Case Law post CJEU ruling Huawei v ZTE

Sisvel v Haier

30 March 2017 - Case No. I-15 U 66/15

http://caselaw.4ipcouncil.com/german-court-decisions/olg-dusseldorf/sisvel-v-haier-olg-dusseldorf-1

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. [1] 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 [2] and that the claimant had not made a license offer on FRAND conditions. [3] 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. [4] 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’). [5] 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). [6]

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. [7] 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. [8] 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. [8] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [9] because the patent in question was related to data transfer, an essential function of the GPRS standard. [10]

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). [11] 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. [12] 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. [12] 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 [13]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [14] 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’). [14]

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. [15] 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. [16] 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’). [16] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [16]

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. [17] 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. [18] 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’). [18] 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. [18] 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 [19] because it discriminated against the defendants. [20] 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. [21]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [22] SEP owners have discretion regarding the license fees that they charge. [23] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [24] Further, license conditions can be abusive only if they are significantly different between licensees. [24] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [25] The burden of proof for such substantially unequal treatment lies with the defendant, [26] whilst the onus is on the claimant to prove that this unequal treatment is justified. [26] 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. [26] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [27] without having a proper justification. [28] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [29] or that these discounts were a result of the particularities of the case. [30]

  • [1] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
  • [2] 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.
  • [3] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
  • [4] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
  • [5] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
  • [6] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
  • [7] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
  • [8] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
  • [9] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
  • [10] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
  • [11] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
  • [12] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
  • [13] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
  • [14] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
  • [15] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
  • [16] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
  • [17] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
  • [18] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
  • [19] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
  • [20] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
  • [21] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
  • [22] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
  • [23] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
  • [24] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
  • [25] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
  • [26] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
  • [27] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
  • [28] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
  • [29] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
  • [30] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.