21-07-01 (En Translation) Thales v. Nokia & Avanci Munich Complaint

Case 1:21-mc-00405-RGA Document 3-3 Filed 09/30/21 Page 1 of 62 PageID #: 432
EXHIBIT C
Dr Markus Wirtz
Dr Christian Karbaum
Transmitted via beA Dr Max Schulz
Munich Regional Court Kasernenstrasse 69 . 40213 Düsseldorf

37th Civil Chamber DE.BRAK.f1307c4b-d9a0-4739-8618-e4c14c2c8f51.9d4c
T +49 211 20052-110
Prielmayerstraße 7 F +49 211 20052-100
80335 Munich [email protected]
www.glademichelwirtz.com
Assistance
Katrin Marx
Düsseldorf, 1 July 2021

Our reference 21-067
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ACTION
Thales DIS AIS Deutschland GmbH, represented by the Managing Director Akhan Urgun,
Werinherstraße 81, 81541 Munich
- Claimant -
Legal representatives of the Claimant: GLADE MICHEL WIRTZ

Partnerschaft von Rechtsanwälten mbB
Kasernenstraße 69, 40213 Düsseldorf,
Germany
versus
Nokia Technologies Oy, represented by its President Jenni Lukander, Karaportti 3, 02610
Espoo, Finland
- First Defendant -
and
Avanci LLC, represented by its legal representatives, 1717 McKinney Ave, Suite 1050,
Dallas, Texas 75202, United States of America
- Second Defendant -
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for: Determination of antitrust damages on the merits
Value in dispute: EUR 3.0 million (preliminary estimate)
As legal representatives of the Claimant we herewith bring suit in the name and on behalf of
the Claimant.
At the oral hearing, we will m o t i o n as follows:
1. It is hereby declared that the First Defendant is obligated to compensate the

Claimant for all damages plus interest at a rate of 9 percentage points above
the respective prime rate from the time the damages occurred, which the
Claimant has incurred or will incur as a result of the antitrust violations of the
First Defendant due to the fact that the First Defendant has refused to make
an exploitation-free and discrimination-free (=FRAND) license offer for those
patents that were declared standard-essential for 2G, 3G and 4G mobile
communication standards ("SEP") to the Claimant since 1 June 2018.
2. It is hereby declared that the First and Second Defendant are jointly and
severally obligated to compensate the Claimant for all damages plus interest
at a rate of 9 percentage points above the respective prime rate from the
time the damages occurred, which the Claimant has incurred or will incur as
a result of the joint antitrust violations of the First and Second Defendant due
to the fact that
a. the First Defendant has colluded with the Second Defendant since
October 2018 in order to coordinate its licensing strategy and, as a
consequence, has continuously refused to submit a non-exploitative
and non-discriminatory (=FRAND) license offer for those patents that
were declared standard-essential for 2G, 3G and 4G mobile
communication standards to the Claimant;
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b. the Second Defendant has colluded with at least some of its members,
including the First Defendant, to coordinate their licensing strategies
and, as a consequence, has continuously refused to submit a non-
exploitative and non-discriminatory (=FRAND) license offer for those
patents that the Second Defendant administers and that were
declared standard-essential for 2G, 3G and 4G mobile communication
standards to the Claimant who is a component manufacturer.
In the event that written preliminary proceedings are conducted and the Defendants,
contrary to Sec 276(1) s 1 of the German Code of Civil Procedure, fail to indicate their
readiness to defend or fail to do so in good time, we hereby apply for a default judgment
pursuant to Sec 331(3) of the German Code of Civil Procedure.
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Summary:
(1) The legal dispute concerns anticompetitive conduct of the First Defendant as holder and the
Second Defendant as administrator of SEP for the 2G, 3G and 4G communications standards.
The First and Second Defendant together with further important members of the Second
Defendant have devised a joint business strategy and established a coordinated licensing
policy, with which they individually and jointly infringe Art 101 and Art 102 of the Treaty on
the Functioning of the European Union ("TFEU") as well as Sections 1, 19 and 20 of the
German Act Against Restraints of Competition ("ARC").
(2) At the core of the strategy and coordinated licensing policy of the First and Second Defendant
lies the refusal to grant licenses to their SEP on FRAND terms to the Claimant as a
manufacturer of cellular modules, inter alia, for the automotive industry. The First and
Second Defendant deliberately limit themselves to licensing automobile manufacturers with
an aim to inappropriately increase their licensing revenues.
(3) The coordinated licensing policy of the First and Second Defendant harms the Claimant as
the Claimant's products cannot be sold free from third party rights. As a result, the Claimant
suffers considerable damages, which cannot yet be quantified conclusively, and which the
First and Second Defendant must compensate the Claimant for.
(4) The Claimant's damages have occurred and are continuing to occur in the form of substantial
lost profits, increased costs resulting from third party reimbursement claims, reputational
damages and the loss of actual and potential customers.
In detail:
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Table of contents
A. Background ..................................................................................................... 6
I. The Parties .................................................................................................. 6
1. The Claimant......................................................................................... 6
2. The Defendants ..................................................................................... 7
a) Nokia Technologies Oy ..................................................................... 7
b) Avanci, LLC..................................................................................... 8
II. The Facts .................................................................................................. 12
1. Preamble ............................................................................................ 12
2. Negotiations with the First Defendant ..................................................... 12
3. Contacts with the Second Defendant ...................................................... 18
4. Effects on the Business of the Claimant .................................................. 19
B. Legal Appraisal ............................................................................................. 23
I. Admissibility of the Action ........................................................................... 23
1. International and Local Jurisdiction ........................................................ 23
a) First Defendant ............................................................................. 23
b) Second Defendant ......................................................................... 24
2. Subject-Matter Jurisdiction.................................................................... 24
II. Legitimate Interest in the Declaratory Judgment ............................................ 25
III. Damages Claims ........................................................................................ 26
1. Applicable Substantive Law ................................................................... 28
2. Basis of Claims .................................................................................... 28
3. Claims against the First Defendant ......................................................... 28
a) Sections 33a(1), 33(1) ARC in conjunction with Article 102 TFEU ........ 29
aa) Willful Violations of Article 102 TFEU .......................................... 29
(i) Market Dominance ............................................................ 29
(ii) Abuse through Refusal to License ........................................ 32
bb) Affectedness ........................................................................... 39
cc) Damages................................................................................ 39
b) Sections 33a(1), 33(1) ARC in conjunction with Article 101 TFEU ........ 40
aa) Willful Violation of Article 101 TFEU ........................................... 40
(i) Infringement by Disregarding the ETSI Declaration ............... 40
(ii) Violation through Licensing Coordination re the Patent Pool of
the Second Defendant ....................................................... 42
bb) Affectedness ........................................................................... 44
cc) Damages................................................................................ 45
4. Claims against the Second Defendant..................................................... 45
a) Sections 33a(1), 33(1) ARC in conjunction with Article 101 TFEU ........ 45
aa) Violation through Refusal to Grant License.................................. 45
bb) Violation through Coordination of the Commercial Strategies of the
Pool Members ......................................................................... 45
(i) Coordination of the Litigation Strategies of the Pool Members . 46
(ii) Coordination of other Areas of the Pool Members' Business
Strategies ........................................................................ 51
(iii) Overall Strategy Violates Article 101 TFEU ........................... 52
cc) Affectedness ........................................................................... 52
dd) Damages................................................................................ 52
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b) Sections 33a(1), 33(1) ARC in conjunction with Article 102 TFEU ........ 52
aa) Willful Violation of Article 102 TFEU ........................................... 53
(i) Market Dominance ............................................................ 53
(ii) Abuse of a Dominant Position ............................................. 53
bb) Affectedness ........................................................................... 55
cc) Damages................................................................................ 56
5. Overall Strategy .................................................................................. 56
6. Section 823 (2) of German Civil Code in conjunction with Article 101 or 102
TFEU .................................................................................................. 56
7. Section 826 of the German Civil Code .................................................... 57
IV. Ancillary Claims ......................................................................................... 57
The numbers refer to the respective pages. The list of appendices is enclosed at the end of
the document.
A. Background
I. The Parties
1. The Claimant
(5) The Claimant is a company incorporated under German law specializing in the development
and manufacture of cellular modules ("Network Access Devices" or "NAD") and related
lifecycle management services. The cellular modules and related services are used to enable
cellular connectivity based on 2G, 3G, 4G and, prospectively, 5G standards in machine-to-
machine ("M2M") and Internet of Things ("IoT") devices.
(6) The Claimant's main customers include manufacturers of M2M and IoT devices such as
connected cars, smart meters, remote patient care, payment terminals or alarm systems,
which incorporate cellular modules to connect to a cellular network.
(7) With regard to the automotive industry, the Claimant operates as a so-called Tier 2-supplier
with its range of cellular modules based on 2G, 3G and 4G standards. The Claimant does not
supply the cellular modules it produces directly to the original equipment manufacturers
("OEM") such as Daimler or Porsche, but to Tier 1-suppliers, e.g., Harman Becker. The Tier
1-suppliers incorporate the modules in their own products, so-called telematics control units
("TCU"), which are then sold to the OEMs and incorporated in the vehicles.
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(8) Against this background, it is the Claimant and other Tier 2-suppliers who implement the
patented technologies, which are required for cellular connections by means of 2G, 3G and
4G or, in the future, 5G, in their products. Undertakings at downstream levels of the supply
chain, i.e. Tier 1-suppliers and OEMs, are generally not informed about the exact scope of
patent use in the products of Tier 2-suppliers as the Claimant and any pre-existing licenses.
As a result of the specialization that is indispensable and typical for sophisticated supply
chains, OEMs in particular have neither the know-how nor the (human and material)
resources in the area of mobile telecommunications technology to be able to assess or
(reliably) track the concrete extent of the use of patented technologies in the products of
their numerous (indirect) suppliers.
(9) The Claimant is part of the THALES Group, a leading international European technology
company. Until January 2020, the Claimant operated as Gemalto M2M GmbH ("Gemalto"),
and formerly as Cinterion Wireless Modules GmbH ("Cinterion"). Cinterion was originally a
division of Siemens AG ("Siemens"). In 2008, Siemens decided to divest its wireless module
business, which became an independent company (Cinterion Wireless Modules GmbH), and
was acquired by Gemalto Group and renamed Gemalto M2M GmbH in 2010. In April 2019,
THALES acquired the Gemalto Group and Gemalto M2M GmbH was renamed THALES DIS
AlS Deutschland GmbH (the Claimant) in January 2020.
(10) This action is focused solely on the anticompetitive conduct of the Defendants which caused
the Claimant the damages for which declaratory judgment is requested. Only for procedural
reasons, it shall hereby be clarified that no statement in this action shall be construed as an
acknowledgement that individual patents are essential for a certain standard, are infringed
by the Claimant's products or are valid.
2. The Defendants
a) Nokia Technologies Oy
(11) The First Defendant, headquartered in Espoo, Finland, is one of the world's leading providers
of telecommunications services, telecommunications infrastructure and technology
development. It has played a major role in the development of 2G (GSM), 3G (UMTS) and
4G (LTE) networks and is currently involved in the establishment of 5G standards. Against
this background, the First Defendant claims to have a substantial patent portfolio in the field
of mobile communications technology, which according to the Claimant's estimates includes
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over 2,000 patent families. These patent families in turn comprise a large number of
individual patents.
(12) The First Defendant used to be active as a manufacturer in the telecommunication hardware
sector as provider of mobiles and smartphones, until this division was acquired by Microsoft
in 2014.
(13) Since then, the First Defendant has primarily focused on the exploitation of its patent
portfolio and is one of the key patent licensors for 2G, 3G, 4G and, in the future, 5G products.
It holds various patents that it has declared standard essential ("standard essential patents"
or "SEP") for cellular modules such as those manufactured by the Claimant with regard to
the 2G, 3G and 4G standards.
(14) The parent company of the First Defendant is a member of the European Telecommunications
Standard Institute ("ETSI"), a standardization organization recognized throughout Europe,
which establishes standards for information and communications technologies and whose
members hence undertake to grant licenses for their SEP to all interested third parties on
fair, reasonable and non-discriminatory terms ("FRAND terms").
(15) In October 2018, the First Defendant joined the Second Defendant's licensing platform.
Evidence: Website of the Second Defendant, available at

https://www.avanci.com/2018/10/25/nokia-joins-avanci-licensing-platform/
(last accessed 16 June 2021)
b) Avanci, LLC
(16) The Second Defendant, headquartered in Dallas, USA, operates a licensing platform ("pool")
founded in 2016. It maintains offices in Dallas, Dublin, Tokyo and Beijing, among others.
The Pool is advertised as a digital "one-stop-marketplace" for the licensing of SEP,
particularly, in the area of 2G, 3G, 4G and, in the future, 5G mobile technology.
(17) The members of the licensing platform are patent holders. They account for around 62-68%
of all patents declared standard-essential in the area of 2G, 3G and 4G network standards.
The pool operated by the Second Defendant brokers portfolio licenses for these patents of
its members or licensors respectively.
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Evidence: Press release, 14 January 2019, available at

https://www.cubicibuc.com/avancis-lte-seps-now-at-50 (last accessed
16 June 2021)
Evidence: Survey of 3G and 4G SEPs licensed by Avanci by Richard Vary and Matthew
Noble of Bird & Bird ("Avanci's share of mobile SEPs far higher than previously
reported"), available at
https://www.twobirds.com/~/media/pdfs/news/articles/2020/avancis-
share-of-mobile-seps-far-higher-than-previously-reported--
iam466344231.pdf?la=en&hash=8198b0f3e415ff3f61680726216737ee3634
717a (last accessed on 16 June 2021)
(18) The most important members and thus licensors of the pool operated by the Second
Defendant include the First Defendant, Qualcomm, Interdigital, Ericsson and many others.
Evidence: Second Defendant's website, available at

https://www.avanci.com/marketplace/#li-licensors (last accessed 16 June
2021)
(19) The Second Defendant offers licenses or license packages only to certain user groups. In the
automotive sector, these are exclusively OEMs, i.e. the manufacturers of the end products
(vehicles). Licensees of the Second Defendant are, inter alia, VW, Audi, Seat, Bentley,
Porsche, MAN (all part of the Volkswagen Group), Rolls-Royce, BMW, Mini and Volvo.
Evidence: Second Defendant's, available at https://www.avanci.com/marketplace/#li-

licensees (last accessed 16 June 2021)
Evidence: Second Defendant's Press Release on License Agreement with BMW, available
on Second Defendant's website at
https://www.avanci.com/2017/12/01/avanci-announces-patent-license-
agreement-bmw-group-becomes-new-licensee-avanci-platform-securing-
license-standard-essential-patents-cellular-standards-2/ (last accessed
16 June 2021)
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Evidence: Press release of the Second Defendant on the license agreement with Audi
and Porsche, available on the Second Defendant's website at
https://www.avanci.com/2019/04/25/avanci-announces-new-patent-
license-agreements-audi-porsche/ (last accessed on 16 June 2021)
Evidence: Press release of the Second Defendant on the license agreement with the
Volkswagen Group (including Volkswagen, Bentley, MAN, Scania, Seat,
Skoda), available on the Second Defendant's website at
https://www.avanci.com/2019/05/06/avanci-signs-new-patent-license-
agreements-with-volkswagen-group-companies/ (last accessed
16 June 2021)
Evidence: Notice of Defendant's 2) license agreement with Volvo in December 2019 via
local press, available at, e.g.,
https://www.businesswire.com/news/home/20191202005918/en/Avanci-
Announces-New-Patent-License-Agreement-Volvo (last accessed
16 June 2021)
(20) Willing licensees who do not belong to this group are not licensed. Accordingly, the Second
Defendant refuses, inter alia, to grant licenses to component manufacturers such as the
Claimant, i.e., to companies upstream in the supply chain (Tier 1/Tier 2-suppliers), although
it is the component manufacturers who use and apply the SEP in question.
Evidence: Master License Management Agreement between Avanci, LLC, Qualcomm,

Inc. and Telefonaktiebolaget L.M. Ericsson dated 21 July 2016 (which
expressly limits "Licensed Products" to "Vehicles", cf. Document A.1.1 –
Patent License Agreement – Vehicles Licensing Program 2G/3G, § 1.12
(definition of "Licensed Products"), § 1.22 (definition of "Vehicles"), § 2.1
(License Grant); Document A.2.1 – Patent License Agreement – Vehicles
Licensing Program 2G/3G/4G – Vehicles Licensing Program 2G/3G/4G, § 1.12
(License Grant)), already submitted as Annex GMW 1
(21) If the patent holders (such as the First Defendant) do not agree to this licensing policy of
the Second Defendant, they are denied pool membership.
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(22) If, on the other hand, the patent holders accept the licensing and pricing policy of the Second
Defendant, the Second Defendant negotiates with the OEMs on behalf of all its members on
the basis of the jointly agreed licensing terms.

