MediaTek v Huawei

Hearing date: 16 June 2025

APPROVED JUDGMENT

I. Introduction

On 18 March 2025 I handed down judgment in relation to three applications made by Huawei and one application made by MediaTek: see [2025] EWHC 649 (Pat) (the “ Judgment”). In this second judgment, I adopt the defined terms and abbreviations which I used in the Judgment and where I refer to paragraph numbers I intend to refer to paragraph numbers in the Judgment unless I state otherwise. I listed a one day hearing to deal with consequential matters on 16 June 2025.

On 10 April 2025 Huawei issued a further Application Notice seeking a second case management stay (the “ Second Stay Application”). Meade J did not have time to hear it at the hearing for expedition on 15 April 2025 and I agreed that it should be relisted before me. Huawei relied on four new witness statements and served a substantial Skeleton Argument in support of the Second Stay Application.

The parties were able to agree the issues relating to costs. However, Huawei opposed MediaTek's application for permission to amend the Particulars of Claim on the basis that Claim (6) against the Second Defendant should be struck out. Huawei also relied on draft Grounds of Appeal (the “ Grounds of Appeal”) against my original judgment. The Second Stay Application occupied most of the Court time on 16 June 2025. Nevertheless, I heard brief submissions in relation to Huawei's application for permission to appeal. I also heard MediaTek's application for permission to amend the Particulars of Claim.

II. The Second Stay Application

I refused a case management stay after hearing argument at the hearing in December 2024: see the Judgment, [214] to [220]. In their Skeleton Argument dated 12 June 2025 Mr Thomas Raphael KC, Mr Henry Forbes Smith KC and Ms Jennifer Dixon, who appeared on behalf of Huawei, argued that there had been a material change of circumstances. They also submitted that I should recall the entire Judgment under the Re Barrell jurisdiction, and that I should reconsider the question of forum non conveniens and now refuse jurisdiction.

(1) Change of Circumstances

It was common ground that in order to persuade the Court to consider afresh whether to exercise its decision to grant a stay on case management grounds, it was necessary for Huawei to show that there had been a material change of circumstances since the first hearing. I also have at the forefront of my mind the passage which I quoted from the judgment of Males LJ in Athena: see [144]. It is the function of the Court to hear and decide cases and I would require a powerful reason to stay the English Claim now having decided once to accept jurisdiction and refuse a stay. The Defendants advanced three reasons why I should do so.

(i) Change in the law

The Defendants submitted that there had been a change in the law because in Optis v Apple [2025] EWCA Civ 552 Arnold LJ had accepted that the decision of the Court in the US state of Delaware could be supplemented in England: see [257]. I reject that submission. In deciding whether to grant a stay originally I took into account the possibility that the English Court would give effect to the findings of the Chinese Court on Chinese rate-setting: see [83], [84] and [215]. Furthermore, Arnold LJ was not laying down any general principle which involved a fundamental change in the law. He was deciding what the “least-worst option” was in that case.

(ii) The Shenzhen Claim

The Defendants also submitted that there had been a material change of position in the Shenzhen Claim and that the Shenzhen Court would now calculate and set out a global rate in fixing a rate for both parties' Chinese patents. There was a dispute of fact about this on which the parties' English and Chinese witnesses filed further evidence. Mr Lykiardopoulos accepted that there may be inputs into the Shenzhen Court's decision which are global but that does not convert the Shenzhen Claim into a global rate-setting action.

I accept that the Shenzhen Court may receive evidence from the parties of global rates. I cannot be satisfied, however, on the basis of the evidence before me that the Shenzhen Court will decide what a global rate will be for all of the parties' worldwide patents. Moreover, I cannot decide whether that will give rise to an issue estoppel in the present proceedings. Mr Raphael did not go so far as to suggest that the Shenzhen Court was bound to accept global rates as reliable comparables for fixing a Chinese rate and the Shenzhen Court may reject those rates and determine the Chinese rates exclusively by reference to comparables of Chinese rates.

But even assuming in the Defendants' favour that the Shenzhen Court will decide what global rates are in fixing Chinese rates, I accept Mr Lykiardopoulos's submission that this does not convert a Chinese rate-setting action into a global action and it would require MediaTek's consent before it would apply worldwide. Mr Justice Meade put this point directly to the Defendants' counsel at the CMC on 15 April 2025 and he accepted this without qualification: see page 71, lines 13 to 16.

In my judgment, therefore, there has been no material change of circumstances. There have obviously been developments in the Shenzhen Claim since I heard the Applications in December 2024. But that does not mean that the Defendants are entitled to a stay of proceedings. If it did, the Defendants would be back before this Court every time a hearing took place in China trying to re-argue the question whether it was appropriate to grant a stay.

(iii) The Offers

Before the CMC on 15 April 2025 at which Meade J ordered an expedited trial, Huawei made two alternative offers to MediaTek. They were set out in the first witness statement of Ms Jane Mutimear dated 10 April 2025 (“ Mutimear 1”). Ms Mutimear is a partner in Bird & Bird LLP who also act for the Defendants in this litigation and the offers which she put forward are as follows:

“a. For the reasons explained in paragraphs 10–12 of Xu Jing 5, the Shenzhen judgment, which is awaited, will set out what the global rates would be for both parties' one-way licences before going on to determine the rates which will apply for China. Huawei therefore undertakes to enter into a global cross-licence on the terms determined by the Shenzhen court (i.e., on the rates determined by the Shenzhen court for each party's respective global 4G/5G portfolios). The licence terms determined by the Shenzhen court would apply to past sales, and for sales going forward to end of 2030, unless a different forward-looking term is set by the Shenzhen court in its judgment.

b. Alternatively, as explained in paragraphs 11–12 of Xu Jing 5, if the parties file a joint petition to the Shenzhen court, the Shenzhen court will almost certainly re-open the proceedings in order to formally determine the terms of a global cross-licence. As explained in paragraphs 11–12 of Xu Jing 5, this process is unlikely to cause much (if any) delay to the Shenzhen court's determination, given that both parties have advanced valuation cases which calculate global rates and then derive China rates from those global rates. If MediaTek consents, Huawei would agree to: (i) the Shenzhen court formally determining the terms of a global cross-licence; and (ii) undertake to enter into a cross-licence with MediaTek on the global terms determined by the Shenzhen court.”

In her second witness statement dated 5 June 2025 (“ Mutimear 2”) Ms Mutimear recorded that Huawei had made two further offers to MediaTek. She made it clear that the two original offers stood but that the third and fourth offers were intended to complement them:

“Huawei undertakes to enter into a global cross-licence on the terms determined by the Shenzhen Court for China (i.e., the China rates determined by the Shenzhen court for each party's respective 4G/5G portfolios in China would apply globally). The licence terms (including China rates) determined by the Shenzhen court would apply to past global sales, and for global sales going forward to end of 2030, unless a different forward-looking term is set by the Shenzhen court in its judgment.”

“On the condition that: (i) these proceedings are stayed pending the judgment by the Shenzhen court; (ii) MediaTek agrees to a stay or dismissal (without prejudice) of all non-rate setting actions brought by both parties globally, including but not limited to infringement and antitrust actions; and (iii) MediaTek undertakes to enter into a licence for products sold or manufactured in China on the terms determined by the Shenzhen court, Huawei would undertake to offer a licence for the rest of the world on terms determined by the English Court in these proceedings.”

In my judgment, the four offers which Huawei have made do not amount to a material change of circumstances. There is no reason why Huawei could not have made these offers before the hearing in December 2024. Furthermore, it should not be open to a party to reopen an earlier...