Law applied:
Art. 29(1), Art. 31(2) Brussels I Regulation (EuGVVO);
Section 10 para. 1 Patent Act (PatG);
Art. 102 TFEU (AEUV);
Art. 64, Art. 69 EPC (EPÜ);
Section 140b Patent Act (PatG)
Summary:
1. The purpose of the licensing request is to inform the licensor whether the infringer is in principle prepared to accept the license or whether it consistently rejects it. The infringer must clearly position itself for or against taking a license. Its willingness to take a license is to be assessed independently of the substantive law aspects. Therefore, it does not yet have to deal with individual terms of the license agreement in the context of the request for licensing. (paras. 120 to 123)
2. If the SEP user files an action under a reverse caption in another jurisdiction, this does not mean that it is not willing to take a license, as long as it continues to participate in the discussions on the conclusion of a FRAND license objection in the original infringement proceedings in which it raised the antitrust objection. (paras. 145 to 146)
3. The offer of a pool license is exploitative in any case if it includes a not merely insignificant number of patents for which the SEP user already holds a license, without the license agreement offer providing for adequate provisions to compensate for duplicate license fees. (paras. 173 to 179)
4. The double licensee must therefore be provided with a binding arrangement, i.e. one that already obliges the licensor unilaterally, on the basis of which it can identify the calculation basis and approximate amount on which it will receive a refund of royalties paid twice. If this is not the case, the license offer of a pool contradicting FRAND principles is to be attributed to the plaintiff even if it does not itself belong to the dual licensors. (paras. 180 to 181) (paras. 218 to 219)
5. If the reasonable character of individual contractual terms is to be proven by means of comparative license agreements, only such agreements shall be used from the outset which relate to the relevant product market in each case. The remaining contracts shall only have an indicative effect if they are identical in content. The licensor must make a declaration to this effect. (paras. 199 to 202)
District Court Düsseldorf, Judgment of December 21, 2021 – 4c O 42/20
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