MediaTek Inc & Ors v Huawei Technologies Co Ltd & Anor [2025] EWHC 649 (Pat)

“I understand from Mr Zhang that the reason why Huawei China did not seek a global FRAND determination in the Shenzhen proceedings is because Huawei takes the policy position that, absent the parties’ mutual agreement to a certain venue determining global FRAND terms, and in view of the national nature of patent rights, it is more appropriate for a national court to determine national FRAND terms and conditions rather than a global FRAND determination. That stance does not prevent MediaTek from bringing a worldwide FRAND determination in China.”

“Dispute over Monopoly” and “Dispute over Monopoly Pricing and Dispute over Differential Treatment”

“1. To request a determination from the Court that acts of the two Defendants during the license negotiation violate their fair, reasonable, and non-discriminatory (FRAND) obligations, an order requiring the Defendants to immediately cease the monopoly and infringement including but not limited to overpricing and differential treatment, and a declaration that the Plaintiff reserves the right to claim against the two Defendants for other acts during the proceedings. 2. To request an order from the Court requiring the Defendants to compensate for all economic losses thereof incurred by the Plaintiff, temporarily amounting to CNY 10 million by the date of complaint, and a declaration that the Plaintiff reserves the right to claim against the two Defendants for other monopoly acts during the proceedings. 3. To request an order from the Court requiring the Defendants to bear the court costs of this case and reasonable expenses for the Plaintiffs rights protection, temporarily amounting to CNY 1 million by the date of complaint.”

“Because the licensing, use, and protection of patents are all regional, a regional market of each wireless communications SEP that constitutes an independent relevant product market is a specific country or region. In this case, the Defendants include their wireless SEPs in different countries and regions in a portfolio for global portfolio licensing. The relevant regional market for wireless SEP licensing is a collection of national or regional markets of global wireless SEPs held by the Defendants, that is, the global market.”

“(I) The Defendants' exercise of intellectual property rights has exceeded the reasonable limits permitted by law, which constitutes the abuse of intellectual property rights. As mentioned in Part II, the concept of the "fair, reasonable, and non-discriminatory" (FRAND) principle is usually involved in the SEP license negotiation. It is derived from the related IPR policies of the standard setting organizations, and requires standard participants to disclose the patents they own or actually control to the standard setting organizations (SSOs) in time, and to make commitments to licensing all standard implementers to use their patents on FRAND terms. This is the FRAND obligations that SEP patentees must comply with in the licensing and use of SEPs. As world-famous communications equipment manufacturers, the Defendants have joined multiple wireless communications standard organizations such as the ETSI and participated in the formulation of wireless communications standards such as 3G, 4G, and 5G. The Defendants have alleged to own a large number of SEPs under wireless communications standards, including a large number of Chinese SEPs. In addition, the Defendants have made commitments to the standard organizations such as ETSI that they would license their wireless communications SEPs on FRAND terms. Therefore, the Defendants have the obligations to license the SEPs held and controlled by the Defendants on FRAND terms. Such obligations run through the entire process of negotiating, signing, and performing their licensing of wireless communications SEPs. When the Defendants make commitments to the standard organizations on fair, reasonable, and non-discriminatory ("FRAND") licensing, the potential licensees accordingly generate reliance interests, and the SEP patentees are obliged to negotiate the licensing of the SEPs with the licensees in accordance with their FRAND commitments. During the license negotiation between the parties, the Defendants have obviously violated the FRAND licensing obligations in their commitments to the standard organizations and the principle of good faith, causing damages to the Plaintiff’s interests. The Defendants' execution of IPRs has obviously exceeded the reasonable limits of laws and administrative regulations, which constitutes the abuse of IPRs. [REDACTED]. These acts of the Defendants have violated the FRAND licensing obligations and the principle of good faith to the standard organizations, and infringed the Plaintiff’s reliance interests. In addition, these acts have constituted illegal acts violating Articles 7, 22, and 68 of the Anti-monopoly Law in terms of abuse of dominant market positions and abuse of IPRs, severely excluded and limited competition in the relevant market and caused losses to the Plaintiff.” and caused losses to the Plaintiff.”

“(III) The Defendants license wireless communications SEPs at unfairly high prices. Article 22(1) of the Anti-monopoly Law explicitly prohibits undertakings holding dominant market positions from selling commodities at unfairly high prices or buying commodities at unfairly low prices ("overpricing") by abusing their dominant market positions. In this case, the Defendants make use of their dominant positions in the SEP license market, claim an excessively high royalty rate when licensing SEPs, and have committed an overpricing act suspected of violating the Anti-monopoly Law. The royalty rates claimed by the Defendants for wireless communications SEPs are obviously excessively high, violating their FRAND obligations. 1. The Defendants have been insisting on their excessively high royalty offer without reasonable reasons, and failed to fulfil their obligations for license negotiations in good faith. [REDACTED]” [REDACTED]”

“The Defendants other violations of FRAND obligations during the negotiation”

“3. When the Plaintiff has provided a FRAND offer for the 4G/5G SEPs held by the Plaintiff, the Defendants refuse to provide a counteroffer without reasonable reasons. According to related ETSI policies, when submitting FRAND licensing declarations to the ETSI, the parties need to select the check box "This irrevocable undertaking is made subject to the condition that those who seek licenses agree to reciprocate". In other words, the parties have made special FRAND licensing commitments to the ETSI on the premise that the counterparty agrees on reciprocity. This implies that the parties have equivalent FRAND obligations. This reflects the equity and reciprocity of the obligations of the parties in the practice of SEP licensing. It not only requires that patentees holding SEPs should be reciprocally licensed, but also requires that the party as the licensee be obliged to negotiate in good faith. As the patentees, the Defendants fail to provide necessary patent information in good time, and fail to provide reasonable explanations for their offer, which violate their FRAND obligations. [REDACTED]. The Plaintiff has made a commitment to willingly licensing its SEPs to the Defendants in accordance with the FRAND principles, provided a sufficient number of claim charts in batches to the Defendants, and conducted full technical discussions. The Plaintiff has fulfilled its FRAND obligations in good faith. The Plaintiff has provided the Defendants with a FRAND offer for its 4G/5G SEPs, a full explanation of the offer, and necessary information. However, the Defendants refuse to offer a counteroffer. The Defendants' acts are obviously not in good faith and violate the equity and reciprocity requirements contained in their FRAND commitments.”

“The Defendants shall bear the corresponding legal liability to the Plaintiff to stop the infringement and compensate for the loss in respect of its monopoly civil infringement.”

“Article 60 of the Anti-monopoly Law stipulates: "Where an undertaking implements a monopolistic conduct, thereby causing loss to a third party, the undertaking shall bear civil liability in accordance with the law." The wireless communications terminal manufacturing industry is a highly competitive industry. The Defendants' acts will improperly increase the Plaintiffs costs, affect R&D and design of the Plaintiffs products, and restrict the Plaintiffs participation in relevant market competition, and also directly affect the Plaintiffs ability to participate in market competition and the global market landscape, severely restricting competition. The Plaintiff preliminarily estimated that the economic loss caused by the Defendants' relevant acts to the Plaintiff was about CNY 10 million. The amount may be adjusted with the evidence further known to the Plaintiff or the Defendants' further monopoly and improper acts of violating FRAND obligations. In addition, in order to stop the Defendants' infringement, the Plaintiff also paid attorney fees, notarization fees, investigation and evidence collection fees, and other fees tentatively totalling CNY 1 million, which should also be compensated by the Defendants according to law. Meanwhile, the Plaintiff reserves the right to increase the compensation amount. Therefore, the Plaintiff hereby files this lawsuit on the basis of the above facts and reasons, and pleads to the Court for supporting all the Plaintiffs claims to protect the Plaintiffs legitimate rights and interests according to law.”

“7. Further, though MediaTek contends that as to overall structure, a FRAND licence would involve a global cross-licence of the MediaTek and Huawei Portfolios (as defined below). However, should this Court determine a different licensing structure to be FRAND between the parties in all the circumstances (e.g. respective one-way licences for the MediaTek and Huawei Portfolios), MediaTek hereby undertakes to the Court to offer and enter into a licence on whatever terms are determined to be FRAND by this Court in respect of the parties’ respective patents.” “10. For a number of years, and to date, it has been the practice in the wireless telecommunications industry that royalty-bearing licences are sought by SEP holders from the mobile device OEMs. According to that practice, licensing of portfolios of wireless telecommunications SEPs was undertaken on the basis that, in those circumstances, no additional licences were are sought or required from those upstream who supplied chips (or chipsets) which enabled those devices to operate in accordance with the standards (since the devices themselves were licensed in any event), or from downstream mobile device purchasers. Licensing undertaken in this way is and has long been the existing way in which licensing of SEPs for wireless telecommunications is conducted, including by Huawei in respect of OEM manufacturers that use MediaTek and/or Qualcomm and/or Unisoc chipsets. 10A. The consequence of this industry practice is that the industry (in particular the manufacturing supply chain) is structured on this basis, and that chipset manufacturers (such as MediaTek and its competitors) have established businesses with that foundation. The Claimants will provide particulars of this industry practice and why it is FRAND in their FRAND Statement of Case. 11. Contrary to this existing industry licensing practice Huawei has proposed to MediaTek (and, to the best of MediaTek’s knowledge, to MediaTek alone) a radical change in the approach to licensing. Under this proposed new approach: (i) Huawei continues to enter into licences to its portfolio of SEPs with OEMs, including OEMs that use chipsets provided by other chipset manufacturers such as Qualcomm and Unisoc. (ii) MediaTek infers (given that Huawei has commenced infringement proceedings against MediaTek in relation to SEPs which Huawei has otherwise licensed to MediaTek’s customers) that such licences must exclude from their scope (solely) devices which incorporate chipsets supplied by MediaTek. (iii) In relation to such devices (and only those), Huawei then purports to require MediaTek to enter into a licence to Huawei’s SEP portfolio [REDACTED] which would put MediaTek at a significant competitive disadvantage compared to its principal competitors (such as Qualcomm and Unisoc, whose customers continue to be licensed and of whom MediaTek understands such chipset-level licensing demands have not been made.) (iv) Moreover, Huawei makes no concession to the fundamental differences between MediaTek and the price and other characteristics of the chipset products it sells, relative to that of mobile devices sold by OEMs. (v) This approach has never hitherto been the case between the parties, and, aside from a non-practising entity ([REDACTED], which does not appear to be a genuine arms-length entity vis-a-vis Huawei) to which Huawei recently divested a number of patents in its SEP portfolio (a transaction which does not appear to be a genuine arms-length transaction), no other SEP holder has asked MediaTek to take a directly royalty-bearing licence to its portfolio in this way. (vi) As part of its strategy to pursue this novel outlier approach, and with the intended result of requiring MediaTek to take a licence on terms which are not FRAND, Huawei has recently sued MediaTek in the Chinese courts for infringement of certain of its SEPs and claims injunctive relief in relation to MediaTek’s chipset products.”

“47A. MediaTek has also instituted proceedings before the Munich Regional Court in Germany and before the courts of Shenzhen, Hangzhou and Zhengzhou in the PRC, asserting patent infringement by Huawei of German and Chinese patents. In addition, MediaTek has brought an anti-trust claim in the Beijing Intellectual Property Court. None of the said claims will result in the determination of a global FRAND licence for Huawei in respect of the MediaTek portfolio or in a cross-licence (or other reciprocal licence arrangement) to the same; in particular none will result in a licence covering Huawei or MediaTek’s acts undertaken in the UK.”

“121. The Claimants are, and at all material times has have been, willing to negotiate with the Defendants and to grant a licence under the Asserted Patents and other essential patents owned by the First and Second Claimant on FRAND terms, within the meaning of ETSI IPR Policy under the ETSI Rules of Procedure dated 12 December 2022. 122. The Defendants and each of them have infringed the Asserted Patents and/or threaten to infringe the Asserted Patents in the manner set out in the Particulars of Infringement served with these Particulars of Claim. Further, the First Defendant is jointly liable for the Second Defendant’s acts of patent infringement as set out in the Particulars of Infringement served with these Particulars of Claim. 123. By reason of the matters set out above the Claimant has suffered loss and damage. 124. Further, the Defendants threaten and intend to continue the acts of which the Claimants complain whereby the Claimants will suffer further loss and damage.”

