“The object of the comparability exercise, in this as in any other branch of the law, is to find the closest possible parallel. If there is an exact parallel, there is no point in looking any further. If there are slight differences, an allowance may be made. But once you have found your comparables, whether one or more, which enable you to arrive at the appropriate figure, it would surely be erroneous to modify that figure by reference to other cases which are not truly comparable at all, so as to bring the case into line with a predetermined range. This was, with great respect, the mistake which the hearing officer made.”
“however unpalatable the prospect, a retrial is the only just course” and at [187] described a retrial as a “serious step which must be regarded as a last resort”
“To the extent necessary beyond the UK FRAND Proceedings, the Plaintiffs request a declaratory judgment in this Court that negotiations toward a FRAND license with Apple were conducted in good faith, comply with the ETSI IPR Policy, and were consistent with competition law requirements. This request by the Plaintiffs is not duplicative or inconsistent with the UK Proceedings, and, to the extent necessary to avoid any duplication or inconsistency, should be subordinate to the UK FRAND Proceedings.”
“Any Court-determined global portfolio licence in the present proceedings should provide for any final damages award in the EDTX case to be taken into account when determining such royalties as may be due under the licence.”
“Release PANOPTIS hereby releases, acquits and forever discharges APPLE, from any and all claims of infringement of the Licensed Patents with respect to acts performed by or for APPLE before the Effective Date. 3.1 Release. In consideration of the payment set forth in Section 5, and subject to full receipt of such payments and to Section 3.2, PANOPTIS hereby releases, to the extent of its right to do so, APPLE and its Affiliates in respect of any Patent infringement arising prior to the Effective Date of this agreement for which the rights and licenses expressly granted under this agreement to APPLE and its Affiliates would be a complete defence had this agreement been in effect at the time such Patent infringement arose. 3.2 Release Limitations. (a) The release in Section 3.1 does not apply to any persons or businesses which APPLE or any of its Affiliates acquire after the Effective Date. In particular, without prejudice [to] the generality of the foregoing, if APPLE or any of its Affiliates, individually or collectively, acquire one or more Entities, or the business or assets or any portion thereof of one or more Entities or other persons, but such Entities or persons were not part of APPLE or its Affiliates as of the Effective Date, then such Entities will not be covered by the releases granted in Section 3.1. (b) The release in Section 3.1 shall not apply to any cause of action based on a breach of or a misrepresentation of fact in connection with such Licensed Products, and to have any of the forgoing activities performed for APPLE, during the Term this Agreement (whether fraudulent, negligent or innocent).”
“… Optis agrees that there should not be double counting with respect to its compensation for the use of certain of its US SEPs, however the precise way in which the outcome of the EDTX case may need to be taken into account in respect of the global licence to the PO Portfolio will depend on the terms set by the Court for the global licence, and the timing of, and the final outcome of Apple’s EDTX appeal and Apple’s actual and prospective position in respect of the same.”
“Licensor shall, at its own cost, take all steps necessary to secure the dismissal of all claims brought against Apple alleging infringement of any of the Licensed Patents in any litigation in any jurisdiction, including [the EDTX proceedings] (all of the foregoing litigation, collectively, the ‘Lawsuits’) with prejudice, and Apple shall, at its own cost, take all steps necessary to secure the dismissal of all counterclaims brought in the Lawsuits without prejudice … Licensor agrees (a) to take no action to enforce against Apple any order or judgment obtained in any Lawsuit prior to the Effective Date and (b) to take no additional action to prosecute any Lawsuit against Apple … after such requests for dismissal are made. …”
“Any proposal for peace must include a dismissal of all claims between the parties. This clause to be updated as appropriate to reflect the status of the Lawsuits as at the Effective Date.”
