In July, the ECJ in its judgement C-170/13 has set forth new rules for the enforcement of standard-essential patents (SEP). According to these rules, the owner of a SEP has to alert the presumed infringer of the infringement prior to raising a cease and desist claim. The infringer subsequently has to express his/her willingness to enter into a license agreement on FRAND terms (Fair Reasonable and Non-Discriminatory). The patent owner then has to make a written offer to the infringer, who has to respond to that offer in due course (see GEISTWERT blog here).
The District Court of Düsseldorf now applied these new rules for the first time. It issued a cease and desist judgement against Haier, a Chinese manufacturer of household goods, cell phones and tablets. The corresponding claim was filed by the patent exploiter Sisvel, which owns two SEP on GPRS and UMTS (cases 4a O 93/14 and 4a O 144/14). Sisvel had already offered a license to Haier, which Haier denied in light of a license fee, which Haier deemed too high. Although Haier subsequently made a counter-offer, Haier failed to deposit the offered license fee at the court. Due to that failure, and in compliance with the prerequisites set forth in C-170/13, the cease and desist judgment was issued against Haier.
This case demonstrates the importance of both, the adherence to the formal requirements and the correct calculation of a FRAND-license fee: Both factors are paramount for being successful in court.
Haier may still appeal against the Düsseldorf District Court’s judgment.