“18. As to ¶¶1-19, the Second Defendant admits that it has carried out at least one act of the type listed in section 60 Patents Act 1977 (as amended) in relation to at least one example in each category of accused product, namely: a Huawei 4G Mobile Device, a Huawei 5G Mobile Device and a Huawei Infrastructure Equipment. The Second Defendant denies that those acts constitute infringement of the Asserted Patents because the Asserted Patents are not Essential and are invalid for the reasons pleaded below and in the Grounds of Invalidity.”

“112. The Particulars of Infringement give clear examples of Huawei’s acts complained of and explains why MediaTek considers that those acts constitute infringement under sections 60(1)(a), 60(1)(b), 60(1)(c) and/or 60(2) of the Patents Act 1977. In particular: (a) information and advertising on the Huawei UK Website shows that the Second Defendant has and/or is: (i) offering for sale the Huawei Mobile Devices in the UK (see paragraph 10 of the Particulars of Infringement); (ii) offering for use in the UK the methods identified in paragraph 6 of the Particulars of Infringement; and (iii) supplying or offering to supply the Huawei Mobile Devices and/or the Huawei Infrastructure Equipment in the UK to a person other than a licensee or other person entitled to work the invention with means essential for putting the invention of EP 158, EP 722 and EP 659 into effect knowing, or where it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK (see paragraphs 12, 14 and 16 of the Particulars of Infringement); (b) information in the 2023 Annual Report of the Huawei Group indicates that the First Defendant has, without the consent of MediaTek, (i) offered for sale and sold, and/or (ii) supplied and/or offered to supply the Huawei Infrastructure Equipment in the UK to a person other than a licensee or other person entitled to work the invention with means essential for putting the invention of EP 158 and EP 659 into effect knowing, or where it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK (see paragraphs 20 and 22 of the Particulars of Infringement). 113. The Particulars of Infringement also explain why MediaTek considers that the First Defendant has procured that the Second Defendant undertake the acts set out at paragraph 112(a) above and/or those acts are carried out pursuant to a common design between the First Defendant and the Second Defendant that they be so undertaken (see paragraph 20 of the Particulars of Infringement). 114. The Particulars of Infringement further explain why MediaTek considers that the Defendants are jointly and severally liable with other third-party infringers of the Asserted Patents in paragraphs 26 and 27 of the Particulars of Infringement.”

“a. Huawei’s global website shows that Huawei maintains over 100 websites dedicated to specific locations other than mainland China, which are available in native languages. Amongst those, Huawei continues to conduct direct online sales through dedicated Huawei e-commerce platforms in 25 locations outside of mainland China, located on every continent, and specifically including Japan, Mexico, South Africa, Turkey, and various European countries, which are all jurisdictions in which MediaTek owns 4G and 5G SEPs. b. Huawei’s annual reports show that despite the hit Huawei took after the imposition of US trade sanctions and to the restrictions in 2019, Huawei has continued to generate significant revenue outside of mainland China, particularly in the EMEA region, where revenue for 2023 (145,343 million CNY, or approximately US$20 billion at the closing exchange rate for the end of 2023) (see Exhibit DCYL-21) is not far off the revenue for that same region in 2017 (164,603 million CNY, or approximately US$25 billion at the closing exchange rate for the end of 2017) (see Exhibit DCYL-22). c. In relation to 4G mobile phone sales: [REDACTED] (see Confidential Exhibit DCYL-18). d. In relation to infrastructure: between 2019 and 1H 2024, Huawei continues to be the clear market leader in revenue share in the telecoms infrastructure segment, with approx. 28% of market share in 2022. The majority (70.8%) of Huawei’s infrastructure revenues for 4G sales come outside of mainland China. The breakdown of revenue outside of mainland China is 26.3% in the Asia Pacific (excluding mainland China), 19.2% in Europe, 16.2% in Middle East and Africa, 7.8% in Caribbean and Latin America, and 1.3% in North America. While the majority of Huawei’s 5G infrastructure sales currently are in mainland China, the percentage of sales outside of mainland China has steadily increased from 15.7% in 2019 to 26.8% in 2023. This is consistent with reporting on Huawei’s global infrastructure business, which has described Huawei as “close to being a de facto choice for advanced telecom infrastructure in Africa, the Middle East and Latin America” (see Exhibit DCYL-19, being a recent September 2024 report of an interview with Huawei’s top IP executive, Alan Fan). Despite UK network operators being required to remove all Huawei equipment from their 5G network infrastructure by 2027, Huawei equipment remains present in the 5G network infrastructure of three of the UK’s four mobile network operators (BT, Three and Vodafone) and replacement efforts have proceeded slowly. This is consistent with the fact that Huawei UK continues to generate hundreds of millions of pounds in revenue (£229.6 million in 2023 according to its latest annual report, exhibited to this witness statement as Exhibit DCYL-21). e. Huawei’s global position and ambition is clearly stated in Huawei’s annual reports. For example, in Huawei’s most recent annual report, for the year 2023 (page 11): “on the operations side, Huawei is committed to globalized operations and diversifying our supply chains to ensure long-term, continuous, and stable supply, and to lay the foundations for more sustainable development. We have established long-term partnerships with over 10,000 suppliers and partners around the world”, (page 21): “In Europe, the Middle East, and Africa (EMEA), ICT infrastructure such as 5G and optical networks was being constructed rapidly and industries sped up digital, intelligent, and low-carbon transformation. As a result, our cloud computing business grew rapidly, our ICT infrastructure business remained steady, and the performance of our digital power business was in line with forecast.” (page 37): “The world is ready for 5.5G: Global commercialization of 5.5G commences in 2024” (Exhibit DCYL-21).”

“I am instructed that out of Huawei UK’s £229.6 million revenue in 2023, approximately [REDACTED] million is attributable to 4G and 5G wireless infrastructure hardware, software, and maintenance in the UK. By way of comparison, the 2023 revenue of Huawei that is attributable to wireless hardware (namely, 4G and 5G base stations (not including antennas)), software, and their maintenance was approximately USD [REDACTED] billion in the greater Chinese region (including Hong Kong and Macau), and approximately USD [REDACTED] billion in mainland China. In other words, using an exchange rate of USD$1 = £0.79, the revenue attributable to wireless hardware (namely, 4G and 5G base stations), software, and their maintenance in the UK is approximately [REDACTED] of the equivalent figure in mainland China for 2023 (or conversely, this revenue in mainland China was approximately [REDACTED] times higher than in the UK in 2023).”

“17. The 2023 Annual Report discloses a substantial revenue of £229.6 million made by Huawei UK in 2023, of which more than 58% (about £133.6 million) was generated from the UK. Of Huawei UK’s total revenue in 2023, about 34.5% (about £79.2 million) was generated from “sales of products”, about 29.5% (about £67.8 million) from “rendering of services”, and about 36% (about £82.6 million) from “rendering of services to other group undertakings”. 18. Further, the 2023 Annual Report indicates that Huawei UK has maintained substantial stocks of goods on hand, valued at about £24.3 million, which “comprise inventories of finished goods for resale and work in progress and are stated at the lower of cost and net realisable value”

“25. In paragraphs 14 to 22 of Lim 4, Mr Lim relies upon certain figures and general statements made in Huawei UK’s annual report for the year ended 31 December 2023 to imply that Huawei UK currently, and will in future, perform a substantial degree of activity that could potentially constitute an infringement of the UK patents in the MediaTek Portfolio. However, Huawei UK has other business units with no relevance to the implementation of 4G and 5G standards in the UK, such as digital power and fixed networks. 26. Furthermore, there are revenue-generating aspects of Huawei UK’s business activities related to 4G and 5G standards in the UK that may not constitute acts which infringe the UK patents in the MediaTek Portfolio. For example, the repair of its customers’ 5G infrastructure equipment may well not constitute an act of infringement of a patent that is held to be essential to 5G. I note that there is no pleaded claim that Huawei has infringed through any such acts of repair.”

“24. Antitrust proceedings before courts in the PRC will consider (by reference to the claims made and forms of anticompetitive conduct alleged in any given action) whether anticompetitive conduct has taken place and whether the alleged conduct has had the claimed effect on competition in the relevant market in the PRC. Under Chinese law and precedent, the provisions of the Antitrust Law of the People's Republic of China shall apply to monopolistic practices outside the territory of the PRC if they eliminate or restrict market competition inside the PRC. In other words, PRC courts have jurisdiction over competition law breaches arising out of conduct taking place abroad as long as they affect market competition in the PRC. 25. With respect to antitrust actions relating to the licensing conduct of an SEP holder, allegations of anticompetitive conduct in the form of the violation of FRAND licensing obligations, overpricing and discriminatory differential treatment by the party in question are typically pleaded. Given such claims, the court will need to evaluate the conduct of the party accused of anticompetitive behaviour and, in respect of each issue of conduct that forms the subject of the claim, assess whether the accused party engaged in the anticompetitive practice alleged. 26. Whilst the evaluation in respect of certain alleged forms of anticompetitive conduct (e.g. unfair high pricing conduct and violating FRAND obligations) will inevitably involve an assessment of whether licensing offers from the SEP holder are excessively high, that assessment is most likely to be qualitative rather than a detailed evaluation and endorsement of specific rates and/or other terms of a putative FRAND licence between the parties. This is essentially the same FRAND-related assessment exercise as that described above in respect of a SEP infringement action where injunctive relief is sought, and not a definitive determination of the FRAND licensing terms between the parties. 27. Moreover, as also previously explained, the order and operative findings that will be made in proceedings before courts in the PRC will depend on the scope of the claim that is made in the proceedings – accordingly, in an antitrust action alleging monopolistic behaviour and seeking relief in relation to the same the ruling of the court will be limited to confirming whether the alleged anticompetitive behaviours took place and whether the relevant conduct should be prohibited. Any evaluation of the factors underlying that ultimate decision, including the assessment of offers made by the SEP holder, will not result in a determination of the FRAND licensing terms between the parties. 28. As explained above, although the claims are not the same and consequently the content of the respective judgments will not be the same, an antitrust case concerning allegations of violation of FRAND obligations and a SEP infringement case seeking injunctive relief will both involve some consideration of the same fact, i.e. whether the SEP holder’s offers are consistent with the fulfilment of their FRAND obligations. However, just as separate infringement cases can come to different conclusions as to the FRAND-compliance of a party’s offers, the conclusion reached in antitrust proceedings can differ from that reached in infringement proceedings. This is consistent with my view that the FRAND-related assessments in antitrust and infringement proceedings cannot be regarded as any sort of binding determination of the FRAND terms that should be entered into between parties.”

“The inquiry to which Mr Xie refers in paragraph 25 of his statement is therefore an inquiry whether the antitrust defendant has complied with their FRAND commitment. I agree with Mr Xie that the provisions of the Antitrust Law of the PRC apply to monopolistic practices outside of the PRC, if they eliminate or restrict market competition inside the PRC. In the context of SEP disputes, the Chinese Court can rule on conduct related to a global licence provided the alleged conduct has “direct, substantial and significant effects” in China. Whether a party’s offer of a global licence complies with its FRAND commitment has been requested by MediaTek being one of the central questions to be decided in an antitrust action, as it requested in a SEP infringement action or FRAND term setting action. This is the case with MediaTek’s Beijing proceedings. One of the central questions is whether Huawei’s offer of a licence to MediaTek is FRAND (note that MediaTek’s claims regarding breach of FRAND commitment in this proceeding will also be regarded as a factor in evaluating the discriminatory differential treatment and overpricing). Compliance with the FRAND commitment may be a decisive factor weighing against a violation of antitrust law. The ground on which MediaTek maintains that Huawei is liable in antitrust is that MediaTek maintains that Huawei has not complied with its FRAND commitment. Even if non-compliance with the FRAND commitment would not alone establish antitrust violation, compliance with that commitment would effectively be decisive against liability.”

“I disagree. If the Beijing IP Court dismisses MediaTek’s claims, it is inevitable that the Beijing IP Court will need to deal with the issue of whether Huawei’s offer of a global licence is FRAND or not. As Mr Xie accepts, the Chinese Courts rule on the claims presented. MediaTek has asked the Beijing IP Court to hold Huawei liable because Huawei’s offer of a global licence is not FRAND. The Beijing IP Court will rule on that contention. If MediaTek does not like the answer, that answer will be legally effective upon MediaTek nonetheless, either as res judicata under Article 247, or through uniform application of law. If another Chinese Court has already ruled on the question, then that ruling will very likely stand in Beijing. As I have explained, it is incorrect for Mr Xie to present the Chinese legal system as a place in which there is no legal certainty because parties can simply ignore adverse reasoned decisions they dislike.”

