FRAND-Einwand (BGH, KZR 36/17, 2020)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

In FRAND-Einwand, the Federal Court of Justice (BGH) rejects the abuse of dominance defence raised by two companies of a device manufacturing group against the holder of a patent essential to the GPRS standard. It restores the Düsseldorf Regional Court judgment. The judgment sets out the German reading of Huawei v ZTE: the infringer must declare clearly and unconditionally that it is willing to take a licence on FRAND terms, whatever those terms turn out to be, and must then take an active part in the negotiations. The proprietor’s duties to make an offer and explain it arise only after such a declaration.

Facts and procedure

The claimant owns the German part of European patent 852 885, filed on 25 September 1996 claiming a Finnish priority and expired during the appeal; claim 12 was partly invalidated (Rn. 1 and 2). The defendants, companies of the same group, distributed GPRS-enabled phones and tablets in Germany, GPRS being an extension of the GSM standard managed by ETSI (Rn. 3). The claimant gave a FRAND undertaking to ETSI on 10 April 2013 (Rn. 4). The Düsseldorf Regional Court granted all claims. On appeal, the injunction claim was declared moot after expiry; the Düsseldorf Higher Regional Court upheld the FRAND defence against destruction and recall and capped damages at a FRAND royalty (Rn. 5, 6 and 48 to 51).

The applicable law

The BGH applies Article 102 TFEU and sections 18 and 19 of the Act against Restraints of Competition (GWB) in light of Huawei v ZTE. The holder of a non-substitutable essential patent is dominant on a separate licensing market (Rn. 57 to 60). Dominance lasts only as long as the proprietor can keep products off the market, and in principle ends when the patent expires (Rn. 65). An action for an injunction, recall or destruction is abusive where the infringer has made an unconditional offer that the proprietor may not refuse (Rn. 71), or where the proprietor has not made the required efforts towards an infringer who is in principle willing to take a licence (Rn. 72).

Question

When may the infringer of an essential patent be treated as willing to take a licence, so that a proprietor who sues without having made a FRAND offer abuses its dominant position?

Decision

The prior notice of infringement (Rn. 73 and 74) must identify the patent, the infringing act and the products concerned, without detailed technical explanation; claim charts are sufficient but not mandatory (Rn. 85). The letters sent to the parent companies from 20 December 2012 met them (Rn. 87 to 89). The proprietor may then have to explain its royalty demand, particularly for a portfolio licence, which is in principle lawful (Rn. 76 to 78). Those duties, however, presuppose that the infringer declares clearly and unambiguously that it is willing to conclude a licence on FRAND terms and then takes an active part in the negotiations; being prepared to consider a licence is not enough (Rn. 83).

Here, the declaration of 12 December 2013, more than a year after the first notice, came too late, since several months of silence usually show a lack of interest (Rn. 92). The email of 17 December 2013, which merely hoped for negotiations, was not a declaration of willingness (Rn. 95). The letter of 16 January 2016, making a licence conditional on a final ruling on infringement and validity, was conditional and therefore insufficient (Rn. 96), and the letter of 23 March 2016 maintained that position (Rn. 97). Insisting after three years on claim charts for all 450 portfolio patents was an indication of delaying tactics (Rn. 98). The counteroffer of 20 January 2017, made after expiry, is irrelevant (Rn. 100). Nor was the discrimination found by the appeal court established (Rn. 101 and 102). The Regional Court judgment is restored (Rn. 103): destruction and recall are limited to products held or supplied before expiry (Rn. 105). The damages claim is not abusive; the infringer may only set up its own claim, which arises only if it requested a FRAND licence and the proprietor failed to respond in line with its obligations (Rn. 111 and 112).

Key points for practice

• Willingness to take a licence must be clear, unconditional, prompt and sustained (Rn. 83 and 92).
• The proprietor’s duty to justify how its royalty is calculated arises only after a serious declaration by the infringer (Rn. 99).
• The FRAND defence does not cap damages, save for the infringer’s own claim where it requested a licence (Rn. 111).
• Practical point: from the first notice, the infringer should document an unconditional willingness to take a FRAND licence; challenges to the patent may be reserved without making it conditional.

Provisions applied

Treaty on the Functioning of the European Union

art. 102

National law

Sections 18 and 19 GWB; sections 139 and 140a PatG; sections 91a and 97 ZPO

Other provisions

Regulation (EC) No 1/2003, Art. 2

Case law cited

CJEU, Huawei/ZTE (C-170/13); United Brands (27/76); Tomra (C-549/10 P); Magill (C-241/91); Oscar Bronner (C-7/97); IMS Health (C-418/01); MEO (C-525/16); Michelin (322/81); Lelos (C-486/06); BGH, Orange-Book-Standard (KZR 39/06), Standard-Spundfass (KZR 40/02), National Geographic II (KVR 12/06), VBL-Gegenwert II (KZR 47/14), NetCologne (KZR 30/14), Entega II (KZR 5/10), Temperaturwächter (X ZR 150/98), Werkzeuggriff (X ZR 76/18), X ZR 44/18; OLG Karlsruhe, GRUR 2020, 166; Unwired Planet v Huawei [2017] EWHC 711 (Pat) and [2018] EWCA Civ 2344; European Commission, Motorola, C(2014) 2892

Related decisions

• OLG Düsseldorf, 30 March 2017, appeal judgment reversed (Rn. 47 to 51).
• Huawei v ZTE, 16 July 2015, framework applied and interpreted by the BGH.
• Orange-Book-Standard, 6 May 2009, cited on unconditional offers and conditional willingness (Rn. 71 and 96).
• Unwired Planet v Huawei, 5 April 2017, cited for the definition of a willing licensee (Rn. 83).

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