Philips v Asus (Gerechtshof Den Haag, 200.233.166/01, 2019)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Hague Court of Appeal set aside the judgment that had annulled the Dutch part of Philips’s patent EP 1 440 525, held the patent valid and infringed by Asus’s UMTS devices, and granted an injunction for the Netherlands (points 4.134, 4.149 and 5.1). The FRAND defence failed because Asus had never shown itself willing to take a licence (points 4.160 and 4.175).

The judgment treats the implementer’s willingness as a precondition: until it is shown, the SEP holder need not make a FRAND offer and the court need not decide whether the offer made was FRAND (points 4.155, 4.156 and 4.175).

Facts and procedure

The patent covers the base station’s control of the transmit power of ACK and NACK signals in the HSDPA protocol; Philips declared it essential to the UMTS standard and gave ETSI a FRAND undertaking (points 2.3 and 2.27). Philips presented its UMTS and LTE portfolio to Asus from 2013 and sent it a standard licence agreement on 21 September 2015 (points 2.28 and 4.150, reproducing points 4.172 and 4.173 of the EP 511 judgment). The Hague District Court dismissed the claims and annulled the patent for lack of inventive step (point 3.4). On the FRAND defence the court adopted its judgment of 7 May 2019 between the same parties on patent EP 511 (points 1.2 and 4.150 to 4.152).

The applicable law

The court applied Article 102 TFEU as interpreted by the Court of Justice in Huawei v ZTE: notice of infringement, an expression of willingness by the implementer, a written offer by the SEP holder, then a diligent response or counter-offer from the implementer (point 4.150, reproducing points 4.166 to 4.170 of the EP 511 judgment). Those steps are guidelines for good faith negotiation rather than strict rules (point 4.171 of the EP 511 judgment).

Question

May a SEP holder obtain an injunction against an implementer that has shown no genuine willingness to take a licence, without any assessment of whether its own offer was FRAND?

Decision

The flexibility of the Huawei v ZTE steps does not allow one of them to be skipped: the implementer’s willingness must exist before any duty to make a FRAND offer arises and before any abuse of dominance can be found (point 4.155). Notice is the only strict condition imposed on the SEP holder; Philips had satisfied it by 17 May 2015 at the latest, and claim charts for every patent were not required (points 4.156, 4.158 and 4.159).

Asus had never been a willing licensee: merely sitting through meetings arranged at Philips’s initiative was not enough, and the absence of technical representatives reflected a strategy of delay (points 4.160 to 4.163), so Philips was free to sue (point 4.167). Events after the claim was issued made no difference: Asus’s counter-offer was late and based on a Motorola Wi-Fi portfolio unrelated to Philips’s UMTS and LTE portfolio (points 4.169 to 4.171), and its proposed USD 0.05 rate was not obviously FRAND given that Asus said it paid USD 0.53, USD 3 and USD 1.10 to other SEP holders (point 4.172). An injunction does not require proof that the SEP holder’s offer was FRAND (points 4.173 and 4.175).

The injunction was not disproportionate, since the lack of a licence was Asus’s own doing; it was irrelevant that Philips is not active on the market, and no sunset period was granted (points 4.179, 4.180 and 4.182). The court also ordered disclosure of customers, recall and destruction of products under penalty payments, and damages or an account of profits (points 5.2 to 5.7).

Key points for practice

• A general statement of willingness, made in meetings or in pleadings, is not willingness to take a licence (point 4.161; point 4.185 of the EP 511 judgment).
• A late counter-offer modelled on a portfolio for another standard does not revive the FRAND defence (points 4.170 and 4.171).
• Huawei v ZTE does not require the SEP holder to justify its offer as FRAND by disclosing its licences (points 4.192 and 4.193).
• Practical point: an implementer that disputes an offer must reply promptly and in writing, with a counter-offer based on the portfolio in suit, or lose the FRAND defence (points 4.172 and 4.174).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102; Art. 101

European Patent Convention

Art. 54

National law

Dutch Code of Civil Procedure (Rv), Arts 843a, 844 and 1019h

Other texts

ETSI Intellectual Property Rights Policy, clauses 3, 4.1, 6.1 and 8; ETSI Guide on Intellectual Property Rights; Commission Guidelines on horizontal co-operation agreements, para 286

Case law cited

CJEU, Huawei v ZTE, C-170/13; BGH, Orange-Book-Standard; Unwired Planet v Huawei [2017] EWHC 711 (Pat) and [2018] EWCA Civ 2344; Hoge Raad, Abbott v Medinol, ECLI:NL:HR:2014:816; European Commission, Rambus, COMP/38.386, and Google/Motorola, COMP/M.6381; Hague District Court, Philips v LG (11 June 2007) and Philips v SK Kassetten (17 March 2010); Hague Court of Appeal, Philips v Asus (EP 511), 7 May 2019

Related decisions

• Huawei v ZTE, Court of Justice of the European Union, 16 July 2015, the judgment whose steps the court applied (point 4.150).
• Unwired Planet v Huawei, High Court, 5 April 2017, relied on as to willingness in general terms (point 4.156).
• Orange-Book-Standard, Federal Court of Justice (BGH), 6 May 2009, the ruling from which the Court of Justice departed on who makes the first offer (point 4.183 of the EP 511 judgment).

Prepared by Dhenne Avocats from the text of the decision (rechtspraak.nl, official Dutch text), consulted on 11 October 2026. Only the official text is authoritative.