Lizenz in Wertschöpfungskette (LG Mannheim, 2 O 34/19, 2020)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Mannheim Regional Court orders a car manufacturer to stop marketing LTE connected vehicles and rejects its FRAND defence for lack of willingness, the manufacturer having consistently referred the SEP holder to its suppliers, both on principle and on price (paras 150 and 160). Three principles emerge: the patentee chooses the level of the chain it enforces against (para 202); the royalty reflects the value of the technology in the saleable end product (paras 171 to 173); a counter-offer based on the price of telematics units is not FRAND (paras 168 and 169).

Facts and procedure

The claimant, part of a telecommunications group, asserts a European patent filed on 2 October 2007 on ordering root (Zadoff-Chu) sequences, declared essential to LTE (paras 2, 4 and 15). The defendant makes vehicles fitted with telematics control units (TCUs) bought from tier 1 suppliers, themselves supplied by tier 2 and tier 3 suppliers (paras 12 and 13). After a first offer of 9 November 2016 (para 20), it left its suppliers to negotiate alone from early 2017 to February 2019 (para 21). The offer of 27 February 2019 calculated a per vehicle royalty from the value of connectivity (para 23); the counter-offer of 9 May 2019 used the average purchase price of a TCU (para 24); that of 10 June 2020 left the royalty to the patentee subject to review under section 315 BGB (para 25). The Avanci pool, which the claimant joined, offers USD 15 per LTE vehicle (para 26).

The applicable law

Literal infringement is found (para 49). The chamber applies Article 102 TFEU as construed in Huawei v ZTE and the Federal Court of Justice’s FRAND-Einwand judgment (KZR 36/17): the framework presupposes a user willing to take a licence (paras 145 to 149). Dominance is left open (para 150).

Question

May the maker of an end product refer the SEP holder to its suppliers and calculate the royalty on a component price while relying on the FRAND defence?

Decision

The notice of infringement was sufficient (paras 151 to 156). A clear and unequivocal declaration of willingness to conclude a FRAND licence is required, followed by targeted participation in negotiations; a conditional declaration is not enough (paras 158 and 161). The defendant named its suppliers as licensees (paras 162 to 164) and sought to base the royalty on their selling price (paras 165 to 167).

The counter-offer of 9 May 2019 is not FRAND, as its base deprives the patentee of the benefit of the technology in the vehicle (paras 168, 169 and 174 to 186), which the Avanci model, based on the last stage of the value chain, confirms as an indication (paras 187 to 196). Offers leaving the royalty to a third party or to section 315 BGB, coupled with reservations on the licensing level, are not enough (paras 197 to 199). The patentee chooses the level it enforces against, and no discrimination arises absent more favourable licences granted to suppliers (paras 202 to 206).

The intervening suppliers’ derived defence fails, since they do not accept a royalty based on the end product (paras 234 to 246); whether the commitment means “licence to all” or “access to all” is left open (para 253). The chamber declines to stay pending the nullity actions (para 256) and to refer to the CJEU as the Federal Cartel Office suggested, in particular given the remaining life of the patent (para 291). It grants an injunction, accounts and a declaration of liability in damages (operative part).

Key points for practice

• Systematically referring the patentee to suppliers, on principle and on price, in principle shows unwillingness to take a licence (paras 158 and 160).
• The royalty base reflects the benefit of the technology in the saleable end product, not the smallest technical unit (paras 171 and 172).
• A counter-offer below FRAND is evidence of unwillingness (para 168).
• Practical point: a car maker wishing to rely on the FRAND defence must negotiate itself and propose a rate based on value at end product level (paras 160 to 169).

Provisions applied

Treaty on the Functioning of the European Union

art. 102; Article 267

European Patent Convention

art. 64; art. 63

National law

sections 9, 10, 139 and 140b PatG; sections 242 and 315 BGB; sections 148 and 890 ZPO

Case law cited

CJEU, 16 July 2015, C-170/13 (Huawei v ZTE); BGH, 5 May 2020, KZR 36/17 (FRAND-Einwand); BGH, 6 May 2009, KZR 39/06 (Orange-Book-Standard); BGH, 13 July 2004, KZR 40/02 (Standard-Spundfass); CJEU, 19 April 2018, C-525/16 (MEO); OLG Karlsruhe, 30 October 2019, 6 U 183/16; OLG Düsseldorf, 30 March 2017, I-15 U 66/15; High Court (Patents Court), [2017] EWHC 711 (Pat) (Unwired Planet v Huawei)

Related decisions

• OLG Karlsruhe, 6 U 130/20, 12 February 2021, appeal decision staying provisional enforcement of the injunction.
• BGH, KZR 36/17, 5 May 2020, leading judgment on willingness to license, followed by the chamber.
• CJEU, Huawei v ZTE, 16 July 2015, framework of reciprocal obligations applied.
• LG Düsseldorf, 4c O 17/19, 26 November 2020, parallel proceedings whose supplier counterclaim does not justify a stay (para 292).

Prepared by Dhenne Avocats from the text of the decision (WIPO Lex, German text), consulted on 11 October 2026. Only the official text is authoritative.