Updated on 30 August 2026.
On 22 November 2024, the Mannheim local division of the Unified Patent Court (UPC) handed down its first judgment on the merits addressing the terms of a FRAND licence, in the dispute between Panasonic and Oppo. A first: until then, the UPC had approached FRAND only through orders to produce evidence.
The decision matters on two counts. It asserts the UPC's jurisdiction to assess FRAND terms, although the UPCA does not expressly confer it. And it applies the framework laid down by the CJEU in Huawei v ZTE while refusing any preliminary reference: the court intends to interpret for itself the law it applies.
The tension is plain: a court that invokes EU law while building, decision after decision, a FRAND law of its own. For holders of standard essential patents and for implementers alike, this assumed autonomy is now a strategic datum of the first order.
The case: EP 2 568 724 and six years of failed negotiations
Panasonic owns European patent EP 2 568 724, filed on 13 August 2008 and granted on 17 December 2014, protecting a radio communication device and method, declared essential to the 4G standard withETSI. License negotiations opened with Oppo in July 2019 having come to nothing, Panasonic sued for infringement before the UPC over the marketing of 4G-enabled smartphones and smartwatches.
Oppo disputed infringement and the validity of the patent, and argued that Panasonic had not made an offer consistent with its FRAND undertaking. The local division found the patent valid and infringed, rejected the FRAND defence and granted an injunction. What matters most is the method by which it got there.
A FRAND jurisdiction the UPCA does not expressly confer
The court held itself competent to rule on the FRAND character of the offers before it. The textual basis is nonetheless fragile: Article 32 UPCA, which lists the court's exclusive competences, does not mention the setting of license terms. The local division saw no obstacle there and treated the FRAND defence as a natural incident of the infringement action.
In the same movement, it dismissed Oppo's request for a preliminary reference and set aside the interpretations advanced by the European Commission in its amicus curiae observations. The message is twofold: the UPC considers itself able to resolve questions of EU law interpretation on its own, and it does not intend to have its reading of Huawei v ZTE dictated to it.
Notification, willingness, counter-offer: the Huawei v ZTE programme as reread in Mannheim
On notification of the infringement, the court took a pragmatic approach: sending a list of standard essential patents together with claim charts covering the asserted patent suffices. It expressly rejected the formalistic approach defended by the Commission, which would have required a detailed claim-by-claim analysis at that stage.
On the parties' willingness, the court assessed each side's overall conduct against the objective of the negotiation programme: reaching a freely negotiated agreement swiftly. Oppo had indeed signalled its readiness to take a license (step 2), but never made a quantified FRAND counter-offer (step 4). That failure proved decisive.
As for the patentee, it must plausibly explain why its offer is FRAND, so as to allow a good-faith response. Materials setting out the economics of the royalty mechanism were held sufficient at that stage, and the court did not require the production of agreements concluded with third parties, whose confidentiality deserves protection. On this evidentiary ground, the decision extends the line drawn by the orders on the production of comparable licenses issued in spring 2024.
A declaration of jurisprudential independence
The decision presents itself as a faithful application of Huawei v ZTE. It is in truth something more: a declaration of independence. The court draws on Dutch, English and German case law where it supports its view, sets aside the Bundesgerichtshof's line where it does not, and declines the detour through Luxembourg. What the court loves is less EU law than its own nascent case law.
This autonomy has a predictable cost: rare preliminary references, a UPC-specific FRAND law coexisting with diverging national case law, and possible friction with European initiatives on standard essential patents. We have analysed this broader dynamic in our critical reading of the UPC's first two years.
Since the judgment: a global settlement and a second FRAND decision
The epilogue came quickly. On 14 January 2025, Panasonic and Oppo announced a global cross-license agreement covering their cellular standard essential patents, ending all their disputes, with a comparable agreement concluded with Xiaomi. The UPC's first FRAND judgment thus produced its most concrete effect: precipitating settlement. No appellate ruling has, to date, confirmed or overturned this first line on the merits.
