Koninklijke Philips N.V. v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526 (11 October 2017)

Koninklijke Philips N.V. v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526 (11 October 2017)

The Court of Appeal held that the definition of 'CDMA Wireless Industry Standard' in the 1998 Agreement is not limited to 'pure' CDMA systems but expressly includes the proposed ETSI UMTS standard and its subsequent releases, revisions, and derivations, which encompasses HSPA. The exclusion for TDMA systems does not override the explicit inclusion of UMTS and its releases. Therefore, the covenant not to assert extends to HTC's acts of alleged infringement relating to HSPA technology in UMTS-compliant devices. The appeal is allowed and HTC is entitled to the benefit of the covenant.

Citation
[2017] EWCA Civ 1526
Parties
Claimant/respondent: KONINKLIJKE PHILIPS N. V.; Defendant: ASUSTEK COMPUTER INCORPORATION; Defendant: ASUSTEK (UK) LIMITED; Defendant: ASUS TECHNOLOGY PTE. LTD; Defendant/appellant: HTC CORPORATION; Defendant/appellant: HTC EUROPE CO. LTD
Jurisdiction
England and Wales
Judgment Date
11 October 2017
Procedural Posture
Appeal (civil, Patents) / Appeal From High Court (patents Court) on Preliminary Issue
Outcome
Appeal allowed
Legal Topics
Patent Licensing, Third Party Beneficiaries, Interpretation of Contracts, Telecommunications Standards, Covenant Not to Sue
Intellectual Property Contract Law Patent Licensing Third Party Beneficiaries Interpretation of Contracts Telecommunications Standards Covenant Not to Sue

Case Brief

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Parties

KONINKLIJKE PHILIPS N. V.

Claimant/respondent

ASUSTEK COMPUTER INCORPORATION

Defendant

ASUSTEK (UK) LIMITED

Defendant

ASUS TECHNOLOGY PTE. LTD

Defendant

HTC CORPORATION

Defendant/appellant

HTC EUROPE CO. LTD

Defendant/appellant

Procedural Posture

Appeal (civil, Patents) / Appeal From High Court (patents Court) on Preliminary Issue

Legal Issues

  1. 1 Whether the covenant not to assert in the 1998 Agreement between Philips and Qualcomm extends to HTC's alleged acts of patent infringement relating to HSPA technology in UMTS-compliant devices.
  2. 2 Whether the definition of 'CDMA Wireless Industry Standard' in the 1998 Agreement includes hybrid standards such as HSPA/UMTS or is limited to 'pure' CDMA systems.
  3. 3 Whether the proviso in clause 4.3 excluding TDMA systems applies to hybrid systems like HSPA.

Ratio Decidendi

The Court of Appeal held that the definition of 'CDMA Wireless Industry Standard' in the 1998 Agreement is not limited to 'pure' CDMA systems but expressly includes the proposed ETSI UMTS standard and its subsequent releases, revisions, and derivations, which encompasses HSPA. The exclusion for TDMA systems does not override the explicit inclusion of UMTS and its releases. Therefore, the covenant not to assert extends to HTC's acts of alleged infringement relating to HSPA technology in UMTS-compliant devices. The appeal is allowed and HTC is entitled to the benefit of the covenant.

Court Disposition

Appeal allowed

Orders

  • Declaration that HTC is entitled to the benefit of the covenant not to assert in clause 4.3 of the 1998 Agreement in respect of the alleged acts of infringement.
  • Matter remitted to the Patents Court for further proceedings consistent with this judgment.