MasterCard and Visa MIFfed as the Court of Appeal considers two-sided markets; SCOTUS itself is two-sided (Part 2 – the USA)

Following on from yesterday’s blog on the MasterCard / Visa decision, we’ve also taken a look at how the US is approaching antitrust issues in two-sided markets, with SCOTUS giving its first Opinion on these in the AmEx litigation (originally brought with the DoJ, but continued by only eleven states following the administration change). 

AmEx is a closed loop network, with AmEx holding relationships with Cardholders and Merchants.  In a 5-4 decision considering anti-steering provisions that prohibited merchants from avoiding fees by discouraging AmEx use at the point of sale, SCOTUS found no violation of the Sherman Antitrust Act (upholding the U.S. 2nd Cir. Court of Appeals).  SCOTUS was asked to determine whether the parties had met the burdens in a three step rule of reason analysis (plaintiff must prove anticompetitive effects; defendant must show a procompetitive justification; plaintiff must show that efficiencies could have been achieved through less restrictive means).  

The plaintiffs sought to argue that a market definition wasn’t necessary because they had offered evidence that showed adverse effects on competition.  The majority disagreed with this, and noted that the cases relied on by the plaintiffs for this proposition were horizontal restraint cases. Here, vertical arrangements were at issue, and given that they’re not always anti-competitive, the market definition was relevant.  

The majority held that the relevant market included both sides of the transaction, and it had to be shown that both sides of the transaction were harmed by the provision.  The Court stated that “a market should be treated as one sided when the impacts of indirect network effects and relative pricing in that market are minor”, and divided two-sided markets into two categories:

  1. Two-sided transaction platforms that facilitate a single, simultaneous transaction and are best understood as supplying that transaction as the product (such as those between AmEx Cardholders and Merchants); and

  2. Platforms where the two sides aren’t selling directly to each other (such as newspapers, where users are indifferent to the amount of advertising).

Further, with the first category, evaluating both sides would be necessary to assess competition; only other two-sided platforms can compete for transactions.  Non-transaction platforms often do compete with companies that do not operate on both sides.  Unfortunately for the plaintiffs, their evidence was insufficient as they had only focused on the increase to merchant fees.  This division will perhaps create some debate as to which category a platform falls into, and arguments around how strong indirect network effects are. 

The majority stated that in order to show that the provisions were anticompetitive, plaintiffs should have demonstrated that they increased the cost of credit card transactions above a competitive level, reduced the number of transactions, or otherwise stifled competition.  In fact, the majority found that the provisions were pro-competitive, as they helped maintain a competitor to MasterCard and Visa. 

The dissenting opinion, which included some persuasive points, wanted the US to follow other jurisdictions and take action against high fees charged by credit-card companies to Merchants, viewing the provisions as clearly anticompetitive.  It referred to findings by the District Court, and stated that a market definition was unnecessary because of direct evidence of anticompetitive effects (primarily that AmEx was able to keep increasing fees without losing any large Merchants), but the correct relevant market should have been only the one side – the services are complementary, not substitutes – and that the other side of the market should have come in at the second step of the rule of reason analysis.  This perhaps puts the dissenting justices more in line with the CoA’s approach.   

Dissenting, Justice Breyer further countered the view that the provisions were pro-competitive by stating that “if American Express’ merchant fees are so high that merchants successfully induce their customers to use other cards, American Express can remedy that problem by lowering those fees or by spending more on cardholder rewards so that cardholders decline such requests”.  

Back in the UK, the Merricks collective claim is attempting to show that harm was caused to consumers –not on the flip side of the market, but by Merchants passing on the cost of the MIFs to customers.  Although the CAT refused to allow the action, the appeal is due to be heard later this year.  Whilst there is quite a hurdle to jump in how to ensure consumers receive compensatory amounts rather than token sums of money, if the class is certified, the analysis of effects on consumers and the links between the different markets could make for interesting reading. 

(On a collective action side note…  After two years of build-up, it’s good to see that the first trucks collective claim has started rolling towards certification, and interestingly, is using a special purpose vehicle more typical of litigation in the Netherlands than the UK.)