In the meantime, the Munich local division had issued, on 18 December 2024, the UPC's second FRAND decision in Huawei v Netgear (UPC_CFI_9/2023): a patent essential to Wi-Fi 6, the FRAND defence rejected, an injunction granted. There too, settlement followed in January 2025, with Netgear taking a license from Sisvel's Wi-Fi 6 patent pool . Two decisions, two injunctions, two settlements within weeks: the Mannheim and Munich line is a deterrent.
The landscape has shifted further since. In February 2025, the European Commission announced the withdrawal of its proposal for a regulation on standard essential patents, leaving the field to the courts. And FRAND litigation has moved toward conflicts of jurisdiction, with the UPC now shielding its proceedings through anti-anti-suit injunctions against US, English and Chinese initiatives. The decisions are available in the UPC's register.
The practical requirements of the decision
For the holder of a standard essential patent, notification is simplified: a patent list and claim charts suffice, without an exhaustive demonstration of infringement. But since overall conduct is what gets assessed, rigorous documentation of every exchange, and a plausible explanation of the economics of the offer, remain decisive before the UPC.
For the implementer, the critical point is the counter-offer: declaring availability is not enough; what is expected is a quantified, structured and timely FRAND counter-offer. Formalistic defences, whether directed at the form of the notification or at the absence of comparables produced upfront, do not prosper.
For both parties, finally, the UPC's FRAND law is being built autonomously, without references to the CJEU and without particular deference to the Commission's positions. The choice of division and the upstream preparation of the negotiation file are matters of genuine FRAND strategy, where each step of the Huawei v ZTE programme must be played as it will be judged.
Key takeaways
- Mannheim local division, 22 November 2024: the UPC's first decision ruling on the merits of FRAND terms (Panasonic v Oppo, patent EP 2 568 724, essential to 4G).
- The UPC asserts jurisdiction to assess FRAND terms, although Article 32 UPCA does not expressly provide for it, and refuses any preliminary reference to the CJEU.
- Notification by patent list and claim charts suffices; the European Commission's formalistic approach is set aside.
- Oppo satisfied the willingness step but failed for lack of a quantified FRAND counter-offer: an injunction was granted.
- Epilogue: a global Panasonic/Oppo cross-license agreement announced on 14 January 2025; a second FRAND decision (Huawei v Netgear, Munich, 18 December 2024) also followed by a settlement.
- The Commission's withdrawal of its SEP regulation proposal (February 2025) confirms the UPC as the central forum for FRAND litigation in Europe.
Frequently asked questions
Does the UPC have jurisdiction to set the terms of a FRAND license?
The Mannheim local division held itself competent to assess the FRAND character of the offers within an infringement action, even though Article 32 UPCA does not expressly cover the matter; the exact scope of that jurisdiction remains debated.
What must the infringement notification sent to the implementer contain?
Under Panasonic v Oppo, a list of the standard essential patents together with claim charts covering the asserted patent suffices; a detailed claim-by-claim analysis is not required at that stage.
Does a mere declaration of willingness to take a license protect the implementer?
No. The court expects a quantified and serious FRAND counter-offer within a reasonable time; expressed availability alone, without a structured response, exposes the implementer to an injunction.
Was the decision upheld on appeal?
No: Panasonic and Oppo concluded a global cross-license agreement on 14 January 2025 ending their disputes, so the UPC Court of Appeal has not ruled on this first line of case law.
The firm advises and represents standard essential patent holders and implementers in FRAND negotiations and litigation, before the UPC and the French courts. Talk to us.
This article is an original and substantially updated adaptation of an analysis by Matthieu Dhenne first published on Kluwer Patent Blog on December 20, 2024: First UPC FRAND decision: Amours à l'Italienne (Panasonic v. Oppo).
The UPC’s decisions on standard essential patents and FRAND commitments are collected in FRAND Litigation Watch.