National Courts Guidance

Germany

SEP holder's notification of infringement does not have to contain either the original written FRAND declaration, nor proof that a FRAND declaration has been made during the development of the standard, provided that SEP holder leaves no doubt that it is bound by a FRAND licensing commitment.

Germany

SEP holder's notification of infringement has to (1) specify the infringed patent, including its number, (2) inform that the patent has been declared standard-essential, (3) name the relevant standard, (4) inform that the implementer uses patent’s teachings as well as (5) indicate which technical functionality of the challenged embodiment makes use of the patent. The level of detail depends on the specific circumstances of the case, particularly the technological knowledge of the implementer (or the availability of external expertise gained by reasonable efforts). However, the information does not need to be as substantiated as facts submitted with a statement of claim in patent litigation. As a rule, reference to claim charts succes.

Germany

SEP holder's notification of infringement has to take place before an action is filed, at the latest, prior to the advance payment on costs by the SEP holder. The notification must indicate, at least, (1) the number of the patent, (2) the contested embodiments and (3) the alleged acts of use performed by the implementer. The court did not rule on whether additional information, such as an interpretation of the patent claims or information regarding the part of the standard the patent reads, are also required. SEP holder is not obliged to notify the patent infringement to third parties (for instance to suppliers of the implementer), unless third parties submit a request for a license on FRAND terms to the SEP holder.

Germany

The notification of infringement 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. In general, it is sufficient to address the notification to the parent company of the (alleged) infringer. The notification must name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use. A detailed (technical and/or legal) explanation of the infringement is not required. The SEP user is also not required to inform about the essentiality of the patent to the standard and/or attach claim charts to the notification. The notification can be made alongside with SEP holder’s offer for a FRAND licence to the SEP user (prior to the initiation of court proceedings).

Germany

It is not harmful if the notification letter contains only the patent application number, but not the number of the (granted) patent in suit. SEP holders are under no obligation to regularly update lists displaying the individual patents included in their portfolio.

Germany

SEP holder’s obligation to notify the implementer of the infringing use of its SEP is also met, when the respective notification is addressed to the parent company of the (alleged) infringer.

Germany

A notification of infringement addressed to the parent company within a group of companies is, as a rule, sufficient, especially if the parent company handles licensing affairs at group level.

Germany

A notification addressed to the parent company within a group of companies is, as a rule, sufficient, unless there are indications that the parent conpany will not forward the letter to the affected subisidiary.

Germany

A notification can be also send by the patent pool, if the patent pool is entitled to perform legal actions in respect to the licensing of the patents administered.

Germany

A notification is not required, when it constitites a 'pointless formality', eg. when - according to the overall circumstances of the case- it can be safely assumed that the user is already aware of the infringement.

Germany

A notification addressed to the parent company within a group of companies is, as a rule, sufficient, unless there are indications that the parent company will not forward the letter to the affected subisidiary.

Germany

A notification can be also send by the patent pool, if the patent pool is entitled to perform legal actions in respect to the licensing of the patents administered.

Germany

A notification is not required, when it constitutes a 'pointless formality', eg. when - according to the overall circumstances of the case- it can be safely assumed that the user is already aware of the infringement.

Germany

The notification must name the patent in suit (including the patent number) and indicate the contested embodiments as well as the (allegedly) infringing acts of use. A detailed (technical and/or legal) explanation of the infringement is not required.

Germany

A notification can be also send by the patent pool, if the patent pool is entitled to perform legal actions in respect to the licensing of the patents administered.

Germany

A notification is not required, when it constitutes a 'pointless formality', eg. when - according to the overall circumstances of the case- it can be safely assumed that the user is already aware of the infringement.

France

SEP holder's notification of infringement has to contain the following information: (1) an overview, including each SEP and its filing date, (2) the parts of the standard implementing the respective patented technology, (4) an indication of the devices embodying such use (4) an indication of the consequences of acts of unauthorized use as well as (5) information to the recipient about its option to contest both the communicated information and the validity of the patents at issue.

Italy

A notification of infringement towards the parent company of the implementer does not meet the Huawei requirements, if the SEP holder brings an action only against the implementer.

