District Court of The Hague, 14 October 2011

Judgment
Judgment in the preliminary injunction proceedings of 14 October 2011
the company, incorporated under foreign law
SAMSUNG ELECTRONICS CO. LTD.,
located in Yeongtong-gu Suwon, Gyeonngi-do, South-Korea,
plaintiff with respect to the main claim,
defendant in counterclaim,
attorney: mr. W.P. den Hartog, The Hague
versus
1. the company, incorporated under foreign law
APPLE INC.,
located in Cupertino, CA, United States of America,
2. the company, incorporated under foreign law
APPLE SALES INTERNATIONAL,
located in Cork, Ireland,
3. the private company with limited liability
APPLE HOLDING B.V.,
located in Bunnik (the Netherlands),
4. the private company with limited liability
APPLE BENELUX B.V.,
located in Bunnik (the Netherlands),
5. the private company with limited liability
APPLE NETHERLANDS B.V.,
located in Bunnik (the Netherlands)
6. the private company with limited liability
APPLE RETAIL NETHERLANDS B.V.,
located in Amsterdam (the Netherlands),
defendants with respect to the main claim,
plaintiffs in the counterclaim
attorney: mr. P.J.M. von Schmidt auf Altenstadt, The Hague
Parties will hereafter be referred to as Samsung and Apple (all defendants).
In this case, Samsung was represented by mr. B.J. Berghuis van Woortman, mr. M.V. Slotboom,
mr.ir. M.W. de Koning, mr.drs. A.F. Kupecz and mr.ir. R.C. Ladd, attorneys-at-law in Amsterdam.
Apple was represented by mr. R. Kleemans, mr. J.D. Drok and mr. W. Knibbeler, also all attorneys-atlaw in Amsterdam.

1. The proceedings
1.1. The course of the proceedings becomes apparent from:
- the writ of summons dated 12 July 2011 (KG ZA 11-818), together with exhibits 1 through 14;
- the writ of summons dated 12 July 2011 (KG ZA 11-819), together with exhibits 1 through 14;
- the writ of summons dated 9 August 2011 (KG ZA 11-936), together with exhibits 1 through 12;
- the writ of summons dated 9 August 2011 (KG ZA 11-937), together with exhibits 1 through 13;
- the statement of defence with respect to the main claim and the statement of claim in the
counterclaim and the deed of submission of evidence of Apple, together with exhibits 1 through 8;
- the deed of submission of additional exhibits for the oral proceedings on 26 September 2011 by
Samsung, together with exhibits 1 through 19b;
- the deed of submission of additional evidence by Apple, together with exhibits 9 through 16;
- the additional exhibits 20 through 23b by Samsung, received on 22 September 2011;
- the deed of submission of additional exhibits by Apple, received on 23 September 2011, together
with exhibits 17 through 21 (erroneously numbered up to and including 22 in the deed);
- the additional exhibit 24 by Samsung, sent by email on 25 September 2011;
- the oral proceedings in the four joined cases, that has taken place on 26 September 2011, for which
the attorneys handed over their pleading notes.
1.2. In agreement with the parties, the proceedings, scheduled 26 September 2011, were limited to
the preliminary questions relevant for all four cases, which will be discussed hereafter.
1.3. Exhibit 24, submitted by Samsung by email on 25 September 2011, was rejected ex officio
because it was sent after the set term for submitting evidence and was received so late that the
President was not able to take notice of it before the oral hearing.
1.4. Furthermore, Apple objected against exhibits 20, 21 and 22 because those were sent after the
set term as well. After Samsung replied to this objection, exhibit 20 was allowed because the
President was of the opinion that Samsung had not reasonably been able to send it sooner. Exhibits
21 and 22 were rejected because there are no clear grounds why these exhibits could not have been
sent before the set time limit. Samsung did not state that it was unable to produce this evidence
sooner and it did not put forward a good reason for submitting the exhibits only at this stage of the
proceedings.
1.5. The oral proceedings have taken place in part behind closed doors because of the confidential
nature of some of the information discussed. This relates to exhibit 18 by Samsung and Apples
exhibits 1, 5 (5a through 5m, 8), 14 and 18 through 20. The parts of this verdict that concern this
information are redacted in copies handed to third parties, as prescribed by article 28 paragraph 4
Dutch Code of Civil Procedure (DCCP). In this verdict, those parts are placed between brackets ([ ])
and printed in red.
1.6. The verdict is set at present. It is agreed with the parties that it will depend on the decisions on
the preliminary questions whether an interlocutory judgment or a final judgment will be given.

