Jurisdiction(s):
United Kingdom

Court of Appeal clarifies wide-form confidentiality regimes for FRAND/SEP disclosure, endorsing staged approach and broad non-involvement undertakings: InterDigital v OnePlus (England and Wales)

Published on: 22 March 2023

Published by a LexisNexis IP expert

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Article summary

InterDigital Technology Corp and others v OnePlus Technology (Shenzhen) Co and others [2023] EWCA Civ 166 What are the practical implications of this case?

As is long recognised, standard-essential patents must be offered under clear, Fair, Reasonable and Non-Discriminatory (FRAND) terms. In these matters, once technical trials determine, following detailed evidence, that one or more patents are truly essential and valid, a subsequent FRAND trial sets the conditions of a FRAND licence. As part of that process, and as confirmed by the Supreme Court in Unwired Planet v Huawei [2020] UKSC 37, the claimant’s existing licences are carefully examined to identify FRAND terms. Accordingly, SEP infringement actions in the courts of England and Wales commonly see defendants routinely pursuing pre-action disclosure of prior SEP licensing agreements. Given the highly confidential nature of those agreements, the court typically implements a strict confidentiality regime to control how the information is disclosed. Such a regime places obligations on recipients, carefully limiting access to specified individuals and guarding against any unfair deployment of potentially sensitive material during licensing negotiations between defendants and third parties. Ordinarily, two tiers of confidentiality are put in place, and carefully monitored, including a strictly External Eyes Only (EEO) tier...

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