MasterCard and Visa MIFfed as the Court of Appeal considers two-sided markets; SCOTUS itself is two-sided (Part 1 – the UK)

Whilst the Court of Appeal’s judgment in MasterCard / Visa, and the SCOTUS Opinion in AmEx may seem a little outside our usual area of focus, they are nevertheless decisions that relate to the operation of two-sided markets.  With multi-sided platforms in innovative technological markets, such as Google, Facebook and Uber, increasingly drawing antitrust attention, (see here, and here) there may be some helpful guidance to be drawn from long established industries such as banking and finance. 

This post comes in two parts, with today focusing on the MasterCard / Visa judgment, and tomorrow focusing on the AmEx litigation. 

The Court of Appeal judgment 

Both MasterCard and Visa operate four-party payment schemes:

  • Cardholders contract with an Issuer for a card to buy goods from Merchants;
  • Merchants contract with Acquirers to obtain payment from the Cardholders;
  • Issuers (mostly banks) contract with Acquirers (also mostly banks) to settle transactions.

The Issuers compete for the business of the Cardholders, and the Acquirers compete for the business of the Merchants; but each side is dependent on the other.  The MasterCard / Visa schemes operate as open loop networks, and those participating are subject to various rules – including a requirement to pay fees, including multi-lateral interchange fees (‘MIF’s), that are charged by the Issuer to the Acquirer, and ultimately paid by Merchants in each card transaction.  The MIFs could have been negotiated individually between the Issuer and the Acquirer, but in practice default MIFs set by MasterCard / Visa were used.   

This raised an interesting Article 101(1) question: do the schemes’ default MIFs amount to a restriction of competition by effect?  The European Commission thought so in issuing a 2007 decision against MasterCard in respect of cross-border card transactions, a decision which spawned a multitude of follow-on and standalone actions for damages against both MasterCard and (by analogy given the similarities between their systems) and VISA.  The CAT initially found for the Claimant in one damages action, but the High Court subsequently found for the Defendants in separate actions (MasterCard and Visa).  The Court of Appeal was tasked with addressing these inconsistent outcomes.

The systems themselves operate across three separate markets (an inter-systems market, an issuing market, and an acquiring market), and it was common ground that the relevant market was the acquiring market.  However, arguments raised by the parties (particularly the ‘death spiral’ argument, where MasterCard claimed that if it lowered its MIFs, Issuers would have switched to Visa and the MasterCard scheme would have collapsed) concerned effects on the inter-system market, and the issuing market.  The CoA held that the first question is whether the MIFs restricted competition in the acquiring market. The second question is then whether the MIFs were objectively justified, and at that point, it is legitimate to consider both sides of the two-sided market and the inter-system market. 

The CoA ultimately found that the fees were unlawful, and all three cases are to be remitted to the CAT for an assessment of damages, and a determination as to whether any objective justification applies.  Tomorrow, we’ll set out how the US Supreme Court came to the conclusion that provisions which affected Merchants’ transaction costs were not anti-competitive, with analysis turning on a definition of the market that has implications for all platforms.     

Unwired Planet v Huawei: Is FRAND now a competition law free zone? Not so fast…

It has been two weeks since Mr Justice Birss handed down his latest judgment in Unwired Planet v Huawei (see here for a summary), which is almost long enough to get to grips with the 150 or so pages. There has already been a huge amount of discussion as to what this judgment means in practice and we have even overheard some suggest that, when it comes to FRAND in the future, we can simply ignore competition law altogether. This week we were invited by our friends at the renowned IP law blog, IPKat, to have our say on this. You can check out our thoughts on the IPKat blog here.

Unwired Planet v Huawei: UK High Court determines FRAND licence rate

Mr Justice Birss has just handed down the first decision by a UK court on the ever controversial topic of what constitutes a FRAND royalty rate.  At well over 150 pages, the judgment covers a lot of ground: a lot of ink is likely to be spilled about it over the coming weeks and months.  From what we’ve seen so far, the judge has not been afraid to make findings that will have a considerable impact on licensing negotiations in the TMT sector. 

We’ve summarised the headline conclusions below, but also keep an eye out for future posts in which we’ll analyse some of the judge’s findings and reasoning in more detail.


