“(2). Save insofar as the Defendants and each of them are entitled to and take a licence to the Patents on FRAND terms (in accordance with the Claimant's undertakings and the ETSI IPR Policy) and insofar as the Claimant is and remains required to grant such a licence: a. an injunction to restrain the Defendants and each of them (whether acting by their directors, officers, servants, agents or any of them otherwise howsoever) from infringing the Patents; b. an order that the Defendants take all steps as are in their power to retrieve from the channels of distribution all products the sale, disposal or keeping of which would infringe the Patents or any of them; and c. an order for delivery up or destruction upon oath of all articles and materials in the possession, custody or control of the Defendants (or each of them) which infringe the Patents or any of them.”
“The terms "fair, reasonable and non-discriminatory” fall properly within the province of judicial interpretation. They will form the subject of a FRAND Statement of Case in due course.”
“ 33. The Claimant has pursued negotiations with TCL CTH and TCL Corp seeking to license the Patents on FRAND terms but has thus far been unsuccessful… In summary Philips first notified TCL CTH and TCL Corp that Philips was aware of the TCL Defendants' infringing acts in [various particularised correspondence]. Philips received no response to these letters and is, accordingly, under the impression that the TCL Defendants are not presently willing to take a licence on FRAND terms.”
“13. …Although the Claimant has not yet produced a Statement of Case on FRAND, the Claimant pleads that its “standard terms and conditions…are FRAND”. 15. Philips’ case in these proceedings appears to be that if infringement of the two UK patents in suit is shown the TCL Defendants should enter into this Draft Agreement and thereby licence some 1,253 patents, at royalty rates settled by the English court, in order to avoid an English injunction. 16. The TCL Defendants would have no commercial or jurisdictional objection to Philips’ choice of this English forum if the reach of the patent licence required to avoid an English injunction if UK patent infringement is shown is limited to European patents within the same patent families as the UK patents in suit, or indeed simply excludes US and Chinese patents and is limited to “rest of world” patents within the same patent families as the UK patents in suit. 17. Provided that Philips accepts and agrees not to argue in these English proceedings that the required FRAND licence includes US and Chinese patents or reaches US sales or sales in China or countries where Philips has no patents, the TCL Defendants are willing (and hereby offer) to enter into a global patent licence in respect of patents in the same families as the UK patents in suit, excluding the US and China (and US and Chinese patents) on terms determined by the English court in the event that the UK patents in suit are found to be infringed. If this offer is accepted, the Jurisdictional Challenge now made will no longer be required and the case will be able to progress on the merits.”
“1. The Court has jurisdiction to try the claim.”
“63. In the premises, Philips requests that the Court: a) declare that the terms on which Philips is willing to license the Philips Portfolio as set out at paragraph 17 above are in the FRAND range; in the alternative, b) determine the adjustments required to the terms set out in paragraph 17 above that are required for those terms to fall within the FRAND range for a licence to the Philips Portfolio; and c) once the Court has found that TCL has infringed EP'511 or EP'525, in the event that TCL declines or refuses to enter into a licence on the terms set out at paragraph 17 above, or in the alternative, to undertake to enter into a licence on terms within the FRAND range as adjusted by this Court and offered to it by Philips: i. grant injunctive relief prohibiting in the United Kingdom TCL, (whether acting by its respective directors, officers, servants, agents and third parties with whom it is jointly liable or any of them or otherwise howsoever), from (i) manufacturing, disposing of, offering to dispose of, using, importing or keeping mobile devices that are held out as implementing HSPA functionality, or (ii) otherwise infringing EP'511 and/or EP'525; and ii.award damages, alternatively an account of profits, in respect of the past acts of infringement of EP'511 and/or EP'525 by TCL (whether committed by its directors, officers, servants, agents, third parties with whom it is jointly liable or any of them or otherwise howsoever) in relation to devices that have been held out as implementing HSPA functionality.” a) declare that the terms on which Philips is willing to license the Philips Portfolio as set out at paragraph 17 above are in the FRAND range; in the alternative, b) determine the adjustments required to the terms set out in paragraph 17 above that are required for those terms to fall within the FRAND range for a licence to the Philips Portfolio; and c) once the Court has found that TCL has infringed EP'511 or EP'525, in the event that TCL declines or refuses to enter into a licence on the terms set out at paragraph 17 above, or in the alternative, to undertake to enter into a licence on terms within the FRAND range as adjusted by this Court and offered to it by Philips: i. grant injunctive relief prohibiting in the United Kingdom TCL, (whether acting by its respective directors, officers, servants, agents and third parties with whom it is jointly liable or any of them or otherwise howsoever), from (i) manufacturing, disposing of, offering to dispose of, using, importing or keeping mobile devices that are held out as implementing HSPA functionality, or (ii) otherwise infringing EP'511 and/or EP'525; and ii.award damages, alternatively an account of profits, in respect of the past acts of infringement of EP'511 and/or EP'525 by TCL (whether committed by its directors, officers, servants, agents, third parties with whom it is jointly liable or any of them or otherwise howsoever) in relation to devices that have been held out as implementing HSPA functionality.”
