FRAND Database.

In its Amicus Curiae Brief, the European Commission comments on the assessment of the FRAND objection in light of the CJEU’s Huawei ./. ZTE decison (case no. C-170/13) and recommends a step-by-step examination of the procedural steps laid down by the CJEU in a fixed order:

• The decision Huawei ./. ZTE intends to create a balance of interests between SEP owner and implementer
• Therefore, the CJEU has developed procedural steps which must be generally observed;
• Once an action for injunctive relief has been filed, the notice of infringement and the declaration of willingness to take a license can not be made up; 
• The notice of infringement must precisely describe the infringed patent and the nature of the infringement; references to external sources are not sufficient;
• Subsequent negotiation tactics or delays are irrelevant for the declaration of willingness to take a license in the second step; with a simple declaration, the implementer generally fulfils its obligations; in particular, the implementer may reserve the right to take a license only for patents that are valid and truly essential;
• The implementer must submit a FRAND offer even if the SEP owner’s offer was not FRAND;
• The Huawei framework only applies to injunctions and not to other types of actions such as actions for damages or information;

• Sole consideration of the license rate in contradiction to EU law; whole conduct has to be taking into account
• No formalistic understanding of the infringement notice: infringed SEP must be designated and the manner of infringement; infringement notice does not have to be included in the cover letter itself; sufficient to send Claim Charts
• Declaration of willingness to license only a starting point for negotiations: no insisting on a particular wording; declaration must be serious, however
• The seriousness of the declaration of willingness to license must be judged from the further conduct of the patent user
• Adherence to the sequence of steps in the negotiation program: sequence must not be mixed up in such a way that the offer of the SEP holder is disregard; LD examines SEP holder’s offer in any case
• Detailed examination of the SEP holder’s offer in consideration of comparable licences
• Assessment of offers on a case-by-case basis and on the basis of conduct: e.g. implementer cannot make a conducive offer without sufficient knowledge of licensing conditions and SEP holder cannot make a conducive offer without sales information
• “Offer” to be understood in economic terms: economic key aspects sufficient at the beginning
• Third party licensee has a legitimate interest in confidentiality, implementer cannot demand disclosure if it is still open whether they will seriously negotiate and if they do not disclose sales figures themselves.
• Implementer cannot request to be in every respect treated equally to a third party which was able to resolve any differences in a short time.
• Objections has to be raised in a close temporal context during negotiations;
• UPC has jurisdiction for FRAND counterclaim under Art. 32.1 lit. a UPCA
• FRAND counterclaim unfounded when Implementer offers a non-FRAND offer
• Counterclaim: rate setting by UPC possible based on a global licence
• SEP holder may, as an auxiliary request, request that its own offer be reviewed for FRAND compatibility, on the condition that the FRAND objection is upheld

• Secrecy protection is at the discretion of the court
• Existence of a business secret is not sufficient for secrecy protection by a court
• Pre-trail NDA generally weighs against granting a secrecy protection order by a court if the fact is protected by NDA, if there is no possibility of an unilateral termination and if sanctions are to be applied if business secrets are used for litigation
• The scope of protection in the NDA is in principle also binding for secrecy protection by court
• The time limit of the NDA is irrelevant
• The court can only order secrecy measures despite an NDA if there are good reasons to do so

• A distinction must be made between the infringer’s basic (general) willingness to take a FRAND license and its will to comply with specific license FRAND-conditions.
• At the stage of the licence request, only the Defendant’s general will to become a licensee needs to be verified. In contrast, the concrete willingness to take a license is only at issue once the license offer of the patent proprietor has been identified as FRAND.
• The request for licensing can be made in a general, informal and also implied manner. However, the conduct must clearly indicate to the potential licensor the general intention to take a licence.
• Mere lip service, i.e. licence requests that are clearly not motivated by a serious intention to licence, but are merely intended to slow down the patent holder and delay legal action, is not sufficient.
• If the infringer categorically insists on not entering into a certain, obviously appropriate licensing model (e.g. a pool licence) and instead adamantly demands a bilateral individual licence, although there are no justifying reasons for this, this can be an indication of his unwillingness to take a license.
• If there is no general willingness to take a license, the patent proprietor’s offer must not be examined as to whether it is FRAND-compliant. In this respect, there is a difference to the absence of the infringers specific willingness to take a license.

• The infringer’s unwillingness to take a license can be shown by a delay in
• The infringer is not only required to purposefully participate in the negotiations concerning a license agreement, but also has to carry out the next negotiating step in accordance with business practice and the principles of good faith.
• From a certain stage of negotiations on, the infringer must not be content with improving his own offer step by step. Rather, he must approach the patentee.
• The fact that a patent exploiter asserts the claim for injunctive relief does not in itself result in the claim being disproportionate. Nothing different follows from the fact that the SEP holder is seeking a license agreement and thus wishes to monetize its patents. This is because on basis of his FRAND declaration he is obliged to offer the infringer a license.
• In case of the assertion of SEP, disproportionality due to the complexity of the products is generally out of question. This applies at least in the case that the infringer is unwilling to take a license. If the SEP holder complies with its FRAND obligations, Sec. 139 (1) 3 Patent Act does not provide the infringer with an additional defense justifying disproportionality in the absence of further circumstances.

• Delay tactics can be considered in particular if the infringer does not react to the patentee‘s explanations within a reasonable period of time.
• If the license rate only depends on a few factors, a counter-offer after more than five months after sending the offer is not timely but delayed.

• The infringer’s unwillingness to take a license can be shown by a delay in the negotiations and if he wants to enforce its own (financial) licensing conditions against the plaintiff

• In FRAND negotiations, the parties must negotiate swiftly, conducively and constructively and articulate their interests;
• A patentee is usually unwilling to grant a license if it insists on discriminatory or arbitrary terms and is unwilling to waive them even at the end of the negotiations;
• A patent user can generally demand as much information and dispute as much with non-knowledge as it likes. After several years of negotiation and after repeating this behaviour several times, however, this behaviour is in any case no longer conducive and constructive;
• If a patent user requests and receives information from the patentee, it must deal with the information provided and incorporate the information into new negotiating positions;
• The patent user is unwilling to take a license if he claims that the licensing terms are worse than those of the competition, but he is not willing to enter into a license agreement on those terms;
• If the patent user is unwilling to take a license, it has no right to production of comparative license agreements;

• Die für eine Anti-Anti-Suit-Injunction notwendige Erstbegehungsgefahr kann auch dann vorliegen, wenn der Antragsgegner selbst noch keine Anti-Suit-Injunction beantragt oder erwirkt hat.

• Ein vermeintlicher Patentverletzer, der einen Antrag auf Erlass einer Anti-Suit Injunction (ASI) stellt oder dies androht, kann in der Regel nicht als hinreichend lizenzwillig im Sinne der Rechtsprechung des Gerichtshofs der Europäischen Union und des Bundesgerichtshofs angesehen werden.
• Bisherige Anträge auf Erlass einer ASI wurden sämtlich damit begründet, eine Hauptsacheklage im Erlassstaat zu schützen. Diese wiederum ist auf die Argumentation gestützt, der Patentbenutzer sei lizenzwillig.
• Wenn aber der Patentbenutzer wirklich lizenzwillig ist, wird er sich weiterer rechtswidriger Eingriffe in die Rechte des Patentinhabers enthalten.
• Da das deutsche Gericht das FRAND-Angebot des Patentinhabers wegen der fehlenden Lizenzwilligkeit des Beklagten nicht prüft, kommt es nicht zu einem Konflikt mit der Lizenzberechnung durch das chinesische Gericht.