May 28, 2020
Since the Court of Justice of the European Union (CJEU)’s decision in the case of Huawei v ZTE (July 2015) regarding competition law implications for FRAND-based standard essential patents (SEPs), various national courts have sought to clarify the scope of what can be considered ‘appropriate behaviour’.
In a recent SEP ruling, the Higher Regional Court of Karlsruhe comments on the interpretation of the four steps defined by the CJEU in 2015, and in particular, addresses the following key points:
- Correct addressee of the notice of infringement;
- content of the infringement notice;
- deadline and catching up delay of the user response;
- scope of disclosure of existing license agreements with third parties for the SEP holder; and
- scope of financial reporting for the SEP user.
Subject of the proceedings
Based on an SEP, the SEP user was sentenced in the first instance at the Mannheim District Court to cease and desist; to provide information; to destroy; to recall; and to pay damages. The SEP user appealed against this decision and was directed to the Higher Regional Court of Karlsruhe.
Addressee of the infringement notice
In this judgment, the Higher Regional Court of Karlsruhe confirmed that transmission of the infringement notice to the defendant is not absolutely necessary in order to fulfil the obligation under Step I of the CJEU decision. Instead, it is sufficient to send the notice of infringement to a group company which is responsible for licence negotiations and licensing within the group.
Content of the infringement notice
At the courts in Düsseldorf, a very high standard has been applied so far to the content of the notice of infringement. From the point of view of the Higher Regional Court of Karlsruhe however, it is sufficient that the SEP user is able to get a basic picture of the infringement allegation. For this purpose, contrary to the opinion of the Düsseldorf courts, no specific claim charts are necessary in Karlsruhe. Instead, reference to the SEP and the corresponding sections in the standard are adequate.
Deadline and catch-up of the SEP user’s reply
The Higher Regional Court of Karlsruhe’s deadline to reply to the infringement notice is considered to be two months. This relatively short period is justified by the fact that only an overview of the infringement notification is necessary for the first reply. A detailed examination of the merits of the infringement allegation is regularly conducted in the subsequent licence negotiations. However, if this deadline is missed, it is possible to make up for the failure to reply, even if the infringement proceedings are already underway. The same applies to the commencement of licence negotiations, provided that a pressure-free negotiation situation exists between the parties. In this aspect, a harmonised opinion emerged between the relevant courts in Germany.
Scope of disclosure of existing licence agreements with third parties for the SEP holder
The Higher Regional Court of Karlsruhe sets a lower standard than the courts in Düsseldorf for an assessment of whether a licence offer of the SEP holder meets the FRAND criteria. According to the present judgment, it is enough to hand over and explain the content of existing licence agreements regarding the FRAND assessment. In the present case, these reduced criteria were not taken into account, so the court considered the claims for injunction and recall to be abusive. In Düsseldorf courts, it is usually expected that full copies of these agreements must be submitted.
Scope of accounting for the SEP user
The Higher Regional Court of Karlsruhe also has a different opinion to the courts in Düsseldorf when it comes to the scope of accounting. Thus, in the present case, the SEP user must provide information on profit and costs in addition to the accounting regarding the FRAND license.
While the German infringement courts further clarify the CJEU requirements for SEPs, the courts in Düsseldorf, Munich and Karlsruhe/Mannheim all appear to apply the judgment differently on some key points.
For an SEP holder, this means that the choice of jurisdiction should be made with caution at this stage. In particular, the court in Mannheim/Karlsruhe seems to offer itself as comparatively friendly for an SEP holder, as the claims for infringement notification are lower, the scope of disclosure of existing license agreements is more limited, and the scope of the information that can be obtained through accounting is broader.