OTTAWA, CANADA; January 8, 2020 – Conversant Wireless Licensing S.à r.l., a subsidiary of Conversant Intellectual Property Management Inc., announced today that a judgment of the High Court of Justice in London found that claims of two Conversant Wireless LTE standard-essential patents (SEPs) granted by the European Patent Office are essential to the LTE standard. As such, the patents are infringed in the UK by the sales of LTE handsets of defendants Huawei and ZTE.
The patents-in-suit — EP (UK) 1,878,177, EP (UK) 3,267,722, and EP (UK) 3,197,206 — facilitate high data rates in a mobile telecommunications network. The inventions originated from the idea of having a fixed allocation of resources on a shared telecommunications data channel, or to having messages on the data channel without messages on a shared control channel. The EP 722 and EP 206 patents are divisionals from the EP 177 patent.
The EP 177 and EP 722 patents were found by Mr Justice Colin Birss to be essential to the LTE standard, being used in Huawei’s and ZTE’s handsets by an LTE feature called semi-persistent scheduling. The Court rejected the defendants’ validity challenges to the EP 177 and EP 722 patents. The Court found that the sole asserted claim of the EP 206 patent, declared to be essential to the UMTS standard, was not entitled to claim priority from its original US application and so is invalid over the prior art published before that application.
In this case Conversant Wireless alleges that each defendant’s mobile handsets infringe several of Conversant’s SEPs, including the patents-in-suit at issue in today’s judgment. In an earlier trial in the case, involving another patent – EP (UK) 1,797,659 – the Court found that at least one claim of that patent was essential to the UMTS standard. It also rejected most of the attacks against the patent, including allegations of non-infringement, lack of inventive step, and insufficiency, but found the patent invalid based on one allegation of added matter. That judgment is on appeal.
Conversant Wireless also is asking the Court to declare that Conversant has made a fair, reasonable, and non-discriminatory (FRAND) offer to license its SEP portfolio to each defendant, or alternatively to determine the FRAND terms for such a license to each defendant. The FRAND trial is set to begin in April 2020, pending the anticipated judgment from a jurisdictional appeal by Huawei and ZTE to the UK Supreme Court.
“We are very pleased with the judgment today,” said Boris Teksler, Conversant’s CEO. “This confirms the strength of the Conversant Wireless portfolio. We look forward to a positive judgment from the UK Supreme Court and the upcoming FRAND trial.”
The case is Conversant Wireless Licensing S.à.r.l. v. Huawei Technologies Co., Ltd., Huawei Technologies (UK) Co., Ltd., ZTE Corporation, and ZTE (UK) Ltd., Case No. HP-2017-000048, (Patents Court, High Court of Justice (UK)).
Conversant Wireless were represented at this trial by barristers Tom Moody-Stuart QC, James Whyte, and Charles Brabin and in its wider case by the law firm EIP Europe.
The Court’s judgment can be found here: https://www.bailii.org/ew/cases/EWHC/Patents/2020/14.html
Conversant Intellectual Property Management Inc. is a global intellectual property management company known for its principled approach to patent licensing. With a portfolio of thousands of patents and patent applications under management, Conversant has special expertise in semiconductors and communications technology. For more information, please visit www.conversantip.com. Conversant Wireless Licensing S.à r.l. is a subsidiary of Conversant Intellectual Property Management Inc. that is focused on licensing a major portfolio of about 900 wireless patents and patent applications covering technologies used in a wide range of mobile communications devices and services. The Conversant Wireless portfolio includes many declared SEPs that Conversant seeks to license on FRAND terms. For more information, please visit www.conversant-wireless.com/.