SEP holder v smartphone manufacturer (LG München I, 21 O 11522/21, 2022)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Munich I Regional Court finds a smartphone manufacturer liable for infringing a patent linked to the EVS voice codec and orders an injunction, recall and destruction. It rejects both the FRAND defence, for lack of willingness, and the disproportionality exception in section 139(1), third sentence, of the Patent Act introduced in 2021. Where a SEP holder complies with its FRAND obligations, that exception in principle offers no additional defence, even for a complex product. The judgment is among the first to connect the 2021 reform with FRAND case law.

Facts and procedure

The claimant owns the German part of European patent EP 2 080 193, which concerns pitch lag estimation in audio signals (Rn. 1, 2 and 16 to 21). It targets the defendant’s 4G smartphones and devices implementing ETSI TS 126 445 on the EVS codec (Rn. 3 and 4). It describes itself as a research company and network equipment supplier that also licenses its brand (Rn. 86 and 94).

The defendant denied infringement, raised the FRAND defence and disproportionality, and sought in the alternative a stay pending a nullity action filed on 18 February 2022 (Rn. 9 and 11). The parties had previously been bound by a worldwide licence that had expired (Rn. 137).

The applicable law

The injunction claim derives from Article 64 EPC and section 139(1) of the Patent Act; since the 2021 reform it is excluded where, owing to the special circumstances of the case and good faith, enforcement would cause disproportionate hardship not justified by the exclusive right (Rn. 82 and 88). The FRAND defence is assessed under Article 102 TFEU, Huawei v ZTE and FRAND-Einwand I and II (Rn. 110 to 116).

Question

Can a SEP holder that negotiates in line with its FRAND obligations face the disproportionality exception in section 139(1), third sentence, of the Patent Act, in particular because it seeks mainly to monetise its patent or because the accused product is complex?

Decision

No. The exception is confined to exceptional cases and the burden lies on the defendant (Rn. 89 and 90). A holder’s wish to monetise its patent is not enough on its own; in any event the claimant is active in the network equipment market (Rn. 93 and 94). It cannot be held against the claimant that it honours its FRAND obligations and negotiates, and it need not wait for negotiations to end before suing (Rn. 95). Product complexity does not make an injunction disproportionate for a SEP, since the user can obtain a licence and the failure of negotiations is attributable to it (Rn. 96 and 97). Where the holder complies with its FRAND obligations, the exception provides no additional defence absent further circumstances (Rn. 98). No monetary compensation is due (Rn. 101), and recall and destruction are not disproportionate either (Rn. 106).

The FRAND defence fails: the claimant’s offers were not so unacceptable as to dispense with a response, and the defendant negotiated in a dilatory manner, raised its objections late and failed to take the next step when it was due (Rn. 118 and 135 to 153). A royalty said to be excessive raises, absent an inappropriate offer, an issue of price abuse that cannot be pleaded against infringement (Rn. 164). The stay is refused (Rn. 173 to 198).

Key points for practice

• The holder’s profile (patent monetiser or operating company) does not on its own make an injunction disproportionate (Rn. 94).
• The complexity of a product incorporating a SEP is no answer where the user could have taken a licence and did not (Rn. 97).
• The FRAND defence and the disproportionality exception do not add up: an unwilling licensee gains nothing by invoking the latter (Rn. 97 and 98).
• Practical point: a holder that documents a proper negotiating record can neutralise both the FRAND defence and the disproportionality exception at once (Rn. 95 to 99).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

European Patent Convention

Art. 64; Art. 69

EU law

Regulation (EU) No 1215/2012, Art. 7(2)

National law

Sections 10, 139(1) and (2), 140a(4), 140b and 143 PatG; sections 242, 259 and 840 BGB; sections 148 and 256 ZPO

Case law cited

CJEU, Huawei v ZTE (GRUR 2015, 764); BGH, FRAND-Einwand I (GRUR 2020, 961); BGH, FRAND-Einwand II (GRUR 2021, 585); BGH, Abdichtsystem (GRUR 2017, 785); BGH, Transportfahrzeug (GRUR 1987, 284)

Related decisions

• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, framework for the FRAND defence applied by the court.
• Sisvel v Haier (BGH, KZR 36/17), 5 May 2020, FRAND-Einwand I, cited on willingness.
• Sisvel v Haier II (BGH, KZR 35/17), 24 November 2020, FRAND-Einwand II, cited on delaying tactics.

Prepared by Dhenne Avocats from the text of the decision (official portal gesetze-bayern.de), consulted on 11 October 2026. Only the official text is authoritative.