The Cartel Senate of the Federal Court of Justice ruled in its judgment of 5. More 2020 (KZR 36/17 – “FRAND objection”) the requirements for the antitrust compulsory licensing objection for standard-essential patents (Sep) specified. The patent holder was entitled to compensation, information desk, Destruction and recall awarded.

Guiding principle (abstract)

• a) The enforcement of claims for injunctive relief, Recall and destruction by the patent holder can also prove to be abusive, if the infringer himself though (noch) has not declared its willingness to enter into a license agreement on certain reasonable terms in a legally binding manner, is to be attributed to the patent proprietor, that he has not made sufficient effort on his part, to meet the special responsibility associated with the dominant market position and to enable an infringer who is generally willing to license to conclude a license agreement.
• d) The infringer can counter the patent proprietor's claim for damages with his own claim for damages, which is based on the non-fulfillment of its right to conclude a license agreement on reasonable and non-discriminatory terms. […]

Facts

The plaintiff held a patent essential to the GPRS standard and had made a FRAND declaration to ETSI. She dismissed the defendant's company, which sells mobile phones and tablets in Germany, in December 2012 to the infringement and your license offer. It was only around a year later that the other side expressed hope for “formal negotiations”; later declarations made the granting of the license dependent on this, that German courts legally establish the violation and legal validity. The Düsseldorf Higher Regional Court had partially accepted the FRAND objection.

The decision

The BGH confirms the patent infringement and the plaintiff's dominant market position, but denies abuse. The patent holder must first notify the infringer of the infringement; Patents are sufficient for this, Infringement and attacked products, Claim charts are not mandatory. Further duties will first come to him, if the violator clearly and unambiguously declares his willingness, to take a license on FRAND terms, and then participates in the negotiations in a targeted manner. Who stays silent for months, only signals a willingness to negotiate or ties its willingness to conditions, is not licensed. Portfolio licenses are generally permitted, if no payments are required for non-essential patents.

The infringer can only limit the claim for damages with his own counterclaim, which requires a previously expressed willingness to license. Because this was missing, the damages remained unlimited.

Importance for practice

employees, who sell standard-compliant products, should respond quickly and clearly to reports of infringement and actively promote negotiations. Patent holders should carefully document notices and offers. FRAND licensing continues to be guided by the framework of the ECJ Huawei/ZTE decision as well as the case law of national courts and the Unified Patent Court; the decision reflects the status at the time of the judgment.

Full text: rechtsprechung-im-internet.de (File number KZR 36/17)

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Summary of the decision; no legal advice in individual cases.