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 三月 2018

OLG Düsseldorf

OLG Düsseldorf
18 七月 2017 - Case No. I-2 U 23/17

A. Facts

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

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

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

B. Court’s reasoning

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

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

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

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

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

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

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

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

C. Other issues

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

The court suggested that the unjustified refusal of a licensee to enter into a NDA does not release the SEP-holder from the obligations established by the Huawei judgement, namely the obligation to make a FRAND offer to the licensee and specify the underlying conditions (particularly the price calculation). An unjusti­fied refusal of the licensee to sign a NDA shall, however, lead to easing the SEP-holder’s burden to provide the licensee with detailed explanations regarding the justification of its licensing conditions, to the extent that this is required for protecting its justified confidentiality interests. Instead of detailed information, “merely indicative observations would, basically, suffice. The licensee cannot object the FRAND con­formity of the SEP-holder’s offer based on the insufficient specification of the licensing terms.
Updated 10 四月 2019

华为诉中兴通信

欧洲联盟法院判决
16 七月 2015 - Case No. C-170/13

A. 事实

原告华为技术有限公司持有由欧洲电信标准协会(ETSI)所发展的对实施LTE无线通信技术标准必不可少的专利(标准必要专利或SEP) [1] 。 原告于2009年3月向ETSI承诺愿依照公平、合理和无歧视(FRAND)的条款与条件向实施人提供该专利 [2]

被告中兴通讯股份有限公司以及中兴通讯德国分公司本身也拥有几项与LTE标准相关的标准必要专利 [3] ,同时其也在德国等市场销售符合LTE标准的产品 [4]

在2010年11月至2011年3月之间,双方就原告所持有的标准必要专利组合的许可事宜进行了讨论 [4] 。原告提出了其所认为合理的许可费率,而另一方面,被告则试图达成交叉许可协议 [5] 。于是,此项许可协议的要约未能达成最终协议 [5]

原告其后于2011年4月在德国杜塞尔多夫地区地方法院(Landgericht)向被告提起诉讼,寻求针对被告的禁令救济,要求被告就其过去的使用行为开立担保帐户的账目,召回其产品,并针对其专利侵权行为请求损害赔偿 [6]

杜塞尔多夫地区地方法院暂时停止了诉讼程序,并根据《欧洲联盟运作条约》(TFEU)第267条的规定,向欧洲联盟法院(CJEU)提出了进行先行裁决的请求。简而言之,杜塞尔多夫地区地方法院指出,德国联邦法院(Bundesgerichtshof)和欧洲联盟委员会在有关于何种情况下,标准必要专利持有人对标准必要专利实施人提出的禁令诉讼将构成对市场支配地位的滥用而违反了《欧洲联盟运作条约》第102条此一问题上,似乎采取了相互矛盾的立场 [7] 。德国联邦法院在其橙皮书案裁决中裁定,在涉及标准必要专利的侵权诉讼中,被告只有在其以达成许可协议为目的向专利持有人发出不含附带条件、公平的许可要约,并且对其过去以及其后可能发生的使用行为所衍生的许可费的支付提交保证金的情况下,才有权根据《欧洲联盟运作条约》第102 条提出抗辩(并且因此可避免禁令的核发) [8] 。然而,欧洲联盟委员会在有关三星于多个欧盟成员国内针对苹果公司采取的执法行动的几个诉讼中却认为,在被告已经表明愿意根据专利持有人的FRAND承诺,以FRAND条款进行许可谈判的情况下,针对标准必要专利采取禁令救济的行为原则上违反了《欧洲联盟运作条约》第102条 [9]

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

  • 首先,标准必要专利持有人必须透过“明确指出其遭受侵权的为何项专利,并指明被指控的侵权人以何种方式侵权”的方式,对专利实施人进行侵权通知,并且
  • 第二,如果被指控的侵权人表示愿意按照FRAND条款达成许可协议,则标准必要专利持有人必须“向该被指控的侵权人提出符合此种条款的具体书面许可要约,特别是必须指明许可费及其所使用的计算方式 [10]

相对地,标准必要专利实施人只有在没有任何延迟地回应标准必要专利持有人所发出的许可要约的情况下,才可以主张标准必要专利持有人寻求禁令救济和/或召回侵权产品的行为具备滥用市场支配地位的性质 [11] 。如果标准必要专利实施人拒绝接受该许可要约,则必须:

  • 立即以书面提出向标准必要专利持有人提出符合FRAND条款的特定反许可要约 [12] ,并且
  • 如果其所提出的反许可要约遭到拒绝,则必须就其对该专利的使用行为提供适当的担保,例如提供银行担保或将所需金额存入保证金帐户 [13]

欧洲联盟法院明确指出,上述框架不适用于标准必要专利持有人对实施人过去的使用行为所造成的损害提出损害赔偿和/或开设担保帐户的主张;与这些主张相关的诉讼不会构成对《欧洲联盟运作条约》第102条的违反,因为它们对符合该项标准的产品是否可以出现或保留在市场上没有影响 [14]

B. 法院的论理

欧洲联盟法院强调对衡平的需求,一方面需要对标准必要专利持有人的核心基本知识产权进行有效司法保护,另一方面也需要维持自由且不失真的市场竞争的公共利益 [15]

由于当事各方并未就原告在市场上的支配地位提出异议,法院的分析着重于是否存在《欧洲联盟运作条约》第102条所称的“滥用行为” [16] 。欧洲联盟法院认为,行使知识产权权利的行为本身并不会构成“滥用行为”,即便此一行使权利者是在市场中占有支配地位的企业 [17] 。此外,仅在“特殊情况”下,行使知识产权权利的行为才可能构成滥用市场支配地位的行为 [18]

涉及标准必要专利的案件与其他与知识产权相关的案件存在本质上的不同,其原因在于:首先,一项专利已取得标准必要专利地位这一事实意味着该专利的持有人可以透过“阻止竞争对手制造的产品出现或保留在市场上,从而将涉案产品的制造权保留专属于自己” [19] 。除此之外,对实施标准的第三方而言,专利持有人通过做出FRAND承诺创造出一种第三方可以按FRAND条款取得标准必要专利的“合法期待” [19] 。考虑到标准必要专利持有人创造了此一“合法期待”,原则上,当标准必要专利持有人拒绝授予其FRAND许可时,在侵权诉讼中被起诉的专利实施人可以通过援用《欧洲联盟运作条约》第102条为自己进行抗辩 [20]

尽管标准必要专利持有人诉诸法律程序来保护其知识产权的权利不能被剥夺,欧洲联盟法院仍然认为,标准必要专利持有人做出FRAND承诺正当化了其在寻求禁令救济时应该遵守某些特定要求的义务 [21] 。特别是为了避免违反《欧洲联盟运作条约》第102条,标准必要专利持有人应满足以下条件:(a)在提起禁令救济诉讼之前,标准必要专利持有人必须透过“明确指出其遭受侵权的为何项专利,并指明被指控的侵权人以何种方式侵权”的方式,对专利实施人进行侵权通知 [22] ,并且(b)如果被指控的侵权人表示愿意按照FRAND条款达成许可协议,则标准必要专利持有人必须“向该被指控的侵权人提出符合此种条款的具体书面许可要约,特别是必须指明许可费及其所使用的计算方式 [23] 。在这种情况下,欧洲联盟法院认为,可以合理期待标准必要专利持有人有能力提出这样的要约,因为一般来说并不存在公开的标准必要专利许可协议,并且标准必要专利持有人与第三方间签订的现有协议条款也不会被公开,因此,标准必要专利人“比起被指控的侵权人更有能力检查其要约是否符合不歧视的条件” [24]

另一方面,(被指控的)侵权人也必须“本于善意并依据该领域公认的既存商业惯例”对标准必要专利持有人的要约认真地做出回应 [11] 。(被指控的)侵权人是否符合此要求则必须基于“客观因素”来判定,这尤其意味着(被指控的)侵权人没有使用“延迟策略” [11]

如果(被指控的)侵权人认为标准必要专利持有人所提出的条款不符合其FRAND承诺,并选择拒绝标准必要专利持有人所提出的许可要约,则(被指控的)侵权人就必须向标准必要专利持有人提交一份符合FRAND条款的具体书面反要约 [12] 。如果其所提出的反要约遭到标准必要专利持有人的拒绝,并且(被指控的)侵权人已经在没有许可的情况下使用了涉案的标准必要专利,则(被指控的)侵权人有义务根据该领域公认的既存商业惯例就其使用行为提供“适当的担保”,例如提供银行担保或将所需金额存入保证金帐户 [13] 。针对该担保的计算除了必须包含“ 对标准必要专利过去的使用行为的数额”外,(被指控的)侵权人还必须能够就这些使用行为开立担保帐户 [13]

当(被指控的)侵权人提出反要约后双方仍然不能达成协议时,欧洲联盟法院指出,当事方可以选择以“共同协议”的方式,没有拖延地请求“由独立的第三方即刻对许可费数额进行决定” [25]

最后,欧洲联盟法院明确指出,(被指控的)侵权人有权在许可谈判进行的同时,对标准必要专利持有人所持有的专利的有效性和/或标准必要性和/或实际使用进行挑战,或保留未来这样做的权利 [26]

 

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

Updated 9 十一月 2020

夏普诉戴姆勒

慕尼黑地区法院
10 九月 2020 - Case No. 7 O 8818/19

A. 事实


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

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

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

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

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

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

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

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

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

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

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

在诉讼程序进行的过程中,夏普与参加诉讼的其中一家戴姆勒供应商达成了许可协议。因此,夏普修改了其在诉讼中的主张。

法院在当前判决 [27] (引自https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2020-N-22577?hl=true)中对对戴姆勒核发了禁令,并确认戴姆勒应承担实质性损害赔偿的责任。法院还要求戴姆勒必须召回并销毁侵权产品、开立担保帐户、并且提供计算夏普所受损失必需的相关信息。

 

B. 法院的论理

法院认为,本案涉案专利为实施4G / LTE标准时所必要 [28] ,并且该专利遭受侵权行为 [29] 。因此,夏普有权享有包含禁令救济在内的各项诉讼上主张 [30]

戴姆勒主张了所谓的“FRAND抗辩”,基本上认为夏普提起侵权诉讼的行为构成了对其市场支配地位的滥用,从而违反了《欧洲联盟运作条约》(TFEU)第102条,因此其禁令救济主张应予否决。除此之外,戴姆勒等主张夏普未能遵守欧洲联盟法院(CJEU)在华为诉中兴案 [31] 中所确立的行为义务(以下称“华为案判决”或“华为框架”)。

法院驳回了戴姆勒提出的FRAND抗辩,并且认为戴姆勒不能通过其供应商获得FRAND抗辩 [32]

滥用市场支配地位

法院认为,当专利持有人未能做出“充分努力”来满足其因居于市场支配地位所应承担的“特殊责任”并致力促成与“原则上有取得许可意愿”的被许可人间许可协议的签署时,专利持有人因为行使其标准必要专利权而构成对市场支配地位的滥用的情况便可能产生 [33] 。然而,这需要未经权利持有人许可就已经使用了该项受保护技术的实施人愿意按照FRAND条款取得许可方可能实现 [34] 。法院进一步阐明,标准必要专利持有人不能向法院提出对任一标准实施人“强制施加”许可协议的主张 [34]

基于以上所述,法院认为,夏普提起本案诉讼的行为并未构成《欧洲联盟运作条约》第102条下对市场支配地位的滥用 [35] 。法院并未确认夏普是否真实具备市场支配地位,而仅只是假设情况确实如此 [35] 。尽管如此,由于戴姆勒未能充分表达出其取得夏普所持有的标准必要专利组合的许可的意愿,夏普对其(假定的)市场支配地位的滥用并不成立 [36]
 

取得许可的意愿

法院解释到,实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议,并且随后以一种“目的性导向”的态度来进行许可谈判(引用德国联邦法院2020年5月5日在Sisvel诉Haier案中的判决– Sisvel v Haier, Case No. KZR 36/17以及英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711(Pat)-Unwired Planet v Huawei) [34]

这意味着实施人不应拖延许可谈判的进行 [37] 。在法院看来,这尤为重要,其原因在于实施人通常在许可谈判开始之前就已经使用了该标准化技术专利,而拖延许可协议的签署直至该专利到期失效为止对他们而言可能是具备完全且优势利益的 [37]

尽管如此,法院认为,戴姆勒并未展现出一个“善意”被许可人应有的态度 [36]

从戴姆勒在向夏普提出许可反要约之前的行为来看,法院认为戴姆勒缺少了“明确”的取得许可意愿的表达 [38] 。在其于2019年6月7日对夏普做出的第一份答复中,戴姆勒并没有做出任何形式的承诺是超出如同“若其确实使用了夏普的专利就愿意讨论是否取得许可”这样概括性意愿表达的 [39] 。此外,戴姆勒在其2019年7月23日的信函中也未包含适当表达其取得许可意愿的声明,特别是当戴姆勒仅仅是将夏普转介给其(甚至未指明名称的)供应商,并且坚持认为夏普有义务对其供应商授予许可时 [40] 。此情况于戴姆勒在2019年9月18日所作出的声明中亦相同,戴姆勒在该声明中再度将夏普转介给其供应商,同时还拒绝向夏普提供草拟许可要约所必需的相关信息 [41] 。法院指出,尽管披露夏普所要求的信息的法律上义务并不存在,戴姆勒多次的各种拒绝明确显示其并非以“目的性导向的态度”来参与讨论,而只是为了拖延许可谈判的进行 [42] 。戴姆勒在夏普提出相关要求后将近六周的时间才作出回覆的这一事实更加证实了上述观点,法院认为戴姆勒不具备任何理由而需要花费这么长时间的才能作出回覆 [42]

此外,法院指出,戴姆勒在与Avanci平台谈判过程中的整体行为进一步证实了戴姆勒作为一个“恶意”被许可人的这一结论 [43] 。法院认为,在评估提出FRAND抗辩的实施人是否具备“取得许可的意愿”时,应该将实施人的整体行为纳入考量范围,而不是仅考虑实施人在收到侵权通知后时间维度上立即发生的事实 [44] 。评估实施人是否具备取得许可意愿的标准不应该取决于究竟是由专利持有人首先开始与实施人接洽抑或是相反地由实施人主动发起向专利持有人寻求许可这样相对随机的事实 [45] 。尽管华为判决中所确立的行为义务(其中一项为通过表达取得许可的“意愿”来对侵权通知做出回覆)原则上应该按照欧洲联盟法院所描绘的那样按“步骤”进行操作,然而,视具体个案情况的不同,例外应被允许,在当事方的行为存在应被允许的例外情况时,以一种存粹“形式性“的观点来看待华为框架似乎并不恰当 [46] 。法院认为,本案即是此种情况,因为戴姆勒自2016年9月以来即持续与Avanci接洽,并且从未在任何一个时间点表达其愿意取得许可 [47]

法院进一步指出,戴姆勒于2019年12月17日提出的许可反要约是在侵权诉讼已经被提起后才提出的,此无法弥补其取得许可意愿的缺失 [48] 。法院认为,戴姆勒所提出的许可反要约中附带了要求夏普同意中止正在进行的诉讼程序的条件,此一事实表明,于本案中戴姆勒唯一的目的只是在拖延许可谈判的进行;因此,此一许可反要约的提出并不能弥补戴姆勒在截至当时为止所表现出的“巨大恶意” [49] 。在一点上,法院表示,在诉讼进行过程中对瑕疵行为进行补正(例如:通过提出许可反要约)的可能原则上是被允许的,然而,随着审判进行至越后期,允许补正的条件将越来越严格 [50]

法院还强调,就内容而言,戴姆勒所提出的许可反要约并没有表达出其愿按“任何实际上符合FRAND的条款”取得许可的意愿 [51] 。通过提出一个不同的“参考点”来计算许可费,戴姆勒仅只是针对夏普要约中许可费的一小部分或Avanci从其竞争对手处收取的整体费用部分做出了反要约,如此一来对方拒绝此许可反要约就成为了一种“逻辑上的必要” [52]

于此脉络下,法院明确指出,就是否具备取得许可意愿的评估仅戴姆勒的行为是相关的 [53] 。更重要的是,戴姆勒不能以其参加诉讼的供应商“声称“有向夏普取得许可的意愿为由来避免禁令的核发 [54] 。因此,法院并没有就戴姆勒的供应商是否确实为“善意被许可人”进行审查 [54]
 

无歧视 / 许可层级

除上述几项观点外,法院进一步阐明,夏普仅对作为终端设备制造商的戴姆勒要求取得许可的行为并未构成滥用或歧视性行为 [55]

法院认为,夏普没有义务对戴姆勒的供应商授予许可 [56] 。在(德国的)汽车行业中,由供应商来取得与其出售给汽车制造商的零部件相关的许可此一作法十分常见,但这并不意味着夏普就必须尊重且接受这种作法 [57] 。相反地,随着其产品越来越广泛地使用无线通信技术,戴姆勒必须接受于该行业中盛行的作法,其中也包括向终端设备制造商进行许可 [57]

无论如何,法律上夏普都没有必须对零组件制造商授予许可的义务;其仅有义务必须许可对其所持有实施某一标准的标准必要专利的“使用” [58] 。专利持有人对欧洲电信标准协会所做出的承诺创造了一项将标准必要专利对第三方进行许可的义务 [59] 。尽管如此,法院强调,这并不意味着标准必要专利持有人有义务对价值链中各个层级的每一个参与者皆授予许可 [60] 。这种义务既不是源于竞争法,也并非由于对欧洲电信标准协会做出的FRAND承诺与专利法或合同法相结合而产生 [60]

特别是,欧盟竞争法并未规定必须在价值链的各个层级上对标准必要专利进行许可的义务 [61] 。法院认为,原则上,专利持有人有权自由选择要在价值链中的哪一个层级对其所持有的专利进行许可 [62] 。在华为案判决中,欧洲联盟法院指出,FRAND承诺为第三方创造出的是一种其可以由专利持有人处获得许可的“合法期待”。然而,法院认为,这并不构成必须对终端设备制造商的所有供应商进行许可的义务;进入市场并不一定需要取得许可,而是只要能有“合法使用的可能性”即可,这可以是例如通过对价值链最后一级参与者授予的许可,供应商便可以借此获得“代工权” [62]

法院还解释到,即使是在专利法中也未规定标准必要专利必须在价值链中的哪一个层级被许可 [63] 。特别是,并非所有包含于标准必要专利组合中的个别专利的专利权都必须在零组件制造商层级就产生穷竭的这一事实,更加支持了在终端设备层级进行许可的做法(除此之外,此种做法也可以更有效地对许可费用进行管理) [64]

最后,法院指出,合同法与对欧洲电信标准协会做出的FRAND承诺相结合并不会对专利持有人施加对每一个有兴趣的第三方进行许可的义务 [65] 。根据其所适用的法国法律,欧洲电信标准协会知识产权政策第6.1条应被理解为仅只是规定了必须本于诚信原则与有意愿取得许可的第三方进行FRAND许可协议谈判的义务 [66] 。然而,通过对“设备”的明确指称,此条款仅适用于终端设备制造商,因为并非所有的零组件都必然以某标准为一个整体的形式来实施该标准 [67] 。在法院看来,欧洲联盟委员会过去在不同场合所表达的观点也并不会得出不同的结论同上注, 段 180-183。 法院特别引用了欧盟委员会在摩托罗拉案(European Commission, Case No. AT.39985 – Motorola)中的决定,以及 the Communication on the Guidelines on the applicability of Article 101 TFEU to horizontal co-operation agreements (2011/C 11/01); 及 the Communication on ICT Standardisation Priorities for the Digital Single Market, COM(2016) 176 final。
 

供应商提出的FRAND抗辩护

法院进一步认为,戴姆勒无法从其供应商所提出的FRAND抗辩护中获益 [69] 。被告仅在当专利持有人有义务对供应商进行许可时,才可以倚仗此种抗辩;然而,此情形于在充分考量了相关价值链中可能产生的专利权穷竭问题后,被告本身仍有能力与标准必要专利持有人签署许可时,则没有其适用 [69] 。 法院认为本案即是此种情况。戴姆勒的供应商本身并没有单独作出要求获得夏普的许可的主张,而只是主张对标准化技术应享有“受法律保障的使用”,而这并不能支持戴姆勒的主张 [70]

 

C. 其他重要问题

此外,法院认为没有理由基于比例原则考量而对夏普所提出的禁令救济主张进行限制 [71] 。戴姆勒曾辩称,其认为不应根据本案涉案专利而核发禁令,因其所生产的车辆是由大量零组件组合而成的“复杂”产品,而使用夏普所持有的标准必要专利的远程控制单元对于汽车整体而言的重要性极其微小。

法院明确指出,根据德国法律,比例原则是一项具备宪法位阶的一般性原则,如果被告以此原则为由提出异议,则法院在审查禁令救济问题时也应予以考虑 [72] 。根据联邦法院的判例,禁令在实施人将遭受因专利持有人违反诚信原则行使排他性权利而产生的危害这样的特殊情况下,就可能无法立即执行 [73]

在法院看来,任何对禁令救济权的限制都应该在“极少数特殊情况下”才有其适用,因此必须受到严格的条件限制,尤其是当为了维护“法律秩序”以及“法律的确定性与可预测性”时 [74] 。在整体实质性和程序性框架下(包括例如为执行一审所核发的禁令需提供担保),就所有相关事实对具体个案逐一进行评估是必须的 [74] 。法院解释到,只有在此一危害超出执行禁令通常会产生的后果时才可能被考虑 [74] 。同时,应该可以期待侵权人会在收到侵权通知后做出努力以尽快达成许可协议的签署并且至少采取一定预防措施来防止可能对其主张的禁令 [74]

于此脉络下,法院指出,尽管在本案中受影响的可能仅只是戴姆勒所制造车辆中的单个部件,本案各争点依旧是围绕着一个复杂的专利组合(不论究竟是夏普或者Avanci的专利组合)的许可问题而产生 [75] 。此外,法院也不认同夏普专利所具有的功能对戴姆勒的车辆而言是不重要的,此原因在于,“联网汽车”这一创新发明中很大的一部分,不论是从技术层面还是经济角度出发,都与移动通信技术紧密相关 [76] 。最后,法院还批判了戴姆勒并未做出任何实际的努力以寻求与夏普或Avanci签署许可协议的事实 [77]

