值得一读的上诉判决：英国法院凭什么要求华为接受NPE在全球范围内的专利许可？

1 引言

Unwired Planet v Huawei，这是目前全球最疑难复杂的专利案件之一。

这个案子审理了4年多，多次开庭审理，庭审时常会持续几天，一审判决书170页、800多段，二审判决书65页、将近300段。据说律师费至少几百万英镑。

2018年10月23日，英国上诉法院终于宣布了本案的上诉判决。法院驳回了华为的上诉请求，认定华为必须接受英国高院确定的Unwired Planet在全球范围内的标准必要专利的许可费率和协议，否则，就会禁止华为在英国销售侵权的通信产品。

本案对标准必要专利制度有较大影响，对标准必要专利权人是重大利好，而且英国将成为其首选的诉讼地。

虽然本案涉及的是2G、3G和4G通信标准，但是，未来5G的专利许可也会遵守本案确定的规则。更值得关注的是，未来万物互联，智能家电、汽车、医疗等各行各业，都要重视标准必要专利问题。

虽然上诉判决涉及专利法领域最前沿的问题，但是，如果你点击文末“阅读原文”，查看本案的判决书原文，你会发现法官说的都是Plain English，或者叫大白话，你一定可以一步一步看懂本案，成为深入了解专利法最前沿问题的“专家”。

总之，通过本案，你不仅可以从一手资料中了解如何进行专利许可谈判，双方律师和专家如何抗辩，法官如何分析双方的观点和类似案例，更重要的是，每个人都应该学习本案的法官和律师，一丝不苟却又化繁为简的做好专业工作。

2 案件背景

Unwired Planet（简称UP）是一家美国公司，早年主要从事WAP协议的相关研究，号称是移动互联网的发明者。但是，公司后期经营不善，逐渐转型成为不从事技术研发和产品销售、专门进行专利许可的公司，即Non-Practicing Entity (NPE)。2016年，Unwired Plane已被另一家NPE，Panoptis收购。

2013年，UP和爱立信合作，从爱立信收购了2000多件专利。

2014年3月，Unwired Planet在英国对华为、谷歌、三星提起专利侵权诉讼，称华为等侵犯了其6件专利，其中有5件为标准必要专利，分别为“无线电信网络的方法装置”（EP (UK) 2,229,744）、“无线电信网络的自我配置和优化”（EP(UK) 2,119,287和EP (UK) 2,485,514）、“提高移动通信系统之间交接的方法”（EP (UK) 1,230,818）、“基于已选择相关属性的正交阿达玛序列通信方法和装置”（EP (UK) 1,105,991）。另有一件非标准必要专利，为“建立单向数据通路的连接的方法和装置”（EP (UK) 989,712）。

本案一审审理分为了两个阶段，第一个阶段，审理技术问题，即涉诉专利是否是有效的，以及是否为标准必要专利。

所谓标准必要专利(Standards-Essential Patents, SEP)，是指实施标准，必须要使用的专利。如果涉案专利是标准必要专利，也就意味着被告一定是侵权的。因为通信领域的标准，例如2G、3G、4G这样的通信标准，是每个通信设备厂商都必须遵守的，设备如果要符合通信标准，就必须要使用其背后的标准必要专利。

第一个阶段的审理中，英国高院(UK High Court of Justice (Patents))的Birss法官经过审理认为，涉诉专利中有两件专利是有效的，同时是标准必要专利SEP。

诉讼开始之后，UP与三星和谷歌分别于2015年和2016年达成了和解。

而华为与UP却迟迟没有达成许可协议，华为在诉讼之初就承诺愿意接受UP就其英国的标准必要专利的许可，但是，UP坚持要求华为接受其全球范围内的标准必要专利的许可，双方开展了多轮的许可谈判，也未能达成一致。

因此，在一审的第二个阶段，涉案主体只剩下UP和华为，双方同意暂停对技术问题的争议（如果有争议还可以上诉），转而处理非技术问题，即双方提出的许可协议是否符合FRAND原则的。同时，华为还反诉UP滥用了其市场支配地位，违反了竞争法。

