Optis Cellular Technology LLC & Ors. v Apple Retail U.K. Limited & Ors.

Optis Cellular Technology LLC & Ors. v Apple Retail U.K. Limited & Ors.

A SEP owner who has given an ETSI FRAND undertaking is entitled to an injunction against an implementer found to infringe a valid SEP unless and until the implementer undertakes to take a licence on terms to be determined as FRAND by the court. The implementer does not permanently lose the right to a FRAND licence if it initially refuses to commit but may enforce the undertaking if it later accepts the burden. Competition law does not require withholding an injunction in these circumstances. The grant of a FRAND injunction is appropriate even if not specifically pleaded, as it is a lesser remedy than an unqualified injunction and within the court's discretion.

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
Civil Appeal / Court of Appeal Judgment on Appeal From High Court (patents Court)
Outcome
Both appeals dismissed. The High Court's order (granting a FRAND injunction unless Apple undertakes to take a Court-Determined Licence) is upheld.
Legal Topics
Standard Essential Patents (seps), FRAND Licensing, Injunctions, Abuse of Dominant Position, Contract Interpretation
Intellectual Property Law Competition Law Standard Essential Patents (seps) FRAND Licensing Injunctions Abuse of Dominant Position Contract Interpretation

Case Brief

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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

Civil Appeal / Court of Appeal Judgment on Appeal From High Court (patents Court)

Legal Issues

  1. 1 Proper interpretation of clause 6.1 of the ETSI IPR Policy regarding FRAND licensing undertakings for SEPs
  2. 2 Whether a SEP owner is entitled to an immediate injunction after a finding of validity and infringement if the implementer has not undertaken to take a licence on terms to be determined as FRAND
  3. 3 Whether competition law (abuse of dominance) precludes injunctive relief in these circumstances

Ratio Decidendi

A SEP owner who has given an ETSI FRAND undertaking is entitled to an injunction against an implementer found to infringe a valid SEP unless and until the implementer undertakes to take a licence on terms to be determined as FRAND by the court. The implementer does not permanently lose the right to a FRAND licence if it initially refuses to commit but may enforce the undertaking if it later accepts the burden. Competition law does not require withholding an injunction in these circumstances. The grant of a FRAND injunction is appropriate even if not specifically pleaded, as it is a lesser remedy than an unqualified injunction and within the court's discretion.

Court Disposition

Both appeals dismissed. The High Court's order (granting a FRAND injunction unless Apple undertakes to take a Court-Determined Licence) is upheld.

Orders

  • No unqualified injunction granted against Apple.
  • Apple to be subject to a FRAND injunction unless it undertakes to take a licence on terms to be determined as FRAND by the court.