欧洲联盟法院判决

华为诉中兴通信

16 七月 2015 - Case No. C-170/13

A. 事实

原告华为技术有限公司持有由欧洲电信标准协会（ETSI）所发展的对实施LTE无线通信技术标准必不可少的专利（标准必要专利或SEP） [2] 。 原告于2009年3月向ETSI承诺愿依照公平、合理和无歧视（FRAND）的条款与条件向实施人提供该专利 [3] 。

被告中兴通讯股份有限公司以及中兴通讯德国分公司本身也拥有几项与LTE标准相关的标准必要专利 [4] ，同时其也在德国等市场销售符合LTE标准的产品 [5] 。

在2010年11月至2011年3月之间，双方就原告所持有的标准必要专利组合的许可事宜进行了讨论 [5] 。原告提出了其所认为合理的许可费率，而另一方面，被告则试图达成交叉许可协议 [6] 。于是，此项许可协议的要约未能达成最终协议 [6] 。

原告其后于2011年4月在德国杜塞尔多夫地区地方法院（Landgericht）向被告提起诉讼，寻求针对被告的禁令救济，要求被告就其过去的使用行为开立担保帐户的账目，召回其产品，并针对其专利侵权行为请求损害赔偿 [7] 。

杜塞尔多夫地区地方法院暂时停止了诉讼程序，并根据《欧洲联盟运作条约》（TFEU）第267条的规定，向欧洲联盟法院（CJEU）提出了进行先行裁决的请求。简而言之，杜塞尔多夫地区地方法院指出，德国联邦法院（Bundesgerichtshof）和欧洲联盟委员会在有关于何种情况下，标准必要专利持有人对标准必要专利实施人提出的禁令诉讼将构成对市场支配地位的滥用而违反了《欧洲联盟运作条约》第102条此一问题上，似乎采取了相互矛盾的立场 [8] 。德国联邦法院在其橙皮书案裁决中裁定，在涉及标准必要专利的侵权诉讼中，被告只有在其以达成许可协议为目的向专利持有人发出不含附带条件、公平的许可要约，并且对其过去以及其后可能发生的使用行为所衍生的许可费的支付提交保证金的情况下，才有权根据《欧洲联盟运作条约》第102 条提出抗辩（并且因此可避免禁令的核发） [9] 。然而，欧洲联盟委员会在有关三星于多个欧盟成员国内针对苹果公司采取的执法行动的几个诉讼中却认为，在被告已经表明愿意根据专利持有人的FRAND承诺，以FRAND条款进行许可谈判的情况下，针对标准必要专利采取禁令救济的行为原则上违反了《欧洲联盟运作条约》第102条 [10] 。

根据本判决，欧洲联盟法院确立了有关标准必要专利持有人在何种情况下可以对专利实施人主张禁令救济而不违反《欧洲联盟运作条约》第102条的条件。欧洲联盟法院特别针对当已就其所持有的标准必要专利做出以FRAND条款进行许可的不可撤销承诺的标准必要专利持有人，在提起相应的诉讼前已经履行下列行为时，其寻求禁令救济和/或要求召回侵权产品的行为并不会构成对市场支配地位的滥用作出裁决：

• 首先，标准必要专利持有人必须透过“明确指出其遭受侵权的为何项专利，并指明被指控的侵权人以何种方式侵权”的方式，对专利实施人进行侵权通知，并且
• 第二，如果被指控的侵权人表示愿意按照FRAND条款达成许可协议，则标准必要专利持有人必须“向该被指控的侵权人提出符合此种条款的具体书面许可要约，特别是必须指明许可费及其所使用的计算方式 [11] 。

相对地，标准必要专利实施人只有在没有任何延迟地回应标准必要专利持有人所发出的许可要约的情况下，才可以主张标准必要专利持有人寻求禁令救济和/或召回侵权产品的行为具备滥用市场支配地位的性质 [12] 。如果标准必要专利实施人拒绝接受该许可要约，则必须：

• 立即以书面提出向标准必要专利持有人提出符合FRAND条款的特定反许可要约 [13] ，并且
• 如果其所提出的反许可要约遭到拒绝，则必须就其对该专利的使用行为提供适当的担保，例如提供银行担保或将所需金额存入保证金帐户 [14] 。

欧洲联盟法院明确指出，上述框架不适用于标准必要专利持有人对实施人过去的使用行为所造成的损害提出损害赔偿和/或开设担保帐户的主张；与这些主张相关的诉讼不会构成对《欧洲联盟运作条约》第102条的违反，因为它们对符合该项标准的产品是否可以出现或保留在市场上没有影响 [15] 。

B. 法院的论理

欧洲联盟法院强调对衡平的需求，一方面需要对标准必要专利持有人的核心基本知识产权进行有效司法保护，另一方面也需要维持自由且不失真的市场竞争的公共利益 [16] 。

由于当事各方并未就原告在市场上的支配地位提出异议，法院的分析着重于是否存在《欧洲联盟运作条约》第102条所称的“滥用行为” [17] 。欧洲联盟法院认为，行使知识产权权利的行为本身并不会构成“滥用行为”，即便此一行使权利者是在市场中占有支配地位的企业 [18] 。此外，仅在“特殊情况”下，行使知识产权权利的行为才可能构成滥用市场支配地位的行为 [19] 。

涉及标准必要专利的案件与其他与知识产权相关的案件存在本质上的不同，其原因在于：首先，一项专利已取得标准必要专利地位这一事实意味着该专利的持有人可以透过“阻止竞争对手制造的产品出现或保留在市场上，从而将涉案产品的制造权保留专属于自己” [20] 。除此之外，对实施标准的第三方而言，专利持有人通过做出FRAND承诺创造出一种第三方可以按FRAND条款取得标准必要专利的“合法期待” [20] 。考虑到标准必要专利持有人创造了此一“合法期待”，原则上，当标准必要专利持有人拒绝授予其FRAND许可时，在侵权诉讼中被起诉的专利实施人可以通过援用《欧洲联盟运作条约》第102条为自己进行抗辩 [21] 。

尽管标准必要专利持有人诉诸法律程序来保护其知识产权的权利不能被剥夺，欧洲联盟法院仍然认为，标准必要专利持有人做出FRAND承诺正当化了其在寻求禁令救济时应该遵守某些特定要求的义务 [22] 。特别是为了避免违反《欧洲联盟运作条约》第102条，标准必要专利持有人应满足以下条件：（a）在提起禁令救济诉讼之前，标准必要专利持有人必须透过“明确指出其遭受侵权的为何项专利，并指明被指控的侵权人以何种方式侵权”的方式，对专利实施人进行侵权通知 [23] ，并且（b）如果被指控的侵权人表示愿意按照FRAND条款达成许可协议，则标准必要专利持有人必须“向该被指控的侵权人提出符合此种条款的具体书面许可要约，特别是必须指明许可费及其所使用的计算方式 [24] 。在这种情况下，欧洲联盟法院认为，可以合理期待标准必要专利持有人有能力提出这样的要约，因为一般来说并不存在公开的标准必要专利许可协议，并且标准必要专利持有人与第三方间签订的现有协议条款也不会被公开，因此，标准必要专利人“比起被指控的侵权人更有能力检查其要约是否符合不歧视的条件” [25] 。

另一方面，（被指控的）侵权人也必须“本于善意并依据该领域公认的既存商业惯例”对标准必要专利持有人的要约认真地做出回应 [12] 。（被指控的）侵权人是否符合此要求则必须基于“客观因素”来判定，这尤其意味着（被指控的）侵权人没有使用“延迟策略” [12] 。

如果（被指控的）侵权人认为标准必要专利持有人所提出的条款不符合其FRAND承诺，并选择拒绝标准必要专利持有人所提出的许可要约，则（被指控的）侵权人就必须向标准必要专利持有人提交一份符合FRAND条款的具体书面反要约 [13] 。如果其所提出的反要约遭到标准必要专利持有人的拒绝，并且（被指控的）侵权人已经在没有许可的情况下使用了涉案的标准必要专利，则（被指控的）侵权人有义务根据该领域公认的既存商业惯例就其使用行为提供“适当的担保”，例如提供银行担保或将所需金额存入保证金帐户 [14] 。针对该担保的计算除了必须包含“ 对标准必要专利过去的使用行为的数额”外，（被指控的）侵权人还必须能够就这些使用行为开立担保帐户 [14] 。

当（被指控的）侵权人提出反要约后双方仍然不能达成协议时，欧洲联盟法院指出，当事方可以选择以“共同协议”的方式，没有拖延地请求“由独立的第三方即刻对许可费数额进行决定” [26] 。

最后，欧洲联盟法院明确指出，（被指控的）侵权人有权在许可谈判进行的同时，对标准必要专利持有人所持有的专利的有效性和/或标准必要性和/或实际使用进行挑战，或保留未来这样做的权利 [27] 。

• [2] Huawei v ZTE, Court of Justice of the European Union, judgment dated 6 July 2015, 段 22。
• [3] 同上注, 段 22。
• [4] 同上注, 段 40。
• [5] 同上注, 段 24。
• [6] 同上注, 段 25。
• [7] 同上注, 段 27。
• [8] 同上注, 段 29 及以下。
• [9] 同上注, 段 30 及以下。
• [10] 同上注, 段 34 及以下。
• [11] 同上注, 段 77。
• [12] 同上注, 段 65。
• [13] 同上注, 段 66。
• [14] 同上注, 段 67。
• [15] 同上注, 段 72及以下。
• [16] 同上注, 段 42。
• [17] 同上注, 段 43。
• [18] 同上注, 段 46。
• [19]  同上注, 段 47。
• [20] 同上注, 段 53。
• [21] 同上注, 段 53及以下。
• [22] 同上注, 段 58 及以下。
• [23] 同上注, 段 61。
• [24] 同上注, 段 63。
• [25] 同上注, 段 64。
• [26] 同上注, 段 68。
• [27] 同上注, 段 69。

德国法院判决

Cases from 德国联邦法院 -

西斯维尔诉海尔

5 五月 2020 - Case No. KZR 36/17

A. 事实

原告西斯维尔（Sisvel）持有被声明为对实施某些无线通信标准而言（潜在）必不可少的专利（以下稱“标准必要专利”或“SEP”）。

被告是总部位于中国的海尔集团（Haier Group）的德国及法国子公司。海尔集团生产和销售符合GPRS标准的电子设备以及其他产品。

西斯维尔于2012年12月20日通知了海尔集团的中国母公司有关海尔集团对其所持有的标准必要专利的侵权使用行为。

西斯维尔提供了一项其所持有的专利组合中包含大约450项专利的清单，并表示西斯维尔愿意为这些标准必要专利向海尔提供许可。

西斯维尔于2013年4月10日向欧洲电信标准协会（ETSI）作出了承诺，表示愿意将其所持有的标准必要专利依照公平、合理且无歧视（FRAND）的条款和条件对标准实施人提供。

西斯维尔其后分别于2013年的8月和11月，向中国海尔进一步发送了更多包含与其许可计划相关信息等信息在内的信函。中国海尔仅在2013年12月时对西斯维尔回复，表示希望与西斯维尔进行“正式谈判”，并要求西斯维尔提供于此前沟通中其曾经提到过的有关折扣可能性的信息。

2014年8月，西斯维尔向海尔提出了许可要约，然而却在2014年9月遭到海尔拒绝。不久之后，西斯维尔于杜塞尔多夫地区法院（以下称“地区法院”）就其所持有的一项涵盖符合GPRS标准数据传输技术的专利（以下称“涉案专利”）向海尔提起了侵权诉讼。作为对此一行动的回应，海尔于2015年3月向德国联邦专利法院提起了确认涉案专利无效的诉讼。

地区法院于2015年11月3日对海尔发出了禁令 [28] ，同时判令召回并销毁涉案侵权产品。地区法院更进一步的确认了海尔于本案中的损害赔偿责任，并命令海尔就其侵权产品的销售向西斯维尔提供完整和详细的资料并开立担保帐户。

海尔对该判决提起上诉，并且要求杜塞尔多夫地区高级法院（以下称“上诉法院”）判决中止对地区法院所核发的前述禁令的执行。上诉法院于2016年1月做出了相应的判决 [29] 。

在上诉程序进行过程中，海尔所提出的各项主张之一，即是其认为，由于该判决在西斯维尔向海尔提起侵权诉讼之后才作成，地区法院于判决之时未能就欧洲联盟法院于2015年7月在华为诉中兴案判决中（以下称“华为判决”）对标准必要专利持有人所施加的行为要求进行充分考虑 [30] 。并且在上诉法院诉讼进行的过程中，海尔于2016年1月16日进一步表示，其愿意在德国法院最终确认了涉案专利的有效性以及对涉案专利的侵权行为存在的前提下，向西斯维尔取得FRAND许可。 2016年3月23日，海尔向西斯维尔发送了另一封信函称其立场维持不变。此外，海尔还向西斯维尔提出获取有关西斯维尔所持有的所有专利的权利要求对照表以及与许可费率计算相关的更多信息的要求。 西斯维尔于2016年12月再度向海尔提出了进一步的许可要约，然而仍然遭到海尔拒绝。

在2017年3月30日的判决中，上诉法院支持了海尔于本案上诉中的部分主张 [31] ，确认了海尔于本案中的损害赔偿责任及开立担保帐户的义务。然而，上诉法院认为，海尔并没有召回并销毁侵权产品的义务，因为西斯维尔并没有遵守华为判决中所要求的义务，特别是未能向海尔提出FRAND许可要约。由于涉案专利权利已于2016年9月到期失效，当事各方同意就禁令救济部分主张达成和解，因此上诉法院不需要再就此部分主张作出裁定。西斯维尔其后又对上诉法院的本案裁决提起上诉。

2017年10月，联邦专利法院在限缩了涉案专利的部分权利要求的情况下确认了其专利有效性 [32] 。

于2020年3月，德国联邦法院（以下称“联邦法院”或“法院”）在二审中基本上支持了联邦专利法院的此一判决决定 [33] 。

联邦法院于2020年5月5日做出的当前判决 [34] 中推翻了上诉法院的判决。联邦法院维持了地区法院于一审时对西斯维尔所提出的损害赔偿请求以及关于提供相关信息和开立担保帐户的各项请求所作出的裁决。有关西斯维尔召回并销毁侵权产品的请求，则仅限于海尔有权支配或其于2016年9月涉案专利到期失效前所生产或交付的产品。西斯维尔有关禁令救济的请求则因为该请求于此前上诉法院的诉讼过程中涉案专利已经到期失效而被撤回，故不受法院裁判决定。


B. 法院的论理

法院认为，涉案专利对于GPRS标准的实施而言具备标准必要性，并且遭受侵权 [35] 。

此外，法院认为，西斯维尔对海尔提起侵权诉讼的行为，并未构成对《欧洲联盟运作条约》（TFEU）第102条滥用市场支配地位的违反 [36] 。 在法院看来，西斯维尔已经履行了华为判决所要求的义务，在提起侵权诉讼之前将针对其所持有的标准必要专利的侵权使用行为向海尔进行通知。另一方面，海尔则未能履行其于华为框架下充分表达与西斯维尔达成许可协议意愿的义务。尽管此一事实对于本案而言已不再具有决定性，法院仍然表示其认为西斯维尔已经按照依照华为框架的相应要求向海尔提出了FRAND许可要约。

市场支配地位

法院裁定认为，西斯维尔具备《欧洲联盟运作条约》第102条涵义下的市场支配地位 [37] 。

联邦法院解释到，市场支配地位并不单纯因为享有专利所授与的独占权而形成 [38] ，因此，需要将许多因素共同纳入考量 [39] 。其中一个关键因素是相关市场。当一项专利对符合标准发展组织发展出的标准（或事实上的标准）而言具备技术上的必要性，并且在下游市场提供的产品中并没有可以替代该标准的技术时，与市场支配力评估相关的就会是能够提供该涉案专利许可的（独特的）市场 [40] 。

在此基础上，法院认定西斯维尔处于市场支配地位：涉案专利对于GPRS标准的实施而言具备标准必要性，并且不配备GPRS功能的手机无法在（下游）市场中竞争，因为不管是此前或者其后的各代标准都无法使其具备与之相同的功能 [41] 。

于此脉络下，联邦法院并没有采纳西斯维尔关于标准实施人相较于市场中商品和服务的购买者而言，通常处于较强势的谈判地位，因此标准必要专利持有者的市场支配地位事实上受到了限制的这一观点 [42] 。法院同意，与商品和服务的购买者不同，标准实施人即便在没有与专利持有人达成协议的情况下，依然能够取得生产符合标准的产品所需的受保护技术而处于有利的地位 [43] 。然而，法院认为，此一事实并不足以排除市场支配地位。标准必要专利持有人在许可谈判中对个别实施人的还价能力的程度与此问题并不相关 [44] 。专利持有人的结构性优势市场支配力授与其市场支配地位，而此一结构性优势市场支配力则来自于专利持有人具备通过执行排他性权利而将任何实施者从市场中排除的法律上能力 [45] 。

同样地，法院指出，华为判决对行使标准必要专利专利权时所施加的限制同样不会削弱市场支配地位 [46] 。法院认为，这些限制极大程度地弱化了标准必要专利持有人的谈判地位，因其并不能全面性地运用其在平等基础上进行谈判时所需的必要手段 [46] 。然而，这并不足以构成对专利持有人市场支配地位的挑战，即便是在实施人透过拖延谈判的进行直至该专利到期失效而可能涉及“反向专利挟持“的情况下 [46] 。

尽管如此，法院指出，西斯维尔的市场支配地位在涉案专利到期失效时便已经终止 [47] 。一旦标准必要专利人不再具有排除侵权产品进入（下游）市场的合法权力，则其将不再具备市场支配地位 [47] 。

滥用市场支配地位

与上诉法院相反的是，联邦法院在检视了当事各方的行为后，认为西斯维尔并没有滥用其市场支配地位 [48] 。

法院明确指出，标准必要专利持有人并非原则上被禁止行使其因持有专利而产生的排他性权利 [49] 。一项专利具备标准必要性此一事实，并不意味着专利持有人有义务容忍他人对其所持有的专利技术的使用，除非是因为其具有市场支配地位而允许或有义务允许他人对该专利技术的使用 [49] 。联邦法院认为，如果实施人不愿意按照FRAND条款取得许可，则不存在所谓允许使用标准必要专利的义务。专利持有人——即便是具有市场支配地位专利持有人——并没有“强迫“任何标准实施人取得许可的义务，尤其是因为其并没有主张签署许可协议的法律上权利 [50] 。

在这种背景下，法院指出了两个案例，在这两个案例中，标准必要专利持有人主张其排他性权利（要求禁令救济和/或召回并销毁侵权产品）的行为可能构成滥用市场支配地位：

1. 实施人已经提出了专利持有人在不滥用其支配地位或不违反其无歧视义务的情况下便无法拒绝该条款的无条件许可要约（于此范围内，法院重申了其先前在“橙皮书标准案”中的裁决；判决日期： 2009年5月6日 – 案件号：KZR 39/06） [51] ；
2. 实施人原则上有取得许可的意愿，然而标准必要专利持有人却未能遵守其支配地位所带来的“特殊责任”而做出充分的努力以促进协议的签署 [52] 。

侵权通知

是以，法院采纳了标准必要专利持有人有义务在提起侵权诉讼之前就针对涉案专利的侵权使用行为向实施人进行通知的观点 [53] 。联邦法院似乎认为，此项义务仅在实施人尚未意识到其构成侵权行为的情况下才会产生同上注, 段 73。 法院认为，如果专利实施人对于实施该标准即是一种未经许可而使用涉案专利说明书的行为“此一事实并不知情“，则专利持有人就必须针对专利侵权情况对其通知。。

法院解释到，技术实施人原则上有义务在开展产品的制造或销售之前确保没有任何第三方的权利遭受侵害 [55] 。然而，此项工作通常具有很大的挑战性，特别是在信息和通信技术（ICT）领域中，一项产品可能会受到众多错综复杂的专利权影响 [55] 。因此，身为会定期对侵权状况进行检查的专利持有人，便有义务在发动诉讼程序之前，向实施人告知其对专利的使用情况，使实施人得以对是否需要按照FRAND条款获得许可进行评估，从而避免禁令的核发 [56] 。

在法院看来，通常情况下，对集团公司中的母公司发出各别的侵权通知便已经足够 [57] 。就内容而言，通知内必须指明遭到侵权的专利，并描述特定的侵权使用行为以及遭受侵害的实施例 [58] 。专利持有人不必要对侵权行为作出详细的技术与法律上分析，仅需要让实施人处于一个在专家和/或法律意见的协助下最终有能力对其被指控的侵权行为进行评估的地位即可 [58] 。一般来说，专利持有人依照实务上通常做法提出权利要求对照表就已经足够了（但不是强制性的） [58] 。 此外，联邦法院同时提到，在提供了有关被侵权的专利以及受到影响的标准等相关信息后，专利持有人可以合理期待实施人将于短时间内表明其所收到的信息并不足以对侵权行为进行评估 [59] 。这也适用于涉及多项专利和标准的情况 [59] 。

在考量过上述情况后，法院认为西斯维尔已经对海尔发出了适当的侵权通知。 该通知信函已于2012年12月20日发出，并且符合相关要求 [60] 。

取得许可的意愿

另一方面，考虑到海尔的行为，法院认为海尔并没有表现出其为愿意向西斯维尔取得FRAND许可的被许可人 [61] 。在这方面，联邦法院不同意前面上诉法院所做出的分析，并且得出了与上诉法院相反的结论。

法院认为，中国海尔对西斯维尔所发出的通知的首次回覆是迟延的，因为海尔花费了将近一年的时间（2012年12月至2013年12月）才做出回应 [62] 。一个花费数月时间才对侵权通知做出回应的实施人，其所发出的信号通常表明其对取得许可没有兴趣 [62] 。西斯维尔在2012年12月首次向海尔发出通知后才就涉案专利对欧洲电信标准协会作出FRAND承诺此一事实，并不会对评估及时性造成任何影响：在2012年12月20日所发出的信函中，西斯维尔已经表明其准备好要向海尔提供FRAND许可 [62] 。然而，有关虽然有所迟延但仍在侵权诉讼开始作出的回覆（如同本案中海尔于2013年12月所作出的答复）于评估各方是否遵守华为判决要求时是否应该被纳入考量范围中（如同本案上诉法院所推定的那样）此一问题，联邦法院并未做出决定 [63] 。在本案中，此问题并不相关，因为就海尔所做出的回覆内容而言，没有任何一项能够被视为已经充分表明其取得许可的意愿 [64] 。

在法院的眼中，实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议（引用英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711（Pat）-Unwired Planet v Huawei） [65] 。实施人随后就有义务以“达成协议”为目标积极参与许可谈判 [65] 。相反地，仅仅是对侵权通知作出“表达愿意考虑签署许可协议“或”就是否以及在什么条件下取得许可提出质疑或进行谈判“的回覆是不够的 [65] 。

于此基础上，法院认为，海尔在2013年12月的回覆中仅表达了其希望进行“正式谈判“，并不足以表达其取得许可的意愿——该声明在上述标准下既不“清楚”也不“明确” [66] 。

同样地，联邦法院认为，海尔在2016年1月16日所发出的信函中也没有充分地表达其取得许可的意愿，因为海尔声明只在德国法院确认了涉案专利的有效性和侵权性的前提下才愿意签署许可协议 [67] 。尽管实施人原则上被允许在达成许可协议后保留对被许可专利的有效性进行挑战的权利，法院仍然认为，表达取得许可意愿的声明不能在带有附带条件的情况下作出 [67] 。

此外，联邦法院也认为，海尔于2016年3月23日发出的信函中同样没有充分地表达其取得许可的意愿。除了海尔并没有撤销上述不能被接受的条件外，法院还认为，海尔在收到侵权通知近三年以后才要求西斯维尔提供所有专利的权利要求对照表，这表明了海尔所感兴趣的只在不断拖延谈判的进行，直到涉案专利到期失效为止 [68] 。

由于本案中并不存在海尔明确表达其取得许可意愿的适当声明，法院并没有回答关于实施人于侵权诉讼已经被提起后是否有尚可能履行此项义务的问题 [69] 。

• [28] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 93/14。
• [29] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 13 January 2016, Case No. I-15 U 66/15。
• [30] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
• [31] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 66/15。
• [32] Federal Patent Court, judgment dated 6 October 2017, Case No. 6 Ni 10/15 (EP)。
• [33] Federal Court of Justice, judgment dated 10 March 2020, Case No. X ZR 44/18。
• [34] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17。（引自：https://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py? Gericht=bgh&Art=en&sid=3abd1ba29fc1a5b129c0360985553448&nr=107755&pos=0&anz=1）。
• [35] 同上注, 段 9以下及段59。
• [36] 同上注, 段 52。
• [37] 同上注, 段 54。
• [38] 同上注, 段 56。
• [39] 同上注, 段 57 及以下。
• [40] 同上注, 段 58。
• [41] 同上注, 段 59 及以下。
• [42] 同上注, 段 61。
• [43] 同上注, 段 63。
• [44] 同上注, 段 62。
• [45] 同上注, 段 61 及以下。联邦法院认为，进入市场的障碍已经因为法律上相应的阻碍使任何公司在没有获得许可的情况下进入市场都是不合理的此项事实而形成，请参见段 63。
• [46] 同上注, 段 64。
• [47] 同上注, 段 65。
• [48] 同上注, 段 67 及以下。
• [49] 同上注, 段 69。
• [50] 同上注, 段 70。
• [51] 同上注, 段 71。
• [52] 同上注, 段 72。
• [53] 同上注, 段 73 及以下。
• [54] 同上注, 段 73。 法院认为，如果专利实施人对于实施该标准即是一种未经许可而使用涉案专利说明书的行为“此一事实并不知情“，则专利持有人就必须针对专利侵权情况对其通知。
• [55] 同上注, 段 74。
• [56] 同上注, 段 74 及段 85。
• [57] 同上注, 段 89。
• [58] 同上注, 段 85。
• [59] 同上注, 段 87。
• [60] 同上注, 段 86 及以下。
• [61] 同上注, 段 91 及以下。
• [62] 同上注, 段 92。
• [63] 同上注, 段 93及以下。
• [64] 同上注, 段 94。
• [65] 同上注, 段 83。
• [66] 同上注, 段 95。
• [67] 同上注, 段 96。
• [68] 同上注, 段 98。
• [69] 同上注, 段 97。

西斯维尔诉海尔

24 十一月 2020 - Case No. KZR 35/17

A. 事实

原告西斯维尔（Sisvel）持有被声明为对实施数项无线通信标准而言（潜在）必不可少的专利（以下称“标准必要专利”或“SEPs”）。西斯维尔已向欧洲电信标准协会（ETSI）作出了承诺，表示愿意将其所持有的标准必要专利依照公平、合理且无歧视（FRAND）的条款和条件对标准实施人提供。

被告是总部位于中国的海尔集团（Haier）旗下的两家欧洲子公司。海尔集团生产并且销售实施包括欧洲电信标准协会所发展出的GPRS和UMTS标准在内等多种标准的手机和平板电脑。

西斯维尔于2012年12月20日就其针对其所持有的标准必要专利提供许可事宜向海尔集团的母公司（以下称“中国海尔”）进行通知，同时并提交了一份关于其所持有的专利组合中所包含的大约235项专利的清单。此外，西斯维尔在2013年8月以及同年11月间更进一步向中国海尔发送了内容为有关其许可计划的信息的信函。

然而，中国海尔直至2013年12月时才向西斯维尔做出回复。其表示“希望”与西斯维尔进行“正式谈判”，并且要求西斯维尔提供先前双方沟通中曾提到的潜在折扣的相关信息。

2014年8月，西斯维尔向海尔提出了一项以全球为范围的专利组合许可要约，然却遭海尔拒绝。

此后不久，西斯维尔便在杜塞尔多夫地区法院（以下称“地区法院”）向海尔提起了侵权诉讼。其中一项诉讼主张是针对实施UMTS标准的标准必要专利（以下称“涉案专利”），而另一项诉讼主张则涉及了实施GPRS标准的专利。作为回应，海尔于德国联邦专利法院就此二项专利提起了专利无效诉讼。

在侵权诉讼程序进行的过程中，海尔向西斯维尔提出了一些特定的许可反要约。这些许可反要约所涵盖的范围相当有限，仅包含西斯维尔在法庭上对海尔所主张的那些专利（专利族）。

地区法院于2015年11月3日就这两起案件都做出了有利于西斯维尔的判决 [70] 。地区法院向海尔发出了禁令，并责令其召回并销毁侵权产品。地区法院进一步确认了海尔在本案中应承担损害赔偿责任，并责令海尔就其销售侵权产品的具体情况向西斯维尔提供全面且详细的信息。海尔对这两项判决均不服并提起上诉。

除了其他数项主张外，海尔于其后续在杜塞尔多夫高等地区法院（以下称“上诉法院”）所提起的诉讼中也同时主张到，地区法院未能在西斯维尔已经提起侵权诉讼的情况下，就欧洲联盟法院（CJEU）于华为诉中兴通信案中判决 [71] （以下称“华为案判决”）中课与标准必要专利持有人的行为义务进行充分的考量。

在上诉法院诉讼程序进行的过程中，海尔于2016年1月16日表示，其只有在德国法院最终确认了涉案专利的有效性以及相关侵权行为存在的前提下，愿意从西斯维尔处获取FRAND许可。海尔更进一步要求西斯维尔提供其所持有的专利组合中包含的全部专利的权利要求对照表。

2016年12月，西斯维尔再度向海尔提出了进一步的许可要约，然亦遭到海尔拒绝。

海尔于2017年1月20日——也就是上诉诉讼言词辩论程序终结前的几周——才终于向西斯维尔提出了进一步的许可反要约，并且该许可反要约中的许可范围仅涵盖海尔集团在德国被起诉的两家子公司。双方就此并没有达成一致的协议。

在其于2017年3月30日作成的两项判决中，上诉法院部分支持了海尔在两个平行诉讼程序中的上诉主张 [72] 。西斯维尔关于禁令救济以及召回并销毁侵权产品的诉讼主张遭到上诉法院驳回，理由在于西斯维尔并未践行其在华为判决下应尽的义务，特别是其未能向海尔发出 FRAND许可要约的部分。

西斯维尔就上诉法院的裁决提起了上诉。

德国联邦法院（以下称“联邦法院”或“法院”）最终于2020年4月驳回了海尔针对本案涉案专利所提起的专利无效诉讼 [73] 。

2020年5月5日，联邦法院在双方未决的平行诉讼中就涉及实施GPRS标准的专利的部分作出了判决 [74] 。法院推翻了上诉法院此前的判决，并判决西斯维尔胜诉。

于本案判决中 [75] 6，法院同时推翻了上诉法院于前案中就涉案专利所做出的判决。
 

B. 法院的论理

法院认为，涉案专利对于UMTS标准的实施而言具备标准必要性，并且遭受侵权 [76] 。

与上诉法院此前采取的观点相反，联邦法院认为西斯维尔对海尔提起侵权诉讼的行为，并未构成对《欧洲联盟运作条约》（TFEU）第102条滥用市场支配地位的违反 [77] 。
 

市场支配地位

法院认为，西斯维尔具备《欧洲联盟运作条约》第102条涵义下的市场支配地位 [78] 。

联邦法院指出，当一项专利对符合标准发展组织发展出的标准（或事实上的标准）而言具备技术上的必要性，并且在下游市场提供的产品中并没有可以替代该标准的技术时，就会带来市场支配地位 [79] 。即使存在替代（技术）选项，只要不采用该项专利技术指引的产品无法在（下游）市场中竞争，市场支配地位就可能会产生 [79] 。联邦法院认为，本案涉案专利即是这种情况。
 

滥用市场支配地位

然而，法院认为，西斯维尔并不会因为对海尔提起了侵权诉讼便构成对其市场支配地位的滥用 [80] 。对市场支配地位的滥用可能发生于当标准必要专利持有人：

• 拒绝向具有取得许可意愿的实施人授予FRAND许可，并且对该实施人提起诉讼，主张禁令救济（和/或召回并销毁侵权产品），或
• 未能按其因享有市场支配地位而衍生的“特别责任”做出“足够的努力”来促成其与具备取得许可意愿的实施人间许可协议的签署时 [81] 。

在法院看来，于上述两种情况下，仅仅因为实施人有权主张由标准必要专利持有人通过合同的形式在符合FRAND条款与条件的前提下授予其对某项专利技术指引使用的权利就对“具备取得许可意愿”的实施人提起诉讼，将会构成对市场支配地位的滥用 [82] 。另一方面，专利持有人在谈判开始时所提出的要约本身，即便所提供的条款将会对实施人产生不合理的阻碍或歧视，通常也并不会构成滥用行为，只要双方达成合意即可 [82] 。如果标准必要专利持有人在其与实施人的许可谈判结束时仍然坚持这些条款与条件，则会被认定是一种滥用行为 [82] 。
 

侵权通知

法院指出，具有市场支配地位的专利持有人的“特殊责任”具体体现在其有义务在提起侵权诉讼之前就针对涉案专利的侵权行为向实施人进行通知，以防止实施人为了符合某项标准而（可能）在不知情的情况下使用了该项标准实施的专利 [83] 。

在本案中，法院认为，通过发送日期为2012年12月20日的信函以及其后的通信交流，西斯维尔已向海尔发出了适当的侵权通知 [84] 。
 

取得许可的意愿

另一方面，法院认为，海尔并未表现出作为一个有意愿自西斯维尔处获得FRAND许可的被许可人应有的态度 [85] 。联邦法院在这一问题上持不同观点，采取了与上诉法院的相反的意见。

在法院看来，实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议，随后就必须以一种“目的性导向”的态度参与许可谈判 [86] 20。相反地，仅仅是对侵权通知作出“表达愿意考虑签署许可协议“或”就是否以及在什么条件下才考虑取得许可而进行谈判“这样的回覆是不够的 [86] 。

法院认为，实施人愿意通过创建个别的合同基础来使未经授权的专利使用在未来能够合法化是要求标准必要专利持有人承担必须与实施人进行许可谈判以达成 FRAND许可此一责任的先决条件 [87] 。此外，（双方皆具备）达成许可协议的意愿是必不可少的，因为能够平衡双方对立的利益适当的解决方案通常来自于以利益为出发点的谈判 [88] 。谈判一方未能在FRAND许可协议的谈判过程中做出贡献的事实经常将会被视为对其不利 [89] 。如果实施人在收到侵权通知后的很长的一段时间内均未对取得FRAND许可表现出任何的兴趣，则其之后就必须采取“额外的努力”以确保尽管已经有所延误，仍然可以尽快地完成许可协议的签署 [90] 。

法院特别强调，实施人不应该滥用标准必要专利持有人因其得以在法庭上主张的专利权受到限制而面临的“结构性劣势”来进行“反向专利挟持” [91] ，否则就可能会妨碍市场竞争，因为，如此一来，侵权人将获得相较于及时取得许可的实施人而言更加不公平的竞争优势 [91] 。

联邦法院认为，上述关于实施人必须展现出其具备取得FRAND许可的意愿这项义务的解释符合华为案判决的要求，因此不需要依照海尔的请求将相关问题提交给欧洲联盟法院重新进行审查 [92] 。华为案判决的做成为反垄断法下的责任创造了一个“安全港”，在遵守该案判决所确定的行为义务的前提下，通常足以排除滥用市场支配地位的情况 [93] 。然而，在一些特殊的情况下，也可以对当事人的行为义务做更严格或更宽松的要求 [93] 。

法院指出，华为案判决支持实施人应在整个谈判过程中始终维持具备取得许可意愿的状态此一观点 [93] 。“持续不断地”具备取的许可的意愿是许可谈判成功“必不可少的条件”，又或者，当许可谈判失败时，此一条件则是判断标准必要专利持有人是否有滥用市场支配地位的行为的准则 [94] 。当实施人客观上不愿意也没有能力取得该项许可时，标准必要专利持有人拒绝授予FRAND许可的行为事实上便与反垄断条款无关了 [95] 。

据此，联邦法院解释到，即使标准必要专利持有人已经提出了许可要约，具备取得许可的意愿这项要素也（仍然）应该到位 [96] 。于此方面，法院不同意杜塞尔多夫地区法院近期在诺基亚诉戴姆勒案中将某些FRAND相关的问题提交给欧洲联盟法院进行审查时所表达的相反观点 [97] 。据联邦法院指出，标准必要专利持有人所发出的许可要约只是许可谈判的“起点”；由于FRAND本身是一个范围，许可谈判所欲达成的目标便是在充分考量双方的利益后，达成一个公平合理的结果 [98] 。正因为如此，实施人有责任审阅标准必要专利持有人所提出的许可要约中的各项条款与条件是否符合FRAND [99] 。如果标准必要专利持有人所提出的许可要约“显然”不符合FRAND，那么，在这种情况下，实施人只需要对该要约为什么不符合FRAND做出解释即可 [99] 。

在这种情况下，法院明确表示，无论要约在内容上是否于各方面均符合FRAND，实施人都有责任对标准必要专利持有人所发出的许可要约进行审阅 [100] 。如果标准必要专利持有人在一开始就被要求必须立即提出一个“完美”的FRAND许可要约，那么许可谈判将会是没有意义的 [101] 。并且如果不对双方认为有关的事项加以考量，也不可能仅就该许可要约的FRAND符合性进行抽象地评估 [102] 。法院再次重申，不符合FRAND的许可要约本身并不会构成对市场支配地位的滥用 [103] 。

话虽如此，联邦法院指出，在评估实施人是否具备取得许可意愿时，实施人的整体行为（包含其对标准必要专利持有人所发出的许可要约所作出的回应在内）都必须被纳入考量范围中 [104] 。因此，取得可的意愿会可能随着时间的推移而发生改变：如果实施人已经充分地提出了取得FRAND许可的要求，则标准必要专利持有人向法院提起诉讼的行为在其后的某个时间点便有可能转变为对市场支配地位的滥用 [105] 。然而，实施人做出此一要求时所耽误的时间越长，则其可以被视为具备取得许可意愿的被许可人的门槛也就越高 [106] 。法院再次声明，其针对上述议题所做出的解释与华为案判决的内容一致，因此无需应海尔所要求额外将此议题提交欧盟法院审查 [104] 。

于此背景下，法院认为，中国海尔在收到西斯维尔的侵权通知近一年后才对该通知作出第一次回应已经太迟 [107] 。一个需要花费几个月的时间才能够对侵权通知作出回应的实施人，其所发出的信号通常是没有兴趣取得许可 [107] 。此外，联邦法院认为，海尔在2013年12月所作出的回应中仅表达了“希望”与西斯维尔进行“正式的谈判”，从此内容上看来并不足以表达其具备取得许可的意愿 [108] 。由于其对侵权通知做出回应的时间已经迟延，海尔本应做出“额外努力”以表明其取得许可的意愿，然于本案中事实并非如此 [109] 。

同样地，海尔于2016年1月16日所发出的信函中也没有包含充分的取得许可意愿声明，因为海尔就许可协议的签署附加了德国法院必须先确认涉案专利的有效性和侵权行为存在的前提条件 [110] 。尽管实施人原则上被允许在协议签订后保留对该被许可专利的有效性提出质疑的权利，法院认为，实施人就其具备取得许可意愿所做出的声明不能够附加此种条件 [111] 。除此之外，海尔在收到侵权通知长达近三年之久后才要求西斯维尔提供其专利组合所包含全部专利的权利要求对照表这一行为，在法院看来明显表示海尔只有意拖延许可谈判的进行直至涉案专利过期失效为止 [112] 。

此外，联邦法院指出，海尔在侵权诉讼进行过程中所提出的许可反要约也无法展现出其具备取得FRAND许可的意愿 [113] 。该许可反要约在许可范围上仅限于西斯维尔于诉讼中所主张的专利这一事实表明，海尔并没有认真回应西斯维尔所提出的在全球范围内以专利组合的形式进行许可的要求 [114] 。鉴于海尔有足够长的时间来对西斯维尔所持有的专利组合进行检视，人们可以合理期待海尔就其这种“选择性许可”的行为提供实质性的依据 [114] 。

更有甚者，法院认为，海尔在上诉诉讼程序结束前不久所发出的日期为2017年1月20日的许可反要约同样不足以表明其具备取得许可的意愿 [115] 。法院特别注意到了该许可反要约的许可范围将仅涵盖海尔集团在德国被起诉的两个子公司这一事实 [116] 。联邦法院指出，海尔这种“选择性许可”的行为并不具备“合法利益”；相反地，此种有限许可并不能为防止海尔集团下其他公司作出侵权行为提供足够的保护，并将迫使西斯维尔必须花费大量而密集的成本来对其持有的所有标准必要专利“按个别专利在个别国家”逐一主张其专利权 [117] 。

此外，法院还批评了海尔所提出的许可费计算模式 [118] 。海尔仅根据其认为“可能具备”标准必要性而应被涵盖于许可范围中的一小部分（四个同族专利）标准必要专利为基础来计算许可费 [119] 。法院认为，许可范围必须在许可谈判中被确定，而在信息及通信技术（ICT）行业中，由于相关专利数量众多，通常会依赖于对专利必要性及有效性的估计，一方面得以允许考虑“必要的剩余不确定性”的存在，另一方面更有助于避免不成比例的高交易成本的产生 [120] 。

除上列问题之外，海尔的许可反要约仅是在上诉诉讼程序进行过程中的“最后一分钟”才被发出这一事实，表现出海尔发出此一反要约的实际动机并不在于达成FRAND许可的签署，而只是出于对未决诉讼程序的战术考量 [121] 。

标准必要专利持有人所提出的许可要约 在认定了海尔并没有充分表现出其具备取得FRAND许可的意愿后，法院在本案中并未就西斯维尔向海尔提出的许可要约是否符合FRAND进行审查 [122] 。联邦法院表示，当实施人没有充分表达签署FRAND许可协议的意愿时，此一问题便是不相关的 [123] 。

法院强调，除了就侵权行为向实施人进行通知的义务之外，标准必要专利持有人的义务（包括发出FRAND许可要约的义务）仅在实施人表明愿意依照FRAND条款与条件取得许可的情况下才会产生 [124] 。专利持有人对相关标准发展组织所做出的FRAND承诺并不会改变专利实施人原则上有义务向权利持有人寻求许可的事实 [124] 。
 

C. 其他重要问题

专利伏击

法院驳回了海尔以“专利伏击”为主张的的抗辩 [125] 。海尔主张，涉案专利无法被执行，因为西斯维尔从其手中取得该专利的最初专利持有人未能在UMTS标准发展的过程中及时向欧洲电信标准协会披露该专利。

本院并未就本案是否确实发生了上述意义上的“专利伏击”进行审查 [126] 。联邦法院所采取的观点认为，实施人只能针对实际参与标准发展过程的专利持有人主张“专利伏击”抗辩；相反地，实施人不能对其继受人（此处为西斯维尔）提出此类抗辩 [126] 。

尽管如此，法院指出，“专利伏击”的成立要求相关标准发展组织内部的决策过程因为该信息的被隐瞒而遭到妨碍 [127] 。就此而言，实施人必须至少提出一定程度的指标，证明如果有关该专利申请的相关信息及时被披露并且被纳入考量，则该标准将会采用另一个不同的形式 [128] 。然而，海尔却没有办法建立此一关联性 [128] 。
 

损害赔偿

最后，法院认定西斯维尔的所提出的损害赔偿主张是有理由的。海尔因为过失行为所导致的损害赔偿责任于此被确立：实施人原则上有义务在开始生产或销售产品之前确保没有任何第三方权利会因此遭受侵害，而海尔并没有这样做 [129] 。

更进一步，西斯维尔的损害赔偿请求不仅限于FRAND许可费率（“许可类比”）的部分 [130] 。 标准必要专利持有人有权要求获得全额损害赔偿，除非实施人可以提出自己的反主张，要求被置于若标准必要专利持有人履行其因具备市场支配地位所产生的义务时，其所本应处在的地位 [129] 。然而，实施人只有在充分表现出其具备取得许可的意愿的情况下才有权提出此项（反）主张，而本案情况非如此 [129] 。
 

• [70] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 144/14 (UMTS相关专利)及Case No. 4a O 93/14 (GPRS相关专利)。
• [71] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
• [72] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 65/15 (UMTS相关专利) and Case No. I-15 U 66/15 (GPRS相关专利)。
• [73] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18。
• [74] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17。
• [75] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by juris.bundesgerichtshof.de)。
• [76] 同上注，段10至段43。
• [77] 同上注，段44。
• [78] 同上注，段48及以下。
• [79] 同上注，段49。
• [80] 同上注，段52。
• [81] 同上注，段53。
• [82] 同上注，段54。
• [83] 同上注，段55。
• [84] 同上注，段84。
• [85] 同上注，段86及以下。
• [86] 同上注，段57。
• [87] 同上注，段58。
• [88] 同上注，段59。
• [89] 同上注，段60。
• [90] 同上注，段62。
• [91] 同上注，段61。
• [92] 同上注，段63。
• [93] 同上注，段65。
• [94] 同上注，段68。
• [95] 同上注，段66及段68。
• [96] 同上注，段69。
• [97] 同上注，段69。详见：Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19。
• [98] 同上注，段70及段71。
• [99] 同上注，段71。
• [100] 同上注，段72。
• [101] 同上注，段73。
• [102] 同上注，段74。
• [103] 同上注，段76。
• [104] 同上注，段77。
• [105] 同上注，段79及以下。
• [106] 同上注，段83。
• [107] 同上注，段87。
• [108] 同上注，段88及以下。
• [109] 同上注，段89。
• [110] 同上注，段93及以下。
• [111] 同上注，段95。
• [112] 同上注，段96至段99。
• [113] 同上注，段102及以下。
• [114] 同上注，段102。
• [115] 同上注，段108及以下。
• [116] 同上注，段116。
• [117] 同上注，段118。
• [118] 同上注，段124及以下。
• [119] 同上注，段124。
• [120] 同上注，段125。
• [121] 同上注，段126。
• [122] 然而，法院在其先前于2020年5月所做出涉及相同双方当事人的判决中有针对此一问题进行分析，详见：Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17，特别是段76至段81，以及段101及以下。
• [123] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17，段107。
• [124] 同上注，段56。
• [125] 同上注，段127及以下。
• [126] 同上注，段130。
• [127] 同上注，段131。
• [128] 同上注，段131及以下。
• [129] 同上注，段135。
• [130] 同上注，段134及以下。

Cases from OLG Düsseldorf - Higher Regional Court

OLG Düsseldorf

18 七月 2017 - Case No. I-2 U 23/17

A. Facts

The Claimant is holder of a patent declared as essential to a standard (Standard Essential Patent, SEP). The Defendant is a provider of telecommuni­cation services. Under the policy governing the relevant standard, the Claimant is obliged to license its SEP on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. Against Claimant’s SEP a nullity action is pending. The Claimant, nevertheless, concluded portfolio licensing agreements also covering the SEP in question with two companies.

Since November 2012, the Claimant made efforts to license his SEP also to the Defendant. The parties could, however, not reach an agreement. In January 2016, the Claimant brought an action against the Defendant before the Regional Court of Düsseldorf requesting for a declaration of the Defendant’s liability for damages as well as rendering of accounts (main proceedings). After the main proceedings were ini­tiated, the Claimant made two offers for a license agreement to the Defendant. In order to protect busi­ness secrets connected with these offers, the Claimant requested the Defendant to sign a Non-Disclosure Agreement (NDA). The Defendant refused to sign a NDA. Moreover, the Defendant brought an action against the Claimant before an Irish Court requesting for a declaration that Claimant’s offers did not comply with FRAND.

Subsequently, the Claimant filed a motion for a preliminary injunction against the Defendant before the Regional Court of Düsseldorf. The Regional Court of Düsseldorf dismissed Claimant’s motion. The Claimant appealed this judgement. With the present ruling the competent Higher Regional Court of Düsseldorf in­dicated that the Claimant’s appeal has no prospects of success.

B. Court’s reasoning

The court made clear that preliminary injunctions involving SEPs are subject to the same strict prerequi­sites as injunctions referring to non-SEPs. The SEP-holder has, therefore, to adequately establish the va­lidity of the SEP, its use by the alleged infringer as well as the urgency of its request for a preliminary injunction.

Besides this, prior to seeking for a preliminary injunction, the SEP holder also has to fulfill the require­ments set forth by the Court of Justice of the European Union in its decision in the matter Huawei ./. ZTE (Huawei judgement). This follows from the fact that SEP-holders’ claims for injunctive relief are, in prin­ciple, only enforceable, after the prerequisites established by the Huawei judgement have been fully met.

Since preliminary injunctions may severely affect alleged infringer’s ongoing business, such injunctions can only be granted, when both the validity and the use of the SEP by the alleged infringer appear to be given with a high degree of certainty.

The validity of a SEP is deemed to be given, when the SEP has been confirmed in patent opposition or nullity proceedings. Without a prior confirming decision, the validity of a SEP can, exceptionally, also be regarded as being given, when

• the alleged infringer has unsuccessfully intervened in the proceedings, in which the SEP was granted,
• no opposition or nullity proceedings were initiated against the SEP, because it is universally consid­ered to be able to receive patent protection (one indication for this being, for instance, the fact that the SEP was licensed to renowned licensees),
• the objections raised against SEP’s validity can be proven to be unfounded even by the limited means of the summary examination foreseen in proceedings for interim relief, as well as
• in “extraordinary circumstances”, in which the SEP-holder will face substantial disadvantages, if he is forced to wait with the initiation of proceedings against the infringer, until after the end of opposition or nullity proceedings pending against the SEP.

Against this background, the court argued that the Claimant is most likely not entitled to the requested preliminary injunction.

First, the Claimant failed to establish the validity of the SEP in dispute with the required high degree of certainty. A decision confirming the SEP in dispute is missing, since the nullity proceedings are still pending. Furthermore, the exceptions allowing this conclusion to be drawn, even without a prior con­firming decision, do most likely not apply. In particular, the fact that the Claimant concluded portfolio licensing agreements with two other companies covering also the SEP in question, does not suffice to adequately establish its validity. This fact only proves that the licensees held the SEP-holder’s portfolio as being able to receive patent protection as a whole, not, however, that they considered the SEP itself as being worthy of such protection. Furthermore, due to the high level of technical complexity, the court does not expect that the objections raised against the validity of the SEP can be proven as being unfounded solely on basis of the limited examination means available to the court in the present pro­ceedings for interim relief.

Second, the court has also substantial doubts that urgency is given. The Claimant was aware of the alleged infringement since 2012. Nevertheless, the Claimant refrained from making his claim for injunctive relief enforceable by fulfilling the Huawei judgement requirements. Furthermore, in the main proceedings ini­tiated prior to the present proceedings for preliminary injunction, the Claimant did not request for injunc­tive relief, but limited his action against the Defendant to damages and rendering of accounts. In terms of urgency, it could be expected from the Claimant to request for injunctive relief already in the main proceedings. Furthermore, the fact that the Defendant brought an action before an Irish Court requesting a declaration that Claimant’s offers did not comply with FRAND, also fails to establish urgency. It is the Defendant’s right to seek legal redress.

C. Other issues

In addition, the court expressed its view regarding the consequences of the refusal of a potential licensee to sign a NDA covering information connected with the SEP-holder’s offer for a licensing agreement on FRAND terms, without, however, ruling on this question on the merits of the present case.

