Decoding method (Düsseldorf District Court)

Law applied:

EPÜ Art. 64 I, III

PatG §§ 9 S. 2 Nr. 1, 10 I, 139 I, II 1, 140 a I, III, 140 b

Summary:

(1) If the plaintiff proceeding from an SEP holds a dominant position in the market, he shall not be under a duty to give notice of infringement if it can be assumed with certainty on the basis of the circumstances that the alleged infringer is aware of the use of the patent in suit and his objection that the plaintiff did not give him notice of this appears to be an abuse of rights. Moreover, the duty to notify is satisfied in any case if notices are given to the parent company of the alleged infringer (following OLG Düsseldorf GRUR 2017, 1219 [1224] - Mobiles Kommunikationssystem). The same factual situation must be assumed if a subsidiary or a certain employee there has taken a leading role in years of licensing negotiations and has primarily negotiated with the corresponding contacts on the plaintiff's side.

(2) In terms of content, the duty to inform does not require detailed (technical and/or legal) explanations of the infringement allegation. It is sufficient if the other party is put in a position to be able to form its own opinion of the justification of the accusation submitted to it (connection to OLG Düsseldorf GRUR 2017, 1219 - Mobiles Kommunikationssystem).

(3) The SEP holder shall explain the essential reasons on the basis of which it considers the remuneration parameters proposed by it to be FRAND. If the SEP holder has already granted licenses to third parties, the SEP holder shall explain in particular why the license fee proposed by the SEP holder is FRAND against this background (following OLG Düsseldorf GRUR 2017, 1219 [1227] - Mobiles Kommunikationssystem). In case of a sufficient number of license agreements and such proven acceptance on the market (for example, via the market share of the products licensed at a certain royalty rate), no further information on the reasonableness of the royalty rate is usually required anymore (connection to LG Düsseldorf Urt. v. 13.07.2017 - 4a O 154/15, BeckRS 2017, 132078; LG Düsseldorf Urt. v. 11.07.2018 - 4c O 77/17, BeckRS 2018, 25099).

4. an offer by the licensor may prove unfair or unreasonable in particular if the royalty demanded significantly exceeds the hypothetical price that would have been formed in the event of effective competition on the dominated market, unless there is an economic justification for the pricing (following LG Düsseldorf Teilurt. v. 31.03.2016 - 4a O 73/14, marginal no. 225, GRUR-RS 2016, 08353 - Ausländersicherheit; LG Düsseldorf Urt. v. 9.11.2018 - 4a O 17/17, BeckRS 2018, 35570). A strictly mathematical derivation is not required. It is sufficient to demonstrate the acceptance of the demanded license rates on the market via already concluded license agreements. In this way, FRAND compliance can be proven more easily and determined more reliably than by means of the presentation of the individual factors, each of which can or should play a more or less weighty role to be determined in more detail in license agreement negotiations (cf. LG Düsseldorf Urt. v. 13.7.2017 - 4a O 154/15, GRUR-RS 2017, 132078 - Mobilstation).

Düsseldorf District Court, judgment of 12.12.2018 - 4b O 4/17

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