Indicative Overview of FRAND-Defense Requirements in UPC Panasonic v. Oppo (Mannheim Local Division)
Before initiating proceedings, SEP holder to alert the implementer of the infringement.
By designating that SEP and specifying the way in which it has been infringed.
Claim charts of enforced SEP are always sufficient:
– Reference to patent is suit sufficient if claim chart to family member included.
Implementer to express its willingness to conclude a licensing agreement on FRAND terms.
Assessed against overall view together with the conduct of SEP holder, its offer and especially the implementer’s objections thereto.
Reciprocal obligation to negotiate to achieve timely conclusion of FRAND licence in targeted negotiations on primarily private-autonomous basis.
Offer must be FRAND-compliant. Various licence terms can qualify as FRAND, if not deviated unjustifiably from established benchmarks typically derived from SEP holder's own comparative licences or comparable licences discussed in court decisions.
Considering the negotiation state, SEP holder must make plausible why it believes the offer is FRAND-compliant, so implementer can react in good faith (“specifying (…) the royalty and the way in which it is to be calculated”).
In principle, no long form licences required if economics based on objective criteria are clear in accordance with customary business practice, unless requested by implementer.
Implementer must respond diligently to the offer according to customary business practices and in good faith, without delaying tactics.
Should the implementer not accept the offer, it shall promptly and in writing submit a counter-offer that corresponds to FRAND terms.
If the implementer’s counter-offer is rejected and SEP use continues without license, then implementer to provide:
– Appropriate security (e.g. bank guarantee or deposite); and
– Render accounts regarding SEP’s past acts of use (i.e. sales data of the Implementer’s actual use of the SEP).
Notification SEP Holder
Willing Implementer
FRAND Offer SEP Holder
FRAND Counter-offer