2. The facts
In these preliminary injunction proceedings the following facts, which were not contested by the
parties, will be presumed.
The 3G-standard, ETSI and the ETSI IPR Policy
2.1. To make mobile telecommunication-technology as broadly applicable as possible, this
technology has been standardised. The development of such a standard takes place upon the
initiative of a standardization organisation, referred to in English as a standard setting organisation
or SSO, in which, among others, manufacturers of mobile phones and telecommunicationinfrastructure co-operate.
2.2. The relevant standard for the mobile telephone industry of the third generation originates from
the 3rd Generation Partnership Project (3GPP), in which SSOs from Europe, the United States, China,
Korea and Japan participated. The standard relates to 3G- or UMTS- (Uniform Mobile
Telecommunications System) technologies, in particular CDMA and W-CDMA-technology, which
stands for (Wideband) Code Division Multiple Access.
2.3. Technology included in a standard is often patented. Patents for (parts of) the standardised
technology are called essential patents. Applying the standard necessarily - means applying the
patented technology.
2.4. To guarantee accessibility of the standardised technology, SSO members must state that they
are prepared to grant a license to their essential patents on fair, reasonable and non-discriminatory
conditions, to every party that requests such a license. In English one speaks of FRAND (fair,
reasonable and non-discriminatory) conditions.
2.5. The European participant to 3GPP is ETSI (European Telecommunications Standard Institute).
Members of ETSI are contractually bound to the policy rules that ETSI has made concerning
intellectual property rights, the ETSI IPR Policy. These policy rules are frequently amended. The
policy relevant to the cases at hand was set in 1997. This policy contains, among others, the
following rules.
3 Policy Objectives
3.1 STANDARDS shall be based on solutions which best meet the technical objectives of the
European telecommunications sector, as defined by the General Assembly. In order to further this
objective the ETSI IPR POLICY seeks to reduce the risk to ETSI, MEMBERS, and others applying ETSI
STANDARDS, that investment in the preparation, adoption and application of STANDARDS could be
wasted as a result of an ESSENTIAL IPR for a STANDARD being unavailable. In achieving this
objective, the ETSI IPR POLICY seeks a balance between the needs of standardization for public use
in the field of telecommunications and the rights of the owners of IPRs.
3.2 IPR holders whether members of ETSI and their AFFILIATES or third parties, should be
adequately and fairly rewarded for the use of their IPRs in the implementation of STANDARDS.

3.3 ETSI shall take reasonable measures to ensure, as far as possible, that its activities which relate
to the preparation, adoption and application of STANDARDS, enable STANDARDS to be available to
potential users in accordance with the general principles of standardization.
4 Disclosure of IPRs
4.1 Each MEMBER shall use its reasonable endeavours to timely inform ETSI of ESSENTIAL IPRs it
becomes aware of. In particular, a MEMBER submitting a technical proposal for a STANDARD shall,
on a bona fide basis, draw the attention of ETSI to any of that MEMBER's IPR which might be
ESSENTIAL if that proposal is adopted.
4.2 The obligations pursuant to Clause 4.1 above do however not imply any obligation on MEMBERS
to conduct IPR searches.
(...)
6 Availability of Licences
6.1 When an ESSENTIAL IPR relating to a particular STANDARD is brought to the attention of ETSI,
the Director-General of ETSI shall immediately request the owner to give within three months an
undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and nondiscriminatory terms and conditions under such IPR to at least the following extent:
MANUFACTURE, including the right to make or have made customized components and subsystems to the licensee's own design for use in MANUFACTURE;
sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED;
repair, use, or operate EQUIPMENT; and
use METHODS.
The above undertaking may be made subject to the condition that those who seek licences agree to
reciprocate.
(...)
8 Non-availability of Licences
8.1 MEMBERS' refusal to license
8.1.1 Where a MEMBER notifies ETSI that it is not prepared to license an IPR in respect of a
STANDARD, the General Assembly shall review the requirement for that STANDARD and satisfy itself
that a viable alternative technology is available for the STANDARD which:
is not blocked by that IPR; and
satisfies ETSI's requirements.
8.1.2 Where, in the opinion of the General Assembly, no such viable alternative technology exists,
work on the STANDARD shall cease, and the Director-General of ETSI shall request that MEMBER to
reconsider its position. If the MEMBER decides not to withdraw its refusal to license the IPR, it shall
inform the Director-General of ETSI of its decision and provide a written explanation of its reasons
for refusing to license that IPR, within three months of its receipt of the Director-General's request.
The Director-General shall then send the MEMBER's explanation together with relevant extracts
from the minutes of the General Assembly to the ETSI Counsellors for their consideration.
8.2 Non-availability of licences from third parties

