Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors
[2024] EWHC 1733 (Pat)
Tesla, Inc & Anor v Idac Holdings, Inc & Ors
15 July 2024
[2024] EWHC 1815 (Ch)
High Court
Tesla sued companies for a fair price on a 5G license. The court said it couldn't force a fair price on everyone, and a US court would be better to decide because most of the companies are based there.
Key Facts
- •Tesla, Inc. and Tesla Motors Limited (Tesla) sued InterDigital Holdings, Inc., InterDigital Patent Holdings, Inc., InterDigital Holdings, Inc., and Avanci, LLC (InterDigital and Avanci) for declarations of invalidity and non-essentiality of 3 UK patents, and alternatively, for declarations about the availability and terms of a license for standard essential patents (SEPs) relating to the 5G telecommunications standard and a determination of fair, reasonable, and non-discriminatory (FRAND) terms.
- •Tesla primarily sought a declaration that the terms of Avanci's 5G platform license are not FRAND and a determination of what terms are FRAND.
- •InterDigital and Avanci challenged the court's jurisdiction.
- •Tesla sought to amend its Particulars of Claim to include a claim against Avanci based on its role as licensing agent for the Patentees.
- •The case involved questions of jurisdiction, abuse of process, representative proceedings, and forum conveniens.
Legal Principles
A "free-standing" claim for declaratory relief in relation to a FRAND licence is impermissible in English law.
Vestel Elektronic Sanayi Ve Ticaret AS v Access Advance LLC [2021] EWCA Civ 440
An implementer can proactively seek to have global FRAND terms set in the UK.
Unwired Planet International Ltd v Huawei Technologies (UK) Co Ltd [2020] UKSC 37; Nokia Technologies OY v OnePlus Technology (Shenzhen) Co., Ltd [2023] EWHC 1912 (Pat)
Representative proceedings under CPR rule 19.8 can be used to bind parties with insufficient connection to the jurisdiction.
Lloyd v Google LLC [2021] UKSC 50
The court has discretion to grant declaratory relief even if the rights or obligations are not vested in either party to the proceedings.
Milebush Properties Ltd v Tameside Metropolitan Borough Council [2011] EWCA Civ 270
An applicant for permission to serve proceedings outside the jurisdiction is under a duty of full and frank disclosure.
Sloutsker v Romanova [2015] EWHC 545 (QB)
Outcomes
Service of the claim on the Defendants out of the jurisdiction was set aside, except for service on IDH as a defendant to the patent claim.
The court found no serious issue to be tried against Avanci or InterDigital on the licensing claim, and that the representative procedure was not appropriate in this case. Furthermore, England and Wales was not clearly the most appropriate forum.
The application to strike out the licensing claim against IDPH was granted.
The licensing claim against IDPH alone was not viable as it could not be effectively tried without the other patentees and Avanci.
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