在欧洲联盟法院华为诉中兴通信案判决后所做成的判例
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Updated 23 一月 2018

LG Mannheim

曼海姆地区法院
4 三月 2016 - Case No. 7 O 24/14

A. Facts

Case No. 7 O 24/14 [1] related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard (‘subtitle data encoding/decoding and recording medium for the same’). [2] The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used such DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. In early 2013, the patent pool approached the defendant’s parent company about the use of their patents in general.

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

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

The District Court of Mannheim granted an injunction order on 4 March 2016. [3] It also held that the defendant was liable for compensation and ordered it to render full and detailed accounts of its sales to determine the amount of compensation owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

B. Court’s Reasoning

1. Notice of Infringement

According to the Huawei/ZTE ruling, the claimant is required to notify the defendant of the alleged patent infringement. According to the District Court, this notice is supposed to provide the defendant an opportunity to assess the patent situation. [4] Thus, it is insufficient to notify the defendant that its products contain the respective standard and it is therefore infringing the SEP. Instead, the claimant is required to specify the infringed patent, the standard in question, and that the patent has been declared essential. The level of detail required depends on the respective situation. [5] However, the description does not need to be as thorough as a statement of claim in patent litigation. In the eyes of the court, the customary claim charts (which show the relevant patent claims and the corresponding passages of the standard) will typically be sufficient. By sending the charts to the defendant, the claimant had met its obligations under the Huawei/ZTE ruling. [6]

The Huawei/ZTE principles require the SEP holder to give notice of infringement before commencing patent infringement proceedings. Otherwise, the SEP holder would abuse its market power, which would mean that the patent infringement court would not be able to grant an injunction order. However, according to the District Court, in such a situation the SEP holder would not lose its patent rights, but would be prevented from exercising those rights in court. [7] Proceedings that had been commenced prior to the Huawei/ZTE ruling present a special case. In that situation, the SEP holder could not have been aware of the obligations that the CJEU subsequently imposed on claimants. Thus, it must be possible for an SEP holder to go through the Huawei/ZTE process subsequently without losing the pending lawsuit. [8] On this basis, the District Could held that the claimant had taken all necessary steps after commencing proceedings, which met the Huawei/ZTE requirements. [9]

2. The SEP Owner’s Licensing Offer

The District Court expressed its view that the CJEU had wanted to establish a procedure that keeps the infringement proceedings free of complicated deliberations about the conditions of the offer, similarly to the German Federal Court of Justice decision Orange Book Standard. [10] If the alleged infringer argues that the conditions of the offer are not FRAND – and, according to the court, alleged infringers typically do so – it is not the role of the infringement court to examine the conditions of the offer and decide whether they are FRAND or not. [5] Thus, the District Court took the view that an infringement court only assesses in a summary review whether the conditions were not evidently non-FRAND. An offer is only non-FRAND if it is under the relevant circumstances abusive. For example, this would be the case if the conditions offered to the alleged infringer were significantly worse than those offered to third parties. [11] The District Court held that in the case in issue the royalties were not evidently non-FRAND because the royalty rates were generally accepted in the market. [12]

The offer needs to include the calculation method in respect of the royalties. [11] However, the CJEU did not elaborate on the level of detail required. [13] The District Court took the view that the SEP holder needs to enable the alleged infringer to understand why the offer is FRAND. In the case in issue, the claimant had included the calculation method. It had also provided further explanations regarding the calculation, which met the Huawei/ZTE requirements. [14]

3. The standard implementer’s reaction

The alleged infringer is required to respond to the SEP proprietor’s license offer, even if the infringer is of the opinion that the offer does not meet the FRAND criteria. [13] The only possible exception is an offer that, by means of summary examination, is clearly not FRAND, which would constitute an abuse of market power. A counter-offer would need to be made as soon as possible, taking into account recognized commercial practices in the field and good faith. The District Court held that the defendant had not made an adequate counter-offer. It is common business practice to enter into license agreements in respect of worldwide portfolio licenses. [15] The defendant’s counter-offer only included the respective German license, which was deemed by the District Court as insufficient. [15] Further, the defendant had not made an adequate deposit into the court as required under the Huawei/ZTE principles. [16]

C. Other Important Issues

The court held that the procedures prescribed by the Huawei/ZTE ruling apply to applications for injunctions and recall orders, but not to rendering accounts and compensation. Regarding rendering accounts and compensation, SEP holders could pursue their rights in court without additional requirements. [13]

Further, the District Court was of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. Even if the claimant’s conduct was anti-competitive pursuant to Art. 101 TFEU, the standardisation agreement would be void. [17] This has no implications for patent infringement proceedings.

The court also held that there was no general rule that the SEP holder could only bring proceedings against the manufacturer of the infringing product. [18] In the eyes of the District Court, the Higher Regional Court of Karlsruhe decision 6 U 44/15 (23 April 2015) did not establish such a principle. In that case, the defendant was a company that acted merely as a distributor of infringing products (which means it was reselling the products without making any alterations). In contrast, the defendant in the present case had installed the infringing software onto laptops and then sold them under its own brand name. Thus, the two cases were not comparable. [18]

  • [1] See also OLG Karlsruhe, 8 September 2016, 6 U 58/16 (application to stay execution of LG Mannheim, 7 O 24/14).
  • [2]  LG Mannheim, 4 March 2016, 7 O 24/14, pp. 4-6.
  • [3] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 2-3.
  • [4] LG Mannheim, 4 March 2016, 7 O 24/14, p. 22.
  • [5] LG Mannheim, 4 March 2016, 7 O 24/14, p. 23.
  • [6] LG Mannheim, 4 March 2016, 7 O 24/14, p. 34/35.
  • [7] LG Mannheim, 4 March 2016, 7 O 24/14, p. 26.
  • [8] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 27-30.
  • [9] LG Mannheim, 4 March 2016, 7 O 24/14, p. 33.
  • [10] LG Mannheim, 4 March 2016, 7 O 24/14, p. 21.
  • [11] LG Mannheim, 4 March 2016, 7 O 24/14, p. 24.
  • [12] LG Mannheim, 4 March 2016, 7 O 24/14, p. 37.
  • [13] LG Mannheim, 4 March 2016, 7 O 24/14, p. 25.
  • [14] LG Mannheim, 4 March 2016, 7 O 24/14, p. 35/36.
  • [15] LG Mannheim, 4 March 2016, 7 O 24/14, p. 38.
  • [16] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 38-40.
  • [17] LG Mannheim, 4 March 2016, 7 O 24/14, p. 43.
  • [18] LG Mannheim, 4 March 2016, 7 O 24/14, p. 44.

Updated 9 十一月 2020

夏普诉戴姆勒

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

A. 事实


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

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

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

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

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

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

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

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

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

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

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

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

法院在当前判决 [19] (引自https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2020-N-22577?hl=true)中对对戴姆勒核发了禁令,并确认戴姆勒应承担实质性损害赔偿的责任。法院还要求戴姆勒必须召回并销毁侵权产品、开立担保帐户、并且提供计算夏普所受损失必需的相关信息。

 

B. 法院的论理

法院认为,本案涉案专利为实施4G / LTE标准时所必要 [20] ,并且该专利遭受侵权行为 [21] 。因此,夏普有权享有包含禁令救济在内的各项诉讼上主张 [22]

戴姆勒主张了所谓的“FRAND抗辩”,基本上认为夏普提起侵权诉讼的行为构成了对其市场支配地位的滥用,从而违反了《欧洲联盟运作条约》(TFEU)第102条,因此其禁令救济主张应予否决。除此之外,戴姆勒等主张夏普未能遵守欧洲联盟法院(CJEU)在华为诉中兴案 [23] 中所确立的行为义务(以下称“华为案判决”或“华为框架”)。

法院驳回了戴姆勒提出的FRAND抗辩,并且认为戴姆勒不能通过其供应商获得FRAND抗辩 [24]

滥用市场支配地位

法院认为,当专利持有人未能做出“充分努力”来满足其因居于市场支配地位所应承担的“特殊责任”并致力促成与“原则上有取得许可意愿”的被许可人间许可协议的签署时,专利持有人因为行使其标准必要专利权而构成对市场支配地位的滥用的情况便可能产生 [25] 。然而,这需要未经权利持有人许可就已经使用了该项受保护技术的实施人愿意按照FRAND条款取得许可方可能实现 [26] 。法院进一步阐明,标准必要专利持有人不能向法院提出对任一标准实施人“强制施加”许可协议的主张 [26]

基于以上所述,法院认为,夏普提起本案诉讼的行为并未构成《欧洲联盟运作条约》第102条下对市场支配地位的滥用 [27] 。法院并未确认夏普是否真实具备市场支配地位,而仅只是假设情况确实如此 [27] 。尽管如此,由于戴姆勒未能充分表达出其取得夏普所持有的标准必要专利组合的许可的意愿,夏普对其(假定的)市场支配地位的滥用并不成立 [28]
 

取得许可的意愿

法院解释到,实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议,并且随后以一种“目的性导向”的态度来进行许可谈判(引用德国联邦法院2020年5月5日在Sisvel诉Haier案中的判决– Sisvel v Haier, Case No. KZR 36/17以及英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711(Pat)-Unwired Planet v Huawei) [26]

这意味着实施人不应拖延许可谈判的进行 [29] 。在法院看来,这尤为重要,其原因在于实施人通常在许可谈判开始之前就已经使用了该标准化技术专利,而拖延许可协议的签署直至该专利到期失效为止对他们而言可能是具备完全且优势利益的 [29]

尽管如此,法院认为,戴姆勒并未展现出一个“善意”被许可人应有的态度 [28]

从戴姆勒在向夏普提出许可反要约之前的行为来看,法院认为戴姆勒缺少了“明确”的取得许可意愿的表达 [30] 。在其于2019年6月7日对夏普做出的第一份答复中,戴姆勒并没有做出任何形式的承诺是超出如同“若其确实使用了夏普的专利就愿意讨论是否取得许可”这样概括性意愿表达的 [31] 。此外,戴姆勒在其2019年7月23日的信函中也未包含适当表达其取得许可意愿的声明,特别是当戴姆勒仅仅是将夏普转介给其(甚至未指明名称的)供应商,并且坚持认为夏普有义务对其供应商授予许可时 [32] 。此情况于戴姆勒在2019年9月18日所作出的声明中亦相同,戴姆勒在该声明中再度将夏普转介给其供应商,同时还拒绝向夏普提供草拟许可要约所必需的相关信息 [33] 。法院指出,尽管披露夏普所要求的信息的法律上义务并不存在,戴姆勒多次的各种拒绝明确显示其并非以“目的性导向的态度”来参与讨论,而只是为了拖延许可谈判的进行 [34] 。戴姆勒在夏普提出相关要求后将近六周的时间才作出回覆的这一事实更加证实了上述观点,法院认为戴姆勒不具备任何理由而需要花费这么长时间的才能作出回覆 [34]

此外,法院指出,戴姆勒在与Avanci平台谈判过程中的整体行为进一步证实了戴姆勒作为一个“恶意”被许可人的这一结论 [35] 。法院认为,在评估提出FRAND抗辩的实施人是否具备“取得许可的意愿”时,应该将实施人的整体行为纳入考量范围,而不是仅考虑实施人在收到侵权通知后时间维度上立即发生的事实 [36] 。评估实施人是否具备取得许可意愿的标准不应该取决于究竟是由专利持有人首先开始与实施人接洽抑或是相反地由实施人主动发起向专利持有人寻求许可这样相对随机的事实 [37] 。尽管华为判决中所确立的行为义务(其中一项为通过表达取得许可的“意愿”来对侵权通知做出回覆)原则上应该按照欧洲联盟法院所描绘的那样按“步骤”进行操作,然而,视具体个案情况的不同,例外应被允许,在当事方的行为存在应被允许的例外情况时,以一种存粹“形式性“的观点来看待华为框架似乎并不恰当 [38] 。法院认为,本案即是此种情况,因为戴姆勒自2016年9月以来即持续与Avanci接洽,并且从未在任何一个时间点表达其愿意取得许可 [39]

