UPC CFI, LD Dusseldorf, 18 March 2026: FRAND defence rejected because of a failure to appropriately express a willingness to conclude a licensing agreement
29-06-2026 Print this page
Patent valid and infringed. Permanent injunction granted (Article 25 UPCA , Article 65 UPCA , Article 63(1) UPCA).
SEP/ FRAND Licencing - Abuse of dominant position (Article 102 TFEU, Article 20 UPCA).
FRAND defence rejected because of a failure to appropriately express a willingness to conclude a licensing agreement (“step 2”).
The FRAND negotiation program as per Hwawei v ZTE must be followed in order.
It is not sufficient for the infringer merely to indicate a willingness to consider entering into a license agreement [….]. Rather, the infringer must, for its part, clearly and unambiguously declare its willingness to enter into a license agreement with the patent holder on FRAND terms, and must also subsequently participate purposefully in the license agreement negotiations.
Plaintiff holds a dominant position in the licensing market (smart TVs),
stemming from the fact that, without a license to the patent, no products compatible with the (Opus) standard can be offered.
The decisive factor is that consumers expect as a de facto standard, (Opus standard) that smart TVs include all common audio and video codecs and can decode all content that is encoded accordingly by service providers used for encoding.
Given the consumer’s expectations regarding the use of all common services, mandatory use is not necessary for the finding of a dominant market position.
Lack of a FRAND declaration.
Given the plaintiff’s dominant position in the relevant market, Article 102(1) TFEU applies regardless of whether a FRAND declaration was made.
With regard to the fundamental classification of the FRAND negotiation program after Huawei v. ZTE, the Chamber concurs with the local chambers in Mannheim and Munich (Decision of November 22, 2024 – Panasonic v. OPPO) and Munich (Decision of December 18, 2024 – Huawei v. Netgear).
The differences between the two local chambers in the application of the principles set forth in Huawei v. ZTE, these are irrelevant to the case at hand.
