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 | 08 June 2021 |
| Neutral Citation | [2021] EWHC 1541 (Pat) |
| Date | 08 June 2021 |
| Docket Number | Case No: HP-2019-000014 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 1541 (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
THE HON. Mr Justice Mellor
Case No: HP-2019-000014
Ms. Sarah Abram and Mr. Thomas Jones (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: 21 st May 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 concerned with two applications relating to the FRAND part of this case which I heard at CMC 5 on 21 st May 2021. I dismissed both applications for reasons to be given later. This judgment contains those reasons.
I previously heard CMC 3 on 2 nd March 2021 (Judgment at [2021] EWHC 493 (Pat)) and CMC 4 on 1 st April 2021 (giving rise to Judgments at [2021] EWHC 889 (Pat) and [2021] EWHC 918 (Pat)), both of which were on the FRAND part of the case. At these CMCs, there were various disclosure issues which have had to be resolved, but the recurring issue has involved disputes over the Claimants' case as to the essentiality analysis they seek to rely upon at Trial 3, at which the FRAND and some other issues are to be determined. I return to this in the context of the second application.
The history of these proceedings to date
The claim was commenced on 23 April 2019 and it was clear from the endorsement on the Claim Form (and, naturally, confirmed by the Particulars of Claim) that the Claimants sought to establish that the terms of the licence on offer to a pool of patents called the MCP Pool are FRAND.
As originally constituted, the claim alleged infringement of three UK Patents drawn from the MCP Pool, two owned by the First Claimant and one by the Second Claimant. The Particulars of Claim also identified the Second Claimant as the administrator of the MCP Pool, and the entity which offers licenses to the MCP Pool patents. As indicated in the heading, the action has continued only against two sets of Defendants: the Oppo/OnePlus Defendants and the Xiaomi Defendants.
The first CMC came before Mr Nicholas Caddick QC and his Order dated 19 December 2019 case managed the action into three trials. Trial 1 was due to be heard in December 2020 concerning EP'657, owned by Mitsubishi, but was settled shortly before trial and that patent has played no further part in this action. Trial 2 was originally to deal with EP'142 and EP'259, but EP'689 (being the parent patent of EP'259) was added. Trial 2 was heard by me in March 2021, but in fact was two trials heard back to back, with part 1 dealing with EP'142 (9 th–17 th March) and part 2 dealing with EP'259 and EP'689 (19 th–30 th March). Trial 3 has been listed for three weeks in October 2021 to deal with FRAND and other issues concerning relief.
The Xiaomi Defendants bring the first application I have to deal with. It arises from the Judgment I handed down on 26 th April 2021, [2021] EWHC 1048 (Pat) in the first part of Technical Trial 2 which concerned EP'142, a patent owned by Sisvel, the Second Claimant. In that judgment I held that EP'142 was valid, but not infringed and therefore not essential to the 4G standard. I made an Order on the same date adjourning the determination of the appropriate form of order to a further hearing to be fixed. I understand that hearing has now been listed to be heard 6–7 July 2021, possibly in the expectation that by then I will have also handed down my Judgment in part 2 of Trial 2 regarding EP'259 and EP'689, two patents owned by the First Claimant.
In accordance with Mr Caddick QC's directions, the Claimants served their Statement of Case on FRAND on 13 March 2020 and set out their case based on a series of licences alleged to be comparable. A dispute arose which led to a second CMC which was heard by Mann J and by his Order dated 22 July 2020, he gave a fresh set of directions down to the FRAND Trial 3. On 21 May 2020 the Xiaomi and Oppo Defendants served their Responsive Statements of Case on FRAND in draft because at that stage they were seeking to preserve their challenge to jurisdiction which was later resolved. In very broad summary, both sets of Defendants disputed the comparability of the licenses relied upon by the Claimants, pleaded some of their own but also pleaded top-down cross checks by way of confirmation. A further dispute arose, this time as to confidentiality. Norris J. ruled on that dispute in July 2020, but the dispute was only finally resolved on appeal in November 2020. This significantly delayed the completion of the FRAND pleadings and the Claimants' Reply Statement of Case on FRAND was only served on 9 February 2021. This was an extensive document and gave rise to a number of arguments. However, a principal issue was the fact that the Claimants pleaded that the patents in the MCP Pool had a 100% essentiality rate.
This was a focus of CMC 3 which I heard on 2 nd March 2021, which led to my ruling (Judgment at [2021] EWHC 493 (Pat)). At CMC 3, the Claimants mentioned they intended to apply to add a further patent into the action. Since I scheduled a further CMC on the FRAND issues to be heard on either 31 st March or 1 st April 2021, immediately after Trial 2 concluded, I indicated the Claimants could bring their intended application before the Court on that occasion.
Accordingly, the day after that hearing the Claimants issued an application seeking to add a claim for infringement of a further patent into the action, EP'640, owned by a subsidiary of the Second Claimant, 3G Licensing SA. This came before me on paper, just before the start of Trial 2. I adjourned the hearing of that application to a date to be fixed after I had handed down judgment on the two parts of Trial 2.
Xiaomi's Application
The Xiaomi Defendants claim that the consequence of my judgment on EP'142 is that the Second Claimant can be dismissed from this claim. More specifically, Xiaomi's Application Notice seeks the following orders:
1. Variation of paragraph 1 of [my Order] of 26 April 2021, such that it dismisses the Second Claimant's claim and stays all further matters consequential upon the trial relating to EP 142 to a form of order hearing to be listed.
2. If pursuant to Trial 2 the First Claimant establishes that it owns at least one valid patent which is essential to the relevant standard and would be infringed by the acts alleged, the First Claimant's claim for relief shall proceed to trial and be determined at Trial 3. Trial 3 shall be limited to such a determination.
3. Further to paragraph 2, consequential directions for the First Claimant to serve amended pleadings and for the future conduct of Trial 3.
There was some debate at the hearing as to the precise effect of the limitation sought in paragraph 2. The basis for the orders sought was summarised in Box 10, pending service of a fuller witness statement, and included this passage:
‘Judgment is pending on the remaining patents in suit, which both belong to Mitsubishi. However, it is clear that a FRAND Trial can only proceed on the basis of a finding that one of Mitsubishi's patents is valid, essential and infringed. If there is such a finding, then based on the Claimants' pleaded case, Mitsubishi has no entitlement to seek relief in the form of a licence to the MCP Pool and is only entitled to seek a bilateral licence to its own patent portfolio.’
This passage indicates the original intention at least was to limit the First Claimant to a bilateral licence to its own patent portfolio. This was confirmed in the witness statement served in support – the Eighth Witness Statement of Stephen Baldwin. At [19], he summarised the Xiaomi Defendants' position as follows:
‘(a) Sisvel has no right or standing to participate in any FRAND trial that is based solely on the finding of a valid, essential and infringed patent owned by Mitsubishi and the Claimants have provided no proper basis to believe otherwise;
(b) Mitsubishi is not entitled to seek a licence to the entire MCP Pool in circumstances where no patent belonging to any other MCP Pool patent owner has been found valid, essential and infringed, and...
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