The Munich Higher Regional Court issued a decision concerning the fair, reasonable, and nondiscriminatory (FRAND) negotiation process and an implementer’s obligation to provide security if a license offer for standard essential patents (SEPs) is rejected. HMD Global v. VoiceAge, Case No. 6 U 3824/22 Kart, (Judgment of 20 March 2025).
In this case, the Munich Higher Regional Court attempted to fill a gap left by the Court of Justice of the European Union (CJEU) in Huawei v. ZTE regarding an implementer’s obligation to provide adequate security for royalties. This obligation arises when an implementer rejects a SEP holder’s license offer and the SEP holder rejects the implementer’s counteroffer, so there is no agreement on a license.
The Munich Court found that the implementer, HMD Global, provided an inadequate security that was based on HMD Global’s lower counteroffer. The Court explained that it is the SEP holder’s, here VoiceAges, final offer (i.e., the requested royalty) that is determinative for calculating the security amount that an implementer should provide. This is because a willing licensee must accept the SEP holder’s offer if a court declares it to be FRAND and the royalties subject to this offer must be covered by the security. The Court emphasized that an implementer can only establish that it is a willing licensee by making a counteroffer and providing adequate security after rejecting the offer.
However, the Munich Court left open the issue of whether security must be provided if the SEP holder’s final offer is obviously not FRAND, noting that there may be “special cases” where the SEP holder’s final offer may not be determinative of the security without further defining those cases.
The CJEU’s Guidelines to FRAND Negotiations Are Not a Rigid Set of Rules
The Munich Court also took a critical stance in response to the European Commission’s amicus curiae brief and found that the FRAND guidelines set by the CJEU in Huawei v. ZTE are not to be viewed as a rigid set of rules but rather as a “dynamic concept for negotiation.” A court is not limited to assessing the FRAND defense by strictly examining in sequence each step of the CJEU’s guidelines, which includes the following:
- The SEP holder must send a notice of infringement to the implementer.
- The implementer must declare to be a willing licensee.
- The SEP holder must make a FRAND offer.
- If the offer is not FRAND, the implementer is allowed to reject it but must make a counteroffer.
- The implementer must provide adequate security for royalties if the SEP holder rejects the implementer’s counteroffer.
The European Commission argued that a court must examine each step before moving on to the next one. This means that, for example, once a court has found that the implementer is a willing licensee, the court must leave the implementer’s subsequent (possibly non-FRAND) conduct out of consideration and cannot undermine the implementer’s established willingness to take a license. A court must then assess whether the SEP holder’s offer was FRAND.
Instead, in view of the Munich Court (a view that is also shared by the Unified Patent Court (Local Division Munich, judgment of 18 December 2024, Case No. ACT_459771/2023, UPC_CFI_9/2023)), a court may consider the entirety of the parties’ conduct, including subsequent conduct, during FRAND negotiations. Therefore, a party may not rely on a formal omission by the other party, such as the absence (or inadequacy) of an infringement notice or a declaration to be a willing licensee in the early stages of negotiations, if the omission was remedied by the party’s subsequent conduct and the parties continued to negotiate with the goal of concluding a license. On the other hand, the implementer’s subsequent non-FRAND conduct may undermine its established willingness to take a license.
No Review of the SEP Holder’s Final Offer if the Implementer Fails to Comply With Its FRAND Obligations After Rejecting the Offer
The Munich Court found that it need not review whether the SEP holder’s final offer was FRAND before assessing the implementer’s conduct after rejecting the offer.
The Munich Court explained that in general, whether a SEP holder’s final offer is FRAND is not decisive to the success of a FRAND defense because even if a SEP holder’s offer is not FRAND, the implementer cannot simply walk away from the negotiations. Instead, to comply with its CJEU negotiation obligations, the implementer must take further action, such as making a counteroffer and providing adequate security, to maintain a FRAND defense against a SEP holder’s injunction claim. In other words, the implementer will lose its FRAND defense anyway if it does not comply with its own FRAND obligations. Therefore, a court is only required to perform the time-consuming examination of whether the SEP holder’s final offer is FRAND if the implementer has complied with its own CJEU FRAND obligations.
Practice Notes
This judgment by the Munich Court strengthens the position of SEP holders. Implementers should consider providing security for royalties in the amount of the SEP holder’s final offer even if the relevant royalties seem to slightly exceed what might be considered as FRAND. Otherwise, an implementer risks a finding that it is an unwilling licensee, thus losing its FRAND defense.
It is also noteworthy that the Munich Court expressly allowed an appeal to the German Federal Court of Justice. This is rare in German case law and shows that the Munich Court is aware that its decision touches on a fundamental issue of FRAND law that still needs to be clarified by the German Federal Court of Justice. The appeal has already been filed (Case No. KZR 10/25).
