MediaTek, Inc & Ors v Huawei Technologies Co, Ltd & Anor

This concerns MediaTek’s request for further information from Huawei in paragraph 8(b) of MediaTek’s draft order.

The point made by MediaTek is that there is going to be disclosure by Huawei of licences covering both infrastructure and devices and also licences covering devices alone. The prospective licence to be granted by MediaTek will be for both infrastructure and devices. MediaTek say that having in mind that there will be data concerning licences for handsets alone, it will be relevant to have data concerning licences for infrastructure alone, so that a view can be taken as to the relative value of the two. This, it is said, will assist significantly in arriving at appropriate figures in the prospective licence to be settled for both.

I am told by Huawei that there are only four licences for infrastructure in their possession. I understand that an order to disclose these will involve some complication for Huawei, but since there are only four it will be limited. There is a fair prospect that their data will be of assistance to the trial judge and they should be disclosed. We will come on later to the mechanism of disclosure and the timing.

I now deal with Request 1 of Huawei’s requests for further disclosure from MediaTek.

Request 1 concerns documents relating to the level at which SEPs should be licensed, whether at chip level or device level. The request has been reduced quite considerably from the scope of its original drafting, limited now to documents filed in certain proceedings, at least four, although possibly more than that.

This goes to an argument raised by MediaTek in these proceedings that there is an industry practice for royalties to be levied at a particular level. It is not completely certain that the trial judge will be influenced by what the trade practice may be, as opposed to focusing on the particular facts of this case and what will be appropriate for the licence to be settled. However, I will assume that it becomes a relevant argument in the case.

Huawei point to what they have said in evidence, namely that MediaTek have twice previously sought licences at the chip level. Huawei submit that this is inconsistent with MediaTek’s stance on the industry practice. It is not at all clear to me that the evidence referred to really does suggest that MediaTek have sought licences at chip level. Nor is it clear to me that even if MediaTek have done so, this would help the trial judge very much in deciding what the industry-wide practice is or was.

There is evidence from MediaTek that even the reduced scope of disclosure sought will require a considerable amount of work and I am persuaded that this is likely to be correct.

Accordingly, I will not order disclosure under Request 1.

Request 5: this request from Huawei was largely agreed. The issue remaining is whether the information which has been offered by way of a summary in a witness statement from one of MediaTek’s officers should be limited to information about only the location of the manufacture and sale of MediaTek’s products or whether it should also include information on the location of other acts carried out by MediaTek which would infringe Huawei’s SEPs, i.e. to include delivery, disposal, offer to dispose, importation and keeping.

Huawei say that the further information matters because it is possible that while manufacture and sale of MediaTek’s products has been confined to territories in which Huawei have few relevant SEPs, it may be that MediaTek are carrying out other infringing acts in territories where there is a high density of relevant SEPs owned by Huawei. Huawei say that in that event, it would be necessary to be cautious about the relevance of the data in their past licences granted only for those territories in which MediaTek’s sale and manufacture occurred – on this assumption, low density territories.

MediaTek argue that it is only manufacture and sale that matters for the value of the global licence. Money is made from sales, nothing else. The location of sales is what matters subject to the qualification that data about manufacturing can also matter because it provides a base figure of how many units have been produced and which can then potentially be sold anywhere.

It seems that this may be a point that has only recently occurred to Huawei to pursue. Their evidence before the court today seems only concerned with testing MediaTek’s case relating to the countries of manufacture and sale. MediaTek argue that because the point is not yet live on the pleadings, it is not clear that it will form any part of Huawei’s case at the trial.

I was assured by Huawei’s counsel that this is a point they will wish to take and it seems to me that disclosure relating to it may be desirable. The reservation I have is that MediaTek’s evidence has not addressed whether there would be a significant extra burden imposed by extending the summary in their witness statement to include territories in which their acts of infringement other than manufacture or sale occur. That is because the point was not flagged up by Huawei, so far as I am aware, until shortly before this hearing.

When considering whether to order disclosure it is always important for the court to strike an appropriate balance between the potential value of such disclosure and the burden that the order would impose. That is particularly true in the present case where time is very short between now and the trial.

For that reason, I am not going to make the order, but this will not shut out Huawei from pursuing it later, at which time it ought to be clear on the pleadings how the point arises, the extent of its potential significance and whether an extended summary would impost much of a burden on MediaTek.

This is request 10. Huawei seek the results of any 4G and 5G essentiality assessments conducted by companies running patent pools of which MediaTek are members.

MediaTek have said they do not possess any such documents. So what Huawei now seek is an undertaking from MediaTek that MediaTek will use their best endeavours to obtain assessments of essentiality from the organisations who run the pools of which they are members.

MediaTek submitted that the ground for seeking these documents seems to have shifted. That may be, but I take the view that the issue of essentiality is likely to be a significant one at the trial and the trial judge will be assisted by relevant information under that head.

As I said earlier, the assessment of whether to order disclosure is always a balance. So far as this request is concerned, I very much doubt that it would be excessively burdensome for MediaTek to ask the patent pools for these documents. I can see they might be of value and I will make an order that MediaTek use their best endeavours to request those assessments.