Motorola, GPRS standard essential patents (European Commission, AT.39985, 2014)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The European Commission finds that Motorola Mobility abused its dominant position, in breach of Article 102 TFEU, by seeking and enforcing an injunction against Apple in Germany on the basis of a patent essential to the GPRS standard and subject to a FRAND commitment. The abuse runs from 4 October 2011, when Apple agreed that the rate be set by the German court. No fine is imposed. The decision, which predates Huawei v ZTE, draws the line between willing and unwilling licensees and protects the right to challenge the validity of SEPs.

Facts and procedure

Motorola declared the « Cudak » patent essential to GPRS on 8 April 2003 and committed to ETSI to license it on FRAND terms (recitals 287 and 293). From April 2011 it sought injunctions against Apple in Germany (recitals 115 and 116). Apple made six so-called « Orange Book » offers; the second, of 4 October 2011, let Motorola set the royalty at its equitable discretion, subject to full judicial review (recitals 120 to 126 and 303).

The Mannheim Regional Court granted an injunction on 9 December 2011 (recital 130). Motorola enforced it on 30 January 2012, leading to a halt in Apple’s online sales in Germany from 2 February 2012, until the Karlsruhe Higher Regional Court stayed enforcement on 3 February (recitals 144, 313 and 314). The parties signed an agreement based on the sixth offer, which included a clause allowing termination if validity were challenged (recitals 162 to 164 and 322). Apple lodged its complaint on 14 February 2012 (recital 20).

The applicable law

The Commission applies Article 102 TFEU and Article 54 of the EEA Agreement under Article 7 of Regulation No 1/2003 (recitals 1 and 551). It recalls that exercising an exclusive right becomes abusive only in exceptional circumstances and absent objective justification (recital 278).

Question

Does the holder of a FRAND-encumbered SEP abuse its dominant position by seeking and enforcing an injunction against a potential licensee that is not unwilling to enter into a FRAND licence?

Decision

Yes. Motorola holds a dominant position on the market for licensing the technology covered by the Cudak patent (recitals 213 and 269). The standard-setting context and the FRAND commitment are exceptional circumstances (recitals 281 to 300). Apple’s second offer was a clear indication that it was not unwilling to take a FRAND licence as determined by the competent court (recitals 303 to 307). Pursuing the injunction had anticompetitive effects: a temporary ban on online sales, disadvantageous terms in the agreement, in particular the termination clause deterring validity challenges, and harm to confidence in standard-setting (recitals 311 to 420).

The justifications put forward are rejected: Apple was not an unwilling licensee, and compliance with the German Orange-Book-Standard case law does not justify the conduct, since Motorola had full discretion whether to sue and enforce (recitals 427 to 432 and 465 to 472). The infringement lasted from 4 October 2011 to 29 May 2012 (recitals 543 and 547). Motorola must eliminate the anticompetitive effects, in particular those of sections 1(3), 4(4) and 7(1) of the agreement (recital 558 and Article 2). No fine is imposed, given the absence of decisional practice and diverging national case law (recital 561).

Key points for practice

• A SEP-based injunction is not abusive in itself; it becomes so against a potential licensee that is not unwilling to take a FRAND licence (recitals 278 and 495).
• Accepting that the rate be set by an independent court is strong evidence of willingness (recitals 303 and 420).
• A clause allowing termination of the licence upon a validity challenge amounts to a no-challenge obligation and may have anticompetitive effects (recitals 339 and 375 to 379).
• Practical point: a SEP holder may seek an injunction in particular against a potential licensee that is unwilling, insolvent or whose assets are in jurisdictions without adequate enforcement of damages (recital 427).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

Other provisions

Agreement on the European Economic Area, Art. 54; Regulation (EC) No 1/2003, Arts 7 and 23(2); Regulation (EC) No 772/2004, Art. 5(1)(c)

National law

Section 139 PatG (basis of Motorola’s claims)

Case law cited

BGH, 6 May 2009, KZR 39/06 (Orange-Book-Standard); General Court, T-201/04, Microsoft v Commission; CJEU, C-457/10 P, AstraZeneca v Commission; ECJ, Windsurfing International; District Court of The Hague, 17 March 2010, Philips v SK Kassetten; reference for a preliminary ruling by LG Düsseldorf of 5 April 2013, C-170/13, Huawei v ZTE

Related decisions

• Orange-Book-Standard (BGH, KZR 39/06), 6 May 2009, German case law relied on by Motorola and rejected as a justification.
• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, reference mentioned by the Commission, later decided by the Court.

Prepared by Dhenne Avocats from the text of the decision (European Commission website, public version), consulted on 11 October 2026. Only the official text is authoritative.