Kirkland & Ellis Secure Victory For Lenovo In UK Court Of Appeal Against Ericsson
Kirkland & Ellis Secure Victory For Lenovo In UK Court Of Appeal Against Ericsson
The bench overturned the refusal of a single judge to grant an interim licence last year
Multinational law firm, Kirkland & Ellis has helped Lenovo in securing a victory in a patent dispute with Ericsson in the UK Court of Appeal.
Lord Justice Richard Arnold, Lord Justice Newey and Lady Justice Sarah Falk ruled that Lenovo was entitled to an interim cross licence to use Ericsson’s portfolio of 5G and 4G standard essential patents (SEPs).
The bench overturned Justice Jonathan Richards’ refusal to grant Lenovo an interim licence in November.
The judges concluded that Ericsson breached its obligation of good faith under the standard-setting organization the European Telecommunications Standards Institute’s (ETSI’s) policy, by pursuing claims for injunctions in the UK and equivalent remedies in foreign courts.
The bench observed that Lenovo entered a licence agreement on the terms determined by the English court to be fair, reasonable and non-discriminatory (FRAND).
In parallel proceedings, it offered to accept the Eastern District Court of North Carolina’s determination of FRAND terms if Ericsson dropped its ‘campaign to obtain injunctions and equivalent relief.’
The judges stated, “A willing licensor in the position of Ericsson would enter into an interim licence with Lenovo pending that determination.” They added that granting the licence should not be refused on the grounds of comity and would “serve a useful purpose.”
The bench settled on a figure for the interim licence that was midway between Lenovo’s and Ericsson’s offers.
Lenovo initiated proceedings in the UK against Ericsson in 2023. The global patent dispute, with parallel proceedings in the US, happened 16 years ago.
Commenting on the court’s decision, Lenovo’s chief legal officer, Laura Quatela, said, “Lenovo is grateful for the court’s careful and objective analysis of the issues. It welcomes the landmark ruling and its broader implications for global SEP licensing and the technology industry.”
She added, “The judgment confirms that Lenovo is a willing licensee and strengthens and reaffirms our commitment to advocating for transparency and fairness in global FRAND licensing on behalf of our customers and the industry.”
Quatela expressed that Lenovo continued to “welcome resolution with Ericsson and invites Ericsson to engage with the multiple FRAND offers Lenovo has made.”
Meanwhile, the bench pointed out that in recent times, it was the third appeal on similar issues. In October, it granted Xiaomi (advised by Kirkland & Ellis), an interim licence in a dispute with Panasonic.
In January, in the Alcatel Lucent SAS v Amazon Digital case, the court held that the implementer, Amazon had prospects of succeeding on its claim for a declaration that a willing licensor in Nokia’s position would grant Amazon an interim licence to use SEPs in the Nokia Video Portfolio.
Katharine Stephens, a Partner at Bird & Bird Partner said that implementers viewed the UK as a favorable jurisdiction. Lenovo had also initiated proceedings against InterDigital and recently ZTE.
She added that pending the outcome of Ericsson’s appeal, the decision would “ensure that implementers continue to see the UK as a good place to bring proceedings. It does not just relate to the rates, but also because the English court is willing to grant declarations for an interim licence.
Stephens maintained, “It signals that it is willing to protect them from injunctions granted by courts in other countries in situations where the SEP owner has not acted in good faith in accordance with its undertaking to ETSI or other standard setting organization.”
Lenovo was represented by 8 New Square’s Andrew Lykiardopoulos KC, Blackstone Chambers’ James Segan KC and 11 South Square’s Kathryn Pickard.
They were, instructed by the Kirkland & Ellis team led by London-based Partners Nicola Dagg, Jin Ooi, Peter Pereira and Oscar Robinson, and Associates Ashley Grant and Andrew Marks.
Ericsson was represented by Monckton Chambers’ Meredith Pickford KC and Nikolaus Grubeck, and 8 New Square’s Edmund Eustace. They were instructed by Taylor Wessing and Pinsent Masons.
