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Updated 22 August 2018

TQ Delta LLC v Zyxel Communications and Ors., EWHC

English court decisions
13 June 2018 - Case No. HP-2017-000045, [2018] EWHC 1515 (Ch)

A. Facts

The Claimant acquired patents which were declared as essential to the DSL standard under the so-called "ITU Recommen¬dations" (Standard Essential Patents, or SEPs) from a company called Aware Inc [1] . The ITU Recommendations require from the SEP holder to make its patents accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [2] . The Defendants manufacture and sell various types of equipment complying with the DSL standard [2] .

The Claimant asserted claims against the Defendants before the UK High Court of Justice (Court) based on two SEPs it holds [3] . The proceedings involve, on the one hand, technical issues concerning the validity, essentiality and infringement of the SEPs in question and, on the other hand, the licensing of these SEPs on FRAND terms [4] .

Prior to service of the statements of case, the Court ordered the Claimant to disclose licence agreements concluded with third parties covering the SEPs in suit (comparable agreements) [5] . The Claimant entered into licences with two companies (in the following referred to as "counterparty A" and "counterparty B") [6] and also possesses copies of licences previously granted by Aware Inc. to other SEP users [7] . Counterparty A and Aware Inc. argued that their licence agreements can only be disclosed on an "external eyes only" basis (that is only towards i.e. external counsels and independent experts), since they contain confidential information, such as party names, pricing terms and other commercial information [8] . Counterparty B did not object to the disclosure of its licence agreement to the Defendant (provided that this would take place on a confidential basis), but argued that any other confidential information provided to the Claimant in the course of negotiations for the licence can only be disclosed to "external eyes only" [9] .

The Claimant suggested that the parties to the proceedings enter into a co-called "Confidentiality Club Agreement". The agreement proposed by the Claimant differentiated between "Confidential Infor-mation" and "Highly Confidential Information" [10] . Whether information is designated as "Confidential" or "Highly Confidential" would be determined by the disclosing party [10] . Information designated as "Highly Confidential" would be subject to an "external eyes only" limitation [10] . This limitation would apply to both comparable licences granted by the Claimant and licences granted by Aware Inc. [11] . The Defendants did not agree with the Claimant’s proposal. Instead, they requested that two named individuals from the Defendant’s group should be given access to the comparable licences [10] .

The Court did not approve the establishment of an "external eyes only" mechanism as suggested by the Claimant [12] and ordered disclosure of the comparable licences. Nevertheless, the Court temporarily stayed that order to give the third parties affected (counterparties A and B and Aware Inc.) the opportunity to set it aside or vary it, before disclosure of the comparable licences is made [13] .

B. Court’s reasoning

In the Court’s eyes, it is "common practice" in patent cases for parties to reach Confidentiality Club Agreements [10] ; such agreements are "often essential", when disclosure of confidential information is required in court proceedings [14] . In cases involving intellectual property rights, a mechanism for disclosure limiting access to confidential documents to specific representatives of one of the parties is considered "commonplace" [14] . Furthermore, documents can be redacted to exclude confidential material which is irrelevant to the dispute [14] .

Looking particularly at "external eyes only" mechanisms, the Court takes the view that such mechanisms can be included in Confidentiality Club Agreements upon agreement of the parties (as it was the case in the matter Unwired Planet v Huawei [15] ) [16] . If no agreement can be reached on such a provision, parties can request the Court to restrict access to specified documents to "external eyes only" [7] .

The Court finds, however, that such a confidentiality regime can be applied only to exceptional cases [17] . An "external eyes only" mechanism enables one party to exclude access to any document that it chooses, placing the burden of seeking access to documents to the opposing party, despite the fact that the latter is prima facie entitled to such access [18] . In the Court’s view, the opposite should rather be the case: The party wishing to limit access to documents to "external eyes only" should be obliged to justify that limitation [19] .

According to the Court, when determining whether "external eyes only" restrictions should be ordered, the role which the affected documents are expected to play in the case must be considered [20] . Where the documents are of limited, if any, relevance to the proceedings and their disclosure could be unnecessarily damaging for the party asserting confidentiality, ordering an "external eyes only" limitation may be justified in specific cases [14] (insofar the Court adopts the notion expressed in the matter IPCom v HTC [21] ). Furthermore, the Court did not rule out that in certain exceptional cases an "external eyes only" mechanism might also be justified with respect to specific documents of "greater relevance", at least at an interim stage of the proceedings [22] .

When it comes to documents key to the case, the Court finds, however, that the "blanket exclusion" of access to such documents enabled through "external eyes only" mechanisms is not in line with the right to a fair hearing stipulated by Article 6 of the European Convention on Human Rights and the principles of natural justice . Such a regime is further incompatible with the obligation of lawyers to share all relevant information of which they are aware with their clients . If key documents were to be subject to an "external eyes only" restriction, the opposing party would be unable to discuss the respective documents with its legal representative, to attend parts of the trial and to see all of the reasons for the judgment .

Against this background, the Court held that in the present case, approving the establishment of an "ex-ternal eyes only" mechanism as suggested by the Claimant would "merely postpone the resolution of the dispute" . The Court had ordered the disclosure of the comparable licences, because they are, or are likely to be, key documents in the above sense . Since the Court may be asked to decide on a FRAND licence which must be reasonable and non-discriminatory, existing licence agreements entered into by the Claimant (and its pre¬decessor, Aware Inc.) may be highly relevant documents as comparators .

[1] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 2.
[2] Ibid, para. 3.
[3] Ibid, para. 1.
[4] Ibid, para. 1. With respect to the relationship between the 'technical trials' (that means the proceedings concerning the validity, essentiality and infringement of the SEPs in suit) and the 'non-technical trial' regarding to FRAND licensing see, TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 21 November 2017, Case-No. HP-2017-000045, [2017] EWHC 3305 (Pat)
[5] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), paras. 25 and 30.
[6] Ibid, para. 25.
[7] Ibid, para. 25.
[8] Ibid, paras. 26 and 28.
[9] Ibid, para. 27.
[10] Ibid, para. 4.
[11] Ibid, para. 22.
[12] Ibid, paras. 34 et seqq.
[13] Ibid, para. 35.
[14] Ibid, para. 23.
[15] Unwired Planet v Huawei, UK High Court of Justice, 5 April 2017, Case-No. HP-2014-000005, [2017] EWHC 711 (Pat).
[16] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13th June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 23.
[17] Ibid, para. 21.
[18] Ibid, paras. 21 and 34.
[19] Ibid, para. 34.
[20] Ibid, para. 15.
[21] IPCom GmbH and Co KG v HTC Europe Co. Limited and ors, judgement dated 23 January 2013, Case No. HC11 C02064, [2013] EWHC 52 (Pat).
[22] TQ Delta LLC v Zyxel Communications, UK High Court of Justice, 13 June 2018, Case-No. HP-2017-000045, [2018] EWHC 1515 (Ch), para. 23.

Updated 26 January 2017

Sisvel v Haier

LG Düsseldorf
3 November 2015 - Case No. 4a O 93/14

Facts
Claimant, a non-practicing entity, is the proprietor of European patent EP B, originally granted to the applicant “A”, allegedly covering a feature of the GPRS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market GPRS-based devices. On 10 April 2013, Claimant made a commitment towards ETSI declaring to grant a license on FRAND terms with regard to, inter alia, patent EP B. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014 Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Patent Program” and made an offer but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by Defendant “J” without a counter-offer. By letter as of 12 August 2015 Defendants submitted a counter-offer regarding patent EP B which was, in turn, refused by Claimant on 24 August 2015. After Claimant had brought an action against “I” and “J”, Defendants made yet another licensing offer in their court filing as of 21 September 2015 which was refused as well. In the course of the oral hearings on 29 September 2015, Defendants submitted a security in the amount of € 5000 and rendered account in respect of acts of use in the past.
Court’s reasoning
1. Market power and notice of infringement
  The court left open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power (cf. below). As to the infringement notification, [23] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules. In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.
2. The SEP owner’s licensing offer
  As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [24]
3. The standard implementer’s reaction
  According to the court even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [25] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [26] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [27]
Other important issues
In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [28] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [29]

[23] Case No. 4a O 93/14, para. 90-94
[24] Case No. 4a O 93/14, para. 96-98, 125
[25] Case No. 4a O 93/14, para. 98-101
[26] Case No. 4a O 93/14, para. 14, 103-109
[27] Case No. 4a O 93/14, para. 103-111
[28] Case No. 4a O 93/14, para. 37-40
[29] Case No. 4a O 93/14, para. 118-123

Updated 6 March 2018

OLG Düsseldorf

OLG Düsseldorf
18 July 2017 - Case No. I-2 U 23/17

A. Facts

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

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

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

B. Court’s reasoning

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

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

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

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

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

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

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

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

C. Other issues

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

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

Updated 23 January 2018

LG Mannheim

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

A. Facts

Case No. 7 O 24/14 [30] 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’). [31] 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. [32] 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. [33] 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. [34] 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. [35]

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. [36] 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. [37] On this basis, the District Could held that the claimant had taken all necessary steps after commencing proceedings, which met the Huawei/ZTE requirements. [38]

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. [39] 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. [34] 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. [40] 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. [41]

The offer needs to include the calculation method in respect of the royalties. [40] However, the CJEU did not elaborate on the level of detail required. [42] 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. [43]

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. [42] 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. [44] The defendant’s counter-offer only included the respective German license, which was deemed by the District Court as insufficient. [44] Further, the defendant had not made an adequate deposit into the court as required under the Huawei/ZTE principles. [45]

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. [42]

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. [46] 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. [47] 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. [47]

[30] See also OLG Karlsruhe, 8 September 2016, 6 U 58/16 (application to stay execution of LG Mannheim, 7 O 24/14).
[31] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 4-6.
[32] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 2-3.
[33] LG Mannheim, 4 March 2016, 7 O 24/14, p. 22.
[34] LG Mannheim, 4 March 2016, 7 O 24/14, p. 23.
[35] LG Mannheim, 4 March 2016, 7 O 24/14, p. 34/35.
[36] LG Mannheim, 4 March 2016, 7 O 24/14, p. 26.
[37] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 27-30.
[38] LG Mannheim, 4 March 2016, 7 O 24/14, p. 33.
[39] LG Mannheim, 4 March 2016, 7 O 24/14, p. 21.
[40] LG Mannheim, 4 March 2016, 7 O 24/14, p. 24.
[41] LG Mannheim, 4 March 2016, 7 O 24/14, p. 37.
[42] LG Mannheim, 4 March 2016, 7 O 24/14, p. 25.
[43] LG Mannheim, 4 March 2016, 7 O 24/14, p. 35/36.
[44] LG Mannheim, 4 March 2016, 7 O 24/14, p. 38.
[45] LG Mannheim, 4 March 2016, 7 O 24/14, pp. 38-40.
[46] LG Mannheim, 4 March 2016, 7 O 24/14, p. 43.
[47] LG Mannheim, 4 March 2016, 7 O 24/14, p. 44.

Updated 23 January 2018

Saint Lawrence v Deutsche Telekom

OLG Karlsruhe
23 April 2015 - Case No. 6 U 44/15

A. Background

1. Facts

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

The defendant was a major German telecommunications company (Deutsche Telekom). Intervenor 1 and intervenor 2 were smartphone manufacturers (HTC and others) whose products used the AMR-WB standard. These phones were supplied to the defendant and then sold to consumers as part of the defendant’s contract plans. [48] The claimant, a German non-practicing entity, Saint Lawrence, became owner of the respective SEP in August 2014. [49] The previous owner of the SEP had declared its willingness to grant licenses on FRAND conditions several times. [50] The defendant had shown no interest in such a license. [50] After commencing infringement proceedings in the District Court of Mannheim, the claimant contacted intervenor 2 for the first time. Intervenor 2 signed a confidentiality agreement on 23 February 2015, rejected an initial offer made by the claimant, and made a counter offer. On 25 March 2015 (after the decision of the District Court of Mannheim), the claimant made another offer, which intervenor 2 also rejected.

2. Ensuing Decisions

On 10 March 2015, the District Court of Mannheim granted an injunction. Inter alia, it held that the defendant had not attempted to enter into negotiations for a license. [50] In particular, the court considered it irrelevant that intervenor 2 might have demonstrated its willingness to enter into a license on FRAND conditions. In the eyes of the court, the relevant issue was whether the claimant had a right to demand an injunction to stop the defendant using the patent. Even if an intervenor could successfully raise a competition law based defence relying on the Federal Court of Justice decision Orange Book Standard, [51] this was of no relevance for the relationship between the claimant and the defendant. [52]

The defendant and intervenor 1 applied to the Higher Regional Court of Karlsruhe to stay the execution of the District Court decision. Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned on the basis that it appears manifestly erroneous. [53] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [53]

The Higher Regional Court of Karlsruhe granted the defendant’s application to stay the execution regarding the smartphones manufactured by intervenor 2, but dismissed the application made by intervenor 1. [54] It held that it would be sufficient for a successful competition law based defence that an intervenor is willing to enter into a license agreement. [55] Since the District Court of Mannheim had dismissed the intervenors’ willingness as irrelevant for the case, the resulting decision was manifestly erroneous. [55] Significantly, the Higher Regional Court required the defendant to make a deposit of EUR 5 million into the court to safeguard the claimant’s financial interests.

B. Court’s Reasoning

Importantly, the decision was handed down in April 2015 and thus several months prior to the CJEU Huawei/ZTE ruling. The Higher Regional Court stated that the final opinion of Advocate General Wathelet [56] was the legal basis of its decision. [57]

The Higher Regional Court reasoned that a patent holder could seek injunction orders against any business in the supply chain of the product that infringes the respective SEP – which includes manufacturers (such as the intervenors) and distributors (such as the defendant). In principle, according to the Federal Court of Justice decision Tripp-Trapp-Stuhl,Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06. the decision against whom to bring proceedings lies with the patent holder. [59] However, according to the Higher Regional Court, this was not the issue in this case. The issue was whether the patent holder was abusing its dominant market position by commencing proceedings against the defendant. The only relevant question is whether this is conduct that deviates from ‘normal’ competition behaviour, being detrimental to consumer interests. If the SEP holder has made a FRAND declaration in the past and is typically entering into license agreements with manufacturers, then the court could see no objective reason why the SEP holder would only bring proceedings against the distributor. [59] In contrast, there is a reasonable expectation that the SEP holder makes an offer to the manufacturer of the relevant product first. Bringing proceedings against distributors would put significant pressure on the manufacturer. This can distort the license negotiation because distributors will have little interest in legal arguments with patent holders. If a patent holder is a dominant undertaking, exerting such pressure constitutes an abuse of market power. [59] In addition, bringing proceedings against distributors whilst granting licenses to manufacturers in other cases is inconsistent behaviour. [59]

C. Other Important Issues

The Higher Regional Court pointed out that the claimant was a non-practising entity. Accordingly, by exercising its patent rights it is not protecting its own market share in the market for smartphones. [60] In contrast, it is in the claimant’s objective interest that as many mobile phones using its SEP from numerous manufacturers are present in this market. Moreover, it is unlikely that a stay of execution would jeopardise the claimant’s financial interests. A deposit made by the defendant into the court should be a sufficient safeguard. [60] On the other hand, an execution of the decision at first instance would cause considerable harm to the defendant. As a telecommunications company, the defendant relies on a comprehensive portfolio of mobile phones that it can offer to consumers. [61] Removing the devices manufactured by intervenor 2 from the portfolio would be a significant blow to the defendant’s core business. Moreover, a removal would also be detrimental for intervenor 2 because a major distribution channel for its smartphones would become inaccessible. [62] As a result, the defendant’s interest in staying the execution outweigh the interests of the claimant.

[48] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 2.
[49] Landgericht Mannheim, 10 March 2015, 2 O 103/14, para 27.
[50] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 3.
[51] Bundesgerichtshof, 6 May 2015, KZR 39/06.
[52] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 6.
[53] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 17.
[54] OLG Karlsruhe, 8 September 2016, 6 U 58/16, para 38. After lodging the application, the claimant and intervenor 1 had reached a settlement agreement. As a result, intervenor 1 had withdrawn its appeal to the Higher Regional Court of Karlsruhe. Thus, in the eyes of the court, no stay of execution was required.
[55] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 19.
[56] GA Wathelet, 20 November 2014, C-170/13.
[57] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 20.
[58] Federal Court of Justice, 14 May 2009, Case No. I ZR 98/06.
[59] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 21.
[60] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 25.
[61] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 26.
[62] OLG Karlsruhe, 23 April 2015, 6 U 44/15, para 27.

Updated 26 January 2017

Sisvel v Haier

LG Düsseldorf
3 November 2015 - Case No. 4a O 144/14

Facts
The facts of the case are very similar to those of LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14: Claimant, a non-practicing entity, is the proprietor of the European patent EP D, originally applied for by “A” and formerly owned (after various transfers) by “B”, allegedly covering part of the UMTS standard, and being part of Claimant’s patent portfolio “H Wireless Patent Program” which purportedly encompasses patents essential to various ICT standards. Defendants “I” and “J” produce and market UMTS-based devices. On 10 April 2013 Claimant made a FRAND commitment towards ETSI, inter alia regarding patent EP D. By letters as of 20 December 2012, 22 August 2013 and 11 November 2013, as well as in meetings on 17 February 2014, Claimant informed the parent company of Defendants “I” and “J” about the “H Wireless Program” but no licensing agreement was concluded. On 29 August 2014 Claimant made another licensing offer which was refused on 1 September 2014 by “J” without a counter-offer. By letter as of 13 October 2014 one of the Defendants submitted a first counter-offer regarding patent EP D which Claimant refused on 20 October 2014 referring to the ongoing negotiations with the parent company of that Defendant. On 12 August 2015 Defendants “I” and “J” made a second counter-offer which was rejected by Claimant on 24 August 2015. After Claimant had brought a lawsuit Defendants made a last counter-offer in their court filing as of 22 September 2015 that was also refused by Claimant. In the course of the oral hearings of 29 September 2015, Defendants submitted a security (€ 5000) and rendered account in respect of acts of use in the past.
Court’s reasoning
Except for references to the slightly differing facts of both cases the court’s considerations are identical to those in the decision LG Düsseldorf, 3 November 2015 – Case No. 4a O 93/14.
1. Market power and notice of infringement
  The court left open the question of whether the SEP conferred market power to Claimant since it did, in any case, find no abuse of such potential market power (cf. below). As to the infringement notification, [63] the court did not decide whether the meetings with individual companies of the group to which Defendants belong already satisfied the requirements established by the ECJ. Since, in the present case, Claimant filed its actions before the judgment in Huawei v ZTE was rendered the court considered it sufficient that the infringer was alerted of the infringement through the statement of claims: The rules of conduct established by the German Federal Court (Bundesgerichtshof) in its Orange Book-ruling do not require the patent holder to give notice or submit a licensing offer prior to suing a (purportedly) infringing standard implementer. Although Orange Book addressed a de facto Standard and was heavily criticized by scholars and the EU Commission alike, it was being applied by German lower courts to de jure standards until the ECJ handed down its Huawei decision. In consequence, Claimant could—prior to the Huawei decision—reasonably consider itself to comply with the law by acting in accordance with the Orange Book rules.
  
  In terms of content, the District Court left undecided the question whether of the infringement notification must only indicate the patent for which prohibitory injunction is sought, whether—on the contrary—reference to other IP rights with respect to which a license is offered has to be made, or whether such additional reference is relevant only in determining FRAND licensing conditions. The court also left open whether the alleged infringer must accept a FRAND offer since the patent holder has then fulfilled its obligations according to antitrust law and thus there is no room for a counter-offer.
2. The SEP owner’s licensing offer
  As regards the Huawei requirement to present the alleged infringer with a specific, written offer for a license on FRAND terms, three statements of the district court deserve attention: Firstly, the SEP holder is in compliance with the ECJ conditions if the licensing offer is submitted not to all individual companies within a group but to the group parent only. Secondly, the court did not decide on whether an offer providing for a worldwide portfolio license and encompassing also non-SEPs could be considered as FRAND because, thirdly, the alleged infringers did not comply with their duties of conduct under Huawei (cf. below). [64]
3. The standard implementer’s reaction
  According to the court, even if the patent proprietor’s licensing offer is not FRAND-compliant, a standard implementer would still have to respond to that offer. The question of whether the alleged infringer may respond to a non-FRAND offer in a different manner than by submitting a specific counter-offer, in particular by merely demonstrating that the SEP owner’s offer was not FRAND, was left undecided. [65] Since Defendants decided to submit a counter-offer, the court stated that they were obliged to render account in respect of acts of use and to provide security for potential royalties, both based on their counter-offer and starting with the refusal of the first counter-offer, regardless of whether subsequent offers and counter-offers were formulated. These obligations also apply to “transitional” cases in which the (first) counter-offer has been rejected before the Huawei ruling because the—previously applicable—Orange Book-rules of conduct were even more demanding for the standard implementer. In the present case, Defendants did not comply with this prerequisite because they rejected, on 1 September 2014, the offers presented by Claimant on 17 February and 29 August 2014 without formulating any counter-offer, submitting such a counter-offer only belatedly, on 12 August 2015. [66] Furthermore, Defendants did not comply with their duties to render account and to provide security because they did so only on 29 September 2015, i.e. more than one month after their first counter-offer had been rejected by the claimant on 24 August 2015. [67]
Other important issues
In addition to its considerations regarding Huawei, the court deliberated on two other important issues: As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. [68] Furthermore, no patent ambush-defense based on § 242 BGB could successfully be raised because, firstly, Defendants could not substantiate the alleged patent ambush by “A” (being the original SEP proprietor); secondly, the alleged patent ambush would, arguably, have resulted only in a FRAND licensing obligation while, thirdly, Claimant had declared its willingness to grant a license on FRAND terms anyway. [69]

[63] Case No. 4a O 93/14, para. 90-94
[64] Case No. 4a O 93/14, para. 96-98, 125
[65] Case No. 4a O 93/14, para. 98-101
[66] Case No. 4a O 93/14, para. 14, 103-109
[67] Case No. 4a O 93/14, para. 103-111
[68] Case No. 4a O 93/14, para. 37-40
[69] Case No. 4a O 93/14, para. 118-123

Updated 10 April 2019

Huawei v ZTE

CJEU decisions
16 July 2015 - Case No. C-170/13

A. Facts

The Claimant, Huawei Technologies Co. Ltd., holds a patent declared as essential to the practice of the LTE wireless telecommunication standard (Standard Essential Patent, or SEP) developed by the European Telecommunications Standards Institute (ETSI) [70] . In March 2009, the Claimant committed towards ETSI to make the patent in question accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [71] .

The Defendants, ZTE Corp. and ZTE Deutschland GmbH, hold themselves several SEPs relating to the LTE standard [72] and also market, inter alia in Germany, LTE-compliant products [73] .

Between November 2010 and March 2011, the parties engaged into discussions concerning the licensing of the Claimant’s portfolio of SEPs [73] . The Claimant indicated the amount it considered as a reasonable royalty; the Defendants, on the other hand, sought to conclude a cross-licence [74] . An offer for a licensing agreement was, however, not finalized [74] .

In April 2011, the Claimant brought an action against the Defendants before the District Court (Landgericht) of Düsseldorf (District Court), seeking for injunctive relief, the rendering of accounts for past uses, the recall of products and an award for damages for patent infringement [75] .

The District Court stayed its proceedings and submitted a reference for a preliminary ruling under Article 267 of the Treaty on the Functioning of the European Union (TFEU) to the Court of Justice of the European Union (CJEU). In brief, the District Court noted that the German Federal Court of Justice (Bundesgerichtshof) and the European Commission appeared to have adopted conflicting positions on the question under which conditions an action for a prohibitory injunction brought by a SEP holder against a SEP user constitutes an abuse of dominant position in violation of Article 102 TFEU [76] : In its Orange Book ruling, the German Federal Court of Justice held that, in infringement proceedings concerning SEPs, the defendant is entitled to raise a defence under Article 102 TFEU (and thus avoid an injunction), only and insofar as it submits an unconditional, fair offer to conclude a licence to the patent holder, accounts for past acts of use and also makes a deposit on the royalty payments resulting thereof [77] . The European Commission, on the other hand, in proceedings relating to enforcement actions taken by Samsung against Apple in a number of EU member states, took the view that an action for injunctive relief concerning a SEP may, in principle, infringe Article 102 TFEU to the extent to which the defendant has demonstrated his willingness to negotiate a licence on FRAND terms in accordance with the patent holder’s FRAND commitments [78] .

With the present judgment, the CJEU established the conditions under which a SEP holder can file an action for a prohibitory injunction against a patent user, without violating Article 102 TFEU. In particular, the CJEU ruled that a SEP holder which has given an irrevocable undertaking to make its patents accessible on FRAND terms, does not abuse its dominant position by seeking an injunction and/or the recall of infringing products, as long as – prior to bringing a respective court action – it has

firstly, notified the user about the infringement of its patent ‘by designating that patent and specifying the way in which it has been infringed’, and
secondly, if the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, ‘presented to that infringer a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated’ [79] .

By contrast, the SEP user may invoke the abusive nature of a patent holder’s action for a prohibitory injunction and/or for the recall of products, only if it responds to SEP holder’s offer without delay [80] . In case that the patent user rejects that offer, it has to

submit ‘promptly and in writing, a specific counter-offer that corresponds to FRAND terms’ to the patent holder [81] and
if its counter-offer is rejected, provide appropriate security for the use of the patent(s), ‘for example by providing a bank guarantee or by placing the amounts necessary on deposit’ [82] .

The CJEU made clear that the above framework does not apply to SEP holders’ claims for damages and/or the rendering of accounts in relation to past acts of use; actions concerning these claims cannot infringe Article 102 TFEU, since they have no impact on whether standard compliant products can appear or remain on the market [83] .

B. Court’s Reasoning

The CJEU stressed the need to balance, on the one hand, the effective judicial protection of SEP holders’ fundamental intellectual property rights (IPRs) and, on the other hand, the public interest in free undistorted competition [84] .

Since the parties had not contested that the Claimant held a dominant market position, the Court’s analysis focused on the existence of an ‘abuse’ in terms of Article 102 TFEU [85] . According to the CJEU, the exercise of an IPR cannot ‘in itself’ be abusive, even if it is the act of an undertaking holding a dominant position [86] . Moreover, an action for the enforcement of an IPR can constitute an abuse of dominant position only in “exceptional circumstances” [87] .

Cases, in which SEPs are involved, distinguish themselves from other IPR-related cases: First, the fact that the patent has obtained SEP status means that the patent holder can ‘prevent products manufactured by competitors from appearing or remaining on the market and, thereby, reserve to itself the manufacture of the products in question’ [88] . Besides that, by making a FRAND commitment, the patent holder has created ‘legitimate expectations’ to third parties implementing the standard that the SEP will be accessible on FRAND terms [88] . Having regard to the ‘legitimate expectations’ created, the patent user sued in infringement proceedings can, in principle, defend himself by invoking Article 102 TFEU, in case that the SEP holder refused to grant him a FRAND licence [89] .

Although the SEP holder cannot be deprived of its rights to have recourse to legal proceedings for the protection of its IPRs, the CJEU found that the FRAND undertaking justifies the imposition of an obligation on the SEP holder to comply with specific requirements, when seeking for injunctive relief [90] . In particular, in order to avoid a violation of Article 102 TFEU, the SEP holder should meet the following conditions: (a) prior to the filing of an action for a prohibitory injunction, it must notify the user about the infringement ‘by designating that SEP and specifying the way in which it has been infringed’ [91] , and (b) submit a specific written offer for a licence on FRAND terms to the user, particularly specifying ‘the royalty and the way in which it is to be calculated’, if the latter has expressed its willingness to enter into such a licence [92] . In this context, the CJEU observed that the SEP holder can be expected to make such an offer, since it is ‘better placed to check whether its offer complies with the condition of non-discrimination than is the alleged infringer’, because, as a rule, no public standard licensing agreement exists and the terms of existing agreements entered by the SEP holder with third parties are not made public [93] .

On the other hand, the (alleged) infringer must diligently respond to the SEP holder’s offer, ‘in accordance with recognised commercial practices in the field and in good faith’ [80] . Whether this is the case must be established on the basis of ‘objective factors’, which implies, in particular, that there are no ‘delaying tactics’ [80] .

In case that the infringer finds the proposed terms as falling short of the patent holder’s FRAND commitment and chooses to reject the SEP holder’s licensing offer, it must submit a specific written counter-offer on FRAND terms to the SEP holder [81] . If the counter-offer is rejected and the (alleged) infringer already used the SEP in question without a licence, it is obliged to provide ‘appropriate security, in accordance with recognised commercial practices in the field, for example by providing a bank guarantee or by placing the amounts necessary on deposit’ [82] . The calculation of that security must include, inter alia, ‘the number of the past acts of use of the SEP’, and the alleged infringer must be able to render accounts in respect of those acts of use [82] .

When no agreement is reached following the counter-offer by the (alleged) infringer, the CJEU pointed out that the parties have the option, to request ‘by common agreement’ that the amount of the royalty be determined ‘by an independent third party, by decision without delay’ [94] .

Finally, the CJEU made clear that the (alleged) infringer is allowed to challenge the validity and/or the essentiality and/or the actual use of SEP holder’s patents in parallel to the licensing negotiations, or to reserve the right to do so in the future [95] .

[70] Huawei v ZTE, Court of Justice of the European Union, judgment dated 6 July 2015, para. 22.
[71] Ibid, para. 22.
[72] Ibid, para. 40.
[73] Ibid, para. 24.
[74] Ibid, para. 25.
[75] Ibid, para. 27.
[76] Ibid, paras. 29 et seqq.
[77] Ibid, paras. 30 et seqq
[78] Ibid, paras. 34 et seqq
[79] Ibid, para. 77.
[80] Ibid, para. 65.
[81] Ibid, para. 66.
[82] Ibid, para. 67.
[83] Ibid, paras. 72 et seqq
[84] Ibid, para. 42.
[85] Ibid, para. 43.
[86] Ibid, para. 46.
[87] Ibid, para. 47.
[88] Ibid, para. 53.
[89] Ibid, paras. 53 et seqq
[90] Ibid, paras. 58 et seqq
[91] Ibid, para. 61.
[92] Ibid, para. 63.
[93] Ibid, para. 64.
[94] Ibid, para. 68.
[95] Ibid, para. 69.

Updated 17 August 2018

Apple v Qualcomm, [2018] EWHC 1188 (Pat)

English court decisions
22 May 2018 - Case No. HP-2017-000015

A. Facts

The Claimants are the US-based parent company of the Apple group, Apple Inc., and five European subsidiaries. The Apple group manufactures and sells, among other products, mobile telecommunication and media devices [96] .

The two Defendants are the US-based parent company of the Qualcomm group, Qualcomm Incorporated (Qualcomm USA), and its subsidiary, Qualcomm (UK) Limited (Qualcomm UK) [97] . Qualcomm USA supplies manufacturers of Claimants’ devices with chipsets for mobile phones [98] . The company holds a great number of patents declared essential (Standard Essential Patents, or SEPs) to mobile telecommuni¬cation standards developed by the European Telecommunications Standards Institute (ETSI) [97] . Qualcomm USA made undertakings towards ETSI pursuant to Article 6.1 of the ETSI Intellectual Property Rights Policy (IPR Policy) that it “and its Affiliates” would make its SEPs accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions (FRAND undertakings). Qualcomm UK, on the other hand, neither holds SEPs relating to ETSI standards, nor made a FRAND undertaking vis-à-vis ETSI pursuant to Article 6.1. ETSI [99] . The company is, nevertheless, a member of ETSI.

The Claimants brought an action against both Defendants before the High Court of Justice (Court). Against Qualcomm USA the Claimants asserted claims for declaration of invalidity, for revocation and for declaration of non-essentiality with respect to certain SEPs [100] , a claim for declaration that rights derived from SEPs held by Qualcomm USA are exhausted [101] , a claim for damages allegedly suffered by an abuse of dominant position by Qualcomm USA in the relevant markets [102] , as well as claims arising from an alleged breach of the ETSI IPR Policy and the FRAND undertakings [103] .

Against Qualcomm UK the Claimants raised one single claim: They argued that Qualcomm UK as a member of ETSI was in breach of an obligation to license or procure licences on FRAND terms for SEPs held by the Qualcomm group [104] .

In its present decision, the Court did not rule on the merits of the claims asserted against Qualcomm USA. The Court focused on procedural questions regarding to the service of these claims, expressing doubts that some of the claims raised (particularly the claim for damages resulting from an alleged abuse of market power) could be validly served on Qualcomm USA outside the UK jurisdiction [105] .

Regarding to the claim asserted against Qualcomm UK, the Court found that no real prospect of success on the merits exist [106] . Accordingly, the Court signaled that it will grant Qualcomm UK a summary judg-ment against that claim, as the latter requested [107] .

B. Court’s reasoning

The Claimants based the claim against Qualcomm UK on the notion that the ETSI IPR policy obliges all ETSI members to license or procure a licence for SEPs on FRAND terms [104] . In addition, the Claimants argued that the ETSI IPR Policy imposes on Qualcomm UK as a member of ETSI an obligation to see to it that Qualcomm USA, or other companies belonging to the Qualcomm group, performed their FRAND undertakings [108] . Further, the Claimants pleaded that the FRAND undertakings made by Qualcomm USA towards ETSI on behalf of itself and its “Affiliates” also covered Qualcomm UK; thus, a breach of these undertakings was enforceable and actionable against the latter as well [109] .

Ruling on the obligations of ETSI members, the Court made clear that the ETSI IPR Policy does not require ETSI members which do not own SEPs to make a FRAND undertaking, not least because such an undertaking could not be fulfilled [110] . Moreover, in the eyes of the Court, the ETSI IPR Policy does not establish such an obligation even for entities which hold SEPs [110] . This can be derived from the provisions contained in the ETSI IPR Policy regulating the steps to be taken, in case that the patent holder chooses to refrain from making a FRAND undertaking (Article 8 ETSI IPR Policy) [110] .

Furthermore, the Court rejected the notion that the ETSI IPR Policy imposes on Qualcomm UK as a member of ETSI an obligation to make sure that Qualcomm USA performed its FRAND undertakings [108] . According to the Court, there is nothing in the wording of the ETSI IPR Policy or in the nature of the ETSI scheme which could establish such an obligation of ETSI members [108] . The Court did not see any need to impose an unexpressed obligation of that kind on ETSI members, either [108] .

Finally, the Court ruled that the FRAND undertakings of Qualcomm USA did not affect Qualcomm UK [111] . In the Court’s view, the reference to “Affiliates” in connection with undertakings pursuant to Article 6.1 ETSI IPR Policy covers only subsidiaries which themselves own SEPs subject to the respective undertaking [112] . Again, a company which does not own SEPs cannot be required to grant licences for patents that it does not hold [113] .

[96] Applev Qualcomm, UK High Court of Justice, judgement dated 22ndMay 2018, Case-No. HP-2017-000015, [2018] EWHC 1188 (Pat), para. 1 et seq.
[97] Ibid, para. 3.
[98] Ibid, para. 63.
[99] Ibid, para. 35 et seq.
[100] Ibid, para. 13 et seq.
[101] Ibid, para. 15.
[102] Ibid, para. 16.
[103] Ibid, paras. 13 et seq.
[104] Ibid, paras. 11 and 38.
[105] Ibid, paras. 92 and 115 et. seq.
[106] Ibid, para. 57.
[107] Ibid, paras. 8 and 57.
[108] Ibid, para. 53.
[109] Ibid, para. 38.
[110] Ibid, para. 47.
[111] Ibid, para. 49 et seq.
[112] Ibid, para. 50 et seq.
[113] Ibid, para. 50.

Updated 17 January 2018

Sisvel v Haier

OLG Düsseldorf
30 March 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. [114] 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 [115] and that the claimant had not made a license offer on FRAND conditions. [116] 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. [117] 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’). [118] 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). [119]

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. [120] 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. [121] 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. [121] On this basis, the Higher Regional Court had no doubts that the claimant was in a dominant market position [122] because the patent in question was related to data transfer, an essential function of the GPRS standard. [123]

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). [124] 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. [125] 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. [125] 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 [126]

The Higher Regional Court also held that it was sufficient to notify the defendants’ parent companies. [127] 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’). [127]

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. [128] 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. [129] 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’). [129] The Higher Regional Court held that the statements made by the defendants in the course of the negotiations did not justify such a conclusion. [129]

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. [130] 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. [131] 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’). [131] 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. [131] 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 [132] because it discriminated against the defendants. [133] 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. [134]

The court held that dominant undertakings are under no obligation to treat all business partners in exactly the same way. [135] SEP owners have discretion regarding the license fees that they charge. [136] Different treatment of licensees is accepted if it can be justified as a result of normal market behavior. [137] Further, license conditions can be abusive only if they are significantly different between licensees. [137] These principles also apply to SEP owners who have given a FRAND declaration because this commitment refers to Art 102 lit. c) TFEU. [138] The burden of proof for such substantially unequal treatment lies with the defendant, [139] whilst the onus is on the claimant to prove that this unequal treatment is justified. [139] 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. [139] On this basis the Higher Regional Court concluded that the claimant had treated the defendants significantly differently from their competitors [140] without having a proper justification. [141] In particular, the claimant could not prove that discounts given to a competitor were common in the industry, [142] or that these discounts were a result of the particularities of the case. [143]

[114] LG Düsseldorf, 3 November 2015, File No. 4a O 93/14
[115] 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.
[116] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 34.
[117] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 75.
[118] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 74 and 175.
[119] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 47.
[120] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 177 et seqq.
[121] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 182.
[122] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 185.
[123] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 186.
[124] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 202.
[125] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 203.
[126] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 215.
[127] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 213.
[128] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 220.
[129] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 240.
[130] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 244.
[131] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 245.
[132] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 242.
[133] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 251.
[134] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 249.
[135] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 254.
[136] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 255 and 257.
[137] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 256.
[138] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 257.
[139] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 258.
[140] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 263.
[141] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, para 268.
[142] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 270 et seqq.
[143] OLG Düsseldorf, 30 March 2017, File No. I-15 U 66/15, paras 275 et seqq. and paras 290 et seqq.

Updated 20 April 2017

Wiko v Sisvel, Tribunal de Commerce de Marseille

French court decisions
20 September 2016 - Case No. RG 2016F01637

Facts
Claimant WIKO S.A.S. markets mobile phones as well as telecommunication products and services, produced by its parent company TINNO, in France and Europe. Defendant SISVEL UK LTD is a division of SISVEL INTERNATIONAL and performs the function of an intermediary between manufacturers seeking access to high-level technology and intellectual property rights holders willing to grant licenses to their portfolio. Claimant considers itself a victim of acts of unfair competition committed by Defendant. The latter sent letters to several French distributors and customers of Claimant, such as Carrefour, Casino or LDLC, alerting them that they (purportedly) infringed Claimant’s patents allegedly essential to the LTE standard. In consequence, Claimant sued Defendant before the Tribunal de Commerce de Marseille, seeking, inter alia, a decision declaring Defendant’s letters to be acts of unfair competition, forcing Defendant to issue a notice of revocation, and awarding damages to Claimant.
Court’s reasoning
The Tribunal de Commerce de Marseille rejected Claimant’s submission regarding the alleged violation of the French rules on unfair competition. Against the background of paras. 61, 63 of the Huawei judgment, requiring the SEP proprietor to alert the alleged infringer about the infringement prior to the initiation of proceedings and to present a specific, written offer for a license on FRAND terms, the Court considered the letters as prior notice in the sense of the Huawei rules of conduct and denied a violation of the French rules on unfair competition. In particular, the court stressed that the documents communicated by Defendant provided an overview including each SEP, its filing date as well as the parts of the LTE standard implementing the respective patented technology. They indicated not only the consequences of acts of unauthorized use and the devices allegedly embodying such use but informed the distributors also about their option to contest both the communicated information and the validity of the patents at issue. Furthermore, Defendant had offered to grant a FRAND license in the sense of the Huawei decision, defined a response period for this offer and attached a terms sheet substantiating the general framework, the basic clauses and, in particular, the royalties of a potential FRAND licensing agreement. The letters did not, however, ask for a cessation of sales of the allegedly infringing products.

