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U.K. Supreme Court Permits SEP Holders to Require Worldwide FRAND Licenses

On August 26, 2020, the U.K. Supreme Court—the U.K.’s highest court—issued its highly anticipated decision in Unwired Planet International v. Huawei involving the “Fair, Reasonable, and Non-Discriminatory” (“FRAND”) licensing of standard essential patents (“SEPs”) in the telecommunications space. The decision in several consolidated cases rejected all appeals from Huawei and ZTE and affirmed the decisions from the London High Court (Justice Birss) and Court of Appeals. The Court concluded that owners of patents essential to ETSI’s telecommunications standards (including 2G, 3G, and 4G (LTE)) can demand that an implementer practicing a U.K. SEP take a license on FRAND terms to all of the patent owner’s worldwide telecommunications SEPs, and can obtain an injunction should the implementer refuse. This decision has significant implications for FRAND licensing, assertion of SEPs, and antitrust issues both in the telecommunications context and more broadly.

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Patent Owners/Manufacturers Must Beware of False Patent Marking


Time to Read: 1 minutes Practices: Intellectual Property

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When the Federal Circuit recently decided The Forest Group, Inc. v. Bon Tool Co, it noted that its interpretation of Section 292 of the Patent Act will likely support a “new cottage industry” of false marking litigation by patent marking trolls. This prediction is already proving to be accurate.

In Forest Group, the Federal Circuit interpreted Section 292 with respect to the proper fine to be assessed where false marking is established, holding that fines must be assessed on a per article basis where a complainant meets its burden of establishing that a patentee falsely marked with an intent to deceive the public. While the Federal Circuit stated that "[i]n the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty," Section 292 allows for fines of up to $500 per article. As any private party can bring a qui tam lawsuit under Section 292 against a manufacturer and keep one half of the penalty collected, the incentive for patent marking trolls to initiate false marking litigation has greatly increased.

If you have questions regarding Section 292 of the Patent Act or the Forest Group opinion, please contact a member of the Ropes & Gray's Intellectual Property Group or the Ropes & Gray attorney who normally advises you.

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