3G and 4G SEP holder v Chinese smartphone maker (LG München I, 7 O 14276/20, 2021)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

Ruling on an objection, the Munich I Regional Court upholds an anti-anti-suit injunction granted without a hearing against four companies of a Chinese handset group, required to give up for Germany an anti-suit injunction obtained in Wuhan (operative part and para 22). The chamber announces that it will henceforth find a threat of first infringement in five situations, including an action to set a global royalty in a forum that grants anti-suit injunctions and the lack of a written undertaking within the time set by the patentee (para 90). An implementer that seeks or threatens an anti-suit injunction is as a rule not a willing licensee (para 94).

Facts and procedure

The applicants, incorporated in Delaware, belong to the “ID” group, which holds 2G to 5G patents (paras 1 and 2). The respondents belong to the “X” group, a Chinese smartphone maker; three are based in China and the parent in the Cayman Islands (para 3). On 9 June 2020 X asked the Wuhan Intermediate People’s Court to set a global royalty for ID’s 3G and 4G portfolio; ID sued for infringement before the Delhi High Court on 29 July 2020; on 23 September 2020 X obtained in Wuhan an anti-suit injunction of worldwide reach, upheld on reconsideration on 4 December 2020 (para 5). Seised on 30 October 2020, the Munich I Regional Court issued an ex parte interim injunction on 9 November 2020, to which the respondents objected (para 5).

The applicable law

The chamber holds that it has patent jurisdiction (section 143 PatG), the anti-suit injunction being a tort under section 823(1) BGB committed also in Germany (para 25). Following the Munich Higher Regional Court (12 December 2019), it holds that applying for an anti-suit injunction interferes with the patentee’s property-like position (sections 823(1) and 1004 BGB), self-defence under section 227 BGB also applying (paras 66 and 68).

Question

On what conditions may a SEP holder obtain interim relief in Germany against a foreign anti-suit injunction, whether already granted or merely feared?

Decision

The order is upheld. The enforcement deadline was met, and service by public notice was justified, since service on China under the Hague Convention offered no prospect of success within a reasonable time in the face of a penalty of about EUR 126,000 per day (paras 31 to 53). The applicants retain a legal interest despite the reconsideration in China, the Indian proceedings confined to India and the Wuhan action, which only seeks a royalty determination (paras 54 to 65). The parent is liable as a joint tortfeasor, having failed to meet its secondary burden of substantiation (para 71).

The one month urgency period only runs from certain knowledge of the anti-suit injunction or application, and the applicants could await the foreseeable outcome of the Chinese reconsideration (paras 80 to 115). The cases of threat of first infringement are a threat of or application for an anti-suit injunction, an action for a licence or a global royalty in a forum that grants such relief, prior practice towards other patentees and the lack of a written undertaking within the time set (para 90), group companies being treated alike (para 91). This relaxation of the Federal Court of Justice’s case law rests on the Huawei v ZTE framework, equality of arms, the right of access to court and Articles 9 to 11 of Directive 2004/48 (paras 93 to 98).

The anti-suit injunction is neither recognised nor enforceable in Germany, but the threat of sanctions in China in practice prevents enforcement of the patents (para 117); withdrawal of the Chinese application for Germany is owed by way of removal of the interference (para 123).

Key points for practice

• According to the chamber, filing an action to set a global royalty in a forum that grants anti-suit injunctions establishes a threat of first infringement (para 90).
• The patentee may demand, as early as the notice, a written undertaking not to seek an anti-suit injunction; silence establishes the threat (paras 90 and 94).
• Seeking or threatening an anti-suit injunction is as a rule incompatible with being a willing licensee (paras 94 and 118).
• Practical point: a SEP holder may prepare preventive applications from the first contacts (para 89); an implementer wishing to avoid such an order should refrain from any anti-suit step and answer in writing within the time set (paras 90 and 94).

Provisions applied

European Union

Directive 2004/48/EC, Articles 9 to 11; Article 47 of the Charter of Fundamental Rights

National law

section 143 PatG; sections 227, 823(1) and 1004 BGB; sections 32, 185, 188, 328, 929, 936 and 937 ZPO

Other instruments

Hague Convention of 15 November 1965 on the Service Abroad of Judicial Documents, Articles 4, 9 and 13; Article 6 ECHR

Case law cited

OLG München, 12 December 2019, GRUR 2020, 379; CJEU, Huawei v ZTE, GRUR 2015, 764; BGH, GRUR 2020, 961 (FRAND-Einwand); BGH, 24 November 2020, KZR 35/17 (FRAND-Einwand II); BGH, GRUR 2009, 694 (Orange Book); BGH, I ZR 133/17 (Neuausgabe); BGH, GRUR 2017, 428 (Vakuumtransportsystem); LG München I, BeckRS 2019, 25536

Related decisions

• OLG München, 6 U 5042/19, 12 December 2019, appeal judgment on which the chamber bases the unlawfulness of the anti-suit injunction (paras 25, 55 and 68).
• CJEU, Huawei v ZTE, 16 July 2015, negotiation framework relied on to support the threat of first infringement (paras 94 and 95).
• BGH, KZR 36/17, 5 May 2020, FRAND-Einwand judgment cited on willingness to license (para 94).
• BGH, KZR 35/17, 24 November 2020, FRAND-Einwand II judgment cited on the same point (para 94).

Prepared by Dhenne Avocats from the text of the decision (gesetze-bayern.de), consulted on 11 October 2026. Only the official text is authoritative.