法院进一步指出,戴姆勒于2019年12月17日提出的许可反要约是在侵权诉讼已经被提起后才提出的,此无法弥补其取得许可意愿的缺失 [40] 。法院认为,戴姆勒所提出的许可反要约中附带了要求夏普同意中止正在进行的诉讼程序的条件,此一事实表明,于本案中戴姆勒唯一的目的只是在拖延许可谈判的进行;因此,此一许可反要约的提出并不能弥补戴姆勒在截至当时为止所表现出的“巨大恶意” [41] 。在一点上,法院表示,在诉讼进行过程中对瑕疵行为进行补正(例如:通过提出许可反要约)的可能原则上是被允许的,然而,随着审判进行至越后期,允许补正的条件将越来越严格 [42]

法院还强调,就内容而言,戴姆勒所提出的许可反要约并没有表达出其愿按“任何实际上符合FRAND的条款”取得许可的意愿 [43] 。通过提出一个不同的“参考点”来计算许可费,戴姆勒仅只是针对夏普要约中许可费的一小部分或Avanci从其竞争对手处收取的整体费用部分做出了反要约,如此一来对方拒绝此许可反要约就成为了一种“逻辑上的必要” [44]

于此脉络下,法院明确指出,就是否具备取得许可意愿的评估仅戴姆勒的行为是相关的 [45] 。更重要的是,戴姆勒不能以其参加诉讼的供应商“声称“有向夏普取得许可的意愿为由来避免禁令的核发 [46] 。因此,法院并没有就戴姆勒的供应商是否确实为“善意被许可人”进行审查 [46]
 

无歧视 / 许可层级

除上述几项观点外,法院进一步阐明,夏普仅对作为终端设备制造商的戴姆勒要求取得许可的行为并未构成滥用或歧视性行为 [47]

法院认为,夏普没有义务对戴姆勒的供应商授予许可 [48] 。在(德国的)汽车行业中,由供应商来取得与其出售给汽车制造商的零部件相关的许可此一作法十分常见,但这并不意味着夏普就必须尊重且接受这种作法 [49] 。相反地,随着其产品越来越广泛地使用无线通信技术,戴姆勒必须接受于该行业中盛行的作法,其中也包括向终端设备制造商进行许可 [49]

无论如何,法律上夏普都没有必须对零组件制造商授予许可的义务;其仅有义务必须许可对其所持有实施某一标准的标准必要专利的“使用” [50] 。专利持有人对欧洲电信标准协会所做出的承诺创造了一项将标准必要专利对第三方进行许可的义务 [51] 。尽管如此,法院强调,这并不意味着标准必要专利持有人有义务对价值链中各个层级的每一个参与者皆授予许可 [52] 。这种义务既不是源于竞争法,也并非由于对欧洲电信标准协会做出的FRAND承诺与专利法或合同法相结合而产生 [52]

特别是,欧盟竞争法并未规定必须在价值链的各个层级上对标准必要专利进行许可的义务 [53] 。法院认为,原则上,专利持有人有权自由选择要在价值链中的哪一个层级对其所持有的专利进行许可 [54] 。在华为案判决中,欧洲联盟法院指出,FRAND承诺为第三方创造出的是一种其可以由专利持有人处获得许可的“合法期待”。然而,法院认为,这并不构成必须对终端设备制造商的所有供应商进行许可的义务;进入市场并不一定需要取得许可,而是只要能有“合法使用的可能性”即可,这可以是例如通过对价值链最后一级参与者授予的许可,供应商便可以借此获得“代工权” [54]

法院还解释到,即使是在专利法中也未规定标准必要专利必须在价值链中的哪一个层级被许可 [55] 。特别是,并非所有包含于标准必要专利组合中的个别专利的专利权都必须在零组件制造商层级就产生穷竭的这一事实,更加支持了在终端设备层级进行许可的做法(除此之外,此种做法也可以更有效地对许可费用进行管理) [56]

最后,法院指出,合同法与对欧洲电信标准协会做出的FRAND承诺相结合并不会对专利持有人施加对每一个有兴趣的第三方进行许可的义务 [57] 。根据其所适用的法国法律,欧洲电信标准协会知识产权政策第6.1条应被理解为仅只是规定了必须本于诚信原则与有意愿取得许可的第三方进行FRAND许可协议谈判的义务 [58] 。然而,通过对“设备”的明确指称,此条款仅适用于终端设备制造商,因为并非所有的零组件都必然以某标准为一个整体的形式来实施该标准 [59] 。在法院看来,欧洲联盟委员会过去在不同场合所表达的观点也并不会得出不同的结论同上注, 段 180-183。 法院特别引用了欧盟委员会在摩托罗拉案(European Commission, Case No. AT.39985 – Motorola)中的决定,以及 the Communication on the Guidelines on the applicability of Article 101 TFEU to horizontal co-operation agreements (2011/C 11/01); 及 the Communication on ICT Standardisation Priorities for the Digital Single Market, COM(2016) 176 final。
 

供应商提出的FRAND抗辩护

法院进一步认为,戴姆勒无法从其供应商所提出的FRAND抗辩护中获益 [61] 。被告仅在当专利持有人有义务对供应商进行许可时,才可以倚仗此种抗辩;然而,此情形于在充分考量了相关价值链中可能产生的专利权穷竭问题后,被告本身仍有能力与标准必要专利持有人签署许可时,则没有其适用 [61] 。 法院认为本案即是此种情况。戴姆勒的供应商本身并没有单独作出要求获得夏普的许可的主张,而只是主张对标准化技术应享有“受法律保障的使用”,而这并不能支持戴姆勒的主张 [62]

 

C. 其他重要问题

此外,法院认为没有理由基于比例原则考量而对夏普所提出的禁令救济主张进行限制 [63] 。戴姆勒曾辩称,其认为不应根据本案涉案专利而核发禁令,因其所生产的车辆是由大量零组件组合而成的“复杂”产品,而使用夏普所持有的标准必要专利的远程控制单元对于汽车整体而言的重要性极其微小。

法院明确指出,根据德国法律,比例原则是一项具备宪法位阶的一般性原则,如果被告以此原则为由提出异议,则法院在审查禁令救济问题时也应予以考虑 [64] 。根据联邦法院的判例,禁令在实施人将遭受因专利持有人违反诚信原则行使排他性权利而产生的危害这样的特殊情况下,就可能无法立即执行 [65]

在法院看来,任何对禁令救济权的限制都应该在“极少数特殊情况下”才有其适用,因此必须受到严格的条件限制,尤其是当为了维护“法律秩序”以及“法律的确定性与可预测性”时 [66] 。在整体实质性和程序性框架下(包括例如为执行一审所核发的禁令需提供担保),就所有相关事实对具体个案逐一进行评估是必须的 [66] 。法院解释到,只有在此一危害超出执行禁令通常会产生的后果时才可能被考虑 [66] 。同时,应该可以期待侵权人会在收到侵权通知后做出努力以尽快达成许可协议的签署并且至少采取一定预防措施来防止可能对其主张的禁令 [66]

于此脉络下,法院指出,尽管在本案中受影响的可能仅只是戴姆勒所制造车辆中的单个部件,本案各争点依旧是围绕着一个复杂的专利组合(不论究竟是夏普或者Avanci的专利组合)的许可问题而产生 [67] 。此外,法院也不认同夏普专利所具有的功能对戴姆勒的车辆而言是不重要的,此原因在于,“联网汽车”这一创新发明中很大的一部分,不论是从技术层面还是经济角度出发,都与移动通信技术紧密相关 [68] 。最后,法院还批判了戴姆勒并未做出任何实际的努力以寻求与夏普或Avanci签署许可协议的事实 [69]

