- Copy Case number: Pronounced on

7 O 94/08

27 February 2009 Stumpf, court secretary acting

as court clerk

District Court of Mannheim

7th Civil Chamber

In the name of the people Decision

In the legal dispute IPCom GmbH & Co. KG represented by Komplementr GmbH, represented in turn by its directors Bernhard Frohwitter and Christoph Schoeller Zugspitzstrae 15, 82049 Pullach - Plaintiff / Counter-Defendant Counsel: Rechtsanwlte Frohwitter u. Koll., Possartstr. 20, 81679 Mnchen (B72907) v 1. High Tech Computer Corporation represented by its CEO, Peter Chou 23 Hsin Hua Rd., Taoyuan 33 Taiwan, Taiwan 2. HTC Europe Co Limited 7th Floor, Thames Central, Hatfield Road, Slough SL11QE, United Kingdom - Defendant / Counter-Plaintiff Counsel for 1. and 2.: Rechtsanwlte White & Case LLP u. Koll., Jungfernstieg 51, 20354 Hamburg (83721.H080373.CRO.rme) Intervener: T-Mobile Deutschland GmbH Landgrabenweg 151, 53227 Bonn Counsel: Rechtsanwlte Reimann u. Koll., Steinstrae 20, 40212 Dsseldorf (1645-08ss081027) owing to patent infringement the 7th Civil Chamber of the District Court of Mannheim held in the oral hearing on 14 November 2008 with the collaboration of

-2-

Presiding Judge at the District Court Vo Judge at the District Court Gredner-Steigleider Judge Schmidt

that:

I.

The Defendants are ordered under pain of penalty of up to 250,000.00 for each instance of contravention - alternatively detention - or detention for up to six months, for each repeat contravention detention for up to a total of two years, to cease and desist

1.

in the area of application of the German part of the European patent EP 1 186 189

from offering, placing on the market or using, or introducing or possessing for the purposes stated, a subscriber station with respect to which access can be granted to at least one telecommunications channel which can be used by several subscriber stations,

by way of means to receive information signals and whereby there is provision for an evaluation unit to check with respect to the access authorization data received with the information signals whether the access authorization data includes an access threshold, to compare the threshold with a random number or a pseudo random number and to calculate, depending on the result of the comparison, whether at least one subscriber station has been approved for access to at least one telecommunications channel.

2.

to provide the Plaintiff with information regarding the extent to which Defendant 1. has committed the acts described under 1. since 13 April 2009 stating

-3a. the individual supplies, broken down into supply amounts, times and prices including type descriptions and the names and addresses of the customers, b. the individual offers, broken down into supply amounts, times and prices including type descriptions and the names and addresses of the recipients of the offers, c. the advertising carried out, broken down into advertising media, their circulation figures, distribution period and area of distribution, d. the production costs, broken down into the individual cost factors and the profit generated,

whereby the Defendants need only provide the information required under d. for the period since 9th June 2007 and the Defendants have the right to provide the names and addresses of the non-commercial customers and recipients of the offers instead of to the Plaintiff to a certified accountant with his place of business in the Federal Republic of Germany named by the Plaintiff and under a confidentiality obligation as against it to the extent that the Defendants bear his costs and authorize him and place him under an obligation to inform the Plaintiff if an actual request is made by it to do so whether a certain customer or recipient of an offer is included in the list.

II. It is established that

1.

the Defendants are obliged to pay compensation to the Plaintiff for all acts committed in the period between 13th April 2002 and 8th June 2007 pursuant to I. 1.;

2.

the Defendants are under a joint and several obligation to reimburse the Plaintiff all damages set out in I. 1. which the Plaintiff has suffered and which it is still to suffer in the future as a result of the acts committed since 9 June 2007.

III. The (alternative) counterclaim is dismissed.

-4IV. The Plaintiff shall bear 2/5 of the costs of the legal dispute and the Defendants as joint and several debtors 2/25 and each Defendant individually a further 13/50. The Plaintiff shall bear 2/5 of the costs of intervention, the remaining costs shall be borne by the Intervener. V. The decision is provisionally enforceable in return for security of 1,000,000 in 1.1 (cease and desist), 50,000 in I.2. (Information) and 120% of the respective enforceable amount in IV (Costs).

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Facts
The parties are disputing cease and desist, compensation, damages and information duties as the result of a direct patent infringement.

After separating the claims based on the property rights DE 4 136 147 and EP 540 808 arising from these proceedings by decision of 10.11.2008 (AS 283) and withdrawal of the claim with respect to property right EP 1 111 809 with written statement from the counsel of the Plaintiff of 31.10.2008 (AS 151), the claim is based solely on European patent 1 186 189 B1 regarding proceedings to grant access rights in a telecommunications channel to subscriber stations of a telecommunications network and subscriber stations (hereinafter: disputed patent), for which the Federal Republic of Germany inter alia is named as contracting state. The fact that the disputed patent applied for on 15.02.2000 had been granted was published on 09.05.2007 (extract from the register dated 09.04.2008, Exhibit K E-16). The disputed patent has a Union priority right of 08.03.1999. Publication date of the patent application was 13.03.2002. Nokia Corporation (by way of written statement of 19.08.2008, Exhibit B17) and Defendant 1 (by way of written statement of 11.11.2008, Exhibit after B19) each filed actions for nullity against the German part of the effective disputed patent. Claim 11 of the asserted disputed patent reads, in the language of the case, as follows (with reference numbers):

subscriber station (5, 10, 15, 20), with respect to which access can be granted to at least one telecommunications channel which can be used by several subscriber stations by way of means (65) to receive information signals, marked by an evaluation unit (60) to check with respect to the access authorization data (45, 50, 55) received with the information signals whether the access authorization data (45, 50, 55) includes an access threshold (S), to compare the threshold value (S) with a random number or a pseudo random number (R) and to calculate, depending on the result of the comparison, whether at least one subscriber station (5, 10, 15, 20) has been approved for access to at least one telecommunications channel. With respect to the further content, in particular the patent description, please see the patent specification submitted as Exhibit K E-15.

The Plaintiff, a patent collecting society, has been registered as patent owner in the patent register since a re-registration on 10 October 2007. It is deriving its legal position from the undisputed acquisition of an extensive patent portfolio, which includes the disputed patent,

-6in May 2007 from the former patent owner, Robert Bosch GmbH (hereinafter: Bosch) and from a disputed corresponding assignment which allegedly took place before acquisition of the claims arising from the disputed patent, primarily claims to compensation and information. Defendant 1., a mobile telephone manufacturer based in Taiwan, distributes mobile telephones throughout Germany also under its own brand name and in particular through its subsidiary based in the United Kingdom, Defendant 2, including the model "TMobile MDA Touch Plus" (hereinafter: attacked embodiment; instruction manual, Exhibit K E-4) which are UMTS-capable. The design of the mobile telephones to make them UMTS-capable is regarded by the Plaintiff as use of the teaching of the disputed patent. Universal Mobile Telecommunications System (UMTS) is based on mobile telephony standards of the 3rd Generation Partnership Project (3GPP), which include namely individual documents (Exhibits K E-18, K E-19, K E-20) of the European