Where, in respect of a STANDARD, ETSI becomes aware that licences are not available from a third
party in accordance with Clause 6.1 above, that STANDARD shall be referred to the Director-General
of ETSI for further consideration in accordance with the following procedure:
i) The Director-General shall request full supporting details from any MEMBER who has complained
that licences are not available in accordance with Clause 6.1 above,
ii) The Director-General shall write to the IPR owner concerned for an explanation and request that
licences be granted according to Clause 6.1 above.
iii) Where the IPR owner refuses the Director-General's request or does not answer the letter within
three months, the Director-General shall inform the General Assembly. A vote shall be taken in the
General Assembly on an individual weighted basis to immediately refer the STANDARD to the
relevant COMMITTEE to modify it so that the IPR is no longer ESSENTIAL.
iv) Where the vote in the General Assembly does not succeed, then the General Assembly shall,
where appropriate, consult the ETSI Counsellors with a view to finding a solution to the problem. In
parallel, the General Assembly may request appropriate MEMBERS to use their good offices to find a
solution to the problem.
v) Where (iv) does not lead to a solution, then the General Assembly shall request the European
Commission to see what further action may be appropriate, including non recognition of the
STANDARD in question.
In carrying out the foregoing procedure due account shall be taken of the interest of the enterprises
that have invested in the implementation of the STANDARD in question.
(...)
12. Law and Regulation
The POLICY shall be governed by the laws of France. (...)
14 Violation of Policy
Any violation of the POLICY by a MEMBER shall be deemed to be a breach, by that MEMBER, of its
obligations to ETSI. The ETSI General Assembly shall have the authority to decide the action to be
taken, if any, against the MEMBER in breach, in accordance with the ETSI Statutes.
2.6. On 27 November 2008 ETSI established the ETSI Guide on Intellectual Property Rights. This
guide contains, among other things, the following:
Background
The ETSI IPR Policy was adopted by the 21st General Assembly on 23 November 1994 and
incorporated in the ETSI Directives as Annex 6 to the ETSI Rules of Procedure.
At a later stage a Technical Body Chairman's Guide on IPRs had been written to help Chairmen and
others involved in ETSI's standardization activities to understand and implement the Institute's IPR
Policy. That Chairman's Guide on IPR had not been endorsed by the General Assembly or the Board
and therefore did not have the same official status as the ETSI Statutes, the Rules of Procedure or
the Technical Working procedures. The Technical Body Chairman's Guide on IPRs is now replaced by

the present ETSI Guide on IPRs.

In 2002 the ETSI General Assembly #40 identified the need to review the ETSI IPR Policy with a view
to addressing and rectifying any uncertainties on the operation of this Policy and on any legal rules
and obligations on the membership in order to avoid an incorrect implementation of the ETSI IPR
Policy and in order to avoid anti-competitive actions. An ad-hoc IPR group, with a clear mandate to
review the implementation of the IPR Policy but not to change the Policy itself, was consequently
created and 30 recommendations on the operation of the ETSI IPR Policy where approved by the
ETSI General Assembly #42. The present ETSI Guide on IPRs embodies most of these
recommendations.
(...)
4.1 Licensing terms and ex ante disclosure
Specific licensing terms and negotiations are commercial issues between the companies and shall
not be addressed within ETSI. (...)
Without prejudice to ETSI IPR Policy and other sections of this Guide, voluntary, unilateral, public, ex
ante disclosures of licensing terms by licensors of Essential IPRs, for the sole purpose of assisting
members in making informed (unilateral and independent) decisions in relation to whether solutions
best meet the technical objectives, are not prohibited under ETSI Directives. (...)
No detailed licensing terms should be available from ETSI to avoid a misleading impression. ETSI may
act as a depository, where IPR owners (licensors) can make available information on how and where
to access such disclosed licensing terms, and provide links to URLs of IPR owners, which contain the
details of licensing terms and conditions, so that information about the availability of licenses can be
disseminated to all users of ETSI standards.
However, this provision does not create any obligation for any Member to disclose any licensing
terms related to any of its IPRs. The lack of disclosure by a Member of its licensing terms does not
create any implication under the ETSI Directives. Specifically, the requested undertaking in writing of
an IPR owner that it is prepared to grant licenses on fair, reasonable and non-discriminatory terms
and conditions pursuant to Clause 6.1 of the ETSI IPR Policy is sufficient when selecting technologies
for ETSI standards and technical specifications.
Samsung
2.7. Samsung is part of the Samsung Group that operates worldwide and manufactures and sells
(consumer)electronic products.
2.8. Samsung participated in ETSI in the development of the UMTS-standard. In that connection, it
sent ETSI the following statement in 1998.
This declaration is given on December 14, 1998 by Samsung Electronics Corporation ("SEC") of Seoul

