Sisvel has made the following statement with regards to the Düsseldorf Court of Appeal decision on FRAND:
“On 13 January 2016, the Düsseldorf Court of Appeal issued a first guidance on its interpretation of the CJEU judgment on FRAND (Huawei v ZTE, 16 July 2015, C-170/13). It held that in the event of the assertion of standard-essential patents, a court would first need to assess whether the initial license offer made by the patentee was FRAND compliant before rejecting any FRAND defense on the basis of an insufficient reaction by the infringer. SISVEL has successfully asserted two patents from its Wireless Patent Portfolio against Haier Deutschland GmbH and Haier Europe Trading SRL (“Haier”). Both companies belong to the Chinese Qingdao Haier Group. The Düsseldorf District Court has ordered Haier to stop selling UMTS and GPRS mobile devices, to render accounts and to pay damages for past infringements (Cases 4a O 93/14 and 4a O 144/14, see our press release). The Court confirmed the infringement of SISVEL’s patents and rejected the FRAND defense raised by Haier. As Haier had not reacted in a timely manner to Sisvel’s license offer, the Court held that Haier had not met the requirements set by the CJEU. In this case, the Court held that there would be no need to analyze the details of the patentee’s license offer and its FRAND compliance. Haier has appealed the decisions. The Düsseldorf Court of Appeal has now confirmed in two decisions regarding the enforcement of the first instance judgment that prima facie the District Court had correctly found infringement and a sufficient likelihood of validity of the SISVEL patents. The Court of Appeal confirmed that SISVEL is entitled to enforce these judgments regarding the claims for rendering accounts and damages. However, it stayed the enforcement in view of the injunctive relief. The Court of Appeal held that in the event of a FRAND defense, the competent court would always have to explicitly assess whether the license offer from the patent holder was FRAND compliant. Only in this case, it would then become relevant to determine whether the infringer had reacted in a timely manner to the license offer and had complied with the further requirements set by the CJEU.
Daniele Frezzato, Program Manager of the SISVEL Wireless Portfolio, comments: “We appreciate the clarification by the Court of Appeal on how it interprets the CJEU decision. We are convinced that the Court will confirm that our license offers are based on fair, reasonable and non-discriminatory terms. It is SISVEL’S mission to support the growth of the technology industry by offering a unique portfolio of patents for mobile telecommunication.”
Started in 1982 when Sisvel S.p.A. was founded in Italy, the Sisvel Group has become a world leader in managing intellectual property and maximizing the value of patent rights. The Sisvel Group is global in scope and reach, with subsidiaries in Italy (Sisvel and Sisvel Technology in None Torinese), the United States (Sisvel US and Audio MPEG in Metropolitan Washington, DC), China (Sisvel Hong Kong), Japan (Sisvel Japan in Tokyo), Germany (Sisvel Germany in Stuttgart), Luxembourg (Sisvel International), and the United Kingdom (Sisvel UK in London), with over one hundred professionals worldwide with engineers, legal, and licensing expertise. Sisvel has a long history of managing successful patent portfolios including those related to the audio compression standards known as MP3 and MPEG Audio, and widespread technologies such as OSD (On Screen Display), ATSS (Automatic Tuning & Sorting System), and WSS (Wide Screen Signalling – for automatic switching of television image formats). Sisvel currently operates patent pools and joint licensing programs for the DVB-T, DVB-T2, LTE/LTE-A and Wi-Fi standards, together with its Sisvel Wireless licensing program and is in the process of creating a new licensing program for DVB-C2.
For additional information, please visit: www.sisvel.com