FRAND injunction bites even if a rate is yet to be set
Written By
Associate
UK
I am an associate in the Intellectual Property Group based in London. I work with clients on a wide spectrum of intellectual property rights, with a particular focus on patent litigation and enforcement.
Partner
UK
I am fascinated by IP and the challenge of helping my clients protect, exploit and defend their IP rights to further their business objectives.
Partner
UK
I am a partner in Bird & Bird's London Intellectual Property Group. I have extensive experience of advising clients across a wide variety of industries on complex legal issues and strategic considerations relating to all IP rights. My particular expertise is in high value complex patent litigation relating to telecoms (including FRAND) and emerging new areas of connectivity affecting many sectors.
In the eagerly awaited appeal in Optis v Apple, the Court of Appeal held that Optis was entitled to an immediate FRAND injunction unless Apple gave an undertaking (which it had done) to take a licence on FRAND terms which were yet to be determined by the Court. However, the Court of Appeal rejected the argument that even as an ‘unwilling licensee’, Apple had not lost the right to claim a FRAND licence.
Factual background
Back in February 2019, Optis brought proceedings before the UK High Court against Apple, alleging infringement of a total of eight patents claimed to be essential to certain 3GPP cellular standards and which had been declared under ETSI’s Intellectual Property Rights (‘IPR’) Policy. There were a number of ‘technical’ trials considering patent infringement and validity (Trials A – D) and a FRAND trial (Trial E).
The appeal relates to a sixth trial, Trial F, where the key issue was whether Optis was entitled to an injunction following a finding of patent infringement. By the date of Trial F, two of Optis’ patents had been held to be valid, essential to the relevant standard and infringed by Apple, but Trial E, the FRAND trial, was yet to take place.
The decision at first instance
Apple argued that a patentee is not entitled to an injunction until after the Court has determined what terms are FRAND and the implementer has decided not to take a licence on those terms.
Optis submitted that the implementer is an ‘unwilling licensee’ if it refuses to…
