Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 900

NOTICE by Apple Inc.(a California corporation) Translations of Foreign Authority (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28, #29 Exhibit 29, #30 Exhibit 30, #31 Exhibit 31, #32 Exhibit 32, #33 Exhibit 33, #34 Exhibit 34, #35 Exhibit 35, #36 Exhibit 36, #37 Exhibit 37, #38 Exhibit 38, #39 Exhibit 39, #40 Exhibit 40, #41 Exhibit 41, #42 Exhibit 42, #43 Exhibit 43, #44 Exhibit 44, #45 Exhibit 45, #46 Exhibit 46, #47 Exhibit 47, #48 Exhibit 48, #49 Exhibit 49, #50 Exhibit 50, #51 Exhibit 51, #52 Exhibit 52, #53 Exhibit 53, #54 Exhibit 54, #55 Exhibit 55, #56 Exhibit 56, #57 Exhibit 57, #58 Exhibit 58, #59 Exhibit 59, #60 Exhibit 60, #61 Exhibit 61, #62 Exhibit 62, #63 Exhibit 63)(Selwyn, Mark) (Filed on 5/7/2012)

Exhibit 26

Tarlton Law Library

Joanna Schmidt-Szalewski

Jean-Luc Pierre

Professor at the University Robert Schuman (CEIPI) Strasburg
Attorney-partner Landwell & Associates
In charge of the Institute of Political Studies of Paris
Associate professor at the Univ. Jean Moulin Lyon (III)

LAW OF
INDUSTRIAL PROPERTY
4th Edition

Lexis Nexis
LITEC
Lexis Nexis S.A.
141, rue de Javel
75015 Paris

THE PROTECTION OF UTILITY CREATIONS
…general legal principles of leasing, the lessor is not required to protect the lessee against the
material disturbances of third parties. It is different with regard to patent licenses, since such
material disturbances consist of infringement by third parties and the patent holder is the only
holder of the right to bring an action (see above, no. 194 to 196). Therefore, the patent holder
has the obligation to bring an action for infringement at the request of the non-exclusive licensee
(611) (the exclusive licensee being able to bring an action himself under certain conditions, see
above, no. 195). The legal disturbance may also consist of an action for infringement brought by
a third party against the licensee, who may then join the granting party to the proceedings. Still,
it must involve a serious risk of crowding out; the licensee cannot take advantage of the mere
threats of a competitor to cease performing his obligations (612).
b) Obligations of the licensee
291. – The licensee owes the payment for the concession of the patent; the jurisprudence also
imposes on him the obligation to make use of the patent.
292. – Payment. As a form of leasing, the license is a contract against payment, which carries
the obligation to pay a price for the authorization to make use of the patent; if not, it would be a
loan of the patent at no charge. This price does not necessarily have to be determined or
determinable at the time of the concluding of the contract (613). The amount and the terms and
conditions of payment are established by agreement of the parties.
The price generally combines a lump sum and remuneration proportional to the volume of
sales or the number of products produced under license, with various variations. The taxable
basis of the royalty and the terms and conditions of control by the patent holder of the sums
withheld for the calculation of its amount should be established with precision (for example,
keeping special production and sales logs). Sometimes the licensee agrees to pay a minimum
royalty (614). This minimum may be calculated either on the basis of a set quantity of objects
which are to be produced by the licensee, or may consist of a lump sum, independent of the
volume of use.
Like all contractual obligations, the obligation of payment takes effect, in principle, at the
concluding of the contract; appropriate clauses can, however, provide it with a suspensive
term, in order to delay its collectability (615). The payment is due in principle up to the end of
the contract (616); it cannot, however, be required after the expiration of the patent granted in
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(611) Paris, Dec. 23, 1927; Ann. Propr. Ind. 1928, p. 118.
(612) Aix-en-Provence, Nov. 27, 2005; RTD com. 2006, no. 2. p. 351, obs. GALLOUX.
(613) Cass. Com., Nov. 9, 1987; Bull. Civ. IV, no. 237; D 1989, p. 35, MALAURE note; JCP 1989, II, 21186,
VIRASSAMY note; RTD com. 1988, p. 527, obs. MESTRE, RTD com. 1989, 674, obs. BOULOC and established
case law
(614) Cass. com., Feb. 1st, 1994; Ann. Prop. Ind. 1995, p. 84 , MATHELY note; RTD com, 1995, p. 772, obs.
AZEMA.
(615) Cass. com. July 15, 1969; Bull. Civ. IV, no. 253, royalty collectable starting with the 3rd year of use.
(616) Paris, Jan. 29, 1963; Ann. Propr. Ind. 1963, p. 221.

