Huawei対ZTE事件CJEU判決後の判例法
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Updated 23 1月 2018

LG Mannheim

LG Mannheim
4 3月 2016 - Case No. 7 O 24/14

A. Facts

Case No. 7 O 24/14 [1] related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard (‘subtitle data encoding/decoding and recording medium for the same’). [2] The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used such DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. In early 2013, the patent pool approached the defendant’s parent company about the use of their patents in general.

On 30 May 2014, the defendant offered to enter into a license agreement for the respective German patent. The defendant indicated that it was willing to enter into negotiations for a portfolio license (but for Germany only). It was also willing to have the claimant determine the royalties owed under section 315 of the German Civil Code. On 25 July 2014, the claimant suggested to change the license offer to a worldwide portfolio license. The defendant rejected and informed the claimant on 22 August 2014 as to the number of respective computers they put into circulation between July 2013 and June 2014 in Germany.

On 13 March 2015, the claimant made an offer for a worldwide portfolio license. On 5 May 2015, the defendant requested the relevant claim charts and further details as to how the license fees had been calculated. On 25 June 2015, the claimant sent the claim charts but refused to elaborate on the calculation method. The claimant suggested a meeting in which it would answer further questions. The defendant responded on 13 July 2015 that most of the claim charts lacked necessary details. In a meeting between the claimant and the defendant’s parent company on 3 September 2015, the parties were unable to reach an agreement. On 30 September 2015, the claimant sent a PowerPoint presentation containing explanations regarding the patent and the calculation of the license fees.

The District Court of Mannheim granted an injunction order on 4 March 2016. [3] It also held that the defendant was liable for compensation and ordered it to render full and detailed accounts of its sales to determine the amount of compensation owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

B. Court’s Reasoning

1. Notice of Infringement

According to the Huawei/ZTE ruling, the claimant is required to notify the defendant of the alleged patent infringement. According to the District Court, this notice is supposed to provide the defendant an opportunity to assess the patent situation. [4] Thus, it is insufficient to notify the defendant that its products contain the respective standard and it is therefore infringing the SEP. Instead, the claimant is required to specify the infringed patent, the standard in question, and that the patent has been declared essential. The level of detail required depends on the respective situation. [5] However, the description does not need to be as thorough as a statement of claim in patent litigation. In the eyes of the court, the customary claim charts (which show the relevant patent claims and the corresponding passages of the standard) will typically be sufficient. By sending the charts to the defendant, the claimant had met its obligations under the Huawei/ZTE ruling. [6]

The Huawei/ZTE principles require the SEP holder to give notice of infringement before commencing patent infringement proceedings. Otherwise, the SEP holder would abuse its market power, which would mean that the patent infringement court would not be able to grant an injunction order. However, according to the District Court, in such a situation the SEP holder would not lose its patent rights, but would be prevented from exercising those rights in court. [7] Proceedings that had been commenced prior to the Huawei/ZTE ruling present a special case. In that situation, the SEP holder could not have been aware of the obligations that the CJEU subsequently imposed on claimants. Thus, it must be possible for an SEP holder to go through the Huawei/ZTE process subsequently without losing the pending lawsuit. [8] On this basis, the District Could held that the claimant had taken all necessary steps after commencing proceedings, which met the Huawei/ZTE requirements. [9]

2. The SEP Owner’s Licensing Offer

The District Court expressed its view that the CJEU had wanted to establish a procedure that keeps the infringement proceedings free of complicated deliberations about the conditions of the offer, similarly to the German Federal Court of Justice decision Orange Book Standard. [10] If the alleged infringer argues that the conditions of the offer are not FRAND – and, according to the court, alleged infringers typically do so – it is not the role of the infringement court to examine the conditions of the offer and decide whether they are FRAND or not. [5] Thus, the District Court took the view that an infringement court only assesses in a summary review whether the conditions were not evidently non-FRAND. An offer is only non-FRAND if it is under the relevant circumstances abusive. For example, this would be the case if the conditions offered to the alleged infringer were significantly worse than those offered to third parties. [11] The District Court held that in the case in issue the royalties were not evidently non-FRAND because the royalty rates were generally accepted in the market. [12]

The offer needs to include the calculation method in respect of the royalties. [11] However, the CJEU did not elaborate on the level of detail required. [13] The District Court took the view that the SEP holder needs to enable the alleged infringer to understand why the offer is FRAND. In the case in issue, the claimant had included the calculation method. It had also provided further explanations regarding the calculation, which met the Huawei/ZTE requirements. [14]

3. The standard implementer’s reaction

The alleged infringer is required to respond to the SEP proprietor’s license offer, even if the infringer is of the opinion that the offer does not meet the FRAND criteria. [13] The only possible exception is an offer that, by means of summary examination, is clearly not FRAND, which would constitute an abuse of market power. A counter-offer would need to be made as soon as possible, taking into account recognized commercial practices in the field and good faith. The District Court held that the defendant had not made an adequate counter-offer. It is common business practice to enter into license agreements in respect of worldwide portfolio licenses. [15] The defendant’s counter-offer only included the respective German license, which was deemed by the District Court as insufficient. [15] Further, the defendant had not made an adequate deposit into the court as required under the Huawei/ZTE principles. [16]

C. Other Important Issues

The court held that the procedures prescribed by the Huawei/ZTE ruling apply to applications for injunctions and recall orders, but not to rendering accounts and compensation. Regarding rendering accounts and compensation, SEP holders could pursue their rights in court without additional requirements. [13]

Further, the District Court was of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. Even if the claimant’s conduct was anti-competitive pursuant to Art. 101 TFEU, the standardisation agreement would be void. [17] This has no implications for patent infringement proceedings.

The court also held that there was no general rule that the SEP holder could only bring proceedings against the manufacturer of the infringing product. [18] In the eyes of the District Court, the Higher Regional Court of Karlsruhe decision 6 U 44/15 (23 April 2015) did not establish such a principle. In that case, the defendant was a company that acted merely as a distributor of infringing products (which means it was reselling the products without making any alterations). In contrast, the defendant in the present case had installed the infringing software onto laptops and then sold them under its own brand name. Thus, the two cases were not comparable. [18]

  • [1] See also OLG Karlsruhe, 8 September 2016, 6 U 58/16 (application to stay execution of LG Mannheim, 7 O 24/14).
  • [2]  LG Mannheim, 4 March 2016, 7 O 24/14, pp. 4-6.
  • [3] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 2-3.
  • [4] LG Mannheim, 4 March 2016, 7 O 24/14, p. 22.
  • [5] LG Mannheim, 4 March 2016, 7 O 24/14, p. 23.
  • [6] LG Mannheim, 4 March 2016, 7 O 24/14, p. 34/35.
  • [7] LG Mannheim, 4 March 2016, 7 O 24/14, p. 26.
  • [8] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 27-30.
  • [9] LG Mannheim, 4 March 2016, 7 O 24/14, p. 33.
  • [10] LG Mannheim, 4 March 2016, 7 O 24/14, p. 21.
  • [11] LG Mannheim, 4 March 2016, 7 O 24/14, p. 24.
  • [12] LG Mannheim, 4 March 2016, 7 O 24/14, p. 37.
  • [13] LG Mannheim, 4 March 2016, 7 O 24/14, p. 25.
  • [14] LG Mannheim, 4 March 2016, 7 O 24/14, p. 35/36.
  • [15] LG Mannheim, 4 March 2016, 7 O 24/14, p. 38.
  • [16] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 38-40.
  • [17] LG Mannheim, 4 March 2016, 7 O 24/14, p. 43.
  • [18] LG Mannheim, 4 March 2016, 7 O 24/14, p. 44.

Updated 17 1月 2018

Sisvel v Haier

OLG Düsseldorf
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. [19] The District Court also held that the defendants were liable for compensation in principle and ordered them to render full and detailed account of its sales. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels.

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

B. Court’s reasoning

1. Market Power

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

2. Notice of Infringement

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

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

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

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

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

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

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

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

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

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

Updated 26 1月 2017

Saint Lawrence v Deutsche Telekom

LG Mannheim
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. [49] The court made however clear that enforcing the right of injunction is not a misuse when the infringer, even after the complaint has been raised and despite a reasonable timeframe, does not show any interest in getting a license.
      As regards the Huawei requirement to alert the standard user of the infringement, the court focused on different aspects. Since, in the present case, Defendant refrained from expressing its willingness to conclude a licensing agreement on FRAND terms it was left undecided whether Claimant complied with its obligation to notify prior to the initiation of court proceedings by sending, after bringing the action but before the statement of claims was served to Defendant, a letter from which Defendant could recognize that an action had already been brought.
      The Mannheim court did also not determine whether Claimant, in order to avoid a violation of Article 102 TFEU, had to inform “H” about the patent infringement because the latter learned or could have easily learned about the possible violation of the SEP during a phone call with Defendant in August 2014. [50] However, “H” did not sufficiently express its willingness to conclude a licensing agreement on FRAND terms because it took “H” more than three months to submit a license request after it had become aware of the court action. “H” could have objected a violation of Article 102 TFEU if it had expressed such willingness and complied with the subsequent Huawei obligations. However, “H” failed to do so also because it refrained from submitting a satisfying counter-offer. [51]
    2. The SEP owner’s licensing offer
      The court seems to favor FRAND-compatibility of worldwide licenses as it clarifies that limiting the counter-offer to Germany was “unacceptable” but does not decide on the issue. Also, the court left undecided whether the royalty rate offered by Claimant satisfied FRAND. [52]
    3. The standard implementer’s reaction
      Considering the subsequent conduct obligation of the standard user, the district court found that a FRAND counter-offer has to be submitted irrespective of whether the preceding licensing offer made by the SEP proprietor itself is FRAND. In order to trigger the counter-offer obligation it is sufficient that the licensing offer contains—as in the present case—all information, in particular regarding royalty calculation, which is necessary for Defendant to submit a counter-offer corresponding to FRAND terms. The Huawei obligation to diligently respond does not merely arise where a licensing offer is FRAND but it has to be considered as an expression of the sincere willingness of Defendant to conclude a licensing agreement. If such willingness is given, the patent proprietor will not be allowed to present a subsequent FRAND licensing offer after the initiation of proceedings. [53]
      The court then analyzed whether Defendant’s counter-offer met the ECJ requirements in terms of content, but left it undecided whether a limitation to Germany could be in compliance with FRAND terms. It denied the existence of a “specific” counter-offer in the present case because the amount of the royalty was not specified in the document itself but was intended to be determined by an independent third party. [54] In consequence, “H” could not fulfill its obligation to provide appropriate security because it was not possible to anticipate which amount of royalty would have been stipulated by the “independent third party”. [55]
  3. Other important issues
    In the course of licensing negotiations, the standard user is neither prevented from challenging validity, standard-essentiality or effective use of the patent in question nor to reserve its right to do so. [56]
    As regards ownership and the transfer of the patent from the original patent proprietor to the non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes the presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [57]
    No patent ambush-defense based on § 242 BGB could be raised. As the court assessed in a detailed, torts-based analysis, [58] Defendant and Intervener could establish neither collusion of “V” and “N” (a participant in the setting of the AMR-WB standard) nor bad faith of “N” regarding “V” ’s patents. Hence, non-declaration by “N” did not amount to a patent ambush. Nor could non-declaration by “V” constitute a patent ambush since “V” was no member of ETSI—and, hence, not bound by a duty to disclose resulting from ETSI’s IP policy—when the AMR-WB standard was being set. Furthermore, Defendant and Intervener could not show why they should have been adversely affected by “V” ’s alleged violation of the ETSI IPR Policy, given that Claimant had declared its willingness to grant a license on FRAND terms. [59] In particular, they could not substantiate that a different form of the standard, avoiding “V” ’s patents, would have been set, had the standard-setting participants known about these patents. [60] Given these deficiencies in the attempt to establish a patent ambush the court left open whether such an ambush would result in an obligation to grant a royalty free- or “only” a FRAND license but indicated to favor the FRAND license-sanction. [61]
  • [49] Case No. 2 O 106/14, para. 133
  • [50] Case No. 2 O 106/14, para. 139-144
  • [51] Case No. 2 O 106/14, para. 146-149
  • [52] Case No. 2 O 106/14, para. 152-153
  • [53] Case No. 2 O 106/14, para. 153-160
  • [54] Case No. 2 O 106/14, para. 158-164
  • [55] Case No. 2 O 106/14, para. 167-169
  • [56] Case No. 2 O 106/14, para. 146
  • [57] Case No. 2 O 106/14, para. 78-80
  • [58] Cf. for details LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 119-131
  • [59] Case No. 2 O 106/14, para. 118-131
  • [60] Cf. LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 131, i.a. on the mechanism of “blind selection” among technological alternatives, (initially) irrespective of existing patents and their ownership situation.
  • [61] Case No. 2 O 106/14, para. 198

