“…. As discussed above, the twin purposes of the ETSI IPR Policy are to avoid hold up and hold out. To achieve this it is necessary, in the absence of agreement between the parties, for the national court to be able to enforce its determination against both parties. The national court can only enforce its determination against the SEP owner by withholding an injunction from the SEP owner if it is unwilling to abide by its ETSI Undertaking by granting a licence on the terms determined to be FRAND. The national court can only enforce its determination against the implementer by granting an injunction against the implementer if it is unwilling to take a licence on the terms determined to be FRAND.”
“The … SEPs licensed here are subject to FRAND commitments. Avanci represents its current rates for the 4G Platform are FRAND …, and that Avanci intends its 5G rates also to be FRAND. … Each standard-essential patent holder will have to decide whether the Avanci Platform comports with its own FRAND commitments.”
“(1) Declarations that the Challenged Patents are invalid. (2) An order for revocation of the Challenged Patents. (3) Declarations that the Challenged Patents are not essential to the 5G Standard. (4) A declaration that Tesla is a beneficiary of the FRAND Commitment(s) of InterDigital and/or the Avanci 5G Pool Members in accordance with Clause 6.1 of the ETSI IPR Policy. (5) A declaration that the terms of the SPLA in so far as they relate to any patents in the Avanci 5G Pool which designate the United Kingdom are not FRAND and therefore do not comply with the relevant FRAND commitments given under Clause 6.1 of the ETSI IPR Policy; alternatively, a declaration as to the terms which are FRAND for those patents (alternatively, such patents within that pool as are owned by InterDigital). (6) A declaration that a FRAND licence covering the Challenged Patents, the InterDigital UK SEP Portfolio, the InterDigital International Portfolio or the portfolio(s) of any and each other Avanci 5G Pool Member (whether examining only United Kingdom patents or more broadly) is a licence (i) between Tesla and Avanci, (ii) that is worldwide in scope and (iii) covers the entirety of the Avanci 5G Pool. … (9) A declaration that terms proposed by Avanci for a licence between Tesla and Avanci covering the Avanci 5G Pool (including the Challenged Patents) are not FRAND. (10) A determination of what the FRAND terms would be for a licence between Tesla and Avanci covering the Avanci 5G Pool (including the Challenged Patents).”
“No Suit in the said Court shall be open to Objection on the Ground that a merely declaratory Decree or Order is sought thereby, and it shall be lawful for the Court to make binding Declarations of Right without granting consequential Relief.”
“No action or proceeding shall be open to objection on the ground that a merely declaratory judgment or order is sought thereby, and the Court may make binding declarations of right whether any consequential relief is or could be claimed or not.”
“Subject to the provisions of this Act, there shall be exercisable by the High Court— (a) all such jurisdiction (whether civil or criminal) as is conferred on it by this or any other Act; and (b) all such other jurisdiction (whether civil or criminal) as was exercisable by it immediately before the commencement of this Act (including jurisdiction conferred on a judge of the High Court by any statutory provision).”
“The court may make binding declarations whether or not any other remedy is claimed.”
“Lord Wilberforce and Lord Denning M.R. differed in the circumstances of [Camilla Cotton Oil Co. v. Granadex S.A. [1975] 1 Lloyd’s Rep. 470; [1976] 2 Lloyd’s Rep. 10] as to whether the declaration would serve a useful purpose. However, if it would, that it would then be appropriate to grant a declaration was agreed. The approach is pragmatic. It is not a matter of jurisdiction. It is a matter of discretion. The deployment of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose. However, where a negative declaration would help to ensure that the aims of justice are achieved the courts should not be reluctant to grant such declarations. They can and do assist in achieving justice. … So in my judgment the development of the use of declaratory relief in relation to commercial disputes should not be constrained by artificial limits wrongly related to jurisdiction. It should instead be kept within proper bounds by the exercise of the court’s discretion.”
