New Guidelines For The FRAND Defence In Patent Infringement Proceedings By The Munich District Court I

Author:Dr. Jan Bösing
Profession:Bardehle Pagenberg
 
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With the notice on handling the defense of compulsory license under antitrust law according to Huawei v. ZTE within Munich proceedings in patent litigation, the German original and the English translation of which are attached hereto, the Regional Court of Munich I published the envisioned approach of the patent litigation chambers to the FRAND defense in complaints based on standard-essential patents. The notice mainly pertains to the procedural approach of the patent litigation chambers to the FRAND defense, but indications regarding the requirements with respect to substantive law which the patent litigation chambers set for the FRAND defense may also be gathered from the notice. Only two days after their publication, the notes were put to the test during main proceedings relating to a standard-essential patent-in-suit held by Nokia against Daimler, and further specified by statements made by the 7th Civil Chamber.

Analysis

Decisive passages of the notice by the Regional Court of Munich I deviate from the case law of the courts of lower instances in Mannheim/Karlsruhe and Düsseldorf on the FRAND defense. The deviations benefit patent proprietors and, in summary, make it considerably more difficult for defendants to successfully assert a FRAND defense.

(1) The Regional Court of Munich I will only examine the content of the license offer of the plaintiff owning the patent (consistently referred to as the "Plaintiff" hereinafter) if the defendant using the patent (consistently referred to as the "Defendant" hereinafter) has completely fulfilled its obligations, i.e. if it has made a counter-offer, rendered accounts and provided security. As the 7th Civil Chamber confirmed during the first oral hearing after having published the notice, the fulfilment of these obligations by the Defendant is a mandatory requirement for the patent litigation chamber to even consider examining the content of the Plaintiff's offer.

In this aspect, the Regional Court of Munich I deviates from the case law of the Regional Court and the Higher Regional Court of Düsseldorf, according to which the obligations of the parties build on each other and the Defendant's counter-offer is usually only examined after the Plaintiff has made a FRAND license offer (Regional Court of Düsseldorf, judgment dated November 9, 2018, docket no. 4a O 15/17, BeckRS 2018, 33825; Higher Regional Court of Düsseldorf, judgement dated March 30, 2017, docket no. I-15 U 66/15, GRUR 2017, 1219 -...

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