2009-02-27_engl_LG_Mannheim_IPCom_HTC

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Case number:

7 O 94/08Pronounced on

27 February 2009

Stumpf, courtsecretary actingas court clerk

District Court of Mannheim

7th Civil Chamber

In the name of the people

Decision

In the legal dispute

IPCom GmbH &Co. KGrepresented by Komplementr GmbH, represented in turn by its directors BernhardFrohwitter and Christoph SchoellerZugspitzstrae 15, 82049 Pullach

- Plaintiff / Counter-Defendant -

Counsel:

Rechtsanwlte Frohwitter u. Koll., Possartstr. 20, 81679 Mnchen (B72907)

v

1. High Tech Computer Corporation

represented by its CEO, Peter Chou23 Hsin Hua Rd., Taoyuan 33 Taiwan, Taiwan

2. HTC Europe Co Limited7th Floor, Thames Central, Hatfield Road, Slough SL11QE, United Kingdom

- Defendant / Counter-Plaintiff -

Counsel for 1. and 2.:Rechtsanwlte White & Case LLP u. Koll., Jungfernstieg 51, 20354 Hamburg(83721.H080373.CRO.rme)

Intervener:

T-Mobile Deutschland GmbHLandgrabenweg 151, 53227 Bonn

Counsel:Rechtsanwlte Reimann u. Koll., Steinstrae 20, 40212 Dsseldorf (1645-08ss081027)

owing to patent infringement

the 7th

Civil Chamber of the District Court of Mannheim held in the oral hearing on 14November 2008 with the collaboration of
http://h080373.cro.rme/http://h080373.cro.rme/


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Presiding Judge at the District Court Vo

Judge at the District Court Gredner-Steigleider

Judge Schmidt

that:

I. The Defendants are ordered

1. under pain of penalty of up to 250,000.00 for each instance of

contravention - alternatively detention - or detention for up to six months, for

each repeat contravention detention for up to a total of two years, to cease

and desist

in the area of application of the German part of the European patent EP 1

186 189

from offering, placing on the market or using, or introducing or possessing

for the purposes stated, a subscriber station with respect to which accesscan be granted to at least one telecommunications channel which can be

used by several subscriber stations,

by way of means to receive information signals and whereby there is

provision for an evaluation unit to check with respect to the access

authorization data received with the information signals whether the access

authorization data includes an access threshold, to compare the thresholdwith a random number or a pseudo random number and to calculate,

depending on the result of the comparison, whether at least one subscriber

station has been approved for access to at least one telecommunications

channel.

2. to provide the Plaintiff with information regarding the extent to which

Defendant 1. has committed the acts described under 1. since 13 April2009 stating


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a. the individual supplies, broken down into supply amounts, times and

prices including type descriptions and the names and addresses of

the customers,

b. the individual offers, broken down into supply amounts, times and

prices including type descriptions and the names and addresses ofthe recipients of the offers,

c. the advertising carried out, broken down into advertising media, their

circulation figures, distribution period and area of distribution,

d. the production costs, broken down into the individual cost factors

and the profit generated,

whereby the Defendants need only provide the information required underd. for the period since 9th June 2007 and the Defendants have the right to

provide the names and addresses of the non-commercial customers and

recipients of the offers instead of to the Plaintiff to a certified accountant

with his place of business in the Federal Republic of Germany named by

the Plaintiff and under a confidentiality obligation as against it to the extent

that the Defendants bear his costs and authorize him and place him under

an obligation to inform the Plaintiff if an actual request is made by it to do so

whether a certain customer or recipient of an offer is included in the list.

II. It is established that

1. the Defendants are obliged to pay compensation to the Plaintiff for all acts

committed in the period between 13th April 2002 and 8th June 2007

pursuant to I. 1.;

2. the Defendants are under a joint and several obligation to reimburse the

Plaintiff all damages set out in I. 1. which the Plaintiff has suffered and

which it is still to suffer in the future as a result of the acts committed since

9 June 2007.

III. The (alternative) counterclaim is dismissed.


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IV. The Plaintiff shall bear 2/5 of the costs of the legal dispute and the Defendants as

joint and several debtors 2/25 and each Defendant individually a further 13/50. The

Plaintiff shall bear 2/5 of the costs of intervention, the remaining costs shall be borne

by the Intervener.

V. The decision is provisionally enforceable in return for security of 1,000,000 in 1.1

(cease and desist), 50,000 in I.2. (Information) and 120% of the respective

enforceable amount in IV (Costs).


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Facts

The parties are disputing cease and desist, compensation, damages and information

duties as the result of a direct patent infringement.

After separating the claims based on the property rights DE 4 136 147 and EP 540 808

arising from these proceedings by decision of 10.11.2008 (AS 283) and withdrawal of the

claim with respect to property right EP 1 111 809 with written statement from the counsel

of the Plaintiff of 31.10.2008 (AS 151), the claim is based solely on European patent 1

186 189 B1 regarding proceedings to grant access rights in a telecommunications

channel to subscriber stations of a telecommunications network and subscriber stations

(hereinafter: disputed patent), for which the Federal Republic of Germany inter alia is

named as contracting state. The fact that the disputed patent applied for on 15.02.2000

had been granted was published on 09.05.2007 (extract from the register dated

09.04.2008, Exhibit K E-16). The disputed patent has a Union priority right of 08.03.1999.

Publication date of the patent application was 13.03.2002. Nokia Corporation (by way of

written statement of 19.08.2008, Exhibit B17) and Defendant 1 (by way of written

statement of 11.11.2008, Exhibit after B19) each filed actions for nullity against the

German part of the effective disputed patent. Claim 11 of the asserted disputed patent

reads, in the language of the case, as follows (with reference numbers):

subscriber station (5, 10, 15, 20), with respect to which access can be granted to atleast one telecommunications channel which can be used by several subscriberstations by way of means (65) to receive information signals, marked by an evaluationunit (60) to check with respect to the access authorization data (45, 50, 55) receivedwith the information signals whether the access authorization data (45, 50, 55)includes an access threshold (S), to compare the threshold value (S) with a randomnumber or a pseudo random number (R) and to calculate, depending on the result of

the comparison, whether at least one subscriber station (5, 10, 15, 20) has beenapproved for access to at least one telecommunications channel.

With respect to the further content, in particular the patent description, please see the

patent specification submitted as Exhibit K E-15.

The Plaintiff, a patent collecting society, has been registered as patent owner in the

patent register since a re-registration on 10 October 2007. It is deriving its legal position

from the undisputed acquisition of an extensive patent portfolio, which includes the

disputed patent,


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in May 2007 from the former patent owner, Robert Bosch GmbH (hereinafter: Bosch) and

from a disputed corresponding assignment which allegedly took place before acquisition

of the claims arising from the disputed patent, primarily claims to compensation and

information.

Defendant 1., a mobile telephone manufacturer based in Taiwan, distributes mobile

telephones throughout Germany also under its own brand name and in particular

through its subsidiary based in the United Kingdom, Defendant 2, including the model "T-

Mobile MDA Touch Plus" (hereinafter: attacked embodiment; instruction manual, Exhibit

K E-4) which are UMTS-capable. The design of the mobile telephones to make them

UMTS-capable is regarded by the Plaintiff as use of the teaching of the disputed patent.

