Panasonic v Xiaomi (EWCA, [2024] EWCA Civ 1143, 2024)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Court of Appeal of England and Wales, by a majority, reversed the judgment of Leech J of 5 July 2024 and declared that a willing licensor in Panasonic’s position would enter into an interim licence with Xiaomi, on terms which the court set itself. Arnold LJ, with whom Moylan LJ agreed, held that a SEP holder which has invoked the English court’s jurisdiction to set a global licence, and has undertaken to enter into the licence so determined, breaches its duty of good faith under clause 6.1 of the ETSI IPR Policy by pursuing injunction claims before the German courts and the UPC (para 101). Phillips LJ dissented and would have dismissed the appeal (para 110). This was the first such application before the English courts (para 1).

Facts and procedure

Panasonic holds a portfolio of SEPs declared essential to the 3G and 4G standards (para 33). On 31 July 2023 it issued the English claim for a determination of global FRAND terms (paras 34 and 35) and infringement claims in the Mannheim and Munich Local Divisions of the UPC and the Mannheim and Munich I Regional Courts (para 43). On 8 November 2023 both parties gave the court unconditional undertakings to enter into the licence determined to be FRAND at trial (para 36); Panasonic declined to undertake not to enforce injunctions obtained in Germany or the UPC (para 39). Xiaomi offered an interim licence with immediate payment of royalties at its own rate plus interest, subject to adjustment (para 57); Panasonic proposed a final licence running to 2029 against payment in full of the sum it claimed (para 59). On 13 September 2024 Panasonic reduced its demand to 62% of the original lump sum (para 60).

The applicable law

Clause 6.1, governed by French law, is a stipulation pour autrui for the benefit of implementers (paras 18 to 20), and the FRAND obligation extends to the negotiating process (para 21). The experts agreed on the requirement of good faith under Article 1104 of the French Civil Code, assessed in concreto (para 48). The power to grant a declaration (CPR r 40.20) turns on whether it serves a useful purpose (para 27), and it may not be made solely to influence a foreign court (para 29).

Question

Does good faith under clause 6.1 require the SEP holder, once reciprocal undertakings have been given, to grant an interim licence, and would a declaration to that effect serve a useful purpose consistent with comity (para 61)?

Decision

Arnold LJ characterised the SEP regime as a liability regime in which an injunction serves only to secure the financial remedy (para 79), the implementer being entitled to a continuous licence from the first day (para 80). Since a licence was certain in the near future, pursuing the foreign proceedings could only be aimed at securing better terms than the Patents Court would set (para 82); the focus is on the SEP holder’s conduct, not on what the foreign courts might decide (para 83). That conduct was « indefensible » and inconsistent with good faith (para 86). The declarations would serve a useful purpose by causing Panasonic to reconsider its position (para 90), and comity was no bar (para 97). The court set the interim terms: Panasonic’s proposed terms for the final licence, for the period from 2011 until the court-determined licence takes effect, with a royalty midway between Xiaomi’s offer and the pro rata share of Panasonic’s demand of 13 September 2024, subject to later adjustment (paras 99 and 100). The appeal was allowed (para 102). Phillips LJ considered that Panasonic had never undertaken to grant an interim licence, that « interim FRAND » had no basis in authority and that an anti-suit injunction would be the more conventional remedy (paras 104 to 109); Moylan LJ preferred a declaration to such relief (para 111).

Key points for practice

• On the majority view, pursuing foreign injunctions after accepting in advance the licence to be set by the English court is a breach of FRAND good faith (paras 83, 86 and 101).
• The declaration differs from an anti-suit injunction: it does not prevent the foreign proceedings and is intended to regulate the parties’ commercial position pending judgment (paras 67 and 68).
• Practical point: an offer of an interim licence with immediate payment, set against a demand for payment in full, weighed in the assessment of the SEP holder’s good faith (paras 84 and 85).

Relevance before the UPC

The court observed that the UPC’s approach to the FRAND defence remains to be seen (para 54) and left it to the local divisions seised to assess the parties’ conduct, including their conduct in the English proceedings (para 97).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

Regulation (EU) No 1215/2012

Arts 24(4) and 27

ETSI IPR Policy

clauses 3.1, 3.2 and 6.1

National law

French Civil Code, Art. 1104; Civil Procedure Rules, rr 25.1(1)(b), 25.7 and 40.20; § 253(2) ZPO; § 315 BGB

Case law cited

CJEU, Huawei v ZTE, C-170/13; Unwired Planet v Huawei [2017] EWHC 2988 (Pat), [2018] EWCA Civ 2344 and [2020] UKSC 37; InterDigital v Lenovo [2024] EWCA Civ 743; Optis v Apple [2022] EWCA Civ 1411; Teva v Novartis [2022] EWCA Civ 1617; Messier-Dowty v Sabena [2000] 1 WLR 2040; Howden v ACE [2012] EWCA Civ 1624; Deutsche Bank v Highland Crusader [2009] EWCA Civ 725; Motorola v Ericsson [2024] EWCA Civ 1100; National Commercial Bank Jamaica v Olint [2009] UKPC 16; Koza v Kaza Altin [2020] EWCA Civ 1018; National Crime Agency v N [2017] EWCA Civ 253; Nokia v OnePlus [2023] EWHC 1912 (Pat); Panasonic v Xiaomi [2023] EWHC 2872 (Pat)

Related decisions

• Panasonic v Xiaomi, High Court (Patents Court), 5 July 2024, the first instance judgment reversed on appeal.
• Unwired Planet v Huawei, UK Supreme Court, 26 August 2020, the analysis of clause 6.1 relied on as the starting point.
• InterDigital v Lenovo, Court of Appeal, 12 July 2024, cited for the implementer’s entitlement to a licence from the first day of implementation.
• Motorola v Ericsson, Court of Appeal, 30 September 2024, cited to distinguish the declaration from anti-suit relief by the back door.

Prepared by Dhenne Avocats from the text of the decision (approved judgment, reproduced by The Sedona Conference), consulted on 11 October 2026. Only the official text is authoritative.