LD Düsseldorf, July 23, 2026, Decision on infringement and validity, UPC_CFI_87/2025 and UPC_CFI_488/2025

If an NDA between the parties prevents one party from making submissions or producing documents, and the other party, without reasonable justification, refuses to amend the NDA to enable such production, this shall be to the detriment of the latter party (headnote 1, Sec. 352 et seqq.).
In such cases, if a party refers to steps within the FRAND negotiation programme and the Court is unable to examine these steps due to the other party’s refusal to amend the NDA, the steps will be considered to have been taken in accordance with the Huawei v ZTE judgment (headnote 2, Sec. 352 et seqq.).

The court held that a willing licensee would not refuse to properly cooperate in amending an NDA (Sec. 372). This assessment does not change on account of the defendants having stated that ‘the entire negotiation record should be ordered to be provided to the Court and would not object to such an order, provided it applied equally to both Parties’ because defendants had the power to agree to amend the NDA as suggested by claimants but did not do so. Moreover, the scope of this submission was not sufficiently clear (Sec. 359).

For the patent proprietor to hold a dominant position on the licensing market, it must generally be technically impossible to circumvent the technology protected by the patent, without sacrificing functions that are essential to the product market (Sec. 325 with reference to ECJ, Huawei v. ZTE and European Commission Decision C(2014), 2892 Motorola).

Applying these criteria to the case at hand and concurring with the decision of the Mannheim local division in parallel proceedings between the same parties (UPC_CFI_86/2025, decision of June 16, 2026), the court held that the asserted patent claims are neither part of a de jure standard nor did the defendants demonstrate that they became a de facto standard (Sec. 328 et seqq.).

In particular, the court held that the HEVC standard defines the encoding process as not being part of its specifications. As the standard itself defines its scope it was not decisive whether HEVC imposes certain restrictions on the bitstream syntax to be decoded in accordance with its specifications (sec. 328-332). Furthermore, the fact that the implementer loses certain technical advantages if it is not permitted to utilise the technical teachings of the patent, is common when the claimed invention improves upon the prior art (sec. 336).

For practice: When being sued based on an encoding patent, it must be examined and detailed whether the asserted claims constitute a de facto standard. This was only inadequately done in the present case (Sec. 335).

In the present case no FRAND declaration existed (Sec. 337). The court observed that there are indications in Huawei v. ZTE that these principles cannot be applied without modification where no FRAND declaration exists. Huawei v. ZTE expressly concerns only cases where a FRAND declaration has been made. According to the judgment, the FRAND declaration forms the basis for further considerations and the programme of proceedings set out (sec. 343 referencing Huawei v ZTE, paras. 46 ff., para. 59, para. 77).

For practice: Even though the UPC ultimately did not have to decide on this, this decision provides grounds to argue for a FRAND regime deviating from Huawei v. ZTE in cases withouth FRAND declaration, potentially by recourse to national case law, such as the Orange Book case law of the FCJ.

An infringement notification served on one group company is also sufficient in relation to another group company if it can be expected that the information will be passed on within the group (sec. 347, referencing own prior case law (UPC_CFI_135/2024 Dolby v. Beko)).

The court ordered the claimant to provide enforcement security in the amount of EUR 8 million prior to enforcing the orders on injunctive relief, recall and removal. The court found the claimant’s financial position not sufficiently certain to safeguard an effective enforcement of possible claims for damages of the defendants. Although the claimant’s parent company is publically listed and might have sufficient financial resources, the claimant has not provided any details of its own financial situation, nor has it argued that its parent company has given an unconditional undertaking, for the benefit of defendants, to be liable for any damages arising from the enforcement of the decision (sec. 416 et seqq.).