Updated 20 2月 2018

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

英国裁判所の決定
21 11月 2017 - Case No. HP-2017-000045

A. Facts

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

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

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

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

B. Court’s reasoning

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

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

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

C. Other issues

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


Updated 26 1月 2017

Saint Lawrence v Vodafone

LG Düsseldorf
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, [62] Claimant offered a license to the Intervener. On 23 February 2015 and on 2 April 2015 respectively, the Intervener made two licensing offers, including third party determination (arbitration panel or English court) of the amount of royalty, for the whole German patent portfolio of Claimant. An additional offer for a licensing agreement, limited to Germany and implementing a royalty of USD 0.0055 per patent by reference to the “WCDMA Patent Pools”, was made by the Intervener on 6 March 2015 and 24 September 2015 respectively, but it was finally refused by Claimant on 4 October 2015. Moreover, the Intervener provided a bank “guarantee of payment” as of 3 September 2015, being modified by letter as of 10 November 2015, and also rendered account of past and prospective sales in Germany since 2011.
  2. Court’s reasoning
    1. Market power and notice of infringement
      The court leaves open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power. [63] The court declared the Huawei rules applicable to claims for the recall of products. [64] As regards the Huawei requirement to alert the standard user of the infringement, the decision arrived at various findings of interest: Firstly, the judges found that—in “non-transitional” cases where the lawsuit was brought after the Huawei decision—the infringement notification has to take place before the action is filed, or the latest before the advance payment on costs is made. In transitional cases, such as the present case, a delayed infringement notification, taking place after the advance payment on costs as well as the submission of the court action, but before the statement of claims is served, is admissible. [65] Moreover, an infringement notification could possibly be omitted (in particular) if—as in the present case—the patent user already disposes of all necessary information and lacks willingness to license. [66] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [67] Secondly, the court specified the minimum content of the infringement notification which has to indicate at least the number of the patent, the contested embodiments and the alleged acts of use performed by the standard implementer. The court did not decide whether additional information has to be provided, in particular regarding the interpretation of the patent claims or on which part of the standard the patent reads, but it stated that such additional information is not harmful to the patent proprietor. [68] Lastly, the court detailed on the particular situation of the Intervener, being Defendant’s manufacturer and supplier in the present case: Even though a FRAND defense successfully raised by the Intervener would in general also cover subsequent levels of the distribution chain, the Huawei requirements apply only indirectly to suppliers of contested embodiments which have not been sued themselves. Accordingly, the SEP proprietor is not obliged to notify the patent infringement to third parties, but as soon as a request to grant a license on FRAND terms is submitted the (adapted) Huawei procedure applies. [69] In casu, no separate infringement notice vis-à-vis the Intervener was required since the Intervener was, since August 2014, aware of the action having been brought.
    2. The SEP owner’s licensing offer
      Since the patent user did not express its willingness to conclude a licensing agreement in due time, the court found Claimant to comply with the Huawei requirement to submit a licensing offer on FRAND terms even though the offer was made in the course of the ongoing litigation. For transitional cases, as the present one, this holds true even if infringement notification and court action take place at the same time. [70] Besides, the court analyzed under which circumstances licensing conditions can be considered as FRAND according to Huawei. In the opinion of the judges, the more licensing agreements implementing comparable terms the SEP proprietor has already concluded, the stronger is the presumption that these conditions are FRAND, unless factual reasons—which are to be demonstrated by the patent user—justify modified terms. Recognized commercial practice in the relevant sector has to be considered when defining the admissible scope of the licensing agreement. If patent portfolios are usually covered by group or worldwide licenses in the relevant market, a (worldwide) portfolio license will be FRAND unless the circumstances of the specific case, e.g. the SEP proprietor’s market activity being limited to one geographic market, require a modification. [71] Accordingly, Claimant’s (worldwide) licensing offer to Defendant for the whole AMR-WB pool, demanding royalties of USD 0.26 per mobile device that implemented the standard and was produced or marketed in countries in which the SEP was in force, and complying with Claimants existing licensing practice (accessible on the Internet and already implemented in 12 licensing agreements) was declared FRAND. While the court considered that comparable licensing agreements “represent an important indicator of the adequacy of the license terms offered” it clarified that the significance of a patent pool as an indication of FRAND conformity is “limited”. Defendant and the Intervener failed to show that the portfolio comprised (non-used) non-SEPs as well. [72] They further failed to show that the pre-concluded licensing agreements provided no valid basis for comparison as they were concluded under the threat of pending litigation. [73] In order to fulfill the Huawei obligation of specifying the calculation of royalties, the SEP proprietor only has to provide the information necessary to determine the amount of royalties to be paid, e.g. the royalty per unit and the products covered by the license. While the court left undecided whether additional indications, e.g. concerning the FRAND character of the licensing offer, are necessary to comply with Huawei, it found that the SEP proprietor’s duty to inform should not be interpreted too strictly as FRAND does regularly encompass a range of values that will be fair, reasonable, and non-discriminatory. [74] Claimant’s licensing offer presented to the Intervener was considered as being FRAND for the same reasons. Furthermore, the court emphasized that the contractual clause allowing for judicial review of the royalties offered could be a possible way to avoid abusive practices and to ensure that licensing offers correspond to FRAND terms. [75]
    3. The standard implementer’s reaction
      The court found that the more details the infringement notification contains, the less time remains for the standard user to examine the patent(s) at issue and to express its willingness to conclude a licensing agreement on FRAND terms. In the present case, Defendant did not comply with Huawei because it took more than five months to react and then only asked for proof of the alleged infringement. Given this excessive delay, the court did not decide whether Defendant’s reaction satisfied the Huawei requirements in terms of content. It denied the possibility to remedy a belated reaction by a subsequent declaration of willingness to license. On the contrary, and as a consequence of the patent user’s non-compliance, the SEP proprietor may continue the infringement action without violating Article 102 TFEU, but it still has to grant licenses on FRAND terms. [76] Whether the Intervener satisfied the ECJ criteria was left undecided. [77] The court made some further remarks of interest as to the Huawei requirements concerning the standard implementer: Firstly, it left undecided whether the obligation of the patent user to diligently respond is caused also by a (potentially) non-FRAND licensing offer. [78] Secondly, a standard user who has taken a license is not prevented from challenging validity and essentiality of the SEP afterwards, nor is the SEP proprietor entitled to terminate the license if such a challenge takes place. However, the standard implementer may not delay the (unconditional) conclusion of the licensing agreement until a final court decision on these issues has been rendered. While validity and standard-essentiality is litigated, the licensee remains obliged to pay royalties and it cannot request to insert into the licensing contract a clause entitling it to reclaim paid royalties in case of its success in court. [79] Thirdly, as, in the present case, no specific counter-offers satisfying FRAND terms were submitted and Defendant could not establish that Claimant had waived this requirement the court did not decide on whether a SEP proprietor is obliged to negotiate further although itself and the patent user have submitted FRAND offers. [80] None of the counter-offers of the Intervener were FRAND in terms of content. They were either inadmissibly limited to Germany, contained no precise royalty, were not submitted “promptly” because the standard user had waited until the oral pleadings in the parallel procedure, or they proposed royalties per device which the court considered as too low. [81] While it was therefore held to be irrelevant whether, in the first place, the Intervener duly declared its willingness to license, the court emphasized that the Intervener’s readiness to take a license only after the SEP infringement was determined in court did not satisfy the Huawei standard of conduct. [82] Moreover, the obligation imposed by Huawei to provide appropriate security and to render account was not fulfilled. While Defendant refrained from taking any of these actions, the Intervener waited several months after the counter-offers were refused in order to submit its bank “guarantee of payment”, which was not recognized as “appropriate security” due to its amount and its limitation to acts of use in Germany. [83] Neither was the Intervener’s initial proposal to have the security—if requested by Claimant—determined by an arbitration tribunal or by an English court accepted as an appropriate way to provide security. [84]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [85] Suing a network operator instead of the undertakings producing devices operating in the network constitutes (at least under the circumstances of this case and absent selective enforcement) no violation of competition law even though this strategy might aim at using the action against the network operator as a “lever” to obtain licensing commitments from the device suppliers. On the other hand, device manufacturers are entitled to a FRAND license as well and can raise the FRAND defense if such a license is not granted. In consequence, the court perceives a fair balance of interests as the SEP proprietor can choose on which level of the chain of production to sue while the undertakings in the chain of production can choose on which level to take a license. [86] Furthermore, no patent ambush-defense based on § 242 BGB could be raised because, firstly, Defendant and the Intervener could not substantiate the alleged patent ambush by “Y” and “C”, being the original SEP proprietors; secondly, they could not show that a different patent declaration conduct would have resulted in a different version of the standard excluding the patent-in-suit; thirdly, the alleged patent ambush would, arguably, have resulted only in a FRAND-licensing obligation and, fourthly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [87]
  • [62] This is the date mentioned by the Court although “23 January 2015” may seem more plausible and the date given by the Court may result from a scrivener’s error.
  • [63] Case No. 4a O 73/14, para. 184
  • [64] Case No. 4a O 73/14, para. 187
  • [65] Case No. 4a O 73/14, para. 195 et seq.
  • [66] Case No. 4a O 73/14, para. 208-210
  • [67] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [68] Case No. 4a O 73/14, para. 193
  • [69] Case No. 4a O 73/14, para. 270 et seq.
  • [70] Case No. 4a O 73/14, para. 222 et seq.
  • [71] Case No. 4a O 73/14, para. 225 et seq.
  • [72] Case No. 4a O 73/14, para. 225 et seq. On the relevance of the SIPRO-pool royalty rates, cf. LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 245-248. On the facts indicating that a worldwide license was appropriate LG Düsseldorf, 31 March 2016 – Case No. 4a O 73/14, para. 249-255.
  • [73] Case No. 4a O 73/14, para. 234-242. The court argued that it is questionable in principle how much the threat of a claim for injunctive relief can (inadmissibly) affect license agreement negotiations, since the Orange Book case law of the BGH (German Federal Court of Justice), the Motorola decision of the European Commission, and now the CJEU judgment in the Huawei Technologies/ZTE Case could be and can be invoked against inappropriate demands that are in breach of antitrust law.
  • [74] Case No. 4a O 73/14, para. 256 et seq.
  • [75] Case No. 4a O 73/14, para. 279 et seq.
  • [76] Case No. 4a O 73/14, para. 214-220
  • [77] Case No. 4a O 73/14, para. 214-220; 278
  • [78] Case No. 4a O 73/14, para. 266
  • [79] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [80] Case No. 4a O 73/14, para. 264
  • [81] Case No. 4a O 73/14, para. 291 et seq.
  • [82] Case No. 4a O 73/14, para. 278
  • [83] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [84] Case No. 4a O 73/14, para. 304
  • [85] Case No. 4a O 73/14, para. 189
  • [86] Case No. 4a O 73/14, para. 309-313
  • [87] Case No. 4a O 73/14, para. 317 et seq.

