Access to standard-essential patent (SEP) injunctions in Germany remains in flux. This is the third post in a row to share news regarding the situation in Mannheim, the "diversity venue" du jour.
One week ago, I reported on the position taken by the Mannheim Regional Court's Second Civil Chamber (Presiding Judge: Dr. Holger Kircher) in a Nokia v. Daimler trial earlier that week. Effectively, Judge Dr. Kircher's panel told the parties (behind closed doors, but without insisting on confidential treatment of that part of the conversation) that the judges were going to reverse their Huawei v. ZTE-related approach of several years: they were going to start their analysis with the implementer's counteroffer.
Toward the end of yesterday's post on Conversant's quartet of patent infringement complaints against Daimler in Munich, I mentioned that in a Nokia v. Lenovo trial on Friday, the Mannheim court's other patent-specialized division--Presiding Judge Dr. Peter Tochtermann's Seventh Civil Chamber--had distanced itself from the other panel's stance.
Meanwhile I've obtained a copy of a clarifying order by Judge Dr. Kircher and his side judges Sender and Dr. Seibel, dated Monday, May 26, 2020, in that Nokia v. Daimler case. With a view to the defendant's leave to file a post-trial brief on FRAND, the Second Civil Chamber explains its current position on the legal framework as follows:
They still stand by the sequence of analysis they outlined last week and will focus on the defendant's (here, Daimler's) counteroffer first, unless Germany's top court for civil litigation, the Federal Court of Justice, were to decide otherwise at some point. (This makes it a possibility that they might not even follow such guidance by their direct appeals court, the Karlsruhe Higher Regional Court--with case law being weak in Germany, they wouldn't have to.)
But--and I can hardly overstate the extent to which I welcome this latest development--they have thought again about what the practical impact of a scenario in which both the SEP holder's initial offer and the implementer's counteroffer are deemed FRAND-compliant should be. In last week's trial, they indicated that even in the "FRAND vs. FRAND" case, an injunction would issue (which is the position of the Munich I Regional Court). Now, however, Judge Dr. Kircher's panel has stated in writing that the pursuit of an injunction by a SEP holder despite a FRAND counteroffer by the implementer might constitute abusive behavior under EU antitrust law and, therefore, be rejected by the court.
I have updated my chart accordingly (click on the image to enlarge; this post continues below the image):
This means that, apart from the procedural approach (which offer to analyze first), the only difference from the court's previous legal position is the bottom-right cell of the matrix: previously, non-FRAND behavior by the SEP holder would have resulted in a denial of injunctive relief without even having to look at the implementer's counteroffer; now, however, the SEP holder might get away with a FRAND violation, which would be practically "cured" by the implementer's failure to submit a FRAND counteroffer.
For the Nokia v. Daimler case at hand, this adjustment--it wouldn't be grossly unfair to say they backtracked a bit, but it's more appropriate to recognize and respect their diligence in having furthered their thinking--means that Daimler now has to convince the court that its offer was FRAND-compliant. Should the post-trial brief make a compelling case to that effect, Nokia will come out on the losing end as it (statistically speaking) almost always does in litigation.
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