EVS SEP holder v mobile phone distributor (OLG München, 6 U 3824/22 Kart, 2025)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Antitrust Senate of the Munich Higher Regional Court upholds an injunction against a mobile phone distributor for infringing a patent essential to the EVS voice standard. It reads the Huawei v ZTE steps by reference to their purpose and makes security a threshold condition: absent security based on the holder’s last offer, covering the worldwide portfolio licence proposed and backed by an undertaking to accept, the FRAND defence fails without the offer being examined. An appeal on points of law is allowed on that issue.

Facts and procedure

The claimant owns European patent EP 2 102 619, declared essential to the EVS standard at ETSI by its former owner, referred to as « V. Corporation » (Rn. 2 and 3). The Federal Patent Court declared it partly invalid on 16 September 2022 (4 Ni 12/21 (EP)), a decision that became final when both appeals were withdrawn on 25 February 2025 (Rn. 5 and 6). The defendant sold 3G and 4G devices with the EVS codec in Germany and says it has used a workaround since February 2022 (Rn. 7).

The action, filed on 11 October 2019 for accounting and damages, was later extended to an injunction (Rn. 9). The Munich I Regional Court granted most of the claims on 25 May 2022 (7 O 14091/19) (Rn. 11 and 12). On appeal the European Commission intervened as amicus curiae, in writing and at the hearing of 31 October 2024, after an indicative order of the Senate dated 30 October 2024 (Rn. 16 and 86).

The applicable law

The Senate characterises the FRAND defence, based on Article 102 TFEU and Huawei v ZTE, as a dolo agit plea under section 242 of the Civil Code, examined on the merits rather than as a matter of admissibility (Rn. 88 to 90). The disproportionality exception in section 139(1), third sentence, of the Patent Act is also addressed (Rn. 75 to 79).

Question

Can an implementer’s FRAND defence succeed where it has not provided security in the amount of the holder’s last offer, and must the Huawei v ZTE steps be applied in strict sequence?

Decision

No on both counts. The Huawei v ZTE steps must be observed, but they form a dynamic negotiating framework, not a straitjacket; in good faith neither party may rely on formal « errors » at an earlier stage once negotiations have continued (Rn. 92 to 97). The Senate expressly rejects the scheme put forward by the Commission (Rn. 94 and 97). An action for accounting and damages can serve as notice of infringement (Rn. 100 to 102). If the first offer is FRAND, the defence fails whatever the implementer’s response; if it is not, the defence does not thereby succeed, since the implementer must still make a counter-offer and provide security (Rn. 115 to 121).

Security is measured against the holder’s last offer, not the counter-offer; where that offer is for a worldwide portfolio licence, security must cover it and may not be scaled down to the German patent (Rn. 137 to 141). It must be qualified security, with the implementer undertaking to accept the offer if it is found to be FRAND and infringement is finally established (Rn. 144). Failing that, the FRAND defence fails without the offer being examined (Rn. 147 and 148). The bank guarantee provided, set by reference to the defendant’s own counter-offer, was insufficient (Rn. 151 to 154). The disproportionality exception is rejected (Rn. 77 to 79).

Key points for practice

• A holder that has made an offer and entered into negotiations can no longer object that the implementer failed to declare its willingness beforehand (Rn. 112).
• Whether the counter-offer is FRAND is never decisive: only its existence matters (Rn. 124 to 126).
• A workaround does not remove the need for security as long as the risk of repetition is not removed by a cease and desist undertaking backed by a penalty (Rn. 132).
• Practical point: before the Munich courts an implementer that wishes to challenge the offer should post security in the amount of the last offer and undertake to accept it if found FRAND (Rn. 149).

Relevance before the UPC

The Senate notes that the Munich Local Division of the UPC, in its decision of 18 December 2024 (UPC_CFI_9/2023), took a comparable approach to security while leaving its amount open (Rn. 145 and 147).

Provisions applied

Treaty on the Functioning of the European Union

Art. 102

European Patent Convention

Art. 64(3)

National law

Section 139(1), third sentence, PatG; sections 242 and 362 BGB; section 543 ZPO

Case law cited

CJEU, Huawei v ZTE (GRUR 2015, 764); BGH, FRAND-Einwand (GRUR 2020, 961); BGH, FRAND-Einwand II (GRUR 2021, 585); BGH, Fräsverfahren (GRUR 2013, 713); UPC, Munich Local Division, 18 December 2024, UPC_CFI_9/2023

Related decisions

• FRAND-Einwand III (BGH, KZR 10/25), 27 January 2026, judgment on the appeal against this decision.
• Huawei v ZTE (CJEU, C-170/13), 16 July 2015, judgment the Senate reads by reference to its purpose.
• Sisvel v Haier (BGH, KZR 36/17), 5 May 2020, FRAND-Einwand, cited on dominance and portfolio licensing.
• Sisvel v Haier II (BGH, KZR 35/17), 24 November 2020, FRAND-Einwand II, cited on the dolo agit plea and counter-offers.

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.