Case Digest: Mediatek Inc v Huawei Technologies Co Ltd

<center><span class="news-text_italic-underline">Judgment Date: 18 March 2025</span></center>

‍

In this case, the claimants had previously issued claims in China regarding patent infringement and fair, reasonable and non-discriminatory (“<span class="news-text_medium">FRAND</span>”) determinations. After negotiations for a Standard Essential Patent (“<span class="news-text_medium">SEP</span>”) portfolio licence failed, the claimants initiated proceedings in the UK. They sought damages for patent infringement, challenged the defendants’ patent validity and requested the determination of a global cross-licence on FRAND terms. The claimants were granted permission to serve their claim on the first defendant (“<span class="news-text_medium">D1</span>”) outside the jurisdiction and by alternative means on D1's solicitors.

The defendants contested the jurisdiction of the English courts, arguing that the claims (except the invalidity claim) should not be heard in England and that service outside the jurisdiction should be set aside. They also applied for a stay of the proceedings on case management grounds.

The court ruled that the English court was the appropriate forum for the claims related to UK patents and FRAND determinations. It confirmed the court’s jurisdiction to hear the case and upheld the service of the FRAND claims outside the jurisdiction. While China was an available forum, the English court found no compelling reason to depart from its jurisdiction. However, the court set aside the part of the service order that allowed alternative service on D1's solicitors, as no special circumstances justified this approach.

Held:

The appeal challenging the court's jurisdiction was dismissed. The claimants' patent infringement and FRAND claims were validly served and the English court was the appropriate forum to hear them. The court refused to stay the proceedings pending the outcome of the Chinese claims, finding that the English jurisdiction was more closely connected to the dispute. However, the part of the service order permitting alternative service was set aside due to a lack of special circumstances.

Key Legal Principles:

1. <span class="news-text_medium">Service Out of Jurisdiction:</span> The claimants had to establish that there was a serious issue to be tried, that the claim fell within one of the CPR PD 6B gateways and that the English court was the appropriate forum to hear the case.
2. <span class="news-text_medium">Forum Conveniens:</span> The burden of proving that another forum was more appropriate was on the defendants. The English court found that it was the proper forum, given the connection to UK patents and the FRAND determination.
3. <span class="news-text_medium">Stay of Proceedings:</span> A stay of proceedings would only be granted in rare and compelling cases. The court found no such reasons to stay proceedings pending the resolution of the Chinese claims.
4. <span class="news-text_medium">FRAND Claims:</span> The FRAND claims were linked to the patent infringement claims and were appropriately served in accordance with CPR r.63.14(2).