German Federal Supreme Court Rejects HMD’s Appeal

In 2024, the European Commission filed an amicus brief in a SEP case, VoiceAge v. HMD, urging the Munich Higher Regional Court to require strict compliance with the sequence of steps laid out in Huawei v. ZTE.  That court rejected the EC’s interpretation, as did the Higher Regional Court a few months later.  (For previous discussion on this blog, see here, here, and here.)  Today, the competition law senate of the Bundesgerichtshof (German Federal Supreme Court) rejected HMD’s appeal.  The press release (in German) is here; I would guess there will be a written decision to follow, at some point.  According to the press release, the Court concludes that, in accordance with the CJEU’s decision in Huawei v. ZTE and the BGH’s two previous decisions in FRAND-Einwand  I  and II, SEP owners are not hindered from enforcing their patents against unwilling licensees; and that the evidence in this case, which includes negotiations dating back to 2019, shows the implementer (HMD) to be an unwilling licensee.  Moreover—and consistent with the FRAND-Einwand  I  and II decisions (which, inter alia, require that implementers demonstrate their willingness to license throughout the entire course of negotiations in order to avoid injunctive relief)—the Court has no doubt that TFEU article 102 does not require strict compliance with the sequence of steps set forth in Huawei v. ZTE, and therefore concludes that it is not obligated to refer matter to the CJEU.  The court further sees no reason to address the appellate court’s requirement that, as part of the Huawei v. ZTE framework, the implementer must post security in the amount of the SEP owner’s offer, because in this case, it states, the security the defendant posted wasn’t even as high as its own counteroffer. 

Bonadio and Solanki on Interim FRAND Licenses

Enrico Bonadio and Arjun Solanki have just published The emergence of FRAND interim licences, 47 EIPR 592 (2025).  The article provides an overview of  the English courts' practice, as developed over the past year, of granting declarations concerning interim FRAND licenses, from Panasonic v. Xiaomi though Samsung v. ZTE.  It also offers some arguments in defense of the practice, including some analogous practices elsewhere--though as I noted earlier this week, the recent decisions of the Mannheim Local Division of the UPC and of the Munich Regional Court, which came down too late for discussion in the article, would seem to present a substantial obstacle for the continued use of such declarations in FRAND litigation.  Anyway, here is the abstract (the paper itself can be found on Westlaw, if you don't have a hard-copy subscription to EIPR): 

This article analyses the emergence of FRAND interim licences in UK law, a judicial innovation addressing disputes over standard-essential patents (SEPs) during protracted negotiations or litigation. Reviewing landmark cases, i.e. Panasonic v Xiaomi, Alcatel Lucent v Amazon, Lenovo v Ericsson, and Samsung v ZTE, it explains how interim licences balance the interests of SEP holders and implementers by enabling continued technology use with provisional royalties, subject to retroactive adjustment. The study highlights the mechanism’s grounding in good faith obligations, its distinction from anti-suit injunctions, analogies in other legal fields, and its potential to influence global FRAND policy and standard-setting practices.

Bonadio and Solanki also have another paper, coauthored with Vansh Tayal, in the same issue, titled Brazilian antitrust authority's decision on SEP licensing practices, 47 EIPR 635 (2025), discussing a recent investigation launched by Brazil's competition authority into Ericsson's FRAND licensing practices.

2024 US-China Patent Valuation and Damages Workshop

A workshop report titled The 2024 Patent Valuation and Damages Workshop: A US-China Comparative Law Perspective is available on ssrn, and should be of interest to anyone following U.S. and Chinese patent and/or SEP litigation.  I remotely delivered a presentation on compensatory patent damages in the U.S. at the workshop, which was held in May 2024 and included presentations by several other U.S. and Chinese participants.  Here is a link to the report, and here is the abstract:

This report summarizes the proceedings of the 2024 Patent Valuation and Damages Workshop: A U.S.–China Comparative Law Perspective, jointly organized by the Berkeley Asia IP & Competition Law Center (BAIC), Berkeley Center for Law and Technology (BCLT), KoGuan School of Law at Shanghai Jiao Tong University, and the Institute of Intellectual Property and Competition Law. Held in Shanghai on May 28, 2024, the workshop convened leading judges, scholars, practitioners, in-house counsel, and economists from both countries to examine the evolving frameworks for patent damages and valuation. As the inaugural workshop on patent law and practice from a U.S.–China comparative perspective, pioneered by BAIC and BCLT, it explored compensatory damages (lost profits, reasonable royalties, price erosion, apportionment), punitive damages and their deterrence effects, the challenges of valuing and licensing standard-essential patents (SEPs), and the “important but limited” role of judicial rate setting in shaping technology markets. With attention to both theoretical underpinnings and practical case studies, the report highlights key similarities and divergences in practice, as well as the implications for global patent litigation and licensing. By capturing this pioneering comparative dialogue, the report provides valuable insight into the jurisprudential evolution of patent remedies and their broader policy context in the world’s two largest innovation economies.

From Around the Blogs

1. On SpicyIP, Ambika Aggarwal has published two posts (here and here) concerning the Supreme Court of India’s recent decision dismissing an appeal from a 2023 Delhi High Court judgment in Ericsson v. Competition Commission of India (CCI), previously reported on this blog here, holding that the “CCI cannot exercise jurisdiction over actions of an enterprise that are in exercise of their rights as a patentee.”  Although the Supreme Court's decision is apparently not publicly available yet, it is reported that the Court dismissed the action on the ground that the parties had, in the meantime, settled their dispute.  Dr. Aggarwal argues, persuasively in my view, that the current state of affairs in India leaves a gap in antitrust oversight of SEP-related issues, and is at odds with the positions taken in other major markets including the E.U., the U.K., China, Japan, and Korea.  For discussion on ip fray as well, see here and here.

2. Enrico Bonadio has published two posts on SEP matters on the Kluwer Patent Blog.  The first, titled Judgment Without Trial:  The Erosion of Appellate Restraint in UK Patent Law, takes issue with the Court of Appeal’s decision in Optis Cellular Tech. LLC v. Apple Retail UK Ltd., [2025] EWCA Civ 552 (previously discussed on this blog here), increasing the award of global FRAND royalties from $56 million to $502 million.  Professor Bonadio contrasts this result, which he views as the appellate court improperly serving as finder of fact, with the Federal Circuit’s en banc decision in EcoFactor v. Google (previously discussed on this blog here), which after reversing the trial court for admitting expert testimony in violation of the rules of evidence remanded for a new trial on damages.   He also recently published a post titled Restoring Balance in SEPs Governance—Next Steps for the EU After the Regulation’s Withdrawal.  He argues, inter alia, that a step forward “would be a strategic referral to the CJEU that addresses the gaps and inconsistencies left by Huawei v. ZTE.”

3.  Also on Kluwer, Jiří Slavík published Substantiating Infringement (or Risk Thereof) at the UPC:  Divide & Conquer or One to Rule Them All?, discussing, inter alia, UPC decisions on whether courts may grant preliminary or permanent injunctions throughout all of the contracting member states (CMSs) and, after BHS Hausgeräte (discussed on this blog here) non-CMSs as well.

A Couple of New Articles on SEP Litigation in the UPC, Germany, and the UK

1. Matthias Leistner has posted a paper on ssrn titled The first SEP/FRAND decisions on the merits of the UPC—an overview in context.  Here is a link to the paper, and here is the abstract:

 

After a period of consolidation, in the past two years the European SEP/FRAND enforcement landscape has seen considerable movement. Significant decisions have been issued by the UPC (Local Division Mannheim – Panasonic v Oppo and shortly afterwards Local Division Munich – Huawei v Netgear) and the English Court of Appeal (most recently in Lenovo v Ericsson). In addition, the Commission intervened in a Munich SEP infringement case recommending a stricter interpretation of the Huawei v ZTE requirements. To this the Higher Regional Court Munich (Oberlandesgericht München) has since responded with an informative legal notice (Hinweisbeschluss) during the proceedings and, ultimately, a judgment nonetheless granting injunctive relief (HMD Global v VoiceAge). This case is currently under legal review before the German Federal Court of Justice, since the Higher Regional Court granted relief for an appeal in law. The focus of this contribution is on the decision of the UPC’s Local Division Mannheim, but also takes into account the judgment of the Local Division Munich and the aforementioned overall context.

