Kather Augenstein FRAND database

On this webpage we have compiled the decisions of the German courts on standard essential patents for you. We have reduced these decisions to the FRAND-essential positions and offer them to you for download. The German patent jurisdiction is appreciated beyond the borders of Germany. For this reason, we would also like to give our English-speaking clients and colleagues the opportunity to take note of German FRAND-decisions. Accordingly, we have taken the time for you to translate these decisions into English.

We have not translated decisions that are similar in content or are dealt with at the respective Court of Appeal. However, in order to give you an overview of all FRAND-decisions of German Courts known to us, you will find a list of untranslated decisions at the end of this page.

Regional Court Düsseldorf

Regional Court Düsseldorf, 24 April 2019, docket no. 4c O 24/19

  • The PI decision is important for the development of FRAND litigation because it proves how trade secrets can be protected in German SEP infringement proceedings
  • The Respondents had concluded an NDA for litigation purposes with the Petitioner, the SEP proprietor, based on the text proposed by the Higher Regional Court Düsseldorf, decision of 17.01.2016, file no. I-2 U 31/16, and undertook to use the documents marked as strictly confidential exclusively for procedural purposes in the FRAND proceedings
  • When the Respondents announced that they would disclose information covered by the NDA in parallel proceedings, which concerned non-essential patents, the 4c. Civil Chamber issued an ex parte injunction against the Respondents because of a contractual injunctive relief on the basis of the NDA and because of danger of first ascent and stopped them from disclosing the information
DE 4c O 24/19
EN 4c O 24/19

Regional Court Düsseldorf, 09 November 2018, docket no. 4a O 15/17 – Fraunhofer Gesellschaft (MPEG LA) ./. ZTE

  • Sole availability on website does not constitute offer of a standard license agreement; only the delivery of the contract does constitute such an offer
  • Offer of a pool license in general fair and reasonable as the license seeker saves the costs for licensing the property rights individually
  • If group licenses are customary and the parent company rejects such licenses, the counteroffer of a wholly owned subsidiary of the parent company is not FRAND
DE 4a O 15/17
EN 4a O 15/17

Regional Court Düsseldorf, 09 November 2018, docket no. 4a O 17/17 – Tagivan II ./. Huawei

  • This is the case if the unit license accommodates the expected fluctuations and if, according to the contract, the licensor bears the risk of an increase in the pool patents and the licensee the risk of minimization
  • Offering a license in a patent pool does not in itself constitute an accusation of abusive inappropriateness; this is fair and reasonable because it relieves the licensee of the need to request a license from each individual holder of an IP right
  • A patent pool is not composed contrary to antitrust law because it contains standard and non-standard essential patents. Inappropriate treatment may be considered, however, if a pool systematically includes intellectual property rights that are not necessary for compliance with the standard
DE 4a O 17/17
EN 4a O 17/17

Regional Court Düsseldorf, 11 July 2018, docket no. 4c O 81/17

  • First two steps fulfilled: Notice of infringement and declaration of willingness to conclude license agreement
  • In accordance with procedural delay provisions patentee can rectify missed acts in FRAND negotiations
  • Patentee discriminates Defendant by bringing actions against him and two main competitors while not bringing actions against other competitors (selective enforcement)
  • Patentee does not have to sue large number of companies at the same time but he has to at least send notice of infringement requesting license agreements
  • Issue of exhaustion not adequately addressed; license offers must in principle take into account a possible objection of exhaustion in order to be FRAND
DE 4c O 81/17
EN 4c O 81/17

Regional Court Düsseldorf, 13 July 2017, docket no. 4a O 16/16

  • Regarding possibility to rectify missed acts in negotiation; no necessity to decide in present procedure since offers of Plaintiff were too late anyway
  • Regarding requirements for details on how the license rate is being calculated, especially to which extent the Plaintiff needs to produce evidence on comparable license agreements
DE 4a O 16/16
EN 4a O 16/16

Regional Court Düsseldorf, 31 March 2016, docket no. 4a O 73/14 – Saint Lawrence ./. Vodafone

  • Parallel proceeding to Regional Court Düsseldorf docket no. 4a O 126/14
  • Distinction between transitional and non-transitional cases
  • FRAND obligations may be rectified in transitional cases
  • Infringer must declare willingness to license in due time, depending on the individual case (corresponding to degree of detail); here 5 month clearly too long
  • Other license agreements can be used to justify FRAND conformity if they show established licensing practice
  • Portfolio licensing possible
DE 4a O 73/14
EN 4a O 73/14