UK

The notification of infringement is a mandatory condition which the SEP holder must satisfy before initiating infringement proceedings against an implementer. The precise content of such a notification depends upon all circumstances of the particular case. In general, if an implementer is familiar with the technical details and the SEPs it may be infringing, but has no intention of taking a FRAND licence, the SEP holder should not be denied an injunction, simply because it had not made a formal notification prior to the initiation of infringement proceedings.

NL

By providing information about (1) a number of patents that are (allegedly) infringed and (2) the relevant standards, (3) naming a number of the products (allegedly) infringing the patents in question, and (3) declaring its willingness to offer a licence on FRAND terms, the patent holder fulfills its notification obligation under the Huawei framework.

Germany

Presenting claim charts to the implementer, which according to commercial practice are also used in licensing negotiations, is an adequate way to give notification of infringement.

Germany

Presenting customary claim charts (containing the relevant patent claims and the corresponding passages of the standard) to the implementer is an adequate mean to give notification of infringement.

Germany

The SEP holder is not obliged to share claim charts along with the notification of infringement.

UK

The Huawei requirement of "willingness to enter into a license" refers to a willingness which is unqualified. In other words, a willing licensee must be one willing to take a FRAND licence on whatever terms are in fact FRAND.

Germany

The expression of a general willingness to license is not sufficient for assuming that an implementer is a willing licensee.

Germany

A ‘continuous willingness’ to obtain a licence is required.

Germany

An implementer must clearly and unambiguously declare willingness to sign a licence on FRAND terms and subsequently engage in licensing negotiations in a target-oriented manner. It is not sufficient to just demonstrate willingness to consider signing a licensing agreement or to enter into negotiations.

Germany

The declared willingness of a device manufacturer to enter into a FRAND license could preclude the granting of an injunction requested by SEP holder against the distributor of the same devices.

Germany

Given the circumstances of the specific case, SEP user's declaration of willingness to obtain a FRAND licence can be made even implicitly. The time frame within which the SEP user must declare its willingness must be determined on a case-by-case basis. 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 could be expected. 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.

Germany

Not every reluctant involvement of the implementer in licensing negotiations will necessarily allow for the assumption of unwillingness. The individual circumstances of each case shall be taken into account.

Germany

Willingness is not static: the fact that an implementer was (un)willing at a certain moment in time does not remain unchanged henceforth.

Germany

The court should, in principle, consider a declaration of willingness made by the implementer during the course of pending infringement proceedings. This could, however, not apply, when such declaration is made at a very late point in time (e.g. shortly before the closing of the oral arguments).

Germany

As a rule, a general (also informal) statement is sufficient to express willingness to obtain a licence.

Germany

Given the circumstances of the specific case, SEP user's declaration of willingness can be made even implicitly. In any case, a 'genuine' willingness to obtain a license must be demonstrated. For this, the whole conduct of the implementer must be assessed.

Germany

Repeating questions regarding the same topic without 'constructive remarks' can be an indication of unwillingness.

Germany

The assessment of willingness requires a comprehensive analysis of the entire conduct of the implementer. Delaying tactics applied by an implementer cannot be ‘undone’ at a later point in time without more ado.

Germany

The implementer's counteroffer shall be considered in the assessment of willingness: making a non-FRAND counteroffer shows no intention to reach a FRAND solution. The same holds true when the implementer refuses any improvement to the counteroffer.

Germany

Timing in negotiations is a factor, which must be considered in the assessment of willingness

Germany

Whether and at which time a counteroffer was made can be an ‘important indicator’ of (un-)willingness.

Germany

Every new offer cannot ‘reset’ the negotiations back to the start, making the conduct of the implementer up to that point in time irrelevant for the assessment of willingness.

Germany

The willingness of the implementer to legitimise the unauthorized use of the patent is a prerequisite for placing the burden on the SEP holder to make and elaborate a FRAND license offer.

Germany

Directing the SEP holder to suppliers as the proper licensees, is regularly a sign of unwillingness. The same is true, if the implementer expresses the will to obtain a licence limited to products purchased by suppliers unwilling to take a licence themselves.

Germany

Not responding to a proposal to use alternative dispute resolution methods and particularly arbitration for the determination of FRAND-royalties can be a sign of unwillingness.

Germany

Mere 'lip service', which is evidently not rooted in the sincere will to sign a license but rather serves delaying purposes, is not sufficient.

