Is it an abuse of dominant position if an owner of a standard essential patent (SEP) seeks an injunction against a potential infringer? This was the crux of the reference from the Düsseldorf Regional Court in Huawei v. ZTE. According to the Advocate General’s opinion of last week, the answer is most likely YES.

AG Wathelet opined that a SEP owner cannot seek an injunctionwithout first offering a licence on FRAND terms. In response, the potential infringer can (i) disagree, and put forward a serious counter-offer, or request that FRAND terms be fixed by the Court/Arbitral tribunal in the event of a failed negotiation process and/or (ii) reserve the right to challenge the SEP’s validity/essentiality.

Otherwise, an SEP owner can seek an injunction against the infringer without abusing its dominant position (although it is for the national court determine, on a case-by-case basis, whether the SEP owner is in a dominant position –however, the fact that the patent is an SEP may give rise to the rebuttable presumption that it is).

We now await for the decision of the Court of Justice of the European Union, anticipated to be delivered in the first half of next year.

See Press Release from the CJEU.