标准必要专利与普通专利不同。如果要遵循标准，就必须要实施标准必要专利，没有其他技术路线可选。因此，标准必要专利的专利权人具有非常优势的地位，可能会威胁别人不予许可，或者，要求过高的许可费。为了避免大家被标准必要专利的专利权人劫持( Hold-up)，各大标准组织都规定，如果要申请标准必要专利，必须做出FRAND承诺，就是要同意向所有人进行公平、合理、无歧视（Fair, Resonable And Non-Discrimination的专利许可。

2017年4月5日，Birss法官做出了广受关注的一审判决。他认定可以提出一个单一的全球范围内的标准必要专利许可费率，这是符合FRAND原则的。但是，他认为UP提出的许可费率不合理。他经过计算，指定了UP在全球范围的SEP专利许可费率，如果华为不接受，那么，法院可以颁发禁令，禁止华为在英国销售侵权的通信产品。同时，他同意华为可以上诉，在上诉期间，禁令不会生效。

华为对一审判决不服，上诉到了英国上诉法院(The English Court of Appeal)，二审由Kitchin,  Floyd 和Aspin三位法官审理。

2018年10月23日，英国上诉法院最终宣布了本案的上诉判决。上诉法院几乎认可了一审法院的全部判决，而驳回了华为全部的上诉请求，认定华为必须接受英国高院确定的Unwired Planet的全球标准必要专利许可费率，否则，为了制止华为继续侵权，法院会判处华为在英国禁售侵权的手机和通信设备。

英国法官指定的专利许可费率并非一个固定的金额，而是一个相对于销售额的费率。这意味着，如果华为接受了许可费率，每年必须根据其手机和通信设备的销售额向Unwired Planet交付许可费。

目前，华为面临的局面是，要么接受法官指定的专利许可费率，要么接受禁售的处罚。

其实，英国法官给出的许可费率，远低于Unwired Planet自己提出的许可费率，所以，预计华为会接受许可，因此并不会真的被在英国禁售。

据MIP报道，尽管上诉法院不允许本案上诉，但是华为仍将寻求向英国最高法院的上诉。

3 华为的诉讼请求

下面，我会简单的介绍本案上诉判决的情况，并引用部分判决书原文。

在今天发送的另外一篇文章里，介绍了本案一审判决的情况。因为上诉基本维持了一审判决，所以，一审判决其实也值得大家认真学习。

建议大家仍然去学习判决书原文，哪怕只是简单的浏览一下也可以。

华为有三项上诉理由：

第一、华为认为一个国家的法院根据在一个国家侵权情况，就指定全球范围内的专利许可费率，这远非是FRAND的。本案被告的相关主体UP LLC仅是华为反诉而涉案，其没有任何英国专利。法官设定的全球费率和许可条款，其中64％的金额是与UP LLC拥有的中国专利有关，而不是本案被告UP International的专利。而且，法官也没有考虑以下事实：（a）目前正在德国和中国进行的专利诉讼;（b）有些国家，UP根本没有相关专利。

19. Huawei now appeals against Birss J's final order with the permission of the judge on the following three grounds. It contends first, that, far from being FRAND, the imposition of a global licence on terms set by a national court based on a national finding of infringement is wrong in principle and leads to results which are manifestly unjust. That is particularly so in the present case, it continues. The judge held that, in order to be FRAND, the licence had to be global and had to include all SEPs owned by UP which it wished to license anywhere in the world. UP LLC was a party to the action only as a defendant to the competition law counterclaims and did not own any UK patents but only patents in other jurisdictions. Despite this, the judge set the global rate and terms of a licence in circumstances where 64% of the money to be paid relates to Chinese patents owned by UP LLC, rather than to any patent owned by UP International. What is more, the judge settled this licence notwithstanding the facts that (a) there was ongoing patent litigation in relation to corresponding patents in Germany and in China, and (b) there were some countries where UP had no relevant patents at all.

