- Copy - File number: Delivered on 2 O 103/14 10 March 2015/w. Sosgornik, JFAnge. as clerk of the court's office

District Court Mannheim 2nd Civil Division

In the name of the people Judgement

In the legal dispute Saint Lawrence Communications GmbH represented by the managing director Frank Beel Pettenkoferstraße 4, 80336 Munich - Plaintiff - Counsel: Lawyers Wildanger & coll., Couvenstr. 8, 40211 Düsseldorf (101/14) versus Telekom Deutschland GmbH represented by the managing directors Niek Jan van Damme, Thomas Freude, Michael Hagsphil, Dr. Bruno Jacobfeuerborn, Gero Niemeyer, Dietmar Welslau, Klaus Werner, Dr. Dirk Wössner Landgrabenweg 151, 53227 Bonn - Defendant - Counsel: Lawyers Reimann Osterrieth Köhler Haft & coll., Düsseldorf, Court Box 21 (3954-14FVTV14ß923-Patent A-MD) Interveners: 1. Sony Mobile Communications A.B. Mobilvägen 4, 22188 Lund, Sweden Counsel: Lawyers Freshfields & coll., Feldmühleplatz 1, 40545 Düsseldorf 2. HTC Corporation No. 23 Xinghua Road, Taoyuan City, Taoyuan County 330 Taiwan Counsel: Lawyers Hogan Lovells & coll., Kennedydamm 24.40476 Düsseldorf

3. HUAWEI TECHNOLOGIES Deutschland GmbH Hansaallee 205, 40549 Düsseldorf Counsel: Lawyers Preu Bohlig &Partner and coll., Grolmannstr. 36, 10623 Berlin in re patent infringement the 2nd Civil Division of the District Court in Mannheim, further to the hearing on 10 February 2015 with the participation of

Dr. Kircher, Presiding Judge at the District Court Judge Wedler at the District Court

Dr. Henning, Judge at the District Court has ruled that: 1. The defendant be sentenced, under penalty of an individual fine up to € 250,000,00

for each individual violation, or alternatively additional detention or detention for up to six months, in case of recurrence detention for up to two years, to refrain from offering, bringing onto the market, using, importing or owning for the named purposes

a) A pitch analysis device in mobile telephones for producing an optimal set of pitch

codebook parameters in response to a wideband signal, comprising: - (a) at least two signal paths associated to respective sets of pitch codebook

parameters, wherein: i) each signal path comprises a pitch prediction error calculating device for

calculating a pitch prediction error of a pitch codevector from a pitch codebook search device; and

ii) at least one of said two paths comprises a filter for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device of said one path; and

- (b) a selector for comparing the pitch prediction errors calculated in said at least two signal paths, for choosing the signal path having the lowest calculated pitch prediction error, and for selecting the set of pitch codebook parameters associated to the chosen signal path (claim 1),

in the Federal Republic of Germany (except devices that bear the logo of the firms of Apple, LG, Nokia, Samsung or Blackberry or which originate from these firms), in particular if one of the at least two paths comprises no filter for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device (claim 2); and/or the device to calculate said pitch prediction error, in each signal path, comprises a device to calculate the energy of the corresponding pitch prediction error, and in which the selection device comprises a device to compare energies of the pitch prediction error of the different signal paths and to choose the signal path having

the lowest calculated pitch prediction error energy as the signal path having the lowest calculated energy of the pitch prediction error. (claim 7);

and/or

b) mobile telephones

to purchasers in the Federal Republic of Germany (except mobile telephones that bear the logo of the firms of Apple, LG, Nokia, Samsung or Blackberry or which originate from these firms) for

a pitch analysis method for producing an optimal set of pitch codebook parameters in response to a wideband signal, comprising:

- (a) in at least two signal paths associated to respective sets of pitch codebook parameters, calculating, for each signal path, a pitch prediction error of a pitch codevector from a pitch codebook search device; - (b) in at least one of said two signal paths, filtering the pitch codevector before supplying said pitch codevector for calculation of said pitch prediction error of said one path; and - (c) comparing the pitch prediction errors calculated in said at least two signal paths, choosing the signal path having the lowest calculated pitch prediction error, and selecting the set of pitch codebook parameters associated to the chosen signal path (indirect infringement of claim 10);

in particular if one of the at least two paths comprises no filter for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device (claim 11); and/or the device to calculate said pitch prediction error, in each signal path, comprises a device to calculate the energy of the corresponding pitch prediction error, and in which the selection device comprises a device to compare energies of the pitch prediction error of the different signal paths and to choose the signal path having the lowest calculated pitch prediction error energy as the signal path having the lowest calculated energy of the pitch prediction error (claim 16); and/or

c) to refrain from offering, bringing onto the market, using, importing or owning for

the named purposes an encoder in mobile telephones having a pitch analysis device as defined in claim 1 for encoding a wideband input signal, said encoder comprising:

- (a) a linear prediction synthesis filter calculator responsive to the wideband signal for producing linear prediction synthesis filter coefficients;

- (b) a perceptual weighting filter, responsive to the wideband signal and the linear prediction synthesis filter coefficients, for producing a perceptually weighted signal; - (c) an impulse response generator responsive to said linear prediction synthesis filter coefficients for producing a weighted synthesis filter impulse response signal; - (d) a pitch search unit for producing pitch codebook parameters, said pitch search unit comprising:

i) said pitch codebook search device responsive to the perceptually weighted signal and the linear prediction synthesis filter coefficients for producing the pitch codevector and an innovative search target vector; and

ii) said pitch analysis device responsive to the pitch codevector for selecting from said sets of pitch codebook parameters, the set of pitch codebook parameters associated to the path having the lowest calculated pitch prediction error;

- (e) an innovative codebook search device, responsive to the weighted synthesis filter impulse response signal, and the innovative search target vector, for producing innovative codebook parameters, and - (f) a signal forming device for producing an encoded wideband signal comprising the set of pitch codebook parameters associated to the path having the lowest pitch prediction error, said innovative codebook parameters, and said linear prediction synthesis filter coefficients (claim 19), in the Federal Republic of Germany (except encoders in mobile telephones that bear the logo of the firms of Apple, LG, Nokia, Samsung or Blackberry or which originate from these firms); in particular if one of the at least two paths comprises no filter for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device (claim 20); and/or the device to calculate said pitch prediction error, in each signal path, comprises a device to calculate the energy of the corresponding pitch prediction error, and in which the selection device comprises a device to compare energies of the pitch prediction error of the different signal paths and to choose the signal path having the lowest calculated pitch prediction error energy as the signal path having the lowest calculated energy of the pitch prediction error (claim 25);

and/or

d) to refrain from offering, bringing onto the market, using, importing or owning for

the named purposes cellular mobile transmitter/receiver units comprising:

- (a) a transmitter including an encoder to encode a wideband signal in accordance with claim 19 and a transmission circuit for transmitting the encoded wideband signal; and

- (b) a receiver including a receiving circuit for receiving a transmitted encoded wideband signal and a decoder for decoding the received encoded wideband signal (claim 37), in the Federal Republic of Germany (except cellular mobile transmitter/receiver units in mobile telephones that bear the logo of the firms of Apple, LG, Nokia, Samsung or Blackberry or which originate from these firms); in particular if one of the at least two paths comprises no filter for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device (claim 38); and/or the device to calculate said pitch prediction error, in each signal path, comprises a device to calculate the energy of the corresponding pitch prediction error, and in which the selection device comprises a device to compare energies of the pitch prediction error of the different signal paths and to choose the signal path having the lowest calculated pitch prediction error energy as the signal path having the lowest calculated energy of the pitch prediction error (claim 43).

2. The defendant shall bear the costs of the legal dispute, with the exception of the

costs of the interveners, which will be borne by themselves. 3. The ruling is provisionally enforceable on provision of a security with respect to the

costs of

- € 10,000,000 with respect to number 1 - 120% of the respective amount to be enforced.

Facts of the case

The parties most recently argued about injunctive reliefs with regard to alleged patent infringement. The plaintiff, a patent licensing company organised in the legal form of a GmbH with its statutory registered offices and business premises in Munich, has been registered as the proprietor of the European patent EP 1 125 276 B1 (hereinafter referred to as the patent-in-suit) since 28.08.2014, relating to a technique and device for adaptive bandwidth pitch search in coding wideband signals. The granting of the patent that was registered on 27.10.1999 was published on 06.08.2003. It claims the priority from 27.10.1998 of the Canadian document CA 2,252,170 (Appendix B16, hereinafter referred to as CA 170). The applicant and first proprietor of the patent-in-suit was the Canadian firm of Voice Age Corporation that was registered in the patent register directly before the plaintiff (hereinafter referred to as Voice Age). The parties are in dispute as to whether the proprietorship of the patent-in-suit has been transferred from Voice Age to the plaintiff. In this connection, they submit the following contractual documents, amongst others:

- agreement from 27.11.2013 between Voice Age and Acacia Research Group LLC (hereinafter referred to as ARG LLC) (Appendix K5a)

- agreement from 10.12.2013 between ARG LLC and Saint Lawrence Communications LLC (hereinafter referred to as SLC LLC) (Appendix K 6)

- agreement from 29.12.2013 between Voice Age and SLC LLC (Appendix K5b) - agreement from 2.07.2014 between SLC LLC and the plaintiff (Appendix K4a and

b) The patent-in-suit is the subject matter of several actions of nullity submitted to the Federal Patent Court, for example the action of nullity of the intervener Sony Mobile Communications A.B. from 06.11.2014 submitted as the set of exhibits B 21, the action of nullity of the interpleaders Amazon EU S.a.r.l. from 06.11.2014 submitted as the set of exhibits B 22, the action of nullity of HTC Europe Co. Ltd. from 29.12.2014 submitted as the set of exhibits HL 7 as well as the action of nullity of HUAWEI Technologies Düsseldorf GmbH from 23.12.2014 submitted as Appendix PB 10. The plaintiff bases their legal action on a direct infringement of claims 1, 19 and 37 in conjunction with the sub-claims 2, 7, 20, 25, 38 and 43 as well as an indirect infringement of claim 10 in conjunction with the sub-claims 11 and 16. Claim 1 in the original English version reads: A pitch analysis device for producing an optimal set of pitch codebook parameters in response to a wideband signal, comprising: a) at least two signal paths associated to respective sets of pitch codebook parameters, wherein: i) each signal path comprises a pitch prediction error calculating device (307, 308) for calculating a pitch prediction error of a pitch codevector from a pitch codebook search device (301) and ii) at least one of said two paths comprises a filter (305) for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device of said one path; and b) a selector (309) for comparing the pitch prediction errors calculated in said at least two signal paths, for choosing the signal path having the lowest calculated pitch prediction error, and for selecting the set of pitch codebook parameters associated to the chosen signal path. Claim 19 reads:

An encoder having a pitch analysis device as defined in claim 1 for encoding a wideband input signal, said encoder comprising: a) a linear prediction synthesis filter calculator responsive to the wideband signal for producing linear prediction synthesis filter coefficients; b) a perceptual weighting filter, responsive to the wideband signal and the linear prediction synthesis filter coefficients, for producing a perceptually weighted signal; c) an impulse response generator responsive to said linear prediction synthesis filter coefficients for producing a weighted synthesis filter impulse response signal; d) a pitch search unit for producing pitch codebook parameters, said pitch search unit comprising: i) said pitch codebook search device responsive to the perceptually weighted signal and the linear prediction synthesis filter coefficients for producing the pitch codevector and an innovative search target vector; and ii) said pitch analysis device responsive to the pitch codevector for selecting, from said sets of pitch codebook parameters, the set of pitch codebook parameters associated to the path having the lowest calculated pitch prediction error; d) an innovative codebook search device, responsive to the weighted synthesis filter impulse response signal, and the innovative search target vector, for producing innovative codebook parameters; and e) a signal forming device tor producing an encoded wideband signal comprising the set of pitch codebook parameters associated to the path having the lowest pitch prediction error, said innovative codebook parameters, and said linear prediction synthesis filter coefficients. Claim 37 reads: A cellular mobile transmitter/receiver unit comprising: a) a transmitter including an encoder for encoding a wideband signal as recited in claim 19 and a transmission circuit tor transmitting the encoded wideband signal; and b) a receiver including a receiving circuit for receiving a transmitted encoded wideband signal and a decoder for decoding the received encoded wideband signal. Claim 10 reads: A pitch analysis method for producing an optimal set of pitch codebook parameters in response to a wideband signal, comprising: a) in at least two signal paths associated to respective sets of pitch codebook parameters, calculating, for each signal path, a pitch prediction error of a pitch codevector from a pitch codebook search device; b) in at least one of said two signal paths, filtering the pitch codevector before supplying said pitch codevector for calculation of said pitch prediction error of said one path; and c) comparing the pitch prediction errors calculated in said at least two signal paths, choosing the signal path having the lowest calculated pitch prediction error, and selecting the set of pitch codebook parameters associated to the chosen signal path. With respect to the overall content of the patent-in-suit document and the wording of the sub-claims, we refer to the patent-in-suit document (Appendix K 1) and its translation (Appendix K 3). The defendant is a large German telecommunications company and distributes. amongst other things, mobile telephones of the type "Sony Xperia Z2" (Appendix K 8) via its web site in the Federal Republic of Germany, whereby it becomes clear from the technical specifications for the mobile telephone "Xperia Z2", submitted in Appendix K 9, that this supports the audio format "AMR-WB". The plaintiff bases its explanations on this infringing embodiment vicariously for all mobile telephones during whose operation the AMR-WB 3GPP TS 26.190 V. 11.0.0 standard is realised (in future referred to uniformly as the contested embodiment). The patent-in-suit was judged to be standard-setting essential with respect to the Adaptive Multi-Rate-Wideband Standard (hereinafter referred to as "AMR-WB") by the Patent Evaluation Consortium (lPEC) (Appendix WKS2). This is wideband speech encoding standard whose functions include a greatly improved quality of speech with a

broader speech bandwidth compared to narrow-band speech encoding. AMR-WB is codified as an international standard, amongst other things, as 3GPP AMR-WB speech codec, by the standard document 3GPP TS 26.190 V11.0.0 (Appendix WKS1, hereinafter referred to as the "standard"). The mode of the operation of that section of the standard that is of interest here is demonstrated by the Figure shown below from Appendix WKS1 (page 49):

Figure 2 Detailed block diagram 01 the ACELP encoder

Further on in this document on page 14 we read: "Closed-loop pitch analysis is then performed (to find the pitch lag and gain), using the target x(n) and impulse response h(n), by searching around the open-loop pitch lag. Fractional pitch with 1/4th or 1/2nd of a sample resolution (depending on the mode and the pitch lag value) is used. The interpolating filter in fractional pitch search has low-pass frequency response. Further, there are two potential low-pass characteristics in the adaptive codebook and this information is encoded with 1 bit." And later on page 25 we read: "In order to enhance the pitch prediction performance in wideband signals, a frequency-dependant pitch predictor is used. This is important in wideband signals since the periodicity doesn't necessarily extend over the whole spectrum. In this algorithm, there are two signal paths associated to respective sets of pitch codebook parameters, wherein each signal path comprises a pitch prediction error calculating device for calculating a pitch prediction error of a pitch codevector from a pitch codebook search device. One of these two paths comprises a low-pass filter for filtering the pitch codevector and the pitch prediction error is calculated for these two signal paths. The signal path having the lowest calculated pitch prediction error is selected, along with the associated pitch gain." Reference is made to the standard with respect to further details. The standard is also expressed amongst other things in the reference code 3GPP TS 26.173 V11.0.0 (Appendix B14a-c; hereinafter referred to as TS173). The standard was set by the European Standards Telecommunications Institute (ETSI) on 10.04.2001. The section of the standard reproduced above is based on a suggestion by the firm of Nokia. The applicant for the patent-in-suit, Voice Age, only became a

member of ETSI in 2004 and was therefore not involved in the standardisation procedure. ETSI was not aware of the registration of the patent-in-suit during the setting of the standard, it was only disclosed to ETSI on 29.05.2001 (see AS 708). Following the specification of the standard, Voice Age several times expressed its willingness to grant a license for the patent-in-suit on FRAND terms, for example in a letter from 31.07.2014 to the defendant. Unlike the individual manufacturers, the defendant has to date expressed no interest in a license for the patent-in-suit. The plaintiff argues, they became the proprietor of the patent-in-suit. The patent-in-suit and the claims based on an infringement of the patent-in-suit were initially transferred from the original applicant Voice Age via ARG LLC to SLC LLC and then from these to the plaintiff. The documents submitted to prove this chain of title are genuine. The acting persons in each case were authorised to represent. Insofar as the operative effect of the agreements were made dependent on conditions, these occurred. The defendant directly infringed on claims 1, 19 and 37 literally and indirectly on claim 10 literally by offering and distributing the contested embodiment. In particular, the standard also implements the at least "two signal paths" incorporated directly or through back reference in the group of features 2, which also results from the reference code for the standard TS173 submitted by the defendant in Appendix B 14a to B 14c. The patent-in-suit neither demands that the devices to calculate a pitch prediction error in accordance with the claim have to be hardware devices, nor are two signal paths only given when two separate devices to calculate a pitch prediction error and at least in one case a filter is present. Because the devices are only defined according to the claims of the patent-in-suit through their respective function and not by a certain kind of their implementation so that an implementation purely by software is also in accordance with the patent. Furthermore, it cannot be deduced from the patent claims that the calculations have to take place simultaneously in the respective signal paths, so that consecutive calculations also fall under the patent claims. The patent-in-suit will withstand the nullity attacks. It rightly claims priority since at least two signal paths followed from Figure 3 of CA 170, at least one of which comprises a filter, so that WO 001025305 A1 can be regarded as being not pre-published. The citations Qian and Chen already lack the disclosed wideband signal since the document deals with narrow-band encoding. The patent-in-suit cannot be denied an inventive step; an inadmissible enhancement does not exist if only because the claims of the originally submitted version of the PCT application and the granted claims are identical. Nor is the plaintiff prevented under antitrust law from asserting the raised claims by way of legal action. The fact that individual interveners may have been willing to take out a license does not benefit the defendant since the so-called antitrust objection of compulsory license is an objection derived from § 242 BGB (dolo petit) whose prerequisites would thus have to be fulfilled by the defendant, which is not the case. In addition, the interveners were not sued by the plaintiff, so that they cannot invoke this objection because they themselves were able to (continue to) distribute the contested embodiment in the Federal Republic of Germany. The objection of a so-called patent ambush does not work either because the plaintiff was never a member of ETSI and Voice Age only became a member in 2004, so that they were not subject to its regulations at the time the standard was resolved.

After the defendant had given third-party notice to the firms of ZTE Deutschland GmbH, Sony Mobile Communications A.B., Amazon EU S.a.r.l., HTC Corporation and HUAWEI TECHNOLOGIES Deutschland GmbH with writs from 24.10.2014 and to the firms of Motorola Mobility Germany GmbH and Doro Deutschland GmbH with writs from 05.11.2014, the firms of HTC Corporation entered into the legal dispute on the side of the defendant (30.12.2014) as intervener to 2, Sony Mobile Communications A.B. (23.12.2014) as intervener to 1 and HUAWEI TECHNOLOGIES Deutschland GmbH as intervener to 3 (23.12.2014). After the annex claims to information, recall, destruction and ascertainment of the liability for damage, which had originally been asserted in the legal action, had been severed with the consent of the parties and the interveners the hearing and the separate proceedings had been stayed by mutual consent in accordance with § 148 ZPO, the plaintiff finally applied for: as is known. The defendant and all interveners apply for a dismissal of the action. The defendant and its interveners argue, that the legal action is inadmissible since the plaintiff has to lodge security for costs in accordance with § 110 ZPO. The plaintiff does not have an actual administrative seat in a member state of the European Union and an exemption is not fulfilled. Even if one were to assume an administrative seat within the country, a consideration of the external circumstances of the foundation of the plaintiff and their equipment with material and personnel means would make it clear that they were founded for the sole purpose of giving their superior companies the opportunity of evading an obligation to lodge security for costs, so that the plaintiff's invocation of the formal presence of an administrative seat within the country is then an abuse of rights. Furthermore, the plaintiff has no direct standing. The state of the register in its favour since 28.08.2014 does not help the plaintiff further because according to the adjudication of the Federal Court of Justice, the material legal situation alone is decisive. In the present case, the entry in the register does not have an indicative effect for a material-legal entitlement of the plaintiff either since this only picks up on the authorisation check carried out by the Patent Office. However, this is not reach back unbroken to the pre-registered company (Voice Age), since following the plaintiff's application an interim acquisition took place by SLC LLC. In any case, the operative effect of the plaintiff's acquisition of rights is opposed by the legally-inhibiting objection of § 138 BGB, since the present agreements show that this was abused to put forward a party with no assets to conduct the case so as to avoid a legal claim for the compensation of costs. The contested embodiments do not directly use claims 1, 19 and 37 literally nor do they indirectly use claim 10 literally. All of the asserted claims namely require the existence of "signal paths" that are defined in hardware devices in claim 1 and 10, and each of which would have to have a separate device pitch prediction error calculating device and an additional filter in at least one signal path. However, such devices are not required according to the standard to which reference is made. The standard namely provides for a software implementation which