“56. As I have explained, I do not believe this is correct. It fails to recognise the important role which decisions of Chinese courts on parties’ compliance with their FRAND obligations – on the FRANDness of their conduct – play in making law and guidance for the parties and resolving their dispute. One of the inherent functions of any SEP infringement proceedings is to obtain an injunction. However, as Mr Xie recognises, in order to grant an injunction, the Court is required to determine whether the parties have complied with their FRAND obligations, of which there are two key aspects: (a) the behaviour of the parties in the negotiations; and (b) the offers made by the parties, and whether those offers are in a ‘FRAND range’. 57. The scope of this FRAND assessment does not only include the behaviours and offers in the course of negotiation before the litigation, but can also extend to behaviour and offers made during the litigation proceedings. 58. Although the Chinese Court, in this scenario of SEP infringement proceedings, would not determine the rate unless either party requested it to, it will conduct an overall and qualitative assessment as to the offers made by the parties in the negotiations – I will refer to this assessment as the “Qualitative FRAND Determination”. 59. A notable example of the Chinese Courts making a Qualitative FRAND Determination is in the SEP infringement proceedings that Huawei issued in the Shenzhen Court against Samsung, who Mr Xie represented in that case. The Shenzhen Court analysed the history of negotiations between the parties, giving its opinion in the judgment on the offer and counter-offers by both parties, which included consideration of the respective rates proposed by the parties, and stating which offers are within the FRAND range and which are not. I exhibit an extract of a certified English translation of the Shenzhen Court’s judgment that includes key parts of the Qualitative FRAND Determination at Exhibit YW-8. 60. Although the Court did not determine the numbers or terms of the FRAND licence (as it would in a FRAND term-setting claim), the Court did provide its opinion as to the FRAND position. In other words, the Court made a Qualitative FRAND determination i.e. it determined whether the parties’ behaviour and offers were FRAND and provided guidance on the same. This guidance was then relevant to whether Samsung faced an injunction and the determination as to what constituted FRAND is what avoidance of that injunction was predicated upon. For example, if one party then insisted on a FRAND rate which the Court had stated was not FRAND, resulting in a failure to conclude a FRAND license agreement between the parties, that party would be denied an injunction, if the patentee, and subjected to an injunction, if the implementer. The Court’s Qualitative FRAND determination would stand.”

“What PRC Courts have not done is to settle the whole set of licence terms in a form ready for execution by the parties.”

“I do not agree with this statement. In proceedings such as the Shenzhen Court FRAND Action, the Chinese Court will determine all FRAND licence terms that cannot be agreed by the parties as per the plaintiffs’ request. In addition, either party is entitled to amend, specify, or clarify their claims, e.g. including adding additional claims such as other licence terms, for the court to determine, before the end of oral hearing. Indeed, as I understand from Ms. Xu Jing from KWM, Huawei has submitted term sheets, which consist of two one-way licences (one for a licence of the Huawei Portfolio and the other for a licence of the MediaTek Portfolio), to the Shenzhen Court. Accordingly, the Shenzhen Court needs to decide the terms as claimed by Huawei, and will do so. The characterisation by Mr Xie of Huawei’s claim in the Shenzhen Court and of the ability of the Chinese Court to determine other terms outside of the rate is not accurate, either as a matter of law or in the practical example of this particular case.”

“Where, in the course of an action or after a judgment takes effect, a party institutes another action against matters for which an action has been instituted, and the another action meets the following conditions at the same time, it constitutes a repeated action: (1) the parties to the latter action and those to the former action are the same; (2) the subject matter of action in the latter action and that in the former action are the same; and (3) the claims in the latter action and those in the former action are the same, or the claims in the latter action substantially deny the judgment in the conclusion in the former action. Where a party institutes a repeated action, the People’s Court shall rule not to accept the action; if the repeated action has been accepted, the People’s Court shall rule to dismiss the action, unless otherwise as prescribed in laws or judicial interpretations.”

“In cases which fall outside the scope of Article 247, where the subject-matter is not the same but is related, while the decisions of one Chinese court will not bind another Chinese court, a decision issued first in time by one of the six courts involved will not strictly bind the other courts, but it will have a very strong reference value when the subsequent court is making a decision. If no new facts or evidence are submitted to the subsequent Court, then, even outside Article 247, it is expected that the initial first instance decision from the other Court would be strongly influential to the decision of the subsequent court, even though it is not binding on the subsequent Court, so that it will very likely be followed.”

“In the circumstances the full ambit of the mediation before the Shenzhen Court is relevantly captured in the following short potted summary: (i) the Shenzhen Court proposed mediation of the FRAND dispute the subject of the proceedings before it, to which MediaTek (as a willing licensee) agreed on 6 December 2024. It is entirely usual for parties to Chinese litigation, when asked by the Court to enter into such a mediation, to agree to do so – particularly when there is a requirement to be a willing licensee in order to rely on a FRAND defence; (ii) the Shenzhen Court ordered the parties to make refreshed negotiation proposals to the other side by 8 January 2025; (iii) the parties complied with that order (MediaTek on 7 January 2025 and Huawei on 8 January 2025), in MediaTek’s case by reiterating the last proposal it had recently put forward in the negotiations (on 15 November 2024) that being for a short-term, one-way licence to the Huawei Portfolio only; (iv) the Shenzhen Court noted the parties’ compliance with its order, thanked the parties and encouraged them to continue to discuss their respective offers in bilateral negotiations; (v) no further steps or developments in this process have been scheduled or are otherwise anticipated.”

“On 16 January 2025, when the Beijing Court asked whether MediaTek and Huawei were willing to have a mediation, both parties confirmed that they would be happy to do so. Since the Beijing claim is an anti-trust claim which relates to the global licensing behaviour of Huawei, each parties’ proposed global licences will be considered throughout the mediation negotiations. The mediation is therefore inherently global in scope. It therefore appears inconsistent that MediaTek state before the UK courts that they wish to terminate the Shenzhen mediation at the same time as commencing a mediation before the Beijing Court. This appears to be another positive step by MediaTek to mediate on a global basis in China in relation to both portfolios. This signifies yet another voluntary submission to global licensing by MediaTek before the Chinese Courts.”

“MediaTek has confirmed (and re-affirms) that it will offer and enter into any licence that the Court determines to be FRAND for use of its portfolio by Huawei, on condition that Huawei likewise commits to offer and enter into whatever licence the Court determines to be FRAND for MediaTek’s use of the Huawei Portfolio.”

“MediaTek has not adduced evidence as to whether Huawei’s ETSI undertakings tick the box which mean that they are ‘made subject to the condition that those who seek licences agree to reciprocate’ and Huawei has not had time to address what this might mean.”

“Huawei and MediaTek are both holders of 4G and 5G standard essential patents, and each owns a portfolio of Chinese 4G and 5G standard essential patents. In addition to requiring MediaTek to pay licensing fees during licensing negotiations with MediaTek, Huawei has always expressed its willingness to obtain a license from MediaTek. Therefore, the two parties actually negotiated on the following two aspects in the standard essential patent licensing negotiations but failed to reach an agreement: (1) the licensing fee conditions that MediaTek should pay to Huawei for Chinese 4G and 5G standard essential patent portfolios owned by Huawei; and (2) the licensing fee conditions that Huawei should pay to MediaTek for Chinese 4G and 5G standard essential patent portfolios owned by MediaTek. Therefore, in this case, the "licensing fee conditions" in the plaintiffs' first claim mean that the court should separately rule on the licensing fee conditions (1) and (2) mentioned above, and finally conclude that MediaTek, as the final net payer for the standard essential patent licensing matters negotiated by both parties, should pay Huawei a net licensing fee for its 4G and 5G end-user device chip products, in compliance with the principles of fairness, reasonableness, and non-discrimination, i.e., the difference between (1) and (2).”

“63.14— Service of documents (1) Subject to paragraph (2), Part 6 applies to service of a claim form and any document in any proceedings under this Part. (2) A claim form relating to a registered right may be served— (a) on a party who has registered the right at the address for service given for that right in the appropriate register at— (i) the United Kingdom Patent Office; or (ii) [Omitted] (b) in accordance with rule 6.33(1) or 6.33(2) on a party who has registered the right at the address for service given for that right in the appropriate register at— (i) the United Kingdom Patent Office. (ii) [Omitted] (3) Where a party seeks any remedy (whether by claim form, counterclaim or application notice), which would if granted affect an entry in any United Kingdom Patent Office register, that party must serve on the Comptroller or registrar— (a) the claim form, counterclaim or application notice; (b) any other statement of case where relevant (including any amended statement of case); and (c) any accompanying documents.”

“80. Actavis describe their argument as simple. It is that the foreign designations of the Patent are inescapably “related” to the registered right because they are all designations of the same patent and have identical wording. It necessarily follows that claims for declarations about the interpretation and non-infringement of the foreign designations are related to the Patent too. 81. The argument is indeed simple but in my view it is also clearly wrong and the judge was right to reject it. CPR 63.14(2)(a) is intended to provide a means for service of claims concerning patents under the 1977 Act and in respect of which an address for service has been given in the UK Patent Office register, provided that address is in the UK. If the address for service is out of the jurisdiction then the claim may be served in accordance with r.6.32(1), r6.33(1) or r6.33(2). CPR 63.14 is specific in its terms and correspondingly limited in its scope. 82. Foreign designations of a UK patent are not patents under the 1977 Act and CRP 63.14 does not provide a means of service in relation to them. Nor is the position any different if the claim form also includes a claim in respect of the UK designation. In such a case the claim form must be regarded as including separate claims in respect of each designation and CRP 63.14 only provides a means for its service in so far as it relates to the UK designation. Were the position otherwise, the provisions of CRP 63.14 could be circumvented by, as Lilly puts it, convoying claims in respect of foreign patents with a claim in respect of a corresponding UK patent. That would be an absurd result and one which cannot have been intended.”

“The claimant may serve a claim form out of the jurisdiction with the permission of the court under rule 6.36 where— General grounds (2) A claim is made for an injunction ordering the defendant to do or refrain from doing an act within the jurisdiction. (3) A claim is made against a person (“the defendant”) on whom the claim form has been or will be served (otherwise than in reliance on this paragraph) and— (a) there is between the claimant and the defendant a real issue which it is reasonable for the court to try; and (b)the claimant wishes to serve the claim form on another person who is a necessary or proper party to that claim. (4A) A claim is made against the defendant which— (a) was served on the defendant within the jurisdiction without the need for the defendant’s agreement to accept such service; (b) falls within CPR Rule 6.33; or (c) falls within one or more of paragraphs (1A), (2), (6) to (16A) or (19) to (22A), and a further claim is made against the same defendant which arises out of the same or closely connected facts. Claims in tort (9) A claim is made in tort where— (a) damage was sustained, or will be sustained, within the jurisdiction; (b) damage which has been or will be sustained results from an act committed, or likely to be committed, within the jurisdiction; or (c) the claim is governed by the law of England and Wales. Claims about property within the jurisdiction (11) The subject matter of the claim relates wholly or principally to property within the jurisdiction, provided that nothing under this paragraph shall render justiciable the title to or the right to possession of immovable property outside England and Wales. Declarations of non-liability (16A)A claim is made for a declaration that the claimant is not liable where, if a claim were brought against the claimant seeking to establish that liability, that claim would fall within another paragraph of this Practice Direction (excluding paragraphs (1) to (5), (8), (12D), (15D), (17), (22) and (24) to (25)).”