第二、华为认为UP给予三星的费率，和给予自己的费率不同，而华为和三星的情况相似，因而，UP违反了FRAND原则中“不歧视”的要求。

20. Secondly and in the event that the appeal on ground one should fail, Samsung was, on the judge’s own finding, a company which was similarly situated to Huawei. In those circumstances, Huawei ought to have been offered the same rates as those reflected in the Samsung licence because the non-discrimination limb of FRAND prohibits a SEP owner from charging similarly situated licensees substantially different royalty rates for the same SEPs. The judge fell into error in failing so to find.

第三、华为认为法院的做法违反了欧盟法院在Huawei v ZTE案中确立的方法，即如果标准专利权人没有与被许可人进行充分的谈判，则无权在诉讼中请求禁令，否则，就构成滥用市场地位，违反竞争法。华为认为UP在诉讼前并没有与自己进行充分的谈判，其请求禁令救济，违反了竞争法。

21. Thirdly and in light of the decision of the Court of Justice of the European Union (the “CJEU”) in Case C-170/13 Huawei v ZTE [2015] Bus LR 1261, the owner of a SEP cannot, without infringing Article 102 of the Treaty on the Functioning of the European Union (the “TFEU”), bring an action for a prohibitory injunction against an alleged infringer without (a) notice or prior consultation and, if the alleged infringer has expressed a willingness to conclude a licensing agreement on FRAND terms, (b) offering to that infringer a licence on such terms. In this case, UP sued Huawei without giving any notice of which SEPs were said to be infringed or why, and without having made any licensing offer. That conduct contravened Article 102 TFEU and afforded a defence to the grant of an injunction. In these circumstances the judge ought to have found that this defence had been made out.

4 上诉判决

在上述判决中，法官首先介绍了本案的背景，和本案遵守的ESTI的FRAND原则框架。

此后，法官认真的分析了一审判决、双方的上诉理由以及相关的案例，下面，简要说明，并摘录了一些段落，供大家参考。

针对第一个诉讼请求，上诉法院认为，SEP专利权人寻求按国家协商专利许可可能完全不切实际的(wholly impractical)，因为通过在各国进行诉讼以达成许可过于昂贵。这表明SEP专利权人和实施者之间的达成一个全球性的许可是FRAND的。

上诉法院分析了涉及这个问题的国际上的各种案件。华为援引了欧盟委员会在摩托罗拉案中的决定，其中欧盟委员会认定苹果公司提供仅德国的许可是FRAND的。但是，法院分析了两起德国案件（Pioneer v Acer和St Lawrence v Vodafone ，德国法院认定全球许可协议是FRAND的。法院还分析美国，中国和日本的案件，它认为这些案件在这个问题上没有帮助。

上诉法院因而同意一审法官的判决判决，即全球范围的许可协议是FRAND的。但是，他也认为这并不意味着英国法官可以就其他国家的标准必要专利的侵权或有效性问题进行了裁决。

上诉法院并没有同意一审法院只能做成单一的许可费率的决定，他认为根据谈判双方的条件不同，FRAND许可费率可以不同。

针对第二个诉讼请求，上诉法院认为FRAND原则中“无歧视”要求不是“硬边”(hard edged)的，法院应该允许接受不同的定价，如果SEP专利权人愿意接受一个更低的定价，没有理由不允许他这么做，这样做最终是有利于消费者的福祉的。

针对第三个诉讼请求，上诉法院虽然认为UP具有市场支配地位，但是，认定UP并没有滥用其市场支配地位。上述法院认为Huawei v ZTE案并没有强制性规定SEP专利权人必须在诉讼程序前进行充分的谈判，否则就不能提出禁令请求，而且华为在诉讼前其实已经知道如果UP持有标准必要专利，其必须要接受许可协议。

综上所述，上诉法院驳回了华为的上诉请求。

5 附录：上诉判决摘录

Paragraph 54 - ... Just as implementers need protection, so too do the SEP owners. They are entitled to an appropriate reward for carrying out their research and development activities and for engaging with the standardisation process, and they must be able to prevent technology users from free-riding on their innovations. It is therefore important that implementers engage constructively in any FRAND negotiation and, where necessary, agree to submit to the outcome of an appropriate FRAND determination.

