Sisvel v Acer
The case was decided by the Hague District Court on April 16 2008. Acer (the alleged infringer) requested the Court to order Sisvel to submit copies of licence agreements with third parties to enable Acer to assess whether the offer of a licence made by Sisvel to Acer was FRAND, and in particular whether it was non-discriminatory. The Court rejected Acer's request, not because of lack of legal basis, but because of lack of factual substantiation. Apparently, Acer had not been able to demonstrate sufficiently the likelihood that Sisvel had offered different conditions to third parties.
| Mark GR van Gardingen |
Mark GR van Gardingen is a partner with Brinkhof in Amsterdam. He specializes in European patent litigation, with a focus on pharmaceutical/chemical inventions, electro technology and mechanical engineering. He litigates before the specialized patent courts of The Hague, the Supreme Court, and the Dutch and European Patent Office. Mark represented Korean multinational Samsung in its multi-jurisdictional nullity attack and infringement defence against several of Ericsson's 2G and 3G mobile telephony patents. The case raised novel legal issues in relation to standards and essential patents, including questions about (proof of) infringement and the ETSI IP policy declaration to licence under FRAND conditions. Mark also represents Samsung in proceedings against Sharp in relation to liquid crystal display technology. Mark's other clients include ratiopharm (relating to revocation of Lundbeck's patent for escitalopram and revocation of MSD's patent for alendronate), Novartis (injunction against J&J for infringement of Novartis' patent for extended wear contact lenses; defending Novartis' patent for Lescol XL in nullity proceedings), and Boston Scientific (Supreme Court ruling reinstating Boston Scientific's patent for cardiovascular catheters).
Mark regularly writes articles on patent law in international journals, and is a regular speaker on conferences. He is a member of EPLAW. |
UK
A defendant may, of course, rely on a defence of licence (that is, that he has the patentee's consent). Such a defence negates infringement. The availability of a licence defence will depend on the specific regime surrounding the standard in question. For example, it may be argued that a declaration that licences are available followed by an act of acceptance creates a licence.
Clean hands
A defence of ex turpi causa non oritur actio may also lie where a claimant founds his claim on a wrong that he himself committed. This doctrine may be argued to be similar to the German law dolo petit objection raised by the defendant in the Orange Book case. The principle derives originally from the judgment of Lord Mansfield in Holman v Johnson (1775) 1 Cowp R, a judgment of some antiquity but approved by the House of Lords in Tinsley v Milligan [1994] 1 AC 340. Lord Mansfield said:
... The principle of public policy is this; ex dolo malo non oritur actio. No court will lend its aid to a man who founds his cause of action upon an immoral or an illegal act. If, from the plaintiff's own stating or otherwise, the cause of action appears to arise ex turpi causa, or the transgression of a positive law of this country, there the court says he has no right to be assisted. It is upon that ground the court goes; not for the sake of the defendant, but because they will not lend their aid to such a plaintiff. ... The question therefore is, 'Whether, in this case, the plaintiff's demand is founded upon the ground of any immoral act or contract, or upon the ground of his being guilty of any thing which is prohibited by a positive law of this country'.