In its Judgment of October 20, 2022, Case No. 7 O 13016/21, the Munich Regional Court I held that it is permissible to infer that a defendant is not a willing licensee for purposes of the FRAND defense, if the defendant has previously threatened or obtained an antisuit (ASI) or anti-enforcement injunction (AEI) against the SEP holder. The inference is not appropriate, however, just because the defendant has sought or obtained an ASI or AEI against another entity, in another proceeding or because the patent owner had previously obtained an anti-antisuit injunction (AASI) or anti-antienforcement injunction (AAEI) based on the risk that the defendant might seek an ASI or AEI in the current proceeding. (This is one of the many cases, by the way, that is discussed in the forthcoming edited volume FRAND: German Case Law and Global Perspectives (Peter George Picht, Erik Habich & Thomas F. Cotter eds., Edward Elgar Publishing Ltd.), which I expect will be out in the coming months.) Michael Nieder and Andreas Kabisch have published a short commentary on the decision in the October 2023 issue of Mitteilungen der deutschen Patentanwälte, pp. 461-62. The authors note that the court nevertheless rejected the defendant’s FRAND defense, because of the length of time the defendant had delayed reaching terms (over five years). The defendant had made two counteroffers during the litigation, the first based on its own (lower than industry average) sales price and the second based on a substantial discount from the industry average, but the court did not consider whether the second offer was, in fact, FRAND; the fact that having to pay a royalty that would put the defendant at a competitive disadvantage based on its lower selling price was, in the court’s view, the defendant’s own fault. The authors question whether this is consistent with Huawei v. ZTE, which in their view would require consideration of whether the second counteroffer was FRAND.
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