The Regional Court Munich has decided that TCL is an unwilling licensee and, for the time being, cannot sell HEVC-compatible televisions and mobile devices in Germany. The court, which is popular with SEP plaintiffs, also issued new guiding principles on FRAND case law. For the lawyers who represented patent pool Access Advance, it was their final ruling achieved on behalf of law firm Eisenführ Speiser. Yesterday, they moved to Bardehle Pagenberg.
2 March 2023 by Mathieu Klos
For the time being, TCL may not sell devices in Germany that use a video coding method protected by a GE Video Compression patent, which is a member of the Access Advance patent pool. The ruling primarily affects TCL’s televisions and numerous mobile devices that the Chinese company sells under the Blackberry and Alcatel brands, among others.
In mid-February, the Regional Court Munich ruled not only that the TCL devices infringe EP 25 59 245, but also that TCL had shown itself as unwilling to accept a FRAND licence during negotiations (case ID: 21 O 414o/21). However, GE has not enforced the judgement so far.
The patent protects a video coding which uses multi-tree sub-divisions of images. It is part of the HEVC/H.265 standard. At the end of January, the Federal Patent Court in Germany had upheld EP 245 in a nullity action, which TCL had brought against the defendant.
Vossius partner Andreas Kramer is representing TCL in the proceedings. Of the Regional Court’s ruling, he said, “TCL has already appealed the judgment to the Higher Regional Court of Munich, combined with a motion to stay potential enforcement of the judgment due to obvious errors in the court’s reasoning.”
Now, the 6th Civil Senate under presiding judge Lars Meinhard will decide on both motions. Meinhard took over the senate at the beginning of 2022. According to JUVE Patent information, he has not yet been involved in any SEP proceedings where he would have ruled on FRAND issues.
Even by improving its offer, TCL was apparently unable to convince the Munich judges of its willingness to take a licence. TCL had finally submitted offers during the negotiations. However, this, along with TCL’s arguments, had failed to convince the judges that Access Advance’s offer was discriminatory.
The Munich judges thus continue to implement strict requirements for the behaviour of implementers concerning FRAND licences, as set out in the Federal Court of Justice’s rulings in Sisvel vs. Haier.
For example, if the implementer complains that an SEP holder’s offer is discriminatory, it must provide concrete evidence. In turn, the SEP holder must be regarded as unwilling to provide a licence if it constantly insists on discriminatory or arbitrary conditions.
The judgment could indicate that, in the future, the Regional Court Munich will examine SEP holder offers more closely under the stipulation to closely examine discrimination.
On the other hand, the implementer could argue that the SEP holder’s offer is not FRAND, because it is inferior to offers that the SEP holder has made to competitors. In this instance, according to the Munich judges, the holder must be prepared to conclude a licence on these terms.
In the future, the Munich judges apparently also want to take a new view on hold-out behaviour. This means they could also consider the request for information from the SEP holder, or the repeated disputing of claims and pleading lack of knowledge (“Bestreiten mit Nichtwissen”) over a longer period of time, as proof of hold-out.
The judges did not address whether Access Advance’s new licensing model complies with FRAND principles. Last year, the Access Advance licensing pool suffered a bitter defeat in the dispute with Vestel. In January 2022, the Regional Court Düsseldorf declared the member licences to be non-FRAND.
Its reasoning was that implementers were paying licence fees to both the MPEG LA pool and Access Advance. According to the latter, the pool changed this practice after the ruling. Both pools license HEVC patents, although MPEG LA is offering its licence at a lower price than Access Advance. While the patents partially overlap, TCL is not a licensee of MPEG LA.
GE’s lawsuit is one of six filed by Access Advance pool members against TCL at Munich Regional Court. Dolby sued over EP 27 77 270 and EP 02 77 269 (case ID: 21 O 4139/21), while ETRI sued over EP 27 23 078 (case ID: 21 O 4141/21).
In addition, IP Bridge sued over EP 32 88 261 (case ID: 21 O 8819/21), Mitshubishi sued over EP 27 20 468 (case ID: 21 O 4136/21) and Philips sued over EP 29 50 544 (case ID: 44 O 6966/21).
In mid-February, the Munich Regional Court decided also to stay the Dolby and Etri lawsuits and wait for a decision from the Federal Patent Court concerning the validity of the patents-in-suit. The court expects these in March and July, respectively.
In May, the Regional Court Munich will hear the lawsuits filed by IP Bridge and Mitsubishi. The court had also stayed Philips’ lawsuit after the Federal Patent Court struck down the patent-in-suit in the first instance. There are no related lawsuits in other European countries.
At the beginning of the year, the two Hamburg partners Volkmar Henke and Tilman Müller announced their move from Eisenführ Speiser to open an office in Hamburg for Bardehle Pagenberg. After a period of uncertainty regarding the date of their departure, the two partners left on 1 March.
Thus, Müller and Henke won one final victory for their former firm.
Under the new brand, both lawyers and the patent attorneys at Eisenführ will continue to cooperate in the ongoing proceedings for Access Advance. Eisenführ has a long-standing relationship with Access Advance, as well as with the Via Licencing patent pool. The latter has also filed suit against TCL.
In this case, too, a mixed team around Düsseldorf partner Andreas Kramer from Vossius & Partner represented TCL. Via Licencing pool member Dolby brought the lawsuit. However, TCL has worked with CMS Hasche Sigle and Klaka in lawsuits brought by other pool members.
This time, however, a mixed team from Vossius handled the entire defence against the actions brought by the six Access Advance pool members: Dolby, Etri, GE, IP Bridge, Mitsubishi and Philips.
For GE Video Compression
Eisenführ Speiser (Hamburg): Volkmar Henke, Tilman Müller (both lead), Stefan Wiethoff, Christoph Fehn (both patent attorneys, Munich)
In-house (Access Advance): Vic Souto, Kim Chotkowski
Vossius & Partner (Munich): Andreas Kramer (lead); Zhuomin Wu, Ju Min Kim (patent attorney; all partner); counsel: Hannes Obex, Philipp Widera; associates: Leonie Dißmann-Fuchs, Andreas Ditler , Julian Fährmann (both patent attorneys)
Munich Regional Court, 21st Civil Chamber
Georg Werner (presiding judge), Anna-Lena Klein, Sebastian Benz