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

Updated 26 一月 2017

Saint Lawrence v Vodafone

LG Düsseldorf
31 三月 2016 - Case No. 4a O 73/14

  1. Facts
    Since 28 August 2014 Claimant, a non-practicing entity, is the proprietor of the European patent EP 1 125 276 B1 “J”, originally granted to applicants “Voiceage, and allegedly covering part of the AMR-WB standard. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices, inter alia devices produced by the Intervener in this case. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001, Claimant (who was not an ETSI member during the setting of the AMR-WB standard) made, on 29 May 2001, a commitment towards ETSI to grant licenses on FRAND terms inter alia for patent EP J. Claimant and its parent company “O” offer the SEP and all other patents of the same family to third parties by means of a portfolio license. Licensing conditions are accessible on the Internet and various producers in the sector have taken a license under these conditions. Prior to the submission of the patent infringement action on 23 July 2014 and to the advance payments on costs on 29 July 2014, Claimant alerted neither Defendant nor the manufacturer of the contested embodiments, who acted as an intervener in the present proceedings and became aware of the lawsuit in August 2014. By e-mails on 31 July and (as a reminder) on 9 December 2014, the first of which included a copy of the statement of claims and reached the defendant before it was formally served with the statement, Claimant notified the alleged patent violation to Defendant. After Defendant’s reply as of 12 January 2015, Claimant presented a draft licensing agreement to Defendant by letter as of 22 April 2015. On 9 December 2014, the Intervener (HTC) declared willingness to take a license for that patent, inter alia for the patent-in-suit, provided infringement was found in Mannheim’s District Court. It further declared that it would accept royalties determined by a court or arbitration tribunal. Claimant, in turn, offered a licensing agreement by letters as of 12 January 2015 and 25 March 2015 respectively. In the course of meetings taking place since 23 January 2014, [70] Claimant offered a license to the Intervener. On 23 February 2015 and on 2 April 2015 respectively, the Intervener made two licensing offers, including third party determination (arbitration panel or English court) of the amount of royalty, for the whole German patent portfolio of Claimant. An additional offer for a licensing agreement, limited to Germany and implementing a royalty of USD 0.0055 per patent by reference to the “WCDMA Patent Pools”, was made by the Intervener on 6 March 2015 and 24 September 2015 respectively, but it was finally refused by Claimant on 4 October 2015. Moreover, the Intervener provided a bank “guarantee of payment” as of 3 September 2015, being modified by letter as of 10 November 2015, and also rendered account of past and prospective sales in Germany since 2011.
  2. Court’s reasoning
    1. Market power and notice of infringement
      The court leaves open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power. [71] The court declared the Huawei rules applicable to claims for the recall of products. [72] As regards the Huawei requirement to alert the standard user of the infringement, the decision arrived at various findings of interest: Firstly, the judges found that—in “non-transitional” cases where the lawsuit was brought after the Huawei decision—the infringement notification has to take place before the action is filed, or the latest before the advance payment on costs is made. In transitional cases, such as the present case, a delayed infringement notification, taking place after the advance payment on costs as well as the submission of the court action, but before the statement of claims is served, is admissible. [73] Moreover, an infringement notification could possibly be omitted (in particular) if—as in the present case—the patent user already disposes of all necessary information and lacks willingness to license. [74] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [75] Secondly, the court specified the minimum content of the infringement notification which has to indicate at least the number of the patent, the contested embodiments and the alleged acts of use performed by the standard implementer. The court did not decide whether additional information has to be provided, in particular regarding the interpretation of the patent claims or on which part of the standard the patent reads, but it stated that such additional information is not harmful to the patent proprietor. [76] Lastly, the court detailed on the particular situation of the Intervener, being Defendant’s manufacturer and supplier in the present case: Even though a FRAND defense successfully raised by the Intervener would in general also cover subsequent levels of the distribution chain, the Huawei requirements apply only indirectly to suppliers of contested embodiments which have not been sued themselves. Accordingly, the SEP proprietor is not obliged to notify the patent infringement to third parties, but as soon as a request to grant a license on FRAND terms is submitted the (adapted) Huawei procedure applies. [77] In casu, no separate infringement notice vis-à-vis the Intervener was required since the Intervener was, since August 2014, aware of the action having been brought.
    2. The SEP owner’s licensing offer
      Since the patent user did not express its willingness to conclude a licensing agreement in due time, the court found Claimant to comply with the Huawei requirement to submit a licensing offer on FRAND terms even though the offer was made in the course of the ongoing litigation. For transitional cases, as the present one, this holds true even if infringement notification and court action take place at the same time. [78] Besides, the court analyzed under which circumstances licensing conditions can be considered as FRAND according to Huawei. In the opinion of the judges, the more licensing agreements implementing comparable terms the SEP proprietor has already concluded, the stronger is the presumption that these conditions are FRAND, unless factual reasons—which are to be demonstrated by the patent user—justify modified terms. Recognized commercial practice in the relevant sector has to be considered when defining the admissible scope of the licensing agreement. If patent portfolios are usually covered by group or worldwide licenses in the relevant market, a (worldwide) portfolio license will be FRAND unless the circumstances of the specific case, e.g. the SEP proprietor’s market activity being limited to one geographic market, require a modification. [79] Accordingly, Claimant’s (worldwide) licensing offer to Defendant for the whole AMR-WB pool, demanding royalties of USD 0.26 per mobile device that implemented the standard and was produced or marketed in countries in which the SEP was in force, and complying with Claimants existing licensing practice (accessible on the Internet and already implemented in 12 licensing agreements) was declared FRAND. While the court considered that comparable licensing agreements “represent an important indicator of the adequacy of the license terms offered” it clarified that the significance of a patent pool as an indication of FRAND conformity is “limited”. Defendant and the Intervener failed to show that the portfolio comprised (non-used) non-SEPs as well. [80] They further failed to show that the pre-concluded licensing agreements provided no valid basis for comparison as they were concluded under the threat of pending litigation. [81] In order to fulfill the Huawei obligation of specifying the calculation of royalties, the SEP proprietor only has to provide the information necessary to determine the amount of royalties to be paid, e.g. the royalty per unit and the products covered by the license. While the court left undecided whether additional indications, e.g. concerning the FRAND character of the licensing offer, are necessary to comply with Huawei, it found that the SEP proprietor’s duty to inform should not be interpreted too strictly as FRAND does regularly encompass a range of values that will be fair, reasonable, and non-discriminatory. [82] Claimant’s licensing offer presented to the Intervener was considered as being FRAND for the same reasons. Furthermore, the court emphasized that the contractual clause allowing for judicial review of the royalties offered could be a possible way to avoid abusive practices and to ensure that licensing offers correspond to FRAND terms. [83]
    3. The standard implementer’s reaction
      The court found that the more details the infringement notification contains, the less time remains for the standard user to examine the patent(s) at issue and to express its willingness to conclude a licensing agreement on FRAND terms. In the present case, Defendant did not comply with Huawei because it took more than five months to react and then only asked for proof of the alleged infringement. Given this excessive delay, the court did not decide whether Defendant’s reaction satisfied the Huawei requirements in terms of content. It denied the possibility to remedy a belated reaction by a subsequent declaration of willingness to license. On the contrary, and as a consequence of the patent user’s non-compliance, the SEP proprietor may continue the infringement action without violating Article 102 TFEU, but it still has to grant licenses on FRAND terms. [84] Whether the Intervener satisfied the ECJ criteria was left undecided. [85] The court made some further remarks of interest as to the Huawei requirements concerning the standard implementer: Firstly, it left undecided whether the obligation of the patent user to diligently respond is caused also by a (potentially) non-FRAND licensing offer. [86] Secondly, a standard user who has taken a license is not prevented from challenging validity and essentiality of the SEP afterwards, nor is the SEP proprietor entitled to terminate the license if such a challenge takes place. However, the standard implementer may not delay the (unconditional) conclusion of the licensing agreement until a final court decision on these issues has been rendered. While validity and standard-essentiality is litigated, the licensee remains obliged to pay royalties and it cannot request to insert into the licensing contract a clause entitling it to reclaim paid royalties in case of its success in court. [87] Thirdly, as, in the present case, no specific counter-offers satisfying FRAND terms were submitted and Defendant could not establish that Claimant had waived this requirement the court did not decide on whether a SEP proprietor is obliged to negotiate further although itself and the patent user have submitted FRAND offers. [88] None of the counter-offers of the Intervener were FRAND in terms of content. They were either inadmissibly limited to Germany, contained no precise royalty, were not submitted “promptly” because the standard user had waited until the oral pleadings in the parallel procedure, or they proposed royalties per device which the court considered as too low. [89] While it was therefore held to be irrelevant whether, in the first place, the Intervener duly declared its willingness to license, the court emphasized that the Intervener’s readiness to take a license only after the SEP infringement was determined in court did not satisfy the Huawei standard of conduct. [90] Moreover, the obligation imposed by Huawei to provide appropriate security and to render account was not fulfilled. While Defendant refrained from taking any of these actions, the Intervener waited several months after the counter-offers were refused in order to submit its bank “guarantee of payment”, which was not recognized as “appropriate security” due to its amount and its limitation to acts of use in Germany. [91] Neither was the Intervener’s initial proposal to have the security—if requested by Claimant—determined by an arbitration tribunal or by an English court accepted as an appropriate way to provide security. [92]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [93] Suing a network operator instead of the undertakings producing devices operating in the network constitutes (at least under the circumstances of this case and absent selective enforcement) no violation of competition law even though this strategy might aim at using the action against the network operator as a “lever” to obtain licensing commitments from the device suppliers. On the other hand, device manufacturers are entitled to a FRAND license as well and can raise the FRAND defense if such a license is not granted. In consequence, the court perceives a fair balance of interests as the SEP proprietor can choose on which level of the chain of production to sue while the undertakings in the chain of production can choose on which level to take a license. [94] Furthermore, no patent ambush-defense based on § 242 BGB could be raised because, firstly, Defendant and the Intervener could not substantiate the alleged patent ambush by “Y” and “C”, being the original SEP proprietors; secondly, they could not show that a different patent declaration conduct would have resulted in a different version of the standard excluding the patent-in-suit; thirdly, the alleged patent ambush would, arguably, have resulted only in a FRAND-licensing obligation and, fourthly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [95]
  • [70] This is the date mentioned by the Court although “23 January 2015” may seem more plausible and the date given by the Court may result from a scrivener’s error.
  • [71] Case No. 4a O 73/14, para. 184
  • [72] Case No. 4a O 73/14, para. 187
  • [73] Case No. 4a O 73/14, para. 195 et seq.
  • [74] Case No. 4a O 73/14, para. 208-210
  • [75] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [76] Case No. 4a O 73/14, para. 193
  • [77] Case No. 4a O 73/14, para. 270 et seq.
  • [78] Case No. 4a O 73/14, para. 222 et seq.
  • [79] Case No. 4a O 73/14, para. 225 et seq.
  • [80] Case No. 4a O 73/14, para. 225 et seq. On the relevance of the SIPRO-pool royalty rates, cf. LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 245-248. On the facts indicating that a worldwide license was appropriate LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 249-255.
  • [81] Case No. 4a O 73/14, para. 234-242. The court argued that it is questionable in principle how much the threat of a claim for injunctive relief can (inadmissibly) affect license agreement negotiations, since the Orange Book case law of the BGH (German Federal Court of Justice), the Motorola decision of the European Commission, and now the CJEU judgment in the Huawei Technologies/ZTE Case could be and can be invoked against inappropriate demands that are in breach of antitrust law.
  • [82] Case No. 4a O 73/14, para. 256 et seq.
  • [83] Case No. 4a O 73/14, para. 279 et seq.
  • [84] Case No. 4a O 73/14, para. 214-220
  • [85] Case No. 4a O 73/14, para. 214-220; 278
  • [86] Case No. 4a O 73/14, para. 266
  • [87] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [88] Case No. 4a O 73/14, para. 264
  • [89] Case No. 4a O 73/14, para. 291 et seq.
  • [90] Case No. 4a O 73/14, para. 278
  • [91] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [92] Case No. 4a O 73/14, para. 304
  • [93] Case No. 4a O 73/14, para. 189
  • [94] Case No. 4a O 73/14, para. 309-313
  • [95] Case No. 4a O 73/14, para. 317 et seq.

