Latest FRAND-Related Decision Issued By Paris Court: France To Become A Major Forum For Licensing Determination On SEP Related To ETSI's Standards?

Author:Mr David Masson, Denis Voevodin, Giovanni Casucci, Constantin Rehaag, Tjibbe Douma, Justin Hill, Charlotte Texier and Campbell Forsyth

An important ruling was issued in a FRAND-related dispute by the case management judge of Paris Court of first instance (Tribunal judiciaire de Paris) on 6 February 2020.

While an action had been initiated by Philips against TCL before the High Court of Justice of England and Wales re. infringement of essential patents related to 3G and 4G standards defined by the European Telecommunications Standards Institute (ETSI), Paris Court was held to have jurisdiction to determine whether Philips, an ETSI member, had breached ETSI's IPR Policy, by refusing to offer TCL, also an ETSI member, fair, reasonable and non-discriminatory (FRAND) licensing terms on said patents.

This decision possibly opens the door for France to become a major forum for FRAND licensing determination disputes arising between ETSI members and relating to ETSI's standards.

  1. What was the dispute at hand?

    In 2015, Philips, owner of a portfolio of patents declared as essential with respect to ETSI's 3G (UMTS) and 4G (LTE) standards, approached TCL, also a member of ETSI, to enter into a licensing partnership -to no avail.

    Indeed, in October 2018, Philips brought an infringement action against TCL before the High Court of Justice of England and Wales -Philips asserting that TCL was infringing the UK parts of its essential patents.

    Less than four months after being summoned, TCL brought the dispute before the Paris Court's chamber specialized in IP.

    In this "French" action, TCL asserts that Philips had breached ETSI's IPR Policy by refusing to negotiate the terms of a FRAND license. In doing so, Philips asked French judges to determine globally the terms of said license.

    Interestingly, TCL also sued ETSI, whose headquarters are located in Sophia-Antipolis - France and whose IPR Policy is subject to French law, and requested that the Paris Court order it to contribute ("concourir") to the grant by Philips of a FRAND license.

    Philips and ETSI filed the following motions before the examination of the merits of TCL's claims:

    Philips' motion: Philips mainly asserted that the Paris Court had no jurisdiction over the dispute at hand.

    ETSI's motion: ETSI asked the case management judge to hold TCL's claims against ETSI non-admissible.

    Philips's motion having been raised before ETSI's motion, it was analysed first by the case management judge and is the subject of the decision at hand.

  2. What are the main takeaways of the decision?

    The main question raised was whether the Paris Court was...

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