FRAND-Einwand II (BGH, KZR 35/17, 2020)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Antitrust Senate of the Federal Court of Justice (BGH) set aside the judgment of the Düsseldorf Higher Regional Court, which had dismissed for the time being the claims for an injunction, recall and destruction against two Haier group companies, and restored the first-instance judgment (paras 9 and 138). The competition-law compulsory licence defence failed for want of a clear and continuing willingness to take a FRAND licence (paras 85 to 126).

Building on FRAND-Einwand I, the judgment holds that such willingness remains necessary even after the SEP holder’s offer, that a discriminatory offer does not amount to abuse against an unwilling implementer, and that damages are not capped at a royalty (paras 69 to 76, 106, 107 and 136).

Facts and procedure

The claimant, registered since 1 October 2012, owns the German part of EP 1 264 504, filed by Nokia Oy and concerning the re-establishment of a radio connection with several bearers; the nullity action against it failed (paras 1 to 3). On 20 December 2012 it informed the Haier group of its FRAND licence offer for a portfolio of about 235 patents, and on 10 April 2013 it gave ETSI a FRAND undertaking (paras 4, 5 and 99). The Düsseldorf Regional Court granted all claims; the Higher Regional Court upheld the FRAND defence on the ground that the claimant’s offers discriminated against Haier compared with a Chinese licensee (paras 6, 7 and 45 to 47).

The applicable law

The claimant is dominant on the licensing market, since use of the patent is in practice unavoidable to implement the UMTS standard (paras 49 and 50). Abuse under Article 102 TFEU does not arise from the terms offered at the start of negotiations, but from refusing a willing licensee a FRAND licence at the end of the negotiating process (paras 53 and 54). The Huawei v ZTE framework defines negatively when there is no abuse and leaves room for an assessment of all the circumstances (paras 64 and 65).

Question

Does the owner of a standard essential patent abuse its dominant position by pursuing an injunction against an implementer that has not clearly shown willingness to take a licence, where its own offers are said to be discriminatory?

Decision

The implementer must clearly and unequivocally declare its willingness to conclude a FRAND licence and then take part in the negotiations in a targeted way; a party that has delayed must make additional efforts (paras 57 to 62). Willingness is not a mere gateway: it remains necessary after the SEP holder’s offer, which is the starting point rather than the end point of negotiations, there being as a rule no single FRAND licence (paras 68 to 76). Abuse is assessed at each stage: willingness expressed late does not necessarily make continued pursuit of an existing action abusive (paras 79 to 83).

Haier was never a willing licensee: a reply almost a year after notification, expressing only the hope of negotiating (paras 87 to 90); willingness made conditional in January 2016 on final confirmation of infringement and validity by the German courts (paras 94 and 95); a demand for claim charts for the whole portfolio, whereas the holder need only explain the standardised functions concerned (paras 96 to 99); offers limited to the families of the patents in suit (para 102). The counter-offer made four weeks before the close of the appeal hearing, limited to the two distributors and treating four families as essential, was a mere defensive manoeuvre (paras 104 to 126). Absent willingness, any discrimination in the offers is irrelevant (paras 106 and 107).

A patent ambush defence against the previous owner cannot be raised against a singular successor outside the protection of section 15(3) PatG, and in any event requires indications that the standard would have been drafted differently (paras 130 to 133). Damages are not limited to a royalty (paras 134 to 136). No reference to the CJEU was needed (para 137).

Key points for practice

• Willingness made conditional on the outcome of infringement and nullity proceedings is insufficient (para 95).
• A portfolio holder need not produce claim charts for every patent; a patent list and an explanation of the standardised functions suffice (paras 97 to 99).
• A last-minute counter-offer, limited to the defendants and to a few families, does not restore good faith (paras 116 to 126).
• Practical point: a notified implementer must respond promptly, declare unconditional willingness and engage with the offer on the merits; otherwise neither alleged discrimination nor a late counter-offer will protect it (paras 87, 107 and 126).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102, second paragraph, (b) and (c)

National law

Sections 9, 15(3) and 139(2) PatG; sections 203, 404 and 413 BGB; sections 562 and 564 ZPO; section 19(4) no. 4 GWB (former version)

Case law cited

BGH, FRAND-Einwand I, KZR 36/17; BGH, X ZR 35/18; BGH, Orange-Book-Standard, KZR 39/06; BGH, Fährhafen Puttgarden I and II; BGH, Standard-Spundfass; BGH, Tintenpatrone I; CJEU, Huawei v ZTE, C-170/13; CJEU, IMS Health, C-418/01; CJEU, Katsivardas, C-160/09; European Commission, Motorola, C(2014) 2892; Unwired Planet v Huawei [2017] EWHC 711 (Pat), [2018] EWCA Civ 2344 and [2020] UKSC 37; Hague Court of Appeal, GRUR Int. 2020, 174; Karlsruhe Higher Regional Court, GRUR 2020, 166; Düsseldorf Regional Court, 4c O 17/19

Related decisions

• FRAND-Einwand I, Federal Court of Justice (BGH), 5 May 2020, judgment between the same parties whose reasoning this judgment adopts and extends (paras 53 and 88).
• Huawei v ZTE, Court of Justice of the European Union, 16 July 2015, against which the court tested its requirements (paras 63 to 68 and 77).
• Orange-Book-Standard, Federal Court of Justice (BGH), 6 May 2009, relied on as to conditional willingness (para 95).
• Unwired Planet v Huawei, UK Supreme Court, 26 August 2020, cited on case-by-case assessment and portfolio licensing (paras 65, 118 and 137).

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.