UK decision<\/a> goes into vast detail on the factual background, including the history and arrangement of ETSI (and 3GPP) and its IPR Policy, how the working groups function, and the operation of the ETSI declaration process. When construing Clause 4.1 the UK court also looked very closely at French law which requires consideration of ETSI’s general policy goals in relation to Clause 4.1 and a wide range of other materials, including importantly in this case, the behavior of declarants and the comprehensive evidence that the great majority of declarations, including by Apple itself, are made after the Stage 3 freeze date.<\/p>\nThe evidence presented to the court showed that working group participants did not give any thought as to whether or not the technical proposals were or might be the subject of IPR. Furthermore, if the RAN WG2 participants had thought about whether Ericsson was likely to have IPR over the TDoc, they would have concluded that it was likely, regardless of whether or not Ericsson had filed an early declaration. This was because: (i) the RAN WG2 group was “patent heavy”, (ii) Ericsson was a well-known innovator, and (ii) the relevant TDoc was a solution to a new problem arising in LTE.<\/p>\n
The court found “It is a much more natural assessment of Clause 4.1 that it imposed a flexible obligation to be assessed in the light of circumstances of a particular situation and in the context of whatever ETSI\u2019s procedures were at the time.” ETSI\u2019s “recognition that \u201clate<\/em>\u201d declaration was not a problem so long as the FRAND regime worked militates against a hard-edged requirement of the kind that Apple asserts, and the goal of declarations being made for the purposes of licensing negotiations, which clearly was important, also did not require a hard-edged rule”.<\/p>\nThe UK court rejected Apple’s “contentions as to the meaning of Clause 4.1, and therefore its case that Ericsson was in breach, which depended on there being a definite time limit for each sentence of [Clause 4.1]”. Accordingly, Apple’s two arguments failed, and the court found there was no proprietary estoppel. Tellingly, the UK court also held that even if there had been a finding of proprietary estoppel, the relief sought by Apple that Optis could not enforce its patent, or alternatively, seek an in injunction “would be plainly disproportionate” and would have been refused.<\/p>\n
Final Comments<\/strong><\/h2>\nStepping back, the notion that standards participants believe those who propose solutions for standardization may not have IPR associated therewith, and that there may be technically comparable royalty-free technologies available as an alternative, is na\u00efve and ignores the role patents play in realizing a return on one\u2019s investment in developing the technology, and the reality of how ETSI and the working groups operate.<\/p>\n
As noted in the ETSI Guide on IPR, \u201c[i]n complying with the [ETSI IPR] Policy the Technical Bodies should not<\/em><\/strong> become involve in legal discussions on IPR matters\u201d (emphasis added). As a result, the UK court found, based on the evidence before it, that even if IPR is disclosed before a working group meeting, a participant could not use the presence of IPR as a reason to reject a technical proposal, or to discuss that with the other participants. All they could do is argue about the technical merit because that is only basis upon which a technical proposal could be accepted or rejected. According to Nokia\u2019s Amicus <\/em>brief filed in the second Conversant appeal, therefore, \u201cthe background assumption always has been that technical contributions may be covered by pending patents or patent applications\u201d. Further, Nokia adds, that due to the widespread industry practice of disclosing after<\/em><\/strong> adoption of the standard, the IPR status of other technical contributions could<\/em><\/strong> not<\/em><\/strong> have been<\/em><\/strong> determined, even if one wanted to. According to Conversant\u2019s latest appeal brief, Dr. Walker\u2019s testimony was consistent in this regard, with Conversant specifically noting that \u201cDr. Walker could not recall a single instance of a member disclosing IPR at a meeting discussing such proposals.\u201d\u00a0 Similarly, the overwhelming evidence submitted in the UK showed that “there was in fact no practice of [working group] participants checking to see whether TDoc proposals up for discussion in a forthcoming meeting were or might be covered by IP”. It just was not an issue.<\/p>\nETSI’s mandate is to choose the best technical solution, and its main consideration of IPR is to ensure that FRAND licenses are available. So long as holders of IPR declare the same and agree to be prepared to license on FRAND terms to the extent essential, that should meet ETSI’s objectives.<\/p>\n
<\/p>\n","protected":false},"excerpt":{"rendered":"
Two recent court decisions in the United States and the United Kingdom, respectively, have considered (i) the disclosure obligation pursuant to Clause 4.1 of the European Telecommunications Standards Institute\u2019s (ETSI) Intellectual Property Rights (IPR) Policy, and (ii) the impact this has on the enforceability of a patent subject to the Policy…. Both decisions were in the ongoing patent and fair, reasonable, and non-discriminatory (FRAND) related litigations between Optis and Apple. In summary, the decisions confirmed that neither Optis nor its predecessors had breached their duty to disclose IPR to ETSI under clause 4.1, nor did the timing of their disclosures constitute egregious misconduct, so as to result in an implied waiver under U.S. law, or in the case of the UK, a proprietary estoppel, preventing or restricting enforcement of the patent.<\/p>\n","protected":false},"author":110330,"featured_media":138015,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":"","_links_to":"","_links_to_target":""},"categories":[7202,1929,82,6998,845,228,3,1031,38597,37020,187],"tags":[8738,553,12639,3714,11296,73084,8730,4317,5531,38,49,10374,73083,33,14275,44513,172],"yst_prominent_words":[32046,36499,17617,53402,44504],"acf":[],"_links":{"self":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/138011"}],"collection":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/users\/110330"}],"replies":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/comments?post=138011"}],"version-history":[{"count":0,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/138011\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media\/138015"}],"wp:attachment":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media?parent=138011"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/categories?post=138011"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/tags?post=138011"},{"taxonomy":"yst_prominent_words","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/yst_prominent_words?post=138011"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}