Sisvel v Haier

30 三月 2017 - Case No. I-15 U 66/15

A. Facts

The claimant is the owner of European patent EP B1, allegedly covering data transmission technology under the GPRS standard. The defendants produce and market devices using the GPRS standard. On 10 April 2013, the claimant made a commitment towards ETSI by declaring to grant a license on FRAND terms regarding, inter alia, patent EP B1. In various letters and meetings between 2012 and 2015, the claimant informed the parent companies of the defendants about its patent portfolio and made an offer, but no licensing agreement was entered into. These interactions took place before the CJEU handed down its Huawei v. ZTE ruling in July 2015. On 3 November 2015, the District Court granted an injunction order. [131] The District Court also held that the defendants were liable for compensation in principle and ordered them to render full and detailed account of its sales. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

The defendants lodged an appeal with the Higher Regional Court of Düsseldorf. They argued, inter alia, that the District Court had not taken into account the procedural requirements set out by the CJEU in the decision Huawei v. ZTE [132] and that the claimant had not made a license offer on FRAND conditions. [133] The Higher Regional Court of Düsseldorf partially granted the appeal. It held that the defendants were under an obligation to render accounts and that they owed compensation in principle. [134] However, it held that the defendants were under no obligation to recall and remove the products from the relevant distribution channels because the claimant was in breach of its obligations under EU competition law (‘kartellrechtlicher Zwangslizenzeinwand’). [135] The Higher Regional Court did not have to decide about the injunction order because the parties had agreed to settle the matter in this regard (the patent had expired in September 2016). [136]

B. Court’s reasoning

1. Market Power

The Higher Regional Court held that the claimant was a dominant undertaking within the meaning of Art 102 TFEU. [137] In the eyes of the court, proprietorship of an SEP does not automatically constitute a dominant market position because not all SEPs necessarily influence competition in the downstream product market. [138] Rather, it needs to be ascertained whether or not market dominance exists in respect of each SEP individually. A dominant market position exists, for example, if it would not be possible to successfully market a competitive product without using the respective SEP, or if compatibility and interoperability under the standard could not be guaranteed. In contrast, a dominant position does not exist if the technology covered by the SEP is only of little importance for consumers in the relevant market. [138] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [139] because the patent in question was related to data transfer, an essential function of the GPRS standard. [140]

2. Notice of Infringement

The Higher Regional Court held that the claimant had given proper notice of infringement under the CJEU requirements. According to the court, the procedure set out by the CJEU in the Huawei v. ZTE ruling applied to transitional cases (i.e. proceedings that had commenced before the CJEU decision, but where the decisions were handed down after). [141] The District Court had wrongfully assumed that the Huawei v. ZTE principles did not apply to the case at hand. CJEU decisions pursuant to Art 267 TFEU apply ab initio (‘ex tunc’) and thus to transitional cases. [142] The Higher Regional Court argued that the Huawei v. ZTE case itself had been of a transitional nature and that the CJEU had been aware of the diverging principles created by the German Federal Court of Justice in the Orange Book Standard decision in 2009. [142] Nevertheless, the CJEU had not distinguished between transitional and ‘new’ cases. As a consequence, the claimant was under an obligation to notify the defendants of the infringement. The written correspondence between the parties from 2012 and 2013 met this requirement [143]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [144] The claimant can reasonably expect that the parent company will pass on the respective information to all subsidiaries that are active on the relevant product markets. Requiring the claimant to give additional notices to the subsidiaries would be an unjustified formality (‘bloße Förmelei’). [144]

3. The Defendant’s Willingness to Enter into a License Agreement

As a consequence, the defendants were under an obligation to declare their willingness to enter into a license agreement on FRAND terms. [145] Several months had passed between the notice of infringement and the defendants’ declaration of willingness. However, the defendants had made it clear in an email from December 2013 that they were willing to enter into a license agreement. In the eyes of the Higher Regional Court, this was sufficient because there was ample time between this declaration and the commencement of proceedings in 2014.

In the further course of the negotiations, the rejection of certain license terms by the defendant was not necessarily an indicator for general unwillingness. [146] The defendant’s willingness needs to be seen in the overall context of the case. Unwillingness would be demonstrated only if the defendant definitively and finally rejects the claimant’s offers (the ‘last word’). [146] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [146]

4. The SEP Owner’s Licensing Offer and the Standard Implementer’s Reaction

The Higher Regional Court held that the District Court had been incorrect to leave open the question as to whether the claimant’s offer had been FRAND. [147] The Higher Regional Court took the view that the CJEU had established an intricate system of consecutive actions that the parties must take. A claimant needs to make an offer on FRAND terms only if the defendant declared its willingness to enter into a license agreement on FRAND terms. Similarly, a defendant is under an obligation to make a counter-offer on FRAND terms only if the claimant made an offer on FRAND terms. [148] According to the Higher Regional Court, this view flows from the wording of the Huawei v. ZTE ruling that relates the content of offer and counter-offer (‘such an offer’; ‘responded to that offer’). [148] An SEP owner who has given a commitment to an SSO to offer FRAND licenses can be expected to make a FRAND offer that can reasonably be accepted by the defendant. In addition, a defendant needs to be able to assess whether the conditions of the claimant’s offer are FRAND. Requiring a defendant to make a FRAND counter-offer no matter what the claimant had offered earlier would be a contradiction of this basic proposition of the Huawei v. ZTE ruling. [148] Thus, it was necessary to have a decision in respect of the conditions of the claimant’s licensing offer.

The Higher Regional Court held that the claimant’s licensing offer did not meet FRAND requirements [149] because it discriminated against the defendants. [150] The court reiterated that infringement courts cannot limit their assessment to a summary review of whether the conditions were not evidently non-FRAND. Rather, infringement courts need to make a full assessment of the license conditions. [151]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [152] SEP owners have discretion regarding the license fees that they charge. [153] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [154] Further, license conditions can be abusive only if they are significantly different between licensees. [154] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [155] The burden of proof for such substantially unequal treatment lies with the defendant, [156] whilst the onus is on the claimant to prove that this unequal treatment is justified. [156] However, as the defendant will typically not have the necessary information, the claimant is under an obligation to provide information as to which competitors have been granted licenses and on what terms. [156] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [157] without having a proper justification. [158] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [159] or that these discounts were a result of the particularities of the case. [160]

• [131] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
• [132] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 32.
• [133] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
• [134] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
• [135] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
• [136] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
• [137] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
• [138] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
• [139] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
• [140] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
• [141] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
• [142] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
• [143] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
• [144] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
• [145] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
• [146] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
• [147] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
• [148] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
• [149] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
• [150] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
• [151] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
• [152] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
• [153] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
• [154] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
• [155] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
• [156] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
• [157] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
• [158] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
• [159] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
• [160] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.

Sisvel v Haier 2

13 一月 2016 - Case No. 15 U 65/15

1. Facts
   The proceedings concerned the subsequent application of Defendant in Case No. 4a O 144/14 to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. As to the facts of the case, it can be referred to the deliberations under point “1b” of the previous summaries.
   Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous. If the decision, as in the present case, has been declared provisionally enforceable subject to the provision of security by Claimant suspension of execution will only be granted in exceptional circumstances. [161]
2. Court’s reasoning
   
   
   1. The SEP owner’s licensing offer
      The question of whether granting a portfolio license would be FRAND was referred to the subsequent appeal proceedings. [162]
   2. The standard implementer’s reaction
      More importantly, the Court found that the standard user is not required to respond to a license offer of the SEP proprietor if the terms of that offer are not FRAND. In other words, the subsequent obligations of the alleged infringer derived from Huawei only arise when and provided that the SEP proprietor submitted an offer on FRAND terms. As the lower court had not determined whether the conditions of the proprietor’s license offers were FRAND, the Court considered this part of the lower court’s decision to be manifestly erroneous. Given this flaw in the lower court’s reasoning, it was left undecided by the Court whether a license offer submitted in the course of the oral hearings can fulfill the Huawei requirements. [163]
3. Other important issues
   For the purposes of the present proceedings, the Court explicitly stated that there is—in principle—no reason to treat patent assertion entities, such as Claimant, in a different manner than other market participants. [164]

• [161] Case No. 15 U 65/15, para. 2
• [162] Case No. 15 U 65/15, para. 28
• [163] Case No. 15 U 65/15, para. 23-30
• [164] Case No. 15 U 65/15, para. 12

Canon v Carsten Weser

29 四月 2016 - Case No. I-15 U 49/15

The proceedings before the Court concerned the subsequent appeal of Defendants in Case LG Düsseldorf, 11 June 2015 – Case No. 4a O 45/14 (decision rendered before Huawei) seeking to set aside the decision of the lower court. As Cases No. I-15 U 49/15 and No. I-15 U 47/15 are interconnected, the Court came to the same conclusions and framed them in essentially the same wording as in its decision OLG Düsseldorf, 29 April 2016 - Case No. I-15 U 47/15 (cf. above). Therefore, no separate and detailed summary is provided here.

Sisvel v Haier 3

13 一月 2016 - Case No. I-15 U 66/15

1. Facts
   The proceedings concerned the subsequent application of Defendants in Case No. 4a O 93/14 seeking to suspend the execution of the District Court’s decision until the appellate court has decided on the merits of an appeal brought by Defendants. As to the facts of the case, it can be referred to the summary above.
   Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous. [165]
2. Court’s reasoning
   
   
   1. The SEP owner’s licensing offer
      The question of whether granting a portfolio license would be FRAND was referred to the subsequent appeal proceedings. [166]
   2. The standard implementer’s reaction
      More importantly, the court found that the standard user is not required to respond to a license offer of the SEP proprietor if the terms of that offer are not FRAND. In other words, the subsequent obligations of the alleged infringer derived from Huawei only arise when and provided that the SEP proprietor submitted an offer on FRAND terms. As the lower court had not determined whether the conditions of the proprietor’s license offers were FRAND, the court considered this part of the lower court’s decision to be manifestly erroneous. Given this flaw in the lower court’s reasoning, it was left undecided by the court whether a license offer submitted in the course of the oral hearings can fulfill the Huawei requirements. [167]
3. Other important issues
   For the purposes of the present proceedings, the court explicitly stated that there is—in principle—no reason to treat non-practicing entities, such as Claimant, in a different manner than other market participants. [168]

• [165] Case No. I-15 U 66/15, para. 4-5
• [166] Case No. I-15 U 66/15, para. 20
• [167] Case No. I-15 U 66/15, para. 17-20
• [168] Case No. I-15 U 66/15, para. 11

Canon v Sieg/Kmp Printtechnik/Part Depot

29 四月 2016 - Case No. I-15 U 47/15

1. Facts
   The proceedings before the court concerned the subsequent appeal of Defendants in Case LG Düsseldorf, 11 June 2015 – Case No. 4a O 44/14 (decision rendered before Huawei) seeking to set aside the decision of the lower court.
   Claimant, a Japanese company that produces and markets photocopiers, printers and cartridges in cooperation with undertaking “C”, is the proprietor of European patent 2 087 AAA B1 which has not been declared essential to a particular standard. Defendants “1”, “2” and “3” are involved in the supply and distribution, inter alia to Germany, of cartridges of brand “E”, being based on recycled models of and serving as substitutes for particular OEM-cartridges of Claimant. In 2011, Claimant and “C” made a commitment towards the EU Commission that their products would comply with EU-Directive 2009/125/EC. Part of this commitment is the obligation to secure interoperability of the products with non-OEM cartridges.
   The admissible appeal of Defendants has been rejected by the court of second instance.
2. Court’s reasoning
   Even though the commitment made toward the EU Commission does, contrary to the opinion of Claimant, not constitute merely a non-binding memorandum but rather a binding declaration it executes Article 15 (2) Directive 2009/125/EC and has the sole purpose of enhancing the environmental performance of the products at issue. Hence, it can be considered neither as a direct nor as an indirect FRAND declaration and the Huawei obligations do not apply in the present case. [169] In consequence, Claimant is not obliged to present a licensing offer corresponding to FRAND terms. [170]
   Nor can Claimant’s seeking of a prohibitory injunction be considered as abusive pursuant to § 242 BGB since Claimant’s declaration could not establish a reliance worthy of protection to the effect that Defendant was entitled to make use of Claimant’s patent protected inventions. [171]
   Moreover, the cumulative conditions established by the ECJ (inter alia in IMS Health) for granting a compulsory license on the basis of Article 102 TFEU absent a standard-setting context are not fulfilled. [172]

• [169] Case No. I-15 U 47/15, para. 72 et seq.
• [170] Case No. I-15 U 47/15, para. 74
• [171] Case No. I-15 U 47/15, para. 48, 78 et seq.
• [172] Case No. I-15 U 47/15, para. 88 et seq.

Saint Lawrence v Vodafone

9 五月 2016 - Case No. I-15 U 36/16

1. Facts
   The proceedings concerned the subsequent application of Defendant in Case No. 4a O 73/14 seeking to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. As to the facts of the case, it can be referred to the summary above.
   Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous.
2. Court’s reasoning
   1. Notice of infringement and declaration of willingness to license
      Firstly, the court of appeal focused on the Huawei requirement to submit an infringement notification prior to the initiation of proceedings. Although the court voiced some doubts over whether a distinction between transitional and non-transitional cases is permitted and whether, in transitional cases, reliance of a SEP proprietor on the Orange Book standard of conduct is worthy of protection, it did not consider the result reached by the lower court as manifestly erroneous. Since the SEP proprietor has the option to withdraw its action, to perform its Huawei obligations and to re-file the claim afterwards, it seems overly formalistic to deny the option to perform the Huawei obligations within the ongoing trial. Among a number of further reasons [173] for its position the court stressed that the ECJ intended the Huawei framework to be fact-sensitive. [174]
      Secondly, the court confirmed the lower court’s view that Defendant did not comply with its Huawei obligation to express its willingness to conclude a licensing agreement because it reacted belatedly (more than five months after the infringement notification) and in an evasive manner. The fact that proceedings have been initiated by Claimant does not alter the Huawei requirements and Defendant will particularly not be granted more time to comply with its respective obligations. [175]
   2. The SEP owner’s licensing offer / The standard implementer’s reaction
      The court left it undecided whether the lower court erred in focusing on a licensing offer which Claimant presented solely to the Intervener but not to Defendant. According to the court the conduct of the parties required by Huawei constitutes a mechanism of alternating, consecutive steps in which no subsequent conduct requirement is triggered unless the other party performed the previous “step”. In consequence, Claimant was, in the present case, not obliged to submit a FRAND licensing offer at all since Defendant had failed to signal willingness to license. [176]
      The lower court’s finding that Claimant’s licensing offer was FRAND while the Intervener’s counter-offer failed to meet this threshold was accepted. Hence, the court considered it as irrelevant under the present circumstances—and as a completely open question in general—whether a SEP proprietor is obliged, before bringing an action for prohibitory injunction against the supplier of a standard-implementing device, to (cumulatively) submit a FRAND licensing offer not only to the supplier but also to the producer of said device. [177]
3. Other important issues
   The remarks of the lower court rejecting, in the present case, a patent ambush-argument were not deemed manifestly erroneous, mainly because the lower court had reasonably argued that such an abusive practice would only result in the SEP proprietor’s obligation to grant licenses on FRAND terms. [178]
   Licensing negotiations (allegedly) undertaken by Defendant after the decision of the lower court provided no reason to suspense execution since it was not evident to the court that Defendant had thereby fulfilled its Huawei obligations. [179]

• [173] For details, cf. OLG Düsseldorf, 9 May 2016 - Case No. I-15 U 36/16, para. 2, b, aa
• [174] Case No. I-15 U 36/16, para. 2, b, aa
• [175] Case No. I-15 U 36/16, para. 2, b, bb
• [176] Case No. I-15 U 36/16, para. 2, b, cc
• [177] Case No. I-15 U 36/16, para. 2, b, ff
• [178] Case No. I-15 U 36/16, para. 2, b, ee
• [179] Case No. I-15 U 36/16, para. 2, b, dd

Saint Lawrence v Vodafone 2

9 五月 2016 - Case No. I-15 U 35/16

The proceedings concerned the subsequent application of Defendant in Case No. 4a O 126/14 seeking to suspend execution of the lower court’s decision. As Cases No. 4a O 126/14 and No. 4a O 73/14 are interconnected, the Court came to the same conclusions and framed them in exactly the same wording as in its decision OLG Düsseldorf, 9 May 2016 - Case No. I-15 U 36/16 (cf. above). Therefore, no separate and detailed summary is provided here.

OLG Düsseldorf 2

14 十二月 2016 - Case No. I-2 U 31/16

1. Facts
   The Claimant is holder of a patent declared as essential to a standard (Standard Essential Patent, SEP). The Defendant is a telecommunications company, which inter alia sells mobile phones allegedly using Claimant’s SEPs. Upon Claimant’s action, the Regional Court of Düsseldorf (1) ordered the Defendant to render accounts regarding the sales of mobile phones embedding Claimant’s SEPs and (2) recognized Defendant’s obligation to pay damages to the Claimant resulting from the infringement of its SEPs (cf. Regional Court of Düsseldorf, decision dated 19th January 2016, Case No. 4b O 49/14). The Defendant appealed this judgement. In the appeal proceedings before the Higher Regional Court of Düsseldorf (Case No. 2 U 31/16), one issue in dispute was whether the license fees, which the Claimant had calculated, were Fair, Reasonable and Non-Discriminatory (FRAND). The Claimant explained its calculation in a statement to the court that was produced in two versions. In the first version, which was filed only with the court, the information regarding the FRAND calculation (including comparable license agreements pre¬sented as evidence), were fully disclosed. In the second version, which was presented to the Defendant and a third party that had joined the proceedings (Intervener), the respective sections (and evidence) were redacted.
   With the present interlocutory application, the Claimant requested the court to order that disclosure of full information (and evidence) regarding its FRAND calculation shall be required only towards Defendant’s and Intervenor’s counsels, provided that the court would oblige the counsels to full confi-dentiality towards everyone, including their clients themselves (that is the Defendant and the Intervener). The Defendant objected this request. The Intervener, on the other hand, stated that it agreed with the proceeding defined in Claimant’s request.
   In its first decision dated 14th December 2016, the court rejected the application with respect to both the Defendant and the Intervener. Instead, the court encouraged the parties to enter into a Non-Disclosure Agreement (NDA) reinforced by a contractual penalty, in case confidentiality was breached.
   This decision was consequently modified by a further decision rendered by the court on 17th January 2017. The court granted Claimant’s application in respect to the Intervener, but again rejected the application in respect to the Defendant. The court, however, requested from the Defendant to present an offer for an NDA to the Claimant incorporating particularly the following conditions within a deadline of three weeks:
   • The confidential information should be used only in the context of the present litigation.
   • The information would be made available only to four company representatives of the Defendant (as well as any experts engaged by the Defendant in the ongoing litigation).
   • These persons shall be themselves obliged to confidentiality by the Defendant.
   • In case confidentiality was breached, the Defendant shall be liable for payment of a contractual pen-alty amounting to EUR 1 million.
   
   
   
   
   
2. Court’s Reasoning
   In its first decision, the court found that the German rules of Civil Procedure do not provide a legal basis for granting an order in the form requested by the Claimant. [180] Such an order would exclude Defendant’s right to be heard with respect to Claimant’s FRAND calculation, in breach of Art. 103 Sec. 1 of the German Constitutional Law (Grundgesetz). [180] The fact that Defendant’s counsels would have access to the relevant information, does not suffice to meet the requirements set forth by the aforementioned provision. Party’s right to be heard contains also the right to personally participate in the proceedings. Consequently, a limitation of a party’s right to be heard reaching so far as Claimant requested, is not possible, unless the party affected expressly waives its right to personally participate in the proceedings. [180] Since the Defendant decided to not do so, a respective order cannot be rendered against it.
   The fact that the Intervener waived its respective right, can also not justify rendering such an order against the Defendant. [181] The Intervener does not join the proceedings as a party, but merely in support of one of the parties. [182] Accordingly, it cannot make decisions that would affect the party’s standing, such as a declaration to waive the right to be heard. In the present case, the Intervener’s decision to waive its respective right may, therefore, impact its own standing in the proceedings, but cannot affect Defendant’s position.
   
   As a result, the Claimant can either make the confidential information available to the Defendant or keep this information redacted, accepting that the court cannot take redacted information into consideration for its decision. [183]
   
   Notwithstanding the above, under reference to the “Umweltengel für Tragetaschen” judgement of the German Federal Supreme Court (Bundesgerichtshof) [184] the court held, that, as a rule, it can be expected from the implementer of SEPs to enter into a NDA reinforced by a contractual penalty with the SEP holder. [185] SEP implementer is obliged to facilitate FRAND licensing negotiations to the best of its ability. This includes also taking justified confidentiality interests of the SEP holder into account. [185]
   
   In its second decision dated 17th January 2017 the court applied the above considerations. Since the Intervener waived its right to be heard, the court found that there is no reason to deny Claimant’s request in relation to the Intervener. On the other hand, due to Defendant’s denial to waive its respective right, the court still refrained for granting Claimant’s request against the Defendant. Taking Claimant’s confi¬dentiality interests into account, the court ordered, however, the Defendant to submit an offer for a NDA to the Claimant based particularly on the conditions mentioned above.

• [180] Judgement dated 14th December 2016, para. 1
• [181] Judgement dated 14th December 2016, para. 2
• [182] Judgement dated 14th December 2016, para. 2
• [183] Judgement dated 14th December 2016, para. 3
• [184] Bundesgerichtshof, Decision dated 19th February 2014, Case No. I ZR 230/12
• [185] Judgement dated 14th December 2016, para. 5

OLG Düsseldorf 3

25 四月 2018 - Case No. I-2 W 8/18

A. Facts

The Claimant holds a patent essential to a technical standard (Standard Essential Patent or SEP) which is subject to a so-called “FRAND-undertaking”, that is a commitment to make the SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant entered into nego¬tiations for a FRAND licensing agreement with the Defendant. In June 2017, the parties signed a Non-Disclosure Agreement (NDA). [186] A few days later, the Claimant entered into an NDA also with a third party, the Intervener . Shortly after signing the NDA, the Intervener [187] argued that several clauses of the agreement were void. [188]

In September 2017, the Claimant initiated infringement proceedings against the Defendant before the District Court of Düsseldorf (District Court). The Intervener joined these proceedings in support of the Defendant. After joining the proceedings, the Intervener claimed that the NDA with the Claimant does not cover information which the latter has to produce in the trial. This is particularly the case with infor-mation regarding to comparable licensing agreements concluded by the Claimant with third parties (comparable licences), which the Claimant regarded as strictly confidential. [189]

In December 2017, the Intervener requested full access to the court files. [190] The District Court dismissed the Intervener’s motion in part, namely by excluding access to confidential information, including information on comparable licences. The District Court held that the protection of such information was not adequately ensured, since the Intervener’s behaviour raised significant doubts that he considered himself bound to confidentiality by the NDA signed with the Claimant. [191] The Intervener appealed this decision.

The Higher District Court of Düsseldorf (Court) set the above ruling aside and requested the District Court to further clarify the facts of the case and decide again on the Intervener’s motion for full access to the court files on basis of the principles set forth in its present judgement. [192] In particular, the Court requested from the District Court to (re-)examine whether the Claimant actually possessed confidential business information which needed protection. [192] If this fact could be positively established, then a limited access to the court files would, basically, be justified, if the party seeking access to the files refused to commit itself to confidentiality. [193]

B. Court’s reasoning

The Court pointed out that parties to court proceedings seeking to protect confidential information must undertake efforts to sign an NDA with the opposing party and any intervener that has joined or is expected to join the proceedings with a high degree of certainty, before disclosing such information in the trial. [194] A party doing so without an NDA has to accept that the opposing party and/or the intervener could gain access to confidential information through an inspection of the court files. [195]

In the eyes of the Court, requesting from the party seeking to protect confidential information to actively pursue the conclusion of NDAs with other parties involved in the proceedings does not put that party at a disadvantage. The unjustified refusal of the opposing party (or an intervener) to enter into an NDA allows the party seeking protection to use only non-confidential information in the proceedings for specifying the FRAND conformity of its licensing offer to the potential licensee. [196] Although still obliged to specify the conditions of its FRAND licensing offer, the party has a lower burden to bear; to the extent (and not be¬yond) that is required for protecting its justified confidentiality interests, the party can meet its respective obligation by making “merely indicative observations” in the trial. [197]

In case that an intervener joins the proceedings at a point in time, in which a party has already produced confidential information on grounds of an NDA previously signed with the opposing party, the intervener’s right to inspect the court files can only be limited, if it was (or can) be established that the party seeking protection actually possesses confidential business information. [198] The fact that the other parties involved in the proceedings have already signed an NDA does not of itself limit the intervener’s right to full access to the court files. [199]

To establish that it possesses confidential business information worthy of protection, a party must identify such information and concretely explain why this information constitutes a business secret. [200] The party also needs to present in detail which measures were taken so far for securing confidentiality with respect to the information in question. [200] In addition, the party has to demonstrate in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed. [200] It also needs to be explained, with which degree of certainty the said disadvantages are expected to occur. [200]

When protection of confidential information contained in comparable licences is sought, the existence of confidentiality interests requires, in general, special justification. [201] In the Court’s view, the SEP holder’s FRAND-undertaking entails transparency vis-à-vis interested stakeholders with respect to licensing conditions. [201] Moreover, knowledge of licensing conditions already accepted in the market can help potential licensees exercise their rights in infringement proceedings effectively. [201] Considering the non-discriminating element of SEP holder’s FRAND undertaking, it is not immediately apparent to the Court which interest worthy of legal protection the SEP holder could have in keeping conditions agreed in existing licensing agreements confidential. [201] In fact, several licensing pools (e.g. MPEG) publish their licensing agreements online. [201]

Should the party seeking protection fail to establish that it possesses confidential business information needing protection, full access to the court files must be granted to the intervener upon request, irrespective of whether the latter signs an NDA or not. [202] Conversely, if the existence of confidential business information is established, the intervener’s right to inspect the court files can be limited only to non-confidential information, as long as the intervener refuses to enter into an NDA with the party seeking protection of its confidentiality interests. [193]

In case that a party which has signed an NDA breaches its obligations under this agreement or “backs out” of the NDA, the party relying on the protection of its confidentiality interests can again limit its (future) submissions of facts in the proceedings to non-confidential information. [203] In other words, in terms of detail, the party must again not present information going beyond “merely indicative observations”. [203] Whether a party has “backed out“ of an NDA is a question of fact which has to be decided on a case-by-case basis. [204] For this, it is required that the party’s behaviour has caused a high risk of a breach of confidentiality. [204] For instance, this could be the case, when legal arguments brought by the party against the validity of the NDA are not reasonable, but rather serve as a pretext. [204]

• [186] Higher District Court of Düsseldorf, judgement dated 25 April 2018, Case No. I-2 W 8/18, para. 26
• [187] Ibid, para. 26
• [188] Ibid, para. 32
• [189] Ibid, para. 35
• [190] Ibid, para. 2
• [191] Ibid, para. 27
• [192] Ibid, para. 36 et seq
• [193] Ibid, para. 17
• [194] Ibid, paras 11 and 14
• [195] Ibid, para. 11
• [196] Ibid, para. 13
• [197] Ibid, para. 13
• [198] Ibid, para. 15
• [199] Ibid, para. 15 et seq
• [200] Ibid, para. 23
• [201] Ibid, para. 24
• [202] Ibid, para. 16
• [203] Ibid, para. 20
• [204] Ibid, para. 21

Unwired Planet v Huawei

22 三月 2019 - Case No. I-2 U 31/16

A. Facts

The Claimant, Unwired Planet International Limited, acquired patents relevant to the 2G (GSM) and 3G (UMTS) wireless telecommunications standards developed by the European Telecommunications Standards Institute (ETSI).

The previous holder of the patents in question, Telefonaktiebolaget LM Ericsson (Ericsson), had made an undertaking towards ETSI to grant users access to its patents should they become essential to a standard (Standard Essential Patents or SEPs) on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

The Defendants, China-based Huawei Technologies Co. Ltd (Huawei China) and its German affiliate Huawei Technologies Deutschland GmbH, offer for sale and sell devices in Germany complying with the 2G and 3G standards.

In March 2014, the Claimant brought an action against the Defendants before the District Court (Landgericht) of Düsseldorf (District Court) based on one of its SEPs, asking for a declaratory judgement recognising the Defendants’ liability for damages on the merits, as well as information and the rendering of accounts [205] . At the same time, the Claimant also initiated infringement proceedings against the Defendants in the UK (UK proceedings). During the course of the UK proceedings, the parties made certain licensing offers. However, an agreement was not reached.

By judgment dated 19th January 2016, the District Court found that the Defendants infringed the patent in suit, recognised the Defendant’s liability for damages on the merits and ordered the Defendants to render accounts to the Claimant [206] . The Defendants appealed the District Court’s ruling.

With the present judgment, the Higher District Court (Oberlandesgericht) of Düsseldorf (Court), basically, upheld the decision of the District Court. However, following a partial withdrawal of claims by the Claimant, the Court limited the Defendants’ obligation to render accounts by excluding information about production costs (broken down by single cost factors) and realised profits [207] .

The Court allowed for an appeal on points of law before the Federal Court of Justice (Bundesgerichtshof). The parties appealed the present decision.

B. Court’s reasoning

The Court confirmed the District Court’s finding that the Defendants had infringed the patent in suit by offering for sale and selling standard-compliant products in Germany [208] .

The Court also agreed with the District Court’s finding that the Claimant was entitled to assert claims against the Defendants: in its view, the patent in suit had been validly transferred to the Claimant [209] .

Transfer of SEPs

The Defendants had argued that the agreements underlying the transfer of said SEP to the Claimant had several flaws, which the District Court had not evaluated properly. In a lengthy reasoning, the Court dismissed this argument and confirmed the validity of the agreements in question [210] .

Besides that, the Defendants had claimed that the relevant agreements were void from an antitrust perspective, because they violated Articles 101 and 102 of the Treaty on the Functioning of the European Union (TFEU). The Court rejected these claims as well.

In the Court’s eyes, the – repeated – transfer of a SEP does not constitute an abuse of market power in violation of Article 102 TFEU [211] , since the FRAND undertaking, which – according to the Court – irrevocably limits the exclusion rights arising from a patent ‘in rem’ (‘dinglich’) [212] , is directly and indispensably binding for the new patent holder (irrespective of any contractual obligation assumed by the latter) [213] . Due to the ‘automatic’ transfer of the FRAND undertaking, there is no reason for prohibiting the transfer of SEPs or imposing limitations regarding to whom the SEP is assigned to; insofar, the patent holder has a free choice [214] .

Furthermore, the Court found that the transfer of the SEP in suit to the Claimant did not violate Article 101 TFEU [215] . Reciprocal agreements, as the agreements underlying the transfer of said patent, per se do not violate Article 101 TFEU, unless they contain side agreements which could impede competition [216] . According to the Court, this was not the case here. In this context, the Court explained that the fact that Ericsson had transferred only a part of its portfolio to the Claimant could not have any anti-competitive effect in terms of Article 101 TFEU [217] . Reason for this is that the FRAND-undertaking, to which both Ericsson and the Claimant are bound, sets the upper limit for the financial or other kind of burden from the licence that can be imposed on any licensee with respect to the entire patent portfolio [217] .

FRAND-undertaking

Having taken the view that the FRAND-undertaking is ‘automatically’ transferred to the new SEP holder, the Court suggested that it is binding for the latter not only ‘on the merits’ (‘dem Grunde nach’), but also in terms of ‘amount and content’ (‘der Höhe und dem Inhalt nach’) [218] . In other words: the new patent holder is not only – generally – obliged to offer access to the SEP on FRAND terms, it is, moreover, bound to the actual licensing practice of the previous patent holder [218] . The Court found that this is needed for ensuring that the SEP holder will not exempt itself of its FRAND commitment – especially the non-discrimination obligation – by transferring the SEP to a third party [219] .

Existing licensing agreements / Confidentiality

Accordingly, the Court held that existing licensing agreements of the previous patent holder (which have not expired yet) need to be considered for the assessment of the non-discriminatory character of licensing offers made by the new SEP holder [220] . Consequently, in the Court’s view, the SEP holder’s FRAND undertaking obliges the latter to provide its successor with information regarding to the content of licensing agreements which it had concluded with third parties [220] .

To be able to establish the non-discriminatory character of its licensing offer, the new SEP holder needs to make sure that it will be able to refer to and present licensing agreements of the prior SEP holder, particularly in court proceedings [221] . An exception could be made only when presenting such agreements would violate contractual confidentiality obligations. For this, the content of relevant confidentiality clauses must be presented in detail in trial, in order to allow an assessment of the extent of the patent holder’s obligations [222] . In addition, the party bound to respective clauses must demonstrate that it cannot release itself from its confidentiality obligations, by showing that all existing licensees have refused – upon request – to waive their rights arising from each clause in question [222] . Notwithstanding this, the Court expressed the view that agreeing to comprehensive confidentiality clauses will, as a rule, bar the SEP holder (and/or its successor) from invoking confidentiality with respect to existing licences in pending court proceedings: in this case, the refusal to present licences cannot be justified, since the patent holder acted culpably by agreeing to confidentiality with other licensees, regardless of its FRAND-obligation to provide information to its successor with respect to the licensing agreements it has signed [222] . Its unjustified refusal to present existing licences will, moreover, also affect the position of the new patent holder in trial (leading potentially to a dismissal of its claims for lack of evidence of the FRAND-conformity of its licensing offer) [222] .

In this context, the Court noted that presenting existing licensing agreements with third parties in trial does not raise antitrust concerns (especially under Article 101 TFEU) [223] . According to the Court, the fact that business secrets will be disclosed to potential competitors of the existing licensees is not harmful from an antitrust perspective, since measures to protect confidentiality in trial are available [223] . In particular, the addressee of confidential information is obliged to sign a Non-Disclosure Agreement (NDA), if the holder of such information (a) concretely explains why this information constitutes a business secret, (b) presents in detail which measures were taken so far for securing confidentiality with respect to the information in question, (c) demonstrates in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed and (d) also explains, with which degree of certainty the said disadvantages are expected to occur [223] . If these requirements are met, the opposing party’s refusal to sign an NDA would allow the party holding confidential information to limit its pleadings in trial to ‘general, indicative statements’ [223] . According to the Court, this was, however, not the case here.

Application of the Huawei framework

On the merits of the case, the Court made clear that the conditions established by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTE [224] (Huawei framework or obligations) apply only to claims for injunctive relief and the recall of infringing products, not to the patent holders’ claims for information, rendering of accounts and damages [225] . In particular, when deciding about the implementer’s liability for damages on the merits, courts do not have to consider whether the patent holder has met its Huawei obligations or not [226] .

This question is, however, relevant for deciding on the amount of damages owed to the patent holder. The non-compliance of the SEP holder with the Huawei framework can limit the amount of damages that it can claim to the amount of a FRAND royalty (for certain periods of time) [227] . Since the right to request the rendering of accounts serves the calculation of the amount of damages, the Court took the view that the SEP holder is barred from claiming information about production costs and/or realised profits for periods of time, in which it is not entitled to damages going beyond the FRAND royalty, because this information is not required for calculating the latter [228] .

SEP holder’s offer to the implementer

Looking at the present case, the Court held that the Claimant had not fulfilled its Huawei obligation to make a written and specific FRAND licensing offer to the Defendants [229] . In particular, in the offers made the Claimant failed to adequately specify both the calculation and the non-discriminatory nature of the royalties proposed [230] .

For allowing the implementer to assess the non-discriminatory character of the SEP holder’s licensing offer, the Court repeated that the latter is obliged to disclose whether other licensees exist and, if so, to which conditions they have been licensed [231] . This obligation extends also to licensing agreements concluded by the previous patent holder(s) [231] . Only agreements that have expired or have been terminated do not need to be considered in this respect [232] . As a result, the Claimant should have referred to both the licences covering the SEP in suit that it had concluded with third parties after the transfer of the patent, and to all licences, which Ericsson had concluded with licensees prior to the transfer of said patent and were still in force, when the Claimant made the respective licensing offer to the Defendants [233] .

The Court took the view that, prior to granting the very first FRAND licence, the SEP holder ought to select a specific ‘licensing concept’. This ‘concept’ is ‘legally binding’ for the future licensing conduct of the SEP holder and potential successors. In other words: the licensing conditions established by the first FRAND licence granted outline the leeway available to the SEP holder for future licensing negotiations [234] . This is also the case, when the royalties agreed for the first licence lie at the lower end of the FRAND scale available to the patent holder [235] . Accordingly, any deviation from the ‘licensing concept’ is allowed only and to the extent that (existing and new) licensees are not discriminated through less favourable conditions [234] .

The Court allowed SEP holders to select a new ‘licensing concept’ (within the available FRAND range), provided that all licensing agreements subject to the existing ‘concept’ will expire at the same point in time [236] . In the Court’s view, this could be achieved, for instance, by agreeing with all later licensees that their licence will expire at the same time as the first FRAND licence ever granted [232] . The Court recognised that this would require substantial efforts, particularly when considerable patent portfolios are involved; this fact did not, however, speak against binding the successor to the licensing practice of the previous SEP holder [237] .

C. Other important issues

According to the Court, the fact that the UK proceedings were directed towards setting the terms of a worldwide licence between the parties, covering all SEPs held by the Claimant did not require the Court to stay its own proceedings [238] . According to Article 27 of the Brussels I Regulation, the court later seized of the matter has to stay its proceedings until the jurisdiction of the court first seized of the case has been settled. The Court saw, however, no indication that the UK proceedings (had ever) concerned the claims asserted in the proceedings brought before it (claims limited to Germany) [238] .

Besides that, the Court confirmed that German courts have international jurisdiction for the claims brought against Huawei China [239] . If infringing products are offered over the internet, the international jurisdiction of German courts is established, when German patent rights are being affected and the website can be accessed in Germany [239] .

• [205] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 32 (cited by www.nrwe.de).
• [206] Ibid, para. 41. See District Court of Duesseldorf, judgement dated 19 January 2016, Case No. 4b O 49/14.
• [207] Ibid, paras. 139 et seqq.
• [208] Ibid, paras. 252-387.
• [209] Ibid, paras. 161 et seqq.
• [210] Ibid, paras. 169-199.
• [211] Ibid, para. 203 et seqq.
• [212] Ibid, para. 205.
• [213] Ibid, paras 205 et seqq.
• [214] Ibid, para 209.
• [215] Ibid, paras. 235 et seqq.
• [216] Ibid, para. 236.
• [217] Ibid, para. 242.
• [218] Ibid, paras. 212 et seqq.
• [219] Ibid, para. 214.
• [220] Ibid, paras. 216 et seq.
• [221] Ibid, para. 216.
• [222] Ibid, para. 218.
• [223] Ibid, para. 220.
• [224] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
• [225] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 159 (cited by www.nrwe.de).
• [226] Ibid, para. 396.
• [227] Ibid, para. 402.
• [228] Ibid, para. 402 et seq. Insofar the Court expressly disagreed with the District Court of Mannheim, which in a previous decision had denied any limitations of the patent holder’s right to demand the rendering of accounts, in case of non-compliance with the Huawei framework; cf. District Court of Mannheim, judgment dated 10 November 2017, Case No. 7 O 28/16, GRUR-RR 2018, 273.
• [229] Ibid, paras. 406 et seqq.
• [230] Ibid, para. 411.
• [231] Ibid, para. 419.
• [232] Ibid, para. 420.
• [233] Ibid, para. 423.
• [234] Ibid, paras. 413 et seq.
• [235] Ibid, para. 413.
• [236] Ibid, paras. 414 and 420.
• [237] Ibid, para. 421.
• [238] Ibid, para. 144.
• [239] Ibid, paras. 153 et seqq.

飞利浦(Philips) v TCT

12 五月 2022 - Case No. 2 U 13/21

A. 事实

原告飞利浦（Philips）拥有被声明为对高级音频编码 (AAC) 标准必要的专利。AAC 标准是谷歌移动服务 (GMS) 认证要求的一部分。使用适用于智能手机和平板电脑的谷歌应用程序需要GMS 认证。

飞利浦已向相关标准制定组织(SDO) ^[1]承诺以公平、合理和非歧视 (FRAND) 的条款和条件使实施人能够使用标准必要专利(SEPs)。飞利浦加入了由Via Licensing Corporation（Via Licensing，对应的为 Via Licensing专利池）管理的涵盖 AAC 相关的标准必要专利的专利池。

被告是总部设在中国的TCT集团（TCT）的德国和法国子公司。TCT 在全球（包括德国）生产和销售实施AAC 标准的产品。2005 年，TCT 与 Via Licensing pool 签署了 AAC 许可，该许可于2007 年 3 月终止。

2016 年 12 月，飞利浦通知TCT其侵犯了飞利浦的专利权的情况，并表示一般情况下，有可能签署双边许可协议。TCT 没有回应。2017 年 4 月，TCT 收到了来自 Via Licensing的专利池许可要约，但TCT也没有做出任何反应。

2019 年，飞利浦在杜塞尔多夫地方法院（地区法院）对 TCT 提起诉讼，除其他诉请外，还主张禁令救济。2020 年 3 月，TCT 宣布准备从飞利浦获得FRAND 条件的许可。在随后于2020年5月和7月发送的两封信中，TCT 要求飞利浦提供（双边）许可要约。

2020年7月，飞利浦回复TCT，对TCT签署许可的意愿表示怀疑，并将TCT介绍给Via Licensing专利池。飞利浦补充说，没有理由向 TCT 提供双边许可要约。2020年8月，TCT表示将就专利池许可联系 Via Licensing，但TCT重申需要飞利浦的双边许可要约。2020年10月，飞利浦回应称，它认为基于FRAND原则的专利池许可要约已经足够。2020年11月，TCT再次坚持要求飞利浦提供双边许可要约。2021年3月15日，TCT再次提出同样的要求，但飞利浦于 2021 年 3 月 18 日拒绝了。

2021年4月1日，TCT向飞利浦提出（反）要约。2021年4月9日，飞利浦在地区法院对该案件进行口审期间拒绝了这一要约。

2021年5月11日，地区法院发出了针对TCT的禁令^[2]。TCT 提出上诉。根据目前的判决，杜塞尔多夫高等地方法院（法院）维持了禁令^[3] （引自www.nrwe.de）。

B. 法院的说理

法院确认了涉案专利的侵权事实^[4]。

此外，法院驳回了 TCT 提出的所谓“FRAND 抗辩”^[5]。TCT辩称，通过提起诉讼，飞利浦滥用了其市场支配地位，违反了《欧盟运作条约》(TFEU) 第 102 条，因此不应获得禁令。

没有滥用市场支配地位

法院认为，飞利浦在涉案专利上拥有TFEU 第102条定义的市场支配地位^[6]。市场支配地位本身并非源于专利的排他性权利；拥有市场支配地位必须满足几个因素^[7]。决定相关评估的是相关市场的认定。对于标准必要专利，通常存在一个单独的许可市场，前提是——从技术角度来看——实施SDO制定的标准（或事实上的标准）必须使用该专利，实施的方式通常不可能在不失去对下游产品市场重要的功能的情况下绕过专利^[8]。此外，应该不可能用产品的不同技术设计来替代专利和相应标准规范的教导^[9]。在此背景下，法院认定飞利浦具有市场支配地位^[10]。涉案专利必要的AAC标准是Android生态系统中谷歌服务的兼容性要求。根据法院成员的看法，不支持谷歌服务的手机和平板电脑是不能销售的^[11]。一项研究表明 ：70% 的用户不会购买与谷歌服务不兼容的手机，根据法院的说法，该研究强化了以上结论^[12]。此外，法院指出，鉴于安卓和 iOS 这两个主导平台的市场份额（超过99%），不能指望手机和平板电脑制造商开发自己的操作系统以规避 AAC 标准^[13]。然而话虽如此，法院强调，飞利浦并未滥用其市场支配地位^[14]。

在如下情况下，滥用其市场支配地位会发生：当对相关 SDO 作出 FRAND 承诺的专利权人 (a) 拒绝许可有意愿的实施人，并针对后者提起诉讼请求禁令（和/或召回和/或销毁侵权产品），或者 (b) 没有做出足够的努力让有意愿的实施人以合理的条件签署许可协议^[15]。在法院看来，本案并没有上述情况，因为TCT一直不愿意获得 FRAND 许可^[16]。

侵权通知

法院同意地方法院的观点，即飞利浦履行了向 TCT 提供充分的侵权通知的义务^[17]。由于该点不在上诉范围内，法院参考一审判决的相关分析^[18]。

意愿

关于 TCT 的行为，法院得出结论认为其缺乏签署 FRAND 许可的意愿^[19]。

关于“意愿”的概念，法院解释说应该区分“一般”意愿和“特定”意愿^[20]。“一般”意愿是指侵权人获得 FRAND 许可的基本意愿，（主要）通过向专利权人提出的“许可请求”来表达^[21]。另一方面，“特定”意愿是指侵权人愿意接受专利权人的特定的且已被法院认定为FRAND的许可要约^[22]。缺乏“一般”意愿会导致被颁布禁令；在这种情况下，专利权人的许可要约是否是 FRAND 并不相关（因此不应由法院审查）^[23]。相反，只有当法院审查了专利权人的提议并确定它是 FRAND 时，缺乏“特定”意愿会对侵权人产生负面影响^[24]。如果不是，则缺少的“特定”意愿没有影响^[25]。

据法院称，TCT 未能表现出“一般”意愿^[26]。法院强调，TCT 没有提出充分的“许可请求”^[27]。相应的请求可以采取“一揽子”和“非正式”声明的形式，甚至可以“含蓄地”提出^[28]。但是，实施人必须向专利权人明确表明获得许可的“一般”意图；根据法院的说法，仅仅有显然不是出于签署许可的真诚意愿，而是为了拖延目的的“口头上的服务”是不够的^[29]。关于是否应考虑延迟提出的“许可请求”的问题，法院解释说，如果该请求附有清楚表明侵权人一方的“内在转变”远离了以前拖延行为的事实，则可以考虑^[30]。提出（反）要约可以表明这种“转变”，除非该要约在内容方面是“非 FRAND”以至于能明确表明侵权人并未放弃先前采用的拖延策略^[31]。

在具体案例中，法院首先批评了近十年来（从2007年专利池许可终止到2016年12月飞利浦通知函之间）TCT没有向飞利浦或Via Licensing表示其愿意签署新的许可协议或（没有许可）TCT不再使用 AAC 标准的意愿^[32]。此外，法院认为，TCT 既未回应飞利浦的通知函，也未回应2017年4月从 Via Licensing 收到的要约，这是一种没意愿的表现^[33]。

TCT在2020年3月、5月和7月（即在2016年12月收到侵权通知后三年多，并且仅在诉讼被提起后）向飞利浦发送的信函无法弥补这种意愿的缺失^[34]。法院认为，上述信函并未表达TCT行为的“转变”，而是服务于该时间点之前应用的拖延策略的延续^[35]。三年多之后，一个“意愿”的被许可人——与 TCT 不同——应该已经提供了双边许可优于专利池许可的具体原因^[36]。这尤其适用于这里的情况，即：侵权人（分别是其母公司）之前在未质疑许可模式的情况下签署了专利池许可^[37]。

更重要的是，法院认为 TCT 坚持接受飞利浦的双边许可要约是进一步试图“阻止”飞利浦行使权利（而不是认真表示愿意签署许可的声明）^[38]。法院推断认为，TCT不能仅凭飞利浦准备与第三方签署双边协议这一无可争议的事实来证明TCT的这种坚持是合理的^[39]。法院认为，专利权人原则上没有义务向实施人提供除专利池许可之外的双边许可^[40]。

法院进一步驳回了TCT如下观点：飞利浦拒绝向其提供双边许可是歧视性的^[41]。法院强调，如果任一类型许可都可以基于客观标准被授予，标准必要专利权人可以选择同时提供两种选择的模型^[42]。飞利浦仅在特殊情况下提供双边许可，即当实施人已与其他相关标准必要专利权人签署了双边协议时，同时该双边许可还涵盖 AAC 标准以外的其他标准，或者当专利池许可因其他原因被证明不合理时^[43]。法院认为这种做法本身不会引起任何担忧^[44]。

此外，法院指出，飞利浦在特殊情况下授予双边许可的意愿并不能确立TCT也可被授予这种许可的一般主张^[45]。TCT本应该根据飞利浦的许可模式，证明在本案中专利池许可不合理的原因，但TCT没有这样做^[46]。法院认为，TCT声称双边协议将“充分满足”双方的利益只不过是一句“空话”，因为 TCT 并未提及对此的任何理由^[47]。此外，法院不相信TCT遵循了签署双边标准必要专利许可的“一般商业惯例”^[48]。法院指出，TCT没有生成与另一专利权人签署的涵盖 AAC 标准的一个双边许可协议^[49]。法院认为，涉及不同产品领域（比如电视机）的 AAC 标准协议与该案无关；TCT 和飞利浦参与了关于其他（无线）标准的专利组合的双边谈判，这也没有什么影响^[50]。

除此之外，法院推断TCT的反要约不是合适的谈判基础，而是明确表明其继续打算推迟审判和许可讨论的意图^[51]。一方面，法院无法确定TCT仅在侵权诉讼的最后阶段才提出要约的原因，这没允许飞利浦或地方法院按要求深入处理要约^[52]。另一方面，法院认为TCT的要约在内容上也不充分^[53]。该要约提供了固定支付许可费，这是根据第三方商业服务提供商提供的2020年的销售数据计算得出的。法院怀疑使用第三方数据代替实际销售数据是否为市场上的普遍做法，因为TCT没有就此提供具体诉状^[54]。此外，法院批评了平板电脑和所谓的“功能”手机（即旧型号）都没有被计算到固定支付许可费内的事实，尽管它们实施了AAC标准^[55]。最后，TCT将2016年至2020 年期间的过去销售额排除在许可费计算之外，法院也不满意^[56]。法院认为，在多年的侵权和拒绝签署协议之后，TCT显然不能期望获得飞利浦过去销售的“免费许可”^[57]。

标准必要专利权人的要约

在已确定没有足够的“许可请求”的情况下，TCT 缺乏获得 FRAND 许可的“一般意愿”，法院认定飞利浦没有义务向 TCT 提供要约^[58]。根据上述情况，法院认为无需处理 2017年4月起 Via Licensing 的专利池许可要约的FRAND 合规性^[59]。

^[1] 国际标准化组织(ISO)和国际电工委员会 (IEC)。

^[2] Philips v TCT, District Court of Düsseldorf, judgment dated 11 May 2021, Case No. 4b O 83/19.

^[3]  Philips v TCT, Higher District Court of Düsseldorf, judgment dated 12 May 2022, Case No. 2 U 13/21.

^[4] 同上注，段 168-250，法院依据的是德国联邦专利法院（Bundespatentgericht）在此期间确认的专利权利要求的修正措辞，第5段，第164段及以下，以及第249段。

^[5] 同上注，第252段及以下。

^[6] 同上注，第254段及以下。

^[7] 同上注，第257段。

^[8] 同上注，第258段。

^[9] 同上注，第258段。

^[10] 同上注，第261段。

^[11] 同上注，第263段。

^[12] 同上注，第263段。

^[13] 同上注，第265段。

^[14] 同上注，第269段及以下。

^[15] 同上注，第273段。法院指出，专利权人在谈判前或谈判开始时提出的要约本身原则上不能构成对市场支配地位的滥用，即使潜在条款可能是不公平或歧视性的，以防万一这些条款被双方同意，第274段。

^[16] 同上注，第278段。

^[17] 同上注，第276段。

^[18] 同上注，第276段。

^[19] 同上注，第278段。

^[20] 同上注，第338段。

^[21] 同上注，第338段。

^[22] 同上注，第338段。

^[23] 同上注，第338段。

^[24] 同上注，第338段。

^[25] 同上注，第338段。

^[26] 同上注，第339段。

^[27] 同上注，第278段。

^[28] 同上注，第280段。

^[29] 同上注，第280段。

^[30] 同上注，第280段。

^[31] 同上注，第280段。

^[32] 同上注，第282段。

^[33] 同上注，第284段。

^[34] 同上注，第286段。

^[35] 同上注，第286和288段及以下。

^[36] 同上注，第288段。

^[37] 同上注，第288段。

^[38] 同上注，第290和339段。

^[39] 同上注，第292段及以下。

^[40] 同上注，第294段。

^[41] 同上注，第296段及以下。

^[42] 同上注，第296段。

^[43] 同上注，第299段。

^[44] 同上注，第298-300段。

^[45] 同上注，第302段。

^[46] 同上注，第302段。

^[47] 同上注，第310段。

^[48] 同上注，第312段。

^[49] 同上注，第312段。

^[50] 同上注，第312段。

^[51] 同上注，第318和333段。

^[52] 同上注，第320段。

^[53] 同上注，第322段。

^[54] 同上注，第326段。

^[55] 同上注，第327段。

^[56] 同上注，第329段。

^[57] 同上注，第329段。

^[58] 同上注，第335段。

^[59] 同上注，第335段。

Cases from OLG Karlsruhe - Higher Regional Court

Saint Lawrence v Deutsche Telekom

23 四月 2015 - Case No. 6 U 44/15

A. Background

1. Facts

The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 2 O 103/14, 10 March 2015). The background was the alleged infringement of patent EP 1.125.276.B1, which covered technology for coding broadband signals which is essential for the ETSI AMR-WB standard.

The defendant was a major German telecommunications company (Deutsche Telekom). Intervenor 1 and intervenor 2 were smartphone manufacturers (HTC and others) whose products used the AMR-WB standard. These phones were supplied to the defendant and then sold to consumers as part of the defendant’s contract plans. [240] The claimant, a German non-practicing entity, Saint Lawrence, became owner of the respective SEP in August 2014. [241] The previous owner of the SEP had declared its willingness to grant licenses on FRAND conditions several times. [242] The defendant had shown no interest in such a license. [242] After commencing infringement proceedings in the District Court of Mannheim, the claimant contacted intervenor 2 for the first time. Intervenor 2 signed a confidentiality agreement on 23 February 2015, rejected an initial offer made by the claimant, and made a counter offer. On 25 March 2015 (after the decision of the District Court of Mannheim), the claimant made another offer, which intervenor 2 also rejected.