Updated 26 January 2017

Sisvel v ZTE, Tribunale Ordinario di Torino

Italian court decisions
18 January 2016 - Case No. 30308/20215 R.G.

Facts
Claimant (Sisvel Int. S.A.) is the proprietor of European patent EP 1 264 504, originally granted to Nokia Corporation, allegedly covering part of the UMTS standard, and being part of Claimant’s patent portfolio “Sisvel Wireless patents” which purportedly encompasses patents essential to various ICT standards. Defendant I (ZTE Italy S.R.L.) and Defendant II (Europhoto Trading S.R.L.) produce and market UMTS-based devices.
On 10 April 2013, Claimant made a commitment towards ETSI declaring to grant a license on FRAND terms with regard to patent EP 1 64 504. By letter as of December 2012 Claimant informed ZTE Corporation, parent company of Defendant I, about its ownership in various SEPs, indicated that the teachings of these patents were implemented in Defendant I’s devices and expressed its willingness to grant licenses on FRAND terms. On 19 December 2012, ZTE Corporation requested from Claimant further information in order to be able to assess that offer. On 29 January 2013, Claimant sent a non-disclosure agreement (NDA) which ZTE Corporation signed only about seven months later on 3 September 2013. In the course of meetings in September and October 2013, Claimant and ZTE Corporation entered into licensing negotiations without concluding a licensing agreement. On 25 July 2014, after a break of several months, the licensing negotiations have been reinitiated and ZTE Corporation for the first time addressed a claim chart provided by Claimant about ten months before.
Claimant, by letter as of 13 October 2014, gave notice of its decision to unilaterally terminate the NDA within thirty days because ZTE Corporation adhered to delaying tactics. At the same time, though, Claimant continued the licensing negotiations. Although ZTE Corporation declared at first, on 5 February 2015, to agree to the terms proposed by Claimant it submitted a counter-offer a few months later. The counter-offer was rejected by Claimant. After the presentation of a draft licensing agreement by Claimant on 11 March 2015 and several meetings of the parties Claimant submitted a final licensing offer on 4 November 2015 being rejected by ZTE Corporation due to its alleged non-conformity with FRAND terms. Since a further licensing offer being presented in December 2015 was equally refused by ZTE Corporation, Claimant commenced litigation against Defendants.
After Defendant II, a retail company, was informed about the seizure of twenty mobile phones implementing the UMTS-standard, it immediately returned the remaining six devices to its supplier and provided the necessary sales documents to the court.
Court’s reasoning
Since Claimant only entered into licensing negotiations with and addressed all licensing offers to ZTE Corporation, being the parent company of Defendant I, it did not comply with its Huawei obligations vis-à-vis Defendant I. Claimant neither noticed Defendant I of the alleged infringement prior to initiating litigation nor did it provide the necessary documents indicating the essential character of the patent in question. [144]
While rejecting all other actions , particularly as to the seizure of devices using the patent-in-suit, raised against Defendant II, who neither became involved into the licensing negotiations between Claimant and ZTE Corporation nor possesses mobile devices implementing the UMTS standard anymore, the court upheld the action for prohibitory injunction because the confirmation of cessation of sales does not completely exclude periculum in mora. [145] Furthermore, the court rejected the preliminary measures raised by Claimant against Defendant I.
Furthermore, the court stated that the NDA was not validly terminated by Claimant’s unilateral declaration as of 19 December 2014 and that therefore Claimant was not allowed to initiate proceedings against ZTE Corporation or its subsidiaries, such as Defendant I, until 3 September 2016.

[144] Case No. 30308/20215 R.G., para. 3
[145] Case No. 30308/20215 R.G., para. 5, a-c

Updated 26 January 2017

Pioneer v Acer

OLG Karlsruhe
31 May 2016 - Case No. 6 U 55/16

Facts
The proceedings concerned the subsequent application of Defendant in Case No. 7 O 96/14 seeking to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. The facts underlying the two decisions are therefore the same: Claimant owns the patent EP 1 267348, allegedly essential to the DVD standard and administered with regard to its licensing by the patent pool “A”. Early in 2013 “A” and the Defendant’s group parent were in contact regarding “A” ’s DVD licensing activity, but no concrete notice of infringement was made and no licensing negotiations ensued. After having been sued for patent infringement Defendant submitted, on 6 October 2014, an offer to license the patent-in-suit for Germany at FRAND conditions, with the exact royalty rate to be determined by Claimant pursuant to § 315 German Civil Code. Furthermore, Defendant declared to be willing to negotiate a portfolio license for all German patents of Claimant and, in case the negotiations were to fail, to have the licensing conditions determined by a state court or arbitration tribunal. In order to indicate what Defendant considered to be a FRAND royalty rate Defendant submitted an expert opinion. As of 28 November 2014, Claimant proposed to modify the conditions to the effect that Defendant’s group parent was supposed to take a worldwide portfolio license comprising all Claimant’s portfolio patents administered by “A”. Claimant made a (perhaps: additional) FRAND declaration with regard to the patent and informed Defendant thereof in December 2014. After Defendant had rejected this offer, Claimant offered, on 13 March and 13 April 2015, a worldwide portfolio license to Defendant’s group parent company. To the offer were added claim charts for two pool patents, as well as information on how Claimant deduced the royalty from the overall royalty rates of the “A”-patent pool. On 5 May 2015, Defendant’s group parent requested claim charts regarding all patents to be licensed as well as further information on royalty calculation. Claimant sent, on 7 August 2015, claim charts for five additional patents declaring its willingness to provide further information as soon as constructive technical discussions would be taken up. In a filing to the court as of 20 November 2015, Claimant explained its royalty calculation in greater detail and submitted an expert opinion on the issue.
Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous.
Court’s reasoning
1. Applicability of Huawei to transitory cases
  The court tentatively confirms that, in transitory cases, it is sufficient if the SEP proprietor fulfills its Huawei duties by way of the statement of claims or even after the lawsuit was initiated. [146] As to the reasons for this finding, the court is not convinced by the considerations of the lower court (cf. above LG Mannheim, 8 January 2016 - 7 O 96/14), in particular because the ECJ has not stated that actions for infringement brought prior to the Huawei decision had to comply only with the Orange Book rules of conduct and not the Huawei rules. [147] However, according to the Court, the Huawei decision deals only with the abusive bringing of an action for SEP infringement, not with the question whether such action remains abusive even after the SEP proprietor has fulfilled its conduct obligations under Huawei. [148] It appears possible that, at least in transitory cases, the continuation of an infringement action is no longer abusive where the statement of claims provided sufficient notice of the infringement, where the SEP proprietor made a Huawei-compliant licensing offer during the ongoing litigation, and where the standard implementer failed to appropriately react to this offer. Hence, the lower court’s finding on that issue was not considered manifestly erroneous.
2. Standard of review for licensing offers
  The court did, however, find the lower court’s ruling to be manifestly erroneous with regard to the standard of review it had postulated for the SEP proprietor’s licensing offer: [149] As stated clearly by the ECJ, the SEP proprietor has to make a licensing offer that qualifies as FRAND—not, for instance, slightly above FRAND—and it is for the respective court to assess the FRAND quality of the offer. A reduced standard of review, consisting merely in a summary assessment of whether the offer is evidently non-FRAND, has no basis in Huawei. Even if the SEP proprietor were to be granted much leeway in determining the licensing conditions—a question which the court reserves for its decision on the merits of the appeal—the conditions would still have to remain within the FRAND range. Since the lower court’s conclusion that Claimant had complied with the Huawei rules of conduct while Defendant had violated them was reached by applying the reduced standard of review the court decided to partly [150] suspend the enforcement of the first instance-ruling.

[146] Case No. 6 U 55/16, para. 24-28
[147] Case No. 6 U 55/16, para. 26
[148] Case No. 6 U 55/16, para. 27
[149] Case No. 6 U 55/16, para. 29-36
[150] The reasons why the Court limited the suspension to the recall and destruction of infringing products are of no interest here, cf. OLG Karlsruhe, 31 May 2016 – Case No. 6 U 55/16, para. 37 et seq.

Updated 26 January 2017

Saint Lawrence v Deutsche Telekom

LG Mannheim
27 November 2015 - Case No. 2 O 106/14

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.
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. [151] 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. [152] 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. [153]
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. [154]
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. [155]
  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. [156] 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”. [157]
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. [158]
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. [159]
No patent ambush-defense based on § 242 BGB could be raised. As the court assessed in a detailed, torts-based analysis, [160] 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. [161] 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. [162] 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. [163]

[151] Case No. 2 O 106/14, para. 133
[152] Case No. 2 O 106/14, para. 139-144
[153] Case No. 2 O 106/14, para. 146-149
[154] Case No. 2 O 106/14, para. 152-153
[155] Case No. 2 O 106/14, para. 153-160
[156] Case No. 2 O 106/14, para. 158-164
[157] Case No. 2 O 106/14, para. 167-169
[158] Case No. 2 O 106/14, para. 146
[159] Case No. 2 O 106/14, para. 78-80
[160] Cf. for details LG Mannheim, 27 November 2015 - Case No. 2 O 106/14, para. 119-131
[161] Case No. 2 O 106/14, para. 118-131
[162] 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.
[163] Case No. 2 O 106/14, para. 198

Updated 26 January 2017

Saint Lawrence v Vodafone

LG Düsseldorf
31 March 2016 - Case No. 4a O 73/14

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, [164] 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.
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. [165] The court declared the Huawei rules applicable to claims for the recall of products. [166] 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. [167] 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. [168] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [169] 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. [170] 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. [171] 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. [172] 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. [173] 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. [174] 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. [175] 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. [176] 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. [177]
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. [178] Whether the Intervener satisfied the ECJ criteria was left undecided. [179] 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. [180] 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. [181] 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. [182] 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. [183] 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. [184] 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. [185] 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. [186]
Other important issues
According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [187] 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. [188] 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. [189]

[164] 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.
[165] Case No. 4a O 73/14, para. 184
[166] Case No. 4a O 73/14, para. 187
[167] Case No. 4a O 73/14, para. 195 et seq.
[168] Case No. 4a O 73/14, para. 208-210
[169] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
[170] Case No. 4a O 73/14, para. 193
[171] Case No. 4a O 73/14, para. 270 et seq.
[172] Case No. 4a O 73/14, para. 222 et seq.
[173] Case No. 4a O 73/14, para. 225 et seq.
[174] 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.
[175] 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.
[176] Case No. 4a O 73/14, para. 256 et seq.
[177] Case No. 4a O 73/14, para. 279 et seq.
[178] Case No. 4a O 73/14, para. 214-220
[179] Case No. 4a O 73/14, para. 214-220; 278
[180] Case No. 4a O 73/14, para. 266
[181] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
[182] Case No. 4a O 73/14, para. 264
[183] Case No. 4a O 73/14, para. 291 et seq.
[184] Case No. 4a O 73/14, para. 278
[185] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
[186] Case No. 4a O 73/14, para. 304
[187] Case No. 4a O 73/14, para. 189
[188] Case No. 4a O 73/14, para. 309-313
[189] Case No. 4a O 73/14, para. 317 et seq.

Updated 19 October 2020

Continental v Nokia

OLG Munich
12 December 2019 - Case No. 6 U 5042/19

A. Facts

Nokia holds a number of patents declared essential to the practice of 3G and 4G wireless telecommuni- cations standards (Standard Essential Patents, or SEPs). Daimler is one of the world’s largest motor car manufacturers. Continental, a worldwide group of companies with headquarters in Germany, is a supplier of Daimler.

In March 2019, Nokia filed ten patent infringement actions against Daimler before the District Courts of Munich, Duesseldorf and Mannheim in Germany based on several of its German SEPs (German infringement proceedings). Following third-party notices issued by Daimler, two companies of the Continental group joined the German infringement proceedings as interveners (the German subsidiary Continental Automotive GmbH and the Hungarian subsidiary Continental Automotive Hungary Kft.).

On 10 May 2019, a further subsidiary of the Continental group based in the United States, Continental Automotive Systems Inc. (Continental US), brought an action against Nokia and others before the US District Court for the Northern District of California (US Court), accusing Nokia of antitrust violations.

On 12 June 2019, Continental US also filed a motion for an anti-suit injunction, asking the US Court to enjoin Nokia from prosecuting the German infringement proceedings (US motion for anti-suit injunction). The US Court gave Nokia the possibility to respond to the motion for an anti-suit injunction within a deadline expiring on 24 July 2019.

On 9 July 2019, Nokia filed a motion for a preliminary injunction before the District Court of Munich (District Court). Nokia requested the District Court to order Continental US to withdraw the US motion for an anti-suit injunction and to refrain from applying for an anti-suit injunction or similar measures in the future. In addition, Nokia requested an order against the German parent company of the Continental group (Continental Germany), enjoining -among other things- the latter to ensure that Continental US will withdraw the US motion for anti-suit injunction.

On 11 July 2019, the District Court granted Nokia’s request for a preliminary injunction against Continental US [190] .

On 30 July 2019, the District Court issued also an injunction against Continental Germany, ordering the latter to make sure that its affiliate will withdraw the US motion for anti-suit injunction [191] . Continental Germany appealed this decision.

On 3 September 2019, Continental US withdrew the US motion for anti-suit injunction. On 8 October 2019, however, Continental US filed a motion for a Temporary Restraining Order (TRO) against Nokia before the US Court, asking the court to enjoin Nokia from asserting its patents in Germany against companies of the Continental group and their clients. This motion was rejected.

With the present judgment dated 12 December 2019 [192] (cited by https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2019-N- 33196?hl=true&AspxAutoDetectCookieSupport=1)., the Higher District Court of Munich (Appeal Court), dismissed the appeal of Continental Germany and confirmed the injunction granted by the District Court on 30 July 2019.

B. Court’s reasoning

The Appeal Court found that Nokia was entitled to an injunction against Continental Germany, in order to prevent a direct unlawful threat to its property rights.

Under German law, an anti-suit injunction or a TRO granted by the US Court would unlawfully infringe Nokia’s property rights: Nokia would be deprived of its right to enforce the exclusivity arising from its patents against Daimler in the pending German infringement proceedings [193] .

The threat to Nokia’s property right emerging from such measures is still urgent, although Continental US had withdrawn the US motion for anti-suit injunction in the meantime. In the Appeal Court’s eyes, the new motion for a TRO filed by Continental US against Nokia indicated that the former had not abandoned the respective strategy yet [194] .

The fact that Continental US – and not Continental Germany – had initiated both motions, did not exclude an injunction against the latter [195] . The Appeal Court confirmed the District Court’s view that Continental Germany was to be considered as ‘co-perpetrator’ of the motions filed by its affiliate in the US, since it had not provided any evidence to counter Nokia’s pleadings suggesting that Continental US acted with the knowledge/consent of its German parent company [196] .

Furthermore, the Appeal Court made clear that the ‘anti-anti-suit injunction’ granted by the District Court in first instance was legally admissible [197] . Continental Germany had, basically, argued that the District Court’s injunction should not have been granted in Germany, since it had the same effect as the US anti- suit injunction, namely depriving Continental US from asserting its rights in court proceedings in the US.

Insofar, the Appeal Court disagreed with the District Court, which had ruled that a German anti-anti-suit injunction was admissible, because it concerned only an auxiliary motion filed by Continental US (motion for an anti-suit injunction) and, thus, had no effect on the main proceedings initiated against Nokia in the US [198] . The Appeal Court held that, as a rule, it is not justified to prevent a party from pursuing even auxiliary motions by court order [199] .

The Appeal Court took, however, the view that the German anti-anti-suit injunction was admissible, since it was -as Nokia had argued- the ‘only effective means of defence’ against an US anti-suit injunction [200] . Moreover, in the present case, it was justified to allow Nokia’s interest to defend itself against an unlawful legal measure to prevail over the interest of Continental US to preserve its freedom to act [201] .

Furthermore, the fact that Nokia was, in principle, in the position to participate in the US proceedings for an anti-suit injunction did not speak against granting an anti-anti-suit injunction to Nokia in Germany. Reason for that was, according to the Appeal Court, that the implications of an anti-suit injunction on Nokia’s right to proceed with the German infringement proceedings would not have been a factor considered by the US Court, when deciding on the motion for an anti-suit injunction filed by Continental US [202] . Nokia, would, therefore, not be able to sufficiently defend its rights in the proceedings before the US Court.

Equally irrelevant for the present case was the fact that the US anti-suit injunction would most likely not be enforceable in Germany [202] . The Appeal Court pointed out that the penalties which Nokia would be required to pay in the US in case of non-compliance with an anti-suit injunction would, in fact, force Nokia to stop asserting its patents in the German infringement proceedings [203] .

In addition, the Appeal Court found that the ‘anti-anti-suit injunction’ granted by the District Court in Germany did not violate international law, since it did not have any direct impact on the jurisdiction of the US courts and, accordingly, did not question US sovereignty [204] .

Finally, the Appeal Court highlighted that the decision of the District Court did neither violate European law. European law was not even applicable here, since the case involved the infringement of German patent rights by a domestic entity [205] .

[190] Nokia v Continental, District Court of Munich, Order dated 11 July 2019, Case-No. 21 O 3999/19.
[191] Nokia v Continental, District Court of Munich, Order dated 30 July 2019, Case-No. 21 O 9512/19.
[192] Nokia v Continental, Higher District Court of Munich, decision dated 12 December 2019, Case-No. 6 U 5042/19
[193] Ibid, para. 55.
[194] Ibid, para. 56.
[195] Ibid, paras. 76 et seqq.
[196] Ibid, paras. 81 et seqq.
[197] Ibid, paras. 58 et seqq.
[198] Ibid, paras. 59 et seqq.
[199] Ibid, paras. 59 et seqq.
[200] Ibid, paras. 69 and 72.
[201] Ibid, para. 69.
[202] Ibid, para. 70.
[203] Ibid, para. 71.
[204] Ibid, para. 73.
[205] Ibid, para. 74.

Updated 26 January 2017

Sisvel v ZTE, Tribunale Civile e Penale di Torino, Sezione I Civile

Italian court decisions
4 March 2016 - Case No. 2695/2016 R.G.

Additional information: Sezione I Civile, specializzata in materia di impresa (specialized in enterprise issues).

Facts
The proceedings before the Tribunale Civile e Penale di Torino concerned the appeal of Claimant in Case No. 30308/20215 R.G. seeking to set aside the decision of the court of first instance. As to the facts of the case, it can be referred to the summary of that case above.
Court’s reasoning
Due to non-compliance with the minimum duration of the NDA, including apactum de non petendo in connection to ZTE Corporation and its affiliates (such as Defendant I), of three years until 3 September 2016, Claimant’s unilateral termination of the agreement by letter as of 13 October 2014 and the subsequent initiation of proceedings were declared inadmissible. Claimant validly waived its right to bring actions under Italian law and it cannot circumvent this obligation by paying damages. According to the wording of the agreement, a lack of reaction on the part of ZTE Corporation was not to be interpreted as a waiver of rights.
Other important issues
Claimant argued that the patents in question never were essential to the UMTS standard and, hence, there existed no FRAND licensing obligation. The court rejected the appeal because Claimant’s action before the court of first instance was based on exactly the opposite argumentation (i.e. the patents in question being essential to the UMTS standard).

Updated 9 November 2020

Sharp v Daimler

LG Munich
10 September 2020 - Case No. 7 O 8818/19

A. Facts

The claimant is part of the Sharp group with headquarters in Japan (Sharp). Sharp holds a portfolio of patents declared as (potentially) essential to the practice of various wireless telecommunication standards (Standard Essential Patents, or SEPs) developed by the European Telecommunications Standards Institute (ETSI).

The defendant, Daimler, is a major German car manufacturer. Daimler produces and sells cars in Germany with connectivity features which implement standards developed by ETSI.

Sharp declared the patent involved in the present case as (potentially) essential for the 4G/LTE standard towards ETSI. ETSI requires right holders to commit to make patents that are or might become essential to the practice of a standard accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

In 2017, Sharp joined the Avanci licensing platform. Avanci offers licences to SEPs reading on connectivity standards to car manufacturers based on a standard licensing agreement and fixed rates. Avanci had been in contact with Daimler about a potential licence already since September 2016 without, however, signing an agreement.

On 20 May 2019, after an initial contact, Sharp sent claim charts to Daimler mapping its SEPs – including the patent in suit – to the relevant parts of the affected standards.

On 7 June 2019, Daimler responded that it is, in principle, willing to take a licence for patents used, but asked whether Sharp offered a bilateral licence or a licence from the Avanci platform. If a bilateral licence was offered, Daimler pointed out that it assumed that its suppliers could also be licensed.

On 23 July 2019, Daimler sent a further letter to Sharp arguing that not Daimler, but its (not individually identified) suppliers should be licensed. Daimler claimed that Sharp would breach its FRAND commitment towards ETSI, in case no licences were offered to Daimler's suppliers and requested information about agreements already signed by Sharp, especially with companies supplying connectivity units to Daimler.

On 8 August 2019, Sharp responded and informed that it intended to make an individual licensing offer to Daimler. For this, Sharp requested certain information from Daimler, particularly regarding Daimler's suppliers.

On 18 September 2019, Daimler refused to provide the information requested by Sharp and referred again to its suppliers as the correct addressees for Sharp's licensing demands.

On 22 October 2019, Sharp made an offer for a bilateral FRAND licence to Daimler. This offer was not accepted.

Subsequently, Sharp filed the present infringement action against Daimler before the District Court of Munich (Court). Several of Daimler's suppliers joined the proceeding in support of Daimler.

On 17 December 2019, after the action was filed, Daimler made a counteroffer which was followed by a request towards Sharp to consent to a stay of the pending infringement proceedings. On 31 December 2019, Sharp rejected Daimler's counteroffer.

During the course of the trial, Sharp agreed with one of Daimler's suppliers that joined the proceedings on a licensing agreement. Consequently, Sharp adapted the claims asserted in trial.

With the present judgment [206] (cited by https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2020-N-22577?hl=true), the Court granted an injunction against Daimler and also recognised Daimler's liability to pay damages on the merits. The Court further ordered Daimler to recall and destroy infringing products, render accounts and provide information necessary for the calculation of damages to Sharp.

B. Court's reasoning

The Court found that the patent-in-suit is essential to the practice of the 4G/LTE standard [207] and infringed [208] . For this reason, Sharp was entitled -among other claims- to injunctive relief [209] .

Daimler asserted a so-called 'FRAND-defence', basically, arguing that by filing an infringement action, Sharp abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) and should, therefore, be denied an injunction. Among other points, it was argued that Sharp had failed to comply with the conduct requirements established by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [210] (Huawei decision, or framework).

The Court dismissed the FRAND-defence raised by Daimler and also found that Daimler could not rely on a FRAND-defence derived from its suppliers [211] .

Abuse of market dominance

According to the Court, an abuse of market dominance by the enforcement of SEPs can occur, if the patent holder did not make 'sufficient efforts' to satisfy the 'particular responsibility' attached to its dominant position and facilitate the signing of an agreement with a licensee, which is 'in principle willing to take a licence' [212] . This requires, however, that the implementer, who already uses the protected technology without authorization by the right holder, is willing to take a licence on FRAND terms [213] . The Court explained that it cannot be requested by the SEP holder to 'impose' a licence to any standards user [213] .

Based on the above, the Court found that the initiation of the present proceedings by Sharp was not abusive in terms of Article 102 TFEU [214] . The Court did not establish whether Sharp had a dominant market position, but just assumed that this was the case [214] Nevertheless, an abuse of (assumed) dominance was not given, since Daimler had failed to adequately express willingness to obtain a licence for Sharp's SEP portfolio [215] .

Willingness

The Court explained that the implementer has to 'clearly' and 'unambiguously' declare that it is willing to sign a licence with the SEP holder 'on whatever terms are in fact FRAND' and, subsequently, engage in licensing negotiations in a 'target-oriented' manner (citing Federal Court of Justice, judgment dated 5 May 2020 – Sisvel v Haier, Case No. KZR 36/17 and High Court of Justice of England and Wales, judgment dated 5 April 2017, Case No. [2017] EWHC 711(Pat) – Unwired Planet v Huawei) [213] .

This means that the implementer should not delay licensing negotiations [216] . In the eyes of the Court, this is particularly important since implementers, which already use the patented standardized technology prior to negotiations, could have the -sole or predominant- interest to delay the signing of a licence until the expiration of the patent [216] .

Having said that, the Court found that Daimler did not behave as a 'willing' licensee [215] .

Looking at Daimler's behaviour before the counteroffer to Sharp was made, the Court held that a 'clear' declaration of willingness is missing [217] . In its first response to Sharp dated 7 June 2019, Daimler did not express a commitment of any kind going beyond the general willingness to discuss a licence, if Sharp's patents were used [218] . Furthermore, Daimler's letter dated 23 July 2019 did neither contain an adequate declaration of willingness, particularly since Daimler referred Sharp -without specification- to its suppliers and insisted that Sharp is obliged to license the latter [219] . The same is true with respect to the statement dated 18 September 2019, in which Daimler again referred to its suppliers and refused to provide Sharp with information necessary for drawing up a licensing offer [220] . The Court noted that although no legal obligation to share the information requested by Sharp existed, Daimler's respective refusal made clear that it did not engage in the discussions in a 'target-oriented manner', but rather aimed at delaying the negotiations [221] . This is also confirmed by the fact that Daimler's response came almost six weeks after Sharp's respective request; the Court did not see any reason why Daimler's reaction took so long [221] .

In addition, the Court noted that the finding that Daimler acted as an 'unwilling' licensee was reinforced by Daimler's overall behaviour in the discussions with the Avanci platform [222] . The Court held that for the assessment of the 'willingness' of an implementer who raises a FRAND defence the entire conduct must be taken into account, not only facts occurring, in terms of time, directly after receipt of an infringement notification [223] . The standard for the assessment of willingness should not depend on the -rather random- fact of whether the implementer was first approached by the patent holder or took the initiative to seek a licence itself, instead [224] . Although the duties established in the Huawei judgment (one of which is to react to an infringement notification by expressing 'willingness' to obtain a licence) shall, as a rule, be followed as 'steps' in the order described by the CJEU, exceptions must be allowed on a case-by-case basis, if the parties' behaviour allows for that and a purely 'formalistic' view of the Huawei framework does not appear appropriate [225] . According to the Court this was the case here, since Daimler that had been in contact with Avanci since September 2016 and had not expressed the willingness to take a licence at any point in time [226] .

The Court further found that Daimler's counteroffer dated 17 December 2019, which was made only after the infringement action was filed, could not remedy the missing willingness [227] . In the view of the Court, the fact that the counteroffer was followed by a request towards Sharp to consent to a stay of the ongoing proceedings showed, in the present case, that Daimler only aimed at causing delay; the counteroffer could, therefore, not compensate the 'massive unwillingness' which Daimler had demonstrated up to that point in time [228] . In this respect, the Court noted that the possibility to remedy flaws during pending court proceedings (e.g. by making a counteroffer), is, in principle, given, however, under increasingly stricter conditions as the trial progresses [229] .

The Court also highlighted that, in terms of content, Daimler's counteroffer did not express a willingness to obtain a licence on 'whatever terms are in fact FRAND' [230] . By using a different 'reference point' for the royalty calculation, Daimler had counteroffered only a fraction of the fees offered by Sharp or collected by Avanci from its competitors, so that the rejection of the counteroffer was 'logically necessary' [231] .

In this context, the Court made clear that for the assessment of willingness only the behaviour of Daimler was relevant [232] . What is more, Daimler could not rely on the -alleged- willingness of the suppliers that joined the proceedings to obtain a licence from Sharp, in order to avoid an injunction [233] . Accordingly, the Court did not examine whether Daimler's suppliers had indeed acted as 'willing licensees' [233] .

Non-discrimination / licensing level

Apart from the above, the Court explained that Sharp did not act in an abusive or discriminatory manner by seeking to license only Daimler as the end device manufacturer [234] .

The Court took the view that Sharp was not obliged to license Daimler's suppliers [235] . The fact that in the (German) automotive sector it is common that suppliers take licences concerning components sold to car manufacturers, does not oblige Sharp to respect and accept this practice [236] . On the contrary, as far as its products increasingly use wireless telecommunications technologies, Daimler must accept the practices prevailing in this field which include licensing also to end device manufacturers [236] .

Irrespective of this, Sharp is under no legal duty to grant licences to component manufacturers; it is only obliged to grant 'access' to the standard, on which its SEPs read [237] . The patent holders' commitment towards ETSI creates an obligation to license SEPs to third parties [238] . The Court highlighted that this does not entail, however, an obligation to grant licences at all levels of the value chain [239] . Such an obligation does not arise either from competition nor from patent or contract law in conjunction with the FRAND undertaking towards ETSI [239] .

In particular, EU competition law does not establish an obligation to license SEPs at all levels of the value chain [240] . According to the Court, patent holders are, in principle, free to choose the level of the value chain for licensing [241] . In the Huawei judgment, the CJEU pointed out that the FRAND undertaking creates 'legitimate expectations' on the part of third parties to be licensed by the patent holder. The Court held, however, that by that no obligation to license all suppliers of an end-device manufacturer is created; access to the market does not necessarily require a licence, but just a 'possibility of legal use', which can be, for instance, given through a licence granted at the last level of the value chain, from which suppliers can draw 'have-made-rights' [241] .

The Court also explained that neither patent law dictates the level of the value chain, at which SEP licences must be granted [242] . Especially the fact that not all patents contained in a SEP portfolio are necessarily exhausted at all times at the level of component manufacturers speaks for licensing at the end-device level (in addition to the more efficient 'management' of the licensing fees which is possible in this scenario) [243] .

Finally, the Court pointed out that contract law in conjunction with the FRAND undertaking towards ETSI do not impose an obligation on the patent holder to license every interested third party [244] . Under the applicable French law, Section 6.1. ETSI IPR Policy is to be understood as establishing only an obligation to negotiate a FRAND agreement in good faith with a party seeking a licence [245] . However, by referring to 'equipment', this provision addresses only end-device manufacturers, since not all components necessarily implement the standard as a whole [246] . In the eyes of the Court, the views expressed by the European Commission in different occasions in the past do not lead to a different conclusion [247]

FRAND defence raised by suppliers

The Court further found that Daimler cannot profit from a FRAND defence raised by suppliers [248] . The defendant can rely on such defence only if the patent holder is under an obligation to license the suppliers; this does not apply, however, when the defendant is in a position to sign a licence with the SEP holder itself which sufficiently considers patent exhaustion within the relevant value chain [248] .

The Court considered that this was the case here. Daimler's suppliers did not have an own claim to be granted a licence against Sharp, but a claim for a 'legally secured access' to standardised technology which cannot be considered in favour of Daimler [249] .

C. Other issues

Furthermore, the Court ruled that there are no grounds for a limitation of Sharp's claim for injunctive relief based on proportionality considerations [250] . Daimler had argued that no injunction should be granted based on the patent in suit, since the vehicles it manufactures are 'complex' products integrating a large number of components and the telematic control unit, on which Sharp's SEPs read, is of minor importance for the car.

The Court made clear that, under German law, proportionality is a general principle of constitutional rank that is to be considered also with respect to injunctive relief, if a respective objection is raised by the defendant [251] . According to the jurisprudence of the Federal Court of Justice, 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 [252] .

In the eyes of the Court, any limitation of the right to injunctive relief shall come into question 'in very few exceptional cases' and must, thus, be subject to strict conditions, not least for preserving the 'legal order' as well as 'legal certainty and predictability' [253] . A case-by-case assessment of all relevant facts must take place, whereas the overall substantive and procedural framework (including e.g. the need to provide security for the enforcement of first-instance injunctions) should be considered [253] . The Court explained that only hardships going beyond the usual consequences of an injunction can be taken into account [253] . It should be expected from the infringer to make efforts towards the signing of a licence as soon as possible and take precautions against a potential injunction after receipt of an infringement notification, at the latest [253] .

Against this background, the Court noted that even if only a single component of Daimler's vehicles might be affected in the present case, the dispute revolves around the licensing of a complex patent portfolio (either Sharp's or Avanci's portfolio) [254] . The Court was further not convinced that the features enabled by Sharp's patents were of minor importance to Daimler's vehicles, since a significant part of innovation referring to 'connected cars' relates from both technical and economic angle closely to mobile telecommunications technologies [255] . Finally, the Court also criticized the fact that Daimler did not make serious efforts for signing a licence with Sharp or Avanci [256] .

[206] Sharp v Daimler, District Court of Munich, judgment dated 10 September 2020, Case-No. 7 O 8818/19
[207] Ibid, paras. 68 et seqq
[208] Ibid, paras. 25 et seqq
[209] Ibid, para. 90
[210] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13
[211] Sharp v Daimler, District Court of Munich, judgment dated 10 September 2020, Case-No. 7 O 8818/19, para. 121
[212] Ibid, para. 124
[213] Ibid, para. 125
[214] Ibid, para. 128
[215] Ibid, paras. 130 et seqq
[216] Ibid, para. 126
[217] Ibid, paras. 132 et seqq
[218] Ibid, paras. 134 et seq
[219] Ibid, paras. 136 et seq
[220] Ibid, paras. 138 et seqq
[221] Ibid, para. 140
[222] Ibid, para. 141
[223] Ibid, paras. 142 et seq
[224] Ibid, paras. 143 et seq
[225] Ibid, para. 144
[226] Ibid, paras. 146-149
[227] Ibid, para. 150
[228] Ibid, paras. 151 and 153
[229] Ibid, para. 152
[230] Ibid, para. 154
[231] Ibid, paras. 154 et seqq
[232] Ibid, paras. 158 and 159
[233] Ibid, para. 158
[234] Ibid, paras. 161 et seqq
[235] Ibid, para. 162
[236] Ibid, para. 164
[237] Ibid, para. 165
[238] Ibid, para. 168
[239] Ibid, para. 169
[240] Ibid, paras. 170 et seqq
[241] Ibid, para. 171
[242] Ibid, paras. 173 et seq
[243] Ibid, para. 174
[244] Ibid, paras. 175 et seqq
[245] Ibid, paras. 177 et seqq
[246] Ibid, para. 178
[247] Ibid, paras. 180-183. The Court referred particularly to the decision of the European Commission, Case No. AT.39985 – Motorola; the Communication on the Guidelines on the applicability of Article 101 TFEU to horizontal co-operation agreements (2011/C 11/01); and the Communication on ICT Standardisation Priorities for the Digital Single Market, COM(2016) 176 final.
[248] Ibid, para. 167
[249] Ibid, para. 185
[250] Ibid, paras. 92-102
[251] Ibid, para. 93
[252] Ibid, para. 94
[253] Ibid, para. 95
[254] Ibid, paras. 97 et seq
[255] Ibid, paras. 100 et seq
[256] Ibid, para. 99

Updated 26 January 2017

NTT DoCoMo v HTC

LG Mannheim
29 January 2016 - Case No. 7 O 66/15

Facts
Claimant owns the patent EP 1 914 945, declared to be essential with regard to ETSI’s UMTS standard. Defendant markets devices implementing the UMTS standard (in particular the HSUPA/EUL technology). On 19 March 2014 Claimant sent to Defendant’s group parent a detailed licensing offer and explained its conditions at several instances before filing suit in April 2015. As of 7 April 2014 and 15 July 2014, Claimant communicated to Defendant’s group parent company claim charts in order to demonstrate standard-essentiality of its patent and further explained the issue in a presentation on 8 July 2014. Defendant submitted its first counter-offer on 30 October 2015. The counter-offer envisaged a 3 year-license limited to some of the countries in which Defendant markets its products. Claimant rejected the counter-offer on 12 November 2015. Defendant did not provide security but merely promised to do so, based on a calculation including sales of relevant devices in Germany only. Claimant rejected this and demanded security based on worldwide sales.
Court’s reasoning
1. General meaning of the Huawei framework
  Prior to discussing specific conduct requirements established by the Huawei ruling, the court sketches its approach in a general manner. [257] According to the court the Huawei decision establishes a set of rules of due conduct in SEP licensing negotiations. Based on whether the parties comply with these rules the respective court can determine whether an SEP owner’s seeking of an injunction and a recall of products constitutes an abuse of a position of market dominance or a justified reaction to a standard implementer’s delaying tactics. In consequence, the respective court does not—unless it has to decide a claim for the payment of licensing fees and not claims for injunction and recall of products—have to rule on the substance of the offered licensing conditions or their being FRAND. [258] This is in line with recognized commercial practice according to which reasonable parties will not usually want courts to determine their licensing conditions. Furthermore, the ECJ has—from the perspective of the Mannheim District court—stressed that the exercise of the exclusive rights conveyed by a patent will be barred only in very exceptional circumstances. As a result, it is up to the standard implementer to show that such exceptional circumstances are present. [259]
2. Market power and notice of infringement
  The court does not elaborate on the market power issue. As part of the notice of infringement [260] the court deems it necessary for the proprietor to identify the (allegedly) violated patent, including the patent number, and to inform that the patent has been declared standard-essential. Furthermore, the proprietor has not only to name the standard but to specify the pertinent part of the standard and the infringing element of the implementer’s products in a way that enables the standard implementer to assess whether its use of the standard infringes on the patent-in-suit. The level of detail required must be determined on a case-by-case basis, depending mainly on the expertise of – or available to – the implementer. Presenting claim charts corresponding to recognized commercial practice for licensing negotiations is, in principle, an acceptable way to give notice of the alleged infringement. In casu the court considered the proprietor’s notice as sufficient. [261] In particular, notice was given before the bringing of an action for infringement and the proprietor had submitted claim charts not only with regard to the patent-in-suit but also with regard to six other patents from the portfolio offered for license, a sample which the court deemed in accordance with recognized commercial practice. Sufficient notice having taken place, the court left open the question whether, (1) the Huawei rules applied at all in spite of the action being brought before the ECJ’s decision, and whether (2) the proprietor was obliged to submit claim charts for other patents than the patent-in-suit.
3. The SEP proprietor’s licensing offer
  The court’s general understanding of the Huawei rules of conduct (cf. above) has a considerable impact on the way it intends to react to a SEP proprietor’s licensing offer: [262] The offer must specify the relevant conditions in a way that, in order to conclude a licensing agreement, the standard implementer has merely to state his acceptance of the offer. The calculation of the license fee, in particular, must be explained in a manner that enables the standard implementer to objectively assess its FRAND conformity. Even if the standard implementer disputes the FRAND character of the offer it is not the court’s business to determine whether the licensing conditions are actually FRAND. Neither is the SEP proprietor prohibited from offering conditions slightly above the FRAND threshold. A differing view of the parties on what constitutes FRAND is to be expected and provides no reason for cartel law-based intervention. An exploitative abuse of market power can, however, be present where the proprietor, after having made a FRAND declaration, offers conditions that are, under the circumstances of the case and without objective justification, manifestly less favorable (in an economic sense) than the conditions offered to other licensees. Correspondingly, the respective court is only required to determine, based on a summary assessment, whether the proprietor’s licensing offer evidently violates the FRAND concept. In casu the court accepted the Huawei compliance of the licensing offer, [263] in particular because the proprietor had explained its calculation of the licensing fee based on the percentage of patents in the WCMA/SIPRO and the VIA patent pools held by the proprietor. The proprietor was not required to prove its share in the patent pools. The parties disagreed over whether the smallest saleable unit forms an appropriate basis for royalty calculation and whether it is acceptable to look only at the size, not the quality of a proprietor’s share in a relevant patent pool. The court, however, considered these issues as not decisive for the Huawei-conformity of the licensing offer.
4. The standard implementer’s reaction
  As a further consequence of the court’s general approach, the standard implementer’s duty to diligently react to the proprietor’s licensing offer is not removed only because the offer does not fully comply with FRAND. [264] . An exception applies only where it can be established by a mere summary assessment that the offer evidently violates FRAND. If a reaction of the alleged infringer is due, the “diligence”, i.e. timeliness, of this offer has to be determined cases-by-case, based on the principles of good faith and recognized commercial practice. In casu the standard implementer’s reaction was insufficient (1) because a counter-offer was made only 1.5 years after receiving the licensing offer and 0.5 years after the bringing of the proprietor’s action, (2) because security was merely promised, not provided, and (3) because the amount of security offered fell short of the court’s suggestions.
Other important issues
The court underlines that a SEP proprietor has to respect the Huawei rules of conduct only with regard to an action for prohibitory injunction or the recall of products. It is, however, free from their grip when bringing an action seeking the rendering of accounts in relation to past acts of use or an award of damages in respect of those acts of use.