  • [27] Sharp v Daimler, District Court of Munich, judgment dated 10 September 2020, Case-No. 7 O 8818/19。
  • [28] 同上注, 段 68 及以下。
  • [29] 同上注, 段 25 及以下。
  • [30] 同上注, 段 90。
  • [31] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [32] Sharp v Daimler, District Court of Munich, judgment dated 10 September 2020, Case-No. 7 O 8818/19, 段 121。
  • [33] 同上注, 段 124。
  • [34] 同上注, 段 125。
  • [35] 同上注, 段 128。
  • [36] 同上注, 段 130 及以下。
  • [37] 同上注, 段 126。
  • [38] 同上注, 段 132 及以下。
  • [39] 同上注, 段 134 及以下。
  • [40] 同上注, 段 136 及以下。
  • [41] 同上注, 段 138 及以下。
  • [42] 同上注, 段 140。
  • [43] 同上注, 段 141。
  • [44] 同上注, 段 142 及以下。
  • [45] 同上注, 段 143 及以下。
  • [46] 同上注, 段 144。
  • [47] 同上注, 段 146-149。
  • [48] 同上注, 段 150。
  • [49] 同上注, 段 151 及段153。
  • [50] 同上注, 段 152。
  • [51] 同上注, 段 154。
  • [52] 同上注, 段 154 及以下。
  • [53] 同上注, 段 158 及段 159。
  • [54] 同上注, 段 158。
  • [55] 同上注, 段 161 及以下。
  • [56] 同上注, 段 162。
  • [57] 同上注, 段 164。
  • [58] 同上注, 段 165。
  • [59] 同上注, 段 168。
  • [60] 同上注, 段 169。
  • [61] 同上注, 段 170 及以下。
  • [62] 同上注, 段 171。
  • [63] 同上注, 段 173 及以下。
  • [64] 同上注, 段 174。
  • [65] 同上注, 段 175 及以下。
  • [66] 同上注, 段 177 及以下。
  • [67] 同上注, 段 178。
  • [68] 同上注, 段 180-183。 法院特别引用了欧盟委员会在摩托罗拉案(European Commission, Case No. AT.39985 – Motorola)中的决定,以及 the Communication on the Guidelines on the applicability of Article 101 TFEU to horizontal co-operation agreements (2011/C 11/01); 及 the Communication on ICT Standardisation Priorities for the Digital Single Market, COM(2016) 176 final。
  • [69] 同上注, 段 167。
  • [70] 同上注, 段 185。
  • [71] 同上注, 段 92-102。
  • [72] 同上注, 段 93。
  • [73] 同上注, 段 94。
  • [74] 同上注, 段 95。
  • [75] 同上注, 段 97 及以下。
  • [76] 同上注, 段 100 及以下。
  • [77] 同上注, 段 99。

Updated 26 一月 2017

NTT DoCoMo v HTC

曼海姆地区法院
29 一月 2016 - Case No. 7 O 66/15

  1. Facts
    Claimant owns the patent EP 1 914 945, declared to be essential with regard to ETSI’s UMTS standard. Defendant markets devices implementing the UMTS standard (in particular the HSUPA/EUL technology). On 19 March 2014 Claimant sent to Defendant’s group parent a detailed licensing offer and explained its conditions at several instances before filing suit in April 2015. As of 7 April 2014 and 15 July 2014, Claimant communicated to Defendant’s group parent company claim charts in order to demonstrate standard-essentiality of its patent and further explained the issue in a presentation on 8 July 2014. Defendant submitted its first counter-offer on 30 October 2015. The counter-offer envisaged a 3 year-license limited to some of the countries in which Defendant markets its products. Claimant rejected the counter-offer on 12 November 2015. Defendant did not provide security but merely promised to do so, based on a calculation including sales of relevant devices in Germany only. Claimant rejected this and demanded security based on worldwide sales.
  2. Court’s reasoning
    1. General meaning of the Huawei framework
      Prior to discussing specific conduct requirements established by the Huawei ruling, the court sketches its approach in a general manner. [78] According to the court the Huawei decision establishes a set of rules of due conduct in SEP licensing negotiations. Based on whether the parties comply with these rules the respective court can determine whether an SEP owner’s seeking of an injunction and a recall of products constitutes an abuse of a position of market dominance or a justified reaction to a standard implementer’s delaying tactics. In consequence, the respective court does not—unless it has to decide a claim for the payment of licensing fees and not claims for injunction and recall of products—have to rule on the substance of the offered licensing conditions or their being FRAND. [79] This is in line with recognized commercial practice according to which reasonable parties will not usually want courts to determine their licensing conditions. Furthermore, the ECJ has—from the perspective of the Mannheim District court—stressed that the exercise of the exclusive rights conveyed by a patent will be barred only in very exceptional circumstances. As a result, it is up to the standard implementer to show that such exceptional circumstances are present. [80]
    2. Market power and notice of infringement
      The court does not elaborate on the market power issue. As part of the notice of infringement [81] the court deems it necessary for the proprietor to identify the (allegedly) violated patent, including the patent number, and to inform that the patent has been declared standard-essential. Furthermore, the proprietor has not only to name the standard but to specify the pertinent part of the standard and the infringing element of the implementer’s products in a way that enables the standard implementer to assess whether its use of the standard infringes on the patent-in-suit. The level of detail required must be determined on a case-by-case basis, depending mainly on the expertise of – or available to – the implementer. Presenting claim charts corresponding to recognized commercial practice for licensing negotiations is, in principle, an acceptable way to give notice of the alleged infringement. In casu the court considered the proprietor’s notice as sufficient. [82] In particular, notice was given before the bringing of an action for infringement and the proprietor had submitted claim charts not only with regard to the patent-in-suit but also with regard to six other patents from the portfolio offered for license, a sample which the court deemed in accordance with recognized commercial practice. Sufficient notice having taken place, the court left open the question whether, (1) the Huawei rules applied at all in spite of the action being brought before the ECJ’s decision, and whether (2) the proprietor was obliged to submit claim charts for other patents than the patent-in-suit.
    3. The SEP proprietor’s licensing offer
      The court’s general understanding of the Huawei rules of conduct (cf. above) has a considerable impact on the way it intends to react to a SEP proprietor’s licensing offer: [83] The offer must specify the relevant conditions in a way that, in order to conclude a licensing agreement, the standard implementer has merely to state his acceptance of the offer. The calculation of the license fee, in particular, must be explained in a manner that enables the standard implementer to objectively assess its FRAND conformity. Even if the standard implementer disputes the FRAND character of the offer it is not the court’s business to determine whether the licensing conditions are actually FRAND. Neither is the SEP proprietor prohibited from offering conditions slightly above the FRAND threshold. A differing view of the parties on what constitutes FRAND is to be expected and provides no reason for cartel law-based intervention. An exploitative abuse of market power can, however, be present where the proprietor, after having made a FRAND declaration, offers conditions that are, under the circumstances of the case and without objective justification, manifestly less favorable (in an economic sense) than the conditions offered to other licensees. Correspondingly, the respective court is only required to determine, based on a summary assessment, whether the proprietor’s licensing offer evidently violates the FRAND concept. In casu the court accepted the Huawei compliance of the licensing offer, [84] in particular because the proprietor had explained its calculation of the licensing fee based on the percentage of patents in the WCMA/SIPRO and the VIA patent pools held by the proprietor. The proprietor was not required to prove its share in the patent pools. The parties disagreed over whether the smallest saleable unit forms an appropriate basis for royalty calculation and whether it is acceptable to look only at the size, not the quality of a proprietor’s share in a relevant patent pool. The court, however, considered these issues as not decisive for the Huawei-conformity of the licensing offer.
    4. The standard implementer’s reaction
      As a further consequence of the court’s general approach, the standard implementer’s duty to diligently react to the proprietor’s licensing offer is not removed only because the offer does not fully comply with FRAND. [85] . An exception applies only where it can be established by a mere summary assessment that the offer evidently violates FRAND. If a reaction of the alleged infringer is due, the “diligence”, i.e. timeliness, of this offer has to be determined cases-by-case, based on the principles of good faith and recognized commercial practice. In casu the standard implementer’s reaction was insufficient (1) because a counter-offer was made only 1.5 years after receiving the licensing offer and 0.5 years after the bringing of the proprietor’s action, (2) because security was merely promised, not provided, and (3) because the amount of security offered fell short of the court’s suggestions.
  3. Other important issues
    The court underlines that a SEP proprietor has to respect the Huawei rules of conduct only with regard to an action for prohibitory injunction or the recall of products. It is, however, free from their grip when bringing an action seeking the rendering of accounts in relation to past acts of use or an award of damages in respect of those acts of use.
  • [78] Case No. 7 O 66/15, para. 53 et seq.
  • [79] Case No. 7 O 66/15, para. 56
  • [80] Case No. 7 O 66/15, para. 53
  • [81] Case No. 7 O 66/15, para. 57
  • [82] Case No. 7 O 66/15, para. 65-69
  • [83] Case No. 7 O 66/15, para. 58
  • [84] Case No. 7 O 66/15, para. 70-72
  • [85] Case No. 7 O 66/15, para. 59 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 [86] ,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 [87]

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 [88] 。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 [89] ,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 [90]

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 [91]

联邦法院于2020年5月5日做出的当前判决 [92] 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 [93]

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 [94] 。 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 [95]

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 [96] ,因此,需要将许多因素共同纳入考量 [97] 。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 [98]

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 [99]

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 [100] 。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 [101] 。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 [102] 。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 [103]

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 [104] 。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 [104] 。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 [104]

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 [105] 。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 [105]

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 [106]

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 [107] 。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 [107] 。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 [108]

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) [109]
  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 [110]

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 [111] 。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 [113] 。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 [113] 。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 [114]

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 [115] 。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 [116] 。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 [116] 。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) [116] 。 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 [117] 。这也适用于涉及多项专利和标准的情况 [117]

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 [118]

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 [119] 。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 [120] 。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 [120] 。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 [120] 。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 [121] 。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 [122]

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) [123] 。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 [123] 。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 [123]

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” [124]

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 [125] 。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 [125]

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 [126]

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 [127]

 

  • [86] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 93/14。
  • [87] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 13 January 2016, Case No. I-15 U 66/15。
  • [88] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [89] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 66/15。
  • [90] Federal Patent Court, judgment dated 6 October 2017, Case No. 6 Ni 10/15 (EP)。
  • [91] Federal Court of Justice, judgment dated 10 March 2020, Case No. X ZR 44/18。
  • [92] 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)。
  • [93] 同上注, 段 9以下及段59。
  • [94] 同上注, 段 52。
  • [95] 同上注, 段 54。
  • [96] 同上注, 段 56。
  • [97] 同上注, 段 57 及以下。
  • [98] 同上注, 段 58。
  • [99] 同上注, 段 59 及以下。
  • [100] 同上注, 段 61。
  • [101] 同上注, 段 63。
  • [102] 同上注, 段 62。
  • [103] 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。
  • [104] 同上注, 段 64。
  • [105] 同上注, 段 65。
  • [106] 同上注, 段 67 及以下。
  • [107] 同上注, 段 69。
  • [108] 同上注, 段 70。
  • [109] 同上注, 段 71。
  • [110] 同上注, 段 72。
  • [111] 同上注, 段 73 及以下。
  • [112] 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。
  • [113] 同上注, 段 74。
  • [114] 同上注, 段 74 及段 85。
  • [115] 同上注, 段 89。
  • [116] 同上注, 段 85。
  • [117] 同上注, 段 87。
  • [118] 同上注, 段 86 及以下。
  • [119] 同上注, 段 91 及以下。
  • [120] 同上注, 段 92。
  • [121] 同上注, 段 93及以下。
  • [122] 同上注, 段 94。
  • [123] 同上注, 段 83。
  • [124] 同上注, 段 95。
  • [125] 同上注, 段 96。
  • [126] 同上注, 段 98。
  • [127] 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. [128] Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [129] 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. [130]

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. [131] 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. [132] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [133]

The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [134] 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. [135]

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. [136] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [137] 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. [138]

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. [139] 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, [140] 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. [141] 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. [141]

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. [142] 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. [143] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [144]

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’). [145] This eliminates the so-called Vringo-problem, [146] 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. [147]

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. [148] 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, [150] 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. [150]

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. [151] 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. [152] 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. [153]

Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [152] 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. [154] 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. [153]

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. [155] 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. [155] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [156] 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. [157] 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. [158]

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. [159] Other freely-negotiated license agreements might be used as comparables. [160] This may be compared with a top down approach [161] 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. [162] 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. [159] License agreements must meet certain criteria to be comparable. [163] 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. [163] 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%). [164]

2. Principles derived from Huawei v. ZTE

The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [165] 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.
  • [128] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2.
  • [129] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [130] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3.
  • [131] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5.
  • [132] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8.
  • [133] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14.
  • [134] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807.
  • [135] Unwired Planet v Huawei, EWHC 1304 (Pat).
  • [136] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631.
  • [137] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634.
  • [138] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646.
  • [139] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656.
  • [140] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145.
  • [141] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146.
  • [142] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162.
  • [143] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163.
  • [144] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159.
  • [145] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164.
  • [146] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat).
  • [147] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158.
  • [148] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152.
  • [149] 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.
  • [150] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
  • [151] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176.
  • [152] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177.
  • [153] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503.
  • [154] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501.
  • [155] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544.
  • [156] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534.
  • [157] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546.
  • [158] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572.
  • [159] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171.
  • [160] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
  • [161] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
  • [162] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
  • [163] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175.
  • [164] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476.
  • [165] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744.

Updated 1 四月 2021

InterDigital v Xiaomi, District Court (Landgericht) Munich I

慕尼黑地区法院
25 二月 2021 - Case No. 7 O 14276/20

A. Facts

The claimants are two US-based companies that are part of InterDigital Group (InterDigital). InterDigital Group holds a portfolio of patents declared as (potentially) essential, to various wireless telecommunications standards (standard essential patents, or SEPs) developed by the European Telecommunications Standards Institute (ETSI). The claimants hold German SEPs which are subject to a commitment to be made accessible to standard users on fair, reasonable and non-discriminatory (FRAND) terms and conditions, in accordance with the ETSI IPR Policy.

The defendants are four companies belonging to the Xiaomi group that has its headquarters in China (Xiaomi). Xiaomi produces and sells -among other products- smartphones that comply with ETSI standards worldwide.

On 9 June 2020, Xiaomi filed an action against InterDigital before the Intermediate People’s Court in Wuhan, China (Wuhan Court). In its complaint, Xiaomi asked the Wuhan Court to determine specific rates or a range of rates for the licensing of InterDigital’s worldwide 3G/UMTS and 4G/LTE SEP portfolio (Chinese main proceedings). On 28 July 2020, Xiaomi, for the first time, informed InterDigital by telephone that it had filed a case in China. However, the Xiaomi representative did not provide any details regarding the filing.

On the 29 July 2020, InterDigital filed an infringement action against Xiaomi before the High Court of Delhi, India (Delhi Court) with a request for injunctive relief (Indian proceedings). In addition, InterDigital requested a preliminary cease-and-desist order against Xiaomi.

On 4 August 2020, Xiaomi, applied for an anti-suit injunction (ASI) before the Wuhan Court.

On 23 September 2020, the Wuhan Court issued its ASI order, ordering InterDigital to withdraw or suspend the actions in the pending Indian proceedings (Wuhan ASI). InterDigital was also ordered to refrain from filing infringement actions on its 3G and 4G SEPs for (1) permanent and/or temporary injunctions or (2) FRAND rate determinations against Xiaomi in any country of the world during the pendency of the Chinese main proceedings. The Wuhan Court ordered a fine amounting to RMB 1,000,000 per day in case of violation of the above order. InterDigital was advised of the issued ASI for the first time when the Wuhan court sent an email to several InterDigital email addresses on 25 September 2020.

On 29 September 2020, InterDigital filed an action for an anti-anti-suit injunction (AASI) before the Delhi Court. On 9 October 2020, the Delhi Court issued an AASI, restraining Xiaomi from enforcing the Wuhan ASI (Delhi AASI).

On 30 October 2020, InterDigital filed a motion for an AASI before the District Court of Munich I (Munich District Court or Court) as well.

On 9 November 2020, the Munich District Court issued an AASI ordering Xiaomi to refrain from pursuing the Wuhan ASI or take further (court and/or administrative) measures against InterDigital, intended to directly or indirectly prevent InterDigital from prosecuting infringement proceedings based on its SEPs in Germany (Munich AASI). Each violation of the Munich AASI order triggers a fine amounting up to EUR 250,000 or detention up to six months.

On 22 December 2020, Xiaomi filed an appeal of the Munich AASI and also requested a stay of the enforcement of this order. On 24 January 2021, the Munich District Court rejected the request for a stay of the enforcement of the AASI.

With the present judgment dated 25 February 2021, the Munich District Court dismissed Xiaomi’s appeal on the merits and confirmed the Munich AASI. [166] (cited by www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-3995?hl=true)
 

B. Court’s reasoning

The Munich District Court held that InterDigital had a claim for preliminary injunction and that sufficient grounds for issuing an AASI were given. [167]
 

Claim for preliminary injunction

The Court explained that the filing, prosecution and enforcement of an ASI in China with the goal to prevent the assertion of claims for injunctive relief against patent infringement in Germany impairs the ‘property-like legal position’ of the patent holder and constitutes a tortious act (in terms of Section 823 para. 1 of the German Civil Code). [168] The same is true with respect to court orders, which restrain a party from initiating AASI-proceedings in Germany (so-called ‘anti-anti-anti-suit injunctions’, or AAASI). [168]

In the eyes of the Munich District Court, the Wuhan ASI had the aforementioned effect. According to its wording and reasoning, the Wuhan ASI attempted to have a global reach and would also have impacted those InterDigital Group entities holding German SEPs that were involved in the present proceedings. [169] The fact that these companies did not directly face fines or other sanctions imposed by the Wuhan Court, did not change the fact that the Wuhan ASI tried to impair their legal position: These measures threatened other affiliated companies within InterDigital Group and, thus, created a coercive situation in an attempt to limit the freedom of the companies that actually hold German SEPs to act for their protection of their rights. [169]

In addition, the Court expressed the view that InterDigital was in a position to invoke the right for self-defence against the Wuhan ASI. [168] Section 227 of the German Civil Code provides that any action, which is necessary for averting a present illicit attack, is not unlawful.

 

Grounds for preliminary injunction

Furthermore, the Munich District Court found that there was sufficient justification for ordering interim measures. [170]

First, it could not be requested from InterDigital to defend itself against the Wuhan ASI in regular (main) court proceedings. [171] Given that injunctions are available only for the limited lifetime of a patent, regular proceedings against an ASI would not sufficiently protect patent holders’ rights; the latter would be, effectively, deprived of the right to injunctive relief for a considerable period of time, at least until the enforcement of the first instance decision of the German court. [172] This limitation would occur irrespective of the fact that a foreign ASI violates public order (ordre public) and, thus, does not have any legal effect in Germany. [171] The Court repeated that sanctions imposed or threatened in foreign jurisdictions can place the patent holder under pressure and stand in the way of effective patent enforcement in Germany. [171] This applies equally, when a foreign court has granted an AAASI, preventing a party to seek for protective measures in the form of a AASI in Germany, as was the case with the order of the Wuhan Court. [173]

Second, the Munich District Court held that the urgency required for interim measures was given. [174] Inter-digital had filed the request for an AASI in a timely fashion. [175] As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month of knowledge of the act. [176] The Munich District Court suggested that this deadline, basically, also applies to AASIs (refraining, however, from a final assessment of this question). [177]

In case that an AASI is directed against an ASI already granted by a foreign court (risk of repetition), the respective request should be filed within a month after the patent holder obtained ‘secure knowledge’ of the foreign court order, irrespective of whether formal service took place or not. [178] For assuming ‘secure knowledge’, it can be required that the patent holder gets access to the ASI request as well as the evidence used in the foreign proceedings, especially when the court order itself does not contain clear information about the parties, the content and the legal grounds of the order. [179]

If a request for an AASI is filed before a foreign ASI has been issued, that is when only a ‘risk of first infringement’ of a violation of SEP holder’s ‘property-like’ rights exists, the one-month deadline begins at the moment in time, in which the patent holder gains ‘secure knowledge’ of the filing of an ASI request before the foreign court or of the existing risk of such measures, which is especially materialized, when the implementer threatens with respective action. [180] In this context, the Court clarified that filing early countermeasures before a grant of an ASI is only an option; patent holders are, basically, free to wait for the outcome of foreign ASI proceedings, before filing a request for an AASI. [180]

Having said that, the Munich District Court outlined that it will, as a rule, assume that a required risk of a first infringement’, which could result in an AASI, is present, if the one of the following circumstances occur:

  • The implementer has threatened to file a request for an ASI;
  • The implementer has filed a request for an ASI;
  • The implementer has filed a (regular) action for the grant of a licence or the determination of reason-able global licensing rates in a jurisdiction, in which ASIs can, in principle, be granted;
  • The implementer has already threatened an ASI or filed a respective request against other patent holders and the party filing an AASI in Germany has no indication that the implementer will refrain from such actions against it in the future;
  • The implementer failed to declare in text form within a short deadline set by the patent holder (e.g. with the first notification of infringement) that it will not file a request for an ASI. [181]
ASI and implementer’s willingness to obtain a licence

The Munich District Court further made clear that an implementer who threatens an ASI or files a respective request, can, as a rule, not be treated as a ‘willing licensee’ within the meaning of the Huawei v ZTE ruling (Huawei v ZTE) [182] of the Court of Justice of the EU (CJEU) and the recent case-law of the German Federal Court of Justice (Bundesgerichtshof) in the Sisvel v Haier [183] cases. [184] According to the Court, an implementer truly willing to obtain a FRAND-licence would regularly refrain from actions impairing SEP holder’s ‘property-like’ rights even further than the past and ongoing acts of patent infringement (such as the filing of a request for an ASI). [185]

Looking particularly at the negotiation framework established in Huawei v ZTE, the Munich District Court noted that balanced negotiations on an equal footing -as envisioned by the CJEU- can only be ensured if the parties have equal access to legal remedies: The implementer’s ability to attack patent validity should be counterbalanced by the patent holder’s ability to assert its patent rights before court. [186] This is no longer the case when the judicial assertion of claims against patent infringement is precluded based on an ASI. [186] In this context, the Court noted that an ASI directly violates the SEP holders’ right to have access to courts which is established in both European law (Article 47 para. 1 of the EU Charter of Fundamental Rights) and German constitutional law. [186]

Furthermore, the Munich District Court expressed the view that an implementer who has been notified about the infringement of SEPs can be required not only to adequately demonstrate willingness to obtain a FRAND-licence, but also to declare that it will not file a request for an ASI against the patent holder. [185] The Court explained that, otherwise, the negotiation process set forth by Huawei v ZTE could not be followed. [187] In particular, the SEP holder could no longer be obliged to notify the implementer about the infringement before filing a court action. [187] By making a notification of infringement, the patent holder exposes itself to an ASI. If an ASI is granted, then the patent holder will in many cases be de facto prevented from exercising its right to injunctive relief even towards implementers unwilling to take a licence. [188] According to the Court, this result conflicts with the so-called EU IPR Enforcement-Directive (Articles 9-11) [189] as well as the case law of the CJEU. [190]

The Court also added that SEP holders cannot be expected to pre-emptively prepare countermeasures against potential future ASIs [185] . Even when SEP holders seek global portfolio licences, preparing the filing of AASIs in many different jurisdictions would lead to disproportionate high costs at a point in time, in which neither the risk nor the impact of an ASI could be reliably assessed. [185]
 

Balance of interests

After weighing the interests of the parties against each other, the Munich District Court held that an AASI was justified. [191]

On the one hand, the Court recognized that InterDigital had an interest to be granted the requested AASI. Although the Wuhan ASI violated public order and could not be enforced in Germany, InterDigital had an interest to limit the reach of the Chinese order as far as German SEPs are concerned; otherwise, the threat of sanctions that could be imposed in China would de facto prevent InterDigital from enforcing its patent rights in Germany for an unforeseeable period of time. [192]

