Mark Chacksfield KC appeared for the defendants (“InterDigital”) in two applications, heard together, arising from ongoing FRAND litigation with the claimants (“Lenovo”). Lenovo sought a declaration that its proposed terms of an interim licence of various of InterDigital’s 3G -5G standard-essential patents were FRAND (the “Interim Licence Declaration”). InterDigital applied for a stay of proceedings.
Following a judgment of Mellor J in 2023, Lenovo entered into a global licence with InterDigital in relation to its cellular SEPs. The licence expired in December 2023 and the parties began negotiating a new licence. In September 2023, InterDigital brought infringement proceedings against Lenovo in Germany, which Lenovo contended are for the purpose of forcing it to agree supra-FRAND licence rates. Lenovo argued the Interim Licence Declarations would help it avoid injunctive relief in Germany. Similar applications have been made by other implementers in recent months, and this is considered a novel area of FRAND jurisprudence.
Richards J refused to make the Interim Licence Declaration and refused InterDigital’s application for a stay. He held, contrary to Lenovo’s submission, that the appropriate test as to whether to make an interim declaration of the kind sought was not the American Cyanamid threshold of a ‘serious issue to be tried’, but the higher burden of a ‘high degree of assurance’ that the applicant was entitled to the declaration. On that basis, he was not satisfied on the evidence before him that Lenovo’s contended rates were FRAND. Further, the substantial purpose of Lenovo’s application was to influence foreign proceedings, which was a strong factor weighing against making the Interim Licence Declaration.