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Updated 22 八月 2018

TQ Delta LLC v Zyxel Communications and Ors., EWHC

英国法院判决
13 六月 2018 - Case No. HP-2017-000045, [2018] EWHC 1515 (Ch)

A. Facts

The Claimant acquired patents which were declared as essential to the DSL standard under the so-called "ITU Recommen¬dations" (Standard Essential Patents, or SEPs) from a company called Aware Inc [1] . The ITU Recommendations require from the SEP holder to make its patents accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [2] . The Defendants manufacture and sell various types of equipment complying with the DSL standard [2] .

The Claimant asserted claims against the Defendants before the UK High Court of Justice (Court) based on two SEPs it holds [3] . The proceedings involve, on the one hand, technical issues concerning the validity, essentiality and infringement of the SEPs in question and, on the other hand, the licensing of these SEPs on FRAND terms [4] .

Prior to service of the statements of case, the Court ordered the Claimant to disclose licence agreements concluded with third parties covering the SEPs in suit (comparable agreements) [5] . The Claimant entered into licences with two companies (in the following referred to as "counterparty A" and "counterparty B") [6] and also possesses copies of licences previously granted by Aware Inc. to other SEP users [7] . Counterparty A and Aware Inc. argued that their licence agreements can only be disclosed on an "external eyes only" basis (that is only towards i.e. external counsels and independent experts), since they contain confidential information, such as party names, pricing terms and other commercial information [8] . Counterparty B did not object to the disclosure of its licence agreement to the Defendant (provided that this would take place on a confidential basis), but argued that any other confidential information provided to the Claimant in the course of negotiations for the licence can only be disclosed to "external eyes only" [9] .

The Claimant suggested that the parties to the proceedings enter into a co-called "Confidentiality Club Agreement". The agreement proposed by the Claimant differentiated between "Confidential Infor-mation" and "Highly Confidential Information" [10] . Whether information is designated as "Confidential" or "Highly Confidential" would be determined by the disclosing party [10] . Information designated as "Highly Confidential" would be subject to an "external eyes only" limitation [10] . This limitation would apply to both comparable licences granted by the Claimant and licences granted by Aware Inc. [11] . The Defendants did not agree with the Claimant’s proposal. Instead, they requested that two named individuals from the Defendant’s group should be given access to the comparable licences [10] .

The Court did not approve the establishment of an "external eyes only" mechanism as suggested by the Claimant [12] and ordered disclosure of the comparable licences. Nevertheless, the Court temporarily stayed that order to give the third parties affected (counterparties A and B and Aware Inc.) the opportunity to set it aside or vary it, before disclosure of the comparable licences is made [13] .


B. Court’s reasoning

In the Court’s eyes, it is "common practice" in patent cases for parties to reach Confidentiality Club Agreements [10] ; such agreements are "often essential", when disclosure of confidential information is required in court proceedings [14] . In cases involving intellectual property rights, a mechanism for disclosure limiting access to confidential documents to specific representatives of one of the parties is considered "commonplace" [14] . Furthermore, documents can be redacted to exclude confidential material which is irrelevant to the dispute [14] .

Looking particularly at "external eyes only" mechanisms, the Court takes the view that such mechanisms can be included in Confidentiality Club Agreements upon agreement of the parties (as it was the case in the matter Unwired Planet v Huawei [15] ) [16] . If no agreement can be reached on such a provision, parties can request the Court to restrict access to specified documents to "external eyes only" [7] .

The Court finds, however, that such a confidentiality regime can be applied only to exceptional cases [17] . An "external eyes only" mechanism enables one party to exclude access to any document that it chooses, placing the burden of seeking access to documents to the opposing party, despite the fact that the latter is prima facie entitled to such access [18] . In the Court’s view, the opposite should rather be the case: The party wishing to limit access to documents to "external eyes only" should be obliged to justify that limitation [19] .

According to the Court, when determining whether "external eyes only" restrictions should be ordered, the role which the affected documents are expected to play in the case must be considered [20] . Where the documents are of limited, if any, relevance to the proceedings and their disclosure could be unnecessarily damaging for the party asserting confidentiality, ordering an "external eyes only" limitation may be justified in specific cases [14] (insofar the Court adopts the notion expressed in the matter IPCom v HTC [21] ). Furthermore, the Court did not rule out that in certain exceptional cases an "external eyes only" mechanism might also be justified with respect to specific documents of "greater relevance", at least at an interim stage of the proceedings [22] .

When it comes to documents key to the case, the Court finds, however, that the "blanket exclusion" of access to such documents enabled through "external eyes only" mechanisms is not in line with the right to a fair hearing stipulated by Article 6 of the European Convention on Human Rights and the principles of natural justice . Such a regime is further incompatible with the obligation of lawyers to share all relevant information of which they are aware with their clients . If key documents were to be subject to an "external eyes only" restriction, the opposing party would be unable to discuss the respective documents with its legal representative, to attend parts of the trial and to see all of the reasons for the judgment .

Against this background, the Court held that in the present case, approving the establishment of an "ex-ternal eyes only" mechanism as suggested by the Claimant would "merely postpone the resolution of the dispute" . The Court had ordered the disclosure of the comparable licences, because they are, or are likely to be, key documents in the above sense . Since the Court may be asked to decide on a FRAND licence which must be reasonable and non-discriminatory, existing licence agreements entered into by the Claimant (and its pre¬decessor, Aware Inc.) may be highly relevant documents as comparators .

  • [1] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 2.
  • [2] Ibid, para. 3.
  • [3] Ibid, para. 1.
  • [4] Ibid, para. 1. With respect to the relationship between the 'technical trials' (that means the proceedings concerning the validity, essentiality and infringement of the SEPs in suit) and the 'non-technical trial' regarding to FRAND licensing see, TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 21 November 2017, Case-No. HP-2017-000045, [2017] EWHC 3305 (Pat)
  • [5] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), paras. 25 and 30.
  • [6] Ibid, para. 25.
  • [7] Ibid, para. 25.
  • [8] Ibid, paras. 26 and 28.
  • [9] Ibid, para. 27.
  • [10] Ibid, para. 4.
  • [11] Ibid, para. 22.
  • [12] Ibid, paras. 34 et seqq.
  • [13] Ibid, para. 35.
  • [14] Ibid, para. 23.
  • [15] Unwired Planet v Huawei, UK High Court of Justice, 5 April 2017, Case-No. HP-2014-000005, [2017] EWHC 711 (Pat).
  • [16] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13th June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 23.
  • [17] Ibid, para. 21.
  • [18] Ibid, paras. 21 and 34.
  • [19] Ibid, para. 34.
  • [20] Ibid, para. 15.
  • [21] IPCom GmbH and Co KG v HTC Europe Co. Limited and ors, judgement dated 23 January 2013, Case No. HC11 C02064, [2013] EWHC 52 (Pat).
  • [22] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 23.

Updated 17 一月 2018

Sisvel v Haier

OLG Düsseldorf
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. [23] 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 [24] and that the claimant had not made a license offer on FRAND conditions. [25] 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. [26] 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’). [27] 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). [28]

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. [29] 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. [30] 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. [30] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [31] because the patent in question was related to data transfer, an essential function of the GPRS standard. [32]

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). [33] 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. [34] 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. [34] 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 [35]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [36] 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’). [36]

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. [37] 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. [38] 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’). [38] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [38]

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. [39] 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. [40] 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’). [40] 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. [40] 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 [41] because it discriminated against the defendants. [42] 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. [43]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [44] SEP owners have discretion regarding the license fees that they charge. [45] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [46] Further, license conditions can be abusive only if they are significantly different between licensees. [46] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [47] The burden of proof for such substantially unequal treatment lies with the defendant, [48] whilst the onus is on the claimant to prove that this unequal treatment is justified. [48] 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. [48] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [49] without having a proper justification. [50] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [51] or that these discounts were a result of the particularities of the case. [52]

  • [23] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
  • [24] 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.
  • [25] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
  • [26] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
  • [27] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
  • [28] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
  • [29] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
  • [30] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
  • [31] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
  • [32] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
  • [33] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
  • [34] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
  • [35] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
  • [36] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
  • [37] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
  • [38] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
  • [39] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
  • [40] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
  • [41] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
  • [42] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
  • [43] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
  • [44] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
  • [45] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
  • [46] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
  • [47] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
  • [48] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
  • [49] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
  • [50] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
  • [51] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
  • [52] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.

Updated 21 十一月 2018

Core Wireless v LG, Court of Appeal of Paris

法国法院判决
9 十月 2018 - Case No. RG 15/17037

A. Facts

The Claimant, Core Wireless Licensing S.à.r.l., holds a portfolio of patents declared essential to the GSM, UMTS and LTE wireless telecommunication standards (Standard Essential Patents or SEPs). The Defendants, LG Electronics France S.A.S. and LG Electronics Inc., manufacture and sell – among others – mobile devices complying with the above standards.

The Claimant acquired its portfolio of SEPs from Nokia by a ‘Purchase and Sale Agreement’ concluded in 2011 [53] . The Claimant, Nokia and Microsoft also concluded a so-called ‘Royalty Participating Agreement’, referring to encumbrances [54] .

The parties failed to reach an agreement on a licence for Claimant’s SEP portfolio. Consequently, the Claimant brought an infringement action against the Defendants before the District Court (Tribunal de Grande Instance) of Paris, based on five French patents of its portfolio. The District Court of Paris dis-missed Claimant’s action [55] .

In the ongoing appeal proceedings before the Court of Appeal (Cour d’ Appel) of Paris (Court), the Defendants requested the Court to order the Claimant to produce the ‘Purchase and Sale Agreement’, the ‘Royalty Participating Agreement’, as well as all licensing agreements concluded by the Claimant with third parties, covering the patents in suit [53] . A few days prior to the oral hearing, the Claimant requested, in turn, that the Defendants produce four license agreements which they had entered with third parties [56] .

With the present decision, the Court dismissed Claimant’s request; it held that it was delayed and that the Claimant failed to explain the relevance of the requested licensing agreements to the present pro-ceedings [54] .

On the other hand, the Court granted the Defendants’ request [54] under the following conditions: First, the relevant documents will be made available (unredacted) only to the parties’ counsels, within a deadline of one month after the Court’s order [57] . The parties’ counsels will then be given the opportunity to argue by written submissions which parts or elements of these documents may affect business secrets [57] . On this basis, the Court will decide whether further measures (as set-forth in paragraphs 2, 3 or 4 of Article L. 153-1 of the French Commercial Code) are required for the protection of potential confidential information, or not [57] .


B. Court’s reasoning

The Court made use of the procedural possibilities for the protection of business secrets in court pro-ceedings recently introduced to the French Commercial Code by Law No. 2018-670 dated 30 July 2018 [58] .

In particular, the Court referred to paragraph 1 of Article L. 153-1 of the French Commercial Code, which reads as follows:

‘Where, in the course of civil or commercial proceedings aimed at obtaining a pre-trial order for investiga¬tive measures before any proceedings on the merits, or in the course of proceedings on the merits, the communication or production of a document is requested, which has been deemed to infringe or alleged by a party to the proceedings or a third party to be capable of infringing a trade secret, the court may take any of the following steps on its own motion or at the request of a party to the proceedings or a third party, if the trade secret cannot be otherwise protected, without prejudice to the rights of defence:

(1°) The court alone will review the document and, if deemed necessary, order an expert valuation and request the opinion, for each of the parties, of a person authorized to assist or represent the party, in order to decide whether to apply the protective measures set out in this Article.’

According to the paragraphs 2-4 of Article L. 153-1 of the French Commercial Code, the Court can order the following protective measures:

  • (2°) Decide to limit the disclosure or production of the document to certain parts thereof, order disclo¬sure or production of a summary of the document only, or restrict access to the document, for each of the parties, to a single individual person and a person authorized to assist or represent that party;
  • (3°) Decide that hearings will be held and the decision will be issued in chambers;
  • (4°) Adapt the grounds of the decision and the mode of publication thereof to the needs of protecting the trade secret.’

  • [53] Court of Appeal (Cour d’ Appel) of Paris, judgment dated 9 October 2018, page 5.
  • [54] Ibid, page 5.
  • [55] District Court (Tribunal de Grande Instance) of Paris, judgment dated 17 April 2015, Case No. 14/14124.
  • [56] Ibid, page 2.
  • [57] Ibid. page 6.
  • [58] Ibid, page 5 et seq.

Updated 26 一月 2017

Saint Lawrence v Vodafone

LG Düsseldorf
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, [59] 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. [60] The court declared the Huawei rules applicable to claims for the recall of products. [61] 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. [62] 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. [63] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [64] 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. [65] 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. [66] 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. [67] 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. [68] 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. [69] 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. [70] 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. [71] 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. [72]
    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. [73] Whether the Intervener satisfied the ECJ criteria was left undecided. [74] 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. [75] 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. [76] 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. [77] 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. [78] 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. [79] 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. [80] 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. [81]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [82] 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. [83] 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. [84]
  • [59] 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.
  • [60] Case No. 4a O 73/14, para. 184
  • [61] Case No. 4a O 73/14, para. 187
  • [62] Case No. 4a O 73/14, para. 195 et seq.
  • [63] Case No. 4a O 73/14, para. 208-210
  • [64] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [65] Case No. 4a O 73/14, para. 193
  • [66] Case No. 4a O 73/14, para. 270 et seq.
  • [67] Case No. 4a O 73/14, para. 222 et seq.
  • [68] Case No. 4a O 73/14, para. 225 et seq.
  • [69] 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.
  • [70] 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.
  • [71] Case No. 4a O 73/14, para. 256 et seq.
  • [72] Case No. 4a O 73/14, para. 279 et seq.
  • [73] Case No. 4a O 73/14, para. 214-220
  • [74] Case No. 4a O 73/14, para. 214-220; 278
  • [75] Case No. 4a O 73/14, para. 266
  • [76] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [77] Case No. 4a O 73/14, para. 264
  • [78] Case No. 4a O 73/14, para. 291 et seq.
  • [79] Case No. 4a O 73/14, para. 278
  • [80] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [81] Case No. 4a O 73/14, para. 304
  • [82] Case No. 4a O 73/14, para. 189
  • [83] Case No. 4a O 73/14, para. 309-313
  • [84] Case No. 4a O 73/14, para. 317 et seq.