On the other hand, the Court highlighted that a German AASI would not impair the rights of Xiaomi. [193] The AASI would only oblige Xiaomi to withdraw the Wuhan ASI and, therefore, have no impact on the Chinese main proceedings. [193] The Chinese main proceedings would also not be impaired, in case that InterDigital filed infringement proceedings against Xiaomi in Germany, following the grant of an AASI. The Munich District Court expects that German infringement proceedings would not revolve around the same question raised in the Chinese proceedings, that is the determination of the global rate for InterDigital’s SEP portfolio. [193] On the contrary, German infringement courts would probably not examine the amount of an adequate global licensing rate, because it is very unlikely that they would examine a FRAND defence raised by Xiaomi on the merits. [193] The Court reasoned that the very act of requesting an ASI, or threatening to do so, is evidence that the implementer is an unwilling licensee, such that a FRAND defence raised by Xiaomi in German infringement proceedings would hardly have any prospects of success. [193]

In addition, the Court took the view that Xiaomi’s interest to avoid infringement trials in Germany during the pendency of the Chinese main proceedings was not worthy of protection. [194] Xiaomi did neither constantly monitor the IPR landscape, as it is obliged to, nor obtain necessary licences before starting production. [194] What is more, Xiaomi refused to do so for more than seven years, such that InterDigital can no longer be expected to further wait to assert its rights. [194]

 

C. Other issues

The Munich District Court also confirmed that InterDigital had a legitimate interest in legal remedies. [195] Under German law, this is a prerequisite for any court action and is, basically, given, when the claims asserted by the claimant have not been fulfilled by the defendant yet. [196] The fact that InterDigital could defend itself against the ASI also in so-called ‘reconsideration proceedings’ before Chinese courts did not remove InterDigital’s legitimate interest that its case is heard by German courts. [197] The Court held that such proceedings could not sufficiently protect InterDigital’s ‘property-like’ rights in Germany, especially since a reliable assessment of the prospects of success of such legal remedy is very challenging. [197]

Furthermore, the Court confirmed that the pendency of the Chinese and Indian proceedings did not prevent German courts from hearing the case in question (no lis pendens). [198]

Finally, the Court also found that the Munich AASI had been served to Xiaomi within the relevant deadline, which under German law is a prerequisite for such orders to remain in force. [199]

  • [166] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20.
  • [167] Ibid, para. 75.
  • [168] Ibid, para. 120.
  • [169] Ibid, para. 121.
  • [170] Ibid, para. 129.
  • [171] Ibid, para. 130.
  • [172] Ibid, para. 130. The Munich District Court highlighted that the right to injunctive relief is the ‘essential feature’ of exclusionary rights, such as patent rights, and the ‘sharpest weapon’ against infringement. Patents would be ‘worthless’, if the patent holder would be denied the possibility to enforce its rights by way of court proceedings.
  • [173] Ibid, para. 131.
  • [174] Ibid, para. 132.
  • [175] Ibid, para. 132 as well as paras. 151 et seqq.
  • [176] Ibid, para. 133.
  • [177] Ibid, paras. 134-135.
  • [178] Ibid, para. 134.
  • [179] Ibid. para. 136.
  • [180] Ibid, para. 138.
  • [181] Ibid, para. 142.
  • [182] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [183] Sisvel v Haier I, Bundesgerichtshof, judgment dated 5 May 2020, Case No. KZR 36/17 and Sisvel v Haier II, Bundesgerichtshof, judgment dated 24 November 2020, Case No. KZR 35/17.
  • [184] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 146.
  • [185] Ibid, para. 146.
  • [186] Ibid. para. 148.
  • [187] Ibid, para. 147.
  • [188] Ibid, para. 149.
  • [189] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).
  • [190] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 149.
  • [191] Ibid, para. 168.
  • [192] Ibid, para. 169.
  • [193] Ibid, para. 170.
  • [194] Ibid, para. 173.
  • [195] Ibid, para. 75.
  • [196] Ibid, para. 107.
  • [197] Ibid, para. 108.
  • [198] Ibid, paras. 75 and 109.
  • [199] Ibid, para. 75 and paras. 80-106.

Updated 16 六月 2021

慕尼黑一区地区法院康文森诉戴姆勒案

慕尼黑地区法院
30 十月 2020 - Case No. 21 O 11384/19

A. 事实

原告康文森(Conversant)持有被声明为对实施多项无线通信标准而言(潜在)必要的专利(以下称“标准必要专利”或“SEPs”)。

康文森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)的条款和条件向标准实施人提供。

被告戴姆勒是一家总部位于德国的跨国汽车制造公司。戴姆勒在德国生产并销售具有实施欧洲电信标准协会所发展出的LTE标准的连网功能的汽车。

康文森于2018年10月加入了Avanci许可平台,该平台提供专为联网汽车量身定制的专利许可计划。

康文森于2018年12月18日向戴姆勒提出了全球范围内的双边许可要约,同时也向戴姆勒提供了与其所持有的标准必要专利组合相关的各项信息,其中也包括了该专利组合中所涵盖的若干专利的权利要求对照表。 在康文森于2019年2月27日对其发出了相应的提醒通知后,戴姆勒回复表示愿意签署FRAND许可协议的同时,也特别强调了对供应商进行知识产权许可在汽车行业中是一种很常见的做法。戴姆勒还要求康文森提供有关其所持有的专利组合现有被许可人的相关信息,并且就哪些专利在哪些对应的组件上实现,以及其所提供的条款为什么是符合FRAND的条款进行解释。随后,戴姆勒就专利持许可问题与Avanci开始进行谈判。

由于康文森接获了Avanci的通知表示其与戴姆勒间的许可谈判未获成功,康文森遂于2019年7月5日向戴姆勒发送了一封电子邮件,提出双方在2019年7月15日亲自会面的要求。 康文森同时也指出了参与 Avanci计划的汽车制造商在其所持有的标准必要专利组合下取得许可,并且通过引用相关判例(主要是英国高等法院于2017年4月5日所作成的无线星球诉华为案判决)在内的各种方式解释了构成其所提出的双边许可要约基础的许可费计算。康文森起先还打算向戴姆勒提供其所持有的专利组合中所包含的各项专利的完整清单,然而,相应的文件却因过失而未被添加到发送给戴姆勒电子邮件的附件之中。

戴姆勒于2019年7月29日作出回应,并表示其正与

Avanci进行许可谈判。戴姆勒重申了其认为在供应商层级进行许可更为高效此一观点,并且反驳认为,由于康文森尚未提供所有必要的信息,双方面对面的会议应该在稍后的时间点进行。

康文森于是于2019年8月13日在慕尼黑一区地区法院(以下称“法院”)对戴姆勒提起了侵权诉讼,而其中并未包含禁令救济主张。2019年8月24日,康文森将其在慕尼黑提起的诉讼告知戴姆勒,并指出其认为戴姆勒实际上并没有兴趣取得FRAND 许可。康文森并强调,在计算许可费时,应将(其专利)于终端产品阶段所产生的价值纳入考量。

2019年9月18日,戴姆勒重申了其取得许可的意愿,并且首次指出康文森在2019 年7月5日所发送的电子邮件中并未包含康文森所提及的专利组合的完整清单。这份清单其后于2019年9月20日被提交给戴姆勒。同时,康文森提议双方在2019年10月初召开会议面对面进行协商。戴姆勒于2019年10月8日回应称,由于所需的信息仍然缺失,该会议只能在十月底举行。

双方于2019年12月4日在戴姆勒总部会面。2020年1月15日,康文森将在本次会议进行过程中所演示的文稿发送给戴姆勒,并表示愿意为戴姆勒的一级供应商设定许可计划,同时为此也准备与戴姆及戴姆勒所有的一级供应商召开会议进行讨论。除此之外,康文森还提出了向中立的第三方寻求协助,例如采用仲裁程序来判定许可的价值。戴姆勒于2020年1月24日表示其已经与供应商进行了讨论,并且愿意组织一次会议。 2020年1月29日,康文森在其正于慕尼黑进行中的未决诉讼里对戴姆勒追加提出了禁令救济以及召回并销毁侵权产品的诉讼主张。

双方于2020年2月及3月就与戴姆勒的一级供应商会面的问题进行了讨论。然而,戴姆勒并未组织其所有供应商共同参加会议。

2020年4月8日,戴姆勒向康文森提出了许可反要约,该许可反要约是以在车辆上实现LTE连接功能的车载信息控制单元 (TCU) 这一元件的价值为基础来进行计算的。

康文森于2020年6月30日再度向戴姆勒提出了进一步的许可要约,但未获接受。 2020年8月10日,戴姆勒向康文森提供了有关其过去车辆销售的相关信息,并为其过去的使用提交了保证金。

法院在当前判决 [200] 中做出了包含对戴姆勒出发禁令在内的多项有利于康文森的裁决。
 

B. 法院的论理

法院认为,本案涉案专利为实施4G / LTE标准时所必要,并且该专利遭受了侵权行为 [201] ,康文森所提出的索赔主张因此而被法院准许。

康文森就关于禁令救济以及召回并销毁侵权产品的诉讼主张也应该被准许。康文森对戴姆提起侵权诉讼的行为既不会构成《欧洲联盟运作条约》(TFEU)第102条所规定对市场支配地位的滥用行为(以下称“竞争法上抗辩”,参见下段第 1 项),也没有违反其因欧洲电信标准协会专利政策所应承担的合同义务(以下称“合同法上抗辩”,参见下段第 2 项) [202]
 

1. 竞争法上抗辩
市场支配地位

法院认为,康文森具备《欧洲联盟运作条约》第102条涵义下的市场支配地位 [203]

享有专利所授与的独占权本身并不会造成市场支配地位的形成 [204] 。当一项专利对符合标准发展组织所发展出的标准(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 [205] ,市场支配地位才会形成。在法院看来,此一原则适用于本案涉案专利 [206]

在本案中,可以排除康文森市场支配地位的特殊情况并不存在。法院认为,单就康文森向欧洲电信标准协会做出FRAND承诺,从而确立其必须依照FRAND条款与条件授予许可的义务这一事实本身,并不会排除康文森的市场支配地位,并且,此一问题决定性的关键在于标准必要专利持有人是否真正履行了这一义务 [207] 。此外,潜在实施人也可以选择从Avanci平台获得本案涉案专利许可的这一替代途径也并不会对康文森的市场支配地位造成限制 [208]
 

未构成对市场支配地位的滥用

尽管如此,法院认为,康文森向戴姆勒提起禁令救济以及召回并销毁侵权产品的诉讼这一行为并不会构成其对市场支配地位的滥用。

在实施人已经使用了受(专利)保护的标准化技术的情况下,对标准必要专利持有人行为的评估则需要采取更全面的综合分析,一方面需要考虑知识产权所享有的是宪法所赋予的强大保障,另一方面也需要将实施人可以实施标准的利益纳入考量,二者之间必须相互平衡 [209] 。在这种情况下,不仅只是私人利益,也应该将公共利益纳入考量范围之中 [210] 。法院强调,公共利益不应仅仅被视为“单纯的使用标准化技术各私人利益的总和”,而同时也应该包含对公众利益实质性的保护以保障知识产权的完整性并确保有效的执行力 [210]

考虑到标准必要专利在“本质上所具备的特殊性”,尤其是在通信领域,法院采取了与欧洲联盟法院(CJEU)华为诉中兴案判决(以下称“华为案判决”) [211] 一致的观点,认为对标准必要专利持有人施加某些特定的行为义务是合理且正当的。其原因基本上在于,与其他“普通”专利不同,标准必要专利是在专利持有人无需采取任何进一步行动的情况下,因该专利被纳入某一标准中而在市场上被确立 [212] 。因此,对于标准必要专利而言,通过授予专利技术的发明人在特定期间内的独占性的排他性权利来确保专利技术的发明人在市场上的竞争优势的需求,相较于非标准必要专利而言也就并不那么强烈 [213]

尽管如此,法院仍然明确表示,华为案判决对标准必要专利持有人所施加的行为义务仅存在于“严肃看待而不仅仅是口头上表示”愿意签署许可协议的实施人身上 [214] 。因此,一项基于对滥用市场支配地位的指控的抗辩只有在想要使用或者已经在未经授权的情况下使用专利的实施人愿意取得FRAND许可,并且在其与标准必要专利持有人进行许可谈判的整个过程中没有使用拖延战术的情况下,才有可能成立 [215] 。法院阐明到,华为案判决的关键概念在于谈判双方才是最有资格在公平、平衡且即时的许可谈判中确定 FRAND者,而是否能达成协议则将取决于谈判双方受为达成协议的实际“真诚动机”驱使的积极性参与 [216]
 

侵权通知

在对双方的行为进行审视后,法院认为,通过发送了日期为2018年12月18日的信函,康文森已经履行了就其标准必要专利遭受侵权情事对戴姆勒进行通知的义务,此信函的内容包含了与其专利组合相关的足够信息,其中也包括了数个各别专利所对应的权利要求对照表 [217] 。至于康文森是否充分解释了本信函中所附带的许可要约背后的许可费究竟是如何计算的则无关紧要,因为在此一阶段,康文森甚至还没有向戴姆勒提出许可要约的义务 [218]
 

取得许可的意愿

另一方面,法院认定戴姆勒不具备从康文森处取得许可的意愿。相反地,法院发现了一个“特别明显不具备取得许可意愿的案例” [219]

在内容方面,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”且“积极”的态度来进行许可谈判 [220] 。相反地,在对(第一次)侵权通知做出回应时,仅仅是对侵权通知作出表达愿意考虑签署许可协议或就是否以及在什么条件下才考虑取得许可进行谈判是不够的 [220]

法院阐明,关于实施人是否具备取得许可的意愿的评估,需要通过对截至侵权诉讼程序中口头听证程序结束为止的所有案例事实进行全面性的分析来确定 [221] 。实施人是否表达出取得许可的意愿这一问题,并不能通过对实施人行为的“形式性的简略印象”来回答;更重要的是,实施人不能持续保持被动状态,直到在实施人眼中看来标准必要专利持有人已经履行了其义务时 [221]

此外,法院强调,谈判进行中的时机是在评估实施人是否具备取得许可的意愿时必须纳入考量范围的一项因素 [222] 。否则,实施人将会缺乏及时且积极地参与谈判的动力 [223] 。关于即时的概念法院认为严格的期限无法被设定,仍需要视个案具体情况逐一评估 [224] 。然而,已被告知侵权的实施人有义务通过与标准必要专利持有人签署 FRAND 许可而尽快使对该专利的非法使用合法化 [224]

此外,法院认为,实施人是否以及在何时向标准必要专利持有人提出许可反要约也可以作为实施人是否具备取得许可意愿的“重要指标” [222] 30。在侵权诉讼程序开始后才提出的许可反要约在通常情况下是不被认可的 [225] 。法院认为,实施人仅仅为了“做表面功夫”而进行谈判,然后透过提出许可反要约来对在侵权诉讼中可能被定罪的劣势进行“紧急刹车”,这种行为是不应该被允许的 [223] 。仅有在实施人自谈判开始时就愿意,并且始终积极地参与与专利持有人间的讨论这种特殊的情况下,在诉讼审判期间提出的许可反要约才可以被纳入对判断是否具备取得许可意愿的考量范围中 [226]

承上所述,法院认为,一般而言,实施人最初采用的拖延战术是无法在稍后的某一个时间点不费吹灰之力而被“消除”的 [227] 。尽管如此,对取得许可的意愿迟来的表述并不会“自动”排除实施人在侵权诉讼程序中提出“FRAND抗辩”的权利:无论是否出现这种情况,都还是应该根据具体个案在历史谈判过程中的各别情况逐一进行判断 [228]

在此背景下,考虑到戴姆勒的整体行为,法院得出了结论——尽管对戴姆勒而言,以符合FRAND要求的原则行事实际上有可能并且是合理的 [229] ,而戴姆勒仍然选择了采用拖延战术 [230]

法院认为,戴姆勒将康文森导引至其供应商的行为,并未表达出其愿意依照“任何实际上符合FRAND 的条款”来取得许可的意愿,反而是明确地展现出其本身并不准备从康文森处取得许可的态度 [231] 。戴姆勒与其供应商之间可能存在的关于第三方知识产权的赔偿条款在此处并不能发挥任何作用,因为戴姆勒的行为独立地造成了对康文森所持有的专利的侵权行为,因此必须为此承担相应的责任 [231]

另一个显示出戴姆勒并不具备取得许可的意愿的征兆是,戴姆勒花了超过两个月的时间才通知康文森其并未收到那一份本应该被附加于康文森在2020年7月5日发送的电子邮件中但因过失而未被添加的专利组合清单 [232] 。法院同样批评了戴姆勒此前从未针对康文森所提供的权利要求对照表向康文森提出任何问题,反而却是在侵权诉讼审判过程中才对相关专利的质量提出质疑此一事实 [233]

法院在戴姆勒於2020年7月27日所作出的回覆中,還發現了另一个“重大性指標”顯示出戴姆勒並不具備取得許可的意愿,在此回覆中,戴姆勒明确表示其签署许可協議的意愿僅限于尚未被许可或者由不愿自行向康文森取得许可的供应商處所購買的產品 [234] 。法院對於戴姆勒将其供应商的“不具備取得許可的意愿”設定為其己身与康文森签署许可協議的条件這一選擇特別反感 [235]

此外,戴姆勒没有针对康文森在2019年12月4日举行的当事方会议上所提出的使用替代性争议解决机制,特别是以仲裁程序来确定FRAND许可费的提议做出回应,这一事实也被法院认为是戴姆勒方并不具备取得许可意愿的表现 [236]

法院指出,另一个“明显”展现出戴姆勒不具备取得许可意愿且采用拖延战术的迹象在于,于2019年12月4日双方间的讨论结束以后,尽管戴姆勒曾暗示其已与其供应商讨论过有关由供应商直接向康文森取得许可此一潜在选项,然而实际上戴姆勒并未组织其所有一级供应商就此议题召开会议讨论 [237]
 

许可反要约

随后,法院指出,戴姆勒于2020年4月8日所提出的许可反要约并无法弥补戴姆勒在此之前表现出的取得许可意愿缺失 [238] 。更有甚者,这更像是一种“不在场证明” [229]

在法院看来,由于此一许可反要约是在康文森对戴姆勒提出许可要约后的一年零四个月以后才提出的,此一许可反要约的发出是迟延的 [238] 。更重要的是,此一许可反要约是戴姆勒在侵权诉讼程序进行的过程中才提出的,如前所述,此一行为是不被认可的,因为在此之前戴姆勒很显然是不愿意取得许可的 [239] 。法院近一步阐明,戴姆勒以康文森未提供相关的必要信息为借口来正当化其延迟回覆的行为是站不住脚的,因为该许可反要约仅基于公开且可供公众使用的数据撰写,而并未进行任何进一步的详细分析;因此,该许可反要约本来可以在戴姆勒收到康文森初次许可要约后不久的一个更早的时间点发出 [240]

除此之外,法院也认为,戴姆勒所提出的许可反要约在内容上“显然并不符合FRAND” [241] 。根据概括性的分析,戴姆勒所提出的许可费被认为明显是过低的 [242]

法院指出,FRAND费率是一个数值范围,并且有多种可以用于计算 FRAND许可费的方法 [242] 。法院采用了所谓的“自上而下法”(此一方法康文森与戴姆勒双方都曾经使用过) [243] 。在检视过戴姆勒提出的按照“自上而下法”而进行的计算后,法院认为,将所有向欧洲电信标准协会作出声明其为标准必要专利的专利总数作为确定康文森所持有的与LTE相关的标准必要专利所占份额的基础这种做法并不符合FRAND [244] 。考虑到并非所有被声明为标准必要专利的专利实际上都确实属于标准必要专利(这种现象被称为“过度声明”),使用被声明的专利总数作为计算基础将有利于戴姆勒:如果采用的是真正属于LTE标准必要专利的(较低)专利数量做为计算的基础,则康文森所持有的标准专利数量就其本身而言将会变得更高 [244]

此外,法院也指出,采用车载信息控制单元的平均采购价格作为计算基础并不是在FRAND下适当的许可费计算基础 [245] 。标准必要专利的价值是通过许可费而体现的,而该许可费与所提供服务的价值应符合比例原则 [245] 。法院认为,在本案中,通过在戴姆勒汽车上提供支持LTE技术的相关功能以及戴姆勒汽车的消费者对这些功能的使用而创造了经济价值 [245] 。因此,在此处真正相关的是戴姆勒的消费者对因为LTE技术而得以在车辆上实现的各项功能所赋予的价值 [245] 。戴姆勒向供应商支付的车载信息控制单元的采购价格并不能反映该项价值 [245]
 

供应商提出的FRAND抗辩 / 许可层级

法院进一步阐明,戴姆勒不能援引其供应商(据称的)具备直接从康文森处取得许可的意愿做为其FRAND抗辩 [246]

如果一个实施人在声明了自己具备取得许可意愿的同时,也表示了希望该许可的授与可以在其供应商层级进行,则其有义务以书面形式全面地披露其产品中包含了哪些符合标准的元件,以及哪些供应商向其提供了哪些对应的元件 [247] 。如果此一信息披露义务并没有被履行,正如同本案的情况一样,则实施人要求在其供应商层级别进行许可的请求与实施人表示愿意与自己与标准必要专利持有人签署许可协议的声明彼此矛盾,因此,属于恶意行为(见德国民法典第242条) [248] 。在这种情况下,法院明确表示,实施人仍然有义务以一种及时且有目的性的态度积极地与标准必要专利持有人进行双边谈判,即便在实施人已经向标准必要专利持有人提供上述信息后,仍应该同时积极参与促进在供应商层级相关许可机制的建立 [249] 。并且,在与标准必要专利持有人的双边谈判过程中,实施人可以要求在许可协议中包含一项排除对供应商已取得许可的组件双重支付许可费的条款 [249]

承上所述,法院認為,康文森要求由戴姆勒來取得許可的做法並没有構成滥用或歧视性行為 [250]

法院认为,關於在供应链中對标准必要专利的许可应遵循所谓的“所有人均有權要求取得许可”或者是“所有人均有權使用许可”的作法这一基礎性问题,在此无需被回答 [251] 。在标准必要专利持有人与终端设备制造商之间的法律纠纷中,从竞争法的角度而言,只要标准必要专利持有人在诉讼中所追求達成的目标並不会将供应商完全排除在市场之外便已足夠;当供应商通过由终端设备制造商签署的许可協議建立的“委託製造”权而被授予对标准化技术的使用权时,情况正是如此,正如同此處康文森所提供的那样 [251] 。供应商是否有權要求單獨取得许可則是一个不同的问题,而這個問題可能可以在标准必要专利持有人与供应商之间的另外的訴訟程序中被提出 [252]

法院补充到,标准必要专利持有人有权自由决定对供应链中的哪个侵权者向法院提起诉讼 [253] 。该自由选择权源自于宪法对财产权的保障,以及专利作为一种排他性权利的本质 [254] 。 法院认为,尽管在汽车行业的普遍做法是当零部件被出售给汽车制造商时不受第三方权利的限制,然而这并会不因此使康文森要求戴姆勒取得许可的行为成为竞争法上的滥用行为 [255] 。终端设备制造商与其供应商间的各别协议仅具有双边(合同)效力而不能损害第三方的法律地位 [255] 。特别是,此类条款并不能限制标准必要专利持有人选择向供应链中哪个层级的实施人主张其专利权的权利 [256] 。法院指出,鉴于附加技术的整合符合戴姆勒进入新市场与吸引消费者群的经济利益,从竞争法上的角度而言,汽车行业是否有必要放弃其现有的做法并不重要 [256]

