German Federal Court of Justice to harmonise approach to FRAND

The German Federal Court of Justice has confirmed the validity of the standard essential patent EP 08 52 885 owned by Sisvel. This paves the way for the first FRAND decision by the Federal Court of Justice following the CJEU's ruling in the Huawei vs. ZTE case. Now the court can hear the infringement case, including FRAND.

11 March 2020 by Christina Schulze

Tim Crummenerl The 10th Civil Senate, which is responsible for patents at the German Federal Court of Justice, has appointed Tim Crummenerl as its new judge ©BGH

Under presiding judge Klaus Bacher, the German Federal Court of Justice has upheld Sisvel’s SEP EP 08 52 885 (case ID: X ZR 44/18). The senate thereby confirms the decision of the German Federal Patent Court.

However, the patent has already expired. It protects a technology that is used in mobile communication to establish a data call. In the oral hearing, the representatives demonstrated how the technology can be used to increase the efficiency of a connection.

Désirée Heintz

Desiree Heintz

Confirmation of EP 885 paves the way for a further ruling from the German Federal Court of Justice in the infringement case, which could bring harmonisation to FRAND cases (case ID: K ZR 36/17). The court is due to hear the infringement case on 31 March.

Recently, different decisions from the regional and higher regional courts in Germany have unsettled mobile phone companies. Currently, there is no consensus on interpretation of FRAND rules derived from the CJEU’s decision in Huawei vs. ZTE.

Interpreting FRAND

The German Federal Court of Justice ruling in Sisvel vs. Haier could be the first highest instance ruling on the interpretation of FRAND. As such, it is hoped it will send a signal throughout Europe.

Marco Scheffler, German Federal Court of Justice

Marco Scheffler

However, there are two more FRAND cases currently pending at the Federal Court of Justice. These are an appeal in Philips vs. Wiko, and the on-going Unwired Planet vs. Huawei. But the latter is currently on hold due to settlement negotiations.

In the parallel UK proceedings, it is currently uncertain whether the highest court will issue a verdict. This is because both parties are in the midst of settlement negotiations.

The Supreme Court heard the appeal in the Unwired Planet vs. Huawei case in November 2019 (case ID: UKSC 2018/0214). Here, the UK judges are examining whether a UK court may order a global licence on the basis of a UK patent in conjunction to setting a licence rate.

This was the ruling of the UK High Court under presiding judge Colin Birss. The judgment was largely upheld by the Court of Appeal. However, it could be the case that Unwired Planet and Huawei settle before the judgment is released.

Patent experts are unsure what will happen. Under UK law, even if the parties withdraw the case, the Supreme Court can still decide on legal issues. This is due to the fundamental importance of cases heard at the highest instance. However, whether the court issues an overall ruling depends on the parties, as well as the type of agreement reached.

Side of the attorneys

At yesterday’s hearing in Karlsruhe, Federal Court of Justice lawyer Christian Rohnke represented Sisvel. Patent attorney Désirée Heintz from Eisenführ explained the technical details. Eisenführ has a long-standing client relationship with Sisvel.

Around two years ago, Sisvel added Düsseldorf law firm Arnold Ruess to its panel. The latter recently led a dispute against Hisense, which both parties ended for unknown reasons. Furthemore, Sisvel retains Quinn Emanuel Urquhart & Sullivan, and Hengeler Mueller, for litigation.

Rainer Viktor, Vossius & Partner, German Federal Court of Justice

Rainer Viktor

Rainer Viktor, patent attorney at Vossius & Partner, represented the interests of client ZTE on the plaintiff side. However, the infringement case on 31 March does not involve ZTE. The Chinese company regularly cooperates with the patent attorneys of Vossius & Partner in its disputes, most recently against MPEG LA.

The Berlin-based mixed IP law firm Gulde has good relations with China, especially concerning patent applications. However, as yet Haier has not retained the firm for patent applications. On the other hand, it has retained Gulde to represent the company in court.

For Sisvel
Rohnke Winter (Karlsruhe): Christian Rohnke (lawyer admitted to the Federal Court of Justice)
Eisenführ Speiser (Hamburg): Désirée Heintz, Jochen Ehlers (patent attorneys), Volkmar Henke
Arnold Ruess (Düsseldorf): Cordula Schumacher, Arno Riße, Marina Wehler

For Haier
Gulde & Partner (Berlin): Sönke Lorenz, Marco Scheffler, Dr. Jens Glienke (patent attorneys), Jörg Grzam

Vossius & Partner (Munich): Rainer Viktor, Christian Sandweg (patent attorneys)
Taylor Wessing (Munich): Dietrich Kamlah, Michael Schächinger

German Federal Court of Justice, 10th Civil Senate
Klaus Bacher (presiding judge), Hermann Deichfuß, Helga Kober-Dehm, Patricia Rombach, Hartmut Rensen

Update: The German Federal Court of Justice has posponed the hearing in the infringement and FRAND case (ID: K ZR 36/17) to 5 May 2020.