[257] Case No. 7 O 66/15, para. 53 et seq.
[258] Case No. 7 O 66/15, para. 56
[259] Case No. 7 O 66/15, para. 53
[260] Case No. 7 O 66/15, para. 57
[261] Case No. 7 O 66/15, para. 65-69
[262] Case No. 7 O 66/15, para. 58
[263] Case No. 7 O 66/15, para. 70-72
[264] Case No. 7 O 66/15, para. 59 et seq

Updated 6 June 2017

Sisvel v Haier

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

Facts
The proceedings concerned the subsequent application of Defendant in Case No. 4a O 144/14 to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. As to the facts of the case, it can be referred to the deliberations under point “1b” of the previous summaries.
Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous. If the decision, as in the present case, has been declared provisionally enforceable subject to the provision of security by Claimant suspension of execution will only be granted in exceptional circumstances. [265]
Court’s reasoning
1. The SEP owner’s licensing offer
  The question of whether granting a portfolio license would be FRAND was referred to the subsequent appeal proceedings. [266]
2. The standard implementer’s reaction
  More importantly, the Court found that the standard user is not required to respond to a license offer of the SEP proprietor if the terms of that offer are not FRAND. In other words, the subsequent obligations of the alleged infringer derived from Huawei only arise when and provided that the SEP proprietor submitted an offer on FRAND terms. As the lower court had not determined whether the conditions of the proprietor’s license offers were FRAND, the Court considered this part of the lower court’s decision to be manifestly erroneous. Given this flaw in the lower court’s reasoning, it was left undecided by the Court whether a license offer submitted in the course of the oral hearings can fulfill the Huawei requirements. [267]
Other important issues
For the purposes of the present proceedings, the Court explicitly stated that there is—in principle—no reason to treat patent assertion entities, such as Claimant, in a different manner than other market participants. [268]

[265] Case No. 15 U 65/15, para. 2
[266] Case No. 15 U 65/15, para. 28
[267] Case No. 15 U 65/15, para. 23-30
[268] Case No. 15 U 65/15, para. 12

Updated 21 November 2018

Core Wireless v LG, Court of Appeal of Paris

French court decisions
9 October 2018 - Case No. RG 15/17037

A. Facts

The Claimant, Core Wireless Licensing S.à.r.l., holds a portfolio of patents declared essential to the GSM, UMTS and LTE wireless telecommunication standards (Standard Essential Patents or SEPs). The Defendants, LG Electronics France S.A.S. and LG Electronics Inc., manufacture and sell – among others – mobile devices complying with the above standards.

The Claimant acquired its portfolio of SEPs from Nokia by a ‘Purchase and Sale Agreement’ concluded in 2011 [269] . The Claimant, Nokia and Microsoft also concluded a so-called ‘Royalty Participating Agreement’, referring to encumbrances [270] .

The parties failed to reach an agreement on a licence for Claimant’s SEP portfolio. Consequently, the Claimant brought an infringement action against the Defendants before the District Court (Tribunal de Grande Instance) of Paris, based on five French patents of its portfolio. The District Court of Paris dis-missed Claimant’s action [271] .

In the ongoing appeal proceedings before the Court of Appeal (Cour d’ Appel) of Paris (Court), the Defendants requested the Court to order the Claimant to produce the ‘Purchase and Sale Agreement’, the ‘Royalty Participating Agreement’, as well as all licensing agreements concluded by the Claimant with third parties, covering the patents in suit [269] . A few days prior to the oral hearing, the Claimant requested, in turn, that the Defendants produce four license agreements which they had entered with third parties [272] .

With the present decision, the Court dismissed Claimant’s request; it held that it was delayed and that the Claimant failed to explain the relevance of the requested licensing agreements to the present pro-ceedings [270] .

On the other hand, the Court granted the Defendants’ request [270] under the following conditions: First, the relevant documents will be made available (unredacted) only to the parties’ counsels, within a deadline of one month after the Court’s order [273] . The parties’ counsels will then be given the opportunity to argue by written submissions which parts or elements of these documents may affect business secrets [273] . On this basis, the Court will decide whether further measures (as set-forth in paragraphs 2, 3 or 4 of Article L. 153-1 of the French Commercial Code) are required for the protection of potential confidential information, or not [273] .

B. Court’s reasoning

The Court made use of the procedural possibilities for the protection of business secrets in court pro-ceedings recently introduced to the French Commercial Code by Law No. 2018-670 dated 30 July 2018 [274] .

In particular, the Court referred to paragraph 1 of Article L. 153-1 of the French Commercial Code, which reads as follows:

‘Where, in the course of civil or commercial proceedings aimed at obtaining a pre-trial order for investiga¬tive measures before any proceedings on the merits, or in the course of proceedings on the merits, the communication or production of a document is requested, which has been deemed to infringe or alleged by a party to the proceedings or a third party to be capable of infringing a trade secret, the court may take any of the following steps on its own motion or at the request of a party to the proceedings or a third party, if the trade secret cannot be otherwise protected, without prejudice to the rights of defence:

(1°) The court alone will review the document and, if deemed necessary, order an expert valuation and request the opinion, for each of the parties, of a person authorized to assist or represent the party, in order to decide whether to apply the protective measures set out in this Article.’

According to the paragraphs 2-4 of Article L. 153-1 of the French Commercial Code, the Court can order the following protective measures:

(2°) Decide to limit the disclosure or production of the document to certain parts thereof, order disclo¬sure or production of a summary of the document only, or restrict access to the document, for each of the parties, to a single individual person and a person authorized to assist or represent that party;
(3°) Decide that hearings will be held and the decision will be issued in chambers;
(4°) Adapt the grounds of the decision and the mode of publication thereof to the needs of protecting the trade secret.’

[269] Court of Appeal (Cour d’ Appel) of Paris, judgment dated 9 October 2018, page 5.
[270] Ibid, page 5.
[271] District Court (Tribunal de Grande Instance) of Paris, judgment dated 17 April 2015, Case No. 14/14124.
[272] Ibid, page 2.
[273] Ibid. page 6.
[274] Ibid, page 5 et seq.

Updated 6 June 2017

Philips v Acer

OLG Karlsruhe
29 August 2016 - Case No. 6 U 57/16

Facts
1. Decision First Instance
  The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). This case first instance concerned the infringement of the patent EP 0.745.307.B3, which covered a technology for subtitles in the DVD standard. The defendant marketed computers that use a DVD-software. The claimant, which commercialised the patent in question through a patent pool, [275] had made a FRAND-declaration to the “DVD-Forum” which administers the DVD standard. [276]
  On 30 May 2014, the defendant offered to enter into a license agreement for patent in question and respective products marketed in Germany. The license fees were based on an expert opinion which the defendant had commissioned. Alternatively, the defendant suggested that the license fees could be determined by the claimant in good faith pursuant to sec 315 of the German Civil Code. [277] The defendant made a deposit with the Düsseldorf Magistrates Court which covered use of the patent in Germany and rendered account to the claimant. On 25 July 2014, the claimant sent an amended counter-offer, which was rejected by the defendant. [278] On 13 March 2015, the claimant made another license offer for a world-wide portfolio license, giving details about the calculation of the license fee. [279] The defendant requested claim charts and rejected the calculation details as insufficient. [280]
  The District Court of Mannheim ordered the defendant to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [281] to calculate the amount of compensation it owed. [282]
2. The Ensuing Application for Stay of Execution
  Under the German rules of civil procedure, the Higher Regional Court can only grant a stay of execution if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [283] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [283]
  The applicant sought to stay the execution of the order of the District Court of Mannheim, [284] which required it to render full account. Instead, the applicant contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [285] The Higher Regional Court of Karlsruhe dismissed the application. [283] It held that the decision of the District Court of Mannheim was not manifestly erroneous. Further, the applicant had not provided sufficient evidence that particularly severe harm would be caused if the decision of the District Court of Mannheim were executed. [286]
Court’s reasoning
Other important issues
The claimant commercialised the patent in question through a patent pool. This fact itself, according to the court, does not mean that the applicant’s interests outweigh the interests of the claimant. [289] In the past, the court had given special consideration to whether the claimant’s interests were primarily focused on receiving royalties (Higher Regional Court of Karlsruhe, 23 April 2015, Case No. 6 U 44/15; Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). However, the court reasoned, in contrast to the case at issue, that the aforementioned decisions had concerned cases in which it was likely that the decision at first instance would not be upheld on appeal. [289]
The court held that the decision at first instance was not manifestly erroneous in its interpretation of Art. 101 TFEU (anticompetitive conduct). The District Court of Mannheim had been of the opinion that an alleged breach of Art. 101 TFEU could not be raised as a defence in patent infringement proceedings. [290] If a standardisation agreement breached Art. 101 TFEU, the standard would be void. The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts if the commencement of patent infringement proceedings by an SEP holder constituted a breach of Art. 101 TFEU. However, even if that were the case, this defence would only be relevant against injunctions, but not in respect of compensation and rendering accounts claims. [291]

[275] Case No. 6 U 57/16, para 5
[276] Case No. 6 U 57/16, para 8
[277] Case No. 6 U 57/16, para 10
[278] Case No. 6 U 57/16, para 11
[279] Case No. 6 U 57/16, para 12
[280] Case No. 6 U 57/16, para 13
[281] Case No. 6 U 57/16, paras 15-19
[282] The decision omits further details on the decision first instance because they are not relevant for the application, see OLG Karlsruhe, 29 August 2016, Case No. 6 U 57/16, para 14
[283] Case No. 6 U 57/16, para 25
[284] Case No. 6 U 57/16, para 23
[285] Case No. 6 U 57/16, para 23, 31
[286] Case No. 6 U 57/16, para 26
[287] Case No. 6 U 57/16, para 31
[288] Case No. 6 U 57/16, para 32, 33
[289] Case No. 6 U 57/16, para 43
[290] Case No. 6 U 57/16, para 28
[291] Case No. 6 U 57/16, para 30

Updated 20 February 2018

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

English court decisions
21 November 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 January 2017

Pioneer v Acer

LG Mannheim
8 January 2016 - Case No. 7 O 96/14

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.
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. [292] 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. [293] 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. [294] 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. [295]
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: [296] 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, [297] 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. [298] 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. [299] As the court explains in some detail, [300] 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.
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. [301]
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. [302]
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. [303] 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.

[292] Case No. 7 O 96/14, para. 84-107
[293] Case No. 7 O 96/14, para. 81-83
[294] Case No. 7 O 96/14, para. 109 et seq.
[295] Case No. 7 O 96/14, para. 114-117
[296] LG Mannheim, 29 January 2016 – Case No. 7 O 66/15, para. 58
[297] Case No. 7 O 96/14, para. 118-129
[298] Case No. 7 O 96/14, para. 131-133
[299] Case No. 7 O 96/14, para. 134 et seq.
[300] Case No. 7 O 96/14, para. 136-141
[301] Case No. 7 O 96/14, para. 142
[302] Case No. 7 O 96/14, para. 144 et seq.
[303] Case No. 7 O 96/14, para. 146

Updated 26 January 2017

Unwired Planet v Samsung

LG Düsseldorf
19 January 2016 - Case No. 4b O 120/14

Facts
Since 7 March 2014 Claimant, a non-practicing entity, is the proprietor of European patent EP D, allegedly covering a feature of the GSM standard, originally granted to the Intervener, and subsequently transferred to company “I”. Defendants, belonging to the K-group, produce and market GSM- and UMTS-based devices.
In an agreement as of 26 October 2011, the Intervener granted a worldwide non-exclusive license to Qualcomm Inc., being, in turn, allowed to grant sub-licenses to its customers. Furthermore, by agreement as of 1 February 2014 one of the Defendants was granted a worldwide, non-exclusive license to patents owned by the Intervener.
On 10 January 2013, the Intervener concluded a so-called “Master Sales Agreement” (MSA), concerning the exploitation of a portfolio of more than two thousand patents, with “E”, “F” and its subsidiaries. Claimant became a party to the MSA later on. After its accession to the MSA, “I”, by assuming the existing FRAND obligation of the Intervener in accordance with the MSA, made a separate FRAND commitment towards ETSI on 14 June 2013 and declared, in an agreement as of 13 February 2013, to ensure that subsequent acquirers equally assume this obligation. Accordingly, after the transfer of patent EP D to Claimant the latter made, on 6 March 2014, a separate commitment towards ETSI declaring to be willing to grant licenses on FRAND terms with regard to, inter alia, patent EP D.
In order to implement the MSA the parties concluded three transfer agreements. Claimant argues that the Intervener validly transferred a part of its patent portfolio, including patent EP D, by agreement as of 11 February 2013 to undertaking “B”. On 13 February 2013, “B”, in turn, transferred the patent portfolio, including patent EP D, to “I”. After successfully requesting, on 3 September 2013, an amendment of the patent register, being performed on 24 October 2013, “I” transferred, on 27 February 2014, the patent portfolio, including patent EP D, to Claimant. Claimant successfully requested, on 7 March 2014, an amendment of the patent register which was performed on 3 July 2014.
As a reaction to Claimant’s public license proposal including a royalty of USD 0.75 per mobile device Defendants allegedly submitted a counter-offer but no licensing agreement was concluded.
Court’s reasoning
1. Market power
  The court stressed that an application of Article 102 TFEU does not automatically result from SEP ownership but that it requires proof of a dominant position on the relevant market being conveyed by the SEP in question. Due to the fact that products not implementing the patent-in-suit could not effectively compete on the relevant market because of GSM being a key feature for such products market power of Claimant was affirmed. [304]
2. Applicability of the Huawei rules to damages and the rendering of accounts
  While the Huawei rules of conduct apply to actions for injunction, recall and destruction of products they are, in principle, not directly applicable to claims for damages and the rendering of accounts. [305] Nor is it necessarily abusive for a SEP proprietor to bring an action for damages and the rendering of accounts without having notified the standard implementer of an infringement and without having offered a FRAND license beforehand. The Huawei obligations do, however, have an indirect impact on the extent to which damages and the rendering of accounts are due: Where the SEP proprietor fails to grant a FRAND license although he has made a FRAND commitment and the standard implementer has expressed its readiness to take a license, damages are limited to the FRAND royalty level but only for the period after the SEP proprietor’s abusive refusal to license. [306] Claims for information and the rendering of accounts must, in this event, be limited to what is necessary for determining FRAND-based damages. [307]
3. Cap on damages/rendering of accounts in casu
  In casu Defendant could not show that he had complied with its Huawei obligation to sufficiently express its willingness to take a FRAND license. In consequence, no cap on Claimant’s claim for damages was deemed appropriate. [307]
Other important issues
Whether a SEP proprietor is free to enforce its patent in court or whether the proprietor is obliged to grant a FRAND license has to be determined under Art. 102 TFEU, not Art. 101 TFEU. [308] A FRAND declaration is not an unconditional offer made by the patent proprietor to enter into a licensing agreement with anyone willing to take a license, it merely expresses that the proprietor is, in principle, ready to grant a FRAND license if the patent in question conveys market dominance. As such, the FRAND commitment merely specifies a duty to license which competition law would impose anyway but it has an impact on the patent owner’s obligations under Art. 102 TFEU. [309]
As regards the transfer of a SEP from the original patent proprietor to a non-practicing entity, registration in the patent register in accordance with § 30 (3) PatG establishes—also with regard to claims for damages and the rendering of accounts—presumption of ownership, allowing the proprietor to enforce all rights derived from the SEP as long as the presumption has not been successfully rebutted by Defendants. The non-registration of “B” as an interim owner was considered irrelevant under the circumstances of the present case (but not generally). Case No. 4b O 120/14, para. I, 1-2
The MSA and the subsequent transfer agreements neither violate the German provisions on merger control (§§ 35-43 GWB) since, in any case, merger control thresholds are not reached.
Nor was a violation of the European provisions on anticompetitive agreements (Article 101 TFEU) or on the abuse of a dominant position (Article 102 TFEU) found. Case No. 4b O 120/14, para. I, 4, a-c In particular, the transactions did not aim at enforcing non-FRAND royalties or at discriminating between licensees and the agreements framing the transactions ensured that the acquirers of the relevant patents were bound by (the initial) FRAND commitments. [310] The acquirer of a SEP is neither obliged to continue the transferor’s licensing practice in an unmodified manner nor to implement exactly the same conditions in all licensing agreements, provided the conditions are FRAND and no unjustified discrimination takes place. It is not abusive in itself for a (former) SEP proprietor to split its portfolio and to transfer the parts to several acquirers, thereby trying to arrive at higher overall royalties being paid for the portfolio. Nor is a resulting increase in the number of licenses a standard implementer has to take per se inacceptable. However, licensing conditions are FRAND only if the cumulative royalty level resulting from the licensing of all pertinent SEPs is not excessive. Putting it differently, where the royalty level for the entire portfolio was below or at the lower end of the FRAND range, it is not abusive to arrive, by way of splitting the portfolio and licensing its parts separately, at a higher overall royalty level within the FRAND range. Furthermore, the transaction agreements did not amount to price fixing. [311]

[304] Case No. 4b O 120/14, para. VII, 6, a
[305] Case No. 4b O 120/14, para. VII, 6, b, aa, bb
[306] Case No. 4b O 120/14, para. VII, 6, b, dd
[307] Case No. 4b O 120/14, para. VII, 6, b, ee
[308] Case No. 4b O 120/14, para. VII, 4
[309] Case No. 4b O 120/14, para. VII, 5
[310] Case No. 4b O 120/14, para. I, 4, b, aa
[311] Cf. for details LG Düsseldorf, 19 January 2016 - Case No. 4b O 120/14, para. I, 4, b, bb

Updated 23 January 2018

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

English court decisions
5 April 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. [312] Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [313] 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. [314]

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. [315] 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. [316] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [317]

The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [318] 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. [319]

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. [320] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [321] 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. [322]

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. [323] 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, [324] 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. [325] 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. [325]

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. [326] 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. [327] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [328]

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’). [329] This eliminates the so-called Vringo-problem, [330] 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. [331]

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. [332] 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, [334] 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. [334]

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. [335] 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. [336] 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. [337]

Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [336] 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. [338] 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. [337]

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. [339] 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. [339] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [340] 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. [341] 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. [342]

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. [343] Other freely-negotiated license agreements might be used as comparables. [344] This may be compared with a top down approach [345] 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. [346] 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. [343] License agreements must meet certain criteria to be comparable. [347] 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. [347] 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%). [348]

2. Principles derived from Huawei v. ZTE

The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [349] 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.

[312] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2.
[313] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
[314] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3.
[315] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5.
[316] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8.
[317] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14.
[318] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807.
[319] Unwired Planet v Huawei, EWHC 1304 (Pat).
[320] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631.
[321] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634.
[322] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646.
[323] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656.
[324] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145.
[325] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146.
[326] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162.
[327] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163.
[328] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159.
[329] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164.
[330] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat).
[331] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158.
[332] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152.
[333] 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.
[334] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153.
[335] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176.
[336] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177.
[337] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503.
[338] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501.
[339] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544.
[340] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534.
[341] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546.
[342] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572.
[343] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171.
[344] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
[345] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
[346] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
[347] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175.
[348] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476.
[349] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744.

Updated 6 June 2019

Conversant v LG, Court of Appeal of Paris

French court decisions
16 April 2019 - Case No. 061/2019, RG 15/17037

A. Facts

On 1 September 2011, the Claimant, Conversant Wireless Licensing SARL (Conversant; previously named Core Wireless Licensing SARL), acquired from Nokia more than 2,000 patents declared essential to the GSM, UMTS or LTE standards (Standard Essential Patents, or SEPs) towards ETSI [350] .

Conversant contacted the Defendants, LG Electronics France SAS and LG Electronics Inc. (LG) for a licence under the patents in March 2012. The parties held a few meetings to find an agreement on a Fair, Reasonable and Non-Discriminatory (FRAND) rate for a global license under Conversant’s essential patents [351] .

On 30 September 2014, Conversant brought an infringement action against LG based on five patents before the Paris Court (Court), asking inter alia for a FRAND rate determination [352] .

In first instance, the Court rejected Conversant’s claims, as it held that Conversant had not demonstrated the essentiality of the patents in suit [353] .

On appeal, Conversant solely asserted two out of the five patents asserted in first instance [354] . With the present judgment, the Court of Appeal of Paris (Court of Appeal) confirmed the first instance decision, finding the patents in suit valid but not essential [355] .

B. Court’s reasoning

Validity, Essentiality and Infringement

In first instance, Conversant alleged five patents to be essential and infringed by LG [350] . On appeal, both parties acknowledged that, for three of them, the essentiality was not sufficiently supported [356] .

Therefore, the Court of Appeal limited the analysis of validity, essentiality and infringement to the two other patents, EP 978 210 (EP 210) and EP 950 330 (EP 330) [352] . LG raised prior art documents to challenge the validity, novelty and inventive steps of the patents. The Court of Appeal analysed those documents to determine that none was destroying the validity of the patents [357] .

Regarding the essentiality, Conversant had alleged that EP 210 was essential to both UMTS and LTE standards [358] and EP 330 was essential to the LTE standard [359] . The Court of Appeal rejected those claims by comparing the patent specifications to the technical specifications of the relevant standards [360] and found hold that standard compliant devices do not necessarily have to use the patents in suit. The Court considered that it is possible to comply with the UMTS and LTE standards without implementing said patents. The Court, therefore, found that the patents are not essential [352] .

FRAND determination

Conversant and LG both had requested the Court to make a FRAND determination. However, as Conversant’s infringement claim was based on the essentiality of the patents, the Court of Appeal declared any request concerning a FRAND rate determination, past damages and the nomination of an expert without object [361] .

FRAND duties and abuse of a dominant position

In its decision, the Court of Appeal also briefly summarized two points addressed by the first instance Court regarding parties’ duties in negotiation and a potential abuse of dominant position without any further analysis.

One of them is the determination of bad faith of the parties in the negotiations. In first instance, the Court stated that it was difficult to assess bad faith in view of the history of the negotiations. The Court had underlined that the fact that the parties negotiated for more than two years tended to demonstrate that none of them was of particularly bad faith to push the other not to further pursue the negotiations [354] . The Court had further stressed that as each company passed the buck to the other, it was difficult to declare that bad faith lied more on one side than the other [352] .

Regarding a potential abuse of dominant position through the filing of an action based on SEPs by Conversant, the Court had stated that filing a judicial complaint to have a FRAND rate determined that could not be amicably fixed, without any other circumstance demonstrating among others the express willingness to deprive LG of its rights to exploit the patents against a fair and proportionate compensation, could not constitute an abuse of a dominant position [352] .

Confidentiality and Trade Secret Protection

The Court of Appeals also briefly referred to the rules for the protection of trade secrets that had been agreed upon by the parties and accepted by the Court of Appeal.

In application of Article L153-1 of French Commercial Code, the parties had set up a protection mechanism for confidential documents, which included the following steps [362] : (1) access to some licensing agreements from Nokia and Conversant would be restricted to the parties’ legal representatives, the court and persons (translators or experts) obliged to confidentiality by a Non-Disclosure Agreement, (2) the parties would submit two versions of each party’s written conclusions to the Court of Appeal, one with a reference to all disclosed agreements in full with confidential information highlighted and one without any reference to any confidential information [363] .

[350] Court of Appeal of Paris, judgement dated 16 April 2019, page 3.
[351] Ibidem.
[352] Ibid.
[353] Court of Appeal of Paris, judgement dated 16 April 2019, pages 5-6.
[354] Court of Appeal of Paris, judgement dated 16 April 2019, page 6.
[355] Court of Appeal of Paris, judgement dated 16 April 2019, pages 15-24.
[356] Court of Appeal of Paris, judgement dated 16 April 2019, page 15.
[357] Court of Appeal of Paris, judgement dated 16 April 2019, pages 15 and subsequent.
[358] Court of Appeal of Paris, judgement dated 16 April 2019, pages 19-21.
[359] Court of Appeal of Paris, judgement dated 16 April 2019, pages 23-24.
[360] Court of Appeal of Paris, judgement dated 16 April 2019, pages 19-21 and 23-24.
[361] Court of Appeal of Paris, judgement dated 16 April 2019, pages 24-25.
[362] Court of Appeal of Paris, judgement dated 16 April 2019, page 13
[363] Court of Appeal of Paris, judgement dated 16 April 2019, page 14

Updated 1 April 2021

InterDigital v Xiaomi, District Court (Landgericht) Munich I

LG Munich
25 February 2021 - Case No. 7 O 14276/20

A. Facts

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

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

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

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

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

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

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

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

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

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

With the present judgment dated 25 February 2021, the Munich District Court dismissed Xiaomi’s appeal on the merits and confirmed the Munich AASI. [364] (cited by www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-3995?hl=true)

B. Court’s reasoning

The Munich District Court held that InterDigital had a claim for preliminary injunction and that sufficient grounds for issuing an AASI were given. [365]

Claim for preliminary injunction

The Court explained that the filing, prosecution and enforcement of an ASI in China with the goal to prevent the assertion of claims for injunctive relief against patent infringement in Germany impairs the ‘property-like legal position’ of the patent holder and constitutes a tortious act (in terms of Section 823 para. 1 of the German Civil Code). [366] The same is true with respect to court orders, which restrain a party from initiating AASI-proceedings in Germany (so-called ‘anti-anti-anti-suit injunctions’, or AAASI). [366]

In the eyes of the Munich District Court, the Wuhan ASI had the aforementioned effect. According to its wording and reasoning, the Wuhan ASI attempted to have a global reach and would also have impacted those InterDigital Group entities holding German SEPs that were involved in the present proceedings. [367] The fact that these companies did not directly face fines or other sanctions imposed by the Wuhan Court, did not change the fact that the Wuhan ASI tried to impair their legal position: These measures threatened other affiliated companies within InterDigital Group and, thus, created a coercive situation in an attempt to limit the freedom of the companies that actually hold German SEPs to act for their protection of their rights. [367]

In addition, the Court expressed the view that InterDigital was in a position to invoke the right for self-defence against the Wuhan ASI. [366] Section 227 of the German Civil Code provides that any action, which is necessary for averting a present illicit attack, is not unlawful.

Grounds for preliminary injunction

Furthermore, the Munich District Court found that there was sufficient justification for ordering interim measures. [368]

First, it could not be requested from InterDigital to defend itself against the Wuhan ASI in regular (main) court proceedings. [369] Given that injunctions are available only for the limited lifetime of a patent, regular proceedings against an ASI would not sufficiently protect patent holders’ rights; the latter would be, effectively, deprived of the right to injunctive relief for a considerable period of time, at least until the enforcement of the first instance decision of the German court. [370] This limitation would occur irrespective of the fact that a foreign ASI violates public order (ordre public) and, thus, does not have any legal effect in Germany. [369] The Court repeated that sanctions imposed or threatened in foreign jurisdictions can place the patent holder under pressure and stand in the way of effective patent enforcement in Germany. [369] This applies equally, when a foreign court has granted an AAASI, preventing a party to seek for protective measures in the form of a AASI in Germany, as was the case with the order of the Wuhan Court. [371]

Second, the Munich District Court held that the urgency required for interim measures was given. [372] Inter-digital had filed the request for an AASI in a timely fashion. [373] As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month of knowledge of the act. [374] The Munich District Court suggested that this deadline, basically, also applies to AASIs (refraining, however, from a final assessment of this question). [375]

In case that an AASI is directed against an ASI already granted by a foreign court (risk of repetition), the respective request should be filed within a month after the patent holder obtained ‘secure knowledge’ of the foreign court order, irrespective of whether formal service took place or not. [376] For assuming ‘secure knowledge’, it can be required that the patent holder gets access to the ASI request as well as the evidence used in the foreign proceedings, especially when the court order itself does not contain clear information about the parties, the content and the legal grounds of the order. [377]

If a request for an AASI is filed before a foreign ASI has been issued, that is when only a ‘risk of first infringement’ of a violation of SEP holder’s ‘property-like’ rights exists, the one-month deadline begins at the moment in time, in which the patent holder gains ‘secure knowledge’ of the filing of an ASI request before the foreign court or of the existing risk of such measures, which is especially materialized, when the implementer threatens with respective action. [378] In this context, the Court clarified that filing early countermeasures before a grant of an ASI is only an option; patent holders are, basically, free to wait for the outcome of foreign ASI proceedings, before filing a request for an AASI. [378]

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

The implementer has threatened to file a request for an ASI;
The implementer has filed a request for an ASI;
The implementer has filed a (regular) action for the grant of a licence or the determination of reason-able global licensing rates in a jurisdiction, in which ASIs can, in principle, be granted;
The implementer has already threatened an ASI or filed a respective request against other patent holders and the party filing an AASI in Germany has no indication that the implementer will refrain from such actions against it in the future;
The implementer failed to declare in text form within a short deadline set by the patent holder (e.g. with the first notification of infringement) that it will not file a request for an ASI. [379]

ASI and implementer’s willingness to obtain a licence

The Munich District Court further made clear that an implementer who threatens an ASI or files a respective request, can, as a rule, not be treated as a ‘willing licensee’ within the meaning of the Huawei v ZTE ruling (Huawei v ZTE) [380] of the Court of Justice of the EU (CJEU) and the recent case-law of the German Federal Court of Justice (Bundesgerichtshof) in the Sisvel v Haier [381] cases. [382] According to the Court, an implementer truly willing to obtain a FRAND-licence would regularly refrain from actions impairing SEP holder’s ‘property-like’ rights even further than the past and ongoing acts of patent infringement (such as the filing of a request for an ASI). [383]

Looking particularly at the negotiation framework established in Huawei v ZTE, the Munich District Court noted that balanced negotiations on an equal footing -as envisioned by the CJEU- can only be ensured if the parties have equal access to legal remedies: The implementer’s ability to attack patent validity should be counterbalanced by the patent holder’s ability to assert its patent rights before court. [384] This is no longer the case when the judicial assertion of claims against patent infringement is precluded based on an ASI. [384] In this context, the Court noted that an ASI directly violates the SEP holders’ right to have access to courts which is established in both European law (Article 47 para. 1 of the EU Charter of Fundamental Rights) and German constitutional law. [384]

Furthermore, the Munich District Court expressed the view that an implementer who has been notified about the infringement of SEPs can be required not only to adequately demonstrate willingness to obtain a FRAND-licence, but also to declare that it will not file a request for an ASI against the patent holder. [383] The Court explained that, otherwise, the negotiation process set forth by Huawei v ZTE could not be followed. [385] In particular, the SEP holder could no longer be obliged to notify the implementer about the infringement before filing a court action. [385] By making a notification of infringement, the patent holder exposes itself to an ASI. If an ASI is granted, then the patent holder will in many cases be de facto prevented from exercising its right to injunctive relief even towards implementers unwilling to take a licence. [386] According to the Court, this result conflicts with the so-called EU IPR Enforcement-Directive (Articles 9-11) [387] as well as the case law of the CJEU. [388]

The Court also added that SEP holders cannot be expected to pre-emptively prepare countermeasures against potential future ASIs [383] . Even when SEP holders seek global portfolio licences, preparing the filing of AASIs in many different jurisdictions would lead to disproportionate high costs at a point in time, in which neither the risk nor the impact of an ASI could be reliably assessed. [383]

Balance of interests

After weighing the interests of the parties against each other, the Munich District Court held that an AASI was justified. [389]

On the one hand, the Court recognized that InterDigital had an interest to be granted the requested AASI. Although the Wuhan ASI violated public order and could not be enforced in Germany, InterDigital had an interest to limit the reach of the Chinese order as far as German SEPs are concerned; otherwise, the threat of sanctions that could be imposed in China would de facto prevent InterDigital from enforcing its patent rights in Germany for an unforeseeable period of time. [390]

On the other hand, the Court highlighted that a German AASI would not impair the rights of Xiaomi. [391] The AASI would only oblige Xiaomi to withdraw the Wuhan ASI and, therefore, have no impact on the Chinese main proceedings. [391] The Chinese main proceedings would also not be impaired, in case that InterDigital filed infringement proceedings against Xiaomi in Germany, following the grant of an AASI. The Munich District Court expects that German infringement proceedings would not revolve around the same question raised in the Chinese proceedings, that is the determination of the global rate for InterDigital’s SEP portfolio. [391] On the contrary, German infringement courts would probably not examine the amount of an adequate global licensing rate, because it is very unlikely that they would examine a FRAND defence raised by Xiaomi on the merits. [391] The Court reasoned that the very act of requesting an ASI, or threatening to do so, is evidence that the implementer is an unwilling licensee, such that a FRAND defence raised by Xiaomi in German infringement proceedings would hardly have any prospects of success. [391]

In addition, the Court took the view that Xiaomi’s interest to avoid infringement trials in Germany during the pendency of the Chinese main proceedings was not worthy of protection. [392] Xiaomi did neither constantly monitor the IPR landscape, as it is obliged to, nor obtain necessary licences before starting production. [392] What is more, Xiaomi refused to do so for more than seven years, such that InterDigital can no longer be expected to further wait to assert its rights. [392]

C. Other issues

The Munich District Court also confirmed that InterDigital had a legitimate interest in legal remedies. [393] Under German law, this is a prerequisite for any court action and is, basically, given, when the claims asserted by the claimant have not been fulfilled by the defendant yet. [394] The fact that InterDigital could defend itself against the ASI also in so-called ‘reconsideration proceedings’ before Chinese courts did not remove InterDigital’s legitimate interest that its case is heard by German courts. [395] The Court held that such proceedings could not sufficiently protect InterDigital’s ‘property-like’ rights in Germany, especially since a reliable assessment of the prospects of success of such legal remedy is very challenging. [395]

Furthermore, the Court confirmed that the pendency of the Chinese and Indian proceedings did not prevent German courts from hearing the case in question (no lis pendens). [396]

Finally, the Court also found that the Munich AASI had been served to Xiaomi within the relevant deadline, which under German law is a prerequisite for such orders to remain in force. [397]

[364] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20.
[365] Ibid, para. 75.
[366] Ibid, para. 120.
[367] Ibid, para. 121.
[368] Ibid, para. 129.
[369] Ibid, para. 130.
[370] Ibid, para. 130. The Munich District Court highlighted that the right to injunctive relief is the ‘essential feature’ of exclusionary rights, such as patent rights, and the ‘sharpest weapon’ against infringement. Patents would be ‘worthless’, if the patent holder would be denied the possibility to enforce its rights by way of court proceedings.
[371] Ibid, para. 131.
[372] Ibid, para. 132.
[373] Ibid, para. 132 as well as paras. 151 et seqq.
[374] Ibid, para. 133.
[375] Ibid, paras. 134-135.
[376] Ibid, para. 134.
[377] Ibid. para. 136.
[378] Ibid, para. 138.
[379] Ibid, para. 142.
[380] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
[381] Sisvel v Haier I, Bundesgerichtshof, judgment dated 5 May 2020, Case No. KZR 36/17 and Sisvel v Haier II, Bundesgerichtshof, judgment dated 24 November 2020, Case No. KZR 35/17.
[382] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 146.
[383] Ibid, para. 146.
[384] Ibid. para. 148.
[385] Ibid, para. 147.
[386] Ibid, para. 149.
[387] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).
[388] InterDigital v Xiaomi, District Court (Landgericht) Munich I, judgment dated 25 February 2021, Case-No. 7 O 14276/20, para. 149.
[389] Ibid, para. 168.
[390] Ibid, para. 169.
[391] Ibid, para. 170.
[392] Ibid, para. 173.
[393] Ibid, para. 75.
[394] Ibid, para. 107.
[395] Ibid, para. 108.
[396] Ibid, paras. 75 and 109.
[397] Ibid, para. 75 and paras. 80-106.

Updated 24 July 2020

Sisvel v Haier, Federal Court of Justice (Bundesgerichtshof)

Federal Court of Justice - BGH
5 May 2020 - Case No. KZR 36/17

A. Facts

The claimant, Sisvel, holds patents declared as (potentially) essential to the practice of several wireless telecommunications standards (Standard Essential Patents, or SEPs).

The defendants are a German and a French subsidiary of the Haier group (Haier) which has its headquarters in China. The Haier group produces and markets -among other things- electronic devices complying with the GPRS standard.

On 20 December 2012, Sisvel informed the parent company of the Haier group (Haier China) about the infringing use of Sisvel's SEPs. Sisvel provided a list of approx. 450 patents included in its portfolio and informed Haier that Sisvel offers licences for its SEPs.

On 10 April 2013, Sisvel made a commitment towards the European Telecommunications Standards Institute (ETSI) to make SEPs accessible to standards users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

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 the hope to have 'a formal negotiation' with Sisvel and asked for information regarding potential discounts mentioned by Sisvel in previous communications.

In August 2014, Sisvel made a licensing offer to Haier, which was rejected in September 2014. Shortly after that, Sisvel filed an infringement action against Haier before the District Court of Duesseldorf (District Court) based on a SEP covering data transmission technology under the GPRS standard (patent in suit). As a reaction to this step, Haier filed a nullity action against the patent in suit before the German Federal Patent Court in March 2015.

On 3 November 2015, the District Court granted an injunction against Haier [398] . The District Court also ordered the recall and destruction of infringing products. It 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 this decision and also requested the Higher District Court of Duesseldorf (Appeal Court) to order a stay in the enforcement of the injunction granted by the District Court. In January 2016, the Appeal Court rendered a respective order [399] .

In the appeal proceedings, 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 matter Huawei v ZTE in a decision rendered in July 2015 (Huawei judgment), that is after Sisvel had filed the infringement action [400] . During the course of the proceedings before the Appeal Court, on 16 January 2016, Haier further declared that is 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. On 23 March 2016, Haier sent another letter to Sisvel, stating that their position remained unchanged. Moreover, Haier requested claim charts with respect to all of Sisvel's patents as well as further information about the royalty calculation. In December 2016, Sisvel made a further licensing offer to Haier, which was also rejected.

By judgment dated 30 March 2017, the Appeal Court partially granted Haier's appeal [401] . It confirmed Haier's liability for damages on the merits as well as its obligation to render accounts. However, the Appeal Court held that Haier was under no obligation to recall and destroy infringing products, because Sisvel had not complied with its obligations under the Huawei judgment, especially by failing to make a FRAND licensing offer to Haier. The Appeal Court did not have to decide about the claim for injunctive relief, because the parties had agreed to settle the matter in this regard. Reason for that was that the patent in suit had expired in September 2016. Sisvel appealed the decision of the Appeal Court.

In October 2017, the Federal Patent Court narrowed certain claims of the patent in suit and, otherwise, confirmed its validity [402] . In March 2020, the Federal Court of Justice (FCJ or Court), basically, confirmed this decision in second instance [403] .

With the present judgment dated 5 May 2020 [404] (cited by https://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=3abd1ba29fc1a5b129c0360985553448&nr=107755&pos=0&anz=1), the FCJ reversed the judgment of the Appeal Court. The ruling of the District Court in first instance was confirmed with respect to Sisvel's damage claims and claims for information and rendering of accounts. Sisvel's claims for the recall and destruction of infringing products were limited to products that were in the possession of Haier or had been produced or delivered until the expiration of the patent in suit in September 2016. Sisvel's claim for injunctive relief was not subject to the Court's ruling, since this claim was withdrawn in the course of the preceding proceedings before the Appeal Court after the patent in suit had lapsed.

B. Court's reasoning

The Court found that the patent in suit was essential to the GPRS standard and infringed [405] .

Furthermore, the Court held 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) [406] .

In the Court's eyes, Sisvel met its obligation under the Huawei judgment to notify Haier about the infringing use of its SEPs prior to filing the infringement action. On the other hand, Haier had failed to comply with its Huawei obligation to adequately express its willingness to enter into a licensing agreement with Sisvel. Although this fact was no longer decisive for the present case, the Court also expressed the view that Sisvel had made a FRAND licensing offer to Haier in line with the respective Huawei requirement.

Dominant market position

The Court held that Sisvel had a dominant market position within the meaning of Article 102 TFEU [407] .

