在欧洲联盟法院华为诉中兴通信案判决后所做成的判例
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Updated 6 六月 2017

Archos v. Philips, Rechtbank Den Haag

荷兰法院判决
8 二月 2017 - Case No. C/09/505587 / HA ZA 16-206 (ECLI:NL:RBDHA:2017:1025)

  1. Facts
    Defendant (Koninklijke Philips N.V.) is the proprietor of a number of patents declared essential to ETSI’s UMTS (3G) and LTE (4G) standards. Defendant made FRAND commitments towards ETSI on 15 January 1998 and 26 November 2009. Claimant (Archos S.A.) markets mobile devices which are alleged to infringe upon Defendant’s patents.
    By letter of 5 June 2014, Defendant brought her UMTS and LTE patent portfolio and her licensing program to the attention of Claimant. In this letter, Defendant made clear that Claimant was infringing her patents by marketing products incorporating the UMTS and LTE standards and explained the possibility of obtaining a FRAND license. On 15 September 2014, a meeting took place to inform Claimant of Defendant’s patent portfolio and to discuss the licensing offer. In another meeting on 25 November 2014, Claimant suggested Defendant to grant her a royalty-free license to all of Defendant’s patents (i.e. not only to the UMTS/LTE patents but also to other patents related to so-called ‘Portable Features’) in exchange for the transfer of certain patents of Claimant to Defendant. Defendant informed Claimant by email of 23 December 2014 that it was not interested in Claimant’s patents because it considered them to represent ‘relatively low value’.
    By letter of 28 July 2015 Defendant sent Claimant an updated list of UMTS/LTE patents as well as a draft licensing agreement in which she confirmed her earlier licensing offer. The proposed royalty amounted to $ 0.75 per product containing UMTS and/or LTE functionality. For products already sold, a royalty of $ 1 would need to be paid. At a next meeting on 3 September 2015, it became clear that Claimant did not wish to obtain the license offered. On behalf of Claimant, it was made clear during the meeting that Defendant would have to take legal action if she wished to obtain a license fee. In October 2015, Defendant started proceedings before the Rechtbank Den Haag for infringement of her European Patents EP 1 440 525, EP 1 685 659 and EP 1 623 511.
    By letter of 12 January 2016, Claimant made a written counter offer of 0.071% of her net revenue from products incorporating the UMTS and/or LTE standards. For a net sale price per product of € 100, the offered royalty would amount to 7 eurocent per product.
  2. Court’s reasoning
    Claimant asked the court to declare that Defendant’s licensing offer of 28 July 2015 is not FRAND and to declare that a royalty fee of € 0.007 for every product sold by Claimant incorporating the UMTS standard and a royalty fee of € 0.020 for every product sold by Claimant incorporating the UMTS and LTE standards is FRAND. In addition, Claimant asked the court to rule that its own licensing offer of 12 January 2016 is higher than what a fair, reasonable and non-discriminatory royalty fee would require.
    1. Market power and notice of infringement
      The court left open whether the SEPs conferred market power to Defendant since it did, in any case, find no abuse of such potential market power. The court argued that it is generally accepted and to be inferred from the system laid down in the Huawei/ZTE judgment that a FRAND license has a certain bandwidth. After all, the Huawei/ZTE judgment contemplates that the SEP holder makes a FRAND offer first and afterwards, if the SEP user does not agree with the offer, makes a counter offer which also has to be FRAND. During this negotiation process, the characteristics of the SEP user as well as its specific objections can be taken account in the license at the discretion of the parties. As such, the court noted that the fact that Defendant’s initial offer would turn out to be unreasonable for Claimant because she finds itself in the low budget segment of the market and her margins are small does not imply that the offer made by Defendant on 28 July 2015 is not FRAND.
      The court also made clear that until the Huawei/ZTE judgment the initiative to obtain a license was incumbent on the SEP user and not on the SEP holder in line with the common interpretation of the judgment of the Rechtbank Den Haag in Philips/SK Kassetten and the Orange Book ruling of the Bundesgerichtshof. In the view of the court the, on this crucial point, contrary Huawei/ZTE judgment that was delivered on 15 July 2015 constituted a new moment for negotiation between the parties. The court noted that, in line with the Huawei/ZTE judgment, Defendant took initiative with its licensing offer of 28 July 2015. Since Claimant made clear in the meeting on 3 September 2015 that Defendant would have to take legal action if she wished to obtain more than a few thousand euros in licensing fees, it seems unfitting that Archos reproaches Philips to have not been open to negotiation, or at least that position is insufficiently substantiated (par. 4.3).