Updated 24 七月 2020

西斯维尔诉海尔

德国联邦法院
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 [85] ,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 [86]

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 [87] 。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 [88] ,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 [89]

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 [90]

联邦法院于2020年5月5日做出的当前判决 [91] 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 [92]

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 [93] 。 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 [94]

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 [95] ,因此,需要将许多因素共同纳入考量 [96] 。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 [97]

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 [98]

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 [99] 。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 [100] 。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 [101] 。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 [102]

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 [103] 。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 [103] 。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 [103]

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 [104] 。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 [104]

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 [105]

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 [106] 。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 [106] 。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 [107]

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) [108]
  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 [109]

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 [110] 。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 [112] 。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 [112] 。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 [113]

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 [114] 。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 [115] 。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 [115] 。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) [115] 。 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 [116] 。这也适用于涉及多项专利和标准的情况 [116]

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 [117]

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 [118] 。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 [119] 。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 [119] 。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 [119] 。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 [120] 。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 [121]

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) [122] 。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 [122] 。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 [122]

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” [123]

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 [124] 。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 [124]

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 [125]

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 [126]

 

  • [85] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 93/14。
  • [86] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 13 January 2016, Case No. I-15 U 66/15。
  • [87] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [88] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 66/15。
  • [89] Federal Patent Court, judgment dated 6 October 2017, Case No. 6 Ni 10/15 (EP)。
  • [90] Federal Court of Justice, judgment dated 10 March 2020, Case No. X ZR 44/18。
  • [91] 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)。
  • [92] 同上注, 段 9以下及段59。
  • [93] 同上注, 段 52。
  • [94] 同上注, 段 54。
  • [95] 同上注, 段 56。
  • [96] 同上注, 段 57 及以下。
  • [97] 同上注, 段 58。
  • [98] 同上注, 段 59 及以下。
  • [99] 同上注, 段 61。
  • [100] 同上注, 段 63。
  • [101] 同上注, 段 62。
  • [102] 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。
  • [103] 同上注, 段 64。
  • [104] 同上注, 段 65。
  • [105] 同上注, 段 67 及以下。
  • [106] 同上注, 段 69。
  • [107] 同上注, 段 70。
  • [108] 同上注, 段 71。
  • [109] 同上注, 段 72。
  • [110] 同上注, 段 73 及以下。
  • [111] 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。
  • [112] 同上注, 段 74。
  • [113] 同上注, 段 74 及段 85。
  • [114] 同上注, 段 89。
  • [115] 同上注, 段 85。
  • [116] 同上注, 段 87。
  • [117] 同上注, 段 86 及以下。
  • [118] 同上注, 段 91 及以下。
  • [119] 同上注, 段 92。
  • [120] 同上注, 段 93及以下。
  • [121] 同上注, 段 94。
  • [122] 同上注, 段 83。
  • [123] 同上注, 段 95。
  • [124] 同上注, 段 96。
  • [125] 同上注, 段 98。
  • [126] 同上注, 段 97。

Updated 23 一月 2018

Unwired Planet v Huawei, [2017] EWHC 711 (Pat)

英国法院判决
5 四月 2017 - Case No. HP-2014-000005

A. Facts

The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue (EP (UK) 2 229 744, EP (UK) 2 119 287, EP (UK) 2 485 514, EP (UK) 1 230 818, EP (UK) 1 105 991, EP (UK) 0 989 712) relate to telecommunication network coding and procedures. [127] Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [128] In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents. This summary focuses on the non-technical trial addressed competition law issues, FRAND issues, injunctive relief and damages for past infringements. [129]

In April 2014 the claimant made an open offer to the defendant, a major international smartphone manufacturer, to grant a license in respect of the claimant’s entire global patent portfolio (containing SEPs and non-SEPs). The defendant refused the offer, contending that there was no patent infringement, that the patents were not essential, and that they were invalid. The defendant also argued that the offer was not FRAND and thus did not constitute an abuse of a dominant market position under Art. 102 TFEU. In July 2014 the claimant made a further offer, limited to the claimant’s SEPs. Again, the defendant refused, arguing that the license conditions were not FRAND. [130] In June 2015 both parties made further offers. These offers were the result of directions from the court. The claimant offered a worldwide portfolio license while the defendant wanted to limit the territorial scope to the United Kingdom. [131] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [132]

The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [133] The defendant was not prepared to take a license on FRAND conditions and the claimant was not in breach of competition law. Thus, the court held that a final injunction to restrain patent infringements should be granted. An injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 was granted on 7 June 2017. [134]

B. Court’s Reasoning

1. Market Power

The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [135] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [136] The claimant’s pleaded position was a non-admission of dominance rather than a denial coupled with a positive case to the contrary. It was the view of the court that this was insufficient to rebut the presumption. In particular, the claimant’s argument of countervailing buyer power was unconvincing because it had not been supported by a proper economic analysis. [137]

2. SEP Proprietor’s Licensing Offer

a. FRAND Declaration as Conceptual Basis

The court pointed out that that the FRAND undertaking also applied in the case that the SEP proprietor was not in a dominant position. It held that the FRAND undertaking operated as a practical constraint on a SEP owner’s market power. [138] The ETSI declaration made by the SEP proprietor is also the starting point for determining the FRAND rate. The underlying issue, which is discussed at length by the court, [139] is if such a declaration forms a contract and whether that contract can benefit third parties. The court acknowledged that the legal effect of this declaration, in particular its enforceability, is a controversial issue under French law. [140] However, the court reasoned that the FRAND declaration is an important aspect of technology standardisation. Holders of SEPs are not compelled to give a FRAND declaration. If they do, the undertaking would be enforceable and irrevocable due to public interest. [140]

The court applied a procedural approach to FRAND. It emphasised that FRAND describes not only a set of license terms, but also the process by which a set of terms are agreed. [141] It applies to both the SEP-holder and the implementer/defendant. In particular, this approach allows for starting offers that leave room for negotiation. On the other hand, making extreme offers and taking an uncompromising approach which prejudices fair, reasonable, and non-discriminatory negotiation is not a FRAND approach. [142] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [143]

b. ‘True FRAND Rate’

The court considered that there is only a single set of terms for a given set of circumstances that would meet FRAND conditions (‘true FRAND rate’). [144] This eliminates the so-called Vringo-problem, [145] i.e. if FRAND were a range there would be two different but equally FRAND offers. Thus, if the court would grant or not an injunction, it would be unfair for the alleged infringer or SEP holder respectively. [146]

The court was of the opinion that the true FRAND rate approach does not cause problems under competition law. Theoretically, if only one set of terms is truly FRAND, and if FRAND also represents the line between abusive and non-abusive conduct under Art. 102 TFEU, then every agreed SEP-licence could be at serious risk of being abusive. [147] However, the court took the view that FRAND-compliance and compliance with Art. 102 TFEU are not the same thing (the court pointed out that the CJEU in the Huawei ruling appears to equate an obligation to make a FRAND offer with compliance with Art 102 TFEU).Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154./span> Since Art. 102 TFEU condemns excessive pricing, [149] a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate. [149]

c. Discrimination

The court held that the correct approach is to start from a global rate as a benchmark and to then adjust this rate as appropriate. [150] It distinguished between two concepts of discrimination. First, the ‘general’ concept of non-discrimination describes an overall assessment of FRAND which can be used to derive the benchmark mentioned above. [151] It is based on the intrinsic value of the patent portfolio, but it does not depend on the licensee. The court held that this benchmark should be applied to all licensees seeking the same kind of license. [152]

Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [151] is a distinct concept that could be used to adjust license terms. However, the court held that the FRAND declaration does not introduce such a hard-edged non-discrimination concept. [153] If, contrary to the view taken by the court, the FRAND undertaking did include hard-edged non-discrimination, a licensee could only have the right to a lower rate granted to another licensee (i.e. a specific non-discrimination obligation resulting from the FRAND declaration) if the difference would otherwise distort competition between the two licensees. [152]

d. Territorial Scope of License

The court held that the defendant’s offer that was limited to UK licenses was not FRAND. In the court’s opinion country by country licensing is inefficient for goods such as mobile telecommunications devices that are distributed across borders. [154] It would also be inefficient to negotiate many different licenses and then to keep track of so many different royalty calculations and payments. No rational business would do this, if it could be avoided. [154] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [155] Further, it is common ground that the industry assesses patent families rather than individual patents within the family. Assessing portfolios on a family basis inevitably involved tying a patent in one jurisdiction with a patent in another. [156] Thus, according to the court, a worldwide license would not be contrary to competition law. As willing and reasonable parties would agree on a worldwide licence, the insistence by the defendant on a license which was limited to the UK was not FRAND. [157]

C. Other Important Issues

1. Comparable agreements and reasonable aggregate royalty rate

The court held that for determining the royalty rate, the evidence of the parties would be relevant, including evidence of how negotiations actually work in the industry. [158] Other freely-negotiated license agreements might be used as comparables. [159] This may be compared with a top down approach [160] can also be used in which the rate is set by determining the patentee’s share of relevant SEPs and applying that to the total aggregate royalty for a standard, but this may be more useful as a cross-check. [161] Royalty rates determined by other courts might be useful as persuasive precedents. However, in the eyes of the court, a license rate determined at a binding arbitration does not carry much weight as to what parties are usually paying. [158] License agreements must meet certain criteria to be comparable. [162] First, the licensor is the claimant. Second, the license agreement is recent. However, it is not necessary that the licensee is the defendant or a comparable company because different market participants have different bargaining powers, which is reflected in the negotiations and the resulting royalty rates. [162] Finally the court confirmed that a royalty based on the handset price was appropriate and implied a reasonable aggregate royalty rate of 8.8%of the handset price. The court found that the 8.8% was reasonable, in part, because the aggregate implied by either party’s case was higher (10.4% and 13.3%). [163]

2. Principles derived from Huawei v. ZTE

The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [164] In the eyes of the court, the ‘willingness to conclude a licence on FRAND terms’ refers to a willingness in general. The fact that concrete proposals are also required does not mean it is relevant to ask whether the proposals are actually FRAND or not. If the patentee complies with the procedure as set out by the CJEU, then bringing a claim for injunction is not abusive under Art 102. But even if sufficient notice is given, bringing a claim can constitute an abuse because complying with the procedure does not mean that a patentee can behave with impunity. In other words, there might be other aspects that make the claim abusive. Conversely, bringing such a claim without prior notice will necessarily be abusive.

Significantly, the court held, the legal circumstances of this case differ from the circumstances assumed by the CJEU in a crucial respect. A FRAND undertaking can be effectively enforced irrespective of Art 102. The defendant does not need Art 102 TFEU to have a defence to the injunction claim.
  • [127] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2.
  • [128] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [129] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3.
  • [130] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5.
  • [131] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8.
  • [132] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14.
  • [133] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807.
  • [134] Unwired Planet v Huawei, EWHC 1304 (Pat).
  • [135] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631.
  • [136] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634.
  • [137] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646.
  • [138] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656.
  • [139] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145.
  • [140] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146.
  • [141] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162.
  • [142] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163.
  • [143] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159.
  • [144] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164.
  • [145] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat).
  • [146] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158.
  • [147] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152.
  • [148] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154./span> Since Art. 102 TFEU condemns excessive pricing,Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153. a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate.Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
  • [149] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
  • [150] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176.
  • [151] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177.
  • [152] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503.
  • [153] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501.
  • [154] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544.
  • [155] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534.
  • [156] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546.
  • [157] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572.
  • [158] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171.
  • [159] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
  • [160] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
  • [161] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
  • [162] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175.
  • [163] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476.
  • [164] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744.

Updated 26 一月 2017

Saint Lawrence v Vodafone 2

LG Düsseldorf
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, [165] 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. [166] The court declared the Huawei rules applicable to claims for the recall of products. [167]
      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. [168] 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. [169] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [170]
      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. [171]
      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. [172] 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. [173]
      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. [174] 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. [175] 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. [176]
      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. [177]
      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. [178]
    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. [179] Whether the Intervener satisfied the ECJ criteria was left undecided. [180]
      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. [181] 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. [182] 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. [183]
      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. [184] 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. [185]
      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. [186] 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. [187]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [188]
    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. [189]
    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. [190]
  • [165] 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.
  • [166] Case No. 4a O 73/14, para. 184
  • [167] Case No. 4a O 73/14, para. 187
  • [168] Case No. 4a O 73/14, para. 195 et seq.
  • [169] Case No. 4a O 73/14, para. 208-210
  • [170] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [171] Case No. 4a O 73/14, para. 193
  • [172] Case No. 4a O 73/14, para. 270 et seq.
  • [173] Case No. 4a O 73/14, para. 222 et seq.
  • [174] Case No. 4a O 73/14, para. 225 et seq.
  • [175] 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.
  • [176] 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.
  • [177] Case No. 4a O 73/14, para. 256 et seq.
  • [178] Case No. 4a O 73/14, para. 279 et seq.
  • [179] Case No. 4a O 73/14, para. 214-220
  • [180] Case No. 4a O 73/14, para. 214-220; 278
  • [181] Case No. 4a O 73/14, para. 266
  • [182] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [183] Case No. 4a O 73/14, para. 264.
  • [184] Case No. 4a O 73/14, para. 291 et seq.
  • [185] Case No. 4a O 73/14, para. 278
  • [186] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [187] Case No. 4a O 73/14, para. 304
  • [188] Case No. 4a O 73/14, para. 189
  • [189] Case No. 4a O 73/14, para. 309-313
  • [190] Case No. 4a O 73/14, para. 317 et seq.

Updated 3 二月 2020

Philips v Wiko

OLG Karlsruhe
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 [191] , 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 [192] , 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 [193] .

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 [194] . 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 [195] (Huawei framework or obligations) [196] .

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 [197] . 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’ [197] . 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 [197] .

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 [198] . 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 [199] . 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 [200] .

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 [201] . 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 [201] .

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 [202] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [202] . 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 [202] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [202] .

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 [203] . 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 [204] . 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 [204] . 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 [204] .

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 [205] . 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 [206] . 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 [206] . 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 [206] .

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 [207] .

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 [208] . 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 [208] . Delaying tactics potentially applied by the implementer must be prevented [208] . 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 [209] . 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 [209] .

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 [210] .

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 [211] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [212] .

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 [213] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [213] .

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 [214] .

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 [214] .

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 [214] . 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 [214] . 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 [214] .

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 [214] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [214] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [215] . 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 [216] . 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 [217] .

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 [218] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [219] .

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 [220] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [220] or Article 102 TFEU [221] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [222] . 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 [223] .

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 [224] . 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 [225] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [226] .

  • [191] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
  • [192] 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.
  • [193] Ibid, paras. 37-87.
  • [194] Ibid, para. 88.
  • [195] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
  • [196] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
  • [197] Ibid, para. 107.
  • [198] Ibid, paras. 117 et seqq.
  • [199] Ibid, para. 119.
  • [200] Ibid, paras. 120 et seq.
  • [201] Ibid, para. 120.
  • [202] Ibid, para. 125.
  • [203] Ibid, para. 126.
  • [204] Ibid, para. 127.
  • [205] Ibid, para. 111.
  • [206] Ibid, para. 112.
  • [207] Ibid, paras. 115 and 117.
  • [208] Ibid, para. 115.
  • [209] Ibid, para. 129.
  • [210] Ibid, paras. 131 et seqq.
  • [211] Ibid, paras. 132 et seq.
  • [212] Ibid, para. 135.
  • [213] Ibid, para. 133.
  • [214] Ibid, para. 134.
  • [215] Ibid, paras. 136 et seqq.
  • [216] Ibid, para. 136.
  • [217] Ibid, para. 138.
  • [218] Ibid, para. 131.
  • [219] Ibid, para. 106.
  • [220] Ibid, paras. 157 et seqq.
  • [221] Ibid, paras. 162 et seqq.
  • [222] Ibid, paras. 160 et seq.
  • [223] Ibid, para. 161.
  • [224] Ibid, para. 143.
  • [225] Ibid, para. 144.
  • [226] Ibid, paras. 145 et seqq.

