Sisvel is claiming victory over Haier after a final German Federal Court of Justice ruling, which the patent pool operator said is a win for standard-essential patent (SEP) owners against “efficient infringement” strategies.
On May 5 the German Federal Supreme Court heard the arguments in the case between Sisvel and Haier regarding Sisvel’s request for injunctive relief for infringement of cellular standard essential patents (SEPs) owned by Sisvel. The decision rendered on May 5, marks the final decision on 6-year-long legal dispute between Sisvel and Haier.
After the second instance court had found that Sisvel's licence offer was not FRAND because Sisvel had offered different terms to another licensee, the Federal Court of Justice came to the opposite conclusion. Notably, the court requires the implementer to do more than declare a willingness to license, but to convey that the implementer is willing to license at FRAND terms, whatever such terms ultimately turn out to be. In the hearing, the judges made reference to the UK case in Unwired Planet v. Huawei. Apparently, Haier did not show the necessary willingness according to the court's standard.
Case Review
In 2014, Sisvel filed a motion against Haier Germany and Haier Europe Trading over infringement of two of its SEPs (case IDs: 4a O 93/14 and 4a O 144/14). Sisvel requested an injunction and damages. Düsseldorf Regional Court initially granted the motion in December 2015, despite Haier making a licence offer to Sisvel.
The case saw the first application of the principles of the CJEU ruling. The judges held that Haier did not submit its counter-offer in a timely manner. At the time, the court did not examine whether Sisvel’s licence offer was FRAND compliant.
In April 2017 the Higher Regional Court took a different view. Reasoning that the CJEU-set FRAND obligations apply to both parties (case IDs: I-15 U 65/15 and I-15 U 66/15), the court stayed the motions for injunction, recall and destruction.
The court found Haier to have infringed two Sisvel SEPs. The court ordered it to render account and damages. However, the judges saw no reason to prohibit Haier from selling its devices. Sisvel failed to offer Haier a FRAND-compliant licence, according to sources at the time.
The Higher Regional Court held that the competent court must examine whether both parties fulfilled FRAND obligations as set out by the CJEU. The court maintained this view in the main proceedings.
So far, only two SEP cases have ended up at the Federal Court of Justice in Karlsruhe. These are the Sisvel vs. Haier case, and the dispute between Unwired Planet and Huawei. At a very early stage there were rumours that the court will hear one of the cases in early 2020, therefore finally announcing its interpretation of the CJEU decision.
German courts have repeatedly interpreted FRAND rules, as set out by the CJEU in the Huawei vs. ZTE case, in different ways. The different approaches have caused considerable uncertainty among mobile phone companies.
Recently, it seemed likely that a ruling in the Unwired Planet vs. Huawei case would come before that of Sisvel vs. Haier. However, Unwired Planet’s parent company, Panoptis, is currently in intensive negotiations with Huawei to settle all disputes. Documents from the US proceedings show that the companies have already concluded an interim settlement. The parties have asked various courts to stay the proceedings.