    2. The SEP owner’s licensing offer
      Claimant put forward a number of arguments for its claim that Defendant’s offer of 28 July 2015 is not FRAND. All of these arguments were rejected by the court on the ground that Claimant had not sufficiently substantiated them. The main arguments raised are as follows.
      Claimant argued that Defendant’s rights regarding devices incorporating Qualcomm baseband chips had been exhausted due to the cross-license that Defendant had already concluded with Qualcomm for these chips. Since a number of Claimant’s products rely on Qualcomm baseband chips, the compensation that Defendant had already received from Qualcomm should, in the view of Claimant, at least have been taken into account in the license offer. The court noted that Claimant had not sufficiently contested that the Qualcomm license did not cover production and sales of mobile phones – as Defendant had made clear before the court – and that Claimant could have raised this point during the negotiations (par. 4.4).
      The court continued by stating that the fact that Defendant’s licensing offer covered both UMTS and LTE SEPS could not affect the FRAND-ness of the offer in the case at hand considering that Claimant’s products do not merely require a license under the LTE SEPs but also under the UMTS SEPs (par. 4.5).
      While the parties agreed that the Defendant’s share of the absolute number of SEPs in the UMTS-SEP portfolio is an important factor for assessing the FRAND-character of Defendant’s offer, they each reached different absolute numbers. The court concluded that the calculations in the consultancy reports on which Claimant relied do not lead to accurate results and are rather speculative in nature. As such, the Claimant downplayed the value of Defendant’s SEPs (par. 4.6-4.7).
      With regard to Claimant’s argument that Defendant’s proposed royalty rate would amount to impermissible royalty stacking, the court argued that this was insufficiently substantiated by Claimant (par. 4.8).
      Claimant also argued that the royalty rate should not be based on the total price of a phone but merely on the part in which the technology at issue is incorporated (the Smallest Saleable Patent-Practising Unit, SSPPU). In this context, the court noted that Defendant rightly pointed out that the requested royalty was set at a fixed amount as a result of which there is no relationship with the market value of the phone. Furthermore, since the SSPPU concept is at the very least subject to debate, the court noted that this issue could have been considered in the negotiations. That the royalty rate suggested by Defendant, which was not based on the SSPPU price, would not be FRAND for that mere reason could not be established by the court (par. 4.10).
      The court also dismissed Claimant’s reference to patent hold-up on the ground that a situation of hold-up can only occur in the case of a non-FRAND license which had not been established in the case at issue (par. 4.13).
      In the end, the court dismissed Claimant’s request to make a declaratory statement that Defendant’s offer of 28 July 2015 was not FRAND.
    3. The standard implementer’s reaction
      Considering that Claimant’s counter offer of 12 January 2016 is more than a factor 10 lower than the Defendant’s offer and is based on an inaccurate (at least insufficiently substantiated) share of Defendant’s SEPs in the relevant UMTS standard, the court refused to declare the counter offer to be FRAND, let alone to declare that this counter offer is higher than a FRAND royalty rate as requested by Claimant (par. 4.17-4.18).
  3. Other important issues
    AA defence that Defendant invoked was that Claimant had no interest (anymore) in the requested declaratory statements because its respective FRAND commitments were exhausted due to the unwilling attitude of Claimant. However, as Claimant’s requests for the declaratory statements were found not to be sufficiently substantiated, there was no need for the court to discuss this issue anymore (par. 4.18).

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) [1] . 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 [2] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [3] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [3] .