“MR. JUSTICE NUGEE: I do not I think either side is asking me to resolve that question. MR. PICKFORD: No. MR. JUSTICE NUGEE: Because that question will have to be resolved at some stage, and it may be something resolved in Paris for all I know. You are not asking me today to decide this question of whether you had put in issue the FRAND terms originally? MR. PICKFORD: No, I do not. … MR. JUSTICE NUGEE: As I understand the defendant's position, it is that this claim did not initially raise the question of whether -- did not seek a declaration that your worldwide terms were FRAND. So, they managed to get in first, in Paris, by raising that issue that the two are not the same issue and therefore the French court is the first court seized. That is their position. MR. PICKFORD: That is what they say. … MR PICKFORD: … I need to come on to make some short submissions about the underlying premise for the alternative which is advanced by TCL. Their whole case effectively depends on saying, "Do not worry about this here. We are going to sort it out in France". MR. JUSTICE NUGEE: It is all going to be sorted out in Paris, and we should not really be doing it at all. MR. PICKFORD: Yes, indeed. There are two immediate points that can be made in response to that without actually having to determine the Brussels regulation issues today. As I said to your Lordship at the beginning, we are not asking you to. MR. JUSTICE NUGEE: I do not think anybody is asking me to. MR. PICKFORD: No. … MR TAPPIN: … We say our position is entirely consistent in France and here. My learned friend does not invite my Lord to decide any of this today, and rightly so. That is a matter which is being heard by the French Court next week, I think. It is the 2nd or 3rd December. My Lord, just to put the record straight, we do not accept an inconsistency between the way we put matters here and the way we put matters in France. My Lord, no one is asking you to second-guess what the French Court will do.”
“581. It is clear…that there is no identification of the parties. … 584. To justify the alleged identity of the parties, PHILIPS indicates in its pleadings that the identity of the parties can only be partial, basing this on community case-law. 585. However, if in some cases, they can only be partially identified, it is only on the assumption that there is also an identity of object and cause. 586. This is not the case here: it has been shown that neither the identity of the object nor the identity of the cause can be reported, as has been demonstrated above.”
“The PHILIPS companies maintain in this regard that the condition of triple identity of the parties, cause, and subject matter is fulfilled. They state that the parties are the same, and that the cause is the same, the claims, both in France and in Great Britain, having the same basis, namely the commitment entered into with ETSI in application of Article 6.1 of the intellectual property policy. They point out that, on the basis of this text, they require the UK jurisdiction to determine the terms of a FRAND licence and to set a timeframe for TCL companies to subscribe to such a licence and in the absence thereof, to impose prohibition measures. The PHILIPS companies also maintain that the applications before the English and French courts have the same purpose of determining the terms of a FRAND licence. The TCL companies conclude that this objection should be rejected. They claim that the suit lodged in Great Britain is an action of tort law in relation to patent infringement, while the suit lodged in France is not an action in declaration of non-infringement, but an action of a contractual nature with the intention of the PHILIPS companies performing their obligation. They point out that the decision rendered in the Zyxell case by the English court shows that the TCL companies can give up their right to a FRAND licence for the British territory and even their right to have the terms of such a licence determined, so that, according to the defence of the TCL companies, the claim of the PHILIPS companies only seeks to obtain a prohibition measure in Great Britain. They add that the English courts could stay proceedings pending the future decision on the merits of this court. With regard to the identity of the cause, the TCL companies point out that their claim concerns the patent portfolio and the English proceedings, only two patents, and that the territory concerned by the two proceedings is not the same. They conclude on this point (lack of identity of cause and subject matter) by indicating that the other English decision cited by the PHILIPS companies (Unwired planet versus Huawei) is the subject of an appeal before the Supreme Court. The TCL companies finally indicate that the parties are not the same, ETSI not being a party to the English dispute. ETSI contends that the objection of lis pendens should be rejected. … In the present case, the claim before the High Court of Justice of England and Wales is based on the infringement of the English part of the European patents EP 1 440 525 B1 and EP 1 623 511 B1 and the claim of the PHILIPS companies aims to obtain an injunction and compensation for the damage suffered after expert assessment. It only concerns the PHILIPS and TCL companies. This dispute concerns the PHILIPS and TCL companies, as well as ETSI. It consists in determining whether, in application of the procedural rules relating to intellectual property rights drawn up by ETSI, the PHILIPS companies have offered a worldwide licence relating to a portfolio containing, among others, European patents EP 1 440 525 B1 and EP 1 623 511 B1 on “fair, reasonable and non-discriminatory” terms. It follows that, since the condition of triple identity of cause, subject matter and parties is not fulfilled, there is no reason to relinquish jurisdiction in favour of the English Court.”
