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Updated 22 八月 2018

TQ Delta LLC v Zyxel Communications and Ors., EWHC

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

A. Facts

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

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

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

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

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


B. Court’s reasoning

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

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

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

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

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

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

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

Updated 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 26 一月 2017

Sisvel v ZTE, Tribunale Ordinario di Torino

意大利法院判决
18 一月 2016 - Case No. 30308/20215 R.G.

  1. Facts
    Claimant (Sisvel Int. S.A.) is the proprietor of European patent EP 1 264 504, originally granted to Nokia Corporation, allegedly covering part of the UMTS standard, and being part of Claimant’s patent portfolio “Sisvel Wireless patents” which purportedly encompasses patents essential to various ICT standards. Defendant I (ZTE Italy S.R.L.) and Defendant II (Europhoto Trading S.R.L.) produce and market UMTS-based devices.
    On 10 April 2013, Claimant made a commitment towards ETSI declaring to grant a license on FRAND terms with regard to patent EP 1 64 504. By letter as of December 2012 Claimant informed ZTE Corporation, parent company of Defendant I, about its ownership in various SEPs, indicated that the teachings of these patents were implemented in Defendant I’s devices and expressed its willingness to grant licenses on FRAND terms. On 19 December 2012, ZTE Corporation requested from Claimant further information in order to be able to assess that offer. On 29 January 2013, Claimant sent a non-disclosure agreement (NDA) which ZTE Corporation signed only about seven months later on 3 September 2013. In the course of meetings in September and October 2013, Claimant and ZTE Corporation entered into licensing negotiations without concluding a licensing agreement. On 25 July 2014, after a break of several months, the licensing negotiations have been reinitiated and ZTE Corporation for the first time addressed a claim chart provided by Claimant about ten months before.
    Claimant, by letter as of 13 October 2014, gave notice of its decision to unilaterally terminate the NDA within thirty days because ZTE Corporation adhered to delaying tactics. At the same time, though, Claimant continued the licensing negotiations. Although ZTE Corporation declared at first, on 5 February 2015, to agree to the terms proposed by Claimant it submitted a counter-offer a few months later. The counter-offer was rejected by Claimant. After the presentation of a draft licensing agreement by Claimant on 11 March 2015 and several meetings of the parties Claimant submitted a final licensing offer on 4 November 2015 being rejected by ZTE Corporation due to its alleged non-conformity with FRAND terms. Since a further licensing offer being presented in December 2015 was equally refused by ZTE Corporation, Claimant commenced litigation against Defendants.
    After Defendant II, a retail company, was informed about the seizure of twenty mobile phones implementing the UMTS-standard, it immediately returned the remaining six devices to its supplier and provided the necessary sales documents to the court.
  2. Court’s reasoning
    Since Claimant only entered into licensing negotiations with and addressed all licensing offers to ZTE Corporation, being the parent company of Defendant I, it did not comply with its Huawei obligations vis-à-vis Defendant I. Claimant neither noticed Defendant I of the alleged infringement prior to initiating litigation nor did it provide the necessary documents indicating the essential character of the patent in question. [23]
    While rejecting all other actions , particularly as to the seizure of devices using the patent-in-suit, raised against Defendant II, who neither became involved into the licensing negotiations between Claimant and ZTE Corporation nor possesses mobile devices implementing the UMTS standard anymore, the court upheld the action for prohibitory injunction because the confirmation of cessation of sales does not completely exclude periculum in mora. [24] Furthermore, the court rejected the preliminary measures raised by Claimant against Defendant I.
    Furthermore, the court stated that the NDA was not validly terminated by Claimant’s unilateral declaration as of 19 December 2014 and that therefore Claimant was not allowed to initiate proceedings against ZTE Corporation or its subsidiaries, such as Defendant I, until 3 September 2016.
  • [23] Case No. 30308/20215 R.G., para. 3
  • [24] Case No. 30308/20215 R.G., para. 5, a-c

Updated 26 一月 2017

Sisvel v ZTE, Tribunale Civile e Penale di Torino, Sezione I Civile

意大利法院判决
4 三月 2016 - Case No. 2695/2016 R.G.

Additional information: Sezione I Civile, specializzata in materia di impresa (specialized in enterprise issues).

