The judgment has caused the holders of SEPs to take to heart a whole series of significant clarifications and additional obligations.
First, it was clarified, again, that the SEP holder has no claim to damages and an associated information disclosure claim unless he fulfils his obligations to make a FRAND offer. He can sue only for the enrichment claim as well as an associated claim to information in the amount of the standard (FRAND) license fee.
Furthermore, the SEP holder must submit a fully formulated and substantiated FRAND license offer on his own initiative, and the Court must determine—and do so not just summarily—whether the license offer actually satisfies FRAND terms. Along with the FRAND license offer, the type and economic basis of the calculation of the FRAND license offer must also be disclosed. It is not enough to just name the royalty rate. Rather, all license agreements already concluded with third parties must also be disclosed. This will allow the recipient of the offer to determine in a transparent way whether the offer submitted to him satisfies FRAND terms and whether there is fundamental equal treatment.
Even if possibly not all companies on the market would have to receive the identical offer of the SEP holder, there must be no inappropriately discriminatory differences in the economic and legal terms of the FRAND license offer. If there is unequal treatment, such treatment is objectively justified only if the differences appear as conditions conforming to the principles of competition for a balancing of interests and are not based on arbitrariness or on considerations that are outside the bounds of economically or commercially reasonable behaviour. However, in no case should the differences prove to be an expression of abusive exploitation of a market-dominating position. In the specific case, massive differences emerged between the license offer that Defendant had received and licenses that Sisvel had already negotiated in the past with third parties. In these old cases, the licensees had received high discounts, in some cases more than half of the required license fee.
The reductions resulted in the Higher Regional Court judging the license offer with the license fee demanded as manifestly discriminatory and evidently abusive, and the FRAND objection of Defendant was successful. The right to injunctive relief was therefore rejected as currently unjustified.
The Higher Regional Court also did not grant Plaintiff any easing of his FRAND obligations because it was a transitional case; thus, the suit had already been pending before the Huawei/ZTE decision of the ECJ. The Higher Regional Court justified its decision by explaining that such transitional periods cannot by granted by the case law and indeed had not been granted by the ECJ in the case ruled on although this would have genuinely been the first ever transitional case.
Ultimately, the judgment, especially by its reasoning, represents a heavy blow to Sisvel and its licensing program, and still more charges are being brought in connection with investigations into breach of fiduciary duty and corruption against a patent attorney who has been arrested.
Ultimately, the FRAND objection, particularly in the communications industry, appears to be becoming increasingly substantiated, and the courts are beginning step by step to more clearly define the rules of the game in this area.
Ultimately, there can be no doubt, however, that in the case of technologies that are standardised and abounding in patents, the right to injunctive relief stemming from an SEP cannot be enforceable. No business entity and no citizen in this country can or wants to imagine that mobile wireless networks or landline networks or television broadcasts can simply be shut down at the instigation of a single patent holder. These standardised and intensely patent-encumbered infrastructures, like electricity and running water, are part of the indispensable preconditions of everyday existence and are not subject to the discretionary power of a single patent holder. Should it ever come to such a shutdown, the citizenry would soon compel the legislature to bring about an amendment of the patent law. If the industry wants to avoid this, the case law must take this step itself.
