Context: Earlier this month, Dolby announced an agreement to acquire GE Licensing (June 6, 2024 ip fray article). Dolby confirmed to ip fray that this transaction “gives Dolby the opportunity to increase its share in Access Advance (ip fray LinkedIn post).
What’s new: Today the Dusseldorf Local Division (LD) granted an unopposed motion by Access Advance to intervene in a Dolby v. HP standard-essential patent (SEP) enforcement action (PDF (in German)). The fact that defendant HP had disputed the FRAND compliance of Access Advance’s pool licensing terms was sufficient for Access Advance to have a direct and present interest entitling it to an intervention.
Direct impact: With HP’s FRAND affirmative defense being based in no small part on the accusation of Access Advance’s pool licensing terms being non-FRAND, Access Advance will now get access to sealed business information and the opportunity to explain to the court why it believes its terms are in fact FRAND.
Wider ramifications: There are various cases involving Access Advance licensors (particularly, but not only, Dolby and its future subsidiary GE Licensing). A couple of years ago, the Dusseldorf Regional Court took issue with Access Advance’s approach to duplicative royalties. Sooner or later, the UPC will have to decide whether a SEP holder can discharge its FRAND licensing obligation by pointing to a pool license as the only option. German national courts have decided in different cases (with video codecs frequently being litigated in Dusseldorf, and the Munich I Regional Court having made such a decision in an IP Bridge v. Ford case over 4G SEPs) that bilateral licensing offers are not required.
The order granting Access Advance’s motion to intervene, authored by Presiding Judge Ronny Thomas (who is also the judge-rapporteur on this case), starts with two general guidelines (unofficial translation with formatting adjusted to enhance legibility):
- In order for an intervention to be admissible, a legal interest is required. Such legal interest is the case if the intervenor has a direct and present interest in the order or decision sought by the party on whose behalf it seeks to intervene.
- Such legal interest can be identified if
- the patent-in-suit has been contributed to a patent pool;
- the intervenor was tasked with discharging the plaintiff’s FRAND obligations and with licensing the portfolio including the patent-in-suit; and
- the defendant argues that the plaintiff failed to meet its FRAND obligations due to alleged deficiencies of the intervenor’s licensing offers.
The order discusses not only the right to intervene, which is obviously of transcendental importance, but also case-specific issues concerning the protection of confidential business information (CBI).
The defendants (different HP entities) sought the protection of CBI. The plaintiff (Dolby) did not oppose the sealing motion, however, provided that Access Advance would be granted access to CBI relating to correspondence between the pool firm and HP as well as discussions of pool licensing offers.
HP then said that an intervention was prequisite to Access Advance’s access to the CBI in question. A week ago, the court already granted select persons on Dolby’s side access to the CBI, but did not yet resolve the question of Access Advance’s involvement. A day later (June 20, 2024), Access Advance filed its unopposed motion to intervene.
The order clarifies that the “direct and present” interest in an order or decision requires something more than just an interest in, for instance, a cause of action or similarities between an intervenor’s positions and those of a party.
Here, however, Access Advance also assumes responsibility for Dolby’s FRAND licensing obligations and has been negotiating a pool license with HP for quite some time. The order says that Access Advance has a legal interest in seeking the rejection of a FRAND objection effectively (also) targeting the pool firm.
Access Advance will now get access to protected CBI. What makes this technically easy is that both Dolby and Access Advance are represented by Bardehle Pagenberg’s attorneys-at-law Dr. Volkmar Henke and Dr. Tilman Mueller (“Müller” in German), supported by patent attorneys (from the same firm) Dr. Georg Anetsberger and Dr. Johannes Moeller (“Möller” in German).
The defendants — 15 different HP entities — are represented by Freshfields Bruckhaus Deringer’s Dr. Frank-Erich Hufnagel, Dr. Nina Bayerl, Dr. Stephan Dorn, Dr. Sabrina Biedermann, Eva Acker and Vanessa Werlin.