Paragraph 56 - ... depending on all the relevant circumstances, a global licence between a SEP owner and an implementer may be FRAND. Indeed, on the face of it, it is very hard to see how a contrary view could be justified. Assuming such a licence is not discriminatory, it would be the product of two undertakings acting fairly and reasonably. What is more, it seems to us, at least as a matter of principle, that there may be circumstances in which it would not be fair and reasonable to expect a SEP owner to negotiate a licence or bring proceedings territory by territory and that in those circumstances only a global licence or at least a multi-territorial licence would be FRAND.

Paragraph 74 - We therefore reject the submission made to us by counsel for Huawei that the approach adopted by Birss J in these proceedings loses sight of the territorial nature of patent proceedings and does not accord with the approach taken in other jurisdictions. It is true that Huawei’s position derives support from the decision of the Commission in Motorola but the views of the Commission as expressed more recently in the November 2017 EU Communication are in our view both consonant with the approach of the judge and consistent with the other decisions to which we have been taken and which we have summarised. So we must now turn to the other criticisms of the judge’s approach and the practical difficulties to which it is said to give rise.

Paragraph 83 -  It may be true that the approaches of courts around the world to the assessment of royalties under a worldwide licence are not at present wholly aligned but this is not surprising given the developing nature of this jurisdiction. We also consider it relevant that, subject to the discrimination issue the subject of ground two of the appeal, no challenge is made in this appeal to the royalty rates and the basis for their assessment which the judge found to be FRAND in all the circumstances of this case. As for the two particular instances of allegedly divergent approaches, it was common ground between the parties’ expert economists, Professor Neven and Dr Niels, that the FRAND scheme did not mean that a patentee could not appropriate some of the value associated with the inclusion of its technology into a standard and the value of the products using the standards, and neither side disputed this. The judge recognised that he might be differing from certain parts of the decisions in In Re Innovatio and Ericsson v D-Link but since neither side was taking the point it was not necessary for him to look into it further. The second area of divergence is said to be in relation to discrimination and this is a topic we address under ground 2 of the grounds of appeal. Suffice it to say at this stage that neither of these areas of divergence leads us to think the judge has fallen into error as a matter of principle.

Paragraph 88 - We do not accept that the judge’s approach wrongly assumes validity and infringement of UP’s foreign SEPs or that a licensee is required to forgo its right to challenge the validity and essentiality of those SEPs. To the contrary and as we have explained, the judge stated in terms that a FRAND licence should not prevent a licensee from challenging the validity and essentiality of licensed patents and should make provision for sales in non-patent countries. It is of course true that the licence provides for payment of royalties in respect of the use by Huawei of UP’s whole portfolio of SEPs but the alternative would be to require UP to bring proceedings in each territory in which its SEPs subsist. That is not how a reasonable and willing licensor and licensee in the position of, respectively, UP and Huawei would behave; it would be a blue print for hold-out; and, as Mr Cheng accepted, the costs of such litigation for UP would be prohibitively high.  So the outcome would be that, as a result of its FRAND undertaking, UP would not be able to secure an injunction in any jurisdiction and would not be able to secure payment of royalties for those jurisdictions in which it could not afford to bring proceedings.

Paragraph 110 - ... The judge found that, having regard to the size and extent of UP’s SEP portfolio and the multinational nature of Huawei’s business, such a licensor and licensee would regard country by country licensing as madness. The reason is given by judge at [544]: such an approach would be needlessly inefficient because of the effort required to negotiate and agree so many licences and then to keep track of so many different royalty calculations and payments. The judge arrived at this conclusion having heard a good deal of evidence and we can see no possible justification for interfering with it.

Paragraph 111 - ... On the assumption that only a country by country approach to licensing is FRAND, a patentee in the position of UP would face not just the needless expense of negotiating and managing licences on a country by country basis but also the problem of dealing with a potential licensee which is holding-out and refusing to engage in a reasonable way with the negotiation process. The patentee must then bring proceedings country by country to secure the payment of the royalties to which it is entitled. But unlike a normal patent action, where an unsuccessful defendant faces the prospect of an injunction, the reluctant licensee would know that, on the assumption it could only be required to take licences country by country, there would be no prospect of any effective injunctive relief being granted against it provided it agreed to pay the royalties in respect of its activities in any particular country once those activities had been found to infringe. So it would have an incentive to hold out country by country until it was compelled to pay. We therefore reject the submission that UP’s position would be adequately protected were it to bring proceedings in China or any other single country. Such proceedings would not secure the payment of all the royalties to which it is entitled in respect of Huawei’s activities in the other countries in which it carries on business.

