Local Division Mannheim
UPC_CFI_ 210/2023
Order
of the Court of First Instance of the Unified Patent Court Local Division
Mannheim
issued on 6 February 2025
concerning EP 2 568 724
Plaintiff:
Panasonic Holdings Corporation - 1006, Oaza Kadoma, Kadoma-shi - 571-8501 - Osaka - JP
represented by attorney Christopher Weber
Defendant:
1)
Guangdong OPPO Mobile Telecommunications Corp Ltd - NO.18 Haibin Road, Wusha,
Chang'an Town, Guangdong Province - 523860 - Dongguan - CN
represented by attorney Andreas Kramer
2)
OROPE Germany GmbH - Graf-Adolf-Platz 15 - 40213 - Düsseldorf - DE
represented by RA Andreas Kramer
PATENT IN SITUATION:
EUROPEAN PATENT NO. EP 2 568 724
COURT/CHAMBER:
Local Division Mannheim, Court of First Instance
PARTICIPATING JUDGES:
This decision was issued by the presiding judge and rapporteur Prof Dr Tochtermann.
LANGUAGE OF THE PROCEEDINGS: German
SUBJECT MATTER: Action for infringement and action for revocation as well as FRAND
counterclaim, here drafting of the decision pursuant to R. 262A RoP
After the parties had the opportunity to comment on a drafting proposal of the court regarding
the decision of 22 November 2024 with regard to information relevant to secrecy and the
parties' submissions were fully taken into account and the corresponding passages were deleted
using the court anonymisation software, the final edited version of the final decision is published
on the court's website. This version was also sent to the parties in advance for confirmation. The
parties have declared their consent to the redacted version.
Digitally signed by Peter Michael
Dr Tochtermann
Tochtermann Date: 2025.02.06 17:30:26
+01'00'
Presiding judge and rapporteur Prof. Dr Tochtermann
Peter Michael Dr
Decision of the
Local Division Mannheim
UPC_CFI_ 210/2023
of the Court of First Instance of the Unified Patent Court Local Division
Mannheim
pronounced on 22 November 2024
concerning EP 2 568 724
Plaintiff:
Panasonic Holdings Corporation - 1006, Oaza Kadoma, Kadoma-shi - 571-8501 - Osaka - JP
represented by attorney Christopher Weber
Defendant:
1)
Guangdong OPPO Mobile Telecommunications Corp Ltd - NO.18 Haibin Road, Wusha,
Chang'an Town, Guangdong Province - 523860 - Dongguan - CN
represented by RA Andreas Kramer
2)
OROPE Germany GmbH - Graf-Adolf-Platz 15 - 40213 - Düsseldorf - DE
represented by RA Andreas Kramer
PATENT IN SITUATION:
EUROPEAN PATENT NO. EP 2 568 724
COURT/CHAMBER:
Local Division Mannheim, Court of First Instance
PARTICIPATING JUDGES:
This decision was issued by the presiding judge and rapporteur Prof. Dr Tochtermann, the legally
qualified judge Böttcher, the legally qualified judge Brinkman and the technically qualified judge
Loibner.
LANGUAGE OF THE PROCEEDINGS: German
SUBJECT: Action for infringement and action for revocation and FRAND counterclaim
ORAL NEGOTIATION: 7 and 8 October 2024
BRIEF PRESENTATION OF THE FACTS
1. The plaintiff is suing the defendants for an alleged infringement of the European patent
EP 2 568 724 B1 ("patent in suit") relating to a radio communication device and a radio
communication method. The patent in suit was filed on 13 August 2008 and claims the
priority of JP 2007211548 of 14 August 2007 and the priority of JP 2008025535 of 5
February 2008. The notice of grant of the patent in suit was published on 17 December
2014. The patent in suit is in force, inter alia, in the Federal Republic of Germany, the
French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom
of Sweden. For these UPCA contracting states, the plaintiff is asserting claims for
injunctive relief, recall, removal from the distribution channels and destruction,
information/rendering of accounts, publication of judgement as well as a declaration of
liability for damages and provisional damages.
2. The plaintiff considers the patent in suit (see below) to be essential for the 4G standard.
Therefore, all of the defendant's 4G-capable mobile devices infringe the patent in suit, in
particular the 4G-capable smartphones such as the OPPO Find X5 Pro
and the 4G-capable smartwatch
3. The plaintiff is the parent company of the Panasonic Group, which was founded in 1918.
On 1 April 2022, the plaintiff changed its name from Panasonic Corporation to Panasonic
Holdings Corporation.
4. Defendant 1. belongs to the OPPO Group and is headquartered in the People's Republic
of China. Within the group, it is the company responsible for the mobile phone division. It
distributes mobile phone products of the OPPO Group and maintains its European
headquarters in Düsseldorf in Germany.
5. Defendant 2. is also part of the OPPO Group. It was founded on 6 June 2019, is entered in
the commercial register of the Düsseldorf Local Court under HRB 87507 and has its
registered office at the same address where the defendant 1. has its European
headquarters. It operates this OPPO European headquarters together with defendant 1.
6. The plaintiff contacted the OPPO Group in July 2019 and has since been negotiating
unsuccessfully with the first defendant on the conclusion of a FRAND licence agreement
for the plaintiff's 4G patents. In the present case, the defendants are bringing a FRAND
counterclaim against the plaintiff with the aim of concluding a FRAND licence agreement
on the terms they consider to be FRAND on the basis of the court ruling.
REQUESTS OF THE PARTIES
7. The plaintiff is pursuing the following claims in its infringement action:
I. It is established that the defendant has infringed European Patent No. 2 568 724
B1.
II. The defendants are ordered to
cease and desist,
1. radio communication devices
which can be configured to transmit a reference signal with a transmission bandwidth in a
given system bandwidth, with control channels assigned to both ends of the same [system
bandwidth] and the transmission bandwidth between the control channels, or to transmit
reference signals with a low bandwidth with frequency hopping, and which radio
communication devices comprise: an allocation unit configured to allocate the reference
signals to frequency resources; a transmission unit configured to transmit the allocated
reference signals,
to offer, place on the market or use or import or possess for these purposes in the Federal
Republic of Germany, the French Republic, the Italian Republic, the Netherlands and the
Kingdom of Sweden,
in which
the transmission bandwidth varies in the given system bandwidth, and the allocation unit
allocates the reference signals such that the reference signals are allocated frequency
resources each having the small bandwidth which is invariant regardless of changes in the
transmission bandwidth, wherein the frequency resources are uniformly distributed in a
frequency band of the transmission bandwidth in accordance with the change in the
transmission bandwidth.
(direct infringement device claim 1)
in particular when
a plurality of the different transmission bandwidths can be configured in a system bandwidth.
(direct infringement of device claim 2)
and/or in particular if
the allocation unit allocates the reference signals to the frequency resources, wherein one
of the frequency resources with the low bandwidth is a transmit unit. (direct infringement
device claim 3)
and/or in particular when
the allocating unit allocates the reference signals to frequency resources into which a
frequency band having the transmit bandwidth is evenly divided, wherein one of the
frequency resources having the low bandwidth is a transmit unit. (direct infringement
device claim 4)
and/or in particular when
the allocation unit allocates the reference signals to frequency resources, the number of
which is different depending on the changes in the transmission bandwidth, wherein one
of the frequency resources with the low bandwidth is a transmission unit. (direct
infringement device claim 5)
and/or in particular when
the allocation unit allocates the reference signals to frequency resources each having a
different frequency band, wherein one of the low bandwidth frequency resources is a
transmitting unit.
(direct infringement device claim 6)
and/or in particular when
the allocating unit allocates the reference signals to frequency resources covering the
entire frequency band of the transmit bandwidth, wherein one of the low bandwidth
frequency resources is a transmit unit.
(direct infringement device claim 7)
and/or in particular when
the allocation unit allocates the reference signals to frequency resources by means of
frequency hopping, wherein one of the frequency resources with the low bandwidth is a
transmitting unit.
(direct infringement of device claim 8)
and/or in particular when
the allocation unit allocates the reference signals to frequency resources covering the
entire frequency band of the transmit bandwidth by means of frequency hopping, wherein
one of the frequency resources with the low bandwidth is a transmit unit.
(direct infringement device claim 9)
and/or in particular when
the allocation unit allocates the reference signals to a plurality of resources which are
frequency resources and which are different time resources, wherein one of the
frequency resources having the low bandwidth is a transmitting unit. (direct
infringement device claim 10)
and/or in particular when
the allocating unit allocates the reference signals to a plurality of resources which are
frequency resources and which are time resources differing by a certain time interval,
wherein one of the frequency resources having the low bandwidth is a transmitting unit.
(direct infringement device claim 11)
and/or in particular when
further comprising a receiving unit configured to receive control information associated with an
assignment of the reference signals, wherein the assigning unit assigns the reference signals
based on the control information.
(direct infringement device claim 12)
2. Apparatuses adapted to perform a radio communication method which can be
configured to transmit a reference signal with a transmission bandwidth in a given system
bandwidth, wherein both ends of the same control channels are assigned and the
transmission bandwidth is between the control channels, or to transmit reference signals
with a low bandwidth with frequency hopping
in the Federal Republic of Germany, the Federal Republic of France, the Italian Republic,
the Netherlands and the Kingdom of Sweden,
wherein the radio communication method comprises: the following steps:
assigning the reference signals to frequency resources; and transmitting the assigned
reference signals, the transmission bandwidth varying in the given system bandwidth, and
the reference signals being assigned to frequency resources each having the small
bandwidth which is invariant regardless of changes in the transmission bandwidth, the
frequency resources being uniformly distributed in a frequency band of the transmission
bandwidth according to the change in the transmission bandwidth.
(indirect infringement of method claim 13)
The defendants have infringed the patent by distributing 4G-enabled products in the
territory of the Federal Republic of Germany, the Federal Republic of Germany, the French
Republic, the Italian Republic, the Netherlands and/or the Kingdom of Sweden.
4G-capable products include, in particular, 4G-capable smartphones such as the OPPO Find
X5 Pro
and 4G-enabled smartwatches, such as the 4G-enabled smartwatch
III. The defendants are ordered, at their own expense
1. to recall the products mentioned under No. II. from the distribution channels
2. to permanently remove the products mentioned under No. II. from the
distribution channels;
3. to destroy the products mentioned under No. II;
IV. The defendants are ordered
1. to provide the plaintiff, in a list structured for each month of a calendar year and
according to infringing products in electronic form, which can be analysed with the aid of a
computer, from 17 December 2014, with information on the products referred to in No. II.
about
a) the origin and distribution channels of the products mentioned under No. II;
b) the quantities delivered, received or ordered and the prices paid for the products
referred to in point II;
c) the identity of all third parties involved in the distribution of the products
mentioned under No. II;
2. to disclose to the plaintiff its accounts to prove the information provided pursuant to
No. IV.1. plus the information on the profit realised by providing the following documents
for each month of a calendar year and for each infringing product in electronic form that
can be analysed with the aid of a computer:
a) Invoices - or, if these are not available, delivery notes - of the individual deliveries,
where they the respective deliveries by offer quantities,
offer times, prices of the goods offered and type designations as well as the names and
addresses of the commercial recipients of the sales offers for all products sold or
otherwise disposed of;
b) evidence of the advertising carried out, including evidence of this advertising activity,
with a breakdown of the advertising carried out by advertising medium, its distribution,
the distribution period and the distribution area;
c) evidence of costs, with a breakdown of costs by individual cost factors and profits
realised;
d) Invoices - or, if these are not available, delivery notes - and corresponding statements
of all costs incurred on which the defendants rely in calculating their profits;
the accuracy of which shall be audited and certified at the defendant's expense by a sworn
auditor appointed by the plaintiff, whereby the auditor shall be bound to secrecy vis-à-vis
the plaintiff beyond the above-mentioned information;
V. The plaintiff is authorised, at the defendant's expense, to announce and publish the
decision in whole or in part in the following public media: Frankfurter Allgemeine Zeitung,
Handelsblatt newspaper, Le Monde newspaper, Les Échos newspaper, Corriere della Sera
newspaper, De Telegraaf newspaper and Dagens Nyheter newspaper.
VI. It is established that the defendants are jointly and severally liable to compensate the
plaintiff for any damage incurred by Panasonic Intellectual Property Corporation of
America as a result of actions pursuant to No. II. since 17 December 2014 and which the
plaintiff has incurred since 29 July 2016 and will incur in the future.
VII. The defendants are ordered as joint and several debtors to pay the plaintiff an amount
of EUR 250,000.00 as provisional damages;
VIII. The defendants are ordered to bear the costs and expenses of the proceedings.
IX. The decision can be enforced as follows:
1. The orders mentioned under no. II.1 and II.2 are directly enforceable.
In the event of any infringement of this order, the defendants must pay a penalty payment
of EUR 5,000 each.
2. The orders referred to in No. III, No. IV, No. VII and No. VIII above shall be enforceable
after the plaintiff has
a) has notified the court which part of the orders it intends to enforce and after
the notification has been served on the defendant and/or
b) the plaintiff has submitted a certified translation of the orders into the official language
of the Contracting Member State in which enforcement is to take place and after the
notification and, where applicable, the certified translation have been served on the
defendant;
3. After the expiry of a period of 45 days after service pursuant to No. IX.2, the
Defendants shall pay to the Court a penalty payment of EUR 2,000 per day of delay in the
event of any failure to comply with any of the orders referred to in No. III, No. IV, No. VII
and/or No. VIII;
8. The defendants request that the claims in the infringement action be dismissed, that
the defendants be provisionally awarded reimbursement of the costs of the infringement
action and that the plaintiff be ordered to pay the costs of the litigation,
In the alternative
make the enforcement of the decision subject to the prior provision of security by the
applicant in an appropriate amount (R. 352.1, 354.2 RoP), which may be provided by a
written, irrevocable, unconditional and unlimited guarantee from a credit institution
authorised to do business in the territory of a Member State of the UPC, the amount of
which is left to the discretion of the court,
allow the defendants to avert enforcement of the decision by providing security, which
can be provided by a written, irrevocable, unconditional and unlimited guarantee from a
credit institution authorised to do business in the territory of a Member State of the UPC,
without regard to the provision of security by the plaintiff (R. 9.1 RoP).
9. In the context of the action for revocation, the defendants request that
declare the European patent EP 2 568 724 B1 invalid in its entirety with effect for the
contracting states of the UPCA in which the patent is validated [Federal Republic of
Germany, France, Italy, the Netherlands and Sweden] (R. 25 RoP);
provisionally award the defendants the reimbursement of costs for the action for revocation (R.
150.2 RoP) and order the plaintiff to pay the costs in this respect as well.
10. The plaintiff requests that the counterclaim for a declaration of invalidity be dismissed
or, in the alternative, that the patent be maintained in amended form with regard to
claim 1 and claim 13 and that the counterclaim for invalidity of the patent be dismissed
as unfounded and that the defendants be ordered to pay the costs of the counterclaim.
With regard to the wording of the request for amendment, reference is made to the
pleading of 21 March 2024 together with the annexes.
11. In the context of their FRAND counterclaim, the defendants finally request the following:
Main motion version pursuant to replica counterclaim FRAND of 19 August
2024 (filed pursuant to Rule 9 RoP in workflow App_47681/2024):
It is requested,
I.1 order Panasonic to accept Oppo's licence agreement offer of 17 July 2024, as
shown in Exhibit VB-FC14 (confidentiality required)
I.2 in the alternative, to order Panasonic to submit a licence agreement offer to Oppo
with the content as shown in Annex VB-FC14 (confidential),
I.3 in the further alternative, to order Panasonic to submit a licence agreement offer
to Oppo with the content as shown in Annex VB-FC16 (confidential),
whereby, in the alternative, an amount to be determined by the court between
in the green space in point (2), an amount to be determined by the court between
and the lump sum
to be entered in the blue place there is as follows:
in the further alternative, an amount to be determined by the court as fair,
reasonable and non-discriminatory in the yellow and green positions in points (1) and
(2) respectively of Schedule VB-FC16 and the lump sum amount to be inserted in blue
there results in accordance with the method of calculation indicated in the preceding
paragraph here;
II.1 In the alternative to the relief sought in paragraph I above, and in the event that
none of the relief sought therein is granted, declare that Oppo is entitled to a licence
to Panasonic's patents essential to the 3G and 4G standards on fair, reasonable and
non-discriminatory (FRAND) terms,
and to determine the licence rate to be paid by Oppo for the use of those patents in
the territory of the EPC Contracting States (the EP Territory), such FRAND licence rate
for the EP Territory being
- per 4G multimode device and per 5G multimode device,
- or alternatively between and per 4G multimode device
and between and per 5G multimode device,
- or, in the further alternative, such other rate as the Court may deem fair, reasonable
and non-discriminatory;
II.2 subject to the existence of a FRAND licence agreement, to require Oppo to pay to
Panasonic, as of the date of the Judgment, as a lump sum, such royalty rate multiplied
by the number of units sold by to units sold
from to Panasonic, the lump sum being
or, in the alternative, between and or,
in the alternative, a lump sum determined by the Court to be fair, reasonable and
non-discriminatory;
II.3 require Panasonic to cooperate fully to procure a FRAND licence on the terms
determined by your court;
III.1 further, in the alternative, in the event that neither the relief sought under I. nor
II. above is granted,
(a) Declare that Oppo is entitled to a licence to Panasonic's patents essential to the 3G
and 4G standard on fair, reasonable and non-discriminatory (FRAND) terms;
(b)declare that the licensing terms, or alternatively the royalties, as contained in
Panasonic's offer dated 22 December 2023 for a licence from Oppo to Panasonic's 3G
and 4G standard essential patents (Exhibit VB-FC15) are not FRAND
(c) find that Panasonic has abused a dominant position;
(d) Declare that the terms of a licence, or alternatively the royalties, as contained in
Oppo's counter-offer of 17 July 2024 for a licence by Oppo to Panasonic's patents
essential to the 3G and 4G standard (Exhibit VB-FC14) are FRAND;
(e) Order Panasonic to submit a FRAND counter-offer to Oppo that includes the
following FRAND licence rate for the EP Territory: per 4G
multimode device and per 5G multimode device, or in the alternative
per 4G multimode device and between
5G multimode device, or in the alternative, the amount
that the Court considers to be FRAND in the circumstances of this case;
between and
per
IV. Order Panasonic to pay Oppo the reasonable and proportionate legal costs and
other expenses incurred by Oppo by way of interim order pursuant to Rule 150(2)
RoP, with the amount to be determined at a later date.
The version of the application filed with the "Counterclaim for determination of a
FRAND fee for the EPC area" dated 22 December 2023, which is further pursued in
the alternative, reads as follows
It is requested,
(i) declare that Oppo is entitled to a licence for Panasonic's standard-essential patents
for the 3G and 4G standards on fair, reasonable and non-discriminatory (FRAND)
terms; and
(ii)explain what the essential terms of such FRAND licence are, including at least the
rate to be paid by Oppo for the use of those patents in the territory of the EPC
Contracting States (the EP Territory); and
(iii) determine that the FRAND licence rate for the EP Territory is per 4G
multimode device and per 5G multimode device, or in the
alternative between per 4G multimode device and
between per 5G multimode device, or in the alternative,
the amounts that the court considers to be FRAND in the circumstances of the present
case;
(iv) subject to the existence of a FRAND licence agreement, to bind Oppo,
a. from the date of the judgement, as a lump sum, this licence rate multiplied by the
number of to units sold t o Panasonic,
with the lump sum being or in the alternative
between or in the alternative
a lump sum to be determined by the court;
b. pay such royalty rate to Panasonic for each unit sold since the date of the
Judgment;
(v) require Panasonic to co-operate fully to obtain a FRAND licence on the terms
determined by your court;
in the alternative,
(vi) Declare that Oppo is entitled to a licence to Panasonic's standard-essential
patents for the 3G and 4G standards on fair, reasonable and non-discriminatory
(FRAND) terms;
(vii) Declare that the licence terms for Panasonic's 3G and 4G standard-essential
patents, as contained in Panasonic's offer described in the body of this pleading, are
not FRAND;
(viii) find that Panasonic has abused a dominant position;
(ix) declare that the terms of a licence for Panasonic's 3G and 4G essential patents, as
contained in Oppo's counter-offer described in the body of this pleading, are FRAND;
(x) order Panasonic to submit a FRAND counter-offer to Oppo showing the following
FRAND licence rate for the EP Territory: per 4G multimode device and
per 5G multimode device, or in the alternative between per 4G multimode
device and between
per 5G multimode device, or in the alternative, the amount
that the court considers to be FRAND in the circumstances of the present case;
and in any event
(xi) Order Panasonic to pay Oppo's reasonable and proportionate legal costs and
other expenses incurred by way of an interim order under Rule 150(2), with the
amount to be determined at a later date.
The plaintiff considers the amendment to the action in the reply to the FRAND
counterclaim to be late, the amendment is not admissible, the defendant's
amendments to the plaintiff's draft contract of 22 December 2023 are not FRAND-compliant.
The plaintiff
"acknowledges that a willing licence seeker is entitled to a licence for the standard-essential
patents for the 3G and 4G standards on fair, reasonable and non-discriminatory
(FRAND) terms" (statement of 22 March 2024)
and requested,
I. dismiss the remainder of the counterclaim because the defendants are unwilling to take a
licence
II. order the defendants,
1. to bear the costs and expenses of the proceedings;
2. provisionally reimburse the costs.
In the alternative,
in the event that the counterclaim is admissible and the court - contrary to the
plaintiff's view - is of the opinion that the defendants acted as willing parties in the
negotiations at issue with the plaintiff, the plaintiff requests the court to
III. declare that a licence justifying the defendants' infringing acts of use of EP 2
568 724 is a worldwide licence to the plaintiff's 3G and 4G (multimode) portfolio and
that a royalty rate for such a licence in the amount of per 3G/4G (multi-mode)
device is fair, reasonable and non-discriminatory;
IV. further, in the alternative to the request under III., declare which licence justifies
the defendants' infringing acts of use of EP 2 568 724 and which licence rate per
3G/4G (multi-mode) device is fair, reasonable and non-discriminatory (FRAND);
V. order the defendants
1. to pay to the plaintiff a licence in the amount per 3G/4G (multi-mode) device for
the past and the future for 3G/4G (multi-mode) devices sold and not licensed by the
defendants, or in the alternative for 3G/4G (multi-mode) devices sold and not
licensed in the "EP", "JP" and "US" territories.
pay.
2. in the alternative under V.1. to pay to the plaintiff for 3G/4G (multi-mode)
devices sold and not licensed by the defendants, in the alternative for 3G/4G (multi-mode)
devices sold and not licensed in the "EP", "JP" and "US" territories, a licence
in the amount as requested under IV. for past and future acts of use.
VI. also dismiss the further counterclaim; in
the alternative under VI.