2. Ensuing Decisions

On 10 March 2015, the District Court of Mannheim granted an injunction. Inter alia, it held that the defendant had not attempted to enter into negotiations for a license. [242] In particular, the court considered it irrelevant that intervenor 2 might have demonstrated its willingness to enter into a license on FRAND conditions. In the eyes of the court, the relevant issue was whether the claimant had a right to demand an injunction to stop the defendant using the patent. Even if an intervenor could successfully raise a competition law based defence relying on the Federal Court of Justice decision Orange Book Standard, [243] this was of no relevance for the relationship between the claimant and the defendant. [244]

The defendant and intervenor 1 applied to the Higher Regional Court of Karlsruhe to stay the execution of the District Court decision. Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned on the basis that it appears manifestly erroneous. [245] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [245]

The Higher Regional Court of Karlsruhe granted the defendant’s application to stay the execution regarding the smartphones manufactured by intervenor 2, but dismissed the application made by intervenor 1. [246] It held that it would be sufficient for a successful competition law based defence that an intervenor is willing to enter into a license agreement. [247] Since the District Court of Mannheim had dismissed the intervenors’ willingness as irrelevant for the case, the resulting decision was manifestly erroneous. [247] Significantly, the Higher Regional Court required the defendant to make a deposit of EUR 5 million into the court to safeguard the claimant’s financial interests.

B. Court’s Reasoning

Importantly, the decision was handed down in April 2015 and thus several months prior to the CJEU Huawei/ZTE ruling. The Higher Regional Court stated that the final opinion of Advocate General Wathelet [248] was the legal basis of its decision. [249]

The Higher Regional Court reasoned that a patent holder could seek injunction orders against any business in the supply chain of the product that infringes the respective SEP – which includes manufacturers (such as the intervenors) and distributors (such as the defendant). In principle, according to the Federal Court of Justice decision Tripp-Trapp-Stuhl,Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06. the decision against whom to bring proceedings lies with the patent holder. [251] However, according to the Higher Regional Court, this was not the issue in this case. The issue was whether the patent holder was abusing its dominant market position by commencing proceedings against the defendant. The only relevant question is whether this is conduct that deviates from ‘normal’ competition behaviour, being detrimental to consumer interests. If the SEP holder has made a FRAND declaration in the past and is typically entering into license agreements with manufacturers, then the court could see no objective reason why the SEP holder would only bring proceedings against the distributor. [251] In contrast, there is a reasonable expectation that the SEP holder makes an offer to the manufacturer of the relevant product first. Bringing proceedings against distributors would put significant pressure on the manufacturer. This can distort the license negotiation because distributors will have little interest in legal arguments with patent holders. If a patent holder is a dominant undertaking, exerting such pressure constitutes an abuse of market power. [251] In addition, bringing proceedings against distributors whilst granting licenses to manufacturers in other cases is inconsistent behaviour. [251]

C. Other Important Issues

The Higher Regional Court pointed out that the claimant was a non-practising entity. Accordingly, by exercising its patent rights it is not protecting its own market share in the market for smartphones. [252] In contrast, it is in the claimant’s objective interest that as many mobile phones using its SEP from numerous manufacturers are present in this market. Moreover, it is unlikely that a stay of execution would jeopardise the claimant’s financial interests. A deposit made by the defendant into the court should be a sufficient safeguard. [252] On the other hand, an execution of the decision at first instance would cause considerable harm to the defendant. As a telecommunications company, the defendant relies on a comprehensive portfolio of mobile phones that it can offer to consumers. [253] Removing the devices manufactured by intervenor 2 from the portfolio would be a significant blow to the defendant’s core business. Moreover, a removal would also be detrimental for intervenor 2 because a major distribution channel for its smartphones would become inaccessible. [254] As a result, the defendant’s interest in staying the execution outweigh the interests of the claimant.

• [240] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 2.
• [241] Landgericht Mannheim, 10 March 2015, 2 O 103/14, para 27.
• [242] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 3.
• [243] Bundesgerichtshof, 6 May 2015, KZR 39/06.
• [244] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 6.
• [245] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 17.
• [246] OLG Karlsruhe, 8 September 2016, 6 U 58/16, para 38. After lodging the application, the claimant and intervenor 1 had reached a settlement agreement. As a result, intervenor 1 had withdrawn its appeal to the Higher Regional Court of Karlsruhe. Thus, in the eyes of the court, no stay of execution was required.
• [247] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 19.
• [248] GA Wathelet, 20 November 2014, C-170/13.
• [249] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 20.
• [250] Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06.
• [251] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 21.
• [252] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 25.
• [253] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 26.
• [254] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 27.

Pioneer v Acer

31 五月 2016 - Case No. 6 U 55/16

1. Facts
   The proceedings concerned the subsequent application of Defendant in Case No. 7 O 96/14 seeking to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. The facts underlying the two decisions are therefore the same: Claimant owns the patent EP 1 267348, allegedly essential to the DVD standard and administered with regard to its licensing by the patent pool “A”. Early in 2013 “A” and the Defendant’s group parent were in contact regarding “A” ’s DVD licensing activity, but no concrete notice of infringement was made and no licensing negotiations ensued. After having been sued for patent infringement Defendant submitted, on 6 October 2014, an offer to license the patent-in-suit for Germany at FRAND conditions, with the exact royalty rate to be determined by Claimant pursuant to § 315 German Civil Code. Furthermore, Defendant declared to be willing to negotiate a portfolio license for all German patents of Claimant and, in case the negotiations were to fail, to have the licensing conditions determined by a state court or arbitration tribunal. In order to indicate what Defendant considered to be a FRAND royalty rate Defendant submitted an expert opinion. As of 28 November 2014, Claimant proposed to modify the conditions to the effect that Defendant’s group parent was supposed to take a worldwide portfolio license comprising all Claimant’s portfolio patents administered by “A”. Claimant made a (perhaps: additional) FRAND declaration with regard to the patent and informed Defendant thereof in December 2014. After Defendant had rejected this offer, Claimant offered, on 13 March and 13 April 2015, a worldwide portfolio license to Defendant’s group parent company. To the offer were added claim charts for two pool patents, as well as information on how Claimant deduced the royalty from the overall royalty rates of the “A”-patent pool. On 5 May 2015, Defendant’s group parent requested claim charts regarding all patents to be licensed as well as further information on royalty calculation. Claimant sent, on 7 August 2015, claim charts for five additional patents declaring its willingness to provide further information as soon as constructive technical discussions would be taken up. In a filing to the court as of 20 November 2015, Claimant explained its royalty calculation in greater detail and submitted an expert opinion on the issue.
   Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous.
2. Court’s reasoning
   1. Applicability of Huawei to transitory cases
      The court tentatively confirms that, in transitory cases, it is sufficient if the SEP proprietor fulfills its Huawei duties by way of the statement of claims or even after the lawsuit was initiated. [255] As to the reasons for this finding, the court is not convinced by the considerations of the lower court (cf. above LG Mannheim, 8 January 2016 - 7 O 96/14), in particular because the ECJ has not stated that actions for infringement brought prior to the Huawei decision had to comply only with the Orange Book rules of conduct and not the Huawei rules. [256] However, according to the Court, the Huawei decision deals only with the abusive bringing of an action for SEP infringement, not with the question whether such action remains abusive even after the SEP proprietor has fulfilled its conduct obligations under Huawei. [257] It appears possible that, at least in transitory cases, the continuation of an infringement action is no longer abusive where the statement of claims provided sufficient notice of the infringement, where the SEP proprietor made a Huawei-compliant licensing offer during the ongoing litigation, and where the standard implementer failed to appropriately react to this offer. Hence, the lower court’s finding on that issue was not considered manifestly erroneous.
   2. Standard of review for licensing offers
      The court did, however, find the lower court’s ruling to be manifestly erroneous with regard to the standard of review it had postulated for the SEP proprietor’s licensing offer: [258] As stated clearly by the ECJ, the SEP proprietor has to make a licensing offer that qualifies as FRAND—not, for instance, slightly above FRAND—and it is for the respective court to assess the FRAND quality of the offer. A reduced standard of review, consisting merely in a summary assessment of whether the offer is evidently non-FRAND, has no basis in Huawei. Even if the SEP proprietor were to be granted much leeway in determining the licensing conditions—a question which the court reserves for its decision on the merits of the appeal—the conditions would still have to remain within the FRAND range. Since the lower court’s conclusion that Claimant had complied with the Huawei rules of conduct while Defendant had violated them was reached by applying the reduced standard of review the court decided to partly [259] suspend the enforcement of the first instance-ruling.

• [255] Case No. 6 U 55/16, para. 24-28
• [256] Case No. 6 U 55/16, para. 26
• [257] Case No. 6 U 55/16, para. 27
• [258] Case No. 6 U 55/16, para. 29-36
• [259] The reasons why the Court limited the suspension to the recall and destruction of infringing products are of no interest here, cf. OLG Karlsruhe, 31 May 2016 – Case No. 6 U 55/16, para. 37 et seq.

Philips v Acer

29 八月 2016 - Case No. 6 U 57/16

1. Facts
   
   1. Decision First Instance
      The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). This case first instance concerned the infringement of the patent EP 0.745.307.B3, which covered a technology for subtitles in the DVD standard. The defendant marketed computers that use a DVD-software. The claimant, which commercialised the patent in question through a patent pool, [260] had made a FRAND-declaration to the “DVD-Forum” which administers the DVD standard. [261]
      On 30 May 2014, the defendant offered to enter into a license agreement for patent in question and respective products marketed in Germany. The license fees were based on an expert opinion which the defendant had commissioned. Alternatively, the defendant suggested that the license fees could be determined by the claimant in good faith pursuant to sec 315 of the German Civil Code. [262] The defendant made a deposit with the Düsseldorf Magistrates Court which covered use of the patent in Germany and rendered account to the claimant. On 25 July 2014, the claimant sent an amended counter-offer, which was rejected by the defendant. [263] On 13 March 2015, the claimant made another license offer for a world-wide portfolio license, giving details about the calculation of the license fee. [264] The defendant requested claim charts and rejected the calculation details as insufficient. [265]
      The District Court of Mannheim ordered the defendant to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [266] to calculate the amount of compensation it owed. [267]
   2. The Ensuing Application for Stay of Execution
      Under the German rules of civil procedure, the Higher Regional Court can only grant a stay of execution if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [268] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [268]
      The applicant sought to stay the execution of the order of the District Court of Mannheim, [269] which required it to render full account. Instead, the applicant contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [270] The Higher Regional Court of Karlsruhe dismissed the application. [268] It held that the decision of the District Court of Mannheim was not manifestly erroneous. Further, the applicant had not provided sufficient evidence that particularly severe harm would be caused if the decision of the District Court of Mannheim were executed. [271]
2. Court’s reasoning
   
   Most aspects of the decision do not directly relate to the Huawei ruling. However, the court held that the decision of the District Court of Mannheim was not manifestly erroneous in ordering the applicant to render accounts in full detail. It held that the District Court of Mannheim had correctly decided that the Huawei ruling did not contain any restrictions of the SEP holder’s information claims. [272] In the eyes of the District Court of Mannheim, the CJEU had not referred to means of calculating the amount of compensation owed - it had only clarified that Art. 102 TFEU does not prevent the SEP owner from demanding the alleged infringer to render accounts for use of the patent in the past. [272] Accordingly, the District Court of Mannheim considered that competition law, and in particular, the existence of a FRAND declaration, are not relevant considerations for compensation and information claims. [273] In the eyes of the court, this view is not manifestly erroneous.
3. Other important issues
   The claimant commercialised the patent in question through a patent pool. This fact itself, according to the court, does not mean that the applicant’s interests outweigh the interests of the claimant. [274] In the past, the court had given special consideration to whether the claimant’s interests were primarily focused on receiving royalties (Higher Regional Court of Karlsruhe, 23 April 2015, Case No. 6 U 44/15; Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). However, the court reasoned, in contrast to the case at issue, that the aforementioned decisions had concerned cases in which it was likely that the decision at first instance would not be upheld on appeal. [274]
   The court held that the decision at first instance was not manifestly erroneous in its interpretation of Art. 101 TFEU (anticompetitive conduct). The District Court of Mannheim had been of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. [275] If a standardisation agreement breached Art. 101 TFEU, the standard would be void. The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts if the commencement of patent infringement proceedings by an SEP holder constituted a breach of Art. 101 TFEU. However, even if that were the case, this defence would only be relevant against injunctions, but not in respect of compensation and rendering accounts claims. [276]

• [260] Case No. 6 U 57/16, para 5
• [261] Case No. 6 U 57/16, para 8
• [262] Case No. 6 U 57/16, para 10
• [263] Case No. 6 U 57/16, para 11
• [264] Case No. 6 U 57/16, para 12
• [265] Case No. 6 U 57/16, para 13
• [266] Case No. 6 U 57/16, paras 15-19
• [267] The decision omits further details on the decision first instance because they are not relevant for the application, see OLG Karlsruhe, 29 August 2016, Case No. 6 U 57/16, para 14
• [268] Case No. 6 U 57/16, para 25
• [269] Case No. 6 U 57/16, para 23
• [270] Case No. 6 U 57/16, para 23, 31
• [271] Case No. 6 U 57/16, para 26
• [272] Case No. 6 U 57/16, para 31
• [273] Case No. 6 U 57/16, para 32, 33
• [274] Case No. 6 U 57/16, para 43
• [275] Case No. 6 U 57/16, para 28
• [276] Case No. 6 U 57/16, para 30

OLG Karlsruhe

8 九月 2016 - Case No. 6 U 58/16

1. Facts
   
   1. Decision First Instance
      The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). Case No. 7 O 23/14 related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard. The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used a DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. [277] In early 2013, the patent pool approached the defendant’s mother company about the use of the patent, but without making a license offer. [278]
      On 30 May 2014, the defendant offered a license agreement for the respective German patent. The defendant indicated that it was willing to enter into negotiations for a portfolio license for the claimant’s German patents. It was also willing to have a third party determine the royalties owed. [278] On 25 July 2014, the claimant suggested to change the license offer to a world-wide portfolio license. The defendant rejected and informed the claimant on 22 August 2014 of the number of respective computers they put into circulation between July 2013 and June 2014 in Germany. It also made a deposit of EUR 12.972,- with the Düsseldorf Magistrates Court.
      On 13 March 2015, the claimant made another offer for a world-wide portfolio license. On 5 May 2015, the defendant requested the relevant claim charts and further details on how the license fees had been calculated. On 25 June 2015, the claimant sent the claim charts but refused to elaborate on the calculation method. Instead, the claimant suggested a meeting in which it would answer further questions. The defendant responded on 13 July 2015 that most of the claim charts lacked necessary details. In a meeting between the claimant and the defendant’s mother company on 3 September the parties were unable to come to a conclusion.
      The District Court of Mannheim granted an injunction order on 4 March 2016. [279] It held that the defendant was liable for compensation [280] and ordered it to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [281] to calculate the amount of compensation it owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels. [282]
   2. The Ensuing Application for Stay Proceedings
      Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [283] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [283]
      The applicant sought to stay the execution of two elements of the resulting court order. [284] First, the applicant challenged the order to render full account. It contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [285] Secondly, the applicant contended that the recall order was based on the District Court’s summary assessment of the offered license conditions, which was an insufficient standard of review. [286]
      The Higher Regional Court of Karlsruhe granted the application to stay the execution in respect of the order to the recall of products. [287] However, it dismissed the application in respect of the order to render accounts because the decision of the District Court of Mannheim was not manifestly erroneous. [287]
2. Court’s reasoning
   
   1. SEP Owner’s Licensing Offer
      Regarding the order to recall and remove the infringing products, the Higher Regional Court held that the District Court’s interpretation of the Huawei ruling in respect of the SEP owner’s license offer was manifestly erroneous. The Higher Regional Court reiterated its view that the Huawei ruling required a full review of the conditions of the license (see the previous decision of the Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). A reduced standard of review as applied by the District Court was not in line with the fundamentals of the Huawei ruling. The CJEU had held that the SEP owner’s refusal to grant a license on FRAND terms is the main reason why an injunction cannot be granted by an infringement court. Accordingly, the Higher Regional Court reasoned that any arguments raised by the applicant as to why an offer is not FRAND needs to be taken into consideration by the court. This requires a full review of the license offer and not just a summary review as to whether the offer is not obviously non-FRAND. [288] However, the Higher Regional Court conceded that the SEP owner has a wide discretion in determining the FRAND conditions because there might be a number of different license conditions that are FRAND. [289]
   2. Rendering Accounts and Compensation Claims
      Regarding the order to render accounts, the Higher Regional Court held that the decision of the District Court was not manifestly erroneous. The CJEU had reasoned that a court order to render accounts does not have implications as to whether products enter the market or can stay on the market. Thus, the Higher Regional Court concluded that a claim to render accounts cannot be abusive under Art. 102 TFEU. [290] Further, the Huawei ruling did not contain any restrictions in respect of the SEP holder’s information claims. [291] The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts how the amount of compensation owed is exactly calculated (and accordingly, what information the infringer must disclose to enable the SEP holder to carry out this calculation). [292] Accordingly, the order to render accounts in full detail (thus enabling the claimant to calculate the compensation owed in different ways) was not erroneous.
3. Other Important Issues
   
   The Higher Regional Court held that the District Court’s interpretation of Art. 101 TFEU (anticompetitive conduct) was not manifestly erroneous. The District Court of Mannheim had been of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. [293] The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts whether the commencement of patent infringement proceedings by an SEP holder constituted a breach of Art. 101 TFEU. However, even if the commencement did constitute a breach, this defence would only be relevant against injunctions, but not in respect of compensation and rendering of accounts claims. [294]
   In relation to the order to render accounts, the Higher Regional Court acknowledged that the information that is required for calculating the amount of compensation will generally be a trade secret. [295] It is in the applicant’s legitimate interest to keep them secret. However, the court held that this interest alone does not constitute an irreversible detriment that is so severe that the execution of the court order needs to be stayed. [295]

• [277] 6 U 58/16, para 6
• [278] 6 U 58/16, para 7
• [279] 6 U 58/16, para 12-17
• [280] 6 U 58/16, para 25
• [281] 6 U 58/16, para 18-24
• [282] 6 U 58/16, para 26-28
• [283] 6 U 58/16, para 39
• [284] 6 U 58/16, para 33
• [285] 6 U 58/16, para 45
• [286] 6 U 58/16, para 35
• [287] 6 U 58/16, para 38
• [288] 6 U 58/16, para 51
• [289] 6 U 58/16, para 52
• [290] 6 U 58/16, para 62
• [291] 6 U 58/16, para 63
• [292] 6 U 58/16, para 63-64
• [293] 6 U 58/16, para 59-60
• [294] 6 U 58/16, para 61
• [295] 6 U 58/16, para 67

Philips v Wiko

30 十月 2019 - Case No. 6 U 183/16

A. Facts

The Claimant, Philips, holds patents declared as (potentially) essential to the practice of wireless telecommunications standards (Standard Essential Patents or SEPs) developed by the European Telecommunications Standards Institute (ETSI), including SEPs reading on the UMTS and LTE standards. Philips committed towards ETSI to make its SEPs accessible to standard users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

The Defendant is the German subsidiary of the Wiko group of companies, which has its headquarters in France (Wiko). Wiko sells mobile phones implementing the LTE standard in Germany.

In October 2014, Philips informed the parent company of the Wiko group about its SEP portfolio, but did not receive a response. In July 2015, Philips shared a draft licensing agreement for its SEP portfolio as well as claim charts referring to several of its SEPs with the parent company of the Wiko group, which again did not react at all. In September 2015, Philips shared further technical details regarding its SEPs.

On 19 October 2015, Philips brought an infringement action against Wiko before the District Court of Mannheim based on one of its SEPs, requesting for injunctive relief, information and rendering of accounts, destruction and recall of infringing products from the market as well as a declaratory judgment confirming Wiko’s liability for damages on the merits.

On the next day, 20 October 2015, Wiko sent a letter to Philips, in which it declared its willingness to enter into negotiations with the latter for a licence covering ‘valuable’ patents. In August 2016, during the course of the pending infringement proceedings, Wiko made a counteroffer to Philips. Philips did not accept this offer. Subsequently, Wiko provided security to Philips for the use of its patents, calculated on basis of its counteroffer.

By judgment dated 25 November 2016 [296] , the District Court of Mannheim granted Philips’ claims almost to the full extent. Wiko appealed the District Court’s judgement. In addition, by way of a counterclaim, Wiko requested disclosure of existing licensing agreements signed by Philips with similarly situated licensees (comparable agreements).

With the present judgment [297] , the Higher District Court of Karlsruhe (Court) overturned the ruling of the District Court in part. In detail, the Court confirmed Philips’ claims for information and the rendering of accounts as well as Wiko’s liability for damages on the merits. The Court, however, rejected Philips’ claims for injunctive relief, destruction and recall of infringing products from the market.

Apart from that, the Court also rejected Wiko’s counterclaim regarding the production of comparable agreements in the proceedings.

B. Court’s reasoning

The Court confirmed that Wiko’s products infringe the patent in suit [298] .

Contrary to the view taken previously by the District Court, the Court found, however, that Article 102 of the Treaty for the Functioning of the EU (TFEU) prevents Philips from enforcing the claims for injunctive relief as well as the recall and destruction of infringing products asserted in the infringement proceedings for the time being [299] . In the Court’s eyes, Philips had failed to meet the conduct obligations established by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [300] (Huawei framework or obligations) [301] .

Huawei framework

The Court explained that SEP holder’s failure to meet its Huawei obligations will – as a rule – render an infringement action resulting in an exclusion of the implementer from a downstream market (action for injunctive relief and/or recall and destruction of products) abusive in terms of Article 102 TFEU [302] . This will, however, not be the case, when the implementer himself fails to fulfil its duties under the Huawei framework; if the implementer acts in bad faith as an ‘unwilling’ licensee, then SEP holder’s Huawei obligations are ‘suspended’ [302] . As a result, asserting the rights to injunctive relief and/or the destruction and recall of infringing products in court could then be considered as a justified reaction of the SEP holder to the implementer’s unwillingness to enter into a FRAND licence [302] .

Having said that, the Court expressed the view that the parties can remedy potential flaws in their conduct under the Huawei judgment and/or even fulfil their Huawei obligations for the first time during the course of pending infringement proceedings [303] . The Court noted that in Huawei v ZTE, the CJEU did not require that the parties fulfil all conduct obligations established prior to the initiation of court proceedings [304] . In the Court’s eyes, denying the parties such possibility is not compatible either with the general principle of proportionality known to European law, nor with the German civil procedural law, according to which courts need to consider all facts relevant for their decision-making raised in the proceedings until the end of the oral arguments [305] .

Accordingly, an infringement action that did not give rise to any antitrust concerns at the time it was filed, can be considered as abusive at a later point in time, if the situation significantly changed, e.g. the implementer fulfilled its Huawei obligations in the meantime [306] . Vice versa, an action of an abusive nature can later on be ‘corrected’, if the patent holder performs its duties under the Huawei framework during the course of the pending proceedings [306] .

In the Court’s view, a SEP holder seeking to remedy (or fulfil for the first time) obligations under the Huawei framework after the initiation of infringement proceedings must make sure that pressure-free licensing negotiations between the parties are enabled, as required by the CJEU in Huawei v ZTE [307] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [307] . The SEP holder can also propose a consensual stay of the proceedings, especially when a parallel nullity action against the patent in suit is pending before the Federal Patent Court [307] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [307] .

On the other hand, the Court pointed out that fulfilment of Huawei obligations by the implementer after the beginning of infringement proceedings does not necessarily lead to a dismissal of the claims asserted by the SEP holder [308] . Indeed, if the implementer meets its Huawei duties at a very late point in time in the proceedings (e.g. shortly before the closing of the oral arguments), the Court could eventually neglect this fact in its decision [309] . This way, delays can be avoided. In this context, the Court also made clear that the implementer is not in a position to cause a unilateral suspension of the proceedings; in contrast to the opposite case (that is cases, in which a stay of the proceedings is suggested by the claimant), the SEP holder will usually not be required to agree to a suspension of the proceedings proposed by the implementer, in order to allow pressure-free negotiations to take place [309] . Insofar, the implementer bears the risk that the fulfilment of its obligations under the Huawei framework in the course of a pending infringement trial will have no impact [309] .

Notification of infringement

Looking at the specific conduct of the parties in the present case, the Court found that Philips had fulfilled its obligation to notify Wiko about the infringement of the SEP in suit prior to the commencement of the infringement proceedings.

The Court confirmed that a notification addressed to the parent company within a group of companies will usually be sufficient under the Huawei framework [310] . In terms of content, the Court was satisfied by the fact that Philips’ letter from July 2015 named the patent in suit as well as the relevant part of standard document implementing the technical teachings of this patent [311] . The Court explained that the notification does not have to contain (further) information required for a final assessment of the validity and essentiality of the patent in suit [311] . Accordingly, the SEP holder is not obliged to share claims charts customarily used in SEP licensing negotiations with the implementer along with the notification of infringement [311] .

Willingness to enter into a licence

The Court further found that Wiko had sufficiently met its obligation to express its willingness to negotiate a licence with Philips [312] .

The Court agreed with the assessment of the District Court that Wiko’s initial reaction to Philips’ notification in July 2015 by letter dated 20 October 2015 was belated. According to the Court, the time available to the implementer for expressing its willingness to enter into negotiations for a licence will – as a rule – not exceed two months [313] . This period of time will usually be sufficient: since by declaring its willingness to enter into negotiations the implementer does not waive any rights (especially the right to contest the validity and/or infringement of the patents in question), it shall not be given more time than the time needed for an ‘initial overview’ of the SEP holder’s claims [313] . Delaying tactics potentially applied by the implementer must be prevented [313] . Against this background, Wiko’s letter dated 20 October 2015 was sent to Philips too late.

Nevertheless, the Court found that Wiko had remedied the belated response after the beginning of the infringement proceedings. On the one hand, Wiko’s letter dated 20 October 2015 had reached Philips at a very early stage of the proceedings, namely just some days after the action was filed [314] . In addition, Wiko had confirmed its willingness to enter into negotiations with Philips expressed in said letter during the course of the proceedings, by making a counteroffer, rendering accounts and providing security to Philips [314] .

SEP holder’s offer

On the other hand, the Court held that Philips had failed to comply with its obligation to make a FRAND licensing offer to Wiko. In particular, the Court took the view that Philips did not provide sufficient information to Wiko with respect to its licensing offer dated July 2015 [315] .

The Court argued that the ‘fairness’ element of the FRAND commitment establishes an ‘information duty’ (‘Informationspflicht’) of the SEP holder with respect to the content of its licensing offer to the implementer [316] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [317] .

In terms of scope, the Court found that the information duty is, basically, not limited to the calculation of the offered royalty but also covers (objective) facts showing that the ‘contractual compensation factors’ (‘vertragliche Vergütungsfaktoren’) are not discriminatory [318] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [318] .

In case that the patent holder has already granted licences to third parties, the information duty will extend also towards its ‘licensing practice’, including comparable agreements [319] .

If the SEP holder uses exclusively a standard licensing programme, then it will be sufficient to show that said programme has been accepted in the market and that the offer made to the implementer corresponds with the standard licensing agreement used [319] .

On the other hand, if the SEP holder has concluded individual licensing agreements with third licensees, then it would be obliged to disclose – at least – the content of the key contractual terms in a way that would allow the implementer to identify whether (respectively why) the offer it received is subject to dissimilar conditions [319] . The Court made, however, clear that – contrary to the approach adopted by the Duesseldorf courts – the SEP holder is not obliged in any case to disclose the full content of all existing comparable agreements [319] . In the eyes of the Court, the information duty serves only the purpose of facilitating good will licensing negotiations. A full disclosure of comparable agreement is, however, uncommon in practice [319] .

In this context, the Court pointed out that the patent holder will have to adequately substantiate the content of ‘justified confidentiality interests’ that might hinder the disclosure of comparable agreements [319] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [319] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [320] . In particular, the Court criticized that Philips did not adequately explain the reasons for choosing to agree on a lump sum payment (instead of a running royalty) in an existing agreement with a third licensee [321] . The fact that companies of different size were affected did not relieve Philips from its information duty; according to the Court, the mere fact that two competitors in a downstream market are of different size does not per se offer sufficient ground for different treatment [322] .

Since the Court assumed that Philips had failed to meet its information duties, it did not examine whether Philips’ licensing offer to Wiko was FRAND in terms of content [323] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [324] .

Implementer’s claim for disclosure of comparable agreements

Referring to the counterclaim for full disclosure of Philips’ comparable agreements raised by Wiko in the appeal proceedings, the Court clarified that a respective right of Wiko does not exist [325] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [325] or Article 102 TFEU [326] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [327] . The Court saw no indication that French law (which is applicable to the ETSI FRAND undertaking) establishes such a right in favour of standards implementers [328] .

C. Other important issues

The Court pointed out that the claims for damages as well as information and rendering of accounts also asserted by Philips in the present proceedings are not subject to the Huawei framework [329] . Moreover, the Court explained that the non-fulfilment of the Huawei obligations by the patent holder poses no limitations on these rights in terms of content [330] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [331] .

• [296] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
• [297] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16, cited by http://lrbw.juris.de.
• [298] Ibid, paras. 37-87.
• [299] Ibid, para. 88.
• [300] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
• [301] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
• [302] Ibid, para. 107.
• [303] Ibid, paras. 117 et seqq.
• [304] Ibid, para. 119.
• [305] Ibid, paras. 120 et seq.
• [306] Ibid, para. 120.
• [307] Ibid, para. 125.
• [308] Ibid, para. 126.
• [309] Ibid, para. 127.
• [310] Ibid, para. 111.
• [311] Ibid, para. 112.
• [312] Ibid, paras. 115 and 117.
• [313] Ibid, para. 115.
• [314] Ibid, para. 129.
• [315] Ibid, paras. 131 et seqq.
• [316] Ibid, paras. 132 et seq.
• [317] Ibid, para. 135.
• [318] Ibid, para. 133.
• [319] Ibid, para. 134.
• [320] Ibid, paras. 136 et seqq.
• [321] Ibid, para. 136.
• [322] Ibid, para. 138.
• [323] Ibid, para. 131.
• [324] Ibid, para. 106.
• [325] Ibid, paras. 157 et seqq.
• [326] Ibid, paras. 162 et seqq.
• [327] Ibid, paras. 160 et seq.
• [328] Ibid, para. 161.
• [329] Ibid, para. 143.
• [330] Ibid, para. 144.
• [331] Ibid, paras. 145 et seqq.

Sisvel v Wiko

9 十二月 2020 - Case No. 6 U 103/19

A. Facts

The claimant, Sisvel, holds patents declared as (potentially) essential to the practice of the UMTS and LTE wireless telecommunications standards, which are subject to a commitment to be made accessible to users on fair, reasonable and non-discriminatory (FRAND) terms and conditions (standard-essential patents or SEPs). Sisvel also administrates a patent pool, comprising patents of several SEP holders, including Sisvel's own SEPs (patent pool).

The defendants are two companies that are part of the Wiko group (Wiko). [332] Wiko sells mobile phones complying with the LTE standard - among other markets- in Germany.

In June 2015, the patent pool informed Wiko for the first time about the need to obtain a licence. On 1 June 2016, Sisvel (as the patent pool's administrator) offered Wiko a portfolio licence, which also covered the patent in suit. Agreement was, however, not reached.

On 22 June 2016, Sisvel brought an action against Wiko before the District Court (Landgericht) of Mannheim in Germany (District Court) based on one patent reading on the LTE standard (infringement proceedings). Sisvel requested a declaratory judgment confirming Wiko's liability for damages on the merits, as well as information and rendering of accounts.

On 23 June 2016, Sisvel made an offer for a bilateral licence limited to its own SEP portfolio to the German subsidiary of Wiko. This offer was not accepted. Moreover, Wiko filed a nullity action against the SEP in suit before the German Federal Patent Court (nullity proceedings).

In October 2016, Sisvel extended the lawsuit. Claims for injunctive relief as well as the recall and destruction of infringing products were added to the other claims initially asserted.

On 11 November 2016, Wiko made a counteroffer to Sisvel. Some days prior to the oral hearing in the infringement proceedings, Wiko informed the Court that it had provided information to Sisvel and had also deposited a security amount for past uses.

On 8 November 2017, Sisvel made a new offer to Wiko with reduced royalty rates. Wiko did not immediately react to this offer.

On 22 December 2017, Sisvel asked the District Court to order a stay of the infringement proceedings, until the decision of the Federal Patent Court in the parallel nullity proceedings. Wiko agreed with Sisvel's motion. On 30 January 2018, the infringement proceedings were stayed.

On 9 February 2018, Sisvel sent a reminder to Wiko regarding the offer made on 8 November 2017. Wiko responded on 16 February 2018, requesting further claim charts and more time to examine the patents covered by the offer.

On 26 June 2018, during the stay of the infringement proceedings, Sisvel made another licensing offer to Wiko based on a new restructured licensing program (2018 offer). Along with the 2018 offer, Sisvel provided Wiko with claim charts regarding 20 selected patents and a list of existing licensees of both its new licensing program and two pre-existing programs. The list contained the date of the conclusion of each agreement as well as the agreed licence fees. The names of the licensees were, however, redacted.

Wiko did not react to the 2018 offer for more than three months. On 15 October 2018, following a respective reminder sent by Sisvel on 14 September 2018, Wiko replied, without, however, commenting the 2018 offer; it just referred back to its counteroffer dated 11 November 2016. Wiko also criticized the fact that Sisvel did not disclose the names of the existing licensees so far.

In response to that claim, Sisvel shared a draft Non-Disclosure Agreement (NDA) with Wiko on 22 October 2018, based on which it would be willing to disclose the names of the existing licensees. Wiko refused to sign the NDA proposed by Sisvel.

In October 2018, the Federal Patent Court upheld the SEP in suit in part. Subsequently, the District Court moved on with the infringement proceedings. After the end of the oral hearings in July 2019, Wiko made a new counteroffer to Sisvel and provided the latter with additional information. However, Wiko did not increase the amount of security deposited after its first counteroffer dated 11 November 2016.

In the beginning of September 2019, Sisvel set up an electronic data room containing redacted versions of Sisvel's existing licensing agreements with third parties and granted Wiko respective access rights. Wiko did not make use of this data room at any point in time.

On 4 September 2019, the District Court granted an injunction against Wiko and ordered the removal and destruction of infringing products from the market. It also confirmed Wiko's liability for damages on the merits and ordered Wiko to provide Sisvel with information required for the calculation of damages. Wiko appealed the decision of the District Court.

Shortly after the District Court rendered its decision, the term of the patent-in-suit expired. Sisvel, however, enforced the injunction granted by the District Court.

With the present judgment [333] (cited by http://lrbw.juris.de/cgi-bin/laender_rechtsprechung/list.py?Gericht=bw&GerichtAuswahl=Oberlandesgerichte&Art=en&sid=2b226ea73cc9637362d8e1af04a34d05), the Higher District Court (Oberlandesgericht) of Karlsruhe (Court) predominantly upheld the judgment of the District Court [334] .
 

B. Court's reasoning

The Court found that Wiko could not successfully raise a so-called 'FRAND-defence' based on an alleged abuse of market dominance (Article 102 TFEU) against the claims for injunctive relief and the recall and destruction of infringing products asserted by Sisvel. [335]

This question was still decisive in the present case, despite the fact that the patent-in-suit expired before the start of the appeal proceedings. The Court explained that the expiration of a patent affects only future acts of use (which, then, no longer constitute infringement): On the contrary, claims that had arisen prior to expiration based on acts of use during the lifetime of the patent are not impaired. [336] Whether claims were given before the expiration of the patent-in-suit is of particular importance, especially when the patent holder has enforced a (first-instance) judgment delivered in proceedings conducted within the term of protection of the patent, as it was the case here. [337]
 

Dominant market position

Having said that, the Court agreed with the finding of the District Court that Sisvel had a market dominant position in terms of Article 102 TFEU with respect to the patent-in-suit in the relevant time period prior to its expiration. [338]

The Court followed the District Court also insofar, as it confirmed that, by filing an infringement action, Sisvel had not abused its market dominance.
 

Notification of infringement

In the eyes of the Court, Sisvel had sufficiently notified Wiko about the infringement of the patent-in-suit prior to filing a court action. [339] The purpose of the notification of infringement is to draw the implementer's attention to the infringement and the necessity of taking a license on FRAND terms and conditions. [340] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [340] Detailed technical or legal analysis of the infringement allegation is not required. [340] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [340] If the patent holder offers a portfolio licence, respective extended information duties occur. [340]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [341] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [342] What is more, the Court held that the court action initially filed by Sisvel, which did not include claims for injunctive relief and the recall and destruction of infringing products, could also be seen as an adequate notification of infringement. [341]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [343] . The Court agreed with the assessment of the District Court that Wiko delayed the licensing negotiations between the parties with the goal to avoid taking a licence for as long as possible, in order to gain economic benefits. [344]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [345] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [345] . The respective declaration must be 'serious and unconditional'. [345]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [345] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [345]

The implementer must always be willing to obtain a licence and participate in negotiations in a 'target-oriented manner'; since implementers might be inclined to delay negotiations until the expiration of the patent-in-suit, there is a need to make sure that their behaviour in negotiations will not lead to delays. [346] Moreover, it should be expected that a willing implementer would seek a license as soon as possible, in order to shorten the period, in which it makes use of the patent-in-suit or the SEP holder's portfolio without authorisation and without paying licensing fees. [347] Accordingly, a willing licensee would not consider the 'negotiation obligations' of the SEP holder primarily as a means to defend itself against a court action, but as a means to utilize in order to reach a FRAND agreement, if needed. [347]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [348] of the Court of Justice of the EU (CJEU). [349] In Huawei, CJEU focused on the will of the infringer to conclude a license agreement on FRAND terms and emphasized that the latter must not pursue 'delaying tactics'. The Court explained that, although in Huawei the requirement to refrain from 'delaying tactics' is expressly mentioned only with respect to the duty of the implementer to react to a licensing offer of the SEP holder, it applies 'at all times' as long as the implementer uses the patents without a licence; otherwise, the suspension of SEP holder's right to the injunctive relief cannot be justified. [350]

In this context, the Court pointed out that not every 'reluctant involvement' of the implementer in licensing discussions will necessarily allow for the assumption of unwillingness. [351] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [351] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [351] Furthermore, implementers must, in principle, inform the SEP holder of any objections at an early stage and should not wait to raise those much later in court proceedings. [351]

Looking at Wiko's conduct, the Court criticized especially the fact that it became active mostly as a reaction to new developments in the pending infringement proceedings. [352] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [353] As an example, the Court highlighted the fact that Wiko's counteroffer dated 11 November 2016 was made only shortly after Sisvel extended the infringement suit by adding a claim for injunctive relief. [354] Wiko also provided information on past acts of infringement only a few days prior to the first oral hearing in February 2017 (and refrained from constantly updating this information afterwards, as it would be expected by a willing licensee). [355]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [356] Wiko reacted to Sisvel's licensing offers made during the course of the proceedings always belatedly and only after a reminder by Sisvel (for instance, it took Wiko more than three months to react to the 2018 offer) [357] . It also demanded further claim charts in February 2018, years after the action was filed. [358]

Wiko's refusal to sign the NDA offered by Sisvel -despite multiple reminders of the latter- without providing any reasons was also considered as a sign of unwillingness. [359] According to the Court, it should be expected by a willing licensee, who is not interested in delaying negotiations, to swiftly raise any criticisms regarding an NDA proposed by the SEP holder in writing or by e-mail, and not wait to raise any concerns several months later in the infringement proceedings, as Wiko had done here. [360] The Court also considered the fact that Wiko did not access the electronic data room set up by Sisvel containing redacted versions of Sisvel's third party agreements as an additional indication of unwillingness. [361]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [362] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [362] Wiko failed to do so.
 

SEP holder's offer

Since Wiko was found to have been an unwilling licensee, the Court explained that the question whether Sisvel fulfilled its duty to make and adequately elaborate a FRAND licensing offer, was no longer decisive. [363] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [363] Notwithstanding the above, the Court provided guidance on the content and extend of the respective obligation of the SEP holder.

The Court first explained that FRAND is a 'range', which leaves room for flexibility. [364] As a rule, FRAND is determined in bilateral good faith negotiations between SEP holders and implementers, taking into account the specific circumstances of each individual case [364] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [364]

In order to meet its obligation, an SEP holder must present an offer to a willing licensee, which 'in general' complies with FRAND requirements and is fair, reasonable and not discriminatory with respect to the 'average licensee'. [365] The SEP holder shall further explain its offer in a way that permits the licensee to understand the assumptions, on which the offered rate and further conditions are based. [366] The rationale behind this obligation is to create a sufficient basis of information for the implementer for assessing the offer and eventually formulating a counteroffer. [367]

In this context, the Court made clear that implementers should not expect that the SEP holder individually adapts its (first) offer to the specific circumstances of each particular case. [368] The SEP holder's FRAND commitment does not give rise to such obligation. [368] The (first) offer is intended to launch the negotiations and provide an adequate information basis to the implementer, who will then be in a position to suggest necessary amendments by means of a counteroffer. [368] Accordingly, it will regularly be acceptable that the SEP holder's offer is 'not clearly and evidently' non-FRAND and sufficient information was provided to the implementer. [369]

The Court dismissed the notion that the implementer is obliged to negotiate (and eventually) make a counteroffer, only when the SEP holder's offer was fully FRAND-compliant. [369] This would bring the negotiations to a stand-still and, therefore, conflict with the spirit of the Huawei judgment, which is to encourage the parties to reach agreement on the licensing terms. [370] Moreover, the Court explained that –irrespective of whether the offer triggers an obligation of the implementer to submit a counter-offer– the latter will be regularly required, at least, to analyse the SEP holder's offer in due course and express any objections and queries without delay. [371]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [372] The fact that the offers did not define the start of the contract or the amount of royalties payable for past uses was not considered problematic. [373] The Court also found that the royalty rates offered were not 'evidently non-FRAND', since they were sufficiently substantiated by reference to existing licensing agreements and calculated on basis of a 'top-down' method. [374] A need to calculate royalties on grounds of the costs that incurred for the creation of the patented invention (cost-based approach) was not given, since this factor was not relevant for establishing value. [375]

In addition, the Court did not raise any concerns against the fact that Sisvel's offer concerned a worldwide portfolio licence: On the one hand, agreements with such scope are common in the telecommunications industry. [376] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [376]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [377] The Court stressed that, for the purpose of licensing negotiations and the conclusion of a licence, it is not necessary to conclusively clarify whether each portfolio patent is standard-essential. [378] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [378]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [379] This rule corresponds with the common allocation of the burden of proof under German law and does not place unreasonable weight on the licensee, since it will be better situated to trace the licensing chain by engaging with its suppliers. [380]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [381] Such clause would allow the implementer to adapt the agreed royalties, in case that patents fall out of the scope of the licence (e.g. due to expiration or invalidation). The Court saw no need for a respective contractual provision, since the licences offered by Sisvel would expire and, therefore, be re-negotiated after five years. [381] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [382]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [383] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [384] According to the Court, Sisvel was under no circumstances obliged to elaborate on a cost-based calculation of royalties, as requested by Wiko; such demand was considered just another means to delay negotiations. [385]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [386]

The Court highlighted that the obligation of the implementer to submit a FRAND counteroffer to the SEP holder is already triggered, when the previous licensing offer of the latter is not 'clearly and evidently' non-FRAND and sufficient information was provided, enabling the implementer to formulate its counteroffer. [387]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [388] The Court criticized especially the fact that the rates were significantly lower than the rates which were considered to be adequate in previous court decisions. [389] Notwithstanding the above, the Court explained that, even if Wiko's counteroffer had been FRAND, this would not change the conclusion that Wiko had acted as an unwilling licensee. [390] According to the Court, a willing licensee would not have submitted a counteroffer around one year after receipt of the SEP holder's offer, as Wiko did. [391]
 

C. Other important issues

The Court stressed that for generating pressure-free licensing negotiations during pending infringement proceedings, it will, as a rule, be sufficient, if the proceedings are stayed with a view to parallel nullity proceedings concerning the patent-in-suit. [392] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [392] Nevertheless, even if a pressure-free negotiation situation is not given, the infringers is not released from the obligation to act in good faith and engage in licensing negotiations, for instance by analysing a licensing offer of the SEP holder. [392] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [392]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [393] . Even if one would recognize a duty of the SEP holder to share information about the core content of existing licensing agreements (that are still in force), it is questionable whether this duty would also extend to agreements signed by previous patent holders. [394] The Court expressed particular doubts that this applies in cases in which a portfolio was assembled from patents acquired from different patent holders, since the relevance of bilateral or pool licensing agreements of the former patent holder can be limited in this case. [395]

Furthermore, the Court expressed the view that under German law a so-called 'covenant not to sue' does not have the effect of a (royalty-free) licence: such agreements will, as a rule, have only a procedural effect in terms of a pactum de non petendo, excluding only the initiation of court proceedings. [396]

Finally, the Court denied Wiko's motion to order a stay in the appeal proceedings due to the recent referral of several questions regarding the interpretation of the Huawei framework to the CJEU by the District Court of Düsseldorf in the matter Nokia v Daimler [397] . [398] According to the Court, it appears unlikely that the CJEU will establish criteria, by which SEP-based court actions against implementers engaging in delaying tactics would amount to an abuse of market dominance. [399]
 

• [332] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
• [333] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
• [334] The claims for injunctive relief, rendering of accounts and damages asserted against the former managing director of the two Wiko companies were limited to the period of time until the end of its tenure; ibid, paras. 265-288.
• [335] Ibid, para. 289.
• [336] Ibid, paras. 284 et seqq.
• [337] Ibid, para. 287.
• [338] Ibid, paras. 290 et seq. Insofar, the Court made clear that a market dominant position ceases to exist after the expiration of the relevant patent.
• [339] Ibid, paras. 292 et seqq.
• [340] Ibid, para. 293.
• [341] Ibid, para. 297.
• [342] Ibid, paras. 297 et seq.
• [343] Ibid, para. 299.
• [344] Ibid, para. 299 and paras. 320 et seqq.
• [345] Ibid, para. 301.
• [346] Ibid, para. 302.
• [347] Ibid, para. 303.
• [348] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
• [349] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
• [350] Ibid, para. 304.
• [351] Ibid, para. 305.
• [352] Ibid, paras. 321 et seqq.
• [353] Ibid, para. 321.
• [354] Ibid, para. 322.
• [355] Ibid, paras. 323 et seq.
• [356] In addition, the Court found that Wiko’s lack of willingness to obtain a license is also manifested in the fact that it (i) attempted to impede the enforcement of the first instance ruling of the District Court by questionable means (para. 335) and (ii) did not accept the offer of the District Court of The Hague, in which proceedings between the parties were pending in parallel, to engage in settlement negotiations (para. 336).
• [357] Ibid, paras. 325, 328 and 331.
• [358] Ibid, para. 327.
• [359] Ibid, paras. 333 et seqq.
• [360] Ibid, paras. 334 and 338.
• [361] Ibid, paras. 337 and 341 et seqq.
• [362] Ibid, para. 330.
• [363] Ibid, para. 342.
• [364] Ibid, para. 307.
• [365] Ibid, para. 308.
• [366] Ibid, paras. 308 and 310.
• [367] Ibid, para. 309.
• [368] Ibid, para. 310.
• [369] Ibid, paras. 311 et seqq.
• [370] Ibid, paras. 311 and 313 et seqq.
• [371] Ibid, paras. 316 et seqq.
• [372] Ibid, para. 352.
• [373] Ibid, para. 353.
• [374] Ibid, paras. 354 et seqq.
• [375] Ibid, para. 358.
• [376] Ibid, para. 359.
• [377] Ibid, para. 360.
• [378] Ibid, para. 361.
• [379] Ibid, para. 362.
• [380] Ibid, para. 363.
• [381] Ibid, paras. 365 et seqq.
• [382] Ibid, paras. 367 et seqq.
• [383] Ibid, para. 366.
• [384] Ibid, para. 344.
• [385] Ibid, para. 346.
• [386] Ibid, paras. 379 et seqq.
• [387] Ibid, para. 311.
• [388] Ibid, paras. 379 et seqq.
• [389] Ibid, para. 380.
• [390] Ibid, para. 378.
• [391] Ibid, para. 384.
• [392] Ibid, para. 348.
• [393] Ibid, para. 389.
• [394] Ibid, paras. 389 et seq.
• [395] Ibid, para. 391.
• [396] Ibid, paras. 260 et seqq.
• [397] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
• [398] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
• [399] Ibid, para. 395.

Nokia v Daimler

12 二月 2021 - Case No. 6 U 130/20

A. Facts

The claimant is part of the Nokia group with headquarters in Finland (Nokia). Nokia is a major provider of telecommunication services and holds a significant portfolio of patents declared as (potentially) essential to the practice of various wireless telecommunication standards (standard essential patents, or SEPs) developed by the European Telecommunications Standards Institute (ETSI).

The defendant, Daimler, is a German car manufacturer with a global presence. Daimler produces and sells cars in Germany with connectivity features which implement standards developed by ETSI.

Nokia declared the patent involved in the present case as essential for the 4G/LTE Standard towards ETSI. ETSI requires patent holders to commit to make patents that are or might become essential to the practice of a standard accessible to users on fair, reasonable and non-discriminatory (FRAND) terms.

In June 2016, Nokia informed Daimler about its SEP portfolio. In November 2016, Nokia made a first licensing offer to Daimler. In December 2016, Daimler replied that it would be more efficient to license suppliers manufacturing the so-called 'Telematics Control Units' (TCUs), which are built into Daimler's cars. From January 2017 until February 2019, Daimler did not engage in further negotiations with Nokia.

In February 2019, Nokia made a second licensing offer to Daimler which was also rejected.

In March 2019, Nokia filed infringement actions against Daimler before the District Court of Mannheim (District Court). Further cases were filed before the District Courts of Munich and Duesseldorf.

On 9 May 2019, shortly after the infringement proceedings were initiated, Daimler made a counteroffer to Nokia (first counteroffer) which was rejected. On 10 June 2020, Daimler made a further counteroffer that did not include specific royalty rates (second counteroffer). Nokia would be granted the right to unilaterally determine the royalties payable under the licence, whereas Daimler would have the option to contest Nokia's royalty determination before court. An agreement on these terms was not signed.

On 18 August 2020, the District Court granted an injunction against Daimler and further recognised Daimler's liability to pay damages on the merits. [400] The Court also ordered Daimler to render accounts and provide information necessary for the calculation of damages to Nokia.

Daimler appealed the decision of the District Court. It also filed a request for a stay of the enforcement of the injunction granted until the conclusion of the appeal proceedings.

With the present judgment [401] (cited by http://lrbw.juris.de), the Higher District Court of Karlsruhe (Appeal Court) found in favour of Daimler, ordering a stay of the enforcement of the injunction.
 

B. Court's reasoning

The Appeal Court placed particular focus on the reasoning, on which the District Court relied upon for dismissing the so-called 'FRAND-defence' raised by Daimler against Nokia's claim for injunctive relief. Daimler had argued that by filing infringement actions, Nokia had abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU and should, therefore, be denied an injunction. The District Court held that Daimler could not invoke this argument, since it had failed to sufficiently express willingness to obtain a FRAND licence from Nokia in accordance with the requirements established by the European Court of Justice (CJEU) in the matter Huawei v ZTE [402] (Huawei decision, or framework).
 

