Optis v Apple (EWCA, [2022] EWCA Civ 1411, 2022)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Court of Appeal (Arnold LJ, with whom Asplin LJ and Elisabeth Laing LJ agreed, paras 116 and 117) upholds the FRAND injunction granted at first instance: the owner of a standard essential patent found valid and infringed is entitled to an injunction unless and until the implementer undertakes to take a licence on FRAND terms to be determined later by the court (paras 1 to 3 and 88 to 91). Both appeals are dismissed (para 114).

The judgment makes a real undertaking to take the court determined licence the condition for relying on the FRAND undertaking. It treats hold-out and hold-up as the two evils the FRAND regime must prevent (paras 7, 8 and 11) and urges standard development organisations to provide for legally enforceable arbitration (para 115).

Facts and procedure

Optis brought infringement proceedings in February 2019 on eight patents declared essential to ETSI; the case was split into technical trials (A to D), a Trial E on FRAND terms heard in mid 2022, and a Trial F (paras 16 to 29). Trial F concerned whether Apple had permanently lost the benefit of the ETSI undertaking and whether an unqualified injunction should follow.

By an order of 5 October 2021, Meade J ([2021] EWHC 2564 (Pat)) required Apple, if it wished to rely on the ETSI undertaking, to undertake to enter into a licence in the form determined to be FRAND at Trial E; Apple gave that undertaking and an unqualified injunction was refused (paras 1 and 2). Apple appealed on four grounds and Optis cross appealed (paras 49 to 57).

The applicable law

Clause 6.1 of the ETSI IPR Policy, governed by French law, operates as a stipulation pour autrui for the benefit of those who seek a licence (paras 31, 59 and 68). The court applies the principles laid down by the Supreme Court in Unwired Planet v Huawei ([2020] UKSC 37) and considers the Article 102 TFEU ground in the light of Huawei v ZTE (C-170/13) (paras 92 to 100).

Question

May an implementer that refuses to undertake to take a licence on FRAND terms to be set by the court rely on the FRAND undertaking to avoid an injunction, and does that refusal permanently deprive it of the benefit of the undertaking?

Decision

Apple’s first ground fails: seeking a licence means agreeing to take one on objectively FRAND terms, and Apple’s reading would undermine the purpose of clause 6.1 identified by the Supreme Court (paras 66 and 68). The second ground is described as a hopeless contention: the judge was right to find that Apple intended to work EP744 without a licence until Trial E (para 81). The competition law ground is rejected: withholding an injunction would leave the patentee with an inadequate remedy and encourage hold-out, financial remedies are adequate for Apple, and nothing in Huawei v ZTE calls the decision into question (paras 92 to 100). The procedural complaints also fail (paras 101 to 113).

Optis’s cross appeal is dismissed: an implementer that changes its mind remains a beneficiary of clause 6.1 and may enforce it at any time (paras 83 to 87), and a FRAND injunction allowing for Apple changing its mind is right in principle (paras 88 to 91). The court notes the dysfunctional state of the system for resolving SEP and FRAND disputes and considers that only legally enforceable arbitration built into the IPR policies of standard development organisations could stop such conduct (para 115).

Key points for practice

• Before the English courts, relying on the FRAND undertaking requires the implementer to undertake to take the licence on the terms the court will determine (paras 3 and 68).
• An initial refusal does not cause permanent forfeiture: the implementer may change its position and enforce the undertaking at any time (paras 85 and 87).
• Huawei v ZTE does not preclude a FRAND injunction against an implementer that refuses such an undertaking (para 100).
• Practical point: an implementer challenging FRAND terms in the United Kingdom must decide early between undertaking to take the court determined licence and running the risk of an injunction in the UK market.

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

Other provisions

ETSI IPR Policy, clause 6.1

National law

French law: stipulation pour autrui

Case law cited

Unwired Planet v Huawei [2020] UKSC 37; Unwired Planet v Huawei [2017] EWHC 1304 (Pat); CJEU, Huawei v ZTE (C-170/13); TQ Delta v ZyXEL [2019] EWCA Civ 1277

Related decisions

• Unwired Planet v Huawei, 26 August 2020, Supreme Court judgment whose principles the court applies.
• Huawei v ZTE, 16 July 2015, CJEU judgment considered on the competition ground (para 100).
• Optis v Apple, 10 May 2023, same proceedings, Trial E judgment setting the FRAND terms.
• Optis v Apple, 1 May 2025, same proceedings, appeal judgment on Trial E.

Prepared by Dhenne Avocats from the text of the decision (National Archives, caselaw.nationalarchives.gov.uk), consulted on 11 October 2026. Only the official text is authoritative.