Universal Mobile Telecommunications System (UMTS) is based on mobile telephonystandards of the 3rd Generation Partnership Project (3GPP), which include namely

individual documents (Exhibits K E-18, K E-19, K E-20) of the European

Telecommunications Standards Institute (ETSI). In the standardized system, access by

the individual mobile station to the Random Access Channel (RACH, see TS 25.211

Version 6.9.0, Chapter 4.1.2.4; Exhibit K E-18) is dependent on a comparison between a

persistence value Pi (scaled up where appropriate) generated in the mobile station and a

random number R generated in the mobile station (0 R < 1) ("RACH transmission

control procedure"; see TS 25.321 Version 6.14.0, Fig. 11.2.2.1; Exhibit K8). If R Pi then

access to the mobile station on the RACH is open.

Pursuant to the following table, the value P i depends on the respective Access

Service Class ("ASC"; see TS 25.331 Version 6.16.0, Chapter 8.5.12; Exhibit K E-9)

allocated to the mobile station.

ASC # i 0 1 2 3 4 5 6 7Pi 1 P(N) s2P(N) s3P(N) s4P(N) s5P(N) s6P(N) s7P(N)

With the exception of ASC#0 for which R < P i is always true since Pi = 1 and by

definition R < 1, Pi is determined on the basis of the dynamic persistence level N

("dynamic persistence level" with values from 1 to 8) in accordance with the fixed

relationship

P(N) = 2

-(N-1) -

where appropriate under application of the scaling factor Si.(scaling factor). The

dynamic persistence level N as a value dependent on the volume of traffic on the

telecommunications network


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is determined by the base station and permanently transmitted to all mobile stations

in the System Information Block ("SIB") type 7 whilst the scaling factors Si and the

information element "AC-to-ASC mapping" are transferred in the SIB type 5 or type

5bis.

Allocation of a mobile station to a certain ASC results in accordance with the Access

Class ("AC") defined by the SIM card applying the information element transmitted by

the base station ("Mapping of Access Classes to Access Service Classes"; see TS

25.331 Version 6.16.0, Chapter 8.5.12; Exhibit K E-19):

AC 0 - 9 10 11 12 13 14 15ASC 1

stIE 2

nIE 3

rIE 4

tIE 5

tIE 6

tIE 7

tIE

The former owner of the patent, Bosch, submitted - as a member with respect to the

standard relevant here, a FRAND declaration to ETSI on the basis of the "General IPR

Licensing Declaration" in which it undertook to grant a license in the patents described as

standard-essential to every interested manufacturer at fair, reasonable and non-

discriminatory conditions. The disputed patent itself is not described as standard-

essential in the ETSI documents.

The Defendants had indicated to the Plaintiff out of court their willingness to purchase a

license in its entire patent portfolio in return for a one-off payment of USD 10 million (see

also letter of 06.10.2008, Exhibit B19).

In light of existing supply relationships with Defendant 1 the Intervener entered into the

legal dispute on the side of Defendant 1 by way of written statement of 27.10.2008.

The Plaintiff pleads

that the Defendants are infringing the exclusivity right arising from the disputed patent by

distributing UMTS-capable mobile telephones without authorization to do so. In the case

of a subscriber station, the design of which conforms to the patent, the evaluation unit is

there to check, with respect to the access authorization data received with the information

signals, whether the access


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authorization data includes an access threshold when a check could take place as to

whether a (transmitted) access threshold should be relevant to the granting of access of

a subscriber station to the telecommunications channel or not ("Relevancy Check"). The

determination of its Access Service Class by the mobile station in connection with the

information element transmitted in the SIB type 5 / type 5bis denotes this check in theUMTS standard. This is the case since whilst in the case ASC#0 the granting of access

does not depend on N and thus P(N), in the cases ASC#1 ... 7 the value P(N) is relevant

to the granting of access of the individual mobile station. The fact that the value P(N) is

even more "finely granulated" by S i does not change the fact that the evaluation unit of

the UMTS-capable mobile stations is designed to compare the access threshold P(N)

with the random number R.

The Plaintiff claims that claims to compensation, damages and information in the past

were assigned to it in the framework of the patent acquisition from Bosch.

The Plaintiff finally r e q u e s t s :

as ruled.

The Defendants finally r e q u e s t

that the claim be dismissed;

alternatively: that the claim be suspended until a decision has been made in the

nullity proceedings against the disputed patent which are pending.

Further and alternatively: protection from execution.

In the event that the cease and desist claim is granted the Defendants file the

following c o u n t e r c l a i m :

It is established that the Plaintiff is obliged to grant the Defendants a simple license

but unrestricted in time, territory and subject, in the disputed patent EP-189 at

conditions which are not less favorable than


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the most favorable conditions which the Plaintiff or its legal predecessor has granted

to other simple licensees.

The Plaintiff r e q u e s t s

that the claim be dismissed. The Plaintiff counters the application for

suspension and r e q u e s t s

that the alternative counterclaim be dismissed.

The Defendants plead

that the attacked embodiment does not make use of the teaching of the disputed patent.

It alleges that the Plaintiff's pleading regarding infringement based on the UMTS standard

is inconclusive. A patent-conforming check as to whether the access authorization data

include an access threshold, i.e. whether an access threshold is transmitted with the

access authorization data is contained herein - ("Presence Check") is not prescribed by

the standard because in the standard the value N dependent on the volume of traffic is

always transmitted to the mobile station. The infringement argumentation of the Plaintiff is

not successful either because the user classes of the disputed patent cannot be equated

with the "Access Services Classes" (ASC) of the UMTS standard. Even pursuant to the

Plaintiff's understanding of the patent, there is no evidence of use of the patent in the

standard because in the course of the procedure according to the standard there is a

calculation and a subsequent comparison between the persistence value Pi with the

random number R, the calculation function of P i is only not required in the case of ASC#0

where it is set at 1. The case ASC#0 according to the standard is only optional since the

division of the "physical RACH" into Access Service Classes itself is only optional in the

standard. Furthermore, the inconclusiveness of the infringement accusation results from

the fact that it is not the value N transmitted by the base station but only the value P i

calculated by the base station which is compared with R, and P i also takes account of the

further parameter si. Finally, access to the telecommunications channel is not only

granted on the basis of the comparison between P i and R but a further check is

necessary as to whether for the corresponding ASC an Access Slot is available (Exhibit

B21).


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Any prohibition right of the Plaintiff irrespective of the lack of legal validity of the

disputed patent - is not enforceable because Defendant 1 is a licensee of the NOKIA

patent EP 940 056 which is based on the PCT patent application WO 98/23109 and on

which the action for nullity of Defendant 1 is based.

The Plaintiff does not have a right to take action anyway. It is disputed with the defense

of lack of knowledge that the former patent owner Bosch properly registered its claim to

the invention on which the disputed patent is based. It is also disputed with the defense

of lack of knowledge that claims for the period before transfer of the disputed patent were

transferred to the Plaintiff.

The enforcement of the Plaintiff's claims constitutes an abuse of law because Boschcreated for itself, by way of breach of the duties imposed on it by the by-laws to expressly

notify the disputed patent to ETSI, in the form of an ambush patent an (allegedly)

advantageous legal position as against other members of the branch.

At the very least the cease and desist claim of the Plaintiff is being used in a legally

abusive manner. The Plaintiff as pure patent collecting society has no authorized interest

of its own worthy of protection. It is abusing its formal legal position without having anyintention of use of its own. The claim is at least disproportionate in this respect.

Moreover, the Plaintiff is also restricted from the outset, as a result of the FRAND

declaration submitted by Bosch, to payment claims in accordance with a reasonable

license fee with respect to standard-essential patents. Bosch as singular legal

predecessor of the Plaintiff waived the exclusivity right arising from such patents. This is

not a new concept for the applicable law - as proven by 23 of the Patent Act - and is of

central importance to the entire rules on which ETSI is based in light of mandatory anti-

trust requirements placed on standardization projects.

