Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2016] EWHC 2220
This was the trial of a preliminary issue in a three standard essential patent infringement action concerning high speed packet access (HSPA) technology in mobile telecommunications networks. The issue was whether a covenant not to assert patents in an agreement between Philips and Qualcomm Inc. provided a defence for HTC. The Qualcomm agreement was governed by the law of the State of California. Accordingly Arnold J considered expert evidence of foreign law, factual evidence relating to the circumstances in which the Qualcomm agreement was made and performed as well as technical expert evidence which addressed the relevant telecommunications technologies.
Arnold J held that Philips’ covenant not to assert its “CDMA Technically Necessary Patents” against nominated customers of Qualcomm did not extend to HSPA patents on the grounds that HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, properly construed according to California Law, having regard to the admissible extrinsic evidence. Arnold J further held that the proviso to the covenant carved out hybrid CDMA/TDMA technologies, including HSPA, in any event. Finally Arnold J. held that the covenant did not extend to HTC’s products that incorporated third-party (i.e. non-Qualcomm) chipsets.