• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Licensing agreement denied – Huawei has to pay $10.6 million in damages

3. September 2018

A new U.S. ruling on important mobile standards was passed last Monday. Smartphone manufacturer Huawei has been fined $10.6 million in damages for patent infringement of five PanOptis patents. Huawei had rejected a license agreement.

Licensing agreement for LTE standards at the heart of the dispute

Huawei 9The Chinese smartphone manufacturer Huawei has intentionally infringed five patents of the American PanOptis and its subsidiary Optis Wireless Technology, LLC. Four of the contentious patents are essential for the 4G LTE standard, another patent refers to the video coding standards. The verdict was pronounced on August 27, 2018 after a jury trial in the U.S. District Court for the Eastern District of Texas in Marshall.

Disputed patents by patent transfer to PanOptis

The lawsuit was preceded by a patent transfer. Optis Wireless Technology is the assignee of several patents originally protected by Ericsson or Panasonic. Four of these patents for LTE standards are now covered by the current case.

Assignment of a patent

Patent law regulates the rights of the inventor very precisely. In the event of a possible patent transfer in Germany, patent law and the German Civil Code (BGB) cooperate.

Regulations from the Patent Act

Pursuant to Sec. 15 Patent Law, the right to the patent, the right to grant the patent and the right under the patent may be limited or unlimitedly transferred to others. These patent rights are automatically transferred to the heirs.

Form of transmission

The right to the patent can be transferred by means of an assignment agreement. The assignment is a transaction of disposition, namely the transfer of an object of purchase in accordance with § 398 and § 413 BGB.

Pursuant to Sec. 15 (1) Patent Law, Sec. 22 (1), the transfer of a patent is possible without formality by means of identical declarations of intent and even by conclusive acts. However, in view of the formal procedure, the submission of a certified declaration of transfer or the written patent transfer agreement is required.

The European written form requirement of Art. 72 EPC does not apply to the transfer of the national part of a European patent. This is only relevant for the transfer of European patent applications.

After an effective assignment of a patent, all rights under that patent pass to the new owner. Only the personality rights of the inventor cannot be assigned (true mention of the inventor in the patent register).

License agreement should follow the FRAND regulations

Between 2014 and 2016, PanOptis repeatedly sought a licensing agreement with Huawei on the patents in dispute. In accordance with the generally important standard of LTE technology in mobile communications, the draft of such a license agreement followed the FRAND provisions customary in this area (see also: Info Blog: Nokia’s license plans for 5G smartphones – fair license fee?). Huawei, however, did not respond to this agreement.

Last Monday, the Texas jury confirmed the allegations of patent infringement and ordered Huawei to pay 10.6 million damages. This sum results from the period of patent infringement. On 18 July 2014, PanOptis had demonstrably sent Huawei all the lists of disputed patents. This was considered a reference period, as the jury found that Huawei deliberately infringed all five patents in question.

Souces:

Litigation PanOptis versus Huawei

Law360.com

Picture:

EsaRiutta /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconPatent Law,  Licenses Tag iconPatent transfer,  PanOptis,  license agreement,  Texas,  Licensing,  US Jury,  damages,  Huawei,  U.S.,  USA,  Licensing agreement,  FRAND

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Patent Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

22. February 2022
PAP is in force: UPC possible in 2022

PAP is in force: UPC possible in 2022

8. February 2022
Germany: Value in dispute and costs in proceedings

Germany: Value in dispute and costs in proceedings

3. February 2022
PCT application – does the principle of joint applicants apply?

PCT application – does the principle of joint applicants apply?

1. February 2022
Proof of patent infringement by whistleblower

Proof of patent infringement by whistleblower

19. January 2022
Computer Data identification declared invalid

Computer Data identification declared invalid

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]