Tesla, Inc and another (Appellants) v Interdigital Patent Holdings and others (Respondents)

Permission to Appeal application lodged

Case summary
Permission to Appeal
Previous proceedings

Case summary

Case ID

UKSC/2025/0058

Parties

Appellant(s)

Tesla, Inc. and Tesla Motors Limited

Respondent(s)

InterDigital Patent Holdings, Inc. and InterDigital Holdings, Inc.

Avanci, LLC

Issue

Do the courts of England and Wales have jurisdiction to determine disputes as to what licence terms are fair, reasonable and non-discriminatory at the request of an implementor rather than a patent owner, where the licence is offered by an intermediary as part of a pool or platform of patents?

Facts

The first and second respondent (collectively “InterDigital”) are members of the InterDigital Group, which develops and licenses wireless communications technology. The InterDigital Group owns a portfolio of patents which have been declared essential (referred to as “standard-essential patents” or “SEPs”) to the European Telecommunications Standards Institute (“ETSI”) 2G, 3G, 4G and 5G standards (the “ETSI Standards”). The third respondent (“Avanci”) administers patent pools or platforms, which allow patentees to pool their SEPs and authorise the pool or platform administrator to act as a licensing agent. Avanci’s patent pool/platform includes a platform for SEPs declared essential to the ETSI Standards for use in 5G-enabled vehicles (the “Avanci 5G Platform”). The InterDigital group is one of the licensor members of the Avanci 5G Platform. The appellants (“Tesla”) wish to launch 5G enabled vehicles in the UK. The Avanci 5G Platform includes approximately 11,900 UK SEPs, all of which are subject to undertakings given to ETSI which oblige their owners to offer licenses of the SEPs on fair, reasonable and non-discriminatory (“FRAND”) terms. Avanci offers standard patent license agreements at to all the SEPs in the platform at a flat rate per car. Outside of a modest set of approved possible modifications, Avnaci cannot vary the standard patent license agreements without the consent of the members of the Avanci 5G Platform. Avanci offered Tesla’s position is that a flat rate of $32 per vehicle for a license on a non-negotiable basis is not FRAND. In December 2023, Tesla raised proceedings seeking (i) declarations of invalidity and/or inessentiality of the patents owned by IDH (the “Challenged Patents”) (the patent claims) and (ii) declarations as to FRAND terms for a license of UK SEPs in Avanci 5G Platform, alternatively the Challenged Patents (the licensing claims). The claim was raised against Avani as the operator of the Avanci 5G Platform and InterDigital, as one of the Avanci 5G Platform members that has given a FRAND commitment to ETSI, InterDigital challenged the jurisdiction of the English courts to hear the claims. The High Court set aside service of the claim form in respect of certain claims. Tesla appealed to the Court of Appeal against the jurisdictional orders and InterDigital cross appealed. The Court of Appeal dismissed the appeal by majority, with Arnold LJ dissenting. Tesla now appeals to the Supreme Court.