The New Landscape in FRAND Litigation By Haris Tsilikas
2020 marked a turning point in global FRAND litigation. In particular, three judgments by the Federal Court of Justice (Bundesgerichtshof) of Germany, the Supreme Court of the UK, and the US Court of Appeals for the Ninth Circuit change the landscape in international FRAND litigation.
Specifically, the German Federal Court of Justice, in its recent Sisvel ruling, decided on a broad range of issues around SEP-enforcement. The FCJ reversed the lower court’s findings that an SEP-owner that fails to make an offer on FRAND terms infringes Article 102, regardless of the conduct of the prospective licensee.
Moreover, the Court emphasised both the substantial efficiencies of portfolio licensing and the wastefulness of a patent-by-patent approach to licensing. According to FCJ, whether a given licensing offer is FRAND depends on ‘a variety of circumstances.’ FRAND, however, does not entail an obligation on the part of the SEP-owner to offer identical terms to all licensees or, when it comes to the royalty rate, a ‘uniform tariff.’ The Court noted the infringer’s incentives to holdout as far as possible, even until the patent’s term of protection expires. Therefore, the implementer is to respond to the notice of infringement by indicating promptly and unequivocally his willingness to conclude a licence on FRAND terms and participating in the licensing negotiations in earnest. ...