在此背景下,法院同时阐明,只要是侵权诉讼仅针对终端设备制造商发动,标准必要专利持有人对供应商并没有履行华为案判决所确定的义务 [257] 。因此,参与此类诉讼的供应商不能以例如略过单独向供应商发送侵权通知等理由而主张标准必要专利持有人滥用其市场支配地位 [258] 。法院否定了标准必要专利持有人应承担这种全面性的通知义务,因为尝试在多层次的复杂供应链中找出所有可能牵涉到的供应商既不可行也不合理 [259]

法院认为,关于标准必要专利持有人拒绝直接对供应商授与许可是否会构成对其市场支配地位的滥用这一问题,应视竞争法上的一般性原则而定 [260] 。在本案中,法院并没有发现充足的理由可以支撑这种滥用行为的成立 [260] 。法院不认为若是供应商没有取得一份专属于自己的双边许可协议,那么其就无法享有权利或将面临法律上的不确定性 [261] 。然而,取得一份专属于自己的双边许可协议将赋予供应商相较于通过“委托制造权”所取得者更广泛的经营自由,从而更能契合其商业利益的这一事实,在供应商对标准充分的使用权仍然可以通过“委托制造权”而被保障的情况下,此问题便与标准必要专利持有人及终端设备制造商间的诉讼程序没有任何相关性了 [262] 。于此范围内,法院同时指出,以“委托制造权”为基础的供应链内部合作在现实中广泛存在且十分普遍,并且也得到了欧盟相关法律的支持(见欧洲联盟委员会12 月 18 日关于与欧洲联盟条约第 85 (1) 条有关分包协议的评估的通知,OJ C 1,1979 年 1 月 3 日) [262]

最后,法院驳回了戴姆勒方关于康文森与Avanci平台的其他成员勾结,通过排除实施人对相关标准的使用而对实施人为具体歧视行为的指控 [263] 。法院并没有发现任何迹象表明此种情况确实存在,相反地,法院强调了专利池通常被认为具有促进竞争的效果,尤其是在欧盟法律体系之下(详见关于欧洲联盟运作条约第 101 条应用于技术转让协议的指南第245段;2014/C 89/03) [263]
 

2. 合同法上抗辩

法院进一步指出,戴姆勒无法因其被授与FRAND许可而引用合同法上的抗辩以对抗康文森的禁令救济主张,因为此种主张并不存在 [264] 。戴姆勒曾经主张,根据康文森对欧洲电信标准协会所作出的FRAND承诺,康文森不被允许向法院提出禁令救济主张。

法院认为,欧洲电信标准协会的FRAND承诺并未创造出与欧盟竞争法(特别是《欧洲联盟运作条约》第 102 条)规定下所应遵守或享有者不同的义务或权利,而在本案中,康文森已经满足了这些要求 [265] 。在法律上,欧洲电信标准协会的FRAND承诺是根据法国法律所规定的为第三方利益所签订的合同(’stipulation pour l’autrui’),其中包含了标准必要专利持有人必须在稍后时间点授予 FRAND 许可这项具有约束力的承诺 [266] 。然而,关于许可协商的进行以及相对应的义务的内容及范围应按华为案判决所创立的规则来解释,这些规则包括了依据《欧洲联盟运作条约》第 102 条所制定的行为准则 [266] 。事实上,欧洲电信标准协会的FRAND承诺实现了在《欧洲联盟运作条约》第 102 条的规定下提供对标准的使用权的要求,同时也支持采用统一的行为标准 [266] 。在法院看来,法国法律不能创设其他进一步的行为义务,因为法国法律也必须按照欧盟法律的精神来进行解释 [266]
 

C. 其他重要问题

最后,基于比例原则的考量,法院采取了没有理由限制康文森禁令救济主张的观点 [267] 。根据德国法律,比例原则是一项具备宪法位阶的一般性法律原则,如果被告在审判中根据此项原则提出了相应的反对意见,则在审查是否核准禁令救济时也应将此原则纳入考量范围之中 [267] 。德国联邦法院(Bundesgerichtshof)也认可在实施人将遭受的损害因为专利持有人行使其排他性权利时违反诚信原则而无法被合理化的情况下,禁令将可能无法立即被执行(详见2016 年 5 月 10 日’Wärmetauscher’案裁决,案件编号 X ZR 114/13) [267] 。然而,在法院看来,戴姆勒在本次诉讼中并未就任何相关事实进行抗辩 [267]
 

  • [200] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19 (cited by juris)。
  • [201] 同上注,段122-265。
  • [202] 同上注,段285。
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  • [205] 同上注,段287及以下。
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  • [210] 同上注,段300。
  • [211] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [212] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, 段301。
  • [213] 同上注,段301。
  • [214] 同上注,段307。
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  • [216] 同上注,段302及308。
  • [217] 同上注,段323及以下。
  • [218] 同上注,段324。然而,法院对于康文森仅提及英国高等法院在无限星球诉华为案中使用的计算方法是否足以解释其向戴姆勒所提供的费率表示怀疑。
  • [219] 同上注,段309。
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  • [225] 同上注,段312及316。
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  • [240] 同上注,段355及以下。
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  • [243] 同上注,段341及348。
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  • [246] 同上注,段360。
  • [247] 同上注,段362。
  • [248] 同上注,段362及364。
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  • [250] 同上注,段365。
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  • [252] 同上注,段367。
  • [253] 同上注,段368及382。
  • [254] 同上注,段368。
  • [255] 同上注,段370。
  • [256] 同上注,段372。
  • [257] 同上注,段373及376-378。
  • [258] 同上注,段373。
  • [259] 同上注,段373及382。
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  • [264] 同上注,段384。
  • [265] 同上注,段384及以下。
  • [266] 同上注,段385。
  • [267] 同上注,段269。

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 [268] , 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 [269] , 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 [270] .

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 [271] . 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 [272] (Huawei framework or obligations) [273] .

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 [274] . 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’ [274] . 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 [274] .

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 [275] . 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 [276] . 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 [277] .

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 [278] . 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 [278] .

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 [279] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [279] . 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 [279] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [279] .

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 [280] . 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 [281] . 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 [281] . 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 [281] .

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 [282] . 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 [283] . 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 [283] . 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 [283] .

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 [284] .

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 [285] . 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 [285] . Delaying tactics potentially applied by the implementer must be prevented [285] . 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 [286] . 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 [286] .

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 [287] .

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 [288] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [289] .

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 [290] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [290] .

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 [291] .

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 [291] .

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 [291] . 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 [291] . 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 [291] .

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 [291] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [291] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [292] . 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 [293] . 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 [294] .

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 [295] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [296] .

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 [297] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [297] or Article 102 TFEU [298] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [299] . 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 [300] .

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 [301] . 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 [302] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [303] .

  • [268] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
  • [269] 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.
  • [270] Ibid, paras. 37-87.
  • [271] Ibid, para. 88.
  • [272] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
  • [273] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
  • [274] Ibid, para. 107.
  • [275] Ibid, paras. 117 et seqq.
  • [276] Ibid, para. 119.
  • [277] Ibid, paras. 120 et seq.
  • [278] Ibid, para. 120.
  • [279] Ibid, para. 125.
  • [280] Ibid, para. 126.
  • [281] Ibid, para. 127.
  • [282] Ibid, para. 111.
  • [283] Ibid, para. 112.
  • [284] Ibid, paras. 115 and 117.
  • [285] Ibid, para. 115.
  • [286] Ibid, para. 129.
  • [287] Ibid, paras. 131 et seqq.
  • [288] Ibid, paras. 132 et seq.
  • [289] Ibid, para. 135.
  • [290] Ibid, para. 133.
  • [291] Ibid, para. 134.
  • [292] Ibid, paras. 136 et seqq.
  • [293] Ibid, para. 136.
  • [294] Ibid, para. 138.
  • [295] Ibid, para. 131.
  • [296] Ibid, para. 106.
  • [297] Ibid, paras. 157 et seqq.
  • [298] Ibid, paras. 162 et seqq.
  • [299] Ibid, paras. 160 et seq.
  • [300] Ibid, para. 161.
  • [301] Ibid, para. 143.
  • [302] Ibid, para. 144.
  • [303] Ibid, paras. 145 et seqq.

Updated 6 五月 2021

Sisvel v Haier

德国联邦法院
24 十一月 2020 - Case No. KZR 35/17

A. Facts

The claimant, Sisvel, holds patents declared as (potentially) essential to the practice of several wireless telecommunications standards (standard essential patents, or SEPs). Sisvel has made a commitment towards the European Telecommunications Standards Institute (ETSI) to make SEPs accessible to users on fair, reasonable and non-discriminatory (FRAND) terms and conditions.

The defendants are two European subsidiaries of the Haier group (Haier), which has its headquarters in China. The Haier group produces and markets -among other things- mobile phones and tablets complying with various standards, including the GPRS and UMTS standards developed by ETSI.

On 20 December 2012, Sisvel informed the parent company of the Haier group (Haier China) that it offers licences for its SEPs and shared a list of approx. 235 patents included in its portfolio. In August and November 2013, Sisvel sent further letters with information about its licensing program to Haier China.

Haier China replied to Sisvel only in December 2013. It expressed 'hope' to have 'a formal negotiation' with Sisvel and asked for information regarding potential discounts mentioned in previous communi­cations.

In August 2014, Sisvel made an offer for a global portfolio licence to Haier, which was rejected.

Shortly after that, Sisvel filed infringement actions against Haier before the District Court of Duesseldorf (District Court). One of the actions was based on a SEP reading on the UMTS standard (patent in suit). The other action involved a patent reading on the GPRS standard. Haier filed nullity actions against both patents asserted before the German Federal Patent Court.

During the infringement proceedings, Haier made certain counteroffers to Sisvel. These offers had a limited scope, since they covered only the patents (patent families) asserted against Haier in court.

On 3 November 2015, the District Court decided in favour of Sisvel in both cases [304] . It granted injunctions against Haier and ordered the recall and destruction of infringing products. The District Court further recognised Haier's liability for damages on the merits and ordered Haier to render full and detailed account of the sales of infringing products to Sisvel. Haier appealed both decisions.

In the subsequent proceedings before the Higher District Court of Duesseldorf (Appeal Court), Haier argued –among other things– that the District Court had not adequately taken into account the conduct requirements imposed on SEP holders by the Court of Justice of the EU (CJEU) in the Huawei v ZTE ruling [305] (Huawei judgment) rendered after Sisvel had filed the infringement actions.

On 16 January 2016, during the course of the proceedings before the Appeal Court, Haier declared that it was willing to take a FRAND licence from Sisvel, however, only in case that the German courts would finally confirm the validity and infringement of the patent in suit. Haier also requested claim charts with respect to all patents included in Sisvel's portfolio.

In December 2016, Sisvel made a further licensing offer to Haier, which was also rejected.

On 20 January 2017, that is a few weeks prior to the end of the oral arguments in the appeal proceedings, Haier made a further counteroffer to Sisvel. The licence offered would cover only the two subsidiaries of the Haier group sued in Germany. An agreement was not reached.

By two judgments dated 30 March 2017, the Appeal Court partially granted Haier's appeals in both parallel proceedings [306] . The claims for injunctive relief as well as the recall and destruction of infringing products were dismissed on the grounds that Sisvel had not complied with its obligations under the Huawei judgment, especially by failing to make a FRAND licensing offer to Haier.

Sisvel appealed the decisions of the Appeal Court.

In April 2020, the Federal Court of Justice (FCJ or Court) finally dismissed the invalidity action filed by Haier against the patent in suitFederal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18..

On 5 May 2020, FCJ rendered a judgment in the parallel proceedings pending between the parties concerning the patent reading on the GPRS standard [308] . The Court decided in favour of Sisvel and reversed the judgment of the Appeal Court. With the present judgmentSisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by )., the Court reversed the decision of the Appeal Court also in the case involving the patent in suit.
 

B. Court's reasoning

The Court found that the patent in suit was essential to the UMTS standard and infringedIbid, paras. 10-43..

Contrary to the view previously taken by the Appeal Court, FCJ found that by initiating infringement proceedings against Haier, Sisvel had not abused a dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) [311] .
 

Dominant market position

The Court held that Sisvel had a dominant market position within the meaning of Article 102 TFEUIbid, paras. 48 et seqq..

FCJ explained that a dominant market position is given, when a patent is technically essential for comply­ing with a standard developed by a standardisation body (or a de facto standard) and technical alterna­tives to the standard are not available for products brought on a downstream marketIbid, para. 49.. Even when alternative (technical) options exist, market domi­nance can arise as long as products not using the teaching of the patent cannot compete in a (downstream) market.Ibid, para. 49. According to the FCJ, this applied with respect to the patent in suit.
 

Abuse of market dominance

The Court found, however, that Sisvel had not abused its dominant market position by filing infringement actions against HaierIbid, para. 52.. An abuse of market dominance can occur, when the SEP holder
 

  • refuses to grant a FRAND licence to an implementer willing to take such licence and brings a court action against the latter, asserting claims for injunctive relief (and/or the recall and destruction of infringing products), or
  • has not made 'sufficient efforts' in line with the 'particular responsibility' attached to its dominant position to facilitate the signing of a licence agreement with an implementer, who is, basically, willing to take a licenceIbid, para. 53..

In the eyes of the Court, in both above scenarios, the filing of an action against a 'willing' implementer amounts to an abuse, only because the latter has a claim to be contractually allowed by the SEP holder to use the teachings of the patent under FRAND conditionsIbid, para. 54.. On the other hand, an abuse is regularly not per se established by an offer made by the patent holder at the beginning of negotiations, even when the terms offered would unreasonably impede or discriminate the implementer, if contractually agreed.Ibid, para. 54. An abuse would be given, if the SEP holder insisted on such conditions also at the end of licensing negotiations with the imple­menter.Ibid, para. 54.
 

Notification of infringement

The Court explained that the 'particular responsibility' of a market dominant patent holder materializes in an obligation to notify the implementer about the infringement of the patent in suit prior to filing an action, in case that the implementer is (potentially) not aware that by complying with the standard said patent is usedIbid, para. 55..

In the present case, the Court found that by the letter dated 20 December 2012 and the following correspondence Sisvel had given proper notification of infringement to HaierIbid, para. 84..
 

Willingness

On the other hand, the Court found that Haier did not act as a licensee willing to obtain a FRAND licence from SisvelIbid, paras. 86 et seqq.. In this respect, FCJ disagreed with the Appeal Court, which had taken the opposite view.

In the Court's eyes, the implementer must 'clearly' and 'unambiguously' declare willingness to conclude a licence agreement with the SEP holder on FRAND terms and, subsequently, engage in negotiations in a 'target-oriented' manner [320] . By contrast, it is not sufficient, in response to a notification of infringement, to just demonstrate willingness to consider signing a licensing agreement or to enter into negotiations about whether and under which conditions taking a licence comes into question [320] .

The Court reasoned that the willingness of the implementer to legitimise the unauthorized use of the patent for the future by creating a respective contractual base is a prerequisite for placing the burden on the SEP holder to negotiate a FRAND licence with the implementer. [321] What is more, willingness (on both sides) is essential, because an adequate solution balancing the opposing interests of the parties results, as a rule, from an interest-based negotiation. [322] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [323] An implementer, who has not shown interest in a FRAND-licence over a longer period after receipt of an infringement notification will have to undertake 'additional efforts' to make sure, that despite the delay caused a licence can be signed as soon as possible. [324]

The Court highlighted particularly that implementers should not engage in 'patent hold-out' by exploiting the 'structural disadvantage', which SEP holders face due to the limitation of their right to assert patents in court. [325] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [325]

FCJ took the view that the above interpretation of the requirements related to the implementers' obligation to demonstrate willingness to obtain a FRAND-licence is in line with the Huawei judgment; a new referral of the respective questions to the CJEU, as requested by Haier, was not needed.Ibid, para. 63. The Huawei judgment created a 'safe harbour' against antitrust liability in the sense that compliance with the obligations established will regularly suffice to exclude an abuse of market dominance.Ibid, para. 65. Under special circumstances, however, stricter or less strict conduct duties of the parties could be justified.Ibid, para. 65.

The Court observed that the Huawei judgment supports the notion that the implementer should remain willing to obtain a licence throughout the course of negotiations.Ibid, para. 65. The 'continuous' willingness is an 'indispensable condition' for successful negotiations or, in case negotiations fail, for a finding of abuse of market dominance on the side of the SEP holder.Ibid, para. 68. The refusal of SEP holder to grant a FRAND licence would, indeed, have no relevance in antitrust terms, when the implementer is not objectively willing and able to obtain such licence. [329]

Accordingly, FCJ explained that willingness shall (still) be in place, also when the SEP holder makes a licensing offer.Ibid, para. 69. In this regard, the Court disagreed with the District Court of Duesseldorf, which had expressed the opposite view in the recent referral of certain FRAND-related questions to the CJEU in the matter Nokia v Daimler.Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19. According to FCJ, the offer of the SEP holder is just the 'starting point' of negotiations; since FRAND is a range, it is the goal of negotiations to reach a fair and reasonable result considering the interests of both sides.Ibid, paras. 70 and 71. The implementer has, therefore, a duty to examine the FRAND-conformity of the terms of the SEP holder's offer.Ibid, para. 71. If the offer is 'obviously' not FRAND, it will be sufficient that the implementer explains the reasons why this is the case.Ibid, para. 71.

In this context, the Court made clear that the implementer's duty to examine SEP-holder's licensing offer exists, irrespective of whether the offer is, in terms of content, FRAND-compliant in every respect.Ibid, para. 72. If one would require from the SEP holder to make a 'perfect' FRAND offer right away, licensing negotiations would be obsolete.Ibid, para. 73. It is also not possible to assess the FRAND-conformity of the offer in the abstract, without reference to the aspects which each side considers relevant.Ibid, para. 74. The Court reiterated that an non-FRAND licensing offer does not per se amount to an abuse of market dominance.Ibid, para. 76.

Having said that, FCJ noted that for the assessment of the willingness of the implementer its entire conduct (including its reaction to the SEP holder's licensing offer) must be taken into account.Ibid, para. 77. Consequently, willingness can change in the course of time: a court action filed by the SEP holder could become abusive at a later point in time, if the implementer adequately raises a request for a FRAND-licence.Ibid, paras. 79 et seqq. However, the longer the implementer waits with asserting such request, the higher the threshold for considering it as a willing licensee will be. [340] The Court again noted that the above inter­pretation is in line with the Huawei judgment, so that no additional referral to the CJEU is needed, as Haier had requested.Ibid, para. 77.

Against this background, the Court observed that the first response of Haier China to Sisvel's notification almost one year after receipt of the infringement notification was belated [341] . An implementer taking several months to respond to a notification of infringement, typically, sends a signal that there is no interest in taking a licence [341] . Besides that, FCJ found that Haier's response in December 2013, in which only the 'hope' to have a 'formal negotiation' was expressed, was not a sufficient declaration of willing­ness, in terms of content [342] . Since it had reacted belatedly to the notification of infringement, Haier should have undertaken 'additional efforts' to demonstrate willingness, which had been, however, not the case. [343]

Similarly, Haier's letter dated 16 January 2016 did not contain a sufficient declaration of willingness, since Haier had made the signing of a licence subject to the prior confirmation of the validity and infringement of the patent in suit by German courts [344] . Although the implementer is, in principle, allowed to preserve the right to contest the validity of a licensed patent after conclusion of an agreement, the Court held that a declaration of willingness cannot be placed under a respective conditionIbid, para. 95.. Besides that, requesting the production of claim charts for all patents of Sisvel's portfolio almost three years after the receipt of the notification of infringement was, according to the Court, an indication that Haier was only interested in delaying the negotiations until the expiration of the patent in suit [346] .

Furthermore, FCJ found that Haier's willingness to enter into a FRAND licence could also not be extracted from the counteroffers made during the infringement proceedings.Ibid, paras. 102 et seqq. The fact that these counteroffers were, in terms of scope, limited only to the patents asserted by Sisvel in court indicated that Haier had not seriously addressed Sisvel's request for a worldwide portfolio licence. [348] Given that it had more than sufficient time to examine Sisvel's portfolio, one could expect from Haier to provide substantive grounds for such 'selective licensing'. [348]

What is more, the Court held that the counteroffer dated 20 January 2017, which Haier had made shortly before the end of the appeal proceedings, was no sufficient demonstration of willingness either.Ibid, paras. 108 et seqq. The Court focused particularly on the fact that the licence would cover only the two affiliates of the Haier group sued in Germany.Ibid, para. 116. According to FCJ, Haier had no 'legitimate interest' on such 'selective licensing'; on the contrary, a limited licence would offer no sufficient protection against infringement by other companies of the Haier group and force Sisvel to a cost-intensive assertion of its SEPs 'patent to patent and country-by-country'.Ibid, para. 118.

In addition, the Court also criticised the proposed royalty regime.Ibid, paras. 124 et seqq. Haier based the royalty calculation only on a small portion (four patent families) of the SEPs that should be included in the licence, which, in its eyes, were 'probably' essential.Ibid, para. 124. The Court reasoned that the scope of the licence must be clarified in negotiations, whereas in the ICT-sector, due to the large number of relevant patents, it is common to rely on estimations regarding both essentiality and validity, which, on the one hand, allow to take 'necessary remaining uncertainties' adequately into account and, on the other hand, help to avoid disproportionate high transaction costs.Ibid, para. 125.

Apart from that, the fact that the counteroffer was made only in the 'last minute' of the appeal proceedings allowed the conclusion that Haier was not actually aiming at signing a FRAND licence, but was rather motivated by tactical considerations with respect to the pending proceedings.Ibid, para. 126.
 

SEP holder's licensing offer

Having found that Haier had not sufficiently demonstrated willingness to obtain a FRAND licence, the Court did not examine the FRAND-conformity of Sisvel's licensing offers to Haier in the present case [356] . According to FCJ, this question is not relevant, when the implementer has not adequately expressed willingness to sign a FRAND licence.Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.

The Court highlighted that -apart from the obligation to notify the implementer about the infringement- duties of the SEP holder (including the duty to make a FRAND licensing offer) arise only if the implementer has demonstrated willingness to obtain a licence on FRAND terms.Ibid, para. 56. The FRAND-undertaking of the patent holder towards the relevant standardisation body does not change the fact that the user of a patent is, in principle, obliged to seek a licence from the right holder.Ibid, para. 56.
 

C. Other important issues

Patent ambush

The Court dismissed Haier's defence based on the 'patent ambush' argument.Ibid, paras. 127 et seqq. Haier argued that the patent in suit was unenforceable, because the initial patent holder, from whom Sisvel had acquired said patent, had failed to disclose the patent towards ETSI in due course during the development of the UMTS standard.

The Court did not examine whether a 'patent ambush' in the above sense indeed occurred in the present case.Ibid, para. 130. FCJ took the view that an implementer can assert 'patent ambush' only against the patent holder that actually participated in the standard development process; on the contrary, such defence cannot be raised against its successor (here: Sisvel).Ibid, para. 130.

Notwithstanding the above, the Court noted that a 'patent ambush' requires that the decision-making process within the relevant standardisation body was distorted by the withheld information.Ibid, para. 131. Insofar, the implementer must establish at least some indication that the standard would have taken a different form, if the information considering the relevant patent application had been disclosed in time.Ibid, paras. 131 et seq. Haier had, however, failed to do so.Ibid, paras. 131 et seq.
 

