Infringement of a UK Standard Essential Patent does not justify global damages

London, 5 November 2020 – Hogan Lovells has secured an important victory for its client HTC against IPCom in a long-running patent litigation battle. In its judgment handed down this week, the UK Patents Court struck out a claim that damages for infringement of a UK standard essential patent (SEP) should be calculated by reference to sales of devices outside of the UK, because the foreign sales were not caused by the UK infringement.

This decision provides important clarification that SEP damages are not approached on the same basis as FRAND licence terms (where the UK Supreme Court has recently confirmed that the patent holder's ETSI undertaking empowers the UK Courts to determine FRAND licence terms of a portfolio of patents including foreign patents).

Katie McConnell, partner at Hogan Lovells advising HTC, said: "This decision provides welcome clarification that damages for SEP infringement do not follow the global, portfolio approach of FRAND licensing. The judgment is a victory for common sense, avoiding the possibility that a single instance of UK patent infringement will necessarily result in damages liability for global sales for the life of that UK patent, even though no infringement of foreign patents has been proven."

"It is hoped that in due course the Courts will also confirm that UK damages are similarly limited to infringing phones, and do not extend to UK workaround devices that the Court has expressly found do not infringe."

The full judgment is available here.

The full Hogan Lovells team advising HTC included Katie McConnell (partner), Paul Brown (partner), Ian Moss (senior associate), James Gray (associate), and Raina Hayles (trainee), instructing Tom Hinchliffe QC of 3 New Square and Colin West QC of Brick Court.

For additional background on the case, please read our blog on HL Engage here.

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