“66…The best known fleshed-out description of the concept is to be found in Lord Goff of Chieveley's famous speech in the Spiliada case [1987] AC 460 , 475–484, summarised much more recently by Lord Collins JSC in the Altimo case [2012] 1 WLR 1804 , para 88 as follows: “the task of the court is to identify the forum in which the case can be suitably tried for the interests of all the parties and for the ends of justice …”

“103. This was a jurisdiction challenge and concerned whether it was appropriate to grant permission to serve proceedings out of the jurisdiction on a foreign defendant. Those proceedings were meant to be as defined in the particulars of claim for which permission to serve out was sought. In this case the challenge was made on the grounds that the claimants had no arguable case against the anchor defendant. Where, as in this case, there are particulars of claim, that is an issue which should ordinarily fall to be addressed by reference to the pleaded case. 104. If the issues are addressed by reference to the pleaded case, then the focus of the inquiry is clearly circumscribed and problems of lack of proportionality should generally be avoided. 105. In the present case, not only did the parties choose to swamp the court with evidence, but it appears that the claimants chose not to update their pleadings to reflect the evidence. We were told that this is because they wanted to avoid producing various iterations of the pleading, but if they wanted to advance a case which was not reflected by their existing pleading then they should have amended it. In that way the proper focus of the inquiry can be maintained. Whilst one can understand that this may not have been possible in relation to documents produced during the appeal hearing, the claimants’ laissez-faire attitude to the pleadings set in long before that. 106. This was a matter which caused concern to Fraser J. As he stated at para 10 of his judgment: “The current approach of parties in litigation such as this is wholly self-defeating, and contrary to cost-efficient conduct of litigation. This case is an ideal example of one with ‘masses of documents, long witness statements, detailed analysis of the issues, and long argument’ being deployed on both sides. The costs burden upon the parties must be enormous, and this approach is, in my judgment, diametrically opposed to that required under the overriding objective in CPR Pt 1.” 107. The result is that instead of focusing on the pleaded case and whether that discloses an arguable claim, the court is drawn into an evaluation of the weight of the evidence and the exercise of a judgment based on that evidence. That is not its task at this interlocutory stage. The factual averments made in support of the claim should be accepted unless, exceptionally, they are demonstrably untrue or unsupportable.”

“66. On appeal and as a result of the various amendments, Vestel now put the case they wish to advance in the following way. 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 plc v Unite the Union [2009] EWCA Civ 387; [2010] 1 WLR 318). 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. This paragraph is not a quote from Vestel's skeleton argument but it fairly reflects how Vestel put their case. 67. The respondents contend that Vestel's claim cannot be brought under the inherent jurisdiction in this way at all, because no legal right is involved. They also contend that Vestel cannot fall within the gateway for the same reasons Vestel's claim below did not fall within the gateway, ie because the licences in issue license patents worldwide and the UK patents only make up 5% or less of that property. 68. Thus the debate between the parties relates not only to whether the claim, whatever it is, falls within gateway 11 but also relates to whether the claim, put in the way it is in order to satisfy the gateway, has a reasonable prospect of success. In other words both the first and second limbs of the test as summarised in Brownlie are engaged. The difficulty posed by the way Vestel now put their case is that to answer the first limb (the gateway issue) involves examining with some care the claim Vestel are actually making, which is an issue which more naturally falls into the second limb. The gateway presupposes that the claimant has a claim of some sort, whose subject matter can be considered and found to be property wholly or principally within the jurisdiction. 69. As has already been said, Vestel have identified no legal right to the declarations sought. The most they have is a legal proceeding which asks the court to exercise its inherent jurisdiction to grant these declarations. 70. Although the point was not taken before us, I would interpret the reference to a “claim” in gateway 11 (CPR PD 6B, para 3.1(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 eg 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. If I am differing from the judge below in this respect it may be because in the court below Vestel never clearly narrowed its claim to the extent it now does. 72. However Vestel's “claim” here is for the court to exercise the inherent jurisdiction to make a FRAND declaration despite the absence of an assertion of a right to such a licence. Vestel contend that this would nevertheless be a proper exercise of the court's jurisdiction based essentially on something I said in Pfizer Ltd v F Hoffmann-La Roche AG [2019] EWHC 1520 (Pat). I can see that if what Vestel seeks would be a proper exercise of the court's jurisdiction then it might be a “claim” within gateway 11 but I do not agree with Vestel's reasoning, as I shall explain.”

“In my judgment, this obiter comment of Birss LJ is correct. Nokia's argument confuses the subject matter of the licence that is sought with the subject matter of the claim that is brought. The claim is one to enforce the contractual obligation of Nokia pursuant to the declarations made in respect of the two UK patents, to grant a licence on RAND terms. That is a claim which relates wholly to property within the jurisdiction, even though the licence sought is one that covers a global portfolio of patents, of which the UK patents are only a small element. The legislative history of the rule does not, in my view, affect that conclusion. I note that Fancourt J in Tesla v Avanci [2024] EWHC 1815 (Ch), at §45, considered that Birss LJ's conclusion on this point was right in principle.”

“32. Gateway (4A) is certainly not as wide as the ambit of the court's power to try distinct domestic cases together, where no jurisdictional question arises, but it seems to me that essentially the same practical considerations indicate what the provision is aimed at. Given that the defendant is already properly subject to the court's jurisdiction, pragmatic factors are appropriate matters to take into account in deciding whether the connection between the facts is sufficiently close to justify service out having regard to the overall justice of the circumstances. The purpose of gateway (4A) is to allow the joinder of a further claim against the same defendant based on the same or closely connected facts so as to further the interests of justice, including taking into account practical considerations such as procedural economy and an avoidance of inconsistent results. 33. If facts unique to the second claim include disputed matters of primary fact and would require extensive cross-examination and disclosure resolve, then that would support a conclusion that the connection between the facts is not sufficiently close to justify service out. But if the key factual issues in the second claim are facts it has in common with the anchor claim and the difference in the relevant facts is only on matters which are undisputed or which can readily be dealt with without substantial disclosure and little or no cross-examination, then the factual connection may be sufficiently close to justify service out.”

“22. In a service in case, the burden is on the defendant to show that there is another available forum which is clearly and distinctly more appropriate. The burden reflects the fact that in such a case the claimant has served the defendant as of right which is an advantage which will not lightly be disturbed (Spiliada at p. 476F, 477E). In a service out case, the burden is on the claimant to show that England is clearly the appropriate forum, which is simply the obverse of the position in a service in case (Spiliada at p. 481E). In both cases appropriate forum means that in which the case may be tried more suitably for the interests of all the parties and the ends of justice (Spiliada p. 476C, Lungowe v Vedanta Resources Plc [2019] UKSC 20 [2020] AC 1045 at [66]). In determining the appropriateness of the forum, the court looks at connecting factors to determine with which forum the action has the most real and substantial connection (Spiliada at p. 478A). These include not only factors affecting convenience or expense, but also other factors such as governing law, the place where the parties reside or carry on business, and where the wrongful acts and harm occurred (Spiliada p. 478A-B, Vedanta at [66]). The risk of multiplicity of proceedings giving rise to a risk of inconsistent judgments is only one factor, although a very important one (Vedanta at [69]). In applying these connecting factors to cases involving multiple defendants, their relative status and importance in the case should be taken into account, such that greater weight is given to the claims against those who may be described as a principal or major party or chief protagonist: JSC BTA Bank v Granton Trade Limited [2010] EWHC 2577 (Comm) per Christopher Clarke J at [28]. 23. For both service in and service out cases, if the court concludes that the foreign court is more appropriate by reference to connecting factors, applying the relevant burden of proof, the court will nevertheless retain jurisdiction if the claimant can show by cogent evidence that there is a real risk that it will not be able to obtain substantial justice in the appropriate foreign jurisdiction (Vedanta at [88]). Cogent evidence does not mean unchallenged evidence (Vedanta at [96]). This is often conveniently treated as a second stage in the analysis because it usually calls for an assessment of different evidence, but it does not involve a different question: if there is a real risk of denial of justice in a particular forum it is unlikely to be an appropriate one in which the case can most suitably be tried in the interests of the parties and for the ends of justice: Vedanta at [88]. In this case the parties and the Judge adopted that two-stage approach, labelling the first stage as “appropriate forum” and the second stage as “access to justice”

“With great respect to the members of the Court of Appeal in the present case, I think that they have fallen into error by giving insufficient weight to the epithet "mere" in the expressions "mere balance of convenience" and "mere disadvantage of multiplicity of suits," as these expressions, or other expressions similar to them, are used in the authorities. Mere balance of convenience cannot, of itself, be decisive in tilting the scales; but strong, and a fortiori overwhelming, balance of convenience may easily, and in most cases probably will, be so. Similarly, the mere disadvantage of multiplicity of suits cannot of itself be decisive in tilting the scales; but multiplicity of suits involving serious consequences with regard to expense or other matters, may well do so. In this connection it is right to point out that, if concurrent actions in respect of the same subject matter proceed together in two different countries, as seems likely if a stay is refused in the present case, one or other of two undesirable consequences may follow: first, there may be two conflicting judgments of the two courts concerned; or, secondly, there may be an ugly rush to get one action decided ahead of the other, in order to create a situation of res judicata or issue estoppel in the latter.”

“99. Conversant’s claim in the present case is closely analogous to the claim advanced in the Unwired Planet case. It is (i) that the UK patents are essential to the standard, (ii) that it has complied with its ETSI undertaking, in that the offers which it has made are FRAND, (iii) that Huawei and ZTE have not so complied without any reasonable ground for so doing, and (iv) that it is therefore entitled to enforce its UK SEPs and obtain the usual relief for infringement, including a FRAND injunction and damages. Conversant also seeks a determination as to the terms which are FRAND for the licensing of its portfolio. Huawei’s and ZTE’s answer is likely to be (i) that Conversant’s patents are neither essential nor valid, and (ii) that Conversant has not complied with its FRAND undertaking and so is not entitled to an injunction even if it establishes that its UK patents are valid and essential. The content of Conversant’s FRAND undertaking is thus an inseparable part of the dispute about whether Conversant is entitled to relief for infringement of valid UK patents. 100. I do not accept that this analysis, by referring throughout to the UK patents in Conversant’s portfolio, commits the error which the Court of Appeal identified in re Harrods (Buenos Aires). In that case the dispute was about prejudice to the minority shareholders of a company registered in England. By focussing on the place of registration of the company and on the specific remedy of a buyout provided in English law, Harman J. had prejudged the question of appropriate forum, particularly as, through the lens of Argentine law, the company was an Argentine company. If the case were to be tried in Argentina, the relief available would be different, but the underlying dispute would be the same. The facts relied on to establish prejudice would be the same, as would the shareholdings, and the company, about which the parties were fighting. It was possible to say that the appropriate forum for deciding that dispute was Argentina. 101. In the present case, leaving Conversant to seek a remedy in China would be to compel them to advance a case based on different patents. The Chinese patents are not the UK patents viewed through the lens of Chinese law, but are different property rights applied for and registered in China. They are not even in the same families as the UK patents. They will have different claims. Different prior art will be relevant to their validity. The issue of essentiality of those patents will give rise to wholly different technical issues from the issues which would arise on the essentiality of the UK patents. The acts of infringement relied on will be acts in China, not acts in the UK. I find it impossible to view such a dispute as being the same dispute as that which would arise in the English court. 102. I therefore do not accept it is legitimate to generalise out the claim made in the present proceedings and characterise it as a claim for infringement of a “local” patent. That characterisation suggests that it is a matter of indifference to Conversant which national patents they sue on, when that is plainly not the case. It is a way of characterising the dispute so as to make it suitable for determination in any jurisdiction where Conversant has a patent, no matter how different the scope of that patent may be to the scope of the UK patents in suit. Of the two ways in which the parties seek to characterise the dispute, it seems to me that the appellants’ way is the one which offends against the warnings in Harrods Buenos Aires against building the answer into the way in which one formulates the question. 103. It is also not legitimate to characterise the claim as one for enforcement of a global portfolio right. No such right exists, as this court readily accepted in Unwired CA. I therefore reject the appellants’ challenge to the way in which the dispute is to be characterised. The question which the judge asked himself was the correct one.”

“106. Many of the appellants’ submissions appeared to treat the claim as if it were a claim to enforce a global right. In his written submissions Mr Layton referred to the influence of “the place where the tort is committed” as a factor of particular importance. He contended that this was China because that was where the manufacture and the majority of infringements by sale took place. Such a consideration would only be relevant if one were considering a unitary global right and deciding where the preponderance of the infringement occurred. It does not apply in a case concerned with national territorial rights where the tort is committed in each individual jurisdiction. A case where such a consideration was relevant was Kinahan v Kinahan (1895) LR 45 Ch D 78 where leave to serve English proceedings for infringement of a UK trade mark case on an Irish company in Ireland (Ireland then being part of the UK) was refused on forum non conveniens grounds, the preponderance of the business in question being conducted in Ireland. The UK trade mark was a right which extended territorially to both England and Ireland, and so the right in question would have been the same whether the action was brought in England or Ireland. That would not be the case if Conversant were obliged to sue on their different, Chinese rights. 107. Likewise this is not a case where it is possible to say that Chinese law is the law which governs the dispute between the parties, or that the Chinese patents are the key patents which determine the dispute. All these submissions are based on a characterisation of the dispute which ignores the fact that Conversant is seeking to enforce UK patents, governed by English law. 108. It is of course true that if Conversant were to sue on its Chinese patents in China, then the Chinese court would be scrutinising the validity and essentiality of the Chinese patents (the first of Mr Layton’s big reasons). That in itself is not a reason for saying that the English court is not the appropriate forum for deciding the validity and essentiality of the UK patents. In any event, as the judge pointed out, it is likely that the results of the Chinese proceedings will be known before the English court determines the terms of the licence, so that those results can be factored in to the court’s determination.”

