In brief
- In litigation involving standard essential patents between Amazon and InterDigital, the Patents Court has held that it has jurisdiction to determine global (F)RAND licence terms. InterDigital's challenge to the court's jurisdiction comprehensively failed.
- The court concluded that anti-interim-licence injunctions issued by the UPC and the German national court in Munich were based on a misunderstanding of the effect of orders requiring an SEP owner to offer interim or final licence terms.
- Declarations of (F)RAND terms and orders of specific performance made by a UK court do not prescribe how a foreign court must deal with its SEP cases.
- InterDigital's offers of arbitration or rate setting proceedings in other courts did not provide a basis for a forum non-conveniens stay.
Summary
The litigation involves Standard Essential Patents (SEPs) relating to video coding standards curated by the International Telecommunications Union (ITU). SEP owners, such as InterDigital, give an undertaking to the ITU, governed by Swiss law, to license patents to implementers on reasonable and non-discriminatory (RAND) terms.
Amazon brought claims against InterDigital in the UK Patents Court, asking it to decide the terms of a global RAND licence of InterDigital's portfolio. Proceedings were commenced in September 2025. Between then and the end of December, Meade J gave five judgments in the dispute. The effect of the first four was to temporarily preserve the integrity of the proceedings to allow an orderly hearing of InterDigital's substantive challenge to the Patents Court's jurisdiction. The latest judgment, published 19 December, rejected that challenge. InterDigital also sought a forum non-conveniens stay of the UK case, which was also refused.
Why the case is important
First, the judgments contain important statements about the effect that orders made by a court in one jurisdiction may have on proceedings in another jurisdiction. The significance of this is not limited to (F)RAND litigation. It is also relevant to other patent disputes with an international element, particularly given the CJEU's decision in Electrolux v BSH. This decision opened the door for courts in EU member states to decide questions of infringement and validity of foreign patents, and grant injunctions or require the payment of damages on the basis of those findings (we discussed the implications of Electrolux v BSH) and the approach of the Unified Patent Court in response.
Second, InterDigital tried every avenue it could muster to challenge the UK court's jurisdiction to hear Amazon's claims or stay those claims. The court's reasoning dealing with each argument comprises a thesis that parties contemplating (F)RAND litigation should therefore consult.
Background and procedural history
Amazon filed claims against InterDigital in the UK Patents Court for declarations:
- that certain SEPs were not essential to the standards and were not infringed and, in any event, were invalid (seeking an order they be revoked) (Patent Claims);
- of licence terms that are RAND and an order that InterDigital offer such global licence to Amazon (RAND Claims); and
- that InterDigital would be abusing a dominant position in the UK if it were to refuse to offer a licence on terms the court found were RAND (Competition Claims).
Amazon served the pleadings on the first defendant (the holder of the patents) under CPR 63.14 on 1 September 2025 at its address for service in the UK as provided to the UK patent office. The court granted permission to serve the rest of the defendants out of the jurisdiction on 18 September 2025.
In contemporaneous correspondence, Amazon notified InterDigital that it intended to ask the UK court to order it to grant a global interim licence, pending final determination of the proceedings. InterDigital disputed the UK court's jurisdiction to grant a global interim or final licence. The parties agreed directions for the conduct of the jurisdiction challenge, with a target hearing date by 30 January 2026.
In the meantime, without notice to Amazon, InterDigital commenced patent infringement proceedings in the German Regional Court in Munich and in the UPC Mannheim Local Division seeking unqualified injunctions for infringement of its SEPs. It also immediately made, notwithstanding the agreed directions, urgent without notice applications for injunctions prohibiting Amazon from pursuing its application in the UK for the interim licence. Both the German Regional Court and the UPC Mannheim Local Division granted the injunctions (anti-interim-licence injunctions), on 26 September and 30 September, respectively.
When these injunctions came to Meade J's attention on 2 October 2025 via an internet blog, he convened a case management hearing on 9 October. During the hearing, InterDigital accepted that the injunctions did not prevent Amazon from seeking declarations from the UK court about the terms of a final global RAND licence. Accordingly, Meade J made directions for hearing InterDigital's jurisdiction challenge on an accelerated timetable, including that it promptly provide an outline of the grounds on which it intended to rely and file supporting evidence. These filings suggested to Amazon that InterDigital had changed its position, and now thought that the anti-interim-licence injunctions did prohibit Amazon from pursuing final RAND relief in the UK, alternatively, that it was entitled to such an injunction. In other words, it became clear that InterDigital wanted to use an injunction granted by a foreign tribunal to make the whole UK proceeding otiose even before the UK court would hear its jurisdiction challenge.
Accordingly, on 20 October 2025 Amazon made its own urgent without notice application for an anti-anti-suit injunction (AASI), prohibiting InterDigital from making an application in any foreign court for an order that would prohibit Amazon from pursuing its UK claims.
