{"id":235028,"date":"2020-08-28T18:00:23","date_gmt":"2020-08-28T12:30:23","guid":{"rendered":"https:\/\/www.scconline.com\/blog\/?p=235028"},"modified":"2021-04-02T18:36:54","modified_gmt":"2021-04-02T13:06:54","slug":"uk-sc-whether-a-court-in-the-united-kingdom-has-jurisdiction-to-grant-an-injunction-to-restrain-the-infringement-of-a-uk-patent-detailed-report","status":"publish","type":"post","link":"https:\/\/www.scconline.com\/blog\/post\/2020\/08\/28\/uk-sc-whether-a-court-in-the-united-kingdom-has-jurisdiction-to-grant-an-injunction-to-restrain-the-infringement-of-a-uk-patent-detailed-report\/","title":{"rendered":"UK SC | Whether a court in the United Kingdom has jurisdiction to grant an injunction to restrain the infringement of a UK patent? [Detailed Report]"},"content":{"rendered":"

Supreme Court of the United Kingdom: <\/strong>While deciding the instant appeal raising questions important to the international market in telecommunications such as –<\/p>\n

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  1. Whether a court in the United Kingdom has jurisdiction and may properly exercise a power, without the agreement of both parties to grant an injunction to restrain the infringement of a UK patent where the patented invention is an essential component in an international standard of telecommunications equipment, which is marketed, sold and used worldwide, unless the implementer of the patented invention enters into a global licence of a multinational patent portfolio.<\/li>\n
  2. Whether a UK Court can determine royalty rates and other disputed terms of such a global licence<\/li>\n
  3. The circumstances in which it is appropriate for English court to grant a prohibitory injunction or to award damages.<\/li>\n<\/ol>\n

    \u00a0<\/strong>Answering the aforesaid questions, the Full Bench of Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales, JJ.,<\/span><\/strong> unanimously held that English courts have the power to require telecoms companies and smartphone makers to take out a global patents licence or face a UK Court injunction. It was further observed that the contractual arrangements European Telecommunications Standards Institute (ETSI) has created under its IPR Policy give the English courts jurisdiction to determine the terms of a global license of a multi-national patent portfolio.<\/p>\n

    The instant matter consisted of 2 appeals which concern actions for infringement of UK patents said to be essential to the implementation of international standards for mobile telephony, such that it is not possible to make, sell, use or operate mobile phones and other equipment that is compliant with the standards without infringing the patents. Patents of this kind are called Standard Essential Patents (SEPs). The international standards in question are those set by the ETSI for 2G (GSM), 3G (UMTS) and 4G (LTE). Under its IPR Policy, ETSI requires the SEP owner to give an irrevocable undertaking to license their patented technology on terms that are \u201cfair, reasonable and non-discriminatory\u201d (FRAND). The first appeal concerns an action brought by Unwired against Huawei for infringement of five UK patents which Unwired claimed to be SEPs. The second appeal concerns an action brought by Conversant against Huawei and ZTE for infringement of four of its UK patents.<\/p>\n

    Acknowledging the importance of the issues raised in the instant appeal vis-\u00e0-vis international market in telecommunications, the Full Court meticulously addressed the questions-<\/p>\n