Willingness

The Appeal Court did not contest the standard applied by the District Court for the assessment of willingness: the implementer is expected to 'clearly' and 'unambiguously' declare that it is willing to sign a licence with the SEP holder 'on whatever terms are in fact FRAND' and, subsequently, engage in licensing negotiations in a 'target-oriented' manner. [403] The Appeal Court also agreed with the view expressed by the District Court that the declaration of willingness cannot be made subject to conditions. [404] Furthermore, it reasoned that willingness is not a 'one-off event', meaning that the implementer is required to constantly engage in negotiations in a 'serious and target-oriented' manner and to avoid 'delaying tactics'. [404]
 

Implementer's counteroffer

The Appeal Court also confirmed that the implementer's counteroffer is a factor that can be considered for the assessment of willingness [405] . On the one hand, a FRAND-compliant counteroffer could, in principle, 'heal' the initial 'unwillingness' of the implementer. [406] On the other hand, a counteroffer that is not FRAND can reinforce the finding of missing willingness. [406] Having said that, the Appeal Court held that the District Court erred as far as it assumed that Daimler's second counteroffer was not sufficient to 'heal' the unwilling behaviour displayed by Daimler up to the point in time, in which this counteroffer was made. [407] The Appeal Court pointed out that – contrary to the District Court's view – a counteroffer which does not specify concrete licensing fees but instead grants the patent holder the right to unilaterally determine the royalties and – at the same time – allows the implementer to challenge such determination before court in subsequent proceedings (Sec. 315 of the German Civil Code), should regularly be considered as a sufficient declaration of willingness to sign a licence 'on whatever terms are in fact FRAND'. [408] According to the Appeal Court, the fact that by such counteroffer the implementer does not back down from the own perception of how FRAND terms should look like and will, therefore, most likely contest the royalties unilaterally determined by the SEP holder is, as a rule, not harmful: the SEP holder will in any case receive either the royalties it determined or the royalties deemed to be reasonable by the court which will be called upon by the implementer to examine the royalty determination undertaken by the patent holder. [409]

In the eyes of the Appeal Court, the fact that in the above scenario the (final) determination of FRAND royalties is postponed to subsequent proceedings following the patent infringement trial does not per se suffice to question the willingness of the implementer. [410] The Appeal Court rather highlighted that it would regularly serve the interests of the SEP holder to 'unburden' the infringement trial from the FRAND determination, which would lead to a quicker judgment on the infringement issues. [410]

Furthermore, the Appeal Court disagreed with the view previously taken by the District Court, according to which a counteroffer without specific royalty calculation could be (mis-)used by implementers as a means for delaying the signing of an agreement until after the expiration of the patent in suit, in order to secure a more favourable position in negotiations absent the threat of an injunction. [411] The Appeal Court pointed out that, if a licence stipulating a unilateral royalty determination right in favour of the SEP holder is concluded, the latter will receive royalties for the use of its patents; in the court proceedings following the infringement trial only the actual amount of the royalties payable will be determined. [411]

Notwithstanding the above, the Appeal Court made, however, clear that a counteroffer containing no specific royalties can, nevertheless, be an indication of unwillingness in individual cases, especially when it is belated. [412] This could be true, when the counteroffer is made only after infringement proceedings have been initiated by the patent holder. Although it is, in principle, thinkable to remedy flaws during pending infringement proceedings, a counteroffer made after the trial has begun would be unacceptable, if it is part of delaying tactics on the side of the implementer. [413] The Appeal Court found that this approach is in line with the Huawei judgment. [414]

In this context, the Appeal Court pointed out that a counteroffer without specific royalty calculation, which could be sufficient for establishing willingness, does not necessarily also suffice for complying with the further going obligation of the implementer under the Huawei framework to make an own offer on FRAND terms to the SEP holder, if it chooses to reject the licensing offer of the latter. [415] In the present case, the Appeal Court did not take a closer look at this question, since the District Court had not examined whether Daimler had been obliged to make a FRAND counteroffer after rejecting Nokia's licensing offers. [415]

• [400] Nokia v Daimler, District Court (Landgericht) of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19.
• [401] Nokia v Daimler, Higher District Court (Oberlandesgericht) of Karlsruhe, judgment dated 12 February 2021, Case-No.6 U 130/20.
• [402] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
• [403] Nokia v Daimler, Higher District Court of Karlsruhe (footnote No. 2), para.43.
• [404] Ibid, para. 43.
• [405] Ibid, paras. 45 et seq.
• [406] Ibid, paras. 46.
• [407] Ibid, para. 47.
• [408] Ibid, para. 51.
• [409] Ibid, para. 52.
• [410] Ibid, para. 53.
• [411] Ibid, para. 54.
• [412] Ibid, para. 55.
• [413] Ibid, para. 56.
• [414] Ibid, para. 57.
• [415] Ibid, para. 61.

IP Bridge v HTC

25 十一月 2020 - Case No. 6 U 104/18

A. 事实

原告IP Bridge 拥有被声明为对欧洲电信标准协会 (ETSI) 制定的蜂窝标准 4G/LTE而言（潜在）必要的专利。涉案专利是从另一家公司转让获得的，该公司已向 ETSI 承诺以公平、合理和无歧视 (FRAND) 的条款和条件使实施人能够使用该专利。

被告是宏达国际电子(HTC) 的德国子公司，HTC是一家总部位于台湾的全球电子公司，该公司在多个国家包括德国销售符合 4G 标准的手机。

2014 年 12 月，IP Bridge 向 HTC 集团的母公司（母公司）通知了其标准必要专利（SEPs）的组合。随后，双方进行了谈判，交换了许可要约；但是，双方没有签订任何协议。

2016 年 9 月，IP Bridge 在曼海姆地区法院（地区法院）对 HTC 提起诉讼。IP Bridge 要求该法院作出确认性判决，确认 HTC 的损害赔偿责任，并要求提供相关信息以及开立担保账户。

2018 年 4 月，在母公司签署保密协议后，IP Bridge提交了有关其专利组合与第三方之前的现有许可。

2018 年 5 月 15 日，IP Bridge增加了禁令救济以及召回和销毁侵权产品的诉求，延长了该未决诉讼。

2018 年 6 月，HTC 提出反要约， IP Bridge 拒绝接受。

2018 年 9 月 28 日，地方法院判定 HTC 侵犯涉案专利，并承担损害赔偿责任[1]。地方法院还命令 HTC 向 IP Bridge 开立担保账户并向 IP Bridge 提供相关信息。另一方面，禁令救济、召回和销毁侵权产品的诉请被驳回。双方对该决定都提出了上诉。

2019 年 3 月，上诉程序暂停，以就 IP Bridge 的要约进行许可谈判。在随后的磋商中，IP Bridge 向 HTC 提交了修改后的许可要约。除了这个要约，IP Bridge同时还提供了其与芯片组制造商签订的协议，根据这些协议，这些制造商要么部分涵盖了涉及争议的专利组合，要么包含了关于某些专利的所谓“最后才被起诉的协议”。

2020 年 2 月，IP Bridge 向 HTC 提出了另一个许可要约，HTC 可以在按量付费和固定支付许可费之间进行选择。对于这两种选择，许可费都是根据所谓的“至上而下”法确定的。该费率是根据手机的年度、行业范围（部分是根据预测的）平均售价 (ASP) 计算的。按量付费选项包括一项条款，在预测值与实际平均售价至少有 5% 的偏差的情况下，允许双方请求调整年度平均售价。

接着上诉程序再次暂停了大约两个月。母公司拒绝了IP Bridge 2020年2月作出的要约。之后，母公司又向IP Bridge提出了两次反要约。然而双方没有签订任何协议。

卡尔斯鲁厄高级地方法院（上诉法院）以本判决推翻了地方法院关于禁令救济、召回和销毁侵权产品的诉请的判决[2]。与一审判决相反，上诉法院支持了这些诉请。

B. 法院的说理

上诉法院确认HTC侵犯了涉案专利[3]。

在上诉法院看来，HTC 提出的导致禁令救济、召回和销毁侵权产品的诉请在一审中被驳回的“FRAND 抗辩”，不会再成为支持这些诉请的障碍[4]。

HTC 认为，通过主张具有排除性质的诉请，IP Bridge 滥用了其市场支配地位，违反了《欧盟运作条约》（TFEU）第 102 条。上诉法院认为，地方法院认为 IP Bridge 在相关市场中具有支配地位，这点是没有问题的[5]。然而，IP Bridge并没有滥用其市场支配地位：IP Bridge 在上诉程序中提出的最后一个许可要约不管怎样都是 FRAND的[6]。根据上诉法院的说法，相反，HTC 随后的反要约“显然不是 FRAND”的[7]。

未决诉讼期间的华为义务

上诉法院重申，原则上双方在侵权诉讼未决期间也均能履行欧盟法院的华为诉中兴案的判决（华为判决）[8]下的谈判义务（华为义务）[9]。同样，法院应在上诉程序中考虑在一审审判结束后首次实施的行为，特别是当提供了许可要约的情况下[10]。

在这种情况下，上诉法院指出，实施人通常有义务对标准必要专利权人履行其华为义务的行为做出适当的反应，而不管专利权人采取的行动有延迟还是逐步的方式[11]。专利权人方面的“略有延迟行为”并不会永久排除其获得禁令救济的权利；该权利的执行只是“暂停”，直到专利权人履行其义务并且给予实施人作出反应的合理期限届满为止[12]。上诉法院指出，相反，即使标准必要专利权人“只是略有延迟”地履行其义务，执行拖延策略的实施人一方也会受到排除性措施的制裁[13]。

侵权通知

在审核了IP Bridge具体的华为义务后，上诉法院认定 IP Bridge 已向 HTC 发出了充分的侵权通知[14]。就目前而言，上诉法院认为地方法院的说理没有任何问题。

标准必要专利权人的要约

上诉法院随后判定 - 至少 - IP Bridge2020 年 2 月给 HTC提供 的最后一个许可要约是 FRAND的（或者，无论如何，“不是明确且明显非 FRAND”）[15]。上诉法院对 FRAND 符合性进行了全面的评估，确认了其之前的看法，即对于专利权人的要约，法院不能仅进行有限的“简易审查”[16]。

上诉法院认为，只要要约对于“普通被许可人”而言是“一般意义上”FRAND的，标准必要专利权人通常就履行了给“善意”的被许可人提供FRAND 许可要约的华为义务[17]。实施人不能指望作为谈判“起点”的（第一个）要约已经考虑了具体的个体情况[18]。上诉法院强调，FRAND 是一个“范围”，这意味着不仅只有一套条款和费用符合 FRAND 的要求[19]。特别是“公平”和“合理”的概念为各方提供了灵活性，他们在根据每个案件的情况进行善意的双边谈判的情况下最有可能达成 FRAND的条款和费用[20]。

关于 IP Bridge 的最后一次许可要约，上诉法院首先认为时间上没有问题。事实上，IP Bridge 逐渐形成并仅在上诉程序期间提出该要约的这一事实并无不利影响[21]。此外，上诉法院强调，上述要约并未“失效”，因此要求 HTC 做出回应[22]。HTC 则认为，在 IP Bridge 设定的回复期限届满后，该要约不再具有约束力。上诉法院不同意这一看法：具体的截止日期仅表明 IP Bridge 预计其将收到 HTC 的答复的时间，并没有阻止HTC随后接受该要约[23]。截止日期过后，IP Bridge 再次要求 HTC 做出回应，这一事实进一步支持了这种理解[24]。根据上诉法院的说法，就算假定许可要约已经“失效”，即使响应的截止日期已过[25]，HTC 仍然有义务提出反要约或询问 IP Bridge 自己是否可以接受该要约。

许可费计算/许可要约的内容

关于许可费，上诉法院认为 IP Bridge 最后一次要约中包括的许可费率是 FRAND的[26]。用于许可费计算的“至上而下”法没有任何法律问题[27]。用于计算的许可费基数也没有问题，即年度（部分预测的）行业范围内手机的平均售价[28]。

上诉法院拒绝接受 HTC 的观点，即使用所有支持 4G 的手机行业范围内的平均售价本身是不合理的[29]。一方面，上诉法院强调，对 FRAND 符合性的评估不在于“对单个计算参数的孤立审查”，而应关注最终许可费率的金额是否为 FRAND的，本案就属于这样的情况[30]。

另一方面，行业范围的平均售价考虑了与无线技术无关的特性（例如制造商的声誉、品牌、设计或高生产质量）这是可以接受的，因为同时特别低价的手机也被考虑在内，例如以倾销价格出售的设备，或不考虑标准必要专利许可费用的价格[31]。除此之外，上诉法院指出，整个行业的平均售价并没有明显高于HTC自家手机的平均售价[32]。此外，上诉法院认为，IP Bridge 用于计算许可费的累积总许可费负担也没有问题，因为它处于其他法院之前接受为 FRAND 的范围内 (6% - 10%)[33]。其他标准必要专利权人应用较低百分比的事实并不能证明 IP Bridge 所引用的累积费率具有剥削性[34]。

此外，上诉法院认为 IP Bridge 计算其在 4G 相关标准必要专利中所占份额的方式没有任何问题[35]。IP Bridge 根据来自两个不同标准必要专利全局研究的数据形成了一个平均值。上诉法院认为这是可以接受的，尤其是因为两项研究都得出了相似的结果；更重要的是，IP Bridge 没有义务使用更低结果的那项研究[36]。

进一步，对于IP Bridge 没有根据专利覆盖范围为特定国家/地区提供不的同费率的做法，上诉法院并没有提出质疑[37]。IP Bridge 提出的统一全球费率并未使得许可要约本身具有剥削性，因为选择此选项有充分的理由，例如，更简易的合同管理[38]。上诉法院解释说，在这样的条件下提出的要约是否会不利于在专利覆盖率低的地区有高销售额的实

施人，是无关紧要的：如前所述，如果标准必要专利权人给“普通被许可人”的要约是FRAND的，那么标准必要专利权人就履行了谈判义务[39]。只有当每个国家/地区因为没有不同的费率通常会导致“剥削性”费率时，才有可能会发生滥用[40]。在上诉法院看来，没有迹象表明这里是这种情况，特别是因为与 IP Bridge 签订协议的其他被许可人已经接受了相应形式的要约[41]。此外，上诉法院认为 IP Bridge 建议的数量折扣符合 FRAND[42]。标准必要专利权人原则上没有义务向所有被许可人提供“统一收费”[43]。基于销量的折扣会导致销售额较低的实施人的单位费用较高，但在存在“事实理由”时是允许的[44]。上诉法院承认，标准必要专利权人可以有动机激励实施人争取更高的销售额，以实现标准的更广泛传播，从而获得更多的被许可人[45]。向“大型和有信誉的”实施人提供特别优惠的折扣也是合理的，因为与这些公司签订的协议也可能促使其他被许可人签订协议[46]。与其他现有被许可人相比，本案中使用的数量折扣将导致 HTC 的费率更高，这一事实并未使 IP Bridge 的要约具有歧视性[47]。上诉法院重申，当标准必要专利权人的提议对“普通被许可人”来说不具有歧视性时，其提供 FRAND 要约的义务就得到了满足；HTC 并没有提出本案出现了这种情况，而只是认为折扣制度总体上对 HTC 或更小规模的制造商具有歧视性[48]。

至此，上诉法院重申，最终，个别计算参数是否“符合 FRAND”并不重要；决定性问题是最终的许可费是否为 FRAND的[49]。上诉法院毫不怀疑 IP Bridge 提供的许可费是 FRAND的，特别是因为IP Bridge与另外两个被许可人就相同的费率（包括相同的数量折扣制度）签订了协议[50]。鉴于它们是在没有诉讼的情况下签订的，因此可以将这些许可用作基准参考[51]。销售数量有差异（一个高于HTC，一个低于HTC）的现有的被许可人的都接受了IP Bridge的数量折扣制度，这表明该制度既没有剥削性也没有歧视性[52]。此外，上诉法院并不认为因为其中一项许可还涵盖基础设施侧的专利（向 HTC 提出的要约没有）就具有歧视性，因为此类专利仅占许可组合的 1%，因此对于FRAND 符合性评估的影响有限[53]。

除了许可费计算外，上诉法院进一步认定 IP Bridge 最后一次许可要约的其他条款也是 FRAND的[54]。要约中包含的许可费调整条款允许被许可人对许可专利的有效性、必要性和使用性提出质疑，并在许可组合发生“重大变化”（双向）时提供许可费调整。仅在“重大变化”的情况下才触发该调整机制是出于双方的利益，以避免以微不足道的理由修改协议，上诉法院认为这些理由值得保护[55]。

有关许可要约的信息

考虑到向实施人解释许可要约的相关责任，上诉法院要求标准必要专利权人

详细说明要约，能让特定被许可人理解费率和其他合同条款所依据的假设，以及专利权人认为该要约是非剥削性和非歧视性的原因[56]。

上诉法院认为，IP Bridge 就最后一次向 HTC 提出的要约而言，符合上述要求[57]。至于 IP Bridge 之前就保持不变的因素提供意见，上诉法院解释说没有义务重复这些信息，因为这只是一种“无用的形式主义”[58]。

上诉法院补充说，没有必要再去对一个已经详尽的“自豪清单”进行扩展来证明 IP Bridge 专利组合对于标准的必要性[59]。无论如何，IP Bridge 向 HTC提供的 24 项权利要求对照表被认为是足够的（该组合共有 48 项专利）[60]。

此外，上诉法院指出，IP Bridge 可以依据两项（外部作出的）全局研究来确定其在 4G 相关标准必要专利中的份额；IP Bridge没有义务在这方面自行研究[61]。IP Bridge 没有义务给HTC 提供这两项研究，因为这两项研究HTC都可以获得[62]。根据上诉法院的说法，HTC 购买这些研究似乎并非不合理，尽管获得其中一项研究的成本为 50,000 英镑（或每年订阅 75,000 英镑）[63]。

上诉法院还认为，IP Bridge 已经履行了向 HTC 告知已经签订的许可协议的“基本内容”的义务[64]。IP Bridge 提供了与其他三个被许可人签订的协议。对于标准必要专利权人是否有义务提交先前的专利权人签订的协议的问题，上诉法院并没有给出确定的答案：在本案中，IP Bridge 的专利组合包括从多个专利权人处获得的专利，因此没有任何先前的协议能涵盖其当前结构的专利组合[65]。以前的单个许可协议的信息价值比较有限[66]。不管怎样，相应的义务都不会延伸到已过期的许可协议[67]。

“无压力”谈判

除此之外，上诉法院认为，鉴于诉讼曾两次暂停，关于 IP Bridge 在上诉审判期间提出的关于要约的“无压力”谈判的实现是可能的[68]。暂停诉讼的这段时间足以让 HTC 仔细审查要约，其也有义务这样做[69]。

此外，上诉法院解释说，IP Bridge 并没有义务暂停对 HTC 集团在中国的关联公司发起的侵权诉讼[70]。根据欧盟竞争法，只有在法院措施（例如禁令）将产品排除在欧盟单一市场之外的情况下，主张由标准必要专利产生的排除性权利才有可能构成滥用[71]。在其他市场提起的诉讼没有这种效果，因此并不妨碍在德国提出的排除性主张的执行[72]。关于标准必要专利权人是否有义务暂停平行且未决的德国侵权诉讼，上诉法院并没有作出决定，因为自 2017 年 11 月以来，双方在德国法院的唯一其他审判也处于“暂停”的状态[73]。

实施人的反要约

上诉法院进一步判定，HTC 在上诉程序之前和期间提出的反要约不是 FRAND的[74]。

在上诉法院看来，当标准必要专利权人提出的要约不是“明显不符合 FRAND”并且关于该要约已向实施人详细说明使得实施人能根据 FRAND 条款设置反要约的时候，实施人提出反要约的义务已经被触发[75]。上诉法院相信华为义务“本身不是目的”，而是旨在促使双方就许可条款达成协议，因而法院认为要求实施人仅对标准必要专利权人的 FRAND 要约做出回应将导致谈判停滞[76]。这一解释也将与华为判决相冲突，因为欧盟法院仅以实施人拒绝标准必要专利权人的要约为条件提出了提交 FRAND 反要约的义务，而没有额外要求该要约实际上是 FRAND的[77]。

特别是在 HTC 的反要约中，上诉法院重点关注了一项条款，即 IP Bridge 应保证所有许可专利对于至少一个蜂窝标准而言是必要的。根据上诉法院的说法，该条款是非 FRAND的[78]。实际上，实施人被允许保留对协议中许可专利的有效性、必要性和使用性提出质疑的权利[79]。然而，可以不要求专利权人提供上述条款中规定的保证[80]。上诉法院指出，违反该条款（如果许可专利被证明是非标准必要专利）将——至少——使标准必要专利权人承担损害赔偿责任[81]。这样一来，许可协议作为对实施人的“具有风险的交易”的性质消失，标准必要专利权人将以损害赔偿责任的形式承担（增加的）风险[82]。在这方面，上诉法院还认为，HTC 未能证明此类合同条款在实践中很常见[83]。

获得许可的意愿

最后，上诉法院认定，HTC的整体行为表明其不愿意获得许可[84]。

根据德国联邦法院 (Bundesgerichtshof) 在西斯维尔诉海尔（Sisvel v Haier）案中的判例法[85]，上诉法院解释说，实施人必须“明确无误地”声明其意愿以任何实际上是 FRAND 的条款获得许可，然后以“以目标为导向”的方式进行谈判[86]。仅表现出“一般性意愿”是不够的；实施人的声明必须是“严肃的”和“无条件的”，而“仅仅口惠”是不够的[87]。

在上诉法院看来，“意愿”并非是“静态”的立场：关于实施人在某个时间点愿意（或不愿意）的结论今后并不会保持不变[88]。同时，需要“持续的意愿”来获得许可[89]。 特别相关的问题是“诚信且善意”的寻求许可的实施人是如何表现的-其有动机签订协议并且不会尽力使用程序工具来抵御标准必要专利权人提起的诉讼[90]。

在此背景下，上诉法院评价认为HTC 与 IP Bridge 的接洽 是 “拖沓”的，尤其是在谈判的最后阶段[91]。事实上，HTC 在上诉程序口审前三周才提交了反要约，并在口审前两天才给 IP Bridge 提供了修改后的版本[92]。 更重要的是，在上诉法院看来，“善意”的被许可人不会坚持要求标准必要专利权人接受HTC 反要约中包含的关于保证许可的组合专利的必要性的条款[93]。

C. 其他问题

上诉法院拒绝接受 HTC 基于“专利伏击”概念提出的抗辩[94]。上诉法院解释说，仅表明（之前的）专利权人清楚其在欧洲电信标准协会（ETSI）知识产权政策下的披露义务或没有披露，或在其他情况下延迟披露相关专利的情况下，不能由此就确定权利人方面构成了所规定的“故意欺诈行为”[95]。此外，上诉法院同意地方法院的意见，并要求提出“专利伏击”抗辩的一方——至少——证明“具体可能性”，即与吸纳进入标准的解决方案构成的替代技术当时确实存在[96]。HTC在本案中无法证明。

关于法律后果，上诉法院做了澄清，“专利伏击”并不能阻止专利的主张[97]。没有法律依据支持在这种情况下应该暂停专利的效力[98]。这种暂停就相当于对 “轻微违反规则”的行为进行处罚，是不合适的，并且与 ETSI 知识产权政策确立的披露义务的“精神和目标”相冲突，该政策旨在确保专利权人做出 FRAND 承诺，并且标准能采用最佳的技术方案，无论该技术方案是否受专利保护[99]。

进一步，上诉法院拒绝接受HTC 另外的论点，即与某些芯片组制造商达成的所谓“最后才被起诉协议”能阻碍 IP Bridge 主张涉案专利[100]。上诉法院强调，根据德国法律，“最后才被起诉协议”不会导致专利权用尽，因为不能排除基于专利提起诉讼的可能性，而其只是暂停而已（根据中止协议）[101]。

此外，上诉法院强调，根据德国法律，所谓“不起诉协议”形式的（更广泛的）协议也不会导致专利权用尽[102]。此类协议不具有提供关于将符合专利的产品投放市场的许可或同意的效力[103]。关于德国专利，“不起诉协议”通常不会比（程序上）中止协议产生更进一步的影响。

[1]  IP Bridge v HTC, District Court of Mannheim, judgment dated 28 September 2018, Case No. 7 O 165/16.

[2]  IP Bridge v HTC, Higher District Court of Karlsruhe, judgment dated 25 November 2020, Case No. 6 U 104/18 (cited by GRUR-RS 2020, 56869).

[3] 同上注，段58-98。

[4] 同上注，段117。

[5] 同上注，段134。

[6] 同上注，段133。

[7] 同上注，段133。

[8] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.

[9] IP Bridge v HTC, Higher District Court of Karlsruhe, judgment dated 25 November 2020, 段118。

[10] 同上注，段119。

[11] 同上注，段121等等。

[12] 同上注，段121等等。

[13] 同上注，段124。

[14] 同上注，段134。

[15] 同上注，段136。

[16] 同上注，段136和130。

[17] 同上注，段127。

[18] 同上注，段128。

[19] 同上注，段126。

[20] 同上注，段126。

[21] 同上注，段137。

[22] 同上注，段138。

[23] 同上注，段138。

[24] 同上注，段138。

[25] 同上注，段138。

[26] 同上注，段139等等。

[27] 同上注，段140。

[28] 同上注，段141等等。

[29] 同上注，段143。

[30] 同上注，段143。

[31] 同上注，段145。

[32] 同上注，段146。

[33] 同上注，段147。

[34] 同上注，段147。

[35] 同上注，段148。

[36] 同上注，段148。

[37] 同上注，段152等等。

[38] 同上注，段153。

[39] 同上注，段154。

[40] 同上注，段154。

[41] 同上注，段154。

[42] 同上注，段155等等。

[43] 同上注，段156。

[44] 同上注，段156。

[45] 同上注，段156。

[46] 同上注，段156。

[47] 同上注，段157等等。

[48] 同上注，段158。

[49] 同上注，段160。

[50] 同上注，段160。

[51] 同上注，段164。

[52] 同上注，段161。

[53] 同上注，段163。

[54] 同上注，段166等等。

[55] 同上注，段168。

[56] 同上注，段127。

[57] 同上注，段169等等。

[58] 同上注，段169。

[59] 同上注，段170。

[60] 同上注，段171。

[61] 同上注，段173。

[62] 同上注，段173。

[63] 同上注，段173。

[64] 同上注，段174。

[65] 同上注，段178。

[66] 同上注，段178等等。

[67] 同上注，段178。

[68] 同上注，段180等等。

[69] 同上注，段182等等。

[70] 同上注，段185。

[71] 同上注，段186。

[72] 同上注，段187。

[73] 同上注，段184。

[74] 同上注，段187。

[75] 同上注，段129。

[76] 同上注，段131。

[77] 同上注，段132。

[78] 同上注，段188等等。

[79] 同上注，段189。

[80] 同上注，段189。

[81] 同上注，段190。

[82] 同上注，段190。

[83] 同上注，段190。

[84] 同上注，段193。

[85]  Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.

[86] IP Bridge v HTC, Higher District Court of Karlsruhe, judgment dated 25 November 2020,段124等等。

[87] 同上注，段124。

[88] 同上注，段125。

[89] 同上注，段125。

[90] 同上注，段125。

[91] 同上注，段194。

[92] 同上注，段194。

[93] 同上注，段194。

[94] 同上注，段103等等。

[95] 同上注，段104。

[96] 同上注，段105。

[97] 同上注，段106。

[98] 同上注，段106。

[99] 同上注，段106。

[100] 同上注，段108。

[101] 同上注，段110和114等等。

[102] 同上注，段111。

[103] 同上注，段111和113。

IP Bridge v TCT

2 二月 2020 - Case No. 6 U 149/20

A. 事实

原告 IP Bridge 作出了声明，涉案专利（潜在的）对实施由欧洲电信标准协会 (ETSI) 制定的 4G/LTE 蜂窝标准是必要的。ETSI 要求专利权人承诺以公平、合理和非歧视 (FRAND) 的条款和条件使实施人能够使用标准必要专利(SEP)。

被告是总部设在中国的TCT集团（TCT-即TCL）的母公司及其德国子公司。TCT 在全球（包括德国）分销和销售支持 4G 的手机。

2014年12月15日，IP Bridge向TCT集团母公司（母公司）发出了其标准必要专利组合相关的通知。在相应的信函中，示例性地提到了两项美国专利——但没有提到（德国）涉案专利。TCT 没有回应。IP Bridge 在 2015 年 1 月和 2015 年 4 月向母公司发送了提醒，但仍未得到答复。这些提醒中也没有提及涉案专利。

2015年7月，IP Bridge在美国对TCT集团旗下公司提起侵权诉讼（美国案）。

2016 年 2 月 1 日，IP Bridge 向母公司发送了（第一个）许可要约。要约附有一份专利清单，其中包括涉案专利。IP Bridge 还提供了有关涉案专利的权利要求对照表（以及进一步涉及其他组合专利的权利要求对照表）。

2016 年 2 月 29 日，IP Bridge 向曼海姆地区法院（地区法院）对 TCT 提起诉讼。

2016 年 3 月 11 日，母公司通知 IP Bridge，双方在美国诉讼程序中交换了侵权和无效争议意见后，可以开始谈判，并要求提供有关 IP Bridge的专利组合的更多信息。2016 年 3 月 22 日，在德国案中代表 TCT 的法律顾问拒绝了 IP Bridge 的许可要约，但表示 TCT “尽管如此”愿意“协商并分别达成” FRAND 条款的许可。

2017 年 5 月 19 日，IP Bridge 向 TCT 提供了另一个（第二个）许可要约。双方没有签订任何协议。

2018 年 4 月 30 日，IP Bridge 向 TCT 提供了修改后的（第三个）要约。IP Bridge 为 TCT 提供了在按量支付和固定支付许可费之间的选择。对于这两种选择，许可费都是根据所谓的“至上而下”法确定的。提供给 TCT 的单位价格是根据 2011-2016 年期间全球行业范围内手机的平均售价(ASP)以美元计算的。TCT也拒绝了这个要约。

2018 年 8 月 7 日，TCT 收到了 IP Bridge 的另一个（第四个）要约，内容几乎相同。这个要约也被拒绝了。

2019 年 5 月，在其在美国案中获胜后不久，IP Bridge 向TCT提出了进一步的（第五个）要约，后者没有任何回应。

2019 年 10 月，地方法院与各方沟通，根据其（初步）观点，2011-2016 年全球行业范围内的平均售价不能作为计算未来使用的许可费的基础。

2019 年 12 月 12 日，IP Bridge 向 TCT 提供了修改后的（第六个）要约。在此要约中，IP Bridge 再次基于“至上而下”法和全球行业范围的平均售价。与之前的要约相比，平均售价应针对许可将生效的每个日历年单独确定。TCT 拒绝了这个要约。

2020 年 1 月 31 日，母公司向 IP Bridge 提出了（第一个）反要约。除了许可费是根据 TCT 自己手机的实际年度全球平均售价计算的，并且使用了较低的累积许可费负担之外，该反要约在很大程度上与 IP Bridge 的最后要约相同。

2020 年 3 月 4 日，IP Bridge 向 TCT 提出了修改后的（第七个）要约，该要约特别考虑了TCT反要约中提到的销售数字。

2020 年 3 月 11 日，TCT 向IP Bridge提出了略微修改的（第二次）反要约，该要约使用了与 2020 年 1 月 31 日之前的反要约相同的许可费计算。2020 年 3 月 19 日，IP Bridge 拒绝了该反要约。2020 年 4 月 7 日，TCT 以银行担保的形式为过去的使用提供担保。

2020 年 8 月 7 日，IP Bridge 向 TCT 提出了进一步（第八个）的要约。2020 年 8 月 18 日，TCT 拒绝了这一要约，并向 IP Bridge 提供了另一个（第三个）反要约。然而，双方没有达成任何协议。

2020 年 8 月 21 日，地区法院驳回了 IP Bridge 提出的对侵权产品的禁令救济、召回和销毁的诉讼请求[1]。（被juris引用；摘要可在此处获得）IP Bridge 向卡尔斯鲁厄高等地方法院（上诉法院）提出上诉。

上诉法院以本判决推翻了地方法院的判决，对TCT下达了禁令，并责令召回和销毁侵权产品[2]。(被引用http://lrbw.juris.de/cgibin/laender_rechtsprechung/list.py?Gericht=bw&Art=en)

B. 法院的说理

上诉法院确认了地方法院的判决，即TCT侵犯了涉案专利[3]。

然而，与地区法院相反，上诉法院认为，TCT 在本案中不能提出所谓的“FRAND”抗辩[4]。TCT认为，通过主张要求禁令救济以及召回和销毁侵权产品，IP Bridge 滥用了其市场支配地位，违反了《欧盟运作条约》（TFEU）第 102 条。

上诉法院同意地区法院的观点，即 IP Bridge 在涉案专利许可市场上具有支配地位[5]。从技术角度看，为了符合相关标准而使用涉案专利是必要的；审判中并未表明存在可替代涉案专利教导的其他技术替代方案[6]。

尽管如此，然而在上诉法院看来，IP Bridge 并没有滥用其市场支配地位[7]。IP Bridge不准备就提供给TCT的要约的条款以外的条款签订协议的这一事实并不意味着其构成TFEU第 102条规定的滥用，因为TCT一直不愿意签订 FRAND 许可[8]。

侵权通知

上诉法院认为，IP Bridge 在 2016 年 2 月 1 日的信函中作出了适当的侵权通知[9]。之前在 2014 年和 2015 年发送给 TCT 的信件被认为是不充分的，因为它们没有明确提及涉案专利[10]。

鉴于符合相关的标准需要大量的标准必要专利，侵权通知应提请侵权人注意到具体涉案专利的侵权行为[11]。上诉法院解释说，专利权人应在事实和地域方面缩小信息范围，以便让实施人能够评估侵权指控的实质情况[12]。2016 年 2 月 1 日的信函首次满足了这些要求，该信函明确提到了涉案专利，并包含有关该专利的权利要求对照表[13]。

意愿

与地区法院的观点相反，上诉法院认为 TCT 并没有充分表达获得许可的意愿[14]。

遵循德国联邦法院 (Bundesgerichtshof) 在西斯维尔诉海尔案中的判例法[15]（Sisvel v Haier 摘要可在此处获得，Sisvel v Haier II 摘要可在此处获得），上诉法院解释说，实施人必须“清楚并明确地”声明其愿意以实际上是 FRAND 的任何条款来获得许可，并随后以“目标导向”的方式进行许可谈判[16]。

根据上诉法院的说法，“意愿”不是“静态”的立场：关于实施人在某个时刻愿意（或不愿意）的结论今后不会保持不变[17]。而且，需要“持续的意愿”来获得许可[18]。如果没有实施人方面的这种“持续意愿”，关于针对标准必要专利权人滥用其市场支配地位的指控将“毫无意义”[19]。

上诉法院解释说，不能将“意愿”具体、详细的要求置于“一般定义”之下[20]。相关标准如下：一个关注于有利双方共同利益的谈判的成功结果的“合理的一方”会在特定的谈判阶段为实现这一目标做什么[21]。对于有关的评估，需要个案分析[22]。上诉法院指出，表达谈判意愿本身并不能保证相关声明是严肃的；相反，它可能只是实施人应用的“拖延策略”的一部分[23]。为了维护专利权人和实施人的竞争者的利益，不能容忍“拖延策略”[24]。

实施人是否使用拖延策略，这需要根据“客观标准”来评估，具体考虑实施人在从标准必要专利权人处收到侵权通知或许可要约后的行为[25]。一个“善意且诚信”的实施人会寻求尽快签订许可，以缩短专利（或组合）在不支付费用的情况下被使用的时间[26]。 这样的实施人宁愿“敦促”专利权人履行其义务，也不去考虑如何将标准必要专利权人的义务用于侵权诉讼中的抗辩目的使用[27]。

因此，上诉法院认定，实施人甚至有义务对专利权人的“非 FRAND”许可要约作出反应[28]。在“复杂”情况下，例如标准必要专利许可中通常出现的情况，通常不清楚哪些条款是合理的，因此谈判的任务是“阐明”各方的共同利益并解决任何的法律问题[29]。尤其如此，因为 FRAND 是一个“范围”，并且标准必要专利权人通常能够考虑实施人的“正当利益”，但前提是在谈判中获知了各自的理解[30]。上诉法院强调，实施人有任何疑虑应尽早沟通，而不是等到诉讼程序都启动了[31]。

在这种情况下，上诉法院强调，即使标准必要专利权人的要约“明显”不符合 FRAND[32]实施人（仍然）有义务参与谈判过程。但是，在这种情况下，说明要约“显然”不是 FRAND 的原因就足够了[33]。实施人必须解决与标准必要专利权人有关的所有方面[34]。诚信原则要求所有未决问题立即“摆上台面”；实施人不能只关注于与 FRAND相冲突的一个“明显”元素，而对于它同样视为“非 FRAND”的其他方面则保持沉默只字不提[35]。这尤其适用于明显的方面，例如许可费计算的基本结构[36]。

在例外情况下，当标准必要专利权人的要约违背FRAND 原则达到一定程度时，实施人完全没有义务做出反应——从客观的角度来看——人们可以假设该要约“不是认真的”[37]。然而，为此，通常要约的仅一个条款“明显”是非 FRAND 的是不够的；上诉法院要求考虑所有相关事实进行“全面评估”[38]。

在此背景下，上诉法院认为TCT没有意愿签订FRAND许可[39]。尽管 TCT 声称其准备这样做，但其随后的行为却表明，其陈述并不是严肃的，并且 TCT 的意图是尽可能拖延谈判和签订许可[40]。上诉法院认为，TCT 的整体行为表明，其逐步地对收到的要约表达各种质疑，纯粹是出于战术考虑，目的是推迟有关程序[41]。

上诉法院指出，TCT仅在收到2018 年 4 月 30 日（第三个）许可要约之后评论了 IP Bridge使用的基本许可费计算，尽管TCT已收到有关相关参数的详细介绍以及日期为 2016 年 2 月 1 日的第一次要约，和随后的进一步的信息[42]。根据上诉法院的说法，没有理由在第一个许可要约提出（超过）两年后才提出对许可费计算的质疑[43]。2018 年 4 月 30 日的（第三个）要约引入“至上而下”法这一事实并未标志着谈判的新起点，因为几个计算参数（例如，平均售价、所有被许可人的统一费率）保持不变[44]。此外，每一个新的要约都不能“重置”谈判回到开始，使得实施人在那个时间点之前的行为与意愿的评估无关[45]。

而且，最初，TCT 主要对一项关于调整许可费率的合同条款提出异议，这一事实被上诉法院视为非善意的标志[46]。上诉法院没有最终认定该调整条款是否为 FRAND，或者单个有问题的条款是否会使得整个要约“非 FRAND”（上诉法院对此表示怀疑），因为像 TCT 这样的实施人对标准必要专利权人的要约的评价仅限于一个条款，违反了其参与谈判的义务[47]。在本案中，TCT 负有这样的责任，尽管地区法院在一审程序中曾表示争议的调整条款不是 FRAND的[48]。地方法院的表示并未免除 TCT 与 IP Bridge 进行谈判的责任[49]。

在审核TCT的反要约之后，上诉法院认为TCT并不准备与 IP Bridge 谈判以做出经济上的让步[50]。在对 IP Bridge 的所有反要约中，TCT 使用其自己手机的（较低的）平均售价作为许可费计算的基础。通过坚持这一“最高立场”，TCT 确认了其并不是严肃地愿意获得许可[51]。这不会被地区法院在一审程序和判决中支持 TCT的平均售价方法的这一事实而改变：然而，TCT 并未免除其谈判义务[52]。

标准必要专利权人的要约

上诉法院解释说，即使出于说理的原因就算TCT 是善意的被许可人，但不管怎么看，IP Bridge 方面都不构成TFEU 第 102 条规定的滥用行为，因为IP Bridge的于 2020 年 3 月 4 日（第七个）作出的许可要约无论如何都是 FRAND的[53]。

首先，用于许可费确定的“至上而下”法没有任何法律问题[54]。根据上诉法院的说法，IP Bridge 提供的按单位计算的按量支付许可费也没有问题[55]。根据被许可人的销售结果计算的许可费（单位价格；基于收入或收益的费用）原则上从竞争法的角度来看是“中性的”，因此是可以接受的[56]。

相反，上诉法院强调“基于成本”的方法不适合于计算 FRAND 费率[57]。一方面，很难评估与开发一项或一组专利相关的成本[58]。另一方面，发明开发所产生的成本通常不适合衡量其价值：“基于成本”的方法忽略了形成发明的决定性因素主要是发明人的“创造性行为”，而不是成本[59]。上诉法院在这种情况下指出，为获得标准必要专利所支付的价格不能作为专利产生的成本[60]。此外，上诉法院强调，对 FRAND 符合性的评估不在于“对单个计算参数的单独审查”，而应关注最终许可费率是否是 FRAND的[61]。上诉法院毫不怀疑 IP Bridge 提供的费率是 FRAND的，特别是因为 IP Bridge 已与三个被许可人就相同的费率（包括相同的数量折扣制度）签订了协议[62]。鉴于它们是在没有诉讼的情况下签订的，因此可以将相关的许可用作基准参考[63]。所有现有的被许可人（其销售数据差异较大）都接受了数量折扣制度，这表明它既不是剥削性也不是歧视性的[64]。

此外，上诉法院解释说，IP Bridge 使用的单个的计算参数也是 FRAND的。与地区法院相比，上诉法院对 IP Bridge 使用年度全球行业范围的平均售价作为许可费计算基础并没有提出异议[65]。与无线技术无关的特性，例如制造商的声誉、品牌、设计或高生产质量，实际上都包含在行业范围平均售价内。但是，特别低价的手机也包括在内，例如以倾销价格出售的设备，或不考虑标准必要专利许可费用的价格[66]。用于许可费计算的累积许可费负担也没有问题，因为其处于之前其他法院接受为 FRAND 的范围之内[67]。即使其他标准必要专利权人应用较低的百分比，也不能表明 IP Bridge 使用的累积费率具有剥削性[68]。

此外，上诉法院认为 IP Bridge 计算自己在 4G 相关的标准必要专利中所占份额的方式没有任何问题[69]。IP Bridge 基于两项不同的标准必要专利的全局研究得出了一个平均值。鉴于两项研究的结果相似，上诉法院认为这是可以接受的；而且，IP Bridge 没有义务使用更低结果的那项研究[70]。

进一步，上诉法院认为IP Bridge 并未根据专利覆盖范围为特定国家/地区提供不同的费率的做法是应当接受的[71]。IP Bridge 提出的统一全球费率并未使得许可要约本身具有剥削性，因为选择此选项有充分的理由，例如，更简易的合同管理[72]。上诉法院指出，在这种条件下提出的要约是否会不利于在专利覆盖率低的地区具有高销售额的实施人，，是无关紧要的：只要标准必要专利权人履行谈判义务，且其要约相对于“平均被许可人”来说是FRAND的[73]。通常来说，只有当不同的国家/地区因为没有不同的费率会导致“剥削性”费率时，才有可能发生滥用[74]。在上诉法院看来，没有迹象表明这里属于这种情况，特别是因为 IP Bridge 的其他三个被许可人已经以各自的形式接受了要约[75]。

除此之外，上诉法院认为 IP Bridge 提议的数量折扣也是 FRAND的[76]。标准必要专利权人没有义务向所有被许可人提供“统一收费表”[77]。基于销售量的折扣会导致销售量较低的实施人的每单位费用更高，但是，当存在“事实证明”时，是允许的[78]。上诉法院承认，标准必要专利权人可能有动机激励实施人争取更高的销售额，以实现标准的更广泛传播，从而获得更多的被许可人[79]。向“大型且有信誉的”实施人提供特别优惠的折扣也是合理的，因为与此类公司签订的协议也可能促使其他被许可人签订协议[80]。

对于 IP Bridge 要约中包含的许可费调整条款，上诉法院确认该条款也是 FRAND的[81]。所述条款允许被许可人对许可的专利的有效性、必要性和使用性提出质疑，并在许可组合发生“重大变化”（双向）时提供专利使用费调整。只有在“重大变化”的情况下才会触发该调整机制，这是出于当事人的利益，以避免因微不足道的理由进行调整，上诉法院认为这些理由值得保护[82]。基于类似的考虑，上诉法院接受了另外一项条款，该条款规定对于向 TCT 提供的根据量进行支付的许可费模型的确定基础的年度行业范围的平均售价进行调整，同样符合FRAND[83]。

实施人的反要约

最后，与地区法院的观点相反，上诉法院认定TCT于2020 年 3 月 11 日作出的反要约“显然”不是FRAND的[84]。

在本案中，IP Bridge 在向 TCT 提出的若干要约中反复说明了其基于每单位专利使用费制度的“一般许可模式”，并且还表明它已与第三方被许可人签订了各自的协议[85]。上诉法院认为，在这种情况下，要求标准必要专利权人从根本上改变“许可模式”的反要约不是FRAND的[86]。在签订的许可合同中，标准必要专利权人已同意特定条件，在与新的被许可人谈判时必须考虑这些条件，以保持其市场支配地位[87]。事实上，根据上诉法院的说法，如果标准必要专利权人与新的被许可人就费用结构达成一致，该费用结构与迄今为止在许可协议中提供和使用的模式根本不同，则该标准必要专利权人可能会被指控歧视现有的被许可人[88]。此外，由于其市场支配地位，标准必要专利权人可能不得不向现有的被许可人提供新的许可费用结构，这将导致“许可模式”的彻底转变[89]。上诉法院认为，标准必要专利权人没有义务接受这种根本性的改变[90]。

此外，上诉法院指出，在这种情况下，实施人不需要额外的保护。一方面，其他被许可人对标准必要专利权人的“许可模式”的接受，表面上看是符合市场条件的[91]。另一方面，标准必要专利权人的“许可模式”必须是针对特定被许可人来说是 FRAND的。这意味着实施人可以对“许可模式”的所有条件提出异议，而不管其他被许可人是否已经同意这些条件[92]。然而，实施人不能要求专利权人接受完全不同类型的许可费，即使自己的（反）要约是 FRAND的[93]。

[1] IP Bridge v TCT, District Court of Mannheim, judgment dated 21 August 2020, Case No. 2 O 136/18.

[2] IP Bridge v TCT, Higher District Court of Karlsruhe, judgment dated 2 February 2022, Case No. 6 U 149/20.

[3] 同上注，段116-170。

[4] 同上注，段171。

[5] 同上注，段172。

[6] 同上注，段174。

[7] 同上注，段173。

[8] 同上注，段174。

[9] 同上注，段173。

[10] 同上注，段173。

[11] 同上注，段173。

[12] 同上注，段173。

[13] 同上注，段173。

[14] 同上注，段184。

[15] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17, 摘要可在此处获得; Sisvel v Haier II, Federal Court of Justice, judgment 24 November 2020, Case No. KZR 35/17, 摘要可在此处获得.

[16]  IP Bridge v TCT, Higher District Court of Karlsruhe, judgment dated 2 February 2022, 段176。

[17] 同上注，段177。

[18] 同上注，段177。

[19] 同上注，段177。

[20] 同上注，段178。

[21] 同上注，段178。

[22] 同上注，段178。

[23] 同上注，段179。

[24] 同上注，段179。

[25] 同上注，段180。

[26] 同上注，段180。

[27] 同上注，段180。

[28] 同上注，段181。

[29] 同上注，段181。

[30] 同上注，段181。

[31] 同上注，段181。

[32] 同上注，段182。

[33] 同上注，段182。

[34] 同上注，段182。

[35] 同上注，段182。

[36] 同上注，段182。

[37] 同上注，段183。

[38] 同上注，段183。

[39] 同上注，段184。

[40] 同上注，段184。

[41] 同上注，段185。

[42] 同上注，段186等等。

[43] 同上注，段188和190。

[44] 同上注，段190。

[45] 同上注，段190。

[46] 同上注，段193。

[47] 同上注，段193。

[48] 同上注，段193。

[49] 同上注，段193。

[50] 同上注，段197。

[51] 同上注，段199。

[52] 同上注，段199等等。

[53] 同上注，段203等等。

[54] 同上注，段206。

[55] 同上注，段207。

[56] 同上注，段207。

[57] 同上注，段208。

[58] 同上注，段208。

[59] 同上注，段208。

[60] 同上注，段208。

[61] 同上注，段210。

[62] 同上注，段220和210。

[63] 同上注，段223。

[64] 同上注，段221。

[65] 同上注，段209。

[66] 同上注，段211。

[67] 同上注，段212。

[68] 同上注，段212。

[69] 同上注，段213。

[70] 同上注，段213。

[71] 同上注，段215等等。

[72] 同上注，段216。

[73] 同上注，段217。

[74] 同上注，段217。

[75] 同上注，段217。

[76] 同上注，段218等等。

[77] 同上注，段218。

[78] 同上注，段218。

[79] 同上注，段218。

[80] 同上注，段218。

[81] 同上注，段228。

[82] 同上注，段228。

[83] 同上注，段209。

[84] 同上注，段232。

[85] 同上注，段234。

[86] 同上注，段234。

[87] 同上注，段234。

[88] 同上注，段234。

[89] 同上注，段234。

[90] 同上注，段234。

[91] 同上注，段234。

[92] 同上注，段234。

[93] 同上注，段234。

Cases from LG Düsseldorf - Regional Court

Sisvel v Haier

3 十一月 2015 - Case No. 4a O 93/14

1. Facts
   Claimant, a non-practicing entity, is the proprietor of European patent EP B, originally granted to the applicant “A”, allegedly covering a feature of the GPRS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market GPRS-based devices. On 10 April 2013, Claimant made a commitment towards ETSI declaring to grant a license on FRAND terms with regard to, inter alia, patent EP B. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014 Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Patent Program” and made an offer but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by Defendant “J” without a counter-offer. By letter as of 12 August 2015 Defendants submitted a counter-offer regarding patent EP B which was, in turn, refused by Claimant on 24 August 2015. After Claimant had brought an action against “I” and “J”, Defendants made yet another licensing offer in their court filing as of 21 September 2015 which was refused as well. In the course of the oral hearings on 29 September 2015, Defendants submitted a security in the amount of € 5000 and rendered account in respect of acts of use in the past.
2. Court’s reasoning
   1. Market power and notice of infringement
      The court left open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power (cf. below). As to the infringement notification, [416] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules. In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.
      
      
   2. The SEP owner’s licensing offer
      As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [417]
      
      
   3. The standard implementer’s reaction
      According to the court even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [418] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [419] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [420]
      
      
3. Other important issues
   In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [421] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [422]

• [416]  Case No. 4a O 93/14, para. 90-94
• [417]  Case No. 4a O 93/14, para. 96-98, 125
• [418]  Case No. 4a O 93/14, para. 98-101
• [419]  Case No. 4a O 93/14, para. 14, 103-109
• [420]  Case No. 4a O 93/14, para. 103-111
• [421]  Case No. 4a O 93/14, para. 37-40
• [422]  Case No. 4a O 93/14, para. 118-123

Sisvel v Haier 2

3 十一月 2015 - Case No. 4a O 144/14

1. Facts
   The facts of the case are very similar to those of LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14: Claimant, a non-practicing entity, is the proprietor of the European patent EP D, originally applied for by “A” and formerly owned (after various transfers) by “B”, allegedly covering part of the UMTS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market UMTS-based devices. On 10 April 2013 Claimant made a FRAND commitment towards ETSI, inter alia regarding patent EP D. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014, Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Program” but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by “J” without a counter-offer. By letter as of 13 October 2014 one of the Defendants submitted a first counter-offer regarding patent EP D which Claimant refused on 20 October 2014 referring to the ongoing negotiations with the parent company of that Defendant. On 12 August 2015 Defendants “I” and “J” made a second counter-offer which was rejected by Claimant on 24 August 2015. After Claimant had brought a lawsuit Defendants made a last counter-offer in their court filing as of 22 September 2015 that was also refused by Claimant. In the course of the oral hearings of 29 September 2015, Defendants submitted a security (€ 5000) and rendered account in respect of acts of use in the past.
2. Court’s reasoning
   Except for references to the slightly differing facts of both cases the court’s considerations are identical to those in the decision LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14.
   1. Market power and notice of infringement
      The court left open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power (cf. below). As to the infringement notification, [423] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules.
      
