Introduction

Since the publication of the European Commission's revised Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union (TFEU) to horizontal co-operation agreements in 2010, there have been a number of cases on the enforceability of patents for inventions that are the subject of standardisation agreements, and in particular, on the availability of injunctive relief. In this Law-Now we briefly summarise the latest European and UK cases dominating this area of law, and highlight our upcoming seminar on “Latest Developments in Standards, Patents and FRAND licensing” on Thursday 18 July 2013. Full details on the seminar can be found at the end of this summary.

Latest Developments

European level

Joaquín Almunia, Vice President of the European Commission and the Commissioner responsible for Competition, said in February 2012:

Standardisation processes must be fair and transparent, so that they are not in the hands of established firms willing to impose their technologies. But it is not enough. We must also ensure that, once they hold standard essential patents, companies give effective access on fair, reasonable and non-discriminatory terms”.

Following the statement, there has been a period of sustained investigation by the Commission. A summary of the most recent cases under investigation is set out below:

  • Samsung - The Commission is reviewing claims that Samsung abused its dominant position by seeking injunctions against Apple in a number of Member States on the basis of its mobile phone standard essential patents (SEPs) in breach of a FRAND commitment to license the SEPs on FRAND terms. On 21 December 2012, the Commission issued its Statement of Objections and it is understood that an oral hearing between the parties took place on 2 May 2013.
  • Motorola Mobility – The Commission is investigating claims that Motorola Mobility abused its dominant position by seeking and enforcing injunctions against Apple on the basis of mobile phone SEPs in Germany. On 6 May 2013, the Commission issued its Statement of Objections to Motorola Mobility.
  • Huawei v ZTE – In March 2013, the Düsseldorf Regional Court referred questions to the Court of Justice (CoJ) seeking clarification on whether the pursuit of injunctive relief in relation to a SEP was an abuse of dominance under Article 102 TFEU. Essentially the Düsseldorf Regional Court has referred to the CoJ aspects of the so-called Orange Book defence, asking whether an SEP owner who makes a FRAND licence declaration abuses a dominant position by seeking an injunction against a willing licensee, and whether this entails any obligations on the part of the infringer/prospective licensee.

UK

  • IPCom –v- Nokia - The English High Court had been scheduled to determine FRAND licence terms for the first time in July of this year, in a case concerning enforcement of patents by IPCom. However, the trial has been adjourned, pending the outcome of proceedings in the European Patent Office in which the patent will be amended in order to overcome invalidity objections. This also affects a related set of proceedings between HTC and IPCom under the same patent. A related damages enquiry concerning past acts of infringement was also adjourned, pending the decision of the Supreme Court in Virgin Atlantic Airways -v- Contour, which concerns the effect of revocation or amendment in the EPO on the recoverability of damages for acts determined to infringe prior to the EPO decision.

Conclusion

It is as yet unclear whether the Commission will issue a decision in any of the European cases listed above or whether, as has been the case, the Commission will accept commitments from the patent holder seeking injunctive relief.

What is clear, however, is that this is a very dynamic and evolving area of law that will have important consequences for many companies in the Information and Communication Technology sectors.