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 1 四月 2021

InterDigital v Xiaomi, District Court (Landgericht) Munich I

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

A. Facts

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

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

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

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

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

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

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

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

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

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

With the present judgment dated 25 February 2021, the Munich District Court dismissed Xiaomi’s appeal on the merits and confirmed the Munich AASI. [1] (cited by www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-3995?hl=true)
 

B. Court’s reasoning

The Munich District Court held that InterDigital had a claim for preliminary injunction and that sufficient grounds for issuing an AASI were given. [2]
 

Claim for preliminary injunction

The Court explained that the filing, prosecution and enforcement of an ASI in China with the goal to prevent the assertion of claims for injunctive relief against patent infringement in Germany impairs the ‘property-like legal position’ of the patent holder and constitutes a tortious act (in terms of Section 823 para. 1 of the German Civil Code). [3] The same is true with respect to court orders, which restrain a party from initiating AASI-proceedings in Germany (so-called ‘anti-anti-anti-suit injunctions’, or AAASI). [3]

In the eyes of the Munich District Court, the Wuhan ASI had the aforementioned effect. According to its wording and reasoning, the Wuhan ASI attempted to have a global reach and would also have impacted those InterDigital Group entities holding German SEPs that were involved in the present proceedings. [4] The fact that these companies did not directly face fines or other sanctions imposed by the Wuhan Court, did not change the fact that the Wuhan ASI tried to impair their legal position: These measures threatened other affiliated companies within InterDigital Group and, thus, created a coercive situation in an attempt to limit the freedom of the companies that actually hold German SEPs to act for their protection of their rights. [4]

In addition, the Court expressed the view that InterDigital was in a position to invoke the right for self-defence against the Wuhan ASI. [3] Section 227 of the German Civil Code provides that any action, which is necessary for averting a present illicit attack, is not unlawful.

 

Grounds for preliminary injunction

Furthermore, the Munich District Court found that there was sufficient justification for ordering interim measures. [5]

First, it could not be requested from InterDigital to defend itself against the Wuhan ASI in regular (main) court proceedings. [6] Given that injunctions are available only for the limited lifetime of a patent, regular proceedings against an ASI would not sufficiently protect patent holders’ rights; the latter would be, effectively, deprived of the right to injunctive relief for a considerable period of time, at least until the enforcement of the first instance decision of the German court. [7] This limitation would occur irrespective of the fact that a foreign ASI violates public order (ordre public) and, thus, does not have any legal effect in Germany. [6] The Court repeated that sanctions imposed or threatened in foreign jurisdictions can place the patent holder under pressure and stand in the way of effective patent enforcement in Germany. [6] This applies equally, when a foreign court has granted an AAASI, preventing a party to seek for protective measures in the form of a AASI in Germany, as was the case with the order of the Wuhan Court. [8]

Second, the Munich District Court held that the urgency required for interim measures was given. [9] Inter-digital had filed the request for an AASI in a timely fashion. [10] As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month of knowledge of the act. [11] The Munich District Court suggested that this deadline, basically, also applies to AASIs (refraining, however, from a final assessment of this question). [12]

In case that an AASI is directed against an ASI already granted by a foreign court (risk of repetition), the respective request should be filed within a month after the patent holder obtained ‘secure knowledge’ of the foreign court order, irrespective of whether formal service took place or not. [13] For assuming ‘secure knowledge’, it can be required that the patent holder gets access to the ASI request as well as the evidence used in the foreign proceedings, especially when the court order itself does not contain clear information about the parties, the content and the legal grounds of the order. [14]

If a request for an AASI is filed before a foreign ASI has been issued, that is when only a ‘risk of first infringement’ of a violation of SEP holder’s ‘property-like’ rights exists, the one-month deadline begins at the moment in time, in which the patent holder gains ‘secure knowledge’ of the filing of an ASI request before the foreign court or of the existing risk of such measures, which is especially materialized, when the implementer threatens with respective action. [15] In this context, the Court clarified that filing early countermeasures before a grant of an ASI is only an option; patent holders are, basically, free to wait for the outcome of foreign ASI proceedings, before filing a request for an AASI. [15]

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

  • The implementer has threatened to file a request for an ASI;
  • The implementer has filed a request for an ASI;
  • The implementer has filed a (regular) action for the grant of a licence or the determination of reason-able global licensing rates in a jurisdiction, in which ASIs can, in principle, be granted;
  • The implementer has already threatened an ASI or filed a respective request against other patent holders and the party filing an AASI in Germany has no indication that the implementer will refrain from such actions against it in the future;
  • The implementer failed to declare in text form within a short deadline set by the patent holder (e.g. with the first notification of infringement) that it will not file a request for an ASI. [16]
ASI and implementer’s willingness to obtain a licence

The Munich District Court further made clear that an implementer who threatens an ASI or files a respective request, can, as a rule, not be treated as a ‘willing licensee’ within the meaning of the Huawei v ZTE ruling (Huawei v ZTE) [17] of the Court of Justice of the EU (CJEU) and the recent case-law of the German Federal Court of Justice (Bundesgerichtshof) in the Sisvel v Haier [18] cases. [19] According to the Court, an implementer truly willing to obtain a FRAND-licence would regularly refrain from actions impairing SEP holder’s ‘property-like’ rights even further than the past and ongoing acts of patent infringement (such as the filing of a request for an ASI). [20]

Looking particularly at the negotiation framework established in Huawei v ZTE, the Munich District Court noted that balanced negotiations on an equal footing -as envisioned by the CJEU- can only be ensured if the parties have equal access to legal remedies: The implementer’s ability to attack patent validity should be counterbalanced by the patent holder’s ability to assert its patent rights before court. [21] This is no longer the case when the judicial assertion of claims against patent infringement is precluded based on an ASI. [21] In this context, the Court noted that an ASI directly violates the SEP holders’ right to have access to courts which is established in both European law (Article 47 para. 1 of the EU Charter of Fundamental Rights) and German constitutional law. [21]