VII. to oblige the counterclaimant 1),
1. to accept the counter-defendant's licence agreement offer dated 22.12.2023 in
the version of Annex KAP FRAND WK 19 - Strictly Confidential;
In the alternative to item VII.1,
2. to submit a licence agreement offer to the counter-defendant in the
version of Annex KAP FRAND WK 19 - Strictly Confidential;
In the further alternative to item VII.2,
to submit a licence agreement offer to the counter-defendant in the version
of the Annex KAP FRAND WK 19 - Strictly Confidential, with the proviso that
clauses 4.1 and 4.2 are replaced as such as set out below:
whereas further in the alternative to Clause VII.3:
VIII. In the alternative to the requests in clauses VII.1 to VII.4 and in the event
that none of the requests therein should be granted,
1. declare that a willing licence seeker i s entitled to a licence to the
defendant's patents essential to the 3G and 4G standards on fair, reasonable
and non-discriminatory (FRAND) terms, and declare the licence rate that a
willing licence seeker is entitled to.
licence seeker who is comparable to the counterclaimants in all other
respects except willingness to licence must pay for the use of these patents
worldwide, with this FRAND licence rate being per LTE Compliant Mobile
Product(s),
- or, in the alternative, such other rate as the Court may deem fair,
reasonable and non-discriminatory
2. subject to the existence of a FRAND licence agreement, order the
counterclaimants to pay the licence rate in VIII.1 as a lump sum, multiplied by
the number of sales, from the date of the judgment,
3. in the alternative, to pay a lump sum determined by the Court to be fair,
reasonable and non-discriminatory;
IX. further, in the alternative, in the event that neither the relief sought
under Paragraph VII. nor Paragraph VIII. should be granted,
1. declare that the counterclaimants have not behaved in a FRAND-compliant
manner;
2. declare that the licence conditions, alternatively the licence fees, as
contained in the offer of the counter-defendant dated 22 December 2023 in
the version of Annex KAP FRAND WK 19 - Strictly Confidential - for a licence to
the counter-defendant's patents essential for the 3G and 4G standard are
FRAND;
3. declare that the terms of a licence, alternatively the licence fees, as
contained in the counter-offer of counterclaimant 1) dated 17.07.2024 in the
version of Annex VB-FC 14 - Strictly Confidential for a licence from
counterclaimants to the counterdefendants' patents essential for the 3G and
4G standard are not FRAND;
X. order the counterclaimants to pay
1. also to bear the further costs and expenses of the proceedings incurred as
a result of the extension of the action;
2. also to provisionally reimburse the further costs.
12. The defendants consider these applications to be inadmissible and request that they be dismissed.
FACTUAL AND LEGAL ISSUES IN DISPUTE
Infringement discussion
13. According to the plaintiff, the defendants directly infringe claim 1 of the patent in suit
and indirectly infringe claim 13 by offering, placing on the market, using or importing or
possessing for these purposes 4G-capable products, in particular 4G-capable mobile
phones and smartwatches (attacked embodiments) in the Federal Republic of Germany,
the French Republic, the Italian Republic, the Kingdom of the Netherlands and the
Kingdom of Sweden. In the applicant's view, the attacked embodiments fulfil all the
features of claim 1 when used in the 4G network and use a method according to claim
13.
14. The defendants, on the other hand, are of the opinion that the contested embodiments
do not realise features 1.1, 1.3.1, 1.3.2 and 1.3.2 in particular. The plaintiff
misunderstands the term "transmission bandwidth". Contrary to the applicant's view, the
transmission bandwidth is to be understood as the bandwidth within a given system
bandwidth which is located between the control channels and which is therefore
available for the transmission of reference signals and user data. The broadband SRS
signal referred to in the claim extends over this transmission bandwidth, which is
therefore defined by the system bandwidth minus the bandwidth required for the
PUCCH. The same applies to the narrowband SRS, which are distributed by means of
frequency hopping. Contrary to the applicant's opinion, the transmission bandwidth is
not defined by the beginning of the first SRS signal transmitted in the bandwidth to the
end of the last SRS signal transmitted in the bandwidth, i.e. the area actually covered by
the SRS signals. This variance of the transmission bandwidth was then also addressed in
feature 1.3.1.
The plaintiff has not been able to show on the basis of the standard that the reference
signals according to feature 1.3.2 are assigned in such a way that the reference signals
are assigned to frequency resources, each of which has the low bandwidth that is
invariant regardless of changes in the transmission bandwidth. This is denied by the
defendants with the argument that in the standard a change in CSRS can cause a change in
mSRS and thus a change in the bandwidth of the reference signal and thus the bandwidth
of the reference signal is not fixed regardless of CSRS.
In particular, the SRS signals could not be distributed evenly in the transmission
bandwidth according to the standard in the sense of feature 1.3.3. After implementation
by the standard, the gaps between the control channels and the frequency ranges
actually covered by the SRS signals, which are known from the state of the art and
addressed as disadvantageous, remain. Finally, the defendants also pointed out that the
parameters mSRS and CSRS referred to by the plaintiff are only assigned semi-statically and
that the adjustment is only possible in 80ms intervals at the shortest (Duplik Technik
para. 83 et seq.). In contrast, the PUCCH changes every millisecond and the data assigned
to the PUCCH in each subframe is calculated by the terminal device from data that it
received from the base station in the downlink only 4 milliseconds before the respective
subframe, which is why the asserted LTE standard excludes an adaptation of the (semi-)
static SRS configuration to the rapidly and dynamically varying PUCCHs.
15. The defendants also criticise the plaintiff's submission on the acts of infringement of
which the defendants are accused as being too unsubstantiated. In particular, the
defendants had already withdrawn from the German market some time ago.
16. The legal consequences sought by the plaintiff were too far-reaching. In particular, a
cease and desist order was disproportionate and, moreover, there were antitrust
grounds for the award (see below). The threat of a penalty payment raises concerns. It
was already too high and therefore disproportionate and too vague with regard to
actions other than sales. The order to recall,
removal from the distribution channels and destruction are already too vague and also
disproportionate. The information requested was too broad, in particular because it was
only to be directed at the information necessary for a calculation of damages by way of
licence analogy, because the claim for damages was limited to this for reasons of
antitrust law. A claim for disclosure of the books does not exist anyway and is the subject
of separate proceedings according to the rules of procedure. There was no sufficiently
substantiated interest in publishing the judgement. There is a lack of explanations for the
award of provisional damages.
FRAND objection
17. The defendants argue that the assertion of the claim for injunctive relief and the other
forward-looking claims from the patent are excluded because there are antitrust reasons
to the contrary.
18. Contrary to the plaintiff's view, the FRAND objection is also not only to be attached to
the individual patent in suit, but is directed to a comprehensive licence. Article 6 (1)
sentence 1 of the European Convention for the Protection of Human Rights and
Fundamental Freedoms (ECHR) already requires that the defendant be able to defend
itself comprehensively, and it also follows from European law that the comprehensive
FRAND defence must be admitted.
19. The infringement notice required by the case law of the ECJ is already lacking, as shown
by the European Commission's amicus curiae submission in the proceedings before the
Munich Higher Regional Court 6 U 3824/22 Kart (Annex VB-F 45). It is necessary that the
infringement notice formally indicates the nature and type of infringement in the cover
letter itself - a reference to external documents is not sufficient.
20. The declaration of willingness to take a licence was to be understood solely as a formal
step at the start of the negotiations, as the European Commission rightly pointed out.
that this step should not be confused with the counter-offer, which is to be examined at
a later date. The willingness should also not be assessed in relation to the later offers and
counter-offers. The Commission makes it clear in its submission that the plaintiff's offer
must first be examined to determine whether it is FRAND. This is also in line with the
view of the Düsseldorf Regional Court in its order for reference to the ECJ, which was
previously finalised due to the termination of the proceedings.
21. The plaintiff's behaviour was an abuse of rights, as there was no written FRAND offer
from the plaintiff until the statement of defence. An offer by the plaintiff was first
contained in the e-mail of 22 December 2023 (Annex VB-F 20 and 21). There was
therefore a lack of a concrete written licence offer before the action was brought, which,
according to the correct view of the European Commission, could not be made up for in
the ongoing infringement proceedings. Until the orders for reference were issued in the
present proceedings, no settlement licences had been made available to the defendants
which would have enabled a review of possible discrimination against the defendants.
The plaintiff had a burden of proof in this regard, which it did not fulfil. It had initially
approached the defendants with exaggerated licence claims without disclosing the basis
of calculation or making a comparison with other licensees. The extent of the plaintiff's
concession in the negotiations alone proves that its initial demands were contrary to
FRAND. The economic expert of the defendant proves the FRAND-
infringement of the plaintiff's claims.
Discosure Agreement and triggered a wave of lawsuits. The defendants were willing to
take a licence, as evidenced by their participation in a large number of discussions on
technical and commercial circumstances, although the plaintiff had not initially
submitted a complete licence agreement. It was therefore the plaintiff
plaintiff's claims.
Instead, it had an existing non-
who broke off the negotiations before the action was filed. This is evidenced by the
chronological sequence of the discussions held between the parties since July 2019, as
listed by the defendants in a summary table in their statement of defence (statement of
defence para. 333, p. 100 - 107 with the supplementary statements in their rejoinder).
22. From the outset, the plaintiff had also been in dialogue between "major markets" (US, EP, JP)
and
"Other Markets" (CN and others) and offered two different licence rates, a rate linked to
price incentives and a standard rate. The plaintiff never explained the basis for its fee
determination. Compared to its initial offers, the plaintiff then conceded in October 2021
as far as the standard rate was concerned, but increased the Incentivised Compromised
Rate (ICR) and presented this as a concession. The plaintiff shifted these parameters
again in April 2022 without sufficient explanation. The applicant had also built up time
pressure by reserving the right to no longer offer the ICR if no agreement was reached.
Furthermore, the calculatory basis was not explained and no comparative licences were
disclosed, although the plaintiff referred to alleged licence agreements with two
competitors of the defendant that it did not name. The product groups also remained
unclear. The time periods covered by the plaintiff's and defendant's proposals were also
different and therefore not comparable.
23. With regard to the economic assessment of the plaintiff's licence amount proposals, the
defendants refer to the expert opinion of their economic expert and explain it (Annex
VB-F 18). In it, the expert comes to the conclusion that the plaintiff's claims are contrary
to FRAND. The expert converts the indicators for a worldwide FRAND licence into
indicators for the EP territory and adjusts the licence rates by taking into account the
relative strength of the plaintiff's European patents compared to the worldwide portfolio
and the relatively higher overall licence rate in the EP territory compared to other global
markets such as China. The top-down approach applied by the expert opinion calculates
First, a percentage total licence fee rate is calculated, which may be dependent on
certain global regions and/or weighted according to whether the devices can operate in
different standard modes (multimode weighting). The SEP holder's percentage share of
the total licence fee is then calculated by calculating its share of the standard. Finally, the
average sales price of the implementer's devices should be taken into account. The
expert thus follows an established calculation methodology. The total licence fee rate
should be assumed to be 6%, but this should be weighted with regard to China, where
the vast majority of production and sales by the defendant's group of companies take
place. It follows from court decisions that the customary total licence rate in China is
around 65.5% of the rate in other markets, i.e. 65.5% of 6%. The applicant wrongly fails
to make this regional adjustment. In addition, the overall rate should also be weighted
with regard to the 4G and 5G devices, depending on the importance of the standard for
the device (cf. KE para. 392). The expert then determines the share of the SEP holder in
the total number of patent families relevant to the standard and uses the patent families
declared by the SEP holder on the basis of data from IPlytics. According to this, the
plaintiff holds approx.
of all registered 4G SEPs and of all registered 3G SEPs, whereby the
plaintiff has a smaller portfolio in China, the defendant's largest market, by
approximately compared to Japan and the USA, for example. The defendant's
average wholesale sales price is then multiplied by the ad valorem licence rates thus
obtained. In contrast, the retail price is not relevant. The corresponding data used by the
expert is based on standard commercial data from the market research company
International Data Corporation (IDC data). The resulting global licence rate of the party
expert deviates from the plaintiff's rates by a factor of , and the rate weighted for
the EP territory is also significantly lower than the plaintiff's rates.
24. This imbalance is also revealed by a comparison with two licence agreements of the
defendants and indicators from published decisions of the UK High Court (InterDigital v
Lenovo ([2023] EWHC 539 (Pat)) and Optis v Apple ([2023]
EWHC 1095 (Ch)) are evident. Also with regard to the global licence rates derived using these
benchmarks, the rates demanded by the plaintiff for 4G are higher than the
FRAND value, and for 5G MM higher than the FRAND price. This
disproportion would not change significantly even if the weighting were applied to the EP
territory. The same applies with regard to the flat-rate licence amounts derived from this
of as a FRAND corridor for a
global lump sum and of for the EP territory,
calculated on the
25. The initial expert opinion had then also been confirmed in a supplementary expert
opinion following the submission of settlement licence agreements by the plaintiff in the
meantime. In this respect, reference is made to the presentation of the FRAND
counterclaim and the FRAND duplicate.
26. In addition to these economically derived arguments, the defendants argue in legal terms
that the plaintiff is abusing its dominant position on the licensing market contrary to Art.
102 TFEU. The use of the 4G standard is essential in order to survive on the market. The
telecommunications providers had switched off 2G and 3G networks in Europe and 4G
backward compatibility was also indispensable for 5G end devices due to the still
inadequate network coverage of the 5G network.
27. The entitlement to a licence also follows from the plaintiff's ETSI FRAND declaration for
the patent families of the patent in suit.
28. The plaintiff was obliged to equalise the information gap between itself and the
defendants and therefore to explain the content of its offer so that the implementer
could examine it. The plaintiff had not fulfilled this obligation.
29. The tangibility of the impairment, which the plaintiff describes as significant with
reference to the MEO decision of the ECJ, is irrelevant.
30. The defendant's counter-offer of 17 July 2024 (VB-F 38), which is referred to in more
detail in connection with the submission on the FRAND counterclaim (see there), is
FRAND. A lump sum was offered for a worldwide licence and this amount was deposited
with security in the form of a bank guarantee (Annex VB-F 43). It was wrongly rejected by
the plaintiff on 2 August 2024 (Annex VB-F 40).
31. In contrast, the plaintiff argues that the defendants cannot invoke the compulsory
licence defence under antitrust law because they are not willing to take a licence. They
had never clearly declared their willingness to take a licence, nor had they provided
information or security. The defendants' group of companies had also never sufficiently
analysed the content of the plaintiff's contractual offers and technical information and
had deliberately delayed the technical exchange and always requested new claim charts
without then adequately dealing with them.
32. With reference to the case law of the Court of Justice of The Hague (judgment of 24
December 2019, 200.233.178/01 - Philips/Wiko), the plaintiff believes that it is not
required under European law for the SEP holder to justify why it considers its offer to
meet FRAND criteria - in particular, no confidential settlement licence agreements should
be made available at this stage. Furthermore, it is not necessary to have a fully
formulated offer that is ready to be signed; rather, it is sufficient if the key commercial
points are included and it can form the starting point for negotiations on further details.
If the user does not agree, he is in any case obliged to react and object and must submit
a counter-offer. Information must be provided and security must be provided as soon as
the SEP holder has rejected the counter-offer of the infringer who is already using the
invention. According to the case law of the ECJ, a third-party determination can only be
considered by mutual agreement; in particular, the determination of content by a state
court is not a third-party determination within the meaning of ECJ case law.
33. A sufficient infringement notice including the patent in suit had already been filed two
years before the action was brought (Annex KAP FRAND 1 and 2). In addition, claim
charts had in any case been sent for family members of the patents in suit, specifically
also for the patent in suit on 31 August 2020. The defendants had then only declared
their intention to enter into negotiations, which was insufficient.
34. The plaintiff's first offer of 4 August 2020 had already been explained and FRAND.
35. The plaintiff had rejected a lump-sum counter-offer from the defendants dated 27
August 2021 on 26 October 2021, submitting a new offer (VB-F4), without any
information having been provided afterwards or security having been provided - at least
once in the amount of the lump sum that the defendants themselves considered to be
FRAND. Moreover, the counteroffer was delayed after the plaintiff's first offer was dated
4 August 2020. For the first time - insufficiently in the expert opinion of the defendant's
expert - information was provided in the statement of defence and counterclaim for
determination of a FRAND licence fee of 21 December 2023. The fact that the defendant
did not even provide its own expert with its own figures, but had him provide an expert
opinion solely on the basis of the IDC data, proves that the figures could not be regarded
as information. The IDC data is also not readily verifiable for the plaintiff because this
requires the registration of a user account and the payment of considerable fees.
36. In their calculations, the defendants assumed an inaccurate and unrealised share of the
plaintiff in the LTE standard. Conversely, on the basis of information from three different
independent sources, the plaintiff had shown that the defendants' alleged sales figures
were inaccurate.
37. The defendants had not approached out-of-court dispute resolution attempts by insisting
on their own positions, but had misused the discussions solely for the purpose of delay.
38. The defendants wrongly took the view that the plaintiff's offers did not fall within the
FRAND corridor. The fact that a fully formulated and written contractual offer was
initially lacking was legally irrelevant - such an offer was also never requested during the
negotiations. Comparative licences were also never requested, and submission was also
not possible due to the confidentiality clauses in the contracts.
39. All of the plaintiff's offers are FRAND, including the blanket licence offer of 22 April 2022,
which covers all markets. The plaintiff had also shown that there were two blanket
licence holders who paid significantly higher prices than those offered by the defendants.
In the absence of the submission of figures by the defendants, the plaintiff used the
average of three independent data providers for the past use and forecast future sales
over the envisaged term based on the sales.
forecast based on the sales. The defendants had deliberately misinterpreted this offer in
order to delay the talks. Although certified shipments for and were
submitted, the figures for the same year were not presented.
year in question
40. The plaintiff had reduced its offer
reduced again and, based on newly available information
significantly reduced again. In order to reach an
agreement, it then reduced the lump sum again.
reduced again. Conversely had there was no
significant concessions on the part of the
defendant.
41. The fact that the plaintiff's offers were FRAND-compliant was also demonstrated by the
comparison with the plaintiff's third-party licences submitted in response to the
submission order (cf. the
below the lump sums of the settlement licences.
The sales figures
as "Supplement Replica Part II - Non-Technical Part" in App_32606/2024 submitted by
the plaintiff on 31 May 2024, which now no longer contains the total redactions
contained in the original version of the document and concerns the statements made
there sub. II. "Settlement licence agreements" in para. 340 et seq.) The amounts there
were to be "unpacked" because the licence agreements took into account factors that
were not applicable in the present case. It was pointed out to the defendants early on in
the negotiations - albeit without naming the settlement licence partners - that their
counter-offers were considerably lower than the lump sums of the licence agreements.
of the third-party licence partners are taken from the IDC data.
In
addition, the applicant must determine the weighted share of the 4G licence fees.
Furthermore, the strength of the portfolio of the licence agreement partners in relation
to that of the applicant regarding 4G and the value of the 4G standard in 5G products
must be taken into account. The lump sum licence amount is then set in relation to the
sales figures discounted in this way in order to obtain the unit licence. The result
obtained in this way should be further adjusted in order to serve as a basis for
comparison. First of all, the unit licence rate calculated in this way should be increased by
% because the agreement with the defendants only has one licensor - the plaintiff -
whereas the third-party licence agreements also have a licensor in addition to the
plaintiff The rate would
therefore have to be increased because the contractual partners would have to pay
lower prices as they would h a v e saved transaction costs by obtaining two licences at
the same time as a result of one negotiation. If, on the other hand, the third-party
licensees had had to negotiate two separate licences, their unit licence rate would have
b e e n correspondingly more expensive. Furthermore, the defendant's licence rate
would have to be further increased compared to the third-party licensees because they
had purposefully participated in the negotiations and thus saved transaction costs. In this
case, an early bird discount is customary in the industry, to which the defendants
unwilling to take a licence are not entitled.
Furthermore, high
In addition, it had to be taken into account that the rates for the comparative licences
were lower in part because the contractual partners were particularly large and therefore
important for market development. This could be taken into account with up to a
premium. It should also be taken into account that the defendants had insisted on a
blanket licence. This entailed a risk of undercompensation for the licensor or
overpayment for the licensee for both parties to the contract.
associated with this. In comparison with the third-party licensees, a surcharge on the derived
unit licence of was therefore justified.
42. In addition, further special features of unpacking must be taken into account in some cases.
sales volumes which, in comparison, justified a reduction in the licence rate of the third-
party licence partner. With regard to the further details of the submission on the
plaintiff's third-party licence agreements, reference is made to the pleading
supplementing the reply, Part II - non-technical part.
43. Moreover, the defendants had not argued that the acceptance of the plaintiff's allegedly
FRAND-infringing licence offers was appreciable.
44. The defendants' counter-offers were clearly not FRAND. The multi-mode weighting of the
defendant's private expert was already incorrect because it underestimated the
importance of the 4G standard. This is because 5G was only introduced in 2019 and even
in developed regions, 5G-capable phones did not come onto the market until 2021; in
other regions, 5G would not play an economic role until the end of the licence term.
Therefore, the assumption that 4G will only play the role indicated in percentage points
in the tables of the expert opinion in times of 5G is incorrect.
45. The regional adjustment for the applicant's portfolio made by the expert is also
untenable. Furthermore, it was not shown to what extent discrimination against the
defendants could be derived from this without objective reason, as they were only
entitled to non-discriminatory treatment, but not to a specific licence fee. However, the
defendants could not impose their desired licence structure on the plaintiff as long as the
plaintiff treated them equally with its other licensees. The private expert's approach also
contradicts leading court decisions by forming separate territorial licence rates for the
USA, the EPC area, Japan and China, including the rest of the world, for his FRAND rate.
Moreover, according to the expert's own assumptions, the plaintiff's SEP portfolio is not
weaker in China than in the rest of the world.
world, the rate is even stronger than in the EP area. The reduction made for China by
almost is not justifiable. Moreover, this approach contradicts the fact that the
expert relied on the sales prices achieved by the defendant.
and its multi-mode weighting, while only taking into account the territorial markets in
the plaintiff's patent strength and the defendant's alleged sales figures. The
determination of the value of SEP for the standard on the basis of the price difference
between products with and without mobile technology is also wrongly criticised by the
defendant's expert.
46. The top-down method used by the defendant's expert already has inherent weaknesses,
but the expert also bases his corresponding calculation steps on outdated data sets or
data sets that are not sufficiently validated and are therefore rightly criticised in the
industry because they neither sufficiently examine the essentiality of the patents that are
significant for the overall standard nor sufficiently take into account the change in the
overall patent portfolio over time. Therefore, the methodology could at best be used to
check the plausibility of a FRAND result derived on the basis of comparative licences. The
defendant's expert, on the other hand, deviates from the principles established to date
within the top-down methodology without sufficient justification. For example, the
defendant's expert discounts the number of the plaintiff's LTE patent families in the
numerator of his share calculation, but not
the number of total LTE patent families in the denominator (Schedule 10.2 of the expert
opinion) and thereby dilutes the strength of the plaintiff's portfolio. Moreover, it does
not examine the essentiality of the patent families, but works solely with the number of
declared patents and assumes incorrect acts of use, because it also only subjects sales in
countries other than China to the licence rate applicable to China due to production in
China and does not take into account that sales in other countries also require a licence
for these countries.
