The High Court has allowed Vodafone GmbH to serve notice of intended Irish proceedings on a US company in a dispute over licensing 16 European patents relating to DSL broadband technology. The court set a 35-day period for the company to enter an appearance after service.
Mr Justice Max Barrett made the order on an ex parte application under Order 11, rule 1(f) and (h) of the Rules of the Superior Courts. It permits service on IV International Licensing and Intellectual Ventures II LLC (IV LLC), which is domiciled in Delaware. The application concerned service on IV LLC outside Ireland; the judgment did not decide the merits of Vodafone’s proposed claims.
Vodafone alleges that the defendants’ licensing offer was not on fair, reasonable and non-discriminatory (FRAND) terms and that their conduct amounted to an abuse of a dominant position under EU competition law. It also alleges that they failed to provide adequate information about how the patents were said to be infringed and how proposed royalties were calculated. The judge described the case as unproven.
The patents concern DSL technology used to provide broadband over telephone networks. The judgment records that IV LLC was the registered proprietor of the German designations of the patents and that IV International had made a licensing offer. Vodafone said it was willing to take a licence on FRAND terms and had made a counter-offer. It sought declarations about the parties’ offers and the licensing process in its intended proceedings.
In deciding whether Ireland was an appropriate forum for the case, the judge noted that IV International is incorporated and has a place of business in Ireland, and that it made the licence offer. IV LLC, as registered proprietor of the German designations and a party seeking damages from Vodafone in separate German patent proceedings, had a financial interest in the patents, the court said. The court also considered the allegations that the two companies were acting together in controlling and licensing the patents.
The judge concluded that Ireland was an appropriate place to bring the intended proceedings and that Vodafone had met the requirements for service outside the jurisdiction under both cited parts of Order 11. The order grants leave to serve notice and sets the appearance deadline. It does not establish that the patents are standard-essential, that either offer was or was not FRAND, or that the defendants breached competition law.