“In the further alternative, the PHILIPS companies maintain that the disputes submitted to the English and French courts can only lead these two courts to examine the same questions of fact and of law likely to lead to irreconcilable solutions, contrary to the objectives of the Brussels I bis Regulation. The TCL companies claim that the objection based on related actions should be dismissed and claim that, in light of the development of the claims submitted to it, the English court should stay the proceedings pending the decision of the Paris Court. ETSI similarly concludes that the objection based on related actions should be rejected. … As noted by the TCL companies, the proceedings on the question of the FRAND licence will only be held in Great Britain if the TCL companies do not waive seeking such a licence (Court of Appeal,18 July 2019 , TQ Delta LLC v. ZyXEL Communications UK Limited and ZyXEL Communications: “I can see no basis whatsoever for saying that such a waiver should be treated as ineffective or invalid. To say that the waiver is ineffective is equivalent to saying that the proceedings must go on as if ZyXEL were still relying on the RAND undertaking to resist the grant of the injunction in the UK, when ZyXEL are prepared to give an irrevocable undertaking not to do so.”
“1. Without prejudice to Article 31(2), where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established. 2. In cases referred to in paragraph 1, upon request by a court seised of the dispute, any other court seised shall without delay inform the former court of the date when it was seised in accordance with Article 32. 3. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.”
“40. Moreover, the concept of res judicata under European Union law does not attach only to the operative part of the judgment in question, but also attaches to the ratio decidendi of that judgment, which provides the necessary underpinning for the operative part and is inseparable from it …. As observed in para 35 above, given that the common rules of jurisdiction applied by the courts of the member states have their source in European Union law, more specifically in Regulation No 44/2001, and given the requirement of uniform application referred to in para 39 above, the concept of res judicata under European Union law is relevant for determining the effects produced by a judgment by which a court of a member state has declined jurisdiction on the basis of a jurisdiction clause. 41. Thus, a judgment by which a court of a member state has declined jurisdiction on the basis of a jurisdiction clause, on the ground that that clause is valid, binds the courts of the other member states both as regards that court’s decision to decline jurisdiction, contained in the operative part of the judgment, and as regards the finding on the validity of that clause, contained in the ratio decidendi which provides the necessary underpinning for that operative part.”
“41. The “objet of the action” for the purposes of Article 21 means the end the action has in view …”
“The PHILIPS companies maintain in this regard that the condition of triple identity of the parties, cause, and subject matter is fulfilled. They state that the parties are the same, and that the cause is the same, the claims, both in France and in Great Britain, having the same basis, namely the commitment entered into with ETSI in application of Article 6.1 of the intellectual property policy. They point out that, on the basis of this text, they require the UK jurisdiction to determine the terms of a FRAND licence and to set a timeframe for TCL companies to subscribe to such a licence and in the absence thereof, to impose prohibition measures. The PHILIPS companies also maintain that the applications before the English and French courts have the same purpose of determining the terms of a FRAND licence.”