“The parties agree that the licence settled by this Court must avoid double-counting as between the EDTX and England: see Optis’ Reply Position Statement §58 …. Apple submits that it is reasonable for the EDTX SEPs to be included in the licence settled by this Court – for whatever consideration is determined by this Court to be fair – and for that licence to require the EDTX litigation to be dismissed by consent: see cl. 3 of Apple’s mark-up ….”
“292. Optis’s position is that the way in which to deal with the relationship between the damages award and the royalty determined under the licence settled by the Court will need to be resolved after this Court has made its determination on the FRAND licence. For example, depending on the Court’s overall determination the fair approach may be that the valuation of [the] 5 patents in question [is] carved out of the licence settled to allow the US action to take its course. 293. The key point is that Optis was entitled to (and required) to sue in the USA because of Apple’s hold out. … However the interaction between this licence and the US damages award is to be resolved, Optis’ position is that it should not be left short of whatever legitimate recompense it is entitled to due to Apple’s conduct …, including … its refusal to commit to the outcome of this FRAND claim until forced to do so by the Court.”
“This is new, controversial and potentially important. Apple will resist this, including on the basis that Optis has not pleaded this previously, and that Optis is seeking to have its cake and eat it by simultaneously invoking the jurisdiction of the English court to set global FRAND rates and bringing separate national claims. Apple agrees that it may well require submissions from the parties at a later stage, depending on the Court’s judgment.”
“… Optis has explicitly stated that there should not be double recovery in respect of the patents the subject of the EDTX award. As such Optis is not seeking to ‘have its cake and eat it’. Further, Optis’ suggestion of the EDTX patents being carved out of this Court’s settled licence made at §292 of its Reply Submissions was only an example of what might be appropriate depending on the Court’s determination of the FRAND licence. In any event, the parties are agreed that this is a matter which should be addressed after the Court’s judgment.”
“… Optis … proposed in its written Reply Submissions that the issue of avoiding ‘double recovery’ as a result of the separate EDTX damages award … be dealt with after judgment (and Apple has agreed).”
“The purpose of this Judgment is to resolve the FRAND Question: no more and no less. The terms I settle will therefore be confined to the minimum needed to resolve this question, but with the intention of ensuring that this particular question – the value of the Portfolio on a FRAND basis – does not trouble the courts again.”
“Other proceedings and other licences by Apple. Throughout the course of these proceedings, reference was made to proceedings in other jurisdictions concerning the Portfolio. All other proceedings involving the Portfolio will have to be compromised as one of the terms of the licence, and Apple may take and Optis will have to give credit for any payments made. To the extent there has been over-payment, this should be recoverable by Apple. If necessary, I will consider (subject to argument) granting an injunction to ensure that any proceedings undermining the licence I am drawing stop.”
“Precisely how the licence is to be drawn is a matter that will have to be debated in light of this Judgment and in the light of a draft licence that I am going to invite the parties to draw up for my attention. What follows should be taken as a binding guide as to how the licence is to be drawn. But, I accept, that there will be details that will need to be fleshed out and further articulated.”
“(f) Other proceedings 503. This is a worldwide licence, covering the entirety of the Portfolio, and is closing out any claims against Apple, whether for past or future infringement. It follows that any proceedings anywhere in the world by Optis against Apple in respect of the Portfolio should cease, and (to the extent necessary) injunctive relief can be applied for by Apple. 504. Equally, any payments due by Apple, and not made, should be abrogated. That can, as necessary, be a term of the licence. 505. Insofar as any payments have been made, these should be credited against the sums due from Apple under this licence, and any overpayments repaid. Again, provision should be made for this in the licence.”
“Although I was aware of the existence of parallel – or, to be more accurate, partially duplicative – proceedings in the United States, namely the EDTX Proceedings, neither party addressed me as to the implications of this partial duplication during the course of Trial E. As will become apparent, this is a matter that ought to have been drawn to the court’s attention, and the relationship clarified, well before Trial E; and not after it. Be that as it may, the problem which has now arisen is that Optis wishes to take inconsistent positions in the two sets of proceedings. That question must now be resolved.”