Inc. and Telefonaktielaboget L.M. Ericsson dated July 21, 2016, previously
submitted as Annex GMW 1
(23) Even though the Second Defendant does not expressly prohibit patent holders from granting
individual licenses outside the pool in the publicly available documents, there is a common
understanding, in the sense of an agreement, between the Second Defendant and some of
its key members, including in particular the First Defendant, to coordinate their overall
licensing practices and to refuse to generally grant individual licenses to component
manufacturers such as the Claimant altogether or to offer royalty and conditions rates that
are likely to discourage licensees from obtaining a license.
Evidence: Email from Nokia to Thales DIS AIS Deutschland GmbH dated
30 November 2020, attached in photocopy as Annex GMW 2, in which the
allegations are denied, but at the same time the Claimant is denied a license
offer
Evidence: Email from Avanci to Thales DIS AIS Deutschland GmbH dated 11 April 2018,
attached in photocopy as Annex GMW 3, in which it is expressed that Avanci
tries to avoid double licensing in the supply chain
(24) In addition, far-reaching agreements have been entered into between the Second Defendant
and its members in the event of patent infringements. The Second Defendant, for instance,
reimburses its members for all legal costs in the event that the members enforce their
patents declared as SEP in favor of the patent pool. The aim is to, inter alia, maintain
discipline among its members with regard to their licensing strategies.

Inc. and Telefonaktiebolaget L.M. Ericsson dated 21 July 2016 (esp. "5.1.2
Licensor Litigation Costs"), already submitted as Annex GMW 1
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II. The Facts
1. Preamble
(25) The Parties are in dispute about the licensing policy of the First and Second Defendant and,
in particular, about the fact that the First and Second Defendant refuse to grant licenses for
technologies that the Claimant needs to apply for the manufacture of its cellular modules
and terminals for the automotive industry and beyond. These technologies include the ETSI
communication standards (2G, 3G, 4G and, prospectively, 5G mobile communications
standards), which cannot be substituted. Cellular modules that are not compatible with the
aforementioned standards are not marketable.
(26) ETSI is the European standardization organization responsible for standards in the field of
information and communication technologies. Among other technologies, it has defined a
variety of standards for mobile communications related to 2G, 3G, 4G and 5G technologies.
Through the communications standards jointly introduced and agreed upon with its
members, the underlying technologies and processes become part of the standard.
Manufacturers whose products use the relevant standards and thus need to implement the
underlying technologies must therefore rely on licensing agreements that cover the
associated patent rights. Alternatives to implement these standards do not exist.
2. Negotiations with the First Defendant
(27) The Claimant first became aware of an allegedly unauthorized use of Nokia SEP with respect
to its cellular modules in 2014. On 10 September 2014, the Claimant (then doing business
as Gemalto) was contacted in writing by what was then Core Wireless Licensing S.à.r.l.
("Core," now Conversant Wireless Licensing S.à.r.l.). In this letter, Core's representatives
pointed out that the company had acquired a portfolio of approximately 1,200 Nokia patents,
including those related to 2G, 3G and 4G technologies, which were allegedly essential to the
standards and were allegedly infringed by the Claimant's cellular modules.
Evidence: Letter from Core Wireless Licensing S.à.r.l. to Gemalto M2M GmbH dated
10 September 2014, attached in photocopy as Annex GMW 4
(28) However, the Claimant was of the opinion that it benefited from a (cross) license agreement
which had originally been concluded between the First Defendant and Siemens and from
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which legal successors of Siemens such as the Claimant might also derive rights. The
Claimant therefore assumed that the corresponding license rights had been transferred from
Siemens to the Claimant when the module business was spun off, and that the Claimant was
entitled under this (cross) license agreement to manufacture products using the patented
Nokia technologies.
Evidence: Testimony of Mr Olivier Mas, legal representative of Thales, to be summoned

via the applicant
Evidence: Testimony of Mr Carsten Petsch, legal representative of Gemalto/Thales, to

be summoned via the applicant
Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, photocopy

attached as Annex GMW 5
(29) Since no copy of the (cross) license agreement had been provided to the Claimant by
Siemens during the spin-off, the Claimant was initially not in a position to prove to Core (and
other third parties) its rights evidenced therein. However, the existence and content of the
(cross) license agreement had been described to the Claimant by its lawyers in the course
of the due diligence during the acquisition of the Siemens module business.
Evidence: Testimony of Mr Olivier Mas, legal representative of Thales, b.b.
Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, already

(30) According to this, the (cross) license agreement between the First Defendant and Siemens
of 2004 contained a so-called spin-off clause, which allowed both contracting parties without
restriction to assign or transfer substantial rights from the agreement to any legal successor.
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This occurred in the context of the acquisition of the Siemens Wireless Modules business by
Cinterion.
Evidence: Business Transfer Agreement between Siemens AG and Cinterion Wireless

Modules GmbH dated 30 May 2008, attached in photocopy as Annex GMW 6
Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, already

(31) Making copies of this or other (cross) license agreements was, however, not permitted as
part of the transaction with Siemens.
Evidence: Testimony of Mr Carsten Petsch, legal representative of Gemalto/Thales, b.b.
(32) In a letter dated 25 March 2015, the Claimant therefore contacted the First Defendant as
the former holder of the patents referred to by Core, and requested its consent to the
disclosure of the (cross) license agreement from 2004 with Siemens. Siemens itself was not
prepared to take this step without the consent of the First Defendant, as Siemens feared
that it would be in breach of contract regarding its confidentiality obligations towards the
First Defendant.
Evidence: Letter from Gemalto M2M GmbH to Nokia dated 25 March 2015, attached in
photocopy as Annex GMW 7
(33) The First Defendant did not respond to this letter.
(34) After various further attempts to contact the First Defendant, the Claimant again wrote to
the First Defendant and asked for its cooperation on 14 March 2016.
Evidence: Letter from Gemalto M2M GmbH to Nokia dated 14 April 2016, attached in
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(35) Following this request, the discussions with the First Defendant continued to be difficult. In
the summer of 2017, the Claimant and the First Defendant finally agreed that both were
ready to conclude a non-disclosure agreement ("NDA") to discuss the facts of the case in a
confidential setting.
(36) Corresponding drafts were exchanged and modified by mutual comments.
Evidence: Draft NDA dated 27 July 2017 and revision to draft NDA dated 1 August 2017,
attached in photocopy as Annex GMW 9
(37) Nevertheless, the First Defendant ultimately refused to sign the NDA. The First Defendant
neither provided any reasons for terminating the negotiations nor is the Claimant aware of
any material reasons.
(38) Instead, in 2018, the First Defendant began contacting the Claimant's customers, inter alia
manufacturers of smart meters or payment terminals, and urged them to acquire licenses
for their interconnected products directly from the First Defendant.
Evidence: Letters from Nokia Technologies Oy to Sagemcom Broadband SAS dated

22 February 2018, 7 August 2018 and 28 September 2018, attached in
Evidence: Email correspondence between representatives of Nokia Technologies Oy and

EDMI Meters between 20 April 2018 and 16 November 2018, attached in
Evidence: Letter from Nokia Technologies Oy to PowerFleet dated 9 September 2020,

Evidence: Letter from Nokia Technologies Oy to Ingenico Group S.A. dated

19 October 2020 attached in photocopy as Annex GMW 13
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(39) After further attempts by the Claimant to enter into negotiations with the First Defendant
remained unsuccessful, the Claimant's lawyers from Eisenführ Speiser contacted the First
Defendant in a letter dated 1 June 2018, again requesting it to sign the NDA and again asking
it to refrain from any direct contact with the Claimant's customers, to whom the First
Defendant had in the meantime not only offered licenses, but also untruthfully claimed that
the Claimant was not a willing licensee.
Evidence: Letter from Eisenführ Speiser Attorneys at Law to Nokia dated 1 June 2018,
photocopy attached hereto as Annex GMW 14
(40) In fact, on the contrary, the Claimant expressly – but unsuccessfully – requested a FRAND
license in the event that the rights from the (cross) license agreement were not sufficient:
"[…] Gemalto declares that it is willing to be a "full" licensee of Nokia."
(in German:
"[…] Gemalto erklärt seine Bereitschaft, ein "voller" Lizenznehmer von Nokia zu
werden.").
Evidence: Letter from Eisenführ Speiser Attorneys at Law to Nokia dated 1 June 2018,
already submitted as Annex GMW 14
(41) In the meantime, the former Gemalto Group (including the Claimant under its former name)
was acquired by THALES and the Claimant subsequently changed its name.
(42) Notwithstanding the takeover, the Claimant continued the efforts it had begun as part of the
Gemalto Group. In a letter dated 8 October 2020, the Claimant again approached the First
Defendant with the aim of reaching an amicable solution. The Claimant again requested
consent to be disclosed the (cross) license agreement of 2004 and reiterated its will to obtain
a FRAND license:
"THALES hereby formally reiterates its request to NOKIA to grant it a FRAND license
under its essential 2G/3G/4G patents to manufacture and sell Wireless Modules […]"
(in German:
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"THALES bekräftigt hiermit förmlich seine Anfrage an Nokia eine FRAND Lizenz für
ihre essentiellen 2G/3G/4G Patente zwecks Herstellung und Verkauf von
Mobilfunkmodulen zu gewähren […]").
Evidence: Letter from Thales DIS AIS Deutschland GmbH to Nokia dated 8 October
2020, attached in photocopy as Annex GMW 15
(43) However, the efforts were unsuccessful.
Evidence: Email from Nokia to THALES DIS AIS Deutschland GmbH dated
30 November 2020, already submitted as Annex GMW 2
(44) In December 2020, the Claimant made one last attempt for an out-of-court settlement and
requested the First Defendant to submit an offer for a FRAND license:
"Thales wishes to re-emphasize that it continues to be a willing licensee for Nokia's

SEPs and its willingness to take a FRAND license on terms which are in fact FRAND
for any patent use not covered by the Nokia-Siemens license agreement, in
accordance with Nokia’s ETSI commitments."
(in German:
"Thales möchte noch einmal betonen, dass es weiterhin ein williger Lizenznehmer für
die SEPs von Nokia ist und dass es bereit ist, eine FRAND Lizenz zu tatsächlichen
FRAND Bedingungen für jede Patentnutzung, die nicht durch den Nokia-Siemens-
Lizenzvertrag abgedeckt ist, in Übereinstimmung mit den ETSI-Verpflichtungen von
Nokia zu erwerben.").
Evidence: Letter from Thales DIS AIS Deutschland GmbH to Nokia dated 24 December
2020, attached in photocopy as Annex GMW 16
(45) However, these efforts were again unsuccessful. In fact, the First Defendant ignored this
letter in an email dated 21 April 2021.
Evidence: Email from Nokia Technologies OY to Thales DIS AIS Deutschland GmbH
dated 21 April 2021, attached in photocopy as Annex GMW 17
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(46) The First Defendant's continuous refusal to cooperate and provide a FRAND offer to the
Claimant is a mere reflection of the official licensing policy of the Second Defendant, which
the First Defendant joined in October 2018. Accordingly, the First Defendant's conduct must
be interpreted against the background of its collaboration and coordination with the Second
Defendant.
(47) In February 2021, the Claimant finally obtained from Siemens (not the First Defendant!)
access to a partially redacted version of the Siemens/Nokia (cross) license agreement
subject to strict confidentiality. The access confirmed the Claimant's view that it is entitled
to claims against the First Defendant with regard to the patents that are the subject matter
of the agreement, i.e. patents that were applied for by the First Defendant up to 31
December 2008.
(48) To sum up: The First Defendant left the Claimant in the dark without justification as to the
scope of the (cross) license agreement, from which the Claimant might be able to derive
rights, did not comply with the Claimant's license requests and instead began to cooperate
with the Second Defendant and, in the course of this, forced the Claimant's customers and
their downstream customers to accept licenses. In this context, the First Defendant, as is
probably known to the courts, initiated legal action against Daimler AG, among others, in a
series of patent infringement proceedings. According to the press release of the First
Defendant dated 1 June 2021, the corresponding proceedings have in the meantime come
to an end through a settlement between Daimler AG and the First Defendant by which
Daimler will take a license.
Evidence: Press release, dated 1 June 2021 available on the First Defendant's website
at https://www.nokia.com/about-us/news/releases/2021/06/01/daimler-
and-nokia-sign-patent-licensing-agreement/ (last accessed 16 June 2021).
3. Contacts with the Second Defendant
(49) After the First Defendant had joined the Second Defendant's platform in 2018, the Claimant
also contacted the Second Defendant to resolve the conflict with the First Defendant. In this
context, the Claimant was particularly interested in discussing its license status in order to
finally obtain legal certainty and to obtain a FRAND license. If a disclosure of the relevant
(cross) licensing agreement by the Second Defendant and/or the First Defendant had
revealed that valid licenses in favor of the Claimant did not (comprehensively) exist –
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contrary to the Claimant's believe and legal understanding – the Claimant would have been
prepared to take new licenses from the Second Defendant or the First Defendant under
FRAND conditions as is shown by its repeated requests vis-à-vis the First Defendant.
Evidence: Testimony of Mr. Carsten Petsch, legal representative of Gemalto/Thales, b.b.
(50) However, these efforts were unsuccessful, and the Second Defendant refused to cooperate
and did not provide a FRAND offer for the SEP it administers to the Claimant. It is the Second
Defendant's approach to only license certain members of a particular supply chain
(e.g. OEMs in the automotive industry), which amounts to a general refusal to provide
FRAND licenses to any third party, which is not part of the respective customer group.