47. The defendant's previous counter-offers were also not FRAND.
FRAND counterclaim
48. By separate pleading dated 21 December 2023, the defendants, in addition to their
statement of defence and the counterclaim for a declaration of invalidity of the patent in
suit, filed a
"Counterclaim for determination of a FRAND licence fee for the EP territory".
49. The defendants argue that the UPCA has jurisdiction under Article 32(1)(a) UPCA for this
counterclaim, which concerns a licence. The aim of the counterclaim is a FRAND licence
between the parties in relation to the plaintiff's portfolio of standard-essential European
patents for 3G and 4G-capable mobile devices and the determination of the licence rate
to be paid for this. The licence rate thus determined for the EP territory should then also
apply to the USA and Japan. For the rest of the world, the defendants decided to have
the FRAND rate determined by a Chinese court, where the majority of production and
sales take place. This regional division is also reflected in the parties' previous
negotiation history. The request to set a FRAND rate is also justified by the timing of the
proceedings, in particular in view of the parallel proceedings pending in the UK to set a
FRAND rate with Xiaomi.
50. The defendants have an enforceable claim as beneficiaries to conclude a FRAND licence
on the basis of the plaintiff's ETSI declaration pursuant to Art. 6.1 ETSI IPR Policy, which
also covers the patent in suit, and the French law applicable under it.
French law, the defendants have an enforceable claim as beneficiaries to the conclusion
of a FRAND licence.
51. The licence rate offered by the plaintiff did not comply with FRAND conditions, as the
expert opinion of the defendant's private expert showed in detail. After the
establishment of the secrecy regime in the present proceedings, the defendants
submitted settlement licence agreements (Annexes VB-F 19 and 20) used in the private
expert opinion (App_15307/2024) in a submission dated 21 March 2024, without the
need for an initially requested submission order to substantiate their submission.
52. The rapporteur provided information on the FRAND counterclaim in the orders of 31
January 2024 (ORD_5505/2024) and 27 June 2024 (ORD_38680/2024).
53. The defendants have made further submissions in addition to their submissions in the
counterclaim and in response to the questions raised by the rapporteur in the orders of
31 January 2024 and 27 June 2024. In particular, the defendants make it clear that they
wish to be bound by a FRAND provision of the panel. For this reason, the defendants
expressly formulated applications aimed at performance and continued to pursue
applications aimed at a declaratory judgement in the alternative. This is expressed in
particular in the main motion under I., which seeks to oblige the plaintiff to accept the
defendant's counteroffer of 17 July 2024 (VB-FC 14), which is set out in detail in the
pleading and which the plaintiff rejected on 2 August 2024 (VB-FC 18). A bank guarantee
was provided to cover the amounts owed (VB-FC 19), which is now being served.
Information on acts of use was provided on the basis of the IDC data already available to
the plaintiff, which was analysed in the expert opinions (VB-FC 11 and 13). This counter-
offer was essentially based on the contractual conditions from the plaintiff's draft
contract; only three points were modified, which is why, in the defendant's view, the
remaining contractual conditions should not be in dispute between the parties. The
modifications consisted of the following
acceptance of this offer, which is being pursued with the main claim I.1 directed at
performance. This is intended to oblige the plaintiff to accept the defendant's offer. The
plaintiff cannot counter this by arguing that FRAND is a corridor and therefore there can
be no claim to the conclusion of exactly one specific contractual offer.
54. Conversely, the defendants also undertake a binding obligation to accept an offer from
the plaintiff (VB-FC 20) if a decision is made in accordance with Requests I.2 or .3. In
particular, request I.3 took into account that the defendants had brought another
proceeding for the determination of the FRAND rate for the rest of the world (in addition
to the determinations asserted here for the EP states, the USA and Japan) before the
Beijing Intellectual Property Court in China. The defendants also undertook to accept the
further (partial) licence instalment determined there.
55. Such a division of the licence amount provisions was also appropriate. It is a worldwide
licence, in which only the determination of the amount is left to the respective courts
closest to the subject matter - once to the UPC for the EP territory, Japan and the USA,
once to the court in Beijing for the rest of the world. In the negotiations between the
parties, a distinction was also made by mutual agreement between prices for region 1
and 2.
56. According to the defendant, the FRAND counterclaim was brought independently of the
infringement action. It is not dependent on the patent in suit being infringed and legally
valid. Moreover, the subject matter of the counterclaim goes far beyond the subject
matter of the patent infringement action because the counterclaim is directed to a global
portfolio licence. The fact that the UPC is competent for the FRAND counterclaim is not
in dispute between the parties for the sake of argument; moreover, the plaintiff did not
raise an objection under Rule 19 RoP.
The defendants were entitled to
58 The licence
with
the expert correctly unpacks
The distribution of the plaintiff
with
on the other hand, is
economical
The plaintiff wrongly accuses the defendants of unwillingness to license, inadequately
analyses the defendants' expert opinion and does not make the manner of "unpacking"
the submitted settlement licence agreements sufficiently transparent. Conversely, the
defendant's further expert report, which now analyses the submitted settlement licence
agreements, confirms that the plaintiff's offer is outside the FRAND corridor.
57. The conclusions drawn by the defendant's private expert were also substantiated by the
plaintiff after submission of the three comparative licence agreements. The plaintiff
wrongly considers the contract with not to be a suitable comparative figure; this
applies rather to the plaintiff's contract with because the defendants sell
considerably higher quantities than The unit licence fee of the defendant's
private expert is FRAND, as is the flat-rate licence fee presented by him, which, as usual
, assumes a past period of years.
years. The defendant's expert unpacks the plaintiff's
plaintiff's comparative licences appropriately.
not economically justifiable. The IDC data would be used to calculate the unit licence rate
and constant sales figures would be assumed by way of an ex-ante projection. A %
discount for future payments and a % discount for lump sum payments would then be
applied. An ad valorem rate is then derived taking into account the weighted sales of
and a reference to the average selling price (ASP) of the defendant's devices is
established.
59. The unpacking of is carried out according to the same principles, whereby
no account is taken of the fact that
licence
agreements
a discount of for the
transaction
costs saved
due to the
conclusion of
two licence
agreements.
The approach of the
early-bird discounts is
unjustified, the consideration of the fact that licence
60. The unpacking of the plaintiff, on the other hand, was not justified. The lump sums of the
and licences were reduced by incomprehensible factors.
reduced. The share of the WIFI portion of the licence and
as well as the discount of % due to the importance of the
licence because of its scope is not explained. Without itemised sales figures and sales
forecasts, the plaintiff's figures are not comprehensible, they also deviate considerably
from the assumptions of the defendant's private expert, without the deviation being
explainable so far.
61. To the extent that the plaintiff's unpacking is comprehensible at all, it suffers from errors.
For example, the plaintiff did not derive a value for 4G-MM devices and 5G-MM devices,
although the value of 4G in the devices is different. Furthermore, the extent to which the
different 4G functionalities are implemented in the devices is not taken into account -
the defendant's ad valorem approach is preferable here. In addition, the plaintiff inflates
the unit licence by not taking into account the value of the past management, which is
significant in the respective licence rate,
into account. Furthermore, it is incorrect that the licence holders are granted discounts.
from which the defendants should not benefit. In particular, it is not explained that and
why the settlement licence agreement partners were actually entitled to these discounts
such as early bird discount, lump sum or dual licensing or because of the leverage and
quantities. It was disproportionate to compensate for transaction costs saved due to the
conclusion of two
licensee did not justify a discount either. The risk discount of % for the
lump sum was also unjustified, at least in terms of the amount, and it was not justified
for the licence fee. licence taken into account
in the licence. The
granting a volume discount to is in any case contrary to FRAND and also disproportionate
to the
disproportionate to the contract with in view of the figures there. A leverage
discount to is also not justified.
62. The plaintiff's legal views on the ETSI FRAND declaration are misguided, as this gives rise
to an enforceable claim to a FRAND licence and direct performance. The defendants are
also favoured as parties willing to obtain a licence.
63. The applicant's claims in its response to the FRAND counterclaim were inadmissible.
64. The Rapporteur has a letter from the UK High Court, Just. Richard Meade, which has
reached the Local Division and informs about the planned procedures before the High
Court (ORD_44583/2024).
65. Lastly, the defendants pursued the counterclaim for determination of a FRAND fee, filed
together with the statement of defence and the counterclaim for annulment, with the
restated claims referred to above. The amended version of the application was admitted
by the judge-rapporteur. They have stated that they will also continue to pursue the
originally filed version of the application if the amended applications cannot be granted.
These are therefore reproduced as a further group of auxiliary requests.
66. The applicant acknowledges that a licence seeker willing to obtain a licence is in principle
entitled to a FRAND licence relating to the 3G and 4G standard. This can be derived from
Art. 102 TFEU or from the ETSI declaration. However, the defendants are not willing to
grant a licence. Therefore, there was already no need for legal protection for the FRAND
counterclaim. It was primarily incumbent on the defendants to take all necessary steps
out of court to acquire a licence - recourse to the courts was not permissible beforehand.
It follows from the ETSI IPR Policy that there is an obligation to enter into bona fide
negotiations on the conclusion of a FRAND licence. This was not the case with the
defendants. Also from Art. 102 TFEU
nothing else followed. The lack of willingness to take a licence is shown b y the fact that
they have neither provided information nor security.
67. The licence justifying the unlawful acts of use was solely a worldwide portfolio licence
and the defendant's argumentation in this regard was contradictory in itself. The UPC is
not only competent with regard to counterclaims for licences already in existence, but
also for counterclaims directed at licences yet to be granted. The counterclaim could only
be directed to a licence to the respective patent in suit, but insofar as the counterclaim
asserted licences to the portfolio for the entire territory of the EPC, the counterclaim was
in any case partially inadmissible.
68. The defendants are not entitled to a determination of a complete licence agreement by
the court, nor to a specific FRAND fee, because FRAND is a corridor - therefore, the ETSI
declaration does not give rise to such a concretely determinable claim to a specific form.
In any case, the ETSI declaration is not a binding offer, but only a contractual promise -
the contract, however, is a separate legal transaction. The EPG is also not a third party
appointed to determine the licence fees within the meaning of the case law of the ECJ in
Huawei v. ZTE (para. 68).
69. The requests initially made in the counterclaim are also too vague, unlike the requests
made by the plaintiff under III - V in the present counterclaim.
70. In its reply to the FRAND counterclaim, the plaintiff also complains that the defendants
did not introduce their submission on their private expert opinions into the proceedings
in writing, but referred to the party opinion in an insufficient manner, which was
inadequate.
71. The present proceedings to determine a FRAND licence are now in conflict with a FRAND
determination procedure initiated in Milan, Italy, before the national court by a
distribution partner of the defendant with exclusive responsibility for Italy.
72. The defendant's licence offer of 17 July 2024 is not FRAND for the simple reason that it
proposes the allocation of the FRAND provision between different courts, which is not
FRAND-compliant. The determination of a worldwide FRAND rate is appropriate.
73. The defendant's other offers are not FRAND-compliant because they do not take into
account the plaintiff's settlement licence and thus incorrectly determine the FRAND
corridor.
74. The defendant's provision of security is not appropriate and was made approximately
three years too late, after the plaintiff had already rejected the defendant's counteroffer
on 27 August 2021.
27 August 2021 had already been rejected. The amount of the security offered was also
too low and was linked to conditions that would be unreasonable in the event of
insolvency, because it is neither possible for an administrator to conclude a licence
agreement with certainty nor is a legally binding court-ordered determination of a
FRAND rate guaranteed in the event of insolvency.
75. Information was still not provided and the IDC data was insufficient.
76. The defendant's expert opinion was methodologically flawed and the unit licence
demanded by the plaintiff instead of an ad valorem licence was FRAND-compliant. In the
parallel proceedings in the UK, the defendants themselves had preferred a unit licence.
The party expert's allegation that the defendants would have to pay more for a lower LTE
implementation in their devices than the parties to the settlement licence agreement
was incorrect - there was also no causal relationship between the LTE UE category and
the final price. Therefore, this does not play a price-setting role in free negotiations on
the market. Insofar as the party expert refers to the decline in average sales prices for
the defendant's 4G telephones, it has not been submitted that this results in an
unreasonable licence burden for the defendant's products. It is also incorrect that the
defendant's expert considers sales of the plaintiff's settlement licence agreement
partners up to years before the conclusion of the
t h e conclusion of the contract, but that the defendants refused to conclude licences for a
unjustified. It is incorrect that it is
subsidiary of the plaintiff. On the contrary, it is
In addition, the defendants had been granted a
double licence.
licences for a comparable past period. This unfairly favoured the defendants. It is also
unfair if the licence fees to be paid by the defendants do not take into account - if one
were to follow their party expert - that in the past years, in which 5G was not yet
available, the payments for the utility value of 4G technology would have been higher.
Therefore, in retrospect, the defendants were unjustifiably rewarding themselves for
delaying the acquisition of the licence. When considering past sales, the duration of the
negotiations may also be taken into account in accordance with antitrust law. The
defendant's expert's renewed criticism of the plaintiff's unpacking was unfounded.
77. The criticism of the division and weighting of the portfolios was also unfounded.
is a subsidiary
with , which they had rejected.
78. The defendant's expert does not derive the licence rates used by him globally, but
applies them globally in violation of FRAND. In addition, the defendant's expert takes into
account the allegedly lower value of 3G/4G technology in the meantime several times by
reflecting this in the average sales price of the phones, in the total load of phones with
licences for SEPs and in the number of SEPs to be included in the total licence load.
79. The comparative licence agreements of the defendant were not relevant and were also
incorrectly used by the defendant's expert.
With regard to the further details of the facts of the case and the matter in dispute, reference is made
to the pleadings submitted together with the annexes.
REASONS FOR THE DECISION
Jurisdiction
80. The jurisdiction of the Local Division Mannheim of the Unified Patent Court for the
infringement action and nullity counterclaim arises from Art. 31 UPCA in conjunction
with Art. 71b no. 1 Regulation (EU) No. 1215/2015. Art. 71b No. 1 Regulation (EU)
1215/2015, Art. 32(1)(a), (e) UPCA and Art. 33(1)(a) UPCA. The
Defendants also committed the acts of infringement on the territory of the Federal
Republic of Germany according to the substantiated plaintiff's submission. The
defendants withdrew their objection to jurisdiction - albeit under protest - at the oral
hearing after the panel pointed out the probably existing contradiction between, on the
one hand, considering the court to have no jurisdiction in principle and, on the other
hand, nevertheless requesting the determination of a FRAND rate by this court, which is
considered to have no jurisdiction, in connection with the antitrust dispute between the
parties. The Local Division Mannheim also has jurisdiction for the FRAND counterclaim
(see below).
Formalities of the patent in suit
81. The plaintiff bases its claims in the infringement action on the European patent EP 2 568
724 B1 ("patent in suit") relating to a radio communication device and a radio
communication method, which was filed on 13 August 2008 and claims the priority of JP
2007211548 of 14 August 2007 and the priority of JP 2008025535 of 5 February 2008.
The notice of grant of the patent in suit was published on 17 December 2014.
published. The patent in suit is in force in, inter alia, the Federal Republic of Germany,
the French Republic, the Italian Republic, the Kingdom of the Netherlands and the
Kingdom of Sweden.
Technical context of the patent in suit and problem definition
82. The patent in suit deals with a solution to a technical problem in the context of the LTE
standard. The parties agree in describing the specific problem in that the patent in suit
deals with the uplink signal traffic from a radio communication device to the network in a
radio cell. In particular, the application case is examined in which such a device is not
located in the core of the radio cell, but in its peripheral area. The patent in suit describes
it as known that the energy available for the transmission of signalling decreases and
transmission losses occur if the communication device is located at the edge of the cell.
The problems described also arise in particular with regard to reference signals, which
serve to estimate the channel quality in the uplink on the network side (also known as
SRS (Sounding Reference Signals) signals). In addition, the reference signals are used to
estimate the time offset between the base station and the mobile station. It is known to
the relevant skilled person that the reference signals must have a certain minimum size
in order to be useful for assessing the time offset and must therefore not be just 1 RB
(resource block) in size. This is addressed by the patent in suit in section [0005], where it
addresses a certain minimum size of the reference signal. In the following, the patent in
suit focuses on the estimation of the channel quality in the uplink, which is to be
determined on the basis of the SRS signals. From this dependence of the channel quality
and transmission and energy losses on the location of the user equipment (UE), it is
already clear to the skilled person that the signalling referred to is not to be considered
generally in the abstract, but with regard to the specific UE. Accordingly, the patent in
suit describes that a UE which is located in the core of the radio cell has sufficient energy
to transmit an SRS signal which is designed as a wideband signal (section [0004]). If this
energy is not sufficiently available
narrowband SRS signals are used for channel estimation. From this context, the skilled
person understands that the corresponding tuning and orders are carried out on the
network side and not by the UE itself, because only the network is able to make the
necessary decisions regarding the optimal configuration and the resulting signalling in
the respective concrete application situation on the basis of the signals transmitted by
the UE in the uplink.
83. The patent in suit further describes that in the LTE standard, a PUCCH (Physical Uplink
Control Channel) is located at both ends of the system band by means of frequency
multiplexing. The SRS signals would therefore be sent in the system bandwidth minus the
PUCCH (section [0006]). The width of the control channels is variable depending on the
amount of control data that needs to be handled. Therefore, the SRS transmission
bandwidth also varies with the variance of the control channels. Here, the patent in suit
defines in section [0007] that it refers to the frequency resources occupied by a single
SRS signal as the SRS bandwidth and the majority of transmitted SRS signals as the SRS
transmit bandwidth.
84. The patent in suit sets itself the technical task of offering a solution to the problem that
the SRS transmission bandwidth varies with the change in bandwidth of the PUCCH
channels. However, the changing bandwidth, in which the user data is transmitted
together with the SRS signals in the PUSCH (Physical Uplink Shared Channel) channel,
should also enable the best possible estimation of the channel quality by means of
narrowband SRS signals. In the state of the art, the problem here is that the SRS signals
can overlap with the PUCCH channels as the bandwidth changes, which leads to signal
losses. The skilled person is aware that signal losses in the control of the connection in
particular must be prevented. For this reason, the PUCCH channels in LTE are also
arranged at the two ends of the system bandwidth and not in the centre, where
collisions are more likely. In order to avoid interference between the SRS signals and the
PUCCH channels, the patent in suit describes as previously known solutions either the
transmission of SRS-
signals from the outset only to the band range that remains when the PUCCHs occupy
the maximum bandwidth defined on the network side (see section [0009] and Figure 2).
However, this solution has the disadvantage that larger areas of the band in which the
SRS signals and user data can be transmitted are not covered by the SRS signals if the
PUCCH do not have the maximum size, but only have a lower utilisation. This would
reduce the quality of the estimation of the transmission quality. Conversely, if the
minimum size of the PUCCH is assumed, interference with the SRS signals occurs (Figure
3A and B).
85. Another known solution was to stop the transmission of the SRS signal if the SRS
overlapped with the PUCCH. However, this would again result in an area that was not
covered by an SRS signal. This again reduces the quality of the estimation of the channel
quality (see section [0011] and Figures 4A and 4B). Both approaches therefore mean that
a larger area of the bandwidth that should be covered for the best possible channel
quality estimation under the given boundary conditions, under which only narrowband
SRS can be transmitted by means of frequency hopping, is not covered and the quality of
the estimation deteriorates as a result.
86. To solve this problem, the patent in suit proposes a radio communication device
according to claim 1
and a radio communication method
according to claim 13. The features of claim 1 can be summarised as follows:
1. Radio communication device (200)
1.1 The radio communication apparatus which can be configured to transmit a
reference signal with a transmission bandwidth in a given system bandwidth,
wherein control channels are assigned to both ends of the same [system
bandwidth] and the transmission bandwidth is between the control channels,
or to transmit reference signals with a low bandwidth with frequency
hopping.
low bandwidth with frequency hopping
1.2 The radio communication device comprises a allocation unit
(202) configured to allocate the reference signals to frequency resources
1.3 The radio communication device comprises a transmitting unit (204)
configured to transmit the assigned reference signals
1.3.1 The transmission bandwidth varies in the given system bandwidth
1.3.2 The allocation unit allocates the reference signals in such a way that the
reference signals are allocated to frequency resources, each of which
has the small bandwidth that is invariant regardless of changes in
of the transmission bandwidth
1.3.3 The frequency resources are allocated according to the change in the
bandwidth in a frequency band of the transmission bandwidth
Interpretation of the patent claim
Some features require further explanation: Feature 1.1
87. Feature 1.1 expresses that the radio communication device can be configured according
to the specifications of the claim (in the relevant process language of the patent in suit:
"configurable to"). Based on the relationships described above, the skilled person
recognises that it is thus sufficient if the device can be set up accordingly by network-side
specifications. However, it is not necessary for the device to always be configured
accordingly. Due to the fact that the solution is based in the context of devices moving in
the radio cell and thus subject to different framework conditions, the person skilled in
the art recognises that certain determinations of the communication are specified on the
network side.
are determined by the network. For example, the person skilled in the art is aware that
the bandwidth required for the control channels is determined on the network side
based on the need to send control information, which is determined on the network
side. Accordingly, the variance of the bandwidth of the PUCCHs is determined on the
network side. According to feature 1.1, the device must be able to operate in accordance
with the framework conditions determined on the network side and to implement the
other elements of the invention.
88. In the context of the patent in suit, the skilled person understands the term
"transmission bandwidth", contrary to the applicant's view, as that bandwidth within a
given system bandwidth which is located between the control channels and which is thus
available for transmitting reference signals and user data. The broadband SRS signal
referred to in the claim extends over this transmission bandwidth, which is therefore
defined by the system bandwidth minus the bandwidth required for the PUCCH. In the
event that no sufficient energy is available and therefore no broadband SRS can be
transmitted, the narrowband SRS are distributed over this range by means of frequency
hopping. Contrary to what the applicant believes, the transmission bandwidth is not
defined by the beginning of the first SRS signal transmitted in the bandwidth to the end
of the last SRS signal transmitted in the bandwidth, i.e. the area actually covered by the
SRS signals. The skilled person will find no support for such an interpretation in the
literature. Rather, section [0006] already describes:
"Accordingly, an SRS is transmitted in the band subtracting the PUCCHs from the system
bandwidth."