Updated 26 1月 2017

Pioneer v Acer

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

Updated 24 7月 2020

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

Federal Court of Justice - BGH
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 [100] 。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 [101]

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 [102] 。 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 [103] 。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 [104] 。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 [105]

2020年5月5日付のこの判決により  [106] (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 [107]

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 [108]

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  [109]

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 [110] 。従って、いくつかの要因を考慮する必要がある [111] 。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 [112]  。

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 [113]

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 [114] 。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  [115] 。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 [116] 。 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 [117]

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 [118] 。 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 [118] 。 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  [118]

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  [119]

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  [119]

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  [120]  。

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  [121] 。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。 [121] 。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。 [122]  。

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) [123]  。
  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 [124]

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 [125] 。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  [126]  。

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 [127]  。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  [127]  。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。 [128]  。

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  [129] [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 [130]  。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 [130]  。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)  [130]  。

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 [131] 。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 [131]

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  [132]  。

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 [133] 。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 [134] 。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  [134]  。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 [134] 。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  [135]  。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  [136]  。

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)  [137]  。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  [137]  。

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  [138]

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 [139]  。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 [139]  。

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  [140]  。

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  [141]  。

 

  • [100] 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。
  • [101] 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。
  • [102] 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。
  • [103] 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。
  • [104] 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)。
  • [105] 連邦裁判所、2020年3月10日付判決、事件番号No. X ZR 44/18。
  • [106] Sisvel 対Haier、連邦裁判所、2020年5月5日付判決、事件番号KZR 36/17。
  • [107] 同判決、第9節以下、及び第59節。
  • [108] 同判決、第52節。
  • [109] 同判決、第54節。
  • [110] 同判決、第56節。
  • [111] 同判決、第 57節以下。
  • [112] 同判決、第58節。
  • [113] 同判決、第59節以下。
  • [114] 同判決、第61節。
  • [115] 同判決、第63節。
  • [116] 同判決、第62節。
  • [117] 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。
  • [118] 同判決、第64節。
  • [119] 同判決、第65節。
  • [120] 同判決、第67節以下。
  • [121] 同判決、第69節。
  • [122] 同判決、第70節。
  • [123] 同判決、第71節。
  • [124] 同判決、第72節。
  • [125] 同判決、第73節以下。
  • [126] 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。
  • [127] 同判決、第74節。
  • [128] 同判決、第74節及び第85節。
  • [129] 同判決、第89節。
  • [130] 同判決、第85節。
  • [131] 同判決、第87節。
  • [132] 同判決、第86 節以下。
  • [133] 同判決、第91節以下。
  • [134] 同判決、第92節。
  • [135] 同判決、第93節以下。
  • [136] 同判決、第94節。
  • [137] 同判決、第83節。
  • [138] 同判決、第95節。
  • [139] 同判決、第96節。
  • [140] 同判決、第98節。
  • [141] 同判決、第97節。

Updated 23 1月 2018

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

英国裁判所の決定
5 4月 2017 - Case No. HP-2014-000005

A. Facts

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

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

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

B. Court’s Reasoning

1. Market Power

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

2. SEP Proprietor’s Licensing Offer

a. FRAND Declaration as Conceptual Basis

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

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

b. ‘True FRAND Rate’

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

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

c. Discrimination

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

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

d. Territorial Scope of License

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

C. Other Important Issues

1. Comparable agreements and reasonable aggregate royalty rate

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

2. Principles derived from Huawei v. ZTE

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

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

Updated 16 6月 2021

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

LG Munich
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 [180] , 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 [181] . 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.) [182] .
 

1. Competition law defence
Dominant market position

The Court held that Conversant had a dominant market position within the meaning of Article 102 TFEU [183] .

The exclusivity rights arising from a patent do not establish a dominant market position by themselves. [184] 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 [185] . In the Court's eyes, this applied to the patent in suit. [186]

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. [187] Furthermore, the additional option to get a license from the patent in suit from Avanci did not limit Conversant's market dominant position. [188]
 

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. [189] In this context, not only private interests, but also the public interest must be taken into account. [190] 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. [191]

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) [192] - 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. [193] 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. [194]

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. [195] 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. [196] 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. [197]
 

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. [198] 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. [199]
 

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'. [200]

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. [201] 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. [201]

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. [202] 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. [202]

In addition, the Court highlighted that timing in negotiations is a factor, which must be considered in the assessment of willingness as well. [203] Otherwise, implementers would lack motivation to seriously engage in negotiations in a timely manner. [204] Rigid deadlines cannot be set, a case-by-case assessment is needed. [205] 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. [205]

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. [206] A counteroffer made after the initiation of infringement proceedings will, as a rule, not be acceptable. [207] 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. [204] 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. [208]

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. [209] 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. [210]

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 [211] - Daimler had chosen to apply delaying tactics [212] .

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. [213] 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. [213]

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. [214] 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. [215]

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. [216] The Court particularly objected Daimler's choice to define the 'unwillingness' of its suppliers as a condition for signing an own licence with Conversant. [217]

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. [218]

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. [219]
 

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. [220] Moreover, it rather served as an 'alibi'. [211]

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. [220] 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. [221] 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. [222]

Besides that, the Court found that Daimler's counteroffer was, in terms of content, 'evidently not FRAND'. [223] Based on a summary analysis, the licensing fees offered by Daimler were considered to be evidently too low. [224]

The Court noted that FRAND is a range and that there are several methods for calculating FRAND royalties. [224] The Court relied on the so-called 'top-down'-approach (which both Conversant and Daimler had used). [225] 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. [226] 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. [226]

In addition, the Court pointed out that the average purchase price of the TCU is no adequate royalty base under FRAND principles. [227] The value of a SEP is reflected by a royalty, which is adequately in proportion to the value of the service provided. [228] 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. [228] As a consequence, relevant is the value, which Daimler's customers attach to the LTE-based features in a car. [228] The purchase price of TCUs paid by Daimler to its suppliers does not mirror this value. [228]
 

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. [229]

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. [230] 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). [231] 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. [232] 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. [232]

In line with the above, the Court confirmed that by seeking to license Daimler, Conversant did not act in an abusive or discriminatory way. [233]

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. [234] 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. [234] 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. [235]

The Court added that the SEP holder is free to decide against which infringer within a supply chain court proceedings will be initiated. [236] 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. [237]

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. [238] Respective agreements between end-device manufacturers and suppliers have only bilateral (contractual) effects and cannot impair the legal position of third parties. [238] In particular, they cannot limit the SEP holder's right to choose the level of the value chain for the assertion of its patents. [239] 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. [239]

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. [240] 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. [241] 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. [242]

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. [243] In the present case, the Court did not see sufficient grounds for such abuse. [243] It was not convinced that -absent an own bilateral licence- suppliers are left without rights or face legal uncertainty. [244] 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. [245] 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). [245]

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. [246] 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). [246]
 

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. [247] 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. [248] 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. [249] 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. [249] 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. [249] 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. [249]
 

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. [250] 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. [250] 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). [250] In the eyes of the Court, Daimler had, however, not pleaded any relevant facts in the present proceedings. [250]

  • [180] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19 (cited by juris).
  • [181] Ibid, paras.122-265.
  • [182] Ibid, para. 285.
  • [183] Ibid, para.286.
  • [184] Ibid, para.288.
  • [185] Ibid, paras.287 et seqq.
  • [186] Ibid, paras.291 et seqq.
  • [187] Ibid, para.295.
  • [188] Ibid, para.296.
  • [189]  Ibid, para. 299.
  • [190] Ibid, para. 300.
  • [191] Ibid, para.300.
  • [192] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
  • [193] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, para.301.
  • [194] Ibid, para.301.
  • [195] Ibid, para.307.
  • [196] Ibid, para.308.
  • [197] Ibid, paras.302 and 308.
  • [198] Ibid, paras. 323 et seqq.
  • [199] 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.
  • [200] Ibid, para. 309.
  • [201] Ibid, para. 310.
  • [202] Ibid, para. 316.
  • [203]  Ibid, para. 311.
  • [204] Ibid, para. 312.
  • [205] Ibid, para. 320.
  • [206] Ibid, para. 311.
  • [207] Ibid, paras. 312 and 316.
  • [208] Ibid, para. 315.
  • [209] Ibid, paras.317 et seqq.
  • [210] Ibid, para. 321.
  • [211] Ibid, para.357.
  • [212] Ibid, paras.322 and 358.
  • [213] Ibid, para.328.
  • [214] Ibid, paras.331 and 336.
  • [215] Ibid, para.332.
  • [216] Ibid, paras.334 and 336.
  • [217] Ibid, para.335.
  • [218] Ibid, para.337.
  • [219] Ibid, para.338.
  • [220] Ibid, para.339.
  • [221] Ibid, para.340.
  • [222] Ibid, paras.355 et seq.
  • [223] Ibid, paras.341 and 354.
  • [224] Ibid, para.341.
  • [225] Ibid, paras.341 and 348.
  • [226] Ibid, para.352.
  • [227] Ibid, para.353.
  • [228] Ibid, para.353
  • [229] Ibid, para.360.
  • [230] Ibid, para.362.
  • [231] Ibid, paras.362 and 364.
  • [232] Ibid, para.363.
  • [233] Ibid, para.365.
  • [234] Ibid, para.366.
  • [235] Ibid, para.367.
  • [236] Ibid, paras.368 and 382.
  • [237] Ibid, para.368.
  • [238] Ibid, para.370.
  • [239] Ibid, para.372.
  • [240] Ibid, paras.373 and 376-378.
  • [241] Ibid, para.373.
  • [242] Ibid, paras.373 and382.
  • [243] Ibid, paras.373 and 379.
  • [244] Ibid, para.374.
  • [245] Ibid, para.375.
  • [246] Ibid, para.380.
  • [247] Ibid, para.384.
  • [248] Ibid, paras.384 et seqq.
  • [249] Ibid, para.385.
  • [250] Ibid, para.269.

