FRAND-Licensing Litigation Across the Atlantic: A Comparative Assessment of US and UK Jurisprudence on Telecom Disputes
[A Portuguese-language version of this issue brief is available here.]
I. Introduction
The global dissemination of telecommunication technologies, notably 5G, has enhanced interconnectivity across networks, borders, and suppliers of high-tech products and services. The reliability and speed of these advanced technologies have served to enhance mobile broadband and improve applications used in the Internet of Things (IoT), robotic automation, artificial intelligence (AI), and autonomous vehicles, among others. Across many industries, they have yielded economic gains that are estimated to reach US$13.2 trillion by 2025[1].
Given the telecommunications sector’s economic value, a growing number of legal disputes across various jurisdictions have centred on standard-essential patents (SEPs) for telecom technologies, and their licensing on fair, reasonable and non-discriminatory (FRAND) terms. Standard-setting organizations (SSOs) typically require members to disclose their SEPs—that is, patents deemed essential for a given technical standard. In exchange for the broad adoption of those patents, the SEP holder will often commit to the SSO to license it on FRAND terms.
While such licensing terms would ideally be set through amicable negotiations between SEP holders and implementers, the parties may hold diverging views on such issues as the base determination, methodologies to calculate royalties, patent portfolio valuation, license duration, geographical scope, interpretation of non-discrimination requirements, and reciprocity in cross-licensing. FRAND disputes have also gone global, with parties engaged in forum shopping to find jurisdictions whose approach would be more favourable to them[2].
One major source of disagreement between SEP holders and implementers concerns the geographic scope of FRAND licensing. While SEP holders typically push for global portfolio licenses to cover their entire patent families worldwide, implementers often prefer territorially limited licenses covering only the specific countries where they face litigation. This tension has been a central issue in FRAND disputes worldwide, although recent court decisions and the parties’ own positions increasingly reflect that global licenses are FRAND-compliant.
Another significant point of contention is the interplay between the contractual nature of FRAND commitments and the application of competition law. While FRAND commitments are considered contractual obligations undertaken by SEP holders toward SSOs, these commitments also serve the broader purpose of preventing potential anticompetitive effects that might arise from any market power gained through standardization. This dual nature raises complex questions about whether breaches of FRAND commitments should be addressed primarily through contract-law remedies, or whether competition law should play a more prominent role in regulating FRAND-licensing practices—particularly when SEP holders gain significant market power after their technologies become part of industry standards.
This issue brief offers a comparative analysis of how two of the most important jurisdictions for FRAND jurisprudence—the United Kingdom (UK) and the United States (U.S.)[3]—have addressed key issues arising in these complex disputes. It focuses on global FRAND licensing and the nature of FRAND commitments, and the nuanced differences and similarities in how the courts in each jurisdiction have interpreted these doctrines.
Both jurisdictions recognize the efficiency of global portfolio licensing as standard industry practice, with courts in both countries acknowledging that global licenses can be FRAND-compliant, and that country-by-country licensing would be inefficient. The UK courts, following the landmark Unwired Planet v. Huawei decision, have in certain circumstances established clear authority to determine global FRAND rates without requiring specific consent from the parties. While U.S. courts have similarly set worldwide rates, this has typically only been done in contexts where the parties have agreed to court adjudication of global terms.
This brief will also assess how enforcement of FRAND commitments as a contractual obligation between SEP holders and the SSOs is carried out in each of these jurisdictions, highlighting the varying degrees to which courts in the UK and U.S. incorporate competition-law considerations. While both jurisdictions predominantly conceptualize FRAND commitments as contractual in nature, UK courts have maintained a narrow but present role for competition-law analysis under Article 102 TFEU. By contrast, U.S. courts have established a higher threshold for competition-law intervention, emphasizing that disputes over FRAND terms should be resolved through contract and patent-law frameworks, and shying away from antitrust remedies.
By examining the approaches adopted by these two influential jurisdictions to global FRAND licensing and the contractual nature of FRAND commitments, this piece aims to identify emerging practices and potential areas of convergence that could provide greater certainty for both SEP holders and implementers in an increasingly interconnected global telecommunications ecosystem. As the economic value of standardized technologies continues to grow and disputes over patent licensing continue, understanding these differing approaches can inform possible alternatives to resolve FRAND disputes more effectively.
