Nokia v. HTC in UK: 關於禁制令的重點整理

UK High Court 判決文原文 (December 3, 2013)

FOSS Patents的報導

HTC的證交所重大訊息公告 (December 4, 2013)


12月3日英國High Court同意了Nokia請法院頒發禁制令，禁止HTC銷售侵害Nokia專利的產品。以下整理幾個重點，供大家參考。

這個案子我覺得可以讓公司法務當成內部給研發與採購宣導的教案，也可以作為跟供應商要求提早提供迴避設計料件時使用的例子。至少在英國，專利權人勝訴後要拿到禁制令相對美國容易，不能等判決出來了，才開始進行迴避。受美式訓練的系統廠商法務們關於這點可能要多留意。

第32段：在英國，准許禁制令的關鍵在於它不是 "grossly disproportionate" 。(試譯為 "顯不相當" )

... Drawing these threads together, I consider that Article 3(2) of the Enforcement Directive permits and requires the court to refuse to grant an injunction where it would be disproportionate to grant one even having regard to the requirements of efficacy and dissuasiveness. Where the right sought to be enforced by the injunction is a patent, however, the court must be very cautious before making an order which is tantamount to a compulsory licence in circumstances where no compulsory licence would be available. It follows that, where no other countervailing right is in play, the burden on the party seeking to show that the injunction would be disproportionate is a heavy one. I suspect that the practical effect of this approach is little different to Pumfrey J's test of "grossly disproportionate".

這個見解不免令人想到美國聯邦最高法院的ebay案，其改變了美國法院關於專利侵權訴訟案中頒發永久禁制令的標準。現在在美國即使專利法規定專利權是排它權，專利權人勝訴後要拿到禁制令排除他人實施，法院也必須考量四個衡平法上的因素：(1) 不可回復的損害、(2) 損害賠償不能適當地填補這個損害、(3) 原被告難處的平衡、以及 (4) 是否影響公眾利益。這很明顯比英國來的難多了。

英國看來是主要考慮因素是顯不相當。專利權人勝訴後要拿到禁制令，相對於美國容易。此外，從英國的觀點，不給禁制令只判損害賠償，感覺讓被告等於拿到了一個強制授權。這個觀點也值得思考。

第44段：HTC One旗艦機種2014第一季要在英國上市了？

"HTC is close to launching the successor flagship model to the HTC One. HTC has not revealed the launch date. Nokia has adduced evidence which suggests that the launch date is in the first quarter of 2014 and possibly as early as February 2014. HTC has not contradicted this."

哇，這真的是不小心抖出的消息耶。

第44段：到法院說話要小心啊。

"HTC's witness Brad Lin claims in paragraph 11 of his first witness statement that "The features of the chips selected by HTC [for the new phone] are unknown to HTC, and hence I do not know if they infringe EP 024". As expressed, the first part of this sentence is simply incredible. I shall assume that what Mr Lin means is that HTC does not know if the chips have the features of claim 1 of the Patent. The significance of that assertion, even assuming it is correct, depends on what efforts HTC has made to find this out, which neither Mr Lin nor any other witness reveals."

送到法院的文件，真的要很小心，說錯一句話都會被法官抓到。這邊法官說的是對的：說 "我不知道晶片裡的技術，所以我不知道它是不是侵害專利" 這個邏輯是真的有問題，應該是說 "我不知道晶片裡有沒有侵害專利的技術" 才對。

往後大家送宣誓書進法院，真的要逐句檢查啊。

第55-56段：Nokia就算變成patent troll，而不用作產品賺錢，也跟頒發禁制令與否無關。

In reality, what counsel for HTC meant was that Nokia was not interested in extracting money from exploitation of the patented invention by obtaining a monopoly price for its own goods as opposed to granting licences. But why does this matter? Whether the test for granting damages in lieu of an injunction is oppression (Shelfer/Jaggard), gross disproportionality (Navitaire) or even plain proportionality, the key question is the impact of the injunction on the defendant (Shelfer question 4). Of course the effect of denial of the injunction on the patentee must be considered (Shelfer questions 1-3), but why does it matter whether the effect is to deprive the patentee of the ability to charge a monopoly price for his own goods or merely to deprive him of the ability to charge an enhanced royalty in respect of the defendant's goods?

