Alcatel Lucent SAS v Amazon Digital UK Limited & Ors

A timely amendment to a statement of case should ordinarily be permitted unless the proposed claim or defence has no real prospect of success. In a rapidly developing area of law, the court should generally determine the facts before defining the law’s limits.

An implementer had a real prospect of establishing that a willing patent licensor would grant an interim licence pending judicial determination of final reasonable and non-discriminatory terms. Material considerations included the implementer’s undertaking to accept the final licence, the retrospective adjustment of interim payments and the licensor’s pursuit of foreign injunctions. An interim licensing hearing holds the ring pending trial. It does not require a second full trial of final licensing terms.

Amazon appealed against part of Zacaroli J’s order in Alcatel Lucent SAS v Amazon Digital UK Ltd [2024] EWHC 1921 (Pat). The judge had refused permission to amend Amazon’s Defence and Counterclaim and Part 20 Particulars of Counterclaim to seek a declaration and specific performance concerning an interim licence.

The dispute concerned Nokia’s global portfolio of patents relating to video standards. It included patents declared essential under ITU-T standards and non-essential patents. Amazon had undertaken to accept a final licence on terms determined by the Patents Court to be reasonable and non-discriminatory. Meanwhile, Nokia was pursuing infringement proceedings and injunctive remedies in several jurisdictions.

After Panasonic Holdings Corp v Xiaomi Technology UK Ltd [2024] EWCA Civ 1143, Amazon revised its proposed interim licence to reflect the scope of Nokia’s own offer concerning the standard-essential patents. The central questions were whether Amazon’s interim-licence claim had a real prospect of success and whether case-management considerations nevertheless justified refusing the amendments.

1. Appeal allowed. Amazon had a real prospect of establishing that a willing licensor in Nokia’s position would agree to enter into an interim licence pending determination of final RAND terms. The Court therefore permitted the amendments to both the Part 20 Particulars of Counterclaim and the Defence and Counterclaim.

2. The proposed amendments were timely. The applicable rule was that an amendment should be permitted unless it raised a claim or defence with no real prospect of success. The area was developing rapidly, so the facts should be established before attempting to define the limits of the law.

3. Foreign law was a question of fact. In the absence of Swiss-law evidence, Amazon’s pleaded allegations had to be assumed to be correct. Those allegations included duties of good-faith negotiation under Article 2 of the Swiss Civil Code and a right to compel performance under Article 112.

4. Amazon had undertaken to accept the global and retrospective licence ultimately determined by the Patents Court to be RAND. Nokia was therefore assured of royalties, interest and adjustment of any interim overpayment or underpayment. Against that background, Amazon had an arguable case that Nokia’s continued pursuit of foreign injunctions was inconsistent with good-faith performance of its RAND obligation and that a declaration or specific performance would be appropriate.

5. The differences between this dispute and Panasonic Holdings Corp v Xiaomi Technology UK Ltd [2024] EWCA Civ 1143 did not deprive Amazon’s case of a real prospect of success. It was arguable that the differences were immaterial. These included Nokia’s failure to commence a domestic SEP claim, its lack of an undertaking to accept court-determined RAND terms and its enforcement of non-essential patents.

6. Amazon’s revised offer did not make the appeal procedurally inapposite or incoherent. The revision narrowed the dispute by adopting the scope of Nokia’s own offer for the interim period. Acceptance of an interim arrangement without prejudice to the final case was consistent with the interim licence’s ring-holding function.

7. The judge’s case-management concern rested on an incorrect premise. An interim-licence application would not reproduce the full RAND trial. It would determine only entitlement to an interim licence and suitable temporary terms, with payments adjustable after the final decision. Case management remained for the Patents Court, but the application would need expedition if it were not to become nugatory.

Newey and Snowden LJJ agreed with Arnold LJ.

1. Court of Appeal (Civil Division): In [2025] EWCA Civ 43, the court allowed Amazon’s appeal and permitted the proposed amendments to the Part 20 Particulars of Counterclaim and the Defence and Counterclaim.
2. Patents Court: In [2024] EWHC 1921 (Pat), Zacaroli J refused permission for amendments seeking an interim licence, having concluded that the proposed claim had no real prospect of success. Other aspects of Amazon’s RAND case survived strike-out and jurisdictional challenges.