Amazon.com, Inc & Ors v Interdigital VC Holdings, Inc & Ors

Claims by an implementer for RAND relief concerning UK standard-essential patents may relate to UK registered rights even where the relief sought includes a global portfolio licence. The court must distinguish the subject matter of the claim from the territorial or global scope of the licence sought.

Validity of service under CPR r.63.14, the gateways for service out, and a forum non conveniens application are assessed at different times and involve different burdens. Later undertakings or arbitration offers cannot retrospectively affect service or gateway questions.

Arbitration is consensual. A court should not compel a claimant to arbitrate by staying proceedings where the proposed arbitration is less suitable, less open, or less authoritative than the English proceedings.

Amazon brought claims concerning four UK patents declared essential to ITU-T video standards. It sought patent declarations, declarations concerning the scope and effect of InterDigital’s RAND commitments, determination of global RAND licence terms, specific performance, and competition-law relief.

InterDigital challenged service within the jurisdiction, permission to serve out, and the appropriateness of England and Wales as the forum. It relied on undertakings not to enforce certain UK patents, an offered arbitration, and undertakings to submit to courts in Switzerland or Delaware.

The central issues were whether the RAND and competition claims related to UK registered rights, whether service and the gateways were valid, and whether another forum was available and clearly or distinctly more appropriate.

1. Service and timing. Whether claims fell within CPR r.63.14 was assessed at the date of purported service. The claimant bore that burden. A forum non conveniens application was assessed at the date of the stay application, with the defendant bearing the burden of showing an available forum that was clearly or distinctly more appropriate. Permission to serve out was assessed at the date it was granted.
2. Characterisation. The court declined to depart from the consistent line of authority beginning with Unwired Planet. RAND claims were properly characterised as claims concerning the Challenged Patents and the contractual obligations attached to them, notwithstanding that the licence sought might cover a global portfolio. The description of the claims as “nakedly contractual” did not alter that analysis.
3. Service and gateways. The RAND claims related to registered UK patents and were validly served under CPR r.63.14(2). Gateway 11 was satisfied. The claims raised a serious issue to be tried, and permission to serve out had been validly granted.
4. Later undertakings. InterDigital’s undertaking not to enforce its UK patents did not provide the licence sought, did not remove the jurisdictional connection, and did not provide equivalent certainty or coverage. Because the undertakings and arbitration offer post-dated service and the service-out order, they could be considered only in relation to the stay applications.
5. Alternative fora. Switzerland and Delaware were available by reason of InterDigital’s undertakings, but neither was clearly or distinctly more appropriate. The UK had substantial connections through the UK patents, UK competition-law claims and affected UK markets, the application of UK law to those claims, the timing of relief, and the availability of open and authoritative proceedings.
6. Arbitration. Although arbitration may be desirable generally, the proposed arbitration could not properly be imposed through a stay. Arbitration is consensual, and compelling Amazon to enter a contractual arbitral relationship would be inappropriate. The proposal was also less satisfactory because of its complexity, likely delay, limited openness, and the uncertainty surrounding final RAND rate-setting.
7. Disposition. The Jurisdiction Challenge failed. Service as of right and permission to serve out were valid. A forum non conveniens stay and a case management stay were refused.