The skilled person finds this understanding confirmed when reading the description,
which is to be used to interpret the claim (UPC_CoA_1/2024, para. 35). On the other
hand, there is no support for the interpretation put forward by the applicant. At no point
is it described that the transmission bandwidth - due to whatever circumstances - only
extends from the beginning of the frequency of the first narrowband SRS signal to the
end of the frequency of the last narrowband SRS signal
and thus between the PUCCHs at both ends and the beginning and end of the
transmission bandwidth there would be a frequency range that is not to be understood
as a transmission bandwidth. Although it may be conceivable to the person skilled in the
art that other signalling such as a RACH (Random Access Channel) could also be located
in the frequency, such options are not considered for the solution developed by the
patent in suit. Rather, all embodiments are based on the fact that the SRS transmission
bandwidth is obtained by subtracting the PUCCH transmission bandwidth from the
system bandwidth (see section [0027] regarding embodiment 1 to which all further
embodiments refer back ("on the SRS transmission bandwidth obtained by substracting
the PUCCH transmission bandwidth from the system bandwidth"), for example [0034]:
"different from
... Embodiment 1 only in SRS allocation determination section in the base station";
corresponding to [0045], [0054], [0058], [0061], [0066]). There is thus a direct correlation
between the variance of the control channels and the size of the transmission
bandwidth. Nothing else follows from section [0072], which also emphasises that the
transmission bandwidth is defined as a function of the variance of the PUCCHs, even if
this may be a specific assigned frequency band. The distribution of the SRS signals by the
allocation unit in accordance with features 1.3.2 and 1.3.3 also takes place in the initially
determined available transmission bandwidth between the control channels. This
variance of the transmission bandwidth is then also addressed in feature 1.3.1.
Feature 1.3.2
89. According to the wording of feature 1.3.2, the narrow bandwidth reference signals are
invariable regardless of the changes in the transmission bandwidth. The person skilled in
the art understands the invariability of the SRS signals in this respect as a central aspect
of the proposed solution. This is because he recognises it precisely in the fact that a
variance in the width of the control channels and the transmission bandwidth
determined exclusively by this is countered precisely with a distribution of SRS signals
which are each invariable in themselves. For their part, they are not variable in the
bandwidth that they require (for each individual SRS signal) in the frequency range.
in the frequency range. The SRS signals are addressed in section [0068]:
"In this way, according to the present embodiment, in accordance with an increase and
decrease of the number of PUCCH channels, SRS allocation is changed such that a CQI
estimation bandwidth is covered with fixing SRS bandwidths evenly."
Insofar as the applicant refers to section [0073], which declares a variance of ±1 to 2
resource blocks, which does not interfere with the quality estimation, to be tolerable,
after the embodiments were previously described only with invariable SRS signals, no
relativisation of the invariability criterion can be derived from this in view of the
unambiguous wording of the claim, which specifies the narrow bandwidth as invariable
without restriction. The size of the narrowband SRS signals is only limited downwards in
the document by the fact that it must be at least 1/Δt in order to be able to estimate the
time offset (cf. Section [0005]). In the document referenced in section [0008] (Annex VB-
T D3), it is described after the 3rd indent in the last paragraph of section 3 that the
minimum bandwidth is 1.25 MHz in order to be able to estimate the time offset in the
uplink. This corresponds to 6 RBs, as the specialist in question is aware. The skilled
person therefore does not read a variance of up to 2 RBs into the narrow bandwidth of
the SRS signal, because this could otherwise result in the narrowband SRS no longer
being able to fulfil the function of being able to estimate the time offset at the same
time. The example shown in Figure 13B, in which the SRS signals partly overlap but are
not adjusted in size despite the overlap not being necessary for quality estimation, but
remain unchanged for this special case, also speaks against a variance within a certain
tolerance. Therefore, the wording and functional context within the claim argue against
recognising a certain variability of the narrowband SRS signals as being in accordance
with the claim.
Feature 1.3.3
90. According to feature 1.3.3, the invariable narrowband SRS signals according to feature
1.3.2 should be evenly distributed in a frequency band of the transmission bandwidth (cf.
e.g. [0032]: Then, as shown in Fig. 8, the positions where SRSs are frequency-multiplexed
in the SRS transmission bandwidth are positions to cover the SRS transmission band
evenly, that is, the frequency band subject to CQI estimation." And [0068]: "a CQI
estimation bandwidth is covered with fixing SRS bandwidths evenly"). In the description
and the figures, the document makes it clear to the skilled person that technically and
functionally no complete coverage of the transmission bandwidth by SRS signals is
required. Rather, the person skilled in the art understands that smaller gaps in the
coverage between the SRS signals or between the first or last SRS and the PUCCH are
acceptable for estimating the channel quality. On the other hand, there should be no
major gaps in coverage, which are currently criticised in the state of the art. The
distribution should therefore result in several small frequency ranges not covered by SRS
signals remaining within the transmission bandwidth (see also Figures 8, 10, 11, 13, 14).
91. The above statements apply in the same way to the interpretation of method claim 13.
Legal validity of the patent in suit
92. Against the background of this understanding of the claim, the patent in suit proves to be
legally valid, which is why the nullity counterclaim had to be dismissed.
93. As a result, it can be left open whether the document VB-T-15 cited by the defendants
for the first time in their reply to the revocation counterclaim could be taken into
account. The document is cited from the parallel proceedings UPC_CFI_219/2023
conducted against Xiaomi concerning the same patent in suit against the legal status.
However, the case nevertheless gives reason to express the view of the panel that, in
principle, the revocation counterclaimant is required to present its attacks already with
the revocation counterclaim.
the action for annulment (Rule 25.1(b), (c), (d), (g) RoP). At most, he can raise new
attacks in individual cases if he makes a substantiated submission as to why it was not
possible for him to raise the corresponding attack in the revocation counterclaim. This is
because the patent proprietor must be given the opportunity to react to new prior art,
possibly by making the necessary amendments to the patent claims. However, according
to Rule 30.2 RoP, such requests may only be admitted with the express permission of the
court. Accordingly, Rule 32.2 RoP only provides that the invalidity opponent may respond
to a request for amendment by the patent proprietor with the arguments contained in
Rule 44(d) to (h) RoP and may argue as an alternative to non-infringement. On the other
hand, there is no provision in principle for the opponent to introduce newly searched
prior art into the proceedings which it has not yet searched without being prompted to
do so by the patentee's request for amendment. Rather, this prior art is regularly no
longer to be taken into account under Rule 9.2 RoP.
94. In the present case, it may also have to be taken into account that the prior art searched
by the defendants here was known to the plaintiff from the nullity attack by the
defendants in the parallel proceedings and that they had sufficient opportunity to deal
with the prior art there within the time limit regime, especially since fundamental
deviations in the assessments of the same prior art by the nullity plaintiffs here were not
demonstrated or otherwise apparent. In any case, the question can remain unanswered
in the present case, since the document is not novelty-destroying within the meaning of
Art. 54 EPC and cannot give rise to invalidity under Art. 138(1)(a) EPC.
No inadmissible extension
95. Against the background of this interpretation, the patent in suit is not inadmissibly
extended within the meaning of Art. 138(1)(c), 76(1), 65(2) EPC.
96. The defendants defend their invalidity attack on the premise that the plaintiff's
interpretation of the patent claim is followed with regard to the transmission bandwidth
according to the patent in suit. However, as described above, the panel does not follow
this interpretation.
97. Insofar as the defendants justify their attack by arguing that the teaching according to
the patent in suit is inadmissibly extended due to the omission of the "generation
section" and the "unit of transmission" disclosed in the parent application, the court
does not follow this view. As the applicant has correctly pointed out, it is clear in the
parent application in sections [0101 et seq.] and [0102 et seq.] that it is not necessary to
fulfil the addressed functionality of a "generation section" in a specific physical manner.
The fact that a reference signal is to be provided for the purposes of the teaching is
sufficiently expressed in the claim. The same applies to the "unit of transmission" missing
from the claim by the defendants. The parent application and the patent in suit show in
sections [0097] and [0098] respectively that this functionality does not have to be
realised in a specific unit.
No elimination of the priorities claimed
98. The defendants justify the omission of the claimed priorities of the patent in suit in the
same way as the attack of inadmissible extension. For the same reasons, the
argumentation does not hold water. The priorities are effectively claimed.
Novelty compared to VB-T D15 (EP 2 129 022 A1)
99. The citation was published on 2 December 2009 and claims priorities of 15 February
2007 and 23 March 2007, thus constituting an earlier right which can be used for the
examination of novelty under Art. 54(3) EPC. Doubts as to the legitimate claim to priority
of JP 2007077900 have not been
have not been raised and are not apparent - the document contains the same disclosure.
100. The technical background of the document concerns the resolution of the conflict
between the channels PUCCH, PRACH and the SRS signal in an SC-FDMA scheme in the
uplink, i.e. by a strict frequency division multiplex procedure of PUCCH and PUSCH,
whereby - in extension of the task according to the patent in suit - the conflict between
PRACH and SRS signal is additionally resolved in the PUSCH data channel (section
[0012]).
101. In contrast to the patent in suit, which solves the conflict between SRS and PUCCH
exclusively by frequency multiplexing, i.e. by strictly separate frequency ranges, and
does not relate to the time domain, the PUCCH control channel in the citation is of two
types. On the one hand as a channel that is separate from the data channel PUSCH in
the time-division multiplex, and on the other hand as a control channel PUCCH that is
separate from the data channel PUSCH in the frequency-division multiplex (section
[0007]).
102. Thus, in this respect, there is an extension compared to the problem according to the
patent in suit, since according to the teaching of the citation, the conflicts are to be
resolved completely both in the frequency domain (Figures 4 to 6) and in the time
domain (Figures 7 and 8). However, a solution focussing solely on the frequency domain
is also presented to the skilled person in the literature (see section [0025]).
103. A mobile radio system comprising a base station and mobile stations in a radio cell,
which is supplied by the base station, is shown in Figure 1.
104. Figure 2 shows a subframe which locates the SRS signal in the first long block of the
subframe (section [0038]).
105. Figure 3 shows in principle the transmission of SRS reference signals in frequency
hopping over the system bandwidth.
106. However, this figure does not show where control channels are located and whether
they are variable or not. Against the background of the underlying problem and the
further explanation of the conflict resolution between the SRS signal and the channels
in the frequency domain addressed by the text (Figures 4, 5, 6 and 11), it is clear to the
person skilled in the art that PUCCH and PUSCH are strictly separated in the frequency
domain and that Figure 3 is a simplified representation to illustrate the transmission of
the SRS reference signals in the frequency hopping.
107. Also, the alternative transmission of a single broadband reference signal in the
transmission bandwidth is directly and clearly shown by the citation (section [0046]: "It
should be noted that the transmission band for the Sounding RS may be divided into
one or more transmission bands").
108. The fact that the control channels may be located at both ends of the transmission
bandwidth is shown in Figure 4, which represents a mapping of the resources in the
uplink in the time and frequency domain for PUCCH and PRACH (section [0042]). The
parties dispute
The parties dispute whether Figures 3 to 5 are read in context by the skilled person.
109. What is missing in Fig. 4 is the representation of an SRS reference signal located
between the control channels and its possible distribution.
110. However, this does not mean that no SRS reference signals are assigned there. This is
because the skilled person recognises that PRACH and SRS reference signals can conflict
with each other in the same frequency range at certain times, whereby this conflict,
which only occurs temporarily, is resolved by the measures shown in Figure 6:
111. Furthermore, the missing information in Figure 4 is also conveyed in the text by the fact
that the allocation of the time and frequency resources for the SRS reference signals
results from the mapping of PUCCH and PRACH, which is transmitted from the base
station to each mobile station in the radio cell by means of a broadcast (section [0045]),
and this information is also taken into account when mapping the individual SRS
resources of the individual mobile station, which is communicated by means of an RRC
message (last sentence [0040] and Figure 11).
112. The step S11 shown in Figure 11 refers to a transmission bandwidth if there is no time
conflict in the frequency range between SRS and PRACH. In this case, the SRS is
transmitted in this transmission bandwidth (Figure 11 - step S14).
113. If a conflict occurs at certain times (Figure 11 - step S12), this must be resolved in a
further step (Figure 11 - step S13) with regard to the options shown in Figure 6.
114. If, therefore, following the argumentation of the plaintiff for revocation, it is taken from
the document that in Figure 3 only a simplified representation of the basic principle of
the transmission of the SRS reference signals in the frequency hopping is shown and the
control channels are assigned to both sides of the system band and there neither SRS
reference signals (Figure 11 - step S11) are assigned nor transmitted (Figure 11 - step
S14), this nevertheless does not lead to a complete disclosure of the teaching of the
patent in suit.
115. If, again following the defendant's argumentation, Figure 5 is read in this context with
Figures 3 and 4 (cf. section [0026] - description of the figures: "transmission band for a
Sounding RS when a PUCCH is mapped to both ends of the system band"), it does show
the distribution of the low-bandwidth reference signals in a variable transmission
bandwidth in accordance with the claim, but at least not that the reference signals are
invariable in size.
bandwidth, but at least not that the reference signals are invariable in size:
116. This is because Figures 5A and 5B initially only disclose a distribution with low
bandwidth reference signals, which is not invariable, however, but varies and is
therefore not in accordance with the claim. Within Figure 5A, the bandwidth of the
individual SRS signal varies between 10 and 13 RB and thus even outside the tolerance
of ±1 to 2 RB mentioned in the statement of claim, which, however, as explained above,
does not in any case lead to the claim still recognising an invariable SRS signal. In any
case, Figures 5A and B are in turn related to Figures 5C, 5D and 5E. The person skilled in
the art is thus shown various possible configurations without recognising at this point
that a reference signal of invariable width is specified. Rather, the signals in the various
embodiments of Figures 5 vary arbitrarily in their width and are merely arranged in
such a way that they cover the transmission bandwidth between the PUCCH. However,
the skilled person is not immediately and clearly shown as belonging to the invention
that the reference signals are invariable. In addition, the PUCCHs in Figure 5
are each 2 RB wide and do not vary. The connection according to the patent in suit for
solving the problem of distributing invariable SRS signals in the variable transmission
bandwidth defined by varying PUCCH is thus not shown as an element of the invention
of the citation.
117. The other figures 5C, 5D and 5E do not change this either. It is true that Figure 5C and
Figure 5D show a distribution with a reference signal of invariable low bandwidth of 10
RB, whereby in any case Figure 5D with overlapping reference signals of invariable 10
RB shows a uniform distribution within the meaning of feature 1.3.3, as is also
presented in Figure 13B of the patent in suit as being in accordance with the claim.
However, the frequency bandwidths occupied by the control channels do not vary here
either, but are each 2 RB wide, although the skilled person may read their variability
into the figure from section [0042] and section [0045], last sentence, and section [0040]
and Figure 11. However, in accordance with the approach of the invalidity applicants,
these figures must also be considered in their context and are therefore on an equal
footing with Figures 5A, 5B and 5E, which do not show invariable but varying reference
signals. The five different distributions presented in the transmission bandwidth are
therefore arbitrary for the person skilled in the art. It is not directly and clearly
disclosed to him as belonging to the invention for solving the conflict between PUCCH
and SRS signals mentioned in the citation that the reference signals within the meaning
of feature 1.3.3 of the patent in suit are invariable in any case despite the variance of
the PUCCHs. This solution of the patent in suit is also not directly and clearly conveyed
to him in the descriptive passages explaining Figures 5 (sections [0047 et seq.]). Rather,
the alternatives are juxtaposed as arbitrarily interchangeable without favouring a
particular embodiment variant. It is therefore crucial that the invariability of the SRS
signal is not shown here, not even in an embodiment variant of Figure 5. Rather, the
skilled person reads Figures 5 as well as Figures 3 to 5 in context. In this case, however,
the result for the person skilled in the art is not the invariability of the bandwidth of the
SRS signal, but only an SRS signal that varies depending on the transmission bandwidth
to be covered and not an SRS signal that can be used in spite of the bandwidth.
varying transmission bandwidth unchanging SRS signal. Feature 1.3.3 is therefore not
disclosed as novelty-destroying.
Novelty over VB-T D1
118. The teaching of the patent in suit is also novel over citation D1.
119. In the LTE standard, it was known at the priority date of the patent in suit to arrange
the control channels PUCCH (Physical Uplink Control Channel) in the uplink at both ends
of the system bandwidth (uplink bandwidth), with the data channel PUSCH (Physical
Uplink Control Channel) shared for the transmission of uplink data being located in the
frequency range in between. This understanding is demonstrated by Figure 18 in
section 6.4.3 of VB-T D9, whereby section 6.5.2.2 of VB-T D9 states that the "sounding
reference signal" is assigned to a long SC-FDMA symbol. Furthermore, VB-T D5 proves
in section 1.1, 2nd indent, that the PUCCH bandwidth is variable.
120. According to citation D1, in order to estimate the channel quality of the PUSCH, it was
also known that the reference signals required to estimate the channel quality are
located in the frequency band of the PUSCH (Chapter 7 - Frequency multiplexing of data
and sounding signals).
121. Furthermore, citation D1 distinguishes between broadband reference signals (non-
hopped fixed sounding RS with broadband sounding BW1) and narrowband reference
signals in frequency hopping (frequency hopped narrowband sounding RS with
narrowband sounding BW2), whereby the variability of the bandwidth of the control
channels is taken into account when allocating the bandwidth for the reference signals
(sounding BW) (section 8 - "May be specified in #RB, but will have to take into account
the variable control channel overheads within a slot (i.e., top/bottom sounding may be
smaller than nominal)).
122. But this consideration inevitably leads to the fact that the narrowband reference signals
are not invariable, but depend on the change of the control channels and thus the
transmission bandwidth. (Section 8 - "May be specified in #RB, but will have to take into
account the variable control channel overheads within a slot (i.e., top/bottom sounding
may be smaller than nominal)").
123. Thus, at least feature 1.3.2 is not directly and unambiguously disclosed in D1 with
respect to the requirement of an invariable bandwidth of the narrowband reference
signals.
124. Even if one were to follow the defendant's submission in relation to citation D1, in its
example the narrowband reference signals in the frequency hopping are shown with an
invariable bandwidth of 1 RB:
125. However, the selection of a bandwidth of 1 RB for a narrowband reference signal is
arbitrary and, above all, contradicts the values resulting for the Narrowband Sounding
BW2 according to the results of the evaluation in Appendix B and the recommendation
according to the table in Section 8, which recommends a bandwidth of 1.25 MHz (6 RBs)
for the narrowband reference signal with a system bandwidth of 5 MHz.
126. Moreover, it remained uncontested at the oral hearing that it is clear to the skilled
person from paragraph [0005] of the patent in suit that in order to fulfil the
requirement for estimating timing offset between base station and mobile station, the
reference signals must have a certain minimum bandwidth, which is invariable for
narrowband SRS transmission. A
narrowband reference signal comprising only 1 RB does not - as the skilled person is
aware - cover the minimum bandwidth to be regarded as a narrowband SRS within the
meaning of the patent in suit. This is also confirmed by VB-T D3, which is cited as prior
art in paragraph [0008] of the patent in suit and states in the 3rd indent in the last
paragraph of section 3: "The minimum sounding bandwidth of
1.25MHz would be sufficient for the uplink timing estimation". This corresponds to a
width of 6 RB.
Novelty also with regard to the VB-T D1a caveat
127. A different result does not emerge if the VB- T D1a cited in VB-T D1 is taken into
consideration.
128. Citation D1a is cited as document [2] in citation D1 and is referred to by the defendants
in order to explain where the 1 RB reference signals are to be arranged in a system
band with a bandwidth of 5 MHz, i.e. 25 RB (page 4, lines 3 to 6 and 12 to 16), in order
to explain, in conjunction with D1, the previously described assignment of narrowband
reference signals to a bandwidth of 1 RB in the frequency hopping.
129. However, according to the text passage cited in D1a, i.e. "Structure A", Figure 2 shows
that the narrowband 1 RB reference signal (narrowband SRS) transmitted there in the
BPICH (broadband pilot channel) in frequency hopping is transmitted over the entire
system band of 5 MHz and also encompasses the frequency range of the control
channels PUCCH.
130. Figure 1 shows the assignment of the BPICH, which occupies the entire system band of
5 MHz and does not exclude the frequency range of the PUCCH control channels.
131. To summarise, when the reference signals are transmitted in the BPICH according to
D1a, the entire system band is always covered and the control channels are not
excluded.
132. It can be seen directly and unambiguously from D1a that when a reference signal is
transmitted on the BPICH, the conflict with the control channel is resolved in terms of
time, whereby this time block is then not available to the control channel.
133. Thus, based on D1, nothing additional can be obtained by reference to D1a from the
text passage "it may be desirable to exclude the edge-RBs used for UL control signalling
from the sounding blocks, thus resulting in FDMA between sounding signals and control
data signals" quoted in section 7, which specifically refers to an FDMA, which is not
already directly and unambiguously apparent from D1.
134. In particular, feature 1.3.2 with respect to the requirement of an invariable bandwidth
of the narrowband reference signals transmitted in the frequency hopping is still not
fulfilled and not directly and unambiguously disclosed.
Novelty compared to citation VB-T D3
135. D3 is cited in the patent in suit in paragraph [0008] as prior art and was therefore taken
into account in the grant procedure.
136. Section 2 of D3 first discusses two previously known approaches for transmitting
reference signals (abbreviated as CS RS= uplink channel sounding reference signal)
together with uplink control channels (PUCCH) in a system bandwidth.
137. In a first approach, which describes a time division multiplexing method (TDM), the
reference signals occupy the entire uplink bandwidth (system bandwidth). In this
approach, the control channel cannot be transmitted during the transmission of a
reference signal. This means that during the transmission of the reference
signals , no information can be transmitted on control channels.
control channels can be transmitted. This first approach is shown in Figure 1 of D3. It
can be seen that the reference signal utilises the entire system bandwidth.
138. In a second approach (FDM), known as frequency division multiplexing (FDM), the
reference signals are only transmitted within frequency bands that are not occupied by
a control channel (PUCCH). In this approach, the reference signals only jump within a
frequency band that is not occupied by the control channels. This second approach is
referred to in D3 by citing citation D3a (see D3a below).
139. According to Table 1 disclosed in D3 in Section 3, for system bandwidths up to 5 MHz
the specified bandwidth values of the transmit bandwidth (Wide sounding BW) always
amount to the total system bandwidth. Thus, for system bandwidths up to 5 MHz, no
resources remain in the specified system bandwidth for assigning the control channels
(feature 1.1) and, due to the lack of varying control channels, there is also no change in
the transmission bandwidth for a fixed system bandwidth (feature 1.3.1) and, as a
direct consequence, no disclosure of features 1.3.2 and 1.3.3.
140. The fact that for system bandwidths above 5 MHz the remaining part of the system
bandwidth not used by the transmit bandwidth remains and could in principle be
available does not imply otherwise, since D3 does not refer to this and there is no
specific disclosure in this respect.
