There is an increasing number of court decisions refusing to grant injunctive relief to patent holders because they have not fulfilled their antitrust obligations to grant a non-discriminatory, reasonable license offer by the end of the oral hearing.
Probably the most significant development in the case law of SEPs is the fact that the courts in Mannheim and Düsseldorf have clearly emphasized the SEP holder’s duty of transparency, from which extensive information obligations derive, which the SEP holder must fulfil at an early stage.
An important question that arises often in practice is the extent to which the patent holder must fulfil his negotiation and offer obligations before filing an infringement action and whether and how he can remedy this omission in court.
The Mannheim Regional Court has announced in several decisions that it will probably change its case law to the effect that pending infringement proceedings must be suspended in order to create a pressureless negotiating situation to allow negotiations and to remedy the omitted negotiating obligations. At this point, the infringement courts in Düsseldorf have so far worked with graded preclusion rules and procedural promotion obligations. A very clear line cannot yet be discerned here.
The licence offer must formulate the FRAND conditions in writing and enable the recipient to understand why the submitted offer meets FRAND criteria on the basis of objective criteria.
Other licence agreements must be made transparent, including the reasons for different treatment. A blanket reference to other licensees without further explanation of the license terms and a reference to a portfolio of a third party as well as an expert opinion not made available are not sufficient. The information to be provided by the SEP holder on the “manner of its calculation” in the context of the offer corresponds in terms of content to what he as plaintiff must present in infringement proceedings in order to sufficiently demonstrate the FRAND conformity of his offer to the court. In particular, it is necessary to submit evidence on license agreements already concluded and on relevant court decisions. Whether the submission of licence agreements alone is sufficient to prove the adequacy of the licence fees depends in particular on the number of licence agreements concluded. If there is a sufficient number of licence agreements and acceptance on the market (e.g. market share of products licensed at a certain fee level), no further information on the appropriateness of the licence fee level will normally be required. The SEP-owner has to provide information on all license agreements already concluded, otherwise, there is always a risk that only those contracts will be submitted that support the required level of royalties. Non-discrimination can also only be verified if information is provided on all licence agreements. In addition, the SEP holder must submit any court decisions dealing with the licence agreements in order to calculate the required licence fees. This is because court decisions or information on the appropriateness of the proposed licensing conditions can be considered as neutral and expert opinions. The infringer has a legitimate interest in such decisions, while it is up to the SEP holder to make such relevant aspects transparent. The SEP holder must also submit other decisions on the infringement and the legal status of the IPR(s) to be licensed. If none of these exist, the SEP holder must present evidence of the appropriate level of licence fees, for example, for comparable licence agreements (preferably in the same or comparable technical area). Further explanations of the portfolio and its effects on the level of fees are also necessary if the plaintiff’s patent is not licensed individually. Only when the infringer has received this information it can be seen as an offer, FRAND compliance which the infringer has to examine for and to which he must respond in accordance with the requirements of the ECJ.
Significant changes in case law have also occurred with regard to the issue of non-discrimination. Licensees are treated unequally if the patent holder of a SEP grants special or preferential contractual conditions to individual licensees, which it refuses to grant to other licensees; this also applies if it selectively enforces its prohibition rights from the SEP. Such selective enforcement is to be assumed if the patent owner initiates infringement proceedings against individual competitors in order to force them into a license agreement, while leaving other competitors free to use his intellectual property rights. There is also discrimination if the hardware suppliers of a network operator are denied licenses and the network operator is attacked. The licence offer must be fair and reasonable in absolute terms and relative to other licensees in terms of its amount and other licensing conditions and must not discriminate. The SEP holder must grant the same prices and other terms and conditions to trading partners in the same situation. However, this only applies to comparable situations – there is therefore no obligation for schematic equal treatment. However, a licence offer is not FRAND if the patent holder cannot explain why a flat-rate licence with a one-off payment was granted in favour of a large manufacturer, whereas unit licences with individual invoicing were requested in this case.
A substantial course correction of the case law also results from several decisions of the Düsseldorf courts, according to which the SEP holder cannot in principle invoke the confidentiality interests of his licensing systems and conditions. There is no legally protectable interest in the secrecy of the license terms that the SEP holder actually takes on the market, unless the SEP holder is in a position to present other actual circumstances. The mere reference to confidentiality clauses in license agreements is not sufficient. The promise to license in a fair and non-discriminatory manner requires transparency of the applicable license conditions for the interested party. Otherwise the interested third party cannot find out what the license conditions already in place look like. In view of the obligation to treat everyone equally, it is not clear what legally justifiable interest the licensor should have in keeping his licence conditions, with which he owes equal treatment to the market participants, secret from the public. In principle, therefore, SEP holders cannot be required to conclude confidentiality agreements during the proceedings.
