Unwired Planet v Huawei - The FRAND Injunction

Having granted Unwired Planet a final injunction to restrain infringement of two standard essential patents (SEPs) by Huawei in its main judgment ([2017] EWHC 711 (Pat)) the High Court has now ruled on remedies. The decision to grant an injunction allowing the parties to come back to court after final relief has been granted is unusual.

In this judgment, Mr Justice Birss decided the terms of the final injunction which should be granted and stayed pending appeal. He found that this new type of IP injunction - a FRAND (fair, reasonable and non-discriminatory) injunction—should be in normal form to restrain infringement of the relevant patent(s), but ought to include a proviso that it would cease to have effect if the defendant entered into a FRAND licence. If, as in this case, the FRAND licence was for a shorter duration than the lifetime of the relevant patents, then the injunction should also be subject to an express liberty to enable either party to return to court in future to address the position at the end of the term of the FRAND licence. In addition, the court made a declaration that the form of the licence finalised a few weeks after the main judgment (the Settled Licence) represented the FRAND terms in the relevant circumstances that existed between the parties. It was also ruled that Huawei had to make a payment on account of costs of £2.9 million, in order to cover some of Unwired Planet's costs of the non-technical trial (save for the Samsung issues and the costs of the FRAND rate issue), and permission to appeal was granted to Huawei on three issues, and to Unwired Planet on one issue.

It was common ground that some sort of declaration should be made...