Context: The standard-essential patent (SEP) dispute between Ericsson and Lenovo has been going for about a year, and Lenovo continues to try novel and ambitious legal tactics to defuse some SEP injunctions that Ericsson obtained in Brazil (where enforcement is presently stayed) and Colombia. The most unconventional one of those approaches was Lenovo’s request for a preliminary injunction (PI) in the UK over one of its own SEPs, seeking tailored relief that would effectively have been an antisuit injunction against Ericsson’s Latin American enforcement. Mrs Justice Bacon of the England & Wales High Court of Justice denied that motion (May 23, 2024 ip fray article).
What’s new: Lenovo’s appeal has now also been rejected (September 30, 2024 judgment). Of the four grounds of appeal, one was never reached because it depended on another. The others primarily failed because the alleged harm to Lenovo from being enjoined in two LatAm markets does not arise from Ericsson’s alleged use of a Lenovo SEP in the UK.
Direct impact: Lenovo can still litigate against Ericsson in the UK, but it can’t expect short-term leverage from doing so. An attempt to use the Unified Patent Court (UPC) for a similar purpose is also going to take time, as Lenovo belatedly (for tactical reasons) sought injunctive relief there (August 6, 2024 ip fray article). Lenovo had to file a follow-on lawsuit with the UPC (see item 15 of ip fray‘s September 14, 2024 UPC roundup). This means Lenovo’s last hope is that the U.S. judiciary would step in to defend not its own jurisdiction, but effectively only that of the UK, over this FRAND licensing dispute (August 7, 2024 ip fray article). But the staff of a U.S. government agency actually found that Ericsson complied with its FRAND licensing obligations (September 18, 2024 ip fray article).
Wider ramifications: The UK, particularly at the level of the England & Wales Court of Appeals (EWCA), can’t be accurately described as being firmly in the pro-implementer column, nor does it always side with patent holders. The decisions there tend to be rather nuanced. Based on how a recent EWCA hearing went (September 22, 2024 ip fray article), there is a possibility of an implementer, due to specific circumstances favoring its cause, getting a favorable decision on Thursday (October 3, 2024): Xiaomi in its dispute with Panasonic (October 1, 2024 LinkedIn post by ip fray).
There isn’t much to add about Lenovo’s failed (to put it mildly) PI request against Ericsson. The issues were discussed before, and the above summary contains links to other commentary on the dispute and on this particular attempt to gain leverage in the UK.
The primary purpose of this article was to put everything in the broader context, and to show that UK SEP cases are not as predictable as German ones. In Germany, it’s “heads, the SEP holder wins; tails, the implementer loses.” The way the English courts deal with SEP cases (which doesn’t mean one always has to agree) is a better role model for the UPC than the current state of affairs of German SEP case law.
Lord Justice Richard Arnold, who wrote the per curiam in this matter and whose in-depth SEP expertise would make him the logical author of the decision to be published on Thursday, would actually like standard-setting organizations to play a more active role in (shaping or facilitating) SEP dispute resolution:
“It is, however, worth reiterating that many of the problems in this field are caused by the absence of any global dispute resolution mechanism in the IPR policies of standards-development organisations such as ETSI, leaving national courts competent to enforce SEPs as the only available fora in the absence of ad hoc agreements to arbitrate […]
It is, however, difficult to build a consensus within standard-setting organizations on FRAND licensing questions. In the end they can just agree on the lowest common denominator.