FRAND-Einwand III (BGH, KZR 10/25, 2026)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

In FRAND-Einwand III, the Federal Court of Justice (BGH) dismissed the appeal on points of law (Revision) of a device maker held liable to an injunction for infringing a patent essential to the EVS standard. It confirmed that Huawei v ZTE does not lay down a rigid sequence of steps: the implementer must respond promptly to a substantially complete offer and explain its objections, without the court first having to establish that the offer is FRAND (Rn. 38, 53 and 61). It declined to refer the matter to the Court of Justice, despite the contrary view of the European Commission (Rn. 62 to 76). Inadequate security, delayed responses and shifting positions by the implementer were enough to defeat both the competition law defence and the proportionality objection (Rn. 77 to 106).

Facts and procedure

The claimant owns the German part of European patent 2 102 619, on audio signal coding, declared essential to the EVS standard at ETSI with a FRAND undertaking (Rn. 1). The defendant sold EVS-capable mobile devices in Germany; it says its devices no longer implement the standard since February 2022 (Rn. 2). The action, filed on 11 October 2019 for information, accounts and damages, was extended on 19 February 2021 to an injunction, recall and destruction (Rn. 3). The Regional Court largely granted the claims; the Federal Patent Court partially revoked the patent on 16 September 2022; the Munich Higher Regional Court dismissed the appeal on 20 March 2025 (Rn. 4 and 6).

The applicable law

Whether conduct is abusive turns on an overall, case-specific balancing of interests (Rn. 17). Under Huawei v ZTE and FRAND-Einwand I and II, claims for an injunction, recall or destruction may be abusive where the patentee refuses a FRAND licence to an implementer willing to take one (Rn. 18 to 22). The implementer’s willingness must be clear and continuing, and the requirements on each side are interdependent (Rn. 24 to 29). Excluding an injunction on grounds of disproportionality (§ 139(1), third sentence, PatG) remains exceptional (Rn. 98 to 100).

Question

Must the court establish that the patentee’s offer is FRAND before inferring a lack of willingness from the implementer’s conduct, and is a reference to the Court of Justice required on that point?

Decision

Prior notice is required only for claims to an injunction, recall and destruction; the initial action for information and accounts served that purpose (Rn. 31, 32 and 37). The Court rejected a strict order of steps (Rn. 38). An implementer receiving a substantially complete and explained offer must examine it, state its objections and, where appropriate, make a counter-offer (Rn. 48 and 49), since a complex licence cannot be reviewed in the abstract and the opposite view, supported by the Commission, would delay a decision indefinitely (Rn. 50 to 55). Dutch courts, the Mannheim and Munich Local Divisions of the UPC and the English courts take the same view (Rn. 66 to 73). Here, the defendant replied almost five months and then more than three months late, took about eight months to respond to the draft confidentiality agreement and changed position on the form of royalty (Rn. 78 to 83). Its security of €10,000, barely more than 1% of its own lump-sum offer, was raised to $1 million only after the close of the appeal hearing (Rn. 93 and 94). The delaying tactics and the workaround available since 2022 ruled out disproportionality (Rn. 103 to 106), and damages are not limited to a licence analogy (Rn. 110 to 112).

Key points for practice

• Willingness is assessed on the whole course of dealings, and failure to respond promptly to a complete offer is enough to negate it without first reviewing whether the offer is FRAND (Rn. 58 to 61).
• Security must be provided soon after a counter-offer is rejected and must be consistent with the implementer’s own offers (Rn. 90 and 94).
• Responsiveness on the confidentiality agreement is an indicator of willingness (Rn. 81).
• Practical point: an implementer intending to raise the FRAND defence in Germany must answer each offer quickly, give reasons for its objections and adjust its security with each counter-offer (Rn. 53, 78 to 83 and 94).

Relevance before the UPC

The Court expressly relied on decisions of the Mannheim (Panasonic v Oppo) and Munich (Huawei v Netgear) Local Divisions of the UPC, noting their consistency with its own reading of Huawei v ZTE (Rn. 69 to 72).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102; Art. 267(3)

Directive 2004/48/EC

Art. 3(2)

National law

§ 139(1) and (2), § 140a(1) and (3), § 140b(1) and (3) PatG; §§ 242 and 259 BGB

Case law cited

CJEU, Huawei/ZTE, C-170/13; CJEU, Post Danmark, C-23/14; CJEU, C-525/16; CJEU, Consorzio Italian Management, C-561/19; CJEU, UPC Telekabel Wien, C-314/12; CJEU, 187/80; BGH, FRAND-Einwand I, KZR 36/17; BGH, FRAND-Einwand II, KZR 35/17; BGH, Fährhafen Puttgarden I, KVR 15/01; BGH, Facebook, KVR 69/19; BGH, KRB 101/23; OLG München, Sprachsignalcodierer, GRUR 2025, 738; OLG Düsseldorf, Signalsynthese II, GRUR 2022, 1136; LG Düsseldorf, 4a O 73/14; Gerechtshof Den Haag, 2019, ECLI:NL:GHDHA:2019:3537; Hoge Raad, 25 February 2022, ECLI:NL:HR:2022:296; UPC, Mannheim Local Division, UPC CFI 210/2023, Panasonic/Oppo, 22 November 2024; UPC, Munich Local Division, UPC CFI 9/2023, Huawei/Netgear, 18 December 2024; Unwired Planet v Huawei [2017] EWHC 711 (Pat), [2018] EWCA Civ 2344 and [2020] UKSC 37

Related decisions

• Sprachsignalcodierer, Munich Higher Regional Court, 20 March 2025, the appeal judgment upheld by the Court.
• Huawei v ZTE, CJEU, 16 July 2015, the framework interpreted by the Court.
• FRAND-Einwand II, Federal Court of Justice (BGH), 24 November 2020, case law confirmed on willingness to license.
• Panasonic v Oppo, UPC, Mannheim Local Division, 22 November 2024, cited as consistent.

Prepared by Dhenne Avocats from the text of the decision (Open Legal Data, reproduction of the judgment), consulted on 11 October 2026. Only the official text is authoritative.