The FCJ explained that a dominant market position does not arise alone from the exclusivity rights granted by a patent [408] . For this, several factors need to be considered [409] . One key factor is the relevant market. 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 market, relevant for the assessment of dominance is the (distinct) market, in which licences for the patent in question are offered [410] .

On this basis, the Court found that Sisvel was in a dominant market position: The patent in suit was essential to the practice of the GPRS standard and non GPRS compliant mobile phones could not compete in the (downstream) market, since neither the previous not subsequent standards generations allowed the same features [411] .

In this context, the FCJ was not convinced by Sisvel's argument that SEP holders' market dominance is restricted by the fact that standards implementers – compared to buyers in markets for goods and services – often have a stronger standing in negotiations [412] . The Court saw that –unlike buyers of goods and services– standards implementers are in the favourable position to be able to access protected technology needed for producing standard compliant products, even without an agreement with the patent holder [413] . According to the Court, however, this fact does not suffice to rule out market dominance. The extent of SEP holders' bargaining power towards individual implementers in licensing negotiations is not relevant [414] . A dominant market position is conferred by the patent holder's structural superior market power arising from the legal ability to exclude any implementer from the market by enforcing exclusivity rights [415] .

Similarly, the Court pointed out that the limitations imposed by the Huawei judgment with respect to the enforcement of SEPs likewise do not impair market dominance [416] . The Court noted that these limitations significantly weaken the bargaining position of the SEP holder, since the lever needed for negotiations on an equal footing is not available to the latter to the full extent [416] . Nevertheless, this does not suffice to question the dominant position of the patent holder, even in cases in which the implementer might engage in 'hold-out' by delaying negotiations until the patent expires [416] .

Having said that, the Court pointed out that Sisvel's dominant market position ended, when the patent in suit expired [417] . An SEP holder is no longer dominant, if the legal power to exclude infringing products from entering a (downstream) market is no longer given [417] .

Abuse of market dominance

Looking at the parties' conduct, the Court found – in contrast to the Appeal Court – that Sisvel did not abuse its dominant market position [418] .

The Court made clear that SEP holders are not per se prevented from enforcing the exclusivity rights arising from their patents [419] . The fact that a patent is standard essential does not mean that the patent holder is obliged to tolerate the use of its technology, unless it has allowed such use or was under an obligation to allow such use, as a consequence of holding a dominant market position [419] . According to the FCJ, an obligation to allow the use of SEPs does, however, not exist, when the implementer is not willing to obtain a licence on FRAND terms. A patent holder –even with a dominant market position– is not obliged to 'impose' a licence to any standards user, not least because it has no legal claim to request the signing of a licensing agreement [420] .

Against this background, the Court identified two cases, in which the assertion of exclusivity rights (claims for injunctive relief and/or the recall and destruction of infringing products) by an SEP holder can amount to an abuse of market dominance:

1. The implementer has made an unconditional licensing offer on terms which the patent holder cannot reject, without abusing its dominance or violating its non-discrimination obligation (insofar the Court repeated its previous ruling in 'Orange-Book-Standard'; judgment dated 6 May 2009 – Case No KZR 39/06) [421] ;

2. the implementer is, basically, willing to take a licence, but the SEP holder has not made 'sufficient efforts' to facilitate the signing of an agreement in line with the 'particular responsibility' attached to its dominant position [422] .

Notification of infringement

Consequently, the Court took the view that the SEP holder has an obligation to notify the implementer about the infringing use of the patent in suit prior to filing an infringement action [423] . The FCJ seems to suggest that this obligation arises, only when the implementer is not already aware of the infringementIbid, para. 73. According to the Court, the patent holder has to notify the standards user about the infringement of the patent, if the latter 'is not aware of the fact' that by implementing the standard the teaching of the patent is used without permission..

The Court explained that technology implementers are, in principle, obliged to make sure that no third party rights are infringed, before assuming the manufacturing or sales of products [425] . However, this task is often significantly challenging, especially in the Information and Communication Technology (ICT) sector, in which a product might be affected by numerous patent rights [425] . The patent holder, who will regularly have already examined infringement, should, therefore, inform the implementer about the use of the patent before initiating court proceedings, allowing the latter to assess the need to obtain a licence on FRAND terms and, consequently, avoid an injunction [426] .

In the eyes of the Court, it will usually be sufficient to address a respective notification of infringement to the parent company within a group of companies [427] . In terms of content, the notification must name the patent(s) infringed and describe the specific infringing use and the attacked embodiments [428] . A detailed technical and legal analysis of the infringement is not required: the implementer should only be placed in a position to evaluate the infringement allegation, eventually by taking recourse to expert and/or legal advice [428] . As a rule, presenting claim charts, as it is often the case in practice, will be sufficient (but not mandatory) [428] .

Furthermore, the FCJ added that a patent holder which has provided information about the patent infringed and the standard affected can expect that the implementer will indicate within a short period of time that the information received is not sufficient for the assessment of infringement [429] . This applies also to cases, in which a number of patents and standards are involved [429] .

Taking the above into consideration, the Court found that Sisvel had given proper notification of infringement to Haier. The letter dated 20 December 2012 and the following correspondence met the relevant requirements [430] .

Willingness

Considering Haier's conduct, on the other hand, the Court found that Haier did not act as a licensee willing to obtain a FRAND licence from Sisvel [431] . In this respect, the FCJ disagreed with the respective assessment of the Appeal Court which had reached the opposite conclusion.

The Court observed that the first response of Haier China to Sisvel's notification was belated, since Haier had waited for almost one year (December 2012 – December 2013) to react [432] . 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 [432] . The fact that Sisvel made a FRAND commitment towards ETSI covering the patent in suit only after the first notification to Haier in December 2012 did not change anything in the assessment of timeliness: in its letter dated 20 December 2012, Sisvel had already declared that it is prepared to offer a FRAND licence to Haier [432] . The question, whether a late response made prior to the start of infringement proceedings (as it was the case with Haier's response from December 2013) shall, nevertheless, be taken into account, when assessing parties' compliance with the Huawei judgment (as the Appeal Court had assumed) was left undecided by the FCJ [433] . In the present case, this question was not relevant, since –in terms of content – none of Haier's responses could be seen as a sufficient declaration of willingness to obtain a licence [434] .

In the Court's eyes, the implementer has to 'clearly' and 'unambiguously' declare that it is willing to sign a licence with the SEP holder 'on whatever terms are in fact FRAND' (citing High Court of Justice of England and Wales, judgment dated 5 April 2017, [2017] EWHC 711(Pat) - Unwired Planet v Huawei) [435] . The implementer is, subsequently, obliged to engage in licensing negotiations in a 'target-oriented' manner [435] . On the contrary, 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 [435] .

On this basis, the Court 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: This declaration was neither clear not unambiguous in the above sense [436] .

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 [437] . Although the implementer is, in principle, allowed to preserve the right to contest the validity of a licensed patent after conclusion of a licensing agreement, the Court held that a declaration of willingness cannot be placed under a respective condition [437] .

Furthermore, the FCJ found that Haier did not sufficiently express its willingness by the letter dated 23 March 2016 either. Apart from the fact that Haier had not withdrawn the above unacceptable condition, the Court took the view that requesting the production of claim charts for all of Sisvel's patents almost three years after the receipt of the notification of infringement was an indication that Haier was only interested in delaying the negotiations until the expiration of the patent in suit [438] .

Since no adequate declaration of willingness by Haier was in place, the Court did not answer the question, whether it is possible for the implementer to fulfil this obligation after infringement proceedings have been initiated [439] .

SEP holder’s licensing offer

Having found that Haier did not act as a willing licensee, the Court explained that there was no need to examine whether Sisvel had made a FRAND licensing offer to Haier in the present case [440] . Nevertheless, the FCJ decided to address certain findings of the Appeal Court in this context, which were based on flawed assumptions.

In contrast to the Appeal Court, the FCJ questioned that Sisvel was obliged to make a FRAND licensing offer to Haier, since the latter did not adequately declare its willingness to enter into a licence [441] . Moreover, such an obligation would have arisen only after Haier had expressed its sincere willingness to sign an agreement with Sisvel [442] . Besides that, the FCJ also pointed out that – in contrast to the view taken by the Appeal Court – Sisvel’s offers to Haier were FRAND.

According to the Court, which terms are FRAND in each individual case depends on several factors [443] . The SEP holder is not obliged to apply a ‘standard tariff’ and offer all licensees identical terms [443] . Such an obligation does not arise from the FRAND commitment towards the relevant standardisation body, which only aims at securing access to the standard [443] . As a rule, reasonable conditions for a contractual relationship and especially the adequate price are not objectively fixed, but a result of market processes based on negotiations [443] . This is the reason why an implementer has to actively engage in licensing negotiations in a ‘target-oriented’ manner [443] .

The Court noted that an offer for a portfolio licence regularly does not raise concerns, as long as no obligation to pay fees also for non-essential patent is established and fees are calculated in a manner which does not discriminate against licensees that wish to develop products only for a limited geographical area [444] . Looking at the common practice, the Court highlighted that worldwide portfolio licences are – from an efficiency point of view – beneficial for both patent holders and implementers [444] .

In this context, the FCJ expressed the view that the SEP holder can be obliged to substantiate the FRAND conformity of its licensing request [445] . In principle, implementers bear the weight to demonstrate (both in negotiations and in court proceedings) that a licensing request is discriminatory [445] . On the other hand, patent holders have to establish that there is a justification behind an unequal treatment of licensees [445] . In cases, in which an implementer willing to take a licence is not in a position to frame the content of FRAND licensing conditions, the SEP holder can be required to explain its offer in detail, in order to allow the implementer to assess the FRAND conformity of the offered conditions [445] . This is particularly the case, when a portfolio licence is offered [446] . The scope, level of detail and timing of the information needed shall be determined on a case-by-case basis, considering the conduct of the implementer [447] . The respective requirements will, however, usually not go beyond the information that should be shared with a notification of infringement [438] .

Focusing on the non-discrimination element of FRAND, the Court held that Sisvel had not discriminated against Haier by offering different (higher) rates than those previously agreed with another licensee (allegedly) as a result of undue pressure by foreign state authorities [448] . The Appeal Court had argued that this fact –irrespective of whether it was true or not– could per se not justify an unequal treatment between similarly situated licensees. The FCJ disagreed with this view and made clear that even dominant companies are, basically, not prohibited from safeguarding their business interests, if threatened [449] . In cases, in which –from the patent holder’s point of view– it was economically reasonable to accept unsatisfactory conditions due to the lack of realistic opportunities to enforce patent claims and for avoiding financial or personal disadvantages threatened by state authorities, offering market-based conditions to other similarly situated licensees might (under consideration of the mutual interests) be a justifiable exception from the non-discrimination obligation, as far as these conditions are reasonable and do not impact the competitiveness of the licensees [449] .

C. Other important issues

The Court made clear that the expiration of the patent in suit does not exclude claims for the recall and destruction of infringing products [449] . This fact only leads to a limitation of these claims to products that were in the possession of the infringer or had been manufactured and delivered until the patent lapsed [450] .

Claims for damages and the rendering of accounts are also limited in terms of time by the expiration of the patent (covering only infringing uses until the end of the patent’s term) [451] . Apart from that, the Court found, however, that Sisvel’s claim for damages against Haier was not subject to any limitations [452] .

The FCJ agreed with the finding of the Appeal Court that negligence establishing Haier’s liability for damages was given, even prior to the receipt of Sisvel’s notification of infringement in December 2012 [453] . In the Court’s view, the implementer is, in principle, obliged to make sure that no third party rights are infringed, before starting manufacturing or selling products [453] . The fact that in the ICT sector it might be challenging to gain an overview of all existing relevant rights does not lower the level of diligence required, since any information deficits are not rooted in the behaviour of the patent holder [453] .

On the other hand, the FCJ rejected the view taken previously by the Appeal Court, according to which Sisvel’s damage claims were limited to the amount of a FRAND licensing rate (‘licensing analogy’). The Court explained that this was not the case here: Claiming damages for the infringement of SEPs cannot constitute an abuse of dominant position [454] . Accordingly, 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 [454] . In the view of the Court, an implementer is entitled to such (counter)claim, only when it adequately expressed its willingness to enter into a licence, requested the conclusion of a FRAND licence and the SEP holder ignored this request without justification [454] . In the present case, Haier could not assert such a (counter)claim against Sisvel, since it had failed to sufficiently express its willingness to sign a licence with the latter [452] .

[398] Sisvel v Haier, District Court of Duesseldorf, judgment dated 3 November 2015, Case No. 4a O 93/14.
[399] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 13 January 2016, Case No. I-15 U 66/15.
[400] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
[401] Sisvel v Haier, Higher District Court of Duesseldorf, judgment dated 30 March 2017, Case No. I-15 U 66/15.
[402] Federal Patent Court, judgment dated 6 October 2017, Case No. 6 Ni 10/15 (EP).
[403] Federal Court of Justice, judgment dated 10 March 2020, Case No. X ZR 44/18.
[404] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
[405] Ibid, paras. 9 et seqq. and 59.
[406] Ibid, para. 52.
[407] Ibid, para. 54.
[408] Ibid, para. 56.
[409] Ibid, paras. 57 et seqq.
[410] Ibid, para. 58.
[411] Ibid, paras. 59 et seq.
[412] Ibid, para. 61.
[413] Ibid, para. 63.
[414] Ibid, para. 62.
[415] Ibid, paras. 61 et seqq. According to the FCJ, market entry barriers are created already by the fact that the respective legal obstacles make it unreasonable for any company to enter a market, without having taken a licence before, see para. 63.
[416] Ibid, para. 64.
[417] Ibid, para. 65.
[418] Ibid, paras. 67 et seqq.
[419] Ibid, para. 69.
[420] Ibid, para. 70.
[421] Ibid, para. 71.
[422] Ibid, para. 72.
[423] Ibid, paras. 73 et seqq.
[424] Ibid, para. 73. According to the Court, the patent holder has to notify the standards user about the infringement of the patent, if the latter 'is not aware of the fact' that by implementing the standard the teaching of the patent is used without permission.
[425] Ibid, para. 74.
[426] Ibid, para. 74 and 85.
[427] Ibid, para. 89.
[428] Ibid, para. 85.
[429] Ibid, para. 87.
[430] Ibid, paras. 86 et seqq.
[431] Ibid, paras. 91 et seqq.
[432] Ibid, para. 92.
[433] Ibid, paras. 93 et seq.
[434] Ibid, para. 94.
[435] Ibid, para. 83.
[436] Ibid, para. 95.
[437] Ibid, para. 96.
[438] Ibid, para. 98.
[439] Ibid, para. 97.
[440] Ibid, paras. 90 and 101.
[441] Ibid, para. 90.
[442] Ibid, para. 99.
[443] Ibid, para. 81.
[444] Ibid, para. 78.
[445] Ibid, para. 76.
[446] Ibid, para. 77.
[447] Ibid, para. 79.
[448] Ibid, paras. 101 et seq.
[449] Ibid, para. 102.
[450] Ibid, para. 105.
[451] Ibid, para. 108.
[452] Ibid, para. 112.
[453] Ibid, para. 109.
[454] Ibid, para. 111.

Updated 26 January 2017

Canon v Carsten Weser

OLG Düsseldorf
29 April 2016 - Case No. I-15 U 49/15

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

Updated 6 June 2017

OLG Karlsruhe

OLG Karlsruhe
8 September 2016 - Case No. 6 U 58/16

Facts
1. Decision First Instance
  The proceedings related to the defendant’s application to the Higher Regional Court of Karlsruhe for a stay of execution of the decision of the District Court of Mannheim (Case No. 7 O 23/14). Case No. 7 O 23/14 related to the infringement of patent EP 0.734.181.B1, which covered technology for decoding video signals in the DVD standard. The defendant was a German subsidiary of a Taiwanese electronics company. It sold computers that used a DVD-software. The claimant, a Japanese electronics company, commercialised the patent in question through a patent pool. [455] In early 2013, the patent pool approached the defendant’s mother company about the use of the patent, but without making a license offer. [456]
  On 30 May 2014, the defendant offered a license agreement for the respective German patent. The defendant indicated that it was willing to enter into negotiations for a portfolio license for the claimant’s German patents. It was also willing to have a third party determine the royalties owed. [456] On 25 July 2014, the claimant suggested to change the license offer to a world-wide portfolio license. The defendant rejected and informed the claimant on 22 August 2014 of the number of respective computers they put into circulation between July 2013 and June 2014 in Germany. It also made a deposit of EUR 12.972,- with the Düsseldorf Magistrates Court.
  On 13 March 2015, the claimant made another offer for a world-wide portfolio license. On 5 May 2015, the defendant requested the relevant claim charts and further details on how the license fees had been calculated. On 25 June 2015, the claimant sent the claim charts but refused to elaborate on the calculation method. Instead, the claimant suggested a meeting in which it would answer further questions. The defendant responded on 13 July 2015 that most of the claim charts lacked necessary details. In a meeting between the claimant and the defendant’s mother company on 3 September the parties were unable to come to a conclusion.
  The District Court of Mannheim granted an injunction order on 4 March 2016. [457] It held that the defendant was liable for compensation [458] and ordered it to render full and detailed account of its sales (including all parties involved, the respective advertisements, all costs and profits) [459] to calculate the amount of compensation it owed. Further, the District Court ordered a recall and removal of all infringing products from the relevant distribution channels. [460]
2. The Ensuing Application for Stay Proceedings
  Under the German rules of civil procedure, the Higher Regional Court can grant a stay of execution only if an appeal is pending and it is probable that the challenged decision will be overturned because it appears manifestly erroneous. [461] Alternatively, the Higher Regional Court can grant a stay of execution if the defendant (now: the applicant) can prove that the execution would cause particularly severe harm beyond the usual effects of an execution. [461]
  The applicant sought to stay the execution of two elements of the resulting court order. [462] First, the applicant challenged the order to render full account. It contended that it was only necessary to render information required to calculate the amount of compensation owed via license analogy (i.e. time of sale and number of units sold). [463] Secondly, the applicant contended that the recall order was based on the District Court’s summary assessment of the offered license conditions, which was an insufficient standard of review. [464]
  The Higher Regional Court of Karlsruhe granted the application to stay the execution in respect of the order to the recall of products. [465] However, it dismissed the application in respect of the order to render accounts because the decision of the District Court of Mannheim was not manifestly erroneous. [465]
Court’s reasoning
1. SEP Owner’s Licensing Offer
  Regarding the order to recall and remove the infringing products, the Higher Regional Court held that the District Court’s interpretation of the Huawei ruling in respect of the SEP owner’s license offer was manifestly erroneous. The Higher Regional Court reiterated its view that the Huawei ruling required a full review of the conditions of the license (see the previous decision of the Higher Regional Court of Karlsruhe, 31 May 2016, Case No. 6 U 55/16). A reduced standard of review as applied by the District Court was not in line with the fundamentals of the Huawei ruling. The CJEU had held that the SEP owner’s refusal to grant a license on FRAND terms is the main reason why an injunction cannot be granted by an infringement court. Accordingly, the Higher Regional Court reasoned that any arguments raised by the applicant as to why an offer is not FRAND needs to be taken into consideration by the court. This requires a full review of the license offer and not just a summary review as to whether the offer is not obviously non-FRAND. [466] However, the Higher Regional Court conceded that the SEP owner has a wide discretion in determining the FRAND conditions because there might be a number of different license conditions that are FRAND. [467]
2. Rendering Accounts and Compensation Claims
  Regarding the order to render accounts, the Higher Regional Court held that the decision of the District Court was not manifestly erroneous. The CJEU had reasoned that a court order to render accounts does not have implications as to whether products enter the market or can stay on the market. Thus, the Higher Regional Court concluded that a claim to render accounts cannot be abusive under Art. 102 TFEU. [468] Further, the Huawei ruling did not contain any restrictions in respect of the SEP holder’s information claims. [469] The Higher Regional Court of Karlsruhe confirmed that it had not yet been decided by the higher courts how the amount of compensation owed is exactly calculated (and accordingly, what information the infringer must disclose to enable the SEP holder to carry out this calculation). [470] Accordingly, the order to render accounts in full detail (thus enabling the claimant to calculate the compensation owed in different ways) was not erroneous.
Other Important Issues

[455] 6 U 58/16, para 6
[456] 6 U 58/16, para 7
[457] 6 U 58/16, para 12-17
[458] 6 U 58/16, para 25
[459] 6 U 58/16, para 18-24
[460] 6 U 58/16, para 26-28
[461] 6 U 58/16, para 39
[462] 6 U 58/16, para 33
[463] 6 U 58/16, para 45
[464] 6 U 58/16, para 35
[465] 6 U 58/16, para 38
[466] 6 U 58/16, para 51
[467] 6 U 58/16, para 52
[468] 6 U 58/16, para 62
[469] 6 U 58/16, para 63
[470] 6 U 58/16, para 63-64
[471] 6 U 58/16, para 59-60
[472] 6 U 58/16, para 61
[473] 6 U 58/16, para 67

Updated 16 June 2021

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

LG Munich
30 October 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 [474] , 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 [475] . 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.) [476] .

1. Competition law defence

Dominant market position

The Court held that Conversant had a dominant market position within the meaning of Article 102 TFEU [477] .

The exclusivity rights arising from a patent do not establish a dominant market position by themselves. [478] 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 [479] . In the Court's eyes, this applied to the patent in suit. [480]

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. [481] Furthermore, the additional option to get a license from the patent in suit from Avanci did not limit Conversant's market dominant position. [482]

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. [483] In this context, not only private interests, but also the public interest must be taken into account. [484] 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. [485]

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) [486] - 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. [487] 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. [488]

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

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. [492] 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. [493]

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'. [494]

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. [495] 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. [495]

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. [496] 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. [496]

In addition, the Court highlighted that timing in negotiations is a factor, which must be considered in the assessment of willingness as well. [497] Otherwise, implementers would lack motivation to seriously engage in negotiations in a timely manner. [498] Rigid deadlines cannot be set, a case-by-case assessment is needed. [499] 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. [499]

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. [500] A counteroffer made after the initiation of infringement proceedings will, as a rule, not be acceptable. [501] 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. [498] 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. [502]

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. [503] 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. [504]

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 [505] - Daimler had chosen to apply delaying tactics [506] .

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. [507] 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. [507]

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. [508] 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. [509]

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. [510] The Court particularly objected Daimler's choice to define the 'unwillingness' of its suppliers as a condition for signing an own licence with Conversant. [511]

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. [512]

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. [513]

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. [514] Moreover, it rather served as an 'alibi'. [505]

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. [514] 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. [515] 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. [516]

Besides that, the Court found that Daimler's counteroffer was, in terms of content, 'evidently not FRAND'. [517] Based on a summary analysis, the licensing fees offered by Daimler were considered to be evidently too low. [518]

The Court noted that FRAND is a range and that there are several methods for calculating FRAND royalties. [518] The Court relied on the so-called 'top-down'-approach (which both Conversant and Daimler had used). [519] 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. [520] 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. [520]

In addition, the Court pointed out that the average purchase price of the TCU is no adequate royalty base under FRAND principles. [521] The value of a SEP is reflected by a royalty, which is adequately in proportion to the value of the service provided. [522] 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. [522] As a consequence, relevant is the value, which Daimler's customers attach to the LTE-based features in a car. [522] The purchase price of TCUs paid by Daimler to its suppliers does not mirror this value. [522]

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. [523]

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. [524] 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). [525] 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. [526] 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. [526]

In line with the above, the Court confirmed that by seeking to license Daimler, Conversant did not act in an abusive or discriminatory way. [527]

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. [528] 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. [528] 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. [529]

The Court added that the SEP holder is free to decide against which infringer within a supply chain court proceedings will be initiated. [530] 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. [531]

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. [532] Respective agreements between end-device manufacturers and suppliers have only bilateral (contractual) effects and cannot impair the legal position of third parties. [532] In particular, they cannot limit the SEP holder's right to choose the level of the value chain for the assertion of its patents. [533] 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. [533]

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. [534] 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. [535] 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. [536]

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. [537] In the present case, the Court did not see sufficient grounds for such abuse. [537] It was not convinced that -absent an own bilateral licence- suppliers are left without rights or face legal uncertainty. [538] 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. [539] 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). [539]

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. [540] 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). [540]

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. [541] 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. [542] 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. [543] 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. [543] 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. [543] 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. [543]

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. [544] 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. [544] 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). [544] In the eyes of the Court, Daimler had, however, not pleaded any relevant facts in the present proceedings. [544]

[474] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19 (cited by juris).
[475] Ibid, paras.122-265.
[476] Ibid, para. 285.
[477] Ibid, para.286.
[478] Ibid, para.288.
[479] Ibid, paras.287 et seqq.
[480] Ibid, paras.291 et seqq.
[481] Ibid, para.295.
[482] Ibid, para.296.
[483] Ibid, para. 299.
[484] Ibid, para. 300.
[485] Ibid, para.300.
[486] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
[487] Conversant v Daimler, District Court of Munich I, 30 October 2020, Case-No. 21 O 11384/19, para.301.
[488] Ibid, para.301.
[489] Ibid, para.307.
[490] Ibid, para.308.
[491] Ibid, paras.302 and 308.
[492] Ibid, paras. 323 et seqq.
[493] 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.
[494] Ibid, para. 309.
[495] Ibid, para. 310.
[496] Ibid, para. 316.
[497] Ibid, para. 311.
[498] Ibid, para. 312.
[499] Ibid, para. 320.
[500] Ibid, para. 311.
[501] Ibid, paras. 312 and 316.
[502] Ibid, para. 315.
[503] Ibid, paras.317 et seqq.
[504] Ibid, para. 321.
[505] Ibid, para.357.
[506] Ibid, paras.322 and 358.
[507] Ibid, para.328.
[508] Ibid, paras.331 and 336.
[509] Ibid, para.332.
[510] Ibid, paras.334 and 336.
[511] Ibid, para.335.
[512] Ibid, para.337.
[513] Ibid, para.338.
[514] Ibid, para.339.
[515] Ibid, para.340.
[516] Ibid, paras.355 et seq.
[517] Ibid, paras.341 and 354.
[518] Ibid, para.341.
[519] Ibid, paras.341 and 348.
[520] Ibid, para.352.
[521] Ibid, para.353.
[522] Ibid, para.353
[523] Ibid, para.360.
[524] Ibid, para.362.
[525] Ibid, paras.362 and 364.
[526] Ibid, para.363.
[527] Ibid, para.365.
[528] Ibid, para.366.
[529] Ibid, para.367.
[530] Ibid, paras.368 and 382.
[531] Ibid, para.368.
[532] Ibid, para.370.
[533] Ibid, para.372.
[534] Ibid, paras.373 and 376-378.
[535] Ibid, para.373.
[536] Ibid, paras.373 and382.
[537] Ibid, paras.373 and 379.
[538] Ibid, para.374.
[539] Ibid, para.375.
[540] Ibid, para.380.
[541] Ibid, para.384.
[542] Ibid, paras.384 et seqq.
[543] Ibid, para.385.
[544] Ibid, para.269.

Updated 13 April 2020

IPCom v. Lenovo, Court of Appeal of Paris - RG 19/21426

French court decisions
3 March 2020 - Case No. 14/2020

A. Facts

In 2007, IPCom GmbH & Co. KG (IPCom) acquired a portfolio of over 160 patent families covering 2G, 3G and 4G standards from Robert Bosch GmbH [545] . One of the patents is EP 1 841 268 B2 (EP 268), essential to the 3G standard [546] .

IPCom submitted a FRAND commitment (FRAND stands for Fair, Reasonable and Non-Discriminatory) to the European Telecommunications Standards Institute (ETSI) considering patents that are or might become essential to the practice of a standard [547] .

In September 2018, IPCom made a licensing offer to Lenovo [546] . On 1 March 2019, IPCom sent a formal notice to Lenovo and asked Lenovo to reply to its licensing offer by 15 March 2019 [548] . IPCom indicated that, absent a reply by this deadline, it would initiate legal proceedings to protect its rights [549] .

Claiming that IPCom’s offer was not FRAND in view of the offered rate and the fact that the portfolio included expired or soon to expire patents, the US subsidiaries of the Lenovo group, Lenovo Inc. and Motorola Mobility LLC initiated on 14 March 2019 an action against IPCom before the District Court for the Northern District of California (US District Court) [550] . They claimed that IPCom had breached its duty under the commitment towards ETSI to offer Lenovo a licence on FRAND terms and requested the US District Court to set up the terms for a worldwide FRAND license for IPCom’s patent portfolio [546] .

On 2 July 2019, IPCom filed an infringement action against the group UK subsidiaries, Lenovo technology (UK) Limited and Motorola Mobility UK Ltd., before the London High Court of Justice. IPCom sought an injunction against infringing products, unless a license was concluded within the proceedings pending in the United States [551] .

On 18 September 2019, the US subsidiaries Lenovo Inc. and Motorola Mobility LLC filed an anti-suit injunction motion before the US District Court to prevent IPCom from pursuing the pending infringement proceedings in the UK and to file any new infringement action against any entity of the Lenovo group or to seek any anti-anti suit injunction before a foreign court as long as the US District Court has not ruled over what constitutes FRAND terms and conditions [552] .

On 25 and 28 October 2019, IPCom summoned the French entities of the group, Lenovo (France) SAS and Motorola Mobility France SAS, before the Court of Paris [553] . IPCom’s aim was to have the US anti-suit injunction motion withdrawn and forbid Motorola Mobility LLC and Lenovo Inc. from filing any complaint preventing IPCom from enforcing its rights [546] . IPCom initiated proceedings to the same also in the UK [554] .

IPCom had, in parallel, summoned Lenovo (France) SAS and Motorola Mobility France SAS, Modelabs Mobile Limited and Digital River Ireland Ltd. before the Court of Paris in proceedings, in which it sought a preliminary injunction against them [546] .

On 8 November 2019, the Court of Paris decided that there was no reason for the case to be deferred to the US District Court [555] . The Court of Paris ordered Lenovo Inc. and Motorola Mobility LLC to withdraw the US anti-suit request, immediately and no later than 14 November 2019, as far as it related to any infringement proceedings with respect to the French counterpart of EP 268 and for any facts perpetrated on the French territory by the entities of the Lenovo Group, including any of their wholesalers, distributors, customers and any intermediary [556] . The Court of Paris also prohibited Lenovo Inc. and Motorola Mobility LLC to file any new action to the same end before a foreign jurisdiction [546] . The decision came along a penalty fee of EUR 200,000 per violation and per day of non-compliance [546] .

On the same day, the London High Court of Justice ruled that it would be vexatious and oppressive to prevent IPCom from defending the infringement and validity of EP 268 and ordered the English entities of the Lenovo group to not impede proceedings under English jurisdiction [557] .

The US subsidiaries of the group withdrew their Californian anti-suit injunction with respect to the French proceedings [558] .

On 14 November 2019, IPCom initiated main proceedings for EP 268 infringement against Lenovo group French entities, Modelabs Mobile (importer) and Digital River Ireland Limited (distributor) before the Court of Paris [559] .

On 22 November 2019, Lenovo Inc., Motorola Mobility LLC, Motorola Mobility France et Lenovo (France) filed an appeal against the ruling rendered by the Court of Paris on 8 November 2019, granting an anti-anti-suit injunction to IPCom [560] .

On 12 December 2019, the US District Court ruled that Lenovo and Motorola did not provide prima facie sufficient evidence of the court’s jurisdictional competence to decide over IPCom’s liability for a breach of its contractual duty towards ETSI and for the determination of a worldwide FRAND licence [561] . The US District Court allowed for a discovery to potentially review at a later stage its decision over the jurisdictional competence and terminated the anti-suit injunction [546] .

On 20 January 2020, the Court of Paris rejected in preliminary proceedings IPCom’s request of temporary measures, including an injunction, recall and confiscation of products until the patent expiration [562] . The court considered the measures were manifestly disproportionate and could create a distortion between the parties enabling IPCom to take an unfair advantage of the situation and impose non-FRAND terms and conditions [563] .

With the present judgment, the Court of Appeal of Paris (Court of Appeal) confirmed the first instance decision on the anti-anti-suit injunction [564] . However, the Court of Appeal excluded any new motion for anti-suit injunction that may be filed in the future by Lenovo Inc. and Motorola Mobility LLC from the scope of the anti-anti-suit injunction [546] .

The other court proceedings between IPCom and companies of the Lenovo group mentioned above are still pending.

B. Court’s reasoning

Lenovo’s arguments

The entities of Lenovo group considered that the French courts are not competent to review the measures requested by IPCom against the US subsidiaries. They claimed that the suspension of the French proceedings would not damage IPCom as the US District Court has been seized to determine a FRAND rate [565] . The only risk for IPCom to have the French proceedings suspended was to deprive IPCom from an injunction, however the Court of Paris in its decision in the parallel proceedings had already rejected this request [566] .

Furthermore, Lenovo argued that the anti-suit injunction requested in the US could rebalance the rights of the parties by avoiding multiple infringement proceedings by which IPCom intended to gain an advantage in licensing negotiations [567] . Accordingly, it claimed that IPCom’s behaviour constitutes an abuse of a dominant position, as IPCom had requested an injunction against their products although they were willing to take a license [546] .

Lenovo further took the view that the anti-suit injunction motion preserves the competence of the first jurisdiction seized with the case; it does not impede the sovereignty and competence of French courts and is, therefore, not contrary to French or European international public order [568] . It added that their anti-suit injunction motion did not differ from IPCom’s anti-anti suit injunction. Accordingly, the Court of Appeal should question the impact of its decision over the sovereignty of the US jurisdiction [546] .

Lenovo supported this argumentation with case law of the French Supreme Court that accepts anti-suit injunctions as long as they aim to sanction the breach of a pre-existing contractual duty [569] . It considered this applied in the present case, as IPCom had breached its FRAND commitment towards ETSI, by refusing to offer a FRAND license [546] .

Finally, Lenovo argued that the anti-suit injunction motion had not a manifestly illicit character and did not violate either IPCom’s right to a judge nor its property rights, since IPCom could exercise the right to a judge before the US District Court and it would be compensated by licensing fees [570] .

IPCom’s arguments

On the other hand, IPCom claimed that the French court was materially and territorially competent based on Article 46 of the French Code of Civil Procedure, since it could face damages in France [571] . Additionally, there was a possibility for the US District Court to be seized for a new anti-suit injunction motion after the discovery, as the US lawsuit had been temporarily suspended until the end of the discovery [546] .

IPCom further argued that the anti-suit injunction motion created an imminent harm to its fundamental rights, including the right of industrial property and the right to a fair trial, as guaranteed by Articles 1, 6-1 and 13 of the European Convention of Human Rights and Articles 17 and 47 of the European Charter of Fundamental Rights. There was also a risk of an imminent harm due to the fact that an anti-suit injunction could still be issued [572] .

IPCom also stated that the US anti-suit injunction motion was threatening the sovereignty of the French state and violated the French and European international public order [573] , since it sought to prohibit the French jurisdiction from exercising its jurisdictional powers [574] . On the contrary, IPCom’s request of an anti-anti-suit injunction did not have as an object or effect to deprive the claimants from their fundamental rights or the US courts from exercising their jurisdictional power [575] . Indeed, the decision did not aim to prohibit the US subsidiaries of Lenovo from continuing their action in the US [546] .

Moreover, the anti-suit injunction motion had breached the international public order as it was impeding the French courts to exercise the powers they were allocated by Articles 7-2 and 24.4 of the European regulation 1215/2015, i.e. reviewing the validity and infringement of EP 268 in France [576] ; and depriving IPCom from an effective jurisdictional protection of its intellectual property rights in any Member State of the European Union covered by the patent [546] .

The assessment of the Court of Appeal

The Court of Appeal agreed with the Court of Paris that had confirmed the competence of French courts for the claim raised [577] , as damages may occur in France [546] .

The Court of Appeal found that, if IPCom’s request was rejected, the latter would be deprived from the possibility to act and raise its rights arising from the French part of EP 268 before the French courts [546] . French courts were, however, competent based on Article 46 of the French Code of Civil Procedure (referring to tort claims) [546] .

The Court of Appeal added that the jurisdiction of French courts covered also preliminary proceedings, because such proceedings are attached to the court that would review the claims in the main proceedings, which could be affected by the anti-suit injunction motion [578] .

With respect to the merits of IPCom’s request, the Court of Appeal found that the US anti-suit injunction motion would create a manifestly illicit harm to IPCom, because it would prevent IPCom from pursuing or filing any new infringement action [579] . This would breach Article 17 of the European Chart of Fundamental Rights, as well as L611-1 and L615-1 of the French Intellectual Property Code, as IPCom would be deprived from the right to be heard by the sole judge competent to decide on the infringement [580] . Furthermore, IPCom’s right to a fair process would be taken away, in violation of Articles 6 para. 1 and 13 of the European Convention of Human Rights [546] . Finally, IPCom’s fundamental right to property would also be harmed [546] .

However, the Court of Appeal rejected IPCom’s claim to prohibit entities of the Lenovo group to file any new anti-suit injunction motion [581] . The Court of Appeal held that the sole possibility of harm did not suffice for such an order [582] . Therefore, it overturned the first instance decision to that extent [583] .

[545] Court of Appeal of Paris, judgement dated 3 March 2020, page 2, par. 4.
[546] Ibidem
[547] Court of Appeal of Paris judgement dated 3 March 2020, page 2, par. 5.
[548] Court of Appeal of Paris, judgement dated 3 March 2020, pages 2 and 3, par. 6.
[549] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 6.
[550] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 7.
[551] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 8.
[552] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 9.
[553] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 10.
[554] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 12.
[555] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 13.
[556] Court of Appeal of Paris, judgement dated 3 March 2020, pages 3 and 4, par. 13
[557] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 14.
[558] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 15.
[559] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 16.
[560] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 17. The Lenovo subsidiaries requested the Paris Court of Appeal to reform the anti-anti-suit injunction granted on 8 November 2019, to deny competence to review the action filed by Lenovo Inc. and Motorola Mobility LLC before the US District Court, consider the US judgement common to Lenovo (France) SAS and Motorola Mobility France SAS, refer IPCom to the US District Court, reject all claims of IPCom against Lenovo Inc. and Motorola Mobility LLC and condemn IPCom to pay 50,000 as process costs.
[561] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 19.
[562] Court of Appeal of Paris, judgement dated 3 March 2020, pages 4 and 5, par. 20.
[563] Court of Appeal of Paris, judgement dated 3 March 2020, page 5, par. 20
[564] Court of Appeal of Paris, judgement dated 3 March 2020, page 12, par. 1.
[565] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 25.
[566] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 26.
[567] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 28.
[568] Court of Appeal of Paris, judgement dated 3 March 2020, pages 6 and 7, par. 29.
[569] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 30.
[570] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 32
[571] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 34.
[572] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 37.
[573] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 39.
[574] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 39-40.
[575] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 40.
[576] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 41.
[577] Court of Appeal of Paris, judgement dated 3 March 2020, page 9, par. 45.
[578] Court of Appeal of Paris, judgement dated 3 March 2020, page 9, par. 46.
[579] Court of Appeal of Paris, judgement dated 3 March 2020, pages 10 and 11, par. 56-57.
[580] Court of Appeal of Paris, judgement dated 3 March 2020, pages 10-11, par. 57.
[581] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 61- 64.
[582] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 62-63.
[583] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 64.

Updated 3 February 2020

Philips v Wiko

OLG Karlsruhe
30 October 2019 - Case No. 6 U 183/16

A. Facts

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

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

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

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

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

By judgment dated 25 November 2016 [584] , the District Court of Mannheim granted Philips’ claims almost to the full extent. Wiko appealed the District Court’s judgement. In addition, by way of a counterclaim, Wiko requested disclosure of existing licensing agreements signed by Philips with similarly situated licensees (comparable agreements).

With the present judgment [585] , the Higher District Court of Karlsruhe (Court) overturned the ruling of the District Court in part. In detail, the Court confirmed Philips’ claims for information and the rendering of accounts as well as Wiko’s liability for damages on the merits. The Court, however, rejected Philips’ claims for injunctive relief, destruction and recall of infringing products from the market.

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

B. Court’s reasoning

The Court confirmed that Wiko’s products infringe the patent in suit [586] .