      In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.
   2. The SEP owner’s licensing offer
      As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [424]
   3. The standard implementer’s reaction
      According to the court, even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [425] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [426] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [427]
3. Other important issues
   In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [428] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [429]

• [423] Case No. 4a O 93/14, para. 90-94
• [424] Case No. 4a O 93/14, para. 96-98, 125
• [425] Case No. 4a O 93/14, para. 98-101
• [426] Case No. 4a O 93/14, para. 14, 103-109
• [427] Case No. 4a O 93/14, para. 103-111
• [428] Case No. 4a O 93/14, para. 37-40
• [429] Case No. 4a O 93/14, para. 118-123

Saint Lawrence v Vodafone

31 三月 2016 - Case No. 4a O 73/14

1. Facts
   Since 28 August 2014 Claimant, a non-practicing entity, is the proprietor of the European patent EP 1 125 276 B1 “J”, originally granted to applicants “Voiceage, and allegedly covering part of the AMR-WB standard. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices, inter alia devices produced by the Intervener in this case. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001, Claimant (who was not an ETSI member during the setting of the AMR-WB standard) made, on 29 May 2001, a commitment towards ETSI to grant licenses on FRAND terms inter alia for patent EP J. Claimant and its parent company “O” offer the SEP and all other patents of the same family to third parties by means of a portfolio license. Licensing conditions are accessible on the Internet and various producers in the sector have taken a license under these conditions. Prior to the submission of the patent infringement action on 23 July 2014 and to the advance payments on costs on 29 July 2014, Claimant alerted neither Defendant nor the manufacturer of the contested embodiments, who acted as an intervener in the present proceedings and became aware of the lawsuit in August 2014. By e-mails on 31 July and (as a reminder) on 9 December 2014, the first of which included a copy of the statement of claims and reached the defendant before it was formally served with the statement, Claimant notified the alleged patent violation to Defendant. After Defendant’s reply as of 12 January 2015, Claimant presented a draft licensing agreement to Defendant by letter as of 22 April 2015. On 9 December 2014, the Intervener (HTC) declared willingness to take a license for that patent, inter alia for the patent-in-suit, provided infringement was found in Mannheim’s District Court. It further declared that it would accept royalties determined by a court or arbitration tribunal. Claimant, in turn, offered a licensing agreement by letters as of 12 January 2015 and 25 March 2015 respectively. In the course of meetings taking place since 23 January 2014, [430] Claimant offered a license to the Intervener. On 23 February 2015 and on 2 April 2015 respectively, the Intervener made two licensing offers, including third party determination (arbitration panel or English court) of the amount of royalty, for the whole German patent portfolio of Claimant. An additional offer for a licensing agreement, limited to Germany and implementing a royalty of USD 0.0055 per patent by reference to the “WCDMA Patent Pools”, was made by the Intervener on 6 March 2015 and 24 September 2015 respectively, but it was finally refused by Claimant on 4 October 2015. Moreover, the Intervener provided a bank “guarantee of payment” as of 3 September 2015, being modified by letter as of 10 November 2015, and also rendered account of past and prospective sales in Germany since 2011.
2. Court’s reasoning
   1. Market power and notice of infringement
      The court leaves open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power. [431] The court declared the Huawei rules applicable to claims for the recall of products. [432] As regards the Huawei requirement to alert the standard user of the infringement, the decision arrived at various findings of interest: Firstly, the judges found that—in “non-transitional” cases where the lawsuit was brought after the Huawei decision—the infringement notification has to take place before the action is filed, or the latest before the advance payment on costs is made. In transitional cases, such as the present case, a delayed infringement notification, taking place after the advance payment on costs as well as the submission of the court action, but before the statement of claims is served, is admissible. [433] Moreover, an infringement notification could possibly be omitted (in particular) if—as in the present case—the patent user already disposes of all necessary information and lacks willingness to license. [434] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [435] Secondly, the court specified the minimum content of the infringement notification which has to indicate at least the number of the patent, the contested embodiments and the alleged acts of use performed by the standard implementer. The court did not decide whether additional information has to be provided, in particular regarding the interpretation of the patent claims or on which part of the standard the patent reads, but it stated that such additional information is not harmful to the patent proprietor. [436] Lastly, the court detailed on the particular situation of the Intervener, being Defendant’s manufacturer and supplier in the present case: Even though a FRAND defense successfully raised by the Intervener would in general also cover subsequent levels of the distribution chain, the Huawei requirements apply only indirectly to suppliers of contested embodiments which have not been sued themselves. Accordingly, the SEP proprietor is not obliged to notify the patent infringement to third parties, but as soon as a request to grant a license on FRAND terms is submitted the (adapted) Huawei procedure applies. [437] In casu, no separate infringement notice vis-à-vis the Intervener was required since the Intervener was, since August 2014, aware of the action having been brought.
   2. The SEP owner’s licensing offer
      Since the patent user did not express its willingness to conclude a licensing agreement in due time, the court found Claimant to comply with the Huawei requirement to submit a licensing offer on FRAND terms even though the offer was made in the course of the ongoing litigation. For transitional cases, as the present one, this holds true even if infringement notification and court action take place at the same time. [438] Besides, the court analyzed under which circumstances licensing conditions can be considered as FRAND according to Huawei. In the opinion of the judges, the more licensing agreements implementing comparable terms the SEP proprietor has already concluded, the stronger is the presumption that these conditions are FRAND, unless factual reasons—which are to be demonstrated by the patent user—justify modified terms. Recognized commercial practice in the relevant sector has to be considered when defining the admissible scope of the licensing agreement. If patent portfolios are usually covered by group or worldwide licenses in the relevant market, a (worldwide) portfolio license will be FRAND unless the circumstances of the specific case, e.g. the SEP proprietor’s market activity being limited to one geographic market, require a modification. [439] Accordingly, Claimant’s (worldwide) licensing offer to Defendant for the whole AMR-WB pool, demanding royalties of USD 0.26 per mobile device that implemented the standard and was produced or marketed in countries in which the SEP was in force, and complying with Claimants existing licensing practice (accessible on the Internet and already implemented in 12 licensing agreements) was declared FRAND. While the court considered that comparable licensing agreements “represent an important indicator of the adequacy of the license terms offered” it clarified that the significance of a patent pool as an indication of FRAND conformity is “limited”. Defendant and the Intervener failed to show that the portfolio comprised (non-used) non-SEPs as well. [440] They further failed to show that the pre-concluded licensing agreements provided no valid basis for comparison as they were concluded under the threat of pending litigation. [441] In order to fulfill the Huawei obligation of specifying the calculation of royalties, the SEP proprietor only has to provide the information necessary to determine the amount of royalties to be paid, e.g. the royalty per unit and the products covered by the license. While the court left undecided whether additional indications, e.g. concerning the FRAND character of the licensing offer, are necessary to comply with Huawei, it found that the SEP proprietor’s duty to inform should not be interpreted too strictly as FRAND does regularly encompass a range of values that will be fair, reasonable, and non-discriminatory. [442] Claimant’s licensing offer presented to the Intervener was considered as being FRAND for the same reasons. Furthermore, the court emphasized that the contractual clause allowing for judicial review of the royalties offered could be a possible way to avoid abusive practices and to ensure that licensing offers correspond to FRAND terms. [443]
   3. The standard implementer’s reaction
      The court found that the more details the infringement notification contains, the less time remains for the standard user to examine the patent(s) at issue and to express its willingness to conclude a licensing agreement on FRAND terms. In the present case, Defendant did not comply with Huawei because it took more than five months to react and then only asked for proof of the alleged infringement. Given this excessive delay, the court did not decide whether Defendant’s reaction satisfied the Huawei requirements in terms of content. It denied the possibility to remedy a belated reaction by a subsequent declaration of willingness to license. On the contrary, and as a consequence of the patent user’s non-compliance, the SEP proprietor may continue the infringement action without violating Article 102 TFEU, but it still has to grant licenses on FRAND terms. [444] Whether the Intervener satisfied the ECJ criteria was left undecided. [445] The court made some further remarks of interest as to the Huawei requirements concerning the standard implementer: Firstly, it left undecided whether the obligation of the patent user to diligently respond is caused also by a (potentially) non-FRAND licensing offer. [446] Secondly, a standard user who has taken a license is not prevented from challenging validity and essentiality of the SEP afterwards, nor is the SEP proprietor entitled to terminate the license if such a challenge takes place. However, the standard implementer may not delay the (unconditional) conclusion of the licensing agreement until a final court decision on these issues has been rendered. While validity and standard-essentiality is litigated, the licensee remains obliged to pay royalties and it cannot request to insert into the licensing contract a clause entitling it to reclaim paid royalties in case of its success in court. [447] Thirdly, as, in the present case, no specific counter-offers satisfying FRAND terms were submitted and Defendant could not establish that Claimant had waived this requirement the court did not decide on whether a SEP proprietor is obliged to negotiate further although itself and the patent user have submitted FRAND offers. [448] None of the counter-offers of the Intervener were FRAND in terms of content. They were either inadmissibly limited to Germany, contained no precise royalty, were not submitted “promptly” because the standard user had waited until the oral pleadings in the parallel procedure, or they proposed royalties per device which the court considered as too low. [449] While it was therefore held to be irrelevant whether, in the first place, the Intervener duly declared its willingness to license, the court emphasized that the Intervener’s readiness to take a license only after the SEP infringement was determined in court did not satisfy the Huawei standard of conduct. [450] Moreover, the obligation imposed by Huawei to provide appropriate security and to render account was not fulfilled. While Defendant refrained from taking any of these actions, the Intervener waited several months after the counter-offers were refused in order to submit its bank “guarantee of payment”, which was not recognized as “appropriate security” due to its amount and its limitation to acts of use in Germany. [451] Neither was the Intervener’s initial proposal to have the security—if requested by Claimant—determined by an arbitration tribunal or by an English court accepted as an appropriate way to provide security. [452]
3. Other important issues
   According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [453] Suing a network operator instead of the undertakings producing devices operating in the network constitutes (at least under the circumstances of this case and absent selective enforcement) no violation of competition law even though this strategy might aim at using the action against the network operator as a “lever” to obtain licensing commitments from the device suppliers. On the other hand, device manufacturers are entitled to a FRAND license as well and can raise the FRAND defense if such a license is not granted. In consequence, the court perceives a fair balance of interests as the SEP proprietor can choose on which level of the chain of production to sue while the undertakings in the chain of production can choose on which level to take a license. [454] Furthermore, no patent ambush-defense based on § 242 BGB could be raised because, firstly, Defendant and the Intervener could not substantiate the alleged patent ambush by “Y” and “C”, being the original SEP proprietors; secondly, they could not show that a different patent declaration conduct would have resulted in a different version of the standard excluding the patent-in-suit; thirdly, the alleged patent ambush would, arguably, have resulted only in a FRAND-licensing obligation and, fourthly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [455]

• [430] This is the date mentioned by the Court although “23 January 2015” may seem more plausible and the date given by the Court may result from a scrivener’s error.
• [431] Case No. 4a O 73/14, para. 184
• [432] Case No. 4a O 73/14, para. 187
• [433] Case No. 4a O 73/14, para. 195 et seq.
• [434] Case No. 4a O 73/14, para. 208-210
• [435] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
• [436] Case No. 4a O 73/14, para. 193
• [437] Case No. 4a O 73/14, para. 270 et seq.
• [438] Case No. 4a O 73/14, para. 222 et seq.
• [439] Case No. 4a O 73/14, para. 225 et seq.
• [440] Case No. 4a O 73/14, para. 225 et seq. On the relevance of the SIPRO-pool royalty rates, cf. LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 245-248. On the facts indicating that a worldwide license was appropriate LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 249-255.
• [441] Case No. 4a O 73/14, para. 234-242. The court argued that it is questionable in principle how much the threat of a claim for injunctive relief can (inadmissibly) affect license agreement negotiations, since the Orange Book case law of the BGH (German Federal Court of Justice), the Motorola decision of the European Commission, and now the CJEU judgment in the Huawei Technologies/ZTE Case could be and can be invoked against inappropriate demands that are in breach of antitrust law.
• [442] Case No. 4a O 73/14, para. 256 et seq.
• [443] Case No. 4a O 73/14, para. 279 et seq.
• [444] Case No. 4a O 73/14, para. 214-220
• [445] Case No. 4a O 73/14, para. 214-220; 278
• [446] Case No. 4a O 73/14, para. 266
• [447] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
• [448] Case No. 4a O 73/14, para. 264
• [449] Case No. 4a O 73/14, para. 291 et seq.
• [450] Case No. 4a O 73/14, para. 278
• [451] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
• [452] Case No. 4a O 73/14, para. 304
• [453] Case No. 4a O 73/14, para. 189
• [454] Case No. 4a O 73/14, para. 309-313
• [455] Case No. 4a O 73/14, para. 317 et seq.

Unwired Planet v Samsung

19 一月 2016 - Case No. 4b O 120/14

1. Facts
   Since 7 March 2014 Claimant, a non-practicing entity, is the proprietor of European patent EP D, allegedly covering a feature of the GSM standard, originally granted to the Intervener, and subsequently transferred to company “I”. Defendants, belonging to the K-group, produce and market GSM- and UMTS-based devices.
   In an agreement as of 26 October 2011, the Intervener granted a worldwide non-exclusive license to Qualcomm Inc., being, in turn, allowed to grant sub-licenses to its customers. Furthermore, by agreement as of 1 February 2014 one of the Defendants was granted a worldwide, non-exclusive license to patents owned by the Intervener.
   On 10 January 2013, the Intervener concluded a so-called “Master Sales Agreement” (MSA), concerning the exploitation of a portfolio of more than two thousand patents, with “E”, “F” and its subsidiaries. Claimant became a party to the MSA later on. After its accession to the MSA, “I”, by assuming the existing FRAND obligation of the Intervener in accordance with the MSA, made a separate FRAND commitment towards ETSI on 14 June 2013 and declared, in an agreement as of 13 February 2013, to ensure that subsequent acquirers equally assume this obligation. Accordingly, after the transfer of patent EP D to Claimant the latter made, on 6 March 2014, a separate commitment towards ETSI declaring to be willing to grant licenses on FRAND terms with regard to, inter alia, patent EP D.
   In order to implement the MSA the parties concluded three transfer agreements. Claimant argues that the Intervener validly transferred a part of its patent portfolio, including patent EP D, by agreement as of 11 February 2013 to undertaking “B”. On 13 February 2013, “B”, in turn, transferred the patent portfolio, including patent EP D, to “I”. After successfully requesting, on 3 September 2013, an amendment of the patent register, being performed on 24 October 2013, “I” transferred, on 27 February 2014, the patent portfolio, including patent EP D, to Claimant. Claimant successfully requested, on 7 March 2014, an amendment of the patent register which was performed on 3 July 2014.
   As a reaction to Claimant’s public license proposal including a royalty of USD 0.75 per mobile device Defendants allegedly submitted a counter-offer but no licensing agreement was concluded.
2. Court’s reasoning
   1. Market power
      The court stressed that an application of Article 102 TFEU does not automatically result from SEP ownership but that it requires proof of a dominant position on the relevant market being conveyed by the SEP in question. Due to the fact that products not implementing the patent-in-suit could not effectively compete on the relevant market because of GSM being a key feature for such products market power of Claimant was affirmed. [456]
   2. Applicability of the Huawei rules to damages and the rendering of accounts
      While the Huawei rules of conduct apply to actions for injunction, recall and destruction of products they are, in principle, not directly applicable to claims for damages and the rendering of accounts. [457] Nor is it necessarily abusive for a SEP proprietor to bring an action for damages and the rendering of accounts without having notified the standard implementer of an infringement and without having offered a FRAND license beforehand. The Huawei obligations do, however, have an indirect impact on the extent to which damages and the rendering of accounts are due: Where the SEP proprietor fails to grant a FRAND license although he has made a FRAND commitment and the standard implementer has expressed its readiness to take a license, damages are limited to the FRAND royalty level but only for the period after the SEP proprietor’s abusive refusal to license. [458] Claims for information and the rendering of accounts must, in this event, be limited to what is necessary for determining FRAND-based damages. [459]
   3. Cap on damages/rendering of accounts in casu
      In casu Defendant could not show that he had complied with its Huawei obligation to sufficiently express its willingness to take a FRAND license. In consequence, no cap on Claimant’s claim for damages was deemed appropriate. [459]
3. Other important issues
   Whether a SEP proprietor is free to enforce its patent in court or whether the proprietor is obliged to grant a FRAND license has to be determined under Art. 102 TFEU, not Art. 101 TFEU. [460] A FRAND declaration is not an unconditional offer made by the patent proprietor to enter into a licensing agreement with anyone willing to take a license, it merely expresses that the proprietor is, in principle, ready to grant a FRAND license if the patent in question conveys market dominance. As such, the FRAND commitment merely specifies a duty to license which competition law would impose anyway but it has an impact on the patent owner’s obligations under Art. 102 TFEU. [461]
   As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes—also with regard to claims for damages and the rendering of accounts—presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. The non-registration of “B” as an interim owner was considered irrelevant under the circumstances of the present case (but not generally). Case No. 4b O 120/14, para. I, 1-2
   The MSA and the subsequent transfer agreements neither violate the German provisions on merger control (§§ 35-43 GWB) since, in any case, merger control thresholds are not reached.
   Nor was a violation of the European provisions on anticompetitive agreements (Article 101 TFEU) or on the abuse of a dominant position (Article 102 TFEU) found. Case No. 4b O 120/14, para. I, 4, a-c In particular, the transactions did not aim at enforcing non-FRAND royalties or at discriminating between licensees and the agreements framing the transactions ensured that the acquirers of the relevant patents were bound by (the initial) FRAND commitments. [462] The acquirer of a SEP is neither obliged to continue the transferor’s licensing practice in an unmodified manner nor to implement exactly the same conditions in all licensing agreements, provided the conditions are FRAND and no unjustified discrimination takes place. It is not abusive in itself for a (former) SEP proprietor to split its portfolio and to transfer the parts to several acquirers, thereby trying to arrive at higher overall royalties being paid for the portfolio. Nor is a resulting increase in the number of licenses a standard implementer has to take per se inacceptable. However, licensing conditions are FRAND only if the cumulative royalty level resulting from the licensing of all pertinent SEPs is not excessive. Putting it differently, where the royalty level for the entire portfolio was below or at the lower end of the FRAND range, it is not abusive to arrive, by way of splitting the portfolio and licensing its parts separately, at a higher overall royalty level within the FRAND range. Furthermore, the transaction agreements did not amount to price fixing. [463]

• [456] Case No. 4b O 120/14, para. VII, 6, a
• [457] Case No. 4b O 120/14, para. VII, 6, b, aa, bb
• [458] Case No. 4b O 120/14, para. VII, 6, b, dd
• [459] Case No. 4b O 120/14, para. VII, 6, b, ee
• [460] Case No. 4b O 120/14, para. VII, 4
• [461] Case No. 4b O 120/14, para. VII, 5
• [462] Case No. 4b O 120/14, para. I, 4, b, aa
• [463] Cf. for details LG Düsseldorf, 19 January 2016 - Case No. 4b O 120/14, para. I, 4, b, bb

Saint Lawrence v Vodafone 2

31 三月 2016 - Case No. 4a O 126/14

1. Facts
   Since 28 August 2014 Claimant, a non-practicing entity, is the proprietor of the European patent EP J, originally granted to applicants “Y” and “C”, and allegedly covering part of the AMR-WB standard. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices, inter alia devices produced by the Intervener in this case. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001, Claimant (who was not an ETSI member during the setting of the AMR-WB standard) made, on 29 May 2001, a commitment towards ETSI to grant licenses on FRAND terms inter alia for patent EP J. Claimant and its parent company “O” offer the SEP and all other patents of the same family to third parties by means of a portfolio license. Licensing conditions are accessible on the Internet and various producers in the sector have taken a license under these conditions.
   Prior to the submission of the patent infringement action on 23 July 2014 and to the advance payments on costs on 29 July 2014, Claimant alerted neither Defendant nor the manufacturer of the contested embodiments, who acted as an intervener in the present proceedings and became aware of the lawsuit in August 2014. By e-mails on 31 July and (as a reminder) on 9 December 2014, the first of which included a copy of the statement of claims and reached the defendant before it was formally served with the statement, Claimant notified the alleged patent violation to Defendant. After Defendant’s reply as of 12 January 2015, Claimant presented a draft licensing agreement to Defendant by letter as of 22 April 2015.
   On 9 December 2014, the Intervener declared willingness to take a license, inter alia for the patent-in-suit, provided infringement was found in court. It further declared that it would accept royalties determined by a court or arbitration tribunal. Claimant, in turn, offered a licensing agreement by letters as of 12 January 2015 and 25 March 2015 respectively. In the course of meetings taking place since 23 January 2014, [464] Claimant offered a license to the Intervener. On 23 February 2015 and on 2 April 2015 respectively, the Intervener made two licensing offers, including third party determination (arbitration panel or English court) of the amount of royalty, for the whole German patent portfolio of Claimant. An additional offer for a licensing agreement, limited to Germany and implementing a royalty of USD 0.0055 per patent by reference to the “WCDMA Patent Pools”, was made by the Intervener on 6 March 2015 and 24 September 2015 respectively, but it was finally refused by Claimant on 4 October 2015. Moreover, the Intervener provided a bank “guarantee of payment” as of 3 September 2015, being modified by letter as of 10 November 2015, and also rendered account of past and prospective sales in Germany since 2011.
2. Court’s reasoning
   The considerations of the court are almost exactly the same as those in the case LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14.
   1. Market power and notice of infringement
      The court leaves open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power. [465] The court declared the Huawei rules applicable to claims for the recall of products. [466]
      As regards the Huawei requirement to alert the standard user of the infringement, the decision arrived at various findings of interest: Firstly, the judges found that—in “non-transitional” cases where the lawsuit was brought after the Huawei decision—the infringement notification has to take place before the action is filed, or the latest before the advance payment on costs is made. In transitional cases, such as the present case, a delayed infringement notification, taking place after the advance payment on costs as well as the submission of the court action, but before the statement of claims is served, is admissible. [467] Moreover, an infringement notification could possibly be omitted (in particular) if—as in the present case—the patent user already disposes of all necessary information and lacks willingness to license. [468] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [469]
      Secondly, the court specified the minimum content of the infringement notification which has to indicate at least the number of the patent, the contested embodiments and the alleged acts of use performed by the standard implementer. The court did not decide whether additional information has to be provided, in particular regarding the interpretation of the patent claims or on which part of the standard the patent reads, but it stated that such additional information is not harmful to the patent proprietor. [470]
      Lastly, the court detailed on the particular situation of the Intervener, being Defendant’s manufacturer and supplier in the present case: Even though a FRAND defense successfully raised by the Intervener would in general also cover subsequent levels of the distribution chain, the Huawei requirements apply only indirectly to suppliers of contested embodiments which have not been sued themselves. Accordingly, the SEP proprietor is not obliged to notify the patent infringement to third parties, but as soon as a request to grant a license on FRAND terms is submitted the (adapted) Huawei procedure applies. [471] In casu, no separate infringement notice vis-à-vis the Intervener was required since the Intervener was, since August 2014, aware of the action having been brought.
   2. The SEP owner’s licensing offer
      Since the patent user did not express its willingness to conclude a licensing agreement in due time, the court found Claimant to comply with the Huawei requirement to submit a licensing offer on FRAND terms even though the offer was made in the course of the ongoing litigation. For transitional cases, as the present one, this holds true even if infringement notification and court action take place at the same time. [472]
      Besides, the court analyzed under which circumstances licensing conditions can be considered as FRAND according to Huawei. In the opinion of the judges, the more licensing agreements implementing comparable terms the SEP proprietor has already concluded, the stronger is the presumption that these conditions are FRAND, unless factual reasons—which are to be demonstrated by the patent user—justify modified terms. Recognized commercial practice in the relevant sector has to be considered when defining the admissible scope of the licensing agreement. If patent portfolios are usually covered by group or worldwide licenses in the relevant market, a (worldwide) portfolio license will be FRAND unless the circumstances of the specific case, e.g. the SEP proprietor’s market activity being limited to one geographic market, require a modification. [473] Accordingly, Claimant’s (worldwide) licensing offer to Defendant for the whole AMR-WB pool, demanding royalties of USD 0.26 per mobile device that implemented the standard and was produced or marketed in countries in which the SEP was in force, and complying with Claimants existing licensing practice (accessible on the Internet and already implemented in 12 licensing agreements) was declared FRAND. While the court considered that comparable licensing agreements “represent an important indicator of the adequacy of the license terms offered” it clarified that the significance of a patent pool as an indication of FRAND conformity is “limited”. Defendant and the Intervener failed to show that the portfolio comprised (non-used) non-SEPs as well. [474] They further failed to show that the pre-concluded licensing agreements provided no valid basis for comparison as they were concluded under the threat of pending litigation. [475]
      In order to fulfill the Huawei obligation of specifying the calculation of royalties, the SEP proprietor only has to provide the information necessary to determine the amount of royalties to be paid, e.g. the royalty per unit and the products covered by the license. While the court left undecided whether additional indications, e.g. concerning the FRAND character of the licensing offer, are necessary to comply with Huawei, it found that the SEP proprietor’s duty to inform should not be interpreted too strictly as FRAND does regularly encompass a range of values that will be fair, reasonable, and non-discriminatory. [476]
      Claimant’s licensing offer presented to the Intervener was considered as being FRAND for the same reasons. Furthermore, the court emphasized that the contractual clause allowing for judicial review of the royalties offered could be a possible way to avoid abusive practices and to ensure that licensing offers correspond to FRAND terms. [477]
   3. The standard implementer’s reaction
      The court found that the more details the infringement notification contains, the less time remains for the standard user to examine the patent(s) at issue and to express its willingness to conclude a licensing agreement on FRAND terms. In the present case, Defendant did not comply with Huawei because it took more than five months to react and then only asked for proof of the alleged infringement. Given this excessive delay, the court did not decide whether Defendant’s reaction satisfied the Huawei requirements in terms of content. It denied the possibility to remedy a belated reaction by a subsequent declaration of willingness to license. On the contrary, and as a consequence of the patent user’s non-compliance, the SEP proprietor may continue the infringement action without violating Article 102 TFEU, but it still has to grant licenses on FRAND terms. [478] Whether the Intervener satisfied the ECJ criteria was left undecided. [479]
      The court made some further remarks of interest as to the Huawei requirements concerning the standard implementer: Firstly, it left undecided whether the obligation of the patent user to diligently respond is caused also by a (potentially) non-FRAND licensing offer. [480] Secondly, a standard user who has taken a license is not prevented from challenging validity and essentiality of the SEP afterwards, nor is the SEP proprietor entitled to terminate the license if such a challenge takes place. However, the standard implementer may not delay the (unconditional) conclusion of the licensing agreement until a final court decision on these issues has been rendered. While validity and standard-essentiality is litigated, the licensee remains obliged to pay royalties and it cannot request to insert into the licensing contract a clause entitling it to reclaim paid royalties in case of its success in court. [481] Thirdly, as, in the present case, no specific counter-offers satisfying FRAND terms were submitted and Defendant could not establish that Claimant had waived this requirement the court did not decide on whether a SEP proprietor is obliged to negotiate further although itself and the patent user have submitted FRAND offers. [482]
      None of the counter-offers of the Intervener were FRAND in terms of content. They were either inadmissibly limited to Germany, contained no precise royalty, were not submitted “promptly” because the standard user had waited until the oral pleadings in the parallel procedure, or they proposed royalties per device which the court considered as too low. [483] While it was therefore held to be irrelevant whether, in the first place, the Intervener duly declared its willingness to license, the court emphasized that the Intervener’s readiness to take a license only after the SEP infringement was determined in court did not satisfy the Huawei standard of conduct. [484]
      Moreover, the obligation imposed by Huawei to provide appropriate security and to render account was not fulfilled. While Defendant refrained from taking any of these actions, the Intervener waited several months after the counter-offers were refused in order to submit its bank “guarantee of payment”, which was not recognized as “appropriate security” due to its amount and its limitation to acts of use in Germany. [485] Neither was the Intervener’s initial proposal to have the security—if requested by Claimant—determined by an arbitration tribunal or by an English court accepted as an appropriate way to provide security. [486]
3. Other important issues
   According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [487]
   Suing a network operator instead of the undertakings producing devices operating in the network constitutes (at least under the circumstances of this case and absent selective enforcement) no violation of competition law even though this strategy might aim at using the action against the network operator as a “lever” to obtain licensing commitments from the device suppliers. On the other hand, device manufacturers are entitled to a FRAND license as well and can raise the FRAND defense if such a license is not granted. In consequence, the court perceives a fair balance of interests as the SEP proprietor can choose on which level of the chain of production to sue while the undertakings in the chain of production can choose on which level to take a license. [488]
   Furthermore, no patent ambush-defense based on § 242 BGB could be raised because, firstly, Defendant and the Intervener could not substantiate the alleged patent ambush by “Y” and “C”, being the original SEP proprietors; secondly, they could not show that a different patent declaration conduct would have resulted in a different version of the standard excluding the patent-in-suit; thirdly, the alleged patent ambush would, arguably, have resulted only in a FRAND-licensing obligation and, fourthly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [489]

• [464] This is the date mentioned by the court although “23 January 2015” may seem more plausible and the date given by the court may result from a scrivener’s error.
• [465] Case No. 4a O 73/14, para. 184
• [466] Case No. 4a O 73/14, para. 187
• [467] Case No. 4a O 73/14, para. 195 et seq.
• [468] Case No. 4a O 73/14, para. 208-210
• [469] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
• [470] Case No. 4a O 73/14, para. 193
• [471] Case No. 4a O 73/14, para. 270 et seq.
• [472] Case No. 4a O 73/14, para. 222 et seq.
• [473] Case No. 4a O 73/14, para. 225 et seq.
• [474] Case No. 4a O 73/14, para. 225 et seq. On the relevance of the SIPRO-pool royalty rates, cf. LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 245-248. On the facts indicating that a worldwide license was appropriate LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 249-255.
• [475] Case No. 4a O 73/14, para. 234-242. The court argued that it is questionable in principle how much the threat of a claim for injunctive relief can (inadmissibly) affect license agreement negotiations, since the Orange Book case law of the BGH (German Federal Court of Justice), the Motorola decision of the European Commission, and now the CJEU judgment in the Huawei Technologies/ZTE Case could be and can be invoked against inappropriate demands that are in breach of antitrust law.
• [476] Case No. 4a O 73/14, para. 256 et seq.
• [477] Case No. 4a O 73/14, para. 279 et seq.
• [478] Case No. 4a O 73/14, para. 214-220
• [479] Case No. 4a O 73/14, para. 214-220; 278
• [480] Case No. 4a O 73/14, para. 266
• [481] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
• [482] Case No. 4a O 73/14, para. 264.
• [483] Case No. 4a O 73/14, para. 291 et seq.
• [484] Case No. 4a O 73/14, para. 278
• [485] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
• [486] Case No. 4a O 73/14, para. 304
• [487] Case No. 4a O 73/14, para. 189
• [488] Case No. 4a O 73/14, para. 309-313
• [489] Case No. 4a O 73/14, para. 317 et seq.

France Brevets v HTC

26 三月 2015 - Case No. 4b O 140/13

A. Facts

The Claimant is a patent assertion entity established by the French State [490] . The Claimant was granted an exclusive licence by a company previously called Inside Technologies S.A. (SEP holder) for a European patent essential (Standard Essential Patent or SEP) for the implementation of the Standard LL V11.0.0, 2011-09 (LL standard) which was developed by the European Telecommunications Standards Institute (ETSI) [491] . The SEP holder had made an undertaking towards ETSI to make its SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [492] . The LL standard enables applications of the so-called “Near field Communication” (NFC) technology to run on smartphones over the phone’s SIM-card [493] . NFC-applications can alternatively be implemented on smartphones also by a so-called “Smartcard”, or so-called “embedded secure elements” [494] .

The Defendant is the German subsidiary of an international manufacturer of smartphones that incorporate a so-called “NFC-controller” implementing the LL standard [495] The Defendant promotes the offering and sale of smartphones manufactured by its parent company in Germany [496] .

The Claimant brought an action for infringement of the German part of the SEP in question against the Defendant before the District Court (Landgericht) of Düsseldorf (Court), requesting for injunctive relief, information and rendering of accounts [497] . The Claimant also sought for a declaratory judgment on the Defendant’s liability for damages on the merits [497] .

Against these claims, the Defendant raised inter alia a defence based on antitrust considerations; basically, it argued that the Claimant’s request for injunctive relief constitutes an abuse of market power conferred to the Claimant by the SEP in suit in breach of Article 102 of the Treaty on the Functioning of the European Union (TFEU) (antitrust defence) [498] . The Defendant also requested the Court to stay its proceedings, until the Court of Justice of the European Union (CJEU) rendered its final decision in the matter Huawei v ZTE which concerned the availability of injunctive relief to SEP holders [499] .

The Court dismissed the Defendant’s request to order a stay of the proceedings [500] and granted the Claimant’s motions to the full extent. In its analysis regarding to the antitrust defence, the Court took into account the opinion delivered by Advocate General Wathelet in the matter Huawei v ZTE (Wathelet opinion) [501] , before the final decision of the CJEU was delivered on 16th July 2015 [502] .

B. Court’s reasoning

As a starting point, the Court made clear that an entity granted an exclusive licence for a SEP is entitled to all rights arising from the patent, including claims for injunctive relief as well as claims for damages, information and rendering of accounts [503] .

Having said that, the Court pointed out that the protection of intellectual property rights (IPRs) is a high priority; IPRs are expressly protected under the Charter of Fundamental Rights of the European Union (Article 17 Sec. 2), which also guarantees right holders access to justice (Article 47). Limitations of these rights can be justified only by antirust rules for the protection of general public interest, particularly Article 102 TFEU [504] .

Following the Wathelet opinion, the Court found that a dominant position of the Claimant, which is re-quired for the implementation of Article 102 TFEU, cannot be established solely on grounds of its legal position with respect to the SEP in suit [505] . In the Court’s view, not every SEP confers market power relevant from an antitrust perspective to its holder [505] . Moreover, it has to be examined on a case-by-case basis whether the technical teachings protected by the SEP actually establish such market power [505] .

Further, the Court held that ownership of a SEP does not give rise to the presumption that market power exists [506] . Standards, particularly in the telecommunications sector, refer also to technical functionalities which are of secondary importance to the relevant market; with respect to such functionalities, there are no grounds for a presumption that the SEP holder has market power [506] . Insofar, the party asserting the existence of market power must plead and establish the relevant facts in trial [506] .

With respect to IPRs, the relevant market from an antitrust perspective is not the licensing market, but the downstream product market [507] . Looking at SEPs, relevant is the market in which products implement-ing the respective standard are offered [508] . Accordingly, the Court found that the relevant market in the present case is the smartphone market, because the NFC technology is almost solely used in smartphones [509] .

Since the NFC technology does not apply to basic functionalities of smartphones and is, therefore, no prerequisite for market entry, market power could only be established, if smartphones that do not use the teachings of a SEP could not compete in the market with products implementing this patent [510] .

In the eyes of the Court, this was not the case. The SEP in suit (and the LL Standard) enable NFC-applications to run over smartphones’ SIM-card. However, NFC-applications can alternatively also run over so-called “Smartcards” or “embedded secure elements”. The Defendant could not establish that NFC-applications running over the SEP in suit have reached market penetration to the extent that market power could be achieved [511] . On the contrary, smartphone byers do not appear to base their purchase decision on which of the three available technical solutions for enabling NFC-applications the smartphone uses [511] .

• [490] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 18
• [491] Ibid, paras. 19, 20, 24 and 26
• [492] Ibid, para. 22
• [493] Ibid, para. 212
• [494] Ibid, para. 213
• [495] Ibid, para. 22.
• [496] Ibid, paras. 151 et seq
• [497] Ibid, para. 3
• [498] Ibid, para. 46
• [499] Ibid, para. 38
• [500] Ibid, para. 219
• [501] Opinion of Advocate General Wathelet delivered on 20 November 2014, ECLI:EU:C:2014:2391
• [502] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 197 et seqq
• [503] Ibid, para. 61
• [504] Ibid, para. 197
• [505] Ibid, para. 199
• [506] Ibid, para. 201
• [507] Ibid, para. 204
• [508] Ibid, para. 205
• [509] Ibid, para. 206
• [510] Ibid, para. 208
• [511] Ibid, para. 217

District Court, LG Düsseldorf

11 七月 2018 - Case No. 4c O 81/17

A. Facts

The Claimant holds a patent essential to the data communication standards ADSL2+ and VDSL2 (Standard Essential Patent or SEP) [512] . The previous holder of the patent in question had declared towards the standardization organisation International Telecommunication Union (ITU) its willingness to make the patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [513] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [514] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [514] .

In January 2016, the Claimant brought an action against the Defendant before the District Court (Landgericht) of Düsseldorf (Court) requesting for a declaratory judgement recognizing Defendant’s liability for damages arising from the infringement of its SEP as well as the provision of information and the rendering of accounts (liability proceedings) [515] . During the course of these proceedings, the Claimant made two offers for a licensing agreement to the Defendant. The Defendant made a counter-offer to the Claimant and provided security for the use of the SEP [516] . The parties failed to reach an agreement.

In June 2016, the Defendant filed an action for a declaratory judgement against the Claimant before the Dublin High Court in Ireland, requesting the High Court to declare that both Claimant’s offers were not FRAND and that Defendant’s counter-offer was FRAND [517] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [517] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [518] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [516] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [519] .

B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [520] , it found that the Claimant cannot enforce its patent rights for the time being [521] , since it failed to fully comply with the obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTEHuaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13. (Huawei obligations or framework) with respect to dominant undertakings in terms of Article 102 of the Treaty for the Functioning of the EU (TFEU) [519] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [523] .

In the Court’s eyes, the relevant market for assessing dominance with regards to SEPs is, as a rule, the (downstream) market for products or services implementing the standard, to which the SEP refers [524] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [525] . Since the Court held that, in the present case, none of the existing technological alternatives to the standards ADSL2+ and VDSL2 (e.g. HFC networks, LTE, HDSL, SHDSL, ADSL, SDSL, VDSL, fibre optic networks, radio relay technology or internet services via satellite) offers an equivalent solution to users [526] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [527] .

Regarding to the subsequent question of whether the Claimant has a dominant position in the above market, the Court first made clear that ownership of a SEP does not per se establish such condition [528] . The fact that a patent is essential to a standard does neither give rise to the (rebuttable) presumption that the SEP holder can distort competition in downstream markets, because products complying with the standard need to use the SEP [528] . Since a high number of patents is usually declared as standard essential, not every SEP can actually (significantly) affect the competitiveness of products or services in downstream markets; the effect of each SEP on a downstream market has, therefore, to be established on a case-by-case basis by taking into account the circumstances of each individual case [528] .

The Court explained that a dominant market position is given, when the use of the SEP is required for entering the market, particularly for securing the general technical interoperability and compatibility of products or services under a standard [528] . The same is true, if the patent user could not market competitive products or services without a licence (for instance, because only a niche market exists for non-compliant products) [528] . No market dominance exists, however, when the SEP covers a technology which is only of little importance to the majority of the buyers in the relevant market [528] .

According to the Court, the latter was not the case here; on the contrary, the Defendant cannot offer competitive products or services in the market for DSL internet connections, without using the SEP in suit [529] .

2. Huawei framework

In the Court’s view, the parties to SEP licensing negotiations need to fulfill the mutual conduct obligations under the Huawei framework step by step and one after another [530] . The Court did not see any flaws in the parties’ conduct with respect to the first two steps of the Huawei framework (SEP holder’s notification of infringement and SEP user’s declaration of willingness to obtain a licence), held, however, that the Claimant did not meet its consequent obligation to make a FRAND licensing offer to the Defendant [531] .

Notification of infringement

The Court found that the Claimant had fulfilled its obligation to notify the Defendant about the infringing use of the SEP in suit prior to the commencement of the injunction proceedings [532] .

First, the Court pointed out that a respective notification (as well as a later licensing offer) can be made by the SEP holder itself, or by any other affiliated company within the same group of companies, especially by the patent holder’s parent company [533] . On the other hand, it is not required that the infringement notification is addressed to the company that will later be party to the infringement proceedings; in general, it is sufficient to address the notification to the parent company within a group of companies [533] .

In terms of content, the notification of infringement must name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [534] . A detailed (technical and/or legal) explanation of the infringement (particularly an analysis of how the individual features of the patent claims are infringed) is not required; the addressee needs just to be put in the position to assess the infringement allegations, if necessary by seeking expert advice [534] . In this context, the Court disagreed with the District Court of Mannheim which had requested the SEP holder to inform the user about the essentiality of the patent to the standard and/or attach claim charts to the notification of infringement [534] .

In terms of timeliness, the Court took the view that the notification of infringement can be made alongside with SEP holder’s offer for a FRAND licence to the user (prior to the initiation of court proceedings) [535] . In this case, the second step under the Huawei framework will be skipped (that is the SEP user’s declaration of its willingness to obtain a licence). According to the Court, this fact does not, however, have an impact on the SEP holder’s position: If the SEP user is willing to enter into a licence, this approach would safe time (although the SEP user should be granted more time than usual to assess and react to both the notification of infringement and the FRAND offer) [535] . If, on the other hand, the SEP user is unwilling to obtain a FRAND licence, then the SEP holder will just have made a licensing offer absent a respective obligation under the Huawei framework [535] .

In the present case, the fact that the Claimant did not make a separate notification of infringement prior to the initiation of the injunction proceedings, was not considered problematic. The Court pointed out that the Defendant was fully informed about the infringement allegation by the action for damages raised by the Claimant long before the injunction proceedings, so that a separate notification was not required [536] .

Willingness to obtain a FRAND licence

The Court further found that the Defendant had fulfilled its Huawei obligation to express its willingness to obtain a FRAND licence [537] .

In terms of content, no high demands should be placed on the SEP user’s respective declaration; it is not subject to formal requirements and can be of a general nature, as long as the willingness to obtain a licence is clearly stated [538] . Given the circumstances of the specific case, even an implicit behaviour can suffice [538] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [539] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [539] . If the SEP holder’s notification of infringement contains only the minimum required information, a reaction within a period of five or even three months at the most could be expected [539] . In case that the infringement notification contains information going beyond the required minimum, an even quicker reaction could be required from the SEP user under certain circumstances [539] .

In the present case, the Court held that the Defendant has implicitly declared its willingness to enter into a FRAND licence with the Claimant at the latest at the point in time, in which the injunction proceedings were initiated [540] . At that time, the Defendant had already made a counter-offer for a FRAND licence to the Claimant and had also provided security for the use of Claimant’s patents [541] .

In this context, the Court noted that neither the fact that the Defendant contested Claimant’s claims in the parallel liability proceedings not the fact that it raised an action for declaratory judgement against the Claimant before the Dublin High Court can support the argument that the Defendant has deviated from its previous declaration of willingness [542] .

SEP holder’s licensing offer

The Court held that the offer which the Claimant made to the Defendant in course of the injunction proceedings was not FRAND [543] . Since the Claimant expressly relied only on this offer to establish its compliance with the Huawei framework, the Court did not assess the FRAND conformity of the two previous offers of the Claimant to the Defendant [516] .

In terms of timeliness, the Court stressed out that the SEP holder must make a FRAND licensing offer to the user before the initiation of infringement proceedings [544] . Under German procedural law, proceedings are initiated after the claimant has made the required advance payment on costs, even if the statement of claims has not been served to the defendant, yet [545] .

The Court did not rule out that SEP holder’s failure to fulfil its Huawei obligations prior to the commencement of infringement proceedings can be remedied during the course of the proceedings [546] . Depending on the circumstances of each case, the SEP holder should be given the opportunity – within the limits of procedural deadlines – to react to (justified) objections of the SEP user and eventually modify its offer [546] . Denying the SEP holder this opportunity without exceptions would be contrary to the principle of procedural economy; the patent holder would be forced to withdraw its pending action, make a modified licensing offer to the patent user and, subsequently, sue the latter again [546] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [547] . Notwithstanding the above, the Court made, however, clear that the possibility of remedying a flawed licensing offer is subject to narrow limits; the CJEU intended to relieve licensing negotiations between SEP holder and SEP user from the burden imposed on parties by ongoing infringement proceedings, and particularly the potential undue pressure to enter into a licensing agreement which such proceedings can put on the SEP user [548] .

Against this background, the Court expressed doubts that the Claimant’s licensing offer, which was made in the course of the pending injunction proceedings could be considered as timely [518] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [549] .

The Court did not deem necessary to decide whether the FRAND conformity of the SEP holder’s offer must be fully assessed in infringement proceedings, or whether only a summary assessment of its compatibility with FRAND suffices [550] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [551] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [552] .

First, the terms did not adequately consider the effects of patent exhaustion [553] . As a rule, FRAND requires licensing offers to contain respective provisions [554] . The clause contained in Claimant’s offer, establishing the possibility of a reduction of the royalties owed by the Defendant in case of the exhaustion of licensed patents, is not fair, because it puts the burden of proof regarding to the amount of the reasonable reduction of the royalties on the Defendant’s shoulders [555] .

Second, the clause, according to which Defendant’s payment obligations regarding to past uses of the SEP in suit should be finally settled without exceptions and/or the possibility to claim reimbursement, was also considered not fair [556] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [557] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [558] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [559] . In the present case, however, excluding a significant part of the Defendant’s overall business, namely the wholesale business, from the licensing offer, hinders a fair market access [559] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [560] .

To begin with, the Court stressed out that FRAND refers to a range of acceptable royalty rates: As a rule, there is not only a single FRAND-compliant royalty rate [550] . Furthermore, as far as a corresponding commercial/industry practice exists, offers for worldwide portfolio licences are, in general, in line with the Huawei framework, unless the circumstances of the individual case require a different approach (for instance a limitation of the geographical scope of the licence, in case that the user is active only in a single market) [561] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [562] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [562] . In any case, SEP holders are obliged to specify the royalty calculation in a manner that allows the user to assess whether the offered conditions are non-discriminatory or not. The respective information needs to be shared along with the licensing offer; only when the SEP user has obtained this information a licensing offer triggering an obligation of the latter to react is given [563] .

In the Court’s view, presenting all existing essential licensing agreements concluded with third parties, covering the SEPs in suit or a patent portfolio including said SEPs (comparable agreements), has priority over other means for fulfilling this obligation [564] . In addition, SEP holders have to produce also court decisions rendered on the FRAND-conformity of the rates agreed upon in the comparable agreements, if such decisions exist [565] .

Whether presenting comparable agreements (and relevant case law) suffices for establishing the non-discriminatory character of the offered royalty rates depends on the number and the scope of the available agreementsI [566] . In case that no or not enough comparable agreements exist, SEP holders must (additionally) present decisions referring to the validity and/or the infringement of the patents in question and agreements concluded between other parties in the same or a comparable technical field, which they are aware of [567] . If the SEP in suit is part of a patent portfolio, SEP holders must also substantiate the content of the portfolio and its impact on the offered royalty rates [568] .

Having said that, the Court pointed out that an unequal treatment resulting in a discrimination in antitrust terms is not only at hand, when a dominant patent holder grants preferential terms to specific licensees, but also when it chooses to enforce its exclusion rights under a SEP in a selective manner [569] . The latter is the case, when the SEP holder brings infringement actions only against certain competitors and, at the same time, allows other competitors to use its patent(s) without a licence [569] . However, such a conduct is discriminatory only if, depending on the overall circumstances of each case (for instance, the extend of the infringing use and the legal remedies available in the country, in which claims need to be asserted), it would have been possible for the SEP holder with reasonable efforts to enforce its patent rights against other infringers (which it was or should have been aware of) [569] . In favour of an equal treatment of competitors, the level of action which must be taken by the SEP holder in this respect should not be defined narrowly [569] . However, it has to be taken into account, that – especially in the early stages of the implementation of a standard – the SEP holder will usually not have the means required to enforce its rights against a large number of infringers; in this case, the choice to enforce its rights only against infringers with market strength first appears reasonable [570] .

Based on the above considerations, the Court ruled that the Claimant’s choice to sue only the Defendant and its two main competitors, without asserting the SEP in suit against the rest of their competitors, respectively against their suppliers, was discriminatory [571] . The Claimant should have already, at least, requested the companies, against which no action was filed, to obtain a licence, particularly since the remaining period of validity of the SEP in suit is limited [572] . Furthermore, the Court found that the Claimant’s refusal to make a licensing offer to the Intervener, although the latter had requested for a licence, was also discriminatory; in the Court’s view, the Claimant failed to provide an explanation justifying this choice [573] .

Since the Claimant’s offer was found to be non-compliant with FRAND, the Court refrained from ruling on the conformity of Defendant’s counter-offer and the security provided with the Huawei framework [574] .

C. Other issues

The Court ruled that in accordance with Article 30 para. 3 of the German Patent Law (PatG) the registration in the patent register establishes the presumption of ownership, allowing the entity which is registered as patent holder to assert the rights arising from the patent before court [575] .

• [512] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
• [513] Ibid, para. 13.
• [514] Ibid, para. 12.
• [515] Ibid, paras. 14 and 211.
• [516] Ibid, para. 15.
• [517] Ibid, para. 16.
• [518] Ibid, para. 236.
• [519] Ibid, paras. 140 and 313 et seqq.
• [520] Ibid, paras. 114 et seqq.
• [521] Ibid, paras. 60 and 140.
• [522] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
• [523] Ibid, para. 142.
• [524] Ibid, para. 148.
• [525] Ibid, paras. 153 and 146.
• [526] Ibid, paras. 159 - 181.
• [527] Ibid, para. 158.
• [528] Ibid, para. 147.
• [529] Ibid, paras. 183 et seqq.
• [530] Ibid, para. 191.
• [531] Ibid, para. 188.
• [532] Ibid, paras. 195 et seqq.
• [533] Ibid, para. 199.
• [534] Ibid, para. 198.
• [535] Ibid, para. 200.
• [536] Ibid, para. 203.
• [537] Ibid, para. 205.
• [538] Ibid, para. 208.
• [539] Ibid, para. 207.
• [540] Ibid, para. 210.
• [541] Ibid, para. 212.
• [542] Ibid, paras. 215 et seq.
• [543] Ibid, para. 220.
• [544] Ibid, paras. 222 et seqq.
• [545] Ibid, para. 225.
• [546] Ibid, para. 233.
• [547] Ibid, para. 228.
• [548] Ibid, para. 230.
• [549] Ibid, para. 237.
• [550] Ibid. para. 241.
• [551] Ibid, para. 242.
• [552] Ibid, paras. 283 et seqq.
• [553] Ibid, para. 285.
• [554] Ibid, para. 288.
• [555] Ibid, paras. 292 et seq.
• [556] Ibid, paras. 298 et seqq.
• [557] Ibid, para. 301.
• [558] Ibid, para. 306.
• [559] Ibid, para. 311.
• [560] Ibid, para. 271.
• [561] Ibid, para. 250.
• [562] Ibid, para. 248.
• [563] Ibid, para. 267.
• [564] Ibid, paras. 256 and 259 et seq.
• [565] Ibid, para. 262.
• [566] bid, paras. 258 and 264.
• [567] Ibid, paras. 263 and 265.
• [568] Ibid, para. 265.
• [569] Ibid, para. 273.
• [570] Ibid, para. 274.
• [571] Ibid, para. 276.
• [572] Ibid, para. 277.
• [573] Ibid, para. 281.
• [574] Ibid, para. 315.
• [575] Ibid, paras. 75 et seq.

Fraunhofer-Gesellschaft (MPEG-LA) v ZTE

9 十一月 2018 - Case No. 4a O 15/17

A. Facts

The Claimant, Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent of SEP) [576] . The patent holder committed towards the relevant standardization body to make this patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant contributed the SEP in question to a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [577] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones manufactured by its parent company (parent company) which practise the AVC/H.264 standard in Germany [578] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [579] . It has signed licensing agreements with approx. 1,400 implementers [579] .

By e-mail dated 8 September 2011, MPEG LA sent a copy of its standard licensing agreement to the Defendant’s parent company and informed the latter that its “mobile handset and tablet products” infringe patents included in its “AVC patent portfolio” (without indicating, however, either the concrete patent numbers or the specific infringing products) [580] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [581] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [582] .

In 2012, the parent company acquired patents included in the MPEG LA pool [577] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [583] , the Claimant brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [584] .

During the proceedings, the Defendant declared its willingness to obtain a licence for the patent in suit and other SEPs of the Claimant referring to the AVC/H.264 standard [585] . Moreover, the Defendant sent to MPEG LA two signed copies of MPEG LA’s standard licensing agreement, along with a statement of accounts of its past sales and a bank guarantee [586] . MPEG LA did not countersign this agreement. It insisted, instead, on a licence that would cover all companies belonging to the same group as the Defendant [587] .

With the present judgment, the Court granted Claimant’s requests.

B. Court’s reasoning

The Court held that the mobile phones sold by the Defendant in Germany infringe Claimant’s SEP in suit [588] . It also found that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [589] (Huawei obligations or framework) with respect to dominant undertakings [590] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [591] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [592] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [592] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [593] . A dominant market position is given, when the use of the SEP is required for entering the market [593] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [593] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no “realistic” alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [594] .

2. Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [595] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [596] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [597] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [598] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [599] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [600] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [601] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the nevertheless existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [602] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [603] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [604] .

Having said that, the Court found no flaws in Claimant’s conduct. In the Court’s view, the Claimant had met its Huawei obligation to notify the Defendant about the infringement of its patent as well as the obligation to present the Defendant with a written licensing offer covering also the patent in suit. The Defendant, on the other hand, adequately expressed its willingness to enter into a licence, failed, however, to make a FRAND counter-offer to the Claimant. Since an adequate counter-offer was missing, the Court did not take up the question whether the bank guarantee provided by the Claimant to MPEG LA constitutes an adequate security in terms of the Huawei framework [605] .

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the e-mail sent by MPEG LA to the parent company on 8 September 2011 [606] .

