On the January 11th, 2018, a public judgment was made for two SEP (Standard Essential Patent) infringement disputes with HUAWEI suing Samsung, etc. at the Intellectual Property Tribunal of Shenzhen Intermediate Court. The Court ruled that Samsung should immediately stop infringing HUAWEI's patent rights by manufacturing, selling, offering for sales and so on. The invention patents involved in the two cases are No. 201110269715.3 and No. 201010137731.2 respectively.
HUAWEI, the plaintiff in the two cases claimed that the two invention patents at issue were 4G SEPs, and the patents were infringed by the defendant side by manufacturing, selling, offering for sales, and importing without permission from the plaintiff. In addition, when HUAWEI and Samsung Electronics Co., Ltd. --- the negotiation representative and holding company at the defendant side --- held negotiations on SEP cross licensing, Samsung did not follow the FRAND (Fair, Reasonable and Non Discriminatory) principle and had obvious fault. Therefore, HUAWEI requested the court to order the defendant to immediately stop infringement of the patents at issue.
The defendant argued that it did not act patent infringement as accused by the plaintiff HUAWEI; HUAWEI did not perform its fair, reasonable and non-discriminatory duty in the SEP license negotiation, while Samsung had no obvious fault in the licensing negotiation. Therefore, the plaintiff's claim should be dismissed.
The cases involve two major problems, one is the FRAND issue, or whose fault it was that the SEP license agreement was not reached, and the other is the technology identification, or whether Samsung constituted patent infringement for the above two patents. The court held after trial that the plaintiff HUAWEI owned the invention patent rights of the two patents No. 201110269715.3 and 201010137731.2, which were both SEPs for 4G. The plaintiff HUAWEI and Samsung had undergone SEP cross licensing negotiations for more than 6 years since July 2011. HUAWEI had no obvious fault in the process of negotiations, according to FRAND (fair, reasonable and non-discriminatory) principle; while Samsung had obvious mistakes in procedural and substantive aspects during the negotiation process, in violation of the FRAND principle.
The defendant must have used the technology of the two SEPs owned by HUAWEI in the production and sale of corresponding 4G intelligent terminal products in China. Therefore, the defendant infringed the plaintiff's patent rights by exploiting the two patented technology without the plaintiff’s permission after the plaintiff HUAWEI obtained the patent rights for the two invention patents.
HUAWEI sought for negotiation, arbitration and other means to solve the SEP cross licensing issue between both parties and the court organized mediation between the parties, but Samsung delayed negotiations in bad faith, which was an obvious fault in violation of the FRAND principle. In view of this, the court supported the plaintiff who claimed that the defendant should stop infringement of its 4G SEPs at issue.
For the two cases, the Court ruled that Samsung should immediately stop infringing the patent rights at issue by manufacturing, selling and offering for sales. Furthermore, after the court judgment comes into effect, the two parties can still carry out the licensing negotiation. If the two sides reach an agreement, or the plaintiff agrees not to enforce the judgment of stopping the infringement, the court will allow it.
The SEP infringement dispute between HUAWEI and Samsung, the two global intelligent terminal product giants, is an influential, complicated and pioneering intellectual property case at home and abroad. After eighteen days of court trial, the court successfully concluded the two cases.
(Adapted from IPRDaily)