Telefonaktiebolaget LM Ericsson v Intex Technologies

Facts

• Ericsson held eight Indian patents declared essential to GSM/EDGE/3G standards (AMR codec technology)
• Every mobile phone using these standards necessarily infringed the patents
• Ericsson offered Intex a FRAND licence; Intex refused to engage or counter-offer
• Intex manufactured and sold millions of phones using the patented technology without any licence
• Ericsson filed suit seeking permanent injunction, damages, and an interim order for royalty deposit
• Intex raised defences of patent invalidity, FRAND abuse, and competition law violations

Issues

1. Whether a SEP holder can obtain injunctive relief despite a FRAND commitment
2. What obligations does a FRAND commitment impose on the patent holder and the implementer
3. Whether interim royalty deposit orders are appropriate in SEP litigation

Held

• A FRAND commitment does not extinguish the right to seek injunction; it modifies the conditions under which injunction is appropriate
• Where the implementer is "unwilling" (refuses to negotiate, makes no counter-offer, does not engage), the SEP holder may seek interim relief
• Intex was an unwilling licensee: it ignored Ericsson's offers and continued infringing
• Court ordered Intex to deposit interim royalties (per device) pending trial
• The FRAND rate determination would occur at trial

Ratio Decidendi

The FRAND framework creates reciprocal obligations: the SEP holder must offer licences on fair terms; the implementer must negotiate in good faith. A willing licensee is protected from injunction; an unwilling one is not. The test for willingness: does the implementer engage with the offer, make counter-proposals, and demonstrate readiness to take a licence on judicially determined terms? If not, standard patent remedies remain available to the SEP holder.