FRAND - a Postscript

Jane Lambert

Patent Court (Mr Justice Birss) Unwired Planet International Ltd v Huawei Technologies Co. Ltd and Another [2017] EWHC 3083 (Pat) (30 Nov 2017) 

On 5 April 2017 Mr Justice Birss delivered two judgments. One contained the judge's reasoning in full which was seen only by the parties' lawyers while the other was redacted.  I discussed the redacted version in FRAND 8 Oct 2017. The problem with redactions, as Mr Justice Birss observed at paragraph [23] of his judgment in Unwired Planet International Ltd v Huawei Technologies Co. Ltd and another [2017] EWHC 3083 (Pat) (30 Nov 2017) is that "unless the public can see and understand a judge's reasons they cannot hold the courts to account."  Since different parties to the litigation had requested the removal of different parts of the full judgment, his lordship convened that hearing with the parties' solicitors to give directions about what should be published and what should not.

In approaching that issue the learned judge had to balance two conflicting considerations. The first was "a strong principle that all parts of a judgment should normally be publicly available".  The second was that "there are occasions on which judgments may be redacted." He added:

"Redactions will require powerful reasons, supported by cogent evidence which addresses the details. Generalities will not do. Although redactions will be rare indeed when looking across the legal system in general, certain kinds of proceedings may regularly involve redactions due to the nature of the proceedings and the material involved. In any event however redactions must be kept to the bare minimum."

His careful judgment was a weighing of those considerations.

At paragraph [24] the judge listed the relevant factors:

"i) the nature of the information itself: for example cases in which some redaction may more readily be accepted could include technical trade secrets and private information about family life.
ii) the effect of the publication of the information. This will be a critical factor. If publication would be truly against the public interest then no doubt the information should be redacted. If publication would destroy the subject matter of the proceedings – such as a technical trade secret – then redaction may be justified. The effect on competition and competitiveness could be a factor but will need to examined critically.
iii) the nature of the proceedings: for example privacy injunctions and competition law claims may require some redaction while an intellectual property damages claim may not. The point is not that different kinds of case demand a different approach, it is that the balance of factors will change in different cases (e.g. the need to encourage leniency applications in competition law).
iv) the relationship between the information in issue and the judgment (as well as the proceedings as a whole). Obviously judges do not deliberately insert irrelevant information into judgments but not every word of a judgment is as important as every other word. It may be that some sensitive information can be redacted without seriously undermining the public's understanding of the reasons.
v) the relationship between the person seeking to restrain publication of the information and the proceedings themselves (including the judgment). For example, a patentee seeking damages for patent infringement on a lost profit basis knows that they will have to disclose their profit margin in the proceedings and that those proceedings are public. A third party whose only relationship with the case is that they are a party to a contract disclosed by one of the parties to the litigation is in a different position."

All the information sought to be redacted in this case was commercial licensing information relating to  2G, 3G and/or 4G patent licences to which Unwired Planet, Huawei, Samsung or Ericsson was party. Some of that information was confidential not to those four companies but to the companies with which they had contracts. These included Apple, Qualcomm and ZTE. Ericsson had withdrawn from the litigation but had retained a financial interest in its outcome. It was therefore in a somewhat different position from the other companies.

After considering all those factors the judge ordered the re-publication of the judgment that he delivered in April as Unwired Planet International Ltd v Huawei Technologies Co. Ltd and Another (Rev 2) [2017] EWHC 2988 (Pat) (30 Nov 2017). I have read it through and I can't find anything that would cause me to rewrite or modify my article on FRAND. It is a very long judgment and it is not all easy to follow but essentially my understanding of his judgment that FRAND is contractual and not related directly to competition law remains unchanged.

For some reason or other the judge was asked to annex a copy of the licence terms that Unwired Planet International Limited, Huawei Technologies Co., Ltd. and Huawei Technologies (UK) Co., Ltd had agreed for the UK and he had agreed to do so.  Readers will find them after paragraph [49].  It is not clear to me what purpose it serves.  As the judge said: 

"I have already found such a licence would not be FRAND. Nor have I been asked to consider if I agree it might otherwise accord with the main judgment and I have not done so."

However, it is a precedent, an example of what those licences look like and perhaps what Unwired Planet might agree. If all the parties agreed to it then I guess it does no harm.

The circumstances that arose in this case may not occur very often but the need to keep some information secret arises in software copyright, trade secret and restraint of trade cases all the time.  Sometimes they come about in specific disclosure applications before the master or district judge. On other occasions they may arise on applications for interim applications.  Exactly the same issues arise in those applications and Mr Justice Birss's balancing exercise may well held the judge, master or district judge to resolve them in future.  I will certainly bear this case in mind the next time I have to argue the point.

Should anyone with to discuss this case, FRAND or the treatment of confidential information by the courts in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.


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