Damages

Finally, the Court found that Sisvel's damage claims were given on the merits. Negligence establishing Haier's liability for damages was given: The implementer is, in principle, obliged to make sure that no third party rights are infringed, before starting manufacturing or selling products, which Haier had not done. [363]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [364] The SEP holder is entitled to full damages, unless the implementer can assert an own counterclaim, requesting to be placed in the position, in which it would have been, in case that the SEP holder had fulfilled the obligations arising from its dominant market position. [363] An implementer is, however, entitled to such (counter)claim, only when it adequately expressed its willingness to enter into a licence, which had not been the case here.77

  • [304] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 144/14 (UMTS-related patent) and Case No. 4a O 93/14 (GPRS-related patent).
  • [305] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [306] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 65/15 (UMTS-related patent) and Case No. I-15 U 66/15 (GPRS-related patent).
  • [307] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18.
  • [308] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
  • [309] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by ).
  • [310] Ibid, paras. 10-43.
  • [311] Ibid, para. 44.
  • [312] Ibid, paras. 48 et seqq.
  • [313] Ibid, para. 49.
  • [314] Ibid, para. 52.
  • [315] Ibid, para. 53.
  • [316] Ibid, para. 54.
  • [317] Ibid, para. 55.
  • [318] Ibid, para. 84.
  • [319] Ibid, paras. 86 et seqq.
  • [320] Ibid, para. 57.
  • [321] Ibid, para. 58.
  • [322] Ibid, para. 59.
  • [323] Ibid, para. 60.
  • [324] Ibid, para. 62.
  • [325] Ibid, para. 61.
  • [326] Ibid, para. 63.
  • [327] Ibid, para. 65.
  • [328] Ibid, para. 68.
  • [329] Ibid, paras. 66 and 68.
  • [330] Ibid, para. 69.
  • [331] Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [332] Ibid, paras. 70 and 71.
  • [333] Ibid, para. 71.
  • [334] Ibid, para. 72.
  • [335] Ibid, para. 73.
  • [336] Ibid, para. 74.
  • [337] Ibid, para. 76.
  • [338] Ibid, para. 77.
  • [339] Ibid, paras. 79 et seqq.
  • [340] Ibid, para. 83.
  • [341] Ibid, para. 87.
  • [342] Ibid, paras. 88 et seqq.
  • [343] Ibid, para. 89.
  • [344] Ibid, paras. 93 et seqq.
  • [345] Ibid, para. 95.
  • [346] Ibid, paras. 96-99.
  • [347] Ibid, paras. 102 et seqq.
  • [348] Ibid, para. 102.
  • [349] Ibid, paras. 108 et seqq.
  • [350] Ibid, para. 116.
  • [351] Ibid, para. 118.
  • [352] Ibid, paras. 124 et seqq.
  • [353] Ibid, para. 124.
  • [354] Ibid, para. 125.
  • [355] Ibid, para. 126.
  • [356] The Court had, however, undertaken such analysis in its earlier decision between the same parties dated May 2020. See Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17, especially paras. 76-81 and 101 et seqq.
  • [357] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.
  • [358] Ibid, para. 56.
  • [359] Ibid, paras. 127 et seqq.
  • [360] Ibid, para. 130.
  • [361] Ibid, para. 131.
  • [362] Ibid, paras. 131 et seq.
  • [363] Ibid, para. 135.
  • [364] Ibid, paras. 134 et seqq.

Updated 7 四月 2021

Sisvel v Wiko

OLG Karlsruhe
9 十二月 2020 - Case No. 6 U 103/19

A. Facts

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

The defendants are two companies that are part of the Wiko group (Wiko). [365] Wiko sells mobile phones complying with the LTE standard - among other markets- in Germany.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

With the present judgment [366] (cited by http://lrbw.juris.de/cgi-bin/laender_rechtsprechung/list.py?Gericht=bw&GerichtAuswahl=Oberlandesgerichte&Art=en&sid=2b226ea73cc9637362d8e1af04a34d05), the Higher District Court (Oberlandesgericht) of Karlsruhe (Court) predominantly upheld the judgment of the District Court [367] .
 

B. Court's reasoning

The Court found that Wiko could not successfully raise a so-called 'FRAND-defence' based on an alleged abuse of market dominance (Article 102 TFEU) against the claims for injunctive relief and the recall and destruction of infringing products asserted by Sisvel. [368]

This question was still decisive in the present case, despite the fact that the patent-in-suit expired before the start of the appeal proceedings. The Court explained that the expiration of a patent affects only future acts of use (which, then, no longer constitute infringement): On the contrary, claims that had arisen prior to expiration based on acts of use during the lifetime of the patent are not impaired. [369] Whether claims were given before the expiration of the patent-in-suit is of particular importance, especially when the patent holder has enforced a (first-instance) judgment delivered in proceedings conducted within the term of protection of the patent, as it was the case here. [370]
 

Dominant market position

Having said that, the Court agreed with the finding of the District Court that Sisvel had a market dominant position in terms of Article 102 TFEU with respect to the patent-in-suit in the relevant time period prior to its expiration. [371]

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

Notification of infringement

In the eyes of the Court, Sisvel had sufficiently notified Wiko about the infringement of the patent-in-suit prior to filing a court action. [372] The purpose of the notification of infringement is to draw the implementer's attention to the infringement and the necessity of taking a license on FRAND terms and conditions. [373] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [373] Detailed technical or legal analysis of the infringement allegation is not required. [373] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [373] If the patent holder offers a portfolio licence, respective extended information duties occur. [373]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [374] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [375] What is more, the Court held that the court action initially filed by Sisvel, which did not include claims for injunctive relief and the recall and destruction of infringing products, could also be seen as an adequate notification of infringement. [374]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [376] . The Court agreed with the assessment of the District Court that Wiko delayed the licensing negotiations between the parties with the goal to avoid taking a licence for as long as possible, in order to gain economic benefits. [377]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [378] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [378] . The respective declaration must be 'serious and unconditional'. [378]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [378] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [378]

The implementer must always be willing to obtain a licence and participate in negotiations in a 'target-oriented manner'; since implementers might be inclined to delay negotiations until the expiration of the patent-in-suit, there is a need to make sure that their behaviour in negotiations will not lead to delays. [379] Moreover, it should be expected that a willing implementer would seek a license as soon as possible, in order to shorten the period, in which it makes use of the patent-in-suit or the SEP holder's portfolio without authorisation and without paying licensing fees. [380] Accordingly, a willing licensee would not consider the 'negotiation obligations' of the SEP holder primarily as a means to defend itself against a court action, but as a means to utilize in order to reach a FRAND agreement, if needed. [380]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [381] of the Court of Justice of the EU (CJEU). [382] In Huawei, CJEU focused on the will of the infringer to conclude a license agreement on FRAND terms and emphasized that the latter must not pursue 'delaying tactics'. The Court explained that, although in Huawei the requirement to refrain from 'delaying tactics' is expressly mentioned only with respect to the duty of the implementer to react to a licensing offer of the SEP holder, it applies 'at all times' as long as the implementer uses the patents without a licence; otherwise, the suspension of SEP holder's right to the injunctive relief cannot be justified. [383]

In this context, the Court pointed out that not every 'reluctant involvement' of the implementer in licensing discussions will necessarily allow for the assumption of unwillingness. [384] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [384] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [384] Furthermore, implementers must, in principle, inform the SEP holder of any objections at an early stage and should not wait to raise those much later in court proceedings. [384]

Looking at Wiko's conduct, the Court criticized especially the fact that it became active mostly as a reaction to new developments in the pending infringement proceedings. [385] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [386] As an example, the Court highlighted the fact that Wiko's counteroffer dated 11 November 2016 was made only shortly after Sisvel extended the infringement suit by adding a claim for injunctive relief. [387] Wiko also provided information on past acts of infringement only a few days prior to the first oral hearing in February 2017 (and refrained from constantly updating this information afterwards, as it would be expected by a willing licensee). [388]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [389] Wiko reacted to Sisvel's licensing offers made during the course of the proceedings always belatedly and only after a reminder by Sisvel (for instance, it took Wiko more than three months to react to the 2018 offer) [390] . It also demanded further claim charts in February 2018, years after the action was filed. [391]

Wiko's refusal to sign the NDA offered by Sisvel -despite multiple reminders of the latter- without providing any reasons was also considered as a sign of unwillingness. [392] According to the Court, it should be expected by a willing licensee, who is not interested in delaying negotiations, to swiftly raise any criticisms regarding an NDA proposed by the SEP holder in writing or by e-mail, and not wait to raise any concerns several months later in the infringement proceedings, as Wiko had done here. [393] The Court also considered the fact that Wiko did not access the electronic data room set up by Sisvel containing redacted versions of Sisvel's third party agreements as an additional indication of unwillingness. [394]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [395] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [395] Wiko failed to do so.
 

SEP holder's offer

Since Wiko was found to have been an unwilling licensee, the Court explained that the question whether Sisvel fulfilled its duty to make and adequately elaborate a FRAND licensing offer, was no longer decisive. [396] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [396] Notwithstanding the above, the Court provided guidance on the content and extend of the respective obligation of the SEP holder.

The Court first explained that FRAND is a 'range', which leaves room for flexibility. [397] As a rule, FRAND is determined in bilateral good faith negotiations between SEP holders and implementers, taking into account the specific circumstances of each individual case [397] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [397]

In order to meet its obligation, an SEP holder must present an offer to a willing licensee, which 'in general' complies with FRAND requirements and is fair, reasonable and not discriminatory with respect to the 'average licensee'. [398] The SEP holder shall further explain its offer in a way that permits the licensee to understand the assumptions, on which the offered rate and further conditions are based. [399] The rationale behind this obligation is to create a sufficient basis of information for the implementer for assessing the offer and eventually formulating a counteroffer. [400]

In this context, the Court made clear that implementers should not expect that the SEP holder individually adapts its (first) offer to the specific circumstances of each particular case. [401] The SEP holder's FRAND commitment does not give rise to such obligation. [401] The (first) offer is intended to launch the negotiations and provide an adequate information basis to the implementer, who will then be in a position to suggest necessary amendments by means of a counteroffer. [401] Accordingly, it will regularly be acceptable that the SEP holder's offer is 'not clearly and evidently' non-FRAND and sufficient information was provided to the implementer. [402]

The Court dismissed the notion that the implementer is obliged to negotiate (and eventually) make a counteroffer, only when the SEP holder's offer was fully FRAND-compliant. [402] This would bring the negotiations to a stand-still and, therefore, conflict with the spirit of the Huawei judgment, which is to encourage the parties to reach agreement on the licensing terms. [403] Moreover, the Court explained that –irrespective of whether the offer triggers an obligation of the implementer to submit a counter-offer– the latter will be regularly required, at least, to analyse the SEP holder's offer in due course and express any objections and queries without delay. [404]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [405] The fact that the offers did not define the start of the contract or the amount of royalties payable for past uses was not considered problematic. [406] The Court also found that the royalty rates offered were not 'evidently non-FRAND', since they were sufficiently substantiated by reference to existing licensing agreements and calculated on basis of a 'top-down' method. [407] A need to calculate royalties on grounds of the costs that incurred for the creation of the patented invention (cost-based approach) was not given, since this factor was not relevant for establishing value. [408]

In addition, the Court did not raise any concerns against the fact that Sisvel's offer concerned a worldwide portfolio licence: On the one hand, agreements with such scope are common in the telecommunications industry. [409] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [409]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [410] The Court stressed that, for the purpose of licensing negotiations and the conclusion of a licence, it is not necessary to conclusively clarify whether each portfolio patent is standard-essential. [411] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [411]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [412] This rule corresponds with the common allocation of the burden of proof under German law and does not place unreasonable weight on the licensee, since it will be better situated to trace the licensing chain by engaging with its suppliers. [413]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [414] Such clause would allow the implementer to adapt the agreed royalties, in case that patents fall out of the scope of the licence (e.g. due to expiration or invalidation). The Court saw no need for a respective contractual provision, since the licences offered by Sisvel would expire and, therefore, be re-negotiated after five years. [414] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [415]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [416] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [417] According to the Court, Sisvel was under no circumstances obliged to elaborate on a cost-based calculation of royalties, as requested by Wiko; such demand was considered just another means to delay negotiations. [418]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [419]

The Court highlighted that the obligation of the implementer to submit a FRAND counteroffer to the SEP holder is already triggered, when the previous licensing offer of the latter is not 'clearly and evidently' non-FRAND and sufficient information was provided, enabling the implementer to formulate its counteroffer. [420]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [421] The Court criticized especially the fact that the rates were significantly lower than the rates which were considered to be adequate in previous court decisions. [422] Notwithstanding the above, the Court explained that, even if Wiko's counteroffer had been FRAND, this would not change the conclusion that Wiko had acted as an unwilling licensee. [423] According to the Court, a willing licensee would not have submitted a counteroffer around one year after receipt of the SEP holder's offer, as Wiko did. [424]
 

C. Other important issues

The Court stressed that for generating pressure-free licensing negotiations during pending infringement proceedings, it will, as a rule, be sufficient, if the proceedings are stayed with a view to parallel nullity proceedings concerning the patent-in-suit. [425] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [425] Nevertheless, even if a pressure-free negotiation situation is not given, the infringers is not released from the obligation to act in good faith and engage in licensing negotiations, for instance by analysing a licensing offer of the SEP holder. [425] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [425]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [426] . Even if one would recognize a duty of the SEP holder to share information about the core content of existing licensing agreements (that are still in force), it is questionable whether this duty would also extend to agreements signed by previous patent holders. [427] The Court expressed particular doubts that this applies in cases in which a portfolio was assembled from patents acquired from different patent holders, since the relevance of bilateral or pool licensing agreements of the former patent holder can be limited in this case. [428]

Furthermore, the Court expressed the view that under German law a so-called 'covenant not to sue' does not have the effect of a (royalty-free) licence: such agreements will, as a rule, have only a procedural effect in terms of a pactum de non petendo, excluding only the initiation of court proceedings. [429]

Finally, the Court denied Wiko's motion to order a stay in the appeal proceedings due to the recent referral of several questions regarding the interpretation of the Huawei framework to the CJEU by the District Court of Düsseldorf in the matter Nokia v Daimler [430] . [431] According to the Court, it appears unlikely that the CJEU will establish criteria, by which SEP-based court actions against implementers engaging in delaying tactics would amount to an abuse of market dominance. [432]
 

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

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) [433] . 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 [434] .

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 [435] . The Defendant filed an action for invalidity against the Claimant’s SEP in Germany [435] .

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 [435] . Subsequently, several licensing offers and counter-offers were made by the Claimant and the parent company respectively [435] . 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 [436] . In response, the parent company confirmed that it is willing to obtain a licence, among others, by letter dated 7 September 2016 [437] . 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 [438] .

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 [439] . 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) [439] . This deadline was extended for almost three weeks until 7 May 2018 [439] .

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) [439] .

With the present judgment the Court ruled that the Defendant is liable for damages arising from the infringement of the SEP in suit [440] . The Court also ordered the Defendant to render accounts and to provide relevant information to the Claimant [440] . 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 [441] .


B. Court’s reasoning

The Court held that the products sold by the Defendant in Germany infringe Claimant’s SEP [442] . Thus, the Defendant is obliged to compensate the damages suffered by the Claimant and the previous holder of the patent in suit [440] . 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) [440] .

In the Court’s view, the Defendant cannot raise a defence based on a so-called “patent ambush” against these claims [443] . 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 [444] . 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” [444] . The Court held that the Defendant failed to establish such fact [443] . 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?) [443] .

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 [445] .

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 [446] . The wording of Article 6.1. ETSI IPR Policy establishes a respective assumption [446] . 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 [436] . 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 [436] . 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 [447] .

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 [445] . 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 [445] .

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 [445] . 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 [449] .

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 [450] .

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) [451] .

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 [436] . 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) [436] .

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) [452] .

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) [437] .

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 [437] .

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) [453] . 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 [437] .

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 [454] . Only then, the SEP user’s consequent obligation under the Huawei framework to make a FRAND counter-offer to the SEP holder is triggered [454] . 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 [454] . For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed [454] .

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 [455] . 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 [455] . 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”) [455] . 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 [456] . Otherwise, the initiation of the infringement proceedings shall be considered as abusive in terms of antitrust law [456] . In the present case, the Claimant chose to not ask for a stay in the proceedings, ignoring the Court’s respective indication [456] .


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 [457] . On the other hand, it does not define the ownership of the patent in material legal terms [458] . Nevertheless, the patent registration establishes an assumption of ownership which must be rebutted by the defendant in infringement proceedings based on concrete indications [459] .

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 [460] . As a rule, it must be expected with a sufficient degree of probability that the patent(s) in suit will be invalidated [460] . The Defendant failed convince the Court that this was the case with the SEP in suit [460] .

  • [433] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, page 2 and 23.
  • [434] Ibid, page 23 et seq.
  • [435] Ibid, page 5.
  • [436] Ibid, page 25.
  • [437] Ibid, page 26.
  • [438] Ibid, pages 5 et seq.
  • [439] Ibid, page 6.
  • [440] Ibid, page 19.
  • [441] Ibid,page 23.
  • [442] Ibid, pages 16 et seqq.
  • [443] Ibid, page 20.
  • [444] Ibid, page 21.
  • [445] Ibid, page 22.
  • [446] Ibid, page 24.
  • [447] Ibid, pages 24 et seq.
  • [448] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13.
  • [449] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, pages 22.
  • [450] Ibid,pages 23 and 25.
  • [451] Ibid, page 23.
  • [452] Ibid, pages 23 and 25 et seq.
  • [453] Ibid, pages 26 et seqq.
  • [454] Ibid, page 27.
  • [455] Ibid, page 28.
  • [456] Ibid, page 29.
  • [457] Ibid, page 10.
  • [458] Ibid, pages 10 et seq.
  • [459] Ibid, page 11.
  • [460] 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) [461] . 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 [462] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [463] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [463] .

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) [464] . 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 [465] . 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 [466] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [466] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [467] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [465] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [468] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [469] , it found that the Claimant cannot enforce its patent rights for the time being [470] , 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) [468] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [472] .

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 [473] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [474] . 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 [475] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [476] .

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 [477] . 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 [477] . 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 [477] .

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 [477] . 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) [477] . 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 [477] .

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 [478] .

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 [479] . 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 [480] .

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 [481] .

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 [482] . 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 [482] .

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

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) [484] . 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) [484] . 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 [484] .

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 [485] .

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 [486] .

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 [487] . Given the circumstances of the specific case, even an implicit behaviour can suffice [487] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [488] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [488] . 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 [488] . 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 [488] .

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 [489] . 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 [490] .

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 [491] .

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 [492] . 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 [465] .

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 [493] . 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 [494] .

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 [495] . 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 [495] . 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 [495] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [496] . 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 [497] .

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 [467] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [498] .

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 [499] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [500] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [501] .

First, the terms did not adequately consider the effects of patent exhaustion [502] . As a rule, FRAND requires licensing offers to contain respective provisions [503] . 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 [504] .

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 [505] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [506] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [507] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [508] . 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 [508] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [509] .

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 [499] . 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) [510] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [511] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [511] . 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 [512] .

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 [513] . 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 [514] .

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 [515] . 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 [516] . 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 [517] .

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 [518] . 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 [518] . 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) [518] . 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 [518] . 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 [519] .

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 [520] . 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 [521] . 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 [522] .

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 [523] .


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 [524] .

  • [461] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
  • [462] Ibid, para. 13.
  • [463] Ibid, para. 12.
  • [464] Ibid, paras. 14 and 211.
  • [465] Ibid, para. 15.
  • [466] Ibid, para. 16.
  • [467] Ibid, para. 236.
  • [468] Ibid, paras. 140 and 313 et seqq.
  • [469] Ibid, paras. 114 et seqq.
  • [470] Ibid, paras. 60 and 140.
  • [471] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [472] Ibid, para. 142.
  • [473] Ibid, para. 148.
  • [474] Ibid, paras. 153 and 146.
  • [475] Ibid, paras. 159 - 181.
  • [476] Ibid, para. 158.
  • [477] Ibid, para. 147.
  • [478] Ibid, paras. 183 et seqq.
  • [479] Ibid, para. 191.
  • [480] Ibid, para. 188.
  • [481] Ibid, paras. 195 et seqq.
  • [482] Ibid, para. 199.
  • [483] Ibid, para. 198.
  • [484] Ibid, para. 200.
  • [485] Ibid, para. 203.
  • [486] Ibid, para. 205.
  • [487] Ibid, para. 208.
  • [488] Ibid, para. 207.
  • [489] Ibid, para. 210.
  • [490] Ibid, para. 212.
  • [491] Ibid, paras. 215 et seq.
  • [492] Ibid, para. 220.
  • [493] Ibid, paras. 222 et seqq.
  • [494] Ibid, para. 225.
  • [495] Ibid, para. 233.
  • [496] Ibid, para. 228.
  • [497] Ibid, para. 230.
  • [498] Ibid, para. 237.
  • [499] Ibid. para. 241.
  • [500] Ibid, para. 242.
  • [501] Ibid, paras. 283 et seqq.
  • [502] Ibid, para. 285.
  • [503] Ibid, para. 288.
  • [504] Ibid, paras. 292 et seq.
  • [505] Ibid, paras. 298 et seqq.
  • [506] Ibid, para. 301.
  • [507] Ibid, para. 306.
  • [508] Ibid, para. 311.
  • [509] Ibid, para. 271.
  • [510] Ibid, para. 250.
  • [511] Ibid, para. 248.
  • [512] Ibid, para. 267.
  • [513] Ibid, paras. 256 and 259 et seq.
  • [514] Ibid, para. 262.
  • [515] bid, paras. 258 and 264.
  • [516] Ibid, paras. 263 and 265.
  • [517] Ibid, para. 265.
  • [518] Ibid, para. 273.
  • [519] Ibid, para. 274.
  • [520] Ibid, para. 276.
  • [521] Ibid, para. 277.
  • [522] Ibid, para. 281.
  • [523] Ibid, para. 315.
  • [524] 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 [525] 。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 [526]


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 [527] 。此外,上诉法院认为该专利具备标准必要性,并且遭受侵权 [528]

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 [529] 。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 [530] 。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 [531]

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 [532] 。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 [533]

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 [534] 。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 [535] 。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 [536] 。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 [537] 。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” [538]

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 [539] 。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 [540] 。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 [541]

  • [525] Koninklijke Philips N.V. v. Asustek Computers INC, District Court of the Hague, 2017, Case No. C 09 512839 /HA ZA 16-712。
  • [526] 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。
  • [527] 同上注, 段4.63, 4.68, 4.75, 4.80, 4.82, 4.93, 4.100, 及 4.117。
  • [528] 同上注, 段4.118及以下。
  • [529] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case-No. C-170/13。
  • [530] 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。
  • [531] 同上注, 段4.155及4.157。
  • [532] 同上注, 段 4.159。
  • [533] 同上注, 段 4.164。
  • [534] 同上注, 段 4.171。
  • [535] 同上注, 段 4.172。
  • [536] 同上注。
  • [537] 同上注, 段4.172-4.179。
  • [538] 同上注, 段 4.179。
  • [539] 同上注, 段 4.183。
  • [540] 同上注, 段 4.185。
  • [541] 同上注, 段4.202及以下。

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 [542] 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 [543] 。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 [544]

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 [545] 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 [546] 。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 [547] 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 [548] ——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 [548] 。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 [548]

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 [549] 以及海牙上诉法院在飞利浦诉华硕案 [550] 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 [551] ,并且情况是否如此则需要视个案具体情况进行个别评估 [552]

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 [553] 。通知的详细程度适当与否则应根据具体个案情况判定 [553] 。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 [553] 。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 [553] 。。

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 [554]

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 [555] 。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 [556] 。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 [555] ,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 [549]

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 [557] 。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 [558] 。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 [559]

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 [560] 。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 [560] 。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 [560]

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 [561] 。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 [561]

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 [562]

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” [562]

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 [562] 。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 [562] 。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) [562] 。。

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 [559]

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” [559] 。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 [559]

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 [559]

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 [563] 。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 [563] 。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 [564]

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 [565] 。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 [565]

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 [566] 。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 [567] 。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 [567]

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 [564] 。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 [564] 。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 [564] 。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 [564] 。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 [564] 。。

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 [568] 。 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) [564] 。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 [548] 。。

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 [544] 。在法院看来,Wiko采用了拖延战术 [544] 。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 [568] 。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 [568]

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 [569]

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 [569]

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 [570] 。 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 [570]

  • [542] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16。
  • [543] 同上注, 页 17-31。
  • [544] 同上注, 页 46。
  • [545] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13。
  • [546] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 42。
  • [547] 同上注, 页 43 及 页 51 及以下。
  • [548] 同上注, 页 42。
  • [549] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, 段 282。
  • [550] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01。
  • [551] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 44。
  • [552] 同上注, 页 44。
  • [553] 同上注, 页 37。
  • [554] 同上注, 页47 及 53。
  • [555] 同上注, 页 38。
  • [556] 同上注, 页 37 及以下。
  • [557] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 39。
  • [558] 同上注, 页 39。
  • [559] 同上注, 页 40。
  • [560] 同上注, 页 53。
  • [561] 同上注, 页 54。
  • [562] 同上注, 页 55。
  • [563] 同上注, 页 40 及页 49。
  • [564] 同上注, 页 41。
  • [565] 同上注, 页 49。
  • [566] 同上注, 页 50。
  • [567] 同上注, 页 51。
  • [568] 同上注, 页 47。
  • [569] 同上注, 页 35。
  • [570] 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) [571] . 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) [572] .