Updated 26 1月 2017

Saint Lawrence v Vodafone 2

LG Düsseldorf
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, [251] 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. [252] The court declared the Huawei rules applicable to claims for the recall of products. [253]
      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. [254] 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. [255] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [256]
      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. [257]
      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. [258] 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. [259]
      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. [260] 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. [261] 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. [262]
      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. [263]
      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. [264]
    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. [265] Whether the Intervener satisfied the ECJ criteria was left undecided. [266]
      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. [267] 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. [268] 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. [269]
      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. [270] 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. [271]
      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. [272] 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. [273]
  3. Other important issues
    According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [274]
    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. [275]
    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. [276]
  • [251] 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.
  • [252] Case No. 4a O 73/14, para. 184
  • [253] Case No. 4a O 73/14, para. 187
  • [254] Case No. 4a O 73/14, para. 195 et seq.
  • [255] Case No. 4a O 73/14, para. 208-210
  • [256] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
  • [257] Case No. 4a O 73/14, para. 193
  • [258] Case No. 4a O 73/14, para. 270 et seq.
  • [259] Case No. 4a O 73/14, para. 222 et seq.
  • [260] Case No. 4a O 73/14, para. 225 et seq.
  • [261] 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.
  • [262] 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.
  • [263] Case No. 4a O 73/14, para. 256 et seq.
  • [264] Case No. 4a O 73/14, para. 279 et seq.
  • [265] Case No. 4a O 73/14, para. 214-220
  • [266] Case No. 4a O 73/14, para. 214-220; 278
  • [267] Case No. 4a O 73/14, para. 266
  • [268] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
  • [269] Case No. 4a O 73/14, para. 264.
  • [270] Case No. 4a O 73/14, para. 291 et seq.
  • [271] Case No. 4a O 73/14, para. 278
  • [272] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
  • [273] Case No. 4a O 73/14, para. 304
  • [274] Case No. 4a O 73/14, para. 189
  • [275] Case No. 4a O 73/14, para. 309-313
  • [276] Case No. 4a O 73/14, para. 317 et seq.

Updated 6 5月 2021

Sisvel v Haier

Federal Court of Justice - BGH
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 [277] . 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 [278] (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 [279] . 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 [281] . 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) [284] .
 

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 [293] . 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 [293] .

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. [294] 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. [295] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [296] 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. [297]

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. [298] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [298]

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. [302]

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. [313] 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 [314] . 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 [314] . 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 [315] . 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. [316]

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 [317] . 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 [319] .

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. [321] 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'. [321]

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 [329] . 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. [336]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [337] 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. [336] 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

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

Updated 17 1月 2018

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

英国裁判所の決定
7 6月 2017 - Case No. HP-2014-000005

A. Facts and Main Judgment

The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue relate to telecommunication network coding and procedures. In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents and one non-technical trial relating to competition law issues, FRAND issues, injunctive relief and damages for past infringements.Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html In its decision on 5 April 2017 (the ‘main judgment’), the Patents Court (Birrs J) held that two patents were valid and that they had been infringed, and that the claimant was in a dominant position, but had not abused this position. The court stated that a final decision about an injunction to restrain patent infringements should be made separately. A few weeks after the main judgment, a license representing the FRAND terms between the two parties was prepared (the ‘settled license’), but had not yet been entered into. [339] Further, the defendant offered to give an undertaking to the court to enter into the license settled by the Patents Court or any other court. [340]

In its subsequent decision on 7 June 2017 (the case at hand), the parties argued whether the court should grant an injunction order given the existence of the settled license. Other minor issues of the case related to damages, declaratory relief, costs and permission to appeal. [341] The court granted an injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 (the ‘final order’). [342] The injunction order would be discharged if the defendant entered into a FRAND license and it would be stayed pending appeal. The court also declared that the settled license represented the FRAND terms in the given circumstances between the parties and that the defendant had to pay GBP 2.9 million of the claimant’s costs. Permission to appeal was granted to the defendant in respect of three issues and to the claimant in respect of one issue. [342]

B. Court’s Reasoning

1. Injunction

The main issue considered by the court was the interplay between the injunction, the settled license and the undertaking offered by the defendant. Patent EP (UK) 2 229 744 will expire in 2028. The settled license’s expiry date is 31 December 2020, [343] which would put the defendant in a difficult position if it attempts to renegotiate the license while the injunction is still in place. The defendant would even risk being in contempt of court if it continued to sell equipment if there was an argument that the license had come to an end for other reasons (e.g. repudiatory breach of contract). [344] However, the court took the view that it cannot be said that the defendant must be free to sell products if the license has ceased to exist. [343] Similarly, it cannot be said with certainty that the claimant must have an injunction at that date.

Thus, the court considered what the correct form of injunction in respect of a FRAND undertaking should be when a court has settled a license but the defendant has not entered into it (‘FRAND injunction’). [345] The court held that the FRAND injunction should contain a proviso that it will cease to have effect as soon as the defendant enters into the FRAND license. The injunction should also be subject to an express liberty to either party to return to court in the future if the FRAND license ceases to exist or expires while the patent is still valid. [345]

The court also held that despite the court’s discretion as to whether an injunction is granted, an injunction is normally effective, proportionate and dissuasive in IP cases. [346] Although the practical effect of a defendant’s undertaking and an injunction are similar, rights holders usually insist on an injunction. [347] One reason is that it involves a public vindication of the claimant’s rights. [347] As the claimant has been forced to come to court, an offer of undertaking after judgment is usually considered too late. [347] In this case, the defendant had maintained throughout the negotiations and the trial that it was under no obligation to accept a worldwide license. [348] Thus, according to the court, the right thing to do was to grant a FRAND injunction which will be stayed on terms pending appeal.

2. Other Issues

The court held that the issue of damages is closely related to the main issue. [349] If the defendant entered into the settled license, all payments would be covered by the license. If the defendant did not enter into the settled license, an order for damages is required. As a consequence, the court order should be in the same form as the FRAND injunction (stayed pending appeal and ceasing to have effect if the parties enter into the settled license). [349]

The parties also disagreed about the wording of the court declaration regarding the FRAND terms of the settled license. [350] The court dismissed the defendant’s suggestion as too complicated and the claimant’s suggestion as incomprehensive. Instead, the court declaration would be ‘the license annexed to the judgment represents the FRAND terms applicable between the parties in the relevant circumstances’. [351] Further, the court rejected the defendant’s petition to make a declaration that the claimant had not abused its dominant market position. [352] It took the view that the main judgment made a clear finding on this issue in summary paragraph 807(17).

Further, the parties disagreed about the extent of the defendant’s obligation to bear the claimant’s costs. The claimant argued that it should be regarded as the successful party so that the defendant had to pay its costs (GBP 6.4million). [353] The defendant argued the claimant had been clearly wrong regarding the applicable FRAND rate [354] and the appropriate thing would be to make no cost order. The court rejected the idea that there was no overall winner (as argued by the defendant) because the claimant was successful on the issues of the nature of the license and the existence and abuse of market dominance. [355] The ensuing question was whether any deductions were appropriate. [356] The court held that neither party had offered terms that were essentially FRAND. [357] However, the rates offered by the claimant were significantly further away from the end result than the rates offered by the defendant. [357] Thus, the defendant’s costs in relation to the FRAND rate issue were not recoverable by the claimant.

The fifth and final issue was in respect of permission to appeal. The court granted the defendant permission on three grounds: first, the necessity of granting a global license (including the court’s view that there is only one applicable license fee); [358] second, the hard-edged non-discrimination point; [359] and third, the issue of injunctive relief and abuse of market dominance under the CJEU ruling Huawei v. ZTE. [360] Conversely, the claimant was granted permission to appeal on the blended global benchmark issue (using a blended global rate as a benchmark, leading to the question whether another discount for the Chinese market should given). [361]

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

Updated 7 4月 2021

Sisvel v Wiko

OLG Karlsruhe
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). [362] 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 [363] (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 [364] .
 

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. [365]

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. [366] 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. [367]
 

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. [368]

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. [369] 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. [370] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [370] Detailed technical or legal analysis of the infringement allegation is not required. [370] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [370] If the patent holder offers a portfolio licence, respective extended information duties occur. [370]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [371] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [372] 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. [371]
 

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [373] . 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. [374]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [375] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [375] . The respective declaration must be 'serious and unconditional'. [375]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [375] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [375]

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. [376] 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. [377] 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. [377]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [378] of the Court of Justice of the EU (CJEU). [379] 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. [380]

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. [381] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [381] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [381] 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. [381]

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. [382] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [383] 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. [384] 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). [385]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [386] 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) [387] . It also demanded further claim charts in February 2018, years after the action was filed. [388]

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. [389] 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. [390] 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. [391]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [392] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [392] 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. [393] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [393] 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. [394] 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 [394] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [394]

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'. [395] 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. [396] 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. [397]

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. [398] The SEP holder's FRAND commitment does not give rise to such obligation. [398] 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. [398] 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. [399]

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. [399] 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. [400] 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. [401]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [402] 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. [403] 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. [404] 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. [405]

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. [406] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [406]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [407] 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. [408] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [408]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [409] 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. [410]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [411] 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. [411] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [412]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [413] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [414] 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. [415]
 

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [416]

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. [417]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [418] 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. [419] 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. [420] 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. [421]
 

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. [422] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [422] 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. [422] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [422]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [423] . 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. [424] 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. [425]

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. [426]

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 [427] . [428] 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. [429]
 

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

Updated 3 12月 2018

District Court, LG Düsseldorf

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) [430] . 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 [431] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [432] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [432] .

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) [433] . 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 [434] . 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 [435] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [435] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [436] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [434] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [437] .


B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [438] , it found that the Claimant cannot enforce its patent rights for the time being [439] , 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) [437] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [441] .

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 [442] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [443] . 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 [444] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [445] .

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 [446] . 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 [446] . 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 [446] .

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 [446] . 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) [446] . 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 [446] .

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 [447] .

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 [448] . 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 [449] .

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 [450] .

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 [451] . 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 [451] .

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 [452] . 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 [452] . 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 [452] .

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) [453] . 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) [453] . 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 [453] .

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 [454] .

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 [455] .

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 [456] . Given the circumstances of the specific case, even an implicit behaviour can suffice [456] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [457] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [457] . 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 [457] . 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 [457] .

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 [458] . 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 [459] .

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 [460] .