It seems to me that the answer to the question may be the opposite to that contended for by counsel for HTC. Where the patentee is intent on charging a monopoly price for his goods and for that reason refuses to grant consensual licences, the effect of an injunction may be to exclude the defendant from the relevant market unless the defendant has a non-infringing alternative. In some circumstances, that may be grossly disproportionate. Where, on the other hand, the patentee is willing to grant consensual licences, and seeks an injunction to compel the defendant to accept his commercial terms, the effect of the injunction will not be to exclude the defendant from the relevant market even if the defendant has no non-infringing alternative. Indeed, where the patentee has already granted licences to third parties, the effect of an injunction may simply be to prevent the defendant from exploiting the patented invention more cheaply than the third parties. It will be observed that, in either scenario, the effect of the injunction is crucially dependent on the availability of non-infringing alternatives....

這邊英國法官的邏輯值得思考。他的意思是說：

(1) 如果專利權人不想授權 (原因是只想把這個專利技術用在自家產品上，讓自家產品賣貴一點)，然後對他人的產品要禁制令，則禁制令的效果是把他人逐出市場，除非他人能找到不侵權的替代方案。某些情況下這有顯不相當的問題。

(2) 如果專利權人願意授權，那麼就算他人找不到不侵權的替代方案，對他人的產品要禁制令的效果並不是將他人逐出市場。在專利權人已經授權與第三人的情況下，禁制令的效果是避免他人更便宜地實施專利技術。

這跟美國的邏輯不同。如果是美國法官，應該會說，反正專利權人願意收權利金，用錢可以解決，那就沒有 " 不可回復的損害"，也無所謂 "損害賠償不能適當地填補這個損害"。那判損害賠償就好了，不能給禁制令。

第61-62段：因為零件而對系統產品頒禁制令OK。

... Counsel for HTC argued strongly that an injunction would be grossly disproportionate because the infringing circuits were only very small components of much larger and more complicated commercial products, viz. HTC's smartphones. For example, the Qualcomm WTR1605 chip is just one component out of about 670 components in the HTC One phone, and the chip contains other circuits in addition to the infringing one. I entirely accept that this is so. But why does it matter? I shall leave on one side the effect of the order for delivery up which normally accompanies an injunction, because that is a one-off effect which can, if appropriate, be addressed in other ways. So far as the future effect of an injunction is concerned, I cannot see that the mere fact that the injunction only relates to a small component of a larger whole is significant.

Counsel for HTC relied on the traditional analogy of a patented rivet (or sometimes it is a whistle) on a battleship. An injunction to restrain infringement of that patent by the battleship manufacturer (as opposed to the rivet supplier) would be disproportionate, he argued. But this depends on what the effect of the injunction actually is. If the battleship manufacturer has immediate access to a non-infringing alternative rivet, then the effect of the injunction on him will simply be the cost, if any, of switching from the patented rivet to the non-infringing one (both any one-off costs such as changing the production line and any ongoing cost differential in the component price). Of course, if the cost of switching from the patented rivet to a non-infringing rivet is prohibitive for some reason, then in practice the non-infringing rivet will not be a realistic alternative. Thus whether the injunction is disproportionate depends on the availability and cost of non-infringing alternatives.

我的理解是，是否應該因為零件的侵權而對系統產品頒禁制令，關鍵仍為是否構成 "grossly disproportionate"，而是否會構成grossly disproportionate需考量不侵權替代方案的成本。

如果禁制令造成被告太高的成本，比如為了一顆找不到替代方案的鉚釘而禁售一艘戰艦，那可能有grossly disproportionate的問題。但本案沒有這個問題。

第65段：是否有不侵權替代方案是關鍵。

... As I have said an important consideration, and perhaps the single most important consideration, in assessing whether the grant of an injunction to restrain patent infringement would be disproportionate is the availability and cost of non-infringing alternatives.