Updated 17 一月 2018

Unwired Planet v Huawei, [2017] EWHC 1304 (Pat)

英国法院判决
7 六月 2017 - Case No. HP-2014-000005

A. Facts and Main Judgment

The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue relate to telecommunication network coding and procedures. In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents and one non-technical trial relating to competition law issues, FRAND issues, injunctive relief and damages for past infringements.Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html In its decision on 5 April 2017 (the ‘main judgment’), the Patents Court (Birrs J) held that two patents were valid and that they had been infringed, and that the claimant was in a dominant position, but had not abused this position. The court stated that a final decision about an injunction to restrain patent infringements should be made separately. A few weeks after the main judgment, a license representing the FRAND terms between the two parties was prepared (the ‘settled license’), but had not yet been entered into. [228] Further, the defendant offered to give an undertaking to the court to enter into the license settled by the Patents Court or any other court. [229]

In its subsequent decision on 7 June 2017 (the case at hand), the parties argued whether the court should grant an injunction order given the existence of the settled license. Other minor issues of the case related to damages, declaratory relief, costs and permission to appeal. [230] The court granted an injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 (the ‘final order’). [231] The injunction order would be discharged if the defendant entered into a FRAND license and it would be stayed pending appeal. The court also declared that the settled license represented the FRAND terms in the given circumstances between the parties and that the defendant had to pay GBP 2.9 million of the claimant’s costs. Permission to appeal was granted to the defendant in respect of three issues and to the claimant in respect of one issue. [231]

B. Court’s Reasoning

1. Injunction

The main issue considered by the court was the interplay between the injunction, the settled license and the undertaking offered by the defendant. Patent EP (UK) 2 229 744 will expire in 2028. The settled license’s expiry date is 31 December 2020, [232] which would put the defendant in a difficult position if it attempts to renegotiate the license while the injunction is still in place. The defendant would even risk being in contempt of court if it continued to sell equipment if there was an argument that the license had come to an end for other reasons (e.g. repudiatory breach of contract). [233] However, the court took the view that it cannot be said that the defendant must be free to sell products if the license has ceased to exist. [232] Similarly, it cannot be said with certainty that the claimant must have an injunction at that date.

Thus, the court considered what the correct form of injunction in respect of a FRAND undertaking should be when a court has settled a license but the defendant has not entered into it (‘FRAND injunction’). [234] The court held that the FRAND injunction should contain a proviso that it will cease to have effect as soon as the defendant enters into the FRAND license. The injunction should also be subject to an express liberty to either party to return to court in the future if the FRAND license ceases to exist or expires while the patent is still valid. [234]

The court also held that despite the court’s discretion as to whether an injunction is granted, an injunction is normally effective, proportionate and dissuasive in IP cases. [235] Although the practical effect of a defendant’s undertaking and an injunction are similar, rights holders usually insist on an injunction. [236] One reason is that it involves a public vindication of the claimant’s rights. [236] As the claimant has been forced to come to court, an offer of undertaking after judgment is usually considered too late. [236] In this case, the defendant had maintained throughout the negotiations and the trial that it was under no obligation to accept a worldwide license. [237] Thus, according to the court, the right thing to do was to grant a FRAND injunction which will be stayed on terms pending appeal.

2. Other Issues

The court held that the issue of damages is closely related to the main issue. [238] If the defendant entered into the settled license, all payments would be covered by the license. If the defendant did not enter into the settled license, an order for damages is required. As a consequence, the court order should be in the same form as the FRAND injunction (stayed pending appeal and ceasing to have effect if the parties enter into the settled license). [238]

The parties also disagreed about the wording of the court declaration regarding the FRAND terms of the settled license. [239] The court dismissed the defendant’s suggestion as too complicated and the claimant’s suggestion as incomprehensive. Instead, the court declaration would be ‘the license annexed to the judgment represents the FRAND terms applicable between the parties in the relevant circumstances’. [240] Further, the court rejected the defendant’s petition to make a declaration that the claimant had not abused its dominant market position. [241] It took the view that the main judgment made a clear finding on this issue in summary paragraph 807(17).

Further, the parties disagreed about the extent of the defendant’s obligation to bear the claimant’s costs. The claimant argued that it should be regarded as the successful party so that the defendant had to pay its costs (GBP 6.4million). [242] The defendant argued the claimant had been clearly wrong regarding the applicable FRAND rate [243] and the appropriate thing would be to make no cost order. The court rejected the idea that there was no overall winner (as argued by the defendant) because the claimant was successful on the issues of the nature of the license and the existence and abuse of market dominance. [244] The ensuing question was whether any deductions were appropriate. [245] The court held that neither party had offered terms that were essentially FRAND. [246] However, the rates offered by the claimant were significantly further away from the end result than the rates offered by the defendant. [246] Thus, the defendant’s costs in relation to the FRAND rate issue were not recoverable by the claimant.

The fifth and final issue was in respect of permission to appeal. The court granted the defendant permission on three grounds: first, the necessity of granting a global license (including the court’s view that there is only one applicable license fee); [247] second, the hard-edged non-discrimination point; [248] and third, the issue of injunctive relief and abuse of market dominance under the CJEU ruling Huawei v. ZTE. [249] Conversely, the claimant was granted permission to appeal on the blended global benchmark issue (using a blended global rate as a benchmark, leading to the question whether another discount for the Chinese market should given). [250]

  • [227] Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html
  • [228] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 2.
  • [229] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 8.
  • [230] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 1.
  • [231] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 70.
  • [232] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 22.
  • [233] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 19.
  • [234] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 20.
  • [235] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 25.
  • [236] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 26.
  • [237] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 29.
  • [238] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 33.
  • [239] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 34.
  • [240] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 36.
  • [241] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 38.
  • [242] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), paras 39-40.
  • [243] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 41.
  • [244] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 44.
  • [245] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 45.
  • [246] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 56.
  • [247] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 170 et seqq.
  • [248] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 177 and 481 et seqq.
  • [249] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 627 et seqq.
  • [250] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 537 et seqq.

Updated 3 十二月 2018

IP Bridge v HTC

曼海姆地区法院
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) [251] . 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 [252] .

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 [253] . The Defendant filed an action for invalidity against the Claimant’s SEP in Germany [253] .

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 [253] . Subsequently, several licensing offers and counter-offers were made by the Claimant and the parent company respectively [253] . 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 [254] . In response, the parent company confirmed that it is willing to obtain a licence, among others, by letter dated 7 September 2016 [255] . 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 [256] .

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 [257] . 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) [257] . This deadline was extended for almost three weeks until 7 May 2018 [257] .

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) [257] .

With the present judgment the Court ruled that the Defendant is liable for damages arising from the infringement of the SEP in suit [258] . The Court also ordered the Defendant to render accounts and to provide relevant information to the Claimant [258] . 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 [259] .


B. Court’s reasoning

The Court held that the products sold by the Defendant in Germany infringe Claimant’s SEP [260] . Thus, the Defendant is obliged to compensate the damages suffered by the Claimant and the previous holder of the patent in suit [258] . 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) [258] .

In the Court’s view, the Defendant cannot raise a defence based on a so-called “patent ambush” against these claims [261] . 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 [262] . 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” [262] . The Court held that the Defendant failed to establish such fact [261] . 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?) [261] .

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 [263] .

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 [264] . The wording of Article 6.1. ETSI IPR Policy establishes a respective assumption [264] . 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 [254] . 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 [254] . 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 [265] .

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 [263] . 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 [263] .

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 [263] . 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 [267] .

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 [268] .

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) [269] .

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 [254] . 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) [254] .

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) [270] .

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) [255] .

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 [255] .

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) [271] . 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 [255] .

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 [272] . Only then, the SEP user’s consequent obligation under the Huawei framework to make a FRAND counter-offer to the SEP holder is triggered [272] . 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 [272] . For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed [272] .

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 [273] . 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 [273] . 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”) [273] . 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 [274] . Otherwise, the initiation of the infringement proceedings shall be considered as abusive in terms of antitrust law [274] . In the present case, the Claimant chose to not ask for a stay in the proceedings, ignoring the Court’s respective indication [274] .


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 [275] . On the other hand, it does not define the ownership of the patent in material legal terms [276] . Nevertheless, the patent registration establishes an assumption of ownership which must be rebutted by the defendant in infringement proceedings based on concrete indications [277] .

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 [278] . As a rule, it must be expected with a sufficient degree of probability that the patent(s) in suit will be invalidated [278] . The Defendant failed convince the Court that this was the case with the SEP in suit [278] .

  • [251] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, page 2 and 23.
  • [252] Ibid, page 23 et seq.
  • [253] Ibid, page 5.
  • [254] Ibid, page 25.
  • [255] Ibid, page 26.
  • [256] Ibid, pages 5 et seq.
  • [257] Ibid, page 6.
  • [258] Ibid, page 19.
  • [259] Ibid,page 23.
  • [260] Ibid, pages 16 et seqq.
  • [261] Ibid, page 20.
  • [262] Ibid, page 21.
  • [263] Ibid, page 22.
  • [264] Ibid, page 24.
  • [265] Ibid, pages 24 et seq.
  • [266] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13.
  • [267] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, pages 22.
  • [268] Ibid,pages 23 and 25.
  • [269] Ibid, page 23.
  • [270] Ibid, pages 23 and 25 et seq.
  • [271] Ibid, pages 26 et seqq.
  • [272] Ibid, page 27.
  • [273] Ibid, page 28.
  • [274] Ibid, page 29.
  • [275] Ibid, page 10.
  • [276] Ibid, pages 10 et seq.
  • [277] Ibid, page 11.
  • [278] Ibid, page 30.

Updated 3 十二月 2018

District Court, LG Düsseldorf

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) [279] . 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 [280] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [281] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [281] .

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) [282] . 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 [283] . 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 [284] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [284] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [285] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [283] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [286] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [287] , it found that the Claimant cannot enforce its patent rights for the time being [288] , 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) [286] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [290] .

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 [291] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [292] . 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 [293] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [294] .

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 [295] . 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 [295] . 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 [295] .

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 [295] . 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) [295] . 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 [295] .

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 [296] .

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 [297] . 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 [298] .

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 [299] .

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 [300] . 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 [300] .

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 [301] . 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 [301] . 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 [301] .

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) [302] . 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) [302] . 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 [302] .

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 [303] .

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 [304] .

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 [305] . Given the circumstances of the specific case, even an implicit behaviour can suffice [305] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [306] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [306] . 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 [306] . 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 [306] .

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 [307] . 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 [308] .

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 [309] .

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 [310] . 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 [283] .

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 [311] . 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 [312] .

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 [313] . 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 [313] . 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 [313] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [314] . 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 [315] .

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 [285] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [316] .

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 [317] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [318] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [319] .

First, the terms did not adequately consider the effects of patent exhaustion [320] . As a rule, FRAND requires licensing offers to contain respective provisions [321] . 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 [322] .

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 [323] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [324] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [325] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [326] . 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 [326] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [327] .

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 [317] . 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) [328] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [329] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [329] . 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 [330] .

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 [331] . 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 [332] .

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 [333] . 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 [334] . 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 [335] .

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 [336] . 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 [336] . 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) [336] . 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 [336] . 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 [337] .

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 [338] . 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 [339] . 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 [340] .

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 [341] .


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 [342] .

  • [279] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
  • [280] Ibid, para. 13.
  • [281] Ibid, para. 12.
  • [282] Ibid, paras. 14 and 211.
  • [283] Ibid, para. 15.
  • [284] Ibid, para. 16.
  • [285] Ibid, para. 236.
  • [286] Ibid, paras. 140 and 313 et seqq.
  • [287] Ibid, paras. 114 et seqq.
  • [288] Ibid, paras. 60 and 140.
  • [289] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [290] Ibid, para. 142.
  • [291] Ibid, para. 148.
  • [292] Ibid, paras. 153 and 146.
  • [293] Ibid, paras. 159 - 181.
  • [294] Ibid, para. 158.
  • [295] Ibid, para. 147.
  • [296] Ibid, paras. 183 et seqq.
  • [297] Ibid, para. 191.
  • [298] Ibid, para. 188.
  • [299] Ibid, paras. 195 et seqq.
  • [300] Ibid, para. 199.
  • [301] Ibid, para. 198.
  • [302] Ibid, para. 200.
  • [303] Ibid, para. 203.
  • [304] Ibid, para. 205.
  • [305] Ibid, para. 208.
  • [306] Ibid, para. 207.
  • [307] Ibid, para. 210.
  • [308] Ibid, para. 212.
  • [309] Ibid, paras. 215 et seq.
  • [310] Ibid, para. 220.
  • [311] Ibid, paras. 222 et seqq.
  • [312] Ibid, para. 225.
  • [313] Ibid, para. 233.
  • [314] Ibid, para. 228.
  • [315] Ibid, para. 230.
  • [316] Ibid, para. 237.
  • [317] Ibid. para. 241.
  • [318] Ibid, para. 242.
  • [319] Ibid, paras. 283 et seqq.
  • [320] Ibid, para. 285.
  • [321] Ibid, para. 288.
  • [322] Ibid, paras. 292 et seq.
  • [323] Ibid, paras. 298 et seqq.
  • [324] Ibid, para. 301.
  • [325] Ibid, para. 306.
  • [326] Ibid, para. 311.
  • [327] Ibid, para. 271.
  • [328] Ibid, para. 250.
  • [329] Ibid, para. 248.
  • [330] Ibid, para. 267.
  • [331] Ibid, paras. 256 and 259 et seq.
  • [332] Ibid, para. 262.
  • [333] bid, paras. 258 and 264.
  • [334] Ibid, paras. 263 and 265.
  • [335] Ibid, para. 265.
  • [336] Ibid, para. 273.
  • [337] Ibid, para. 274.
  • [338] Ibid, para. 276.
  • [339] Ibid, para. 277.
  • [340] Ibid, para. 281.
  • [341] Ibid, para. 315.
  • [342] Ibid, paras. 75 et seq.