Caveat VB-T D3a
141. Citation D3a is cited as document [3] in citation D3 and is referred to by the defendants
to show that the reference signals do not use any of the blocks ("LB"=Long Block) of the
control channels (PUCCH) and that the conflict between control channels
and reference signals is resolved by means of frequency division multiplexing
(FDM).
frequency division multiplexing (FDM).
142. In fact, section 6 of Figure 1 shows a system bandwidth at each end of which a single
control channel is assigned. In the intermediate area of the transmission bandwidth,
narrowband reference signals (SRS) are transmitted in frequency hopping:
143. By using FDM, there are not the conflicts between the control channels and the
reference signals addressed by the patent in suit, as there is a strict separation of
control channels and reference signals available frequency resources.
144. However, varying control channels are also not to be taken from D3a and consequently
the disclosure of features 1.3.1 and 1.3.3 is still missing.
No novelty-destroying character of VB-T D2 and inventive step
145. According to the defendant's own argumentation (KE para. 224), the citation VB-T D2 is
only prejudicial to novelty if - as is not the case - the plaintiff's interpretation of the
term "transmission bandwidth" is followed. Consequently, the argument of a lack of
inventive step based on the specification cannot be accepted either.
Citation VB-T D4a and 4b
146. Both citations VB-T D4a and 4b were published after 14 August 2007 as the relevant
priority date and therefore do not form part of the prior art.
Further citations VB-T D5 to D12 cited as evidence of the state of the art
147. The other documents D5 to D12 cited by the defendants as prior art only serve as
evidence of a technical understanding already confirmed in the above statements or
serve to oppose patentability in the form of the sub-claims and therefore require no
further assessment.
Feasibility of the invention and lack of inventive step
148. Contrary to the defendant's view, the invention is also disclosed in sufficient detail for
the skilled person concerned (Art. 138(1)(b) EPC, 65(2) EPC). However, according to its
own explanations, the defendant's argumentation only holds up if one were to follow
the plaintiff's incorrect understanding of the transmission bandwidth. This would leave
unsampled gaps, so that it would remain unclear how a good estimate of the channel
quality could be achieved. In this respect, reference is made to the previous statements
with regard to the correct understanding of the claim.
149. The patent in suit is also based on inventive step. In their reply to the revocation
counterclaim, the defendants in turn argue this attack against the patent in suit only on
the basis of the plaintiff's incorrect interpretation of the claim (see above).
Infringement of the patent in suit
150. The attacked embodiments, in particular the 4G-capable smartphones such as the
OPPO Find X5 Pro and the 4G-capable smartwatches of the defendants, operate
according to the 4G standard and thereby infringe the patent in suit in its main claims 1
directly in accordance with the wording within the meaning of Art 25(a) UPCA and the
method claim 13 indirectly within the meaning of Art. 26 UPCA by offering, placing on
the market, using or importing for these purposes and possessing the attacked
embodiments in the territory of the Federal Republic of Germany, the French Republic,
the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden
without the plaintiff's consent. The challenged embodiments are means relating to an
essential element of the invention and the defendants should at least have known that
they are intended and suitable to be used for the use of the invention in the presently
invoked contracting states in which the respective bundle patent part of the patent in
suit is in force.
151. The relevant elements of the 4G standard are mandatory. The following elements are
relevant in this context:
• ETSI TS 136 213 V8.8.0 (2009-10), LTE; Evolved Universal Terrestrial Radio
Access (E-UTRA); Physical Layer Procedures (hereinafter: TS 136 213), Annex KAP
A 16;
• ETSI TS 136 211 V8.9.0 (2010-01), LTE; Evolved Universal Terrestrial Radio
Access (E-UTRA); Physical channels and modulation (hereafter: TS 136 211),
Annex KAP A 17;
• ETSI TS 136 331 V8.12.0 (2011-01), LTE; Evolved Universal Terrestrial Radio
Access (E-UTRA); Radio Resource Control (RRC) (hereinafter: TS 136 331), Annex
KAP A 18.
152. The defendants wrongly deny the infringement by the LTE standard as far as features
1.1, 1.3.1, 1.3.2 and 1.3.3 are concerned. The realisation of the other features of the
claim is not in dispute between the parties and is also not based on misconceptions
under patent law.
The argument that the patent in suit is not infringed because the LTE standard allows
the signal bandwidth of the SRS signals to be set independently of the PUCCH and a
change in the signal bandwidth is not dependent on a varying PUCCH is not correct. In
this respect, the defendants overlook in their argumentation that it is sufficient
according to the claim that the radio communication apparatus can be set by network-
side instructions according to the specifications of the claim ("radio communication
apparatus configurable to").
Infringement Feature 1.3.3
153. According to the standard, the SRS signals within the meaning of feature 1.3.3 can be
evenly distributed in the transmission bandwidth. This can also take place depending on
the change in the transmission bandwidth. There are also no disadvantageous gaps
between the control channels and the frequency ranges actually covered by the SRS
signals, which the defendants have illustrated with the graphic shown below:
154. With reference to Table 5.5.3.2-1 of TS 136 211 (Annex KAP A 17), the applicant pointed
out that this representation is artificial because in this case the base station would not
actually leave any gaps to the right and left of the areas covered by SRS, but would only
select the configuration in this way if there was correspondingly high traffic on the
PUCCHs and these then occupied correspondingly more RBs. They have tried to
illustrate this schematically using the figure shown below:
155. In the example shown by the defendants, on the other hand, the network would select
configuration 3 with a bandwidth of 20 RBs in order to cover the area between the
PUCCHs as well as possible:
156. The fact that this determination is made by the network and not by the UE does not
preclude infringement of the claim. Rather, it is sufficient that on the network side, for
example with a system bandwidth of 8 MHz, the configuration BSRS= 3 can also be
selected at CSRS= 0, which results in the following distribution that is uniform and
corresponds to the change in the transmission bandwidth within the meaning of
feature 1.3.3:
157. This has also been substantiated by the applicant for the configuration CSRS= 1 and BSRS=
3:
𝑅𝐵
158. The defendants have not countered this with any substance (Rule 172.2 RoP). The
defendants' reference to the fact that the 8 MHz example chosen by the plaintiff as an
illustration in the LTE standard is not a common bandwidth is irrelevant. This is because
the defendants have recently merely pointed out that the parameters mSRS and CSRS
referred to by the plaintiff are only assigned semi-statically and that the adjustment is
only possible in 80 ms intervals at the shortest (Duplik Technik para. 83 et seq.). On the
other hand, the PUCCH changes every millisecond and the data assigned to the PUCCH
in each subframe is calculated by the terminal device from data that it received from
the base station in the downlink only 4 milliseconds before the respective subframe,
which is why the asserted LTE standard excludes an adaptation of the (semi-) static SRS
configuration to the rapidly and dynamically varying PUCCHs (Duplik Technik para. 90-
110).
159. However, this argumentation is irrelevant under patent law because the present
teaching does not presuppose that the conflict between PUCCH and SRS signals
addressed by the patent in suit is absolutely excluded in any of the diverse and, as is
known to the person skilled in the art, dynamic framework conditions. The patent in
suit does not provide sufficient evidence for such an understanding of the teaching
formulating an absolute claim. Therefore, if the realisation of the teaching does not
occur in individual time intervals due to adjustment offsets in the signalling by the
network, this is irrelevant.
160. The defendant's argument that, according to its submission, there is no difference
between the previously mentioned parameters CSRS and BSRS as well as
the parameter𝑁(2) which assigns a certain number of control channels to a mobile
device by the base station (statement of defence para. 121). This argumentation does
not deny that the radio communication device according to claim 1 can be set up
accordingly, which is sufficient under patent law.
Infringement of feature 1.3.2
161. Accordingly, the realisation of feature 1.3.2 by the defendants cannot be successfully
denied by arguing that in the standard a change in CSRS can cause a change in mSRS and
thus a change in the bandwidth of the reference signal and thus the bandwidth of the
reference signal is not fixed irrespective of CSRS (cf. statement of defence technology
para. 126). The plaintiff correctly points out that the standard has configurations for
which only one and the same narrowband bandwidth of the SRS signal is defined, as
shown below, configurations 2 to 6 each have a constant 4 RBs as the narrowband
bandwidth of the SRS, which is sufficient for the realisation of the feature (Technical
Reply para. 68 et seq.):
Violation Feature 1.3.1
162. According to the standard, the transmission bandwidth also varies in the given system
bandwidth. The applicant has shown with substance that for a system bandwidth of 25
RB (5 MHz) several configurations are provided by the standard and that the
transmission bandwidth mSRS,O c h a n g e s by changing the configuration CSRS:
163. Again, it is sufficient that the steps performed by the radio communication device can
be controlled on the network side, because according to the wording of the claim
("configurable to") it is sufficient that the device is set up to interpret and process the
corresponding control commands.
Infringement of feature 1.1
164. Finally, feature 1.1 is also realised by the LTE standard. This is because, even if the claim
to the transmission bandwidth is correctly understood, a configuration for the value
mSRS,0 can be provided on the network side as standard, in which the transmission
bandwidth lies between the control channels, since it indicates the bandwidth in which
the reference signals are distributed. This was not substantiated by the unsubstantiated
assertion made in the statement of defence in technical paragraph 134 that it is
"obvious" that Table 5.5.3.2-1 is only intended for changing system bandwidths, but
does not require an adjustment of the transmission bandwidth within a constant
system bandwidth. It is sufficient that the standard enables a patent-compliant
configuration.
Passive legitimisation of the defendants
165. The defendants also have passive legitimacy. Defendant 1. maintains its European
headquarters in Düsseldorf and controls the distribution of the attacked embodiments
in the UPCA contracting states asserted in the present case from here. Defendant 2.
operates the European headquarters of the group in Düsseldorf together with
defendant
1 the European headquarters of the group. Defendant 1 controls the business activities
of defendant 2.
166. It is aware of the channels through which mobile devices from the OPPO Group are
sold, in particular via third-party providers in Europe and especially in the Federal
Republic of Germany, and promotes this and does not oppose it despite being aware of
it. Its website contains links to providers through which the Oppo Group's 4G-capable
products can be purchased. In addition, it supports these sales activities by also
providing the user manuals for the 4G-capable products written in the respective
language on the markets asserted in the present case, offering warranty packages,
placing targeted advertising for the attacked embodiments during the UEFA Champions
League and thus actively promoting the sales activities on the markets asserted in the
present case. The second defendant co-operates with the first defendant in a
structured manner to promote sales.
167. In particular, the plaintiff has submitted in a sufficiently substantiated manner that - in
addition to the acts challenged in the other contracting states in the present action -
the challenged designs are still offered and marketed on online marketplaces such as
Otto, Amazon Marketplace and Google Shopping in the Federal Republic of Germany,
from which the defendant group allegedly claims to have withdrawn. This means that
specific submissions on acts of infringement have also been made with regard to the
German part of the bundle patent asserted in the present case. The defendant's blanket
denial with regard to acts of infringement by both defendants in the Federal Republic of
Germany is unsubstantiated (R.171.2 RoP). It is
It is not sufficient to take the general view that the plaintiff's submission is not
sufficient as evidence of the promotion of the acts described by the plaintiff. The
plaintiff's submission was not specifically contradicted.
Legal consequences of the patent infringement
168. The established patent infringement by the defendants of the national part of the
bundle patent validated in the respective asserted contracting states justifies the legal
consequences sought by the plaintiff.
169. The request for a declaration of patent infringement is based on Art. 64(2)
(a) UPCA. In the present context of infringement of a standard-essential patent, a
declaration of patent infringement serves the legitimate interest of the plaintiff, also
vis-à-vis (non-)authorised distributors of the defendant.
170. The injunction sought by the plaintiff with regard to the patent infringing act is based
on Art. 25(a), Art. 63(1) UPCA and must be granted because there is a risk of repetition
due to the acts of infringement committed by the defendants in the past in the
contracting states asserted in the present case. The defendants may not continue the
acts of offering, placing on the market, using, importing or possessing for these
purposes in the Contracting States covered by the action. In particular, sufficient
submissions have been made with regard to the national parts of the bundle patent
asserted in the present case and their infringement in the respective territories. There
was no need for a separate statement on the "in particular" requests of the plaintiff
with regard to the sub-claims, because these are merely exemplary concretisations of
the acts already covered by the main statement.
171. In the present case, there are no apparent reasons to refrain from exercising the court's
discretion ("may ... issue") to issue a final injunction. Rather, proportionality
considerations (Art. 42 UPCA and
Art. 3(2) Directive 2004/48/EC of the European Parliament and of the Council of 29 April
2004 on the enforcement of intellectual property rights) already comprehensively in the
context of the consideration of the examined antitrust compulsory licence objection
under application of the of the
European Court of Justice's balanced negotiation programme (see below). Further
circumstances that would appear to make it necessary from the point of view of
proportionality not to issue an injunction in the present case have not been sufficiently
demonstrated. It also had to be taken into account that the defendants, according to
their own submission, do not see their main business in the markets of the UPCA
contracting states anyway, as is also reflected in the fact that the licence portion
included in their blanket licence offer for the UPCA states is only for the UPCA
contracting states.
Thus, according to their own
submission, the injunction does not prevent them from operating in the defendant's
core markets. Nor can the generalised argument that the plaintiff itself does not
manufacture and is therefore not in direct product competition with the defendants
prevail. Rather, specific facts must be presented in this respect that justify a different
decision because they are not already reflected in the negotiation programme of the
European Court of Justice's decision. This has not been done in the present case. The
defendant's submission does not indicate any such further aspects.
172. Contrary to the view of the UK Court of Appeal [2024] EWCA Civ 1143 para. 79,
standard-essential patents are also not to be regarded as patents which have solely a
monetary assignment content, at least in the legal area of the European Union. On the
contrary, according to the case law of the European Court of Justice - which is
admittedly no longer relevant for the courts of the United Kingdom - the holder of an
SEP can also exercise the prohibition rights to which he is entitled on the basis of the
patent, ECJ, Huawei v. ZTE, ECLI:EU:C:2015:477, para. 46:
"It is settled case-law that the exercise of an exclusive right attached to an intellectual
property right, in this case the right to bring an infringement action, is one of the
prerogatives of the proprietor of an intellectual property right, so that it cannot in itself
constitute an abuse of a dominant position, even if it emanates from an undertaking in a
dominant position."
173. This is incompatible with an understanding of the SEP as a legal title that has been cut
by the enforcement rights of the injunction and that serves solely to enforce higher
licence claims. Such a view is incompatible with European law, as Article 11 of Directive
2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the
enforcement of intellectual property rights as a standard in the European judicial area
already shows. This also follows from the decision of the ECJ (ibid. para. 57-59 and para.
71), in which it is stated that it does not constitute an abuse of a dominant market
position to bring an action for an injunction against an infringement as long as certain
steps have been taken prior to such an action. Such an understanding would also be
incompatible with the minimum constitutional guarantees of the Federal Republic of
Germany as one of the contracting states invoked in the present case (Article 14 (1) of
the Basic Law of the Federal Republic of Germany) as well as with Article 17 (2) of the
Charter of Fundamental Rights of the European Union.
174. Nor is any other restriction of the injunction appropriate in view of the FRAND rate
determination taking place in the UK in a different dispute. The decision of the UK Court
of Appeal itself states that the Oppo group of companies is not affected by the
declaratory judgement (ibid. para. 2). It can therefore be left open in the present
dispute whether the declaratory judgement - in the words of the UK Court of Appeal - is
de facto an "anti-suit relief by the back door" (ibid. para. 67) that is unacceptable in the
international treaty law context of TRIPs (cf. Art. 1.1, 28.1 and .2, 41.1, 44.1 TRIPS,
which must be observed in this context under international law).
175. The threat of a penalty payment for failure to comply (Art. 63(2) UPCA) raises no
objections. The unit-related nature of the penalty payment provides a fixed amount for
calculating the penalty payments to be paid to the court for the acts of distribution to
be omitted. The determination has deterrent potential. However, the amount had to be
reduced to EUR 1,000.00 per infringement form, which is considered sufficient but also
appropriate in relation to the sales prices. Insofar as other actions are objected to, the
appropriate amount will have to be determined in separate enforcement proceedings.
The defendants may counter the risk of any cumulative determination of penalty
payments in parallel proceedings in the enforcement proceedings if the plaintiff
actually pursues parallel enforcement.
176. The threat of measures of disclosure, information, recall and removal are based on Art.
82 (1) and (4) UPCA, R. 354.3 RoP. The determination of the
appropriate penalty payments is to
be reserved for enforcement proceedings because there is currently insufficient
evidence to assess the appropriateness of a penalty payment to be determined in terms
of amount.
177. The request for destruction of the products directly infringing claim 1 is based on Art.
64 (2) (e) UPCA, the requests for recall of these products from the channels of
commerce and final removal of these products from the channels of commerce are
based on Art. 64 (2) (b) and (d), (4) UPCA. According to the wording of the UPCA,
permanent removal from the channels of commerce is a separate measure from recall.
It accompanies the recall, whereby removal can only be considered if the infringer has
the factual and legal means to do so. No sufficient reasons have been presented or are
otherwise apparent to oppose the order of these measures, for example from the point
of view of proportionality, beyond the consequences resulting from a patent
infringement that the infringer must bear.
that the infringer has to bear. However, there was no time limit of a specific number of
days for the enforcement of this obligation. In this respect, it had to be seen that, on
the one hand, the obligation on the basis of the court order is immediate, but on the
other hand - especially in the case of an allegation of infringement extending to several
UPCA contracting states, the cessation of which may take some time - no rigid time limit
could be ordered without a submission on the circumstances of the case at hand,
because the court was not able to assess the question of which time limit should be set
in view of the considerable scope of the acts of use (unlike the Local Division Düsseldorf
case (UPC_CFI_7/2023 v. 3 July 2024)) is not possible in the present case. Clarification of
the question may be reserved for any enforcement proceedings. The version of the
application is also sufficiently specific due to the reference back to the injunction in
conjunction with the grounds for the decision. In accordance with the wording of the
application, the defendants are free to choose the appropriate and effective measures.
The territorial limitation lacked by the defendants results from the withdrawal to the
injunction, the limitation to the period after the grant of the patent in suit results from
a reasonable assessment of the application and then the grounds for the decision. The
distribution channels include all commercial end users.
178. The decision to provide the requested information is based on Art. 25 (a), Art. 67 (1)
UPCA. The information is necessary for the calculation of damages and for the
assessment of the method of calculating damages within the meaning of Art. 68 UPCA.
The defendants cannot be agreed with that the owner of an SEP would from the outset
be restricted to calculating damages against an infringer only by way of licence analogy.
On the contrary, the European Court of Justice has ruled that the past-related claims
are not affected by the antitrust context (ECJ Huawei v. ZTE ECLI:EU:C:2015:477,
operative part no. 2). In this respect, it has already been decided in national case law
that the scope of the claim for damages can only be limited to the claims arising from
of a licence analogy if the infringer can counter this with its own claim for damages
which is directed at the non-fulfilment of its claim to the conclusion of a FRAND licence
agreement and consequently it can demand to be placed in the same position as it
would be under such an agreement (see German Federal Court of Justice GRUR 2020,
961 para. 109 et seq. - FRAND-Einwand, GRUR 2021, 565 para. 137 - FRAND-Einwand II).
The information on origin and distribution channels serves to clarify the facts of the
infringement and the possibility of claiming further co-responsible parties and
effectively stopping further acts of infringement. Again, no rigid deadline for the
provision of information was to be set (see above). Upon request, it was also to be
ordered that the defendants provide the plaintiff with the information in a list
structured for each month of a calendar year and according to infringing products in
electronic form, which can be analysed with the aid of a computer. This serves the
efficient enforcement of the right to information and takes account of the fact that an
electronic statement that can be analysed with the aid of a computer is in any case the
standard in a business-like accounting system. However, there was again no deadline
set for the enforcement of this obligation.
179. The subject of the information is also the accounting requested in application IV.2 ("to
disclose their books [...] by providing [...] the following documents"). On a reasonable
interpretation of the argumentation submitted in this regard (statement of claim para.
247 et seq.), the request is not aimed at verifying the accuracy of the information and
accounts provided within the meaning of para. 141 et seq.
R. 141 ff. RoP, but rather requests the submission of accounts with supporting
documents. This is also based on Art. 68(3) UPCA, R. 191 RoP. In this respect, the Local
Division agrees with the Düsseldorf Local Division (UPC_CFI_7/2023 of 3 July 2024 at
F.I.2.b) that the rules contain a substantive entitlement to demand information that the
infringed party needs in order to be able to check the validity of the information and to
obtain indications for its calculation of damages to . This is supported by
in particular
Efficiency aspects, because this can save further stages of the procedure. In addition,
the patent proprietor may, within the scope of this right of transmission, also request
documentary evidence for the information under Art. 67(1) UPCA, namely invoices or -
if these are not available - alternatively delivery notes. Apart from the interest in the
pure information which the patent proprietor receives under Art. 67(1) UPCA, his
interest in being able to check the accuracy of this information, at least on a random
basis, is also worth recognising. The possibility of redaction in the pronouncement takes
account of any confidential information (R. 191 p. 2, 190.1 p. 2 RoP). However, it was
not necessary to set a time limit of days for the enforcement of this obligation.
180. The requested auditor's reservation allows an appropriate balance to be struck
between the interest of the infringed party in receiving accurate information and the
legitimate confidentiality interests of the infringer. Since the auditor may only work to
the extent specified in the decision and is also obliged to maintain confidentiality
towards the infringed party, the selection can also be made by the infringed party.
Again, the order of a fixed deadline was not appropriate.
181. The determination of the obligation to pay damages is based on Art. 68(1) UPCA and is
justified by the established infringement. The defendants also acted negligently in any
event. The requirement of a notice of infringement by the SEP proprietor in accordance
with the case law of the ECJ does not imply a lack of fault, as already shown by the fact
that the ECJ has not subjected the past-related claims to any further restrictions.
Moreover, according to the relevant regulations, it serves to prevent any claims from
becoming time-barred. The plaintiff is also entitled to demand the determination of the
damages incurred by Panasonic Intellectual Property Corporation of America as the
previous patent holder. Panasonic Intellectual Property Corporation of America has
assigned its claims in this respect to the plaintiff.
182. Insofar as the plaintiff seeks provisional damages in the amount of 250,000€ , this was
to be granted in the present case pursuant to Art. 68(1) UPCA, Rule 119 RoP because
the court fees alone in the amount of € 336,000 exceed this amount.
183. The application for publication of the judgement, on the other hand, had to be rejected.
In this respect, the judgement pursuant to Art. 64(2)(a) UPCA is sufficient from a
proportionality perspective (see above). Circumstances that would justify a more
extensive interest in the requested publication of the judgement have not been
presented and are not otherwise apparent.
