Landgericht Dsseldorf Roadmap and Traffic Signs 28 November

Landgericht Düsseldorf Roadmap and Traffic Signs 28 November 2018 Richterin am Landgericht Dr. Bérénice Thom

Landgericht Düsseldorf EJC, GRUR 2015, 764 – Huawei/ZTE SEP Holder Alleged Infringer Notice of Infringement Willingness Licence Offer Reaction/Counter-Offer Reaction Dr. B. Thom Security/Rendering Account

Landgericht Düsseldorf Roadmap and Traffic Signs § EJC´s roadmap § Since 2016… … national courts have been putting up some traffic signs along the way § A few highlights from the German perspective Dr. B. Thom

Landgericht Düsseldorf National Courts § Courts have to address a number of problems resulting from the particular case § How does the roadmap apply? § More background information required in every single case Dr. B. Thom

Landgericht Düsseldorf Notice of infringement Who is talking to whom? Dr. B. Thom

Landgericht Düsseldorf Notice of infringement § The parties to the dispute are: § Anyone who is the proprietor of the SEP (= SEP holder) and § Typically the company marketing the products in Germany What if either or neither of them participated in licence negotiations before the case was taken to court? Dr. B. Thom

Landgericht Düsseldorf Notice of infringement § SEP Holder Parent Company § Patent-Pool Administrator Authorised Person in an Affiliated Company Dr. B. Thom

Landgericht Düsseldorf FRAND Offer § Step by step § meaning you can´t skip making a FRAND licence offer although it might be obvious that there will be no FRAND counter-offer § Licence offer on Fair Reasonable And Non-Discriminatory terms § F&R = acceptable and not exploitative § and = sounds nicer than FRND… § ND = equal treatment in general, different treatment only due to objective reasons § FRAND is not a specific number but a range Dr. B. Thom

Landgericht Düsseldorf FRAND Offer § Prior to the infringement proceedings § Offer during trial? § 2 nd instance: In general, an offer is possible § 1 st instance: Depending on the specific circumstances of the case, offer could be too late if the defendant does not have enough time to react properly § According to 1 st instance, there is no moderation of the negotiations by the Court Dr. B. Thom

Landgericht Düsseldorf FRAND Offer § Specifying the way in which the royalty is calculated § Giving the main reasons why the SEP Holder considers the offer FRAND § Presenting licence agreements already closed and demonstrating their acceptance in the market § Representative account of agreements negotiated separately (royalties differ in a certain range, lump sum/per unit) § Single standard licence agreement with the same standard conditions § Invariably, in a case involving a dispute over abusive conduct due to discrimination, all specific details -- including the agreements -- have to be presented to the court Dr. B. Thom

Landgericht Düsseldorf FRAND Offer Closed Licence Agreements = Strong Indication of FRAND terms § Best choice for specifying the calculation due to high significance of being customary § Presenting corresponding case law § Indication can be weakened Dr. B. Thom

Landgericht Düsseldorf Non-Disclosure Agreement (NDA) § SEP holder: § Alleged infringer: Showing valid interests in confidentiality Supporting negotiations by reacting according to his/her interests § If the alleged infringer refuses to sign an NDA without good reason the SEP holder cannot generally point to his/her interests in confidentiality but has to present facts serving as a calculation basis in a reasonable manner § If the SEP holder complies with this requirement, the alleged infringer cannot argue that the SEP holder´s fragmentary argumentation is not specific enough to decide whether the offer is FRAND or not Dr. B. Thom

Landgericht Düsseldorf Conclusions § It is still a rocky path between “it cannot be impossible for the SEP holder to seek an injunction“ and “no abuse of dominant position“ § It might get smoother with every step Dr. B. Thom

Landgericht Düsseldorf Thank you for your attention! Dr. B. Thom