Germany

The lack of willingness to obtain a licence is generally a factor that can be considered for assessing proportionality to the detriment of the patent user.

Germany

An implementer is required to clearly and unambiguously express willingness to sign a licence ‘on whatever terms are, in fact, FRAND’ and, subsequently, engage in licensing negotiations with the patent owner in a ‘target-oriented’ manner.

Germany

The more detailed the infringement notification is, the less time is available to the implementer to express its willingness to conclude a FRAND licensing agreement. The implementer did not comply with the Huawei requirements, since it took more than five months to react to SEP holder's notification of infringement and its reaction consisted only in asking for proof of the alleged infringement.

Germany

The implementer did not succiently express its willingness to conclude a FRAND licensing agreement, since it took him more than three months to request a license from the SEP holder, after it had become aware of the court action brought by the SEP holder against the distributor of its products using the SEP in question.

Germany

It should be expected that a willing implementer would seek a license as soon as possible.

Germany

The time available to the implementer for expressing its willingness to obtain a licence after receipt of a notification of infringement will – as a rule– not exceed two months.

Germany

An implementer ho has not shown interest in a FRAND licence over a longer period of time after receiving an infringement notification, has to undertake additional efforts to conteract the delay.

Germany

An implementer must react timely even to a belated action of the SEP holder.

Germany

The implementer must not delay negotiations.

Germany

SEP holder's offer made only towards the parent company of the implementer is in line with the Huawei requirements. It is not required that SEP holders submit an individual offer to each company within a group of companies.

Germany

SEP holder's offer must contain all essential contractual terms and specify the conditions in a way that, in order to conclude a licensing agreement, the implementer only has to accept the offer. The calculation of the license fee must be explained in a manner that enables the implementer to objectively assess its FRAND conformity. SEP holder meets the Huawei requirements, even if its offer lies slightly above the FRAND threshold. This is, however, no longer the case, if the SEP holder offers conditions to the implementer that are manifestly economically less favourable than the conditions offered to other licensees without objective justification. In this context, the court is only required to determine on the basis of a summary assessment, whether SEP holder’s licensing offer evidently violates FRAND. (In variance with the decision Pioneer v Acer, LG Mannheim, 8 January 2016, Case No 7 O 96/14)

Germany

If the implementer does not express its willingness to conclude a licensing agreement in due time, the SEP holder can submit a licensing offer on FRAND terms even in the course of ongoing litigation against the implementer.

Germany

The implementer has a duty to examine the FRAND-conformity of the SEP holder's offer, irrespective of whether the content of the offer is FRAND-compliant in every aspect.

Germany

The offer from the holder of a SEP has to fully qualify as FRAND. Offers which lie even slightly above the FRAND threshold are not in line with the Huawei requirements. The competent court for the injunction proceedings has to assess the FRAND compatibility of the SEP holder's offer. A summary assessment of whether the SEP holder's offer is evidently non-FRAND is insufficient.

Germany

SEP holder's offer must contain all essential contractual terms and specify the conditions in a way that, in order to conclude a licensing agreement, the implementer only has to accept the offer. The calculation of the license fee must be explained in a manner that enables the implementer to objectively assess its FRAND conformity. In the case of quota license agreements, it is not sucient to indicate the royalties per unit without substantiating their FRAND character. The royalty amount must be made suciently transparent, for instance by reference to an existing standard licensing program or by indicating other reference values allowing to deduce the royalty demanded, such as a pool license fee covering patents also relevant for the standard in question. The court repeated that in this context, the court competent for the injunction proceedings is only required to determine on basis of a summary assessment, whether SEP holder’s licensing offer evidently violates FRAND (and not to fully assess FRAND conformity as requested in OLG Karlsruhe, 31 May 2016, Case No. 6 U 55/16).

Germany

It is sufficient when the (first) offer of the SEP holder is FRAND towards the 'average licensee': the implementer cannot expect that the offer is adapted to the specific circumstances of the individual case.

Germany

The duties of the SEP holder arise only if the implementer has demonstrated willingness to obtain a FRAND license.

Germany

The possibility of remedying a flawed licensing offer during pending infringement proceedings by reacting to (justified) objections of the SEP user shall not be ruled out (principle of procedural economy); it is, nevertheless, subject to narrow limits.

