The Munich Regional Court I had issued in several patent proceedings injunctions together with information and ancillary claims based on standard-essential patents. In each case, the court had set the security deposit relatively low. The amount of the security deposit was calculated by the Regional Court on the basis of what the defendant would have had to spend to obtain a licence. In its reasoning, the court pointed out that an economically-minded defendant, applying the duty to mitigate damages, should not allow an injunction to be enforced, but would then have to agree to a licence offered to him (although this was highly disputed between the parties). If the defendant does not agree to the licence in such a situation, he violates its duty to mitigate damages and was therefore himself responsible for the further consequences under Sec. 254 BGB.
The court therefore considered the defendant to be under an obligation to agree to the licence in the event of enforcement, according to the first instance judgment. Therefore, the security was only set in the amount of the expected licence fee and not according to the damage actually incurred in the event of an injunction enforcement.
The Munich Higher Regional Court countered this in a partial judgment, 6 U 6389/20 Kart. The Higher Regional Court maintained that the expected damage of the injunction enforcement determines the amount of the required security and not an agreed upon licence instead. The defendant was not obliged to agree to a licence, because then it would no longer be possible for him to appeal to a higher court, because the main action would then have to be declared settled. Furthermore, the defendant would be forced to enter into an (extensive portfolio) licence agreement against its will and to abandon its point of view according to which the plaintiff’s licence offer in question was precisely not adequate. A licence agreement “subject to final judgement” was also not possible according to the applicable principles of contract law. Such a duty to mitigate damages would also exceed the limits of what is reasonable, as must also be observed in the context of Sec. 254 para. 2 sentence 1 BGB. Rather, each party was free to seek and have its rights clarified through the legal recourse provided by law, and this free decision could not be restricted by a duty by way of contributory negligence under Sec. 254 BGB.
