Lenovo Group Limited & Ors v Interdigital Technology Corporation & Ors

For service out of the jurisdiction and amendment applications, a claim must have a real, rather than fanciful, prospect of success. The pleading is assessed fairly and realistically as a whole. Imperfect drafting does not defeat the claim where its substance is sufficiently clear and can be properly particularised.

A claimant seeking a FRAND portfolio arrangement need not show at the interlocutory stage that such an arrangement is the only possible FRAND outcome. The potential exercise of a right to choose another licence does not necessarily deprive a declaration of utility, particularly where the relevant jurisprudence is developing and disclosure may provide material evidence.

The claimants sought declarations concerning two United Kingdom standard-essential patents and asked the court to determine FRAND terms for a global licence. Their principal case was that InterDigital’s ETSI FRAND commitment could require an offer covering its wider patent portfolio, including other standard-essential patents and non-essential patents. InterDigital challenged jurisdiction under CPR Part 11 and opposed amendment of the pleading under CPR 17.3.

The court considered whether the portfolio-licence claim passed the applicable merits test and whether the earlier without-notice order permitting service out should be set aside for alleged failures of full and frank disclosure.

1. Merits test. The court applied the approach in Kawasaki Kisen Kaisha Ltd v James Kemball Ltd [2023] EWCA Civ 33. The claim had to carry some degree of conviction, be coherently and properly particularised, and be supported by evidence establishing a sufficiently arguable factual basis. The court should avoid a mini-trial, resolving factual conflicts, or finally determining a single issue where a full trial with disclosure and cross-examination remained necessary.
2. The pleading was to be read fairly, realistically and as a whole. Lenovo’s case was sufficiently intelligible: evidence of InterDigital’s licensing practice could support an allegation that offering Lenovo only a cellular-SEP licence would be discriminatory in the ordinary sense, and that a wider arrangement could therefore be FRAND. Lenovo was directed to join those points more clearly in the amended pleading, but the deficiencies did not defeat the claim.
3. The claim did not require Lenovo to establish that a portfolio licence was the only FRAND licence. The earlier cellular licence determination did not necessarily resolve what was FRAND on different evidence or at a later date. Although Nokia v Oppo [2023] EWHC 1912 (Pat) recognised a possible right to choose between FRAND licences, it was too early to conclude that this necessarily deprived a portfolio-licence determination of utility.
4. The application to amend was granted by reference to the April draft Particulars of Claim. The claim for a portfolio licence satisfied the merits test.
5. Full and frank disclosure. Applying Siporex Trade v Comdel Commodities [1986] 2 Lloyds Rep 428 and Sloutsker v Romanova [2015] EWHC 545 (QB), non-disclosure may justify setting aside service out, but the court retains a discretion. Following JSCBTA Bank v Ablyazov and another [2018] EWHC 259 (Comm), the duty continued only while the application remained ex parte. By the time Lenovo discovered the confidentiality breaches, the order had been served and the inter partes jurisdiction challenge was underway. The order therefore stood.

The Jurisdiction Application failed. Mellor J’s order permitting service out was not set aside.

First-instance decision on applications concerning jurisdiction, service out of the jurisdiction and amendment of the Particulars of Claim. The court refused to set aside the earlier order permitting service out and permitted amendment by reference to the April draft Particulars of Claim.