This very thoughtful and detailed paper deserves wide attention.

2. Peter D. Camasesca and Konstantina E. Sideri have published an article titled Abusive Conduct of SEP Holders in Pursuing Injunctions Across Jurisdictions:  The EU Angle, 74 GRUR Int. 607 (2025).  Here is a link to the article (though you may need a subscription or institutional access), and here is the abstract:

The enforcement of a standard essential patent (SEP) has been fraught with complex legal and commercial considerations, particularly regarding the interplay between intellectual property rights and antitrust principles. SEPs occupy a unique position on the market as they support industry standards, granting their holders quasi-monopolistic power while imposing obligations to license on Fair, Reasonable and Non-Discriminatory (FRAND) terms. However, these obligations often conflict with SEP holders’ desire to assert exclusivity rights, creating tension within the licensing ecosystem. This tension is amplified when SEP holders seek injunctive relief in jurisdictions like Germany while simultaneously agreeing to, or having engaged in, FRAND determinations in venues such as the UK. The issue at hand is whether pursuing injunctions in Germany while a FRAND determination is underway in another jurisdiction constitutes an abusive practice. We argue that this behavior undermines the core principles established by the Court of Justice of the European Union in the Huawei v. ZTE case and represents a form of procedural manipulation that is both legally and ethically questionable.

Two Important Developments out of Germany

I may have more to say about these two matters next week, and I highly recommend that readers review Florian Mueller’s posts on ip fray (see here, here, and here), if you have not done so already; but I also wanted to post something today (even if it is somewhat cursory), while these matters are fresh.  The two are (1) the decision of the Mannheim Local Division of the UPC in Fujifilm Corp v. Kodak GmbH, UPC_CFI_365/2023 (July 18, 2025) (available here), and (2) the Guidance (Hinweis) of Judge Oliver Schön of the Munich Regional Court I, dated July 14, 2025 (available here). 

The first of these holds that, under the CJEU’s decision in BSH Hausgeräte, where the defendant is domiciled in the court of an E.U. member state, a court (here, the UPC) may adjudicate the infringement of a non-E.U. member state (here, the U.K.) patent; assess the patent’s validity, at least "as a mere prerequisite for the question of infringement with inter partes effect only"; and enjoin the defendant from practicing that patent in the non-E.U. member state, applying the non-E.U. member state’s law of remedies.  (Damages for the U.K. portion of the patent also will be determined under English law.)  This is not a surprising development in view of BSH Hausgeräte, but it is obviously significant.

The second—in which the names of the parties are redacted, but it’s clearly part of the global FRAND dispute between ZTE and Samsung—includes the following important points:

1. In the event the implementer rejects the owner’s offer, the implementer may manifest its willingness to license by paying the owner at least the “undisputed” amount it eventually will have to pay (not just by posting security).  Presumably the undisputed amount would correspond to the implementer’s counteroffer.

2. As has been made clear in many other decisions before this one, there is an emphatic difference of perspective between the German and English approaches to FRAND.  Consistent with the German courts' perspective, the Guidance emphasizes the difficulty of establishing the value of patents and the importance of channeling the parties toward agreement—whereas the English view is that these cases essentially are all about money, and that the English courts are as good as any at determining the right sum.  The Munich decision also discusses at length the value of comparables as evidence of market value (and provides guidance as to what sort of inferences reasonably may be drawn from the comparables at issue, e.g., regarding the FRAND range); and it downplays top-down as, at most, a check (which is one respect, arguably one of the few, in which the Guidance is consistent with the British perspective).  To be sure, a critic would argue that reliance on comparables is problematic to the extent any given comparable may reflect some degree of holdup, and that the further use of such comparables only reinforces that problem.  In response, Judge Schön probably would say, as in fact he does say in the opinion, that if anything it’s better to over- than to undervalue patents in order to preserve the patent incentive scheme.  See p.6, part 3, third paragraph (my somewhat nonliteral, but I think reasonably accurate in conveying the meaning, translation):

It is a fundamental principle that the revenue to be gained through licensing must be high enough to preserve incentives for firms and inventors to invest the time and expense needed to further develop the technologies at issue.  In order to achieve this, high license payments are fundamentally welcome (begrüßenswert).  Royalties would be excessive only when license revenues would result in portions of the world’s population being excluded from the use of the technologies.