  1. Facts
    The proceedings before the Tribunale Civile e Penale di Torino concerned the appeal of Claimant in Case No. 30308/20215 R.G. seeking to set aside the decision of the court of first instance. As to the facts of the case, it can be referred to the summary of that case above.
  2. Court’s reasoning
    Due to non-compliance with the minimum duration of the NDA, including apactum de non petendo in connection to ZTE Corporation and its affiliates (such as Defendant I), of three years until 3 September 2016, Claimant’s unilateral termination of the agreement by letter as of 13 October 2014 and the subsequent initiation of proceedings were declared inadmissible. Claimant validly waived its right to bring actions under Italian law and it cannot circumvent this obligation by paying damages. According to the wording of the agreement, a lack of reaction on the part of ZTE Corporation was not to be interpreted as a waiver of rights.
  3. Other important issues
    Claimant argued that the patents in question never were essential to the UMTS standard and, hence, there existed no FRAND licensing obligation. The court rejected the appeal because Claimant’s action before the court of first instance was based on exactly the opposite argumentation (i.e. the patents in question being essential to the UMTS standard).

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 [25] , 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 [26] , 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 [27] .

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 [28] . 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 [29] (Huawei framework or obligations) [30] .

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 [31] . 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’ [31] . 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 [31] .

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 [32] . 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 [33] . 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 [34] .

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 [35] . 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 [35] .

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 [36] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [36] . 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 [36] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [36] .

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 [37] . 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 [38] . 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 [38] . 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 [38] .

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 [39] . 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 [40] . 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 [40] . 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 [40] .

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 [41] .

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 [42] . 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 [42] . Delaying tactics potentially applied by the implementer must be prevented [42] . 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 [43] . 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 [43] .

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 [44] .

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 [45] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [46] .

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 [47] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [47] .

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 [48] .

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 [48] .

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 [48] . 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 [48] . 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 [48] .

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 [48] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [48] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [49] . 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 [50] . 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 [51] .

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 [52] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [53] .

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 [54] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [54] or Article 102 TFEU [55] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [56] . 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 [57] .

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 [58] . 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 [59] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [60] .

  • [25] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
  • [26] 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.
  • [27] Ibid, paras. 37-87.
  • [28] Ibid, para. 88.
  • [29] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
  • [30] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
  • [31] Ibid, para. 107.
  • [32] Ibid, paras. 117 et seqq.
  • [33] Ibid, para. 119.
  • [34] Ibid, paras. 120 et seq.
  • [35] Ibid, para. 120.
  • [36] Ibid, para. 125.
  • [37] Ibid, para. 126.
  • [38] Ibid, para. 127.
  • [39] Ibid, para. 111.
  • [40] Ibid, para. 112.
  • [41] Ibid, paras. 115 and 117.
  • [42] Ibid, para. 115.
  • [43] Ibid, para. 129.
  • [44] Ibid, paras. 131 et seqq.
  • [45] Ibid, paras. 132 et seq.
  • [46] Ibid, para. 135.
  • [47] Ibid, para. 133.
  • [48] Ibid, para. 134.
  • [49] Ibid, paras. 136 et seqq.
  • [50] Ibid, para. 136.
  • [51] Ibid, para. 138.
  • [52] Ibid, para. 131.
  • [53] Ibid, para. 106.
  • [54] Ibid, paras. 157 et seqq.
  • [55] Ibid, paras. 162 et seqq.
  • [56] Ibid, paras. 160 et seq.
  • [57] Ibid, para. 161.
  • [58] Ibid, para. 143.
  • [59] Ibid, para. 144.
  • [60] Ibid, paras. 145 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). [61] 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 [62] (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 [63] .
 

