In the proceedings on the merits between Sisvel and Oppo et al., brought before District Court The Hague, both Sisvel and Oppo et al. made claims under article 843a Dutch Code of Civil Procedure (CCP) to order the other party to submit the comparable licenses into the proceedings. Alternatively, both parties requested the District Court to order the disclosure of the comparable licenses on the basis of article 22 CCP.
The District Court, in an order of the cause list judge, adheres parties’ request for an article 22 CCP order. According to the District Court, the disclosure of the comparable licenses is necessary for an adequate discussion of the FRAND-requirements, as the discussion can only take place after Sisvel has disclosed the comparable licenses. The District Court recognizes that the comparable licenses may also include licenses with implementers that are less similar to Oppo et al. (and that the agreements for that reason are possibly less pertinent when it comes to non-discrimination), but the District Court nevertheless believes the comparable licenses are in a way relevant.
The comparable licenses can also shed light on the reasonableness of the FRAND-proposals on both sides and selecting certain agreements would simply not be feasible at this stage. According to the District Court, the disclosure of the licenses entered into by Oppo et al. is equally relevant. Also by means of those licenses, the FRAND-ness of the offer by Sisvel can be determined, but these documents can also be relevant to determine both the FRAND-ness of the counteroffer and whether Sisvel’s statement that Oppo et al. is an unwilling licensee is correct.
The mere circumstance that the District Court in first instance may not decide on FRAND arguments, does not mean that the comparable licenses have become irrelevant. Finally, any decision other than granting the article 22 CCP order could lead to significant delays of the accelerated regime in Dutch patent proceedings.
The District Court, however, does not impose a penalty on the article 22 CCP order at this time, but withholds the right to draw adverse inferences as it considers appropriate if parties do not comply with the order.
In addition, the District Court does impose a confidentiality regime on both parties, on pain of penalty, unless parties have mutually agreed on another arrangement that applies to the order in the meantime.
In its decision, the District Court thus orders Sisvel to send both the District Court and Oppo et al. a digital copy of the following documents, subject to confidentially, insofar as they relate to a FRAND-license on the specific patent in suit (i.e. EP 1 129 536 B1):
- the license agreements that Sisvel has concluded under its MCP-portfolio
- the license agreements that Sisvel has concluded under its Wireless portfolio, including the five license agreements A-E that are mentioned on page 13, par. 5 of the OLG Dusseldorf’s ruling of 30 March 2017 in the case Sisvel/Haier, as well as the license agreement with the party that is referred to as ‘’X5’’ in said case, and other agreements in which Sisvel has FRAND-licensed the patent in suit
- the license agreements that Nokia had concluded under the 47 patent families that were transferred to Sisvel, that are currently part of the Wireless portfolio and that Nokia concluded before the transfer thereof to Sisvel, as well as any other information which indicates whether Nokia has provided SEP/FRAND-licenses for the patent in suit
- Potential side letters, changes and amendments etcetera that relate to the license agreements mentioned under 1. to 3. above, insofar as they could be relevant to the FRAND-defense
- A clean, meaning and unguided, copy of the OLG Dusseldorf ruling of 30 March 2017 in the Sisvel/Haier case.
In its decision, the court orders Oppo et al. to send both the court and Sisvel a digital copy of the license agreements (including the relevant agreed upon amendments and side letters) that one (or more) of them has (have) concluded with SEP holders that relate to the 2G, 3G and/or 4G-technology, subject to the confidentiality regime as set out in this order of the cause list judge.
Finally, the District Court rules that all the information that will be disclosed, other than the ruling of the OLG Dusseldorf, is confidential and that the parties, unless they have agreed on a different regime, will obey the District Court’s confidentiality regime. The District Court’s regime limits access to information to parties’ attorneys and a maximum of two employees, who do not hold commercial positions, employed by Oppo et al. and Sisvel respectively. The information may only be used within the scope of these proceedings on the merits and not for any other purpose. The information may not be disclosed to third parties and the information in the documents about third parties may be anonymised if the information is irrelevant to the outcome of the case at hand. If Sisvel, Oppo et al. or any of their employees violate the terms of the confidentiality regime, they will be subject to a €1m,- penalty for each violation.
