UK: UK Supreme Court Case Tracker: Unwired Planet v Huawei; Conversant v Huawei And ZTE — Day 2 Of 4

During the second day of the landmark UK Supreme Court Unwired Planet/Conversant appeals, the Deputy President of the Court, Lord Reed, notably remarked upon the international commercial and diplomatic significance of the issues that are at stake in the case. As outlined below, the day began with Huawei continuing its opening submissions, focusing on what it contends was inappropriate relief granted by the English Court, as well as its inappropriate construction of the non-discrimination element of the FRAND requirement. ZTE then commenced its opening submissions (which differed in a number of respects from those of Huawei), focusing on a number of jurisdictional and institutional arguments as to why, in the circumstances, a global licence should not be ordered by the English Court against the threat of a UK-wide injunction.

The day concluded with Unwired Planet and Conversant’s opening submissions, which focused on the international nature of ETSI undertakings and standards, and then on the difficulties and disadvantages that would result for SEP-holders if SEPs must be licensed on a jurisdiction-by-jurisdiction basis, and indeed only once their validity and essentiality has been established in each such jurisdiction. The respondents’ opening submissions will continue into Day 3.

Opening Submissions


Huawei continued its opening submissions on the morning of Day 2, focusing on the operation of ETSI and the effect of a FRAND undertaking. It contended that the ETSI framework was intended to make standards widely available, and it is unlikely to have been designed to exclude implementers from national markets unless they agree to pay rates set in one jurisdiction in respect of foreign patents, given that patents are territorial rights and there is no such thing as a ‘portfolio right’. In this regard, Huawei emphasised that ETSI does not grant rights to intellectual property rights, but rather acts as a constraint on the relief that the SEP-holder can obtain. The decision on appeal was said to turn a SEP into a supranational patent, allowing the SEP-holder to obtain an injunction unless the implementer pays for a global licence, irrespective of how trivial the relevant patent is, and whether or not the validity of the licensed patents has been tested. It was also noted that a global licence would have the effect of rendering challenges to foreign patents irrelevant, since royalties would potentially remain payable on relevant foreign sales irrespective of any foreign actions, and notwithstanding that courts in different jurisdictions adopt differing approaches for the assessment reasonable royalties, so as to lead to a lack of institutional comity. It also put forward the proposition that in light of recent UK Supreme Court authority, royalties for future relief should not be awarded on a different basis to what is available for past damages, which in the present case is limited to UK-based damages.

Huawei characterised the respondents’ contention that each patent family relative would need to be litigated in each jurisdiction as an overstatement, stating that in practice these would at most be litigated in a few countries, and that in any event, upholding the lower court decisions would cause the English Court to be inundated with such cases, at a time when it is facing a shortage of patents judges. On the question of jurisdiction, Huawei contended that once it raised a question as to the validity of the foreign patents in respect of which a licence in the UK is sought, this rendered these patents non-justiciable in the UK, such that royalties on these patents could not be ordered in the UK. As to the suggestion that the global rate set by the English Court can be adjusted in light of foreign decisions, Huawei commented that this would result in a lack of finality whereby a decision of the English Court would not be dispositive. In response to judicial queries as to whether courts in China can determine foreign FRAND rates, Huawei contended that whether or not they can do so (indeed it was suggested that they can), this does not mean that the English Court should in the circumstances determine royalty rates in respect of China, where the vast majority of relevant sales are made. Huawei further contested the lower courts’ construction of the non-discrimination element of the FRAND obligation, contending as a matter of construction, law and policy that similarly situated implementers should be treated on a similar basis in the context of comparable transactions, unless there exists an objective justification for differential treatment (i.e. that the ND limb creates a hard-edged requirement). Accordingly, and contrary to the Unwired Planet decision on appeal, Huawei contended that it should have been entitled to the significantly lower rate at which the patents-in-suit were previously licensed to another party.


ZTE, the second appellant in the Conversant appeal, then presented its case, which complemented but in some respects differed from that of Huawei, centering on broader jurisdictional and institutional issues. ZTE first contended that where the English Court requires a global licence, it is fixing the price to be paid for licensing patents in foreign jurisdictions under the laws of the UK, in a manner that may affect the cost of operating in other jurisdictions and may be of concern to those jurisdictions whose socioeconomic policies may well be impacted. ZTE emphasised that in setting foreign royalties, due regard must be had to the antitrust/competition laws in each relevant jurisdiction, a point which it said was expressly rejected by Conversant. The English Court’s requirement that an implementer take a global licence upon threat of a UK-wide injunction was characterised as coercive, particularly so where the rate set by the English Court for a given jurisdiction may be higher than the rate set in that jurisdiction, having regard to its particular socioeconomic policies and objectives. Accordingly, ZTE contended that the English Court should not make market access to the territory conditional upon to its licensing terms, highlighting the trade-based dimensions of such a requirement.

