Alcatel Lucent SAS and ors v Amazon Digital UK Ltd and ors

Alcatel Lucent SAS (“Alcatel”), part of the Nokia group, issued a claim in England & Wales alleging infringement of three of its non-essential patents (“NEPs”) in relation to methods of providing and controlling subscriber access, management of content of servers and predictions of popular content, all in the context of a multimedia service (¶17). Alcatel asserts that Amazon is infringing the NEPs both in the devices that it makes and sells (such as the Kindle Fire) and in its streaming services (notably its Prime Video Service).

The claim forms part of a global litigation campaign by Nokia against Amazon, including cases in Germany, the US (both before the International Trade Commission (ITC) and in federal court in Delaware), Brazil, India and the Unified Patent Court (¶¶17 and 136).

Amazon’s defence (i) challenged the validity of the patents, (ii) sought declarations of non-infringement, and (iii) asserted a defence to the claim for an injunction based on Nokia’s commitment to grant RAND licences to video coding patents declared essential by reference to the H.264 (AVC) and H.265 (HEVC) standards in the Recommendations of the International Telecommunications Union Standardisation Sector (“ITU-T”). In support of the RAND defence, Amazon issued a Part 20 claim against Nokia entities seeking specific performance of the obligation to grant a licence.

Amazon claims that RAND terms to a licence to Nokia’s so-called Codec SEPs include an option (at Amazon’s election) to obtain a right to use all other patents in the Nokia Video Portfolio, including the Alcatel NEPs (¶18).

The Court considered applications by Nokia (i) challenging the English court’s jurisdiction, and (ii) seeking to strike out parts of Amazon’s pleadings. The Court also considered various applications to amend Amazon’s pleadings and an application by Amazon for an expedited RAND trial.

The Court concluded as follows:

i. The English court has jurisdiction over Amazon’s Part 20 claim against Nokia, because Nokia is a necessary and proper party to Alcatel’s claim against Amazon, specifically Amazon’s defence thereto (Gateway 4) (¶104). In addition, the Court found that Amazon’s claims would have passed through Gateways 4A, 16A and 11 (¶¶110-111, 114 and 120). It also concluded that England is the appropriate forum for the dispute (¶¶128-131).

ii. Amazon’s claim that Alcatel itself was contractually bound to grant a licence in respect of the NEPs would be struck out (¶¶35-44). However Amazon’s case that Nokia was obliged to grant a licence on a global portfolio basis, and that this would be a defence to any application for an injunction, was not struck out (¶¶45-49 and 59-69).

iii. The claim to a declaration of non-infringement raises a serious issue to be tried (¶¶74-76).

iv. Amazon’s claim to an Interim Licence was not sufficiently arguable (¶¶79-90).

v. Early disclosure of licences which Nokia had already entered into with third parties was essential to advance the proceedings (¶¶93 and 149).

vi. The Court emphasised that “[f]aced with an implementer prepared to undertake to enter into a licence on terms which this court (assuming it has jurisdiction to do so) declares to be RAND, it hardly lies in the mouth of a patentee, whose actions in taking enforcement action against the implementer in multiple jurisdictions is at least prima facie in conflict with its RAND obligations, to object to this court taking the view that such enforcement action provides a reason for seeking to resolve the RAND dispute as soon as practicable” (¶139). Notwithstanding the “sufficient need for urgency to justify a measure of expedition” (¶141) given the pressures on the court list, the case would not be expedited before October 2025 (¶¶153-157).

James Segan KC and Ravi Mehta acted for Amazon, instructed by Paul Brown, Jemma Trainor and James Gray from Hogan Lovells International LLP in these proceedings.

The judgment is available here.