HEVC SEP holder v Z. group companies (OLG Düsseldorf, 2 U 25/21, 2022)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Düsseldorf Higher Regional Court sets aside an anti-anti-suit injunction granted on a purely preventive basis against companies of a Chinese group and dismisses the application as inadmissible for want of a legitimate interest in bringing proceedings. The Senate accepts such measures in principle, but only to the extent objectively required to give the SEP holder effective protection. Absent any anti-suit injunction application, any concrete sign of one, or even proceedings on the merits in a forum that offers that remedy, the requirement is not met. The judgment departs clearly from the Munich courts.

Facts and procedure

The proprietor of a patent it says is essential to the HEVC (H.265) video standard is suing the defendants, companies of the « Z. » group headquartered in China, for infringement before the Düsseldorf Regional Court (4c O 50/20) (Rn. 2 and 3). No action to determine a FRAND licence is pending in a forum that offers anti-suit relief, and no such application has been made (Rn. 4).

On 14 December 2020 the Düsseldorf Regional Court granted an interim order prohibiting the defendants from bringing proceedings in China to restrain the infringement action or enforcement of its outcome, unless the claimant was given a right to be heard, and upheld it by judgment of 15 July 2021 (Rn. 5 to 11). The defendants appealed (Rn. 12).

The applicable law

The Munich case law bases the anti-anti-suit injunction on sections 1004(1) and 823(1) of the Civil Code and treats the issue as one of threatened first infringement (Rn. 19 to 23). The Senate treats it as a question of legitimate interest and weighs it against the right of access to a court, constitutional protection of property and Articles 17(2) and 47 of the Charter of Fundamental Rights (Rn. 25 to 40).

Question

Can a SEP holder obtain, on a preventive basis, an order prohibiting the defendant from seeking an anti-suit injunction abroad where no such application has been made or threatened and no proceedings on the merits are pending in a forum that offers that remedy?

Decision

No. The Senate accepts that pursuing an anti-suit injunction interferes with the holder’s protected rights and may justify a counter-measure (Rn. 25 and 40). Such a measure is admissible only « where, when and to the extent » it is objectively necessary for effective judicial protection (Rn. 17, 25 and 42). An order made after an anti-suit injunction issues can be obtained very quickly, whereas an anticipatory order gives no decisive protection against a foreign court that sanctions any resistance (Rn. 44 to 48 and 76). Anti-suit injunctions remain rare, and an implementer that obtains one risks being treated as plainly unwilling to take a licence (Rn. 49 and 50).

The Senate rejects the Munich requirement that an implementer declare, without cause, that it will not seek an anti-suit injunction (Rn. 53). Here there was no application, no threat and no main action; a Hunan court decision obtained by other group companies in a different setting does not suffice (Rn. 55 to 66). The same applies to the anti-enforcement injunction, as no judgment capable of enforcement had yet been given (Rn. 68). No further appeal lies (Rn. 82).

Key points for practice

• For the Senate the anti-anti-suit injunction is a matter of legitimate interest, not substantive law, which makes admissibility depend on objective necessity (Rn. 25).
• A purely preventive application requires at least a pending anti-suit application, a serious threat or a main action in a forum that offers the remedy (Rn. 52).
• A defendant’s silence in response to an unprompted request to forswear anti-suit relief does not create a threat of infringement (Rn. 53 and 66).
• Practical point: gather concrete evidence (pending proceedings, announcements, the defendant’s own conduct in comparable settings) before seeking a counter-measure in Düsseldorf (Rn. 58 to 61).

Provisions applied

Charter of Fundamental Rights of the European Union

Art. 17(2) and Art. 47

National law

Sections 823(1) and 1004(1) BGB; Art. 2(1) and Art. 14 GG; sections 91, 313a, 540, 542(2) and 890 ZPO

Case law cited

OLG München, 12 December 2019, 6 U 5042/19; LG München I, 2 October 2019, 21 O 9333/19; LG München I, 25 February 2021, 7 O 14276/20; LG München I, 24 June 2021, 7 O 36/21; ECJ, Turner v Grovit (EuZW 2004, 468); ECJ, Allianz v West Tankers (NJW 2009, 1655); CJEU, 13 May 2015, C-536/13; BGH, Unberechtigte Schutzrechtsverwarnung (GRUR 2005, 882); BGH, Honorarkürzung (GRUR 2013, 305)

Related decisions

• OLG München, 6 U 5042/19, 12 December 2019, Munich judgment cited, whose principle the Senate shares while narrowing it.
• LG München I, 7 O 14276/20, 25 February 2021, judgment cited, whose demand for a waiver declaration is rejected.

Prepared by Dhenne Avocats from the text of the decision (NRWE database of the North Rhine-Westphalia judiciary), consulted on 11 October 2026. Only the official text is authoritative.