Inc. and Telefonaktiebolaget L.M. Ericsson dated 21 July 2016 (which
expressly limits "Licensed Products" to "Vehicles", cf. Document A.1.1 –
Patent License Agreement – Vehicles Licensing Program 2G/3G, § 1.12
(License Grant); Document A.2.1 – Patent License Agreement – Vehicles
Licensing Program 2G/3G/4G – Vehicles Licensing Program 2G/3G/4G, § 1.12
(License Grant)), already submitted as Annex GMW 1
4. Effects on the Business of the Claimant
(51) The licensing of mobile communications technologies is of enormous importance to the

Claimant and more broadly for the cellular module makers industry which is key to the
development of IoT applications through their research and development efforts. Its
development, manufacturing and supply activities regarding cellular modules are based on
technologies (2G, 3G, 4G and, prospectively, 5G mobile standards) with regard to which the
First Defendant claims to hold SEPs. Thus, both the Claimant's ability to innovate and its
market position depend to a large extent on the right to use the patented technology.
Evidence Wirtschaftswoche of 27 November 2020, available at:

https://www.wiwo.de/politik/europa/internet-der-dinge-warum-die-
patentschlacht-zwischen-daimler-und-nokia-so-bedeutend-
ist/26665386.html (last accessed 16 June 2021)
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(52) Based on a direct license for the SEP, suppliers, such as the Claimant, are in a position to
independently pursue their business activities and develop and manufacture cellular modules
in a legally secure manner and to distribute them to any Tier 1-suppliers, vehicle
manufacturers as well as other OEMs outside the automotive industry. Only with their own
license can they also provide the delivery "free of third-party rights" required in supplier
contracts in accordance with industry practice.
(53) Insofar as the patent holders are willing to grant OEMs a license that includes the right to
have supplier parts manufactured using the patented technology (so-called "have made"
rights), this is in no way equivalent to the component manufacturers' own license. Without
their own FRAND license, a component manufacturer like the Claimant would be dependent
upon the OEMs' licenses and their decisions to commercially and technically engage in
licensing discussions which appear remote for them as the patented technology is
implemented several steps upstream in the supply chain and of which the OEM naturally has
no detailed knowledge. Not licensing the component manufacturer would also further
increase the market power of the OEMs because their suppliers will be dependent on the
OEMs' license, i.e. rely on the "have made" rights, to manufacture products that use the
teachings of the SEP. If only the OEM is licensed, the Claimant could only sell to these specific
OEMs, and could furthermore not sell its products to customers in the independent
aftermarket, customers outside the automotive industry or directly to end consumers. The
lack of an own license will also create a significant risk and disincentive for the Claimant to
invest in the research and development of new products that comply with the communication
standards the same way it would have done based on its own license. All of the foregoing
does not only seriously distort competition. It also deprives the Claimant of its right to
participate in the competitive process on fair terms and will affect the development of further
IoT applications since the Claimant's ability to innovate and bring new products on the
markets will be seriously jeopardized.
(54) As a result of the First and Second Defendant's refusal to license, the Claimant has suffered
and will continue to suffer substantial, as yet unquantifiable, damages due to the failure of
the First Defendant and the Second Defendant to grant licenses.
(55) To the extent that First and Second Defendant have already issued or are still issuing
individual or pooled licenses to OEMs, the OEMs take recourse against their upstream
suppliers for royalties they pay to First and Second Defendant.
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(56) The OEMs refer to reimbursement claims against their immediate upstream suppliers (Tier
1-suppliers), who in turn refer to reimbursement claims against their upstream suppliers
(Tier 2-suppliers). The same applies with regard to similar clauses/reimbursement claims
outside the automotive industry. Accordingly, the licensing costs are passed up the supply
chain to the Claimant as the component manufacturer.
Evidence Letter from Ingenico Group to Gemalto M2M GmbH dated 13 February 2020,
Evidence Third party notice TomTom International B.V. to THALES DIS AlS Deutschland
GmbH dated 7 April 2020, attached in photocopy as Annex GMW 19
(57) In this context, it should be noted that SEPs are implemented (if at all) only by component
manufacturers, not by downstream players in the supply chain. OEMs and other (direct)
customers can therefore neither determine which SEPs are used, nor whether the alleged
patents are valid and standard-essential or already licensed in the supply chain and thus to
which extent conditions are FRAND.
(58) This issue is particularly striking in the automotive supply chain. Since in the respective
supply contracts of the automotive industry supplier parts must contractually be delivered
"free of third-party rights" in accordance with standard industry practice, the OEMs do not
check these complex questions of use, pre-licensing, infringement and effectiveness, which
are often simply not verifiable for them, but simply claim the license costs from their
upstream suppliers (which is economically rational from their point of view). As noted by the
ECJ, a standardization body like ETSI "does not check whether patents are valid or essential
to the standard in which they are included" 1. These questions require in-depth technological
know-how of the standard, the patents and the component(s) at issue that allegedly read
on the patent. Given the apparent information asymmetry between OEMs and patent owners,
combined with the existing ability to hold upstream suppliers accountable, a moral hazard
problem arises: the average OEM has no opportunity or incentive to comprehensively review
the technology and negotiate the Defendants' license offers. The incentive on the part of the
1
ECJ, decision of 16 July 2015, C-170/13, ECLI:EU:C:2015:477, para. 69 – Huawei/ZTE.
1 July 2021
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OEM to obtain licenses at "any price" is reinforced by the enormous damages that OEMs face
in the event of a court-ordered sales freeze for their vehicles.
(59) Faced with the threat of injunctions which could have significant impact on their core
businesses, a number of OEMs have decided to bend over and take direct licenses from the
Second Defendant even more so as they know that the amount they pay will be supported
by the suppliers and more specifically by the cellular module makers such as the Claimant
which are bound by contractual indemnification provisions.
(60) The First and Second Defendant deliberately exploit this situation through their licensing
practices in order to receive royalties that inaccurately reflect the conditions in the supply
chain in their favor. The result is an inappropriate or (insofar as licenses already exist in the
supply chain) double remuneration of the patents of the First and Second Defendant.
(61) The dispute concerning the (cross) license agreement between Nokia and Siemens, on which
the Claimant relies, exemplifies these issues. The First Defendant shows no interest in
participating in the clarification of an already existing license of a component manufacturer
such as the Claimant or any claim in this regard. On the contrary, it is advantageous for the
First Defendant if details remain unclear and, in particular, OEMs and other (direct)
customers have no certainty with respect to the licensing status of their suppliers.
(62) Against this background, it is realistic that the terms of the license agreements between
OEMs as well as other (direct) customers of the Claimant and the Defendants as well as other
patent holders do not adequately reflect the actual licensing requirements in the supply chain
and that the negotiations will lead to licensing conditions that deviate from those that the
Defendants and the component manufacturers (implementers) would agree on.
(63) Accordingly, the Claimant is exposed to contractual reimbursement claims from its customers
in- and outside of the automotive industry, which significantly exceed the licensing costs it
would otherwise have to incur and potentially also include further defense related
expenditures of the customers. In view of the ongoing development and reimbursement
claims still to be expected, the occurrence of damages is not yet complete. In addition, due
to the actions of the First Defendant, the Claimant has suffered reputational damages. The
Claimant's reputation has been damaged by the First Defendant's assertion to third parties
that the Claimant is unwilling to obtain a license, which does not appropriately reflect its
actual conduct.
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B. Legal Appraisal
(64) The action is admissible and well-founded.
I. Admissibility of the Action
(65) The Munich Regional Court has international, local and subject-matter jurisdiction.
(66) Any agreements about any other place of jurisdiction or any arbitral jurisdiction for disputes
regarding cartel damages do not exist between the parties.
1. International and Local Jurisdiction
a) First Defendant
(67) The Munich Regional Court has international and local jurisdiction with regard to the First
Defendant.
(68) The international jurisdiction with regard to the First Defendant, which is domiciled in
Finland, is determined by Regulation (EU) No. 1215/2012 on jurisdiction and the recognition
and enforcement of judgments in civil and commercial matters ("Brussels Ia Regulation"),
see Article 1(1) Brussels Ia Regulation.
(69) Pursuant to Article 7(2) Brussels Ia Regulation, for the determination of jurisdiction with
respect to tortious acts the "place [where] the harmful event occurred" is relevant, which
can refer both to the place where the illegal activity took place and to the place where its
effects manifested themselves, 2 i.e., the market negatively affected by the conduct of the
tortfeasor. 3 This is – in any event – the case at the seat of the company directly harmed by
the antitrust violation, i.e., the Claimant. 4
2
ECJ, decision of 5 July 2018, C-27/17, ECLI:EU:C:2018:533, para. 45 et seqq. – Lithuanian Airlines; German
Federal Supreme Court, decision of December 11, 2018, KZR 66/17 – Booking.com;
cf. Hess/Koutsoukou/Westerhoven in: Fuchs/Weitbrecht, Handbuch Private Kartellrechtsdurchsetzung, 2019,
Section 20 para. 8 with further references on the application of the tortious jurisdiction.
3
Cf. ECJ, decision of 29 July 2019, C-451/18, ECLI:EU:C:2019:635, para. 33 – Tibor-Trans.
4
ECJ, Judgment of 21 May 2015, C-352/13, 1176, ECLI:EU:C:2015:335, para. 52 f. – CDC Hydrogen
Peroxide; ECJ, Judgment of 29 July 2019, C-451/18, EuZW 2019, 792, 793; German Federal Supreme Court,
decision of 27 November 2018, X ARZ 321/18, NJW-RR 2019, 238, 239.
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(70) The Claimant's registered office is in Munich. The First Defendant's conduct had a direct
effect on the Claimant and on the market in Munich, which is thus the place where the effects
are felt within the meaning of Article 7(2) Brussels Ia Regulation.
b) Second Defendant
(71) The Munich Regional Court also has international and local jurisdiction with regard to the
Second Defendant.
(72) Due to the fact that the Second Defendant is domiciled in the USA, both international and
local jurisdiction are determined pursuant to Section 32 of the German Code of Civil
Procedure. 5 There is no other overriding jurisdictional provision.
(73) Section 32 of the German Code of Civil Procedure determines the jurisdiction with regard to
the place of action or place of success. 6 In the case of antitrust violations, the place of
success is in any case the registered office of the company directly harmed by the antitrust
violation, 7 i.e. the Claimant (see above).
2. Subject-Matter Jurisdiction
(74) The Munich Regional Court has subject-matter jurisdiction pursuant to Sections 87
sentence 1, 89 ARC in conjunction with Section 33 of the Regulation on Judicial
Competencies in the Area of the State Ministry of Justice. The claims asserted are antitrust
damages claims under Sections 33a, 33 ARC or general tort claims under Section 823(2)
and Section 826 of the German Civil Code in conjunction with Articles 101, 102 TFEU and
Sections 1, 19 and 20 ARC 8 and thus civil disputes.
5
Higher Regional Court of Dusseldorf, decision of 22 March 2019, I-2 U 31/16, BeckRS 2019, 6087, para. 85
– Improving Handovers; Higher Regional Court of Dusseldorf, decision of 10 November 2010, U (Kart) 19/10,
10, BeckRS 2011, 535; German Federal Supreme Court, decision of 18 January 2011, X ZR 71/10, NJW 2011,
2056; Hess/Koutsoukou/Westerhoven in: Fuchs/Weitbrecht, Handbuch private Kartellrechtsdurchsetzung,
2019, Section 20 para. 73.
6
German Federal Supreme Court, decision of 25 November 1993, IX ZR 32/93, NJW 1994, 1413, 1414;
German Federal Supreme Court, decision of 2 March 2010, VI ZR 23/09, NJW 2010, 1752, 1752;
Hess/Koutsoukou/Westerhoven in: Fuchs/Weitbrecht, Handbuch private Kartellrechtsdurchsetzung, 2019,
Section 20 para. 74.
7
German Federal Supreme Court, decision of 27 November 2018, X ARZ 321/18, NJW-RR 2019, 238, 239;
Regional Court of Dortmund, decision of 9 September 2020, 8 O 42/18, BeckRS 2020, 21184, para. 6 et
seqq.; Hüßtege in: Thomas/Putzo, ZPO, 41st edition 2020, Section 32 ZPO para. 15
8
In the following, Sections 1, 19 and 20 ARC, which are also relevant and violated, will not be quoted for
reasons of clarity only.
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II. Legitimate Interest in the Declaratory Judgment
(75) The Claimant has a legitimate interest in a judicial declaration pursuant to Section 256(1) of
the German Code of Civil Procedure that the First and Second Defendant are obliged to
compensate the Claimant for the damages resulting from the Defendants' violations of
competition law.
(76) According to the established case law of the German Federal Supreme Court, a legal interest
in the determination of the existence or non-existence of a legal relationship is given if the
right or the legal position of the Claimant is threatened by a present uncertainty and the
judgment sought is suitable to eliminate this uncertainty. 9 The German Federal Supreme
Court emphasized in this regard:
"However, there is no general subsidiarity of the declaratory action to the action for
performance. Admissibility vis-à-vis the action for a declaratory judgment is to be
affirmed despite the possibility of bringing an action for performance if declaratory
judgment proceedings leads, from the point of view of procedural economy, to a
meaningful and appropriate settlement of the points in dispute that have arisen." 10
(77) In this sense, the German Federal Supreme Court in its case law has established that a
legitimate interest in a declaratory judgment with a view to damages exists if it is not possible
to quantify the damage because the damage development has not been completed at the
time the action is filed and the damage can therefore not be finally quantified. 11 As regards
pecuniary damages, the settled case law states that it is sufficient, that future losses are
probable. The requirements for this are rather low. 12 In particular, a high degree of
probability is not necessary. 13 Extensive expert opinions or calculations of the abstract
possible damage are not to be demanded from the Claimant. 14
9
German Federal Supreme Court, decision of 7 February 1986, V ZR 201/84, NJW 1986, 2507, 2507; cf. also
Becker-Eberhard in: Münchener Kommentar zur ZPO, 6th edition 2020, Section 256 ZPO para. 39.
10
German Federal Supreme Court, decision of 9 June 1983, III ZR 74/82, NJW 1984, 1118, 1118.
11
German Federal Supreme Court, decision of 19 April 2016, VI ZR 506/14, BeckRS 2016, 8733, para. 6;
Regional Court of Munich, decision of 28 June 2019, 37 O 18505/17, BeckRS 2019, 24024, para. 40.
12
German Federal Supreme Court, decision of 26 July 2018, I ZR 274/16, NJW-RR 2018, 1301, 1303; German
Federal Supreme Court, decision of 21 January 2000, V ZR 387/98, NJW 2000, 1256, 1257.
13
Higher Regional Court of Munich, decision of 21 February 2013, U 5006/11 Kart, BeckRS 2013, 5429.
14
German Federal Supreme Court, decision of 12 July 2005, VI ZR 83/04, NJW 2006, 1271, 1275 f; Becker-
Eberhard in: Münchener Kommentar zur ZPO, 6th edition 2020, Section 256 ZPO para. 54.
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(78) The Claimant suffers considerable damages as a result of the failure of First and Second
Defendant to grant FRAND licenses, inter alia, as a result of reimbursement claims by its
customers and the loss of actual/potential customers.
(79) As already explained, the refusal of the First and Second Defendant to grant a FRAND license
for the use of the 2G, 3G and 4G or, prospectively, 5G technologies to the Claimant, as the
manufacturer of the patent-implementing products, will in all likelihood lead to excessive
license fees for the OEMs licensed under the First and Second Defendants' licensing policy.
As a result of the industry practice to supply products "free of third-party rights," OEMs have
recourse against their upstream suppliers for their licensing costs, who in turn pass their
damages on to the Claimant. Similar scenarios exist well beyond the automotive supply
chain.
(80) In this context, it must additionally be emphasized that the Claimant's efforts to acquire new
customers are significantly impaired. In particular, the allegations of the First Defendant that
the Claimant does not have a valid license and was not willing to take a license are suitable
to massively damage the reputation of the Claimant in the market, to deter potential
customers and impair business transactions because customers of the Claimant are deterred
by the lack of freedom from third-party rights or factor this in respectively.
(81) For various reasons, it is not possible to quantify the individual damage items in full - due to
unforeseeable third-party actions and the currently still unclear development of the
damages.
III. Damages Claims
(82) The action is well founded.
(83) The Claimant has a claim against the First and Second Defendant for compensation for the
damages it has suffered or will suffer.
(84) The claims asserted follow from Sections 33a(1), 33(1) ARC Section and 823(2) of the
German Civil Code in conjunction with Articles 101 TFEU or 102 TFEU and Section 826 of the
German Civil Code all in conjunction with Section 33d ARC, Sections 840 and 421 of the
German Civil Code.
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(85) The First Defendant violates Article 102 TFEU by refusing to submit a FRAND offer to the
Claimant despite the Claimant 's expressly communicated willingness to license (cf. 3.a.).
(86) The First Defendant also violates Article 101 TFEU by the fact that it
• refused to license the Claimant on FRAND terms and thus acted contrary to the terms
of its (non-disputable) contractual adhesion to ETSI standardization (cf. 3.b.); and
• contributed its SEPs to the patent pool administered by the Second Defendant and in
this respect agreed to and followed the coordinated business policy of at least some
of its members, i.e. granting licenses exclusively to OEMs (cf. 3.b.).
(87) The Second Defendant violates Articles 101 and 102 TFEU by
• refusing, as part of its coordinated licensing policy, to license the SEPs it administers
to component manufacturers such as the Claimant (cf. 4.a. and b.); and
• coordinating the commercial (including litigation) strategies of at least some of its