“(b) This is not a case of competing jurisdictions 75. Optis contended that it would be wrong for this court to interfere with the EDTX proceedings. Optis stressed that the judgments obtained by them in the United States were res judicata, and that questions of comity between courts precluded this court from interfering with a court (such as the [EDTX]) with territorial jurisdiction over patents infringed or alleged to have been infringed in that jurisdiction. 76. In general terms, I accept the point made by Optis as regards res judicata and the importance of comity between jurisdictions. But I regard these points as irrelevant to the question at hand. There is no doubt that Optis and Apple, acting in concert, can dispose of the EDTX Proceedings in any way they wish. Indeed, even if those proceedings had concluded, with Apple actually paying US$300 million to Optis in damages, there would be nothing to prevent Optis (solvency allowing) from repaying that amount to Apple, if it chose to do so. The point is that the EDTX proceedings – as is the case with civil proceedings generally – can be disposed of by the parties according to their will, and courts across this jurisdiction and in the United States will give effect to the will of the parties. Questions of comity, res judicata, competing judgments and rival jurisdictions treading on each other’s toes in violation of international comity between courts and jurisdictions simply do not arise.”
“84. From this, it would appear to follow that the consequences outlined in Judgment/[489(iv)] and [503] to [505] hold good: they simply reflect the consequences of the claim that has consistently been asserted by Optis throughout these proceedings. 85. However, Optis contended that even if the conclusion expressed in paragraph 82 above was right – and that the outcome of these proceedings was the declaration of a worldwide licence, with no ‘carve out’ for the patents being asserted in the EDTX Proceedings – the suggestion that this Court should go any further than simply making the declaration was wrong. Rather, this Court should declare a licence in FRAND terms, and leave it to the courts of the United States to work out the implications. This court should be very slow to tell the courts of another jurisdiction how to conduct their business whether directly or indirectly (i.e. by exercising a personal jurisdiction over the parties as to how they conducted themselves abroad). 86. The essence of Optis’ point was that this court should exercise a self-denying ordinance in terms of how it intruded itself in the affairs of other (foreign) jurisdictions. Let me say at once that I accept the general force of Optis’ point, but that I do not consider that point to have any force in the present case. That is substantially for the reasons given above, but (without repetition) the following additional points can be made: i) It is a mistake to regard the Court-Determined Licence as anything other than a remedy arising out of an established or admitted infringement of the United Kingdom intellectual property right, justiciable before the courts of England and Wales. ii) True it is that the parties and court will strive to render the Court-Determined Licence as self-standing as possible, so that the parties do not have to trouble the court again with regard to the terms of the licence. That objective is usually achieved, but it is not the paramount objective. At the end of the day, the Court-Determined Licence is just that: a set of obligations imposed on the parties pursuant to the jurisdiction I have described. There is nothing inimical to that jurisdiction in the court reserving an ability to police the Court-Determined Licence, and sometimes it will be the court’s positive duty to assume that role. iii) This is such a case. It is quite clear to me that there a level of commercial mistrust between Optis and Apple so as to render a self-standing agreement that will not be referred back to some court or other an impossibility. The Court-Determined Licence in this case effectively involves a price for a portfolio of rights, where both the price and portfolio are known. A short agreement ought to be possible. Yet the draft agreements that the parties have presented have grown in length and complexity, and the number of drafting disagreements has increased accordingly. The risks of one party or other alleging breach of the agreement, possibly even repudiation, are high. It has therefore seemed to me appropriate to revert to an agreement that sets out the essentials, but leaves scope for disagreements in regard to the carrying of the agreement into effect to return to this court. iv) That is the Court-Determined Licence that I have drafted. That approach not only seems to me the most workable – the greater the opportunities the parties have to bring matters back to court, the less I anticipate those opportunities will be used – but also it serves to underline the essentially remedial purpose of the Court-Determined Licence and the fact that