“… so far as the CPR are concerned, the power to make declarations appears to be unfettered. As between the parties in the section [sic], it seems to me that the court can grant a declaration as to their rights, or as to the existence of facts, or as to a principle of law, where those rights, facts, or principles have been established to the court’s satisfaction. The court should not, however, grant any declarations merely because the rights, facts or principles have been established and one party asks for a declaration. The court has to consider whether, in all the circumstances, it is appropriate to make such an order.”
“It seems to me that, when considering whether to grant a declaration or not, the court should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration.”
“… A line of authority running from Guaranty … v. Hannay … through Messier-Dowty … v. Sabena …, culminating in … Financial Services Authority v. Rourke …, establishes three relevant principles: i) The correct approach to the question of whether to grant negative declarations [i]s one of discretion rather than jurisdiction. ii) The use of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose, but where such a declaration would help ensure that the aims of justice were achieved, the court should not be reluctant to grant a negative declaration. iii) Before a court can properly make a negative declaration, the underlying issue must be sufficiently clearly defined to render it properly justiciable.”
“ … we do not consider that there is any issue of principle which prevents the granting of Arrow declarations in appropriate cases. … Whether such a declaration is justified depends on whether a sufficient case can be made for the exercise of the court’s discretion in accordance with established principles.”
“(1) The power of the court to grant declaratory relief is discretionary. (2) There must, in general, be a real and present dispute between the parties before the court as to the existence or extent of a legal right between them. However, the claimant does not need to have a present cause of action against the defendant. (3) Each party must, in general, be affected by the court's determination of the issues concerning the legal right in question. (4) The fact that the claimant is not a party to the relevant contract in respect of which a declaration is sought is not fatal to an application for a declaration, provided that it is directly affected by the issue …. (5) The court will be prepared to give declaratory relief in respect of a ‘friendly action’ or where there is an ‘academic question’ if all parties so wish, even on ‘private law’ issues. This may particularly be so if it is a ‘test case’, or it may affect a significant number of other cases, and it is in the public interest to decide the issue concerned. (6) However, the court must be satisfied that all sides of the argument will be fully and properly put. It must therefore ensure that all those affected are either before it or will have their arguments put before the court. (7) In all cases, assuming that the other tests are satisfied, the court must ask: is this the most effective way of resolving the issues raised? In answering that question it must consider the other options of resolving this issue.”
“ … the discretion to grant a declaration now covers a wide range of cases. The authorities show how it may be granted in private law proceedings about the disputed construction of a document affecting the claimant, even though the claimant was not a party to it.”
“In my view the authorities show that the jurisprudence has now developed to the point at which it is recognised that the court may in an appropriate case grant declaratory relief even though the rights or obligations which are the subject of the declaration are not vested in either party to the proceedings. … I can see no reason in principle why the nature of the underlying obligation should be critical, although there may well be other reasons why in the particular case a declaration should not be granted. The most important consideration is likely to be whether the parties have a legitimate interest in obtaining the relief sought, whether to grant relief by way of declaration would serve any practical purpose and whether to do so would prejudice the interests of parties who are not before the court.”
“34. … Notable by its absence is a claim by Vestel that it has a legally enforceable right to a FRAND licence. When the claim began Vestel claimed such a legally enforceable right, on the basis that for either respondent to refuse to offer a licence on FRAND terms was a tort actionable by Vestel, ie an abuse of dominant position. That claim has been dropped and no attempt is made in the consequential amendments to introduce a new claim to a right to a FRAND licence. … The argument based on the inherent jurisdiction [to grant a declaration] is not founded on a claim to a legal right to a FRAND licence. … 52. Counsel for Vestel also referred in a general way to the ITU rules which require Philips to undertake to offer FRAND licences on SEPs declared to the standard. However no case that there is any such right enforceable by Vestel is pleaded in the particulars of claim …. The omission from either the terms of the declaration or the particulars of claim is not an accident of drafting. Perhaps it was thought there would be jurisdictional difficulties if such a case was advanced but we do not know and it is not fruitful to speculate.”
