In the much-observed dispute over 3G and 4G patents, the Court of Appeal in London has confirmed a finding of infringement by Lenovo against a valid and essential InterDigital patent. However, despite the recent development, the market is still anticipating the first-instance court's other finding over a FRAND licence rate.
25 January 2023 by Amy Sandys
The Court of Appeal in London has upheld the first technical judgment in litigation between InterDigital and Lenovo (case ID: CA-2021-003431). Overall, five patents concerning the 3G and 4G standard are in dispute. The first decision, over EP 24 85 558, went in InterDigital’s favour, with the court ruling that Lenovo infringes the valid and essential patent.
Presiding judge Colin Birss also upheld the first court’s rejection of Lenovo’s counterclaim for invalidity; it had argued the patent was invalid for lack of novelty, obviousness, insufficiency and added matter.
EP 558 ‘allows mobile phone users quick and efficient access to 4G (LTE) networks’. It is one of five European patents, including EP 23 63 008, EP 2 557 714, EP 24 21 318 and EP 33 55 537, at the heart of the debate between the companies. However, in January 2022, the High Court also found InterDigital’s EP 537 invalid for lack of novelty over the prior art (case ID: HP-2019-000032).
In January 2022, the parties also turned to the High Court to determine a FRAND licensing rate. The two-week trial was the first major FRAND trial since Unwired Planet vs. Huawei between 2017 and 2020, and involved parallel litigation in the US and China.
All eyes are on the outcome of the case, since it will confirm whether the UK 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 ID: UKSC 2018/0214).
Previously, in December 2021 the judge had denied NPE InterDigital’s injunction request against Lenovo based on 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.
InterDigital began the lawsuits with Gowling WLG, with co-chair of global tech Alexandra Brodie leading the team. The firm is also undertaking parallel FRAND proceedings in India and the US. Here, Gowling’s Beijing and Guangzhou offices are providing support.
The relationship between Kirkland & Ellis and Lenovo remains quite fresh. The US firm took over from Powell Gilbert, which initially represented Lenovo, shortly after the claims were filed in April 2020. Partners Nicola Dagg and Gabriella Bornstein supervised the current proceedings for the law firm. The firm elevated Bornstein to the partnership in 2022.
Court of Appeal, London
Colin Birss (presiding judge), Mark Warby, Sarah Falk
Update 01.02.2023: The High Court in London has handed down another judgment in the technical trial between InterDigital and Lenovo (case ID: HP-2019-000032), in this instance concerning essential patent EP 24 21 318. Lenovo had argued that the patent, which covers a “method and apparatus for transmitting scheduling information in a wireless communication system”, was invalid for lack of novelty over two pieces of prior art. It also argued for invalidity based on obviousness. However, the judge found InterDigital’s patent valid and essential.
In a change from the usual line-up, international firm Bird & Bird took over proceedings for InterDigital in the case concerning EP 318. In all previous cases against Lenovo, including the as-yet-undecided FRAND dispute, the London office of Gowling WLG has acted for the company. However, wile Bird & Bird partners Katharine Stephens and Richard Vary took the lead for the NPE, they did work alongside Alexandra Brodie, who had previously led the case at Gowling. Elsewhere, Lenovo retains Kirkland & Ellis, with senior partner Nicola Dagg leading the team.
Three New Square (London): Douglas Campbell, Joe Delaney
Bird & Bird (London): Katharine Stephens, Richard Vary (partners); associates: Mark Livsey, Sam Triggs, Louise O’Hara, Bryony Gold, Alex Grigg, Francesca Budd
Gowling WLG (London): Alexandra Brodie (partner)
8 New Square (London): James Abrahams
11 South Square (London): Kyra Nezami
Hogarth Chambers (London): Ben Longstaff
Kirkland & Ellis (London): Nicola Dagg, Gabriella Bornstein (partners); associate: Ashley Grant
JUVE Patent updated this article on 01.02.2023 to reflect the latest decision in the ongoing case between InterDigital and Lenovo.