German Court of Appeal decides to stay an injunction in a patent claim case

On 11 May 2009, the Court of Appeal in Karlsruhe issued an order to stay an injunction in a dispute between IPCom and HTC concerning an alleged infringement of essential patents by HTC. IPCom, a patent holder for mobile phone technology, had pursued HTC, a mobile phones manufacturer, in a court in Mannheim for infringing patents relating to GSM and UMTS standards, resulting in an injunction preventing HTC from selling UMTS-based phones in Germany.

The Karlsruhe Court of Appeal decided to stay such injunction against HTC which would have otherwise stopped the mobile manufacturer selling phones in Germany using the patents owned by IPCom.  While the appeal on the substance proceeds, the permanent stay of the injunction would thus allow HTC to use the patents until the end of the appeal.  However, HTC must set aside a guarantee in the meantime.

As the Court’s order is not public yet, it is not clear whether fees were regularly paid or a deposit was made in accordance with the terms of an offered “reasonable” license agreement. According to the ruling of the German Federal Supreme Court of last 6 May 2009, only in such circumstances no injunction can be imposed against a patent user to stop it using the patent at issue. Arguably, the order of the Court of Appeal balanced the principles established by German Federal Supreme Court, to which the order appears to refer to, with the need to avoid that a patent user may lose all its customers if it had to stop the use of the patent at issue altogether.  [Gabriele Accardo]