LTE SEP holder v car manufacturer (LG Düsseldorf, 4c O 17/19, 2020)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Düsseldorf Regional Court stays the proceedings and asks the CJEU whether a SEP holder must grant priority to an unrestricted licence for suppliers that request one before seeking an injunction against the end product maker, and how the Huawei v ZTE steps should be refined (operative part). The chamber sets out its reading: the FRAND commitment binds the patentee towards any seeker, suppliers included, and refusing a supplier a licence would be an abuse on which both the supplier and the end product maker may rely (paras 19 and 29). It openly departs from the Mannheim and Munich courts on willingness to take a licence (para 39).

Facts and procedure

The claimant seeks an injunction, accounts and damages under a European patent found essential to LTE (paras 1 and 2); its parent gave a FRAND undertaking to ETSI on 17 September 2014 (para 3). The defendant makes vehicles fitted with telematics control units (TCUs), required in particular for the mandatory emergency call function (eCall), produced through a chain of tier 1 to tier 3 suppliers (paras 4 and 5). Notified in March 2016, it received offers in 2016 and 2019; the action was filed in March 2019 and counter-offers followed in 2019 and 2020 (para 6). Suppliers were offered “Tier1” and then CVVCL models without an unrestricted licence of their own; such a licence was offered to some tier 1 suppliers only after the hearing of 3 September 2020, and a tier 2 supplier received no offer (paras 6 and 7).

The applicable law

Infringement is established and no stay is warranted pending the nullity actions (paras 12 to 14). The only possible obstacle is the defence under section 242 BGB read with Article 102 TFEU, dominance being undisputed (para 15).

Question

Must a SEP holder license willing suppliers as a priority, and may lack of willingness be inferred from the infringer’s prolonged silence or from the content of its counter-offer?

Decision

The chamber stays the action and asks, in part A, three questions on suppliers’ priority for a licence, on the scope of the licence owed and, failing that, on the criteria for the patentee’s choice of the level of the chain it sues; in part B, two questions on curing omitted steps during proceedings and on the requirements of a licensing request (operative part).

In its view, the licence must give the seeker a share in the standardised technology allowing free competition on all its markets (paras 19 and 20); exhaustion can be arranged contractually (paras 21 to 23); automotive practice points the same way (para 24) and no efficiency ground justifies preferring car makers (paras 25 and 26). The patentee may approach car makers first without ignoring suppliers’ requests (para 27), the royalty still being calculated on the value realised at the last stage of the chain (para 28).

Cure during proceedings is possible in principle (para 33). The licensing request may be general and informal; general willingness to become a licensee, the only relevant factor at that stage, differs from concrete willingness to accept terms found to be FRAND (paras 34 and 38). The chamber therefore refuses to measure willingness against the counter-offer (para 39) and justifies the referral by the range of possible interpretations and the practical importance of the questions (paras 40 and 41).

Key points for practice

• The decision settles nothing on the merits but advocates a reading of the FRAND commitment entitling any seeker, suppliers included, to a licence (paras 19 and 29).
• Even on that reading, the royalty owed by a supplier reflects the value realised with the end product (para 28).
• General willingness is assessed at the request stage, concrete willingness in response to a FRAND offer (paras 37 and 38).
• Practical point: since German courts diverged on willingness to license (para 39), parties should document suppliers’ licence requests and the offers made to them (paras 6 and 7).

Provisions applied

Treaty on the Functioning of the European Union

art. 102; Article 267

European Patent Convention

art. 64

National law

section 139(1) PatG; section 242 BGB; section 148 ZPO

Case law cited

CJEU, 16 July 2015, C-170/13 (Huawei v ZTE); LG München I, 10 September 2020, 7 O 8818/19; LG Mannheim, 18 August 2020, 2 O 34/19

Related decisions

• CJEU, Huawei v ZTE, 16 July 2015, judgment whose steps are the subject of the part B questions.
• LG Mannheim, 2 O 34/19, 18 August 2020, judgment whose approach the chamber expressly rejects (para 39).

Prepared by Dhenne Avocats from the text of the decision (NRWE, justiz.nrw.de), consulted on 11 October 2026. Only the official text is authoritative.