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In 2012 and in 2014, a client of «A.Zalesov & Partners» Patent & Law Firm - a company of «Ericsson» group - filed two patent infringement suits against a Russian affiliate of the «TCL» company («Alcatel» group) based on standard essential patent protecting a method of signal coding. These cases were the first (and are the only so far) patent infringement disputes in Russia based on SEP (standard essential patent).

The most interesting issue under question was the burden of proof: whether the plaintiff should prove that in process of using the challenged phones the patented method of coding is in fact implemented, or, since the phones are alleged to comply with the standard, it is enough to prove, that the standard implements exactly the patented method of signal coding. Although the in-court examination confirmed that by implementing a 3G standard the patent under question is used, in March 2015, the Moscow Arbitration Court considered that it is not enough for proving that the method is actually implemented when the phones are working, since hypothetically they can encode information not in accordance with 3G standards as well.

We appealed this decision, since although 3G standards are not legally binding for Russian territory, the availability of the features in question is technically obligatory for operating of the phones in 3G networks, while the defendants did not prove, that their phone operate in a different way. The case was considered in many countries, and was suspended in all other jurisdictions except California pending the decision in the US.

In 2021, the case was renewed after the United States District Court for the Central District of California accepted the agreement of the parties regarding the amount of license fees. On August 27, 2021 the Ninth arbitration court of appeal accepted the refusal of our client from the claims and  cancelled the decision of the first instance regarding allocation of the burden of proof which is quite noteworthy.

The partners of «A.Zalesov & Partners» Aleksey Zalesov and Irina Ozolina represented the client in court. For more details about the case please refer to the link.

This case is of great importance for the future practice of patent infringement disputes based on SEP in Russia.

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