II. Global FRAND Licensing
One major area of disagreement between SEP holders and implementers, which has led to numerous disputes, is the geographic scope of FRAND licensing. While SEP holders typically favour global licenses that encompass their entire patent portfolios, implementers often prefer territorially limited licenses covering only the specific countries where they face litigation. This tension has become a central issue in FRAND disputes and has led to legal battles involving the same parties concomitantly in Europe, Asia, and North America[4]. The prevalence of such disputes has sparked various proposals to address the issue, coming from academia[5] [6], policymakers[7], and the courts.
Courts have emerged as the principal arbiters to resolve the complex tensions between SEP holders and implementers regarding FRAND terms. The landmark case Unwired Planet v. Huawei[8][9] has served as precedent for subsequent decisions globally, influencing assessments by courts in the UK, U.S., continental Europe, and China, among others.
When Unwired Planet offered to license its global SEP portfolio to Huawei, the latter insisted on only licensing Unwired’s UK patents. Justice Colin Birss of the UK High Court, recognizing that both parties operated as multinationals, held that industry practice in “the vast majority” of cases favored worldwide licenses. He rejected Huawei’s country-by-country approach as impractical and inefficient, citing not only the cross-border mobility of telecommunications devices but also the substantial transactional inefficiencies of negotiating multiple licenses and maintaining “many different royalty calculations and payments”. Most significantly, in the context of Unwired Planet having asserted its UK SEPs against Huawei in the UK High Court, Justice Birss asserted the court’s authority to determine global FRAND rates, despite the territorial nature of patent rights. That understanding was subsequently upheld by both the UK Court of Appeal and Supreme Court in this case.
The Unwired Planet decision established several key principles. First, that FRAND encompasses a range of terms, rather than a single set. Acknowledging the complexity of licensing negotiations and the need for flexibility, the decision recognized that multiple different arrangements could all potentially satisfy FRAND requirements. Second, that the non-discrimination obligation does not require identical terms for all licensees but rather exists to prevent competitive disadvantages between similarly situated licensees. As such, Justice Birss favored a flexible approach where different terms could be offered to different licensees based on factors like their size, market position, or volume. Third, it established that courts could set specific, global FRAND royalty rates in this situation. Finally, it determined that injunctive relief is appropriate in the UK when implementers refuse court-determined FRAND terms. This provides an enforcement mechanism for SEP holders, balancing the implementer’s right to access standardized technology with the patent holder’s right to receive fair compensation, addressing the “hold-out” problem.
Following Unwired Planet v. Huawei, several significant UK cases have further developed the jurisprudence on global FRAND licensing. In Optis v. Apple[10], the UK High Court reinforced the precedent of setting global FRAND rates, with Justice Richard Meade determining that Apple had to accept a global license for Optis’ SEP portfolio or face a UK injunction[11]. This would mean that Apple could effectively have its products excluded from the UK market on grounds of infringing Optis’ UK patents. The court ultimately set a global FRAND rate, requiring Apple to pay US$5.13 million annually[12].
Similarly, in InterDigital v. Lenovo[13], where InterDigital sued Lenovo for patent infringement in the UK, the UK court further cemented its position as a forum for global FRAND determinations. Justice James Mellor set a global FRAND rate for InterDigital’s 3G, 4G, and 5G SEP portfolio and the court rejected Lenovo’s arguments for country-by-country licensing. These cases illustrate the UK courts’ consistent willingness to set global FRAND terms in such situations, their evolving methodologies to determine rates, and how they seek to balance the interests of SEP holders and implementers—further solidifying the principles established in Unwired Planet.
In its 2017 communication clarifying the European Union’s (EU) approach to SEPs, the European Commission also incorporated the efficiency approach of Unwired Planet in support of global FRAND licensing. Accordingly, the Commission “considers that the same principles of efficiency support the practice of SEP portfolio licensing for products with global circulation. As noted in a recent ruling, a country-by-country licensing approach may not be efficient and may not be in line with a recognised commercial practice in the sector”[14].