Paragraph 115 - ... there is no question of a willing licensor and licensee relying upon two UK SEPs as a basis for a global licence. It has formed no part of UP’s case or the judge’s reasoning that they would. The basis for the judge’s finding that a willing licensor and a willing licensee in the position of, respectively, UP and Huawei would agree a global licence was the size and extent of UP’s SEP portfolio, the global nature of Huawei’s business and the inefficiencies inherent in any other approach.

Paragraph 117 - we think it is unfair to say that UP is using the threat of an injunction to leverage Huawei into taking a global licence. It is up to Huawei whether it takes a global licence or submits to the injunction in the UK and it is also important to have well in mind that the global licence settled by the judge is, subject to Huawei’s other points, FRAND. There is nothing unfair or unreasonable about its terms.

Paragraph 129 - The judge was entitled to find that in all the circumstances only a global licence would be FRAND. He fell into error in one aspect of his reasoning but this had no material effect on the conclusion to which he came. Ground one must therefore be dismissed.

Paragraph 176 - ... we agree with the judge that the non-discrimination limb of the FRAND undertaking is engaged in this case.

Paragraph 197 -  We accept that differential pricing is not per se objectionable, and can in some circumstances be beneficial to consumer welfare.  Counsel for UP made good the point that there is no point in mandating equal pricing for its own sake.  In short, an effects-based approach to non-discrimination is appropriate.  Once the hold-up effect is dealt with by ensuring that the licence is available at a rate which does not exceed that which is fair and reasonable, it is difficult to see any purpose in preventing the patentee from charging less than the licence is worth if it chooses to do so.

Paragraph 198 -  In that connection we consider that a non-discrimination rule has the potential to harm the technological development of standards if it has the effect of compelling the SEP owner to accept a level of compensation for the use of its invention which does not reflect the value of the licensed technology.  It is true that it is not compelled to grant any licence, and may hold out for a return which is commensurate with the value of the portfolio, but such an approach is not always commercially possible.  The undertaking should be construed in a way which strikes a proper balance between a fair return to the SEP owner and universal access to the technology without threat of injunction.  We consider that a hard-edged approach is excessively strict, and fails to achieve that balance, whereas the general approach achieves the objective of the undertaking by making the technology accessible to all licensees at a fair price.

Paragraph 207 - ... the judge was right to hold that the licence on offer to Huawei was on non-discriminatory terms

Paragraph 229 - Overall, we are satisfied the judge was entitled to find that UP had a dominant position in the market. He took careful account of the structure of the market, the expert and factual evidence before him, the FRAND undertaking and the possibility of hold-out, and he reached an evaluative conclusion. He made no error of principle and the conclusion he reached was properly open to him. UP has not established any basis upon which it would be appropriate to interfere with that conclusion and we reject UP’s challenge to it.

Paragraph 286 - It only remains to consider whether, as Huawei has also contended, the judge ought to have refused an injunction on the basis that it would be disproportionate or in some way other way inequitable. We think there is nothing in this point. The judge has found and in our view was entitled to find, that a global licence was FRAND and that UP had not engaged in any abusive behaviour. Huawei had infringed two SEPs and UP was entitled to an injunction to restrain further infringement unless Huawei took the licence he had settled.

Paragraph 289 - ... it was suggested that it would be inequitable to grant an injunction which would effectively compel Huawei to take a global licence having regard to the nature and geographical spread of its business and the ongoing litigation in Germany and China. We have already addressed the substance of this point in considering the first ground of appeal. UP has established that two of its SEPs have been infringed. The judge has settled a FRAND licence. Huawei can accept that licence and pursue the litigation on foot in other jurisdictions if it wishes to do so.

Paragraph 291 - For all of the reasons we have given, this appeal must be dismissed.

点击文末“阅读原文”，查看本案的判决书原文。

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