Last and Final Victory for Sisvel Before the German Federal Supreme Court (BGH) In the Sisvel vs Haier Cases

Yesterday the German Federal Supreme Court heard the oral arguments in another patent infringement case between Sisvel and Haier regarding Sisvel’s request for injunctive relief for infringement of cellular standard essential patents (SEPs) it owns. The decision rendered yesterday marks the final decision regarding Haier’s infringement of Sisvel’s European patent EP 1 264 504 (“EP 504”), and the related FRAND defense after a 6 year long legal dispute.

Prior to this verdict, the BGH (1) confirmed the German part of Sisvel’s EP 504 valid on April 28, 2020, (2) confirmed the German part of Sisvel’s EP 0 852 885 B1 (“EP 885”) valid on March 10, 2020, and (3) reversed the Düsseldorf Court of Appeal’s 2017 decision that wrongly considered Haier a willing licensee on May 5, 2020. In the motivation of the BGH May 2020 decision, it provided helpful guidance on certain aspects of the FRAND negotiation process (see https://www.sisvel.com/news-events/news/clarifications-on-licensing-of-standard-essential-patents-german-federal-supreme-court-issues-its-final-ruling-in-sisvel-vs-haier-case). Yesterday, the BGH not only confirmed the infringement of EP 504, but also reconfirmed its positions taken in the May 2020 decision.

“Sisvel’s approach has been fully vindicated. Nothing is left to be judged by the BGH in the various Sisvel ./. Haier cases, and we can affirm today that Sisvel was right in protecting a level playing field, seeking all the available remedies.” said Mattia Fogliacco, President of Sisvel International S.A.

“We welcome that the BGH has confirmed its position, and are keen to receive additional guidance, if any, once the motivation of the decision will be made public. But the impression of our lawyers at the hearing was very positive and the verdict speaks for itself. One key element on which great guidance has been already provided relates to Haier’s request for referral to the European Court of Justice for further clarifications, which has been turned down. The BGH rendered its verdict, evidently seeing no need of such referral” said Florian Cordes, Head of European Litigations at Sisvel, “In our view, it couldn’t now be more clear: implementers have the obligation to actively participate in the negotiation process and cannot refrain from concluding a license on FRAND terms.”