Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors

Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors

Panasonic is in breach of its obligation of good faith under clause 6.1 of the ETSI IPR Policy by pursuing injunctions in foreign courts while having invoked the English court's jurisdiction to determine FRAND terms and having undertaken to enter a licence on those terms. A willing licensor in Panasonic's position would grant Xiaomi an interim licence on terms midway between the parties' proposals, pending the English court's FRAND determination. Declaratory relief is appropriate and serves a useful purpose in these circumstances.

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
10 March 2024
Procedural Posture
Civil Appeal / Appeal From High Court Judgment on Application for Declaration Regarding Interim Licence Pending FRAND Determination
Outcome
Appeal allowed
Legal Topics
Standard Essential Patents (seps), FRAND Licensing, Good Faith Negotiation, Anti Suit Injunctions, Jurisdiction and Comity
Intellectual Property Contract Law Competition Law Standard Essential Patents (seps) FRAND Licensing Good Faith Negotiation Anti Suit Injunctions Jurisdiction and Comity

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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

Civil Appeal / Appeal From High Court Judgment on Application for Declaration Regarding Interim Licence Pending FRAND Determination

Legal Issues

  1. 1 Whether Panasonic is obliged under the ETSI IPR Policy and French law to grant Xiaomi an interim licence of SEPs pending the English court's FRAND determination
  2. 2 Whether Panasonic's pursuit of parallel injunction proceedings in Germany and the UPC breaches its good faith obligations under the ETSI IPR Policy
  3. 3 Whether declaratory relief should be granted to Xiaomi regarding the obligation to grant an interim licence

Ratio Decidendi

Panasonic is in breach of its obligation of good faith under clause 6.1 of the ETSI IPR Policy by pursuing injunctions in foreign courts while having invoked the English court's jurisdiction to determine FRAND terms and having undertaken to enter a licence on those terms. A willing licensor in Panasonic's position would grant Xiaomi an interim licence on terms midway between the parties' proposals, pending the English court's FRAND determination. Declaratory relief is appropriate and serves a useful purpose in these circumstances.

Court Disposition

Appeal allowed

Orders

  • Declaration granted that Panasonic is obliged to grant Xiaomi an interim licence of its SEP portfolio pending the English court's FRAND determination, on terms set out by the Court (midway between the parties' proposals for the relevant period)
  • Declaratory relief to issue as modified by the Court