Lenovo Group Ltd v Telefonaktiebolaget LM Ericsson [2024] EWHC 2941 (Pat)
This was an application for a short term licence between the parties pending determination of FRAND terms by a court of competent jurisdiction.
The parties were engaged in negotiations for a cross-licence in respect of each other’s standard essential patents. Both parties had referred the question of FRAND terms to a court – Lenovo to the Patents Court and Ericsson to the Eastern District Court of North Carolina. Lenovo had undertaken to enter into a licence on terms determined to be FRAND by the Patents Court and trial of the Patents Court FRAND proceedings was fixed for 2025. Notwithstanding this, Ericsson sought and obtained multiple preliminary injunctions against the appellants in Brazil and Colombia, as well as seeking exclusion orders in the US ITC, in an attempt to coerce the appellants into taking a licence on its terms before any court determination.
Richards J declined to grant the declaration sought, holding that he was not satisfied to a high degree of assurance that the conditions for making the declaration were met. A key part of his reasoning was the absence of any reciprocal undertaking by Ericsson to enter into a licence on terms determined to be FRAND by the English court.
The case is significant because it is the first application by the Patents Court of the new short term licence jurisdiction, confirmed by the Court of Appeal in Panasonic v Xiaomi [2024] EWCA Civ 1143 (Pat).
Kathryn Pickard was instructed for Lenovo.