184. With regard to the indirect infringement of the patent in suit in its method claim 13 by
the challenged embodiments, the plaintiff's right to prohibit the continuation of the
infringement follows from Art. 26(1) UPCA
in conjunction with Art. 63(1) UPCA. The plaintiff also has a right to information and
transmission of information pursuant to Art. 26(1) UPCA in conjunction with Art. 67
UPCA. Art. 67 UPCA, Art. 68(3)(a), (b) UPCA in conjunction with R. 191 p. 1 Alt. R. 191 S.
1 Alt. 2 RoP and the payment of provisional damages and the determination of the
award of damages on the merits (Art. 26(1) UPCA in conjunction with Art. 68(1) UPCA).
Art. 68(1) UPCA, R. 119 RoP). The threat of coercive measures is governed by Art. 63(2),
82(1) and (4) UPCA, R. 354.3 RoP and applies mutatis mutandis to decisions on
contributory infringement. Reference is also made to the above statements.
185. The award of costs is based on Art. 69(2) UPCA, Rule 118.5 RoP. In view of the fact that
the plaintiff was only marginally unsuccessful with regard to the scope of individual
legal consequences, no share of the costs to be borne by the plaintiff is to be awarded.
186. Pursuant to Art. 82(2) UPCA, Rule 118.8 sentence 2 RoP, the court may make any order
or measure subject to the provision of security, which it shall fix. The Local Division is
entitled to exercise its discretion when ordering the provision of security, whereby the
applicant's interest in the effective enforcement of its IP right must be taken into
account.
must be weighed against the interest in the effective enforcement of possible claims for
damages in the event that the judgement is subsequently set aside. In the present case,
the defendants rightly argue that the enforcement of such an order will prevent their
core business, namely the sale of smartphones, in the countries concerned. This would
not only result in the loss of all current sales, but also future business damage. Potential
end customers and existing commercial customers would switch to other
manufacturers and possibly remain there permanently. This is accompanied by specific
risks of increased and permanent market losses. These fears are exacerbated by the
special features of smartphone sales. Smartphones are offered and distributed to a
considerable extent via commercial resellers and via national telephone network
providers, whereby the latter often work with long-term supply contracts. If the
defendants were forced to stop deliveries to the network providers despite existing
contracts, this would possibly lead to a permanent exclusion from the network
providers' programme. This would result in the loss of an important distribution
channel and it would be difficult to predict whether and when it could be reopened.
The defendants leave the amount of the security deposit to the discretion of the court.
In the present case, in view of the parties' most recently opposing blanket licence
offers, it appeared necessary, but also sufficient, to set the security deposit at 10
million€ .
It had to be taken into account that the defendants themselves only allocated less than
of the total amount to the business in all EPC states in their lump sum offer Based
on the last
plaintiff's last lump-sum offer , tonnes were to be applied and
therefore just under .
the renewed market entry of , an amount of € 10 million appears to be
sufficient. It should be noted that the present judgement does not cover all UPCA
states, but only the UPCA contracting states listed in the judgement. Therefore, the
security amount is sufficient without any further submission by the defendants, who
expressly left the decision to the discretion of the court without providing any details.
The adjudicating body exercises its
discretion to extend the group of credit institutions eligible to issue the bank guarantee
to credit institutions authorised to do business in the European Union in view of the
fundamental freedoms of the European Union. With regard to the equally enforceable
claims for information/invoicing and preliminary damages, no security was to be
ordered as a precondition for enforcement in view of the lack of indications that the
plaintiff would not be able to financially compensate for the resulting damage if the
first instance decision were not to stand.
187. The orders are only enforceable after the plaintiff has notified the court which part of
the orders it intends to enforce and has submitted a certified translation of the orders
into the official language of the Contracting Member State in which enforcement is to
take place and after the notification and the (respective) certified translation have been
served on the defendant and the security has been provided, R. 118.8 RoP. Since the
defendants are sufficiently protected by the security ordered, it was no longer
necessary to order that the defendants be authorised to avert enforcement.
FRAND objection
188. The above legal consequences are also not precluded by a FRAND objection based on Art.
102 TFEU. While the plaintiff acted in accordance with the ECJ's programme of
obligations addressed to it as SEP holder, the defendants did not participate in the
negotiations for a FRAND-compliant licence in accordance with the negotiation
programme developed by the European Court of Justice in Case C-170/13 - Huawei v.
ZTE, ECLI:EU:C:2015:477, in a targeted manner and in accordance with the practices of
a party seriously interested in taking a licence.
189. The Unified Patent Court fully applies Union law and respects its primacy, Art. 20 UPCA.
Union law is the primary source of law to be applied by the Unified Patent Court, Art.
24(1)(a) UPCA. In the case of questions concerning the correct interpretation of
European law, the Court of First Instance may refer questions relevant to the decision
to the CJEU, Art. 267 TFEU. The decisions of the ECJ are binding for the Unified Patent
Court, Art. 21 UPCA.
190. However, the present case - especially for the Court of First Instance - does not give rise
to a referral to the CJEU, even against the background of the European Commission's
amicus curiae letter, which it submitted to the Higher Regional Court of Munich on 15
April 2024 under the case number 020078-24 MLO / DLF and with which the European
Commission "encourages" the court there to make a referral to the CJEU. Rather, the
panel is of the opinion that the only questions that arise in this case relate to the
individual case at hand, which can be resolved by applying the balanced principles
developed by the Court of Justice, which allow the courts called upon to apply the law
in individual cases to make an appropriate assessment of the respective case. At the
same time, the opinion of the European Commission - which is admittedly not binding
on the constitutionally independent courts - can be taken into account. The document
has also been introduced in the present proceedings and was discussed intensively with
the parties during the oral hearing.
191. In the Huawei v. ZTE decision, the ECJ established a negotiation programme that has
since been binding on the courts of the Member States - unlike the courts of the United
Kingdom. Since then, the courts of the Member States have applied this negotiating
programme and have continued to fill in the details on the basis of the cases submitted
for decision (see Dutch Court of Justice The Hague, case number: 200.219.487/01, of 2
July 2019 - Philips v. Wiko; the same case number: 200.233.166/01, judgment of
24 December 2019 - Philips v. ASUS; German Federal Court of Justice GRUR 2020, 961 -
FRAND-Einwand, GRUR 2021, 565 - FRAND-Einwand II). In this regard,
the
the panel is of the opinion that the ECJ's negotiation programme is not solely focused
on determining the respective licence conditions, which would be stripped of an
assessment of the respective conduct of the parties in the context of the negotiations.
Rather, the central concern of the decision is to establish a negotiation programme with
reciprocal obligations that also serves to assess the primary EU law question of whether
the enforcement of the prohibition and recall rights from the patent is subject to
antitrust restrictions. The determination of a FRAND licence rate, if applicable, is only
one component of this programme. Accordingly, the present case is the first time that a
Local Division of the Unified Patent Court has been called upon to rule as a common
court of the Member States. This gives rise to the following comments.
192. In its leading decision Huawei v. ZTE, the European Court of Justice set out a negotiation
programme that shows the parties their respective obligations in the context of
negotiations for a licence to a standard essential patent and enables the courts to
assess the conduct of the parties on the way to a licence. According to settled case law
of the ECJ (loc. cit. para. 46), the exercise of an exclusive right associated with an
intellectual property right, in this case the right to bring an action for infringement or
recall, is one of the prerogatives of the holder of an intellectual property right, so that it
cannot in itself constitute an abuse of a dominant position, even if it emanates from an
undertaking in a dominant position. However, the exercise by the holder of an exclusive
right associated with an intellectual property right may, in exceptional circumstances,
constitute abusive behaviour within the meaning of Art. 102 TFEU (ibid. para. 47). It
should be recalled - particularly in light of the decision of the UK Court of Appeal - that
the ECJ has stated that account must be taken of the need to safeguard intellectual
property rights, which is one of the purposes of Directive 2004/48. The Directive
provides, in accordance with Article 17(2) of the Charter, for a number of remedies
intended to ensure that intellectual property rights in the internal market and the right
of defence set out in Article 47 of the Charter are protected.
The Court of Justice has ruled that the right to effective judicial protection, which
comprises several elements including the right of access to the courts, requires a high
level of protection (ECJ loc. cit. para. 57). This requirement of a high level of protection
of intellectual property rights implies that their owner cannot, in principle, be deprived
of the possibility of taking legal action to ensure that his exclusive rights are actually
respected and that the user of these rights, if he is not their owner, must in principle
obtain a licence before each use (ECJ loc. cit. para. 58).
193. The negotiation programme developed by the ECJ serves these principles. An
assessment of the conditions of a FRAND licence that ignores the steps established by
the ECJ in the sense of a purely economic determination of the licence amount without
taking into account the relevant conduct of the parties involved in the negotiations can
therefore not stand up under European law and would violate mandatory law in the
Member States.
194. According to the ECJ's ruling, the SEP holder must first inform the patent user of the
patent infringement of which he is accused before bringing an action for an injunction.
In doing so, he must identify the SEP in question and state how it is alleged to have
been infringed (ECJ loc. cit. para. 61). It had already been established in the cited case
law of national courts that the sending of claim charts is sufficient for these purposes in
any case (see, for example, from national case law, Court of The Hague, case number
200.233.166/01 of 24 December 2019, para 4.157 et seqq. - Philips vs ASUS; Higher
Regional Court Karlsruhe, judgement of 9 December 2020, 6 U 103/19 - Mobilstation;
Regional Court Mannheim, judgement of 19 August 2016, 7 OD 2016, para 4.157 et
seqq. 19.08.2016, 7 O 19/16 - Secondary station; judgement v. 29.01.2016, 7 O 66/15 -
control channel; LG Düsseldorf, judgement v. 11.07.2018, 4c O 81/17 para. 108). Insofar
as the European Commission takes the view in its opinion in this context that this
reference must be made in the letter itself (amicus curiae letter para. 65), such a
formalistic understanding cannot be accepted. It is true that a reference to a
generalised website of the SEP holder, which does not contain any easily accessible
information on the specific
patent in suit to be regarded as a sufficient indication. For good reason, however, the
ECJ judgement does not impose any strict formal requirements at this point, but leaves
it up to the courts of the Member States to decide on a case-by-case basis. Particularly
in the case of an allegation of infringement of a large number of standard-relevant
patents, a notice in the formalised form deemed necessary by the Commission may
lead to confusion rather than the desired transparency.
195. In the present case, it was sufficient to make the defendants aware that they were also
accused of infringing patents valid in the EU legal area and thus to encourage them to
deal with the further steps of the ECJ's balanced negotiation programme that the
plaintiff - in addition to a large number of other claim charts requested by the
defendants - also sent a claim chart concerning the Chinese family member of the
patent family, which also includes the patent in suit at hand. The claim chart contained
an explicit reference to the patent in suit. If the defendants argued at the oral hearing
that the Chinese patent had a broader scope of protection and therefore the relevance
of the patent in suit for the standard could not be assessed without further effort and
explanation, this behaviour provides an example of how an implementer seriously
interested in a FRAND licence should not behave. Such an implementer would have
raised a corresponding complaint at least once if it had actually had problems of
understanding and asked for a more in-depth discussion. The defendants, on the other
hand, did not raise any such objection, but only repeatedly requested further claim
charts for other patent families, only to then withdraw without further discussion of all
the requested material to the effect that generally valid findings would in any case
result from the sources they consulted as to what proportion of declared patents is
generally actually essential for the standard (cf. in detail below). It is not in line with the
practice of business transactions, to which the ECJ refers (loc. cit. para. 65, 67), to resort
to formalistic objections, as the defendants do in such a situation, and to deduce from
this that
no further obligations would arise for its own side with regard to targeted negotiations
towards a FRAND licence. The infringement notice was sufficient.
196. The patent user must then express its intention to conclude a licence agreement on
FRAND terms in a further step - also before filing an action (ECJ loc. cit. para. 63). The
significance of this step in the ECJ's negotiation programme is assessed differently, at
least with regard to the weighting of this step in the negotiation programme. The
Federal Court of Justice explained this in para. 83 of its FRAND decision (BGH GRUR
2020, 961 para. 83):
"Therefore, it is not sufficient, after the first indication, to establish further
obligations on the part of the dominant patent proprietor if the infringer then
merely indicates its willingness to consider concluding a licence agreement or to
enter into negotiations as to whether and under what conditions it might
consider concluding an agreement (see Opinion of Advocate General Wathelet of
20 November 2014 - C-170/13 para. 50). Rather, the infringer must clearly and
unambiguously declare its willingness to conclude a licence agreement with the
patent proprietor on reasonable and non-discriminatory terms and must also
subsequently participate in the licence agreement negotiations in a targeted
manner. The High Court of England and Wales (J. Birss) has aptly expressed this
by stating that "a willing licensee must be one willing to take a FRAND licence on
whatever terms are in fact FRAND" (EWHC, judgment of 5 April 2017, [2017]
EWHC 711 (Pat) para. 708 - Unwired Planet v Huawei)."
197. According to the European Commission, this criterion, referred to as "willingness to
licence", should be assessed solely "on the basis of the content and circumstances of
the declaration, but not on the basis of subsequent conduct during any negotiations"
(amicus curiae letter para. 7, 75, 80 et seq.). The first two steps of the framework
programme preceded the start of the negotiations, in particular the SEP holder's offer.
Therefore, the assessment of their existence could not be linked to specific licence
conditions or licence fees (ibid. para. 82). The patent user's willingness to licence could
not be determined on the basis of its subsequent conduct during the negotiations; the
second step was merely a formal step as a prelude to negotiations. In particular, this
step should not be confused with the
the subsequent steps, the SEP holder's offer and the patent user's counter-offer (loc.
cit. para. 84 et seq.).
198. The European Commission agrees that the initial declaration of willingness to take a
licence is the prelude to further negotiations. It must not be limited to mere lip service,
but must be serious in the sense of the statements of the BGH. However, consideration
of the respective declaration alone does not generally lead to any further examination
of whether a patent user is seriously interested in taking a licence. A corresponding
declaration, even if it is based on the wording of the cited UK or BGH decision or adopts
it in a clichéd, identical wording, is not in itself a suitable indicator for assessing
whether the respective user is actually serious about his declaration. For this purpose,
the respective behaviour must always be considered in an overall view. However, the
Commission correctly addresses the fact that the examination of FRAND-compliant
behaviour must not focus solely on the willingness to license in the sense of an analysis
of the user's behaviour alone. It is therefore incorrect to
"willingness to licence" on the basis of the patent user's counter-offer by again using
this as an indication for or against the seriousness of the user's behaviour without first
considering the SEP holder's offer. With such an understanding, there is a considerable
risk that the necessary examination of the offer of the SEP holder bound by antitrust
law will not be carried out at all or will be cursory at best. This would not do justice to
the ECJ's decision. It is precisely this point that is criticised by the European Commission
in the context of the decision of the Regional Court of Munich I that it analysed. Rather,
the SEP holder's offer must always be checked for its FRAND compliance if there is
sufficient initial willingness to take a licence. This step must not be omitted or only
carried out very cursorily. In its referral in the case of Huawei v ZTE, the Düsseldorf
Regional Court had already formulated the question of whether Art. 102 TFEU places
special temporal and/or qualitative requirements on the willingness to negotiate and
stated in the referral that it could not be satisfactory to use the term "willingness to
negotiate" as a criterion.
of such abuse, as this term leaves room for many interpretations (ECJ loc. cit. para. 38).
In this sense, an examination that intends to comply with the case law of the ECJ must
not be content with merely analysing the conduct of the patent user for indications that
are then singled out in order to criticise an insufficient willingness to license without
seriously examining the SEP holder's offer. Such an approach is already contradicted by
the fact that the ECJ deliberately did not want to leave it at the so-called Orange Book
case law of the BGH. Rather, Advocate General Wathelet stated in his Opinion
(ECLI:EU:C:2014:2391 para. 51 f.):
"In my view, the simple transposition of the judgement Orange-Book-Standard of
the Federal Court of Justice or the press release to the present case would result
in a situation where the SEP holder, the user of the teaching of the patent or the
consumer would receive either too much or too little protection. A middle way
must therefore be found."
199. In this sense, the ECJ initially declared the SEP holder to be obliged to submit a FRAND
offer:
"Indeed, as the Advocate General stated in point 86 of his Opinion, where the SEP
holder has undertaken vis-à-vis the standardisation organisation to grant licences
on FRAND terms, he can be expected to make such an offer. Moreover, if neither
a standard licence agreement nor licence agreements already concluded with
other competitors have been published, the SEP holder is in a better position to
verify whether its offer complies with the condition of equal treatment than the
alleged infringer."
200. The application of the Orange Book case law of the German Federal Court of Justice
(BGH GRUR 2009, 694) should not continue. According to this case law, the patent user
must first make an unconditional offer to conclude a licence agreement, which the
patent proprietor may not reject without violating its obligations under antitrust law
not to unreasonably hinder or discriminate against the licence seeker. It is therefore
also incorrect to interpret the FRAND case law in such a way that would de facto lead to
an application of the Orange Book case law.
application of the Orange Book case law. In this respect, the Commission must be
agreed that the sequence of steps in the ECJ's negotiation programme must not be
mixed up in such a way that the examination of the SEP holder's offer is pushed too far
into the background.
201. To the extent that the European Commission's view that the willingness to licence to be
expressed prior to filing an action forms the starting point for further negotiations can
be accepted, it has not yet been clarified to what extent the further conduct during the
negotiations is to be included in the assessment. From the point of view of the
adjudicating body, the seriousness of the initial declaration of willingness to take a
licence, understood in this narrower sense, must be assessed on the basis of the
immediate circumstances accompanying it. However, this does not mean that the
further behaviour of both parties during the subsequent negotiations should be
excluded from the assessment. Rather, both the SEP holder and the implementer must
behave in accordance with "normal business practice" during the negotiations and work
in good faith towards the conclusion of a licence agreement. Their conduct must be
assessed according to whether it takes sufficient account of the fundamental objective
of the ECJ's negotiation programme to achieve the timely conclusion of a FRAND licence
agreement on a primarily private-autonomous basis in targeted negotiations. This
requirement results in obligations to be concretised for the individual case at each
stage of the negotiations. Nor is it in line with the ECJ's negotiation programme to
examine the willingness of the implementer to take a licence alone, without sufficiently
examining the SEP holder's offer, just as it would be insufficient to consider only the
opposing offers and counter-offers after affirming the first two steps of the
examination and to ignore the further conduct of the parties. This is because whether a
(counter)offer meets FRAND criteria can only be assessed on the basis of the specific
negotiations and the behaviour of the parties. Just as the implementer cannot make a
favourable offer without sufficient knowledge of any licensing conditions granted to
third parties, the SEP holder cannot make a favourable offer without sufficient
knowledge of any licensing conditions granted to third parties.
if the implementer deliberately leaves him in the dark about the extent of his acts of
use and his economic framework conditions, such as the sales prices demanded by him
on the market, and if he does not provide any information on the economic framework
conditions of his actions, which conversely must be sufficiently plausible for the SEP
holder - depending on the progress of the negotiations. The depth of the court's
examination of the plaintiff's conduct is largely based on which points the licence
seeker has objected to vis-à-vis the plaintiff in the negotiation process and, conversely,
which information he has made available to the holder in order to be able to make him,
the user, an offer tailored to his circumstances. Objections raised only in the course of
the proceedings before the court against the background of the threatened injunction
alone are not sufficient. With the exception of extreme constellations, the patent user
always has the obligation to respond to an offer made by the SEP holder and at least to
raise its objections against it and request improvements (see German case law BGH
GRUR 2021, 585 para. 71 - FRAND- Einwand II; OLG Karlsruhe GRUR 2022, 1145 para.
152 et seq. - Steuerkanalsignalisierung II.).
202. This interplay of mutual obligations in the negotiations is again exemplified by the
present case. The defendants refused to provide the plaintiff with sufficient information
about their acts of use. Even after rejecting their counter-offer, they refused to provide
the plaintiff with information on their actual acts of use. Rather, the defendants
referred the plaintiff solely to data from economic data services of the provider IDC,
without making these plausible at least for exemplary meaningful periods of time by
providing information on their own genuine acts of use. In this respect, the defendants
cannot expect an offer from the plaintiff that fully reflects the circumstances affecting
them if they are not willing to make these circumstances accessible. Insofar as the
defendants object in this context that the plaintiff, for its part, has also used IDC data in
order to analyse the
The defendants misjudge two things in their attempt to demonstrate the comparability
of the conditions offered to the defendants on the basis of third-party licence
agreements: Firstly, the third-party licence agreement partners have a legitimate
interest in confidentiality insofar as their specific transactions are concerned. In any
case, the SEP holder is therefore not obliged to make such figures directly accessible to
a negotiating partner if it is still open whether the latter is seriously negotiating the
conclusion of a FRAND licence. The implementer cannot demand more disclosure from
the SEP holder than it is prepared to disclose itself. In addition, the SEP holder does not
have this information in the case of blanket licence agreements because there are no
reporting obligations regarding acts of use to be remunerated in certain periods of
time. Secondly, the defendants fail to recognise that, as a patent infringer using the
technology (see above), which, unlike the plaintiff's settlement licensees, drags out the
negotiations over years, they cannot demand to be treated equally in every respect
with the SEP holder's cooperative licence agreement partners, who resolve any
differences in a short time and purposefully participate in negotiations and bring them
to a conclusion. Therefore, it may well be unobjectionable under antitrust law if an SEP
holder makes do with data from commercial services for the negotiations if the
prospective licence holder in question works constructively and swiftly towards the
conclusion of such a licence. On the other hand, the ECJ has also clearly stated that the
patent user using the technology unlawfully must provide information and security at
the latest after its counter-offer has been rejected. The plaintiff's argument can be
accepted in that the information serves the purpose of assessing whether the security
offered sufficiently covers the risk of insolvency of the patent infringer. In this context,
the SEP holder, who has himself submitted an offer that is to be assessed as FRAND-
compliant under the respective circumstances of the negotiations, does not have to be
satisfied with data from commercial services compared to a patent infringer who drags
out the negotiations.
203. The examination of the SEP holder's offer must be based on the above statements. The
adjudicating body is of the opinion that the SEP holder
when submitting its offer, must not only state the mere mathematical factors with
which it calculates the licence fee. Rather, he is required to plausibilise, in the manner
possible to him according to the status of the negotiations, why he believes that the
offer submitted by him can be regarded as FRAND-compliant. This follows from the
ECJ's statements in para. 64 of its decision. The SEP holder has the better knowledge of
its licensing practice and should communicate this to the patent user so that the latter
can react to it in good faith. This also corresponds to the understanding of the
judgement developed by the Commission, which states in para. 50 f. of the amicus
curiae brief:
"The background to this allocation of obligations is that, in the absence of a
published standard licence agreement and if the licence agreements concluded
with other users are not published, only the patent proprietor regularly knows on
what terms it has already concluded licence agreements and which terms are
therefore non-discriminatory. The patent proprietor must examine the licence
offer in a fourth step and respond to it within a reasonable period of time."