provides for neither separate calculating devices nor a number of signal paths. This results from the reference code submitted in Appendix B 14a to B 14c. In any case, the legal dispute should be stayed until a decision is reached on the action of nullity asserted against the patent-in-suit because this would almost certainly be successful. The main and sub-claims that have been asserted are not entitled to the claimed priority of 27.10.1998 from CA 170 so that all of these claims would only have the priority of the registration date (27.10.1999). CA 170 namely discloses at least three signal paths, but in any case two paths with filters, though not the variant of two paths with only one filter that is protected by the patent-in-suit. However, this means that the patent-in-suit is prejudicial to the novelty of the parallel registration WOOO/025305. Furthermore, the patent-in-suit was also affected by the article published in 1994 "Pseudo-three-tap pitch filters in a low bit-rate CELP speech decoder" by Yasheng Qian, Gebrael Chahine and Peter Kabal (Appendix NK 6 in Appendix HL 8; hereinafter referred to as "Qian") in a manner that is prejudicial to the novelty. The feature of the "wideband signal" is not a clear criterion of demarcation as evidenced by Figure 2 of the standard. With respect to the alleged patent infringement, the intervener to 2 argues, that the patent-in-suit is not essential for the technique specified in the last three paragraphs of section 5.7 of the standard to search a pitch codebook. Rather, this part of the standard is only optional and is not absolutely necessary for an implementation in accordance with the standard. Since the wording of section 5.7 of the standard is not consistent with the specifications for the technical implementation of this standard either, in particular the reference codes (TS173 and TS204), the user must still have the chance to implement the technology in accordance with the reference codes, so that it is not absolutely imperative that the wording of section 5.7 of the standard has to be complied with. A conclusive allegation of an infringement by the plaintiff is therefore lacking. As can be seen from the mobile telephone "HTC Touch HO", the patent-in-suit is not infringed. Because the intervener to 2 was informed by the manufacturer of the processor installed therein, that this only implements the standard in accordance with the reference code 3 GPP TS 26.173 (Appendices HL 3 and 3a = TS173). The legal dispute was to be stayed in any case in view of the instituted action of nullity since the patent-in-suit is not new compared to the citation Chen (Appendix NK 8 in Appendix HL 8) either and as for the rest, there is no inventive step. Furthermore, the patent-in-suit has been inadmissibly enhanced. Both the defendant and all interveners also raise the so-called antitrust objection of compulsory license. Since the plaintiff did not approach the interveners before the explicit attack on the devices of the interveners to inform them of the alleged patent infringement and to request that they take out a license, the prerequisites were not satisfied under which forbearance can be demanded from standard-setting essential patents. The regulations would apply here that result from the conclusions of the advocate general of the Court of Justice of the European Union in the legal matter C 170/13 HUAWEI Technologies. The action against the defendant as the purchase of the interveners' devices exacerbates the abuse of Art. 102 TFEU that has already been satisfied. Further prerequisites, in particular those from the judgement of the Federal Court of Justice in the matter Orange Book Standard, would not have to be satisfied since the facts of the case that have to be judged here differ decisively in essential details that were decided there. The intervener to 3 also argues, that this is a classic case of a so-called patent ambush. The patent applicant evaded a duty of disclosure that applied during the standardisation procedure. By keeping secret

the effected registration, it created the impression that the suggestion was not patented and could be used without any obstacles under patent law or licenses. The patent enforcement that has now taken place by means of legal action following a concealment of the patent registration during the standardisation procedure in breach of its duty is an abuse of law according to Art. 102 TFEU and § 242 BGB which has to lead to the rejection of the legal action. In order to complete the picture, reference is made to the writs and appendices exchanged between the parties and the interveners as well as the protocol of the hearing on 10.02.2015.

Grounds

A. Legitimacy

I. The chamber is called on to reach a decision in accordance with § 32 ZPO (German Code of Civil Procedure) and Art. 5 No. 3 EUGWO (the regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters), in conjunction with § 14 ZuVOJu (court jurisdiction ordinance). The defendant is charged with nationwide infringement of the patent-in-suit through the distribution of the contested embodiment, so that there is also a tortious place of jurisdiction in Baden-Württemberg.

II. Contrary to the opinion of the defendant, the plaintiff does not have to lodge any security for costs in accordance with § 110 para. 1 ZPO either. 1. According to this regulation, plaintiffs who do not have their habitual place of abode in

a member state of the European Union or in a signatory state to the EEA Treaty have to lodge security for the costs at the defendant's demand (paragraph 1), unless one of the exceptions in paragraph 2 applies. The domicile of legal entities is decisive for the question of whether security has to be lodged for costs (BGH, judgement from 30.06.2004 - VIII ZR 273/03, NJW-RR 2005.148 recital 9).

The question left unanswered by the Federal Court of Justice in its decision as to whether the statutory registered offices - in this case in Munich - of the prosecuting GmbH or - corresponding to the "habitual place of abode" of natural persons – the actual administrative seat applies, does not have to be decided. Because the high court adjudication cited by the defendant, which in individual cases pleads in favour of the actual administrative seat, only arrives at this result - by way of an interpretation of § 110 ZPO and in consideration of the statutory assessments on which this is based - if a GmbH that has been effectively founded according to German law does not maintain business premises within the country and at its statutory registered offices or any other valid address (OLG Karlsruhe, NJW-RR 2008, 944 recital 18 ff.; OLG Düsseldorf, judgement from 20.12.2012 - 1-2 U 25/10, juris recital 18 ff.). This is not so in the present case.

2. The plaintiff does have business premises at its statutory registered offices in Munich

and thus a valid address within the country. As can be seen from the photos submitted in the defendants' pleas (therein page 19 ff.), the plaintiff maintains both business premises and a labelled letter box that can be used to serve documents on the first floor of Pettenkofer Straße 4, as evidenced by the company sign. In accordance with the lease agreement concluded on 26.06.2014 and submitted in Appendix K 20, the plaintiff has rented the 2 1/2 rooms therein for the purpose of its business and, as evidenced by the printout of a homepage enclosed as Appendix K 19, is also engaged in a commercial activity there. This is not altered by the fact that as a subsidiary of an internationally active group of companies, it has to base some of its decisions on resolutions that have been taken by entities further up in the hierarchy, rather, this is in fact typical for companies within a group.

Since the goal of the regulation of § 110 ZPO is (only) to protect the defendant against the typical difficulties - enforcement and recognition - that arise from the fact

that they have to realise their claim for a reimbursement of expenses abroad, the objection of security for costs is always inapplicable when the recognition and enforcement of the decision on costs is secured at the location of the habitual place of abode (OLG Karlsruhe, op.cit., recital 19; OLG Düsseldorf, op.cit., recital 18, in each case citing further literature, and with reference to BT-Dr 13/10871, p. 16f.). After what has been said above, this is the case for the plaintiff (see also the interlocutory judgement of the District Court Düsseldorf from 22.01.2015 - 4a 73/14 in the parallel proceedings against Vodafone, Appendix K 37).

3. Nor was the plaintiff obliged to lodge security for costs from a consideration of an

abuse of law. If - as explained above under 2. - the purpose of the regulation of § 110 ZPO is solely to protect the defendant against the typical difficulties of enforcing a claim for the reimbursement of costs abroad, an invocation of § 242 BGB must regularly fail if this ratio legis is already satisfied by the fact that the plaintiff has their habitual place of abode within the territory of the European Union, and here even within the territory of the Federal Republic of Germany. Because there are then no legal difficulties in serving and enforcing a title of costs. The fact that there is also a risk of economic default is insignificant in view of the intent and purpose of § 110 ZPO and immanent in every case for an enforcement of money. Notwithstanding the above, the plaintiff has submitted a confirmation from its parents company in Appendix K 21, according to Art. 2.1 of which the latter irrevocably assumes any claims for costs of the defendant against the plaintiff. Any invocation of an abuse of law is therefore finally ruled out.

4. This decision required no interlocutory judgement but could be issued with the final

judgement (see here OLG Frankfurt, decision from 04.09.1984 - 5 W 12/84, juris citing further literature.).

B. Reasonable justification

The legal action is henceforth substantiated to the extent that has been submitted for a decision. The plaintiff is entitled to the injunctive reliefs it asserted against the defendant in accordance with art. 64 EPC in conjunction with § 139 para. 1 PatG. The plaintiff has direct standing (more in I.). The contested embodiment that is offered and brought onto the market by the defendant in the Federal Republic of Germany directly uses claims 1, 10 and 37 literally and indirectly uses claim 10 literally (more in II.). A stay of proceedings in the legal dispute in accordance with § 148 ZPO was out of the question (more in III.). The defendant is not entitled to antitrust objections and/or these are not applicable (more in IV.).

I. The plaintiff has direct standing. This already results from the entry in the register of the German Patent and Trademark Office with respect to the future injunctive relief. 1. In accordance with the adjudication of the Federal Court of Justice (judgement from

07.05.2013 - X ZR 69/11, BGHZ 197, 196 recital 51 ff. - milling process), the entry in the patent register has no influence over the material legal situation. This has neither a constitutive nor a pre-emptory effect. Its legitimising effect is restricted to the entitlement to conduct legal disputes from the patent. This means that the material legal situation is decisive for the legitimacy as the proper party in the infringement action and not the entry in the patent register. However, the entry in the patent

register has a great indicative effect for an assessment of the question as to who the material-legal proprietor of the patent is (BGH, op.cit., recital 58). Because according to § 30 para. 3 p. 1 PatG, the Patent Office may only note a change in the person of the proprietor in the register if proof has been provided to it of this. In view of this fact, an infringement action does not regularly require any further submission or production of evidence if a party cites a legal status that is obvious from the patent register. A party who - like the defendant - claims that the material legal situation differs from the status in the register, has to bring concrete points of reference that show the inaccuracy (BGH, op.cit., recital 59 f.).

In other words, it has to specifically explain why the register beneficiary is not in fact the proprietor of the patent. The manner in which the status in the register has come about is irrelevant for this obligation. Insofar, the same applies as for the assumption of § 891 BGB, where even the breach of procedural rules during the entry does not change the presumption of conformity (see Palandt/Bassenge, BGB, 74th edition, § 891 recital 8 citing further literature; see § 2365 BGB for a similar situation when issuing a certificate of inheritance). The obligation thus also exists if the status in the register - as is the case here - is only based on a formal consensus of the pre-registered company and the newly registered company within the meaning of § 28 para. 2 DPMAV.

2. This obligation has not been discharged by the defendant in the present case. They

have only contested with ignorance the compliance of the respective original agreements with the submitted copies, the authenticity of the signatures, the power of the acting persons and the occurrence of various conditions in the agreements, without specifically stating why the register incorrectly reflects the material legal situation. In accordance with the adjudication of the Federal Court of Justice cited above, this is not enough even if one were not to assume a reversal of the burden of proof - which, however, appears quite conceivable (see BGH, op.cit. recital 61). Because Voice Age was formerly registered as the proprietor of the patent-in-suit, and the plaintiff has been registered as the new proprietor since 28.08.2014, so that - based on § 28 para. 2 DPMAV - the formal principle of consensus would be satisfied. The fact that the patent-in-suit, according to the further evidence of the plaintiff, was not transferred directly from the originally registered Voice Age to itself but via at least once interim step (acquisition from SLC LLC through the agreement dated 02.07.2014, which in turn was temporarily proprietor des patent-in-suit via the ARG LLC in accordance with the agreements from 27.11.2013 and 10.12.2013), is, on the other hand, irrelevant.

II.

The contested embodiments that are offered and brought onto the market by the defendant in the Federal Republic of Germany directly use claims 1, 10 and 37 literally and indirectly use claim 10 literally. 1. The patent-in-suit relates to a technique and device for adaptive bandwidth pitch

search in coding wideband signals. It is from the field of audio compression and deals with digitally encoding a wideband signal, in particular a speech signal, with respect to the transmission or storage and synthesizing of said wideband acoustic signal.