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 [573] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [574] . It has signed licensing agreements with approx. 1,400 implementers [574] .

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) [575] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [576] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [577] .

In 2012, the parent company acquired patents included in the MPEG LA pool [572] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [578] , 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 [579] .

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 [580] . 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 [581] . 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 [582] .

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 [583] . 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 [584] (Huawei obligations or framework) with respect to dominant undertakings [585] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [586] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [587] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [587] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [588] . A dominant market position is given, when the use of the SEP is required for entering the market [588] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [588] .

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 [589] .

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 [590] . 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) [591] . 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 [592] .

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 [593] . 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 [594] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [595] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [596] . 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 [597] . 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 [598] . 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 [599] .

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 [600] .

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 [601] .

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 [602] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [602] . 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) [603] . 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 [604] . 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 [605] . 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 [606] .

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 [607] . 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 [608] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [608] . 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 [608] . The respective test is, however, subject to strict conditions [608] .

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) [609] . 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) [610] , 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 [611] .

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 [612] .

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 [613] . The implementer is not required to refer to a specific licensing agreement [613] .

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 [614] .

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 [615] .

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 [616] . 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 [617] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [618] . 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 [619] . 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 [620] .

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 [621] . 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 [622] .

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 [623] . 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) [624] . 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 [624] . 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 [624] . 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 [625] .

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 [626] . 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 [626] . 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 [627] .

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 [628] . 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 [628] . 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 [628] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [628] .

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 [629] . 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 [629] . 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 [630] . 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 [630] .

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 [631] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [632] . 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 [633] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [634] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [635] . 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 [635] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [636] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [637] . 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 [638] . 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 [639] .

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 [640] .

  • [571] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
  • [572] Ibid, para. 58
  • [573] Ibid, para. 57
  • [574] Ibid, para. 59
  • [575] Ibid, paras. 61 et seqq. and 340
  • [576] Ibid, para. 65
  • [577] Ibid, para. 66
  • [578] Ibid, para. 73
  • [579] Ibid, para. 42
  • [580] bid, para. 74
  • [581] Ibid, paras. 75 et seq
  • [582] Ibid, para. 75
  • [583] Ibid, paras. 127 – 254
  • [584] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
  • [585] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
  • [586] Ibid, para. 283 and paras. 291 et seqq
  • [587] Ibid, para. 286
  • [588] Ibid, para. 287
  • [589] Ibid, paras. 291 et seqq
  • [590] Ibid, para. 296
  • [591] Ibid, para. 300
  • [592] Ibid, para. 302
  • [593] Ibid, para. 308
  • [594] 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
  • [595] Ibid, para. 305
  • [596] Ibid, paras. 306 et seqq
  • [597] Ibid, para. 310
  • [598] Ibid, para. 311
  • [599] Ibid, para. 312
  • [600] Ibid, para. 421
  • [601] Ibid, para. 314
  • [602] Ibid, para. 320
  • [603] Ibid, para. 318
  • [604] Ibid, para. 329
  • [605] Ibid, paras. 336 et seq
  • [606] Ibid, para. 338
  • [607] Ibid, para. 198
  • [608] Ibid, para. 315
  • [609] Ibid, paras. 340 et seq
  • [610] Ibid, paras. 342 et seqq
  • [611] Ibid, para. 344
  • [612] Ibid, para. 346
  • [613] Ibid, para. 348
  • [614] Ibid, para. 352
  • [615] Ibid, para. 367
  • [616] Ibid, para. 369
  • [617] Ibid, para. 370
  • [618] Ibid, para. 378
  • [619] Ibid, para. 371
  • [620] Ibid, para. 374
  • [621] Ibid, para. 376
  • [622] Ibid, para. 377
  • [623] Ibid, para. 380
  • [624] Ibid, para. 381
  • [625] Ibid, para. 386
  • [626] Ibid, para. 382
  • [627] Ibid, para. 387
  • [628] Ibid, para. 391
  • [629] Ibid, para. 392
  • [630] Ibid, para. 393
  • [631] Ibid, para. 397
  • [632] Ibid, para. 398
  • [633] Ibid, para. 399
  • [634] Ibid, para. 402
  • [635] Ibid, para. 404
  • [636] Ibid, para. 410
  • [637] Ibid, para. 413
  • [638] Ibid, para. 416
  • [639] Ibid, para. 417
  • [640] Ibid, para. 411

Updated 2 八月 2019

Philips v Wiko, Court of Appeal of The Hague

荷兰法院判决
2 七月 2019 - Case No. C/09/511922/HA ZA 16-623

A. Facts

By letter dated 13 October 2013, the Claimant, Koninklijke Philips N.V. (“Philips”), informed the Defendant, Wiko SAS (“Wiko”), that it holds patents declared essential to the UMTS and LTE mobile telecommunication standards (Standard Essential Patents or “SEPs”) towards the European Telecommunications Standards Institute (“ETSI”). The letter included a list of some of Wiko’s products and invited Wiko to discuss a FRAND licensing agreement [641] . Wiko did not react to the letter [642] .

On 28 July 2015, Philips sent Wiko claim charts and a licensing agreement [643] . The communication remained unanswered by Wiko [642] .

On 19 October 2015, Philips started the present proceedings against Wiko [644] . On 25 August 2016, Wiko made a counteroffer [645] . Since 2016, it has also provided information about worldwide units sold and blocked an amount of EUR 895.000 into an escrow account [642] .

After the present proceedings were filed, Philips brought a further action against Wiko before the District Court of Mannheim (Mannheim Court), Germany (German proceedings). On 2 March 2018, the Mannheim Court honoured Wiko’s FRAND defence and dismissed Philips’ action.

In an interlocutory decision dated 16 April 2019, the Court of Appeal of The Hague (Court) held that the patent in suit EP1 623 511 (EP 511) is valid and that Wiko is infringing this patent [646] . Wiko claimed that, as this patent is a SEP and Philips has not complied with its contractual duties, Philips is abusing its dominant position by initiating infringement proceedings against Wiko [642] .

With the present judgment, the Court granted Philips’ request for injunctive relief [647] , destruction [648] and the recall of products [649] , but partly invalidated EP 511, insofar it goes beyond the claims of the second auxiliary request [650] .

B. Court’s reasoning

German Proceedings and Lis Pendens

Since the Court of Manheim in Germany had honoured its FRAND defence, Wiko argued that Articles 29 and 30 of Brussels Regulation 1215/2012 on jurisdiction and enforcement of judgements (Brussels Regulation) are applicable and that the Court is not competent for the present case [651] .

The Court rejected this argument, underlying that each national proceedings are based on a national counterpart of a European patent. For each national counterpart, the concerned national jurisdiction is exclusively competent [652] .

The fact the same FRAND defence has been raised in the German proceedings does not prevent the Court from moving on with its proceedings. The application of Articles 29 and 30 of the Brussels Regulation on cases with same object requires that the filed claims, not the raised defences, are identical [651] .

The Court concluded that recognition of the Mannheim decision would not affect the pending proceedings, as the patents at stake were not the same [653] .

Patent essentiality and infringement

Philips had declared EP 511 as essential to HSUPA (part of UMTS standard) towards ETSI on 26 November 2009 [654] . The fact that EP 511 is essential to HSUPA was not challenged by Wiko [655] .

Moreover, the interlocutory decision of the Court dated 16 April 2019 confirmed that claims 1, 9 and 12 of EP 511 are implemented in the UMTS standard [642] .

FRAND negotiations and application of the Huawei steps

The Court considers that the Huawei decision [656] does not set up strict rules, but rather guidelines for FRAND negotiations in good faith between the parties [657] .

Regarding the first step of the Huawei decision, that is the SEP-holder’s obligation to notify the implementer of the patents at stake and the infringement [658] , the Court underlines that this approach is different than what had been previously decided in a Dutch case prior to the Huawei decision, Philips v. SK Kassetten [659] .

Moving on to the next step, the Court found that Wiko had not fulfilled its duty as it did not react to Philips’ notification [660] . The Court, therefore, held that Philips was not obliged to make a licensing offer to Wiko, before starting proceedings against Wiko [642] .

FRAND offer

Nevertheless, Philips had made an offer to Wiko on 28 July 2015 [661] . This offer was for a worldwide licence under Philips’ UMTS and LTE SEPs [662] .

Philips’ expert explained that the offered rate amounting to USD 1,0 per product (non-compliant rate) and USD 0,75 per product (compliant rate) was justified in view of all UMTS and LTE SEPs [642] .

However, Wiko argued that Philips’ offer is not FRAND for the following reasons: Philips did not specify that its offer was FRAND compliant and did not explain how the offer was FRAND [663] .

Contrary to German courts, the Court held that the Huawei steps do not imply a substantiation duty [664] , but solely the duty to specify the amount of the rate and the way it is calculated [665] . It bases this reasoning on the fact that the Huawei decision has to be read in light of a previous German decision, the Orange Book Standard decision, where the German Supreme Court decided it was up to the implementer to make a first FRAND offer [642] . The Court interprets the Huawei decision as requiring the SEP-holder, as it is in a better position to do so, to make a first FRAND offer after the implementer has demonstrated itself to be a “willing licensee” [642] . But it does not require the SEP-holder to substantiate its FRAND offer and give insights on why he believes the offer is FRAND. The Court also considers there is no duty for the SEP-holder to justify its rate in view of what other licensees are paying [666] .

Wiko also challenged specific terms of the license, i.e. the suggested duration (until expiry of the last patent), the coupling of UMTS and LTE SEPs, as well as the requested fixed licence fees [667] . The Court held, however, that Wiko did not provide any evidence to support its position that Philips’ offer is not FRAND [642] . Additionally, the Court attached importance to the fact that Philips had expressed its willingness to discuss the offer and specific circumstances with Wiko [668] . Philips had even asked Wiko to make a counteroffer, which the latter did not [669] .

The Court further pointed out that the fact that there are different terms and conditions with other parties does not necessarily imply that the offer made to Wiko is discriminatory [670] . It stressed that “non-discriminatory” does not mean that every licensee must be offered the same structure and rate; the “non-discriminatory” nature of an offer depends on the facts and circumstances of the specific case [642] .

Wiko’s counteroffer

Wiko GmbH, an entity legally independent from other Wiko entities, had made a counteroffer to Philips [671] . However, the Court did not consider this counteroffer as a counteroffer made by the Defendant of the present proceedings to Philips [642] .

Besides that, the Defendant had also made a counteroffer to Philips after the start of the present proceedings [672] . This offer was based on the following estimates: the total number of UMTS and LTE SEPs was 12.000, out of which Wiko estimated that Philips holds 97 families, and the aggregated royalty rate for all SEPs amounted to 12% [673] . Wiko derived a rate of 0.001% per SEP family and made the following counteroffer to Philips [642] :

- 0.042% for the compliant rate (EUR 0.027)

- 0.066% for the non-compliant rate (EUR 0.043)

- 0.0315% for past sales (EUR 0.020).

Subsequently, Wiko made a further offer to Philips of 0.084 (which, in Philips‘ eyes, referred to a percentage) [642] .

The Court held that Wiko’s counteroffers were not FRAND. It found that the counteroffer included too many patents into the total SEPs pool, because it included base station and infrastructure patents, while Philips portfolio was focused on cellphone patents [674] . Consequently, the Court concluded that Philips held a higher percent of SEPs than estimated by Wiko [642] . It also highlighted that Wiko did not provide any explanation with respect to a proposed discount of the initially estimated rate of 0.097% and the aggregated royalty rate [674] . The Court also noticed that, while Wiko stated Philips’ rate should account for the technical and economic value of Philips’ SEPs, this analysis was missing from Wiko’s counteroffer [675] . It added that Wiko’s counteroffer did not account for the value of Philips’ SEPs in view of other SEPs for the same standard [676] .

Abuse of a dominant position

The Court held that the Huawei case requires that the facts and circumstances of a case have to be assessed to determine if there is an abuse of a dominant position [657] . Furthermore, the Court also referred to the decision of the UK High Court of Justice in Unwired Planet v. Huawei to note that the fact that the circumstances of a case diverge from the Huawei scheme does not automatically lead to the conclusion of an abuse of a dominant position, if the SEP-holder, nonetheless, files an action against an implementer [642] .

The Court expressly pointed out that if starting proceedings is considered as an abuse of a dominant position, then implementers have no incentives to comply with the Huawei steps and can just delay the negotiations [677] .

With respect to the asserted claims for injunction and recall of products, the Court found that the facts and circumstances of this case were different from the German proceedings, where the Mannheim Court viewed Wiko as a “willing licensee” [678] .

Wiko did not demonstrate itself to be a “willing licensee”, as it did not react to Philips’ notification, and did not comply with the required Huawei steps. Therefore, the Court rejected Wiko’s FRAND defence and granted Philips’ request for an injunction and recall of products.

  • [641] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.1
  • [642] Ibidem
  • [643] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.2
  • [644] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.3
  • [645] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
  • [646] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 3.1
  • [647] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.1
  • [648] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.4
  • [649] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.3
  • [650] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.8
  • [651] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.1
  • [652] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.2
  • [653] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.3
  • [654] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.5 and 4.6
  • [655] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.5
  • [656] Huawei v ZTE, Court of Justice of the EU, judgement dated 16 July 2015, Case No. C-170/13.
  • [657] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.14
  • [658] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10
  • [659] Case reference: Court of The Hague, Philips v. SK Kassetten, 17 March 2019, referred to in Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10.
  • [660] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.15
  • [661] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.16
  • [662] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.27
  • [663] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.17
  • [664] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18 and 4.19
  • [665] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18
  • [666] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.19
  • [667] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.31
  • [668] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.26, 4.31, 4.32, 4.36
  • [669] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.36
  • [670] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.34
  • [671] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.20
  • [672] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
  • [673] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.38
  • [674] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.40
  • [675] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.39
  • [676] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.41
  • [677] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.21
  • [678] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.22

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 [679] (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 [680] 。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 [681] 。 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”) [682]

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 [683]

 

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 [684] 。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 [684]

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 [685] 。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 [686] 。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 [686] 。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 [687]

 

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 [688] 。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 [689] [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 [688] 。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 [688] 。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) [688] 。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 [690]

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 [691] 。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 [692]

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) [693] 。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 [693]

 

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 [694]

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) [695] 。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 [696] 。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 [695]

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 [695] 。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 [695]

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 [697] 。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 [698]

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 [699] 。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 [700]

 

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 [701]

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 [702] 。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 [702]

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 [703] 。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“ [703] 。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 [704] 。法院指出,有数种手段可以确保这种情况不会发生 [704]

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 [704] 。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 [704] 。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 [704]

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 [705] 。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 [705]

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 [706] 。 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 [707] 。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 [708] 。连网功能确保了创造此一价值的机会 [709] 。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 [710]

 

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 [711]

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 [712] 。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 [712] 。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” [712]

《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 [713]

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 [714] 。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 [715] 。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 [716] 。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 [717]

 

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 [718]

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 [719] 。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 [719] 。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 [719]

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 [720] 。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 [721] 。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 [721]

 

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 [722]

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 [723] 。而在当前诉讼中情况并非如此 [724]

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 [725] 。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 [725]
 

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 [726] 。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 [727]
 

  • [679] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19。
  • [680] 同上注, 段 49-136。
  • [681] 同上注, 段 138。
  • [682] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [683] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19, 段 144。
  • [684] 同上注, 段 146。
  • [685] 同上注, 段 147。
  • [686] 同上注, 段 148。
  • [687] 同上注, 段 149。
  • [688] 同上注, 段 152。
  • [689] 同上注, 段 151-156。
  • [690] 同上注, 段 248。
  • [691] 同上注, 段 153 及以下。
  • [692] 同上注, 段 154。
  • [693] 同上注, 段 155。
  • [694] 同上注, 段 157-231。
  • [695] 同上注, 段 158。
  • [696] 同上注, 段 159。
  • [697] 同上注, 段 161。
  • [698] 同上注, 段 197-199。
  • [699] 同上注, 段 157, 160 及 162-164。
  • [700] 同上注, 段 160 及 165-168。
  • [701] 同上注, 段 169。
  • [702] 同上注, 段 170。
  • [703] 同上注, 段 171。
  • [704] 同上注, 段 172。
  • [705] 同上注, 段 173。
  • [706] 同上注, 段 174 及以下。
  • [707] 同上注, 段 174。
  • [708] 同上注, 段 177。
  • [709] 同上注, 段 180。
  • [710] 同上注, 段 187 及以下。
  • [711] 同上注, 段 201-212。
  • [712] 同上注, 段 202。
  • [713] 同上注, 段 203。
  • [714] 同上注, 段 205。
  • [715] 同上注, 段 210。
  • [716] 同上注, 段 213。
  • [717] 同上注, 段 215。
  • [718] 同上注, 段 216 及以下。
  • [719] 同上注, 段 217。
  • [720] 同上注, 段 218。
  • [721] 同上注, 段 230。
  • [722] 同上注, 段 232 及以下。
  • [723] 同上注, 段 234, 236 及以下。
  • [724] 同上注, 段 240 及以下。
  • [725] 同上注, 段 239。
  • [726] 同上注, 段 253 及 291。
  • [727] 同上注, 段 291。

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. [728] 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). [729] The Claimant also initiated parallel infringement proceedings against the Defendants in Germany. [730]

The High Court conducted three technical trials first, focusing on the validity and essentiality of four of the SEPs in suit. [731] 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. [731] The parties agreed to postpone further technical trials indefinitely. [731]

In July 2016, Samsung took a licence from the Claimant covering, among other, the SEPs in suit. [732] The Claimant also settled the infringement proceedings with Google. [733]

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. [734]

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) [735] in accordance with the undertaking given by the Claimant towards the European Telecommunications Standards Institute (ETSI). [736] Pending appeal, the High Court stayed the injunction. [737]

Shortly after the High Court delivered its decision, the Defendants began proceedings against the Claimant in China, which are still pending. [738]

With the present judgment, the UK Court of Appeal dismissed the Defendants’ appeal against the decision of the High Court. [739]


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. [740]

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. [741]

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 [742] (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”). [743]

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. [744]


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). [745]

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) [746] . [747]

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. [748] Such an undertaking has international effect. [749] It applies to all SEPs of the patent holder irrespective of the territory in which they subsist. [750] This is necessary for two reasons: first, to protect implementers whose equipment may be sold and used in a number of different jurisdictions. [750] 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. [751]

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. [752] German Courts (in Pioneer Acer [753] and St. Lawrence v Vodafone [754] ) as well as the European Commission in its Communication dated 29 November 2017 [755] had also adopted a similar approach. [756]

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. [751] 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. [757] In this way, the implementer would have an incentive to hold out country-by-country, until it was compelled to pay. [757]

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. [758]

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. [759] The reality is that a number of sets of terms may all be fair and reasonable in a given set of circumstances. [759] Whether there is only one true set of FRAND terms or not, is, therefore, more of a “theoretical problem” than a real one. [760] 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. [760]

Furthermore, the Court of Appeal dismissed Defendants’ claim that imposing a worldwide licence is contrary to public policy and disproportionate. [761] In particular, the Defendants argued that this approach encourages over-declaration of patents [762] and is not compatible with the spirit of the Directive 2004/48/EC on the enforcement of intellectual property rights, [763] which requires relief for patent infringement to be proportionate. [764]

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. [765] 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. [766]


2. Non-discrimination

The Court of Appeal rejected the Defendants’ argument [767] 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. [768]

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. [769] 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 [770] 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. [771]

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). [772] 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. [773] 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. [774]

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. [775]

Conversely, the Court of Appeal followed the notion described by the High Court as the “general” non-discrimination approach: [776] 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. [776] For determining the benchmark rate, prior licences granted by the SEP holder to third parties will likely form the “best comparables”. [777]

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. [778] 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. [778]

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. [779] 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. [779] 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. [780]


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. [781]

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. [782] 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 [783] ) and that the constrains imposed upon the SEP holder’s market power by the limitations attached to the FRAND undertaking [784] and the risk of hold-out that is immanent to the structure of the respective market, [785] can either alone or together rebut the assumption that it most likely holds market power. [786]

Notwithstanding the above, the Court of Appeal held that the Claimant had not abused its market power in the present case. [787]

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. [788] 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. [789] 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. [790]

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. [791] This follows from the clear language used by the CJEU with respect to this obligation. [792] The precise content of such notice will depend upon all the circumstances of the particular case. [792] 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. [793]

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. [794]

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. [795] Insofar the court agreed with the respective approach developed by German courts in co-called “transitional” cases (Pioneer v Acer, [796] St. Lawrence v Vodafone [796] and Sisvel v Haier [797] ) [798] .

