2026-08-24 - LD Hamburg - Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung v. HMD Global - UPC_CFI_495/2025

1. For competition law reasons, the patent holder is only required to indicate to the patent user one licensing route that satisfies the FRAND requirements (concurring with LD Munich, decision of 18 December 2024 – UPC_CFI_9/2023 – Huawei v Netgear, p. 136). 2. However, there are constellations where the implementer can demand a bilateral licence instead of a pool licence. Such constellations are for example, but nonexclusively, given when the implementer expressed its desire to obtain a multistandard- licence or to sign cross-licencing agreements with the individual patent proprietors. The same applies when an implementer had already advanced with a significant number of other pool contributors to conclude bilateral licences for the whole pool portfolio. 3. Choosing the bilateral route does not ease the implementer’s obligation to show its willingness to sign a licence throughout the course of the negotiations In particular, an implementer’s insistence on bilateral licensing can still indicate unwillingness when the implementer fails to present comprehensible reasons for its decision to opt for bilateral agreements, failed to conclude bilateral agreements with the other SEP pool licensors within reasonable time, and refrained from placing a security. This is even more true when initially being provided a FRAND pool offer.

The Hamburg Local Division granted an injunction on a standard-essential patent for the AAC audio standard, dismissing both an exhaustion defence and a FRAND defence. On the pool-versus-bilateral question it held that for competition law reasons a patent holder need only point the implementer to one licensing route that satisfies FRAND, but recognised that in defined constellations an implementer may demand a bilateral licence instead of a pool licence, for instance where it seeks a multi-standard licence or cross-licences with the individual proprietors, or where it has already advanced with a significant number of pool contributors towards bilateral licences for the whole portfolio. Choosing the bilateral route does not relax the implementer's duty to demonstrate willingness throughout the negotiations: insistence on bilateral licensing still indicates unwillingness where the implementer gives no comprehensible reasons, fails to conclude bilateral agreements with the other pool licensors within a reasonable time, and provides no security. The Court expressly declined to follow the automatic-security trigger adopted by the Munich Local Division and the German Federal Court of Justice, treating the absence of security as one indication of unwillingness among others rather than a freestanding bar. On exhaustion it held that Art. 29 UPCA regulates the matter exhaustively and extends to method claims, but that a software library requiring compilation and integration is not an end-user product within the pool licence relied on.