Interdigital Technology Corporation & Ors v Lenovo Group Limited & Ors
[2024] EWHC 742 (Pat)
InterDigital Technology Corporation & Ors v OnePlus Technology (Shenzen) Co & Ors
17 February 2023
[2023] EWCA Civ 166
Court of Appeal
Two companies were fighting over secret license deals. A judge made OnePlus, one of the companies, promise not to use the secret information they got in other license deals for two years, even with different companies. OnePlus appealed, but the higher court said the judge was right, because it was early in the case and OnePlus hadn't given enough information about how they would keep the secrets safe.
Key Facts
- •Appeal concerning a confidentiality regime in a patent case involving InterDigital and OnePlus.
- •Dispute over the scope of an undertaking required of a OnePlus employee with access to confidential licensing documents.
- •Two versions of the undertaking were proposed: a wide form (prohibiting any SEP licensing) and a narrow form (prohibiting licensing only with specific counterparties).
- •The judge, Mellor J, opted for the wide form, citing a cautious approach given the early stage of proceedings and limited evidence from OnePlus.
- •OnePlus appealed, arguing the wide form was wrong in principle and unnecessary.
- •The case involved FRAND (Fair, Reasonable, and Non-Discriminatory) licensing of Standard Essential Patents (SEPs).
Legal Principles
In managing disclosure of confidential information, the court must balance the interests of the receiving and disclosing parties.
Warner-Lambert Co v Glaxo Laboratories Ltd [1975] RPC 354; Mitsubishi v One Plus (Shenzhen) [2020] EWCA Civ 1562
The court must consider the stage of proceedings and the structure/organisation of the receiving party when determining the appropriate level of confidentiality.
Mitsubishi v One Plus (Shenzhen) [2020] EWCA Civ 1562; Al-Rawi and others v Security Service [2011] UKSC 34
A staged approach to disclosure is appropriate, with restrictions potentially relaxed as the case progresses.
Mitsubishi v One Plus (Shenzhen) [2020] EWCA Civ 1562
Outcomes
Appeal dismissed.
The Court of Appeal held that the judge's decision to impose the wide form undertaking was a proper exercise of his powers, given the early stage of proceedings, limited evidence from OnePlus regarding its organizational structure, and the potential for unfairness to both InterDigital and other counterparties if the narrower form was used. The court found that the risks of unfairness were matters of degree, not kind, and that a cautious approach at an early stage was justified.
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