Even if the FRAND declaration does not actually restrict the right arising from the patent,

the Plaintiff is, however, still bound by the declaration and thus under an obligation to

grant licenses at "FRAND" conditions whereby the cease and desist claim must be

countered with the defense of "dolo agit qui petit quod statim redditurus est".


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Should the transfer of the disputed patent to the Plaintiff haven taken place without a

transfer of the obligations under the FRAND declaration, the transfer agreement must be

regarded as being in breach of antitrust law, the consequence of which would be

invalidity pursuant to Art. 81 (2) of the EC Treaty which would mean that the Plaintiffdefinitely has no right to take action.

Finally the Defendants could counter the cease and desist claim with a license duty

under antitrust law by way of the "doloagit" defense.

With respect to the further details of the pleadings of the parties, in particular with respect

to the comments on the prospects of success of the actions for nullity and the individual

aspects of what is known as the mandatory license defense, reference is additionally

made to the written statements exchanged together with their exhibits. The Defendants

and the Plaintiff most recently made their pleadings in the written statements of 29.01

and 18.02 and 09.02.2009 which were not taken into account since they were received

after conclusion of the oral hearing. In the written statement of 04.02.2009 which was not

served the Plaintiff attempted to introduce an extension to the claim based on an indirect

infringement of claims 1 and 2 of the disputed patent.


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Reasons for the decision

A.

Basis for the decision

The Chamber is required to make a decision based solely on the applications made in

the oral hearing, 297, 308 of the German Code of Civil Procedure. The extension of

the claim after conclusion of the oral hearing is not permissible and does not give the

Chamber cause to reopen the oral hearing (Federal Court of Justice, decision of

12.05.1992 - XI ZR 251/91, BB 1992, 1385; Federal Court of Justice, decision of

09.07.1997 - IV ZB 11/97, NJW-RR 1997, 1486). The extension of the claim which did

not become pending either since it was not asserted in the oral hearing or served ( 261

(2) of the German Code of Civil Procedure) does not need to be expressly dismissed.

Since the value of the dispute has not been increased (see Greger in Zller, German

Code of Civil Procedure, 27th ed. 2009, 296a margin no. 2a) the inadmissible extension

of the claim does not have negative cost consequences for the Plaintiff.

B.

Jurisdiction to make the

decision

The Chamber has been called to make a decision pursuant to 32 of the German Code

of Civil Procedure and Art. 5 no. 3 of the Council Regulation on jurisdiction and the

recognition and enforcement of judgments in civil and commercial mattersas read with

143 (1) of the Patent Act as read with 14 of the Regulation on Jurisdiction. The

Defendants face the accusation of nationwide patent-infringing conduct whereby there is

also tortious jurisdiction in Baden-Wrttemberg.

C.

Claim

The admissible claim is justified. The Defendants are infringing the disputed patent (I.)

and for this reason the Plaintiff (II.) is entitled without objection (III.) to assert the claims

(IV).


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I.

Patent

infringement

The Defendants are infringing the disputed patent, Art. 64 (1) of the EPC as read with 9sentence 2 no. 1 of the Patent Act. The mobile telephones of the attacked embodiment

offered for sale and put into circulation without authorization of use from the Defendants

make literal use of the teaching of claim 11 of the disputed patent.

1. The disputed patent concerns a procedure to grant access rights to a

telecommunications channel to subscriber stations of a telecommunications network

and the subscriber station designed accordingly.

a) In light of the fact that there are only a restricted number of channels for a cell with a

base station and the resulting immanent risk of system overload in the case of access

by several mobile stations to these channels, the disputed patent denotes procedures

to control or manage access in a manner which is in line with state of the art

technology as known, whereby information signals are transmitted to at least one

subscriber station (column 1 lines 14-16). Specification WO 97/19525 refers to a

wireless communication system whereby the base station calculates the number of

access attempts and transmits values for the access probabilities to the individual

subscriber stations via a common broadcast channel or control channel whereby the

subscriber station desiring access is selected according to its priority class derived on

the basis of the access probability values received and compares these with a

random number in order to ascertain whether access to a communication channel is

permissible (column 1 lines 41-51).

b) By contrast, the disputed patent describes as the general advantage of its teaching

the fact that the access control by way of random distribution of access authorization

to the telecommunications channel for one or more than one subscriber station uses

a minimum of transmission capacity for the transfer of the information signals since it

is only effectuated by transmission of the access threshold.

c) This advantage over state of the art technology is realized, in the view of the disputed

patent, by a subscriber station with the characteristics set out in claim 11:


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(1) Subscriber station (5, 10, 15, 20), with respect to which access can be granted toat least one telecommunications channel which can be used by severalsubscriber stations,

(2) by way of means (65) to receive information signals,

marked by

(3) an evaluation unit (60) being provided

(a) to check with respect to the access authorization data (45, 50, 55) receivedwith the information signals whether the access authorization data (45, 50,55) includes an access threshold (S),

(b) to compare the threshold (S) with a random number or a pseudo randomnumber (R)

and

(c) to calculate depending on the result of the comparison whether at least onesubscriber station (5, 10, 15, 20) has been granted access to at least onetelecommunications channel.

2. The attacked embodiment makes literal use of all characteristics. As far as

characteristics 1 and 2 are concerned this is not disputed by the parties and is not

based on incorrect patent law assumptions. However, the group of characteristics 3 is

realized literally. The evaluation unit of the attacked mobile telephones undisputedly

designed to carry out the access control procedure required by the UMTS standard is

equipped to realize the functions pursuant to sub-characteristics a, b and c.

a) The standard-conforming evaluation unit checks with respect to the access

authorization data (45, 50, 55) received with the information signals whether this data

includes an access threshold (S) (characteristic 3a).

aa) What an average expert a university graduate of electrical engineering majoring

in communications engineering or of information technology majoring in networks

and with experience in the field of mobile telephone technology would

understand by the patent-conforming "all-encompassing check" pursuant to

characteristic 3a results based on the patent claim (Art. 69 (1) sentence 1 of the

EPC, 14 sentence1 of the Patent Act) from the technical relationship between

its characteristics and from the content of the description and drawings (Art. 69 (1)

sentence 2 of the


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EPC, 14 sentence 2 of the Patent Act). Referring to the description to interpret

the patent claims ensures that the actual wording of the patent is sufficiently

observed. An expert would thus take the purpose of a characteristic expressed in

the patent specification as a basis whereby the technical sense of the words and

terms used in the patent specification - not the philological or logistic scientificdetermination of the terms - is decisive, the patent specification thus serves quasi

as its own dictionary (Decisions by the Federal Court of Justice on Civil Matters

150, 149, 156 Cutting knife I (Schneidmesser I); Federal Court of Justice,

decision of 02.03.1999 - X ZR 85/96, GRUR 1999, 909 Clamping screw

(Spannschraube)). In doing so the example embodiments and the related parts of

the description do not restrict a wider meaning of the patent claims to these

embodiments. Interpretation in accordance with the meaning (in the sense ofinterpretation in accordance with the sense) of the patent claims is generally not

permissible; this applies in particular where the description does not provide any

indication of a restriction of protection to certain embodiments (see Scharen in

Benkard, Patent Act, 10th ed. 2006, 14 margin no. 24, 25).

Here an expert would recognize when interpreting the words "check with respect

to the access authorization data received with the information signals whether theaccess authorization data includes an access threshold" that the all-

encompassing check pursuant to characteristic 3a is not a "presence check", i.e.

not being asked whether a threshold is contained in the access authorization data

but that the all-encompassing check of the teaching serves in actual fact to

determine whether the access authorization data received should make access

by the specific mobile station to the telecommunications channel dependent on a

comparison between a random number and an access threshold, i.e. part of the

access authorization data should become relevant as access threshold for the

specific mobile station.

