Sisvel vs. Haier Confirmed, Redefining SEP Implementer Obligations: Webinar to Discuss Decision and Its Many Implications
A recent series of BGH decisions has radically redefined the obligations of SEP implementors in patent negotiations as well as the remedies and damages available to patent owners when implementors deploy hold-out strategies and other delaying tactics. Sisvel is hosting a free webinar on December 15 at 5:30 CET (11:30 AM EST) to discuss the cases and their implications.
Overview: A recent series of BGH decisions has radically redefined the obligations of SEP implementors in patent negotiations as well as the remedies and damages available to patent owners when implementors deploy hold-out strategies and other delaying tactics. Sisvel is hosting a free webinar on December 15 at 5:30 CET (11:30 AM EST) to discuss the cases and their implications.
Background and Key Findings
On November 25, the German Federal Supreme Court (BGH) confirmed its May decision in the parallel Sisvel vs. Haier patent infringement case, marking the fourth victory in 2020 for Sisvel at the BGH in its dispute with Haier in Germany and ending the litigation between the companies. While the written reasoning will take several weeks to release, the court is expected to ratify the key findings from the May ruling, which include that:
The infringer “must clearly and unequivocally declare his willingness to conclude a license agreement with the patent holder on reasonable and non-discriminatory terms and must also subsequently participate actively in the license agreement negotiations in a target-oriented manner.” Failure to do so provides exposure to injunctive relief; Factors include, for example, whether the infringer continuously asks for additional technical information, particularly information that is otherwise available. Potential licensees shall, for example, retain experts to analyze the license offer.
Defenses based on regional license counteroffers to globally based license offers do not pass muster. - The definition of FRAND does not require the same rate for all licensees. - An infringer who refuses to meet his FRAND obligations loses the ability to rely on FRAND to import license terms.
The highest court in Germany also denied the request by Haier to refer the case to the European Court of Justice, setting clear guidance for the German judicial system going forward. These findings confirm that the negotiation between the patent owner and implementer is a two-way street and clarify the availability of remedies when implementers don’t negotiate in good faith and deploy hold-out strategies.
Our Distinguished Panel and Agenda
Sisvel is hosting a free webinar to discuss the significance of the Sisvel ./. Haier decisions as precedents in the German judicial system, what this will mean for the lower courts, and the impact the decisions will have at a global level. The webinar is scheduled for December 15 at 5:30 CET (11:30 AM EST).
The speakers and agenda of the webinar is as follows:
Florian Cordes, Sisvel, Head of European IP Litigation, will introduce the facts of the case.
Prof. Dr. Christian Rohnke, from Rohnke Winter, who represented Sisvel in these proceedings, will discuss the findings and the takeaways from the final hearing.
Sir Robin Jacob, a former senior patent judge in the United Kingdom, and current Sir Hugh Laddie Chair in Intellectual Property Law at University College London, will discuss the implications of Sisvel v. Haier on policy and case law in the European Union.
Garrard R. Beeney, Partner, Sullivan and Cromwell, and co-head of Sullivan and Cromwell’s Intellectual Property and Technology Group, will discuss the implications of Sisvel v. Haier on policy and case law in the United States.
Mattia Fogliacco, President at Sisvel Group, will moderate the discussion.
During the live event, the speakers will answer moderated questions from the audience.
Click here to register for the webinar. All Registrants will be supplied with a limited-time link to watch the archived version.