Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors

Panasonic Holdings Corporation v Xiaomi Technology UK Limited & Ors

Panasonic's performance of its FRAND Commitment in good faith does not require it to grant an Interim Licence to Xiaomi pending the FRAND trial. The only obligation is to make an irrevocable offer of a licence on FRAND terms, and Panasonic has complied by giving reciprocal undertakings. The declarations sought by...

Source-derived case information.

Parties
Claimant: Panasonic Holdings Corporation; Defendant: Xiaomi Technology UK Limited; Defendant: Xiaomi Inc; Defendant: Xiaomi Communications Co Ltd; Defendant: Xiaomi HK Limited; Defendant: Guangdong Oppo Mobile Telecommunications Corp, Ltd; Defendant: Oppo Mobile UK Limited; Defendant: Unumplus Limited
Jurisdiction
England and Wales
Judgment Date
07 May 2024
Procedural Posture
Patent Infringement and FRAND Licensing Dispute / Ruling on Interim Application for Declarations and Forum Non Conveniens Application
Outcome
Application for declarations and permission to amend refused; forum non conveniens application granted; interim licence application dismissed.
Legal Topics
Standard Essential Patents (seps), FRAND Licensing, Anti Suit Injunctions, Declaratory Relief, Forum Non Conveniens, Good Faith in Contract Performance
Intellectual Property Contract Law Competition Law Civil Procedure Standard Essential Patents (seps) FRAND Licensing Anti Suit Injunctions Declaratory Relief +2 more

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Parties

Panasonic Holdings Corporation

Claimant

Xiaomi Technology UK Limited

Defendant

Xiaomi Inc

Defendant

Xiaomi Communications Co Ltd

Defendant

Xiaomi HK Limited

Defendant

Guangdong Oppo Mobile Telecommunications Corp, Ltd

Defendant

Oppo Mobile UK Limited

Defendant

Unumplus Limited

Defendant

Procedural Posture

Patent Infringement and FRAND Licensing Dispute / Ruling on Interim Application for Declarations and Forum Non Conveniens Application

Legal Issues

  1. 1 Whether Panasonic's FRAND Commitment requires it to grant an Interim Licence to Xiaomi pending the FRAND trial
  2. 2 Whether declaratory relief should be granted to Xiaomi regarding an Interim Licence
  3. 3 Whether the English Court is the appropriate forum to determine the Interim Licence Application

Ratio Decidendi

Panasonic's performance of its FRAND Commitment in good faith does not require it to grant an Interim Licence to Xiaomi pending the FRAND trial. The only obligation is to make an irrevocable offer of a licence on FRAND terms, and Panasonic has complied by giving reciprocal undertakings. The declarations sought by Xiaomi would serve no useful purpose in the English proceedings, would constitute an attempt to influence foreign courts, and would be an exercise in jurisdictional imperialism. The English Court is not the appropriate forum to determine the effect of the FRAND Commitment on foreign patent enforcement, and comity requires that such issues be left to the German and UPC courts.

Court Disposition

Application for declarations and permission to amend refused; forum non conveniens application granted; interim licence application dismissed.

Orders

  • Refusal to make the declarations requested by Xiaomi.
  • Refusal of permission to Xiaomi to amend its Defence and Counterclaim to plead the Interim Licence.