(1) An expert will neither stop at the possible general meaning of the word

"encompass" in the sense of "contain" nor will he understand the repetitions

of the term in the description as linguistic determination of the patent

specification to the sense of "contain". This is the case because it would be

clear to an expert like any reader that the linguistic usage of the disputed

patent would then be inconsistent since the disputed patent itself also


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uses the term "contains" in its description (section 37. column 11 line 39),

without transferring it to the claim. In actual fact an expert would determine

the technical sense of the "all-encompassing check" taking account of the

example embodiments and the state of the art technology appraised by the

disputed patent itself.

(2) When reading the example embodiments an expert contrary to the view of

the Defendants would not derive from section 39 that the check of the length

of the bit sample (10 bit or 13 bit) pursuant to point 200 in Fig. 4a is a

"presence check" in accordance with characteristic 3a in the case of the 13 bit

sample or part of such in the case of the 10 bit sample. This is the case

because it is clear from the patent specification that the length of thetransmitted bit sample itself, whereby the bit sample transmission only

represents an embodiment preferred by the patent (see sub-claim 7), does

not denote any access authorization information in accordance with the

example embodiments. The information on lengths in the description must be

regarded solely as exemplary (section 38, column 11, lines 47-48). It does not

have any independent information value since individual information

components can be omitted completely (section 38, column 11, lines 52-54).In its example embodiments the disputed patent only regards the following as

access authorization information, i.e. access authorization data in the

information signals transmitted by the base station and received by the mobile

stations, which are binary-coded (see column 10 line 28, column. 10 lines 39-

41 and column11, lines 44-47) in the bit sample: access threshold (column 7

lines 38-45 and column 10 lines 52-53: access threshold bits s3, s2, s1, s0),

access class information (column 9, lines 37-39 and column 10 lines 52-54:access class bits z3, z2, z1, z0), participant service information (column 3,

lines 11-12, column 7 line 58 - column 8 line 10 and column 10 line 56) and

priority thresholds (column 8 lines 21-26 and column 10 line 57) and where

appropriate other evaluation information (see sub-claims 5 and 6; column 7

line 36, column 9 line 22 and column 10, line 51: evaluation bit s4). Therefore,

according to the example embodiments, it is only the bit sample configuration

(see column 13 lines 54-55) and not the bit sample length which is decisive.

Point 200 in the example embodiment in Fig. 4a would thus be of no

significance to the technical understanding of the patent claims for an expert.

The actual implementation of the procedure set out in the disputed patent


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into an encoding system and thus into corresponding bit sample lengths and

the question of whether different bit sample lengths are even used is left open

to interpretation by the expert by the disputed patent. A simple "presence

check" of the information signals transmitted and received on a threshold only

seems to take place in the 10 bit example but not in the 13 bit example,whereby the latter is not covered by the patent claim, which would, in

principle, be conceivable (see Federal Court of Justice, decision of

29.11.1979 - X ZR 12/78, GRUR 1980, 219 relief valve (berstrmventil)),

but in the present case is, however, based on a restriction of the patent claim

under its meaning, as illustrated further below.

(3) If an expert were to consider the structure of the access management usingthe bit sample of the first example embodiment (section 25 - section 35 and

column 12 lines 2-57) and the structure of the access management using the

bit sample of the second example embodiment (section 36 and column 12

line 57 - column 13 line 27), he would recognize that the following functional

elements of the two structures are the same:

checking the dependency of the access management for thespecific mobile station by carrying out an access threshold

comparison or sole dependency on the user class allocated "with

respect to the access authorization data received with the

information signals"

- by checking the evaluation bit s4 in hash 205 (S4=0

leads to the access threshold comparison: column 12

lines 4-7; s4=1 leads to exclusive dependency on theallocation to a user class and not setting the allocated

access class bit: column 12 lines 7-8, column 12

lines 46-56 and column 9 lines 47-50)

- by checking the access class bit z in hash 285

which corresponds to the specific user class (z=1 or

non-membership of a user class leads to the access

threshold comparison: column 13 lines 21-27 and

column 11 lines 6-12; z=0 leads to access

independent of the access threshold: column 11 lines

1-4)


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access threshold comparison in accordance with characteristic 3b

(column 12 lines 8-18, column 13, lines 26-27: ascertaining the access

threshold S from bits s3s0; drawing of R; actual comparison between

R and S)

granting access in accordance with characteristic 3c (column 12 lines

18-46; lines 26-27: depending on the condition R S and after further

checks where appropriate)

The functional identical check by the evaluation unit as to whether s4=0 or

z=1 differs between the example embodiments only to the extent that where a

check is necessary on the basis of the evaluation bit s4 the information signal

transmitted with respect to the dependency of the access management on anaccess threshold is identically evaluated in all mobile stations, where a check

is necessary on the basis of an access class bit z3 ... 0 on the other hand,

differing evaluations can be carried out by the individual mobile stations

depending on their user class and the setting of the bit z3 ... 0 and thus in the

13 bit example for the base station different access management can be

controlled in individual user classes even where the encoded access

threshold transmitted is identical.

(4) It is this check (whether with respect to the access authorization data received

with the information signals s4=0 or z=1) alone which would be regarded by

an expert as being the technical implementation of characteristic 3a of the

patent even in light of the objective aim resulting from the disputed patent

which is distinct from the state of the art technology. The disputed patent is

attempting to overcome the decisive appraised state of the art technology,which is characterized by transmission of the different probability values

(column 1 lines 45-51) for the different priority classes of the mobile stations

to be taken into account, by transmitting only the, i.e. one common access

threshold and a resulting minimization of the transmission capacity (column 2

lines 13-17). Since owing to the priority classes recognized by the appraised

state of the art technology of which an expert will be aware the access

management of individual or all mobile stations will not, however, always

depend on an identical encoded access threshold transmitted, the disputed

patent realized that it was facing a technical problem whereby the specific

subscriber station


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would have to extract from the same information, i.e. information signals,

transmitted by the base station at regular intervals at given times (column 13

lines 42-43) the specific data about rights to transmit on the

telecommunications channel of the corresponding specific mobile station

(column 6 lines 6-8). This is precisely what is realized by the "all-encompassing check" pursuant to characteristic 3a in that "with respect to the

access authorization data received with the information signals" (in the

example embodiments on the basis of the evaluation information s4 or the

access class information z) it is checked by the evaluation unit of the specific

subscriber station "whether the access authorization data include an access

threshold" for access management by the specific subscriber station.

(5) The technical-functional understanding of characteristic 3a which results

herefrom has been sufficiently specified in the patent claim itself by way of the

wording of the all-encompassing check "with respect to the access

authorization data received with the information signals". The identical

information signal transmitted (bit sample configuration in the example

embodiments) can, depending on the interpretation modus allocated to a

recipient in the system (each recipient in the example embodiments has bit s4or the allocated z bit) have a different data content with respect to the access

authorization data encoded in the information signals This understanding of

the claim also corresponds to procedural claim 1 which provides for an all-

encompassing check "on receipt of the access authorization data" which, in

accordance with sub-claim 6, is only characterized by the technical

configuration of the 10 bit example embodiment.

