SISVEL Vs. Haier: First German FRAND Case Decided Post Huawei vs. ZTE

The information in this blog comes to me via the German law firm of Arnold Ruess and the English language website of IAM (Joff Wild) (Nov. 12, 2015).

In what is apparently Germany’s first decision relating to FRAND and standards essential patents (SEPs) since the European Court of Justice’s decision in the Huawei vs. ZTE case, the Italian company Sisvel has been granted injunctive relief by the Düsseldorf Regional Court after a finding by that court that Sisvel’s patents had been infringed by Haier (Cases 4a O 93/14 and 4a O 144/14) (Nov. 3, 2015). The judgments are based on the German patents that belong to the Sisvel wireless patent portfolio. The judgements have not yet been appealed.

According to the IAM translation of the Arnold Ruess news release, the Court made the following determinations regarding the FRAND defense raised by Haier.

“The Court … held that the FRAND defense raised by Haier was not successful as it had not complied with the … requirements [of Huawei vs. ZTE]. It therefore did not need to decide on the preliminary question whether the FRAND defense was applicable at all as, …this would only be the case if the SEPs in suit actually conferred SISVEL with a market dominant position.

The Court found that SISVEL had complied with point 1 (information on patent infringement) [of Huawei vs ZTE]. In cases where the action was filed before [Huawei vs. ZTE] … was rendered, it is sufficient that the infringer gains knowledge about the infringement via the statement of claims.

The Court also confirmed that SISVEL had made a suitable license offer to Haier. It is sufficient if the license offer is addressed to the mother company of the alleged infringer in order to initiate negotiations. It would be a mere formality if a patent holder had to address all affiliates of a group separately.

The Court did not have to dwell on the details of whether SISVEL’s offer was FRAND and also left open whether Haier was already excluded from the FRAND defense as it had not reacted in a timely manner [as required Huawei vs ZTE, which would have mandated that if SISVEL does not accept the counter-offer, Haier had to render account and provide security for the payment of past royalties.]

… The Court in addition held that such rendering of account and the provision of a bond has to take place within a month after the rejection of the counter-offer by the patent holder.”

Huawei vs ZTE and its relationship to proposed NDRC IP abuse guidelines are discussed in further detail here.

I look forward to reading this important decision in full.

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