LUXEMBOURG - A federal Delaware jury has found that HTC wilfully infringed two standards essential cellular patents owned by Sisvel and has awarded a subsidiary of Europe’s largest patent pool operator $8.9 million before interest, based on royalty rates of $0.37 and $0.43 per unit for each of the patents.

The October 16 decision is the culmination of a lawsuit filed in 2017 relating to patents forming part of Sisvel’s 5G Multimode programme that were originally owned by French telecom operator Orange. The programme includes over 1000 patent families deemed essential to 3G/4G/5G cellular technology.

HTC had consistently maintained that the patents were not essential to the technology, and refused to take a license during pre-suit negotiations. At trial Sisvel argued that this meant HTC was not entitled to receive a FRAND rate because it was not acting as a willing licensee.

This makes the jury’s finding in Sisvel’s favour particularly significant. Its message is a clear one: in the US, FRAND is a two-way street that imposes obligations not only on licensors, but on licensees too.

“Sisvel is committed to licensing its standard essential patents on FRAND terms. However, if an implementer refuses to truly join in the FRAND process through good faith negotiations, that implementer is not a willing licensee," says Josh Reed, Sisvel’s Global Head of Litigation.

"Of course, FRAND rates are only available to willing licensees,” said David Muus, Sisvel’s Head of Legal Operations. He added. “We are very grateful that the jury recognised our position. We encourage other implementers to avoid unnecessary and costly litigation, to participate in the FRAND process, and not to jeopardise their access to FRAND royalty rates.”