Isabel Jamal and Jennifer Dixon appeared for the Claimants (“Optis”), with Isabel as the lead advocate on the FRAND parts of the case and Sarah Ford QC as the lead advocate on the competition law parts of the case, in a trial determining whether or not the Defendants (“Apple”) were entitled to rely on Optis’ ETSI undertaking as a defence to an injunction to restrain Apple from infringing one of Optis’ standards essential patents (“SEPs”) which had been held to be valid and infringed.
Optis alleged that Apple was disentitled from relying on Optis’ undertaking to ETSI on the basis that it was not willing unconditionally to commit to taking a licence covering the SEPs held to be valid and infringed on the FRAND terms to be determined by the Court.
Meade J interpreted the class of beneficiaries of clause 6.1 of the ETSI Policy as being any undertaking which wants a licence to work a relevant standard by any commercial activities, and which intends to work the standard under a licence from the SEP owner. He held that, whether or not that might be fact sensitive in some cases, it was not in a case where an implementer declines to commit to a licence on FRAND terms but wants to work the technology of a patent that it has been found to infringe.
The Judge held that Apple needed to call for and take a FRAND licence from Optis now, otherwise it was infringing now, even though a licence on FRAND terms is open to it. To avoid an injunction, Apple needed to give an undertaking to take whatever licence is set at the FRAND trial (“Trial E”). The Judge held that Apple’s stance was that it only “wants” a licence on its own terms and at a time of its own choosing, and then only conditionally. On the facts, it was wrong to withhold an injunction as damages would not be an adequate remedy for Optis. Further, Apple’s allegations of abuse of dominant position cannot prevent the grant of an injunction to restrain infringement. Therefore, the judge held that Apple was liable to be injuncted from infringing the SEP in question, but, given the novelty of the issues raised in the trial, granted Apple a short time to consider whether it wanted to make a binding commitment to the FRAND terms to be found in Trial E, or offer some other undertaking.