Contrary to the view taken previously by the District Court, the Court found, however, that Article 102 of the Treaty for the Functioning of the EU (TFEU) prevents Philips from enforcing the claims for injunctive relief as well as the recall and destruction of infringing products asserted in the infringement proceedings for the time being [587] . In the Court’s eyes, Philips had failed to meet the conduct obligations established by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [588] (Huawei framework or obligations) [589] .

Huawei framework

The Court explained that SEP holder’s failure to meet its Huawei obligations will – as a rule – render an infringement action resulting in an exclusion of the implementer from a downstream market (action for injunctive relief and/or recall and destruction of products) abusive in terms of Article 102 TFEU [590] . This will, however, not be the case, when the implementer himself fails to fulfil its duties under the Huawei framework; if the implementer acts in bad faith as an ‘unwilling’ licensee, then SEP holder’s Huawei obligations are ‘suspended’ [590] . As a result, asserting the rights to injunctive relief and/or the destruction and recall of infringing products in court could then be considered as a justified reaction of the SEP holder to the implementer’s unwillingness to enter into a FRAND licence [590] .

Having said that, the Court expressed the view that the parties can remedy potential flaws in their conduct under the Huawei judgment and/or even fulfil their Huawei obligations for the first time during the course of pending infringement proceedings [591] . The Court noted that in Huawei v ZTE, the CJEU did not require that the parties fulfil all conduct obligations established prior to the initiation of court proceedings [592] . In the Court’s eyes, denying the parties such possibility is not compatible either with the general principle of proportionality known to European law, nor with the German civil procedural law, according to which courts need to consider all facts relevant for their decision-making raised in the proceedings until the end of the oral arguments [593] .

Accordingly, an infringement action that did not give rise to any antitrust concerns at the time it was filed, can be considered as abusive at a later point in time, if the situation significantly changed, e.g. the implementer fulfilled its Huawei obligations in the meantime [594] . Vice versa, an action of an abusive nature can later on be ‘corrected’, if the patent holder performs its duties under the Huawei framework during the course of the pending proceedings [594] .

In the Court’s view, a SEP holder seeking to remedy (or fulfil for the first time) obligations under the Huawei framework after the initiation of infringement proceedings must make sure that pressure-free licensing negotiations between the parties are enabled, as required by the CJEU in Huawei v ZTE [595] . For this, the patent holder must use procedural tools available under German law, particularly a motion for suspension of the trial [595] . The SEP holder can also propose a consensual stay of the proceedings, especially when a parallel nullity action against the patent in suit is pending before the Federal Patent Court [595] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [595] .

On the other hand, the Court pointed out that fulfilment of Huawei obligations by the implementer after the beginning of infringement proceedings does not necessarily lead to a dismissal of the claims asserted by the SEP holder [596] . Indeed, if the implementer meets its Huawei duties at a very late point in time in the proceedings (e.g. shortly before the closing of the oral arguments), the Court could eventually neglect this fact in its decision [597] . This way, delays can be avoided. In this context, the Court also made clear that the implementer is not in a position to cause a unilateral suspension of the proceedings; in contrast to the opposite case (that is cases, in which a stay of the proceedings is suggested by the claimant), the SEP holder will usually not be required to agree to a suspension of the proceedings proposed by the implementer, in order to allow pressure-free negotiations to take place [597] . Insofar, the implementer bears the risk that the fulfilment of its obligations under the Huawei framework in the course of a pending infringement trial will have no impact [597] .

Notification of infringement

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

The Court confirmed that a notification addressed to the parent company within a group of companies will usually be sufficient under the Huawei framework [598] . In terms of content, the Court was satisfied by the fact that Philips’ letter from July 2015 named the patent in suit as well as the relevant part of standard document implementing the technical teachings of this patent [599] . The Court explained that the notification does not have to contain (further) information required for a final assessment of the validity and essentiality of the patent in suit [599] . Accordingly, the SEP holder is not obliged to share claims charts customarily used in SEP licensing negotiations with the implementer along with the notification of infringement [599] .

Willingness to enter into a licence

The Court further found that Wiko had sufficiently met its obligation to express its willingness to negotiate a licence with Philips [600] .

The Court agreed with the assessment of the District Court that Wiko’s initial reaction to Philips’ notification in July 2015 by letter dated 20 October 2015 was belated. According to the Court, the time available to the implementer for expressing its willingness to enter into negotiations for a licence will – as a rule – not exceed two months [601] . This period of time will usually be sufficient: since by declaring its willingness to enter into negotiations the implementer does not waive any rights (especially the right to contest the validity and/or infringement of the patents in question), it shall not be given more time than the time needed for an ‘initial overview’ of the SEP holder’s claims [601] . Delaying tactics potentially applied by the implementer must be prevented [601] . Against this background, Wiko’s letter dated 20 October 2015 was sent to Philips too late.

Nevertheless, the Court found that Wiko had remedied the belated response after the beginning of the infringement proceedings. On the one hand, Wiko’s letter dated 20 October 2015 had reached Philips at a very early stage of the proceedings, namely just some days after the action was filed [602] . In addition, Wiko had confirmed its willingness to enter into negotiations with Philips expressed in said letter during the course of the proceedings, by making a counteroffer, rendering accounts and providing security to Philips [602] .

SEP holder’s offer

On the other hand, the Court held that Philips had failed to comply with its obligation to make a FRAND licensing offer to Wiko. In particular, the Court took the view that Philips did not provide sufficient information to Wiko with respect to its licensing offer dated July 2015 [603] .

The Court argued that the ‘fairness’ element of the FRAND commitment establishes an ‘information duty’ (‘Informationspflicht’) of the SEP holder with respect to the content of its licensing offer to the implementer [604] . This duty exists besides the patent holder’s duty to make a FRAND licensing offer to the implementer [605] .

In terms of scope, the Court found that the information duty is, basically, not limited to the calculation of the offered royalty but also covers (objective) facts showing that the ‘contractual compensation factors’ (‘vertragliche Vergütungsfaktoren’) are not discriminatory [606] . The extent of the information to be shared depends on the circumstances of the specific ‘licensing situation’ [606] .

In case that the patent holder has already granted licences to third parties, the information duty will extend also towards its ‘licensing practice’, including comparable agreements [607] .

If the SEP holder uses exclusively a standard licensing programme, then it will be sufficient to show that said programme has been accepted in the market and that the offer made to the implementer corresponds with the standard licensing agreement used [607] .

On the other hand, if the SEP holder has concluded individual licensing agreements with third licensees, then it would be obliged to disclose – at least – the content of the key contractual terms in a way that would allow the implementer to identify whether (respectively why) the offer it received is subject to dissimilar conditions [607] . The Court made, however, clear that – contrary to the approach adopted by the Duesseldorf courts – the SEP holder is not obliged in any case to disclose the full content of all existing comparable agreements [607] . In the eyes of the Court, the information duty serves only the purpose of facilitating good will licensing negotiations. A full disclosure of comparable agreement is, however, uncommon in practice [607] .

In this context, the Court pointed out that the patent holder will have to adequately substantiate the content of ‘justified confidentiality interests’ that might hinder the disclosure of comparable agreements [607] . Furthermore, the SEP holder would need to facilitate the conclusion of a Non-Disclosure Agreement which would allow sharing further information with the implementer [607] .

Based on the above considerations, the Court found that Philips had not fulfilled its information duty at any time [608] . In particular, the Court criticized that Philips did not adequately explain the reasons for choosing to agree on a lump sum payment (instead of a running royalty) in an existing agreement with a third licensee [609] . The fact that companies of different size were affected did not relieve Philips from its information duty; according to the Court, the mere fact that two competitors in a downstream market are of different size does not per se offer sufficient ground for different treatment [610] .

Since the Court assumed that Philips had failed to meet its information duties, it did not examine whether Philips’ licensing offer to Wiko was FRAND in terms of content [611] . In this respect, the Court seemed to agree, however, with the notion that FRAND is a range providing parties with a degree of flexibility [612] .

Implementer’s claim for disclosure of comparable agreements

Referring to the counterclaim for full disclosure of Philips’ comparable agreements raised by Wiko in the appeal proceedings, the Court clarified that a respective right of Wiko does not exist [613] .

Such a right does not arise either from German civil law (Articles 809 and 810 German Civil Code) [613] or Article 102 TFEU [614] . Furthermore, a right for disclosure of comparable agreement can neither be extracted by the SEP holder’s FRAND commitment to ETSI [615] . The Court saw no indication that French law (which is applicable to the ETSI FRAND undertaking) establishes such a right in favour of standards implementers [616] .

C. Other important issues

The Court pointed out that the claims for damages as well as information and rendering of accounts also asserted by Philips in the present proceedings are not subject to the Huawei framework [617] . Moreover, the Court explained that the non-fulfilment of the Huawei obligations by the patent holder poses no limitations on these rights in terms of content [618] . This is particularly true with respect to SEP holder’s claim to request information about expenses and profits from the implementer5 [619] .

[584] Philips v Wiko, District Court (Landgericht) of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16.
[585] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, Case No. 7 O 44/16, cited by http://lrbw.juris.de.
[586] Ibid, paras. 37-87.
[587] Ibid, para. 88.
[588] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C 170/13.
[589] Philips v Wiko, Higher District Court of Mannheim, judgment dated 25 November 2016, para. 108.
[590] Ibid, para. 107.
[591] Ibid, paras. 117 et seqq.
[592] Ibid, para. 119.
[593] Ibid, paras. 120 et seq.
[594] Ibid, para. 120.
[595] Ibid, para. 125.
[596] Ibid, para. 126.
[597] Ibid, para. 127.
[598] Ibid, para. 111.
[599] Ibid, para. 112.
[600] Ibid, paras. 115 and 117.
[601] Ibid, para. 115.
[602] Ibid, para. 129.
[603] Ibid, paras. 131 et seqq.
[604] Ibid, paras. 132 et seq.
[605] Ibid, para. 135.
[606] Ibid, para. 133.
[607] Ibid, para. 134.
[608] Ibid, paras. 136 et seqq.
[609] Ibid, para. 136.
[610] Ibid, para. 138.
[611] Ibid, para. 131.
[612] Ibid, para. 106.
[613] Ibid, paras. 157 et seqq.
[614] Ibid, paras. 162 et seqq.
[615] Ibid, paras. 160 et seq.
[616] Ibid, para. 161.
[617] Ibid, para. 143.
[618] Ibid, para. 144.
[619] Ibid, paras. 145 et seqq.

Updated 6 May 2021

Sisvel v Haier

Federal Court of Justice - BGH
24 November 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 [620] . 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 [621] (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 [622] . 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 suit [623] .

On 5 May 2020, FCJ rendered a judgment in the parallel proceedings pending between the parties concerning the patent reading on the GPRS standard [624] . 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 infringed [626] .

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) [627] .

Dominant market position

The Court held that Sisvel had a dominant market position within the meaning of Article 102 TFEU [628] .

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 market [629] . 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. [629] 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 Haier [630] . 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 licence [631] .

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 conditions [632] . 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. [632] An abuse would be given, if the SEP holder insisted on such conditions also at the end of licensing negotiations with the implementer. [632]

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 used [633] .

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 Haier [634] .

Willingness

On the other hand, the Court found that Haier did not act as a licensee willing to obtain a FRAND licence from Sisvel [635] . 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 [636] . 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 [636] .

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. [637] 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. [638] The fact that a party fails to contribute in negotiations towards a FRAND agreement will regularly be considered to its detriment. [639] 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. [640]

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. [641] Otherwise, competition could be distorted, because the infringer would gain unfair advantages over implementers that have taken a licence in a timely manner. [641]

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. [642] 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. [643] Under special circumstances, however, stricter or less strict conduct duties of the parties could be justified. [643]

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. [643] 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. [644] 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. [645]

Accordingly, FCJ explained that willingness shall (still) be in place, also when the SEP holder makes a licensing offer. [646] 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. [647] 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. [648] The implementer has, therefore, a duty to examine the FRAND-conformity of the terms of the SEP holder's offer. [649] If the offer is 'obviously' not FRAND, it will be sufficient that the implementer explains the reasons why this is the case. [649]

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. [650] If one would require from the SEP holder to make a 'perfect' FRAND offer right away, licensing negotiations would be obsolete. [651] 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. [652] The Court reiterated that an non-FRAND licensing offer does not per se amount to an abuse of market dominance. [653]

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. [654] 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. [655] However, the longer the implementer waits with asserting such request, the higher the threshold for considering it as a willing licensee will be. [656] 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. [654]

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 [657] . 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 [657] . 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 [658] . 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. [659]

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 [660] . 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 condition [661] . 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 [662] .

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. [663] 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. [664] 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'. [664]

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. [665] The Court focused particularly on the fact that the licence would cover only the two affiliates of the Haier group sued in Germany. [666] 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'. [667]

In addition, the Court also criticised the proposed royalty regime. [668] 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. [669] 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. [670]

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. [671]

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 [672] . According to FCJ, this question is not relevant, when the implementer has not adequately expressed willingness to sign a FRAND licence. [673]

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. [674] 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. [674]

C. Other important issues

Patent ambush

The Court dismissed Haier's defence based on the 'patent ambush' argument. [675] 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. [676] 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). [676]

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. [677] 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. [678] Haier had, however, failed to do so. [678]

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. [679]

What is more, Sisvel's claim for damages was not limited to the amount of a FRAND licensing rate ('licensing analogy'). [680] 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. [679] 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. [679]

[620] 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).
[621] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
[622] 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).
[623] Federal Court of Justice, judgment dated 28 April 2020, Case No. X ZR 35/18.
[624] Sisvel v Haier, Federal Court of Justice, judgment dated 5 May 2020, Case No. KZR 36/17.
[625] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17 (cited by ).
[626] Ibid, paras. 10-43.
[627] Ibid, para. 44.
[628] Ibid, paras. 48 et seqq.
[629] Ibid, para. 49.
[630] Ibid, para. 52.
[631] Ibid, para. 53.
[632] Ibid, para. 54.
[633] Ibid, para. 55.
[634] Ibid, para. 84.
[635] Ibid, paras. 86 et seqq.
[636] Ibid, para. 57.
[637] Ibid, para. 58.
[638] Ibid, para. 59.
[639] Ibid, para. 60.
[640] Ibid, para. 62.
[641] Ibid, para. 61.
[642] Ibid, para. 63.
[643] Ibid, para. 65.
[644] Ibid, para. 68.
[645] Ibid, paras. 66 and 68.
[646] Ibid, para. 69.
[647] Ibid, para. 69. See Nokia v Daimler, District Court of Duesseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
[648] Ibid, paras. 70 and 71.
[649] Ibid, para. 71.
[650] Ibid, para. 72.
[651] Ibid, para. 73.
[652] Ibid, para. 74.
[653] Ibid, para. 76.
[654] Ibid, para. 77.
[655] Ibid, paras. 79 et seqq.
[656] Ibid, para. 83.
[657] Ibid, para. 87.
[658] Ibid, paras. 88 et seqq.
[659] Ibid, para. 89.
[660] Ibid, paras. 93 et seqq.
[661] Ibid, para. 95.
[662] Ibid, paras. 96-99.
[663] Ibid, paras. 102 et seqq.
[664] Ibid, para. 102.
[665] Ibid, paras. 108 et seqq.
[666] Ibid, para. 116.
[667] Ibid, para. 118.
[668] Ibid, paras. 124 et seqq.
[669] Ibid, para. 124.
[670] Ibid, para. 125.
[671] Ibid, para. 126.
[672] 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.
[673] Sisvel v Haier, Federal Court of Justice, judgment dated 24 November 2020, Case No. KZR 35/17, para. 107.
[674] Ibid, para. 56.
[675] Ibid, paras. 127 et seqq.
[676] Ibid, para. 130.
[677] Ibid, para. 131.
[678] Ibid, paras. 131 et seq.
[679] Ibid, para. 135.
[680] Ibid, paras. 134 et seqq.

Updated 6 March 2017

Philips v Archos

LG Mannheim
1 July 2016 - Case No. 7 O 209/15

Facts
Claimant, a globally operating electronics manufacturer, is the proprietor of European patents EP 1 062 743 B1 and EP 1 062 745 B1, allegedly covering part of the UMTS- and LTE-standard respectively. Defendant, being the German subsidiary of the French parent company Archos S.A., produces and markets UMTS- and LTE-based devices under the brand name “ARCHOS” in Germany.
By letter of 5 July 2014, Claimant sent an infringement notification, including a list of the patents affected, to Defendant. Furthermore, on 15/16 September 2014, Claimant explained its licensing program to Defendant and provided for corresponding documents. After Defendant offered Claimant in a meeting on 25 November 2014 the transfer of patents which it considered essential to the UMTS- and LTE-standard respectively, Claimant sent a written licensing offer, containing a list of SEPs and patent-infringing products, to Defendant on 28 July 2015 and provided for additional technical information concerning the SEPs in-suit on 25 September 2015 via e-mail. On 12 January 2016, Defendant, in turn, submitted a written counter-offer to Claimant for a licence covering Claimant’s worldwide LTE/UMTS-patent portfolio including royalties of 0.071% of the net sales price per unit. Since the parties did not conclude a binding licensing agreement subsequently, Claimant brought an action against Defendant on 16 October 2015, received by the court on 19 October 2015. In April 2016, Defendant deposited an amount of EUR 161’343.00 at the Landesjustizkasse (federal justice treasury) Bamberg, which should cover the worldwide sales of LTE/UMTS-based devices between 2012 and 30 June 2016 and was calculated on the basis of the royalties previously offered in Defendant’s counter-offer.
Court’s reasoning
1. Market power and infringement notification
  The court left open the question of whether the SEP conveyed market power to Claimant since it did, in any case, find no abuse of such potential market power.
  Having regard to the content of the infringement notification, the Mannheim court held that, in any case, the SEP proprietor, on the one hand, has to denote the patent in-suit, which it deems essential, by reference to its patent number and to indicate, that the patent has be declared essential by the respective standardization organization. In order to specify the way in which the SEP has been infringed, the SEP proprietor’s notification must, on the other hand, clarify to which standard the patent in-suit is essential and based on which circumstances it assumes that the alleged infringer makes use of the patent’s teachings. For this purpose, the SEP proprietor must indicate which (category of the) technical functionality of the challenged embodiment makes use of the standard. The alleged infringer must be able to assess the intellectual property rights situation autonomously or by recourse to a third party.
  The level of detail to be adhered to in the infringement notification depends on the specific circumstances of the case, taking into account in particular the technology knowledge of the alleged infringer or by what means it can acquire the corresponding professional expertise in a reasonable manner. In order to substantiate the facts of the infringement in accordance with Huawei, it is deemed sufficient to refer to so-called claim charts, being customarily used in the course of licensing negotiations, comparing the asserted claim of the patent in-suit according to features with the relevant passages of the standard without fulfilling the requirements of the conclusiveness test of an infringement action. In contrast, the mere reference that the standard implementer would produce or market products implementing the standard and therefore infringe the patent in-suit is not adequate.
2. The SEP owner’s licensing offer
  As regards the Huawei condition to submit a written offer on FRAND terms prior to the initiation of proceedings, the court requires a contractual offer that is ready to be adopted and comprises the essentialia negotii. However, in the opinion of the judges, Huawei does not oblige the infringement court to determine pursuant to objective criteria whether the licensing offer complies with FRAND terms, if the latter fact is disputed by the alleged infringer. [681] The SEP proprietor’s offer is only considered not FRAND and in violation of antitrust law, if it constitutes an expression of exploitative abuse, taking into account the specific negotiation situation and, in particular, the market conditions.
  In order to comply with the obligation to specify the way in which the royalty is to be calculated, the SEP proprietor must put the alleged infringer in a position to understand on the basis of objective criteria why the former considers its licensing offer as FRAND. For this purpose, it is, in the case of quota licence agreement, not sufficient to indicate the royalties per unit without substantiating their FRAND character. The respective amount must be made sufficiently transparent, e.g. by reference to an established standard licensing program or by indicating other reference values allowing to deduce the royalty demanded, such as a pool licence fee.
  Taking into account the summary examination of the Higher Regional court in Karlsruhe granting the SEP proprietor much leeway in determining FRAND terms [682] , the Mannheim court left in the present case undecided whether it has to reassess its own standards of review, because Claimant did not sufficiently explain why royalties of USD 1.00 per unit should be FRAND in accordance with Huawei. The mere indication of the multipliers underlying the calculation of the royalties were deemed inadequate, since on the basis of this incomplete (market) information the alleged infringer is neither able to assess whether Claimant’s offer is FRAND nor to submit a FRAND counter-offer.
  The subsequent explanations as well as the expert opinion, seeking to prove the non-discriminatory character of the royalties, forming part of Claimant’s reply, did not fulfill the Huawei requirements, because prior to the initiation of proceedings Claimant has to substantiate both the manner of patent infringement and the way of calculating the royalties. Without completely dissenting from the decision previously rendered by the OLG Düsseldorf [683] , the Mannheim court, by reference to the subsequent rectification order issued by the ECJ on 15 December 2015, denied the SEP proprietor’s unlimited possibility to perform its Huawei obligations within the ongoing trial without incurring sanctions, because otherwise the central idea underlying the ECJ decision of being able to negotiate without the burden of pending proceedings while having all necessary information to evaluate the FRAND conformity of the licensing offer would be diminished.
  Moreover, Claimant was not exempted from its respective Huawei obligation due to Defendant’s alleged lack of willingness to conclude a licensing agreement. In contrast, a fundamental unwillingness to enter into licensing negotiations was rejected, because Defendant, firstly, complained in letters of 20 November 2015 and 4 December 2015 about Claimant’s deficient explanation why the licensing fee should be FRAND according to Huawei; secondly, it made a counter-offer including royalties of 0.071% of the net sales price per unit and provided for an expert opinion elaborating on the FRAND character of this royalty; thirdly, it submitted an offer to transfer own patents prior to the proceedings; and lastly, even though conducted after the initiation of proceedings, Defendant deposited a considerable amount with the court, which should cover worldwide sales with its LTE/UMTS-based products.
3. The standard implementer’s reaction
  The standard implementer is obliged to react to a licensing offer, even if it deems the later not as FRAND in accordance with Huawei [684] , unless it is established by means of summary examination that the licensing offer is evidently not FRAND and therefore constitutes an abuse of dominance.
Other important issues
Although the Mannheim court rejected the action for prohibitory injunction and for the recall of products for reasons of antitrust law, it confirmed, on the basis of § 140b PatG and § 242 BGB, Claimant’s application for information as well as for rendering account and granted damages in accordance with § 139 (2) PatG, because it found Defendant to infringe the patents in-suit.
Besides, the Court denied the exhaustion of the patents in-suit. [685]

[681] The judges stated in an even more general manner that the infringement court shall not be required under Huawei to determine the FRAND terms, if the proceedings do not involve the payment of royalties, but only relate to actions for a prohibitory injunction or for the recall of products.
[682] See above OLG Karlsruhe, 31 May 2015 – Case No. 6 U 55/16
[683] See above OLG Düsseldorf, 9 May 2016 – Case No. 15 U 36/16
[684] See also LG Mannheim, 27 November 2015 – Case No. 2 O 106/14 and LG Düsseldorf, 3 November 2015 – Case No. 4a O 144/14
[685] Para. V, p. 34 et seq.

Updated 26 January 2017

Sisvel v Haier

OLG Düsseldorf
13 January 2016 - Case No. I-15 U 66/15

Facts
The proceedings concerned the subsequent application of Defendants in Case No. 4a O 93/14 seeking to suspend the execution of the District Court’s decision until the appellate court has decided on the merits of an appeal brought by Defendants. As to the facts of the case, it can be referred to the summary above.
Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous. [686]
Court’s reasoning
1. The SEP owner’s licensing offer
  The question of whether granting a portfolio license would be FRAND was referred to the subsequent appeal proceedings. [687]
2. The standard implementer’s reaction
  More importantly, the court found that the standard user is not required to respond to a license offer of the SEP proprietor if the terms of that offer are not FRAND. In other words, the subsequent obligations of the alleged infringer derived from Huawei only arise when and provided that the SEP proprietor submitted an offer on FRAND terms. As the lower court had not determined whether the conditions of the proprietor’s license offers were FRAND, the court considered this part of the lower court’s decision to be manifestly erroneous. Given this flaw in the lower court’s reasoning, it was left undecided by the court whether a license offer submitted in the course of the oral hearings can fulfill the Huawei requirements. [688]
Other important issues
For the purposes of the present proceedings, the court explicitly stated that there is—in principle—no reason to treat non-practicing entities, such as Claimant, in a different manner than other market participants. [689]

[686] Case No. I-15 U 66/15, para. 4-5
[687] Case No. I-15 U 66/15, para. 20
[688] Case No. I-15 U 66/15, para. 17-20
[689] Case No. I-15 U 66/15, para. 11

Updated 17 January 2018

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

English court decisions
7 June 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. [691] 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. [692]

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. [693] The court granted an injunction for infringements of patents EP (UK) 2 229 744 and EP (UK) 1 230 818 (the ‘final order’). [694] 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. [694]

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, [695] 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). [696] 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. [695] 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’). [697] 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. [697]

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. [698] Although the practical effect of a defendant’s undertaking and an injunction are similar, rights holders usually insist on an injunction. [699] One reason is that it involves a public vindication of the claimant’s rights. [699] As the claimant has been forced to come to court, an offer of undertaking after judgment is usually considered too late. [699] In this case, the defendant had maintained throughout the negotiations and the trial that it was under no obligation to accept a worldwide license. [700] 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. [701] 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). [701]

The parties also disagreed about the wording of the court declaration regarding the FRAND terms of the settled license. [702] 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’. [703] Further, the court rejected the defendant’s petition to make a declaration that the claimant had not abused its dominant market position. [704] 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). [705] The defendant argued the claimant had been clearly wrong regarding the applicable FRAND rate [706] 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. [707] The ensuing question was whether any deductions were appropriate. [708] The court held that neither party had offered terms that were essentially FRAND. [709] However, the rates offered by the claimant were significantly further away from the end result than the rates offered by the defendant. [709] 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); [710] second, the hard-edged non-discrimination point; [711] and third, the issue of injunctive relief and abuse of market dominance under the CJEU ruling Huawei v. ZTE. [712] 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). [713]

[690] Unwired Planet v. Huawei [2017] EWHC 711(Pat), available at http://www.bailii.org/ew/cases/EWHC/Patents/2017/1304.html
[691] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 2.
[692] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 8.
[693] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 1.
[694] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 70.
[695] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 22.
[696] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 19.
[697] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 20.
[698] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 25.
[699] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 26.
[700] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 29.
[701] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 33.
[702] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 34.
[703] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 36.
[704] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 38.
[705] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), paras 39-40.
[706] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 41.
[707] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 44.
[708] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 45.
[709] Unwired Planet v Huawei, [2017] EWHC 1304 (Pat), para 56.
[710] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 170 et seqq.
[711] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 177 and 481 et seqq.
[712] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 627 et seqq.
[713] See Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 537 et seqq.

Updated 26 January 2017

Saint Lawrence v Vodafone

LG Düsseldorf
31 March 2016 - Case No. 4a O 126/14

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, [714] 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.
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. [715] The court declared the Huawei rules applicable to claims for the recall of products. [716]
  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. [717] 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. [718] In non-transitional cases, however, the court doubts whether it is possible to rectify an omitted infringement notification without withdrawing the action. [719]
  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. [720]
  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. [721] 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. [722]
  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. [723] 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. [724] 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. [725]
  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. [726]
  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. [727]
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. [728] Whether the Intervener satisfied the ECJ criteria was left undecided. [729]
  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. [730] 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. [731] 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. [732]
  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. [733] 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. [734]
  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. [735] 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. [736]
Other important issues
According to the court, the Huawei requirements apply to both non-practicing entities and other market participants. [737]
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. [738]
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. [739]

[714] 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.
[715] Case No. 4a O 73/14, para. 184
[716] Case No. 4a O 73/14, para. 187
[717] Case No. 4a O 73/14, para. 195 et seq.
[718] Case No. 4a O 73/14, para. 208-210
[719] Case No. 4a O 126/14, para. IV, 3, a, bb, 2, c
[720] Case No. 4a O 73/14, para. 193
[721] Case No. 4a O 73/14, para. 270 et seq.
[722] Case No. 4a O 73/14, para. 222 et seq.
[723] Case No. 4a O 73/14, para. 225 et seq.
[724] 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.
[725] 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.
[726] Case No. 4a O 73/14, para. 256 et seq.
[727] Case No. 4a O 73/14, para. 279 et seq.
[728] Case No. 4a O 73/14, para. 214-220
[729] Case No. 4a O 73/14, para. 214-220; 278
[730] Case No. 4a O 73/14, para. 266
[731] Case No. 4a O 73/14, para. 185 et seq.; 262 et seq.
[732] Case No. 4a O 73/14, para. 264.
[733] Case No. 4a O 73/14, para. 291 et seq.
[734] Case No. 4a O 73/14, para. 278
[735] Case No. 4a O 73/14, para. 267 et seq.; 299 et seq.
[736] Case No. 4a O 73/14, para. 304
[737] Case No. 4a O 73/14, para. 189
[738] Case No. 4a O 73/14, para. 309-313
[739] Case No. 4a O 73/14, para. 317 et seq.

Updated 7 April 2021

Sisvel v Wiko

OLG Karlsruhe
9 December 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). [740] 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 [741] (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 [742] .

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. [743]

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. [744] 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. [745]

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. [746]

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. [747] 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. [748] In terms of content, the notification must identify the patent infringed, the form of infringement and also designate the infringing embodiments. [748] Detailed technical or legal analysis of the infringement allegation is not required. [748] The production of so-called 'claim charts', which is common in practice, will, as a rule, suffice, but is not mandatory. [748] If the patent holder offers a portfolio licence, respective extended information duties occur. [748]

In the present case, it was not disputed that Sisvel had notified Wiko about the patent-in-suit prior to litigation. [749] As far as Wiko complained that no claim charts were presented before trial, the Court reiterated that no respective obligation of Sisvel existed. [750] 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. [749]

Willingness to obtain a licence

The Court then found that Wiko behaved as an unwilling (potential) licensee both prior and during the infringement proceedings [751] . 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. [752]

According to the Court, the 'expression of a general willingness to license' is not sufficient for assuming that an implementer is a 'willing licensee'. [753] Moreover, the implementer must 'clearly and unambiguously' declare willingness to conclude a license agreement on FRAND terms, 'whatever FRAND terms may actually look like" [753] . The respective declaration must be 'serious and unconditional'. [753]

The Court highlighted that for the assessment of willingness the overall facts and the particular conduct of the implementer shall be taken into account. [753] Willingness is not 'static': the finding that an implementer was willing (or unwilling) at a certain moment in time does not remain unchanged henceforth. [753]

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. [754] 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. [755] 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. [755]

In the view of the Court, the above requirements are in line with the Huawei v ZTE judgment (Huawei judgment or Huawei) [756] of the Court of Justice of the EU (CJEU). [757] 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. [758]

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. [759] Such behaviour could be justified in individual cases, especially when the SEP holder does not act in a 'target-oriented' manner itself. [759] Nevertheless, implementers must, as a rule, react timely even to a belated action of the SEP holder. [759] 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. [759]

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. [760] A willing implementer would have, however, sought a licence independently of the initiation of legal steps and independently of the course of litigation. [761] 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. [762] 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). [763]

The Court identified also further facts that indicate that Wiko engaged in delaying tactics. [764] 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) [765] . It also demanded further claim charts in February 2018, years after the action was filed. [766]

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. [767] 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. [768] 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. [769]

Furthermore, the Court clarified that -contrary to Wiko's view- school holidays and/or staff shortages cannot provide sufficient justification for delays in negotiations. [770] Even if such circumstances occur, a willing implementer would have communicated any obstacles immediately. [770] 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. [771] In fact, no such duty had arisen in the present case, due to Wiko's unwillingness to obtain a licence. [771] 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. [772] 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 [772] ; indeed, parties are best situated to determine the exact content of FRAND in a specific setting. [772]

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'. [773] 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. [774] 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. [775]

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. [776] The SEP holder's FRAND commitment does not give rise to such obligation. [776] 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. [776] 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. [777]

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. [777] 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. [778] 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. [779]

Against this background, the Court found that none of the offers made to Wiko during the infringement proceedings was 'clearly and evidently' non-FRAND. [780] 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. [781] 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. [782] 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. [783]

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. [784] On the other hand, Wiko had worldwide activities, so that a licence with a limited scope would not provide sufficient coverage. [784]

The fact that some of the patents included in Sisvel's portfolio were -allegedly- not standard-essential did not render the offers 'un-FRAND'. [785] 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. [786] Implementers can reserve the right to challenge the validity and essentiality of affected patents even after the conclusion of a licensing agreement. [786]

Similarly, the Court had no objections against a clause placing the burden of proof with regard to the exhaustion of licenced patents on Wiko. [787] 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. [788]

The question whether an adjustment clause is necessary for an offer to be considered FRAND was left unanswered by the Court. [789] 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. [789] The Court did not express any concerns against the term of the offered licence or the termination clauses contained therein, either. [790]

Furthermore, the Court made clear that Sisvel had adequately elaborated the licensing rates offered to Wiko. [791] In the infringement proceedings, Sisvel responded to the 'top-down' calculation of Wiko in detail and made relevant clarifications. [792] 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. [793]

Implementers' counteroffer

The Court also found that the counteroffers made by Wiko during the course of the first instance infringement proceedings were not FRAND. [794]

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. [795]

Having said that, the Court took the view that the royalty rates which Wiko offered were very low and, thus, not FRAND-compliant. [796] 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. [797] 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. [798] 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. [799]

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. [800] This is particularly true, when the SEP holder takes the respective initiative, as it was the case here. [800] 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. [800] The refusal of the infringer to act accordingly could, in the eyes of the Court, allow the conclusion that it is an unwilling licensee. [800]

Apart from that, the Court confirmed that Wiko had no legal ground for requesting full disclosure of Sisvel's third party agreements [801] . 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. [802] 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. [803]

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. [804]

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 [805] . [806] 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. [807]

[740] The action was extended to a third defendant, an individual person, who had served as a managing director for both aforementioned companies.
[741] Sisvel v Wiko, Higher Regional Court Karlsruhe, judgment dated 9 December 2020, Case-No. 6 U 103/19
[742] 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.
[743] Ibid, para. 289.
[744] Ibid, paras. 284 et seqq.
[745] Ibid, para. 287.
[746] 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.
[747] Ibid, paras. 292 et seqq.
[748] Ibid, para. 293.
[749] Ibid, para. 297.
[750] Ibid, paras. 297 et seq.
[751] Ibid, para. 299.
[752] Ibid, para. 299 and paras. 320 et seqq.
[753] Ibid, para. 301.
[754] Ibid, para. 302.
[755] Ibid, para. 303.
[756] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
[757] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 304.
[758] Ibid, para. 304.
[759] Ibid, para. 305.
[760] Ibid, paras. 321 et seqq.
[761] Ibid, para. 321.
[762] Ibid, para. 322.
[763] Ibid, paras. 323 et seq.
[764] 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).
[765] Ibid, paras. 325, 328 and 331.
[766] Ibid, para. 327.
[767] Ibid, paras. 333 et seqq.
[768] Ibid, paras. 334 and 338.
[769] Ibid, paras. 337 and 341 et seqq.
[770] Ibid, para. 330.
[771] Ibid, para. 342.
[772] Ibid, para. 307.
[773] Ibid, para. 308.
[774] Ibid, paras. 308 and 310.
[775] Ibid, para. 309.
[776] Ibid, para. 310.
[777] Ibid, paras. 311 et seqq.
[778] Ibid, paras. 311 and 313 et seqq.
[779] Ibid, paras. 316 et seqq.
[780] Ibid, para. 352.
[781] Ibid, para. 353.
[782] Ibid, paras. 354 et seqq.
[783] Ibid, para. 358.
[784] Ibid, para. 359.
[785] Ibid, para. 360.
[786] Ibid, para. 361.
[787] Ibid, para. 362.
[788] Ibid, para. 363.
[789] Ibid, paras. 365 et seqq.
[790] Ibid, paras. 367 et seqq.
[791] Ibid, para. 366.
[792] Ibid, para. 344.
[793] Ibid, para. 346.
[794] Ibid, paras. 379 et seqq.
[795] Ibid, para. 311.
[796] Ibid, paras. 379 et seqq.
[797] Ibid, para. 380.
[798] Ibid, para. 378.
[799] Ibid, para. 384.
[800] Ibid, para. 348.
[801] Ibid, para. 389.
[802] Ibid, paras. 389 et seq.
[803] Ibid, para. 391.
[804] Ibid, paras. 260 et seqq.
[805] Nokia v Daimler, District Court of Düsseldorf, order dated 26 November 2020, Case No. 4c O 17/19.
[806] Sisvel v Wiko, Higher Regional Court of Karlsruhe, judgment dated 9 December 2020, para. 395.
[807] Ibid, para. 395.

Updated 25 June 2020

IPCom v Lenovo, Court of Paris

French court decisions
20 January 2020 - Case No. RG 19/60318

A. Facts

In 2014, Lenovo acquired Motorola [808] . Both companies have a French subsidiary [809] .

Digital River Ireland Limited sells Lenovo products on Lenovo’s French website [810] . Modelabs Mobile S.A. (Modelabs) imports Motorola devices in France alongside Lenovo [809] .

IPCom GmbH & Co. KG (IPCom) acquired over 160 patent families from Robert Bosch in 2017 [808] . IPCom’s Patents cover the 2G, 3G and 4G wireless telecommunications standards [809] . One of the acquired patents is EP 1 841 268 B1 (EP 268) [809] , which is essential to the 3G standard [811] . EP 268 expires on 15 February 2020 [812] . IPCom made a FRAND commitment for its essential patents towards ETSI [813] .

In 2018, IPCom contacted Lenovo for a licence under its patents, including EP 268 [811] . There were some discussions between the parties [809] . On 1st March 2019 [809] , IPCom renewed its offer to license Lenovo and requested Lenovo to respond to this offer by 15 March 2019 [810] .

Absent a reply from Lenovo by this date, IPCom stated that it would initiate proceedings against Lenovo for patent infringement [809] .

On 14 March 2019, US subsidiaries of Lenovo and Motorola filed a claim against IPCom before the District Court for the Northern District of California (US District Court) in the US [809] . The requested the US District Court to set the terms for a worldwide FRAND licence for IPCom’s portfolio [809] .

On 4 July 2019, IPCom filed a complaint against the UK subsidiaries of Lenovo and Motorola before the High Court for England and Wales for patent infringement of the UK counterpart of EP 268 [814] .

On 18 September 2019, Lenovo’s and Motorola’s US subsidiaries filed a motion for an anti-suit injunction with the US District Court to prevent IPCom from continuing the infringement proceedings initiated in the UK as well as from filing any further infringement actions in any foreign jurisdiction, as long as there was no final decision on the US complaint [810] .

On 8 November 2019, the Court of Paris required Lenovo and Motorola to withdraw their anti-suit request with respect to EP 268 by 14 November 2019 the latest [814] . The anti-anti-suit injunction granted by the Court of Paris also applied to any subsequent request to the same end that would be introduced by Motorola and Lenovo. Lenovo and Motorola’s US counterparts partially withdrew the motion for an anti-suit injunction brought before the US District Court [809] .

On 14 November 2019, IPCom filed infringement proceedings against Lenovo and Motorola before the Court of Paris [815] . Before that, on 30 October 2019, IPCom had also sought temporary measures until the patent expiration day, i.e. a preliminary injunction, as well as an order for the recall of all 3G products and the confiscation and sequestration of 3G compliant products [816] .

With the present judgment, the Court rejected IPCom’s request for a preliminary injunction, holding that it was not proportionate and that it could provide an unjustified advantage to IPCom that could lead the company to negotiate licensing terms and conditions that would not be FRAND [817] .

B. Court’s reasoning

With respect to the request for a preliminary injunction, the Court applied Article L615-3 of the French Intellectual Property Code. This provision allows courts to order urgent measures to prevent an irreparable damage to be caused to the right-holder [818] . For this, it is required that patent infringement is likely and the damages potentially suffered cannot be compensated by monetary payments [819] .

The Court also took recourse to the EU Directive 2004/48, which provides that preliminary measures should be proportionate considering the specificity of a dispute on a case by case basis [820] .

