GPRS SEP holder v distributors of a handset group (OLG Düsseldorf, I-15 U 66/15, 2017)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Düsseldorf Higher Regional Court reads the Huawei v ZTE framework sequentially: the infringer owes a counter-offer only after a FRAND offer by the patentee (paras 244 and 245). It holds the patentee’s offers discriminatory, being up to ten times more expensive for the past and about five times for the future than those of another licensee (paras 266 and 316 to 318). The defence under Article 102 TFEU therefore defeats, for the time being, destruction and recall, even after expiry of the patent (paras 324 to 328); accounts and damages remain, damages being capped at a FRAND royalty (paras 330 and 350).

Facts and procedure

The claimant, registered as proprietor of the German part of a European patent for a mobile station, acquired it from the applicant; the patent remained in force until 25 September 2016 (para 4). On 10 April 2013 it undertook to ETSI to license on FRAND terms (para 17) and it offers a “Wireless” portfolio licence of 47 patent families (para 18). The defendants are the German and European distribution companies of a handset group designated by a pseudonym (para 14). After letters to the parent companies in 2012 and 2013, offers and counter-offers followed from 2014 to 2017 (paras 19 to 23). The Düsseldorf Regional Court granted all claims on 3 November 2015 (4a O 93/14) (para 27); on appeal, the injunction claim was declared disposed of after the patent expired (para 47).

The applicable law

The Senate finds use of the patent, essential to the GPRS standard from Release 4 (para 95), and rejects exhaustion (paras 165 to 173). It applies the Huawei v ZTE steps (paras 191 to 200), including to actions brought before that judgment, without any transitional regime inspired by Orange-Book-Standard (paras 202 and 203).

Question

Can a SEP holder that has not made a FRAND offer obtain destruction and recall, and what successive requirements apply to the parties?

Decision

Dominance results, not from essentiality alone, but from the patented function being a condition of access to the GPRS handset market (paras 182 and 185 to 188). Notice to the parent company suffices (paras 211 to 213). Willingness may be expressed informally (para 223); if late but prior to the action, it still obliges the patentee to make a FRAND offer (paras 229 to 233), and only a serious and final refusal undermines it (para 240).

The steps are examined in order: absent a prior FRAND offer, no counter-offer is due (paras 244 and 245). The offer must in principle precede the action, state the royalty and its parameters and explain why it is FRAND, in particular in the light of existing licences (paras 247 and 248); the court decides on the merits, not by a mere evidence check (para 249). The offers at issue discriminate compared with the contract concluded with a direct competitor, and neither reference customer status, nor risk allocation, nor the procedural situation justifies the gap (paras 251 to 318).

The defence is a temporary bar: destruction and recall are dismissed as presently unfounded (paras 322 and 324), even after expiry of the patent (paras 326 to 328). Accounts and damages remain due in principle (para 330), damages being limited to a FRAND royalty while the licence seeker meets its obligations, without disclosure of costs and profits (paras 350 and 362 to 370). The Senate declines to refer to the CJEU (para 379) and grants leave to appeal (para 387).

Key points for practice

• A counter-offer only becomes mandatory after a FRAND offer by the patentee, assessed on the merits by the court (paras 244, 245 and 249).
• The patentee bears a secondary burden of substantiation regarding its existing licences and must prove any justification for differential treatment (para 258).
• Large discounts granted to a direct competitor establish discrimination unless justified by objective criteria applied to all (paras 273 and 316 to 318).
• Practical point: the patentee should document before suing a complete, quantified and explained offer consistent with its prior licences; otherwise it loses, for the time being, the leverage of recall and destruction and sees its damages capped (paras 248, 324 and 350).

Provisions applied

Treaty on the Functioning of the European Union

art. 102; Article 267

European Patent Convention

art. 64; art. 70

Other EU law

Articles 17(2) and 47 of the Charter of Fundamental Rights; Article 2 of Regulation (EC) No 1/2003

National law

sections 9, 139, 140a and 140b PatG; sections 242, 276 and 323 BGB; sections 91a, 148 and 543 ZPO

Case law cited

CJEU, 16 July 2015, C-170/13 (Huawei Technologies v ZTE); BGH, BGHZ 180, 312 (Orange-Book-Standard); BGH, GRUR 2004, 966 (Standard-Spundfass); BGH, NZKart 2016, 374 (NetCologne); OLG Karlsruhe, Mitt. 2016, 321 (Informationsaufzeichnungsmedium); LG Mannheim, BeckRS 2016, 06527; LG Düsseldorf, BeckRS 2016, 08040

Related decisions

• BGH, KZR 36/17, 5 May 2020, appeal instance indicated in the published text (Nachinstanz).
• CJEU, Huawei v ZTE, 16 July 2015, judgment whose steps the Senate implements.
• BGH, Orange-Book-Standard, 6 May 2009, earlier national case law held unable to support a transitional regime (para 203).

Prepared by Dhenne Avocats from the text of the decision (NRWE, justiz.nrw.de), consulted on 11 October 2026. Only the official text is authoritative.