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 [461] . 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 [434] .

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 [462] . 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 [463] .

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 [464] . 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 [464] . 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 [464] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [465] . 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 [466] .

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 [436] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [467] .

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 [468] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [469] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [470] .

First, the terms did not adequately consider the effects of patent exhaustion [471] . As a rule, FRAND requires licensing offers to contain respective provisions [472] . 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 [473] .

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 [474] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [475] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [476] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [477] . 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 [477] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [478] .

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 [468] . 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) [479] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [480] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [480] . 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 [481] .

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 [482] . 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 [483] .

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 [484] . 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 [485] . 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 [486] .

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 [487] . 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 [487] . 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) [487] . 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 [487] . 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 [488] .

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 [489] . 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 [490] . 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 [491] .

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 [492] .


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 [493] .

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

Updated 1 11月 2017

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

英国裁判所の決定
4 5月 2017 - Case No. HP-2014-000005

  1. Facts
    The claimant is a company that grants licenses for patented technologies in the telecommunications industry. The patents at issue (EP (UK) 2 229 744, EP (UK) 2 119 287, EP (UK) 2 485 514, EP (UK) 1 230 818, EP (UK) 1 105 991, EP (UK) 0 989 712) relate to telecommunication network coding and procedures [494] . Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [495] In 2014, the claimant made a declaration under the ETSI IPR Policy that it was willing to grant licenses on FRAND terms. There were five technical trials relating to the validity, infringement and essentiality of these patents. This summary focuses on the non-technical trial addressed competition law issues, FRAND issues, injunctive relief and damages for past infringements. [496]
    In April 2014 the claimant made an open offer to the defendant, a major international smartphone manufacturer, to grant a license in respect of the claimant’s entire global patent portfolio (containing SEPs and non-SEPs). The defendant refused the offer, contending that there was no patent infringement, that the patents were not essential, and that they were invalid. The defendant also argued that the offer was not FRAND and thus did not constitute an abuse of a dominant market position under Art. 102 TFEU. In July 2014 the claimant made a further offer, limited to the claimant’s SEPs. Again, the defendant refused, arguing that the license conditions were not FRAND. [497] In June 2015 both parties made further offers. These offers were the result of directions from the court. The claimant offered a worldwide portfolio license while the defendant wanted to limit the territorial scope to the United Kingdom. [498] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [499]
    The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [500] The defendant was not prepared to take a license on FRAND conditions and the claimant was not in breach of competition law. Thus, the court held that a final injunction to restrain patent infringements should be granted. An injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 was granted on 7 June 2017. [501]
  2. Court’s reasoning
    1. Market power
      The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [502] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [503] The claimant’s pleaded position was a non-admission of dominance rather than a denial coupled with a positive case to the contrary. It was the view of the court that this was insufficient to rebut the presumption. In particular, the claimant’s argument of countervailing buyer power was unconvincing because it had not been supported by a proper economic analysis. [504]
    2. SEP Proprietor’s Licensing Offer
      1. FRAND Declaration as Conceptual Basis
        The court pointed out that that the FRAND undertaking also applied in the case that the SEP proprietor was not in a dominant position. It held that the FRAND undertaking operated as a practical constraint on a SEP owner’s market power. [505] The ETSI declaration made by the SEP proprietor is also the starting point for determining the FRAND rate. The underlying issue, which is discussed at length by the court, [506] is if such a declaration forms a contract and whether that contract can benefit third parties. The court acknowledged that the legal effect of this declaration, in particular its enforceability, is a controversial issue under French law. [507] However, the court reasoned that the FRAND declaration is an important aspect of technology standardisation. Holders of SEPs are not compelled to give a FRAND declaration. If they do, the undertaking would be enforceable and irrevocable due to public interest. [507]
        The court applied a procedural approach to FRAND. It emphasised that FRAND describes not only a set of license terms, but also the process by which a set of terms are agreed. [508] It applies to both the SEP-holder and the implementer/defendant. In particular, this approach allows for starting offers that leave room for negotiation. On the other hand, making extreme offers and taking an uncompromising approach which prejudices fair, reasonable, and non-discriminatory negotiation is not a FRAND approach. [509] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [510]
      2. ‘True FRAND Rate’
        The court considered that there is only a single set of terms for a given set of circumstances that would meet FRAND conditions (‘true FRAND rate’). [511] This eliminates the so-called Vringo-problem, [512] i.e. if FRAND were a range there would be two different but equally FRAND offers. Thus, if the court would grant or not an injunction, it would be unfair for the alleged infringer or SEP holder respectively. [513]
        The court was of the opinion that the true FRAND rate approach does not cause problems under competition law. Theoretically, if only one set of terms is truly FRAND, and if FRAND also represents the line between abusive and non-abusive conduct under Art. 102 TFEU, then every agreed SEP-licence could be at serious risk of being abusive. [514] However, the court took the view that FRAND-compliance and compliance with Art. 102 TFEU are not the same thing (the court pointed out that the CJEU in the Huawei ruling appears to equate an obligation to make a FRAND offer with compliance with Art 102 TFEU). [515] Since Art. 102 TFEU condemns excessive pricing, [516] a royalty rate can be somewhat higher than the true FRAND rate and still not be contrary to competition law. Conversely, for a breach of competition law, it will be necessary but not sufficient that the rate is not the true FRAND rate. [516]
      3. Discrimination
        The court held that the correct approach is to start from a global rate as a benchmark and to then adjust this rate as appropriate. [517] It distinguished between two concepts of discrimination. First, the ‘general’ concept of non-discrimination describes an overall assessment of FRAND which can be used to derive the benchmark mentioned above. [518] It is based on the intrinsic value of the patent portfolio, but it does not depend on the licensee. The court held that this benchmark should be applied to all licensees seeking the same kind of license. [519]
        Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [518] is a distinct concept that could be used to adjust license terms. However, the court held that the FRAND declaration does not introduce such a hard-edged non-discrimination concept. [520] If, contrary to the view taken by the court, the FRAND undertaking did include hard-edged non-discrimination, a licensee could only have the right to a lower rate granted to another licensee (i.e. a specific non-discrimination obligation resulting from the FRAND declaration) if the difference would otherwise distort competition between the two licensees. [519]
      4. Territorial Scope of License
        The court held that the defendant’s offer that was limited to UK licenses was not FRAND. In the court’s opinion country by country licensing is inefficient for goods such as mobile telecommunications devices that are distributed across borders. [521] It would also be inefficient to negotiate many different licenses and then to keep track of so many different royalty calculations and payments. No rational business would do this, if it could be avoided. [521] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [522] Further, it is common ground that the industry assesses patent families rather than individual patents within the family. Assessing portfolios on a family basis inevitably involved tying a patent in one jurisdiction with a patent in another. [523] Thus, according to the court, a worldwide license would not be contrary to competition law. As willing and reasonable parties would agree on a worldwide licence, the insistence by the defendant on a license which was limited to the UK was not FRAND. [524]
  3. Court’s reasoning
    1. Comparable agreements and reasonable aggregate royalty rate
      The court held that for determining the royalty rate, the evidence of the parties would be relevant, including evidence of how negotiations actually work in the industry. [525] Other freely-negotiated license agreements might be used as comparables. [526] This may be compared with a top down approach [527] can also be used in which the rate is set by determining the patentee’s share of relevant SEPs and applying that to the total aggregate royalty for a standard, but this may be more useful as a cross-check. [528] Royalty rates determined by other courts might be useful as persuasive precedents. However, in the eyes of the court, a license rate determined at a binding arbitration does not carry much weight as to what parties are usually paying. [525] License agreements must meet certain criteria to be comparable. [529] First, the licensor is the claimant. Second, the license agreement is recent. However, it is not necessary that the licensee is the defendant or a comparable company because different market participants have different bargaining powers, which is reflected in the negotiations and the resulting royalty rates. [529] Finally the court confirmed that a royalty based on the handset price was appropriate and implied a reasonable aggregate royalty rate of 8.8%of the handset price. The court found that the 8.8% was reasonable, in part, because the aggregate implied by either party’s case was higher (10.4% and 13.3%). [530]
    2. Principles derived from Huawei v. ZTE
      The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [531] In the eyes of the court, the ‘willingness to conclude a licence on FRAND terms’ refers to a willingness in general. The fact that concrete proposals are also required does not mean it is relevant to ask whether the proposals are actually FRAND or not. If the patentee complies with the procedure as set out by the CJEU, then bringing a claim for injunction is not abusive under Art 102. But even if sufficient notice is given, bringing a claim can constitute an abuse because complying with the procedure does not mean that a patentee can behave with impunity. In other words, there might be other aspects that make the claim abusive. Conversely, bringing such a claim without prior notice will necessarily be abusive. Significantly, the court held, the legal circumstances of this case differ from the circumstances assumed by the CJEU in a crucial respect. A FRAND undertaking can be effectively enforced irrespective of Art 102. The defendant does not need Art 102 TFEU to have a defence to the injunction claim.
  • [494] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2
  • [495] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
  • [496] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3
  • [497] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5
  • [498] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8
  • [499] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14
  • [500] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807
  • [501] Unwired Planet v Huawei, EWHC 1304 (Pat)
  • [502] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631
  • [503] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634
  • [504] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646
  • [505] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656
  • [506] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145
  • [507] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146
  • [508] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162
  • [509] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163
  • [510] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159
  • [511] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164
  • [512] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat)
  • [513] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158
  • [514] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152
  • [515] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154
  • [516] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153
  • [517] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176
  • [518] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177
  • [519] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503
  • [520] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501
  • [521] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544
  • [522] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534
  • [523] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546
  • [524] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572
  • [525] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171
  • [526] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
  • [527] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
  • [528] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
  • [529] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175
  • [530] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476
  • [531] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744

Updated 15 5月 2018

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

英国裁判所の決定
16 4月 2018 - Case No. HP-2017-000048

A. Facts

The claimant, Conversant, is a licensing firm incorporated in Luxembourg. The defendants are two major Chinese telecoms equipment and handset manufacturers, Huawei and ZTE, and their English affiliates. After years of negotiations that failed to result in licenses for claimant’s portfolio of Standard Essential Patents (SEPs) reading on ETSI wireless telecoms standards (and comprising inter alia Chinese and UK patents),Conversant v. Huawei and ZTE[2018] EWHC 808 (Pat) para 5. the claimant filed an action for infringement of four of its UK SEPs before the High Court of Justice (Court), and requested the Court to define Fair, Reasonable and Non-Discriminatory (FRAND) terms for its global SEP portfolio. [533] The defendants in separate proceedings initiated in China disputed the validity, essentiality and infringement of claimant’s Chinese patents. Since the defendants failed to unequivocally commit to conclude licenses on FRAND terms decided by the Court, the plaintiff amended its pleading to include injunctive relief, unless and until the defendants comply with the Court’s FRAND determination. [534]