(6) In conclusion the Defendants' understanding of the meaning of the claim is

thus unconvincing. The fact that in the UMTS standard it is always value N

which is transmitted does not oppose realization of characteristic 3a. This is

the case because whether the value N contained in the information signals

transmitted will be relevant to the access management of the specific mobile

station (in the case ASC#1 ... 7 with P i depending on P(N)) or not ((ASC#0

with Pi = 1) through P(N) results only after determining the ASC which

depends on the AC of the mobile station applying the


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"Mapping" information element transmitted by the base station. Since the

patent claim only refers to a "check", and leaves the content hereof to the

expert, in particular the conditions under which the check is to be carried out,

and the example embodiments cannot restrict the meaning of the patent

claim, the Defendants' view that in the check it is not the AC of the mobile

station (directly) which corresponds better to the access class within the

meaning of the literal use of the patent description but the ASC determined.

bb) The Defendants' objection that realization of the characteristic is opposed by the

fact that the case ASC#0 which is the only case where the transmitted value N is

irrelevant to the access control, but which is only optional under the standard, is

insignificant since the option in the standard demands with respect to UMTS-capability of the subscriber stations that these are also equipped accordingly for

the case ASC#0. Characteristic 3a only requires that the evaluation unit is

capable of carrying out a check. Whether the check here in connection with the

provision of the ASC - can be idle owing to the lack of the option used by the

system to implement an ASC#0, does not change anything about the evaluation

unit in the attacked embodiments provided for by the corresponding characteristic

3a.

cc) Realization of the characteristic is also not opposed by the fact that in the course

of the procedure in line with the standard a calculation of Pi and a comparison with

R always takes place. The "all-encompassing check" pursuant to characteristic 3a

only demands that it be determined as to whether an access threshold should be

taken into account during the access control of the specific mobile station and is

included in the access authorization data received for this reason. In the caseASC#0 the evaluation unit determines that the value N over P(N) should not be

relevant to the access control by setting P i at 1. What the course of procedure is

for the case where an access threshold is not included "with respect to the access

authorization data received with the information signals" is left in its claims and in

particular in claim 11 regarding the configuration to the expert by the disputed

patent. Integrating the course of procedure in the case of ASC#0 into the

comparison between R and Piwhich is provided for in the case of ASC#1 ... 7 by

the UMTS standard anyway by setting it at 1 in the comparison with the number R

to be generated,


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for which 0 R 1 is always true, is a possible course of procedure which the

disputed patent does not follow.

b) The evaluation unit configured in accordance with the standard also requires a

comparison between the access threshold (S) and a random number or a pseudorandom number (R) (characteristic 3b). The evaluation unit which exists in the

attacked embodiments for comparison of R with P i in accordance with the UMTS

standard realizes characteristic 3b. For the case ASC#1 ... 7 Pi depends on P(N).

P(N) represents the access threshold which is dependent on the volume of traffic on

the telecommunications network. The fact that P(N) is not itself transmitted by the

base station directly binary-encoded but in fact N, on which P(N) is solely basedaccording to the determination in the standard, is not an argument against the

evaluation of P(N) as access threshold. This is the case because the disputed patent

leaves it up to the expert to work out how the access threshold is encoded in the

information signal transmitted in the telecommunications system. The type of

encoding in the information signal is not determined by the patent claim. This also

results in particular from the description of the disputed patent (column 10 lines 26-28

and column 12 lines 8-10: ascertaining the access threshold from the accessthreshold bit; sub-claim 7: transferring the access authorization data as bit sample).

The ultimate dual binary encoding of P(N) as value N is not explained by the patent

claim.

The fact that the comparison value P i in the case of ASC#2 ... 7 does not depend

solely on P(N) but in the comparison value and thus also in the comparison the

parameter si can also be included is also irrelevant to the realization of characteristic

3b. The patent claim leaves open in this respect whether the comparison of the

access threshold with the random number can directly depend on further values or

whether further additional comparisons take place like the priority threshold

comparison shown by the disputed patent itself (see section 26). Decisive pursuant to

characteristic 3b of the disputed patent is solely that where an access threshold is

"included" this is compared with the random number.

c) The purpose of the standard-conforming configuration of the evaluation unit in the

attacked embodiment is finally there to ascertain, depending on the result of the

comparison,


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whether at least one subscriber station (5, 10, 15, 20) is free to access at least one

telecommunications channel (characteristic 3c).

This is not opposed by the fact that in the UMTS standard access to the

telecommunications channel is not based solely on the comparison between P i andR. The patent claim must not be restricted in this respect by requiring a calculation

dependent "solely" on the result of the comparison. Such an interpretation would not

do justice to the meaning of claim 11. An expert would disregard such an

understanding from the outset because then the entire description of the example

embodiments would not indicate a patent-conforming procedure with corresponding

subscriber stations (see priority value dependency check and comparing the

telecommunications services information in column 12 lines 20-45).

3. In conclusion it must be stated that the distributed attacked embodiment does make

literal use of the teaching of the disputed patent and that the Defendants are thus

infringing the disputed patent owing to the lack of authorization of use/a license.

The Defendants have not sufficiently pleaded a utilization right. To the extent that in

the written statement submitted after the oral hearing an objection is raised withrespect to the license of Defendant 1. in the NOKIA patent EP 940 056 the

Defendants do not even start to set out in a substantiated manner (see section V:

Suspension) that the property right senior in terms of priority includes teaching which

is identical to that of the disputed patent (see with respect to the problem of enforcing

the positive right of use granted to a simple licensee against the owner of an identical

property right younger in terms of priority: Higher District Court of Karlsruhe, decision

of 25.02.1987 - 6 U 32/86, GRUR Int. 1987, 788 open-end spinning machines

(Offenendspinnmaschinen)).

II. Right to take

action

As patent owner by way of acquisition of the disputed patent from Bosch in May 2007,

the Plaintiff is authorized to take action with respect to all of the claims asserted since 9th

June 2007.


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The question raised by the Defendants regarding the claim to the invention by Bosch

pursuant to 6 of the Employee Inventions Act as read with Art. 60 (1) of the EPC is

irrelevant to the question of the former formal and substantive legal position of Bosch as

original applicant (Art. 58, Art. 60 (3) of the EPC) and after the patent was granted former

patent owner (Art. 64 (1), Art. 60 (3) of the EPC) and Art. II 5 (1) sentence 2 of theGerman Law on International Patent Treaties. When the patent was granted Bosch had

obtained the position of patent owner whereby any "person entitled to the invention"

could merely have demanded transfer of the patent by way of vindication. The rights

arising from the patent can, however, until vindication be asserted by the patent owner

and it can dispose of the right in the patent (Art. 2 (1), Art. 64 (1) of the EPC). Whether

the Plaintiff as new patent owner could be subject to any vindication claims is not

relevant to the dispute between the parties. In particular the Plaintiff has a right to takeaction owing to its current registration as patent owner ( 30 of the Patent Act).

Moreover, the Plaintiff is also entitled to take action for the claims to compensation and

associated information asserted up to 08.06.2007. The Chamber is completely convinced

of the assignment of the claims which arose at Bosch ( 286 (1) sentence 1 of the

German Code of Civil Procedure) as a result of the written confirmation from Bosch

dated 05.11.2008 (Exhibit K27). The assignment of payment claims confirmed therein

which was also possible in an informal manner also includes, in the case of informed

interpretation ( 133, 157 of the German Civil Code) of the confirmed transfer

agreement taking account of the obligations applicable to the assignee anyway pursuant

to 402 of the German Civil Code, the corresponding claims to information. Submission

of confidential agreements is not required to convince the Chamber.

III. No right to object to the claims asserted

The Plaintiff is not prevented from enforcing the claims asserted from any legal point of

view. In particular its enforcement must not be regarded as abusive ( 242 of the German

Civil Code).

1. To the extent that the Defendants object to the singular legal predecessor of the

Plaintiff, Bosch, having obtained an ambush patent by way of infringement of the

duties under the by-laws to notify the disputed patent to ETSI quasi unfairly ( 4 no.