Furthermore, the Munich District Court expressed the view that an implementer who has been notified about the infringement of SEPs can be required not only to adequately demonstrate willingness to obtain a FRAND-licence, but also to declare that it will not file a request for an ASI against the patent holder. [20] The Court explained that, otherwise, the negotiation process set forth by Huawei v ZTE could not be followed. [22] In particular, the SEP holder could no longer be obliged to notify the implementer about the infringement before filing a court action. [22] By making a notification of infringement, the patent holder exposes itself to an ASI. If an ASI is granted, then the patent holder will in many cases be de facto prevented from exercising its right to injunctive relief even towards implementers unwilling to take a licence. [23] According to the Court, this result conflicts with the so-called EU IPR Enforcement-Directive (Articles 9-11) [24] as well as the case law of the CJEU. [25]

The Court also added that SEP holders cannot be expected to pre-emptively prepare countermeasures against potential future ASIs [20] . Even when SEP holders seek global portfolio licences, preparing the filing of AASIs in many different jurisdictions would lead to disproportionate high costs at a point in time, in which neither the risk nor the impact of an ASI could be reliably assessed. [20]
 

Balance of interests

After weighing the interests of the parties against each other, the Munich District Court held that an AASI was justified. [26]

On the one hand, the Court recognized that InterDigital had an interest to be granted the requested AASI. Although the Wuhan ASI violated public order and could not be enforced in Germany, InterDigital had an interest to limit the reach of the Chinese order as far as German SEPs are concerned; otherwise, the threat of sanctions that could be imposed in China would de facto prevent InterDigital from enforcing its patent rights in Germany for an unforeseeable period of time. [27]

On the other hand, the Court highlighted that a German AASI would not impair the rights of Xiaomi. [28] The AASI would only oblige Xiaomi to withdraw the Wuhan ASI and, therefore, have no impact on the Chinese main proceedings. [28] The Chinese main proceedings would also not be impaired, in case that InterDigital filed infringement proceedings against Xiaomi in Germany, following the grant of an AASI. The Munich District Court expects that German infringement proceedings would not revolve around the same question raised in the Chinese proceedings, that is the determination of the global rate for InterDigital’s SEP portfolio. [28] On the contrary, German infringement courts would probably not examine the amount of an adequate global licensing rate, because it is very unlikely that they would examine a FRAND defence raised by Xiaomi on the merits. [28] The Court reasoned that the very act of requesting an ASI, or threatening to do so, is evidence that the implementer is an unwilling licensee, such that a FRAND defence raised by Xiaomi in German infringement proceedings would hardly have any prospects of success. [28]

In addition, the Court took the view that Xiaomi’s interest to avoid infringement trials in Germany during the pendency of the Chinese main proceedings was not worthy of protection. [29] Xiaomi did neither constantly monitor the IPR landscape, as it is obliged to, nor obtain necessary licences before starting production. [29] What is more, Xiaomi refused to do so for more than seven years, such that InterDigital can no longer be expected to further wait to assert its rights. [29]

 

C. Other issues

The Munich District Court also confirmed that InterDigital had a legitimate interest in legal remedies. [30] Under German law, this is a prerequisite for any court action and is, basically, given, when the claims asserted by the claimant have not been fulfilled by the defendant yet. [31] The fact that InterDigital could defend itself against the ASI also in so-called ‘reconsideration proceedings’ before Chinese courts did not remove InterDigital’s legitimate interest that its case is heard by German courts. [32] The Court held that such proceedings could not sufficiently protect InterDigital’s ‘property-like’ rights in Germany, especially since a reliable assessment of the prospects of success of such legal remedy is very challenging. [32]

Furthermore, the Court confirmed that the pendency of the Chinese and Indian proceedings did not prevent German courts from hearing the case in question (no lis pendens). [33]

Finally, the Court also found that the Munich AASI had been served to Xiaomi within the relevant deadline, which under German law is a prerequisite for such orders to remain in force. [34]

  • [1] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20.
  • [2] Ibid, para. 75.
  • [3] Ibid, para. 120.
  • [4] Ibid, para. 121.
  • [5] Ibid, para. 129.
  • [6] Ibid, para. 130.
  • [7] Ibid, para. 130. The Munich District Court highlighted that the right to injunctive relief is the ‘essential feature’ of exclusionary rights, such as patent rights, and the ‘sharpest weapon’ against infringement. Patents would be ‘worthless’, if the patent holder would be denied the possibility to enforce its rights by way of court proceedings.
  • [8] Ibid, para. 131.
  • [9] Ibid, para. 132.
  • [10] Ibid, para. 132 as well as paras. 151 et seqq.
  • [11] Ibid, para. 133.
  • [12] Ibid, paras. 134-135.
  • [13] Ibid, para. 134.
  • [14] Ibid. para. 136.
  • [15] Ibid, para. 138.
  • [16] Ibid, para. 142.
  • [17] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [18] Sisvel v Haier I, Bundesgerichtshof, judgment dated 5 May 2020, Case No. KZR 36/17 and Sisvel v Haier II, Bundesgerichtshof, judgment dated 24 November 2020, Case No. KZR 35/17.
  • [19] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 146.
  • [20] Ibid, para. 146.
  • [21] Ibid. para. 148.
  • [22] Ibid, para. 147.
  • [23] Ibid, para. 149.
  • [24] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).
  • [25] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 149.
  • [26] Ibid, para. 168.
  • [27] Ibid, para. 169.
  • [28] Ibid, para. 170.
  • [29] Ibid, para. 173.
  • [30] Ibid, para. 75.
  • [31] Ibid, para. 107.
  • [32] Ibid, para. 108.
  • [33] Ibid, paras. 75 and 109.
  • [34] Ibid, para. 75 and paras. 80-106.

