Motorola Mobility LLC & Anor v Ericsson Limited & Anor

In an interim injunction application founded on patent infringement, the claimant must show a serious issue to be tried and identify harm caused by the alleged infringement for which damages would be inadequate. Loss caused by enforcement of patents or injunctions in foreign jurisdictions is not caused by UK infringement merely because both form part of a wider FRAND dispute. A broad equitable jurisdiction to grant injunctions does not displace the principled application of American Cyanamid. An order restraining UK infringement cannot be used solely as leverage to regulate foreign proceedings or force licensing negotiations. Where the relief sought does not protect the right sued upon, the court need not proceed to the balance of the risk of injustice.

Lenovo appealed against the dismissal of its application for an interim injunction restraining Ericsson from allegedly infringing a UK standard-essential patent, EP 649, pending trial. Both parties held global SEP portfolios and accepted that their reciprocal FRAND commitments required a global cross-licence. Lenovo relied on injunctions obtained or sought by Ericsson in Brazil, Colombia and the United States, arguing that they exerted illegitimate commercial pressure.

Bacon J dismissed the application, holding that royalties or equivalent damages would adequately compensate Lenovo and that the foreign losses were not caused by the alleged UK infringement: [2024] EWHC 1267 (Pat). The appeal concerned adequacy of damages, the balance of the risk of injustice, the scope of interim-injunction jurisdiction, and whether the relief sought was impermissible anti-suit relief or could be justified by unconscionability.

Arnold LJ gave the judgment of the court. Phillips and Moylan LJJ agreed. The appeal was dismissed.

1. Applicable principles. The application was founded on alleged patent infringement and was governed by the principles in American Cyanamid Co v Ethicon Ltd [1975] AC 396. Those principles are not a statutory code, but they provide the established framework for exercising the court’s discretion. The equitable power to grant injunctions is broad and may develop with changing circumstances, but its exercise must remain principled and subject to precedent and rules of court. Section 37(1) of the Senior Courts Act 1981 did not remove those requirements.
2. Adequacy of damages. If EP 649 were valid and infringed, Lenovo’s UK losses could be quantified by the royalties payable under the FRAND cross-licence, or by equivalent damages if no licence were entered into. The possibility that commercial pressure might cause Lenovo to settle before trial did not establish that royalties or damages would be inadequate. The principle that irrecoverable losses may in some circumstances demonstrate inadequacy of damages did not assist Lenovo because the relevant losses were not caused by the infringement relied upon.
3. Causation and the relief sought. Losses caused by injunctions obtained in Brazil and Colombia were not factually caused by Ericsson’s alleged supplies of infringing products in the UK. The proposed UK injunction would not affect the foreign proceedings or injunctions. It was instead intended to provide leverage in negotiations. The alleged connection arising from the parties’ wider SEP dispute and reciprocal FRAND obligations did not satisfy the required causal connection.
4. FRAND and equitable jurisdiction. The parties’ ETSI commitments required good-faith engagement with a FRAND licensing process and supported determination of a global cross-licence. They did not make the requested injunction an appropriate means of regulating foreign enforcement. Lenovo had not brought the application as a claim to enforce clause 6.1 of the ETSI IPR Policy, and the alleged breach was disputed. Nor had Lenovo demonstrated unconscionable conduct. The court accepted that the complaint about parallel enforcement had force, but the application invoked no relevant jurisdiction capable of granting the relief sought.
5. Anti-suit relief. The proposed order would operate as anti-suit relief by compelling Ericsson to accept specified interim terms or face restraint of UK acts. That differed from the ordinary SEP injunction mechanism, where a defendant may elect to take a court-determined global FRAND licence and the injunction is granted only after the ordinary criteria for injunctive relief are satisfied.
6. Because damages were an adequate remedy for Lenovo, the balance of the risk of injustice did not arise for decision. Grounds 1 to 4 therefore failed.

• Court of Appeal (Civil Division) dismissed Lenovo’s appeal: [2024] EWCA Civ 1100.
• High Court of Justice, Patents Court dismissed Lenovo’s application for an interim injunction: [2024] EWHC 1267 (Pat).