“the tail of an elephant the body of which is the dispute between the parties as to what terms for a global licence of Nokia’s SEP portfolio are FRAND”: see [35]. Arnold LJ rejected this characterisation for the following reasons: “39. I agree that OPPO’s acceptance that they need a global licence and their expressed willingness to take one represents a factual distinction between the present case and Conversant, where Huawei and ZTE neither accepted the need for a global licence nor expressed a willingness to take one. I do not accept that this is a relevant distinction, however. My reasons are as follows. 40. First, if the dispute was purely about the terms of a global licence, there would be no need for three five-day trials of the validity, essentiality and infringement of the UK Patents (Trials A-C). Nor would there be any need for a trial of whether OPPO can rely upon Nokia’s FRAND obligation without undertaking to the English court to take a licence on terms determined by the English court to be FRAND (Trial E). Rather, the parties could proceed straight to the determination of what terms are FRAND (Trial D). When asked whether OPPO were willing to dispense with their challenges to the validity, essentiality and infringement of the UK Patents (which OPPO could do purely for the purpose of this claim and without any admission that the UK Patents are in fact valid, essential or infringed), counsel for OPPO’s answer was that OPPO are not willing to do that. On the contrary, OPPO are insistent upon exercising their right to challenge validity, essentiality and infringement of the UK Patents (although, as noted above, OPPO say that it should not be necessary to determine those issues). It follows that only if Nokia prove that at least one of the UK Patents is valid, essential and infringed absent a licence will it become necessary to determine whether OPPO can rely upon Nokia’s FRAND obligation by way of defence and if so upon what licence terms. 41. Counsel for OPPO accepted that this confirmed that the dispute included issues as to the validity, essentiality and infringement of the UK patents, but he argued that this was merely a jurisdictional “hook” which did not detract from the fact that the “meat” of the dispute was over the terms of a global licence. This does not distinguish the present case from Conversant, however, as can be seen from the passage from Floyd LJ’s judgment I have quoted. 42. Secondly, OPPO’s undertaking to Nokia is only to take a global licence upon the terms determined to be FRAND by the Chongqing court. OPPO have offered no undertaking to take a global licence upon the terms determined to be FRAND by the English court. Nor have OPPO offered an undertaking to take a global licence upon the terms determined to be FRAND by an arbitral tribunal. In other words, OPPO’s characterisation of the dispute is not in truth forum-neutral, but amounts to an attempt by a sleight of hand to build the answer as to forum into the question of how the dispute is to be characterised. As Re Harrods (Buenos Aires) Ltd [1992] Ch 72 establishes, that is an illegitimate approach to characterisation. 43. Thirdly, even if the point about the nature of OPPO’s undertaking is put on one side, the question remains as to how Nokia are to enforce their right to obtain compensation for OPPO’s exploitation of their portfolio. As explained above, the SEP holder’s FRAND obligation operates by way of defence to an infringement claim in order to prevent hold up. Like any SEP holder, the only remedy available to Nokia for preventing hold out by an implementer is an injunction to restrain unlicensed infringement of their patents. OPPO’s characterisation of the dispute as being purely about the terms of a global licence ignores this critical dimension of the dispute. The point can be illustrated in this way. Obviously, OPPO have commenced proceedings in Chongqing in the belief that the Chongqing court will set a lower royalty rate or rates than the English court. But the royalty rate which is determined to be FRAND makes no difference to the question of enforcement. What happens if the Chongqing court, contrary to OPPO’s expectation, determines a FRAND rate that is higher than OPPO are willing to pay? Unless the determination of the Chongqing court can be directly enforced against OPPO, a question I will return to in the context of considering the appropriate forum, the only way for Nokia to enforce their rights will be to obtain an injunction to restrain patent infringement. Nokia will therefore have to bring claims for infringement of their SEPs in the PRC even if they have not done so before then. Thus Nokia’s claim for an injunction to enforce their SEPs is inescapably a key aspect of the dispute between the parties, and since patents are territorial any proceedings in a national court are inescapably founded upon the SEPs asserted by Nokia in that jurisdiction. As the judge put it at [45]: “ … I do not agree that broadening out the dispute between the parties so that it becomes viewed from a global perspective leads to the result that it can be correctly characterised as a dispute about FRAND terms. That is only possible if the allegations by Nokia of infringement of its SEPs in the various jurisdictions are brushed aside. Alternatively, if they are included with[in] the overall picture of the dispute, those allegations must be characterised as being concerned with the essentiality, infringement and validity of local patents in their various jurisdictions.” 44. I therefore consider that the judge correctly characterised the dispute between the parties in the present case. As Floyd LJ noted in Conversant if the dispute is correctly characterised as a claim to enforce UK patents, raising issues as to the validity, essentiality and infringement of those patents and as to a defence seeking to enforce the patentee’s FRAND obligation, there can only be one answer to the question as to which is the appropriate forum in which to try that dispute. OPPO do not dispute this, and accordingly their second ground of appeal challenging the judge’s conclusion as to the appropriate forum is contingent upon the success of their first ground of appeal. I shall nevertheless consider the issue for completeness.”

“77. First, it relies on the proposition Ericsson will be the net recipient of royalties under a cross-licence. It argues that it would be absurd if a net payer such as Lenovo could, simply by virtue of holding some SEPs, play a “jurisdictional trump card” by alleging infringement of those SEPs so as to bring the determination of FRAND terms within the English court’s jurisdiction. I do not accept that. First, as I have explained, Ericsson has not established in these interlocutory proceedings that it will necessarily be a “net recipient” of a patent royalty. In any event, whoever is ultimately the net recipient, Lenovo clearly has a significant portfolio of SEPs of its own. True it is that it “anchors” its claim for a FRAND determination in the English courts in its claim for infringement of a single UK SEP. However, the proposition that a claim for a FRAND determination can be “anchored” in this way is now well established. It is no more objectionable for Lenovo to anchor its claim for a FRAND determination by reference to a single UK SEP than it is for Ericsson to anchor its claim in the EDNC Proceedings in four US patents. 78. Relatedly, Ericsson argues that in Conversant v Huawei CA and Nokia v OPPO CA it was an implementer who was arguing that the case should be characterised as a dispute about a FRAND licence. By contrast, in the present case Ericsson, who claims to be a “net licensor” argues that the case is really about a FRAND licence with Lenovo, the “net licensee” characterising it as a dispute about patent infringement. However, the premise of that argument is not obviously correct since, as noted at [25] of Nokia v OPPO CA, both Nokia and OPPO were entitled to a FRAND cross-licence of each other’s SEPs and it is not clear from that paragraph which would be a net recipient. In any event, I do not consider that it makes much of a difference which party seeks to characterise the dispute as being about a FRAND licence and which characterises it as being about patent infringement. Ultimately, the present case has to be characterised for the purpose of the convenient forum analysis and the characterisation adopted has to be the same for both Lenovo and Ericsson. A still further objection is that Ericsson has not established to my satisfaction that it will be a “net licensor”. 79. Nor do I accept Ericsson’s related argument that, since Lenovo will be a “net licensee” the case cannot be about Lenovo enforcing its rights to obtain proper compensation for Ericsson’s use of the Lenovo SEP. Quite apart from the fact that I am not satisfied that Lenovo is a “net licensee”, Lenovo has a significant portfolio of SEPs of its own. Bringing an action in England and Wales for infringement of the Lenovo SEP remains a means of securing proper reward for Ericsson’s implementation of that SEP even if, conceptually, Lenovo could have adopted other means of securing that reward by making its case on the appropriate FRAND licence in the EDNC Proceedings. 80. Ericsson also relies on the proposition that as a “net licensor”, it has the right to choose the single jurisdiction in which a FRAND determination takes place by parity of reasoning with the judgment of Meade J at [271] of Nokia v OPPO [2023] EWHC 1912 (Pat) (“Nokia v OPPO HC”). That argument fails because I am not satisfied for the purposes of the present applications that Ericsson is indeed a net licensor. However, even if it is, Meade J’s conclusion in Nokia v OPPO HC would at most give it a right to choose which of different FRAND offers it wishes to make to Lenovo. I am not satisfied that this automatically confers on it a “right to choose”, at the jurisdiction stage, a single venue in which FRAND terms are to be determined. 81. Ericsson objects that, if it is denied a “right to choose” at this stage, then the outcome will be parallel proceedings in both the English courts and the EDNC, both potentially leading to a determination of FRAND terms. I do not necessarily disagree with this diagnosis of the problem. It strikes me as extraordinarily wasteful that the parties should seriously contemplate having two sets of proceedings on foot that are directed at the same issue. I would have thought that the parties’ resources could be used much more wisely by agreeing between themselves a single venue for a determination of a global FRAND cross-licence and a sensible regime to apply in the interim. However, I do not accept the treatment for this diagnosis that Ericsson wishes to administer. If the English court has jurisdiction then, subject to the analysis of the application for a case-management stay that follows, I do not see why Ericsson should have the unilateral right to require the English court not to exercise that jurisdiction. As Arnold LJ noted at [17] of his judgment in Nokia v OPPO CA, the risk of parallel proceedings inevitably arises since national courts have jurisdiction to determine questions of validity and infringement of their domestic patents and so of FRAND issues arising where those patents are FRAND-encumbered.”

“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. But we think, like the judge, that there is a compelling reason why the appellants must fail on this issue which would apply even if the appellants’ characterisation had been correct, so that the dispute was in substance about the terms of a global FRAND licence. A challenge to jurisdiction on forum conveniens grounds requires the challenger to identify some other forum which does have jurisdiction to determine the dispute. Even in a case where permission is required to serve out of the jurisdiction, so that the burden then shifts to the claimant to show that England is the more appropriate forum, that still requires there to be another candidate with the requisite jurisdiction. In the present case, China is the only candidate which the appellants have put forward. There may be others, but the court is not required to carry out its own independent search, and such other jurisdictions as might exist in theory may not be remotely convenient. 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. In sharp contrast, we have decided, for the reasons set out above, that the English court does have such a jurisdiction, even in the absence of consent by the parties, and it has of course exercised that jurisdiction in the Unwired case. Directions have been given in the Conversant case (subject to the outcome of this appeal) for it to be done again. Furthermore, against the speculative possibility that the Chinese courts might accept jurisdiction to settle a global FRAND licence by consent, there is the judge’s finding that Conversant had acted reasonably in refusing to give its consent, for reasons connected with the conditions which the appellants sought to impose, a conclusion which was not met with any persuasive challenge in this court.”

“At the forefront of the defendants’ arguments is the “China-centric” nature of their businesses. In the case of the Huawei Defendants, China accounts for 56% of the Huawei group’s worldwide sales on which royalties are claimed by Conversant. Moreover, since China is the place of manufacture of the alleged infringements, Conversant relies on its Chinese patents to claim royalties on a further share (some 19%) of global sales made in countries where Conversant has no patents. Therefore, if the Chinese patents are not infringed, or are invalid, then (according to the Huawei Defendants) some 75% of the worldwide royalty claim would fall away. By contrast, the United Kingdom accounts for only 1% of the worldwide sales on which royalties are claimed. In the case of the ZTE Defendants, the manufacture of mobile phones takes place in China and 60% of the ZTE group’s operating revenue was from China in the first six months of 2017. By contrast, the ZTE group does very little business in the UK with only 0.07% of turnover being generated in the UK.”

