Standard essential patents

Optis and EIP win infringement claim against Apple

The final in a series of technical trials between Optis and Apple has seen the UK High Court determine Apple's infringement of two patents. At an upcoming FRAND trial, the court will determine a licence rate for Apple - highlighting the UK's growing status as a go-to jurisdiction for patent owners.

17 March 2022 by Amy Sandys

Optis, Apple, EIP The UK High Court has declared Apple infringed two Optis patents, in the final of five technical trials focusing on 4G communication. A FRAND trial is scheduled for this summer ©wachiwit/ADOBE STOCK

The long-running battle between the parties is concerned with 4G connectivity in mobile phones. So far, the technical trials in the UK have covered cellular network handovers and connectivity, which underpin much of the functionality in a mobile phone. In the fourth and final technical trial, which is the fifth trial overall to be heard by the courts, Optis alleged that Apple infringed its patents EP 21 87 549 B1 and EP 26 90 810 B1. Panasonic originally owned the patents.

In June 2022, following the conclusion of the technical trial series, a second FRAND trial will commence between the parties. This will focus on global licensing and competition law. Optis had sought an injunction, pending the outcome of the licensing agreement.

A technical matter

ETSI guidelines deem the patents standard essential, covering mobile phone technology. Optis accused Apple of infringement, while the US tech company counterclaimed for invalidity based on obviousness over two pieces of prior art. One piece of prior art is owned by Panasonic, with another owned by Nokia.

In the current decision, presiding judge Richard Meade upheld the patents’ validity and essentiality. In the proceedings, essentiality was disputed since, while Apple phones support certain aspects of functionality detailed in the patent claim, UK networks choose not to use this feature.

But the court rejected this counterargument for infringement and found that Apple did infringe the two patents. Furthermore, prior to the trial Optis had applied to unconditionally amend the patents to strengthen its validity claim, which the court also allowed. Apple’s invalidity argument therefore fell short.

Optis in front

In 2019, Optis brought several actions against Apple. The software company claimed that Apple’s 3G and 4G devices infringed eight standard-essential patents which form part of its wider PO Portfolio. Initially, the UK courts listed four technical trials and one FRAND trial.

In the first technical trial, presiding judge Colin Birss found now-expired patent EP 12 30 818 valid, essential and infringed. During the second trial B, Richard Meade also found EP 22 29 744 B1 valid, essential and infringed. Here, the court debated whether Optis is entitled to an injunction or whether Apple can assert a FRAND undertaking. In a separate trial, the court determined that Apple must take a licence on as-yet-undecided FRAND terms or face an injunction.

However, in trial B the judge granted Apple permission to appeal regarding validity – another court assertion made during the Unwired Planet judgment. As such, the following two technical trials were intended to determine to what extent, if at all, Apple infringes the remaining other valid and/or essential Optis portfolio patents.

As such, trial C took place in October 2021, with trial D beginning at the end of January 2022. Given the previous decisions, there is a chance Apple could face a sales ban, or else accept a yet-to-be-determined licence from the UK patent courts.

Apple battles on

In November 2021, the UK court in trial led by Richard Meade handed down a penultimate judgment in the series of technical trials. Although the trial had three patents in issue – EP 20 93 953 B1, EP 24 64 065 B1 and EP 25 92 779 B1 – all issues and claims were based on those in EP 953. In this instance, the judge found the patents obvious over the prior art. It also rejected allegations of insufficiency and obviousness, thus finding the Optis patents invalid.

Furthermore, a Court of Appeal decision in November 2021 rejected the first-instance decision in trial A, finding EP 818 not essential to the standard, and not infringed by Apple. The court did uphold the finding of validity, however. In this instance, the patent covers connectivity issues relating to the ‘handover’ of cellular networks, in particular the transition from GSM to LTE networks. This is a standard of 4G connectivity. Optis did not appeal this decision.

Gary Moss, EIP, partner, Conversant patent

Gary Moss

The sixth trial E is on FRAND and will take place in June and July 2022. Here, the court will determine a licence rate. Following this trial, the court will also consider Apple’s claims that Optis has abused a dominant position.

Back in the hotseat

The London office of EIP once again acted for Optis in the proceedings. The firm is known for co-ordinating the Supreme Court case between Unwired Planet and Huawei. Apple turned to its usual advisors in the UK, WilmerHale, with its team led by partner Justin Watts.

For Optis
Three New Square (London): Thomas Hinchliffe
8 New Square (London): James Whyte, Jennifer Dixon
EIP (London): Gary Moss, Matthew Jones, Jerome Spaagaren, Neil Condon (partners); associates: Sunny Bansal, James Hindle, Joanne Welch, Jack Dickerson, Elizabeth McAuliffe; paralegals: Stephanie Harris, Rebecca Dolman

For Apple
8 New Square (London): Charlotte May, Lindsay Lane
Three New Square (London): Joe Delaney, Jeremy Heald
WilmerHale (London): Justin Watts, Anthony Trenton

UK High Court, London
Richard Meade (presiding judge)