InterDigital Technology Corporation vs Lenovo Group Limited

This case concerned an application by Lenovo to use confidential documents disclosed in previous proceedings in a new set of proceedings involving the same parties and subject matter.

TLDR:

• Lenovo sought to use confidential documents from previous litigation in a new case.
• The court examined whether special circumstances justified this use.
• The court granted Lenovo's application with conditions, emphasizing the importance of confidentiality protocols.

The claimants, InterDigital Technology Corporation and its affiliates, are companies incorporated in the USA, while the defendants, Lenovo Group Limited and its affiliates, are incorporated in Hong Kong, China, and the USA. The dispute arose from Lenovo's desire to use confidential documents disclosed in previous FRAND (Fair, Reasonable, and Non-Discriminatory) licensing proceedings in a new set of proceedings involving the same parties and similar subject matter.

In the first proceedings, the main issue was the terms of the license to be granted to Lenovo for the use of InterDigital's patented technology up to 31st December 2023. The second proceedings focused on determining a license for the same technology after 1st January 2024, including non-ETSI SEPs and non-essential patents (NEPs).

Lenovo breached CPR 31.22 and the confidentiality protocol by using three PLAs (Patent License Agreements) in the second proceedings. Upon realizing the breach, Lenovo amended its particulars of claim to include only public information about the PLAs. However, InterDigital disputed the adequacy of these amendments.

The court considered whether Lenovo should have retrospective permission to use the limited information from the PLAs in the second proceedings. The principles of law applied included the burden on Lenovo to justify the use of the information and the need for special circumstances to permit collateral use.

The court acknowledged multiple breaches of the confidentiality protocol by Lenovo but found these breaches to be inadvertent. The breaches included passing confidential information to individuals outside the confidentiality ring and failing to inform third parties promptly.

The court balanced the seriousness of the breaches against the lack of substantive prejudice to InterDigital and third parties. It concluded that the second proceedings were a natural continuation of the first and that the relevant documents would inevitably be disclosed in the second proceedings.

The court granted Lenovo's application with two conditions: limited retrospective permission for the use of the information in formulating and pleading the claim, and permission to make arguments based on those pleadings in the jurisdiction challenge. Lenovo was also ordered to bear the costs of the application on an indemnity basis.

Legal representatives: Mr. Douglas Campbell KC and Ms. Georgina Messenger (instructed by Gowling Wlg Uk Llp) LLP) for the Claimants, Mr. Geoffrey Pritchard (instructed by Kirkland & Ellis International LLP) for the Defendants.

Judicial Panel: Mr. Justice Zacaroli

Case Citation Reference: [2024] EWHC 742 (Pat)