PatentlyGerman Headnote: The value of the matter of a nullity lawsuit against a standard-essential patent (SEP) is not to be reduced if the patentee of the SEP commits not to seek injunctive relief based on the SEP.

Background: The patent in question (EP 1 005 726 B1) relates to a turbo-encoding method for mobile communication systems. It provides more efficient processing in case of variable data rates by transmitting the data via “super frames” having a variable size depending on a data rate of the input data.

The  patentee declared the patent essential to the 3G mobile telecommunications standard. In view of possible antitrust concerns of the European Commission the patentee committed in pending parallel infringement proceedings not to seek injunctive relief based on the patent in question against any third party.The patent was invalidated by the Federal Patent Court in first instance. In the appeal instance the nullity complaint was withdrawn. The Federal Court of Justice (FCJ) has set the value of the matter to EUR 30 m, the same amount as in the parallel infringement lawsuit. The patentee petitioned to lower this amount for the appeal instance to EUR 8.75 m on the ground that the value of the patent has meanwhile been decreased due to the waiver not to seek an injunction based on the patent.

The decision: The FCJ ruled in its decision X ZR 93/13 (28 October 2014) that the value of the matter of nullity proceedings against a patent essentially depends on the economic value which the patentee can derive from the patent. The economic benefit can be reeped from injunctions, damage claims against infringers, licensing or proprietary use of the patented teaching. In the court´s view the value of the patent does not depend on the particular type of use of the patent and therefore does not decrease when the patentee obligates itself not to seek injunctive relief based on the patent. As a result, the value of the matter was maintained at EUR 30 m, corresponding to the stipulation in the infringement lawsuit.