“The sole claim is for declaration or declarations of what the FRAND terms would be for a licence under the UK SEPs which are in the HEVC Advance pool. That claim can be brought under the court’s inherent jurisdiction because it would serve a useful purpose (Rolls-Royce … v Unite …). It serves a useful purpose because it establishes the licence which Vestel would need to avoid infringing those patents in the UK by carrying out its activity here, such as selling standard-compliant televisions. The subject matter of the claim is UK property—ie the UK patents. That is because it is a claim about what terms are available for a licence in respect of that property. Therefore the subject matter of the claim relates wholly or principally to property within the jurisdiction and so the case falls within gateway 11. The fact that the licences of the UK patents which would be FRAND would also license patents from other countries, cannot alter the fact that what Vestel is entitled to and is seeking is a licence under the UK patents.”
“77. In Pfizer … the point was specifically made … that the authorities were all concerned with the existence or scope of legal rights, public or private. Then … the point was made that the fact that a case is concerned with the existence or scope of a legal right is not the same thing as saying that the issue in dispute has to be an issue of law (and some examples were given). The legal right also may be one which might come into existence in future. Therefore Pfizer, which is the high point of Vestel’s argument on this topic, is not an example of the court holding that the declaratory jurisdiction can be engaged on the sole basis that it would serve a useful purpose and in the absence of any putative legal claim at all or any legal standard against which to judge the matter. 78. The need of a legal standard against which to judge the claimed declarations is important. … the Supreme Court’s judgment in Unwired Planet shows why that is so. There is no such thing as a free standing FRAND claim. Although Vestel refers to the ITU rules it does not contend in these proceedings that they have legal force. 79. It is hard to know how to decide whether the declarations sought, untethered to any legal standard, actually could serve a useful purpose but that is not the basis on which I reject this part of the claim. I will take it that there is some arguable useful purpose. Even if that is so, the attempt to invoke the court’s declaratory jurisdiction has no reasonable prospect of success because it is not based on the existence or non-existence of a legal right.”
“The claim would be a free standing FRAND claim, as in Vestel. If Tesla were right about its claim against Avanci, the claim against Access Advance would have been permitted to proceed in Vestel, on the basis that Philips and the other patentees in its pool had given FRAND undertakings to ITU.”
“83. The first aspect is whether there is a legal right in issue that justifies the claim for declaratory relief, to which the obvious answer is: yes, so far as IDH is concerned. Even though Tesla does not seek specifically to enforce IDH’s contractual obligation in French law, the ETSI undertaking is the legal standard by which Tesla’s claim about the terms of a FRAND licence is to be measured. … 84. It cannot be said in this case, as was said in Vestel, that the declarations are being sought devoid of any appropriate standard against which to measure the claim, or that the licence claim is free standing. As explained in Vestel, it is not necessary for there to be a separate cause of action to justify the proceedings for declaratory relief, just a legal right by which the claim can be judged.”
“[T]he courts have always recognised that persons interested are or may be indirectly prejudiced by a declaration made by the court in their absence, and that, except in very special circumstances, all persons interested should be made parties, whether by representation orders or otherwise, before a declaration by its terms affecting their rights is made.”
“70. Although the point was not taken before us, I would interpret the reference to a ‘claim’ in gateway 11 … as a reference to a legal claim. In other words it refers to a claim concerning a legal right of some kind and in some way. It may be a claim for which the only remedy sought is declaratory e.g. so as to vindicate a claim to possess some property right. That remedy may be framed in a positive way but could also be a negative declaration such as to the absence of a legal right or non-liability in some way. However there must be a legal claim of some kind. 71. I am prepared to accept that if Vestel did claim to have a legally enforceable right against a patentee or a licensing agent of a patentee, whereby Vestel were entitled to be offered a FRAND licence under the UK SEPs in the HEVC Advance pool, then the subject matter of that particular claim would be the UK SEPs. The question that claim would be concerned with is the licence terms which are available to license those UK rights. The fact that the only licence of the UK patents which is FRAND would also involve licensing foreign patents does not alter the subject matter of the claim. The fact that UK patents in the FRAND licence were only 5% or less of the patents licensed by it would make no difference. I would hold that such a claim was one which related wholly or principally to property within the jurisdiction and therefore fell within gateway 11. ...”
