Friday, August 26, 2016

Rödiger on the May 31 German FRAND Decision

As I noted last month (here), on May 31 the Oberlandesgericht Karlsruhe rendered its judgment (available here) in an appeal presenting the question, among others, whether, in a case in which the owner of a FRAND-committed SEP has sued an implementer for an injunction and the implementer raises the competition-law defense, the district court must ascertain whether the owner has made a FRAND offer to the defendant; or whether instead the defense is inapplicable if the defendant has not fulfilled its responsibilities under Huawei v. ZTE (of responding to the plaintiff's offer in a timely fashion, and so on).  The appellate court, agreeing with an earlier decision by the Oberlandesgericht Düsseldorf, held that the court must determine whether the plaintiff's offer was FRAND, and that it isn't enough simply to determine on summary examination that the offer is not evidently non-FRAND.   The July 2016 issue of Mitteilungen der deutschen Patentanwälte has now published the decision (again, in the original German; I'm not aware of an English-language translation) with a short commentary (also in German) by Felix Rödiger of Bird & Bird.  Mr. Rödiger concludes by noting that the court appears to require in every such case that the district court examine the SEP owner's offer in detail, to see if it conforms to FRAND; and that the owner therefore may have to come forward with comparable licenses.  Whether corresponding national or worldwide licenses should be viewed as indicative of FRAND terms remains to be seen. 

 For other discussion of the German FRAND decisions to date on this blog, see, e.g., here.

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