Updated 26 一月 2017

Saint Lawrence v Vodafone 2

LG Düsseldorf
31 三月 2016 - Case No. 4a O 126/14

  1. Facts
    Since 28 August 2014 Claimant, a non-practicing entity, is the proprietor of the European patent EP J, originally granted to applicants “Y” and “C”, and allegedly covering part of the AMR-WB standard. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices, inter alia devices produced by the Intervener in this case. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001, Claimant (who was not an ETSI member during the setting of the AMR-WB standard) made, on 29 May 2001, a commitment towards ETSI to grant licenses on FRAND terms inter alia for patent EP J. Claimant and its parent company “O” offer the SEP and all other patents of the same family to third parties by means of a portfolio license. Licensing conditions are accessible on the Internet and various producers in the sector have taken a license under these conditions.
    Prior to the submission of the patent infringement action on 23 July 2014 and to the advance payments on costs on 29 July 2014, Claimant alerted neither Defendant nor the manufacturer of the contested embodiments, who acted as an intervener in the present proceedings and became aware of the lawsuit in August 2014. By e-mails on 31 July and (as a reminder) on 9 December 2014, the first of which included a copy of the statement of claims and reached the defendant before it was formally served with the statement, Claimant notified the alleged patent violation to Defendant. After Defendant’s reply as of 12 January 2015, Claimant presented a draft licensing agreement to Defendant by letter as of 22 April 2015.
    On 9 December 2014, the Intervener declared willingness to take a license, inter alia for the patent-in-suit, provided infringement was found in court. It further declared that it would accept royalties determined by a court or arbitration tribunal. Claimant, in turn, offered a licensing agreement by letters as of 12 January 2015 and 25 March 2015 respectively. In the course of meetings taking place since 23 January 2014, [96] Claimant offered a license to the Intervener. On 23 February 2015 and on 2 April 2015 respectively, the Intervener made two licensing offers, including third party determination (arbitration panel or English court) of the amount of royalty, for the whole German patent portfolio of Claimant. An additional offer for a licensing agreement, limited to Germany and implementing a royalty of USD 0.0055 per patent by reference to the “WCDMA Patent Pools”, was made by the Intervener on 6 March 2015 and 24 September 2015 respectively, but it was finally refused by Claimant on 4 October 2015. Moreover, the Intervener provided a bank “guarantee of payment” as of 3 September 2015, being modified by letter as of 10 November 2015, and also rendered account of past and prospective sales in Germany since 2011.
  2. Court’s reasoning
    The considerations of the court are almost exactly the same as those in the case LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14.
    1. Market power and notice of infringement
      The court leaves open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power. [97] The court declared the Huawei rules applicable to claims for the recall of products. [98]
      As regards the Huawei requirement to alert the standard user of the infringement, the decision arrived at various findings of interest: Firstly, the judges found that—in “non-transitional” cases where the lawsuit was brought after the Huawei decision—the infringement notification has to take place before the action is filed, or the latest before the advance payment on costs is made. In transitional cases, such as the present case, a delayed infringement notification, taking place after the advance payment on costs as well as the submission of the court action, but before the statement of claims is served, is admissible. [99] Moreover, an infringement notification could possibly be omitted (in particular) if—as in the present case—the patent user already disposes of all necessary information and lacks willingness to license. [100] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [101]
      Secondly, the court specified the minimum content of the infringement notification which has to indicate at least the number of the patent, the contested embodiments and the alleged acts of use performed by the standard implementer. The court did not decide whether additional information has to be provided, in particular regarding the interpretation of the patent claims or on which part of the standard the patent reads, but it stated that such additional information is not harmful to the patent proprietor. [102]
      Lastly, the court detailed on the particular situation of the Intervener, being Defendant’s manufacturer and supplier in the present case: Even though a FRAND defense successfully raised by the Intervener would in general also cover subsequent levels of the distribution chain, the Huawei requirements apply only indirectly to suppliers of contested embodiments which have not been sued themselves. Accordingly, the SEP proprietor is not obliged to notify the patent infringement to third parties, but as soon as a request to grant a license on FRAND terms is submitted the (adapted) Huawei procedure applies. [103] In casu, no separate infringement notice vis-à-vis the Intervener was required since the Intervener was, since August 2014, aware of the action having been brought.
    2. The SEP owner’s licensing offer
      Since the patent user did not express its willingness to conclude a licensing agreement in due time, the court found Claimant to comply with the Huawei requirement to submit a licensing offer on FRAND terms even though the offer was made in the course of the ongoing litigation. For transitional cases, as the present one, this holds true even if infringement notification and court action take place at the same time. [104]
      Besides, the court analyzed under which circumstances licensing conditions can be considered as FRAND according to Huawei. In the opinion of the judges, the more licensing agreements implementing comparable terms the SEP proprietor has already concluded, the stronger is the presumption that these conditions are FRAND, unless factual reasons—which are to be demonstrated by the patent user—justify modified terms. Recognized commercial practice in the relevant sector has to be considered when defining the admissible scope of the licensing agreement. If patent portfolios are usually covered by group or worldwide licenses in the relevant market, a (worldwide) portfolio license will be FRAND unless the circumstances of the specific case, e.g. the SEP proprietor’s market activity being limited to one geographic market, require a modification. [105] Accordingly, Claimant’s (worldwide) licensing offer to Defendant for the whole AMR-WB pool, demanding royalties of USD 0.26 per mobile device that implemented the standard and was produced or marketed in countries in which the SEP was in force, and complying with Claimants existing licensing practice (accessible on the Internet and already implemented in 12 licensing agreements) was declared FRAND. While the court considered that comparable licensing agreements “represent an important indicator of the adequacy of the license terms offered” it clarified that the significance of a patent pool as an indication of FRAND conformity is “limited”. Defendant and the Intervener failed to show that the portfolio comprised (non-used) non-SEPs as well. [106] They further failed to show that the pre-concluded licensing agreements provided no valid basis for comparison as they were concluded under the threat of pending litigation. [107]
      In order to fulfill the Huawei obligation of specifying the calculation of royalties, the SEP proprietor only has to provide the information necessary to determine the amount of royalties to be paid, e.g. the royalty per unit and the products covered by the license. While the court left undecided whether additional indications, e.g. concerning the FRAND character of the licensing offer, are necessary to comply with Huawei, it found that the SEP proprietor’s duty to inform should not be interpreted too strictly as FRAND does regularly encompass a range of values that will be fair, reasonable, and non-discriminatory. [108]
      Claimant’s licensing offer presented to the Intervener was considered as being FRAND for the same reasons. Furthermore, the court emphasized that the contractual clause allowing for judicial review of the royalties offered could be a possible way to avoid abusive practices and to ensure that licensing offers correspond to FRAND terms. [109]
    3. The standard implementer’s reaction
      The court found that the more details the infringement notification contains, the less time remains for the standard user to examine the patent(s) at issue and to express its willingness to conclude a licensing agreement on FRAND terms. In the present case, Defendant did not comply with Huawei because it took more than five months to react and then only asked for proof of the alleged infringement. Given this excessive delay, the court did not decide whether Defendant’s reaction satisfied the Huawei requirements in terms of content. It denied the possibility to remedy a belated reaction by a subsequent declaration of willingness to license. On the contrary, and as a consequence of the patent user’s non-compliance, the SEP proprietor may continue the infringement action without violating Article 102 TFEU, but it still has to grant licenses on FRAND terms. [110] Whether the Intervener satisfied the ECJ criteria was left undecided. [111]
      The court made some further remarks of interest as to the Huawei requirements concerning the standard implementer: Firstly, it left undecided whether the obligation of the patent user to diligently respond is caused also by a (potentially) non-FRAND licensing offer. [112] Secondly, a standard user who has taken a license is not prevented from challenging validity and essentiality of the SEP afterwards, nor is the SEP proprietor entitled to terminate the license if such a challenge takes place. However, the standard implementer may not delay the (unconditional) conclusion of the licensing agreement until a final court decision on these issues has been rendered. While validity and standard-essentiality is litigated, the licensee remains obliged to pay royalties and it cannot request to insert into the licensing contract a clause entitling it to reclaim paid royalties in case of its success in court. [113] Thirdly, as, in the present case, no specific counter-offers satisfying FRAND terms were submitted and Defendant could not establish that Claimant had waived this requirement the court did not decide on whether a SEP proprietor is obliged to negotiate further although itself and the patent user have submitted FRAND offers. [114]
      None of the counter-offers of the Intervener were FRAND in terms of content. They were either inadmissibly limited to Germany, contained no precise royalty, were not submitted “promptly” because the standard user had waited until the oral pleadings in the parallel procedure, or they proposed royalties per device which the court considered as too low. [115] While it was therefore held to be irrelevant whether, in the first place, the Intervener duly declared its willingness to license, the court emphasized that the Intervener’s readiness to take a license only after the SEP infringement was determined in court did not satisfy the Huawei standard of conduct. [116]
      Moreover, the obligation imposed by Huawei to provide appropriate security and to render account was not fulfilled. While Defendant refrained from taking any of these actions, the Intervener waited several months after the counter-offers were refused in order to submit its bank “guarantee of payment”, which was not recognized as “appropriate security” due to its amount and its limitation to acts of use in Germany. [117] Neither was the Intervener’s initial proposal to have the security—if requested by Claimant—determined by an arbitration tribunal or by an English court accepted as an appropriate way to provide security. [118]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [119]
    Suing a network operator instead of the undertakings producing devices operating in the network constitutes (at least under the circumstances of this case and absent selective enforcement) no violation of competition law even though this strategy might aim at using the action against the network operator as a “lever” to obtain licensing commitments from the device suppliers. On the other hand, device manufacturers are entitled to a FRAND license as well and can raise the FRAND defense if such a license is not granted. In consequence, the court perceives a fair balance of interests as the SEP proprietor can choose on which level of the chain of production to sue while the undertakings in the chain of production can choose on which level to take a license. [120]
    Furthermore, no patent ambush-defense based on § 242 BGB could be raised because, firstly, Defendant and the Intervener could not substantiate the alleged patent ambush by “Y” and “C”, being the original SEP proprietors; secondly, they could not show that a different patent declaration conduct would have resulted in a different version of the standard excluding the patent-in-suit; thirdly, the alleged patent ambush would, arguably, have resulted only in a FRAND-licensing obligation and, fourthly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [121]
  • [96] This is the date mentioned by the court although “23 January 2015” may seem more plausible and the date given by the court may result from a scrivener’s error.
  • [97] Case No. 4a O 73/14, para. 184
  • [98] Case No. 4a O 73/14, para. 187
  • [99] Case No. 4a O 73/14, para. 195 et seq.
  • [100] Case No. 4a O 73/14, para. 208-210
  • [101] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [102] Case No. 4a O 73/14, para. 193
  • [103] Case No. 4a O 73/14, para. 270 et seq.
  • [104] Case No. 4a O 73/14, para. 222 et seq.
  • [105] Case No. 4a O 73/14, para. 225 et seq.
  • [106] Case No. 4a O 73/14, para. 225 et seq. On the relevance of the SIPRO-pool royalty rates, cf. LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 245-248. On the facts indicating that a worldwide license was appropriate LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 249-255.
  • [107] Case No. 4a O 73/14, para. 234-242. The court argued that it is questionable in principle how much the threat of a claim for injunctive relief can (inadmissibly) affect license agreement negotiations, since the Orange Book case law of the BGH (German Federal Court of Justice), the Motorola decision of the European Commission, and now the CJEU judgment in the Huawei Technologies/ZTE Case could be and can be invoked against inappropriate demands that are in breach of antitrust law.
  • [108] Case No. 4a O 73/14, para. 256 et seq.
  • [109] Case No. 4a O 73/14, para. 279 et seq.
  • [110] Case No. 4a O 73/14, para. 214-220
  • [111] Case No. 4a O 73/14, para. 214-220; 278
  • [112] Case No. 4a O 73/14, para. 266
  • [113] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [114] Case No. 4a O 73/14, para. 264.
  • [115] Case No. 4a O 73/14, para. 291 et seq.
  • [116] Case No. 4a O 73/14, para. 278
  • [117] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [118] Case No. 4a O 73/14, para. 304
  • [119] Case No. 4a O 73/14, para. 189
  • [120] Case No. 4a O 73/14, para. 309-313
  • [121] Case No. 4a O 73/14, para. 317 et seq.

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). [122] 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 [123] (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 [124] .
 

