Alcatel Lucent SAS v Amazon Digital UK Ltd & Ors [2024] EWHC 1921 (Pat) (24 July 2024)

Alcatel Lucent SAS v Amazon Digital UK Ltd & Ors [2024] EWHC 1921 (Pat) (24 July 2024)

There is no sufficiently arguable claim that Alcatel is contractually obliged to grant Amazon a RAND licence; those parts of Amazon's defence and counterclaim are struck out. However, Amazon has a serious issue to be tried that Nokia's RAND commitment may require a licence including an option to NEPs, and thus a defence to injunctive relief. The Part 20 RAND case against Nokia is not struck out. Amazon's amendment to claim an Interim Licence is refused as unsustainable. The English court has jurisdiction over the Part 20 RAND case via Gateway 4 and 16A.

Citation
[2024] EWHC 1921 (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
24 July 2024
Procedural Posture
Patent Infringement and Related Contractual Claims / Interlocutory Applications: Strike Out, Amendment, and Jurisdiction Challenges
Outcome
Partial strike out and refusal of amendment; jurisdiction upheld.
Legal Topics
Standard Essential Patents (seps), Non Essential Patents (neps), Rand/frand Licensing, Injunctions, Jurisdiction, Amendment of Pleadings, Strike Out Applications, Portfolio Licensing, Discrimination in Licensing, Declaratory Relief
Intellectual Property Contract Law Competition Law Civil Procedure Standard Essential Patents (seps) Non Essential Patents (neps) Rand/frand Licensing Injunctions +6 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 16 Party arguments 2
Sign in to unlock

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 Infringement and Related Contractual Claims / Interlocutory Applications: Strike Out, Amendment, and Jurisdiction Challenges

Legal Issues

  1. 1 Whether Alcatel is contractually obliged to grant Amazon a RAND licence covering NEPs
  2. 2 Whether Nokia's RAND commitment requires inclusion of NEPs in a licence to Amazon
  3. 3 Whether Amazon has a defence to injunctive relief based on willingness to enter a RAND licence

Ratio Decidendi

There is no sufficiently arguable claim that Alcatel is contractually obliged to grant Amazon a RAND licence; those parts of Amazon's defence and counterclaim are struck out. However, Amazon has a serious issue to be tried that Nokia's RAND commitment may require a licence including an option to NEPs, and thus a defence to injunctive relief. The Part 20 RAND case against Nokia is not struck out. Amazon's amendment to claim an Interim Licence is refused as unsustainable. The English court has jurisdiction over the Part 20 RAND case via Gateway 4 and 16A.

Court Disposition

Partial strike out and refusal of amendment; jurisdiction upheld.

Orders

  • Amazon's claims and counterclaims against Alcatel for a contractual RAND obligation are struck out.
  • Amazon's defence to injunctive relief based on Nokia's RAND commitment survives.