Such speech encoders, which convert speech signals into a digital pitchstream that is then transmitted via a communication channel or saved in a storage medium, were already known in the prior art. The speech signal was also digitised therein (i.e.

scanned and normally quantized with 16 bits per sampling value), whereby the job of the speech encoder here was to show these digital sampling values with a smaller number of bits, though at the same time to maintain a good subjective quality of speech. On the decoder side, the bitstream that is transmitted or stored in this way is then converted back into an acoustic signal. One of the best techniques in the previously known prior art that can achieve a good compromise between quality/bit rate is the so-called Code Excited Linear Prediction (CELP), which is disclosed, for example, in EP 0421444. In this, the scanned speech signal is processed in consecutive blocks of sampling values that are called frames and then split into smaller sub-blocks (subframes). An excitation signal that normally consists of two components is determined in each subframe: one from the earlier excitation (also called the adaptive or pitch codebook) and one from an innovative (= fixed) codebook. This CELP model was very successful for encoding telephone band signals in which the audio signal bandwidth was limited to 200 to 3,400 Hz and which was only scanned with 8,000 sampling values per second. In the wideband signal on which the invention is based, however, the acoustic signal is limited to a bandwidth of 50 to 7,000 Hz and scanned with 16,000 sampling values per second. With this in mind, difficulties arise when the CELP model that has been optimised for the telephone band is used for wideband signals. Accuracy problems arise during the implementation and the CELP model often uses up most of its encoding bits in the low frequency range. Furthermore, the pitch contents in the spectrum of voiced segments with wideband signals do not extend over the entire range of the spectrum, so that in the case of wideband signals, the existing pitch search structures do not work very efficiently. It is therefore important with respect to wideband signals that the pitch analysis be improved with a closed control loop so as to better adjust deviations in the degree of voicing. With this in mind, the patent-in-suit sets itself the task of creating a technique and device for the efficient encoding of wideband acoustic signals (7,000 Hz) using CELP encoding techniques that use an improved pitch content to obtain reconstructed acoustic signals in a higher quality. This object is to be solved according to the invention through devices with the features of claims 1, 19 and 37 and through a technique with the features of claim 10 (analysis of features in Appendices K 13 - K 16):

Claim 1

1 A pitch analysis device 1.1 for producing an optimal set of pitch codebook parameters in response to a wideband signal, comprising: 2. at least two signal paths associated to respective sets of pitch codebook parameters: 2.1 each signal path comprises a pitch prediction error calculating device (307, 308) 2.1.1 for calculating a pitch prediction error of a pitch codevector from a pitch codebook search device (301) 2.2 at least one of said two paths comprises a filter (305) 2.2.1 for filtering the pitch codevector before supplying said pitch codevector to the pitch prediction error calculating device of said one path; 3. a selector (309); 3.1 the selector (309) serves for comparing the pitch prediction errors calculated in said at least two signal paths 3.2 to choose the signal path having the lowest calculated pitch prediction error, and 3.3 to select the set of pitch codebook parameters associated to the chosen signal path.

Claim 10

1. A pitch analysis method a) for producing an optimal set of pitch codebook parameters in response to a wideband signal, comprising the following steps: 2. in at least two signal paths associated to respective sets of pitch codebook parameters 2.1 calculating, for each signal path, a pitch prediction error of a pitch codevector from a pitch codebook search device; 2.2 in at least one of said two signal paths, filtering the pitch codevector before supplying said pitch codevector for calculation of said pitch prediction error of said one path; 3. and (selection as follows) 3.1 comparing the pitch prediction errors calculated in said at least two signal paths, 3.2 choosing the signal path having the lowest calculated pitch prediction error, and 3.3 selecting the set of pitch codebook parameters associated to the chosen signal path.

Claim 19

1. An encoder 1.1 having a pitch analysis device as defined in claim 1 for encoding a wideband input signal, said encoder comprising: 2. a linear prediction synthesis filter calculator responsive to the wideband signal for producing linear prediction synthesis filter coefficients; 3. a perceptual weighting filter, responsive to the wideband signal and the linear prediction synthesis filter coefficients, for producing a perceptually weighted signal; 4. an impulse response generator responsive to said linear prediction synthesis filter coefficients for producing a weighted synthesis filter impulse response signal; 5. a pitch search unit for producing pitch codebook parameters, said pitch search unit comprising: 5.1 said pitch codebook search device responsive to the perceptually weighted signal and the linear prediction synthesis filter coefficients for producing the pitch codevector and an innovative search target vector; and 5.2 said pitch analysis device responsive to the pitch codevector for selecting, from said sets of pitch codebook parameters, the set of pitch codebook parameters associated to the path having the lowest calculated pitch prediction error; 6. an innovative codebook search device, responsive to the weighted synthesis filter impulse response signal, and the innovative search target vector, for producing innovative codebook parameters; and 7. a signal forming device tor producing an encoded wideband signal comprising 7.1 the set of pitch codebook parameters associated to the path having the lowest pitch prediction error, 7.2 said innovative codebook parameters, and 7.3 said linear prediction synthesis filter coefficients.

Claim 37

1. A cellular mobile transmitter/receiver unit comprising: 2. a transmitter 2.1 including an encoder for encoding a wideband signal as recited in claim 19 and 2.2 a transmission circuit tor transmitting the encoded wideband signal; and 3. a receiver 3.1 including a receiving circuit for receiving a transmitted encoded wideband signal and 3.2 a decoder for decoding the received encoded wideband signal.

2. The contested embodiment directly uses claim 1 literally.

a) According to the specification in Art. 69 para. 1 sentence 1 EPC, the scope of a patent is determined by the patent claims. The technical meaning that is to be attributed to the wording of the patent claim by a person skilled in the art first has to be ascertained taking into account the description and drawings so that this determination can be carried out in such a way that the goals of article 1 of the interpretive protocol are achieved. Although a literal understanding of the patent claims is not suitable to comprehend the protected object, the protected subject

matter, on the other hand, may not be enhanced through a generalisation of specific solutions set out in the claim (see Ballhaus/Sikinger, GRUR 1986, 337, 341). In particular, a narrower patent claim cannot be interpreted according to a broader description. Rather, the patent claim has priority over the description (BGH, judgements from 7 September 2004 - X ZR 255/01, BGHZ 160, 204, 209 = GRUR 2004.1023 - bottom separating unit; from 13 February 2007 - X ZR 74/05, BGHZ 171, 120 = GRUR 2007, 410 - chain wheel arrangement I; from 17 April 2007 - X ZR 72/05, BGHZ 172, 88, 97 = GRUR 2007,778,779 – drawing machine tensile unit I; from 4 February 2010 - Xa ZR 36/08, GRUR 2010, 602 - joint arrangement). Anything that is not recorded in the patent claims cannot fall under the protection of the patent. Although the description and the drawings are to be cited to interpret the patent claims according to art. 69 para. 1 sentence 2 EPC, since they serve to explain the patent claims, their citation may not lead to an enhancement of either the content or object of the subject matter specified in the literal patent claim (BGH, op.cit - bottom separating unit; BGH, op.cit - drawing machine tensile unit I; BGH, op.cit. - joint arrangement).

b) Taking these yardsticks as a basis, the standard realises all of the features of

claim 1:

aa) The intervener to 3 does not believe that Feature 1.1. has been realised in the standard because the input signal, as evidenced by Figure 2 of the standard reproduced in the facts of the case ("speech input") passes through several modifications, amongst others the modules "down sample & HP-Filter", "pre emphasis" and "compute target for adaptive codebook", and therefore the original wideband signal no longer enters the block "find best delay and gain". Furthermore, the parameter is not generated in the module "find best delay and gain" in response to only one wideband signal but in response to three signals, namely from the blocks "compute target for adaptive codebook", "compute impulse response" and "find open loop pitch". The overall consequence is that the standard does no generate the optimum set of pitch codebook parameters in direct response to a wideband signal.

This reading of the claim leads to a restriction to the alternative version "in direct response to only an unchanged wideband signal", which is not set out in any wording. Because the wording of the claim simply is in no way related to precisely which signal is finally used to generate the pitch codebook set of parameters. Nor does the description of the patent-in-suit in Figure 1 provide for such a restricted reading of the claim. On the contrary, as can be seen from Figure 1, the input signal for the module with the reference number 107 – corresponding to the module "find best delay and gain" in Figure 2 of the standard - is also the target vector x that has resulted from the multiple processing of the input speech signal. This too has already undergone a metamorphosis in the modules with the reference numbers 101, 102, 103 and 105. Figure 1 also shows that not only this target vector x, representing the input speech signal, but also a weighted impulse response h of the synthesis filter from module 109 and the estimated value for the pitch lag TOL from module 106 also enter block 107. In this respect, the standard is consistent with the embodiment of the patent-in-suit in Figure 1 - which falls under the wording in accordance with what has been said above.

Incidentally, this corresponds with the legal opinion expressed on page 3 of the expert opinion to evaluate the standard essentiality of the patent-in-suit (see Appendix WKS 2).

bb) The pitch analysis device of the standard also has two - which is adequate:

logical - signal paths within the meaning of Feature 2.

(1) Contrary to the opinion of the defendant and the intervener to 2,the wording of the claim does not restrict the feature of the "signal path" to a physical signal path in such a way that this has to be an electronic hardware component and thus a software implementation (in accordance with the standard) is not sufficient.

Insofar as the term "device" used in Feature 2.1, which has to be "comprised" by the signal path, is emphasised in this respect, the fact that the, insofar decisive, English wording of the claim talks of a "device", which from a technical point of view can be translated as both a "Vorrichtung" and an "Einrichtung", is overlooked. A device in the sense of a function to calculate a pitch prediction error does not rule out an implementation by means of software. If the signal path is understood in this sense, the contradiction identified by the defendant in Feature 3.2, that not only a result but a signal path is selected there, is also dispersed. Because on a logical level, the selection device 309 in Feature 3.2 then decides on the mathematical operation with the lowest calculated pitch prediction error.

But if the wording of the claim on a vectorial level accordingly leaves the type of implementation up to the person skilled in the art, the defendant was unable to cite any point in the description which could lead to a divergent (exclusive) taught hardware implementation. Rather, there is no instruction for the person skilled in the art on how to implement the feature taught in the claim. Nor is it so that with this logical understanding of the signal path, the latter would no longer have a separate meaning with a software implementation. Because the selection of the signal path ultimately determines whether the one with or without a filter, or which of those paths with a filter is used. The restriction of the further wording of the claim, as demanded by the defendant and the intervener to 2, to a hardware implementation during which the calculations carried out in the individual signal paths would have to be performed simultaneously and independent of each other, i.e. without any exchange of data between the two paths, does not result from Figure 3 of the patent-in-suit. Insofar as the intervener to 3 and the defendant regard this as a circuit diagram ("Schaltplan") that identifies the respective units that provide the functions described in the individual blocks and which connects the units to each other through leads, we are unable to follow this argument. As can be seen in the key in section 18, the Figure is a "schematic block diagram", which translated literally corresponds to a structural plan. The correct English term for a "Schaltplan", on the other hand, would be "circuit diagram" or "wiring diagram". If one take a closer look at the instructions in the blocks, it appears that these only state the functions that take place at this point, but that the blocks do not represent any hardware components (see, for example, convolve, gain calculator, etc.).

With this in mind a restriction to neither a hardware implementation nor parallel mathematical procedures - which in the defendant's opinion is only sensible with real-time calculations within the scope of the speech transmission - can be substantiated. Because if one regards Figure 3 as merely a signal flow diagram and the arrows connecting the individual blocks not as leads, an implementation through sequential mathematical procedures is also covered - in accordance with the further wording of the claim.

(2) As can be seen from section 5.7 on page 25, penultimate paragraph of

the standard - which corresponds almost literally to claim 1 of the patent-in-suit - the latter also has two signal paths in accordance with this understanding.

