2026-08-24 - LD Hamburg - Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung v. HMD Global - UPC_CFI_494/2025

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 non exclusively, given when the implementer expressed its desire to obtain a multi standard-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 take 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 found the patent infringed, dismissed the counterclaim for revocation and rejected both the exhaustion defence and the FRAND defence of a standard-essential patent implementer. On the FRAND question the Division held that a SEP holder need indicate only one licensing route satisfying FRAND, so an uncontested pool offer discharges its obligation, but that in defined constellations an implementer may demand a bilateral licence instead — provided it gives comprehensible reasons for that choice. The implementer here gave none, concluded bilateral licences with only a fraction of the pool licensors over nine years and placed no security, which together showed it was not genuinely willing to take a licence. The Division expressly declined to follow the LD Munich and the German Federal Court of Justice in treating a missing security as an automatic bar to the FRAND defence, treating it instead as one further indication of unwillingness. Because willingness was absent, the Huawei v ZTE assessment terminated and the SEP holder's own offers were never examined for FRAND compliance.