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. [64]

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. [65] 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. [66]
 

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. [67]

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. [68] 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. [69] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [69] Detailed technical or legal analysis of the infringement allegation is not required. [69] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [69] If the patent holder offers a portfolio licence, respective extended information duties occur. [69]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [70] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [71] 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. [70]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [72] . 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. [73]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [74] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [74] . The respective declaration must be 'serious and unconditional'. [74]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [74] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [74]

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

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [77] of the Court of Justice of the EU (CJEU). [78] 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. [79]

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. [80] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [80] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [80] 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. [80]

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. [81] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [82] 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. [83] 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). [84]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [85] 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) [86] . It also demanded further claim charts in February 2018, years after the action was filed. [87]

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. [88] 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. [89] 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. [90]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [91] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [91] 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. [92] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [92] 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. [93] 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 [93] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [93]

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'. [94] 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. [95] 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. [96]

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. [97] The SEP holder's FRAND commitment does not give rise to such obligation. [97] 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. [97] 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. [98]

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. [98] 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. [99] 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. [100]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [101] 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. [102] 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. [103] 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. [104]

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. [105] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [105]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [106] 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. [107] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [107]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [108] 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. [109]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [110] 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. [110] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [111]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [112] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [113] 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. [114]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [115]

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. [116]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [117] 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. [118] 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. [119] 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. [120]
 

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. [121] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [121] 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. [121] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [121]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [122] . 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. [123] 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. [124]

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. [125]

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 [126] . [127] 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. [128]
 

  • [61] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
  • [62] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
  • [63] 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.
  • [64] Ibid, para. 289.
  • [65] Ibid, paras. 284 et seqq.
  • [66] Ibid, para. 287.
  • [67] 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.
  • [68] Ibid, paras. 292 et seqq.
  • [69] Ibid, para. 293.
  • [70] Ibid, para. 297.
  • [71] Ibid, paras. 297 et seq.
  • [72] Ibid, para. 299.
  • [73] Ibid, para. 299 and paras. 320 et seqq.
  • [74] Ibid, para. 301.
  • [75] Ibid, para. 302.
  • [76] Ibid, para. 303.
  • [77] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
  • [78] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
  • [79] Ibid, para. 304.
  • [80] Ibid, para. 305.
  • [81] Ibid, paras. 321 et seqq.
  • [82] Ibid, para. 321.
  • [83] Ibid, para. 322.
  • [84] Ibid, paras. 323 et seq.
  • [85] 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).
  • [86] Ibid, paras. 325, 328 and 331.
  • [87] Ibid, para. 327.
  • [88] Ibid, paras. 333 et seqq.
  • [89] Ibid, paras. 334 and 338.
  • [90] Ibid, paras. 337 and 341 et seqq.
  • [91] Ibid, para. 330.
  • [92] Ibid, para. 342.
  • [93] Ibid, para. 307.
  • [94] Ibid, para. 308.
  • [95] Ibid, paras. 308 and 310.
  • [96] Ibid, para. 309.
  • [97] Ibid, para. 310.
  • [98] Ibid, paras. 311 et seqq.
  • [99] Ibid, paras. 311 and 313 et seqq.
  • [100] Ibid, paras. 316 et seqq.
  • [101] Ibid, para. 352.
  • [102] Ibid, para. 353.
  • [103] Ibid, paras. 354 et seqq.
  • [104] Ibid, para. 358.
  • [105] Ibid, para. 359.
  • [106] Ibid, para. 360.
  • [107] Ibid, para. 361.
  • [108] Ibid, para. 362.
  • [109] Ibid, para. 363.
  • [110] Ibid, paras. 365 et seqq.
  • [111] Ibid, paras. 367 et seqq.
  • [112] Ibid, para. 366.
  • [113] Ibid, para. 344.
  • [114] Ibid, para. 346.
  • [115] Ibid, paras. 379 et seqq.
  • [116] Ibid, para. 311.
  • [117] Ibid, paras. 379 et seqq.
  • [118] Ibid, para. 380.
  • [119] Ibid, para. 378.
  • [120] Ibid, para. 384.
  • [121] Ibid, para. 348.
  • [122] Ibid, para. 389.
  • [123] Ibid, paras. 389 et seq.
  • [124] Ibid, para. 391.
  • [125] Ibid, paras. 260 et seqq.
  • [126] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [127] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
  • [128] Ibid, para. 395.

