The meaning of frand, Part ii: injunctions

sidak, j. gregory;

Under what conditions may the holder of standard-essential patents (SEPs)
seek to enjoin an infringing implementer without breaching the SEP holder�s
contract with the standard-setting organization (SSO) to provide access to
those SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms?
I show that the SEP holder�s contractual obligations still permit it to seek an injunction.
A FRAND commitment requires the SEP holder to offer a license for
the SEPs on FRAND terms (or otherwise to grant implementers access to the
SEPs). Extending an offer containing a price within the FRAND range
discharges the SEP holder�s contractual obligation. Thereafter, the SEP holder
may seek to enjoin an implementer that has rejected a FRAND offer. This
analysis indicates the imprudence of categorically banning injunctions for the
infringement of SEPs, as some scholars have advocated and as one of the
world�s most significant SSOs�the Institute of Electrical and Electronics
Engineers (IEEE)�actually did in 2015 in amendments to its bylaws. Such a
ban would invite opportunism by implementers and is unnecessary. Courts
already can prevent opportunism by SEP holders by conditioning an injunction
on the implementer�s actual or constructive rejection of a FRAND offer.