The fact that this e-mail was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries con­cerned [607] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [607] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [608] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant [609] . The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [610] . In addition, the Defendant’s parent company was also aware of MPEG LA’s capacity to act on behalf of the Claimant, since it joined the MPEG LA pool as a patent holder in 2012 [611] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [612] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [613] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [613] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [613] . The respective test is, however, subject to strict conditions [613] .

Based on the above considerations, the Court found that MPEG LA’s e-mail to the parent company dated 8 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [614] . The overall circumstances of the case (especially the fact that the parent company acquired patents included in the MPEG LA pool in 2012 and had also previously been in contact with MPEG LA regarding a standard licensing agreement) [615] , give rise to the assumption that the parent company had already been aware of the MPEG LA pool and the fact that AVC/H.264-compliant products need to be licensed [616] .

Willingness to obtain a FRAND-licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the e-mail sent to MPEG LA on 15 September 2011 [617] .

In the eyes of the Court, this e-mail indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard. This is sufficient under the Huawei framework [618] . The implementer is not required to refer to a specific licensing agreement [618] .

SEP holder’s licensing offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [619] .

The fact that the offer was addressed to the parent company and not to the Defendant was not relevant, since the parties were discussing about a licensing agreement on group level and the parent company had itself requested to receive the draft agreement [620] .

Furthermore, the fact that the draft agreement sent to the parent company did not directly provide for the licensing of all subsidiaries (including the Defendant) was also not considered as harmful [621] . Insofar, the Court held that under the Huawei framework it is, as a rule, acceptable that the patent holder enters into licensing negotiations only with the parent company within a group of companies [622] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [623] . An exception would apply only then, when it is made clear already at the beginning of the licensing negotiations that the offer made to the parent company cannot include its subsidiaries [624] . This was, however, not the case here, since the standard licensing agreement sent to the parent company indicates MPEG LA’s willingness to grant licences also to the subsidiaries of the former [625] .

Besides that, the Court did not consider the fact that the standard licensing agreement sent to the parent company did not cover the sale of licensed products to wholesalers and retailers (but regarded only sales to end users) to be in conflict with the Huawei framework, although the Defendant was engaged also in this business [626] . According to the Court, sales to wholesalers and retailers would be covered by the effects of patent exhaustion, even without an express provision in a potential licensing agreement [627] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company does not contain detailed explanation of the way the royalties were calculated [628] . In the Court’s view, the respective explanation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [629] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [629] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [629] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [630] .

Against this background, the Court did not consider it to be harmful that the standard licensing agreement sent to the parent company by MPEG LA did not include a detailed explanation of the royalty calculation in the above sense [631] . On the one hand, the parent company was aware that this (standard) agreement had been accepted in the market by a great number of licensees [631] . On the other hand, the parent company was also adequately aware of the way the offered royalties were calculated, since it held patents included in the MPEG LA pool itself [632] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content.

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [633] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [633] . The Court made clear that in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [633] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [633] .

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases; an unequal treatment is allowed, as long as it is objectively justified [634] . Limitations in this context may especially occur, when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive only when it uses the patent’s teachings [634] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [635] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [635] .

Looking at the standard licensing agreement sent to the parent company, the Court observed that the fact the MPEG LA sought for a licence covering all companies within the group, to which the Defendant belonged, was not violating FRAND principles [636] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [637] . Patent holder have a special interest in concluding such licences particularly in cases, in which – as in the present case – the parent company manufactures products which are sold worldwide by its subsidiaries. This is because licences at group level makes sure that patent holders can enforce their rights effectively, without having to distinguish between licenced and unlicenced products within a group of companies [638] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [639] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [640] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [640] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [641] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [642] . The fact, however, that this offer concerned a licence limited to the Defendant and, thus, not covering the parent company (and all further companies belonging to the same group) was not FRAND conform [643] . The Court accepted that licences at group level mirror the industry practice in the field in question; accordingly, no objections can be raised when a patent holder contributing its patents to a pool is willing to grant only licences covering all group companies [644] .

Since the counter-offer was not FRAND in terms of content, the Court did not have to decide, whether it was made in due time, or not [645] .

• [576] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
• [577] Ibid, para. 58
• [578] Ibid, para. 57
• [579] Ibid, para. 59
• [580] Ibid, paras. 61 et seqq. and 340
• [581] Ibid, para. 65
• [582] Ibid, para. 66
• [583] Ibid, para. 73
• [584] Ibid, para. 42
• [585] bid, para. 74
• [586] Ibid, paras. 75 et seq
• [587] Ibid, para. 75
• [588] Ibid, paras. 127 – 254
• [589] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
• [590] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
• [591] Ibid, para. 283 and paras. 291 et seqq
• [592] Ibid, para. 286
• [593] Ibid, para. 287
• [594] Ibid, paras. 291 et seqq
• [595] Ibid, para. 296
• [596] Ibid, para. 300
• [597] Ibid, para. 302
• [598] Ibid, para. 308
• [599] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06
• [600] Ibid, para. 305
• [601] Ibid, paras. 306 et seqq
• [602] Ibid, para. 310
• [603] Ibid, para. 311
• [604] Ibid, para. 312
• [605] Ibid, para. 421
• [606] Ibid, para. 314
• [607] Ibid, para. 320
• [608] Ibid, para. 318
• [609] Ibid, para. 329
• [610] Ibid, paras. 336 et seq
• [611] Ibid, para. 338
• [612] Ibid, para. 198
• [613] Ibid, para. 315
• [614] Ibid, paras. 340 et seq
• [615] Ibid, paras. 342 et seqq
• [616] Ibid, para. 344
• [617] Ibid, para. 346
• [618] Ibid, para. 348
• [619] Ibid, para. 352
• [620] Ibid, para. 367
• [621] Ibid, para. 369
• [622] Ibid, para. 370
• [623] Ibid, para. 378
• [624] Ibid, para. 371
• [625] Ibid, para. 374
• [626] Ibid, para. 376
• [627] Ibid, para. 377
• [628] Ibid, para. 380
• [629] Ibid, para. 381
• [630] Ibid, para. 386
• [631] Ibid, para. 382
• [632] Ibid, para. 387
• [633] Ibid, para. 391
• [634] Ibid, para. 392
• [635] Ibid, para. 393
• [636] Ibid, para. 397
• [637] Ibid, para. 398
• [638] Ibid, para. 399
• [639] Ibid, para. 402
• [640] Ibid, para. 404
• [641] Ibid, para. 410
• [642] Ibid, para. 413
• [643] Ibid, para. 416
• [644] Ibid, para. 417
• [645] Ibid, para. 411

Tagivan (MPEG-LA) v Huawei

15 十一月 2018 - Case No. 4a O 17/17

A. Facts

The Claimant, Tagivan II LLC, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent, or SEP). The patent in question is subject to a FRAND commitment (FRAND stands for Fair, Reasonable and Non-Discriminatory terms and conditions) made towards the relevant standardisation body. It was included into a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [646] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones in Germany that practise the AVC/H.264 standard [647] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [648] . Since 2004, MPEG-LA has signed approx. 2,000 agreements with implementers [649] , 1,400 of which are still in force [648] .

In 2009, MPEG LA and the Defendant’s parent company (parent company) started discussions about a potential licence covering other standards, especially the MPEG-2 standard. On 6 September 2011, MPEG LA informed the parent company about the possibility to obtain a licence also regarding the AVC/H.264 standard, by sending PDF-copies of its standard licensing agreement to the parent company via email [650] . On 15 September 2011, the parent company suggested to arrange a call on this issue [651] . In February 2012, MPEG LA sent the pool’s standard licensing agreement for the AVC/H.264 standard to the parent company also by mail [652] .

In November 2013, the discussions between MPEG LA and the parent company ended without success [653] . The parties resumed negotiations in July 2016; again, no agreement was reached [653] .

The Claimant then brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [654] .

In November 2017, during the course of the present proceedings, the Defendant made a counteroffer to the Claimant for a licence, which – in contrast to MPEG LA’s standard licensing agreement – was limited to the Claimant’s patent portfolio and established different royalty rates for different regions, in which the Defendant sold products [655] .

In March and September 2018 (again during the proceedings), the Defendant provided bank guarantees to the Claimant covering past and future sales of (allegedly) infringing products. The security amounts were calculated based on the Defendant’s counteroffer dated November 2017 [656] . Furthermore, the Defendant made a second counteroffer to the Claimant shortly after the last oral hearing before the Court [657] .

With the present judgment, the Court granted Claimant’s requests.

B. Court’s reasoning

The Court found that the patent in suit was valid [658] , standard essential [659] and infringed by the products sold by the Defendant in Germany [660] . Furthermore, the Court held that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [661] (Huawei obligations or framework) with respect to dominant undertakings [662] .

Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [663] .

The Court defined the relevant market for the assessment of dominance as the market, in which licences for any given patent are offered [664] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [664] .

The Court made clear that ownership of a SEP does not per se establish market dominance [665] . A dominant market position is given, when the use of the SEP is required for entering the market [666] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [667] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no ‘realistic’ alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [668] .

Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [669] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [670] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [671] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [672] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [673] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement. The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [674] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the, nevertheless, existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [675] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [675] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [676] .

Having said that, the Court found no flaws in Claimant’s conduct. In the Court’s view, the Claimant had met its Huawei obligation to notify the Defendant about the infringement of its patent as well as the obligation to present the Defendant with a written FRAND licensing offer covering also the patent in suit. The Defendant, on the other hand, adequately expressed its willingness to enter into a licence, failed, however, to make a FRAND counteroffer to the Claimant. Since an adequate counteroffer was missing, the Court did not take up the question whether the bank guarantees provided by the Defendant constitute an adequate security in terms of the Huawei framework.

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the email sent by MPEG LA to the parent company on 6 September 2011 [677] .

The fact that this email was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries concerned [678] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [679] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [680] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant. The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [681] . In addition, the Defendant’s parent company was most likely aware of MPEG LA’s capacity to act on behalf of the Claimant, since it had entered into direct negotiation with MPEG LA already in 2009, that is almost two years prior to the notification of infringement [682] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the infringed patent (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [683] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [683] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [683] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [683] . The respective test is, however, subject to strict conditions [683] .

Based on the above considerations, the Court found that MPEG LA’s email to the parent company dated 6 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [684] . The overall circumstances of the case (especially the fact that the parent company had been in negotiations with MPEG LA already since 2009 and, therefore, should have been aware that MPEG LA has granted licences for the AVC/H.264 standard to the implementers mentioned at its website), give rise to the assumption that the parent company had been conscious of the fact that AVC/H.264-compliant products need to be licensed [685] .

Willingness to obtain a licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the email sent to MPEG LA on 15 September 2011 [686] .

In the eyes of the Court, this email indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard, especially if it is seen in the context of the negotiations between MPEG LA and the parent company that had commenced in 2009 [686] . This is sufficient under the Huawei framework: A general, informal statement suffices [687] . The implementer is not required to refer to a specific licensing agreement (on the contrary, this could be considered harmful under certain circumstances) [687] .

SEP holder’s offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company in February 2012 presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [688] .

The fact that the standard licensing agreement was not tailored to the parent company but was designed for use towards a large number of (potential) licensees (the name of the licensee ought to be added in each case separately), was not criticized by the Court. MPEG-LA had made clear that the documents sent by mail in February 2012 would serve as the basis for negotiations and a future agreement with the parent company [689] .

In addition, the Court did not take an issue with the fact that the offer was addressed to the parent company and not to the Defendant, since the parties were discussing about a licensing agreement on group level and the parent company had been involved in the communications from the beginning [690] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company did not contain a detailed explanation of the way the royalties were calculated [691] . The Court found that, in the present case, it was sufficient that the parent company was aware that the (standard) agreement presented to her had been accepted in the market by a great number of licensees [692] . In the Court’s view, the explanation of the royalty calculation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [693] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [693] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [693] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [694] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content [695] .

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [696] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [696] . The Court made clear that, in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [696] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [696] .

Non-discrimination

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases [697] . Even then, an unequal treatment is allowed, as long as it is objectively justified [697] . Limitations may, nevertheless, occur, especially when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive, only when it uses the patent’s teachings [697] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may, however, seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [698] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [698] .

Against this background, the Court found that the offer made by MPEG LA to the parent company was not discriminatory. The Defendant had argued that seeking a licence also covering sales in China violated FRAND, since not every other competitor in the Chinese market was licensed by MPEG LA [699] . The Court observed that the selective assertion of patents against only a part of the competitors in a downstream market might, in principle, be discriminatory [700] . This was, however, not the case here, because the Claimant had already sued another company active in China and was attempting to persuade other companies to obtain a licence [701] . Due to the high cost risk associated with court proceedings, the patent holder is not obliged to sue all potential infringers at once; choosing to assert its patents against larger implementers first was considered by the Court as reasonable, since a win over a large market player could motivate smaller competitors to also obtain a licence (without litigation) [702] .

Furthermore, the Court did not consider the fact that the offered standard licensing agreement contained a cap for the annual licensing fees payable to the MPEG LA pool to be discriminatory [703] . The Defendant had argued that the respective cap disproportionally favoured licensees with high volume sales which offered not only mobile phones, but also other standard compliant products in the market. The Court made, however, clear that Art. 102 TFEU does not establish a ‘most-favoured-licensee’ principle (meaning that the patent holder must offer the same conditions to all licensees) [704] . It is not per se discriminatory to use sale volumes as a criterion for discounts, especially if a company has managed to open up a larger market than its competitors [705] . Discounts can further hardly be discriminatory, if they are offered to every (potential) licensee under the same conditions [705] .

Besides that, the Court dismissed the Defendant’s argument that MPEG LA’s standard licensing agreement is discriminatory, because it is offered to both MPEG LA pool members and third licensees. The Court found that the share of the licensing income paid to pool members, who have also signed a MPEG LA licence, reflects their contribution to the pool and, therefore, does not discriminate the latter against third licensees (who have not contributed any patents to the pool) [706] . In this context, the Court also pointed out that the clauses contained in MPEG LA’s standard licensing agreement, providing for deductions or instalment payments are not discriminatory, particularly because they are offered to all licensees [707] .

The Court was further not convinced that the parent company was discriminated by MPEG LA’s offer, because the MPEG LA pool had refrained from requesting a licence at group level from a competitor, but had only granted a licence to a subsidiary within the respective group, instead. In the Court’s eyes, the Claimant had managed to establish that this exception was objectively justified, since only the subsidiary granted a licence had activities concerning the patents included in the pool [708] .

Fair and reasonable terms

With respect to the assessment of whether MPEG LA’s offer to the parent company was also fair and reasonable, the Court placed particular emphasis on the existing licensing agreements between the MPEG-LA pool and third licensees. The Court took the view, that existing licences can establish the actual presumption that the terms offered (as well as the scope of the licence) are fair and reasonable [709] . Moreover, the fact that licences regarding the same patent portfolio have already been granted for similar products prima facie suggests that the selection of the patents included in the pool was adequate [709] .

Based on these premises, the Court found that the approx. 2,000 standard licensing agreements concluded by the MPEG LA pool provide a ‘strong indication’ (‘erhebliche Indizwirkung’) that the underlying licensing terms are fair and reasonable [710] . In the Court’s view, the Defendant had failed to show sufficient facts that could rebut this indication.

In particular, the Court did not accept Defendant’s claim that, as a rule, licences for products sold in the Chinese market are subject to special conditions. On the contrary, the Court found that the existing MPEG LA pool licences allow the assumption that setting worldwide uniform licence fees corresponds to industry practice [711] . Accordingly, the Court rejected Defendant’s argument, that the royalties offered by MPEG LA to the parent company would hinder the Defendant from making profits with its sales in China, since the overall licensing burden (including licences needed from third parties) would be too high. The Court noted that the price level for Defendant’s sales in China does not significantly differ from the price level in other regions [712] . What is more, the Defendant did not show that further licences are needed with respect to the AVC/H.264 standard [713] . The Court further did not recognise a need to apply special conditions for the Chinese market, because – compared to patents from other regions – a lower number of Chinese patents is contained in the MPEG LA pool. According to the Court, the number of patents in a specific market should not be ‘overestimated’ as a factor for assessing the FRAND conformity of an offer, since even a single patent can block an implementer from a market, generating, therefore, the need for obtaining a licence [714] .

Apart from the above, the Court did not criticise that MPEG LA’s standard licensing agreement did not contain an adjustment clause. Such clauses can secure that the agreed licensing fees remain reasonable, in case that the number of patents contained in the pool changes during the term of the licensing agreement. They are, however, in the Court’s view, not the only mean to reach this goal: Moreover, the clause contained in MPEG LA’s standard licensing agreement, according to which the agreed royalties will not be adjusted either when more patents are added to the pool or when patents are withdrawn from the pool, offers an adequate balance of risk and is, therefore, FRAND compliant [715] . This assumption is also confirmed by the fact that all existing licensees have accepted this clause [716] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are, in general, appropriate under the Huawei framework. An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [717] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [717] .

An offer for a pool licence can, nevertheless, violate FRAND in ‘special circumstances’ [718] , for instance, if not all patents included in the pool are used by the licensee [719] . According to the Court, the fact that the Defendant – as well as mobile phone manufacturers in general – usually use only one of four available profiles of the AVC-Standard does not, however, render the standard licensing agreement offered by MPEG LA unreasonable [720] . This is particularly the case, since Defendant’s products – and especially its latest smartphones – have the technical capability to implement more than one available profile [721] . Besides that, it is reasonable to offer one single licence covering all profiles, since modern products incorporate functionalities of several types of devices (e.g. smartphones offer also digital television functionalities) [721] .

In this context, the Court dismissed Defendant’s arguments that the licence offered by MPEG LA was not FRAND, because it allegedly covered both standard-essential and non-essential patents. The Court recognised that the ‘bundling’ of essential and non-essential patents in a patent pool could, in principle, be incompatible with FRAND, if it is done with the intention to extract higher royalties from licensees by increasing the number of patents contained in the pool [722] . The Defendant failed, however, to present any reliable evidence that this was the case with the MPEG-LA pool [723] .

In the Court’s eyes, the Defendant also failed to establish that the rates offered by MPEG LA would lead to an unreasonably high total burden of licensing costs (‘royalty stacking’) [724] . The theoretical possibility that the Defendant might need to obtain licences also for patents not included in a pool does not per se lead to royalty stacking; the Defendant would have been obliged to establish that the total amount of royalties actually paid does not allow to extract any margin from the sale of its products [725] .

The Court further pointed out that MPEG-LA’s offer did not violate FRAND principles, because it referred to a licence covering all companies within the group, to which the Defendant belonged [726] . In the electronics and mobile communications industries, licences on a group level are in line with the industry practice and, therefore, FRAND-compliant [727] .

Implementer’s counteroffer

Having said that, the Court found that the Defendant failed to make a FRAND counteroffer [728] .

In particular, the counteroffer made in November 2017 after the commencement of the present proceedings violated the FRAND principles in terms of content, because it was limited to a licence covering solely the Claimant’s patent portfolio and not all patents included in the MPEG LA pool [729] . Furthermore, the counteroffer established different licensing rates for different regions (especially for China) without factual justification [730] .

Furthermore, the second counteroffer made by the Defendant after the end of the last oral hearing was belated and, therefore, not FRAND. The Court held that the Claimant was not given sufficient time to respond to that counteroffer, so that there was no need for any further assessment of its content [657] . On the contrary, the Court expressed the view that the purpose of this counteroffer was most likely to delay the infringement proceedings [657] .

Provision of security

Since Defendant’s counter-offers were not FRAND in terms of content, the Court did not have to decide, whether the security provided in form of bank guarantees was FRAND or not. The Court noted, however, that the amounts provided were insufficient, since they were calculated on basis of Defendant’s counteroffer from November 2017, which itself failed to meet the FRAND requirements [731] .

• [646] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, para. 36.
• [647] Ibid, para. 35.
• [648] Ibid, para. 37.
• [649] Ibid, para. 453.
• [650] Ibid, para. 39.
• [651] Ibid, para. 43.
• [652] Ibid, para. 44.
• [653] Ibid, para. 53.
• [654] Ibid, para. 2.
• [655] Ibid, para. 54.
• [656] Ibid, para. 65.
• [657] Ibid, para. 716.
• [658] Ibid, paras. 143-208.
• [659] Ibid, paras. 209-293.
• [660] Ibid, paras. 295-302.
• [661] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
• [662] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, paras. 304 et seqq.
• [663] Ibid, para. 307.
• [664] Ibid, para. 310.
• [665] Ibid, para. 310. In this respect, the Court pointed out that – vice versa – also a non-essential patent might confer a dominant position, if the patented invention is superior in terms of technological merit and/or economical value, para. 312.
• [666] Ibid, paras. 310 et seq.
• [667] Ibid, para. 311.
• [668] Ibid, paras. 315 et seqq.
• [669] Ibid, para. 321.
• [670] Ibid, para. 326.
• [671] Ibid, para. 327.
• [672] Ibid, para. 330.
• [673] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06.
• [674] Ibid, paras. 331 et seqq.
• [675] Ibid, para. 335.
• [676] Ibid, para. 337.
• [677] Ibid, para. 339.
• [678] Ibid, para. 343.
• [679] Ibid, para. 345.
• [680] Ibid, para. 356.
• [681] Ibid, paras. 357 et seqq.
• [682] Ibid, paras. 366 et seqq.
• [683] Ibid, para. 340.
• [684] Ibid, para. 341.
• [685] Ibid, paras. 395 et seqq.
• [686] Ibid, paras. 400 et seqq.
• [687] Ibid, para. 399.
• [688] Ibid, para. 405.
• [689] Ibid, paras. 411-417.
• [690] Ibid, para. 419.
• [691] Ibid, para. 421.
• [692] Ibid, para. 425.
• [693] Ibid, para. 422.
• [694] Ibid, paras. 426 et seqq.
• [695] Ibid, para. 429.
• [696] Ibid, para. 431.
• [697] Ibid, para. 432.
• [698] Ibid, para. 433.
• [699] Ibid, para. 438.
• [700] Ibid, para. 443.
• [701] Ibid, para. 444.
• [702] Ibid, para. 445.
• [703] Ibid, para. 579.
• [704] Ibid, para. 582.
• [705] Ibid, paras. 583 et seqq.
• [706] Ibid, para. 564.
• [707] Ibid, paras. 568 et seqq.
• [708] Ibid, paras. 573 et seqq.
• [709] Ibid, para. 451.
• [710] Ibid, para. 449.
• [711] Ibid, para. 454.
• [712] Ibid, paras. 487 et seqq.
• [713] Ibid, para. 491.
• [714] Ibid, para. 495.
• [715] Ibid, paras. 591 et seqq., particularly para. 596.
• [716] Ibid. para. 597.
• [717] Ibid. para. 504.
• [718] Ibid. para. 508.
• [719] Ibid. para. 514.
• [720] Ibid. paras. 511 et seqq.
• [721] Ibid. para. 524.
• [722] Ibid, para. 528.
• [723] Ibid, paras. 531-543.
• [724] Ibid, paras. 545 et seqq.
• [725] Ibid, para. 546.
• [726] Ibid, para. 599.
• [727] Ibid, para. 600.
• [728] Ibid, para. 603.
• [729] Ibid, paras. 605 et seqq.
• [730] Ibid, paras. 617 et seqq.
• [731] Ibid, para. 625.

HEVC (Dolby) v MAS Elektronik

7 五月 2020 - Case No. 4c O 44/18

A. Facts

The claimant, Dolby, operates in the field of audio and video innovation and is the owner of a portfolio of related patents, including a European Patent concerning the encoding and decoding as well as the sequence of digital images. This patent reads on the HEVC standard (Standard Essential Patent, or SEP). Dolby has contributed the patent in question to a pool administered by HEVC Advance, which offers licences to standards users for a significant portfolio of related SEPs of several patent holders.

The Defendant, MAS Elektronik AG (MAS), operates in the home entertainment field and sells articles such as television sets and receivers (set-up boxes, or STBs). These devices are compatible with the DVB-T/T2 standard that, in turn, makes use of the encoding method according to the HEVC standard.

In 2017, HEVC Advance sent a notification informing MAS about the infringement of SEPs included in the pool. On 7 November 2017, HEVC Advanced offered a licence to MAS on basis of its standard licensing agreement.

Since no agreement was reached, Dolby filed a lawsuit against MAS before the District Court of Düsseldorf (Court). Dolby initially moved for a declaratory judgement confirming MAS' liability for damages on the merits and also asserted relevant claims for information. The action was later extended. Additionally, Dolby requested injunctive relief as well as recall and destruction of infringing products.

On 11 July 2018, after the action was filed, Dolby directly approached MAS as well. It shared a list of patents included in its SEP portfolio as well as 'claim charts', mapping a number of patents to the relevant parts of the standard. Dolby also submitted an offer for a bilateral portfolio licence to MAS which the latter did not accept.

In January 2019, MAS presented a counteroffer to HEVC Advance, which included an amount for settlement the past uses. However, MAS did not render accounts for past uses nor provided security.

On 7 May 2020, the Court rendered a decision in favour of Dolby and ordered MAS to (i) refrain from offering or supplying devices and/or means that infringe Dolby's patent in Germany, under penalty up to EUR 250,000 for each case of infringement; (ii) render accounts and information regarding infringing products; (iii) surrender for destruction any infringing product in its possession and (iv) recall infringing products from the market. The Court also recognised MAS' liability to pay for past and future damages.

B. Court's reasoning

The Court found that Dolby was entitled to assert claims arising from the patent-in-suit. The respective patent application was transferred before grant and Dolby was registered as owner in the Patent Register at the moment the patent was granted. MAS did not present any reason to question the validity of the transfer of the patent application to Dolby. [732]

Furthermore, the Court held that the patent-in-suit is essential (and not only optional) to the improvement process of encoding and decoding of images under the HEVC standard and, therefore, infringed by the devices manufactured and sold by MAS. [733]

Abuse of dominant market position

Having said that, the Court explained that by asserting claims for injunctive relief as well as recall and destruction of infringing products before court, Dolby had not abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) [734] .

In the eyes of the Court, Dolby holds a dominant position [735] . The Court highlighted that owning a patent, even a standard-essential patent, does not constitute per se a condition for market dominance [736] . That must be assessed case by case. A dominant position will be, as a rule, given if the use of a SEP is considered a pre-requisite to enter a downstream market. This is true also when the SEP is needed for offering competitive products in the downstream market. [736] In the present case, the implementation of the HEVC was required to make a competitive offering in the STB market [737] .

Notwithstanding the above, the Court found that Dolby had not abused its dominant market position, considering that it had fulfilled the obligations set forth by the Court of Justice the EU (CJEU) in the matter Huawei v ZTE (Huawei judgment or framework) [738] .

Notification of infringement

The required notification of the infringement by the patent holder was properly done. The Court understood that HEVC Advance, as the pool administrator, was entitled to do such notification on behalf of the patent holders that contributed patents to the pool. There is nothing in the Huawei judgment that suggests otherwise. [739]

The Court explained that the notification must, at least, include the publication number of the patent-in-suit and also indicate the infringing products and the infringing act(s) of use. [740] The notification does not need to contain a detailed (technical or legal) analysis, with reference to standards or claim features, but only present sufficient information that enables the other party to assess the infringement accusation made against it. [740]

In this case, the notification initially sent by HEVC Advance to MAS was sufficient in terms of content, since it specified the infringing products, and referred to HEVC Advance's patent portfolio and its website containing additional information. The fact that no patent numbers were mentioned was not considered harmful, since this information is publicly available in the pool's website. [741] Moreover, the Court highlighted that the notification can be a mere formality, if knowledge of the infringement by the implementer can be assumed. In such case, arguing that the notification was flawed, can be considered abusive, as it was the case here. [742]

Besides the notification made by HEVC Advance, the Court found that Dolby had also made a sufficient notification itself by the letter sent to MAS on 11 July 2018. [743] The letter fulfilled all requirements in terms of content. The fact that it was sent only after the action was filed was not harmful, since MAS had been already adequately informed by HEVC Advance before.Ibid, para. 759.

Willingness to obtain a licence

Looking at the conduct of MAS after receipt of the notifications of infringement, the Court reached the conclusion that MAS had sufficiently declared willingness to enter into a pool licence with HEVC Advance. [744] On the contrary, the Court took the view that MAS had not acted as a willing licensee with respect to Dolby's subsequent offer for a bilateral licence. [745]

The Court explained that, in its licensing request towards the SEP holder, the standards implementer must express its 'serious' willingness to conclude a licensing agreement on FRAND terms [746] . For this, no strict requirements apply, in terms of content or form; moreover, also an 'implicit behaviour' can suffice [747] . The implementer is, however, required to react in due course. [748] Furthermore, 'willingness' must still exist when the patent holder makes his licensing offer [746] .

The Court held that MAS had expressed willingness to take a pool license from HEVC Advance –although no express request was made–, since "immediately" after receipt of the notification of infringement, MAS started a correspondence with HEVC Advance with the goal to initiate negotiations. [749]

On the other hand, MAS had not been willing to obtain a bilateral licence from Dolby. [743] The Court emphasized that the whole conduct of the implementer must be assessed; a 'genuine' willingness to obtain a license must be demonstrated. [750] This is not given, when -as it had been the case here- the implementer only poses repetitive questions that do not present any constructive remarks and, therefore, do not lead to any progress in the negotiation. [751] In addition to that, it could be expected that a licensee willing to sign a bilateral agreement with an individual pool member, will have an interest to also engage in discussions with further pool members, especially for assessing the total 'economic burden' for its products, in comparison with a pool licensing agreement. [752] MAS refrained from doing that. What is more, it made clear in the proceedings that it was only interested in a pool licence.Ibid, para. 765.

SEP holder's offer

Since the Court held that MAS had adequately expressed willingness to sign a pool licence with HEVC Advance, it moved on to examine, whether HEVC Advance's licensing offer to MAS based on its standard licensing agreement was in line with the Huawei framework. Since the Court reached the conclusion that MAS had not been willing to enter into a bilateral licence with Dolby, it refrained from examining the compliance of Dolby's offer with the Huawei judgment in detail.

The Court found that the offer made by HEVC Advance met the Huawei requirements. In terms of form, the fact that the standard agreement sent to MAS had not been signed did not cause any concerns. [753] In the Court's view, the CJEU requires that the SEP holder's offer contains all usual terms of a licensing agreement, however, no binding offer that could lead to the conclusion of a licence through sole acceptance by the implementer is needed. [754]

Furthermore, HEVC Advance had sufficiently explained the royalty calculation, in line with the Huawei judgment. [755] If the patent holder has previously granted licenses to third parties, it has to give more or less substantiated reasons, depending on the circumstances of the individual case, why the royalty it envisages is Fair, Reasonable and Non-Discriminatory (FRAND). [756] In case that the SEP holder offers licences exclusively based on a standard licensing agreement, it will, as a rule, suffice to establish the adoption of the licensing programme in practice and to show that the specific offer corresponds to the standard licensing agreement. [757] The more standard licensing agreements signed are shared by the patent holder, the stronger the assumption is, that the offered rates are FRAND. [758]

The Court emphasized that is not necessary to present the full content of all the licensing agreements already concluded, but only the relevant ones, considering clearly delineated product categories. [759] Existing licences with cross-licensing-elements, are not relevant in this context, especially, when the implementer does not have any patents himself, as it was the case here. [760] Accordingly, the Court found that the forty third party agreements disclosed by Dolby in the proceedings were enough in the present case. [761]

Fair and reasonable terms

Looking at the content, the Court found that the terms of the standard licensing agreement offered by HEVC Advance are fair and reasonable. [762] As fair and reasonable can be considered terms offered to a willing party, without exploiting a dominant position. [763] Apart from the royalties, the offer must also prove reasonable with regard to the other terms as well (scope, territory etc.). [763]

Having said that, the Court held that the royalties charged by HEVC Advance's standard licensing agreement are fair and reasonable. [764] An indication of that is the fact, that up to January 2020, more than forty licensees selling products in the same category as MAS had taken a license on the same terms, modified sometimes by 'blended rates'. [765] On the other hand, the fact that lower royalties are charged by a competing patent pool (MPEG LA) does not make the HEVC Advance's rate unreasonable, as FRAND is considered rather to be a range than a specific amount. [766]

Furthermore, the Court took the view that the limitation of the offered licence to 'practised claims' only (that is those claims of the licenced patents that are essential to the practice of the HEVC standard), is not unreasonable. [767] This limitation does not present any adverse effect on MAS' business, since the royalty payments correspond to the claims that are actually used by the licensee (and, vice versa, no obligation to pay for claims not used is established). [768]

Also, in the eyes of the Court, MAS was not able to prove that the lack of an adjustment clause is unreasonable [769] . MAS failed to establish that respective clauses are common in industry practice; on the contrary, the fact that at least forty parties had signed a licence with HEVC Advance without such clause indicated the opposite. [770] What is more, the royalty clause is constant. That means that the rate charged will not change if licenced patents expire, but also will remain the same in the case of addition of new patents to the pool that will be automatically covered by the agreement. Insofar, an economic risk for both parties exists. [771]

Regarding the choice of forum clause contained in the standard licensing agreement, establishing the jurisdiction of courts in New York as well as granting HEVC Advance the right to also choose other venues at its discretion, the Court was not able to conclude any unfair disadvantage for MAS. [772] The same clause was agreed in many other licensing agreements signed by HEVC Advance with third parties. [773] In fact, MAS agreed to a similar one in its license agreement with the MPEG LA pool. [773]

Non-discrimination

Besides that, the Court was unable to establish any discrimination against MAS through the licence offered by HEVC Advance. [774] The obligation of equal treatment applies only to aspects that are comparable; even a market dominant undertaking must be allowed to respond differently to different market conditions. [775] An unequal treatment is to be assessed based on the specific circumstances of each individual case under the goals of competition and can be accepted as lawful, if objectively justified. [776] Therefore, not every difference in the terms and conditions of a licence can be seen as abusive. [777] According to the Court, the same principle also applies to the licensing of SEPs. [778]

Against this background, the Court found that the fact that the pool administered by HEVC Advance updated its terms in a way that an 'uniform licensing regime' no longer exists, since for certain licensees the previous version of the agreement still applies, does not mean that the new standard licensing agreement offered to MAS was discriminatory. [779] Although, according to the case-law of the Higher District Court of Düsseldorf, a patent holder (and its assignees) is bound to the 'licensing concept' underlying the first ever licence granted, it is allowed to deviate from such 'concept', if this does not lead to a discrimination of either past nor future licensees. [780] In the Court's view, this was not the case here: The old licensees were offered the possibility to shift to the new terms, and there is no evidence that MAS would be treated worse by the terms of the new standard licensing agreement. [780] On the contrary, the new royalty calculation leads to a lower licensing burden. [780]

The Court also took the view, that there is also no discrimination in the way the patent-in-suit is enforced. [781] MAS argued that it was discriminated, because its competitors or large companies were not sued by members of the HEVC Advance pool for patent infringement. The Court highlighted that refraining from enforcement does not necessarily mean discrimination: the phase of adoption of the relevant standard, the costs and procedural risks involved, the knowledge of the holder regarding the infringement and its extent are factors to be considered. [782] In the case of HEVC Advance, the initial phase of its existence and limitation of resources are relevant for this assessment. [783]

Moreover, no discrimination with respect to the amount of the royalty rate or the scope offered was found. [784] The Court pointed out that the fact that some of the existing licensees have agreed on rates higher than those offered to MAS, could not be used in favour of the latter: as a rule, only those who are treated less favourably can invoke discrimination. [785]

The Court further held that the 'blended rates' agreed with certain other licensees, did not render the offer made to MAS by HEVC Advance discriminatory either. [786] These rates mirrored variations due to the difference in products and implementer's profiles and were either offered to MAS or not applicable to his business model. [787]

Furthermore, the Court found that the 'incentive programme' offered by the HEVC Advance pool, which under specific conditions (especially the signing of a licence at an early point in time) results in discounted rates, is lawful and non-discriminatory. [788] The same is true with respect to discounts offered for past uses prior to the signing a licence, as it is the case for HEVC Advance [789] .

Finally, a 10% discount offered by HEVC Advance when a licensee also takes a trademark licence, allowing for the labelling of products with the HEVC trademark, was equally offered to the MAS, so that the Court could not see a discrimination of MAS by such provision in the standard licensing agreement. [790]

Implementer's counteroffer

The Court found that MAS' counteroffer was not FRAND. [791] The offer made by MAS failed to present sufficiently an explanation of why its terms would be FRAND, in view of the terms offered by HEVC Advance. MAS presented only a royalty rate, without making any reference to the rest of the clauses contained in the offer previously made by HEVC Advance, which it alleged to be discriminatory or unreasonable. [792]

Having found that MAS' counteroffer had not been FRAND, the Court explained that the fact that MAS neither rendered accounts nor provided security did not play any role for its decision. [793]

C. Other issues

By the facts of the case, the Court concluded that MAS acted culpably, or at least negligently, and, therefore, owes compensation for past and future damages caused by its actions. Moreover, damages should not be limited to a FRAND royalty. [794] The quantification of the damages will be possible with the rendering of accounts by MAS. [795]

The lawsuit for revocation of the patent, arguing lack of inventive step, that had not been decided yet, had no likelihood of success, according to the Court's analysis. Therefore, the request for staying the proceedings until a decision on the validity is delivered by the Federal Patent Court was denied. [796]

• [732] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18 (cited by www.nrwe.de), paras. 75 et seqq.
• [733] Ibid, paras. 157-184.
• [734] Ibid, paras. 186 et seqq.
• [735] Ibid, paras. 189 et seqq.
• [736] Ibid, paras. 194 et seqq.
• [737] Ibid, para. 197.
• [738] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
• [739] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18, paras. 213 et seqq and paras. 221 et seqq.
• [740] Ibid, para. 210.
• [741] Ibid, paras. 229 et seqq.
• [742] Ibid, para. 233.
• [743] Ibid, para. 759.
• [744] Ibid, paras. 236 et seqq.
• [745] Ibid, paras. 760 et seqq.
• [746] Ibid, para. 237.
• [747] Ibid, para. 237 and para. 761.
• [748] Ibid, para. 760.
• [749] Ibid, para. 238.
• [750] Ibid, para. 763.
• [751] Ibid, para. 764.
• [752] Ibid, para. 765.
• [753] Ibid, paras. 241 et seqq.
• [754] Ibid, para. 242.
• [755] Ibid, paras. 244 et seqq.
• [756] Ibid, para. 245.
• [757] Ibid, para. 248.
• [758] Ibid, para. 255.
• [759] Ibid, para. 250.
• [760] Ibid, para. 253.
• [761] Ibid, para. 249.
• [762] Ibid, paras. 257 and 258.
• [763] Ibid, para. 260.
• [764] Ibid, paras. 264 et seqq.
• [765] Ibid, para. 268.
• [766] Ibid, paras. 271 et seqq.
• [767] Ibid, paras. 280 et seqq.
• [768] Ibid, para. 284.
• [769] Ibid, paras. 286 et seqq.
• [770] Ibid, para. 295.
• [771] Ibid, para. 298.
• [772] Ibid, paras. 301 et seqq.
• [773] Ibid, para. 304.
• [774] Ibid, paras. 306 et seqq. and paras. 314 et seqq.
• [775] Ibid, para. 308.
• [776] Ibid, paras. 308 et seq.
• [777] Ibid, para. 310.
• [778] Ibid, para. 311.
• [779] Ibid, paras. 314 et seqq.
• [780] Ibid, para. 318.
• [781] Ibid, para. 321.
• [782] Ibid, para. 322.
• [783] Ibid, para. 323.
• [784] Ibid, paras. 325 et seqq. as well as paras. 443 et seqq.
• [785] Ibid, para. 326.
• [786] Ibid, paras. 328 et seqq.
• [787] Ibid, paras. 329 et seqq.
• [788] Ibid, paras. 334 et seqq.
• [789] Ibid, paras. 526 et seqq.
• [790] Ibid, paras. 665 et seqq.
• [791] Ibid, paras. 751 et seqq.
• [792] Ibid, paras. 754.
• [793] Ibid, para. 756.
• [794] Ibid, para. 773.
• [795] Ibid, para. 774.
• [796] Ibid, paras. 781 et seqq.

Cases from 曼海姆地区法院 - District Court

LG Mannheim

4 三月 2016 - Case No. 7 O 24/14

A. Facts

Case No. 7 O 24/14 [797] related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard (‘subtitle data encoding/decoding and recording medium for the same’). [798] The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used such DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. In early 2013, the patent pool approached the defendant’s parent company about the use of their patents in general.

On 30 May 2014, the defendant offered to enter into a license agreement for the respective German patent. The defendant indicated that it was willing to enter into negotiations for a portfolio license (but for Germany only). It was also willing to have the claimant determine the royalties owed under section 315 of the German Civil Code. On 25 July 2014, the claimant suggested to change the license offer to a worldwide portfolio license. The defendant rejected and informed the claimant on 22 August 2014 as to the number of respective computers they put into circulation between July 2013 and June 2014 in Germany.

On 13 March 2015, the claimant made an offer for a worldwide portfolio license. On 5 May 2015, the defendant requested the relevant claim charts and further details as to how the license fees had been calculated. On 25 June 2015, the claimant sent the claim charts but refused to elaborate on the calculation method. The claimant suggested a meeting in which it would answer further questions. The defendant responded on 13 July 2015 that most of the claim charts lacked necessary details. In a meeting between the claimant and the defendant’s parent company on 3 September 2015, the parties were unable to reach an agreement. On 30 September 2015, the claimant sent a PowerPoint presentation containing explanations regarding the patent and the calculation of the license fees.

The District Court of Mannheim granted an injunction order on 4 March 2016. [799] It also held that the defendant was liable for compensation and ordered it to render full and detailed accounts of its sales to determine the amount of compensation owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

B. Court’s Reasoning

1. Notice of Infringement

According to the Huawei/ZTE ruling, the claimant is required to notify the defendant of the alleged patent infringement. According to the District Court, this notice is supposed to provide the defendant an opportunity to assess the patent situation. [800] Thus, it is insufficient to notify the defendant that its products contain the respective standard and it is therefore infringing the SEP. Instead, the claimant is required to specify the infringed patent, the standard in question, and that the patent has been declared essential. The level of detail required depends on the respective situation. [801] However, the description does not need to be as thorough as a statement of claim in patent litigation. In the eyes of the court, the customary claim charts (which show the relevant patent claims and the corresponding passages of the standard) will typically be sufficient. By sending the charts to the defendant, the claimant had met its obligations under the Huawei/ZTE ruling. [802]

The Huawei/ZTE principles require the SEP holder to give notice of infringement before commencing patent infringement proceedings. Otherwise, the SEP holder would abuse its market power, which would mean that the patent infringement court would not be able to grant an injunction order. However, according to the District Court, in such a situation the SEP holder would not lose its patent rights, but would be prevented from exercising those rights in court. [803] Proceedings that had been commenced prior to the Huawei/ZTE ruling present a special case. In that situation, the SEP holder could not have been aware of the obligations that the CJEU subsequently imposed on claimants. Thus, it must be possible for an SEP holder to go through the Huawei/ZTE process subsequently without losing the pending lawsuit. [804] On this basis, the District Could held that the claimant had taken all necessary steps after commencing proceedings, which met the Huawei/ZTE requirements. [805]

2. The SEP Owner’s Licensing Offer

The District Court expressed its view that the CJEU had wanted to establish a procedure that keeps the infringement proceedings free of complicated deliberations about the conditions of the offer, similarly to the German Federal Court of Justice decision Orange Book Standard. [806] If the alleged infringer argues that the conditions of the offer are not FRAND – and, according to the court, alleged infringers typically do so – it is not the role of the infringement court to examine the conditions of the offer and decide whether they are FRAND or not. [801] Thus, the District Court took the view that an infringement court only assesses in a summary review whether the conditions were not evidently non-FRAND. An offer is only non-FRAND if it is under the relevant circumstances abusive. For example, this would be the case if the conditions offered to the alleged infringer were significantly worse than those offered to third parties. [807] The District Court held that in the case in issue the royalties were not evidently non-FRAND because the royalty rates were generally accepted in the market. [808]

The offer needs to include the calculation method in respect of the royalties. [807] However, the CJEU did not elaborate on the level of detail required. [809] The District Court took the view that the SEP holder needs to enable the alleged infringer to understand why the offer is FRAND. In the case in issue, the claimant had included the calculation method. It had also provided further explanations regarding the calculation, which met the Huawei/ZTE requirements. [810]

3. The standard implementer’s reaction

The alleged infringer is required to respond to the SEP proprietor’s license offer, even if the infringer is of the opinion that the offer does not meet the FRAND criteria. [809] The only possible exception is an offer that, by means of summary examination, is clearly not FRAND, which would constitute an abuse of market power. A counter-offer would need to be made as soon as possible, taking into account recognized commercial practices in the field and good faith. The District Court held that the defendant had not made an adequate counter-offer. It is common business practice to enter into license agreements in respect of worldwide portfolio licenses. [811] The defendant’s counter-offer only included the respective German license, which was deemed by the District Court as insufficient. [811] Further, the defendant had not made an adequate deposit into the court as required under the Huawei/ZTE principles. [812]

C. Other Important Issues

The court held that the procedures prescribed by the Huawei/ZTE ruling apply to applications for injunctions and recall orders, but not to rendering accounts and compensation. Regarding rendering accounts and compensation, SEP holders could pursue their rights in court without additional requirements. [809]

Further, the District Court was of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. Even if the claimant’s conduct was anti-competitive pursuant to Art. 101 TFEU, the standardisation agreement would be void. [813] This has no implications for patent infringement proceedings.

The court also held that there was no general rule that the SEP holder could only bring proceedings against the manufacturer of the infringing product. [814] In the eyes of the District Court, the Higher Regional Court of Karlsruhe decision 6 U 44/15 (23 April 2015) did not establish such a principle. In that case, the defendant was a company that acted merely as a distributor of infringing products (which means it was reselling the products without making any alterations). In contrast, the defendant in the present case had installed the infringing software onto laptops and then sold them under its own brand name. Thus, the two cases were not comparable. [814]

• [797] See also OLG Karlsruhe, 8 September 2016, 6 U 58/16 (application to stay execution of LG Mannheim, 7 O 24/14).
• [798]  LG Mannheim, 4 March 2016, 7 O 24/14, pp. 4-6.
• [799] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 2-3.
• [800] LG Mannheim, 4 March 2016, 7 O 24/14, p. 22.
• [801] LG Mannheim, 4 March 2016, 7 O 24/14, p. 23.
• [802] LG Mannheim, 4 March 2016, 7 O 24/14, p. 34/35.
• [803] LG Mannheim, 4 March 2016, 7 O 24/14, p. 26.
• [804] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 27-30.
• [805] LG Mannheim, 4 March 2016, 7 O 24/14, p. 33.
• [806] LG Mannheim, 4 March 2016, 7 O 24/14, p. 21.
• [807] LG Mannheim, 4 March 2016, 7 O 24/14, p. 24.
• [808] LG Mannheim, 4 March 2016, 7 O 24/14, p. 37.
• [809] LG Mannheim, 4 March 2016, 7 O 24/14, p. 25.
• [810] LG Mannheim, 4 March 2016, 7 O 24/14, p. 35/36.
• [811] LG Mannheim, 4 March 2016, 7 O 24/14, p. 38.
• [812] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 38-40.
• [813] LG Mannheim, 4 March 2016, 7 O 24/14, p. 43.
• [814] LG Mannheim, 4 March 2016, 7 O 24/14, p. 44.