In March 2014, Unwired Planet (“UP”) sued Huawei, Samsung and Google for the infringement of 6 of its UK patents.  Five of these were standard essential patents (“SEPs”) that UP had acquired from Ericsson.  They related to various telecommunications standards (2G GSM, 3G UMTS, and 4G LTE) for mobile phone technology. 

Five technical trials, numbered A-E, were listed on the validity and infringement of the patents at issue.  These were to be followed by a non-technical trial on competition law and FRAND issues.  UP’s patents were found valid and infringed in both trial A and trial C, but two were held invalid for obviousness in trial B. Trials D and E were then stayed, and as Google and Samsung had settled with UP during the proceedings, this just left Huawei and UP involved in the 7 week non-technical trial, for which judgment has just been given. 


There’s a lot to unpack in this judgment, but here is a short list of what we think are the most important findings:

General principles:
  • There is only one set of FRAND terms in a given set of circumstances.  Note the contrast between this and the comments of the Hague District Court in the Netherlands in Archos v Philips (here, in Dutch) which seem to interpret the CJEU decision in Huawei v ZTE as meaning that there can be a range of FRAND rates.
  • Injunctive relief is available if an implementer refuses to take a FRAND licence determined by the court. Mr Justice Birss indicated that an injunction would be granted against Huawei at a post-judgment hearing in a few weeks’ time (although presumably Huawei can avoid this by now taking a licence on the terms set by the Judge).
  • UP is entitled to damages dating back to 1 January 2013 at the determined major markets FRAND rate applied to UK sales. 
  • What constitutes a FRAND rate does not vary depending on the size of the licensee.
  • For a portfolio like UP’s and for an implementer like Huawei, a FRAND licence is worldwide.
  • It’s still legitimate to make offers higher or lower than FRAND if they do not disrupt or prejudice negotiations.
Abuse of dominance:
  • UP did not abuse its dominant position by issuing proceedings for an injunction prematurely (it began the litigation without complying with the Huawei v ZTE framework).
Calculating the FRAND rate:
  • A FRAND royalty rate can be determined by making appropriate adjustments to a ‘benchmark rate’ primarily based upon the SEP holder’s portfolio. 
  • In the alternative, if a UK-only portfolio licence was appropriate, an uplift of 100% on the benchmark rates would be required.
  • Counting patents is the only practical approach for assessing the value of sizeable patent portfolios, although it may be possible to identify a patent as an exceptional ‘keystone’ invention.
  • Comparable, freely negotiated licences can be used as to determine a FRAND rate.
The FRAND rates as determined:

Other FRAND terms:
  • The Judge goes into some details as to the terms which will be FRAND in the licence between Unwired Planet and Huawei – much of which will be worth reading for licensors and licensees in this field.  Of particular note is the royalty base for infrastructure (excluding services). 
Other remedies:
  • Damages are compensatory and are pegged to the FRAND rate.

There have been near continual disputes between the major players in the TMT field over the last decade or so.  The meaning of FRAND has been strategically important in a large number of cases.  However, many of these companies are very effective negotiators.  In the vast majority of cases, they are able to agree licences without resorting to litigation.  Where proceedings are initiated, the parties are usually able to settle long before a judgment is reached, particularly given the time and expense required to take a FRAND case all the way to trial.  (Such expense is, however, usually dwarfed by the value of the licence – many licences in this field are valued in $billions.) 

The scarcity of judicial opinion in this area means this is a rare opportunity to see how a respected UK judge has approached a number of the unresolved questions regarding FRAND. 

A number of significant questions remain unanswered however, and we will be exploring these in future blog posts.  There’s also the matter of the upcoming post-judgment hearing in a few weeks’ time, which will establish whether or not Huawei will actually be subject to an injunction in the UK, and of course the chance that either party might wish to appeal.  All in all, there’s plenty of interest to talk about, plenty of advice to be given to clients, and the FRAND debate will undoubtedly continue on.

The vexed question of the appropriate ‘royalty base’ for FRAND-based damages – the US Supreme Court declines to answer

Apple and Samsung have been engaged in litigation in the USA since 2011 over the issue of whether various Samsung smartphones infringed a number of Apple’s design patents. Last year, the US Federal Circuit affirmed a jury award of $399 million of damages in favour of Apple, comprising Samsung’s entire profit on the sale of those smartphones. On 6 December 2016, the US Supreme Court intervened in the latest chapter in this long-running saga to reverse the Federal Circuit’s decision and remand it back to that court for further consideration.

