Wednesday 4 – Thursday 5 May 2022
The Defendants/ Appellants ((1) Apple Retail UK Limited; (2) Apple Distribution International Limited; (3) Apple Inc ‘Apple’) appeal the Order of Meade J (Chancery Division, Patents Court) dated 28 July 2021.
Brief factual background:
Optis is the proprietor of patent EP(UK) 2,229,744 (the `744 patent’) which the court
below declared to be valid and infringed by Apple’s disposing of, offering to dispose of, importing or keeping Apple iPhones and iPads with cellular capabilities in the UK.
Apple challenged validity and raised a further defence based on proprietary estoppel. Subject to those issues, Apple did not contest at trial Optis’ claim (i) that the 744 patent would be essential to the practise of section 5.2.2 of releases 8 and higher of Technical Specification 36.322 (`TS 36.322′) and (ii) that iPhones and iPads with cellular capabilities sold in the UK would infringe the 744 patent.
A central element of Apple’s proprietary estoppel defence was that Optis’ predecessor in title, Telefonaktiebolaget L M Ericsson (`Ericsson’), had secured the incorporation of the invention claimed in the 744 patent into TS 36.322 without disclosing the existence of a provisional patent application which it had made in relation to that invention. On Apple’s case this was a breach of clause 4.1 of the ETSI IPR Policy and generated an equity that Apple was entitled to enforce.
TS 36.322 is part of the LTE standard. It was developed by the 3rd Generation Partnership Project (`3GPP’), which is a partnership between several national and regional standards developing organisations (`SDOs’). The European Telecommunications Standards Institute (`ETSI’) is one such SDO. Companies that are members of SDOs may become members of 3GPP and contribute to the drafting of its technical specifications by sending delegates to participate in 3GPP `working groups’. In doing so, they are bound by the IPR policies of the SDOs of which they are a member. In the case of ETSI, that policy is the ETSI IPR Policy, which has effect between ETSI and each member thereof as a contract governed by French law. Clause 4.1 of the ETSI IPR Policy sets out the way in which an entity should disclose its Intellectual Property Rights (`IPR’).