Saint Lawrence v Deutsche Telekom

27 十一月 2015 - Case No. 2 O 106/14

1. Facts
   Since 28 August 2014, Claimant, a non-practicing entity established under German law, is registered as the current proprietor of the European patent EP 1.125.284 B1, originally granted to applicant “V” (Voiceage Corporation). Whether “V” validly transferred the patent to Claimant is disputed between the parties. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices. The patent has been found to be essential to ETSI’s AMR-WB standard by IPEC. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001 “V”, who joined ETSI only after the standard had been set, repeatedly—on 29 May 2001, 26 October 2004 and 7 January 2010—declared its readiness to grant licenses on FRAND terms for the respective patent.
   After initiating the present action—Defendant having been served with the claim on 7 August 2014—Claimant informed Defendant by letter as of 31 July 2014 (including a copy of the statement of claims as of 23 July 2014) that it was ready to grant licenses on FRAND terms for the patent-in-suit and five other German patents allegedly used by Defendant. Inviting Defendant to discuss such a licensing agreement Claimant offered, in addition, to communicate a draft licensing agreement by letter as of 9 December 2014. Defendant did not show any interest in acquiring a license regarding the patent-in-suit.
   Prior to the infringement action, Claimant neither tried to contact nor to make a licensing offer to Defendant’s supplier “H”(HTE) which, knowing about the lawsuit since August 2014, acted as an intervener in the present proceedings. Subsequent to Defendant’s third-party notice, “H” started licensing negotiations with Claimant on 9 December 2014. After “H” had signed a non-disclosure agreement provided by Claimant on 22 December 2014, Claimant submitted a draft licensing agreement on 12 January 2015, being corrected on 26 January 2015. Talks took place on 9 February 2015. By letter as of 23 February 2015 “H” made a supplemented proposal for the determination of the licensing conditions. In an e-mail as of 6 March 2015 “H” declared its willingness to take a license for Germany alone and specified conditions. As a reaction to Claimant’s offer as of 25 March 2015 concerning a worldwide license “H” submitted, on 2 April 2015, a counter-offer that was limited to Germany and suggested third party determination of royalties by the High Court of England and Wales. While Claimant rejected the counter-offer by letter as of 19 April 2015, “H” declared to adhere to its offer by letter as of 8 June 2015. On 3 September 2015 “H” sent an additional letter according to which a bank guaranteed, under certain conditions, payment of royalties for past use of the relevant patents in Germany. As Claimant criticized the letter as incomprehensible by e-mail of 13 September 2015, Defendant subsequently (inter alia by submitting documents to the court on 23 September 2015) explained in greater detail how the royalties were to be calculated.
2. Court’s reasoning
   1. Market power and notice of infringement
      The court finds, in any case, no abuse of (potential) market power, as H behaved tactically motivated causing delay and made its own offers linked to unacceptable conditions. However, the court leaves open the questions (1) of whether the SEP conveyed actual market power to Claimant, (2) of whether—even absent actual market dominance—the FRAND declaration subjected Claimant to the conduct requirements for a market dominant SEP proprietor, (3) of whether Claimant is to be treated as if it had made the FRAND declaration itself, and (4) of whether a refusal to grant FRAND licenses to Defendant’s device suppliers entitled Defendant to a FRAND defense regardless of its own readiness to take a license. [815] The court made however clear that enforcing the right of injunction is not a misuse when the infringer, even after the complaint has been raised and despite a reasonable timeframe, does not show any interest in getting a license.
      As regards the Huawei requirement to alert the standard user of the infringement, the court focused on different aspects. Since, in the present case, Defendant refrained from expressing its willingness to conclude a licensing agreement on FRAND terms it was left undecided whether Claimant complied with its obligation to notify prior to the initiation of court proceedings by sending, after bringing the action but before the statement of claims was served to Defendant, a letter from which Defendant could recognize that an action had already been brought.
      The Mannheim court did also not determine whether Claimant, in order to avoid a violation of Article 102 TFEU, had to inform “H” about the patent infringement because the latter learned or could have easily learned about the possible violation of the SEP during a phone call with Defendant in August 2014. [816] However, “H” did not sufficiently express its willingness to conclude a licensing agreement on FRAND terms because it took “H” more than three months to submit a license request after it had become aware of the court action. “H” could have objected a violation of Article 102 TFEU if it had expressed such willingness and complied with the subsequent Huawei obligations. However, “H” failed to do so also because it refrained from submitting a satisfying counter-offer. [817]
   2. The SEP owner’s licensing offer
      The court seems to favor FRAND-compatibility of worldwide licenses as it clarifies that limiting the counter-offer to Germany was “unacceptable” but does not decide on the issue. Also, the court left undecided whether the royalty rate offered by Claimant satisfied FRAND. [818]
   3. The standard implementer’s reaction
      Considering the subsequent conduct obligation of the standard user, the district court found that a FRAND counter-offer has to be submitted irrespective of whether the preceding licensing offer made by the SEP proprietor itself is FRAND. In order to trigger the counter-offer obligation it is sufficient that the licensing offer contains—as in the present case—all information, in particular regarding royalty calculation, which is necessary for Defendant to submit a counter-offer corresponding to FRAND terms. The Huawei obligation to diligently respond does not merely arise where a licensing offer is FRAND but it has to be considered as an expression of the sincere willingness of Defendant to conclude a licensing agreement. If such willingness is given, the patent proprietor will not be allowed to present a subsequent FRAND licensing offer after the initiation of proceedings. [819]
      The court then analyzed whether Defendant’s counter-offer met the ECJ requirements in terms of content, but left it undecided whether a limitation to Germany could be in compliance with FRAND terms. It denied the existence of a “specific” counter-offer in the present case because the amount of the royalty was not specified in the document itself but was intended to be determined by an independent third party. [820] In consequence, “H” could not fulfill its obligation to provide appropriate security because it was not possible to anticipate which amount of royalty would have been stipulated by the “independent third party”. [821]
3. Other important issues
   In the course of licensing negotiations, the standard user is neither prevented from challenging validity, standard-essentiality or effective use of the patent in question nor to reserve its right to do so. [822]
   As regards ownership and the transfer of the patent from the original patent proprietor to the non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes the presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [823]
   No patent ambush-defense based on § 242 BGB could be raised. As the court assessed in a detailed, torts-based analysis, [824] Defendant and Intervener could establish neither collusion of “V” and “N” (a participant in the setting of the AMR-WB standard) nor bad faith of “N” regarding “V” ’s patents. Hence, non-declaration by “N” did not amount to a patent ambush. Nor could non-declaration by “V” constitute a patent ambush since “V” was no member of ETSI—and, hence, not bound by a duty to disclose resulting from ETSI’s IP policy—when the AMR-WB standard was being set. Furthermore, Defendant and Intervener could not show why they should have been adversely affected by “V” ’s alleged violation of the ETSI IPR Policy, given that Claimant had declared its willingness to grant a license on FRAND terms. [825] In particular, they could not substantiate that a different form of the standard, avoiding “V” ’s patents, would have been set, had the standard-setting participants known about these patents. [826] Given these deficiencies in the attempt to establish a patent ambush the court left open whether such an ambush would result in an obligation to grant a royalty free- or “only” a FRAND license but indicated to favor the FRAND license-sanction. [827]

• [815] Case No. 2 O 106/14, para. 133
• [816] Case No. 2 O 106/14, para. 139-144
• [817] Case No. 2 O 106/14, para. 146-149
• [818] Case No. 2 O 106/14, para. 152-153
• [819] Case No. 2 O 106/14, para. 153-160
• [820] Case No. 2 O 106/14, para. 158-164
• [821] Case No. 2 O 106/14, para. 167-169
• [822] Case No. 2 O 106/14, para. 146
• [823] Case No. 2 O 106/14, para. 78-80
• [824] Cf. for details LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 119-131
• [825] Case No. 2 O 106/14, para. 118-131
• [826] Cf. LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 131, i.a. on the mechanism of “blind selection” among technological alternatives, (initially) irrespective of existing patents and their ownership situation.
• [827] Case No. 2 O 106/14, para. 198

NTT DoCoMo v HTC

29 一月 2016 - Case No. 7 O 66/15

1. Facts
   Claimant owns the patent EP 1 914 945, declared to be essential with regard to ETSI’s UMTS standard. Defendant markets devices implementing the UMTS standard (in particular the HSUPA/EUL technology). On 19 March 2014 Claimant sent to Defendant’s group parent a detailed licensing offer and explained its conditions at several instances before filing suit in April 2015. As of 7 April 2014 and 15 July 2014, Claimant communicated to Defendant’s group parent company claim charts in order to demonstrate standard-essentiality of its patent and further explained the issue in a presentation on 8 July 2014. Defendant submitted its first counter-offer on 30 October 2015. The counter-offer envisaged a 3 year-license limited to some of the countries in which Defendant markets its products. Claimant rejected the counter-offer on 12 November 2015. Defendant did not provide security but merely promised to do so, based on a calculation including sales of relevant devices in Germany only. Claimant rejected this and demanded security based on worldwide sales.
2. Court’s reasoning
   1. General meaning of the Huawei framework
      Prior to discussing specific conduct requirements established by the Huawei ruling, the court sketches its approach in a general manner. [828] According to the court the Huawei decision establishes a set of rules of due conduct in SEP licensing negotiations. Based on whether the parties comply with these rules the respective court can determine whether an SEP owner’s seeking of an injunction and a recall of products constitutes an abuse of a position of market dominance or a justified reaction to a standard implementer’s delaying tactics. In consequence, the respective court does not—unless it has to decide a claim for the payment of licensing fees and not claims for injunction and recall of products—have to rule on the substance of the offered licensing conditions or their being FRAND. [829] This is in line with recognized commercial practice according to which reasonable parties will not usually want courts to determine their licensing conditions. Furthermore, the ECJ has—from the perspective of the Mannheim District court—stressed that the exercise of the exclusive rights conveyed by a patent will be barred only in very exceptional circumstances. As a result, it is up to the standard implementer to show that such exceptional circumstances are present. [830]
   2. Market power and notice of infringement
      The court does not elaborate on the market power issue. As part of the notice of infringement [831] the court deems it necessary for the proprietor to identify the (allegedly) violated patent, including the patent number, and to inform that the patent has been declared standard-essential. Furthermore, the proprietor has not only to name the standard but to specify the pertinent part of the standard and the infringing element of the implementer’s products in a way that enables the standard implementer to assess whether its use of the standard infringes on the patent-in-suit. The level of detail required must be determined on a case-by-case basis, depending mainly on the expertise of – or available to – the implementer. Presenting claim charts corresponding to recognized commercial practice for licensing negotiations is, in principle, an acceptable way to give notice of the alleged infringement. In casu the court considered the proprietor’s notice as sufficient. [832] In particular, notice was given before the bringing of an action for infringement and the proprietor had submitted claim charts not only with regard to the patent-in-suit but also with regard to six other patents from the portfolio offered for license, a sample which the court deemed in accordance with recognized commercial practice. Sufficient notice having taken place, the court left open the question whether, (1) the Huawei rules applied at all in spite of the action being brought before the ECJ’s decision, and whether (2) the proprietor was obliged to submit claim charts for other patents than the patent-in-suit.
   3. The SEP proprietor’s licensing offer
      The court’s general understanding of the Huawei rules of conduct (cf. above) has a considerable impact on the way it intends to react to a SEP proprietor’s licensing offer: [833] The offer must specify the relevant conditions in a way that, in order to conclude a licensing agreement, the standard implementer has merely to state his acceptance of the offer. The calculation of the license fee, in particular, must be explained in a manner that enables the standard implementer to objectively assess its FRAND conformity. Even if the standard implementer disputes the FRAND character of the offer it is not the court’s business to determine whether the licensing conditions are actually FRAND. Neither is the SEP proprietor prohibited from offering conditions slightly above the FRAND threshold. A differing view of the parties on what constitutes FRAND is to be expected and provides no reason for cartel law-based intervention. An exploitative abuse of market power can, however, be present where the proprietor, after having made a FRAND declaration, offers conditions that are, under the circumstances of the case and without objective justification, manifestly less favorable (in an economic sense) than the conditions offered to other licensees. Correspondingly, the respective court is only required to determine, based on a summary assessment, whether the proprietor’s licensing offer evidently violates the FRAND concept. In casu the court accepted the Huawei compliance of the licensing offer, [834] in particular because the proprietor had explained its calculation of the licensing fee based on the percentage of patents in the WCMA/SIPRO and the VIA patent pools held by the proprietor. The proprietor was not required to prove its share in the patent pools. The parties disagreed over whether the smallest saleable unit forms an appropriate basis for royalty calculation and whether it is acceptable to look only at the size, not the quality of a proprietor’s share in a relevant patent pool. The court, however, considered these issues as not decisive for the Huawei-conformity of the licensing offer.
   4. The standard implementer’s reaction
      As a further consequence of the court’s general approach, the standard implementer’s duty to diligently react to the proprietor’s licensing offer is not removed only because the offer does not fully comply with FRAND. [835] . An exception applies only where it can be established by a mere summary assessment that the offer evidently violates FRAND. If a reaction of the alleged infringer is due, the “diligence”, i.e. timeliness, of this offer has to be determined cases-by-case, based on the principles of good faith and recognized commercial practice. In casu the standard implementer’s reaction was insufficient (1) because a counter-offer was made only 1.5 years after receiving the licensing offer and 0.5 years after the bringing of the proprietor’s action, (2) because security was merely promised, not provided, and (3) because the amount of security offered fell short of the court’s suggestions.
3. Other important issues
   The court underlines that a SEP proprietor has to respect the Huawei rules of conduct only with regard to an action for prohibitory injunction or the recall of products. It is, however, free from their grip when bringing an action seeking the rendering of accounts in relation to past acts of use or an award of damages in respect of those acts of use.

• [828] Case No. 7 O 66/15, para. 53 et seq.
• [829] Case No. 7 O 66/15, para. 56
• [830] Case No. 7 O 66/15, para. 53
• [831] Case No. 7 O 66/15, para. 57
• [832] Case No. 7 O 66/15, para. 65-69
• [833] Case No. 7 O 66/15, para. 58
• [834] Case No. 7 O 66/15, para. 70-72
• [835] Case No. 7 O 66/15, para. 59 et seq

Pioneer v Acer

8 一月 2016 - Case No. 7 O 96/14

1. Facts
   Claimant owns the patent EP 1 267348, allegedly essential to the DVD standard and administered with regard to its licensing by the patent pool “A”. Early in 2013 “A” and the Defendant’s group parent were in contact regarding “A” ’s DVD licensing activity, but no concrete notice of infringement was made and no licensing negotiations ensued. After having been sued for patent infringement Defendant submitted, on 6 October 2014, an offer to license the patent-in-suit for Germany at FRAND conditions, with the exact royalty rate to be determined by Claimant pursuant to § 315 German Civil Code. Furthermore, Defendant declared to be willing to negotiate a portfolio license for all German patents of Claimant and, in case the negotiations were to fail, to have the licensing conditions determined by a state court or arbitration tribunal. In order to indicate what Defendant considered to be a FRAND royalty rate Defendant submitted an expert opinion. As of 28 November 2014, Claimant proposed to modify the conditions to the effect that Defendant’s group parent was supposed to take a worldwide portfolio license comprising all Claimant’s portfolio patents administered by “A”. Claimant made a (perhaps: additional) FRAND declaration with regard to the patent and informed Defendant thereof in December 2014. After Defendant had rejected this offer, Claimant offered, on 13 March and 13 April 2015, a worldwide portfolio license to Defendant’s group parent company. To the offer were added claim charts for two pool patents, as well as information on how Claimant deduced the royalty from the overall royalty rates of the “A”-patent pool. On 5 May 2015, Defendant’s group parent requested claim charts regarding all patents to be licensed as well as further information on royalty calculation. Claimant sent, on 7 August 2015, claim charts for five additional patents declaring its willingness to provide further information as soon as constructive technical discussions would be taken up. In a filing to the court as of 20 November 2015, Claimant explained its royalty calculation in greater detail and submitted an expert opinion on the issue.
2. Court’s reasoning
   1. General meaning of the Huawei framework and applicability to transitory cases
      As to the court’s general take on the Huawei rules cf. LG Mannheim, 29 January 2016 - 7 O 66/15 (above). Where an action for prohibitory injunction and recall of products has been brought before the ECJ handed down its ruling it has, in the opinion of the court, no negative effect on the action if Claimant fulfills its Huawei conduct obligations only after filing the lawsuit. [836] According to the extensive analysis undertaken by the court this is because, inter alia, the SEP proprietor could not be expected to comply with the – then future and unknown – conduct requirements established by Huawei but rather with the legal framework set by the German Federal Court (BGH) in Orange Book. Hence, a proprietor’s conduct that respected Orange Book but deviated from Huawei cannot be taken to signal inappropriate economic goals or lack of willingness to grant FRAND licenses. Furthermore, it seems more in line with the ECJ’s core intention of furthering successful licensing negotiations if the parties get the chance to perform their Huawei conduct obligations even though litigation is already underway.
      Where, however, the action is brought after the Huawei ruling a violation of the conduct requirements established therein bars—as a matter of substantive law, not of procedural law—Claimant from enforcing its patent-based rights to prohibitory injunction or recall of products. [837] Although Claimant’s action will then be dismissed, Claimant is free to catch up on its Huawei obligations and re-file the action if the standard user fails to comply with Huawei.
   2. Market power and notice of infringement
      Leaving open whether Claimant was market dominant, the court formulates general considerations identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above). The court doubts whether the initial contact between the patent pool “A” and Defendant’s group parent qualifies as an appropriate notice of infringement. In any case, such notice has been given by and after bringing the infringement lawsuit. Claimant’s statement of claims, in particular, contained all information necessary. Producing the original document in which Claimant made its FRAND declaration or proving that a FRAND declaration has been properly made during the standard-setting procedure is not required as long as the SEP proprietor considers itself bound by a FRAND licensing obligation. Not least because the lawsuit had been suspended for several months and some more months elapsed between the ECJ’s Huawei ruling and the oral hearings in the case at issue, there was ample time for the standard user to fulfill its Huawei duties and negotiate a license unburdened by the pressure created by an impending prohibitory injunction. [838] Even if it were justified to request—the court seems to doubt this—claim charts for a sample of patents where a worldwide portfolio license is offered, Claimant would have met this obligation, in particular because Defendant did not communicate that or why it considered the sample insufficient. It was not necessary for Claimant to impart to Defendant a documentation of the standard at issue. [839]
   3. The SEP proprietor’s licensing offer
      The court’s general considerations are identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above): The court’s general understanding of the Huawei rules of conduct (cf. above) has a considerable impact on the way it intends to react to a SEP proprietor’s licensing offer: [840] The offer must specify the relevant conditions in a way that, in order to conclude a licensing agreement, the standard implementer has merely to state his acceptance of the offer. The calculation of the license fee, in particular, must be explained in a manner that enables the standard implementer to objectively assess its FRAND conformity. Even if the standard implementer disputes the FRAND character of the offer it is not the court’s business to determine whether the licensing conditions are actually FRAND. Neither is the SEP proprietor prohibited from offering conditions slightly above the FRAND threshold. A differing view of the parties on what constitutes FRAND is to be expected and provides no reason for cartel law-based intervention. An exploitative abuse of market power can, however, be present where the proprietor, after having made a FRAND declaration, offers conditions that are, under the circumstances of the case and without objective justification, manifestly less favorable (in an economic sense) than the conditions offered to other licensees. Correspondingly, the respective court is only required to determine, based on a summary assessment, whether the proprietor’s licensing offer evidently violates the FRAND concept.
      In casu the court considered Claimant’s offer as sufficient, [841] in particular because a worldwide license, granted to the parent of a group, corresponded to recognized commercial practice in the field. It was no evident FRAND violation to calculate the royalties based on the licensing conditions of the patent pool “A” and Claimant’s share in the patents of this pool. It was further appropriate to demand a lump sum for past use of the patents to be licensed without specifying (in the licensing offer) the exact amount for lack of accessible information on the extent of the use. The information provided by Claimant on how the royalties were calculated was deemed sufficient. It was not necessary to impart to Defendant licensing contracts concluded with other market participants since “A” ’s model contracts were accessible on the Internet and no circumstances indicated unequal treatment of licensees absent objective justification such as differing turnovers.
   4. The standard implementer’s reaction
      The court’s general considerations are identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above). In casu the court considered Defendant’s counter-offer to be evidently non-FRAND, mainly because the license would have—inappropriately, given the facts of the case and recognized commercial practice—been limited to Germany. [842] Furthermore, Defendant neither rendered account nor provided security for its use of the patent in the past. The fact that Defendant has—allegedly—terminated its use of the patent does not remove these obligations for past periods of use. [843] As the court explains in some detail, [844] an overall assessment of the conduct of the parties indicates that Defendant engaged in delaying tactics while Claimant was not trying to use the infringement action for extorting excessive royalties.
3. Other important issues
   The court underlines that a SEP proprietor has to respect the Huawei rules of conduct only with regard to an action for prohibitory injunction or the recall of products (cf. LG Mannheim, 29 January 2016 - 7 O 66/15, above). Regarding claims for rendering of accounts it mentions, but does not decide the question whether the existence of a FRAND declaration has an impact on the content of such claims. [845]
   Even if the standard-setting at issue had—due to the lack of a timely FRAND commitment by Claimant—violated Art. 101 TFEU, this would not bar Claimant from enforcing its patents within the limits set by Art. 102 TFEU and the Huawei ruling. [846]
   Neither competition law nor the general principle of good faith required Claimant to primarily address entities that produce standard-implementing components of Defendant’s products. [847] On the contrary, Claimant was free to immediately demand the taking of a license from Defendant, all the more so because Defendant was not only engaged in marketing and selling third-party devices but also devices produced by Defendant’s group of companies using the standard-implementing components.

• [836] Case No. 7 O 96/14, para. 84-107
• [837] Case No. 7 O 96/14, para. 81-83
• [838] Case No. 7 O 96/14, para. 109 et seq.
• [839] Case No. 7 O 96/14, para. 114-117
• [840] LG Mannheim, 29 January 2016 – Case No. 7 O 66/15, para. 58
• [841] Case No. 7 O 96/14, para. 118-129
• [842] Case No. 7 O 96/14, para. 131-133
• [843] Case No. 7 O 96/14, para. 134 et seq.
• [844] Case No. 7 O 96/14, para. 136-141
• [845] Case No. 7 O 96/14, para. 142
• [846] Case No. 7 O 96/14, para. 144 et seq.
• [847] Case No. 7 O 96/14, para. 146

Philips v Archos

1 七月 2016 - Case No. 7 O 209/15

1. Facts
   Claimant, a globally operating electronics manufacturer, is the proprietor of European patents EP 1 062 743 B1 and EP 1 062 745 B1, allegedly covering part of the UMTS- and LTE-standard respectively. Defendant, being the German subsidiary of the French parent company Archos S.A., produces and markets UMTS- and LTE-based devices under the brand name “ARCHOS” in Germany.
   By letter of 5 July 2014, Claimant sent an infringement notification, including a list of the patents affected, to Defendant. Furthermore, on 15/16 September 2014, Claimant explained its licensing program to Defendant and provided for corresponding documents. After Defendant offered Claimant in a meeting on 25 November 2014 the transfer of patents which it considered essential to the UMTS- and LTE-standard respectively, Claimant sent a written licensing offer, containing a list of SEPs and patent-infringing products, to Defendant on 28 July 2015 and provided for additional technical information concerning the SEPs in-suit on 25 September 2015 via e-mail. On 12 January 2016, Defendant, in turn, submitted a written counter-offer to Claimant for a licence covering Claimant’s worldwide LTE/UMTS-patent portfolio including royalties of 0.071% of the net sales price per unit. Since the parties did not conclude a binding licensing agreement subsequently, Claimant brought an action against Defendant on 16 October 2015, received by the court on 19 October 2015. In April 2016, Defendant deposited an amount of EUR 161’343.00 at the Landesjustizkasse (federal justice treasury) Bamberg, which should cover the worldwide sales of LTE/UMTS-based devices between 2012 and 30 June 2016 and was calculated on the basis of the royalties previously offered in Defendant’s counter-offer.
2. Court’s reasoning
   1. Market power and infringement notification
      The court left open the question of whether the SEP conveyed market power to Claimant since it did, in any case, find no abuse of such potential market power.
      Having regard to the content of the infringement notification, the Mannheim court held that, in any case, the SEP proprietor, on the one hand, has to denote the patent in-suit, which it deems essential, by reference to its patent number and to indicate, that the patent has be declared essential by the respective standardization organization. In order to specify the way in which the SEP has been infringed, the SEP proprietor’s notification must, on the other hand, clarify to which standard the patent in-suit is essential and based on which circumstances it assumes that the alleged infringer makes use of the patent’s teachings. For this purpose, the SEP proprietor must indicate which (category of the) technical functionality of the challenged embodiment makes use of the standard. The alleged infringer must be able to assess the intellectual property rights situation autonomously or by recourse to a third party.
      The level of detail to be adhered to in the infringement notification depends on the specific circumstances of the case, taking into account in particular the technology knowledge of the alleged infringer or by what means it can acquire the corresponding professional expertise in a reasonable manner. In order to substantiate the facts of the infringement in accordance with Huawei, it is deemed sufficient to refer to so-called claim charts, being customarily used in the course of licensing negotiations, comparing the asserted claim of the patent in-suit according to features with the relevant passages of the standard without fulfilling the requirements of the conclusiveness test of an infringement action. In contrast, the mere reference that the standard implementer would produce or market products implementing the standard and therefore infringe the patent in-suit is not adequate.
   2. The SEP owner’s licensing offer
      As regards the Huawei condition to submit a written offer on FRAND terms prior to the initiation of proceedings, the court requires a contractual offer that is ready to be adopted and comprises the essentialia negotii. However, in the opinion of the judges, Huawei does not oblige the infringement court to determine pursuant to objective criteria whether the licensing offer complies with FRAND terms, if the latter fact is disputed by the alleged infringer. [848] The SEP proprietor’s offer is only considered not FRAND and in violation of antitrust law, if it constitutes an expression of exploitative abuse, taking into account the specific negotiation situation and, in particular, the market conditions.
      In order to comply with the obligation to specify the way in which the royalty is to be calculated, the SEP proprietor must put the alleged infringer in a position to understand on the basis of objective criteria why the former considers its licensing offer as FRAND. For this purpose, it is, in the case of quota licence agreement, not sufficient to indicate the royalties per unit without substantiating their FRAND character. The respective amount must be made sufficiently transparent, e.g. by reference to an established standard licensing program or by indicating other reference values allowing to deduce the royalty demanded, such as a pool licence fee.
      Taking into account the summary examination of the Higher Regional court in Karlsruhe granting the SEP proprietor much leeway in determining FRAND terms [849] , the Mannheim court left in the present case undecided whether it has to reassess its own standards of review, because Claimant did not sufficiently explain why royalties of USD 1.00 per unit should be FRAND in accordance with Huawei. The mere indication of the multipliers underlying the calculation of the royalties were deemed inadequate, since on the basis of this incomplete (market) information the alleged infringer is neither able to assess whether Claimant’s offer is FRAND nor to submit a FRAND counter-offer.
      The subsequent explanations as well as the expert opinion, seeking to prove the non-discriminatory character of the royalties, forming part of Claimant’s reply, did not fulfill the Huawei requirements, because prior to the initiation of proceedings Claimant has to substantiate both the manner of patent infringement and the way of calculating the royalties. Without completely dissenting from the decision previously rendered by the OLG Düsseldorf [850] , the Mannheim court, by reference to the subsequent rectification order issued by the ECJ on 15 December 2015, denied the SEP proprietor’s unlimited possibility to perform its Huawei obligations within the ongoing trial without incurring sanctions, because otherwise the central idea underlying the ECJ decision of being able to negotiate without the burden of pending proceedings while having all necessary information to evaluate the FRAND conformity of the licensing offer would be diminished.
      Moreover, Claimant was not exempted from its respective Huawei obligation due to Defendant’s alleged lack of willingness to conclude a licensing agreement. In contrast, a fundamental unwillingness to enter into licensing negotiations was rejected, because Defendant, firstly, complained in letters of 20 November 2015 and 4 December 2015 about Claimant’s deficient explanation why the licensing fee should be FRAND according to Huawei; secondly, it made a counter-offer including royalties of 0.071% of the net sales price per unit and provided for an expert opinion elaborating on the FRAND character of this royalty; thirdly, it submitted an offer to transfer own patents prior to the proceedings; and lastly, even though conducted after the initiation of proceedings, Defendant deposited a considerable amount with the court, which should cover worldwide sales with its LTE/UMTS-based products.
   3. The standard implementer’s reaction
      The standard implementer is obliged to react to a licensing offer, even if it deems the later not as FRAND in accordance with Huawei [851] , unless it is established by means of summary examination that the licensing offer is evidently not FRAND and therefore constitutes an abuse of dominance.
3. Other important issues
   Although the Mannheim court rejected the action for prohibitory injunction and for the recall of products for reasons of antitrust law, it confirmed, on the basis of § 140b PatG and § 242 BGB, Claimant’s application for information as well as for rendering account and granted damages in accordance with § 139 (2) PatG, because it found Defendant to infringe the patents in-suit.
   Besides, the Court denied the exhaustion of the patents in-suit. [852]

• [848] The judges stated in an even more general manner that the infringement court shall not be required under Huawei to determine the FRAND terms, if the proceedings do not involve the payment of royalties, but only relate to actions for a prohibitory injunction or for the recall of products.
• [849] See above OLG Karlsruhe, 31 May 2015 – Case No. 6 U 55/16
• [850] See above OLG Düsseldorf, 9 May 2016 – Case No. 15 U 36/16
• [851] See also LG Mannheim, 27 November 2015 – Case No. 2 O 106/14 and LG Düsseldorf, 3 November 2015 – Case No. 4a O 144/14
• [852] Para. V, p. 34 et seq.

Philips v Archos 2

17 十一月 2016 - Case No. 7 O 19/16

Prof. Dr. Philipp Maume, S.J.D. (La Trobe)

1. Facts
   The claimant is an international electronics company, which owns a range of patents relating to mobile phone technology. In particular, the claimant owns the patent EP 1.440.525, which is allegedly essential for the UMTS and LTE standards. The defendant is a German subsidiary of a French multinational electronics company that offers Android tablets and smartphones which are compliant UMTS and LTE standards. On 5 July 2014, the claimant informed the defendant in writing that by marketing and selling mobile phones, the defendant is infringing standard essential patents owned by the claimant. On 15/16 September 2014, the claimant handed over written documents about its licensing program to the defendant. In a discussion on 25 November 2014, the defendant offered to transfer patents that it deemed essential to the standards in question. In a letter dated 28 July 2015, the claimant offered to grant a license for the relevant patent. This letter included a list of all allegedly infringing products and patents in question, and relevant technical details. The claimant sent additional technical information via email on 25 September 2015. On 12 January 2016, the defendant sent a written offer to enter into a license agreement for the claimant’s worldwide patent portfolio. The parties did not reach an agreement. The claimant commenced infringement proceedings in the District Court of Mannheim on 16 October 2015 (received by the court on 19 October 2015). The defendant subsequently made a deposit at the Bavarian Justice Exchequer at Bamberg in April 2016. The deposit was supposed to cover all royalties owed for the worldwide sale of LTE/UMTS devices by the defendant between 2012 and 30 June 2016. The court dismissed the actions for injunction, recall and destruction of products because the claimant had not complied with its obligations under EU competition law. However, the court ordered the defendant to render accounts and declared that the defendant was liable for compensation.
2. Court’s reasoning
   1. Market Power and Notice of Infringement
      TThe court did not comment on the existence of a dominant market position. It focused on the notice of infringement and the license offer. The court held that the notice of infringement should enable the alleged infringer to examine and assess the patent situation. [853] It is insufficient to indicate that the alleged infringer is marketing products covered by a standard and is therefore infringing a patent. Rather, the SEP proprietor needs to specify the patent number and the standard for which it has been declared essential. The SEP proprietor also needs to describe the technical functionality of the standard which is at issue. The level of detail of these descriptions depends on the particular situation. [853] The SEP proprietor needs to take into consideration the level of the alleged infringer’s technological knowledge, or its ability to gain the required knowledge through professional advice. In the eyes of the court, the customary claim charts (which show the relevant patent claims and the corresponding passages of the standard) will typically be sufficient. However, the description does not need to be as thorough as a statement of claim in patent litigation.
   2. The SEP owner’s licensing offer
      The court stated that the SEP proprietor’s written license offer needs to contain all relevant aspects of the contract, to enable the alleged infringer to accept the offer. [854] If the alleged infringer argues that the conditions of this offer are not FRAND – and, according to the court, alleged infringers typically do so – it is not the role of the infringement court to examine the conditions of the offer and decide whether they are FRAND or not. The Court acknowledged that the Higher Regional Court of Karlsruhe had rejected this view in the decision 6 U 55/16 of 31 May 2016. [855] The Mannheim District Court, however, reiterated its view that a reduced standard of review of the offered conditions is sufficient, referring to the final opinion given by the Advocate General in the ZTE/Huawei ruling. [854] It was, the court argued, the CJEU’s intention to keep the infringement proceedings free of the determination as to what precise conditions would exactly be FRAND in each particular situation. [854] Only an offer that is clearly abusive, i.e. evidently non-FRAND, would not meet the CJEU criteria at this point. [854]
      Of course, the SEP proprietor’s mere assertion that the offer is FRAND would be insufficient. [854] Instead, the Court requires the SEP proprietor to be transparent about the calculation. That means that it needs to specify how the terms of the license offer are calculated. [856] It needs to make clear the basis of the SEP proprietor’s conclusion that the offer is FRAND. Merely stating the royalties owed per unit (in this case: USD 1,- per unit without further explanation) [857] is also insufficient. Rather, the SEP proprietor needs to find a proper way of substantiating its view as to what royalties are owed. This could be a standard license agreement entered into with third parties, or other references such as fees for a pool license that contains SEPs of the respective standard.
      The SEP proprietor needs to make these explanations before it commences infringement proceedings. [858] Only then, the alleged infringer is able to assess the situation unburdened by the treat of an ongoing court case. The Court was aware that the Higher Regional Court of Düsseldorf had recently (Case No. I – 15 U 36/16, 9 May 2016) expressed its view that this understanding might be overly formal. However, the Mannheim District Court upheld its opinion that only a thorough explanation by the SEP proprietor enabled the alleged infringer an informed decision as to whether the license offer is FRAND. [858]
      The Court held that, in theory, the claimant could be exempt from this transparency obligation if the defendant had been unwilling to enter into a license agreement. [859] However, in the case at issue the defendant had demonstrated its willingness to enter into a license agreement. The Court took into account four factors:
      1. the defendant’s had repeatedly requested the claimant to explain the basis of the license offer calculation, [859]
      2. the defendant had offered to transfer some of its own patents in exchange, [859]
      3. the defendant had made an offer and had commissioned an expert opinion that elaborated why the respective conditions were FRAND, [859]
      4. the defendant had deposited a substantial amount. [860]
   3. Standard Implementer’s Reaction
      The Court repeated its view expressed in the decision 2 O 106/14 of 27 November 2015. [861] Accordingly, the alleged infringer needs to respond to the SEP proprietor’s offer, even if the infringer considers that the offer does not meet the FRAND criteria. The only possible exception is an offer that, by means of summary examination, is clearly not FRAND and therefore constitutes an abuse of market power. A potential counter offer needs to be made in due course, which means as soon as possible, taking into account the recognized commercial practices in the field and good faith.

• [853] Case No. 7 O 19/16, para 77
• [854] Case No. 7 O 19/16, para 78
• [855] Case No. 7 O 19/16, para 76
• [856] Case No. 7 O 19/16, para 79
• [857] Case No. 7 O 19/16, para 84
• [858] Case No. 7 O 19/16, para 86
• [859] Case No. 7 O 19/16, para 87
• [860] Case No. 7 O 19/16, para 88
• [861] Case No. 7 O 19/16, para 80

IP Bridge v HTC

28 九月 2018 - Case No. 7 O 165/16

A. Facts

The Claimant, IP Bridge, is a non-practising entity holding a European patent (German part) which was declared essential to the wireless telecommunications standard LTE (Standard Essential Patent or SEP) developed by the European Telecommunications Standards Institute (ETSI) [862] . The previous holder of the SEP in question had made an undertaking towards ETSI according to Article 6.1 of ETSI IPR Policy to make the patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [863] .

The Defendant is a German subsidiary of HTC, a company which manufactures and sells electronic devices worldwide, including mobile phones complying with the LTE standard [864] . The Defendant filed an action for invalidity against the Claimant’s SEP in Germany [864] .

In December 2014, the Claimant contacted the Defendant’s parent company (parent company) suggesting that the parties entered into negotiations regarding a licence for Claimant’s patent portfolio which also included the aforementioned SEP [864] . Subsequently, several licensing offers and counter-offers were made by the Claimant and the parent company respectively [864] . On 29 February 2016, the Claimant sent a letter to the parent company explaining how the LTE standard made use of the technology covered by its SEP inter alia under reference to an attached claims chart [865] . In response, the parent company confirmed that it is willing to obtain a licence, among others, by letter dated 7 September 2016 [866] . However, no licensing agreement was concluded.

On 27 September 2016, the Claimant brought an infringement action against the Defendant before the District Court of Mannheim (Court) requesting for a declaratory judgment confirming Defendant’s liability for damages arising from the use of its SEP as well as for information and rendering of accounts [867] .

On 16 February 2018, during the course of the pending proceedings against the Defendant, the Claimant made a further licensing offer to the parent company [868] . On 11 April 2018, after the parent company had signed a Non-Disclosure Agreement, the Claimant presented existing licensing agreements with third parties concerning its relevant patent portfolio (comparable agreements) to the parent company and requested the latter to respond to its last licensing offer of 16 February 2018 within one week (that is until 18 April 2018) [868] . This deadline was extended for almost three weeks until 7 May 2018 [868] .

On 15 May 2018, the Claimant extended its claims in the ongoing proceedings; in addition to its already pending claims, it sought for injunctive relief and also requested the recall and the destruction of products infringing its SEP (claims for injunction) [868] .

With the present judgment the Court ruled that the Defendant is liable for damages arising from the infringement of the SEP in suit [869] . The Court also ordered the Defendant to render accounts and to provide relevant information to the Claimant [869] . On the other hand, the Court dismissed the claim for injunctive relief and the recall and destruction of infringing products as being unenforceable for the time being [870] .

B. Court’s reasoning

The Court held that the products sold by the Defendant in Germany infringe Claimant’s SEP [871] . Thus, the Defendant is obliged to compensate the damages suffered by the Claimant and the previous holder of the patent in suit [869] . Since the Claimant has no knowledge of the details required for the quantification of the damages suffered, the Defendant is obliged to provide information on relevant uses (starting from the publication of the patent grant) and render accounts for such uses (starting from one month after the publication of the patent grant) [869] .

In the Court’s view, the Defendant cannot raise a defence based on a so-called “patent ambush” against these claims [872] . A “patent ambush” requires that the patent holder deliberately – in terms of a willful fraudulent misconduct – misled the participants in the standardisation process and intentionally prevented the adoption of an alternative technology into the standard [873] . Insofar, it needs to be established (by the defendant) that the disclosure of the patent during the standardisation process would have led to an alternative structure of the standard, which would have avoided making use of the teaching of the patent in suit; the mere theoretical possibility of an alternative technical solution does not suffice for supporting the allegation of a “patent ambush” [873] . The Court held that the Defendant failed to establish such fact [872] . Accordingly, the Court left the question regarding the legal consequences of a “patent ambush” open (obligation to licence royalty-free or just an obligation to offer FRAND licences?) [872] .

Furthermore, the Court stressed out that the FRAND undertaking given by the previous holder of the SEP in suit has no impact on both the scope and the enforceability of the above claims [874] .

In the Court’s eyes, the Claimant is bound to the FRAND undertaking made by the previous holder of the SEP in suit towards ETSI [875] . The wording of Article 6.1. ETSI IPR Policy establishes a respective assumption [875] . In any case, the assignee of a SEP abuses its market power, if it is aware of the FRAND-undertaking of its predecessor, but, nevertheless, refuses to fulfil the obligations arising from it [865] . The assignee of an SEP cannot draw benefits from the inclusion of its patent into a standard, without being bound to the FRAND commitment of its predecessor, since the latter enabled the inclusion of the SEP in the standard in the first place [865] . Indeed, antitrust law and particularly Article 101 of the Treaty for the Functioning of the EU (TFEU) obliges standard development organisations to make the inclusion of patented technology into a standard subject to a FRAND commitment of the patent holder, in order to secure that essential technology will be accessible to users [876] .

Having said that, the Court made clear that SEP holder’s claims for information and rendering of accounts are not limited by the FRAND undertaking [874] . Even if one would assume that such undertaking limits the SEP holder’s claims for damages to the amount of the FRAND royalty (which the Court left undecided), the patent holder would, nevertheless, be entitled, in principle, to information regarding the use of its SEP [874] .

In addition, the Court explained that a FRAND undertaking has also no influence on the enforceability of the claims for damages (on the merits), information and rendering of accounts asserted by the Claimant [874] . In particular, these claims are not subject to the conduct requirements set forth by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTEHuawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13. (Huawei requirements or framework) with respect to dominant undertakings in terms of Article 102 TFEU [878] .

The opposite is, on the other hand, the case with respect to the claims for injunction asserted by the Claimant. These claims are not enforceable for the time being, since the Claimant failed to fully comply with the Huawei requirements [879] .

Regarding to the SEP in suit, the Court ruled that the Claimant has a dominant market position in terms of Article 102 TFEU: The patent is essential to the LTE standard, which, in turn, cannot be substituted by an alternative standard (from the users’ point of view) [880] .

Looking at the negotiations between the parties involved, the Court did not see any flaws in the parties’ conduct with respect to the first two steps of the framework; the Claimant had effectively notified the Defendant about the infringing use of its SEP and the Defendant (in fact, its parent company) had effectively declared its willingness to obtain a licence covering also the SEP in suit [865] . In this context, the Court pointed out that the SEP holder’s obligation to notify the user of the infringing use of its SEP is also met, when the respective notification is addressed to the parent company of the (alleged) infringer (as is was the case here, especially with the Claimant’s letter to the parent company dated 29 February 2016) [865] .

However, the Court held that the Claimant failed to fulfil its consequent obligation under the Huawei framework, namely to make a FRAND licensing offer to the Defendant (respectively its parent company) [881] .

The Court considered only two offers made by the Claimant to the Defendant’s parent company prior to the extension of its claims in the pending proceedings on 15 May 2018 (since the other offers made were either indisputably not FRAND or were not produced by the Claimant in trial) [866] .

An offer made in February 2016 was found not to be FRAND in terms of content, since it contained a clause, according to which the licensee was obliged to pay the full amount of the royalties agreed, even if only one patent of the licensed portfolio was valid and used by the Defendant [866] .

The Court reached the same conclusion also with respect to the further offer made by the Claimant on 11 April 2018 (that is short before the Claimant extended its claims in the proceedings, adding the claims for injunction) [882] . The Court held that this offer did not comply with the Huawei requirements, since the Defendant was not given sufficient time to assess the offer and eventually make a counter-offer to the Claimant, before the latter asserted the claims for injunction against him in the proceedings [866] .

In the Court’s eyes, a licensing offer complying with the Huawei requirements is only given, when the SEP holder provides the SEP user with all information required from assessing the FRAND conformity of the offer [883] . Only then, the SEP user’s consequent obligation under the Huawei framework to make a FRAND counter-offer to the SEP holder is triggered [883] . In particular, the SEP holder must make the requested royalty amount transparent with reference to a standard licensing programme implemented in the market or to rates actually paid by third parties to a patent pool, covering also patents relevant to the standard [883] . For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed [883] .

Based on the above considerations, the Court held that the period of 22 workdays between the presentation of the comparable agreements to the parent company (11 April 2018) and the assertion of the injunction claims in the proceedings by the Defendant (15 May 2018) was too short for a competent assessment of the Claimant’s licensing offer [884] . The fact that the Defendant (and/or its parent company) would have had sufficient time to react to the Claimant’s offer until the end of the oral hearings in mid-July 2018 was considered irrelevant by the Court in this respect [884] . The Huawei framework aims at preventing the situation, in which the SEP user agrees to unfavourable licensing conditions under the pressure of pending infringement proceedings (defined by the Court as “patent hold-up”) [884] . In case that the SEP holder has not fulfilled the Huawei requirements prior to the initiation of proceedings (as it was the case here), it has to make sure that the parties can again negotiated without the pressure of an ongoing trial, for instance by asking the court to stay its proceedings pursuant to Article 251 of the German Court of Civil Procedure [885] . Otherwise, the initiation of the infringement proceedings shall be considered as abusive in terms of antitrust law [885] . In the present case, the Claimant chose to not ask for a stay in the proceedings, ignoring the Court’s respective indication [885] .

C. Other issues

The Court explained that the registration in the patent register allows the registered patent holder to assert the patent rights in court [886] . On the other hand, it does not define the ownership of the patent in material legal terms [887] . Nevertheless, the patent registration establishes an assumption of ownership which must be rebutted by the defendant in infringement proceedings based on concrete indications [888] .

Besides that, the Court pointed out that a stay in the infringement proceedings (pursuant to Article 148 of the German Code of Civil Procedure) until the end of parallel invalidation proceedings concerning the patent(s) in suit can be considered only under special circumstances [889] . As a rule, it must be expected with a sufficient degree of probability that the patent(s) in suit will be invalidated [889] . The Defendant failed convince the Court that this was the case with the SEP in suit [889] .

• [862] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, page 2 and 23.
• [863] Ibid, page 23 et seq.
• [864] Ibid, page 5.
• [865] Ibid, page 25.
• [866] Ibid, page 26.
• [867] Ibid, pages 5 et seq.
• [868] Ibid, page 6.
• [869] Ibid, page 19.
• [870] Ibid,page 23.
• [871] Ibid, pages 16 et seqq.
• [872] Ibid, page 20.
• [873] Ibid, page 21.
• [874] Ibid, page 22.
• [875] Ibid, page 24.
• [876] Ibid, pages 24 et seq.
• [877] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13.
• [878] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, pages 22.
• [879] Ibid,pages 23 and 25.
• [880] Ibid, page 23.
• [881] Ibid, pages 23 and 25 et seq.
• [882] Ibid, pages 26 et seqq.
• [883] Ibid, page 27.
• [884] Ibid, page 28.
• [885] Ibid, page 29.
• [886] Ibid, page 10.
• [887] Ibid, pages 10 et seq.
• [888] Ibid, page 11.
• [889] Ibid, page 30.

西斯维尔诉Wiko

4 九月 2019 - Case No. 7 O 115/16

A. 事实

原告西斯维尔（Sisvel）持有被宣告为于实施UMTS和LTE无线通信标准时（潜在）必要的专利，并承诺愿依照公平、合理且无歧视（FRAND）的条款和条件向标准实施人提供该专利（以下称“标准必要专利”或“SEP“）。西斯维尔还管理着一个由多个标准必要专利持有人分别持有的专利所组成的专利池，其中也包括西斯维尔自己所持有的标准必要专利（以下称”专利池“）。

被告是Wiko集团法国母公司以及其德国子公司（以下称“Wiko“）。 Wiko在包含德国市场在内的数个市场中销售实施LTE标准的手机。

西斯维尔在2015年6月时就该专利池的存在以及其取得许可的必要性对Wiko进行告知。双方进行了许可谈判。

西斯维尔向Wiko提供了其专利池中所包含的标准必要专利的相关信息，其中包括了对这些专利中的数个专利具备标准必要性进行说明的权利要求对照表。2016年6月1日，西斯维尔向Wiko提出了一份涵盖整个专利池的许可要约。然而，双方并未能就此达成协议。

西斯维尔于2016年6月22日就其所持有的一项实施LTE标准的专利在德国曼海姆地区法院（Landgericht，以下称“法院”）对Wiko提起了诉讼（以下称“侵权诉讼”）。

西斯维尔要求法院作出确认之诉判决，确认Wiko应承担实质损害赔偿责任、提交相关信息、以及开立担保帐户等主张有法律上依据。

西斯维尔并于2016年6月23日对Wiko的德国子公司发出了仅涵盖其己身所持有的标准必要专利的双边许可要约。此许可要约并未被接受。此外，Wiko就本案涉案标准必要专利向德国联邦专利法院提起了确认该专利无效的诉讼（以下称“无效诉讼”）。

西斯维尔于2016年10月4日修改了其在侵权诉讼中的诉讼主张。除原有的诉讼主张外，西斯维尔还增加了要求禁令救济以及移除并销毁市场上的侵权产品的主张。

Wiko在2016年11月11日时向西斯维尔提交了许可反要约。随后，Wiko根据其许可反要约的内容向西斯维尔提供了相关信息并提交了保证金。

在诉讼进行的过程中，西斯维尔向Wiko发出了一项新的许可要约，此许可要约涵盖整个专利池并且降低了许可费。此一许可要约Wiko仍然表示拒绝接受。西斯维尔于2017年12月22日请求法院判令中止侵权诉讼程序直至德国联邦专利法院在与本案平行的专利无效诉讼中就涉案标准必要专利的有效性做出裁决为止。

Wiko对西斯维尔所提出的动议表示同意。法院于是在2018年1月30日判令中止该侵权诉讼程序。

于此同时，在侵权诉讼程序中止期间，西斯维尔于2018年6月26日依据其重新设计后的许可计划的内容向Wiko提出了另一项许可要约（以下称“2018年许可要约”）。

除2018年许可要约外，西斯维尔还向Wiko提供了多项其他信息，其中包括了20个被选定的专利所对应的权利要求对照表，以及在其新许可计划和两个既存许可计划下现有的被许可人清单等信息。前述清单的内容包含每份许可协议签订的日期以及双方达成协议的许可费数额，然而被许可人的名称并没有被揭露。

Wiko花了超过三个月的时间均没有对对2018年许可要约做出任何反应。 直至2018年10月15日Wiko才对西斯维尔作出回复，然而却未就2018年许可要约的内容提供任何实质性的反馈，反而只是重新提起了其于2016年11月11日所做出的许可反要约。Wiko并且还批评了西斯维尔没有在与2018年许可要约一并提供的被许可人清单中揭露现有被许可人的名称的这一事实。

为了回应此项要求，西斯维尔于2018年10月22日向Wiko发送了其所草拟的保密协议（NDA）。西斯维尔并表示愿意在Wiko签署保密协议之时对其揭露现有被许可人的名称。然而，Wiko拒绝签署西斯维尔提出的保密协议。

德国联邦专利法院在2018年10月作出判决部分维持了涉案标准必要专利的有效性。在此之后，法院继续进行了侵权诉讼程序，以讨论特别是与FRAND相关的议题。

在2019年7月的口头听证程序结束之后，Wiko向西斯维尔提出了新的许可反要约，并对其提供了更多的相关信息。然而，Wiko并未增加其于2016年11月11日第一次提出反许可要约后所存入的保证金数额。

法院于当前判决 [890] 中对Wiko核发了禁令，同时判令其移除并销毁市场上的侵权产品。法院还确认了Wiko的实质损害赔偿责任，并要求Wiko向西斯维尔提供计算损害赔偿数额所必需的相关信息。

B. 法院的论理

法院认为，Wiko的产品构成对涉案专利的侵权行为 [891] 。涉案专利是否具备标准必要性并非本案当事人间争执之所在 [892] 。

法院进一步指出，《欧洲联盟运作条约》（TFEU）第102条并未禁止西斯维尔在侵权诉讼程序中主张禁令救济或召回并销毁涉案侵权产品。

Wiko主张西斯维尔提起当前诉讼的行为构成了对其在市场上主导地位的滥用，从而违反了《欧洲联盟运作条约》第102条。

然而，这在法院看来并非如此，因为西斯维尔已经践行了欧洲联盟法院在华为诉中兴案 [893] 中所创建的行为义务（以下称“华为框架”或“华为框架义务”）。而另一方面，法院认为，Wiko未能遵守其华为框架义务。。

华为框架

与其先前的判例的观点不同，法院认为，华为框架义务的履行可以通过诉讼当事人在诉讼过程中所为的行为而补正 [894] 。但是，这必须在当事方之间能够如同欧洲联盟法院所要求的那样没有压力地进行许可协商的情况下，方得以实现。为此，当事方必须借助可用的程序性手段——例如提起中止审判程序的动议 [895] 或在双方同意的情况下中止诉讼，直到联邦专利法院就专利无效的平行诉讼做出裁定为止 [896] ——以暂时中止诉讼程序的进行。

在这种背景下，法院要求在侵权诉讼程序开始后才寻求补正华为框架中信息提交义务的标准必要专利持有人提起中止审判程序的动议 [896] 。当这项动议被提起时，法院期待一个“善意”的实施人会同意对此诉讼程序的中止 [896] 。

法院指出，在未决侵权诉讼过程中给予当事方补正其华为框架义务缺失部分的机会，与英格兰与威尔士上诉法院在无线星球诉华为案 [897] 以及海牙上诉法院在飞利浦诉华硕案 [898] 中所采纳的“避风港”观点一致。这些法院并不认为华为框架是必须被严格执行的强制性程序，因此，与欧洲联盟法院所建立的谈判框架有所偏离并不一定会构成滥用行为从而导致专利持有人被禁止主张禁令救济 [899] ，并且情况是否如此则需要视个案具体情况进行个别评估 [900] 。

侵权通知

尽管如此，法院认为，西斯维尔已经践行了其华为框架义务而在侵权诉讼程序开始之前即就涉案标准必要专利的侵权行为向Wiko进行通知。

关于标准必要专利持有人此一通知的内容，法院基本上引用了与先前判决中所提出的相同要求。法院认为，此类通知必须（1）明确指出涉及侵权者为何项专利，包括专利编号；（2）告知该专利已在相应的标准发展组织中被宣告为实施标准所必要；（3）指明该专利对于实施哪种标准而言具备必要性；（4）说明实施人的产品或服务中的哪些技术功能实施了该项标准 [901] 。通知的详细程度适当与否则应根据具体个案情况判定 [901] 。法院认为，通常情况下，当标准必要专利持有人向实施人提供了于标准必要专利许可谈判中惯用的权利要求对照表时，则其通知义务便已经履行 [901] 。法院更进一步确认了，在华为框架下，对集团公司中的母公司发出通知通常就已经足够了 [901] 。。

标准必要专利持有人所提出的许可要约

法院认为，西斯维尔也遵守了华为框架义务中向Wiko提出书面且特定的FRAND许可要约的义务。在对此要件进行评估时，法院仅考虑了2018年许可要约，即西斯维尔在侵权诉讼程序中止期间对Wiko所提出的最后一次许可要约 [902] 。

首先，法院重申了其关于侵权法院并没有义务决定何种具体许可费以及何种更进一步的合同条款和条件在“在客观层面上”符合FRAND的立场 [903] 。与先前卡尔斯鲁厄高等法院所采取的观点相反，法院认为，欧洲联盟法院并无意对仅与禁令救济和侵权产品召回相关的诉讼程序施加对FRAND条款作出“精确数学计算“的负担 [904] 。此外，由于潜在符合FRAND的条款和条件存在于一个范围内，只有当考虑到在特定的议价情况和市场条件下，标准必要专利持有人所提出的许可要约将将构成“剥削性滥用”时 [903] ，其寻求禁令救济的行为才可能违反《欧洲联盟运作条约》第102条。于此范围内，法院与英格兰与威尔士上诉法院在无线星球诉华为案中的理解相似 [897] 。

尽管如此，法院仍明确指出，侵权法院不应只是对标准必要专利持有人所提出的许可要约是否符合FRAND进行“表面性”审查。侵权法院应就该具体许可要约的整体结构是否在不论双方议价能力有否存在特定初始差异情况下均足以让善意实施人对该许可要约作出回覆进行审查 [905] 。通常情况下，此义务在当标准必要专利持有人以某种能展现出其有理由认为该许可要约符合FR​​AND的方式来解释其许可费计算方法时便会显现 [906] 。而当存在有专利池许可计划或标准许可计划时，一般来说只要能够证明该许可计划已在市场上被接受便已经足够。如果一专利池过去已经授予过足够数量的许可，专利持有人将只需要通过出示足够数量涉及该专利池中所包含专利的权利要求对照表来概述此专利池的组成分子即可 [907] 。

于此脉络下，法院指出，任何由实施人所提出的关于专利持有人的许可要约是否符合FRAND提出的指控，原则上均不能仅是基于某一个别合同条款（被指控为）不合法。此外，判断某一许可要约是否符合FRAND则必须通过对整体协议的内容进行概括性的评估决定 [908] 。只有在当要约中的某一特定条款产生了“不可接受的效果”时才有例外的适用 [908] 。在本案中，法院认为，2018年许可要约中包含的所有条款均不产生上述效果 [908] 。

法院特别指出了其中一项要求被许可人（此处为Wiko）承担对许可专利中所涵盖的专利权已穷竭的部分的举证责任是可以被允许的 [909] 。与杜塞尔多夫地区法院在另一件类似案件中所采取的观点相反，本案中，法院认为，由于被许可人通过与供应商的互动可以更好地对许可链进行追踪，因此要求被许可人对相关事实作出确认是恰当的 [909] 。

此外，法院认为，从反垄断的角度出发，将所授与的许可期限限制为五年的条款并不会产生“不可接受的效果”。法院认为，以五年为期的许可协议符合在以技术快速发展为典型的无线通信行业中普遍实施的惯例 [910] 。