Germany

An offer complying with the Huawei requirements is only given, when the SEP holder provides the SEP user with all information required for assessing the FRAND conformity of the offer. 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. For the assessment of the non-discriminatory character of the offer, information on comparable agreements is needed.

Germany

It will, as a rule, be sufficient to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting a sufficient number of existing licensing agreements with third parties.

Germany

A large number of licences granted based on a standard licensing agreement provides a ‘strong indication’ that the underlying licensing terms are fair and reasonable.

Germany

It will, as a rule, be sufficient to demonstrate that the (standard) royalty rates offered have been accepted in the market by presenting a sufficient number of existing licensing agreements with third parties.

Germany

It is not required that the SEP owner provides a signed agreement to the implementer.

Germany

If the SEP owner offers licences exclusively based on a standard licensing agreement, it will, as a rule, suffice to establish the adoption of the licensing programme in practice and to show that the specific offer corresponds to the standard licensing agreement.

Germany

As fair and reasonable can be considered terms offered to a willing party, without exploiting a dominant position. Apart from the royalties, the offer must also prove reasonable with regard to the other terms as well (scope, territory etc.)

Germany

The SEP holder is free to choose the level of the supply chain for the assertion of its patents. The common practice in the automotive field that components are sold to car makers free of third-party rights does limit this right.

Italy

SEP holder's offer for a licensing agreement towards the parent company of the implementer does not need to meet the Huawei requirements, if SEP holder brings an action only against the implementer.

Germany

SEP holder's offer for a worldwide portfolio license addressed to the parent company of a group of companies complies with the Huwaei requirements, since it corresponds to the respective recognised commercial practice in the field of standards applicable worldwide.

Germany

Recognised commercial practice in the relevant sector has to be considered, when determining whether the (geographical) scope of the licensing agreement offered by the SEP holder complies with FRAND.

Germany

SEP holder's offer for a (worldwide) portfolio license is in line with the Huawei requirements.

UK

SEP holder's offer for a (worldwide) portfolio license is not contrary to competition law.

Germany

SEP holder's offer for a worldwide portfolio license addressed to the parent company of a group of companies complies with the Huwaei requirements, since it corresponds to the respective recognised commercial practice in the field of standards applicable worldwide.

Germany

SEP holder's offer for a (worldwide) portfolio license is in line with the Huawei requirements, unless the circumstances of the specific case (for instance, if the implementer limits its market activity to one geographical market) require a modification.

Germany

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).

Germany

In the electronics and mobile communications sectors, an offer for a licence at group level, is, as a rule, FRAND, since it is in line with the industry practice.

UK

SEP holder's offer for a worldwide portfolio license is not contrary to competition law. As willing and reasonable parties would agree on a worldwide portfolio licence, the insistence by the implementer on a license which was limited to a single market (UK) is not FRAND compliant.

UK

An offer for a worldwide licence may be FRAND. What is more, there may be circumstances in which only a worldwide licence or at least a multi-territorial licence would be FRAND.

Germany

FRAND refers to a range of acceptable royalty rates. As a rule, there is not only a single FRAND-compliant royalty rate.

Germany

FRAND refers to a range of acceptable royalty rates. As a rule, there is not only a single FRAND-compliant royalty rate.

Germany

FRAND is a range which leaves room for flexibility. As a rule, FRAND is determined in bilateral good faith negotiations between SEP holders and implementers, taking into account the specific circumstances of each case.

UK

In each individual case, there is only a single FRAND compliant set of terms (including royalty rates); the so-called "true FRAND" terms. However, the fact that an opening offered rate is higher than the "true FRAND" rate does not mean of itself that a SEP holder has failed to take a FRAND approach.

UK

A number of sets of terms may all be FRAND in a given set of circumstances. The court will normally declare one set of terms as FRAND; the patent holder would then have to offer that specific set of terms to the implementer. In case that the court finds two different sets of terms as being FRAND, then the SEP holder will satisfy its FRAND undertaking, if it offers either one of them to the implementer (In variance with the decision Unwired Planet v Huawei, UK High Court of Justice, 5 May 2017, [2017] EWHC 711(Pat) Case No. HP-2014-000005).

UK

It is 'improbable' that the court-determined terms, 'which are objectively FRAND will be uncommercial or unviable (as opposed to involving a higher royalty rate than the implementer wants to pay).'