Higher Regional Court Düsseldorf

Higher Regional Court Düsseldorf, 22 March 2019, docket no. I-2 U 31/16 – Unwired Planet ./. Huawei

  • Purchaser is bound to licensing practice – also in terms of amount and content – as long as license agreements of former owner are in force and also without an expressed / implied declaration
  • Contrary to foreign decisions patents are not being counted to evaluate patent portfolio. Instead the court looks at the value of the patented technology
  • Consequently, the purchasers offer is not necessarily proportionate to the number of sold patents
  • For the requirement of being “non-discriminatory” only license agreements that are still in effect are relevant
  • One must differentiate between license agreements that contain cross-licenses and license agreements that are without grant-back value – comparability only within each group
  • A patent transfer contract is not subject to Art. 101 TFEU unless it contains an anticompetitive clause as the contract aims at the exchange of services
  • Both parties have filed an appeal to the FCJ which might be the FCJs first decision on FRAND since the CJEUs Huawei ./. ZTE decision in 2015
DE I-2 U 31/16
EN I-2 U 31-16

Higher Regional Court Düsseldorf, 25 April 2018, docket no. I-2 W 8/18

  • Any party to the proceedings, including any intervener, must – in principle – have access to the court file –  therefore party must take confidentiality precautions prior to proceedings
  • If party discloses information without precautions SEP-owner accepts that secrets come to knowledge by way of inspection
  • This also applies to intervener
DE I-2 W 8/18
EN I-2 W 8/18

Higher Regional Court Düsseldorf, 18 July 2017, docket no. I-2 U 23/17

  • High degree of certainty regarding validity and infringement of SEP necessary
  • SEP owner failed to establish validity of SEP regarding high degree of certainty
  • Furthermore, urgency not given
  • Court expressing view on consequences if infringer refuses to sign NDA
  • Unjustified refusal of NDA may lead to reduction of the SEP owner’s burden of proof
DE I-2 U 23/17
EN I-2 U 23/17

Higher Regional Court Düsseldorf, 29 June 2017, docket no. I-15 U 41/17 – Sisvel ./. Haier

DE I-15 U 41/17
EN I-15 U 41/17

Higher Regional Court Düsseldorf, 30 March 2017, docket no. I-15 U 66/15 – Sisvel ./. Haier

  • Procedure set out by the CJEU in Huawei/ZTE also applies for “transitional cases”
  • FRAND obligations are to be performed consecutively; patent infringer has to express willingness to license only after the declaration of infringement as well as submit a FRAND-counteroffer only after the FRAND-offer
  • Appeal allowed and pending before Federal Court of Justice (docket no. KZR 36/17, not published yet)
  • Formal requirements regarding the FRAND-offer and consequences of FRAND-objection on claim for damages as well as information and exploitation (other opinion: Regional Court Mannheim)
DE I-15 U 66/15
EN I-15 U 66/15

Higher Regional Court Düsseldorf, 09 May 2016, docket no. I-15 U 35/16 – Saint Lawrence ./. Vodafone

  • Appeal procedure to Regional Court Düsseldorf docket no. 4a O 126/14 and parallel proceeding to docket no. I-15 U 36/16 (appeal procedure to docket no. 4a O 73/14).
  • 5 months period until declaration of willingness
  • CJEU’s decision applies retrospectively and SEP owners cannot claim that they relied on the Orange-Book decision by the Federal Court of Justice
DE I-15 U 35/16
EN I-15 U 35/16

Higher Regional Court Düsseldorf, 17 January 2016, docket no. I-2 U 31/16 – Unwired Planet ./. Huawei

DE I-2 U 31/16
EN I-2 U 31/16

Regional Court Mannheim

Regional Court Mannheim, 13 July 2018, docket no. 7 O 165/16 – IP Bridge ./. HTC

  • The enforceability of the claims for information/rendering account as well as damages on the merits remains unaffected by a FRAND declaration of commitment by the SEP holder
  • Even in the case of a limitation of the claim for damages (to FRAND license fee; not decisive in this case), the injured party can in principle demand the data required within the framework of rendering account
DE 7 O 165/16
EN 7 O 165/16

Regional Court Mannheim, 02 March 2018, docket no. 7 O 18/17

  • Plaintiff must make transparent to the defendants the facts on the basis of which it considers that the requested license rate in the license agreement offer is FRAND
  • Different market size of the licensee no objective reason for unequal treatment
DE 7 O 18/17
EN 7 O 18/17

