4iP Council research on case law after Huawei v. ZTE presented yesterday at the Court of Milan
23 March 2017
Following significant interest in 4iP Council’s paper 'Lessons from Huawei v. ZTE', the Rt Hon Professor Sir Robin Jacob was invited to speak yesterday at a workshop jointly organised by the Milan Court of Appeal and the Italian Institute for Judicial Studies (Scuola superiore della magistratura) at the Court of Milan. The workshop was prepared with the support of Assonime, the Association of Italian joint stock companies.
In recent years, a widely debated issue in the context of Intellectual Property litigation is the availability of injunctive relief for the so- called “standard essential patents” (SEPs), notably when the holder of such SEPs has given a commitment to license them on fair, reasonable and non-discriminatory (FRAND) terms. In specific circumstances, actions for a prohibitory injunction brought by holders of FRAND-committed SEPs holders against implementers of the standard have been regarded as amounting to an abuse of dominant position, in breach of competition law. A related, distinct, issue is how to assess whether a licence offer is a FRAND offer.
Diverging approaches have been followed in different jurisdictions, both within and outside the EU. In 2015 the landmark judgment of the European Court of Justice in Huawei v. ZTE has provided important guidance on the steps that the SEP holder and the alleged infringer should follow in order, on the one hand, to avoid the risk of an infringement of competition rules and, on the other hand, to ensure that the licensing negotiations are conducted in good faith.
The workshop at the Milan Court pointed out the lessons which can be drawn from the Huawei judgment and analysed the recent developments in the case law in EU Member States (notably, Italy and Germany).
It also provided the opportunity to discuss the role of competition authorities with respect to SEP litigation in the light of Huawei and to consider whether further initiatives of the European Commission in the area of standard essential patents are needed. Moreover, the workshop addressed the specific challenges that SEP litigation raises for the lawyers of both SEPs holders and alleged infringers, as well as the point of view of universities and research centers on the role of an effective patent protection.
In addition to Sir Robin Jacob, speakers at this workshop included Peter Tochtermann (Deputy Presiding Judge Regional Court of Mannheim), Claudio Marangoni (President of the IP- Enterprise Division of the Court of Milan), Silvia Vitrò (Judge at the IP- Enterprise Division of the Court of Turin), Ginevra Bruzzone (Deputy Director General Assonime), Gabriella Muscolo (Commissioner of the Italian Competition Authority) and Antonio Salerno (Politecnico di Milano).
“The Huawei ZTE decision from the Court of Justice of the EU is the best intellectual property decision the Court has ever given," said Sir Robin Jacob, author of Lessons from Huawei v. ZTE.
“The discussion at this event pointed out that the procedure outlined by Huawei seems capable of providing the appropriate incentives to negotiation strategies compliant with FRAND commitments,” said Ginevra Bruzzone, Deputy Director General Assonime. “On the other hand, more clarity on what should be meant by FRAND would be important for both undertakings and the courts. The theoretical concepts behind FRAND merely allow for the determination of a FRAND range: rather than supporting controversial evidentiary rules aimed at identifying a single rate, EU public policy should focus on clarifying what is not FRAND, on the basis of shared benchmarks and principles. This approach would facilitate private negotiation and, in case of litigation, would help the courts reach convergent outcomes while allowing sufficient flexibility on a case by case basis,” continued Bruzzone.