Updated 16 六月 2021

慕尼黑一区地区法院康文森诉戴姆勒案

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

A. 事实

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

康文森向欧洲电信标准协会(ETSI)作出了承诺,表示愿意将其所持有的标准必要专利依照公平、合理且无歧视(FRAND)的条款和条件向标准实施人提供。

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

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

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

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

戴姆勒于2019年7月29日作出回应,并表示其正与

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

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

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

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

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

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

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

法院在当前判决 [35] 中做出了包含对戴姆勒出发禁令在内的多项有利于康文森的裁决。
 

B. 法院的论理

法院认为,本案涉案专利为实施4G / LTE标准时所必要,并且该专利遭受了侵权行为 [36] ,康文森所提出的索赔主张因此而被法院准许。

康文森就关于禁令救济以及召回并销毁侵权产品的诉讼主张也应该被准许。康文森对戴姆提起侵权诉讼的行为既不会构成《欧洲联盟运作条约》(TFEU)第102条所规定对市场支配地位的滥用行为(以下称“竞争法上抗辩”,参见下段第 1 项),也没有违反其因欧洲电信标准协会专利政策所应承担的合同义务(以下称“合同法上抗辩”,参见下段第 2 项) [37]
 

1. 竞争法上抗辩
市场支配地位

法院认为,康文森具备《欧洲联盟运作条约》第102条涵义下的市场支配地位 [38]

享有专利所授与的独占权本身并不会造成市场支配地位的形成 [39] 。当一项专利对符合标准发展组织所发展出的标准(或事实上的标准)而言具备技术上的必要性,并且在(下游)市场提供的产品中并没有可以替代该标准的技术时 [40] ,市场支配地位才会形成。在法院看来,此一原则适用于本案涉案专利 [41]

在本案中,可以排除康文森市场支配地位的特殊情况并不存在。法院认为,单就康文森向欧洲电信标准协会做出FRAND承诺,从而确立其必须依照FRAND条款与条件授予许可的义务这一事实本身,并不会排除康文森的市场支配地位,并且,此一问题决定性的关键在于标准必要专利持有人是否真正履行了这一义务 [42] 。此外,潜在实施人也可以选择从Avanci平台获得本案涉案专利许可的这一替代途径也并不会对康文森的市场支配地位造成限制 [43]
 

未构成对市场支配地位的滥用

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

在实施人已经使用了受(专利)保护的标准化技术的情况下,对标准必要专利持有人行为的评估则需要采取更全面的综合分析,一方面需要考虑知识产权所享有的是宪法所赋予的强大保障,另一方面也需要将实施人可以实施标准的利益纳入考量,二者之间必须相互平衡 [44] 。在这种情况下,不仅只是私人利益,也应该将公共利益纳入考量范围之中 [45] 。法院强调,公共利益不应仅仅被视为“单纯的使用标准化技术各私人利益的总和”,而同时也应该包含对公众利益实质性的保护以保障知识产权的完整性并确保有效的执行力 [45]

考虑到标准必要专利在“本质上所具备的特殊性”,尤其是在通信领域,法院采取了与欧洲联盟法院(CJEU)华为诉中兴案判决(以下称“华为案判决”) [46] 一致的观点,认为对标准必要专利持有人施加某些特定的行为义务是合理且正当的。其原因基本上在于,与其他“普通”专利不同,标准必要专利是在专利持有人无需采取任何进一步行动的情况下,因该专利被纳入某一标准中而在市场上被确立 [47] 。因此,对于标准必要专利而言,通过授予专利技术的发明人在特定期间内的独占性的排他性权利来确保专利技术的发明人在市场上的竞争优势的需求,相较于非标准必要专利而言也就并不那么强烈 [48]

尽管如此,法院仍然明确表示,华为案判决对标准必要专利持有人所施加的行为义务仅存在于“严肃看待而不仅仅是口头上表示”愿意签署许可协议的实施人身上 [49] 。因此,一项基于对滥用市场支配地位的指控的抗辩只有在想要使用或者已经在未经授权的情况下使用专利的实施人愿意取得FRAND许可,并且在其与标准必要专利持有人进行许可谈判的整个过程中没有使用拖延战术的情况下,才有可能成立 [50] 。法院阐明到,华为案判决的关键概念在于谈判双方才是最有资格在公平、平衡且即时的许可谈判中确定 FRAND者,而是否能达成协议则将取决于谈判双方受为达成协议的实际“真诚动机”驱使的积极性参与 [51]
 

侵权通知

在对双方的行为进行审视后,法院认为,通过发送了日期为2018年12月18日的信函,康文森已经履行了就其标准必要专利遭受侵权情事对戴姆勒进行通知的义务,此信函的内容包含了与其专利组合相关的足够信息,其中也包括了数个各别专利所对应的权利要求对照表 [52] 。至于康文森是否充分解释了本信函中所附带的许可要约背后的许可费究竟是如何计算的则无关紧要,因为在此一阶段,康文森甚至还没有向戴姆勒提出许可要约的义务 [53]
 

取得许可的意愿

另一方面,法院认定戴姆勒不具备从康文森处取得许可的意愿。相反地,法院发现了一个“特别明显不具备取得许可意愿的案例” [54]

在内容方面,实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议,并且随后以一种“目的性导向”且“积极”的态度来进行许可谈判 [55] 。相反地,在对(第一次)侵权通知做出回应时,仅仅是对侵权通知作出表达愿意考虑签署许可协议或就是否以及在什么条件下才考虑取得许可进行谈判是不够的 [55]

法院阐明,关于实施人是否具备取得许可的意愿的评估,需要通过对截至侵权诉讼程序中口头听证程序结束为止的所有案例事实进行全面性的分析来确定 [56] 。实施人是否表达出取得许可的意愿这一问题,并不能通过对实施人行为的“形式性的简略印象”来回答;更重要的是,实施人不能持续保持被动状态,直到在实施人眼中看来标准必要专利持有人已经履行了其义务时 [56]

此外,法院强调,谈判进行中的时机是在评估实施人是否具备取得许可的意愿时必须纳入考量范围的一项因素 [57] 。否则,实施人将会缺乏及时且积极地参与谈判的动力 [58] 。关于即时的概念法院认为严格的期限无法被设定,仍需要视个案具体情况逐一评估 [59] 。然而,已被告知侵权的实施人有义务通过与标准必要专利持有人签署 FRAND 许可而尽快使对该专利的非法使用合法化 [59]