On the other side of the Atlantic, U.S. courts’ jurisprudence on global FRAND licensing reveals both points of convergence and divergence with their UK counterparts. Prior to Unwired Planet, the U.S. courts demonstrated in Microsoft v. Motorola[15] a willingness to assert jurisdiction over FRAND disputes, albeit with a more restrained approach to global rate-setting than seen in Unwired Planet. The case began when Microsoft sued Motorola in the U.S. District Court for the Western District of Washington, alleging breach of FRAND commitments related to video coding and Wi-Fi SEPs belonging to Motorola. Microsoft argued that Motorola demanded unreasonably high royalties for its SEPs. In his decision, Judge James Robart found that FRAND commitments constitute enforceable contracts between SEP holders and SSOs, with implementers as third-party beneficiaries. He further established a methodology to calculate appropriate FRAND royalties for the global SEP portfolio owned by Motorola.
Both Microsoft v. Motorola and Unwired Planet v. Huawei addressed the determination of FRAND royalty rates for SEPs, establishing judicial frameworks for calculating appropriate rates. But the approach in Microsoft v. Motorola also differed from Unwired Planet v. Huawei in certain key respects: while U.S. courts also assert jurisdiction over global FRAND disputes and recognize the global nature of these technologies, they typically stop short of imposing mandatory worldwide licensing terms. Instead, they determine appropriate FRAND rates as part of breach-of-contract remedies, with these rates serving as a framework for negotiation, rather than as court-mandated global licenses. This approach, subsequently affirmed by the 9th U.S. Circuit Court of Appeals[16], reflects U.S. courts’ preference for establishing principles to guide parties toward negotiated solutions on global FRAND terms, while exercising more restraint in directly setting binding terms.
One possible explanation for this difference is that, unlike in Unwired Planet v Huawei, Motorola did not seek to enforce its U.S. patents against Microsoft in Microsoft v. Motorola. Microsoft therefore did not have the choice to either adhere to global FRAND terms set by the court or face an injunction in the U.S. By comparison, in each of the UK cases analyzed above, the implementer faced a choice of a UK injunction or accepting global FRAND terms set by the court, as the SEP holders had sought to enforce their UK patents in UK courts.
Following an approach similar to the UK courts in Unwired Planet, Judge James Selna of the U.S. District Court for the Central District of California decided in TCL v. Ericsson[17] to directly set global FRAND rates for Ericsson’s SEP portfolio. However, the U.S. Court of Appeals for the Federal Circuit later vacated Selna’s decision on procedural grounds[18], highlighting a key procedural difference in the U.S. system: the right to jury trial, rather than a single judge, to determine global FRAND rates.
Following the Federal Circuit’s decision, U.S. courts have largely returned to the more restrained Microsoft v. Motorola framework. Recent cases such as HTC v. Ericsson[19] and Lenovo v. InterDigital[20] have focused on establishing principles for global FRAND compliance and interpreting contractual obligations, rather than attempting to set specific global rates.
When U.S. courts address global portfolio licensing, they typically approach it through the lens of contractual interpretation and damages for breach, rather than imposing mandatory worldwide licensing terms to the parties. As a result, the parties’ autonomy in negotiations is preserved and market-oriented solutions are encouraged.
III. UK and US Contractual Approaches to FRAND Commitments
FRAND commitments emerge from standard-setting organizations (SSOs) when those SSOs’ members vote to incorporate patented technologies into industry standards. In exchange for standardization, SEP holders agree to make licenses to their essential patents available on fair, reasonable, and non-discriminatory terms.
Since most SSOs do not specify or interpret in their policies what comprises FRAND commitments[21], SEP holders and implementers face inherent challenges to reaching common ground in licensing negotiations, given their opposing economic interests. Nevertheless, the vast majority of FRAND licensing negotiations are resolved through private mutual agreements between SEP holders and implementers, rather than through court decisions.
When FRAND disputes do reach the courts, however, the disputes sometimes implicate the question of whether and to what extent competition law should play a role in FRAND disputes, or whether these issues should be left solely to contract and patent law. Finding the proper balance in such debates and determining which legal principles should be emphasized is crucial to ensuring both fair compensation for innovation and access to standardized technologies.
