![]() |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] [DONATE] | |||||||||
England and Wales High Court (Patents Court) Decisions |
||||||||||
|
THE FUTURE OF BAILII DEPENDS ON USERS LIKE YOU
If you want to be able to use BAILII in the future, please consider making a donation to celebrate BAILII's 25 years of providing free access to law.
Your donation, no matter the size, will help BAILII maintain the legal databases that you and many other users rely on. If every visitor this month gives just £5, it will have a significant impact on BAILII's ability to continue providing this vital service.
| ||||||||||
|
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Kigen (UK) Ltd v Thales Dis France SA [2022] EWHC 2846 (Pat) (08 November 2022) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2022/2846.html Cite as: [2022] EWHC 2846 (Pat) |
||||||||||
[New search]
[Context
]
[View without highlighting]
[Printable PDF version]
[Help]
2022] EWHC 2846 ( Pat) | ||
2022-000011 |
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS
COURT
7 Rolls Buildings Fetter Lane London EC4A 1NL |
||
2022 |
B e f o r e :
____________________
| KIGEN (UK) LIMITED |
Claimant |
|
| - and - |
||
| THALES DIS FRANCE SA (also known as GEMALTO SA) (a company incorporated under the laws of France) |
Defendant |
____________________
2nd Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP.
Telephone No: 020 7067 2900. DX 410 LDE
Email: info@martenwalshcherer.com
Web: www.martenwalshcherer.com
MR. MARK CHACKSFIELD KC and MR. THOMAS JONES (instructed by Kirkland & Ellis LLP) for the Defendant
____________________
Crown Copyright ©
MR. JUSTICE FANCOURT:
2022,
for a determination that the court has no jurisdiction, or should not exercise its jurisdiction, or should grant a stay, in relation to part of the claimant's claim.
patents,
some of which are standards essential
patents
("SEPs"), relating to eSIM technology. SIM technology is standardised by, among others, the GSM Association and some of Thales's
patents
are claimed to be essential to GSM standards. Both parties are members of the GSM Association and Thales is willing to grant licences to companies such as Kigen and has done so to most of its other competitors
patents
were identified at that stage as being mapped to the relevant specifications, including the two UK
patents
in suit. Correspondence, discussions and some negotiations took place, but no resolution was reached.
2022,
Thales offered Kigen a licence on confidential terms, said to be on terms substantially similar to licences with three major competitors. In April
2022,
Kigen made a confidential counter-offer. The claim form was issued on 24 May
2022.
In it, Kigen claimed declarations that the two UK
patents
were invalid and orders for revocation, alternatively declarations that they were not essential to the relevant standards and (not "or") a declaration that it was entitled to licenses of Thales's essential intellectual property rights ("Essential IPR") including the
patents
in suit, on FRAND terms, and a determination of those terms.
Kigen pleads that it infers from the letter of 29 March 2021 that Thales considers that, without a licence, Kigen's activities are infringing. No case of non-infringement is pleaded. Rather, Kigen pleads that it is entitled to a FRAND licence but that terms cannot be agreed, and that it is entitled to enforce in court the obligation on Thales to act in good faith by seeking a determination of FRAND terms. Paragraph 19 of the particulars of claim reads:
"Accordingly, the Claimant seeks the following by way of declaratory relief:
(a) a declaration that the Claimant is entitled to licences to the Essential IPR including thePatents
on Fair, Reasonable, and Non-Discriminatory ('FRAND') terms; and
(b) a declaration as to the terms of such licences."
patents
are found to be valid. It also asserts that there is no jurisdiction to grant declaratory relief in respect of Essential IPR, as there is no jurisdiction asserted in relation to
patents
other than the two UK
patents
in suit. Alternatively, it is said that England and Wales is not forum conveniens given Thales's offer to mediate the dispute through the WIPO.
"Further or alternatively, unless and until the Claimant gives an unqualified commitment and undertaking to enter into any licence determined by this court to be FRAND, no further steps should be taken in these proceedings which should be stayed pursuant to CPR Part 3, any further progress in the action being a disproportionate use of the Court's and the Defendant's resources and otherwise contrary to the Overriding Objective."
patents,
even though it would not have jurisdiction in relation to the validity of foreign
patents.
The pleaded claim is a contractual claim for a FRAND licence, not a defence to an infringement action.
2022,
Kigen's solicitors wrote:
"So that Kigen's position is clear, Kigen is prepared to take a FRAND licence from Thales on anypatent
found to be valid and essential by the English courts in these proceedings (after the conclusion of all potential appeals), such licence to be on whatever terms are then determined by the Court."
patents
were held valid and essential, then it was prudent to have the FRAND proceedings on foot.
patent
was held to be invalid and non-essential.
patents
that are held at trial to be valid and essential, Kigen is not now prepared to undertake that it will take a licence. That, again, was because Kigen wished and said that it is entitled to consider the position at the time when infringement is established and when it is put to its election. The bottom might have fallen out of the market, Mr. Purvis said, in which case Kigen might submit to an injunction and walk away.
patents
issues and the FRAND terms in circumstances in which Kigen has no obligation to take a licence once the terms are determined. Kigen's recent position is changed so that it may (and probably will) take a licence, but only once it has established that there is infringement.
patents
found to be valid and essential, then Kigen should be required to amend its claim so that it is clear that it is only claiming a FRAND licence to that extent. Thales says that if a full undertaking, consistent with the currently pleaded case, is given, the FRAND trial should take place first, since the terms are then plainly the principal issue that divides the parties.
2022]
EWCA Civ 1411. The reason is that given that the terms are required to be fair, reasonable and non-discriminatory, and the well-advised implementer is well able to work out roughly what the terms will be.
patents,
is the same, even if partial invalidity may affect the value of the licence. It is therefore not persuasive for Kigen to submit that it should not be required to decide whether it wants a licence until it knows what the terms are. That is particularly so as Kigen has issued a claim for a declaration that it is entitled to a licence of all Thales's Essential IPR on FRAND terms.
patents
are valid and essential is different, and it is the case that Kigen is now asserting but not the case that is pleaded. I accept that there is a real issue raised in the evidence as to the commercial impact of a finding that one or both of the
patents
in suit are invalid or non-essential.
2022
letter, which is to the extent that it is required to do so following a determination on validity and essentiality.
patent
issues will precede the FRAND trial, but that is a matter for later decision.
patent
issues that it has pleaded and these must be determined if they are not agreed.
patent
issues or the FRAND claim is seen as the priority, or both are to proceed in parallel, either entirely or to some extent, is a matter that, in my view, should be determined at the case management conference with the benefit of fully pleaded cases, costs budgets and likely litigation timetables. At that stage, it will be apparent whether or not Thales is alleging infringement in these proceedings. The judge hearing the CMC can consider whether, as I provisionally think, the ability of the parties to determine the commercial issues in this claim by agreement will be assisted by pleadings and disclosure on the FRAND claim, even if the
patent
issues are to be tried first. Thales can hardly complain about the cost of such steps, which would have been necessary for the WIPO mediation on FRAND terms that it wanted to take place.
2022, very shortly before the initial evidence was filed in support of the application. All the grounds relating to jurisdiction and forum non conveniens have failed.