此外,法院认为,实施人是否以及在何时向标准必要专利持有人提出许可反要约也可以作为实施人是否具备取得许可意愿的“重要指标” [57] 30。在侵权诉讼程序开始后才提出的许可反要约在通常情况下是不被认可的 [60] 。法院认为,实施人仅仅为了“做表面功夫”而进行谈判,然后透过提出许可反要约来对在侵权诉讼中可能被定罪的劣势进行“紧急刹车”,这种行为是不应该被允许的 [58] 。仅有在实施人自谈判开始时就愿意,并且始终积极地参与与专利持有人间的讨论这种特殊的情况下,在诉讼审判期间提出的许可反要约才可以被纳入对判断是否具备取得许可意愿的考量范围中 [61]

承上所述,法院认为,一般而言,实施人最初采用的拖延战术是无法在稍后的某一个时间点不费吹灰之力而被“消除”的 [62] 。尽管如此,对取得许可的意愿迟来的表述并不会“自动”排除实施人在侵权诉讼程序中提出“FRAND抗辩”的权利:无论是否出现这种情况,都还是应该根据具体个案在历史谈判过程中的各别情况逐一进行判断 [63]

在此背景下,考虑到戴姆勒的整体行为,法院得出了结论——尽管对戴姆勒而言,以符合FRAND要求的原则行事实际上有可能并且是合理的 [64] ,而戴姆勒仍然选择了采用拖延战术 [65]

法院认为,戴姆勒将康文森导引至其供应商的行为,并未表达出其愿意依照“任何实际上符合FRAND 的条款”来取得许可的意愿,反而是明确地展现出其本身并不准备从康文森处取得许可的态度 [66] 。戴姆勒与其供应商之间可能存在的关于第三方知识产权的赔偿条款在此处并不能发挥任何作用,因为戴姆勒的行为独立地造成了对康文森所持有的专利的侵权行为,因此必须为此承担相应的责任 [66]

另一个显示出戴姆勒并不具备取得许可的意愿的征兆是,戴姆勒花了超过两个月的时间才通知康文森其并未收到那一份本应该被附加于康文森在2020年7月5日发送的电子邮件中但因过失而未被添加的专利组合清单 [67] 。法院同样批评了戴姆勒此前从未针对康文森所提供的权利要求对照表向康文森提出任何问题,反而却是在侵权诉讼审判过程中才对相关专利的质量提出质疑此一事实 [68]

法院在戴姆勒於2020年7月27日所作出的回覆中,還發現了另一个“重大性指標”顯示出戴姆勒並不具備取得許可的意愿,在此回覆中,戴姆勒明确表示其签署许可協議的意愿僅限于尚未被许可或者由不愿自行向康文森取得许可的供应商處所購買的產品 [69] 。法院對於戴姆勒将其供应商的“不具備取得許可的意愿”設定為其己身与康文森签署许可協議的条件這一選擇特別反感 [70]

此外,戴姆勒没有针对康文森在2019年12月4日举行的当事方会议上所提出的使用替代性争议解决机制,特别是以仲裁程序来确定FRAND许可费的提议做出回应,这一事实也被法院认为是戴姆勒方并不具备取得许可意愿的表现 [71]

法院指出,另一个“明显”展现出戴姆勒不具备取得许可意愿且采用拖延战术的迹象在于,于2019年12月4日双方间的讨论结束以后,尽管戴姆勒曾暗示其已与其供应商讨论过有关由供应商直接向康文森取得许可此一潜在选项,然而实际上戴姆勒并未组织其所有一级供应商就此议题召开会议讨论 [72]
 

许可反要约

随后,法院指出,戴姆勒于2020年4月8日所提出的许可反要约并无法弥补戴姆勒在此之前表现出的取得许可意愿缺失 [73] 。更有甚者,这更像是一种“不在场证明” [64]

在法院看来,由于此一许可反要约是在康文森对戴姆勒提出许可要约后的一年零四个月以后才提出的,此一许可反要约的发出是迟延的 [73] 。更重要的是,此一许可反要约是戴姆勒在侵权诉讼程序进行的过程中才提出的,如前所述,此一行为是不被认可的,因为在此之前戴姆勒很显然是不愿意取得许可的 [74] 。法院近一步阐明,戴姆勒以康文森未提供相关的必要信息为借口来正当化其延迟回覆的行为是站不住脚的,因为该许可反要约仅基于公开且可供公众使用的数据撰写,而并未进行任何进一步的详细分析;因此,该许可反要约本来可以在戴姆勒收到康文森初次许可要约后不久的一个更早的时间点发出 [75]

除此之外,法院也认为,戴姆勒所提出的许可反要约在内容上“显然并不符合FRAND” [76] 。根据概括性的分析,戴姆勒所提出的许可费被认为明显是过低的 [77]

法院指出,FRAND费率是一个数值范围,并且有多种可以用于计算 FRAND许可费的方法 [77] 。法院采用了所谓的“自上而下法”(此一方法康文森与戴姆勒双方都曾经使用过) [78] 。在检视过戴姆勒提出的按照“自上而下法”而进行的计算后,法院认为,将所有向欧洲电信标准协会作出声明其为标准必要专利的专利总数作为确定康文森所持有的与LTE相关的标准必要专利所占份额的基础这种做法并不符合FRAND [79] 。考虑到并非所有被声明为标准必要专利的专利实际上都确实属于标准必要专利(这种现象被称为“过度声明”),使用被声明的专利总数作为计算基础将有利于戴姆勒:如果采用的是真正属于LTE标准必要专利的(较低)专利数量做为计算的基础,则康文森所持有的标准专利数量就其本身而言将会变得更高 [79]

