Standardessentielle Mobilfunknetz-Patente (OLG Karlsruhe, 6 U 204/22 Kart, 2023)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Antitrust Senate of the Karlsruhe Higher Regional Court dismisses a claim by a mobile network operator for repayment of royalties paid since 2013 to a patent monetisation company and for damages. The operator argued that it was discriminated against as the only European operator paying for the portfolio. The Senate holds that the licence itself is not discriminatory, that the clause excluding any duty to pursue third parties is valid and operates as an advance waiver of damages claims, and that a SEP holder does not answer for the outcome of its licensing efforts towards competitors.

Facts and procedure

The defendant, a monetisation company holding more than 1,000 mobile patents, had since 2008 brought several infringement actions against the claimant, a network operator that considered it did not use the defendant’s SEPs (Rn. 1 to 5). A worldwide licence for operating networks was concluded on 7 June 2013, payable in thirteen annual instalments and backed by a forfaiting arrangement (Rn. 15 to 26). Its clause 8.2 provides that the licensor is not obliged to pursue infringements by third parties, whereas the operator had proposed the opposite obligation (Rn. 13 to 16 and 142). In Europe the defendant has licensed only device manufacturers, not other operators (Rn. 40).

The Mannheim Regional Court dismissed the claim on 31 May 2022 (2 O 130/20), holding the claims barred by clause 8.2 (Rn. 93 to 98). The operator appealed.

The applicable law

The claimant relied on Article 102 TFEU and sections 19 and 20 of the Act against Restraints of Competition (GWB), on section 33a GWB for damages, and on general contract and unjust enrichment law (Rn. 43 to 48). Article 101(2) TFEU was also argued as a ground of nullity of the licence (Rn. 134).

Question

Does a SEP holder that has granted a FRAND licence to one operator, and then fails to obtain comparable licences from other operators, commit discrimination giving rise to repayment of royalties or damages?

Decision

No. The licence is not void: the non-discrimination required of a SEP holder concerns the terms it offers, and the licence does not impose on the operator terms less favourable than on others (Rn. 134 to 136). Any later discrimination in enforcing the patents might ground claims for an injunction or damages but does not affect the validity of the contract (Rn. 137). Clause 8.2, individually negotiated, is not an abuse of terms, having regard in particular to the operator’s resources and the strength of its position (Rn. 142 to 146). No contractual duty to secure a level playing field among operators was agreed (Rn. 148 and 149), which rules out termination, rescission and restitution (Rn. 150 to 161).

On section 33a GWB, the Senate recalls that competition rules as such are not at the parties’ disposal, but holds that clause 8.2 operates as an advance waiver of damages claims arising from uneven enforcement (Rn. 162 to 165). In any event the competitive harm alleged does not equal the royalties paid (Rn. 166 and 167). A SEP holder must act without discrimination as to whether it pursues users and on what terms, but it is not a custodian of the downstream market and does not guarantee the success of its efforts (Rn. 168 and 169). No appeal on points of law is allowed (Rn. 171).

Key points for practice

• FRAND non-discrimination is assessed first by reference to the terms offered to the licensee, not by the success rate of actions against competitors (Rn. 135).
• A clause excluding any duty to pursue third parties may operate as an advance waiver of damages claims based on selective enforcement (Rn. 163 and 164).
• A SEP holder owes no obligation of result to conclude licences with every player in the downstream market (Rn. 168).
• Practical point: a licensee wishing to guard against selective enforcement must bargain for an equal treatment or adjustment clause; otherwise the risk stays with it (Rn. 149 and 151).

Provisions applied

Treaty on the Functioning of the European Union

Art. 101; Art. 102

National law

Sections 19(1) and (2) no. 1, 20 and 33a GWB; sections 134, 241(2), 305, 313, 314, 323, 324, 346, 397 and 812 BGB; section 543(2) ZPO

Case law cited

CJEU, 16 July 2015, Huawei v ZTE, C-170/13; BGH, 7 June 2016, KZR 6/15 (Pechstein); BGH, 13 July 2004, KZR 40/02 (Standard-Spundfass); BGH, 24 January 2017, KZR 2/15 (Kabelkanalanlagen I); BGH, 18 February 2009, XII ZR 163/07

Related decisions

• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, cited on the duty to offer FRAND licences.

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.