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 17 一月 2018

Sisvel v Haier

OLG Düsseldorf
30 三月 2017 - Case No. I-15 U 66/15

A. Facts

The claimant is the owner of European patent EP B1, allegedly covering data transmission technology under the GPRS standard. The defendants produce and market devices using the GPRS standard. On 10 April 2013, the claimant made a commitment towards ETSI by declaring to grant a license on FRAND terms regarding, inter alia, patent EP B1. In various letters and meetings between 2012 and 2015, the claimant informed the parent companies of the defendants about its patent portfolio and made an offer, but no licensing agreement was entered into. These interactions took place before the CJEU handed down its Huawei v. ZTE ruling in July 2015. On 3 November 2015, the District Court granted an injunction order. [19] The District Court also held that the defendants were liable for compensation in principle and ordered them to render full and detailed account of its sales. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

The defendants lodged an appeal with the Higher Regional Court of Düsseldorf. They argued, inter alia, that the District Court had not taken into account the procedural requirements set out by the CJEU in the decision Huawei v. ZTE [20] and that the claimant had not made a license offer on FRAND conditions. [21] The Higher Regional Court of Düsseldorf partially granted the appeal. It held that the defendants were under an obligation to render accounts and that they owed compensation in principle. [22] However, it held that the defendants were under no obligation to recall and remove the products from the relevant distribution channels because the claimant was in breach of its obligations under EU competition law (‘kartellrechtlicher Zwangslizenzeinwand’). [23] The Higher Regional Court did not have to decide about the injunction order because the parties had agreed to settle the matter in this regard (the patent had expired in September 2016). [24]

B. Court’s reasoning

1. Market Power

The Higher Regional Court held that the claimant was a dominant undertaking within the meaning of Art 102 TFEU. [25] In the eyes of the court, proprietorship of an SEP does not automatically constitute a dominant market position because not all SEPs necessarily influence competition in the downstream product market. [26] Rather, it needs to be ascertained whether or not market dominance exists in respect of each SEP individually. A dominant market position exists, for example, if it would not be possible to successfully market a competitive product without using the respective SEP, or if compatibility and interoperability under the standard could not be guaranteed. In contrast, a dominant position does not exist if the technology covered by the SEP is only of little importance for consumers in the relevant market. [26] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [27] because the patent in question was related to data transfer, an essential function of the GPRS standard. [28]

2. Notice of Infringement

The Higher Regional Court held that the claimant had given proper notice of infringement under the CJEU requirements. According to the court, the procedure set out by the CJEU in the Huawei v. ZTE ruling applied to transitional cases (i.e. proceedings that had commenced before the CJEU decision, but where the decisions were handed down after). [29] The District Court had wrongfully assumed that the Huawei v. ZTE principles did not apply to the case at hand. CJEU decisions pursuant to Art 267 TFEU apply ab initio (‘ex tunc’) and thus to transitional cases. [30] The Higher Regional Court argued that the Huawei v. ZTE case itself had been of a transitional nature and that the CJEU had been aware of the diverging principles created by the German Federal Court of Justice in the Orange Book Standard decision in 2009. [30] Nevertheless, the CJEU had not distinguished between transitional and ‘new’ cases. As a consequence, the claimant was under an obligation to notify the defendants of the infringement. The written correspondence between the parties from 2012 and 2013 met this requirement [31]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [32] The claimant can reasonably expect that the parent company will pass on the respective information to all subsidiaries that are active on the relevant product markets. Requiring the claimant to give additional notices to the subsidiaries would be an unjustified formality (‘bloße Förmelei’). [32]

3. The Defendant’s Willingness to Enter into a License Agreement

As a consequence, the defendants were under an obligation to declare their willingness to enter into a license agreement on FRAND terms. [33] Several months had passed between the notice of infringement and the defendants’ declaration of willingness. However, the defendants had made it clear in an email from December 2013 that they were willing to enter into a license agreement. In the eyes of the Higher Regional Court, this was sufficient because there was ample time between this declaration and the commencement of proceedings in 2014.

In the further course of the negotiations, the rejection of certain license terms by the defendant was not necessarily an indicator for general unwillingness. [34] The defendant’s willingness needs to be seen in the overall context of the case. Unwillingness would be demonstrated only if the defendant definitively and finally rejects the claimant’s offers (the ‘last word’). [34] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [34]

4. The SEP Owner’s Licensing Offer and the Standard Implementer’s Reaction

The Higher Regional Court held that the District Court had been incorrect to leave open the question as to whether the claimant’s offer had been FRAND. [35] The Higher Regional Court took the view that the CJEU had established an intricate system of consecutive actions that the parties must take. A claimant needs to make an offer on FRAND terms only if the defendant declared its willingness to enter into a license agreement on FRAND terms. Similarly, a defendant is under an obligation to make a counter-offer on FRAND terms only if the claimant made an offer on FRAND terms. [36] According to the Higher Regional Court, this view flows from the wording of the Huawei v. ZTE ruling that relates the content of offer and counter-offer (‘such an offer’; ‘responded to that offer’). [36] An SEP owner who has given a commitment to an SSO to offer FRAND licenses can be expected to make a FRAND offer that can reasonably be accepted by the defendant. In addition, a defendant needs to be able to assess whether the conditions of the claimant’s offer are FRAND. Requiring a defendant to make a FRAND counter-offer no matter what the claimant had offered earlier would be a contradiction of this basic proposition of the Huawei v. ZTE ruling. [36] Thus, it was necessary to have a decision in respect of the conditions of the claimant’s licensing offer.

The Higher Regional Court held that the claimant’s licensing offer did not meet FRAND requirements [37] because it discriminated against the defendants. [38] The court reiterated that infringement courts cannot limit their assessment to a summary review of whether the conditions were not evidently non-FRAND. Rather, infringement courts need to make a full assessment of the license conditions. [39]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [40] SEP owners have discretion regarding the license fees that they charge. [41] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [42] Further, license conditions can be abusive only if they are significantly different between licensees. [42] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [43] The burden of proof for such substantially unequal treatment lies with the defendant, [44] whilst the onus is on the claimant to prove that this unequal treatment is justified. [44] However, as the defendant will typically not have the necessary information, the claimant is under an obligation to provide information as to which competitors have been granted licenses and on what terms. [44] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [45] without having a proper justification. [46] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [47] or that these discounts were a result of the particularities of the case. [48]

  • [19] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
  • [20] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 32.
  • [21] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
  • [22] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
  • [23] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
  • [24] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
  • [25] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
  • [26] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
  • [27] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
  • [28] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
  • [29] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
  • [30] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
  • [31] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
  • [32] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
  • [33] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
  • [34] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
  • [35] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
  • [36] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
  • [37] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
  • [38] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
  • [39] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
  • [40] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
  • [41] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
  • [42] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
  • [43] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
  • [44] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
  • [45] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
  • [46] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
  • [47] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
  • [48] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.

Updated 26 一月 2017

Saint Lawrence v Deutsche Telekom

曼海姆地区法院
27 十一月 2015 - Case No. 2 O 106/14

  1. Facts
    Since 28 August 2014, Claimant, a non-practicing entity established under German law, is registered as the current proprietor of the European patent EP 1.125.284 B1, originally granted to applicant “V” (Voiceage Corporation). Whether “V” validly transferred the patent to Claimant is disputed between the parties. Defendant is a company active in the telecommunications sector and which markets AMR-WB-based devices. The patent has been found to be essential to ETSI’s AMR-WB standard by IPEC. After the adoption (“freeze”) of AMR-WB by ETSI on 10 April 2001 “V”, who joined ETSI only after the standard had been set, repeatedly—on 29 May 2001, 26 October 2004 and 7 January 2010—declared its readiness to grant licenses on FRAND terms for the respective patent.
    After initiating the present action—Defendant having been served with the claim on 7 August 2014—Claimant informed Defendant by letter as of 31 July 2014 (including a copy of the statement of claims as of 23 July 2014) that it was ready to grant licenses on FRAND terms for the patent-in-suit and five other German patents allegedly used by Defendant. Inviting Defendant to discuss such a licensing agreement Claimant offered, in addition, to communicate a draft licensing agreement by letter as of 9 December 2014. Defendant did not show any interest in acquiring a license regarding the patent-in-suit.
    Prior to the infringement action, Claimant neither tried to contact nor to make a licensing offer to Defendant’s supplier “H”(HTE) which, knowing about the lawsuit since August 2014, acted as an intervener in the present proceedings. Subsequent to Defendant’s third-party notice, “H” started licensing negotiations with Claimant on 9 December 2014. After “H” had signed a non-disclosure agreement provided by Claimant on 22 December 2014, Claimant submitted a draft licensing agreement on 12 January 2015, being corrected on 26 January 2015. Talks took place on 9 February 2015. By letter as of 23 February 2015 “H” made a supplemented proposal for the determination of the licensing conditions. In an e-mail as of 6 March 2015 “H” declared its willingness to take a license for Germany alone and specified conditions. As a reaction to Claimant’s offer as of 25 March 2015 concerning a worldwide license “H” submitted, on 2 April 2015, a counter-offer that was limited to Germany and suggested third party determination of royalties by the High Court of England and Wales. While Claimant rejected the counter-offer by letter as of 19 April 2015, “H” declared to adhere to its offer by letter as of 8 June 2015. On 3 September 2015 “H” sent an additional letter according to which a bank guaranteed, under certain conditions, payment of royalties for past use of the relevant patents in Germany. As Claimant criticized the letter as incomprehensible by e-mail of 13 September 2015, Defendant subsequently (inter alia by submitting documents to the court on 23 September 2015) explained in greater detail how the royalties were to be calculated.
  2. Court’s reasoning
    1. Market power and notice of infringement
      The court finds, in any case, no abuse of (potential) market power, as H behaved tactically motivated causing delay and made its own offers linked to unacceptable conditions. However, the court leaves open the questions (1) of whether the SEP conveyed actual market power to Claimant, (2) of whether—even absent actual market dominance—the FRAND declaration subjected Claimant to the conduct requirements for a market dominant SEP proprietor, (3) of whether Claimant is to be treated as if it had made the FRAND declaration itself, and (4) of whether a refusal to grant FRAND licenses to Defendant’s device suppliers entitled Defendant to a FRAND defense regardless of its own readiness to take a license. [49] The court made however clear that enforcing the right of injunction is not a misuse when the infringer, even after the complaint has been raised and despite a reasonable timeframe, does not show any interest in getting a license.
      As regards the Huawei requirement to alert the standard user of the infringement, the court focused on different aspects. Since, in the present case, Defendant refrained from expressing its willingness to conclude a licensing agreement on FRAND terms it was left undecided whether Claimant complied with its obligation to notify prior to the initiation of court proceedings by sending, after bringing the action but before the statement of claims was served to Defendant, a letter from which Defendant could recognize that an action had already been brought.
      The Mannheim court did also not determine whether Claimant, in order to avoid a violation of Article 102 TFEU, had to inform “H” about the patent infringement because the latter learned or could have easily learned about the possible violation of the SEP during a phone call with Defendant in August 2014. [50] However, “H” did not sufficiently express its willingness to conclude a licensing agreement on FRAND terms because it took “H” more than three months to submit a license request after it had become aware of the court action. “H” could have objected a violation of Article 102 TFEU if it had expressed such willingness and complied with the subsequent Huawei obligations. However, “H” failed to do so also because it refrained from submitting a satisfying counter-offer. [51]
    2. The SEP owner’s licensing offer
      The court seems to favor FRAND-compatibility of worldwide licenses as it clarifies that limiting the counter-offer to Germany was “unacceptable” but does not decide on the issue. Also, the court left undecided whether the royalty rate offered by Claimant satisfied FRAND. [52]
    3. The standard implementer’s reaction
      Considering the subsequent conduct obligation of the standard user, the district court found that a FRAND counter-offer has to be submitted irrespective of whether the preceding licensing offer made by the SEP proprietor itself is FRAND. In order to trigger the counter-offer obligation it is sufficient that the licensing offer contains—as in the present case—all information, in particular regarding royalty calculation, which is necessary for Defendant to submit a counter-offer corresponding to FRAND terms. The Huawei obligation to diligently respond does not merely arise where a licensing offer is FRAND but it has to be considered as an expression of the sincere willingness of Defendant to conclude a licensing agreement. If such willingness is given, the patent proprietor will not be allowed to present a subsequent FRAND licensing offer after the initiation of proceedings. [53]
      The court then analyzed whether Defendant’s counter-offer met the ECJ requirements in terms of content, but left it undecided whether a limitation to Germany could be in compliance with FRAND terms. It denied the existence of a “specific” counter-offer in the present case because the amount of the royalty was not specified in the document itself but was intended to be determined by an independent third party. [54] In consequence, “H” could not fulfill its obligation to provide appropriate security because it was not possible to anticipate which amount of royalty would have been stipulated by the “independent third party”. [55]
  3. Other important issues
    In the course of licensing negotiations, the standard user is neither prevented from challenging validity, standard-essentiality or effective use of the patent in question nor to reserve its right to do so. [56]
    As regards ownership and the transfer of the patent from the original patent proprietor to the non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes the presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [57]
    No patent ambush-defense based on § 242 BGB could be raised. As the court assessed in a detailed, torts-based analysis, [58] Defendant and Intervener could establish neither collusion of “V” and “N” (a participant in the setting of the AMR-WB standard) nor bad faith of “N” regarding “V” ’s patents. Hence, non-declaration by “N” did not amount to a patent ambush. Nor could non-declaration by “V” constitute a patent ambush since “V” was no member of ETSI—and, hence, not bound by a duty to disclose resulting from ETSI’s IP policy—when the AMR-WB standard was being set. Furthermore, Defendant and Intervener could not show why they should have been adversely affected by “V” ’s alleged violation of the ETSI IPR Policy, given that Claimant had declared its willingness to grant a license on FRAND terms. [59] In particular, they could not substantiate that a different form of the standard, avoiding “V” ’s patents, would have been set, had the standard-setting participants known about these patents. [60] Given these deficiencies in the attempt to establish a patent ambush the court left open whether such an ambush would result in an obligation to grant a royalty free- or “only” a FRAND license but indicated to favor the FRAND license-sanction. [61]
  • [49] Case No. 2 O 106/14, para. 133
  • [50] Case No. 2 O 106/14, para. 139-144
  • [51] Case No. 2 O 106/14, para. 146-149
  • [52] Case No. 2 O 106/14, para. 152-153
  • [53] Case No. 2 O 106/14, para. 153-160
  • [54] Case No. 2 O 106/14, para. 158-164
  • [55] Case No. 2 O 106/14, para. 167-169
  • [56] Case No. 2 O 106/14, para. 146
  • [57] Case No. 2 O 106/14, para. 78-80
  • [58] Cf. for details LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 119-131
  • [59] Case No. 2 O 106/14, para. 118-131
  • [60] Cf. LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 131, i.a. on the mechanism of “blind selection” among technological alternatives, (initially) irrespective of existing patents and their ownership situation.
  • [61] Case No. 2 O 106/14, para. 198

Updated 20 二月 2018

TQ Delta LLC v Zyxel Communications, [2017] EWHC 3305 (Pat)

英国法院判决
21 十一月 2017 - Case No. HP-2017-000045

A. Facts

The Claimant is holder of two patents declared as essential to the implementation of the DSL standard under the relevant policy (ITU Recommen­dations). According to this policy he is required to license these patents on Fair, Reasonable and Non-Discriminatory (FRAND) terms. The Defendants manufacture and sell various types of equipment complying with the DSL standard.

The parties were unable to reach an agreement on a worldwide portfolio license. The Claimant argued that the Defendants followed a “hold-out” strategy by trying to delay negotiations and litigation as long as possible, in order to avoid royalty payments.

The actions brought before the High Court of Justice of England and Wales (EWHC) involve, on the one hand, the technical issues of validity, essentiality and infringement (technical trials) and, on the other hand, non-technical issues regarding licensing on FRAND terms (non-technical trial).

The parties agreed that the technical trials should be tried separately from, and before, the non-technical trial. After holding a case management conference, the court complied with the parties’ agreement to hold the technical trials first. The court, however, refrained from ordering the stay of the non-technical trial until the completion of the technical trials. Instead, the court allowed it to go ahead.

B. Court’s reasoning

In light of both the decision of the European Union Court of Justice in the matter Huawei v ZTE and the recent decision of the EWHC in the matter Unwired Planet v Huawei the court questioned the practice it followed so far, to hold FRAND related trials after technical trials.