  • [728] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, Case-No. A3/2017/1784, [2018] EWCA Civ 2344, para. 233.
  • [729] Ibid, para. 6 et seqq.
  • [730] Ibid, para. 233.
  • [731] Ibid, para. 7.
  • [732] Ibid, paras. 8 and 137 et seqq.
  • [733] Ibid, para. 8.
  • [734] Ibid, para. 9 et seqq.; para. 31 et seqq.
  • [735] Ibid, para 17.
  • [736] Ibid, para 130.
  • [737] Ibid, para 18.
  • [738] Ibid, para 112.
  • [739] Ibid, para 291.
  • [740] Ibid, paras. 19 and 45 et seqq.
  • [741] Ibid, paras. 20 and 132 et seqq.
  • [742] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-170/13.
  • [743] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 21, paras. 211 et seqq and para. 251.
  • [744] Ibid, para. 17.
  • [745] Ibid, paras. 74 and 77 et seq.
  • [746] Ibid, para. 82.
  • [747] Ibid, para. 80.
  • [748] Ibid, para. 79 et seq.
  • [749] Ibid, para. 26.
  • [750] Ibid, para. 53.
  • [751] Ibid, para. 54 et seq., para. 59.
  • [752] Ibid, para. 56.
  • [753] Pioneer v Acer, District Court of Mannheim, judgement dated 8 January 2016, Case No. 7 O 96/14.
  • [754] St. Lawrence v Vodafone, District Court of Düsseldorf, judgement dated 31 March 2016, Case No. 4a O 73/14.
  • [755] 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.
  • [756] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 74.
  • [757] Ibid, para. 111.
  • [758] Ibid, para. 128.
  • [759] Ibid, para. 121.
  • [760] Ibid, para. 125.
  • [761] Ibid, para. 75.
  • [762] Ibid, para. 92
  • [763] 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)
  • [764] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 94.
  • [765] Ibid, para. 96.
  • [766] Ibid, para. 98.
  • [767] Ibid, para. 20 and 132 et seqq.
  • [768] Ibid, paras. 207 and 210.
  • [769] Ibid, para. 176.
  • [770] Ibid, para. 173.
  • [771] Ibid, para. 169 et seq.
  • [772] Ibid, paras. 194 et seqq.
  • [773] Ibid, para. 198.
  • [774] Ibid, para. 198.
  • [775] Ibid, para. 199.
  • [776] Ibid, para. 195.
  • [777] Ibid, para. 202.
  • [778] Ibid, para. 196.
  • [779] Ibid, para. 197.
  • [780] Ibid, para. 200.
  • [781] Ibid, para. 21, paras. 211 et seqq and para. 251.
  • [782] Ibid, para. 212.
  • [783] Ibid, para. 216.
  • [784] Ibid, para. 219.
  • [785] Ibid, para. 220.
  • [786] Ibid, para. 229.
  • [787] Ibid, para. 284.
  • [788] Ibid, para. 269.
  • [789] Ibid, para. 270.
  • [790] Ibid, para. 269 and 282.
  • [791] Ibid, para. 253 and 281.
  • [792] Ibid, para. 271.
  • [793] Ibid, para. 273.
  • [794] Ibid, para. 284
  • [795] Ibid, para. 275
  • [796] See above
  • [797] Sisvel v Haier, Higher District Court of Düsseldorf, judgement dated 30 March 2017, Case No. 15 U 66-15.
  • [798] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 279.

Updated 21 六月 2019

Unwired Planet v Huawei

OLG Düsseldorf
22 三月 2019 - Case No. I-2 U 31/16

A. Facts

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

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

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

In March 2014, the Claimant brought an action against the Defendants before the District Court (Landgericht) of Düsseldorf (District Court) based on one of its SEPs, asking for a declaratory judgement recognising the Defendants’ liability for damages on the merits, as well as information and the rendering of accounts [799] . At the same time, the Claimant also initiated infringement proceedings against the Defendants in the UK (UK proceedings). During the course of the UK proceedings, the parties made certain licensing offers. However, an agreement was not reached.

By judgment dated 19th January 2016, the District Court found that the Defendants infringed the patent in suit, recognised the Defendant’s liability for damages on the merits and ordered the Defendants to render accounts to the Claimant [800] . The Defendants appealed the District Court’s ruling.

With the present judgment, the Higher District Court (Oberlandesgericht) of Düsseldorf (Court), basically, upheld the decision of the District Court. However, following a partial withdrawal of claims by the Claimant, the Court limited the Defendants’ obligation to render accounts by excluding information about production costs (broken down by single cost factors) and realised profits [801] .

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

B. Court’s reasoning

The Court confirmed the District Court’s finding that the Defendants had infringed the patent in suit by offering for sale and selling standard-compliant products in Germany [802] .

The Court also agreed with the District Court’s finding that the Claimant was entitled to assert claims against the Defendants: in its view, the patent in suit had been validly transferred to the Claimant [803] .

Transfer of SEPs

The Defendants had argued that the agreements underlying the transfer of said SEP to the Claimant had several flaws, which the District Court had not evaluated properly. In a lengthy reasoning, the Court dismissed this argument and confirmed the validity of the agreements in question [804] .

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

In the Court’s eyes, the – repeated – transfer of a SEP does not constitute an abuse of market power in violation of Article 102 TFEU [805] , since the FRAND undertaking, which – according to the Court – irrevocably limits the exclusion rights arising from a patent ‘in rem’ (‘dinglich’) [806] , is directly and indispensably binding for the new patent holder (irrespective of any contractual obligation assumed by the latter) [807] . Due to the ‘automatic’ transfer of the FRAND undertaking, there is no reason for prohibiting the transfer of SEPs or imposing limitations regarding to whom the SEP is assigned to; insofar, the patent holder has a free choice [808] .

Furthermore, the Court found that the transfer of the SEP in suit to the Claimant did not violate Article 101 TFEU [809] . Reciprocal agreements, as the agreements underlying the transfer of said patent, per se do not violate Article 101 TFEU, unless they contain side agreements which could impede competition [810] . According to the Court, this was not the case here. In this context, the Court explained that the fact that Ericsson had transferred only a part of its portfolio to the Claimant could not have any anti-competitive effect in terms of Article 101 TFEU [811] . Reason for this is that the FRAND-undertaking, to which both Ericsson and the Claimant are bound, sets the upper limit for the financial or other kind of burden from the licence that can be imposed on any licensee with respect to the entire patent portfolio [811] .

FRAND-undertaking

Having taken the view that the FRAND-undertaking is ‘automatically’ transferred to the new SEP holder, the Court suggested that it is binding for the latter not only ‘on the merits’ (‘dem Grunde nach’), but also in terms of ‘amount and content’ (‘der Höhe und dem Inhalt nach’) [812] . In other words: the new patent holder is not only – generally – obliged to offer access to the SEP on FRAND terms, it is, moreover, bound to the actual licensing practice of the previous patent holder [812] . The Court found that this is needed for ensuring that the SEP holder will not exempt itself of its FRAND commitment – especially the non-discrimination obligation – by transferring the SEP to a third party [813] .

Existing licensing agreements / Confidentiality

Accordingly, the Court held that existing licensing agreements of the previous patent holder (which have not expired yet) need to be considered for the assessment of the non-discriminatory character of licensing offers made by the new SEP holder [814] . Consequently, in the Court’s view, the SEP holder’s FRAND undertaking obliges the latter to provide its successor with information regarding to the content of licensing agreements which it had concluded with third parties [814] .

To be able to establish the non-discriminatory character of its licensing offer, the new SEP holder needs to make sure that it will be able to refer to and present licensing agreements of the prior SEP holder, particularly in court proceedings [815] . An exception could be made only when presenting such agreements would violate contractual confidentiality obligations. For this, the content of relevant confidentiality clauses must be presented in detail in trial, in order to allow an assessment of the extent of the patent holder’s obligations [816] . In addition, the party bound to respective clauses must demonstrate that it cannot release itself from its confidentiality obligations, by showing that all existing licensees have refused – upon request – to waive their rights arising from each clause in question [816] . Notwithstanding this, the Court expressed the view that agreeing to comprehensive confidentiality clauses will, as a rule, bar the SEP holder (and/or its successor) from invoking confidentiality with respect to existing licences in pending court proceedings: in this case, the refusal to present licences cannot be justified, since the patent holder acted culpably by agreeing to confidentiality with other licensees, regardless of its FRAND-obligation to provide information to its successor with respect to the licensing agreements it has signed [816] . Its unjustified refusal to present existing licences will, moreover, also affect the position of the new patent holder in trial (leading potentially to a dismissal of its claims for lack of evidence of the FRAND-conformity of its licensing offer) [816] .

In this context, the Court noted that presenting existing licensing agreements with third parties in trial does not raise antitrust concerns (especially under Article 101 TFEU) [817] . According to the Court, the fact that business secrets will be disclosed to potential competitors of the existing licensees is not harmful from an antitrust perspective, since measures to protect confidentiality in trial are available [817] . In particular, the addressee of confidential information is obliged to sign a Non-Disclosure Agreement (NDA), if the holder of such information (a) concretely explains why this information constitutes a business secret, (b) presents in detail which measures were taken so far for securing confidentiality with respect to the information in question, (c) demonstrates in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed and (d) also explains, with which degree of certainty the said disadvantages are expected to occur [817] . If these requirements are met, the opposing party’s refusal to sign an NDA would allow the party holding confidential information to limit its pleadings in trial to ‘general, indicative statements’ [817] . According to the Court, this was, however, not the case here.

Application of the Huawei framework

On the merits of the case, the Court made clear that the conditions established by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTE [818] (Huawei framework or obligations) apply only to claims for injunctive relief and the recall of infringing products, not to the patent holders’ claims for information, rendering of accounts and damages [819] . In particular, when deciding about the implementer’s liability for damages on the merits, courts do not have to consider whether the patent holder has met its Huawei obligations or not [820] .

This question is, however, relevant for deciding on the amount of damages owed to the patent holder. The non-compliance of the SEP holder with the Huawei framework can limit the amount of damages that it can claim to the amount of a FRAND royalty (for certain periods of time) [821] . Since the right to request the rendering of accounts serves the calculation of the amount of damages, the Court took the view that the SEP holder is barred from claiming information about production costs and/or realised profits for periods of time, in which it is not entitled to damages going beyond the FRAND royalty, because this information is not required for calculating the latter [822] .

SEP holder’s offer to the implementer

Looking at the present case, the Court held that the Claimant had not fulfilled its Huawei obligation to make a written and specific FRAND licensing offer to the Defendants [823] . In particular, in the offers made the Claimant failed to adequately specify both the calculation and the non-discriminatory nature of the royalties proposed [824] .

For allowing the implementer to assess the non-discriminatory character of the SEP holder’s licensing offer, the Court repeated that the latter is obliged to disclose whether other licensees exist and, if so, to which conditions they have been licensed [825] . This obligation extends also to licensing agreements concluded by the previous patent holder(s) [825] . Only agreements that have expired or have been terminated do not need to be considered in this respect [826] . As a result, the Claimant should have referred to both the licences covering the SEP in suit that it had concluded with third parties after the transfer of the patent, and to all licences, which Ericsson had concluded with licensees prior to the transfer of said patent and were still in force, when the Claimant made the respective licensing offer to the Defendants [827] .

The Court took the view that, prior to granting the very first FRAND licence, the SEP holder ought to select a specific ‘licensing concept’. This ‘concept’ is ‘legally binding’ for the future licensing conduct of the SEP holder and potential successors. In other words: the licensing conditions established by the first FRAND licence granted outline the leeway available to the SEP holder for future licensing negotiations [828] . This is also the case, when the royalties agreed for the first licence lie at the lower end of the FRAND scale available to the patent holder [829] . Accordingly, any deviation from the ‘licensing concept’ is allowed only and to the extent that (existing and new) licensees are not discriminated through less favourable conditions [828] .

The Court allowed SEP holders to select a new ‘licensing concept’ (within the available FRAND range), provided that all licensing agreements subject to the existing ‘concept’ will expire at the same point in time [830] . In the Court’s view, this could be achieved, for instance, by agreeing with all later licensees that their licence will expire at the same time as the first FRAND licence ever granted [826] . The Court recognised that this would require substantial efforts, particularly when considerable patent portfolios are involved; this fact did not, however, speak against binding the successor to the licensing practice of the previous SEP holder [831] .

C. Other important issues

According to the Court, the fact that the UK proceedings were directed towards setting the terms of a worldwide licence between the parties, covering all SEPs held by the Claimant did not require the Court to stay its own proceedings [832] . According to Article 27 of the Brussels I Regulation, the court later seized of the matter has to stay its proceedings until the jurisdiction of the court first seized of the case has been settled. The Court saw, however, no indication that the UK proceedings (had ever) concerned the claims asserted in the proceedings brought before it (claims limited to Germany) [832] .

Besides that, the Court confirmed that German courts have international jurisdiction for the claims brought against Huawei China [833] . If infringing products are offered over the internet, the international jurisdiction of German courts is established, when German patent rights are being affected and the website can be accessed in Germany [833] .

  • [799] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 32 (cited by www.nrwe.de).
  • [800] Ibid, para. 41. See District Court of Duesseldorf, judgement dated 19 January 2016, Case No. 4b O 49/14.
  • [801] Ibid, paras. 139 et seqq.
  • [802] Ibid, paras. 252-387.
  • [803] Ibid, paras. 161 et seqq.
  • [804] Ibid, paras. 169-199.
  • [805] Ibid, para. 203 et seqq.
  • [806] Ibid, para. 205.
  • [807] Ibid, paras 205 et seqq.
  • [808] Ibid, para 209.
  • [809] Ibid, paras. 235 et seqq.
  • [810] Ibid, para. 236.
  • [811] Ibid, para. 242.
  • [812] Ibid, paras. 212 et seqq.
  • [813] Ibid, para. 214.
  • [814] Ibid, paras. 216 et seq.
  • [815] Ibid, para. 216.
  • [816] Ibid, para. 218.
  • [817] Ibid, para. 220.
  • [818] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [819] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 159 (cited by www.nrwe.de).
  • [820] Ibid, para. 396.
  • [821] Ibid, para. 402.
  • [822] Ibid, para. 402 et seq. Insofar the Court expressly disagreed with the District Court of Mannheim, which in a previous decision had denied any limitations of the patent holder’s right to demand the rendering of accounts, in case of non-compliance with the Huawei framework; cf. District Court of Mannheim, judgment dated 10 November 2017, Case No. 7 O 28/16, GRUR-RR 2018, 273.
  • [823] Ibid, paras. 406 et seqq.
  • [824] Ibid, para. 411.
  • [825] Ibid, para. 419.
  • [826] Ibid, para. 420.
  • [827] Ibid, para. 423.
  • [828] Ibid, paras. 413 et seq.
  • [829] Ibid, para. 413.
  • [830] Ibid, paras. 414 and 420.
  • [831] Ibid, para. 421.
  • [832] Ibid, para. 144.
  • [833] Ibid, paras. 153 et seqq.

Updated 30 十月 2018

­Vodafone v Intellectual Ventures, High Court of Ireland

爱尔兰法院判决
10 三月 2017 - Case No. 2016 5102P, [2017] IEHC 160

A. Facts

The Claimant, Vodafone GmbH, is a German company offering communication services in Germany, including DSL internet connections based on the standards ADSL2+ and VDSL2 [834] .

The first Defendant, Intellectual Ventures II LLC (IV LLC), is a US company that holds patents declared as essential to the above standards (Standard Essential Patents or SEPs), including German designations of several European patents [835] . The second Defendant, Intellectual Ventures International Licensing (IV Licensing), is an Irish company engaged in patent licensing [835] . IV LLC granted IV Licensing a sub-licence which allows the latter to grant non-exclusive licences in respect to IV LLC’s portfolio [836] .

In January 2016, IV LLC brought infringement actions against the Claimant before the District Court (Landgericht) of Düsseldorf in Germany (Düsseldorf Court) based on the German designation of two of its SEP relating to the ADSL2+ and VDSL2 standards (German proceedings) [837] . In the German proceedings, IV LLC sought for a declaration that the Claimant is liable for damages arising from the infringement of the SEPs in suit as well as the provision of information and the rendering of accounts [837] .

During the course of the German proceedings, IV Licensing made an offer for a licensing agreement to the Claimant comprising the German designations of sixteen European Patents, including the two patents already asserted before the Düsseldorf Court [838] . The Claimant made a counter-offer which was, however, rejected [839] .

Subsequently, the Claimant filed an action for a declaratory judgement against the Defendants before the Dublin High Court (High Court) in Ireland (Irish proceedings). The Claimant requested the High Court inter alia to declare (1) that IV Licensing’s offer was not Fair, Reasonable and Non-Discriminatory (FRAND) and, therefore, amounted to an abuse of dominant position contrary to Article 102 of the Treaty on the Functioning of the EU (TFEU) and (2) that Claimant’s counter-offer was FRAND [840] . In case that the High Court held that neither IV Licensing’s offer nor Claimant’s counter-offer were FRAND, the Claimant also sought for a declaration as to which terms and conditions would be FRAND [840] .

The Defendants challenged the jurisdiction of the High Court. They requested the High Court – among other motions – to decline jurisdiction in favour of the Düsseldorf Court, or, in the alternative to stay its proceedings [841] .

With the present judgment the High Court refused to decline jurisdiction over the dispute brought before it [842] . The Court ordered, however, a stay in the proceedings, until the Düsseldorf Court delivered its final judgment in the German proceedings [842] .

B. Court’s reasoning

The High Court held that neither Article 24 nor Article 29 of the Recast Brussels Regulation [843] require the court to decline jurisdiction in favour of the Düsseldorf Court, even though the German proceedings were initiated prior to the Irish proceedings.

Pursuant to Article 24 of the Regulation, the Courts of each EU Member State have exclusive jurisdiction in proceedings concerned with the validity of any European Patent granted for that Member State. Both pending proceedings concern German designations of IV LLC’s European patens. However, this fact did not hinder the High Court to assume jurisdiction over the present case: In the High Court’s eyes, no issue as to the validity the patents which ought to be licensed has been placed in issue in the Irish proceedings; moreover, no part of Claimant’s cause of action concerning the (alleged) abuse of dominance depends in any way on the validity of the SEPs in suit [844] .

Furthermore, the High Court found that Article 29 of the Regulation does not apply to the present case, either. The High Court took the view that the Irish proceedings and the German proceedings do not involve the “same cause of action”, as Article 29 of the Regulation requires [845] . Although there are overlapping issues in both proceedings (for instance, Article 102 TFEU is mentioned in parties’ pleadings in both trials), this fact does not suffice to establish a “same cause of action” in terms of Article 29 of the Regulation [845] . In particular, Article 102 TFEU, to the extent that it features in the German proceedings is not concerned with an (alleged) abuse of dominant position by way of the offer made to the Claimant by IV Licensing [845] . Besides that, the High Court also pointed out, that – at least regarding to IV Licensing – it is not presented with proceedings “between the same parties” (since IV Licensing in not party to the German proceedings) which is, however, a further prerequisite for the application of Article 29 of the Regulation [846] .

Notwithstanding the above, the High Court held that some form of relief under Article 30 of the Regulation ought to be granted to the Defendants [847] . Under this provision, a court is allowed (meaning that the power given to the court is discretionary) to either stay its proceedings (Article 30 para. 1) or decline jurisdiction (Article 30 para. 2), in case that a “related action” is already pending before another court [848] . The objective of Article 30 of the Regulation is “to improve co-ordination of the exercise of judicial functions” within the EU and to avoid “irreconcilable judgments” [849] . In the matter at hand, the High Court found that these ob­jectives are served by an order to stay the proceedings according to Article 30 para. 1 of the Regulation [842] .

Looking at the present case, the High Court explained that a risk of “irreconcilable judgments” exists, since at the heart of both the Irish and the German proceedings lies the question whether the parties have complied with their conduct obligations under the judgment of the Court of Justice of the EU in the matter Huawei v ZTE [850] (Huawei requirements), especially with the obligation to exchange licensing offers on FRAND terms [851] .

In the Irish Proceedings, the claims made by the Claimant expressly address this question. In the German Proceedings, the same question will be of “direct relevance” for the nature and scope of the claim for damages and the accessory claim for the rendering of accounts asserted by IV LLC [852] . Although compliance with the Huawei requirements is – in contrast to claims for injunctive relief – no direct prerequisite for the enforcement of SEP holder’s damage claims (including the auxiliary claims for information and the rendering of accounts) [853] , it has an impact on the scope of such claims: according to the case law of the Düsseldorf Courts, if the patent holder does not meet the Huawei requirements or both the patent holder and the potential licensee comply with the Huawei requirements, the patent holder’s damage claim is limited to the FRAND licence fees and the claim for the rendering of accounts is limited to the information needed in order to calculate the respective damages (using the so-called “licence analogy” method) [854] . Accordingly, the Düsseldorf Court would not be able to decide on the merits of the claims raised by IV LLC before it, without first determining whether the parties fulfilled the Huawei requirements [855] .

In addition, the High Court pointed out that setting the FRAND terms and conditions for the patent portfolio offered to the Claimant, as the latter requested in the Irish proceedings, could also lead to “irreconcilable judgments”, particularly if the Düsseldorf Court would be asked by IV LLC at a later point in time to fix the damages for the two SEPs asserted in the German proceedings (since these SEPs were also part of the portfolio offered) [856] . Insofar, the High Court was not convinced by the Claimant’s argument, that fixing of rates for a patent portfolio usually involves different considerations to the fixing of a rate for individual patents [856] . On the contrary, the High Court recognized that within the “longstanding industry practice” of portfolio licensing, the fixing of rates for a portfolio of patents does, in general, involve the same methodology as the fixing of rates for individual patents. Consequently, rates set by the High Court in the Irish proceedings might conflict with any rates determined by the Düsseldorf Court with respect to the damage claims made in the German proceedings [856] .

  • [834] Vodafone v Intellectual Ventures, High Court of Ireland, 10 March 2017, para. 1.
  • [835] Ibid, para. 2.
  • [836] Ibid, para. 3.
  • [837] Ibid, para. 37.
  • [838] Ibid, paras. 10-12 and 93.
  • [839] Ibid, paras. 13-16.
  • [840] Ibid, para. 5.
  • [841] Ibid, para. 7.
  • [842] Ibid, para. 180.
  • [843] Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12th December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), OJ L 351/1 of 20th December 2012.
  • [844] Vodafone v Intellectual Ventures, High Court of Ireland, 10 March 2017, para. 122.
  • [845] Ibid, para. 146.
  • [846] Ibid, para. 148.
  • [847] Ibid, para. 166.
  • [848] Ibid, para. 119.
  • [849] Ibid, para. 165.
  • [850] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [851] Vodafone v Intellectual Ventures, High Court of Ireland, 10 March 2017, para. 52.
  • [852] Ibid, paras. 52 and 60.
  • [853] Ibid, paras. 55 et seqq.
  • [854] Ibid, para. 61 et seq.
  • [855] Ibid, para. 62.
  • [856] Ibid, para. 93.

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 [857] 。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 [858] 。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 [859] 。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 [860] 。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 [861] ,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 [862]

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 [863]

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 [864]

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” [865] 。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 [866]

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 [866] ;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 [866]

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 [866]

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 [867] 。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” [868]

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 [869]

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 [870] 。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 [870] 。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 [870]

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 [871]

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 [872]

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 [873] 。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 [874]

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 [875] 。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 [876]

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 [877] 。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 [878] 。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 [879]

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 [880] 。 然而,最高法院认为情况并非如此 [881] 。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 [882] 。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 [883]

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 [884] 。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” [883] 。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 [883]

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 [885] 。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 [886]

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” [887] 。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” [888]

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” [888] 。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” [889]

  • [857] Unwired Planet v Huawei, High Court of Justice for England and Wales, judgment dated 5 April 2017, Case No. [2017] EWHC 711(Pat)。
  • [858] Unwired Planet v Huawei, UK Court of Appeal, judgment dated 23 October 2018, Case No. [2018] EWCA Civ 2344。
  • [859] Conversant v Huawei and ZTE, High Court of Justice for England and Wales, judgment dated 16 April 2018, Case No. [2018] EWHC 808 (Pat)。
  • [860] Conversant v Huawei and ZTE, UK Court of Appeal, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [861] Unwired Planet v Huawei and Conversant v Huawei and ZTE, UK Supreme Court, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [862] 同上注, 段 49 及以下。
  • [863] 同上注, 段 61。
  • [864] 同上注, 段 58。
  • [865] 同上注, 段 62。
  • [866] 同上注, 段 60。
  • [867] 同上注, 段 63。
  • [868] 同上注, 段 64。
  • [869] 同上注, 段 68-84。
  • [870] 同上注, 段 97。
  • [871] 同上注, 段 99 及以下。
  • [872] 同上注, 段 112 及以下。
  • [873] 同上注, 段 113。
  • [874] 同上注, 段 114。
  • [875] 同上注, 段 116。
  • [876] 同上注, 段 116 及以下。
  • [877] 同上注, 段 123。
  • [878] 同上注, 段 125。
  • [879] 同上注, 段 126。
  • [880] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [881] 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。
  • [882] 同上注, 段 150。
  • [883] 同上注, 段 158。
  • [884] 同上注, 段 157 及 158。
  • [885] 同上注, 段 163。
  • [886] 同上注, 段 164。
  • [887] 同上注, 段 166。
  • [888] 同上注, 段 167。
  • [889] 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) [890] .