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 [129] 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 [130] 。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 [131]

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 [132] 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 [133] 。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 [134] 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 [135] ——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 [135] 。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 [135]

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 [136] 以及海牙上诉法院在飞利浦诉华硕案 [137] 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 [138] ,并且情况是否如此则需要视个案具体情况进行个别评估 [139]

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 [140] 。通知的详细程度适当与否则应根据具体个案情况判定 [140] 。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 [140] 。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 [140] 。。

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 [141]

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 [142] 。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 [143] 。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 [142] ,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 [136]

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 [144] 。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 [145] 。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 [146]

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 [147] 。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 [147] 。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 [147]

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 [148] 。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 [148]

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 [149]

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” [149]

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 [149] 。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 [149] 。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) [149] 。。

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 [146]

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” [146] 。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 [146]

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 [146]

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 [150] 。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 [150] 。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 [151]

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 [152] 。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 [152]

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 [153] 。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 [154] 。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 [154]

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 [151] 。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 [151] 。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 [151] 。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 [151] 。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 [151] 。。

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 [155] 。 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) [151] 。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 [135] 。。

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 [131] 。在法院看来,Wiko采用了拖延战术 [131] 。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 [155] 。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 [155]

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 [156]

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 [156]

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 [157] 。 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 [157]

  • [129] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16。
  • [130] 同上注, 页 17-31。
  • [131] 同上注, 页 46。
  • [132] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13。
  • [133] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 42。
  • [134] 同上注, 页 43 及 页 51 及以下。
  • [135] 同上注, 页 42。
  • [136] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, 段 282。
  • [137] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01。
  • [138] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 44。
  • [139] 同上注, 页 44。
  • [140] 同上注, 页 37。
  • [141] 同上注, 页47 及 53。
  • [142] 同上注, 页 38。
  • [143] 同上注, 页 37 及以下。
  • [144] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 39。
  • [145] 同上注, 页 39。
  • [146] 同上注, 页 40。
  • [147] 同上注, 页 53。
  • [148] 同上注, 页 54。
  • [149] 同上注, 页 55。
  • [150] 同上注, 页 40 及页 49。
  • [151] 同上注, 页 41。
  • [152] 同上注, 页 49。
  • [153] 同上注, 页 50。
  • [154] 同上注, 页 51。
  • [155] 同上注, 页 47。
  • [156] 同上注, 页 35。
  • [157] 同上注, 页 35 及以下。

Updated 6 六月 2017

OLG Düsseldorf 2

OLG Düsseldorf
14 十二月 2016 - Case No. I-2 U 31/16

  1. Facts
    The Claimant is holder of a patent declared as essential to a standard (Standard Essential Patent, SEP). The Defendant is a telecommunications company, which inter alia sells mobile phones allegedly using Claimant’s SEPs. Upon Claimant’s action, the Regional Court of Düsseldorf (1) ordered the Defendant to render accounts regarding the sales of mobile phones embedding Claimant’s SEPs and (2) recognized Defendant’s obligation to pay damages to the Claimant resulting from the infringement of its SEPs (cf. Regional Court of Düsseldorf, decision dated 19th January 2016, Case No. 4b O 49/14). The Defendant appealed this judgement. In the appeal proceedings before the Higher Regional Court of Düsseldorf (Case No. 2 U 31/16), one issue in dispute was whether the license fees, which the Claimant had calculated, were Fair, Reasonable and Non-Discriminatory (FRAND). The Claimant explained its calculation in a statement to the court that was produced in two versions. In the first version, which was filed only with the court, the information regarding the FRAND calculation (including comparable license agreements pre¬sented as evidence), were fully disclosed. In the second version, which was presented to the Defendant and a third party that had joined the proceedings (Intervener), the respective sections (and evidence) were redacted.
    With the present interlocutory application, the Claimant requested the court to order that disclosure of full information (and evidence) regarding its FRAND calculation shall be required only towards Defendant’s and Intervenor’s counsels, provided that the court would oblige the counsels to full confi-dentiality towards everyone, including their clients themselves (that is the Defendant and the Intervener). The Defendant objected this request. The Intervener, on the other hand, stated that it agreed with the proceeding defined in Claimant’s request.
    In its first decision dated 14th December 2016, the court rejected the application with respect to both the Defendant and the Intervener. Instead, the court encouraged the parties to enter into a Non-Disclosure Agreement (NDA) reinforced by a contractual penalty, in case confidentiality was breached.
    This decision was consequently modified by a further decision rendered by the court on 17th January 2017. The court granted Claimant’s application in respect to the Intervener, but again rejected the application in respect to the Defendant. The court, however, requested from the Defendant to present an offer for an NDA to the Claimant incorporating particularly the following conditions within a deadline of three weeks:
    • The confidential information should be used only in the context of the present litigation.
    • The information would be made available only to four company representatives of the Defendant (as well as any experts engaged by the Defendant in the ongoing litigation).
    • These persons shall be themselves obliged to confidentiality by the Defendant.
    • In case confidentiality was breached, the Defendant shall be liable for payment of a contractual pen-alty amounting to EUR 1 million.