The judgment at hand involves the defendants’ challenge to the Court’s jurisdiction to decide upon the terms of a global portfolio license. According to the defendants, a UK court has no jurisdiction to decide on the validity and infringement of foreign (in the present case: Chinese) patents. [535] Furthermore, the defendants claim that the jurisdiction most closely connected to the case is China which is the centre of the defendants’ manufacturing activities as well as the jurisdiction where the bulk of their sales takes place. [536]

B. Court’s Reasoning

The court dismissed the defendants’ challenge of jurisdiction. Following the reasoning of Birss J in Unwired Planet,Unwired Planet v. Huawei[2017] EWHC 711 (Pat) paras 565-67 Carr J held that, although issues of validity of patents granted in foreign jurisdictions are not justiciable in the UK, nevertheless the issue of validity should be distinguished from the issue of the determination of a global portfolio license on FRAND terms. According to Carr J, the defendants are free to challenge the validity, essentiality, and infringement of claimant’s Chinese patents in separate proceedings before Chinese courts; the pending issues of validity, essentiality and infringement do not preclude, however, the Court from determining FRAND terms for a global license and providing a mechanism of adjusting the royalty rate according to the validity and infringement decisions of courts in other jurisdictions.Conversant v. Huawei and ZTE(n. 1) paras 17 et seq. Furthermore, the defendants’ justiciability defense, were it to be accepted, would make it impossible for patent holders with a global portfolio of SEPs to obtain relief in the form of court-determined FRAND terms for a global license, since they would need to commence litigation on a country-by-country basis. [539] Forcing the patent holder to seek separate licenses for every individual country where it held SEPs could be characterized as a ‘hold-out chater’, in the eyes of the Court. [539]

Moreover, the Court seized jurisdiction over the case on the ground that the plaintiff’s claim concerns four patents granted in the UK; the issue of relief for patent infringement, and in particular whether such relief will take the form of setting FRAND terms for a global license, is to be decided in the context of a ‘FRAND trial’, after a decision on infringement is reached. [540] Were the defendants’ argument to be accepted, the Court would, in effect, be barred from deciding on the infringement and the proper relief for patents granted in the UK. [536] Besides that, the Court also held that the defendants’ failed to establish that the Chinese courts would be the appropriate forum for the dispute. [541] In this respect, given that royalty rates for telecommunication SEPs are usually lower in China than in other countries, the Court particularly pointed out that no holder of a global SEP portfolio would voluntarily prefer to submit to determination of a FRAND license for the entirety of portfolio in a country, where the rates applied would be lower than the rest of the world. [542]

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

Updated 30 10月 2018

Unwired Planet v Huawei, UK Court of Appeal

英国裁判所の決定
23 10月 2018 - Case No. A3/2017/1784, [2018] EWCA Civ 2344

A. Facts

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

Starting in September 2013, the Claimant contacted the Defendants several times, requesting the latter to engage in discussions for a licence regarding its SEP portfolio. [543] In March 2014, the Claimant sued the Defendants as well as Samsung and Google for infringement of five of its UK SEPs before the UK High Court of Justice (High Court). [544] The Claimant also initiated parallel infringement proceedings against the Defendants in Germany. [545]

The High Court conducted three technical trials first, focusing on the validity and essentiality of four of the SEPs in suit. [546] By April 2016, these trials were completed; the High Court held that two of the SEPs in suit were both valid and essential, whereas two other patents were found to be invalid. [546] The parties agreed to postpone further technical trials indefinitely. [546]

In July 2016, Samsung took a licence from the Claimant covering, among other, the SEPs in suit. [547] The Claimant also settled the infringement proceedings with Google. [548]

In late 2016, the trial concerned with questions regarding to the licensing of the SEPs in suit commenced between the Claimant and the Defendants. Over the course of these proceedings the parties made licensing offers to the each other. However, they failed to reach an agreement. The Defendants indicated they were willing to take a licence under Claimant’s UK patent portfolio, whereas the Claimant contended that it was entitled to insist upon a worldwide licence. [549]

In April 2017, the High Court granted an UK injunction against the Defendant, until such time as it entered into a worldwide licensing agreement with the Claimant on the specific rates, which the court determined to be Fair, Reasonable and Non-Discriminatory (FRAND) [550] in accordance with the undertaking given by the Claimant towards the European Telecommunications Standards Institute (ETSI). [551] Pending appeal, the High Court stayed the injunction. [552]

Shortly after the High Court delivered its decision, the Defendants began proceedings against the Claimant in China, which are still pending. [553]

With the present judgment, the UK Court of Appeal dismissed the Defendants’ appeal against the decision of the High Court. [554]


B. Court’s reasoning

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

1. The High Court’s finding that only a worldwide licence was FRAND is erroneous; the imposition of such a licence on terms set by this court based on a national finding of infringement of UK patents is wrong in principle. [555]

2. The offer imposed to the Defendants by the High Court is discriminatory in violation of Claimant’s FRAND undertaking, since the rates offered are higher than the rates reflected in the licence granted by the Claimant to Samsung. [556]

3. The Claimant is not entitled to injunctive relief; by bringing the infringement proceedings against the Defendants, without meeting the requirements established by the Court of Justice of the European Union (“CJEU”) in the matter Huawei v ZTE [557] (Huawei judgment) before, the Claimant abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the European Union (“TFEU”). [558]

Notably, the High Court’s determination of the rates which apply to the worldwide licence that the court requested the Defendants to take was not challenged by any of the parties to the proceedings. [559]


1. Worldwide licences

The Court of Appeal disagreed with the Defendants’ notion that imposing a worldwide licence on an implementer is wrong, because it amounts to an (indirect) interference with foreign court proceedings relating to patents subsisting in foreign territories, which would have been subject to materially different approaches to the assessment of FRAND royalty rates and could, therefore, lead to different results (particularly the ongoing litigation between the parties in China and Germany). [560]

The Court of Appeal explained that in imposing a worldwide licence the High Court did neither adjudicate on issues of infringement or validity concerning any foreign SEPs, nor was it deciding what the appropriate relief for infringement of any foreign SEPs might be (particularly since it made clear that a FRAND licence should not prevent a licensee from challenging the validity or essentiality of any foreign SEPs and should make provision for sales in non-patent countries which do not require a licence) [561] . [562]

Moreover, the High Court simply determined the terms of the licence that the Claimant was required to offer to the Defendants pursuant to its FRAND undertaking towards ETSI. [563] Such an undertaking has international effect. [564] It applies to all SEPs of the patent holder irrespective of the territory in which they subsist. [565] This is necessary for two reasons: first, to protect implementers whose equipment may be sold and used in a number of different jurisdictions. [565] Second, to enable SEP holders to prevent implementers from “free-riding” on their innovations and secure an appropriate reward for carrying out their research and development activities and for engaging with the standardisation process. [566]

Accordingly, the High Court had not erred in finding that a worldwide licence was FRAND. On the contrary, there may be circumstances in which only a worldwide licence or at least a multi-territorial licence would be FRAND. [567] German Courts (in Pioneer Acer [568] and St. Lawrence v Vodafone [569] ) as well as the European Commission in its Communication dated 29 November 2017 [570] had also adopted a similar approach. [571]

Having said that, the Court of Appeal recognized that it may be “wholly impractical” for a SEP holder to seek to negotiate a licence for its patents on a country-by-country basis, just as it may be “prohibitively expensive” to seek to enforce its SEPs by litigating in each country in which they subsist. [566] In addition, if in the FRAND context the implementer could only be required to take country-by-country licences, there would be no prospect of any effective injunctive relief being granted to the SEP holder against it: the implementer could avoid an injunction, if it agreed to pay the royalties in respect of its activities in any particular country, once those activities had been found to infringe. [572] In this way, the implementer would have an incentive to hold out country-by-country, until it was compelled to pay. [572]

In its discussion of this topic, the Court of Appeal disagreed with the view taken by the High Court that in every given set of circumstances only one true set of FRAND terms exists. Nevertheless, the court did not consider that the opposite assumption of the High Court had a material effect to the its decision. [573]

In the eyes of the Court of Appeal, it is “unreal” to suggest that two parties, acting fairly and reasonably, will necessarily arrive at precisely the same set of licence terms as two other parties, also acting fairly and reasonably and faced with the same set of circumstances. [574] The reality is that a number of sets of terms may all be fair and reasonable in a given set of circumstances. [574] Whether there is only one true set of FRAND terms or not, is, therefore, more of a “theoretical problem” than a real one. [575] If the parties cannot reach an agreement, then the court (or arbitral tribunal) which will have to determine the licensing terms will normally declare one set of terms as FRAND. The SEP holder would then have to offer that specific set of terms to the implementer. On the other hand, in case that the court finds that two different sets of terms are FRAND, then the SEP holder will satisfy its FRAND undertaking towards ETSI, if it offers either one of them to the implementer. [575]

Furthermore, the Court of Appeal dismissed Defendants’ claim that imposing a worldwide licence is contrary to public policy and disproportionate. [576] In particular, the Defendants argued that this approach encourages over-declaration of patents [577] and is not compatible with the spirit of the Directive 2004/48/EC on the enforcement of intellectual property rights, [578] which requires relief for patent infringement to be proportionate. [579]

Although the Court of Appeal recognised the existence of the practice of over-declaration and acknowledged that it is a problem, it held that this phenomenon cannot justify “condemning” SEP holders with large portfolios to “impossibly expensive” litigation in every territory in respect of which they seek to recover royalties. [580] The court also found that there was nothing disproportionate about the approach taken by the High Court, since the Defendants had the option to avoid an injunction by taking a licence on the terms which the court had determined. [581]


2. Non-discrimination

The Court of Appeal rejected the Defendants’ argument [582] that the non-discrimination component of Claimant’s FRAND undertaking towards ETSI obliges the Claimant to offer to the Defendants the same rates as those contained in the licence granted to Samsung. [583]

The Court of Appeal made clear that the obligation of the SEP holder not to discriminate is, in principle, engaged in the present case, since the Claimant’s transaction with the Defendants is equivalent to the licence it granted to Samsung. [584] In the court’s eyes, when deciding whether two transactions are equivalent one needs to focus first on the transactions themselves. Insofar, differences in the circumstances in which the transactions were entered into, particularly economic circumstances, such as the parties’ financial position [585] or market conditions (e.g. cost of raw materials), cannot make two otherwise identical transactions non-equivalent (releasing, therefore, the patent holder from the obligation not to discriminate). Changes in such circumstances could only amount to an objective justification for a difference in treatment. [586]

Considering the specific content of the SEP holder’s respective obligation, the Court of Appeal agreed with the High Court’s finding that the non-discrimination element of a SEP holder’s FRAND undertaking does not imply a so-called “hard-edged” component (imposing on the patent holder an obligation to offer the same rate to similarly situated implementers). [587] It argued that the “hard-edged” approach is “excessively strict” and fails to achieve a balance between a fair return to the SEP owner and universal access to the technology. [588] It could have the effect of compelling the SEP holder to accept a level of compensation for the use of its invention which does not reflect the value of the licensed technology and, therefore, harm the technological development of standards. [589]