Korea to the European Telecommunications Standards Institute (ETSI) of Sophia Antipolis France.
With regard to the W-CDMA technology being elaborated by ETSI as a standard for the UMTS
Terrestrial Radio Access (UTRA) FDD mode, SEC is prepared to grant licenses to its essential IPRs on a
fair, reasonable, and non-discriminatory basis in accordance with the terms and conditions set forth
in Clause 6.1 of the ETSI IPR Policy.
2.9. Samsung holds the following European patents that are registered in the Netherlands (amongst
other countries):
- EP 1 096 516 (hereafter: EP 516) for a Turbo interleaving apparatus and method, granted on 20
December 2006, application date 19 May 2000, invoking priority of two South-Korean patent
applications (KR 9918928 and KR 9918560) of respectively 19 and 21 May 1999;
- EP 1 114 528 (hereafter: EP 528) for an Apparatus and method for controlling a demultiplexer and
a multiplexer used for rate matching in a mobile communication system, granted on 7 June 2006,
application date 8 July 2000, invoking priority of three South-Korean patent applications (KR
9927407, KR 9930095 and KR 9937496) of respectively 8 July, 23 July and 30 August 1999;
- EP 1 478 136 (hereafter: EP 136) for a Fast adaptation of the data rate of a reverse packet data
channel in a mobile communication system, granted on 5 March 2008, application date 10 May
2004, invoking priority of two South-Korean patent applications (KR 2003029651 and KR
2003060947) of respectively 10 May and 1 September 2003;
- EP 1 188 269 (hereafter: EP 269) for an Apparatus for encoding a transport format combination
indicator for a communication system, granted on 13 October 2004, application date 6 July 2000,
invoking priority of a South-Korean patent application (KR 9927932) of 6 July 1999.
2.10. Samsung has sent ETSI so-called IPR-information statement and licensing declarations for
these four patents. For EP 516 and EP 528 it has done so in September 2003 and for EP 269 on 31
December 2003. These declarations contain, inter alia:
IPR information statement
In accordance with the ETSI IPR Policy, Article 4.1, I hereby inform ETSI that, with reference to ETSI
Standard No. (...) it is my belief that the IPRs listed in Annex 2 are, or are likely to become, Essential
IPRs in relation to that Standard.
IPR licensing declaration
The SIGNATORY has notified ETSI that it is the proprietor of the IPRs listed in Annex 2 and has
informed ETSI that it believes that the IPRs may be considered ESSENTIAL to the Standards listed
above.
The SIGNATORY and/or its AFFILIATES hereby declare that they are prepared to grant irrevocable
licenses under the IPRs on terms and conditions which are in accordance with Clause 6.1 of the ETSI
IPR Policy, in respect of the STANDARD, to the extent that the IPRs remain ESSENTIAL.

The construction, validity and performance of this DECLARATION shall be governed by the laws of
France.
2.11. For EP 136 Samsung has sent ETSI a similar declaration on 8 September 2010.
Apple
2.12. Apple is a worldwide manufacturer and developer of computers, consumer electronics,
operating systems and software. Since 2008 Apple puts smartphones and tablet computers on the
market that apply the UMTS-standard.
Development of the dispute between the parties
2.13. Samsung is an important supplier of parts to Apple.
2.14. Mid 2010, Apple stated that Samsung infringes Apples patents, design- and copyrights with
the smartphones and tablet computers that it puts on the market. This has resulted in proceedings
in various countries. In the Netherlands, this court in its verdict of August 24, 2011 (partially) granted
the relief sought in so far as it related to the Samsung smartphones Galaxy S, S II and Ace and
rejected the relief for the Samsung tablet computers Galaxy Tab GT-P1000, Tab 10.1 and Tab 10.1v.
2.15. Samsung has initiated proceedings against Apple in, amongst other countries, the United
States, South-Korea, Germany, Japan, the United Kingdom, France and Italy alleging that Apple
would in turn infringe its patent rights.
2.16. In April of this year, Apple requested Samsung to indicate to it under which FRAND-conditions
Samsung would be prepared to license its complete portfolio of essential patents for the UMTSstandard. [ ]
License agreement between Intel and Samsung
[]
3.

The dispute

Main claim
3.1. Samsung demands in each of the four cases separately in short- that the President orders
Apple by verdict , enforceable notwithstanding appeal, to refrain from infringing the patent invoked
in that case (EP 136, EP 269, EP 516 or EP 528), to provide data on sales, revenues, profit, costumers,
inventory and assets in the Netherlands, and that the President condemns Apple to a recall of all
infringing products, all under forfeiture of a penalty sum, with an order to Apple to pay all legal costs
pursuant to Article 1019h DCCP.

