On 31 January 2019, the Regional Court of Munich (the "Court") rejected four out of the eight claims that Qualcomm Inc. ("Qualcomm") had brought against Apple Inc., Apple Distribution International UCL and Apple Retail Germany B.V. & Co.KG (together "Apple") finding that Apple's embodiments did not infringe Qualcomm's patents.

Qualcomm had brought several claims (namely a claim for injunctive relief, a claim for information, an accounting claim, a claim for call back and a claim for damages) arguing that the search functionalities on Apple's mobile phones (spotlight search and Siri & search) infringed its European patents.

The Court rejected the claims as unfounded and held that the challenged embodiments did not infringe Qualcomm's patents.

When assessing the admissibility of the claim, the Court also dealt with the question of whether bringing the action amounted to an abuse of a dominant position pursuant to Article 102 of the Treaty on the Functioning of the European Union. The Court rejected such a notion. It held that, generally, IP rights imply the right to exclude others. Enforcing such a right by a claim for injunctive relief cannot, therefore, be considered to be an abuse. The patent holder generally has the exclusive right to exercise its patent. According to the Court, the situation could have been different if the patent were standard essential ("SEP") and, based on this, the patent holder were dominant, or if the patent holder exercised its rights resulting from an SEP or a non-avoidable patent in such ways and circumstances that pursue an aim contrary to the objectives of competition law. The Court further referred to the case law of the Court of Justice of the European Union ("ECJ") in IMS Health in order to argue that such exceptions have to be interpreted restrictively. A licence would have to be granted if the following (cumulative) conditions were satisfied: (i) a refusal would prevent the emergence of a new product for which there is a potential consumer demand; (ii) a refusal would be unjustified and (iii) a refusal would exclude any competition on a secondary market. According to the Court, the general rule of allowing the enforcement of the intellectual property rights ("IPRs") and its exceptions should be applied in a generalised way which means that if the conditions for the exceptions are fulfilled, claims for injunctive relief, call backs or destruction based on exclusive IPRs should all be denied.

In the present case, the patents were neither standard essential nor non-avoidable. The Court further found that Apple had failed to show that Qualcomm had pursued an anti-competitive objective, namely to expand its position on the market of premium basic chips and/or to drive its competitor out of the market. Apple also did not demonstrate that the injunctive relief prevented the emergence of a new product. In fact, Apple had asserted that it would not use the patented invention of Qualcomm. Consequently, the injunctive relief was not considered abusive and the claim was held to be admissible.

The four judgments rejecting Qualcomm's claims were appealed to the Higher Regional Court of Munich and are now pending.

Four additional patent disputes between the same parties which concern the same search functionalities as described above are still pending before the Regional Court of Munich.

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