Furthermore, the “hard-edged” discrimination approach should be rejected also because its effects would result in the insertion of the “most favoured licensee” clause in the FRAND undertaking. In the view of the Court of Appeal, the industry would most likely have regarded such a clause as inconsistent with the overall objective of the FRAND undertaking. [590]

Conversely, the Court of Appeal followed the notion described by the High Court as the “general” non-discrimination approach: [591] the FRAND undertaking prevents the SEP holder from securing rates higher than a “benchmark” rate which mirrors a fair valuation of its patent(s), but it does not prevent the patent holder from granting licences at lower rates. [591] For determining the benchmark rate, prior licences granted by the SEP holder to third parties will likely form the “best comparables”. [592]

The Court of Appeal argued that the “general” approach is in line with the objectives of the FRAND undertaking, since it ensures that the SEP holder is not able to “hold-up” implementation of the standard by demanding more than its patent(s) is worth. [593] However, the FRAND undertaking does not aim at leveling down the royalty owed to the SEP holder to a point where it no longer represents a fair return for its patent(s), or to removing its discretion to agree royalty rates lower than the benchmark rate, if it chooses to do so. [593]

In this context, the Court of Appeal made clear that it does not consider differential pricing as per se objectionable, since it can in some circumstances be beneficial to consumer welfare. [594] The court sees no value in mandating equal pricing for its own sake. On the contrary, once the hold-up effect is dealt with by ensuring that licences are available at the benchmark rate, there is no reason for preventing the SEP holder from charging less than the licence is worth. [594] Should discrimination appear below the benchmark rate, it should be addressed through the application of competition law; as long as granting licences at rates lower than the benchmark rate causes no competitive harm, there is no reason to assume that the FRAND undertaking constrains the ability of the SEP holder to do so. [595]


3. Abuse of dominant Position / Huawei v ZTE

The Court of Appeal further rejected Defendants’ argument that, by bringing the infringement proceedings prior to fulfilling the obligations arising from the Huawei judgment, the Claimant abused its dominant market position in violation of Article 102 TFEU. [596]

To begin with, the Court of Appeal confirmed the finding of the High Court that the Claimant held a dominant market position and dismissed the respective challenge by the latter. [597] It did not find any flaw in the High Court’s view that the SEP holder has a 100% market share with respect to each SEP (since it is “common ground” that the relevant market for the purpose of assessing dominance in the case of each SEP is the market for the licensing of that SEP [598] ) and that the constrains imposed upon the SEP holder’s market power by the limitations attached to the FRAND undertaking [599] and the risk of hold-out that is immanent to the structure of the respective market, [600] can either alone or together rebut the assumption that it most likely holds market power. [601]

Notwithstanding the above, the Court of Appeal held that the Claimant had not abused its market power in the present case. [602]

The court agreed with the finding of the High Court that the Huawei judgment did not lay down “mandatory conditions”, in a sense that that non-compliance will per se render the initiation of infringement proceedings a breach of Article 102 TFEU. [603] The language used in the Huawei judgment implies that the CJEU intended to create a “safe harbor”: if the SEP holder complies with the respective framework, the commencement of an action will not, in and of itself, amount to an abuse. [604] If the SEP holder steps outside this framework, the question whether its behaviour has been abusive must be assessed in light of all of the circumstances. [605]

In the court’s eyes, the only mandatory condition that must be satisfied by the SEP holder before proceedings are commenced, is giving notice to the implementer about the infringing use of its patents. [606] This follows from the clear language used by the CJEU with respect to this obligation. [607] The precise content of such notice will depend upon all the circumstances of the particular case. [607] In general, if an alleged infringer is familiar with the technical details of the products it is dealing and the SEP it may be infringing, but has no intention of taking a licence on FRAND terms, it will not be justified to deny the SEP holder an injunction, simply because it had not made a formal notification prior to the commencement of proceedings. [608]

On the merits, the court accepted the High Court’s assessment that the Claimant had not behaved abusively and particularly the finding, that the Defendants, who were in contact with the Claimant prior to the proceedings, had sufficient notice that the Claimant held SEPs which ought to be licensed, if found infringed and essential. [609]

Considering further that the respective conduct requirements were not established at the point in time, in which the infringement action was filed (since the present proceedings were initiated before the CJEU delivered the Huawei judgment), the Court of Appeal noted that it would very likely not be fair to accuse the Claimant of abusive behavior. [610] Insofar the court agreed with the respective approach developed by German courts in co-called “transitional” cases (Pioneer v Acer, [611] St. Lawrence v Vodafone [611] and Sisvel v Haier [612] ) [613] .

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

Updated 6 10月 2020

Unwired Planet対Huawei Conversant対Huawei 及び ZTE、英国最高裁判所

英国裁判所の決定
26 8月 2020 - Case No. [2020] UKSC 37

A. 内容

英国最高裁判所(最高裁判所)による本判決は、欧州電気通信標準化機構(European Telecommunications Standards Institute: ETSI)が開発した無線通信標準の実施において必須な(と見込まれる)ものとして宣言済みの特許(標準必須特許又はSEP)の侵害に関する2つの別々の事件から提起された上告について判断を下している。ETSIの知的財産権ポリシー(ETSIのIPRポリシー)は、特許権者に対して自らの保有するSEPを公平、合理的、かつ非差別的(Fair, Reasonable and Non-Discriminatory:FRAND)な条件で標準の実施者にとってアクセス可能にするとの誓約を推奨している。

Unwired Planet対Huawei

第一の事件は、幾つかの無線通信標準に対応したSEPのポートフォリオを保有する会社であるUnwired Planet International Limited(Unwired Planet)と特に標準準拠のモバイルフォンを製造販売する中国の製造販売会社であるHuaweiグループ中の2社(Huawei)の間の紛争に関わるものである。

2014年3月、Unwired Planetは自社の5つの英国SEPの侵害に関しHuawei、Samsung、及び第三の会社をイングランド・ウェールズ高等法院(高等法院)において提訴した。この訴訟の過程において、Unwired PlanetはHuaweiに対しライセンシングの申し出をいくつか行ったが、ライセンス契約の合意には至らなかった。その一方で、Unwired PlanetとSamsungとの間ではライセンス契約が交わされた。

2017年4月5日、高等法院はHuaweiに対し、同法院がFRANDと決定した特定の条件による ワールドワイド・ライセンス契約をUnwired Planetとの間で交わすまでの差止命令を出した [614] 。Huaweiはこの判決について控訴した。高等法院は控訴が係属中の間、差止命令の強制を停止した。

2018年10月23日、英国控訴院(控訴院)は高等法院の判決を不服とするHuaweiの控訴を棄却した  [615] その後、Huaweiは英国最高裁判所(最高裁判所又は最高裁)に上告を提起した。

Conversant対Huawei and ZTE

第二の事件は、ライセンシング会社であるConversant Wireless Licensing S.A.R.L. (Conversant)とHuawei及びZTEグループの2社 (ZTE)の間の紛争に関わるものである。ZTEは中国に拠点を置きネットワーク機器、モバイルフォン、及び消費者向け電子機器を製造し世界的に販売する企業グループである。 2017年にConversantはHuawei及びZTEに対する侵害訴訟を高等法院において提起した。Conversantは、数ある請求の中でもとりわけ、自社の4つの英国特許に対する侵害について差止による救済を求め、また自社のSEPポートフォリオについてグローバルFRANDライセンスの条件を決定することも高等法院に求めた。Huawei及びZTEは同事件について審理し判決を下す高等法院の管轄権について争い、Conversantの中国特許の有効性に異議を唱える訴訟を中国で提起した。

2018年4月16日、高等法院は、グローバルポートフォリオ・ライセンスの条件を決定する権限を含めて当該紛争についての管轄権を同法院が有すると確認した [616]  。HuaweiとZTEは高等法院のこの判決について控訴した。

2019年1月30日、控訴院は控訴を棄却し、英国特許の侵害を根拠としてグローバルライセンスのFRAND条件を決定するための管轄権を英国の裁判所が有すると確認した [617] 。HuaweiとZTEは最高裁判所に上告した。

最高裁判所は、両事件についての控訴を全員一致で棄却し、本判決を下した Unwired Planet対Huawei、Conversant対Huawei及びZTE、英国最高裁判所、2019年1月30日判決、事件番号 [2019] EWCA Civ 38。 。 

B. 判決理由

最高裁判所は、両上告において以下の5つの争点が提起されたと特定し、それらについて判断を下した。

1. 管轄権 最高裁判所は、多国籍SEPポートフォリオについてグローバルFRANDライセンス条件を決定する管轄権を英国の裁判所が有し、従って、標準実施者がかかるライセンス契約の締結を拒否した場合には、英国SEPを根拠とする差止命令を発出する管轄権を有すると確認した  [619]

最高裁は、ETSIのIPRポリシーの下でSEP保有者は国内裁判所に差止命令を求めることを禁じられていないとした [620] 。 最高裁は、国内裁判所が差止命令を出すことで侵害を止める可能性は、むしろ、実施者がFRANDライセンスの交渉を行うことを確実に奨励するのであり 「IPRポリシーが取ろうとするバランスに必要な構成要素である」とした [620]  。

また、最高裁は、英国特許を根拠とする差止命令の裁定の他に、英国の裁判所は、グローバルFRANDライセンスの条件も定めることができるとした。最高裁判所の見解によれば、ETSIのIPRポリシーが定めた「契約上の取り決め」は、英国の裁判所に該当する権限を行使する管轄権も与えている  [621]

最高裁によれば、ETSIのIPRポリシーは「通信業界における商慣習の反映」を試みており 「国際的に効力を有することを意図する」ものである [622] 。通信業界においては、(ポートフォリオ中の)「正確にいくつの特許が有効か又は侵害されているかを知らずに」特許のポートフォリオについてグローバルライセンス契約を結ぶことは一般的である [623] 。特許権者は、特定の特許について必須である(と見込まれる)との宣言を行う時点では、開発中の標準におけるその特許の有効性や侵害の有無について知りえない [623]  。その一方で、実施者は、標準を実施する際にどの特許の有効で侵害しているかについて知ってはいない  [623]

この「不可避の不確実性(unavoidable uncertainty)」は、特許権者が宣言した全てのSEPをワールドワイドに網羅したポートフォリオライセンスの締結によって対処され、その対価は「ポートフォリオ中の多くの特許が未検証であるという性質を反映しなければならない 」 [623]  。かかるライセンスを締結することで、実施者は標準への「アクセス」と、その標準に準拠するために必要とされる全技術の使用を許可されているとの「確実性」を「買う」のである [623]

最高裁判所は、商慣習によれば、FRANDライセンスには「未検証 (untested)」の特許が含まれるため、グローバルライセンスの条件の決定はそれに含まれる全特許についての有効性の評価を意味しないとの見解をとった。従って、ワールドワイドポートフォリオ・ライセンスの条件を定める際、英国の裁判所は外国特許に関する有効性及び侵害の有無について判断しておらず、かかる問題は、まさに各特許が認可された国の国内裁判所の専属的管轄権に服するものである [624]  。それ故、実施者が「これらの特許又はいずれかの特許について該当する外国裁判所において異議を申し立てる権利を留保し、結果として、当該ライセンス上でロイヤルティ料率変更のメカニズムを定めるよう求めることは一般に「公平かつ合理的(fair and reasonable)」であると判断された。 [625]