Telecommunications Standards Institute (ETSI). In the standardized system, access by the individual mobile station to the Random Access Channel (RACH, see TS 25.211 Version 6.9.0, Chapter 4.1.2.4; Exhibit K E-18) is dependent on a comparison between a persistence value Pi (scaled up where appropriate) generated in the mobile station and a random number R generated in the mobile station (0 R < 1) ("RACH transmission control procedure"; see TS 25.321 Version 6.14.0, Fig. 11.2.2.1; Exhibit K8). If R Pi then access to the mobile station on the RACH is open. Pursuant to the following table, the value Pi depends on the respective Access Service Class ("ASC"; see TS 25.331 Version 6.16.0, Chapter 8.5.12; Exhibit K E-9) allocated to the mobile station.
ASC # i Pi 0 1 1 P(N) 2 s2P(N) 3 s3P(N) 4 s4P(N) 5 s5P(N) 6 s6P(N) 7 s7P(N)

With the exception of ASC#0 for which R < P i is always true since Pi = 1 and by definition R < 1, Pi is determined on the basis of the dynamic persistence level N ("dynamic persistence level" with values from 1 to 8) in accordance with the fixed relationship P(N) = 2-(N-1) where appropriate under application of the scaling factor Si.(scaling factor). The dynamic persistence level N as a value dependent on the volume of traffic on the telecommunications network

- 7is determined by the base station and permanently transmitted to all mobile stations in the System Information Block ("SIB") type 7 whilst the scaling factors
Si

and the

information element "AC-to-ASC mapping" are transferred in the SIB type 5 or type 5bis. Allocation of a mobile station to a certain ASC results in accordance with the Access Class ("AC") defined by the SIM card applying the information element transmitted by the base station ("Mapping of Access Classes to Access Service Classes"; see TS 25.331 Version 6.16.0, Chapter 8.5.12; Exhibit K E-19):
AC ASC 0-9 st 1 IE 10 nd 2 IE 11 rd 3 IE 12 th 4 IE 13 th 5 IE 14 th 6 IE 15 th 7 IE

The former owner of the patent, Bosch, submitted - as a member with respect to the standard relevant here, a FRAND declaration to ETSI on the basis of the "General IPR Licensing Declaration" in which it undertook to grant a license in the patents described as standard-essential to every interested manufacturer at fair, reasonable and nondiscriminatory conditions. The disputed patent itself is not described as standardessential in the ETSI documents. The Defendants had indicated to the Plaintiff out of court their willingness to purchase a license in its entire patent portfolio in return for a one-off payment of USD 10 million (see also letter of 06.10.2008, Exhibit B19). In light of existing supply relationships with Defendant 1 the Intervener entered into the legal dispute on the side of Defendant 1 by way of written statement of 27.10.2008.

The Plaintiff pleads that the Defendants are infringing the exclusivity right arising from the disputed patent by distributing UMTS-capable mobile telephones without authorization to do so. In the case of a subscriber station, the design of which conforms to the patent, the evaluation unit is there to check, with respect to the access authorization data received with the information signals, whether the access

-8authorization data includes an access threshold when a check could take place as to whether a (transmitted) access threshold should be relevant to the granting of access of a subscriber station to the telecommunications channel or not ("Relevancy Check"). The determination of its Access Service Class by the mobile station in connection with the information element transmitted in the SIB type 5 / type 5bis denotes this check in the UMTS standard. This is the case since whilst in the case ASC#0 the granting of access does not depend on N and thus P(N), in the cases ASC#1 ... 7 the value P(N) is relevant to the granting of access of the individual mobile station. The fact that the value P(N) is even more "finely granulated" by Si does not change the fact that the evaluation unit of the UMTS-capable mobile stations is designed to compare the access threshold P(N) with the random number R.

The Plaintiff claims that claims to compensation, damages and information in the past were assigned to it in the framework of the patent acquisition from Bosch.

The Plaintiff finally r e q u e s t s :

as ruled.

The Defendants finally r e q u e s t

that the claim be dismissed;

alternatively: that the claim be suspended until a decision has been made in the nullity proceedings against the disputed patent which are pending.

Further and alternatively: protection from execution.

In the event that the cease and desist claim is granted the Defendants file the following c o u n t e r c l a i m : It is established that the Plaintiff is obliged to grant the Defendants a simple license but unrestricted in time, territory and subject, in the disputed patent EP-189 at conditions which are not less favorable than

-9the most favorable conditions which the Plaintiff or its legal predecessor has granted to other simple licensees. The Plaintiff r e q u e s t s that the claim be dismissed. The Plaintiff counters the application for suspension and r e q u e s t s that the alternative counterclaim be dismissed.

The Defendants plead that the attacked embodiment does not make use of the teaching of the disputed patent. It alleges that the Plaintiff's pleading regarding infringement based on the UMTS standard is inconclusive. A patent-conforming check as to whether the access authorization data include an access threshold, i.e. whether an access threshold is transmitted with the access authorization data is contained herein - ("Presence Check") is not prescribed by the standard because in the standard the value N dependent on the volume of traffic is always transmitted to the mobile station. The infringement argumentation of the Plaintiff is not successful either because the user classes of the disputed patent cannot be equated with the "Access Services Classes" (ASC) of the UMTS standard. Even pursuant to the Plaintiff's understanding of the patent, there is no evidence of use of the patent in the standard because in the course of the procedure according to the standard there is a calculation and a subsequent comparison between the persistence value P i with the random number R, the calculation function of Pi is only not required in the case of ASC#0 where it is set at 1. The case ASC#0 according to the standard is only optional since the division of the "physical RACH" into Access Service Classes itself is only optional in the standard. Furthermore, the inconclusiveness of the infringement accusation results from the fact that it is not the value N transmitted by the base station but only the value P i calculated by the base station which is compared with R, and Pi also takes account of the further parameter si. Finally, access to the telecommunications channel is not only granted on the basis of the comparison between P i and R but a further check is necessary as to whether for the corresponding ASC an Access Slot is available (Exhibit B21).

-10Any prohibition right of the Plaintiff irrespective of the lack of legal validity of the disputed patent - is not enforceable because Defendant 1 is a licensee of the NOKIA patent EP 940 056 which is based on the PCT patent application WO 98/23109 and on which the action for nullity of Defendant 1 is based. The Plaintiff does not have a right to take action anyway. It is disputed with the defense of lack of knowledge that the former patent owner Bosch properly registered its claim to the invention on which the disputed patent is based. It is also disputed with the defense of lack of knowledge that claims for the period before transfer of the disputed patent were transferred to the Plaintiff.

The enforcement of the Plaintiff's claims constitutes an abuse of law because Bosch created for itself, by way of breach of the duties imposed on it by the by-laws to expressly notify the disputed patent to ETSI, in the form of an ambush patent an (allegedly) advantageous legal position as against other members of the branch.

At the very least the cease and desist claim of the Plaintiff is being used in a legally abusive manner. The Plaintiff as pure patent collecting society has no authorized interest of its own worthy of protection. It is abusing its formal legal position without having any intention of use of its own. The claim is at least disproportionate in this respect.

Moreover, the Plaintiff is also restricted from the outset, as a result of the FRAND declaration submitted by Bosch, to payment claims in accordance with a reasonable license fee with respect to standard-essential patents. Bosch as singular legal predecessor of the Plaintiff waived the exclusivity right arising from such patents. This is not a new concept for the applicable law - as proven by 23 of the Patent Act - and is of central importance to the entire rules on which ETSI is based in light of mandatory antitrust requirements placed on standardization projects.

