InterDigital loses SEP injunction bid against Lenovo
The English High Court has dismissed a bid from InterDigital to issue an injunction against computer giant Lenovo for infringing its 4G standard-essential patent (SEP).
Judge Hacon decided not to grant an injunction “at this stage”, as questions remain as to whether Lenovo’s “vague commitment” to FRAND licensing terms to be determined at a later trial should disqualify it from the ban.
In a ruling handed down Thursday, December 16, Hacon said: “This is a matter which can only be decided after cross-examination of the experts and full argument.”
InterDigital won the first round of the SEP dispute in July when the High Court ruled that its patent was valid and infringed by Lenovo’s use of long-term evolution (LTE) technology in its devices.
Lenovo rejected the infringement allegations and claimed that the patent was invalid. It also said that InterDigital had not presented a licence offer on fair, reasonable and non-discriminatory (FRAND) terms.
InterDigital then pledged that it was prepared to grant “irrevocable licenses under a portfolio of patents” on FRAND terms to Lenovo and a trial was set for January 2022 to settle terms of a licence.
But Lenovo has declined to undertake the global licence on the terms to be settled in the court, arguing that it should not be “forced” to commit to take a licence in advance of the FRAND trial which “may or may not” give effect to decisions in parallel proceedings in the US and China.
Lenovo claimed it “not entitled to rely” on InterDigital's licence following Justice Meade’s ruling in Optis Cellular Technology v Apple Retail.
In this case, Optis sought an injunction to restrain Apple from infringing its SEP cellular patent in advance of a trial to determine FRAND terms. Meade ruled that Apple was not entitled to rely on Optis’ FRAND undertaking and that Optis should not be allowed an unqualified injunction.
As a result, InterDigital sought a declaration and injunction against Lenovo for refusing to undertake the licence subject to the court’s FRAND determination. InterDigital looked to block Lenovo from infringing its European Patent number 2,485,558. The proposed injunction would cease when Lenovo enters into a licence on FRAND terms.
Lenovo submitted that the question of whether the injunction should be granted “cannot be decided now” and instead should be determined after judgment in the FRAND trial, as this was the case in Optis.
It added that the grant of an injunction sought issues “not considered in Optis” and required full cross-examination considering French, Chinese and US law to resolve.
While Judge Hacon agreed that the proceedings were close to those in Optis, in which there was parallel litigation happening in US courts, he said the court in that case “made no ruling that the obligation was hard-edged in the sense of requiring the implementer invariably to commit to FRAND terms”.
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