“… as it was not based on a legal claim against it that relates to UK property. It is a claim that relates to its alleged duties as agent of the Patentees.”
“97. After hearing extensive expert evidence, the judge found that the Chinese courts do not, at present, have jurisdiction to determine the terms of a global FRAND licence, at least in the absence of agreement by all parties that they should do so. Even in the event of such an agreement, he described the prospect that the Chinese courts would embark on the exercise as no more than speculative. Notwithstanding the admission of fresh evidence on this issue, the Court of Appeal reached the same conclusion. …. 98. We therefore agree with the judge that the forum conveniens challenge falls at this first hurdle, notwithstanding the fresh evidence introduced in the Court of Appeal. …”
“Based on the international treaties that the United States has joined and ratified as the ‘supreme law of the land’, a district court's exercise of supplemental jurisdiction could undermine the obligations of the United States under such treaties, which therefore constitute an exceptional circumstance to decline jurisdiction under §1367(c)(4). Accordingly, we must scrutinize such an exercise with caution. … … comity and the principle of avoiding unreasonable interference with the authority of other sovereigns dictate in this case that the district court decline the exercise supplemental jurisdiction under §1367(c). … The district court did not articulate any such judicial economy analysis [sc. that consolidated multinational patent adjudication would be more efficient], and accordingly, this absence of analysis supports our finding that the district court abused its discretion in this case. … Similarly, factors of convenience may provide additional reasons to decline exercising supplemental jurisdiction in this case. Again, the district court did not articulate any such analysis, further supporting our finding that it abused its discretion. … Lastly, the act of state doctrine may make the exercise of supplemental jurisdiction over foreign patent infringement claims fundamentally unfair … assuming arguendo that the act of state doctrine applies, the doctrine would prevent our courts from inquiring into the validity of a foreign patent grant …. In summary, several reasons in this case would compel the district court to decline supplemental jurisdiction under §1367(c): limitations imposed by treaties that are the ‘supreme law of the land’ and considerations of comity, judicial economy, convenience, and fairness. The district court undertook none of this analysis. Accordingly, we hold that the district court abused its discretion in exercising supplemental jurisdiction.”
“I understand that Tesla argues in the English proceedings that the appropriate licence for the UK patents would be a global SEP portfolio licence. Just as it is unlikely that a US court would adjudicate the validity of a non-US patent …, it is also unlikely that any US court would adjudicate a FRAND rate for UK patents.”
“If the motion did not involve a declaratory judgment claim, and instead was whether supplemental jurisdiction could be exercised to resolve a claim by Huawei that [Optis] breached its FRAND obligations (a breach of contract claim, in other words), then the foreign part of Huawei’s claim would be dismissed under §1367. Huawei’s claim would require the court to decide whether [Optis] breached a foreign FRAND obligation with respect to a foreign patent. It would be similar to a foreign infringement claim in that a United States court would have to apply foreign law. Courts in other countries apply their own law governing FRAND compliance and royalty rate determinations, and this law, like foreign infringement law, can be very different from United States law. …. Federal Circuit precedent led another court to say that ‘it is almost always an abuse of discretion’ to assume supplemental jurisdiction over a foreign patent infringement claim. Fairchild Semiconductor Corp. v. Third Dimension (3D) Semiconductor, Inc., 589 F. Supp. 2d 84, 91 (D. Me. 2008). The Court of Appeals explained why in Voda v. Cordis Corporation .... It is hard to see how the reasoning in Voda would not apply to a hypothetical breach of contract claim. … The question raised by Huawei’s motion is easier because it deals with declaratory relief. … There is no need to decide whether supplemental jurisdiction under §1367 exists. At least under the Declaratory Judgment Act, the foreign part of [Optis]’ claim should be dismissed for the reasons explained in Voda, even if jurisdiction could be exercised. … [Optis]’ arguments are less about what the law is and more about fairness. One argument is that foreign courts are increasingly making global FRAND determinations and it would be unfair if United States courts did not follow that trend. Or, it would be unfair to [Optis] to litigate their FRAND disputes all over the world. But at least some of the foreign courts [Optis] calls attention to are not courts of limited jurisdiction like this one is. ….”