In the court’s opinion, particularly if a global license for a global portfolio is in dispute between the parties, it is worth considering whether the prioritization of the trials should be altered, so that the non-technical trial comes first. If the defendant (potential infringer) wishes to argue that it does not need to take any license under any of the patents in suit, it is not compelled to do so. In this case, however, the defendant risks that it will, subsequently, be injuncted in infringement proceedings.

To justify its decision not to stay the non-technical trial, the Court referred to EWHC’s decision in the matter Unwired Planet v Huawei and pointed out, that the longer these proceedings are postponed, the longer their objective from the Claimant's perspective is frustrated, that is to obtain appropriate relief by way of injunction and/or financial compensation.

C. Other issues

Although the court did not rule on Claimant’s allegation that the Defendants pursued a “hold out” strategy, it made clear – again under reference to the matter Unwired Planet v Huawei that if that is the case, then the Defendants face the risk of being injuncted, if they should be unsuccessful in either of the technical trials.


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, [62] 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. [63] The court declared the Huawei rules applicable to claims for the recall of products. [64] 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. [65] 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. [66] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [67] 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. [68] 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. [69] 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. [70] 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. [71] 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. [72] 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. [73] 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. [74] 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. [75]
    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. [76] Whether the Intervener satisfied the ECJ criteria was left undecided. [77] 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. [78] 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. [79] 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. [80] 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. [81] 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. [82] 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. [83] 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. [84]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [85] 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. [86] 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. [87]
  • [62] 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.
  • [63] Case No. 4a O 73/14, para. 184
  • [64] Case No. 4a O 73/14, para. 187
  • [65] Case No. 4a O 73/14, para. 195 et seq.
  • [66] Case No. 4a O 73/14, para. 208-210
  • [67] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [68] Case No. 4a O 73/14, para. 193
  • [69] Case No. 4a O 73/14, para. 270 et seq.
  • [70] Case No. 4a O 73/14, para. 222 et seq.
  • [71] Case No. 4a O 73/14, para. 225 et seq.
  • [72] 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.
  • [73] 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.
  • [74] Case No. 4a O 73/14, para. 256 et seq.
  • [75] Case No. 4a O 73/14, para. 279 et seq.
  • [76] Case No. 4a O 73/14, para. 214-220
  • [77] Case No. 4a O 73/14, para. 214-220; 278
  • [78] Case No. 4a O 73/14, para. 266
  • [79] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [80] Case No. 4a O 73/14, para. 264
  • [81] Case No. 4a O 73/14, para. 291 et seq.
  • [82] Case No. 4a O 73/14, para. 278
  • [83] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [84] Case No. 4a O 73/14, para. 304
  • [85] Case No. 4a O 73/14, para. 189
  • [86] Case No. 4a O 73/14, para. 309-313
  • [87] Case No. 4a O 73/14, para. 317 et seq.

Updated 26 一月 2017

Pioneer v Acer

曼海姆地区法院
8 一月 2016 - Case No. 7 O 96/14

  1. Facts
    Claimant owns the patent EP 1 267348, allegedly essential to the DVD standard and administered with regard to its licensing by the patent pool “A”. Early in 2013 “A” and the Defendant’s group parent were in contact regarding “A” ’s DVD licensing activity, but no concrete notice of infringement was made and no licensing negotiations ensued. After having been sued for patent infringement Defendant submitted, on 6 October 2014, an offer to license the patent-in-suit for Germany at FRAND conditions, with the exact royalty rate to be determined by Claimant pursuant to § 315 German Civil Code. Furthermore, Defendant declared to be willing to negotiate a portfolio license for all German patents of Claimant and, in case the negotiations were to fail, to have the licensing conditions determined by a state court or arbitration tribunal. In order to indicate what Defendant considered to be a FRAND royalty rate Defendant submitted an expert opinion. As of 28 November 2014, Claimant proposed to modify the conditions to the effect that Defendant’s group parent was supposed to take a worldwide portfolio license comprising all Claimant’s portfolio patents administered by “A”. Claimant made a (perhaps: additional) FRAND declaration with regard to the patent and informed Defendant thereof in December 2014. After Defendant had rejected this offer, Claimant offered, on 13 March and 13 April 2015, a worldwide portfolio license to Defendant’s group parent company. To the offer were added claim charts for two pool patents, as well as information on how Claimant deduced the royalty from the overall royalty rates of the “A”-patent pool. On 5 May 2015, Defendant’s group parent requested claim charts regarding all patents to be licensed as well as further information on royalty calculation. Claimant sent, on 7 August 2015, claim charts for five additional patents declaring its willingness to provide further information as soon as constructive technical discussions would be taken up. In a filing to the court as of 20 November 2015, Claimant explained its royalty calculation in greater detail and submitted an expert opinion on the issue.
  2. Court’s reasoning
    1. General meaning of the Huawei framework and applicability to transitory cases
      As to the court’s general take on the Huawei rules cf. LG Mannheim, 29 January 2016 - 7 O 66/15 (above). Where an action for prohibitory injunction and recall of products has been brought before the ECJ handed down its ruling it has, in the opinion of the court, no negative effect on the action if Claimant fulfills its Huawei conduct obligations only after filing the lawsuit. [88] According to the extensive analysis undertaken by the court this is because, inter alia, the SEP proprietor could not be expected to comply with the – then future and unknown – conduct requirements established by Huawei but rather with the legal framework set by the German Federal Court (BGH) in Orange Book. Hence, a proprietor’s conduct that respected Orange Book but deviated from Huawei cannot be taken to signal inappropriate economic goals or lack of willingness to grant FRAND licenses. Furthermore, it seems more in line with the ECJ’s core intention of furthering successful licensing negotiations if the parties get the chance to perform their Huawei conduct obligations even though litigation is already underway.
      Where, however, the action is brought after the Huawei ruling a violation of the conduct requirements established therein bars—as a matter of substantive law, not of procedural law—Claimant from enforcing its patent-based rights to prohibitory injunction or recall of products. [89] Although Claimant’s action will then be dismissed, Claimant is free to catch up on its Huawei obligations and re-file the action if the standard user fails to comply with Huawei.
    2. Market power and notice of infringement
      Leaving open whether Claimant was market dominant, the court formulates general considerations identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above). The court doubts whether the initial contact between the patent pool “A” and Defendant’s group parent qualifies as an appropriate notice of infringement. In any case, such notice has been given by and after bringing the infringement lawsuit. Claimant’s statement of claims, in particular, contained all information necessary. Producing the original document in which Claimant made its FRAND declaration or proving that a FRAND declaration has been properly made during the standard-setting procedure is not required as long as the SEP proprietor considers itself bound by a FRAND licensing obligation. Not least because the lawsuit had been suspended for several months and some more months elapsed between the ECJ’s Huawei ruling and the oral hearings in the case at issue, there was ample time for the standard user to fulfill its Huawei duties and negotiate a license unburdened by the pressure created by an impending prohibitory injunction. [90] Even if it were justified to request—the court seems to doubt this—claim charts for a sample of patents where a worldwide portfolio license is offered, Claimant would have met this obligation, in particular because Defendant did not communicate that or why it considered the sample insufficient. It was not necessary for Claimant to impart to Defendant a documentation of the standard at issue. [91]
    3. The SEP proprietor’s licensing offer
      The court’s general considerations are identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above): The court’s general understanding of the Huawei rules of conduct (cf. above) has a considerable impact on the way it intends to react to a SEP proprietor’s licensing offer: [92] The offer must specify the relevant conditions in a way that, in order to conclude a licensing agreement, the standard implementer has merely to state his acceptance of the offer. The calculation of the license fee, in particular, must be explained in a manner that enables the standard implementer to objectively assess its FRAND conformity. Even if the standard implementer disputes the FRAND character of the offer it is not the court’s business to determine whether the licensing conditions are actually FRAND. Neither is the SEP proprietor prohibited from offering conditions slightly above the FRAND threshold. A differing view of the parties on what constitutes FRAND is to be expected and provides no reason for cartel law-based intervention. An exploitative abuse of market power can, however, be present where the proprietor, after having made a FRAND declaration, offers conditions that are, under the circumstances of the case and without objective justification, manifestly less favorable (in an economic sense) than the conditions offered to other licensees. Correspondingly, the respective court is only required to determine, based on a summary assessment, whether the proprietor’s licensing offer evidently violates the FRAND concept.
      In casu the court considered Claimant’s offer as sufficient, [93] in particular because a worldwide license, granted to the parent of a group, corresponded to recognized commercial practice in the field. It was no evident FRAND violation to calculate the royalties based on the licensing conditions of the patent pool “A” and Claimant’s share in the patents of this pool. It was further appropriate to demand a lump sum for past use of the patents to be licensed without specifying (in the licensing offer) the exact amount for lack of accessible information on the extent of the use. The information provided by Claimant on how the royalties were calculated was deemed sufficient. It was not necessary to impart to Defendant licensing contracts concluded with other market participants since “A” ’s model contracts were accessible on the Internet and no circumstances indicated unequal treatment of licensees absent objective justification such as differing turnovers.
    4. The standard implementer’s reaction
      The court’s general considerations are identical to those in the decision LG Mannheim, 29 January 2016 - 7 O 66/15 (cf. above). In casu the court considered Defendant’s counter-offer to be evidently non-FRAND, mainly because the license would have—inappropriately, given the facts of the case and recognized commercial practice—been limited to Germany. [94] Furthermore, Defendant neither rendered account nor provided security for its use of the patent in the past. The fact that Defendant has—allegedly—terminated its use of the patent does not remove these obligations for past periods of use. [95] As the court explains in some detail, [96] an overall assessment of the conduct of the parties indicates that Defendant engaged in delaying tactics while Claimant was not trying to use the infringement action for extorting excessive royalties.
  3. Other important issues
    The court underlines that a SEP proprietor has to respect the Huawei rules of conduct only with regard to an action for prohibitory injunction or the recall of products (cf. LG Mannheim, 29 January 2016 - 7 O 66/15, above). Regarding claims for rendering of accounts it mentions, but does not decide the question whether the existence of a FRAND declaration has an impact on the content of such claims. [97]
    Even if the standard-setting at issue had—due to the lack of a timely FRAND commitment by Claimant—violated Art. 101 TFEU, this would not bar Claimant from enforcing its patents within the limits set by Art. 102 TFEU and the Huawei ruling. [98]
    Neither competition law nor the general principle of good faith required Claimant to primarily address entities that produce standard-implementing components of Defendant’s products. [99] On the contrary, Claimant was free to immediately demand the taking of a license from Defendant, all the more so because Defendant was not only engaged in marketing and selling third-party devices but also devices produced by Defendant’s group of companies using the standard-implementing components.
  • [88] Case No. 7 O 96/14, para. 84-107
  • [89] Case No. 7 O 96/14, para. 81-83
  • [90] Case No. 7 O 96/14, para. 109 et seq.
  • [91] Case No. 7 O 96/14, para. 114-117
  • [92] LG Mannheim, 29 January 2016 – Case No. 7 O 66/15, para. 58
  • [93] Case No. 7 O 96/14, para. 118-129
  • [94] Case No. 7 O 96/14, para. 131-133
  • [95] Case No. 7 O 96/14, para. 134 et seq.
  • [96] Case No. 7 O 96/14, para. 136-141
  • [97] Case No. 7 O 96/14, para. 142
  • [98] Case No. 7 O 96/14, para. 144 et seq.
  • [99] Case No. 7 O 96/14, para. 146

Updated 24 七月 2020

西斯维尔诉海尔

德国联邦法院
5 五月 2020 - Case No. KZR 36/17

A. 事实

原告西斯维尔(Sisvel)持有被声明为对实施某些无线通信标准而言(潜在)必不可少的专利(以下稱“标准必要专利”或“SEP”)。

被告是总部位于中国的海尔集团(Haier Group)的德国及法国子公司。海尔集团生产和销售符合GPRS标准的电子设备以及其他产品。

西斯维尔于2012年12月20日通知了海尔集团的中国母公司有关海尔集团对其所持有的标准必要专利的侵权使用行为。

西斯维尔提供了一项其所持有的专利组合中包含大约450项专利的清单,并表示西斯维尔愿意为这些标准必要专利向海尔提供许可。

西斯维尔于2013年4月10日向欧洲电信标准协会(ETSI)作出了承诺,表示愿意将其所持有的标准必要专利依照公平、合理且无歧视(FRAND)的条款和条件对标准实施人提供。

西斯维尔其后分别于2013年的8月和11月,向中国海尔进一步发送了更多包含与其许可计划相关信息等信息在内的信函。中国海尔仅在2013年12月时对西斯维尔回复,表示希望与西斯维尔进行“正式谈判”,并要求西斯维尔提供于此前沟通中其曾经提到过的有关折扣可能性的信息。

2014年8月,西斯维尔向海尔提出了许可要约,然而却在2014年9月遭到海尔拒绝。不久之后,西斯维尔于杜塞尔多夫地区法院(以下称“地区法院”)就其所持有的一项涵盖符合GPRS标准数据传输技术的专利(以下称“涉案专利”)向海尔提起了侵权诉讼。作为对此一行动的回应,海尔于2015年3月向德国联邦专利法院提起了确认涉案专利无效的诉讼。

地区法院于2015年11月3日对海尔发出了禁令 [100] ,同时判令召回并销毁涉案侵权产品。地区法院更进一步的确认了海尔于本案中的损害赔偿责任,并命令海尔就其侵权产品的销售向西斯维尔提供完整和详细的资料并开立担保帐户。

海尔对该判决提起上诉,并且要求杜塞尔多夫地区高级法院(以下称“上诉法院”)判决中止对地区法院所核发的前述禁令的执行。上诉法院于2016年1月做出了相应的判决 [101]

在上诉程序进行过程中,海尔所提出的各项主张之一,即是其认为,由于该判决在西斯维尔向海尔提起侵权诉讼之后才作成,地区法院于判决之时未能就欧洲联盟法院于2015年7月在华为诉中兴案判决中(以下称“华为判决”)对标准必要专利持有人所施加的行为要求进行充分考虑 [102] 。并且在上诉法院诉讼进行的过程中,海尔于2016年1月16日进一步表示,其愿意在德国法院最终确认了涉案专利的有效性以及对涉案专利的侵权行为存在的前提下,向西斯维尔取得FRAND许可。 2016年3月23日,海尔向西斯维尔发送了另一封信函称其立场维持不变。此外,海尔还向西斯维尔提出获取有关西斯维尔所持有的所有专利的权利要求对照表以及与许可费率计算相关的更多信息的要求。 西斯维尔于2016年12月再度向海尔提出了进一步的许可要约,然而仍然遭到海尔拒绝。

在2017年3月30日的判决中,上诉法院支持了海尔于本案上诉中的部分主张 [103] ,确认了海尔于本案中的损害赔偿责任及开立担保帐户的义务。然而,上诉法院认为,海尔并没有召回并销毁侵权产品的义务,因为西斯维尔并没有遵守华为判决中所要求的义务,特别是未能向海尔提出FRAND许可要约。由于涉案专利权利已于2016年9月到期失效,当事各方同意就禁令救济部分主张达成和解,因此上诉法院不需要再就此部分主张作出裁定。西斯维尔其后又对上诉法院的本案裁决提起上诉。

2017年10月,联邦专利法院在限缩了涉案专利的部分权利要求的情况下确认了其专利有效性 [104]

于2020年3月,德国联邦法院(以下称“联邦法院”或“法院”)在二审中基本上支持了联邦专利法院的此一判决决定 [105]

联邦法院于2020年5月5日做出的当前判决 [106] 中推翻了上诉法院的判决。联邦法院维持了地区法院于一审时对西斯维尔所提出的损害赔偿请求以及关于提供相关信息和开立担保帐户的各项请求所作出的裁决。有关西斯维尔召回并销毁侵权产品的请求,则仅限于海尔有权支配或其于2016年9月涉案专利到期失效前所生产或交付的产品。西斯维尔有关禁令救济的请求则因为该请求于此前上诉法院的诉讼过程中涉案专利已经到期失效而被撤回,故不受法院裁判决定。


B. 法院的论理

法院认为,涉案专利对于GPRS标准的实施而言具备标准必要性,并且遭受侵权 [107]