Both UK and U.S. courts have predominantly conceptualized FRAND commitments as contractual obligations between SEP holders and SSOs, with implementers considered third-party beneficiaries[22]. As such, FRAND commitments function as safeguards against anticompetitive behaviour, effectively limiting SEP holders’ ability to leverage market power arising from their patents once they are incorporated into technical standards.
The UK High Court considered competition concerns in Unwired Planet v. Huawei, concluding that Unwired Planet’s offers were not contrary to Art. 102(a) of the Treaty on the Functioning of the European Union (TFEU), which prohibits abusive behaviour by companies holding a dominant position[23]. Justice Birss held that there had been no breach of Article 102, clarifying that while the Court of Justice of the European Union (CJEU) had defined a clear safe harbour in Huawei v. ZTE[24], falling outside that harbour did not automatically entail a breach of EU competition law[25]. The Court dismissed all of Huawei’s competition-law counterclaims, including its argument that Unwired Planet was in breach of the Huawei v. ZTE principles, finding that failure by the patentee to comply with those principles does not necessarily mean an abuse has occurred.
In its final judgment in Unwired Planet v. Huawei[26], the UK Supreme Court reiterated the position that SEP holders seeking injunctive relief do not necessarily violate EU competition law when they deviate from the precise framework established in Huawei v. ZTE. More specifically, the Supreme Court agreed with Justice Birss that the fact that Unwired Planet filed the lawsuit before it had offered FRAND terms to Huawei did not constitute a violation of EU competition law[27]. This interpretation seeks to enhance efficiency for parties conducting FRAND negotiations, as it establishes clear boundaries for the application of competition law, while preserving the court’s ability to determine FRAND terms when negotiations fail.
The contractual framing was reinforced in Optis Cellular Technology LLC v. Apple Retail UK Ltd[28], where the UK High Court emphasized that an implementer’s obligation to accept a FRAND license arises from the contractual nature of the FRAND commitment, rather than from competition-law concerns about abuse of dominant position. The High Court ruled that there was neither dominance nor abuse and argued the implementer’s contention that they had been abuse of dominance was a disguised “attack on a party’s freedom to negotiate price”[29].
For their part, U.S. courts have primarily treated FRAND commitments as purely contractual obligations and hence have not integrated antitrust analysis in related cases. This contrasts with the approach of UK courts, even if the latter have applied only a very narrow interpretation of dominance and abuse under Art. 102 TFEU in FRAND disputes. As a result, U.S. courts have erected an even higher threshold for competition-law intervention in FRAND disputes under their jurisdiction.
In Microsoft v. Motorola[30], the district court affirmed that Motorola’s FRAND commitments to SSOs created an enforceable contract, with implementers like Microsoft serving as third-party beneficiaries. On summary judgment, the court held that “Microsoft entered into binding contractual commitments with the IEEE and the ITU, committing to license its declared-essential patents on RAND terms and conditions”[31]. At a later stage, the district court focused on determining contractually reasonable royalty rates, rather than addressing potential antitrust violations[32].
The contractual approach was further reinforced in HTC Corp. v. Telefonaktiebolaget LM Ericsson[33], where the 5th U.S. Circuit Court of Appeals held that the “FRAND commitment is embodied in Clause 6.1. of ETSI’s IPR [Intellectual Property Rights] Policy and is governed by French contract law”[34], thereby creating a contractual obligation for Ericsson to offer licenses on FRAND terms. Despite HTC’s original antitrust claims against Ericsson that alleged the latter engaged in anticompetitive conduct by not offering “royalties to HTC under reasonable rates”[35], the district court did not directly apply antitrust laws to resolve these claims. Instead, it found that HTC’s antitrust claims were subject to arbitration under prior license agreements[36].
More recently, the 9th U.S. Circuit Court of Appeals’ decision in FTC v. Qualcomm Inc.[37] further reinforced the distinction between contractual FRAND obligations and antitrust liability. The appeals court reversed the lower court’s finding of antitrust violations, raising the threshold to establish competition-law violations in FRAND contexts. The 9th Circuit found that the market in which Qualcomm operated and where harm was alleged to have taken place were distinct. In fact, the alleged harm would only affect Qualcomm customers, who operate outside the relevant markets where Qualcomm competes. Therefore, such alleged harm would be situated “beyond the scope of antitrust law”[38]. In addition, the court urged “caution about using the antitrust laws to remedy what are essentially contractual disputes between private parties engaged in the pursuit of technological innovation”[39]. It further rebutted the lower court’s assumption that royalties are anticompetitive in the antitrust sense, arguing that the fair value of SEP portfolios is to be assessed under patent law[40], and any potential breaches of FRAND commitments should be remedied by patent and contract law[41].