“72. The defendants relied upon several other factors, which they submitted were objective connections with the case to China. It was contended that: (i) Huawei China and ZTE China are Chinese companies and Conversant is a Luxembourg company with no connection with the UK. Huawei UK and ZTE UK are amongst many local subsidiaries whose involvement is said to be wholly peripheral; (ii) the defendants wish to call witnesses of fact and expert witnesses whose language is Chinese; (iii) in relation to validity, the commercial importance of the Chinese patents to the royalty claim means that China is the more appropriate forum than England. China has specialist patentability courts that can better and more accurately decide whether the key Chinese patents are valid than the English court. Furthermore, it is more democratic and legitimate that disputes concerning patent validity, and thus the existence of monopolies affecting a given territorial population and the price that it pays, should be made in the country whose patents are centrally in issue; (iv) in relation to patent essentiality and infringement, the Chinese infringement court can liaise with and respond to the Chinese validity court in a better more responsive manner than the English court could do, and any conflicts arising between validity and infringement determinations can ultimately be resolved on appeal in a common Supreme Court; (v) China is more appropriate than England by reference to the place of the tort as the place of manufacture and the place where most of the allegedly infringing sales were made; (vi) in relation to language, the Chinese courts are more appropriate than the English courts because the Chinese patents are in the Chinese language, and there is a Chinese version of the standards to which reference can be made. There may also be Chinese language transactions or material which are said to be comparable or have a bearing on essentiality; (vii) if the global FRAND determination takes place in China, the costs are expected to be about £200,000 per side rather than several million pounds which will be required for litigation in the United Kingdom; (viii) Chinese law is more central than English law to this dispute and that is so in a developing and controversial area of law. Chinese law governs the validity of the patents and their infringement, as well as the party’s negotiations and any good faith and FRAND obligations towards each other, in relation to the Chinese patents. The parties’ negotiations took place in China; (ix) insofar as ETSI obligations are relevant, they are governed by French law which is not a factor which points in favour of England; (x) the case is already underway in China and the argument for the first validity challenge will be heard in March 2018; (xi) when Conversant first tried to enforce its patent portfolio against other market participants it did so in France and the United States, and not in the UK. 73. There is no dispute that, in relation to the Chinese patents, validity and infringement will be determined in China. Many of the factors relied upon by the defendants are addressed to that proposition, which is common ground. This does not mean that China is the natural forum for a case which concerns allegations of infringement of UK patents, and for relief in terms of a global FRAND licence. In my judgment, it plainly is not the natural forum. 74. As to the defendants’ suggestion that they wish to call Chinese witnesses of fact, they are entitled to do so, but there will be little scope for evidence of fact in the technical trials (where product and process descriptions will be expected) or in a FRAND hearing. As to expert evidence, the Huawei Defendants relied upon English-speaking experts in the Unwired Planet FRAND trial. If the defendants wish to rely upon Chinese experts, they are entitled to do so, but it does not follow that the UK is other than the natural forum for this dispute. As to legal costs, I do not accept that the comparison relied on by the defendants is a connecting factor to China. In any event the comparison is flawed as it assumes that this FRAND trial will require the same time and costs as the Unwired Planet trial. Unwired Planet established the relevant principles and if they are upheld on appeal then subsequent cases will be very significantly shorter. In addition, the defendants’ alleged concerns about legal costs sit uneasily with suggestions that they wish to pursue patent by patent challenges in numerous different jurisdictions.”

“53. OPPO rely upon seven factors as connecting the dispute more closely with Chongqing than England. The first, sixth and seventh factors can be taken together. The first is that the Chongqing court is an available forum. This is not a connecting factor, however, but a pre-condition for the question as to which forum is appropriate to arise. The sixth factor is that the Chongqing court is already seised of the dispute. This does no more than confirm its availability as a forum, however. The seventh factor is the risk of irreconcilable judgments. This simply arises from the fact that, after the commencement of this claim, OPPO brought duplicative proceedings in the alternative forum. It does not show that the alternative forum is the appropriate forum. 54. The second factor is that OPPO are based in the PRC whereas Nokia are Finnish. This ignores the fact that two of the Defendants are English. In any event, the domicile of corporate parties is of little weight as a connecting factor (the location of witnesses and documents may be of more weight, but OPPO do not rely upon those factors). 55. Counsel for OPPO placed most weight on the third, fourth and fifth factors, which again can be taken together. These are that most of the devices covered by the dispute are manufactured in the PRC and a significant quantity in Chongqing; the majority of the devices are sold in the PRC, India and Indonesia, with Europe accounting for less than 5% of global sales and the UK less than 0.5%; and the main source of revenue from the putative licence will be the PRC. I am not persuaded that these factors connect the dispute with Chongqing rather than England, however. On OPPO’s own characterisation of the dispute, it is over the terms of a global FRAND licence, and in particular the applicable royalty rate(s). The key factor in the assessment will be the value of a global licence of Nokia’s SEP portfolio (taking into account the value of a cross-licence of OPPO’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.”

“There is, as it seems to me, no reason to doubt that it is only in rare and compelling cases that it will be in the interests of justice to grant a stay on case management grounds in order to await the outcome of proceedings abroad. After all, the usual function of a court is to decide cases and not to decline to do so, and access to justice is a fundamental principle under both the common law and article 6 ECHR. The court will therefore need a powerful reason to depart from its usual course and such cases will by their nature be exceptional. In my judgment all of the guidance in the cases which I have cited is valuable and instructive, but the single test remains whether in the particular circumstances it is in the interests of justice for a case management stay to be granted. There is not a separate test in “parallel proceedings” cases. Rather, considerations such as the existence of an exclusive English jurisdiction clause and the danger of circumventing a statutory scheme for the allocation of jurisdiction (such as the Judgments Regulation) will be weighty and often decisive factors pointing to where the interests of justice lie.”

“I can also see no basis for a case management stay, so as to allow the patent issues to be determined up to but not including the grant of an injunction. Such a stay would only work if there were some proceedings on foot elsewhere which will result in an adjudication on the offers made by the parties and determine the terms of a global FRAND licence, or at least some licence which would extend to the UK. At present the proceedings in China only seek a FRAND determination in respect of the Chinese patents. A FRAND licence under the Chinese patents determined by the Chinese courts would not clear away the obstacles to the enforcement of the UK patents or provide Huawei with an answer to the claim for infringement of the UK SEPs. The age of the Conversant Portfolio is also a factor which weighs against the grant of such a stay.”

“a. Where the court gives permission to serve a claim form out of the jurisdiction, it also has power, by reason of CPR r.6.37(5)(b)(i) and r.6.15(1), to make an order permitting service by an alternative method or at an alternative address (Celgard [2020] FSR 37 at [115] and GHS [2021] EWHC 488 (Ch) at [10]). b. Such an order can only be made if the court is satisfied that there is “a good reason”

“154. Where a patentee sells a patented product, then, absent an agreement to the contrary, the purchaser has the right to dispose of the product. If the sale is abroad, the purchaser’s rights extend to importing the product into the UK and selling it here. This was established by the well-known case of Betts v Willmott (1870–71) LR 6 Ch App 239. In that case Betts owned both English and French patents for the same invention. He claimed that his English patent had been infringed by Willmott. It appeared that the infringing articles had been manufactured by a factory owned by Betts in France (or, at least, Betts could not prove that this was not the case). Betts argued that, if he sold a patented article in France, it was for the French market and that did not justify a person buying that article in France and importing it into England. Lord Hatherley L.C. held that in these circumstances the use of the invention in England had been authorised by Betts. As he said in a much-cited passage at p.245: “But where a man carries on the two manufactories himself, and himself disposes of the article abroad, unless it can be shewn, not that there is some clear injunction to his agents, but that there is some clear communication to the party to whom the article is sold, I apprehend that, inasmuch as he has the right of vending the goods in France or Belgium or England, or in any other quarter of the globe, he transfers with the goods necessarily the license to use them wherever the purchaser pleases. When a man has purchased an article he expects to have the control of it, and there must be some clear and explicit agreement to the contrary to justify the vendor in saying that he has not given the purchaser his license to sell the article, or to use it wherever he pleases as against himself.” 155. As Lord Hoffmann pointed out in United Wire Ltd v Screen Repair Services (Scotland) Ltd [2001] R.P.C. 24, [2001] F.S.R. 24, at [68]–[69], this reasoning amounts to saying that the patentee has impliedly licensed the acts complained of, but an alternative explanation adopted by some other legal systems is that of exhaustion of rights. As Lord Hoffman noted: “The difference in the two theories is that an implied licence may be excluded by express contrary agreement or made subject to conditions while the exhaustion doctrine leaves no patent rights to be enforced.” 156. As a result of this distinction, the patentee may exclude such an implied licence by expressly limiting the rights granted to the purchaser. To be effective, however, this limitation must be notified to subsequent purchasers of the goods. As Jacob J. stated in Roussel Uclaf SA v Hockley International Ltd [1996] R.P.C. 441 at p.443: “It is the law that where the patentee supplies his product and at the time of the supply informs the person supplied (normally via the contract) that there are limitations as to what may be done with the product supplied then, provided those terms are brought home first to the person originally supplied and, second, to subsequent dealers in the product, no licence to carry out or do any act outside the terms of the licence runs with the goods. If no limited licence is imposed on them at the time of the first supply no amount of notice thereafter either to the original supplyee (if that is the appropriate word) or persons who derive title from him can turn the general licence into a limited licence.” 157. Where a patented product has been sold abroad by a licensee of the patentee, rather than the patentee himself, the position is different. In Societe´ Anonyme des Manufactures de Glaces v Tilghman’s Patent Sand Blast Company (1883) 25 ChD 1 the defendant owned patents in England and Belgium. The defendant granted the plaintiff a licence to manufacture the patented product in Belgium. The plaintiff sold products made in Belgium in England. The plaintiff brought a claim for threats out of circulars issued by the defendant. The Court of Appeal held that a licence under a Belgian patent was not the same thing as a licence under the English patent and thus did not prevent the patentee from exercising its right to prevent import and sale in England. Cotton L.J. distinguished Betts v Willmott at p.9 as follows: “In my opinion the license to use a patented invention under a foreign patent stands in a very different position from the sale of an article manufactured under either a foreign or an English patent. When an article is sold without any restriction on the buyer, whether it is manufactured under one or the other patent, that, in my opinion, as against the vendor gives the purchaser an absolute right to deal with that which he so buys in any way he thinks fit, and of course that includes selling in any country where there is a patent in the possession of and owned by the vendor. Here, as is pointed out, it is simply a license to manufacture.”” “But where a man carries on the two manufactories himself, and himself disposes of the article abroad, unless it can be shewn, not that there is some clear injunction to his agents, but that there is some clear communication to the party to whom the article is sold, I apprehend that, inasmuch as he has the right of vending the goods in France or Belgium or England, or in any other quarter of the globe, he transfers with the goods necessarily the license to use them wherever the purchaser pleases. When a man has purchased an article he expects to have the control of it, and there must be some clear and explicit agreement to the contrary to justify the vendor in saying that he has not given the purchaser his license to sell the article, or to use it wherever he pleases as against himself.” “The difference in the two theories is that an implied licence may be excluded by express contrary agreement or made subject to conditions while the exhaustion doctrine leaves no patent rights to be enforced.” “It is the law that where the patentee supplies his product and at the time of the supply informs the person supplied (normally via the contract) that there are limitations as to what may be done with the product supplied then, provided those terms are brought home first to the person originally supplied and, second, to subsequent dealers in the product, no licence to carry out or do any act outside the terms of the licence runs with the goods. If no limited licence is imposed on them at the time of the first supply no amount of notice thereafter either to the original supplyee (if that is the appropriate word) or persons who derive title from him can turn the general licence into a limited licence.” “In my opinion the license to use a patented invention under a foreign patent stands in a very different position from the sale of an article manufactured under either a foreign or an English patent. When an article is sold without any restriction on the buyer, whether it is manufactured under one or the other patent, that, in my opinion, as against the vendor gives the purchaser an absolute right to deal with that which he so buys in any way he thinks fit, and of course that includes selling in any country where there is a patent in the possession of and owned by the vendor. Here, as is pointed out, it is simply a license to manufacture.””

“Although the expression "FRAND" primarily refers to a result, it has been increasingly recognised since the decision of the Court of Justice of the European Union in Case C-170/13 Huawei Technologies Co Ltd v ZTE Corp [EU:C:2015:477 ] that the FRAND obligation extends to the process by which the parties negotiate for a licence: see UPSC at [64]. What this means is that a SEP holder is required to behave consistently with its obligation to grant a licence on FRAND terms, and an implementer is required to behave consistently with its need to take a licence on FRAND terms. Thus the SEP holder should not behave in a manner which promotes hold up, and the implementer should not behave in a manner which promotes hold out. On the contrary, both parties should attempt in good faith to negotiate terms which are FRAND.”