Even if the FRAND declaration does not actually restrict the right arising from the patent, the Plaintiff is, however, still bound by the declaration and thus under an obligation to grant licenses at "FRAND" conditions whereby the cease and desist claim must be countered with the defense of "dolo agit qui petit quod statim redditurus est".

-11 -

Should the transfer of the disputed patent to the Plaintiff haven taken place without a transfer of the obligations under the FRAND declaration, the transfer agreement must be regarded as being in breach of antitrust law, the consequence of which would be invalidity pursuant to Art. 81 (2) of the EC Treaty which would mean that the Plaintiff definitely has no right to take action. Finally the Defendants could counter the cease and desist claim with a license duty under antitrust law by way of the "dolo agit" defense.

With respect to the further details of the pleadings of the parties, in particular with respect to the comments on the prospects of success of the actions for nullity and the individual aspects of what is known as the mandatory license defense, reference is additionally made to the written statements exchanged together with their exhibits. The Defendants and the Plaintiff most recently made their pleadings in the written statements of 29.01 and 18.02 and 09.02.2009 which were not taken into account since they were received after conclusion of the oral hearing. In the written statement of 04.02.2009 which was not served the Plaintiff attempted to introduce an extension to the claim based on an indirect infringement of claims 1 and 2 of the disputed patent.

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Reasons for the decision

A. Basis for the decision The Chamber is required to make a decision based solely on the applications made in the oral hearing, 297, 308 of the German Code of Civil Procedure. The extension of the claim after conclusion of the oral hearing is not permissible and does not give the Chamber cause to reopen the oral hearing (Federal Court of Justice, decision of 12.05.1992 - XI ZR 251/91, BB 1992, 1385; Federal Court of Justice, decision of 09.07.1997 - IV ZB 11/97, NJW-RR 1997, 1486). The extension of the claim which did not become pending either since it was not asserted in the oral hearing or served ( 261 (2) of the German Code of Civil Procedure) does not need to be expressly dismissed. Since the value of the dispute has not been increased (see Greger in Zller, German Code of Civil Procedure, 27th ed. 2009, 296a margin no. 2a) the inadmissible extension of the claim does not have negative cost consequences for the Plaintiff.

B. Jurisdiction to make the decision

The Chamber has been called to make a decision pursuant to 32 of the German Code of Civil Procedure and Art. 5 no. 3 of the Council Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters as read with 143 (1) of the Patent Act as read with 14 of the Regulation on Jurisdiction. The Defendants face the accusation of nationwide patent-infringing conduct whereby there is also tortious jurisdiction in Baden-Wrttemberg.

C. Claim The admissible claim is justified. The Defendants are infringing the disputed patent (I.) and for this reason the Plaintiff (II.) is entitled without objection (III.) to assert the claims (IV).

-13I. Patent infringement

The Defendants are infringing the disputed patent, Art. 64 (1) of the EPC as read with 9 sentence 2 no. 1 of the Patent Act. The mobile telephones of the attacked embodiment offered for sale and put into circulation without authorization of use from the Defendants make literal use of the teaching of claim 11 of the disputed patent.

1. The disputed patent concerns a procedure to grant access rights to a telecommunications channel to subscriber stations of a telecommunications network and the subscriber station designed accordingly.

a)

In light of the fact that there are only a restricted number of channels for a cell with a base station and the resulting immanent risk of system overload in the case of access by several mobile stations to these channels, the disputed patent denotes procedures to control or manage access in a manner which is in line with state of the art technology as known, whereby information signals are transmitted to at least one subscriber station (column 1 lines 14-16). Specification WO 97/19525 refers to a wireless communication system whereby the base station calculates the number of access attempts and transmits values for the access probabilities to the individual subscriber stations via a common broadcast channel or control channel whereby the subscriber station desiring access is selected according to its priority class derived on the basis of the access probability values received and compares these with a random number in order to ascertain whether access to a communication channel is permissible (column 1 lines 41-51).

b) By contrast, the disputed patent describes as the general advantage of its teaching the fact that the access control by way of random distribution of access authorization to the telecommunications channel for one or more than one subscriber station uses a minimum of transmission capacity for the transfer of the information signals since it is only effectuated by transmission of the access threshold.

c) This advantage over state of the art technology is realized, in the view of the disputed patent, by a subscriber station with the characteristics set out in claim 11:

-14(1) Subscriber station (5, 10, 15, 20), with respect to which access can be granted to at least one telecommunications channel which can be used by several subscriber stations, (2) by way of means (65) to receive information signals, marked by (3) an evaluation unit (60) being provided (a) to check with respect to the access authorization data (45, 50, 55) received with the information signals whether the access authorization data (45, 50, 55) includes an access threshold (S), (b) to compare the threshold (S) with a random number or a pseudo random number (R) and (c) to calculate depending on the result of the comparison whether at least one subscriber station (5, 10, 15, 20) has been granted access to at least one telecommunications channel. 2. The attacked embodiment makes literal use of all characteristics. As far as characteristics 1 and 2 are concerned this is not disputed by the parties and is not based on incorrect patent law assumptions. However, the group of characteristics 3 is realized literally. The evaluation unit of the attacked mobile telephones undisputedly designed to carry out the access control procedure required by the UMTS standard is equipped to realize the functions pursuant to sub-characteristics a, b and c.

a) The standard-conforming evaluation unit checks with respect to the access authorization data (45, 50, 55) received with the information signals whether this data includes an access threshold (S) (characteristic 3a). aa) What an average expert a university graduate of electrical engineering majoring in communications engineering or of information technology majoring in networks and with experience in the field of mobile telephone technology would understand by the patent-conforming "all-encompassing check" pursuant to characteristic 3a results based on the patent claim (Art. 69 (1) sentence 1 of the EPC, 14 sentence1 of the Patent Act) from the technical relationship between its characteristics and from the content of the description and drawings (Art. 69 (1) sentence 2 of the

-15EPC, 14 sentence 2 of the Patent Act). Referring to the description to interpret the patent claims ensures that the actual wording of the patent is sufficiently observed. An expert would thus take the purpose of a characteristic expressed in the patent specification as a basis whereby the technical sense of the words and terms used in the patent specification - not the philological or logistic scientific determination of the terms - is decisive, the patent specification thus serves quasi as its own dictionary (Decisions by the Federal Court of Justice on Civil Matters 150, 149, 156 Cutting knife I (Schneidmesser I); Federal Court of Justice, decision of 02.03.1999 - X ZR 85/96, GRUR 1999, 909 Clamping screw (Spannschraube)). In doing so the example embodiments and the related parts of the description do not restrict a wider meaning of the patent claims to these embodiments. Interpretation in accordance with the meaning (in the sense of interpretation in accordance with the sense) of the patent claims is generally not permissible; this applies in particular where the description does not provide any indication of a restriction of protection to certain embodiments (see Scharen in Benkard, Patent Act, 10th ed. 2006, 14 margin no. 24, 25).

Here an expert would recognize when interpreting the words "check with respect to the access authorization data received with the information signals whether the access authorization data includes an access threshold" that the allencompassing check pursuant to characteristic 3a is not a "presence check", i.e. not being asked whether a threshold is contained in the access authorization data but that the all-encompassing check of the teaching serves in actual fact to determine whether the access authorization data received should make access by the specific mobile station to the telecommunications channel dependent on a comparison between a random number and an access threshold, i.e. part of the access authorization data should become relevant as access threshold for the specific mobile station.

