Panasonic v Xiaomi (EWHC (Pat), [2024] EWHC 1733 (Pat), 2024)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The High Court (Patents Court) declined to declare that a SEP holder which, like the implementer, has undertaken to enter into the global licence to be settled by the English court must grant that implementer an interim licence pending the FRAND trial. Leech J held that good faith performance of the FRAND undertaking does not require such a licence and that, even if it did, the declaration would serve no real purpose other than to influence the infringement proceedings pending before the German courts and the UPC. The judgment belongs to the series of first instance decisions on interim licences handed down in 2024 (paras 82 to 85) and was followed by an appeal in the same case.

Facts and procedure

Panasonic holds patents declared essential to the ETSI 3G and 4G standards. In 2023 it brought a declaratory FRAND claim in Beijing, three infringement actions in each of the Mannheim and Munich local divisions of the UPC, three in each of the Mannheim and Munich Regional Courts, and then the English claim of 31 July 2023 (paras 6 and 7). By an order of 8 November 2023 the parties gave reciprocal undertakings to the court to enter into the licence to be determined at the FRAND trial, listed from 28 October 2024 (paras 12 and 13). Panasonic nevertheless declined to undertake not to enforce injunctions obtained in Germany or before the UPC (para 9). Xiaomi then sought a declaration that a willing licensor would grant it an interim licence, offering an immediate payment, a payment into court and a true-up mechanism (paras 1, 18 and 22). Panasonic opposed the declaration and put forward an offer modelled on the German Orange Book mechanism (paras 2, 20 and 25).

The applicable law

Clause 6.1 of the ETSI IPR Policy, governed by French law, operates as a stipulation pour autrui, and the experts agreed on the duty of good faith under Article 1104 of the French Civil Code (paras 37 and 38). The judge recalled that the declaratory jurisdiction requires utility and that a declaration made solely to influence a foreign court is excluded (paras 77 to 81). The parties accepted that the application sought final relief, subject to a high degree of assurance test (para 87). Interim payments under CPR 25.7 were held to be unavailable (para 90).

Question

Does good faith performance of the FRAND undertaking require the SEP holder, once reciprocal undertakings have been given, to grant an interim licence, and would a declaration to that effect serve a legitimate useful purpose before the English court?

Decision

The judge accepted the unchallenged evidence of Panasonic’s solicitor as to its intentions (paras 99 and 100) and was not satisfied that pursuing the German actions would, objectively, frustrate the FRAND undertaking (para 101), nor that Panasonic’s offer was obviously non-FRAND (para 102). He accepted that an interim licence falls within the « irrevocable licences » of clause 6.1 but declined to imply an obligation to grant one: the clause only requires a FRAND offer capable of acceptance, and compelling an interim licence could encourage hold out (para 103). Good faith therefore does not require an interim licence (para 104). In any event, the declaration would serve no useful purpose, carried a « strong flavour of anti-suit » and would amount to jurisdictional imperialism, the German courts being the natural forum for that defence (paras 111 and 112). The declarations and the amendments were refused and Panasonic’s application was granted (para 114).

Key points for practice

• On this judgment, reciprocal undertakings before the English court do not prevent the SEP holder from pursuing injunction claims before the German courts and the UPC (paras 101 and 104).
• The judge distinguished the obligation to make a FRAND offer capable of acceptance from an obligation, which he rejected, to grant a licence immediately (para 103).
• A declaration whose main utility would be to influence a foreign court runs up against comity (paras 111 and 112).
• Practical point: the implementer remains free to rely before the German courts on its undertakings to the English court as evidence of its willingness to take a licence (para 101).

Relevance before the UPC

The judge expressly left it to the German courts and to the UPC local divisions seised to assess the effect of the reciprocal undertakings on the injunction claims (paras 101 and 111).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

ETSI IPR Policy

clause 6.1

National law

French Civil Code, Arts 1104, 1205 and 1206; Civil Procedure Rules, rr 25.1(1)(b), 25.7 and 40.20; § 315 BGB

Case law cited

CJEU, Huawei v ZTE, C-170/13; Unwired Planet v Huawei [2020] UKSC 37; Optis v Apple [2022] EWCA Civ 1411; Nokia v OnePlus [2023] EWHC 1912 (Pat); Teva v Novartis [2022] EWCA Civ 1617; TQ Delta v ZyXEL [2019] EWCA Civ 1277; Lenovo v InterDigital [2024] EWHC 596 (Ch); Lenovo v Ericsson [2024] EWHC 846 (Ch); Howden v ACE [2012] EWCA Civ 1624

Related decisions

• Panasonic v Xiaomi, Court of Appeal, 3 October 2024, the appeal in the same case, declaring that a willing licensor in Panasonic’s position would grant an interim licence.
• Optis v Apple, Court of Appeal, 27 October 2022, relied on to reject reasoning that would encourage hold out.
• Unwired Planet v Huawei, UK Supreme Court, 26 August 2020, basis of the contractual analysis of clause 6.1.
• Huawei v ZTE, CJEU, 16 July 2015, framework applied by the German courts according to the experts.

Prepared by Dhenne Avocats from the text of the decision (National Archives), consulted on 11 October 2026. Only the official text is authoritative.