“82. In those circumstances, I return to the question I posed in paragraph 45 above. What is the point of Panasonic pursuing the German Proceedings with all their attendant effort and expense in these circumstances? As the judge noted at [95], Panasonic is candid that its objective is to obtain injunctions in order to achieve a negotiated settlement with Xiaomi rather than await the determination of the Patents Court. What purpose is served by this given that (i) Panasonic is assured of getting FRAND terms anyway as a result of the Patents Court's decision and (ii) nothing in the English proceedings prevents the parties from negotiating an earlier settlement of their dispute? As counsel for Panasonic had to accept during the course of argument in this Court, Panasonic seeks to achieve better terms than those determined by the Patents Court. Put bluntly, Panasonic wishes to use the exclusionary power of injunctions granted by the German courts and/or the UPC to try to force Xiaomi to pay more than the English courts would order. Panasonic must think that there is some prospect of the German Proceedings achieving this, otherwise it would not be wasting a large amount of time and money on them. Contrary to Panasonic's submission, it is no answer to this that a range of terms may be FRAND, because that will be taken into account by the Patents Court in its determination. 83. The judge did not confront this question. He appears to have been diverted by Xiaomi's criticisms of the German courts' approach into addressing a different question, which is whether the German courts' approach to the FRAND defence (or that of the UPC) would force Xiaomi to accept a supra-FRAND offer from Panasonic. I am sure that the German courts do not consider that their approach forces implementers to accept supra-FRAND offers from SEP holders. But in this case Panasonic has itself invoked the jurisdiction of the English courts to determine what is FRAND on a global basis, and has undertaken to accept the determination of the Patents Court on that question. It is wholly inconsistent with that for Panasonic to try to force Xiaomi to agree to terms more favourable to Panasonic than the English courts would order by pursuing proceedings elsewhere with all the attendant cost and expense for both parties. This would be true whether the foreign proceedings were in Germany or the UPC or anywhere else in the world. In other words, the correct focus is upon Panasonic's conduct, and not upon the foreign courts' potential decisions as a result of that conduct. 84. Furthermore, Xiaomi have offered to take an interim licence with the payment of royalties to Panasonic pending the determination of the Patents Court. Any rational SEP holder in the position of Panasonic would want to be paid sooner rather than later. Thus any rational SEP holder in the position of Panasonic would positively want the implementer to enter into an interim licence. Why is Panasonic unwilling to agree to this when Xiaomi are offering to do so? Again, the judge did not ask himself this question. Panasonic's reluctance is only explicable on the basis that it is seeking to compel Xiaomi to accept terms more favourable to Panasonic than the Patents Court would order. 85. Panasonic has attempted to defuse this point with its revised Non-Enforcement Proposal, but that is not an answer to it. What this shows is that, in reality, Panasonic appreciates that there should be an interim licence rather than continued litigation in multiple jurisdictions, and that the real dispute is over the terms. Panasonic wants terms that would require Xiaomi to pay the full amount demanded by Panasonic for a licence until 2029. Not only is that manifestly unreasonable when the interim licence will only last for a few months from now, but also it would, if accepted prior to 13 September 2024, have resulted in a substantial overpayment by Xiaomi. 86. The next question is whether in these circumstances, Panasonic is acting in good faith in negotiating a licence with Xiaomi on FRAND terms as required by clause 6.1 of the ETSI IPR Policy. As the judge recognised, the fact that Panasonic may believe that it is entitled to adopt this course does not compel the conclusion that, upon an objective assessment, Panasonic is acting in good faith. In my judgment Panasonic's conduct is indefensible. As discussed above, FRAND is a process and not merely an end-point. Panasonic is not complying with its obligation to negotiate a licence with Xiaomi in good faith, and thereby avoid hold-up, but aiming to coerce Xiaomi into accepting terms more favourable to Panasonic than the Patents Court would determine to be FRAND.”

“New Damages Claim (AMPOC 2, §107). The draft 2 amendments at AMPOC 2, §107 seek to introduce a new claim for “past damages, which MediaTek say should be assessed at a portfolio rate”

“if it proceeded, likely give rise to facts as to FRAND determinations (if Huawei defended the injunction on FRAND grounds, which it can be realistically inferred it would)”

“Irrevocably and unconditionally undertake to the Court that they will not seek to rely on MediaTek’s FRAND obligations as a defence to a claim for infringement of any of MediaTek’s UK SEPs at any stage in these proceedings and, if found to infringe a valid UK SEP, will submit to an injunction and damages in respect of Huawei 4G or 5G enabled infrastructure and portable devices in the UK (including use of the same in the UK) or, if not, explain why not.”

“New licence claim: at 128A-B. A new claim is raised alleging a right to a licence over the UK patents in the Huawei portfolio and seeking declarations on that basis. This is an artificial dodge (as a way to seek to get within gateways – see below). In fact what MediaTek want and are really claiming for is a licence over the Huawei portfolio worldwide. But if narrowed this way the claim has no real prospects. Declarations must have a useful purpose (Panasonic v Xiaomi (CA) [27]). But MediaTek do not need a licence over Huawei’s UK portfolio, as Huawei has undertaken not to claim for infringement. So there is no useful purpose for a declaration so narrowed.”

“a. First, claim 6 is not a claim to the terms of a licence under the UK SEPs in the Huawei Portfolio, nor even to the UK SEPS in the Huawei and MediaTek Portfolios. It is a claim as to what the FRAND terms would be for licence as to the terms covering the whole of both Huawei and MediaTek Portfolios, worldwide. An attempt has been made to conceal this by deleting the word “worldwide” at points in AMPOC 2 but it doesn’t change the reality: AMPOC 2, §§102, 105, 109, 129. Nor is this changed by the fact that in AMPOC 2, an attempt is made at points to put the claim by reference only to a licence “for the UK Patents in the Huawei portfolio” which is said to be a “lumpsum reciprocal licence” (eg at §128B). The reality is that this claim as sought, and as pleaded overall, is about patents worldwide in both portfolios. Further the heart of this claim is about trying to prevent Huawei from seeking a licence from MediaTek at all, or from seeking a royalty bearing licence. See unamended POC at §4-5, and also AMPOC 2 §§99-100 and Lim 2, §§17-18. b. Second, there is no pleaded or any legal right to claim 6 which is coextensive with the declaration sought. Whatever the position on the supposed new claim at AMPOC 2 §128A-B as to a right to a licence to the Huawei Portfolio, allegedly enforcing Huawei’s ETSI undertaking, MediaTek has no legal claim to a right to the licence to the MediaTek portfolio, and anyway has not pleaded any such claim. Huawei’s contractual undertaking applies only to its own portfolio. In that regard: i. MediaTek has not adduced evidence as to whether Huawei’s ETSI undertakings tick the box which mean that they are “made subject to the condition that those who seek licences agree to reciprocate”, and Huawei has not had time to address what this might mean. But even assuming they do without complication, that does not impose a legal obligation on Huawei to licence the MediaTek portfolio, only a condition on MediaTek if it seeks a licence from Huawei. Further, an implementer does not have a legal obligation to give a FRAND licence or cross licence to a patentee: rather the patentee can claim for infringement and failing undertaking by the implementer to enter a FRAND licence (if there is a valid and essential SEP), can obtain an injunction: Nokia v Oppo (Meade J) [2024] RPC 1, [109], [118]. ii. No pleaded case to a legal right to the contrary is identified in AMPOC 2 §128(B). It may be that a vague plea intended to go this way is contained in the new wording in §129 which adds “in accordance with the principle of reciprocity” but what this is is not explained. There is no legal right of that kind to a licence. If some new idea later comes up, it has not been explained in evidence or at all. It is too late for such an issue to be relied on, when it would have required evidence. c. Again, MediaTek’s case here is inconsistent with its case on forum: for forum it says that its case is all about infringement of the MediaTek patents. Here it is saying that its case is “wholly or principally” about the Huawei UK patents. d. Third, since there is no legal claim, Gateway 11 is not satisfied per Vestel [70]. e. Alternatively, at most this is a claim for a declaration in the Court’s inherent jurisdiction. As such it is within Vestel [72] which left open whether such claim was within Gateway 11. The matter can be assessed freely. Standing back, as a matter of common sense and basic logic, the subject matter of this claim is clearly not “wholly or principally” about property in England, but is about contractual claims as to property worldwide (and in particular in China) and centrally about whether MediaTek are able not to pay Huawei for a licence. If, contrary to the above, there is anything in Vestel [71] or Alcatel inconsistent with the above, Huawei would also respectfully submit that is wrong. f. A further problem for MediaTek is that if its claim were (artificially) reinterpreted as solely a licence to Huawei’s UK SEPs (to fit within Vestel), it would have no real prospects of success, as already explained under §58 above: the claim would have no utility because MediaTek is not infringing in the UK save at most as to the minimal R&D/testing/ verification, which Huawei is content to undertake not to sue for infringement in respect of, if jurisdiction fails.”

“55. These points, however, only take Amazon so far. It is not enough to show that a pool licence, covering patents owned by several proprietors, is capable of being RAND. In order to survive the strike out application, Amazon must show that it has a sufficiently arguable case that, in order to be RAND in the circumstances of this case, it is necessary that a licence granted by Nokia would include an option to a right to use the Alcatel NEPs. It seeks to do so on the basis that, in view of the likelihood that Nokia grants licences to others on such a basis, it would be discriminatory not to offer such a licence to Amazon. 56. Nokia and Alcatel contend, first, that Amazon’s case is legally flawed, because the RAND obligation relates to, and only to, SEPs. The obligation requires Nokia to offer a licence to SEPs on terms that are non-discriminatory. The “non-discriminatory” requirement focuses on the consideration demanded by Nokia in return for the licence of the SEPs. The fact (if it be the case) that Nokia offers a licence to others to a portfolio of patents, including SEPs and NEPs cannot require it (pursuant to the non-discriminatory requirement) to offer such a portfolio to Amazon. 57. Nokia and Alcatel accept that the fact that licences offered elsewhere included NEPs would be a relevant factor, but only to the extent of determining whether the consideration required for the licence in respect of the SEPs was discriminatory. If, for example, Nokia offered to others a portfolio of SEPs and NEPs for an overall price of £x, and offered a portfolio of only the same SEPs to Amazon for an overall price of £x, then it might be said that this was discriminatory because part of the consideration payable by others was referrable to the NEPs, so that they were being required to pay less for the SEPs. The discriminatory aspect related, however, to the consideration, not to the fact that the right to use SEPs and NEPs was offered to others. 58. Powerful as this argument is, I am not prepared to conclude, at this strike-out stage, that discrimination could not also be established by reference to the content of the package of rights offered to other licensees. I accept that there are arguably logistical and other benefits, beyond purely financial benefits, in an implementer having a licence (or right to use) related NEPs as part of a portfolio licence. 59. A similar argument was accepted by Richards J in Lenovo Group Limited v Interdigital Technology Corporation [2024] EWHC 1036 (Pat). In that case, four companies in the InterDigital group (referred to in the judgment as “InterDigital”) held a portfolio of patents, including SEPs declared to ETSI as being essential to 2G-5G cellular standards, SEPs declared to other SSOs, and NEPs. Lenovo brought proceedings for declarations of invalidity, non-essentiality and non-infringement of two specific UK SEPs owned by InterDigital. Lenovo claimed that InterDigital’s FRAND commitment required it to offer a global portfolio licence, extending beyond the SEPs. 60. Lenovo had obtained permission to serve its claim out of the jurisdiction in an order made on a without notice basis, and InterDigital applied to set aside that order. The only matter in issue was whether Lenovo’s claim passed the merits test: was there a serious issue to be tried? 61. Lenovo’s argument was as follows: (1) InterDigital had entered into portfolio licences with others; (2) the fact that it had done so, and Lenovo’s own experience of InterDigital’s practices, was suggestive of some wider pattern of behaviour under which licences were not limited to Cellular SEPs, but also dealt with other aspects of InterDigital’s wider patent portfolio; (3) given that pattern of behaviour, it would be discriminatory for InterDigital not to offer a similar deal to Lenovo; (4) accordingly, a portfolio licence would be FRAND. 62. Richards J accepted that this was sufficiently arguable to pass the merits test. He considered that Lenovo’s current pleading did not sufficiently “join the dots” because they did not say in terms that if InterDigital did not offer Lenovo a portfolio licence it would be offering Lenovo a different deal from others which, being discriminatory, could not be FRAND. He nevertheless found that the argument was sufficiently set out in the evidence, and he gave Lenovo the opportunity to join the dots in its pleading to reflect the case that was set out in the evidence.”