Germany

SEP holder's non-discrimination obligation applies only to similarly situated users. An unequal treatment resulting in a discrimination is also at hand, when a dominant patent holder chooses to bring infringement actions only against certain, but not all competitors in a (downstream) market (or their suppliers). However, such a conduct is discriminatory only if, depending on the overall circumstances of each case, it would have been possible for the SEP holder with reasonable efforts to enforce its patent rights against other infringers too. Especially in the early stages of the implementation of a standard, the SEP holder could lack the means required to enforce its rights against a large number of infringers; in this case, the choice to enforce its rights first only against infringers with market strength appears reasonable.

Germany

The new patent holder is, in general, bound to the actual licensing practice of the previous patent holder. Deviations from the existing ‘licensing concept’ are allowed only and to the extent that (existing and new) licensees are not discriminated through less favourable conditions.

Germany

Art. 102 TFEU does not establish a ‘most-favoured-licensee’ principle (meaning that the patent holder must offer the exact same conditions to all licensees).

Germany

It is not per se discriminatory to use sale volumes as a criterion for discounts, especially if they are offered to every (potential) licensee under the same conditions.

Germany

Selective enforcement of SEPs does not necessarily mean discrimination. Especially in the early phase of adoption of a standard, considering also the costs and procedural risks involved, the SEP holder could lack the means required to enforce its rights against a large number of infringers.

Germany

It is allowed to deviate from the initial ‘licensing concept’, if this does not lead to a discrimination of either past nor future licensees through less favourable conditions. This is, for instance, not the case, when the existing licensees are offered the possibility to shift to the new terms.

UK

The non-discrimination element of a SEP holder’s FRAND undertaking does not imply a so-called “hard-edged” component, obliging the patent holder to offer the same rate to all potential licencees. The FRAND undertaking prevents the SEP holder from securing rates higher than a “benchmark” rate which mirrors a fair valuation of its patent(s), but it does not prevent the patent holder from granting licences at lower rates.

NL

The Non-discriminatory element of FRAND does not require that the patent holder offers the exact same licensing structure and rate to every licensee.

Germany

In court proceedings, SEP holders relying upon existing comparable licensing agreements with third parties for specifying a FRAND licensing offer need to particularly justify the existence of confidentiality interests, in case they seek protection of confidential information contained in such agreements. In general, considering the non-discriminating element of SEP holders' FRAND undertaking, it is not directly apparent which interest worthy of legal protection SEP holders could have in keeping conditions agreed in comparable licensing agreements confidential.

Germany

Presenting all existing comparable agreements has priority over other means for establishing the FRAND-conformity of an offer. In addition, SEP holders have to produce court decisions rendered on the FRAND-conformity of the rates agreed upon in the comparable agreements, if such decisions exist. 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 as well as agreements concluded between other parties in the same or a comparable technical field, which they are aware of.

Germany

The new SEP holder needs to make sure that it will be able to present also licensing agreements of the prior SEP holder in court proceedings. An exception could be made only when presenting such agreements would violate contractual confidentiality obligations. Agreeing to comprehensive confidentiality clauses will, however, as a rule, bar the SEP holder (and/or its successor) from invoking confidentiality with respect to comparable licences in pending court proceedings.

Germany

The SEP holder's duty to make a FRAND licensing offer entails also an 'information duty' regarding its 'licensing practice'. As a rule, this 'information duty' will extend to comparable licensing agreements. The SEP holder is, however, not obliged to disclose the full content of all existing comparable agreements in any case.

Germany

The implementer has no legal claim to request full disclosure of comparable agreements signed by the SEP holder.

Germany

Comparable agreements are an 'important indicator' of the FRAND conformity of an offer. The patent holder will, in principle, need to provide information on all essential comparable agreements. However, it is not required to present all comparable agreements along with the licensing offer.

Germany

Comparable agreements are an 'important indicator' of the FRAND conformity of an offer. The patent holder will, in principle, need to provide information on all essential comparable agreements. However, it is not required to present all comparable agreements along with the licensing offer.

Germany

The SEP owner is not required to present the full content of all the licensing agreements already concluded. Only the relevant agreements should be disclosed, considering clearly delineated product categories. Licences with cross-licensing-elements are not relevant, especially when the implementer does not have any patents himself.