此外,法院认为,西斯维尔对海尔提起侵权诉讼的行为,并未构成对《欧洲联盟运作条约》(TFEU)第102条滥用市场支配地位的违反 [108] 。 在法院看来,西斯维尔已经履行了华为判决所要求的义务,在提起侵权诉讼之前将针对其所持有的标准必要专利的侵权使用行为向海尔进行通知。另一方面,海尔则未能履行其于华为框架下充分表达与西斯维尔达成许可协议意愿的义务。尽管此一事实对于本案而言已不再具有决定性,法院仍然表示其认为西斯维尔已经按照依照华为框架的相应要求向海尔提出了FRAND许可要约。

市场支配地位

法院裁定认为,西斯维尔具备《欧洲联盟运作条约》第102条涵义下的市场支配地位 [109]

联邦法院解释到,市场支配地位并不单纯因为享有专利所授与的独占权而形成 [110] ,因此,需要将许多因素共同纳入考量 [111] 。其中一个关键因素是相关市场。当一项专利对符合标准发展组织发展出的标准(或事实上的标准)而言具备技术上的必要性,并且在下游市场提供的产品中并没有可以替代该标准的技术时,与市场支配力评估相关的就会是能够提供该涉案专利许可的(独特的)市场 [112]

在此基础上,法院认定西斯维尔处于市场支配地位:涉案专利对于GPRS标准的实施而言具备标准必要性,并且不配备GPRS功能的手机无法在(下游)市场中竞争,因为不管是此前或者其后的各代标准都无法使其具备与之相同的功能 [113]

于此脉络下,联邦法院并没有采纳西斯维尔关于标准实施人相较于市场中商品和服务的购买者而言,通常处于较强势的谈判地位,因此标准必要专利持有者的市场支配地位事实上受到了限制的这一观点 [114] 。法院同意,与商品和服务的购买者不同,标准实施人即便在没有与专利持有人达成协议的情况下,依然能够取得生产符合标准的产品所需的受保护技术而处于有利的地位 [115] 。然而,法院认为,此一事实并不足以排除市场支配地位。标准必要专利持有人在许可谈判中对个别实施人的还价能力的程度与此问题并不相关 [116] 。专利持有人的结构性优势市场支配力授与其市场支配地位,而此一结构性优势市场支配力则来自于专利持有人具备通过执行排他性权利而将任何实施者从市场中排除的法律上能力 [117]

同样地,法院指出,华为判决对行使标准必要专利专利权时所施加的限制同样不会削弱市场支配地位 [118] 。法院认为,这些限制极大程度地弱化了标准必要专利持有人的谈判地位,因其并不能全面性地运用其在平等基础上进行谈判时所需的必要手段 [118] 。然而,这并不足以构成对专利持有人市场支配地位的挑战,即便是在实施人透过拖延谈判的进行直至该专利到期失效而可能涉及“反向专利挟持“的情况下 [118]

尽管如此,法院指出,西斯维尔的市场支配地位在涉案专利到期失效时便已经终止 [119] 。一旦标准必要专利人不再具有排除侵权产品进入(下游)市场的合法权力,则其将不再具备市场支配地位 [119]

滥用市场支配地位

与上诉法院相反的是,联邦法院在检视了当事各方的行为后,认为西斯维尔并没有滥用其市场支配地位 [120]

法院明确指出,标准必要专利持有人并非原则上被禁止行使其因持有专利而产生的排他性权利 [121] 。一项专利具备标准必要性此一事实,并不意味着专利持有人有义务容忍他人对其所持有的专利技术的使用,除非是因为其具有市场支配地位而允许或有义务允许他人对该专利技术的使用 [121] 。联邦法院认为,如果实施人不愿意按照FRAND条款取得许可,则不存在所谓允许使用标准必要专利的义务。专利持有人——即便是具有市场支配地位专利持有人——并没有“强迫“任何标准实施人取得许可的义务,尤其是因为其并没有主张签署许可协议的法律上权利 [122]

在这种背景下,法院指出了两个案例,在这两个案例中,标准必要专利持有人主张其排他性权利(要求禁令救济和/或召回并销毁侵权产品)的行为可能构成滥用市场支配地位:

  1. 实施人已经提出了专利持有人在不滥用其支配地位或不违反其无歧视义务的情况下便无法拒绝该条款的无条件许可要约(于此范围内,法院重申了其先前在“橙皮书标准案”中的裁决;判决日期: 2009年5月6日 – 案件号:KZR 39/06) [123]
  2. 实施人原则上有取得许可的意愿,然而标准必要专利持有人却未能遵守其支配地位所带来的“特殊责任”而做出充分的努力以促进协议的签署 [124]

侵权通知

是以,法院采纳了标准必要专利持有人有义务在提起侵权诉讼之前就针对涉案专利的侵权使用行为向实施人进行通知的观点 [125] 。联邦法院似乎认为,此项义务仅在实施人尚未意识到其构成侵权行为的情况下才会产生同上注, 段 73。 法院认为,如果专利实施人对于实施该标准即是一种未经许可而使用涉案专利说明书的行为“此一事实并不知情“,则专利持有人就必须针对专利侵权情况对其通知。

法院解释到,技术实施人原则上有义务在开展产品的制造或销售之前确保没有任何第三方的权利遭受侵害 [127] 。然而,此项工作通常具有很大的挑战性,特别是在信息和通信技术(ICT)领域中,一项产品可能会受到众多错综复杂的专利权影响 [127] 。因此,身为会定期对侵权状况进行检查的专利持有人,便有义务在发动诉讼程序之前,向实施人告知其对专利的使用情况,使实施人得以对是否需要按照FRAND条款获得许可进行评估,从而避免禁令的核发 [128]

在法院看来,通常情况下,对集团公司中的母公司发出各别的侵权通知便已经足够 [129] 。就内容而言,通知内必须指明遭到侵权的专利,并描述特定的侵权使用行为以及遭受侵害的实施例 [130] 。专利持有人不必要对侵权行为作出详细的技术与法律上分析,仅需要让实施人处于一个在专家和/或法律意见的协助下最终有能力对其被指控的侵权行为进行评估的地位即可 [130] 。一般来说,专利持有人依照实务上通常做法提出权利要求对照表就已经足够了(但不是强制性的) [130] 。 此外,联邦法院同时提到,在提供了有关被侵权的专利以及受到影响的标准等相关信息后,专利持有人可以合理期待实施人将于短时间内表明其所收到的信息并不足以对侵权行为进行评估 [131] 。这也适用于涉及多项专利和标准的情况 [131]

在考量过上述情况后,法院认为西斯维尔已经对海尔发出了适当的侵权通知。 该通知信函已于2012年12月20日发出,并且符合相关要求 [132]

取得许可的意愿

另一方面,考虑到海尔的行为,法院认为海尔并没有表现出其为愿意向西斯维尔取得FRAND许可的被许可人 [133] 。在这方面,联邦法院不同意前面上诉法院所做出的分析,并且得出了与上诉法院相反的结论。

法院认为,中国海尔对西斯维尔所发出的通知的首次回覆是迟延的,因为海尔花费了将近一年的时间(2012年12月至2013年12月)才做出回应 [134] 。一个花费数月时间才对侵权通知做出回应的实施人,其所发出的信号通常表明其对取得许可没有兴趣 [134] 。西斯维尔在2012年12月首次向海尔发出通知后才就涉案专利对欧洲电信标准协会作出FRAND承诺此一事实,并不会对评估及时性造成任何影响:在2012年12月20日所发出的信函中,西斯维尔已经表明其准备好要向海尔提供FRAND许可 [134] 。然而,有关虽然有所迟延但仍在侵权诉讼开始作出的回覆(如同本案中海尔于2013年12月所作出的答复)于评估各方是否遵守华为判决要求时是否应该被纳入考量范围中(如同本案上诉法院所推定的那样)此一问题,联邦法院并未做出决定 [135] 。在本案中,此问题并不相关,因为就海尔所做出的回覆内容而言,没有任何一项能够被视为已经充分表明其取得许可的意愿 [136]

在法院的眼中,实施人必须“清楚”且“明确”地表明其愿意依照“任何实际上符合FRAND的条款”与标准必要专利持有人达成许可协议(引用英格兰和威尔士高等法院2017年4月5日在无线星球诉华为案中所做出的判决[2017] EWHC 711(Pat)-Unwired Planet v Huawei) [137] 。实施人随后就有义务以“达成协议”为目标积极参与许可谈判 [137] 。相反地,仅仅是对侵权通知作出“表达愿意考虑签署许可协议“或”就是否以及在什么条件下取得许可提出质疑或进行谈判“的回覆是不够的 [137]

于此基础上,法院认为,海尔在2013年12月的回覆中仅表达了其希望进行“正式谈判“,并不足以表达其取得许可的意愿——该声明在上述标准下既不“清楚”也不“明确” [138]

同样地,联邦法院认为,海尔在2016年1月16日所发出的信函中也没有充分地表达其取得许可的意愿,因为海尔声明只在德国法院确认了涉案专利的有效性和侵权性的前提下才愿意签署许可协议 [139] 。尽管实施人原则上被允许在达成许可协议后保留对被许可专利的有效性进行挑战的权利,法院仍然认为,表达取得许可意愿的声明不能在带有附带条件的情况下作出 [139]

此外,联邦法院也认为,海尔于2016年3月23日发出的信函中同样没有充分地表达其取得许可的意愿。除了海尔并没有撤销上述不能被接受的条件外,法院还认为,海尔在收到侵权通知近三年以后才要求西斯维尔提供所有专利的权利要求对照表,这表明了海尔所感兴趣的只在不断拖延谈判的进行,直到涉案专利到期失效为止 [140]

由于本案中并不存在海尔明确表达其取得许可意愿的适当声明,法院并没有回答关于实施人于侵权诉讼已经被提起后是否有尚可能履行此项义务的问题 [141]

 

  • [100] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 93/14。
  • [101] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 13 January 2016, Case No. I-15 U 66/15。
  • [102] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [103] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 66/15。
  • [104] Federal Patent Court, judgment dated 6 October 2017, Case No. 6 Ni 10/15 (EP)。
  • [105] Federal Court of Justice, judgment dated 10 March 2020, Case No. X ZR 44/18。
  • [106] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17。(引自:https://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py? Gericht=bgh&Art=en&sid=3abd1ba29fc1a5b129c0360985553448&nr=107755&pos=0&anz=1)。
  • [107] 同上注, 段 9以下及段59。
  • [108] 同上注, 段 52。
  • [109] 同上注, 段 54。
  • [110] 同上注, 段 56。
  • [111] 同上注, 段 57 及以下。
  • [112] 同上注, 段 58。
  • [113] 同上注, 段 59 及以下。
  • [114] 同上注, 段 61。
  • [115] 同上注, 段 63。
  • [116] 同上注, 段 62。
  • [117] 同上注, 段 61 及以下。联邦法院认为,进入市场的障碍已经因为法律上相应的阻碍使任何公司在没有获得许可的情况下进入市场都是不合理的此项事实而形成,请参见段 63。
  • [118] 同上注, 段 64。
  • [119] 同上注, 段 65。
  • [120] 同上注, 段 67 及以下。
  • [121] 同上注, 段 69。
  • [122] 同上注, 段 70。
  • [123] 同上注, 段 71。
  • [124] 同上注, 段 72。
  • [125] 同上注, 段 73 及以下。
  • [126] 同上注, 段 73。 法院认为,如果专利实施人对于实施该标准即是一种未经许可而使用涉案专利说明书的行为“此一事实并不知情“,则专利持有人就必须针对专利侵权情况对其通知。
  • [127] 同上注, 段 74。
  • [128] 同上注, 段 74 及段 85。
  • [129] 同上注, 段 89。
  • [130] 同上注, 段 85。
  • [131] 同上注, 段 87。
  • [132] 同上注, 段 86 及以下。
  • [133] 同上注, 段 91 及以下。
  • [134] 同上注, 段 92。
  • [135] 同上注, 段 93及以下。
  • [136] 同上注, 段 94。
  • [137] 同上注, 段 83。
  • [138] 同上注, 段 95。
  • [139] 同上注, 段 96。
  • [140] 同上注, 段 98。
  • [141] 同上注, 段 97。

Updated 23 一月 2018

Unwired Planet v Huawei, [2017] EWHC 711 (Pat)

英国法院判决
5 四月 2017 - Case No. HP-2014-000005

A. Facts

The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue (EP (UK) 2 229 744, EP (UK) 2 119 287, EP (UK) 2 485 514, EP (UK) 1 230 818, EP (UK) 1 105 991, EP (UK) 0 989 712) relate to telecommunication network coding and procedures. [142] Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [143] In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents. This summary focuses on the non-technical trial addressed competition law issues, FRAND issues, injunctive relief and damages for past infringements. [144]

In April 2014 the claimant made an open offer to the defendant, a major international smartphone manufacturer, to grant a license in respect of the claimant’s entire global patent portfolio (containing SEPs and non-SEPs). The defendant refused the offer, contending that there was no patent infringement, that the patents were not essential, and that they were invalid. The defendant also argued that the offer was not FRAND and thus did not constitute an abuse of a dominant market position under Art. 102 TFEU. In July 2014 the claimant made a further offer, limited to the claimant’s SEPs. Again, the defendant refused, arguing that the license conditions were not FRAND. [145] In June 2015 both parties made further offers. These offers were the result of directions from the court. The claimant offered a worldwide portfolio license while the defendant wanted to limit the territorial scope to the United Kingdom. [146] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [147]

The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [148] The defendant was not prepared to take a license on FRAND conditions and the claimant was not in breach of competition law. Thus, the court held that a final injunction to restrain patent infringements should be granted. An injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 was granted on 7 June 2017. [149]

B. Court’s Reasoning

1. Market Power

The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [150] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [151] The claimant’s pleaded position was a non-admission of dominance rather than a denial coupled with a positive case to the contrary. It was the view of the court that this was insufficient to rebut the presumption. In particular, the claimant’s argument of countervailing buyer power was unconvincing because it had not been supported by a proper economic analysis. [152]

2. SEP Proprietor’s Licensing Offer

a. FRAND Declaration as Conceptual Basis

The court pointed out that that the FRAND undertaking also applied in the case that the SEP proprietor was not in a dominant position. It held that the FRAND undertaking operated as a practical constraint on a SEP owner’s market power. [153] The ETSI declaration made by the SEP proprietor is also the starting point for determining the FRAND rate. The underlying issue, which is discussed at length by the court, [154] is if such a declaration forms a contract and whether that contract can benefit third parties. The court acknowledged that the legal effect of this declaration, in particular its enforceability, is a controversial issue under French law. [155] However, the court reasoned that the FRAND declaration is an important aspect of technology standardisation. Holders of SEPs are not compelled to give a FRAND declaration. If they do, the undertaking would be enforceable and irrevocable due to public interest. [155]

The court applied a procedural approach to FRAND. It emphasised that FRAND describes not only a set of license terms, but also the process by which a set of terms are agreed. [156] It applies to both the SEP-holder and the implementer/defendant. In particular, this approach allows for starting offers that leave room for negotiation. On the other hand, making extreme offers and taking an uncompromising approach which prejudices fair, reasonable, and non-discriminatory negotiation is not a FRAND approach. [157] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [158]

b. ‘True FRAND Rate’

The court considered that there is only a single set of terms for a given set of circumstances that would meet FRAND conditions (‘true FRAND rate’). [159] This eliminates the so-called Vringo-problem, [160] i.e. if FRAND were a range there would be two different but equally FRAND offers. Thus, if the court would grant or not an injunction, it would be unfair for the alleged infringer or SEP holder respectively. [161]

The court was of the opinion that the true FRAND rate approach does not cause problems under competition law. Theoretically, if only one set of terms is truly FRAND, and if FRAND also represents the line between abusive and non-abusive conduct under Art. 102 TFEU, then every agreed SEP-licence could be at serious risk of being abusive. [162] However, the court took the view that FRAND-compliance and compliance with Art. 102 TFEU are not the same thing (the court pointed out that the CJEU in the Huawei ruling appears to equate an obligation to make a FRAND offer with compliance with Art 102 TFEU).Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154./span> Since Art. 102 TFEU condemns excessive pricing, [164] a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate. [164]

c. Discrimination

The court held that the correct approach is to start from a global rate as a benchmark and to then adjust this rate as appropriate. [165] It distinguished between two concepts of discrimination. First, the ‘general’ concept of non-discrimination describes an overall assessment of FRAND which can be used to derive the benchmark mentioned above. [166] It is based on the intrinsic value of the patent portfolio, but it does not depend on the licensee. The court held that this benchmark should be applied to all licensees seeking the same kind of license. [167]

Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [166] is a distinct concept that could be used to adjust license terms. However, the court held that the FRAND declaration does not introduce such a hard-edged non-discrimination concept. [168] If, contrary to the view taken by the court, the FRAND undertaking did include hard-edged non-discrimination, a licensee could only have the right to a lower rate granted to another licensee (i.e. a specific non-discrimination obligation resulting from the FRAND declaration) if the difference would otherwise distort competition between the two licensees. [167]

d. Territorial Scope of License

The court held that the defendant’s offer that was limited to UK licenses was not FRAND. In the court’s opinion country by country licensing is inefficient for goods such as mobile telecommunications devices that are distributed across borders. [169] It would also be inefficient to negotiate many different licenses and then to keep track of so many different royalty calculations and payments. No rational business would do this, if it could be avoided. [169] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [170] Further, it is common ground that the industry assesses patent families rather than individual patents within the family. Assessing portfolios on a family basis inevitably involved tying a patent in one jurisdiction with a patent in another. [171] Thus, according to the court, a worldwide license would not be contrary to competition law. As willing and reasonable parties would agree on a worldwide licence, the insistence by the defendant on a license which was limited to the UK was not FRAND. [172]

C. Other Important Issues

1. Comparable agreements and reasonable aggregate royalty rate

The court held that for determining the royalty rate, the evidence of the parties would be relevant, including evidence of how negotiations actually work in the industry. [173] Other freely-negotiated license agreements might be used as comparables. [174] This may be compared with a top down approach [175] can also be used in which the rate is set by determining the patentee’s share of relevant SEPs and applying that to the total aggregate royalty for a standard, but this may be more useful as a cross-check. [176] Royalty rates determined by other courts might be useful as persuasive precedents. However, in the eyes of the court, a license rate determined at a binding arbitration does not carry much weight as to what parties are usually paying. [173] License agreements must meet certain criteria to be comparable. [177] First, the licensor is the claimant. Second, the license agreement is recent. However, it is not necessary that the licensee is the defendant or a comparable company because different market participants have different bargaining powers, which is reflected in the negotiations and the resulting royalty rates. [177] Finally the court confirmed that a royalty based on the handset price was appropriate and implied a reasonable aggregate royalty rate of 8.8%of the handset price. The court found that the 8.8% was reasonable, in part, because the aggregate implied by either party’s case was higher (10.4% and 13.3%). [178]

2. Principles derived from Huawei v. ZTE

The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [179] In the eyes of the court, the ‘willingness to conclude a licence on FRAND terms’ refers to a willingness in general. The fact that concrete proposals are also required does not mean it is relevant to ask whether the proposals are actually FRAND or not. If the patentee complies with the procedure as set out by the CJEU, then bringing a claim for injunction is not abusive under Art 102. But even if sufficient notice is given, bringing a claim can constitute an abuse because complying with the procedure does not mean that a patentee can behave with impunity. In other words, there might be other aspects that make the claim abusive. Conversely, bringing such a claim without prior notice will necessarily be abusive.

Significantly, the court held, the legal circumstances of this case differ from the circumstances assumed by the CJEU in a crucial respect. A FRAND undertaking can be effectively enforced irrespective of Art 102. The defendant does not need Art 102 TFEU to have a defence to the injunction claim.
  • [142] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2.
  • [143] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [144] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3.
  • [145] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5.
  • [146] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8.
  • [147] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14.
  • [148] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807.
  • [149] Unwired Planet v Huawei, EWHC 1304 (Pat).
  • [150] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631.
  • [151] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634.
  • [152] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646.
  • [153] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656.
  • [154] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145.
  • [155] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146.
  • [156] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162.
  • [157] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163.
  • [158] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159.
  • [159] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164.
  • [160] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat).
  • [161] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158.
  • [162] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152.
  • [163] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154./span> Since Art. 102 TFEU condemns excessive pricing,Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153. a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate.Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
  • [164] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
  • [165] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176.
  • [166] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177.
  • [167] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503.
  • [168] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501.
  • [169] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544.
  • [170] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534.
  • [171] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546.
  • [172] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572.
  • [173] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171.
  • [174] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
  • [175] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
  • [176] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
  • [177] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175.
  • [178] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476.
  • [179] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744.

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 [180] 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 [181] ,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) [182]
 

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 [183]

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 [184] 。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 [185] ,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 [186]

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 [187] 。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 [188]
 

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 [189] 。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 [190] 。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 [190]

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”) [191] 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 [192] 。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 [193]

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 [194] 。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 [195] 。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 [196]
 

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 [197] 。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 [198]
 

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” [199]

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 [200] 。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 [200]

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 [201] 。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 [201]

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 [202] 。否则,实施人将会缺乏及时且积极地参与谈判的动力 [203] 。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 [204] 。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 [204]

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” [202] 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 [205] 。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 [203] 。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 [206]

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 [207] 。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 [208]

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 [209] ,而戴姆勒仍然选择了采用拖延战术 [210]

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 [211] 。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 [211]

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 [212] 。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 [213]

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 [214] 。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 [215]

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 [216]

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 [217]
 

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 [218] 。更有甚者,这更像是一种“不在场证明” [209]

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 [218] 。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 [219] 。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 [220]

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” [221] 。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 [222]

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 [222] 。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) [223] 。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 [224] 。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 [224]

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 [225] 。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 [225] 。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 [225] 。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 [225] 。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 [225]
 

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 [226]

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 [227] 。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) [228] 。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 [229] 。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 [229]

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 [230]

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 [231] 。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 [231] 。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 [232]

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 [233] 。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 [234] 。 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 [235] 。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 [235] 。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 [236] 。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 [236]

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 [237] 。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 [238] 。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 [239]

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 [240] 。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 [240] 。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 [241] 。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 [242] 。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) [242]

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 [243] 。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) [243]
 

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 [244] 。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 [245] 。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 [246] 。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 [246] 。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 [246] 。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 [246]
 

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 [247] 。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 [247] 。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) [247] 。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 [247]
 

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  • [181] 同上注,段122-265。
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  • [191] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [192] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, 段301。
  • [193] 同上注,段301。
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  • [198] 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。
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  • [235] 同上注,段370。
  • [236] 同上注,段372。
  • [237] 同上注,段373及376-378。
  • [238] 同上注,段373。
  • [239] 同上注,段373及382。
  • [240] 同上注,段373及379。
  • [241] 同上注,段374。
  • [242] 同上注,段375。
  • [243] 同上注,段380。
  • [244] 同上注,段384。
  • [245] 同上注,段384及以下。
  • [246] 同上注,段385。
  • [247] 同上注,段269。

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, [248] 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. [249] The court declared the Huawei rules applicable to claims for the recall of products. [250]
      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. [251] 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. [252] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [253]
      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. [254]
      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. [255] 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. [256]
      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. [257] 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. [258] 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. [259]
      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. [260]
      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. [261]
    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. [262] Whether the Intervener satisfied the ECJ criteria was left undecided. [263]
      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. [264] 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. [265] 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. [266]
      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. [267] 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. [268]
      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. [269] 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. [270]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [271]
    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. [272]
    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. [273]
  • [248] 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.
  • [249] Case No. 4a O 73/14, para. 184
  • [250] Case No. 4a O 73/14, para. 187
  • [251] Case No. 4a O 73/14, para. 195 et seq.
  • [252] Case No. 4a O 73/14, para. 208-210
  • [253] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [254] Case No. 4a O 73/14, para. 193
  • [255] Case No. 4a O 73/14, para. 270 et seq.
  • [256] Case No. 4a O 73/14, para. 222 et seq.
  • [257] Case No. 4a O 73/14, para. 225 et seq.
  • [258] 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.
  • [259] 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.
  • [260] Case No. 4a O 73/14, para. 256 et seq.
  • [261] Case No. 4a O 73/14, para. 279 et seq.
  • [262] Case No. 4a O 73/14, para. 214-220
  • [263] Case No. 4a O 73/14, para. 214-220; 278
  • [264] Case No. 4a O 73/14, para. 266
  • [265] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [266] Case No. 4a O 73/14, para. 264.
  • [267] Case No. 4a O 73/14, para. 291 et seq.
  • [268] Case No. 4a O 73/14, para. 278
  • [269] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [270] Case No. 4a O 73/14, para. 304
  • [271] Case No. 4a O 73/14, para. 189
  • [272] Case No. 4a O 73/14, para. 309-313
  • [273] Case No. 4a O 73/14, para. 317 et seq.

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 [274] . 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 [275] (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 [276] . 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 [278] . 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) [281] .
 

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 [290] . 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 [290] .

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. [291] 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. [292] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [293] 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. [294]

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. [295] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [295]

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. [299]

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. [310] 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 [311] . 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 [311] . 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 [312] . 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. [313]

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 [314] . 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 [316] .

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. [318] 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'. [318]

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 [326] . 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. [333]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [334] 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. [333] 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

  • [274] 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).
  • [275] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [276] 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).
  • [277] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18.
  • [278] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
  • [279] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by ).
  • [280] Ibid, paras. 10-43.
  • [281] Ibid, para. 44.
  • [282] Ibid, paras. 48 et seqq.
  • [283] Ibid, para. 49.
  • [284] Ibid, para. 52.
  • [285] Ibid, para. 53.
  • [286] Ibid, para. 54.
  • [287] Ibid, para. 55.
  • [288] Ibid, para. 84.
  • [289] Ibid, paras. 86 et seqq.
  • [290] Ibid, para. 57.
  • [291] Ibid, para. 58.
  • [292] Ibid, para. 59.
  • [293] Ibid, para. 60.
  • [294] Ibid, para. 62.
  • [295] Ibid, para. 61.
  • [296] Ibid, para. 63.
  • [297] Ibid, para. 65.
  • [298] Ibid, para. 68.
  • [299] Ibid, paras. 66 and 68.
  • [300] Ibid, para. 69.
  • [301] Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [302] Ibid, paras. 70 and 71.
  • [303] Ibid, para. 71.
  • [304] Ibid, para. 72.
  • [305] Ibid, para. 73.
  • [306] Ibid, para. 74.
  • [307] Ibid, para. 76.
  • [308] Ibid, para. 77.
  • [309] Ibid, paras. 79 et seqq.
  • [310] Ibid, para. 83.
  • [311] Ibid, para. 87.
  • [312] Ibid, paras. 88 et seqq.
  • [313] Ibid, para. 89.
  • [314] Ibid, paras. 93 et seqq.
  • [315] Ibid, para. 95.
  • [316] Ibid, paras. 96-99.
  • [317] Ibid, paras. 102 et seqq.
  • [318] Ibid, para. 102.
  • [319] Ibid, paras. 108 et seqq.
  • [320] Ibid, para. 116.
  • [321] Ibid, para. 118.
  • [322] Ibid, paras. 124 et seqq.
  • [323] Ibid, para. 124.
  • [324] Ibid, para. 125.
  • [325] Ibid, para. 126.
  • [326] 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.
  • [327] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.
  • [328] Ibid, para. 56.
  • [329] Ibid, paras. 127 et seqq.
  • [330] Ibid, para. 130.
  • [331] Ibid, para. 131.
  • [332] Ibid, paras. 131 et seq.
  • [333] Ibid, para. 135.
  • [334] Ibid, paras. 134 et seqq.

Updated 17 一月 2018

Unwired Planet v Huawei, [2017] EWHC 1304 (Pat)

英国法院判决
7 六月 2017 - Case No. HP-2014-000005

A. Facts and Main Judgment

The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue relate to telecommunication network coding and procedures. In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents and one non-technical trial relating to competition law issues, FRAND issues, injunctive relief and damages for past infringements.Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html In its decision on 5 April 2017 (the ‘main judgment’), the Patents Court (Birrs J) held that two patents were valid and that they had been infringed, and that the claimant was in a dominant position, but had not abused this position. The court stated that a final decision about an injunction to restrain patent infringements should be made separately. A few weeks after the main judgment, a license representing the FRAND terms between the two parties was prepared (the ‘settled license’), but had not yet been entered into. [336] Further, the defendant offered to give an undertaking to the court to enter into the license settled by the Patents Court or any other court. [337]

In its subsequent decision on 7 June 2017 (the case at hand), the parties argued whether the court should grant an injunction order given the existence of the settled license. Other minor issues of the case related to damages, declaratory relief, costs and permission to appeal. [338] The court granted an injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 (the ‘final order’). [339] The injunction order would be discharged if the defendant entered into a FRAND license and it would be stayed pending appeal. The court also declared that the settled license represented the FRAND terms in the given circumstances between the parties and that the defendant had to pay GBP 2.9 million of the claimant’s costs. Permission to appeal was granted to the defendant in respect of three issues and to the claimant in respect of one issue. [339]

B. Court’s Reasoning

1. Injunction

The main issue considered by the court was the interplay between the injunction, the settled license and the undertaking offered by the defendant. Patent EP (UK) 2 229 744 will expire in 2028. The settled license’s expiry date is 31 December 2020, [340] which would put the defendant in a difficult position if it attempts to renegotiate the license while the injunction is still in place. The defendant would even risk being in contempt of court if it continued to sell equipment if there was an argument that the license had come to an end for other reasons (e.g. repudiatory breach of contract). [341] However, the court took the view that it cannot be said that the defendant must be free to sell products if the license has ceased to exist. [340] Similarly, it cannot be said with certainty that the claimant must have an injunction at that date.

Thus, the court considered what the correct form of injunction in respect of a FRAND undertaking should be when a court has settled a license but the defendant has not entered into it (‘FRAND injunction’). [342] The court held that the FRAND injunction should contain a proviso that it will cease to have effect as soon as the defendant enters into the FRAND license. The injunction should also be subject to an express liberty to either party to return to court in the future if the FRAND license ceases to exist or expires while the patent is still valid. [342]

The court also held that despite the court’s discretion as to whether an injunction is granted, an injunction is normally effective, proportionate and dissuasive in IP cases. [343] Although the practical effect of a defendant’s undertaking and an injunction are similar, rights holders usually insist on an injunction. [344] One reason is that it involves a public vindication of the claimant’s rights. [344] As the claimant has been forced to come to court, an offer of undertaking after judgment is usually considered too late. [344] In this case, the defendant had maintained throughout the negotiations and the trial that it was under no obligation to accept a worldwide license. [345] Thus, according to the court, the right thing to do was to grant a FRAND injunction which will be stayed on terms pending appeal.

2. Other Issues

The court held that the issue of damages is closely related to the main issue. [346] If the defendant entered into the settled license, all payments would be covered by the license. If the defendant did not enter into the settled license, an order for damages is required. As a consequence, the court order should be in the same form as the FRAND injunction (stayed pending appeal and ceasing to have effect if the parties enter into the settled license). [346]

The parties also disagreed about the wording of the court declaration regarding the FRAND terms of the settled license. [347] The court dismissed the defendant’s suggestion as too complicated and the claimant’s suggestion as incomprehensive. Instead, the court declaration would be ‘the license annexed to the judgment represents the FRAND terms applicable between the parties in the relevant circumstances’. [348] Further, the court rejected the defendant’s petition to make a declaration that the claimant had not abused its dominant market position. [349] It took the view that the main judgment made a clear finding on this issue in summary paragraph 807(17).

Further, the parties disagreed about the extent of the defendant’s obligation to bear the claimant’s costs. The claimant argued that it should be regarded as the successful party so that the defendant had to pay its costs (GBP 6.4million). [350] The defendant argued the claimant had been clearly wrong regarding the applicable FRAND rate [351] and the appropriate thing would be to make no cost order. The court rejected the idea that there was no overall winner (as argued by the defendant) because the claimant was successful on the issues of the nature of the license and the existence and abuse of market dominance. [352] The ensuing question was whether any deductions were appropriate. [353] The court held that neither party had offered terms that were essentially FRAND. [354] However, the rates offered by the claimant were significantly further away from the end result than the rates offered by the defendant. [354] Thus, the defendant’s costs in relation to the FRAND rate issue were not recoverable by the claimant.

