Alcatel Lucent SAS v Amazon Digital UK Ltd & Ors [2024] EWHC 2339 (Pat) (13 September 2024)

Alcatel Lucent SAS v Amazon Digital UK Ltd & Ors [2024] EWHC 2339 (Pat) (13 September 2024)

The confidentiality undertaking should not extend to future negotiations with the disclosing party (Nokia) or require Nokia's consent for negotiations with third parties. The restriction should, however, apply for two years after access to the confidential materials, even if the recipient leaves Amazon, due to lack of evidence about Amazon's organisation and the risk of inadvertent misuse.

Citation
[2024] EWHC 2339 (Pat)
Parties
Claimant: Alcatel Lucent SAS; Defendant/part 20 Claimant: Amazon Digital UK Limited; Defendant/part 20 Claimant: Amazon Europe Core SARL; Defendant/part 20 Claimant: Amazon EU SARL; Defendant/part 20 Claimant: Amazon.com, Inc; Defendant/part 20 Claimant: Amazon Media EU SARL; Part 20 Defendant: Nokia Corporation; Part 20 Defendant: Nokia Technologies OY
Jurisdiction
England and Wales
Judgment Date
13 September 2024
Procedural Posture
Patent Litigation / Post Judgment, Determination of Confidentiality Order Terms
Outcome
Disputed wording in the confidentiality undertaking resolved in favour of Amazon on the scope of the negotiation bar and in favour of Nokia on the duration post-employment.
Legal Topics
Confidentiality Orders, Patent Litigation, Disclosure of Documents, Standard Essential Patents (sep), FRAND Licensing
Intellectual Property Civil Procedure Confidentiality Orders Patent Litigation Disclosure of Documents Standard Essential Patents (sep) FRAND Licensing

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Parties

Alcatel Lucent SAS

Claimant

Amazon Digital UK Limited

Defendant/part 20 Claimant

Amazon Europe Core SARL

Defendant/part 20 Claimant

Amazon EU SARL

Defendant/part 20 Claimant

Amazon.com, Inc

Defendant/part 20 Claimant

Amazon Media EU SARL

Defendant/part 20 Claimant

Nokia Corporation

Part 20 Defendant

Nokia Technologies OY

Part 20 Defendant

Procedural Posture

Patent Litigation / Post Judgment, Determination of Confidentiality Order Terms

Legal Issues

  1. 1 What restrictions are appropriate on the use of highly confidential licensing documents disclosed in SEP patent litigation?
  2. 2 Should the confidentiality undertaking restrict involvement in future licensing negotiations with the disclosing party or require the disclosing party's consent for negotiations with third parties?
  3. 3 Should the restriction extend to employees after they leave the receiving party's employment?

Ratio Decidendi

The confidentiality undertaking should not extend to future negotiations with the disclosing party (Nokia) or require Nokia's consent for negotiations with third parties. The restriction should, however, apply for two years after access to the confidential materials, even if the recipient leaves Amazon, due to lack of evidence about Amazon's organisation and the risk of inadvertent misuse.

Court Disposition

Disputed wording in the confidentiality undertaking resolved in favour of Amazon on the scope of the negotiation bar and in favour of Nokia on the duration post-employment.

Orders

  • The requirement to restrict involvement in future licensing negotiations with Nokia is removed from the undertaking.
  • The requirement for Nokia's consent for negotiations with third parties is removed from the undertaking.