(3) Insofar as the intervener to 2 argued for the first time in the hearing, that

the reference code 3 GPP TS 26.173 (Appendix B14a) which was referred is so far removed from the standard inasmuch as it allows for a different implementation - although it is named in section 2 on page 6 of the standard as a normative reference and he himself concedes on section 1 on page 5 that it is necessary for a bit-level implementation of the AMR-WB standard - this can be left as it is and requires no appraisal by an expert.

Because with a broader understanding of the patent claim as explained above the - software - implementation according to the reference code TS 173 - which according to the statements of the intervener to 2 is also used in the processor supplied by Qualcomm and installed in the model HTC Touch HO - is covered by Feature 2. As can be seen from the source code submitted from Appendix B 14c, TS173 is a software solution that - insofar immanent in software solutions - provides a sequential series of individual lines from top to bottom and thus also implements a sequential calculation of the individual pitch prediction errors. According to what has been said above, however, this does not lead out of the patent-in-suit. The calculation of the unfiltered signal hereby results from lines 1026 ff. ("find pitch excitation"), the calculation of the filtered signal from lines 1054 ff. ("find pitch excitation with LP-Filter").

cc) If the defendant and their intervener to 2 deny the realisation of Feature 2.1

by the standard with reference to Appendix B 15 because there is in any case no calculation of a pitch prediction error in the filtered path, this is unable to convince the chamber too.

As can be seen from the comparison of the reference code TS173 and the functions listed in the individual lines that has been submitted in Appendix B 15, step 3 initially involves a calculation of the first error vector from the unfiltered path (result: dn). Step 7 then contains a calculation of the error vector from the second - filtered - path with the result xn2. In step 8.1 the algebraic signs are then eliminated by squaring the components of the error vector dn so that an error comparison can be performed, and the squared components of the error vector dn are added up to the pitch prediction error of the first (unfiltered) path. The fact that with respect to the components of the second error vector xn2, there is only a squaring of the components of

step 8.2, but not a summation of the individual components, does not lead out from the patent-in-suit. Because this does not claim a certain form of the error - according to the reading of the defendant, the summation of the squared components of the second error vector xn2 too - but only a device to calculate a pitch prediction error in every signal path. Since the individual components of the error vector xn2 are squared and the algebraic signs are thus eliminated, this produces the pitch prediction error - which has just been split into its individual parts and not yet summated, but which is nevertheless existent - of the second - filtered - path. It makes no difference for the result - calculation of a pitch prediction error in the device - whether the individual components of this pitch prediction error are added together or not.

dd) The objection of the intervener to 3, that the pitch codevector necessary to

calculate a pitch prediction error in the standard does not – as demanded in Feature 2.1.1 - originate from a "pitch codebook search device" but only a "pitch code vector generation device" remains unsuccessful.

Because if one accepts the character of Figure 3 of the patent-in-suit as merely a signal flow diagram and if one consequently recognises that blocks 301 and 302 only represent the mathematical operations that take place there, the result in connection with the unique wording of the claim is that the output data of the "pitch codebook search device" must be a pitch code vector, so that the "pitch codebook search device" naturally has to be suitable to generate a pitch codevector. This can be found in Figure 3 of the patent-in-suit at the output of the pitch code vector generator marked with the reference number 302 and bearing the name VT. Both devices, the "pitch code search device" 301 and the "pitch code vector generator" 302, are implemented in the standard, in particular at those parts of the reference code TD173 identified by the intervener to 3 in their writ from 23.12.2014 (ABI. 729), so that this feature too is satisfied by the standard.

ee) In the opinion of the intervener to 2, Feature 3.1 is not satisfied because the

standard and the corresponding reference code TS173 only calculates the difference between two values which did not represent a comparison within the meaning of Feature 3.1. Furthermore, two pitch prediction errors would not be used in this differential calculation.

To this it can once again be responded that patent claim 1 contains no whatsoever as to the manner in which the pitch prediction error comparison has to be carried out. This means that both the comparison of two separate number as well as - as the simplest mathematical way of relating two values - the differential calculation implemented in the reference code TS173 in accordance with Appendix B.15 (here page 5 under step 8.2), i.e. the subtraction of the squared individual components of the filtered error vector xn2 from the total of the squared individual components of the unfiltered error vector dn, fall within the scope of the patent-in-suit. As has already been explained above for Feature 2.1, it makes no difference with respect to the comparison of two pitch prediction errors as taught in Feature 3.1 whether the total of the squared individual components of the error vector xn2 is deducted from the total of the squared individual components of the error vector dn or whether the subtrahends are only the squared individual components of the error vector xn2, without these having been added together beforehand. All that is decisive is that the algebraic

signs of the error vectors are eliminated by squaring their individual components so that a pitch prediction error is generated at all that is used in the comparison in accordance with Feature 3.1. This is the case in both signal paths in accordance with the reference code TS173.

ff) Insofar as the intervener to 2 initially argues with the reference code ETSI

TS 126204 (Appendix HL 4) and has explained on the basis of the code lines 1035 to 1038 therein, that the parameters of the unfiltered signal can be selected, even though the error energy of the filtered signal is smaller than the error energy of the unfiltered signal, so that consequently the signal path with the lowest calculated pitch prediction error does not always have to be selected (Feature 2), the referenced reference code TS 204 is not suitable to explain a non-infringement since, as evidenced by its section 1 on page 5, it is not used in the 3G AMR-WB speech service that is of interest here ("the fixed-point specification in 26.173 shall remain the only allowed implementation for the 3G AMR-WB speech service and the use of the floating-point codec is strictly limited to other services.").

If it is also stated with reference to the reference code TS173, that only parameters and no signal paths are selected therein, then the fact that the variable select is set to either 0 (see source code line 1079, if the differential calculation results in a number > 0) or to 1 (see source code line 1092, if the results is less than or equal to 0 ) depending on the result of the differential calculation mentioned above is overlooked. The consequence of this variable setting can then be found in the source code lines 1097 ff. and 1104 ff. Therefore a selection variable - in this case the variable select - is used - as is typical for a software implementation - to select the relevant signal path according to Feature 3.2, i.e. the filtered or unfiltered version of the speech signal.

gg) If the intervener to 2 refers to page 24 of the standard for an interpretation of

Feature 3.3 with respect to the section "set of parameters", and therefore wishes to read into the patent claim that the parameters to be selected would always belong to both the delay and gain, this contradicts the patent law interpretation dogmatic. Feature 3.3 of the sole decisive wording of the claim, on the other hand, only demands the selection of a "set of pitch codebook parameters", consequently the selection of at least two, though by no means all parameters that are assigned to the selected signal path. Insofar, the reference by the intervener to 2 to section 5.7 on page 25, penultimate paragraph, of the standard, which - only - describes the selection of the gain ("pitch gain"), is of no help. Because the complete sentence reads: "the signal path having the lowest calculated pitch prediction error is selected, along with the associated pitch gain". This means that not only the variable "pitch gain" but also the signal path itself, in the form of the variable "select" with its value 0 or 1, is selected, so that the standard also contains a set of parameters within the meaning of Feature 3.3.

Claim 1 is therefore directly realised literally. 3. There is also a direct infringement of claim 19 literally by the contested embodiment.

Insofar, reference can be made to the statements above since claim 1 can be found through the back reference in Feature 1.1. Insofar as the intervener to 2 denies the fulfilment of Features 1.1 and 7 by the standard, the plaintiff has already proven their

realisation through the standard with the petition. The passages corresponding to Features 1.1 and 7 can be found in section 4.3 on page 13, final paragraph, and on page 14 in the 3rd bullet point. The fact that the plaintiff has added the words "by the ACELP encoder" in the 3rd bullet point does not alter the fact that this is a matter of course. After all, the heading for section 4.3 is "principles of the adaptive multirate wideband speech encoder", so that this alone shows that the following part refers to the encoder protected in claim 19 of the patent-in-suit.

4. The contested embodiment also makes direct use of claim 37 of the patent-in-suit

literally. Reference can again be made to the statements above under 2. since Feature 2.1 has a back reference to claim 19, which in turn contains a back reference to claim 1.

5. The offer and supply of the contested embodiment by the defendant is an indirect,

literal infringement of claim 10 of the patent-in-suit in accordance with § 10 para. 1 p. 1 PatG.

The contested embodiments directly realise all features of the method claim 10 literally. Reference can insofar be made to the statements above under 2. since the features of the method claim and the device claim correspond in this respect.

The contested embodiments also represent means that relate to a key element of the invention since all of the mobile telephones sold can functionally interact with one or several of the features of claim 10 to realise the protected inventive concept. The defendant also offers the contested embodiments in the Federal Republic of Germany so that the technique according to the patent-in-suit can be used within the federal territory. On the one hand, it is obvious that the mobile devices that are offered are suitable and intended for a use of the invention by the buyer, and on the other hand, the defendant himself - as can be seen vicariously for all contested embodiments from the advertisement for the "Xperia Z2" model from the firm of Sony submitted in Appendix K 9 - expressly points out the suitability of the contested mobile telephones to perform the AMR wideband standard.

III.

Nor should the legal dispute be stayed in accordance with § 148 ZPO in view of the asserted action of nullity in the Federal Patent Court. The decision on the action of nullity is admittedly anticipative. However, the chamber exercises the discretion it has been accorded through the regulation to refrain from a stay of proceedings in the infringement litigation. 1. The chamber is hereby guided by the following basic considerations:

In order to prevent any abuses, an infringement litigation should only be stayed if there is a real probability of the annulment of the patent-in-suit in the action of nullity. The simple possibility of an annulment of the contested property rights is not enough for a stay of proceedings. Great restraint is generally necessary when ordering a stay of proceedings to ensure that the right of prohibition accorded the proprietor through the granting of a patent by the state, which is also binding for the courts, is not suspended for a significant period of time by way of the stay of proceedings. A great

probability of the missing legal validity of the patent-in-suit therefore has to be demanded.

Contrary to the opinion of the intervener to 1, the most recent judgements of the Federal Court of Justice from 16.09.2014 (X ZR 61/13, GRUR 2014, 1237 - short messages - and X ZR 68/13, juris) have not changed the suspension criterion to the effect that a lesser probability of the success of the action of nullity is now sufficient for a stay of proceedings in the infringement litigation. Although marginal note 4 contains the wording "sufficient probability", the senate has elaborated at the beginning in agreement with its established case law, that the court hearing an infringement dispute would only pass judgement on account of a patent infringement it if affirms an infringement of the patent in force if it believes "that there is a (real) probability of an annulment. This clarifies what a sufficient though also necessary condition is for a stay of proceedings, namely still a predominant probability of the success of the initiated action of nullity. If, on the other hand, the Federal Court of Justice had wanted to lower the long-standing suspension criterion through this decision - as the intervener to 1 believes - then this judgement would not have received simply a corresponding official head note, it would also have been included in the official collection (BGHZ) of the decisions of the Federal Court of Justice on account of its consequences. Neither of these are the case here.

2. In the present case the chamber does not believe the prediction that there is a real

probability of the annulment of the patent-in-suit. The following applies in detail:

a) Attacks against the novelty of the patent-in-suit

aa) The patent-in-suit is not affected by WO 00/025305A1 (Appendix B.17) in a manner that is prejudicial to its novelty. Contrary to the defendant's opinion, the patent-in-suit rightly claims priority of 27.10.1998 from the Canadian patent registration CA 2, 252, 170 (Appendix B16). Therefore, WO 00/025305A1, which claims the same priority, is not a pre-published prior art within the meaning of art. 54 EPC.

