![[Translate to Englisch:]](/fileadmin/_processed_/d/0/csm_Videosignalcodierung_I_7d21e1ce9a.png "[Translate to Englisch:]")
Law applied: § 9 S 2 Nr 3 PatG, § 139 PatG, § 141 PatG, § 138 Abs 4 ZPO, Art 82 EG, § 19 GWB, § 20 GWB, § 242 BGB, § 16 Abs 1 AktG, § 17 Abs 2 AktG
Summary:
1. If an industry standard is applied in practice in its entire breadth, then in principle also the standard with its entire content (including such behavioral options that are provided only under special conditions of application or only as one in front of several alternatives) is the basis for the assessment of which technical manner is used in complying with the standard.
2. If it is therefore established that a user complies with the standard, it is further ensured that a possible course of action complying with the standard constitutes a literal or equivalent use of the patent in suit. A patent infringement is to be assumed if the scope of the defendant's business activity or other circumstances to be presented by the plaintiff patentee allow the safe conclusion that the specifications of the standard were exhausted in their entirety in the course of the business activity.
3. It is then up to the defendant to state specifically that and why, when following the standard, he did not apply the option leading to the realization of the characteristic under any circumstances.
4. If the defendant does not carry out the patent-protected process itself, but relies on preliminary work performed by a third party, it cannot deny the infringement with ignorance. This applies in any case if the third party has acted under his responsibility.
5. Such a situation is to be assumed if the defendant is the majority shareholder of the third party, because then a controlling relationship is to be assumed between the two pursuant to Sections 17 (2), 16 (1) AktG.
6. If a patent claim covers a coding method for coding and decoding a digital video signal, which is used to transfer feature films to video DVDs, the patent claim also covers the production of DVDs with the - current - MPEG 2 standard. A direct process product within the meaning of Sec. 9 S. 2 No. 3 Patent Act, for which protection can be claimed, consists of the information and recording structures produced by means of the process according to the patent in suit, which are present on a recording medium (here: the DLT tapes, DVD-R's, masters and stampers). All of these are physical products within the meaning of the provision. The information and recording structures according to the invention are information units that require storage capacity, are physically held on the respective storage medium by storage units and exist - only - as a result of the storage space.
7. In a patent infringement dispute, the objection may be raised that the plaintiff patentee is obliged to grant the defendant a compulsory license to the subject matter of the patent on antitrust grounds.
8. If the patent holder is willing to grant a license to the defendant under the terms of a standard agreement, the only question under antitrust law is whether its licensing practice is discriminatory (because license seekers are treated unequally without any objective reason) or whether unreasonable royalties are charged (so-called exploitative abuse). The questions discussed by the ECJ in its IMS/Health decision (cf. ECJ, April 29, 2004, C-418/01, GRUR 2004, 524), which arise primarily from the European antitrust provisions, in particular Article 82 EC, are then irrelevant.
9. The fact that a bundled license offer is made by all property right owners participating in an industry standard cannot be objected to as being contrary to antitrust law. On the contrary, this may serve the well-understood interest of possible license seekers that they are offered a license to use the entire standard from a single source at uniform conditions, because this relieves them of the obligation to seek a license for their patents from each individual property right owner.
10. An accusation of abuse against the owner(s) of the property rights cannot be justified by the fact that experts who were not entirely uninvolved decided on the setting of the standard and the "filling" of the standard license agreement with property rights. Nor can it be objected that in individual cases a technically equivalent, patent-free alternative technology would have been available instead of the patented one included in the standard, or that individual property rights of the standard (e.g. due to a nullity action by the defendant) could not prove to be legally valid.
11. Such action can only be considered relevant under antitrust law if it systematically indicates the intention to be able to demand unreasonably high license fees.
12. If the standard license agreement takes into account property rights that are not supported by the technical standard, an antitrust infringement therein can only benefit the defendant in the patent infringement dispute if it does not make use of the license protection rights that go beyond the standard. Accordingly, a substantial defense does not only include the assertion that certain license protection rights lie outside the standard; it must also be submitted that no use is made of them.
13. Under antitrust law, a per-unit license fee is not objectionable even if the subject matter of the license is a mass product. A license fee calculated in this way means the same cost factor for each licensee and thus ensures equal treatment.
14. In the context of the reasonableness examination of a standard license fee, it must also be taken into account that the IP right holders participating in the licensed patent pool must not only be able to claim an amortization of their development costs, but also an appropriate financial reward for their innovation performance.
15. However, unequal treatment in violation of antitrust law must be assumed if the market-dominating IP right holder grants contractual preferential conditions to individual license seekers which he denies to others. Furthermore, it is objectionable if he selectively enforces his prohibition rights under the patent by taking legal action only against individual competitors in order to impose a standard license agreement on them. Such a litigation strategy means nothing other than granting free licenses to one part of the competitors and only paid licenses to another part.
16. However, the failure to take infringement action over a certain period of time does not alone justify the accusation of discrimination. “Abuse” requires that the spared competitor is an infringer known to the owner of the property right or unknown only as a result of a breach of the duty to observe the market, against whom the patent owner can reasonably be expected to take action. In this respect, the entire circumstances are decisive, such as the extent of the acts of use and the possibilities of legal protection in the country of prosecution. However, the threshold of reasonableness is not to be set too high in the interest of the equal treatment required by antitrust law.
17. If an agency exclusively entrusted with the licensing of IP rights of a patent pool has knowledge of infringing acts of a third party, the limitation period of Sec. 141 Patent Act shall not be started thereby.
District Court Düsseldorf, Judgment of November 30, 2006 - 4b O 508/05
Picture credits: Danielle Bonardelle - AdobeStock.com