In the written decision in Sisvel International S.A. v.
Haier Deutschland GmbH, Germany's highest
court—the Cartel Senate of the German Federal Court of
Justice (“FCJ”)—held that, during
pre-suit negotiations, before a patent expires,
implementers of standard-essential patents (“SEPs”)
must clearly and unequivocally declare their willingness to
conclude a license agreement on fair, reasonable, and
non-discriminatory (“FRAND”) terms. If they do not, the
FCJ held, those implementers may not be able to hold an SEP holder
liable in Europe for anticompetitive behavior. The Court also
provided guidance on the obligations of an SEP holder to avoid
abuse of dominance charges, including in the context of making a
demand for a worldwide SEP portfolio license. Ultimately, this
decision provides important guidance to both patentees and putative
infringers about the steps necessary to avoid abuse of dominance
allegations and invoke rights to a FRAND license in Germany.