3.2 Samsung argues in this respect that the marketing by Apple of products that use the UMTStechnology, such as iPhones and iPads, without having a license, constitutes an infringement of
Samsungs patents.
3.3 Apple puts forward a substantiated defence, which can be summarized as follows.
3.3.1 Until January 2011, the allegedly infringing chipsets were supplied by the German-based
company Infineon. From that moment, Infineon has completely merged into Intel Corporation
through an asset-transaction. Since then, the chipsets are supplied by Intel Corporation. Both
Infineon and Intel Corporation have a worldwide license from Samsung. Samsungs patent rights are
therefore exhausted.
3.3.2 The FRAND-declarations issued by Samsung are governed by French Law. Under French law, a
license comes into existence as soon as this irrevocable declaration is accepted through the
application of the standard by a third party, such as Apple. It is not necessary that parties reach
agreement on the terms and conditions of the license, such as the amount of the license fee. In any
case it is sufficient that the amount of the license fee is determined objectively. That is the case
here, as the fee should be FRAND.
3.3.3. By issuing the FRAND-declaration, Samsung has forfeited its rights to enforce the patents.
Essential patents cannot be enforced. Users of the standard may trust that they can apply the
standard. If agreement about the license fee cannot be reached with the user of the standard after
serious and fair negotiation, the patentee can claim damages for past infringements and a FRAND
compensation for the future, but not an injunction.
3.3.4. Article 4.1 of the ETSI IPR Policy obliges all participants to notify ETSI in a timely manner about
potential standard-essential patents. These notifications aim to limit the number of essential
patents. Moreover, after these notifications have been made, safeguards like the FRAND-obligations
can be enforced, which aim to prevent that the patent holder misuses his patent after the standard
has been set (a so called patent hold-up). Therefore, it is common practice to request all participants
prior to every meeting to report standard-essential patents. Samsung has not complied with this
obligation. Samsung participated in the working groups where the UTUMTS-standard was set, but
only many years later, after proposing that certain technologies were added to the standard,
Samsung reported that it had applied for patents for these technologies (and subsequently attained
these patents). Under these circumstances, Samsung has forfeited the right to request an injunction
against infringement, or alternatively, there is misuse its right, abuse of a dominant position or a
tort.
3.3.5. If it is not already established that by Samsungs issuance of the FRAND-declaration and
Apples subsequent acceptance, a license agreement has come into existence , then Samsung is in
any event obliged to negotiate in good faith a license agreement with Apple. Samsung violates this
obligation. [ ]
Counterclaim
3.4. Building on its defence against the main claim, Apple demands (in all four cases) by way of
counterclaim in short that the President orders Samsung by verdict, enforceable notwithstanding

appeal, i) to continue in good faith the negotiations about the amount of the fee Apple has to pay
for the license, or (alternatively) ii) to accept the license offer that Apple made or iii) to continue in
good faith the negotiations with Apple about the license agreement, and to order Samsung to pay all
legal costs pursuant to Article 1019h DCCP.
3.5. The statements of the parties will be discussed below, to the extent that they are relevant.
4. The Assessment
Urgency of the claimed relief
4.1. According to Samsung, Apple has been on the market since 2008 with products that infringe its
invoked patents in view of their application of the UMTS-standard. Until now, Samsung has not
taken any action against these infringements. Apple has stated during the hearing that Samsung
does not seem to have an urgent interest in the termination of the alleged infringements. Samsung
contested this statement and stated that it does have an urgent interest, since Apple has in turn
started the preliminary injunction proceedings referred to above under 2.14, in which it has accused
Samsung of patent- and design-infringement.
4.2. It is true that this case does not stand alone, and should be seen in the context of a larger
conflict between the parties that led to proceedings in Japan, Korea, the United States, Germany,
the United Kingdom, France, Italy and the Netherlands. Viewed from this perspective, Samsung may
very well have gained an urgent interest for an injunction, even though it initially saw no reason to
take action against the alleged patent infringements. This interest becomes apparent when it is
considered that a potential injunction would strengthen Samsungs position in the negotiations with
Apple regarding the alleged infringement by Samsung of Apples rights.
Exhaustion
4.3. Apple has supplemented its position with respect to the alleged exhaustion during the hearing
to what has been indicated above under 3.3.1.
4.4. Samsung questions whether Infineon and /or Intel are indeed the suppliers of the chipset that is
used in Apples products for the application of the UMTS- technology. Apple supports this statement
by referring to its exhibit 20, which shows for each type of Apple-product that has been sold in The
Netherlands the supplier of the chipset. During the hearing Apple stated that the overview was
drawn up by itself, so that it cannot make its own statement more correct than it already is.
[]
4.6. Likewise, also with respect to the chipsets supplied earlier by Infineon, i.e. before the acquisition
by Intel, it cannot be shown that these were put on the EER market with Samsungs consent. Apple
claims that Samsung has granted Infineon a (separate) licence, but this assertion is not supported by
anything.
4.7. Therefore, the defence based on exhaustion of rights must be rejected. In the context of these
preliminary injunction proceedings, this cannot be further investigated.

