“6.1 When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner to give within three months an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory (“FRAND”) terms and conditions under such IPR to at least the following extent: ● MANUFACTURE, including the right to make or have made customized components and sub-systems to the licensee's own design for use in MANUFACTURE; ● sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED; ● repair, use, or operate EQUIPMENT; and ● use METHODS. The above undertaking may be made subject to the condition that those who seek licences agree to reciprocate.”
“38 […] UP LLC and UP were required to give FRAND undertakings and they each did so shortly after the SEPs in issue were transferred to them. It is true that UP is not a member of ETSI but it is just as constrained by the FRAND undertaking it has given as it would be if it were such a member and the judge was right to hold that, as a practical matter, any third party may require UP to grant it a licence under the SEPs on FRAND terms.”
“1. the consent of the party assuming the obligation 2. capacity to contract 3. a definite object which is the subject matter of the obligation 4. a cause licit”
“In this regard I note that the declarant may choose to make the declaration: (i) in respect of either IPR relating to contributions made to the standard setting process by the declarant or any of its IPR; (ii) in relation to specific ETSI standards / specifications or all of them; and (iii) subject to a condition of reciprocity. It is also open to the declarant to inform ETSI that it does not wish to make its IPR available for licensing on FRAND terms at all.”
“In accordance with Clause 4.1 of the ETSI IPR Policy the Declarant and/or its AFFILIATES hereby informs ETSI that it is the Declarant and/or its AFFILIATES’ present belief that the IPRs disclosed in the attached IPR Information Statement Annex may be or may become ESSENTIAL in relation to at least the ETSI work Item(s), STANDARD(S) and/or TECHNICAL SPECIFICATIONS identified in the attached IPR Information Statement Annex.” (underlining mine) Statement Annex.”
“IPR LICENSING DECLARATION In accordance with Clause 6.1 of the ETSI IPR Policy the Declarant and/or its AFFILIATES hereby irrevocably declares the following (check one box only, and subordinate box, where applicable): To the extent that the IPR(s) disclosed in the attached IPR Information Statement Annex are or become, and remain ESSENTIAL in respect of the ETSI Work Item, STANDARD and/or TECHNICAL SPECIFICATION identified in the attached IPR Information Statement Annex, the Declarant and/or its AFFILIATES are prepared to grant irrevocable licences under this/these IPR(s) on terms and conditions which are in accordance with Clause 6.1 of the ETSI IPR Policy. This irrevocable undertaking is made subject to the condition that those who seek licences agree to reciprocate (check box if applicable). The Declarant and/or its AFFILIATES are not prepared to make the above IPR Licensing Declaration (reasons may be explained in writing in the attached IPR Licensing Declaration Annex). The construction, validity and performance of this IPR information statement and licensing declaration shall be governed by the laws of France. SIGNATURE By signing this IPR Information Statement and Licensing Declaration form, you represent that you have the authority to bind the Declarant and/or its AFFILIATES to representations and commitments provided in this form. [signature etc] ___________” This irrevocable undertaking is made subject to the condition that those who seek licences agree to reciprocate (check box if applicable). SIGNATURE [signature etc] ___________”
“If Professor Fauvarque-Cosson’s analysis is correct, the same Licensing Form would be considered as: (i) the offer made by ETSI; (ii) the acceptance by the IPR holder; and (iii) setting out 146. the key terms of future contracts to be formed with interested third parties. As a matter of French contract law this plurality is unconvincing and does not allow for the identification of the various different components of those separate legal operations: a first contract between ETSI and an IPR holder, and a second between the IPR holder and a third party implementer.”
“The object of the comparability exercise, in this as in any other branch of the law, is to find the closest possible parallel. If there is an exact parallel, there is no point in looking any further. If there are slight differences, an allowance may be made. But once you have found your comparables, whether one or more, which enable you to arrive at the appropriate figure, it would surely be erroneous to modify that figure by reference to other cases which are not truly comparable at all, so as to bring the case into line with a predetermined range. This was, with great respect, the mistake which the hearing officer made.”
“The differences are not that great on the unpacking, in the context of the exercise. […] And, indeed, given the uncertainty of unpacking cross licences. It's not as if one number is strong and another it is weak. They are -- they are all somewhat fragile when you're unpacking a cross licence.” and “But I'm just signalling that when I say not sensitive that's partly the numbers don't move very much, but it's also partly a recognition that the numbers themselves are inherently uncertain.”
