial judge granted what he termed a
“FRAND injunction” restraining infringement of those SEPs found to be valid and infringed
unless and until the defendant entered into a FRAND licence on terms as settled by the UK
court. In doing so, the trial judge noted that the grant or refusal of an injunction is an exercise
of the court’s discretion although, when infringement and a threat and intention to infringe in
the future were established, an injunction would normally be granted. 25
22
23
24
25
A summary of national cases which have considered these steps, and looked in more detail at what may or may not comply,
may be found at https://caselaw.4ipcouncil.com/guidance-national-courts. In some instances (for example, whether the
patent owner needs to notify the infringing company or merely a group parent company) different courts have reached
different conclusions. See also Sir Jacob R and Milner A in “Lessons from Huawei v ZTE” (October 2016) 4iP Council available at
http://www.4ipcouncil.com/application/files/6314/7928/6022/Lessons_from_Huawei_v_ZTE_-_RJacob_-_24-10-16.pdf
[Accessed 14 April 2023] and by Tsilikas H in “Huawei v ZTE in context – EU competition policy and collaborative
standardization in wireless telecommunications” IIC 2017, 48(2), pp.151 to 178.
Unwired Planet International Ltd v Huawei Technologies Co. Ltd & Ors [2017] EWHC 711 (Pat). Upheld on appeal in [2018] EWCA
Civ 2344 and [2020] UKSC 37.
Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37, at [146] to [149].
Unwired Planet International Ltd v Huawei Technologies Co. Ltd & Ors [2017] EWHC 1304 (Pat) at [25].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 272