  2. Court’s Reasoning
    In its first decision, the court found that the German rules of Civil Procedure do not provide a legal basis for granting an order in the form requested by the Claimant. [158] Such an order would exclude Defendant’s right to be heard with respect to Claimant’s FRAND calculation, in breach of Art. 103 Sec. 1 of the German Constitutional Law (Grundgesetz). [158] The fact that Defendant’s counsels would have access to the relevant information, does not suffice to meet the requirements set forth by the aforementioned provision. Party’s right to be heard contains also the right to personally participate in the proceedings. Consequently, a limitation of a party’s right to be heard reaching so far as Claimant requested, is not possible, unless the party affected expressly waives its right to personally participate in the proceedings. [158] Since the Defendant decided to not do so, a respective order cannot be rendered against it.
    The fact that the Intervener waived its respective right, can also not justify rendering such an order against the Defendant. [159] The Intervener does not join the proceedings as a party, but merely in support of one of the parties. [160] Accordingly, it cannot make decisions that would affect the party’s standing, such as a declaration to waive the right to be heard. In the present case, the Intervener’s decision to waive its respective right may, therefore, impact its own standing in the proceedings, but cannot affect Defendant’s position.

    As a result, the Claimant can either make the confidential information available to the Defendant or keep this information redacted, accepting that the court cannot take redacted information into consideration for its decision. [161]

    Notwithstanding the above, under reference to the “Umweltengel für Tragetaschen” judgement of the German Federal Supreme Court (Bundesgerichtshof) [162] the court held, that, as a rule, it can be expected from the implementer of SEPs to enter into a NDA reinforced by a contractual penalty with the SEP holder. [163] SEP implementer is obliged to facilitate FRAND licensing negotiations to the best of its ability. This includes also taking justified confidentiality interests of the SEP holder into account. [163]

    In its second decision dated 17th January 2017 the court applied the above considerations. Since the Intervener waived its right to be heard, the court found that there is no reason to deny Claimant’s request in relation to the Intervener. On the other hand, due to Defendant’s denial to waive its respective right, the court still refrained for granting Claimant’s request against the Defendant. Taking Claimant’s confi¬dentiality interests into account, the court ordered, however, the Defendant to submit an offer for a NDA to the Claimant based particularly on the conditions mentioned above.
  • [158] Judgement dated 14th December 2016, para. 1
  • [159] Judgement dated 14th December 2016, para. 2
  • [160] Judgement dated 14th December 2016, para. 2
  • [161] Judgement dated 14th December 2016, para. 3
  • [162] Bundesgerichtshof, Decision dated 19th February 2014, Case No. I ZR 230/12
  • [163] Judgement dated 14th December 2016, para. 5

Updated 27 六月 2018

OLG Düsseldorf 3

OLG Düsseldorf
25 四月 2018 - Case No. I-2 W 8/18

A. Facts

The Claimant holds a patent essential to a technical standard (Standard Essential Patent or SEP) which is subject to a so-called “FRAND-undertaking”, that is a commitment to make the SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant entered into nego¬tiations for a FRAND licensing agreement with the Defendant. In June 2017, the parties signed a Non-Disclosure Agreement (NDA). [164] A few days later, the Claimant entered into an NDA also with a third party, the Intervener . Shortly after signing the NDA, the Intervener [165] argued that several clauses of the agreement were void. [166]

In September 2017, the Claimant initiated infringement proceedings against the Defendant before the District Court of Düsseldorf (District Court). The Intervener joined these proceedings in support of the Defendant. After joining the proceedings, the Intervener claimed that the NDA with the Claimant does not cover information which the latter has to produce in the trial. This is particularly the case with infor-mation regarding to comparable licensing agreements concluded by the Claimant with third parties (comparable licences), which the Claimant regarded as strictly confidential. [167]

In December 2017, the Intervener requested full access to the court files. [168] The District Court dismissed the Intervener’s motion in part, namely by excluding access to confidential information, including information on comparable licences. The District Court held that the protection of such information was not adequately ensured, since the Intervener’s behaviour raised significant doubts that he considered himself bound to confidentiality by the NDA signed with the Claimant. [169] The Intervener appealed this decision.

