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2 000076
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
BETWE E N:
. 02 MAR 2015~'
VRINGO INFRASTRUC URE, INC. .
. RECEIVED
'---- ~----~-- Claimant
- and-
Introduction
1. This is the Claimant's Statement of Case in relation to the Relief Trial served
pursuant to paragraph 5 of the Order of Mr Justice Birss of 30 January 2015.
2. In summary:
a. EP (UK) No 1 212 919 ("Patent 919") has been found valid and
infringed by the Defendant, and the Defendant has expressly
threatened to continue its infringing conduct. In the premises, subject
to the matters set out below, the Claimant seeks permanent injunctive
relief;
b. The Claimant is and has at all material times been willing to license its
standards-essential patents ("SEPs") on fair, reasonable, and non-
discriminatory ("FRAND") terms;
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Defendant a licence in respect of the Claimant's global patent portfolio
("a Global Portfolio Licence"), the Claimant is willing voluntarily to
enter into a licence agreement with the Defendant under which the
Defendant. would be granted a licence to Patent 919 for the United
Kingdom (a "Patent 919 UK Licence") on FRAND terms (it is not
admitted that there is any obligation on the Claimant to do so), should
the Defendant request such a licence;
d. '. Despite repeated requests, the Defendant has failed to specify the
terms of a Patent 919 UK Licence which it considers to be FRAND.
The Claimant sets out below the terms which it contends would be
FRAND;
e. Should the Defendant not enter into a licence with the Claimant on the
FRAND terms set out below, alternatively on such other terms as the
Court finds to be FRAND, then the Claimant seeks permanent
injunctive relief against the Defendant restraining the Defendant from
infringing Patent 919.
3. By judgment dated 28 November 2014 ("the Judgment") Mr" Justice Birss found
that Patent 919 was valid as amended and was infringed by the Defendant.
PARTICULARS
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5. Unless restrained by this Court, the Defendant will continue to perform the acts
of infringement found in the Judgment and/or the threatened acts of
infringement.
7. The Claimant is and was at all material times willing to comply with its ETSI
FRAND licensing obligations and licence its SEPs on FRAND terms.
10. The Claimant has filed an Answer, and will on or before 3 March 2015 file its
Counterclaim against ZTE Corporation. The Claimant has denied the
allegations of breach of contract and/or failure to licence the Claimant's SEPs
on FRAND terms advanced by the Defendant in the SDNY proceedings.
However, it is anticipated that in determining the matters in issue between the
parties to the SDNY Proceedings, the SDNY Court will determine what would
be the FRAND terms of a Global Portfolio Licence.
11. In these circumstances, the Claimant does not invite this Court to determine
the FRAND terms for a Gfobal Portfolio Licence. Rather, the Claimant is willing
. '\
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voluntarily to enter into a Patent 919 UK Licence with the Defendant on FRAND
terms (it is not admitted that there is any obligation on the Claimant to do so),
should the Defendant request such a licence, such Patent 919 UK Licence to
extend to the earlier of the expiry of Patent 919 .or a resolution which includes a
licence to Patent 919. The Claimant pleads the terms which it contends would
be FRAND below.
FRAND terms
12. By a lengthy exchange of correspondence which took place over the course of
approximately 2 years from February 2013 to February 2015 between Powell
Gilbert LLP on behalf of the Claimant and Olswang LLP on behalf of the
Defendant, the Claimant repeatedly requested that the Defendant clarify the
terms of a licence which it considered to be FRAND. Notwithstanding such
repeated requests, the Defendant has not done so.
13. Without prejudice to the Claimant's case that it is not obliged to offer the
Defendant more than one licence on FRAND terms and that it has complied
with its obligations by offering a Global Portfolio Licence on FRAND terms, the
Claimant is willing voluntarily to enter into a licence agreement with the
Defendant (it is not admitted that there is any obligation on the Claimant to do
so), under which the Defendant would be granted a Patent 919 UK Licence. It
is the Claimant's case that the following terms would he FRAND for a Patent
919 UK Licence:
b. The geographical scope of the licence would cover acts carried out in
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relation to Infringing Products in the UK (including those areas
specified in section 132 of the Patents Act 1977) only;
i.' 2.5% of the Defendant's turnover derived from acts carried out
in the UK in relation to Infringing Products (which equates to
approxim.ately 1% of the Defendant's turnover derived from
acts carried out in the uk in relation to all UMTS / LTE
infrastructure); and
d. The licence term would commence on the date of grant of Patent 919,
being 8 September 2010. Royalties for past infringements would be
payable within 30 days of entry into the licence;
e. The licence term would extend to the earlier of the expiry of Patent
919 or a resolution which includes a licence to Patent 919;
Relief sought
14. Should the Defendant not enter into a Patent 919 UK Licence on the terms set
out above, alternatively on such other terms as the Court finds to be FRAND,
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then the Claimant seeks permanent injunctive relief against the Defendant
restraining the Defendant from infringing Patent 919, together with an Order for
delivery up or destruction.
HENRY CARR QC
MARIE DEMETRIOU QC
THOMAS HINCHLlFFE
SARAH FORD
POWELL GILBERT LLP
STATEMENT OF TRUTH
The Claimant believes that the facts stated in this Statement of Case are true.
Signed
Full Name
. . . . at-.. . -. .-. . . . . . . . . . . . ..
Ari Laakkonen
Position PARTNER, POWELL GILBERT LLP
Claimant's solicitor
Served this 27th day of February 2015 by Powell Gilbert LLP of 85 Fleet Street,
London, EC4Y 1AE, solicitors for the Claimant.
Ref: VRI1.3/APl
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"
BETWEEN:
Claimant
-and-
Tel. 02030408000
Fax. 02030408001
OX: 358 London/Chancery Lane
Ref: VRI1.3/APL
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