204. The extent of the explanations depends on the stage reached in the negotiations
between the parties. It is therefore not necessary in every case - including the present
case - to disclose the names and conditions of the third-party licence agreements
directly in order to check plausibility (see below for details).
205. Based on these principles, the following applies to the present case:
Sufficient notice of infringement before filing suit
206. As stated above, the plaintiff's notice of infringement of the patent in suit was
sufficient. On 22 July 2020, the plaintiff sent Guangdong Oppo a list of which of its
essential patents it considers to be infringed for the 3G and 4G standards (Annex KAP
FRAND 1). Explicit designations of the defendant's 4G-capable products can be found in
the presentation of 4 August 2020 (Annex VB-
F 3), whereby the defendants were already aware that the allegation of infringement
was directed against all 4G-capable products. The plaintiff submitted an updated list of
patents deemed to have been infringed on 7 January 2022 (Annex KAP FRAND 2). This
also contains a reference to the patent in suit. In addition, on 31 August 2020, the
plaintiff also sent claim charts relating to the Chinese family member of the patent in
suit (ZL201310315589.X). According to the plaintiff's uncontradicted submission at the
oral hearing, this also contained an explicit reference to the patent in suit. Objections
that this was not sufficient for the comprehensibility of the infringement allegation
were raised by the defendants for the first time at the hearing. This is late. In addition,
the objection was not justified on the merits, since the defendants objected that the
Chinese patent had a broader scope of protection than the patent in suit. If there had
been a need for clarification here, the defendants could and should have asked the
plaintiff as a cooperative licence seeker. In the rejoinder, however, the defendants
retreated to the formalistic position that a reference to the patent in suit was required
in the letter of reference itself. As already explained, this argument is not convincing.
Declaration of willingness to take a licence by the defendants before filing a lawsuit
207. According to the standards set out above, the defendants have expressed their initial
willingness to take a licence in a sufficient manner to serve as a starting point for
further negotiations. The statements they made before the action was filed made it
sufficiently clear that the defendants were interested in taking a licence and that the
plaintiff, as the holder of the SEP bound by antitrust law, was therefore obliged to enter
into constructive negotiations with the defendants, which included in particular the
submission of a FRAND offer. The ruling body is of the opinion that insisting on a certain
wording at this point does not promise any further insight into the actual intention of
the user. Even an explanation that fully adopts the wording of the decision of the High
Court of England and Wales quoted by the BGH (
Court of England and Wales ("a willing licensee must be one willing to take a FRAND
licence on whatever terms are in fact FRAND") can also prove to be mere lip service.
The Federal Court of Justice also correctly states in this context that "the requirements
to be made in detail [elude] a general definition" (BGH, judgment of 24 November 2020
- KZR 35/17 (FRAND-Einwand II), GRUR 2021, 585 para. 59). Against this background,
the defendant's statements at the beginning of the negotiations appear sufficient to be
regarded as a sufficiently serious prelude to further negotiations. In their email of 29
September 2019 (Annex VB F-1), the defendants made a sufficient declaration and
named a specific contact person for further discussions ("As a willing licensee, OPPO
intends to conduct constructive licence negotiation with you on a good faith basis, and I
will be in charge of this matter."). The plaintiff did not object to this statement as
insufficient, but took it as an opportunity to start the negotiations.
to begin negotiations, clarify the modalities of a first
meeting and then submit initial ideas to the defendants in the form of term sheets. No
circumstances are apparent that would show that the defendant's statement was
already insufficiently serious and unsuitable at this point to enter into concrete talks.
Submission of an offer to conclude a FRAND licence by the plaintiff
208. The plaintiff then submitted the economic cornerstones of an offer in a Zoom meeting
on 4 August 2020 (Annex VB-F 3, p. 4). In the presentation, the plaintiff not only limited
itself to demanding unspecified prices, but also attempted to clarify its position as to
why it considers the prices to be appropriate. This is considered in more detail below:
209. On slide 3, the plaintiff put the defendant's market activities in relation to the
geographical coverage of the plaintiff's patent portfolio for, among other things, the LTE
standard and showed that, particularly in Asian countries and Europe, the plaintiff's
patent protection and the defendant's market activity are opposed to each other.
210. The plaintiff also explained that it has at least standard-essential patents for the LTE
standard.
patent families and is therefore one of the top holders of large portfolios relating to
the LTE standard. of the families had claims directed to end devices (ibid., slide 20).
It also pointed out that of the families had been evaluated before being included in a
pool aimed at the automotive sector. In favour of the defendant, it based its
calculations on patent families.
211. The plaintiff also used a top-down analysis (Annex VB-F 3, slides 17 et seq.) to show
how it derives its licence fees. For this purpose, it used the average sales price (ASP) of
the defendant's products on the basis of the sales prices on the exemplary market in
the UK and showed the ASPs it determined for five different models of the defendant. It
then referred to three court decisions and derived from them that the aggregate
royalty rate for LTE-SEPs was between 6 and 10% of the ASP for a mobile device (ibid.
slide
19). Of this, it used the middle value (8%) and assumed an ASP of , which is
at the lower end of the sales prices found by the plaintiffs. In applying the system which
the decision of the UK High Court in the Unwired Planet case [2017 EWHC 711 (Pat), it
arrived at a licence fee of 8:14-
cv-00341-JVS_DFM to a fee from . This justifies its standard licence
fee (standard rate) for the
standard licence fee (standard rate) for the "Major Markets" and "Other
Markets" and even more so its incentivised licence rate (ICR= incentivised
compromised rate, . In addition, the plaintiff has explained its ideas on the
basis of a comparison with pool licence rates, although it has argued that pool rates are
regularly significantly lower than bilaterally negotiated rates and can therefore only be
used for comparisons to a limited extent. In addition, the plaintiff points out that the
majority of TOP LTE patent holders, like the plaintiff, do not participate in pool licence
models. Nevertheless, the plaintiff argues that its idea also proved to be reasonable
compared to the licence rates of the pool licensors.
212. With these explanations, the plaintiff has already clearly set out its demands at an early
stage and has sufficiently plausibilised for the further negotiations why it believes that
it is entitled to submit a FRAND-compliant offer. If the defendants, as cooperating
licence seekers, had still had questions, e.g. on the non-discriminatory nature of the
offer, they should have asked them immediately or shortly afterwards.
213. The defendants, on the other hand, insist in their argumentation that these statements
are not yet to be regarded as an initial offer because a written contractual offer is
required. The court cannot agree with this view. What can be demanded of the SEP
proprietor cannot be determined in a generalised, formalistic manner. The
requirements for the behaviour of the patent proprietor and the behaviour of the user
of the invention are mutually dependent. The yardstick for the examination is what a
reasonable party interested in the successful conclusion of the negotiations in the
interests of both parties would do to promote this goal at a certain stage of the
negotiations (in this sense also BGH FRAND II, loc. cit., para. 59). At the beginning of the
negotiations, it is not in line with customary business practice to directly confront each
other with draft contracts ready to be signed as long as the central economic points
have not even been clarified. Therefore, it is also not the behaviour of a patent user
negotiating in good faith in the direction of a FRAND licence to nevertheless insist on
this in a formalistic manner in its argumentation before the court. Rather, the SEP
holder's offer should represent the constructive starting point for further negotiations
towards the conclusion of a FRAND licence agreement, because the individually
appropriate contractual terms in complex patent licence agreements must be adapted
to the respective economic framework conditions (Court of Appeal The Hague GRUR Int
2020, 174, 179 para. 4.34; in this sense also BGH loc. cit. FRAND II para. 70). Rather, it is
sufficient if the SEP holder's offer allows the patent user to determine the essential
economic framework conditions of an intended licence agreement.
and, if necessary, to respond to this with a different counter-offer. As a rule, this does
not require a written contractual offer that is differentiated in all secondary points and
ready for signature. Rather, it is up to the patent user to request the submission of such
a formal contractual offer if, contrary to customary practice, he wishes to receive it at
this stage of the negotiations. The decisive factor is not the concept of an offer under
contract law, but a concept of an offer that is to be understood economically in the
context of European antitrust law. The defendants did not respond to these economic
ideas of the plaintiff until 28 July 2021, almost a year later, and in the meantime
focused on technical discussions and requested claim charts. The defendants did not
draw any further conclusions from this requested technical material in the further
course of the discussions. Rather, the defendants resorted to commissioning a private
expert to carry out an ex-post analysis of the plaintiff's offers and to have him analyse
the circumstances solely on the basis of the patents declared as standard-essential, but
then reserved the right to make corrections if it should become apparent that the
extent of the patents that are truly essential to the standard should deviate from the
extent of those declared as such (KE para. 409). It is therefore incomprehensible why
the defendants focused for a long time in the negotiations on the technical analysis of
repeatedly requested further claim charts in order to come to the conclusion in the
court proceedings now initiated that "any qualitative assessment (of the standard-
essential patents to be "actually" assumed) generally harbours the risk of an (unknown)
error size" (KE para. 409). Rather, they would have been required to take a concrete
position on the plaintiff's ideas at this stage and to raise objections, submit counter-
proposals or raise economic issues to be clarified. Raising such questions by means of a
private expert opinion only before court cannot replace this obligation to co-operate.
214. It should also be noted that the plaintiff compared the offer on 22 June 2021 with the
portfolios of three other TOP LTE patent portfolios
and also attempted to show why, in its view, it was demanding appropriate licence
rates (see Annex VB FC 5 pages 14 ff., see summary of the results of the analyses on
slide 44). In addition, the plaintiff defined further key points for a licence agreement (cf.
slide 46). By this time at the latest, the plaintiff had submitted the key points of an
offer.
215. Then, on 22 April 2022, the plaintiff also submitted a lump-sum licence offer to the
defendants by granting a lump-sum discount of on its actual ideas in
order to make progress in the talks.
and also explained this offer. Already at this point in time
The plaintiff pointed out its concerns about the ASPs and quantities used by the
defendants in their calculations (see Annex VB-F 5 slides 6 and 7). In doing so, the
plaintiff also made it clear that it had no better information to make a blanket licence
offer to the defendants than the information available from commercial services and
databases for a fee. In addition, the plaintiff based its concerns on objective
circumstances accessible to it. For example, it argued that the ASP used by the
defendants in their
ASP of used by the defendants in their calculations was in clear contradiction to the
publicly available sales prices on sales platforms and is also far below the overall
average sales price of 4G-capable Android smartphones worldwide. With regard to the
number of units stated by the defendants, the plaintiff argues that these figures also
contradict the data that can be derived from the economic databases.
216. Nevertheless, the plaintiff referred in this presentation to two of its own blanket licence
agreements in order to demonstrate to the defendants that, in relation to these two
licensees considered comparable by the plaintiff, their asking prices were far removed
from the comparative licence rates. While the unnamed licencees X and Y paid
the offers of the defendants were in the
merely . In the opinion of the court, the plaintiff did not
have to provide the defendants with more information at this time. In particular, under
these circumstances, it did not have to submit the licence agreements with third parties
used for comparison purposes.
217. The plaintiff then reduced this offer again on 28 June 2022 by (see KAP FRAND
17) in order to take into account declines in sales due to the COVID pandemic and the
war in Ukraine in the industry. It also checked the plausibility of the figures it had
estimated for past use in the years
218. On 15 September 2022, the plaintiff then submitted a further proposal for a FRAND
licence agreement to the defendants (Annex KAP FRAND 18a). In the proposal, the
plaintiff criticised at the outset that the defendants had still not provided any
comprehensible information on their quantities. There was a lack of any information on
the figures relating to the year
Furthermore, the plaintiff criticised the fact that the defendants'
proposal only covered the period and
period and thus did not include past sales in the scope of without any
justification - even though discussions had already been held between the
parties. At the same time, the plaintiff criticised the fact that the defendant's position
had remained unchanged since the counter-offer of 27 August 2021, which suffered
from the above deficiencies.
219. Nevertheless, the plaintiff further reduced its offer across the board by % i.e.
to in order to make progress in the talks (see Annex KAP FRAND 18a slide 6).
In explaining its positions, it again drew a comparison with the still unnamed settlement
licences with companies X and Y. In addition, it referred to another publicly known
benchmark, the conclusion of a multi-year worldwide licence agreement between
InterDigital and Xiaomi, stating that according to the analyses of the business service
Strategy Analytics, the market penetration and sales volumes of Xiaomi and Oppo were
comparable. In addition, the plaintiff deduced that the unnamed company
At the same time, the plaintiff pointed
this out,
company X, with which a licence agreement already existed, had approximately % of the
agreed between InterDigital and X to the plaintiff (cf. ibid. slide 12). The plaintiff
derived these figures from the so-called 10K report submitted by InterDigital, the
annual submission of which is prescribed by the US Securities and Exchange
Commission (SEC) in a standardised form. From this, the plaintiff derived the payments
from
Xiaomi's payments to InterDigital and applied this as a factor, thus arriving at a quarterly
payment of
quarterly payment of and thus for a contract that was not subject to the
that its lump sum licence offers of 22 April and 28 June 2022 were within this range,
whereas the defendant's proposals did not even correspond to the settlement
payments for one quarter (cf. ibid. slide 13).
220. In order to reach a goal in the talks, the plaintiff then adjusted its offer again on 29
November 2022, i.e. also before the action was filed (Annex VB-F8). In doing so, the
plaintiff referred to more recent decisions of Chinese courts, in particular the decision
between Siemens and Huawei, and also adjusted the assumed ASP downwards as well
as the sales figures projected for the future. The plaintiff adjusted its unit licence offer
downwards by %
downwards (cf. slide 7 above) and also applied this adjustment to the blanket licence
offer it had now submitted and deducted from the amount determined
221. This offer thus represents the end point of the plaintiff's proposals on the way to a
FRAND licence and will be examined in more detail below. In this context, the argument
that the extent of the concession in relation to the ideas initially expressed
instead of the
previous
% from the calculated amount, so that the last licence fee
offered before the action was
can prove that the offer of the respective negotiating party is FRAND-incompatible. This
is certainly not the case if the concession can be explained by the course of the
negotiations and is based, for example, on new information exchanged in this context,
is presented as a response to concerns expressed by the other party or if a negotiating
party offers lump-sum discounts out of its own motivation in order to conclude a
contract quickly. This is the case here. As shown above, the plaintiff has justified in each
case on the basis of objective criteria why it supports and has changed the economic
position it took at the respective stage of negotiations. From the point of view of the
adjudicating body, it has always focussed on comprehensible aspects and has also
presented its considerations in such a way that a patent user seriously interested in the
progress of the negotiations is able to take a position on the content.
222. The offer last submitted to the defendants therefore appears to be FRAND-compliant
from the point of view of the adjudicating body at the relevant time during the
negotiations. Likewise, the settlement licence agreements submitted in the course of
the present proceedings in response to an order show that the plaintiff was not
tempted to make inaccurate claims against the defendants with regard to its settlement
licence partners. Rather, the settlement licence agreements submitted (Exhibits KAP
FRAND 20, 21 and 22) confirm that the plaintiff's assertion is correct that the companies
X and Y, which are also correctly used as settlement partners from the point of view of
the adjudicating body, pay to the plaintiff.
pay. The amounts offered by the defendants bear no
comprehensible relation to this in view of the generally available economic data on the
defendants' sales volumes presented by the plaintiff. In particular, the defendants did
not object to the fact that the data used by the plaintiff from the economic services
were inaccurate. The plaintiff did not have a better basis for judgement because the
defendants refused to provide their own turnover data until the end of the oral hearing.
Although it was not immediately necessary - depending on the stage reached in the
specific negotiations - to provide the
Although the SEP holder may not be obliged to disclose its own sales data in full, a
licence seeker negotiating in good faith can nevertheless be expected to make such
data available for certain periods of time that make it comprehensible to the SEP holder
as a whole why the licence seeker feels entitled to calculate on its deviating basis in
order to check the plausibility of its own objections to the figures used by the other
party. This was not done in the present case, even after the plaintiff rejected the
defendant's counter-offer, contrary to the clear case law of the ECJ in this respect in the
opinion of the ruling body. As the plaintiff rightly argues, the patent user must provide
information after the rejection of its counter-offer in a form that enables the SEP holder
to assess whether the security to be provided is sufficient and, in particular, covers an
insolvency risk (ECJ Huawei/ZTE para. 67). The defendants did not provide such
information at any time. Nor can the defendants refer to the fact that the plaintiff also
referred to general economic information, specifically IDC data, with regard to the
figures on which the settlement licence agreements submitted by its side are based.
contractual partners. The plaintiff was also entitled, in relation to a licence agreement
partner who had participated quickly and purposefully in the negotiations, to allow
generally available economic data to suffice for a price approximation in these
negotiations. As a patent infringer who has now been dragging out the negotiations for
five years, the defendants have no right to be treated equally with a constructive
negotiator who is seriously interested in taking a licence and with whom the
negotiations can be brought to a swift conclusion.
223. Furthermore, the defendants cannot now justify their lack of constructive negotiation
prior to filing suit ex post by subjecting the factual material now available to a private
expert assessment
data. This is because, on the one hand, the plaintiff
available to the plaintiff, on the one hand, and on the other hand, the plaintiff
had
and derive a wealth of objections from this. It is insufficient to substantiate the
objections only in the court proceedings by means of commissioned expert opinions,
which are also only partially explained in the main pleadings with regard to their
systematics. Rather, it is advisable to present the objections in close temporal
connection to the presentation of the opponent's calculation approach and then,
without the need for judicial assistance, to give the opponent the opportunity to
overcome the existing discrepancies by means of suitable negotiation proposals on the
way to a FRAND licence.
224. Even if the now disclosed settlement licences are included in the assessment of
whether the plaintiff must be prevented from enforcing the asserted injunctive relief
and the other forward-looking claims under the patent for antitrust reasons, the
plaintiff's offer described above does not prove to be FRAND-inconsistent, but rather
FRAND-compliant. Firstly, the plaintiff must agree that FRAND is a corridor. This view
now appears to be generally recognised. However, there is not just one FRAND offer,
but several forms of a licence agreement within the bandwidth, all of which can satisfy
FRAND criteria. Therefore, the plaintiff also has room for manoeuvre within this range.
For antitrust reasons, it is not obliged to submit the cheapest offer that is still within the
corridor. Nor is it obliged to use a calculation method favoured by the other party. From
the point of view of reasonableness, it may only not deviate in a way that is no longer
justifiable from the circumstances used as a benchmark, whether these circumstances
lie in its own comparative licences, which regularly have the strongest indicative effect,
or in licence agreement arrangements used for comparison purposes, which have been
discussed in court decisions, for example, and which can be applied to the specific
circumstances.
225. In the present case, the plaintiff has submitted three comparative licence agreements,
whereby it considers one agreement to be only partially comparable. It has "unpacked"
the comparative licence terms for the purpose of deriving a comparative figure using
the same
settlement licences each
therefore saved corresponding double transaction
costs. In addition, a premium of % was applied
because there were
It "unpacked" the comparative licence terms for the purpose of deriving a comparative
figure using the same system and applied the same factors to them in order to compare
the derived unit licence rate with the offer to the defendants (cf. Annexes KAP FRAND
23, 25 and 28). To this end, it specified the sales period under consideration and the
number of LTE devices sold (based on business information data) and reduced these by
the plaintiff's scaled sales. It then calculated a unit licence rate from the blanket licence.
The plaintiff applied various factors to this in order to take account of the differences
between the comparative licence and the ratios applicable to the defendants.
226. The decisive factor here is that when considering the first settlement agreement, a
for transaction costs saved was applied to the first settlement agreement because the
it would have been justified to grant the quickly and purposefully negotiating third-
party licence agreement partners a discount that the defendants did not deserve due to
the rapid conclusion of the transaction and the large quantities covered. Finally, a mark-
up of % was applied in order to reflect the risks associated with blanket licensing,
according to the plaintiff.
227. The same approach was taken in another settlement agreement, whereby here due
to existing other supply relationships with with
the
licence agreement partner in question h a d been granted a price advantage of %,
which the defendants did not earn, as well as a % discount for large quantities. The
surcharge for blanket licensing was set at %,
the surcharge for dual licensing was again set at %.
228. The plaintiff has shown that the unit licence rates - not yet increased by the surcharges
it considers justified - amount to
the unit licence rate for the third-party licence agreement, which the adjudicating body
considers to be comparable only to a limited extent. Applying the adjustment
factors deemed justified by the plaintiff
which, in its view, are intended to establish comparability in the first place, results in
unit licence rates of
229. Against this background, the adjudicating body is of the opinion that the offered unit
licence rate of , which the plaintiff last offered when the transaction
was concluded quickly, is FRAND-compliant because - depending on the viewpoint - it is
within the range of the comparable licences or, in any case, does not deviate from the
above-mentioned range in any way.
the aforementioned range in a way that does not indicate abuse. Furthermore, the rate
of on the defendant's most important market in China and the "rest of the
world", which accounts for by far the largest
share of its own counter-offer
just as unobjectionable as the rate of applied in view of the higher ASP in
the major markets. In view of these circumstances, it was not necessary in the present
case to subject the adjustment factors applied by the plaintiff to a further detailed
assessment.
230. If the licence rates offered by the defendants for the conclusion of a worldwide 4G
licence in the range from to a maximum of are set in relation to this,
it becomes apparent that these figures on which the counter-offer is based are only a
fraction of the unit licence rates resulting from the settlement licence agreements,
even if the adjustment factors of the plaintiff objected to by the defendants are not
taken into account. Therefore, it is not necessary in the present case to decide whether
the adjustment factors used to establish comparability from the plaintiff's point of view
are viable or not. These rates offered by the defendants are far outside the range
outside the range derived by the plaintiff on the basis of the comparative licences
disclosed in the proceedings and on the basis of the further market information and
court decisions referred to in the offers described above. The defendant's counteroffer
therefore does not prove to be FRAND-compliant.
231. The decisive circumstance for this discrepancy is already the defendant's approach,
which is to be assessed as non-FRAND-compliant. On the one hand, with reference to
their expert opinion, they insist on an ad valorem approach that takes better account of
the fact that their devices do not require all releases of the LTE standard, while on the
other hand - as the plaintiff undisputedly stated at the hearing - they have never asked
for a licence that covers only some of the LTE releases. They have always aimed for an
LTE licence that covers all releases of the standard. Furthermore, the defendants'
approach, with which they want to compensate for the past use to be covered by the
licence agreement, i.e. the acts of use carried out in the past without paying for the
licence, cannot be justified. The defendants could not even invoke conduct by the
plaintiff in breach of antitrust law if the plaintiff had been prepared to pay a lower lump
sum for past use to a third-party licence partner working purposefully towards the
conclusion of a transaction if this enabled the licence agreement applicable for the
future to be drawn up quickly and by mutual agreement. It is not justifiable that the
defendants w e r e not even prepared to cover the full period since the start of
negotiations with the plaintiff in their counter-offers. In their counter-offer of 17 March
2022, for example, they only wanted to cover the period from to , although
negotiations had already begun in 2019
(cf. KE para. 564 et seq.). This continued in the counter-offer of 29 July 2022 (VB-F2, p.