IV. Conclusion
Based on the comparative analysis offered here, one observes that the U.S. and UK approaches to global FRAND licensing share certain fundamental similarities in recognizing the global nature of SEP licensing and the practical inefficiencies of country-by-country FRAND licensing. Courts in both jurisdictions have asserted their jurisdiction to set global FRAND rates in certain cases and found that FRAND commitments create enforceable obligations.
The differences between the UK and U.S. approaches are more nuanced than is often appreciated: while UK courts have since Unwired Planet been more direct in setting specific global rates backed by injunctive relief, U.S. courts following Microsoft v. Motorola do assert jurisdiction over global disputes, but tend to establish guiding principles to shape negotiations, rather than imposing mandatory terms. This distinction reflects different judicial philosophies regarding the appropriate level of court intervention, rather than fundamentally incompatible views on global licensing. In practice, both approaches acknowledge the reality that most FRAND licenses are negotiated globally, with the vast majority of disputes resolved via settlement, rather than final judgment.
Where the jurisdictions’ approaches diverge is primarily in the specific mechanisms through which courts exert influence on FRAND-licensing negotiations. UK courts favor direct FRAND rate-setting in the context of enforcing the SEP holder’s UK patents, while U.S. courts prefer to establish analytical methodologies and guiding principles for assessing FRAND royalty rates that the parties can apply in their negotiations. But both UK and U.S. courts have a shared ultimate objective of facilitating efficient global licensing of standardized technologies.
This examination of judicial approaches to FRAND commitments reveals a clear preference for contractual and patent-law frameworks over competition-law interventions in both UK and U.S. jurisdictions, albeit with varying degrees of emphasis. The UK courts, while acknowledging the potential relevance of competition law in FRAND disputes, have established a high threshold for finding dominance or abuse under Article 102 TFEU, as evidenced in the seminal cases of Unwired Planet v. Huawei and Optis v. Apple. U.S. courts have gone further still, creating an even more stringent standard for the application of antitrust in FRAND contexts, as demonstrated in FTC v. Qualcomm, where the 9th Circuit explicitly cautioned against using antitrust law to resolve what it considers fundamentally contractual disputes.
This convergence toward a contractual interpretation of FRAND commitments demonstrates a pragmatic approach to the delicate balance sought between two imperatives: fostering technological innovation through fair remuneration to SEP holders and democratizing access to standardized technologies for implementers. By predominantly framing FRAND commitments as contractual obligations with implementers as third-party beneficiaries, both UK and U.S. courts have established a legal framework focused on the primacy of private ordering in technology markets, while maintaining judicial oversight when negotiations fail.
[1] The 5G Economy: How 5G Will Contribute to the Global Economy, IHS Markit (2019), available at https://www.qualcomm.com/content/dam/qcomm-martech/dm-assets/documents/the_ihs_5g_economy_-_2019.pdf.
[2] Jorge L. Contreras, The Global Standards Wars: Patent and Competition Disputes in North America, Europe and Asia 1 (University of Utah, College of Law Research Paper No. 353, 2018),353), available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3106090.
[3] Other relevant jurisdictions that parties resort to for resolving FRAND disputes include Germany, China, Japan, France, the Netherlands, and India. The European Union’s Unified Patent Court (UPC), which became operational 1 June 2023, is expected to acquire relevance and become an additional authoritative reference in FRAND disputes over time.
[4] Contreras, supra note 2.