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. [125]

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. [126] 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. [127]
 

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. [128]

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. [129] 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. [130] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [130] Detailed technical or legal analysis of the infringement allegation is not required. [130] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [130] If the patent holder offers a portfolio licence, respective extended information duties occur. [130]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [131] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [132] 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. [131]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [133] . 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. [134]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [135] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [135] . The respective declaration must be 'serious and unconditional'. [135]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [135] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [135]

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. [136] 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. [137] 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. [137]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [138] of the Court of Justice of the EU (CJEU). [139] 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. [140]

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. [141] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [141] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [141] 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. [141]

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. [142] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [143] 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. [144] 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). [145]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [146] 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) [147] . It also demanded further claim charts in February 2018, years after the action was filed. [148]

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. [149] 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. [150] 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. [151]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [152] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [152] 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. [153] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [153] 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. [154] 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 [154] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [154]

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'. [155] 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. [156] 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. [157]

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. [158] The SEP holder's FRAND commitment does not give rise to such obligation. [158] 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. [158] 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. [159]

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. [159] 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. [160] 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. [161]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [162] 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. [163] 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. [164] 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. [165]

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. [166] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [166]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [167] 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. [168] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [168]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [169] 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. [170]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [171] 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. [171] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [172]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [173] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [174] 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. [175]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [176]

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. [177]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [178] 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. [179] 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. [180] 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. [181]
 

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. [182] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [182] 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. [182] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [182]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [183] . 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. [184] 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. [185]

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. [186]

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 [187] . [188] 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. [189]
 

  • [122] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
  • [123] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
  • [124] 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.
  • [125] Ibid, para. 289.
  • [126] Ibid, paras. 284 et seqq.
  • [127] Ibid, para. 287.
  • [128] 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.
  • [129] Ibid, paras. 292 et seqq.
  • [130] Ibid, para. 293.
  • [131] Ibid, para. 297.
  • [132] Ibid, paras. 297 et seq.
  • [133] Ibid, para. 299.
  • [134] Ibid, para. 299 and paras. 320 et seqq.
  • [135] Ibid, para. 301.
  • [136] Ibid, para. 302.
  • [137] Ibid, para. 303.
  • [138] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
  • [139] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
  • [140] Ibid, para. 304.
  • [141] Ibid, para. 305.
  • [142] Ibid, paras. 321 et seqq.
  • [143] Ibid, para. 321.
  • [144] Ibid, para. 322.
  • [145] Ibid, paras. 323 et seq.
  • [146] 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).
  • [147] Ibid, paras. 325, 328 and 331.
  • [148] Ibid, para. 327.
  • [149] Ibid, paras. 333 et seqq.
  • [150] Ibid, paras. 334 and 338.
  • [151] Ibid, paras. 337 and 341 et seqq.
  • [152] Ibid, para. 330.
  • [153] Ibid, para. 342.
  • [154] Ibid, para. 307.
  • [155] Ibid, para. 308.
  • [156] Ibid, paras. 308 and 310.
  • [157] Ibid, para. 309.
  • [158] Ibid, para. 310.
  • [159] Ibid, paras. 311 et seqq.
  • [160] Ibid, paras. 311 and 313 et seqq.
  • [161] Ibid, paras. 316 et seqq.
  • [162] Ibid, para. 352.
  • [163] Ibid, para. 353.
  • [164] Ibid, paras. 354 et seqq.
  • [165] Ibid, para. 358.
  • [166] Ibid, para. 359.
  • [167] Ibid, para. 360.
  • [168] Ibid, para. 361.
  • [169] Ibid, para. 362.
  • [170] Ibid, para. 363.
  • [171] Ibid, paras. 365 et seqq.
  • [172] Ibid, paras. 367 et seqq.
  • [173] Ibid, para. 366.
  • [174] Ibid, para. 344.
  • [175] Ibid, para. 346.
  • [176] Ibid, paras. 379 et seqq.
  • [177] Ibid, para. 311.
  • [178] Ibid, paras. 379 et seqq.
  • [179] Ibid, para. 380.
  • [180] Ibid, para. 378.
  • [181] Ibid, para. 384.
  • [182] Ibid, para. 348.
  • [183] Ibid, para. 389.
  • [184] Ibid, paras. 389 et seq.
  • [185] Ibid, para. 391.
  • [186] Ibid, paras. 260 et seqq.
  • [187] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [188] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
  • [189] 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 [190] 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 [191] 。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 [192]

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 [193] 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 [194] 。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 [195] 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 [196] ——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 [196] 。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 [196]

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 [197] 以及海牙上诉法院在飞利浦诉华硕案 [198] 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 [199] ,并且情况是否如此则需要视个案具体情况进行个别评估 [200]

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 [201] 。通知的详细程度适当与否则应根据具体个案情况判定 [201] 。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 [201] 。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 [201] 。。

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 [202]

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 [203] 。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 [204] 。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 [203] ,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 [197]

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 [205] 。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 [206] 。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 [207]

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 [208] 。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 [208] 。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 [208]

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 [209] 。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 [209]

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 [210]

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” [210]

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 [210] 。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 [210] 。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) [210] 。。

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 [207]

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” [207] 。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 [207]

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 [207]

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 [211] 。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 [211] 。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 [212]

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 [213] 。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 [213]

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 [214] 。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 [215] 。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 [215]

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 [212] 。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 [212] 。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 [212] 。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 [212] 。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 [212] 。。

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 [216] 。 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) [212] 。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 [196] 。。

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 [192] 。在法院看来,Wiko采用了拖延战术 [192] 。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 [216] 。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 [216]

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 [217]

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 [217]

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 [218] 。 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 [218]

  • [190] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16。
  • [191] 同上注, 页 17-31。
  • [192] 同上注, 页 46。
  • [193] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13。
  • [194] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 42。
  • [195] 同上注, 页 43 及 页 51 及以下。
  • [196] 同上注, 页 42。
  • [197] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, 段 282。
  • [198] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01。
  • [199] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 44。
  • [200] 同上注, 页 44。
  • [201] 同上注, 页 37。
  • [202] 同上注, 页47 及 53。
  • [203] 同上注, 页 38。
  • [204] 同上注, 页 37 及以下。
  • [205] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, 页 39。
  • [206] 同上注, 页 39。
  • [207] 同上注, 页 40。
  • [208] 同上注, 页 53。
  • [209] 同上注, 页 54。
  • [210] 同上注, 页 55。
  • [211] 同上注, 页 40 及页 49。
  • [212] 同上注, 页 41。
  • [213] 同上注, 页 49。
  • [214] 同上注, 页 50。
  • [215] 同上注, 页 51。
  • [216] 同上注, 页 47。
  • [217] 同上注, 页 35。
  • [218] 同上注, 页 35 及以下。

Updated 12 三月 2019

Fraunhofer-Gesellschaft (MPEG-LA) v ZTE

LG Düsseldorf
9 十一月 2018 - Case No. 4a O 15/17

A. Facts

The Claimant, Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent of SEP) [219] . The patent holder committed towards the relevant standardization body to make this patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant contributed the SEP in question to a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [220] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones manufactured by its parent company (parent company) which practise the AVC/H.264 standard in Germany [221] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [222] . It has signed licensing agreements with approx. 1,400 implementers [222] .

By e-mail dated 8 September 2011, MPEG LA sent a copy of its standard licensing agreement to the Defendant’s parent company and informed the latter that its “mobile handset and tablet products” infringe patents included in its “AVC patent portfolio” (without indicating, however, either the concrete patent numbers or the specific infringing products) [223] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [224] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [225] .

In 2012, the parent company acquired patents included in the MPEG LA pool [220] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [226] , the Claimant brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [227] .

During the proceedings, the Defendant declared its willingness to obtain a licence for the patent in suit and other SEPs of the Claimant referring to the AVC/H.264 standard [228] . Moreover, the Defendant sent to MPEG LA two signed copies of MPEG LA’s standard licensing agreement, along with a statement of accounts of its past sales and a bank guarantee [229] . MPEG LA did not countersign this agreement. It insisted, instead, on a licence that would cover all companies belonging to the same group as the Defendant [230] .

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


B. Court’s reasoning

The Court held that the mobile phones sold by the Defendant in Germany infringe Claimant’s SEP in suit [231] . It also found that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [232] (Huawei obligations or framework) with respect to dominant undertakings [233] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [234] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [235] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [235] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [236] . A dominant market position is given, when the use of the SEP is required for entering the market [236] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [236] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no “realistic” alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [237] .

2. Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [238] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [239] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [240] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [241] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [242] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [243] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [244] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the nevertheless existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [245] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [246] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [247] .

Having said that, the Court found no flaws in Claimant’s conduct. In the Court’s view, the Claimant had met its Huawei obligation to notify the Defendant about the infringement of its patent as well as the obligation to present the Defendant with a written licensing offer covering also the patent in suit. The Defendant, on the other hand, adequately expressed its willingness to enter into a licence, failed, however, to make a FRAND counter-offer to the Claimant. Since an adequate counter-offer was missing, the Court did not take up the question whether the bank guarantee provided by the Claimant to MPEG LA constitutes an adequate security in terms of the Huawei framework [248] .

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the e-mail sent by MPEG LA to the parent company on 8 September 2011 [249] .

The fact that this e-mail was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries con­cerned [250] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [250] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [251] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant [252] . The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [253] . In addition, the Defendant’s parent company was also aware of MPEG LA’s capacity to act on behalf of the Claimant, since it joined the MPEG LA pool as a patent holder in 2012 [254] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [255] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [256] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [256] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [256] . The respective test is, however, subject to strict conditions [256] .

Based on the above considerations, the Court found that MPEG LA’s e-mail to the parent company dated 8 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [257] . The overall circumstances of the case (especially the fact that the parent company acquired patents included in the MPEG LA pool in 2012 and had also previously been in contact with MPEG LA regarding a standard licensing agreement) [258] , give rise to the assumption that the parent company had already been aware of the MPEG LA pool and the fact that AVC/H.264-compliant products need to be licensed [259] .

Willingness to obtain a FRAND-licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the e-mail sent to MPEG LA on 15 September 2011 [260] .

In the eyes of the Court, this e-mail indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard. This is sufficient under the Huawei framework [261] . The implementer is not required to refer to a specific licensing agreement [261] .

SEP holder’s licensing offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [262] .

The fact that the offer was addressed to the parent company and not to the Defendant was not relevant, since the parties were discussing about a licensing agreement on group level and the parent company had itself requested to receive the draft agreement [263] .

Furthermore, the fact that the draft agreement sent to the parent company did not directly provide for the licensing of all subsidiaries (including the Defendant) was also not considered as harmful [264] . Insofar, the Court held that under the Huawei framework it is, as a rule, acceptable that the patent holder enters into licensing negotiations only with the parent company within a group of companies [265] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [266] . An exception would apply only then, when it is made clear already at the beginning of the licensing negotiations that the offer made to the parent company cannot include its subsidiaries [267] . This was, however, not the case here, since the standard licensing agreement sent to the parent company indicates MPEG LA’s willingness to grant licences also to the subsidiaries of the former [268] .

Besides that, the Court did not consider the fact that the standard licensing agreement sent to the parent company did not cover the sale of licensed products to wholesalers and retailers (but regarded only sales to end users) to be in conflict with the Huawei framework, although the Defendant was engaged also in this business [269] . According to the Court, sales to wholesalers and retailers would be covered by the effects of patent exhaustion, even without an express provision in a potential licensing agreement [270] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company does not contain detailed explanation of the way the royalties were calculated [271] . In the Court’s view, the respective explanation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [272] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [272] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [272] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [273] .

Against this background, the Court did not consider it to be harmful that the standard licensing agreement sent to the parent company by MPEG LA did not include a detailed explanation of the royalty calculation in the above sense [274] . On the one hand, the parent company was aware that this (standard) agreement had been accepted in the market by a great number of licensees [274] . On the other hand, the parent company was also adequately aware of the way the offered royalties were calculated, since it held patents included in the MPEG LA pool itself [275] .

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

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [276] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [276] . The Court made clear that in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [276] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [276] .

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases; an unequal treatment is allowed, as long as it is objectively justified [277] . Limitations in this context may especially occur, when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive only when it uses the patent’s teachings [277] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [278] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [278] .

Looking at the standard licensing agreement sent to the parent company, the Court observed that the fact the MPEG LA sought for a licence covering all companies within the group, to which the Defendant belonged, was not violating FRAND principles [279] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [280] . Patent holder have a special interest in concluding such licences particularly in cases, in which – as in the present case – the parent company manufactures products which are sold worldwide by its subsidiaries. This is because licences at group level makes sure that patent holders can enforce their rights effectively, without having to distinguish between licenced and unlicenced products within a group of companies [281] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [282] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [283] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [283] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [284] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [285] . The fact, however, that this offer concerned a licence limited to the Defendant and, thus, not covering the parent company (and all further companies belonging to the same group) was not FRAND conform [286] . The Court accepted that licences at group level mirror the industry practice in the field in question; accordingly, no objections can be raised when a patent holder contributing its patents to a pool is willing to grant only licences covering all group companies [287] .

