Food for thought for Apple

[{“id”:”v6kgi8lwb93y90″,”elType”:”container”,”settings”:{“flex_direction”:”column”},”elements”:[{“id”:”5820cba”,”elType”:”container”,”settings”:[],”elements”:[{“id”:”_v6kgi8lwb93ygp”,”elType”:”widget”,”settings”:{“editor”:”The latest decision in the ongoing UK SEP dispute between Apple and PanOptis was handed down yesterday (27 September 2021) with Mr Justice Meade holding that Apple should be subject to a FRAND injunction in respect of a PanOptis SEP previously found valid and infringed unless it now commits, in advance of the summer 2022 FRAND trial (Trial E), to enter into the FRAND licence that will be set by the Court. He rejected, therefore, both Apple’s argument that an implementer should not be required to take a licence ‘sight unseen’ and PanOptis’ position that Apple’s failure to give an undertaking to enter into the Court-set licence at an earlier stage meant that it was an unwilling licensee and no longer entitled to the protection against an injunction afforded by the ETSI regime.

In the Judge’s view, the beneficiary of the ETSI undertaking is an entity “which wants a licence to work a relevant standard … and which intends to work the standard under a licence from the SEP owner\”, a class that would not include an implementer such as Apple that wants to work an invention between a finding of infringement and a FRAND trial without a licence (and indeed retain the option not to take a licence at all). As matters stand, commented the Judge “Apple is infringing Optis’ patent rights. It therefore needs a licence now if it is not to be acting unlawfully\”. He also decided that, even if PanOptis had abused a dominant position, the effects of such abuse (if any) had ceased or been prevented such that it would be wrong to withhold a FRAND injunction. Procedurally, Apple can avoid that injunction by undertaking now to take the licence that will be set at Trial E, and has been given some time to consider both the judgment and its position.

There is much to pick over in the decision, which unsurprisingly draws heavily on the judgments of the High Court, Court of Appeal and Supreme Court in Unwired Planet, but what is clear is that the UK Court remains: (a) troubled by the prospect of ‘hold out’; and (b) somewhat sceptical of competition law defences to injunctions. As such, and subject to an appeal, the UK continues to provide a favourable forum for SEP owners.”,”drop_cap”:”no”,”typography_typography”:”custom”,”typography_letter_spacing”:{“unit”:”px”,”size”:”0″},”typography_font_size”:{“unit”:”px”,”size”:”18″},”size”:”18″,”typography_font_weight”:”400″,”typography_line_height”:{“unit”:”px”,”size”:”28″},”title_color”:”#4b2771″,”text_color”:”#4b2771″,”color”:”#4b2771″,”align”:”start”},”widgetType”:”text-editor”}],”isInner”:false}],”isInner”:false}]