IEEE Consumer Electronics Magazine - July 2016 - 117

offer of the patentee, thus, has to be
reviewed by the infringement court.

MANNHEIM DISTRICT COURT-
CASE 7 O 66/15
On 29 January 2016, Mannheim District Court passed another judgment
regarding the implementation of the
jurisdiction of the CJEU. Once again,
the court explicitly illustrated its
patentee-friendly interpretation of the
judgment of the CJEU. In the court's
view, the assertion of an exclusive
right is one of the main aspects of the
patent protection. Thus, it can only be
restricted under certain conditions,
which were pointed out by the CJEU.
The burden of proving the existence of
these circumstances, therefore, basically lies on the (potential) infringer.
Generally, one of the most crucial
points in infringement proceedings
involving SEPs is the regularly disputed issue of whether an offer meets
FRAND conditions. The court explicitly held that it is not in the remit of an
infringement court to judge the exact
content of the (counter)offer. In fact it
was up to the parties to agree on
FRAND conditions by negotiating
them. Furthermore, the court concretizes the obligation of the patentee to
notify the infringer about the infringement: in general the notification has to
enable the infringer to (let) check the
situation relating to the patent. However, the exact content of the notification
has to be evaluated on a case-by-case
basis. In this regard, the court held that
it would be sufficient to provide the
(potential) infringer with claim charts.
Regarding the (first) offer of the patentee, the Mannheim District Court
explicitly disagrees with the Dusseldorf
Higher Regional Court's opinion: the
Mannheim District court points out
that-once again-it is not the court's
duty to judge whether the offer was
FRAND. The (potential) infringer must in
any case react upon the patentee's offer if
the latter points out why-in his or her
opinion-the offer meets FRAND conditions. It is not decisive whether the offer
is indeed FRAND or considered as
FRAND by the infringer. Only in a case
where the patentee's offer is an obvious

abuse of a dominant position, e.g., by evidently discriminating against the infringer, does the offer not trigger the obligation
to react.

DUSSELDORF DISTRICT
COURT-CASE 4A O 126/14
One of the latest decisions to implement the judgment of the CJEU is the
judgment of the Dusseldorf District
Court of 31 March 2016. In this decision, the court first pointed out that
the obligations set up by the CJEU
apply to both operating patentees
and patent monetization companies.

The German patent
infringement courts are
currently interpreting the
CJEU ruling in a very
patentee-friendly way.
Regarding the obligation to inform the
infringer about the infringement prior
to filing an infringement action, the
court held that the infringer has to be
provided with the notification at the
latest before the advance payment on
account of court fees.
Furthermore, in the court's view, the
judgment of the CJEU does not rule out
the possibility of catching up on the
notification during the infringement
proceedings. Thus, the court intends to
decide on a case-by-case basis whether
a remedy is possible. This applies especially to cases where the infringement
action was filed prior to the decision of
the CJEU. The court further specified
that a period of five months exceeds the
time period available for the infringer
to signalize its willingness to obtain a
license. The infringer cannot catch up
on this in the infringement proceedings. In case the infringer fails to signalize its willingness in good time, he
or she cannot rely on the fact that the
patentee made an offer to grant a
license only after filing the infringement action.
Implementing the Dusseldorf
Higher Regional Court's judgment in
case 15 U 66/15, the court further

evaluated whether the patentee's offer
was FRAND and thereby distanced
itself from its earlier jurisdiction.
Therefore, the court basically checked
whether the patentee's offer complied
with an offer he would have made
without having a dominant position
and whether the offer was usual in
this line of business. Furthermore, the
court also did not make too high
demands on the demonstration of the
calculation basis. Since, in the case
at hand, the patentee's offer was
FRAND, the court left open the question whether the (potential) infringer
has to react upon an offer not meeting
FRAND conditions. Additionally, the
court is of the opinion that there is a
strong indication that the plaintiff's
license offer meets FRAND conditions if the patentee grants the infringer the possibility to let the license fee
be checked by a court. This gives the
patentee a good opportunity to avoid
that a court would consider its offer
not being FRAND.

CONCLUSION
To summarize, the German patent
infringement courts interpret the judgment of the CJEU in a very patenteefriendly way. In particular, this is true
for the Mannheim District Court. The
Dusseldorf Higher Regional Court
seems to adopt a more defendantfriendly approach. Thus, contrary to the
expectations at the time of the issuing of
the CJEU's judgment, patent litigation
in Germany remains very attractive for
plaintiffs-even if it concerns an SEP. If
the plaintiff complies with certain
minimum requirements as to procedure, an injunction is available for
plaintiffs litigating an SEP.

ABOUT THE AUTHORS
Thomas Gniadek (thomas.gniadek@
noerr.com) is an associated partner and
patent litigator with Noerr LLP in
Munich, Germany. He regularly represents clients in complex patent litigation
involving standard-essential patents.
Sebastian Zwick (sebastian.zwick@
noerr.com) is an associate in Noerr's
patent litigation group.

JUly 2016

IEEE Consumer Electronics Magazine

117

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