German Federal Court of Justice FRAND Judgment in <i>Sisvel v. Haier</i>

July 23, 2020

The German Federal Court of Justice (“FCJ”) recently published its long-awaited judgment in the patent dispute Sisvel v. Haier (Case No. KZR 36/17).

Under the process previously laid out by the Court of Justice of the European Union in Huawei/ZTE, the owner of a standard-essential patent (“SEP”) must grant a license to any implementer who has declared its willingness to take a license, and can only seek an injunction if it first makes a fair, reasonable, and non-discriminatory (“FRAND”) offer to the infringer and the latter fails to diligently respond to that offer.

The FCJ has now given guidance on those requirements, in particular holding that the implementer of an SEP must express “unconditional willingness” to take a license on FRAND terms. Such “unconditional willingness” is lacking if the implementer employs any delaying tactics or imposes conditions such as a prior court ruling that the SEP in question is valid and infringed.

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