Updated 6 六月 2019

飞利浦诉华硕

荷兰法院判决
7 五月 2019 - Case No. 200.221.250/01

A. 事实

本案涉及飞利浦——一家消费电子产品制造商,其同时持有一组被宣告为对实施由欧洲电信标准协会(ETSI)所发展的数项标准而言潜在必不可少的专利组合(以下称“标准必要专利”或“SEP”),与华硕——一家生产例如笔记本电脑,平板电脑和智能手机等无线设备的制造商间的纠纷。

飞利浦早先已向欧洲电信标准协会承诺,其将以公平、合理且无歧视(FRAND)的条款向标准实施人提供其所持有的标准必要专利。特别是于1998年时,飞利浦向欧洲电信标准协会提交了一项概括性的承诺,承诺其将依照FRAND条款向实施人提供其所持有的标准必要专利。

飞利浦于2013年时将其覆盖3G-UMTS和4G-LTE无线电信标准的专利组合的持有状态向华硕告知,并对华硕提出了许可要约。在后续双方之间进行的会议中,飞利浦进一步向华硕提供了有关其专利的更多详细信息,并且提供了权利要求对照表与其专利组合中各项专利与该标准之间的对应关系的相关信息。飞利浦还向华硕提交了其许可协议模板,其中包括飞利浦许可计划中许可费率的标准以及其相应的计算方式。

双方谈判于2015年间破裂,飞利浦于是基于其所持有的包含欧盟专利1 623 511(以下称“EP 511专利”)等在内的多项专利,于英国、法国及德国等欧盟司法管辖区内提起了侵权诉讼。飞利浦曾就EP 511专利作出声明,称此专利对3G-UMTS和4G-LTE标准而言具有潜在的标准必要性。英格兰暨威尔士高等法院并作出了先行裁决,确认了EP 511专利的有效性。

在荷兰,飞利浦于海牙地区法院(以下称“地区法院”)向华硕提起诉讼,请求包含核发禁令在内的多项主张。地区法院驳回了飞利浦针对EP 511专利核发禁令的请求 [343] 。飞利浦于是向海牙上诉法院(以下称“上诉法院”)提起上诉。

根据当前判决,上诉法院确认了EP 511的有效性和标准必要性,驳回了华硕基于《欧洲联盟运作条约》第102条所提出的FRAND抗辩,并就华硕相关产品侵害涉案专利权的行为对其发出了禁令 [344]


B. 法院的论理

上诉法院驳回了华硕的专利无效性抗辩,确认了EP 511专利新颖性及创造性的存在 [345] 。此外,上诉法院认为该专利具备标准必要性,并且遭受侵权 [346]

上诉法院继续审查了华硕所提出的主张,即飞利浦提起侵权诉讼要求禁令救济的行为,违反了其对欧洲电信标准协会FRAND承诺的合同义务,并且因其行为未能符合欧洲联盟法院于华为诉中兴案裁决中的要求(即“华为框架义务”)而违反了《欧洲联盟运作条约》第102条 [347] 。特别是,华硕主张飞利浦(a)没有按照欧洲电信标准协会知识产权政策的要求适当且及时地揭露关于EP 511专利的信息,并且(b)飞利浦并未遵守华为框架的要求,因其并没有针对其所提出的许可要约条款为何符合FRAND进行说明。

关于前项主张(a),上诉法院认为,飞利浦在EP 511专利获得核准的两年后才对其潜在标准必要性进行声明的行为,并未违反欧洲电信标准协会知识产权政策第4.1条所要求的对标准必要专利进行“及时披露”的合同义务。 从欧洲电信标准协会规范披露义务的一般目的出发,上诉法院认为,此义务存在的目的并非如华硕所主张的那样是为了赋予欧洲电信标准协会的参与者自由选择采纳成本最低的技术方案的权利,因为欧洲电信标准协会于发展各项标准时均是力求将最佳可行技术纳入标准的 [348] 。相反的,此项披露义务存在的目的其实在于降低标准实施人事后无法取得标准必要专利的风险 [349]

尽管如此,上诉法院认为,飞利浦所作出的概括性承诺已经足以履行其于欧洲电信标准协会知识产权政策下所应承担的义务。由此角度出发,上诉法院驳回了华硕所提出的关于飞利浦针对某些特定标准必要专利的延迟声明可能会导致过度宣告的论点,相反地,上诉法院认为,过早的披露才更有可能将事实上不具备标准必要性的专利错误地纳入欧洲电信标准协会的标准中 [350] 。此外,上诉法院指出,飞利浦所作出的概括性承诺并未违反《欧洲联盟运作条约》第102条的规定,因为根据欧洲联盟委员会所发行的《关于横向限制的指南》指出,概括性的承诺也是一种在欧盟竞争法下可以被接受的对标准必要专利进行宣告的形式 [351]

在驳回了华硕第一个关于FRAND抗辩的主张后,上诉法院评估了双方在谈判过程中对华为框架要求的遵循状况。作为一个初步的观点,上诉法院指出,欧洲联盟法院对华为案所做出的判决并没有创造出一套一旦专利持有人没有逐一遵守就会自动构成对《欧洲联盟运作条约》第102条违反的严格规范 [352] 。因此,对案件的具体情况以及当事各方的行为进行全面性的评估是有必要的。

接下来,上诉法院审查了飞利浦对华为框架中第一个要求——对侵权人进行适当通知——的遵守情况。上诉法院认为,飞利浦很显然已经践行了其对华硕进行通知的义务,因为根据该案各项记录显示,飞利浦在谈判过程中已经对华硕提交了可能涉及侵权的各项专利清单,说明了这些专利对哪些标准而言具备标准必要性,并且表达了其按照FRAND条款进行许可的意愿 [353] 。此外,在接下来的技术协商中,飞利浦更进一步提供了有关其专利组合和许可计划的多项技术性细节,其中包括了权利要求对照表以及其授与许可的标准费率 [354] 。然而,华硕却未能表现出其按照FRAND条款取得许可的意愿。上诉法院发现,双方的谈判总是由飞利浦发起,而华硕在这些谈判中并未由有能力对飞利浦的专利组合进行评估的技术专家代表进行谈判 [355] 。华硕在谈判中提出的技术性问题只是为了拖延谈判进行的借口,换句话说,正如上诉法院所称的那样,是“一种也被称为“反向专利挟持“的行为” [356]

尽管上诉法院认为截至目前为止华硕已经违反了其在华为框架下的义务,因此飞利浦有权寻求禁令救济,法院仍然继续就华为框架中其他义务的遵循状况进行进一步的讨论。上诉法院认为,飞利浦所提出的许可协议模板完全符合欧洲联盟法院的要求,因为它非常具体,并且清楚地解释了建议的费率以及该费率是如何计算得出的 [357] 。此外,上诉法院认为,华硕在飞利浦于德国提起诉讼后才提出许可反要约的行为本身并不会改变飞利浦已经践行了华为框架义务的结论,因此飞利浦有权寻求禁令救济 [358] 。最后,法院拒绝了华硕检阅飞利浦所签署的其他类似许可协议,以评估飞利浦是否遵守FRAND的要求。法院认为,无论是根据欧洲电信标准协会知识产权政策,或者《欧洲联盟运作条约》第102条,又或者是华为框架,均未对此类请求提供依据 [359]

  • [343] Koninklijke Philips N.V. v. Asustek Computers INC, District Court of the Hague, 2017, Case No. C 09 512839 /HA ZA 16-712。
  • [344] Koninklijke Philips N.V. v. Asustek Computers INC, Court of Appeal of The Hague, judgment 7 May 2019, dated Case No. 200.221.250/01。
  • [345] 同上注, 段4.63, 4.68, 4.75, 4.80, 4.82, 4.93, 4.100, 及 4.117。
  • [346] 同上注, 段4.118及以下。
  • [347] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case-No. C-170/13。
  • [348] Koninklijke Philips N.V. v. Asustek Computers INC, Court of Appeal of The Hague, judgment 7 May 2019, dated Case No. 200.221.250/01, 段4.153及以下。
  • [349] 同上注, 段4.155及4.157。
  • [350] 同上注, 段 4.159。
  • [351] 同上注, 段 4.164。
  • [352] 同上注, 段 4.171。
  • [353] 同上注, 段 4.172。
  • [354] 同上注。
  • [355] 同上注, 段4.172-4.179。
  • [356] 同上注, 段 4.179。
  • [357] 同上注, 段 4.183。
  • [358] 同上注, 段 4.185。
  • [359] 同上注, 段4.202及以下。

Updated 1 十一月 2017

Unwired Planet v Huawei, [2017] EWHC 711 (Pat) 2

英国法院判决
4 五月 2017 - Case No. HP-2014-000005

  1. Facts
    The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue (EP (UK) 2 229 744, EP (UK) 2 119 287, EP (UK) 2 485 514, EP (UK) 1 230 818, EP (UK) 1 105 991, EP (UK) 0 989 712) relate to telecommunication network coding and procedures [360] . Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [361] In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents. This summary focuses on the non-technical trial addressed competition law issues, FRAND issues, injunctive relief and damages for past infringements. [362]
    In April 2014 the claimant made an open offer to the defendant, a major international smartphone manufacturer, to grant a license in respect of the claimant’s entire global patent portfolio (containing SEPs and non-SEPs). The defendant refused the offer, contending that there was no patent infringement, that the patents were not essential, and that they were invalid. The defendant also argued that the offer was not FRAND and thus did not constitute an abuse of a dominant market position under Art. 102 TFEU. In July 2014 the claimant made a further offer, limited to the claimant’s SEPs. Again, the defendant refused, arguing that the license conditions were not FRAND. [363] In June 2015 both parties made further offers. These offers were the result of directions from the court. The claimant offered a worldwide portfolio license while the defendant wanted to limit the territorial scope to the United Kingdom. [364] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [365]
    The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [366] The defendant was not prepared to take a license on FRAND conditions and the claimant was not in breach of competition law. Thus, the court held that a final injunction to restrain patent infringements should be granted. An injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 was granted on 7 June 2017. [367]
  2. Court’s reasoning
    1. Market power
      The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [368] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [369] The claimant’s pleaded position was a non-admission of dominance rather than a denial coupled with a positive case to the contrary. It was the view of the court that this was insufficient to rebut the presumption. In particular, the claimant’s argument of countervailing buyer power was unconvincing because it had not been supported by a proper economic analysis. [370]
    2. SEP Proprietor’s Licensing Offer
      1. FRAND Declaration as Conceptual Basis
        The court pointed out that that the FRAND undertaking also applied in the case that the SEP proprietor was not in a dominant position. It held that the FRAND undertaking operated as a practical constraint on a SEP owner’s market power. [371] The ETSI declaration made by the SEP proprietor is also the starting point for determining the FRAND rate. The underlying issue, which is discussed at length by the court, [372] is if such a declaration forms a contract and whether that contract can benefit third parties. The court acknowledged that the legal effect of this declaration, in particular its enforceability, is a controversial issue under French law. [373] However, the court reasoned that the FRAND declaration is an important aspect of technology standardisation. Holders of SEPs are not compelled to give a FRAND declaration. If they do, the undertaking would be enforceable and irrevocable due to public interest. [373]
        The court applied a procedural approach to FRAND. It emphasised that FRAND describes not only a set of license terms, but also the process by which a set of terms are agreed. [374] It applies to both the SEP-holder and the implementer/defendant. In particular, this approach allows for starting offers that leave room for negotiation. On the other hand, making extreme offers and taking an uncompromising approach which prejudices fair, reasonable, and non-discriminatory negotiation is not a FRAND approach. [375] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [376]
      2. ‘True FRAND Rate’
        The court considered that there is only a single set of terms for a given set of circumstances that would meet FRAND conditions (‘true FRAND rate’). [377] This eliminates the so-called Vringo-problem, [378] i.e. if FRAND were a range there would be two different but equally FRAND offers. Thus, if the court would grant or not an injunction, it would be unfair for the alleged infringer or SEP holder respectively. [379]
        The court was of the opinion that the true FRAND rate approach does not cause problems under competition law. Theoretically, if only one set of terms is truly FRAND, and if FRAND also represents the line between abusive and non-abusive conduct under Art. 102 TFEU, then every agreed SEP-licence could be at serious risk of being abusive. [380] However, the court took the view that FRAND-compliance and compliance with Art. 102 TFEU are not the same thing (the court pointed out that the CJEU in the Huawei ruling appears to equate an obligation to make a FRAND offer with compliance with Art 102 TFEU). [381] Since Art. 102 TFEU condemns excessive pricing, [382] a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate. [382]
      3. Discrimination
        The court held that the correct approach is to start from a global rate as a benchmark and to then adjust this rate as appropriate. [383] It distinguished between two concepts of discrimination. First, the ‘general’ concept of non-discrimination describes an overall assessment of FRAND which can be used to derive the benchmark mentioned above. [384] It is based on the intrinsic value of the patent portfolio, but it does not depend on the licensee. The court held that this benchmark should be applied to all licensees seeking the same kind of license. [385]
        Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [384] is a distinct concept that could be used to adjust license terms. However, the court held that the FRAND declaration does not introduce such a hard-edged non-discrimination concept. [386] If, contrary to the view taken by the court, the FRAND undertaking did include hard-edged non-discrimination, a licensee could only have the right to a lower rate granted to another licensee (i.e. a specific non-discrimination obligation resulting from the FRAND declaration) if the difference would otherwise distort competition between the two licensees. [385]
      4. Territorial Scope of License
        The court held that the defendant’s offer that was limited to UK licenses was not FRAND. In the court’s opinion country by country licensing is inefficient for goods such as mobile telecommunications devices that are distributed across borders. [387] It would also be inefficient to negotiate many different licenses and then to keep track of so many different royalty calculations and payments. No rational business would do this, if it could be avoided. [387] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [388] Further, it is common ground that the industry assesses patent families rather than individual patents within the family. Assessing portfolios on a family basis inevitably involved tying a patent in one jurisdiction with a patent in another. [389] Thus, according to the court, a worldwide license would not be contrary to competition law. As willing and reasonable parties would agree on a worldwide licence, the insistence by the defendant on a license which was limited to the UK was not FRAND. [390]
  3. Court’s reasoning
    1. Comparable agreements and reasonable aggregate royalty rate
      The court held that for determining the royalty rate, the evidence of the parties would be relevant, including evidence of how negotiations actually work in the industry. [391] Other freely-negotiated license agreements might be used as comparables. [392] This may be compared with a top down approach [393] can also be used in which the rate is set by determining the patentee’s share of relevant SEPs and applying that to the total aggregate royalty for a standard, but this may be more useful as a cross-check. [394] Royalty rates determined by other courts might be useful as persuasive precedents. However, in the eyes of the court, a license rate determined at a binding arbitration does not carry much weight as to what parties are usually paying. [391] License agreements must meet certain criteria to be comparable. [395] First, the licensor is the claimant. Second, the license agreement is recent. However, it is not necessary that the licensee is the defendant or a comparable company because different market participants have different bargaining powers, which is reflected in the negotiations and the resulting royalty rates. [395] Finally the court confirmed that a royalty based on the handset price was appropriate and implied a reasonable aggregate royalty rate of 8.8%of the handset price. The court found that the 8.8% was reasonable, in part, because the aggregate implied by either party’s case was higher (10.4% and 13.3%). [396]
    2. Principles derived from Huawei v. ZTE
      The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [397] In the eyes of the court, the ‘willingness to conclude a licence on FRAND terms’ refers to a willingness in general. The fact that concrete proposals are also required does not mean it is relevant to ask whether the proposals are actually FRAND or not. If the patentee complies with the procedure as set out by the CJEU, then bringing a claim for injunction is not abusive under Art 102. But even if sufficient notice is given, bringing a claim can constitute an abuse because complying with the procedure does not mean that a patentee can behave with impunity. In other words, there might be other aspects that make the claim abusive. Conversely, bringing such a claim without prior notice will necessarily be abusive. Significantly, the court held, the legal circumstances of this case differ from the circumstances assumed by the CJEU in a crucial respect. A FRAND undertaking can be effectively enforced irrespective of Art 102. The defendant does not need Art 102 TFEU to have a defence to the injunction claim.
  • [360] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2
  • [361] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [362] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3
  • [363] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5
  • [364] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8
  • [365] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14
  • [366] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807
  • [367] Unwired Planet v Huawei, EWHC 1304 (Pat)
  • [368] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631
  • [369] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634
  • [370] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646
  • [371] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656
  • [372] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145
  • [373] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146
  • [374] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162
  • [375] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163
  • [376] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159
  • [377] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164
  • [378] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat)
  • [379] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158
  • [380] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152
  • [381] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154
  • [382] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153
  • [383] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176
  • [384] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177
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Updated 20 十月 2020

西斯维尔诉Wiko

曼海姆地区法院
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 [398] 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 [399] 。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 [400]

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 [401] 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 [402] 。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 [403] 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 [404] ——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 [404] 。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 [404]

