Interdigital Technology Corporation v Lenovo Group Limited

An injunction following infringement of a standard-essential patent should not be granted before a FRAND trial merely because an earlier decision treated an implementer’s commitment to accept court-determined FRAND terms as decisive. The earlier decision must be read in its factual and legal context. Where the implementer proposes a qualified commitment involving another tribunal, and the effect of that proposal under French law has not been decided, the issue requires full evidence and argument. An arguable unresolved issue prevents an injunction being granted at the interim stage.

The claimants established at an earlier technical trial that EP 558 was valid, essential and infringed. They sought an injunction unless the defendants entered into a global FRAND licence, relying on Optis Cellular Technology LLC v Apple Retail UK Limited [2021] EWHC 2564 (Pat). The defendants declined to give an unqualified commitment to accept the licence terms to be determined at the forthcoming FRAND trial. They proposed a qualified arrangement taking account of proceedings and possible determinations in China and the United States.

The issue was whether the earlier Optis decision made an injunction inevitable, or whether the defendants’ position raised new questions of French law requiring determination at the FRAND trial.

1. The application was dismissed. The court declined to grant an injunction before the FRAND trial.
2. The earlier Optis decision did not establish an invariably hard-edged rule that an implementer must commit to accept FRAND terms determined by the court in which infringement of one patent was established. The decision was made in a context where this court was the only tribunal under consideration for determining a global licence. It therefore did not decide the effect of an undertaking to accept terms determined by another tribunal with jurisdiction to settle them (paras [58]-[61]).
3. The relevant question under French law was whether an implementer continued to benefit from the stipulation de contrat pour autrui created by the SEP owner’s undertaking under clause 6.1 of the ETSI IPR Policy where it refused to commit to terms determined by the tribunal preferred by the SEP owner, but offered an undertaking involving another tribunal. That question had not been considered by Meade J, or so far as the court was aware by any other court (para [61]).
4. The defendants’ proposed commitment was qualified and vague. Nevertheless, the evidence did not show that it was unarguably disqualifying under French law. The issue required cross-examination of the experts and full argument. The Chinese and United States law evidence was peripheral to the interim application, while the French law evidence went directly to the availability of an injunction (paras [45]-[46], [62]).
5. The court rejected the contention that the injunction followed inexorably from Optis. The matter was left to be determined after the necessary evidence and argument, principally at the FRAND trial.