The Court concluded that there was no irreparable harm to IPCom that could not be compensated by damages, if a preliminary injunction would be denied. [821] IPCom had claimed that the absence of an injunction would put existing licensees at a disadvantage and that a request for interim measures could not be considered as abusive, given the fact that the absence of a preliminary injunction would reduce the value of its patent portfolio [822] . The Court was not convinced that this would be the case. Moreover, the Court placed weight on the fact that IPCom did not practise the patents itself and, therefore, did not face a risk to lose market shares by competing products infringing IPCom’s rights [823] .

On the other hand, the Court found that an injunction, even of a temporary nature (until the patent expiration date, i.e. 15 February 2020), affecting almost all Lenovo and Motorola products, would heavily impact these companies. In addition, such an abrupt withdrawal of most of the products from the market would harm the reputation of the defendants and impair the distribution operations of Digital River [823] .

Lenovo and Motorola had argued that IPCom’s request was disproportionate [811] . They highlighted that the injunction request applied to most of their cellphones and tablets, what would lead to a serious financial harm [809] . In their view, IPCom’s behaviour was not FRAND, because IPCom did not wait for the end of the negotiations between the parties on the first offer to submit a second offer that was not negotiable [809] . And IPCom filed infringement procedures in the UK and France, instead of negotiating a FRAND license under the US proceedings [809] . Apart from that, Lenovo and Motorola claimed that the patent was not essential to a mandatory, but only to an optional portion of the standard [809] . They also added that the patent was close to expiration and IPCom did not exploit the patent itself [809] . Therefore, there was no harm that could not be compensated by financial damages [809] .

The injunction would impact Lenovo and Motorola market share, including on the new 5G market, and affect their reputation towards main telecom operators [813] .

C. Other issues

Translation of documents

Modelabs argued that IPCom had breached a French law dated 1539Ordonnance de Villers-Cotterêts by providing documents that were in their majority drafted in English instead of French. This behaviour violated Modelabs’ right to an equitable process [825] . The Court pointed out that, since Modelabs imports and commercialises electronic products in France, it had to understand English [809] . Additionally, IPCom had provided documents in French [809] . Therefore, the Court found that Modelabs’ right to an equitable process was not violated [809] .

Patent ownership / Transfer of patents

The defendants challenged IPCom’s ownership of the patent in suit [826] . They claimed that the patent had not been assigned to IPCom. Would the assignment from Robert Bosch to IPCom, nonetheless, have taken place, there had been a second assignment, since IPCom had merged with another company and as a result of the merger, a new company was created, IPCom GmbH & Co [809] .

The Court highlighted that neither Robert Bosch nor the inventors had made any claim under the patent [827] . Additionally, IPCom published the assignment and justified the transfer [828] . The merger came with a transfer of all IPCom assets to IPCom GmbH & Co [827] . The merger and the change of name were notified to the French Patent Office on 13 September 2019 and was published before the notification of the writ of summons to the defendants [811] .

[808] Court of Paris, judgement dated 20 January 2020, page 2.
[809] Ibidem
[810] Court of Paris, judgement dated 20 January 2020, page 3.
[811] Court of Paris, judgement dated 20 January 2020, page 13.
[812] Court of Paris, judgement dated 20 January 2020, page 8.
[813] Court of Paris, judgement dated 20 January 2020, page 14.
[814] Court of Paris, judgement dated 20 January 2020, page 4.
[815] Court of Paris, judgement dated 20 January 2020, page 5.
[816] Court of Paris, judgement dated 20 January 2020, pages 4-7.
[817] Court of Paris, judgement dated 20 January 2020, page 17.
[818] Court of Paris, judgement dated 20 January 2020, pages 10- 11.
[819] Court of Paris, judgement dated 20 January 2020, page 10.
[820] Court of Paris, judgement dated 20 January 2020, pages 11, 14-16.
[821] Court of Paris, judgement dated 20 January 2020, page17.
[822] Court of Paris, judgement dated 20 January 2020, page 15.
[823] Court of Paris, judgement dated 20 January 2020, page 16.
[824] Ordonnance de Villers-Cotterêts
[825] Court of Paris, judgement dated 20 January 2020, page 9.
[826] Court of Paris, judgement dated 20 January 2020, page 11.
[827] Court of Paris, judgement dated 20 January 2020, page 12.
[828] Court of Paris, judgement dated 20 January 2020, page 12-13.

Updated 26 January 2017

Canon v Sieg/Kmp Printtechnik/Part Depot

OLG Düsseldorf
29 April 2016 - Case No. I-15 U 47/15

Facts
The proceedings before the court concerned the subsequent appeal of Defendants in Case LG Düsseldorf, 11 June 2015 – Case No. 4a O 44/14 (decision rendered before Huawei) seeking to set aside the decision of the lower court.
Claimant, a Japanese company that produces and markets photocopiers, printers and cartridges in cooperation with undertaking “C”, is the proprietor of European patent 2 087 AAA B1 which has not been declared essential to a particular standard. Defendants “1”, “2” and “3” are involved in the supply and distribution, inter alia to Germany, of cartridges of brand “E”, being based on recycled models of and serving as substitutes for particular OEM-cartridges of Claimant. In 2011, Claimant and “C” made a commitment towards the EU Commission that their products would comply with EU-Directive 2009/125/EC. Part of this commitment is the obligation to secure interoperability of the products with non-OEM cartridges.
The admissible appeal of Defendants has been rejected by the court of second instance.
Court’s reasoning
Even though the commitment made toward the EU Commission does, contrary to the opinion of Claimant, not constitute merely a non-binding memorandum but rather a binding declaration it executes Article 15 (2) Directive 2009/125/EC and has the sole purpose of enhancing the environmental performance of the products at issue. Hence, it can be considered neither as a direct nor as an indirect FRAND declaration and the Huawei obligations do not apply in the present case. [829] In consequence, Claimant is not obliged to present a licensing offer corresponding to FRAND terms. [830]
Nor can Claimant’s seeking of a prohibitory injunction be considered as abusive pursuant to § 242 BGB since Claimant’s declaration could not establish a reliance worthy of protection to the effect that Defendant was entitled to make use of Claimant’s patent protected inventions. [831]
Moreover, the cumulative conditions established by the ECJ (inter alia in IMS Health) for granting a compulsory license on the basis of Article 102 TFEU absent a standard-setting context are not fulfilled. [832]

[829] Case No. I-15 U 47/15, para. 72 et seq.
[830] Case No. I-15 U 47/15, para. 74
[831] Case No. I-15 U 47/15, para. 48, 78 et seq.
[832] Case No. I-15 U 47/15, para. 88 et seq.

Updated 26 January 2017

Unwired Planet v Huawei, EWHC

English court decisions
2 October 2015 - Case No. HP-2014-000005

Dates: 2 October 2015, 19 November 2015, 23 November 2015, 7 December 2015, 16 December 2015, 28 January 2016, 29 January 2016, 12 February 2016, 22 March 2016, 29 April 2016, 27 May 2016

Facts
The overall dispute can be separated into five technical trials (A-E), three of which have been completed, each dealing with one patent and relating to technical issues such as validity, infringement and essentiality. Still uncompleted is the fifth trial, concerning the only non-SEP in the portfolio, and one trial relating to competition law and FRAND issues, scheduled to start on 20 October 2016 and to last for approximately thirteen weeks.
Claimant (Unwired Planet Int. and Unwired Planet LLC) is the proprietor of European patents EP 2 229 744 whose standard-essential character has been confirmed in Trial A; EP 2 119 287 and EP 2 485 514 who have been revoked in Trial B; and EP 1 230 818 whose standard-essential character has been confirmed in Trial C. All patents were originally granted to Ericsson and are part of a patent portfolio Claimant obtained from Ericsson, purportedly encompassing patents essential to various ICT standards. Defendants (in particular Huawei and Samsung) produce and market GSM- and LTE 4G-based devices.
In the decision of interest here, the court had to decide on the application of Defendant Samsung to transfer competition law as well as FRAND issues to the Competition Appeal Tribunal (CAT). The application was rejected because it appeared not to be feasible to decide these issues separately from the rest of the case. [833]
With regard to competition law the court has, so far, examined three competition law defences pursuant to Article 101 TFEU raised by Defendant Samsung against the claim for patent infringement. This claim is based on, inter alia, the Master Sale Agreements (MSA) concluded as of 10 January 2013 between Claimant and Ericsson. The MSA entitles Ericsson to a share in the patent royalties and contains the option to transfer a substantial number of additional patents to Claimant in the future. On 14 June 2013 and 6 March 2014 respectively, Claimant and one of its subsidiaries made FRAND commitments towards ETSI. Defendant’s first defence contends that the MSA generally failed to transfer the FRAND commitments made by Ericsson towards ETSI to Claimant, because (a) it does not require Claimant to give any FRAND undertaking, (b) even if there were such an obligation, it cannot be enforced by third parties and (c) the MSA does not prohibit Claimant from obtaining licensing terms more favorable than those Ericsson could obtain. The second defence alleges that Claimant and Ericsson could, as an effect of the patent portfolio’s division by the MSA, demand excessive royalties. Moreover, by means of its third defence, Defendant argues that particular clauses of the MSA have the object or potential effect of restricting competition under Article 101 TFEU because they define minimum royalties and exclude alternative royalty schemes.
Decision of the court of first instance
The court of first instance let the second defense go to trial because it held that the MSA is not a straightforward agreement for the sale of patents since Ericsson retains a share in the royalties to be earned and can transfer a substantial further body of patents if it chooses to do so. Moreover, the acquirer, as a non-practicing entity, does not compete in the downstream market in the way that Ericsson does. In these circumstances the court of first instance considered it was arguable that the MSA has as its object or would have as its effect the distortion or restriction of competition.
The court of first instance reached the same conclusion in relation to the third defence. It considered it arguable that the pertinent clauses would contribute to the creation of an anti-competitive incentive to charge higher royalties.
However, the court of first instance rejected all elements of the first defense. As for the first aspect, it recognised that the acquirers acknowledged (1) that the SEPs were subject to existing encumbrances, including FRAND commitments to ETSI; (2) that all encumbrances would continue after assignment; and (3) that within a reasonable time after closing they would provide declarations to ETSI including FRAND undertakings in accordance with the ETSI IPR Policy. Such FRAND undertakings were indeed provided. Turning to the second element, the court of first instance considered that it was unarguable because once a FRAND undertaking had been given any third party could require to license the patents on FRAND terms. As for the third element, the judge rejected as unarguable the contention that Ericsson’s own FRAND obligations should have been assigned to and become binding on Unwired Planet.
Defendant appealed against the findings regarding the second and third elements of the first defence.
Court’s reasoning
Having regard to the second element of the first defence the court, considering the fact that Claimant made commitments towards ETSI shortly after the conclusion of the MSA, found that the undertaking to grant licences on FRAND terms is equally binding for Claimant irrespective of the fact whether it is a member of ETSI and rejected Defendant’s submission that the obligations under the MSA cannot be enforced by third parties. [834]
Contrary to the findings of the court of first instance regarding the third element of the first defence, the court states that Article 101 TFEU may require an effective transfer of Ericsson’s FRAND obligation to Claimant to the effect that the latter cannot obtain more favorable terms from its licensees than Ericsson could itself have obtained. It therefore let this aspect go to full trial as well.

[833] HP-2014-000005, 29 April 2016, para. 30 et seq., 46
[834] HP-2014-000005, 27 May 2016, para. 38-40

Updated 30 July 2018

France Brevets v HTC

LG Düsseldorf
26 March 2015 - Case No. 4b O 140/13

A. Facts

The Claimant is a patent assertion entity established by the French State [835] . The Claimant was granted an exclusive licence by a company previously called Inside Technologies S.A. (SEP holder) for a European patent essential (Standard Essential Patent or SEP) for the implementation of the Standard LL V11.0.0, 2011-09 (LL standard) which was developed by the European Telecommunications Standards Institute (ETSI) [836] . The SEP holder had made an undertaking towards ETSI to make its SEP accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [837] . The LL standard enables applications of the so-called “Near field Communication” (NFC) technology to run on smartphones over the phone’s SIM-card [838] . NFC-applications can alternatively be implemented on smartphones also by a so-called “Smartcard”, or so-called “embedded secure elements” [839] .

The Defendant is the German subsidiary of an international manufacturer of smartphones that incorporate a so-called “NFC-controller” implementing the LL standard [840] The Defendant promotes the offering and sale of smartphones manufactured by its parent company in Germany [841] .

The Claimant brought an action for infringement of the German part of the SEP in question against the Defendant before the District Court (Landgericht) of Düsseldorf (Court), requesting for injunctive relief, information and rendering of accounts [842] . The Claimant also sought for a declaratory judgment on the Defendant’s liability for damages on the merits [842] .

Against these claims, the Defendant raised inter alia a defence based on antitrust considerations; basically, it argued that the Claimant’s request for injunctive relief constitutes an abuse of market power conferred to the Claimant by the SEP in suit in breach of Article 102 of the Treaty on the Functioning of the European Union (TFEU) (antitrust defence) [843] . The Defendant also requested the Court to stay its proceedings, until the Court of Justice of the European Union (CJEU) rendered its final decision in the matter Huawei v ZTE which concerned the availability of injunctive relief to SEP holders [844] .

The Court dismissed the Defendant’s request to order a stay of the proceedings [845] and granted the Claimant’s motions to the full extent. In its analysis regarding to the antitrust defence, the Court took into account the opinion delivered by Advocate General Wathelet in the matter Huawei v ZTE (Wathelet opinion) [846] , before the final decision of the CJEU was delivered on 16th July 2015 [847] .

B. Court’s reasoning

As a starting point, the Court made clear that an entity granted an exclusive licence for a SEP is entitled to all rights arising from the patent, including claims for injunctive relief as well as claims for damages, information and rendering of accounts [848] .

Having said that, the Court pointed out that the protection of intellectual property rights (IPRs) is a high priority; IPRs are expressly protected under the Charter of Fundamental Rights of the European Union (Article 17 Sec. 2), which also guarantees right holders access to justice (Article 47). Limitations of these rights can be justified only by antirust rules for the protection of general public interest, particularly Article 102 TFEU [849] .

Following the Wathelet opinion, the Court found that a dominant position of the Claimant, which is re-quired for the implementation of Article 102 TFEU, cannot be established solely on grounds of its legal position with respect to the SEP in suit [850] . In the Court’s view, not every SEP confers market power relevant from an antitrust perspective to its holder [850] . Moreover, it has to be examined on a case-by-case basis whether the technical teachings protected by the SEP actually establish such market power [850] .

Further, the Court held that ownership of a SEP does not give rise to the presumption that market power exists [851] . Standards, particularly in the telecommunications sector, refer also to technical functionalities which are of secondary importance to the relevant market; with respect to such functionalities, there are no grounds for a presumption that the SEP holder has market power [851] . Insofar, the party asserting the existence of market power must plead and establish the relevant facts in trial [851] .

With respect to IPRs, the relevant market from an antitrust perspective is not the licensing market, but the downstream product market [852] . Looking at SEPs, relevant is the market in which products implement-ing the respective standard are offered [853] . Accordingly, the Court found that the relevant market in the present case is the smartphone market, because the NFC technology is almost solely used in smartphones [854] .

Since the NFC technology does not apply to basic functionalities of smartphones and is, therefore, no prerequisite for market entry, market power could only be established, if smartphones that do not use the teachings of a SEP could not compete in the market with products implementing this patent [855] .

In the eyes of the Court, this was not the case. The SEP in suit (and the LL Standard) enable NFC-applications to run over smartphones’ SIM-card. However, NFC-applications can alternatively also run over so-called “Smartcards” or “embedded secure elements”. The Defendant could not establish that NFC-applications running over the SEP in suit have reached market penetration to the extent that market power could be achieved [856] . On the contrary, smartphone byers do not appear to base their purchase decision on which of the three available technical solutions for enabling NFC-applications the smartphone uses [856] .

[835] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 18
[836] Ibid, paras. 19, 20, 24 and 26
[837] Ibid, para. 22
[838] Ibid, para. 212
[839] Ibid, para. 213
[840] Ibid, para. 22.
[841] Ibid, paras. 151 et seq
[842] Ibid, para. 3
[843] Ibid, para. 46
[844] Ibid, para. 38
[845] Ibid, para. 219
[846] Opinion of Advocate General Wathelet delivered on 20 November 2014, ECLI:EU:C:2014:2391
[847] France Brevets v HTC, Landgericht Düsseldorf, judgement dated 26 March 2015, Case-No. 4b O 140/13, para. 197 et seqq
[848] Ibid, para. 61
[849] Ibid, para. 197
[850] Ibid, para. 199
[851] Ibid, para. 201
[852] Ibid, para. 204
[853] Ibid, para. 205
[854] Ibid, para. 206
[855] Ibid, para. 208
[856] Ibid, para. 217

Updated 6 June 2017

Philips v Archos

LG Mannheim
17 November 2016 - Case No. 7 O 19/16

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

Facts
The claimant is an international electronics company, which owns a range of patents relating to mobile phone technology. In particular, the claimant owns the patent EP 1.440.525, which is allegedly essential for the UMTS and LTE standards. The defendant is a German subsidiary of a French multinational electronics company that offers Android tablets and smartphones which are compliant UMTS and LTE standards. On 5 July 2014, the claimant informed the defendant in writing that by marketing and selling mobile phones, the defendant is infringing standard essential patents owned by the claimant. On 15/16 September 2014, the claimant handed over written documents about its licensing program to the defendant. In a discussion on 25 November 2014, the defendant offered to transfer patents that it deemed essential to the standards in question. In a letter dated 28 July 2015, the claimant offered to grant a license for the relevant patent. This letter included a list of all allegedly infringing products and patents in question, and relevant technical details. The claimant sent additional technical information via email on 25 September 2015. On 12 January 2016, the defendant sent a written offer to enter into a license agreement for the claimant’s worldwide patent portfolio. The parties did not reach an agreement. The claimant commenced infringement proceedings in the District Court of Mannheim on 16 October 2015 (received by the court on 19 October 2015). The defendant subsequently made a deposit at the Bavarian Justice Exchequer at Bamberg in April 2016. The deposit was supposed to cover all royalties owed for the worldwide sale of LTE/UMTS devices by the defendant between 2012 and 30 June 2016. The court dismissed the actions for injunction, recall and destruction of products because the claimant had not complied with its obligations under EU competition law. However, the court ordered the defendant to render accounts and declared that the defendant was liable for compensation.
Court’s reasoning
1. Market Power and Notice of Infringement
  TThe court did not comment on the existence of a dominant market position. It focused on the notice of infringement and the license offer. The court held that the notice of infringement should enable the alleged infringer to examine and assess the patent situation. [857] It is insufficient to indicate that the alleged infringer is marketing products covered by a standard and is therefore infringing a patent. Rather, the SEP proprietor needs to specify the patent number and the standard for which it has been declared essential. The SEP proprietor also needs to describe the technical functionality of the standard which is at issue. The level of detail of these descriptions depends on the particular situation. [857] The SEP proprietor needs to take into consideration the level of the alleged infringer’s technological knowledge, or its ability to gain the required knowledge through professional advice. In the eyes of the court, the customary claim charts (which show the relevant patent claims and the corresponding passages of the standard) will typically be sufficient. However, the description does not need to be as thorough as a statement of claim in patent litigation.
2. The SEP owner’s licensing offer
  The court stated that the SEP proprietor’s written license offer needs to contain all relevant aspects of the contract, to enable the alleged infringer to accept the offer. [858] If the alleged infringer argues that the conditions of this offer are not FRAND – and, according to the court, alleged infringers typically do so – it is not the role of the infringement court to examine the conditions of the offer and decide whether they are FRAND or not. The Court acknowledged that the Higher Regional Court of Karlsruhe had rejected this view in the decision 6 U 55/16 of 31 May 2016. [859] The Mannheim District Court, however, reiterated its view that a reduced standard of review of the offered conditions is sufficient, referring to the final opinion given by the Advocate General in the ZTE/Huawei ruling. [858] It was, the court argued, the CJEU’s intention to keep the infringement proceedings free of the determination as to what precise conditions would exactly be FRAND in each particular situation. [858] Only an offer that is clearly abusive, i.e. evidently non-FRAND, would not meet the CJEU criteria at this point. [858]
  Of course, the SEP proprietor’s mere assertion that the offer is FRAND would be insufficient. [858] Instead, the Court requires the SEP proprietor to be transparent about the calculation. That means that it needs to specify how the terms of the license offer are calculated. [860] It needs to make clear the basis of the SEP proprietor’s conclusion that the offer is FRAND. Merely stating the royalties owed per unit (in this case: USD 1,- per unit without further explanation) [861] is also insufficient. Rather, the SEP proprietor needs to find a proper way of substantiating its view as to what royalties are owed. This could be a standard license agreement entered into with third parties, or other references such as fees for a pool license that contains SEPs of the respective standard.
  The SEP proprietor needs to make these explanations before it commences infringement proceedings. [862] Only then, the alleged infringer is able to assess the situation unburdened by the treat of an ongoing court case. The Court was aware that the Higher Regional Court of Düsseldorf had recently (Case No. I – 15 U 36/16, 9 May 2016) expressed its view that this understanding might be overly formal. However, the Mannheim District Court upheld its opinion that only a thorough explanation by the SEP proprietor enabled the alleged infringer an informed decision as to whether the license offer is FRAND. [862]
  The Court held that, in theory, the claimant could be exempt from this transparency obligation if the defendant had been unwilling to enter into a license agreement. [863] However, in the case at issue the defendant had demonstrated its willingness to enter into a license agreement. The Court took into account four factors:
  1. the defendant’s had repeatedly requested the claimant to explain the basis of the license offer calculation, [863]
  2. the defendant had offered to transfer some of its own patents in exchange, [863]
  3. the defendant had made an offer and had commissioned an expert opinion that elaborated why the respective conditions were FRAND, [863]
  4. the defendant had deposited a substantial amount. [864]
3. Standard Implementer’s Reaction
  The Court repeated its view expressed in the decision 2 O 106/14 of 27 November 2015. [865] Accordingly, the alleged infringer needs to respond to the SEP proprietor’s offer, even if the infringer considers that the offer does not meet the FRAND criteria. The only possible exception is an offer that, by means of summary examination, is clearly not FRAND and therefore constitutes an abuse of market power. A potential counter offer needs to be made in due course, which means as soon as possible, taking into account the recognized commercial practices in the field and good faith.

[857] Case No. 7 O 19/16, para 77
[858] Case No. 7 O 19/16, para 78
[859] Case No. 7 O 19/16, para 76
[860] Case No. 7 O 19/16, para 79
[861] Case No. 7 O 19/16, para 84
[862] Case No. 7 O 19/16, para 86
[863] Case No. 7 O 19/16, para 87
[864] Case No. 7 O 19/16, para 88
[865] Case No. 7 O 19/16, para 80

Updated 26 January 2017

VRINGO Infrastructure v ZTE, [2015] EWHC 214 (Pat)

English court decisions
30 January 2015 - Case No. HC 2012 000076, HC 2012 000022

So far, this litigation is still in its technical phase and has not produced substantial results with regard to the issues of interest here. This may, however, change in the future.

Updated 6 June 2017

Archos v. Philips, Rechtbank Den Haag

Dutch court decisions
8 February 2017 - Case No. C/09/505587 / HA ZA 16-206 (ECLI:NL:RBDHA:2017:1025)

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

Updated 26 July 2021

Nokia v Daimler

OLG Karlsruhe
12 February 2021 - Case No. 6 U 130/20

A. Facts

The claimant is part of the Nokia group with headquarters in Finland (Nokia). Nokia is a major provider of telecommunication services and holds a significant portfolio of patents declared as (potentially) essential to the practice of various wireless telecommunication standards (standard essential patents, or SEPs) developed by the European Telecommunications Standards Institute (ETSI).

The defendant, Daimler, is a German car manufacturer with a global presence. Daimler produces and sells cars in Germany with connectivity features which implement standards developed by ETSI.

Nokia declared the patent involved in the present case as essential for the 4G/LTE Standard towards ETSI. ETSI requires patent holders to commit to make patents that are or might become essential to the practice of a standard accessible to users on fair, reasonable and non-discriminatory (FRAND) terms.

In June 2016, Nokia informed Daimler about its SEP portfolio. In November 2016, Nokia made a first licensing offer to Daimler. In December 2016, Daimler replied that it would be more efficient to license suppliers manufacturing the so-called 'Telematics Control Units' (TCUs), which are built into Daimler's cars. From January 2017 until February 2019, Daimler did not engage in further negotiations with Nokia.

In February 2019, Nokia made a second licensing offer to Daimler which was also rejected.

In March 2019, Nokia filed infringement actions against Daimler before the District Court of Mannheim (District Court). Further cases were filed before the District Courts of Munich and Duesseldorf.

On 9 May 2019, shortly after the infringement proceedings were initiated, Daimler made a counteroffer to Nokia (first counteroffer) which was rejected. On 10 June 2020, Daimler made a further counteroffer that did not include specific royalty rates (second counteroffer). Nokia would be granted the right to unilaterally determine the royalties payable under the licence, whereas Daimler would have the option to contest Nokia's royalty determination before court. An agreement on these terms was not signed.

On 18 August 2020, the District Court granted an injunction against Daimler and further recognised Daimler's liability to pay damages on the merits. [866] The Court also ordered Daimler to render accounts and provide information necessary for the calculation of damages to Nokia.

Daimler appealed the decision of the District Court. It also filed a request for a stay of the enforcement of the injunction granted until the conclusion of the appeal proceedings.

With the present judgment [867] (cited by http://lrbw.juris.de), the Higher District Court of Karlsruhe (Appeal Court) found in favour of Daimler, ordering a stay of the enforcement of the injunction.

B. Court's reasoning

The Appeal Court placed particular focus on the reasoning, on which the District Court relied upon for dismissing the so-called 'FRAND-defence' raised by Daimler against Nokia's claim for injunctive relief. Daimler had argued that by filing infringement actions, Nokia had abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU and should, therefore, be denied an injunction. The District Court held that Daimler could not invoke this argument, since it had failed to sufficiently express willingness to obtain a FRAND licence from Nokia in accordance with the requirements established by the European Court of Justice (CJEU) in the matter Huawei v ZTE [868] (Huawei decision, or framework).

Willingness

The Appeal Court did not contest the standard applied by the District Court for the assessment of willingness: the implementer is expected to 'clearly' and 'unambiguously' declare that it is willing to sign a licence with the SEP holder 'on whatever terms are in fact FRAND' and, subsequently, engage in licensing negotiations in a 'target-oriented' manner. [869] The Appeal Court also agreed with the view expressed by the District Court that the declaration of willingness cannot be made subject to conditions. [870] Furthermore, it reasoned that willingness is not a 'one-off event', meaning that the implementer is required to constantly engage in negotiations in a 'serious and target-oriented' manner and to avoid 'delaying tactics'. [870]

Implementer's counteroffer

The Appeal Court also confirmed that the implementer's counteroffer is a factor that can be considered for the assessment of willingness [871] . On the one hand, a FRAND-compliant counteroffer could, in principle, 'heal' the initial 'unwillingness' of the implementer. [872] On the other hand, a counteroffer that is not FRAND can reinforce the finding of missing willingness. [872] Having said that, the Appeal Court held that the District Court erred as far as it assumed that Daimler's second counteroffer was not sufficient to 'heal' the unwilling behaviour displayed by Daimler up to the point in time, in which this counteroffer was made. [873] The Appeal Court pointed out that – contrary to the District Court's view – a counteroffer which does not specify concrete licensing fees but instead grants the patent holder the right to unilaterally determine the royalties and – at the same time – allows the implementer to challenge such determination before court in subsequent proceedings (Sec. 315 of the German Civil Code), should regularly be considered as a sufficient declaration of willingness to sign a licence 'on whatever terms are in fact FRAND'. [874] According to the Appeal Court, the fact that by such counteroffer the implementer does not back down from the own perception of how FRAND terms should look like and will, therefore, most likely contest the royalties unilaterally determined by the SEP holder is, as a rule, not harmful: the SEP holder will in any case receive either the royalties it determined or the royalties deemed to be reasonable by the court which will be called upon by the implementer to examine the royalty determination undertaken by the patent holder. [875]

In the eyes of the Appeal Court, the fact that in the above scenario the (final) determination of FRAND royalties is postponed to subsequent proceedings following the patent infringement trial does not per se suffice to question the willingness of the implementer. [876] The Appeal Court rather highlighted that it would regularly serve the interests of the SEP holder to 'unburden' the infringement trial from the FRAND determination, which would lead to a quicker judgment on the infringement issues. [876]

Furthermore, the Appeal Court disagreed with the view previously taken by the District Court, according to which a counteroffer without specific royalty calculation could be (mis-)used by implementers as a means for delaying the signing of an agreement until after the expiration of the patent in suit, in order to secure a more favourable position in negotiations absent the threat of an injunction. [877] The Appeal Court pointed out that, if a licence stipulating a unilateral royalty determination right in favour of the SEP holder is concluded, the latter will receive royalties for the use of its patents; in the court proceedings following the infringement trial only the actual amount of the royalties payable will be determined. [877]

Notwithstanding the above, the Appeal Court made, however, clear that a counteroffer containing no specific royalties can, nevertheless, be an indication of unwillingness in individual cases, especially when it is belated. [878] This could be true, when the counteroffer is made only after infringement proceedings have been initiated by the patent holder. Although it is, in principle, thinkable to remedy flaws during pending infringement proceedings, a counteroffer made after the trial has begun would be unacceptable, if it is part of delaying tactics on the side of the implementer. [879] The Appeal Court found that this approach is in line with the Huawei judgment. [880]

In this context, the Appeal Court pointed out that a counteroffer without specific royalty calculation, which could be sufficient for establishing willingness, does not necessarily also suffice for complying with the further going obligation of the implementer under the Huawei framework to make an own offer on FRAND terms to the SEP holder, if it chooses to reject the licensing offer of the latter. [881] In the present case, the Appeal Court did not take a closer look at this question, since the District Court had not examined whether Daimler had been obliged to make a FRAND counteroffer after rejecting Nokia's licensing offers. [881]

[866] Nokia v Daimler, District Court (Landgericht) of Mannheim, judgment dated 18 August 2020, Case-No. 2 O 34/19.
[867] Nokia v Daimler, Higher District Court (Oberlandesgericht) of Karlsruhe, judgment dated 12 February 2021, Case-No.6 U 130/20.
[868] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
[869] Nokia v Daimler, Higher District Court of Karlsruhe (footnote No. 2), para.43.
[870] Ibid, para. 43.
[871] Ibid, paras. 45 et seq.
[872] Ibid, paras. 46.
[873] Ibid, para. 47.
[874] Ibid, para. 51.
[875] Ibid, para. 52.
[876] Ibid, para. 53.
[877] Ibid, para. 54.
[878] Ibid, para. 55.
[879] Ibid, para. 56.
[880] Ibid, para. 57.
[881] Ibid, para. 61.

Updated 3 December 2018

IP Bridge v HTC

LG Mannheim
28 September 2018 - Case No. 7 O 165/16

A. Facts

The Claimant, IP Bridge, is a non-practising entity holding a European patent (German part) which was declared essential to the wireless telecommunications standard LTE (Standard Essential Patent or SEP) developed by the European Telecommunications Standards Institute (ETSI) [882] . The previous holder of the SEP in question had made an undertaking towards ETSI according to Article 6.1 of ETSI IPR Policy to make the patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions [883] .

The Defendant is a German subsidiary of HTC, a company which manufactures and sells electronic devices worldwide, including mobile phones complying with the LTE standard [884] . The Defendant filed an action for invalidity against the Claimant’s SEP in Germany [884] .

In December 2014, the Claimant contacted the Defendant’s parent company (parent company) suggesting that the parties entered into negotiations regarding a licence for Claimant’s patent portfolio which also included the aforementioned SEP [884] . Subsequently, several licensing offers and counter-offers were made by the Claimant and the parent company respectively [884] . On 29 February 2016, the Claimant sent a letter to the parent company explaining how the LTE standard made use of the technology covered by its SEP inter alia under reference to an attached claims chart [885] . In response, the parent company confirmed that it is willing to obtain a licence, among others, by letter dated 7 September 2016 [886] . However, no licensing agreement was concluded.

On 27 September 2016, the Claimant brought an infringement action against the Defendant before the District Court of Mannheim (Court) requesting for a declaratory judgment confirming Defendant’s liability for damages arising from the use of its SEP as well as for information and rendering of accounts [887] .

On 16 February 2018, during the course of the pending proceedings against the Defendant, the Claimant made a further licensing offer to the parent company [888] . On 11 April 2018, after the parent company had signed a Non-Disclosure Agreement, the Claimant presented existing licensing agreements with third parties concerning its relevant patent portfolio (comparable agreements) to the parent company and requested the latter to respond to its last licensing offer of 16 February 2018 within one week (that is until 18 April 2018) [888] . This deadline was extended for almost three weeks until 7 May 2018 [888] .

On 15 May 2018, the Claimant extended its claims in the ongoing proceedings; in addition to its already pending claims, it sought for injunctive relief and also requested the recall and the destruction of products infringing its SEP (claims for injunction) [888] .

With the present judgment the Court ruled that the Defendant is liable for damages arising from the infringement of the SEP in suit [889] . The Court also ordered the Defendant to render accounts and to provide relevant information to the Claimant [889] . On the other hand, the Court dismissed the claim for injunctive relief and the recall and destruction of infringing products as being unenforceable for the time being [890] .

B. Court’s reasoning

The Court held that the products sold by the Defendant in Germany infringe Claimant’s SEP [891] . Thus, the Defendant is obliged to compensate the damages suffered by the Claimant and the previous holder of the patent in suit [889] . Since the Claimant has no knowledge of the details required for the quantification of the damages suffered, the Defendant is obliged to provide information on relevant uses (starting from the publication of the patent grant) and render accounts for such uses (starting from one month after the publication of the patent grant) [889] .

In the Court’s view, the Defendant cannot raise a defence based on a so-called “patent ambush” against these claims [892] . A “patent ambush” requires that the patent holder deliberately – in terms of a willful fraudulent misconduct – misled the participants in the standardisation process and intentionally prevented the adoption of an alternative technology into the standard [893] . Insofar, it needs to be established (by the defendant) that the disclosure of the patent during the standardisation process would have led to an alternative structure of the standard, which would have avoided making use of the teaching of the patent in suit; the mere theoretical possibility of an alternative technical solution does not suffice for supporting the allegation of a “patent ambush” [893] . The Court held that the Defendant failed to establish such fact [892] . Accordingly, the Court left the question regarding the legal consequences of a “patent ambush” open (obligation to licence royalty-free or just an obligation to offer FRAND licences?) [892] .

Furthermore, the Court stressed out that the FRAND undertaking given by the previous holder of the SEP in suit has no impact on both the scope and the enforceability of the above claims [894] .

In the Court’s eyes, the Claimant is bound to the FRAND undertaking made by the previous holder of the SEP in suit towards ETSI [895] . The wording of Article 6.1. ETSI IPR Policy establishes a respective assumption [895] . In any case, the assignee of a SEP abuses its market power, if it is aware of the FRAND-undertaking of its predecessor, but, nevertheless, refuses to fulfil the obligations arising from it [885] . The assignee of an SEP cannot draw benefits from the inclusion of its patent into a standard, without being bound to the FRAND commitment of its predecessor, since the latter enabled the inclusion of the SEP in the standard in the first place [885] . Indeed, antitrust law and particularly Article 101 of the Treaty for the Functioning of the EU (TFEU) obliges standard development organisations to make the inclusion of patented technology into a standard subject to a FRAND commitment of the patent holder, in order to secure that essential technology will be accessible to users [896] .

Having said that, the Court made clear that SEP holder’s claims for information and rendering of accounts are not limited by the FRAND undertaking [894] . Even if one would assume that such undertaking limits the SEP holder’s claims for damages to the amount of the FRAND royalty (which the Court left undecided), the patent holder would, nevertheless, be entitled, in principle, to information regarding the use of its SEP [894] .

In addition, the Court explained that a FRAND undertaking has also no influence on the enforceability of the claims for damages (on the merits), information and rendering of accounts asserted by the Claimant [894] . In particular, these claims are not subject to the conduct requirements set forth by the Court of Justice of the European Union (CJEU) in the matter Huawei v ZTEHuawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13. (Huawei requirements or framework) with respect to dominant undertakings in terms of Article 102 TFEU [898] .

The opposite is, on the other hand, the case with respect to the claims for injunction asserted by the Claimant. These claims are not enforceable for the time being, since the Claimant failed to fully comply with the Huawei requirements [899] .

Regarding to the SEP in suit, the Court ruled that the Claimant has a dominant market position in terms of Article 102 TFEU: The patent is essential to the LTE standard, which, in turn, cannot be substituted by an alternative standard (from the users’ point of view) [900] .

Looking at the negotiations between the parties involved, the Court did not see any flaws in the parties’ conduct with respect to the first two steps of the framework; the Claimant had effectively notified the Defendant about the infringing use of its SEP and the Defendant (in fact, its parent company) had effectively declared its willingness to obtain a licence covering also the SEP in suit [885] . In this context, the Court pointed out that the SEP holder’s obligation to notify the user of the infringing use of its SEP is also met, when the respective notification is addressed to the parent company of the (alleged) infringer (as is was the case here, especially with the Claimant’s letter to the parent company dated 29 February 2016) [885] .

However, the Court held that the Claimant failed to fulfil its consequent obligation under the Huawei framework, namely to make a FRAND licensing offer to the Defendant (respectively its parent company) [901] .

The Court considered only two offers made by the Claimant to the Defendant’s parent company prior to the extension of its claims in the pending proceedings on 15 May 2018 (since the other offers made were either indisputably not FRAND or were not produced by the Claimant in trial) [886] .

An offer made in February 2016 was found not to be FRAND in terms of content, since it contained a clause, according to which the licensee was obliged to pay the full amount of the royalties agreed, even if only one patent of the licensed portfolio was valid and used by the Defendant [886] .

The Court reached the same conclusion also with respect to the further offer made by the Claimant on 11 April 2018 (that is short before the Claimant extended its claims in the proceedings, adding the claims for injunction) [902] . The Court held that this offer did not comply with the Huawei requirements, since the Defendant was not given sufficient time to assess the offer and eventually make a counter-offer to the Claimant, before the latter asserted the claims for injunction against him in the proceedings [886] .

In the Court’s eyes, a licensing offer complying with the Huawei requirements is only given, when the SEP holder provides the SEP user with all information required from assessing the FRAND conformity of the offer [903] . Only then, the SEP user’s consequent obligation under the Huawei framework to make a FRAND counter-offer to the SEP holder is triggered [903] . In particular, the SEP holder must make the requested royalty amount transparent with reference to a standard licensing programme implemented in the market or to rates actually paid by third parties to a patent pool, covering also patents relevant to the standard [903] . For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed [903] .

Based on the above considerations, the Court held that the period of 22 workdays between the presentation of the comparable agreements to the parent company (11 April 2018) and the assertion of the injunction claims in the proceedings by the Defendant (15 May 2018) was too short for a competent assessment of the Claimant’s licensing offer [904] . The fact that the Defendant (and/or its parent company) would have had sufficient time to react to the Claimant’s offer until the end of the oral hearings in mid-July 2018 was considered irrelevant by the Court in this respect [904] . The Huawei framework aims at preventing the situation, in which the SEP user agrees to unfavourable licensing conditions under the pressure of pending infringement proceedings (defined by the Court as “patent hold-up”) [904] . In case that the SEP holder has not fulfilled the Huawei requirements prior to the initiation of proceedings (as it was the case here), it has to make sure that the parties can again negotiated without the pressure of an ongoing trial, for instance by asking the court to stay its proceedings pursuant to Article 251 of the German Court of Civil Procedure [905] . Otherwise, the initiation of the infringement proceedings shall be considered as abusive in terms of antitrust law [905] . In the present case, the Claimant chose to not ask for a stay in the proceedings, ignoring the Court’s respective indication [905] .

