Different Perspective On Samsung v. Apple: Guidance On Enforcing FRAND Pledged Patents In The Netherlands

On Friday 14 October 2011, a Dutch court handed down an important decision in the ongoing, worldwide patent dispute between Apple and Samsung. The preliminary relief judge of the District Court of The Hague denied Samsung's claim for a preliminary (patent) injunction against Apple, accepting Apple's 'FRAND defence'. Although several sources have suggested otherwise, this ruling does not imply that it is no longer possible to obtain an injunction based on 'FRAND pledged' standard essential patents in the Netherlands. On the contrary, the decision provides guidance as to the approach that a patent holder should take in order to ensure that it can successfully enforce its FRAND pledged patents in (preliminary relief) court proceedings. The Court only found that Samsung had not complied with this approach.

Summary of Apple's arguments

Samsung initiated the preliminary injunction proceedings requesting an injunction relating to all Apple products using UMTS technology (such as the iPhone and iPads with 3G functionality). Its claims were based on four patents (EP 1 096 516, EP 1 114 528, EP 1 478 136 and EP 1 188 269) which – according to Samsung – are essential to the UMTS standard.

In the proceedings both parties agreed that the court would first, and in a separate decision, decide on Apple's defence that Samsung could not invoke these patents against Apple.

According to Apple:

Samsung did not have a sufficiently 'urgent interest' in obtaining preliminary relief. Samsung had exhausted its patent rights. By making a FRAND declaration, Samsung had automatically concluded a licence agreement with Apple. Samsung had forfeited its right to enforce its patents by (i) making a FRAND declaration; and (ii) being guilty of a "patent hold-up" or a "patent ambush". Enforcing the patents would constitute an abuse of patent rights, because Samsung had not made Apple a FRAND offer. The first four elements of Apple's defence were all rejected by the court. The Court's assessment of these arguments contains some interesting and uplifting points for holders of standard essential patents.

1: Samsung did have a sufficiently urgent interest in obtaining preliminary relief

The Court conceded that Apple has been selling products using UMTS in the Netherlands since 2008 without any legal objections by Samsung until now. Nevertheless, it considered that Samsung could (now) rightly claim 'urgency' in view of the (mere) fact that these proceedings were part of a recent international series of patent suits between the parties. The Court added that Samsung's interest in an injunction already followed from the extra leverage Samsung would get in the negotiations if it were to obtain the injunction.

The above reasoning confirms that in practice the 'urgency' requirement will normally not be a big hurdle for patent holders seeking an interim injunction in the Netherlands.

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