Regional Court Mannheim, 10 November 2017, docket no. 7 O 28/16

  • The enforceability of the claims for information/rendering account as well as damages on the merits remains unaffected by a successful FRAND objection
DE 7 O 28/16
EN 7 O 28/16

Regional Court Mannheim, 17 November 2016, docket no. 7 O 19/16 – Philips ./. Archos

  • Facts why the calculation of the royalty rate is deemed FRAND must also be exlained pre-trial
  • If Plaintiff could catch-up on previously omitted steps in the course of the proceedings without being sanctioned, the guiding principle of the CJEU’s decision could no longer be accomplished
DE 7 O 19/16
EN 7 O 19/16

Regional Court Mannheim, 27 November 2015, docket no. 2 O 106/14 – Saint Lawrence ./. Deutsche Telekom

  • A counteroffer must be submitted irrespective of whether the preceding license offer made by the SEP holder itself is FRAND
  • If the alleged user does not furnish security after its counteroffer is rejected, whether or not its counteroffer was FRAND is no longer relevant
  • Patent ambush
DE 2 O 106/14
EN 2 O 106/14

Higher Regional Court Karlsruhe

Higher Regional Court Karlsruhe, 08 September 2016 – docket no. 6 U 58/16 – Sony ./. Acer

  • SEP owner has wide scope for decision making regarding FRAND terms
  • The fact that the information to be provided is internal business information which must be kept secret from the Plaintiff in view of the competitive situation of the parties does not in itself justify the provisional suspension of enforcement
DE 6 U 58/16
EN 6 U 58/16

Higher Regional Court Karlsruhe, 29 August 2016, docket no. 6 U 57/16 – Philips ./. Acer

  • No constraint of right to information/rendering account to those details which are necessary for the calculation of damages in license analogy (divergent to Düsseldorf)
  • A suspension can only be considered if the chances of success of the new nullity action are obvious
DE 6 U 57/16
EN 6 U 57/16

Higher Regional Court Karlsruhe, 31 May 2016, docket no. 6 U 55/16 – Pioneer ./. Acer

  • The court cannot limit itself to an evidentiary review but rather must review whether or not the SEP owner’s offer meets FRAND terms and conditions
  • Granting motion for temporary suspension of enforcement
  • CJEU’s decision applies retrospectively and SEP owners cannot claim that they relied on the Orange-Book decision
DE 6 U 55/16
EN 6 U 55/16

Higher Regional Court Karlsruhe, 23 April 2015, docket no. 6 U 44/15 – Saint Lawrence ./. Deutsche Telekom

  • Patentee can seek injunction order against any business in supply chain
  • FRAND declaration leads to reasonable expectation that SEP holder makes offer to manufacturer first
  • Bringing actions against distributors whilst granting licenses to manufacturers in other cases is inconsistent behavior
DE 6 U 44/15
EN 6 U 44/15

Regional Court Munich

Regional Court Munich, 11 July 2019, docket no. 21 O 9333/19 – Order Nokia ./. Continental AG

  • The Respondent is not allowed to pursue any measures, that would impede the assertion of rights by the Applicant in Germany, especially the pursue of an anti-suit injunction against the Applicant in a parallel proceeding in the US
  • A foreign proceeding, which aims at depriving the Applicant of his right of action in Germany, constitutes an unlawful infringement of the rights of the Applicant
  • The unlawfulness is to be evaluated on the basis of the German legal system, the lawfulness does not result from the lawfulness of an anti-suit injunction in the US
  • DE 21 O 9333/19
    EN 21 O 9333/19

    Further decisions

    Higher Regional Court Düsseldorf

    Regional Court Mannheim

    • LG Mannheim 7 O 66/15
    • LG Mannheim 7 O 38/14
    • LG Mannheim 7 O 24/14
    • LG Mannheim 7 O 96/14
    • LG Mannheim 7 O 26/14
    • LG Mannheim 7 O 209/15
    • LG Mannheim 7 O 298/15
    • LG Mannheim 2 O 130/15
    • LG Mannheim 2 O 229/15
    • LG Mannheim 7 O 43/16
    • LG Mannheim 7 O 44/16
    • LG Mannheim 7 O 213/15
    • LG Mannheim 7 O 212/15
    • LG Mannheim 7 O 31/16
    • LG Mannheim 7 O 98/16
    • LG Mannheim 2 O 98/16