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Never mind the technicalities: Chancery Division lists expedited FRAND trial

08/07/24

In the patent licensing litigation between Lenovo and Ericsson, the Chancery Division (Jonathan Richards J) has handed down an important judgment ([2024] EWHC 1734 (Pat)) finding that it is not necessary for a party seeking a determination of FRAND licence terms first to establish that it has a valid and infringed UK standard-essential patent (“SEP”).

Since the Supreme Court’s 2020 judgment in Unwired Planet, it has been established that the English court has jurisdiction to set global fair, reasonable and non-discriminatory (“FRAND”) licensing terms for SEP portfolios as an alternative to granting an injunction in favour of the patent-holder. In order for such a “FRAND injunction” to be available, the patent-holder must have at least one valid and infringed UK SEP. It is settled law that there is no entitlement to a “freestanding” determination of FRAND terms in the absence of an underlying cause of action such as a patent claim.

Reflecting this framework, the Courts have previously held that, absent contrary agreement, the “technical” trial as to whether there is a valid and infringed patent in respect of which an injunction could be granted should precede the FRAND trial. In the litigation between Lenovo and Ericsson, however, the Judge considered that the FRAND trial should be heard on an expedited basis (in April and May 2025) without the technical trial also being expedited to be heard ahead of the FRAND trial.

The Judge considered that the question of the order in which the trials should take place was a matter of case management discretion, as opposed to legal principle. The Court had jurisdiction over the whole proceedings, including the claim for a FRAND determination, on the basis of the parties’ contractual relationship. Whether the Court should make such a determination was a question for submissions at the FRAND trial, but did not require the technical trial to be listed first.

The judgment is available here.

Sarah Abram KC appeared for Ericsson, instructed by Taylor Wessing LLP and Pinsent Masons LLP.

Sarah Ford KC has also appeared for Ericsson in a related injunction application: see news item here.