key members with respect to the licensing of SEP exclusively to OEMs with the aim
of strengthening the Second Defendant's dominant position with respect to SEP (cf.
4.a.).
(88) While the aforementioned violations of competition law are illegal in and of themselves, they
must be understood as part of an overall cartel established by the Second Defendant and
some of its key members, such as the First Defendant, in order to unduly maximize their
SEP profits by licensing only to certain participants of a particular supply chain (i.e. OEM) to
the detriment of the Claimant and potentially other component manufacturers.
(89) As part of this strategy, the First and Second Defendant refuse to license the Claimant on
FRAND terms, effectively denying the Claimant the ability to operate on the market
independently and freely. Instead, the Claimant faces significant reimbursement claims from
its customers, who try to recoup the (excessive/abusive) licensing royalties they pay. This
effectively reduces the Claimant's margins and threatens its commercial viability as a
manufacturer of cellular modules.
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1. Applicable Substantive Law
(90) German and EU antitrust law is applicable to the facts of the case with regard to the First
and Second Defendant.
(91) In the case of tortious antitrust claims, the applicable law is governed by Article 6 of EC
Regulation 864/2007 of 11 July 2007 on the law applicable to non-contractual obligations
("Rome-II Regulation"), Articles 1(1), 31, 32 Rome-II Regulation.
(92) The Rome-II Regulation determines the applicable law based on the effects:
"(1) [...]
(3) (a) The law applicable to a non-contractual obligation arising out of a restriction
of competition shall be the law of the country where the market is, or is likely to be,
affected."
(93) Insofar as First and Second Defendant refuse to grant licenses for their SEPs to the Claimant,
which is based in Munich and willing to obtain a license on FRAND terms, this primarily affects
the Claimant's business activities in Germany and thus the German market. Therefore, any
damages suffered by the Claimant manifest in Germany. Accordingly, pursuant to
Article 6(3)(a) of the Rome-II Regulation, German and European antitrust law is applicable. 15
2. Basis of Claims
(94) The Claimant is entitled to damages vis-à-vis the First and Second Defendant.
(95) The violations of Articles 101 and 102 TFEU give rise to claims under Section 33a(1), 33(1)
ARC as well as Section 823(2) and Section 826 of the German Civil Code. 16
3. Claims against the First Defendant
(96) The Claimant is entitled to damages vis-à-vis the First Defendant.
15
Dortmund Regional Court, decision of 14 May 2014, 8 O 46/13, BeckRS 2014, 19175 – IHF; with regard to
Section 130 ARC a.F. (now Section 185 ARC) German Federal Supreme Court, decision of 7 June 2016, KZR
6/15, BeckRS 2016, 10974, para. 44 et seq. – Pechstein.
16
As already explained, for reasons of clarity only we do not deal separately with the additional infringements
of Sections 1, 19 and 20 ARC.
1 July 2021
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a) Sections 33a(1), 33(1) ARC in conjunction with Article 102 TFEU
(97) The First Defendant abuses its dominant position as owner of SEPs by refusing to submit a
FRAND offer to the Claimant despite explicit and repeated requests to enter into FRAND
negotiations by the Claimant and implementing a blackmail strategy against OEMs, fully
aware that this would result in damages to the Claimant.
aa) Willful Violations of Article 102 TFEU
(i) Market Dominance
(98) The First Defendant is individually dominant, as is each Avanci member is.
(99) According to the established case law of the ECJ, a dominant position is defined as
"the position of economic strength enjoyed by an undertaking [...] which enables it

to prevent the maintenance of effective competition on the relevant market by
affording it the power to behave to an appreciable extent independently of its
competitors, customers and ultimately consumers. Such a position, unlike a
monopoly or quasi-monopoly, does not preclude a certain degree of competition, but
enables the favored firm to determine, or at least appreciably to influence, the
conditions under which such competition may develop, and in any event largely to
disregard it in its conduct without detriment." 17
(100) With regard to the licensing of SEPs, the European Commission has stated:
"[t]he specificity of SEPs is that they have to be implemented in order to comply with
a standard and thus cannot be designed around, i.e., there is by definition no
alternative or substitute for each such patent" 18
(in German:
17
ECJ, decision of 13 February 1978, C-85/76, ECLI:EU:C:1979:36, para. 38 et seq. – Hoffmann-La
Roche/Vitamine; ECJ, decision of 14 February 1978, C-27/76, ECLI:EU:C:1978:22, para. 2, 4 – United Brands;
ECJ, decision of 9 November 1983, C-322/81, ECLI:EU:C:1983:313, para. 30 - Michelin.
18
European Commission, decision of 13 February 2012, COMP/M.6381, para. 54 – Google/Motorola Mobility;
European Commission, decision of 29 April 2014, COMP/AT.39985, para. 207 – Motorola; European
Commission, decision of 29 April 2014, COMP/AT.39939, para. 26 et seqq. – Samsung.
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"[D]ie Besonderheit von SEPs besteht darin, dass sie implementiert werden müssen,
um einem Standard zu entsprechen, und daher nicht umgangen werden können, d.h.
es gibt per Definition keine Alternative oder Ersatz für dieses Patent").
(101) On this basis, the European Commission has established that
"each SEP constitutes a separate relevant technology market on its own" 19
(auf deutsch:
"jedes SEP begründet für sich einen separaten Technologiemarkt").
(102) This is in line with the decisional practice of the German Federal Supreme Court:
"If an industrial standard [...] or another set of rules (de facto standard), which is
observed by the customers like a standard, specifies a standardized design of a
product which is protected by property rights - and which, from the point of view of
the customer, cannot be substituted by another product - the granting of rights,
which enable potential suppliers of this product to bring it onto the market, regularly
forms a separate market which is upstream of the product market." 20
(103) With regard to the technologies required for the implementation of the 2G, 3G and 4G
standards, each SEP holder thus has a 100% market share on the respective licensing
market. 21
(104) A valid patent that is essential to a standard is indispensable for the use of that standard. 22
This applies even more if - as is the case with respect to First and Second Defendant - not
only individual patents but patent portfolios consisting of thousands of patents are at issue.
To the extent that the standard itself cannot be circumvented using alternative technologies,
each owner of a valid SEP or patent portfolios including such SEP thus possesses an absolute
19
European Commission, decision of 13 February 2012, COMP/M.6381, para. 54, 61 – Google/Motorola
Mobility; European Commission, decision of 29 April 2014, COMP/AT.39985, para. 213 - Motorola; European
Commission, decision of 29 April 2014, COMP/AT.39939, para. 41 et seqq. – Samsung.
20
German Federal Supreme Court, decision of 5 May Mai 2020, KZR 36/17, GRUR 2020, 961 para. 57 –
FRAND Defense.
21
Cf. Regional Court of Dusseldorf, decision of 7 May 2020, 4 c O 44/18, GRUR-RS 2020, 12599, para. 117 –
Decoder; Regional Court of Dusseldorf, decision of 13 July 2017, 4 a O 16/16, BeckRS 2017, 129534, para.
158 – Communication Device.
22
Advocate General Wathelet, Opinion of 20 November 2014, C-170/13, ECLI:EU:C:2014:2391, para. 58 –
Huawei/ZTE; German Federal Supreme Court, decision of 5 May Mai 2020, KZR 36/17, GRUR 2020, 961 para.
58 – FRAND Defense; German Federal Supreme Court, decision of 24 November 2020, KZR 35/17, GRUR
2021, 585 para. 49 – FRAND Defense II.
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degree of market power. 23 The patent owner's SEP is indispensable to the implementation
of the standard. In the words of the ECJ 24:
First "[…] the patent at issue is essential to a standard established by a