(1) The priority of a prior registration can only be effectively claimed if the

person skilled in the art, taking into account their expertise, can already deduce the subject matter of the subsequent registration as being pertinent to the invention of the prior registration. According to the adjudication of the Federal Court of Justice (GRUR 2009, 390, 392 - storage shelf), the overall content of the prior registration has to be consulted in order to determine its subject matter. In addition to what is expressly described, it also discloses what the person skilled in the art supplements as being obvious or almost essential or what they readily recognise by a careful reading or what they read along in their mind with no further thought. Variations, on the other hand, however obvious they may seem, are not part of the disclosure (BGH op.cit).

(2) If these general principles are applied to the present case, the Features 2

and 2.2 in question here - namely the existence of at least two signal paths, at least one of which comprises a filter - are sufficiently disclosed in CA 170.

(a) Contrary to the defendant's opinion, the content of the disclosure of CA 170 is nor restricted to embodiments with at least three signal paths. It is true that such an embodiment with three signal paths - two paths with and one path without a filter - is shown in Figure 3 of CA 170 reproduced below.

Figure 3

However, it undisputedly results from the written description that the scope of CA 170 also covers those embodiments that only have two signal paths. The intervener to 1 correctly points out in their rejoinder (page 32 thereof) that on page 24 of CA 170 (lines 23 to 25) describes a design with two (filtered) paths as the simplest embodiment.

(b) Furthermore, the content of the disclosure of CA 170 is not restricted to those embodiments that only have filtered signal paths either. Figure 3 of CA 170 that is reproduced above unquestionably shows an embodiment that also has an unfiltered signal path that ends in the block with the reference number 307 (correct: 309, see page 24 lines 18 and 19). The description too deals with this unfiltered signal path in detail (page 24 lines 10 to 15).

(b) Finally, the content of the disclosure of CA 170 is not restricted to those embodiments that have at least two filtered signal paths either. Although it has to be initially conceded to the defendant, that neither Figure 3 nor the written part of CA 170 expressly describe an embodiment with only one filtered path. However, as has already been explained above, and according to the adjudication of the Federal Court of Justice, the content of the disclosure of a priority registration includes not only what is expressly described therein, but also what the person skilled in the art supplements as being obvious or almost essential or what they readily recognise by a careful reading or what they read along in their mind with no further thought. The extent to which the person skilled in the art also reads along with quasi "implied" disclosures in addition to the express disclosure depends on the individual circumstances of the case, namely the specific priority document. The present case is hereby characterised by the peculiarity that CA 170 does not contain any (generalised) patent claims but only specific embodiments that are described by language and graphics. This formal finding alone would induce the person skilled in the art to not restrict the content of the disclosure of the document to solely its expressly disclosed content but rather to fathom out a possible further

inventiveness. Based on this, the person skilled in the art would also deduce an embodiment with only one filtered path from CA 170. Viz., if the person skilled in the art recognises that on the one hand, two signal paths are enough, and on the other hand that one unfiltered signal path can be used in the selection device, an embodiment with two signal paths, whereby only one has a filter, will easily be revealed to them too on account of their expertise.

Contrary to the defendant's opinion, such an understanding of the content of the disclosure of CA 170 by the person skilled in the art is not contradicted by the fact that its teaching (allegedly) deals with "feeling its way" towards the optimum spectrum, during which several different filters were tried out. This kind of feeling its way to an optimum spectrum is not expressly mentioned at any point in the description of CA 170. But even if one were to regard the decisive inventive concept of CA 170 as such a feeling its way towards an optimum spectrum - as the defendant does - an embodiment with only one filter would also be disclosed as the first step in this feeling its way, as it were, and therefore as the worst embodiment, though this would still be covered by the scope of CA 170.

bb) Nor does the citation Qian submitted in Appendix B 18 anticipate the patent-in-

suit in a manner prejudicial to its novelty. This already lacks the wideband signal that forms the starting point for the pitch analysis device in accordance with Feature 1.1. As the patent-in-suit cites in paragraphs 2 and 7, the narrow band telephone bandwidth is in a range from 200 to 3,400 Hz and wideband bandwidth that is pertinent for the invention in the range from 50 to 7.000 Hz. According to section 7, the acoustic signal is scanned in the telephone band with 8,000 sampling values per second, whereas the acoustic signal is scanned in wideband speech audio applications with 16,000 sampling values per second. As can be seen from the Qian document's reference to the US-Federal Standard FS 1016 4.8 kbits CELP-Coder (see page 339 and 358)m, sampling only take place here with 8 kHz, in other words scanning with 8,000 sampling values per second (see expressly page 352). However, according to the definition of the patent-in-suit, this corresponds to a narrow band signal.

If the intervener to 2 (ABl. 678) wishes to deduce from the Figures printed on pages 351 and 352 of the citation that the device for processing frequencies disclosed there - although the frequency range ends at 4,000 Hz – can also be extended to a range of more than 4,000 Hz since neither of the courses of the two frequencies indicates a discontinuous behaviour, this still does not disclose a wideband signal for a person skilled in the art.

Nor is this altered by the somewhat incomprehensible remark of the defendant that the feature of the wideband is "not a clear criterion of demarcation", Insofar as the mention of 6,400 Hz - and thus a wideband range according to the definition of the patent-in-suit - in the AMR-WB standard is cited in this connection, the fact that this 6,400 Hz is only the result of the bandwidth limiting by means of downsampling, in other words the reduction of the sampling rate from 16,000 Hz to 12.8 kHz, though this is expressly mentioned in the patent-in-suit in section 38, is overlooked. The reduction of the sampling rate that takes place there in the downsampling module labelled with the reference number 101 in Figure 1, which later leads to a modified signal x in the "closed loop pitch search module", which is then described in more detail in Figure 3, does not alter the fact that the starting point for the generation of an optimum set of pitch

codebook parameters remains a wideband signal according to the definition of the patent-in-suit, even if this is modified in the meantime (see here the discussion of the infringement of Feature 1.1 above). However, such a wideband signal is missing in the citation Qian.

cc) The same applies with respect to the citation Chen from August 1993 submitted

as Appendix NK8 in Appendix HL8. This too lacks the disclosure of the wideband signal mentioned in Feature 1.1. As can be seen from column 2 in the penultimate paragraph of the document, this deals with a sampling frequency of 8 kHz, corresponding to a narrow band telephone signal according to section 7 of the patent-in-suit. The fact that - as the intervener to 2 believes - the first paragraph in the right column on page 243 speaks of improving the prediction by increasing the sampling frequency does not lead to the starting point for the pitch analysis device discussed therein actually being a wideband signal within the meaning of the patent-in-suit. Because as can be seen from Figure 4 in conjunction with the corresponding description, the sampling rate is increased (the so-called upsampling) by using an interpolation filter. This means that the original input signal, which is a narrow band signal within the meaning of the patent-in-suit according to what has been said above, does not however become a wideband signal with a bandwidth of 50 to 7,000 Hz.

Nor does the fact that the input signal within the meaning of claim 1 is not the original signal that has been scanned with 16 kHz but a signal with a sampling rate of 12.4 kHz because it has been reduced in a downsampling module in accordance with section 38 of the patent-in-suit lead to the fact that the character of the wideband signal claimed in accordance with the patent-in-suit corresponds to the character of the signal from the citation Chen (see above under bb).

b) Insofar as the intervener to 2 wishes to deny the inventive step of the asserted

claims because they regard the claims 19, 20 and 25 as being suggested by a synopsis of the citation Qian with the standard ETS 30726 and claims 37, 38 and 43 by a synopsis of the citation Chen with the mobile radio standard familiar on the priority date, the chamber is unable to follow this line of argumentation.

aa) With respect to the objection of the missing inventive step, the established

practice of the chamber is very cautious when it comes to staying proceedings in a legal dispute because the evaluation of an inventive step is an evaluative decision that is to be taken by the granting authorities and not the court hearing an infringement dispute. Only when the patent-in-suit has become so questionable in view of the given state-of-the-art that a sensible argument can no longer be found to award the inventive step is a stay of proceedings justified. A simple doubt on the part of the court hearing the infringement dispute as regards the inventive step does not, however, justify a stay of proceedings (see BGH, decision of 11.11.1986 - X ZR 56/85, GRUR 1987, 284 recital 7 - transport vehicle). The discovery of new technical information cannot hereby be assessed as firstly being, and then not being based on an inventive step if only no reasons are revealed that would prevent a person skilled in the art from arriving at the subject matter of this teaching from what is known from the prior art, but this assessment assumes that what is known induced or animated the person skilled in the art to arrive at the suggested teaching (BGH, judgement from 08.12.2009 - X ZR 65/05 - GRUR 2010, 407 – one-part eyelet).

bb) Taking these yardsticks as a basis, the chamber is unable to determine such an obviousness for a person skilled in the art with the necessary certainty. In particular, the citations Qian and Chen not only do not disclose a wideband signal within the meaning of Feature 1 (see above 2.a) bb) and cc)), the "European Telecommunications Standard ETS 30726" (see Appendix B20) that is also familiar to the person skilled in the art also only refers to a narrow band CELP encoder with a sampling rate of 8,000 sampling values per second (see Appendix B 20 page 7, 1st paragraph: "The sampling rate is 8 000 samples/s"), so that the person skilled in the art would have no incentive whatsoever to use the pitch analysis device with respect to an incoming wideband signal too.

c)Contrary to the opinion of the intervener to 2, there is no real probability that the

Federal Patent Court will nullify the patent-in-suit on account of an inadmissible enhancement.

aa) In accordance with article 11 § 6 para. 1 p. 1 No. 3 IntPatÜG in conjunction

with article 138 para. 1c EPC, a European patent effective for the Federal Republic of Germany is to be nullified on application if the subject matter of the European patent goes beyond the content of the European patent registration in the original version that was submitted to the authority responsible for the submission of the application.

In order to determine an inadmissible enhancement, the subject matter of the granted patent has to be compared to the content of the original documents. The content of the patent registration can be found in the set of documents. The patent claim may not be aimed at an object that the original disclosure does not suggest to be pertinent to the invention from the point of view of a person skilled in the art (established practice, see only BGH, judgement from 12 July 2011 - X ZR 75/08, GRUR 2011, 1109 recital 36 citing further literature - tyre seal). In accordance with the adjudication of the Federal Court of Justice, the content of the disclosure of a patent registration only includes what can be deduced as being directly and clearly pertinent to the patent-pending invention from the originally submitted documents, but not any further findings which the person skilled in the art can arrive at on account of their general expertise or through a variation of the disclosed teaching. An inadmissible enhancement is given if the subject matter of the patent only ensues for the person skilled in the art on account of their own deliberations borne by their expertise after they became aware of the original documents (established practice, see BGH, judgement from 22 December 2009X ZR 27/06, GRUR 2010, 509 - lifting sectional door I recital 39; judgement from 8 July 2010 - Xa ZR 124/07, GRUR 2010, 910 - forgery-proof document recital 62; judgement from 16 December 2008 - X ZR 89/07, BGHZ 179, 168 - Olanzapine, on the disclosure when examining the novelty). Modifications through which the subject matter of the registration are changed into something different beyond the content of the originally submitted application document also lead to an inadmissible enhancement (BGH, judgement from 9 April 2013 - X ZR 130/11, GRUR 2013.809 recital 1 - encryption method).

bb) This is not the case here.. The intervener to 2 misses in particular Feature 3.2 in the disclosure of the originally submitted application because the description therein, which insofar is consistent with the description of the patent-in-suit, only results in the selection of the parameters j, b and T, but

not the selection of a signal path. This is, however, incorrect. As can be seen from the cover sheet of the patent-in-suit, the latter resulted from the PCT application PCT/CA 99/01008 submitted on 27.10.1999, whose publication WO 00/25298 A1 is provided as Appendix NK 5 in the set of exhibits B 22. As can be seen on page 44 and page 46/47 of said PCT application, the claims 1 and 10 recorded there correspond to claims 1 to 10 of the patent-in-suit - except for the new reference numbers that have been added there - and with respect to Feature 3.2. too, which deals with the selection of the signal path. Furthermore, in the description of the PCT application we read on page 5 that "the signal path having the lowest calculated pitch prediction error is chosen", so that the description of Feature 3.2 is also clearly disclosed.

