Oberlandesgericht Düsseldorf; 2019-03-22; Patentinhaber; Patentbenutzer; I-2 U 31/16, 2 U 31/16
Decision by national courts in the field of European Union law — ECLI:DE:OLGD:2019:0322.2U31.16.00
Date: 2019-03-22
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82019DE0322(51)_ENG_SUMJURE
JURE summary
JURE summary
A company of the U. group specialising in patent rights management and licensing (hereinafter ‘the plaintiff’) who had earlier concluded a Master Sales Agreement regarding patent rights with the intervening party to the dispute, who was the original owner of the respective patent rights, filed an action against a company domiciled in China operating the websites www.h....com (hereinafter ‘defendant 1’) and a company domiciled in Germany (hereinafter ‘defendant 2’) citing a violation of the German part of its European patents  EP…..B1 (hereinafter ‘the patent’) seeking the provision of information, the presentation of accounts and compensation for damage.
The defendants were selling mobile phones such as ‘A. P2’ in Germany which are compatible with the 2G and 3G standards. The patent included the specific design type of the invention that complied with the GSM technical specifications, the existing standard for mobile phones. The plaintiff complained that the offer and sales of its specific design type (hereinafter ‘the contested design’) by the defendant violated its patent rights due to the fact that the contested design was based on a patented technical template. The defendants had previously rejected the proposed framework conditions to be granted a license with a license fee of USD 0.75 per mobile end device.
The Landgericht Düsseldorf (hereinafter ‘the Court of First Instance’) decided in favour of the action.
The appeal of the defendants lodged with the Oberlandesgericht Düsseldorf (hereinafter ‘the Court of Appeal’) was found admissible but had only partial success.
With regard to defendant 1, the international jurisdiction followed from Article 32 ZPO (1). As the case concerned promotion on the internet, it was sufficient that the respective rights were protected in Germany with the website also being available in Germany. With regard to defendant 2, the international jurisdiction followed from Article 2(1) of the Brussels I Regulation (2) due to its domicile in Germany.
Offering mobile phones on the websites of the defendant in German language violated the respective patent rights (3) in Germany. Contrary to the opinion of the defendants, this did not represent a mere general demonstration of the product but company-related information and advertisement at the same time. A device was shown which could not work without the implementation of the technology based on the patent.
The Court of First Instance concluded correctly that the offering and sale of the contested design was in breach of the plaintiff’s patent rights and ordered the defendant to provide information and pay compensation for damage.
The appeal had partial success to that extent that the defendants sought the cancelation of their obligation to provide information regarding the production costs broken down into the individual cost factors as well as regarding the achieved profits for such periods of time when the plaintiff, or rather its legal predecessor, had failed to meet their obligation to provide cooperation with respect to the licensing of the patent.
(1) Zivilprozessordnung (Code of Civil Procedure).
(2) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
(3) § 9 des Patentgesetzes (Article 9 of the Patent Act).