Comity
Meade J granted a short term (10-day long) AASI. The period was selected to ensure it would not impact foreign proceedings until InterDigital had time to prepare arguments about whether or not it should be discharged. It was extended at a hearing on 30 October.
The effect of the AASI was then the subject of judicial questions in the UPC in a hearing on 14 November. The parties made a note of that hearing, which Meade J considered in another hearing on 25 November, about whether or not the AASI should be further extended.
In reasons supporting his decision to do so, published on 2 December, Meade J described InterDigital's answers to the questions from the UPC judges as "potentially inflammatory and factually incorrect". He said they "should not have been made". While respecting that the UPC had asked the questions (no doubt prompted by InterDigital's submissions), Meade J expressed "a sense of sadness that another judge in another court might even think that they could be held in contempt of this Court for performing their judicial function". He explained that "there is no question of another judge being in contempt of, or even subject to an injunction from this court, and our case law says so very clearly".
The focus of the above comments was the AASI, but the underlying principles of comity are equally relevant to all forms of orders by a UK court, including for example (a) declarations made in a post-trial judgment about the terms of a global patent licence that it considers would be FRAND, and (b) orders for specific performance, requiring the SEP owner to grant such a licence. InterDigital's stated position before all of the courts was that such orders would prohibit the SEP owner from bringing patent infringement proceedings or rate setting proceedings in other jurisdictions, and would prevent foreign courts from determining for themselves whether or not to enforce patent rights granted in their countries. Meade J considered InterDigital's submissions to be "unhelpful" and "provocative" and that it was wrong to argue that final relief granted by a court in the UK would have that effect:
"… InterDigital can argue to the UPC or the German court that any final RAND relief in the UK is ineffective there … . InterDigital can bring and continue infringement claims. It can bring overlapping rate-setting claims if it wants."
It would be entirely up to the UPC and German courts to decide what effect the UK decision would have on the proceedings before them. And, of course, it works the other way too:
"If a foreign court finally and properly decided global (F)RAND terms between two litigants over which it had jurisdiction prior to a UK court setting out to do the same, I cannot see anything wrong with the litigant who had succeeded in the foreign court at least arguing (it might succeed or fail) that the foreign court's decision should be given effect here by res judicata or cause of action or issue estoppel. I also cannot see that the foreign court would have even arguably offended against comity in making that earlier decision."
The jurisdiction/forum non-conveniens challenges
Undeterred, InterDigital pressed on with its substantive jurisdiction challenge. The challenge failed, for the reasons set out at length in the fifth judgment of the series, published on 19 December.
InterDigital argued:
- The line of UK authorities to the effect that the UK court could determine global FRAND (or RAND) terms, including the Supreme Court's decision in Unwired Planet v Huawei, were all wrong, because they depended on an incorrect characterisation of the nature of disputes involving SEPs. In the present case the claims were purely contractual, and were governed by Swiss law. This affected whether CPR 63.14 applied (which allowed service without permission) and whether, and which, service out "gateways" were available.
- In any event, the whole character of the UK dispute had changed as a result of its undertakings not to enforce its UK patents against Amazon, which removed the jurisdictional hook for the UK proceedings.
- It was not necessary or appropriate for the UK to determine global RAND terms, because InterDigital had offered international arbitration.
- There were other better fora for the dispute than the UK, including Switzerland and Delaware. Courts in those jurisdictions were available, because InterDigital had offered undertakings to accept a rate set by either of them.
Burdens of proof
InterDigital's arguments were assessed in the framework of rules regarding who has the burden to show what, and at what point in time.
CPR 63.14 allows a claimant to serve proceedings related to a UK registered right on an address for service within the UK that the right owner (whether or not foreign) has given to the UKIPO. If the rule applies, then permission to serve the proceedings is not required. The burden of establishing that a claim falls within the rule lies with the claimant. If the claim has been validly served, but the defendant considers that it ought to be pursued elsewhere, then the defendant can apply for a forum non-conveniens stay. To succeed, it must show that there is an alternative forum that is (i) available, and (ii) clearly and distinctly more appropriate to try the claim than the UK court. If the defendant discharges that burden, then a stay will be granted unless the claimant can establish circumstances that show that justice requires that the trial nevertheless take place in the UK.
Where CPR 63.14 doesn't apply, and the claimant needs permission to serve proceedings out of the jurisdiction, the burden is on the claimant to show (i) there is a serious issue to be tried, (ii) there is a good arguable case that the claim falls within one or more of the gateways that define the classes of case in which permission to serve out may be given, and (iii) in all the circumstances the UK is clearly the appropriate forum. If the defendant wishes to set aside the service out order, then the burden is on it to establish that an alternative forum is available. The claimant retains the burden of showing that, nevertheless, the UK is clearly the appropriate forum. The assessment is made as things stood when permission to serve out was granted.
