Published: 11/20/14
This case was referred by a German court to the European Court of Justice to assess whether the invocation of injunctive relief by a holder of a FRAND-encumbered SEP may constitute an abuse of a dominant position. The Advocate General concluded in an advisory opinion that “the commitment given by [the SEP holder] … bears some similarity to a ‘licence of right,’” and that “where a patent licensee has a licence of right, an injunction may not, in principle, be issued against him.” Thus, where “the infringer is and remains ‘able’ to conclude and comply with a licensing agreement on FRAND terms and, in particular, to pay an appropriate royalty, the SEP holder must, given the importance of what is at stake, take certain specific steps before bringing an action for a prohibitory injunction in order to honour its commitment and discharge its special responsibility [as a dominant firm] under Article 102 TFEU.” These steps include proving the alleged infringement with a writing “specifying the SEP concerned and the way in which it has been infringed” and providing “a written offer for a licence on FRAND terms that contains all the terms normally included in a licence in the sector in question, in particular the precise amount of the royalty and the way in which that amount is calculated.” If negotiations are not commenced or are unsuccessful, the alleged infringer must be given the opportunity to ask for the FRAND terms “to be fixed either by a court or an arbitration.” Further, the alleged infringer must not be denied the right to challenge either the validity of the asserted SEP or the fact of infringement.