ドイツSEP特集（２）Nokia v. Daimler (Dusseldorf LG)口頭弁論終了 Hearing Summary (by Dr. C. Augenstein) 2020 Sep.03

アウゲンシュタインドイツ弁護士から９月３日に終了したNokia v. Daimlerのデュッセルドルフ地裁（LG)口頭弁論についてまとめを頂いた。今ホットなConnected carを巡る係争で、判決は１１月１２日言渡し予定。注目はライセンスを契約をOEMではなく、Tier1以下にもみとめるべきという自動車業界の主張、いわゆるLicense-To-All(LTA)への判断の行方。解説を原文のまま掲載する。判事はJudge Klepsch。LTAを認めながら、合わせてSEP権利者のFair returnを認めるという今後への流れが見える。なお、ファーウエイはダイムラーへのチップ供給者として裁判に補助参加している。

I. License to all vs. OEM-level licensing（LTA対OEMでのライセンス）

While Nokia has sued only Daimler for patent infringement, several suppliers from the automobile sector have joined the proceedings as interveners on Daimler’s side. Daimler has raised the FRAND objection, claiming that Nokia’s license offer is not FRAND. The interveners have raised their own FRAND objection, claiming that Nokia should have offered them a license on FRAND terms which would cover the components sold to Daimler. As defendant, Daimler has also raised this intervener’s defense on its own behalf.

Judge Klepsch explained that Nokia’s obligations as SEP owner in the present case originate from the FRAND undertaking required by ETSI’s IPR policy. In the Court’s view, the IPR Policy requires that the obligation to license on FRAND terms includes the obligation to provide such a license to any interested licensee.

Nokia objected with two principal arguments. Nokia claimed, first, that component-level licensing simply does not correspond to common industry practice, as the mobile communications sector has always licensed at the end of the value chain. Nokia further argued, second, that their licensing approach is also more efficient than licensing suppliers.

The Court rejected both arguments. Judge Klepsch pointed out that even if OEM-level licensing were relatively common in the mobile phone sector, in the automobile industry component-level licensing is the traditional approach. Therefore, there is no single industry practice favoring either approach. The Court also disagreed with the efficiency argument. While there are many car manufacturers and each brand would require its own license, 70% of all chipsets in question are manufactured by only five chip manufacturers. As a result, component-level licensing may even be easier to handle than OEM licensing.

Therefore, the Court leaned towards a license-to-all approach, requiring Nokia to also issue FRAND offers to automobile suppliers.

The Court did, however, recognize that an SEP owner has an interest to receive a fair return on its investment, making licensing at the end of the value chain more interesting than licensing suppliers. But this price difference, Judge Klepsch explained, could potentially be considered in working out the terms of the license, no matter on what level that license is issued, thereby allowing the SEP holder to realize fair returns even on a component level.

This approach appears to be in line with a paper authored in 2019 by Judge Thomas Kühnen, Presiding Judge at the Second Senate of the Higher Regional Court Düsseldorf, the Regional Court’s appeals court. In his paper, Judge Kühnen argued that while an SEP holder is obligated to license its portfolio on any level of the value chain, fair royalties would still need to consider the complete value chain and should not be reduced to the value of a particular component.

II. Potential Referral to CJEU （CJEUへの付託）

Even though the Court has set a date for rendering a final judgement, it may still refer several questions relevant to the outcome of the proceedings to the Court of Justice of the European Union (CJEU). This would particularly be relevant for the question of whether or not an SEP owner has a license-to-all obligation. Should the Court refer this issue to the CJEU, it would not hand down a judgement before the CJEU had decided on the referred questions.

In order to promote consistency in the application of EU law throughout the European Union, EU courts can refer questions of interpreting EU law to the CJEU. In the present case, the question of whether Nokia has acted in line with its FRAND obligations or not hinges on the Court’s interpretation of Art. 102 TFEU, and therefore on the correct interpretation of EU law. The CJEU had previously ruled in a FRAND matter in Huawei v. ZTE, but the question of a license-to-all obligation was not subject to that decision.

III. Supplier’s claim to a FRAND licensing offer

In his aforementioned paper, Judge Kühnen also theorized that since a FRAND undertaking includes an SEP owner’s obligation to provide a license to anybody who requests a license, a potential licensee would have an enforceable claim against that SEP owner to provide such a license.

Huawei, one of the interveners on Daimler’s side, put Judge Kühnen’s suggestion into practice when they launched a counterclaim against Nokia to issue a FRAND offer to Huawei. As Nokia rejected component-level licensing, no such offer was extended according to publicly available information.

Many had hoped that the Judge Klepsch would provide more insight into whether the Court agreed with Huawei’s claim. However, the Court has now separated Huawei’s counterclaim into new proceedings, docket number 4c O 53/20, without any substantial guidance on its potential outcome. The fact that the Court seems to be amicable towards a license-to-all approach does, however, suggest that Huawei’s action has the potential to succeed.

IV. Background

The proceedings between Nokia and Daimler are part of a plethora of infringement cases brought by Nokia and Sharp against Daimler before the Regional Courts of Düsseldorf, Munich and Mannheim.

In its latest judgement of 18 August 2020, the Regional Court Mannheim issued an injunction against the car manufacturer, rejecting Daimler’s FRAND defense and considering Daimler and the intervening suppliers as unwilling licensees. Unfortunately, the detailed reasoning of the Mannheim court is yet unpublished.

While the Regional Court Munich has not yet issued a decision on these questions, previous hearings indicated that Munich may reject the license-to-all approach. A judgement potentially covering this topic will be announced in a Sharp v. Daimler proceeding on 10 September 2020, court reference 7 O 8818/19.

Christof Augenstein, Lawyer-Partner,

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