Decision Keyword:
Voice signal encoders
Law applied:
TFEU Art. 102
German Patent Act (PatG) Section 139 (1), (3), Section 140a (1), (3), Section 140b (1), (3)
German Civil Code (BGB) Section 242
Summary:
- Since the antitrust review of a license offer made by the plaintiff SEP holder to the defendant patent infringer is usually very time-consuming and may require the assistance of experts in the context of litigation, but the plaintiff must be able to defend itself effectively and quickly against unauthorized use of its patent, it must be ensured that raising the FRAND objection does not lead to a de facto curtailment of the legal position of the patent owner, but merely constitutes a corrective measure against (antitrust) abusive conduct on the part of the plaintiff seeking an injunction. The negotiation steps referred to by the ECJ in its “Huawei” decision (GRUR 2015, 764) must be seen in this light.
- The question of abuse of market power by the plaintiff - to be examined only on the defendant's objection - arises in principle in the context of the merits, since the FRAND objection ultimately includes the defendant's objection that it has a claim against the plaintiff for the grant of a license (which is to be regarded as FRAND) (see Federal Supreme Court GRUR 2021, 585 para. 83 - FRAND-Einwand II), so that it is in fact a dolo agit objection (Section 242 German Civil Code (BGB)).
- The negotiation steps mentioned by the ECJ in the "Huawei" decision (GRUR 2015, 764) must be complied with by the parties in principle. However, strict compliance with these steps should not be an end in itself. Therefore, in injunction proceedings, which are "only" concerned with whether the patent owner whose rights have been infringed is also entitled to the procedural possibility of enforcing its patent claim against the infringer against whom the claim has been asserted, the meaning and purpose of each of the steps listed by the ECJ must also be examined, as well as whether a party can (still) invoke purely formal "errors" in a step at an earlier stage of negotiations in good faith at a later point in the court proceedings, in particular, for example, if it has subsequently nevertheless entered into license negotiations despite the "erroneous step" of the other party.
- If the requirements for the obligation to provide security by the defendant raising the FRAND objection are met, the amount of the security must in principle be based on the (last) offer made by the defendant seeking an injunction (because this alone is decisive for the success of the FRAND objection as a dolo agit objection). If this last offer includes a (worldwide) portfolio license, the security must cover the license fee due for this and may not be "calculated down" to the patent in suit in isolation and the territory of the Federal Republic of Germany. In addition, a qualified security is required in such a way that a binding declaration by the defendant must ensure that the plaintiff receives the security if his offer ultimately proves to be FRAND-compliant and the asserted patent infringement is also legally affirmed.
- If the infringer does not provide security in the aforementioned sense, the FRAND objection is not successful without the plaintiff's offer having to be checked for its FRAND conformity.
OLG Munich (Antitrust Board), final judgment of 20 March 2025 – 6 U 3824/22 Kart –
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