“The exercise was overseen by Dr Kakaes and a team of engineers from Thomson Reuters. The evaluators were not informed of the identity of the ultimate client (i.e. Huawei) or of the opposing party in the dispute for which the analysis was originally prepared (i.e. Ericsson), so as to preserve neutrality.”
“31. Accordingly, the second stage of the study was to analyse the 11,384 Group 1 patent families to seek to determine whether or not a patent that was declared essential to ETSI is, in fact, “essential”
“To be more precise, the reviewers determined that the declared standard specification(s) did not provide a clear reason to rule out the patent as being essential.”
“The “non-discriminatory” principle of FRAND, however, is not widely agreed upon. The standard economic definition would mean that all users pay the same royalty – i.e., there is literally no discrimination on price or any other terms. Some economists have proposed that it means only that all firms which use the standard be able to obtain a license, with no constraint as to the terms of the license. That of course allows different firms to pay different royalties but still have access to use of the patent. […] ‘Non-discriminatory’ in the context of an SSO setting standards for competing firms can be interpreted to mean that all implementers of the standard should be offered licenses to the technology and all ‘similarly situated’ firms should pay the same royalty rate.”
“144 Therefore, in order for the conditions for applying subparagraph (c) of the second paragraph of Article 82 EC [now Art 102] to be met, there must be a finding not only that the behaviour of an undertaking in a dominant market position is discriminatory, but also that it tends to distort that competitive relationship, in other words to hinder the competitive position of some of the business partners of that undertaking in relation to the others (see, to that effect, Suiker Unie, paragraphs 523 and 524). 145 In that respect, there is nothing to prevent discrimination between business partners who are in a relationship of competition from being regarded as being abusive as soon as the behaviour of the undertaking in a dominant position tends, having regard to the whole of the circumstances of the case, to lead to a distortion of competition between those business partners. In such a situation, it cannot be required in addition that proof be adduced of an actual quantifiable deterioration in the competitive position of the business partners taken individually.” 506.Then the CJEU turned to the CFI’s decision on the facts, as follows: “146 In paragraphs 237 and 238 of the judgment under appeal, the Court of First Instance found that travel agents in the United Kingdom compete intensely with each other, and that that ability to compete depended on two factors, namely 'their ability to provide seats on flights suited to travellers' wishes, at a reasonable cost' and, secondly, their individual financial resources. 147 Moreover, in the part of the judgment under appeal relating to the examination of the fidelity-building effect of the bonus schemes at issue, the Court of First Instance found that the latter could lead to exponential changes in the revenue of travel agents.”
“148 Given that factual situation, the Court of First Instance could, in the context of its examination of the bonus schemes at issue having regard to subparagraph (c) of the second paragraph of Article 82 EC, move directly, without any detailed intermediate stage, to the conclusion that the possibilities for those agents to compete with each other had been affected by the discriminatory conditions for remuneration implemented by BA. 149 The Court of First Instance cannot therefore be accused of an error of law in not verifying, or in verifying only briefly, whether and to what extent those conditions had affected the competitive position of BA's commercial partners. The Court of First Instance was therefore entitled to take the view that the bonus schemes at issue gave rise to a discriminatory effect for the purposes of subparagraph (c) of the second paragraph of Article 82 EC. The second part of the fifth plea is therefore unfounded.”
“16. Ericsson describes its motive in transferring part of its portfolio to Unwired Planet as being to enable it fairly to earn more revenue. Its concern is that while the patents remain within Ericsson’s very large portfolio, its ability to earn a fair revenue in respect of those inventions is hindered. Once the patents are transferred, Unwired Planet will be able to obtain fairer and therefore greater remuneration for them than Ericsson was able to obtain while still ensuring that any royalties collected in respect of essential patents are FRAND.”
“- first, the tying and tied products are two separate products; - second, the undertaking concerned is dominant in the market for the tying product; - third, the undertaking concerned does not give customers a choice to obtain the tying product without the tied product; and - fourth, the practice in question forecloses competition.”
“44 … ZTE has said it is willing to take a FRAND licence on any patent found valid and infringed. In my judgment, a defendant accused of patent infringement by a patentee who claims to have a standards essential patent is and must be entitled to say, “I wish to know if this patent is valid or infringed or not before I take a licence”
“Any abuse by one or more undertakings of a dominant position within the internal market or in a substantial part of it shall be prohibited as incompatible with the internal market in so far as it may affect trade between Member States. Such abuse may, in particular, consist in: (a) directly or indirectly imposing unfair purchase or selling prices or other unfair trading conditions; (b) limiting production, markets or technical development to the prejudice of consumers; (c) applying dissimilar conditions to equivalent transactions with other trading parties, thereby placing them at a competitive disadvantage; (d) making the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.” (a) directly or indirectly imposing unfair purchase or selling prices or other unfair trading conditions; (b) limiting production, markets or technical development to the prejudice of consumers; (c) applying dissimilar conditions to equivalent transactions with other trading parties, thereby placing them at a competitive disadvantage; (d) making the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.”
