Gowling and Kirkland go head-to-head in UK’s next major FRAND trial

Today marks the first day of a two-week trial between non-practising entity InterDigital and mobile device manufacturer Lenovo at the UK High Court. It is the first major FRAND trial since Unwired Planet vs. Huawei between 2017 and 2020, and involves parallel litigation in the US and China.

Last week, the court also released a second technical judgment in the case, finding an InterDigital patent invalid for lack of novelty over the prior art. The proceedings are the result of a major global licensing dispute between InterDigital and Lenovo, covering nullity, competition law, and FRAND issues.

All eyes are on the case, given the questions surrounding whether judges will maintain the standards previously set by former High Court judge Colin Birss in global licensing jurisprudence. The Supreme Court upheld Birss’ judgment in August 2020, when it published its long-awaited judgment in the dispute between Unwired Planet vs. Huawei (case IDs: UKSC 2018/0214).

In doing so, the Supreme Court judges confirmed that the courts of England and Wales have jurisdiction to determine global FRAND terms and rates.

Gowling and Kirkland have front seats

InterDigital initially alleged that Lenovo infringed five SEPs in the UK. The NPE claimed that all patent were essential to the 3G and 4G UMTS and LTE standards. The patents, EP 2 485 558, EP 23 63 008, EP 2 557 714, EP 24 21 318 and EP 33 55 537 are part of InterDigital’s portfolio and are regulated by the European Telecommunications Standard Institute (ETSI). The portfolio also contains patents granted in the US and China.

In summer 2021, the court found InterDigital’s EP 558 valid and essential to the 4G communications standard. This decision provided a springboard from which the parties could commence the FRAND trial.

However, in December the judge denied the NPE’s injunction request against Lenovo. In the decision, presiding judge Richard Hacon refers to a previous judgment in the case between Apple and Optis, whereby the court determined that Apple must take a licence on as-yet-undecided FRAND terms or face an injunction. But in this instance, Lenovo stipulated that the Apple vs. Optis case does not consider the same points of French law as under its application.

Furthermore, this case also considers parallel litigation in the US and China, whereby tribunals other than the UK have jurisdiction to grant a global licence. The judge therefore rejected the injunction request, although the court will revisit this in the FRAND trial

FRAND and FRAND again.

Gowling WLG represents InterDigital, while Kirkland & Ellis acts for Lenovo. In Unwired Planet vs. Huawei, IP boutique EIP and the London office of Osborne Clarke prevailed for the NPE. Market leaders Powell Gilbert and challengers Allen & Overy led for Huawei.

Since 2009, the parties have discussed licensing EP 558, with InterDigital claiming it made global licensing offers to Lenovo on FRAND terms under the ETSI declaration. InterDigital also offered a licence on alternative terms. InterDigital claimed that Lenovo was an unwilling FRAND licensee and would not accept the offered FRAND licence, while Lenovo rejected claims that InterDigital’s offer was FRAND.

Now it is down to the UK courts to determine a fair and reasonable rate for InterDigital’s global patent portfolio.

Second trial, new decision

The UK High Court has also released a judgment from the second of five parallel technical trials. Following the second hearing in Trial B, the court found InterDigital patent EP 33 55 537 invalid. This contrasts with the first technical decision from August 2021, from which InterDigital emerged on top.

In the second technical trial, presiding judge James Mellor found the patent lacked novelty over the prior art. However, the decision does not impact the process of the FRAND trial. A third technical trial is scheduled to begin on 9 May 2021.

Daniel Lim

In new proceedings, InterDigital has recently filed two suits against Oppo in Munich and Mannheim.

Technical or FRAND

InterDigital began the lawsuits with Gowling WLG, with co-chair of its global tech team Alexandra Brodie in the lead. She is supported across the technical and FRAND trials by partners Matt Hervey and Jamie Rowlands, and director Michael Carter, as well as numerous associates.

The firm is also undertaking parallel FRAND proceedings in China and the US, with the firm’s Beijing and Guangzhou offices providing support in this instance.

Alex Brodie

By contrast, the relationship between Kirkland & Ellis and Lenovo is relatively new. The US firm took over from Powell Gilbert, which initially represented Lenovo, shortly after the claims were filed in April 2020.

Kirkland & Ellis partner Daniel Lim is running the FRAND trial, with support from an associate team. Fellow partner Steven Baldwin leads on the technical aspects, along with associate Gabriella Bornstein.

Lawyers in technical trial B  (judgment 06/01/2022)

For InterDigital
8 New Square (London): Adrian Speck, Mark Chacksfield, Edmund Eustace
Gowling WLG (London): Alex Brodie, Jamie Rowlands (partners); associate: Andrew Maggs
In-house (Wilmington): Steve Akerley (VP, head of litigation)

For Lenovo/Motorola
8 New Square (London): James Abrahams, William Duncan
11 South Square (London): Kyra Nezami
Kirkland & Ellis (London): Steven Baldwin (partner); associates: Gabriella Bornstein, John de Rohan-Truba
In-house (North Carolina): Jennifer Salinas (executive director, general counsel), Anup Shah (legal director)

UK High Court, London
James Mellor (deputy presiding judge)