FRAND-licence
4.8. The parties agree that French law is applicable to the assessment of the scope of Samsungs
FRAND-obligations based on the applicable provisions of article 12 of the ETSI IPR Policy and on the
statements issued by Samsung as mentioned above under 2.8. and 2.10. Apple supports its
statement that under French law the mere application of the standard establishes a license
agreement, by the opinion of professor Philippe Delebecque, who is affiliated with the University of
Paris I (Panthon-Sorbonne), who in turn refers to an opinion by professor Laurent Aynes that was
submitted in a US procedure between Nokia and Qualcomm.
4.9. Delebecque states the following, in short and to the extent as it is relevant.
4.9.1. The FRAND-declaration is more than just an obligation to negotiate in good faith about a
license on FRAND-conditions. The declaration must be interpreted as an offer to enter into a license
agreement, that is addressed to the other ETSI-participants and to third parties who want to apply
the standard. To the extent that the declaration benefits third parties, it can be regarded as a third
party beneficiary clause.
4.9.2. By applying the standard, the offer is accepted and a license agreement is established. In this
connection, it does not matter that the parties have not yet reached an agreement on the amount of
the license fees, since this is not an essential part of a license agreement. If parties are not able to
reach an agreement on this, the court must determine this amount. The FRAND-declaration is
sufficient to satisfy the written form requirement under French law.
4.9.3. After accepting the offer by applying the standard, the patentee can no longer invoke its
patent unless the licensee refuses to pay its license fees in violation of the terms of the license
agreement.
4.10. Samsung, on the other hand, is of the opinion that the FRAND-declaration is no more than an
invitation to make an offer to initiate negotiations about a license. Samsung therefore contests that
a license agreement has come into existence by the application of the standard by Apple. In support
of this statement Samsung refers to the opinions of Latitia Benard, attorney at the bar of Paris, and
professor Rmy Libchaber, affiliated with the University of Paris I (Panthon-Sorbonne).
4.11. The opinions by Benard and Libchaber entail the following, to the extent relevant.
4.11.1. The FRAND-declaration is not an offer to enter into a license agreement. This is also
reflected in the ETSI Guide on Intellectual Property Rights which explicitly refers to the negotiations
between parties about the conditions of the license (cf. above under 2.6). If the declaration would
be interpreted as a third party beneficiary clause, then the content of this clause is limited to an
obligation for Samsung to negotiate about a license agreement on FRAND-conditions.
4.11.2. A license agreement can be regarded as a form of rent. For such an agreement the price, the
amount of the license fees, is essential. In addition, the agreement must be made up in written form.
In the present case, the parties have not reached an agreement on the terms and conditions of the
license, and especially not about the amount of license fees. Even if agreement would have been
reached on these points, additionally, the agreement does not meet the written form requirement.
This leads to the conclusion that no license agreement has been established.

4.12. For the assessment of the different views of the parties and their experts about the scope of
the FRAND-declaration, first of all, the wording of the declaration is important. In the preliminary
opinion of the President, the declaration does not intend to make an offer to conclude a license
agreement that can be accepted by the other party without more, following which an agreement has
come into existence. This can already be deferred from the fact that the declaration indicates that
the license will be granted under apparently to be agreed upon terms and conditions. Samsung
also rightfully refers to article 4.1 of the ETSI Guide on Intellectual Property Rights, from which it
follows that the conditions under which a license is granted are left to the negotiations between the
parties, provided that they meet the FRAND-principle. Although this explanation dates from 2008,
i.e. from after the time that Samsung made the relevant statements, but it entails as appears from
the introduction, a confirmation of the practice that was followed in the past and was described in
the Technical Body Chairmans Guide on IPR. Now that it does not appear that article 4.1 deviates
from the practice that was followed in the past, this article is also of importance in establishing the
scope of the FRAND-declaration issued by Samsung.
4.13. Under theses circumstances, it is not clear why under French law it should be assumed that
the declaration comprises an offer to enter into an agreement that can be accepted by the other
party independently of any further negotiations.
4.14. Furthermore, it is insufficiently apparent that under French law a license agreement can
actually be established, although the parties have not yet agreed on the amount of the license fees.
The experts whom the parties consulted have differing opinions on this matter, while the President
does not see a reason to attach more weight on this point to the opinion of Apples expert than to
those of Samsung.
4.15. The parties agree that according to French law a license agreement must be made up in
written form. This gives rise to considerable doubt whether this requirement is met. The written
FRAND-declaration cannot be equated with a written license agreement because it does not include
the (written) consent of the licensee and not even that there is a party who wants to enter into a
license agreement with Samsung.
4.16 In light of the foregoing, the statement that Apple has a license under the invoked patents
cannot be accepted at this point.
Forfeiture of rights
4.17 Contrary to the scope of the FRAND-declaration, the question whether Samsung has forfeited
its right to invoke its Dutch patents is to be answered under Dutch law. Under Dutch law, rights are
only considered forfeited in case the creditor has behaved in a manner which, according to
principles of reasonableness and fairness, cannot be reconciled with later (again) invoking the right
in question. This requires the presence of special circumstances which either create legitimate
expectations of the debtor that the creditor will not or no longer invoke his right, or which place the
debtor in an unreasonably disadvantaged or burdened position should the creditor decide to invoke
his rights after all (cf. Supreme Court 29 September 1995, LJN ZC1827).
4.18 The circumstances, stated under 2.4, 2.5, 2.8, 2.10 and 2.11 do not, at this moment, justify this
conclusion. Apple apparently assumes that issuing a FRAND-declaration equals giving up the rights