After all that has been said, the applications for a stay of proceedings are to be turned down.

IV. The plaintiff is not from any legal point of view prevented from enforcing the asserted claims. In particular, their enforcement is neither to be rated as an abuse of rights (so-called patent ambush; more in 1.), nor is the defendant entitled to the so-called antitrust objection of compulsory license (more in 2.). 6. Insofar as the interveners to 1 and 3 regard the offence of a patent ambush as being

having been realised through the conduct of the plaintiff and derive the legal consequence of the dismissal of the action from article 102 TFEU and § 242 BGB (German Civil Code), the chamber does not follow this argumentation.

- The reproach is that the legal predecessor of the plaintiff - Voice Age -

deliberately and in breach of its duty to observe the statues of the ETSI, kept secret the existence of the registration of the patent-in-suit during the standardisation procedure for the AMR-WB standard, which is now referred to as being essential for the adopted standard. Only after the standard was adopted on 10.04.2001 (so-called freeze; see here the timeline OJ. 708) did they point out these proprietary rights and declared them to be standard-setting essential to the ETSI (29.05.2001), so that the enforcement of this proprietary right should be regarded as an unethical, anti-competitive and disloyal behaviour that has to be attributed to the plaintiff and which leads to the dismissal of the legal action.

- This is incorrect - at least for the facts of the case that have to be decided here.

Because neither the defendant - who insofar has the burden of explanation and proof - nor the interveners to 1 or 3 submitted any facts which – irrespective of whether the plaintiff can in fact be held responsible for the behaviour of its legal predecessor - can be classified as a possible incitement of or aiding and abetting in a principal offence by the firm of Nokia or as an action committed as an accessory or indirect perpetrator.

The question as to whether someone has been involved in a tortious action of a third-party as a perpetrator, accessory, abettor or accomplice in a manner that substantiates a liability under civil law, is judged according to the legal principles developed in criminal law. According to this, the perpetrator is the person who commits the offence himself or as an indirect perpetrator (§ 25 StGB = German Penal Code). Complicity requires a joint perpetration, in other words a deliberate and desired collaboration (see § 830 para. 1 sentence 1 BGB). The vicarious

liability assumes not only an objective act of aiding and abetting but also at least a conditional intent with respect to the principal offence that has to include the awareness of the illegality (BGH, decision from 22.07.2010 - I ZR 139/08, GRUR 2011.152 recital 30 citing further literature).

aa) Accordingly, a liability of the plaintiff through § 830 para. 2 BGB already lacks the necessary (see BGH, decision from 25.07.2005 - II ZR 390103, NJW 2005, 3137, 3138 citing further literature) intentional and illegal principal offence of the firm of Nokia. Because the intervener to 1, like the plaintiff, assumes that the firm of Nokia that was involved in the standardisation procedure and is governed by the ETSI statutes, was not informed of the registration of the patent-in-suit by the plaintiff's legal predecessor so that the firm of Nokia could not deliberately keep secret the patent registration of which it was not aware from the ETSI (see expressly OJ. 958 ff.). In this case, both incitement and aiding and abetting by Voice Age can be ruled out.

bb) The same applies for complicity between Voice Age and Nokia. This would require a joint plan of action, in other words a procedure against ETSI of which both parties involved were aware and which they both desired (see BGH, decision from 22.07.2010 - II ZR 139/08, GRUR 2011.152 recital 31 citing further literature). This is not given if one of the alleged accessories - in this case the firm of Nokia - was not aware of the patent-in-suit registration that had allegedly been deliberately kept secret. cc) The indirect perpetration by Voice Age with Nokia as an unintentional-malicious tool - according to the essence of the submission by the intervener to 3 – which is thus the only possibility breaks down since the possible indirect perpetrator Voice Age lacks the special properties necessary for this.

(1) The indirect perpetration of an offence namely assumes that the indirect

perpetrator could legally and theoretically commit the offence himself. Special offences such as a violation of professional secrecy in the field of medicine, which assumes special properties and conditions for the perpetrator, can thus only be perpetrated indirectly by someone in whose own person all of the special circumstances under law come together (BGH, decision from 1.10.1953 - 4 StR 224/53, NJW 1953, 1878, 1879).

(2) The reproach of a patent ambush raised against the plaintiff, however, is

essentially based on an alleged violation of the so-called ETSI IPR Policy (above all section 4.1 of the IPR rules, ABI. 704 ff.), according to which proprietary rights and proprietary right registrations have to be reported immediately, and in particular when suggestions for standardisations are made. However, only the members of ETSI are bound by this contractual duty of disclosure ("each member shall [... ]"), in other words only Nokia itself at the time the suggestion was submitted by Nokia and at the time it was resolved as a standard in the years 2000 and 2001 (Voice Age only became a member in 2004, the plaintiff was never a member).

However, in the case of such special offences, where the violated behavioural obligations result from a special property - in this case membership of the ETSI and the concomitant assumption of certain obligations - it is not enough, according to the adjudication of the Federal Court of Justice cited above, that only the performer - Nokia - but not the backer - the plaintiff or Voice Age - has the special property, for an indirect perpetration of the offence by the plaintiff

or Voice Age (see also Heine/Weißer in Schönke/Schröder, StGB, 29th edition, § 25 recital 49 citing further literature; Schünemann in Leipziger Kommentar zum StGB, 12th edition, § 25 recital 133 citing further literature and the punishability pursuant to § 340 StGB [bodily harm in office] and § 348 StGB [falsification of a registry on office]). Since the legal predecessor of the plaintiff was not a member of ETSI at the time of its alleged "ambush", and therefore was not under any duty of disclosure according to its statutes, it was not a suitable indirect perpetrator. The plaintiff itself was never a member of ETSI. The remark of the intervener to 3, that from the decisions of the EU Commission in re Rambus (Appendix PBP 5) and Motorola (Appendix PBP8), it follows that no membership is required for behaviour that is incompatible with art. 102 TFEU - in the case the plaintiff or their legal predecessor - is not constructive. Because the "ambush" consisted of a party that was involved in a standardisation process - and who was thus subject to the regulations that apply therein as a member - deliberately not disclosing existing patents (see Appendix PBP5 recitals 28, 36 and 40; Appendix PBP8 recital 91 and 473 as well as Appendix PBP9 recital 9). There is no such duty of disclosure in this present case.

- With this in mind, the question remains as to whether - as the defendant believes

- the legal consequence of a patent ambush understood in this way is the obligation of the plaintiff to grant third parties free licences, and thus the rejection of legal action based on an infringement of the patent-in-suit (by contrast with substantial arguments referring to the principle of natural restitution that characterises German tort and has been standardised in § 249 BGB: District Court Düsseldorf, decision from 07.06.2011 - 4b) 0 31/10, Juris recital. 84f. citing further literature). The chamber thus sees no reason to submit the question of the legal consequence of a patent ambush to the Court of Justice of the European Union in accordance with article 267 para. 2 TFEU for a preliminary ruling.

- Nor is any more detailed discussion required as to why the defendant has not

submitted why the competitors should be hindered, in other words why their development opportunities under competition law are affected, by the breach of the statutes committed by the legal predecessor of the plaintiff, which they believe should be attributed to them, despite the declaration of willingness to licence issued by the plaintiff to the defendant in a letter of 31.07.2014 (Appendix K 34). Although the defendant (OJ. 865) and the intervener to 3 (AB!. 961) allege that if the registration of the patent-in-suit had been disclosed during the standardisation procedure, an alternative solution would very likely have been adopted in the standard, this is only speculation and cannot be verified in view of the set of agreements submitted by the plaintiff. Because as Appendix K 35 of the available reports from 23. - 27.10.2000 shows, the standardisation was carried out in an anonymised procedure following extensive tests of a total of five submitted codecs. After the, still anonymous codec 3 from Nokia, had repeatedly provided the best results, the standardisation group decided on this codec, whose author was only revealed after the decision had been taken. On the other hand, it is more than unlikely that the group would have chosen a patent-free, but in terms of quality, poorer Codec if the legal predecessor of the plaintiff has discharged their - alleged existing - duty of disclosure (in this sense see also LG Mannheim, InstGE 11, 9, recital 92 and InstGE 13, 65, recital 182).

7. Moreover, the defendant - who insofar has the burden of explanation and proof -

cannot invoke the so-called antitrust objection of compulsory licence (FRAND

objection). It can be left open whether - as the defendant believes - the principles that the advocate general of the Court of Justice of the European Union expressed in his conclusion of 20.11.2014 in the legal matter C-170/13 (Appendix FBD 1; hereinafter: conclusions) apply to the present case (more under lit. b)) or whether the principles established by the Federal Court of Justice in the Orange-Book-Standard decision (decision from 06.05.2009 - KZR 39/06, BGHZ 180, 312 ff.) remain decisive (more under lit. c)).

iii) According to the criteria established by the Federal Court of Justice in the

Orange-Book-Standard decision, the defendant against whom claims have been asserted from a patent can argue against the motion to cease and desist of the prosecuting proprietor, that they are abusing their dominant market position if they refuse to conclude a patent licence agreement with the defendant on non-discriminatory and non-obstructive terms. However, the proprietor only acts in an abusive way if the defendant has made them an unconditional offer to conclude a license agreement by which they abide and which the proprietor may not refuse without violating the principle of non-discrimination or ban on impediment, and, if the defendant is already using the subject matter of the patent, if the defendant observes those obligations placed on the use of the licensed object by the license agreement to be concluded (BGH, op.cit., recital 22 ff.).

