Patents Court refuses to grant injunction against infringement of standard essential patent before FRAND trial

January 8, 2022

The Patents Court has ruled in another FRAND case in Interdigital Technology Corporation and others v Lenovo Group Ltd and others [2021] EWHC 3401 (Pat).

InterDigital was the owner of a telecommunications standard essential patent (SEP) which the courts had previously ruled was valid and essential. Lenovo was alleged to have infringed the SEP.  

The facts were similar to those in the previous case of Optis v Apple. InterDigital argued that in Optis, Meade J had already decided the issues on which InterDigital’s entitlement to an injunction depended, so an injunction should be granted in this case. However, the court declined to grant InterDigital an injunction before the trial of FRAND issues.

In his ruling, Hacon J reviewed the decision in Optis and evidence about the relevant French law which governed the obligation to grant FRAND licences for telecommunications SEPs.

He pointed out that on the working day before the application Lenovo had brought proceedings in China to settle a global licence, but from the year 2024. The UK court was the only tribunal so far asked to settle FRAND terms of the patents in this series of proceedings. On the other hand, neither side wished the FRAND terms of a licence under this patent to be settled separately from terms relating to other patents in the portfolio.

In the Optis case, Meade J had appeared to accept that the obligation on the part of an implementer found to have infringed an SEP to commit to take FRAND terms settled by the court was hard-edged. But necessarily he was taking that view in the context of the facts of Optis, in which the Patents court was the only tribunal under consideration for the settlement of the terms. Meade J had made no ruling that the obligation was hard-edged in the sense of requiring the implementer invariably to commit to FRAND terms to be settled by the court in which the finding of infringement of one patent in the portfolio had been made or, looked at another way, the court preferred by the SEP owner.

The UK courts had not yet considered the effect of French law and the circumstances in which an implementer continues to benefit from it, in particular where it refuses to commit to take a FRAND licence on terms to be settled by the tribunal preferred by the SEP owner but gives an unqualified undertaking to take a licence on terms to be settled by another tribunal which has jurisdiction to settle the terms. This was a matter which could only be decided after cross-examination of the experts and full argument.

As a result, the application to grant an injunction was dismissed.