Lenovo to pay InterDigital $138.7m for FRAND royalty
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Lenovo to pay InterDigital $138.7m for FRAND royalty

Rolls 2k-comp.jpg

The England and Wales High Court handed down one of the most hotly anticipated FRAND rulings for some time

The England and Wales High Court ruled today, March 16, that Lenovo must pay InterDigital $138.7 million for a global licence to its 3G, 4G and 5G standard-essential patents.

The ruling, by Mr James Mellor, was the most hotly anticipated fair, reasonable and non-discriminatory (FRAND) judgment in the UK since the Supreme Court’s decision in Huawei v Unwired Planet in 2020.

Today’s ruling confirms the Supreme Court’s approach in that case, in which it said courts in England and Wales are able to set a global FRAND rate when the licensor and licensee cannot agree on terms.

In today’s judgment, Mellor found that neither InterDigital's 5G extended offer nor Lenovo's lump sum offer were FRAND or within the acceptable range.

The final amount of $138.7 million is around 40% lower than what InterDigital had originally sought. Lenovo made a pre-trial offer of around $80 million but InterDigital’s proposal amounted to more than $337 million.

Mark Marfé, partner at Pinsent Masons in London, said it was predictable that neither offer was FRAND as both were so far apart.

“These cases are very time-consuming and expensive, and it is likely the parties would have sought to agree a rate among themselves to avoid the need for litigation if their offers had not been so far apart,” he said.

Josh Schmidt, chief legal officer at InterDigital, said: “We welcome the court’s decision as the first major SEP FRAND judgment that recognises that a licensee should pay in full for the past infringement of SEPs, and we agree with the court that this could be a powerful way of guarding against patent holdout in the future.”

He added that InterDigital plans to appeal against the decision, as certain aspects of it did not accurately reflect the company's licensing programme.

John Mulgrew, Lenovo’s vice president, deputy general counsel and chief IP officer, said the company saw the ruling as a “major win for the technology industry and the customers we serve”.

“It underscores both the importance of FRAND terms for patent licensing and the requirement of transparency by patent holders engaged in licensing practices.

“The court has confirmed that Lenovo is, and always has been, a willing licensee – even in the face of InterDigital’s supra-FRAND offers and behaviour as an unwilling licensor,” he added.

InterDigital had previously secured a series of wins in technical trials, but the FRAND case was heard separately.

more from across site and ros bottom lb

More from across our site

The firm was among multiple winners at a record-breaking 2024 ceremony held in London on April 11
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The Americas research cycle has commenced. Do not miss this opportunity to nominate your work!
Increased and new patent fees could affect prosecution strategies for law firms and companies, according to sources
Five former Oblon lawyers felt that joining Merchant & Gould would help them offer the right prices to entice clients
The UK may not be a UPC member but its firms are still acting in proceedings, with Carpmaels among the most prominent
Naomi Pearce of Pearce IP shares how she is helping her firm become a life sciences leader and how generous policies have helped attract top talent
The Court of Appeal has dismissed an appeal filed by Ocado, in what was a key test for transparency at the new court
Each week Managing IP speaks to a different IP lawyer or professional about their life and career
INTA is calling out ‘immoral’ unregistered attendees at the association’s annual meeting, but the debate is more nuanced
Gift this article