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) [4] . 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 [5] . 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 [6] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [6] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [7] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [5] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [8] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [9] , it found that the Claimant cannot enforce its patent rights for the time being [10] , 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) [8] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [12] .

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 [13] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [14] . 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 [15] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [16] .

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 [17] . 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 [17] . 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 [17] .

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 [17] . 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) [17] . 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 [17] .

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 [18] .

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 [19] . 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 [20] .

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 [21] .

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 [22] . 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 [22] .

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 [23] . 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 [23] . 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 [23] .

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) [24] . 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) [24] . 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 [24] .

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 [25] .

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 [26] .

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 [27] . Given the circumstances of the specific case, even an implicit behaviour can suffice [27] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [28] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [28] . 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 [28] . 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 [28] .

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 [29] . 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 [30] .

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 [31] .

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 [32] . 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 [5] .

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 [33] . 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 [34] .

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 [35] . 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 [35] . 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 [35] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [36] . 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 [37] .

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 [7] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [38] .

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 [39] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [40] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [41] .

First, the terms did not adequately consider the effects of patent exhaustion [42] . As a rule, FRAND requires licensing offers to contain respective provisions [43] . 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 [44] .

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 [45] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [46] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [47] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [48] . 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 [48] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [49] .

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 [39] . 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) [50] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [51] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [51] . 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 [52] .

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 [53] . 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 [54] .

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 [55] . 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 [56] . 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 [57] .

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 [58] . 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 [58] . 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) [58] . 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 [58] . 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 [59] .

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 [60] . 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 [61] . 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 [62] .

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 [63] .


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 [64] .

  • [1] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
  • [2] Ibid, para. 13.
  • [3] Ibid, para. 12.
  • [4] Ibid, paras. 14 and 211.
  • [5] Ibid, para. 15.
  • [6] Ibid, para. 16.
  • [7] Ibid, para. 236.
  • [8] Ibid, paras. 140 and 313 et seqq.
  • [9] Ibid, paras. 114 et seqq.
  • [10] Ibid, paras. 60 and 140.
  • [11] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [12] Ibid, para. 142.
  • [13] Ibid, para. 148.
  • [14] Ibid, paras. 153 and 146.
  • [15] Ibid, paras. 159 - 181.
  • [16] Ibid, para. 158.
  • [17] Ibid, para. 147.
  • [18] Ibid, paras. 183 et seqq.
  • [19] Ibid, para. 191.
  • [20] Ibid, para. 188.
  • [21] Ibid, paras. 195 et seqq.
  • [22] Ibid, para. 199.
  • [23] Ibid, para. 198.
  • [24] Ibid, para. 200.
  • [25] Ibid, para. 203.
  • [26] Ibid, para. 205.
  • [27] Ibid, para. 208.
  • [28] Ibid, para. 207.
  • [29] Ibid, para. 210.
  • [30] Ibid, para. 212.
  • [31] Ibid, paras. 215 et seq.
  • [32] Ibid, para. 220.
  • [33] Ibid, paras. 222 et seqq.
  • [34] Ibid, para. 225.
  • [35] Ibid, para. 233.
  • [36] Ibid, para. 228.
  • [37] Ibid, para. 230.
  • [38] Ibid, para. 237.
  • [39] Ibid. para. 241.
  • [40] Ibid, para. 242.
  • [41] Ibid, paras. 283 et seqq.
  • [42] Ibid, para. 285.
  • [43] Ibid, para. 288.
  • [44] Ibid, paras. 292 et seq.
  • [45] Ibid, paras. 298 et seqq.
  • [46] Ibid, para. 301.
  • [47] Ibid, para. 306.
  • [48] Ibid, para. 311.
  • [49] Ibid, para. 271.
  • [50] Ibid, para. 250.
  • [51] Ibid, para. 248.
  • [52] Ibid, para. 267.
  • [53] Ibid, paras. 256 and 259 et seq.
  • [54] Ibid, para. 262.
  • [55] bid, paras. 258 and 264.
  • [56] Ibid, paras. 263 and 265.
  • [57] Ibid, para. 265.
  • [58] Ibid, para. 273.
  • [59] Ibid, para. 274.
  • [60] Ibid, para. 276.
  • [61] Ibid, para. 277.
  • [62] Ibid, para. 281.
  • [63] Ibid, para. 315.
  • [64] Ibid, paras. 75 et seq.

