In a landmark decision that will establish a precedent, the European Commission prohibited Motorola from seeking an injunction against Apple for using some of its GSM patents, because Apple has explicitly declared its willingness to enter a license agreement under FRAND terms, with the compensation being determined by the court. When the GSM standard was adopted in Europe, Motorola Mobility declared some of its patents as being essential and gave a commitment that it would license the patents it had declared essential to the standard on FRAND terms. The Commission decided not to impose a fine on Motorola because it was the first case in which the Commission had assessed this type of injunction under Article 102 of the Treaty.
"This constitutes a 'safe-harbour' against SEP-based injunctions. A licensee should also remain entitled to challenge the validity and infringement of the SEPs it has to licence," said Almunia about the Motorola decision.
The Commission also concluded that Samsung had abused its power in seeking injunctions against Apple in several European Union member states on the basis of infringement of its patents for the 3G standard. The Commission noted that Apple had been negotiating a licensing agreement at the same time Samsung was seeking the injunctions.
Samsung has been constantly seeking injunctions in European courts to counteract the Apple lawsuits in the American courts against it for copying key features of the iPhone and iPad.
Now Samsung, in order to halt an EU decision against it, has made commitments to the Commission with regard to its SEPs and FRAND terms. The Commission has made those commitments legally binding, according to the press release:
Samsung commits not to seek injunctions for five years in Europe on the basis of SEPs for smartphones and tablets against any potential licensee who agrees to accept a specified licensing framework.
This licensing framework consists of:
- a mandatory negotiation period of up to 12 months;
- and, if the negotiation fails, a determination of FRAND terms by a third party – either by a court or arbitration.
In his concluding remarks, Almunia explained the Commission's policy about patents:
Both competition and the protection of intellectual property are essential to innovation and growth. This means that IP rights should not be misused to the detriment of competition and ultimately consumers. I would encourage other industry players to consider establishing similar dispute resolution mechanisms.
— Pablo Valerio is a freelance blogger who writes about mobile and telecom issues for EE Times He lives and works in Spain.