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
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
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
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
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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