(1) An expert will neither stop at the possible general meaning of the word "encompass" in the sense of "contain" nor will he understand the repetitions of the term in the description as linguistic determination of the patent specification to the sense of "contain". This is the case because it would be clear to an expert like any reader that the linguistic usage of the disputed patent would then be inconsistent since the disputed patent itself also

-16uses the term "contains" in its description (section 37. column 11 line 39), without transferring it to the claim. In actual fact an expert would determine the technical sense of the "all-encompassing check" taking account of the example embodiments and the state of the art technology appraised by the disputed patent itself. (2) When reading the example embodiments an expert contrary to the view of the Defendants would not derive from section 39 that the check of the length of the bit sample (10 bit or 13 bit) pursuant to point 200 in Fig. 4a is a "presence check" in accordance with characteristic 3a in the case of the 13 bit sample or part of such in the case of the 10 bit sample. This is the case because it is clear from the patent specification that the length of the transmitted bit sample itself, whereby the bit sample transmission only represents an embodiment preferred by the patent (see sub-claim 7), does not denote any access authorization information in accordance with the example embodiments. The information on lengths in the description must be regarded solely as exemplary (section 38, column 11, lines 47-48). It does not have any independent information value since individual information components can be omitted completely (section 38, column 11, lines 52-54). In its example embodiments the disputed patent only regards the following as access authorization information, i.e. access authorization data in the information signals transmitted by the base station and received by the mobile stations, which are binary-coded (see column 10 line 28, column. 10 lines 3941 and column11, lines 44-47) in the bit sample: access threshold (column 7 lines 38-45 and column 10 lines 52-53: access threshold bits s3, s2, s1, s0), access class information (column 9, lines 37-39 and column 10 lines 52-54: access class bits z3, z2, z1, z0), participant service information (column 3, lines 11-12, column 7 line 58 - column 8 line 10 and column 10 line 56) and priority thresholds (column 8 lines 21-26 and column 10 line 57) and where appropriate other evaluation information (see sub-claims 5 and 6; column 7 line 36, column 9 line 22 and column 10, line 51: evaluation bit s4). Therefore, according to the example embodiments, it is only the bit sample configuration (see column 13 lines 54-55) and not the bit sample length which is decisive. Point 200 in the example embodiment in Fig. 4a would thus be of no significance to the technical understanding of the patent claims for an expert. The actual implementation of the procedure set out in the disputed patent

-17into an encoding system and thus into corresponding bit sample lengths and the question of whether different bit sample lengths are even used is left open to interpretation by the expert by the disputed patent. A simple "presence check" of the information signals transmitted and received on a threshold only seems to take place in the 10 bit example but not in the 13 bit example, whereby the latter is not covered by the patent claim, which would, in principle, be conceivable (see Federal Court of Justice, decision of 29.11.1979 - X ZR 12/78, GRUR 1980, 219 relief valve (berstrmventil)), but in the present case is, however, based on a restriction of the patent claim under its meaning, as illustrated further below.

(3) If an expert were to consider the structure of the access management using the bit sample of the first example embodiment (section 25 - section 35 and column 12 lines 2-57) and the structure of the access management using the bit sample of the second example embodiment (section 36 and column 12 line 57 - column 13 line 27), he would recognize that the following functional elements of the two structures are the same:

checking the dependency of the access management for the specific mobile station by carrying out an access threshold comparison or sole dependency on the user class allocated "with respect to the access authorization data received with the information signals" - by checking the evaluation bit s4 in hash 205 (S4=0 leads to the access threshold comparison: column 12 lines 4-7; s4=1 leads to exclusive dependency on the allocation to a user class and not setting the allocated access class bit: column 12 lines 7-8, column 12 lines 46-56 and column 9 lines 47-50) - by checking the access class bit z in hash 285 which corresponds to the specific user class (z=1 or non-membership of a user class leads to the access threshold comparison: column 13 lines 21-27 and column 11 lines 6-12; z=0 leads to access

independent of the access threshold: column 11 lines 1-4)

-18

access threshold comparison in accordance with characteristic 3b (column 12 lines 8-18, column 13, lines 26-27: ascertaining the access threshold S from bits s3s0; drawing of R; actual comparison between R and S)

granting access in accordance with characteristic 3c (column 12 lines 18-46; lines 26-27: depending on the condition R S and after further checks where appropriate)

The functional identical check by the evaluation unit as to whether s4=0 or z=1 differs between the example embodiments only to the extent that where a check is necessary on the basis of the evaluation bit s4 the information signal transmitted with respect to the dependency of the access management on an access threshold is identically evaluated in all mobile stations, where a check is necessary on the basis of an access class bit z3 ... 0 on the other hand, differing evaluations can be carried out by the individual mobile stations depending on their user class and the setting of the bit z3 ... 0 and thus in the 13 bit example for the base station different access management can be controlled in individual user classes even where the encoded access threshold transmitted is identical.

(4) It is this check (whether with respect to the access authorization data received with the information signals s4=0 or z=1) alone which would be regarded by an expert as being the technical implementation of characteristic 3a of the patent even in light of the objective aim resulting from the disputed patent which is distinct from the state of the art technology. The disputed patent is attempting to overcome the decisive appraised state of the art technology, which is characterized by transmission of the different probability values (column 1 lines 45-51) for the different priority classes of the mobile stations to be taken into account, by transmitting only the, i.e. one common access threshold and a resulting minimization of the transmission capacity (column 2 lines 13-17). Since owing to the priority classes recognized by the appraised state of the art technology of which an expert will be aware the access management of individual or all mobile stations will not, however, always depend on an identical encoded access threshold transmitted, the disputed patent realized that it was facing a technical problem whereby the specific subscriber station

-19would have to extract from the same information, i.e. information signals, transmitted by the base station at regular intervals at given times (column 13 lines 42-43) the specific data about rights to transmit on the

telecommunications channel of the corresponding specific mobile station (column 6 lines 6-8). This is precisely what is realized by the "allencompassing check" pursuant to characteristic 3a in that "with respect to the access authorization data received with the information signals" (in the example embodiments on the basis of the evaluation information s4 or the access class information z) it is checked by the evaluation unit of the specific subscriber station "whether the access authorization data include an access threshold" for access management by the specific subscriber station.

(5)

The technical-functional understanding of characteristic 3a which results herefrom has been sufficiently specified in the patent claim itself by way of the wording of the all-encompassing check "with respect to the access authorization data received with the information signals". The identical information signal transmitted (bit sample configuration in the example embodiments) can, depending on the interpretation modus allocated to a recipient in the system (each recipient in the example embodiments has bit s4 or the allocated z bit) have a different data content with respect to the access authorization data encoded in the information signals This understanding of the claim also corresponds to procedural claim 1 which provides for an allencompassing check "on receipt of the access authorization data" which, in accordance with sub-claim 6, is only characterized by the technical configuration of the 10 bit example embodiment.

