Mitsubishi Electric Corporation (a company incorporated under the laws of Japan) v Archos SA (a company incorporated under the laws of France)
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mellor,Mr. Justice Mellor |
| Judgment Date | 13 April 2021 |
| Neutral Citation | [2021] EWHC 889 (Pat) |
| Docket Number | Case No: HP-2019-000014 |
| Date | 13 April 2021 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 889 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY (ChD)
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Mellor
Case No: HP-2019-000014
Ms. Sarah Abram and Mr. Edward Cronan (instructed by Bird & Bird LLP) for the Claimants
Mr. Daniel Piccinin (instructed by Taylor Wessing LLP) for the Fourth to Eighth Defendants
Mr. Daniel Alexander QC and Mr. William Duncan (instructed by Kirkland & Ellis International LLP) for the Ninth to Twelfth Defendants
Hearing date: 1 st April 2021
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE HON Mr Justice Mellor
This judgment is an amalgam of a series of rulings I made on 1 st April 2021, expanded to give further detail of my reasoning. The hearing on 1 st April was a continuation of the third CMC in the FRAND part of this case which took place originally on 2nd March 2021. I issued a short judgment arising from that first hearing on 4 th March 2021 ( [2021] EWHC 493). I repeat the relevant background from that judgment because most of it is equally pertinent now:
“3. The Claimants originally set out their case on FRAND in a Statement of Case dated 13 th March 2020. At this stage, the Claimants alleged that the MCP Pool licence was FRAND, as demonstrated by the fact that numerous implementers had signed up to its terms. The Claimants relied on 23 licenses they alleged to be comparable.
4. After the Defendants served their Responsive Statements of Case on FRAND in May 2020, the Claimants brought the matter back before Mann J at a second CMC in July 2020, complaining that the Defendants' Statements of Case were deficient. Mann J agreed and ordered the Defendants to serve revised Statements of Case on FRAND articulating their positive cases. These revised Statements of Case were served on 18 December 2020. As I understand the position, the reason for the delay was a dispute over confidentiality, on which Sir Alastair Norris gave a judgment on 9 th October 2020 and an appeal to the Court of Appeal was dismissed on 19 th November 2020, although a refinement to the confidentiality regime was suggested and has been adopted. The time taken up resolving those confidentiality issues has resulted in significant compression of the steps which needed to be taken in the lead up to this CMC.
5. Having received the Revised Responsive Statements of Case on FRAND from the two sets of Defendants, I understand that the Claimants wrote on 23 rd and 24 th December 2020 raising a series of questions arising from these revised statements of case. The Defendants rejected all criticisms by letters dated 6 th January 2021. Against that backdrop, the Claimants then served an extensive Reply Statement of Case on 9 th February 2021. Although the Defendants complain that the Reply Statement of Case sets out two new cases which ought to have been pleaded in the Claimants' original statement of case, they do not seek any relief in that regard.
6. Then on 12 th and 15 th February 2021, the Claimants served three Requests for Further Information (‘RFI’). One of the 12 th February RFIs was directed to Xiaomi and it is said raises over 100 individual requests.
7. The other RFI dated 12 th February is directed to Oppo's Revised Responsive Statement of Case on FRAND, and the RFI dated 15 th February is directed to Oppo's schedules to that Statement of Case. Between them the RFIs raise over 100 requests of Oppo.
I went on in that Judgment to explain why I ordered the Xiaomi Defendants to answer two particular requests – Requests 14 and 15. These requests concerned certain essentiality rates pleaded by Xiaomi, which were 18.15% for the MCP Pool and 23.5% for the 3G/4G stack, and for two particular entities. (I interpolate that the figure of 18.15% has now been identified to include a typographical error and the correct figure is 18.5%). In brief, my reason for ordering those requests to be answered was so that the Court was in a position to exercise its active case management powers in relation to any ‘patent counting’ case which Xiaomi might be running, for the reasons set out by Arnold J (as he then was) in TQ Delta v ZyXEL Communications UK Ltd [2018] EWHC 3651. As I said at [16] of my previous judgment:
In agreement with the indication given by Arnold J. in TQ Delta, I take the view that at least the methodology sought to be employed in any essentiality review should be pleaded. If pleading out the methodology requires a worked example yielding a particular figure like 18.15%, so be it. It can be made clear that the precise methodology may change along with the particular inputs when it comes to expert evidence, but I remain of the view that at least the basic methodology needs to be pleaded.
I reinforced the point at [19]:
If it is not already clear from what I have said above, the methodology proposed to be employed in any essentiality review must be pleaded as soon as possible so that the evidence required to prove the results of such a review can be identified and suitable case management directions can be given in good time within the directions down to the FRAND trial already in place.
I will assume that the Xiaomi Defendants responded as best they could to Requests 14 and 15, but in their responses, they made the valid point that their case on essentiality would depend on how the Claimants sought to justify their case on essentiality. One of the two new cases which had emerged in the Claimants' Reply Statement of Case on FRAND was that they alleged a 100% essentiality ratio for the MCP Pool.
At this hearing, the Claimants sought to downplay the significance of that plea. They were very keen to emphasise that in their original FRAND statement of case they pleaded that the terms of the MCP Pool licence are FRAND and in support of that they pleaded specifically that at least one member of each of the said patent families is subject to an independent review process for determination of essentiality to the UMTS and/or LTE standards.
That point was made in support of a submission by the Claimants that the Claimants' primary case has always been based on the MCP Pool licences that have already been entered into plus some further comparables. They say that the issue that has now arisen about the 100% essentiality ratio is not really part of their primary case and is at the outer edge of the FRAND case.
It is true that this essentiality ratio forms part of the Claimants' alleged ‘proper’ top-down cross-check. It is pleaded in this way, at [135](b)(v) of the Claimants Reply Statement of Case on FRAND (with information alleged to be confidential redacted):
(v) No reduction for non-handset or non-essential patent families is appropriate for the MCP numerator. The MCP Pool only comprises families which relate to handset technology, and families within the MCP Pool are subjected to detailed essentiality analysis such that an assumed essentiality rate of 100% is appropriate. Further, or in the alternative, the Claimants will say that any essentiality analysis of the kind performed, and at the level of detail performed, such as to assess an industry wide essentiality rate would result in a 100% essentiality rate observed in the MCP Pool by reason of the aforesaid. In respect of the said detailed essentiality analysis performed on MCP Pool patents:
(I) Unless the patentee can prove that its patent family has been confirmed as essential by another major Pool (such as Avanci or Via), at least one patent from each family is submitted to an independent third-party patent consultant for review, to determine its essentiality before being admitted to the MCP Pool. A fee being payable for each patent reviewed.
(II) Such consultants comprise specialist law firms and/or patent attorneys (listed in the Response to Requests 4–8 in the Claimants' Response to the Fourth, Sixth and Eighth Defendants' Request for Further Information Concerning the Claimants' Statement of Case on FRAND dated 7 May 2020).
(III) The hours spent on each review varies xxxxxxxxxxxxxxxxxxxxxx, depending on the complexity of the patent and the volume of materials which may be submitted in support. This is considerably more time than is afforded in many of the third-party patent reviews often relied upon as part of an essentiality evaluation for a top-down analysis,...
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Mitsubishi Electric Corporation (a company incorporated under the laws of Japan) v Archos SA (a company incorporated under the laws of France)
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