UK Supreme Court to assess whether an injunction is appropriate for Standard Essential Patents (SEPs)

The UK Supreme Court has publicly confirmed that it will hear the appeal in Apple Retail UK Ltd and others (Appellants) v Optis Cellular Technology LLC and others (Respondents) concerning Standard Essential Patents (SEPs) and whether it is appropriate for an implementer to be put to the election between an injunction and committing to take the Court’s FRAND terms as soon as there is a finding of infringement of an SEP.

Green light for appeal

The Supreme Court has given permission for the appeal in Apple Retail UK Ltd and others (Appellants) v Optis Cellular Technology LLC to proceed. (The court granted leave on 6 April 2023, although this was not published on its website until 30 May 2023.)

Court of Appeal’s ruling: quick recap

In August 2021, the Court of Appeal upheld the Patent Court’s decision that that the owner of a standard essential patent (Optis) was entitled to an injunction in a qualified FRAND form (against Apple) after the patent had been found valid, essential and infringed, even though the trial to set the terms of the appropriate FRAND licence had not yet taken place.  This question was considered at first instance by Meade J in Optis ‘Trial F’.  The practical implication of Meade J’s decision was that Apple would have to undertake to take a global licence to Optis’s portfolio on terms determined to be FRAND by the English Court, or face a UK FRAND injunction, a form of injunction which is now often referred to as an ‘Optis F Injunction’

Both parties appealed this decision.  Optis sought an unqualified injunction if Apple would not give the undertaking, on the basis that it had waived its right to a FRAND defence.  Apple argued that it was entitled to see the FRAND determination before being put to the election between taking the licence or leaving the UK market.

Arnold LJ, who gave the leading judgment in the Court of Appeal, analysed the case law on injunctions and SEPs.  He concluded that Meade J was right to find that Optis was…