Orange-Book-Standard (BGH, KZR 39/06, 2009)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Federal Court of Justice holds that a defendant sued for an injunction may plead that the patentee abuses a dominant position by refusing a non-discriminatory licence (paras 22 to 28), on two cumulative conditions: an unconditional licence offer by which the offeror remains bound, and conduct as a licensee, by rendering accounts and paying or depositing the royalties (paras 29 to 36). The appeal fails for want of accounts and deposit (para 41). The defence thus becomes a defence on the merits in infringement proceedings, reserved for an infringer that already behaves as a licensee.

Facts and procedure

The claimant owns European patent 325 330, filed on 17 January 1989 and lapsed during the proceedings, for a recordable optical data carrier (paras 1 and 2). Defendants 3 to 8, companies and managers, manufacture or distribute CD-R and CD-RW discs in Europe (para 4). The Mannheim Regional Court (7 O 35/02) granted an injunction, accounts, destruction and a declaration of liability in damages; the Karlsruhe Higher Regional Court (6 U 174/02) essentially upheld it (para 5). The appeal court found that every maker of CD-R and CD-RW discs must comply with the “Orange Book” specifications and therefore uses the patent, licensing of which is a distinct market dominated by the claimant; no discrimination was shown, however, as no licensee paid only the 3 % of the net price the defendants considered appropriate (para 20).

The applicable law

The Court applies Article 82 EC, section 20(1) of the Act against Restraints of Competition (GWB) and section 242 of the Civil Code (BGB) against an injunction claim under section 139(1) of the Patent Act (para 19). It resolves a question left open in Standard-Spundfass, between supporters of the defence, relying on the dolo petit maxim and section 242 BGB, and opponents, relying in particular on Article 31 TRIPS (paras 23 to 25).

Question

May a defendant facing an injunction claim rely on a right to a licence derived from the prohibition of abuse of dominance and, if so, on what conditions?

Decision

The Court sides with the supporters of the defence (para 26). Where a dominant undertaking refuses without justification a non-discriminatory licence offer, the injunction claim is itself abusive, since it blocks the market access the licence was meant to open, and a court may not order conduct prohibited by competition law (para 27). Article 31 TRIPS does not stand in the way (para 28).

Two conditions apply (para 29). The licence seeker must have made an unconditional offer and remain bound by it (paras 30 and 31); an offer conditional on a judicial finding of infringement is not enough (para 32). If already using the invention, it must behave as if the offer had been accepted: render regular accounts and pay the royalties, or deposit them under section 372 BGB, waiving withdrawal (paras 33 and 36). The amount is capped at that of a lawful contract, the burden of proof lying on the seeker (paras 37 and 38). Where the royalty demanded seems abusive, or the patentee refuses to quantify it, the offer may leave the royalty to the patentee’s equitable determination under section 315 BGB, provided a sufficient sum is deposited (paras 39 and 40).

Here, no accounts or deposit had been found, even for the royalties the defendants themselves regarded as due, so the defence fails (para 41). Damages and destruction are upheld (paras 42 to 45) and the appeal is dismissed.

Key points for practice

• The competition law compulsory licence defence is pleaded in the infringement action, without a separate action for the grant of a licence (paras 27 and 28).
• The defendant may contest infringement first, but its licence offer may not depend on the outcome of that dispute (paras 32 and 35).
• The offer may leave the royalty to the patentee’s equitable determination, sparing the seeker from committing to an uncertain rate (paras 39 and 40).
• Practical point: the defence has to be built before the hearing, through an unconditional written offer, regular accounts and a deposit at least equal to the amount the defendant itself considers due (paras 33, 36 and 41).

Provisions applied

Treaty establishing the European Community

Article 82 EC

TRIPS Agreement

Article 31

National law

sections 9, 139 and 140a PatG; section 20(1) GWB; sections 229, 242, 293, 298, 315 and 372 BGB

Case law cited

BGH, BGHZ 160, 67 (Standard-Spundfass); BGH, 3 April 2007, X ZR 36/04; BGH, 19 May 2005, X ZR 188/01, GRUR 2005, 749 (Aufzeichnungsträger); BGH, BGHZ 148, 221 (SPIEGEL-CD-ROM); OLG Karlsruhe, InstGE 8, 14; OLG Düsseldorf, InstGE 2, 168; OLG Dresden, GRUR 2003, 601; LG Düsseldorf, WuW/E DE-R 2120

Prepared by Dhenne Avocats from the text of the decision (WIPO Lex, German text), consulted on 11 October 2026. Only the official text is authoritative.