Isabel Jamal and Jennifer Dixon appeared for the Claimants (“Optis”), in the appeal of the judgment of Meade J in “Trial F” in proceedings against the Defendants (“Apple”). Meade J had decided that the owner of a patent is entitled to an immediate “FRAND injunction” once the court has found the patent to be valid, essential and infringed unless and until the implementer has undertaken to take a licence on fair, reasonable and non-discriminatory (“FRAND”) terms to be determined by the court (the “Court-Determined FRAND Licence”). As Apple had been held to infringe a valid SEP owned by Optis, Meade J held that Apple either had to give such an undertaking or be subject to a FRAND injunction. Apple chose to give the undertaking but appealed Meade J’s judgment.
In the appeal judgment, Arnold LJ dismissed Apple’s appeal and approved Meade J’s interpretation of clause 6.1 of the ETSI IPR Policy, namely that – in order to benefit from the patentee’s FRAND undertaking as a defence to injunctive relief – the implementor must accept the burden of agreeing to take a licence on terms that are objectively FRAND. Arnold LJ also dismissed Optis’ cross-appeal, finding that an implementor who, on having been found to infringe, fails to commit to a Court-Determined Licence is not permanently disentitled from relying on the patentee’s ETSI undertaking nor subject to an unqualified injunction.
On a question of competition law, the Court of Appeal upheld Meade J’s decision that any past abuse of a dominant position contrary to Article 102 TFEU does not justify the withholding of an injunction where the patentee undertakes to grant a Court-Determined Licence. Arnold LJ stated that the decision to grant or withhold an injunction looks to the future.
Finally, as a matter of procedural law, a FRAND injunction may be granted where the patentee has only claimed an unqualified injunction in pleadings. Arnold LJ stated that, pursuant to section 37(2) of the Senior Courts Act 1981 and CPR rule 16.2(5), the decision as to the form of an injunction is one for the court, not the parties.
In a postscript, Arnold LJ suggested that the only solution to the “dysfunctional state of the current system for determining SEP/FRAND disputes” is for standard-development organisations to make legally enforceable arbitration part of their IPR policies.