stemming from the patent, so that a third party that applies the standard, never has to fear that it
will be accused of patent infringement. However, given the courts considerations about the scope
of the FRAND-declaration, this assumption is incorrect. Third parties may expect that they will be
offered a FRAND-license, but not that they can apply the standard in the absence of a license,
without infringing the patent.
4.19 Samsung has not contested that it notified said patents with ETSI only after the freezing of the
standard. Also this does not result in the forfeiture of rights.
4.20 In the first place, Samsung believes to have fulfilled its duties towards ETSI because already in
1998 it made a general FRAND-declaration, and it is common practice to notify particular essential
patents only after freezing the standard. Samsung refers to the statements by Ericsson, Nokia,
Motorola and IDC, submitted as exhibit 3, as well as the statements by Siemens, Alcatel and KPN,
submitted as exhibits 4 to 6.
4.21 Samsung furthermore believes that it is not clear that, should it have notified sooner, the
patented technology would not have been included in the standard. Samsung contests that the ETSI
policy is aimed at including as much patent-free technology in the standard as possible. According to
Samsung, this is only aimed at in case of a blocking situation, i.e. if the technology is not available
under FRAND-conditions. That was not the case here. Moreover Samsung states that there was no
patent-free alternative, but only an alternative that was also patented and it does not appear that
the technology as patented by Samsung, could have been fully left out of the standard.
4.22 Apple refers to this courts decision in the case of Philips/LG of 25 April 2007 (IEPT 20070425).
In those proceedings, the court held in short and to the extent that it is relevant here that the
right to invoke the patent would have been forfeited in case Philips had not notified its patent,
despite its participation in the working groups where the standard was determined. In case Philips
would have notified the patent, LG would have been under an obligation to take a license according
to this decision. Forfeiture of rights could not be claimed according to this court if it would become
apparent that LG was unwilling to take a FRAND-license.
4.23 In those proceedings, the claim of forfeiture of rights was thus assessed against the background
of the absence of a FRAND-declaration by Philips. Samsung is right in pointing out that the facts of
the current proceedings are completely different, because Samsung did issue a FRAND-declaration.
This declaration (from 1998) was moreover issued before the standard was determined and before
Apple entered the market. This decision is therefore not decisive in the matter of forfeiture of rights
invoked by Apple in the current preliminary injunction proceedings.
4.24 The patent hold-up that Apple fears cannot provide ground to assume forfeiture of rights. The
late notification of the patents is irrelevant in this respect because already in 1998, at the start of the
3GPP (UMTS) project, Samsung made a general FRAND-declaration.
4.25 That this late notification has supposedly led to the unwarranted inclusion of patented
technology in the standard can neither be assumed. It is unclear whether, in case of timely
notification, ETSI would have tried to avoid using the patented technology of Samsung in the
standard and to what extent this would have been possible. Assuming that the disadvantage
mentioned by Apple has indeed materialised, it is still questionable whether this situation should