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 [405] 以及海牙上诉法院在飞利浦诉华硕案 [406] 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 [407] ,并且情况是否如此则需要视个案具体情况进行个别评估 [408]

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 [409] 。通知的详细程度适当与否则应根据具体个案情况判定 [409] 。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 [409] 。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 [409] 。。

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 [410]

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 [411] 。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 [412] 。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 [411] ,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 [405]

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 [413] 。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 [414] 。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 [415]

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 [416] 。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 [416] 。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 [416]

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 [417] 。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 [417]

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 [418]

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” [418]

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 [418] 。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 [418] 。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) [418] 。。

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 [415]

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” [415] 。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 [415]

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 [415]

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 [419] 。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 [419] 。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 [420]

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 [421] 。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 [421]

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 [422] 。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 [423] 。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 [423]

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 [420] 。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 [420] 。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 [420] 。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 [420] 。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 [420] 。。

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 [424] 。 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) [420] 。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 [404] 。。

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 [400] 。在法院看来,Wiko采用了拖延战术 [400] 。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 [424] 。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 [424]

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 [425]

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 [425]

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 [426] 。 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 [426]

  • [398] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16。
  • [399] 同上注, 页 17-31。
  • [400] 同上注, 页 46。
  • [401] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13。
  • [402] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 42。
  • [403] 同上注, 页 43 及 页 51 及以下。
  • [404] 同上注, 页 42。
  • [405] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, 段 282。
  • [406] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01。
  • [407] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 44。
  • [408] 同上注, 页 44。
  • [409] 同上注, 页 37。
  • [410] 同上注, 页47 及 53。
  • [411] 同上注, 页 38。
  • [412] 同上注, 页 37 及以下。
  • [413] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 39。
  • [414] 同上注, 页 39。
  • [415] 同上注, 页 40。
  • [416] 同上注, 页 53。
  • [417] 同上注, 页 54。
  • [418] 同上注, 页 55。
  • [419] 同上注, 页 40 及页 49。
  • [420] 同上注, 页 41。
  • [421] 同上注, 页 49。
  • [422] 同上注, 页 50。
  • [423] 同上注, 页 51。
  • [424] 同上注, 页 47。
  • [425] 同上注, 页 35。
  • [426] 同上注, 页 35 及以下。

Updated 12 三月 2019

Fraunhofer-Gesellschaft (MPEG-LA) v ZTE

LG Düsseldorf
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) [427] . 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) [428] .

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 [429] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [430] . It has signed licensing agreements with approx. 1,400 implementers [430] .

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) [431] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [432] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [433] .

In 2012, the parent company acquired patents included in the MPEG LA pool [428] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [434] , 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 [435] .

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 [436] . 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 [437] . 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 [438] .

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 [439] . 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 [440] (Huawei obligations or framework) with respect to dominant undertakings [441] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [442] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [443] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [443] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [444] . A dominant market position is given, when the use of the SEP is required for entering the market [444] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [444] .

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 [445] .

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 [446] . 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) [447] . 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 [448] .

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 [449] . 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 [450] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [451] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [452] . 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 [453] . 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 [454] . 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 [455] .

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 [456] .

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 [457] .

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 [458] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [458] . 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) [459] . 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 [460] . 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 [461] . 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 [462] .

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 [463] . 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 [464] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [464] . 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 [464] . The respective test is, however, subject to strict conditions [464] .

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) [465] . 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) [466] , 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 [467] .

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 [468] .

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 [469] . The implementer is not required to refer to a specific licensing agreement [469] .

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 [470] .

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 [471] .

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 [472] . 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 [473] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [474] . 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 [475] . 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 [476] .

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 [477] . 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 [478] .

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 [479] . 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) [480] . 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 [480] . 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 [480] . 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 [481] .

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 [482] . 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 [482] . 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 [483] .

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 [484] . 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 [484] . 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 [484] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [484] .

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 [485] . 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 [485] . 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 [486] . 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 [486] .

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 [487] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [488] . 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 [489] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [490] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [491] . 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 [491] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [492] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [493] . 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 [494] . 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 [495] .

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 [496] .

  • [427] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
  • [428] Ibid, para. 58
  • [429] Ibid, para. 57
  • [430] Ibid, para. 59
  • [431] Ibid, paras. 61 et seqq. and 340
  • [432] Ibid, para. 65
  • [433] Ibid, para. 66
  • [434] Ibid, para. 73
  • [435] Ibid, para. 42
  • [436] bid, para. 74
  • [437] Ibid, paras. 75 et seq
  • [438] Ibid, para. 75
  • [439] Ibid, paras. 127 – 254
  • [440] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
  • [441] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
  • [442] Ibid, para. 283 and paras. 291 et seqq
  • [443] Ibid, para. 286
  • [444] Ibid, para. 287
  • [445] Ibid, paras. 291 et seqq
  • [446] Ibid, para. 296
  • [447] Ibid, para. 300
  • [448] Ibid, para. 302
  • [449] Ibid, para. 308
  • [450] 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
  • [451] Ibid, para. 305
  • [452] Ibid, paras. 306 et seqq
  • [453] Ibid, para. 310
  • [454] Ibid, para. 311
  • [455] Ibid, para. 312
  • [456] Ibid, para. 421
  • [457] Ibid, para. 314
  • [458] Ibid, para. 320
  • [459] Ibid, para. 318
  • [460] Ibid, para. 329
  • [461] Ibid, paras. 336 et seq
  • [462] Ibid, para. 338
  • [463] Ibid, para. 198
  • [464] Ibid, para. 315
  • [465] Ibid, paras. 340 et seq
  • [466] Ibid, paras. 342 et seqq
  • [467] Ibid, para. 344
  • [468] Ibid, para. 346
  • [469] Ibid, para. 348
  • [470] Ibid, para. 352
  • [471] Ibid, para. 367
  • [472] Ibid, para. 369
  • [473] Ibid, para. 370
  • [474] Ibid, para. 378
  • [475] Ibid, para. 371
  • [476] Ibid, para. 374
  • [477] Ibid, para. 376
  • [478] Ibid, para. 377
  • [479] Ibid, para. 380
  • [480] Ibid, para. 381
  • [481] Ibid, para. 386
  • [482] Ibid, para. 382
  • [483] Ibid, para. 387
  • [484] Ibid, para. 391
  • [485] Ibid, para. 392
  • [486] Ibid, para. 393
  • [487] Ibid, para. 397
  • [488] Ibid, para. 398
  • [489] Ibid, para. 399
  • [490] Ibid, para. 402
  • [491] Ibid, para. 404
  • [492] Ibid, para. 410
  • [493] Ibid, para. 413
  • [494] Ibid, para. 416
  • [495] Ibid, para. 417
  • [496] Ibid, para. 411

Updated 9 十一月 2020

诺基亚诉戴姆勒

曼海姆地区法院
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 [497] (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 [498] 。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 [499] 。 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”) [500]

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 [501]

 

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 [502] 。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 [502]

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 [503] 。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 [504] 。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 [504] 。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 [505]

 

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 [506] 。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 [507] [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 [506] 。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 [506] 。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) [506] 。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 [508]

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 [509] 。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 [510]

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) [511] 。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 [511]

 

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 [512]

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) [513] 。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 [514] 。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 [513]

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 [513] 。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 [513]

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 [515] 。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 [516]

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 [517] 。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 [518]

 

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 [519]

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 [520] 。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 [520]

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 [521] 。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“ [521] 。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 [522] 。法院指出,有数种手段可以确保这种情况不会发生 [522]

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 [522] 。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 [522] 。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 [522]

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 [523] 。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 [523]

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 [524] 。 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 [525] 。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 [526] 。连网功能确保了创造此一价值的机会 [527] 。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 [528]

 

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 [529]

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 [530] 。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 [530] 。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” [530]

《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 [531]

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 [532] 。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 [533] 。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 [534] 。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 [535]

 

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 [536]

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 [537] 。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 [537] 。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 [537]

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 [538] 。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 [539] 。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 [539]

 

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 [540]

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 [541] 。而在当前诉讼中情况并非如此 [542]

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 [543] 。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 [543]
 

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 [544] 。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 [545]
 

  • [497] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19。
  • [498] 同上注, 段 49-136。
  • [499] 同上注, 段 138。
  • [500] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [501] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19, 段 144。
  • [502] 同上注, 段 146。
  • [503] 同上注, 段 147。
  • [504] 同上注, 段 148。
  • [505] 同上注, 段 149。
  • [506] 同上注, 段 152。
  • [507] 同上注, 段 151-156。
  • [508] 同上注, 段 248。
  • [509] 同上注, 段 153 及以下。
  • [510] 同上注, 段 154。
  • [511] 同上注, 段 155。
  • [512] 同上注, 段 157-231。
  • [513] 同上注, 段 158。
  • [514] 同上注, 段 159。
  • [515] 同上注, 段 161。
  • [516] 同上注, 段 197-199。
  • [517] 同上注, 段 157, 160 及 162-164。
  • [518] 同上注, 段 160 及 165-168。
  • [519] 同上注, 段 169。
  • [520] 同上注, 段 170。
  • [521] 同上注, 段 171。
  • [522] 同上注, 段 172。
  • [523] 同上注, 段 173。
  • [524] 同上注, 段 174 及以下。
  • [525] 同上注, 段 174。
  • [526] 同上注, 段 177。
  • [527] 同上注, 段 180。
  • [528] 同上注, 段 187 及以下。
  • [529] 同上注, 段 201-212。
  • [530] 同上注, 段 202。
  • [531] 同上注, 段 203。
  • [532] 同上注, 段 205。
  • [533] 同上注, 段 210。
  • [534] 同上注, 段 213。
  • [535] 同上注, 段 215。
  • [536] 同上注, 段 216 及以下。
  • [537] 同上注, 段 217。
  • [538] 同上注, 段 218。
  • [539] 同上注, 段 230。
  • [540] 同上注, 段 232 及以下。
  • [541] 同上注, 段 234, 236 及以下。
  • [542] 同上注, 段 240 及以下。
  • [543] 同上注, 段 239。
  • [544] 同上注, 段 253 及 291。
  • [545] 同上注, 段 291。

Updated 6 六月 2017

OLG Düsseldorf 2

OLG Düsseldorf
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. [546] 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). [546] 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. [546] 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. [547] The Intervener does not join the proceedings as a party, but merely in support of one of the parties. [548] 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. [549]

    Notwithstanding the above, under reference to the “Umweltengel für Tragetaschen” judgement of the German Federal Supreme Court (Bundesgerichtshof) [550] 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. [551] 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. [551]

    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.
  • [546] Judgement dated 14th December 2016, para. 1
  • [547] Judgement dated 14th December 2016, para. 2
  • [548] Judgement dated 14th December 2016, para. 2
  • [549] Judgement dated 14th December 2016, para. 3
  • [550] Bundesgerichtshof, Decision dated 19th February 2014, Case No. I ZR 230/12
  • [551] Judgement dated 14th December 2016, para. 5

Updated 30 十月 2018

Unwired Planet v Huawei, UK Court of Appeal

英国法院判决
23 十月 2018 - Case No. A3/2017/1784, [2018] EWCA Civ 2344

A. Facts

The Claimant, Unwired Planet International Limited, holds a significant portfolio of patents which are essential for the implementation of the 2G/GSM, 3G/UMTS and 4G/LTE wireless telecommunications standards (Standard Essential Patents, or SEPs). The Defendants, Huawei Technologies Co. Ltd. and Huawei Technologies (UK) Co. Ltd., manufacture and sell mobile devices complying with the above standards worldwide.

Starting in September 2013, the Claimant contacted the Defendants several times, requesting the latter to engage in discussions for a licence regarding its SEP portfolio. [552] In March 2014, the Claimant sued the Defendants as well as Samsung and Google for infringement of five of its UK SEPs before the UK High Court of Justice (High Court). [553] The Claimant also initiated parallel infringement proceedings against the Defendants in Germany. [554]

The High Court conducted three technical trials first, focusing on the validity and essentiality of four of the SEPs in suit. [555] By April 2016, these trials were completed; the High Court held that two of the SEPs in suit were both valid and essential, whereas two other patents were found to be invalid. [555] The parties agreed to postpone further technical trials indefinitely. [555]

In July 2016, Samsung took a licence from the Claimant covering, among other, the SEPs in suit. [556] The Claimant also settled the infringement proceedings with Google. [557]

In late 2016, the trial concerned with questions regarding to the licensing of the SEPs in suit commenced between the Claimant and the Defendants. Over the course of these proceedings the parties made licensing offers to the each other. However, they failed to reach an agreement. The Defendants indicated they were willing to take a licence under Claimant’s UK patent portfolio, whereas the Claimant contended that it was entitled to insist upon a worldwide licence. [558]

In April 2017, the High Court granted an UK injunction against the Defendant, until such time as it entered into a worldwide licensing agreement with the Claimant on the specific rates, which the court determined to be Fair, Reasonable and Non-Discriminatory (FRAND) [559] in accordance with the undertaking given by the Claimant towards the European Telecommunications Standards Institute (ETSI). [560] Pending appeal, the High Court stayed the injunction. [561]

Shortly after the High Court delivered its decision, the Defendants began proceedings against the Claimant in China, which are still pending. [562]

With the present judgment, the UK Court of Appeal dismissed the Defendants’ appeal against the decision of the High Court. [563]


B. Court’s reasoning

The Defendants appealed the decision of the High Court on the following three grounds:

1. The High Court’s finding that only a worldwide licence was FRAND is erroneous; the imposition of such a licence on terms set by this court based on a national finding of infringement of UK patents is wrong in principle. [564]

2. The offer imposed to the Defendants by the High Court is discriminatory in violation of Claimant’s FRAND undertaking, since the rates offered are higher than the rates reflected in the licence granted by the Claimant to Samsung. [565]

3. The Claimant is not entitled to injunctive relief; by bringing the infringement proceedings against the Defendants, without meeting the requirements established by the Court of Justice of the European Union (“CJEU”) in the matter Huawei v ZTE [566] (Huawei judgment) before, the Claimant abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the European Union (“TFEU”). [567]

Notably, the High Court’s determination of the rates which apply to the worldwide licence that the court requested the Defendants to take was not challenged by any of the parties to the proceedings. [568]


1. Worldwide licences

The Court of Appeal disagreed with the Defendants’ notion that imposing a worldwide licence on an implementer is wrong, because it amounts to an (indirect) interference with foreign court proceedings relating to patents subsisting in foreign territories, which would have been subject to materially different approaches to the assessment of FRAND royalty rates and could, therefore, lead to different results (particularly the ongoing litigation between the parties in China and Germany). [569]

The Court of Appeal explained that in imposing a worldwide licence the High Court did neither adjudicate on issues of infringement or validity concerning any foreign SEPs, nor was it deciding what the appropriate relief for infringement of any foreign SEPs might be (particularly since it made clear that a FRAND licence should not prevent a licensee from challenging the validity or essentiality of any foreign SEPs and should make provision for sales in non-patent countries which do not require a licence) [570] . [571]

Moreover, the High Court simply determined the terms of the licence that the Claimant was required to offer to the Defendants pursuant to its FRAND undertaking towards ETSI. [572] Such an undertaking has international effect. [573] It applies to all SEPs of the patent holder irrespective of the territory in which they subsist. [574] This is necessary for two reasons: first, to protect implementers whose equipment may be sold and used in a number of different jurisdictions. [574] Second, to enable SEP holders to prevent implementers from “free-riding” on their innovations and secure an appropriate reward for carrying out their research and development activities and for engaging with the standardisation process. [575]