10 of the Unfair Competition Act ) -


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meaning that the enforcement of claims arising from the disputed patent would

constitute an abuse of law per se the Chamber is unable to follow this line of

argument. It is irrelevant here whether application of the case law of the Federal

Court of Justice to what are known as blocking trademarks and trademark

applications for purposes of speculation (see for an overview: Khler in

Hefermehl/Khler/Bomkamm, Unfair Competition Act, 26th ed. 2008, 4 margin no.

10.84 ff.) to rights in intangible assets which are based on own personal

achievements like the patent even seems conceivable.

The Defendants have not even started to plead why, as a result of the breach of the

by-laws by Bosch, despite having submitted a general declaration to the effect that it

was willing the grant licenses, the competitors are apparently hindered in any way,i.e. that their competitive scope is restricted. The Defendants do not claim that if the

disputed patent's relevance to the standard had been "discovered" earlier by Bosch a

different standard would have been passed by ETSI. The Defendants merely state

that the breach of ETSI's by-laws has otherwise remained without consequences.

However, this is not sufficient to fulfill the prerequisites of 4 no. 10 of the Unfair

Competition Act and cannot, taking account of the relativity of the obligations, support

any abuse of law defense against the assertion of claims against patent infringers.

2. The claims asserted, in particular the cease and desist claim, are not exploited in a

manner abusive to law by the Plaintiff as patent collecting society.

a) The Defendants and the Intervener remain unheard with respect to their legally

comparative considerations on equity in countries practicing Anglo-Saxon law. The

Chamber is bound by the applicable national law.

b) The claims asserted do not fall under the prohibition on chicanery ( 226 of the

German Civil Code). The view of the Defendants and their Intervener that this is an

abuse of a formal legal position is completely incorrect. The Plaintiff does not lack an

authorized interest of its own worthy of protection either ( 242, 826 of the German

Civil Code).


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The patent as subjective pecuniary right grants the patent owner, pursuant to Art. 64

(1) of the EPC as read with 9 sentence 2 of the Patent Act, an exclusive legal

position effective as against any other person according to which the patent owner is

accorded property under constitutional law (Art. 14 (1), 19 (3) of the Basic Law). The

legislator which is responsible for determining the content and limits of the property( 14 (1) sentence 2 of the Basic Law) has not linked the perception of the exclusivity

right pursuant to 9 sentence 2 of the Patent Act to simultaneous use of the patent

( 9 sentence 1 of the Patent Act) by the patent owner. A patent owner which does

not use the patent itself is equally protected and already has, with respect to the

enforcement of its intentions of use by granting licenses, an interest worthy of

protection and an authorized interest of its own in enforcing the exclusivity right to

which it is entitled.

c) No circumstances have been pleaded here or are apparent which would make

enforcement of the cease and desist claim seem disproportionate. The Chamber

does assume in principle that the enforcement of a cease and desist claim can be

disproportionate since rights arising from the patent are not granted without limits

(Art. 14 (2) of the Basic Law, 242 of the German Civil Code). However, since the

legislator does not make the case and desist claim subject to any general prohibitionon commensurability (not so: 140a (4), 140b (4), 140c (2), 140d (2) of the

Patent Act) and the cease and desist claim secures the exclusivity right protected

under constitutional law, the defense of disproportionally remains restricted to

atypical exceptional cases which cannot be foreseen by the legislator. The fact that

the patent collecting society is attempting to enforce a cease and desist claim in order

to urge infringing parties to purchase licenses does not, in the view of the Chamber,

constitute such an exception but rather is an intrinsic part of the patent system as part

of the applicable legal and economic system, especially since a patent collecting

society will usually be urged to take such action with respect to existing license

agreements.

3. The Plaintiff is not, contrary to the legal view of the Defendants and the Intervener, not

restricted from the outset to payment claims owing to the FRAND declaration

submitted by Bosch.

a) If one were to assume the point of view of the Defendants and its Intervener that the

FRAND declaration given by the singular legal predecessor of the Plaintiff, Bosch, to

ETSI


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corresponds in terms of content to a waiver of the exclusivity right arising from

standard-essential patents, this can only be regarded as an explanation with effect

under the law of obligations but not an act of disposal which has an effect on the

existence of the patent right which directly restricts the Plaintiff in its rights arising

from the patent.

The appraisal of existence and protection of the intellectual property rights and thus

also the appraisal of the effectiveness of acts of disposal are subject to a connection

to the country of protection principle and therefore in the present case German

substantive law (see with respect to the hitherto applicable legal position: on

copyright, Decisions by the Federal Court of Justice on Civil Matters 136, 380-393

The Casino Affair; for acts causing damage from 11.01.2009: Art. 32, Art. 31, Art. 8(1) of the Regulation (EC) No. 864/2007 of the European Parliament and of the

Council on the law applicable to non-contractual obligations "ROME II"). However, the

German legal system only recognizes as dispositions of the patent the transfer of the

patent (15 (1) sentence 2 of the Patent Act as read with 413, 398 of the German

Civil Code), the limitation and amendment of the content of the overall right by way of

licensing ( 15 (2) of the Patent Act; see with respect to the nature of disposals in

copyright Wandtke/Grunert in Wandtke/Bullinger, Copyright, 3rd ed. 2009, 31margin no. 31), registration of an usufruct ( 1068, 1069 of the German Civil Code,

15 (1) sentence 2 of the Patent Act), creating a lien ( 1273, 1274 of the German

Civil Code, 15 (1) sentence 2 of the Patent Act) and the complete waiver of the right

arising from the patent, i.e. in the patent itself by way of written declaration to the

Patent Office ( 20 (1) no. 1 of the Patent Act; on the nature of disposal see

Schwendy in Busse, Patent Act, 6th ed. 2003, 20 margin no. 11). However, the

legal system does not recognize a partial waiver in rem of rights arising from the

patent which goes beyond a "pactum de non petendo" effective under the law of

obligations and is also excluded according to the systematics of patent law similar to

the numerus claususin property law. Moreover, the legislator shows by way of 20

(1) no. 1 of the Patent Act that the prerequisite for such a waiver in rem on grounds of

legal security is receipt of the declaration by the Patent Office. Irrespective of the

dogmatic appraisal of the declaration that the patent owner is prepared to grant

licenses, pursuant to 23 (1) sentence 1 of the Patent Act, this legal provision does

not constitute evidence that the legal system recognizes a partial waiver with effect in

rem of rights arising from the patent either. Here too on grounds of legal security

receipt by the Patent Office of a declaration is required. The reverse of the provisions

pursuant to 23, 20, (1) no. 1 of the Patent Act shows specifically


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that the rights arising from the patent cannot be waived with effect in rem in any

other way.

b) If the Defendants were now able to object that the FRAND declaration made to ETSI

is definitely a "pactum de non petendo" (waiver prohibition), i.e. a "negative license"granted to those wishing to use the patent before an actual simple license was

purchased, the Plaintiff would not be prevented from asserting its right of prohibition

by way of cease and desist claim on the basis of this interpretation. This is the case

since a "negative license" granted by Bosch is not subject to succession protection

pursuant to 15 (3) of the Patent Act (see Ullmann in Benkard, Patent Act, 10 ed.

2006, 15 margin no. 111) which means that the Plaintiff would not be bound by

such a "negative license". The term "license" pursuant to 15 (2), (3) of the PatentAct is only the authorization granted for positive use of the licensed technical

teaching (Higher District Court of Karlsruhe, decision of 25.02.1987 6 U 32/86,

GRUR Int. 1987, 788, 789 Open-end spinning machines).

