InterDigital v prospective licensees (LG München I, 21 O 12112/25, 2025)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Munich I Regional Court upholds, on opposition, an interim order prohibiting prospective licensees from applying to the English High Court for an interim licence covering patents in force in Germany. The court holds that such a licence would deprive the holders of the ability to enforce their German patents, contrary to territoriality and to the balance struck by Huawei v ZTE and the Federal Court of Justice. The decision introduces an anti-interim-licence injunction and states that an implementer seeking such a licence would not be regarded as sufficiently willing.

Facts and procedure

The applicants, whom the text identifies as InterDigital in its role as licensor, hold a video portfolio subject to a RAND undertaking to ITU-T, governed according to the respondents by Swiss law (Rn. 13 and 84). On 29 August 2025 the respondents’ group brought proceedings in the High Court to revoke four patents and for a declaration of entitlement to a RAND licence, with a claim for specific performance; the same day it sued in São Paulo and sought an anti-suit injunction for Brazil (Rn. 2 and 3).

On 26 September 2025 the court granted an order without a hearing, clarified on 1 October 2025, prohibiting any application for an interim licence over patents granted and validated for Germany (Rn. 7 and 8). The respondents obtained expedition in the United Kingdom and, on 20 October 2025, an anti-anti-suit injunction against that order (Rn. 4), and then lodged an opposition (Rn. 9).

The applicable law

The application rests on the negatory claim under sections 1004 and 823(1) of the Civil Code, patents being absolute rights protected by Article 14 of the Basic Law (Rn. 27 and 28). The court recalls that orders restraining proceedings before foreign courts are in principle inadmissible under German law and within the Brussels I bis framework, while counter-measures against anti-suit injunctions outside the EU are accepted (Rn. 18 and 19).

Question

May a German court prohibit a prospective licensee from seeking an interim licence over German patents from the English High Court without issuing a prohibited anti-suit injunction?

Decision

Yes. The order is not an anti-suit injunction: it does not prevent the English proceedings and targets only the setting of an interim licence over German patents (Rn. 17 and 24 to 25). The application for an interim licence enjoys no procedural privilege, since the licence would confer a right of use that could be pleaded against infringement actions in Germany (Rn. 20 to 23). That right of use is an interference in its own right, not offset by a royalty fixed by a third party without the holder’s consent (Rn. 30 to 36). The interference is attributable to the respondents whether the High Court substitutes its own declaration for the holder’s, compels the holder or merely declares its obligation (Rn. 39 to 49).

The interference is unlawful: it disregards territoriality, a FRAND defence concerning German patents being a matter for German law and courts (Rn. 53 to 57); it would extend to non-essential patents (Rn. 58 and 59); and it would upset the system of good faith negotiation derived from Huawei v ZTE, which allows determination by a third party only by mutual agreement, whereas the applicants had offered arbitration (Rn. 60 to 69). A threat of first infringement is established, since the respondents assert their right to apply (Rn. 74 to 82). Urgency is made out (Rn. 87 to 89).

Key points for practice

• An anti-interim-licence injunction differs from an anti-suit injunction: the foreign proceedings continue and only the effect of the licence on German patents is targeted (Rn. 24 and 25).
• Security required during negotiations is not equivalent to an interim licence, as it confers no right of use (Rn. 66).
• The court considers that an implementer seeking an interim licence or a comparable remedy abroad would not be sufficiently willing to take a licence (Rn. 83 to 85).
• Practical point: a holder that offers arbitration on a mutually agreed basis strengthens its position against unilateral rate-setting proceedings (Rn. 69).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

EU law

Regulation (EU) No 1215/2012 (Brussels I bis)

National law

Sections 242, 823(1) and 1004(1) BGB; Art. 2(1) and Art. 14 GG; section 20 GWB; section 143 PatG; sections 32, 91, 97, 924 and 937 ZPO

Other provisions

Senior Courts Act 1981, section 39 (English law, as relied on before the court)

Case law cited

CJEU, Huawei v ZTE (GRUR 2015, 764); ECJ, Turner v Grovit (EuZW 2004, 468); BGH, NJW 2020, 399; BGH, FRAND-Einwand I (GRUR 2020, 961); BGH, FRAND-Einwand II (GRUR 2021, 585); BGH, Stiftparfüm (GRUR 2011, 1038); OLG München, Anti-Suit Injunction (GRUR 2020, 379); OLG Düsseldorf, Ausländisches Prozessführungsverbot (GRUR 2022, 318); LG München I, Smartphone (GRUR-RS 2021, 17662); Court of Appeal, Lenovo v Ericsson (referred to via the parties’ submissions)

Related decisions

• OLG München, 6 U 5042/19, 12 December 2019, cited (GRUR 2020, 379) on counter-measures against anti-suit injunctions.
• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, cited on determination by a third party by mutual agreement.
• Sisvel v Haier (BGH, KZR 36/17), 5 May 2020, FRAND-Einwand I, cited on the negotiated solution.
• Sisvel v Haier II (BGH, KZR 35/17), 24 November 2020, FRAND-Einwand II, cited on the negotiated solution.

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