[5] Examples of legal scholarship stating that most FRAND disputes have a global dimension and ideally should result in licensing at a global level include, among others, Jorge L. Contreras et al., The Effect of FRAND Commitments on Patent Remedies, in PATENT REMEDIES AND COMPLEX PRODUCTS: TOWARD A GLOBAL CONSENSUS, 184 (Brad Biddle, Jorge L. Contreras, Brian J. Love, & Norman v. Siebrasse, eds., 2019), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3248726. (“The continuing conduct of multiple parallel proceedings is not cost efficient or time efficient, in spite of the fact that many if not all FRAND disputes are global (and would ideally materialize in global FRAND licensing transactions”); Garry A. Gabison, Worldwide FRAND Licensing Standard, 8 AM. U. BUS. L. REV. 217 (2019), https://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?article=1118&context=aublr.
[6] Jorge L. Contreras, Global Rate Setting: A Solution for Standards-Essential Patents?, 94 Wash. L. Rev. 701 (2019), https://digitalcommons.law.uw.edu/wlr/vol94/iss2/5.
[7] The European Commission has proposed a regulation on SEPs (COM((2023)232, https://single-market-economy.ec.europa.eu/publications/com2023232-proposal-regulation-standard-essential-patents_en), with the goal of enhancing transparency, reducing information asymmetry and facilitating agreements on FRAND licenses. The proposal raised concerns by stakeholders, and it was withdrawn by the Commission in Feb. 2025 “due to no foreseeable agreement.” Available at: https://ec.europa.eu/newsroom/eismea/items/871191/en.
[8] Unwired Planet Int’l Ltd v. Huawei Technologies & Ors. [2017] EWHC 711 (Pat), available at https://www.judiciary.uk/wp-content/uploads/2017/04/unwired-planet-v-huawei-20170405.pdf.
[9] Summaries of court rulings on FRAND disputes issued by the UK courts, the Court of Justice of the European Union, and the national courts of several EU member states are available at https://caselaw.4ipcouncil.com. A list with relevant UK cases on SEPs is available on the UK government website at https://www.gov.uk/guidance/uk-seps-case-law.
[10] Optis Cellular Technology LLC & Ors v. Apple Retail UK Ltd & Ors, [2021] EWHC 2564 (Pat).
[11] Id., par. 336-341.
[12] Optis Cellular Technology LLC & Ors v. Apple Retail UK Ltd & Ors, [2023] EWHC 1095 (Ch), par. 497, available at https://www.judiciary.uk/wp-content/uploads/2024/02/Optis-Cellular-Technology-v-Apple-Retail-UK-10.05.23-Redacted-version.pdf.
[13] InterDigital Technology Corporation & Ors v. Lenovo Group Ltd & Ors, [2023] EWHC 539 (Pat), https://www.wipo.int/wipolex/en/judgments/details/2187.
[14] Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee Setting Out the EU Approach to Standard Essential Patents, COM/2017/0712 final (2017), p. 7, https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex:52017DC0712.
[15] Microsoft Corp. v. Motorola, Inc., No. C10-1823JLR (W.D. Wash. 2013), https://www.wipo.int/wipolex/en/judgments/details/2218.
[16] Microsoft Corp. v. Motorola Inc., 696 F.3d 872 (9th Cir. 2012), https://www.wipo.int/wipolex/en/judgments/details/2224.
[17] TCL Communication Technology Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson, consolidated cases Nos. 8:14-CV-00341 JVS-DFMx and 2:15-CV-02370 JVS-DFMx (C.D. Cal. 2018), https://www.wipo.int/wipolex/en/text/591444.
[18] TCL Communication Technology Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson, 943 F.3d 1360 (Fed. Cir. 2019), https://www.wipo.int/wipolex/en/text/591372.
[19] HTC Corp. v. Telefonaktiebolaget LM Ericsson, 18-cv-00243, Dkt. No. 376 (E.D. Tex. 7 Jan. 2019), available at https://ipwatchdog.com/wp-content/uploads/2024/02/HTC-v.-Ericsson-Memorandum-Opinion-and-Final-Judgment-3.pdf.
[20] InterDigital Technology Corporation & Ors v. Lenovo Group Ltd & Ors, [2023] EWHC 539 (Pat), https://www.wipo.int/wipolex/en/judgments/details/2187.
[21] Chryssoula Pentheroudakis & Justus A. Baron, Licensing Terms of Standard Essential Patents: A Comprehensive Analysis of Cases, Jt. Res. Cent. (2017), at 166, https://publications.jrc.ec.europa.eu/repository/handle/JRC104068.