standardization body, rendering its use indispensable to all competitors which
envisage manufacturing products that comply with the standard to which it is linked.
That feature distinguishes SEPs from patents that are not essential to a standard and
which normally allow third parties to manufacture competing products without
recourse to the patent concerned […].
Secondly, […] the patent at issue obtained SEP status only in return for the
proprietor’s irrevocable undertaking, given to the standardization body in question,
that it is prepared to grant licenses on FRAND terms."
(105) In the area of cellular modules (NAD), inter alia, for the automotive industry, which are
installed as part of so-called TCUs to allow the mobile connectivity of the vehicle only the
defined 2G, 3G and 4G or, in the future, 5G communication standards are relevant.
Substitution of these standards is not possible. 25 There is no relevant demand for cellular
modules that do not meet the 2G, 3G and 4G or, in the future, 5G standards. 26 A
manufacturer of cellular modules that does not have access to the underlying patented
technologies is therefore not competitive. Accordingly, the Claimant is dependent on a
license for the corresponding SEP or the patent portfolios comprising them. The Claimant
cannot switch to alternative suppliers.
(106) The Claimant is therefore in fact absolutely dependent on the mobile communications
standards, including the SEP. In view of the ECJ's definition, First and Second Defendant are
therefore able to behave independently of their customers. They are dominant.
23
Cf. German Federal Supreme Court, decision of 5 May Mai 2020, KZR 36/17, GRUR 2020, 961 para. 58 –
FRAND Defense; German Federal Supreme Court, decision of 24 November 2020, KZR 35/17, GRUR 2021,
585 para. 49 – FRAND Defense II; Higher Regional Court of Dusseldorf, decision of 22 March 2019, I-2 U
31/16, BeckRS 2019, 6087, para. 117 – Improving Handovers; Regional Court of Dusseldorf, decision of 13
July 2017, 4 a O 16/16, BeckRS 2017, 129534, para. 159 – Communication Device.
24
ECJ, decision of 16 July 2015, C-170/13, ECLI:EU:C:2015:477, para. 49-51. – Huawei/ZTE.
25
Cf. with respect to GPRS standard (2G) German Federal Supreme Court, decision of 5 May Mai 2020, KZR
36/17, GRUR 2020, 961 para. 59 – FRAND Defense.
26
Cf. with respect to UMTS standard (3G) Regional Court of Dusseldorf, decision of 13 July 2017, 4 a O 16/16,
BeckRS 2017, 129534, para. 161 – Communication Device; cf. Regional Court of Dusseldorf, decision of 7
May 2020, 4 c O 44/18, GRUR-RS 2020, 12599, para. 119 – Decoder; see also European Commission, decision
of 29 April 2014, COMP/AT.39939, para. 45 et seqq. – Samsung.
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(ii) Abuse through Refusal to License
(107) The First Defendant abuses its dominance under Article 102 TFEU by categorically refusing
to license its SEP to the Claimant.
(108) According to the established case law of the ECJ, it is recognized that a dominant undertaking
bears a "special responsibility for residual competition". 27 On the basis of this special
responsibility, a dominant undertaking may not take any actions that are likely to further
impair competition, which is already limited. 28
(109) Moreover, as the Union Courts have consistently recognized, where the service in question
is considered essential and indispensable (essential facilities doctrine), there is a duty to
contract, 29 and the holder of the IPR in question may not "prevent the emergence of a new
product" 30 or "limit technological development." 31 Against this background and given that
the 2G, 3G and 4G standards in practice cannot be avoided, the First Defendant's refusal to
grant access to its SEP for the 2G, 3G and 4G standards to the Claimant constitutes an abuse
of a dominant position under the essential facilities doctrine. SEP that are part of a standard
are by their very nature essential facilities. They are essential patents and cannot be
duplicated or circumvented and are thus indispensable to viably operate on downstream
markets.
"The choice of the undertaking to whom the SEP holder offers the license of an SEP
portfolio determines who can participate in the competition on the product markets
downstream of the technology market. The licensing practice of an SEP holder is
therefore an essential factor for the level in a production chain at which a free market
on competitive terms can emerge." 32
(110) The First Defendant as owner of the SEP included in the ETSI standards is thus obliged to
license to any willing licensee. 33 This follows from antitrust law and is expressed in the
binding declaration pursuant to Article 6.1 of the ETSI Intellectual Property Rights Policy:
27
ECJ, decision of 9 November 1983, C-322/81, ECLI:EU:C:1983:313, para. 57 – Michelin.
28
ECJ, decision of 17 July 1998, T-111/96, ECLI:EU:T:1998:183, para. 139 – ITT Promedia.
29
ECJ, decision of 29 April 2004, C-418/01, ECLI:EU:C:2004:257 – IMS Health; ECJ, decision of 26 November
1998, C-7/97, ECLI:EU:C:1998:569 – Oscar Bronner.
30
General Court, decision of 17 September 2007, T-201/04, ECLI:EU:T:2007:289, para. 334 – Microsoft.
31
General Court, decision of 17 September 2007, T-201/04, ECLI:EU:T:2007:289, para. 647 – Microsoft.
32
Federal Cartel Office, opinion of 18 June 2021, P-66/20 p. 11 (not published).
33
Higher Regional Court of Dusseldorf, decision of March 22, 2019, I-2 U 31/16, BeckRS 2019, 6087,
para. 118 – Improving Handovers.
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"The Declarant hereby irrevocably declares that [...] it and its affiliates are prepared
to grant irrevocable licenses under its/their IPR(s) on terms and conditions which are
in accordance with Clause 6.1 of the ETSI IPR Policy [...]"
(auf deutsch:
"Der Anmelder erklärt hiermit unwiderruflich, dass [...] er und seine verbundenen
Unternehmen bereit sind, unwiderrufliche Lizenzen für seine/ihre IPR(s) zu
Bedingungen zu erteilen, die mit Klausel 6.1 der ETSI IPR Policy [...]
übereinstimmen.").
(111) The obligation entered into to grant a license to any interested third party on FRAND terms
is aimed at protecting the patented technology in favor of the owner and rewarding him,
while at the same time keeping access to the standard open to any market participant and
thus preventing anticompetitive distortions of the market and any downstream markets. The
obligation to license is thus a binding expression of a balancing of interests under antitrust
law and patent law.
"By its very nature, standard setting discourages technological competition because
any competing technical solution that is not included in the standard has no chance
of competing in the product market for lack of compatibility. The willingness of all
SEP holders privileged by standard-setting to enable competition by granting
permission to use the standard-essential technology on FRAND terms to anyone
interested in it is therefore a supporting pillar of technical standard-setting and its
legal permissibility." 34
(112) It is therefore not within the Defendant's rights to arbitrarily limit its licensing to specific
licensees in a certain industry or in the supply chain and thus limit technological
development. 35
"From the point of view of the SEP, the licensing commitment thus limits the patent
proprietor's inherently comprehensive monopoly and prohibition rights, in that he is
henceforth no longer entitled to an exclusive right effective against everyone and
enforceable unconditionally, but rather his powers are limited as a consequence of
the FRAND declaration by the fact that he must, upon request, allow anyone to use
his SEP and thus to participate in the standard on equal terms under FRAND
conditions. This concession is of considerable importance because it is one of the
characterising features of the monopoly rights associated with a patent that the
34
para. 118.
35
Kühnen, GRUR 2019, 665, 666; Regional Court of Dusseldorf, decision of July 11, 2018, 4 c O 81/17,
BeckRS 2018, 25105, para. 164; Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19,
GRUR-RS 2020, 32508, para. 27 - Nokia-SEP.
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owner of the property right can freely decide not to grant a license and thus
categorically exclude any third party from using his patent. The freedom to refrain
from licensing, which is an essential consequence of the statutory exclusive rights
under the patent, is sacrificed by the SEP holder for the sake of including the technical
teaching of his patent in the technical standard." 36
(113) The German Federal Supreme Court held in this regard that
"the infringer who is willing to license is entitled to have the patent holder
contractually permit him to use the protected technology on FRAND terms." 37
(114) In the absence of such an obligation, the SEP holder would be free to decide on the
competitiveness of individual market participants. This concern nothing less than access to
the market and thus participation in the competitive process.
(115) This is also in line with the case law of the ECJ in the Huawei/ZTE case. 38 The ECJ links the
obligation to submit a FRAND offer solely to a corresponding request by the potential
licensee. The ECJ does not mention any further requirements. 39 This is only consequential
given that the procedure established by the ECJ in Huawei/ZTE is in essence a refinement of
the general antitrust obligation under the essential facilities doctrine as established in, inter
alia, Oscar Bronner 40, IMS Health 41 and Microsoft 42, which amounts to a duty to contract. 43
Huawei/ZTE must be read against this background and thus makes it clear that there is no
discretion on the part of the SEP holder to choose their licensees.
(116) Thus, the refusal of the First Defendant to enter into licensing talks with the Claimant despite
explicit and repeated license requests or to submit a FRAND license offer to the Claimant at
all alone constitutes a deliberate and willful abuse of its dominant position. 44
36
para. 118 – Improving Handovers; Regional Court of Dusseldorf, decision of November 26, 2020, 4 c O 17/19,
GRUR-RS 2020, 32508, para. 19 – Nokia-SEP.
37
German Federal Supreme Court, decision of 24 November 2020, KZR 35/17, GRUR 2021, 585 para. 54 –
FRAND Defense II.
38
ECJ, Judgment of 16 July 2015, C-170/13, ECLI:EU:C:2015:477, para. 47 ff. – Huawei/ZTE.
39
Kühnen, GRUR 2019, 665, 666; Verhauwen/Gerstein, GRUR-PRax 2020, 362, 363 et seq.
40
ECJ, decision of 26 November 1998, C-7/97, ECLI:EU:C:1998:569 – Oscar Bronner.
41
ECJ, decision of 29 April 2004, C-418/01, ECLI:EU:C:2004:257 – IMS Health.
42
General Court, decision of 17 September 2007, T-201/04, ECLI:EU:T:2007:289 – Microsoft.
43
Cf. the references in European Commission, decision of 29 April 2014, COMP/AT.39939, para. 56 –
Samsung; European Commission, decision of 29 April 2014, COMP/AT.39985, para. 278 – Motorola.
44
Cf. German Federal Supreme Court, decision of 24 November 2020, KZR 35/17, GRUR 2021, 585 para. 54
– FRAND Defense II.
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"The right of each supplier to claim an unrestricted FRAND license for itself exists in
principle and unconditionally after all, so that the request for a FRAND license is an
act of permissible exercise of rights, so that the case of a refusal by the SEP holder
amounts to an abuse of a dominant position, which can be invoked both by the
alleged infringer at the end of the supply chain and the supplying license seeker." 45
(117) The refusal restricts the independent business activities of the Claimant (and other
component manufacturers) and restricts competition in the affected markets. The motives
or background of the refusal are irrelevant. 46
(118) The abusiveness cannot be justified by reference to any OEM licenses or licenses granted to
other participants of the respective supply chain. Insofar as the corresponding licenses
granted to the OEMs or other customers of the Claimant contain so-called "have made"
provisions, these are not an adequate substitute for an own FRAND license of the Claimant. 47
They do not allow for an independent and free business activity. 48
"In this regard, the grant of a license shall not merely give any access to the
standardized market, but shall grant the license seeker a share in the standardized
technology to such an extent as to enable him to compete freely in all product
markets now and hereafter contemplated by him.
[...] With their own unrestricted license to the Claimant's SEP, the suppliers seeking
the license are in a position to independently and legally securely further develop
TCUs and the necessary components, to manufacture them and to sell them to any
automobile manufacturer. Only with this license can the suppliers further develop the
patented technology for uses outside the automotive industry and open up new
markets. If, on the other hand, they are only entitled to a limited right derived from
the automakers, this significantly hinders the research, development and sale of TCUs
and their components. This is because with derived rights, suppliers can only
manufacture TCUs and their components within the scope of the instructions issued
to them by third parties and sell them to the contractually intended buyers. They
would be prevented from having their own market presence independent of the
respective customer, which would result in an unjustified restriction of their economic
activity." 49
45
Regional Court of Dusseldorf, decision of November 26, 2020, 4 c O 17/19, GRUR-RS 2020, 32508, para. 29
– Nokia-SEP.
46
ECJ, decision of 16 July 2015, C-170/13, ECLI:EU:C:2015:477, para. 47 ff. – Huawei/ZTE.
47
Kühnen, GRUR 2019, 665, 666; Verhauwen/Gerstein, GRUR-PRax 2020, 362, 363 et seq.
48
Federal Cartel Office, opinion of 18 June 2021, P-66/20 p. 11 et seq. (not published).
49
Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19, GRUR-RS 2020, 32508,
para. 19 f. – Nokia-SEP; Kühnen, GRUR 2019, 665, 666; Verhauwen/Gerstein, GRUR-PRax 2020, 362, 364;
Federal Cartel Office, opinion of 18 June 2021, P-66/20 p. 11 et seq., 15 et seqq. (not published); with an
opposing view: Regional Court of Munich, decision of 10 September 2020, 7 O 8818/19, NZKart 2020, 626,
627 – Sharp-SEP; Regional Court of Mannheim, decision of 18 August 2020, 2 O 34/19, NZKart 2020, 622,
625 – Nokia-SEP.
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(119) Furthermore, the overall circumstances in the automotive industry illustrate the considerable
abusiveness of the actions of the First Defendant. The refusal to grant a FRAND license to
the Claimant is part of an abusive exploitation strategy devised by the First and Second
Defendant together with further key members of the Second Defendant. The strategy aims
at inducing end customers (OEMs), with reference to the alleged unwillingness of their
(indirect) suppliers to take a license and the threat of injunctions, to acquire pool licenses
from the Second Defendant for the use of the 2G, 3G, 4G and prospectively 5G standards.
(120) The background of this strategy is the possibility to increase the licensing profits at the
expense of Tier 1- and Tier 2-suppliers, including the Claimant, due to information
asymmetries that typically exist in the supply chains
(121) The First Defendant is aware that OEMs are not able to determine whether the SEP included
in the licensed portfolio are valid, material or even used in the cellular modules or other
products they purchase. Even more so, the OEMs cannot know for which patents licenses
already exist in the supply chain. 50
"Since up to 30,000 components are installed in an automobile, it would mean quite

a considerable effort for an automobile manufacturer to check whether the technical
solutions installed in his vehicle and supplied by third parties make use of third-party
property rights. The problem becomes all the more acute the more complex the
supplied component is and the further the respective technology is removed from the
actual field of activity of the automobile manufacturer, as is the case with the TCUs
and NADs at issue in the present case. " 51
(122) These circumstances illustrate the reason why it is industry practice for licenses to be
requested by the respective patent-implementing suppliers. They alone are in a position to
assess which patents their products implement and can therefore negotiate on an equal
footing with the patent holders. 52 Against this background, it is industry practice for Tier 1-
suppliers and OEMs to purchase products "free of third-party property rights" and for Tier 2-
50
Pre-license in this context means a license granted by the patent holder to a manufacturer at an upstream
level of the supply chain, which leads to an exhaustion of patent rights.
51
Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19, GRUR-RS 2020, 32508, para. 24
– Nokia-SEP.
52
– Nokia-SEP.
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suppliers, such as the Claimant, to be contractually obligated to indemnify their customers

if third parties assert intellectual property rights. 53
"The supplier that chooses a particular technical solution within the supply chain is in
the best position to determine whether that solution infringes third-party IP rights." 54
(123) Since OEMs can rely on the indemnification clauses in the contracts with their suppliers and
indirectly vis-à-vis module manufacturers such as the Claimant to obtain a full or partial
refund of the royalties paid, the average OEM does not only have no possibility but also no
incentive to vigorously defend themselves against the royalty demanded by the First
Defendant and other pool members of the Second Defendant (license conditions) or to go to
great lengths to verify the use, infringement and validity of the patents (license
requirement). The incentive of OEMs to obtain licenses at "any price" is reinforced by the
enormous damage potential that OEMs face in the event that they are ordered to stop the
sale of their vehicles.
(124) First and Second Defendant purposefully exploit this moral hazard problem in the supply
chain to inappropriately increase their royalties at the expense of Tier 1 and Tier 2-suppliers.
(125) This is illustrated, among other things, by the dispute regarding the license or licensing right
that exists to the benefit of the Claimant as a result of the (cross) license agreement between
Siemens and Nokia. To the extent that the (cross) license agreement between Siemens and
Nokia allows the Claimant to freely use or lay claim to use at least part of the First
Defendant's SEP portfolio patents, the royalties that the First Defendant demands from
OEMs, either directly or through the Second Defendant, cannot possibly be FRAND. FRAND
terms must sufficiently reflect any exhaustion within the supply chain.
"The consequence of the basically recognized concept of exhaustion is that license