“First, Apple argues that this Court does not have, or in the alternative should decline, subject matter jurisdiction over any portion of Count VIII that relate to Plaintiffs’ FRAND obligations with respect to foreign patents. … Apple relies largely on the Federal Circuit’s decision in Voda v. Cordis Corp. ... as well as this Court’s prior decision in Optis … v. Huawei …. This Court’s decision in Huawei analyzed circumstances nearly identical to the posture of this case. … Relying on this Court’s reasoned opinion in Huawei, the Court likewise declines to exercise subject matter jurisdiction over any portion of Count VIII that relates to Plaintiffs’ FRAND obligations regarding foreign patents.”
“As the Court noted in Huawei, ‘It is hard to see how the reasoning in Voda would not apply to a hypothetical breach of contract claim’, such as a FRAND claim. … Like claims for foreign patent infringement, claims asking the Court to pass upon foreign obligations under foreign laws related to foreign patents are best left to the courts of those foreign countries. … Accordingly, any portion of Count VIII that seeks a declaration that Plaintiffs have complied with their obligations under foreign laws or as they relate to foreign patents, or that Apple may not raise a FRAND defense in a foreign jurisdiction, are dismissed—because the Court elects not to exercise its jurisdiction under these facts.”
“The key factor in the assessment will be the value of a global licence of [the owner’s] SEP portfolio … which will depend on (i) the strength (in terms of validity and essentiality) of that portfolio and (ii) the contribution of that portfolio to the standards in question. As such, the determination of the dispute will depend very largely upon expert technical and valuation evidence taking into account any comparable licences. Thus the dispute over the terms of the licence could be determined by any competent national court or by a supranational arbitral tribunal. It has no real connection with any territory.”
“In my judgment, the claim clearly has a closer connection with the US than with England and Wales. The principal parties are all Delaware companies, their business centres are in Texas, the majority of the SEPs are US patents, the Avanci Licence is administered and regulated in the US, and the proper law of the MLMA is New York law. There is also a regulatory connection between the Avanci platform and the US Federal anti-trust authorities. Only 7% of the 5G SEPs are UK designations or UK patents. … Despite the link to the UK provided by the patent claim, the fundamental focus of the litigation is not this country.”
“98. Whether it is fair and just to grant the declarations as sought in the absence of the owners of the 5G SEPs and Avanci is quite another matter, however. The other Patentees will not have had the opportunity to put their cases on whether a FRAND licence of the patents in suit, or of InterDigital’s UK SEPs, would include a worldwide licence of all their 5G SEPs, or what rate is FRAND. It is not easy to see how InterDigital could properly advance those cases, and it is unlikely that the Court will make declarations of right capable of affecting adversely numerous parties who are not before the Court. 99. Another weighty objection raised by InterDigital concerns how it alone could properly defend the claim. The Court will not realistically be able to determine whether$32 is a FRAND rate, and if not what rate is FRAND, without access to licence agreements made by the Patentees and information about value of their portfolios and revenue streams, which only the Patentees and Avanci have. As InterDigital submitted … it is in no position to assess the value of other Patentees’ portfolios, or provide the relevant comparable licences (or even the Avanci Licences that have been granted to licensees), and confidentiality and anti-trust issues in the US might well prevent it from obtaining the necessary documents. 100. FRAND licensing claims are heavy, complex cases, in which the court values licences of (often) a large number of SEPs, either on the basis of market evidence of comparable licences or on a ‘top down’ basis, starting with an assessment of the value of the portfolio. The Court and any expert valuers would need access to relevant licences granted by all Patentees and documents relating to their portfolios in order to perform the valuation exercise. It would also need evidence relating to market practice in order to determine the proper extent of a FRAND licence. IDH alone could not supply this information. 101. The exercise might be possible if Avanci were also a defendant, as it acts as the agent of the Patentees in connection with the licensing of the 5G SEPs and will have many of the relevant documents; but Tesla has no claim of right against Avanci.”