The Higher District Court of Düsseldorf (Court) set the above ruling aside and requested the District Court to further clarify the facts of the case and decide again on the Intervener’s motion for full access to the court files on basis of the principles set forth in its present judgement. [170] In particular, the Court requested from the District Court to (re-)examine whether the Claimant actually possessed confidential business information which needed protection. [170] If this fact could be positively established, then a limited access to the court files would, basically, be justified, if the party seeking access to the files refused to commit itself to confidentiality. [171]

B. Court’s reasoning

The Court pointed out that parties to court proceedings seeking to protect confidential information must undertake efforts to sign an NDA with the opposing party and any intervener that has joined or is expected to join the proceedings with a high degree of certainty, before disclosing such information in the trial. [172] A party doing so without an NDA has to accept that the opposing party and/or the intervener could gain access to confidential information through an inspection of the court files. [173]

In the eyes of the Court, requesting from the party seeking to protect confidential information to actively pursue the conclusion of NDAs with other parties involved in the proceedings does not put that party at a disadvantage. The unjustified refusal of the opposing party (or an intervener) to enter into an NDA allows the party seeking protection to use only non-confidential information in the proceedings for specifying the FRAND conformity of its licensing offer to the potential licensee. [174] Although still obliged to specify the conditions of its FRAND licensing offer, the party has a lower burden to bear; to the extent (and not be¬yond) that is required for protecting its justified confidentiality interests, the party can meet its respective obligation by making “merely indicative observations” in the trial. [175]

In case that an intervener joins the proceedings at a point in time, in which a party has already produced confidential information on grounds of an NDA previously signed with the opposing party, the intervener’s right to inspect the court files can only be limited, if it was (or can) be established that the party seeking protection actually possesses confidential business information. [176] The fact that the other parties involved in the proceedings have already signed an NDA does not of itself limit the intervener’s right to full access to the court files. [177]

To establish that it possesses confidential business information worthy of protection, a party must identify such information and concretely explain why this information constitutes a business secret. [178] The party also needs to present in detail which measures were taken so far for securing confidentiality with respect to the information in question. [178] In addition, the party has to demonstrate in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed. [178] It also needs to be explained, with which degree of certainty the said disadvantages are expected to occur. [178]

When protection of confidential information contained in comparable licences is sought, the existence of confidentiality interests requires, in general, special justification. [179] In the Court’s view, the SEP holder’s FRAND-undertaking entails transparency vis-à-vis interested stakeholders with respect to licensing conditions. [179] Moreover, knowledge of licensing conditions already accepted in the market can help potential licensees exercise their rights in infringement proceedings effectively. [179] Considering the non-discriminating element of SEP holder’s FRAND undertaking, it is not immediately apparent to the Court which interest worthy of legal protection the SEP holder could have in keeping conditions agreed in existing licensing agreements confidential. [179] In fact, several licensing pools (e.g. MPEG) publish their licensing agreements online. [179]

Should the party seeking protection fail to establish that it possesses confidential business information needing protection, full access to the court files must be granted to the intervener upon request, irrespective of whether the latter signs an NDA or not. [180] Conversely, if the existence of confidential business information is established, the intervener’s right to inspect the court files can be limited only to non-confidential information, as long as the intervener refuses to enter into an NDA with the party seeking protection of its confidentiality interests. [171]

In case that a party which has signed an NDA breaches its obligations under this agreement or “backs out” of the NDA, the party relying on the protection of its confidentiality interests can again limit its (future) submissions of facts in the proceedings to non-confidential information. [181] In other words, in terms of detail, the party must again not present information going beyond “merely indicative observations”. [181] Whether a party has “backed out“ of an NDA is a question of fact which has to be decided on a case-by-case basis. [182] For this, it is required that the party’s behaviour has caused a high risk of a breach of confidentiality. [182] For instance, this could be the case, when legal arguments brought by the party against the validity of the NDA are not reasonable, but rather serve as a pretext. [182]

