Conversant v. Huawei & ZTE FRAND

First published on EP Law on 9 July 2019 - http://eplaw.org/uk-conversant-v-huawei-zte-frand/

Background

This judgment represents one of the technical trials in the dispute between Conversant (Claimant) and Huawei and ZTE (together the Defendants). The wider case relates to an ongoing dispute regarding what is a FRAND (Fair, Reasonable and Non-Discriminatory) licence for alleged SEPs (Standard Essential Patents).

Previously (Huawei Technologies Co. Ltd v Conversant Wireless Licensing SARL [2018] EWHC 808 (Pat)), the Court of Appeal held that a global licence was FRAND and, although they could not impose the licence on the Defendants, they could injunct the Defendant if the terms of the licence were not accepted. The Defendants have challenged the UK Court's jurisdiction to determine a global, rather than UK only, FRAND licence and have appealed to the Supreme Court (expected October 2019).

Conversant v Huawei & ZTE [2019] EWHC 1687 (Pat)

The present judgment is a technical trial relating to EP 1 797 659 entitled "Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA) along with service specific transmission time control" (the Patent). The Claimant contends that the Patent is essential to Uplink DRX (an aspect of the 3G mobile phone Universal Mobile Telecommunication Standard (UMTS)). The Defendants counterclaimed for invalidity on the basis of obviousness, added matter and insufficiency.

Arnold J found the patent essential to Uplink DRX (and hence infringed) but invalid for added matter.

Construction

Arnold J distinguished the question of construction from whether, once construed, the claims read on to Uplink DRX. Arnold J held in favour of the Claimant on various issues of construction including, but not limited to issues regarding the literal interpretation of the claims. Arnold J did not accept arguments by the Defendants which proposed limitations on the general language used in the claim or an argument suggesting that the method described in the claim applied to different types of transmissions not described in the claim.

Essentiality & Infringement

Arnold J considered each integer of the claim and concluded that the Patent was essential to Uplink DRX in UMTS, falling within the scope of protection of claim 1 by equivalence (Actavis v Eli Lilly [2017] UKSC 48). Therefore, the Patent was held to be essential and infringed.

Arnold J noted that it appeared to be implicit that the Claimant accepted there was no...