As both an implementer and the owner of a substantial patent portfolio, ZTE submitted that while an implementer cannot insist on a jurisdiction-by-jurisdiction licence in every case, it does not follow that it will not be appropriate in certain cases. Neither did ZTE consider that FRAND licences should necessarily be global. The decision under appeal was said to provide no satisfactory basis upon which the court would decline to exercise jurisdiction, no matter how slight the connection nor the impact on other countries. The English Court would therefore have little basis to complain if a court in another jurisdiction sought to determine UK royalty rates in the context of a global licence, potentially leading a battle of anti-suit injunctions. By way of contrast with the approach of the English Court, ZTE cited instances where US courts have declined to extend jurisdiction in matters concerning foreign FRAND and antitrust given differing laws between jurisdictions. Much argument also centred on choice of jurisdiction, and the relief that can and should be sought from courts in various jurisdictions, with ZTE putting forward a differing alternate contention to Huawei. That it is not necessarily unreasonable for Conversant to have refused its request for a global FRAND determination in China, but rather that that it was unreasonable for Conversant to have insisted on a global FRAND determination in a jurisdiction other than China, given the high proportion of relevant sales attributable to China. ZTE further contended that, similar to the Huawei v ZTE (CJEU) decision setting out a framework for assessing whether a negotiation is FRAND, so too should courts have regard to whether the relief sought by the SEP-holder from the court is FRAND, having regard to whether the choice of jurisdiction is a reasonable one, and whether it has a sufficient connection with the real, underlying dispute.

Conversant/Unwired Planet 

Later in the afternoon, the respondents (Unwired Planet and Conversant) commenced their opening submissions. They rejected what was described as a ‘new’ contention that declared SEPs remain unlicensed until the validity of each patent is established in each jurisdiction, and contended that the appellants’ jurisdictional challenge was an attempt to avoid a carefully balanced ETSI contractual framework that is international in character, and that has at its heart a fair balancing between the interests of SEP-holders and implementers. They highlighted the international nature of the ETSI licensing scheme, the relevant technological standards and the markets supported by them, which not only renders jurisdiction-by-jurisdiction litigation inefficient, but actually gives rise to questions as to the legality of products licensed on such a basis, given the potential for parallel importation and global roaming. They contended that a patent-by-patent, jurisdiction-by-jurisdiction approach does not make sense in the context of portfolios containing potentially thousands of patents, and that the prospect of non-essentiality or invalidity is in fact priced into portfolio licences.

They further suggested that the applicants’ proposed scheme would be disadvantageous to SEP-holders by incentivising hold-out, allowing implementers to delay payment of royalties while proceedings are underway, and only subsequently requiring payment on a jurisdiction-by-jurisdiction basis. On this point, they contended that the valuing of a licence does not involve the determination of whether any specific patent under that licence is valid and infringed. They also pushed back on what they suggest is the appellants’ contention that there should be one scheme for consensual FRAND agreements, and a FRAND scheme arising in the context of legal proceedings whereby patents must be asserted and challenged in each jurisdiction before they can be licensed. Against the characterisation of a UK-wide injunction if an implementer refuses to take a global licence as imposing a coercive ‘price’ for access to the UK market, the respondents emphasised that such an injunction is only enforceable in the UK in respect of a UK-granted patent and can only be granted in respect of a SEP if a licence on FRAND terms is available. It was said to give effect to the ETSI undertaking by holding the patent-holder to its undertaking, by allowing the implementer to access the invention on FRAND terms, and by preventing them from seeking to participate in this international scheme without taking a licence.

Comments from the Bench

Lord Reed:  He commented on the international commercial and diplomatic significance of the issues raised in this case, suggesting that he might have expected to see interventions from the UK government, or even from foreign governments such as the Chinese government. He further showed a strong interest in construing the terms of the ETSI IPR policy. He also showed an interest in questions of jurisdictional comity, having regard to the sociopolitical aims embodied in the laws of different sovereign governments.

Lord Hodge:  He queried whether a fair balance between the rights of an intellectual property right holder and implementer will be obtained if patent family relatives are considered separately and in the context of each individual jurisdiction. At one stage he appeared to indicate that he could understand Huawei’s point about assessing the validity of foreign patents, but queried whether this necessarily extended to determining the value of licensing such patents.

Lord Briggs:  He stated that his understanding of the lower court decision in Conversant was that there was no evidence that a court in China would order a global licence, which appeared to relate to whether China would be a more appropriate forum for this dispute than the UK.

What's Due To Happen Next

On Day 3, the respondents will continue their opening submissions, and are expected to focus on the international nature of standards, undertakings to ETSI, declared patent families, and markets for products implementing said standards. They are also likely to make further submissions as to the inefficiency of litigating SEPs on a jurisdiction-by-jurisdiction basis, and that FRAND royalties can only be obtained in respect of patents that have been determined to be valid, essential and infringed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions