Huawei対ZTE事件CJEU判決後の判例法
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Preliminary remarks

The following summaries relate to court decisions rendered after the Court of Justice of the European Union (CJEU or ECJ) handed down its ruling in case C170/13 Huawei v ZTE on 16 July 2015.

The summaries focus on the core issue raised by the Huawei decision, namely the conditions under which a standard essential patent holder may seek injunctive relief for infringement of his patents or where a standard implementer can raise a competition law-based defense to an action brought by a SEP holder. Occasionally, related and additional aspects of a decision are included into the summary because of their importance for understanding the context of FRAND licensing. In general, though, non-Huawei-related issues are omitted, such as, for instance, general procedural or patent law aspects (venue, patent description, validity, infringement, etc.).

However, it is likely that some pre-Huawei decisions will continue to be of relevance, inter alia where national courts deem the Huawei-rules inapplicable. [1]

With regard to the jurisdictions covered, the primary goal is to map the German situation but, depending on their accessibility, some decisions from other EU Member States are included, too.

  • [1] Possible examples are the decisions LG Düsseldorf, judgment of 22 January 2014 - Case No. 4a O 127/14; LG Mannheim, judgment of 10 March 2015 - Case No. 2 O 103/14; LG Düsseldorf, judgment of 26 March 2015 - Case No. 4b O 140/13; OLG Karlsruhe, judgment of 23 April 2015 - Case No. 6 U 44/15; LG Düsseldorf, judgment of 11 June 2015 - Case No. 4a O 44/14; LG Düsseldorf, judgment of 11 June 2015 - Case No. 4a O 45/14.

CJEUの決定


Huawei 対 ZTE

16 7月 2015 - Case No. C-170/13

A. 内容

原告Huawei Technologies Co. Ltd.は、欧州電気通信標準化機構(ETSI)が開発したLTEE無線通信規格(標準必須特許又はSEP)のプラクティスに関して必須のものとして宣言済みの特許を保有している [2] 。2009年3月、原告は、当該特許を実施者が公平、合理的かつ非差別的(Fair, Reasonable and Non-Discriminatory:FRAND)条件で利用できるようにすることをETSIに誓約した [3]

被告ZTE Corp.及びZTE Deutschland GmbHは、LTE規格にかかわる複数のSEPを保有しており [4] 、とりわけ、ドイツにおいては、LTE準拠製品の上市も行っている [5]

2010年11月から2011年3月の間、両当事者は、原告のSEPポートフォリオのライセンス許諾に関し協議していた [5] 。原告が合理的なロイヤルティとみなした金額を示したのに対し、被告は、クロスライセンス契約の締結を求めた [6] 。しかしながら、ライセンス契約の申出は決着しなかった [6]

2011年4月、原告は、被告を相手取り、差止命令、それまでの使用にかかわる計算書の提出、製品のリコール及び特許侵害にかかわる損害賠償を求めて、デュッセルドルフ地方裁判所(地方裁判所)に訴訟を提起した [7] [6]。

地方裁判所は、訴訟手続を停止し、EU機能条約(TFEU)第267条に基づく先決裁定を得るため欧州司法裁判所(CJEU)に付託した。簡潔に言えば、地方裁判所は、SEP保有者がSEP実施者に対する禁止的差止命令を求めて訴訟を提起することが支配的地位の濫用でありTFEU第102条に反するとの問題に関し、ドイツ連邦裁判所と欧州委員会が相反する立場を取っていると見られる点に着目した [8] 。オレンジブック判決において、ドイツ連邦裁判所は、SEPにかかわる権利侵害訴訟において、被告は、ライセンス契約締結にかかわる無条件かつ公正な申出を特許保有者に提示しており、過去の使用行為にかかわる計算書を提出しており、かつ、それにより生じるロイヤルティにつき保証金を支払っている限り、TFEU第102条に基づき防御する(それにより差止命令を回避する)権利を有すると判示した [9] 。これに対し、欧州委員会は、複数のEU加盟国においてサムスンがAppleを相手取り権利行使に関連して提起した訴訟において、特許保有者のFRAND誓約に従いFRAND条件でのライセンス契約について協議する意思を被告が実証している限り、SEPに関し差止命令による救済手段を求める訴訟が原則としてTFEU第102条違反になるとの見解を示した [10]

現在の判決をもって、CJEUは、SEP保有者がTFEU第102条違反を生じることなく特許実施者に対し禁止的差止命令を求める訴訟を申し立てることのできる条件を確立した。とりわけ、CJEUは、SEP保有者がFRAND条件にて特許を実施できるようにする取消不能の引受けを行った場合、訴訟提起前に次の各条件を充足している限り、差止命令又は侵害製品のリコールを求めることにより支配的地位を濫用したことにならないと裁定した。

  • まず実施者に対し、「当該特許を指し示し、何が侵害にあたるのかを明示することにより」特許侵害を通知している。
  • 次に、申立てを受けた侵害者がFRAND条件でライセンス契約を締結する意思をあらわした場合、「当該条件でのライセンス申出について、とりわけ、そのロイヤルティ及び計算方法を明示した上で、当該侵害者に書面で明確に提示している」 [11]

これに対しSEP実施者は、特許保有者が禁止的差止命令又は製品リコールを求めた訴訟について、SEP保有者の申出に遅滞なく回答した場合に限り、当該訴訟の不適切性を訴えることができる [12] 。実施者は、当該申出を拒絶した場合、次の行為をしなければならない。

  • 「FRAND条件に対応する明示的なカウンターオファーを、速やかに、かつ、書面にて」特許保有者に送付し [13] 、かつ、
  • カウンターオファーが拒絶された場合、「銀行保証又は必要な預り金等を差し出す等して」、特許の実施に必要な担保を差し出す [14]

CJEUは、過去の使用行為に関しSEP保有者によりなされる損害賠償請求又は計算書提出の請求に上記の枠組みを適用しないことを明確にした。このような請求にかかわる行為は、標準的な準拠製品の上市又は市販継続が可能かどうかを左右するものでないため、TFEU第102条の侵害にあたらない [15]

B. 判決理由

CJEUは、SEP保有者の基本的な知的財産権(IPR)を司法により有効に保護することと、自由で歪みのない競争における公益との均衡を保つ必要性を強調した [16]

両当事者は、原告の市場における支配的地位の有無については争っていなかったため、裁判所の分析ではTFEU第102条に定める「濫用」の有無に焦点が当てられた [17] 。CJEUによれば、IPRの行使が支配的地位を保有する引受行為であるとしても、「元来」濫用になりえない [18] 。さらには、IPRの行使行為が支配的地位の濫用を構成するのは、「例外的な状況」に限られる [19]

SEPが関係する事例については、他のIPR関連事例と区別する。第一に、特許がSEPにあたる場合、その特許保有者は、「競合会社の製品の上市又は市販継続を妨げ、これにより、問題の製品の製造を留保できる」ことになる [20] 。これに加え、FRAND誓約により、特許保有者は、当該規格を実装する第三者に対しFRAND条件でSEPを利用できるとの「正当な期待」をもたらしている[19]。「正当な期待」がもたらされたことにより、権利侵害を訴えられた特許実施者は、SEP保有者がFRAND条件でのライセンス許諾を拒絶していた場合、原則として、TFEU第102条に依拠して防御することができる [21]

SEP保有者が法的手続を頼ってIPRの保護を求める権利を剥奪されることはないが、CJEUは、FRANDの引受けが、差止命令による救済手段を求めるに際し特定要件を遵守する義務をSEP保有者に負わせる根拠となると判示した [22] 。特に、TFEU第102条違反を回避するには、SEP保有者は、次の条件を満たさなければならない。すなわち、(a) 禁止的差止命令を求める訴訟を提起する前に、「当該特許を指し示し、何が侵害にあたるのかを明示することにより」侵害について実施者に通知しなければならず [23] 、かつ、(b) 実施者が当該ライセンス契約を締結する意思を表明している場合、FRAND条件でのライセンス申出について、「そのロイヤルティ及び計算方法」を明示した上で、当該実施者に書面で明確に提示しなければならない [24] 。この状況において、CJEUは、SEP保有者がそのような申出をするよう期待されうると認めた。これは、原則として、一般向けの規格ライセンス契約は存在せず、また、SEP保有者が第三者と締結した既存契約の条件は公開されていないことから、被疑侵害者に比べ非差別的な条件に従った申出であるかどうか確認する方が有効であるためである [25]

その一方で、(被疑)侵害者は、SEP保有者の申出に対し、注意を払った上で「業界で認められた商慣習に従い、誠実に」対応しなければならない[11]。応じるかどうかは、とりわけ「引き延ばし戦略」が黙示されない「客観的要素」に基づき確証しなければならない。 侵害者は、条件案において特許保有者のFRAND誓約がなされていないとしてSEP保有者のライセンス申出を拒絶することとした場合は、SEP保有者にFRAND条件に基づき書面による明示的なカウンターオファーをSEP保有者に送付しなければならない[12]。当該カウンターオファーが拒絶された場合において、(被疑)侵害者がライセンスを取得せずに当該SEPを既に使用しているときは、当該(被疑)侵害者は、業界で認められた商慣習に従い、銀行保証又は必要な預り金等を差し出す等して、適切な担保を差し出す義務を負う [14] 。担保の算定においては、とりわけ、「過去のSEP使用件数」を含めなければならず、被疑侵害者は、当該使用行為にかかわる計算書を提出できるよう用意しなければならない [14] 。(被疑)侵害者によるカウンターオファーにもかかわらず合意に至らなかった時点で、CJEUは、両当事者が「共通合意」により、「独立の第三者の遅滞なき決定により」ロイヤルティを決定するよう要請するオプションを有することを指し示した [26]

最後に、CJEUは、(被疑)侵害者がライセンス契約の協議と並行してSEP保有者の特許の有効性若しくは必須性又はこれを実際に使用することにつき異議を申し立てるか、将来これを行う権利を留保することができることを明確にした [27]

 

  • [2] Huawei対ZTE、欧州司法裁判所2015年7月6日判決、第22節。
  • [3] 同判決、第22節。
  • [4] 同判決、第40節。
  • [5] 同判決、第24節。
  • [6] 同判決、第25節。
  • [7] 同判決、第27節。
  • [8] 同判決、第29節以下。
  • [9] 同判決、第30節以下。
  • [10] 同判決、第34節以下。
  • [11] 同判決、第77節。
  • [12] 同判決、第65節。
  • [13] 同判決、第66節。
  • [14] 同判決、第67節。
  • [15] 同判決、第72節以下。
  • [16] 同判決、第42節。
  • [17] 同判決、第43節。
  • [18] 同判決、第46節。
  • [19] 同判決、第47節。
  • [20] 同判決、第53節。
  • [21] 同判決、第53節以下。
  • [22] 同判決、第58節以下。
  • [23] 同判決、第61節。
  • [24] 同判決、第63節。
  • [25] 同判決、第64節。
  • [26] 同判決、第68節。
  • [27] 同判決、第69節。

ドイツ裁判所の決定


Cases from Federal Court of Justice - BGH -


Sisvel 対 Haier、ドイツ連邦最高裁判所(Bundesgerichtshof)

5 5月 2020 - Case No. KZR 36/17

A. 事実

原告であるSisvelは、各種無線通信規格の実施において必須な(と見込まれる)ものとして宣言された特許(標準必須特許、又はSEP)を保有する。

被告は、中国に本社を置くHaier groupのドイツ及びフランスの子会社である(Haier)。Haierグループは、とりわけ、GPRS規格に適合した電子機器の製造及びマーケティングを行なっている。

2012年12月20日、Sisvelは、Haier groupの親会社(Haier China)に対し、SisvelのSEPの使用侵害について通知した。Sisvelは、そのポートフォリオに包含されたおよそ450件の特許の一覧を提示すると共に、自社のSEPについてライセンスの申出を行う旨をHaierに知らせた。

2013年4月10日、Sisvelは、公平、合理的、かつ非差別的(FRAND)な条件にて規格ユーザにSEPの利用を認めることを欧州電気通信標準化機構(「ETSI」)に確約した。

2013年8月及び11月に、Sisvelは、Haier Chinaに対し、自社のライセンスプログラムに関する情報を記した追加の書簡を送付した。Haier Chinaは、2013年12月のみ、Sisvelに対して回答し、Sisvelと「正式な交渉(formal negotiation)」を行うことを望んでいる旨を明示すると共に、これまでのやりとりでSisvelが提示した割引の可能性に関する情報の提供を求めた。

2014年8月、Sisvelは、Haierに対してライセンスの申出を行ったが、この申出は、2014年9月に拒絶された。その直後、Sisvelは、Haierに対し、GPRS規格に従い、データ送信技術を対象としたSEPに基づき、デュッセルドルフの地方裁判所(本地方裁判所)に権利侵害訴訟を申し立てた(係争特許)。これに対応して、Haierは、2015年3月に、係争特許の無効の訴えを求め、ドイツ連邦特許裁判所に訴訟を提起した。

2015年11月3日に、本地方裁判所は、Haierに対して差止命令を出した [28] 。本地方裁判所はまた、侵害製品のリコール及び破棄を命じた。さらに本地方裁判所は、実体的事項に関するHaierの損害賠償責任を認めると共に、Haierに対して、Sisvelに対する侵害製品の販売にかかわる完全かつ詳細な会計書類の提示を命じた。

Haierは、この決定を上訴すると共に、本地方裁判所により下された差止命令の執行の停止を命じるよう、デュッセルドルフ高等裁判所(Higher District Court of Duesseldorf)(本上訴裁判所)に要請した。2016年1月、本控訴裁判所は、それぞれの命令を言い渡した [29]

上訴手続きにおいて、Haierは、とりわけ、Sisvelが侵害訴訟を提起した後の、Huawei対ZTE事件の2015年7月に下された判決(Huawei判決)において欧州司法裁判所(CJEU)がSEP保有者に課した行動要件について、本地方裁判所が、これを適切に考慮しなかった旨を主張した [30] 。 本控訴裁判所での手続き中、2016年1月16日に、Haierはさらに、ドイツの裁判所が係争特許の有効性及び侵害性を最終的に認めた場合のみ、SisvelからFRANDライセンスを受けるつもりであることを宣言した。2016年3月23日に、Haierは、Sisvelに別の書簡を送り、状況が何も変わっていないことを示した。さらに、Haierは、Sisvelの全ての特許に関するクレームチャート及びロイヤルティの算定についての追加の情報を要請した。2016年12月、Sisvelは、Haierに対して新たなライセンスの申出を行ったが、この申出はまた拒絶された。

2017年3月30日付の判決により、本控訴裁判所は、Haierの上訴を部分的に認めた [31] 。本控訴裁判所は、実体的事項に関するHaierの損害賠償責任及び会計書類の提示義務を確認した。しかしながら、本上訴裁判所は、Haierが侵害製品のリコール及び破棄についていかなる義務も負うものではないと判断した。Sisvelが、特にHaierに対してFRANDライセンスの申出を行わなかったことにより、Huawei判決に基づく自らの義務を遵守しなかったからである。本上訴裁判所は、両当事者が本件については和解することに合意したため、差止命令による救済の請求について決定を下す必要はなかった。係争特許が2016年9月に満了となるからである。Sisvelは、本控訴裁判所の決定に対して不服申し立てを行った。

2017年10月、係争特許の特定のクレームの範囲を狭め、別途その有効性を確認した [32] 。2020年3月に、ドイツ連邦最高裁判所(FCJ又は本裁判所)は、第二審として本決定を概ね容認した [33]

2020年5月5日付のこの判決により  [34] (引用元 https://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=3abd1ba29fc1a5b129c0360985553448&nr=107755&pos=0&anz=1)、FCJは、本控訴裁判所の判決を破棄した。第一審における本地方裁判所の裁定は、Sisvelの損害賠償請求及び情報及び会計書類の提示請求に関して維持された。Sisvelによる侵害製品のリコール及び破棄についての請求は、Haierが所有している製品又は係争特許が2016年9月に満了となるまでに製造され、もしくは引き渡された製品に制限された。Sisvelによる差止命令による救済の請求は、これが係争特許が失効した後に本控訴裁判所における従前の手続き中に撤回されたため、本裁判所の裁定の対象とはならなかった。


B. 判決理由 本裁判所は、係争特許がGPRS規格に必須であり、侵害を受けているとの判決を下した [35]

さらに、本裁判所は、Haierに対する侵害訴訟を開始することにより、SisvelがEU機能条約(TFEU)第102条を違反して支配的市場地位を濫用していなかったと判決を下した [36]

本裁判所の見地からは、Sisvelは、侵害訴訟を提起する前に、自らのSEPの侵害使用についてHaierに通知を交付する、Huawei判決に基づく自らの義務を履行している。一方、Haierは、Sisvelとライセンス契約を締結するという自らの誠実意思を適切に示す、自らのHuawei義務を履行しなかった。この事実は、もはや本件において決め手となるものではないが、本裁判所は、SisvelがそれぞれのHuawei要件に従ってHaierにFRANDライセンスの申出を行ったとの見解を示した。

支配的市場地位

本裁判所は、SisvelがTFEU第102条の意味の範囲内で支配的市場地位にあるとの判決を下した  [37]

FCJは、支配的市場地位が、特許により付与される独占的な権利のみによって生じるものではないと説明した [38] 。従って、いくつかの要因を考慮する必要がある [39] 。1つ目の重要な要因は関連市場である。特許が、標準化団体によって策定された基準(又はデファクトスタンダード(事実上の標準))に適合する上で技術的に必須であって、かつ、下流市場で付された製品について、当該基準に代わる技術的な手段が利用できない場合、支配性の評価に適すのは、当該特許のライセンスが提供される(個々の)市場である [40]  。

これに基づき、本裁判所は、Sisvelが支配的市場地位にあると判示した:係争特許は、GPRS規格の実施に必須であること、また、GPRS規格に適合したいかなる携帯電話も、従前の規格の世代も今後の規格の世代も同一の機能を備えることが認められていないため、(下流)市場において競業するものではないこと [41]

この状況において、FCJは、規格実施者が、商品及びサービスの市場の買主と比較して、交渉において有利な立場を得る場合が多いという事実により、SEP保有者の市場支配が制限されるというSisvelの意見を認めなかった [42] 。本裁判所は、商品やサービスの買主とは異なり、規格実施者が、特許保有者との合意を締結していなくとも、規格に準拠した製品を製造するために必要な保護された技術にアクセスできるという有利な立場にいると判断した  [43] 。しかしながら、本裁判所によると、この事実は、市場支配を除外するには十分ではない。ライセンスの交渉において個々の実施者に対するSEP保有者の交渉力の度合いは関係ない [44] 。 支配的市場地位は、独占的権利を行使して市場から実施者を排除する法的能力から生じる、特許保有者の優越した構造的な市場支配力によりもたらされる [45]

同様に、本裁判所は、SEPの行使に関するHuawei判決により課せられた制限が、市場支配(的地位)を損なうものではないことを指摘した [46] 。 本裁判所は、対等な立場で交渉を行うための手段をSEP保有者が最大限に利用できないため、これらの制限がSEP保有者の交渉上の立場を著しく弱めていると指摘した [46] 。 それにも関わらず、実施者が、特許が満了となるまで交渉を遅延することにより「ホールドアウト」行為を行うような場合でさえ、これは、特許保有者の支配的地位を問題として取り上げるには十分ではない  [46]

それでもやはり、本裁判所は、係争特許が満了したので、Sisvelの支配的市場地位が終結したことを指摘した  [47]

侵害製品を(下流)市場参入から排除する法的権利がこれ以上付与されなくなる場合、SEP保有者はもはや支配力を有しない  [47]

市場支配的地位の濫用

両当事者の行為を検討し、本裁判所は、本控訴裁判所とは異なり、Sisvelがその市場支配的地位を濫用していないと判断した  [48]  。

本裁判所は、SEP保有者が、本質的には自らの特許から生じる独占的な権利を行使することを妨げられていないことを明言した  [49] 。特許が標準必須特許であるという事実は、その特許保有者が、支配的な市場地位を有することにより、その技術の使用を許可しているか、許可するよう義務付けられていない限り、かかる使用を容認しなければならないということを意味するものではない。 [49] 。しかしながら、FCJによると、SEPの使用を許可しなければならないという義務は、実施者がFRAND条件にてライセンスを取得するつもりのない場合には存在しない。特許保有者は、とりわけライセンス契約の締結を要請する法的権利を有しないため、支配的な市場地位を有するとしても、標準必須特許の使用者に対してライセンスを「課す」義務はない。 [50]  。

こうした背景のもと、本裁判所は、SEP保有者による独占的な権利の主張(差止命令による救済並びに/又は侵害製品のリコール及び破棄の請求)が市場独占性の濫用に相当し得るという、2つの事案を特定した。

  1. 特許保有者がその支配的な市場地位を濫用したり、非差別性に関わる義務を違反することなく、かかる特許保有者によって拒絶され得ない条件にて、実施者が無条件のライセンスの申出を行なった場合(本裁判所が2009年5月6日付の「オレンジブックスタンダート事件」判決(事件番号 KZR 39/06)における従前の裁定を反芻した限りにおいて) [51]  。
  2. 実施者が、基本的に、ライセンスを取得するつもりであるが、SEP保有者がその支配的市場地位に付される「固有の責任」に従ってライセンス契約の締結を円滑に進める「十分な努力」を尽くしていない場合 [52]

権利侵害通知

結果的に、本裁判所は、SEP保有者が、侵害請求訴訟を提起する前に係争特許の侵害使用について実施者に対して通知義務を負うという見解を示した [53] 。実施者が未だ侵害を認識していない場合に限り当該義務が発生するとFCJが示唆したと思われる  [54]  。

本裁判所は、基本的には、技術実施者が、製品の製造や販売を担う前に第三者の権利が侵害されていないことを確認しなければならない旨を説示した [55]  。しかしながら、この責務は、とりわけ情報通信技術(ICT)分野においてはかなり困難なことである。ICT分野の製品は、多数の特許権の影響を受ける可能性がある  [55]  。特許保有者は、通常はすでに侵害について調査しているが、実施者がFRAND条件にてライセンスを取得する必要があるか否かを検討し、それにより差止命令を回避できるよう、裁判手続きの開始前に実施者に対して特許の使用についての情報を提供しなければならない。 [56]  。

本裁判所によると、それぞれの侵害通知は、通常、グループ会社の親会社宛に送付されることで十分とする  [57] [309] 。内容について言えば、通知には、侵害対象となった特許を明記すると共に、特定の侵害使用及び非難の対象たる実施形態について説明しなければならない [58]  。侵害の技術的かつ法的分析についての詳細は必要ない。従って、実施者は、最終的には専門家や弁護士の助言に従い、侵害の申立について専ら評価しなければならない [58]  。概して、実際にはクレームチャートを提示することで十分な場合多い(強制ではない)  [58]  。

さらに、侵害された特許及び影響を受けた規格に関する情報を提供した特許保有者は、実施者が受け取った情報が侵害を評価するには十分ではないと直ちに示すことを予測していることを、FCJは付言した [59] 。これは、多くの特許及び規格が関わる場合にも当てはまる [59]

上記の事項を考慮し、本裁判所は、Sisvelが所定の適切な侵害通知をHaierに交付したと判断した。2012年12月20日付の書簡及びその後のやりとりは、該当する要件を満たすものであった  [60]  。

誠実意思

その一方、Haierの行為を勘案し、本裁判所は、HaierがSisvelからFRAND条件によるライセンスを取得する意思のあるライセンシーとして行為しなかったと判断した [61] 。この点において、FCJは、逆の結論に至った本控訴裁判所によるそれぞれの評価に異議を示した。

本裁判所は、Haierがほぼ1年にわたって(2012年12月から2013年12月まで)、対応することをとどまっていたため、Sisvelからの通知に対するHaier Chinaの当初の回答が遅かったことに注視した [62] 。侵害通知に回答するのに数ヶ月を要する実施者というのは、通常は、ライセンスを取得することに関心のないこと示す  [62]  。Sisvelが、2012年12月のHaierに対する最初の通知の送付後になって、Sisvelが係争特許を対象としてETSIに対してFRAND確約を行なったという事実は、適時性を評価する上でいかなる意味もなさない。2012年12月20日付の書簡において、Sisvelはすでに、Haierに対してFRANDライセンスを申し出るつもりであることを宣言している [62] 。侵害訴訟手続きの開始前に行われた遅延された回答が(2013年12月からのHaierの回答と同様に)、それでもやはり、当事者らによるHuawei判決(本上訴裁判所が行なった通り)の遵守を評価する際に考慮されるか否かについての疑義は、FCJによって判断されなかった  [63]  。本件では、この疑義は関連性がない。というのは、内容の点から言えば、Haierによるいかなる回答にも、ライセンスを取得する意思が十分に示されていないからである  [64]  。

本裁判所の見地から、実施者は、「どのような条件が実際にFRANDにあたるのかにかかわらず」SEP保有者とのライセンス契約を締結する意思について、「明確に」かつ「疑義の生じないよう」宣言しなければならない(Unwired Planet 対 Huawei(英国及びウェールズ高等法院、2017年4月5日付、事件番号[2017] EWHC 711(Pat)の判決を引用)  [65]  。実施者は、その後、「目的志向」の態度にてライセンス供与の協議に参加する義務がある [317] 。むしろ、権利侵害の通知に対して、ライセンス契約締結を検討する意思を示したり、ライセンス取得の是非及びその条件についての協議に入る意思を示したりするだけでは不十分である  [65]  。

これに基づき、本裁判所は、Haierの2014年12月の回答が、「正式な交渉」を行うという見込みのみが示されているだけであって、誠実意思を宣言するには不十分であると判断した。この宣言は、上記の「明確なもの」でも「疑義の生じないもの」でもなかった  [66]

同様に、2016年1月16日付のHaierの書簡には、Haierがドイツの裁判所による係争特許の有効性及び侵害についての従前の確認を条件としてライセンス契約を締結したため、誠実意思についての十分な宣言が記載されていなかった [67]  。実施者は、原則として、ライセンス契約の締結後にはライセンス対象特許の有効性に異議を申し立てる権利を留保することができるが、本裁判所は、それぞれの条件下での誠実意思の宣言を行うことはできないと判断した [67]  。

さらに、FCJは、Haierが2016年3月23日付の書面により自らの誠実意思を十分に明示してはいなかったと判断した。Haierが上記の許容できない条件を撤回しなかったという事実とは別に、本裁判所は、侵害通知の受領後およそ3年間に渡って、全てのSisvelの特許に関するクレームチャートの作成を要請することは、Haierが係争特許が満了となるまで交渉を遅延させることにしか関心がないことを示すものであるとの見解を示した  [68]  。

Haierが誠実意思を適切に宣言しなかったため、本裁判所は、侵害手続きが開始された後に、実施者がこの義務を履行することが可能であるか否かについて回答しなかった  [69]  。

 

  • [28] Sisvel 対 Haier、デュッセルドルフ地方裁判所、2015年11月3日付判決、事件番号No. 4a O 93/14。
  • [29] Sisvel 対 Haier、 デュッセルドルフ高等裁判所、2016年1月13日付判決、事件番号No. I-15 U 66/15。
  • [30] Huawei対ZTE、欧州司法裁判所、2015年7月16日付判決、事件番号No. C-170/13。
  • [31] Sisvel v Haier、デュッセルドルフ高等裁判所、2017年3月30日付判決、事件番号No. I-15 U 66/15。
  • [32] 連邦特許裁判所、2017年10月6日付判決、事件番号No. 6 Ni 10/15 (EP)。
  • [33] 連邦裁判所、2020年3月10日付判決、事件番号No. X ZR 44/18。
  • [34] Sisvel 対Haier、連邦裁判所、2020年5月5日付判決、事件番号KZR 36/17。
  • [35] 同判決、第9節以下、及び第59節。
  • [36] 同判決、第52節。
  • [37] 同判決、第54節。
  • [38] 同判決、第56節。
  • [39] 同判決、第 57節以下。
  • [40] 同判決、第58節。
  • [41] 同判決、第59節以下。
  • [42] 同判決、第61節。
  • [43] 同判決、第63節。
  • [44] 同判決、第62節。
  • [45] 同判決、第61節以下。FCJによると、それぞれの法的障害により、会社が市場に参入することが不合理なものとなっている事実により、事前にライセンスを得ていなくとも、市場参入の障壁はすでに構築されている。第63項を参照。
  • [46] 同判決、第64節。
  • [47] 同判決、第65節。
  • [48] 同判決、第67節以下。
  • [49] 同判決、第69節。
  • [50] 同判決、第70節。
  • [51] 同判決、第71節。
  • [52] 同判決、第72節。
  • [53] 同判決、第73節以下。
  • [54] 同判決、第73節以下。 本裁判所によると、特許保有者は、規格の使用者に対し、当該使用者が規格を実施することによりその特許の内容が許可なく使用されることになるという「事実を認識していない」場合には、特許の侵害について通知しなければならない。
  • [55] 同判決、第74節。
  • [56] 同判決、第74節及び第85節。
  • [57] 同判決、第89節。
  • [58] 同判決、第85節。
  • [59] 同判決、第87節。
  • [60] 同判決、第86 節以下。
  • [61] 同判決、第91節以下。
  • [62] 同判決、第92節。
  • [63] 同判決、第93節以下。
  • [64] 同判決、第94節。
  • [65] 同判決、第83節。
  • [66] 同判決、第95節。
  • [67] 同判決、第96節。
  • [68] 同判決、第98節。
  • [69] 同判決、第97節。


Sisvel v Haier

24 11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 [70] . 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 [71] (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 [72] . 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 [74] . 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) [77] .
 

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 [86] . 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 [86] .

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. [87] 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. [88] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [89] 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. [90]

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. [91] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [91]

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. [95]

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. [106] 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 [107] . 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 [107] . 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 [108] . 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. [109]

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 [110] . 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 [112] .

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. [114] 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'. [114]

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 [122] . 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. [129]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [130] 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. [129] 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

  • [70] 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).
  • [71] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [72] 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).
  • [73] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18.
  • [74] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
  • [75] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by ).
  • [76] Ibid, paras. 10-43.
  • [77] Ibid, para. 44.
  • [78] Ibid, paras. 48 et seqq.
  • [79] Ibid, para. 49.
  • [80] Ibid, para. 52.
  • [81] Ibid, para. 53.
  • [82] Ibid, para. 54.
  • [83] Ibid, para. 55.
  • [84] Ibid, para. 84.
  • [85] Ibid, paras. 86 et seqq.
  • [86] Ibid, para. 57.
  • [87] Ibid, para. 58.
  • [88] Ibid, para. 59.
  • [89] Ibid, para. 60.
  • [90] Ibid, para. 62.
  • [91] Ibid, para. 61.
  • [92] Ibid, para. 63.
  • [93] Ibid, para. 65.
  • [94] Ibid, para. 68.
  • [95] Ibid, paras. 66 and 68.
  • [96] Ibid, para. 69.
  • [97] Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [98] Ibid, paras. 70 and 71.
  • [99] Ibid, para. 71.
  • [100] Ibid, para. 72.
  • [101] Ibid, para. 73.
  • [102] Ibid, para. 74.
  • [103] Ibid, para. 76.
  • [104] Ibid, para. 77.
  • [105] Ibid, paras. 79 et seqq.
  • [106] Ibid, para. 83.
  • [107] Ibid, para. 87.
  • [108] Ibid, paras. 88 et seqq.
  • [109] Ibid, para. 89.
  • [110] Ibid, paras. 93 et seqq.
  • [111] Ibid, para. 95.
  • [112] Ibid, paras. 96-99.
  • [113] Ibid, paras. 102 et seqq.
  • [114] Ibid, para. 102.
  • [115] Ibid, paras. 108 et seqq.
  • [116] Ibid, para. 116.
  • [117] Ibid, para. 118.
  • [118] Ibid, paras. 124 et seqq.
  • [119] Ibid, para. 124.
  • [120] Ibid, para. 125.
  • [121] Ibid, para. 126.
  • [122] 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.
  • [123] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.
  • [124] Ibid, para. 56.
  • [125] Ibid, paras. 127 et seqq.
  • [126] Ibid, para. 130.
  • [127] Ibid, para. 131.
  • [128] Ibid, paras. 131 et seq.
  • [129] Ibid, para. 135.
  • [130] Ibid, paras. 134 et seqq.


Cases from OLG Düsseldorf - Higher Regional Court


OLG Düsseldorf

18 7月 2017 - Case No. I-2 U 23/17

A. Facts

The Claimant is holder of a patent declared as essential to a standard (Standard Essential Patent, SEP). The Defendant is a provider of telecommuni­cation services. Under the policy governing the relevant standard, the Claimant is obliged to license its SEP on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. Against Claimant’s SEP a nullity action is pending. The Claimant, nevertheless, concluded portfolio licensing agreements also covering the SEP in question with two companies.

Since November 2012, the Claimant made efforts to license his SEP also to the Defendant. The parties could, however, not reach an agreement. In January 2016, the Claimant brought an action against the Defendant before the Regional Court of Düsseldorf requesting for a declaration of the Defendant’s liability for damages as well as rendering of accounts (main proceedings). After the main proceedings were ini­tiated, the Claimant made two offers for a license agreement to the Defendant. In order to protect busi­ness secrets connected with these offers, the Claimant requested the Defendant to sign a Non-Disclosure Agreement (NDA). The Defendant refused to sign a NDA. Moreover, the Defendant brought an action against the Claimant before an Irish Court requesting for a declaration that Claimant’s offers did not comply with FRAND.

Subsequently, the Claimant filed a motion for a preliminary injunction against the Defendant before the Regional Court of Düsseldorf. The Regional Court of Düsseldorf dismissed Claimant’s motion. The Claimant appealed this judgement. With the present ruling the competent Higher Regional Court of Düsseldorf in­dicated that the Claimant’s appeal has no prospects of success.

B. Court’s reasoning

The court made clear that preliminary injunctions involving SEPs are subject to the same strict prerequi­sites as injunctions referring to non-SEPs. The SEP-holder has, therefore, to adequately establish the va­lidity of the SEP, its use by the alleged infringer as well as the urgency of its request for a preliminary injunction.

Besides this, prior to seeking for a preliminary injunction, the SEP holder also has to fulfill the require­ments set forth by the Court of Justice of the European Union in its decision in the matter Huawei ./. ZTE (Huawei judgement). This follows from the fact that SEP-holders’ claims for injunctive relief are, in prin­ciple, only enforceable, after the prerequisites established by the Huawei judgement have been fully met.

Since preliminary injunctions may severely affect alleged infringer’s ongoing business, such injunctions can only be granted, when both the validity and the use of the SEP by the alleged infringer appear to be given with a high degree of certainty.

The validity of a SEP is deemed to be given, when the SEP has been confirmed in patent opposition or nullity proceedings. Without a prior confirming decision, the validity of a SEP can, exceptionally, also be regarded as being given, when

  • the alleged infringer has unsuccessfully intervened in the proceedings, in which the SEP was granted,
  • no opposition or nullity proceedings were initiated against the SEP, because it is universally consid­ered to be able to receive patent protection (one indication for this being, for instance, the fact that the SEP was licensed to renowned licensees),
  • the objections raised against SEP’s validity can be proven to be unfounded even by the limited means of the summary examination foreseen in proceedings for interim relief, as well as
  • in “extraordinary circumstances”, in which the SEP-holder will face substantial disadvantages, if he is forced to wait with the initiation of proceedings against the infringer, until after the end of opposition or nullity proceedings pending against the SEP.

Against this background, the court argued that the Claimant is most likely not entitled to the requested preliminary injunction.

First, the Claimant failed to establish the validity of the SEP in dispute with the required high degree of certainty. A decision confirming the SEP in dispute is missing, since the nullity proceedings are still pending. Furthermore, the exceptions allowing this conclusion to be drawn, even without a prior con­firming decision, do most likely not apply. In particular, the fact that the Claimant concluded portfolio licensing agreements with two other companies covering also the SEP in question, does not suffice to adequately establish its validity. This fact only proves that the licensees held the SEP-holder’s portfolio as being able to receive patent protection as a whole, not, however, that they considered the SEP itself as being worthy of such protection. Furthermore, due to the high level of technical complexity, the court does not expect that the objections raised against the validity of the SEP can be proven as being unfounded solely on basis of the limited examination means available to the court in the present pro­ceedings for interim relief.

Second, the court has also substantial doubts that urgency is given. The Claimant was aware of the alleged infringement since 2012. Nevertheless, the Claimant refrained from making his claim for injunctive relief enforceable by fulfilling the Huawei judgement requirements. Furthermore, in the main proceedings ini­tiated prior to the present proceedings for preliminary injunction, the Claimant did not request for injunc­tive relief, but limited his action against the Defendant to damages and rendering of accounts. In terms of urgency, it could be expected from the Claimant to request for injunctive relief already in the main proceedings. Furthermore, the fact that the Defendant brought an action before an Irish Court requesting a declaration that Claimant’s offers did not comply with FRAND, also fails to establish urgency. It is the Defendant’s right to seek legal redress.

C. Other issues

In addition, the court expressed its view regarding the consequences of the refusal of a potential licensee to sign a NDA covering information connected with the SEP-holder’s offer for a licensing agreement on FRAND terms, without, however, ruling on this question on the merits of the present case.

The court suggested that the unjustified refusal of a licensee to enter into a NDA does not release the SEP-holder from the obligations established by the Huawei judgement, namely the obligation to make a FRAND offer to the licensee and specify the underlying conditions (particularly the price calculation). An unjusti­fied refusal of the licensee to sign a NDA shall, however, lead to easing the SEP-holder’s burden to provide the licensee with detailed explanations regarding the justification of its licensing conditions, to the extent that this is required for protecting its justified confidentiality interests. Instead of detailed information, “merely indicative observations would, basically, suffice. The licensee cannot object the FRAND con­formity of the SEP-holder’s offer based on the insufficient specification of the licensing terms.


Sisvel v Haier

30 3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. [131] 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 [132] and that the claimant had not made a license offer on FRAND conditions. [133] 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. [134] 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’). [135] 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). [136]

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. [137] 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. [138] 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. [138] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [139] because the patent in question was related to data transfer, an essential function of the GPRS standard. [140]

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). [141] 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. [142] 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. [142] 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 [143]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [144] 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’). [144]

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. [145] 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. [146] 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’). [146] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [146]

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. [147] 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. [148] 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’). [148] 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. [148] 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 [149] because it discriminated against the defendants. [150] 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. [151]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [152] SEP owners have discretion regarding the license fees that they charge. [153] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [154] Further, license conditions can be abusive only if they are significantly different between licensees. [154] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [155] The burden of proof for such substantially unequal treatment lies with the defendant, [156] whilst the onus is on the claimant to prove that this unequal treatment is justified. [156] 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. [156] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [157] without having a proper justification. [158] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [159] or that these discounts were a result of the particularities of the case. [160]

  • [131] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
  • [132] 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.
  • [133] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
  • [134] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
  • [135] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
  • [136] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
  • [137] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
  • [138] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
  • [139] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
  • [140] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
  • [141] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
  • [142] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
  • [143] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
  • [144] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
  • [145] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
  • [146] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
  • [147] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
  • [148] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
  • [149] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
  • [150] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
  • [151] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
  • [152] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
  • [153] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
  • [154] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
  • [155] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
  • [156] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
  • [157] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
  • [158] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
  • [159] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
  • [160] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.


Sisvel v Haier 2

13 1月 2016 - Case No. 15 U 65/15

  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. [161]
  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. [162]
    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. [163]
  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. [164]
  • [161] Case No. 15 U 65/15, para. 2
  • [162] Case No. 15 U 65/15, para. 28
  • [163] Case No. 15 U 65/15, para. 23-30
  • [164] Case No. 15 U 65/15, para. 12


Canon v Carsten Weser

29 4月 2016 - Case No. I-15 U 49/15

The proceedings before the Court concerned the subsequent appeal of Defendants in Case LG Düsseldorf, 11 June 2015 – Case No. 4a O 45/14 (decision rendered before Huawei) seeking to set aside the decision of the lower court. As Cases No. I-15 U 49/15 and No. I-15 U 47/15 are interconnected, the Court came to the same conclusions and framed them in essentially the same wording as in its decision OLG Düsseldorf, 29 April 2016 - Case No. I-15 U 47/15 (cf. above). Therefore, no separate and detailed summary is provided here.


Sisvel v Haier 3

13 1月 2016 - Case No. I-15 U 66/15

  1. Facts
    The proceedings concerned the subsequent application of Defendants in Case No. 4a O 93/14 seeking to suspend the execution of the District Court’s decision until the appellate court has decided on the merits of an appeal brought by Defendants. As to the facts of the case, it can be referred to the summary above.
    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. [165]
  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. [166]
    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. [167]
  3. Other important issues
    For the purposes of the present proceedings, the court explicitly stated that there is—in principle—no reason to treat non-practicing entities, such as Claimant, in a different manner than other market participants. [168]
  • [165] Case No. I-15 U 66/15, para. 4-5
  • [166] Case No. I-15 U 66/15, para. 20
  • [167] Case No. I-15 U 66/15, para. 17-20
  • [168] Case No. I-15 U 66/15, para. 11


Canon v Sieg/Kmp Printtechnik/Part Depot

29 4月 2016 - Case No. I-15 U 47/15

  1. Facts
    The proceedings before the court concerned the subsequent appeal of Defendants in Case LG Düsseldorf, 11 June 2015 – Case No. 4a O 44/14 (decision rendered before Huawei) seeking to set aside the decision of the lower court.
    Claimant, a Japanese company that produces and markets photocopiers, printers and cartridges in cooperation with undertaking “C”, is the proprietor of European patent 2 087 AAA B1 which has not been declared essential to a particular standard. Defendants “1”, “2” and “3” are involved in the supply and distribution, inter alia to Germany, of cartridges of brand “E”, being based on recycled models of and serving as substitutes for particular OEM-cartridges of Claimant. In 2011, Claimant and “C” made a commitment towards the EU Commission that their products would comply with EU-Directive 2009/125/EC. Part of this commitment is the obligation to secure interoperability of the products with non-OEM cartridges.
    The admissible appeal of Defendants has been rejected by the court of second instance.
  2. Court’s reasoning
    Even though the commitment made toward the EU Commission does, contrary to the opinion of Claimant, not constitute merely a non-binding memorandum but rather a binding declaration it executes Article 15 (2) Directive 2009/125/EC and has the sole purpose of enhancing the environmental performance of the products at issue. Hence, it can be considered neither as a direct nor as an indirect FRAND declaration and the Huawei obligations do not apply in the present case. [169] In consequence, Claimant is not obliged to present a licensing offer corresponding to FRAND terms. [170]
    Nor can Claimant’s seeking of a prohibitory injunction be considered as abusive pursuant to § 242 BGB since Claimant’s declaration could not establish a reliance worthy of protection to the effect that Defendant was entitled to make use of Claimant’s patent protected inventions. [171]
    Moreover, the cumulative conditions established by the ECJ (inter alia in IMS Health) for granting a compulsory license on the basis of Article 102 TFEU absent a standard-setting context are not fulfilled. [172]
  • [169] Case No. I-15 U 47/15, para. 72 et seq.
  • [170] Case No. I-15 U 47/15, para. 74
  • [171] Case No. I-15 U 47/15, para. 48, 78 et seq.
  • [172] Case No. I-15 U 47/15, para. 88 et seq.


Saint Lawrence v Vodafone

9 5月 2016 - Case No. I-15 U 36/16

  1. Facts
    The proceedings concerned the subsequent application of Defendant in Case No. 4a O 73/14 seeking 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 summary above.
    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.
  2. Court’s reasoning
    1. Notice of infringement and declaration of willingness to license
      Firstly, the court of appeal focused on the Huawei requirement to submit an infringement notification prior to the initiation of proceedings. Although the court voiced some doubts over whether a distinction between transitional and non-transitional cases is permitted and whether, in transitional cases, reliance of a SEP proprietor on the Orange Book standard of conduct is worthy of protection, it did not consider the result reached by the lower court as manifestly erroneous. Since the SEP proprietor has the option to withdraw its action, to perform its Huawei obligations and to re-file the claim afterwards, it seems overly formalistic to deny the option to perform the Huawei obligations within the ongoing trial. Among a number of further reasons [173] for its position the court stressed that the ECJ intended the Huawei framework to be fact-sensitive. [174]
      Secondly, the court confirmed the lower court’s view that Defendant did not comply with its Huawei obligation to express its willingness to conclude a licensing agreement because it reacted belatedly (more than five months after the infringement notification) and in an evasive manner. The fact that proceedings have been initiated by Claimant does not alter the Huawei requirements and Defendant will particularly not be granted more time to comply with its respective obligations. [175]
    2. The SEP owner’s licensing offer / The standard implementer’s reaction
      The court left it undecided whether the lower court erred in focusing on a licensing offer which Claimant presented solely to the Intervener but not to Defendant. According to the court the conduct of the parties required by Huawei constitutes a mechanism of alternating, consecutive steps in which no subsequent conduct requirement is triggered unless the other party performed the previous “step”. In consequence, Claimant was, in the present case, not obliged to submit a FRAND licensing offer at all since Defendant had failed to signal willingness to license. [176]
      The lower court’s finding that Claimant’s licensing offer was FRAND while the Intervener’s counter-offer failed to meet this threshold was accepted. Hence, the court considered it as irrelevant under the present circumstances—and as a completely open question in general—whether a SEP proprietor is obliged, before bringing an action for prohibitory injunction against the supplier of a standard-implementing device, to (cumulatively) submit a FRAND licensing offer not only to the supplier but also to the producer of said device. [177]
  3. Other important issues
    The remarks of the lower court rejecting, in the present case, a patent ambush-argument were not deemed manifestly erroneous, mainly because the lower court had reasonably argued that such an abusive practice would only result in the SEP proprietor’s obligation to grant licenses on FRAND terms. [178]
    Licensing negotiations (allegedly) undertaken by Defendant after the decision of the lower court provided no reason to suspense execution since it was not evident to the court that Defendant had thereby fulfilled its Huawei obligations. [179]
  • [173] For details, cf. OLG Düsseldorf, 9 May 2016 - Case No. I-15 U 36/16, para. 2, b, aa
  • [174] Case No. I-15 U 36/16, para. 2, b, aa
  • [175] Case No. I-15 U 36/16, para. 2, b, bb
  • [176] Case No. I-15 U 36/16, para. 2, b, cc
  • [177] Case No. I-15 U 36/16, para. 2, b, ff
  • [178] Case No. I-15 U 36/16, para. 2, b, ee
  • [179] Case No. I-15 U 36/16, para. 2, b, dd


Saint Lawrence v Vodafone 2

9 5月 2016 - Case No. I-15 U 35/16

The proceedings concerned the subsequent application of Defendant in Case No. 4a O 126/14 seeking to suspend execution of the lower court’s decision. As Cases No. 4a O 126/14 and No. 4a O 73/14 are interconnected, the Court came to the same conclusions and framed them in exactly the same wording as in its decision OLG Düsseldorf, 9 May 2016 - Case No. I-15 U 36/16 (cf. above). Therefore, no separate and detailed summary is provided here.


OLG Düsseldorf 2

14 12月 2016 - Case No. I-2 U 31/16

  1. Facts
    The Claimant is holder of a patent declared as essential to a standard (Standard Essential Patent, SEP). The Defendant is a telecommunications company, which inter alia sells mobile phones allegedly using Claimant’s SEPs. Upon Claimant’s action, the Regional Court of Düsseldorf (1) ordered the Defendant to render accounts regarding the sales of mobile phones embedding Claimant’s SEPs and (2) recognized Defendant’s obligation to pay damages to the Claimant resulting from the infringement of its SEPs (cf. Regional Court of Düsseldorf, decision dated 19th January 2016, Case No. 4b O 49/14). The Defendant appealed this judgement. In the appeal proceedings before the Higher Regional Court of Düsseldorf (Case No. 2 U 31/16), one issue in dispute was whether the license fees, which the Claimant had calculated, were Fair, Reasonable and Non-Discriminatory (FRAND). The Claimant explained its calculation in a statement to the court that was produced in two versions. In the first version, which was filed only with the court, the information regarding the FRAND calculation (including comparable license agreements pre¬sented as evidence), were fully disclosed. In the second version, which was presented to the Defendant and a third party that had joined the proceedings (Intervener), the respective sections (and evidence) were redacted.
    With the present interlocutory application, the Claimant requested the court to order that disclosure of full information (and evidence) regarding its FRAND calculation shall be required only towards Defendant’s and Intervenor’s counsels, provided that the court would oblige the counsels to full confi-dentiality towards everyone, including their clients themselves (that is the Defendant and the Intervener). The Defendant objected this request. The Intervener, on the other hand, stated that it agreed with the proceeding defined in Claimant’s request.
    In its first decision dated 14th December 2016, the court rejected the application with respect to both the Defendant and the Intervener. Instead, the court encouraged the parties to enter into a Non-Disclosure Agreement (NDA) reinforced by a contractual penalty, in case confidentiality was breached.
    This decision was consequently modified by a further decision rendered by the court on 17th January 2017. The court granted Claimant’s application in respect to the Intervener, but again rejected the application in respect to the Defendant. The court, however, requested from the Defendant to present an offer for an NDA to the Claimant incorporating particularly the following conditions within a deadline of three weeks:
    • The confidential information should be used only in the context of the present litigation.
    • The information would be made available only to four company representatives of the Defendant (as well as any experts engaged by the Defendant in the ongoing litigation).
    • These persons shall be themselves obliged to confidentiality by the Defendant.
    • In case confidentiality was breached, the Defendant shall be liable for payment of a contractual pen-alty amounting to EUR 1 million.




  2. Court’s Reasoning
    In its first decision, the court found that the German rules of Civil Procedure do not provide a legal basis for granting an order in the form requested by the Claimant. [180] Such an order would exclude Defendant’s right to be heard with respect to Claimant’s FRAND calculation, in breach of Art. 103 Sec. 1 of the German Constitutional Law (Grundgesetz). [180] The fact that Defendant’s counsels would have access to the relevant information, does not suffice to meet the requirements set forth by the aforementioned provision. Party’s right to be heard contains also the right to personally participate in the proceedings. Consequently, a limitation of a party’s right to be heard reaching so far as Claimant requested, is not possible, unless the party affected expressly waives its right to personally participate in the proceedings. [180] Since the Defendant decided to not do so, a respective order cannot be rendered against it.
    The fact that the Intervener waived its respective right, can also not justify rendering such an order against the Defendant. [181] The Intervener does not join the proceedings as a party, but merely in support of one of the parties. [182] Accordingly, it cannot make decisions that would affect the party’s standing, such as a declaration to waive the right to be heard. In the present case, the Intervener’s decision to waive its respective right may, therefore, impact its own standing in the proceedings, but cannot affect Defendant’s position.

    As a result, the Claimant can either make the confidential information available to the Defendant or keep this information redacted, accepting that the court cannot take redacted information into consideration for its decision. [183]

    Notwithstanding the above, under reference to the “Umweltengel für Tragetaschen” judgement of the German Federal Supreme Court (Bundesgerichtshof) [184] the court held, that, as a rule, it can be expected from the implementer of SEPs to enter into a NDA reinforced by a contractual penalty with the SEP holder. [185] SEP implementer is obliged to facilitate FRAND licensing negotiations to the best of its ability. This includes also taking justified confidentiality interests of the SEP holder into account. [185]

    In its second decision dated 17th January 2017 the court applied the above considerations. Since the Intervener waived its right to be heard, the court found that there is no reason to deny Claimant’s request in relation to the Intervener. On the other hand, due to Defendant’s denial to waive its respective right, the court still refrained for granting Claimant’s request against the Defendant. Taking Claimant’s confi¬dentiality interests into account, the court ordered, however, the Defendant to submit an offer for a NDA to the Claimant based particularly on the conditions mentioned above.
  • [180] Judgement dated 14th December 2016, para. 1
  • [181] Judgement dated 14th December 2016, para. 2
  • [182] Judgement dated 14th December 2016, para. 2
  • [183] Judgement dated 14th December 2016, para. 3
  • [184] Bundesgerichtshof, Decision dated 19th February 2014, Case No. I ZR 230/12
  • [185] Judgement dated 14th December 2016, para. 5


OLG Düsseldorf 3

25 4月 2018 - Case No. I-2 W 8/18

A. Facts

The Claimant holds a patent essential to a technical standard (Standard Essential Patent or SEP) which is subject to a so-called “FRAND-undertaking”, that is a commitment to make the SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant entered into nego¬tiations for a FRAND licensing agreement with the Defendant. In June 2017, the parties signed a Non-Disclosure Agreement (NDA). [186] A few days later, the Claimant entered into an NDA also with a third party, the Intervener . Shortly after signing the NDA, the Intervener [187] argued that several clauses of the agreement were void. [188]

In September 2017, the Claimant initiated infringement proceedings against the Defendant before the District Court of Düsseldorf (District Court). The Intervener joined these proceedings in support of the Defendant. After joining the proceedings, the Intervener claimed that the NDA with the Claimant does not cover information which the latter has to produce in the trial. This is particularly the case with infor-mation regarding to comparable licensing agreements concluded by the Claimant with third parties (comparable licences), which the Claimant regarded as strictly confidential. [189]

In December 2017, the Intervener requested full access to the court files. [190] The District Court dismissed the Intervener’s motion in part, namely by excluding access to confidential information, including information on comparable licences. The District Court held that the protection of such information was not adequately ensured, since the Intervener’s behaviour raised significant doubts that he considered himself bound to confidentiality by the NDA signed with the Claimant. [191] The Intervener appealed this decision.

The Higher District Court of Düsseldorf (Court) set the above ruling aside and requested the District Court to further clarify the facts of the case and decide again on the Intervener’s motion for full access to the court files on basis of the principles set forth in its present judgement. [192] In particular, the Court requested from the District Court to (re-)examine whether the Claimant actually possessed confidential business information which needed protection. [192] If this fact could be positively established, then a limited access to the court files would, basically, be justified, if the party seeking access to the files refused to commit itself to confidentiality. [193]

B. Court’s reasoning

The Court pointed out that parties to court proceedings seeking to protect confidential information must undertake efforts to sign an NDA with the opposing party and any intervener that has joined or is expected to join the proceedings with a high degree of certainty, before disclosing such information in the trial. [194] A party doing so without an NDA has to accept that the opposing party and/or the intervener could gain access to confidential information through an inspection of the court files. [195]

In the eyes of the Court, requesting from the party seeking to protect confidential information to actively pursue the conclusion of NDAs with other parties involved in the proceedings does not put that party at a disadvantage. The unjustified refusal of the opposing party (or an intervener) to enter into an NDA allows the party seeking protection to use only non-confidential information in the proceedings for specifying the FRAND conformity of its licensing offer to the potential licensee. [196] Although still obliged to specify the conditions of its FRAND licensing offer, the party has a lower burden to bear; to the extent (and not be¬yond) that is required for protecting its justified confidentiality interests, the party can meet its respective obligation by making “merely indicative observations” in the trial. [197]

In case that an intervener joins the proceedings at a point in time, in which a party has already produced confidential information on grounds of an NDA previously signed with the opposing party, the intervener’s right to inspect the court files can only be limited, if it was (or can) be established that the party seeking protection actually possesses confidential business information. [198] The fact that the other parties involved in the proceedings have already signed an NDA does not of itself limit the intervener’s right to full access to the court files. [199]

To establish that it possesses confidential business information worthy of protection, a party must identify such information and concretely explain why this information constitutes a business secret. [200] The party also needs to present in detail which measures were taken so far for securing confidentiality with respect to the information in question. [200] In addition, the party has to demonstrate in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed. [200] It also needs to be explained, with which degree of certainty the said disadvantages are expected to occur. [200]

When protection of confidential information contained in comparable licences is sought, the existence of confidentiality interests requires, in general, special justification. [201] In the Court’s view, the SEP holder’s FRAND-undertaking entails transparency vis-à-vis interested stakeholders with respect to licensing conditions. [201] Moreover, knowledge of licensing conditions already accepted in the market can help potential licensees exercise their rights in infringement proceedings effectively. [201] Considering the non-discriminating element of SEP holder’s FRAND undertaking, it is not immediately apparent to the Court which interest worthy of legal protection the SEP holder could have in keeping conditions agreed in existing licensing agreements confidential. [201] In fact, several licensing pools (e.g. MPEG) publish their licensing agreements online. [201]

Should the party seeking protection fail to establish that it possesses confidential business information needing protection, full access to the court files must be granted to the intervener upon request, irrespective of whether the latter signs an NDA or not. [202] Conversely, if the existence of confidential business information is established, the intervener’s right to inspect the court files can be limited only to non-confidential information, as long as the intervener refuses to enter into an NDA with the party seeking protection of its confidentiality interests. [193]

In case that a party which has signed an NDA breaches its obligations under this agreement or “backs out” of the NDA, the party relying on the protection of its confidentiality interests can again limit its (future) submissions of facts in the proceedings to non-confidential information. [203] In other words, in terms of detail, the party must again not present information going beyond “merely indicative observations”. [203] Whether a party has “backed out“ of an NDA is a question of fact which has to be decided on a case-by-case basis. [204] For this, it is required that the party’s behaviour has caused a high risk of a breach of confidentiality. [204] For instance, this could be the case, when legal arguments brought by the party against the validity of the NDA are not reasonable, but rather serve as a pretext. [204]

  • [186] Higher District Court of Düsseldorf, judgement dated 25 April 2018, Case No. I-2 W 8/18, para. 26
  • [187] Ibid, para. 26
  • [188] Ibid, para. 32
  • [189] Ibid, para. 35
  • [190] Ibid, para. 2
  • [191] Ibid, para. 27
  • [192] Ibid, para. 36 et seq
  • [193] Ibid, para. 17
  • [194] Ibid, paras 11 and 14
  • [195] Ibid, para. 11
  • [196] Ibid, para. 13
  • [197] Ibid, para. 13
  • [198] Ibid, para. 15
  • [199] Ibid, para. 15 et seq
  • [200] Ibid, para. 23
  • [201] Ibid, para. 24
  • [202] Ibid, para. 16
  • [203] Ibid, para. 20
  • [204] Ibid, para. 21


Unwired Planet v Huawei

22 3月 2019 - Case No. I-2 U 31/16

A. Facts

The Claimant, Unwired Planet International Limited, acquired patents relevant to the 2G (GSM) and 3G (UMTS) wireless telecommunications standards developed by the European Telecommunications Standards Institute (ETSI).

The previous holder of the patents in question, Telefonaktiebolaget LM Ericsson (Ericsson), had made an undertaking towards ETSI to grant users access to its patents should they become essential to a standard (Standard Essential Patents or SEPs) on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

The Defendants, China-based Huawei Technologies Co. Ltd (Huawei China) and its German affiliate Huawei Technologies Deutschland GmbH, offer for sale and sell devices in Germany complying with the 2G and 3G standards.

In March 2014, the Claimant brought an action against the Defendants before the District Court (Landgericht) of Düsseldorf (District Court) based on one of its SEPs, asking for a declaratory judgement recognising the Defendants’ liability for damages on the merits, as well as information and the rendering of accountsUnwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 32 (cited by www.nrwe.de).. At the same time, the Claimant also initiated infringement proceedings against the Defendants in the UK (UK proceedings). During the course of the UK proceedings, the parties made certain licensing offers. However, an agreement was not reached.

By judgment dated 19th January 2016, the District Court found that the Defendants infringed the patent in suit, recognised the Defendant’s liability for damages on the merits and ordered the Defendants to render accounts to the Claimant [206] . The Defendants appealed the District Court’s ruling.

With the present judgment, the Higher District Court (Oberlandesgericht) of Düsseldorf (Court), basically, upheld the decision of the District Court. However, following a partial withdrawal of claims by the Claimant, the Court limited the Defendants’ obligation to render accounts by excluding information about production costs (broken down by single cost factors) and realised profits [207] .

The Court allowed for an appeal on points of law before the Federal Court of Justice (Bundesgerichtshof). The parties appealed the present decision.

B. Court’s reasoning

The Court confirmed the District Court’s finding that the Defendants had infringed the patent in suit by offering for sale and selling standard-compliant products in Germany [208] .

The Court also agreed with the District Court’s finding that the Claimant was entitled to assert claims against the Defendants: in its view, the patent in suit had been validly transferred to the Claimant [209] .

Transfer of SEPs

The Defendants had argued that the agreements underlying the transfer of said SEP to the Claimant had several flaws, which the District Court had not evaluated properly. In a lengthy reasoning, the Court dismissed this argument and confirmed the validity of the agreements in question [210] .

Besides that, the Defendants had claimed that the relevant agreements were void from an antitrust perspective, because they violated Articles 101 and 102 of the Treaty on the Functioning of the European Union (TFEU). The Court rejected these claims as well.

In the Court’s eyes, the – repeated – transfer of a SEP does not constitute an abuse of market power in violation of Article 102 TFEU [211] , since the FRAND undertaking, which – according to the Court – irrevocably limits the exclusion rights arising from a patent ‘in rem’ (‘dinglich’) [212] , is directly and indispensably binding for the new patent holder (irrespective of any contractual obligation assumed by the latter) [213] . Due to the ‘automatic’ transfer of the FRAND undertaking, there is no reason for prohibiting the transfer of SEPs or imposing limitations regarding to whom the SEP is assigned to; insofar, the patent holder has a free choice [214] .

Furthermore, the Court found that the transfer of the SEP in suit to the Claimant did not violate Article 101 TFEU [215] . Reciprocal agreements, as the agreements underlying the transfer of said patent, per se do not violate Article 101 TFEU, unless they contain side agreements which could impede competition [216] . According to the Court, this was not the case here. In this context, the Court explained that the fact that Ericsson had transferred only a part of its portfolio to the Claimant could not have any anti-competitive effect in terms of Article 101 TFEU [217] . Reason for this is that the FRAND-undertaking, to which both Ericsson and the Claimant are bound, sets the upper limit for the financial or other kind of burden from the licence that can be imposed on any licensee with respect to the entire patent portfolio [217] .

FRAND-undertaking

Having taken the view that the FRAND-undertaking is ‘automatically’ transferred to the new SEP holder, the Court suggested that it is binding for the latter not only ‘on the merits’ (‘dem Grunde nach’), but also in terms of ‘amount and content’ (‘der Höhe und dem Inhalt nach’) [218] . In other words: the new patent holder is not only – generally – obliged to offer access to the SEP on FRAND terms, it is, moreover, bound to the actual licensing practice of the previous patent holder [218] . The Court found that this is needed for ensuring that the SEP holder will not exempt itself of its FRAND commitment – especially the non-discrimination obligation – by transferring the SEP to a third party [219] .

Existing licensing agreements / Confidentiality

Accordingly, the Court held that existing licensing agreements of the previous patent holder (which have not expired yet) need to be considered for the assessment of the non-discriminatory character of licensing offers made by the new SEP holder [220] . Consequently, in the Court’s view, the SEP holder’s FRAND undertaking obliges the latter to provide its successor with information regarding to the content of licensing agreements which it had concluded with third parties [220] .

To be able to establish the non-discriminatory character of its licensing offer, the new SEP holder needs to make sure that it will be able to refer to and present licensing agreements of the prior SEP holder, particularly in court proceedings [221] . An exception could be made only when presenting such agreements would violate contractual confidentiality obligations. For this, the content of relevant confidentiality clauses must be presented in detail in trial, in order to allow an assessment of the extent of the patent holder’s obligations [222] . In addition, the party bound to respective clauses must demonstrate that it cannot release itself from its confidentiality obligations, by showing that all existing licensees have refused – upon request – to waive their rights arising from each clause in question [222] . Notwithstanding this, the Court expressed the view that agreeing to comprehensive confidentiality clauses will, as a rule, bar the SEP holder (and/or its successor) from invoking confidentiality with respect to existing licences in pending court proceedings: in this case, the refusal to present licences cannot be justified, since the patent holder acted culpably by agreeing to confidentiality with other licensees, regardless of its FRAND-obligation to provide information to its successor with respect to the licensing agreements it has signed [222] . Its unjustified refusal to present existing licences will, moreover, also affect the position of the new patent holder in trial (leading potentially to a dismissal of its claims for lack of evidence of the FRAND-conformity of its licensing offer) [222] .

In this context, the Court noted that presenting existing licensing agreements with third parties in trial does not raise antitrust concerns (especially under Article 101 TFEU) [223] . According to the Court, the fact that business secrets will be disclosed to potential competitors of the existing licensees is not harmful from an antitrust perspective, since measures to protect confidentiality in trial are available [223] . In particular, the addressee of confidential information is obliged to sign a Non-Disclosure Agreement (NDA), if the holder of such information (a) concretely explains why this information constitutes a business secret, (b) presents in detail which measures were taken so far for securing confidentiality with respect to the information in question, (c) demonstrates in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed and (d) also explains, with which degree of certainty the said disadvantages are expected to occur [223] . If these requirements are met, the opposing party’s refusal to sign an NDA would allow the party holding confidential information to limit its pleadings in trial to ‘general, indicative statements’ [223] . According to the Court, this was, however, not the case here.

Application of the Huawei framework

On the merits of the case, the Court made clear that the conditions established by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTE [224] (Huawei framework or obligations) apply only to claims for injunctive relief and the recall of infringing products, not to the patent holders’ claims for information, rendering of accounts and damagesUnwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 159 (cited by www.nrwe.de).. In particular, when deciding about the implementer’s liability for damages on the merits, courts do not have to consider whether the patent holder has met its Huawei obligations or not [226] .

This question is, however, relevant for deciding on the amount of damages owed to the patent holder. The non-compliance of the SEP holder with the Huawei framework can limit the amount of damages that it can claim to the amount of a FRAND royalty (for certain periods of time) [227] . Since the right to request the rendering of accounts serves the calculation of the amount of damages, the Court took the view that the SEP holder is barred from claiming information about production costs and/or realised profits for periods of time, in which it is not entitled to damages going beyond the FRAND royalty, because this information is not required for calculating the latterIbid, para. 402 et seq. Insofar the Court expressly disagreed with the District Court of Mannheim, which in a previous decision had denied any limitations of the patent holder’s right to demand the rendering of accounts, in case of non-compliance with the Huawei framework; cf. District Court of Mannheim, judgment dated 10 November 2017, Case No. 7 O 28/16, GRUR-RR 2018, 273..

SEP holder’s offer to the implementer

Looking at the present case, the Court held that the Claimant had not fulfilled its Huawei obligation to make a written and specific FRAND licensing offer to the Defendants [229] . In particular, in the offers made the Claimant failed to adequately specify both the calculation and the non-discriminatory nature of the royalties proposed [230] .

For allowing the implementer to assess the non-discriminatory character of the SEP holder’s licensing offer, the Court repeated that the latter is obliged to disclose whether other licensees exist and, if so, to which conditions they have been licensed [231] . This obligation extends also to licensing agreements concluded by the previous patent holder(s) [231] . Only agreements that have expired or have been terminated do not need to be considered in this respect [232] . As a result, the Claimant should have referred to both the licences covering the SEP in suit that it had concluded with third parties after the transfer of the patent, and to all licences, which Ericsson had concluded with licensees prior to the transfer of said patent and were still in force, when the Claimant made the respective licensing offer to the Defendants [233] .

The Court took the view that, prior to granting the very first FRAND licence, the SEP holder ought to select a specific ‘licensing concept’. This ‘concept’ is ‘legally binding’ for the future licensing conduct of the SEP holder and potential successors. In other words: the licensing conditions established by the first FRAND licence granted outline the leeway available to the SEP holder for future licensing negotiations [234] . This is also the case, when the royalties agreed for the first licence lie at the lower end of the FRAND scale available to the patent holder [235] . Accordingly, any deviation from the ‘licensing concept’ is allowed only and to the extent that (existing and new) licensees are not discriminated through less favourable conditions [234] .

The Court allowed SEP holders to select a new ‘licensing concept’ (within the available FRAND range), provided that all licensing agreements subject to the existing ‘concept’ will expire at the same point in time [236] . In the Court’s view, this could be achieved, for instance, by agreeing with all later licensees that their licence will expire at the same time as the first FRAND licence ever granted [232] . The Court recognised that this would require substantial efforts, particularly when considerable patent portfolios are involved; this fact did not, however, speak against binding the successor to the licensing practice of the previous SEP holder [237] .

C. Other important issues

According to the Court, the fact that the UK proceedings were directed towards setting the terms of a worldwide licence between the parties, covering all SEPs held by the Claimant did not require the Court to stay its own proceedings [238] . According to Article 27 of the Brussels I Regulation, the court later seized of the matter has to stay its proceedings until the jurisdiction of the court first seized of the case has been settled. The Court saw, however, no indication that the UK proceedings (had ever) concerned the claims asserted in the proceedings brought before it (claims limited to Germany) [238] .

Besides that, the Court confirmed that German courts have international jurisdiction for the claims brought against Huawei China [239] . If infringing products are offered over the internet, the international jurisdiction of German courts is established, when German patent rights are being affected and the website can be accessed in Germany [239] .

  • [205] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 32 (cited by www.nrwe.de).
  • [206] Ibid, para. 41. See District Court of Duesseldorf, judgement dated 19 January 2016, Case No. 4b O 49/14.
  • [207] Ibid, paras. 139 et seqq.
  • [208] Ibid, paras. 252-387.
  • [209] Ibid, paras. 161 et seqq.
  • [210] Ibid, paras. 169-199.
  • [211] Ibid, para. 203 et seqq.
  • [212] Ibid, para. 205.
  • [213] Ibid, paras 205 et seqq.
  • [214] Ibid, para 209.
  • [215] Ibid, paras. 235 et seqq.
  • [216] Ibid, para. 236.
  • [217] Ibid, para. 242.
  • [218] Ibid, paras. 212 et seqq.
  • [219] Ibid, para. 214.
  • [220] Ibid, paras. 216 et seq.
  • [221] Ibid, para. 216.
  • [222] Ibid, para. 218.
  • [223] Ibid, para. 220.
  • [224] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [225] Unwired Planet v Huawei, Higher District Court of Düsseldorf, 22 March 2019, para. 159 (cited by www.nrwe.de).
  • [226] Ibid, para. 396.
  • [227] Ibid, para. 402.
  • [228] Ibid, para. 402 et seq. Insofar the Court expressly disagreed with the District Court of Mannheim, which in a previous decision had denied any limitations of the patent holder’s right to demand the rendering of accounts, in case of non-compliance with the Huawei framework; cf. District Court of Mannheim, judgment dated 10 November 2017, Case No. 7 O 28/16, GRUR-RR 2018, 273.
  • [229] Ibid, paras. 406 et seqq.
  • [230] Ibid, para. 411.
  • [231] Ibid, para. 419.
  • [232] Ibid, para. 420.
  • [233] Ibid, para. 423.
  • [234] Ibid, paras. 413 et seq.
  • [235] Ibid, para. 413.
  • [236] Ibid, paras. 414 and 420.
  • [237] Ibid, para. 421.
  • [238] Ibid, para. 144.
  • [239] Ibid, paras. 153 et seqq.


Cases from OLG Karlsruhe - Higher Regional Court


Saint Lawrence v Deutsche Telekom

23 4月 2015 - Case No. 6 U 44/15

A. Background

1. Facts

The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 2 O 103/14, 10 March 2015). The background was the alleged infringement of patent EP 1.125.276.B1, which covered technology for coding broadband signals which is essential for the ETSI AMR-WB standard.

The defendant was a major German telecommunications company (Deutsche Telekom). Intervenor 1 and intervenor 2 were smartphone manufacturers (HTC and others) whose products used the AMR-WB standard. These phones were supplied to the defendant and then sold to consumers as part of the defendant’s contract plans. [240] The claimant, a German non-practicing entity, Saint Lawrence, became owner of the respective SEP in August 2014. [241] The previous owner of the SEP had declared its willingness to grant licenses on FRAND conditions several times. [242] The defendant had shown no interest in such a license. [242] After commencing infringement proceedings in the District Court of Mannheim, the claimant contacted intervenor 2 for the first time. Intervenor 2 signed a confidentiality agreement on 23 February 2015, rejected an initial offer made by the claimant, and made a counter offer. On 25 March 2015 (after the decision of the District Court of Mannheim), the claimant made another offer, which intervenor 2 also rejected.

2. Ensuing Decisions

On 10 March 2015, the District Court of Mannheim granted an injunction. Inter alia, it held that the defendant had not attempted to enter into negotiations for a license. [242] In particular, the court considered it irrelevant that intervenor 2 might have demonstrated its willingness to enter into a license on FRAND conditions. In the eyes of the court, the relevant issue was whether the claimant had a right to demand an injunction to stop the defendant using the patent. Even if an intervenor could successfully raise a competition law based defence relying on the Federal Court of Justice decision Orange Book Standard, [243] this was of no relevance for the relationship between the claimant and the defendant. [244]

The defendant and intervenor 1 applied to the Higher Regional Court of Karlsruhe to stay the execution of the District Court decision. Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned on the basis that it appears manifestly erroneous. [245] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [245]

The Higher Regional Court of Karlsruhe granted the defendant’s application to stay the execution regarding the smartphones manufactured by intervenor 2, but dismissed the application made by intervenor 1. [246] It held that it would be sufficient for a successful competition law based defence that an intervenor is willing to enter into a license agreement. [247] Since the District Court of Mannheim had dismissed the intervenors’ willingness as irrelevant for the case, the resulting decision was manifestly erroneous. [247] Significantly, the Higher Regional Court required the defendant to make a deposit of EUR 5 million into the court to safeguard the claimant’s financial interests.

B. Court’s Reasoning

Importantly, the decision was handed down in April 2015 and thus several months prior to the CJEU Huawei/ZTE ruling. The Higher Regional Court stated that the final opinion of Advocate General Wathelet [248] was the legal basis of its decision. [249]

The Higher Regional Court reasoned that a patent holder could seek injunction orders against any business in the supply chain of the product that infringes the respective SEP – which includes manufacturers (such as the intervenors) and distributors (such as the defendant). In principle, according to the Federal Court of Justice decision Tripp-Trapp-Stuhl,Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06. the decision against whom to bring proceedings lies with the patent holder. [251] However, according to the Higher Regional Court, this was not the issue in this case. The issue was whether the patent holder was abusing its dominant market position by commencing proceedings against the defendant. The only relevant question is whether this is conduct that deviates from ‘normal’ competition behaviour, being detrimental to consumer interests. If the SEP holder has made a FRAND declaration in the past and is typically entering into license agreements with manufacturers, then the court could see no objective reason why the SEP holder would only bring proceedings against the distributor. [251] In contrast, there is a reasonable expectation that the SEP holder makes an offer to the manufacturer of the relevant product first. Bringing proceedings against distributors would put significant pressure on the manufacturer. This can distort the license negotiation because distributors will have little interest in legal arguments with patent holders. If a patent holder is a dominant undertaking, exerting such pressure constitutes an abuse of market power. [251] In addition, bringing proceedings against distributors whilst granting licenses to manufacturers in other cases is inconsistent behaviour. [251]

C. Other Important Issues

The Higher Regional Court pointed out that the claimant was a non-practising entity. Accordingly, by exercising its patent rights it is not protecting its own market share in the market for smartphones. [252] In contrast, it is in the claimant’s objective interest that as many mobile phones using its SEP from numerous manufacturers are present in this market. Moreover, it is unlikely that a stay of execution would jeopardise the claimant’s financial interests. A deposit made by the defendant into the court should be a sufficient safeguard. [252] On the other hand, an execution of the decision at first instance would cause considerable harm to the defendant. As a telecommunications company, the defendant relies on a comprehensive portfolio of mobile phones that it can offer to consumers. [253] Removing the devices manufactured by intervenor 2 from the portfolio would be a significant blow to the defendant’s core business. Moreover, a removal would also be detrimental for intervenor 2 because a major distribution channel for its smartphones would become inaccessible. [254] As a result, the defendant’s interest in staying the execution outweigh the interests of the claimant.

  • [240] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 2.
  • [241] Landgericht Mannheim, 10 March 2015, 2 O 103/14, para 27.
  • [242] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 3.
  • [243] Bundesgerichtshof, 6 May 2015, KZR 39/06.
  • [244] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 6.
  • [245] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 17.
  • [246] OLG Karlsruhe, 8 September 2016, 6 U 58/16, para 38. After lodging the application, the claimant and intervenor 1 had reached a settlement agreement. As a result, intervenor 1 had withdrawn its appeal to the Higher Regional Court of Karlsruhe. Thus, in the eyes of the court, no stay of execution was required.
  • [247] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 19.
  • [248] GA Wathelet, 20 November 2014, C-170/13.
  • [249] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 20.
  • [250] Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06.
  • [251] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 21.
  • [252] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 25.
  • [253] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 26.
  • [254] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 27.


Pioneer v Acer

31 5月 2016 - Case No. 6 U 55/16

  1. Facts
    The proceedings concerned the subsequent application of Defendant in Case No. 7 O 96/14 seeking 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. The facts underlying the two decisions are therefore the same: 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.
    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.
  2. Court’s reasoning
    1. Applicability of Huawei to transitory cases
      The court tentatively confirms that, in transitory cases, it is sufficient if the SEP proprietor fulfills its Huawei duties by way of the statement of claims or even after the lawsuit was initiated. [255] As to the reasons for this finding, the court is not convinced by the considerations of the lower court (cf. above LG Mannheim, 8 January 2016 - 7 O 96/14), in particular because the ECJ has not stated that actions for infringement brought prior to the Huawei decision had to comply only with the Orange Book rules of conduct and not the Huawei rules. [256] However, according to the Court, the Huawei decision deals only with the abusive bringing of an action for SEP infringement, not with the question whether such action remains abusive even after the SEP proprietor has fulfilled its conduct obligations under Huawei. [257] It appears possible that, at least in transitory cases, the continuation of an infringement action is no longer abusive where the statement of claims provided sufficient notice of the infringement, where the SEP proprietor made a Huawei-compliant licensing offer during the ongoing litigation, and where the standard implementer failed to appropriately react to this offer. Hence, the lower court’s finding on that issue was not considered manifestly erroneous.
    2. Standard of review for licensing offers
      The court did, however, find the lower court’s ruling to be manifestly erroneous with regard to the standard of review it had postulated for the SEP proprietor’s licensing offer: [258] As stated clearly by the ECJ, the SEP proprietor has to make a licensing offer that qualifies as FRAND—not, for instance, slightly above FRAND—and it is for the respective court to assess the FRAND quality of the offer. A reduced standard of review, consisting merely in a summary assessment of whether the offer is evidently non-FRAND, has no basis in Huawei. Even if the SEP proprietor were to be granted much leeway in determining the licensing conditions—a question which the court reserves for its decision on the merits of the appeal—the conditions would still have to remain within the FRAND range. Since the lower court’s conclusion that Claimant had complied with the Huawei rules of conduct while Defendant had violated them was reached by applying the reduced standard of review the court decided to partly [259] suspend the enforcement of the first instance-ruling.
  • [255] Case No. 6 U 55/16, para. 24-28
  • [256] Case No. 6 U 55/16, para. 26
  • [257] Case No. 6 U 55/16, para. 27
  • [258] Case No. 6 U 55/16, para. 29-36
  • [259] The reasons why the Court limited the suspension to the recall and destruction of infringing products are of no interest here, cf. OLG Karlsruhe, 31 May 2016 – Case No. 6 U 55/16, para. 37 et seq.


Philips v Acer

29 8月 2016 - Case No. 6 U 57/16

  1. Facts
    1. Decision First Instance
      The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). This case first instance concerned the infringement of the patent EP 0.745.307.B3, which covered a technology for subtitles in the DVD standard. The defendant marketed computers that use a DVD-software. The claimant, which commercialised the patent in question through a patent pool, [260] had made a FRAND-declaration to the “DVD-Forum” which administers the DVD standard. [261]
      On 30 May 2014, the defendant offered to enter into a license agreement for patent in question and respective products marketed in Germany. The license fees were based on an expert opinion which the defendant had commissioned. Alternatively, the defendant suggested that the license fees could be determined by the claimant in good faith pursuant to sec 315 of the German Civil Code. [262] The defendant made a deposit with the Düsseldorf Magistrates Court which covered use of the patent in Germany and rendered account to the claimant. On 25 July 2014, the claimant sent an amended counter-offer, which was rejected by the defendant. [263] On 13 March 2015, the claimant made another license offer for a world-wide portfolio license, giving details about the calculation of the license fee. [264] The defendant requested claim charts and rejected the calculation details as insufficient. [265]
      The District Court of Mannheim ordered the defendant to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [266] to calculate the amount of compensation it owed. [267]
    2. The Ensuing Application for Stay of Execution
      Under the German rules of civil procedure, the Higher Regional Court can only grant a stay of execution if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [268] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [268]
      The applicant sought to stay the execution of the order of the District Court of Mannheim, [269] which required it to render full account. Instead, the applicant contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [270] The Higher Regional Court of Karlsruhe dismissed the application. [268] It held that the decision of the District Court of Mannheim was not manifestly erroneous. Further, the applicant had not provided sufficient evidence that particularly severe harm would be caused if the decision of the District Court of Mannheim were executed. [271]
  2. Court’s reasoning

      Most aspects of the decision do not directly relate to the Huawei ruling. However, the court held that the decision of the District Court of Mannheim was not manifestly erroneous in ordering the applicant to render accounts in full detail. It held that the District Court of Mannheim had correctly decided that the Huawei ruling did not contain any restrictions of the SEP holder’s information claims. [272] In the eyes of the District Court of Mannheim, the CJEU had not referred to means of calculating the amount of compensation owed - it had only clarified that Art. 102 TFEU does not prevent the SEP owner from demanding the alleged infringer to render accounts for use of the patent in the past. [272] Accordingly, the District Court of Mannheim considered that competition law, and in particular, the existence of a FRAND declaration, are not relevant considerations for compensation and information claims. [273] In the eyes of the court, this view is not manifestly erroneous.
  3. Other important issues
    The claimant commercialised the patent in question through a patent pool. This fact itself, according to the court, does not mean that the applicant’s interests outweigh the interests of the claimant. [274] In the past, the court had given special consideration to whether the claimant’s interests were primarily focused on receiving royalties (Higher Regional Court of Karlsruhe, 23 April 2015, Case No. 6 U 44/15; Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). However, the court reasoned, in contrast to the case at issue, that the aforementioned decisions had concerned cases in which it was likely that the decision at first instance would not be upheld on appeal. [274]
    The court held that the decision at first instance was not manifestly erroneous in its interpretation of Art. 101 TFEU (anticompetitive conduct). The District Court of Mannheim had been of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. [275] If a standardisation agreement breached Art. 101 TFEU, the standard would be void. The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts if the commencement of patent infringement proceedings by an SEP holder constituted a breach of Art. 101 TFEU. However, even if that were the case, this defence would only be relevant against injunctions, but not in respect of compensation and rendering accounts claims. [276]
  • [260] Case No. 6 U 57/16, para 5
  • [261] Case No. 6 U 57/16, para 8
  • [262] Case No. 6 U 57/16, para 10
  • [263] Case No. 6 U 57/16, para 11
  • [264] Case No. 6 U 57/16, para 12
  • [265] Case No. 6 U 57/16, para 13
  • [266] Case No. 6 U 57/16, paras 15-19
  • [267] The decision omits further details on the decision first instance because they are not relevant for the application, see OLG Karlsruhe, 29 August 2016, Case No. 6 U 57/16, para 14
  • [268] Case No. 6 U 57/16, para 25
  • [269] Case No. 6 U 57/16, para 23
  • [270] Case No. 6 U 57/16, para 23, 31
  • [271] Case No. 6 U 57/16, para 26
  • [272] Case No. 6 U 57/16, para 31
  • [273] Case No. 6 U 57/16, para 32, 33
  • [274] Case No. 6 U 57/16, para 43
  • [275] Case No. 6 U 57/16, para 28
  • [276] Case No. 6 U 57/16, para 30


OLG Karlsruhe

8 9月 2016 - Case No. 6 U 58/16

  1. Facts
    1. Decision First Instance
      The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). Case No. 7 O 23/14 related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard. The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used a DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. [277] In early 2013, the patent pool approached the defendant’s mother company about the use of the patent, but without making a license offer. [278]
      On 30 May 2014, the defendant offered a license agreement for the respective German patent. The defendant indicated that it was willing to enter into negotiations for a portfolio license for the claimant’s German patents. It was also willing to have a third party determine the royalties owed. [278] On 25 July 2014, the claimant suggested to change the license offer to a world-wide portfolio license. The defendant rejected and informed the claimant on 22 August 2014 of the number of respective computers they put into circulation between July 2013 and June 2014 in Germany. It also made a deposit of EUR 12.972,- with the Düsseldorf Magistrates Court.
      On 13 March 2015, the claimant made another offer for a world-wide portfolio license. On 5 May 2015, the defendant requested the relevant claim charts and further details on 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. Instead, 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 mother company on 3 September the parties were unable to come to a conclusion.
      The District Court of Mannheim granted an injunction order on 4 March 2016. [279] It held that the defendant was liable for compensation [280] and ordered it to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [281] to calculate the amount of compensation it owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels. [282]
    2. The Ensuing Application for Stay Proceedings
      Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [283] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [283]
      The applicant sought to stay the execution of two elements of the resulting court order. [284] First, the applicant challenged the order to render full account. It contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [285] Secondly, the applicant contended that the recall order was based on the District Court’s summary assessment of the offered license conditions, which was an insufficient standard of review. [286]
      The Higher Regional Court of Karlsruhe granted the application to stay the execution in respect of the order to the recall of products. [287] However, it dismissed the application in respect of the order to render accounts because the decision of the District Court of Mannheim was not manifestly erroneous. [287]
  2. Court’s reasoning
    1. SEP Owner’s Licensing Offer
      Regarding the order to recall and remove the infringing products, the Higher Regional Court held that the District Court’s interpretation of the Huawei ruling in respect of the SEP owner’s license offer was manifestly erroneous. The Higher Regional Court reiterated its view that the Huawei ruling required a full review of the conditions of the license (see the previous decision of the Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). A reduced standard of review as applied by the District Court was not in line with the fundamentals of the Huawei ruling. The CJEU had held that the SEP owner’s refusal to grant a license on FRAND terms is the main reason why an injunction cannot be granted by an infringement court. Accordingly, the Higher Regional Court reasoned that any arguments raised by the applicant as to why an offer is not FRAND needs to be taken into consideration by the court. This requires a full review of the license offer and not just a summary review as to whether the offer is not obviously non-FRAND. [288] However, the Higher Regional Court conceded that the SEP owner has a wide discretion in determining the FRAND conditions because there might be a number of different license conditions that are FRAND. [289]
    2. Rendering Accounts and Compensation Claims
      Regarding the order to render accounts, the Higher Regional Court held that the decision of the District Court was not manifestly erroneous. The CJEU had reasoned that a court order to render accounts does not have implications as to whether products enter the market or can stay on the market. Thus, the Higher Regional Court concluded that a claim to render accounts cannot be abusive under Art. 102 TFEU. [290] Further, the Huawei ruling did not contain any restrictions in respect of the SEP holder’s information claims. [291] The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts how the amount of compensation owed is exactly calculated (and accordingly, what information the infringer must disclose to enable the SEP holder to carry out this calculation). [292] Accordingly, the order to render accounts in full detail (thus enabling the claimant to calculate the compensation owed in different ways) was not erroneous.
  3. Other Important Issues
      The Higher Regional Court held that the District Court’s interpretation of Art. 101 TFEU (anticompetitive conduct) was not manifestly erroneous. The District Court of Mannheim had been of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. [293] The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts whether the commencement of patent infringement proceedings by an SEP holder constituted a breach of Art. 101 TFEU. However, even if the commencement did constitute a breach, this defence would only be relevant against injunctions, but not in respect of compensation and rendering of accounts claims. [294]
      In relation to the order to render accounts, the Higher Regional Court acknowledged that the information that is required for calculating the amount of compensation will generally be a trade secret. [295] It is in the applicant’s legitimate interest to keep them secret. However, the court held that this interest alone does not constitute an irreversible detriment that is so severe that the execution of the court order needs to be stayed. [295]
  • [277] 6 U 58/16, para 6
  • [278] 6 U 58/16, para 7
  • [279] 6 U 58/16, para 12-17
  • [280] 6 U 58/16, para 25
  • [281] 6 U 58/16, para 18-24
  • [282] 6 U 58/16, para 26-28
  • [283] 6 U 58/16, para 39
  • [284] 6 U 58/16, para 33
  • [285] 6 U 58/16, para 45
  • [286] 6 U 58/16, para 35
  • [287] 6 U 58/16, para 38
  • [288] 6 U 58/16, para 51
  • [289] 6 U 58/16, para 52
  • [290] 6 U 58/16, para 62
  • [291] 6 U 58/16, para 63
  • [292] 6 U 58/16, para 63-64
  • [293] 6 U 58/16, para 59-60
  • [294] 6 U 58/16, para 61
  • [295] 6 U 58/16, para 67


Philips v Wiko

30 10月 2019 - Case No. 6 U 183/16

A. Facts

The Claimant, Philips, holds patents declared as (potentially) essential to the practice of wireless telecommunications standards (Standard Essential Patents or SEPs) developed by the European Telecommunications Standards Institute (ETSI), including SEPs reading on the UMTS and LTE standards. Philips committed towards ETSI to make its SEPs accessible to standard users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

The Defendant is the German subsidiary of the Wiko group of companies, which has its headquarters in France (Wiko). Wiko sells mobile phones implementing the LTE standard in Germany.

In October 2014, Philips informed the parent company of the Wiko group about its SEP portfolio, but did not receive a response. In July 2015, Philips shared a draft licensing agreement for its SEP portfolio as well as claim charts referring to several of its SEPs with the parent company of the Wiko group, which again did not react at all. In September 2015, Philips shared further technical details regarding its SEPs.

On 19 October 2015, Philips brought an infringement action against Wiko before the District Court of Mannheim based on one of its SEPs, requesting for injunctive relief, information and rendering of accounts, destruction and recall of infringing products from the market as well as a declaratory judgment confirming Wiko’s liability for damages on the merits.

On the next day, 20 October 2015, Wiko sent a letter to Philips, in which it declared its willingness to enter into negotiations with the latter for a licence covering ‘valuable’ patents. In August 2016, during the course of the pending infringement proceedings, Wiko made a counteroffer to Philips. Philips did not accept this offer. Subsequently, Wiko provided security to Philips for the use of its patents, calculated on basis of its counteroffer.

By judgment dated 25 November 2016 [296] , the District Court of Mannheim granted Philips’ claims almost to the full extent. Wiko appealed the District Court’s judgement. In addition, by way of a counterclaim, Wiko requested disclosure of existing licensing agreements signed by Philips with similarly situated licensees (comparable agreements).

With the present judgment [297] , the Higher District Court of Karlsruhe (Court) overturned the ruling of the District Court in part. In detail, the Court confirmed Philips’ claims for information and the rendering of accounts as well as Wiko’s liability for damages on the merits. The Court, however, rejected Philips’ claims for injunctive relief, destruction and recall of infringing products from the market.

Apart from that, the Court also rejected Wiko’s counterclaim regarding the production of comparable agreements in the proceedings.


B. Court’s reasoning

The Court confirmed that Wiko’s products infringe the patent in suit [298] .

Contrary to the view taken previously by the District Court, the Court found, however, that Article 102 of the Treaty for the Functioning of the EU (TFEU) prevents Philips from enforcing the claims for injunctive relief as well as the recall and destruction of infringing products asserted in the infringement proceedings for the time being [299] . In the Court’s eyes, Philips had failed to meet the conduct obligations established by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [300] (Huawei framework or obligations) [301] .

Huawei framework

The Court explained that SEP holder’s failure to meet its Huawei obligations will – as a rule – render an infringement action resulting in an exclusion of the implementer from a downstream market (action for injunctive relief and/or recall and destruction of products) abusive in terms of Article 102 TFEU [302] . This will, however, not be the case, when the implementer himself fails to fulfil its duties under the Huawei framework; if the implementer acts in bad faith as an ‘unwilling’ licensee, then SEP holder’s Huawei obligations are ‘suspended’ [302] . As a result, asserting the rights to injunctive relief and/or the destruction and recall of infringing products in court could then be considered as a justified reaction of the SEP holder to the implementer’s unwillingness to enter into a FRAND licence [302] .

Having said that, the Court expressed the view that the parties can remedy potential flaws in their conduct under the Huawei judgment and/or even fulfil their Huawei obligations for the first time during the course of pending infringement proceedings [303] . The Court noted that in Huawei v ZTE, the CJEU did not require that the parties fulfil all conduct obligations established prior to the initiation of court proceedings [304] . In the Court’s eyes, denying the parties such possibility is not compatible either with the general principle of proportionality known to European law, nor with the German civil procedural law, according to which courts need to consider all facts relevant for their decision-making raised in the proceedings until the end of the oral arguments [305] .

Accordingly, an infringement action that did not give rise to any antitrust concerns at the time it was filed, can be considered as abusive at a later point in time, if the situation significantly changed, e.g. the implementer fulfilled its Huawei obligations in the meantime [306] . Vice versa, an action of an abusive nature can later on be ‘corrected’, if the patent holder performs its duties under the Huawei framework during the course of the pending proceedings [306] .

In the Court’s view, a SEP holder seeking to remedy (or fulfil for the first time) obligations under the Huawei framework after the initiation of infringement proceedings must make sure that pressure-free licensing negotiations between the parties are enabled, as required by the CJEU in Huawei v ZTE [307] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [307] . The SEP holder can also propose a consensual stay of the proceedings, especially when a parallel nullity action against the patent in suit is pending before the Federal Patent Court [307] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [307] .

On the other hand, the Court pointed out that fulfilment of Huawei obligations by the implementer after the beginning of infringement proceedings does not necessarily lead to a dismissal of the claims asserted by the SEP holder [308] . Indeed, if the implementer meets its Huawei duties at a very late point in time in the proceedings (e.g. shortly before the closing of the oral arguments), the Court could eventually neglect this fact in its decision [309] . This way, delays can be avoided. In this context, the Court also made clear that the implementer is not in a position to cause a unilateral suspension of the proceedings; in contrast to the opposite case (that is cases, in which a stay of the proceedings is suggested by the claimant), the SEP holder will usually not be required to agree to a suspension of the proceedings proposed by the implementer, in order to allow pressure-free negotiations to take place [309] . Insofar, the implementer bears the risk that the fulfilment of its obligations under the Huawei framework in the course of a pending infringement trial will have no impact [309] .

Notification of infringement

Looking at the specific conduct of the parties in the present case, the Court found that Philips had fulfilled its obligation to notify Wiko about the infringement of the SEP in suit prior to the commencement of the infringement proceedings.

The Court confirmed that a notification addressed to the parent company within a group of companies will usually be sufficient under the Huawei framework [310] . In terms of content, the Court was satisfied by the fact that Philips’ letter from July 2015 named the patent in suit as well as the relevant part of standard document implementing the technical teachings of this patent [311] . The Court explained that the notification does not have to contain (further) information required for a final assessment of the validity and essentiality of the patent in suit [311] . Accordingly, the SEP holder is not obliged to share claims charts customarily used in SEP licensing negotiations with the implementer along with the notification of infringement [311] .

Willingness to enter into a licence

The Court further found that Wiko had sufficiently met its obligation to express its willingness to negotiate a licence with Philips [312] .

The Court agreed with the assessment of the District Court that Wiko’s initial reaction to Philips’ notification in July 2015 by letter dated 20 October 2015 was belated. According to the Court, the time available to the implementer for expressing its willingness to enter into negotiations for a licence will – as a rule – not exceed two months [313] . This period of time will usually be sufficient: since by declaring its willingness to enter into negotiations the implementer does not waive any rights (especially the right to contest the validity and/or infringement of the patents in question), it shall not be given more time than the time needed for an ‘initial overview’ of the SEP holder’s claims [313] . Delaying tactics potentially applied by the implementer must be prevented [313] . Against this background, Wiko’s letter dated 20 October 2015 was sent to Philips too late.

Nevertheless, the Court found that Wiko had remedied the belated response after the beginning of the infringement proceedings. On the one hand, Wiko’s letter dated 20 October 2015 had reached Philips at a very early stage of the proceedings, namely just some days after the action was filed [314] . In addition, Wiko had confirmed its willingness to enter into negotiations with Philips expressed in said letter during the course of the proceedings, by making a counteroffer, rendering accounts and providing security to Philips [314] .

SEP holder’s offer

On the other hand, the Court held that Philips had failed to comply with its obligation to make a FRAND licensing offer to Wiko. In particular, the Court took the view that Philips did not provide sufficient information to Wiko with respect to its licensing offer dated July 2015 [315] .

The Court argued that the ‘fairness’ element of the FRAND commitment establishes an ‘information duty’ (‘Informationspflicht’) of the SEP holder with respect to the content of its licensing offer to the implementer [316] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [317] .

In terms of scope, the Court found that the information duty is, basically, not limited to the calculation of the offered royalty but also covers (objective) facts showing that the ‘contractual compensation factors’ (‘vertragliche Vergütungsfaktoren’) are not discriminatory [318] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [318] .

In case that the patent holder has already granted licences to third parties, the information duty will extend also towards its ‘licensing practice’, including comparable agreements [319] .

If the SEP holder uses exclusively a standard licensing programme, then it will be sufficient to show that said programme has been accepted in the market and that the offer made to the implementer corresponds with the standard licensing agreement used [319] .

On the other hand, if the SEP holder has concluded individual licensing agreements with third licensees, then it would be obliged to disclose – at least – the content of the key contractual terms in a way that would allow the implementer to identify whether (respectively why) the offer it received is subject to dissimilar conditions [319] . The Court made, however, clear that – contrary to the approach adopted by the Duesseldorf courts – the SEP holder is not obliged in any case to disclose the full content of all existing comparable agreements [319] . In the eyes of the Court, the information duty serves only the purpose of facilitating good will licensing negotiations. A full disclosure of comparable agreement is, however, uncommon in practice [319] .

In this context, the Court pointed out that the patent holder will have to adequately substantiate the content of ‘justified confidentiality interests’ that might hinder the disclosure of comparable agreements [319] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [319] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [320] . In particular, the Court criticized that Philips did not adequately explain the reasons for choosing to agree on a lump sum payment (instead of a running royalty) in an existing agreement with a third licensee [321] . The fact that companies of different size were affected did not relieve Philips from its information duty; according to the Court, the mere fact that two competitors in a downstream market are of different size does not per se offer sufficient ground for different treatment [322] .

Since the Court assumed that Philips had failed to meet its information duties, it did not examine whether Philips’ licensing offer to Wiko was FRAND in terms of content [323] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [324] .

Implementer’s claim for disclosure of comparable agreements

Referring to the counterclaim for full disclosure of Philips’ comparable agreements raised by Wiko in the appeal proceedings, the Court clarified that a respective right of Wiko does not exist [325] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [325] or Article 102 TFEU [326] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [327] . The Court saw no indication that French law (which is applicable to the ETSI FRAND undertaking) establishes such a right in favour of standards implementers [328] .

C. Other important issues

The Court pointed out that the claims for damages as well as information and rendering of accounts also asserted by Philips in the present proceedings are not subject to the Huawei framework [329] . Moreover, the Court explained that the non-fulfilment of the Huawei obligations by the patent holder poses no limitations on these rights in terms of content [330] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [331] .

  • [296] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
  • [297] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16, cited by http://lrbw.juris.de.
  • [298] Ibid, paras. 37-87.
  • [299] Ibid, para. 88.
  • [300] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
  • [301] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
  • [302] Ibid, para. 107.
  • [303] Ibid, paras. 117 et seqq.
  • [304] Ibid, para. 119.
  • [305] Ibid, paras. 120 et seq.
  • [306] Ibid, para. 120.
  • [307] Ibid, para. 125.
  • [308] Ibid, para. 126.
  • [309] Ibid, para. 127.
  • [310] Ibid, para. 111.
  • [311] Ibid, para. 112.
  • [312] Ibid, paras. 115 and 117.
  • [313] Ibid, para. 115.
  • [314] Ibid, para. 129.
  • [315] Ibid, paras. 131 et seqq.
  • [316] Ibid, paras. 132 et seq.
  • [317] Ibid, para. 135.
  • [318] Ibid, para. 133.
  • [319] Ibid, para. 134.
  • [320] Ibid, paras. 136 et seqq.
  • [321] Ibid, para. 136.
  • [322] Ibid, para. 138.
  • [323] Ibid, para. 131.
  • [324] Ibid, para. 106.
  • [325] Ibid, paras. 157 et seqq.
  • [326] Ibid, paras. 162 et seqq.
  • [327] Ibid, paras. 160 et seq.
  • [328] Ibid, para. 161.
  • [329] Ibid, para. 143.
  • [330] Ibid, para. 144.
  • [331] Ibid, paras. 145 et seqq.


Sisvel v Wiko

9 12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). [332] 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 [333] (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 [334] .
 

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. [335]

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. [336] 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. [337]
 

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. [338]

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. [339] 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. [340] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [340] Detailed technical or legal analysis of the infringement allegation is not required. [340] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [340] If the patent holder offers a portfolio licence, respective extended information duties occur. [340]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [341] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [342] 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. [341]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [343] . 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. [344]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [345] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [345] . The respective declaration must be 'serious and unconditional'. [345]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [345] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [345]

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. [346] 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. [347] 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. [347]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [348] of the Court of Justice of the EU (CJEU). [349] 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. [350]

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. [351] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [351] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [351] 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. [351]

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. [352] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [353] 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. [354] 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). [355]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [356] 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) [357] . It also demanded further claim charts in February 2018, years after the action was filed. [358]

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. [359] 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. [360] 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. [361]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [362] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [362] 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. [363] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [363] 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. [364] 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 [364] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [364]

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'. [365] 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. [366] 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. [367]

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. [368] The SEP holder's FRAND commitment does not give rise to such obligation. [368] 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. [368] 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. [369]

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. [369] 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. [370] 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. [371]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [372] 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. [373] 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. [374] 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. [375]

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. [376] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [376]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [377] 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. [378] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [378]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [379] 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. [380]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [381] 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. [381] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [382]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [383] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [384] 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. [385]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [386]

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. [387]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [388] 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. [389] 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. [390] 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. [391]
 

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. [392] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [392] 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. [392] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [392]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [393] . 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. [394] 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. [395]

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. [396]

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 [397] . [398] 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. [399]
 

  • [332] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
  • [333] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
  • [334] 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.
  • [335] Ibid, para. 289.
  • [336] Ibid, paras. 284 et seqq.
  • [337] Ibid, para. 287.
  • [338] 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.
  • [339] Ibid, paras. 292 et seqq.
  • [340] Ibid, para. 293.
  • [341] Ibid, para. 297.
  • [342] Ibid, paras. 297 et seq.
  • [343] Ibid, para. 299.
  • [344] Ibid, para. 299 and paras. 320 et seqq.
  • [345] Ibid, para. 301.
  • [346] Ibid, para. 302.
  • [347] Ibid, para. 303.
  • [348] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
  • [349] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
  • [350] Ibid, para. 304.
  • [351] Ibid, para. 305.
  • [352] Ibid, paras. 321 et seqq.
  • [353] Ibid, para. 321.
  • [354] Ibid, para. 322.
  • [355] Ibid, paras. 323 et seq.
  • [356] 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).
  • [357] Ibid, paras. 325, 328 and 331.
  • [358] Ibid, para. 327.
  • [359] Ibid, paras. 333 et seqq.
  • [360] Ibid, paras. 334 and 338.
  • [361] Ibid, paras. 337 and 341 et seqq.
  • [362] Ibid, para. 330.
  • [363] Ibid, para. 342.
  • [364] Ibid, para. 307.
  • [365] Ibid, para. 308.
  • [366] Ibid, paras. 308 and 310.
  • [367] Ibid, para. 309.
  • [368] Ibid, para. 310.
  • [369] Ibid, paras. 311 et seqq.
  • [370] Ibid, paras. 311 and 313 et seqq.
  • [371] Ibid, paras. 316 et seqq.
  • [372] Ibid, para. 352.
  • [373] Ibid, para. 353.
  • [374] Ibid, paras. 354 et seqq.
  • [375] Ibid, para. 358.
  • [376] Ibid, para. 359.
  • [377] Ibid, para. 360.
  • [378] Ibid, para. 361.
  • [379] Ibid, para. 362.
  • [380] Ibid, para. 363.
  • [381] Ibid, paras. 365 et seqq.
  • [382] Ibid, paras. 367 et seqq.
  • [383] Ibid, para. 366.
  • [384] Ibid, para. 344.
  • [385] Ibid, para. 346.
  • [386] Ibid, paras. 379 et seqq.
  • [387] Ibid, para. 311.
  • [388] Ibid, paras. 379 et seqq.
  • [389] Ibid, para. 380.
  • [390] Ibid, para. 378.
  • [391] Ibid, para. 384.
  • [392] Ibid, para. 348.
  • [393] Ibid, para. 389.
  • [394] Ibid, paras. 389 et seq.
  • [395] Ibid, para. 391.
  • [396] Ibid, paras. 260 et seqq.
  • [397] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
  • [398] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
  • [399] Ibid, para. 395.


Cases from LG Düsseldorf - Regional Court


Sisvel v Haier

3 11月 2015 - Case No. 4a O 93/14

  1. Facts
    Claimant, a non-practicing entity, is the proprietor of European patent EP B, originally granted to the applicant “A”, allegedly covering a feature of the GPRS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market GPRS-based devices. On 10 April 2013, Claimant made a commitment towards ETSI declaring to grant a license on FRAND terms with regard to, inter alia, patent EP B. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014 Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Patent Program” and made an offer but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by Defendant “J” without a counter-offer. By letter as of 12 August 2015 Defendants submitted a counter-offer regarding patent EP B which was, in turn, refused by Claimant on 24 August 2015. After Claimant had brought an action against “I” and “J”, Defendants made yet another licensing offer in their court filing as of 21 September 2015 which was refused as well. In the course of the oral hearings on 29 September 2015, Defendants submitted a security in the amount of € 5000 and rendered account in respect of acts of use in the past.
  2. Court’s reasoning
    1. Market power and notice of infringement
      The court left 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 (cf. below). As to the infringement notification, [400] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules. In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.

    2. The SEP owner’s licensing offer
      As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [401]

    3. The standard implementer’s reaction
      According to the court even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [402] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [403] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [404]

  3. Other important issues
    In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes 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. [405] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [406]
  • [400]  Case No. 4a O 93/14, para. 90-94
  • [401]  Case No. 4a O 93/14, para. 96-98, 125
  • [402]  Case No. 4a O 93/14, para. 98-101
  • [403]  Case No. 4a O 93/14, para. 14, 103-109
  • [404]  Case No. 4a O 93/14, para. 103-111
  • [405]  Case No. 4a O 93/14, para. 37-40
  • [406]  Case No. 4a O 93/14, para. 118-123


Sisvel v Haier 2

3 11月 2015 - Case No. 4a O 144/14

  1. Facts
    The facts of the case are very similar to those of LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14: Claimant, a non-practicing entity, is the proprietor of the European patent EP D, originally applied for by “A” and formerly owned (after various transfers) by “B”, allegedly covering part of the UMTS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market UMTS-based devices. On 10 April 2013 Claimant made a FRAND commitment towards ETSI, inter alia regarding patent EP D. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014, Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Program” but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by “J” without a counter-offer. By letter as of 13 October 2014 one of the Defendants submitted a first counter-offer regarding patent EP D which Claimant refused on 20 October 2014 referring to the ongoing negotiations with the parent company of that Defendant. On 12 August 2015 Defendants “I” and “J” made a second counter-offer which was rejected by Claimant on 24 August 2015. After Claimant had brought a lawsuit Defendants made a last counter-offer in their court filing as of 22 September 2015 that was also refused by Claimant. In the course of the oral hearings of 29 September 2015, Defendants submitted a security (€ 5000) and rendered account in respect of acts of use in the past.
  2. Court’s reasoning
    Except for references to the slightly differing facts of both cases the court’s considerations are identical to those in the decision LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14.
    1. Market power and notice of infringement
      The court left 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 (cf. below). As to the infringement notification, [407] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules.

      In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.
    2. The SEP owner’s licensing offer
      As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [408]
    3. The standard implementer’s reaction
      According to the court, even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [409] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [410] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [411]
  3. Other important issues
    In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes 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. [412] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [413]
  • [407] Case No. 4a O 93/14, para. 90-94
  • [408] Case No. 4a O 93/14, para. 96-98, 125
  • [409] Case No. 4a O 93/14, para. 98-101
  • [410] Case No. 4a O 93/14, para. 14, 103-109
  • [411] Case No. 4a O 93/14, para. 103-111
  • [412] Case No. 4a O 93/14, para. 37-40
  • [413] Case No. 4a O 93/14, para. 118-123


Saint Lawrence v Vodafone

31 3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, [414] 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. [415] The court declared the Huawei rules applicable to claims for the recall of products. [416] 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. [417] 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. [418] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [419] 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. [420] 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. [421] 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. [422] 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. [423] 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. [424] 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. [425] 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. [426] 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. [427]
    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. [428] Whether the Intervener satisfied the ECJ criteria was left undecided. [429] 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. [430] 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. [431] 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. [432] 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. [433] 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. [434] 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. [435] 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. [436]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [437] 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. [438] 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. [439]
  • [414] 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.
  • [415] Case No. 4a O 73/14, para. 184
  • [416] Case No. 4a O 73/14, para. 187
  • [417] Case No. 4a O 73/14, para. 195 et seq.
  • [418] Case No. 4a O 73/14, para. 208-210
  • [419] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [420] Case No. 4a O 73/14, para. 193
  • [421] Case No. 4a O 73/14, para. 270 et seq.
  • [422] Case No. 4a O 73/14, para. 222 et seq.
  • [423] Case No. 4a O 73/14, para. 225 et seq.
  • [424] 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.
  • [425] 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.
  • [426] Case No. 4a O 73/14, para. 256 et seq.
  • [427] Case No. 4a O 73/14, para. 279 et seq.
  • [428] Case No. 4a O 73/14, para. 214-220
  • [429] Case No. 4a O 73/14, para. 214-220; 278
  • [430] Case No. 4a O 73/14, para. 266
  • [431] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [432] Case No. 4a O 73/14, para. 264
  • [433] Case No. 4a O 73/14, para. 291 et seq.
  • [434] Case No. 4a O 73/14, para. 278
  • [435] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [436] Case No. 4a O 73/14, para. 304
  • [437] Case No. 4a O 73/14, para. 189
  • [438] Case No. 4a O 73/14, para. 309-313
  • [439] Case No. 4a O 73/14, para. 317 et seq.


Unwired Planet v Samsung

19 1月 2016 - Case No. 4b O 120/14

  1. Facts
    Since 7 March 2014 Claimant, a non-practicing entity, is the proprietor of European patent EP D, allegedly covering a feature of the GSM standard, originally granted to the Intervener, and subsequently transferred to company “I”. Defendants, belonging to the K-group, produce and market GSM- and UMTS-based devices.
    In an agreement as of 26 October 2011, the Intervener granted a worldwide non-exclusive license to Qualcomm Inc., being, in turn, allowed to grant sub-licenses to its customers. Furthermore, by agreement as of 1 February 2014 one of the Defendants was granted a worldwide, non-exclusive license to patents owned by the Intervener.
    On 10 January 2013, the Intervener concluded a so-called “Master Sales Agreement” (MSA), concerning the exploitation of a portfolio of more than two thousand patents, with “E”, “F” and its subsidiaries. Claimant became a party to the MSA later on. After its accession to the MSA, “I”, by assuming the existing FRAND obligation of the Intervener in accordance with the MSA, made a separate FRAND commitment towards ETSI on 14 June 2013 and declared, in an agreement as of 13 February 2013, to ensure that subsequent acquirers equally assume this obligation. Accordingly, after the transfer of patent EP D to Claimant the latter made, on 6 March 2014, a separate commitment towards ETSI declaring to be willing to grant licenses on FRAND terms with regard to, inter alia, patent EP D.
    In order to implement the MSA the parties concluded three transfer agreements. Claimant argues that the Intervener validly transferred a part of its patent portfolio, including patent EP D, by agreement as of 11 February 2013 to undertaking “B”. On 13 February 2013, “B”, in turn, transferred the patent portfolio, including patent EP D, to “I”. After successfully requesting, on 3 September 2013, an amendment of the patent register, being performed on 24 October 2013, “I” transferred, on 27 February 2014, the patent portfolio, including patent EP D, to Claimant. Claimant successfully requested, on 7 March 2014, an amendment of the patent register which was performed on 3 July 2014.
    As a reaction to Claimant’s public license proposal including a royalty of USD 0.75 per mobile device Defendants allegedly submitted a counter-offer but no licensing agreement was concluded.
  2. Court’s reasoning
    1. Market power
      The court stressed that an application of Article 102 TFEU does not automatically result from SEP ownership but that it requires proof of a dominant position on the relevant market being conveyed by the SEP in question. Due to the fact that products not implementing the patent-in-suit could not effectively compete on the relevant market because of GSM being a key feature for such products market power of Claimant was affirmed. [440]
    2. Applicability of the Huawei rules to damages and the rendering of accounts
      While the Huawei rules of conduct apply to actions for injunction, recall and destruction of products they are, in principle, not directly applicable to claims for damages and the rendering of accounts. [441] Nor is it necessarily abusive for a SEP proprietor to bring an action for damages and the rendering of accounts without having notified the standard implementer of an infringement and without having offered a FRAND license beforehand. The Huawei obligations do, however, have an indirect impact on the extent to which damages and the rendering of accounts are due: Where the SEP proprietor fails to grant a FRAND license although he has made a FRAND commitment and the standard implementer has expressed its readiness to take a license, damages are limited to the FRAND royalty level but only for the period after the SEP proprietor’s abusive refusal to license. [442] Claims for information and the rendering of accounts must, in this event, be limited to what is necessary for determining FRAND-based damages. [443]
    3. Cap on damages/rendering of accounts in casu
      In casu Defendant could not show that he had complied with its Huawei obligation to sufficiently express its willingness to take a FRAND license. In consequence, no cap on Claimant’s claim for damages was deemed appropriate. [443]
  3. Other important issues
    Whether a SEP proprietor is free to enforce its patent in court or whether the proprietor is obliged to grant a FRAND license has to be determined under Art. 102 TFEU, not Art. 101 TFEU. [444] A FRAND declaration is not an unconditional offer made by the patent proprietor to enter into a licensing agreement with anyone willing to take a license, it merely expresses that the proprietor is, in principle, ready to grant a FRAND license if the patent in question conveys market dominance. As such, the FRAND commitment merely specifies a duty to license which competition law would impose anyway but it has an impact on the patent owner’s obligations under Art. 102 TFEU. [445]
    As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes—also with regard to claims for damages and the rendering of accounts—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. The non-registration of “B” as an interim owner was considered irrelevant under the circumstances of the present case (but not generally). Case No. 4b O 120/14, para. I, 1-2
    The MSA and the subsequent transfer agreements neither violate the German provisions on merger control (§§ 35-43 GWB) since, in any case, merger control thresholds are not reached.
    Nor was a violation of the European provisions on anticompetitive agreements (Article 101 TFEU) or on the abuse of a dominant position (Article 102 TFEU) found. Case No. 4b O 120/14, para. I, 4, a-c In particular, the transactions did not aim at enforcing non-FRAND royalties or at discriminating between licensees and the agreements framing the transactions ensured that the acquirers of the relevant patents were bound by (the initial) FRAND commitments. [446] The acquirer of a SEP is neither obliged to continue the transferor’s licensing practice in an unmodified manner nor to implement exactly the same conditions in all licensing agreements, provided the conditions are FRAND and no unjustified discrimination takes place. It is not abusive in itself for a (former) SEP proprietor to split its portfolio and to transfer the parts to several acquirers, thereby trying to arrive at higher overall royalties being paid for the portfolio. Nor is a resulting increase in the number of licenses a standard implementer has to take per se inacceptable. However, licensing conditions are FRAND only if the cumulative royalty level resulting from the licensing of all pertinent SEPs is not excessive. Putting it differently, where the royalty level for the entire portfolio was below or at the lower end of the FRAND range, it is not abusive to arrive, by way of splitting the portfolio and licensing its parts separately, at a higher overall royalty level within the FRAND range. Furthermore, the transaction agreements did not amount to price fixing. [447]
  • [440] Case No. 4b O 120/14, para. VII, 6, a
  • [441] Case No. 4b O 120/14, para. VII, 6, b, aa, bb
  • [442] Case No. 4b O 120/14, para. VII, 6, b, dd
  • [443] Case No. 4b O 120/14, para. VII, 6, b, ee
  • [444] Case No. 4b O 120/14, para. VII, 4
  • [445] Case No. 4b O 120/14, para. VII, 5
  • [446] Case No. 4b O 120/14, para. I, 4, b, aa
  • [447] Cf. for details LG Düsseldorf, 19 January 2016 - Case No. 4b O 120/14, para. I, 4, b, bb


Saint Lawrence v Vodafone 2

31 3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, [448] 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. [449] The court declared the Huawei rules applicable to claims for the recall of products. [450]
      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. [451] 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. [452] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [453]
      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. [454]
      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. [455] 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. [456]
      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. [457] 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. [458] 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. [459]
      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. [460]
      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. [461]
    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. [462] Whether the Intervener satisfied the ECJ criteria was left undecided. [463]
      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. [464] 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. [465] 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. [466]
      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. [467] 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. [468]
      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. [469] 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. [470]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [471]
    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. [472]
    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. [473]
  • [448] 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.
  • [449] Case No. 4a O 73/14, para. 184
  • [450] Case No. 4a O 73/14, para. 187
  • [451] Case No. 4a O 73/14, para. 195 et seq.
  • [452] Case No. 4a O 73/14, para. 208-210
  • [453] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [454] Case No. 4a O 73/14, para. 193
  • [455] Case No. 4a O 73/14, para. 270 et seq.
  • [456] Case No. 4a O 73/14, para. 222 et seq.
  • [457] Case No. 4a O 73/14, para. 225 et seq.
  • [458] 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.
  • [459] 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.
  • [460] Case No. 4a O 73/14, para. 256 et seq.
  • [461] Case No. 4a O 73/14, para. 279 et seq.
  • [462] Case No. 4a O 73/14, para. 214-220
  • [463] Case No. 4a O 73/14, para. 214-220; 278
  • [464] Case No. 4a O 73/14, para. 266
  • [465] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [466] Case No. 4a O 73/14, para. 264.
  • [467] Case No. 4a O 73/14, para. 291 et seq.
  • [468] Case No. 4a O 73/14, para. 278
  • [469] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [470] Case No. 4a O 73/14, para. 304
  • [471] Case No. 4a O 73/14, para. 189
  • [472] Case No. 4a O 73/14, para. 309-313
  • [473] Case No. 4a O 73/14, para. 317 et seq.


France Brevets v HTC

26 3月 2015 - Case No. 4b O 140/13

A. Facts

The Claimant is a patent assertion entity established by the French State [474] . The Claimant was granted an exclusive licence by a company previously called Inside Technologies S.A. (SEP holder) for a European patent essential (Standard Essential Patent or SEP) for the implementation of the Standard LL V11.0.0, 2011-09 (LL standard) which was developed by the European Telecommunications Standards Institute (ETSI) [475] . The SEP holder had made an undertaking towards ETSI to make its SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [476] . The LL standard enables applications of the so-called “Near field Communication” (NFC) technology to run on smartphones over the phone’s SIM-card [477] . NFC-applications can alternatively be implemented on smartphones also by a so-called “Smartcard”, or so-called “embedded secure elements” [478] .

The Defendant is the German subsidiary of an international manufacturer of smartphones that incorporate a so-called “NFC-controller” implementing the LL standard [479] The Defendant promotes the offering and sale of smartphones manufactured by its parent company in Germany [480] .

The Claimant brought an action for infringement of the German part of the SEP in question against the Defendant before the District Court (Landgericht) of Düsseldorf (Court), requesting for injunctive relief, information and rendering of accounts [481] . The Claimant also sought for a declaratory judgment on the Defendant’s liability for damages on the merits [481] .

Against these claims, the Defendant raised inter alia a defence based on antitrust considerations; basically, it argued that the Claimant’s request for injunctive relief constitutes an abuse of market power conferred to the Claimant by the SEP in suit in breach of Article 102 of the Treaty on the Functioning of the European Union (TFEU) (antitrust defence) [482] . The Defendant also requested the Court to stay its proceedings, until the Court of Justice of the European Union (CJEU) rendered its final decision in the matter Huawei v ZTE which concerned the availability of injunctive relief to SEP holders [483] .

The Court dismissed the Defendant’s request to order a stay of the proceedings [484] and granted the Claimant’s motions to the full extent. In its analysis regarding to the antitrust defence, the Court took into account the opinion delivered by Advocate General Wathelet in the matter Huawei v ZTE (Wathelet opinion) [485] , before the final decision of the CJEU was delivered on 16th July 2015 [486] .


B. Court’s reasoning

As a starting point, the Court made clear that an entity granted an exclusive licence for a SEP is entitled to all rights arising from the patent, including claims for injunctive relief as well as claims for damages, information and rendering of accounts [487] .

Having said that, the Court pointed out that the protection of intellectual property rights (IPRs) is a high priority; IPRs are expressly protected under the Charter of Fundamental Rights of the European Union (Article 17 Sec. 2), which also guarantees right holders access to justice (Article 47). Limitations of these rights can be justified only by antirust rules for the protection of general public interest, particularly Article 102 TFEU [488] .

Following the Wathelet opinion, the Court found that a dominant position of the Claimant, which is re-quired for the implementation of Article 102 TFEU, cannot be established solely on grounds of its legal position with respect to the SEP in suit [489] . In the Court’s view, not every SEP confers market power relevant from an antitrust perspective to its holder [489] . Moreover, it has to be examined on a case-by-case basis whether the technical teachings protected by the SEP actually establish such market power [489] .

Further, the Court held that ownership of a SEP does not give rise to the presumption that market power exists [490] . Standards, particularly in the telecommunications sector, refer also to technical functionalities which are of secondary importance to the relevant market; with respect to such functionalities, there are no grounds for a presumption that the SEP holder has market power [490] . Insofar, the party asserting the existence of market power must plead and establish the relevant facts in trial [490] .

With respect to IPRs, the relevant market from an antitrust perspective is not the licensing market, but the downstream product market [491] . Looking at SEPs, relevant is the market in which products implement-ing the respective standard are offered [492] . Accordingly, the Court found that the relevant market in the present case is the smartphone market, because the NFC technology is almost solely used in smartphones [493] .

Since the NFC technology does not apply to basic functionalities of smartphones and is, therefore, no prerequisite for market entry, market power could only be established, if smartphones that do not use the teachings of a SEP could not compete in the market with products implementing this patent [494] .

In the eyes of the Court, this was not the case. The SEP in suit (and the LL Standard) enable NFC-applications to run over smartphones’ SIM-card. However, NFC-applications can alternatively also run over so-called “Smartcards” or “embedded secure elements”. The Defendant could not establish that NFC-applications running over the SEP in suit have reached market penetration to the extent that market power could be achieved [495] . On the contrary, smartphone byers do not appear to base their purchase decision on which of the three available technical solutions for enabling NFC-applications the smartphone uses [495] .

  • [474] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 18
  • [475] Ibid, paras. 19, 20, 24 and 26
  • [476] Ibid, para. 22
  • [477] Ibid, para. 212
  • [478] Ibid, para. 213
  • [479] Ibid, para. 22.
  • [480] Ibid, paras. 151 et seq
  • [481] Ibid, para. 3
  • [482] Ibid, para. 46
  • [483] Ibid, para. 38
  • [484] Ibid, para. 219
  • [485] Opinion of Advocate General Wathelet delivered on 20 November 2014, ECLI:EU:C:2014:2391
  • [486] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 197 et seqq
  • [487] Ibid, para. 61
  • [488] Ibid, para. 197
  • [489] Ibid, para. 199
  • [490] Ibid, para. 201
  • [491] Ibid, para. 204
  • [492] Ibid, para. 205
  • [493] Ibid, para. 206
  • [494] Ibid, para. 208
  • [495] Ibid, para. 217


District Court, LG Düsseldorf

11 7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) [496] . 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 [497] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [498] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [498] .

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) [499] . 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 [500] . 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 [501] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [501] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [502] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [500] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [503] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [504] , it found that the Claimant cannot enforce its patent rights for the time being [505] , 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) [503] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [507] .

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 [508] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [509] . 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 [510] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [511] .

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 [512] . 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 [512] . 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 [512] .

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 [512] . 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) [512] . 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 [512] .

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 [513] .

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 [514] . 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 [515] .

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 [516] .

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 [517] . 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 [517] .

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 [518] . 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 [518] . 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 [518] .

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) [519] . 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) [519] . 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 [519] .

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 [520] .

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 [521] .

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 [522] . Given the circumstances of the specific case, even an implicit behaviour can suffice [522] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [523] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [523] . 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 [523] . 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 [523] .

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 [524] . 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 [525] .

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 [526] .

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 [527] . 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 [500] .

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 [528] . 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 [529] .

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 [530] . 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 [530] . 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 [530] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [531] . 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 [532] .

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 [502] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [533] .

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 [534] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [535] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [536] .

First, the terms did not adequately consider the effects of patent exhaustion [537] . As a rule, FRAND requires licensing offers to contain respective provisions [538] . 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 [539] .

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 [540] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [541] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [542] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [543] . 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 [543] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [544] .

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 [534] . 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) [545] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [546] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [546] . 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 [547] .

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 [548] . 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 [549] .

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 [550] . 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 [551] . 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 [552] .

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 [553] . 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 [553] . 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) [553] . 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 [553] . 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 [554] .

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 [555] . 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 [556] . 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 [557] .

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 [558] .


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 [559] .

  • [496] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
  • [497] Ibid, para. 13.
  • [498] Ibid, para. 12.
  • [499] Ibid, paras. 14 and 211.
  • [500] Ibid, para. 15.
  • [501] Ibid, para. 16.
  • [502] Ibid, para. 236.
  • [503] Ibid, paras. 140 and 313 et seqq.
  • [504] Ibid, paras. 114 et seqq.
  • [505] Ibid, paras. 60 and 140.
  • [506] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [507] Ibid, para. 142.
  • [508] Ibid, para. 148.
  • [509] Ibid, paras. 153 and 146.
  • [510] Ibid, paras. 159 - 181.
  • [511] Ibid, para. 158.
  • [512] Ibid, para. 147.
  • [513] Ibid, paras. 183 et seqq.
  • [514] Ibid, para. 191.
  • [515] Ibid, para. 188.
  • [516] Ibid, paras. 195 et seqq.
  • [517] Ibid, para. 199.
  • [518] Ibid, para. 198.
  • [519] Ibid, para. 200.
  • [520] Ibid, para. 203.
  • [521] Ibid, para. 205.
  • [522] Ibid, para. 208.
  • [523] Ibid, para. 207.
  • [524] Ibid, para. 210.
  • [525] Ibid, para. 212.
  • [526] Ibid, paras. 215 et seq.
  • [527] Ibid, para. 220.
  • [528] Ibid, paras. 222 et seqq.
  • [529] Ibid, para. 225.
  • [530] Ibid, para. 233.
  • [531] Ibid, para. 228.
  • [532] Ibid, para. 230.
  • [533] Ibid, para. 237.
  • [534] Ibid. para. 241.
  • [535] Ibid, para. 242.
  • [536] Ibid, paras. 283 et seqq.
  • [537] Ibid, para. 285.
  • [538] Ibid, para. 288.
  • [539] Ibid, paras. 292 et seq.
  • [540] Ibid, paras. 298 et seqq.
  • [541] Ibid, para. 301.
  • [542] Ibid, para. 306.
  • [543] Ibid, para. 311.
  • [544] Ibid, para. 271.
  • [545] Ibid, para. 250.
  • [546] Ibid, para. 248.
  • [547] Ibid, para. 267.
  • [548] Ibid, paras. 256 and 259 et seq.
  • [549] Ibid, para. 262.
  • [550] bid, paras. 258 and 264.
  • [551] Ibid, paras. 263 and 265.
  • [552] Ibid, para. 265.
  • [553] Ibid, para. 273.
  • [554] Ibid, para. 274.
  • [555] Ibid, para. 276.
  • [556] Ibid, para. 277.
  • [557] Ibid, para. 281.
  • [558] Ibid, para. 315.
  • [559] Ibid, paras. 75 et seq.


Fraunhofer-Gesellschaft (MPEG-LA) v ZTE

9 11月 2018 - Case No. 4a O 15/17

A. Facts

The Claimant, Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent of SEP) [560] . The patent holder committed towards the relevant standardization body to make this patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant contributed the SEP in question to a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [561] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones manufactured by its parent company (parent company) which practise the AVC/H.264 standard in Germany [562] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [563] . It has signed licensing agreements with approx. 1,400 implementers [563] .

By e-mail dated 8 September 2011, MPEG LA sent a copy of its standard licensing agreement to the Defendant’s parent company and informed the latter that its “mobile handset and tablet products” infringe patents included in its “AVC patent portfolio” (without indicating, however, either the concrete patent numbers or the specific infringing products) [564] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [565] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [566] .

In 2012, the parent company acquired patents included in the MPEG LA pool [561] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [567] , the Claimant brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [568] .

During the proceedings, the Defendant declared its willingness to obtain a licence for the patent in suit and other SEPs of the Claimant referring to the AVC/H.264 standard [569] . Moreover, the Defendant sent to MPEG LA two signed copies of MPEG LA’s standard licensing agreement, along with a statement of accounts of its past sales and a bank guarantee [570] . MPEG LA did not countersign this agreement. It insisted, instead, on a licence that would cover all companies belonging to the same group as the Defendant [571] .

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


B. Court’s reasoning

The Court held that the mobile phones sold by the Defendant in Germany infringe Claimant’s SEP in suit [572] . It also found that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [573] (Huawei obligations or framework) with respect to dominant undertakings [574] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [575] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [576] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [576] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [577] . A dominant market position is given, when the use of the SEP is required for entering the market [577] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [577] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no “realistic” alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [578] .

2. Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [579] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [580] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [581] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [582] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [583] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [584] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [585] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the nevertheless existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [586] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [587] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [588] .

Having said that, the Court found no flaws in Claimant’s conduct. In the Court’s view, the Claimant had met its Huawei obligation to notify the Defendant about the infringement of its patent as well as the obligation to present the Defendant with a written licensing offer covering also the patent in suit. The Defendant, on the other hand, adequately expressed its willingness to enter into a licence, failed, however, to make a FRAND counter-offer to the Claimant. Since an adequate counter-offer was missing, the Court did not take up the question whether the bank guarantee provided by the Claimant to MPEG LA constitutes an adequate security in terms of the Huawei framework [589] .

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the e-mail sent by MPEG LA to the parent company on 8 September 2011 [590] .

The fact that this e-mail was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries con­cerned [591] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [591] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [592] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant [593] . The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [594] . In addition, the Defendant’s parent company was also aware of MPEG LA’s capacity to act on behalf of the Claimant, since it joined the MPEG LA pool as a patent holder in 2012 [595] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [596] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [597] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [597] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [597] . The respective test is, however, subject to strict conditions [597] .

Based on the above considerations, the Court found that MPEG LA’s e-mail to the parent company dated 8 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [598] . The overall circumstances of the case (especially the fact that the parent company acquired patents included in the MPEG LA pool in 2012 and had also previously been in contact with MPEG LA regarding a standard licensing agreement) [599] , give rise to the assumption that the parent company had already been aware of the MPEG LA pool and the fact that AVC/H.264-compliant products need to be licensed [600] .

Willingness to obtain a FRAND-licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the e-mail sent to MPEG LA on 15 September 2011 [601] .

In the eyes of the Court, this e-mail indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard. This is sufficient under the Huawei framework [602] . The implementer is not required to refer to a specific licensing agreement [602] .

SEP holder’s licensing offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [603] .

The fact that the offer was addressed to the parent company and not to the Defendant was not relevant, since the parties were discussing about a licensing agreement on group level and the parent company had itself requested to receive the draft agreement [604] .

Furthermore, the fact that the draft agreement sent to the parent company did not directly provide for the licensing of all subsidiaries (including the Defendant) was also not considered as harmful [605] . Insofar, the Court held that under the Huawei framework it is, as a rule, acceptable that the patent holder enters into licensing negotiations only with the parent company within a group of companies [606] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [607] . An exception would apply only then, when it is made clear already at the beginning of the licensing negotiations that the offer made to the parent company cannot include its subsidiaries [608] . This was, however, not the case here, since the standard licensing agreement sent to the parent company indicates MPEG LA’s willingness to grant licences also to the subsidiaries of the former [609] .

Besides that, the Court did not consider the fact that the standard licensing agreement sent to the parent company did not cover the sale of licensed products to wholesalers and retailers (but regarded only sales to end users) to be in conflict with the Huawei framework, although the Defendant was engaged also in this business [610] . According to the Court, sales to wholesalers and retailers would be covered by the effects of patent exhaustion, even without an express provision in a potential licensing agreement [611] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company does not contain detailed explanation of the way the royalties were calculated [612] . In the Court’s view, the respective explanation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [613] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [613] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [613] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [614] .

Against this background, the Court did not consider it to be harmful that the standard licensing agreement sent to the parent company by MPEG LA did not include a detailed explanation of the royalty calculation in the above sense [615] . On the one hand, the parent company was aware that this (standard) agreement had been accepted in the market by a great number of licensees [615] . On the other hand, the parent company was also adequately aware of the way the offered royalties were calculated, since it held patents included in the MPEG LA pool itself [616] .

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

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [617] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [617] . The Court made clear that in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [617] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [617] .

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases; an unequal treatment is allowed, as long as it is objectively justified [618] . Limitations in this context may especially occur, when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive only when it uses the patent’s teachings [618] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [619] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [619] .

Looking at the standard licensing agreement sent to the parent company, the Court observed that the fact the MPEG LA sought for a licence covering all companies within the group, to which the Defendant belonged, was not violating FRAND principles [620] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [621] . Patent holder have a special interest in concluding such licences particularly in cases, in which – as in the present case – the parent company manufactures products which are sold worldwide by its subsidiaries. This is because licences at group level makes sure that patent holders can enforce their rights effectively, without having to distinguish between licenced and unlicenced products within a group of companies [622] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [623] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [624] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [624] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [625] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [626] . The fact, however, that this offer concerned a licence limited to the Defendant and, thus, not covering the parent company (and all further companies belonging to the same group) was not FRAND conform [627] . The Court accepted that licences at group level mirror the industry practice in the field in question; accordingly, no objections can be raised when a patent holder contributing its patents to a pool is willing to grant only licences covering all group companies [628] .

Since the counter-offer was not FRAND in terms of content, the Court did not have to decide, whether it was made in due time, or not [629] .

  • [560] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
  • [561] Ibid, para. 58
  • [562] Ibid, para. 57
  • [563] Ibid, para. 59
  • [564] Ibid, paras. 61 et seqq. and 340
  • [565] Ibid, para. 65
  • [566] Ibid, para. 66
  • [567] Ibid, para. 73
  • [568] Ibid, para. 42
  • [569] bid, para. 74
  • [570] Ibid, paras. 75 et seq
  • [571] Ibid, para. 75
  • [572] Ibid, paras. 127 – 254
  • [573] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
  • [574] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
  • [575] Ibid, para. 283 and paras. 291 et seqq
  • [576] Ibid, para. 286
  • [577] Ibid, para. 287
  • [578] Ibid, paras. 291 et seqq
  • [579] Ibid, para. 296
  • [580] Ibid, para. 300
  • [581] Ibid, para. 302
  • [582] Ibid, para. 308
  • [583] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06
  • [584] Ibid, para. 305
  • [585] Ibid, paras. 306 et seqq
  • [586] Ibid, para. 310
  • [587] Ibid, para. 311
  • [588] Ibid, para. 312
  • [589] Ibid, para. 421
  • [590] Ibid, para. 314
  • [591] Ibid, para. 320
  • [592] Ibid, para. 318
  • [593] Ibid, para. 329
  • [594] Ibid, paras. 336 et seq
  • [595] Ibid, para. 338
  • [596] Ibid, para. 198
  • [597] Ibid, para. 315
  • [598] Ibid, paras. 340 et seq
  • [599] Ibid, paras. 342 et seqq
  • [600] Ibid, para. 344
  • [601] Ibid, para. 346
  • [602] Ibid, para. 348
  • [603] Ibid, para. 352
  • [604] Ibid, para. 367
  • [605] Ibid, para. 369
  • [606] Ibid, para. 370
  • [607] Ibid, para. 378
  • [608] Ibid, para. 371
  • [609] Ibid, para. 374
  • [610] Ibid, para. 376
  • [611] Ibid, para. 377
  • [612] Ibid, para. 380
  • [613] Ibid, para. 381
  • [614] Ibid, para. 386
  • [615] Ibid, para. 382
  • [616] Ibid, para. 387
  • [617] Ibid, para. 391
  • [618] Ibid, para. 392
  • [619] Ibid, para. 393
  • [620] Ibid, para. 397
  • [621] Ibid, para. 398
  • [622] Ibid, para. 399
  • [623] Ibid, para. 402
  • [624] Ibid, para. 404
  • [625] Ibid, para. 410
  • [626] Ibid, para. 413
  • [627] Ibid, para. 416
  • [628] Ibid, para. 417
  • [629] Ibid, para. 411


Tagivan (MPEG-LA) v Huawei

15 11月 2018 - Case No. 4a O 17/17

A. Facts

The Claimant, Tagivan II LLC, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent, or SEP). The patent in question is subject to a FRAND commitment (FRAND stands for Fair, Reasonable and Non-Discriminatory terms and conditions) made towards the relevant standardisation body. It was included into a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [630] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones in Germany that practise the AVC/H.264 standard [631] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [632] . Since 2004, MPEG-LA has signed approx. 2,000 agreements with implementers [633] , 1,400 of which are still in force [632] .

In 2009, MPEG LA and the Defendant’s parent company (parent company) started discussions about a potential licence covering other standards, especially the MPEG-2 standard. On 6 September 2011, MPEG LA informed the parent company about the possibility to obtain a licence also regarding the AVC/H.264 standard, by sending PDF-copies of its standard licensing agreement to the parent company via email [634] . On 15 September 2011, the parent company suggested to arrange a call on this issue [635] . In February 2012, MPEG LA sent the pool’s standard licensing agreement for the AVC/H.264 standard to the parent company also by mail [636] .

In November 2013, the discussions between MPEG LA and the parent company ended without success [637] . The parties resumed negotiations in July 2016; again, no agreement was reached [637] .

The Claimant then brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [638] .

In November 2017, during the course of the present proceedings, the Defendant made a counteroffer to the Claimant for a licence, which – in contrast to MPEG LA’s standard licensing agreement – was limited to the Claimant’s patent portfolio and established different royalty rates for different regions, in which the Defendant sold products [639] .

In March and September 2018 (again during the proceedings), the Defendant provided bank guarantees to the Claimant covering past and future sales of (allegedly) infringing products. The security amounts were calculated based on the Defendant’s counteroffer dated November 2017 [640] . Furthermore, the Defendant made a second counteroffer to the Claimant shortly after the last oral hearing before the Court [641] .

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

B. Court’s reasoning

The Court found that the patent in suit was valid [642] , standard essential [643] and infringed by the products sold by the Defendant in Germany [644] . Furthermore, the Court held that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [645] (Huawei obligations or framework) with respect to dominant undertakings [646] .

Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [647] .

The Court defined the relevant market for the assessment of dominance as the market, in which licences for any given patent are offered [648] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [648] .

The Court made clear that ownership of a SEP does not per se establish market dominance [649] . A dominant market position is given, when the use of the SEP is required for entering the market [650] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [651] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no ‘realistic’ alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [652] .

Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [653] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [654] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [655] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [656] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [657] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement. The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [658] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the, nevertheless, existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [659] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [659] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [660] .

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

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the email sent by MPEG LA to the parent company on 6 September 2011 [661] .

The fact that this email was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries concerned [662] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [663] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [664] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant. The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [665] . In addition, the Defendant’s parent company was most likely aware of MPEG LA’s capacity to act on behalf of the Claimant, since it had entered into direct negotiation with MPEG LA already in 2009, that is almost two years prior to the notification of infringement [666] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the infringed patent (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [667] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [667] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [667] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [667] . The respective test is, however, subject to strict conditions [667] .

Based on the above considerations, the Court found that MPEG LA’s email to the parent company dated 6 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [668] . The overall circumstances of the case (especially the fact that the parent company had been in negotiations with MPEG LA already since 2009 and, therefore, should have been aware that MPEG LA has granted licences for the AVC/H.264 standard to the implementers mentioned at its website), give rise to the assumption that the parent company had been conscious of the fact that AVC/H.264-compliant products need to be licensed [669] .

Willingness to obtain a licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the email sent to MPEG LA on 15 September 2011 [670] .

In the eyes of the Court, this email indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard, especially if it is seen in the context of the negotiations between MPEG LA and the parent company that had commenced in 2009 [670] . This is sufficient under the Huawei framework: A general, informal statement suffices [671] . The implementer is not required to refer to a specific licensing agreement (on the contrary, this could be considered harmful under certain circumstances) [671] .

SEP holder’s offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company in February 2012 presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [672] .

The fact that the standard licensing agreement was not tailored to the parent company but was designed for use towards a large number of (potential) licensees (the name of the licensee ought to be added in each case separately), was not criticized by the Court. MPEG-LA had made clear that the documents sent by mail in February 2012 would serve as the basis for negotiations and a future agreement with the parent company [673] .

In addition, the Court did not take an issue with the fact that the offer was addressed to the parent company and not to the Defendant, since the parties were discussing about a licensing agreement on group level and the parent company had been involved in the communications from the beginning [674] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company did not contain a detailed explanation of the way the royalties were calculated [675] . The Court found that, in the present case, it was sufficient that the parent company was aware that the (standard) agreement presented to her had been accepted in the market by a great number of licensees [676] . In the Court’s view, the explanation of the royalty calculation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [677] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [677] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [677] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [678] .

Apart from the above, the Court held that the standard licensing agreement offered to the parent company was FRAND also in terms of content [679] .

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [680] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [680] . The Court made clear that, in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [680] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [680] .

Non-discrimination

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases [681] . Even then, an unequal treatment is allowed, as long as it is objectively justified [681] . Limitations may, nevertheless, occur, especially when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive, only when it uses the patent’s teachings [681] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may, however, seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [682] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [682] .

Against this background, the Court found that the offer made by MPEG LA to the parent company was not discriminatory. The Defendant had argued that seeking a licence also covering sales in China violated FRAND, since not every other competitor in the Chinese market was licensed by MPEG LA [683] . The Court observed that the selective assertion of patents against only a part of the competitors in a downstream market might, in principle, be discriminatory [684] . This was, however, not the case here, because the Claimant had already sued another company active in China and was attempting to persuade other companies to obtain a licence [685] . Due to the high cost risk associated with court proceedings, the patent holder is not obliged to sue all potential infringers at once; choosing to assert its patents against larger implementers first was considered by the Court as reasonable, since a win over a large market player could motivate smaller competitors to also obtain a licence (without litigation) [686] .

Furthermore, the Court did not consider the fact that the offered standard licensing agreement contained a cap for the annual licensing fees payable to the MPEG LA pool to be discriminatory [687] . The Defendant had argued that the respective cap disproportionally favoured licensees with high volume sales which offered not only mobile phones, but also other standard compliant products in the market. The Court made, however, clear that Art. 102 TFEU does not establish a ‘most-favoured-licensee’ principle (meaning that the patent holder must offer the same conditions to all licensees) [688] . It is not per se discriminatory to use sale volumes as a criterion for discounts, especially if a company has managed to open up a larger market than its competitors [689] . Discounts can further hardly be discriminatory, if they are offered to every (potential) licensee under the same conditions [689] .

Besides that, the Court dismissed the Defendant’s argument that MPEG LA’s standard licensing agreement is discriminatory, because it is offered to both MPEG LA pool members and third licensees. The Court found that the share of the licensing income paid to pool members, who have also signed a MPEG LA licence, reflects their contribution to the pool and, therefore, does not discriminate the latter against third licensees (who have not contributed any patents to the pool) [690] . In this context, the Court also pointed out that the clauses contained in MPEG LA’s standard licensing agreement, providing for deductions or instalment payments are not discriminatory, particularly because they are offered to all licensees [691] .

The Court was further not convinced that the parent company was discriminated by MPEG LA’s offer, because the MPEG LA pool had refrained from requesting a licence at group level from a competitor, but had only granted a licence to a subsidiary within the respective group, instead. In the Court’s eyes, the Claimant had managed to establish that this exception was objectively justified, since only the subsidiary granted a licence had activities concerning the patents included in the pool [692] .

Fair and reasonable terms

With respect to the assessment of whether MPEG LA’s offer to the parent company was also fair and reasonable, the Court placed particular emphasis on the existing licensing agreements between the MPEG-LA pool and third licensees. The Court took the view, that existing licences can establish the actual presumption that the terms offered (as well as the scope of the licence) are fair and reasonable [693] . Moreover, the fact that licences regarding the same patent portfolio have already been granted for similar products prima facie suggests that the selection of the patents included in the pool was adequate [693] .

Based on these premises, the Court found that the approx. 2,000 standard licensing agreements concluded by the MPEG LA pool provide a ‘strong indication’ (‘erhebliche Indizwirkung’) that the underlying licensing terms are fair and reasonable [694] . In the Court’s view, the Defendant had failed to show sufficient facts that could rebut this indication.

In particular, the Court did not accept Defendant’s claim that, as a rule, licences for products sold in the Chinese market are subject to special conditions. On the contrary, the Court found that the existing MPEG LA pool licences allow the assumption that setting worldwide uniform licence fees corresponds to industry practice [695] . Accordingly, the Court rejected Defendant’s argument, that the royalties offered by MPEG LA to the parent company would hinder the Defendant from making profits with its sales in China, since the overall licensing burden (including licences needed from third parties) would be too high. The Court noted that the price level for Defendant’s sales in China does not significantly differ from the price level in other regions [696] . What is more, the Defendant did not show that further licences are needed with respect to the AVC/H.264 standard [697] . The Court further did not recognise a need to apply special conditions for the Chinese market, because – compared to patents from other regions – a lower number of Chinese patents is contained in the MPEG LA pool. According to the Court, the number of patents in a specific market should not be ‘overestimated’ as a factor for assessing the FRAND conformity of an offer, since even a single patent can block an implementer from a market, generating, therefore, the need for obtaining a licence [698] .

Apart from the above, the Court did not criticise that MPEG LA’s standard licensing agreement did not contain an adjustment clause. Such clauses can secure that the agreed licensing fees remain reasonable, in case that the number of patents contained in the pool changes during the term of the licensing agreement. They are, however, in the Court’s view, not the only mean to reach this goal: Moreover, the clause contained in MPEG LA’s standard licensing agreement, according to which the agreed royalties will not be adjusted either when more patents are added to the pool or when patents are withdrawn from the pool, offers an adequate balance of risk and is, therefore, FRAND compliant [699] . This assumption is also confirmed by the fact that all existing licensees have accepted this clause [700] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are, in general, appropriate under the Huawei framework. An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [701] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [701] .

An offer for a pool licence can, nevertheless, violate FRAND in ‘special circumstances’ [702] , for instance, if not all patents included in the pool are used by the licensee [703] . According to the Court, the fact that the Defendant – as well as mobile phone manufacturers in general – usually use only one of four available profiles of the AVC-Standard does not, however, render the standard licensing agreement offered by MPEG LA unreasonable [704] . This is particularly the case, since Defendant’s products – and especially its latest smartphones – have the technical capability to implement more than one available profile [705] . Besides that, it is reasonable to offer one single licence covering all profiles, since modern products incorporate functionalities of several types of devices (e.g. smartphones offer also digital television functionalities) [705] .

In this context, the Court dismissed Defendant’s arguments that the licence offered by MPEG LA was not FRAND, because it allegedly covered both standard-essential and non-essential patents. The Court recognised that the ‘bundling’ of essential and non-essential patents in a patent pool could, in principle, be incompatible with FRAND, if it is done with the intention to extract higher royalties from licensees by increasing the number of patents contained in the pool [706] . The Defendant failed, however, to present any reliable evidence that this was the case with the MPEG-LA pool [707] .

In the Court’s eyes, the Defendant also failed to establish that the rates offered by MPEG LA would lead to an unreasonably high total burden of licensing costs (‘royalty stacking’) [708] . The theoretical possibility that the Defendant might need to obtain licences also for patents not included in a pool does not per se lead to royalty stacking; the Defendant would have been obliged to establish that the total amount of royalties actually paid does not allow to extract any margin from the sale of its products [709] .

The Court further pointed out that MPEG-LA’s offer did not violate FRAND principles, because it referred to a licence covering all companies within the group, to which the Defendant belonged [710] . In the electronics and mobile communications industries, licences on a group level are in line with the industry practice and, therefore, FRAND-compliant [711] .

Implementer’s counteroffer

Having said that, the Court found that the Defendant failed to make a FRAND counteroffer [712] .

In particular, the counteroffer made in November 2017 after the commencement of the present proceedings violated the FRAND principles in terms of content, because it was limited to a licence covering solely the Claimant’s patent portfolio and not all patents included in the MPEG LA pool [713] . Furthermore, the counteroffer established different licensing rates for different regions (especially for China) without factual justification [714] .

Furthermore, the second counteroffer made by the Defendant after the end of the last oral hearing was belated and, therefore, not FRAND. The Court held that the Claimant was not given sufficient time to respond to that counteroffer, so that there was no need for any further assessment of its content [641] . On the contrary, the Court expressed the view that the purpose of this counteroffer was most likely to delay the infringement proceedings [641] .

Provision of security

Since Defendant’s counter-offers were not FRAND in terms of content, the Court did not have to decide, whether the security provided in form of bank guarantees was FRAND or not. The Court noted, however, that the amounts provided were insufficient, since they were calculated on basis of Defendant’s counteroffer from November 2017, which itself failed to meet the FRAND requirements [715] .

  • [630] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, para. 36.
  • [631] Ibid, para. 35.
  • [632] Ibid, para. 37.
  • [633] Ibid, para. 453.
  • [634] Ibid, para. 39.
  • [635] Ibid, para. 43.
  • [636] Ibid, para. 44.
  • [637] Ibid, para. 53.
  • [638] Ibid, para. 2.
  • [639] Ibid, para. 54.
  • [640] Ibid, para. 65.
  • [641] Ibid, para. 716.
  • [642] Ibid, paras. 143-208.
  • [643] Ibid, paras. 209-293.
  • [644] Ibid, paras. 295-302.
  • [645] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
  • [646] Tagivan (MPEG-LA) v Huawei, District Court of Düsseldorf, 9 November 2018, paras. 304 et seqq.
  • [647] Ibid, para. 307.
  • [648] Ibid, para. 310.
  • [649] Ibid, para. 310. In this respect, the Court pointed out that – vice versa – also a non-essential patent might confer a dominant position, if the patented invention is superior in terms of technological merit and/or economical value, para. 312.
  • [650] Ibid, paras. 310 et seq.
  • [651] Ibid, para. 311.
  • [652] Ibid, paras. 315 et seqq.
  • [653] Ibid, para. 321.
  • [654] Ibid, para. 326.
  • [655] Ibid, para. 327.
  • [656] Ibid, para. 330.
  • [657] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06.
  • [658] Ibid, paras. 331 et seqq.
  • [659] Ibid, para. 335.
  • [660] Ibid, para. 337.
  • [661] Ibid, para. 339.
  • [662] Ibid, para. 343.
  • [663] Ibid, para. 345.
  • [664] Ibid, para. 356.
  • [665] Ibid, paras. 357 et seqq.
  • [666] Ibid, paras. 366 et seqq.
  • [667] Ibid, para. 340.
  • [668] Ibid, para. 341.
  • [669] Ibid, paras. 395 et seqq.
  • [670] Ibid, paras. 400 et seqq.
  • [671] Ibid, para. 399.
  • [672] Ibid, para. 405.
  • [673] Ibid, paras. 411-417.
  • [674] Ibid, para. 419.
  • [675] Ibid, para. 421.
  • [676] Ibid, para. 425.
  • [677] Ibid, para. 422.
  • [678] Ibid, paras. 426 et seqq.
  • [679] Ibid, para. 429.
  • [680] Ibid, para. 431.
  • [681] Ibid, para. 432.
  • [682] Ibid, para. 433.
  • [683] Ibid, para. 438.
  • [684] Ibid, para. 443.
  • [685] Ibid, para. 444.
  • [686] Ibid, para. 445.
  • [687] Ibid, para. 579.
  • [688] Ibid, para. 582.
  • [689] Ibid, paras. 583 et seqq.
  • [690] Ibid, para. 564.
  • [691] Ibid, paras. 568 et seqq.
  • [692] Ibid, paras. 573 et seqq.
  • [693] Ibid, para. 451.
  • [694] Ibid, para. 449.
  • [695] Ibid, para. 454.
  • [696] Ibid, paras. 487 et seqq.
  • [697] Ibid, para. 491.
  • [698] Ibid, para. 495.
  • [699] Ibid, paras. 591 et seqq., particularly para. 596.
  • [700] Ibid. para. 597.
  • [701] Ibid. para. 504.
  • [702] Ibid. para. 508.
  • [703] Ibid. para. 514.
  • [704] Ibid. paras. 511 et seqq.
  • [705] Ibid. para. 524.
  • [706] Ibid, para. 528.
  • [707] Ibid, paras. 531-543.
  • [708] Ibid, paras. 545 et seqq.
  • [709] Ibid, para. 546.
  • [710] Ibid, para. 599.
  • [711] Ibid, para. 600.
  • [712] Ibid, para. 603.
  • [713] Ibid, paras. 605 et seqq.
  • [714] Ibid, paras. 617 et seqq.
  • [715] Ibid, para. 625.


HEVC (Dolby) v MAS Elektronik

7 5月 2020 - Case No. 4c O 44/18

A. Facts

The claimant, Dolby, operates in the field of audio and video innovation and is the owner of a portfolio of related patents, including a European Patent concerning the encoding and decoding as well as the sequence of digital images. This patent reads on the HEVC standard (Standard Essential Patent, or SEP). Dolby has contributed the patent in question to a pool administered by HEVC Advance, which offers licences to standards users for a significant portfolio of related SEPs of several patent holders.

The Defendant, MAS Elektronik AG (MAS), operates in the home entertainment field and sells articles such as television sets and receivers (set-up boxes, or STBs). These devices are compatible with the DVB-T/T2 standard that, in turn, makes use of the encoding method according to the HEVC standard.

In 2017, HEVC Advance sent a notification informing MAS about the infringement of SEPs included in the pool. On 7 November 2017, HEVC Advanced offered a licence to MAS on basis of its standard licensing agreement.

Since no agreement was reached, Dolby filed a lawsuit against MAS before the District Court of Düsseldorf (Court). Dolby initially moved for a declaratory judgement confirming MAS' liability for damages on the merits and also asserted relevant claims for information. The action was later extended. Additionally, Dolby requested injunctive relief as well as recall and destruction of infringing products.

On 11 July 2018, after the action was filed, Dolby directly approached MAS as well. It shared a list of patents included in its SEP portfolio as well as 'claim charts', mapping a number of patents to the relevant parts of the standard. Dolby also submitted an offer for a bilateral portfolio licence to MAS which the latter did not accept.

In January 2019, MAS presented a counteroffer to HEVC Advance, which included an amount for settlement the past uses. However, MAS did not render accounts for past uses nor provided security.

On 7 May 2020, the Court rendered a decision in favour of Dolby and ordered MAS to (i) refrain from offering or supplying devices and/or means that infringe Dolby's patent in Germany, under penalty up to EUR 250,000 for each case of infringement; (ii) render accounts and information regarding infringing products; (iii) surrender for destruction any infringing product in its possession and (iv) recall infringing products from the market. The Court also recognised MAS' liability to pay for past and future damages.


B. Court's reasoning

The Court found that Dolby was entitled to assert claims arising from the patent-in-suit. The respective patent application was transferred before grant and Dolby was registered as owner in the Patent Register at the moment the patent was granted. MAS did not present any reason to question the validity of the transfer of the patent application to Dolby. [716]

Furthermore, the Court held that the patent-in-suit is essential (and not only optional) to the improvement process of encoding and decoding of images under the HEVC standard and, therefore, infringed by the devices manufactured and sold by MAS. [717]


Abuse of dominant market position

Having said that, the Court explained that by asserting claims for injunctive relief as well as recall and destruction of infringing products before court, Dolby had not abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) [718] .

In the eyes of the Court, Dolby holds a dominant position [719] . The Court highlighted that owning a patent, even a standard-essential patent, does not constitute per se a condition for market dominance [720] . That must be assessed case by case. A dominant position will be, as a rule, given if the use of a SEP is considered a pre-requisite to enter a downstream market. This is true also when the SEP is needed for offering competitive products in the downstream market. [720] In the present case, the implementation of the HEVC was required to make a competitive offering in the STB market [721] .

Notwithstanding the above, the Court found that Dolby had not abused its dominant market position, considering that it had fulfilled the obligations set forth by the Court of Justice the EU (CJEU) in the matter Huawei v ZTE (Huawei judgment or framework) [722] .


Notification of infringement

The required notification of the infringement by the patent holder was properly done. The Court understood that HEVC Advance, as the pool administrator, was entitled to do such notification on behalf of the patent holders that contributed patents to the pool. There is nothing in the Huawei judgment that suggests otherwise. [723]

The Court explained that the notification must, at least, include the publication number of the patent-in-suit and also indicate the infringing products and the infringing act(s) of use. [724] The notification does not need to contain a detailed (technical or legal) analysis, with reference to standards or claim features, but only present sufficient information that enables the other party to assess the infringement accusation made against it. [724]

In this case, the notification initially sent by HEVC Advance to MAS was sufficient in terms of content, since it specified the infringing products, and referred to HEVC Advance's patent portfolio and its website containing additional information. The fact that no patent numbers were mentioned was not considered harmful, since this information is publicly available in the pool's website. [725] Moreover, the Court highlighted that the notification can be a mere formality, if knowledge of the infringement by the implementer can be assumed. In such case, arguing that the notification was flawed, can be considered abusive, as it was the case here. [726]

Besides the notification made by HEVC Advance, the Court found that Dolby had also made a sufficient notification itself by the letter sent to MAS on 11 July 2018. [727] The letter fulfilled all requirements in terms of content. The fact that it was sent only after the action was filed was not harmful, since MAS had been already adequately informed by HEVC Advance before.Ibid, para. 759.

Willingness to obtain a licence

Looking at the conduct of MAS after receipt of the notifications of infringement, the Court reached the conclusion that MAS had sufficiently declared willingness to enter into a pool licence with HEVC Advance. [728] On the contrary, the Court took the view that MAS had not acted as a willing licensee with respect to Dolby's subsequent offer for a bilateral licence. [729]

The Court explained that, in its licensing request towards the SEP holder, the standards implementer must express its 'serious' willingness to conclude a licensing agreement on FRAND terms [730] . For this, no strict requirements apply, in terms of content or form; moreover, also an 'implicit behaviour' can suffice [731] . The implementer is, however, required to react in due course. [732] Furthermore, 'willingness' must still exist when the patent holder makes his licensing offer [730] .

The Court held that MAS had expressed willingness to take a pool license from HEVC Advance –although no express request was made–, since "immediately" after receipt of the notification of infringement, MAS started a correspondence with HEVC Advance with the goal to initiate negotiations. [733]

On the other hand, MAS had not been willing to obtain a bilateral licence from Dolby. [727] The Court emphasized that the whole conduct of the implementer must be assessed; a 'genuine' willingness to obtain a license must be demonstrated. [734] This is not given, when -as it had been the case here- the implementer only poses repetitive questions that do not present any constructive remarks and, therefore, do not lead to any progress in the negotiation. [735] In addition to that, it could be expected that a licensee willing to sign a bilateral agreement with an individual pool member, will have an interest to also engage in discussions with further pool members, especially for assessing the total 'economic burden' for its products, in comparison with a pool licensing agreement. [736] MAS refrained from doing that. What is more, it made clear in the proceedings that it was only interested in a pool licence.Ibid, para. 765.

SEP holder's offer

Since the Court held that MAS had adequately expressed willingness to sign a pool licence with HEVC Advance, it moved on to examine, whether HEVC Advance's licensing offer to MAS based on its standard licensing agreement was in line with the Huawei framework. Since the Court reached the conclusion that MAS had not been willing to enter into a bilateral licence with Dolby, it refrained from examining the compliance of Dolby's offer with the Huawei judgment in detail.

The Court found that the offer made by HEVC Advance met the Huawei requirements. In terms of form, the fact that the standard agreement sent to MAS had not been signed did not cause any concerns. [737] In the Court's view, the CJEU requires that the SEP holder's offer contains all usual terms of a licensing agreement, however, no binding offer that could lead to the conclusion of a licence through sole acceptance by the implementer is needed. [738]

Furthermore, HEVC Advance had sufficiently explained the royalty calculation, in line with the Huawei judgment. [739] If the patent holder has previously granted licenses to third parties, it has to give more or less substantiated reasons, depending on the circumstances of the individual case, why the royalty it envisages is Fair, Reasonable and Non-Discriminatory (FRAND). [740] In case that the SEP holder offers licences exclusively based on a standard licensing agreement, it will, as a rule, suffice to establish the adoption of the licensing programme in practice and to show that the specific offer corresponds to the standard licensing agreement. [741] The more standard licensing agreements signed are shared by the patent holder, the stronger the assumption is, that the offered rates are FRAND. [742]

The Court emphasized that is not necessary to present the full content of all the licensing agreements already concluded, but only the relevant ones, considering clearly delineated product categories. [743] Existing licences with cross-licensing-elements, are not relevant in this context, especially, when the implementer does not have any patents himself, as it was the case here. [744] Accordingly, the Court found that the forty third party agreements disclosed by Dolby in the proceedings were enough in the present case. [745]


Fair and reasonable terms

Looking at the content, the Court found that the terms of the standard licensing agreement offered by HEVC Advance are fair and reasonable. [746] As fair and reasonable can be considered terms offered to a willing party, without exploiting a dominant position. [747] Apart from the royalties, the offer must also prove reasonable with regard to the other terms as well (scope, territory etc.). [747]

Having said that, the Court held that the royalties charged by HEVC Advance's standard licensing agreement are fair and reasonable. [748] An indication of that is the fact, that up to January 2020, more than forty licensees selling products in the same category as MAS had taken a license on the same terms, modified sometimes by 'blended rates'. [749] On the other hand, the fact that lower royalties are charged by a competing patent pool (MPEG LA) does not make the HEVC Advance's rate unreasonable, as FRAND is considered rather to be a range than a specific amount. [750]

Furthermore, the Court took the view that the limitation of the offered licence to 'practised claims' only (that is those claims of the licenced patents that are essential to the practice of the HEVC standard), is not unreasonable. [751] This limitation does not present any adverse effect on MAS' business, since the royalty payments correspond to the claims that are actually used by the licensee (and, vice versa, no obligation to pay for claims not used is established). [752]

Also, in the eyes of the Court, MAS was not able to prove that the lack of an adjustment clause is unreasonable [753] . MAS failed to establish that respective clauses are common in industry practice; on the contrary, the fact that at least forty parties had signed a licence with HEVC Advance without such clause indicated the opposite. [754] What is more, the royalty clause is constant. That means that the rate charged will not change if licenced patents expire, but also will remain the same in the case of addition of new patents to the pool that will be automatically covered by the agreement. Insofar, an economic risk for both parties exists. [755]

Regarding the choice of forum clause contained in the standard licensing agreement, establishing the jurisdiction of courts in New York as well as granting HEVC Advance the right to also choose other venues at its discretion, the Court was not able to conclude any unfair disadvantage for MAS. [756] The same clause was agreed in many other licensing agreements signed by HEVC Advance with third parties. [757] In fact, MAS agreed to a similar one in its license agreement with the MPEG LA pool. [757]


Non-discrimination

Besides that, the Court was unable to establish any discrimination against MAS through the licence offered by HEVC Advance. [758] The obligation of equal treatment applies only to aspects that are comparable; even a market dominant undertaking must be allowed to respond differently to different market conditions. [759] An unequal treatment is to be assessed based on the specific circumstances of each individual case under the goals of competition and can be accepted as lawful, if objectively justified. [760] Therefore, not every difference in the terms and conditions of a licence can be seen as abusive. [761] According to the Court, the same principle also applies to the licensing of SEPs. [762]

Against this background, the Court found that the fact that the pool administered by HEVC Advance updated its terms in a way that an 'uniform licensing regime' no longer exists, since for certain licensees the previous version of the agreement still applies, does not mean that the new standard licensing agreement offered to MAS was discriminatory. [763] Although, according to the case-law of the Higher District Court of Düsseldorf, a patent holder (and its assignees) is bound to the 'licensing concept' underlying the first ever licence granted, it is allowed to deviate from such 'concept', if this does not lead to a discrimination of either past nor future licensees. [764] In the Court's view, this was not the case here: The old licensees were offered the possibility to shift to the new terms, and there is no evidence that MAS would be treated worse by the terms of the new standard licensing agreement. [764] On the contrary, the new royalty calculation leads to a lower licensing burden. [764]

The Court also took the view, that there is also no discrimination in the way the patent-in-suit is enforced. [765] MAS argued that it was discriminated, because its competitors or large companies were not sued by members of the HEVC Advance pool for patent infringement. The Court highlighted that refraining from enforcement does not necessarily mean discrimination: the phase of adoption of the relevant standard, the costs and procedural risks involved, the knowledge of the holder regarding the infringement and its extent are factors to be considered. [766] In the case of HEVC Advance, the initial phase of its existence and limitation of resources are relevant for this assessment. [767]

Moreover, no discrimination with respect to the amount of the royalty rate or the scope offered was found. [768] The Court pointed out that the fact that some of the existing licensees have agreed on rates higher than those offered to MAS, could not be used in favour of the latter: as a rule, only those who are treated less favourably can invoke discrimination. [769]

The Court further held that the 'blended rates' agreed with certain other licensees, did not render the offer made to MAS by HEVC Advance discriminatory either. [770] These rates mirrored variations due to the difference in products and implementer's profiles and were either offered to MAS or not applicable to his business model. [771]

Furthermore, the Court found that the 'incentive programme' offered by the HEVC Advance pool, which under specific conditions (especially the signing of a licence at an early point in time) results in discounted rates, is lawful and non-discriminatory. [772] The same is true with respect to discounts offered for past uses prior to the signing a licence, as it is the case for HEVC Advance [773] .

Finally, a 10% discount offered by HEVC Advance when a licensee also takes a trademark licence, allowing for the labelling of products with the HEVC trademark, was equally offered to the MAS, so that the Court could not see a discrimination of MAS by such provision in the standard licensing agreement. [774]


Implementer's counteroffer

The Court found that MAS' counteroffer was not FRAND. [775] The offer made by MAS failed to present sufficiently an explanation of why its terms would be FRAND, in view of the terms offered by HEVC Advance. MAS presented only a royalty rate, without making any reference to the rest of the clauses contained in the offer previously made by HEVC Advance, which it alleged to be discriminatory or unreasonable. [776]

Having found that MAS' counteroffer had not been FRAND, the Court explained that the fact that MAS neither rendered accounts nor provided security did not play any role for its decision. [777]


C. Other issues

By the facts of the case, the Court concluded that MAS acted culpably, or at least negligently, and, therefore, owes compensation for past and future damages caused by its actions. Moreover, damages should not be limited to a FRAND royalty. [778] The quantification of the damages will be possible with the rendering of accounts by MAS. [779]

The lawsuit for revocation of the patent, arguing lack of inventive step, that had not been decided yet, had no likelihood of success, according to the Court's analysis. Therefore, the request for staying the proceedings until a decision on the validity is delivered by the Federal Patent Court was denied. [780]

  • [716] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18 (cited by www.nrwe.de), paras. 75 et seqq.
  • [717] Ibid, paras. 157-184.
  • [718] Ibid, paras. 186 et seqq.
  • [719] Ibid, paras. 189 et seqq.
  • [720] Ibid, paras. 194 et seqq.
  • [721] Ibid, para. 197.
  • [722] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [723] HEVC (Dolby) v MAS Elektronik, District Court (Landgericht) of Düsseldorf, 7 May 2020, Case No. 4c O 44/18, paras. 213 et seqq and paras. 221 et seqq.
  • [724] Ibid, para. 210.
  • [725] Ibid, paras. 229 et seqq.
  • [726] Ibid, para. 233.
  • [727] Ibid, para. 759.
  • [728] Ibid, paras. 236 et seqq.
  • [729] Ibid, paras. 760 et seqq.
  • [730] Ibid, para. 237.
  • [731] Ibid, para. 237 and para. 761.
  • [732] Ibid, para. 760.
  • [733] Ibid, para. 238.
  • [734] Ibid, para. 763.
  • [735] Ibid, para. 764.
  • [736] Ibid, para. 765.
  • [737] Ibid, paras. 241 et seqq.
  • [738] Ibid, para. 242.
  • [739] Ibid, paras. 244 et seqq.
  • [740] Ibid, para. 245.
  • [741] Ibid, para. 248.
  • [742] Ibid, para. 255.
  • [743] Ibid, para. 250.
  • [744] Ibid, para. 253.
  • [745] Ibid, para. 249.
  • [746] Ibid, paras. 257 and 258.
  • [747] Ibid, para. 260.
  • [748] Ibid, paras. 264 et seqq.
  • [749] Ibid, para. 268.
  • [750] Ibid, paras. 271 et seqq.
  • [751] Ibid, paras. 280 et seqq.
  • [752] Ibid, para. 284.
  • [753] Ibid, paras. 286 et seqq.
  • [754] Ibid, para. 295.
  • [755] Ibid, para. 298.
  • [756] Ibid, paras. 301 et seqq.
  • [757] Ibid, para. 304.
  • [758] Ibid, paras. 306 et seqq. and paras. 314 et seqq.
  • [759] Ibid, para. 308.
  • [760] Ibid, paras. 308 et seq.
  • [761] Ibid, para. 310.
  • [762] Ibid, para. 311.
  • [763] Ibid, paras. 314 et seqq.
  • [764] Ibid, para. 318.
  • [765] Ibid, para. 321.
  • [766] Ibid, para. 322.
  • [767] Ibid, para. 323.
  • [768] Ibid, paras. 325 et seqq. as well as paras. 443 et seqq.
  • [769] Ibid, para. 326.
  • [770] Ibid, paras. 328 et seqq.
  • [771] Ibid, paras. 329 et seqq.
  • [772] Ibid, paras. 334 et seqq.
  • [773] Ibid, paras. 526 et seqq.
  • [774] Ibid, paras. 665 et seqq.
  • [775] Ibid, paras. 751 et seqq.
  • [776] Ibid, paras. 754.
  • [777] Ibid, para. 756.
  • [778] Ibid, para. 773.
  • [779] Ibid, para. 774.
  • [780] Ibid, paras. 781 et seqq.


Cases from LG Mannheim - District Court


LG Mannheim

4 3月 2016 - Case No. 7 O 24/14

A. Facts

Case No. 7 O 24/14 [781] 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’). [782] 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. [783] 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. [784] 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. [785] 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. [786]

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. [787] 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. [788] On this basis, the District Could held that the claimant had taken all necessary steps after commencing proceedings, which met the Huawei/ZTE requirements. [789]

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. [790] 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. [785] 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. [791] 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. [792]

The offer needs to include the calculation method in respect of the royalties. [791] However, the CJEU did not elaborate on the level of detail required. [793] 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. [794]

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. [793] 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. [795] The defendant’s counter-offer only included the respective German license, which was deemed by the District Court as insufficient. [795] Further, the defendant had not made an adequate deposit into the court as required under the Huawei/ZTE principles. [796]

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. [793]

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. [797] 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. [798] 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. [798]

  • [781] See also OLG Karlsruhe, 8 September 2016, 6 U 58/16 (application to stay execution of LG Mannheim, 7 O 24/14).
  • [782]  LG Mannheim, 4 March 2016, 7 O 24/14, pp. 4-6.
  • [783] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 2-3.
  • [784] LG Mannheim, 4 March 2016, 7 O 24/14, p. 22.
  • [785] LG Mannheim, 4 March 2016, 7 O 24/14, p. 23.
  • [786] LG Mannheim, 4 March 2016, 7 O 24/14, p. 34/35.
  • [787] LG Mannheim, 4 March 2016, 7 O 24/14, p. 26.
  • [788] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 27-30.
  • [789] LG Mannheim, 4 March 2016, 7 O 24/14, p. 33.
  • [790] LG Mannheim, 4 March 2016, 7 O 24/14, p. 21.
  • [791] LG Mannheim, 4 March 2016, 7 O 24/14, p. 24.
  • [792] LG Mannheim, 4 March 2016, 7 O 24/14, p. 37.
  • [793] LG Mannheim, 4 March 2016, 7 O 24/14, p. 25.
  • [794] LG Mannheim, 4 March 2016, 7 O 24/14, p. 35/36.
  • [795] LG Mannheim, 4 March 2016, 7 O 24/14, p. 38.
  • [796] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 38-40.
  • [797] LG Mannheim, 4 March 2016, 7 O 24/14, p. 43.
  • [798] LG Mannheim, 4 March 2016, 7 O 24/14, p. 44.


Saint Lawrence v Deutsche Telekom

27 11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. [799] 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. [800] 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. [801]
    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. [802]
    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. [803]
      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. [804] 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”. [805]
  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. [806]
    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. [807]
    No patent ambush-defense based on § 242 BGB could be raised. As the court assessed in a detailed, torts-based analysis, [808] 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. [809] 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. [810] 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. [811]
  • [799] Case No. 2 O 106/14, para. 133
  • [800] Case No. 2 O 106/14, para. 139-144
  • [801] Case No. 2 O 106/14, para. 146-149
  • [802] Case No. 2 O 106/14, para. 152-153
  • [803] Case No. 2 O 106/14, para. 153-160
  • [804] Case No. 2 O 106/14, para. 158-164
  • [805] Case No. 2 O 106/14, para. 167-169
  • [806] Case No. 2 O 106/14, para. 146
  • [807] Case No. 2 O 106/14, para. 78-80
  • [808] Cf. for details LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 119-131
  • [809] Case No. 2 O 106/14, para. 118-131
  • [810] 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.
  • [811] Case No. 2 O 106/14, para. 198


NTT DoCoMo v HTC

29 1月 2016 - Case No. 7 O 66/15

  1. Facts
    Claimant owns the patent EP 1 914 945, declared to be essential with regard to ETSI’s UMTS standard. Defendant markets devices implementing the UMTS standard (in particular the HSUPA/EUL technology). On 19 March 2014 Claimant sent to Defendant’s group parent a detailed licensing offer and explained its conditions at several instances before filing suit in April 2015. As of 7 April 2014 and 15 July 2014, Claimant communicated to Defendant’s group parent company claim charts in order to demonstrate standard-essentiality of its patent and further explained the issue in a presentation on 8 July 2014. Defendant submitted its first counter-offer on 30 October 2015. The counter-offer envisaged a 3 year-license limited to some of the countries in which Defendant markets its products. Claimant rejected the counter-offer on 12 November 2015. Defendant did not provide security but merely promised to do so, based on a calculation including sales of relevant devices in Germany only. Claimant rejected this and demanded security based on worldwide sales.
  2. Court’s reasoning
    1. General meaning of the Huawei framework
      Prior to discussing specific conduct requirements established by the Huawei ruling, the court sketches its approach in a general manner. [812] According to the court the Huawei decision establishes a set of rules of due conduct in SEP licensing negotiations. Based on whether the parties comply with these rules the respective court can determine whether an SEP owner’s seeking of an injunction and a recall of products constitutes an abuse of a position of market dominance or a justified reaction to a standard implementer’s delaying tactics. In consequence, the respective court does not—unless it has to decide a claim for the payment of licensing fees and not claims for injunction and recall of products—have to rule on the substance of the offered licensing conditions or their being FRAND. [813] This is in line with recognized commercial practice according to which reasonable parties will not usually want courts to determine their licensing conditions. Furthermore, the ECJ has—from the perspective of the Mannheim District court—stressed that the exercise of the exclusive rights conveyed by a patent will be barred only in very exceptional circumstances. As a result, it is up to the standard implementer to show that such exceptional circumstances are present. [814]
    2. Market power and notice of infringement
      The court does not elaborate on the market power issue. As part of the notice of infringement [815] the court deems it necessary for the proprietor to identify the (allegedly) violated patent, including the patent number, and to inform that the patent has been declared standard-essential. Furthermore, the proprietor has not only to name the standard but to specify the pertinent part of the standard and the infringing element of the implementer’s products in a way that enables the standard implementer to assess whether its use of the standard infringes on the patent-in-suit. The level of detail required must be determined on a case-by-case basis, depending mainly on the expertise of – or available to – the implementer. Presenting claim charts corresponding to recognized commercial practice for licensing negotiations is, in principle, an acceptable way to give notice of the alleged infringement. In casu the court considered the proprietor’s notice as sufficient. [816] In particular, notice was given before the bringing of an action for infringement and the proprietor had submitted claim charts not only with regard to the patent-in-suit but also with regard to six other patents from the portfolio offered for license, a sample which the court deemed in accordance with recognized commercial practice. Sufficient notice having taken place, the court left open the question whether, (1) the Huawei rules applied at all in spite of the action being brought before the ECJ’s decision, and whether (2) the proprietor was obliged to submit claim charts for other patents than the patent-in-suit.
    3. The SEP proprietor’s licensing offer
      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: [817] 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 accepted the Huawei compliance of the licensing offer, [818] in particular because the proprietor had explained its calculation of the licensing fee based on the percentage of patents in the WCMA/SIPRO and the VIA patent pools held by the proprietor. The proprietor was not required to prove its share in the patent pools. The parties disagreed over whether the smallest saleable unit forms an appropriate basis for royalty calculation and whether it is acceptable to look only at the size, not the quality of a proprietor’s share in a relevant patent pool. The court, however, considered these issues as not decisive for the Huawei-conformity of the licensing offer.
    4. The standard implementer’s reaction
      As a further consequence of the court’s general approach, the standard implementer’s duty to diligently react to the proprietor’s licensing offer is not removed only because the offer does not fully comply with FRAND. [819] . An exception applies only where it can be established by a mere summary assessment that the offer evidently violates FRAND. If a reaction of the alleged infringer is due, the “diligence”, i.e. timeliness, of this offer has to be determined cases-by-case, based on the principles of good faith and recognized commercial practice. In casu the standard implementer’s reaction was insufficient (1) because a counter-offer was made only 1.5 years after receiving the licensing offer and 0.5 years after the bringing of the proprietor’s action, (2) because security was merely promised, not provided, and (3) because the amount of security offered fell short of the court’s suggestions.
  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. It is, however, free from their grip when bringing an action seeking the rendering of accounts in relation to past acts of use or an award of damages in respect of those acts of use.
  • [812] Case No. 7 O 66/15, para. 53 et seq.
  • [813] Case No. 7 O 66/15, para. 56
  • [814] Case No. 7 O 66/15, para. 53
  • [815] Case No. 7 O 66/15, para. 57
  • [816] Case No. 7 O 66/15, para. 65-69
  • [817] Case No. 7 O 66/15, para. 58
  • [818] Case No. 7 O 66/15, para. 70-72
  • [819] Case No. 7 O 66/15, para. 59 et seq


Pioneer v Acer

8 1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. [820] 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. [821] 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. [822] 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. [823]
    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: [824] 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, [825] 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. [826] 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. [827] As the court explains in some detail, [828] 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. [829]
    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. [830]
    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. [831] 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.
  • [820] Case No. 7 O 96/14, para. 84-107
  • [821] Case No. 7 O 96/14, para. 81-83
  • [822] Case No. 7 O 96/14, para. 109 et seq.
  • [823] Case No. 7 O 96/14, para. 114-117
  • [824] LG Mannheim, 29 January 2016 – Case No. 7 O 66/15, para. 58
  • [825] Case No. 7 O 96/14, para. 118-129
  • [826] Case No. 7 O 96/14, para. 131-133
  • [827] Case No. 7 O 96/14, para. 134 et seq.
  • [828] Case No. 7 O 96/14, para. 136-141
  • [829] Case No. 7 O 96/14, para. 142
  • [830] Case No. 7 O 96/14, para. 144 et seq.
  • [831] Case No. 7 O 96/14, para. 146


Philips v Archos

1 7月 2016 - Case No. 7 O 209/15

  1. Facts
    Claimant, a globally operating electronics manufacturer, is the proprietor of European patents EP 1 062 743 B1 and EP 1 062 745 B1, allegedly covering part of the UMTS- and LTE-standard respectively. Defendant, being the German subsidiary of the French parent company Archos S.A., produces and markets UMTS- and LTE-based devices under the brand name “ARCHOS” in Germany.
    By letter of 5 July 2014, Claimant sent an infringement notification, including a list of the patents affected, to Defendant. Furthermore, on 15/16 September 2014, Claimant explained its licensing program to Defendant and provided for corresponding documents. After Defendant offered Claimant in a meeting on 25 November 2014 the transfer of patents which it considered essential to the UMTS- and LTE-standard respectively, Claimant sent a written licensing offer, containing a list of SEPs and patent-infringing products, to Defendant on 28 July 2015 and provided for additional technical information concerning the SEPs in-suit on 25 September 2015 via e-mail. On 12 January 2016, Defendant, in turn, submitted a written counter-offer to Claimant for a licence covering Claimant’s worldwide LTE/UMTS-patent portfolio including royalties of 0.071% of the net sales price per unit. Since the parties did not conclude a binding licensing agreement subsequently, Claimant brought an action against Defendant on 16 October 2015, received by the court on 19 October 2015. In April 2016, Defendant deposited an amount of EUR 161’343.00 at the Landesjustizkasse (federal justice treasury) Bamberg, which should cover the worldwide sales of LTE/UMTS-based devices between 2012 and 30 June 2016 and was calculated on the basis of the royalties previously offered in Defendant’s counter-offer.
  2. Court’s reasoning
    1. Market power and infringement notification
      The court left open the question of whether the SEP conveyed market power to Claimant since it did, in any case, find no abuse of such potential market power.
      Having regard to the content of the infringement notification, the Mannheim court held that, in any case, the SEP proprietor, on the one hand, has to denote the patent in-suit, which it deems essential, by reference to its patent number and to indicate, that the patent has be declared essential by the respective standardization organization. In order to specify the way in which the SEP has been infringed, the SEP proprietor’s notification must, on the other hand, clarify to which standard the patent in-suit is essential and based on which circumstances it assumes that the alleged infringer makes use of the patent’s teachings. For this purpose, the SEP proprietor must indicate which (category of the) technical functionality of the challenged embodiment makes use of the standard. The alleged infringer must be able to assess the intellectual property rights situation autonomously or by recourse to a third party.
      The level of detail to be adhered to in the infringement notification depends on the specific circumstances of the case, taking into account in particular the technology knowledge of the alleged infringer or by what means it can acquire the corresponding professional expertise in a reasonable manner. In order to substantiate the facts of the infringement in accordance with Huawei, it is deemed sufficient to refer to so-called claim charts, being customarily used in the course of licensing negotiations, comparing the asserted claim of the patent in-suit according to features with the relevant passages of the standard without fulfilling the requirements of the conclusiveness test of an infringement action. In contrast, the mere reference that the standard implementer would produce or market products implementing the standard and therefore infringe the patent in-suit is not adequate.
    2. The SEP owner’s licensing offer
      As regards the Huawei condition to submit a written offer on FRAND terms prior to the initiation of proceedings, the court requires a contractual offer that is ready to be adopted and comprises the essentialia negotii. However, in the opinion of the judges, Huawei does not oblige the infringement court to determine pursuant to objective criteria whether the licensing offer complies with FRAND terms, if the latter fact is disputed by the alleged infringer. [832] The SEP proprietor’s offer is only considered not FRAND and in violation of antitrust law, if it constitutes an expression of exploitative abuse, taking into account the specific negotiation situation and, in particular, the market conditions.
      In order to comply with the obligation to specify the way in which the royalty is to be calculated, the SEP proprietor must put the alleged infringer in a position to understand on the basis of objective criteria why the former considers its licensing offer as FRAND. For this purpose, it is, in the case of quota licence agreement, not sufficient to indicate the royalties per unit without substantiating their FRAND character. The respective amount must be made sufficiently transparent, e.g. by reference to an established standard licensing program or by indicating other reference values allowing to deduce the royalty demanded, such as a pool licence fee.
      Taking into account the summary examination of the Higher Regional court in Karlsruhe granting the SEP proprietor much leeway in determining FRAND terms [833] , the Mannheim court left in the present case undecided whether it has to reassess its own standards of review, because Claimant did not sufficiently explain why royalties of USD 1.00 per unit should be FRAND in accordance with Huawei. The mere indication of the multipliers underlying the calculation of the royalties were deemed inadequate, since on the basis of this incomplete (market) information the alleged infringer is neither able to assess whether Claimant’s offer is FRAND nor to submit a FRAND counter-offer.
      The subsequent explanations as well as the expert opinion, seeking to prove the non-discriminatory character of the royalties, forming part of Claimant’s reply, did not fulfill the Huawei requirements, because prior to the initiation of proceedings Claimant has to substantiate both the manner of patent infringement and the way of calculating the royalties. Without completely dissenting from the decision previously rendered by the OLG Düsseldorf [834] , the Mannheim court, by reference to the subsequent rectification order issued by the ECJ on 15 December 2015, denied the SEP proprietor’s unlimited possibility to perform its Huawei obligations within the ongoing trial without incurring sanctions, because otherwise the central idea underlying the ECJ decision of being able to negotiate without the burden of pending proceedings while having all necessary information to evaluate the FRAND conformity of the licensing offer would be diminished.
      Moreover, Claimant was not exempted from its respective Huawei obligation due to Defendant’s alleged lack of willingness to conclude a licensing agreement. In contrast, a fundamental unwillingness to enter into licensing negotiations was rejected, because Defendant, firstly, complained in letters of 20 November 2015 and 4 December 2015 about Claimant’s deficient explanation why the licensing fee should be FRAND according to Huawei; secondly, it made a counter-offer including royalties of 0.071% of the net sales price per unit and provided for an expert opinion elaborating on the FRAND character of this royalty; thirdly, it submitted an offer to transfer own patents prior to the proceedings; and lastly, even though conducted after the initiation of proceedings, Defendant deposited a considerable amount with the court, which should cover worldwide sales with its LTE/UMTS-based products.
    3. The standard implementer’s reaction
      The standard implementer is obliged to react to a licensing offer, even if it deems the later not as FRAND in accordance with Huawei [835] , unless it is established by means of summary examination that the licensing offer is evidently not FRAND and therefore constitutes an abuse of dominance.
  3. Other important issues
    Although the Mannheim court rejected the action for prohibitory injunction and for the recall of products for reasons of antitrust law, it confirmed, on the basis of § 140b PatG and § 242 BGB, Claimant’s application for information as well as for rendering account and granted damages in accordance with § 139 (2) PatG, because it found Defendant to infringe the patents in-suit.
    Besides, the Court denied the exhaustion of the patents in-suit. [836]
  • [832] The judges stated in an even more general manner that the infringement court shall not be required under Huawei to determine the FRAND terms, if the proceedings do not involve the payment of royalties, but only relate to actions for a prohibitory injunction or for the recall of products.
  • [833] See above OLG Karlsruhe, 31 May 2015 – Case No. 6 U 55/16
  • [834] See above OLG Düsseldorf, 9 May 2016 – Case No. 15 U 36/16
  • [835] See also LG Mannheim, 27 November 2015 – Case No. 2 O 106/14 and LG Düsseldorf, 3 November 2015 – Case No. 4a O 144/14
  • [836] Para. V, p. 34 et seq.


Philips v Archos 2

17 11月 2016 - Case No. 7 O 19/16

Prof. Dr. Philipp Maume, S.J.D. (La Trobe)

  1. Facts
    The claimant is an international electronics company, which owns a range of patents relating to mobile phone technology. In particular, the claimant owns the patent EP 1.440.525, which is allegedly essential for the UMTS and LTE standards. The defendant is a German subsidiary of a French multinational electronics company that offers Android tablets and smartphones which are compliant UMTS and LTE standards. On 5 July 2014, the claimant informed the defendant in writing that by marketing and selling mobile phones, the defendant is infringing standard essential patents owned by the claimant. On 15/16 September 2014, the claimant handed over written documents about its licensing program to the defendant. In a discussion on 25 November 2014, the defendant offered to transfer patents that it deemed essential to the standards in question. In a letter dated 28 July 2015, the claimant offered to grant a license for the relevant patent. This letter included a list of all allegedly infringing products and patents in question, and relevant technical details. The claimant sent additional technical information via email on 25 September 2015. On 12 January 2016, the defendant sent a written offer to enter into a license agreement for the claimant’s worldwide patent portfolio. The parties did not reach an agreement. The claimant commenced infringement proceedings in the District Court of Mannheim on 16 October 2015 (received by the court on 19 October 2015). The defendant subsequently made a deposit at the Bavarian Justice Exchequer at Bamberg in April 2016. The deposit was supposed to cover all royalties owed for the worldwide sale of LTE/UMTS devices by the defendant between 2012 and 30 June 2016. The court dismissed the actions for injunction, recall and destruction of products because the claimant had not complied with its obligations under EU competition law. However, the court ordered the defendant to render accounts and declared that the defendant was liable for compensation.
  2. Court’s reasoning
    1. Market Power and Notice of Infringement
      TThe court did not comment on the existence of a dominant market position. It focused on the notice of infringement and the license offer. The court held that the notice of infringement should enable the alleged infringer to examine and assess the patent situation. [837] It is insufficient to indicate that the alleged infringer is marketing products covered by a standard and is therefore infringing a patent. Rather, the SEP proprietor needs to specify the patent number and the standard for which it has been declared essential. The SEP proprietor also needs to describe the technical functionality of the standard which is at issue. The level of detail of these descriptions depends on the particular situation. [837] The SEP proprietor needs to take into consideration the level of the alleged infringer’s technological knowledge, or its ability to gain the required knowledge through professional advice. 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. However, the description does not need to be as thorough as a statement of claim in patent litigation.
    2. The SEP owner’s licensing offer
      The court stated that the SEP proprietor’s written license offer needs to contain all relevant aspects of the contract, to enable the alleged infringer to accept the offer. [838] If the alleged infringer argues that the conditions of this 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. The Court acknowledged that the Higher Regional Court of Karlsruhe had rejected this view in the decision 6 U 55/16 of 31 May 2016. [839] The Mannheim District Court, however, reiterated its view that a reduced standard of review of the offered conditions is sufficient, referring to the final opinion given by the Advocate General in the ZTE/Huawei ruling. [838] It was, the court argued, the CJEU’s intention to keep the infringement proceedings free of the determination as to what precise conditions would exactly be FRAND in each particular situation. [838] Only an offer that is clearly abusive, i.e. evidently non-FRAND, would not meet the CJEU criteria at this point. [838]
      Of course, the SEP proprietor’s mere assertion that the offer is FRAND would be insufficient. [838] Instead, the Court requires the SEP proprietor to be transparent about the calculation. That means that it needs to specify how the terms of the license offer are calculated. [840] It needs to make clear the basis of the SEP proprietor’s conclusion that the offer is FRAND. Merely stating the royalties owed per unit (in this case: USD 1,- per unit without further explanation) [841] is also insufficient. Rather, the SEP proprietor needs to find a proper way of substantiating its view as to what royalties are owed. This could be a standard license agreement entered into with third parties, or other references such as fees for a pool license that contains SEPs of the respective standard.
      The SEP proprietor needs to make these explanations before it commences infringement proceedings. [842] Only then, the alleged infringer is able to assess the situation unburdened by the treat of an ongoing court case. The Court was aware that the Higher Regional Court of Düsseldorf had recently (Case No. I – 15 U 36/16, 9 May 2016) expressed its view that this understanding might be overly formal. However, the Mannheim District Court upheld its opinion that only a thorough explanation by the SEP proprietor enabled the alleged infringer an informed decision as to whether the license offer is FRAND. [842]
      The Court held that, in theory, the claimant could be exempt from this transparency obligation if the defendant had been unwilling to enter into a license agreement. [843] However, in the case at issue the defendant had demonstrated its willingness to enter into a license agreement. The Court took into account four factors:
      1. the defendant’s had repeatedly requested the claimant to explain the basis of the license offer calculation, [843]
      2. the defendant had offered to transfer some of its own patents in exchange, [843]
      3. the defendant had made an offer and had commissioned an expert opinion that elaborated why the respective conditions were FRAND, [843]
      4. the defendant had deposited a substantial amount. [844]
    3. Standard Implementer’s Reaction
      The Court repeated its view expressed in the decision 2 O 106/14 of 27 November 2015. [845] Accordingly, the alleged infringer needs to respond to the SEP proprietor’s offer, even if the infringer considers that the offer does not meet the FRAND criteria. The only possible exception is an offer that, by means of summary examination, is clearly not FRAND and therefore constitutes an abuse of market power. A potential counter offer needs to be made in due course, which means as soon as possible, taking into account the recognized commercial practices in the field and good faith.
  • [837] Case No. 7 O 19/16, para 77
  • [838] Case No. 7 O 19/16, para 78
  • [839] Case No. 7 O 19/16, para 76
  • [840] Case No. 7 O 19/16, para 79
  • [841] Case No. 7 O 19/16, para 84
  • [842] Case No. 7 O 19/16, para 86
  • [843] Case No. 7 O 19/16, para 87
  • [844] Case No. 7 O 19/16, para 88
  • [845] Case No. 7 O 19/16, para 80


IP Bridge v HTC

28 9月 2018 - Case No. 7 O 165/16

A. Facts

The Claimant, IP Bridge, is a non-practising entity holding a European patent (German part) which was declared essential to the wireless telecommunications standard LTE (Standard Essential Patent or SEP) developed by the European Telecommunications Standards Institute (ETSI) [846] . The previous holder of the SEP in question had made an undertaking towards ETSI according to Article 6.1 of ETSI IPR Policy to make the patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [847] .

The Defendant is a German subsidiary of HTC, a company which manufactures and sells electronic devices worldwide, including mobile phones complying with the LTE standard [848] . The Defendant filed an action for invalidity against the Claimant’s SEP in Germany [848] .

In December 2014, the Claimant contacted the Defendant’s parent company (parent company) suggesting that the parties entered into negotiations regarding a licence for Claimant’s patent portfolio which also included the aforementioned SEP [848] . Subsequently, several licensing offers and counter-offers were made by the Claimant and the parent company respectively [848] . On 29 February 2016, the Claimant sent a letter to the parent company explaining how the LTE standard made use of the technology covered by its SEP inter alia under reference to an attached claims chart [849] . In response, the parent company confirmed that it is willing to obtain a licence, among others, by letter dated 7 September 2016 [850] . However, no licensing agreement was concluded.

On 27 September 2016, the Claimant brought an infringement action against the Defendant before the District Court of Mannheim (Court) requesting for a declaratory judgment confirming Defendant’s liability for damages arising from the use of its SEP as well as for information and rendering of accounts [851] .

On 16 February 2018, during the course of the pending proceedings against the Defendant, the Claimant made a further licensing offer to the parent company [852] . On 11 April 2018, after the parent company had signed a Non-Disclosure Agreement, the Claimant presented existing licensing agreements with third parties concerning its relevant patent portfolio (comparable agreements) to the parent company and requested the latter to respond to its last licensing offer of 16 February 2018 within one week (that is until 18 April 2018) [852] . This deadline was extended for almost three weeks until 7 May 2018 [852] .

On 15 May 2018, the Claimant extended its claims in the ongoing proceedings; in addition to its already pending claims, it sought for injunctive relief and also requested the recall and the destruction of products infringing its SEP (claims for injunction) [852] .

With the present judgment the Court ruled that the Defendant is liable for damages arising from the infringement of the SEP in suit [853] . The Court also ordered the Defendant to render accounts and to provide relevant information to the Claimant [853] . On the other hand, the Court dismissed the claim for injunctive relief and the recall and destruction of infringing products as being unenforceable for the time being [854] .


B. Court’s reasoning

The Court held that the products sold by the Defendant in Germany infringe Claimant’s SEP [855] . Thus, the Defendant is obliged to compensate the damages suffered by the Claimant and the previous holder of the patent in suit [853] . Since the Claimant has no knowledge of the details required for the quantification of the damages suffered, the Defendant is obliged to provide information on relevant uses (starting from the publication of the patent grant) and render accounts for such uses (starting from one month after the publication of the patent grant) [853] .

In the Court’s view, the Defendant cannot raise a defence based on a so-called “patent ambush” against these claims [856] . A “patent ambush” requires that the patent holder deliberately – in terms of a willful fraudulent misconduct – misled the participants in the standardisation process and intentionally prevented the adoption of an alternative technology into the standard [857] . Insofar, it needs to be established (by the defendant) that the disclosure of the patent during the standardisation process would have led to an alternative structure of the standard, which would have avoided making use of the teaching of the patent in suit; the mere theoretical possibility of an alternative technical solution does not suffice for supporting the allegation of a “patent ambush” [857] . The Court held that the Defendant failed to establish such fact [856] . Accordingly, the Court left the question regarding the legal consequences of a “patent ambush” open (obligation to licence royalty-free or just an obligation to offer FRAND licences?) [856] .

Furthermore, the Court stressed out that the FRAND undertaking given by the previous holder of the SEP in suit has no impact on both the scope and the enforceability of the above claims [858] .

In the Court’s eyes, the Claimant is bound to the FRAND undertaking made by the previous holder of the SEP in suit towards ETSI [859] . The wording of Article 6.1. ETSI IPR Policy establishes a respective assumption [859] . In any case, the assignee of a SEP abuses its market power, if it is aware of the FRAND-undertaking of its predecessor, but, nevertheless, refuses to fulfil the obligations arising from it [849] . The assignee of an SEP cannot draw benefits from the inclusion of its patent into a standard, without being bound to the FRAND commitment of its predecessor, since the latter enabled the inclusion of the SEP in the standard in the first place [849] . Indeed, antitrust law and particularly Article 101 of the Treaty for the Functioning of the EU (TFEU) obliges standard development organisations to make the inclusion of patented technology into a standard subject to a FRAND commitment of the patent holder, in order to secure that essential technology will be accessible to users [860] .

Having said that, the Court made clear that SEP holder’s claims for information and rendering of accounts are not limited by the FRAND undertaking [858] . Even if one would assume that such undertaking limits the SEP holder’s claims for damages to the amount of the FRAND royalty (which the Court left undecided), the patent holder would, nevertheless, be entitled, in principle, to information regarding the use of its SEP [858] .

In addition, the Court explained that a FRAND undertaking has also no influence on the enforceability of the claims for damages (on the merits), information and rendering of accounts asserted by the Claimant [858] . In particular, these claims are not subject to the conduct requirements set forth by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTEHuawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13. (Huawei requirements or framework) with respect to dominant undertakings in terms of Article 102 TFEU [862] .

The opposite is, on the other hand, the case with respect to the claims for injunction asserted by the Claimant. These claims are not enforceable for the time being, since the Claimant failed to fully comply with the Huawei requirements [863] .

Regarding to the SEP in suit, the Court ruled that the Claimant has a dominant market position in terms of Article 102 TFEU: The patent is essential to the LTE standard, which, in turn, cannot be substituted by an alternative standard (from the users’ point of view) [864] .

Looking at the negotiations between the parties involved, the Court did not see any flaws in the parties’ conduct with respect to the first two steps of the framework; the Claimant had effectively notified the Defendant about the infringing use of its SEP and the Defendant (in fact, its parent company) had effectively declared its willingness to obtain a licence covering also the SEP in suit [849] . In this context, the Court pointed out that the SEP holder’s obligation to notify the user of the infringing use of its SEP is also met, when the respective notification is addressed to the parent company of the (alleged) infringer (as is was the case here, especially with the Claimant’s letter to the parent company dated 29 February 2016) [849] .

However, the Court held that the Claimant failed to fulfil its consequent obligation under the Huawei framework, namely to make a FRAND licensing offer to the Defendant (respectively its parent company) [865] .

The Court considered only two offers made by the Claimant to the Defendant’s parent company prior to the extension of its claims in the pending proceedings on 15 May 2018 (since the other offers made were either indisputably not FRAND or were not produced by the Claimant in trial) [850] .

An offer made in February 2016 was found not to be FRAND in terms of content, since it contained a clause, according to which the licensee was obliged to pay the full amount of the royalties agreed, even if only one patent of the licensed portfolio was valid and used by the Defendant [850] .

The Court reached the same conclusion also with respect to the further offer made by the Claimant on 11 April 2018 (that is short before the Claimant extended its claims in the proceedings, adding the claims for injunction) [866] . The Court held that this offer did not comply with the Huawei requirements, since the Defendant was not given sufficient time to assess the offer and eventually make a counter-offer to the Claimant, before the latter asserted the claims for injunction against him in the proceedings [850] .

In the Court’s eyes, a licensing offer complying with the Huawei requirements is only given, when the SEP holder provides the SEP user with all information required from assessing the FRAND conformity of the offer [867] . Only then, the SEP user’s consequent obligation under the Huawei framework to make a FRAND counter-offer to the SEP holder is triggered [867] . In particular, the SEP holder must make the requested royalty amount transparent with reference to a standard licensing programme implemented in the market or to rates actually paid by third parties to a patent pool, covering also patents relevant to the standard [867] . For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed [867] .

Based on the above considerations, the Court held that the period of 22 workdays between the presentation of the comparable agreements to the parent company (11 April 2018) and the assertion of the injunction claims in the proceedings by the Defendant (15 May 2018) was too short for a competent assessment of the Claimant’s licensing offer [868] . The fact that the Defendant (and/or its parent company) would have had sufficient time to react to the Claimant’s offer until the end of the oral hearings in mid-July 2018 was considered irrelevant by the Court in this respect [868] . The Huawei framework aims at preventing the situation, in which the SEP user agrees to unfavourable licensing conditions under the pressure of pending infringement proceedings (defined by the Court as “patent hold-up”) [868] . In case that the SEP holder has not fulfilled the Huawei requirements prior to the initiation of proceedings (as it was the case here), it has to make sure that the parties can again negotiated without the pressure of an ongoing trial, for instance by asking the court to stay its proceedings pursuant to Article 251 of the German Court of Civil Procedure [869] . Otherwise, the initiation of the infringement proceedings shall be considered as abusive in terms of antitrust law [869] . In the present case, the Claimant chose to not ask for a stay in the proceedings, ignoring the Court’s respective indication [869] .


C. Other issues

The Court explained that the registration in the patent register allows the registered patent holder to assert the patent rights in court [870] . On the other hand, it does not define the ownership of the patent in material legal terms [871] . Nevertheless, the patent registration establishes an assumption of ownership which must be rebutted by the defendant in infringement proceedings based on concrete indications [872] .

Besides that, the Court pointed out that a stay in the infringement proceedings (pursuant to Article 148 of the German Code of Civil Procedure) until the end of parallel invalidation proceedings concerning the patent(s) in suit can be considered only under special circumstances [873] . As a rule, it must be expected with a sufficient degree of probability that the patent(s) in suit will be invalidated [873] . The Defendant failed convince the Court that this was the case with the SEP in suit [873] .

  • [846] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, page 2 and 23.
  • [847] Ibid, page 23 et seq.
  • [848] Ibid, page 5.
  • [849] Ibid, page 25.
  • [850] Ibid, page 26.
  • [851] Ibid, pages 5 et seq.
  • [852] Ibid, page 6.
  • [853] Ibid, page 19.
  • [854] Ibid,page 23.
  • [855] Ibid, pages 16 et seqq.
  • [856] Ibid, page 20.
  • [857] Ibid, page 21.
  • [858] Ibid, page 22.
  • [859] Ibid, page 24.
  • [860] Ibid, pages 24 et seq.
  • [861] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13.
  • [862] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, pages 22.
  • [863] Ibid,pages 23 and 25.
  • [864] Ibid, page 23.
  • [865] Ibid, pages 23 and 25 et seq.
  • [866] Ibid, pages 26 et seqq.
  • [867] Ibid, page 27.
  • [868] Ibid, page 28.
  • [869] Ibid, page 29.
  • [870] Ibid, page 10.
  • [871] Ibid, pages 10 et seq.
  • [872] Ibid, page 11.
  • [873] Ibid, page 30.


Sisvel v Wiko

4 9月 2019 - Case No. 7 O 115/16

A. 内容

原告Sisvelは、公平、合理的かつ非差別的(FRAND)な条件にて規格実施者に利用を認めるとの約束に基づき、UMTS及びLTE無線通信の規格に必須である(と見込まれる)と宣言された特許を保有している(標準必須特許又はSEP)。Sisvelは、自らのSEPを含め、複数のSEP保有者の特許で構成されるパテントプールを管理している(パテントプール)。

被告は、Wikoグループのフランスに所在する親会社及びドイツに所在する子会社(Wiko)である。Wikoは、LTE規格を実施する携帯電話を特にドイツにおいて販売している。

2015年6月、Sisvelは、パテントプールの存在及びライセンス取得が必要である旨をWikoに通知した。両当事者は、ライセンス契約の協議に入った。Sisvelは、パテントプールに含まれるSEPの情報について、その複数の特許の規格必須性を示したクレームチャートを添えてWikoに提出した。2016年6月1日、Sisvelは、当該パテントプールを対象とするライセンスについてWikoに申出を行ったが、合意には至らなかった。

2016年6月22日、Sisvelは、1つの特許がLTE規格に抵触していることに基づき、Wikoを相手方として、ドイツのマンハイム地方裁判所(本裁判所)に訴訟を提起した(権利侵害訴訟)。Sisvelは、実体的事項に関するWikoの損害賠償責任を確認する宣言的判決とともに、情報及び計算書の提出を求めた。 2016年6月23日、Sisvelは、Wikoのドイツ子会社に対して自己のSEPのみを対象とする双務的ライセンスをオファーしたが、このオファーは、承諾されなかった。さらにWikoは、SEPの無効確認を訴えて、ドイツ連邦特許裁判所に訴訟を提起した(無効確認訴訟)。

2016年10月4日、Sisvelは、侵害訴訟での訴えを変更し、差止命令による救済手段、並びに侵害性を有する製品の市場からの排除及びその後の破棄を追加的に求めた。

2016年11月11日、WikoはSisvelにカウンターオファーを申し出た。その後、Wikoは、当該カウンターオファーに従い、保証金及び情報をSisvelに提供した。

訴訟手続中に、Sisvelは、プールライセンスに関し、ロイヤルティ料率を含めた新たな申出をWikoに行った。Wikoはこれについても拒絶した。2017年12月22日、Sisvelは、並行して行われていた特許の無効確認訴訟においてドイツ連邦特許裁判所によるSEPの有効性にかかわる判断が下るまで、権利侵害訴訟手続の停止を命じるよう本裁判所に申し立てた。Wikoは、Sisvelの申立てに同意した。2018年1月30日、権利侵害訴訟手続の停止が本裁判所により命じられた。

2018年6月26日、権利侵害訴訟手続の停止中に、Sisvelは、自らが策定した、新たな内容のライセンスプログラムに基づき、あらためてWikoにライセンスオファーを申し出た(2018年オファー)。

2018年オファーと同時に、Sisvelは、―とりわけー選定した20件の特許に関するクレームチャート及び新規ライセンスプログラムと既存の2つのプログラム双方の既存のライセンシーのリストをWikoに提供した。当該リストには、各契約の締結日と合意されたライセンス料が記載されていた。しかし、ライセンシーの名は黒塗りされていた。

Wikoは3か月超にわたり2018年オファーに対応しなかった。2018年10月15日、WikoはSisvelに回答したが、2018年オファーの内容に対しては意見を述べず、2016年11月11日付のカウンターオファーを引用するにとどまった。さらにWikoは、Sisvelが2018年オファーの際に提出したリストの中で既存のライセンシーの名を開示しなかったことを批判した。

この主張に応じ、Sisvelは、2018年10月22日、Wikoに秘密保持契約(NDA)の草案を送付した。Sisvelは、WikoがNDAに署名する時点で既存のライセンシーの名を開示するつもりであった。しかしながら、Wikoは、Sisvelから提案されたNDAに署名することを拒否した。

2018年10月、ドイツ連邦特許裁判所は、係争中のSEPを部分的に認めた。爾後、本裁判所は、権利侵害訴訟手続に取り掛かり、特にFRAND関連問題について協議した。

2019年7月の口頭審理終了後、WikoはSisvelに新たなカウンターオファーを申し出、追加情報をSisvelに提供した。しかしWikoは、2016年11月11日付の初回のカウンターオファー後には、保証金額を増額しなかった。

本判決において [874] 、本裁判所は、Wikoに差止命令を下すと共に、侵害性を有する製品を市場から排除し、滅失させるよう命じた。さらに本裁判所は、実体的事項に関するWikoの損害賠償責任を確認し、損害額の算定に必要な情報をSisvelに提供するようWikoに命じた。


B. 判決理由

本裁判所は、Wikoの製品が係争中の特許を侵害していると認めた [875] 。係争中の特許の必須性は、両当事者間で争われなかった [876]

さらに本裁判所は、EU機能条約(TFEU)第102条により、Sisvelが差止命令による救済手段及び権利侵害訴訟において侵害性を有するとされる製品のリコール及び破棄を求める請求権の行使を妨げられるものではないと判示した。Wikoは現訴訟の申立てにより、SisvelがTFEU第102条に反して市場での支配的な地位を濫用していたと異議を申し立てた。

本裁判所の見解によれば、SisvelはHuawei対ZTE事件 [877] においてEU司法裁判所(CJEU)が定めた行動義務(Huaweiフレームワーク又は義務)を履行していたため、本件は支配的な地位の濫用にあたらない。これに対しWikoは、Huaweiフレームワークを遵守していなかった。

Huaweiフレームワーク

これまでの判例法から外れて、本裁判所は、権利侵害訴訟手続の過程で両当事者がHuawei義務を是正することが可能であるとの見解を示した [878] 。しかしながら、これには、CJEUにより要請される通り、両当事者間で圧力のない協議ができるようになることが必要である。このため、両当事者は、並行する無効確認訴訟において連邦特許裁判所の決定がなされるまで、審理停止の申立て [879] 又は同意を得た上での手続停止等の利用可能な手続文書を使用して、訴訟手続の一時停止を求めなければならない [880]

上記を背景に、本裁判所は、権利侵害訴訟手続開始後Huaweiフレームワークに基づき情報開示義務の是正を求めるSEP保有者に対し、審理停止を申し立てるよう求めた [880] 。当該申立てがなされた場合には、「誠実意思を有する実施者は訴訟手続停止に同意するであろう」と本裁判所は期待している [880]

本裁判所は、係争中の権利侵害訴訟手続の過程でHuawei義務の欠点を是正する機会を両当事者に与えることは、英国控訴院(Unwired Planet対Huawei) [881] とハーグ控訴裁判所(Philips対Asus) [882] の双方で採用された「セーフハーバー」方式に準じていると述べた。上記裁判所はいずれも、Huaweiフレームワークについて厳密に実施すべき強制的な正式手続とみなしておらず、したがって、CJEUにより定められた協議の枠組みから逸脱したとしても、必ずしも、特許保有者による差止命令の請求を排除する濫用的な行動にはあたらない [883] 。さらに、これに該当するかどうかは、ケースバイケースで評価する必要がある [884]

権利侵害通知

その上で本裁判所は、Sisvelが係争中のSEPの侵害について権利侵害訴訟手続開始前にWikoに通知するHuawei義務を履行していたと認めた。

SEP保有者の各通知の内容に関し、本裁判所は基本的に、従前の決定と同じ要件を適用した。本裁判所は、当該通知において (1) 係争中の特許についてその特許番号を含めて記載し、(2) 当該特許が規格に必須として関連標準化機関に宣言されていることを通知し、(3) どの規格について当該特許が必須であるのかを示し、かつ、(4) 実施者の製品又はサービスのうち当該規格を実施する技術的機能を説明しなければならないと認めた [885] 。適切とする詳細の水準については、ケースバイケースで判断する [885] 。本裁判所は、原則として、特許保有者が、SEPライセンス許諾の交渉において慣習的に用いられるクレームチャートを実施者に提供することにより、その通知義務を履行したことになる旨を確認した [885] 。本裁判所はさらに、企業グループの親会社に通知が送付された場合、通常、Huaweiフレームワークにおいて十分であることを再確認した [885]

SEP保有者の申出

本裁判所は、SisvelがまたWikoに対して書面による明確なFRAND条件でのライセンスの申出を行うHuawei義務を履行していたことも認めた。各評価に関し、本裁判所は、権利侵害訴訟手続停止中にSisvelからWikoに対してなされた最後の申出である2018年オファーのみを検討した [886]

まず、本裁判所は、どの具体的なライセンス料や追加的な契約条件がFRANDの「客観的側面に該当する」のかについて、侵害を管轄する裁判所がこれを判断する義務を負うものではないとする自らの立場を重ねて強調した [887] 。カールスルーエ高等地方裁判所(superior Higher District Court of Karlsruhe)が以前に示した見解に反し、本裁判所は、CJEUが差止命令及び製品リコールに関する訴訟手続についてFRAND条件の「正確な数量的判断(precise mathematical determination)」を「負わせる」つもりはなかったとの考えを支持した [888] 。さらに、FRANDへの該当が見込まれる条件には「幅」があるため、差止命令の要求がTFEU第102条に抵触するのは、特段の交渉状況及び市況に鑑みて、SEP保有者の申出が「搾取的な濫用」にあたるような場合に限られる [887] 。すなわち、本裁判所の認識は、英国控訴院のUnwired Planet対Huaweiと共通であった [881]

上記にかかわらず、本裁判所は、権利侵害を管轄する裁判所がSEP保有者のライセンスの申出がFRANDに適合するか否かにつき、単なる「表面的」な評価ではなく、それ以上の評価を行うべきであることを明確にした。権利侵害を管轄する裁判所は、具体的な申出の全体的な内容について、両当事者の交渉上の立場における典型的な当初の違いにかかわらず、誠実に行為する実施者に対し当該申出に応じることを要求するものであるか否かを検討しなければならない [889] 。原則として、このような義務は、SEP保有者が自らの申出がFRAND条件での申出であると判断する理由を立証する方法でロイヤルティの算定を説明する場合に生じる [890] 。プールライセンシングプログラム又は標準ライセンシングプログラムが存在する場合は、通常、各プログラムが市場で受け入れられていることを立証すれば十分である。プールごとに十分な数のライセンスが許諾されている場合、特許保有者は、当該プールに包含される特許に言及した適切な数量のクレームチャートを提示して、当該プールの構成を概説すれば良い [891]

この状況において、本裁判所は、特許保有者の申出がFRANDに適合するか否かに関し実施者が申立てをする場合、原則として、個別の契約条項の違法性(の主張)を根拠として申立を行うことができない旨を指摘した。さらに、申出がFRANDに適合しているか否かについては、包括的な契約の概要に基づき評価しなければならない [892] 。例外が適用されるのは、特定の条項が「容認できない効果(unacceptable effect)」を有する場合に限られる [892] 。本件において、本裁判所は、2018年オファーのいずれの条項にもこのような効果がないと判断した [892] 。 とりわけ、本裁判所は、ライセンシー(ここではWiko)に申し出がなされたライセンスの対象たる特許の消尽に関する立証責任を定めた条項が許容されると判断した [893] 。同様の事件におけるデュッセルドルフ地方裁判所の見解とは対照的に、本裁判所は、ライセンシーがサプライヤーを関与させることによりライセンス網を追跡しやすい立場にあることから、関連の事実を確証するようライセンシーに要請することが適切であると論じた [893]

また、本裁判所は、提示されたライセンスの期間を5年に制限する条項が反トラストの観点から「容認できない効果(unacceptable effect)」を有するとは判断しなかった。本裁判所は、その5年の期間について、急速な技術の発展を特徴とする無線通信業界において実勢的な慣行に準じたものであると判示した [894]

さらに本裁判所は、ライセンシーによる報告義務の違反や30日を超える支払遅延が生じた場合のライセンス契約の例外的な終了を求める権利を定めた条項について、上記の「容認できない効果(unacceptable effect)」がないことを指摘した [894]

本裁判所は、2018年オファーにおいて、契約期間中、対象特許の数に変更が生じた場合に合意済みロイヤルティ料率の調整について定めた条項が含まれていなかったことに異議を唱えなかった。本裁判所の見解によれば、FRAND条件でのライセンスに当該条項を含めることは求められていない [894] 。しかしながら、プールを構成する特許の多数がライセンス期間締結後間もなく満了する場合には、例外が認められるべきである [894] 。一般的に、ライセンスの申出において、契約目的の履行不能性を理由にライセンスの調整を要請する両当事者の制定法上の権利(ドイツ民事法典第313条1項)が制限又は排除されていない場合には特に、「調整」条項がなくとも問題にならない [894]

非差別性/秘密保持

FRANDライセンスの申出の非差別的要素に関して、本裁判所は、TFEU第102条においては、係争中の権利侵害訴訟手続において、被告に対する申出が同様の状況に置かれた競業者に比べて被告を差別するものでないことを証明する特許保有者の義務(二次的な)が定められているとの見解を示した [891]

上記にかかわらず、本裁判所は、いかなる事例においても上記の義務が法的に「全面的な透明性」を伴うわけではないことを明確にした [891] 。SEP保有者の反トラスト義務により、法的保護に値する被告の秘密保持上の権利が常に重視されるものではない。さらに言えば、個々の事例の特別な状況により、秘密性を保護しなければならない可能性がある [891]

本裁判所は、SEP保有者と同様の状況に置かれた第三者たるライセンシーとの間の既存のライセンス契約(類似契約)に定められた情報を特段に参照した上で、当該契約を開示する特許保有者の義務については、侵害を管轄する裁判所により、訴訟手続における両当事者の訴答を考慮した上で、ケースバイケースで判断されるべきであるとの見解を示した [891]

本裁判所によれば、特許保有者は、保護されるべき秘密保持上の権利の存在を確立しなければならない。類似契約に秘密保持条項が適用されるというだけでは、本来的には、特許保有者の開示義務の範囲を制限する根拠とはならない [895] 。これに対し被告は、特許保有者のライセンスの申出がFRANDに該当するか否かを評価するに際し、要請した情報が必要であった理由を説明しなければならない [895] 。被告は、SEP保有者の差別的と見られる行動を示し、具体的な事実を確証しなければならない [896]

この点を考慮し、本裁判所は、いかなる場合においてもSEP保有者が権利侵害訴訟手続において既存の類似契約書すべてを提出する義務を負うとのデュッセルドルフ裁判所の見解に異議を申し立てた [897] 。とりわけ、特許保有者が実施者との間で標準的なライセンス契約のみを締結している場合、当該契約の条件が公開されているのであれば、本裁判所には、訴訟手続において(膨大な)同一の契約書を提出する義務を特許保有者に負わせる理由がない。すなわち、それまでに締結した(標準的な)ライセンス契約の件数を開示すれば十分である [897]

したがって、本裁判所は、2018年オファーに際しSisvelからWikoに提出された既存ライセンシーのリストについて、ライセンシーの名が黒塗りされていたとしても、当該オファーのFRAND該否の確証に十分であったと認めた。本裁判所の見解において、Wikoは、2018年オファーのFRAND該否を評価するために既存ライセンシーの身元情報が必要であった理由を説明していなかった [898] 。さらに本裁判所は、Wikoが既存ライセンシーの身元開示を目的として訴訟手続が停止されている間、Sisvelから提示されたNDAの締結を拒絶していた事実も考慮した [899] 。2018年オファーのFRAND該否に異議がなかったため、本裁判所は、WikoによるNDAの締結の拒絶がHuaweiフレームワークを準拠する意思のないこととみなされるかどうかについて判断を下さなかった。しかしながら、本裁判所は、実施者が適切なNDAの締結を拒絶した場合は原則としてこれをSEP保有者の申出の評価に関連して検討すべきとの、この点に関しデュッセルドルフ裁判所が示した見解に同意した [899]

さらに、本裁判所は、ドイツ民事訴訟手続法(Zivilprozessordnung, ZPO)第142条に従い管轄裁判所により発せられた文書提出命令を通じ、権利侵害訴訟手続において類似契約の使用を促す可能性についても検討した [896] 。このオプションは、特に、類似契約に定められた秘密保持条項により、裁判所命令が発せられた場合に限り契約の開示が認められる個別の事例において侵害を管轄する裁判所により検討される。本裁判所によれば、当該秘密保持条項は、それ自体では反トラスト法に反するものでないことから、特許保有者が訴訟手続において保護に値する秘密保持上の利益を確証できない場合を除き、尊重されるべきである [896] 。特許保有者が、秘密保持条項の拘束を受け、審理に際し類似契約書を提出する意思がある場合には、侵害を管轄する裁判所は、各案件の具体的な状況に基づき、ZPO第142条に従い文書提出命令を発する [896] 。特許保有者が当該命令に従わない場合、当該裁判所は、Huaweiフレームワークにおける両当事者の行為を全体的に評価する上で、その行動を不誠実さの顕れであると判断する場合がある [896] 。ZPO第142条に従い発せられた裁判所命令に基づき類似契約書の閲覧が認められた後、実施者が訴訟手続停止に同意しない場合も、同様に適用される [896]

実施者のカウンターオファー

本裁判所は、WikoがSisvelに対し、正当な過程でFRAND条件の対案(カウンターオファー)を行うHuawei義務を履行していなかったと認めた。各評価に関し、本裁判所は、2018年オファーに対するWikoの対応に注目した [900]

本裁判所は、申出がFRANDに該当するとみなしているか否かにかかわらず(通常はあてはまる)、実施者が具体的な事実に基づき、SEP保有者のライセンスオファーに対応する義務を負っていると明言した [896] 。さらに、実施者は、各事例の事実、特定分野での業界慣行及び誠実な原則を検討の上、可能な限り早急に対応しなければならない [880]

Wikoが3か月を超える期間、2018年オファーに一切対応しなかったことに鑑み、本裁判所は、Wikoが上記の義務に違反すると判示した [876] 。本裁判所の見解では、Wikoは時間の引き延ばし戦術をとったとされる [876] 。本裁判所は、フランスの休校期間や、(Wikoの陳述によれば)ライセンス関連業務を担当した従業員がわずか2名であったという事実が、Wikoによる対応の遅延の十分な根拠になるとは認めなかった [900] 。国際的な業務に携わる会社として、Wikoは、今後、各問題に対処できるよう十分な人材を確保すべきである [900]


C. その他の重要事項

差止命令並びに侵害性を有する製品の市場からの排除及び破棄を求めたSisvelの請求とは別に、本裁判所は、実体的事項に関するWikoの損害賠償責任を認め、宣言的判決を下した [901]

本裁判所は、Wikoが係争中の特許を著しく侵害したと判断した。とりわけ、Wikoは、少なくとも過失的行為をなした [901] 。Wikoは、極めて複雑な標準化技術(特に、規格に組み込まれる膨大な数の特許)が極めて複雑であるため、知的財産権に関する状況を評価することが困難になった(よって、過失を除外すべき)と主張した。しかしながら本裁判所は、基盤となる技術がより一層複雑になったために、実施者側に対するデューディリジェンス要件がさらに拡大したことを明言した [902]

  • [874] Sisvel対Wiko、マンハイム地方裁判所2019年9月4日、事件番号7 O 115/16。
  • [875] 同判決、17~31頁。
  • [876] 同判決、46頁。
  • [877] Huawei対ZTE、EU司法裁判所2015年7月16日判決、事件番号C-170/13。
  • [878] Sisvel対Wiko、マンハイム地方裁判所2019年9月4日、事件番号7 O 115/16、42頁。
  • [879] 同判決、43頁及び51頁以下。
  • [880] 同判決、42頁。
  • [881] Unwired Planet対Huawei、英国控訴院2018年10月23日判決、[2018] EWCA Civ 2344、第282節。
  • [882] Philips対Asus、ハーグ控訴裁判所2019年5月7日、事件番号200.221 .250/01。
  • [883] Sisvel対Wiko、マンハイム地方裁判所2019年9月4日、事件番号7 O 115/16、44頁。
  • [884] 同判決、44頁。
  • [885] 同判決、37頁。
  • [886] 同判決、47頁及び53頁。
  • [887] 同判決、38頁。
  • [888] 同判決、37頁。以下。
  • [889] Sisvel対Wiko、マンハイム地方裁判所2019年9月4日、事件番号7 O 115/16、39頁。
  • [890] 同判決、39頁。
  • [891] 同判決、40頁。
  • [892] 同判決、53頁。
  • [893] 同判決、54頁。
  • [894] 同判決、55頁。
  • [895] 同判決、40頁及び49頁。
  • [896] 同判決、41頁。
  • [897] 同判決、49頁。
  • [898] 同判決、50頁。
  • [899] 同判決、51頁。
  • [900] 同判決、47頁。
  • [901] 同判決、35頁。
  • [902] 同判決、35頁以下。


Nokia対Daimler、マンハイム地方裁判所

18 8月 2020 - Case No. 2 O 34/19

A. 内容

原告は、フィンランドに本社を置くNokiaグループに属している(「Nokia」)。Nokiaは、大手通信事業者であり、欧州電気通信標準化機構(「ETSI」)が開発した各種無線通信規格の実施に不可欠(と見込まれる)と宣言されている、重要な特許ポートフォリオ(標準必須特許又はSEP)を保有している。

被告Daimlerは、世界的に有名なドイツの車メーカーである。Daimlerは、ETSIが開発した規格を実装する接続機能を備えた車をドイツで製造し、販売している。

Nokiaは、本件にかかわる特許が4G/LTE規格にとって不可欠であるとETSIに向けて宣言した。ETSIは、規格の実施に不可欠であるか、不可欠となる可能性のある特許の特許権者に対し、ユーザーが公平、合理的、かつ非差別的(FRAND)な条件にてこれを利用できるよう確約することを要求している。

2016年6月21日、Nokiaは、ETSIに不可欠(と見込まれる)と宣言した特許及び特許出願を網羅したリストを提出して自社のSEPポートフォリオをDaimlerに知らせた。これに対しDaimlerは、自社製品が実際にNokiaの特許を侵害しているとの条件でライセンスを取得できると回答した。

2016年11月9日、Nokiaは、Daimlerに1回目のライセンスの申し出を行った。2016年12月7日、Nokiaは、自社の特許ポートフォリオに関する詳細情報をDaimlerに提供した。2016年12月14日、Daimlerは、Daimlerの車に組み込まれている、いわゆる「テレマティクス制御ユニット」(TCU)を製造するサプライヤーへライセンスを付与する方が効率的と思われる旨回答した。2017年1月から2019年2月まで、Daimlerは、Nokiaとの交渉の場に再度就くことはなく、NokiaがDaimlerのサプライヤーと行った協議にも参加しなかった。

2019年2月27日、Nokiaは、Daimlerに対し二度目となるライセンスの申し出を行い、これに際し、自社特許と対象たる規格関連部分との対応関係を図示したクレームチャートを添付した。2019年3月19日、Daimlerは、Nokiaのポートフォリオに関するロイヤルティについて、基本的に、Daimlerが製造した車の台数ではなく、そのサプライヤーからDaimlerに提供されたコンポーネント数を基準として計算すべきであるとして、再度この申込みを拒絶した。

爾後Nokiaは、Daimlerに対し、ドイツのミュンヘン、デュッセルドルフ及びマンハイのム地方裁判所に複数の権利侵害訴訟を申し立てた。

2019年5月9日、権利侵害訴訟開始後間もなく、Daimlerは、Nokiaにカウンターオファーを行った。Nokiaのポートフォリオにかかわるそのロイヤルティの算定根拠は、Daimlerがサプライヤーに支払ったTCUの平均販売価格であった。Nokiaはこのカウンターオファーを拒絶した。

2020年6月10日、Daimlerは、Nokiaに2度目のカウンターオファーを行った。Nokiaは、(ドイツ民法典第315条に従い)ライセンス料を一方的に決定することができたが、Daimlerは、その決定されたライセンス料について裁判で争う権利を有していた。その2度目のカウンターオファーも拒絶された。

2020年6月18日、ドイツ連邦カルテル庁(「カルテル庁」)がマンハイム地方裁判所(「本裁判所」)での本件訴訟に介入し、FRAND宣言の性質に関する問題を本裁判所から欧州司法裁判所(CJEU)に照会するよう勧告した。本裁判所は、カルテル庁の勧告に従わなかった。

現行の判決で [903] 、本裁判所は、Daimlerに差止命令を下すとともに、本案に関するDaimlerの損害賠償責任を認めた。さらに本裁判所は、Nokiaへの損害賠償金の算定に必要な会計帳簿及び情報を提出するようDaimlerに命じた。

 

B. 判決理由

本裁判所は、係争中の特許をDaimlerが侵害したと認定した [904] 。これにより、Nokiaには差止命令等による救済手段が与えられた [905]

Daimler及び当該訴訟に参加したそのサプライヤーは、Nokiaが権利侵害訴訟の申立てにより市場支配的地位を濫用しており、これがEU機能条約第102条に違反していることから、差止命令が却下されるべきとして、いわゆる「FRAND宣言を理由とする抗弁」を主張した。とりわけ、Huawei v ZTE [906] (「Huawei裁定」又は「Huaweiフレームワーク」)事件でCJEUが定めた行動要件をNokiaが遵守していないと論じられた。

本裁判所は、Daimler及びそのサプライヤーのFRAND宣言を理由とする抗弁を理由がないとして棄却した [907]

 

Huaweiフレームワーク

本裁判所は、SEP保有者が特許に起因して生じる独占権の行使を本来的に妨げられないことを名言した [908] 。実際のところ、特許が規格に必須であっても、その特許権者に技術利用を許容する義務を負わせることにならない。但し、市場支配的地位を獲得した結果、そのような利用を認めていたか、その利用を認める義務を課されていた場合は、この限りでない [908]

特許権者がHuaweiフレームワークに基づく義務を履行しているのであれば、特許権の行使による市場支配的地位の濫用が生じることはない [909] 。但し上記の義務は、権利者の許諾なしに保護対象技術を既に利用している実施者がFRAND条件でのライセンス取得の意思を有していることを前提とする [910] 。本裁判所は、特許権者から規格利用者に対しライセンスを「押しつける」よう要請することはできないのであるから、ライセンス契約締結を要請する法的請求権については尚更有していないと説示した [910] 。その上、支配的地位に付される「特段の責任」により、SEP保有者は、原則としてライセンス取得の意思を有するライセンシーに契約締結を促すよう「十分な努力」を払う義務を負う [911]

 

権利侵害通知

本裁判所によれば、上記の「努力」には、その実施者に特許侵害について通知するだけでなく、権利侵害訴訟申立て前におけるライセンス取得の可能性および必要性を通知する義務が含まれる [912] 。具体的な事例を参照した結果、本裁判所は、Nokiaが当該義務を履行したと認めた [913]

内容について言えば、上記の権利侵害通知には、被侵害特許の明示並びに侵害性を有する使用法及び訴えの対象たる実施形態を記載しなければならない [912] 。権利侵害について技術的・法的観点から詳細に分析する必要はない。実施者の立場としては、結局は専門家又は弁護士の助言に依拠してその権利侵害の主張を評価するしかない [912] 。通例、クレームチャートが提示されれば十分である(但し、必須ではない) [912] 。さらに本裁判所は、特許権者がその特許を侵害している最終製品メーカーのサプライヤーそれぞれに対し、別個に権利侵害を通知する義務を負わないことを指摘した [914]

本裁判所の見地から、2016年6月21日、2016年11月9日及び2016年12月7日付のNokiaのEメールは、上記要件を満たしている [915] 。実際のところNokiaは、-少なくとも当初は-付託される係争中の特許に該当する標準規格書の具体的部分を示していなかったことは、害にはならない。これは、権利侵害の最終的な評価を行うに際し権利侵害通知が求められていなかったためである [916]

さらに本裁判所は、Nokiaが権利侵害通知において、関連規格によって接続機能を生み出す具体的なコンポーネント(Daimlerの車に組み込まれたTCU等)を特定する必要はないと判断した [917] 。Daimlerは当該コンポーネントを購入した上で自社製品に使用したのだから、情報不足は何ら生じるはずがなかった [917]

 

誠実意思

さらに本裁判所は、DaimlerがNokiaとのFRANDライセンス契約締結の意思を十分に明示ていないことから、差止命令を回避するためにFRAND宣言を理由とする抗弁に依拠できないと認定した [918]

本裁判所の見地から、実施者は、「どのような条件が実際にFRANDにあたるのかにかかわらず」SEP保有者とのライセンス契約を締結する意思について、「明確に」かつ「疑義の生じないよう」宣言した上で、爾後「目的志向」の意図にてライセンス供与の協議に従事しなければならなかった(Sisvel v Haier(連邦司法裁判所, 2020年5月5日, Case No. KZR 36/17)、及びUnwired Planet v Huawei(英国及びウェールズ高等法院、2017年4月5日, Case No. [2017] EWHC 711(Pat)の判決) [919] 。ライセンス供与の協議における実施者の「目的志向」は、決定的な重要性を有する。実施者は概して、ライセンス供与の協議が開始される前の時点で特許取得済の標準化技術を既に使用していることから、その特許の有効期間満了までライセンス契約締結を遅延させることに利得を有するが、これはHuawei裁定の趣旨に反する [920] 。よって、権利侵害の通知に対して、ライセンス契約締結を検討する意思を示したり、ライセンス取得の是非及びその条件についての協議に入る意思を示したりするだけでは不十分である [919]

本裁判所はさらに、一定条件下での誠実意思の宣言が許容されないと指摘した [919] 。さらに特許権者へのカウンターオファー内容変更協議の拒絶も、実施側の誠実意思欠如を示すものとみなされうる [919]

上記に基づき、本裁判所は、Daimlerが当初、製品がNokiaの特許を実際に侵害すればライセンス契約を締結すると示したことでは、DaimlerがFRANDライセンス契約を締結する意思を適切に示さなかったとの見解を示した [921] 。本裁判所は、Daimlerのカウンターオファーは契約締結にかかわる意思を十分に示したものになりえず、特に2度目のカウンターオファーについては、Nokiaが片務的に設定できたはずのロイヤルティ料率に異議を唱える権利をDaimlerに求めただけで、ライセンス料の決定に関する両当事者間の紛争を爾後の訴訟に持ち越しただけに過ぎないと付け加えた [922]

本裁判所はさらに、DaimlerがNokiaとの協議に関与しなかったにもかかわらず、自らのサプライヤーにNokiaから直接ライセンスを付与するよう強く主張したことから、Daimlerが「誠実意思を有する」ライセンシーとして行為していなかったと判示した [923] 。さらに、Daimlerの誠実意思の欠落は、NokiaのSEPポートフォリオに対するライセンス料の算定基準として、Daimlerがサプライヤーから購入したTCUの平均価格を適用するよう主張したことからも確認された [924]

 

FRAND料金の算定

本裁判所は、NokiaのSEPポートフォリオに対するロイヤルティ料率の算定に、TCUを「参考値」として使用することは適正でなかったと認定した [925]

一般に、FRAND条件は単一ではなく、FRANDのライセンス供与条件及び料金には幅が設定されるのが通例である [926] 。また、何がFRANDとみなされるかは、業界及び時期によって異なる場合がある [926]

しかしながら、本裁判所は、原則として「バリューチェーンの最終段階で商品として通用する最終製品にかかる技術の経済上の利益」を特許権者に「配分」しなければならないと指摘した [927] 。どの理由は、保護された発明を使用する最終製品で「経済上の利益」を獲得する「機会が創出する」、ためである [927] 。裁判所は、最終製品における特許技術の価値を斟酌して、SEP保有者がバリューチェーンの別の段階でなされるイノベーションから利益を得ているとの考えを認めなかった [928] 。裁判所は、これが生じないと確認するために入手可能な証拠文書が複数存在することを示した [928]

したがって、本裁判所は、いわゆる「最小販売可能特許実施単位(SSPPU)」、すなわち、製品に組み入れられる最小技術単位をFRANDロイヤルティ料率の算定根拠とする考えを否定した [928] 。特許消尽の影響により、SEP保有者は、バリューチェーン最終段階で創出される価値に関与することを妨げられる [928] 。これとは別に、この選択肢は、バリューチェーンの複数の段階において同一特許のライセンスが付与される「二重取り」の特定と回避をより複雑にするおそれがある [928] 。 それでもなお本裁判所は、上記の原則について、必ずしも専ら最終製品製造会社とライセンス契約締結を意味するものでないと明言した [929] 。本裁判所は、販売可能な最終製品の特許技術の価値がサプライチェーンの別の段階で計算に組み込まれる可能性が大いにあるとみなした [929]

この背景に照らし、本裁判所は、TCUの販売価格では、本事件の最終製品にあたるDaimler製造車に対するNokiaのSEPの価値が十分に反映されていないと認定した [930] 。TCUの販売価格が相応するのはDaimlerのそれぞれのコストのみである [931] 。むしろDaimlerは、接続機能により、顧客に追加サービスを提示してこれによる収入を得て、コストを節減し、研究開発費を最適化した [932] 。接続機能はこの価値創出の機会を保証するものである [933] 。さらに、本裁判所は、Daimlerの複数の主要競合会社が(専ら車製造会社にライセンスを付与する)Avanciプラットフォームのライセンシングモデルを承諾したことにより、最終製品向けの保護された技術の価値に焦点があてられることは、自動車業界にとっても合理的と認定した [934]

 

非差別性

さらに本裁判所は、NokiaのDaimlerに対する特許請求の申立ては差別的なものではなく、よってサプライヤーがライセンスを取得するべきとのDaimlerの主張が正当化されるものでないことを認めた [935]

裁判所は、特許権利者が基本的に、サプライヤーンの中で権利を主張する段階を自由に選択できることを説示した [936] 。競争関連法においてこの可能性は本来的に制限されていないため、市場支配的地位を有する特許権者も同様である [936] 。その上、支配的地位を有する特許権利者は、すべての見込ライセンシーに「標準料率」を申出する義務を負うものでない [936] 。TFEU第102条に定められた非差別性に関わる義務は、上流市場又は下流市場での競争の歪みを回避するためであるが、正当な根拠が十分に存在する場合にライセンシーの様々な取扱いを排除するものではない [937]

本件において、本裁判所は、ロイヤルティベースとして最終製品を使用すべきであるとのNokiaの請求が競争に影響を及ぼさないと判断した [938] 。特に、自動車業界では車メーカーに販売されるコンポーネントのライセンスをサプライヤーが取得することが一般的であるとの事実は、Nokiaに慣行の変更を求めるものでない。これは特に、AvanciプラットフォームからDaimlerの競合会社へのライセンス供与は、通信業界において実勢的なその慣行が自動車業界でも既に適用されていることを証しているためである [939] 。さらに本裁判所は、最終製品メーカーにSEPを主張することにより生産、販売及び技術発展の制限がもたらされ、これにより消費者が不利益を被るとはみなさなかった [940] 。この点に関し、本裁判所は、ETSI IPRポリシーに拠ればFRANDライセンスに含められるべきであり、かつ、コンポーネントメーカーに製品の製造、販売及び開発を認めるいわゆる「下請製造権」に言及した [941]

 

SEP保有者の申出/情報提供義務

さらに、本裁判所は、Nokiaがライセンスの申出に関し十分な情報を提供することを拒絶した旨をDaimlerが主張しても、Daimlerのライセンス取得する意思のないことを正当化できないと判示した [942]

本裁判所は、SEP保有者がライセンス要請のFRAND適合性を具体化する義務を負う可能性を指摘した [943] 。特許権利者は、第三者との間で非標準的な条件に基づき既に契約を締結している場合、一般的には、別の契約条件の申出を受けているかどうか実施者が評価できるようにするため、-少なくとも-重要な契約条項の内容を開示し、提示する義務を負う [943] 。各々の義務の範囲および詳細なレベルは、ケースバイケースで判断される [943]

上記に鑑みて、本裁判所は、車両の接続機能の価値に関する調査や他の主要車メーカーとの署名済みライセンス締結等を共有することにより、NokiaがDaimlerに十分な情報を提供していたとの見解を示した [944] 。この状況において、本裁判所は、NokiaがDaimlerに対し、スマートフォンメーカーとのライセンス契約を開示する義務を負っていなかったと示した。本裁判所は、SEP保有者の情報開示義務が、従前に署名されているあらゆるライセンス契約の全文に及んで適用されるとの意見や、SEP保有者がすべての既存契約を開示する義務を負うとの意見を拒絶した [945] 。さらに本裁判所は、通信業界でのライセンス契約は自動車業界でのライセンスのFRAND適合性評価とは無関係であると判示した [945]

 

サプライヤーによるFRAND宣言を理由とする抗弁

上記とは別に、本裁判所は、訴訟に参加したサプライヤーが提起したFRAND宣言を理由とする抗弁がDaimlerに利益をもたらさないことを強調した [946]

本裁判所は、訴えられている最終製品メーカーがそのサプライヤーにより提起されるFRAND抗弁に、原則として依拠できるかどうかについて結論を出さなかった。本裁判所によれば、これについてはいかなる場合であれ、サプライヤーが(製造するコンポーネントでなく)最終製品に対する対象特許の価値を根拠として特許権利者からライセンスを取得する意思を有している必要がある [947] 。本訴訟はこのような状況でなかった [948]

本裁判所は、サプライヤーがSEP保有者に支払ったロイヤルティをその顧客に転嫁することが難しいことを無視したわけではない [949] 。しかしながら、第三者との契約上の取決め(ここでは、サプライヤーと最終製品メーカーとの契約)は、裁判所の見地から、最終製品にかかわる特許技術により創出される価値への配分を認めないライセンス契約にSEP保有者に指示するものであってはならない [949]

 

C. その他の問題点

最終的に本裁判所は、-カルテル庁の勧告に反し-、訴訟手続を停止し、かつ、SEP保有者のFRAND宣言により、バリューチェーンに含まれるあらゆる者に双務的なライセンスが付与される直接的な請求(license-to-allの考え方)または標準化技術へのアクセスへの請求(access-to-allの考え方)が確立されるのかをめぐる問題をCJEUに照会する必要はないと判断した。

本裁判所は、Daimlerもそのサプライヤーも、Daimlerが製造した車に関する特許技術の価値に基づきFRAND条件でNokiaからライセンスを取得する意思を有していなかったため、これについて結論を出さなかった [950] 。さらに本裁判所は、係争中の特許の有効期限が今後数年で満了するとの事実に基づき、訴訟手続の停止命令に反対すると述べた [951]

  • [903] Nokia v Daimler(マンハイム地方裁判所, 2020年8月18日判決, 事件番号 2 O 34/19(www.juris.deから引用))
  • [904] 同判決、第49節乃至第136節。
  • [905] 同判決、第138節。
  • [906] Huawei v ZTE(欧州司法裁判所, 2016年7月16日判決、事件番号 C-170/13)
  • [907] Nokia v Daimler(マンハイム地方裁判所、2020年8月18日判決、事件番号 2 O 34/19, 第144節)
  • [908] 同判決、第146節。
  • [909] 同判決、第147節。
  • [910] 同判決、第148節。
  • [911] 同判決、第149節。
  • [912] 同判決、第152節。
  • [913] 同判決、第151乃至第156節。
  • [914] 同判決、第248節。
  • [915] 同判決、第153節以降。
  • [916] 同判決、第154節。
  • [917] 同判決、第155節。
  • [918] 同判決、第157乃至第231節。
  • [919] 同判決、第158節。
  • [920] 同判決、第159節。
  • [921] 同判決、第161節。
  • [922] 同判決、第197乃至第199節。
  • [923] 同判決、第157節、第160節及び第162節乃至第164節。
  • [924] 同判決、第160及び第165節乃至第168節。
  • [925] 同判決、第169節。
  • [926] 同判決、第170節。
  • [927] 同判決、第171節。
  • [928] 同判決、第172節。
  • [929] 同判決、第173節。
  • [930] 同判決、第174節以降。
  • [931] 同判決、第174節。
  • [932] 同判決、第177節。
  • [933] 同判決、第180節。
  • [934] 同判決、第187節以降。
  • [935] 同判決、第201節乃至第212節。
  • [936] 同判決、第202節。
  • [937] 同判決、第203節。
  • [938] 同判決、第205節。
  • [939] 同判決、第210節。
  • [940] 同判決、第213節。
  • [941] 同判決、第215節。
  • [942] 同判決、第216節以降。
  • [943] 同判決、第217節。
  • [944] 同判決、第218節。
  • [945] 同判決、第230節。
  • [946] 同判決、第232節以降。
  • [947] 同判決、第234及び第236節以降。
  • [948] 同判決、第240節以降。
  • [949] 同判決、第239節。
  • [950] 同判決、第253及び第291節。
  • [951] 同判決、第291節。


Cases from LG Munich - District Court


シャープ対ダイムラー、ミュンヘン地方裁判所

10 9月 2020 - Case No. 7 O 8818/19

A. 内容

原告は、日本に本社を置くシャープグループ会社(シャープ)である。シャープは、欧州電気通信標準化機構(ETSI)が開発した各種無線通信規格(標準必須特許又はSEP)の実施に必須(と見込まれる)として宣言済みの特許ポートフォリオを保有している。

被告ダイムラーは、ドイツの大手自動車メーカーである。ダイムラーは、ETSIにより開発された規格を実施する接続機能を搭載した自動車をドイツで製造し、販売している。

シャープは、本事件に関係する特許について、4G/LTE規格に必須(と見込まれる)としてETSIに宣言した。ETSIは、規格の実施に必須であるか、必須となる特許を公正、合理的かつ非差別的(FRAND)条件にてユーザーの利用に供すると確約するよう権利保有者に要求している。

In 2017年、シャープは、Avanciライセンシングプラットフォームに参加した。Avanciは、標準ライセンス契約及び固定料率に基づき、接続規格に関するSEPのライセンスを自動車メーカーにオファーした。Avanciは、2016年9月以降、ライセンス契約締結に関し、既にダイムラーと接触していたが、契約締結には至らなかった。

On 20 May 2019年5月20日、最初の接触後、シャープは、対象規格の関連部分にかかわる自社のSEP(係争中の特許を含む)を図示したクレームチャートをダイムラーに送付した。

2019年6月7日、ダイムラーは、使用した特許につき原則としてライセンスを取得する意向である旨を回答したが、双方向ライセンスのオファー又はAvanciプラットフォームを経由したライセンス許諾を行うかどうかシャープに尋ねた。双方向ライセンスがオファーされていれば、ダイムラーは、自社のサプライヤーも同様にライセンスを取得できると想定したことを指摘した。

2019年7月23日、ダイムラーは、ダイムラーでなく自社のサプライヤー(ただし、個別の社名には言及されていない)にライセンスが許諾されるべきだとの書簡をあらためてシャープに送付した。ダイムラーは、ダイムラーのサプライヤーにライセンスがオファーされないのであればシャープのETSIに対するFRAND誓約に反していると主張し、シャープの締結済み契約、特にダイムラーに接続ユニットを供給している会社との契約に関する情報を要請した。

2019年8月8日、シャープは、個別ライセンスをオファーする意向であるとダイムラーに回答し、通知した。このため、シャープは、一定の情報、特にダイムラーのサプライヤーにかかわる情報をダイムラーに要請した。

2019年9月18日、ダイムラーは、シャープから要請された情報の提供を拒絶し、シャープによる適切なライセンス要求先として自社のサプライヤーに委ねるとした。

2019年10月22日、シャープは、ダイムラーに双方向のFRANDライセンスをオファーしたが、このオファーは承諾されなかった。

その後、シャープは、ダイムラーを相手取り、ミュンヘン地方裁判所(裁判所)に権利侵害訴訟を提起した。ダイムラーの複数のサプライヤーがダイムラーを援護するため当該訴訟に参加した。 2019年12月17日、訴訟が提起された後、ダイムラーは、係争中の権利侵害訴訟の停止に同意するようシャープに要請した後、カウンターオファーを行った。2019年12月31日、シャープは、ダイムラーのこのカウンターオファーを拒絶した。

審理の過程で、シャープは、訴訟に参加していたダイムラーのサプライヤー1社との間で、ライセンス契約に関し合意した。結果として、シャープは、審理での主張内容を修正した。

この判決 [952] をもって、裁判所は、ダイムラーに差止命令を下すとともに、ダイムラーの損害賠償責任を判示した。さらに裁判所は、侵害製品のリコール及び破棄、計算書の提出、並びにシャープに対する損害賠償金の算定に必要な情報の提供をするようダイムラーに命じた。
 

B. 判決理由

裁判所は、係争中の特許が4G/LTE規格の実施に必須 [953] であり、侵害されていた [954] と認めた。これにより、シャープは、差止命令の救済手段を求める権利がある [955] 。 ダイムラーは、いわゆる「FRAND宣言を理由とする抗弁」を展開し、シャープが権利侵害訴訟の提起によって市場支配的地位を濫用し、これがEU機能条約(TFEU)第102条に反していることから、差止命令の申立ては却下されるべきと主張した。特に、Huawei対ZTE事件 [956] でEU司法裁判所(CJEU)が示した行動要件(Huwaei決定又はフレームワーク)をシャープが遵守していなかった点について主張した。 裁判所は、ダイムラーによるFRAND宣言を理由とする抗弁を却下し、ダイムラーが自社サプライヤー由来のFRAND抗弁に依拠することはできないと認定した [957]

市場支配力の濫用

裁判所によれば、特許保有者が支配的地位に付帯する「特段の責任」を果たすための「十分な努力」を怠った上、原則として「ライセンスを取得する意向である」実施者との契約締結を推進した場合、SEPの行使による市場支配的地位の濫用が生じうる [958] 。ただし、この場合、権利保有者の許諾を得ることなく保護対象の技術を既に使用している実施者がFRAND条件でライセンスを取得する意向でなければならない [959] 。裁判所は、SEP保有者が規格実施者にライセンス取得の「強要」を求めることはできないと説明した [959]

上記を踏まえ、裁判所は、シャープが本件訴訟を提起したことはTFEU第102条に定められる濫用にあたらないと認めた [960] 。裁判所は、シャープが市場支配的地位を有していたか否かについては確証せず、本件においては有していたと想定するに留めた [960] 。それにもかかわらず、(想定された)支配的地位の濫用が認められなかったのは、ダイムラーがシャープのSEPポートフォリオにかかわるライセンスの取得することについて十分に明確な意欲を表明しなかったためである [961]
 

Willingness

裁判所は、「実際にいかなるFRAND条件であろうと」、実施者がSEP保有者とのライセンス契約を締結し、爾後、「目標志向」の方法でライセンス協議に従事する誠実意思を有する場合、これを「明確に」かつ「疑義のないよう」宣言しなければならないと説明した(引用判例、連邦司法裁判所、2020年5月5日判決、Sisvel対Haier、事件番号KZR 36/17、及び英国高等法院、2017年4月5日判決、事件番号[2017] EWHC 711(Pat) – Unwired Planet対Huawei) [959]

つまり、実施者は、ライセンス協議を遅延させてはならない [962] 。裁判所の見地からすると、特許で保護された標準化技術を協議前に既に利用している実施者はその特許が満了するまでライセンス契約の締結を遅延させる単独の利益又は優勢な利益を有しているため、遅延させてはならない点が特に重要である [962]

その上で、裁判所は、ダイムラーが「誠実意思を有する」実施者としてふるまっていなかったと認定した [961]

シャープへのカウンターオファー前のダイムラーの行動を見た上で、裁判所は、「明確な」誠実意思の宣言が欠落していたと判示した [963] 。2019年6月7日のシャープに対する最初の回答で、ダイムラーは、シャープの特許が使用されている場合でも、ライセンス協議に関する一般的な意思を超える確約をするとの表明を一切しなかった [964] 。さらに言えば、2019年7月23日付のダイムラーの書簡では、ダイムラーは、シャープに対して自社のサプライヤー(特定しないで)に差し向け、シャープがサプライヤーにライセンスを許諾する義務を負っていると主張しており、適切な誠実意思が宣言されていなかった [965] 。2019年9月18日の陳述書でも、ダイムラーは、自社のサプライヤーに委ねるとし、かつ、ライセンスオファーに必要な情報をシャープに提供することを拒絶していた [966] 。裁判所は、シャープから要請される情報を提供する法的義務はないが、ダイムラーがその提供を拒絶したことで、「目標志向」で協議に従事しなかっただけでなく、当該協議を遅延させることがねらいであったことが明らかになった点に着目した [967] 。これは、ダイムラーの回答がシャープの要請の都度およそ6週間後に行われていた事実からも確認されている。裁判所は、ダイムラーが回答に時間を要した理由を確認しなかった [967]

さらに、裁判所は、ダイムラーの「誠実意思を有しない」実施者としての行為は、Avanciプラットフォームとの協議でのダイムラーの全体的な態度からも明らかであると事実認定した [968] 。裁判所は、FRAND宣言を理由とする抗弁を申し立てる実施者の「誠実意思」を評価するにあたっては、時機的に、権利侵害通知受領後直接に発生した事実のみならず、全体的な行為を考慮に入れなければならないと判示した [969] 。誠実意思評価の基準は、特許保有者が先に実施者に接近したか、実施者が主導してライセンスを求めたかの「やや行き当たりばったりの」事実に依拠するものであってはならない [970] 。Huawei判決において示された義務(そのひとつが、ライセンス取得の「誠実意思」を表明することにより権利侵害通知に反応すること)は、原則としてCJEUの命令において「措置」として従うべきものであるが、両当事者の行動上例外が認められ、かつ、Huaweiフレームワークの純粋な「形式的」見解が適切でないと思われる場合には、ケースバイケースで例外を認めなければならない [971] 。裁判所によれば、ダイムラーが2016年9月以後Avanciと接触しており、いずれの時間的段階においてもライセンス取得の意向を表明していないことから、本件はその例外に該当した [972]

さらに裁判所は、2019年12月17日付のダイムラーによるカウンターオファーについて、権利侵害訴訟提起後になされたものに過ぎず、意向表明の欠如を是正することにならないと認定した [973] 。裁判所の見解によれば、本件において係属中の訴訟手続の停止についてシャープに同意が求め後カウンターオファーがなされた事実は、ダイムラーが専ら遅延を生じさせようとして行ったことを示しており、よって、当該カウンターオファーはその時点までにダイムラーが示していた「明らかな意向の欠如」を補うに値するものでなかった [974] 。この点に関し、裁判所は、審理が進むにつれ厳格さが増す要件が求められるが、係属中の訴訟手続中、(カウンターオファー等により)不備を是正する機会が原則として与えられていると述べた [975] 。 さらに裁判所は、ダイムラーのカウンターオファーが内容の点で、「実際にいかなるFRAND条件であろうと」ライセンスを取得する意向を表明するものでなかったと強調した [976] 。ロイヤルティ計算に異なる複数の「基準」を用いることで、ダイムラーは、シャープからオファーされたか、Avanciが競業者をとりまとめたオファーののごく一部のみについてカウンターオファーを行い、カウンターオファーの拒絶が「論理上必要」となるように仕向けていた [977]

この流れにおいて、裁判所は、意向の評価にはダイムラーの態度のみが関係すると明言した [978] 。さらに、ダイムラーは、差止命令を回避するために、訴訟に参加していたサプライヤーがシャープからライセンスを取得する意向を有していたとする「主張」には依拠することができなかった [979] 。よって、裁判所は、ダイムラーのサプライヤーが実際に「誠実意思を有するライセンシー」として行為していたかどうか調査しなかった [979]

非差別性/ライセンス許諾レベル

上記に加え、裁判所は、シャープがエンドデバイスメーカーであるダイムラーのみにライセンス取得を求めることにより、濫用的又は非差別的に行動していたのではなかったと説示した [980] 。 裁判所の見解では、シャープはダイムラーのサプライヤーにライセンスを許諾する義務を負っていなかった [981] 。(ドイツの)自動車業界においては自動車メーカーにコンポーネントを販売するサプライヤーが当該コンポーネントに関するライセンスを取得するのが一般的であるとはいえ、シャープがその慣行を尊重し、受け入れる義務を負うものではない [982] 。反対に、ダイムラーは、自社製品での無線通信技術の利用度が増す限り、その分野で一般的な、エンドデバイスメーカーへもライセンスを許諾するという慣行を受け入れなければならない [982]

上記にかかわらず、シャープは、コンポーネントメーカーにライセンスを許諾する法的義務を一切負っていない。シャープが負っているのは、自社のSEPがカバーする規格への「アクセス権」を付与する義務である [983] 。特許保有者がETSIに確約することにより、SEPのライセンスを第三者に許諾する義務が生じる [984] 41。しかしながら裁判所は、これにより、バリューチェーンのあらゆるレベルでライセンスを許諾する義務が必ずしも生じるわけではないことを強調した [985] 。そのような義務は、競争法又は特許法若しくはETSIのFRAND規約に対する契約法のいずれからも生じない [985] 。 特に、EU競争法では、バリューチェーンのあらゆるレベルでSEPのライセンスを許諾する義務を定めていない [986] 。裁判所によれば、特許保有者は原則として、バリューチェーンのどのレベルをライセンス許諾の対象とするか、自由裁量により選択することができる [987] 。Huawei判決において、CJEUは、FRAND引受けにより、特許保有者からライセンスを許諾される第三者の側に「正当な期待」が生じると指摘した。しかしながら裁判所は、これにより、エンドデバイスメーカーの全サプライヤーにライセンスを許諾する義務が生じるものではないと判示した。市場へのアクセスに必要とされるのは、必ずしもライセンスではなく、「法的に使用できること」である。これは例えばバリューチェーンの最終レベルで付与されるライセンス等を通じて与えられ、サプライヤーはこれに基づき「have-made-rights製造委託権」下で製造することができる [987]

また裁判所は、特許法においても、バリューチェーンの中でSEPライセンスが付与されるべきレベルは定められていないと説明した同判決、paras. 173節以下。。とりわけ、SEPポートフォリオに含まれる特許のすべてが常にコンポーネントメーカーのレベルで消尽するわけではないという事実が、(この場合に見込まれるライセンス料のより効率的な「管理」に加え)エンドデバイスレベルでのライセンス許諾の正当性を示している [989]

最後に、裁判所は、ETSIのFRAND規定は、契約法によって利害関係者たるすべての第三者にライセンスを許諾する義務が特許保有者に課すものではない旨を指摘した [990] 。適用されるフランス法に基づき、ETSI IPRポリシー第6.1条は、ライセンスを求める当事者との間でFRAND契約について協議する義務のみが課されると理解される [991] 。ただし、「装置」に言及した場合、本規定は、すべてのコンポーネントが必ずしも規格全体を実装するわけではないことから、エンドデバイスメーカーにのみ対応することとなる [992] 。裁判所の見地において、以前別の事例において欧州委員会が示した見解に拠っても、別の結論が導き出されることはない同判決、第180~183節。裁判所は、とりわけ、欧州委員会の決定(事件番号AT.39985 – Motorola)、水平的協力協定へのTFEU第101条の適用に関するガイドラインの通達(2011/C 11/01)、及びデジタル単一市場へのICT標準化優先性の通達(COM(2016) 176確定版)に言及した。

サプライヤーのFRAND宣言を理由とする抗弁

さらに裁判所は、サプライヤーによりなされたFRAND宣言を理由とする抗弁をダイムラーが利用することはできないと認めた [994] 。被告がそのような抗弁に依拠できるのは、特許保有者がサプライヤーにライセンスを許諾する義務を負っている場合に限られる。ただし、被告自らが、関連するバリューチェーンでの特許消尽を十分に考慮しSEP保有者との間でライセンス契約を締結する立場にある場合、上記の定めは適用されない [994]

裁判所は、本件がこれにあたるとみなした。ダイムラーのサプライヤーは、シャープに対しライセンスの許諾を請求する権利を有しておらず、標準化技術に対し「法的に保護されたアクセス権」を請求する権利を有していた。これをダイムラーに有利になるよう考慮することはできない [995]
 

C. その他の問題

さらに、裁判所は、比例性の原則(proportionality considerations)に基づくシャープの差止命令請求を制限する根拠はないと裁定した [996] 。ダイムラーは、自社製造の自動車が多数のコンポーネントを組み込んだ「複雑」な製品であり、シャープのSEPに関係するテレマティクス制御ユニットは当該自動車にとって重要性が低いとして、係争中の特許に基づき差止命令が下されるべきでないと論じた。

裁判所は、比例性がドイツ法において、原告から異議が申し立てられる都度検討される、憲法と同等の順位を有する一般原則であり、差止命令による救済手段に関しても考慮される旨を明言した [997] 。連邦裁判所の判例によれば、差止命令は、例外的に、信義則に反する特許保有者の正当化できない排他権で、実施者が不都合を被るおそれがあると即時に執行されない場合があり、 [998] 。 裁判所の見地から、差止命令による救済を求める権利の制限が問題になるのは「ごくわずかな例外的な事例」であることから、その制限に際しては、厳格な条件を定め、特に「法秩序」のみならず「法的な確実性及び予測可能性」を保護しなければならない [999] 。関係事実すべてをケースバイケースで評価する必要がある一方で、実体的及び手続上の包括的なフレームワーク(最初の差止命令の執行を求める場合の供託金差出しの必要性を含む)についても検討する必要がある [999]

裁判所は、差止命令により通常もたらされる結果を超える不都合のみが考慮の対象となりうることを説明した [999] 。権利侵害者には、可能な限り早急にライセンス契約を締結するよう努力し、かつ、遅くとも権利侵害通知受領後、見込まれる差止命令に対する予防措置を講じることが求められる [999]

この背景を鑑み、裁判所は、本件において、対象となるのがダイムラーの自動車に含まれる単一のコンポーネントのみであったとしても、複雑な特許ポートフォリオ(シャープのポートフォリオか、Avanciのポートフォリオかを問わない)に基づくライセンス許諾を巡り紛争が展開されると述べた [1000] 。「コネクテッドカー」を参照する技術革新の重大部分は技術的・経済的双方の観点においてモバイル通信技術と密接に関連していることから、シャープの特許により実装された機能がダイムラーの車両にとってさほど重要でないとの反論は、裁判所を説得する材料とならなかった [1001] 。最後に裁判所は、ダイムラーがシャープ又はAvanciのいずれともライセンス契約を締結すべく真摯な努力を尽くさなかったとして批判した [1002]

  • [952] シャープ対ダイムラー、ミュンヘン地方裁判所、2020年9月10日判決、事件番号7O8818/19(https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2020-N-22577?hl=trueから引用)
  • [953] 同判決、第68節以下。
  • [954] 同判決、第 25節以下。
  • [955] 同判決、第90節。
  • [956] Huawei対ZTE、EU司法裁判所、2015年7月16日判決、事件番号C-170/13
  • [957] シャープ対ダイムラー、ミュンヘン地方裁判所、2020年9月10日判決、事件番号7O8818/19第121節。
  • [958] 同判決、第124節。
  • [959] 同判決、第125節。
  • [960] 同判決、第128節。
  • [961] 同判決、第130節以下。
  • [962] 同判決、第126節。
  • [963] 同判決、第132節以下。
  • [964] 同判決、第134節以下。
  • [965] 同判決、第136節以下。
  • [966] 同判決、第138節以下。
  • [967] 同判決、第140節。
  • [968] 同判決、第141節。
  • [969] 同判決、第142節以下。
  • [970] 同判決、第143節以下。
  • [971] 同判決、第144節。
  • [972] 同判決、第146~149節。
  • [973] 同判決、第150節。
  • [974] 同判決、第151及び153節。
  • [975] 同判決、第152節。
  • [976] 同判決、第154節。
  • [977] 同判決、第154節以下。
  • [978] 同判決、第158節及び159節。
  • [979] 同判決、第158節。
  • [980] 同判決、第161節以下。
  • [981] 同判決、第162節。
  • [982] 同判決、第164節。
  • [983] 同判決、第165節。
  • [984] 同判決、第168節。
  • [985] 同判決、第169節。
  • [986] 同判決、第170節以下。
  • [987] 同判決、第171節。
  • [988] 同判決、paras. 173節以下。
  • [989] 同判決、第174節。
  • [990] 同判決、第175節以下。
  • [991] 同判決、第177節以下。
  • [992] 同判決、第178節。
  • [993] 同判決、第180~183節。裁判所は、とりわけ、欧州委員会の決定(事件番号AT.39985 – Motorola)、水平的協力協定へのTFEU第101条の適用に関するガイドラインの通達(2011/C 11/01)、及びデジタル単一市場へのICT標準化優先性の通達(COM(2016) 176確定版)に言及した。
  • [994] 同判決、第167節。
  • [995] 同判決、第185節。
  • [996] 同判決、第92~102節。
  • [997] 同判決、第93節。
  • [998] 同判決、第94節。
  • [999] 同判決、第95節。
  • [1000] 同判決、第97節以下。
  • [1001] 同判決、第100節以下。
  • [1002] 同判決、第99節。


InterDigital v Xiaomi, District Court (Landgericht) Munich I

25 2月 2021 - Case No. 7 O 14276/20

A. Facts

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

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

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

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

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

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

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

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

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

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

With the present judgment dated 25 February 2021, the Munich District Court dismissed Xiaomi’s appeal on the merits and confirmed the Munich AASI. [1003] (cited by www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-3995?hl=true)
 

B. Court’s reasoning

The Munich District Court held that InterDigital had a claim for preliminary injunction and that sufficient grounds for issuing an AASI were given. [1004]
 

Claim for preliminary injunction

The Court explained that the filing, prosecution and enforcement of an ASI in China with the goal to prevent the assertion of claims for injunctive relief against patent infringement in Germany impairs the ‘property-like legal position’ of the patent holder and constitutes a tortious act (in terms of Section 823 para. 1 of the German Civil Code). [1005] The same is true with respect to court orders, which restrain a party from initiating AASI-proceedings in Germany (so-called ‘anti-anti-anti-suit injunctions’, or AAASI). [1005]

In the eyes of the Munich District Court, the Wuhan ASI had the aforementioned effect. According to its wording and reasoning, the Wuhan ASI attempted to have a global reach and would also have impacted those InterDigital Group entities holding German SEPs that were involved in the present proceedings. [1006] The fact that these companies did not directly face fines or other sanctions imposed by the Wuhan Court, did not change the fact that the Wuhan ASI tried to impair their legal position: These measures threatened other affiliated companies within InterDigital Group and, thus, created a coercive situation in an attempt to limit the freedom of the companies that actually hold German SEPs to act for their protection of their rights. [1006]

In addition, the Court expressed the view that InterDigital was in a position to invoke the right for self-defence against the Wuhan ASI. [1005] Section 227 of the German Civil Code provides that any action, which is necessary for averting a present illicit attack, is not unlawful.

 

Grounds for preliminary injunction

Furthermore, the Munich District Court found that there was sufficient justification for ordering interim measures. [1007]

First, it could not be requested from InterDigital to defend itself against the Wuhan ASI in regular (main) court proceedings. [1008] Given that injunctions are available only for the limited lifetime of a patent, regular proceedings against an ASI would not sufficiently protect patent holders’ rights; the latter would be, effectively, deprived of the right to injunctive relief for a considerable period of time, at least until the enforcement of the first instance decision of the German court. [1009] This limitation would occur irrespective of the fact that a foreign ASI violates public order (ordre public) and, thus, does not have any legal effect in Germany. [1008] The Court repeated that sanctions imposed or threatened in foreign jurisdictions can place the patent holder under pressure and stand in the way of effective patent enforcement in Germany. [1008] This applies equally, when a foreign court has granted an AAASI, preventing a party to seek for protective measures in the form of a AASI in Germany, as was the case with the order of the Wuhan Court. [1010]

Second, the Munich District Court held that the urgency required for interim measures was given. [1011] Inter-digital had filed the request for an AASI in a timely fashion. [1012] As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month of knowledge of the act. [1013] The Munich District Court suggested that this deadline, basically, also applies to AASIs (refraining, however, from a final assessment of this question). [1014]

In case that an AASI is directed against an ASI already granted by a foreign court (risk of repetition), the respective request should be filed within a month after the patent holder obtained ‘secure knowledge’ of the foreign court order, irrespective of whether formal service took place or not. [1015] For assuming ‘secure knowledge’, it can be required that the patent holder gets access to the ASI request as well as the evidence used in the foreign proceedings, especially when the court order itself does not contain clear information about the parties, the content and the legal grounds of the order. [1016]

If a request for an AASI is filed before a foreign ASI has been issued, that is when only a ‘risk of first infringement’ of a violation of SEP holder’s ‘property-like’ rights exists, the one-month deadline begins at the moment in time, in which the patent holder gains ‘secure knowledge’ of the filing of an ASI request before the foreign court or of the existing risk of such measures, which is especially materialized, when the implementer threatens with respective action. [1017] In this context, the Court clarified that filing early countermeasures before a grant of an ASI is only an option; patent holders are, basically, free to wait for the outcome of foreign ASI proceedings, before filing a request for an AASI. [1017]

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

  • The implementer has threatened to file a request for an ASI;
  • The implementer has filed a request for an ASI;
  • The implementer has filed a (regular) action for the grant of a licence or the determination of reason-able global licensing rates in a jurisdiction, in which ASIs can, in principle, be granted;
  • The implementer has already threatened an ASI or filed a respective request against other patent holders and the party filing an AASI in Germany has no indication that the implementer will refrain from such actions against it in the future;
  • The implementer failed to declare in text form within a short deadline set by the patent holder (e.g. with the first notification of infringement) that it will not file a request for an ASI. [1018]
ASI and implementer’s willingness to obtain a licence

The Munich District Court further made clear that an implementer who threatens an ASI or files a respective request, can, as a rule, not be treated as a ‘willing licensee’ within the meaning of the Huawei v ZTE ruling (Huawei v ZTE) [1019] of the Court of Justice of the EU (CJEU) and the recent case-law of the German Federal Court of Justice (Bundesgerichtshof) in the Sisvel v Haier [1020] cases. [1021] According to the Court, an implementer truly willing to obtain a FRAND-licence would regularly refrain from actions impairing SEP holder’s ‘property-like’ rights even further than the past and ongoing acts of patent infringement (such as the filing of a request for an ASI). [1022]

Looking particularly at the negotiation framework established in Huawei v ZTE, the Munich District Court noted that balanced negotiations on an equal footing -as envisioned by the CJEU- can only be ensured if the parties have equal access to legal remedies: The implementer’s ability to attack patent validity should be counterbalanced by the patent holder’s ability to assert its patent rights before court. [1023] This is no longer the case when the judicial assertion of claims against patent infringement is precluded based on an ASI. [1023] In this context, the Court noted that an ASI directly violates the SEP holders’ right to have access to courts which is established in both European law (Article 47 para. 1 of the EU Charter of Fundamental Rights) and German constitutional law. [1023]

Furthermore, the Munich District Court expressed the view that an implementer who has been notified about the infringement of SEPs can be required not only to adequately demonstrate willingness to obtain a FRAND-licence, but also to declare that it will not file a request for an ASI against the patent holder. [1022] The Court explained that, otherwise, the negotiation process set forth by Huawei v ZTE could not be followed. [1024] In particular, the SEP holder could no longer be obliged to notify the implementer about the infringement before filing a court action. [1024] By making a notification of infringement, the patent holder exposes itself to an ASI. If an ASI is granted, then the patent holder will in many cases be de facto prevented from exercising its right to injunctive relief even towards implementers unwilling to take a licence. [1025] According to the Court, this result conflicts with the so-called EU IPR Enforcement-Directive (Articles 9-11) [1026] as well as the case law of the CJEU. [1027]

The Court also added that SEP holders cannot be expected to pre-emptively prepare countermeasures against potential future ASIs [1022] . Even when SEP holders seek global portfolio licences, preparing the filing of AASIs in many different jurisdictions would lead to disproportionate high costs at a point in time, in which neither the risk nor the impact of an ASI could be reliably assessed. [1022]
 

Balance of interests

After weighing the interests of the parties against each other, the Munich District Court held that an AASI was justified. [1028]

On the one hand, the Court recognized that InterDigital had an interest to be granted the requested AASI. Although the Wuhan ASI violated public order and could not be enforced in Germany, InterDigital had an interest to limit the reach of the Chinese order as far as German SEPs are concerned; otherwise, the threat of sanctions that could be imposed in China would de facto prevent InterDigital from enforcing its patent rights in Germany for an unforeseeable period of time. [1029]

On the other hand, the Court highlighted that a German AASI would not impair the rights of Xiaomi. [1030] The AASI would only oblige Xiaomi to withdraw the Wuhan ASI and, therefore, have no impact on the Chinese main proceedings. [1030] The Chinese main proceedings would also not be impaired, in case that InterDigital filed infringement proceedings against Xiaomi in Germany, following the grant of an AASI. The Munich District Court expects that German infringement proceedings would not revolve around the same question raised in the Chinese proceedings, that is the determination of the global rate for InterDigital’s SEP portfolio. [1030] On the contrary, German infringement courts would probably not examine the amount of an adequate global licensing rate, because it is very unlikely that they would examine a FRAND defence raised by Xiaomi on the merits. [1030] The Court reasoned that the very act of requesting an ASI, or threatening to do so, is evidence that the implementer is an unwilling licensee, such that a FRAND defence raised by Xiaomi in German infringement proceedings would hardly have any prospects of success. [1030]

In addition, the Court took the view that Xiaomi’s interest to avoid infringement trials in Germany during the pendency of the Chinese main proceedings was not worthy of protection. [1031] Xiaomi did neither constantly monitor the IPR landscape, as it is obliged to, nor obtain necessary licences before starting production. [1031] What is more, Xiaomi refused to do so for more than seven years, such that InterDigital can no longer be expected to further wait to assert its rights. [1031]

 

C. Other issues

The Munich District Court also confirmed that InterDigital had a legitimate interest in legal remedies. [1032] Under German law, this is a prerequisite for any court action and is, basically, given, when the claims asserted by the claimant have not been fulfilled by the defendant yet. [1033] The fact that InterDigital could defend itself against the ASI also in so-called ‘reconsideration proceedings’ before Chinese courts did not remove InterDigital’s legitimate interest that its case is heard by German courts. [1034] The Court held that such proceedings could not sufficiently protect InterDigital’s ‘property-like’ rights in Germany, especially since a reliable assessment of the prospects of success of such legal remedy is very challenging. [1034]

Furthermore, the Court confirmed that the pendency of the Chinese and Indian proceedings did not prevent German courts from hearing the case in question (no lis pendens). [1035]

Finally, the Court also found that the Munich AASI had been served to Xiaomi within the relevant deadline, which under German law is a prerequisite for such orders to remain in force. [1036]

  • [1003] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20.
  • [1004] Ibid, para. 75.
  • [1005] Ibid, para. 120.
  • [1006] Ibid, para. 121.
  • [1007] Ibid, para. 129.
  • [1008] Ibid, para. 130.
  • [1009] Ibid, para. 130. The Munich District Court highlighted that the right to injunctive relief is the ‘essential feature’ of exclusionary rights, such as patent rights, and the ‘sharpest weapon’ against infringement. Patents would be ‘worthless’, if the patent holder would be denied the possibility to enforce its rights by way of court proceedings.
  • [1010] Ibid, para. 131.
  • [1011] Ibid, para. 132.
  • [1012] Ibid, para. 132 as well as paras. 151 et seqq.
  • [1013] Ibid, para. 133.
  • [1014] Ibid, paras. 134-135.
  • [1015] Ibid, para. 134.
  • [1016] Ibid. para. 136.
  • [1017] Ibid, para. 138.
  • [1018] Ibid, para. 142.
  • [1019] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [1020] Sisvel v Haier I, Bundesgerichtshof, judgment dated 5 May 2020, Case No. KZR 36/17 and Sisvel v Haier II, Bundesgerichtshof, judgment dated 24 November 2020, Case No. KZR 35/17.
  • [1021] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 146.
  • [1022] Ibid, para. 146.
  • [1023] Ibid. para. 148.
  • [1024] Ibid, para. 147.
  • [1025] Ibid, para. 149.
  • [1026] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).
  • [1027] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 149.
  • [1028] Ibid, para. 168.
  • [1029] Ibid, para. 169.
  • [1030] Ibid, para. 170.
  • [1031] Ibid, para. 173.
  • [1032] Ibid, para. 75.
  • [1033] Ibid, para. 107.
  • [1034] Ibid, para. 108.
  • [1035] Ibid, paras. 75 and 109.
  • [1036] Ibid, para. 75 and paras. 80-106.


Conversant v Daimler, District Court (Landgericht) of Munich I

30 10月 2020 - Case No. 21 O 11384/19

A. Facts

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

The defendant, Daimler, is a global car company with headquarters in Germany. Daimler manufactures and sells vehicles with connectivity features complying with the LTE standard developed by ETSI.

In October 2018, Conversant joined the Avanci licensing platform, which offers a patent licensing program tailored to connected cars. On 18 December 2018, Conversant made an offer for a bilateral worldwide licence to Daimler and provided information about its SEP portfolio including claim charts concerning several individual patents to the latter.

On 27 February 2019, following a respective reminder sent by Conversant, Daimler replied that it was willing to sign a FRAND licence, highlighted, however, that in the automotive sector it is common that intellectual property rights (IPRs) are licensed to suppliers. Daimler also requested information about existing licensees to Conversant's portfolio as well as an explanation which patents read on which components and why the terms offered were FRAND. Subsequently, Daimler started negotiations for a pool licence with Avanci.

On 5 July 2019, Conversant sent an e-mail to Daimler suggesting a meeting in person on 15 July 2019, since it had been informed by Avanci that the negotiations with Daimler had not been successful. Conversant also pointed out that the car makers participating in the Avanci-programme are licensed under its SEP portfolio and explained the royalty calculation underlying its own bilateral offer -inter alia- by reference to court cases (especially Unwired Planet v Huawei, UK High Court of Justice, judgment dated 5 April 2017). Conversant also intended to provide a full list of patents included in its portfolio to Daimler, the respective document was, however, not attached by mistake to the e-mail sent to Daimler.

On 29 July 2019, Daimler responded and referred to the ongoing negotiations with Avanci. It repeated the view that licensing at supplier level was more efficient and countered that a meeting in person should take place at a later point in time, since Conversant had not shared all necessary information yet.

On 13 August 2019, Conversant filed an infringement action against Daimler before the District Court of Munich I (Court), which did not include a claim for injunctive relief. On 24 August 2019, Conversant informed Daimler about the case filed in Munich and noted that it assumed that Daimler had no actual interest in obtaining a FRAND licence. Conversant also highlighted that for the calculation of royalties the value generated at end-device level should be taken into account.

On 18 September 2019, Daimler reiterated its willingness to obtain a licence and pointed out for the first time that Conversant's e-mail dated 5 July 2019 had not contained the full list of portfolio patents referred to by Conversant. This list was shared with Daimler on 20 September 2019. At the same time, Conversant suggested a meeting in person in the beginning of October 2019. On 8 October 2019, Daimler responded that a meeting could take place only in the end of October, since information needed was still missing.

On 4 December 2019, the parties met in person in Daimler's headquarters. On 15 January 2020, Conversant sent the presentation held in this meeting to Daimler and pointed out that it was willing to establish a licensing programme for Daimler's tier-1 suppliers and that it was prepared to have a meeting with Daimler and all supplier to that end. Conversant had also offered to take recourse to a neutral third party, e.g. in arbitration proceedings, for the determination of the licensing value. On 24 January 2020, Daimler explained that it had already discussed with its suppliers and was willing to organise a meeting.

On 29 January 2020, Conversant additionally raised claims for injunctive relief and the recall and destruction of infringing products against Daimler in the pending proceedings in Munich.

In February and March 2020, the parties discussed about a meeting with Daimler's tier-1 suppliers. Daimler did, however, not organise a meeting with the participation of all suppliers.

On 8 April 2020, Daimler made a counteroffer to Conversant. The counteroffer was based on the value of the Telematic Control Unit (TCU), which is the component enabling LTE-connectivity in cars.

On 30 June 2020, Conversant made a further offer to Daimler that was not accepted. On 10 August 2020, Daimler provided information to Conversant about past vehicle sales and placed security for past uses.

With the present judgment [1037] , the Court found in favour of Conversant and – among other things – granted an injunction against Daimler.
 

B. Court's reasoning

The Court found that the patent in suit is essential to the LTE standard and infringed [1038] . Consequently, the claims asserted by Conversant were given. The claims for injunctive relief as well as the recall and destruction of infringing products were also to be granted. By initiating infringement proceedings against Daimler, Conversant neither abused a dominant market position in terms of Article 102 TFEU (competition law defence, cf. item 1), nor violated its contractual obligations under ETSI's IPR Policy (contract law defence, cf. item 2.) [1039] .
 

1. Competition law defence
Dominant market position

The Court held that Conversant had a dominant market position within the meaning of Article 102 TFEU [1040] .

The exclusivity rights arising from a patent do not establish a dominant market position by themselves. [1041] A market dominant position is established, when the patent is technically essential for complying with a standard developed by a standardisation body (or a de facto standard) and technical alternatives are not available for products brought on a (downstream) market [1042] . In the Court's eyes, this applied to the patent in suit. [1043]

Exceptional circumstances that could exclude Conversant's market dominant position here were not present. According to the Court, the sole fact that Conversant had made a FRAND commitment towards ETSI establishing an obligation to grant FRAND licences did not per se exclude market dominance; decisive is, moreover, whether the SEP holder actually meets this obligation. [1044] Furthermore, the additional option to get a license from the patent in suit from Avanci did not limit Conversant's market dominant position. [1045]
 

No abuse of market dominance

The Court found, however, that Conversant had not abused its dominance by filing an action for injunctive relief as well as the recall and destruction of infringing products against Daimler.

In cases, in which the implementer already uses protected standardised technology, the assessment of the SEP holder's behaviour requires a comprehensive analysis, in which the constitutionally guaranteed strong protection of IPRs, on the one hand, and the interest of users to access the standard, on the other hand, must be balanced against one another. [1046] In this context, not only private interests, but also the public interest must be taken into account. [1047] The Court highlighted that the public interest is not to be seen as just the 'sole sum of private interests in using standardised technology', but equally includes the substantial interest of the public to protect the integrity of IPRs and secure effective enforcement. [1048]

Considering the 'particular nature' of SEPs especially in the telecommunications field, the Court held -in line with the Huawei v ZTE judgment (Huawei judgment) of the Court of Justice of the EU (CJEU) [1049] - that it is justified to impose certain conduct obligations on SEP holders. Reason for this is, basically, that -unlike 'regular' patents- SEPs are established in the market through their inclusion in the standard, without further action by the patent holder. [1050] Consequently, the need to secure a competitive advantage for the inventor of a patented technology in the market by granting exclusivity rights for a certain period of time is less compelling in relation to SEPs compared to non-standard-essential patents. [1051]

Having said that, the Court made, however, clear that the conduct duties imposed on the SEP holder by the Huawei judgement exist only towards an implementer, who 'seriously and not only in words' wants to sign a licence. [1052] Accordingly, a defence based on an alleged abuse of market dominance can be successful, only when the implementer that wants to use, or already uses the patent without authorisation is willing to obtain a FRAND licence and refrain from delaying tactics throughout the licensing negotiations with the SEP holder. [1053] The Court noted that the key notion underlying the Huawei judgment that parties are best situated to determine FRAND in fair, balanced and swift negotiations relies on a constructive involvement of both parties which is driven by the actual 'sincere motivation' to reach an agreement. [1054]
 

Notification of infringement

Looking at the parties' behaviour, the Court held that Conversant fulfilled the duty to notify Daimler about the infringement of its SEPs by sending the letter dated 18 December 2018, which contained sufficient information about its portfolio, including claim charts covering several patents. [1055] Whether Conversant had sufficiently explained the royalty calculation underlying the licensing offer that was also attached to this letter, was not relevant, since, at this stage, Conversant had not even been obliged to make an offer to Daimler. [1056]
 

Willingness

On the other hand, the Court found that Daimler had not been willing to take a licence from Conversant: On the contrary, the Court identified a 'particularly clear case of missing willingness'. [1057]

In terms of content, the implementer must 'clearly' and 'unambiguously' declare willingness to conclude a licence agreement with the SEP holder on 'whatever terms are in fact FRAND' and, subsequently, engage in negotiations in a 'target-oriented' and 'constructive' manner. [1058] By contrast, it is not sufficient, in response to the (first) 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. [1058]

The Court explained that the assessment of willingness requires a comprehensive analysis of all facts until the end of the oral hearings in the infringement proceedings. [1059] Establishing whether willingness is given cannot be a question answered by a 'formalistic snapshot' of the implementer's conduct; what is more, the implementer cannot remain inactive until -in its view- the SEP holder has met its obligations first. [1059]

In addition, the Court highlighted that timing in negotiations is a factor, which must be considered in the assessment of willingness as well. [1060] Otherwise, implementers would lack motivation to seriously engage in negotiations in a timely manner. [1061] Rigid deadlines cannot be set, a case-by-case assessment is needed. [1062] An implementer, who has been notified about the infringement, is, however, obliged to legitimize the -unlawful- use of the patent(s) as soon as possible by signing a FRAND-licence with the SEP holder. [1062]

Furthermore, the Court reasoned that whether and at which time the implementer made a counteroffer to the SEP holder can also be an 'important indicator' of (un-)willingness. [1063] A counteroffer made after the initiation of infringement proceedings will, as a rule, not be acceptable. [1064] According to the Court, implementers should not be allowed to engage in negotiations only 'for appearance's shake' and then pull the 'emergency brake' against a potential conviction in infringement proceedings by making a counteroffer. [1061] Exceptionally, a counteroffer made during trial could be considered in the assessment of willingness in cases, in which the implementer was willing from the start of the negotiations and always engaged constructively in the discussions with the patent holder. [1065]

In line with the above, the Court pointed out that, in general terms, delaying tactics initially applied by an implementer cannot be 'undone' at a later point in time without more ado. [1066] Nevertheless, the belated declaration of willingness does not 'automatically' prevent an implementer from raising a 'FRAND-defence' in infringement proceeding: Whether this will be the case or not, shall be decided on a case-by-case basis on grounds of the overall circumstances of the negotiation history. [1067]

Against this backdrop and under consideration of Daimler's overall behaviour, the Court reached the conclusion that -although acting in a FRAND-compliant manner would have actually been possible and reasonable [1068] - Daimler had chosen to apply delaying tactics [1069] .

The Court found that by directing Conversant to its suppliers, Daimler had not expressed willingness to take a licence on 'whatever terms are in fact FRAND', but rather made clear that it was not prepared to take a licence from Conversant itself. [1070] Indemnification clauses regarding third-party IPRs potentially agreed between Daimler and its suppliers played insofar no role, as Daimler infringed Conversant's patents independently and must, therefore, be held accountable for that. [1070]

A further indication of Daimler's unwillingness was the fact that it took Daimler more than two months to inform Conversant that it had not received a list of portfolio patents that was unintentionally not attached to the e-mail sent by Conversant on 5 July 2020. [1071] The Court equally criticized the fact that Daimler had at no point in time posed questions to Conversant on the claim charts provided by the later, but raised concerns against the quality of the patents only in the pending infringement trial. [1072]

The Court saw an additional 'substantial' indication of unwillingness in Daimler's response dated 27 July 2020, in which the latter had expressly limited its willingness to sign a licence to products, which were either not licenced yet or purchased by suppliers unwilling to take a licence from Conversant themselves. [1073] The Court particularly objected Daimler's choice to define the 'unwillingness' of its suppliers as a condition for signing an own licence with Conversant. [1074]

The fact that Daimler had not responded to the proposal to use alternative dispute resolution methods and particularly arbitration for the determination of FRAND-royalties, which Conversant had made at the parties' meeting on 4 December 2019, was also considered as a sign of unwillingness on the side of Daimler. [1075]

An additional 'clear' indication of unwillingness and delaying tactics was -according to the Court- the fact that, following the discussion of 4 December 2019, Daimler did not organise a meeting with all tier-1 suppliers, in order to discuss a potential direct licensing option with Conversant, despite having implied that this option had already been discussed with its suppliers. [1076]
 

Counteroffer

Subsequently, the Court noted that Daimler's counteroffer dated 8 April 2020 could not remedy the missing willingness which Daimler had displayed until then. [1077] Moreover, it rather served as an 'alibi'. [1068]

In the eyes of the Court, the counteroffer was belated, since it was made more than 1 year and 4 months after Conversant's offer. [1077] What is more, Daimler made the counteroffer during the pendency of the infringement proceedings, which was not acceptable, given that until that point it had been clearly unwilling to take a licence. [1078] The Court also explained that Daimler could not excuse the delay by claiming that Conversant had not provided necessary information, since the counteroffer was based on generally known and available data without an underlying detailed analysis; accordingly, it could have been made earlier, that is shortly after receipt of Conversant's initial offer. [1079]

Besides that, the Court found that Daimler's counteroffer was, in terms of content, 'evidently not FRAND'. [1080] Based on a summary analysis, the licensing fees offered by Daimler were considered to be evidently too low. [1081]

The Court noted that FRAND is a range and that there are several methods for calculating FRAND royalties. [1081] The Court relied on the so-called 'top-down'-approach (which both Conversant and Daimler had used). [1082] Looking at Daimler's 'top-down'-calculation, the Court held that taking the number of all patents declared as standard-essential towards ETSI as the basis for determining Conversant's share of LTE-related SEPs was not in line with FRAND-principles. [1083] Considering that not all declared patents are actually standard-essential (a phenomenon described as 'over-declaration'), the use of the total number of declared patents benefits Daimler: Conversant's share of SEPs would per se be higher, if the (lower) number of actually standard-essential LTE patents would be used as basis for the calculation. [1083]

In addition, the Court pointed out that the average purchase price of the TCU is no adequate royalty base under FRAND principles. [1084] The value of a SEP is reflected by a royalty, which is adequately in proportion to the value of the service provided. [1085] According to the Court, in the present case, economic value is created by the offering of LTE-enabled functionalities in Daimler's cars and the use of such functionalities by Daimler's customers. [1085] As a consequence, relevant is the value, which Daimler's customers attach to the LTE-based features in a car. [1085] The purchase price of TCUs paid by Daimler to its suppliers does not mirror this value. [1085]
 

FRAND defence raised by suppliers / licensing level

The Court further explained that Daimler could not invoke the (alleged) willingness of its suppliers to take a licence from Conversant for establishing a FRAND defence. [1086]

If an implementer, along with its own declaration of willingness, expresses the wish that licensing takes place at supplier level, it is obliged to comprehensively disclose in writing, which standard-compliant components are integrated in its products and which suppliers provide such components. [1087] If this information and disclosure duty is not met, as it was the case here, a request for licensing at supplier level contradicts the implementer's declaration that it is willing to sign an own licence with the SEP holder, and is, therefore, a sign of bad faith (Sec. 242 German Civil Code). [1088] In this context, the Court made clear that the implementer is obliged to still pursue bilateral negotiations with the SEP holder in a timely and target-oriented manner, even if -after having provided the aforementioned information to the latter- it is in parallel actively engaged towards facilitating the establishment of a licensing regime at supplier level. [1089] In the bilateral negotiations with the SEP holder, the implementer could, however, insist that a clause excluding double payments for components already licensed to suppliers is included in the agreement. [1089]

In line with the above, the Court confirmed that by seeking to license Daimler, Conversant did not act in an abusive or discriminatory way. [1090]

In the view of the Court, the fundamental question whether the so-called 'license-to-all' or 'access-to-all' approach should be followed with respect to SEP licensing in a supply chain, did not need to be answered here. [1091] In legal disputes between a SEP holder and an end-device manufacturer it is sufficient from a competition law angle that the objectives pursued by the SEP holder in the proceedings do not exclude suppliers from the market; this is true, when suppliers are granted access to the standardised technology through 'have-made' rights established by the licence signed by the end-device manufacturer, as Conversant had offered. [1091] Whether suppliers have individual claims for being granted a licence is a distinct question, that could be potentially raised in separate proceedings between the SEP holder and the supplier. [1092]

The Court added that the SEP holder is free to decide against which infringer within a supply chain court proceedings will be initiated. [1093] The respective right of choice is derived from the constitutionally guaranteed protection of property as well as the very nature of patents as exclusionary rights. [1094]

According to the Court, the common practice in the automotive field that components are sold to car manufacturers free of third-party rights does not render Conversant's pursuit to license Daimler abusive in antitrust terms. [1095] Respective agreements between end-device manufacturers and suppliers have only bilateral (contractual) effects and cannot impair the legal position of third parties. [1095] In particular, they cannot limit the SEP holder's right to choose the level of the value chain for the assertion of its patents. [1096] The Court noted that the need to abandon existing practices in the automotive sector is of no importance from an antitrust angle, given that the integration of additional technologies serves Daimler's economic interest to access new markets and customer groups. [1096]

In this context, the Court also explained that the SEP holder is not obliged to perform duties under the Huawei judgment towards suppliers, as far as infringement proceedings are initiated only towards the end-device manufacturer. [1097] Accordingly, a supplier joining such proceedings cannot invoke that the SEP holder abused its market dominance e.g. by omitting a separate notification of infringement addressed to the supplier. [1098] The Court denied such comprehensive notification duty of SEP holders, since in multi-level supply chains it is neither feasible nor reasonable to identify all suppliers involved. [1099]

In the Court's view, the question whether the SEP holder has abused its market dominance by denying a direct licence to a supplier is subject to general competition law principles. [1100] In the present case, the Court did not see sufficient grounds for such abuse. [1100] It was not convinced that -absent an own bilateral licence- suppliers are left without rights or face legal uncertainty. [1101] The fact that an individual bilateral licence would give suppliers broader freedom to operate than 'have-made' rights might serve their commercial interests, is, however, not of relevance with respect to proceedings between SEP holders and end-device manufacturers, as long as adequate access to the standard is provided to suppliers through 'have-made' rights. [1102] Insofar, the Court noted that co-operation within a supply chain on basis of 'have-made' rights is wide-spread and common in practice and also supported by EU law (Commission notice of 18 December 1978 concerning its assessment of certain subcontracting agreements in relation to Article 85 (1) of the EEC Treaty, OJ C 1, 3 January 1979). [1102]

Finally, the Court dismissed the argument, that Conversant had allegedly colluded with other members of the Avanci platform to specifically discriminate implementers by excluding access to the relevant standards. [1103] The Court saw no indication that this was the case here, but rather highlighted the pro-competitive effects which patent pools are generally recognised to have, not least by EU law (para. 245 of the Guidelines on the application of Article 101 TFEU to technology transfer agreements; 2014/C 89/03). [1103]
 

2. Contract law defence

The Court further found that Daimler could not defend itself against the claim for injunctive relief by invoking a contractual claim against Conversant for being granted a FRAND licence, since such claim did not exist. [1104] Daimler had argued that Conversant's FRAND commitment towards ETSI prevented the latter from asserting claims for injunctive relief before court.

The Court found that the ETSI FRAND undertaking does not establish duties or rights different than those established by European competition law (especially Art. 102 TFEU), which Conversant had met in the present case. [1105] In legal terms, the ETSI FRAND undertaking is a contract for the benefit of a third party under French law ('stipulation pour l'autrui'), containing a binding promise of the SEP holder to grant a FRAND licence at a later point in time. [1106] The content and the extent of the corresponding obligation to negotiate a licence is, however, to be interpreted in line with the Huawei judgment, which has defined a standard of conduct based on Art. 102 TFEU. [1106] The fact that the ETSI FRAND commitment materialises the requirement to provide access to the standard stipulated by Art. 101 TFEU speaks also in favour of applying a uniform standard of conduct. [1106] In the eyes of the Court, French law cannot establish further going conduct duties, since it must be interpreted within the spirit of EU law. [1106]
 

C. Other important issues

Finally, the Court took the view that there are no grounds for a limitation of Conversant's claim for injunctive relief due to proportionality considerations. [1107] Under German law, proportionality is a general principle of constitutional rank to be considered also with respect to injunctive relief, if a respective objection is raised by the defendant in trial. [1107] The Federal Court of Justice (Bundesgerichtshof) has also recognised that an injunction might not be immediately enforceable in exceptional cases, in which the implementer would suffer hardships not justified by the patent holder's exclusionary right in violation of the principle of good faith ('Wärmetauscher'ruling dated 10 May 2016, Case No. X ZR 114/13). [1107] In the eyes of the Court, Daimler had, however, not pleaded any relevant facts in the present proceedings. [1107]

  • [1037] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19 (cited by juris).
  • [1038] Ibid, paras.122-265.
  • [1039] Ibid, para. 285.
  • [1040] Ibid, para.286.
  • [1041] Ibid, para.288.
  • [1042] Ibid, paras.287 et seqq.
  • [1043] Ibid, paras.291 et seqq.
  • [1044] Ibid, para.295.
  • [1045] Ibid, para.296.
  • [1046]  Ibid, para. 299.
  • [1047] Ibid, para. 300.
  • [1048] Ibid, para.300.
  • [1049] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [1050] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, para.301.
  • [1051] Ibid, para.301.
  • [1052] Ibid, para.307.
  • [1053] Ibid, para.308.
  • [1054] Ibid, paras.302 and 308.
  • [1055] Ibid, paras. 323 et seqq.
  • [1056] Ibid, para.324. The Court expressed, nevertheless, doubts that the sole reference to the calculation method used by the UK High Court in Unwired Planet v Huawei would prove sufficient for the explanation of the rates offered by Conversant to Daimler.
  • [1057] Ibid, para. 309.
  • [1058] Ibid, para. 310.
  • [1059] Ibid, para. 316.
  • [1060]  Ibid, para. 311.
  • [1061] Ibid, para. 312.
  • [1062] Ibid, para. 320.
  • [1063] Ibid, para. 311.
  • [1064] Ibid, paras. 312 and 316.
  • [1065] Ibid, para. 315.
  • [1066] Ibid, paras.317 et seqq.
  • [1067] Ibid, para. 321.
  • [1068] Ibid, para.357.
  • [1069] Ibid, paras.322 and 358.
  • [1070] Ibid, para.328.
  • [1071] Ibid, paras.331 and 336.
  • [1072] Ibid, para.332.
  • [1073] Ibid, paras.334 and 336.
  • [1074] Ibid, para.335.
  • [1075] Ibid, para.337.
  • [1076] Ibid, para.338.
  • [1077] Ibid, para.339.
  • [1078] Ibid, para.340.
  • [1079] Ibid, paras.355 et seq.
  • [1080] Ibid, paras.341 and 354.
  • [1081] Ibid, para.341.
  • [1082] Ibid, paras.341 and 348.
  • [1083] Ibid, para.352.
  • [1084] Ibid, para.353.
  • [1085] Ibid, para.353
  • [1086] Ibid, para.360.
  • [1087] Ibid, para.362.
  • [1088] Ibid, paras.362 and 364.
  • [1089] Ibid, para.363.
  • [1090] Ibid, para.365.
  • [1091] Ibid, para.366.
  • [1092] Ibid, para.367.
  • [1093] Ibid, paras.368 and 382.
  • [1094] Ibid, para.368.
  • [1095] Ibid, para.370.
  • [1096] Ibid, para.372.
  • [1097] Ibid, paras.373 and 376-378.
  • [1098] Ibid, para.373.
  • [1099] Ibid, paras.373 and382.
  • [1100] Ibid, paras.373 and 379.
  • [1101] Ibid, para.374.
  • [1102] Ibid, para.375.
  • [1103] Ibid, para.380.
  • [1104] Ibid, para.384.
  • [1105] Ibid, paras.384 et seqq.
  • [1106] Ibid, para.385.
  • [1107] Ibid, para.269.


Cases from OLG Munich - Higher District Court


Continental対Nokia

12 12月 2019 - Case No. 6 U 5042/19

A. 内容

Nokiaは、3G及び4Gの無線通信標準の実施に必須のものとして宣言済みのいくつかの特許(標準必須特許又はSEP)を保有している。Daimlerは、世界最大の自動車製造会社の一つである。Continentalは、ドイツに本社を置く世界的な企業グループであり、Daimlerのサプライヤーの1つである。

2019年3月、Nokiaは、自社のドイツSEPに基づきDaimlerに対する合計10件の侵害訴訟をドイツのミュンヘン、デュッセルドルフ、及びマンハイムの各地方裁判所において提起した(ドイツでの侵害訴訟)。Daimlerが出した第三者への通知を受けて、Continental グループの2社(ドイツにおける子会社「Continental Automotive GmbH」とハンガリーにおける子会社「Continental Automotive Hungary Kft.」)がドイツでの侵害訴訟に補助参加人(intervener)として参加した。

2019年5月10日、Continentalグループのアメリカに拠点を置く子会社「the United States, Continental Automotive Systems Inc. (Continental US)」がNokiaによる反トラスト法違反を主張し、カリフォルニア州北部地区連邦地方裁判所 (米国裁判所)においてNokia等に対する訴訟を提起した。

2019年6月12日、Continental USは、Nokiaに対してドイツでの侵害訴訟の遂行を禁じる外国訴訟差止命令を求める申立て(外国訴訟差止命令を求める米国での申立て) も米国裁判所に対して行った。米国裁判所は、Nokiaが外国訴訟差止命令を求める申立てに応答するための応答期限を2019年7月24日までとした。

2019年7月9日、Nokiaはミュンヘン地方裁判所(地方裁判所)に対して予備的差止命令を求める申立てを行った。Nokiaは、外国訴訟差止命令を求める米国での申立てを取り下げること及び外国訴訟差止命令又はこれに類する措置を求める将来的な申立てを差し控えることをContinental USに命ずるよう地方裁判所に求めた。これに加えて、Nokiaは、Continentalグループのドイツの親会社(Continental Germany)に対しても、とりわけ、Continental USに外国訴訟差止命令を求める米国での申立てを確実に取り下げさせることを命ずるよう(地方裁判所に)求めた。

2019年7月11日、地方裁判所は、Nokiaが求めた予備的差止命令をContinental USに対して発出した  [1108]  。

2019年7月30日、地方裁判所はContinental Germanyに対しても差止命令を出し、同社の当該子会社(Continental US)に外国訴訟差止命令を求める米国での申立てを確実に取り下げさせるよう命じた  [1109] 。Continental Germanyはこの判決を不服として控訴した。

2019年9月3日、Continental USは外国訴訟差止命令を求める米国での申立てを取り下げた。しかし、Continental USは、2019年10月8日に Nokiaに対する仮制止命令(Temporary Restraining Order: TRO) を求める申立てを米国裁判所に対して行い、Nokiaが自社のドイツ特許をContinentalグループの会社及びそのクライアントに対して主張することを禁じるよう同裁判所に求めた。この申立ては却下された。

2019年12月12日の 本判決 [1110]  (https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2019-N- 33196?hl=true&AspxAutoDetectCookieSupport=1を引用)により、ミュンヘン高等裁判所(高等裁判所)は、Continental Germanyによる控訴を棄却し、地方裁判所が2019年7月30日に出した差止命令を維持した。

B. 判決理由

高等裁判所は、Nokiaには自社の財産権を直接的かつ不法な脅威から守るためにContinental Germanyに対する差止命令を得る権利があると判断した。

ドイツ法の下では、米国裁判所の出す外国訴訟差止命令又はTROはNokiaの財産権への不正な侵害に該当するだろうとされた。それらはNokiaが自社の特許から発生する排他性を係属中のドイツでの侵害訴訟においてDaimlerに対し強制する権利をNokiaから奪うだろうとの判断である [1111]

前述の各措置から発生するNokiaの財産権への脅威は、Continental USが既に外国訴訟差止命令を求める米国での申立てを取り下げてはいたものの、依然として緊急であるとされた。高等裁判所は、Continental USがNokiaに対するTRO を求めて新たな申立てを提起したことは、原告側が未だその戦略を捨てていないことを示しているとの見解をとった [1112]  。

また、何れの申立ても(Continental Germanyではなく)Continental USが提起したという事実は、Continental Germanyに対する差止命令を排除するものではないとされた  [1113] 。高等裁判所は、Continental USがドイツの親会社の認知/承諾を得て行為していたことを示唆するNokiaの申立てに対抗するための証拠をContinental Germanyが示していないため、Continental Germanyはその米国子会社が米国で提起した申立ての「共同実行者(co-perpetrator)」とみなされるべきであるとの地方裁判所の見解を維持した [1114] [135]。

更に、高等裁判所は第一審において地方裁判所が下した 「外国訴訟差止命令に対する差止命令(anti-anti-suit injunction)」が法的に許容できることを明確にした [1115]  。 Continental Germanyは、地方裁判所の差止命令は米国における外国訴訟差止命令と同じ効果をもつ(つまり、米国の訴訟手続きにおいて自らの権利を主張する機会をContinental USから奪う)ため、ドイツにおいて認容されるべきではなかったと基本的にと主張していた。

高等裁判所は、ドイツにおける外国訴訟差止命令に対する差止命令(anti-anti-suit injunction)がContinental USの提起した補助的申立て(外国訴訟差止命令を求める申立て) のみに関するものであり、米国でNokiaに対して提起された主訴訟には影響を与えないため許容できると判断した点については、地方裁判所の判断に同意しなかった [1116] 。高等裁判所は、たとえ補助的な申立てであったとしても、一般に、裁判所の命令で当事者による申立の提起を妨げることはできないと判断した [1116]  。

しかし、高等裁判所は、ドイツにおける外国訴訟差止命令に対する差止命令は、Nokiaが主張していたように、米国での外国訴訟差止命令に対する「唯一の効果的な防御措置(only effective means of defence)」であるため許容できるとの見解をとった  [1117]  。また、本事件においては、Continental USの行為の自由を維持する利益に対抗するためには、不法なanti-anti-suit injunctionに対して、Nokiaに自らの利益の防御を認めることが正当であると高等裁判所は判断した  [1118] [140] 。

更に、高等裁判所は、Nokiaが、原則として、外国訴訟差止命令を求める米国での訴訟に参加する立場にあったとの事実は、外国訴訟差止命令に対する差止命令の裁定をドイツにおいてNokiaに与えることを妨げるものではなかった。高等裁判所によれば、その理由は、ドイツで侵害訴訟を遂行するNokiaの権利に対して外国訴訟差止命令が及ぼす影響は、外国訴訟差止命令を求めてContinental USの提起した申立てについて判断を下す際に米国裁判所が考慮する要素ではないためである[141]。従って、Nokiaは米国裁判所での訴訟において自らの利益を十分に防御することができないだろうと判断された。

米国の外国訴訟差止命令がドイツにおいては強制できない可能性が高いという事実も、同様に本事件では無意味であるとされた [1119]  。高等裁判所は、外国訴訟差止命令に従わずに米国で罰金の支払いを求められれば、Nokiaは、事実上、自社の特許をドイツでの侵害訴訟において主張することを止めざるを得なかっただろうと指摘した  [1120]  。

これに加えて、高等裁判所は、ドイツにおいて地方裁判所が裁定した「外国訴訟差止命令に対する差止命令(anti-anti-suit injunction)」は、米国裁判所の管轄権に直接的な影響を及ぼさず、よって、米国の主権を問題にするものではないため国際法に違反しないと判断した [1121]

高等裁判所は、最後に、地方裁判所の判決がEU法に違反しないことも強調した。本事件は、ドイツ国内の法人によるドイツ特許への侵害に関するものであり、そもそも本事件にはEU法が適用されないとの判断である [1122]

  • [1108] Nokia対Continental、ミュンヘン地方裁判所、2019年7月11日命令、事件番号 21 O 3999/19。
  • [1109] Nokia対Continental、ミュンヘン地方裁判所、2019年7月30日命令、事件番号 21 O 9512/19。
  • [1110] Nokia対Continental、ミュンヘン高等裁判所、2019年12月12日判決、事件番号 6 U 5042/19
  • [1111] 同判決、第55節。
  • [1112] 同判決、第56節。
  • [1113] 同判決、第76節以下。
  • [1114] 同判決、第81節以下。
  • [1115] 同判決、第58節以下。
  • [1116] 同判決、第59節以下。
  • [1117] 同判決、第69節及び第72節。
  • [1118] 同判決、第69節。
  • [1119] 同判決、第70節。
  • [1120] 同判決、第71節。
  • [1121] 同判決、第73節。
  • [1122] 同判決、第74節。

オランダ裁判所の決定


Archos v. Philips, Rechtbank Den Haag

8 2月 2017 - Case No. C/09/505587 / HA ZA 16-206 (ECLI:NL:RBDHA:2017:1025)

  1. Facts
    Defendant (Koninklijke Philips N.V.) is the proprietor of a number of patents declared essential to ETSI’s UMTS (3G) and LTE (4G) standards. Defendant made FRAND commitments towards ETSI on 15 January 1998 and 26 November 2009. Claimant (Archos S.A.) markets mobile devices which are alleged to infringe upon Defendant’s patents.
    By letter of 5 June 2014, Defendant brought her UMTS and LTE patent portfolio and her licensing program to the attention of Claimant. In this letter, Defendant made clear that Claimant was infringing her patents by marketing products incorporating the UMTS and LTE standards and explained the possibility of obtaining a FRAND license. On 15 September 2014, a meeting took place to inform Claimant of Defendant’s patent portfolio and to discuss the licensing offer. In another meeting on 25 November 2014, Claimant suggested Defendant to grant her a royalty-free license to all of Defendant’s patents (i.e. not only to the UMTS/LTE patents but also to other patents related to so-called ‘Portable Features’) in exchange for the transfer of certain patents of Claimant to Defendant. Defendant informed Claimant by email of 23 December 2014 that it was not interested in Claimant’s patents because it considered them to represent ‘relatively low value’.
    By letter of 28 July 2015 Defendant sent Claimant an updated list of UMTS/LTE patents as well as a draft licensing agreement in which she confirmed her earlier licensing offer. The proposed royalty amounted to $ 0.75 per product containing UMTS and/or LTE functionality. For products already sold, a royalty of $ 1 would need to be paid. At a next meeting on 3 September 2015, it became clear that Claimant did not wish to obtain the license offered. On behalf of Claimant, it was made clear during the meeting that Defendant would have to take legal action if she wished to obtain a license fee. In October 2015, Defendant started proceedings before the Rechtbank Den Haag for infringement of her European Patents EP 1 440 525, EP 1 685 659 and EP 1 623 511.
    By letter of 12 January 2016, Claimant made a written counter offer of 0.071% of her net revenue from products incorporating the UMTS and/or LTE standards. For a net sale price per product of € 100, the offered royalty would amount to 7 eurocent per product.
  2. Court’s reasoning
    Claimant asked the court to declare that Defendant’s licensing offer of 28 July 2015 is not FRAND and to declare that a royalty fee of € 0.007 for every product sold by Claimant incorporating the UMTS standard and a royalty fee of € 0.020 for every product sold by Claimant incorporating the UMTS and LTE standards is FRAND. In addition, Claimant asked the court to rule that its own licensing offer of 12 January 2016 is higher than what a fair, reasonable and non-discriminatory royalty fee would require.
    1. Market power and notice of infringement
      The court left open whether the SEPs conferred market power to Defendant since it did, in any case, find no abuse of such potential market power. The court argued that it is generally accepted and to be inferred from the system laid down in the Huawei/ZTE judgment that a FRAND license has a certain bandwidth. After all, the Huawei/ZTE judgment contemplates that the SEP holder makes a FRAND offer first and afterwards, if the SEP user does not agree with the offer, makes a counter offer which also has to be FRAND. During this negotiation process, the characteristics of the SEP user as well as its specific objections can be taken account in the license at the discretion of the parties. As such, the court noted that the fact that Defendant’s initial offer would turn out to be unreasonable for Claimant because she finds itself in the low budget segment of the market and her margins are small does not imply that the offer made by Defendant on 28 July 2015 is not FRAND.
      The court also made clear that until the Huawei/ZTE judgment the initiative to obtain a license was incumbent on the SEP user and not on the SEP holder in line with the common interpretation of the judgment of the Rechtbank Den Haag in Philips/SK Kassetten and the Orange Book ruling of the Bundesgerichtshof. In the view of the court the, on this crucial point, contrary Huawei/ZTE judgment that was delivered on 15 July 2015 constituted a new moment for negotiation between the parties. The court noted that, in line with the Huawei/ZTE judgment, Defendant took initiative with its licensing offer of 28 July 2015. Since Claimant made clear in the meeting on 3 September 2015 that Defendant would have to take legal action if she wished to obtain more than a few thousand euros in licensing fees, it seems unfitting that Archos reproaches Philips to have not been open to negotiation, or at least that position is insufficiently substantiated (par. 4.3).
    2. The SEP owner’s licensing offer
      Claimant put forward a number of arguments for its claim that Defendant’s offer of 28 July 2015 is not FRAND. All of these arguments were rejected by the court on the ground that Claimant had not sufficiently substantiated them. The main arguments raised are as follows.
      Claimant argued that Defendant’s rights regarding devices incorporating Qualcomm baseband chips had been exhausted due to the cross-license that Defendant had already concluded with Qualcomm for these chips. Since a number of Claimant’s products rely on Qualcomm baseband chips, the compensation that Defendant had already received from Qualcomm should, in the view of Claimant, at least have been taken into account in the license offer. The court noted that Claimant had not sufficiently contested that the Qualcomm license did not cover production and sales of mobile phones – as Defendant had made clear before the court – and that Claimant could have raised this point during the negotiations (par. 4.4).
      The court continued by stating that the fact that Defendant’s licensing offer covered both UMTS and LTE SEPS could not affect the FRAND-ness of the offer in the case at hand considering that Claimant’s products do not merely require a license under the LTE SEPs but also under the UMTS SEPs (par. 4.5).
      While the parties agreed that the Defendant’s share of the absolute number of SEPs in the UMTS-SEP portfolio is an important factor for assessing the FRAND-character of Defendant’s offer, they each reached different absolute numbers. The court concluded that the calculations in the consultancy reports on which Claimant relied do not lead to accurate results and are rather speculative in nature. As such, the Claimant downplayed the value of Defendant’s SEPs (par. 4.6-4.7).
      With regard to Claimant’s argument that Defendant’s proposed royalty rate would amount to impermissible royalty stacking, the court argued that this was insufficiently substantiated by Claimant (par. 4.8).
      Claimant also argued that the royalty rate should not be based on the total price of a phone but merely on the part in which the technology at issue is incorporated (the Smallest Saleable Patent-Practising Unit, SSPPU). In this context, the court noted that Defendant rightly pointed out that the requested royalty was set at a fixed amount as a result of which there is no relationship with the market value of the phone. Furthermore, since the SSPPU concept is at the very least subject to debate, the court noted that this issue could have been considered in the negotiations. That the royalty rate suggested by Defendant, which was not based on the SSPPU price, would not be FRAND for that mere reason could not be established by the court (par. 4.10).
      The court also dismissed Claimant’s reference to patent hold-up on the ground that a situation of hold-up can only occur in the case of a non-FRAND license which had not been established in the case at issue (par. 4.13).
      In the end, the court dismissed Claimant’s request to make a declaratory statement that Defendant’s offer of 28 July 2015 was not FRAND.
    3. The standard implementer’s reaction
      Considering that Claimant’s counter offer of 12 January 2016 is more than a factor 10 lower than the Defendant’s offer and is based on an inaccurate (at least insufficiently substantiated) share of Defendant’s SEPs in the relevant UMTS standard, the court refused to declare the counter offer to be FRAND, let alone to declare that this counter offer is higher than a FRAND royalty rate as requested by Claimant (par. 4.17-4.18).
  3. Other important issues
    AA defence that Defendant invoked was that Claimant had no interest (anymore) in the requested declaratory statements because its respective FRAND commitments were exhausted due to the unwilling attitude of Claimant. However, as Claimant’s requests for the declaratory statements were found not to be sufficiently substantiated, there was no need for the court to discuss this issue anymore (par. 4.18).


Koninklijke Philips N.V.対Asustek Computers INC.、ハーグ控訴裁判所

7 5月 2019 - Case No. 200.221.250/01

A. 事実

本件は、消費者向け電子機器製造業者であり欧州電気通信標準化機構(European Telecommunications Standards Institute: ETSI)が開発した様々な標準の実施において潜在的に必須であるとして宣言済みの特許(標準必須特許又はSEP)のポートフォリオの保有者であるPhilipsと、ラップトップ、タブレット、及びスマートフォン等の無線機器の製造業者であるAsusとの間の紛争に関するものである。

Philipsは、公平、合理的、かつ非差別的(Fair, Reasonable and Non-Discriminatory: FRAND)な条件で標準の使用者がPhilipsのSEPにアクセスできるようにするとの誓約をETSIに対して行っていた。特に、Philipsは1998年に自社のSEPへのアクセスをFRAND条件でオファーするとの一般的(包括的)な誓約をETSIに対して行っていた。

2013年、Philipsは3G-UMTS及び4G-LTEの無線通信標準に包含される自社のポートフォリオについてAsusに通知し、ライセンス契約を提案した。両当事者間のその後の話し合いにおいて、Philipsは自社の特許の詳細を更に示し自社の特許及び対応する標準をマッピングしたクレームチャートを提供した。またPhilipsは、自社の標準ライセンス契約(Philipsのライセンスプログラムにおける標準ロイヤルティ料率とその計算方法を含む)もAsusに提出した。

2015年、交渉は決裂し、Philipsは欧州の様々な法域(即ち、イングランド、フランス、及びドイツ)において、とりわけ欧州特許1 623 511 (EP 511)に基づき侵害訴訟を提起した。Philipsは、EP 511特許が3G-UMTS及び4G-LTE標準に(潜在的に)必須であるとの宣言を行っていた。イングランド・ウェールズ高等法院は、EP 511 特許の有効性を支持する予備的評決(preliminary verdict)を下した。

Philipsは、オランダでは、とりわけ差止命令を求めてAsusに対する訴訟をハーグ地方裁判所(地方裁判所)において提起していた。地方裁判所は、EP 511特許に基づくPhilipsの差止請求を棄却した [1123] 。Philipsは、ハーグ控訴裁判所(控訴裁判所)に控訴した。

本判決では、控訴裁判所がEP 511の有効性及び必須性を支持し、TFEU第102条に基づきFRAND違反を主張するAsusの抗弁(FRAND defense)を退け、Asusに対して係争中の特許を侵害している製品についての差止命令を出した [1124]


B. 判決理由

控訴裁判所はEP 511特許の新規性及び進歩性を認め当該特許の有効性に対するAsusの異議を棄却した [1125] 。更に、控訴裁判所は、当該特許が必須であり侵害されていると認めた [1126]

控訴裁判所は、Asusの主張、即ち、Philipsが差止による救済を求めて侵害訴訟を提起する上でETSI に対する契約上のFRAND義務に違反しており、欧州司法裁判所(Court of Justice of the EU: CJEU) がHuawei対ZTE事件において定めた要件(Huawei要件)を遵守しなかったことによりTFEU第102 条 に違反したとの主張を審理した [1127] 。特に、Asusは、(a) ETSI のIPR Policyに従った適切かつ適時なEP 511の開示をPhilipsが行なわず、また(b)提示した条件がFRANDである根拠を明確に示さなかったことでPhilipsがHuawei要件に反していたと主張した。

控訴裁判所は、前者について、EP 511の付与から2年後に当該特許が(潜在的に)必須であるとPhilipsが宣言したことは、SEPの「適時の開示(timely disclosure)」を求めるETSI IPR Policy第4.1条に基づく契約上の義務への違反に当たらないとした。

控訴裁判所は、ETSIの開示義務の根底にある一般的な目的について、ETSI標準に利用可能な最高の技術を組み入れることであって、Asusが主張したようにETSI 標準への参加者が最低のコストで(必須の)技術ソリューションを選択できるようにすることではないとした [1128]  。また、宣言を行う義務の目的は、むしろ、使用者にとって事後的に実施できないSEPが現れないようにリスクを減らすことであるとした [1129]

その上で控訴裁判所は、Philipsが行った一般的かつ包括的な宣言はETSIのIPR Policyに基づく義務を果たすために十分であったとした。この点について、控訴裁判所は、Philipsが特定のSEPの宣言を遅く行ったことは(必須でない特許を含めた)超過宣言(over-declaration)を招くとのAsusの主張を退け、逆に控訴裁判所は、早期開示ではETSI 標準に必須でない特許が含まれてしまう可能性の方が高いとした [1130]  。更に、控訴裁判所は、欧州委員会の水平的協調行為に関するガイドライン(Horizontal Guidelines )によれば包括的宣言はEU競争法の目的上許容されるSEP宣言の形式の1つであり、Philipsの包括的宣言はTFEU第101条違反に当たらないと指摘した  [1131]

FRAND違反を主張するAsusの抗弁(FRAND defense)の第一の根拠を退けた上で、控訴裁判所は、両当事者が交渉上Huawei要件に従っていたか否かについて評価した。控訴裁判所は、前置きとして、Huawei 事件におけるCJEUの判決は、Huawei要件に従わない特許保有者が自動的にTFEU第102条違反を犯したものとされる厳格な要件のセットを定めてはいないと述べた [1132]  。このため、控訴裁判所は、本事件の特定の状況と両当事者の行為を評価する必要があるとした。

その次に控訴裁判所は、Huawei要件の第一ステップである侵害者への適切な通知の義務をPhilipsが遵守したか否かを審理した。控訴裁判所は、侵害を受けているとされる特許のリストとそれらが必須である標準をPhilipsが提出したこと及びFRAND条件でライセンスをオファーする意思をPhilipsが宣言したことによりAsusへの通知義務をPhilipsが明確に果たしていたと事件記録が示しているとの見解をとった。 [1133]  また、その後の技術的議論において、Philipsは自社のポートフォリオとライセンスプログラムについての更なる詳細(クレームチャート及び標準ライセンスでのロイヤルティ料率を含む)を提供していた [1134] 。これに対して、AsusはFRAND条件でのライセンスを受ける意思を表示しなかった。控訴裁判所は、交渉が常にPhilipsの側から始められ、AsusはPhilipsのポートフォリオを評価できる技術専門家を交渉に参加させていなかったと事実認定した [1135] 。控訴裁判所は、交渉においてAsusが提起した技術的問題が交渉を遅らせることだけを目的としており「ホールドアウト(hold-out)」と言われる行為に当たるとした  [1136]

この時点で既に、控訴裁判所はAsusがHuawei要件に基づく義務に違反しており、Philipsは差止命令を求める権利を有していると判断していたが、更に踏み込んでHuaweiフレームワークの第二ステップ以降の遵守についても検討した。控訴裁判所は、 Philipsが自社の標準ライセンス契約を提示したことは、具体的であり提示した料率の計算法も説明している点でCJEU要件を完全に満たしているとした [1137] 。更に、控訴裁判所は、ドイツにおいて訴訟が提起された後にAsusが出したカウンターオファー自体は、PhilipsがHuawei要件を遵守しており従って差止命令を求める権利を有するとの結論を変えるものではないとした [1138] 。最後に、控訴裁判所はPhilipsが交わしている比較可能なライセンス契約がFRAND適格であるかを評価するためにそれらへのアクセスを求めたAsusの弁護士による要求を却下した。控訴裁判所は、ETSIのIPR Policy、TFEU第102条、及びHuawei フレームワークの何れも当該要求の根拠とはならないとした [1139]

  • [1123] Koninklijke Philips N.V.対Asustek Computers INC、ハーグ地方裁判所、2017年、事件番号C 09 512839 /HA ZA 16-712。
  • [1124] Koninklijke Philips N.V.対Asustek Computers INC、ハーグ控訴裁判所、2019年5月7日判決、事件番号200.221.250/01。
  • [1125] 同判決、第4.63節、第4.68節、第4.75節、第4.80節、第4.82節、第4.93節、第4.100節、及び第4.117節。
  • [1126] 同判決、第4.118節 以下。
  • [1127] Huawei対ZTE、欧州司法裁判所、2015年7月16日判決、事件番号C-170/13。
  • [1128] Koninklijke Philips N.V.対Asustek Computers INC、ハーグ控訴裁判所、2019年5月7日判決、事件番号200.221.250/01、第4.153節以下。
  • [1129] 同判決、第4.155節及び第4.157節。
  • [1130] 同判決、第4.159節。
  • [1131] 同判決、第4.164節。
  • [1132] 同判決、第4.171節。
  • [1133] 同判決、第4.172節。
  • [1134] 同判決。
  • [1135] 同判決、第4.172節ないし第4.179節。
  • [1136] 同判決、第4.179節。
  • [1137] 同判決、第4.183節。
  • [1138] 同判決、第4.185節。
  • [1139] 同判決、第4.202節以下。


Philips v Wiko, Court of Appeal of The Hague

2 7月 2019 - Case No. C/09/511922/HA ZA 16-623

A. Facts

By letter dated 13 October 2013, the Claimant, Koninklijke Philips N.V. (“Philips”), informed the Defendant, Wiko SAS (“Wiko”), that it holds patents declared essential to the UMTS and LTE mobile telecommunication standards (Standard Essential Patents or “SEPs”) towards the European Telecommunications Standards Institute (“ETSI”). The letter included a list of some of Wiko’s products and invited Wiko to discuss a FRAND licensing agreement [1140] . Wiko did not react to the letter [1141] .

On 28 July 2015, Philips sent Wiko claim charts and a licensing agreement [1142] . The communication remained unanswered by Wiko [1141] .

On 19 October 2015, Philips started the present proceedings against Wiko [1143] . On 25 August 2016, Wiko made a counteroffer [1144] . Since 2016, it has also provided information about worldwide units sold and blocked an amount of EUR 895.000 into an escrow account [1141] .

After the present proceedings were filed, Philips brought a further action against Wiko before the District Court of Mannheim (Mannheim Court), Germany (German proceedings). On 2 March 2018, the Mannheim Court honoured Wiko’s FRAND defence and dismissed Philips’ action.

In an interlocutory decision dated 16 April 2019, the Court of Appeal of The Hague (Court) held that the patent in suit EP1 623 511 (EP 511) is valid and that Wiko is infringing this patent [1145] . Wiko claimed that, as this patent is a SEP and Philips has not complied with its contractual duties, Philips is abusing its dominant position by initiating infringement proceedings against Wiko [1141] .

With the present judgment, the Court granted Philips’ request for injunctive relief [1146] , destruction [1147] and the recall of products [1148] , but partly invalidated EP 511, insofar it goes beyond the claims of the second auxiliary request [1149] .

B. Court’s reasoning

German Proceedings and Lis Pendens

Since the Court of Manheim in Germany had honoured its FRAND defence, Wiko argued that Articles 29 and 30 of Brussels Regulation 1215/2012 on jurisdiction and enforcement of judgements (Brussels Regulation) are applicable and that the Court is not competent for the present case [1150] .

The Court rejected this argument, underlying that each national proceedings are based on a national counterpart of a European patent. For each national counterpart, the concerned national jurisdiction is exclusively competent [1151] .

The fact the same FRAND defence has been raised in the German proceedings does not prevent the Court from moving on with its proceedings. The application of Articles 29 and 30 of the Brussels Regulation on cases with same object requires that the filed claims, not the raised defences, are identical [1150] .

The Court concluded that recognition of the Mannheim decision would not affect the pending proceedings, as the patents at stake were not the same [1152] .

Patent essentiality and infringement

Philips had declared EP 511 as essential to HSUPA (part of UMTS standard) towards ETSI on 26 November 2009 [1153] . The fact that EP 511 is essential to HSUPA was not challenged by Wiko [1154] .

Moreover, the interlocutory decision of the Court dated 16 April 2019 confirmed that claims 1, 9 and 12 of EP 511 are implemented in the UMTS standard [1141] .

FRAND negotiations and application of the Huawei steps

The Court considers that the Huawei decision [1155] does not set up strict rules, but rather guidelines for FRAND negotiations in good faith between the parties [1156] .

Regarding the first step of the Huawei decision, that is the SEP-holder’s obligation to notify the implementer of the patents at stake and the infringement [1157] , the Court underlines that this approach is different than what had been previously decided in a Dutch case prior to the Huawei decision, Philips v. SK Kassetten [1158] .

Moving on to the next step, the Court found that Wiko had not fulfilled its duty as it did not react to Philips’ notification [1159] . The Court, therefore, held that Philips was not obliged to make a licensing offer to Wiko, before starting proceedings against Wiko [1141] .

FRAND offer

Nevertheless, Philips had made an offer to Wiko on 28 July 2015 [1160] . This offer was for a worldwide licence under Philips’ UMTS and LTE SEPs [1161] .

Philips’ expert explained that the offered rate amounting to USD 1,0 per product (non-compliant rate) and USD 0,75 per product (compliant rate) was justified in view of all UMTS and LTE SEPs [1141] .

However, Wiko argued that Philips’ offer is not FRAND for the following reasons: Philips did not specify that its offer was FRAND compliant and did not explain how the offer was FRAND [1162] .

Contrary to German courts, the Court held that the Huawei steps do not imply a substantiation duty [1163] , but solely the duty to specify the amount of the rate and the way it is calculated [1164] . It bases this reasoning on the fact that the Huawei decision has to be read in light of a previous German decision, the Orange Book Standard decision, where the German Supreme Court decided it was up to the implementer to make a first FRAND offer [1141] . The Court interprets the Huawei decision as requiring the SEP-holder, as it is in a better position to do so, to make a first FRAND offer after the implementer has demonstrated itself to be a “willing licensee” [1141] . But it does not require the SEP-holder to substantiate its FRAND offer and give insights on why he believes the offer is FRAND. The Court also considers there is no duty for the SEP-holder to justify its rate in view of what other licensees are paying [1165] .

Wiko also challenged specific terms of the license, i.e. the suggested duration (until expiry of the last patent), the coupling of UMTS and LTE SEPs, as well as the requested fixed licence fees [1166] . The Court held, however, that Wiko did not provide any evidence to support its position that Philips’ offer is not FRAND [1141] . Additionally, the Court attached importance to the fact that Philips had expressed its willingness to discuss the offer and specific circumstances with Wiko [1167] . Philips had even asked Wiko to make a counteroffer, which the latter did not [1168] .

The Court further pointed out that the fact that there are different terms and conditions with other parties does not necessarily imply that the offer made to Wiko is discriminatory [1169] . It stressed that “non-discriminatory” does not mean that every licensee must be offered the same structure and rate; the “non-discriminatory” nature of an offer depends on the facts and circumstances of the specific case [1141] .

Wiko’s counteroffer

Wiko GmbH, an entity legally independent from other Wiko entities, had made a counteroffer to Philips [1170] . However, the Court did not consider this counteroffer as a counteroffer made by the Defendant of the present proceedings to Philips [1141] .

Besides that, the Defendant had also made a counteroffer to Philips after the start of the present proceedings [1171] . This offer was based on the following estimates: the total number of UMTS and LTE SEPs was 12.000, out of which Wiko estimated that Philips holds 97 families, and the aggregated royalty rate for all SEPs amounted to 12% [1172] . Wiko derived a rate of 0.001% per SEP family and made the following counteroffer to Philips [1141] :

- 0.042% for the compliant rate (EUR 0.027)

- 0.066% for the non-compliant rate (EUR 0.043)

- 0.0315% for past sales (EUR 0.020).

Subsequently, Wiko made a further offer to Philips of 0.084 (which, in Philips‘ eyes, referred to a percentage) [1141] .

The Court held that Wiko’s counteroffers were not FRAND. It found that the counteroffer included too many patents into the total SEPs pool, because it included base station and infrastructure patents, while Philips portfolio was focused on cellphone patents [1173] . Consequently, the Court concluded that Philips held a higher percent of SEPs than estimated by Wiko [1141] . It also highlighted that Wiko did not provide any explanation with respect to a proposed discount of the initially estimated rate of 0.097% and the aggregated royalty rate [1173] . The Court also noticed that, while Wiko stated Philips’ rate should account for the technical and economic value of Philips’ SEPs, this analysis was missing from Wiko’s counteroffer [1174] . It added that Wiko’s counteroffer did not account for the value of Philips’ SEPs in view of other SEPs for the same standard [1175] .

Abuse of a dominant position

The Court held that the Huawei case requires that the facts and circumstances of a case have to be assessed to determine if there is an abuse of a dominant position [1156] . Furthermore, the Court also referred to the decision of the UK High Court of Justice in Unwired Planet v. Huawei to note that the fact that the circumstances of a case diverge from the Huawei scheme does not automatically lead to the conclusion of an abuse of a dominant position, if the SEP-holder, nonetheless, files an action against an implementer [1141] .

The Court expressly pointed out that if starting proceedings is considered as an abuse of a dominant position, then implementers have no incentives to comply with the Huawei steps and can just delay the negotiations [1176] .

With respect to the asserted claims for injunction and recall of products, the Court found that the facts and circumstances of this case were different from the German proceedings, where the Mannheim Court viewed Wiko as a “willing licensee” [1177] .

Wiko did not demonstrate itself to be a “willing licensee”, as it did not react to Philips’ notification, and did not comply with the required Huawei steps. Therefore, the Court rejected Wiko’s FRAND defence and granted Philips’ request for an injunction and recall of products.

  • [1140] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.1
  • [1141] Ibidem
  • [1142] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.2
  • [1143] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.3
  • [1144] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
  • [1145] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 3.1
  • [1146] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.1
  • [1147] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.4
  • [1148] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.3
  • [1149] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.8
  • [1150] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.1
  • [1151] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.2
  • [1152] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.3
  • [1153] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.5 and 4.6
  • [1154] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.5
  • [1155] Huawei v ZTE, Court of Justice of the EU, judgement dated 16 July 2015, Case No. C-170/13.
  • [1156] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.14
  • [1157] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10
  • [1158] Case reference: Court of The Hague, Philips v. SK Kassetten, 17 March 2019, referred to in Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10.
  • [1159] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.15
  • [1160] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.16
  • [1161] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.27
  • [1162] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.17
  • [1163] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18 and 4.19
  • [1164] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18
  • [1165] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.19
  • [1166] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.31
  • [1167] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.26, 4.31, 4.32, 4.36
  • [1168] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.36
  • [1169] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.34
  • [1170] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.20
  • [1171] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
  • [1172] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.38
  • [1173] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.40
  • [1174] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.39
  • [1175] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.41
  • [1176] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.21
  • [1177] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.22


Sisvel v Xiaomi, Court of The Hague

1 8月 2019 - Case No. C/09/573969/ KG ZA 19-462

A. Facts

In 2012, the Claimant, Sisvel International (Sisvel), acquired from Nokia patents EP 1 129 536 B1 (EP 536) and EP 1 119 997 B1 (EP 997) [1178] . EP 536 and EP 997 that have been declared standard essential patents (SEPs). EP 536 relates to the EGPRS/EDGE functionality of the GSM standard, while EP 997 has been declared essential to the LTE standard [1179] .

On 10 April 2013, Sisvel made a FRAND commitment to the ETSI with a list of patents declared as essential, including EP 536 and EP 997 [1180] .

Sisvel contacted the Defendant, Xiaomi, on 15 October 2013 for a license under the Sisvel Wireless Patents [1181] , under which patents EP 536 and EP 997 are licensed.

Sisvel sent a further letter dated 16 July 2014 and followed up by emails on 3 December 2014, 4 December 2014 and 5 March 2015 inviting Xiaomi to contact Sisvel to negotiate a FRAND license [1182] .

On 21 November 2018, Belsimpel (a Dutch online retailer) announced on its website that Xiaomi had selected Belsimpel as its official partner in the Netherlands [1183] .

On 29 March 2019, Xiaomi prepared to enter the Dutch market by opening physical stores and online shops [1184] .

On 23 April 2019, Sisvel filed proceedings against Xiaomi in London, seeking a declaration that the terms and conditions of the MCP Pool License (under which EP 536 and EP 997 are licensed) are FRAND or, in the alternative, the determination of a FRAND rate, and that three of the MCP patents (including EP 536 and EP 997) are valid and infringed [1185] .

In the current proceedings before the Court of The Hague (the Court), launched on 29 May 2019, Sisvel sought a preliminary injunction against Xiaomi; a preliminary injunction to be imposed until Xiaomi agrees on Sisvel’s offer to go to arbitration, or alternatively the removal of the EGPRS/EDGE and LTE functionalities in Xiaomi’s products [1179] . The Court rejected Sisvel’s injunction request, considering the urgency requirement was not fulfilled [1186] and concluded that the removal of standardised functionalities or standard-compliant products from the market would be too damaging to Xiaomi [1187] .

B. Court’s reasoning

Urgency

Xiaomi challenged the adequacy of a preliminary ruling for this case in view of the complexity of the matter and the balance of parties’ interests [1186] . The Court accepted this argument and referred to the circumstances of the case to reject the preliminary injunction [1188] .

The Court stated that FRAND licensing disputes are not well suited to preliminary rulings. As the SEP-holder has committed to license its SEPs on FRAND terms and conditions, the damages it suffers from the infringement is the absence of a FRAND license and related compensation [1189] . The Court further added that in compliance with the CJEU ruling in Huawei v. ZTE, [1190] a SEP-holder is not prevented from seeking an injunction against an infringer [1189] . However, the urgency requirement for an injunction on SEPs is higher than for a common patent infringement cases [1188] .

When assessing each party’s interests, the Court considered that the damage to Xiaomi, active in the Netherlands since March 2019, would be high: Xiaomi would either have to remove the EGPRS/EDGE and LTE functionality from its phones or stop selling the relevant phones on the Dutch market [1191] . On Sisvel’s side, the Court found a lack of urgency in view of the circumstances of the case: Sisvel was looking for an international FRAND license and negotiations had lasted for 6 years, that the Court considered as a counterindication of urgency [1188] . The Court declared, however, that the fact EP 997 was due to expire soon was irrelevant for the assessment of urgency, as Sisvel holds other SEPs in its portfolio that will last for longer term [1188] .

Another factor that the Court found important, in balancing the interests of each side, was that Sisvel had, in parallel to the Dutch proceedings, also asked the High Court in London to declare that Sisvel’s FRAND rate was indeed FRAND or, in the alternative, to set an international FRAND rate for Sisvel’s portfolio. Sisvel had committed to comply with the rate the High Court would set, even in the Dutch proceedings [1192] .

The Court concluded that Sisvel was seeking an injunction which could simply be avoided through the payment of a FRAND rate [1188] . And if the Court determined a FRAND rate in a preliminary ruling which turned out to be higher than a FRAND rate determined in a full trial on merits in the High Court in London or the Netherlands, then legal uncertainty would follow [1188] . The Court also stated that Sisvel’s sole interest was to receive FRAND compensation. It thus considered the preliminary injunction proceedings to be more a means for Sisvel to force Xiaomi to the negotiations table and to pay a compensation that may not necessarily be FRAND [1193] . The Court therefore refused to grant Sisvel injunctive relief.

  • [1178] Court of The Hague, judgement dated 1 August 2019, par. 2.2.
  • [1179] Court of The Hague, judgement dated 1 August 2019, par. 3.1.
  • [1180] Court of The Hague, judgement dated 1 August 2019, par. 2.9.
  • [1181] Court of The Hague, judgement dated 1 August 2019, par. 2.11.
  • [1182] Court of The Hague, judgement dated 1 August 2019, par. 2.12.
  • [1183] Court of The Hague, judgement dated 1 August 2019, par. 2.14.
  • [1184] Court of The Hague, judgement dated 1 August 2019, par. 2.15.
  • [1185] Court of The Hague, judgement dated 1 August 2019, par. 2.16.
  • [1186] Court of The Hague, judgement dated 1 August 2019, par. 4.2 and following.
  • [1187] Court of The Hague, judgement dated 1 August 2019, par. 4.4
  • [1188] Ibidem
  • [1189] Court of The Hague, judgement dated 1 August 2019, par. 4.3.
  • [1190] Court of Justice of the European Union, Huawei v ZTE, judgment dated 6 July 2015.
  • [1191] Court of The Hague, judgement dated 1 August 2019, par. 4.4.
  • [1192] Court of The Hague, judgement dated 1 August 2019, par. 4.5.
  • [1193] Court of The Hague, judgement dated 1 August 2019, par. 4.6.


Sisvel v Sun Cupid, District Court of The Hague

2 3月 2020 - Case No. C/09/582418 HA ZA 19-1123

This case law summary was also published by The IPKat.

A. Facts

Sisvel International S.A. (Sisvel) licenses patent EP 2 139 272 B1 (EP 272) as part of its LTE/LTE-A Patent Pool [1194] . The LTE/LTE-A Patent Pool is a subsection of Sisvel’s MCP licensing program [1195] . EP272 has been declared as essential to the 4G-LTE standard [1196] .

Sun Cupid Technology (HK) Ltd. develops and sells, through exports from China and imports in European countries, smartphones that implement the LTE technology [1197] . On 22 May 2015, Sisvel notified Sun Cupid Technology (HK) Ltd about its licensing program [1194] . Sun Cupid did not want to execute a license under the LTE/LTE-A Patent Pool [1195] .

Sisvel filed proceedings against Sun Cupid Technology (HK) Ltd., the parent company [1198] , and its subsidiaries, Sun Cupid (Shen Zhen) Electronic Ltd., Nuu Limited, Nuu Mobile (HK) Limited , Neotic Inc., Nuu Mobile UK Limited, and Pyramid Ltd. Before the District Court of the Hague (Court). Sisvel sought an injunction against Sun Cupid and its subsidiaries for infringement of EP 272 [1199] , as well as the interdiction for Sun Cupid and its subsidiaries to directly or indirectly infringe the patent EP 272 [1200] , act unlawfully against Sisvel through direct or indirect infringement [1201] , the notification of infringement to resellers [1202] , market participants and professional users, the recall and destruction of products [1203] , the removal of infringing products from the websites [1204] , a notification in Dutch newspapers [1205] and on relevant websites [1206] , a compensation for damages [1207] and the provision of the list of resellers and models as well as their price [1208] .

The Court granted Sisvel’s claims (apart on incident and market participants and customers), subject to the following limitation explained below.

B. Court’s reasoning

Injunction and recall of products

To avoid execution issues, the Court determined that infringing products are products that infringe the Dutch part of EP 272 and support or implement the LTE standard [1209] . The Court granted the injunction to Sisvel [1210] .

But it rejected Sisvel’s claims based on unlawful handling for lack of interest [1211] : Sisvel did not demonstrate that those claims would lead to broader measures or interdictions than those based on direct or indirect infringement [1195] .

With respect to the notification and recall of products requested by Sisvel, the Court limited it to resellers [1212] : Sisvel did not sufficiently indicated who were the market participants who should be notified about the infringement and required to return the products [1213] . The Court also highlighted that the recall of products was mostly focused on resellers and measures against customers would not be taken into account [1195] .

Compensation for damages, penalty fee and process costs.

Regarding damages, the Court used Sisvel’s notification to Sun Cupid Technology (HK) Ltd. dated 22 May 2015 as the starting point to calculate the compensation for damages [1198] . As all defendants cooperate for the commercialisation of infringing products and Sun Cupid Technology (HK) Ltd is the parent company of all other defendants, the Court considered that this date applies to all defendants as starting point for damages calculation [1195] . Sisvel’s request to have an independent accountant to calculate the profits made by Sun Cupid was rejected by the Court because it could lead to execution problems, as accountants have to comply with rules that prevent them from drawing conclusions that can confirm the accuracy of their task [1214] . Therefore, the Court ordered Sun Cupid to provide Sisvel with the profits on infringing products since 22 May 2015 [1215] and either compensate Sisvel for the damages occurred or the profits made on the infringing products, at Sisvel’s choice [1216] .

Sisvel asked for a penalty payment of either €10,000 per day where the defendants do not comply with the decision or €1,000 per product, at its choice [1217] . The Court decided that the penalty fee per product would be applicable only when the violation of the decision occurs per product and would be capped to the process costs amounts [1211] .

Sun Cupid has to pay for the process costs [1218] .

Jurisdiction

The Court assessed its competence for Sisvel’s principal claim against defendants not based in the Netherlands [1219] on Article 7.2 and 6.1 [1220] of the Brussels I Regulation [1221] . The competence is limited to the Netherlands [1220] .

  • [1194] Court of The Hague, judgement dated 2 March 2020, par. 2.4.2
  • [1195] Ibidem
  • [1196] Court of The Hague, judgement dated 2 March 2020, par. 2.4.1
  • [1197] Court of The Hague, judgement dated 2 March 2020, par. 2.4.3
  • [1198] Court of The Hague, judgement dated 2 March 2020, par. 5.7
  • [1199] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (I) and 2.2. (i)
  • [1200] Court of The Hague, judgement dated 2 March 2020, par. 2.2. (ii)
  • [1201] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (II) and 2.2. (ii)
  • [1202] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (iii)
  • [1203] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (iv) and (v)
  • [1204] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (vi)
  • [1205] Court of The Hague