此外,法院也指出,采用车载信息控制单元的平均采购价格作为计算基础并不是在FRAND下适当的许可费计算基础 [80] 。标准必要专利的价值是通过许可费而体现的,而该许可费与所提供服务的价值应符合比例原则 [80] 。法院认为,在本案中,通过在戴姆勒汽车上提供支持LTE技术的相关功能以及戴姆勒汽车的消费者对这些功能的使用而创造了经济价值 [80] 。因此,在此处真正相关的是戴姆勒的消费者对因为LTE技术而得以在车辆上实现的各项功能所赋予的价值 [80] 。戴姆勒向供应商支付的车载信息控制单元的采购价格并不能反映该项价值 [80]
 

供应商提出的FRAND抗辩 / 许可层级

法院进一步阐明,戴姆勒不能援引其供应商(据称的)具备直接从康文森处取得许可的意愿做为其FRAND抗辩 [81]

如果一个实施人在声明了自己具备取得许可意愿的同时,也表示了希望该许可的授与可以在其供应商层级进行,则其有义务以书面形式全面地披露其产品中包含了哪些符合标准的元件,以及哪些供应商向其提供了哪些对应的元件 [82] 。如果此一信息披露义务并没有被履行,正如同本案的情况一样,则实施人要求在其供应商层级别进行许可的请求与实施人表示愿意与自己与标准必要专利持有人签署许可协议的声明彼此矛盾,因此,属于恶意行为(见德国民法典第242条) [83] 。在这种情况下,法院明确表示,实施人仍然有义务以一种及时且有目的性的态度积极地与标准必要专利持有人进行双边谈判,即便在实施人已经向标准必要专利持有人提供上述信息后,仍应该同时积极参与促进在供应商层级相关许可机制的建立 [84] 。并且,在与标准必要专利持有人的双边谈判过程中,实施人可以要求在许可协议中包含一项排除对供应商已取得许可的组件双重支付许可费的条款 [84]

承上所述,法院認為,康文森要求由戴姆勒來取得許可的做法並没有構成滥用或歧视性行為 [85]

法院认为,關於在供应链中對标准必要专利的许可应遵循所谓的“所有人均有權要求取得许可”或者是“所有人均有權使用许可”的作法这一基礎性问题,在此无需被回答 [86] 。在标准必要专利持有人与终端设备制造商之间的法律纠纷中,从竞争法的角度而言,只要标准必要专利持有人在诉讼中所追求達成的目标並不会将供应商完全排除在市场之外便已足夠;当供应商通过由终端设备制造商签署的许可協議建立的“委託製造”权而被授予对标准化技术的使用权时,情况正是如此,正如同此處康文森所提供的那样 [86] 。供应商是否有權要求單獨取得许可則是一个不同的问题,而這個問題可能可以在标准必要专利持有人与供应商之间的另外的訴訟程序中被提出 [87]

法院补充到,标准必要专利持有人有权自由决定对供应链中的哪个侵权者向法院提起诉讼 [88] 。该自由选择权源自于宪法对财产权的保障,以及专利作为一种排他性权利的本质 [89] 。 法院认为,尽管在汽车行业的普遍做法是当零部件被出售给汽车制造商时不受第三方权利的限制,然而这并会不因此使康文森要求戴姆勒取得许可的行为成为竞争法上的滥用行为 [90] 。终端设备制造商与其供应商间的各别协议仅具有双边(合同)效力而不能损害第三方的法律地位 [90] 。特别是,此类条款并不能限制标准必要专利持有人选择向供应链中哪个层级的实施人主张其专利权的权利 [91] 。法院指出,鉴于附加技术的整合符合戴姆勒进入新市场与吸引消费者群的经济利益,从竞争法上的角度而言,汽车行业是否有必要放弃其现有的做法并不重要 [91]

在此背景下,法院同时阐明,只要是侵权诉讼仅针对终端设备制造商发动,标准必要专利持有人对供应商并没有履行华为案判决所确定的义务 [92] 。因此,参与此类诉讼的供应商不能以例如略过单独向供应商发送侵权通知等理由而主张标准必要专利持有人滥用其市场支配地位 [93] 。法院否定了标准必要专利持有人应承担这种全面性的通知义务,因为尝试在多层次的复杂供应链中找出所有可能牵涉到的供应商既不可行也不合理 [94]

法院认为,关于标准必要专利持有人拒绝直接对供应商授与许可是否会构成对其市场支配地位的滥用这一问题,应视竞争法上的一般性原则而定 [95] 。在本案中,法院并没有发现充足的理由可以支撑这种滥用行为的成立 [95] 。法院不认为若是供应商没有取得一份专属于自己的双边许可协议,那么其就无法享有权利或将面临法律上的不确定性 [96] 。然而,取得一份专属于自己的双边许可协议将赋予供应商相较于通过“委托制造权”所取得者更广泛的经营自由,从而更能契合其商业利益的这一事实,在供应商对标准充分的使用权仍然可以通过“委托制造权”而被保障的情况下,此问题便与标准必要专利持有人及终端设备制造商间的诉讼程序没有任何相关性了 [97] 。于此范围内,法院同时指出,以“委托制造权”为基础的供应链内部合作在现实中广泛存在且十分普遍,并且也得到了欧盟相关法律的支持(见欧洲联盟委员会12 月 18 日关于与欧洲联盟条约第 85 (1) 条有关分包协议的评估的通知,OJ C 1,1979 年 1 月 3 日) [97]

最后,法院驳回了戴姆勒方关于康文森与Avanci平台的其他成员勾结,通过排除实施人对相关标准的使用而对实施人为具体歧视行为的指控 [98] 。法院并没有发现任何迹象表明此种情况确实存在,相反地,法院强调了专利池通常被认为具有促进竞争的效果,尤其是在欧盟法律体系之下(详见关于欧洲联盟运作条约第 101 条应用于技术转让协议的指南第245段;2014/C 89/03) [98]
 

2. 合同法上抗辩

法院进一步指出,戴姆勒无法因其被授与FRAND许可而引用合同法上的抗辩以对抗康文森的禁令救济主张,因为此种主张并不存在 [99] 。戴姆勒曾经主张,根据康文森对欧洲电信标准协会所作出的FRAND承诺,康文森不被允许向法院提出禁令救济主张。