C. Other issues

The Court explained that the registration in the patent register allows the registered patent holder to assert the patent rights in court [906] . On the other hand, it does not define the ownership of the patent in material legal terms [907] . Nevertheless, the patent registration establishes an assumption of ownership which must be rebutted by the defendant in infringement proceedings based on concrete indications [908] .

Besides that, the Court pointed out that a stay in the infringement proceedings (pursuant to Article 148 of the German Code of Civil Procedure) until the end of parallel invalidation proceedings concerning the patent(s) in suit can be considered only under special circumstances [909] . As a rule, it must be expected with a sufficient degree of probability that the patent(s) in suit will be invalidated [909] . The Defendant failed convince the Court that this was the case with the SEP in suit [909] .

[882] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, page 2 and 23.
[883] Ibid, page 23 et seq.
[884] Ibid, page 5.
[885] Ibid, page 25.
[886] Ibid, page 26.
[887] Ibid, pages 5 et seq.
[888] Ibid, page 6.
[889] Ibid, page 19.
[890] Ibid,page 23.
[891] Ibid, pages 16 et seqq.
[892] Ibid, page 20.
[893] Ibid, page 21.
[894] Ibid, page 22.
[895] Ibid, page 24.
[896] Ibid, pages 24 et seq.
[897] Huawei v ZTE, Court of Justice of the European Union, judgement dated 16 July 2015, Case No. C-130/13.
[898] District Court of Mannheim, judgment dated 28 September 2018, Case-No. 7 O 165/16, pages 22.
[899] Ibid,pages 23 and 25.
[900] Ibid, page 23.
[901] Ibid, pages 23 and 25 et seq.
[902] Ibid, pages 26 et seqq.
[903] Ibid, page 27.
[904] Ibid, page 28.
[905] Ibid, page 29.
[906] Ibid, page 10.
[907] Ibid, pages 10 et seq.
[908] Ibid, page 11.
[909] Ibid, page 30.

Updated 26 January 2017

Vringo v ZTE, Bucharest Court of Appeal 4th Civil Divison

Romanian court decisions
28 October 2015 - Case No. 29437/3/2015

Facts
The litigation before the Bucharest court of appeal concerns an appeal against decision no. 947/31, August 2015, of the Bucharest Tribunal, 5^th civil division, dismissing Defendant’s motion to revoke the interim measures ordered by the Bucharest Tribunal, 4^th civil division, in its previous decision no. 801/30, June 2014, and to replace them by Defendant’s obligation to deposit a bond of EUR 350.000 to secure damages incurred by Claimant.
Claimant (Vringo Infrastructure Inc.) is the proprietor of patent EP 1808029, originally granted to Nokia Corporation and allegedly covering parts of the LTE 4G standard. Defendants (inter alia ZTE) produce and market LTE 4G-based devices.
As a member of ETSI, Claimant is considered to be subject to an obligation to grant FRAND licences for its SEPs. After informing Defendant, on 25 September 2012, about its SEP portfolio and inviting it to indicate its interest in obtaining a global license, Claimant submitted, on 28 March 2013, a licensing offer (inter alia) for the patent-in-suit. Defendant did not respond to Claimant’s communications.
Court’s reasoning
Notwithstanding the retroactive effect of ECJ decisions, the court refused to reexamine the challenged decision with regard to whether Claimant complied with the requirements defined in Huawei. According to the court, the Huawei decision places the Member States under no obligation to review final court decisions that qualify as res judicata.
However, as a secondary consideration, the court confirmed that the challenged decision of the court of first instance is in compliance with Huawei. Furthermore, Claimant’s argument that it would contravene recognized commercial practice in the field to grant licences limited to Romania, instead of global licences, was considered plausible.

Updated 26 January 2017

Saint Lawrence v Vodafone

OLG Düsseldorf
9 May 2016 - Case No. I-15 U 36/16

Facts
The proceedings concerned the subsequent application of Defendant in Case No. 4a O 73/14 seeking to suspend the execution of the district court’s decision until the appellate court has decided on the merits of an appeal brought by Defendant. As to the facts of the case, it can be referred to the summary above.
Due to the specific nature of the proceedings, the standard of review was limited to a summary examination of the decision rendered by the court of first instance. The court of appeal can suspend execution only if it comes to the conclusion that the challenged decision will probably not be upheld in second instance because it appears manifestly erroneous.
Court’s reasoning
1. Notice of infringement and declaration of willingness to license
  Firstly, the court of appeal focused on the Huawei requirement to submit an infringement notification prior to the initiation of proceedings. Although the court voiced some doubts over whether a distinction between transitional and non-transitional cases is permitted and whether, in transitional cases, reliance of a SEP proprietor on the Orange Book standard of conduct is worthy of protection, it did not consider the result reached by the lower court as manifestly erroneous. Since the SEP proprietor has the option to withdraw its action, to perform its Huawei obligations and to re-file the claim afterwards, it seems overly formalistic to deny the option to perform the Huawei obligations within the ongoing trial. Among a number of further reasons [910] for its position the court stressed that the ECJ intended the Huawei framework to be fact-sensitive. [911]
  Secondly, the court confirmed the lower court’s view that Defendant did not comply with its Huawei obligation to express its willingness to conclude a licensing agreement because it reacted belatedly (more than five months after the infringement notification) and in an evasive manner. The fact that proceedings have been initiated by Claimant does not alter the Huawei requirements and Defendant will particularly not be granted more time to comply with its respective obligations. [912]
2. The SEP owner’s licensing offer / The standard implementer’s reaction
  The court left it undecided whether the lower court erred in focusing on a licensing offer which Claimant presented solely to the Intervener but not to Defendant. According to the court the conduct of the parties required by Huawei constitutes a mechanism of alternating, consecutive steps in which no subsequent conduct requirement is triggered unless the other party performed the previous “step”. In consequence, Claimant was, in the present case, not obliged to submit a FRAND licensing offer at all since Defendant had failed to signal willingness to license. [913]
  The lower court’s finding that Claimant’s licensing offer was FRAND while the Intervener’s counter-offer failed to meet this threshold was accepted. Hence, the court considered it as irrelevant under the present circumstances—and as a completely open question in general—whether a SEP proprietor is obliged, before bringing an action for prohibitory injunction against the supplier of a standard-implementing device, to (cumulatively) submit a FRAND licensing offer not only to the supplier but also to the producer of said device. [914]
Other important issues
The remarks of the lower court rejecting, in the present case, a patent ambush-argument were not deemed manifestly erroneous, mainly because the lower court had reasonably argued that such an abusive practice would only result in the SEP proprietor’s obligation to grant licenses on FRAND terms. [915]
Licensing negotiations (allegedly) undertaken by Defendant after the decision of the lower court provided no reason to suspense execution since it was not evident to the court that Defendant had thereby fulfilled its Huawei obligations. [916]

[910] For details, cf. OLG Düsseldorf, 9 May 2016 - Case No. I-15 U 36/16, para. 2, b, aa
[911] Case No. I-15 U 36/16, para. 2, b, aa
[912] Case No. I-15 U 36/16, para. 2, b, bb
[913] Case No. I-15 U 36/16, para. 2, b, cc
[914] Case No. I-15 U 36/16, para. 2, b, ff
[915] Case No. I-15 U 36/16, para. 2, b, ee
[916] Case No. I-15 U 36/16, para. 2, b, dd

Updated 3 December 2018

District Court, LG Düsseldorf

LG Düsseldorf
11 July 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) [917] . 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 [918] .

The Defendant offers communication services in Germany to retail and wholesale clients, including DSL connections using the standards ADSL2+ and VDSL2 [919] .

The Intervener supplies the Defendant with equipment (especially DSL transceivers and DSL Boards), allowing network services based on the above standards [919] .

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) [920] . 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 [921] . 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 [922] . Taking the ongoing liability proceedings in Germany into account, the Dublin High Court stayed its proceedings [922] .

In September 2017, the Claimant brought a second action against the Defendant before the District Court of Düsseldorf, requesting for injunctive relief (injunction proceedings) [923] . In February 2018, the Claimant made another licensing offer to the Defendant in the pending injunction proceedings [921] .

With the present judgment, the Court dismissed Claimant’s action in the injunction proceedings [924] .

B. Court’s reasoning

Although the Court held that the services offered by the Defendant infringe the SEP in suit [925] , it found that the Claimant cannot enforce its patent rights for the time being [926] , 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) [924] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [928] .

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 [929] . Each SEP outlines an own relevant (licensing) market, unless – from the SEP users’ perspective – equivalent alternative technologies for the same technical problem exist [930] . 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 [931] , it defined the relevant market as the market for products and services allowing for internet connections through DSL technology [932] .

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 [933] . 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 [933] . 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 [933] .

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 [933] . 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) [933] . 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 [933] .

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 [934] .

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 [935] . 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 [936] .

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 [937] .

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 [938] . 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 [938] .

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 [939] . 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 [939] . 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 [939] .

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) [940] . 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) [940] . 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 [940] .

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 [941] .

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 [942] .

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 [943] . Given the circumstances of the specific case, even an implicit behaviour can suffice [943] .

In terms of timeliness, the Court held that a strict deadline, within which the SEP user ought to make its declaration, cannot be set [944] . The respective time frame must be determined on a case-by-case basis under consideration of the circumstances of each case [944] . 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 [944] . 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 [944] .

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 [945] . 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 [946] .

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 [947] .

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 [948] . 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 [921] .

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 [949] . 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 [950] .

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 [951] . 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 [951] . 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 [951] . In this context, the Court explained that failure to meet the Huawei obligations does not permanently impair SEP holder’s rights [952] . 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 [953] .

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 [923] . Nevertheless, the Court left this question open, because, in its eyes, the Claimant’s offer was not FRAND in terms of content [954] .

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 [955] . In the Court’s view, Claimant’s offer was anyway both not fair and discriminatory [956] .

Fair and reasonable terms

The Court held that the licensing terms offered by the Claimant to the Defendant were not fair and reasonable [957] .

First, the terms did not adequately consider the effects of patent exhaustion [958] . As a rule, FRAND requires licensing offers to contain respective provisions [959] . 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 [960] .

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 [961] . The Defendant would be obliged to pay royalties for past uses, although it is not clear whether the Claimant is entitled to such payments [962] .

Third, the Court found that the exclusion of the Defendant’s wholesale business from Claimant’s licensing offer was also not fair [963] . According to the principle of contractual autonomy, patent holders are free to choose to which stage of the distribution chain they offer licences [964] . 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 [964] .

Non-discrimination

Besides from the above, the Court ruled that the Claimant’s offer was discriminatory [965] .

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 [955] . 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) [966] .

Furthermore, the Court explained that the non-discriminatory element of FRAND does not oblige the SEP holder to treat all users uniformly [967] . The respective obligation applies only to similarly situated users, whereas exceptions are allowed, provided that a different treatment is justified [967] . 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 [968] .

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 [969] . 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 [970] .

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 [971] . 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 [972] . 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 [973] .

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 [974] . 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 [974] . 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) [974] . 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 [974] . 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 [975] .

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 [976] . 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 [977] . 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 [978] .

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 [979] .

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 [980] .

[917] District Court of Düsseldorf, 11 July 2018, Case-No. 4c O 81/17Ibid, paras. 3 and 82.
[918] Ibid, para. 13.
[919] Ibid, para. 12.
[920] Ibid, paras. 14 and 211.
[921] Ibid, para. 15.
[922] Ibid, para. 16.
[923] Ibid, para. 236.
[924] Ibid, paras. 140 and 313 et seqq.
[925] Ibid, paras. 114 et seqq.
[926] Ibid, paras. 60 and 140.
[927] Huaweiv ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13.
[928] Ibid, para. 142.
[929] Ibid, para. 148.
[930] Ibid, paras. 153 and 146.
[931] Ibid, paras. 159 - 181.
[932] Ibid, para. 158.
[933] Ibid, para. 147.
[934] Ibid, paras. 183 et seqq.
[935] Ibid, para. 191.
[936] Ibid, para. 188.
[937] Ibid, paras. 195 et seqq.
[938] Ibid, para. 199.
[939] Ibid, para. 198.
[940] Ibid, para. 200.
[941] Ibid, para. 203.
[942] Ibid, para. 205.
[943] Ibid, para. 208.
[944] Ibid, para. 207.
[945] Ibid, para. 210.
[946] Ibid, para. 212.
[947] Ibid, paras. 215 et seq.
[948] Ibid, para. 220.
[949] Ibid, paras. 222 et seqq.
[950] Ibid, para. 225.
[951] Ibid, para. 233.
[952] Ibid, para. 228.
[953] Ibid, para. 230.
[954] Ibid, para. 237.
[955] Ibid. para. 241.
[956] Ibid, para. 242.
[957] Ibid, paras. 283 et seqq.
[958] Ibid, para. 285.
[959] Ibid, para. 288.
[960] Ibid, paras. 292 et seq.
[961] Ibid, paras. 298 et seqq.
[962] Ibid, para. 301.
[963] Ibid, para. 306.
[964] Ibid, para. 311.
[965] Ibid, para. 271.
[966] Ibid, para. 250.
[967] Ibid, para. 248.
[968] Ibid, para. 267.
[969] Ibid, paras. 256 and 259 et seq.
[970] Ibid, para. 262.
[971] bid, paras. 258 and 264.
[972] Ibid, paras. 263 and 265.
[973] Ibid, para. 265.
[974] Ibid, para. 273.
[975] Ibid, para. 274.
[976] Ibid, para. 276.
[977] Ibid, para. 277.
[978] Ibid, para. 281.
[979] Ibid, para. 315.
[980] Ibid, paras. 75 et seq.

Updated 6 June 2019

Koninklijke Philips N.V. v Asustek Computers INC., Court of Appeal of The Hague

Dutch court decisions
7 May 2019 - Case No. 200.221.250/01

A. Facts

The present case concerns a dispute between Philips—a consumer electronics manufacturer and holder of a portfolio of patents declared potentially essential to the practice of various standards (Standard Essential Patents or SEPs) developed by the European Telecommunications Standards Institute (ETSI)—and Asus—a manufacturer of wireless devices, such as laptops, tablets and smartphones.

Philips had committed towards ETSI to make its SEPs accessible to users on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. In particular, in 1998 Philips had provided ETSI with a general (blanket) commitment to offer access to its SEPs on FRAND terms.

In 2013, Philips notified Asus of its portfolio reading on the 3G-UMTS and 4G-LTE wireless telecommunications standards and proposed a licensing agreement. In subsequent meetings between the parties, Philips provided further details on its patents, as well as claim charts mapping its patents on the standards on which they were reading. Philips also submitted to Asus its standard licensing agreement, which included the standard royalty rate in Philips’s licensing program and the way it is calculated.

In 2015, negotiations fell apart and Philips initiated infringement proceedings based, among others, on its European Patent 1 623 511 (EP 511) in various European jurisdictions, namely England, France, Germany. The EP 511 patent was declared by Philips to be potentially essential to the 3G-UMTS and 4G-LTE standards. The High Court of Justice of England and Wales delivered a preliminary verdict, upholding the validity of the EP 511 patent.

In the Netherlands, Philips had brought an action against Asus before the District Court of The Hague (District Court), requesting inter alia for an injunction. The District Court dismissed Philips’s request for an injunction based on the EP 511 patent. [981] Philips appealed before the Court of Appeal of The Hague (Court of Appeal).

With the present judgment, the Court of Appeal upheld the validity and essentiality of the EP 511, rejected Asus’s FRAND defence based on Article 102 TFEU, and entered an injunction against Asus for its products infringing the patent in suit. [982]

B. Court’s Reasoning

The Court of Appeal dismissed Asus’s invalidity challenge, upholding the novelty and inventiveness of the EP 511 patent. [983] Moreover, the Court of Appeal found the patent essential and infringed. [984]

The Court of Appeal went on to examine the claims put forward by Asus, namely that Philips, in initiating infringement proceedings requesting injunctive relief, had violated its contractual FRAND obligations towards ETSI and infringed Article 102 TFEU, by failing to meet the requirements set forth in the decision of the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE (Huawei requirements) [985] . In particular, Asus argued that Philips (a) failed to properly and timely disclose the EP 511 in accordance with ETSI IPR Policy, and (b) that Philips failed to comply with the Huawei requirements, because it did not clarify why its proposed terms were FRAND.

With regard to the former, the Court of Appeal found that, in declaring EP 511 as potentially essential two years after it was granted, Philips had not breached its contractual obligations under Article 4.1 ETSI IPR Policy which requires ‘timely disclosure’ of SEPs.

Starting with the general purpose underlying the ETSI disclosure obligation, the Court of Appeal found that it was not—as Asus maintained—to allow ETSI participants to choose the technical solutions with the lowest cost, since ETSI standards seek to incorporate the best available technologies. [986] Rather, the purpose of the declaration obligation was to reduce the risk of SEPs being ex post unavailable to users. [987]

Having said that, the Court of Appeal found that the general blanket declaration by Philips was sufficient to fulfil its obligations under the ETSI IPR Policy. In this regard, the Court of Appeal dismissed the argument raised by Asus that Philips’s late declaration of specific SEPs would result in over-declaration: on the contrary, the Court of Appeal held, early disclosure is more likely to include patents that are not in fact essential to ETSI standards. [988] Moreover, the Court of Appeal pointed out that Philips’s blanket declaration did not infringe Article 101 TFEU, as per the Horizontal Guidelines by the EU Commission, blanket declarations are also an acceptable form of declaration of SEPs for the purposes of EU competition law. [989]

Having dismissed Asus’s first ground for a FRAND defence, the Court of Appeal assessed the compliance of both parties with the Huawei requirements in their negotiations. The Court of Appeal noted, as a preliminary point, that the decision of the CJEU in Huawei did not develop a strict set of requirements such that patent holders that failed to abide by they would automatically infringe Article 102 TFEU. [990] For such a finding an overall assessment of the particular circumstances of the case and the parties’ conduct is necessary.

The Court of Appeal then examined Philips’s compliance with the first Huawei requirement, the proper notification to the infringer. According to the Court of Appeal, the case record showed that Philips had clearly discharged its burden to notify Asus, by submitting a list of patents that were allegedly infringed, the standards to which they were essential, and by declaring its willingness to offer a licence on FRAND terms. [991] Moreover, in further technical discussions, Philips provided more technical details on its portfolio and licensing program, including claim charts and its standard licensing royalty rate. [992] However, Asus failed to demonstrate its willingness to obtain a licence on FRAND terms. The Court of Appeal found that talks commenced always at Philips’s initiative, and that Asus was not represented in these talks by technical experts able to evaluate Philips’s portfolio. [993] The technical issues raised by Asus in negotiations were merely pretextual with a view to stall the process, or as the Court of Appeal put it a ‘behaviour also referred to as “hold-out.”’ [994]

Although the Court of Appeal held that at this point Asus was already in breach of its obligations under Huawei and thus Philips was entitled to seek an injunction, the Court went on to discuss compliance with the further steps in the Huawei framework. The Court of Appeal found that Philips’s proposal of its standard licensing agreement fully satisfied the CJEU requirements in that it was specific and explained how the how the proposed rate was calculated. [995] Moreover, the Court of Appeal held that the counteroffer submitted by Asus after the initiation of proceedings in Germany did not in itself alter the conclusion that Philips was compliant with Huawei, and thus entitled to seek an injunction. [996] Finally, the Court rejected the request on behalf of Asus to access comparable licences signed by Philips to assess the latter’s FRAND compliance. According the Court, neither the ETSI IPR Policy nor Article 102 TFEU and the Huawei framework provide a basis for such a request. [997]

[981] Koninklijke Philips N.V. v. Asustek Computers INC, District Court of the Hague, 2017, Case No. C 09 512839 /HA ZA 16-712.
[982] Koninklijke Philips N.V. v. Asustek Computers INC, Court of Appeal of The Hague, judgment 7 May 2019, dated Case No. 200.221.250/01.
[983] ibid, paras 4.63, 4.68, 4.75, 4.80, 4.82, 4.93, 4.100, and 4.117.
[984] ibid, paras 4.118 et seq.
[985] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case-No. C-170/13.
[986] Koninklijke Philips N.V. v. Asustek Computers INC, Court of Appeal of The Hague, judgment 7 May 2019, dated Case No. 200.221.250/01, paras 4.153 et seq.
[987] ibid, paras 4.155 and 4.157.
[988] ibid, para 4.159.
[989] ibid, para 4.164.
[990] ibid, para 4.171.
[991] ibid, para 4.172.
[992] ibid.
[993] ibid, paras 4.172-4.179.
[994] ibid, para 4.179.
[995] ibid, para 4.183.
[996] ibid, para 4.185.
[997] ibid, paras 4.202 et seq.

Updated 12 March 2019

Fraunhofer-Gesellschaft (MPEG-LA) v ZTE

LG Düsseldorf
9 November 2018 - Case No. 4a O 15/17

A. Facts

The Claimant, Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung, holds a patent essential to the practice of the AVC/H.264 standard concerning the compression of video data (Standard Essential Patent of SEP) [998] . The patent holder committed towards the relevant standardization body to make this patent accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. The Claimant contributed the SEP in question to a patent pool administered by MPEG LA LLC (MPEG LA), comprising more the 5,000 patents referring to the AVC/H.264 standard (MPEG LA pool) [999] .

The Defendant, a German subsidiary of a Chinese group of companies, sells – among other things – mobile phones manufactured by its parent company (parent company) which practise the AVC/H.264 standard in Germany [1000] .

MPEG LA uses a standard licensing agreement, which is publicly available at its website [1001] . It has signed licensing agreements with approx. 1,400 implementers [1001] .

By e-mail dated 8 September 2011, MPEG LA sent a copy of its standard licensing agreement to the Defendant’s parent company and informed the latter that its “mobile handset and tablet products” infringe patents included in its “AVC patent portfolio” (without indicating, however, either the concrete patent numbers or the specific infringing products) [1002] .

On 15 September 2011, the parent company asked MPEG LA to send any relevant documents by mail to its IPR Manager [1003] . A copy of MPEG LA’s standard licensing agreement reached the parent company in late September 2011 [1004] .

In 2012, the parent company acquired patents included in the MPEG LA pool [999] .

Since MPEG-LA and the parent company could not reach an agreement on a licence covering the MPEG LA pool [1005] , the Claimant brought an action against the Defendant before the District Court of Düsseldorf in Germany (Court), requesting for injunctive relief, information and rendering of accounts, the destruction and the recall of infringing products as well as for a declaratory judgement confirming Defendant’s liability for damages on the merits [1006] .

During the proceedings, the Defendant declared its willingness to obtain a licence for the patent in suit and other SEPs of the Claimant referring to the AVC/H.264 standard [1007] . Moreover, the Defendant sent to MPEG LA two signed copies of MPEG LA’s standard licensing agreement, along with a statement of accounts of its past sales and a bank guarantee [1008] . MPEG LA did not countersign this agreement. It insisted, instead, on a licence that would cover all companies belonging to the same group as the Defendant [1009] .

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

B. Court’s reasoning

The Court held that the mobile phones sold by the Defendant in Germany infringe Claimant’s SEP in suit [1010] . It also found that by filing the present suit the Claimant did not abuse its dominant market position in violation of Article 102 of the Treaty for the Functioning of the EU (TFEU), since it had fully complied with the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [1011] (Huawei obligations or framework) with respect to dominant undertakings [1012] .

1. Dominant market position

The Court found that the Claimant holds a dominant market position in terms of Article 102 TFEU [1013] .

The Court defined the relevant market for the assessment of dominance as the market for licences for any given patent [1014] . A dominant market position can further also exist, when the patent holder can hinder competition in downstream markets for standard-compliant products and services [1014] .

The Court made, however, clear that ownership of a SEP does not per se establish market dominance [1015] . A dominant market position is given, when the use of the SEP is required for entering the market [1015] . The same is true, if the patent user could not market competitive products or services, without access to the respective SEP [1015] .

Based on these considerations, the Court saw no ‘reasonable’ doubt that the Claimant was a dominant undertaking: It was undisputed that almost all mobile phones available worldwide use the AVC/H.264 standard and that no “realistic” alternative to the MPEG LA pool existed in the licensing market for patents essential to this standard [1016] .

2. Huawei framework

The Court found, however, that the Claimant did not abuse its dominant position by suing the Defendant in the present case, since its conduct was in line with the Huawei framework [1017] . The Huawei framework establishes mutual conduct obligations for both SEP holders and SEP users, which need to be fulfilled step by step and one after another (meaning that each party’s obligation to act arises only after the other party has fulfilled its own obligation) [1018] . Subject to the Huawei framework is not only the patent holder’s claim for injunctive relief, but also the claim for the destruction of infringing products [1019] .

In this context, the Court pointed out that the Huawei framework applies, irrespective of whether a ‘well-established’ licensing practice concerning the asserted patents already existed before the CJEU delivered the Huawei judgment, or not [1020] . The Claimant had argued that, in the present case, the Court should apply the (German) legal standard that preceded the Huawei framework (which was based on the so-called ‘Orange-Book-Standard’ ruling of the Federal Supreme Court [1021] ), since with respect to the SEP in suit a ‘routine’ practice already existed prior to the Huawei judgement [1022] . The Court explained that the Huawei judgment does not contain either an explicit or an implicit limitation of its scope of application [1023] . Furthermore, even if a ‘well-established’ licensing practice existed, the need to apply the Huawei framework will still be given, in order to bridge the nevertheless existing information gap between patent holder and implementer concerning the (potential) infringement of SEPs [1024] . Finally, it would be very challenging for courts to distinguish whether a ‘well-established’ licensing practice excluding the application of the Huawei framework is at hand, or not [1025] . Notwithstanding the above, according to the Court, the actual licensing practice of the patent holder could be of ‘particular significance’ when assessing the compliance of the latter with the Huawei obligations: Such practice could, for instance, serve as an indicator of the appropriateness of SEP holder’s licensing offer to the implementer [1026] .

Having said that, the Court found no flaws in Claimant’s conduct. In the Court’s view, the Claimant had met its Huawei obligation to notify the Defendant about the infringement of its patent as well as the obligation to present the Defendant with a written licensing offer covering also the patent in suit. The Defendant, on the other hand, adequately expressed its willingness to enter into a licence, failed, however, to make a FRAND counter-offer to the Claimant. Since an adequate counter-offer was missing, the Court did not take up the question whether the bank guarantee provided by the Claimant to MPEG LA constitutes an adequate security in terms of the Huawei framework [1027] .

Notification of infringement

The Court ruled that the Claimant had adequately notified the Defendant about the infringement of the SEP in suit through the e-mail sent by MPEG LA to the parent company on 8 September 2011 [1028] .

The fact that this e-mail was not addressed to the Defendant, but to the parent company, did not raise any concerns as to the compatibility of the notification with the Huawei framework. The Court explained that a notification of infringement addressed only to the parent company of a group of companies is sufficient, as far as it can be assumed that the notification will be forwarded to the subsidiaries concerned [1029] . The sole fact that a company belongs to a group justifies such an assumption, unless indications to the contrary exist [1029] . This was, however, not the case here.

Besides that, the Court did not consider it inappropriate that the aforementioned e-mail was not sent to the parent company by the Claimant, but by MPEG LA (which is not the holder of the SEP in suit) [1030] . The Court held that MPEG LA is entitled to perform legal actions in connection with the licensing of the MPEG LA pool on behalf of the Claimant [1031] . The Defendant could not contest that this was not the case, since MPEG LA’s standard licensing agreement, which it is aware of, contains an indication about MPEG LA’s respective capacity [1032] . In addition, the Defendant’s parent company was also aware of MPEG LA’s capacity to act on behalf of the Claimant, since it joined the MPEG LA pool as a patent holder in 2012 [1033] .

The Court further ruled that, in terms of content, a notification of infringement must – at least – name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use [1034] . A detailed (technical and/or legal) explanation of the infringement is not required; the implementer needs just to be put in the position to assess the infringement allegations, if necessary, by seeking expert advice [1035] . A notification of infringement is, therefore, not necessary, when it constitutes just a ‘pointless formality’ [1035] . This is true, when according to the overall circumstances of the case, one can safely assume that the implementer is aware of the infringement, so that claiming that the SEP holder failed to provide adequate notification prior to the initiation of court proceedings would appear to be abusive [1035] . The respective test is, however, subject to strict conditions [1035] .

Based on the above considerations, the Court found that MPEG LA’s e-mail to the parent company dated 8 September 2011 should be considered – as an exception – to constitute a sufficient notification of infringement, although it did not contain the minimum information required (particularly the patent number and a reference to the specific infringing embodiments) [1036] . The overall circumstances of the case (especially the fact that the parent company acquired patents included in the MPEG LA pool in 2012 and had also previously been in contact with MPEG LA regarding a standard licensing agreement) [1037] , give rise to the assumption that the parent company had already been aware of the MPEG LA pool and the fact that AVC/H.264-compliant products need to be licensed [1038] .

Willingness to obtain a FRAND-licence

The Court held that the parent company had adequately expressed its willingness to obtain a FRAND-licence through the e-mail sent to MPEG LA on 15 September 2011 [1039] .

In the eyes of the Court, this e-mail indicates the parent company’s intention to deal with issues concerning the licensing of patents referring to the AVC/H.264 standard. This is sufficient under the Huawei framework [1040] . The implementer is not required to refer to a specific licensing agreement [1040] .

SEP holder’s licensing offer

The Court further found that the standard licensing agreement sent by MPEG LA to the parent company presents an offer accountable to the Claimant which is in line with the Huawei framework in terms of both form and content [1041] .

The fact that the offer was addressed to the parent company and not to the Defendant was not relevant, since the parties were discussing about a licensing agreement on group level and the parent company had itself requested to receive the draft agreement [1042] .

Furthermore, the fact that the draft agreement sent to the parent company did not directly provide for the licensing of all subsidiaries (including the Defendant) was also not considered as harmful [1043] . Insofar, the Court held that under the Huawei framework it is, as a rule, acceptable that the patent holder enters into licensing negotiations only with the parent company within a group of companies [1044] . Whether subsidiaries can (or should) also be licensed, will be the object of these negotiations [1045] . An exception would apply only then, when it is made clear already at the beginning of the licensing negotiations that the offer made to the parent company cannot include its subsidiaries [1046] . This was, however, not the case here, since the standard licensing agreement sent to the parent company indicates MPEG LA’s willingness to grant licences also to the subsidiaries of the former [1047] .

Besides that, the Court did not consider the fact that the standard licensing agreement sent to the parent company did not cover the sale of licensed products to wholesalers and retailers (but regarded only sales to end users) to be in conflict with the Huawei framework, although the Defendant was engaged also in this business [1048] . According to the Court, sales to wholesalers and retailers would be covered by the effects of patent exhaustion, even without an express provision in a potential licensing agreement [1049] .

The Court further ruled that the Huawei requirement, according to which the SEP holder’s licensing offer must specify the royalty calculation, was met, although the draft standard licensing agreement sent to the parent company does not contain detailed explanation of the way the royalties were calculated [1050] . In the Court’s view, the respective explanation does not require a ‘strict mathematical derivation’ of the royalty; moreover, it will, as a rule, suffice to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting existing licensing agreements with third parties (comparable agreements) [1051] . If a sufficient number of comparable licences is presented, then the SEP holder will usually not be required to provide further information regarding the appropriateness of its licensing offer [1051] . It will need, however, to provide information on all essential comparable agreements, in order to rule out the risk that only agreements supporting the offered royalty level are presented [1051] . In this context, the Court noted that it cannot be required from the SEP holder to present all comparable agreements along with the licensing offer to the implementer; a respective industry practice does not exist [1052] .

Against this background, the Court did not consider it to be harmful that the standard licensing agreement sent to the parent company by MPEG LA did not include a detailed explanation of the royalty calculation in the above sense [1053] . On the one hand, the parent company was aware that this (standard) agreement had been accepted in the market by a great number of licensees [1053] . On the other hand, the parent company was also adequately aware of the way the offered royalties were calculated, since it held patents included in the MPEG LA pool itself [1054] .

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

According to the Court, a licensing offer cannot be considered as fair and reasonable, if the patent holder requests royalties that go significantly beyond the (hypothetical) price that would have been formed in an effectively competitive market, unless there is a commercial justification for the royalty level requested [1055] . Particularly in connection with the licensing of SEPs, an offer can lie outside the FRAND-scope, if the cumulative royalty burden imposed on the implementer would not be tenable in commercial terms [1055] . The Court made clear that in this context, no exact mathematical derivation of a FRAND-conform royalty rate is required; moreover, an approximate value is to be determined based on assessments and estimations [1055] . In this respect, comparable agreements can serve as an ‘important indicator’ of the fair and reasonable character of the offered royalty rates [1055] .

Regarding to the non-discriminatory element of FRAND, the Court pointed out that it applied only to similar situated cases; an unequal treatment is allowed, as long as it is objectively justified [1056] . Limitations in this context may especially occur, when the implementation of the patent is necessary for entering a downstream market or when a product becomes competitive only when it uses the patent’s teachings [1056] . As a rule, the burden of proof with respect to the discriminatory character of a licensing offer rests on the implementer. Since the latter will usually not be aware of the existence or the content of comparable agreements of the patent holder, it may seem appropriate to request the patent holder to provide the implementer with respective details, as far as this is reasonable [1057] . The information to be shared should cover all existing licensees and include which (concretely designated) company with which importance in the relevant market has obtained a licence on which conditions [1057] .

Looking at the standard licensing agreement sent to the parent company, the Court observed that the fact the MPEG LA sought for a licence covering all companies within the group, to which the Defendant belonged, was not violating FRAND principles [1058] . In the electronics and mobile communications industries, licences covering a group of companies are in line with the industry practice [1059] . Patent holder have a special interest in concluding such licences particularly in cases, in which – as in the present case – the parent company manufactures products which are sold worldwide by its subsidiaries. This is because licences at group level makes sure that patent holders can enforce their rights effectively, without having to distinguish between licenced and unlicenced products within a group of companies [1060] .

In addition, the Court made clear that pool licences, as the one offered to the parent company, are appropriate under the Huawei framework [1061] . An offer for a pool licence cannot per se be seen as abusive (Article 101 TFEU) [1062] . On the contrary, such licences usually serve the interest of potential licensees to be granted access to the whole standard on uniform conditions under one roof, without having to seek a licence from every single patent holder separately [1062] .

Implementer’s counter-offer

The Court found that the Defendant failed to make a FRAND counter-offer [1063] .

Sending signed copies of MPEG LA’s standard licensing agreement back to MPEG LA can be regarded as a counter-offer [1064] . The fact, however, that this offer concerned a licence limited to the Defendant and, thus, not covering the parent company (and all further companies belonging to the same group) was not FRAND conform [1065] . The Court accepted that licences at group level mirror the industry practice in the field in question; accordingly, no objections can be raised when a patent holder contributing its patents to a pool is willing to grant only licences covering all group companies [1066] .

Since the counter-offer was not FRAND in terms of content, the Court did not have to decide, whether it was made in due time, or not [1067] .

[998] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, para. 56.
[999] Ibid, para. 58
[1000] Ibid, para. 57
[1001] Ibid, para. 59
[1002] Ibid, paras. 61 et seqq. and 340
[1003] Ibid, para. 65
[1004] Ibid, para. 66
[1005] Ibid, para. 73
[1006] Ibid, para. 42
[1007] bid, para. 74
[1008] Ibid, paras. 75 et seq
[1009] Ibid, para. 75
[1010] Ibid, paras. 127 – 254
[1011] Huawei v ZTE, Court of Justice of the European Union, judgment dated 16 July 2015, Case No. C-170/13
[1012] Fraunhofer-Gesellschaft (MPEG-LA) v ZTE, District Court of Düsseldorf, judgement dated 9 November 2018, cited by www.nrwe.de, Ibid, para. 280
[1013] Ibid, para. 283 and paras. 291 et seqq
[1014] Ibid, para. 286
[1015] Ibid, para. 287
[1016] Ibid, paras. 291 et seqq
[1017] Ibid, para. 296
[1018] Ibid, para. 300
[1019] Ibid, para. 302
[1020] Ibid, para. 308
[1021] Under the ‘Orange-Book-Standard’ regime, in order to avoid an injunction, the implementer was required to make a licensing offer to the patent holder, which the latter could not refuse without acting in an anticompetitive manner; see Federal Supreme Court (Bundesgerichtshof), judgment dated 6 May 2009, Case No. KZR 39/06
[1022] Ibid, para. 305
[1023] Ibid, paras. 306 et seqq
[1024] Ibid, para. 310
[1025] Ibid, para. 311
[1026] Ibid, para. 312
[1027] Ibid, para. 421
[1028] Ibid, para. 314
[1029] Ibid, para. 320
[1030] Ibid, para. 318
[1031] Ibid, para. 329
[1032] Ibid, paras. 336 et seq
[1033] Ibid, para. 338
[1034] Ibid, para. 198
[1035] Ibid, para. 315
[1036] Ibid, paras. 340 et seq
[1037] Ibid, paras. 342 et seqq
[1038] Ibid, para. 344
[1039] Ibid, para. 346
[1040] Ibid, para. 348
[1041] Ibid, para. 352
[1042] Ibid, para. 367
[1043] Ibid, para. 369
[1044] Ibid, para. 370
[1045] Ibid, para. 378
[1046] Ibid, para. 371
[1047] Ibid, para. 374
[1048] Ibid, para. 376
[1049] Ibid, para. 377
[1050] Ibid, para. 380
[1051] Ibid, para. 381
[1052] Ibid, para. 386
[1053] Ibid, para. 382
[1054] Ibid, para. 387
[1055] Ibid, para. 391
[1056] Ibid, para. 392
[1057] Ibid, para. 393
[1058] Ibid, para. 397
[1059] Ibid, para. 398
[1060] Ibid, para. 399
[1061] Ibid, para. 402
[1062] Ibid, para. 404
[1063] Ibid, para. 410
[1064] Ibid, para. 413
[1065] Ibid, para. 416
[1066] Ibid, para. 417
[1067] Ibid, para. 411

Updated 26 January 2017

Saint Lawrence v Vodafone

OLG Düsseldorf
9 May 2016 - Case No. I-15 U 35/16

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

Updated 20 October 2020

Sisvel v Wiko

LG Mannheim
4 September 2019 - Case No. 7 O 115/16

A. Facts

The Claimant, Sisvel, holds patents declared as (potentially) essential to the practice of the UMTS and LTE wireless telecommunications standards under a commitment to be made accessible to standard users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions (Standard Essential Patents or SEPs). Sisvel administrates a patent pool comprising patents of several SEP holders, including Sisvel’s own SEPs (patent pool).

The Defendants are the French parent company and the German subsidiary of the Wiko group (Wiko). Wiko sells mobile phones implementing the LTE standard –among other markets– also in Germany.

In June 2015, Sisvel informed Wiko about the patent pool and the need to obtain a licence. The parties entered into licensing discussions. Sisvel provided Wiko with information about the SEPs included in the patent pool, including claim charts illustrating the standard-essentiality of a number of these patents. On 1 June 2016, Sisvel made an offer for a licence covering the patent pool to Wiko. Agreement was, however, not reached.

On 22 June 2016, Sisvel brought an action against Wiko before the District Court (Landgericht) of Mannheim in Germany (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 covering only its own SEPs 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).

On 4 October 2016, Sisvel amended its claims in the infringement proceedings. It raised, additionally, claims for injunctive relief as well as the removal and subsequent destruction of infringing products from the market.

On 11 November 2016, Wiko made a counteroffer to Sisvel. Subsequently, Wiko provided security as well as information to Sisvel in accordance with its counteroffer.

During the course of the proceedings, Sisvel made a new offer for a pool licence to Wiko which contained reduced royalty rates. Wiko rejected this offer as well. On 22 December 2017, Sisvel asked the Court to order a stay of the infringement proceedings, until the German Federal Patent Court rendered its decision on the validity of the SEP in suit in the parallel nullity proceedings. Wiko agreed with Sisvel’s motion. On 30 January 2018, the infringement proceedings were stayed by order of the Court.

On 26 June 2018, during the stay of the infringement proceedings, Sisvel made another licensing offer to Wiko based on a new restructured licensing programme designed by Sisvel in the meantime (2018 offer).

