Saturday, October 26, 2019

Munich I Regional Court developing Local Standard-Essential Patent Rules applying Huawei v. ZTE CJEU case law

This is the second post on the Munich I Regional Court's celebration of the 10th anniversary of its Local Patent Rules (on Thursday). In the previous pos (on the history of Munich's Local Patent Rules and on Presiding Judge Tobias Pichlmaier's explanation of the rationale behind granting Nokia's anti-antisuit injunctions against Daimler supplier Continental) I already announced that I would separately write about Presiding Judge Dr. Matthias Zigann's outline of various ideas surrounding the court's forthcoming Local Standard-Essential Patent Rules.

Judges Pichlmaier and Dr. Zigann preside over different divisions (21st and 7th Civil Chamber, respectively). Local Rules obviously apply to both patent-specialized divisions alike.

NOTE: Those new rules are still work-in-progress. The court has floated some ideas at this stage, but nothing is final yet. The court's current plan is for Judge Dr. Zigann to unveil a near-final draft on December 12, after which there is still going to be a chance for stakeholders to provide input that might result in further modifications.

Despite key parts still being in flux, I wanted to share the court's preliminary plans with you, and I wish to thank Judge Dr. Zigann for having authorized the publication of the two slide decks you can find below.

First, the English-language slide deck Judge Dr. Zigann used in his presentation at an ETSI IPR committee meeting earlier this month (this post continues below the document):

ETSI IPR SC Meetings Zigann... by Florian Mueller on Scribd

Second, the German-language slides shown at the Thursday (October 24) event (this post continues below the document):

Pichlmaier Und Zigann 10 Ja... by Florian Mueller on Scribd

One of the ideas that were incorporated into the draft rules between the ETSI meeting and the October 24 event is that an implementer can specifically name patents that should be excluded from the scope of the license, and by doing so unilaterally can avoid paying license fees for them.

What will be subject to further discussion is an adoption of the Düsseldorf appeals court's stance on the non-discrimination requirement attaching itself to standard-essential patents and survives tranfers. The final Munich rules may differ from the Düsseldorf doctrine.

One idea that neither presentation elaborates on in full detail is that a patentee may divide a portfolio up into two groups--sort of an A list and a B list of SEPs. The patents on one of the two lists would be eligible for a retroactive reduction of the license fee by means of an implementer opting out. Closely related to the concept of the two lists is the preliminary idea of a "joker" that might reduce the royalties due to zero: that would be the case if any nullity and/or declaratory judgment actions brought by the implementer succeeded in taking down a contractually-predefined number of declared-essential patents from the A list.

For now I will refrain from sharing my thoughts on the Munich court's preliminary SEP rules here. I just wanted to be of service to my esteemed readers and share the two documents as well as some additional information on where things stand. Again, this is very much in flux. The court has received input from various stakeholders, and will continue to listen to feedback and suggestions until those rules are finalized, which may very well happen by the end of this calendar year.

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