In Germany, two decisions were rendered that are very much of interest to the Dutch patent practice, relating to standard essential patents and non practicing entities.The first decision was rendered by the German Federal Supreme Court (GBH) on 6 May 2009. This case was about the "Orange Book" standard for recordable and rewritable compact discs (CD-R and CD-RW). In patent cases, the use of a standard by a defendant is often brought forward as evidence of the infringement of essential patents (i.e. patents which are necessary to use the standard).

A possible defence against this claim, or at least the injunctive part of it, lies in competition law: the patent holder has refused to grant a licence and has thus abused its dominant market position. In the Orange Book decision the German Federal Supreme Court established the circumstances under which this plea could successfully be put forward.

The German Federal Supreme Court confirmed that a defendant sued for patent infringement can invoke the defence of abuse of a dominant market position if the patent holder refuses to grant a licence to the defendant on non-discriminatory and non-restrictive terms and conditions (FRAND). However, the patent holder only abuses its position if the defendant (1) has made him an unconditional offer to enter into a licence agreement which the patent holder cannot reject without violating the prohibition of discrimination or anti-competitive behaviour and (2) complies, for the time that he has already been using the subject matter of the patent, with the obligations that the licence agreement to be concluded imposes in return for the use of the licensed subject matter.

The requirement of such an unconditional offer is met by an offer to conclude a licence agreement in which the licensor may determine the amount of royalties according to its own reasonable discretion, if the defendant considers the patent holder’s licence demands to be excessive or if the patent holder refuses to quantify the royalties. In what manner this rule should be used in practice is still unclear. Further case law should clarify the general rules set by the German Federal Supreme Court. The second decision was rendered by the Oberlandesgericht in Karlsruhe on 11 May 2009. In its decision the court suspended the execution of an injunction that was issued in first instance for the course of the appeal proceedings. A weighing of the interests involved formed the basis for the decision. The party that had requested the injunction was a “non practicing entity” (Patentverwertungsgesellschaft). Interestingly, the court found that the interests of a party in the execution of an injunction during appeal proceedings must generally be considered as less substantial if this party is a non practicing entity and is as such not active in the market of the patented invention.

The second decision was rendered by the Oberlandesgericht in Karlsruhe on 11 May 2009. In its decision the court suspended the execution of an injunction that was issued in first instance for the course of the appeal proceedings. A weighing of the interests involved formed the basis for the decision. The party that had requested the injunction was a “non practicing entity” (Patentverwertungsgesellschaft). Interestingly, the court found that the interests of a party in the execution of an injunction during appeal proceedings must generally be considered as less substantial if this party is a non practicing entity and is as such not active in the market of the patented invention.

The patent holder had claimed that execution of the injunction was necessary to compel the defendant to enter into a licence agreement on short notice and/or to prevent the creation of a precedent against other (potential) licensees. The court did not consider these interests claimed to be worthy of protection in light of the other interests in this case.