Lenovo Group Limited & Ors v Ericsson Limited & Anor
[2024] EWHC 2941 (Pat)
Kigen (UK) Limited v Thales Dis France SA
8 November 2022
[2022] EWHC 2846 (Pat)
High Court
Kigen sued Thales for a licence, but Thales argued it was unfair because Kigen might not take the licence even if the court sets a fair price. The judge agreed and paused the case unless Kigen promises to take the licence or changes its claim.
Key Facts
- •Kigen (UK-based) sued Thales (French) over two UK patents related to eSIM technology.
- •Thales asserted the patents were SEPs (Standards Essential Patents) and Kigen's activities infringed.
- •Kigen sought declarations of invalidity/non-essentiality or a FRAND (Fair, Reasonable, and Non-Discriminatory) licence.
- •Thales challenged the court's jurisdiction and sought a stay, arguing Kigen had no obligation to take a licence.
- •Kigen initially claimed a free-standing FRAND licence but later clarified its willingness to take a licence only if the patents were found valid and essential.
- •Thales offered a licence but Kigen's counter-offer was significantly lower.
- •Thales proposed ADR (Alternative Dispute Resolution) via WIPO mediation, which Kigen rejected.
Legal Principles
Jurisdiction to set FRAND licence terms for a global portfolio of related patents, even if lacking jurisdiction over foreign patents.
Unwired Planet v Huawei [2020] UKSC 37
An unwilling licensee defendant cannot decline to give an undertaking and resist an injunction pending FRAND term determination after infringement.
Optis v Apple, Trial F, [2022] EWCA Civ 1411
Abuse of process if a claimant pursues a FRAND claim without an undertaking to take a licence, especially if costs might exceed licence value.
Judgement in this case
Outcomes
Stay of the FRAND claim granted.
Kigen's position changed from a free-standing claim to a licence as a defence, creating an abuse of process. Unless Kigen amends its claim to reflect this or provides an undertaking to take a licence, the FRAND claim is stayed.
Thales to receive two-thirds of its costs.
Thales was the overall successful party, though it failed on several grounds, and significant time was spent by both sides addressing arguments.
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