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Sisvel International S.A. v. Xiaomi Corporation, Xiaomi H.K. Limited and others, District Court The Hague, Interlocutory Proceedings, 1 August 2019, Case No. ECLI:NL:RBDHA:2019:7959

Standard Essential Patents. FRAND.

Sisvel is the mother company of the Sisvel group. Sisvel manages IP rights, amongst which its own patents and patents of third parties in the field of i.a. wireless communications. Sisvel is a member of ETSI. In 2013 Sisvel gave a so called ETSI declaration with respect to several essential telecom patents, entailing that SISVEL will license said patents under FRAND terms. Xiaomi is a producer and seller of mobile phones. In 2013 Sisvel offered Xiaomi a license under the Sisvel patents on FRAND terms. Xiaomi did not take a license.

In the current provisional relief case, Sisvel reqests an preliminary injunction against Xiaomi based on two patents, as well as a statement of profits. Xiaomi argued (summarized) that this case is too complex for interim proceedings and that there is a lack of urgent interest as Sisvel waited too long.

The Judge agrees. Upon weighing the interests of both parties the Judge took plenty of circumstances into consideration, amongst which the fact that the question what a global FRAND license fee should be, was already submitted to the High Court in April 2019. Sisvel has indicated to follow that assessment. A Dutch court order in preliminary relief proceedings that would deviate from the assessment of the English Court, could give rise to severe legal uncertainty.

Also, the Judge states that determining a FRAND license fee is a complex exercise. It is unclear why it is necessary for Sisvel to seek a preliminary injunction pending the English proceedings, or why it can not commence proceedings on the merits. Therefore, Xiaomi’s interest in a thorough assessment of the matter with more extended deadlines weighs heavy.

A copy of the judgment (in Dutch) can be read here.