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) [65] . 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) [66] .

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 [67] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [68] . It has signed licensing agreements with approx. 1,400 implementers [68] .

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) [69] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [70] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [71] .

In 2012, the parent company acquired patents included in the MPEG LA pool [66] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [72] , 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 [73] .

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 [74] . 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 [75] . 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 [76] .

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 [77] . 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 [78] (Huawei obligations or framework) with respect to dominant undertakings [79] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [80] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [81] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [81] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [82] . A dominant market position is given, when the use of the SEP is required for entering the market [82] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [82] .

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 [83] .

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 [84] . 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) [85] . 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 [86] .

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 [87] . 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 [88] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [89] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [90] . 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 [91] . 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 [92] . 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 [93] .

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 [94] .

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 [95] .

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 [96] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [96] . 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) [97] . 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 [98] . 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 [99] . 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 [100] .

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 [101] . 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 [102] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [102] . 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 [102] . The respective test is, however, subject to strict conditions [102] .

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) [103] . 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) [104] , 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 [105] .

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 [106] .

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 [107] . The implementer is not required to refer to a specific licensing agreement [107] .

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 [108] .

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 [109] .

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 [110] . 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 [111] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [112] . 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 [113] . 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 [114] .

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 [115] . 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 [116] .

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 [117] . 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) [118] . 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 [118] . 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 [118] . 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 [119] .

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 [120] . 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 [120] . 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 [121] .

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 [122] . 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 [122] . 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 [122] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [122] .

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 [123] . 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 [123] . 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 [124] . 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 [124] .

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 [125] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [126] . 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 [127] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [128] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [129] . 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 [129] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [130] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [131] . 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 [132] . 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 [133] .

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 [134] .

  • [65] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
  • [66] Ibid, para. 58
  • [67] Ibid, para. 57
  • [68] Ibid, para. 59
  • [69] Ibid, paras. 61 et seqq. and 340
  • [70] Ibid, para. 65
  • [71] Ibid, para. 66
  • [72] Ibid, para. 73
  • [73] Ibid, para. 42
  • [74] bid, para. 74
  • [75] Ibid, paras. 75 et seq
  • [76] Ibid, para. 75
  • [77] Ibid, paras. 127 – 254
  • [78] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
  • [79] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
  • [80] Ibid, para. 283 and paras. 291 et seqq
  • [81] Ibid, para. 286
  • [82] Ibid, para. 287
  • [83] Ibid, paras. 291 et seqq
  • [84] Ibid, para. 296
  • [85] Ibid, para. 300
  • [86] Ibid, para. 302
  • [87] Ibid, para. 308
  • [88] 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
  • [89] Ibid, para. 305
  • [90] Ibid, paras. 306 et seqq
  • [91] Ibid, para. 310
  • [92] Ibid, para. 311
  • [93] Ibid, para. 312
  • [94] Ibid, para. 421
  • [95] Ibid, para. 314
  • [96] Ibid, para. 320
  • [97] Ibid, para. 318
  • [98] Ibid, para. 329
  • [99] Ibid, paras. 336 et seq
  • [100] Ibid, para. 338
  • [101] Ibid, para. 198
  • [102] Ibid, para. 315
  • [103] Ibid, paras. 340 et seq
  • [104] Ibid, paras. 342 et seqq
  • [105] Ibid, para. 344
  • [106] Ibid, para. 346
  • [107] Ibid, para. 348
  • [108] Ibid, para. 352
  • [109] Ibid, para. 367
  • [110] Ibid, para. 369
  • [111] Ibid, para. 370
  • [112] Ibid, para. 378
  • [113] Ibid, para. 371
  • [114] Ibid, para. 374
  • [115] Ibid, para. 376
  • [116] Ibid, para. 377
  • [117] Ibid, para. 380
  • [118] Ibid, para. 381
  • [119] Ibid, para. 386
  • [120] Ibid, para. 382
  • [121] Ibid, para. 387
  • [122] Ibid, para. 391
  • [123] Ibid, para. 392
  • [124] Ibid, para. 393
  • [125] Ibid, para. 397
  • [126] Ibid, para. 398
  • [127] Ibid, para. 399
  • [128] Ibid, para. 402
  • [129] Ibid, para. 404
  • [130] Ibid, para. 410
  • [131] Ibid, para. 413
  • [132] Ibid, para. 416
  • [133] Ibid, para. 417
  • [134] 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 [135] (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 [136] 。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 [137] 。 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”) [138]

