InterDigital – owner of 32,000 tech-focused patents and applications – has filed a patent infringement action against Huawei in the UK High Court.
But this is nothing new. InterDigital and Huawei have had a long history of patent disputes over the years, and in 2012 a spokesperson for Huawei even claimed that its adversary was a “non-practicing entity”; the obvious inference being that InterDigital was a patent troll.
That same year Huawei filed an EU antitrust complaint against InterDigital, asking the EU courts to end its "abuse" of the standards-essential patents (SEPs) it said it controlled. Huawei claimed the fair, reasonable and non-discriminatory (FRAND) terms for the use of InterDgitial’s 3G mobile patents were “exploitative”. (FRAND terms denote how much patent owners get from companies that use their IP in some way – in this instance, it was SEPs.)
Taking the fight to China
In 2013 InterDigital took the fight to Huawei in China, but the Guangdong Higher People’s Court found that the patent licensing demands being made by InterDigital constituted an abuse of its market position under Chinese anti-monopoly law. And in December of that year, the ITC cleared Huawei, Nokia and ZTE, saying the companies had not infringed on patents owned by InterDigital. In 2014 the two companies settled the dispute out of court.
But after year of verdicts going one way, and then the other – and following heavy loss for Huawei at the Paris Court of Appeals – InterDigital and Huawei finally came to a multi-patent license agreement in 2016, which covered Huawei and its affiliates’ sales of their 3G and 4G terminal products.
Good news for SEP owners
Fast forward to 2019, and InterDigital is back on the case. This time to protect its portfolio of 3G, 4G and 5G standards-essential patents (SEPs). And following a landmark Unwired Planet v Huawei ruling in London’s High Court, the UK is now a good place for patent owners, and InterDigital may feel it has the upper hand again.
“[Unwired Planet v Huawei] is generally good news for SEP owners, who will see the UK as attractive for FRAND litigation,” said Pat Treacy is a Partner at Bristows LLP. “It gives SEP owners a means of resolving global disputes where the implementer has sufficient UK sales to want to stay in the UK market.”
InterDigital has asked that the Court either support InterDigital’s assessment of Huawei’s FRAND commitments, or help determine separate FRAND terms for a license to InterDigital’s patent portfolio. The company is also seeking a “FRAND injunction”, of the type awarded by the High Court of Justice in Unwired Planet v. Huawei.
“We’re hopeful that Huawei will choose to resolve this situation through arbitration or negotiation, rather than holding out or through litigation in a favorable court, especially given the significant history of negotiation and arbitration involving the two companies,” said Bill Merritt, President and CEO at InterDigital. “In bringing this claim in the UK High Court of Justice – which is a purely neutral venue and has a history of examining standards-essential patent issues – we’re hopeful for a speedy resolution and a fair license.”
Whatever the result, and whatever your views on patent cases in general, one thing’s for sure: we haven’t heard the end of this ongoing patent dispute.