FRAND Objection II (Federal Supreme Court)

Law applied:

TFEU Art. 102(2)(b), (c)

Summary of the Court:

1. The owner of a standard-essential patent who brings a patent infringement action seeking injunctive relief, recall, and destruction is not abusing its market power if the infringer, who has been made aware of the infringement and its willingness to license, has not unequivocally indicated that it will seek a license on fair, reasonable, and nondiscriminatory (FRAND) terms.
2. The infringer's willingness to license must not be exhausted by a one-time expression of the interest in licensing or the submission of a (counter-) offer, just as the patent owner's willingness to license must not be exhausted. Rather, both parties are required to contribute in a manner appropriate to the situation and in accordance with the principles of good faith so that an appropriate balance of the conflicting interests can be negotiated in the form of a license agreement on FRAND terms.
3. Outside the scope of application of the protection of succession under Sec. 15 (3) Patent Act, objections which were available to a user of the invention against the former patent owner cannot be raised against the latter's successor in title. This applies in particular to the objection of patent ambush.

Federal Supreme Court, Judgment of November 24, 2020 - KZR 35/17

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