Judge Schön also discusses the reasons why implementers would, in his view, practice holdout, and why it is undesirable for them to do so (pp. 6-7)

3. Judge Schön discusses different types of royalty structures (per-dollar, per-unit, and lump-sum), and generally favors per-unit, stating that with per-unit royalties, it doesn’t matter where along the supply chain the owner seeks payment (see p.12).

4.  Perhaps most significantly, Judge Schön says that parties are not obligated to agree to interim licenses (responding to the EWHC’s decision from earlier this month (and other English decisions), discussed here); and he reaffirms the authority of the German courts to issue anti-antisuit injunctions when needed.  He also takes issue generally with the U.K. practice of establishing global FRAND terms (see p.14), and suggests that each jurisdiction should confine itself to adjudicating patent rights enforceable within its own territory.  (See, e.g,, p.13:  “That the same facts are handled differently in different countries is an aspect of national sovereignty and to be accepted by the courts of other countries” (my translation)).  What a critic would say this potentially overlooks, however, is not only the deviation from the purely territorial approach that may occur in at least some cases following the CJEU’s decision in BSH Hausgeräte, but also that a quick injunction in Germany can have the practical effect of compelling an implementer to agree to a global license on terms favorable to the SEP owner, before other courts have had sufficient time to adjudicate the cases before them.         

  

Wang and Du on SEPs and Injunctions in China

Wang Wenjing and Du Ying have published an article titled Theoretical Basis for the Shift of Judicial Practice on Injunctive Relief for SEPs in China, China Patents & Trademarks No. 2, 2025, English translation at pp. 26-36.  The article discusses the evolution of Chinese courts’ practice with regard to injunctions for SEPs.  According to the authors, in 2008 the Supreme People’s Court (SPC) issued a letter (Reply Letter No.4) that was interpreted to mean that patent holders were deemed to have implicitly agreed to license their SEPs.  The SPC signaled a possible change of course in 2009, however, when it issued a draft of its Interpretation on Several Issues Concerning the Application of Law in the Trial of Disputes over Patent Infringement, article 20 of which limited the effect of Reply Letter No. 4 to nondisclosed patents.  That provision didn’t make it into the final draft (an English translation of which is available here), but the authors state that draft article 20 nevertheless suggested that the Court had “softened its attitude toward injunctive relief for SEPs” (p.27).  The law continued to evolve throughout the 2010s, with new cases and with guidance published by the SPC, the Beijing High People’s Court, and the Guangdong High People’s Court, all of which seemed to point to a fault-based system not altogether unlike the framework set out in the CJEU’s decision in Huawei v. ZTE.  (For discussion, see Yabing Cui, Across the Fault Lines: Chinese Judicial Approaches to Injunctions and SEP’s, China IPR Blog, June 5, 2018; see also article 8 of the State Administration for Market Regulation’s Anti-Monopoly Guidelines in the Field of SEPs, (Nov. 8, 2024), translated and quoted in Aaron Wininger, China’s State Administration for Market Regulation Releases Anti-monopoly Guidelines in the Field of Standard Essential Patents, China IP Law Update, Nov. 11, 2024.)  The authors of the China Patents & Trademarks article suggest, however, that in the absence of legislation “there is no clear consensus on the ways to regulate injunctive relief for SEPs in judicial practice, not are there unified and mature standards for the application thereof” (p.29).  They then provide a theoretical analysis that touches on the law-and-economics of property versus liability rules, a balance-of-interests approach, and the concept of proportionality.  They state that some scholars have advocated incorporating a proportionality principle into China’s patent law in the future, and contend that such a principle has been implicitly applied in Chinese law already (pp. 33-34).

It will be interesting to see if the Chinese authorities follow the authors' advice and explicitly adopt some sort of proportionality criterion into the law as it relates to injunctive relief--and if so, what the contours of this criterion would be.  And, of course, the evolution of the proportionality concept in E.U. law also remains something of a work in progress, as I briefly discuss in this paper.