Analysis of SEPs, FRAND Licensing, and Jurisdictional Challenges in Philips v TCL Case

Citation: [2020] EWHC 2553 (Ch)
Judgment on


In the high-profile case of Koninklijke Philips NV v Tinno Mobile Technology Corporation & Ors, Mr Justice Mann presided over a complex patent action involving standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing terms. The case necessitated an intricate legal debate that covered multiple jurisdictions, the interpretation of contractual obligations under the European Telecommunications Standards Institute (ETSI) policy, and the application of both Articles 29 and 30 of the Brussels Regulation. This analysis elucidates the legal principles applied in this case and highlights their direct correlation with the pertinent aspects of the summary.

Key Facts

Philips claimed that the defendants (TCL) infringed their patents, which are acknowledged as SEPs for operating 3G and 4G mobile phone handsets. Philips, willing to grant a FRAND license, sought declarations on the fairness and reasonableness of its terms, or alternatively, determinations of FRAND terms. TCL accepted that Philips’ patents are essential and indicated an intention to obtain a FRAND license, leading to jurisdictional challenges and the commencement of related proceedings in France. Philips responded by defending its right to prosecute the case in the English courts and to determine FRAND terms and appropriate remedies for alleged infringement.

The key legal principles emerging from this case include:

  • SEPs and FRAND Commitments: A contract was established with ETSI, binding SEP holders to grant FRAND licenses and enforceable as a “stipulation pour autrui”. The UK court had to consider whether a FRAND license offer by Philips and TCL’s acceptance would retrospectively negate any infringement and impact potential remedies.

  • Lis Pendens and Related Actions Under Brussels Regulation: The court had to decide if Philips or TCL commenced actions first, applying Article 29 (lis pendens) and Article 30 (related actions) of the Brussels Regulation. Mr Justice Mann interpreted the significance of lis pendens, notably when jurisdiction is appropriately established in multiple related cases across EU member states.

  • Jurisdictional Challenges: TCL’s shift from challenging jurisdiction to defending the claim in the UK courts post-initiation of the French proceedings was a significant turning point. The acknowledgment of service and failure to pursue the jurisdiction challenge effectively submitted TCL to the jurisdiction of the English courts.

  • Damages and Disclosure: The court’s decision to grant disclosure sought by Philips for worldwide and UK sales data is pertinent as it relates to the damages quantifiable based on Philips’ FRAND licensing terms.


The outcomes of the case were multifaceted:

  • TCL’s application for a stay under Article 29 was dismissed, with the court noting the French and English actions did not contain the same cause of action.
  • Disclosure was granted in favor of Philips, allowing them to obtain sales data to possibly substantiate a damages claim.
  • Philips’ request for an interim award of damages was adjourned with liberty to apply.
  • The court found the November trial will evaluate both the FRAND terms and the damages claim, contrary to TCL’s arguments.


Mr Justice Mann’s detailed judgment in Koninklijke Philips NV v Tinno Mobile Technology Corporation & Ors provides a substantive discourse on the interaction between SEPs, FRAND obligations, and cross-jurisdictional litigation. The case reinforces the legal mechanisms that govern multi-national patent disputes, ensuring that consistency in judicial interpretation under the Brussels Regulation is maintained. Moreover, it underlines the UK courts’ capacity to handle cases involving complex commercial and technical dimensions within the global telecommunication industry. This ruling is a landmark in clarifying the approaches towards FRAND licensing disputes and the jurisdictional parameters within which such cases can be contested.