UK

In infringement proceedings, existing comparable licensing agreements between the patent holder and third parties can, as a rule, not be subject to "external-eyes-only" restrictions, since such agreements can be highly relevant documents as comparators for determining Fair, Reasonable and Non-Discriminatory licensing terms.

Germany

The offer included different (higher) royalty rates than those agreed in the previous agreement between the parties does not by itself render the offer unreasonable.

Germany

Parties to court proceedings seeking protection of confidential information, upon which they rely for specifying a FRAND licensing offer, must (1) identify such information and concretely explain why it constitutes a business secret; (2) present in detail which measures were taken so far for securing confidentiality with respect to the information in question; (3) demonstrate in a substantiated and verifiable manner (for each information separately), which concrete disadvantages would be suffered, if the information would be disclosed and (4) explain, with which degree of certainty the said disadvantages are expected to occur.

Germany

The party seeking access to confidential information in pending proceedings is obliged to sign an NDA, if the holder of such information establishes the need for protection and demonstrates which concrete disadvantages would be suffered with which degree of certainty, if the information would be disclosed. In this case, the refusal to sign an NDA would allow the party holding confidential information to limit its pleadings in trial to ‘general, indicative statements’.

UK

Unless the parties to the proceedings agree otherwise, the use of “external eyes only” mechanisms for protecting documents containing confidential information in litigation can be applied only to exceptional cases. Documents of limited, if any, relevance to the proceedings can be subject to “external eyes only”restrictions, if their disclosure could be unnecessarily damaging for the party seeking protection. On the other hand, documents key to the case cannot, as a rule, be subject to such a regime (Article 6 of the European Convention on Human Rights).

France

In accordance with the newly introduced Article L. 153-1 of the French Commercial Code, the court ordered the disclosure of confidential documents, including comparable licensing agreeements, 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. 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. On this basis, the court will decide whether further measures are required for the protection of potential confidential information, or not.

Germany

Prior to disclosing confidential information in court proceedings, parties seeking protection of such information must undertake efforts to sign a Non-disclosure agreement (NDA) with the opposing party (and any intervener). If the opposing party (or an intervener) unjustifiably refuses to enter into an NDA, the party seeking protection of confidentiality can meet its obligation to specify its FRAND licensing offer just by making “merely indicative observations” in the trial, to the extent (and not beyond) that is required for protecting its justified confidentiality interests.

UK

A patent holder requested by the European Telecommunications Standards Institute (ETSI) to give a FRAND declaration is not under an obligation to make such declaration. The ETSI IPR Policy does not oblige ETSI members which do not hold patents to make a FRAND declaration. In case that the parent company of an ETSI member made a FRAND declaration towards ETSI, the ETSI member is not obliged under the ETSI IPR Policy to make sure that its parent company performed its FRAND commitment. Moreover, the fact that the parent company's FRAND declaration towards ETSI refers also to its “Affiliates” does not establish a FRAND obligation for subsidiaries which themselves do not hold patents subject to the declaration.

UK

Only if a licence is taken, the implementer can raise a FRAND defence to the infringement of a SEP.

UK

The beneficiaries of the ETSI FRAND undertaking are those who agree to take a licence 'on terms that are objectively FRAND'.

Germany

Even if SEP holder’s licensing offer is not FRAND, the implementer still has to react. (In variance with the decision Sisvel v Haier, OLG Düsseldorf, 13 January 2016, Case No. 15 U 65/15)

Germany

The implementer has to submit a FRAND counter-offer, irrespective of whether the preceding licensing offer made by the SEP holder is FRAND. Implementer's obligation is triggered, when SEP holder's offer formally contains all information (in particular regarding the royalty calculation) required for the implementer to make a FRAND counter-offer.

Germany

The implementer is not required to respond to a SEP holder's license offer, if the terms of such an offer are not FRAND.

Germany

The implementer is required to respond to SEP holder’s license offer, even if, in his view, this offer is not FRAND. This is not the case, when SEP holder's offer is evidently not FRAND on basis of a summary assessment. (Contrary to the decision Sisvel v Haier, OLG Düsseldorf, 13 January 2016. Case No. 15 U 65/15).

Germany

Submitting a counter-offer only 1,5 years after receiving SEP holder's licensing offer and half a year after the SEP holder brought an action against the implementer is not in line with the Huawei requirements.

