Huawei, ZTE Lose Patent Appeals in UK Supreme Court ‘Landmark’ Ruling

August 27, 2020 Updated: August 27, 2020

The UK Supreme Court on Wednesday unanimously dismissed appeals by Chinese telecommunication companies Huawei and ZTE concerning their patent disputes with licensing companies Unwired Planet and Conversant Wireless.

EIP legal, the firm representing both Unwired Planet International Ltd and Conversant Wireless Licensing, said it is a “landmark ruling” that “will be highly impactful for the global licensing of telecoms standards.”

The joint appeals concern two previous cases.

In the first case, an English court previously ruled that Huawei infringed two of Unwired Planet’s UK patents, which are standard essential patents (SEPs)—patents that are “essential to the implementation of international standards for mobile telephony.” The patents’ previous owner Ericsson had licensed them to Huawei, but the license expired in 2012.

Unwired Planet obtained an injunction against Huawei for the latter’s infringement of the SEPs.

In the second case, the UK Patents Court found that Huawei and ZTE infringed two of Conversant’s wireless LTE SEPs by selling LTE handsets in the UK.

Huawei and ZTE appealed, arguing that foreign patents are outside the jurisdiction of UK court. The supreme court unanimously dismissed the appeals, maintaining the previous judgment that it’s within English courts’ jurisdiction “to determine the terms of a global license of a multi-national patent portfolio.”

The ruling will “enable SEP holders to insist that implementers, like Huawei, take out global licences covering all of their portfolios,” EIP said in a statement.

“If they fail to do this, they risk being subject to injunctions restricting their ability to access the UK market.”

Both Unwired Planet and Conversant said they were “pleased” with the court’s decision.

“The UK Supreme Court decision confirms the entire well-reasoned, deeply analyzed jurisprudence that has emerged in the UK courts,” Boris Teksler, Conversant’s CEO, said in a statement.

“It confirms Conversant Wireless’ approach, that as a holder of cellular standard-essential patents, we can seek proper value for our patents without having to resort to what the UK courts themselves called the ‘madness’ of country-by-country licensing and related litigation,” he added.

“This helps level the playing field when small companies are trying to license SEP portfolios to global giants with seemingly limitless litigation resources.”

The trial to determine the licensing terms is set for the end of January 2021, Conversant said.

Gary Moss, head of EIP Legal called the case “an epic journey,” on which the firm and its clients faced “opponents with significant resources who have thrown everything at” them. He said they were “delighted” with the outcome.

The appeals process had taken 7 years involving 12 major trials and appeals, Moss said, with EIP representing Unwired Planet since 2013 and Conversant since 2017.

“Many in the industry thought that what we were attempting was crazy and hopeless. But we and our clients have held firm,” he said.