Koninklijke Philips NV v Tinno Mobile Technology Corporation & Ors

A foreign judgment must be understood by examining its reasons as well as its operative order. Under Articles 29 and 30 of the Brussels Regulation, a court must identify the substance and timing of the actions, rather than assume that later particulars introduce a new claim. A FRAND statement of case may amplify an existing patent-infringement claim without creating a new cause of action. A party’s right to seek a FRAND licence does not confer an absolute right to choose a foreign forum or prevent the English court from considering FRAND issues linked to English patent relief. Infringement continues until an effective licence is granted. Worldwide sales may therefore be relevant to damages where the pleaded measure is based on a worldwide FRAND licence.

The claimant brought patent-infringement proceedings concerning two standard-essential patents. It accepted that an injunction would not be pursued if the defendants took a licence on FRAND terms. The defendants later commenced French proceedings seeking determination of worldwide FRAND terms. The French court rejected the claimant’s procedural objections under Articles 29 and 30 of the Brussels Regulation.

The defendants applied for a stay of the English FRAND trial. The claimant sought disclosure of UK and worldwide sales data, following admissions of essentiality, validity and infringement. The central issues were the effect of the French judgment, when the English court was seised of the FRAND issues, and whether a stay or disclosure order was appropriate.

1. The stay application was dismissed. The French judgment had to be read with its reasons, not merely its dispositif. The French court had found that the English and French proceedings did not have the same subject matter or cause for Article 29 purposes. It had not found that France was first seised of the same FRAND claim.
2. The FRAND statement of case particularised and amplified an existing case. The original pleadings already made FRAND terms relevant to the injunction and damages. The later request for a declaration that Philips’s terms were FRAND did not introduce a new claim. The English court was therefore first seised for Article 30 purposes.
3. Even assuming an Article 30 discretion to stay existed, it would not be exercised. Relevant considerations included the advanced stage of the English proceedings, the materially earlier trial date, the connection between FRAND determination and English patent relief, and the commercial prejudice caused by delay. The possibility of inconsistent judgments did not outweigh those factors.
4. TQ Delta LLC v ZyXEL Communications UK Ltd [2019] EWCA Civ 1277 established only that an implementer could waive its right to enforce a FRAND undertaking in the United Kingdom. It did not create an absolute right to choose where FRAND issues were determined.
5. The admitted infringement remained actionable until an effective licence was granted. A future or intended retrospective licence did not mean that no infringement had occurred. The November trial included the damages issue, and disclosure of UK and worldwide sales was relevant and proportionate because Philips pleaded damages by reference to a worldwide FRAND licence.

Philips’s disclosure application was allowed. Its interim-payment application was adjourned with liberty to apply. The parties agreed an order recording the relevant admissions.

First-instance decision. The judgment records that the French court rejected Philips’s procedural objections on 6 February 2020. Philips appealed the French decision on Article 30 but not Article 29.