Friday, 18 November 2011

FRAND-Land Ends on Dutch-German Border

The Dutch-German friendship, which was already cumbered by some historical but now resolved (see pictures on the right) and new disputes (in particular litigations on Italian camping sites this summer), has suffered from two further fateful blows in the last week.

On Monday, Germany defeated the Netherlands 3:0 in a "friendly" football match and, as reported by Florian Müller on FOSS-patents, a judge of the Mannheim Regional Court has clarified that FRAND-Land ends on the German-Dutch border on Friday.

Florian Müller reports:

"The presiding judge was not particularly receptive to Apple's FRAND defence. Unlike the Dutch judge who told Samsung that there was not case for an injunction since it failed to make an offer to Apple on FRAND terms, the Mannheim judge cited the Orange Book decision of the Federal Court of Justice of Germany and stressed that party requiring a license to a standard-essential patents is responsible for obtaining one, and has to make an offer to the patent holder." 

In its widely "Orange Book" decision, the BGH had argued that the non-acceptance of fair and reasonable licensing conditions by a patentee holding a standard-relevant patent could be considered an abuse of a position dominating the market. The market referred to is the licensing market and not the market of the standardized products.

In the "Orange Book" case, the patentee was the only holder of a standard-relevant patent and thus clearly dominates this licensing market. The Mannheim Regional Court has decided in an earlier decision 7 O 100/10 (available under that the "Orange Book" defence is equally applicable to standards established by multiple parties and in cases were FRAND declarations have been made.

The abusive behaviour, which would eventually consist in declining an unconditional offer so as to be unfair towards the offering party, requires that such an unconditional offer has actually been made and that fair and reasonable licensing fees have been duly paid. According to the Mannheim Court, the FRAND-defence is further forfeited by failing to meet the "unconditional" requirement if the infringement and validity is contested in a main request and the FRAND-license is requested only in the alternative.

However, it is to be noted that none of these decisions has addressed the problem of preliminary enforceability in these cases. The Mannheim District Court has emphasized in the decision 7 O 100/10 that the necessary steps for obtaining a FRAND license have to be taken starting the use of the patented technology. Further interesting remarks on this issue stemming from the same court may be found in the decision 7 O 94(08), (available under, in which the court states that the FRAND declaration could possibly be interpreted as a pactum de non petendo (non-aggression agreement), but has finally left this question open.

The decision is scheduled for January 20 and 27, 2012 and Patlit will, of course, keep you informed.

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