(6)

In conclusion the Defendants' understanding of the meaning of the claim is thus unconvincing. The fact that in the UMTS standard it is always value N which is transmitted does not oppose realization of characteristic 3a. This is the case because whether the value N contained in the information signals transmitted will be relevant to the access management of the specific mobile station (in the case ASC#1 ... 7 with Pi depending on P(N)) or not ((ASC#0 with Pi = 1) through P(N) results only after determining the ASC which depends on the AC of the mobile station applying the

-20"Mapping" information element transmitted by the base station. Since the patent claim only refers to a "check", and leaves the content hereof to the expert, in particular the conditions under which the check is to be carried out, and the example embodiments cannot restrict the meaning of the patent claim, the Defendants' view that in the check it is not the AC of the mobile station (directly) which corresponds better to the access class within the meaning of the literal use of the patent description but the ASC determined.

bb) The Defendants' objection that realization of the characteristic is opposed by the fact that the case ASC#0 which is the only case where the transmitted value N is irrelevant to the access control, but which is only optional under the standard, is insignificant since the option in the standard demands with respect to UMTScapability of the subscriber stations that these are also equipped accordingly for the case ASC#0. Characteristic 3a only requires that the evaluation unit is capable of carrying out a check. Whether the check here in connection with the provision of the ASC - can be idle owing to the lack of the option used by the system to implement an ASC#0, does not change anything about the evaluation unit in the attacked embodiments provided for by the corresponding characteristic 3a.

cc) Realization of the characteristic is also not opposed by the fact that in the course of the procedure in line with the standard a calculation of Pi and a comparison with R always takes place. The "all-encompassing check" pursuant to characteristic 3a only demands that it be determined as to whether an access threshold should be taken into account during the access control of the specific mobile station and is included in the access authorization data received for this reason. In the case ASC#0 the evaluation unit determines that the value N over P(N) should not be relevant to the access control by setting Pi at 1. What the course of procedure is for the case where an access threshold is not included "with respect to the access authorization data received with the information signals" is left in its claims and in particular in claim 11 regarding the configuration to the expert by the disputed patent. Integrating the course of procedure in the case of ASC#0 into the comparison between R and Pi which is provided for in the case of ASC#1 ... 7 by the UMTS standard anyway by setting it at 1 in the comparison with the number R to be generated,

-21 for which 0 R 1 is always true, is a possible course of procedure which the disputed patent does not follow. b) The evaluation unit configured in accordance with the standard also requires a comparison between the access threshold (S) and a random number or a pseudo random number (R) (characteristic 3b). The evaluation unit which exists in the attacked embodiments for comparison of R with P i in accordance with the UMTS standard realizes characteristic 3b. For the case ASC#1 ... 7 Pi depends on P(N).

P(N) represents the access threshold which is dependent on the volume of traffic on the telecommunications network. The fact that P(N) is not itself transmitted by the base station directly binary-encoded but in fact N, on which P(N) is solely based according to the determination in the standard, is not an argument against the evaluation of P(N) as access threshold. This is the case because the disputed patent leaves it up to the expert to work out how the access threshold is encoded in the information signal transmitted in the telecommunications system. The type of encoding in the information signal is not determined by the patent claim. This also results in particular from the description of the disputed patent (column 10 lines 26-28 and column 12 lines 8-10: ascertaining the access threshold from the access threshold bit; sub-claim 7: transferring the access authorization data as bit sample). The ultimate dual binary encoding of P(N) as value N is not explained by the patent claim.

The fact that the comparison value Pi in the case of ASC#2 ... 7 does not depend solely on P(N) but in the comparison value and thus also in the comparison the parameter si can also be included is also irrelevant to the realization of characteristic 3b. The patent claim leaves open in this respect whether the comparison of the access threshold with the random number can directly depend on further values or whether further additional comparisons take place like the priority threshold comparison shown by the disputed patent itself (see section 26). Decisive pursuant to characteristic 3b of the disputed patent is solely that where an access threshold is "included" this is compared with the random number.

c) The purpose of the standard-conforming configuration of the evaluation unit in the attacked embodiment is finally there to ascertain, depending on the result of the comparison,

-22whether at least one subscriber station (5, 10, 15, 20) is free to access at least one telecommunications channel (characteristic 3c). This is not opposed by the fact that in the UMTS standard access to the telecommunications channel is not based solely on the comparison between P i and R. The patent claim must not be restricted in this respect by requiring a calculation dependent "solely" on the result of the comparison. Such an interpretation would not do justice to the meaning of claim 11. An expert would disregard such an understanding from the outset because then the entire description of the example embodiments would not indicate a patent-conforming procedure with corresponding subscriber stations (see priority value dependency check and comparing the telecommunications services information in column 12 lines 20-45).

3. In conclusion it must be stated that the distributed attacked embodiment does make literal use of the teaching of the disputed patent and that the Defendants are thus infringing the disputed patent owing to the lack of authorization of use/a license.

The Defendants have not sufficiently pleaded a utilization right. To the extent that in the written statement submitted after the oral hearing an objection is raised with respect to the license of Defendant 1. in the NOKIA patent EP 940 056 the Defendants do not even start to set out in a substantiated manner (see section V: Suspension) that the property right senior in terms of priority includes teaching which is identical to that of the disputed patent (see with respect to the problem of enforcing the positive right of use granted to a simple licensee against the owner of an identical property right younger in terms of priority: Higher District Court of Karlsruhe, decision of 25.02.1987 - 6 U 32/86, GRUR Int. 1987, 788 open-end spinning machines (Offenendspinnmaschinen)).

II. Right to take action As patent owner by way of acquisition of the disputed patent from Bosch in May 2007, the Plaintiff is authorized to take action with respect to all of the claims asserted since 9th June 2007.

-23The question raised by the Defendants regarding the claim to the invention by Bosch pursuant to 6 of the Employee Inventions Act as read with Art. 60 (1) of the EPC is irrelevant to the question of the former formal and substantive legal position of Bosch as original applicant (Art. 58, Art. 60 (3) of the EPC) and after the patent was granted former patent owner (Art. 64 (1), Art. 60 (3) of the EPC) and Art. II 5 (1) sentence 2 of the German Law on International Patent Treaties. When the patent was granted Bosch had obtained the position of patent owner whereby any "person entitled to the invention" could merely have demanded transfer of the patent by way of vindication. The rights arising from the patent can, however, until vindication be asserted by the patent owner and it can dispose of the right in the patent (Art. 2 (1), Art. 64 (1) of the EPC). Whether the Plaintiff as new patent owner could be subject to any vindication claims is not relevant to the dispute between the parties. In particular the Plaintiff has a right to take action owing to its current registration as patent owner ( 30 of the Patent Act).

Moreover, the Plaintiff is also entitled to take action for the claims to compensation and associated information asserted up to 08.06.2007. The Chamber is completely convinced of the assignment of the claims which arose at Bosch ( 286 (1) sentence 1 of the German Code of Civil Procedure) as a result of the written confirmation from Bosch dated 05.11.2008 (Exhibit K27). The assignment of payment claims confirmed therein which was also possible in an informal manner also includes, in the case of informed interpretation ( 133, 157 of the German Civil Code) of the confirmed transfer agreement taking account of the obligations applicable to the assignee anyway pursuant to 402 of the German Civil Code, the corresponding claims to information. Submission of confidential agreements is not required to convince the Chamber.

III. No right to object to the claims asserted

The Plaintiff is not prevented from enforcing the claims asserted from any legal point of view. In particular its enforcement must not be regarded as abusive ( 242 of the German Civil Code).