Along with the 2018 offer, Sisvel provided Wiko –among other information– with claim charts regarding twenty selected patents as well as a list of existing licensees of both its new licensing programme and two pre-existing programmes. 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, Wiko replied to Sisvel, without, however, providing any feedback on the content of the 2018 offer; it just referred back to its counteroffer dated 11 November 2016, instead. Wiko also criticized the fact that Sisvel did not disclose the names of the existing licensees in the list that it had shared along with the 2018 offer.

In response to that claim, Sisvel sent a draft Non-Disclosure Agreement (NDA) to Wiko on 22 October 2018. Sisvel was willing to disclose the names of the existing licensees upon signing of the NDA by Wiko. Wiko refused, however, to sign the NDA proposed by Sisvel.

In October 2018, the German Federal Patent Court upheld the SEP in suit in part. Subsequently, the Court moved on with the infringement proceedings, discussing in particular the FRAND-related issues.

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.

With the present judgment [1068] , the Court granted an injunction against Wiko and ordered the removal and subsequent destruction of infringing products from the market. The Court also confirmed Wiko’s liability for damages on the merits and ordered Wiko to provide Sisvel with information required for the calculation of damages.

B. Court’s reasoning

The Court found that Wiko’s products infringe the patent in suit [1069] . The essentiality of the patent in suit was not in dispute between the parties [1070] .

The Court further held that Article 102 of the Treaty for the Functioning of the EU (TFEU) does not prevent Sisvel from enforcing the claims for injunctive relief as well as the recall and destruction of infringing products asserted in the infringement proceedings. Wiko had argued that by filing the present lawsuit, Sisvel had abused its dominant market position in violation of Article 102 TFEU.

In the Court’s eyes, this was not the case, since Sisvel had fulfilled the conduct obligations stipulated by the Court of Justice of the EU (CJEU) in the matter Huawei v ZTE [1071] (Huawei framework or obligations). Wiko, on the other hand, had, according to the Court, failed to comply with the Huawei framework.

Huawei framework

In deviation from its earlier case-law, the Court expressed the view that the Huawei obligations can be remedied by the parties during the course of infringement proceedings [1072] . This requires, however, that pressure-free negotiations between the parties are enabled, as requested by the CJEU. For this, the parties have to use available procedural instruments for a temporary suspension of the proceedings, such as a motion for suspension of the trial [1073] or a consensual stay of the proceedings until the decision of the Federal Patent Court on a parallel nullity action [1074] .

Against this background, the Court requested from a SEP holder, who seeks to remedy information obligations under the Huawei framework after the initiation of infringement proceedings, to file a motion for suspension of the trial [1074] . In case such a motion is filed, the Court expects that a ‘willing’ implementer will consent to a suspension of the proceedings [1074] .

The Court observed that granting the parties the opportunity to remedy shortcomings concerning the Huawei obligations in the course of pending infringement proceedings is in line with the ‘safe harbour’ approach adopted by both the Court of Appeal of England and Wales in Unwired Planet v Huawei [1075] and the Court of Appeal of The Hague in Philips v Asus [1076] . These courts do not consider the Huawei framework as a mandatory formalistic procedure that needs to be executed strictly; accordingly, deviations from the negotiation framework established by the CJEU do not necessarily amount to abusive behaviour, barring the patent holder from asserting claims for injunctive relief [1077] . Moreover, whether this is the case, needs to be assessed on a case by case basis [1078] .

Notification of infringement

Having said that, the Court found that Sisvel had fulfilled its Huawei obligation to notify Wiko about the infringement of the SEP in suit prior to the commencement of the infringement proceedings.

Regarding the content of SEP holder’s respective notification, the Court, basically, applied the same requirements set forth in previous decisions. The Court found that such notification must (1) name the patent in suit, including the patent number, (2) inform that the patent has been declared standard- essential towards the relevant standardisation body, (3) indicate for which standard the patent is essential and (4) explain which technical functionality of the user’s products or services implements the standard [1079] . The appropriate level of detail should be determined on a case by case basis [1079] . The Court confirmed that the patent holder will, as a rule, meet its notification duty by making claims charts customarily used in SEP licensing negotiations available to the implementer [1079] . The Court further affirmed that a notification addressed to the parent company within a group of companies will usually be sufficient under the Huawei framework [1079] .

SEP holder’s offer

The Court found that Sisvel had also complied with its Huawei obligation to make a written and specific FRAND licensing offer to Wiko. For the respective assessment, the Court considered only the 2018 offer, the last offer made by Sisvel to Wiko during the stay of the infringement proceedings [1080] .

To begin with, the Court reiterated its position that infringement courts are not obliged to determine which concrete licensing fees and further contractual terms and conditions are ‘under objective aspects’ FRAND [1081] . Contrary to the view previously taken by the superior Higher District Court of Karlsruhe, the Court maintained that the CJEU did not intend to ‘burden’ the proceedings concerning injunctive relief and the recall of products with the ‘precise mathematical determination’ of FRAND conditions [1082] . Moreover, since there is a ‘range’ of potential FRAND conform terms and conditions, a request for injunctive relief could conflict with Article 102 TFEU only in case, in which – under consideration of the specific bargaining situation and market conditions – the SEP holder’s offer would amount to an ‘exploitative abuse’ [1081] . Insofar, the Court shared a similar understanding with the Court of Appeal of England and Wales in Unwired Planet v Huawei [1075] .

Notwithstanding the above, the Court made clear that infringement courts should go beyond a just ‘superficial’ assessment of the FRAND conformity of SEP holder’s licensing offer. Infringement courts should examine, whether the overall structure of the concrete offer would require from an implementer acting in good faith to respond to that offer, irrespective of the – typical – initial divergence of the bargaining position of the parties [1083] . As a rule, such a duty will emerge, when the SEP holder explains the royalty calculation in a way that demonstrates the reasons for which it considers that its offer is FRAND [1084] . In case that a pool licensing programme or a standard licensing programme exists, it will usually be enough to demonstrate the acceptance of the respective programme in the market. If a sufficient number of licences has been granted by the pool, the patent holder will just have to outline the composition of the pool by presenting an adequate number of claim charts referring to patents included in the pool [1085] .

In this context, the Court pointed out that any allegations raised by the implementer with respect to the FRAND conformity of the patent holder’s offer cannot, in principle, be based on the (alleged) unlawfulness of individual contractual clauses. Moreover, the FRAND compliance of an offer must be assessed based on a general overview of the overall agreement [1086] . An exception only applies, when a specific clause has an ‚unacceptable effect’ [1086] . In the present case, the Court found that none of the clauses contained in the 2018 offer had such effect [1086] .

In particular, the Court held that a clause placing the burden of proof with regard to the exhaustion of patents covered by the offered licence on the licensee (here: Wiko) is acceptable [1087] . Contrary to the view taken by the District Court of Duesseldorf in a similar case, the Court argued that it is appropriate to request the licensee to establish the relevant facts, since it will be better situated to trace the licensing chain by engaging with its suppliers [1087] .

Furthermore, the Court did not consider that a clause limiting the term of the offered licence to five years had an ‘unacceptable effect’ from an antitrust perspective. The Court found that a term of five years is in line with the prevailing practice in the wireless telecommunications industry, in which rapid technological developments are typical [1088] .

The Court further pointed out that a clause establishing a right for the extraordinary termination of the licensing agreement in case of violation of reporting duties by the licensee or a delay of payments exceeding 30 days did not have an ‘unacceptable effect’ in the above sense [1088] .

The Court did not raise any objections against the fact that the 2018 offer did not contain a clause stipulating an adjustment of the agreed royalty rates in case of changes in the number of covered patents during the term of the agreement. According to its view, including such a clause in a FRAND licence is not per se required [1088] . An exception should be made, however, in cases, in which the pool predominantly consists of patents that will expire soon after the signing of the licence agreement [1088] . In general, the absence of an ‘adjustment’ clause will not be problematic, especially when the licensing offer does not limit or exclude the statutory right of the parties to request an adjustment of the licence due to frustration of the contractual base (Sec. 313 para. 1 German Civil Code) [1088] .

Non-discrimination / confidentiality

Referring to the non-discriminatory element of a FRAND licensing offer, the Court expressed the view that Art. 102 TFEU establishes a (secondary) duty of the patent holder to show in pending infringement proceedings that its offer to the defendant does not discriminate the latter in relation to similarly situated competitors [1085] .

The Court made, nevertheless, clear that this duty does not legally entail ‘full transparency’ in every given case [1085] . The antitrust obligations of the SEP holder do not always outweigh confidentiality interests of the latter that are worthy of legal protection; moreover, the special circumstances of the individual case can require protection of confidentiality [1085] .

Looking particularly at information contained in existing licensing agreements of the SEP holder with third similarly situated licensees (comparable agreements), the Court took the view that the extent of the patent holder’s obligation to disclose such agreements shall be determined by the infringement court on a case by case basis under consideration of both parties’ pleadings in the proceedings [1085] .

According to the Court, the patent holder will have to establish the existence of confidentiality interests worthy of protection; the mere fact that comparable agreements are subject to confidentiality clauses does not per se justify limitations regarding to the extent of patent holder’s disclosure obligations [1089] . On the other hand, the defendant will need to explain to the court why the information requested is required for assessing the FRAND conformity of the patent holder’s licensing offer [1089] . The defendant will have to establish concrete facts, indicating a potentially discriminatory conduct of the SEP holder [1090] .

With this in mind, the Court disagreed with the view expressed by the Duesseldorf courts, according to which the SEP holder is in any case obliged to produce all existing comparable agreements in infringement proceedings [1091] . Especially in cases, in which the patent holder has concluded only standard licensing agreements with implementers, the terms and conditions of which are publicly accessible, the Court saw no reason for obliging the patent holder to produce a (large) number of identical contracts in the proceedings. Insofar, it will be sufficient to disclose how many (standard) licensing agreements have been concluded so far [1091] .

Accordingly, the Court found that the list of existing licensees produced by Sisvel to Wiko along with the 2018 offer was sufficient for establishing the FRAND conformity of this offer, even though the names of the licensees were redacted. In the Court’s eyes, Wiko had failed to explain the reasons why the identity of the existing licensees was needed to assess the FRAND conformity of the 2018 offer [1092] . In addition, the Court also took into account the fact that Wiko had refused to sign the NDA offered by Sisvel during the stay of the proceedings for the purpose of disclosing the identities of the existing licensees [1093] . Since it had no objections against the FRAND conformity of the 2018 offer, the Court did not rule on the question whether Wiko’s refusal to enter into an NDA could be considered as a sign of unwillingness to comply with the Huawei framework or not. The Court agreed, however, with the view taken by the Duesseldorf courts in this respect, according to which the implementer’s refusal to sign an adequate NDA is, in principle, a factor that should be considered in connection with the assessment of the SEP holder’s offer [1093] .

Besides that, the Court also considered the possibility of facilitating the use of comparable agreements in infringement proceedings through document production orders issued by the competent court pursuant to Sec. 142 of the German Code of Civil Procedure (Zivilprozessordnung, ZPO) [1090] . This option should particularly be taken into account by infringement courts in individual cases, in which confidentiality clauses contained in comparable agreements allow for a disclosure of the agreement only upon court order. According to the Court, such confidentiality clauses do not per se violate antitrust law and should, therefore, be respected, unless the patent holder cannot establish a confidentiality interest worthy of protection in the proceedings [1090] . If the patent holder, who is bound to a confidentiality clause, is willing to produce comparable agreements in trial, then the infringement court could – based on the concrete circumstances of each case– issue a document production order according to Sec. 142 ZPO [1090] . In case that the patent holder refuses to comply with such order, the court could consider the respective behaviour as a signal of bad faith in its overall assessment of the parties’ conduct under the Huawei framework [1090] . The same will apply also when the implementer does not agree with a stay of the proceedings, after it was granted access to comparable agreements based on a court order issued pursuant to Sec. 142 ZPO [1090] .

Implementer’s counteroffer

The Court found that Wiko had failed to meet its Huawei obligation to make a FRAND counteroffer to Sisvel in due course. For the respective assessment, the Court focused on Wiko’s reaction to the 2018 offer [1094] .

The Court made clear that an implementer has a duty to react to a licensing offer of the SEP holder, which is based on concrete facts, irrespective of whether it considers this offer to be FRAND, or not (which will usually be the case) [1090] . Furthermore, the implementer must react as soon as possible, considering the facts of each case, the industry practice in the specific sector as well as the principle of good faith [1074] .

Taking into account that Wiko did not react at all to the 2018 offer for more than three months, the Court held that it violated the above obligations [1070] . In the Court’s eyes, Wiko engaged in delaying tactics [1070] . The Court did not accept that French school holidays and/or the fact that – according to Wiko’s own statement– only two employees covered licensing-related matters can provide sufficient justification for the delay in Wiko’s reaction [1094] . As a company engaging in international business, Wiko should ensure that it has sufficient staff resources to deal with respective issues in due course [1094] .

C. Other important issues

Apart from Sisvel’s claims for injunctive relief and the removal and destruction of infringing products from the market, the Court also rendered a declaratory judgment, recognising Wiko’s liability for damages on the merits [1095] .

The Court found that Wiko had culpably infringed the patent in suit. In particular, Wiko had acted, at least, negligently [1095] . Wiko had argued that the high complexity of standardised technologies (especially the significant number of patents incorporated into a standard), made it difficult to assess the status regarding intellectual property rights (and, therefore, excluded negligence). The Court made, however, clear that a higher degree of complexity of the underlying technologies generates enhanced due diligence requirements on the implementers’ side [1096] .

[1068] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16.
[1069] Ibid, pages 17-31.
[1070] Ibid, page 46.
[1071] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case-No. C-170/13.
[1072] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, page 42.
[1073] Ibid, page 43 and page 51 et seq.
[1074] Ibid, page 42.
[1075] Unwired Planet v Huawei, Court of Appeal of England and Wales, judgment dated 23 October 2018, [2018] EWCA Civ 2344, para 282.
[1076] Philips v Asus, Court of Appeal of The Hague, 7 May 2019, Case-No. 200.221 .250/01.
[1077] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, page 44.
[1078] Ibid, page 44.
[1079] Ibid, page 37.
[1080] Ibid, pages 47 and 53.
[1081] Ibid, page 38.
[1082] Ibid, pages 37 et seq.
[1083] Sisvel v Wiko, District Court of Mannheim, 4 September 2019, Case-No. 7 O 115/16, page 39.
[1084] Ibid, page 39.
[1085] Ibid, page 40.
[1086] Ibid, page 53.
[1087] Ibid, page 54.
[1088] Ibid, page 55.
[1089] Ibid, page 40 and 49.
[1090] Ibid, page 41.
[1091] Ibid, page 49.
[1092] Ibid, page 50.
[1093] Ibid, page 51.
[1094] Ibid, page 47.
[1095] Ibid, page 35.
[1096] Ibid, page 35 et seq.

Updated 1 November 2017

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

English court decisions
4 May 2017 - Case No. HP-2014-000005

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 [1097] . Most were part of a large patent portfolio that the claimant had acquired from a major telecommunications company in 2013. [1098] 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. [1099]
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. [1100] 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. [1101] Between August and October 2016 the parties exchanged further offers without reaching an agreement. [1102]
The Patents Court (Birrs J) held that the claimant was in a dominant position, but did not abuse this position. [1103] 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. [1104]
Court’s reasoning
1. Market power
  The court defined the relevant market for assessing dominance as a distinct market for licensing each SEP individually. [1105] European case law indicated that owning an SEP could be a rebuttable presumption for the existence of a dominant position. [1106] 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. [1107]
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. [1108] 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, [1109] 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. [1110] 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. [1110]
    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. [1111] 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. [1112] This approach also means that the SEP proprietor is under an obligation to make a FRAND offer and to enter into FRAND license agreements. [1113]
  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’). [1114] This eliminates the so-called Vringo-problem, [1115] 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. [1116]
    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. [1117] 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). [1118] Since Art. 102 TFEU condemns excessive pricing, [1119] 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. [1119]
  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. [1120] 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. [1121] 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. [1122]
    Second, the ‘hard-edged’ non-discrimination obligation, which takes into account the nature of the potential licensee, [1121] 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. [1123] 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. [1122]
  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. [1124] 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. [1124] This was illustrated by the fact that the vast majority of licenses introduced in the trial were worldwide licenses. [1125] 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. [1126] 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. [1127]
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. [1128] Other freely-negotiated license agreements might be used as comparables. [1129] This may be compared with a top down approach [1130] 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. [1131] 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. [1128] License agreements must meet certain criteria to be comparable. [1132] 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. [1132] 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%). [1133]
2. Principles derived from Huawei v. ZTE
  The court also provided a compiled overview of its interpretation of the Huawei v. ZTE ruling. [1134] 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.

[1097] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 2
[1098] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 54 et seqq.
[1099] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 3
[1100] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 5
[1101] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 7-8
[1102] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 11-14
[1103] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 807
[1104] Unwired Planet v Huawei, EWHC 1304 (Pat)
[1105] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 631
[1106] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 634
[1107] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 636-646
[1108] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 656
[1109] Unwired Planet v. Huawei [2017] EWHC 711(Pat), paras 108-145
[1110] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 146
[1111] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 162
[1112] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 163
[1113] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 159
[1114] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 164
[1115] See Vringo v ZTE [2013] EWHC 1591 (Pat) and [2015] EWHC 214 (Pat)
[1116] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 158
[1117] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 152
[1118] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 154
[1119] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 153
[1120] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 176
[1121] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 177
[1122] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 503
[1123] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 501
[1124] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 544
[1125] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 534
[1126] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 546
[1127] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 572
[1128] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 171
[1129] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 170
[1130] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 178
[1131] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 806 (10)
[1132] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 175
[1133] Unwired Planet v. Huawei [2017] EWHC 711(Pat), para 476
[1134] Unwired Planet v. Huawei [2017] EWHC 711(Pat), 744

Updated 2 August 2019

Philips v Wiko, Court of Appeal of The Hague

Dutch court decisions
2 July 2019 - Case No. C/09/511922/HA ZA 16-623

A. Facts

By letter dated 13 October 2013, the Claimant, Koninklijke Philips N.V. (“Philips”), informed the Defendant, Wiko SAS (“Wiko”), that it holds patents declared essential to the UMTS and LTE mobile telecommunication standards (Standard Essential Patents or “SEPs”) towards the European Telecommunications Standards Institute (“ETSI”). The letter included a list of some of Wiko’s products and invited Wiko to discuss a FRAND licensing agreement [1135] . Wiko did not react to the letter [1136] .

On 28 July 2015, Philips sent Wiko claim charts and a licensing agreement [1137] . The communication remained unanswered by Wiko [1136] .

On 19 October 2015, Philips started the present proceedings against Wiko [1138] . On 25 August 2016, Wiko made a counteroffer [1139] . Since 2016, it has also provided information about worldwide units sold and blocked an amount of EUR 895.000 into an escrow account [1136] .

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

In an interlocutory decision dated 16 April 2019, the Court of Appeal of The Hague (Court) held that the patent in suit EP1 623 511 (EP 511) is valid and that Wiko is infringing this patent [1140] . Wiko claimed that, as this patent is a SEP and Philips has not complied with its contractual duties, Philips is abusing its dominant position by initiating infringement proceedings against Wiko [1136] .

With the present judgment, the Court granted Philips’ request for injunctive relief [1141] , destruction [1142] and the recall of products [1143] , but partly invalidated EP 511, insofar it goes beyond the claims of the second auxiliary request [1144] .

B. Court’s reasoning

German Proceedings and Lis Pendens

Since the Court of Manheim in Germany had honoured its FRAND defence, Wiko argued that Articles 29 and 30 of Brussels Regulation 1215/2012 on jurisdiction and enforcement of judgements (Brussels Regulation) are applicable and that the Court is not competent for the present case [1145] .

The Court rejected this argument, underlying that each national proceedings are based on a national counterpart of a European patent. For each national counterpart, the concerned national jurisdiction is exclusively competent [1146] .

The fact the same FRAND defence has been raised in the German proceedings does not prevent the Court from moving on with its proceedings. The application of Articles 29 and 30 of the Brussels Regulation on cases with same object requires that the filed claims, not the raised defences, are identical [1145] .

The Court concluded that recognition of the Mannheim decision would not affect the pending proceedings, as the patents at stake were not the same [1147] .

Patent essentiality and infringement

Philips had declared EP 511 as essential to HSUPA (part of UMTS standard) towards ETSI on 26 November 2009 [1148] . The fact that EP 511 is essential to HSUPA was not challenged by Wiko [1149] .

Moreover, the interlocutory decision of the Court dated 16 April 2019 confirmed that claims 1, 9 and 12 of EP 511 are implemented in the UMTS standard [1136] .

FRAND negotiations and application of the Huawei steps

The Court considers that the Huawei decision [1150] does not set up strict rules, but rather guidelines for FRAND negotiations in good faith between the parties [1151] .

Regarding the first step of the Huawei decision, that is the SEP-holder’s obligation to notify the implementer of the patents at stake and the infringement [1152] , the Court underlines that this approach is different than what had been previously decided in a Dutch case prior to the Huawei decision, Philips v. SK Kassetten [1153] .

Moving on to the next step, the Court found that Wiko had not fulfilled its duty as it did not react to Philips’ notification [1154] . The Court, therefore, held that Philips was not obliged to make a licensing offer to Wiko, before starting proceedings against Wiko [1136] .

FRAND offer

Nevertheless, Philips had made an offer to Wiko on 28 July 2015 [1155] . This offer was for a worldwide licence under Philips’ UMTS and LTE SEPs [1156] .

Philips’ expert explained that the offered rate amounting to USD 1,0 per product (non-compliant rate) and USD 0,75 per product (compliant rate) was justified in view of all UMTS and LTE SEPs [1136] .

However, Wiko argued that Philips’ offer is not FRAND for the following reasons: Philips did not specify that its offer was FRAND compliant and did not explain how the offer was FRAND [1157] .

Contrary to German courts, the Court held that the Huawei steps do not imply a substantiation duty [1158] , but solely the duty to specify the amount of the rate and the way it is calculated [1159] . It bases this reasoning on the fact that the Huawei decision has to be read in light of a previous German decision, the Orange Book Standard decision, where the German Supreme Court decided it was up to the implementer to make a first FRAND offer [1136] . The Court interprets the Huawei decision as requiring the SEP-holder, as it is in a better position to do so, to make a first FRAND offer after the implementer has demonstrated itself to be a “willing licensee” [1136] . But it does not require the SEP-holder to substantiate its FRAND offer and give insights on why he believes the offer is FRAND. The Court also considers there is no duty for the SEP-holder to justify its rate in view of what other licensees are paying [1160] .

Wiko also challenged specific terms of the license, i.e. the suggested duration (until expiry of the last patent), the coupling of UMTS and LTE SEPs, as well as the requested fixed licence fees [1161] . The Court held, however, that Wiko did not provide any evidence to support its position that Philips’ offer is not FRAND [1136] . Additionally, the Court attached importance to the fact that Philips had expressed its willingness to discuss the offer and specific circumstances with Wiko [1162] . Philips had even asked Wiko to make a counteroffer, which the latter did not [1163] .

The Court further pointed out that the fact that there are different terms and conditions with other parties does not necessarily imply that the offer made to Wiko is discriminatory [1164] . It stressed that “non-discriminatory” does not mean that every licensee must be offered the same structure and rate; the “non-discriminatory” nature of an offer depends on the facts and circumstances of the specific case [1136] .

Wiko’s counteroffer

Wiko GmbH, an entity legally independent from other Wiko entities, had made a counteroffer to Philips [1165] . However, the Court did not consider this counteroffer as a counteroffer made by the Defendant of the present proceedings to Philips [1136] .

Besides that, the Defendant had also made a counteroffer to Philips after the start of the present proceedings [1166] . This offer was based on the following estimates: the total number of UMTS and LTE SEPs was 12.000, out of which Wiko estimated that Philips holds 97 families, and the aggregated royalty rate for all SEPs amounted to 12% [1167] . Wiko derived a rate of 0.001% per SEP family and made the following counteroffer to Philips [1136] :

- 0.042% for the compliant rate (EUR 0.027)

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

- 0.0315% for past sales (EUR 0.020).

Subsequently, Wiko made a further offer to Philips of 0.084 (which, in Philips‘ eyes, referred to a percentage) [1136] .

The Court held that Wiko’s counteroffers were not FRAND. It found that the counteroffer included too many patents into the total SEPs pool, because it included base station and infrastructure patents, while Philips portfolio was focused on cellphone patents [1168] . Consequently, the Court concluded that Philips held a higher percent of SEPs than estimated by Wiko [1136] . It also highlighted that Wiko did not provide any explanation with respect to a proposed discount of the initially estimated rate of 0.097% and the aggregated royalty rate [1168] . The Court also noticed that, while Wiko stated Philips’ rate should account for the technical and economic value of Philips’ SEPs, this analysis was missing from Wiko’s counteroffer [1169] . It added that Wiko’s counteroffer did not account for the value of Philips’ SEPs in view of other SEPs for the same standard [1170] .

Abuse of a dominant position

The Court held that the Huawei case requires that the facts and circumstances of a case have to be assessed to determine if there is an abuse of a dominant position [1151] . Furthermore, the Court also referred to the decision of the UK High Court of Justice in Unwired Planet v. Huawei to note that the fact that the circumstances of a case diverge from the Huawei scheme does not automatically lead to the conclusion of an abuse of a dominant position, if the SEP-holder, nonetheless, files an action against an implementer [1136] .

The Court expressly pointed out that if starting proceedings is considered as an abuse of a dominant position, then implementers have no incentives to comply with the Huawei steps and can just delay the negotiations [1171] .

With respect to the asserted claims for injunction and recall of products, the Court found that the facts and circumstances of this case were different from the German proceedings, where the Mannheim Court viewed Wiko as a “willing licensee” [1172] .

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

[1135] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.1
[1136] Ibidem
[1137] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.2
[1138] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.3
[1139] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
[1140] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 3.1
[1141] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.1
[1142] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.4
[1143] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.3
[1144] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 5.8
[1145] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.1
[1146] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.2
[1147] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.3
[1148] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.5 and 4.6
[1149] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.5
[1150] Huawei v ZTE, Court of Justice of the EU, judgement dated 16 July 2015, Case No. C-170/13.
[1151] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.14
[1152] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10
[1153] Case reference: Court of The Hague, Philips v. SK Kassetten, 17 March 2019, referred to in Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.10.
[1154] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.15
[1155] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.16
[1156] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.27
[1157] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.17
[1158] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18 and 4.19
[1159] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.18
[1160] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.19
[1161] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.31
[1162] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraphs 4.26, 4.31, 4.32, 4.36
[1163] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.36
[1164] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.34
[1165] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.20
[1166] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 2.4
[1167] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.38
[1168] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.40
[1169] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.39
[1170] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.41
[1171] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.21
[1172] Court of Appeal of The Hague, judgement dated 2 July 2019, paragraph 4.22

Updated 9 November 2020

Nokia v Daimler

LG Mannheim
18 August 2020 - Case No. 2 O 34/19

A. Facts

The defendant, Daimler, is a German car manufacturer with a global presence. Daimler produces and sells cars in Germany with connectivity features which implement standards developed by ETSI.

Nokia declared the patent involved in the present case as essential for the 4G/LTE Standard towards ETSI. ETSI requires patent holders to commit to make patents that are or might become essential to the practice of a standard accessible to users on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions.

On 21 June 2016, Nokia informed Daimler about its SEP portfolio by providing a list containing all patents and patent applications which Nokia declared as (potentially) essential towards ETSI. Daimler responded that a licence could be taken under the condition that its products actually infringe Nokia's patents.

On 9 November 2016, Nokia made a first licensing offer to Daimler. On 7 December 2016, Nokia shared further information regarding its patent portfolio with Daimler. On 14 December 2016, Daimler replied that it would be more efficient to license its suppliers manufacturing the so-called 'Telematics Control Units' (TCU), which are built into Daimler's cars. From January 2017 until February 2019, Daimler did not engage in further negotiations with Nokia and also refrained from participating in discussions which Nokia had with Daimler's suppliers.

On 27 February 2019, Nokia made a second licensing offer to Daimler to which further claim-charts mapping its patents to the relevant parts of the affected standards were attached. On 19 March 2019, Daimler rejected this offer as well, basically, by arguing that the royalties for Nokia's portfolio should be calculated on basis of the components provided to Daimler by its suppliers and not the cars produced by Daimler.

Subsequently, Nokia filed several infringement actions against Daimler before the District Courts of Munich, Duesseldorf and Mannheim in Germany.

On 9 May 2019, shortly after the infringement proceedings were initiated, Daimler made a counteroffer to Nokia. Basis for the calculation of the royalties for Nokia's portfolio was the average selling price for TCUs paid by Daimler to its suppliers. Nokia rejected this counteroffer.

On 10 June 2020, Daimler made a second counteroffer to Nokia. Nokia would be able to unilaterally determine the licensing fees (in accordance with Sec. 315 of the German Civil Code). Daimler would, however, have the right to contest the fee determined before court. The second counteroffer was also rejected.

On 18 June 2020, the German Federal Cartel Office (Cartel Office) intervened in the present proceedings before the District Court of Mannheim (Court) and recommended that the Court referred certain questions concerning the nature of the FRAND commitment to the Court of Justice of the EU (CJEU). The Court did not follow the recommendation of the Cartel Office.

With the present judgment [1173] (cited by www.juris.de), the Court granted an injunction against Daimler and also recognised Daimler's liability to pay damages on the merits. The Court further ordered Daimler to render accounts and provide information necessary for the calculation of damages to Nokia.

B. Court's reasoning

The Court found that Daimler infringed the patent-in-suit [1174] . For this reason, Nokia was entitled -among other claims- to injunctive relief [1175] .

Daimler and its suppliers that joined the proceedings asserted so-called 'FRAND-defences', arguing that by filing infringement actions, Nokia had abused its dominant market position in violation of Article 102 of the Treaty on the Functioning of the EU (TFEU) and should, therefore, be denied an injunction. In particular, it was argued that Nokia had failed to comply with the conduct requirements established by the CJEU in the matter Huawei v ZTE [1176] (Huawei decision, or framework).

The Court dismissed the FRAND-defences raised by Daimler and its suppliers as unfounded [1177] .

Huawei framework

The Court made clear that SEP holders are not per se prevented from enforcing the exclusivity rights arising from their patents Ibid, para. 146. The fact that a patent is standard essential does not mean that the patent holder is obliged to tolerate the use of its technology, unless it has allowed such use or was under an obligation to allow such use, as a consequence of holding a dominant market position Ibid, para. 146.

An abuse of market dominance by the enforcement of patent rights does not occur, if the patent holder complies with its duties under the Huawei framework [1179] . These duties presuppose, however, that the implementer, who already uses the protected technology without authorization by the right holder, is willing to take a licence on FRAND terms [1180] . The Court explained that it cannot be requested by the patent holder to 'impose' a licence to any standards user, not least because it has no legal claim to request the signing of a licensing agreement [1180] . Moreover, the 'particular responsibility' attached to its dominant position requires from the SEP holder to make 'sufficient efforts' to facilitate the signing of an agreement towards a licensee in principle willing to take a licence [1181] .

Notification of infringement

According to the Court, these 'efforts' include a duty to notify the implementer about the infringement of the patent(s) involved as well as the possibility and need to take a licence prior to filing an infringement action Ibid, para. 152. Looking at the specific case, the Court found that Nokia met this obligation Ibid, paras. 151-156.

In terms of content, the notification of infringement must name the patent infringed and describe the specific infringing use and the attacked embodiments [1182] . A detailed technical and legal analysis of the infringement is not required: the implementer should only be placed in a position to evaluate the infringement allegation, eventually by taking recourse to expert and/or legal advice [1182] . As a rule, presenting claim charts will be sufficient (but not mandatory) [1182] . The Court also pointed out that the patent holder is not required to address a separate notification of infringement to each supplier of an end-device manufactures infringing its patents [1184] .

In the eyes of the Court, Nokia's e-mails dated 21 June 2016, 9 November 2016 and 7 December 2016 meet the above requirements [1185] . The fact that -at least initially- Nokia did not indicate the concrete section of the standards documentation to which the patent-in-suit referred to was not considered harmful, since the notification of infringement is not required to facilitate a final assessment of infringement [1186] .

Furthermore, the Court held that it was not necessary for Nokia to identify in the notification of infringement the specific components which generate connectivity according to the relevant standard, e.g. the TCUs built into Daimler's cars [1187] . Since Daimler purchases and uses these components in its products, no information deficit could occur [1187] .

Willingness

Moreover, the Court found that Daimler did not adequately express its willingness to enter into a FRAND licence with Nokia and could, thus, not rely on a FRAND defence to avoid an injunction Ibid, paras. 157-231.

In the Court's eyes, the implementer has to 'clearly' and 'unambiguously' declare that it is willing to sign a licence with the SEP holder 'on whatever terms are in fact FRAND' and, subsequently, engage in licensing negotiations in a 'target-oriented' manner (citing Federal Court of Justice, judgment dated 5 May 2020 – Sisvel v Haier, Case No. KZR 36/17 and High Court of Justice of England and Wales, judgment dated 5 April 2017, Case No. [2017] EWHC 711(Pat) – Unwired Planet v Huawei) [1189] . The 'target-oriented' engagement of the implementer in licensing negotiations is of decisive importance: since implementers, as a rule, already use the patented standardized technology prior to the initiation of licensing negotiations, they could have an interest to delay the signing of a licence until the expiration of the patent, which, however, conflicts with the spirit of the Huawei decision [1190] . Accordingly, 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 [1189] .

The Court further pointed out that making the declaration of willingness subject to conditions was not acceptable [1189] . What is more, refusing to discuss about any improvement of a counteroffer made to the patent holder could also be considered as an indication of unwillingness from the side of the implementer [1189] .

Based on the above, the Court took the view that by initially making the signing of a licence subject to the condition that its products actually infringe Nokia's patents, Daimler did not adequately express willingness to sign a FRAND licence [1191] . The Court added that Daimler's counteroffers could neither be considered as a sufficient sign of willingness: especially the second counteroffer, giving Daimler the right to contest the royalty rates that Nokia would unilaterally set, would just postpone the actual dispute between the parties about the determination of the licensing fees to later court proceedings [1192] .

The Court also held that Daimler did not act as an 'willing' licensee, since it did not engage in negotiations with Nokia, but insisted that its suppliers take a direct licence from the latter, instead [1193] . Furthermore, the missing willingness of Daimler was also confirmed by its insistence on applying the average selling price of TCUs purchased by Daimler by its suppliers as base for the calculation of the licensing fees for Nokia's SEP portfolio [1194] .

Calculation of FRAND fees

The Court found that the use of TCUs as the 'reference value' for the calculation of the royalty fees for Nokia's SEP portfolio was not appropriate Ibid, para. 169.

In general, there is not only a single set of FRAND terms and conditions; usually, there is a range of licensing conditions and fees which are FRAND [1196] . Moreover, what can be considered as FRAND may differ from industry sector to industry sector as well as in time [1196] .

The Court pointed out, however, that the patent holder must, in principle, 'be given a share' in the 'economic benefits of the technology to the saleable end product at the final stage of the value chain' [1197] . Reason for that is, that the use of the protected invention 'creates the chance' to gain an 'economic profit' with the end product, which is based on the invention [1197] . The Court did not agree with the notion that by considering the value of the patented technology for the end product SEP holders benefit from innovation taking place at other stages of the value chain [1198] . The Court noted that there are several instruments available to make sure that this will not occur [1198] .

Accordingly, the Court rejected the notion of using the so-called 'Smallest Saleable Patent Practising Unit' (SSPPU), that is the smallest technical unit integrated in a product, as base for the calculation of FRAND royalty rates [1198] . The effects of patent exhaustion would prevent the SEP holder from participating in the value created at the final stage of the value chain [1198] . Apart from that, this option would make it more complex to identify and avoid 'double-dipping', meaning licensing the same patent at several stages of the value chain [1198] .

Having said that, the Court clarified that the above principle does not necessarily mean that licensing agreements should be signed exclusively with end-device manufacturers [1199] . The Court considered that there are various possibilities to factor the value of the patented technology for the saleable end product also at other stages of a supply chain [1199] .

Against this background, the Court found that the selling price of TCUs did not sufficiently mirror the value of Nokia's SEPs for the cars produced by Daimler, which are the relevant end devices in the present case [1200] . The selling price of TCUs corresponds only to Daimler's respective costs [1201] . Connectivity, on the other hand, allows Daimler to generate income from additional services offered to its clients, save costs and optimise R&D expenses [1202] . Connectivity secures the chance to create this value [1203] . In addition, the Court noted that the acceptance of the licensing model of the Avanci platform (which grants licences exclusively to car manufacturers) by several of Daimler's main competitors serves as a further indication that focusing on the value of the protected technology for the end product is reasonable also in the automotive sector [1204] .

Non-discrimination

Furthermore, the Court found that the assertion of patent claims against Daimler by Nokia was not discriminatory and could, therefore, not justify Daimler's insistence that licences must be taken by its suppliers Ibid, paras. 201-212.

The Court explained that the patent holder is, basically, allowed to freely choose the stage of the supply chain, at which it will assert its rights [1206] . The same is true with respect to patent holders with a dominant market position, since competition law does not per se limit this possibility [1206] . What is more, a dominant patent holder is not obliged to offer all potential licensees a 'standard-rate' [1206] . The non-discrimination obligation established by Article 102 TFEU intends to prevent a distortion of competition in upstream or downstream markets, but does not exclude different treatment of licensees, if sufficient justification exists [1207] .

In the present case, the Court saw no indication that Nokia's claim to use the end-product as a royalty base could impact competition [1208] . Especially the fact that in the automotive sector it is common that suppliers take licences for components sold to car manufacturers, does not require Nokia to change its practice, not least because the licences granted by the Avanci platform to Daimler's competitors show that the respective practice -which is prevailing in the telecommunications sector- has already been applied also in the automotive field [1209] . Furthermore, the Court did not consider that the assertion of SEPs against end-device manufacturers could lead to limitations in production, sales and technical development to the detriment of consumers [1210] . In this respect, the Court referred to so-called 'have-made-rights' which according to the ETSI IPR Policy should be included in a FRAND licence and allow component manufacturers to produce, sell and develop their products [1211] .

SEP holder's offer / information duty

Furthermore, the Court held that Daimler could not justify its unwillingness to obtain a licence by claiming that Nokia had refused to provide sufficient information concerning its licensing offers Ibid, paras. 216 et seqq.

The Court pointed out that the SEP holder can be obliged to substantiate the FRAND conformity of its licensing request [1213] . In case that the patent holder has already concluded agreements with third licensees on non-standard terms, it will be, as a rule, under a duty to disclose and present –at least– the content of the key contractual provisions in a way, which would allow the implementer to assess whether it has been offered different commercial conditions [1213] . The scope and level of detail of the respective duty shall be determined on a case-by-case basis [1213] .

Considering this, the Court expressed the view that Nokia had provided sufficient information to Daimler, by sharing –among other things– a study on the value of connectivity for vehicles and a licensing agreement signed with another major car manufacturer [1214] . In this context, the Court denied that Nokia was under a duty to disclose licensing agreements with smartphone manufacturers to Daimler. The Court rejected the notion that the SEP holder's information duty extends to the full content of every licensing agreement previously signed and that the SEP holder is obliged to disclose all existing agreements [1215] . Adding to that, the Court noted that licensing agreements from the telecommunications sector are not relevant for the assessment of FRAND conformity of licences in the automotive field [1215] .

FRAND defence raised by suppliers

Apart from the above, the Court also highlighted that Daimler could not profit from the FRAND defences raised by its suppliers that joined the proceedings Ibid, paras. 232 et seqq.

The Court left the question open whether an end-device manufacturer that has been sued can, in principle, rely on a FRAND defence raised by one of its suppliers, or not. According to the Court, this would, however, in any case require that the supplier is willing to obtain a licence from the patent holder calculated on basis of the value of the patent(s) in question for the end-product (and not for the component it produces) [1217] . This had not been the case in the present proceedings [1218] .

The Court did not ignore that it can be challenging for suppliers to pass on the royalty fees paid to the SEP holder to their clients [1219] . However, the contractual arrangements of third parties (here: the arrangements between suppliers and end-device manufacturers) should not, in the eyes of the Court, direct the SEP holder towar