法院认为,欧洲电信标准协会的FRAND承诺并未创造出与欧盟竞争法(特别是《欧洲联盟运作条约》第 102 条)规定下所应遵守或享有者不同的义务或权利,而在本案中,康文森已经满足了这些要求 [100] 。在法律上,欧洲电信标准协会的FRAND承诺是根据法国法律所规定的为第三方利益所签订的合同(’stipulation pour l’autrui’),其中包含了标准必要专利持有人必须在稍后时间点授予 FRAND 许可这项具有约束力的承诺 [101] 。然而,关于许可协商的进行以及相对应的义务的内容及范围应按华为案判决所创立的规则来解释,这些规则包括了依据《欧洲联盟运作条约》第 102 条所制定的行为准则 [101] 。事实上,欧洲电信标准协会的FRAND承诺实现了在《欧洲联盟运作条约》第 102 条的规定下提供对标准的使用权的要求,同时也支持采用统一的行为标准 [101] 。在法院看来,法国法律不能创设其他进一步的行为义务,因为法国法律也必须按照欧盟法律的精神来进行解释 [101]
 

C. 其他重要问题

最后,基于比例原则的考量,法院采取了没有理由限制康文森禁令救济主张的观点 [102] 。根据德国法律,比例原则是一项具备宪法位阶的一般性法律原则,如果被告在审判中根据此项原则提出了相应的反对意见,则在审查是否核准禁令救济时也应将此原则纳入考量范围之中 [102] 。德国联邦法院(Bundesgerichtshof)也认可在实施人将遭受的损害因为专利持有人行使其排他性权利时违反诚信原则而无法被合理化的情况下,禁令将可能无法立即被执行(详见2016 年 5 月 10 日’Wärmetauscher’案裁决,案件编号 X ZR 114/13) [102] 。然而,在法院看来,戴姆勒在本次诉讼中并未就任何相关事实进行抗辩 [102]
 

  • [35] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19 (cited by juris)。
  • [36] 同上注,段122-265。
  • [37] 同上注,段285。
  • [38] 同上注,段286。
  • [39] 同上注,段288。
  • [40] 同上注,段287及以下。
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  • [43] 同上注,段296。
  • [44] 同上注,段299。
  • [45] 同上注,段300。
  • [46] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [47] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, 段301。
  • [48] 同上注,段301。
  • [49] 同上注,段307。
  • [50] 同上注,段308。
  • [51] 同上注,段302及308。
  • [52] 同上注,段323及以下。
  • [53] 同上注,段324。然而,法院对于康文森仅提及英国高等法院在无限星球诉华为案中使用的计算方法是否足以解释其向戴姆勒所提供的费率表示怀疑。
  • [54] 同上注,段309。
  • [55] 同上注,段310。
  • [56] 同上注,段316。
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  • [59] 同上注,段320。
  • [60] 同上注,段312及316。
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  • [62] 同上注,段317及以下。
  • [63] 同上注,段321。
  • [64] 同上注,段357。
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  • [75] 同上注,段355及以下。
  • [76] 同上注,段341及354。
  • [77] 同上注,段341。
  • [78] 同上注,段341及348。
  • [79] 同上注,段352。
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  • [81] 同上注,段360。
  • [82] 同上注,段362。
  • [83] 同上注,段362及364。
  • [84] 同上注,段363。
  • [85] 同上注,段365。
  • [86] 同上注,段366。
  • [87] 同上注,段367。
  • [88] 同上注,段368及382。
  • [89] 同上注,段368。
  • [90] 同上注,段370。
  • [91] 同上注,段372。
  • [92] 同上注,段373及376-378。
  • [93] 同上注,段373。
  • [94] 同上注,段373及382。
  • [95] 同上注,段373及379。
  • [96] 同上注,段374。
  • [97] 同上注,段375。
  • [98] 同上注,段380。
  • [99] 同上注,段384。
  • [100] 同上注,段384及以下。
  • [101] 同上注,段385。
  • [102] 同上注,段269。

Updated 6 五月 2021

Sisvel v Haier

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

A. Facts

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

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

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

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

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

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

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

On 3 November 2015, the District Court decided in favour of Sisvel in both cases [103] . It granted injunctions against Haier and ordered the recall and destruction of infringing products. The District Court further recognised Haier's liability for damages on the merits and ordered Haier to render full and detailed account of the sales of infringing products to Sisvel. Haier appealed both decisions.

In the subsequent proceedings before the Higher District Court of Duesseldorf (Appeal Court), Haier argued –among other things– that the District Court had not adequately taken into account the conduct requirements imposed on SEP holders by the Court of Justice of the EU (CJEU) in the Huawei v ZTE ruling [104] (Huawei judgment) rendered after Sisvel had filed the infringement actions.

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

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

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

By two judgments dated 30 March 2017, the Appeal Court partially granted Haier's appeals in both parallel proceedings [105] . The claims for injunctive relief as well as the recall and destruction of infringing products were dismissed on the grounds that Sisvel had not complied with its obligations under the Huawei judgment, especially by failing to make a FRAND licensing offer to Haier.

Sisvel appealed the decisions of the Appeal Court.

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

On 5 May 2020, FCJ rendered a judgment in the parallel proceedings pending between the parties concerning the patent reading on the GPRS standard [107] . The Court decided in favour of Sisvel and reversed the judgment of the Appeal Court. With the present judgmentSisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by )., the Court reversed the decision of the Appeal Court also in the case involving the patent in suit.
 

B. Court's reasoning

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

Contrary to the view previously taken by the Appeal Court, FCJ found that by initiating infringement proceedings against Haier, Sisvel had not abused a dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) [110] .
 

Dominant market position

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

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

Abuse of market dominance

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

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

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

Notification of infringement

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

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

Willingness

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

In the Court's eyes, the implementer must 'clearly' and 'unambiguously' declare willingness to conclude a licence agreement with the SEP holder on FRAND terms and, subsequently, engage in negotiations in a 'target-oriented' manner [119] . By contrast, it is not sufficient, in response to a notification of infringement, to just demonstrate willingness to consider signing a licensing agreement or to enter into negotiations about whether and under which conditions taking a licence comes into question [119] .