4. A "doloagit" defense cannot be asserted against the Plaintiff either on the basis of any

licensing duties arising from the FRAND declaration. The Chamber leaves open

whether a license claim in favor of third parties even results from the FRANDdeclaration given to ETSI and whether this defense can be used according to legal

doctrine against the cease and desist claim under patent law.

If it is assumed that an obligation to grant licenses to third parties wishing to use the

patent results from the FRAND declaration given to ETSI it must be established that

the Plaintiff is not bound by this declaration.

The Plaintiff itself is neither a member of ETSI nor do the Defendants plead that any

obligations of Bosch were transferred to the Plaintiff as a result of a private

autonomous agreement with the latter (for example assumption of obligations

pursuant to 414 ff. of the German Civil Code or collateral promise).

The FRAND declaration is not subject to succession protection pursuant to 15 (3) of

the Patent Act either. This provision as a special provision of a protection of the

status quo vis--vis the principle of relativity of a debt obligation is not open to

analogy since there is no unintended lacuna in the provision in the view of the

Chamber. Moreover, there is no comparable interest situation between authorized

licensees using the patent


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on the one hand and unauthorized users or simply those wishing to make use thereof

on the other.

The reference made by the Intervener to the provisions of 413, 404 of the German

Civil Code does not apply either. 404 of the German Civil Code does not apply in

the framework of patent transfers. This is the case because the right in and arising

from the patent is an absolute right which is not recognized by any debtor (RGZ 127,

197, 205).

Finally no succession protection arises from Art. 81 of the EC Treaty. Considerations

by the Defendants and the Intervener de lege ferendamust remain unsuccessful.

5. The fact that the Plaintiff is not bound by the FRAND declaration given by Bosch

does not lead to invalidity of the transfer of the patent to the Plaintiff pursuant to Art.81 (1), (2) of the EC Treaty.

The purpose of the transfer of the disputed patent was not to restrict competition

within the meaning of Art. 81 (1) of the EC Treaty nor did it have such an effect. The

disposition as such initially merely served the purpose of shifting the disposal

authority and must moreover be regarded as without purpose per se. It has neither

been pleaded nor is it apparent that the circumstances of the transfer of the patent ledto a different result. A restriction of competition which differs from the restriction which

might have resulted by the standard-essential nature of a patent connected to the

standardization does not result from the patent transfer without binding the assignee

to a FRAND declaration submitted by the assignor in the standardization procedure

on the basis of corresponding statutes (in view of Art. 81 (1) and (3) of the EC

Treaty). This is the case since any obligation of a patent owner arising from such a

FRAND declaration stops at the license obligations which result anyway from Art. 82

of the EC Treaty. The patent owner cannot choose not to grant access to FRAND

conditions on the basis of antitrust law considerations. However, this means that the

patent transfer did not result in a restriction on competition, the consequence of which

would be invalidity.

6. To the extent that the Defendants are only using what is known as the antitrust

mandatory license defense against the cease and desist claim they are unsuccessful

in this respect. Whether this dolo agitdefense can be used against the cease and

deist claim under patent law does not need to be decided by the Chamber. This is the

case since if the


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defense is considered admissible (see tending in this direction: Higher District Court

of Karlsruhe, decision of 13.12.2006 - 6 U 175/02, Court of First Instance 8, 14-24 -

Orange Book; left open for the cease and desist claim: Decisions by the Federal

Court of Justice on Civil Matters 160, 67 Standard Tight-Head Drum (Standard-

Spundfass)), this would have to be subject to the refusal in breach of antitrust law ofthe patent owner to grant licenses in the standard-essential disputed patent at

conditions in line with antitrust law.

However, the Defendants do not significantly plead such a refusal. They do not

assert that the Defendants had attempted to purchase a single license in the disputed

patent and the Plaintiff refused to grant such a license in breach of antitrust law. The

pleading that the Plaintiff refused an offer to conclude a license agreement for thepatent portfolio in return for a one-off payment of USD 10m is irrelevant from the

outset. The Defendants fail to recognize in this respect that an obligation under

antitrust law can result in connection with standard-essential patents but that the

patent portfolio - this is not disputed by the parties - does not exclusively contain

standard-essential patents. There is no claim under antitrust law to a license at

FRAND conditions in such a mixed patent portfolio. The fact that the Plaintiff is

refusing to grant a license at FRAND conditions in its standard-essential patentsbelonging to the portfolio is not pleaded by the Defendants. How the Plaintiff grants

licenses in its entire portfolio to third parties is thus irrelevant.

IV.

Legal consequences

The patent infringement ascertained justifies the applications made pursuant to the

national provisions (Art. 64 (1), (3), Art. 2 of the EPC).

1. The Defendants are obliged pursuant to 139 (1) of the Patent Act to refrain from

using the patent. The fact that the attacked embodiment has been illegally placed on

the market and illegally supplied in the past constitutes the required risk of repeat

contravention for the future.


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2. Since the Defendants have been ordered to cease and desist, pursuant to 890 of

the German Code of Civil Procedure, on request by the Plaintiff they must be

threatened with the statutory consequences of a contravention of a cease and desist

obligation.

3. It must be established by way of decision that the Defendants are required to pay

reasonable compensation for the acts of use committed in the period between

13.04.2002 and 08.06.2007 and compensation for infringements which took place

after 09.06.2007.

a) The special preconditions for admissibility of an application for a declaratory judgment

pursuant to 256 of the German Code of Civil Procedure are fulfilled. The Plaintiff isnot aware of the exact extent of the acts of use and infringement. Without this

knowledge it cannot put a figure on an application for payment of reasonable

compensation and damages. However, since the Defendants are denying use of the

invention and the patent infringement the Plaintiff has a legal interest, in order to

prevent the claim becoming statute-barred and to obtain the thirty year limitation

period, in the existence of a claim for compensation and damages being established

as soon as possible.

b) The compensation claim results from 139 (2) of the Patent Act. The Defendants

acted culpably, that is to say at least negligently. If they had applied the care

necessitated by the market they would have been able and should have been able to

recognize after one month at the latest of publication of the notification that the

disputed patent had been granted that the disputed patent is infringed by the attacked

embodiment. The Defendants are liable owing to the joint distribution in the FederalRepublic of Germany as joint and several debtors ( 840 (1) of the German Civil

Code).

c) The duty to pay compensation results from Art. 11 1 sentence 1 of the German Law

on International Patent Treaties. The publication of the notification required pursuant

to Art. 93 of the EPC is dated 13.03.2002. The Defendants should have been aware

after one month of publication at the latest that the disputed patent had beenregistered and that the attacked embodiment being placed on the market and

supplied constituted use of the registered disputed patent.


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4. The Defendants are under an obligation to provide information to the Plaintiff pursuant

to 140b (1) of the Patent Act and application of 242 of the German Civil Code

which has become part of common law.

The Plaintiff cannot calculate its compensation claims without knowledge of thecircumstances about which it is demanding information. Since the Plaintiff is naturally

unaware of these circumstances since they constitute internal business information

of the Defendants, but that the Defendants can provide such information by way of

its accounts without unreasonable effort, the Defendants are placed under an

obligation to provide these accounts. This obligation must also cover the profit

generated by the Defendants in the period for which they are obliged to pay

compensation and the data required to calculate the damage. The Plaintiff must firstbe placed in a position by way of such information in order to be able to decide on

the possible ways of calculating its compensation claim (infringer profit, lost profit or

fictitious license).