offers must in principle take into account a possible exhaustion in order to be FRAND.
This is because such an offer is only "fair and reasonable" if the patent holder does
not submit any conditions to the potential licensee which in the end amount to
exploitation of the dominant market position (cf. OLG Düsseldorf, decision of
November 17, 2016, Case No. 15 U 66/15 - cited in juris). The inclusion of the
exhaustion and thus at the same time value creation issue is particularly necessary
53
– Nokia-SEP.
54
– Nokia-SEP.
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in cases where - as in the present case - multi-level distribution and supply chains
are common." 55
(126) This is impossible with regard to the licensing of OEMs by the First and Second Defendant.
In view of the considerable number of components installed and the large number of multi-
level supply relationships, it is not possible for an OEM – even assuming appropriate
incentives exist – to determine the extent to which the licensed patent rights may already
be exhausted as a result of pre-existing supplier licenses.
"This is because the facts leading to exhaustion are internal data relating to the
licensor's company. Only it has knowledge of which products and with which
companies license agreements have been concluded. For the licensee it is factually
impossible to obtain such well-founded knowledge [...]. At the same time, [...] any
actual knowledge [of pre-existing licenses] is likely to be predominantly dependent
on chance, if not entirely impossible, since it is likely to be common practice in the
area of standard essential licenses to agree to a confidentiality clause in such license
agreements, whereby the contracting parties are prohibited from communicating the
conclusion of a license agreement." 56
(127) Against this background, the lack of a genuine interest of the First Defendant with regard to
the Claimant's efforts to ascertain the content of the (cross) license agreement between
Siemens and Nokia is obvious. As a consequence, overcompensation is not only possible,
but very likely and also intended. The First Defendant is deliberately exploiting the potential
for extortion within the automotive supply chain in order to obtain unreasonably high
royalties from OEMs.
(128) This harms the Claimant who, as a result of reimbursement claims by their customers,
effectively has to bear their (excessive) royalties, that reduce its margins to a mere
minimum, but in return does not receive its own license and is thus significantly restricted
in its independent business activities. The Claimant, figuratively speaking, is sidelined. As a
result, the Claimant's ability to innovate and, even more importantly, the survival of its
commercial activities with regard to cellular modules (NAD) is at risk.
55
Regional Court of Dusseldorf, decision of 11 July 2018, 4 c O 81/17, BeckRS 2018, 25105, para. 168 –
Multicarrier Modulation; cf. Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19, GRUR-
RS 2020, 32508, para. 22 – Nokia-SEP.
56
Regional Court of Dusseldorf, decision of 11 July 2018, 4 c O 81/17, BeckRS 2018, 25105, para. 170 –
Multicarrier Modulation.
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(129) These considerations apply mutatis mutandis outside of the automotive industry, where the
Claimant is also active and is equally affected negatively by the refusal to license of the First
Defendant.
bb) Affectedness
(130) The Claimant is directly affected by these violations of competition law within the meaning
of Section 33(3) ARC.
(131) Anyone who, as a competitor or other market participant, is adversely affected by the
conduct in violation of antitrust law is entitled to claim redress. It suffices that the adverse
effects are mediated through market interactions, i.e., the economic disadvantage caused
or likely to be caused must be the result of market and competitive conditions distorted by
the anticompetitive behavior, albeit on upstream or downstream markets. 57
(132) As a company that potentially implements SEP and is willing to obtain a license on FRAND
terms but is denied access to such a license without justification, the Claimant is directly
affected by the antitrust violation committed by the First Defendant. It is denied an
independent access to the market. This effect is reinforced by the fact that the Claimant is
confronted with reimbursement claims from its direct and indirect customers, which try to
recoup the (excessive) royalties they pay, if it cannot obtain a license itself. These
reimbursement claims threaten the commercial viability of the Claimant's module business
altogether.
cc) Damages
(133) To the extent that the Claimant is denied access to the required licenses, its customers
demand contractual compensation from the Claimant for their own licensing costs. The
existence of the afore-described indemnification clauses is customary, in particular, in the
automotive industry 58 and known to the First and Second First and Second Defendant. As a
result of the information asymmetries and the moral hazard problem outlined above, the
reimbursement claims exceed those costs that the Claimant would have to incur for its own
licensing.
57
Franck in: Immenga/Mestmäcker, Wettbewerbsrecht, Vol. 2, 6th edition 2020, Section 33 para. 20.
58
– Nokia-SEP.
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(134) Corresponding obligations of the Claimant to reimburse its customers also arise outside of
the automotive industry.
(135) In addition, the Claimant's efforts to acquire new customers are significantly impaired. In
particular, the allegations made by the First Defendant that the Claimant does not have a
valid license and is not a willing licensee are likely to significantly harm the reputation of the
Claimant in the market, deter potential customers and weaken its bargaining position
compared to its competitors, e.g. Chinese competitors, which are protected by the Chinese
courts.
(136) For further details, please refer to recitals (51) et seqq.
b) Sections 33a(1), 33(1) ARC in conjunction with Article 101 TFEU
(137) The First Defendant also violates Article 101 TFEU by (i) dishonoring its ETSI commitment
which governs its contractual adhesion to ETSI and (ii) coordinating its licensing behavior
involving the Second Defendant as well as other SEP holders to the detriment of the Claimant
and other members of the automotive supply chain with the aim of licensing its SEP solely
to automotive OEMs.
(138) The First and Second Defendant as well as further key SEP holders jointly refuse to license
the Claimant and other component manufacturers in order to force OEMs to obtain licenses
from the Second Defendant and profit from increased royalties in this context. To this end,
the First Defendant misrepresents vis-à-vis the Claimant's customers and the OEMs that the
Claimant does not have a valid license and is also not a willing licensee, so that the OEMs
have to take a license from the Second Defendant in order not to commit a patent
infringement themselves - with considerable commercial risk (court ordered sales stops).
aa) Willful Violation of Article 101 TFEU
(i) Infringement by Disregarding the ETSI Declaration
(139) By contravening its licensing commitment to ETSI (please refer to recitals (110) et seqq.),
the First Defendant at the same time violates Article 101 TFEU.
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(140) It is established that standardization agreements such as those organized by ETSI fall within
the ambit of Article 101 TFEU. 59 Every participant of a standardization organization – such
as the First Defendant – enters into an agreement with the standardization organization.
(141) Against this background, for a standardization agreement to comply with Article 101 TFEU it
must fulfill certain conditions to outweigh the restrictions of competition inherent in every
attempt to standardize. This includes the prohibition of any discrimination and the obligation
to grant a license to any willing third parties on FRAND terms. 60
"[i]n order to ensure effective access to the standard, the IPR policy would need to
require participants wishing to have their IPR included in the standard to provide an
irrevocable commitment in writing to offer to license their essential IPR to all third
parties on fair, reasonable and non-discriminatory terms ('FRAND commitment')." 61
(142) This has also been recently stressed by the Higher Regional Court of Dusseldorf:
"By its very nature, standard setting discourages technological competition because
any competing technical solution that is not included in the standard has no chance
of competing in the product market for lack of compatibility. The willingness of all
SEP holders privileged by standard-setting to enable competition by granting
permission to use the standard-essential technology on FRAND terms to anyone
interested in it is therefore a supporting pillar of technical standard-setting and its
legal permissibility." 62
(143) Therefore, the declaration made by the First Defendant in the context of the ETSI
standardization agreement is itself an expression of the obligations of the participants in a
standardization agreement arising from Article 101 TFEU. 63 If a licensor and party to a
standardization agreement such as the First Defendant does not fully comply with these
obligations under Article 101 TFEU, the standardization agreement it entered into with the
59
European Commission, Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the
European Union to horizontal co-operation agreements Text with EEA relevance, para. 263 ff.; Regional Court
of Mannheim, decision of 21 November 2014, 7 O 23/14, GRUR-RS 2015, 10955, para. 22 – DVD Standard.
60
European Union to horizontal co-operation agreements Text with EEA relevance, para. 280 ff; Regional Court
of Mannheim, decision of 21 November 2014, 7 O 23/14, GRUR-RS 2015, 10955, para. 22 – DVD Standard.
61
European Union to horizontal co-operation agreements Text with EEA relevance, para. 285.
62
Higher Regional Court of Dusseldorf, decision of 22 March 2019, I-2 U 31/16, BeckRS 2019, 6087, para.
118 – Improving Handovers.
63
Cf. European Commission, Guidelines on the applicability of Article 101 of the Treaty on the Functioning of
the European Union to horizontal co-operation agreements Text with EEA relevance, para. 283 ff.; Higher
Regional Court of Dusseldorf, decision of 22 March 2019, I-2 U 31/16, BeckRS 2019, 6087, para. 118 –
Improving Handovers.
1 July 2021
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standardization organization and its respective conduct, i.e. to profit from the
standardization it participates in without honoring its commitment, violates Article 101 TFEU.
It follows from the case law of the ECJ that the infringer has to make good all damages that
are caused by not complying with the obligations under Article 101 TFEU. 64 This view is
expressly shared by the German Federal Court of Justice. 65
(144) This jurisprudence applies to the situation in the case at hand: The First Defendant refuses
to enter into any negotiations with the Claimant on the licensing of its SEP with regard to
2G, 3G and 4G mobile standards despite the Claimant's clear communication to be a willing
licensee. Therefore, the Claimant, who has a need for its module business to have access to
the technology, is significantly restricted in its business activities. It cannot compete freely
and independently on the market. In addition, it is faced with reimbursement claims from its
customers that reduce the Claimant's margins to a mere minimum and threaten its
commercial position and viability (please refer to recitals (107) et seqq.).
(145) Against this background, the deliberate refusal to provide a FRAND offer to the Claimant is
a deliberate and willful violation of its obligations under Article 101 TFEU.
(ii) Violation through Licensing Coordination re the Patent Pool of the Second
Defendant
(146) The First Defendant additionally infringes Article 101 TFEU by contributing its SEP to the
patent pool administered by the Second Defendant and in this respect agreed to and followed
the coordinated business policy established by the Second Defendant and some of its key
members of granting licenses exclusively to OEMs.
(147) The European Commission defines patent pools as follows:
"Technology pools are defined as arrangements whereby two or more parties

assemble a package of technology which is licensed not only to contributors to the
pool but also to third parties. In terms of their structure technology pools can take
the form of simple arrangements between a limited number of parties or of elaborate
organisational arrangements whereby the organisation of the licensing of the pooled
64
ECJ, Judgment of 12 December 2019, C-435/18, WuW 2020, 83 = NZKart 2020, 30 para. 23 - Otis and
others v Land Oberösterreich.
65
Federal Court of Justice, decision of 28 January 2020, KZR 24/17, para. 24 – Schienenkartell II.
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technologies is entrusted to a separate entity. In both cases the pool may allow
licensees to operate on the market on the basis of a single license." 66
(148) The establishment of a patent pool and the accession of the pool members to such a platform
is only admissible under Article 101 TFEU under certain requirements. In particular, patent
pools shall not pursue a purpose that restricts competition and shall not have restrictive
effects on competition. The patent pool operated by the Second Defendant and supported
by the First Defendant does not meet these requirements. As will be shown below, the
Second Defendant applies a licensing policy which is not compatible with Article 101 TFEU.
(149) It is recognized that patent or technology pools, which facilitate the dissemination and use
of technologies, can promote the adoption of technologies and innovations and benefit
customers. However, the creation of a patent or technology pool "necessarily implies joint
selling of the pooled technologies." 67 This represents a form of collective licensing that must
meet strict requirements to avoid that competition is harmed. To prevent negative effects
on competition, the European Commission's Guidelines therefore set out clear requirements
for the establishment, operation and licensing that a technology pool must meet in order not
to violate Article 101 TFEU. 68
(150) These requirements, which follow directly from Article 101(1) TFEU, include the obligation
to provide third parties with reasonable access to the pooled technology. In this sense, it
must be ensured that
"the pooled technologies are licensed out to all potential licensees on FRAND
terms." 69
(151) The actual anticompetitive effect of the deviating licensing policy of the Second Defendant,
which is supported by the First Defendant, depends to a large extent on the market position
of the pool. The higher the market coverage, the more far-reaching the anticompetitive
effects of a license refusal.
66
European Commission, Guidelines on the application of Article 101 of the Treaty on the Functioning of the
European Union to technology transfer agreements, para. 244.
67
68
European Union to technology transfer agreements, paras. 57, 244 et seq.
69
1 July 2021
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"The stronger the market position of the pool, the more likely it is that agreeing not
to license to all potential licensees or to license on discriminatory terms will infringe
Article 101." 70
(152) According to the Second Defendant's own statements, the portfolio it manages comprises
more than 60% of all SEP with respect to 2G, 3G and 4G standards (between 62% and
68%). It is therefore undeniable that the Second Defendant holds a super-dominant market
position since each of the SEP it manages already confers dominance to its owner to the
extent it is valid and essential. 71 Against this background, the anticompetitive effects of the
refusal to license are significant. The First Defendant and other key SEP holders coordinate
their licensing policy regarding the award of licenses via the Second Defendant. In this way,
they deprive the component manufacturers concerned, such as the Claimant, of the
opportunity to engage independently in business activities on the market 72 and, at the same
time, become an indispensable contractual partner for OEMs, vis-à-vis which they exploit
their bargaining power collusively (see recitals (107) et seqq.).
(153) Therefore, to the extent that the Second Defendant does not license all willing licensees
under its licensing policy (only OEMs excluding component manufacturers such as the
Claimant), it violates Article 101 TFEU. Since the Second Defendant's policy violates
Article 101 TFEU as interpreted in the Technology Transfer Guidelines, the members of the
Second Defendant's patent pool, consequently also the First Defendant, in turn violate
Article 101 TFEU by approving and supporting the Second Defendant's anticompetitive policy
and conduct and by aligning their own activities therewith.
bb) Affectedness
(154) As already explained under recitals (130) et seqq., the Claimant is directly affected within
the meaning of Section 33(3) ARC.
70
71
Cf. Advocate General Fennelly, Opinion dated 29 October 1998, C-395/96 P, ECLI:EU:C:1998:518,
para. 137 – Compagnie Maritime Belge Transports and Others /Commission.
72
Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19, GRUR-RS 2020, 32508,
para. 19 f. - Nokia-SEP; Kühnen, GRUR 2019, 665, 666; Verhauwen/Gerstein, GRUR-PRax 2020, 362, 364;
Federal Cartel Office, opinion of 18 June 2021, P-66/20 p. 11 et seq., 15 et seqq. (not published).
1 July 2021
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cc) Damages
(155) For the damages incurred and still to be incurred, reference is made to the explanations
under recitals (51) et seqq. and recitals (133) et seqq.
4. Claims against the Second Defendant
a) Sections 33a(1), 33(1) ARC in conjunction with Article 101 TFEU
(156) The Second Defendant violates Article 101 TFEU by (aa) coordinating its licensing policy and
refusing to license any interested third party, and (bb) coordinating the commercial
(including litigation) strategies of some of its key members, including the First Defendant.
aa) Violation through Refusal to Grant License
(157) The refusal of the Second Defendant to grant a license on FRAND terms to all willing licensees
(including the Claimant) violates Article 101 TFEU.
(158) As described under recitals (146) et seqq., the Second Defendant has colluded with its
members, including the First Defendant, to the effect that the Second Defendant licenses
the SEPs it administers exclusively to OEMs.
(159) It denies licenses to other members of the automotive supply chain who are willing to obtain
a license - such as the Claimant - and thus violates Articles 101 TFEU 73. 74
bb) Violation through Coordination of the Commercial Strategies of the Pool Members
(160) Moreover, the Second Defendant's licensing policy is part of a far-reaching coordination of
the commercial (including litigation) strategies of some of its members that violates
Article 101 TFEU in the form a cartel.
73
Regarding Art. 102 TFEU please refer to b).
74
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(161) An anticompetitive agreement exists when undertakings express a common intention to

behave in a certain manner on the internal market. 75
(162) The concept of an agreement does not presuppose a legal obligation or even a moral or
actual obligation. 76 According to established case law, mere "gentlemen's agreements" 77 and
the continuing effects of agreements that have formally expired 78 also fall under the concept
of an agreement. The economic results are decisive, while the legal form is irrelevant.
Agreements can thus also be concluded verbally or tacitly. 79
(163) As will be shown below, the Second Defendant acts as a vehicle to coordinate the business
strategy of some of its key members to the detriment of competition, competitors and
eventually consumers.
(i) Coordination of the Litigation Strategies of the Pool Members
(164) The Second Defendant closely coordinates the litigation strategies of its members (including
the First Defendant) to circumvent the Claimant as licensee and to pressure OEMs to take
licenses from the Second Defendant.
(165) Pursuant to Article 4.8 of the Avanci Master License Management Agreement:
"If LA [License Administrator = Second Defendant] identifies a potential licensee that,

