OxFirst Webinar: FRAND injunctions - A summary of recent case law

by Joan Ng & Roya Ghafele. 

OxFirst’s latest webinar on Oct 24 featured Prof Dr Peter Georg Picht of the University of Zurich. Prof Picht highlighted several issues that have surfaced in recent cases dealing with injunctions pertaining to standard essential patents. He started off by using the overall Huawei vs ZTE framework to highlight under which conditions injunctions can and cannot be issued under CJEU case law. 

Ultimately, said the OxFirst speaker, all parties must behave in a proactive manner. This is the case even if the other party may be non-compliant at a particular point in time. Also, on the issue of conditional injunctions and FRAND injunctions in the UK, the OxFirst speaker noted that the UK has produced fewer SEP- and FRAND-related cases than Germany. Nevertheless, cases heard in the UK have been high profile ones, particularly when it comes to granting what has come to be known as a 'FRAND injunction.'

Particularly noteworthy, he said, was the case of Unwired Planet v Huawei ([2017] EWHC 711 (Pat)), in which the court allowed a conditional injunction only. This is important because it signifies that FRAND is not only about content but also about conduct. Parties should behave in a FRAND compliant manner. The injunction would be in force only if the implementer failed to agree to take a global FRAND licence set by the court, said the speaker. That case was however heard by the Supreme Court this week and its decision in this matter is to be expected in the next couple of months.

In addition, on the issue of anti-hold-out injunctions, the speaker noted the offer of a grace period in the case of TQ Delta v Zyxel Communications ([2019] EWHC 745 (Pat)). Rather than award an injunction immediately, there was the suggestion of a grace period for Zyxel to fulfil some necessary commitments.

Finally, on the issue of anti-suit and anti-anti-suit injunctions, the speaker recognized the complicated nature of case law given that multiple jurisdictions are involved. Prominent points were that it is important that parallel proceedings are not necessarily vexatious or oppressive, because there is some flexibility for such a judgement. But at the same time, it is important that the patentee is able to seek judicial help.

Broadly speaking, the OxFirst presenter pointed out that injunctions have gained relevance in SEP licensing negotiations over time, but that there is still no certainty on when and how injunctions will be granted. He sees, however, a tendency for courts to compete for patent cases, and a grant or refusal of injunctions is one of the points on which courts would tend to compete. The conflict between national case law and global patent law remains to be resolved.

 - The views expressed in this webinar are those of Professor Picht and cannot be attributed to OxFirst, its affiliates, staff, or consultants.-