May selling a patent be discriminative?

In a recent post, we had seen that a patentee dominating the market may have to grant a compulsory license to a standard-relevant patent.

It is generally agreed upon that this license has to be granted unter "Fair, Reasonable and Non-Discriminative" (FRAND) conditions.

The Karlsrule Upper District Court (OLG Karlsruhe) had to decide on an action filed against a former patent owner requesing a refund of the damages incurred by the selling of the patent. The plaintiff is a defendant in various co-pending high-stake infringement procedures filed by a non-manufacturing legal entity having bought the patent portfolio including standard-relevant patents.

One of the arguments was that the act of sellig the patents was an abuse of the position dominating the market because the buyer was not bound to the FRAND conditions according to the ETSI standard. The patents were sold while negotiations on licenses were pending such that the legal position of the plaintiff was deteriorated due to the transfer of the patent.

However, the OLG decided clearly that even a position dominating the market may not prevent the party from selling the patent. As a consequence, the indication of plans to sell the patent during the license negotiations may not be considered an abusive menace of the market dominator.