Like Prudence, the heroine of Rome Adventure, the Unified Patent Court (UPC) gives us a lesson in polyamory in its first FRAND decision (Panasonic v. Oppo), reminding us of its love for European law, but also, and above all, of its love for its own law (which includes an interpretation of European law). The decision thus lays the groundwork for the Court’s approach to FRAND licences by the UPC while reminding us how complex the interplay is between European law and “UPC” law (a kind of UFO applicable in certain Member States only).
Until recently there remained a degree of suspense as to the position the UPC would adopt on standard-essential patent (SEP) and FRAND licensing cases. The decision in Panasonic v. Oppo puts an end (in part) to that suspense: the UPC considers that it has jurisdiction to rule on FRAND terms, while holding, in this instance, that Oppo infringed a Panasonic patent essential to the 4G standard.
The background is familiar to anyone used to this kind of litigation. Panasonic Holdings Corporation (“Panasonic”) is the proprietor of a European patent (EP 2 568 724) protecting a radio communication device and method, declared essential to the 4G telecommunications standard by theETSI (the European Telecommunications Standards Institute). The patent was filed on 13 August 2008, claims priority from patents JP 2007211548 of 14 August 2007 and JP 2008025535 of 5 February 2008, and was granted on 17 December 2014. Guangdong Oppo Mobile Telecommunications Corp. Ltd. and its German subsidiary Orope Germany GmbH belong to the Oppo group (“Oppo”) and distribute products compatible with mobile telephones. From July 2019 onwards, Panasonic and Oppo entered into discussions on a FRAND licence agreement for Panasonic’s 4G patents. Those negotiations came to nothing. The patent proprietor accordingly brought an infringement action before the Mannheim local division of the UPC, alleging that Oppo infringed EP’724 by marketing 4G-compatible smartphones (such as the Oppo Find X5 Pro) and 4G-compatible smartwatches, and seeking interdictions provisoires, a product recall, damages and other remedies, while Oppo argued that there was no infringement, that the patent was invalid, and that Panasonic had not offered a licence on FRAND terms. Oppo also sought a court-determined FRAND licence by way of several alternative claims. The Court held the patent valid and infringed, before turning, essentially, to the FRAND defence. That defence, based on an alleged abuse of dominant position by the claimant, was held admissible but unfounded.
The UPC had already given decisions touching on FRAND licensing on several occasions, but only in the context of orders for the production of evidence. The decision reported here is the first to address the analysis of FRAND terms themselves. That is its essential contribution. We note first that the Court follows the requirements laid down by the CJEU in Huawei v. ZTE. It nonetheless refuses to refer questions to the CJEU and rejects the interpretations of FRAND licensing set out in the European Commission’s recent amicus curiae observations.
The Court first stresses the importance of following the CJEU’s guidance in Huawei v. ZTE, grounded in Article 102 TFEU. At the same time, it holds that there is no need to refer a question to the Court of Justice, because the UPC can resolve the questions before it by applying the CJEU’s established principles. Moreover, while restating its commitment to apply EU law and to respect its primacy, the Court recalls that the Commission’s views are not binding.
The Court holds that the SEP proprietor must notify the alleged infringer of the infringement and specify how the patent has been infringed. Sending a list of SEPs together with claim charts covering the patent or patents relied on is sufficient to satisfy that requirement. Conversely, the Court rejects the European Commission’s formalist approach, under which a formal infringement analysis is indispensable. The following arguments of the defendant are therefore rejected: (i) that the notification was insufficient for the infringement allegation to be intelligible; (ii) the European Commission’s formalist position, the Court holding here that the claim charts sent by Panasonic — which related to a Chinese patent with broader claims from the same family as the patent in suit — did refer to the patent.
