Law applied:
PatG § 10 para. 1, § 139 para. 1 sentence 1, sentence 3, para. 2, § 140a para. 1, para. 3, § 140b para. 1, para. 3
EPC Art. 64 para. 1, para. 3, Art. 69 para. 1
TFEU Art. 102
ZPO § 142, § 148
Summary:
1. A patent user seeking a license must, in principle, be informed of the essential factors for the calculation of the license fee to be paid. For this purpose, the license fee offered to him must generally be explained to him on the basis of the essential factors for the price. If a lump-sum license fee is agreed for past and future use, a lower standard may apply in accordance with the purpose of the lump-sum payment. The more license agreements are concluded, the more likely it is that the explanation of the factors can be limited to a comparison of the specific fee offered with the agreed license fees in license agreements that have already been concluded. However, disclosed license agreements with third parties together with further explanatory information provided by the patent proprietor, for example in an electronic data room, generally provide a patent user willing to take a license with sufficient insight into the licensing practice of the patent proprietor.
2. If the license seeker alleges that the patent proprietor is licensing at different prices, the license seeker must generally provide concrete evidence, based on examples from the patent proprietor's licensing practice, that he is being discriminated against, against whom and to what extent. This does not require a detailed approach. Rather, the decisive factor is whether the license fees previously agreed with third parties and the license conditions offered to the license seeker are part of an overall structure that is in line with the protective purposes of antitrust law and serves to establish, guarantee and secure the internal market, and whether the blanket license offered does not discriminate against the license seeker in terms of market access.
3. Even in the event of a possible variance in the patent proprietor's previous pricing, which does not, however, constitute such a significant difference in treatment that it cannot be resolved by negotiation between two partners willing to license, a reasonable party interested in the successful and fair conclusion of the negotiations would see this circumstance as an opportunity and attempt to (nevertheless) conclude a reasonable, appropriate and fair contract. This applies in particular with regard to individual refinements in the figures that only become apparent when the flat fee is calculated.
4. A high license demand does not generally make the plaintiff's offer arbitrary. In principle, further penal aspects must be added in order to assess the conduct of the patent proprietor as unacceptable or to classify it as not serious with the consequence that no reaction of the patent user is objectively required. Apart from this, it is the task of the negotiations between the parties to find a solution to the price issue and to level out any unreasonably high asking price of the patent proprietor to an objectively reasonable, fair and appropriate level. This means that, as a rule, a reaction by the patent user seeking a license to the patent proprietor's offer is required in order to clarify the factors for the correct price determination in individual cases through negotiations.
(5) In cases in which the antitrust compulsory license objection is asserted against claims for patent infringement, the patent litigation chamber must examine whether, in particular, the claim for injunctive relief under patent law is precluded by an antitrust claim of the patent user to refrain from abusing the dominant market position. The distinction between denial of access and price abuse is crucial here. The patent infringement proceedings in which the "FRAND objection" is asserted are generally not aimed at determining the correct price under antitrust law. Due to the duration of the determination of the correct price under antitrust law, during which the patent user can in fact freely use the invention, the objection of price abuse can only be admitted in infringement proceedings in very exceptional cases. This does not unreasonably restrict the legal position of the patent user. In particular, he has the fundamental option of having the correct price under antitrust law determined in separate antitrust proceedings or submitting a counteroffer in accordance with Section 315 BGB.
Munich Regional Court I, final judgment of 19.04.2023 - 21 O 1890/2
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