Notably, this was the first occasion in which the Supreme Court had looked at a design patent case in over a century. However, it had also seemed to be a rare opportunity for judicial clarity on a controversial issue – for infringements involving multi-component products, should damages be calculated based on the value of the whole end product sold to consumers, or on the basis of only a particular component of that product?

This is an issue regularly arising in disputes regarding what constitutes a FRAND royalty for standard essential patents, an area in which there is still little judicial guidance in the US or Europe. The Supreme Court’s judgment offers little new insight. Instead, it focuses almost entirely on the meaning of the wording “article of manufacture” in the relevant statute (35 USC §289).  The Federal Circuit had previously held that only the entire smartphone could be an article of manufacture, as its components were not sold separately to ordinary consumers.  The Supreme Court reversed this, holding that “article of manufacture” encompasses both a product as sold to a consumer and a component incorporated into that product, even though not sold direct to consumers. 

The Supreme Court declined to comment on whether the relevant articles of manufacture at issue in the case were the entire smartphones or the particular smartphone components, remanding this question to the Federal Circuit. For (F)RAND royalty calculations, a US Court of Appeal has previously suggested that different cases may require different methodologies for damages models (see here). If the Supreme Court had provided a more wide-ranging decision, it might have included useful guidance as to when it’s appropriate to base damages on the value of an entire product, and when the value of a component alone is more suitable.

As things stand, we will have to continue to wait to see what the Federal Circuit decides on remand.  Alternatively, the judgment of the UK High Court in the FRAND case Unwired Planet v Huawei, due to be handed down in early 2017, may offer us more to get stuck into. 

Competition law no bar to patent licence royalties

Advocate General Wathelet has delivered a significant Opinion on the relationship between Article 101(1) and patent licences. This arose from a disputed arbitration award between Genentech and Sanofi-Aventis, and followed a reference to the Court of Justice of the European Union (CJEU), from the Paris Court of Appeal. 

The AG noted that Article 101(1) is not there to protect the efficacy of commercial arrangements, and will be engaged only where an agreement between undertakings has the object or effect of restricting or preventing competition and affects trade between member states. 

What was the case about? 

The original arbitration concerned a dispute over unpaid royalty payments under a patent licence where one of the underlying patents had been revoked. The arbitrator found that the licensee should continue to pay royalties, notwithstanding the revocation of the patent. This was on basis that the licensee had entered into the licence to enable it to use the relevant technology without the risk of litigation. The licensee contested the award. The French Court of Appeal referred various questions to the CJEU including whether paying royalties for a revoked patent had put the company at a competitive disadvantage to competitors who had not been required to pay for the technology and therefore infringed Article 101(1).

What about Article 101 and Patent royalties?

Wathelet commended the reasoning in Ottung (1989 CJEU) that an obligation to pay royalties in a licensing agreement after patent expiry “may infringe Article 101(1) TFEU where the licence agreement either does not grant the licensee the right to terminate the agreement by giving reasonable notice, or seeks to restrict the licensee’s freedom of action after termination.” 

Applying that approach, Wathelet considered that there was no infringement of Article 101(1) here, as Genentech was freely able to terminate the agreement with a “very short” notice period of two months, and its “freedom of action was not restricted in any way during the period after termination, and it was not subject to any clause preventing it from challenging the validity or infringement of the patents at issue”. He also observed that the licence contained no restrictions on the licensee’s ability to set prices or conduct research.

The AG therefore held that Article 101(1) was not engaged and that Genentech should pay Hoechst EUR 110 million in back royalties even though a licensed patent had been revoked. In the circumstances:  “the mere use of the technology at issue during the term of the licence agreement was sufficient to trigger the obligation to pay”. 

The position taken by the Advocate-General reflects the views set out in the Technology Transfer Guidelines (paragraph 184) which regards royalty arrangements in technology licences as generally outside the scope of Article 101 and falling into the realm of commercial negotiation.
Arbitration disputes and Article 101? 