If a set aside application fails, the defendant can still apply for a stay. The burden is then on it to show there is an alternative forum that is (i) available, and (ii) clearly and distinctly more appropriate. The circumstances as at the time the application is heard are relevant.
InterDigital gave undertakings not to enforce its UK patents, and to accept a ruling by Delaware or Switzerland only given after leave to serve out had been given. These undertakings were therefore not relevant to any set aside application, and were only relevant to a stay application.
Correct characterisation of (F)RAND disputes
InterDigital submitted that Amazon's claims were in substance for a global licence, were not concerned with or related to registered rights or property within the jurisdiction, and therefore service under CPR 63.14 was not permitted. For the same reason, related gateways were not applicable and therefore the service out order, which was made in reliance on them, should be set aside.
Amazon argued that its claims related to the validity and infringement of UK patents, with RAND issues only arising as an aspect of a contractual defence. UK authorities have repeatedly emphasised the importance of not confusing the subject matter of the licence sought (which would provide a defence to an infringement claim) with the subject matter of the claim that is brought. Amazon's RAND claims were for a licence to the UK patents in issue. It just so happened that such a licence would be global.
Meade J was obviously bound by the previous authorities. In any event he agreed with them. For example, the Supreme Court in Conversant v Huawei considered it compelling that the owner of a portfolio of patents is entitled to decide which patents in which countries to enforce, and cannot be compelled to enforce patents granted in a particular country merely because a contractual defence raises issues which might be more conveniently decided in that country. When properly characterised, the dispute was about UK patents.
Accordingly, CPR 63.14 applied, and service on the first defendant in the UK under that rule was valid. For the same reasons, permission to serve the rest of the defendants out of the jurisdiction was validly granted. In any event, the competition claims related to actual markets in UK and events affecting trade in the UK, so the UK was clearly the appropriate forum to hear them.
Undertaking not to enforce the UK patents
Since they were not offered until shortly before the hearing, InterDigital's undertakings were not relevant to the validity of service. They did not impact the court's jurisdiction.
Further, they did not render the UK dispute otiose. Although InterDigital promised not to seek an injunction, it did not waive its right to claim damages for infringement of the UK patents (in the form of royalties under a licence of its portfolio which included UK patents, as might be determined elsewhere). Amazon claimed a licence which would quantify and limit Amazon's financial liability, and InterDigital's undertakings were expressly not intended to provide a licence. Accordingly, InterDigital retained the burden of proving that another forum was available, and that it was clearly and distinctly more appropriate.
Arbitration
Since service of the proceedings under CPR 63.14 was effective, the onus was on InterDigital to show that arbitration was clearly and distinctly more appropriate.
There were no authorities about whether arbitration may be treated as an available alternative forum, so Meade J had to approach the question from first principles.
A key problem with InterDigital's proposal was that, fundamentally, arbitration ought to be a consensual process. The offer of arbitration was calculated to create a forum of InterDigital's own choosing that would not otherwise exist, with the purpose of forcing Amazon into using it (if the UK court declined jurisdiction or stayed proceedings in view of the offer). It would force Amazon into entering a contractual relationship with InterDigital when it did not want to.
Amazon wanted a fully open, timely and authoritative decision about the scope and effect of RAND commitment, which arbitration would not provide.
A forum non-conveniens stay?
InterDigital also offered to be bound by rate setting decisions of courts in either Delaware or Switzerland. It did not offer to accept a rate setting decision by the UPC, made for example in the infringement claims it had already brought, even though the UPC has indicated a willingness to decide global licence terms. The judge inferred that InterDigital did not want a rate setting determination anywhere, or wanted to delay it for as long as possible, in case that it got in the way of its ability to obtain or threaten injunctions.
Nevertheless, the judge considered various matters giving rise to possible connections between the litigation in the UK, compared with either Switzerland or Delaware (Connecting Factors).
These Connecting Factors included the subject matter of the claims (UK patents), the domicile of the parties, the law governing the undertaking that InterDigital had given to the ITU, practicalities for witnesses and disclosure of documents, the language of proceedings, and the experience and expertise of the tribunals.
Overall Meade J considered the factors favouring Switzerland and Delaware were trivial, and those favouring UK appreciably stronger. Accordingly, the UK Patents Court was the appropriate forum (and particularly so in view of the competition claims).
Concluding observation
InterDigital challenged head-on UK Supreme Court authority about the nature of (F)RAND disputes that were obviously binding on the first instance judge. It's inevitable that it will appeal, notwithstanding Meade J's compelling and carefully reasoned judgment. Indeed, Meade J's comprehensive treatment of InterDigital's various arguments flag an expectation on his part that his 19 December judgment will be considered by an appeal court. The saga is not over.