EIP secured a significant victory for its client Conversant Wireless Licensing S.à r.l. (Conversant) in its longstanding mobile telecommunications Standard Essential Patent (SEP) dispute against Huawei and ZTE at the High Court.
In the judgment, handed down on 8 January 2020 by Mr Justice Birss, the court determined that claims of two of Conversant’s European patents, EP (UK) 1,878,177 and EP (UK) 3,267,722, were valid and essential to the LTE standard. These patents are thereby infringed, in the UK, by Huawei and ZTE mobile devices operating in accordance with the LTE standard.
The technology underlying these two patents facilitates high data rates in a mobile telecommunications network and is deployed in the semi-persistent scheduling (SPS) feature of LTE to which the patents have been found essential.
Conversant is also asking the court to declare that it has made a fair, reasonable and non-discriminatory (FRAND) offer to license its SEP portfolio to each defendant, or alternatively to determine the terms for a FRAND license to each defendant. The FRAND trial is scheduled for April 2020, pending the judgement of a jurisdictional appeal by Huawei and ZTE to the Supreme Court.
Robert Lundie Smith, the partner who led the EIP team, said:
“We are delighted to have been able to work with and represent Conversant in proving the validity, essentiality and thereby infringement of two of its LTE patents. This judgment represents a major victory in a long-standing dispute over payment for the use of Conversant’s portfolio of standard essential telecoms patents. It is a significant step forward for Conversant in its wider dispute with Huawei and ZTE and paves the way to the High Court now considering the FRAND licence fees due to Conversant by both Huawei and ZTE.
Boris Teksler, Conversant CEO, said:
“We are very pleased with the judgement today. This confirms the strength of the Conversant Wireless portfolio. We look forward to a positive judgement from the UK Supreme Court and the upcoming FRAND trial.”
The EIP team comprised Robert Lundie Smith, Jerome Spaargaren, Heather McCann, Sunny Bansal, Joanne Welch, Myra Sae-Heng and Owen Waugh. Counsel for Conversant were Tom Moody-Stuart Q.C., James Whyte and Charles Brabin.
Four EIP associates have been recognised among the UK’s up-and-coming IP practitioners.
Patent attorneys Tim Belcher, Gemma Wooden, Felix Hall and solicitor Catherine Howell, have been ranked as “Rising Stars” in the 2019 edition of IP Stars, published by Managing Intellectual Property Magazine.
Rising Stars are those below partner level who are expected to become prominent practitioners in the future in their firm and jurisdiction.
Individuals are selected based upon information submitted by firms, together with recommendations received from clients and feedback from the wider IP market.
EIP has been described as “a role model for how to develop a mixed patent practice” in the first ranking of leading UK IP firms published by Juve.
Three partners were ranked as “recommended individuals” – Gary Moss, Jerome Spaargaren and Darren Smyth.
EIP success in “two precedent cases for Unwired Planet and Conversant concerning FRAND” was highlighted, with researchers commenting “these are particularly significant with the European patent community currently looking to the UK Supreme Court for an indication as to how London patent courts will rule on global licences.”
Juve has analysed and ranked the German patent market for 20 years and for its first ranking of UK firms, gathered almost 1,400 individual recommendations from attorneys working in private practice and in-house, obtained data from 100 firms and conducted 40 research meetings with barristers, law firms and patent attorney firms.
As EU member states grapple with the implementation of the new EU copyright directive, solicitor Jack Dickerson considers what can be done to avoid falling foul of Articles 15 and 17, in this article in the December/January issue of Intellectual Property Magazine.
EIP today achieved further success for its Finnish client Teleste Corporation, manufacturer of cable television equipment, and their UK subsidiary Teleste Limited when His Honour Judge Hacon, sitting as a Deputy Judge of the United Kingdom Patents Court, handed down his decision in Technetix BV and Technetix Limited’s patent infringement action against Teleste Limited.
The Judgment was favourable to Teleste in that the Judge determined that Technetix’s patent was invalid on several grounds and that it should be revoked.
This decision follows on from a previous decision of Judge Hacon in January of this year in another action brought by Technetix against Teleste alleging infringement of its United Kingdom patent relating to tap banks. In that earlier decision Judge Hacon, then sitting as a Judge in the Intellectual Property Enterprise Court (IPEC), found that Technetix’s patent in that case was also invalid and should be revoked.
Gary Moss, the Head of EIP Legal, who led the EIP team on both actions, said:
“This latest decision coupled with the earlier IPEC decision represents a very satisfactory outcome for our client, Teleste Corporation. These cases have been hanging over them since the end of 2016, and it has been a surprisingly long haul. These two decisions are a complete vindication of the positions which our client adopted in these actions and are the outcome of some very hard work by our team.”
Johan Slotte, the Deputy CEO of Teleste Corporation, said:
“We are obviously very pleased and gratified at the outcome of these two cases and are appreciative of Judge Hacon’s careful consideration of the issues. We were subject to some very serious allegations and it is good that these have now been shown to be without merit.
We would like to thank our lawyers, EIP Legal, for their fine work in the conduct of both actions and for their sound advice and continued support throughout."
It is not clear whether Technetix will seek to appeal this latest decision. They can only do so with the permission of the Judge or the Court of Appeal. Technetix did not seek to appeal the IPEC judgment earlier this year.
The EIP team comprised Gary Moss, Angela Jack, Jack Dickerson, Owen Waugh and Laurence Brown. Counsel for Teleste were James Mellor QC and Thomas Jones.