法院进一步指出，在被许可人违反申报责任或付款延误超过30天的情况下授予许可人终止许可协议权利的条款在上述意义上并不会产生“不可接受的效果” [910] 。

然而，法院并没有对2018年许可要约中未包含当协议所涵盖的许可专利数量在协议期间内发生变化时，双方可以对达成协议的许可费率进行调整的条款表示反对。法院认为，在FRAND许可协议中包含此类条款本身就不是必要的 [910] 。然而，如果一专利池主要由在签署许可协议后不久就将到期失效的专利组成，则应当作例外处理 [910] 。一般而言，许可协议未包含“调整”条款并不会产生问题，特别是在该许可要约并未限制或排除当事人以合同标的物减损或灭失为由要求调整许可内容的法定权利时（详见《德国民法典》第313条第1项） [910] 。。

无歧视 / 保密协议

有关FRAND许可要约中的无歧视要素，法院指出，《欧洲联盟运作条约》第102条中对专利持有人确立了一项（次要）义务，即专利持有人在未决的侵权诉讼程序中应展现出其对被告发出的许可要约相较于其他与被告处于类似地位的竞争对手而言并未加以歧视 [907]

不过，法院也明确指出，这项义务在法律上并不意味着在每一个案件中都要做到“完全透明” [907] 。标准必要专利持有人的反垄断义务并非永远凌驾于应受法律保障的机密信息利益之上；此外，具体个案的特殊情况也可能需要寻求对机密信息的保护 [907] 。

特别是关于标准必要专利持有人与条件相似的第三方被许可人间的现存的许可协议（以下称“可比协议“）中所包含的信息，法院认为，专利持有人于何种程度下有披露此类协议的义务，应由侵权法院在考量双方于诉讼程序中的主张后，视个案具体情况决定 [907] 。

法院认为，专利持有人将必须确立机密信息存在值得保护的利益；仅仅是基于该可比协议受保密条款的约束此一事实本身并不能合理化对专利持有人的披露义务范围的限制 [911] 。另一方面，被告将需要向法院证明为何其所要求提供的信息对评估专利持有人提出的许可要约是否符合FRAND而言是必须的 [911] 。被告将必须提出具体事实显示标准必要专利持有人可能存在歧视性行为 [912] 。

考虑到这一点，法院不同意杜塞尔多夫法院所提出的关于标准必要专利持有人无论如何都必须在侵权诉讼程序中出示其所有现存的可比协议的观点 [913] 。尤其是在当专利持有人仅与实施人签订标准化的许可协议且其条款和条件皆可以被公开获取的情况下，法院认为没有理由要求专利持有人在诉讼程序中出示（大量）一致相同的合同。于此范围内，标准必要专利持有人仅需要披露截至目前为止已经达成了多少（标准化的）许可协议就已经足够了 [913] 。

因此，法院认为，即使被许可人的名称已被遮盖，西斯维尔向Wiko出示的现有被许可人名单以及2018年许可要约也足以确认该要约的FRAND符合性。在法院看来，Wiko无法解释其为何需要现有被许可人的名称才得以对2018年许可要约的FRAND符合性进行评估 [914] 。此外，法院同时考量到Wiko拒绝签署在诉讼中止期间由西斯维尔所提供的以揭露现有被许可人名称为目的的保密协议的事实 [915] 。由于Wiko就2018年许可要约是否符合FRAND并无异议，法院因此而没有对Wiko拒绝签署保密协议的行为是否可以被视为不愿意遵守华为框架义务的象征这一问题作出裁判。然而，法院同意杜塞尔多夫法院所采取的“实施人拒绝签署适当的保密协议此一行为，原则上是在评估标准必要专利持有人的要约时需要考虑的相关要素“这项观点 [915] 。

除此之外，法院也考虑了通过由具有管辖权的法院依德国民事诉讼法（Zivilprozessordnung，ZPO）第142条之规定所核发的文件提交命令来促进可比协议在侵权诉讼中被引用的可能性 [912] 。侵权法院应该于当具体个案中可比协议所包含的保密条款仅在法院命令的情况下才允许对该协议进行披露时，特别考虑此种选择。法院认为，此类保密条款本身并不违反反垄断法，因此除非专利持有人无法在诉讼中确立其机密信息存在值得保护的利益，否则就应该予以尊重 [912] 。如果受保密条款约束的专利持有人愿意在审判中出示可比协议，那么侵权法院可以根据个别案件的具体情况，依德国民事诉讼法第142条的规定核发文件提交命令 [912] 。如果专利持有人拒绝遵守该命令，则法院在对各当事方于华为框架下的行为义务进行总体评估时，便可以将此行为视为恶意的象征 [912] 。如果实施人因德国民事诉讼法第142条的规定获得法院核发的命令而被允许取得可比协议，然其却不同意中止各有关诉讼程序的进行时，前述对恶意的推定则同样会适用于实施人 [912] 。。

标准必要专利实施人所提出的许可反要约

法院认为，Wiko未能履行其华为框架义务在适当的时机向西斯维尔提出许可反要约。就此问题的评估，法院着重于Wiko对2018年许可要约所作出的反应 [916] 。 法院明确指出，不论其是否认为该要约符合FR​​AND，实施人都有义务根据具体事实对标准必要专利持有人所提出的许可要约作出回应（而这也是通常会发生的情况） [912] 。此外，实施人必须在考量个具体个案事实、特定行业的行业惯例、以及诚信原则的条件下尽快做出回覆 [896] 。。

考虑到Wiko在长达三个月以上的时间都没有对2018年许可要约做出任何反应，法院裁定Wiko违反了上述义务 [892] 。在法院看来，Wiko采用了拖延战术 [892] 。法院不接受Wiko辩称的法国学校假期和/或根据Wiko自己的陈述其仅有两名雇员负责处理许可相关事宜等事由作为其反应迟延的充分理由 [916] 。作为一家从事国际商务的公司，Wiko应确保其有足够的雇员可以在适当时机处理此类问题 [916] 。

C. 其他重要问题

除了西斯维尔所提出的禁令救济以及将侵权产品从市场上移除并和销毁的主张外，法院还做出了一项确认之诉判决，确认Wiko应承担实质损害赔偿责任 [917] 。

法院认为，Wiko对本案涉案专利做出了相当严重侵权行为。 尤其是，Wiko的行为至少构成了过失行为 [917] 。

Wiko辩称，由于标准化技术存在高度复杂性（尤其是仅一项标准中即包含了大量个别专利），使其很难就相关知识产权的状况进行评估（因此排除了过失行为）。

然而，法院明确指出，正因为相关技术的高度复杂性，实施人更应该承担更高的注意义务 [918] 。 然而，法院明确指出，正因为相关技术的高度复杂性，实施人更应该承担更高的注意义务 [918] 。

• [890] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16。
• [891] 同上注, 页 17-31。
• [892] 同上注, 页 46。
• [893] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13。
• [894] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 42。
• [895] 同上注, 页 43 及 页 51 及以下。
• [896] 同上注, 页 42。
• [897] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, 段 282。
• [898] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01。
• [899] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 44。
• [900] 同上注, 页 44。
• [901] 同上注, 页 37。
• [902] 同上注, 页47 及 53。
• [903] 同上注, 页 38。
• [904] 同上注, 页 37 及以下。
• [905] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 39。
• [906] 同上注, 页 39。
• [907] 同上注, 页 40。
• [908] 同上注, 页 53。
• [909] 同上注, 页 54。
• [910] 同上注, 页 55。
• [911] 同上注, 页 40 及页 49。
• [912] 同上注, 页 41。
• [913] 同上注, 页 49。
• [914] 同上注, 页 50。
• [915] 同上注, 页 51。
• [916] 同上注, 页 47。
• [917] 同上注, 页 35。
• [918] 同上注, 页 35 及以下。

诺基亚诉戴姆勒

18 八月 2020 - Case No. 2 O 34/19

A. 事实

原告是总部位于芬兰的诺基亚集团的一部分（Nokia，以下称“诺基亚”）。诺基亚是一个主要的通信服务提供者，并持有一系列的专利组合，而这些专利组合被宣告为实施欧洲电信标准协会（ETSI）所发展出的数种无线通信标准时（潜在）必要的专利（以下称“标准必要专利”或“SEP”）。

被告戴姆勒（Daimler）是一家遍布全球的德国汽车制造商。戴姆勒在德国生产并销售具有连网功能的汽车，而此一连网功能实施了由欧洲电信标准协会所发展出的标准。

诺基亚就本案涉案专利为实施4G / LTE标准时所必要向欧洲电信标准协会作出宣告。

欧洲电信标准协会要求各专利持有人承诺愿依照公平、合理且无歧视（FRAND）的条款和条件向标准实施人提供实施该标准时必要或可能成为必要的专利。 诺基亚于2016年6月21日通过提供一份列举所有其已向欧洲电信标准协会作出宣告为实施标准时（潜在）必要的专利及专利申请的清单对戴姆勒告知其所持有的标准必要专利组合。戴姆勒回应称其愿意在其产品确实侵害诺基亚专利权的情况下取得许可。

诺基亚在2016年11月9日首次向戴姆勒提出许可要约，并于2016年12月7日向戴姆勒提供了更多与其专利组合相关的信息。戴姆勒于2016年12月14日回覆称对其生产制造戴姆勒汽车中内建的所谓“车载信息控制单元”（TCU）的供应商进行许可将更有效率。自2017年1月起至2019年2月为止，戴姆勒均没有与诺基亚进行进一步的谈判，也没有参与诺基亚与戴姆勒供应商之间的讨论。 诺基亚于2019年2月27日向戴姆勒提出了第二份许可要约，其中更进一步添加了说明其专利与受影响标准的相关部分对应关系的权利要求对照表。戴姆勒于2019年3月19日再度拒绝了此一许可要约，其理由基本上在于，其认为诺基亚所持有的专利组合的许可费应以供应商提供给戴姆勒的组件价格而非按戴姆勒生产的汽车价格为标准计算。

随后，诺基亚在德国慕尼黑、杜塞尔多夫和曼海姆等地的地区法院对戴姆勒提起了数项侵权诉讼。

在侵权诉讼程序开启后不久，戴姆勒于2019年5月9日向诺基亚提出了许可反要约。此许可反要约中针对诺基亚专利组合的许可费的计算标准是依据戴姆勒向其供应商支付的车载信息控制单元的平均售价。诺基亚拒绝了这一许可反要约。

戴姆勒于2020年6月10日向诺基亚提出了第二次反许可要约。此反许可要约中诺基亚将能够单方面决定许可费（根据德国民法典第315条），而戴姆勒将有权就已决定的许可费向法院提出异议。第二次反许可要约也遭到诺基亚拒绝。

德国联邦反垄断办公室（以下称“反垄断办公室“）于2020年6月18日介入了曼海姆地区法院（以下称”法院“）的当前诉讼程序，并建议法院将有关FRAND承诺性质的某些问题提交至欧洲联盟法院进行审查及解释，然而法院并没有遵循反垄断办公室的建议。

法院在当前判决 [919] （引自https://www.juris.de）中对对戴姆勒核发了禁令，并确认戴姆勒应承担实质性损害赔偿的责任。法院还要求戴姆勒必须开立担保帐户并且提供计算诺基亚所受损失必需的相关信息。

 

B. 法院的论理

法院裁定戴姆勒對本案涉案专利構成侵權 [920] 。因此，诺基亚有权获得包含禁令救濟及其它訴訟主張的支持 [921] 。 戴姆勒及其参加诉讼的所屬供应商主張了所谓的“FRAND抗辯”，認為诺基亚提起侵权诉讼的行為構成了對其市場支配地位的滥用，從而违反了《欧洲聯盟運作条约》（TFEU）第102条，因此其禁令救济主张应予否决。特別是，戴姆勒等主張诺基亚未能遵守歐洲聯盟法院（CJEU）在华为诉中兴案中所確立的行為義務（以下稱“华为案判決”或“華為框架”） [922] 。

法院認為戴姆勒及其供应商所提出的主張無理由，因此驳回了其所提出的FRAND抗辩 [923] 。

 

华为框架

法院明确指出，标准必要专利持有人并不当然被禁止行使其因持有专利而享有的专属权利 [924] 。其所持有的专利属于标准必要的这一事实，并不意味着专利持有人有义务容忍第三人对其技术的使用，除非是其已经许可了该使用，或者因其处于市场支配地位而有义务必须许可该使用 [924] 。

当专利持有人已经遵守了其于华为框架下的义务时，则其因为行使专利权而构成对市场支配地位的滥用的情况便不会发生了 [925] 。然而，这些义务是以在未经权利持有人许可的情况下就已经使用了该项受保护技术的实施人愿意按照FRAND条款取得许可为前提条件的 [926] 。法院解释到，专利持有人并不能向法院提出对任一标准实施人“强制施加”许可协议的主张，很大部分的原因在于其并没有主张签署许可协议的法律上权利 [926] 。此外，因处于市场支配地位而衍生的“特殊责任”对标准必要专利持有人的要求在于其付出了“充分的努力”来促进与原则上有意愿取得许可的被许可人间协议的签署 [927] 。

 

侵权通知

法院认为，这些“努力”包括在提起侵权诉讼之前，就对涉案专利的侵权行为，以及取得许可的可能与需求，向实施人进行通知的义务 [928] 。法院在对本案进行审理后认为，诺基亚已经履行了上述义务 [929] [11]。

就内容而言，侵权通知内必须指明遭受侵权的专利，并描述具体的侵权使用行为与受侵害的实施例 [928] 。对该项侵权行为进行详细的技术上和法律上分析并不是必要的——实施人仅需要被置于一个最终能够在专家和/或法律建议的协助下对其被指控的侵权行为进行评估的地位即可 [928] 。通常情况下，提出权利要求对照表便已经足够（但不是强制性的） [928] 。法院还指出，专利持有人无需向每一个侵害其专利权的终端设备制造商的供应商个别提出单独的侵权通知 [930] 。

在法院看来，诺基亚于2016年6月21日、2016年11月9日、以及2016年12月7日所发出的电子邮件符合了上述要求 [931] 。诺基亚（至少在最初）没有指出涉案专利具体涉及标准文书中的哪个特定部分这一事实并不被认为是有害的，因为侵权通知的内容并不需要能够促进对侵权行为的最终评估 [932] 。

此外，法院认为，诺基亚没有必要在其侵权通知中明确指出根据相关标准而产生连网功能的特定组件是哪些（例如：戴姆勒汽车中内建的车载信息控制单元） [933] 。由于戴姆勒购买并在其产品中使用了这些组件，信息不足的情况是不可能发生的 [933] 。

 

取得许可的意愿

此外，法院认为，戴姆勒并没有充分表达其与诺基亚签订FRAND许可协议的意愿，因此不能主张FRAND抗辩来避免禁令的颁发 [934] 。

在法院看来，实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议，并且随后以一种“目的性导向”的态度来进行许可谈判（引用德国联邦法院2020年5月5日在Sisvel诉Haier案中的判决– Sisvel v Haier, Case No. KZR 36/17以及英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711（Pat）-Unwired Planet v Huawei） [935] 。实施人在许可谈判中“目的性导向”的参与具有决定性的重要性，由于实施人通常在许可谈判开始之前就已经使用了该标准化技术专利，拖延许可协议的签署直至该专利到期失效为止对他们而言可能是有利的，然而，这与华为案判决的精神是背道而驰的 [936] 。因此，仅对侵权通知做出表示愿意考虑签署许可协议或就是否以及在何种条件下应该考虑取得许可进行谈判这样的回覆是不足够的 [935] 。

法院进一步指出，做出附带条件的许可意愿声明是不可接受的 [935] 。并且，拒绝讨论其对专利持有人发出的许可反要约有否存在任何改进的空间也可以被视为实施人一方不具备取得许可意愿的象征 [935] 。

基于以上所述，法院认为，戴姆勒最初以在其产品确实侵害了诺基亚的专利专利的前提下为签署许可协议的条件，并未能充分表达出其签署FRAND许可协议的意愿 [937] 。法院更表示，戴姆勒所提出的许可反要约同样不能够被认为是取得许可意愿的充分表示，特别是戴姆勒在第二次提出的许可反要约中赋予其对诺基亚单方面设定的许可费率进行挑战的权利，如此一来只会导致当事方间有关许可费率的确定的实质争议再度被拖延至将来的法律诉讼程序 [938] 。

法院还认为，由于戴姆勒不但没有与诺基亚进行谈判，反而是坚持要求由其供应商直接向诺基亚取得许可，戴姆勒并未扮演出一个“善意”的被许可人的角色 [939] 。此外，戴姆勒坚持以其向供应商购买车载信息控制单元组件的平均销售价格为基准计算诺基亚所持有的标准必要专利组合许可费也再度证明了戴姆勒缺乏取得许可的意愿 [940] 。

 

FRAND许可费的计算

法院认为，使用车载信息控制单元作为“参考价值”来为诺基亚所持有的标准必要专利组合计算许可费是不恰当的 [941] 。

一般来说，符合FRAND的条款和条件往往不仅只有一套，通常会存在一系列的许可条款和费用都能符合FRAND [942] 。此外，可以被认为符合FRAND的条款和条件也可能在各个行业之间以及不同的时间下有所差异 [942] 。

然而，法院指出，专利持有人原则上必须能够在价值链的最后阶段就其技术在可销售终端产品中的经济利益获得一定份额 [943] 。其原因在于，对该项受保护发明的实施“创造“了通过终端产品获取”经济利益“的”机会“ [943] 。法院不认同关于以最终产品的价值作为对专利技术价值的考量将使标准必要专利持有人得以从发生于价值链中其他阶段的创新发明中获益此一观点 [944] 。法院指出，有数种手段可以确保这种情况不会发生 [944] 。

因此，法院不赞同使用所谓的“最小可销售专利实施单元（SSPPU）“——即某一项产品中所包含的最小技术单元——作为计算FRAND许可费率的基准这一观点 [944] 。专利权穷竭所产生的影响将使得标准必要专利持有人被排除于共享在价值链的最后阶段才创造出的价值的行列之外 [944] 。除此之外，此种做法也将使的对”双重获利“行为的确认与避免变得更加复杂，而这意味着在价值链中的数个不同阶段得以对同一项专利多次进行许可 [944] 。

尽管如此，法院进一步阐明，上述原则并不全然意味着所有的许可协议都应该仅与终端设备制造商签署 [945] 。法院认为，即使是在供应链的其他阶段，也有多种可能可以就专利技术对可销售终端产品的价值进行评估 [945] 。

在这种背景下，法院认为，车载信息控制单元的销售价格并不能充分反映诺基亚所持有的标准必要专利对戴姆勒所生产的汽车——即本案中相关终端设备——的价值 [946] 。 车载信息控制单元的销售价格仅仅能够反应出戴姆勒本身的相应成本 [947] 。另一方面，连网功能使戴姆勒得以从为其客户提供其他额外服务中获得收益，节省成本并优化研发费用 [948] 。连网功能确保了创造此一价值的机会 [949] 。此外，法院指出，戴姆勒的几个主要竞争对手均接受了Avanci平台的许可模式（即专门向汽车制造商授予许可）这一事实更进一步展现出着重于受保护技术对终端产品的价值在汽车行业中也是合理的 [950] 。

 

无歧视

此外，法院认为，诺基亚对戴姆勒所提出的专利权主张并不具有歧视性，是以戴姆勒坚持许可必须由其供应商取得的主张无理由 [951] 。

法院进一步阐明，专利持有人原则上有权自由选择于供应链中的哪一个阶段主张其权利 [952] 。而这对处于市场支配地位的专利持有人而言亦无不同，因为竞争法本身并不当然限制此种可能性 [952] 。并且，处于市场支配地为的专利持有人也没有义务向所有潜在的被许可人提供一个“标准费率” [952] 。

《欧洲联盟运作条约》第102条所规定的无歧视义务旨在防止对上游或下游市场竞争的妨碍，然而，其并不排除当有充分的理由存在时给予被许可人不同的待遇 [953] 。

在本案中，法院认为没有迹象表明诺基亚主张使用终端产品作为计算其专利许可费的基础将会对竞争产生影响 [954] 。特别是，尽管在汽车行业中存在通常由供应商取得出售给汽车制造商的零部件的使用许可这一事实，也不意味着诺基亚需要改变其通常惯例，尤其是通过Avanci平台授予戴姆勒竞争对手许可的实例已经表明，该于通信行业盛行的相应惯例已经在汽车行业中获得采纳 [955] 。此外，法院也不认为对终端设备制造商主张标准必要专利权可能会导致对其生产、销售和技术发展层面的限制从而损害消费者权益 [956] 。在这方面，法院引用了所谓的“委托制造权”，根据ETSI知识产权政策，该权利应被包含在FRAND许可协议中，并允许零组件制造商生产、销售和开发其产品 [957] 。

 

标准必要专利持有人所提出的许可要约 / 信息披露义务

此外，法院认为，戴姆勒无法通过主张诺基亚拒绝提供与其所提出的许可要约相关的充分信息来合理化自身不愿意取得许可的意愿 [958] 。

法院指出，标准必要专利持有人有义务证明其所提出的许可要约具备FRAND符合性 [959] 。如果专利持有人已经与第三方被许可人签订了非标准条款的许可协议，则专利持有人通常有义务以某种使实施人得以对其是否被提供了不同的商业条款进行评估的方式披露并呈现（至少包含）关键合同条款在内的协议内容 [959] 。关于此项义务所包含的范围与详细程度应依个案具体情况决定 [959] 。

考虑到这一点，法院认为，通过提交包含一项有关连网汽车价值的研究以及其与另一家主要汽车制造商间签署的许可协议在内的各项信息，诺基亚已经向戴姆勒提供了足够的信息 [960] 。于此脉络下，法院否认了诺基亚有向戴姆勒披露其与智能手机制造商间签署的许可协议的义务。法院拒绝了有关标准必要专利持有人的信息披露义务应延伸至涵盖此前签署的每一个许可协议的全部内容，并且标准必要专利持有人有义务披露所有现存许可协议的观点 [961] 。此外，法院更指出，通信行业中的许可协议对于评估汽车行业中的许可协议是否符合FRAND而言并无关联 [961] 。

 

供应商提出的FRAND抗辩

除上述几点外，法院还强调，戴姆勒无法从其参加本诉讼程序的供应商所提出的FRAND抗辩中获益 [962] 。

法院并未就关于被起诉的终端设备制造商原则上是否可以倚仗其供应商之一所提出的FRAND抗辩这一问题作出明确答覆。然而，法院认为，这将取决于该供应商在任何情况下均愿意由专利持有人处取得以终端产品为标准计算涉案专利价值（而非该产品的组件）的许可 [963] 。而在当前诉讼中情况并非如此 [964] 。

法院并没有忽略供应商可能将其向标准必要专利持有人支付的许可费转嫁在其客户身上这一问题 [965] 。然而，与第三方之间的合同约定（此处为供应商与终端设备制造商之间的协议），在法院看来，不应导致一个不允许标准必要专利持有人共享其专利技术为终端产品创造出的价值的许可协议的结果 [965] 。
 

C. 其他重要问题

最后，法院做出与反垄断办公室的建议相反的裁定，认为没有必要中止诉讼程序并将围绕着标准必要专利持有人的FRAND承诺是否将赋予价值链中的每一参与者直接对其主张获取双边许可的权利（即“对所有人进行许可”观点），抑或者是只对取得并使用标准化技术有主张的权利（即“所有人皆有权使用”的观点）等一系列问题提交欧洲联盟法院寻求答覆。

法院并未就此问题做出答覆，因为不论是戴姆勒还是其供应商均不愿意以该受保护技术为戴姆勒制造的汽车所创造出的价值为基准向诺基亚取得符合FRAND条款的许可 [966] 。法院还指出，就本案涉案专利将于从现在开始起算的几年后到期失效这一事实而言，也不应该中止本诉讼程序 [967] 。
 

• [919] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19。
• [920] 同上注, 段 49-136。
• [921] 同上注, 段 138。
• [922] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
• [923] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19, 段 144。
• [924] 同上注, 段 146。
• [925] 同上注, 段 147。
• [926] 同上注, 段 148。
• [927] 同上注, 段 149。
• [928] 同上注, 段 152。
• [929] 同上注, 段 151-156。
• [930] 同上注, 段 248。
• [931] 同上注, 段 153 及以下。
• [932] 同上注, 段 154。
• [933] 同上注, 段 155。
• [934] 同上注, 段 157-231。
• [935] 同上注, 段 158。
• [936] 同上注, 段 159。
• [937] 同上注, 段 161。
• [938] 同上注, 段 197-199。
• [939] 同上注, 段 157, 160 及 162-164。
• [940] 同上注, 段 160 及 165-168。
• [941] 同上注, 段 169。
• [942] 同上注, 段 170。
• [943] 同上注, 段 171。
• [944] 同上注, 段 172。
• [945] 同上注, 段 173。
• [946] 同上注, 段 174 及以下。
• [947] 同上注, 段 174。
• [948] 同上注, 段 177。
• [949] 同上注, 段 180。
• [950] 同上注, 段 187 及以下。
• [951] 同上注, 段 201-212。
• [952] 同上注, 段 202。
• [953] 同上注, 段 203。
• [954] 同上注, 段 205。
• [955] 同上注, 段 210。
• [956] 同上注, 段 213。
• [957] 同上注, 段 215。
• [958] 同上注, 段 216 及以下。
• [959] 同上注, 段 217。
• [960] 同上注, 段 218。
• [961] 同上注, 段 230。
• [962] 同上注, 段 232 及以下。
• [963] 同上注, 段 234, 236 及以下。
• [964] 同上注, 段 240 及以下。
• [965] 同上注, 段 239。
• [966] 同上注, 段 253 及 291。
• [967] 同上注, 段 291。

LG诉TCL，曼海姆地区法院(Landgericht)

2 三月 2021 - Case No. 2 O 131/19

A.事实

LG是一家总部设在韩国的全球电子公司，拥有被声明为对实施无线通信标准（可能）必要的专利组合（以下称“标准必要专利”，或“SEP”），包括欧洲电信标准协会（ETSI）制定的4G/LTE标准。欧洲电信标准协会要求专利持有人承诺以公平、合理和无歧视（FRAND）的条款和条件让用户可以使用标准必要专利。

TCL是一家中国电子设备制造商，在德国进口和销售符合4G/LTE标准的手机以及其他产品。

2016年3月，LG向TCL集团的母公司发送了一封包含其标准必要专利组合信息的信函。直到2018年8月，LG总共向TCL集团内部的不同公司发出了7封类似的信函。TCL没有对这些信函作出反应。2018年3月，LG还向TCL提供了一份许可要约，其中规定了定期支付专利许可费的方式。TCL仍未对此作出回应。

2019年11月，LG向曼海姆地区法院（以下称“法院”）提起了针对TCL的侵权诉讼。2020年1月，在诉讼立案后，TCL首次与LG取得联系。随后，双方就保密协议（NDA）进行了谈判，并于2020年5月签署了保密协议。除此之外，双方还进行了几次会议和沟通，在这期间LG向TCL提供了关于其标准必要专利组合以及现有许可协议的信息。另一方面，TCL向LG提供了它以往的销售量。2020年6月，TCL在谈判中提到了LG与高通之间的许可协议，该协议已于2018年12月到期（以下称“高通许可”）。高通公司为TCL提供芯片组。TCL认为，对于高通公司提供的且受高通许可所涵盖的芯片组，LG的专利权已经用尽。

2020年7月，LG向TCL提出了修改后的许可要约，规定一次性付款（而不是最初提出的定期付款）。TCL没有接受这一要约。

2020年11月，TCL向LG提出了反要约。该反要约是基于定期支付许可费的计算模式。考虑到高通许可，TCL要求在协议中加入一项条款，允许TCL将使用已获LG许可的供应商提供的芯片组的手机排除在许可费计算之外。

此后不久，LG向TCL提出了一个在很大程度上与TCL的反要约相应的要约。LG提出了对许可费计算的某些修正（如增加上限和下限），并删除了上述提到的允许TCL免于为所售的一部分设备付许可费的条款。

2020年12月，TCL表示，它更倾向于一次性付款。随后，LG对其之前的要约做了小幅修改。但是，双方仍没有达成一致。

2021年1月，TCL提供了一笔保证金，涵盖了自2016年以来在德国的销售（包括搭载了高通芯片组的设备），并为以往的销售开设了担保账户。

在本判决 [968] 中，法院支持了LG的权利主张，并对TCL下达了禁令。
 

B.法院的论理

法院认为，涉案专利是有效的，并遭受了侵权。 [969]

法院进一步认为，LG所主张的禁令救济是可执行的。 [970] 在提起本案诉讼之前，LG已经充分履行了通知TCL关于标准必要专利侵权的义务，并且向TCL提供了符合FRAND的要约。 [971] 相反，TCL没有适当表达从LG获得FRAND许可的意愿。 [972]
 

侵权通知

法院认为，LG于2016年3月向TCL发出的第一封信函（或最后于2018年3月提出的许可要约），已经表明LG在启动诉讼程序之前充分通知了TCL关于其侵犯涉案标准必要专利权的情况。 [973]

2016年3月的信函送达地址是TCL集团的母公司（而不是本诉讼中被起诉的单独的关联公司），这一事实并无负面影响 [974] 。根据法院的观点，向母公司送达这类信函符合FRAND谈判中的通常做法。 [974]

此外，针对2016年3月的信函中没有说明涉案专利的专利号，而只包含相应的专利申请号这一事实，法院不认为其存在问题。 [975] 法院指出，通过在欧洲专利局的相关数据库中进行搜索，TCL应当能够识别出涉案专利已经被授权和公布。 [975] 考虑到这一点，法院强调，标准必要专利持有人没有义务定期更新其专利组合中包含的各个专利的清单。 [975]
 

获得许可的意愿

根据法院的观点，TCL没有适当表达其获得FRAND许可的意愿。 [976] 实施人必须“清楚且明确地”以及“严肃且无条件地”声明其愿意基于FRAND条款与标准必要专利持有人签订许可协议，并在之后以“目标导向”的方式参与谈判。[10] 相比之下，在回应侵权通知时，仅仅表明愿意考虑签署许可协议，或仅就是否以及在何种条件下获得许可的问题进行谈判，不足以证明实施人的上述意愿。 [977]

在对意愿进行评估时应考虑到所有情况，尤其是实施人的行为。 [978] 特别是，法院必须审查实施人的行为是否‘合理地促进谈判’。 [979]

在法院看来，谈判的时机是一个重要因素：实施人通常被要求及时做出反应；如果它在较长的时间内没有表达获得FRAND许可的兴趣，那么实施人必须付出‘额外的努力’。 [980] 在特殊情况下，实施人“无意愿参与”谈判具备正当理由，例如，当标准必要专利持有人本身不以达成目标为导向参与讨论时（如不分享有关其许可实践的信息）。 [981] 如果标准必要专利持有人已经发出了许可要约，实施人应该迅速提出任何疑虑，而不是将潜在的反对意见保留下来，以便在随后的诉讼中使用。 [979]

此外，在评估获得专利许可的意愿时也应考虑实施人的反要约。法院认为，实施人在收到标准必要专利持有人提供的许可要约和充足的信息后，仍提出不符合FRAND的反要约，通常表明它没有意愿达成符合FRAND的解决方案。 [979] 当实施人坚持其反要约并拒绝任何改进时，同样的推定也适用。 [979]

在此背景下，法院认为，从整体上看，TCL没有充分推动与LG的谈判。 [982] 法院指出，TCL没有努力阐明高通许可是否以及在何种程度导致LG的专利权（部分）用尽 [983] 。TCL在2020年6月（LG于2016年3月首次与TCL联系后大约4年）第一次提到高通许可，并在2020年11月的待审期间才再次提起。TCL还在之后拒绝了LG提出的进一步阐述这一问题的几次提议。根据法院的观点，TCL应该更早地以更透明的方式设法解决这个问题，尤其是考虑到高通协议的措辞很难支持TCL关于专利权用尽的理论。 [984]

法院还认为，TCL在没有处理LG在本案提供的信息的情况下多次改变意见（尤其是关于其倾向的许可费计算模式），这是拖延战术的表现。 [985] 拖延战术的另一个表现是，TCL通常根据正在进行的侵权诉讼的发展调整将其在谈判中的行为（例如，TCL在立案通知送达后才第一次与LG联系，并在诉讼的口头听证会前不久提出了反要约）。 [986] 法院还注意到，TCL花费了近四个月的时间才与LG签署保密协议，然而考虑到当时TCL已经将与LG谈判的开始时间推迟了数年之久，它应该付出更多的努力来促进谈判。 [987]

此外，法院认为，TCL向LG提出的不符合FRAND的反要约进一步表明了TCL没有充分参与许可谈判的事实。 [988] 根据法院的观点，TCL的反要约是不符合FRAND条款的，因为高通许可是否导致LG的专利权（部分）用尽这个“商业关键”问题被搁置而留待双方后续谈判或在法庭程序中解决。 [989]

法院强调，符合FRAND的许可费原则上是一个范围；在不同领域以及随着时间推移，FRAND条款下的费用可能不同，应当根据个案情况由当事人基于诚实信用原则在双边谈判中确定。 [990]

法院认为，在反要约中对于有争议的，‘严重影响’应付许可费的问题不作回答，通常是不合适的。 [991] 通过在此基础上签署许可协议，实施人能够合法使用专利（并因此不再面临禁令的风险），同时保留暂不支付部分许可费的权利，直到有争议的问题在未来的谈判或法庭程序中得到解决。 [991] 这样的反要约类似于《德国民法典》第315条规定的要约，根据法院的观点，这也不足以推定实施人具有签订符合FRAND的许可协议的意愿。 [992] 对此法院指出，在华为诉中兴案 [993] 中，欧盟法院要求实施人做出“具体的反要约”，这意味着反要约中必须包含具体的专利许可费，或者该许可费能够被及时确定。 [994]

在本案中，TCL保留了将一部分手机排除在以往销售的许可费计算之外的权利，即在高通许可到期前售出的搭载高通公司芯片组的手机。从LG的角度，TCL准备支付的专利许可费的计算中是否考虑了上述部分手机，这个关键问题并未解决。根据法院的观点，这个问题很重要，因为搭载高通公司芯片组的手机在TCL的整体销售中占相当的份额，排除这部分手机可能会导致最终支付的许可费数额大幅减少。 [995]
 

标准必要专利持有人的要约

法院进一步认定，TCL不具备获得FRAND许可的意愿，LG对此不负责任；相反，LG已经履行了其所有的作为义务。 [996] 法院指出，特别是LG已经向TCL提出了多个符合FRAND条款的许可要约，并且还准备为了TCL的利益调整其要约。 [996]

法院认为，LG建议的许可费计算模式（特别是在其最终的要约中）得出的总许可费在无线电信领域普遍接受的范围内。 [997] 此外，尽管LG尚未在市场上形成一个标准的许可方案，但其已经按照向TCL提供的条件与其他实施人签订了两份许可协议，法院认可上述条件不存在“明显不符合FRAND条款”的情形。 [998]
 

提供保证金

在认定TCL是作为不具有许可意愿的被许可人采取行动后，法院既没有审查TCL提供的担保金数额（仅涵盖过去在德国的销售）是否足够，也没有审查这一付款是否过迟。 [999]
 

• [968] LG v TCL, District Court of Mannheim, 2 March 2021, Case-No. 2 O 131/19 (引自GRUR-RS 2021, 6244)。
• [969] 同上注，段49至104。
• [970] 同上注，段111及以下。
• [971] 同上注，段117和段158及以下。
• [972] 同上注，段117。
• [973] 同上注，段118。
• [974] 同上注，段121。
• [975] 同上注，段122。
• [976] 同上注，段123及以下。
• [977] 同上注，段124。
• [978] 同上注，段125。
• [979] 同上注，段126。
• [980] 同上注，段127。
• [981] 同上注，段128。
• [982] 同上注，段129-130和段142及以下。
• [983] 同上注，段144及以下。
• [984] 同上注，段147。法院认为，高通许可并没有导致LG在本案中的专利权用尽，见段95至104。
• [985] 同上注，段152及以下。
• [986] 同上注，段154。
• [987] 同上注，段155。
• [988] 同上注，段129及以下。
• [989] 同上注，段130。
• [990] 同上注，段132。
• [991] 同上注，段133。
• [992] 同上注，段134。根据《德国民法典》第315条，专利权人可以被授予单方面决定许可费用的权利。但是，实施人保留在法庭上质疑这种决定的权利。应付许可费的最终数额最终将由法院在缔结许可协议后的审判中决定。
• [993] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
• [994] LG v TCL, District Court of Mannheim, 2 March 2021, Case-No. 2 O 131/19, 段133。
• [995] 同上注，段136及以下。
• [996] 同上注，段157。
• [997] 同上注，段160。
• [998] 同上注，段161。
• [999] 同上注，段156。

Cases from 慕尼黑地区法院 - District Court

夏普诉戴姆勒

10 九月 2020 - Case No. 7 O 8818/19

A. 事实

原告是总部位于日本的夏普（Sharp）集团的一部分（以下称“夏普”）。夏普持有一系列的专利组合，而这些专利组合被宣告为实施欧洲电信标准协会（ETSI）所发展出的数种无线通信标准时（潜在）必要的专利（以下称“标准必要专利”或“SEP”）。

被告戴姆勒（Daimler）是是德国一家主要的汽车制造商。戴姆勒在德国生产并销售具有连网功能的汽车，而此一连网功能实施了由欧洲电信标准协会所发展出的标准。

夏普就本案涉案专利为实施4G / LTE标准时（潜在）必要向欧洲电信标准协会作出宣告。

欧洲电信标准协会要求各专利持有人承诺愿依照公平、合理且无歧视（FRAND）的条款和条件向标准实施人提供实施该标准时必要或可能成为必要的专利。 2017年，夏普加入了Avanci许可平台。Avanci依据标准化的许可协议和固定费率向汽车制造商提供实施连网标准的标准必要专利许可。Avanci自2016年9月起就一直持续在与戴姆勒联系沟通有关取得许可可能性的相关事宜，然而，双方并未达成协议的签署。

在一次初步的沟通后，夏普于2019年5月20日向戴姆勒提出了一系列说明其所持有的标准必要专利——包含本案涉案专利——与受影响标准的相关部分对应关系的权利要求对照表． 戴姆勒于2019年6月7日作出回覆，表示其原则上愿意取得其所使用专利的许可，然而却询问夏普所提供者是双边许可或是由Avanci平台进行许可。戴姆勒提出，如果该许可是以双边许可的方式提供，则其认为其供应商也可以被许可。

戴姆勒于2019年7月23日向夏普发出了另一封信函，信函中主张其认为不应该是由戴姆勒本身，而是应该由其（未个别指名的）供应商应来取得许可。戴姆勒主张，本案中夏普未向特别是供应连网功能元件的戴姆勒各供应商提供许可及其所要求获取的夏普已签署协议的相关信息，夏普因此将违反其对欧洲电信标准协会欧洲电信标准协会的FRAND承诺。

夏普在2019年8月8日作出回应，并告知其计划向戴姆勒提出一项单独的许可要约。为此，夏普要求戴姆勒提供某些相关信息，特别是与戴姆勒供应商有关的信息。

2019年9月18日，戴姆勒拒绝提供夏普所要求的信息，并且再次提出其供应商才是夏普许可要求的正确的收受人。

夏普在2019年10月22日向戴姆勒发出了一份双边FRAND许可协议要约，然而，此一许可要约并未被接受。

随后，夏普于慕尼黑地区法院（以下称“法院”）向戴姆勒提起了当前侵权诉讼。戴姆勒的几家供应商也参加了该诉讼程序以支持戴姆勒。

戴姆勒于该诉讼程序被提起后的2019年12月17日对夏普提出了许可反要约，随后并要求夏普同意中止该未决侵权诉讼程序的进行。夏普于2019年12月31日拒绝了戴姆勒所提出的许可反要约。

在诉讼程序进行的过程中，夏普与参加诉讼的其中一家戴姆勒供应商达成了许可协议。因此，夏普修改了其在诉讼中的主张。

法院在当前判决 [1000] （引自https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2020-N-22577?hl=true）中对对戴姆勒核发了禁令，并确认戴姆勒应承担实质性损害赔偿的责任。法院还要求戴姆勒必须召回并销毁侵权产品、开立担保帐户、并且提供计算夏普所受损失必需的相关信息。

 

B. 法院的论理

法院认为，本案涉案专利为实施4G / LTE标准时所必要 [1001] ，并且该专利遭受侵权行为 [1002] 。因此，夏普有权享有包含禁令救济在内的各项诉讼上主张 [1003] 。

戴姆勒主张了所谓的“FRAND抗辩”，基本上认为夏普提起侵权诉讼的行为构成了对其市场支配地位的滥用，从而违反了《欧洲联盟运作条约》（TFEU）第102条，因此其禁令救济主张应予否决。除此之外，戴姆勒等主张夏普未能遵守欧洲联盟法院（CJEU）在华为诉中兴案 [1004] 中所确立的行为义务（以下称“华为案判决”或“华为框架”）。

法院驳回了戴姆勒提出的FRAND抗辩，并且认为戴姆勒不能通过其供应商获得FRAND抗辩 [1005] 。

滥用市场支配地位

法院认为，当专利持有人未能做出“充分努力”来满足其因居于市场支配地位所应承担的“特殊责任”并致力促成与“原则上有取得许可意愿”的被许可人间许可协议的签署时，专利持有人因为行使其标准必要专利权而构成对市场支配地位的滥用的情况便可能产生 [1006] 。然而，这需要未经权利持有人许可就已经使用了该项受保护技术的实施人愿意按照FRAND条款取得许可方可能实现 [1007] 。法院进一步阐明，标准必要专利持有人不能向法院提出对任一标准实施人“强制施加”许可协议的主张 [1007] 。

基于以上所述，法院认为，夏普提起本案诉讼的行为并未构成《欧洲联盟运作条约》第102条下对市场支配地位的滥用 [1008] 。法院并未确认夏普是否真实具备市场支配地位，而仅只是假设情况确实如此 [1008] 。尽管如此，由于戴姆勒未能充分表达出其取得夏普所持有的标准必要专利组合的许可的意愿，夏普对其（假定的）市场支配地位的滥用并不成立 [1009] 。
 

取得许可的意愿

法院解释到，实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议，并且随后以一种“目的性导向”的态度来进行许可谈判（引用德国联邦法院2020年5月5日在Sisvel诉Haier案中的判决– Sisvel v Haier, Case No. KZR 36/17以及英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711（Pat）-Unwired Planet v Huawei） [1007] 。

这意味着实施人不应拖延许可谈判的进行 [1010] 。在法院看来，这尤为重要，其原因在于实施人通常在许可谈判开始之前就已经使用了该标准化技术专利，而拖延许可协议的签署直至该专利到期失效为止对他们而言可能是具备完全且优势利益的 [1010] 。

尽管如此，法院认为，戴姆勒并未展现出一个“善意”被许可人应有的态度 [1009] 。

从戴姆勒在向夏普提出许可反要约之前的行为来看，法院认为戴姆勒缺少了“明确”的取得许可意愿的表达 [1011] 。在其于2019年6月7日对夏普做出的第一份答复中，戴姆勒并没有做出任何形式的承诺是超出如同“若其确实使用了夏普的专利就愿意讨论是否取得许可”这样概括性意愿表达的 [1012] 。此外，戴姆勒在其2019年7月23日的信函中也未包含适当表达其取得许可意愿的声明，特别是当戴姆勒仅仅是将夏普转介给其（甚至未指明名称的）供应商，并且坚持认为夏普有义务对其供应商授予许可时 [1013] 。此情况于戴姆勒在2019年9月18日所作出的声明中亦相同，戴姆勒在该声明中再度将夏普转介给其供应商，同时还拒绝向夏普提供草拟许可要约所必需的相关信息 [1014] 。法院指出，尽管披露夏普所要求的信息的法律上义务并不存在，戴姆勒多次的各种拒绝明确显示其并非以“目的性导向的态度”来参与讨论，而只是为了拖延许可谈判的进行 [1015] 。戴姆勒在夏普提出相关要求后将近六周的时间才作出回覆的这一事实更加证实了上述观点，法院认为戴姆勒不具备任何理由而需要花费这么长时间的才能作出回覆 [1015] 。

此外，法院指出，戴姆勒在与Avanci平台谈判过程中的整体行为进一步证实了戴姆勒作为一个“恶意”被许可人的这一结论 [1016] 。法院认为，在评估提出FRAND抗辩的实施人是否具备“取得许可的意愿”时，应该将实施人的整体行为纳入考量范围，而不是仅考虑实施人在收到侵权通知后时间维度上立即发生的事实 [1017] 。评估实施人是否具备取得许可意愿的标准不应该取决于究竟是由专利持有人首先开始与实施人接洽抑或是相反地由实施人主动发起向专利持有人寻求许可这样相对随机的事实 [1018] 。尽管华为判决中所确立的行为义务（其中一项为通过表达取得许可的“意愿”来对侵权通知做出回覆）原则上应该按照欧洲联盟法院所描绘的那样按“步骤”进行操作，然而，视具体个案情况的不同，例外应被允许，在当事方的行为存在应被允许的例外情况时，以一种存粹“形式性“的观点来看待华为框架似乎并不恰当 [1019] 。法院认为，本案即是此种情况，因为戴姆勒自2016年9月以来即持续与Avanci接洽，并且从未在任何一个时间点表达其愿意取得许可 [1020] 。

法院进一步指出，戴姆勒于2019年12月17日提出的许可反要约是在侵权诉讼已经被提起后才提出的，此无法弥补其取得许可意愿的缺失 [1021] 。法院认为，戴姆勒所提出的许可反要约中附带了要求夏普同意中止正在进行的诉讼程序的条件，此一事实表明，于本案中戴姆勒唯一的目的只是在拖延许可谈判的进行；因此，此一许可反要约的提出并不能弥补戴姆勒在截至当时为止所表现出的“巨大恶意” [1022] 。在一点上，法院表示，在诉讼进行过程中对瑕疵行为进行补正（例如：通过提出许可反要约）的可能原则上是被允许的，然而，随着审判进行至越后期，允许补正的条件将越来越严格 [1023] 。

法院还强调，就内容而言，戴姆勒所提出的许可反要约并没有表达出其愿按“任何实际上符合FRAND的条款”取得许可的意愿 [1024] 。通过提出一个不同的“参考点”来计算许可费，戴姆勒仅只是针对夏普要约中许可费的一小部分或Avanci从其竞争对手处收取的整体费用部分做出了反要约，如此一来对方拒绝此许可反要约就成为了一种“逻辑上的必要” [1025] 。

于此脉络下，法院明确指出，就是否具备取得许可意愿的评估仅戴姆勒的行为是相关的 [1026] 。更重要的是，戴姆勒不能以其参加诉讼的供应商“声称“有向夏普取得许可的意愿为由来避免禁令的核发 [1027] 。因此，法院并没有就戴姆勒的供应商是否确实为“善意被许可人”进行审查 [1027] 。
 

无歧视 / 许可层级

除上述几项观点外，法院进一步阐明，夏普仅对作为终端设备制造商的戴姆勒要求取得许可的行为并未构成滥用或歧视性行为 [1028] 。

法院认为，夏普没有义务对戴姆勒的供应商授予许可 [1029] 。在（德国的）汽车行业中，由供应商来取得与其出售给汽车制造商的零部件相关的许可此一作法十分常见，但这并不意味着夏普就必须尊重且接受这种作法 [1030] 。相反地，随着其产品越来越广泛地使用无线通信技术，戴姆勒必须接受于该行业中盛行的作法，其中也包括向终端设备制造商进行许可 [1030]

无论如何，法律上夏普都没有必须对零组件制造商授予许可的义务；其仅有义务必须许可对其所持有实施某一标准的标准必要专利的“使用” [1031] 。专利持有人对欧洲电信标准协会所做出的承诺创造了一项将标准必要专利对第三方进行许可的义务 [1032] 。尽管如此，法院强调，这并不意味着标准必要专利持有人有义务对价值链中各个层级的每一个参与者皆授予许可 [1033] 。这种义务既不是源于竞争法，也并非由于对欧洲电信标准协会做出的FRAND承诺与专利法或合同法相结合而产生 [1033] 。

特别是，欧盟竞争法并未规定必须在价值链的各个层级上对标准必要专利进行许可的义务 [1034] 。法院认为，原则上，专利持有人有权自由选择要在价值链中的哪一个层级对其所持有的专利进行许可 [1035] 。在华为案判决中，欧洲联盟法院指出，FRAND承诺为第三方创造出的是一种其可以由专利持有人处获得许可的“合法期待”。然而，法院认为，这并不构成必须对终端设备制造商的所有供应商进行许可的义务；进入市场并不一定需要取得许可，而是只要能有“合法使用的可能性”即可，这可以是例如通过对价值链最后一级参与者授予的许可，供应商便可以借此获得“代工权” [1035] 。

法院还解释到，即使是在专利法中也未规定标准必要专利必须在价值链中的哪一个层级被许可 [1036] 。特别是，并非所有包含于标准必要专利组合中的个别专利的专利权都必须在零组件制造商层级就产生穷竭的这一事实，更加支持了在终端设备层级进行许可的做法（除此之外，此种做法也可以更有效地对许可费用进行管理） [1037] 。

最后，法院指出，合同法与对欧洲电信标准协会做出的FRAND承诺相结合并不会对专利持有人施加对每一个有兴趣的第三方进行许可的义务 [1038] 。根据其所适用的法国法律，欧洲电信标准协会知识产权政策第6.1条应被理解为仅只是规定了必须本于诚信原则与有意愿取得许可的第三方进行FRAND许可协议谈判的义务 [1039] 。然而，通过对“设备”的明确指称，此条款仅适用于终端设备制造商，因为并非所有的零组件都必然以某标准为一个整体的形式来实施该标准 [1040] 。在法院看来，欧洲联盟委员会过去在不同场合所表达的观点也并不会得出不同的结论同上注, 段 180-183。 法院特别引用了欧盟委员会在摩托罗拉案（European Commission, Case No. AT.39985 – Motorola）中的决定，以及 the Communication on the Guidelines on the applicability of Article 101 TFEU to horizontal co-operation agreements (2011/C 11/01); 及 the Communication on ICT Standardisation Priorities for the Digital Single Market, COM(2016) 176 final。。
 

供应商提出的FRAND抗辩护

法院进一步认为，戴姆勒无法从其供应商所提出的FRAND抗辩护中获益 [1042] 。被告仅在当专利持有人有义务对供应商进行许可时，才可以倚仗此种抗辩；然而，此情形于在充分考量了相关价值链中可能产生的专利权穷竭问题后，被告本身仍有能力与标准必要专利持有人签署许可时，则没有其适用 [1042] 。 法院认为本案即是此种情况。戴姆勒的供应商本身并没有单独作出要求获得夏普的许可的主张，而只是主张对标准化技术应享有“受法律保障的使用”，而这并不能支持戴姆勒的主张 [1043] 。

 

C. 其他重要问题

此外，法院认为没有理由基于比例原则考量而对夏普所提出的禁令救济主张进行限制 [1044] 。戴姆勒曾辩称，其认为不应根据本案涉案专利而核发禁令，因其所生产的车辆是由大量零组件组合而成的“复杂”产品，而使用夏普所持有的标准必要专利的远程控制单元对于汽车整体而言的重要性极其微小。

法院明确指出，根据德国法律，比例原则是一项具备宪法位阶的一般性原则，如果被告以此原则为由提出异议，则法院在审查禁令救济问题时也应予以考虑 [1045] 。根据联邦法院的判例，禁令在实施人将遭受因专利持有人违反诚信原则行使排他性权利而产生的危害这样的特殊情况下，就可能无法立即执行 [1046] 。

在法院看来，任何对禁令救济权的限制都应该在“极少数特殊情况下”才有其适用，因此必须受到严格的条件限制，尤其是当为了维护“法律秩序”以及“法律的确定性与可预测性”时 [1047] 。在整体实质性和程序性框架下（包括例如为执行一审所核发的禁令需提供担保），就所有相关事实对具体个案逐一进行评估是必须的 [1047] 。法院解释到，只有在此一危害超出执行禁令通常会产生的后果时才可能被考虑 [1047] 。同时，应该可以期待侵权人会在收到侵权通知后做出努力以尽快达成许可协议的签署并且至少采取一定预防措施来防止可能对其主张的禁令 [1047] 。

于此脉络下，法院指出，尽管在本案中受影响的可能仅只是戴姆勒所制造车辆中的单个部件，本案各争点依旧是围绕着一个复杂的专利组合（不论究竟是夏普或者Avanci的专利组合）的许可问题而产生 [1048] 。此外，法院也不认同夏普专利所具有的功能对戴姆勒的车辆而言是不重要的，此原因在于，“联网汽车”这一创新发明中很大的一部分，不论是从技术层面还是经济角度出发，都与移动通信技术紧密相关 [1049] 。最后，法院还批判了戴姆勒并未做出任何实际的努力以寻求与夏普或Avanci签署许可协议的事实 [1050] 。