Thursday, September 9, 2021

Festschrift Articles on FRAND, Injunctions

I recently noted the publication of Pierre Véron's article What Price Crime?  A European Hit Parade of Patent Infringement Damages GRUR 2021, 392, as part of a Festschrift for Judge Peter Meier-Beck on the occasion of his 65th birthday.  Below are some additional articles from the February 2021 Festschrift issue that may be of interest to readers of this blog; all but one are in English.

1. Sir Richard Arnold published SEPs, FRAND and Mandatory Global Arbitration, GRUR 2021, 123-27.  Here is the abstract:

Recent litigation concerning SEPs has thrown into stark relief the contrast between the territoriality of patents on the one hand and the global nature of standards, and hence the FRAND obligation, on the other hand.  This has led to jurisdictional battles, races to the court, antisuit injunctions and even anti-anti-suit injunctions.  The most satisfactory answer to these problems is to have a global system of arbitration of FRAND disputes.  In order for such a system to work properly, it needs to be mandatory.  The question is whether this is legally possible.   

To cut to the chase, Lord Justice Arnold’s answer to the question posed in the final sentence of the abstract is “yes.”

2. Judge Klaus Grabinski published Injunctive Relief and Proportionality in Case of a Public Interest in the Use of a Patent, GRUR 2021, 200-05.  Here is the abstract:


When the court finds a patent to be infringed, upon request of the patent owner, it will order the infringer to cease and desist from any further infringement.  Only in exceptional circumstances, it may be justified, under the principle of proportionality laid down in particular in Art. 3(2) of the Enforcement Directive (IPRED), to restrict the absolute right to the invention which the patent right confers to its owner.  This can be when there is a public interest in the use of the patented invention because fundamental rights of third parties are at risk.  The present article looks at cases from England and Germany in which the courts had to observe these principles in accordance with their respective national laws.

3. Judge Samuel Granata published Can non-discrimination be objectified in an SEP license environment?  Yes, it could and should!, GRUR 2021, 203-05.  Here is the abstract:


In this contribution the author will touch upon the legal definition on the “non-discriminatory” limb of the FRAND-commitments by the SEP-licensor.  A clarification will be provided regarding the situational factors and the element of similar treatment as identified in the terms and conditions of a SEP-license agreement.  The author will propose an objective tool in the form of an algorithm to be used by the market players before initiating license negotiations (ex ante) and by the court if parties cannot reach an agreement (ex post).  A proposal regarding the design of such an algorithm is worked out in general terms, hoping that mathematical minds can take the idea somewhat further.

4. Ansgar Ohly published Acht Thesen zur Verhältnismä§igkeit im Patentrecht ("Eight Theses on Proportionality in Patent Law"), GRUR 2021, 304-09.  Here is the abstract (my unofficial translation from the German):


In its Wärmetauscher (Heat Exchanger) decision (GRUR 2016, 1031), the BGH (German Federal Supreme Court) certainly emphasized the importance of claims for injunctive relief in patent law, but it also authorized the granting of a grace period (Aufbrauchfrist) in exceptional cases.  The draft of a second law for the simplification and modernization of patent law intends to supplement § 139(1) of the Patent Law with a disproportionality caveat.  The following essay agrees with this proposal, and touches upon such previously unclear aspects as the relationship to FRAND case law, claims for damages, and exhaustion.

As readers may be aware, the draft law Professor Ohly refers to was enacted just a few weeks ago, see, e.g., here, heading # 3.

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