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Optis v Apple: Court of Appeal examines clause 6.1 of the ETSI IPR Policy

If you've followed the Optis & others v Apple saga, you must have seen the judgment handed yesterday by the Court of Appeal, about the question of "willingness" as a licensee, and whether if after a declared SEP was found valid, essential and infringed, an injunction should follow. 

The Court of Appeal was unimpressed by the arguments raised by the parties, and dismissed the parties' appeals. Having written a longer analysis of the ruling elsewhere, I thought I'd list here quickly some key points:

  • Any person interested in implementing an ETSI standard must be entitled to have a FRAND licence on demand to a patentee that has given the relevant undertaking, so Apple could not be permanently deprived of the right to enforce Optis' FRAND obligation (and could later change its mind if it didn't exercise that right now).
  • However, clause 6.1 did not change the fact that a party without a licence may be injuncted, albeit it would be a FRAND injunction.
  • The time to make that election to avoid an injunction was following the finding of a valid, essential and infringed SEP. 
  • There are various factors of relevance to whether a FRAND injunction should be granted, but (with some exceptions), if a SEP owner is willing to give a binding commitment to accept the Court's FRAND determination then that was a strong factor in favour of an injunction.

Lord Justice Arnold's postscript is probably the most interesting part of the judgment (and one that reflects the general tone). See it in full below.

You can read more about the grounds of appeal and what the judge ruled on in my article here.

These appeals illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes. Apple's behaviour in declining to commit to take a Court-Determined Licence once they had been found to infringe EP744, and their pursuit of their appeal, could well be argued to constitute a form of hold out (whether Apple have in fact been guilty of hold out is an issue for Trial E); while Optis' contention that an unqualified injunction should be granted would open the door to hold up. Each side has adopted its position in an attempt to game the system in its favour. The only way to put a stop to such behaviour is for SDOs like ETSI to make legally-enforceable arbitration of such disputes part of their IPR policies.


sep frand disputes, patent litigation, competition law, technology