Accordingly, the High Court had not erred in finding that a worldwide licence was FRAND. On the contrary, there may be circumstances in which only a worldwide licence or at least a multi-territorial licence would be FRAND. [576] German Courts (in Pioneer Acer [577] and St. Lawrence v Vodafone [578] ) as well as the European Commission in its Communication dated 29 November 2017 [579] had also adopted a similar approach. [580]

Having said that, the Court of Appeal recognized that it may be “wholly impractical” for a SEP holder to seek to negotiate a licence for its patents on a country-by-country basis, just as it may be “prohibitively expensive” to seek to enforce its SEPs by litigating in each country in which they subsist. [575] In addition, if in the FRAND context the implementer could only be required to take country-by-country licences, there would be no prospect of any effective injunctive relief being granted to the SEP holder against it: the implementer could avoid an injunction, if it agreed to pay the royalties in respect of its activities in any particular country, once those activities had been found to infringe. [581] In this way, the implementer would have an incentive to hold out country-by-country, until it was compelled to pay. [581]

In its discussion of this topic, the Court of Appeal disagreed with the view taken by the High Court that in every given set of circumstances only one true set of FRAND terms exists. Nevertheless, the court did not consider that the opposite assumption of the High Court had a material effect to the its decision. [582]

In the eyes of the Court of Appeal, it is “unreal” to suggest that two parties, acting fairly and reasonably, will necessarily arrive at precisely the same set of licence terms as two other parties, also acting fairly and reasonably and faced with the same set of circumstances. [583] The reality is that a number of sets of terms may all be fair and reasonable in a given set of circumstances. [583] Whether there is only one true set of FRAND terms or not, is, therefore, more of a “theoretical problem” than a real one. [584] If the parties cannot reach an agreement, then the court (or arbitral tribunal) which will have to determine the licensing terms will normally declare one set of terms as FRAND. The SEP holder would then have to offer that specific set of terms to the implementer. On the other hand, in case that the court finds that two different sets of terms are FRAND, then the SEP holder will satisfy its FRAND undertaking towards ETSI, if it offers either one of them to the implementer. [584]

Furthermore, the Court of Appeal dismissed Defendants’ claim that imposing a worldwide licence is contrary to public policy and disproportionate. [585] In particular, the Defendants argued that this approach encourages over-declaration of patents [586] and is not compatible with the spirit of the Directive 2004/48/EC on the enforcement of intellectual property rights, [587] which requires relief for patent infringement to be proportionate. [588]

Although the Court of Appeal recognised the existence of the practice of over-declaration and acknowledged that it is a problem, it held that this phenomenon cannot justify “condemning” SEP holders with large portfolios to “impossibly expensive” litigation in every territory in respect of which they seek to recover royalties. [589] The court also found that there was nothing disproportionate about the approach taken by the High Court, since the Defendants had the option to avoid an injunction by taking a licence on the terms which the court had determined. [590]


2. Non-discrimination

The Court of Appeal rejected the Defendants’ argument [591] that the non-discrimination component of Claimant’s FRAND undertaking towards ETSI obliges the Claimant to offer to the Defendants the same rates as those contained in the licence granted to Samsung. [592]

The Court of Appeal made clear that the obligation of the SEP holder not to discriminate is, in principle, engaged in the present case, since the Claimant’s transaction with the Defendants is equivalent to the licence it granted to Samsung. [593] In the court’s eyes, when deciding whether two transactions are equivalent one needs to focus first on the transactions themselves. Insofar, differences in the circumstances in which the transactions were entered into, particularly economic circumstances, such as the parties’ financial position [594] or market conditions (e.g. cost of raw materials), cannot make two otherwise identical transactions non-equivalent (releasing, therefore, the patent holder from the obligation not to discriminate). Changes in such circumstances could only amount to an objective justification for a difference in treatment. [595]

Considering the specific content of the SEP holder’s respective obligation, the Court of Appeal agreed with the High Court’s finding that the non-discrimination element of a SEP holder’s FRAND undertaking does not imply a so-called “hard-edged” component (imposing on the patent holder an obligation to offer the same rate to similarly situated implementers). [596] It argued that the “hard-edged” approach is “excessively strict” and fails to achieve a balance between a fair return to the SEP owner and universal access to the technology. [597] It could have the effect of compelling the SEP holder to accept a level of compensation for the use of its invention which does not reflect the value of the licensed technology and, therefore, harm the technological development of standards. [598]

Furthermore, the “hard-edged” discrimination approach should be rejected also because its effects would result in the insertion of the “most favoured licensee” clause in the FRAND undertaking. In the view of the Court of Appeal, the industry would most likely have regarded such a clause as inconsistent with the overall objective of the FRAND undertaking. [599]

Conversely, the Court of Appeal followed the notion described by the High Court as the “general” non-discrimination approach: [600] the FRAND undertaking prevents the SEP holder from securing rates higher than a “benchmark” rate which mirrors a fair valuation of its patent(s), but it does not prevent the patent holder from granting licences at lower rates. [600] For determining the benchmark rate, prior licences granted by the SEP holder to third parties will likely form the “best comparables”. [601]

The Court of Appeal argued that the “general” approach is in line with the objectives of the FRAND undertaking, since it ensures that the SEP holder is not able to “hold-up” implementation of the standard by demanding more than its patent(s) is worth. [602] However, the FRAND undertaking does not aim at leveling down the royalty owed to the SEP holder to a point where it no longer represents a fair return for its patent(s), or to removing its discretion to agree royalty rates lower than the benchmark rate, if it chooses to do so. [602]

In this context, the Court of Appeal made clear that it does not consider differential pricing as per se objectionable, since it can in some circumstances be beneficial to consumer welfare. [603] The court sees no value in mandating equal pricing for its own sake. On the contrary, once the hold-up effect is dealt with by ensuring that licences are available at the benchmark rate, there is no reason for preventing the SEP holder from charging less than the licence is worth. [603] Should discrimination appear below the benchmark rate, it should be addressed through the application of competition law; as long as granting licences at rates lower than the benchmark rate causes no competitive harm, there is no reason to assume that the FRAND undertaking constrains the ability of the SEP holder to do so. [604]


3. Abuse of dominant Position / Huawei v ZTE

The Court of Appeal further rejected Defendants’ argument that, by bringing the infringement proceedings prior to fulfilling the obligations arising from the Huawei judgment, the Claimant abused its dominant market position in violation of Article 102 TFEU. [605]

To begin with, the Court of Appeal confirmed the finding of the High Court that the Claimant held a dominant market position and dismissed the respective challenge by the latter. [606] It did not find any flaw in the High Court’s view that the SEP holder has a 100% market share with respect to each SEP (since it is “common ground” that the relevant market for the purpose of assessing dominance in the case of each SEP is the market for the licensing of that SEP [607] ) and that the constrains imposed upon the SEP holder’s market power by the limitations attached to the FRAND undertaking [608] and the risk of hold-out that is immanent to the structure of the respective market, [609] can either alone or together rebut the assumption that it most likely holds market power. [610]

Notwithstanding the above, the Court of Appeal held that the Claimant had not abused its market power in the present case. [611]

The court agreed with the finding of the High Court that the Huawei judgment did not lay down “mandatory conditions”, in a sense that that non-compliance will per se render the initiation of infringement proceedings a breach of Article 102 TFEU. [612] The language used in the Huawei judgment implies that the CJEU intended to create a “safe harbor”: if the SEP holder complies with the respective framework, the commencement of an action will not, in and of itself, amount to an abuse. [613] If the SEP holder steps outside this framework, the question whether its behaviour has been abusive must be assessed in light of all of the circumstances. [614]

In the court’s eyes, the only mandatory condition that must be satisfied by the SEP holder before proceedings are commenced, is giving notice to the implementer about the infringing use of its patents. [615] This follows from the clear language used by the CJEU with respect to this obligation. [616] The precise content of such notice will depend upon all the circumstances of the particular case. [616] In general, if an alleged infringer is familiar with the technical details of the products it is dealing and the SEP it may be infringing, but has no intention of taking a licence on FRAND terms, it will not be justified to deny the SEP holder an injunction, simply because it had not made a formal notification prior to the commencement of proceedings. [617]

On the merits, the court accepted the High Court’s assessment that the Claimant had not behaved abusively and particularly the finding, that the Defendants, who were in contact with the Claimant prior to the proceedings, had sufficient notice that the Claimant held SEPs which ought to be licensed, if found infringed and essential. [618]

Considering further that the respective conduct requirements were not established at the point in time, in which the infringement action was filed (since the present proceedings were initiated before the CJEU delivered the Huawei judgment), the Court of Appeal noted that it would very likely not be fair to accuse the Claimant of abusive behavior. [619] Insofar the court agreed with the respective approach developed by German courts in co-called “transitional” cases (Pioneer v Acer, [620] St. Lawrence v Vodafone [620] and Sisvel v Haier [621] ) [622] .

  • [552] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, Case-No. A3/2017/1784, [2018] EWCA Civ 2344, para. 233.
  • [553] Ibid, para. 6 et seqq.
  • [554] Ibid, para. 233.
  • [555] Ibid, para. 7.
  • [556] Ibid, paras. 8 and 137 et seqq.
  • [557] Ibid, para. 8.
  • [558] Ibid, para. 9 et seqq.; para. 31 et seqq.
  • [559] Ibid, para 17.
  • [560] Ibid, para 130.
  • [561] Ibid, para 18.
  • [562] Ibid, para 112.
  • [563] Ibid, para 291.
  • [564] Ibid, paras. 19 and 45 et seqq.
  • [565] Ibid, paras. 20 and 132 et seqq.
  • [566] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-170/13.
  • [567] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 21, paras. 211 et seqq and para. 251.
  • [568] Ibid, para. 17.
  • [569] Ibid, paras. 74 and 77 et seq.
  • [570] Ibid, para. 82.
  • [571] Ibid, para. 80.
  • [572] Ibid, para. 79 et seq.
  • [573] Ibid, para. 26.
  • [574] Ibid, para. 53.
  • [575] Ibid, para. 54 et seq., para. 59.
  • [576] Ibid, para. 56.
  • [577] Pioneer v Acer, District Court of Mannheim, judgement dated 8 January 2016, Case No. 7 O 96/14.
  • [578] St. Lawrence v Vodafone, District Court of Düsseldorf, judgement dated 31 March 2016, Case No. 4a O 73/14.
  • [579] Communication From the Commission to the European Parliament, the Council and the European Economic and Social Committee, “Setting out the EU Approach to Standard Essential Patents”, 29 November 2017, COM(2017) 712 final.
  • [580] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 74.
  • [581] Ibid, para. 111.
  • [582] Ibid, para. 128.
  • [583] Ibid, para. 121.
  • [584] Ibid, para. 125.
  • [585] Ibid, para. 75.
  • [586] Ibid, para. 92
  • [587] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (Official Journal of the EU L 195, 02/06/2004, p. 16)
  • [588] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 94.
  • [589] Ibid, para. 96.
  • [590] Ibid, para. 98.
  • [591] Ibid, para. 20 and 132 et seqq.
  • [592] Ibid, paras. 207 and 210.
  • [593] Ibid, para. 176.
  • [594] Ibid, para. 173.
  • [595] Ibid, para. 169 et seq.
  • [596] Ibid, paras. 194 et seqq.
  • [597] Ibid, para. 198.
  • [598] Ibid, para. 198.
  • [599] Ibid, para. 199.
  • [600] Ibid, para. 195.
  • [601] Ibid, para. 202.
  • [602] Ibid, para. 196.
  • [603] Ibid, para. 197.
  • [604] Ibid, para. 200.
  • [605] Ibid, para. 21, paras. 211 et seqq and para. 251.
  • [606] Ibid, para. 212.
  • [607] Ibid, para. 216.
  • [608] Ibid, para. 219.
  • [609] Ibid, para. 220.
  • [610] Ibid, para. 229.
  • [611] Ibid, para. 284.
  • [612] Ibid, para. 269.
  • [613] Ibid, para. 270.
  • [614] Ibid, para. 269 and 282.
  • [615] Ibid, para. 253 and 281.
  • [616] Ibid, para. 271.
  • [617] Ibid, para. 273.
  • [618] Ibid, para. 284
  • [619] Ibid, para. 275
  • [620] See above
  • [621] Sisvel v Haier, Higher District Court of Düsseldorf, judgement dated 30 March 2017, Case No. 15 U 66-15.
  • [622] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 279.

Updated 27 六月 2018

OLG Düsseldorf 3

OLG Düsseldorf
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). [623] A few days later, the Claimant entered into an NDA also with a third party, the Intervener . Shortly after signing the NDA, the Intervener [624] argued that several clauses of the agreement were void. [625]

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. [626]

In December 2017, the Intervener requested full access to the court files. [627] 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. [628] 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. [629] In particular, the Court requested from the District Court to (re-)examine whether the Claimant actually possessed confidential business information which needed protection. [629] 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. [630]

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. [631] 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. [632]

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. [633] 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. [634]

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. [635] 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. [636]

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. [637] The party also needs to present in detail which measures were taken so far for securing confidentiality with respect to the information in question. [637] 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. [637] It also needs to be explained, with which degree of certainty the said disadvantages are expected to occur. [637]

When protection of confidential information contained in comparable licences is sought, the existence of confidentiality interests requires, in general, special justification. [638] In the Court’s view, the SEP holder’s FRAND-undertaking entails transparency vis-à-vis interested stakeholders with respect to licensing conditions. [638] Moreover, knowledge of licensing conditions already accepted in the market can help potential licensees exercise their rights in infringement proceedings effectively. [638] 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. [638] In fact, several licensing pools (e.g. MPEG) publish their licensing agreements online. [638]

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. [639] 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. [630]

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. [640] In other words, in terms of detail, the party must again not present information going beyond “merely indicative observations”. [640] 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. [641] For this, it is required that the party’s behaviour has caused a high risk of a breach of confidentiality. [641] 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. [641]

  • [623] Higher District Court of Düsseldorf, judgement dated 25 April 2018, Case No. I-2 W 8/18, para. 26
  • [624] Ibid, para. 26
  • [625] Ibid, para. 32
  • [626] Ibid, para. 35
  • [627] Ibid, para. 2
  • [628] Ibid, para. 27
  • [629] Ibid, para. 36 et seq
  • [630] Ibid, para. 17
  • [631] Ibid, paras 11 and 14
  • [632] Ibid, para. 11
  • [633] Ibid, para. 13
  • [634] Ibid, para. 13
  • [635] Ibid, para. 15
  • [636] Ibid, para. 15 et seq
  • [637] Ibid, para. 23
  • [638] Ibid, para. 24
  • [639] Ibid, para. 16
  • [640] Ibid, para. 20
  • [641] Ibid, para. 21

Updated 30 十月 2018

TQ Delta LLC v Zyxel Communications UK Ltd. and Ors., UK High Court of Justice

英国法院判决
28 九月 2018 - Case No. HP-2017-000045, [2018] EWHC 2577 (Pat)

A. Facts

The Claimant, TQ Delta LLC, acquired patents that had been declared as essential to the DSL standard under the so-called “ITU Recommen­dations” from a company called Aware Inc. (Standard Essential Patents, or SEPs) [642] . The ITU Recommendations require from the SEP holder to make its patents accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [643] . The Defendants, Zyxel Communications UK Ltd. and Zyxel Communications A/S, manufacture and sell various types of equipment complying with the DSL standard [643] .