“Tesla has, as pleaded in Section D(ii) above, relied upon and invoked InterDigital’s and Avanci’s obligation to grant a licencecovering the Avanci 5G Pool (and/or the Challenged Patents), and has given an unconditional undertaking to take a licence covering the Avanci 5G Pool on such terms as are determined by this Court … ”
“(i) The phrase ‘the same interest’ inCPR r 19.6 needs to be interpreted purposively in light of the overriding objective and the rationale for the representative procedure. The purpose of requiring a representative claimant to have the same interest in the claim as the persons represented is to ensure that the representative can be relied on to conduct the litigation in a way which will effectively promote and protect the interests of all the members of the represented class. That plainly is not possible where there is a conflict of interest between class members (in that an argument which would advance the cause of some would prejudice the position of others) but is possible where there is a divergence of interests (in that an issue arises, or may well arise, in relation to the claims of, or against, some class members but not others) (post, paras 71–74). (ii) The ability to act as a representative underCPR r 19.6 does not depend on the consent of the persons represented in the claim. It is, however, always open to the judge managing the case to impose a requirement to notify represented persons and establish a simple procedure for opting out of representation. Equally, if there are circumstances which make it appropriate to limit the represented class to persons who have positively opted into the litigation, it is open to the judge to make this a condition of representation (post, para 77). (iii) While it is plainly desirable that the class of persons represented should be clearly defined, the adequacy of the definition is a matter which goes to the court's discretion in deciding whether it is just and convenient to allow the claim to be continued on a representative basis rather than being a precondition for the application ofCPR r19.6 (post, para 78). (iv) If it is in the interests of justice to do so, the court may make an order requiring a represented person to pay or contribute to the costs incurred by the representative and giving permission for the order to be enforced against the represented person pursuant toCPR r 19.6 (4)(b) . It is difficult, however, to envisage circumstances in which it could be just to order a represented person to contribute to costs incurred by a claimant in bringing a representative claim which the represented person did not authorise (post, para 79).”
“(1) Subject to paragraph (2), Part 6 applies to service of a claim form and any document in any proceedings under this Part.
“(1) This Part applies to all intellectual property claims including – (a) registered intellectual property rights such as – (i) patents; … (2) In this Part – (a) ‘the 1977 Act’ means thePatents Act 1977 ; … (e) ‘patent’ means a patent under the 1977 Act …” (a) registered intellectual property rights such as – (i) patents; … (a) ‘the 1977 Act’ means thePatents Act 1977 ; … (e) ‘patent’ means a patent under the 1977 Act …”
“… As there is no time limit for Tesla’s claim, if service out were otherwise justified, Tesla would simply have re-applied for permission to serve out, which could not then have been refused if correctly applied for. I would instead have imposed a costs sanction against Tesla. …”
“…in the absence of the IPR Policy an English court could not determine a FRAND licence of a portfolio of patents which included foreign patents. It is the contractual arrangements which ETSI has created in its IPR policy which gives the court jurisdiction to determine a FRAND licence…”
“An undertaking pursuant to Clause 6.1 with regard to a specified member of a PATENT FAMILY shall apply to all existing and future ESSENTIAL IPRs of that PATENT FAMILY unless there is an explicit written exclusion of specified IPRs at the time the undertaking is made….”
“A “patent family” is defined as “all documents having at least one priority in common, including the priority document(s) themselves” and “documents” in this context means “patents, utility models, and applications therefor” (clause 15(13)). The patent family thus extends to patents relating to the same invention applied for and obtained in several jurisdictions. It shows an intention for the arrangement to apply internationally. This is important because the undertaking to grant a licence under clause 6…extends to all present and future Essential IPRs in that patent family.”
