Alcatel Lucent v Amazon (EWCA, [2025] EWCA Civ 43, 2025)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Court of Appeal (England and Wales) allowed Amazon to plead against Nokia a claim for a declaration that a willing licensor would grant it an interim licence of a video patent portfolio subject to a RAND commitment, together with a claim for specific performance of that licence. Arnold LJ held that the claim has a real prospect of success and that Panasonic v Xiaomi is arguably indistinguishable, even though Nokia had neither sued on its SEPs in England nor given any undertaking to the court. The judgment thus opens, at the pleading stage, the route to an interim licence under a RAND commitment relating to ITU-T standards and governed by Swiss law.

Facts and procedure

Nokia holds a global video portfolio comprising patents declared essential to the ITU-T H.264/AVC and H.265/HEVC Recommendations, under declarations governed by Swiss law, and non-essential patents (paras 7 to 9). From 31 October 2023 Nokia sued Amazon in Brazil, Germany, the ITC, the UPC, India and Delaware; the Munich I Regional Court granted an injunction which was enforced on 7 October 2024 (paras 12 to 19). In England, Alcatel sued Amazon on three non-essential patents; Amazon counterclaimed against Nokia and undertook to the court to enter into the licence determined by the Patents Court (paras 10, 21 and 22). Zacaroli J refused the amendments concerning the interim licence as insufficiently arguable (paras 27 to 30). On appeal, Amazon narrowed its offer to the scope of Nokia’s offer of 30 May 2024, limited to the SEPs, for a sum to be set by the court (para 33).

The applicable law

An amendment is permitted unless it raises a claim with no real prospect of success, bearing in mind that this is a rapidly developing area of law (para 35). Swiss law, being a question of fact, is assumed to be as Amazon pleads: contracts for the benefit of third parties, good faith negotiation and Article 2 of the Civil Code, and specific performance in favour of the third party under the Article 112 cited in the judgment (paras 45 to 47). The English principles are those of Panasonic v Xiaomi: legitimate utility of the declaration, FRAND as both process and result, and the implementer’s entitlement to a continuous licence from the first day (paras 49 to 53).

Question

Does a claim for an interim licence have a real prospect of success where the SEP holder has brought no action on its SEPs in England, has given no undertaking to the court and also asserts non-essential patents?

Decision

The appeal was allowed. The change in Amazon’s offer did not make the appeal procedurally inapposite, since the decision below rested on a point of principle unaffected by the terms proposed (paras 37 to 44). Amazon has a real prospect of showing that the factual differences relied on by Nokia are immaterial and that Panasonic v Xiaomi applies (paras 62 to 65). The Munich I judgment relied on by Nokia, decided under Article 102 TFEU, does not deprive Amazon of an arguable case on Nokia’s good faith (paras 66 to 70). The case management objection rested on an incorrect premise: the interim licence, designed to hold the ring until the RAND trial, does not require a second RAND trial (para 75). The amendments were allowed in both statements of case (para 80).

Key points for practice

• The fact that the SEP holder has not sued on its SEPs in England and has given no undertaking to the court does not, at this stage, rule out a claim for an interim licence (paras 62 to 64).
• The availability of specific performance under Swiss law supports a claim that is not necessarily met by the utility and comity objections (para 65).
• According to the Court, settling the terms of an interim licence is a much more limited task than settling the final licence (paras 75 to 78).
• Practical point: the application must be determined before the RAND trial, otherwise it will be rendered nugatory (para 79).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

Common Patent Policy for ITU-T/ITU-R/ISO/IEC

RAND licensing declarations

National law

Swiss law as pleaded: Art. 2 of the Civil Code and Art. 112 (cited in the judgment as an article of the Civil Code)

Case law cited

Panasonic v Xiaomi [2024] EWCA Civ 1143; InterDigital v Lenovo [2024] EWCA Civ 743; Teva v Novartis [2022] EWCA Civ 1617; Messier-Dowty v Sabena [2000] 1 WLR 2040; CNM Estates v Carvill-Biggs [2023] EWCA Civ 480; Lungowe v Vedanta [2019] UKSC 20; Lenovo v Ericsson [2024] EWHC 2941 (Pat); LG München I, 7 O 14174/23, 5 November 2024

Related decisions

• Panasonic v Xiaomi, Court of Appeal, 3 October 2024, the decision whose application is in issue.
• Panasonic v Xiaomi, High Court, 5 July 2024, findings on German law referred to at para 68.
• InterDigital v Lenovo, Court of Appeal, 12 July 2024, cited on the range of FRAND terms and the retrospective licence.
• Lenovo v Ericsson, Court of Appeal, 28 February 2025, the appeal referred to at para 77, raising two of the distinctions relied on by Nokia.

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