“40. I do not, therefore, accept InterDigital's argument that unless Lenovo can show a good arguable case that only a Portfolio Licence is FRAND, its claim for a Portfolio Licence fails the merits test. Nor do I consider that it is fatal to Lenovo's claim that it continues to assert even in the April Draft POC that the "best comparable" is the Cellular PLA which is a licence of Cellular SEPS only. Certainly, it will have to explain a possible inconsistency, but it is perfectly possible that the Cellular PLA is a good comparable in terms of rate, but other licences are good comparables in terms of coverage and whether or not a Portfolio Licence would be FRAND. 41. The next strand of InterDigital's argument is that it would be extremely surprising that by declaring essential a single SEP to ETSI either (i), a patentee suddenly becomes obliged to grant a licence over its whole patent portfolio or (ii) a particular implementer becomes immediately licensed to the patentee's whole patent portfolio, including patents unconnected with ETSI. 42. InterDigital amplifies this point by saying it would be surprising indeed for a SEP-owner to become under an obligation to license all patents when it may well have specifically told ETSI that it was not prepared to license particular patents pursuant to the ETSI IPR Policy. However, these objections, in my judgment mischaracterise Lenovo's case. Lenovo does not argue that an owner of a single SEP necessarily immediately has to license its whole portfolio. Nor is it said that it is inevitable that a SEP-owner must license patents that it would otherwise be unwilling to license. Lenovo's point is based squarely on InterDigital's specific factual position and assertions as to InterDigital's licensing practices generally. 43. InterDigital says that Lenovo seeks a licence of Other SEPs and NEPs at no cost and that such a bold claim self-evidently fails the merits test. I do not agree as this argument involves a misreading of the pleaded case. Paragraph 66 of the April Draft POC indicates to me that Lenovo seeks to pay the going rate for a licence that deals with the whole of InterDigital's portfolio. 44. InterDigital complains that the evidence advanced to underpin the pattern of behaviour that is asserted is thin. It says that Lenovo has not substantiated a point made in submissions to the effect that InterDigital has a "universal" or "pervasive" practice of offering Portfolio Licences. InterDigital also accuses Lenovo of cherry-picking by referring to what is publicly known about InterDigital's licence with Xiaomi, without saying anything about other licences that came into Lenovo's possession following disclosure in the Earlier English Proceedings. Lenovo suggests that this is not just explicable because of concerns about CRP 31.22 or confidentiality, given Lenovo's previous breach of those requirements. 45. The particulars given are certainly not as full as they might be following disclosure, but that is because, to a large extent, they have been compiled from publicly available information. It is appropriate for me to have an eye on the evidence that will ultimately be available at trial. It is highly likely that InterDigital will be required to give disclosure of comparable licences with other counterparties. If a good proportion of those contain Portfolio Licences, then Lenovo may have a runnable case. If relatively few do, and Lenovo has been cherry-picking, InterDigital may well apply to strike out Lenovo's claim for a Portfolio Licence. Given the likely availability of evidence such as this, it is not, in my judgment, appropriate to say at this stage that the claim for a Portfolio Licence fails the merits test. It is too early to deny Lenovo the opportunity to prove at trial, by reference to the full suite of evidence, that a Portfolio Licence would be FRAND.”

“It is important to note that, in this case, it is common ground between the parties that a FRAND licence of Nokia’s portfolio of SEPs, including the UK Patents, is a global licence. OPPO do not suggest that a UK only-licence would be FRAND. 25 It is also important to note that it does not appear to be disputed by OPPO that a FRAND licence of Nokia’s portfolio of SEPs will include a cross-licence of OPPO’s SEP portfolio. This is because Nokia exercised the option available them under clause 6.1 of the ETSI IPR Policy when making their declarations of essentiality of making their undertakings to grant licences on FRAND terms conditional upon reciprocal cross-licences on FRAND terms being granted by any implementer which has also made a declaration of essentiality.”

“89. This claim should be characterised as about the FRANDness of Huawei’s global licensing conduct, and the determination of FRAND terms for global licences, centrally for the Huawei portfolio. This is the “fundamental focus of the litigation”

“a. Conversant v Huawei (CA): the case was solely about Conversant’s portfolio not Huawei’s; and there was no issue as to the relevant infringements being centred elsewhere, nor about the value of a licence from Huawei being centred elsewhere. The Court of Appeal accepted [106] that if the claim were best viewed as about “a unitary global right” and one was considering “where the preponderance of the infringement occurred”, and that if “the right in question would have been the same whether the action was brought in England or [abroad]”, then characterisation would have been different. See also [120] referring to artificial anchoring. b. Nokia v Oppo (CA): the case was to enforce Nokia’s portfolio [24], and not about getting at Oppo’s portfolio; there was no issue as to centre of the relevant infringements by both sides being in China; it was a case as to two parties in different corners of the globe; it was undoubted Nokia would be the net payee [55]; and there was no issue as to the infringement by Oppo in the UK being commercially inconsequential. The FRAND obligation was raised only as a defence to infringement, not as an independent claim by Nokia seeking to get at the Oppo portfolio [44]. This was why the Court of Appeal could view the claim as about the vindication of Nokia’s rights to its portfolio [43]. c. Lenovo v Ericsson: Richards J saw the case before him as about the vindication of the Lenovo patents, but in a case where (a) he did not think that it was sufficiently clear that Ericsson would be the net payer; (b) it was conceded there would be cross licensing; (c) the facts were not focussed on a preponderance of infringement and activity in another country or value – on both sides – outside where the UK patents existed. So Lenovo v Ericsson is distinguishable. If any of its reasoning might suggest by a side wind that this claim should be characterised as about infringement, as necessary we will say that any such reasoning should not be followed here.”

“I do not, however, accept Ericsson’s submission that these references determine the question of the correct characterisation. Rather, I agree with Lenovo that what Ms Dagg is articulating is her perception of the core commercial issue between the parties. However, the focus on the characterisation question is on the legal nature of the “case” because it feeds into the question of which courts are the appropriate forum in which to try that “case”

“I am instructed by Mr Zhang that the principal individuals that were negotiating on behalf of Huawei China against MediaTek Inc were Zhiyong Fan, Hongfei Shen and Bin Wang. These individuals are all Chinese nationals who speak Chinese as their first language. Mr Shen is not fluent in English and has only a basic English speaking ability. Although Mr Fan and Mr Wang are both able to speak English to a proficient level, they are much more comfortable speaking and expressing their views in their mother tongue. Furthermore, the use of Chinese has been particularly important to allow Mr Shen to consider and weigh-in during negotiations in real-time, if necessary, since he has difficulties in fully understanding and speaking English. For this reason, several times during the negotiation process, Huawei China stressed that it was important to use Chinese to avoid any potential misunderstandings that can result from using a second language. In particular, Huawei China specifically informed MediaTek Inc that where communications from MediaTek Inc were written in both Chinese and English, the English portions of the communication would not be considered by Huawei China. Huawei China always writes its communications to MediaTek in Chinese, and all meetings between MediaTek Inc and Huawei China are conducted in Chinese.”

“a. The considerations relied on above in relation to forum apply here. The Chinese courts are more closely connected to the FRAND issues and are deciding them or at least the bulk of them, and their decisions are likely to resolve the matter, or lead to a global licence that would be agreed, in which case the English FRAND determinations would become unnecessary. Thus, this is a case where the outcome of the foreign proceedings “will or may” render the English proceedings unnecessary: see Athena at [49]. b. As already discussed, the Chinese decisions will be res judicata or anyway even outside strict res judicata (eg if there was no res judicata arising from a first instance decision) it would likely be a Henderson v Henderson abuse for MediaTek to seek to relitigate points decided in China on litigation it had itself commenced. This would cover FRAND conduct and also rates, and not least the key issues relating to whether Huawei can seek a royalty bearing licence in the way they do. And in any event the decisions of the Chinese courts would be highly persuasive. The English courts have made clear that they will factor in the determinations of foreign courts into rate setting: Conversant v Huawei (Henry Carr J [18]. Thus, this is not a case where the Chinese decision would be irrelevant. c. There would be costly and unsatisfactory duplication if FRAND were to run in parallel in the two countries. See NTT v Goodall at [111]. d. If and to the extent that the Chinese courts do not resolve everything, then it will be appropriate to take stock then and see what remains to be resolved. The dispute might well settle at that point. See NTT v Goodall at [109]. e. The parties’ agreement to Chinese courts supervised mediation is a strong factor in favour of a stay, as is MediaTek putting before the Chinese courts a proposed interim licence which if agreed would terminate the English litigation. f. Thus, by far the best course is to stay the English proceedings at least so far as regards all the FRAND issues in the case, pending resolution in China. g. The Court will wish to know what is meant by “resolution in China” given the multiple litigation there. In this regard Professor Wang’s evidence as to the steps the Chinese courts take to co-ordinate with each other is relevant (see Wang 1, §§35-47). Thus, as she explains, the Chinese courts are very likely to regard the decisions of each other as dispositive as to FRAND (§50). Thus, it may well be that it is the decisions of the main lead litigation, such as the Shenzhen claims and/or the Beijing anti-trust claim, and appeals from those, which are effectively dispositive of all the Chinese claims: see Wang 1, §§45-57, 50, 102-103. For now the appropriate order is simply to stay matters generally as a matter of case management, the intention being that this is pending the effective resolution of the issues in China, with a liberty to apply which could be used once the Chinese proceedings have sufficiently unfolded. h. This stay should apply to anything that is FRAND or will give rise to FRAND. i. So far as concerns claims 3 (injunctions) and 10 (damages), it should also necessarily lead to a stay of those as well, because the FRAND issues those are likely to give rise to (as discussed at §115 above) should be determined after any UK FRAND determination, and thus, in this case, after the Chinese FRAND determination. It would make no sense for these to be determined in parallel – it would lead, for example, to a risk of conflicting decisions on the FRAND issues in play in China, and the FRAND issues in play on the UK portfolio damages claim. The position would be a fortiori if MediaTek persist in seeking to maintain the possibility that the damages claim is global. j. MediaTek might argue that at least the pleadings or early stages of some or all of these claims should proceed. It is submitted that this would be wasteful and likely to cause problems. What FRAND issues need to be resolved, if any at all, will not be clear until the Chinese litigation has concluded. Proceeding in parallel would also cause all the classic problems that arise in duplicate litigation with steps in one country affecting each other.”

“The First Defendant in the abovementioned proceedings (“Huawei China”) hereby undertakes that it will not enforce its UK designated patents within the Huawei Portfolio against MediaTek in respect of MediaTek’s testing and verification activities in the UK, as referred to in (i) paragraphs 27 and 33-35 of the First Witness Statement of Pascal Lemasson, (ii) paragraphs 7-13 of the Second Witness Statement of Pascal Lemasson, and (iii) paragraphs 24-29 of the draft Amended Particulars of Claim provided to our firm on 8 December 2024. This undertaking also applies in respect of any claim that could be made in the UK against the Claimants with regards to procuring and/or acting pursuant to a common design (or being liable as joint tortfeasors in any way) in relation to infringement of its UK designated patents within the Huawei Portfolio carried out through acts by third parties. For the avoidance of doubt, this undertaking is not, and is not intended to be, a licence to the Claimants in respect of any patents within the Huawei Portfolio. This undertaking shall not, however, be interpreted as a waiver of any claims which Huawei may have against the Claimants in respect of any upstream acts carried out by the Claimants outside the UK (such as the supply of chipsets to any OEM customers); nor as a grant of any licence or covenant not to sue to any third party. Huawei China reserves the right to take action against any third party in respect of their acts in the UK or elsewhere.”

“MediaTek’s case before the judge was that service would take around a year and a half.”

“Mr Lim said service will take around a year and half.”

“MediaTek has been clear that it does not pursue the Challenged Patent Claim against D2. As D2 does not own any patent in the Huawei Portfolio, there is no cause of action against D2 arising out of any challenges to those patents. However, D2 continues to infringe UK SEPs in the MediaTek portfolio and has not forgone any reliance on the FRAND defence. As such the FRAND claims are correctly pursued against D2. It is clear from the rest of the draft Judgment that MediaTek is entitled to pursue the FRAND claims on the Asserted Patents against D2. The Application was therefore rightly dismissed.”

“The very significant period of delay of around a year and a half that would ensue in these proceedings, when viewed in the light of the additional matters explained below, constitutes exceptional circumstances that justify alternative service in the present matter.”