Since the counter-offer was not FRAND in terms of content, the Court did not have to decide, whether it was made in due time, or not [288] .

  • [219] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
  • [220] Ibid, para. 58
  • [221] Ibid, para. 57
  • [222] Ibid, para. 59
  • [223] Ibid, paras. 61 et seqq. and 340
  • [224] Ibid, para. 65
  • [225] Ibid, para. 66
  • [226] Ibid, para. 73
  • [227] Ibid, para. 42
  • [228] bid, para. 74
  • [229] Ibid, paras. 75 et seq
  • [230] Ibid, para. 75
  • [231] Ibid, paras. 127 – 254
  • [232] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
  • [233] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
  • [234] Ibid, para. 283 and paras. 291 et seqq
  • [235] Ibid, para. 286
  • [236] Ibid, para. 287
  • [237] Ibid, paras. 291 et seqq
  • [238] Ibid, para. 296
  • [239] Ibid, para. 300
  • [240] Ibid, para. 302
  • [241] Ibid, para. 308
  • [242] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06
  • [243] Ibid, para. 305
  • [244] Ibid, paras. 306 et seqq
  • [245] Ibid, para. 310
  • [246] Ibid, para. 311
  • [247] Ibid, para. 312
  • [248] Ibid, para. 421
  • [249] Ibid, para. 314
  • [250] Ibid, para. 320
  • [251] Ibid, para. 318
  • [252] Ibid, para. 329
  • [253] Ibid, paras. 336 et seq
  • [254] Ibid, para. 338
  • [255] Ibid, para. 198
  • [256] Ibid, para. 315
  • [257] Ibid, paras. 340 et seq
  • [258] Ibid, paras. 342 et seqq
  • [259] Ibid, para. 344
  • [260] Ibid, para. 346
  • [261] Ibid, para. 348
  • [262] Ibid, para. 352
  • [263] Ibid, para. 367
  • [264] Ibid, para. 369
  • [265] Ibid, para. 370
  • [266] Ibid, para. 378
  • [267] Ibid, para. 371
  • [268] Ibid, para. 374
  • [269] Ibid, para. 376
  • [270] Ibid, para. 377
  • [271] Ibid, para. 380
  • [272] Ibid, para. 381
  • [273] Ibid, para. 386
  • [274] Ibid, para. 382
  • [275] Ibid, para. 387
  • [276] Ibid, para. 391
  • [277] Ibid, para. 392
  • [278] Ibid, para. 393
  • [279] Ibid, para. 397
  • [280] Ibid, para. 398
  • [281] Ibid, para. 399
  • [282] Ibid, para. 402
  • [283] Ibid, para. 404
  • [284] Ibid, para. 410
  • [285] Ibid, para. 413
  • [286] Ibid, para. 416
  • [287] Ibid, para. 417
  • [288] Ibid, para. 411

Updated 9 十一月 2020

诺基亚诉戴姆勒

曼海姆地区法院
18 八月 2020 - Case No. 2 O 34/19

A. 事实

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

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

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

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

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

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

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

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

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

法院在当前判决 [289] (引自https://www.juris.de)中对对戴姆勒核发了禁令,并确认戴姆勒应承担实质性损害赔偿的责任。法院还要求戴姆勒必须开立担保帐户并且提供计算诺基亚所受损失必需的相关信息。

 

B. 法院的论理

法院裁定戴姆勒對本案涉案专利構成侵權 [290] 。因此,诺基亚有权获得包含禁令救濟及其它訴訟主張的支持 [291] 。 戴姆勒及其参加诉讼的所屬供应商主張了所谓的“FRAND抗辯”,認為诺基亚提起侵权诉讼的行為構成了對其市場支配地位的滥用,從而违反了《欧洲聯盟運作条约》(TFEU)第102条,因此其禁令救济主张应予否决。特別是,戴姆勒等主張诺基亚未能遵守歐洲聯盟法院(CJEU)在华为诉中兴案中所確立的行為義務(以下稱“华为案判決”或“華為框架”) [292]

法院認為戴姆勒及其供应商所提出的主張無理由,因此驳回了其所提出的FRAND抗辩 [293]

 

华为框架

法院明确指出,标准必要专利持有人并不当然被禁止行使其因持有专利而享有的专属权利 [294] 。其所持有的专利属于标准必要的这一事实,并不意味着专利持有人有义务容忍第三人对其技术的使用,除非是其已经许可了该使用,或者因其处于市场支配地位而有义务必须许可该使用 [294]

当专利持有人已经遵守了其于华为框架下的义务时,则其因为行使专利权而构成对市场支配地位的滥用的情况便不会发生了 [295] 。然而,这些义务是以在未经权利持有人许可的情况下就已经使用了该项受保护技术的实施人愿意按照FRAND条款取得许可为前提条件的 [296] 。法院解释到,专利持有人并不能向法院提出对任一标准实施人“强制施加”许可协议的主张,很大部分的原因在于其并没有主张签署许可协议的法律上权利 [296] 。此外,因处于市场支配地位而衍生的“特殊责任”对标准必要专利持有人的要求在于其付出了“充分的努力”来促进与原则上有意愿取得许可的被许可人间协议的签署 [297]

 

侵权通知

法院认为,这些“努力”包括在提起侵权诉讼之前,就对涉案专利的侵权行为,以及取得许可的可能与需求,向实施人进行通知的义务 [298] 。法院在对本案进行审理后认为,诺基亚已经履行了上述义务 [299] [11]。

就内容而言,侵权通知内必须指明遭受侵权的专利,并描述具体的侵权使用行为与受侵害的实施例 [298] 。对该项侵权行为进行详细的技术上和法律上分析并不是必要的——实施人仅需要被置于一个最终能够在专家和/或法律建议的协助下对其被指控的侵权行为进行评估的地位即可 [298] 。通常情况下,提出权利要求对照表便已经足够(但不是强制性的) [298] 。法院还指出,专利持有人无需向每一个侵害其专利权的终端设备制造商的供应商个别提出单独的侵权通知 [300]

在法院看来,诺基亚于2016年6月21日、2016年11月9日、以及2016年12月7日所发出的电子邮件符合了上述要求 [301] 。诺基亚(至少在最初)没有指出涉案专利具体涉及标准文书中的哪个特定部分这一事实并不被认为是有害的,因为侵权通知的内容并不需要能够促进对侵权行为的最终评估 [302]

此外,法院认为,诺基亚没有必要在其侵权通知中明确指出根据相关标准而产生连网功能的特定组件是哪些(例如:戴姆勒汽车中内建的车载信息控制单元) [303] 。由于戴姆勒购买并在其产品中使用了这些组件,信息不足的情况是不可能发生的 [303]

 

取得许可的意愿

此外,法院认为,戴姆勒并没有充分表达其与诺基亚签订FRAND许可协议的意愿,因此不能主张FRAND抗辩来避免禁令的颁发 [304]

在法院看来,实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议,并且随后以一种“目的性导向”的态度来进行许可谈判(引用德国联邦法院2020年5月5日在Sisvel诉Haier案中的判决– Sisvel v Haier, Case No. KZR 36/17以及英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711(Pat)-Unwired Planet v Huawei) [305] 。实施人在许可谈判中“目的性导向”的参与具有决定性的重要性,由于实施人通常在许可谈判开始之前就已经使用了该标准化技术专利,拖延许可协议的签署直至该专利到期失效为止对他们而言可能是有利的,然而,这与华为案判决的精神是背道而驰的 [306] 。因此,仅对侵权通知做出表示愿意考虑签署许可协议或就是否以及在何种条件下应该考虑取得许可进行谈判这样的回覆是不足够的 [305]

法院进一步指出,做出附带条件的许可意愿声明是不可接受的 [305] 。并且,拒绝讨论其对专利持有人发出的许可反要约有否存在任何改进的空间也可以被视为实施人一方不具备取得许可意愿的象征 [305]

基于以上所述,法院认为,戴姆勒最初以在其产品确实侵害了诺基亚的专利专利的前提下为签署许可协议的条件,并未能充分表达出其签署FRAND许可协议的意愿 [307] 。法院更表示,戴姆勒所提出的许可反要约同样不能够被认为是取得许可意愿的充分表示,特别是戴姆勒在第二次提出的许可反要约中赋予其对诺基亚单方面设定的许可费率进行挑战的权利,如此一来只会导致当事方间有关许可费率的确定的实质争议再度被拖延至将来的法律诉讼程序 [308]

法院还认为,由于戴姆勒不但没有与诺基亚进行谈判,反而是坚持要求由其供应商直接向诺基亚取得许可,戴姆勒并未扮演出一个“善意”的被许可人的角色 [309] 。此外,戴姆勒坚持以其向供应商购买车载信息控制单元组件的平均销售价格为基准计算诺基亚所持有的标准必要专利组合许可费也再度证明了戴姆勒缺乏取得许可的意愿 [310]

 

FRAND许可费的计算

法院认为,使用车载信息控制单元作为“参考价值”来为诺基亚所持有的标准必要专利组合计算许可费是不恰当的 [311]

一般来说,符合FRAND的条款和条件往往不仅只有一套,通常会存在一系列的许可条款和费用都能符合FRAND [312] 。此外,可以被认为符合FRAND的条款和条件也可能在各个行业之间以及不同的时间下有所差异 [312]

然而,法院指出,专利持有人原则上必须能够在价值链的最后阶段就其技术在可销售终端产品中的经济利益获得一定份额 [313] 。其原因在于,对该项受保护发明的实施“创造“了通过终端产品获取”经济利益“的”机会“ [313] 。法院不认同关于以最终产品的价值作为对专利技术价值的考量将使标准必要专利持有人得以从发生于价值链中其他阶段的创新发明中获益此一观点 [314] 。法院指出,有数种手段可以确保这种情况不会发生 [314]

因此,法院不赞同使用所谓的“最小可销售专利实施单元(SSPPU)“——即某一项产品中所包含的最小技术单元——作为计算FRAND许可费率的基准这一观点 [314] 。专利权穷竭所产生的影响将使得标准必要专利持有人被排除于共享在价值链的最后阶段才创造出的价值的行列之外 [314] 。除此之外,此种做法也将使的对”双重获利“行为的确认与避免变得更加复杂,而这意味着在价值链中的数个不同阶段得以对同一项专利多次进行许可 [314]

尽管如此,法院进一步阐明,上述原则并不全然意味着所有的许可协议都应该仅与终端设备制造商签署 [315] 。法院认为,即使是在供应链的其他阶段,也有多种可能可以就专利技术对可销售终端产品的价值进行评估 [315]

在这种背景下,法院认为,车载信息控制单元的销售价格并不能充分反映诺基亚所持有的标准必要专利对戴姆勒所生产的汽车——即本案中相关终端设备——的价值 [316] 。 车载信息控制单元的销售价格仅仅能够反应出戴姆勒本身的相应成本 [317] 。另一方面,连网功能使戴姆勒得以从为其客户提供其他额外服务中获得收益,节省成本并优化研发费用 [318] 。连网功能确保了创造此一价值的机会 [319] 。此外,法院指出,戴姆勒的几个主要竞争对手均接受了Avanci平台的许可模式(即专门向汽车制造商授予许可)这一事实更进一步展现出着重于受保护技术对终端产品的价值在汽车行业中也是合理的 [320]

 

