Steuerkanalsignalisierung II (OLG Karlsruhe, 6 U 149/20, 2022)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Karlsruhe Higher Regional Court reverses the Mannheim Regional Court and enjoins two companies of a mobile device group from marketing LTE devices in Germany, with recall and destruction. The FRAND defence fails because the defendants pursued delaying tactics: for more than two years they held back their objections to the very structure of the royalty calculation. For practitioners the judgment sets a clear requirement: an implementer must raise every apparent objection to the first offer, and a fresh offer does not reset the clock.

Facts and procedure

The claimant has been registered since 3 July 2014 as proprietor of a European patent on control channel signalling which the LTE standard requires (Rn. 2 and 11). The Federal Patent Court upheld it in limited form and the Federal Court of Justice dismissed the nullity actions on 18 January 2022 (Rn. 5 to 7). The defendants, whose names are redacted, distribute LTE devices in Germany (Rn. 10).

A letter of 15 December 2014 concerned other patents; the first offer covering the patent in suit, with a claim chart against the standard, was sent on 1 February 2016 (Rn. 14 to 16 and 184). The defendants focused their criticism on one clause of the offer (clause 5.6.2) (Rn. 23 to 26). In earlier proceedings (2 O 48/16) the Mannheim court had described that clause as one-sided and the claimant had withdrawn its injunction claim, which it reasserts in the present action (Rn. 27). By judgment of 21 August 2020 (2 O 136/18) that court upheld the FRAND defence, finding that the offer did not sufficiently reflect the low price level of the defendants’ devices (Rn. 210). The claimant appealed.

The applicable law

The Senate applies Article 102 TFEU as construed by the Court of Justice in Huawei v ZTE and by the Federal Court of Justice in FRAND-Einwand I and II (Rn. 183 to 194). Dominance follows from the impossibility of designing around the standardised technology (Rn. 183). Infringement is governed by Article 64 EPC and sections 9, 14, 139 and 140a of the Patent Act (Rn. 126 and 246 to 247).

Question

Can an implementer that declares itself willing to take a FRAND licence, but challenges the basic parameters of the royalty calculation only two years after the first offer, still rely on the FRAND defence?

Decision

No. Willingness is not a static attitude and requires targeted participation in the negotiations (Rn. 187 to 191). The implementer must respond even to an offer it considers non-FRAND and must promptly raise every objection apparent to it, including where one clause seems plainly unacceptable (Rn. 192 to 194 and 204). Here the 2016 offer already disclosed a uniform per-unit royalty for all licensees, based on a manufacturer-independent average selling price; the defendants first challenged this in May and June 2018 (Rn. 197 to 199). The third offer was no break (« Zäsur ») wiping out the history, since the contested parameters were unchanged (Rn. 201). Later counter-offers showed no movement (Rn. 206 to 213).

In the alternative, the Senate holds the offer of 4 March 2020 to be FRAND: top-down approach, per-unit royalty, industry-wide average price, a uniform worldwide rate and justified volume discounts (Rn. 214 to 239). The counter-offer of 11 March 2020 was plainly not FRAND because it required the proprietor to abandon a licensing model already accepted by other licensees (Rn. 243 to 245). An appeal on points of law is allowed (Rn. 249).

Key points for practice

• The notice of infringement must identify the patent asserted: a notice concerning other patents does not trigger the Huawei v ZTE sequence (Rn. 184).
• An implementer may not retreat behind criticism of a single clause and stay silent on other apparent objections, which must be « on the table » from the outset (Rn. 193 and 204).
• A uniform per-unit royalty based on an industry-wide average price rather than the licensee’s own prices is not in itself contrary to FRAND (Rn. 218 to 222).
• Practical point: record every objection to the calculation method in response to the first offer; objections raised late will be read as evidence of delaying tactics (Rn. 199 to 201).

Relevance before the UPC

The reasoning rests on Huawei v ZTE, which binds the UPC as well; the court’s assessment of the implementer’s conduct can therefore be carried over to FRAND defences raised there.

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

European Patent Convention

Art. 64

National law

Sections 9, 14, 139(1) and 140a(1) and (3) PatG; section 19(2) no. 3 GWB; section 543(2) ZPO

Case law cited

CJEU, 16 July 2015, Huawei v ZTE, C-170/13; BGH, 5 May 2020, KZR 36/17 (FRAND-Einwand I); BGH, 24 November 2020, KZR 35/17 (FRAND-Einwand II); OLG Karlsruhe, 30 October 2019, 6 U 183/16 (Datenpaketverarbeitung); OLG Karlsruhe, 9 December 2020, 6 U 103/19 (Mobilstation); OLG Karlsruhe, 25 November 2020, 6 U 104/18; High Court, [2017] EWHC 711 (Pat)

Related decisions

• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, framework of reciprocal obligations applied by the Senate.
• Sisvel v Haier (BGH, KZR 36/17), 5 May 2020, FRAND-Einwand I on willingness, followed by the Senate.
• Sisvel v Haier II (BGH, KZR 35/17), 24 November 2020, FRAND-Einwand II on delaying tactics, extensively relied on.
• Mobilstation (OLG Karlsruhe, 6 U 103/19), 9 December 2020, earlier case law of the Senate, developed further.

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.