Huawei Technologies Co, Ltd v Conversant Wireless Licensing S.A.R.L.

A forum non conveniens inquiry must address the dispute as it truly arises. A claim to enforce national patents cannot be recast as a claim to enforce a global portfolio right merely because the relief may depend on whether a global FRAND licence would be appropriate.

Where the dispute requires determination of the validity, essentiality and infringement of United Kingdom patents, England is the proper, and may be the only possible, forum. It is not an answer that a foreign court could determine disputes concerning different patents in the same portfolio. The FRAND issues bearing on a conditional injunction are inseparable from the United Kingdom patent claim and cannot ordinarily be severed or stayed for determination elsewhere.

Conversant Wireless Licensing S.A.R.L. sued companies in the Huawei and ZTE groups for infringement of four United Kingdom standard-essential patents. It sought the usual patent relief, including a conditional injunction, and declarations concerning FRAND terms for a licence of its patent portfolio.

The Chinese defendants challenged service out and all defendants contended that China was the more appropriate forum. They relied on Chinese proceedings concerning Conversant's Chinese patents and on the significance of manufacture and sales in China. Henry Carr J dismissed both jurisdiction challenges: [2018] EWHC 808 (Pat).

On appeal, the appellants accepted that a separate justiciability challenge was foreclosed at this level. The central issue was whether the global FRAND aspects meant that China, rather than England, was the proper forum for the overall dispute.

1. Appeal dismissed. Floyd LJ, with whom Flaux and Patten LJJ agreed, held that the judge had correctly characterised the dispute. The claim concerned the enforcement of identified United Kingdom patents. Its resolution would require decisions on their validity, essentiality and infringement, together with whether the respondent's FRAND undertaking affected its entitlement to relief.

2. The court rejected the appellants' characterisation of the dispute as one concerning a global portfolio right. No such right exists. A global licence may be FRAND, but that does not alter the territorial character of patent rights or make it immaterial which national patents the patentee elects to enforce. Requiring the respondent to litigate in China would require it to rely on different Chinese patents, involving different claims, prior art, technical issues and acts of infringement.

3. Applying the Spiliada principles, England was clearly the appropriate forum and, for the United Kingdom patent dispute, the only possible forum. The further Chinese-law evidence did not suggest that a Chinese court could determine the validity of United Kingdom patents.

4. The proposed severance or stay of the FRAND issues was not a proper application of forum non conveniens. Consideration of the parties' offers against the FRAND criterion was embedded in deciding whether the respondent could obtain relief for infringement. The requested declaration was dependent on a finding that a United Kingdom patent was valid and essential. No case-management stay was justified because the Chinese proceedings would determine only a licence for Chinese patents and would not resolve the United Kingdom claim.

5. The court also held that the appellants could not extend the reflexive effect of Article 24(4) of the Brussels I Recast Regulation to a dispute merely closely allied to foreign-patent validity. The United Kingdom defendants were real defendants with substantial businesses, so their presence properly weighed against fragmentation. The court would admit the fresh evidence but found it speculative and insufficient to show that China would determine a global licence without consent. It refused a reference to the CJEU.

• Court of Appeal (Civil Division). The appeal was dismissed. The court upheld the refusal to decline jurisdiction on forum non conveniens grounds and refused a proposed reference to the CJEU: [2019] EWCA Civ 38 .
• High Court, Patents Court. Henry Carr J dismissed the appellants' challenges to jurisdiction: [2018] EWHC 808 (Pat) .