Recent German Cases, Commentary on Unwillingness to License

The 15/2022 issue of GRUR includes the Judgment of May 12, 2022, OLG Düsseldorf, 1-2 U 13/21 – Signalsynthese II (pp. 1136-45).  (The full text can also be accessed from openjur.de here.)   This is the decision referenced in a June 2022 JUVE Patent article titled Thomas Kühnen won’t dance to the Federal Court of Justice FRAND tune, in which the author stated that (although the court upheld an injunction directed against TCT as an unwilling licensee) the presumed author of the decision, Judge Kühnen, was sticking to his guns following the BGH’s decisions in Sisvel v. Haier I and II (also sometimes referred to as FRAND-Einwand I  and II) in suggesting that the court must examine whether the SEP owner’s offer is FRAND-compliant as long as the implementer manifests a general willingness to license.  The relevant portion of the decision can be found in para. 182.  Also in this issue of GRUR (pp. 1121-25) is an article about the decision by Peter Tochtermann, the Presiding Judge of the Mannheim Regional Court, titled Überlegungen zum Kriterium der Lizenzwilligkeit im Kontext der Verletzung standardessenzieller Patente:  Besprechung von OLG Düsseldorf _»Signalsynthese II^« (“Reflections on the Criterion for Willingness to License in the Context of the Infringement of Standard-Essential Patents:  Review of the Dusseldorf Regional Court’s Decision in Signalsynthese II”).  If I understand correctly, Judge Tochtermann too cautions that only in exceptional cases should the content of the SEP owner’s offer be irrelevant, and he expresses concern that courts should not prematurely conclude that either party is “unwilling” based on negotiations that may begin with the parties very far apart.  He concludes by suggesting that the BGH may further clarify matters in another case now pending before it, involving IP Bridge.

In addition, the issue also includes the decision of the Higher Regional Court of Karlsruhe in yet another SEP case involving TCT, also affirming an injunction.  The decision is the Judgment of February 2, 2022, OLG Karlsruhe, 6 U 149/20 – Steuerkanalsignalisierung II, excerpted at pp. 1145-57 and also briefly discussed on JUVE Patent here. (Full text on openjur.de here.)