BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
The Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL |
||
B e f o r e :
____________________
IPCOM GMBH & CO KG |
Claimant |
|
- and - |
||
(1) HTC EUROPE CO LTD (2) INGRAM MICRO (UK) LTD (3) HTC CORPORATION |
Defendants |
____________________
Thomas Hinchliffe QC and Colin West QC (instructed by Hogan Lovells) for the Defendants
Hearing dates: 21st October 2020
____________________
Crown Copyright ©
Mr Justice Birss :
i) A big number (more than a million) of phones which were sold in the UK and infringed the patent.
ii) An enormous number (over a hundred million) of phones which fall into one of three groups:
a) Workaround phones – i.e. phones sold as 3G phones but which did not infringe the patent;
b) 2G only phones, which necessarily never infringed the patent; and
c) Phones which were never imported into the UK and therefore never infringed the patent.
"40. … by reason of the Defendants' infringement of, and failure to take a FRAND Licence, the Claimant has suffered loss and damage in the form of loss of revenues under a notional licence which a willing licensor and a willing licensee in the position of the Claimant and the HTC Defendants would have agreed immediately prior to the commencement of the Defendants' infringing activities to the Claimant's Portfolio, of which the Patent forms part, that being worldwide in scope ("the Notional Global Licence") and damage to its licensing business with other implementers as a consequence of the Defendants' very public Hold Out Behaviour. The royalty rate for the Notional Global Licence is a per device Market Rate which takes account of all relevant aspects of the Claimant's damages under section 61(1)(c) of the 1977 Act and Regulation 3 ("the Global Market Rate"). "
i) The only acts of infringement relied on are acts committed within the UK relating to products which fall within the relevant claims of the UK patent in suit. The simplest example is sales of phones which fall within the claims. It makes no difference whether the claims are product claims or process claims. No other acts of infringement are relied on.
ii) The notional licence relied on is one which is multinational in scope. The simplest example would be a global licence. The key thing is that the licensee will be paying so as to receive a licence in states other than the UK (e.g. all over the world) under the whole or some non-UK part of the patentee's declared standards essential portfolio for a given standard.
iii) It makes no difference whether the licence is for 3G alone or 2G and 3G (or includes 4G too). It also makes no difference whether the licence requires royalties to be paid on phones which infringe or is drafted in such a way to cover workaround phones. The particular effective date makes no difference. Nor does it matter whether this is a licence for a portfolio of patent families or just the family of which the UK patent is a member. It does matter that it is a licence of foreign patents. That is because in a case in which the only patent or application the patentee had, and had any prospect of getting, was a UK patent, the argument that a licence with a scope wider than the UK would be entered into is fanciful.
Other points
Why not strike out the claim in relation to non-infringing UK phones too?
Conclusion