Huawei v Netgear (CFI, ORD_598540/2023, 18 December 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 18 December 2024 (UPC_CFI_9/2023), the Munich Local Division upheld Huawei’s infringement action against Netgear Inc., Netgear International and Netgear Deutschland based on EP 3 611 989, which concerns HE-SIG-B signalling in the Wi-Fi 6 standard (IEEE 802.11ax), dismissed the preliminary objection to the withdrawal of the opt-out and the counterclaims for revocation, and rejected both the FRAND defence and the defence based on the IEEE Letter of Assurance. It granted an injunction for six States, but accepted exhaustion for devices fitted with Qualcomm modems placed on the market during a period covered by the Huawei-Qualcomm licence. The decision is a reference for the Munich reading of Huawei v ZTE: security is a precondition for any review of the proprietor’s offer, and a compliant pool offer is enough.

Facts and procedure

Huawei opted the patent out on 14 May 2023, withdrew the opt-out on 24 May 2023 using the CMS template, and then sued. Netgear challenged the withdrawal, counterclaimed for revocation, a group company having brought a nullity action before the Federal Patent Court, and relied on exhaustion, on the Letter of Assurance given to the IEEE on 25 July 2019 and on a FRAND defence. Huawei had made a bilateral offer, improved twice, and pointed to a licence through the SISVEL pool. The oral hearing took place on 30 October 2024, the language of proceedings being German.

The applicable law

Withdrawal of an opt-out is governed by Art. 83(3) UPCA and Rules 5 and 4.1 RoP. Validity is assessed under Arts 52, 54, 56, 76, 83, 87 and 123 EPC, exhaustion under Art. 29 UPCA, the FRAND defence under Art. 102 TFEU and Huawei v ZTE, and the Letter of Assurance under New York law.

Question

Is the patent valid and infringed by Netgear’s Wi-Fi 6 devices, does a licence granted to the modem supplier exhaust the patent, and can Netgear rely on competition law or on the commitment given to the IEEE?

Decision

The withdrawal of the opt-out, registered on 24 May 2023, is valid without compulsory use of the template (part A). The counterclaims are admissible, the nullity action brought by Netgear Switzerland, which is not a party, creating no lis pendens, but unfounded: the divisional does not extend beyond the parent application, the priority of 1 September 2015 is valid, and neither novelty nor inventive step is lacking, several attacks raised in the rejoinder or at the hearing being rejected as late under Rule 9.2 RoP (part D). Infringement is literal: the standard and test data from Netgear devices, produced in proceedings before the Düsseldorf Regional Court, show that claim 1 (indirect infringement) and claim 7 (direct infringement) are used (part E). Exhaustion under Art. 29 UPCA also covers method claims and products incorporating the licensed component. It is accepted in principle for Qualcomm modems from the licensed period, product-by-product proof being left to enforcement (part F). The FRAND defence fails: Netgear, which denied that the standard mandates the patented technique, cannot at the same time assert Huawei’s dominance, it provided neither security nor sufficient information after its counteroffer was rejected, and said nothing of substance against the SISVEL pool offer (part G). No reference was made to the CJEU despite the European Commission’s amicus brief filed with the Munich Higher Regional Court. The contractual defence based on the Letter of Assurance fails for want of any showing of discrimination (part H). The division ordered an injunction for Belgium, Germany, Italy, Finland, France and Sweden, information and rendering of accounts since 26 May 2021, removal, recall, destruction and damages, excluding the covered Qualcomm products. Costs of the infringement action are split 80% to Netgear and 20% to Huawei, those of the counterclaims fall on Netgear. As Huawei is based in China, enforcement is subject to partial securities, including EUR 50,000 for information (part I).

Key points for practice

• A defendant that disputes essentiality to escape infringement cannot, without contradiction, rely on the proprietor’s dominant position (part G.IV.1).
• The implementer must provide security and usage information once its counteroffer is rejected, failing which the proprietor’s offer is not reviewed (part G.III.5).
• A licence granted to a component supplier may exhaust the patent for devices incorporating the component, product-by-product proof being left to enforcement (part F).
• Practical point: an implementer that declines a pool offer must challenge its FRAND character specifically during the negotiations.

Provisions applied

Agreement on a Unified Patent Court

Arts 20, 21, 24, 25, 26, 29, 42, 48(6), 63, 64, 67, 68, 69, 82 and 83(3)

Rules of Procedure

Rules 4.1, 5, 9.2, 19, 30, 118.8, 191, 284 and 354.3

European Patent Convention

Arts 52, 54, 56, 76, 83, 87 and 123(2)

Directive 2004/48/EC

Art. 3(2)

Other provisions

Treaty on the Functioning of the European Union, Arts 102 and 267

Case law cited

Panasonic v OPPO, Mannheim Local Division, 22 November 2024, 10x Genomics v NanoString, Court of Appeal, 26 February 2024, Paris Central Division (UPC_CFI_255/2023), Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023), CJEU, 16 July 2015, Huawei v ZTE, C-170/13, CJEU, 3 June 2010, Coty Prestige, C-127/09

Related decisions

• Huawei v Netgear, 3 October 2023, earlier order in the same proceedings.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.