[Translate to Englisch:]

FRAND objection I (Federal Supreme Court)

BGH, Judgment of May 5, 2020, KZR 36/17

Law applied:

AEUV Art. 102 II Buchst. b, c; GWB §§ 18, 19 II Nrn. 1–4

Summary:

1. The assertion of the claims for injunction, recall and destruction by the patent proprietor by way of action may also constitute an abuse if the infringer has not (yet) declared its legally binding willingness to conclude a license agreement under certain reasonable conditions, but the patent proprietor is to be blamed for not having made sufficient efforts on its part to meet the special responsibility associated with the dominant market position and to enable an infringer who is in principle willing to license to conclude a license agreement.

2. Special duties of conduct on the part of the dominant patentee may arise in particular from the fact that the infringer notified of the infringement has clearly and unambiguously expressed his will and his willingness to conclude a license agreement with the patentee on reasonable and non-discriminatory terms, but is not, or at any rate not readily, in a position to formulate on his own initiative the terms which the patentee must grant to him in compliance with the prohibition of discrimination and hindrance which is incumbent upon him. The patent proprietor may be obliged to give detailed reasons for its license demand in order to enable the licensee to verify whether the license demand constitutes an abuse of the dominant position. 3.

3. The offer of a portfolio license agreement or another license agreement comprising further property rights by a market-dominating owner of a standard-essential patent is in principle unobjectionable under antitrust law, at least to the extent that it does not oblige the licensee to make payments for the use of non-standard-essential patents and the remuneration is calculated in such a way that users who wish to develop a product for a specific, geographically limited area are not disadvantaged.

4. The infringer may counter the patent proprietor's claim for damages with a claim for damages of its own based on the failure to fulfill its claim to conclude a license agreement on reasonable and non-discriminatory terms. Such a counterclaim can only arise if the infringer demands from the patent proprietor (initially by expressing its willingness to license) the conclusion of a license agreement on FRAND terms and the patent proprietor does not respond thereto in accordance with the obligations incumbent upon it due to its dominant position by either unlawfully refusing to conclude such a license agreement or by not making an offer on FRAND terms despite the patent infringer's willingness to license.

BGH, Judgment of May 5, 2020, KZR 36/17

Download full Judgment (machine translation)

>>Further Judgments

 

Picture credits: WrightStudio - AdobeStock.com