The AG also confirmed that competition issues arising in the context of arbitrations can always be referred by national courts to the CJEU. 

He gave short shrift to arguments that dealing with Article 101(1) issues through the  preliminary ruling process would infringe French law. It had been argued that French law prevented international arbitration awards being subject to judicial review, save in circumstances where there has been a flagrant infringement of international public policy. 

The AG considered that the CJEU was bound to give a preliminary ruling upon request by a national court, unless the request related to a fictitious dispute, or was on general or hypothetical questions, where the questions to the CJEU bore no relation to the facts.

So where does the case leave patentees?

This case is important for many patent owners and licensees, as it clarifies that Article 101(1) is not a bar to enforcing a licensing agreement and receiving royalties even when a licensed patent has been declared invalid (or, by implication, expired). 

This is in direct contrast to the US Supreme Court’s decision in Kimble v Marvel of June 2015, which confirmed that a patent holder cannot charge royalties for the use of his invention in the US after its patent term has expired. 

It will be interesting to see the CJEU’s final decision, as AG opinions are only persuasive (but in practice usually followed).

Genentech Inc. v Hoechst GmbH, formerly Hoechst AG, Sanofi-Aventis Deutschland GmbH (Case C-567/14).

US Court guidance on principles to apply for RAND royalty calculations

In a useful addition to the pool of incremental guidance on RAND royalties, the US Court of Appeal for the Federal Circuit (“CAFC”) has recently given judgment in CSIRO v Cisco on a damages only trial relating to a patent essential to the IEEE 802.11 WiFi standard.

Whilst the decision is of course US-centric, with the Georgia Pacific criteria featuring heavily, it builds on the previous CAFC decision in Ericsson v DLink (see our blog here) and offers commentary on broad principles that may well be of use this side of the Pond.  In particular the judgment focuses on two core issues: 

1. Smallest saleable unit

Cisco (the defendant) argued that damages models must begin with the smallest saleable unit. This is a methodology that can be helpful. If the smallest component in which the patent is implemented can be identified, and royalties charged using that component as a base, it avoids the risk that the patentee will capture some value from elements of the final product that do not depend on the patented technology. This, understandably, is an attractive prospect for any company faced with paying royalties.

However, the CAFC found this argument ‘untenable’; it conflicts with the use of other CAFC approved methodologies, such as the use of comparable licences to determine value (as the District Court had validly done in this case). The CAFC noted that different cases may require different methodologies. 

It also reiterated that the entire market value rule exists as a narrow exception to the smallest saleable unit principle; the patentee can rely on the end product’s entire market value as a royalty base where it can prove that the patented invention drives demand for the end product. This is of particular relevance in the US context where, as the CAFC noted in Uniloc v Microsoft, the value of the end product can ‘skew the damages for the jury’. 

2. Standardisation

The CAFC reaffirmed its finding in Ericsson that the patentee should only be compensated for the incremental benefit to the user which arises from the patented invention, and not for the additional value that can be attributed to the patent due to it being essential to a standard. To do otherwise would prevent the benefit created by standardisation from flowing to consumers and businesses practising the standard as intended. 

Furthermore, the CAFC found that in this case, the District Court had erred in law by using the parties’ informal negotiations as a basis for valuation without accounting for the possibility that the rates mentioned in negotiation might have been affected by standardisation and might need to be adjusted.

There is an interesting comparison to be drawn between the findings of the CAFC and the principles espoused by the newly established Fair Standards Alliance (“FSA” - see our blog post here), of which Cisco is a member. Whilst the FSA and CAFC are in agreement that any (F)RAND royalty should avoid apportioning any value to the patent that is attributable to its inclusion in the standard alone, the FSA favours the use of the smallest saleable unit in the majority of cases. Whilst there is no obvious tension between this and the CAFC’s ruling that the smallest saleable unit should not always be used as the royalty base; it’s a difference in emphasis that may be drawn out further in the future. 

The CAFC judgment is well worth a read. In addition to the above, it also suggests that similar principles should apply to SEPs generally, not just those subject to RAND commitments, and comments on the relevance of comparable licence agreements. It also has the unarguable benefit of being fairly short.

