Shifting landscape in SEP FRAND litigation – 2021 will see hard fought disputes in China and India
2 min to read

Shifting landscape in SEP FRAND litigation – 2021 will see hard fought disputes in China and India

Date
09 December 2020

The UK Supreme Court’s decision in Unwired Planet and the German Supreme Court’s decision in Sisvel v Haier have set off a chain reaction which will see hard fought FRAND litigation in China and India in 2021.  As it becomes difficult in Europe for implementers to maintain the upper hand, the new defensive tactic is a combination of global FRAND rate determinations in China and anti-suit injunctions to thwart parallel overseas litigation.

The way was paved for this with bold statements by senior Judges in China in a series of articles dating back to May this year.  The Judges advocated strongly that Chinese Courts should take jurisdiction over FRAND rate determinations involving Chinese companies and that anti-suit injunctions should be deployed to protect the sovereignty of the Chinese Courts in such determinations.  The Unwired Planet ruling was a catalyst and in swift succession we have seen:

  • In the same week as the Unwired Planet decision (August) the Chinese Supreme People’s Court:
    • confirmed that the Chinese courts have jurisdiction over an implementer initiated standalone China FRAND rate determination case (ZTE v Conversant); and
    • granted an anti-enforcement injunction to Huawei to protect it from Conversant seeking to enforce an injunction it obtained in Germany (Huawei v Conversant).
  • In September an anti-suit injunction was granted in Wuhan preventing InterDigital from pursuing a foreign pending suit (Xiaomi v InterDigital);

  • In October (but reported in December), the Shenzhen Court confirmed it has jurisdiction to determine a global FRAND rate for a foreign SEP owner without consent of the SEP owner (Sharp v Oppo);

  • Courts ordering extremely high daily fines for non-compliance with injunctions (Huawei v Conversant; Xiaomi v InterDigital);

  • A willingness to grant injunctions ex-parte without notice;

  • A willingness to serve Complaints, Summonses and other Court documents directly without use of the Hague Convention.

FRAND/SEP litigation is rarely confined to one country.  For SEP owners, India is becoming the venue of growing importance in 2021 given (a) a willingness to grant interim relief; (b) a willingness to protect the sovereignty of its own Courts through anti-anti-suit injunctions; and (c) the size of the market for many unlicensed implementers.  The list of SEP owners bringing actions in India is growing.

For further information contact Matthew Laight and Christine Yiu

Share
Written by
Matthew Laight
Matthew Laight
Matthew heads Bird & Bird's Intellectual Property practice in AsiaPac. His practice covers contentious and non-contentious intellectual property and he has extensive experience across the AsiaPac region.
Related articles
Smart Contracts – Recognising and Addressing the Risks
4 min to read
29 December 2021
Smart Contracts – Recognising and Addressing the Risks
Smart contracts, where some or all of the contractual obligations are defined in and/or performed automatically by a computer program, are expected to have a significant impact on the way business is...
Technology Projects: Managing the Risks of Innovation and Change Part 3: Contract Reset and Dispute Resolution
Technology Projects: Managing the Risks of Innovation and Change Part 3: Contract Reset and Dispute Resolution
Customers in long-term technology projects can find that while they have been working towards their chosen solution a more advanced, cheaper, or simply more desirable technology has become available....
Digital dispute resolution rules to facilitate rapid and cost-effective resolution of disputes involving novel digital technologies
Digital dispute resolution rules to facilitate rapid and cost-effective resolution of disputes involving novel digital technologies
While some saw the development of products using blockchain technology leading to the demise of disputes, the reality is that disputes in the arena of digital technology are increasing in number. Lawtech’s...
Technology Projects: Managing the Risks of Innovation and Change Part 2: During the Life of the Project
Technology Projects: Managing the Risks of Innovation and Change Part 2: During the Life of the Project
Customers in long-term technology projects can find that while they have been working towards their chosen solution a more advanced, cheaper, or simply more desirable technology has become available....
Cookies
We use analytics cookies to help us understand if our website is working well and to learn what content is most useful to visitors. We also use some cookies which are essential to make our website work. You can accept or reject our analytic cookies (including the collection of associated data) and change your mind at any time. Find out more in our Cookie Notice.