Wurzelsequenzordnung (OLG Karlsruhe, 6 U 130/20, 2021)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Karlsruhe Higher Regional Court stays, against security, enforcement of the injunction granted by the Mannheim Regional Court against a car manufacturer (operative part). On summary review, it finds the first instance court’s reason for rejecting the FRAND defence manifestly insufficient on a decisive point: a counter-offer leaving the royalty to the SEP holder’s equitable determination (section 315(3) BGB) in principle shows sufficient willingness to conclude a FRAND licence (paras 42 and 51). The stay does not extend to accounts (para 69). An offer made at an inopportune time as a delaying tactic remains reserved (para 55).

Facts and procedure

The claimant, part of a telecommunications group, asserts a patent on ordering root (Zadoff-Chu) sequences, declared essential to LTE (paras 3 and 10). The defendant is a German maker of vehicles fitted with telematics units bought from suppliers (paras 13 to 15). After lengthy negotiations (paras 17 to 21), it made a counter-offer based on the average purchase price of a TCU and then, after the first instance hearing, a second counter-offer leaving the royalty to the patentee subject to judicial review under section 315 BGB (paras 22 and 23). The Mannheim Regional Court ruled against it on 18 August 2020 (2 O 34/19) (para 25). On appeal, it sought a stay of provisional enforcement and, in the alternative, a stay pending the CJEU’s answer to the Düsseldorf Regional Court’s reference (4c O 17/19) (paras 26 to 29).

The applicable law

Staying an enforceable judgment against security remains exceptional (sections 719(1) and 707(1) ZPO); it is warranted where summary review, confined to manifest errors, shows that the reasons supporting the judgment do not hold (paras 34 to 41). The FRAND defence falls under Article 102 TFEU and sections 19 and 20 GWB (para 42).

Question

Does a counter-offer leaving the royalty to the SEP holder’s equitable determination, subject to judicial review, suffice to express willingness to conclude a FRAND licence?

Decision

The first instance court’s starting point is approved: the infringer must clearly declare its willingness to conclude a FRAND licence on whatever terms are FRAND and cooperate in a targeted way throughout negotiations, in line with the Federal Court of Justice’s FRAND-Einwand judgment and the Senate’s Mobilstation judgment (paras 43 and 44). A non-FRAND counter-offer could also confirm a lack of willingness (paras 45 and 46).

However, an offer leaving the royalty to the patentee under section 315(3) BGB in principle shows the required willingness (para 51). That the infringer maintains its view of FRAND and intends to have the royalty reviewed changes nothing, since the patentee will receive either its royalty or one fixed by the court (paras 52 to 54). Such an offer may exceptionally be a delaying tactic if made at an inopportune time (paras 55 to 57); as the first instance court made no such finding, the offer of 10 June 2020 had to be taken into account (paras 58 to 61).

The balance of interests leads to a stay of enforcement of the injunction against security (paras 62 to 68). Accounts remain enforceable, including cost and profit data, the Senate departing from the Düsseldorf Higher Regional Court (paras 69 to 73). The refusals to stay pending the nullity proceedings and to refer to the CJEU are not manifestly wrong (paras 75 to 91). The security covers five years, given the pending reference (paras 96 to 100).

Key points for practice

• A “section 315 BGB” counter-offer in principle suffices to show willingness, even if the infringer intends to challenge the amount set (paras 51 to 54).
• Timing matters: an offer made at an inopportune time may be recharacterised as a delaying tactic (paras 55 and 56).
• A stay of the injunction does not extend to accounts (paras 69 to 71).
• Practical point: a defendant should consider offering early a licence with the royalty set by the patentee under judicial review, while the patentee should ask the court to find such an offer late or dilatory (paras 55, 59 and 64).

Provisions applied

Treaty on the Functioning of the European Union

art. 102; Article 267

National law

section 315(3) BGB; sections 19 and 20 GWB; sections 707(1), 719(1) and 148 ZPO

Case law cited

CJEU, Huawei v ZTE, GRUR 2015, 764; BGH, BGHZ 180, 312 (Orange-Book-Standard); BGH, GRUR 2020, 961 (FRAND-Einwand); OLG Karlsruhe, 9 December 2020, 6 U 103/19; OLG Karlsruhe, GRUR 2020, 166 (Datenpaketverarbeitung); OLG Düsseldorf, GRUR 2019, 725 (Improving Handover); LG Düsseldorf, 31 March 2016, 4a O 126/14 and 4a O 73/14

Related decisions

• LG Mannheim, 2 O 34/19, 18 August 2020, judgment whose injunction is stayed.
• OLG Karlsruhe, Mobilstation, 9 December 2020, judgment of the same Senate on willingness to license (paras 44 and 90).
• LG Düsseldorf, 4c O 17/19, 26 November 2020, preliminary reference taken into account for the duration of the security (paras 29 and 100).
• BGH, KZR 36/17, 5 May 2020, FRAND-Einwand judgment on qualified willingness to license (para 44).

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.