this licence is, in a quite fundamental way, a matter for the courts of this jurisdiction.” i) It is a mistake to regard the Court-Determined Licence as anything other than a remedy arising out of an established or admitted infringement of the United Kingdom intellectual property right, justiciable before the courts of England and Wales. ii) True it is that the parties and court will strive to render the Court-Determined Licence as self-standing as possible, so that the parties do not have to trouble the court again with regard to the terms of the licence. That objective is usually achieved, but it is not the paramount objective. At the end of the day, the Court-Determined Licence is just that: a set of obligations imposed on the parties pursuant to the jurisdiction I have described. There is nothing inimical to that jurisdiction in the court reserving an ability to police the Court-Determined Licence, and sometimes it will be the court’s positive duty to assume that role. iii) This is such a case. It is quite clear to me that there a level of commercial mistrust between Optis and Apple so as to render a self-standing agreement that will not be referred back to some court or other an impossibility. The Court-Determined Licence in this case effectively involves a price for a portfolio of rights, where both the price and portfolio are known. A short agreement ought to be possible. Yet the draft agreements that the parties have presented have grown in length and complexity, and the number of drafting disagreements has increased accordingly. The risks of one party or other alleging breach of the agreement, possibly even repudiation, are high. It has therefore seemed to me appropriate to revert to an agreement that sets out the essentials, but leaves scope for disagreements in regard to the carrying of the agreement into effect to return to this court. iv) That is the Court-Determined Licence that I have drafted. That approach not only seems to me the most workable – the greater the opportunities the parties have to bring matters back to court, the less I anticipate those opportunities will be used – but also it serves to underline the essentially remedial purpose of the Court-Determined Licence and the fact that this licence is, in a quite fundamental way, a matter for the courts of this jurisdiction.”
“Pending the entry into force of the Court-Determined Licence pursuant to the Optis Undertaking: (i) Each of Optis and Apple are obliged to do nothing inconsistent with or prejudicial to the future operation of the Court-Determined Licence. (ii) Each of Optis and Apple may apply to this Court (reserved to Marcus Smith J or, if unavailable the Judge in Charge of the Patents Court …) on seven days’ notice for direction as to whether a proposed course of conduct is permitted under paragraph 6(2)(i) above. (iii) Each of Optis and Apple may apply to this Court (reserved to Marcus Smith J or, if unavailable the Judge in Charge of the Patents Court …) for any order appropriate to maintaining and/or preserving the effective future operation of the Court-Determined Licence.”
“… If an implementer is concerned about the validity and infringement of particularly significant patents or a group of patents in a particular jurisdiction which might have a significant effect on the royalties which it would have to pay, it might in our view be fair and reasonable for the implementer to reserve the right to challenge those patents or a sample of those patents in the relevant foreign court and to require that the licence provide a mechanism to alter the royalty rates as a result. It might also be fair and reasonable for the implementer to seek to include in the licence an entitlement to recover sums paid as royalties attributable to those patents in the event that the relevant foreign court held them to be invalid or not infringed, although it appears that that has not been usual industry practice. Huawei suggests that it would serve no purpose for a UK court to fix the terms of a global licence but to provide for the alteration of royalties in the event of successful challenges to declared SEPs overseas. This would, it suggests, reduce a licence to an interim licence. Again, we disagree. Under a FRAND process the implementer can identify patents which it wishes to challenge on reasonable grounds. For example, in the Conversant case, it might well be argued by Huawei or ZTE at trial that the obligation of fairness and reasonableness required any global licence granted by Conversant to include provision to allow for Huawei or ZTE to seek to test the validity and infringement of samples of Conversant’s Chinese patents, with the possibility of consequential adjustment of royalty rates, given the importance of China as a market and a place of manufacture. In other cases, such challenges may make little sense unless, at a cost proportionate to what was likely to be achieved in terms of eliminating relevant uncertainty, they were likely significantly to alter the royalty burden on the implementer.”