La Cour a ensuite recherché si le contrefacteur présumé avait exprimé sa volonté de conclure un accord de licence on FRAND terms. In the Court’s view, the conduct of both parties must be assessed against the fundamental objective of the CJEU’s negotiation framework, namely the prompt conclusion of a FRAND licence agreement through focused negotiations conducted on an essentially private and autonomous basis. That framework requires an examination of the obligations to be met at each stage of the negotiations. Here, Oppo complied with step 2 (expressing a “willingness to licence”) by an email to Panasonic stating its willingness to take a licence, which was enough to open negotiations. Oppo did not, however, comply with step 4, in that it made no FRAND counter-offer. The Court held that the SEP proprietor must give a plausible explanation of why its offer complies with FRAND requirements, so that the alleged infringer can respond in good faith. How detailed those explanations must be will depend on the stage of the negotiations. Here, Panasonic set out the economic basis of a licence offer at a virtual meeting and then provided slides containing an analysis of the royalty mechanism. The defendants’ argument that this could not yet be regarded as an initial offer, because a written contractual offer would be required, was rejected. It was also held that Panasonic did not need to provide further information — in particular comparable licence agreements concluded with third parties — at the stage of the first presentation, since third-party licensees have a legitimate interest in preserving the confidentiality of their agreements. Panasonic’s offer was accordingly held to be FRAND, while Oppo made no counter-offer, so that there was no abuse of a dominant position and Oppo had infringed the patent.
In sum, the decision yields several major lessons: the UPC considers that it has jurisdiction to assess the FRAND terms of a licence; it applies the CJEU’s principles, but gives them its own interpretation; “willingness to licence” is assessed on an overall view of the parties’ conduct throughout the negotiation framework; the rights holder and the implementer must cooperate in order to reach a FRAND licence within the applicable time frame, through focused negotiations on an essentially private and autonomous basis, which leaves little room for formalist defences based on substantive FRAND requirements; the Court favours a global FRAND licence rate consistent with ordinary commercial practice; and national case law (here Dutch, English and German) informs the interpretation of the requirements laid down in Huawei v. ZTE, while the Orange-Book case law of the German Federal Court of Justice is rejected.
That is a great many lessons for a single decision, admittedly a long-awaited one. Let us return to the heart of our subject: Rome Adventure. The decision reported here is of course of great interest for those lessons. But they are, in a sense, only the consequences of far more interesting groundswells. First, the Court holds that it has jurisdiction to set FRAND terms. Yet it is plain from Article 32 of the UPC Agreement that setting such terms does not form part of its exclusive competences. Extending the Court’s jurisdiction as it has done here is therefore debated, and debatable: that jurisdiction is expressly limited, and it is hard to see what justifies such an extension. That said, it is often the instinct of any court to construe its own jurisdiction broadly. Which leads us to think that this decision is the first act of that kind of behaviour, the CCP forthcoming unitary patent could be another in future. Such behaviour, ordinary though it may be for any court, remains open to criticism — particularly here, given the European Union law which the Court claims to apply. The UPC, being assimilated to a national court, is subject to the obligation to interpret EU legislation consistently, here Regulation (EU) No 1257/2012 establishing unitary patent protection.
One should not, however, be taken in by what looks at first sight like a declaration of love addressed to EU law and to its highest court. First, the Court extends its jurisdiction beyond the UPC Agreement (which is questionable under EU law). Second, it refers to EU law while preferring not to make a preliminary reference to the CJEU, on the basis that it can interpret that law itself without the assistance of the higher court. Here too the behaviour is familiar: we have already seen it in the CJEU’s own attitude towards the European Court of Human Rights when interpreting the Charter of Fundamental Rights — the court applies the same principles, claims to be doing what the ECtHR does, but in reality offers different interpretations. In short, this is a declaration of independence, or a declaration of love for its own law (what we have therefore called “UPC” law), rather than a genuine declaration of love for EU law or for the CJEU. Logically enough, the Mannheim division refuses the request for a preliminary reference and builds its own law while claiming to follow the CJEU, when in reality it merely draws inspiration from it. That attitude is unsurprising, but it says a great deal about the future interplay between UPC law and EU law: preliminary references are likely to be rare, and the UPC likely to prefer building its own practice. Such an attitude could be a source of difficulty — think of national SPCs, already the subject of abundant and complex CJEU case law.
Ultimately, this Rome Adventure will surely lead to the construction of a distinct body of UPC law — all the more logically since it is not even certain that the UPC may refer questions to the CJEU, because it is not clear that it constitutes a court within the meaning of