July 4, 2022

Volume XII, Number 185

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SEP's and FRAND Laws Take Unexpected Turns Throughout Germany, Europe

Last year witnessed ever more developments regarding FRAND law cases in Germany and Europe that may have more upsides for SEP holders than for implementers of standardized technologies. However, hopes for more clarification concerning remaining questions were squashed when the referral by the Düsseldorf District Court to the CJEU in Nokia v. Daimler was withdrawn altogether with Nokia’s basic infringement complaint.

After the landmark Sisvel v. Haier cases handed down by the Federal Court of Justice (Bundesgerichtshof) in 2020, 2021 saw the subsequent publication of the reasons for the Sisvel v. Haier II decision, which was announced in November 2020. The reasons confirmed, inter alia, that patent owners might not be held liable for the actions of the patent’s previous owner. The Court thus clarified that the implementer may not raise a defence against the SEP holder if they have a claim regarding misconduct during the standard-setting process against the SEP holder’s predecessor only.

On 1 June 2021, Daimler and Nokia—rather unexpectedly—announced the settlement of their FRAND licensing litigation. As a result of the subsequent action’s withdrawal, the CJEU was deprived of an opportunity to rule on the case and issue further guidance on remaining open questions. Such guidance will now depend on future CJEU referrals.

Germany’s case law also saw the confirmation of a rather unique option to speed up FRAND negotiations in 2021. Principles laid out in Section 315 of the German Civil Code allow the implementer to make a counteroffer and leave the determination of royalties to the SEP owner. The SEP owner must then determine the royalty rates according to reasonable discretion. If the implementer does not agree that the SEP owner’s determination is reasonable, a court can set the rate. German courts, such as the Karlsruhe Court of Appeal (case no. 6 U 130/20), consider that such a counteroffer to conduct Section 315 proceedings may be FRAND compliant. Although a decision by the Federal Court of Justice is not in sight as of today, this type of counteroffer seems like a promising option in future German FRAND negotiations.

Another surprising development in 2021 came when the Munich I District Court confirmed a prior decision in Nokia v. Continental in its Interdigital v. Xiaomi decision (case no. 7 O 14276/20). According to the Nokia decision, filing an antisuit injunction may be an unlawful violation of the patentee’s right to enforce a patent before a German court. Therefore, an anti-antisuit injunction can be granted. The court also held that filing an antisuit injunction outside of Germany may be considered as unwillingness to receive a license from the SEP owner.

While awaiting the next CJEU landmark case, German courts are eagerly developing their SEP/FRAND case law. Businesses involved in SEP/FRAND negotiations should be aware of this case law given the significant and growing importance of standardized technologies and licensing SEPs.

Dominik Rissmann also contributed to this article.

© 2022 McDermott Will & EmeryNational Law Review, Volume XII, Number 61
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About this Author

Henrik Holzapfel, patent attorney, Dusseldorf, Germany, McDermott Law Firm
Partner

Dr. Henrik Holzapfel advises on all aspects of intellectual property law. He focuses on litigating patents, including the enforcement of patents essential to industry standards and FRAND defenses. Henrik also has extensive experience in litigating trade secret matters. Other areas of his practice include advising on IP licensing agreements, including advice on European competition law, drafting R&D agreements and advising on employees’ inventions. Henrik’s clients represent a wide variety of industries such as IT, pharmaceutical, biotech, medical devices, chemicals,...

+49 211 30211 230
Maximilian Kiemle Attorney IP Litigation McDermott Will Emery Dusseldorf
Associate

Maximilian Kiemle focuses his practice on IP litigation. Prior to joining McDermott as an associate, Maximilian worked at a range of international law firms where he gained exposure to a variety of areas which include patent, trademark, unfair competition, and advertising law.  Maximilian has particular automotive industry experience, including related sales and antitrust law, and contract drafting experience for automobile manufacturers.

He holds an LLM in IP and ICT Law from the Katholieke Universiteit Leuven, Belgium. Before studying in...

49-211-30211-335
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