UK FRAND update: three judgments that change the dynamic of SEP disputes

For anyone with an interest in standard essential patents (SEPs), there has been a flurry of activity recently with three important fair, reasonable, and non discriminatory (FRAND) judgments handed down, which together may represent the biggest change since Justice Birss's Unwired Planet decision in 2017.

A well-trodden path

In the years that have followed, the English court has seen a number of other SEP cases seeking an Unwired Planet injunction. However, to date, all have settled before reaching a FRAND trial and so, until recently, there had been little development of the law in this area. However, one point that became apparent was the time it took to reach a FRAND trial.

As an English FRAND trial is considering the question of relief for patent infringement, the established position is that a finding (or admission) of infringement is needed before it can take place, meaning that it will normally be listed after several 'technical' patent trials. This means that it can often take two or more years from issue to reach a FRAND trial.

The question of willingness to take a licence

One of the cases to follow the Unwired Planet model is Optis v Apple. Optis issued proceedings in February 2019 alleging infringement of eight of its SEPs and, following a judgment of validity, essentiality and infringement in the second trial in June 2021, Optis asked Apple to give an unqualified undertaking to take a licence on whatever terms the English court determine to be FRAND.

Apple refused and, given the FRAND trial is not listed until June 2022,…