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license (617); it would then be without cause and, moreover, contrary to French law and
possibly, to European community law on competition.
293. – Use. Even though in the lessee does not have the obligation to make use of the thing
leased with regard to general legal principles, such an obligation is considered as essential in the
patent license and is required
of the licensee even in the contract’s silence on this point (618). The use must be effective and
serious, in quantity as well as in quality, with regard to the means which the licensee has at his
disposal (619). Only an absolute impossibility resulting from insurmountable difficulties (620)
can excuse non-use. The licensee must personally make use of the patent; due to intuitus
personae which characterizes the contract, he may not grant sub-licensees, or assign his license
without the consent of the patent holder (621).
In contracts which feature a close collaboration of the parties, a non-competition obligation
applicable to the licensee has been allowed, requiring him to not produce objects likely to
compete directly with those of the patent holder (622).

§ 2. Non-voluntary authorization to use the patent
294. – General interest. The use of patents concerns the general interest in several regards.
The State organized, initially, the expropriation of inventions important for the national defense
(623); then, it brought to national law the provisions of the Convention of the Union of Paris (see
below, nos. 1056 and s.) on statutory licenses (624). The law of 1968 diversified the
interventions of public authorities and their regime; the law of December 18, 1996 introducing
the provisions of the ADPIC Agreement modified this regime on several points. Under the
current system, whose enforcement in practice is weak, the public authority can make two types
of decisions: some entail the transfer of the patent right, and others do not.
A.- Decisions which entail the transfer of the right
295. – National defense. The law specifies a single case of expropriation, in the interest of
the national defense: the State may totally or partially expropriate the holder of a patent or of a
patent application (CPI [Industrial Property Code]. Art. L.613-20). The expropriation is
performed by order made on the report of the minister in charge of industrial property and the
minister in charge of national defense. The State appears to have a discretionary power of
assessment with regard to the advisability of this measure. Compensation is obviously due to the
expropriated patent holder; in the absence of an amicable settlement, its amount is set by the
district court. A common law appeal may be brought by the patent holder before the
administrative jurisdiction against the expropriation decision.
A special provision specified in the case where an action for infringement concerns a patent
used for the needs of the……..[remainder of article is omitted] should be noted.
_______________________________
(617) Paris, Jan. 4, 1950; JCP 1951, II, 6218. R. PLAISANT note; today, such clauses would also be invalid with
regard to the law of competition; see above, no. 246. It would be otherwise with a patent-know-how “mixed
license”, if the royalty compensates the know-how after the expiration of the patents; Paris, 5th ch., May 22, 1990,
prec.

(618) For example Cass. com., May 16, 1961; Bull. Civ. III, no. 212. – Nov. 4, 1974; Dossiers Brevets [Patent
Cases] 1975, V. 3. – Lyon, Oct. 29, 1986; PIBD 1987, 405, III, 46.
(619) Paris, April 8, 1964; JCP 1964, II, 13876, R. PLAISANT note; RTD com. 1965, p. 396, obs. A.
CHAVA[illeg.], Paris, April 7, 2004; PIBD 2004, 790, III, 405.
(620) TGI Paris, Dec. 18, 1985; D. 1987, somm. comm, p. 133, obs. MOUSSERON and SCHMIDT. - Paris,
June 2, 1988, D. 1988, inf, rap. p. 202 –The burden of proof of difficulties lies with the licensee: Paris, Jan. 30,
1991; RD propr. intell, 1991, no. 38, p. 32 – Cass. com., October 1st, 1996; D. 1997, somm. comm., p. 336, obs.
SCHMIDT. – Paris, April 7, 2004; PIBD 2004, 790, III, 404.
(621) Paris, May 31, 1906; D. 1908, 5, 1.
(622) Paris, April 8, 1964; JCP 1964, II, 13876, R. PLAISANT note.
(623) L. of April 12, 1916, abr., D. Dec. 13, 1919, then replaced, D. October 30, 1935.
(624) D. Oct. 30, 1953.

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