這跟上面重複，就不多說了。

第70段：

HTC does not dispute that these non-infringing alternative chips are already available to it (although it says that the Qualcomm RTR6285 and RTR6285A transceiver chips are outdated), or it will be able to source other non-infringing alternatives given sufficient time. Nor does it suggest that the cost of switching to a non-infringing alternative is prohibitive given sufficient time. Rather, HTC's evidence is that it will take (a) an unknown length of time for it to source a non-infringing alternative to the Qualcomm WTR1605(L) chip and (b) between 4 and 12 months to rebuild its phones around non-infringing chips. It is also HTC's evidence that the Broadcom BCM4335 cannot be swapped pin-for-pin for the BCM4334, and that it would take about 12 months to rebuild the One Mini with the BCM4335....

基本上法官覺得，就算不知道找不侵權替代晶片要多久，就算找到也要花4-12個月才能重作出有不侵權替代晶片的成品，成本不是很高。用12個月用BCM4335來重作成品，法官好像也認為還好。

可是大家都知道，12個月之後產品說不定都下市了啊。

其實我猜，從上下文來看，法官心裡想的是：(1) 一直都有不侵權替代方案，只是Qualcomm的已經out of date，Broadcom的又不是pin-to-pin相容而已；(2) Nokia 18個月之前就在德國告你了，如果你說要12個月，現在應該也快準備好了，是HTC你自己沒有提早準備。

看來HTC的律師強調 "迴避設計成本太高" 這個點失敗，並沒有強調到讓法官覺得到了grossly disproportionate的程度吧。這部份只能說完全看法官了。要是我，我會覺得要12個月重作成本很高耶，已經是grossly disproportionate了啦。

第72段：

It is convenient, however, to address at this juncture the fact that, as explained in my previous judgment, Broadcom and Qualcomm both regard their chip layouts as highly confidential and are vigilant to protect that confidentiality. HTC suggests that this has somehow handicapped HTC in ascertaining whether the chips in its phones infringe the Patent and in obtaining non-infringing alternatives. There is no evidence, however, that HTC ever asked either Broadcom or Qualcomm whether any of the chips in issue had the features of claim 1 of the Patent and was met with either a denial or a refusal to answer. Nor has HTC revealed whether or nor either Broadcom or Qualcomm has expressly indemnified it against infringement of the Patent, or, if not, whether it considers that either Broadcom or Qualcomm had impliedly done so.

法官說HTC沒有提出關於以下的證據： (1) HTC有沒有問過供應商晶片是否侵權，以及 (2) 供應商是否有明示或默示的擔保。

HTC沒有提證據的理由不難猜吧：(1) 說不定是有問過，結果是有，所以沒有留證據 (訴訟打完也是有侵權)，(2) 大晶片廠沒有在擔保下游廠商的吧，所以當然沒有相關證據。

第83段：HTC沒有講它作了什麼準備，Qualcomm也不太理它。

.... HTC has not adduced any evidence as to what contingency plans it made in case there should be a finding of infringement of the Patent. HTC had over 18 months from the commencement of the German proceedings on 2 May 2012 to the hearing on the form of order on 28 November 2013 in which to make contingency plans. Even from the date of Nokia's cross-action on 23 July 2012, HTC had over 16 months. HTC's evidence is almost entirely silent as to what it was doing in this period to prepare for any injunction. It does not reveal whether, or if so when, HTC asked Broadcom or Qualcomm whether the chips which HTC was buying from them had the features of claim 1 of the Patent. Nor, save in one respect, does it reveal whether, or if so when, HTC asked Broadcom or Qualcomm to design non-infringing alternatives or, if so, with what result. All that is said is that, at the time that Nokia introduced its allegation that the Qualcomm chips infringed (which I take to mean late March 2013), HTC asked Qualcomm to provide a workaround and (so it is said) Qualcomm refused. According to HTC, it is only on 26 November 2013 that Qualcomm changed its position and agreed to look into the possibility of a workaround.

看來HTC是曾經要求Qualcomm提早提供迴避設計的晶片，結果Qualcomm直到上個月底侵權判決出來了，才同意看看迴避的可行性。

唉，HTC好可憐。