Germany: Mannheim Regional Court Differs From Higher Regional Court Of Duesseldorf On Requirements For FRAND Offer

Last Updated: 16 June 2016
Article by Taylor Wessing

On 29 January 2016 the Mannheim Regional Court granted an injunction against HTC Germany for infringement of NTT DoCoMo's European patent EP 1 914 945, which was found to be essential for UMTS. This was the second decision of the Mannheim Regional Court, following the guidance given by the CJEU in Huawei v ZTE ( see more on the first decision).

Unlike the decision of the Düsseldorf Regional Court in Sisvel v Haier of 3 November 2015 (see above) the Mannheim Regional Court did not consider whether NTT DoCoMo's initial licence offer was actually FRAND. In the court's view it is sufficient if the initial licence offer is not obviously in breach of FRAND requirements. Since NTT DoCoMo passed this threshold, it was up to HTC to make a prompt counter-offer and provide security. However, in the court's view HTC failed to fulfil these obligations, dismissed the FRAND defence and granted an injunction.

The Mannheim court's approach, therefore, may be a divergence from that of the Düsseldorf Court of Appeal, which had recently suspended enforcement of the judgment in the Sisvel v Haier case ( see more on this judgment), because the SEP-holder's initial licence offer had not been reviewed for compliance with FRAND requirements by the Düsseldorf Regional Court (decision of 13 January 2016, docket number 15 U 65/15 – Sisvel v Haier, see more on this decision).

As regards the requirement provided by Huawei v ZTE for NTT DoCoMo to put HTC on notice prior to bringing the action, the Court held that the SEP-holder has to specify the patent on which the claim is based and state that this patent is declared essential to the relevant standard. Furthermore, the alleged infringer must be put in a position to understand why the SEP-holder assumes that the alleged infringer makes use of the teaching of the patent in dispute. In the Mannheim court's view, the SEP-holder can fulfil this obligation by providing claim charts; the SEP-holder, however, is under no obligation to provide claim charts for all standard essential patents included in the offered licence. It is sufficient, if the SEP-holder provides claim charts for only some sample patents.

As to whether the licence offer made by NTT DoCoMo was FRAND, the court expressed its opinion that the national courts are not obliged to assess the SEP-holder's initial licence offer in detail. It is sufficient if – on the basis of a summary examination – the licence offer is not obviously in breach of FRAND requirements. The SEP-holder merely has to specify the royalty rate and the basis for the calculation of the royalty rate, that the alleged infringer can understand – on the basis of objective criteria – why the SEP-holder believes its offer to be FRAND.

NTT DoCoMo's licence offer in fact covered patents that were part of the WCDMA "Sipro" license pool as well as the LTE "Via" license pool. In its licence offer as well as during subsequent discussions with HTC, NTT DoCoMo had specified the share of its patents in the aforementioned patent pools, calculated the royalty rate for using NTT DoCoMo's UMTS and LTE patents based on the royalty rates for licensing all patents in the pools and specified the overall royalty rates for licensing SEPs for the WCDMA and LTE standards. By doing so, NTT DoCoMo had made a license offer that was in the court's view at least not obviously, or clearly, in breach of FRAND requirements.

As regards HTC's counter-offer, this was made one and a half years after the initial licence offer by NTT DoCoMo and half a year after NTT DoCoMo filed its lawsuit in Mannheim. In the court's view, this was too late. The court clarified that an alleged infringer can only raise the FRAND defence if the counter-offer is made without delay, taking into account the circumstances of the case.

Moreover, HTC did not provide any security after rejecting NTT DoCoMo's license offer, which was another reason for the court to dismiss the FRAND defence and grant the injunction.

A clear takeaway message from the decision is that it is advisable for defendants to present a counter-offer as soon as possible in all cases, where the SEP-holder's initial license offer is not obviously in breach of FRAND requirements.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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