Motorola Mobility LLC & Anor v Ericsson Limited & Anor

An interim injunction must protect the legal or equitable right asserted in the underlying claim. The claimant’s alleged loss must be caused by the infringement of that right. Loss caused by enforcement of different patent rights in other jurisdictions cannot satisfy that requirement merely because the disputes form part of a wider FRAND dispute. In a SEP case involving non-competing parties, damages calculated by reference to the sum payable under a FRAND licence will normally be adequate. An injunction cannot be used as commercial leverage to induce conduct concerning different rights or proceedings. If such relief is justified, the proper application may be for an anti-suit injunction.

The claimants sought an interim injunction pending trial of their claim alleging infringement of EP (UK) 3,646,649, a patent declared standard-essential and subject to FRAND licensing obligations. The proposed order would restrain the defendants from supplying relevant 5G equipment or software in the United Kingdom, but would not operate if the defendants agreed to specified global or interim cross-licensing arrangements.

The claimants’ stated purpose was to exert pressure on the defendants to abandon or refrain from enforcing injunctions obtained in Brazil and Colombia in relation to different patents. The defendants disputed infringement and contended that the alleged loss was ordinary royalty loss. The central issue was whether the proposed injunction could properly be granted under the American Cyanamid principles.

1. Application dismissed. The principles in American Cyanamid v Ethicon apply to an application for interim relief in a FRAND case. The court must consider whether there is a serious issue to be tried, the adequacy of damages for each side, and, if necessary, the balance of convenience.
2. The purpose of interim relief is to protect the claimant against harm caused by violation of the right asserted in the substantive claim. The injunction jurisdiction is confined to relief for enforcement or protection of a legal or equitable right. It cannot be used simply to obtain a different commercial outcome.
3. Although a loss need not be recoverable in damages to make damages inadequate, there must still be a causal connection between the alleged infringement and the harm relied upon. The claimants’ loss arose from injunctions concerning the defendants’ patents in Brazil and Colombia. Those injunctions were not caused by infringement, or alleged infringement, of the patent in suit.
4. In a FRAND case involving non-competing parties, the patentee’s loss can normally be quantified by the amount it would have earned under a FRAND licence. Damages were therefore an adequate remedy. The proposed injunction would not protect the claimants’ rights under EP 649; on the claimants’ own case, its intended function was to induce the defendants to alter their conduct in other jurisdictions.
5. The court noted that the use of proceedings in multiple jurisdictions to exert pressure to agree supra-FRAND terms had been deprecated, but that concern did not permit the conditions for interim injunctive relief to be circumvented. The application failed without the need to decide the remaining American Cyanamid questions. The court nevertheless recorded that an injunction in the proposed terms would cause the defendants substantial losses, some inadequately compensable under the cross-undertaking.