The Court reasoned that the willingness of the implementer to legitimise the unauthorized use of the patent for the future by creating a respective contractual base is a prerequisite for placing the burden on the SEP holder to negotiate a FRAND licence with the implementer. [120] What is more, willingness (on both sides) is essential, because an adequate solution balancing the opposing interests of the parties results, as a rule, from an interest-based negotiation. [121] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [122] An implementer, who has not shown interest in a FRAND-licence over a longer period after receipt of an infringement notification will have to undertake 'additional efforts' to make sure, that despite the delay caused a licence can be signed as soon as possible. [123]

The Court highlighted particularly that implementers should not engage in 'patent hold-out' by exploiting the 'structural disadvantage', which SEP holders face due to the limitation of their right to assert patents in court. [124] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [124]

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

The Court observed that the Huawei judgment supports the notion that the implementer should remain willing to obtain a licence throughout the course of negotiations.Ibid, para. 65. The 'continuous' willingness is an 'indispensable condition' for successful negotiations or, in case negotiations fail, for a finding of abuse of market dominance on the side of the SEP holder.Ibid, para. 68. The refusal of SEP holder to grant a FRAND licence would, indeed, have no relevance in antitrust terms, when the implementer is not objectively willing and able to obtain such licence. [128]

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

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

Having said that, FCJ noted that for the assessment of the willingness of the implementer its entire conduct (including its reaction to the SEP holder's licensing offer) must be taken into account.Ibid, para. 77. Consequently, willingness can change in the course of time: a court action filed by the SEP holder could become abusive at a later point in time, if the implementer adequately raises a request for a FRAND-licence.Ibid, paras. 79 et seqq. However, the longer the implementer waits with asserting such request, the higher the threshold for considering it as a willing licensee will be. [139] The Court again noted that the above inter­pretation is in line with the Huawei judgment, so that no additional referral to the CJEU is needed, as Haier had requested.Ibid, para. 77.

Against this background, the Court observed that the first response of Haier China to Sisvel's notification almost one year after receipt of the infringement notification was belated [140] . An implementer taking several months to respond to a notification of infringement, typically, sends a signal that there is no interest in taking a licence [140] . Besides that, FCJ found that Haier's response in December 2013, in which only the 'hope' to have a 'formal negotiation' was expressed, was not a sufficient declaration of willing­ness, in terms of content [141] . Since it had reacted belatedly to the notification of infringement, Haier should have undertaken 'additional efforts' to demonstrate willingness, which had been, however, not the case. [142]

Similarly, Haier's letter dated 16 January 2016 did not contain a sufficient declaration of willingness, since Haier had made the signing of a licence subject to the prior confirmation of the validity and infringement of the patent in suit by German courts [143] . Although the implementer is, in principle, allowed to preserve the right to contest the validity of a licensed patent after conclusion of an agreement, the Court held that a declaration of willingness cannot be placed under a respective conditionIbid, para. 95.. Besides that, requesting the production of claim charts for all patents of Sisvel's portfolio almost three years after the receipt of the notification of infringement was, according to the Court, an indication that Haier was only interested in delaying the negotiations until the expiration of the patent in suit [145] .

Furthermore, FCJ found that Haier's willingness to enter into a FRAND licence could also not be extracted from the counteroffers made during the infringement proceedings.Ibid, paras. 102 et seqq. The fact that these counteroffers were, in terms of scope, limited only to the patents asserted by Sisvel in court indicated that Haier had not seriously addressed Sisvel's request for a worldwide portfolio licence. [147] Given that it had more than sufficient time to examine Sisvel's portfolio, one could expect from Haier to provide substantive grounds for such 'selective licensing'. [147]

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

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

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

SEP holder's licensing offer

Having found that Haier had not sufficiently demonstrated willingness to obtain a FRAND licence, the Court did not examine the FRAND-conformity of Sisvel's licensing offers to Haier in the present case [155] . According to FCJ, this question is not relevant, when the implementer has not adequately expressed willingness to sign a FRAND licence.Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.

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

C. Other important issues

Patent ambush

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

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

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

Damages

Finally, the Court found that Sisvel's damage claims were given on the merits. Negligence establishing Haier's liability for damages was given: The implementer is, in principle, obliged to make sure that no third party rights are infringed, before starting manufacturing or selling products, which Haier had not done. [162]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [163] The SEP holder is entitled to full damages, unless the implementer can assert an own counterclaim, requesting to be placed in the position, in which it would have been, in case that the SEP holder had fulfilled the obligations arising from its dominant market position. [162] An implementer is, however, entitled to such (counter)claim, only when it adequately expressed its willingness to enter into a licence, which had not been the case here.77

