Standard essential patents

EIP and Osborne Clarke successful for PanOptis against Apple

The UK High Court has found a patent held by PanOptis and owned by its subsidiary Unwired Planet as valid and infringed by Apple. But no injunction has been ordered against the US tech company, as Apple is to take a court-determined licence. The technical trial is one of many in an ongoing series of proceedings over 3G and 4G technology standards.

20 October 2020 by Amy Sandys

PanOptis, Apple The UK High Court has found a patent held by Unwired Planet and PanOptis valid and infringed by Apple ©Kaspars Grinvalds/ADOBE STOCK

The UK High Court has declared an Unwired Planet patent, which is held by parent company PanOptis, valid and infringed by Apple (case ID: HP – 2019 -000006). The court also rejected Apple’s counterclaim for revocation. Presiding judge Colin Birss only heard the case on 13 October, handing down a provisional judgment on 16 October. However, Apple has avoided an injunction, with the court declaring the party will accept a ‘court-determined licence’ in agreement between the two parties. The patent expires today.

Time runs out

Interestingly, EP 12 30 818 was filed on 20 October 2000, claiming priority from a US filing dated 17 November 1999. With a patent expiry time of 20 years, the patent therefore expires today – 20 October 2020. This is just seven days after the end date of the trial. The Optis Cellular Technology group holds a portfolio of standard essential patents, of which EP 818 is a part. The group accuses Apple of infringing seven patents altogether.

EP 818 relates to a method improving the handover between mobile communication systems. The UK High Court found EP 818 valid and infringed by Apple, although the tech company argued that the patent was not essential. Apple also claimed the patent invalid on the grounds of obviousness and insufficiency. However, the court rejected both arguments.

Arty Rajendra, PanOptis

Arty Rajendra

Technically on FRAND

The case between PanOptis and Apple concerns several technical trials, the first of which took place in October 2020. The court has scheduled the next technical trial for spring 2021.

In July 2021, the FRAND trial begins; it is the first time a UK court has split the FRAND issues into two trials.

The first trial will consider whether the implementer is an ‘unwilling licensee’. The second trial will focus on global licencing and competition law.

Both are currently novel points of law in England, given the UK Supreme Court’s recent decisions in Unwired Planet vs. Huawei, and Conversant vs. Huawei and ZTE. Currently, PanOptis and Apple are also engaged in parallel US proceedings.

Reliable advisors

Once again, PanOptis ran the case with an EIP team lead by Gary Moss. Previously, the firm was also active for PanOptis subsidiary Unwired Planet in the FRAND landmark case before the UK Supreme Court. Co-counsel for PanOptis, as well as for Unwired Planet, is Osborne Clarke partner Arty Rajendra.

Barristers Adrian Speck and Thomas Jones of 8 New Square have already led the proceedings for Unwired Planet.

Gary Moss, EIP, partner, Conversant patent

Gary Moss

On the other hand, Apple relies on Guy Burkhill and Brian Nicholson from 3 New Square. WilmerHale partner Justin Watts, who is Apple’s first choice for UK proceedings, instructed the barrister set, alongside partner Anthony Trenton.

For PanOptis
8 New Square (London): Adrian Speck, Mark Chacksfield, Thomas Jones
EIP (London): Gary Moss, Robert Lundie Smith, Jerome Spaargaren, David Brinck (partners); associates: Jo Welch, Jack Dickerson, Sunny Bansal; paralegal: Steph Harris
Osborne Clarke (London): Arty Rajendra (partner); associate: Lucy Paull (competition law)

For Apple
3 New Square (London): Guy Burkhill, Brian Nicholson
Blackstone Chambers (London): Michael Bloch
WilmerHale (London): Justin Watts, Anthony Trenton (both partners)

UK High Court of Justice, London
Colin Birss (presiding judge)