On the other hand, the advocate general of the Court of Justice of the European Union believes that a dominant position in accordance with article 102 of the TFEU is already abused if the proprietor of a standard-setting essential patent who has pledged to issue a license to third parties on FRAND terms to a standardisation organisation, makes a request for corrective measures against a patent infringer or enforces an injunctive relief against them in court, so that products and services of the infringer of a standard-setting essential patent can be excluded from the markets for which the corresponding standard applies, if it can be proven that the proprietor of a standard-setting essential patent has not observed their duty of disclosure although the patent infringer is objectively ready, willing and able to conclude such a licence agreement (see Appendix FBD 1, recital 103 under 1.).

iv) Even if one assumes - as do the defendant and their interveners - that the

conclusions reflect the legal situation appropriately, their application is opposed by the fact that the defendant is undisputedly not willing to take out a licence (see aa)). The fact that plaintiff may not be able to claim against individual interveners if the legal principles explained here are applied does not help the defendant (see bb)).

aa) In the present case, the chamber can leave the question unanswered as to

whether - as the advocate general believes (see Appendix FBD 3 under recital 58) - the proprietorship alone of a standard-setting essential patent triggers the assumption of the existence of a dominant market position and whether the facts of the case that have to be decided here cannot be compared with those of the conclusions since there is no general FRAND declaration by the plaintiff, since they have only issued one for the defendant in Appendix K 34 and may possibly not be bound by that of its legal predecessor (see here LG Mannheim, InstGE 11, 9, recital 100f.; InstGE 13, 65 recital 170). The prerequisite for the applicability of the interpretation of the law expressed by the advocate general in his conclusions, that the instigation of an injunctive relief by the proprietor of a standard-setting essential patent violates article 102 TFEU, is in any case that the patent

infringer against whom the claim has been asserted "is objectively ready, willing and able to conclude a license agreement" (Appendix FBD 3, recital 103 under section 1.).

(1) This is not so in the present case. As has been demonstrated during the

hearing, the defendant is not willing to conclude a license agreement with the plaintiff or to even enter into negotiations with them about such an agreement.

The plaintiff wrote to the defendant on 31.07.2014 in a letter enclosed here as Appendix K 34 - and thus lis pendens - informing them of their proprietorship of the patent-in-suit, its standard essentiality and the patent infringement by the defendant in the opinion of the plaintiff, enclosing the local petition and offering "to licence these German patents to the Telekom on FRAND terms". When the defendant did not react to this they were subsequently reminded twice - in an e-mail from 28.08.2014 and a letter from 09.12.2014, in which an offer was also made to send them a written draft of a complete license agreement.

Since the defendant was unwilling to take out a license, it was only logical that they themselves did not raise the antitrust objection of compulsory license, but remained quiet in view of the objections raised by their interveners - who are willing to take out a license.

(2) When the intervener to 3 objects that, according to the statements of the

advocate general, the prerequisite for any negotiations is a written and comprehensive offer of a license from the proprietor, so that one already has to assume the abuse of a dominant market position if the proprietor of a standard-setting essential patent does not take these concrete steps before the enforcement of an injunctive relief in court (OJ. 965), they misconceive the content of the conclusions.

Although the advocate general does state in recital 85 that the "SEP proprietor must under all circumstances submit a written offer of a license to the alleged patent infringer on FRAND terms", he does indicate in recital 88 what happens if the alleged patent infringer does not react to this carefully and seriously. According to this, namely, there is "no abuse of a dominant position if the behaviour of the infringing party were to be purely tactical and/or delaying and/or not serious". In other words, if the alleged patent infringer pleads a subjective but not objective willingness to take out a license as an excuse for tactical reasons, the proprietor of a standard-setting essential patent is not prevented from enforcing an injunctive relief in court.

Nothing else can apply if the alleged patent infringer is not even prepared to enter into negotiations over a license. Everything else would simply be nit-picking formalities. On the contrary, the defendant acts contrary to the principles of good faith if they demand the rejection of the present legal action solely with the argument that the plaintiff did not submit a comprehensive written offer for a license agreement before its instigation, even though they themselves are in no way willing to take out a license, as became clear once again in the hearing. With such a constellation, even the advocate general cannot assume the inadmissibility of the enforcement

of an injunctive relief in court (see Appendix FBD 3, recital 103 under section 1.).

bb) Nor is the legal action doomed to failure because individual interveners

could, based on the advocate general's interpretation of the law, invoke the fact that the plaintiff is unable to enforce an injunctive relief in court against them since - although they are objectively ready, willing and able to conclude an agreement on such a license - they were not comprehensively informed of the infringement in question before the legal enforcement, nor did they receive a written offer of a license agreement on FRAND terms from the plaintiff.

c) The subject matter of the dispute is not an injunctive relief against the

interveners but solely the plaintiff's injunctive relief under patent law against the defendant, who himself is unable to and does not raise any FRAND objection (see above lit. aa)). However, a FRAND objection that may be due to individual suppliers does not lead to a lapse of the defendant's legal obligation to desist.

Since the defendant has offered and brought onto the market patent-infringing mobile telephones, there is insofar a risk of a recurrent infringement which in principle can only be eliminated through the issue of declaration of discontinuance with penalty clause or through the acquisition of a license for the future and past. In view of the uncertain (and over the course of time possibly changing) number of (potential) suppliers of mobile telephones, even the acquisition of a license by individual manufacturers (for example through all or individual interveners) would as such not be suitable to eliminate the risk of a recurrent infringement.

In the present case, however, not even the interveners have acquired a license. Even if individual interveners could invoke the antitrust objection of compulsory license against a - potential, but not at present enforced - injunctive relief of the plaintiff, this would not lead to the contested embodiments supplied by the interveners to the defendant being licensed, with the consequence that exhaustion would occur and a patent infringement could be negated by the defendant. Although the antitrust objection of compulsory license may lead to the inadmissibility of the enforcement of an injunctive relief in court against the relevant intervener, this objection does not have material-legal effects on the devices supplied by these and the distribution by the defendant that is contested here.

Rather, a prerequisite for exhaustion is that the holder of the right or a third-party authorised by them for this purpose, has brought an object that uses the teaching of the patent onto the market in Germany, a member state of the European Community or a state that is a member of the European Economic Area (see BGH, decision from 14.11.2000 - X ZR 137199, GRUR 2001, 223, 224 citing further literature). This is not the case here. The - allegedly legitimate – assertion of the objection of compulsory license by one or more of the interveners cannot replace the lack of the consent of the holder of the right to the placing onto the market. Accordingly, the mobile telephones supplied by the interveners willing to take out a license to the defendant are not exhausted either in the absence of license agreements that had already been concluded.

But even if, contrary to the chamber's opinion, one were to regard the mobile telephones supplied by the interveners who are willing to take out a license as being exhausted under patent law solely on the grounds of the FRAND objection raised by these interveners, with the consequence that the defendant could also invoke this, this would not alter the continued risk that the defendant distributes patent-infringing mobile telephones form other manufacturers. It has been neither submitted nor is it obvious, that all suppliers of the defendant satisfy the prerequisites postulated by the advocate general for the assertion of the FRAND objection. The defendant has given third-party notice to a total of seven companies, only three of which have entered into the legal dispute on the side of the defendant. Whether the remaining four satisfy the necessary prerequisites in accordance with the conclusions of the advocate general for the instigation of the antitrust objection of compulsory license and there may even be further suppliers to the defendant who supply or have supplied them with mobile telephones that conform with the AMR-WB standard, is unknown. However, as long as there may be at least one contested embodiment in accordance with the standard that has neither been licensed by the plaintiff (which the chamber believes to be necessary) nor for which the suppliers are wiling and able to take out a license (which is sufficient in the opinion of the defendant and the interveners), then the asserted claims are justified. The defendant has not sufficiently proven that this is not the case.

d) The contents of the interveners' FRAND objections require no examination

in the present case. An affirmation of the court order in which devices from interveners with a justified FRAND objection are excluded from the obligation to desist is out of the question in the chamber's opinion. As explained in more detail in section (1), the defendant simply may not distribute devices that have not (yet) been licensed, even if the manufacturers may be entitled to a FRAND objection.

As for the rest, a differentiation of the injunctive relief according to the individual manufacturers and a partial dismissal of the action as demanded by the interveners willing to take out a license with a view to their respective devices is already opposed by the fact that the uniform subject matter of the action for an injunction is all mobile telephones (except devices from the manufacturers Apple, LG, Nokia, Samsung and Blackberry) that work according to the AMR-WB standard. In a decision from 19.01.2015, the chamber already rejected a separation of the proceedings in accordance with 145 ZPO based on the contested embodiments from the different manufacturers with reference to the insofar given unity of the subject matter of the dispute.

Inasmuch as the defendant and their interveners finally hold that legal actions such as this one against important distribution companies evade all attempts of adjudication related to the FRAND objection to find a balance between the interests of the proprietors of standard-setting essential patents on the one hand and manufacturers of products that conform with the standard on the other, it should be remembered that the object of this adjudication is not to guarantee the maintenance of certain distribution models of the users of standard-setting essential patents (SEP). Rather, this should (only) prevent the SEP proprietor exploiting the fact that a certain market depends on compliance with the teachings in accordance with the patent so as to prevent other companies from entering the market

which they are obliged to open through the conclusion of the license agreement (see BGHZ 180, 312, recital 27 - Orange-Book-Standard). In his conclusions on the legal matter C-170/13, the advocate general also had the exclusion of products and services of the infringer of a standard-setting essential patent from the markets for which the corresponding standard applies in mind (op.cit., FDB1, recital 103, under 1.).

The injunctive relief against the defendant that is being pursued through the present legal action may be aimed at an important sales partner of the interveners. However, the award of this injunctive relief will not exclude the interveners on the whole from the market for mobile telephones that comply with the AMR-WB standard which depends on the patent-in-suit. The interveners can continue to distribute the contested embodiments they manufacture, be this through other, new distribution partners, be this by way of direct sales, even if the latter does yet not reflect the current market forces. After all that has been said, the motion for injunctive relief of the plaintiff against the defendant is not a forbidden undermining of the FRAND adjudication (which is not pertinent in the relationship between the parties), but follows the principle that the injured party is entitled to assert claims against every infringer within a chain of infringement at his discretion (see BGHZ 181, 98-127, recital 61 Tripp-Trapp-Stuhl).

dd) With this in mind, the chamber sees no cause to either stay the legal dispute

in accordance with § 148 ZPO or to submit this to the Court of Justice of the European Union in accordance with art. 267 TFEU.

v) A stay of proceedings in the legal dispute until a decision is taken by the

Court of Justice of the European Union in the legal matter C-170/13 – Huawei Technologies - already breaks down due to the fact that the prerequisite of prejudicial effect within the meaning of § 148 ZPO is not given. Because a clarification of the question as to whether a patent infringer who is objectively not willing to take out a license can invoke the antitrust objection of compulsory license which may be due to his suppliers, cannot be expected from the Court of Justice of the European Union.

vi) The chamber also refrains from submitting this question itself in

accordance with art. 267 para. 2 TFEU - as suggested by the intervener to 2 in the hearing - in the exercise of the discretion granted to it therein. As can be seen from what has been said above, the question of the submission is not relevant to the issue in the manner the regulation demands. Since the defendant has not submitted that all potential suppliers are ready and willing to take out a license, the previous question only relates to a part of the contested embodiments that on the whole form a uniform subject matter of the dispute (mobile telephones that conform to the AMR-WB standard).

vii) If, on the other hand, one applies the stricter criteria established by the Federal

Court of Justice in the Orange-Book-Standard decision on the given facts of this case, the defendant is all the more not entitled to an antitrust objection of compulsory license. They neither made an unconditional offer to conclude a license agreement, nor did they comply with those obligations placed on the use of the licensed object by the license agreement to be concluded.

After all that has been said, the legal action had to be fully upheld.

V. The awarding of costs is based on §§ 91, 101 para. 1 ZPO. The decision on the provisional enforceability is based on § 709 ZPO. Dr. Kircher Wedler Dr. Henning Presiding Judge at Judge at the District Court Judge at the District Court District Court