lead to a forfeiture of rights. The disadvantage is to a large extent compensated for by the
availability of a FRAND-license. It is also not without importance that, as Samsung stated without
contest, Samsung is certainly not the only one that notified its essential patents (too) late.
4.26 All things considered, there is too much uncertainty that the defence based on forfeiture of
rights will be accepted in the proceedings on the merits of the case. The alternative grounds
submitted, but not further substantiated, of misuse of right, abuse of a dominant position and tort,
do not at this point lead to the conclusion that the late notification of the essential patents should
prevent Samsung from invoking its patents.
FRAND-offer
4.27 Samsungs viewpoint that the FRAND-declaration is to be understood as no more than an
invitation to make an offer to commence negotiations about a license, will be rejected at this point.
Even the opinions by Benard and Libchaber submitted by Samsung itself, assume that under French
law the declaration obliges it to in any event negotiate about a license under FRAND-terms.
[]
4.34 Samsung is right in stating that what is to be considered a FRAND-license is dependent, first and
foremost, on the result of the negotiations between parties and that it is possible to think differently
about this. Having said that, it is concluded at this point that the percentage asked from Apple by
Samsung, even if a royalty cap of 5% is not assumed, deviates with its FRAND-obligation to such an
extent, that this leads to the conclusion that Samsung is not truly willing to conclude a licenseagreement under FRAND-terms.
4.35 Parties accuse each other of taking unrealistic positions. However, it is not sufficiently shown
that Apples offer cannot be taken serious. Apple substantiated this offer with reference to the
report by Donaldson, and stated that it has taken into account the cap of 5% and the value of the
UMTS-component in its products. Samsung did not substantively respond to this (cf. pleading notes
under 9.17). Samsung merely stated that it believes Apple is obliged to request a license for the
entire portfolio of essential patents and also not restricted to the Netherlands. This argument
convinces the President insufficiently to assume that Apple in turn would not have a true willingness
to reach a FRAND-license.
4.36 Under these circumstances and now that Samsung has neither indicated that substantially
lower royalties are negotiable, it must be seriously anticipated that invoking its patents will be
considered a misuse of right in the procedure on the merits of the case. The request for an
injunction will therefore be denied, especially since the consequences of such an order for Apple
would be very grave, and the infringement has since long been tolerated by Samsung. This last
circumstance does not, as was mentioned earlier, mean that Samsung does not have an urgent
interest to claim the injunction, but it is relevant for weighing that interest.
4.37 Contrary to what Samsung believes, this courts decision in Philips/SK Kassetten does not mean
that it has a right to an injunction under all circumstances. Prior to those proceedings, SK Kassetten
did not request a license and it was also not shown that Philips had set unreasonable demands for
this license. Under those circumstances, this court held that, as long as no FRAND-license is granted,
the patentee can in principle invoke his patent. However, this decision does not relate to

circumstances which lead to the conclusion that the right to invoke a patent is a misused by a
patentee who does not comply with his FRAND-obligations. The court has realised that such special
circumstances can lead to a different conclusion. Cf. with regard to this, the end of paragraph 6.24:
It cannot be excluded that under special circumstances the decision will be different, but these
special circumstances were neither alleged nor did they appear in the present case.
4.38 The route to a FRAND-license starts with a request for it by Apple followed by a FRAND-offer by
Samsung. Should parties fail to reach an agreement, Samsung may still order an injunction. Apples
defence that it has a FRAND-license, that there is exhaustion or forfeiture of right, does not preclude
this, as follows from the foregoing.
4.39 Samsung further stated that Apples defence based on the FRAND-obligation, is irrelevant
because Apple itself contests that the invoked patents are indeed essential for application of the
standard. This argument does not lead to a different result because, if the invoked patents are
indeed not essential for application of the standard, infringement by Apple is already for this reason
not to be assumed. After all, Samsung bases its infringement claim entirely on the assumption that
Apple applies the standard and therefore infringes the patents that are essential to the standard . It
did not state that or has motivated why, if the patents turn out not to be essential, Apple still
infringes the invoked patents.
Counterclaim
4.40 Apple does not have an urgent interest in the counterclaims under i) and iii) because Samsung
cannot invoke its patents under de present circumstances as long as it has not made a FRAND-offer,
taking into account what is considered in this decision. In case Samsung should do so, Apple would
not have an interest in these claims because in that case there is no reason to assume that Samsung
would not be willing to negotiate about a FRAND-license in good faith. There is no legal ground for
granting Apples claim under ii), which comes down to Apples unilateral imposition of its own
FRAND-terms on Samsung.
Conclusion
4.41 Samsungs main claims will be dismissed and Samsung will be ordered to pay the legal costs.
Apples counterclaims are also dismissed and Apple will be ordered to pay the legal costs.
4.42 The parties have claimed legal costs from each other pursuant to article 1019h DCCP. However,
neither party made use of the possibility to submit a specification of costs prior to the oral hearing.
During the hearing, the parties attorneys explained that the parties had a discussion regarding the
sums of legal costs applicable to both sides, but this discussion had not yet been successfully
concluded. As the request of the parties, they were given a chance to inform the President before
Friday, September 30th 2011 of the sum that they agreed on. As no communication was received, the
legal costs will be established according to the usual tariff model as used by this court.
4.43 In all four cases, legal expenses for Apple are estimated at 816 in attorneys fees, and 560 in
court registry fees. Samsung will therefore be ordered to pay 5504 in total.
4.44 In the counterclaims, the costs of Samsung in every case are estimated to be 408 in attorneys
fees, amounting to a total of 1632.

5. The judgment
The President
5.1 dismisses all claims and counterclaims;
5.2 orders Samsung to pay the legal costs incurred by Apple with respect to the main claims,
estimated thusfar at a total of 5504;
5.3 orders Apple to pay the legal costs incurred by Samsung with respect to the counterclaims,
estimated thusfar at a total of 1632;
5.4 declares the orders regarding the legal costs enforceable notwithstanding appeal.
This decision was reached by mr. P.G.J. de Heij and handed down in public on October 14th 2011 in
the presence of the courts clerk mr. R.P. Soulli.