Essential patents in the telecommunications sector

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In Unwired Planet International Ltd v Huawei Technologies Co Ltd and others [1] the claimant, Unwired Planet, claimed that the defendants had infringed its patent for a method of improving handovers between mobile telecommunication systems. The three issues for Birss J to determine were whether the patent (1) had been infringed; (2) was ambiguous; and (3) was obvious over common general knowledge and a document written in 1999.

Birss J found that (1) the patent had been infringed; (2) the invention was disclosed sufficiently clearly and completely for it to be performed by a skilled person; and (3) the claims were not obvious over the common general knowledge obvious or the 1999 document.

Patent claims are, of course, prolific in the telecommunications sector, a sector which has also been more than usually susceptible to patent trolls or “patent assertion entities”, entities that acquire patents for the purpose of pursuing aggressive litigation in order to collect settlement monies or licensing fees from parties that they claim are allegedly infringing. Whilst it is not suggested at all that Unwired Planet is a patent troll, the case does demonstrate the extraordinary benefits that can derive from the ownership of leading patents in the telecommunications sector.

In this case, the patent in suit had been acquired by Unwired Planet from Ericsson. The patent was essential to a wireless telecommunications standard, which meant that anyone operating in compliance with that standard would need to negotiate a licence on FRAND (fair, reasonable and non-discriminatory terms) with Unwired Planet as the patent holder.

Subsequent to this judgment, Unwired Planet has announced that it will be selling its patent licensing business for up to US$ 40 million.


[1] [2016] EWHC 576 (Pat)