Mediatek, Inc. (a company incorporated under the laws of Taiwan) v Huawei Technologies Company, Ltd (a company incorporated under the laws of the People's Republic of China)

Hearing dates: 18 to 20 December 2024

Judgment circulated on 11 March 2025

APPROVED JUDGMENT

There are two versions of this judgment. The full and unredacted version has been made available to the parties and their legal advisers only and should be made available only to those who have been included at the appropriate level of confidentiality in the Confidentiality Orders which the Court has made. The redacted version is published on the National Archives website. Both versions were handed down on Tuesday 18 March 2025.

Table of Contents

I. The Applications

The Claimants are three companies in the MediaTek group and I will refer to them in this judgment collectively as “ MediaTek”. The first two Claimants are companies incorporated under the laws of Taiwan and the Third Claimant is incorporated under the Companies Act 2006 and registered in England and Wales. The Defendants are two companies within the Huawei group of companies and I will refer to them collectively in this judgment as “ Huawei”. The First Defendant is a company incorporated under the laws of the People's Republic of China and the Second Defendant is incorporated under the Companies Act 2006 and also registered in England and Wales.

On 15 July 2024 the Claim Form in this action was issued with Particulars of Claim, Particulars of Infringement and Particulars of Invalidity attached and I will refer to it as the “ English Claim”. By Order dated 8 August 2024 (the “ Service Order”) Master Brightwell granted permission for service of these documents together with any other supporting documents on the First Defendant out of the jurisdiction and for service by alternative means upon the First Defendant's solicitors, Allen Overy Shearman Sterling LLP (“ A&O Shearman”), by post, DX or email.

By Acknowledgments of service dated 9 September 2024 and 31 July 2024 the First and Second Defendants acknowledged service of the Claim Form and accompanying documents but ticked the box stating that they intended to contest the jurisdiction of the Court. Without prejudice to this position, the First Defendant served a Defence to the invalidity and revocation claim and the Second Defendant served a technical Defence to the claim for infringement.

By Application Notices dated 14 August 2024 and 23 September 2024 (the “ Jurisdiction Applications”) Huawei applied for declarations that the Court did not have jurisdiction to try the claims (other than the invalidity claim), that the Court should not exercise any jurisdiction to try the claims because it was not the proper forum or the forum conveniens for them and that the Service Order and the service (or purported service) of the Claim Form and the Particulars of Claim should be set aside. In the alternative, Huawei applied for a stay of proceedings on case management grounds.

By Application Notice dated 30 September 2024 (the “ Strike Out Application”) Huawei applied to strike out MediaTek's claim that Huawei had abused its dominant position and for the strike out of all of the claims made by the Third Claimant. This application was also made without prejudice to the Jurisdiction Applications.

By Application Notices dated 28 October 2024 and 8 December 2024 (the “ Amendment Applications”) MediaTek applied for permission to amend the Claim Form and Particulars of Claim and by Application Notices dated 2 December 2024 and 28 October 2024 (and 8 December 2024) respectively Huawei and MediaTek applied for permission to rely on expert evidence of Chinese law (the “ Expert Evidence Applications”). I will refer to all of these applications collectively as the “ Applications”.

On 18 to 20 December 2024 the hearing of the Applications took place. Mr Thomas Raphael KC made oral submissions on behalf of Huawei. Mr Andrew Lykiardopoulos KC made oral submissions on behalf of MediaTek on the patent and service issues, Ms Jemima Stratford KC addressed the Court in relation to the case management stay and alternative service and Mr Thomas Jones addressed the Court in relation to full and frank disclosure. I am grateful to them all for their submissions and to their respective teams.

Neither party objected to the other relying on expert evidence at the hearing and I was not addressed separately on the Expert Evidence Applications. Mr Raphael did not oppose the Amendment Application if I dismissed the Jurisdiction Applications and the Strike Out Application. Nor did he submit that I could not look at the most recent version of the draft Amended Particulars of Claim dated 8 December 2024 in deciding the Applications. For the purpose of deciding the remaining Applications I assume that the Court will grant permission to amend the Particulars of Claim unless the Jurisdiction Applications and the Strike Out Application are successful.

II. Background

A. The Parties

(1) MediaTek

MediaTek's headquarters are in Taiwan and it makes and supplies cellular baseband chipsets globally. These chipsets are incorporated into devices like mobile phones by other manufacturers but they provide the technology which enables mobile phones to connect to cellular networks. Mr Daniel Cheng Yong Lim, a partner in Kirkland & Ellis International LLP (“ Kirkland & Ellis”) made two witness statements dated 15 July 2024 and 8 August 2024 in support of MediaTek's application to serve out before Master Brightwell. He made three further witness statements dated 28 October 2024, 8 December 2024 and 20 January 2025 in answer to the applications. I will refer to these witness statements as “ Lim 1”, “ Lim 2”, “ Lim 3”, “ Lim 4” and “ Lim 5”. Mr Lim gave evidence that as of 2024 Q1 MediaTek was ranked first in global smartphone chipset market share (by shipments) and that its products are important components for a number of products sold worldwide. Mr Pascal Lemasson, who is the Associate Vice-President (Sales Europe) for MediaTek, also made two witness statements dated 28 October 2024 and 8 December 2024 (“ Lemasson 1” and “ Lemasson 2”).

(2) Huawei

Huawei's headquarters are in mainland China and it makes and supplies handsets and infrastructure equipment which operate using 4G and 5G technology. But it also has a presence in the chipset market as a competitor to MediaTek. Mr Neville Cordell, who is a partner in A&O Shearman, made five witness statements dated 14 August 2024, 23 September 2024, 2 December 2024, 16 December 2024 and 15 January 2025 in support of Huawei's applications and I will refer to them as “ Cordell 1”, “ Cordell 2”, “ Cordell 3”, “ Cordell 4” and “ Cordell 5”. Mr Mark Heaney and Ms Jill Ge, who are also partners in AO Shearman, both made witness statements dated 23 September 2024 in support of the Applications (to which I will refer as “ Heaney 1” and “ Ge 1” respectively).

Mr Cordell gave evidence that Huawei is ranked first in the world as the owner of 4G and 5G patents which have been declared to be essential to the European Telecommunications Standards Institute (“ ETSI”) and are thus standard essential patents or “ SEPs”. He also gave evidence that it manufactures 100% of its handsets and the majority of its infrastructure equipment in China. Mr Cordell also gave evidence that on 13 October 2022 the UK Government ordered that all Huawei technology must be removed from the UK's 5G public network by the end of 2027. His evidence was that the removal of all of its technology was expected to be completed by the end of 2027.

B. The Dispute

Mr Lim's evidence was that the two largest chipset suppliers for mobile devices are MediaTek and Qualcomm, that their principal customers are the mobile device manufacturers or “ OEMs” and that the existing practice in the telecommunications industry has been for SEP holders to seek royalty-bearing licences from the “downstream” OEMs rather than “upstream” chipset manufacturers and that any licence which the SEP holder grants will license the use of the SEP in the chips as well as in the use of the mobile device (unless the SEP holder includes a “carve-out” for the chipset manufacturers).

It was also his evidence that towards the end of March 2022 Huawei approached MediaTek for the first time to require MediaTek to take a licence of the Huawei Portfolio and offered terms which he asserts were not...