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 [139]

 

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 [140] 。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 [140]

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 [141] 。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 [142] 。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 [142] 。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 [143]

 

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 [144] 。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 [145] [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 [144] 。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 [144] 。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) [144] 。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 [146]

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 [147] 。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 [148]

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) [149] 。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 [149]

 

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 [150]

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) [151] 。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 [152] 。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 [151]

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 [151] 。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 [151]

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 [153] 。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 [154]

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 [155] 。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 [156]

 

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 [157]

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 [158] 。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 [158]

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 [159] 。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“ [159] 。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 [160] 。法院指出,有数种手段可以确保这种情况不会发生 [160]

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 [160] 。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 [160] 。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 [160]

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 [161] 。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 [161]

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 [162] 。 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 [163] 。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 [164] 。连网功能确保了创造此一价值的机会 [165] 。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 [166]

 

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 [167]

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 [168] 。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 [168] 。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” [168]

《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 [169]

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 [170] 。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 [171] 。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 [172] 。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 [173]

 

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 [174]

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 [175] 。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 [175] 。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 [175]

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 [176] 。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 [177] 。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 [177]

 

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 [178]

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 [179] 。而在当前诉讼中情况并非如此 [180]

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 [181] 。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 [181]
 

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 [182] 。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 [183]
 

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  • [136] 同上注, 段 49-136。
  • [137] 同上注, 段 138。
  • [138] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [139] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19, 段 144。
  • [140] 同上注, 段 146。
  • [141] 同上注, 段 147。
  • [142] 同上注, 段 148。
  • [143] 同上注, 段 149。
  • [144] 同上注, 段 152。
  • [145] 同上注, 段 151-156。
  • [146] 同上注, 段 248。
  • [147] 同上注, 段 153 及以下。
  • [148] 同上注, 段 154。
  • [149] 同上注, 段 155。
  • [150] 同上注, 段 157-231。
  • [151] 同上注, 段 158。
  • [152] 同上注, 段 159。
  • [153] 同上注, 段 161。
  • [154] 同上注, 段 197-199。
  • [155] 同上注, 段 157, 160 及 162-164。
  • [156] 同上注, 段 160 及 165-168。
  • [157] 同上注, 段 169。
  • [158] 同上注, 段 170。
  • [159] 同上注, 段 171。
  • [160] 同上注, 段 172。
  • [161] 同上注, 段 173。
  • [162] 同上注, 段 174 及以下。
  • [163] 同上注, 段 174。
  • [164] 同上注, 段 177。
  • [165] 同上注, 段 180。
  • [166] 同上注, 段 187 及以下。
  • [167] 同上注, 段 201-212。
  • [168] 同上注, 段 202。
  • [169] 同上注, 段 203。
  • [170] 同上注, 段 205。
  • [171] 同上注, 段 210。
  • [172] 同上注, 段 213。
  • [173] 同上注, 段 215。
  • [174] 同上注, 段 216 及以下。
  • [175] 同上注, 段 217。
  • [176] 同上注, 段 218。
  • [177] 同上注, 段 230。
  • [178] 同上注, 段 232 及以下。
  • [179] 同上注, 段 234, 236 及以下。
  • [180] 同上注, 段 240 及以下。
  • [181] 同上注, 段 239。
  • [182] 同上注, 段 253 及 291。
  • [183] 同上注, 段 291。