1. To the extent that the Defendants object to the singular legal predecessor of the Plaintiff, Bosch, having obtained an ambush patent by way of infringement of the duties under the by-laws to notify the disputed patent to ETSI quasi unfairly ( 4 no. 10 of the Unfair Competition Act ) -

-24meaning that the enforcement of claims arising from the disputed patent would constitute an abuse of law per se the Chamber is unable to follow this line of argument. It is irrelevant here whether application of the case law of the Federal Court of Justice to what are known as blocking trademarks and trademark applications for purposes of speculation (see for an overview: Khler in Hefermehl/Khler/Bomkamm, Unfair Competition Act, 26th ed. 2008, 4 margin no. 10.84 ff.) to rights in intangible assets which are based on own personal achievements like the patent even seems conceivable.

The Defendants have not even started to plead why, as a result of the breach of the by-laws by Bosch, despite having submitted a general declaration to the effect that it was willing the grant licenses, the competitors are apparently hindered in any way, i.e. that their competitive scope is restricted. The Defendants do not claim that if the disputed patent's relevance to the standard had been "discovered" earlier by Bosch a different standard would have been passed by ETSI. The Defendants merely state that the breach of ETSI's by-laws has otherwise remained without consequences. However, this is not sufficient to fulfill the prerequisites of 4 no. 10 of the Unfair Competition Act and cannot, taking account of the relativity of the obligations, support any abuse of law defense against the assertion of claims against patent infringers.

2. The claims asserted, in particular the cease and desist claim, are not exploited in a manner abusive to law by the Plaintiff as patent collecting society. a) The Defendants and the Intervener remain unheard with respect to their legally comparative considerations on equity in countries practicing Anglo-Saxon law. The Chamber is bound by the applicable national law.

b)

The claims asserted do not fall under the prohibition on chicanery ( 226 of the German Civil Code). The view of the Defendants and their Intervener that this is an abuse of a formal legal position is completely incorrect. The Plaintiff does not lack an authorized interest of its own worthy of protection either ( 242, 826 of the German Civil Code).

-25The patent as subjective pecuniary right grants the patent owner, pursuant to Art. 64 (1) of the EPC as read with 9 sentence 2 of the Patent Act, an exclusive legal position effective as against any other person according to which the patent owner is accorded property under constitutional law (Art. 14 (1), 19 (3) of the Basic Law). The legislator which is responsible for determining the content and limits of the property ( 14 (1) sentence 2 of the Basic Law) has not linked the perception of the exclusivity right pursuant to 9 sentence 2 of the Patent Act to simultaneous use of the patent ( 9 sentence 1 of the Patent Act) by the patent owner. A patent owner which does not use the patent itself is equally protected and already has, with respect to the enforcement of its intentions of use by granting licenses, an interest worthy of protection and an authorized interest of its own in enforcing the exclusivity right to which it is entitled.

c) No circumstances have been pleaded here or are apparent which would make enforcement of the cease and desist claim seem disproportionate. The Chamber does assume in principle that the enforcement of a cease and desist claim can be disproportionate since rights arising from the patent are not granted without limits (Art. 14 (2) of the Basic Law, 242 of the German Civil Code). However, since the legislator does not make the case and desist claim subject to any general prohibition on commensurability (not so: 140a (4), 140b (4), 140c (2), 140d (2) of the Patent Act) and the cease and desist claim secures the exclusivity right protected under constitutional law, the defense of disproportionally remains restricted to atypical exceptional cases which cannot be foreseen by the legislator. The fact that the patent collecting society is attempting to enforce a cease and desist claim in order to urge infringing parties to purchase licenses does not, in the view of the Chamber, constitute such an exception but rather is an intrinsic part of the patent system as part of the applicable legal and economic system, especially since a patent collecting society will usually be urged to take such action with respect to existing license agreements.

3. The Plaintiff is not, contrary to the legal view of the Defendants and the Intervener, not restricted from the outset to payment claims owing to the FRAND declaration submitted by Bosch.

a) If one were to assume the point of view of the Defendants and its Intervener that the FRAND declaration given by the singular legal predecessor of the Plaintiff, Bosch, to ETSI

-26corresponds in terms of content to a waiver of the exclusivity right arising from standard-essential patents, this can only be regarded as an explanation with effect under the law of obligations but not an act of disposal which has an effect on the existence of the patent right which directly restricts the Plaintiff in its rights arising from the patent.

The appraisal of existence and protection of the intellectual property rights and thus also the appraisal of the effectiveness of acts of disposal are subject to a connection to the country of protection principle and therefore in the present case German substantive law (see with respect to the hitherto applicable legal position: on copyright, Decisions by the Federal Court of Justice on Civil Matters 136, 380-393 The Casino Affair; for acts causing damage from 11.01.2009: Art. 32, Art. 31, Art. 8 (1) of the Regulation (EC) No. 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations "ROME II"). However, the German legal system only recognizes as dispositions of the patent the transfer of the patent ( 15 (1) sentence 2 of the Patent Act as read with 413, 398 of the German Civil Code), the limitation and amendment of the content of the overall right by way of licensing ( 15 (2) of the Patent Act; see with respect to the nature of disposals in copyright Wandtke/Grunert in Wandtke/Bullinger, Copyright, 3rd ed. 2009, 31 margin no. 31), registration of an usufruct ( 1068, 1069 of the German Civil Code, 15 (1) sentence 2 of the Patent Act), creating a lien ( 1273, 1274 of the German Civil Code, 15 (1) sentence 2 of the Patent Act) and the complete waiver of the right arising from the patent, i.e. in the patent itself by way of written declaration to the Patent Office ( 20 (1) no. 1 of the Patent Act; on the nature of disposal see Schwendy in Busse, Patent Act, 6th ed. 2003, 20 margin no. 11). However, the legal system does not recognize a partial waiver in rem of rights arising from the patent which goes beyond a "pactum de non petendo" effective under the law of obligations and is also excluded according to the systematics of patent law similar to the numerus clausus in property law. Moreover, the legislator shows by way of 20 (1) no. 1 of the Patent Act that the prerequisite for such a waiver in rem on grounds of legal security is receipt of the declaration by the Patent Office. Irrespective of the dogmatic appraisal of the declaration that the patent owner is prepared to grant licenses, pursuant to 23 (1) sentence 1 of the Patent Act, this legal provision does not constitute evidence that the legal system recognizes a partial waiver with effect in rem of rights arising from the patent either. Here too on grounds of legal security receipt by the Patent Office of a declaration is required. The reverse of the provisions pursuant to 23, 20, (1) no. 1 of the Patent Act shows specifically

-27that the rights arising from the patent cannot be waived with effect in rem in any other way.

b) If the Defendants were now able to object that the FRAND declaration made to ETSI is definitely a "pactum de non petendo" (waiver prohibition), i.e. a "negative license" granted to those wishing to use the patent before an actual simple license was purchased, the Plaintiff would not be prevented from asserting its right of prohibition by way of cease and desist claim on the basis of this interpretation. This is the case since a "negative license" granted by Bosch is not subject to succession protection pursuant to 15 (3) of the Patent Act (see Ullmann in Benkard, Patent Act, 10 ed. 2006, 15 margin no. 111) which means that the Plaintiff would not be bound by such a "negative license". The term "license" pursuant to 15 (2), (3) of the Patent Act is only the authorization granted for positive use of the licensed technical teaching (Higher District Court of Karlsruhe, decision of 25.02.1987 6 U 32/86, GRUR Int. 1987, 788, 789 Open-end spinning machines).

