In the latest decision in the ongoing litigation between Optis v Apple,(1) the High Court considered whether Optis is able to obtain an injunction against Apple, pending the outcome of a fair, reasonable and non-discriminatory (FRAND) trial scheduled to take place in Summer 2022, on the basis that Apple is an "unwilling licensee" and is therefore not entitled to rely upon Optis's FRAND commitments.

The Court held that implementers found to be infringing valid standard essential patents (SEPs) must undertake to accept an unknown UK-court-determined FRAND licence or risk being injuncted before the conclusion of a FRAND trial.

This decision has important implications for FRAND licensing negotiations in the United Kingdom and further afield.


The facts of the case are convoluted, but by way of summary, the wider proceedings between the parties began in February 2019, when Optis brought infringement proceedings against Apple in respect of infringement of eight of its telecoms patents by Apple's 3G- and 4G-connected devices. The asserted patents were said to be SEPs.

"SEPs" are patents that protect technology asserted as being essential to implementing a technical standard. In other words, it is impossible to operate a standard compliant device without necessarily using the patented invention. Standards are often developed by businesses working together in collaboration under the auspices of standardisation bodies – commonly, groups such as the European Telecommunications Standards Institute (ETSI). Rights holders that wish to benefit from working under the framework of standardisation bodies such as the ETSI must make their SEPs available for others to use by way of a licence on FRAND terms in accordance with the ETSI Intellectual Property Rights (IPR) policy.

Four technical trials (trials A-D) were listed between October 2020 and January 2021. In the two trials that have so far taken place, the Court has found two of the asserted patents valid, infringed and essential. Trial E, scheduled for June/July 2022, will determine the terms of a FRAND licence and allegations made by Apple of anti-competitive behaviour by Optis.

In this latest decision (trial F), the Court was asked to consider whether Optis could seek an injunction against Apple pending the outcome of trial E. This was on the basis that:

  • at least one of Optis's patents had been found to be valid, infringed and essential; and
  • Apple is an "unwilling licensee" and therefore not entitled to rely upon Optis's FRAND commitments to the ETSI.

Optis had argued that Apple is an unwilling licensee as Apple had indicated that it was not prepared to unconditionally commit to take a licence on FRAND terms determined by the Court, and that Apple "sought to take benefit of Optis' FRAND undertakings without accepting the burden".

In its ruling, the Court had four issues to address:

  • the interpretation of clause 6.1 of the ETSI IPR policy (which provides the legal basis on which an owner of an SEP gives an irrevocable undertaking to grant a licence) and, in particular, whether an implementer has to give a commitment to take FRAND terms that are yet to be decided;
  • the effect and significance of competition arguments raised by Apple – namely, that Optis's offers of a licence were so far in excess of FRAND that they disrupted licence negotiations and Optis was abusing its dominant position by seeking relief of the injunction to get higher royalty rates;
  • that an injunction is a discretionary remedy and that discretion can properly be exercised only after trial E; and
  • whether a contingent undertaking, whereby Apple undertook to take a Court-determined licence unless the undertaking was found to be unnecessary or too late, made a difference to the grant of an injunction.


Interpretation of clause 6.1 of ETSI IPR policy
The Supreme Court, in its Unwired Planet decision handed down in 2020,(2) had already considered how the ETSI IPR policy balances the respective interests of SEP holders and implementers of technology standards, which informed the Court's decision in this case. The Court also reiterated the established principle from FRAND case law that "hold-out" (ie, unjustified delay taking a licence) by implementers is to be condemned.

In considering French law, which governs the ETSI IPR policy, and interpreting clause 6.1 and in view of the above, the Court found that:

It is not right and not the intention of clause 6.1 [of the ETSI IPR policy] for a party using the technology of a SEP to have the benefit of the patentee's FRAND undertaking in terms of immunity from being sued, without the corresponding burden of taking a licence.

It therefore found that in order to take the benefit of Optis's undertaking to grant FRAND licences pursuant to clause 6.1 of the ETSI IPR policy, Apple had to undertake that it would agree to whatever licence was determined at trial E.

Part of the Court's reasoning was the fact that Apple was infringing Optis's patent rights (as found in the earlier technical trials), meaning that it needed a licence now in order to not be acting unlawfully. However, the judge also found that Apple could remedy the situation by giving an undertaking to take whatever licence was set by the Court at trial E.

