Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2022] EWCA Civ 1411 (27 October 2022)

Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2022] EWCA Civ 1411 (27 October 2022)

The patentee is entitled to an injunction to restrain infringement of a SEP unless and until the implementer undertakes to take a licence on terms to be determined by the court as FRAND. Clause 6.1 of the ETSI IPR Policy does not entitle implementers to immunity from injunction absent such an undertaking, nor does failure to commit permanently disentitle implementers from relying on the ETSI undertaking. Competition law arguments do not justify withholding an injunction where the SEP owner is willing to grant a licence on court-determined FRAND terms and the implementer has not undertaken to accept such terms.

Citation
[2022] EWCA Civ 1411
Parties
Claimant/respondent: Optis Cellular Technology LLC; Claimant/respondent: Optis Wireless Technology LLC; Claimant/respondent: Unwired Planet International Limited; Defendant/appellant: Apple Retail U.K. Limited; Defendant/appellant: Apple Distribution International Limited; Defendant/appellant: Apple Inc.
Jurisdiction
England and Wales
Judgment Date
27 October 2022
Procedural Posture
Appeal / Court of Appeal Judgment Following High Court Decision
Outcome
Appeal dismissed; cross-appeal dismissed
Legal Topics
Standard Essential Patents, FRAND Licensing, Abuse of Dominant Position, Injunctions, Interpretation of ETSI IPR Policy
Intellectual Property Competition Law Contract Law Standard Essential Patents FRAND Licensing Abuse of Dominant Position Injunctions Interpretation of ETSI IPR Policy

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Parties

Optis Cellular Technology LLC

Claimant/respondent

Optis Wireless Technology LLC

Claimant/respondent

Unwired Planet International Limited

Claimant/respondent

Apple Retail U.K. Limited

Defendant/appellant

Apple Distribution International Limited

Defendant/appellant

Apple Inc.

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment Following High Court Decision

Legal Issues

  1. 1 Proper interpretation of clause 6.1 of ETSI IPR Policy
  2. 2 Entitlement to injunction for SEP infringement
  3. 3 Effect of competition law and abuse of dominance allegations

Ratio Decidendi

The patentee is entitled to an injunction to restrain infringement of a SEP unless and until the implementer undertakes to take a licence on terms to be determined by the court as FRAND. Clause 6.1 of the ETSI IPR Policy does not entitle implementers to immunity from injunction absent such an undertaking, nor does failure to commit permanently disentitle implementers from relying on the ETSI undertaking. Competition law arguments do not justify withholding an injunction where the SEP owner is willing to grant a licence on court-determined FRAND terms and the implementer has not undertaken to accept such terms.

Court Disposition

Appeal dismissed; cross-appeal dismissed

Orders

  • Patentee entitled to injunction unless implementer undertakes to take a licence on terms determined to be FRAND
  • No unqualified injunction; implementer not permanently disentitled from relying on ETSI undertaking