UK High Court rules no interim licence for Lenovo in dispute with Ericsson

Lenovo will not receive an interim licence in its dispute with Ericsson. Judge Jonathan Richards of the UK High Court handed down his ruling last Friday (case ID: HP-2023-000036).

According to Judge Richards’ ruling, “Lenovo seeks a declaration that a willing licensor and a willing licensee in the situation of the parties would agree to, and actually enter into, a short-term cross-licence, in a form annexed to Lenovo’s application, that would expire once either the English court or the EDNC fixes the terms of a FRAND Cross-Licence.”

Lenovo had applied for the licence with the following features: Firstly, “It is a ‘one-way’ licence of Ericsson’s SEPs only for a term starting on 1 January 2024 and ending on execution of any ‘Court-Determined Licence’, namely a FRAND Cross-Licence as determined by either the English court or the EDNC”.

Secondly, “It provides for Lenovo to make a single lump-sum payment (the Lump Sum) in two instalments. The Lump Sum is the same whatever the term of the licence”.

Thirdly, “It contains a ‘true-up’ mechanism by which its financial and non-financial terms are adjusted in line with the terms of the final licence determined by the English court or EDNC.”

Judge Richards rejected the application. The UK court must now decide on a cross-licence and a corresponding rate in the main proceedings. According to the ruling, an application for the setting of a FRAND rate has also been submitted to the Eastern District of North Carolina.

From America to Europe

The global dispute between Lenovo and Ericsson over 5G patents originated in the US. In October 2023, Ericsson filed the first patent lawsuits with the Eastern District Court of North Carolina, followed by ITC complaints. Ericsson also filed PI cases in Brazil and Columbia.

In November 2023, in response to Ericsson’s first US patent infringement and ITC cases, Lenovo filed a lawsuit with the UK High Court. But instead of going on the offensive against Ericsson with Lenovo’s own patents, the company chose a different, more unusual path in London. Lenovo asked the UK High Court to set a global cross-licence. With this move the Chinese company was attempting to take the wind out of Ericsson’s sails by concentrating the dispute in the UK capital. A global FRAND cross-licence determination by the UK High Court could lead to global patent peace between the two opponents. An infringement case is also pending in the UK.

Then, in February 2024, Lenovo went one step further, taking the dispute to the Unified Patent Court. Lenovo subsidiary Motorola filed infringements suits over two patents with the Munich local division (case IDs: ACT_5326/2024 and ACT_5324/2024).

All actions are in English and are based on SEPs. EP 3 342 086 protects a method and apparatus for low-latency transmission, while EP 3 780 758 protects a network slice selection based on application category in a wireless communication system.

According to JUVE Patent information, the Munich local division has scheduled the oral hearings for 12 March and 6 May 2025.

New FRAND ruling likely

An interim licence would have probably blocked Ericsson’s infringement actions in South and North America. However, the UK High Court’s refusal to grant an interim licence now also opens up the possibility for the UPC to pursue Lenovo’s claims and to deal with the FRAND aspects.

In a similar case between Panasonic vs Xiaomi and Oppo, the UK High Court’s first interim licence had a significant impact on the UPC proceedings. But the companies agreed on a settlement before the UPC could rule on FRAND. Although the main features of the settlement have been agreed, it has not yet been formally implemented.

According to JUVE Patent information, the courts are aware of the development. Nevertheless, the local division in Mannheim could still theoretically issue a judgment in the dispute between Panasonic and Oppo. The court heard the case on 7 October and originally planned to hand down a judgment on 6 December.

Unlike Panasonic, Lenovo and Motorola are not seeking an injunction against Ericsson from the UPC.

But by 18 December there could be more clarity on the UPC’s position on FRAND issues. This is when the local division Munich will announce its judgment in the dispute between Huawei and Netgear (case ID: ACT_459771/2023 UPC_CFI_9/2023).

Taylor Wessing for Ericsson, Kirkland for Lenovo

Taylor Wessing lawyers Tom Foster and Lydia Birch represented Ericsson in the UK interim licence dispute. The law firm has very good relationships with Ericsson, not only in London but also in the Netherlands. A Dutch team is advising the company in UPC claims against Asus.

Ericsson also relies on Pinsent Masons. The connection comes via recent partner hire James Marshall. He represented Ericsson at his former firm Taylor Wessing before moving to Pinsent Masons in 2023. Ericsson’s barristers are Meredith Pickford from Monckton Chambers and Edmund Eustace from 8 New Square.

Kather Augenstein is Ericsson’s lead law firm in Germany. Düsseldorf-based partner Christof Augenstein is leading the UPC cases against Motorola and Lenovo. In the US, Ericsson works with Alston & Bird.

A London team from Kirkland & Ellis, led by Nicola Dagg and partner Oscar Robinson, is conducting the proceedings in London as well as coordinating the global dispute for Lenovo. Lenovo’s barristers in the interim licence case were David Cavender from One Essex Court, Kathryn Pickard from 11 South Square and Thomas Lunt from Three New Square.

In the US, Lenovo also relies on Kirkland & Ellis, while Hoyng ROKH Monegier partner Klaus Haft filed the UPC claims in Germany.