Isabel Jamal appeared as junior counsel for the Claimant (“Panasonic”) in an application for declaratory relief made by the First to Fourth Defendants (“Xiaomi”) in ongoing FRAND proceedings. Xiaomi sought declarations that Panasonic’s FRAND commitment required it to offer Xiaomi an interim licence to various of Panasonic’s patents declared essential to the 3G and 4G standards (“SEPs”) on the terms proposed by Xiaomi. .
In November 2023, the parties gave reciprocal undertakings to enter into a FRAND licence, on terms to be set by the Court following a trial in October 2024. Simultaneously, Xiaomi sought an undertaking from Panasonic not to enforce injunctive relief in parallel German and UPC proceedings. Panasonic refused, as it considered it was legitimate to keep open the option of seeking injunctive relief as a means of securing an earlier commercial settlement of a global licence between the parties. In response, Xiaomi made the interim licence application. If entered into by Panasonic, an interim licence would have foreclosed the threat of an injunction in the foreign proceedings.
Leech J refused to make the declarations sought by Xiaomi. He held that there was no obligation on a SEP holder under the ETSI IPR Policy to offer an interim FRAND licence. Moreover, he did not accept that, by enforcing its legal rights before a court of competent jurisdiction, Panasonic was frustrating its FRAND commitment, contrary to its duty under French law to perform the FRAND commitment in good faith. He rejected Xiaomi’s submission that this was a strategy to secure supra-FRAND licence rates for Panasonic. Nor, the judge held, would a declaration serve any useful purpose. Instead, he held the only real purpose of making the interim licence declarations would be to influence the outcome of the German Proceedings, which would offend the principle of comity.