Tesla v InterDigital & Avanci [2024] EWHC 1815 (Ch)
In this important decision as to the scope of the Patent Court’s Jurisdiction to hear implementor-brought FRAND determinations in respect of platform/pool licensing of Standards Essential Patents, Brian Nicholson KC and Kathryn Pickard represented Avanci in its successful Part 11 Application (before Fancourt J) to set-aside permission to serve out granted to Tesla on its ex parte application (before Mellor J).
Avanci is a platform operator offering 5G licences to the automotive industry on behalf of some 65+ 5G SEP holders. Tesla’s claim against Avanci was to have the Courts of England and Wales determine the FRANDness of Avanti’s 5G platform licence and, if necessary, set FRAND rates. Tesla contended that it could come within the principles set out by the Court of Appeal in Vestel Electronic Sanayi Vi Ticarat AS v. Access Advance LLC [2021] EWCA Civ 440. Fancourt J found otherwise, and set-aside permission to serve out against Avanci, holding that Tesla had not met the requirements set out in Vestel and there was no serious issued to be tried against Avanci. In any event, FancourtJ found that England and Wales was not clearly and distinctly the most appropriate forum for a dispute between Delaware entities concerning a licence subject to New York law, where there was no real suggestion that Tesla would not receive justice in the United States.
Tesla also sought to advance substantially the same claim against SEP-holding companies in the InterDigital group in their own right, and as representative defendants (pursuant to CPR rule 19.8) of all other 5G SEP-holders who have patents on the Avanci platform. Permission to serve out was also set-aside on the FRAND determination, (leaving only patent invalidity and non-essentiality claims extant, albeit that Tesla had indicated that it was not presently desirous to pursue those claims absent the FRAND determination).
Tesla may appeal to the Court of Appeal.
Brian Nicholson KC and Kathryn Pickard acted for Avanci, jointly instructed by Osborne Clarke and EIP