STANDARD-ESSENTIAL PATENTS
case and a final decision, according to lawyers we have spoken to, was at the time of writing not expected until May 5. In his opinion, issued last November,
Wathelet said that an SEP owner should make a licensing offer to a competitor before seeking a legal injunction for alleged infringement. He added that a company may violate EU anti- competition law if it seeks an injunction against a company that is “willing and able” to enter into a licensing deal. But, according to Wathelet, an application
for an injunction does not constitute an abuse of a dominant position if the alleged infringer’s conduct is purely “tactical and/or dilatory and/ or not serious”. Tese factors could be determined as a
party failing to rapidly present a serious and reasonable counter-offer, the AG said. If negotiations
stall, he added, the alleged
infringer should ask the court or an arbitration tribunal to rule on appropriate licensing terms. If it fails to do so, it could face an injunction because its behaviour would be considered “not serious” and tactically hesitant, the AG said. Wathelet added that an accused infringer
must respond to an offer “in a diligent and serious manner” and if it does not accept the SEP owner’s offer for a licence, it must promptly present a reasonable counter-offer in writing, stating why it disagrees.
Avi Freeman, partner at patent and trademark
attorney firm Beck Greener in London, says that if the CJEU adopts the AG’s guidance, then SEP implementers and potential licensees will need to focus their commercial minds early. “It will place the potential licensee in a tough
position, in that it now knows that it could be subject to injunction if it cannot agree licensing terms that are considered FRAND,” Freeman says. Freeman adds that overall Huawei (or the
patent owner in any future cases) would be the happier of the two parties, assuming the CJEU does not “stray away” from the AG’s opinion.
He explains that, based on this opinion,
the SEP owner would either obtain royalties from licensing the patent or will be granted an injunction. “While the ruling places some requirements
upon the SEP owner, it leaves open injunctive remedies in the event that an agreement cannot be reached and both sides have shown genuine attempts to reach such agreement.” Hosea Haag, patent attorney at
law firm
Ampersand in Munich, says the German courts are likely to follow the CJEU if it upholds the AG’s opinion and that such a decision may go some way towards putting a stop to companies abusing a position of power. According to Haag, it would be easier to
show that a licensing agreement proposed by a patentee is unfair than aſter such a deal has been signed. But, according to Freeman, despite determining what constitutes an abuse of a dominant position being the CJEU’s primary focus, the AG’s opinion, if followed, may not result in a reduction in companies abusing their position. Freeman says that while the AG’s opinion
places obligations on the SEP owner, for example to notify the other side of licensing terms at an early stage, this “would be done in the course of normal licensing negotiations”. He adds that, should this approach fail,
the patent owner can still be entitled to seek injunctive relief without this being considered an abuse of its dominant position. “I am not sure that companies previously
did routinely abuse dominant positions, but I don’t see the opinion placing much of a curb, in practical terms, on the actions they might take,” he says.
The meaning of FRAND The case might be
42 World Intellectual Property Review May/June 2015 at a relatively early stage—the CJEU does not have to concur
www.worldipreview.com
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