The Claimant brought an infringement action against the Defendants before the UK High Court of Justice (Court) based on two SEPs it holds [643] . The proceedings involve, on the one hand, technical issues concerning the validity, essentiality and infringement of the SEPs in question and, on the other hand, the licensing of these SEPs on FRAND terms [644] .

Prior to service of the statements of case, the Court ordered the Claimant to disclose licence agreements concluded with third parties, covering also the SEPs in suit (comparable agreements) [645] . The Claimant requested the Court to establish an “external eyes only” regime with respect to comparable agreements, especially a licence entered with a company called Zhone (Zhone licence) as well as a licence concluded with another company referred to as company “X” (X licence). In June 2018, the Court dismissed Claimant’s motion [646] . After that, the Court ordered standard disclosure, requesting both parties to search for documents relevant to the case and produce so-called “disclosure statements”, containing the documents identified [647] .

In its disclosure statement, the Claimant included only the licences concluded by Aware Inc. with third parties covering also the patents in suit (of which he possessed only redacted copies; “Aware licences”), the assignment agreement signed with Aware Inc., the inter partes correspondence with the latter as well as a few public validity findings made by the US Patent and Trademark Office on certain patents of its portfolio [648] .

The Defendants, who had obtained unredacted copies of the Aware licences directly from Aware Inc. [648] , complained that the Claimant’s disclosure was not appropriate and set out various categories of documents which, in their view, should have been in disclosure [648] . Accordingly, the Defendants requested an order for standard disclosure to be repeated, backed this time by a so-called “unless order” (meaning that non-compliance with the order will be sanctioned by the dismissal of Claimant’s claims) [649] .

On 28 September 2018, the Court made an order requesting disclosure of the following specific categories of documents by the Claimant [650] :

  • Documents concerning the assignment of patents from Aware Inc. to the Claimant (besides the assignment agreement itself);
  • documents regarding to the assessment of the (technical) essentiality of the patents in suitIbid, pages 5 et seq., and
  • documents concerning the Claimant’s royalty calculationIbid, pages 6 et seq..

On the other hand, the Court refused to order disclosure of documents relating to the negotiations leading to the Zhone licence, the X licence and the Aware licences, documents concerning licensing negotiations between the Claimant and third parties which have not resulted in a licence yet [653] , as well as documents regarding to assessments of the validity [654] or the technical significance of Claimant’s patents within the standard [651] .

With judgment dated 11 October 2018, the Court set forth the specific terms of the order [655] . Since the Court held that the Claimant did not carry out a proper search for existing documents under the previous standard disclosure order, it required the Claimant to conduct such a search and deliver a new statement of disclosure [656] . In addition, the Court ordered the Claimant to disclose the aforementioned specific categories of documents, ruling that failure to comply with this order, will lead to the dismissal of Claimant’s claim [656] .

B. Court’s reasoning

The Court explained that disclosure can be refused only with respect to documents not relevant to the case and/or documents which are relevant but might have been privileged or disproportionate to search for [657] . In the Court’s eyes, proportionality comes in play in this context under two aspects: On the one hand, the cost and complexity of searching for and extracting the relevant material should be considered [658] . On the other hand, the impact of the documents on the trial as well as the cost and complexity of deploying any material which is produced in the proceedings needs also to be taken into account [658] .

Further, the Court made clear that disclosure cannot be refused on the grounds that documents referring to a specific transaction (e.g. a licensing agreement) are subjective in nature (whereas FRAND is objective); in the Court’s eyes, even then, the acts of individuals working in a field is capable of being evidence on what “reasonable business people” might do in similar circumstances [653] .

On this basis, the Court held that documents concerning the assignment of the SEPs in suit from Aware Inc. to the Claimant should be disclosed [653] . The fact that the Claimant had disclosed the assignment agreement itself does not mean that further disclosure is not necessary [653] . Documents referring to the assignment might be “potentially highly relevant information” in FRAND-related trials, since they could provide insights into how different parts of the patent portfolio assigned were valued, offering (presumably “at arm's length”) a “concrete data point” for the respective valuation [653] .

The Court further found that documents concerning the assessment of whether the patents in suit are (from a technical perspective) essential to the DSL standard should also be disclosed [654] , because it is particularly relevant to know what proportion of the patents which were assigned to the Claimant by Aware Inc. are essential to the DSL standard [654] .

Furthermore, the Court requested disclosure of documents referring to the Claimant’s royalty calculation, since they were regarded as “directly relevant” to the case [654] . The fact that respective documents were prepared in connection with previous litigation between the parties in the United States does per se hinder disclosure, unless litigation was the “dominant purpose” for which the documents were made [650] . In other words, the litigation privilege applies only to documents created in litigation to put forward arguments about what is and is not FRAND in court; on the contrary, documents which – in Claimant’s practice as a licensing company – led to the creation of the royalty rates and other terms in FRAND offers are subject to disclosure [650] .

On the other hand, the Court held that disclosure of documents relating to the negotiations which had led to the Zhone licence, the X licence and the Aware licences was not required [658] . Although such documents might, in principle, be relevant to the case (particularly for demonstrating what the parties may have said in the licensing negotiations about the value of the patents and their relevance to the standard) [659] , the Court found that disclosure of documents related to the Zhone licence and the X licence would be disproportionate in the present case, since it would have limited probative value [658] . This is because the Defendants had argued that the Zhone licence was not a relevant comparable agreement [649] . In addition, none of the parties advanced the X licence as a comparable agreement in connection with the royalty rates; in the Court’s eyes, the fact that it might be comparable in relation to other licence terms, did not have “significant utility” for the case [658] . With respect to documents related to the negotiations of the Aware licences, the Court refrained from ordering disclosure, because it was convinced that the Claimant was not in possession of such documents [659] .

Regarding to documents concerning licensing negotiations between the Claimant and third parties the Court held that, although these documents might be relevant to the case, their disclosure would also be disproportionate in light of the rather limited probative value that they are likely to have [653] .

Furthermore, the Court explained that documents referring to the individual technical significance of a patent within a standard (in a sense that some patents might be of higher value to the standard than others), were not relevant in the present case, since no party pleaded that respective considerations need to be taken into account for the royalty determination [651] . In this context, the Court expressed doubts about whether a method of determining royalties based on such considerations is workable in practice at all [653] .

The Court finally refused disclosure of documents relating to the validity of Claimant’s patents [654] . Insofar, the Court followed the usual practice of UK Courts in patent cases, according to which, as a rule, unspecific disclosure relating to patent validity is refused [654] .

  • [642] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 28th September 2018, Case-No. HP-2017-000045, [2018] EWHC 2577 (Pat), page 1.
  • [643] Ibid, page 1.
  • [644] Ibid, page 1 et seq. With respect to the relationship between the “technical trials” (that means the proceedings concerning the validity, essentiality and infringement of the SEPs in suit) and the “non-technical trial” regarding to FRAND licensing see, TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 21st November 2017, Case-No. HP-2017-000045, [2017] EWHC 3305 (Pat); summary available at caselaw.4ipcouncil.com/english-court-decisions/tq-delta-llc-v-zyxel-communications-ewhc
  • [645] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13th June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), paras. 25 and 30; summary available at caselaw.4ipcouncil.com/english-court-decisions/tq-delta-llc-v-zyxel-communications-and-ors-ewhc
  • [646] Ibid, TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13th June 2018.
  • [647] Q Delta LLC v Zyxel Communications, UK High Court of Justice, 28th September 2018, Case-No. HP-2017-000045, [2018] EWHC 2577 (Pat), page 2.
  • [648] Ibid, page 2.
  • [649] Ibid, page 3.
  • [650] Ibid, page 7.
  • [651] Ibid, pages 5 et seq.
  • [652] Ibid, pages 6 et seq.
  • [653] Ibid, page 5.
  • [654] Ibid, page 6.
  • [655] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 11th October 2018, Case-No. HP-2017-000045, [2018] EWHC 2677 (Pat).
  • [656] Ibid, pages 2 et seq.
  • [657] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 28th September 2018, Case-No. HP-2017-000045, [2018] EWHC 2577 (Pat), page 2.
  • [658] Ibid, page 4.
  • [659] Ibid, pages 3.

Updated 6 十月 2020

无线星球诉华为 暨 康文森诉华为及中兴通讯

英国法院判决
26 八月 2020 - Case No. [2020] UKSC 37

A. 事实

本案中,英国最高法院(以下称“最高法院”)针对就两个个别独立案件所提出的上诉进行判决。这两个案件均涉及由欧洲电信标准协会(ETSI)所制定的对实施无线电通信技术标准必不可少(或潜在不必可少)的专利(标准必要专利或SEP)的侵权行为。根据欧洲电信标准协会知识产权政策的要求,该协会鼓励标准必要专利持有人对其愿依照公平、合理且无歧视(FRAND)的条款与条件向标准实施人提供其所持有的标准必要专利做出承诺。

1. 无线星球诉华为

第一个案件涉及一家拥有一组符合数项无线通信技术标准的标准必要专利组合的公司—— 无线星球国际有限公司(Unwired Planet International Limited,以下称“无线星球”)与另一家中国制造商和供应商——华为集团旗下的两家公司之间,关于使用此项标准的手机设备以及一些其他项目的纠纷。

2014年3月,无线星球于英格兰和威尔士高等法院(以下称“高等法院”)起诉华为、三星以及另一家公司侵害其所持有的五项英国标准必要专利。在这些诉讼进行的过程中,无线星球向华为提出了几项许可要约,然而最终并未能达成协议。另一方面,无线星球在诉讼进行中与三星公司签署了许可协议。

高等法院于2017年4月5日对华为核发了禁令,禁令的期限直到该公司与无线星球签订了法院认为符合FRAND原则的特定条款的全球许可协议为止 [660] 。华为对该决定提起了上诉,在上诉程序确定之前,高等法院中止了对该禁令的执行。

英国上诉法院(以下称“上诉法院”)于2018年10月23日驳回了华为对高等法院判决的上诉 [661] 。随后,华为向英国最高法院(以下称“最高法院”)提出了上诉。

2. 康文森诉华为及中兴通讯 第二起案件涉及一家专利许可公司——康文森无线许可有限公司(Conversant Wireless Licensing S.A.R.L.,以下称“康文森”)与华为以及中兴通讯集团(ZTE,以下称“中兴通讯”)旗下的两家公司之间的纠纷。中兴通讯是一家中国公司,生产网络设备、手机和消费电子产品,并销往世界各地。

康文森于2017年向高等法院提起了对华为以及中兴通信的侵权诉讼。除了一些其他的主张外,康文森还向高等法院提出了对其所持有的四项英国专利权侵权行为的禁令救济,同时也要求高等法院就其所持有的标准必要专利组合确定符合FRAND的全球许可条款。华为和中兴通信都对高等法院是否具备审理和裁决此案的管辖权提出异议,于此同时,并在中国提起诉讼,对康文森所持有的中国专利的有效性进行挑战。

高等法院于2018年4月16日确认了其对包括确定该专利组合的全球许可条款在内的,此一系列争议的管辖权限 [662] 。华为和中兴通信对高等法院的判决不服并提起上诉。 2019年1月30日,上诉法院驳回了该上诉,并以该侵权行为侵害英国专利为由,确认了英国法院对包含确定全球许可条款在内的各项纷争的管辖权 [663] 。华为和中兴通信对此判决不服,从而再向最高法院提起上诉。

根据目前的判决 [664] ,最高法院全体一致同意驳回了这两个案件的上诉。

B. 法院的论理

最高法院指出并解决了上诉中提出的如下五个问题:

1. 管辖权

最高法院在其判决中确认,英国法院对跨国标准必要专利组合的全球FRAND许可条款判定事宜有管辖权,因此,如果标准实施人拒绝签订此类许可,则英国法院有权基于其中的英国标准必要专利授予禁令 [665]

法院认为,根据欧洲电信标准协会知识产权政策,标准必要专利持有人并未被禁止于各国家法院系统中寻求禁令救济[7]。相反地,透过国家法院授予的禁令来阻止侵权行为的可能性被认为是“知识产权政策寻求平衡下的必要组成部分”,借此并能够确保实施人有动力去进行FRAND许可谈判 [666]

除了有权基于英国专利授与禁令外,英国法院也有权决定涉及全球范围的FRAND许可条款。最高法院认为,欧洲电信标准协会知识产权政策所确立的“合同关系”赋予英国法院各自行使管辖权的权利 [667]

在最高法院看来,欧洲电信标准协会知识产权政策订定时即“有意使其具备国际效力”,因为此政策的制定即是为了尝试“反映电信行业中的商业惯例” [668] 。在电信行业中,通常的做法是,即便是在不明确知道究竟有多少被许可的专利是有效的或者是侵权的的情况下,仍然以专利组合为单位签署全球范围的许可 [669]

此原因一方面在于,专利持有人无法在其宣告该专利具备(或可能具备)标准必要性之时,就预测到在接下来标准不断发展的过程中,该专利将持续有效或者产生侵权 [669] ;另一方面,实施人在实施标准之时也不会知道其中哪些专利是有效的或者哪些专利是侵权的 [669]

这种“不可避免的不确定性”,是通过以一种“基本上能够反映专利组合中必然含有许多未经验证的专利此一性质“的价格[10]而缔结一次性涵盖全球范围内专利持有人所持有的全部已宣告的标准必要专利组合的许可协议来解决的。借由获取这种许可,实施人购买“实施标准的权利”与“确定性”,确保其有权使用符合该项标准的所有技术 [669]

由于依照商业惯例,FRAND许可必然包括“未经验证”的专利,最高法院认为,确定涵盖全球范围的许可条款和条件并不意味着必须评估其所涵盖的所有专利的有效性。因此,在设定全球范围的专利组合许可条款时,英国法院并不会就外国专利的有效性以及是否侵权这一实际上应由授予该项专利的各国国家法院享有专属管辖权的问题于进行裁决 [670] 。因此,通常来说,实施人“保留在各相关外国法院对这些专利或这些专利的样本提出挑战,并借此要求专利持有人提供一个对许可费率进行调整的机制的权利”将是“公平合理的” [671]

在此范围内,最高法院强调,上述见解并非英国法院独有,而与其他司法管辖区,特别是美国、德国、中国和日本的相关判例所采取的见解一致 [672]

2. 合适的法庭(便利法庭原则)

最高法院审查的第二个问题同样涉及英国法院的管辖权问题。在康文森诉华为一案中,被告抗辩称,在中国法院对康文森所持有的中国专利的有效性做出裁决之前,英国法院本应该拒绝其管辖权,转而选择由中国法院进行管辖,或者至少应该中止该诉讼程序。 然而,最高法院认为,英国法院没有义务拒绝其管辖权转而选择由中国法院进行管辖 [673] 。所谓的“便利法庭原则”在本案中不适用,其原因在于,与英国法院不同的是,由于本案当事人并没有达成协议由中国法院对涵盖全球范围的FRAND专利组合许可条款的决定等相关事项行使管辖权,中国法院于此类争议上没有管辖的权利 [673] 。此外,法院认为,在目前的情况下,可能无法合理预期康文森会同意将管辖权授予中国法院 [673]