“…a position of economic strength enjoyed by an undertaking which enables it to prevent effective competition being maintained on the relevant market by giving it the power to behave to an appreciable extent independently of its competitors, customers and ultimately of its consumers.”
“57. However, it should be noted that the referring court did not state in the order for reference that it had arrived at its finding that the SEP-holder in the present case unquestionably holds a dominant position after it had examined all the circumstances and the specific context of the case. I share the view expressed by the Netherlands Government that the fact that an undertaking owns an SEP does not necessarily mean that it holds a dominant position within the meaning of Article 102 TFEU, and that it is for the national court to determine, on a case-by-case basis, whether that is indeed the situation. 58. Given that a finding that an undertaking has a dominant position imposes on the undertaking concerned a special responsibility not to allow its conduct to impair genuine competition, that finding cannot be based on hypotheses. If the fact that anyone who uses a standard set by a standardisation body must necessarily make use of the teaching of an SEP, thus requiring a licence from the owner of that patent, could give rise to a rebuttable presumption that the owner of that patent holds a dominant position, it must, in my view, be possible to rebut that presumption with specific, detailed evidence.”
“239 As noted, the dominant position referred to in Article 102 TFEU relates to a position of economic strength enjoyed by an undertaking which enables it to prevent effective competition being maintained on the relevant market by affording it the power to behave to an appreciable extent independently of its competitors, its customers and ultimately of consumers. 240 Moreover, the General Court has previously held that in a situation where a supplier controls over 90% of a market, the presence of one or more large customers is not capable of affecting the dominant position of the supplier where the demand side is composed of a number of customers that are not equally strong and which cannot be aggregated.”
“Buyer power may not, however, be considered a sufficiently effective constraint if it only ensures that a particular or limited segment of customers is shielded from the market power of the dominant undertaking.”
“From a methodological viewpoint obligations flowing from existing regulation, other than the specific regulation imposed on the basis of SMP status in the analysed market, must be taken into consideration when assessing the ability of an undertaking to behave independently of its competitors and customers on that market. In the Commission’s view, this could only be otherwise where it is uncertain whether the regulation concerned will continue to exist throughout the period of the forward-looking assessment.”
“…in view of the large number of SEPs composing a standard such as that at issue in the main proceedings, it is not certain that the infringer of one of those SEPs will necessarily be aware that it is using the teaching of an SEP that is both valid and essential to a standard”
“It was obvious to me that we were being kept in limbo, by design or by inefficient process, by all of the potential licensees we were attempting to negotiate with. They did not want us to litigate, and so they did not refuse to negotiate altogether, but they also did not want to take a license and were deploying every tool available to ensure that no license would be concluded. … Many potential licensees (some more than others) were seemingly engaging in delay tactics and we realized that it would be very difficult if not impossible to progress beyond technical discussions and to start negotiating the terms of a license without litigation. Where conversations did move beyond technology and into pricing, we were expected to bid against ourselves, receiving very few counter-offers. Those we did receive were derisory and the parties remained poles apart with respect to the rates each thought were FRAND. …”
“…Validity and infringement are tried separately in Germany but an injunction can be granted at the end of the infringement trial. The injunction will not normally be stayed unless the Court considers that there is a high probability that the patent will be held invalid, although it is possible for other measures such as appeal to be taken to avoid an immediate injunction.”
“These are plainly abusive levels, which would pose a genuine threat to Huawei’s profitability and competitiveness [referring to evidence from Mr Zhang and Mr Lasinski], advantaging Ericsson not merely (a) from its share of the inflated royalties but also (b) from the adverse impact on Huawei as a competitor in the downstream infrastructure markets; and advantaging Samsung for the reasons explained above. A significantly supraFRAND rate, if charged by UWP, would stand to distort competition to the benefit of Ericsson. Given the low rate which Samsung is now known to be paying, competition would also be distorted in favour of Samsung”
“This is an indivisible worldwide arrangement. The royalty rates sought reflect a blend of the strength, technical diversity and size of the portfolio across the world. It is not an offer for individual country or technology licenses. However, Unwired Planet is willing to discuss any such arrangement upon request.”