  • [164] Higher District Court of Düsseldorf, judgement dated 25 April 2018, Case No. I-2 W 8/18, para. 26
  • [165] Ibid, para. 26
  • [166] Ibid, para. 32
  • [167] Ibid, para. 35
  • [168] Ibid, para. 2
  • [169] Ibid, para. 27
  • [170] Ibid, para. 36 et seq
  • [171] Ibid, para. 17
  • [172] Ibid, paras 11 and 14
  • [173] Ibid, para. 11
  • [174] Ibid, para. 13
  • [175] Ibid, para. 13
  • [176] Ibid, para. 15
  • [177] Ibid, para. 15 et seq
  • [178] Ibid, para. 23
  • [179] Ibid, para. 24
  • [180] Ibid, para. 16
  • [181] Ibid, para. 20
  • [182] Ibid, para. 21

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 [183] . 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 [184] . 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 [185] .

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 [186] .

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 [187] .

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 [188] .

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 [189] , since the FRAND undertaking, which – according to the Court – irrevocably limits the exclusion rights arising from a patent ‘in rem’ (‘dinglich’) [190] , is directly and indispensably binding for the new patent holder (irrespective of any contractual obligation assumed by the latter) [191] . 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 [192] .

Furthermore, the Court found that the transfer of the SEP in suit to the Claimant did not violate Article 101 TFEU [193] . 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 [194] . 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 [195] . 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 [195] .

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’) [196] . 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 [196] . 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 [197] .

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 [198] . 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 [198] .

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 [199] . 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 [200] . 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 [200] . 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 [200] . 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) [200] .

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) [201] . 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 [201] . 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 [201] . 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’ [201] . 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 [202] (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 [203] . 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 [204] .

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) [205] . 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 [206] .

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 [207] . In particular, in the offers made the Claimant failed to adequately specify both the calculation and the non-discriminatory nature of the royalties proposed [208] .

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 [209] . This obligation extends also to licensing agreements concluded by the previous patent holder(s) [209] . Only agreements that have expired or have been terminated do not need to be considered in this respect [210] . 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 [211] .

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 [212] . 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 [213] . 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 [212] .

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 [214] . 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 [210] . 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 [215] .

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 [216] . 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) [216] .

Besides that, the Court confirmed that German courts have international jurisdiction for the claims brought against Huawei China [217] . 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 [217] .

  • [183] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 32 (cited by www.nrwe.de).
  • [184] Ibid, para. 41. See District Court of Duesseldorf, judgement dated 19 January 2016, Case No. 4b O 49/14.
  • [185] Ibid, paras. 139 et seqq.
  • [186] Ibid, paras. 252-387.
  • [187] Ibid, paras. 161 et seqq.
  • [188] Ibid, paras. 169-199.
  • [189] Ibid, para. 203 et seqq.
  • [190] Ibid, para. 205.
  • [191] Ibid, paras 205 et seqq.
  • [192] Ibid, para 209.
  • [193] Ibid, paras. 235 et seqq.
  • [194] Ibid, para. 236.
  • [195] Ibid, para. 242.
  • [196] Ibid, paras. 212 et seqq.
  • [197] Ibid, para. 214.
  • [198] Ibid, paras. 216 et seq.
  • [199] Ibid, para. 216.
  • [200] Ibid, para. 218.
  • [201] Ibid, para. 220.
  • [202] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [203] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 159 (cited by www.nrwe.de).
  • [204] Ibid, para. 396.
  • [205] Ibid, para. 402.
  • [206] 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.
  • [207] Ibid, paras. 406 et seqq.
  • [208] Ibid, para. 411.
  • [209] Ibid, para. 419.
  • [210] Ibid, para. 420.
  • [211] Ibid, para. 423.
  • [212] Ibid, paras. 413 et seq.
  • [213] Ibid, para. 413.
  • [214] Ibid, paras. 414 and 420.
  • [215] Ibid, para. 421.
  • [216] Ibid, para. 144.
  • [217] Ibid, paras. 153 et seqq.