Mitsubishi Electric Corporation & Anor v Oneplus Technology (Shenzhen) Co., Ltd & Ors [2021] EWHC 1541 (Pat) (08 June 2021)

Mitsubishi Electric Corporation & Anor v Oneplus Technology (Shenzhen) Co., Ltd & Ors [2021] EWHC 1541 (Pat) (08 June 2021)

The application to dismiss the Second Claimant (Sisvel International SA) is refused because, even though it does not own a patent found valid, essential, and infringed, the FRAND trial will necessarily consider whether a pool licence administered by it is FRAND. Excluding the administrator would be pointless and contrary to the overriding objective. The Claimants' proposed essentiality analysis is rejected as unworkable and disproportionate given the trial timetable; the parties are ordered to serve amended statements of case on essentiality.

Citation
[2021] EWHC 1541 (Pat)
Parties
Claimant: Mitsubishi Electric Corporation; Claimant: Sisvel International SA; Defendant: Archos SA; Defendant: Sun Cupid Technology HK Ltd; Defendant: NUU Mobile UK Limited; Defendant: OnePlus Technology (Shenzhen) Co., Ltd; Defendant: Oplus Mobiletech UK Limited; Defendant: Reflection Investment B. V.; Defendant: Guangdong Oppo Mobile Telecommunications Corp, Ltd; Defendant: Oppo Mobile UK Ltd; Defendant: Xiaomi Communications Co Ltd; Defendant: Xiaomi Inc; Defendant: Xiaomi Technology France SAS; Defendant: Xiaomi Technology UK Limited
Jurisdiction
England and Wales
Judgment Date
08 June 2021
Procedural Posture
Patent Infringement and FRAND Licensing Dispute / Interlocutory Applications at Case Management Conference (cmc 5) Prior to FRAND Trial
Outcome
Both applications dismissed
Legal Topics
FRAND Licensing, Patent Pools, Standing of Pool Administrators, Essentiality Analysis, Case Management, Summary Judgment
Intellectual Property Patents FRAND Licensing Patent Pools Standing of Pool Administrators Essentiality Analysis Case Management Summary Judgment

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 4 Authorities cited 9 Party arguments 2
Sign in to unlock

Parties

Mitsubishi Electric Corporation

Claimant

Sisvel International SA

Claimant

Archos SA

Defendant

Sun Cupid Technology HK Ltd

Defendant

NUU Mobile UK Limited

Defendant

OnePlus Technology (Shenzhen) Co., Ltd

Defendant

Oplus Mobiletech UK Limited

Defendant

Reflection Investment B. V.

Defendant

Guangdong Oppo Mobile Telecommunications Corp, Ltd

Defendant

Oppo Mobile UK Ltd

Defendant

Xiaomi Communications Co Ltd

Defendant

Xiaomi Inc

Defendant

Xiaomi Technology France SAS

Defendant

Xiaomi Technology UK Limited

Defendant

Procedural Posture

Patent Infringement and FRAND Licensing Dispute / Interlocutory Applications at Case Management Conference (cmc 5) Prior to FRAND Trial

Legal Issues

  1. 1 Whether the Second Claimant (Sisvel International SA) should be dismissed as a party following the finding that its patent (EP'142) was not essential or infringed
  2. 2 Whether the FRAND trial can proceed on the basis of a pool licence administered by a non-patentee administrator
  3. 3 Whether the Claimants' proposed essentiality analysis methodology is workable and should be permitted

Ratio Decidendi

The application to dismiss the Second Claimant (Sisvel International SA) is refused because, even though it does not own a patent found valid, essential, and infringed, the FRAND trial will necessarily consider whether a pool licence administered by it is FRAND. Excluding the administrator would be pointless and contrary to the overriding objective. The Claimants' proposed essentiality analysis is rejected as unworkable and disproportionate given the trial timetable; the parties are ordered to serve amended statements of case on essentiality.

Court Disposition

Both applications dismissed

Orders

  • Xiaomi's application to dismiss the Second Claimant is refused.
  • Claimants' proposed essentiality analysis is rejected; Claimants to serve amended statements of case on essentiality within 7 days as per agreed order.