“95. The question how the dispute should be defined has been the main bone of contention between the parties, both in this court and in the courts below. Is it, as the appellants say, in substance a dispute about the terms of a global FRAND licence, or is it, as the respondent maintains, both in form and in substance about the vindication of the rights inherent in English patents, and therefore about their validity and infringement, with FRAND issues arising only as an aspect of an alleged contractual defence? Thus far the respondent has had the better of that argument, both before the judge and the Court of Appeal. At the heart of the analysis which has thus far prevailed is the recognition that the owner of a portfolio of patents granted by different countries is in principle entitled to decide which patents (and therefore in which country or countries) to seek to enforce, and cannot be compelled to enforce patents in the portfolio granted by other countries merely because a common FRAND defence to the enforcement of any of them raises issues which might more conveniently be determined in another jurisdiction than that which exclusively regulated the enforcement of the chosen patents. 96. Were it necessary to choose between the rival characterisations of the substance of the dispute, we would have agreed with the choice made by the courts below.”
“1. This is Philips’ FRAND Statement of Case with respect to the Third to Seventh Defendants (“TCL”). Philips addresses the following issues in this FRAND Statement of Case: a) Without prejudice to any fuller statement of case on French Law, should it be required, the essential propositions of French Law which govern the European Telecommunications Standards Institute (“ETSI”) IPR Policy and the Philips Licensing Declaration; b) An overview of Philips’ portfolio of patents that have been declared essential … (“SEPS”) to the 3G/UMTS and 4G/LTE telecommunications standrds … c) The key fair, reasonable and non-discriminatory (“FRAND”) terms on which Philips is willing to licence the Philips Portfolio to TCL; d) The principles and approach to be applied in determining whether the terms for a licence to the Philips Portfolio are FRAND; e) The principles to be applied in determining whether the approach of Philips and TCL to negotiations has been FRAND; f) The conduct of Philips and TCL in advance of this litigation, and whether that conduct was FRAND; and g) The relief sought by Philips at the FRAND trial in these proceedings.”
“18. For the reasons set out in this Statement of Case, Philips' licence offer satisfies all the necessary requirements of FRAND. In the alternative, if the Court determines that adjustments are required for the Philips' licence offer to fall within the FRAND range, Philips is willing to grant a licence on those terms, as adjusted.”
“61. In the premises, once the Court has found that TCL has infringed EP(UK) 1 623 511 (EP'511) or EP (UK) 1 440 525 (EP'525), Philips is entitled to injunctive relief as described in paragraph 63 below in the event that TCL declines or refuses to enter into a licence on the terms set out at paragraph 17 above, or in the alternative, to undertake to enter into a licence on terms within the FRAND range as adjusted by the Court and offered to TCL by Philips. 62. Further, in the event that TCL declines to take or undertake to take a FRAND licence on the terms set out at paragraph 17 above or as adjusted by this Court and offered to TCL by Philips, the FRAND Commitment is not applicable and Philips is entitled to damages unconstrained by its normal FRAND royalty rate, alternatively, an account of profits derived by the infringement. Damages should be calculated so as to ensure that Philips is left no worse off than had TCL taken a licence on FRAND terms when it was able to do so. An account of profits, if elected, should be calculated so as to ensure TCL does not profit from committing acts of infringement and then refusing to take a FRAND licence instead of taking a licence at the time it was able to do so.”
“The Claimant's standard terms and conditions pursuant to which it offers a worldwide licence to its portfolio of standard essential patents, which licence has been offered to the Defendants, are FRAND.”
“1. Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings.. 2. Where the action in the court first seised is pending at first instance, any other court may also, on the application of one of the parties, decline jurisdiction if the court first seised has jurisdiction over the actions in question and its law permits the consolidation thereof. 3. For the purposes of this Article, actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”
“90. It is never easy to decide what is an entirely new claim, what is a new claim and what is an expansion of an old claim. These claims are not new or entirely new because they are brought by way of enforcement of the outcome of the original dispute, in the same way as execution on a money judgment. In these circumstances it makes sense to hold that these claims, which largely arise out of the settlement agreements, arise out of the attempts made by the owners to avoid the effect of those agreements and, in particular, the exclusive jurisdiction agreements. This solution would, as I see it, be consistent with the overall policy of the Regulation to avoid a multiplicity of proceedings. However, I can see that there is scope for argument under this head and, if the issue of first seised were critical to the decision, it might be appropriate to refer an appropriate question to the Court of Justice of the European Union. I therefore turn to the issue of discretion on the assumption that the English court is second seised for the purposes of article 28. (per Lord Clarke)”
“92. In Owens Bank Ltd v Bracco (Case C-129/92 )[1994] QB509 , at paras 74-79, Advocate General Lenz identified a number of factors which he thought were relevant to the exercise of the discretion. They can I think briefly be summarised in this way. The circumstances of each case are of particular importance but the aim of Article 28 [the then equivalent of Article 30] is to avoid parallel proceedings and conflicting decisions. In a case of doubt it would be appropriate to grant a stay. Indeed, he appears to have approved the proposition that there is a strong presumption in favour of a stay. However, he identified three particular factors as being of importance: (1) the extent of the relatedness between the actions and the risk of mutually irreconcilable decisions; (2) the stage reached in each set of proceedings; and (3) the proximity of the courts to the subject matter of the case. In conclusion the Advocate General said at para 79 that it goes without saying that in the exercise of the discretion regard may be had to the question of which court is in the best position to decide a given question.”
