## Facts

- Unwired Planet International Ltd. acquired a portfolio of telecommunications patents, including standard-essential patents (SEPs) declared to ETSI and subject to a commitment to license on fair, reasonable, and non-discriminatory (FRAND) terms.
- Huawei Technologies Co. Ltd. and Huawei Technologies (UK) Co. Ltd. manufactured standard-compliant mobile devices and equipment allegedly practicing the SEPs.
- After technical trials, certain asserted UK designations of SEPs were found valid and infringed, leading to a trial addressing FRAND, competition law, and remedies.
- Unwired Planet offered Huawei a global portfolio licence (first covering SEPs and non-SEPs, then SEPs only); Huawei rejected the offers as non-FRAND and raised invalidity, non-essentiality, and non-infringement positions.
- The parties later exchanged competing proposals: Unwired Planet continued to seek a worldwide portfolio licence; Huawei proposed a UK-only licence.
- Huawei alleged Unwired Planet was dominant in SEP licensing markets and that seeking an injunction and proposing certain terms (including global scope, alleged excessive pricing, and bundling) breached Article 102 TFEU, invoking the CJEU framework in Huawei v. ZTE.
- The court proceeded to determine FRAND terms and the appropriate relief if Huawei would not accept those terms.

## Issues

1. Whether the ETSI FRAND undertaking is enforceable and whether FRAND implies a single set of terms or a range of permissible terms.
2. Whether the court may determine and declare specific FRAND licence terms, including royalty rates, for the parties.
3. Whether a FRAND licence for the portfolio should be worldwide or may be limited to the UK, and whether insisting on worldwide terms to avoid an injunction is permissible.
4. Whether FRAND includes a “hard-edged” non-discrimination requirement entitling a licensee to match the most favorable terms given to another similarly situated licensee.
5. Whether Unwired Planet’s conduct (including seeking an injunction and its licensing offers) constituted an abuse of dominance under Article 102 TFEU, applying Huawei v. ZTE.
6. Whether Unwired Planet was entitled to a final injunction if Huawei would not enter into a licence on terms the court found to be FRAND.

## Decision

- The court held the FRAND undertaking was justiciable and enforceable, and that FRAND generally encompasses a range of terms rather than a single uniquely correct set.
- The court held it could and should set the FRAND royalty rates and other licence terms to resolve the parties’ dispute.
- The court determined that, for this portfolio and industry practice, FRAND terms were properly implemented through a single worldwide portfolio licence rather than a set of national licences.
- The court rejected a standalone “hard-edged” non-discrimination rule requiring Unwired Planet to match the most favorable terms offered to another licensee.
- For Article 102 purposes, the court found Unwired Planet dominant in relevant SEP licensing markets but found no abuse; Huawei was treated as an unwilling licensee because it would not commit to take a licence on court-determined FRAND terms.
- The court granted a final UK injunction against infringement, stayed briefly to allow Huawei to enter into the worldwide FRAND licence on the court-specified terms; damages for past infringement were to follow the FRAND structure.

## Legal Principles

- An ETSI-based FRAND commitment is enforceable in court, and “fair, reasonable and non-discriminatory” operates as a single composite standard.
- FRAND does not necessarily require one unique set of licence terms; multiple sets of terms can be FRAND if within an acceptable range.
- A court adjudicating SEP disputes may determine specific FRAND licence terms, including royalty rates, to provide effective relief.
- Depending on portfolio scope and industry practice, a worldwide portfolio licence may be FRAND, and requiring such a licence to avert an injunction can be lawful if the terms are FRAND.
- The FRAND non-discrimination requirement does not automatically operate as a most-favored-licensee clause; differential outcomes may be consistent with FRAND absent unjustified discrimination within the FRAND range.
- Under Article 102 TFEU and Huawei v. ZTE, seeking an injunction is not abusive where the SEP holder has engaged in sufficient licensing steps and the implementer is not a willing licensee, including by refusing to accept court-determined FRAND terms.

## Conclusion

The court confirmed it could set detailed FRAND terms for a SEP portfolio, concluded that FRAND in this case required a worldwide licence, rejected a strict rate-matching non-discrimination rule, found no Article 102 abuse despite dominance, and held a final injunction appropriate unless Huawei accepted the court-determined global FRAND licence.


Unwired Planet Int’l Ltd. v. Huawei Techs. Co. Ltd., No. HP-2014-000005 (Pat. Ct. 2017)