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 [891] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [892] . Since 2004, MPEG-LA has signed approx. 2,000 agreements with implementers [893] , 1,400 of which are still in force [892] .

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 [894] . On 15 September 2011, the parent company suggested to arrange a call on this issue [895] . 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 [896] .

In November 2013, the discussions between MPEG LA and the parent company ended without success [897] . The parties resumed negotiations in July 2016; again, no agreement was reached [897] .

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 [898] .

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 [899] .

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 [900] . Furthermore, the Defendant made a second counteroffer to the Claimant shortly after the last oral hearing before the Court [901] .

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

B. Court’s reasoning

The Court found that the patent in suit was valid [902] , standard essential [903] and infringed by the products sold by the Defendant in Germany [904] . 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 [905] (Huawei obligations or framework) with respect to dominant undertakings [906] .

Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [907] .

The Court defined the relevant market for the assessment of dominance as the market, in which licences for any given patent are offered [908] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [908] .

The Court made clear that ownership of a SEP does not per se establish market dominance [909] . A dominant market position is given, when the use of the SEP is required for entering the market [910] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [911] .

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 [912] .

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 [913] . 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) [914] . 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 [915] .

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 [916] . 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 [917] ), 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 [918] . 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 [919] . 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 [919] . 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 [920] .

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 [921] .

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 [922] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [923] . 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) [924] . 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 [925] . 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 [926] .

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 [927] . 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 [927] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [927] . 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 [927] . The respective test is, however, subject to strict conditions [927] .

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) [928] . 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 [929] .

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 [930] .

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 [930] . This is sufficient under the Huawei framework: A general, informal statement suffices [931] . The implementer is not required to refer to a specific licensing agreement (on the contrary, this could be considered harmful under certain circumstances) [931] .

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 [932] .

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 [933] .

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 [934] .

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 [935] . 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 [936] . 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) [937] . 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 [937] . 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 [937] . 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 [938] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content [939] .

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 [940] . 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 [940] . 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 [940] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [940] .

Non-discrimination

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases [941] . Even then, an unequal treatment is allowed, as long as it is objectively justified [941] . 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 [941] . 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 [942] . 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 [942] .

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 [943] . 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 [944] . 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 [945] . 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) [946] .

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 [947] . 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) [948] . 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 [949] . Discounts can further hardly be discriminatory, if they are offered to every (potential) licensee under the same conditions [949] .

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) [950] . 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 [951] .

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 [952] .

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 [953] . 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 [953] .

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 [954] . 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 [955] . 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 [956] . What is more, the Defendant did not show that further licences are needed with respect to the AVC/H.264 standard [957] . 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 [958] .

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 [959] . This assumption is also confirmed by the fact that all existing licensees have accepted this clause [960] .

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) [961] . 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 [961] .

An offer for a pool licence can, nevertheless, violate FRAND in ‘special circumstances’ [962] , for instance, if not all patents included in the pool are used by the licensee [963] . 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 [964] . 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 [965] . 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) [965] .

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 [966] . The Defendant failed, however, to present any reliable evidence that this was the case with the MPEG-LA pool [967] .

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’) [968] . 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 [969] .

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 [970] . In the electronics and mobile communications industries, licences on a group level are in line with the industry practice and, therefore, FRAND-compliant [971] .

Implementer’s counteroffer

Having said that, the Court found that the Defendant failed to make a FRAND counteroffer [972] .

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 [973] . Furthermore, the counteroffer established different licensing rates for different regions (especially for China) without factual justification [974] .

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 [901] . On the contrary, the Court expressed the view that the purpose of this counteroffer was most likely to delay the infringement proceedings [901] .

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 [975] .

  • [890] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, para. 36.
  • [891] Ibid, para. 35.
  • [892] Ibid, para. 37.
  • [893] Ibid, para. 453.
  • [894] Ibid, para. 39.
  • [895] Ibid, para. 43.
  • [896] Ibid, para. 44.
  • [897] Ibid, para. 53.
  • [898] Ibid, para. 2.
  • [899] Ibid, para. 54.
  • [900] Ibid, para. 65.
  • [901] Ibid, para. 716.
  • [902] Ibid, paras. 143-208.
  • [903] Ibid, paras. 209-293.
  • [904] Ibid, paras. 295-302.
  • [905] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [906] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, paras. 304 et seqq.
  • [907] Ibid, para. 307.
  • [908] Ibid, para. 310.
  • [909] 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.
  • [910] Ibid, paras. 310 et seq.
  • [911] Ibid, para. 311.
  • [912] Ibid, paras. 315 et seqq.
  • [913] Ibid, para. 321.
  • [914] Ibid, para. 326.
  • [915] Ibid, para. 327.
  • [916] Ibid, para. 330.
  • [917] 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.
  • [918] Ibid, paras. 331 et seqq.
  • [919] Ibid, para. 335.
  • [920] Ibid, para. 337.
  • [921] Ibid, para. 339.
  • [922] Ibid, para. 343.
  • [923] Ibid, para. 345.
  • [924] Ibid, para. 356.
  • [925] Ibid, paras. 357 et seqq.
  • [926] Ibid, paras. 366 et seqq.
  • [927] Ibid, para. 340.
  • [928] Ibid, para. 341.
  • [929] Ibid, paras. 395 et seqq.
  • [930] Ibid, paras. 400 et seqq.
  • [931] Ibid, para. 399.
  • [932] Ibid, para. 405.
  • [933] Ibid, paras. 411-417.
  • [934] Ibid, para. 419.
  • [935] Ibid, para. 421.
  • [936] Ibid, para. 425.
  • [937] Ibid, para. 422.
  • [938] Ibid, paras. 426 et seqq.
  • [939] Ibid, para. 429.
  • [940] Ibid, para. 431.
  • [941] Ibid, para. 432.
  • [942] Ibid, para. 433.
  • [943] Ibid, para. 438.
  • [944] Ibid, para. 443.
  • [945] Ibid, para. 444.
  • [946] Ibid, para. 445.
  • [947] Ibid, para. 579.
  • [948] Ibid, para. 582.
  • [949] Ibid, paras. 583 et seqq.
  • [950] Ibid, para. 564.
  • [951] Ibid, paras. 568 et seqq.
  • [952] Ibid, paras. 573 et seqq.
  • [953] Ibid, para. 451.
  • [954] Ibid, para. 449.
  • [955] Ibid, para. 454.
  • [956] Ibid, paras. 487 et seqq.
  • [957] Ibid, para. 491.
  • [958] Ibid, para. 495.
  • [959] Ibid, paras. 591 et seqq., particularly para. 596.
  • [960] Ibid. para. 597.
  • [961] Ibid. para. 504.
  • [962] Ibid. para. 508.
  • [963] Ibid. para. 514.
  • [964] Ibid. paras. 511 et seqq.
  • [965] Ibid. para. 524.
  • [966] Ibid, para. 528.
  • [967] Ibid, paras. 531-543.
  • [968] Ibid, paras. 545 et seqq.
  • [969] Ibid, para. 546.
  • [970] Ibid, para. 599.
  • [971] Ibid, para. 600.
  • [972] Ibid, para. 603.
  • [973] Ibid, paras. 605 et seqq.
  • [974] Ibid, paras. 617 et seqq.
  • [975] Ibid, para. 625.

Updated 3 二月 2021

HEVC (Dolby) v MAS Elektronik

LG Düsseldorf
7 五月 2020 - Case No. 4c O 44/18

A. Facts

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

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

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

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

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

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

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


B. Court's reasoning

The Court found that Dolby was entitled to assert claims arising from the patent-in-suit. The respective patent application was transferred before grant and Dolby was registered as owner in the Patent Register at the moment the patent was granted. MAS did not present any reason to question the validity of the transfer of the patent application to Dolby. [976]

Furthermore, the Court held that the patent-in-suit is essential (and not only optional) to the improvement process of encoding and decoding of images under the HEVC standard and, therefore, infringed by the devices manufactured and sold by MAS. [977]


Abuse of dominant market position

Having said that, the Court explained that by asserting claims for injunctive relief as well as recall and destruction of infringing products before court, Dolby had not abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) [978] .

In the eyes of the Court, Dolby holds a dominant position [979] . The Court highlighted that owning a patent, even a standard-essential patent, does not constitute per se a condition for market dominance [980] . That must be assessed case by case. A dominant position will be, as a rule, given if the use of a SEP is considered a pre-requisite to enter a downstream market. This is true also when the SEP is needed for offering competitive products in the downstream market. [980] In the present case, the implementation of the HEVC was required to make a competitive offering in the STB market [981] .

Notwithstanding the above, the Court found that Dolby had not abused its dominant market position, considering that it had fulfilled the obligations set forth by the Court of Justice the EU (CJEU) in the matter Huawei v ZTE (Huawei judgment or framework) [982] .


Notification of infringement

The required notification of the infringement by the patent holder was properly done. The Court understood that HEVC Advance, as the pool administrator, was entitled to do such notification on behalf of the patent holders that contributed patents to the pool. There is nothing in the Huawei judgment that suggests otherwise. [983]

The Court explained that the notification must, at least, include the publication number of the patent-in-suit and also indicate the infringing products and the infringing act(s) of use. [984] The notification does not need to contain a detailed (technical or legal) analysis, with reference to standards or claim features, but only present sufficient information that enables the other party to assess the infringement accusation made against it. [984]

In this case, the notification initially sent by HEVC Advance to MAS was sufficient in terms of content, since it specified the infringing products, and referred to HEVC Advance's patent portfolio and its website containing additional information. The fact that no patent numbers were mentioned was not considered harmful, since this information is publicly available in the pool's website. [985] Moreover, the Court highlighted that the notification can be a mere formality, if knowledge of the infringement by the implementer can be assumed. In such case, arguing that the notification was flawed, can be considered abusive, as it was the case here. [986]

Besides the notification made by HEVC Advance, the Court found that Dolby had also made a sufficient notification itself by the letter sent to MAS on 11 July 2018. [987] The letter fulfilled all requirements in terms of content. The fact that it was sent only after the action was filed was not harmful, since MAS had been already adequately informed by HEVC Advance before.Ibid, para. 759.

Willingness to obtain a licence

Looking at the conduct of MAS after receipt of the notifications of infringement, the Court reached the conclusion that MAS had sufficiently declared willingness to enter into a pool licence with HEVC Advance. [988] On the contrary, the Court took the view that MAS had not acted as a willing licensee with respect to Dolby's subsequent offer for a bilateral licence. [989]

The Court explained that, in its licensing request towards the SEP holder, the standards implementer must express its 'serious' willingness to conclude a licensing agreement on FRAND terms [990] . For this, no strict requirements apply, in terms of content or form; moreover, also an 'implicit behaviour' can suffice [991] . The implementer is, however, required to react in due course. [992] Furthermore, 'willingness' must still exist when the patent holder makes his licensing offer [990] .

The Court held that MAS had expressed willingness to take a pool license from HEVC Advance –although no express request was made–, since "immediately" after receipt of the notification of infringement, MAS started a correspondence with HEVC Advance with the goal to initiate negotiations. [993]

On the other hand, MAS had not been willing to obtain a bilateral licence from Dolby. [987] The Court emphasized that the whole conduct of the implementer must be assessed; a 'genuine' willingness to obtain a license must be demonstrated. [994] This is not given, when -as it had been the case here- the implementer only poses repetitive questions that do not present any constructive remarks and, therefore, do not lead to any progress in the negotiation. [995] In addition to that, it could be expected that a licensee willing to sign a bilateral agreement with an individual pool member, will have an interest to also engage in discussions with further pool members, especially for assessing the total 'economic burden' for its products, in comparison with a pool licensing agreement. [996] MAS refrained from doing that. What is more, it made clear in the proceedings that it was only interested in a pool licence.Ibid, para. 765.

SEP holder's offer

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

The Court found that the offer made by HEVC Advance met the Huawei requirements. In terms of form, the fact that the standard agreement sent to MAS had not been signed did not cause any concerns. [997] In the Court's view, the CJEU requires that the SEP holder's offer contains all usual terms of a licensing agreement, however, no binding offer that could lead to the conclusion of a licence through sole acceptance by the implementer is needed. [998]

Furthermore, HEVC Advance had sufficiently explained the royalty calculation, in line with the Huawei judgment. [999] If the patent holder has previously granted licenses to third parties, it has to give more or less substantiated reasons, depending on the circumstances of the individual case, why the royalty it envisages is Fair, Reasonable and Non-Discriminatory (FRAND). [1000] In case that the SEP holder offers licences exclusively based on a standard licensing agreement, it will, as a rule, suffice to establish the adoption of the licensing programme in practice and to show that the specific offer corresponds to the standard licensing agreement. [1001] The more standard licensing agreements signed are shared by the patent holder, the stronger the assumption is, that the offered rates are FRAND. [1002]

The Court emphasized that is not necessary to present the full content of all the licensing agreements already concluded, but only the relevant ones, considering clearly delineated product categories. [1003] Existing licences with cross-licensing-elements, are not relevant in this context, especially, when the implementer does not have any patents himself, as it was the case here. [1004] Accordingly, the Court found that the forty third party agreements disclosed by Dolby in the proceedings were enough in the present case. [1005]


Fair and reasonable terms

Looking at the content, the Court found that the terms of the standard licensing agreement offered by HEVC Advance are fair and reasonable. [1006] As fair and reasonable can be considered terms offered to a willing party, without exploiting a dominant position. [1007] Apart from the royalties, the offer must also prove reasonable with regard to the other terms as well (scope, territory etc.). [1007]

Having said that, the Court held that the royalties charged by HEVC Advance's standard licensing agreement are fair and reasonable. [1008] An indication of that is the fact, that up to January 2020, more than forty licensees selling products in the same category as MAS had taken a license on the same terms, modified sometimes by 'blended rates'. [1009] On the other hand, the fact that lower royalties are charged by a competing patent pool (MPEG LA) does not make the HEVC Advance's rate unreasonable, as FRAND is considered rather to be a range than a specific amount. [1010]

Furthermore, the Court took the view that the limitation of the offered licence to 'practised claims' only (that is those claims of the licenced patents that are essential to the practice of the HEVC standard), is not unreasonable. [1011] This limitation does not present any adverse effect on MAS' business, since the royalty payments correspond to the claims that are actually used by the licensee (and, vice versa, no obligation to pay for claims not used is established). [1012]

Also, in the eyes of the Court, MAS was not able to prove that the lack of an adjustment clause is unreasonable [1013] . MAS failed to establish that respective clauses are common in industry practice; on the contrary, the fact that at least forty parties had signed a licence with HEVC Advance without such clause indicated the opposite. [1014] What is more, the royalty clause is constant. That means that the rate charged will not change if licenced patents expire, but also will remain the same in the case of addition of new patents to the pool that will be automatically covered by the agreement. Insofar, an economic risk for both parties exists. [1015]

Regarding the choice of forum clause contained in the standard licensing agreement, establishing the jurisdiction of courts in New York as well as granting HEVC Advance the right to also choose other venues at its discretion, the Court was not able to conclude any unfair disadvantage for MAS. [1016] The same clause was agreed in many other licensing agreements signed by HEVC Advance with third parties. [1017] In fact, MAS agreed to a similar one in its license agreement with the MPEG LA pool. [1017]


Non-discrimination

Besides that, the Court was unable to establish any discrimination against MAS through the licence offered by HEVC Advance. [1018] The obligation of equal treatment applies only to aspects that are comparable; even a market dominant undertaking must be allowed to respond differently to different market conditions. [1019] An unequal treatment is to be assessed based on the specific circumstances of each individual case under the goals of competition and can be accepted as lawful, if objectively justified. [1020] Therefore, not every difference in the terms and conditions of a licence can be seen as abusive. [1021] According to the Court, the same principle also applies to the licensing of SEPs. [1022]

Against this background, the Court found that the fact that the pool administered by HEVC Advance updated its terms in a way that an 'uniform licensing regime' no longer exists, since for certain licensees the previous version of the agreement still applies, does not mean that the new standard licensing agreement offered to MAS was discriminatory. [1023] Although, according to the case-law of the Higher District Court of Düsseldorf, a patent holder (and its assignees) is bound to the 'licensing concept' underlying the first ever licence granted, it is allowed to deviate from such 'concept', if this does not lead to a discrimination of either past nor future licensees. [1024] In the Court's view, this was not the case here: The old licensees were offered the possibility to shift to the new terms, and there is no evidence that MAS would be treated worse by the terms of the new standard licensing agreement. [1024] On the contrary, the new royalty calculation leads to a lower licensing burden. [1024]

The Court also took the view, that there is also no discrimination in the way the patent-in-suit is enforced. [1025] MAS argued that it was discriminated, because its competitors or large companies were not sued by members of the HEVC Advance pool for patent infringement. The Court highlighted that refraining from enforcement does not necessarily mean discrimination: the phase of adoption of the relevant standard, the costs and procedural risks involved, the knowledge of the holder regarding the infringement and its extent are factors to be considered. [1026] In the case of HEVC Advance, the initial phase of its existence and limitation of resources are relevant for this assessment. [1027]

Moreover, no discrimination with respect to the amount of the royalty rate or the scope offered was found. [1028] The Court pointed out that the fact that some of the existing licensees have agreed on rates higher than those offered to MAS, could not be used in favour of the latter: as a rule, only those who are treated less favourably can invoke discrimination. [1029]

The Court further held that the 'blended rates' agreed with certain other licensees, did not render the offer made to MAS by HEVC Advance discriminatory either. [1030] These rates mirrored variations due to the difference in products and implementer's profiles and were either offered to MAS or not applicable to his business model. [1031]

Furthermore, the Court found that the 'incentive programme' offered by the HEVC Advance pool, which under specific conditions (especially the signing of a licence at an early point in time) results in discounted rates, is lawful and non-discriminatory. [1032] The same is true with respect to discounts offered for past uses prior to the signing a licence, as it is the case for HEVC Advance [1033] .

Finally, a 10% discount offered by HEVC Advance when a licensee also takes a trademark licence, allowing for the labelling of products with the HEVC trademark, was equally offered to the MAS, so that the Court could not see a discrimination of MAS by such provision in the standard licensing agreement. [1034]


Implementer's counteroffer

The Court found that MAS' counteroffer was not FRAND. [1035] The offer made by MAS failed to present sufficiently an explanation of why its terms would be FRAND, in view of the terms offered by HEVC Advance. MAS presented only a royalty rate, without making any reference to the rest of the clauses contained in the offer previously made by HEVC Advance, which it alleged to be discriminatory or unreasonable. [1036]

Having found that MAS' counteroffer had not been FRAND, the Court explained that the fact that MAS neither rendered accounts nor provided security did not play any role for its decision. [1037]


C. Other issues

By the facts of the case, the Court concluded that MAS acted culpably, or at least negligently, and, therefore, owes compensation for past and future damages caused by its actions. Moreover, damages should not be limited to a FRAND royalty. [1038] The quantification of the damages will be possible with the rendering of accounts by MAS. [1039]

The lawsuit for revocation of the patent, arguing lack of inventive step, that had not been decided yet, had no likelihood of success, according to the Court's analysis. Therefore, the request for staying the proceedings until a decision on the validity is delivered by the Federal Patent Court was denied. [1040]

  • [976] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18 (cited by www.nrwe.de), paras. 75 et seqq.
  • [977] Ibid, paras. 157-184.
  • [978] Ibid, paras. 186 et seqq.
  • [979] Ibid, paras. 189 et seqq.
  • [980] Ibid, paras. 194 et seqq.
  • [981] Ibid, para. 197.
  • [982] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [983] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18, paras. 213 et seqq and paras. 221 et seqq.
  • [984] Ibid, para. 210.
  • [985] Ibid, paras. 229 et seqq.
  • [986] Ibid, para. 233.
  • [987] Ibid, para. 759.
  • [988] Ibid, paras. 236 et seqq.
  • [989] Ibid, paras. 760 et seqq.
  • [990] Ibid, para. 237.
  • [991] Ibid, para. 237 and para. 761.
  • [992] Ibid, para. 760.
  • [993] Ibid, para. 238.
  • [994] Ibid, para. 763.
  • [995] Ibid, para. 764.
  • [996] Ibid, para. 765.
  • [997] Ibid, paras. 241 et seqq.
  • [998] Ibid, para. 242.
  • [999] Ibid, paras. 244 et seqq.
  • [1000] Ibid, para. 245.
  • [1001] Ibid, para. 248.
  • [1002] Ibid, para. 255.
  • [1003] Ibid, para. 250.
  • [1004] Ibid, para. 253.
  • [1005] Ibid, para. 249.
  • [1006] Ibid, paras. 257 and 258.
  • [1007] Ibid, para. 260.
  • [1008] Ibid, paras. 264 et seqq.
  • [1009] Ibid, para. 268.
  • [1010] Ibid, paras. 271 et seqq.
  • [1011] Ibid, paras. 280 et seqq.
  • [1012] Ibid, para. 284.
  • [1013] Ibid, paras. 286 et seqq.
  • [1014] Ibid, para. 295.
  • [1015] Ibid, para. 298.
  • [1016] Ibid, paras. 301 et seqq.
  • [1017] Ibid, para. 304.
  • [1018] Ibid, paras. 306 et seqq. and paras. 314 et seqq.
  • [1019] Ibid, para. 308.
  • [1020] Ibid, paras. 308 et seq.
  • [1021] Ibid, para. 310.
  • [1022] Ibid, para. 311.
  • [1023] Ibid, paras. 314 et seqq.
  • [1024] Ibid, para. 318.
  • [1025] Ibid, para. 321.
  • [1026] Ibid, para. 322.
  • [1027] Ibid, para. 323.
  • [1028] Ibid, paras. 325 et seqq. as well as paras. 443 et seqq.
  • [1029] Ibid, para. 326.
  • [1030] Ibid, paras. 328 et seqq.
  • [1031] Ibid, paras. 329 et seqq.
  • [1032] Ibid, paras. 334 et seqq.
  • [1033] Ibid, paras. 526 et seqq.
  • [1034] Ibid, paras. 665 et seqq.
  • [1035] Ibid, paras. 751 et seqq.
  • [1036] Ibid, paras. 754.
  • [1037] Ibid, para. 756.
  • [1038] Ibid, para. 773.
  • [1039] Ibid, para. 774.
  • [1040] Ibid, paras. 781 et seqq.