4. A "dolo agit" defense cannot be asserted against the Plaintiff either on the basis of any licensing duties arising from the FRAND declaration. The Chamber leaves open whether a license claim in favor of third parties even results from the FRAND declaration given to ETSI and whether this defense can be used according to legal doctrine against the cease and desist claim under patent law.

If it is assumed that an obligation to grant licenses to third parties wishing to use the patent results from the FRAND declaration given to ETSI it must be established that the Plaintiff is not bound by this declaration.

The Plaintiff itself is neither a member of ETSI nor do the Defendants plead that any obligations of Bosch were transferred to the Plaintiff as a result of a private autonomous agreement with the latter (for example assumption of obligations pursuant to 414 ff. of the German Civil Code or collateral promise). The FRAND declaration is not subject to succession protection pursuant to 15 (3) of the Patent Act either. This provision as a special provision of a protection of the status quo vis--vis the principle of relativity of a debt obligation is not open to analogy since there is no unintended lacuna in the provision in the view of the Chamber. Moreover, there is no comparable interest situation between authorized licensees using the patent

-28on the one hand and unauthorized users or simply those wishing to make use thereof on the other. The reference made by the Intervener to the provisions of 413, 404 of the German Civil Code does not apply either. 404 of the German Civil Code does not apply in the framework of patent transfers. This is the case because the right in and arising from the patent is an absolute right which is not recognized by any debtor (RGZ 127, 197, 205). Finally no succession protection arises from Art. 81 of the EC Treaty. Considerations by the Defendants and the Intervener de lege ferenda must remain unsuccessful. 5. The fact that the Plaintiff is not bound by the FRAND declaration given by Bosch does not lead to invalidity of the transfer of the patent to the Plaintiff pursuant to Art. 81 (1), (2) of the EC Treaty.

The purpose of the transfer of the disputed patent was not to restrict competition within the meaning of Art. 81 (1) of the EC Treaty nor did it have such an effect. The disposition as such initially merely served the purpose of shifting the disposal authority and must moreover be regarded as without purpose per se. It has neither been pleaded nor is it apparent that the circumstances of the transfer of the patent led to a different result. A restriction of competition which differs from the restriction which might have resulted by the standard-essential nature of a patent connected to the standardization does not result from the patent transfer without binding the assignee to a FRAND declaration submitted by the assignor in the standardization procedure on the basis of corresponding statutes (in view of Art. 81 (1) and (3) of the EC Treaty). This is the case since any obligation of a patent owner arising from such a FRAND declaration stops at the license obligations which result anyway from Art. 82 of the EC Treaty. The patent owner cannot choose not to grant access to FRAND conditions on the basis of antitrust law considerations. However, this means that the patent transfer did not result in a restriction on competition, the consequence of which would be invalidity.

6. To the extent that the Defendants are only using what is known as the antitrust mandatory license defense against the cease and desist claim they are unsuccessful in this respect. Whether this dolo agit defense can be used against the cease and deist claim under patent law does not need to be decided by the Chamber. This is the case since if the

-29defense is considered admissible (see tending in this direction: Higher District Court of Karlsruhe, decision of 13.12.2006 - 6 U 175/02, Court of First Instance 8, 14-24 Orange Book; left open for the cease and desist claim: Decisions by the Federal Court of Justice on Civil Matters 160, 67 Standard Tight-Head Drum (StandardSpundfass)), this would have to be subject to the refusal in breach of antitrust law of the patent owner to grant licenses in the standard-essential disputed patent at conditions in line with antitrust law.

However, the Defendants do not significantly plead such a refusal. They do not assert that the Defendants had attempted to purchase a single license in the disputed patent and the Plaintiff refused to grant such a license in breach of antitrust law. The pleading that the Plaintiff refused an offer to conclude a license agreement for the patent portfolio in return for a one-off payment of USD 10m is irrelevant from the outset. The Defendants fail to recognize in this respect that an obligation under antitrust law can result in connection with standard-essential patents but that the patent portfolio - this is not disputed by the parties - does not exclusively contain standard-essential patents. There is no claim under antitrust law to a license at FRAND conditions in such a mixed patent portfolio. The fact that the Plaintiff is refusing to grant a license at FRAND conditions in its standard-essential patents belonging to the portfolio is not pleaded by the Defendants. How the Plaintiff grants licenses in its entire portfolio to third parties is thus irrelevant.

IV. Legal consequences

The patent infringement ascertained justifies the applications made pursuant to the national provisions (Art. 64 (1), (3), Art. 2 of the EPC).

1. The Defendants are obliged pursuant to 139 (1) of the Patent Act to refrain from using the patent. The fact that the attacked embodiment has been illegally placed on the market and illegally supplied in the past constitutes the required risk of repeat contravention for the future.

-302. Since the Defendants have been ordered to cease and desist, pursuant to 890 of the German Code of Civil Procedure, on request by the Plaintiff they must be threatened with the statutory consequences of a contravention of a cease and desist obligation.

3. It must be established by way of decision that the Defendants are required to pay reasonable compensation for the acts of use committed in the period between 13.04.2002 and 08.06.2007 and compensation for infringements which took place after 09.06.2007.

a)

The special preconditions for admissibility of an application for a declaratory judgment pursuant to 256 of the German Code of Civil Procedure are fulfilled. The Plaintiff is not aware of the exact extent of the acts of use and infringement. Without this knowledge it cannot put a figure on an application for payment of reasonable compensation and damages. However, since the Defendants are denying use of the invention and the patent infringement the Plaintiff has a legal interest, in order to prevent the claim becoming statute-barred and to obtain the thirty year limitation period, in the existence of a claim for compensation and damages being established as soon as possible.

b)

The compensation claim results from 139 (2) of the Patent Act. The Defendants acted culpably, that is to say at least negligently. If they had applied the care necessitated by the market they would have been able and should have been able to recognize after one month at the latest of publication of the notification that the disputed patent had been granted that the disputed patent is infringed by the attacked embodiment. The Defendants are liable owing to the joint distribution in the Federal Republic of Germany as joint and several debtors ( 840 (1) of the German Civil Code).

c)

The duty to pay compensation results from Art. 11 1 sentence 1 of the German Law on International Patent Treaties. The publication of the notification required pursuant to Art. 93 of the EPC is dated 13.03.2002. The Defendants should have been aware after one month of publication at the latest that the disputed patent had been registered and that the attacked embodiment being placed on the market and supplied constituted use of the registered disputed patent.

-31 4. The Defendants are under an obligation to provide information to the Plaintiff pursuant to 140b (1) of the Patent Act and application of 242 of the German Civil Code which has become part of common law.

The Plaintiff cannot calculate its compensation claims without knowledge of the circumstances about which it is demanding information. Since the Plaintiff is naturally unaware of these circumstances since they constitute internal business information of the Defendants, but that the Defendants can provide such information by way of its accounts without unreasonable effort, the Defendants are placed under an obligation to provide these accounts. This obligation must also cover the profit generated by the Defendants in the period for which they are obliged to pay compensation and the data required to calculate the damage. The Plaintiff must first be placed in a position by way of such information in order to be able to decide on the possible ways of calculating its compensation claim (infringer profit, lost profit or fictitious license).

