Facts

InterDigital Technology Corporation is currently suing Lenovo Group Ltd in relation to five of its standard essential patents (SEPs) claiming inventions in 3G and 4G telecoms technology, which it says Lenovo is infringing through the manufacture and sale of its mobile phone devices.

In July 2021, His Honour Judge Hacon heard the first in a series of trials. The patent in question was a European Patent (UK) entitled “Method and apparatus for providing and utilizing a non-contention based channel in a wireless communication system” (the Patent). HHJ Hacon found the Patent to be valid, essential and infringed by Lenovo.

A FRAND trial to settle the terms of a global licence of InterDigital’s patent portfolio to Lenovo, which includes the five patents in contention as well as patents granted in other territories including China and the US, was due to be heard in January 2022. However, Lenovo has declined to undertake to take such a global licence without qualifications. The commitment to taking a licence determined by the English court that it was prepared to make was qualified by a requirement that a mechanism be provided for ensuring that the findings of the US and Chinese courts (where proceedings are running in parallel to the UK proceedings) are given effect.

InterDigital sought both a declaration that, pending entry into a FRAND licence, Lenovo was not entitled to rely on InterDigital’s undertaking to ETSI under clause 6.1 of the ETSI IPR Policy and an injunction prohibiting Lenovo from infringing the Patent.

InterDigital argued that, following the decision in Optis Cellular Technology LLC v Apple Retail UK Limited [2021] EWHC 2564 (Pat) (see September 2021 update), it was entitled to the injunction sought, as the situation was the same as in that case. Lenovo argued that the decision could not be made now and should be determined after judgment in the FRAND trial. It said that the grant of the injunction turned on issues not considered in Optis, issues that could only be resolved by full consideration following cross-examination of experts in French, Chinese and US law.

Decision

HHJ Hacon declined to grant an injunction at this stage on the ground that French law on the ability of an implementer (i.e., Lenovo) to continue to rely on a third party benefit (i.e., InterDigital’s undertaking to ETSI under clause 6.1), was not considered in Optis as it was not relevant.  In  particular Optis did not consider the position where the implementer has refused to commit to take a FRAND licence on terms to be settled by the tribunal chosen by the SEP owner (i.e., InterDigital’s choice of the English court), but has given an unqualified undertaking to take a licence on terms to be settled by another tribunal with jurisdiction to do so.. The issue has not, in fact, been considered by any court. The commitment offered by Lenovo was qualified and vague, but it was still not possible to say that under French law, Lenovo’s qualified and vague commitment unarguably disqualified it from the benefit of the third-party benefit created by InterDigital’s undertaking to ETSI and clause 6.1 of the ETSI IPR Policy. This could only be decided after cross-examination of the experts and full argument. (InterDigital Technology Corporation v Lenovo Group Ltd [2021] EWHC 3401 (Pat) (16 December 2021)) — to read the judgment in full, click here).