无歧视

此外,法院认为,诺基亚对戴姆勒所提出的专利权主张并不具有歧视性,是以戴姆勒坚持许可必须由其供应商取得的主张无理由 [321]

法院进一步阐明,专利持有人原则上有权自由选择于供应链中的哪一个阶段主张其权利 [322] 。而这对处于市场支配地位的专利持有人而言亦无不同,因为竞争法本身并不当然限制此种可能性 [322] 。并且,处于市场支配地为的专利持有人也没有义务向所有潜在的被许可人提供一个“标准费率” [322]

《欧洲联盟运作条约》第102条所规定的无歧视义务旨在防止对上游或下游市场竞争的妨碍,然而,其并不排除当有充分的理由存在时给予被许可人不同的待遇 [323]

在本案中,法院认为没有迹象表明诺基亚主张使用终端产品作为计算其专利许可费的基础将会对竞争产生影响 [324] 。特别是,尽管在汽车行业中存在通常由供应商取得出售给汽车制造商的零部件的使用许可这一事实,也不意味着诺基亚需要改变其通常惯例,尤其是通过Avanci平台授予戴姆勒竞争对手许可的实例已经表明,该于通信行业盛行的相应惯例已经在汽车行业中获得采纳 [325] 。此外,法院也不认为对终端设备制造商主张标准必要专利权可能会导致对其生产、销售和技术发展层面的限制从而损害消费者权益 [326] 。在这方面,法院引用了所谓的“委托制造权”,根据ETSI知识产权政策,该权利应被包含在FRAND许可协议中,并允许零组件制造商生产、销售和开发其产品 [327]

 

标准必要专利持有人所提出的许可要约 / 信息披露义务

此外,法院认为,戴姆勒无法通过主张诺基亚拒绝提供与其所提出的许可要约相关的充分信息来合理化自身不愿意取得许可的意愿 [328]

法院指出,标准必要专利持有人有义务证明其所提出的许可要约具备FRAND符合性 [329] 。如果专利持有人已经与第三方被许可人签订了非标准条款的许可协议,则专利持有人通常有义务以某种使实施人得以对其是否被提供了不同的商业条款进行评估的方式披露并呈现(至少包含)关键合同条款在内的协议内容 [329] 。关于此项义务所包含的范围与详细程度应依个案具体情况决定 [329]

考虑到这一点,法院认为,通过提交包含一项有关连网汽车价值的研究以及其与另一家主要汽车制造商间签署的许可协议在内的各项信息,诺基亚已经向戴姆勒提供了足够的信息 [330] 。于此脉络下,法院否认了诺基亚有向戴姆勒披露其与智能手机制造商间签署的许可协议的义务。法院拒绝了有关标准必要专利持有人的信息披露义务应延伸至涵盖此前签署的每一个许可协议的全部内容,并且标准必要专利持有人有义务披露所有现存许可协议的观点 [331] 。此外,法院更指出,通信行业中的许可协议对于评估汽车行业中的许可协议是否符合FRAND而言并无关联 [331]

 

供应商提出的FRAND抗辩

除上述几点外,法院还强调,戴姆勒无法从其参加本诉讼程序的供应商所提出的FRAND抗辩中获益 [332]

法院并未就关于被起诉的终端设备制造商原则上是否可以倚仗其供应商之一所提出的FRAND抗辩这一问题作出明确答覆。然而,法院认为,这将取决于该供应商在任何情况下均愿意由专利持有人处取得以终端产品为标准计算涉案专利价值(而非该产品的组件)的许可 [333] 。而在当前诉讼中情况并非如此 [334]

法院并没有忽略供应商可能将其向标准必要专利持有人支付的许可费转嫁在其客户身上这一问题 [335] 。然而,与第三方之间的合同约定(此处为供应商与终端设备制造商之间的协议),在法院看来,不应导致一个不允许标准必要专利持有人共享其专利技术为终端产品创造出的价值的许可协议的结果 [335]
 

C. 其他重要问题

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

法院并未就此问题做出答覆,因为不论是戴姆勒还是其供应商均不愿意以该受保护技术为戴姆勒制造的汽车所创造出的价值为基准向诺基亚取得符合FRAND条款的许可 [336] 。法院还指出,就本案涉案专利将于从现在开始起算的几年后到期失效这一事实而言,也不应该中止本诉讼程序 [337]
 

  • [289] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19。
  • [290] 同上注, 段 49-136。
  • [291] 同上注, 段 138。
  • [292] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [293] Nokia v Daimler, District Court of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19, 段 144。
  • [294] 同上注, 段 146。
  • [295] 同上注, 段 147。
  • [296] 同上注, 段 148。
  • [297] 同上注, 段 149。
  • [298] 同上注, 段 152。
  • [299] 同上注, 段 151-156。
  • [300] 同上注, 段 248。
  • [301] 同上注, 段 153 及以下。
  • [302] 同上注, 段 154。
  • [303] 同上注, 段 155。
  • [304] 同上注, 段 157-231。
  • [305] 同上注, 段 158。
  • [306] 同上注, 段 159。
  • [307] 同上注, 段 161。
  • [308] 同上注, 段 197-199。
  • [309] 同上注, 段 157, 160 及 162-164。
  • [310] 同上注, 段 160 及 165-168。
  • [311] 同上注, 段 169。
  • [312] 同上注, 段 170。
  • [313] 同上注, 段 171。
  • [314] 同上注, 段 172。
  • [315] 同上注, 段 173。
  • [316] 同上注, 段 174 及以下。
  • [317] 同上注, 段 174。
  • [318] 同上注, 段 177。
  • [319] 同上注, 段 180。
  • [320] 同上注, 段 187 及以下。
  • [321] 同上注, 段 201-212。
  • [322] 同上注, 段 202。
  • [323] 同上注, 段 203。
  • [324] 同上注, 段 205。
  • [325] 同上注, 段 210。
  • [326] 同上注, 段 213。
  • [327] 同上注, 段 215。
  • [328] 同上注, 段 216 及以下。
  • [329] 同上注, 段 217。
  • [330] 同上注, 段 218。
  • [331] 同上注, 段 230。
  • [332] 同上注, 段 232 及以下。
  • [333] 同上注, 段 234, 236 及以下。
  • [334] 同上注, 段 240 及以下。
  • [335] 同上注, 段 239。
  • [336] 同上注, 段 253 及 291。
  • [337] 同上注, 段 291。

Updated 2 八月 2019

Tagivan (MPEG-LA) v Huawei

LG Düsseldorf
15 十一月 2018 - Case No. 4a O 17/17

A. Facts

The Claimant, Tagivan II LLC, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent, or SEP). The patent in question is subject to a FRAND commitment (FRAND stands for Fair, Reasonable and Non-Discriminatory terms and conditions) made towards the relevant standardisation body. It was included into a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [338] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones in Germany that practise the AVC/H.264 standard [339] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [340] . Since 2004, MPEG-LA has signed approx. 2,000 agreements with implementers [341] , 1,400 of which are still in force [340] .

In 2009, MPEG LA and the Defendant’s parent company (parent company) started discussions about a potential licence covering other standards, especially the MPEG-2 standard. On 6 September 2011, MPEG LA informed the parent company about the possibility to obtain a licence also regarding the AVC/H.264 standard, by sending PDF-copies of its standard licensing agreement to the parent company via email [342] . On 15 September 2011, the parent company suggested to arrange a call on this issue [343] . In February 2012, MPEG LA sent the pool’s standard licensing agreement for the AVC/H.264 standard to the parent company also by mail [344] .

In November 2013, the discussions between MPEG LA and the parent company ended without success [345] . The parties resumed negotiations in July 2016; again, no agreement was reached [345] .

The Claimant then brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [346] .

In November 2017, during the course of the present proceedings, the Defendant made a counteroffer to the Claimant for a licence, which – in contrast to MPEG LA’s standard licensing agreement – was limited to the Claimant’s patent portfolio and established different royalty rates for different regions, in which the Defendant sold products [347] .

In March and September 2018 (again during the proceedings), the Defendant provided bank guarantees to the Claimant covering past and future sales of (allegedly) infringing products. The security amounts were calculated based on the Defendant’s counteroffer dated November 2017 [348] . Furthermore, the Defendant made a second counteroffer to the Claimant shortly after the last oral hearing before the Court [349] .

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

B. Court’s reasoning

The Court found that the patent in suit was valid [350] , standard essential [351] and infringed by the products sold by the Defendant in Germany [352] . Furthermore, the Court held that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [353] (Huawei obligations or framework) with respect to dominant undertakings [354] .

Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [355] .

The Court defined the relevant market for the assessment of dominance as the market, in which licences for any given patent are offered [356] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [356] .

The Court made clear that ownership of a SEP does not per se establish market dominance [357] . A dominant market position is given, when the use of the SEP is required for entering the market [358] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [359] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no ‘realistic’ alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [360] .

Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [361] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [362] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [363] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [364] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [365] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement. The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [366] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the, nevertheless, existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [367] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [367] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [368] .

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

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the email sent by MPEG LA to the parent company on 6 September 2011 [369] .

The fact that this email was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries concerned [370] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [371] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [372] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant. The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [373] . In addition, the Defendant’s parent company was most likely aware of MPEG LA’s capacity to act on behalf of the Claimant, since it had entered into direct negotiation with MPEG LA already in 2009, that is almost two years prior to the notification of infringement [374] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the infringed patent (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [375] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [375] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [375] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [375] . The respective test is, however, subject to strict conditions [375] .

Based on the above considerations, the Court found that MPEG LA’s email to the parent company dated 6 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [376] . The overall circumstances of the case (especially the fact that the parent company had been in negotiations with MPEG LA already since 2009 and, therefore, should have been aware that MPEG LA has granted licences for the AVC/H.264 standard to the implementers mentioned at its website), give rise to the assumption that the parent company had been conscious of the fact that AVC/H.264-compliant products need to be licensed [377] .

Willingness to obtain a licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the email sent to MPEG LA on 15 September 2011 [378] .

In the eyes of the Court, this email indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard, especially if it is seen in the context of the negotiations between MPEG LA and the parent company that had commenced in 2009 [378] . This is sufficient under the Huawei framework: A general, informal statement suffices [379] . The implementer is not required to refer to a specific licensing agreement (on the contrary, this could be considered harmful under certain circumstances) [379] .

SEP holder’s offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company in February 2012 presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [380] .

The fact that the standard licensing agreement was not tailored to the parent company but was designed for use towards a large number of (potential) licensees (the name of the licensee ought to be added in each case separately), was not criticized by the Court. MPEG-LA had made clear that the documents sent by mail in February 2012 would serve as the basis for negotiations and a future agreement with the parent company [381] .

In addition, the Court did not take an issue with the fact that the offer was addressed to the parent company and not to the Defendant, since the parties were discussing about a licensing agreement on group level and the parent company had been involved in the communications from the beginning [382] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company did not contain a detailed explanation of the way the royalties were calculated [383] . The Court found that, in the present case, it was sufficient that the parent company was aware that the (standard) agreement presented to her had been accepted in the market by a great number of licensees [384] . In the Court’s view, the explanation of the royalty calculation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [385] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [385] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [385] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [386] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content [387] .

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [388] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [388] . The Court made clear that, in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [388] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [388] .

Non-discrimination

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases [389] . Even then, an unequal treatment is allowed, as long as it is objectively justified [389] . Limitations may, nevertheless, occur, especially when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive, only when it uses the patent’s teachings [389] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may, however, seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [390] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [390] .

