Lenovo v Ericsson – the UK strikes back?

Hot on the heels of the CJEU's decision in BSH v Electrolux, which expanded the scope of EU courts' jurisdiction to consider disputes relating to foreign patents, the UK Court of Appeal has released its latest decision on interim FRAND licences. The decision confirms that implementers can generally seek declarations from the UK courts that a willing licensor would enter into an interim licence, and a declaration as to what the terms of an interim licence would be, in circumstances where the SEP holder is refusing to do so.  While previous decisions on interim licences, such as the Court of Appeal's judgment in Panasonic v Xiaomi, had been understood to be limited to the facts of those cases, this latest decision in Lenovo v Ericsson [2025] EWCA Civ 182 confirms the broad scope of the UK court's powers to grant such declarations.

Background

The dispute between Lenovo and Ericsson relates to the cross-licensing of the parties' respective FRAND portfolios, which is expected to result in Lenovo being a net licensee. Proceedings have been commenced in multiple jurisdictions, including the US Federal Court in the Eastern District of North Carolina, the US International Trade Commission (ITC), Brazil, Colombia and the UPC. Lenovo commenced proceedings in the UK on a range of issues, including infringement of its portfolio and a determination of the terms of a previous English law governed licence. Lenovo had also previously sought an injunction in the UK, which the Court of Appeal rejected last year.

Importantly for the present case, Lenovo had offered an undertaking to be bound by a UK court determined FRAND licence. As explained in the Court of Appeal's decision, this would inevitably be a cross-licence given the parties' respective portfolios. While Ericsson had not commenced infringement proceedings in the UK, the effect of Lenovo's actions was therefore that the UK court would determine a FRAND licence in respect of Ericsson's portfolio as well. Ericsson offered no equivalent undertaking to be bound by the terms of a UK court determined licence. Its position, as set out in the judgment, was that it was entitled to enforce its rights in whatever national courts it chose to do so and so was entitled to pursue proceedings in other jurisdictions – there was no particular reason that the UK courts should decide licence terms in this dispute.

The decision

Seeking to rely on the Panasonic v Xiaomi decision, Lenovo applied for declarations that: Ericsson was not acting in good faith by continuing to pursue proceedings overseas in the face of Lenovo's undertaking to be bound by the terms of a UK FRAND licence (the implication being that the principal reason for so doing would be to try to get licence terms that are better than FRAND); and a willing licensor in Ericsson's position would enter into an interim licence with Lenovo pending determination of those FRAND terms by the UK courts. Lord Justice Arnold agreed with Lenovo, granting the requested declarations.

In doing so, Arnold LJ considered whether they would serve a 'useful purpose' (the test required for such declaratory relief). Ericsson had argued that the declarations had no binding effect on them, such that Ericsson could simply ignore the declaration, and so there was no reason to expect that they would result in Ericsson actually entering into an interim licence with Lenovo. Arnold LJ considered that even though Ericsson could ignore such a finding from the UK courts, it would in practice be unlikely to do so.  He also noted that similar declarations in Panasonic v Xiaomi had resulted in the parties entering into an interim licence. Finally, he noted that Ericsson's position that the UK declaration would have no effect on it was inconsistent with it resisting Lenovo's application so vigorously, including at the appellate level.

Jurisdictional imperialism?

Lord Justice Arnold also considered the issue of comity and whether the grant of declarations relating to an interim licence was treading on the feet of other courts. In determining that the interim licensing approach is consistent with the principles of comity he commented:

"[i]f the declaration does induce Ericsson to reconsider their position and to grant Lenovo an interim licence, that would promote comity because it would relieve the courts and tribunals of the USA, Brazil and Colombia of a great deal of burdensome and wasteful litigation. If, on the other hand, Ericsson decide to ignore the declaration and to pursue the proceedings in the USA, Brazil and Colombia, it will be entirely for those courts and tribunals to make their own assessment of the parties’ conduct, including their conduct in the English proceedings, and to decide what, if any, relief to grant Ericsson for any infringements they may find established in the absence of a licence. Thus making the declaration would not be contrary to comity."

Acknowledging that the UK's approach is likely to attract criticism, Arnold LJ noted that while: 

"[a] critic might argue that, to that extent, a degree of jurisdictional imperialism is already hard-wired into the English courts’ approach to these issues. The declaration sought by Lenovo is less intrusive into the jurisdictions of foreign courts and tribunals than a global FRAND determination." 

It is also interesting to note that in the introductory section of the decision there appears to be a passing reference to the BSH v Electrolux case:

"it is (or at least was until very recently) generally accepted that, even if they have jurisdiction over the parties…the courts of state A are not competent to adjudicate upon a claim for infringement of a patent granted by state B at least if the validity of that patent is in issue."

It will be interesting to see whether the CJEU's expansive approach to jurisdiction over patent disputes will result in the UK courts responding in kind.