Alcatel Lucent SAS v Amazon Digital UK Limited & Ors

At the interlocutory stage, a case survives only if it has a real, rather than fanciful, prospect of success, supported by a coherent pleading and evidence. An implementer’s unconditional undertaking to take a court-determined RAND licence may support refusal of an injunction before the licence is concluded. It was sufficiently arguable that non-discrimination may concern the package of rights offered, including related NEPs, where comparable portfolio licensing practices are relied on. But a RAND commitment to negotiate in good faith and refrain from injunction proceedings does not, without a pleaded basis in the governing foreign law, create an obligation to grant an interim licence. Service-out gateways may encompass connected defences and global portfolio licensing claims anchored in UK patents. Moderate expedition was justified.

Alcatel claimed infringement of three NEPs against Amazon. Amazon relied on Nokia’s ITU-T declarations for Nokia Codec SEPs, contending that the resulting Swiss-law RAND commitment required a global licence, or an option to use Alcatel NEPs, and supplied a defence to injunctive relief. Amazon sought to amend its pleadings to claim an interim licence and brought a Part 20 claim against Nokia concerning RAND terms and the validity, essentiality and infringement of two UK SEPs.

The court determined strike-out and amendment applications, Nokia’s challenge to service out, and expedition. The central issues were whether the pleaded RAND case had a serious issue to be tried, whether Nokia was a proper party and the claims fell within the service-out gateways, and what degree of expedition was justified.

The applications were determined in part in Amazon’s favour and in part in Nokia and Alcatel’s favour.

1. Merits threshold. For strike out, amendment and the merits aspect of service out, the applicable question was whether there was a serious issue to be tried, meaning a real rather than fanciful prospect of success. The pleading had to carry some conviction, be coherent and properly particularised, and be supported by evidence establishing a sufficient factual basis: Kawasaki Kisen Kaisha Ltd v James Kemball Ltd [2021] EWCA Civ 33.
2. RAND obligations and injunctions. No sustainable claim was pleaded or evidenced that Alcatel itself was contractually bound by Nokia’s ITU-T declarations. Nokia’s practical ability to cause Alcatel to license patents did not itself create an obligation owed by Alcatel. However, an implementer giving an unconditional undertaking to enter into the court-determined RAND licence may have a defence to injunctive relief, because the court may refuse an injunction pending finalisation of the licence: Optis Cellular Technology LLC v Apple Retail UK Limited [2021] EWHC 2564 (Pat).
3. NEPs and non-discrimination. It was sufficiently arguable that RAND non-discrimination could concern the content of the package of rights offered, and not merely the price allocated to SEPs. Comparable portfolio licensing practices, including licences covering SEPs and NEPs, could therefore support an option to use related NEPs. Amazon’s defence and the RAND aspects of the Part 20 claim survived, subject to further pleading and disclosure. The parts asserting a direct contractual obligation on Alcatel were struck out.
4. Interim licence. An obligation under Swiss law to negotiate a final RAND licence in good faith, and any obligation not to seek injunctions meanwhile, did not by itself entail a positive obligation to grant an interim licence. Amazon had not identified a sufficient legal or evidential bridge to that relief. The amendment seeking an interim licence was therefore refused.
5. Jurisdiction. The Part 20 claim satisfied the applicable service-out test. Under Gateway 4 of the Civil Procedure Rules 1998, a defence could provide the issue making a foreign person a proper party. Gateways 16A and 4A were also available. Under Gateway 11, a claim enforcing RAND obligations arising from declarations concerning UK patents related to UK property, even though the licence sought covered a global portfolio. England was the appropriate forum because the RAND dispute was inseparable from Alcatel’s UK patent claim and its defence.
6. Expedition. The four-part test in WL Gore & Associates GMBH v Geox SpA [2008] EWCA 622 was applied. Nokia’s continuing multinational enforcement campaign created sufficient urgency, but the uncertainties in Amazon’s case, disclosure requirements and the interests of other litigants made a July 2025 trial inappropriate. Trial was directed for the beginning of October 2025, with a provisional estimate of 20 days including judicial reading.