The patent holder’s assertion of claims for injunctive relief, recall and destruction by way of a legal action can also be considered abusive if the infringer has not (yet) declared its willingness to conclude a licence agreement under certain reasonable conditions in a legally binding manner, where it is the patent holder who is to be blamed for not having made sufficient efforts to meet the special responsibility associated with a dominant position and to enable an infringer who is in principle willing to acquire a licence to conclude a licence agreement.Special obligations regarding conduct on the part of the patent holder with a dominant position may arise in particular from the fact that the infringer who has been informed of the infringement has clearly and unequivocally expressed its willingness and readiness to conclude a licence agreement with the patent holder on reasonable and non-discriminatory terms, but is not or in any event is not automatically in a position to formulate on its own initiative the terms which the patent holder must grant to the infringer in compliance with the prohibition of discrimination and obstruction incumbent on the patent holder. The patent holder may be required to provide a detailed statement of the grounds for its licence claim in order to enable the party seeking a licence to verify whether the licence claim constitutes an abuse of a dominant position.The offer of a portfolio licence agreement or any other licence agreement comprising further intellectual property rights by a holder of a standard essential patent in a dominant position is in any case in principle unobjectionable from an antitrust point of view provided that it does not oblige the licensee to pay for the use of non-standard essential patents and provided that the remuneration is calculated in such a way that users who wish to develop a product for a specific, geographically limited area are not disadvantaged.The infringer may counter the patent holder’s claim for damages with its own claim for damages based on the non-performance of its right to conclude a licence agreement on reasonable and non-discriminatory terms. Such a counterclaim can only arise if the infringer requests the patent holder to conclude a licence agreement on FRAND terms (initially by indicating its willingness to licence) and the patent holder fails to react to this request in accordance with the obligations incumbent on it by its dominant position, either by unlawfully refusing to conclude such a licence agreement or by not making an offer on FRAND terms despite the patent holder’s willingness to conclude a licence.
