Koninklijke Philips NV v Guangdong Oppo Mobile Telecommunications Corp, Ltd & Ors [2022] EWHC 1703 (Pat) (01 July 2022)

Parties

Procedural Posture

Patents/intellectual Property SEP FRAND Action / Application for Continuation of Anti Suit Injunction (return Date Hearing)

Legal Issues

1. 1 Whether there is a sufficient and imminent threat justifying a quia timet anti-suit injunction against the defendants seeking anti-suit relief in the PRC courts to restrain UK patent proceedings
2. 2 Whether there was material non-disclosure or lack of full and frank disclosure at the ex parte hearing justifying setting aside the injunction
3. 3 Whether the scope of the injunction should be limited (removal of 'interfere' and restriction to PRC)

Ratio Decidendi

There is a sufficiently imminent threat that the defendants would seek anti-suit relief in the PRC courts to restrain the UK proceedings, justifying quia timet relief. The seeking of such relief would be vexatious, oppressive, and unconscionable as it would prevent the UK court from determining UK patent rights. The scope of the injunction should be limited to the PRC and should not include the word 'interfere' to avoid restricting legitimate parallel proceedings or enforcement of PRC judgments. There was no material lack of full and frank disclosure by the claimant. Contractual undertakings are inadequate; undertakings to the court or an injunction are appropriate.

Court Disposition

Anti-suit injunction continued (with modifications); permission to appeal refused; no order as to costs.

Orders

• Anti-suit injunction continued against the defendants restraining them from seeking relief in the PRC courts that would restrain, prevent, require withdrawal of, or penalise the claimant for pursuing the UK action, with the word 'interfere' removed and scope limited to the PRC.
• Defendants may provide undertakings to the court in lieu of injunction, provided such undertakings are not merely contractual and do not prejudice jurisdictional challenges.