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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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The Federal Circuit Reverses Long Standing PTAB Precedent on the IPR Time Bar Exception

Practices: Intellectual Property Litigation, Patent Trial & Appeal Board (PTAB) Proceedings

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On August 16, 2018, the Federal Circuit overruled the Patent Trial and Appeal Board’s (“PTAB”) long-standing practice of accepting certain inter partes review (“IPR”) petitions outside of the one-year time bar window prescribed by Section 315(b) of Title 35. The PTAB has consistently held that, where the underlying district court action was dismissed without prejudice, service of the complaint does not trigger the one-year time bar. The Federal Circuit in Click-to-Call Techs., LP v. Ingenio, Inc. (opinion here) reversed and found that service of the complaint does trigger the one-year time bar, even if the action is later dismissed voluntarily without prejudice. Petitioners now have one year to file IPR petitions even if the underlying district court action is eventually voluntarily dismissed without prejudice.

We will continue to monitor further developments regarding the impact of these decisions. If you have any questions about this Alert, please contact Scott McKeown.

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