Lenovo Group Limited & Ors v Telefonaktiebolaget LM Ericsson (publ) & Anor
[2024] EWHC 846 (Ch)
Lenovo Group Limited & Ors v Interdigital Technology Corporation & Ors
25 April 2024
[2024] EWHC 1036 (Pat)
High Court
Lenovo sued InterDigital for a license to all its patents, not just the ones promised to a standards body. The judge decided Lenovo's case was strong enough to continue in a UK court, even though Lenovo had made some mistakes along the way, allowing them to fix their paperwork and proceed with their case. The judge also decided that some mistakes Lenovo made didn’t invalidate the court proceedings.
Key Facts
- •Lenovo brought proceedings against InterDigital seeking declarations of invalidity, non-essentiality, and non-infringement of UK SEPs.
- •Lenovo also sought a declaration that InterDigital is required to enter into an agreement with Lenovo covering InterDigital's patent portfolio (a 'Portfolio Licence') on FRAND terms.
- •InterDigital contested jurisdiction, arguing that the English courts lacked jurisdiction to compel a Portfolio Licence.
- •Lenovo applied to amend its Particulars of Claim to address InterDigital's jurisdictional objections.
- •Prior litigation between the parties (the 'Earlier English Proceedings') resulted in a determination of a FRAND rate for a global licence of InterDigital's Cellular SEPs (the 'Cellular PLA').
- •Lenovo argued that InterDigital's ETSI FRAND commitment, combined with its licensing practices, requires offering a Portfolio Licence to avoid discrimination.
Legal Principles
Permission to serve a claim form out of the jurisdiction requires a serious issue to be tried, a good arguable case falling within a gateway in Practice Direction 6B, and England and Wales being the proper forum.
CPR 6.37, AK Investments v Kyrgyz Mobile Tel CJSC [2011] UKPC 7
One permissible claim cannot be used as a Trojan horse to permit other claims for which the court would lack jurisdiction.
Donohue v Armoco Inc [2001] UKHL 64
To satisfy the merits test, a claim must be pleaded coherently and properly particularised and supported by evidence establishing a factual basis.
Kawasaki Kisen Kaisha Ltd v James Kemball Ltd [2023] EWCA Civ 33
On an application to amend, the court must consider whether the claim, as amended, has a real prospect of success.
CPR 17.3
A SEP-holder's obligation is to offer a FRAND licence; if multiple FRAND licences are possible, the SEP-holder can choose which to offer.
Nokia v Oppo [2023] EWHC 1912 (Pat)
An applicant for an ex parte order must show utmost good faith and disclose its case fully and fairly, identifying crucial points for and against the application and disclosing all facts reasonably taken into account by the judge.
Siporex Trade v Comdel Commodities [1986] 2 Lloyds Rep 428
Outcomes
InterDigital's Jurisdiction Application was dismissed.
The claim for a Portfolio Licence satisfied the merits test; there was a reasonable prospect of success.
Lenovo's Amendment Application was granted.
The court found that the Amended Particulars of Claim, addressing InterDigital's objections, had a realistic prospect of success.
Mellor J's order for service out was not set aside.
Lenovo's failure to disclose breaches of confidentiality was considered inadvertent and occurred after the ex parte stage of the application; the novelty of the Portfolio Licence claim was sufficiently disclosed.
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