/ Created by Gottfried Schüll

Licensing practice for standard essential patents confirmed

LG Düsseldorf expands its own judgments on FRAND conditions

Düsseldorf, November 21, 2018 – On November 9, 2018, the LG Düsseldorf (Düsseldorf District Court) in several judgments confirmed and expanded its own case law on FRAND conditions for standard essential patents (SEP) in light of the ECJ decision Huawei against ZTE. Accordingly, a worldwide license can also meet the required FRAND conditions if it includes the requirement that all of the licensee's group companies have to participate in the license program. Furthermore, if a member of a group of licensors, the patent holder is not obliged to make or accept a license offer limited to him only.

The judgements of the LG Düsseldorf came in the wake of proceedings by several patent holders against the tech companies Huawei and ZTE. The subject of the lawsuits was the digital video decoding standard AVC/H.264 (MPEG-4 Part 10), which is used in mobile devices and other products and which had previously been used by the defendants without a license. The Düsseldorf law firms Cohausz & Florack (C&F) and Krieger Mes & Graf v. der Groeben represented the plaintiffs before the LG Düsseldorf. "We have eagerly awaited the judgements of the LG Düsseldorf, in particular on the FRAND conditions," says Gottfried Schüll, patent attorney and partner at C&F. "Judgments in further cases filed by patent holders against Huawei and ZTE are expected to be announced in December."

Just end of October, the Court of Appeal in London confirmed a previous decision of the LG Düsseldorf in an ongoing case between the companies Unwired Planet and Huawei.

SEPs are intellectual property rights covering essential technologies without which other companies would not have access to the market. Holders of SEPs with a dominant position in the market are obliged to license them on fair, reasonable and non-discriminatory terms (so-called FRAND conditions).