The fifth and final issue was in respect of permission to appeal. The court granted the defendant permission on three grounds: first, the necessity of granting a global license (including the court’s view that there is only one applicable license fee); [355] second, the hard-edged non-discrimination point; [356] and third, the issue of injunctive relief and abuse of market dominance under the CJEU ruling Huawei v. ZTE. [357] Conversely, the claimant was granted permission to appeal on the blended global benchmark issue (using a blended global rate as a benchmark, leading to the question whether another discount for the Chinese market should given). [358]

  • [335] Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html
  • [336] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 2.
  • [337] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 8.
  • [338] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 1.
  • [339] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 70.
  • [340] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 22.
  • [341] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 19.
  • [342] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 20.
  • [343] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 25.
  • [344] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 26.
  • [345] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 29.
  • [346] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 33.
  • [347] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 34.
  • [348] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 36.
  • [349] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 38.
  • [350] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), paras 39-40.
  • [351] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 41.
  • [352] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 44.
  • [353] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 45.
  • [354] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 56.
  • [355] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 170 et seqq.
  • [356] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 177 and 481 et seqq.
  • [357] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 627 et seqq.
  • [358] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 537 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). [359] 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 [360] (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 [361] .
 

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. [362]

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. [363] 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. [364]
 

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. [365]

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. [366] 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. [367] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [367] Detailed technical or legal analysis of the infringement allegation is not required. [367] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [367] If the patent holder offers a portfolio licence, respective extended information duties occur. [367]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [368] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [369] 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. [368]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [370] . 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. [371]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [372] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [372] . The respective declaration must be 'serious and unconditional'. [372]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [372] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [372]

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. [373] 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. [374] 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. [374]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [375] of the Court of Justice of the EU (CJEU). [376] 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. [377]

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. [378] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [378] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [378] 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. [378]

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. [379] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [380] 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. [381] 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). [382]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [383] 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) [384] . It also demanded further claim charts in February 2018, years after the action was filed. [385]

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. [386] 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. [387] 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. [388]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [389] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [389] 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. [390] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [390] 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. [391] 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 [391] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [391]

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'. [392] 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. [393] 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. [394]

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. [395] The SEP holder's FRAND commitment does not give rise to such obligation. [395] 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. [395] 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. [396]

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. [396] 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. [397] 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. [398]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [399] 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. [400] 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. [401] 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. [402]

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. [403] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [403]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [404] 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. [405] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [405]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [406] 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. [407]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [408] 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. [408] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [409]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [410] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [411] 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. [412]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [413]

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. [414]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [415] 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. [416] 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. [417] 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. [418]
 

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. [419] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [419] 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. [419] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [419]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [420] . 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. [421] 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. [422]

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. [423]

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 [424] . [425] 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. [426]
 

  • [359] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
  • [360] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
  • [361] 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.
  • [362] Ibid, para. 289.
  • [363] Ibid, paras. 284 et seqq.
  • [364] Ibid, para. 287.
  • [365] 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.
  • [366] Ibid, paras. 292 et seqq.
  • [367] Ibid, para. 293.
  • [368] Ibid, para. 297.
  • [369] Ibid, paras. 297 et seq.
  • [370] Ibid, para. 299.
  • [371] Ibid, para. 299 and paras. 320 et seqq.
  • [372] Ibid, para. 301.
  • [373] Ibid, para. 302.
  • [374] Ibid, para. 303.
  • [375] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
  • [376] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
  • [377] Ibid, para. 304.
  • [378] Ibid, para. 305.
  • [379] Ibid, paras. 321 et seqq.
  • [380] Ibid, para. 321.
  • [381] Ibid, para. 322.
  • [382] Ibid, paras. 323 et seq.
  • [383] 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).
  • [384] Ibid, paras. 325, 328 and 331.
  • [385] Ibid, para. 327.
  • [386] Ibid, paras. 333 et seqq.
  • [387] Ibid, paras. 334 and 338.
  • [388] Ibid, paras. 337 and 341 et seqq.
  • [389] Ibid, para. 330.
  • [390] Ibid, para. 342.
  • [391] Ibid, para. 307.
  • [392] Ibid, para. 308.
  • [393] Ibid, paras. 308 and 310.
  • [394] Ibid, para. 309.
  • [395] Ibid, para. 310.
  • [396] Ibid, paras. 311 et seqq.
  • [397] Ibid, paras. 311 and 313 et seqq.
  • [398] Ibid, paras. 316 et seqq.
  • [399] Ibid, para. 352.
  • [400] Ibid, para. 353.
  • [401] Ibid, paras. 354 et seqq.
  • [402] Ibid, para. 358.
  • [403] Ibid, para. 359.
  • [404] Ibid, para. 360.
  • [405] Ibid, para. 361.
  • [406] Ibid, para. 362.
  • [407] Ibid, para. 363.
  • [408] Ibid, paras. 365 et seqq.
  • [409] Ibid, paras. 367 et seqq.
  • [410] Ibid, para. 366.
  • [411] Ibid, para. 344.
  • [412] Ibid, para. 346.
  • [413] Ibid, paras. 379 et seqq.
  • [414] Ibid, para. 311.
  • [415] Ibid, paras. 379 et seqq.
  • [416] Ibid, para. 380.
  • [417] Ibid, para. 378.
  • [418] Ibid, para. 384.
  • [419] Ibid, para. 348.
  • [420] Ibid, para. 389.
  • [421] Ibid, paras. 389 et seq.
  • [422] Ibid, para. 391.
  • [423] Ibid, paras. 260 et seqq.
  • [424] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [425] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
  • [426] Ibid, para. 395.

Updated 3 十二月 2018

District Court, LG Düsseldorf

LG Düsseldorf
11 七月 2018 - Case No. 4c O 81/17

A. Facts

The Claimant holds a patent essential to the data communication standards ADSL2+ and VDSL2 (Standard Essential Patent or SEP) [427] . The previous holder of the patent in question had declared towards the standardization organisation International Telecommunication Union (ITU) its willingness to make the patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [428] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [429] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [429] .

In January 2016, the Claimant brought an action against the Defendant before the District Court (Landgericht) of Düsseldorf (Court) requesting for a declaratory judgement recognizing Defendant’s liability for damages arising from the infringement of its SEP as well as the provision of information and the rendering of accounts (liability proceedings) [430] . During the course of these proceedings, the Claimant made two offers for a licensing agreement to the Defendant. The Defendant made a counter-offer to the Claimant and provided security for the use of the SEP [431] . The parties failed to reach an agreement.

In June 2016, the Defendant filed an action for a declaratory judgement against the Claimant before the Dublin High Court in Ireland, requesting the High Court to declare that both Claimant’s offers were not FRAND and that Defendant’s counter-offer was FRAND [432] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [432] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [433] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [431] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [434] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [435] , it found that the Claimant cannot enforce its patent rights for the time being [436] , since it failed to fully comply with the obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTEHuaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13. (Huawei obligations or framework) with respect to dominant undertakings in terms of Article 102 of the Treaty for the Functioning of the EU (TFEU) [434] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [438] .

In the Court’s eyes, the relevant market for assessing dominance with regards to SEPs is, as a rule, the (downstream) market for products or services implementing the standard, to which the SEP refers [439] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [440] . Since the Court held that, in the present case, none of the existing technological alternatives to the standards ADSL2+ and VDSL2 (e.g. HFC networks, LTE, HDSL, SHDSL, ADSL, SDSL, VDSL, fibre optic networks, radio relay technology or internet services via satellite) offers an equivalent solution to users [441] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [442] .

Regarding to the subsequent question of whether the Claimant has a dominant position in the above market, the Court first made clear that ownership of a SEP does not per se establish such condition [443] . The fact that a patent is essential to a standard does neither give rise to the (rebuttable) presumption that the SEP holder can distort competition in downstream markets, because products complying with the standard need to use the SEP [443] . Since a high number of patents is usually declared as standard essential, not every SEP can actually (significantly) affect the competitiveness of products or services in downstream markets; the effect of each SEP on a downstream market has, therefore, to be established on a case-by-case basis by taking into account the circumstances of each individual case [443] .

The Court explained that a dominant market position is given, when the use of the SEP is required for entering the market, particularly for securing the general technical interoperability and compatibility of products or services under a standard [443] . The same is true, if the patent user could not market competitive products or services without a licence (for instance, because only a niche market exists for non-compliant products) [443] . No market dominance exists, however, when the SEP covers a technology which is only of little importance to the majority of the buyers in the relevant market [443] .

According to the Court, the latter was not the case here; on the contrary, the Defendant cannot offer competitive products or services in the market for DSL internet connections, without using the SEP in suit [444] .

2. Huawei framework

In the Court’s view, the parties to SEP licensing negotiations need to fulfill the mutual conduct obligations under the Huawei framework step by step and one after another [445] . The Court did not see any flaws in the parties’ conduct with respect to the first two steps of the Huawei framework (SEP holder’s notification of infringement and SEP user’s declaration of willingness to obtain a licence), held, however, that the Claimant did not meet its consequent obligation to make a FRAND licensing offer to the Defendant [446] .

Notification of infringement

The Court found that the Claimant had fulfilled its obligation to notify the Defendant about the infringing use of the SEP in suit prior to the commencement of the injunction proceedings [447] .

First, the Court pointed out that a respective notification (as well as a later licensing offer) can be made by the SEP holder itself, or by any other affiliated company within the same group of companies, especially by the patent holder’s parent company [448] . On the other hand, it is not required that the infringement notification is addressed to the company that will later be party to the infringement proceedings; in general, it is sufficient to address the notification to the parent company within a group of companies [448] .

In terms of content, the notification of infringement must name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [449] . A detailed (technical and/or legal) explanation of the infringement (particularly an analysis of how the individual features of the patent claims are infringed) is not required; the addressee needs just to be put in the position to assess the infringement allegations, if necessary by seeking expert advice [449] . In this context, the Court disagreed with the District Court of Mannheim which had requested the SEP holder to inform the user about the essentiality of the patent to the standard and/or attach claim charts to the notification of infringement [449] .

In terms of timeliness, the Court took the view that the notification of infringement can be made alongside with SEP holder’s offer for a FRAND licence to the user (prior to the initiation of court proceedings) [450] . In this case, the second step under the Huawei framework will be skipped (that is the SEP user’s declaration of its willingness to obtain a licence). According to the Court, this fact does not, however, have an impact on the SEP holder’s position: If the SEP user is willing to enter into a licence, this approach would safe time (although the SEP user should be granted more time than usual to assess and react to both the notification of infringement and the FRAND offer) [450] . If, on the other hand, the SEP user is unwilling to obtain a FRAND licence, then the SEP holder will just have made a licensing offer absent a respective obligation under the Huawei framework [450] .

In the present case, the fact that the Claimant did not make a separate notification of infringement prior to the initiation of the injunction proceedings, was not considered problematic. The Court pointed out that the Defendant was fully informed about the infringement allegation by the action for damages raised by the Claimant long before the injunction proceedings, so that a separate notification was not required [451] .

Willingness to obtain a FRAND licence

The Court further found that the Defendant had fulfilled its Huawei obligation to express its willingness to obtain a FRAND licence [452] .

In terms of content, no high demands should be placed on the SEP user’s respective declaration; it is not subject to formal requirements and can be of a general nature, as long as the willingness to obtain a licence is clearly stated [453] . Given the circumstances of the specific case, even an implicit behaviour can suffice [453] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [454] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [454] . If the SEP holder’s notification of infringement contains only the minimum required information, a reaction within a period of five or even three months at the most could be expected [454] . In case that the infringement notification contains information going beyond the required minimum, an even quicker reaction could be required from the SEP user under certain circumstances [454] .

In the present case, the Court held that the Defendant has implicitly declared its willingness to enter into a FRAND licence with the Claimant at the latest at the point in time, in which the injunction proceedings were initiated [455] . At that time, the Defendant had already made a counter-offer for a FRAND licence to the Claimant and had also provided security for the use of Claimant’s patents [456] .

In this context, the Court noted that neither the fact that the Defendant contested Claimant’s claims in the parallel liability proceedings not the fact that it raised an action for declaratory judgement against the Claimant before the Dublin High Court can support the argument that the Defendant has deviated from its previous declaration of willingness [457] .

SEP holder’s licensing offer

The Court held that the offer which the Claimant made to the Defendant in course of the injunction proceedings was not FRAND [458] . Since the Claimant expressly relied only on this offer to establish its compliance with the Huawei framework, the Court did not assess the FRAND conformity of the two previous offers of the Claimant to the Defendant [431] .

In terms of timeliness, the Court stressed out that the SEP holder must make a FRAND licensing offer to the user before the initiation of infringement proceedings [459] . Under German procedural law, proceedings are initiated after the claimant has made the required advance payment on costs, even if the statement of claims has not been served to the defendant, yet [460] .

The Court did not rule out that SEP holder’s failure to fulfil its Huawei obligations prior to the commencement of infringement proceedings can be remedied during the course of the proceedings [461] . Depending on the circumstances of each case, the SEP holder should be given the opportunity – within the limits of procedural deadlines – to react to (justified) objections of the SEP user and eventually modify its offer [461] . Denying the SEP holder this opportunity without exceptions would be contrary to the principle of procedural economy; the patent holder would be forced to withdraw its pending action, make a modified licensing offer to the patent user and, subsequently, sue the latter again [461] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [462] . Notwithstanding the above, the Court made, however, clear that the possibility of remedying a flawed licensing offer is subject to narrow limits; the CJEU intended to relieve licensing negotiations between SEP holder and SEP user from the burden imposed on parties by ongoing infringement proceedings, and particularly the potential undue pressure to enter into a licensing agreement which such proceedings can put on the SEP user [463] .

Against this background, the Court expressed doubts that the Claimant’s licensing offer, which was made in the course of the pending injunction proceedings could be considered as timely [433] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [464] .

The Court did not deem necessary to decide whether the FRAND conformity of the SEP holder’s offer must be fully assessed in infringement proceedings, or whether only a summary assessment of its compatibility with FRAND suffices [465] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [466] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [467] .

First, the terms did not adequately consider the effects of patent exhaustion [468] . As a rule, FRAND requires licensing offers to contain respective provisions [469] . The clause contained in Claimant’s offer, establishing the possibility of a reduction of the royalties owed by the Defendant in case of the exhaustion of licensed patents, is not fair, because it puts the burden of proof regarding to the amount of the reasonable reduction of the royalties on the Defendant’s shoulders [470] .

Second, the clause, according to which Defendant’s payment obligations regarding to past uses of the SEP in suit should be finally settled without exceptions and/or the possibility to claim reimbursement, was also considered not fair [471] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [472] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [473] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [474] . In the present case, however, excluding a significant part of the Defendant’s overall business, namely the wholesale business, from the licensing offer, hinders a fair market access [474] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [475] .

To begin with, the Court stressed out that FRAND refers to a range of acceptable royalty rates: As a rule, there is not only a single FRAND-compliant royalty rate [465] . Furthermore, as far as a corresponding commercial/industry practice exists, offers for worldwide portfolio licences are, in general, in line with the Huawei framework, unless the circumstances of the individual case require a different approach (for instance a limitation of the geographical scope of the licence, in case that the user is active only in a single market) [476] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [477] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [477] . In any case, SEP holders are obliged to specify the royalty calculation in a manner that allows the user to assess whether the offered conditions are non-discriminatory or not. The respective information needs to be shared along with the licensing offer; only when the SEP user has obtained this information a licensing offer triggering an obligation of the latter to react is given [478] .

In the Court’s view, presenting all existing essential licensing agreements concluded with third parties, covering the SEPs in suit or a patent portfolio including said SEPs (comparable agreements), has priority over other means for fulfilling this obligation [479] . In addition, SEP holders have to produce also court decisions rendered on the FRAND-conformity of the rates agreed upon in the comparable agreements, if such decisions exist [480] .

Whether presenting comparable agreements (and relevant case law) suffices for establishing the non-discriminatory character of the offered royalty rates depends on the number and the scope of the available agreementsI [481] . In case that no or not enough comparable agreements exist, SEP holders must (additionally) present decisions referring to the validity and/or the infringement of the patents in question and agreements concluded between other parties in the same or a comparable technical field, which they are aware of [482] . If the SEP in suit is part of a patent portfolio, SEP holders must also substantiate the content of the portfolio and its impact on the offered royalty rates [483] .