Optis further tried to argue that if an implementer does not commit to take a Court-determined FRAND licence either as soon as the SEP holder indicates its willingness to grant a FRAND licence on terms settled by a Court, or upon a finding of infringement and validity, it loses the right to a FRAND licence forever. However, the Court rejected this argument, acknowledging that there may be a number of reasons why implementers may decline to commit to FRAND and it would be unfair to remove the FRAND entitlement permanently.

Effect and significance of competition arguments
Apple had made various allegations that Optis had abused its dominant position, contrary to competition law. It argued that the alleged abuse justified refusing the grant of an injunction against Apple.

However, the Court rejected this argument in this case. The key factors that informed the Court's decision were that:

  • Optis had accepted it had to give a licence and would obey the Court's decision as to the FRAND terms;
  • Apple had the means to obtain a licence but had not taken them;
  • damages would not be an adequate remedy in lieu of an injunction (the Court noted that withholding an injunction would frustrate the goal of preventing hold-out);
  • any effect of the abuses alleged had ceased or had already been prevented by the Court; and
  • there were other remedies available to Apple, such as damages.

As to the fourth point, this was due to the Supreme Court's decision in Unwired Planet, meaning the possibility of non-FRAND royalties no longer existed, and the fact that Optis had had to plead out its case on FRAND rates so that Apple knew where it stood.

Notwithstanding the above, the Court did note that there may be situations where it would be appropriate to refuse an injunction – for example, where the SEP owner had not committed to granting a FRAND licence on the Court-determined terms or where the SEP owner had not explained the basis for the rates sought.

Optis, relying on the Unwired Planet judgment, had also argued that as long as it had committed to the Court's FRAND terms while Apple had not, there could be no finding of abuse. However, the Court rejected that argument, finding that although the implementer not committing to take a FRAND licence is a factor in whether there is no abuse, it was just one factor in a multifactorial assessment. It would therefore be for trial E to decide whether Optis had abused its dominant position.

Discretionary nature of an injunction
The Court made clear that there is a powerful interest in SEP owners being granted injunctions where there is a finding of infringement and the SEP owner has respected its own FRAND commitments and there are no issues of abuse of dominance. In those situations, there will be little room for Court discretion.

Apple attempted various arguments to support its position that the Court should exercise its discretion in withholding the injunction, including that the Court cannot compel the taking of a licence under FRAND terms, and that the SEP owner would not be prejudiced by waiting, but to no avail. The Court acknowledged that although it cannot compel the taking of a licence, if it grants an injunction against UK patent infringement, the implementer can choose to invoke its right to a licence under clause 6.1 or otherwise submit to the injunction.

Contingent undertaking
The Court was clear that Apple would have to give a binding (rather than contingent) commitment to the FRAND terms to be found in trial E if it is to avoid an injunction.

However, the judge acknowledged that the decision in trial F might be appealed (and the decision in trial B was under appeal), so he could not say whether the contingent undertaking definitely will or will not apply.


The decision is hugely important for SEP owners and implementers alike. Although it is clear that the Court cannot compel a party to take a licence, where a Court has found a SEP valid and infringed, the choice of the implementer is clear: it can either choose to rely on the SEP holder's FRAND commitment or submit to the injunction. This choice is what is unusual about a FRAND injunction. The injunction ceases to have effect if the FRAND licence is entered into.

Interestingly, during the proceedings, Apple had implied that it might consider exiting the UK market if it has to agree to take a licence in advance of knowing its terms. However, the Court rejected this possibility, finding that by giving the contingent undertaking, Apple has agreed that, if it has to and if it is not already too late, it will undertake to take a FRAND licence in advance of knowing the terms.

Given the stark implications of the judgment, it is unsurprising that Apple has appealed the decision. However, importantly, if this decision is upheld, Apple must decide whether it should agree to take a FRAND licence, on terms yet to be determined, or face an injunction in the United Kingdom. The appeal proceedings, and Apple's next steps, will be watched with interest by other implementers of standardised technologies.

If the decision is upheld on appeal, combined with the willingness of UK courts to set global terms for a FRAND licence following the Supreme Court's Unwired Planet decision, the United Kingdom will continue to be seen as an attractive forum for SEP holders to settle their FRAND disputes.

For further information on this topic please contact Mark Marfé, Sarah Taylor or Belinda Lavin at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected], [email protected] or [email protected]). The Pinsent Masons website can be accessed at


(1) [2021] EWHC 2564 (Pat).

(2) [2020] UKSC 37.