これに関連して、最高裁判所は、前述のアプローチが英国の法理に特有のものではなく、他の管轄区域、特にアメリカ、ドイツ、中国、及び日本で下された判決とも整合性があることを強調した  [626]

2. 適切な法廷地(フォーラム・コンビニエンス)

最高裁判所が扱った第二の争点も英国の裁判所の管轄権に関するものである。原告は、 Conversant対Huaweiの事件において、英国の裁判所は管轄権を辞退して中国の裁判所に渡すか少なくともConversantの中国特許の有効性に対する異議申し立てについて中国の裁判所が判決を下すまで訴訟を一時停止するべきであったと主張した。

最高裁判所は、英国の裁判所には管轄権を辞退し中国の裁判所に渡す義務はないと判断した [627] 。最高裁は、中国の裁判所については(英国の裁判所と異なり)当該紛争の全当事者の合意がないことから、現時点では中国の裁判所にグローバルFRANDポートフォリオライセンスの条件を定める管轄権はなく、本事件には所謂「フォーラム・コンビニエンス(forum conveniens)」の法理が適用されないとした [627]  。更に、最高裁は、現状況下でConversantが中国の裁判所への管轄権付与を承諾するとは合理的に考えにくいと判断した [627]  。 最高裁判所は、本紛争に関わる英国の裁判所には、有効性に関する中国での訴訟の結果を待って英国での訴訟を一時停止する義務もないとの見解を示した [628] 。最高裁は、英国で提起された訴訟がConversantのグローバルSEPポートフォリオについてのFRAND ライセンス条件の決定に関するものであるのに対し、中国での訴訟はConversantの中国特許の有効性のみに関連しているためであるとした  [628]

3. 非差別性

最高裁判所が審理した第三の争点は、FRANDの非差別性要件の解釈に関するものである。この訴訟においては、トライアル開始後にSamsungと合意した条件よりも不利なライセンス条件をHuaweiに対して申し出たことによりUnwired PlanetがFRANDの非差別性の部分に違反していたか否かという問題が生じていた。

最高裁判所は、高等法院及び控訴院の判断を支持し、(Unwired Planetは)違反してはいなかったとした。最高裁は、全ての同様の状況にあるライセンシーに対して同一又は同様の条件を申し出ることを特許権者に義務づけるような、所謂「厳格な(hard-edged)」非差別性の要件をFRANDは暗示してはいないと説明した [629] ] 。

ETSIの IPR ポリシー(第6条第1項)によれば、特許権者はFRAND条件のライセンスを提供することにコミットしなければならないとされている。最高裁判所は、この義務は「単一の一体化された義務(single, unitary obligation)」であり、ライセンス条件の公平性、合理性、及び非差別性に関する別々の3つの義務ではないとの見解を示した  [630]  。よって、条件は「全ての市場参加者に公平なロイヤルティ価格として一般的に提供されるべきものであり」、特定のライセンシーの「個別の特性による調整なしに」SEPポートフォリオの「適正市価(true value)」を反映するべきであるとされた [631]   。

最高裁判所は、更に、ETSIのIPRポリシーに基づくFRAND誓約は、所謂「最も有利なライセンス(most favourable license)」の条項を暗示するものではなく、全ての同様の状況にあるライセンシーに対して最も有利な条件と同等の条件でライセンス許諾を行うことを特許権者に義務づけてはいないと明確に示した [632]  。最高裁は、ETSIによるIPRポリシー制定の経緯について詳しく検討した上で、 以前ETSIが前述のような条項をFRAND誓約に含める提案を明確に却下していたとの所見を述べた [633]  。 最高裁は、更に、価格差別化がそれに関わる私的又は公的な利益にとって有害であるとの「一般的推定(general presumption)」は存在しないとした [634]  。最高裁は、むしろ、特定のライセンシーに対するベンチマーク料率よりも低いロイヤルティのオファーをSEP保有者が選択することが商取引上の意味合いから合理的な状況も存在するとした [635]  。 このことは、例えば、所謂「先行者利益(first mover advantage)」にも当てはまる。最高裁は、一番初めのライセンシーとの間で低いロイヤルティ料率を合意することは、SEPから最初の収益を生むだけでなく、締結されたライセンスが当該ポートフォリオを市場において「有効化(validate)」し将来的なライセンシングに資する可能性もあるため、「経済的合理性(economically rational)」と「商取引上の重要性(commercially important)」を有し得ると認めた [635]  。このことは、Unwired PlanetがSamsung とライセンス契約を締結した当時のように、特許権者が自らの商業的な生き残りを確実にするのため低いロイヤルティ料率でのライセンス許諾を強いられる所謂「投売り(fire sales)」の状況にも当てはまるとされた [636]  。

4. 市場における支配的地位の濫用/Huaweiフレームワーク

最高裁判所が審理した第四の争点は、Huaweiに対する侵害訴訟を提起したことにより Unwired Planetが市場における支配的地位を濫用し「EUの機能に関する条約(the Treaty on the Functioning of the EU:TFEU)」 第102条への違反を犯しており、従って差止による救済へのアクセスを認められるべきでないのかという問題である。Huaweiは、この問題について、欧州連合司法裁判所(the Court of Justice of the European Union:CJEU)がHuawei対ZTE事件で確立した要件(Huawei判決又はHuaweiスキーム) にUnwired Planetが従っていなかったため差止命令の請求は却下されるべきであると主張していた [637]  。

最高裁判所は、この主張は当てはまらないと判断した [638] 。Huawei判決は、特許権者が標準の実施者に対して問題となっているSEPの使用が侵害を犯しているとの通知を差止による救済を求める訴訟の提起前に行う義務を定めており、違反した場合には、TFEU第102条における濫用行為に該当するとの見解を最高裁は示した [639] 。しかし、この義務の「性質(nature)」については、個別の事件の状況によって決まるとした  [639]  。最高裁は、Unwired Planetが本侵害訴訟の提起に先立ちHuaweiに妥当な通知を行っていたと判断した  [640]

Huawei判決が定めたその他の義務を考察して、最高裁判所は、Huaweiスキームは「強制的(mandatory)」なものではなく、正確に従えば第102条に違反するリスクを冒さずに [特許権者]が差止命令を求めることができる「ルートマップ(route map)」を示したものであるとの高等法院及び控訴院が以前に示した見解を支持した [641] 。最高裁は、それ以外にも、各当事者にFRAND条件でライセンスを締結する意思があるか否かという極めて重要な問題の評価を助けるいくつかの基準をHuawei判決が定めているとした[1076]。 最高裁判所は、その上でUnwired PlanetにはFRANDライセンスをHuaweiに許諾する意思があったのであり、濫用行為を行ってはいなかったと判断した  [640]  。

5. 損害賠償か差止命令かの問題

最高裁が審理した五番目で最後の争点は、SEPの侵害に対する適切な救済についての問題である。最高裁判所における上告審において、(原告は)Unwired PlanetのSEPに対する侵害への適切かつ相応な(appropriate and proportionate) 救済措置は差止命令ではなく損害賠償の裁定であるとの主張を初めて行った。 最高裁判所は、本事件において損害賠償の裁定を差止命令の代替とする根拠は存在しないと判断した [642] 。最高裁は、Unwired PlanetとConversantのいずれも、裁判所が既にFRANDとして確認していたはずの条件でライセンス許諾を申し出た場合にのみ差止命令を求める権利を得たのであるから「差止命令の威嚇(threat of an injunction)」をHuawei又はZTEに「法外な料金(exorbitant fees)」を課すための方法として用いることはできなかったとした [643]

更に、最高裁は、(損害賠償訴訟の場合)SEP保有者は実施者に対して特許毎かつ国毎に訴訟を提起することを余儀なくされ実際的ではない(impractical)と考えられるため、損害賠償の裁定が「差止命令の裁定を差し控えることにより失われるものに対する適切な代替手段となり得る可能性は低い」との見解を示した [644]  。更に、最高裁判所は、(損害賠償が適切な救済とされれば)標準の実施者が「特許毎かつ国毎にロイヤルティの支払いを強制されるまで侵害を続けることへの誘因」を得るのであり、自発的にライセンス契約を締結することは侵害者にとって「経済的に意味がなくなる」ため、FRANDライセンシングがより困難なものになるだろうと指摘した [645]  。

それに対し、差止命令であれば「より効果的な救済となり得る」と最高裁は判断した。差止命令は、侵害を全体的に禁止することにより、「侵害者が市場に留まろうとするなら」 SEP保有者の申し出たFRAND条件を受け入れる以外には侵害者に「ほとんど選択肢を与えない」ためである[1081]。このような理由により、最高裁判所は、差止命令が「正義を成すために必要(necessary in order to do justice)」であると強調した [646]

  • [614] Unwired Planet対Huawei、イングランド・ウェールズ高等法院、2017年4月5日判決、事件番号 [2017] EWHC 711(Pat)。
  • [615] Unwired Planet対Huawei、英国控訴院、2018年10月23日判決、事件番号 [2018] EWCA Civ 2344。
  • [616] Conversant対Huawei及びZTE、イングランド・ウェールズ高等法院、2018年4月16日判決、事件番号 [2018] EWHC 808 (Pat)。
  • [617] Conversant対Huawei及びZTE、英国控訴院、2019年1月30日判決、事件番号 [2019] EWCA Civ 38。
  • [618]  Unwired Planet対Huawei、Conversant対Huawei及びZTE、英国最高裁判所、2019年1月30日判決、事件番号 [2019] EWCA Civ 38。
  • [619] 同判決、第49節以下。
  • [620] 同判決、第61節。
  • [621] 同判決、第58節。
  • [622] 同判決、第62節。
  • [623] 同判決、第60節。
  • [624] 同判決、第63節。
  • [625] 同判決、第64節。
  • [626] 同判決、第68節ないし第84節。
  • [627] 同判決、第97節。
  • [628] 同判決、第99節以下。
  • [629] 同判決、第112節以下。
  • [630] 同判決、第113節。
  • [631] 同判決、第114節。
  • [632] 同判決、第116節。
  • [633] 同判決、第116節以下
  • [634] 同判決、第123節。
  • [635] 同判決、第125節。
  • [636] 同判決、第126節。
  • [637] Huawei対ZTE、欧州連合司法裁判所、2015年7月16日判決、事件番号 C-170/13。
  • [638] Unwired Planet対Huawei、Conversant対Huawei及びZTE、英国最高裁判所、2019年1月30日、事件番号 [2019] EWCA Civ 38、第149節以下。
  • [639] 同判決、第150節。
  • [640] 同判決、第158節。
  • [641] 同判決、第157節及び第158節。
  • [642] 同判決、第163節。
  • [643] 同判決、第164節。
  • [644] 同判決、第166節。
  • [645] 同判決、第167節。
  • [646] 同判決、第169節。