Having said that, the Court pointed out that an unequal treatment resulting in a discrimination in antitrust terms is not only at hand, when a dominant patent holder grants preferential terms to specific licensees, but also when it chooses to enforce its exclusion rights under a SEP in a selective manner [484] . The latter is the case, when the SEP holder brings infringement actions only against certain competitors and, at the same time, allows other competitors to use its patent(s) without a licence [484] . However, such a conduct is discriminatory only if, depending on the overall circumstances of each case (for instance, the extend of the infringing use and the legal remedies available in the country, in which claims need to be asserted), it would have been possible for the SEP holder with reasonable efforts to enforce its patent rights against other infringers (which it was or should have been aware of) [484] . In favour of an equal treatment of competitors, the level of action which must be taken by the SEP holder in this respect should not be defined narrowly [484] . However, it has to be taken into account, that – especially in the early stages of the implementation of a standard – the SEP holder will usually not have the means required to enforce its rights against a large number of infringers; in this case, the choice to enforce its rights only against infringers with market strength first appears reasonable [485] .

Based on the above considerations, the Court ruled that the Claimant’s choice to sue only the Defendant and its two main competitors, without asserting the SEP in suit against the rest of their competitors, respectively against their suppliers, was discriminatory [486] . The Claimant should have already, at least, requested the companies, against which no action was filed, to obtain a licence, particularly since the remaining period of validity of the SEP in suit is limited [487] . Furthermore, the Court found that the Claimant’s refusal to make a licensing offer to the Intervener, although the latter had requested for a licence, was also discriminatory; in the Court’s view, the Claimant failed to provide an explanation justifying this choice [488] .

Since the Claimant’s offer was found to be non-compliant with FRAND, the Court refrained from ruling on the conformity of Defendant’s counter-offer and the security provided with the Huawei framework [489] .


C. Other issues

The Court ruled that in accordance with Article 30 para. 3 of the German Patent Law (PatG) the registration in the patent register establishes the presumption of ownership, allowing the entity which is registered as patent holder to assert the rights arising from the patent before court [490] .

  • [427] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
  • [428] Ibid, para. 13.
  • [429] Ibid, para. 12.
  • [430] Ibid, paras. 14 and 211.
  • [431] Ibid, para. 15.
  • [432] Ibid, para. 16.
  • [433] Ibid, para. 236.
  • [434] Ibid, paras. 140 and 313 et seqq.
  • [435] Ibid, paras. 114 et seqq.
  • [436] Ibid, paras. 60 and 140.
  • [437] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [438] Ibid, para. 142.
  • [439] Ibid, para. 148.
  • [440] Ibid, paras. 153 and 146.
  • [441] Ibid, paras. 159 - 181.
  • [442] Ibid, para. 158.
  • [443] Ibid, para. 147.
  • [444] Ibid, paras. 183 et seqq.
  • [445] Ibid, para. 191.
  • [446] Ibid, para. 188.
  • [447] Ibid, paras. 195 et seqq.
  • [448] Ibid, para. 199.
  • [449] Ibid, para. 198.
  • [450] Ibid, para. 200.
  • [451] Ibid, para. 203.
  • [452] Ibid, para. 205.
  • [453] Ibid, para. 208.
  • [454] Ibid, para. 207.
  • [455] Ibid, para. 210.
  • [456] Ibid, para. 212.
  • [457] Ibid, paras. 215 et seq.
  • [458] Ibid, para. 220.
  • [459] Ibid, paras. 222 et seqq.
  • [460] Ibid, para. 225.
  • [461] Ibid, para. 233.
  • [462] Ibid, para. 228.
  • [463] Ibid, para. 230.
  • [464] Ibid, para. 237.
  • [465] Ibid. para. 241.
  • [466] Ibid, para. 242.
  • [467] Ibid, paras. 283 et seqq.
  • [468] Ibid, para. 285.
  • [469] Ibid, para. 288.
  • [470] Ibid, paras. 292 et seq.
  • [471] Ibid, paras. 298 et seqq.
  • [472] Ibid, para. 301.
  • [473] Ibid, para. 306.
  • [474] Ibid, para. 311.
  • [475] Ibid, para. 271.
  • [476] Ibid, para. 250.
  • [477] Ibid, para. 248.
  • [478] Ibid, para. 267.
  • [479] Ibid, paras. 256 and 259 et seq.
  • [480] Ibid, para. 262.
  • [481] bid, paras. 258 and 264.
  • [482] Ibid, paras. 263 and 265.
  • [483] Ibid, para. 265.
  • [484] Ibid, para. 273.
  • [485] Ibid, para. 274.
  • [486] Ibid, para. 276.
  • [487] Ibid, para. 277.
  • [488] Ibid, para. 281.
  • [489] Ibid, para. 315.
  • [490] Ibid, paras. 75 et seq.

Updated 1 十一月 2017

Unwired Planet v Huawei, [2017] EWHC 711 (Pat) 2

英国法院判决
4 五月 2017 - Case No. HP-2014-000005

  1. Facts
    The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue (EP (UK) 2 229 744, EP (UK) 2 119 287, EP (UK) 2 485 514, EP (UK) 1 230 818, EP (UK) 1 105 991, EP (UK) 0 989 712) relate to telecommunication network coding and procedures [491] . Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [492] In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents. This summary focuses on the non-technical trial addressed competition law issues, FRAND issues, injunctive relief and damages for past infringements. [493]
    In April 2014 the claimant made an open offer to the defendant, a major international smartphone manufacturer, to grant a license in respect of the claimant’s entire global patent portfolio (containing SEPs and non-SEPs). The defendant refused the offer, contending that there was no patent infringement, that the patents were not essential, and that they were invalid. The defendant also argued that the offer was not FRAND and thus did not constitute an abuse of a dominant market position under Art. 102 TFEU. In July 2014 the claimant made a further offer, limited to the claimant’s SEPs. Again, the defendant refused, arguing that the license conditions were not FRAND. [494] In June 2015 both parties made further offers. These offers were the result of directions from the court. The claimant offered a worldwide portfolio license while the defendant wanted to limit the territorial scope to the United Kingdom. [495] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [496]
    The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [497] The defendant was not prepared to take a license on FRAND conditions and the claimant was not in breach of competition law. Thus, the court held that a final injunction to restrain patent infringements should be granted. An injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 was granted on 7 June 2017. [498]
  2. Court’s reasoning
    1. Market power
      The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [499] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [500] The claimant’s pleaded position was a non-admission of dominance rather than a denial coupled with a positive case to the contrary. It was the view of the court that this was insufficient to rebut the presumption. In particular, the claimant’s argument of countervailing buyer power was unconvincing because it had not been supported by a proper economic analysis. [501]
    2. SEP Proprietor’s Licensing Offer
      1. FRAND Declaration as Conceptual Basis
        The court pointed out that that the FRAND undertaking also applied in the case that the SEP proprietor was not in a dominant position. It held that the FRAND undertaking operated as a practical constraint on a SEP owner’s market power. [502] The ETSI declaration made by the SEP proprietor is also the starting point for determining the FRAND rate. The underlying issue, which is discussed at length by the court, [503] is if such a declaration forms a contract and whether that contract can benefit third parties. The court acknowledged that the legal effect of this declaration, in particular its enforceability, is a controversial issue under French law. [504] However, the court reasoned that the FRAND declaration is an important aspect of technology standardisation. Holders of SEPs are not compelled to give a FRAND declaration. If they do, the undertaking would be enforceable and irrevocable due to public interest. [504]
        The court applied a procedural approach to FRAND. It emphasised that FRAND describes not only a set of license terms, but also the process by which a set of terms are agreed. [505] It applies to both the SEP-holder and the implementer/defendant. In particular, this approach allows for starting offers that leave room for negotiation. On the other hand, making extreme offers and taking an uncompromising approach which prejudices fair, reasonable, and non-discriminatory negotiation is not a FRAND approach. [506] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [507]
      2. ‘True FRAND Rate’
        The court considered that there is only a single set of terms for a given set of circumstances that would meet FRAND conditions (‘true FRAND rate’). [508] This eliminates the so-called Vringo-problem, [509] i.e. if FRAND were a range there would be two different but equally FRAND offers. Thus, if the court would grant or not an injunction, it would be unfair for the alleged infringer or SEP holder respectively. [510]
        The court was of the opinion that the true FRAND rate approach does not cause problems under competition law. Theoretically, if only one set of terms is truly FRAND, and if FRAND also represents the line between abusive and non-abusive conduct under Art. 102 TFEU, then every agreed SEP-licence could be at serious risk of being abusive. [511] However, the court took the view that FRAND-compliance and compliance with Art. 102 TFEU are not the same thing (the court pointed out that the CJEU in the Huawei ruling appears to equate an obligation to make a FRAND offer with compliance with Art 102 TFEU). [512] Since Art. 102 TFEU condemns excessive pricing, [513] a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate. [513]
      3. Discrimination
        The court held that the correct approach is to start from a global rate as a benchmark and to then adjust this rate as appropriate. [514] It distinguished between two concepts of discrimination. First, the ‘general’ concept of non-discrimination describes an overall assessment of FRAND which can be used to derive the benchmark mentioned above. [515] It is based on the intrinsic value of the patent portfolio, but it does not depend on the licensee. The court held that this benchmark should be applied to all licensees seeking the same kind of license. [516]
        Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [515] is a distinct concept that could be used to adjust license terms. However, the court held that the FRAND declaration does not introduce such a hard-edged non-discrimination concept. [517] If, contrary to the view taken by the court, the FRAND undertaking did include hard-edged non-discrimination, a licensee could only have the right to a lower rate granted to another licensee (i.e. a specific non-discrimination obligation resulting from the FRAND declaration) if the difference would otherwise distort competition between the two licensees. [516]
      4. Territorial Scope of License
        The court held that the defendant’s offer that was limited to UK licenses was not FRAND. In the court’s opinion country by country licensing is inefficient for goods such as mobile telecommunications devices that are distributed across borders. [518] It would also be inefficient to negotiate many different licenses and then to keep track of so many different royalty calculations and payments. No rational business would do this, if it could be avoided. [518] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [519] Further, it is common ground that the industry assesses patent families rather than individual patents within the family. Assessing portfolios on a family basis inevitably involved tying a patent in one jurisdiction with a patent in another. [520] Thus, according to the court, a worldwide license would not be contrary to competition law. As willing and reasonable parties would agree on a worldwide licence, the insistence by the defendant on a license which was limited to the UK was not FRAND. [521]
  3. Court’s reasoning
    1. Comparable agreements and reasonable aggregate royalty rate
      The court held that for determining the royalty rate, the evidence of the parties would be relevant, including evidence of how negotiations actually work in the industry. [522] Other freely-negotiated license agreements might be used as comparables. [523] This may be compared with a top down approach [524] can also be used in which the rate is set by determining the patentee’s share of relevant SEPs and applying that to the total aggregate royalty for a standard, but this may be more useful as a cross-check. [525] Royalty rates determined by other courts might be useful as persuasive precedents. However, in the eyes of the court, a license rate determined at a binding arbitration does not carry much weight as to what parties are usually paying. [522] License agreements must meet certain criteria to be comparable. [526] First, the licensor is the claimant. Second, the license agreement is recent. However, it is not necessary that the licensee is the defendant or a comparable company because different market participants have different bargaining powers, which is reflected in the negotiations and the resulting royalty rates. [526] Finally the court confirmed that a royalty based on the handset price was appropriate and implied a reasonable aggregate royalty rate of 8.8%of the handset price. The court found that the 8.8% was reasonable, in part, because the aggregate implied by either party’s case was higher (10.4% and 13.3%). [527]
    2. Principles derived from Huawei v. ZTE
      The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [528] In the eyes of the court, the ‘willingness to conclude a licence on FRAND terms’ refers to a willingness in general. The fact that concrete proposals are also required does not mean it is relevant to ask whether the proposals are actually FRAND or not. If the patentee complies with the procedure as set out by the CJEU, then bringing a claim for injunction is not abusive under Art 102. But even if sufficient notice is given, bringing a claim can constitute an abuse because complying with the procedure does not mean that a patentee can behave with impunity. In other words, there might be other aspects that make the claim abusive. Conversely, bringing such a claim without prior notice will necessarily be abusive. Significantly, the court held, the legal circumstances of this case differ from the circumstances assumed by the CJEU in a crucial respect. A FRAND undertaking can be effectively enforced irrespective of Art 102. The defendant does not need Art 102 TFEU to have a defence to the injunction claim.
  • [491] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2
  • [492] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [493] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3
  • [494] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5
  • [495] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8
  • [496] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14
  • [497] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807
  • [498] Unwired Planet v Huawei, EWHC 1304 (Pat)
  • [499] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631
  • [500] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634
  • [501] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646
  • [502] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656
  • [503] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145
  • [504] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146
  • [505] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162
  • [506] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163
  • [507] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159
  • [508] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164
  • [509] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat)
  • [510] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158
  • [511] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152
  • [512] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154
  • [513] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153
  • [514] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176
  • [515] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177
  • [516] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503
  • [517] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501
  • [518] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544
  • [519] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534
  • [520] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546
  • [521] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572
  • [522] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171
  • [523] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
  • [524] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
  • [525] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
  • [526] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175
  • [527] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476
  • [528] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744

Updated 15 五月 2018

Conversant v Huawei and ZTE, [2018] EWHC 808 (Pat)

英国法院判决
16 四月 2018 - Case No. HP-2017-000048

A. Facts

The claimant, Conversant, is a licensing firm incorporated in Luxembourg. The defendants are two major Chinese telecoms equipment and handset manufacturers, Huawei and ZTE, and their English affiliates. After years of negotiations that failed to result in licenses for claimant’s portfolio of Standard Essential Patents (SEPs) reading on ETSI wireless telecoms standards (and comprising inter alia Chinese and UK patents),Conversant v. Huawei and ZTE[2018] EWHC 808 (Pat) para 5. the claimant filed an action for infringement of four of its UK SEPs before the High Court of Justice (Court), and requested the Court to define Fair, Reasonable and Non-Discriminatory (FRAND) terms for its global SEP portfolio. [530] The defendants in separate proceedings initiated in China disputed the validity, essentiality and infringement of claimant’s Chinese patents. Since the defendants failed to unequivocally commit to conclude licenses on FRAND terms decided by the Court, the plaintiff amended its pleading to include injunctive relief, unless and until the defendants comply with the Court’s FRAND determination. [531]

The judgment at hand involves the defendants’ challenge to the Court’s jurisdiction to decide upon the terms of a global portfolio license. According to the defendants, a UK court has no jurisdiction to decide on the validity and infringement of foreign (in the present case: Chinese) patents. [532] Furthermore, the defendants claim that the jurisdiction most closely connected to the case is China which is the centre of the defendants’ manufacturing activities as well as the jurisdiction where the bulk of their sales takes place. [533]

B. Court’s Reasoning

The court dismissed the defendants’ challenge of jurisdiction. Following the reasoning of Birss J in Unwired Planet,Unwired Planet v. Huawei[2017] EWHC 711 (Pat) paras 565-67 Carr J held that, although issues of validity of patents granted in foreign jurisdictions are not justiciable in the UK, nevertheless the issue of validity should be distinguished from the issue of the determination of a global portfolio license on FRAND terms. According to Carr J, the defendants are free to challenge the validity, essentiality, and infringement of claimant’s Chinese patents in separate proceedings before Chinese courts; the pending issues of validity, essentiality and infringement do not preclude, however, the Court from determining FRAND terms for a global license and providing a mechanism of adjusting the royalty rate according to the validity and infringement decisions of courts in other jurisdictions.Conversant v. Huawei and ZTE(n. 1) paras 17 et seq. Furthermore, the defendants’ justiciability defense, were it to be accepted, would make it impossible for patent holders with a global portfolio of SEPs to obtain relief in the form of court-determined FRAND terms for a global license, since they would need to commence litigation on a country-by-country basis. [536] Forcing the patent holder to seek separate licenses for every individual country where it held SEPs could be characterized as a ‘hold-out chater’, in the eyes of the Court. [536]

Moreover, the Court seized jurisdiction over the case on the ground that the plaintiff’s claim concerns four patents granted in the UK; the issue of relief for patent infringement, and in particular whether such relief will take the form of setting FRAND terms for a global license, is to be decided in the context of a ‘FRAND trial’, after a decision on infringement is reached. [537] Were the defendants’ argument to be accepted, the Court would, in effect, be barred from deciding on the infringement and the proper relief for patents granted in the UK. [533] Besides that, the Court also held that the defendants’ failed to establish that the Chinese courts would be the appropriate forum for the dispute. [538] In this respect, given that royalty rates for telecommunication SEPs are usually lower in China than in other countries, the Court particularly pointed out that no holder of a global SEP portfolio would voluntarily prefer to submit to determination of a FRAND license for the entirety of portfolio in a country, where the rates applied would be lower than the rest of the world. [539]

  • [529] Conversant v. Huawei and ZTE[2018] EWHC 808 (Pat) para 5.
  • [530] ibid, para 7.
  • [531] ibid, para 8.
  • [532] ibid, paras 9, 12 and 13.
  • [533] ibid.
  • [534] Unwired Planet v. Huawei[2017] EWHC 711 (Pat) paras 565-67
  • [535] Conversant v. Huawei and ZTE(n. 1) paras 17 et seq.
  • [536] ibid, para 28.
  • [537] ibid, para 69.
  • [538] ibid, paras 72 et seq.
  • [539] ibid, para 63.