V. No suspension

The legal dispute must not be suspended until a final and absolute decision has been

pronounced regarding the actions for nullity against the German part of the disputed

patent. It is true that the decision on the actions for nullity is anticipated within the

meaning of 148 of the German Code of Civil Procedure. However, the Chamber is

exercising the discretion granted to it in such a way that it waives suspension. The

Chamber bases this decision on the following considerations:

1. In order to prevent abuse, infringement proceedings should only be suspended if the

expected success of an action for nullity is made credible by the Defendants. The

mere possibility of the disputed patent being destroyed is not sufficient for

suspension. In general a great amount of restraint is bidden with respect to ordering

suspension in order to avoid by way of the suspension a suspension of the prohibition

right conferred on the patent owner by the granting of the patent also binding for the

courts for a considerable period of time. The lack of legal effect of the disputed patent

must therefore be very likely (see Rogge/Grabinski, op. cit., 139 margin no. 107).

These points of view correctly


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described by the Plaintiff outweigh, in the present case, the interest of the

Defendants in suspending the legal dispute and the general interest protected by

148 of the German Code of Civil Procedure in avoiding contradictory decisions.

2. In detail:

a) The Defendants have not illustrated to the Chamber in a sufficiently convincing

manner that it is highly likely that the actions of nullity before the Federal Patent Court

will be successful since the state of the art technology quoted in the actions of nullity

filed by NOKIA and Defendant 1 is prejudicial as to novelty with respect to the

teaching of the patent. In this respect the Chamber is unable to see that in the state of

the art technology mentioned an evaluation unit to carry out a check conforming tocharacteristic 3a of the disputed patent is disclosed. In particular, the reference to the

GSM Standard 0.60 in Chapter 12.14 at Table 85 that the transfer of a "Persistence

Level Bit" consisting of four bits, in which there is a signal bit "L| H", does not meet

the requirements of disclosure. This does not reveal the check pursuant to

characteristic 3a in accordance with the 10 bit configuration sample example and its

evaluation information s4. Here the Defendants would have to illustrate that the

configuration sample pursuant to the opposition is part of the information signals ofthe base station which constantly transmit access authorization data within the

meaning of the disputed patent to the mobile stations and, depending on how the

signal bit is set, the access authorization data make the access control dependent on

an access threshold comparison in connection with the "Persistence Level" or subject

the access authorization data to access management by another mechanism ("check

with respect to the access authorization data received with the information signals

whether [these] include an access threshold"). The function of the signal bit presented

by the Defendants is exhausted, however, as a result of the fact that a bit string is

distinguishable as a "Persistence Level Bit", i.e. that signals transmitted by the base

station contain a "Persistence Level Bit".

b) To the extent that a general reference to the actions of nullity place the inventive step

of the disputed patent in doubt, the Defendants are completely unable at least for a

layman to show that there are no further sensible


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arguments for the inventive step. Also in this light the prospects of success of the

actions for nullity must not be regarded as highly likely.

D. Alternativecounterclaim

The admissible internal procedural condition resulted by way of the Defendants being

ordered to cease and desist. The counterclaim aimed at establishing a license obligation

of the Plaintiff in the disputed patent at conditions which are not less favorable than the

most favorable conditions which the Plaintiff or its legal predecessor granted to another

simple licensee is already inadmissible. The Chamber leaves open whether theapplication is even aimed at establishing an actual legal relationship since there is

definitely no interest in a declaratory judgment pursuant to 256 (1) of the German Code

of Civil Procedure. Irrespective of the fact that the Defendants could decide to assert a

claim to direct performance there is at present no interest in a declaratory judgment since

at present no risk of uncertainty with respect to the subjective rights of the Defendants

results from serious denial of the subjective right of the Defendants asserted. A refusal of

the Plaintiff to grant a license in the disputed patent at any is not pleaded by theDefendants. It is not surprising either, is not even disputed by the parties, that

negotiations were only conducted with respect to the patent portfolio as such.

E.

Ancillary decisions

I.Costs

The uniform decision on costs is based on 91 (1) sentence 1, 269 (3) sentence 2 ofthe German Code of Civil Procedure as read with 100 (2), 100 (4), 101 (1) of the

German Code of Civil Procedure and is based on the value relationships of the claims

withdrawn compared with the applications on which a decision requested.


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Since the partial withdrawal of the claim took place after the Intervener entered into the

proceedings the Plaintiff must be regarded as inferior to the Intervener in a

corresponding relationship, 101 (1) HS 1 of the German Code of Civil Procedure.

A joint and several cost liability of the Defendants pursuant to 100 (4) sentence 1 of the

German Code of Civil Procedure is only possible with respect to costs which result pro

rata by the establishment of compensation (see Superior Court of Justice Berlin, decision

of 26.02.2002 - 5 W 85/01, KGR Berlin 2002, 282) but not with respect to the duties to

cease and desist and provide information which affect each of the Defendants

individually. In this respect the Chamber has estimated the interest in establishing

compensation at 20 % of the partial dispute value divided between the remaining claimapplications.

II. Execution

The decision regarding provisional execution is made pursuant to 760 of the German

Code of Civil Procedure.

The application of the Defendants for protection from execution is dismissed. The

preconditions of 712 (1) sentence 1 of the German Code of Civil Procedure are not

sufficiently illustrated let alone rendered conceivable ( 714 (1) of the German Code of

Civil Procedure). The Defendants merely plead in this respect that they would suffer a

significant loss in turnover and long-term impairments with respect to the supply

relationships with the large customers and this would result in a permanent loss of

market shares in Germany even after the period of execution. However, there is no

evidence of an irreparable disadvantage here. Ceasing to distribute the attacked

embodiment, the resulting loss of customers and any damage to their image and the

resulting financial losses are not sufficient to illustrate by way of 717 (2) sentence 1 of

the German Code of Civil Procedure an irreparable disadvantage (see also Higher

District Court of Dsseldorf, decision of 28.06.2007 1-2 U 22/06, Court of First Instance

8, 117, 120 ff. Portable cement pump (Fahrbare Betonpumpe)). They fail to state that

the economic existence of the Defendants would be at risk if production and distribution

were to cease because they might be at risk of insolvency and this is not in any way

apparent either.


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The amount of security for the cease and desist tenor must be determined by the

Chamber at its own discretion ( 108 (1) sentence 1 of the German Code of Civil

Procedure) on the basis of any expected execution damage ( 717 (2) sentence 1 of the

German Code of Civil Procedure). The Chamber is unable to base its estimate of the

damages on the turnover figures of the Defendants ( 200m in Germany) since it is not

clear which amount relate to the attacked embodiments. Without further substantiated

information with respect to the expected damage the Chamber regards a payment of

security of 1m as sufficient.

F.

The written statements submitted after the oral hearing need not be taken into account in

the decision and do not give cause for the Chamber to reopen the oral hearing ( 296a,

156 of the German Code of Civil Procedure).

Vo Gredner-Steigleider SchmidtPresiding Judge at Judge at the District Court Judgethe District Court

Issued

Stumpf, court secretary actingas court clerk


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Decision

The dispute value is established as 2,500,000. Since the partial withdrawal of claims by

way of written statement of 31.10.2008 the fees (Attorney Remuneration Act) must be

determined on the basis of a dispute value of 1,500,000.

Grounds:

The establishment of the dispute value is based on 63 (2) sentence 1, 39 (1), 45 (1)

sentence 1, 51 (1) of the Court Fees Act. With respect to the claims based on the

individual disputed property rights the Chamber, at its due discretion, considers each

disputed property right to have a partial dispute value of 1,000,000. A partial dispute

value of 500,000 is allocated to the counterclaim.

Vo Gredner-Steigleider SchmidtPresiding Judge at Judge at the District Court Judgethe District Court

Issued

[Signature]

Stumpf, court secretary acting

as court clerk [Stamp: District Court of Mannheim]

2009-02-27_engl_LG_Mannheim_IPCom_HTC

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