ZTE v Vringo (Rechtbank Den Haag, KG ZA 14-870, 2014)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The interim relief judge of The Hague District Court refused to lift the seizure of ZTE goods levied by Vringo on a patent declared essential to the UMTS standard. It was not plausible that Vringo had breached its FRAND undertaking, since ZTE had made neither an offer nor a counter-offer before the seizure, nor were invalidity or non-infringement made out. Under Dutch law, a conservatory measure on an essential patent remains available against an implementer that does not show it is willing to take a licence.

Facts and procedure

EP 1 186 119, filed by Nokia and upheld in amended form by an EPO Board of Appeal, had been declared essential to UMTS with a FRAND undertaking; Vringo acquired it from Nokia in August 2012 with some 500 other patents (points 2.1 to 2.11). Vringo sent ZTE a portfolio licence proposal on 28 March 2013, to which ZTE replied with questions but no counter-offer (points 2.14 to 2.16); ZTE made a counter-offer only on 19 August 2014 (point 2.26). The Mannheim Regional Court had granted an injunction against a ZTE base station in Germany (point 2.19). In 2014, components for that station were detained by customs in Rotterdam and then seized by Vringo, which brought a main action for surrender and destruction (points 2.20 to 2.23). ZTE sought lifting of the seizure and a bar on further measures (point 3.1).

The applicable law

A seizure is lifted where it appears summarily that the right relied on is unfounded (Art. 705(2) Rv, point 4.5). ZTE relied on EU competition law and on the European Commission’s Motorola and Samsung decisions of 29 April 2014 (point 3.2.2). The judge, having jurisdiction under Regulation 44/2001, ruled on the Dutch and German parts of the patent (points 4.1 to 4.3).

Question

Does the FRAND undertaking of an essential patent holder bar a conservatory seizure where the implementer made no offer before the measure?

Decision

ZTE’s claims were dismissed (point 5.1). A FRAND obligation does not, absent special circumstances, prevent the holder from enforcing its patent, nor does it amount to a licence (point 4.6). The Commission’s Motorola decision did not lead elsewhere: it allows enforcement against an unwilling licensee and concerned an offer combining an immediate licence, a running royalty and the right to have the rate set by a court (points 4.7 and 4.8). It was doubtful whether ZTE’s counter-offer of 19 August 2014 made it a willing licensee (point 4.9). As ZTE never explained why the 2013 offer was not FRAND, Vringo’s measures responded to the absence of any offer, and ZTE, which disputed the patent, could not complain of its enforcement (point 4.10). The novelty and inventive step attacks were too uncertain (points 4.11 to 4.25), indirect infringement was not contested (point 4.30) and the balance of interests did not favour lifting the seizure, obtaining a royalty being a legitimate interest (point 4.35). Lifting against security was also refused, as ZTE was not genuinely seeking a licence (point 4.38).

Key points for practice

• The interim judge assesses the FRAND defence by reference to the implementer’s conduct before the measure: failing to make an offer or to give reasons why the patentee’s offer is not FRAND counts against it (point 4.10).
• An essential patent holder that sells no competing products may legitimately use seizure to obtain a royalty (point 4.35).
• Practical point: an implementer intending to rely on the FRAND undertaking should answer the patentee’s offer with reasoned objections and a counter-offer before any measure, rather than merely challenging validity.

Provisions applied

European Union law

Regulation (EC) No 44/2001, Arts 4, 22(4) and 31; Regulation (EU) No 608/2013, Art. 24; EU competition law relied on by ZTE

National law

Arts 9, 705(2) and 1019h Rv; Art. 80(2) Rijksoctrooiwet 1995

Case law cited

Rechtbank Den Haag, 17 March 2010, Philips v SK Kassetten; European Commission, 29 April 2014, Motorola (AT.39985) and Samsung (AT.39939); BGH, Orange-Book-Standard

Related decisions

• Motorola, European Commission, 29 April 2014, relied on by ZTE and distinguished by the judge.
• Samsung, European Commission, 29 April 2014, relied on by ZTE.
• Orange-Book-Standard, BGH, 6 May 2009, conditions for the implementer’s offer referred to by the judge.

Prepared by Dhenne Avocats from the text of the decision (rechtspraak.nl open data service), consulted on 11 October 2026. Only the official text is authoritative.