On Monday, the press office of the Landgericht Düsseldorf (Dusseldorf Regional Court) issued a press release on six Conversant v. Huawei and ZTE cases scheduled to go to trial tomorrow (Thursday, June 18, 2020). Of note, the court that adjudicates more patent infringement cases than any other European court (though most smartphone cases, including cases over cellular connectivity in cars, go to the rocket dockets in Mannheim and Munich) reiterates its position on the availability ofcinjunctions over standard-essential patents:
"Nach der Rechtsprechung des EuGH darf ein Unterlassungsanspruch aus einem standardessentiellen Patent, für das eine FRAND-Erklärung abgegeben wurde, nur geltend gemacht werden, wenn der Patentinhaber dem lizenzwilligen Benutzer zuvor eine Lizenz zu fairen, angemessenen und nicht diskriminierenden Bedingungen (FRAND) angeboten hatte."
My unofficial translation:
"According to CJEU case law [i.e., Huawei v. ZTE], injunctive relief over a FRAND-pledged standard-essential patent may only be sought if the patentee previously offered to the willing licensee a license on fair, reasonable, and non-discriminatory (FRAND) terms."
The above sentence reaffirms that the starting point of the FRAND analysis will be what the SEP holder demanded. Should the SEP holder have failed to discharge its FRAND duties, no injunction will issue.
The three leading German patent litigation venues continue to approach and adjudge this legal question inconsistently:
The Dusseldorf court is internally consistent, and in my opinion properly interprets what the CJEU said.
The Munich I Regional Court takes the contrary position.
Mannheim is internally divided--but a court divided can stand, at least in a non-Common Law jurisdiction like Germany. The Mannheim Regional Court's Seventh Civil Chamber (Presiding Judge: Dr. Peter Tochtermann) is still aligned with Dusseldorf, while the same court's Second Civil Chamber (Presiding Judge: Dr. Holger Kircher), which used to be in the mainstream, has recently decided to turn south in this regard, though there is still a glimmer of hope for Daimler in a pending Nokia case (scheduled to be decided next week) based on an adjustment made by that judiciary panel.
The legal test is extremely important, but let's not forget that a lot depends on how a test is applied. If the analysis begins with the SEP holder's offer, but even the most egregious of royalty demands are deemed to be FRAND-compliant, it won't really help. Conversely, if a court approaches a case like the Mannheim Regional Court's Second Civil Chamber in Nokia v. Daimler, but doesn't set the bar unreasonably high for the implementer of the standard, then the outcome may still be pro-competitive. That's why next week's Mannheim ruling will be a particularly interesting one to analyze.
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