Germany

The implementer's obligation to respond to SEP holder's offer is a manifestation of its due diligence obligations arising from the principle of good faith as well as recognised commercial practice in the business field in question.

Germany

A counter-offer needs to be made in due course, which means as soon as possible, taking into account the recognised commercial practice in the field and the principle of good faith.

Germany

Implementer's counter-offer is not "specific" in terms of the Huawei requirements, when the royalty amount is not specified in the counter-offer itself, but shall be determined by an independent third party, instead.

Germany

Implementer' s counter-offer limited to a license for one single market (Germany) is non-FRAND, particularly if implementer (or the group of companies it belongs to) distributes products using the SEP in question also in other markets.

Germany

Implementer's counter-offer does not meet the Huawei requirements, when the royalty amount shall be determined by an independent third party and the counter-offer is limited to a license for one single market (Germany), although the implementer (potentially) infringes the SEP in question in several countries in which the SEP is protected.

Germany

SEP user’s obligation to make a FRAND counter-offer to the SEP holder is only triggered, when the SEP holder has provided all information required for assessing the FRAND conformity of its offer to the SEP user.

Germany

SEP user’s obligation to make a FRAND counter-offer to the SEP holder is only triggered, when the SEP holder has provided all information required for assessing the FRAND conformity of its offer. SEP user should be given sufficient time to assess the SEP holder's offer and eventually make a counter-offer, before infringement proceedings are initiated by the SEP holder.

Germany

A counteroffer limited to a licence covering solely the portfolio of only one member of a patent pool and/or setting different licensing rates for different regions without factual justification is not FRAND.

Germany

A counteroffer limited to a agreement entered into only by one affiliate company within a group of companies is not FRAND.

Germany

A counteroffer is not FRAND, if the implementer fails to sufficiently explain why its terms are FRAND, in view of the terms offered by the SEP owner. The counteroffer should present all terms, and not only a royalty rate.

Germany

A counteroffer made after the initiation of infringement proceedings will, as a rule, not be acceptable. Exceptionally, such counteroffer could be considered, when the implementer was willing and constructive from the start of the negotiations with the SEP holder prior to litigation.

Germany

A counteroffer, which uses the average purchase price of the Telematic Control Unit integrated as a component in a car as royalty base, is not FRAND. The adequate royalty for SEPs is reflected in the economic value created by the use of the technology for the end-product.

Germany

A counteroffer can rely on the 'top-down'-approach for the royalty calculation. However, using the number of all patents declared as standard-essential (and not the number of actually standard-essential patents) as basis for determining the patent holder's share of SEPs is not FRAND.

NL

A counter-offer made by the implementer for the first time during the course of infringement proceedings initiated by the patent holder does not constitute -in retrospect- the infringement action abusive in terms of Art. 102 TFEU.

Germany

The counteroffer was no proper basis for negotiations, but a clear demonstration of its continuing intention to delay the trial and license discussions.

UK

In each individual case, there is only a single FRAND compliant set of terms (including royalty rates), the so-called "true FRAND" terms. However, the fact that an offered rate is lower than the "true FRAND" rate does not mean of itself that an implementer has failed to take a FRAND approach.

Germany

The implementer is obliged to both render accounts regarding acts of use and to provide security for potential royalties, both based on its counter-offer. The implementer has to fulfil this obligation after the rejection of its first counter-offer, regardless of whether subsequent offers and counter-offers were made. Fulfilling this obligation more than a month after implementer's first counter-offer was rejected, does not meet the Huawei requirements.

Germany

The fact that the implementer has - allegedly - terminated its use of the SEP, does not remove its obligation to provide security for past periods of use.

Germany

Security has to be provided after the rejection of the implementer's first counter-offer by the SEP holder, regardless of whether subsequent offers and counter-offers were made. Payment of security several months after implementer's first counter-offer was rejected does not meet the Huawei requirements. This is also true, if implementer provides security only with respect to acts of use in one market (Germany). The Huawei requirements are also not met, when the implementer only proposes to have the security - if requested by the SEP holder - determined by an arbitration tribunal or by a different (English) court.

Germany

The fact that the implementer has - allegedly - terminated its use of the SEP, does not remove its obligation to render accounts for past periods of use.