“11—(1) A defendant who wishes to— 11.1 (a) dispute the court’s jurisdiction to try the claim; or (b) argue that the court should not exercise its jurisdiction, may apply to the court for an order declaring that it has no such jurisdiction or should not exercise any jurisdiction which it may have. (2) A defendant who wishes to make such an application must first file an acknowledgment of service in accordance with Part 10. (3) A defendant who files an acknowledgment of service does not, by doing so, lose any right that he may have to dispute the court’s jurisdiction. (4) An application under this rule must— (a) be made within 14 days after filing an acknowledgment of service; and (b) be supported by evidence. (5) If the defendant— (a) files an acknowledgment of service; and (b) does not make such an application within the period specified in paragraph (4), he is to be treated as having accepted that the court has jurisdiction to try the claim.”
“Further, in the event that TCL declines to take or undertake to take a FRAND licence on the terms set out at paragraph 17 above or as adjusted by this Court and offered to TCL by Philips, the FRAND Commitment is not applicable and Philips is entitled to damages unconstrained by its normal FRAND royalty rate, alternatively, an account of profits derived by the infringement. Damages should be calculated so as to ensure that Philips is left no worse off than had TCL taken a licence on FRAND terms when it was able to do so. An account of profits, if elected, should be calculated so as to ensure TCL does not profit from committing acts of infringement and then refusing to take a FRAND licence instead of taking a licence at the time it was able to do so.”
“AND UPON a FRAND Trial to determine the issues arising on Philips’ FRAND Statement of Case (“SoC”) and the TCL FRAND SoC (the “FRAND SoC Issues”) … [and other matters] having been listed for 15 days to begin in a 5-day window commencing on23 November 2020 ”
“61. The possibility of the grant of an injunction by a national court is a necessary component of the balance which the IPR Policy seeks to strike, in that it is this which ensures that an implementer has a strong incentive to negotiate and accept FRAND terms for use of the owner’s SEP portfolio. The possibility of obtaining such relief if FRAND terms are not accepted and honoured by the implementer is not excluded either expressly or by necessary implication.”
“If the court awards damages it does so on proof of the loss which the SEP owner has suffered through the infringement of its patent or patents. It may be that the measure of damages which a court would award for past infringement of patents would equate to the royalties that would have been due under a FRAND licence.”
"In accordance with Clause 6.1 of 'the ETSI IPR Policv the Declarant and/orits AFFILIATES hereby irrevocably declares the following ... To the extent that the IPR(s) disclosed in the attached IPR Information Statement Annex are or become, and remain ESSENTIAL in respect of the ETSI Work Item, STANDARD and/or TECHNICAL SPECIFICATION identified in the attached IPR Information Statement Annex, the Declarant and/or its AFFILIATES are prepared to grant irrevocable licences under this/these IPR(s) on terms and conditions which are in accordance with Clause 6.1 of the ETSI IPR Policy. The construction, validity and performance of this IPR information statementand licensing declaration shall be governed by the laws of France. Terms in ALL CAPS on this form have the meaning provided in Clause 15 of the ETSI IPR Policy."
"When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner to give within three months an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions under such IPR to at least the following extent: - MANUFACTURE, including the right to make or have made customized components and sub-systems to the licensee's own design for use in MANUFACTURE; - sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED; - repair, use, or operate EQUIPMENT; and - use METHODS. The above undertaking may be made subject to the condition that those who seek licences agree to reciprocate."
"ESSENTIAL" as applied to IPR means that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the time of standardization, to make, sell, lease, otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD without infringing that IPR. For the avoidance of doubt in exceptional cases where a STANDARD can only be implemented by technical solutions, all of which are infringements of IPRs, all such IPRs shall be considered ESSENTIAL. "