UNWIRED PLANET INTERNATIONAL LTD v HUAWEI TECHNOLOGIES CO LTD (NO. 3)

[2018] R.P.C. 8 409 UNWIRED PLANET INTERNATIONAL LTD v HUAWEI TECHNOLOGIES CO LTD (NO. 3) PATENTS COURT [2017] EWHC 3083 (Pat); [2018] R.P.C. 8 Patents – European patents – Standards essential patents – Infringement proceedings – Assessment of FRAND terms – Open justice – Confidentiality – Commercially sensitive licence terms – Whether redactions appropriate – Relevant considerations – UK (nonFRAND) licence terms H1 H2 This report concerns a dispute as to the extent of the redactions to be made following the handing down of the decision on the non-technical trial in infringement proceedings brought in respect of a series of patents in the telecommunications field which were standards essential patents (“SEPs”) and which had been declared as such to the relevant standards body, the European Telecommunications Standards Institute (“ETSI”). The non-technical trial was the first judgment in this jurisdiction in which a court had had to adjudicate as to whether particular terms offered were or were not fair, reasonable and nondiscriminatory (“FRAND”) and to assess both the appropriate royalty rate and the appropriate territorial scope of such a licence. In the course of that assessment a considerable amount of evidence had been adduced which was alleged by one or more of the parties to be confidential. When in due course the judgment of Birss J. (“the main judgment”) was circulated to the parties’ legal advisers in confidence in advance of formal hand down, it included commercial licensing information relating to telecommunications standards patent licences to which at least one of Unwired Planet, Huawei, Samsung or Ericsson was a party. A question then arose as to whether, and if so to what extent, such information should be redacted from the publicly available version. At that point the judge took a generous view of the claims to confidentiality and a version of the main judgment in which the reasoning of the court could be comprehended but which, so far as possible, preserved the parties’ positions pending further argument was then handed down for public dissemination.1 The judgment reported here is that delivered following a further hearing on the issue of redaction. The arguments advanced by the parties included the contention that disclosure of such information would be contrary to the public interest and/or significantly harm the legitimate business interests of the undertaking to which it related and that it might even be a dampener to companies being willing to give disclosure to assist justice being done in future cases. After the judgment reported here had itself been handing down, a further version of the main judgment was 1 [2017] EWHC 711 (Pat), Pat Ct. [2018] R.P.C., Issue 6 ß Crown copyright 2018. This article contains public sector information licensed under the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3/) Birss J.: 29 June and 30 November 2017 410 H3 UNWIRED PLANET V HUAWEI (NO. 3) prepared including such additional material as Birss J. had duly determined should be included.2 Annexed to the decision are the terms of a UK only licence which the parties had agreed reflected the terms of the main judgment as settled by the court save that it was not worldwide. The judge stressed that he had specifically held that such a UK only licence was not FRAND (see [49]). Held, (1) Unless the public could see and understand a judge’s reasons they could not hold the courts to account. There was therefore a strong principle that all parts of a judgment should normally be publicly available. Nevertheless there were occasions on which judgments could be redacted. Redactions would require powerful reasons, supported by cogent evidence which addresses the details. Certain kinds of proceedings might regularly involve redactions due to the nature of the proceedings and the material involved. In any event however redactions had to be kept to the bare minimum. Relevant factors when assessing whether redactions were appropriate included the following: (i) the nature of the information itself: e.g. 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 would 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 might be justified. The effect on competition and competitiveness could be a factor but would need to be examined critically; (iii) the nature of the proceedings: e.g. privacy injunctions and competition law claims might require some redaction while an intellectual property damages claim might not. The point was not that different kinds of case demanded a different approach, but that the balance of factors would 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 did not deliberately insert irrelevant information into judgments but not every word of a judgment was as important as every other word. It might be that some sensitive information could 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 knew that they would have to disclose their profit margin in the proceedings and that those proceedings were public. A third party whose only relationship with the case was that they were a party to a contract disclosed by one of the parties to the litigation was in a different position. ([23], [24]) 2 [2017] EWHC 2988 (Pat), reported at [2017] R.P.C. 19. Published by Oxford University Press for the Intellectual Property Office H4 [2018] R.P.C. 8 H6 H7 R (on the application of Mohamed) v Secretary of State for Foreign and Commonwealth Affairs (No 2) [2010] EWCA Civ 158, [2011] QB 218, [2010] 3 WLR 554, CA; R (on the application of Willford) v Financial Services Authority [2013] EWCA Civ 674, [2013] CP Rep 43, CA; Lilly ICOS Ltd v Pfizer Ltd (No. 2) [2002] EWCA Civ 2, [2002] F.S.R. 54, CA; Sainsbury’s Supermarkets Ltd v Mastercard Inc [2016] CAT 11, [2016] Comp AR 33, CAT; Microsoft Corp v Motorola, Inc., 25 April 2013, W. Distr. Washington, US Dist. Ct. and HTC Corp v Nokia Corp [2013] EWHC 3247 (Pat), [2014] R.P.C. 19, CA, considered. (2) In the present case all of the information sought to be redacted was commercial licensing information. Without the figures sought to be redacted the public could not see the underlying data wh (...truncated)