MediaTek, Inc & Ors v Huawei Technologies Co, Ltd & Anor

In deciding requests for further disclosure at a case management hearing, the court must balance the likely value of the material against the burden of obtaining and producing it. The assessment is especially important where the trial is imminent. Disclosure should be ordered where there is a fair prospect that the material will assist the trial judge and the burden is limited. A request may be refused where its relevance is speculative, its evidential foundation is insufficient, or the burden is disproportionate. Refusal of an insufficiently developed request does not necessarily prevent a party pursuing the issue later if the pleadings, significance and burden become clearer.

The claim concerned the prospective settlement of a licence relating to Huawei’s standard-essential patents. At a case management hearing, the court considered MediaTek’s request for disclosure of four infrastructure licences and Huawei’s requests for further disclosure concerning licensing level, territories of alleged infringing acts, and essentiality assessments held by patent-pool organisations. The central issues were whether the requested material was likely to assist the trial judge and whether the burden and timing justified making disclosure orders.

1. MediaTek’s request. Huawei was ordered to disclose four infrastructure licences. Although disclosure involved some complication, the number of licences was limited and there was a fair prospect that the data would assist the trial judge in assessing the relative value of infrastructure-only and handset-only licences when settling a licence covering both.
2. Huawei’s Request 1. Disclosure of documents from proceedings concerning whether standard-essential patents should be licensed at chip or device level was refused. The alleged industry practice might become relevant, but it was uncertain whether the trial judge would be influenced by trade practice rather than the particular facts. The evidence did not clearly establish that MediaTek had previously sought chip-level licences, and the request was likely to impose considerable work.
3. Huawei’s Request 5. The court declined, at that stage, to order information about territories in which MediaTek performed infringing acts other than manufacture or sale. The issue had emerged shortly before the hearing, the evidence did not address the additional burden, and it was unclear from the pleadings how the point would arise. Huawei was not shut out from pursuing the request later, when its significance and burden could be assessed properly.
4. Huawei’s Request 10. MediaTek was ordered to use its best endeavours to request 4G and 5G essentiality assessments from the organisations running patent pools of which it was a member. Essentiality was likely to be significant at trial, the documents might be valuable, and seeking them was not likely to be excessively burdensome.