in LA's reasonable judgment, is unwilling to enter into a Licensing Program PLA for a
particular licensing Program (an "Unwilling Licensee"), LA shall promptly notify all
Licensors that have elected to participate in such Licensing Program of the
circumstances surrounding such assessment of unwillingness. LA and licensors agree
in good faith to consider amendments to this Agreement to include additional
provisions, if necessary, to address the enforcement of Essential Patents against
Unwilling Licensees. Any such amendment must be mutually agreed upon in writing
by all."
(in German:
75
ECJ, Judgment of 29 October 1980, C-209-215 und 218/78, ECLI:EU:C:1980:248, para. 86 - Van
Landewyck v. Commission; cf. Weiß in: Calliess/Ruffert, EUV/AEUV, 5th edition 2016, Article 101 TFEU para.
47 et seq.
76
ECJ, Decision of May 14, 1998, T-347/94, ECLI:EU:T:1998:101, para. 65 – Mayr-Melnhof
Kartongesellschaft/Commission.
77
ECJ, Decision of 6 April 1995, T-141/89, ECLI:EU:T:1995:62, para. 96 – Tréfileurope/Commission.
78
ECJ, Judgment of 3 July 1985, C-243/83, ECR 1985, 2015, para. 17 – Binon/AMP; ECJ, Decision of 10 March
1992, T-9/89, ECR 1992, II-499, para 292 – Hüls/Commission.
79
Weiß in: Calliess/Ruffert, EUV/AEUV, 5th edition 2016, Article 101 TFEU para. 47.
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"Wenn LA [Lizenzverwalter = Beklagte zu 2)] einen potenziellen Lizenznehmer

identifiziert, der nach dem vernünftigen Ermessen von LA nicht bereit ist, an einem
Lizenzprogramm PLA für ein bestimmtes Lizenzprogramm teilzunehmen (ein
"unwilliger Lizenznehmer"), wird LA unverzüglich alle Lizenzgeber, die sich für die
Teilnahme an einem solchen Lizenzprogramm entschieden haben, über die Umstände
einer solchen Einschätzung der Unwilligkeit informieren. LA und die Lizenzgeber
vereinbaren nach Treu und Glauben, Änderungen dieser Vereinbarung in Betracht zu
ziehen, um ggf. zusätzliche Bestimmungen zur Durchsetzung Essentieller Patente
gegenüber Unwilligen Lizenznehmern aufzunehmen. Eine solche Änderung muss von
allen Beteiligten schriftlich vereinbart werden.").
(166) Article 5.1.2. states:
"if a Licensor engages in Litigation against an Unwilling Licensee as notified under

Article 4.8 of this Agreement, then such Licensor may request that LA reimburse its
Litigation Cost associated with such Litigation. Up-on request, LA shall refund such
Litigation Cost from the license Fees paid by such Unwilling Licensee (after deduction
of the Commission, but before distribution of Total Net Collections to any other
licensor) provided that (a) all of the products accused of Infringement in such
Litigation are relevant to an applicable Licensing Program in which such Licensor
participates ("Applicable Products"), (b) all of the Patents asserted in such Litigation
are Essential Patents owned by the Licensor, (c) such Licensor does not enter into a
bilateral settlement or license agreement with the Unwilling Licensee including a
license to such Applicable Products, (d) the Unwilling Licensee enters into a Licensing
Program PLA with LA that terminates the Litigation, [...]"
(in German:
"wenn ein Lizenzgeber einen Rechtsstreit gegen einen unwilligen Lizenznehmer führt,
wie in § 4.8 dieses Vertrages definiert, dann kann dieser Lizenzgeber von LA die
Erstattung seiner mit diesem Rechtsstreit verbundenen Prozesskosten verlangen. Auf
Antrag erstattet LA diese Prozesskosten aus den von dem unwilligen Lizenznehmer
gezahlten Lizenzgebühren (nach Abzug der Kommission, aber vor Verteilung der
Gesamtnettoeinnahmen an andere Lizenzgeber), vorausgesetzt, dass (a) alle
Produkte, denen in diesem Rechtsstreit Rechtsverletzungen vorgeworfen werden, für
ein anwendbares Lizenzprogramm relevant sind, an dem der Lizenzgeber teilnimmt
("Anwendbare Produkte"), (b) alle in einem solchen Rechtsstreit geltend gemachten
Patente Essentielle Patente sind, die vom Lizenzgeber gehalten werden, (c) der
Lizenzgeber keinen bilateralen Vergleich oder Lizenzvertrag mit dem unwilligen
Lizenznehmer abschließt, der eine Lizenz für solche Anwendbaren Produkte
beinhaltet, (d) der unwillige Lizenznehmer ein Lizenzprogramm PLA mit LA
abschließt, das den Rechtsstreit beendet, [...]").
(167) The mere fact that different undertakings try to ensure a certain degree of coordination of
their litigation strategies in order to protect their respective rights is not in itself contrary to
antitrust law. In the present case, however, the coordination organized by the Second
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Defendant including the financial incentives pursuant to Articles 4.8 and 5.1.2 of the Avanci
Master License Management Agreement (reimbursement for costs of patent infringement
claims) is of a different nature, as it is directly related to the unlawful commercial strategy
pursued by the Second Defendant and at least some of its key members with regard to the
licensing practices vis-à-vis the automotive industry. This strategy aims to prevent willing
licensees such as the Claimant from obtaining licenses for SEPs on FRAND terms. Instead,
the Second Defendant generates royalties from OEMs which, due to the information
asymmetries and moral hazard problem in the supply chain, do not accurately reflect the
actual licensing requirements and, as a result, harm component manufacturers like the
Claimant. This is not only a violation of Article 102 TFEU, but also of Article 101 TFEU.
(168) The provisions of the Avanci Master License Management Agreement referenced above are
part of this anticompetitive strategy and are designed to reinforce it by significantly
increasing the commercial risk OEMs face if they do not agree to the licensing policy of the
Second Defendant and its members as a result of the coordination and the financial
incentives. The risk of a court-ordered sales stop increases significantly because of the
coordinated litigation strategy. This increases the pressure on the OEMs to conclude license
agreements with the Second Defendant, irrespective of whether and to what extent
corresponding licenses are actually or legally necessary (including in view of pre-existing
licenses in the supply chain (exhaustion)). The provisions of the Master License Management
Agreement, which coordinate the actions of the members of the Second Defendant and
financially encourage them to pursue litigation strategies vis-à-vis the OEMs, are aimed at
forcing OEMs to conclude license agreements with the Second Defendant.
(169) The table below shows how efficiently the Second Defendant coordinates the litigation
strategies of its members:
Proceedings brought by Avanci Members against OEMs in Germany

OEM SEP Holder Date Court
1. Daimler AG NOKIA 19 May 2020 Regional Court of
Mannheim
2 O 34/19
2. Daimler AG NOKIA 21 January 2020 Regional Court of
Mannheim
2 O 35/19
3. Daimler AG NOKIA 17 March 2020 Regional Court of
Mannheim
2 O 36/19
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4. Daimler AG NOKIA 10 December Regional Court of

2019 Mannheim
2 O 37/19
Dusseldorf
4a O 26/19
Dusseldorf
4c O 17/19
Dusseldorf
4a O 27/19
8. Daimler AG NOKIA 30 October 2019 Regional Court of
Munich
21 O 3891/19
9. Daimler AG NOKIA 30 October 2019 Regional Court of
Munich
21 O 3889/19
10. Daimler AG NOKIA 6 February 2020 Regional Court of
Munich
7 O 3890/19
11. Daimler AG SHARP 12 April 2019 Regional Court of
Mannheim
2 O 87/19
12. Daimler AG SHARP 12 April 2019 Regional Court of
Mannheim
2 O 46/19
13. Daimler AG SHARP 25 June 2019 Regional Court of
Munich
21 O 8609/19
14. Daimler AG SHARP 28 June 2019 Regional Court of
Munich
7 O 8818/19
15. Daimler AG SHARP 17 September Regional Court of
2019 Munich
21 O 9518/19
16. Daimler AG CONVERSANT 14 August 2019 Regional Court of
Munich
21 O 111384/19
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17. Daimler AG CONVERSANT 25 May 2020 Regional Court of

Munich
7 O 17751/19
18. Daimler AG CONVERSANT 26 May 2020 Regional Court of
Munich
7 O 17752/19
19. Daimler AG CONVERSANT 14 August 2019 Regional Court of
Munich
21 O 17753/19
(170) The impact of such a coordinated litigation strategy is illustrated by the multiple actions for
injunctive relief brought by Nokia, Sharp, and Conversant that Daimler had faced in various
courts. The Second Defendant and its members very well know that by multiplying such
actions, which generate huge costs for the defendants, they put irresistible pressure on the
OEMs since they are faced with the risk of having their products removed from the market
even though the vehicles are not the products that directly implement the communications
technologies which are allegedly protected by the SEPs.
(171) The approach of the First Defendant with regard to the three Dusseldorf proceedings it
initiated against Daimler in 2019 further shows that it intends to avoid – at all costs – having
questions about the compatibility of its conduct with EU competition law examined by the
ECJ. In this context, it is noteworthy that in a letter dated 8 October 2020, the Claimant
drew the attention of the First Defendant to the violations of EU antitrust law and highlighted
that there were elements indicating the existence of a cartel (collusion) between several
members of the Second Defendant. In addition, the Claimant decided to intervene in the
proceedings in support of Daimler. In its intervention, the Claimant also pointed out to the
Regional Court of Dusseldorf the existence of numerous violations of Article 101 TFEU and
the existence of a cartel, which was consistent with the letter it had sent to the First
Defendant. Strikingly, both actions were immediately withdrawn by the First Defendant.
(172) The behavior exhibited by the First Defendant in the third and most advanced Dusseldorf
proceedings is part of the same strategy. Shortly after the Dusseldorf Regional Court decided
to refer questions concerning Article 102 TFEU to the ECJ, the First Defendant filed an appeal
against the Regional Court of Dusseldorf's referral to the ECJ in an attempt to prevent the
referral. It ultimately withdrew its appeal and concluded a settlement with Daimler. The
recent settlement ended the suspended proceedings before the Regional Court of Dusseldorf
and rendered the court's referral to the ECJ obsolete.
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(173) Taken together, the above circumstances show not only that the coordination of the litigation
strategies successfully contributes to the de facto enforcement of a licensing model that is
illegal from an antitrust perspective, but also that the defendants are keen to avoid a decision
by the highest court on the question of the admissibility of their coordinated actions under
the antitrust laws.
(174) All this is confirmed by the fact that two other key members of the Second Defendant,
Ericsson and Interdigital, which have for years declined to pursue FRAND negotiations, have
recently offered to re-engage in licensing discussions with the Claimant. This occurred after
the Claimant also informed them that their conduct confirmed the existence of a cartel
among of the Second Defendant and certain of its members. At this point, however, neither
Interdigital nor Ericsson have made a FRAND offer or have given any clear indications as to
the terms upon which they would currently be ready to license the Claimant.
(ii) Coordination of other Areas of the Pool Members' Business Strategies
(175) The Second Defendant does not limit its coordinating role to the litigation strategies of its
members. It also appears to coordinate other aspects of its commercial strategies, again
with the aim of imposing its anticompetitive licensing model.
(176) Article 4.3 of the Master License Management Agreement of the Second Defendant officially
provides that
"each licensor retains the right to independently enter into licenses for their Essential
Patents or any other Patents with prospective licensees for any products, including
products that are the subject of licensing Programs in which such Licensor
participates".
(auf deutsch:
"jeder Lizenzgeber sich das Recht vorbehält, mit potenziellen Lizenznehmern

Lizenzverträge für seine essentiellen Patente oder andere Patente für beliebige
Produkte abzuschließen, einschließlich solcher Produkte, die Gegenstand von
Lizenzprogrammen sind, an denen der betreffende Lizenzgeber beteiligt ist").
(177) The Claimant's experience with the First Defendant, but also with other members of the
Second Defendant like Ericsson and Interdigital, indicates that the Second Defendant
coordinates its commercial strategy with that of its most important members. These, too,
generally refuse to license the Claimant.
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(178) Whether the licensing policy of Ericsson and/or Interdigital will in fact change, remains to be
seen given that neither Ericsson nor Interdigital has submitted an offer and thus the exact
terms of their licensing offers and whether they will be FRAND or excessively high so as to
reinforce the licensing strategy of the Second Defendant (cf. (174)) are unknown.
(179) Thus, as previously shown, the First Defendant refused to enter into FRAND negotiations
with the Claimant and instead focused on targeting OEMs and forcing them to acquire a
license from the Second Defendant.
(iii) Overall Strategy Violates Article 101 TFEU
(180) The combined effects of the aforementioned violations of Article 101 TFEU by the Second
Defendant show that they are part of an overall strategy which itself violates Article 101
TFEU.
(181) Even assuming – quod non – that Defendants' individual conduct does not in itself constitute
a violation of Article 101 TFEU, when considered together the various aspects are clearly
part of an overall anticompetitive strategy in violation of Article 101 TFEU. Their purpose is
to only license certain undertakings in the supply chain and thus prevent component
manufacturers such as the Claimant from obtaining licenses on FRAND terms.
cc) Affectedness
(182) As already explained under recitals (130) et seqq., the Claimant is directly affected within
the meaning of Section 33(3) ARC.
dd) Damages
(183) For the damages incurred and still to be incurred, reference is made to recitals (51) et seqq.
and recitals (133) et seqq.
b) Sections 33a(1), 33(1) ARC in conjunction with Article 102 TFEU
(184) The Second Defendant is also abusing its dominant position as the operator of a patent pool
representing between 62% to 68% of 2G, 3G, and 4G-related SEPs.
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aa) Willful Violation of Article 102 TFEU
(i) Market Dominance
(185) The Second Defendant undoubtedly holds a super-dominant position.
(186) As noted above, each SEP holder is dominant with respect to each of the SEP it holds with
respect to the 2G, 3G and 4G standards. Insofar as dominant SEP holders enjoin a patent
pool, which defines and implements a joint licensing policy, i.e. undertakes the
administration of the SEPs conveying market dominance, this patent pool is by essence
super-dominant. 80 The patent pool collectively assumes the pre-existing position of
dominance of its members.
(187) In the present case, the Second Defendant is the operator of a patent pool responsible for
licensing between 62% to 68% of 2G, 3G and 4G related SEPs. The Second Defendant is
thus clearly dominant. In addition, the Second Defendant considers itself to be a "one-stop-
shop" and also coordinates the licensing strategy and litigation strategy of some of its key
members, which confers a significant degree of market power upon the Second Defendant
verging on monopoly ("super-dominance") 81.
(ii) Abuse of a Dominant Position
(188) The Second Defendant abused its super-dominant position in the market.
(189) According to the established case law of the ECJ, it is recognized that a dominant company
bears a "special responsibility for residual competition". 82 On the basis of this special
responsibility, a dominant company may not take any actions that are likely to further impair
competition, which is already restricted. 83
(190) This special responsibility even increases with the relevance of the dominant entity:
"[…] where an undertaking, or group of undertakings whose conduct must be