6), and they did not address the plaintiff's objections in this regard in their offer of 15
September 2022 (cf. ibid., para. 4 above). Even in the counter-offer of 25 October 2022,
the past is still not fully addressed. The plaintiff rightly points out that the defendants
contradict their own party expert in this respect, who also includes acts of use for 2019
(Replica Part II FRAND para. 575).
232. Moreover, the defendants cannot, conversely, when considering the settlement licence
agreement with the both parties as the basis
for settlement discussed b y b o t h p a r t i e s at the oral hearing, sales of up to six
years prior to the conclusion of the contract (but so Duplik FRAND
para. 196 with reference to the parties' expert opinion (Annex VB-F39, section 4.1)), in that
IDC data had been used for the previous six years, resulting in significantly lower unit
licence fees of for 4G
multimode devices (Annex VB-F39, Figure 2 after para. 11) compared to
accordin
g to the plaintiff's calculations. The unit licence fees applied by the plaintiff are also
based on the IDC data and were not objected to by the defendants. Only the periods for
which they were collected differ. This naturally leads to the fact that the flat-rate
licence rate - in particular in the case of the market participants who have always been
important in this period
The defendants' expert's calculations with regard to past use in the settlement licence
agreement with are to be divided by a significantly higher number of units, because a
longer period is included in the calculations by the defendants than they themselves
were willing to take into account, resulting in a significantly lower unit licence rate,
which the defendants believe they can hold against the plaintiff. The same applies to
the calculations of the defendant's expert with regard to past use in the settlement
licence agreement with (cf. para. 38: 6 years past use). If one were to recognise
this system, this would privilege a user who engages in hold-out. The defendants apply
double standards without sufficient grounds.
233. In addition, the defendants have not acted in good faith as required by the practices of
a user seriously interested in obtaining a licence. The case law of the ECJ is to be
correctly understood, together with the plaintiff, as meaning that the information to be
provided after rejection of the counter-offer should allow the patent proprietor to gain
an overview of the scope of the actual acts of use. This is the only way to enable him to
check whether the security offered is sufficient. The user must disclose the extent of his
acts of use. If the patent user wishes to obtain a licence in return for a lump sum, he is
also regularly required to disclose sales figures to the patent proprietor from this point
of view so that the latter can assess the extent of the acts of use that are to be licensed
in return for a lump sum payment.
234. Furthermore, the security offered by the defendants is also inadequate for the reasons
put forward by the plaintiff. Due to the wording in the deed of guarantee, a total
default is to be feared in the event of insolvency. This is because neither can an
insolvency administrator give his consent for the guarantee to be drawn in the event of
insufficient assets, nor can it be expected with sufficient certainty that a final judicial
clarification can still be brought about in this case, because insolvency regularly brings
the proceedings to a standstill in this respect (cf. only Rule 311.1 RoP).
235. Finally, the defendants' procedural conduct must also be characterised as contrary to
good faith, as it is characterised by self-contradictory conduct. In this respect, the
defendants wanted to contest the jurisdiction of the Unified Patent Court with their
objection until the oral hearing. This is contradicted by the fact that they then
nevertheless requested the determination of a FRAND rate by way of a FRAND
counterclaim. The defendants only saw themselves in a position to discontinue the
opposition - albeit under sharp protest - after the panel's firm indication. Furthermore,
the defendants' requests in the context of the FRAND counterclaim were initially aimed
solely at having the panel determine a territorially limited licence rate, which was to be
limited to the EPC contracting states, the USA and Japan. This is in contradiction to its
own argumentation that FRAND is solely the determination of a global FRAND rate.
However, this contradiction was also only responded to upon judicial notice and at least
the new main claim of the FRAND counterclaim was directed towards a global lump-
sum licence payment. However, the defendants have continued to adhere to the
territorially limited determination approach in the context of the alternative claim
groups. According to the first alternative claim, the main part of the licence is to be
determined by the Beijing Intellectual Property Court and only a very limited lump sum
is to be paid for the previously named countries in view of the acts of use. In this
respect, in the opinion of the adjudicating body, it is also not in line with the approach
of a user working in good faith towards the conclusion of a licence agreement to make
the already complex situation more complex.
The fact that FRAND rate determination proceedings for sub-regions of the world are
brought before various courts around the world, between whose states there are no
treaties that stipulate a priority order between the courts seised, further complicates
the matter. This is because the provision cannot be determined with a clear territorial
distinction. Rather, there is a considerable risk that the respective courts involved will
pursue different approaches when determining the FRAND rate. This in turn harbours
the risk of contradictory rulings, meaning that appeals can be expected to be pursued in
the various jurisdictions. This is not conducive to the speedy conclusion of global
disputes. In addition to the court in Beijing and the UPC, the defendants' exclusive
licence holder in Italy has also recently initiated a determination procedure limited to
Italy before the national court in Milan. The defendants also emphasise the
determination proceedings between the plaintiff and the Xiaomi group of companies
before the High Court of England Wales. The conflict is particularly apparent here
because Italy is also a contracting state of the UPCA and the present action explicitly
also covers acts of use in Italy.
FRAND counterclaim
236. Although the defendant's FRAND counterclaim is admissible, it had to be dismissed as
unfounded.
Jurisdiction of the UPC:
237. The UPC has jurisdiction over the counterclaim filed by the defendants together with
the statement of defence, which is aimed at determining a FRAND licence. Jurisdiction
follows from Art. 32(1)(a) UPCA. Accordingly, the court has exclusive jurisdiction over
actions for actual or threatened infringement of patents and related defences, including
counterclaims relating to licences. This does not only cover
disputes relating to existing licences to a patent, but also actions aimed at the
conclusion of a licence.
238. The fact that the claim pursued by the defendants in the present case - in addition to
contract law based on the plaintiff's ETSI FRAND declaration - is derived from European
antitrust law does not change this. This is because the Unified Patent Court is a
common court of the Contracting Member States and is therefore subject to the same
obligations under Union law as any national court of the Contracting Member States,
Art. 1 UPCA. The court applies Union law in full and respects its primacy (Art. 20 UPCA)
and bases its decisions on this (Art 24(1)(a) UPCA). This also includes the mandatory
application of EU antitrust law, in particular Art. 102 TFEU.
239. In the present case, the defendants derive their claim to a FRAND licence on the one
hand from contract law principles, which they see in the ETSI FRAND Declaration, and
on the other hand from Art. 102 TFEU. Even if one were to assume that this was a claim
based on Art. 102 TFEU and with which the infringer demands that the SEP holder
refrain from abusing its dominant market position by refusing to grant it a FRAND
licence, this does not change the jurisdiction of the UPC. This is because, in essence, the
claim is aimed at defending against the monopoly right conferred by the state, the
granted patent, and the powers derived from it, the injunctive relief and the further
claims for removal and destruction directed to the future, by arguing, on the basis of
the generally recognised legal principle of good faith, that there is a corresponding
claim for performance under antitrust law which can be invoked against the exercise of
the powers under patent law. The contracting member states of the UPC were aware of
this connection when the UPC was created and the associated transfer of national
judicial sovereignty. The connection between patent law and antitrust law is in any case
inherent to the patent and indissoluble. Due to the obligations of the member states
under European law
and thus also of the UPC, the task assigned to the UPC, if the Convention is correctly
interpreted, is therefore the same as that assigned to the national courts when dealing
with patent disputes. Here, the national courts decide on both the patent law
dimension and the inherent antitrust law dimension - due to the nature of patent law
as an exclusive right. This is also evident from the fact that before national courts, for
example in Germany or the Netherlands, the national patent litigation chambers
regularly also decide on the antitrust aspects of the case and even the German Federal
Court of Justice has formally decided SEP cases through the antitrust senate, but a
member of the patent senate was always appointed to report on SEP cases in order to
bring in the necessary patent law expertise. Therefore, a reference to the fact that in
national proceedings a panel responsible for antitrust law has formally ruled on SEP
cases on the basis of the relevant provisions of a schedule of cases drawn up by the
Presidium of the Court would be substantively meaningless.
240. Accordingly, Advocate General Wathelet already stated in his Opinion on Case C-170/13
Huawei v ZTE that, against the background of the obligations under European law, it
cannot be held against the alleged patent infringer if it demands that FRAND conditions
be set by a court or arbitration tribunal (see Opinion of Advocate General Melchior
Wathelet of 20 November 2014 Case C-170/13 Huawei v ZTE). November 2014 Case C-
170/13 para. 93: "Moreover, where no negotiations have been entered into or where
they have been unsuccessful, the conduct of the alleged infringer cannot be regarded as
dilatory or not serious if the latter requests that those terms be determined by a court
or an arbitral tribunal."). The Convention offers no indication that the member states, in
transferring judicial sovereignty to the UPC, are, contrary to the requirements of
European law, abrogating the cognizance powers of the common court, which likewise
replaces the national courts, and are not recognising the uniform decision on patent
law issues on the one hand and antitrust law issues on the other.
questions of patent law on the one hand and antitrust law on the other. If the antitrust
claim for the grant of a licence on FRAND terms can be raised as an objection to the
patent claims concerned, there is no reason not to regard counterclaims based on this
as counterclaims within the meaning of Art. 32(1)(a) UPCA.
241. In this respect, it should also be noted that the UPC already has exclusive jurisdiction for
SEP disputes that have their origin in a European patent with unitary effect. The same
applies to European bundle patents that are not the subject of an opt-out after the
expiry of the transitional provision pursuant to Art. 83 UPCA. A national court would
therefore have no jurisdiction for these cases. If, for example, an antitrust claim for a
FRAND licence were to be asserted before a national court and a question of patent law
were to be raised as a preliminary question of the antitrust examination - for example,
whether the teaching of the patent in suit is actually essential for a standard and thus
whether a monopoly position exists due to its standard essentiality - this question
would have to be clarified by the UPC. However, since the UPC would in turn be
required to decide on any restriction under antitrust law when deciding whether an
application for an injunction can be granted, the indissolubility of the question of
patent and antitrust law becomes apparent. The same would apply if the patent
proprietor were to file only a limited application for an injunction before the UPC,
making the enforceability of the injunction as a minus to the unrestricted injunction
subject to the condition that the patent user refuses to comply with a FRAND provision
assigned to the court by refusing to cooperate as required for the implementation of
the FRAND licence agreement determined by the court.
Unfoundedness of the defendant's counterclaims
242. However, the defendants' motions are unfounded as filed.
243. The main claim must be dismissed because the plaintiff cannot be obliged by the court
to accept the defendants' FRAND-inconsistent offer of 17 July 2024 pursuant to Annex
VB-FC 14. As explained above, the lump-sum licence fee submitted by the defendants in
the offer to conclude the contract is not FRAND-compliant within the meaning of the
case law of the ECJ simply because the lump-sum licence fee offered was not calculated
on the basis of the defendants' own acts of use. The defendants persistently do not
disclose the extent of the actual use, but calculate what they consider to be the
appropriate global lump sum licence solely on the basis of the IDC data disputed by the
plaintiff. As explained in detail above, this is insufficient.
244. For the same reasons, auxiliary request I.2 was also to be rejected, which conversely
was to order the plaintiff to submit the same offer to the defendants.
245. The further auxiliary request I.3 was also to be rejected. The request is aimed at
ordering the applicant to submit a licence agreement offer with the content according
to Annex VB-FC16. The plaintiff is not obliged to do so because, on the one hand, the
lump sum licence amount offered for the acts of use in the EPC contracting states,
Japan and the USA was again only calculated on the basis of the IDC data, but not on
the basis of its own disclosed acts of use. Moreover, it is not in line with the customary
business practice to have the main economic part of the licence fee determined by
another court, in this case the Beijing Intellectual Property Court. This means that the
key points of the contract are still open on the one hand, and on the other hand, both
parties ultimately agree in their arguments that only a comprehensive dispute
resolution through a global FRAND rate determination is in line with customary
practice. The defendants have also not put forward any points of view that could
nevertheless justify a partial determination of the licence rate only for certain global
regions. The mere reference to the greater local proximity of a court to the respective
submarket is not sufficient for this.
sufficient. The calculation on the basis of the IDC data is also flawed by the other
alternative claims made in the alternative application.
246. Insofar as the defendants request, in the alternative to the requests of request group I
with request group II.1, that findings be made on a claim to a licence and its amount in
the territory of the EPC contracting states, the request was to be dismissed for the
simple reason that a determination limited to the EPC territory does not meet FRAND
criteria (see above).
247. Insofar as the defendants further r e q u e s t in auxiliary request II.2 that the defendants
"subject to the existence of a FRAND commitment" to again pay a flat licence rate
limited solely to the EPC contracting states, the request had to be dismissed for the
same reasons as request II.1.
248. The auxiliary request pursuant to request II.3, to oblige the applicant to cooperate fully
in order to bring about a FRAND licence on the terms set by your court, is already too
vague and therefore cannot be granted as an unenforceable request.
249. The further auxiliary request group III. was already not grantable because the
defendants have no need for legal protection in the requested abstract findings. The
defendants themselves argue that they are entitled to a FRAND licence. They were
required to assert this with suitable groups of applications, which they did not succeed
in doing. The defendants have no noteworthy legal interest in further abstract findings,
such as those pursued with the present group of applications, since they have not yet
behaved in accordance with the requirements of the ECJ's case law, as explained above.
It can therefore be left open in the present case whether a determination of a specific
FRAND licence rate by the court - even without a FRAND counterclaim by the
implementer - can be considered, for example, if both parties have each submitted a
(counter)offer within the FRAND corridor and then do not, as contemplated by the ECJ,
focus on overcoming the remaining FRAND corridor.
differences by a third party (cf. ECJ loc. cit. para. 68). Moreover, claim III.1(e) again
suffers from the fact that the plaintiff is to be ordered to submit only an offer limited to
the EP territory, although both parties agree that only a global licence will finally end
their disputes.
250. The further groups of claims asserted in the alternative, which were the subject of the
counterclaim of 22 December 2023, must be dismissed for the same reasons as
auxiliary claim group III.1. Mere declarations are requested (request (i), (iii), (vi), (vii),
(viii), (ix)) or the requests are too vague (request (ii), (v)) or, again in accordance with
the grounds of the counterclaim, relate only to the EP territory (request (ii), (iv), (v),
(x)). This is because the defendants only switched to a global licence agreement after
the explicit reference by court order.
Requests of the plaintiff in the context of the FRAND counterclaim
251. The plaintiff's applications "in the context of the counterclaim" were subject to the
condition that the defendants' counterclaims were not dismissed and that the defendants
behaved like parties willing to grant a licence in the negotiations with the plaintiff that
were the subject of the dispute. This intra-procedural condition did not materialise.
Value in dispute of the claim
252. The panel sets the value in dispute - in settlement of the application for review filed
against the order of the judge-rapporteur pursuant to Rule 333 RoP - at over
€ 50 million. At the hearing, the parties considered an amount of € 25 million to be
appropriate. However, in the present case, it must be seen that the plaintiff's claims
pursued in the context of the FRAND counterclaim are aimed at enforcing a lump sum
licence of US$
the defendants are seeking to have to pay only US$ and
to avert the obligation to pay the additional amount claimed by the plaintiff Since
the parties have comprehensively submitted the global licence dispute for decision
through their mutual applications within the framework of the FRAND counterclaim,
the value in dispute could not be determined with regard to the patent in suit only.
Accordingly, only the maximum amount in dispute provided for in the UPC could be
determined.
DECISION
A.
I. It is established that the defendant has infringed European Patent No. 2 568 724
B1.
II. The defendants are ordered
to cancel it,
1. radio communication devices
which can be configured to transmit a reference signal with a transmit bandwidth
in a given system bandwidth, wherein both ends of the same [system bandwidth]
are assigned control channels and the transmit bandwidth is between the control
channels, or to transmit reference signals with a low bandwidth with frequency
hopping, and which radio communication devices comprise: an assignment unit
configured to assign the reference signals to frequency resources; a transmit unit
configured to transmit the assigned reference signals,
to offer, place on the market or use or import or possess for these purposes in
the Federal Republic of Germany, the French Republic, the Italian Republic, the
Kingdom of the Netherlands and the Kingdom of Sweden,
in which
the transmission bandwidth varies in the given system bandwidth, and the
allocation unit allocates the reference signals so that the reference signals are
allocated to frequency resources, each of which has the small bandwidth that is
invariable regardless of changes in the transmission bandwidth, where the
frequency resources are distributed uniformly in a frequency band of the
transmission bandwidth according to the change in the transmission
bandwidth.
change in the transmission bandwidth are evenly distributed in a frequency band
of the transmission bandwidth.
(direct infringement device claim 1)
2. Apparatuses adapted to perform a radio communication method which can
be configured to transmit a reference signal having a transmit bandwidth in a
given system bandwidth, both ends of the same control channels being assigned
and the transmit bandwidth being between the control channels, or to transmit
reference signals having a narrow bandwidth with frequency hopping,
in the Federal Republic of Germany, the French Republic, the Italian Republic, the
Kingdom of the Netherlands and the Kingdom of Sweden,
wherein the radio communication method comprises the following steps:
assigning the reference signals to frequency resources; and
transmitting the assigned reference signals,
characterised in that the transmission bandwidth varies in the given system bandwidth,
and
bandwidth varies, and
the reference signals are assigned to frequency resources each having the small
bandwidth which is invariable regardless of changes in the transmit bandwidth,
the frequency resources being uniformly distributed in a frequency band of the
transmit bandwidth in accordance with the change in the transmit bandwidth.
(indirect infringement of method claim 13)
The devices in the aforementioned sense include, in particular, 4G-capable smartphones
such as the OPPO Find X5 Pro
and 4G-capable smartwatches, such as the 4G-capable smartwatch
In the event of any infringement of the orders under subsection 1 and/or subsection 2,
the defendants shall pay a penalty payment of EUR 1,000 each.
III. The defendants are ordered, at their own expense
1. to recall the products mentioned under No. II. from the
distribution channels;
2. to permanently remove the products mentioned under No.
II. from the distribution channels;
3. to destroy the products mentioned under No. II;
IV. The defendants are ordered
1. to provide the plaintiff with information on the products mentioned
under No. II. in a list structured for each month of a calendar year and
according to infringing products in electronic form, which can be analysed
with the aid of a computer, from 17 December 2014 onwards, on
a) the origin and distribution channels of the products referred to in
No. II;
b) the quantities delivered, received or ordered and the prices paid
for the products referred to in No. II;
c) the identity of all third parties involved in the distribution of the
products referred to in No. II;
2. to disclose to the plaintiff their accounts to prove the information
provided in accordance with No. IV.1. plus the information on the profit
made by providing the following documents for each month of a calendar
year and for each infringing product in electronic form which can be
analysed with the aid of a computer:
a) Invoices - or, if these are not available, delivery notes - of
individual shipments, breaking down each shipment by
quantities offered, times offered, prices of goods offered and
type designations, and names and addresses of commercial
recipients of offers to sell for all products sold or otherwise
disposed of;
b) evidence of the advertising carried out, including evidence of
these advertising activities, with a breakdown of the advertising
carried out by advertising medium, its distribution, the
distribution period and the distribution area;
c) evidence of costs, with a breakdown of costs by individual cost
factors and profits realised;
d) invoices - or, if these are not available, delivery notes - and
corresponding statements of all costs incurred
costs incurred, on which the defendants rely i n calculating their
profits;
the accuracy of which shall be audited and certified at the defendant's
expense by a sworn auditor appointed by the plaintiff, whereby the auditor
shall be bound to secrecy vis-à-vis the plaintiff beyond the above-mentioned
information;
V. It is established that the defendants are jointly and severally liable to compensate
the plaintiff for any damage that Panasonic Intellectual Property Corporation of
America has suffered since 17 December 2014 as a result of actions pursuant to
No. II. and that the plaintiff has suffered since 29 July 2016 and will suffer in the
future.
VI.The defendants are ordered as joint and several debtors to pay the plaintiff an
amount of EUR 250,000.00 as provisional damages;
VII. The remainder of the infringement action is dismissed.
B. The action for cancellation is dismissed.
C. The FRAND counterclaim is dismissed.
D. The defendants are ordered to pay the costs.
E. The value in dispute is set at over 50 million€ .
F. The orders are only enforceable
with regard to A.II.1, A.II.2, A.III. (injunction/recall/removal/destruction)
• after the plaintiff has provided security in favour of the defendant in the
form of a deposit in the amount of € 10 million or has provided a written,
irrevocable, unconditional and unlimited guarantee of € 10 million from a
credit institution authorised to do business in the territory of a Member
State of the European Union;
• after the plaintiff has notified the court which part of the orders it intends to
enforce and has submitted a certified translation of the orders into the
official language of the Contracting Member State in which enforcement is
to take place and after the defendants have been served with the
notification and the (respective) certified translation.
Mannheim, 22 November 2024 NAMES
AND SIGNATURES
Presiding Judge Prof Dr Tochtermann
Digital
Peter Michael signed by
Dr Peter Michael Dr
Tochtermann
TochtermannDate: 2024.11.19
17:40:28 +01'00'
Legally qualified judge Böttcher
Dirk Digital
signed by
Andreas Dirk Andreas Böttcher
Date: 2024.11.19
Böttcher 19:10:09 +01'00'
Legally qualified judge Brinkman (Edger) (Frank) Digitally signed by
Edger Frank BRINKMAN
BRINKMANDate: 2024.11.21
10:02:23 -03'00'
Technically qualified judge Loibner
Klaus Digitally signed by
Klaus Loibner
Loibner Date: 2024.11.19
21:23:05 +01'00'
For the Assistant Registrar: Kranz, Clerk LK
Mannheim
ANDREAS Digitally signed
by ANDREAS
MICHAEL MICHAEL Kranz
Kranz Date: 2024.11.21
14:58:52 +01'00'
INFORMATION ON THE APPEAL:
An appeal against the present decision may be lodged with the Court of Appeal by any party whose
requests were unsuccessful in whole or in part within two months of notification of the decision (Art.
73(1) UPCA, R. 220.1(a), 224.1(a) RoP).
INFORMATION ON ENFORCEMENT (ART. 82 UPCA, ART. 37 PARA. 2 EPGS, R. 118.8, 158.2, 354, 355.4 ROP):
A certified copy of the enforceable decision is issued by the Deputy Registrar at the request of the enforcing
party, R. 69 RegR.
This decision was delivered in open court on 22 November 2024. Presiding Judge Prof. Dr
Tochtermann
Peter
Michael Dr
Tochterma
nn
Digitally signed by
Peter Michael Dr
Tochtermann Date:
2024.11.22
10:07:20 +01'00'