Panasonic Holdings Corporation v Xiaomi Technology UK Ltd & Ors [2024] EWCA Civ 1143 (03 October 2024)

Panasonic Holdings Corporation v Xiaomi Technology UK Ltd & Ors [2024] EWCA Civ 1143 (03 October 2024)

The Court of Appeal held that, given the unconditional undertakings by both parties to enter into a global licence on FRAND terms as determined by the Patents Court, there is no legal basis to require Panasonic to enter into an interim licence or to declare that a willing licensor would do so. The undertakings ensure that a final licence will be entered into and that all relevant acts will be retrospectively licensed. The pursuit of injunctions in other jurisdictions does not, in itself, constitute a breach of the ETSI IPR Policy or the obligation to negotiate in good faith. The grant of the declaration sought by Xiaomi would serve no useful legal purpose and is not justified.

Citation
[2024] EWCA Civ 1143
Parties
Claimant/respondent: Panasonic Holdings Corporation; Defendant/appellant: Xiaomi Technology UK Limited; Defendant/appellant: Xiaomi Inc; Defendant/appellant: Xiaomi Communications Co. Ltd.; Defendant/appellant: Xiaomi HK Limited
Jurisdiction
England and Wales
Judgment Date
03 October 2024
Procedural Posture
Appeal / Court of Appeal Judgment Following Dismissal of Application for Declaration in High Court
Outcome
Appeal dismissed
Legal Topics
Standard Essential Patents (seps), FRAND Licensing, Injunctions, Declarations, Jurisdiction, Good Faith Negotiation, European Telecommunications Standards Institute (etsi) IPR Policy
Intellectual Property Contract Law Competition Law Standard Essential Patents (seps) FRAND Licensing Injunctions Declarations Jurisdiction +2 more

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Parties

Panasonic Holdings Corporation

Claimant/respondent

Xiaomi Technology UK Limited

Defendant/appellant

Xiaomi Inc

Defendant/appellant

Xiaomi Communications Co. Ltd.

Defendant/appellant

Xiaomi HK Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment Following Dismissal of Application for Declaration in High Court

Legal Issues

  1. 1 Whether a willing licensor in the position of Panasonic would agree to enter into an interim licence of its SEP portfolio pending determination of FRAND terms by the Patents Court
  2. 2 Whether Panasonic's refusal to enter into such an interim licence constitutes a breach of its obligations under clause 6.1 of the ETSI IPR Policy
  3. 3 Whether the court should grant a declaration to that effect

Ratio Decidendi

The Court of Appeal held that, given the unconditional undertakings by both parties to enter into a global licence on FRAND terms as determined by the Patents Court, there is no legal basis to require Panasonic to enter into an interim licence or to declare that a willing licensor would do so. The undertakings ensure that a final licence will be entered into and that all relevant acts will be retrospectively licensed. The pursuit of injunctions in other jurisdictions does not, in itself, constitute a breach of the ETSI IPR Policy or the obligation to negotiate in good faith. The grant of the declaration sought by Xiaomi would serve no useful legal purpose and is not justified.

Court Disposition

Appeal dismissed

Orders

  • No declaration granted in favour of Xiaomi
  • Costs to be determined as per standard procedure