Caselaw Digest
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Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors

5 July 2024
[2024] EWHC 1733 (Pat)
High Court
Panasonic and Xiaomi are fighting over a phone patent. Xiaomi wants a temporary license while they wait for a final court decision, saying Panasonic is being unfair by suing them in Germany. The judge sided with Panasonic, saying the German lawsuit is okay and ordering Xiaomi to drop the request for the temporary license. The judge didn't want to interfere with the German courts.

Key Facts

  • •Panasonic holds standard essential patents (SEPs) for 3G and 4G technology, declared essential by ETSI.
  • •Xiaomi uses these SEPs in its smartphones and has agreed to reciprocal undertakings with Panasonic to determine FRAND (Fair, Reasonable, and Non-Discriminatory) license terms in the English court.
  • •Panasonic is pursuing injunctions against Xiaomi in German courts, while Xiaomi argues this is a breach of Panasonic's FRAND commitment and seeks a declaration for an interim license.
  • •Xiaomi proposes an interim license with interim royalty payments into court, pending the determination of FRAND terms at the English trial.

Legal Principles

Interpretation of the ETSI IPR Policy and FRAND commitment.

ETSI IPR Policy, Clause 6.1; French law; English case law (Unwired Planet, Optis v Apple, Nokia v Oppo, Interdigital v Lenovo)

Principles governing anti-suit injunctions.

Deutsches Bank AG v Highland Crusader Offshore Partnership LP [2010] 1 WLR 1023

Granting of declaratory relief.

CPR Part 40.20; Financial Services Authority v Rourke [2002] CP Rep 14; Clarke v Fennoscandia Ltd (No 4) [2007] UKHL 56; Howden North America Inc v ACE European Group Ltd [2012] EWCA Civ 1624; Teva UK Ltd v Novartis AG [2022] EWCA Civ 1617; TQ Delta LLC v ZyXEL Communications UK Ltd [2019] EWCA Civ 1277

Interim relief, including interim declarations and payments.

CPR Part 25.1(1)(b); CPR Part 25.7; Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] EWHC 2111

Good faith in contract performance under French law.

Article 1104 of the French Civil Code; expert evidence of Professors Stoffel-Munck and Borghetti; Nokia Technologies OY v Oneplus Technology (Shenzhen) Co Ltd [2023] EWHC 1912 (Pat)

FRAND defense under German law.

Article 102 TFEU; Huawei v ZTE; expert evidence of Professors Ann and Meier-Beck

Outcomes

Xiaomi's application for a declaration requiring Panasonic to grant an interim license is dismissed.

The court found that Panasonic's FRAND commitment does not require granting an interim license, and that pursuing injunctions in German courts, while undertaking to provide a FRAND license in the English court, is not, in itself, a breach of good faith. The court also found that granting the declaration would serve no useful purpose and would be an inappropriate interference with the jurisdiction of the German courts.

Panasonic's application to decline jurisdiction over Xiaomi's counterclaim for an interim license is granted.

The court deemed the counterclaim for an interim license to be an attempt to influence the German proceedings, lacking utility under English law and potentially constituting an improper interference with the German courts’ jurisdiction.

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