  • [103] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 144/14 (UMTS-related patent) and Case No. 4a O 93/14 (GPRS-related patent).
  • [104] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [105] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 65/15 (UMTS-related patent) and Case No. I-15 U 66/15 (GPRS-related patent).
  • [106] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18.
  • [107] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
  • [108] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by ).
  • [109] Ibid, paras. 10-43.
  • [110] Ibid, para. 44.
  • [111] Ibid, paras. 48 et seqq.
  • [112] Ibid, para. 49.
  • [113] Ibid, para. 52.
  • [114] Ibid, para. 53.
  • [115] Ibid, para. 54.
  • [116] Ibid, para. 55.
  • [117] Ibid, para. 84.
  • [118] Ibid, paras. 86 et seqq.
  • [119] Ibid, para. 57.
  • [120] Ibid, para. 58.
  • [121] Ibid, para. 59.
  • [122] Ibid, para. 60.
  • [123] Ibid, para. 62.
  • [124] Ibid, para. 61.
  • [125] Ibid, para. 63.
  • [126] Ibid, para. 65.
  • [127] Ibid, para. 68.
  • [128] Ibid, paras. 66 and 68.
  • [129] Ibid, para. 69.
  • [130] Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [131] Ibid, paras. 70 and 71.
  • [132] Ibid, para. 71.
  • [133] Ibid, para. 72.
  • [134] Ibid, para. 73.
  • [135] Ibid, para. 74.
  • [136] Ibid, para. 76.
  • [137] Ibid, para. 77.
  • [138] Ibid, paras. 79 et seqq.
  • [139] Ibid, para. 83.
  • [140] Ibid, para. 87.
  • [141] Ibid, paras. 88 et seqq.
  • [142] Ibid, para. 89.
  • [143] Ibid, paras. 93 et seqq.
  • [144] Ibid, para. 95.
  • [145] Ibid, paras. 96-99.
  • [146] Ibid, paras. 102 et seqq.
  • [147] Ibid, para. 102.
  • [148] Ibid, paras. 108 et seqq.
  • [149] Ibid, para. 116.
  • [150] Ibid, para. 118.
  • [151] Ibid, paras. 124 et seqq.
  • [152] Ibid, para. 124.
  • [153] Ibid, para. 125.
  • [154] Ibid, para. 126.
  • [155] The Court had, however, undertaken such analysis in its earlier decision between the same parties dated May 2020. See Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17, especially paras. 76-81 and 101 et seqq.
  • [156] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.
  • [157] Ibid, para. 56.
  • [158] Ibid, paras. 127 et seqq.
  • [159] Ibid, para. 130.
  • [160] Ibid, para. 131.
  • [161] Ibid, paras. 131 et seq.
  • [162] Ibid, para. 135.
  • [163] Ibid, paras. 134 et seqq.

Updated 7 四月 2021

Sisvel v Wiko

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

A. Facts

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

The defendants are two companies that are part of the Wiko group (Wiko). [164] 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 [165] (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 [166] .
 

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. [167]

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. [168] 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. [169]
 

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. [170]

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. [171] 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. [172] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [172] Detailed technical or legal analysis of the infringement allegation is not required. [172] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [172] If the patent holder offers a portfolio licence, respective extended information duties occur. [172]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [173] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [174] 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. [173]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [175] . 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. [176]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [177] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [177] . The respective declaration must be 'serious and unconditional'. [177]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [177] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [177]

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. [178] 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. [179] 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. [179]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [180] of the Court of Justice of the EU (CJEU). [181] 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. [182]

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. [183] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [183] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [183] 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. [183]

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. [184] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [185] 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. [186] 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). [187]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [188] 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) [189] . It also demanded further claim charts in February 2018, years after the action was filed. [190]

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. [191] 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. [192] 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. [193]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [194] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [194] 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. [195] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [195] 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. [196] 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 [196] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [196]

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'. [197] 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. [198] 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. [199]

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. [200] The SEP holder's FRAND commitment does not give rise to such obligation. [200] 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. [200] 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. [201]

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. [201] 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. [202] 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. [203]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [204] 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. [205] 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. [206] 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. [207]

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. [208] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [208]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [209] 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. [210] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [210]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [211] 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. [212]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [213] 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. [213] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [214]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [215] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [216] 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. [217]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [218]

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. [219]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [220] 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. [221] 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. [222] 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. [223]
 

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. [224] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [224] 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. [224] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [224]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [225] . 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. [226] 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. [227]

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. [228]

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 [229] . [230] 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. [231]
 

  • [164] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
  • [165] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
  • [166] 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.
  • [167] Ibid, para. 289.
  • [168] Ibid, paras. 284 et seqq.
  • [169] Ibid, para. 287.
  • [170] 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.
  • [171] Ibid, paras. 292 et seqq.
  • [172] Ibid, para. 293.
  • [173] Ibid, para. 297.
  • [174] Ibid, paras. 297 et seq.
  • [175] Ibid, para. 299.
  • [176] Ibid, para. 299 and paras. 320 et seqq.
  • [177] Ibid, para. 301.
  • [178] Ibid, para. 302.
  • [179] Ibid, para. 303.
  • [180] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
  • [181] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
  • [182] Ibid, para. 304.
  • [183] Ibid, para. 305.
  • [184] Ibid, paras. 321 et seqq.
  • [185] Ibid, para. 321.
  • [186] Ibid, para. 322.
  • [187] Ibid, paras. 323 et seq.
  • [188] 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).
  • [189] Ibid, paras. 325, 328 and 331.
  • [190] Ibid, para. 327.
  • [191] Ibid, paras. 333 et seqq.
  • [192] Ibid, paras. 334 and 338.
  • [193] Ibid, paras. 337 and 341 et seqq.
  • [194] Ibid, para. 330.
  • [195] Ibid, para. 342.
  • [196] Ibid, para. 307.
  • [197] Ibid, para. 308.
  • [198] Ibid, paras. 308 and 310.
  • [199] Ibid, para. 309.
  • [200] Ibid, para. 310.
  • [201] Ibid, paras. 311 et seqq.
  • [202] Ibid, paras. 311 and 313 et seqq.
  • [203] Ibid, paras. 316 et seqq.
  • [204] Ibid, para. 352.
  • [205] Ibid, para. 353.
  • [206] Ibid, paras. 354 et seqq.
  • [207] Ibid, para. 358.
  • [208] Ibid, para. 359.
  • [209] Ibid, para. 360.
  • [210] Ibid, para. 361.
  • [211] Ibid, para. 362.
  • [212] Ibid, para. 363.
  • [213] Ibid, paras. 365 et seqq.
  • [214] Ibid, paras. 367 et seqq.
  • [215] Ibid, para. 366.
  • [216] Ibid, para. 344.
  • [217] Ibid, para. 346.
  • [218] Ibid, paras. 379 et seqq.
  • [219] Ibid, para. 311.
  • [220] Ibid, paras. 379 et seqq.
  • [221] Ibid, para. 380.
  • [222] Ibid, para. 378.
  • [223] Ibid, para. 384.
  • [224] Ibid, para. 348.
  • [225] Ibid, para. 389.
  • [226] Ibid, paras. 389 et seq.
  • [227] Ibid, para. 391.
  • [228] Ibid, paras. 260 et seqq.
  • [229] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [230] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
  • [231] Ibid, para. 395.