在最高法院的眼中,涉及本次争议的英国法院也没有义务为了等待进行中的中国专利有效性诉讼的结果而中止其诉讼程序[15]。其原因在于,此有效性诉讼仅涉及康文森所持有的中国专利的有效性,而在英国提起的这一诉讼所涉及的却是对康文森所持有的全球范围内标准必要专利组合的FRAND许可条款的确定 [674]

3. 无歧视

最高法院审查的第三个问题涉及对FRAND承诺中无歧视义务的解释。在此前的诉讼程序中产生了一个争议点,即无线星球是否会因为其向华为所提供的许可条款比起审判开始后与三星达成协议的条款更为不利而违反了FRAND的无歧视义务。

最高法院对高等法院以及上诉法院就此问题的决定均表示赞同,并指出此一区别不会构成对FRAND的无歧视义务的违反。法院解释到,FRAND并不意味着所谓的“严格无歧视义务”而要求专利持有人向所有条件相似的被许可人提供完全相同或者相似的条款 [675]

根据欧洲电信标准协会知识产权政策(第6.1条)的要求,专利持有人必须承诺按照FRAND条款提供许可。在最高法院看来,这是一个“单一且整体性的义务”,而并非三项各自独立的义务,要求许可条款分别应公平、分别应合理、分别应无歧视 [676] 。因此,这些条款和条件“在通常情况下应能够由任何市场参与者以公平的市场价格获得”,并且应能够反映标准必要专利组合的“真实价值”,同时不须根据特定被许可人的个别特征进行调整 [677]

最高法院更进一步地明确表示,在欧洲电信标准协会知识产权政策要求下所进行的FRAND承诺并不代表所谓的“最惠许可”条款而表示专利持有人被要求必须以相当于最惠许可条款的许可条件向所有类似情况的被许可人授予许可 [678] 。在仔细查看欧洲电信标准协会知识产权政策的创建过程后,法院认为欧洲电信标准协会先前曾明确地表示拒绝将此类条款纳入FRAND承诺的提案 [679]

此外,法院指出,有关差别费率会损害所涉及的私人或公共利益的“一般性推定”并不存在 [680] 。相反地,在某些情况下,标准必要专利持有人选择向特定被许可人提供低于基准费率的许可费这一选择在商业上是合理的 [681] 。举例言之,此种做法适用于所谓的“先行者优势”,法院承认,与第一位被许可人达成费率较低的许可协议具备“经济上的合理性“以及”商业上的重要性“,因为如此一来除了能为标准必要专利创造初始收入,更可以透过许可协议的签署于市场中对专利组合进行“验证”,并促进未来许可协议的达成[22]。此外,对于所谓的“减价销售”而言,情况亦是如此。在这种情况下,专利持有人为了确保其能够在市场上生存而被迫以较低的费率进行许可,而当初在无线星球与三星签署许可协议之时即是属于这种情况 [682]

4. 滥用市场支配地位/华为框架

最高法院审查的第四个问题是,无线星球是否会因为其对华为提起了侵权诉讼,而违反《欧洲联盟运作条约》第102条所称的滥用了市场支配地位,并且因此不能主张禁令救济。尤其是,华为曾经提出抗辩指称,由于无线星球并未遵守欧洲联盟法院于华为诉中兴案中所确立的行为义务(华为判决或华为框架),因此其禁令救济主张应予否决 [683] 。 然而,最高法院认为情况并非如此 [684] 。在法院看来,华为判决确立了一项义务,即专利持有人在提出禁令救济诉讼前,必须就标准实施人对涉案标准必要专利的侵权使用行为向其进行通知,而如果标准必要专利持有人违反了此项义务,则将构成《欧洲联盟运作条约》第102条下的滥用行为[26]。这项义务的“性质”将取决于每个个案的具体情况来进行个案判断 [685] 。本案中,法院认为,无线星球在提起本侵权诉讼之前已经对华为进行了适当的通知 [686]

有关华为判决所确立的其他各项义务,最高法院赞同了先前高等法院和上诉法院的观点,即认为华为框架并不是“强制性的”,而只是建立了一个“路线图”,如果专利持有人能严格遵循此一路线图行事,则其寻求禁令救济的权利将能够获得保障,而不会产生违反第102条的风险 [687] 。此外,华为判决还提供了“多项能帮助评估许可各方是否有按照FRAND条款达成许可协议的意愿此一核心问题的参考点” [686] 。话虽如此,最高法院认为,无线星球一直以来都有按照FRAND条款对华为进行许可的意愿,因此不能认为其表现出滥用行为 [686]

5. 损害赔偿而非禁令救济?

最高法院审查的第五个(也是最后一个问题)涉及对标准必要专利侵权行为的适当补偿措施。在最高法院的上诉程序中,就无线星球所持有的标准必要专利所遭受侵权损害此一事实而言,最适当且符合比例原则的补偿措施应是判给损害赔偿金而不是核发禁令此一抗辩首次被提出。

最高法院认为,在本案中,以损害赔偿取代禁令救济的做法没有依据 [688] 。无线星球和康文森都不可能利用“申请禁令救济”作为向华为或中兴收取“过高费用”的威胁手段,因为他们只有在提交了其条款可能符合法院认定的FRAND许可要约后,才有权获得强制令 [689]

此外,法院认为,判给损害赔偿金“不太可能能够恰当地替代因不能核发禁令所可能造成的损失”,因为如此一来标准必要专利持有人就必须就每一个个别专利在各个国家逐一对实施人提起专利诉讼,而这被认为是“不切实际的” [690] 。更有甚者,标准实施人将“产生动机持续性地为侵权行为,直到其就逐个专利在逐个国家中被迫支付许可费为止”,而这将使得FRAND许可变得更加困难,正如同最高法院所指出的,对侵权者而言,主动取得许可不具备“经济上意义” [691]

另一方面,禁令救济“可能是更有效的补救方法”,通过对各种侵权行为的全面性禁止,禁令带给侵权人的可能只剩下接受标准必要专利持有人所提供的FRAND许可条款这一“有限的选择”,“如果其希望能继续留在市场当中” [691] 。出于上述原因,最高法院强调,禁令救济是“维持司法公正所必需的” [692]

  • [660] Unwired Planet v Huawei, High Court of Justice for England and Wales, judgment dated 5 April 2017, Case No. [2017] EWHC 711(Pat)。
  • [661] Unwired Planet v Huawei, UK Court of Appeal, judgment dated 23 October 2018, Case No. [2018] EWCA Civ 2344。
  • [662] Conversant v Huawei and ZTE, High Court of Justice for England and Wales, judgment dated 16 April 2018, Case No. [2018] EWHC 808 (Pat)。
  • [663] Conversant v Huawei and ZTE, UK Court of Appeal, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [664] Unwired Planet v Huawei and Conversant v Huawei and ZTE, UK Supreme Court, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [665] 同上注, 段 49 及以下。
  • [666] 同上注, 段 61。
  • [667] 同上注, 段 58。
  • [668] 同上注, 段 62。
  • [669] 同上注, 段 60。
  • [670] 同上注, 段 63。
  • [671] 同上注, 段 64。
  • [672] 同上注, 段 68-84。
  • [673] 同上注, 段 97。
  • [674] 同上注, 段 99 及以下。
  • [675] 同上注, 段 112 及以下。
  • [676] 同上注, 段 113。
  • [677] 同上注, 段 114。
  • [678] 同上注, 段 116。
  • [679] 同上注, 段 116 及以下。
  • [680] 同上注, 段 123。
  • [681] 同上注, 段 125。
  • [682] 同上注, 段 126。
  • [683] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [684] Unwired Planet v Huawei and Conversant v Huawei and ZTE, UK Supreme Court, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38, 段 149 及以下。
  • [685] 同上注, 段 150。
  • [686] 同上注, 段 158。
  • [687] 同上注, 段 157 及 158。
  • [688] 同上注, 段 163。
  • [689] 同上注, 段 164。
  • [690] 同上注, 段 166。
  • [691] 同上注, 段 167。
  • [692] 同上注, 段 169。

Updated 2 八月 2019

Tagivan (MPEG-LA) v Huawei

LG Düsseldorf
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) [693] .

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 [694] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [695] . Since 2004, MPEG-LA has signed approx. 2,000 agreements with implementers [696] , 1,400 of which are still in force [695] .

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 [697] . On 15 September 2011, the parent company suggested to arrange a call on this issue [698] . 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 [699] .

In November 2013, the discussions between MPEG LA and the parent company ended without success [700] . The parties resumed negotiations in July 2016; again, no agreement was reached [700] .

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 [701] .

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 [702] .

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 [703] . Furthermore, the Defendant made a second counteroffer to the Claimant shortly after the last oral hearing before the Court [704] .

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

B. Court’s reasoning

The Court found that the patent in suit was valid [705] , standard essential [706] and infringed by the products sold by the Defendant in Germany [707] . 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 [708] (Huawei obligations or framework) with respect to dominant undertakings [709] .

Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [710] .

The Court defined the relevant market for the assessment of dominance as the market, in which licences for any given patent are offered [711] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [711] .

The Court made clear that ownership of a SEP does not per se establish market dominance [712] . A dominant market position is given, when the use of the SEP is required for entering the market [713] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [714] .

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 [715] .

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 [716] . 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) [717] . 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 [718] .

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 [719] . 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 [720] ), 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 [721] . 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 [722] . 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 [722] . 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 [723] .

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 [724] .

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 [725] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [726] . 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) [727] . 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 [728] . 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 [729] .

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 [730] . 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 [730] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [730] . 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 [730] . The respective test is, however, subject to strict conditions [730] .

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) [731] . 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 [732] .

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 [733] .

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 [733] . This is sufficient under the Huawei framework: A general, informal statement suffices [734] . The implementer is not required to refer to a specific licensing agreement (on the contrary, this could be considered harmful under certain circumstances) [734] .

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 [735] .

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 [736] .

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 [737] .

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 [738] . 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 [739] . 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) [740] . 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 [740] . 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 [740] . 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 [741] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content [742] .

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 [743] . 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 [743] . 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 [743] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [743] .

Non-discrimination

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases [744] . Even then, an unequal treatment is allowed, as long as it is objectively justified [744] . 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 [744] . 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 [745] . 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 [745] .

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 [746] . 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 [747] . 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 [748] . 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) [749] .

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 [750] . 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) [751] . 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 [752] . Discounts can further hardly be discriminatory, if they are offered to every (potential) licensee under the same conditions [752] .

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) [753] . 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 [754] .

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 [755] .

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 [756] . 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 [756] .

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 [757] . 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 [758] . 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 [759] . What is more, the Defendant did not show that further licences are needed with respect to the AVC/H.264 standard [760] . 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 [761] .

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 [762] . This assumption is also confirmed by the fact that all existing licensees have accepted this clause [763] .

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) [764] . 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 [764] .

An offer for a pool licence can, nevertheless, violate FRAND in ‘special circumstances’ [765] , for instance, if not all patents included in the pool are used by the licensee [766] . 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 [767] . 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 [768] . 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) [768] .

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 [769] . The Defendant failed, however, to present any reliable evidence that this was the case with the MPEG-LA pool [770] .

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’) [771] . 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 [772] .

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 [773] . In the electronics and mobile communications industries, licences on a group level are in line with the industry practice and, therefore, FRAND-compliant [774] .

Implementer’s counteroffer

Having said that, the Court found that the Defendant failed to make a FRAND counteroffer [775] .

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 [776] . Furthermore, the counteroffer established different licensing rates for different regions (especially for China) without factual justification [777] .

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 [704] . On the contrary, the Court expressed the view that the purpose of this counteroffer was most likely to delay the infringement proceedings [704] .

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 [778] .

  • [693] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, para. 36.
  • [694] Ibid, para. 35.
  • [695] Ibid, para. 37.
  • [696] Ibid, para. 453.
  • [697] Ibid, para. 39.
  • [698] Ibid, para. 43.
  • [699] Ibid, para. 44.
  • [700] Ibid, para. 53.
  • [701] Ibid, para. 2.
  • [702] Ibid, para. 54.
  • [703] Ibid, para. 65.
  • [704] Ibid, para. 716.
  • [705] Ibid, paras. 143-208.
  • [706] Ibid, paras. 209-293.
  • [707] Ibid, paras. 295-302.
  • [708] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [709] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, paras. 304 et seqq.
  • [710] Ibid, para. 307.
  • [711] Ibid, para. 310.
  • [712] 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.
  • [713] Ibid, paras. 310 et seq.
  • [714] Ibid, para. 311.
  • [715] Ibid, paras. 315 et seqq.
  • [716] Ibid, para. 321.
  • [717] Ibid, para. 326.
  • [718] Ibid, para. 327.
  • [719] Ibid, para. 330.
  • [720] 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.
  • [721] Ibid, paras. 331 et seqq.
  • [722] Ibid, para. 335.
  • [723] Ibid, para. 337.
  • [724] Ibid, para. 339.
  • [725] Ibid, para. 343.
  • [726] Ibid, para. 345.
  • [727] Ibid, para. 356.
  • [728] Ibid, paras. 357 et seqq.
  • [729] Ibid, paras. 366 et seqq.
  • [730] Ibid, para. 340.
  • [731] Ibid, para. 341.
  • [732] Ibid, paras. 395 et seqq.
  • [733] Ibid, paras. 400 et seqq.
  • [734] Ibid, para. 399.
  • [735] Ibid, para. 405.
  • [736] Ibid, paras. 411-417.
  • [737] Ibid, para. 419.
  • [738] Ibid, para. 421.
  • [739] Ibid, para. 425.
  • [740] Ibid, para. 422.
  • [741] Ibid, paras. 426 et seqq.
  • [742] Ibid, para. 429.
  • [743] Ibid, para. 431.
  • [744] Ibid, para. 432.
  • [745] Ibid, para. 433.
  • [746] Ibid, para. 438.
  • [747] Ibid, para. 443.
  • [748] Ibid, para. 444.
  • [749] Ibid, para. 445.
  • [750] Ibid, para. 579.
  • [751] Ibid, para. 582.
  • [752] Ibid, paras. 583 et seqq.
  • [753] Ibid, para. 564.
  • [754] Ibid, paras. 568 et seqq.
  • [755] Ibid, paras. 573 et seqq.
  • [756] Ibid, para. 451.
  • [757] Ibid, para. 449.
  • [758] Ibid, para. 454.
  • [759] Ibid, paras. 487 et seqq.
  • [760] Ibid, para. 491.
  • [761] Ibid, para. 495.
  • [762] Ibid, paras. 591 et seqq., particularly para. 596.
  • [763] Ibid. para. 597.
  • [764] Ibid. para. 504.
  • [765] Ibid. para. 508.
  • [766] Ibid. para. 514.
  • [767] Ibid. paras. 511 et seqq.
  • [768] Ibid. para. 524.
  • [769] Ibid, para. 528.
  • [770] Ibid, paras. 531-543.
  • [771] Ibid, paras. 545 et seqq.
  • [772] Ibid, para. 546.
  • [773] Ibid, para. 599.
  • [774] Ibid, para. 600.
  • [775] Ibid, para. 603.
  • [776] Ibid, paras. 605 et seqq.
  • [777] Ibid, paras. 617 et seqq.
  • [778] Ibid, para. 625.