Sisvel v Haier, Higher Regional Court (Oberlandesgericht) of Düsseldorf

13 January 2016 - Case No. 15 U 65/15

http://caselaw.4ipcouncil.com/german-court-decisions/olg-dusseldorf/sisvel-v-haier-olg-dusseldorf

1. Facts
   The proceedings concerned the subsequent application of Defendant in Case No. 4a O 144/14 to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. As to the facts of the case, it can be referred to the deliberations under point “1b” of the previous summaries.
   Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous. If the decision, as in the present case, has been declared provisionally enforceable subject to the provision of security by Claimant suspension of execution will only be granted in exceptional circumstances. Sisvel v Haier [2016], Higher Regional Court of Düsseldorf, para. 2
2. Court’s reasoning
    
   1. The SEP owner’s licensing offer
      The question of whether granting a portfolio license would be FRAND was referred to the subsequent appeal proceedings. [3]
   2. The standard implementer’s reaction
      More importantly, the Court found that the standard user is not required to respond to a license offer of the SEP proprietor if the terms of that offer are not FRAND. In other words, the subsequent obligations of the alleged infringer derived from Huawei only arise when and provided that the SEP proprietor submitted an offer on FRAND terms. As the lower court had not determined whether the conditions of the proprietor’s license offers were FRAND, the Court considered this part of the lower court’s decision to be manifestly erroneous. Given this flaw in the lower court’s reasoning, it was left undecided by the Court whether a license offer submitted in the course of the oral hearings can fulfill the Huawei requirements. [4]
3. Other important issues
   For the purposes of the present proceedings, the Court explicitly stated that there is—in principle—no reason to treat patent assertion entities, such as Claimant, in a different manner than other market participants. [5]

• [2] Sisvel v Haier [2016], Higher Regional Court of Düsseldorf, para. 2
• [3] Ibid, para. 28
• [4] Ibid, para. 23-30
• [5] Ibid, para. 12