Try before you buy: pre-action disclosure of licences

In a novel judgment handed down yesterday, Arnold J granted an application for pre-action disclosure of certain patent licences that a company had granted to third parties. 
The application was brought by Big Bus against Ticketogo, after it was threatened with patent infringement proceedings.  In correspondence Ticketogo told Big Bus that numerous other large travel and entertainment companies had already taken a licence to its technology.  Big Bus sought disclosure of these licences into a 'legal eyes only' confidentiality ring to help it decide whether it would be worth fighting or settling.  Big Bus argued that, even if proceedings did start, the disclosure would help the court and parties to allocate proportionate resources to the dispute in accordance with the Overriding Objective (as recently amended under the Jackson reforms).

Arnold J accepted that: "where the key information concerning the value of the claim was held by one party, then it was desirable for that party to be required to disclose that information by way of pre-action disclosure."  He also agreed "entirely" with the observation made by counsel for Big Bus that: "experience showed that, all too often, parties to intellectual property disputes spent large sums of money litigating issues on liability when the costs incurred were entirely disproportionate to what was at stake in terms of the quantum of the claim." 

Some may now wonder whether we will see pre-action disclosure applications against claimants in antitrust claims.  The cost vs. value disparity of litigation is certainly not unique to IP law.  These sorts of issue might even one day reach the CJEU now that the Directive on antitrust damages actions has been signed into law.  More fundamentally though, what are the implications of the court's willingness to shine a bright light in these opaque markets?  Arnold J considered that court involvement would improve market functioning.
56. [The respondent argued that] the order would unjustifiably infringe Ticketogo’s “freedom of negotiation”.  What does this mean?  As I understand it, the point being made by Ticketogo’s solicitor is that, for a party in the position of Ticketogo, it is desirable to be able to negotiate licences individually with licensees without each licensee knowing what other licensees have agreed to pay.  This will enable such a party to maximise the licence income it obtains from each licensee.  In my view this is the real point of principle raised by this application: is it an answer to an application for pre-action disclosure that is otherwise well founded that it would deprive a patentee (or other right owner) of the ability to conduct its business in that manner?  In my judgment, it is not.  On the contrary, I consider that, here as in other contexts, transparency is a virtue.  Availability of price information is one of the key requirements for the proper functioning of any market, and I see no reason why the market for patent licences should be an exception to that rule.  Why should Big Bus be obliged, if it does not wish to litigate, to accept whatever royalty rate Ticketogo now sees fit to offer it, if a court would award less by of damages?  Accordingly, I consider that it is appropriate to exercise my discretion in favour of disclosure.”
There is clearly some merit in Arnold J's observations.  But somehow I doubt the situation is quite as straightforward as he would make out.  Although in some cases pre-action disclosure may lead to a speedy settlement (e.g. if all previous licences are for nuisance sums), it is unlikely to do so in all cases.  Moreover, the prospect of a licensee knowing that the terms of a licence it enters into might influence the deal its rivals take may make it more difficult for licences to be agreed without litigation in the first place.  At the very least, it may increase incentives to ‘game’ licence structures so that they are less easily comparable.  The efficiency in terms of transactions costs of using a confidentiality ring to reach a settlement is also unclear.  Finally, in the absence of dominance, competition law imposes no general obligation on companies to license their technology on ‘non-discriminatory’ terms or at all.  Will knowledge of comparator licences be so important in negotiations once the infringer faces a permanent injunction?

SEPs and FRAND: The calculation of RAND royalties in the US - incremental guidance

The recent Judgment of the US Court of Appeal for the Federal Circuit (‘CAFC’) in Ericsson v DLink addresses an issue of perennial interest to those involved in litigating or licensing standard essential patents (SEPs) - and the competition community that shadows their every move.  The topic in question: the issues surrounding FRAND (or RAND) royalties, which is close to the heart of many of those practising on the interface between competition law and IP, not least because the failure to make a FRAND offer (or an offer capable of being FRAND), may mean that a patentee will not be able to obtain an injunction in infringement proceedings to enforce his patent

This is the first time the CAFC has had a chance to look at the ways in which the various US district courts have approached the establishment of RAND royalties; there have been only a few earlier district court cases (Microsoft v Motorola, In re Innovatio and Realtek v LSI).  This Judgment follows an appeal by DLink of a finding of patent infringement and also the subsequent calculation of damages in a suit brought by Ericsson enforcing a number of Standard Essential Patents (SEPs). 