Updated 30 十月 2018

Unwired Planet v Huawei, UK Court of Appeal

英国法院判决
23 十月 2018 - Case No. A3/2017/1784, [2018] EWCA Civ 2344

A. Facts

The Claimant, Unwired Planet International Limited, holds a significant portfolio of patents which are essential for the implementation of the 2G/GSM, 3G/UMTS and 4G/LTE wireless telecommunications standards (Standard Essential Patents, or SEPs). The Defendants, Huawei Technologies Co. Ltd. and Huawei Technologies (UK) Co. Ltd., manufacture and sell mobile devices complying with the above standards worldwide.

Starting in September 2013, the Claimant contacted the Defendants several times, requesting the latter to engage in discussions for a licence regarding its SEP portfolio. [540] In March 2014, the Claimant sued the Defendants as well as Samsung and Google for infringement of five of its UK SEPs before the UK High Court of Justice (High Court). [541] The Claimant also initiated parallel infringement proceedings against the Defendants in Germany. [542]

The High Court conducted three technical trials first, focusing on the validity and essentiality of four of the SEPs in suit. [543] By April 2016, these trials were completed; the High Court held that two of the SEPs in suit were both valid and essential, whereas two other patents were found to be invalid. [543] The parties agreed to postpone further technical trials indefinitely. [543]

In July 2016, Samsung took a licence from the Claimant covering, among other, the SEPs in suit. [544] The Claimant also settled the infringement proceedings with Google. [545]

In late 2016, the trial concerned with questions regarding to the licensing of the SEPs in suit commenced between the Claimant and the Defendants. Over the course of these proceedings the parties made licensing offers to the each other. However, they failed to reach an agreement. The Defendants indicated they were willing to take a licence under Claimant’s UK patent portfolio, whereas the Claimant contended that it was entitled to insist upon a worldwide licence. [546]

In April 2017, the High Court granted an UK injunction against the Defendant, until such time as it entered into a worldwide licensing agreement with the Claimant on the specific rates, which the court determined to be Fair, Reasonable and Non-Discriminatory (FRAND) [547] in accordance with the undertaking given by the Claimant towards the European Telecommunications Standards Institute (ETSI). [548] Pending appeal, the High Court stayed the injunction. [549]

Shortly after the High Court delivered its decision, the Defendants began proceedings against the Claimant in China, which are still pending. [550]

With the present judgment, the UK Court of Appeal dismissed the Defendants’ appeal against the decision of the High Court. [551]


B. Court’s reasoning

The Defendants appealed the decision of the High Court on the following three grounds:

1. The High Court’s finding that only a worldwide licence was FRAND is erroneous; the imposition of such a licence on terms set by this court based on a national finding of infringement of UK patents is wrong in principle. [552]

2. The offer imposed to the Defendants by the High Court is discriminatory in violation of Claimant’s FRAND undertaking, since the rates offered are higher than the rates reflected in the licence granted by the Claimant to Samsung. [553]

3. The Claimant is not entitled to injunctive relief; by bringing the infringement proceedings against the Defendants, without meeting the requirements established by the Court of Justice of the European Union (“CJEU”) in the matter Huawei v ZTE [554] (Huawei judgment) before, the Claimant abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the European Union (“TFEU”). [555]

Notably, the High Court’s determination of the rates which apply to the worldwide licence that the court requested the Defendants to take was not challenged by any of the parties to the proceedings. [556]


1. Worldwide licences

The Court of Appeal disagreed with the Defendants’ notion that imposing a worldwide licence on an implementer is wrong, because it amounts to an (indirect) interference with foreign court proceedings relating to patents subsisting in foreign territories, which would have been subject to materially different approaches to the assessment of FRAND royalty rates and could, therefore, lead to different results (particularly the ongoing litigation between the parties in China and Germany). [557]

The Court of Appeal explained that in imposing a worldwide licence the High Court did neither adjudicate on issues of infringement or validity concerning any foreign SEPs, nor was it deciding what the appropriate relief for infringement of any foreign SEPs might be (particularly since it made clear that a FRAND licence should not prevent a licensee from challenging the validity or essentiality of any foreign SEPs and should make provision for sales in non-patent countries which do not require a licence) [558] . [559]

Moreover, the High Court simply determined the terms of the licence that the Claimant was required to offer to the Defendants pursuant to its FRAND undertaking towards ETSI. [560] Such an undertaking has international effect. [561] It applies to all SEPs of the patent holder irrespective of the territory in which they subsist. [562] This is necessary for two reasons: first, to protect implementers whose equipment may be sold and used in a number of different jurisdictions. [562] Second, to enable SEP holders to prevent implementers from “free-riding” on their innovations and secure an appropriate reward for carrying out their research and development activities and for engaging with the standardisation process. [563]

Accordingly, the High Court had not erred in finding that a worldwide licence was FRAND. On the contrary, there may be circumstances in which only a worldwide licence or at least a multi-territorial licence would be FRAND. [564] German Courts (in Pioneer Acer [565] and St. Lawrence v Vodafone [566] ) as well as the European Commission in its Communication dated 29 November 2017 [567] had also adopted a similar approach. [568]

Having said that, the Court of Appeal recognized that it may be “wholly impractical” for a SEP holder to seek to negotiate a licence for its patents on a country-by-country basis, just as it may be “prohibitively expensive” to seek to enforce its SEPs by litigating in each country in which they subsist. [563] In addition, if in the FRAND context the implementer could only be required to take country-by-country licences, there would be no prospect of any effective injunctive relief being granted to the SEP holder against it: the implementer could avoid an injunction, if it agreed to pay the royalties in respect of its activities in any particular country, once those activities had been found to infringe. [569] In this way, the implementer would have an incentive to hold out country-by-country, until it was compelled to pay. [569]

In its discussion of this topic, the Court of Appeal disagreed with the view taken by the High Court that in every given set of circumstances only one true set of FRAND terms exists. Nevertheless, the court did not consider that the opposite assumption of the High Court had a material effect to the its decision. [570]

In the eyes of the Court of Appeal, it is “unreal” to suggest that two parties, acting fairly and reasonably, will necessarily arrive at precisely the same set of licence terms as two other parties, also acting fairly and reasonably and faced with the same set of circumstances. [571] The reality is that a number of sets of terms may all be fair and reasonable in a given set of circumstances. [571] Whether there is only one true set of FRAND terms or not, is, therefore, more of a “theoretical problem” than a real one. [572] If the parties cannot reach an agreement, then the court (or arbitral tribunal) which will have to determine the licensing terms will normally declare one set of terms as FRAND. The SEP holder would then have to offer that specific set of terms to the implementer. On the other hand, in case that the court finds that two different sets of terms are FRAND, then the SEP holder will satisfy its FRAND undertaking towards ETSI, if it offers either one of them to the implementer. [572]

Furthermore, the Court of Appeal dismissed Defendants’ claim that imposing a worldwide licence is contrary to public policy and disproportionate. [573] In particular, the Defendants argued that this approach encourages over-declaration of patents [574] and is not compatible with the spirit of the Directive 2004/48/EC on the enforcement of intellectual property rights, [575] which requires relief for patent infringement to be proportionate. [576]

Although the Court of Appeal recognised the existence of the practice of over-declaration and acknowledged that it is a problem, it held that this phenomenon cannot justify “condemning” SEP holders with large portfolios to “impossibly expensive” litigation in every territory in respect of which they seek to recover royalties. [577] The court also found that there was nothing disproportionate about the approach taken by the High Court, since the Defendants had the option to avoid an injunction by taking a licence on the terms which the court had determined. [578]


2. Non-discrimination

The Court of Appeal rejected the Defendants’ argument [579] that the non-discrimination component of Claimant’s FRAND undertaking towards ETSI obliges the Claimant to offer to the Defendants the same rates as those contained in the licence granted to Samsung. [580]

The Court of Appeal made clear that the obligation of the SEP holder not to discriminate is, in principle, engaged in the present case, since the Claimant’s transaction with the Defendants is equivalent to the licence it granted to Samsung. [581] In the court’s eyes, when deciding whether two transactions are equivalent one needs to focus first on the transactions themselves. Insofar, differences in the circumstances in which the transactions were entered into, particularly economic circumstances, such as the parties’ financial position [582] or market conditions (e.g. cost of raw materials), cannot make two otherwise identical transactions non-equivalent (releasing, therefore, the patent holder from the obligation not to discriminate). Changes in such circumstances could only amount to an objective justification for a difference in treatment. [583]

Considering the specific content of the SEP holder’s respective obligation, the Court of Appeal agreed with the High Court’s finding that the non-discrimination element of a SEP holder’s FRAND undertaking does not imply a so-called “hard-edged” component (imposing on the patent holder an obligation to offer the same rate to similarly situated implementers). [584] It argued that the “hard-edged” approach is “excessively strict” and fails to achieve a balance between a fair return to the SEP owner and universal access to the technology. [585] It could have the effect of compelling the SEP holder to accept a level of compensation for the use of its invention which does not reflect the value of the licensed technology and, therefore, harm the technological development of standards. [586]

Furthermore, the “hard-edged” discrimination approach should be rejected also because its effects would result in the insertion of the “most favoured licensee” clause in the FRAND undertaking. In the view of the Court of Appeal, the industry would most likely have regarded such a clause as inconsistent with the overall objective of the FRAND undertaking. [587]

Conversely, the Court of Appeal followed the notion described by the High Court as the “general” non-discrimination approach: [588] the FRAND undertaking prevents the SEP holder from securing rates higher than a “benchmark” rate which mirrors a fair valuation of its patent(s), but it does not prevent the patent holder from granting licences at lower rates. [588] For determining the benchmark rate, prior licences granted by the SEP holder to third parties will likely form the “best comparables”. [589]

The Court of Appeal argued that the “general” approach is in line with the objectives of the FRAND undertaking, since it ensures that the SEP holder is not able to “hold-up” implementation of the standard by demanding more than its patent(s) is worth. [590] However, the FRAND undertaking does not aim at leveling down the royalty owed to the SEP holder to a point where it no longer represents a fair return for its patent(s), or to removing its discretion to agree royalty rates lower than the benchmark rate, if it chooses to do so. [590]

In this context, the Court of Appeal made clear that it does not consider differential pricing as per se objectionable, since it can in some circumstances be beneficial to consumer welfare. [591] The court sees no value in mandating equal pricing for its own sake. On the contrary, once the hold-up effect is dealt with by ensuring that licences are available at the benchmark rate, there is no reason for preventing the SEP holder from charging less than the licence is worth. [591] Should discrimination appear below the benchmark rate, it should be addressed through the application of competition law; as long as granting licences at rates lower than the benchmark rate causes no competitive harm, there is no reason to assume that the FRAND undertaking constrains the ability of the SEP holder to do so. [592]


3. Abuse of dominant Position / Huawei v ZTE

The Court of Appeal further rejected Defendants’ argument that, by bringing the infringement proceedings prior to fulfilling the obligations arising from the Huawei judgment, the Claimant abused its dominant market position in violation of Article 102 TFEU. [593]

To begin with, the Court of Appeal confirmed the finding of the High Court that the Claimant held a dominant market position and dismissed the respective challenge by the latter. [594] It did not find any flaw in the High Court’s view that the SEP holder has a 100% market share with respect to each SEP (since it is “common ground” that the relevant market for the purpose of assessing dominance in the case of each SEP is the market for the licensing of that SEP [595] ) and that the constrains imposed upon the SEP holder’s market power by the limitations attached to the FRAND undertaking [596] and the risk of hold-out that is immanent to the structure of the respective market, [597] can either alone or together rebut the assumption that it most likely holds market power. [598]

Notwithstanding the above, the Court of Appeal held that the Claimant had not abused its market power in the present case. [599]

The court agreed with the finding of the High Court that the Huawei judgment did not lay down “mandatory conditions”, in a sense that that non-compliance will per se render the initiation of infringement proceedings a breach of Article 102 TFEU. [600] The language used in the Huawei judgment implies that the CJEU intended to create a “safe harbor”: if the SEP holder complies with the respective framework, the commencement of an action will not, in and of itself, amount to an abuse. [601] If the SEP holder steps outside this framework, the question whether its behaviour has been abusive must be assessed in light of all of the circumstances. [602]

In the court’s eyes, the only mandatory condition that must be satisfied by the SEP holder before proceedings are commenced, is giving notice to the implementer about the infringing use of its patents. [603] This follows from the clear language used by the CJEU with respect to this obligation. [604] The precise content of such notice will depend upon all the circumstances of the particular case. [604] In general, if an alleged infringer is familiar with the technical details of the products it is dealing and the SEP it may be infringing, but has no intention of taking a licence on FRAND terms, it will not be justified to deny the SEP holder an injunction, simply because it had not made a formal notification prior to the commencement of proceedings. [605]

On the merits, the court accepted the High Court’s assessment that the Claimant had not behaved abusively and particularly the finding, that the Defendants, who were in contact with the Claimant prior to the proceedings, had sufficient notice that the Claimant held SEPs which ought to be licensed, if found infringed and essential. [606]

Considering further that the respective conduct requirements were not established at the point in time, in which the infringement action was filed (since the present proceedings were initiated before the CJEU delivered the Huawei judgment), the Court of Appeal noted that it would very likely not be fair to accuse the Claimant of abusive behavior. [607] Insofar the court agreed with the respective approach developed by German courts in co-called “transitional” cases (Pioneer v Acer, [608] St. Lawrence v Vodafone [608] and Sisvel v Haier [609] ) [610] .

  • [540] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, Case-No. A3/2017/1784, [2018] EWCA Civ 2344, para. 233.
  • [541] Ibid, para. 6 et seqq.
  • [542] Ibid, para. 233.
  • [543] Ibid, para. 7.
  • [544] Ibid, paras. 8 and 137 et seqq.
  • [545] Ibid, para. 8.
  • [546] Ibid, para. 9 et seqq.; para. 31 et seqq.
  • [547] Ibid, para 17.
  • [548] Ibid, para 130.
  • [549] Ibid, para 18.
  • [550] Ibid, para 112.
  • [551] Ibid, para 291.
  • [552] Ibid, paras. 19 and 45 et seqq.
  • [553] Ibid, paras. 20 and 132 et seqq.
  • [554] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-170/13.
  • [555] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 21, paras. 211 et seqq and para. 251.
  • [556] Ibid, para. 17.
  • [557] Ibid, paras. 74 and 77 et seq.
  • [558] Ibid, para. 82.
  • [559] Ibid, para. 80.
  • [560] Ibid, para. 79 et seq.
  • [561] Ibid, para. 26.
  • [562] Ibid, para. 53.
  • [563] Ibid, para. 54 et seq., para. 59.
  • [564] Ibid, para. 56.
  • [565] Pioneer v Acer, District Court of Mannheim, judgement dated 8 January 2016, Case No. 7 O 96/14.
  • [566] St. Lawrence v Vodafone, District Court of Düsseldorf, judgement dated 31 March 2016, Case No. 4a O 73/14.
  • [567] Communication From the Commission to the European Parliament, the Council and the European Economic and Social Committee, “Setting out the EU Approach to Standard Essential Patents”, 29 November 2017, COM(2017) 712 final.
  • [568] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 74.
  • [569] Ibid, para. 111.
  • [570] Ibid, para. 128.
  • [571] Ibid, para. 121.
  • [572] Ibid, para. 125.
  • [573] Ibid, para. 75.
  • [574] Ibid, para. 92
  • [575] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (Official Journal of the EU L 195, 02/06/2004, p. 16)
  • [576] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 94.
  • [577] Ibid, para. 96.
  • [578] Ibid, para. 98.
  • [579] Ibid, para. 20 and 132 et seqq.
  • [580] Ibid, paras. 207 and 210.
  • [581] Ibid, para. 176.
  • [582] Ibid, para. 173.
  • [583] Ibid, para. 169 et seq.
  • [584] Ibid, paras. 194 et seqq.
  • [585] Ibid, para. 198.
  • [586] Ibid, para. 198.
  • [587] Ibid, para. 199.
  • [588] Ibid, para. 195.
  • [589] Ibid, para. 202.
  • [590] Ibid, para. 196.
  • [591] Ibid, para. 197.
  • [592] Ibid, para. 200.
  • [593] Ibid, para. 21, paras. 211 et seqq and para. 251.
  • [594] Ibid, para. 212.
  • [595] Ibid, para. 216.
  • [596] Ibid, para. 219.
  • [597] Ibid, para. 220.
  • [598] Ibid, para. 229.
  • [599] Ibid, para. 284.
  • [600] Ibid, para. 269.
  • [601] Ibid, para. 270.
  • [602] Ibid, para. 269 and 282.
  • [603] Ibid, para. 253 and 281.
  • [604] Ibid, para. 271.
  • [605] Ibid, para. 273.
  • [606] Ibid, para. 284
  • [607] Ibid, para. 275
  • [608] See above
  • [609] Sisvel v Haier, Higher District Court of Düsseldorf, judgement dated 30 March 2017, Case No. 15 U 66-15.
  • [610] Unwired Planet v Huawei, UK Court of Appeal, 23 October 2018, para. 279.