Against this background, the Court found that the offer made by MPEG LA to the parent company was not discriminatory. The Defendant had argued that seeking a licence also covering sales in China violated FRAND, since not every other competitor in the Chinese market was licensed by MPEG LA [391] . The Court observed that the selective assertion of patents against only a part of the competitors in a downstream market might, in principle, be discriminatory [392] . This was, however, not the case here, because the Claimant had already sued another company active in China and was attempting to persuade other companies to obtain a licence [393] . Due to the high cost risk associated with court proceedings, the patent holder is not obliged to sue all potential infringers at once; choosing to assert its patents against larger implementers first was considered by the Court as reasonable, since a win over a large market player could motivate smaller competitors to also obtain a licence (without litigation) [394] .

Furthermore, the Court did not consider the fact that the offered standard licensing agreement contained a cap for the annual licensing fees payable to the MPEG LA pool to be discriminatory [395] . The Defendant had argued that the respective cap disproportionally favoured licensees with high volume sales which offered not only mobile phones, but also other standard compliant products in the market. The Court made, however, clear that Art. 102 TFEU does not establish a ‘most-favoured-licensee’ principle (meaning that the patent holder must offer the same conditions to all licensees) [396] . It is not per se discriminatory to use sale volumes as a criterion for discounts, especially if a company has managed to open up a larger market than its competitors [397] . Discounts can further hardly be discriminatory, if they are offered to every (potential) licensee under the same conditions [397] .

Besides that, the Court dismissed the Defendant’s argument that MPEG LA’s standard licensing agreement is discriminatory, because it is offered to both MPEG LA pool members and third licensees. The Court found that the share of the licensing income paid to pool members, who have also signed a MPEG LA licence, reflects their contribution to the pool and, therefore, does not discriminate the latter against third licensees (who have not contributed any patents to the pool) [398] . In this context, the Court also pointed out that the clauses contained in MPEG LA’s standard licensing agreement, providing for deductions or instalment payments are not discriminatory, particularly because they are offered to all licensees [399] .

The Court was further not convinced that the parent company was discriminated by MPEG LA’s offer, because the MPEG LA pool had refrained from requesting a licence at group level from a competitor, but had only granted a licence to a subsidiary within the respective group, instead. In the Court’s eyes, the Claimant had managed to establish that this exception was objectively justified, since only the subsidiary granted a licence had activities concerning the patents included in the pool [400] .

Fair and reasonable terms

With respect to the assessment of whether MPEG LA’s offer to the parent company was also fair and reasonable, the Court placed particular emphasis on the existing licensing agreements between the MPEG-LA pool and third licensees. The Court took the view, that existing licences can establish the actual presumption that the terms offered (as well as the scope of the licence) are fair and reasonable [401] . Moreover, the fact that licences regarding the same patent portfolio have already been granted for similar products prima facie suggests that the selection of the patents included in the pool was adequate [401] .

Based on these premises, the Court found that the approx. 2,000 standard licensing agreements concluded by the MPEG LA pool provide a ‘strong indication’ (‘erhebliche Indizwirkung’) that the underlying licensing terms are fair and reasonable [402] . In the Court’s view, the Defendant had failed to show sufficient facts that could rebut this indication.

In particular, the Court did not accept Defendant’s claim that, as a rule, licences for products sold in the Chinese market are subject to special conditions. On the contrary, the Court found that the existing MPEG LA pool licences allow the assumption that setting worldwide uniform licence fees corresponds to industry practice [403] . Accordingly, the Court rejected Defendant’s argument, that the royalties offered by MPEG LA to the parent company would hinder the Defendant from making profits with its sales in China, since the overall licensing burden (including licences needed from third parties) would be too high. The Court noted that the price level for Defendant’s sales in China does not significantly differ from the price level in other regions [404] . What is more, the Defendant did not show that further licences are needed with respect to the AVC/H.264 standard [405] . The Court further did not recognise a need to apply special conditions for the Chinese market, because – compared to patents from other regions – a lower number of Chinese patents is contained in the MPEG LA pool. According to the Court, the number of patents in a specific market should not be ‘overestimated’ as a factor for assessing the FRAND conformity of an offer, since even a single patent can block an implementer from a market, generating, therefore, the need for obtaining a licence [406] .

Apart from the above, the Court did not criticise that MPEG LA’s standard licensing agreement did not contain an adjustment clause. Such clauses can secure that the agreed licensing fees remain reasonable, in case that the number of patents contained in the pool changes during the term of the licensing agreement. They are, however, in the Court’s view, not the only mean to reach this goal: Moreover, the clause contained in MPEG LA’s standard licensing agreement, according to which the agreed royalties will not be adjusted either when more patents are added to the pool or when patents are withdrawn from the pool, offers an adequate balance of risk and is, therefore, FRAND compliant [407] . This assumption is also confirmed by the fact that all existing licensees have accepted this clause [408] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are, in general, appropriate under the Huawei framework. An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [409] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [409] .

An offer for a pool licence can, nevertheless, violate FRAND in ‘special circumstances’ [410] , for instance, if not all patents included in the pool are used by the licensee [411] . According to the Court, the fact that the Defendant – as well as mobile phone manufacturers in general – usually use only one of four available profiles of the AVC-Standard does not, however, render the standard licensing agreement offered by MPEG LA unreasonable [412] . This is particularly the case, since Defendant’s products – and especially its latest smartphones – have the technical capability to implement more than one available profile [413] . Besides that, it is reasonable to offer one single licence covering all profiles, since modern products incorporate functionalities of several types of devices (e.g. smartphones offer also digital television functionalities) [413] .

In this context, the Court dismissed Defendant’s arguments that the licence offered by MPEG LA was not FRAND, because it allegedly covered both standard-essential and non-essential patents. The Court recognised that the ‘bundling’ of essential and non-essential patents in a patent pool could, in principle, be incompatible with FRAND, if it is done with the intention to extract higher royalties from licensees by increasing the number of patents contained in the pool [414] . The Defendant failed, however, to present any reliable evidence that this was the case with the MPEG-LA pool [415] .

In the Court’s eyes, the Defendant also failed to establish that the rates offered by MPEG LA would lead to an unreasonably high total burden of licensing costs (‘royalty stacking’) [416] . The theoretical possibility that the Defendant might need to obtain licences also for patents not included in a pool does not per se lead to royalty stacking; the Defendant would have been obliged to establish that the total amount of royalties actually paid does not allow to extract any margin from the sale of its products [417] .

The Court further pointed out that MPEG-LA’s offer did not violate FRAND principles, because it referred to a licence covering all companies within the group, to which the Defendant belonged [418] . In the electronics and mobile communications industries, licences on a group level are in line with the industry practice and, therefore, FRAND-compliant [419] .

Implementer’s counteroffer

Having said that, the Court found that the Defendant failed to make a FRAND counteroffer [420] .

In particular, the counteroffer made in November 2017 after the commencement of the present proceedings violated the FRAND principles in terms of content, because it was limited to a licence covering solely the Claimant’s patent portfolio and not all patents included in the MPEG LA pool [421] . Furthermore, the counteroffer established different licensing rates for different regions (especially for China) without factual justification [422] .

Furthermore, the second counteroffer made by the Defendant after the end of the last oral hearing was belated and, therefore, not FRAND. The Court held that the Claimant was not given sufficient time to respond to that counteroffer, so that there was no need for any further assessment of its content [349] . On the contrary, the Court expressed the view that the purpose of this counteroffer was most likely to delay the infringement proceedings [349] .

Provision of security

Since Defendant’s counter-offers were not FRAND in terms of content, the Court did not have to decide, whether the security provided in form of bank guarantees was FRAND or not. The Court noted, however, that the amounts provided were insufficient, since they were calculated on basis of Defendant’s counteroffer from November 2017, which itself failed to meet the FRAND requirements [423] .

  • [338] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, para. 36.
  • [339] Ibid, para. 35.
  • [340] Ibid, para. 37.
  • [341] Ibid, para. 453.
  • [342] Ibid, para. 39.
  • [343] Ibid, para. 43.
  • [344] Ibid, para. 44.
  • [345] Ibid, para. 53.
  • [346] Ibid, para. 2.
  • [347] Ibid, para. 54.
  • [348] Ibid, para. 65.
  • [349] Ibid, para. 716.
  • [350] Ibid, paras. 143-208.
  • [351] Ibid, paras. 209-293.
  • [352] Ibid, paras. 295-302.
  • [353] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [354] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, paras. 304 et seqq.
  • [355] Ibid, para. 307.
  • [356] Ibid, para. 310.
  • [357] Ibid, para. 310. In this respect, the Court pointed out that – vice versa – also a non-essential patent might confer a dominant position, if the patented invention is superior in terms of technological merit and/or economical value, para. 312.
  • [358] Ibid, paras. 310 et seq.
  • [359] Ibid, para. 311.
  • [360] Ibid, paras. 315 et seqq.
  • [361] Ibid, para. 321.
  • [362] Ibid, para. 326.
  • [363] Ibid, para. 327.
  • [364] Ibid, para. 330.
  • [365] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06.
  • [366] Ibid, paras. 331 et seqq.
  • [367] Ibid, para. 335.
  • [368] Ibid, para. 337.
  • [369] Ibid, para. 339.
  • [370] Ibid, para. 343.
  • [371] Ibid, para. 345.
  • [372] Ibid, para. 356.
  • [373] Ibid, paras. 357 et seqq.
  • [374] Ibid, paras. 366 et seqq.
  • [375] Ibid, para. 340.
  • [376] Ibid, para. 341.
  • [377] Ibid, paras. 395 et seqq.
  • [378] Ibid, paras. 400 et seqq.
  • [379] Ibid, para. 399.
  • [380] Ibid, para. 405.
  • [381] Ibid, paras. 411-417.
  • [382] Ibid, para. 419.
  • [383] Ibid, para. 421.
  • [384] Ibid, para. 425.
  • [385] Ibid, para. 422.
  • [386] Ibid, paras. 426 et seqq.
  • [387] Ibid, para. 429.
  • [388] Ibid, para. 431.
  • [389] Ibid, para. 432.
  • [390] Ibid, para. 433.
  • [391] Ibid, para. 438.
  • [392] Ibid, para. 443.
  • [393] Ibid, para. 444.
  • [394] Ibid, para. 445.
  • [395] Ibid, para. 579.
  • [396] Ibid, para. 582.
  • [397] Ibid, paras. 583 et seqq.
  • [398] Ibid, para. 564.
  • [399] Ibid, paras. 568 et seqq.
  • [400] Ibid, paras. 573 et seqq.
  • [401] Ibid, para. 451.
  • [402] Ibid, para. 449.
  • [403] Ibid, para. 454.
  • [404] Ibid, paras. 487 et seqq.
  • [405] Ibid, para. 491.
  • [406] Ibid, para. 495.
  • [407] Ibid, paras. 591 et seqq., particularly para. 596.
  • [408] Ibid. para. 597.
  • [409] Ibid. para. 504.
  • [410] Ibid. para. 508.
  • [411] Ibid. para. 514.
  • [412] Ibid. paras. 511 et seqq.
  • [413] Ibid. para. 524.
  • [414] Ibid, para. 528.
  • [415] Ibid, paras. 531-543.
  • [416] Ibid, paras. 545 et seqq.
  • [417] Ibid, para. 546.
  • [418] Ibid, para. 599.
  • [419] Ibid, para. 600.
  • [420] Ibid, para. 603.
  • [421] Ibid, paras. 605 et seqq.
  • [422] Ibid, paras. 617 et seqq.
  • [423] Ibid, para. 625.