“the IPR Policy envisages that the SEP owner and the implementer will negotiate a licence on FRAND terms. It gives those parties the responsibility to resolve any disputes as to the validity of particular patents by agreement or by recourse to national courts for determination.”
“There is, for example, no contention, pleaded or unpleaded, that as a matter of French law the correct interpretation of the ETSI undertaking is so as to entitle Tesla to compel InterDigital to form some collective with all the other SEP holders and grant a collective FRAND licence to Tesla. Still less is there any allegation that French law requires InterDigital and the other SEP holders for the time being who have placed their patent on the platform to only offer a collective licence under that platform, nor to only do so on FRAND terms.”
“Accordingly, Tesla is entitled to enforce the FRAND Commitment of each Avanci 5G Pool member, including InterDigital, by seeking a licence from and/or through Avanci covering the entirety of the Avanci Pool.” ii) At paragraph 59 of the Particulars of Claim Tesla summarised its claim and the corresponding undertaking it offered to the court at paragraph 44, in the following terms: “Tesla has…relied upon and invoked InterDigital’s and Avanci’s obligation to grant a licence covering the Avanci 5G pool (and/or the Challenged Patents) on FRAND terms, and has given an unconditional undertaking to take a licence covering the Avanci 5G Pool on such terms as are determined by this Court..” iii) In paragraph (5) of the prayer for relief in the Particulars of Claim, Tesla seeks declarations that the terms offered for a licence of the Avanci 5G Platform are not FRAND, alternatively as to the terms which are FRAND for those patents. That prayer then adds “(alternatively, such patents within the pool as are owned by InterDigital)”. iv) It might seem that the words in parenthesis indicate that Tesla is seeking, in the alternative, a bilateral licence from InterDigital of its portfolio of SEPs, despite not being foreshadowed in the body of the pleading or supported by its undertaking. However, paragraph (6) of the prayer for relief reveals that Tesla is not in fact seeking such a straightforward bilateral licence, even in the alternative, claiming a declaration that: “…a FRAND licence covering the Challenged patents, the InterDigital UK SEP Portfolio, the InterDigital International Portfolio or the portfolio(s) of any and each other Avanci 5G Pool Member… is a licence (i) between Tesla and Avanci, (ii) that is worldwide in scope and (iii) covers the entirety of the Avanci 5G pool.” v) In the course of argument before the Judge, Tesla stated that it would dispute that the only FRAND licence for InterDigital’s SEPs is a bilateral licence, but added that Tesla’s case is that such a FRAND licence is a pool licence. vi) The Judge recorded at [9] of his judgment, correctly in my view, that Tesla “has made no claim to a bilateral licence from InterDigital”. vii) In its Skeleton Argument for this appeal, Tesla stated at [24] that: “Declarations (5), (6), (9) and (10), as to the terms of the FRAND licence to which Tesla is entitled. Tesla maintains that this is a worldwide licence from Avanci to the entirety of the Avanci 5G Pool” viii) It is thus entirely clear that, even on this appeal as formulated and presented in writing, Tesla was not seeking a bilateral licence against InterDigital in relation to its portfolio of SEPs. There is no appeal from the Judge’s statement in [9], and no reference to a bilateral licence anywhere in the Grounds of Appeal or supporting skeleton. Tesla’s sole claim remains for a licence from Avanci of the Avanci 5G Platform. ix) Arnold LJ records at [172] that, during the course of oral argument, Tesla stated that its undertaking to take a licence on terms determined to be FRAND by the Patents Court “embraces a bilateral licence to InterDigital’s SEPs”
“…the IPR Policy envisages that the SEP owner and the implementer will negotiate a licence on FRAND terms. It gives those parties the responsibility to resolve any disputes as to the validity of particular patents by agreement or by recourse to national courts for determination.”