Haier says Sisvel FRAND judgment is unconstitutional
Chinese electronics manufacturer Haier has filed a constitutional challenge to a landmark ruling in favour of patent pool operator Sisvel.
The judgment, issued in May by the Federal Court of Justice, was hailed by Sisvel and its legal team as a major victory for patent owners in Germany.
The court’s reasoning, published last month, set out new guidelines for what constitutes a “willing licensee” in negotiations over standard-essential patents (SEPs).
According to the judgment, Haier failed to indicate “clearly and unambiguously” that it was willing to take a licence on fair, reasonable, and non-discriminatory (FRAND) terms.
Haier’s legal representatives have now confirmed to WIPR that they have challenged the ruling at Germany’s Constitutional Court.
Haier argues that the judgment departs from the FRAND licensing rules set out by the Court of Justice of the European Union (CJEU) in 2015’s Huawei v ZTE judgment, which emphasises the obligation on the SEP owner to submit a FRAND-compliant offer.
The constitutional complaint, if upheld, could lead to the CJEU being asked to weigh in on the case.
A member of Haier’s legal team told WIPR at the time that the Federal Court of Justice’s ruling would extend “overprotection” for patent owners in licensing negotiations, and negatively impact consumers.
According to Wolfgang Straub, a partner at Klaka who represented Haier, the decision was in line with “the German mainstream, which is already rather pro-patent owner”.
Conversely, Sisvel argues that the judgment is a welcome development in German court’s FRAND approach, and brings Germany in line with courts in England. Specifically, the court endorsed the view of Justice Colin Birss, who wrote in his 2017 decision in Unwired Planet v Huawei that a “willing licensee must be one willing to take a FRAND licence on whatever terms are in fact FRAND”.
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