Key takeaways
A SEP holder is only required to offer a single FRAND-compliant licensing route: pool or bilateral (hn. 1).
Competition law does not require a patent holder to offer both a pool licence and a bilateral licence; indicating one route that meets FRAND requirements is sufficient, aligning with prior LD Munich case law (Huawei v Netgear).
An implementer may only demand a bilateral licence instead of a pool licence in limited, defined constellations (hn. 2).
Such constellations include a genuine wish for a multi-standard licence or cross-licensing with individual proprietors, or where the implementer has already advanced bilateral negotiations with a significant number of other pool contributors.
Choosing the bilateral route does not lower the implementer’s burden to prove genuine willingness to license throughout negotiations (hn. 3).
Persistent insistence on bilateral licensing without comprehensible reasons, failure to conclude bilateral deals with other pool licensors within reasonable time, and refraining from placing a security are all signs of unwillingness under the Huawei v ZTE (C-170/13) framework.
This is even more pronounced where the implementer was initially offered a FRAND-compliant pool licence, as was undisputedly the case here (Art. 101, 102 TFEU).
A licence between the SEP holder and an upstream software/OS supplier does not exhaust the patent rights unless it expressly covers the downstream product and constitutes a genuine “end user product” placed on the market with the patent holder’s consent (Section H in both decisions).
Art. 29 UPCA governs exhaustion autonomously, without recourse to national law; its legal consequences follow the law of the relevant country of protection, even though the existence of consent under a licence agreement is assessed under the law applicable to that contract.
In the present case, the patent licence relied upon by the Defendant did not cover the Android OS or the FDK Codec, nor did it extend to third-party device manufacturers ; a software library requiring compilation, integration and adjustment before use does not qualify as an “End User Product” under the licence’s own definitions, regardless of its degree of completion.
A separate bilateral agreement between the Claimant and a third-party supplier, which did not concern patent rights at all, could not give rise to exhaustion either.
The mere absence of a security does not automatically defeat a FRAND defence
The Court expressly declined to follow the “automatic trigger” rule applied by the LD Munich and the German Federal Court of Justice, under which the mere absence of security defeats a FRAND defence. Instead, it treated the missing security as one factor among several in the overall assessment under Art. 101, 102 TFEU.
Division
Local Division Hamburg
UPC number
UPC_CFI_494/2025
UPC_CFI_495/2025
Type of proceedings
Infringement action with counterclaim for revocation, including FRAND and exhaustion defences
Parties
Claimant: Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V.
Defendant: HMD Global Oy
Patent(s)
EP 2 380 167
EP 2 609 590
Jurisdictions
Germany, France, Italy, Belgium, Netherlands
Body of legislation / Rules
Art. 29 UPCA; Art. 101 and 102 TFEU