The court highlighted a number of key principles to be considered when assessing an appropriate royalty award.  While these arise from the specific US context, including the so-called Entire Market Value Rule and the use of the Georgia-Pacific criteria to assess patent damages, we thought that those on this side of the Atlantic who take an interest in SEPs might find the appellate level approach revealing.  

The CAFC considered the implications of the US Entire Market Value Rule in the context of SEPs and suggested that the royalties for infringing patented technology that covers only a small part of a standard must be calculated by ascertaining the value of that specific technology rather than looking at the standard as a whole.  That being said, the court did recognise that in some cases the value of the infringing patented inventions could make up the entire value of the standard; in those circumstances apportionment would not be appropriate.  The court highlighted the importance of differentiating the value of the patented technology under an SEP from the value gained by the incorporation of such patented technology into a standard; the CAFC indicated that a patent holder should only be compensated for the incremental benefit derived from its invention.  Indeed, the court went on to say that the widespread adoption of standard essential technology is not necessarily indicative of the added usefulness of the patented technology - given that it may only be used because it is required to comply with the standard. 

This case offers some useful guidance on the way in which the calculation of RAND royalties may be approached by US courts.  This blog post has given only a very high level overview – not least because we are not US lawyers, so don’t want to go too far in extrapolating, given the US context. With the ongoing international interest in such issues it is certainly worth a read for anyone interested in the area.

The politics of SEPs – finding the third way to obtain/avoid injunctive relief?

The IP/competition interface was in the spotlight at the Court of Justice yesterday.  The opinion of the Advocate General in response to a reference from the German Court in Huawei v. ZTE had been eagerly awaited, but early readers had to be content with German and French versions. (As of yesterday evening, an English version is now available.)

The opinion starts with first principles – running through the Charter of Fundamental Rights, the Enforcement Directive, the ETSI IPR Policy, and the polarised perspectives provided by the framework for FRAND litigation used in Germany (based on the Orange Book case) and the European Commission’s view of these issues as expressed in the press release accompanying the Statement of Objections sent to Samsung at the end of 2012.  And then, in common with a long and distinguished line of  ‘political’ (or policy) decisions over the years by the European Courts, the AG seeks to offer something for everyone.  According to the AG, a “middle path” (a “third way”?) needs to be found between excessive protection for the right holder and excessive protection for the implementer.  As a result, he dismisses both the German Orange Book type approach (too much protection to the patentee), and the approach of the Commission (which apparently gives too much leeway to implementers (the opinion here refers only to the press release accompanying the Samsung statement of objections and does not address the Motorola and Samsung decisions – a clear expression of the status of Commission decisions in the EU legal system).  

But is this really something for everyone, or a disappointment to all concerned?  On balance, our view is that the framework provided by the AG’s Opinion is rather closer to the Motorola decision than to Orange Book, but does perhaps provide a shade more certainty for patentees faced with ‘unwilling’ licensees. (Unlike politicians, we are capable of revising our original opinions…!).  

So, what does the opinion actually say?  The operative parts can be summarised as follows:

  • On the central question of when an abuse of a dominant position will be found, the AG starts from the proposition that an injunction has at least the potential to restrict competition.  However, he also notes that the giving of a FRAND undertaking does not imply any renunciation of the right to seek injunctive relief, and the seeking of an injunction cannot in itself be an abuse of dominance.  Equally, the right to seek an injunction is not absolute, and can be overridden by the general public interest (including competition law considerations) - but any limitation on this right can be made only in exceptional and closely limited circumstances. (Note, this appears to reflect the approach now being taken in the 17th draft of the rules for the new UPC – have a look here if this is of interest.)  To determine whether such circumstances exist requires a factual examination of the conduct of both the SEP holder and the implementer, again a matter for the national courts to determine.  Where the implementer is “ready, willing and able” to conclude a licence, seeking an injunction will be an abuse of a dominant position.
  • The AG identifies a number of specific ‘Guidelines’ for situations relating to the negotiation of SEP licences.  These are informative, although it is not immediately obvious how these can be enforced in a national court setting or – if a party originally fails to abide by them but then remedies its conduct – what the remedy would be. One would think that some remedy ought to be available if conduct is illegal, short of involving the Commission and asking it to levy fines – another of the imponderable problems the CJEU is fond of leaving to national courts to disentangle:
  • For as long as an implementer is, and remains “able” to take and respect the terms of a licence on FRAND conditions and notably to pay an appropriate royalty, the SEP holder must take certain specific steps before seeking an injunction. (The word “able” is perhaps surprising in this context – in the conclusion the words “ready, willing and able” are used.  However, in the AG’s framework, the question of willingness arises more in relation to the response made by the licensee.)  The AG justifies this approach by noting that the implementer does not know if the patent is infringed, valid or essential – it is perfectly possible that even large telecommunications enterprises may not have made this assessment for all declared essential patents before launching a new product, in particular in relation to a standard such as LTE which comprises so many patents;
  • The SEP holder must alert the implementer in writing, noting the relevant SEP and how it is alleged to be infringed (raising the bar for pre-action steps in patent litigation?);
  • A written licence offer, corresponding to FRAND conditions, must be provided: this must contain all terms which are “normal” for the industry (likely to give rise to considerable scope for debate and disagreement, not to mention disclosure requests in disclosure jurisdictions until the meaning of “normal” is clarified) and must specify the amount of the royalty and how it is calculated;
  • The implementer must then react to the offer in a “diligent and serious” manner – “vague” indications of willingness to negotiate are not sufficient.  If the offer is not accepted, an explanation must be given within a “brief” time period, together with a written counter-offer for those clauses in relation to which there is disagreement.  
  • The time periods for exchange of offers and counter-offers as well as the duration of negotiations must be considered in the light of the “commercial window of opportunity” which the SEP holder has to obtain a return on its patent – something which will be a matter for the national court to decide.  It will also be for the national court to decide if stipulations such as a requirement to enter into a cross-licence are reasonable.
  • The conduct of the implementer will not be considered as dilatory or non-serious if it requests the court or an arbitral tribunal to set the terms of the licence.  In that case, it is reasonable for the SEP-holder to request a bank guarantee or payment of a deposit in respect of royalties which may be due.
  • The implementer must retain the right to challenge SEPs, or to contest infringement even after conclusion of a licence.  (This is in line with the revised Technology Transfer Guidelines which were published by the Commission earlier this year and on which we blogged (endlessly, some would say…)
  • There is also no obligation on an implementer to abide by the terms of a future contract before one has been concluded.  This was part of the Orange Book conditions, but is said not to be appropriate for FRAND-encumbered patents (the Orange Book case related to a de facto standard where no FRAND undertaking had been given).  However, as above, a bank guarantee or deposit can be requested.
  • The seeking of other remedies (e.g. delivery up of products) is said to be subject to the same rules as that applicable to injunctions.  However, there is no objection to seeking damages equivalent to a FRAND royalty.  Damages and interest may be sought for the past, although it is left unclear whether an argument could be made that such past damages could be sought at a higher (supra-FRAND) rate:  the AG observes that there can be no question of market exclusion where past damages are concerned, which might suggest that supra-FRAND damages are not wholly excluded.  Equally, the fact that the SEP holder has accepted through its FRAND undertaking that it will monetise its patents at a FRAND rate could suggest that there is no reason to accord a higher reward.
The Court has not been asked to rule on relevant market / dominance – but the AG could not resist expressing an opinion on this point.  His view is that a SEP holder is not inevitably dominant, but it may be presumed to be so.  The presumption can be rebutted by “specific, detailed evidence” – however, no further detail is given as to what that evidence might comprise.  This will remain an issue for the national court to consider in line with its usual evidentiary rules.

The opinion contains considerable detail, but, as is often the case with CJEU references (or CJEU pronouncements generally), a great deal is still left to the national courts to determine.  Even if the Court upholds the AG in all respects, this is unlikely to be the final shot or the last uncertainty in the great FRAND wars.  The AG may have proposed a ‘third way’, but we would be unsurprised to see fourth, fifth and sixth ways emerging in due course...

Sophie Lawrance and Pat Treacy