assessed collectively, enjoys a position of such over-whelming dominance verging on
80
Cf. Regional Court of Dusseldorf, decision of 7 May 2020, 4 c O 44/18, GRUR-RS 2020, 12599, para. 119 –
Decoder.
81
Cf. Advocate General Fennelly, Opinion dated 29 October 1998, C-395/96 P, ECLI:EU:C:1998:518,
para. 137 – Compagnie Maritime Belge Transports and Others /Commission.
82
ECJ, Judgment of 9 November 1983, C-322/81, ECLI:EU:C:1983:313, para. 57 - Michelin
83
ECJ, Decision of July 17, 1998, T-111/96, ECLI:EU:T:1998:183, para. 139 – ITT Promedia.
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monopoly, […] it [i.e. employing an exclusionary strategy] would not be consonant

with the particularly onerous special obligation affecting such a dominant undertaking
not to impair further the structure of the feeble existing competition […]" 84
(191) The Second Defendant violated this special duty by establishing a coordinated licensing policy
that denies granting licenses to component manufacturers such as the Claimant. 85
(192) The dominant position of the Second Defendant is a position of particular market strength
derived from its members, which also obliges the Second Defendant to grant licenses to any
companies willing to license on FRAND terms. The antitrust obligation to license SEPs to any
third party willing to license is inextricably linked to them.
"Because the FRAND commitment limits and defines the rights arising from the patent
in the manner described - irrevocably and thus, as it were, 'in rem' - the patent can
necessarily only pass to the acquirer in this very limited form, modified in content by
the FRAND commitment. " 86
(193) The Second Defendant assumed this obligation by taking over the pool management and
subsequently violated it.
(194) As has been described in recitals (107) et seqq., the outright and general refusal to license
SEP to willing third parties constitutes a violation of Article 102 TFEU under the essential
facilities doctrine as established by the European Courts in Oscar Bronner, IMS Health,
Microsoft, and Huawei/ZTE.
(195) The Second Defendant has further abused its dominant position by enforcing a licensing
model jointly with some of its key members which results in OEMs being forced into licensing
agreements at excessive rates.
(196) OEMs are faced with the choice between accepting the unreasonably high license rates
exceeding FRAND rates imposed by the Second Defendant or running the risk that their
products be excluded from the market altogether if only a single patent is infringed. Given
this – dire – choice, they are forced to accept rates which by nature are not FRAND. This is
so because OEMs are not able to assess the use, validity and essentiality of the SEP that are
84
Advocate General Fennelly, Opinion dated 29 October 1998, C-395/96 P, ECLI:EU:C:1998:518, para. 137
– Compagnie Maritime Belge Transports and Others /Commission, additions in square brackets are from the
author.
85
Cf. Regional Court of Dusseldorf, decision of 26 November 2020, 4 c O 17/19, GRUR-RS 2020, 32508, para.
27 – Nokia-SEP.
86
Higher Regional Court of Dusseldorf, decision of 22 March 2019, I-2 U 31/16, BeckRS 2019, 6087, para. 118
– Improving Handovers.
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included in the Second Defendant's portfolio, and, in any event, they will be entirely or
partially indemnified by their direct or indirect suppliers, including the Claimant.
(197) As a result, this harms the Claimant and potentially other component manufacturers who,
although they must bear their customers' (excessive) licensing fees because of
reimbursement claims, do not receive their own license in return and are thus significantly
restricted in their independent business activities. In this respect, reference is made to
recitals (119) et seqq.
(198) Due to the reimbursement claims for the excessive rates paid by the Claimant's customers
to the patent holders, the Claimant's margins are reduced to a mere minimum and its
commercial position and viability are jeopardized.
(199) The mere fact that the Claimant can theoretically obtain licenses from members of the
Second Defendant does not prevent this finding, especially since some key members like the
First Defendant refuse to independently license the Claimant or have yet to produce a FRAND
offer (Ericsson and Interdigital, cf. (174)).
(200) The finding of abusiveness of the Second Defendant's conduct is further supported by the
case law of the ECJ. In particular in the Intel 87 case, the ECJ considered that independent
infringements of Article 101 TFEU (see above) that are part of an overall strategy aimed at
strengthening a dominant position must be assessed jointly, and clearly fall within the scope
of Article 102 TFEU. Against this background, not only the individual refusal to license the
Claimant as a component manufacturer, but also the entire coordinated strategy of the
Second Defendant and some of its key members (including the First Defendant) constitutes
an abuse of a dominant position.
bb) Affectedness
(201) Since the economic situation of the Claimant is significantly impaired by the abuse of the
dominant position, the Claimant is also directly affected by the antitrust violation in this
respect - as already described under recitals (130) et seqq.
87
ECJ, Judgment of 6 September 2017, C-413/14 P, ECLI:EU:C:2017:632, para. 50 et seqq. – Intel
Corporation/Commission; ECJ, decision of 23 January 2018, C-179/16, ECLI:EU:C:2018:25, para. 89 –
Hoffmann-La Roche/Commission.
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cc) Damages
(202) For the damages incurred and still to be incurred, reference is made to recitals (51) et seqq.
and recitals (133) et seqq.
5. Overall Strategy
(203) While the aforementioned violations of Article 101 and 102 of the First and Second Defendant
are illegal in and of themselves, they must be understood as part of an overall cartel
established by the Second Defendant and some of its key members, such as the First
Defendant, in order to unduly maximize their SEP profits by licensing only to certain
participants in a particular supply chain (i.e. OEMs) to the detriment of the Claimant and
potentially other component manufacturers.
(204) As part of this strategy, the First and Second Defendant jointly refuse to license the Claimant
on FRAND terms, effectively sidelining the Claimant by denying it the ability to operate on
the market independently and freely. The Claimant is a well-known technology company that
is carrying out manifold activities in research and development. Being awarded an own
license for SEP for standards, with which its products must necessarily comply with, is
mandatory and ultimately a question of participation in the competitive process. Instead, the
Claimant is not awarded a license by the First or Second Defendant, is hampered in its
freedom to operate, and faces reimbursement claims from its customers, who try to recoup
the (excessive) royalties they pay, that effectively reduce the Claimant's margins to a mere
minimum and threaten its commercial viability as a manufacturer of cellular modules.
6. Section 823 (2) of German Civil Code in conjunction with Article 101 or 102 TFEU
(205) By violating Articles 101 and 102 TFEU as described above, the First and Second Defendant
are also liable for damages under Section 823 (2) of the German Civil Code.
(206) According to the Federal Court of Justice, Article 101 TFEU constitutes a protective law within
the meaning of Section 823 (2) of German Civil Code. 88 Although there is no corresponding
88
German Federal Supreme Court, decision of 28 June 2011, KZR 75/10, NJW 2012, 928, 928 para. 144 –
ORWI.
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case law for Article 102 TFEU, nothing else applies here. Both Article 101 and 102 TFEU serve
to protect undistorted competition. 89
(207) The existence of a deliberate infringement of Articles 101 and 102 TFEU and the fact that
the applicant is directly affected have already been set out. As explained, it is likely that the
Claimant will suffer damages. The exact amount of damage cannot yet be quantified by the
Claimant.
7. Section 826 of the German Civil Code
(208) In addition, the conduct of the First and Second Defendant violates Section 826 of the
German Civil Code.
(209) As explained, the aim of the licensing policy established by the First Defendant in cooperation
with the Second Defendant is to generate license fees from OEMs which do not adequately
reflect the actual licensing needs in the supply chain. In doing so, the First and Second
Defendants knowingly and willfully harm the component manufacturers, who ultimately have
to bear the costs as a result of the exemption clauses typical of the industry and are deprived
of their freedom to operate on the market.
IV. Ancillary Claims
(210) The claim to interest from the time the damages occurred is based on Section 288(1)(2) of
the German Civil Code in conjunction with Section 33a(4) ARC.
(211) We reserve the right to make further submissions.
(212) Insofar as the court requires German translations of the attached English-language annexes,
we shall submit these at the court's request. In this respect, we ask for a corresponding
indication.
(213) Translations of the action (in Finnish and English) and of Annex GMW 19 (in English) for the
purpose of service on the First Defendant under EC Regulation 1393/2007 and on the Second
Defendant under the Hague Service Convention of 15 November 1965 are currently being
prepared and will be submitted as soon as possible. A Finnish translation of the English-
89
Wagner in: Münchener Kommentar zum BGB, 8th edition 2020, Section 823 BGB para. 544; Sprau in:
Palandt, 79th edition 2020, Section 823 BGB para. 57.
1 July 2021
Page 58/ 60
language Annexes GMW 1-18 will not be provided in accordance with the applicable case
law.
(214) We kindly ask the court to inform the Federal Cartel Office pursuant to Section 90(1) ARC.
The Federal Cartel Office has in the past shown an interest in this type of litigation and has
made its views known to the respective courts in appropriate situations.
Dr. Markus Wirtz

Rechtsanwalt
1 July 2021
Page 59/ 60
List of Annexes
Annex GMW 1: Master License Management Agreement between Avanci, LLC, Qualcomm,
Inc. and Telefonaktiebolaget L.M. Ericsson dated 21 July 2016
Annex GMW 2: Email from Nokia to THALES DIS AIS Deutschland GmbH dated
30 November 2020
Annex GMW 3 Email from Avanci LLC to THALES DIS AIS Deutschland GmbH dated
11 April 2018
Annex GMW 4: Letter from Core Wireless Licensing S.a.r.l. to Gemalto M2M GmbH dated
10 September 2014
Annex GMW 5: Memorandum of Dr Volkmar Henke dated 19 November 2014
Annex GMW 6: Business Transfer Agreement between Siemens AG and Cinterion Wireless
Modules GmbH dated 30 May 2008
Annex GMW 7: Letter from Gemalto M2M GmbH to Nokia dated 25 March 2015
Annex GMW 8: Letter from Gemalto M2M GmbH to Nokia dated 14 April 2016
Annex GMW 9: Draft NDA dated 27 July 2017 and revision of the draft NDA dated
1 August 2017
Annex GMW 10: Letters from Nokia Technologies Oy to Sagemcom Broadband SAS dated
22 February 2018, 7 August 2018 and 28 September 2018
Annex GMW 11: Email correspondence between representatives of Nokia Techologies Oy

and EDMI Meters between 20 April 2018 and 16 November 2018
Annex GMW 12: Letter from Nokia Technologies Oy to PowerFleet dated 9 September 2020
Annex GMW 13: Letter from Nokia Technologies Oy to Ingenico Group S.A. dated
19 October 2020
1 July 2021
Page 60/ 60
Annex GMW 14: Letter from Eisenführ Speiser Attorneys at Law to Nokia dated
1 June 2018
Annex GMW 15: Letter from Thales DIS AIS Deutschland GmbH to Nokia dated
8 October 2020
Annex GMW 16: Letter from Thales DIS AIS Deutschland GmbH to Nokia dated
24 December 2020
Annex GMW 17: Email from Nokia Technologies OY to Thales DIS AIS Deutschland GmbH
dated 21 April 2021
Annex GMW 18: Letter from Ingenico Group to Gemalto M2M GmbH dated
13 February 2020
Annex GMW 19: Third party notice TomTom International B.V. to THALES DIS AlS
Deutschland GmbH dated 7 April 2020

21-07-01 (En Translation) Thales v. Nokia & Avanci Munich Complaint

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What is the subject matter of the legal dispute?

What is the subject matter of the legal dispute?

What are the claims being made by the plaintiff?

What are the claims being made by the plaintiff?

Case 1:21-mc-00405-RGA Document 3-3 Filed 09/30/21 Page 1 of 62 PageID #: 432

Munich Regional Court Kasernenstrasse 69 . 40213 Düsseldorf

Düsseldorf, 1 July 2021

Legal representatives of the Claimant: GLADE MICHEL WIRTZ

for: Determination of antitrust damages on the merits

Value in dispute: EUR 3.0 million (preliminary estimate)

At the oral hearing, we will m o t i o n as follows:

1. It is hereby declared that the First Defendant is obligated to compensate the

Evidence: Website of the Second Defendant, available at

Evidence: Press release, 14 January 2019, available at

Evidence: Second Defendant's website, available at

Evidence: Second Defendant's, available at https://www.avanci.com/marketplace/#li-

Evidence: Master License Management Agreement between Avanci, LLC, Qualcomm,

Evidence: Master License Management Agreement between Avanci, LLC, Qualcomm,

Evidence: Master License Management Agreement between Avanci, LLC, Qualcomm,

II. The Facts

2. Negotiations with the First Defendant

Evidence: Testimony of Mr Olivier Mas, legal representative of Thales, to be summoned

Evidence: Testimony of Mr Carsten Petsch, legal representative of Gemalto/Thales, to

Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, photocopy

Evidence: Testimony of Mr Olivier Mas, legal representative of Thales, b.b.

Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, already

Evidence: Business Transfer Agreement between Siemens AG and Cinterion Wireless

Evidence: Memorandum by Dr Volkmar Henke dated 19 November 2014, already

Evidence: Testimony of Mr Carsten Petsch, legal representative of Gemalto/Thales, b.b.

(33) The First Defendant did not respond to this letter.

(36) Corresponding drafts were exchanged and modified by mutual comments.

Evidence: Letters from Nokia Technologies Oy to Sagemcom Broadband SAS dated

Evidence: Email correspondence between representatives of Nokia Technologies Oy and

Evidence: Letter from Nokia Technologies Oy to PowerFleet dated 9 September 2020,

Evidence: Letter from Nokia Technologies Oy to Ingenico Group S.A. dated

"[…] Gemalto declares that it is willing to be a "full" licensee of Nokia."

(43) However, the efforts were unsuccessful.

"Thales wishes to re-emphasize that it continues to be a willing licensee for Nokia's

3. Contacts with the Second Defendant

Evidence: Testimony of Mr. Carsten Petsch, legal representative of Gemalto/Thales, b.b.

Evidence: Master License Management Agreement between Avanci, LLC, Qualcomm,

4. Effects on the Business of the Claimant

(51) The licensing of mobile communications technologies is of enormous importance to the

Evidence Wirtschaftswoche of 27 November 2020, available at:

(64) The action is admissible and well-founded.

I. Admissibility of the Action

1. International and Local Jurisdiction

II. Legitimate Interest in the Declaratory Judgment

III. Damages Claims

(82) The action is well founded.

• coordinating the commercial (including litigation) strategies of at least some of its

1. Applicable Substantive Law

3. Claims against the First Defendant

(96) The Claimant is entitled to damages vis-à-vis the First Defendant.

a) Sections 33a(1), 33(1) ARC in conjunction with Article 102 TFEU

aa) Willful Violations of Article 102 TFEU

(i) Market Dominance

"the position of economic strength enjoyed by an undertaking [...] which enables it

(101) On this basis, the European Commission has established that