[22] This view has also been supported in the literature. See Mark A. Lemley, Intellectual Property Rights and Standard-Setting Organizations, 90 Calif. Law Rev. 1889 (2002), https://ssrn.com/abstract=310122; see also David J. Teece, Restoring and Revitalizing Technology Markets for Mobile Wireless: Geopolitical Dimensions of Patented Technology Embedded in Standards, in 5G and Beyond: Intellectual Property and Competition Policy in the Internet of Things (Cambridge University Press, 2023), at 1-50, available at https://www.cambridge.org/core/books/5g-and-beyond/intellectual-property-and-competition-policy-in-global-wireless-markets/D3B7792D751E5AE28B4F565317F9A6F3#FN-fn-29.
[23] Justice Birss concluded that “a worldwide licence would not be contrary to competition law. Willing and reasonable parties would agree on a worldwide license. It is the FRAND licence for a portfolio like Unwired Planet’s and an implementer like Huawei. Therefore, Unwired Planet are entitled to insist on it. It follows that an insistence by Huawei on a licence with a UK only scope is not FRAND”. [2017] EWHC 711 (Pat), par. 572, available at https://www.judiciary.uk/wp-content/uploads/2017/04/unwired-planet-v-huawei-20170405.pdf.
[24] The European Court of Justice’s decision in Huawei v. ZTE (Case C-170/13, 2015, https://curia.europa.eu/juris/liste.jsf?num=C-170%2F13) established guidelines to evaluate potential market power abuses under Article 102 TFEU when SEP owners pursue injunctions. The decision outlined a procedural approach that requires SEP holders to notify the potential licensee about the specific patent infringement; provide a concrete FRAND-licensing proposal once the implementer shows interest; and give the implementer reasonable time to respond meaningfully. The ECJ positioned these steps not as rigid requirements, but as protective measures that, when followed, shield SEP holders from competition-law liability. The ECJ sought to balance competing interests of protecting intellectual property and access to courts on one hand, while preventing anticompetitive behaviour on the other.
[25] HTC Corp., supra note 19.
[26] Unwired Planet International Ltd. and Another (Respondents) v Huawei Technologies (UK) Co. Ltd. and Another (Appellants), [2020] UKSC 37, https://www.supremecourt.uk/cases/uksc-2018-0214.
[27] Id., par. 146.
[28] [2021] EWHC 2564 (Pat), available at https://www.judiciary.uk/wp-content/uploads/2024/02/Optis-Cellular-Technology-v-Apple-Retail-UK-10.05.23-Redacted-version.pdf.
[29] Id., par. 385.
[30] Microsoft Corp. v. Motorola, Inc., 854 F. Supp. 2d 993 (W.D. Wash. 2012), https://www.wipo.int/wipolex/en/text/591394.
[31] Id., at 17.
[32] Microsoft Corp. v. Motorola, Inc., No. C10-1823JLR (W.D. Wash. 2013), https://www.wipo.int/wipolex/en/text/591387; see also Kassandra Maldonado, Breaching RAND and Reaching for Reasonable: Microsoft v. Motorola and Standard-Essential Patent Litigation, 29 Berkeley Technol. Law J. 419 (2014), available at https://lawcat.berkeley.edu/record/1126231?ln=en&v=pdf.
[33] HTC Corp. v. Telefonaktiebolaget LM Ericsson, 12 F.4th 476 (5th Cir. 2021), https://www.wipo.int/wipolex/en/judgments/details/2199.
[34] Id., at 12.
[35] HTC Corp. v. Telefonaktiebolaget LM Ericsson, 18-cv-00243, Dkt. No. 376 (E.D. Tex. 7 Jan. 2019), at 2, available at https://ipwatchdog.com/wp-content/uploads/2024/02/HTC-v.-Ericsson-Memorandum-Opinion-and-Final-Judgment-3.pdf.
[36] Id.
[37] Federal Trade Commission v. Qualcomm Inc., 969 F.3d 974 (9th Cir. 2020), available at https://cdn.ca9.uscourts.gov/datastore/opinions/2020/08/11/19-16122.pdf.
[38] Id., at 30-31.
[39] Id., at 39.
[40] Id., at 44.
[41] Id., at 56.