V. No suspension

The legal dispute must not be suspended until a final and absolute decision has been pronounced regarding the actions for nullity against the German part of the disputed patent. It is true that the decision on the actions for nullity is anticipated within the meaning of 148 of the German Code of Civil Procedure. However, the Chamber is exercising the discretion granted to it in such a way that it waives suspension. The Chamber bases this decision on the following considerations:

1. In order to prevent abuse, infringement proceedings should only be suspended if the expected success of an action for nullity is made credible by the Defendants. The mere possibility of the disputed patent being destroyed is not sufficient for suspension. In general a great amount of restraint is bidden with respect to ordering suspension in order to avoid by way of the suspension a suspension of the prohibition right conferred on the patent owner by the granting of the patent also binding for the courts for a considerable period of time. The lack of legal effect of the disputed patent must therefore be very likely (see Rogge/Grabinski, op. cit., 139 margin no. 107). These points of view correctly

-32described by the Plaintiff outweigh, in the present case, the interest of the Defendants in suspending the legal dispute and the general interest protected by 148 of the German Code of Civil Procedure in avoiding contradictory decisions.

2. In detail:

a)

The Defendants have not illustrated to the Chamber in a sufficiently convincing manner that it is highly likely that the actions of nullity before the Federal Patent Court will be successful since the state of the art technology quoted in the actions of nullity filed by NOKIA and Defendant 1 is prejudicial as to novelty with respect to the teaching of the patent. In this respect the Chamber is unable to see that in the state of the art technology mentioned an evaluation unit to carry out a check conforming to characteristic 3a of the disputed patent is disclosed. In particular, the reference to the GSM Standard 0.60 in Chapter 12.14 at Table 85 that the transfer of a "Persistence Level Bit" consisting of four bits, in which there is a signal bit "L| H", does not meet the requirements of disclosure. This does not reveal the check pursuant to characteristic 3a in accordance with the 10 bit configuration sample example and its evaluation information s4. Here the Defendants would have to illustrate that the configuration sample pursuant to the opposition is part of the information signals of the base station which constantly transmit access authorization data within the meaning of the disputed patent to the mobile stations and, depending on how the signal bit is set, the access authorization data make the access control dependent on an access threshold comparison in connection with the "Persistence Level" or subject the access authorization data to access management by another mechanism ("check with respect to the access authorization data received with the information signals whether [these] include an access threshold"). The function of the signal bit presented by the Defendants is exhausted, however, as a result of the fact that a bit string is distinguishable as a "Persistence Level Bit", i.e. that signals transmitted by the base station contain a "Persistence Level Bit".

b) To the extent that a general reference to the actions of nullity place the inventive step of the disputed patent in doubt, the Defendants are completely unable at least for a layman to show that there are no further sensible

-33arguments for the inventive step. Also in this light the prospects of success of the actions for nullity must not be regarded as highly likely.

D. Alternative counterclaim

The admissible internal procedural condition resulted by way of the Defendants being ordered to cease and desist. The counterclaim aimed at establishing a license obligation of the Plaintiff in the disputed patent at conditions which are not less favorable than the most favorable conditions which the Plaintiff or its legal predecessor granted to another simple licensee is already inadmissible. The Chamber leaves open whether the application is even aimed at establishing an actual legal relationship since there is definitely no interest in a declaratory judgment pursuant to 256 (1) of the German Code of Civil Procedure. Irrespective of the fact that the Defendants could decide to assert a claim to direct performance there is at present no interest in a declaratory judgment since at present no risk of uncertainty with respect to the subjective rights of the Defendants results from serious denial of the subjective right of the Defendants asserted. A refusal of the Plaintiff to grant a license in the disputed patent at any is not pleaded by the Defendants. It is not surprising either, is not even disputed by the parties, that negotiations were only conducted with respect to the patent portfolio as such.

E. Ancillary decisions

I. Costs

The uniform decision on costs is based on 91 (1) sentence 1, 269 (3) sentence 2 of the German Code of Civil Procedure as read with 100 (2), 100 (4), 101 (1) of the German Code of Civil Procedure and is based on the value relationships of the claims withdrawn compared with the applications on which a decision requested.

-34-

Since the partial withdrawal of the claim took place after the Intervener entered into the proceedings the Plaintiff must be regarded as inferior to the Intervener in a corresponding relationship, 101 (1) HS 1 of the German Code of Civil Procedure. A joint and several cost liability of the Defendants pursuant to 100 (4) sentence 1 of the German Code of Civil Procedure is only possible with respect to costs which result pro rata by the establishment of compensation (see Superior Court of Justice Berlin, decision of 26.02.2002 - 5 W 85/01, KGR Berlin 2002, 282) but not with respect to the duties to cease and desist and provide information which affect each of the Defendants individually. In this respect the Chamber has estimated the interest in establishing compensation at 20 % of the partial dispute value divided between the remaining claim applications.

II. Execution The decision regarding provisional execution is made pursuant to 760 of the German Code of Civil Procedure.

The application of the Defendants for protection from execution is dismissed. The preconditions of 712 (1) sentence 1 of the German Code of Civil Procedure are not sufficiently illustrated let alone rendered conceivable ( 714 (1) of the German Code of Civil Procedure). The Defendants merely plead in this respect that they would suffer a significant loss in turnover and long-term impairments with respect to the supply relationships with the large customers and this would result in a permanent loss of market shares in Germany even after the period of execution. However, there is no evidence of an irreparable disadvantage here. Ceasing to distribute the attacked embodiment, the resulting loss of customers and any damage to their image and the resulting financial losses are not sufficient to illustrate by way of 717 (2) sentence 1 of the German Code of Civil Procedure an irreparable disadvantage (see also Higher District Court of Dsseldorf, decision of 28.06.2007 1-2 U 22/06, Court of First Instance 8, 117, 120 ff. Portable cement pump (Fahrbare Betonpumpe)). They fail to state that the economic existence of the Defendants would be at risk if production and distribution were to cease because they might be at risk of insolvency and this is not in any way apparent either.

-35The amount of security for the cease and desist tenor must be determined by the Chamber at its own discretion ( 108 (1) sentence 1 of the German Code of Civil Procedure) on the basis of any expected execution damage ( 717 (2) sentence 1 of the German Code of Civil Procedure). The Chamber is unable to base its estimate of the damages on the turnover figures of the Defendants ( 200m in Germany) since it is not clear which amount relate to the attacked embodiments. Without further substantiated information with respect to the expected damage the Chamber regards a payment of security of 1m as sufficient.

F.

The written statements submitted after the oral hearing need not be taken into account in the decision and do not give cause for the Chamber to reopen the oral hearing ( 296a, 156 of the German Code of Civil Procedure).

Vo Presiding Judge at the District Court Issued

Gredner-Steigleider Judge at the District Court

Schmidt Judge

Stumpf, court secretary acting as court clerk

-36-

Decision
The dispute value is established as 2,500,000. Since the partial withdrawal of claims by way of written statement of 31.10.2008 the fees (Attorney Remuneration Act) must be determined on the basis of a dispute value of 1,500,000.

Grounds:

The establishment of the dispute value is based on 63 (2) sentence 1, 39 (1), 45 (1) sentence 1, 51 (1) of the Court Fees Act. With respect to the claims based on the individual disputed property rights the Chamber, at its due discretion, considers each disputed property right to have a partial dispute value of 1,000,000. A partial dispute value of 500,000 is allocated to the counterclaim.

Vo Presiding Judge at the District Court Issued [Signature]

Gredner-Steigleider Judge at the District Court

Schmidt Judge

Stumpf, court secretary acting as court clerk

[Stamp: District Court of Mannheim]