Updated 6 十月 2020

无线星球诉华为 暨 康文森诉华为及中兴通讯

英国法院判决
26 八月 2020 - Case No. [2020] UKSC 37

A. 事实

本案中,英国最高法院(以下称“最高法院”)针对就两个个别独立案件所提出的上诉进行判决。这两个案件均涉及由欧洲电信标准协会(ETSI)所制定的对实施无线电通信技术标准必不可少(或潜在不必可少)的专利(标准必要专利或SEP)的侵权行为。根据欧洲电信标准协会知识产权政策的要求,该协会鼓励标准必要专利持有人对其愿依照公平、合理且无歧视(FRAND)的条款与条件向标准实施人提供其所持有的标准必要专利做出承诺。

1. 无线星球诉华为

第一个案件涉及一家拥有一组符合数项无线通信技术标准的标准必要专利组合的公司—— 无线星球国际有限公司(Unwired Planet International Limited,以下称“无线星球”)与另一家中国制造商和供应商——华为集团旗下的两家公司之间,关于使用此项标准的手机设备以及一些其他项目的纠纷。

2014年3月,无线星球于英格兰和威尔士高等法院(以下称“高等法院”)起诉华为、三星以及另一家公司侵害其所持有的五项英国标准必要专利。在这些诉讼进行的过程中,无线星球向华为提出了几项许可要约,然而最终并未能达成协议。另一方面,无线星球在诉讼进行中与三星公司签署了许可协议。

高等法院于2017年4月5日对华为核发了禁令,禁令的期限直到该公司与无线星球签订了法院认为符合FRAND原则的特定条款的全球许可协议为止 [611] 。华为对该决定提起了上诉,在上诉程序确定之前,高等法院中止了对该禁令的执行。

英国上诉法院(以下称“上诉法院”)于2018年10月23日驳回了华为对高等法院判决的上诉 [612] 。随后,华为向英国最高法院(以下称“最高法院”)提出了上诉。

2. 康文森诉华为及中兴通讯 第二起案件涉及一家专利许可公司——康文森无线许可有限公司(Conversant Wireless Licensing S.A.R.L.,以下称“康文森”)与华为以及中兴通讯集团(ZTE,以下称“中兴通讯”)旗下的两家公司之间的纠纷。中兴通讯是一家中国公司,生产网络设备、手机和消费电子产品,并销往世界各地。

康文森于2017年向高等法院提起了对华为以及中兴通信的侵权诉讼。除了一些其他的主张外,康文森还向高等法院提出了对其所持有的四项英国专利权侵权行为的禁令救济,同时也要求高等法院就其所持有的标准必要专利组合确定符合FRAND的全球许可条款。华为和中兴通信都对高等法院是否具备审理和裁决此案的管辖权提出异议,于此同时,并在中国提起诉讼,对康文森所持有的中国专利的有效性进行挑战。

高等法院于2018年4月16日确认了其对包括确定该专利组合的全球许可条款在内的,此一系列争议的管辖权限 [613] 。华为和中兴通信对高等法院的判决不服并提起上诉。 2019年1月30日,上诉法院驳回了该上诉,并以该侵权行为侵害英国专利为由,确认了英国法院对包含确定全球许可条款在内的各项纷争的管辖权 [614] 。华为和中兴通信对此判决不服,从而再向最高法院提起上诉。

根据目前的判决 [615] ,最高法院全体一致同意驳回了这两个案件的上诉。

B. 法院的论理

最高法院指出并解决了上诉中提出的如下五个问题:

1. 管辖权

最高法院在其判决中确认,英国法院对跨国标准必要专利组合的全球FRAND许可条款判定事宜有管辖权,因此,如果标准实施人拒绝签订此类许可,则英国法院有权基于其中的英国标准必要专利授予禁令 [616]

法院认为,根据欧洲电信标准协会知识产权政策,标准必要专利持有人并未被禁止于各国家法院系统中寻求禁令救济[7]。相反地,透过国家法院授予的禁令来阻止侵权行为的可能性被认为是“知识产权政策寻求平衡下的必要组成部分”,借此并能够确保实施人有动力去进行FRAND许可谈判 [617]

除了有权基于英国专利授与禁令外,英国法院也有权决定涉及全球范围的FRAND许可条款。最高法院认为,欧洲电信标准协会知识产权政策所确立的“合同关系”赋予英国法院各自行使管辖权的权利 [618]

在最高法院看来,欧洲电信标准协会知识产权政策订定时即“有意使其具备国际效力”,因为此政策的制定即是为了尝试“反映电信行业中的商业惯例” [619] 。在电信行业中,通常的做法是,即便是在不明确知道究竟有多少被许可的专利是有效的或者是侵权的的情况下,仍然以专利组合为单位签署全球范围的许可 [620]

此原因一方面在于,专利持有人无法在其宣告该专利具备(或可能具备)标准必要性之时,就预测到在接下来标准不断发展的过程中,该专利将持续有效或者产生侵权 [620] ;另一方面,实施人在实施标准之时也不会知道其中哪些专利是有效的或者哪些专利是侵权的 [620]

这种“不可避免的不确定性”,是通过以一种“基本上能够反映专利组合中必然含有许多未经验证的专利此一性质“的价格[10]而缔结一次性涵盖全球范围内专利持有人所持有的全部已宣告的标准必要专利组合的许可协议来解决的。借由获取这种许可,实施人购买“实施标准的权利”与“确定性”,确保其有权使用符合该项标准的所有技术 [620]

由于依照商业惯例,FRAND许可必然包括“未经验证”的专利,最高法院认为,确定涵盖全球范围的许可条款和条件并不意味着必须评估其所涵盖的所有专利的有效性。因此,在设定全球范围的专利组合许可条款时,英国法院并不会就外国专利的有效性以及是否侵权这一实际上应由授予该项专利的各国国家法院享有专属管辖权的问题于进行裁决 [621] 。因此,通常来说,实施人“保留在各相关外国法院对这些专利或这些专利的样本提出挑战,并借此要求专利持有人提供一个对许可费率进行调整的机制的权利”将是“公平合理的” [622]

在此范围内,最高法院强调,上述见解并非英国法院独有,而与其他司法管辖区,特别是美国、德国、中国和日本的相关判例所采取的见解一致 [623]

2. 合适的法庭(便利法庭原则)

最高法院审查的第二个问题同样涉及英国法院的管辖权问题。在康文森诉华为一案中,被告抗辩称,在中国法院对康文森所持有的中国专利的有效性做出裁决之前,英国法院本应该拒绝其管辖权,转而选择由中国法院进行管辖,或者至少应该中止该诉讼程序。 然而,最高法院认为,英国法院没有义务拒绝其管辖权转而选择由中国法院进行管辖 [624] 。所谓的“便利法庭原则”在本案中不适用,其原因在于,与英国法院不同的是,由于本案当事人并没有达成协议由中国法院对涵盖全球范围的FRAND专利组合许可条款的决定等相关事项行使管辖权,中国法院于此类争议上没有管辖的权利 [624] 。此外,法院认为,在目前的情况下,可能无法合理预期康文森会同意将管辖权授予中国法院 [624]

在最高法院的眼中,涉及本次争议的英国法院也没有义务为了等待进行中的中国专利有效性诉讼的结果而中止其诉讼程序[15]。其原因在于,此有效性诉讼仅涉及康文森所持有的中国专利的有效性,而在英国提起的这一诉讼所涉及的却是对康文森所持有的全球范围内标准必要专利组合的FRAND许可条款的确定 [625]

3. 无歧视

最高法院审查的第三个问题涉及对FRAND承诺中无歧视义务的解释。在此前的诉讼程序中产生了一个争议点,即无线星球是否会因为其向华为所提供的许可条款比起审判开始后与三星达成协议的条款更为不利而违反了FRAND的无歧视义务。

最高法院对高等法院以及上诉法院就此问题的决定均表示赞同,并指出此一区别不会构成对FRAND的无歧视义务的违反。法院解释到,FRAND并不意味着所谓的“严格无歧视义务”而要求专利持有人向所有条件相似的被许可人提供完全相同或者相似的条款 [626]

根据欧洲电信标准协会知识产权政策(第6.1条)的要求,专利持有人必须承诺按照FRAND条款提供许可。在最高法院看来,这是一个“单一且整体性的义务”,而并非三项各自独立的义务,要求许可条款分别应公平、分别应合理、分别应无歧视 [627] 。因此,这些条款和条件“在通常情况下应能够由任何市场参与者以公平的市场价格获得”,并且应能够反映标准必要专利组合的“真实价值”,同时不须根据特定被许可人的个别特征进行调整 [628]

最高法院更进一步地明确表示,在欧洲电信标准协会知识产权政策要求下所进行的FRAND承诺并不代表所谓的“最惠许可”条款而表示专利持有人被要求必须以相当于最惠许可条款的许可条件向所有类似情况的被许可人授予许可 [629] 。在仔细查看欧洲电信标准协会知识产权政策的创建过程后,法院认为欧洲电信标准协会先前曾明确地表示拒绝将此类条款纳入FRAND承诺的提案 [630]

此外,法院指出,有关差别费率会损害所涉及的私人或公共利益的“一般性推定”并不存在 [631] 。相反地,在某些情况下,标准必要专利持有人选择向特定被许可人提供低于基准费率的许可费这一选择在商业上是合理的 [632] 。举例言之,此种做法适用于所谓的“先行者优势”,法院承认,与第一位被许可人达成费率较低的许可协议具备“经济上的合理性“以及”商业上的重要性“,因为如此一来除了能为标准必要专利创造初始收入,更可以透过许可协议的签署于市场中对专利组合进行“验证”,并促进未来许可协议的达成[22]。此外,对于所谓的“减价销售”而言,情况亦是如此。在这种情况下,专利持有人为了确保其能够在市场上生存而被迫以较低的费率进行许可,而当初在无线星球与三星签署许可协议之时即是属于这种情况 [633]

4. 滥用市场支配地位/华为框架

最高法院审查的第四个问题是,无线星球是否会因为其对华为提起了侵权诉讼,而违反《欧洲联盟运作条约》第102条所称的滥用了市场支配地位,并且因此不能主张禁令救济。尤其是,华为曾经提出抗辩指称,由于无线星球并未遵守欧洲联盟法院于华为诉中兴案中所确立的行为义务(华为判决或华为框架),因此其禁令救济主张应予否决 [634] 。 然而,最高法院认为情况并非如此 [635] 。在法院看来,华为判决确立了一项义务,即专利持有人在提出禁令救济诉讼前,必须就标准实施人对涉案标准必要专利的侵权使用行为向其进行通知,而如果标准必要专利持有人违反了此项义务,则将构成《欧洲联盟运作条约》第102条下的滥用行为[26]。这项义务的“性质”将取决于每个个案的具体情况来进行个案判断 [636] 。本案中,法院认为,无线星球在提起本侵权诉讼之前已经对华为进行了适当的通知 [637]

有关华为判决所确立的其他各项义务,最高法院赞同了先前高等法院和上诉法院的观点,即认为华为框架并不是“强制性的”,而只是建立了一个“路线图”,如果专利持有人能严格遵循此一路线图行事,则其寻求禁令救济的权利将能够获得保障,而不会产生违反第102条的风险 [638] 。此外,华为判决还提供了“多项能帮助评估许可各方是否有按照FRAND条款达成许可协议的意愿此一核心问题的参考点” [637] 。话虽如此,最高法院认为,无线星球一直以来都有按照FRAND条款对华为进行许可的意愿,因此不能认为其表现出滥用行为 [637]

5. 损害赔偿而非禁令救济?

最高法院审查的第五个(也是最后一个问题)涉及对标准必要专利侵权行为的适当补偿措施。在最高法院的上诉程序中,就无线星球所持有的标准必要专利所遭受侵权损害此一事实而言,最适当且符合比例原则的补偿措施应是判给损害赔偿金而不是核发禁令此一抗辩首次被提出。

最高法院认为,在本案中,以损害赔偿取代禁令救济的做法没有依据 [639] 。无线星球和康文森都不可能利用“申请禁令救济”作为向华为或中兴收取“过高费用”的威胁手段,因为他们只有在提交了其条款可能符合法院认定的FRAND许可要约后,才有权获得强制令 [640]

此外,法院认为,判给损害赔偿金“不太可能能够恰当地替代因不能核发禁令所可能造成的损失”,因为如此一来标准必要专利持有人就必须就每一个个别专利在各个国家逐一对实施人提起专利诉讼,而这被认为是“不切实际的” [641] 。更有甚者,标准实施人将“产生动机持续性地为侵权行为,直到其就逐个专利在逐个国家中被迫支付许可费为止”,而这将使得FRAND许可变得更加困难,正如同最高法院所指出的,对侵权者而言,主动取得许可不具备“经济上意义” [642]

另一方面,禁令救济“可能是更有效的补救方法”,通过对各种侵权行为的全面性禁止,禁令带给侵权人的可能只剩下接受标准必要专利持有人所提供的FRAND许可条款这一“有限的选择”,“如果其希望能继续留在市场当中” [642] 。出于上述原因,最高法院强调,禁令救济是“维持司法公正所必需的” [643]

  • [611] Unwired Planet v Huawei, High Court of Justice for England and Wales, judgment dated 5 April 2017, Case No. [2017] EWHC 711(Pat)。
  • [612] Unwired Planet v Huawei, UK Court of Appeal, judgment dated 23 October 2018, Case No. [2018] EWCA Civ 2344。
  • [613] Conversant v Huawei and ZTE, High Court of Justice for England and Wales, judgment dated 16 April 2018, Case No. [2018] EWHC 808 (Pat)。
  • [614] Conversant v Huawei and ZTE, UK Court of Appeal, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [615] Unwired Planet v Huawei and Conversant v Huawei and ZTE, UK Supreme Court, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38。
  • [616] 同上注, 段 49 及以下。
  • [617] 同上注, 段 61。
  • [618] 同上注, 段 58。
  • [619] 同上注, 段 62。
  • [620] 同上注, 段 60。
  • [621] 同上注, 段 63。
  • [622] 同上注, 段 64。
  • [623] 同上注, 段 68-84。
  • [624] 同上注, 段 97。
  • [625] 同上注, 段 99 及以下。
  • [626] 同上注, 段 112 及以下。
  • [627] 同上注, 段 113。
  • [628] 同上注, 段 114。
  • [629] 同上注, 段 116。
  • [630] 同上注, 段 116 及以下。
  • [631] 同上注, 段 123。
  • [632] 同上注, 段 125。
  • [633] 同上注, 段 126。
  • [634] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13。
  • [635] Unwired Planet v Huawei and Conversant v Huawei and ZTE, UK Supreme Court, judgment dated 30 January 2019, Case No. [2019] EWCA Civ 38, 段 149 及以下。
  • [636] 同上注, 段 150。
  • [637] 同上注, 段 158。
  • [638] 同上注, 段 157 及 158。
  • [639] 同上注, 段 163。
  • [640] 同上注, 段 164。
  • [641] 同上注, 段 166。
  • [642] 同上注, 段 167。
  • [643] 同上注, 段 169。